Quality Innovative Products, LLC et al v. Brand 44, LLC

Filing 44

ORDER denying 21 Motion to Dismiss by Magistrate Judge Nina Y. Wang on 10/4/2018. (nywlc2, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 18-cv-00369-NYW
QUALITY INNOVATIVE PRODUCTS, LLC,
PLAYMONSTER, LLC,
Plaintiffs,
v.
BRAND 44, LLC,
Defendant.
ORDER DENYING MOTION TO DISMISS
Magistrate Judge Nina Y. Wang
This matter comes before the court on Defendant Brand 44, LLC’s (“Defendant” or “Brand
44”) Motion to Dismiss (or “Motion”). [#21]. This civil action was referred to the undersigned
pursuant to the consent of all Parties. See [#17]; 28 U.S.C. § 636(c); Fed. R. Civ. P. 73. Having
reviewed and considered the Motion and associated briefing, the applicable case law, the entire
docket, and the comments offered at the September 18, 2018 Motion Hearing, the court DENIES
the Motion to Dismiss for the reasons stated herein.
BACKGROUND
The court draws the following facts from the Amended Complaint and accepts that they
are true for purposes of the instant Motion. Plaintiffs Quality Innovative Products, LLC and
PlayMonster, LLC (collectively, “Plaintiffs”) initiated this suit for alleged patent infringement
against Defendant, asserting infringement of certain claims of three United States Patents: U.S.
Patent Nos. 8,454,450 (the “’450 Patent”), 9,067,146 (the “’146 Patent”), and 9,415,316 (the “’316
Patent”) (collectively, the “Patents-in-Suit”), each directed to a swing. [#1]. The Patents-in-Suit

are each entitled “Swing” and name Gregory Cordray as the inventor and Quality Innovative
Products, LLC (“QIP”) as the Assignee.

See [#26-2; #26-5; #26-7].

PlayMonster, LLC

(“PlayMonster”) is the exclusive Licensee of the Patents-in-Suit. See [#1; #26 at ¶¶ 22, 37, 55].
According to Plaintiffs, Brand 44 manufactures, imports, uses, and/or sells the Slackers® Sky
Saucer swing—a swing with a circular plastic seat suspended from a pivot with tethers to allow
for swinging in several directions—which allegedly violates several claims of the Patents-in-Suit.
See [#26 at 7–21; #26-1 through #26-9].
The ’450 Patent: The ’450 Patent issued on June 4, 2013. See [#26-2]. The patent explains
that swings generally take two forms: (1) “conventional rectangular rigid swing seats . . . meant to
move on an arc in a back-and-forth motion” or (2) “tire swings . . . that can twist and swing in any
direction such as diagonal, circular, etc.” [Id. at 1:14–21].1 The inventions of the ’450 Patent are
directed to improving the “limited entertainment and enjoyment” these swings provide to “certain
children and other users that are not capable of maintaining the proper position . . . and/or . . .
controlling the motion of the swing in the manner intended and required.” [Id. at 1:27–31]. In
addition, the inventions of the ’450 Patent aim to improve the “ease of manufacture, ease of
installation, ease of use, durability, variety of modes of operation, safety, and other such attributes”
of these two traditional swings. [Id. at 1:34–37].
The ’450 Patent discloses technology pertaining to a concave central portion—shaped as a
circular disk and supported by a web of radial ribs—that then attaches to several tethers along its
peripheral edge which then connect to a support member. See [id. at 1:41–2:44]. This allows the
swing body “to swing in any direction including back-and-forth, sideways, diagonal, circular, etc.
and such that the swing body can twist.” [Id. at 3:9–14].
In citing to a Patent, the court cites to the document number generated by the court’s CM/ECF
filing system but the column and line numbers assigned by the Patent.
1

