Mobile Telecommunications Technologies, LLC v. Ruckus Wireless, Inc.
MEMORANDUM OPINION re motion to dismiss by Ruckus Wireless. Signed by Judge Leonard P. Stark on 3/20/17. Associated Cases: 1:16-md-02722-LPS-CJB, 1:16-cv-00699-LPS-CJB (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
In Re Mobile Telecommunications
Case No. 16-md-02722-LPS-CJB
C.A. No. 16-699-LPS-CJB
RUCKUS WIRELESS, INC.,
Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE
. Daniel R. Scardino, Henning Schmidt, Drew Zerdecki, Kyle Harter, REED & SCARDINO LLP,
Counsel for Mobile Telecommunications Technologies, LLC.
Philip A. Rovner, Jonathan A. Choa, POTTER ANDERSON &CORROON LLP, Wilmington,
Korula T. Cherian, RUY AKCHERIAN, LLP, Berkeley, CA
Ronald Wielkopolski, RUYAKCHERIAN, LLP, Washington, DC
Counsel for Ruckus Wifeless, Inc.
March 20, 2017
STARK, U.S. District Judge:
Pending before the Court is Ruckus Wireless, Inc's ("Ruckus" or "Defendant") 1 motion
to dismiss for failure to state a claim, filed pursuant to Federal .Rule of Civil Procedure 12(b)(6).
(D.I. 15)2 ("Motion"). For the reasons below, the Court Will deny the Motion.
On January 4, 2016, Plaintiff Mobile Telecommunications Technologies, LLC ("MTel")
filed seven suits in the United States District Court for the Eastern District of Texas, each
·alleging infringement of U.S. Patent Nos. 5,590,403 ("'403 patent"); 5;915,210 ("'210 patent");
and 5,659,891 ('",891 patent") (collectively, the "patents-in-suit" or "asserted patents"). 3 The
severi actions were consolidated into one lead case on· April 11, 2016. (C.A. No. lfr-692 D.I. 30)
On April 13, 2016, declaratory judgment plaintiffs ARRIS Group Inc. (''ARRIS") and
Ubee Interactive Inc. ("Ubee") (collectively, "DJ Plaintiffs") filed separate actions against MTel
in this Court, each seeking declaratory judgment of non-infringement of the patents-in~suit.
(C.A. No. 16-259 D.I. 1; C.A. No.16-260 D.I. 1) On April 19, 2016, BHN filed a similar
Although MTel sued other defendants in addition to Ruckus, in this Opinion
"Defendant" refers only to Ruckus.
All docket citations are to.C.A. No. 16-699, unless otherwise noted.
The seven cases (and respective defendants) are: C.A. No. 16-692 (Time Warner Cable
LLC, Time Warner Cable Enterprises LLC, and Time Warner Cable Texas LLC (collectively,
"TWC")); C.A. No. 16-693 (Bright House Networks, LLC ("BHN")); C.A. No. 16-694 (Charter
~ommunications Inc. ("Charter")); C.A. No. 16-695 (Cox Communications, Inc. ("Cox")); C.A.
No. 16-696 (Aruba Networks, Inc., Hewlett Packard Enterprise Company, and HP Inc. ("HP"));
C.A. No. 16-697 (Brocade Communications Systems; Inc. ("Brocade")); and C.A. No. 16-698
(Juniper Networks, Inc. ("Juniper")).
declaratory J.udgment action in this Court. (C.A. No. 16-277 D.I. 1)
On May 3, 2016, MTel filed four additional lawsuits in the Eastern District of Texas
against four new defendants, alleging infringement of the same three patents. 4 Three of these
cases were consolidated into one lead case on July 21, 2016 (C.A. No. 16-700 D.I. 6), and the
fourth was added on July 29, 2016 (id. at D.I. 7). 5
DJ Plaintiffs and the Texas Defendants fall into two general categories. Ruckus, ARRIS,
Ubee, Juniper, Aerohive, Brocade, HP; Firetide, and Xirrus are Wi-Fi equipment providers. Cox,
BHN, Charter,. and TWC are cable network operators.
On August 5, 2016, the Judicial Panel on Multidistrict Litigation ("JPML") determined
that centralization of the 14 actions involving MTel was appropriate, and transferred the cases to
this Court for coordinated or consolidated pretrial proceedings. (Case-No. 16-ind-2722 ("MDL")
The patents-in~suit generally relate to wireless telecommunications. The '403 patent is
entitled "Method and System for Efficiently Providing Two Way Communication Between a
Central Network and Mobile Unit." The claims of the '403 patent cover methods for wirelessly
simulcasting information signals. (' 403 patent at 33: 11-30, 34:35-62)
The four cases (and respective defendants) are: C.A. No. 16-699 (Ruckus); C.A. No. 16700 (Aerohive Networks, Inc. ("Aerohive")); C.A. No. 16-701 (Xirrus, Inc. ("Xirrus")); and C.A.
