Local Intelligence, LLC v. HTC America, Inc. et al

Filing 48

ORDER DENYING 27 MOTION TO DISMISS. Signed by Judge Edward J. Davila on 4/6/2018. (ejdlc2S, COURT STAFF) (Filed on 4/6/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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LOCAL INTELLIGENCE, LLC,

Case No. 5:17-cv-06437-EJD

Plaintiff,
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ORDER DENYING MOTION TO
DISMISS

v.
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Re: Dkt. No. 27

HTC AMERICA, INC., et al.,

United States District Court
Northern District of California

Defendants.
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Plaintiff Local Intelligence, LLC (“LI”) filed the instant patent infringement suit against

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Defendants HTC America, Inc. and HTC Corporation (collectively, “HTC”), alleging that HTC

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infringed the claims of U.S. Patent Nos. 8,903,067 (the “’067 patent”), 9,219,982 (the “’982

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patent”), and 9,084,084 (the “’084 patent”) (collectively, the “Asserted Patents.”). HTC now

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moves pursuant to Federal Rule of Civil Procedure 12(b)(6) to dismiss LI’s infringement claims

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on the basis that the Asserted Patents fail to claim patent-ineligible subject matter under 35 U.S.C.

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§ 101. Pursuant to Civil Local Rule 7-1(b), the Court finds this matter suitable for decision

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without oral argument and VACATES the hearing set for April 12, 2018. For the reasons

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discussed below, the Court DENIES HTC’s motion.

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I.

BACKGROUND
A.

The Asserted Patents

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The Asserted Patents are each entitled “Apparatus and Method for Automatically

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Refreshing a Display of a Telephone.” The ’067 patent was filed on June 22, 2006 and issued on

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December 2, 2014. The ’084 and ’982 patents are continuations of the ’067 patent and share the

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same specification. The ’084 patent was filed on October 28, 2014 and issued on July 14, 2015.

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The ’982 patent was filed on June 4, 2015 and issued on December 22, 2015.

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The Asserted Patents generally relate to “automatically refreshing a display screen of a

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telephone.” ’067 patent, col. 1 ll. 7-9. According to the Background of the Invention section,

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telephones provide a wide variety of services, including “personal communications services” that

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provide calling or voice messaging functionality, “information services” that provide information

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about weather or traffic conditions, and “commercial services” that allow users to transfer funds,

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purchase movie tickets, or order merchandise. Id., col. 1 ll. 11-17. In a typical telephone, users

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will access a particular service using a display panel and navigation keys. Id., col. 1 ll. 18-19.
However, “[d]ue to the many available services, the user often has to navigate through many menu

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displays in order to find a desired service.” Id., col. 1 ll. 19-21.

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The Asserted Patents purport to solve this problem by taking advantage of a specific user

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behavioral pattern: “[u]sers often access the same services at the same time every day, or use some

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services more routinely than others, and tend to do so at certain times of day more so than at other

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times.” Id., col. 1 ll. 22-24. For example, a user may use conferencing and collaboration services

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when she is in the office, but traffic conditions and roadside assistance services when she is

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driving. See id., col. 4 ll. 27-35, 50-55. Accordingly, the Asserted Patents conclude, “there is a

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need to provide a solution for a telephone to automatically display services that are likely to be

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used at a given time and/or in a given location by a particular user.” Id., col. 1 ll. 60-62.

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The Asserted Patents accomplish this by storing mappings between specific locations or

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times and the communication services that should be displayed. Specifically, a “datastore” stores

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“functions,” which “represent a given set of conditions associated with a user” and correspond to a

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particular set of communication services. Id., col. 2 ll. 6-7. For example, one “function” could

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represent the user location of “office” and correspond to the services the user uses at the office. A

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second “function” could represent the user location of “home” and correspond to the services the

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user uses at home. See id., col. 4 ll. 27-35, 50-55. Then, in order to “automatically display

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services that are likely to be used,” the invention looks up which “functions” (and,

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correspondingly, communication services) correspond to the current time or location, and

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refreshes the display with the corresponding communication services.

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Figure 5 illustrates this solution in more detail:

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A “function selector” connects to a “location server,” which provides it with the current location

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of the telephone. Id., col. 7 ll. 7-8. The function selector determines if the current location

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matches one or more locations for functions stored in the database, and selects the appropriate

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function. Id., col. 7 ll. 10-13.