2

The patent includes 22 claims. Relevant here, independent Claim 22 discloses,
22. A swing comprising:
a body including a concave central portion defining a recessed concave seat and a
peripheral edge surrounding the concave central portion, wherein said peripheral
edge of said body is circular such that said body defines a circular disk;
said peripheral edge comprising:
a plurality of tether openings, each of said tether openings adapted to receive an
associated tether;
a top wall that extends radially outward from said recessed concave seat;
an outer circular wall connected to and projecting downwardly from an outer end
of said top wall;
a peripheral groove defined adjacent said top wall and said outer circular wall,
wherein said plurality of tether openings each open through said top wall and into
said peripheral groove; and,
a tether system adapted to suspend the body from an associated support member,
said tether system engaged with said tether openings and at least part of said tether
system located in said peripheral groove.
[Id. at 7:3–23].
The ’146 Patent: The ’146 Patent is a continuation-in-part of the United States Patent
Application No. 12/850,696 which matured in the ’450 Patent, and issued on June 30, 2015. See
[#26-5]. Much like the ’450 Patent, the ’146 Patent discloses a swing comprised of a plastic central
portion, shaped as a circular disk with radial ribs for support and strength, which connects to
several tethers suspended from a support member, see [#26-5 at 1:44–2:61], thereby allowing the
swing body to “swing in any direction including back-and-forth, sideways, diagonal, circular, etc.
and such that the swing body can twist[,]” see [id. at 3:46–51]. The inventions of the ’146 Patent
are again directed to improving the “entertainment and enjoyment” found lacking in traditional
rectangular-seated swings and tire swings as well as improving the “ease of manufacture, ease of
installation, ease of use, durability, variety of modes of operation, safety, and other such attributes”
of such swings. See [id. at 1:28–40].

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The ’146 Patent includes 18 claims. Several are at issue here, including independent Claim
1 and 18, and dependent Claims 2, 4, 5, and 8. [#26-6]. In the Motion to Dismiss, Brand 44
utilizes independent Claim 1 as a representative claim.2 [#21 at 14]. Independent Claim 1
discloses:
1. A swing comprising
a body including a concave central portion defining a recessed seat and a peripheral
edge surrounding the concave central portion;
said peripheral edge comprising a plurality of tether openings;
a tether system comprising a plurality of tether portions respectively engaged with
said plurality of tether openings;
wherein said peripheral edge comprises:
a top wall that extends radially outward from an upper lip of said recessed seat;
an outer wall connected to and projecting downwardly from an outer end of said
top wall;
a peripheral groove defined adjacent the top wall and the outer wall;
wherein said tether openings are defined in said top wall and open through said top
wall into said peripheral groove.
[Id. at 7:48–8:5].
The ’316 Patent: The ’316 Patent is a continuation of United States Patent Application
13/909,072 that matured in the ’146 Patent, and issued on August 16, 2016. See [#26-7]. The
claims of the ’316 Patent are substantially similar to the ’450 and ’146 Patents, disclosing a swing
body with “a concave central seat” that is connected to a tether system suspended from a support
member, allowing the swing body to “swing in any direction”. [Id. at 3:46–4:67]. And it is again
intended to improve upon the “entertainment and enjoyment” found lacking in traditional

2

At oral argument, counsel for Plaintiffs contended that the independent claims of the Patents-inSuit could not be considered representative, because the asserted dependent claims of the Patentsin-Suit included additional structure that the court should consider on the second step of the
analysis, should it reach that step. In reviewing both the papers and argument of Plaintiffs, this
court finds no separate argument with respect to dependent claims. See, e.g., [#28; #34]. While
the Amended Complaint includes some statements regarding additional structure, see [#26 at
¶¶ 43–48], those arguments were not included in Plaintiffs’ response and, therefore, were not
addressed by Defendant in its Response to the Sur-Reply. [#35].
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rectangular-seated swings and tire swings as well as to improve the “ease of manufacture, ease of
installation, ease of use, durability, variety of modes of operation, safety, and other such attributes”
of such traditional swings. See [id. at 1:29–40].
The ’316 Patent includes 11 claims and Brand 44 utilizes independent Claim 1 as a
representative claim. [#21 at 16–17]. Independent Claim 1 discloses:
1. A swing comprising:
a one-piece molded polymeric body including a concave portion defining a recessed
seat including an upper surface and a lower surface, said body further comprising
a peripheral edge surrounding the concave portion, wherein said peripheral edge of
said body is circular; said peripheral edge comprising a plurality of tether openings,
each of said tether openings adapted to receive an associated tether;
said lower surface of said seat comprising a plurality of seat support ribs extending
therefrom, said seat support ribs extending radially outward from an inner end
toward said circular peripheral edge, and said seat support ribs oriented normal to
said lower surface of said seat.
[Id. at 7:43–56].
On April 16, 2018, Defendant moved to dismiss Plaintiffs’ infringement claims, arguing
that the asserted claims of the Patents-in-Suit are directed to patent-ineligible subject matter under
35 U.S.C. § 101. See [#21]. That is, the Patents-in-Suit concern swings, which are “nothing more
than a millennia old application of a pendulum”—a natural phenomenon that cannot be patented.
See [id. at 8]. On May 7, 2018, Plaintiffs filed a First Amended Complaint as a matter of right
pursuant to Rule 15(a)(1)(B) of the Federal Rules of Civil Procedure [#26], and responded to the
Motion to Dismiss by arguing that it should be denied as moot, [#28]. Brand 44 then replied [#34],
asserting that Plaintiffs’ First Amended Complaint does not moot the pending Motion to Dismiss,
and “does nothing to rebut Brand 44’s argument that the Patents-in-Suit are directed to a natural
phenomenon (a pendulum).” [#31 at 2]. After receiving leave to do so, Plaintiffs filed a Sur-Reply,
substantively arguing that “neither a pendulum nor a swing is a natural phenomenon.” [#34 at 2].