No. 16-702 (Firetide, Inc. ("Firetide")).
Hereinafter, the Court refers to the 11 actions filed in the Eastern District of Texas as the
"Texas Actions" and the defendants in those actions, collectively, as the "Texas Defendants."
The patents-in-suit can be found in Exhibits 1, 2, and 3 to the Complaint in C.A. No. 16-
The '210 patent.is entitled "Method and System for Providing Multicarrier Simulcast .
Transmission." The claims of the '210 patent cover systems for wirelesslytransmitting
information via two sets of carrier signals in simulcast. ('210 patent at 33:47-62, 34:44-64, 36:724)
The '891 patent is entitled "Multicarrier Techniques in Bandlimited Channels" and
claims a system and methods for transmitting wireless signals using specific frequency spacing
for carriers in a band-limited channel. ('891 patent at 6:4-44)
Ruckus filed its Motion on September 1, 2016, seeking dismissal ofMTel's complaint
under two legal theories: (1) failure to mark, pursuant to 35 U.S.C. § 287, with respect to.the
'210 patent; and (2) failure of the patents-in-suit to claim patent-eligible subject matter, under 35
U.S.C. § 101. (D.I. 15; see also D.I. 16) On September 7, 2016, Brocade joined in Ruckus's
Motion, incorporating Ruckus's Motion, opening brief, and supporting papers "in their entirety
as if set forth herein." (MDL D.I. 13) MTel filed an answering-brief in opposition on September·
19, 2016, arguing that (1) there is no requirement to mark when there is no product to mark and
(2) the patents-in-suit are not directed to patent-ineligible subject matter. (D.I. 21) The parties
completed briefing on September 29, 2016. (D.I. 23) On October 11, 2016, Juniper joined in
Ruckus's Motion. (MDL D.I. 36). The Court heard.oral argument on October 26, 2016. (MDL
D.I. 71 (Transcript ("Tr.")))
Motion to Dismiss
Evaluating a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) requires
the(~ourtto accept as t~e an material allegations of the complaint~· See Spruill v. Gillis; 3'72
F.3d 218, 223 (3d Cir. 2004). "The i~sue is not whether a plaintiff will ultimately prevail but
whether the claimant is entitled to offer evidence to support the claims." In re Burlington Coat
Factory Sec. Litig.; 114 F.3d 1410, 1420 (3d Cir. 1997) (internal quotation marks omitted).
Thus, the Court may grant such a motion to dismiss only if, after "accepting all well-pleaded ·
allegations in the complaint as true, and viewing them in the light most favorable to plaintiff,
plaintiff is not entitled to relief." Maio v. Aetna, Inc., 221F.3d472, 482 (3d Cir. 2000) (internal
quotation marks omitted).
However,. "[t]o survive a motion to dismiss, a civil plaintiff must allege facts that 'raise a
right to relief above the speculative level on the assumption that the allegations in the complaint
are true (even if doubtful in fact)."' Victaulic Co. v. Tieman, 499 F.3d 227, 234 (3d Cir. 2007)
(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). A claim is facially plausible
"when the plaintiff pleads factual content that allows the court to draw the reasonable inference
,that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009). At bottom, "[t]he complaint must state enough facts to raise a reasonable expectation
that discovery will reveal evidence of [each] necessary element" of a plaintiffs claim. Wilkerson
v. New Media Tech. Charter Sch. Inc., 522 F.3d 315, 321 (3d Cir. 2008) (internal quotation
The Court is not obligated to accept as true ''bald assertions," Morse v. Lower Merion
Sch. Dist., 132 F.3d 902, 906 (3d Cir. 1997) (internal quotation marks omitted), "unsupported
conclusions and unwarranted inferences,'; Schuylkill Energy Res., Inc. v. Pennsylvania Power &
Light Co., 113 F.3d 405, 417 (3d Cir. 1997), or allegations that are "self-evidently false," Nami v.