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According to the specification, the function selector can connect to the location server in a

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variety of ways, including “over a network such as an IP based network, the Internet, a corporate

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VPN, or a cellular data network;” “over a WiFi hotspot, or a short-distance wireless network, such

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as a Bluetooth network;” or “over a global location satellite network, a cellular network, such as a

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Global System for Mobile Communications (GSM) network, or over a programming interface.”

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Id., col. 7 ll. 49-59. In addition, the location provided by the location server can take a variety of

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forms, including

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the name of a location, such as but not limited to a city, a building,
or a neighborhood; a floor number of a building, an office number, a
conference room number, or a cubicle number; the name or
identifying information of a shopping mall, an airport, a hospital, a
movie theatre, a freeway exit, or a train station; geographic
information, such as longitude, latitude and altitude information;
cellular coverage information, such as an identity of a radio base
station; a location type, such as a vehicle, a train, a ferry, a mall, a
government building, or a truck of a delivery service company; or
the like.

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Id., col. 7 l. 60-col. 7 l. 3.
LI alleges that HTC infringes at least the first claim of each of the Asserted Patents. Dkt.

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No. 1 ¶¶ 19, 27, 38. Independent claim 1 of the ’067 patent is representative:

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1. A telephone having a display panel; a datastore including at least
one function, wherein the at least one function comprises
information relating to a current location o f a telephone and at least
one other condition associated with a user of the telephone, wherein
the at least one function is associated with at least one
communication service; circuitry operable to connect the telephone
to a location server to obtain a current location of the telephone; and
a function selector programmable to refresh a screen on the display
panel of the telephone to include at least one communication service
associated with the function, based at least in part on a current
location of the telephone.

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Id., col. 8 ll. 9-20.

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B.

LI initiated the instant suit on November 3, 2017. Dkt. No. 1. HTC responded by filing

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Procedural History

the instant motion on January 29, 2018. Dkt. No. 27.
II.

LEGAL STANDARDS

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A.

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Federal Rule of Civil Procedure 8(a) requires a plaintiff to plead each claim with sufficient

Motion to Dismiss Under Federal Rule of Civil Procedure 12(b)(6)

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specificity to “give the defendant fair notice of what the . . . claim is and the grounds upon which

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it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955, 167 L. Ed. 2d 929

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(2007) (internal quotations omitted). The factual allegations in the complaint “must be enough to

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raise a right to relief above the speculative level” such that the claim “is plausible on its face.” Id.

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at 556-57, 127 S. Ct. 1955. A complaint that falls short of the Rule 8(a) standard may be

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dismissed if it fails to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6).

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“Dismissal under Rule 12(b)(6) is appropriate only where the complaint lacks a cognizable legal

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theory or sufficient facts to support a cognizable legal theory.” Mendiondo v. Centinela Hosp.

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Med. Ctr., 521 F.3d 1097, 1104 (9th Cir. 2008).

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When deciding whether to grant a motion to dismiss, the court must generally accept as

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true all “well-pleaded factual allegations.” Ashcroft v. Iqbal, 556 U.S. 662, 664, 129 S. Ct. 1937,

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173 L.Ed.2d 868 (2009). The court must also construe the alleged facts in the light most favorable

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to the plaintiff. See Retail Prop. Trust v. United Bhd. of Carpenters & Joiners of Am., 768 F.3d

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938, 945 (9th Cir. 2014) (providing the court must “draw all reasonable inferences in favor of the

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nonmoving party” for a Rule 12(b)(6) motion). However, “courts are not bound to accept as true a

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Northern District of California

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legal conclusion couched as a factual allegation.” Iqbal, 556 U.S. at 678, 129 S. Ct. 1937.
Also, the court usually does not consider any material beyond the pleadings for a Rule

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12(b)(6) analysis. Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1555 n.19

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(9th Cir. 1989). Exceptions to this rule include material submitted as part of the complaint or

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relied upon in the complaint, and material subject to judicial notice. See Lee v. City of Los

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Angeles, 250 F.3d 668, 688-69 (9th Cir. 2001).

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B.