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Then, without leave of court, Brand 44 filed yet another paper responding to Plaintiff’s Sur-Reply
requesting that the court dismiss the First Amended Complaint with prejudice. [#35 at 10].3 The
court entertained oral argument on the Motion to Dismiss on September 18, 2018 [#39]. The
Motion is now ripe for disposition, and the court turns to each issue raised below, starting with
mootness.
LEGAL STANDARDS
I.

Rule 12(b)(6) of the Federal Rules of Civil Procedure
Under Rule 12(b)(6) a court may dismiss a complaint for “failure to state a claim upon

which relief can be granted.” Fed. R. Civ. P. 12(b)(6). In deciding a motion under Rule 12(b)(6),
the court must “accept as true all well-pleaded factual allegations . . . and view these allegations
in the light most favorable to the plaintiff.” Casanova v. Ulibarri, 595 F.3d 1120, 1124 (10th Cir.
2010) (quoting Smith v. United States, 561 F.3d 1090, 1098 (10th Cir. 2009)). A plaintiff may not
rely on mere labels or conclusions, “and a formulaic recitation of the elements of a cause of action
will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). Rather, “a complaint
must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible
on its face.” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009); see also Robbins v. Oklahoma, 519
F.3d 1242, 1247 (10th Cir. 2008) (explaining that plausibility refers “to the scope of the allegations
in a complaint,” and that the allegations must be sufficient to nudge a plaintiff’s claim(s) “across
the line from conceivable to plausible.”). The ultimate duty of the court is to “determine whether
the complaint sufficiently alleges facts supporting all the elements necessary to establish an
3

Neither the Federal Rules of Civil Procedure nor the Local Rules of Civil Practice for the District
of Colorado provides for a response to a Sur-Reply without leave of court. No such leave has been
obtained here. Nevertheless, given the fact that Plaintiffs did not provide any substantive response
to Defendant’s invalidity arguments until its Sur-Reply and to avoid further motions practice, this
court will accept Defendant’s response to the Sur-Reply [#35], so that it may proceed expeditiously
to considering the substantive issues raised by the Motion to Dismiss.
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entitlement to relief under the legal theory proposed.” Forest Guardians v. Forsgren, 478 F.3d
1149, 1160 (10th Cir. 2007). In doing so, the court may consider materials beyond the complaint
if the documents are central to the plaintiff’s claims, referred to in the complaint, and the parties
do not dispute their authenticity. See Cty. of Santa Fe, N.M. v. Public Serv. Co. of N.M., 311 F.3d
1031, 1035 (10th Cir. 2002). The court may also take judicial notice of undisputed court
documents and matters of public record. See Tal v. Hogan, 453 F.3d 1244, 1264 n. 24 (10th Cir.
2006).
Ordinarily, the filing of an amended complaint moots a motion to dismiss directed at the
complaint that is supplanted and superseded. Strich v. United States, No. 09-CV-01913-REBKLM, 2010 WL 14826, at *1 (D. Colo. Jan. 11, 2010) (citations omitted). Nevertheless, Brand 44
argues that its pending Motion to Dismiss applies equally to the First Amended Complaint. Upon
evaluation of the Motion to Dismiss, this court agrees, and observes that Plaintiffs have been given
the opportunity to substantially respond to the arguments raised by the First Amended Complaint
through the filing of a Sur-Reply. Accordingly, I will evaluate Defendant’s Motion to Dismiss as
directed at Plaintiffs’ First Amended Complaint.
II.

Patent-Eligibility Under 35 U.S.C. § 101
Section 101 of the Patent Act, 35 U.S.C. § 101, specifies what types of subject matter are

eligible for patent protection. The United States Supreme Court has long held that Section 101
“contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (internal
quotation marks omitted).