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The ultimate question whether a claim recites patent-eligible subject matter under § 101 is

Patent Eligibility at the Motion to Dismiss Stage

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a question of law. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338

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(Fed. Cir. 2017) (“Patent eligibility under § 101 is an issue of law[.]”). However, the Federal

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Circuit has identified that there are certain factual questions underlying the § 101 analysis. See

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Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed. Cir. 2018).

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A district court may decide patent eligibility at the Rule 12(b)(6) stage. See, e.g., Genetic

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Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1373 (Fed. Cir. 2016). However, a district court may

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only conclude that a patent fails to claim patent-eligible subject matter “when there are no factual

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allegations that, taken as true, prevent resolving the eligibility question as a matter of law.” Aatrix

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Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018). “If there are

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claim construction disputes at the Rule 12(b)(6) stage, [the Federal Circuit has] held that either the

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court must proceed by adopting the non-moving party's constructions, . . . or the court must

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resolve the disputes to whatever extent is needed to conduct the § 101 analysis, which may well be

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less than a full, formal claim construction.” Id. (internal citations omitted).

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C.

Patent Eligibility Under § 101
i.

The Mayo/Alice Framework

35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process,

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machine, or composition of matter, or any new and useful improvement thereof, may obtain a

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patent therefor, subject to the conditions and requirements of this title.” However, the Supreme

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Court has recognized that these broad categories contain an implicit exception: “[l]aws of nature,
natural phenomena, and abstract ideas are not patentable.” Ass’n for Molecular Pathology v.

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Northern District of California

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Myriad Genetics, Inc., ––– U.S. ––––, 133 S. Ct. 2107, 2116, 186 L. Ed. 2d 124 (2013) (internal

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quotation marks and citation omitted).

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To determine whether a claim falls within the “abstract idea” exception, the Supreme Court

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has established a two-step framework: First, the court must “determine whether the claims at

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issue are directed to a patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, ––– U.S.

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––––, 134 S. Ct. 2347, 2355, 189 L. Ed. 2d 296 (2014). Second, if the claims are directed to

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patent-ineligible subject matter, the Court must “consider the elements of each claim both

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individually and ‘as an ordered combination’ to determine whether the additional elements

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‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo

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Collaborative Servs. v. Prometheus Laboratories, Inc., 566 U.S. 66, 132 S. Ct. 1289, 1298, 1297,

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182 L. Ed. 2d 321 (2012)). The Supreme Court has described this as a “search for an ‘inventive

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concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in

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practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id.

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ii.

Step One

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In evaluating step one, “the ‘directed to’ inquiry applies a stage-one filter to claims,

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considered in light of the specification, based on whether ‘their character as a whole is directed to

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excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)

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(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).

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The Federal Circuit has also described this inquiry as an evaluation of the “focus” or “basic thrust”

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of the claims. See Enfish, 822 F.3d at 1335-36; BASCOM Glob. Internet Servs., Inc. v. AT&T

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Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). The Federal Circuit has recognized that this

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process sometimes involves “close calls about how to characterize what the claims are directed

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to.” BASCOM, 827 F.3d at 1349. Courts must tow the fine line between assessing a claim’s

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“character as a whole” and “describing the claims at such a high level of abstraction and

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untethered from the language of the claims [such that it] all but ensures that the exceptions to §

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101 swallow the rule.” Enfish, 822 F.3d at 1335, 1337.

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Using these principles, the Federal Circuit has found that software claims are not directed

United States District Court
Northern District of California

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to an abstract idea on a number of occasions. For example, it has found that claims which

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“purport to improve the functioning of the computer itself”—as opposed to those where

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“computers are invoked merely as a tool” to carry out an abstract process—are not directed to

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abstract ideas. See, e.g., Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363

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(Fed. Cir. 2018) (claims relating to “an improved user interface for electronic devices, particularly

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those with small screens” were not abstract); Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d

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1299, 1305 (Fed. Cir. 2018) (claims directed to “behavior-based virus scanning” were not

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abstract); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60 (Fed. Cir. 2017) (claims

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directed to an improved memory system which “focus[ed] on . . . the use of programmable

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operational characteristics that are configurable based on the type of processor” were not abstract);

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Enfish, 822 F.3d at 1336 (claims directed to a specific type of self-referential table for a computer

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database were not abstract). Relatedly, it has found that claims directed to a “new and useful

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technique” for performing a particular task were not abstract. See, e.g., Thales Visionix Inc. v.

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United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017) (“claims directed to a new and useful

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technique for using sensors to more efficiently track an object on a moving platform” were not

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abstract); Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048, 1050 (Fed. Cir. 2016)

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(claims directed to “a new and useful laboratory technique for preserving hepatocytes,” a type of

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liver cell, were not abstract); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314

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(Fed. Cir. 2016) (patents that automated part of a preexisting method for 3-D facial expression

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animation were not abstract because they “focused on a specific asserted improvement in

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computer animation, i.e., the automatic use of rules of a particular type.”).

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However, not all claims relating to computer technologies are not abstract. Where the

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focus of the claims is on “certain independently abstract ideas that use computers as tools” instead

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of “an improvement in computers as tools,” claims may fail step one. See, e.g., Affinity Labs of

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Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (claims relating to

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“deliver[ing] content to a handheld wireless electronic device” were directed to an abstract idea
because they claimed “the general concept of out-of-region delivery of broadcast content through

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Northern District of California

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the use of conventional devices, without offering any technological means of effecting that

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concept”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1140, 1149 (Fed. Cir. 2016)

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(claims related to logic circuit design in computer hardware were “drawn to the abstract idea of:

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translating a functional description of a logic circuit into a hardware component description of the

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logic circuit” because “they are so broad as to read on an individual performing the claimed steps

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mentally or with pencil and paper”); Tranxition, Inc. v. Lenovo (United States) Inc., 664 Fed.

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Appx. 968, 971-72 (Fed. Cir. 2016) (claims relating to migration of computer settings were

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directed to an abstract idea because “manual migration is an abstract idea” and the claims merely

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“automate[d] the migration of data between two computers”). Restricting older, abstract ideas to

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certain technological environments also does not make them not abstract. See, e.g., FairWarning

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IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (observing that ineligible claims

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“merely implement an old practice in a new environment”).

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In applying these concepts, the Federal Circuit has cautioned that “the first step of the

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[Alice] inquiry is a meaningful one, i.e., . . . a substantial class of claims are not directed to a

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patent-ineligible concept.” Enfish, 822 F.3d at 1335.

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iii.

Step Two

In assessing step two, courts must “consider the elements of each claim both individually
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and ‘as an ordered combination’” and assess whether there are any “additional features” in the

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claims that constitute an “inventive concept.” Alice, 134 S. Ct. at 2357. This inventive concept

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“must be significantly more than the abstract idea itself,” BASCOM, 827 F.3d at 1349, “must be

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more than well-understood, routine, conventional activity,” DIRECTV, 838 F.3d at 1262, “and

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cannot simply be an instruction to implement or apply the abstract idea on a computer.”

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BASCOM, 827 F.3d at 1349. For example, it may be found in an “inventive set of components or

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methods,” “inventive programming,” or an inventive approach in “how the desired result is

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achieved.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016).

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“Inventive concept” does not mean “novelty;” “[t]he mere fact that something is disclosed in a
piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”

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Northern District of California

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Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).

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The Federal Circuit has found an inventive concept in several cases. For example, in DDR

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Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1248, 1259 (Fed. Cir. 2014), the Federal

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Circuit found that claims that addressed the “Internet-centric problem” of third-party merchant

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advertisements that would “lure . . . visitor traffic away” from a host website (because clicking on

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the advertisement would redirect the visitor to the merchant's website) amounted to an inventive

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concept. This was so, the Federal Circuit reasoned, because the claims “specify how interactions

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with the Internet are manipulated to yield a desired result” such that the interactions are “not

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merely the routine or conventional use of the Internet.” Id. at 1259. As another example, in

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BASCOM, 827 F.3d at 1350, the Federal Circuit found that the claims directed to Internet content

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filtering recited the inventive concept of “install[ing] a filtering tool at a specific location, remote

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from the end-users, with customizable filtering features specific to each end user.” The court

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reasoned that “an inventive concept can be found in the non-conventional and non-generic

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arrangement of known, conventional pieces.” Id. The court found this to be the case there

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because the patents claimed a specific type of content filtering that took advantage of an ISP

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server's ability to associate internet requests with user accounts. Id.