These exceptions represent “the basic tools of scientific and

technological work.” Id. (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.
Ct. 2107, 2116 (2013)). “Monopolization of those tools through the grant of a patent might tend

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to impede innovation more than it would tend to promote it, thereby thwarting the primary object
of the patent laws.” Id. (citation and quotation omitted). Accordingly, courts must distinguish
between patents that claim the “building blocks of human ingenuity and those that integrate the
building blocks into something more.” Id. (citation and quotation omitted). In Alice, the Supreme
Court clarified that “[w]holly generic computer implementation is not generally the sort of
‘additional feature’ that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the abstract idea itself.”

Id. at 2350–51 (quoting Mayo

Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012)).
“In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___, [132 S.
Ct. 1289] (2012), [the Supreme Court] set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2354. The Mayo/Alice test is comprised of
two consecutive steps. First, courts must “determine whether the claims at issue are directed to
one of those patent-ineligible concepts.” Id. If the answer is “yes,” courts must then ask: “‘[w]hat
else is there in the claims before us?’” Id. In answering that question, courts must “consider the
elements of each claim both individually and as an ordered combination to determine whether the
additional elements transform the nature of the claim into a patent-eligible application.” Id.
(internal quotation marks omitted). Put another way, the second step of the Mayo/Alice test directs
this court to consider whether a claim at issue discloses an inventive concept, i.e., an element or
combination of elements that is sufficient to transform an abstract idea into a patent-eligible
application of that idea. See Vehicle Intelligence & Safety, LLC v. Mercedes-Benz USA, LLC, 635
F. App’x 914, 919 (Fed. Cir. 2015).

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Whether a patent satisfies the requirements of 35 U.S.C. § 101 is an issue of law. See In
re Bilski, 545 F.3d 943, 950–51 (Fed. Cir. 2008) (“Bilski I”); Research Corp. Techs., Inc. v.
Microsoft Corp., 627 F.3d 859, 867 (Fed. Cir. 2010). The language of the patent claims governs
the patent eligibility inquiry. See Bilski I, 545 F.3d at 950–51; cf. Vehicle Intelligence & Safety
LLC v. Mercedes-Benz USA, LLC, 78 F. Supp. 3d 884 (N.D. Ill. 2015) (granting a renewed motion
for judgment on the pleadings after claim construction).4 The United States Court of Appeals for
the Federal Circuit (“Federal Circuit”) has “repeatedly recognized that in many cases, it is possible
and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.”
FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1097 (Fed. Cir. 2016) (citing Genetic Techs.,
818 F.3d at 1373–74).

But in some circumstances courts should refrain from resolving

patent-eligibility on a motion to dismiss under Rule 12 because of unresolved factual issues. Cf.
Potter Voice Techs., LLC v. Apple Inc., No. C 13-1710 CW, 2015 WL 5672598, at *5 (N.D. Cal.
June 11, 2015) (declining to grant summary judgment on claims that “colorably involve[d] an
inventive concept”). Indeed, the court heeds the Federal Circuit’s caution that dismissal for lack
of patentable subject matter at the pleading stage should be “the exception, not the rule.”
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (explaining that dismissal
under Rule 12(b)(6) for lack of patentable subject matter is warranted when “the only plausible
reading of the patent must be that there is clear and convincing evidence of ineligibility.”
(emphasis in original)), vacated on other grounds by WildTangent, Inc. v. Ultramercial, LLC, 134
S. Ct. 2870 (2014)).

4

A claim construction hearing is currently set for December 19, 2018. See [#23].
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ANALYSIS
The first step in the Alice/Mayo test requires the court to determine whether “the claims at
issue are directed to a patent-ineligible concept.” Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1347 (Fed. Cir. 2016) (internal quotation marks omitted). The
“directed to inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept,
because essentially every routinely patent-eligible claim involving physical products and actions
involves a law of nature and/or natural phenomenon”. Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016). Thus, the inquiry is a meaningful one that requires the court to “look[]
at the focus of the claims, their character as a whole,” Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (internal quotation marks omitted), as a finding that the claims
are not directed to a patent-ineligible concept ends the § 101 analysis, see Enfish, 822 F.3d at 1339
(citing Alice, 134 S. Ct. at 2355).
Brand 44 stresses that the claims at issue are all directed toward “the natural phenomenon
of a pendulum,” which “results from the force of gravity on a mass suspended from a pivot.” [#21
at 8]; see also [#31 at 2, 4–5; #35 at 2–7]. It avers that regardless of whether the claims individually
cover articles of manufacture, the character of the claims as a whole demonstrate that each involves
the natural phenomenon of a pendulum and are therefore ineligible patent subject matter. See [#31
at 4–5; #35 at 4–7]. Plaintiffs counter that “[a]ll of the claims of the Patents-in-Suit are articles of
manufacture clearly within the explicitly recited patent-eligible subject matter of 35 U.S.C. § 101
. . . . Each of the claims of the Patents-in-Suit recite an improved swing comprising and claimed
as a combination of mechanical parts.” [#34 at 1]; see also [id. at 5]. Plaintiffs also argues that
although the Patents-in-Suit may involve the natural phenomenon of a pendulum, the claims at
issue do not recite this natural phenomenon, analogizing the Patents-in-Suit to the “teeter-totter”