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Nevertheless, not all technological aspects of how a patented invention is implemented
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supply a basis for finding an “inventive concept.” A claim that simply takes an abstract idea and

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adds “the requirement to perform it on the Internet, or to perform it on a set of generic computer

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components . . . would not contain an inventive concept.” BASCOM, 827 F.3d at 1350. See, e.g.,

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Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348

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(Fed. Cir. 2014), cert. denied, ––– U.S. ––––, 136 S. Ct. 119, 193 L. Ed. 2d 208 (2015) (no

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inventive concept because the claims simply recited “generic scanner and computer to perform

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well-understood, routine, and conventional activities commonly used in industry”); DIRECTV,

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838 F.3d at 1262 (no inventive concept because “[t]he claim simply recites the use of generic

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features of cellular telephones . . . as well as routine functions . . . to implement the underlying
idea”). Limiting the field of use to a particular technological environment also does not supply an

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Northern District of California

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inventive concept. Alice, 134 S.Ct. at 2358 (noting that, under step two, “limiting the use of an

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abstract idea ‘to a particular technological environment’ ” “is not enough for patent eligibility”).

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See, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (abstract claims

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relating to transaction guarantees could not be saved from ineligibility because they were

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restricted to online transactions, as “[a]t best, that narrowing is an ‘attempt[ ] to limit the use’ of

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the abstract guarantee idea ‘to a particular technological environment,’ which has long been held

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insufficient to save a claim in this context”).

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Finally, as the Federal Circuit recently held, “[w]hether something is well-understood,

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routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”

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Berkheimer, 881 F.3d at 1369. As such, it is improper to decide at the pleadings or summary

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judgment stage that claims lack an inventive concept where factual disputes remain as to whether

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particular elements are “well-understood, routine, [and/or] conventional.” See, e.g., Aatrix

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Software, 882 F.3d at 1129 (vacating dismissal pursuant to Rule 12(b)(6) where there were factual

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allegations suggesting that the claimed “data file” could be “an improvement in the importation of

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data from third-party software applications”); Berkheimer, 881 F.3d at 1370 (vacating grant of

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summary judgment where there was at least a factual dispute “regarding whether [certain claims]

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archive documents in an inventive manner that improves these aspects of the disclosed archival

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system”).
Accordingly, the search for an inventive concept remains one that court must approach

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cautiously, “scrutiniz[ing] the claim elements more microscopically” than in step one. Elec.

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Power Grp., 830 F.3d at 1354.

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iv.

Preemption

In addition to these principles, several other considerations may be helpful in conducting a

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§ 101 analysis: First, the Supreme Court has recognized that the “concern that undergirds [the]

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§ 101 jurisprudence” is preemption. Alice, 134 S. Ct. at 2358. If a claim is so abstract so as to

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“pre-empt use of [the claimed] approach in all fields, and would effectively grant a monopoly over
an abstract idea” is not patent-eligible. Bilski v. Kappos, 561 U.S. 593, 612, 130 S. Ct. 3218,

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Northern District of California

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3231, 177 L. Ed. 2d 792 (2010). However, the inverse is not true: “[w]hile preemption may signal

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patent ineligible subject matter, the absence of complete preemption does not demonstrate patent

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eligibility.” FairWarning IP, 839 F.3d at 1098 (internal quotation marks and citation omitted).
Second (and relatedly), “claims that are ‘so result-focused, so functional, as to effectively

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cover any solution to an identified problem’ are frequently held ineligible under section 101.”

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DIRECTV, 838 F.3d at 1265. For example, in Elec. Power Grp., 830 F.3d at 1356, the Federal

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Circuit found that claims directed to “any way of effectively monitoring multiple sources on a

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power grid” instead of “some specific way of enabling a computer to monitor data from multiple

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sources across an electric power grid” did not contain an inventive concept. The Federal Circuit

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has noted that this framework “is one helpful way of double-checking the application of the

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Supreme Court's framework to particular claims—specifically, when determining whether the

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claims meet the requirement of an inventive concept in application.” Id.

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III.

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DISCUSSION
With these principles in mind, the Court turns to the claims at issue. In its motion, HTC

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contends that the Asserted Patents contain only minimal differences in their claims which do not

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impact the § 101 analysis. Mot. 6-7. LI does not appear to disagree, as it only addresses the

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claims collectively in its opposition. See Opp’n 15-21. On its own review, the Court agrees with

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HTC that the Asserted Claims are substantially similar. Accordingly, it will analyze the Asserted

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Claims collectively, using claim 1 of the ’067 patent as the representative claim.

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A.

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At step one of the Alice analysis, the Court assesses the “character as a whole” of the

Step One

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claims to determine “whether the claims at issue are directed to [an abstract idea].” Alice, 134 S.

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Ct. at 2355; Enfish, 822 F.3d at 1335 (citation omitted).

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HTC argues that the claims of the Asserted Patents are directed to the abstract idea of
“providing communication information based on location and other user information.” Mot. 5-9.

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HTC contends that this is no less abstract than “tailoring content based on the viewers location or

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address,” which the Federal Circuit deemed abstract in Intellectual Ventures, 792 F.3d at 1369-70.

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HTC also argues that the claims of the Asserted Patents are not directed to a solution of a

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technological problem because tailoring information is a fundamental process that precedes the

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computer era, and the claims are not sufficiently specific to recite a specific solution. Mot. 9-12.

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LI counters that the claims of the Asserted Patents are not directed to an abstract idea, but

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instead to “specific systems and methods that use a location server associated with a system such

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as a WiFi network (and not a positioning system like GPS) to obtain a phone’s current location,

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and a phone’s ‘datastore’ or memory (as opposed to a carrier’s records), in order to provide and

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refresh location-relevant communication services on a phone’s display as the phone’s current

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location changes.” Opp’n 3. As such, LI argues, the claims of the Asserted Patents pertain to a

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specific solution to technical problems which arise in the realm of using location-based technology

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in conjunction with displaying particular communication services on a phone. Id. 15-17.

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The “character as a whole” of the claims of the Asserted Patents lies somewhere in

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between the parties’ characterizations. The Court agrees with HTC that the claimed invention

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seeks to “provid[e] communication information based on location and other user information.”

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However, the solution is more specific than this. For example, the current location is obtained

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from a “location server” by a “function selector.” ’067 patent, col. 8 ll. 13-15. In addition, the

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selecting is done using “functions” which are stored in the “datastore.” Id., col. 8 ll. 9-10, 16-20.

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However, at the same time, the claims also are not as specific as LI contends: nothing in the claims

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or specification requires that the “datastore” be local to the phone. See id., col. 8 ll. 42 (“function

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selector . . . connects to datastore”) (emphasis added). In addition, nothing confines the “location

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server” connection to WiFi. See id., col. 8 ll. 49-59 (describing a wide variety of options for

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connecting to the “location server,” including a cellular data network, Bluetooth, and a “global

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location satellite network”). Putting all these observations together, the Court concludes that the

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claims of the Asserted Patents are best characterized as directed to: refreshing location-relevant

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communication services on a phone’s display by obtaining a current location from a location

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server, selecting communication services using logic in a datastore, and refreshing the display.

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The question then becomes whether this is an abstract idea. The Federal Circuit’s recent

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decision in Core Wireless, 880 F.3d at 1363 ends this inquiry. In Core Wireless, the Federal

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Circuit evaluated claims for “improved display interfaces, particularly for electronic devices with

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small screens like mobile telephones.” Id. at 1359. This display involved the use of an

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“application summary” which display[ed] “a limited list of common functions and commonly

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accessed stored data which itself can be reached directly from the main menu listing some or all

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applications.” Id. In evaluating patent eligibility, the Federal Circuit observed that the claim

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limitations “disclose a specific manner of displaying a limited set of information to the user, rather

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than using conventional user interface methods to display a generic index on a computer.” Id. at

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1363. The Court observed that this provided “an improved user interface for electronic devices,

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particularly those with small screens” where display real estate was at a premium. Id. Because of

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this, they were “directed to an improved user interface for computing devices, not to the abstract

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idea of an index.” Id. at 1362.