10

example found in the Manual of Patent Examining Procedure (“MPEP”) § 2106.4. [Id.]. For the
following reasons, I respectfully agree with Plaintiffs and conclude that the claims at issue are not
directed to the natural phenomenon of a pendulum.
It is axiomatic that patents, even those concerning articles of manufacture, may be invalid
if directed to patent-ineligible subject matter, i.e., a natural phenomenon. See generally Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). The Supreme Court
“has read the term manufacture in § 101 to mean the production of articles for use from raw or
prepared materials by giving to these materials new forms, qualities, properties, or combinations,
whether by hand-labor or machinery.” Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 435
(2016) (ellipsis and internal quotation marks omitted). As mentioned, Plaintiffs assert that while
the Patents-in-Suit may involve the natural phenomenon of a pendulum, the claims at issue are not
directed to the natural phenomenon itself but, rather, are articles of manufacture “in the form of an
improved swing.” [#34 at 5]. Indeed, the language of the claims at issue, which governs the patent
eligibility inquiry, supports Plaintiffs’ contention. See Bilski I, 545 F.3d at 950–51.
For instance, independent Claim 22 of the ’450 Patent encompasses a swing comprising of
a central concaved seat, shaped as a circular disk, with a peripheral edge that allows for the
connection of several tethers suspended from a support member. See [#26-2 at 7:3–23]. The same
is true of independent Claims 1 and 18 of the ’146 Patent, see [#26-5 at 7:48–8:5, 8:42–60], as
well as independent Claims 1, 5, and 10 of the ’316 Patent with the additional component being
that the center seat be a one-piece molded polymeric body, see [#26-7 at 7:42–56, 8:8–27, 8:44–
58]. The dependent Claims are similarly not directed to a natural phenomenon. Instead each
explains additional components of the central concave seat, e.g., a drain opening, a one-piece
molded polymeric construction, a circular shape, see [#26-5 at 8:6–20; #26-7 at 8:28–43], as well

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as four tether openings spaced at 90 degree intervals around the circular seat, a groove for said
tether openings, a tether system suspended from a support body, and various radial support ribs,
see [#26-7 at 8:28–43, 8:59–63]. Certainly, the Patents-in-Suit involve a natural phenomenon, but
the claims at issue are not directed to that natural phenomenon. Rather, the claims at issue are
directed to articles of manufacture used to improve upon the use of traditional swings. See Enfish,
822 F.3d at 1338 (holding that the claims at issue were not directed to patent-ineligible concepts
and distinguishing the claims in Alice and Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306 (Fed.
Cir. 2015), because “the claims here are directed to an improvement in the functioning of a
computer.”).
This conclusion comports with the “teeter-totter” example drawn by MPEP § 2106.04.
Section 2106.4 explains that step one of the Alice/Mayo test seeks to distinguish patents that
involve a natural phenomenon from those that recite (i.e., set forth or describe) a natural
phenomenon—the latter being directed to a patent-ineligible subject matter.

See 2106.04

Eligibility Step 2: Whether a Claim is Directed to a Judicial Exception (R-08.2017), MPEP
§ 2106.04 [hereinafter MPEP § 2106.04]. By way of example, § 2106.04 provides:
[A] claim that recites a judicial exception is “A machine comprising elements that
operate in accordance with F=ma.” This claim recites the principle that force equals
mass times acceleration (F=ma) and is therefore directed to a law of nature
exception. Because F=ma represents a mathematical formula, the claim could
alternatively be considered as directed to an abstract idea. Because this claim is
directed to a judicial exception [], it requires further analysis [under step two of the
Alice/Mayo test]. An example of a claim that merely involves, or is based on, an
exception is a claim to “A teeter-totter comprising an elongated member pivotably
attached to a base member, having seats and handles attached at opposing sides of
the elongated member.” This claim is based on the concept of a lever pivoting on a
fulcrum, which involves the natural principles of mechanical advantage and the law
of the lever. However, this claim does not recite these natural principles and
therefore is not directed to a judicial exception []. Thus, the claim is eligible without
further analysis.