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It is hard to distinguish this case from Core Wireless. Both relate to the computer

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technology of user interfaces. See ’067 patent, col. 1 ll. 7-9. Both purport to solve the same

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problem within the realm of user interfaces: limited display space on electronic devices with small

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screens. See id., col. 1 ll. 19-21 (“Due to the many available services, the user often has to

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navigate through many menu displays in order to find a desired service.”). And both claim a

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specific manner of solving this problem. In Core Wireless, 880 F.3d at 1362-63, the claims

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“specif[ied] a particular manner by which the summary window must be accessed,” “require[d] the

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application summary window list a limited set of data,” and “restrain[ed] the type of data that can

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be displayed in the summary window.” Here, the claims recite a specific manner of limiting the

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information which should be displayed: the “communication services” must be selected according

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to one or more “function[s]” that are stored in a “datastore,” which are in turn identified using the

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phone’s “current location” which must be obtained by “connect[ing] the telephone to a location

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server.” See id., col. 8 ll. 9-20. As such, the claims at issue do more than simply state a result

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(i.e., display communication services according to current location); they also recite the way in
which it is accomplished (i.e., using location retrieved from the location server and functions

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stored in the datastore). Accordingly, because the specific improvement to the technology of user

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interfaces claimed in Core Wireless was not an abstract idea, the Court must conclude that the

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similarly specific improvement to user interfaces claimed here is also not an abstract idea.

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In reaching this conclusion, the Court is mindful that the reasoning of Core Wireless may

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rest on narrow ground. Other Federal Circuit cases confirm that not every purported technological

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improvement is patent eligible. See, e.g., DIRECTV, 838 F.3d at 1262 (claims relating to

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“deliver[ing] content to a handheld wireless electronic device” were directed to an abstract idea);

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Synopsys, 839 F.3d at 1140, 1149 (claims related to logic circuit design in computer hardware

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were “drawn to the abstract idea of: translating a functional description of a logic circuit into a

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hardware component description of the logic circuit”). Nevertheless, Core Wireless at the very

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least requires that a specific solution, reciting specific implementation detail, which purports to

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solve a problem within the technology of user interfaces in electronic devices with small screens,

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is not abstract. On this point, the claims of the Asserted Patents cannot be distinguished. Thus,

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the Court concludes that they are not directed to an abstract idea.

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HTC’s arguments to the contrary are not persuasive. First, HTC argues that this case is

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distinguishable from Core Wireless because, unlike the patents at issue in Core Wireless, the

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Asserted Patents do not identify a technological problem to be solved. Mot. 9-10. The Court

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disagrees; as discussed above, the Asserted Patents seek to solve the same technological problem

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as the Core Wireless patents: limited display space on electronic devices with small screens. ’067

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patent, col. 1 ll. 19-21. Second, HTC argues that this case is distinguishable from Core Wireless

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because the claims at issue here are not as specific as those at issue in Core Wireless. Mot. 11-12.

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The Court disagrees on this point as well. The claims in Core Wireless and the claims at issue

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here accomplish specificity in different ways, but they both do so to substantially the same degree.

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In Core Wireless, the claims at issue recited specific graphical characteristics of the improved user

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interface (e.g., an “application summary window” which must be “reached directly” from the main

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menu, which contains “data” which is “selectable to launch the respective application”). Core
Wireless, 880 F.3d at 1362-63. Here, the claims at issue recite specific implementation

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characteristics as to how the information to be displayed is limited for the small screen (e.g., using

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a “location server” to supply the current location and using “functions” stored in a “datastore” to

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determine which communication services should be selected). See, e.g., ’067 patent, col. 8 ll. 9-

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20. As such, the claims of the Asserted Patents recite the solution with a similar level of

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specificity to the Core Wireless claims and cannot be distinguished on this basis.
Accordingly, the Court concludes at step one of the Alice framework that the claims of the

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Asserted Patents are not directed to an abstract idea.

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B.

Step Two
The Court need not reach step two. Thales, 850 F.3d at 1349 (“Because we find the claims

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are not directed to an abstract idea, we need not proceed to step two.”); Enfish, 822 F.3d at 1339

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(“[W]e think it is clear for the reasons stated that the claims are not directed to an abstract idea,

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and so we stop at step one.”).

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IV.

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CONCLUSION
Because the claims of the Asserted Patents are not directed to an abstract idea, HTC’s

motion to dismiss is DENIED.

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IT IS SO ORDERED.
Dated: April 6, 2018
______________________________________
EDWARD J. DAVILA
United States District Judge

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