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Id. (emphasis added). A similar situation exists here: the Patents-in-Suit involve the natural
phenomenon of a pendulum, but the claims at issue do not set forth or describe a pendulum; they
are instead directed to articles of manufacture that aim to improve traditional swings. See Rapid
Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047–48 (Fed. Cir. 2016) (holding at step
one of the Alice/Mayo test that the claims at issue were not directed to a law of nature, because the
claims were “directed to a new and useful laboratory technique for preserving hepatocytes. . . . In
recent cases, we found claims ‘directed to’ a patent-ineligible concept when they amounted to
nothing more than observing or identifying the ineligible concept itself.”). Unlike United States
Patent No. 6,368,227 that Brand 44 introduced at oral argument [#39-1], the claims at issue from
the ’450, ’146, and ’316 Patents are not directed at a method of swinging on a swing. Rather, the
claims are directed at a mechanical device used to facilitate swinging.
Brand 44 takes issue with any reliance this court may place on the MPEP. See [#31 at 4–
5; #35 at 2, 5–6]. While Defendant is correct that the MPEP does not carry the force of law, “it is
entitled to judicial notice as an official interpretation of statutes or regulations as long as it is not
in conflict therewith.” Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995);
accord McKesson Info. Sols., Inc. v. Bridge Med., Inc., 487 F.3d 897, 923 n.2 (Fed. Cir. 2007)
(“[A]lthough [the MPEP] does not have the force of law, [it] is well known to those registered to
practice in the PTO and reflects the presumptions under which the PTO operates.”). And despite
Brand 44’s challenges to the MPEP, the USPTO, and the Patent Examiner, the court is not
persuaded that the “teeter-totter” example is “wrong,” or that the MPEP is in any way inconsistent
with established precedent or even conflates the two-step process for determining patentable
subject matter.

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Indeed, at oral argument, counsel for Defendant seemed to dismiss any concern regarding
conflating the two distinct steps of the Mayo/Alice analysis. This court inquired as to whether
every invention would then be subject to a Mayo/Alice analysis if the court were to accept
Defendant’s argument that the claims in the Patents-in-Suit were directed at the natural
phenomenon of a pendulum, rather than at a mechanical device of a swing, giving an example of
the boat that relies on the natural phenomenon of flotation. In response, counsel for Defendant
suggested that even if a boat were to be put through such a two-step analysis, a boat would have
sufficient inventive concept at step two and that § 101 applies to all patent claims even throughout
the prosecution before the USPTO. But such a response ignores the fact that the United States
Supreme Court defined a framework for considering § 101 challenges with two distinct steps. The
court “must first determine whether the claims at issue are directed to a patent-ineligible concept.”
Alice, 134 S.Ct at 2355.
Based on the foregoing reasons, I conclude that the claims of the Patents-in-Suit at issue
are not directed to patent-ineligible subject matter under 35 U.S.C. § 101. Accordingly, there is
no need for the court to consider whether the claims at issue amount to significantly more than the
natural phenomenon itself. See Enfish, 82 F.3d at 1339 (“Because the claims are not directed to
an abstract idea under step one of the Alice analysis, we do not need to proceed to step two of that
analysis.” (citing Alice, 134 S. Ct. at 2355)). In doing so, this court does not pass on Defendant’s
arguments regarding whether the claims at issue sufficiently disclose an “inventive concept” and
simply notes that the issues of novelty and non-obviousness pursuant to 35 U.S.C. §§ 102 and 103
are distinct from even the second step of the analysis of patentability under 35 U.S.C. § 101. Cf.
Domo, Inc. v. Grow, Inc., No. 2:17-cv-812, 2018 WL 2172937, at *6 (D. Utah May 10, 2018).

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CONCLUSION
For the reasons stated herein, the court hereby ORDERS that:
(1)

Defendant’s Motion to Dismiss [#21] is DENIED.

DATED: October 4, 2018

BY THE COURT:

____________________________
Nina Y. Wang
United States Magistrate Judge

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