Fauver, 82 F.3d 63, 69 (3d Cir .. 1996)~
Section 287(a) of the Patent Act limits the damages that a patent owner may recover in an
infringement action. A patent owner who fails to mark its products, or fails to require its
licensees to mark their products, cannot recover damages relating to infringement occurring prior
to the date that the alleged infringer receives actual notice of the alleged infringement. See 35
U.S.C. § 287(a) ("In the event of failure so to mark, no damages shall be recovered by the
patentee in any action for infringement, except on proof that the infringer was notified of the
infringement and continued to infringe thereafter, in which event damages may be recovered only
for infringement occurring after such notice. Filing of an action for infringement shall constitute
such notice."). The Federal Circuit has interpreted this language to allow a patentee to recover·
. damages from the earlier of the time when it began marking products in compliance with
§ 28 7(a) and the time when the patentee gave ap. alleged infringer actual notice of its alleged
infringement. See Am. Med. Sys., Inc. v. Med. Eng'g Corp., 6 F.3d 1523, 1537 (Fed. Cir.· 1993)
("In light of the permissive wording of the present statute, and the policy of encouraging notice
by marking, we construe section 287(a) to preclude recovery of damages only for infringement
for any time prior to compliance with the marking or actual notice requirements of the. statute.").
Patent-Eligible Subject Matter
Under 35 U.S.C. § 101, "[w]hoever inv~nts or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions and requirements of this title." There are
three exceptions to § 101 's broad patent-eligibility principles: "laws of nature, physical
·phenomena, and ·abstract.ideas." Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Pertinent·
here is the third category, "abstract ideas," which "embodies the longstandingrule that an idea of
itself is not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014)
(internal quotation marks_ omitted). "As early as Le Roy v. Tatham, 55 U.S. 156, 175 (1852), the
Supreme Court explained that ' [a] principle, in the abstraCt, is a fundamental truth; an original
cause; a motive; these cannot be patented, as no one can claim in either of them
right.' Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed." In·
re Comiskey, 554 F.3d 967, 977-78 (Fed. Cir. 2009).
In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), the Supreme
Court set out a two-step "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 2355. First, courts must determine if the claims at issue are
directed to a patent-ineligible concept - in this case, an abstract idea ("step 1"). See id. If so, the
next step is to look for an '"inventive concept' - i.e., an element or combination of elements that
is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon
the [ineligible concept] itself' ("step 2"). Id. (certain quotation marks omitted). The two steps
are "plainly related" and "involve overlapping scrutiny of the content of the claims." Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Afayo Step 1
At step 1, "the claims are considered in their entirety to ascertain whether their character
as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (emphasis added); see also Affinity Labs of Texas,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) ("The. 'abstract idea' step ofthe
inquiry calls upon us to look at the 'focus of.the claimed advance over the prior art' to determine
ifthe claim's 'character as a whole' is directed to excluded subject matter.").
The -Federal Circuit has distinguished 'claims that are "directed to an improvement to .
computer functionality versus being directed to an abstract idea:" Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (emphasis added). Enfish, for example, found
claims to be not abstract because the "plain focus of the claims is on an improvement to
computer functionality itself," distinguishing such patent claims from those involved in Alice~
which involved "economic or other tasks for which a computer is used in its ordinary capacity."
Id. at 1336. By contrast, in Alstom, the Federal Circuit determined that certain claims were
directed to an abstract idea because ''the focus of the claims is not on .. ~ an improvement in
computers as tools, but on certain independently abstract ideas that use computers as tools." 830
F.3d at 1354. Enfish adds that a patent specification's disparagement of prior art or
· "conventional" implementations may bolster a conclusion that claims ar~ directed to a nonabstract improvement of technology rather than an abstract idea. 822 F.3d at 1337, 1339.
Courts should not "oversimplifl:Y]" key inventive concepts or "downplay" an
invention's benefits in conducting a step-l analysis. See id. at 1338; see also McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) ("[C]ourts must be careful
to avoid oversimplifying the claims by looking at them generally and failing to ·account for th~
specific requirements of the claims.") (internal quotation marks omitted). "Whether at step one
or step two of the Alice test, in determining the patentability of a method, a court must look to the
claims as an ordered combination, without ignoring the requirements of the individual steps." Id.
At step 2, the F edera1 Circuit has instructed courts to "look to both the claim as a whole
and the individual claim elements to determine whether the claims contain an element or
combination of elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible.concept itself." McRO, 837 F.3d at 1312
(internal brackets and quotation marks omitted). The "standard" step-2 inquiry includes
consideration of whether claim elements "simply recite 'well-understood, routine, conventional
activit[ies]."' Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827F.3d 1341, 1350
(Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2359). "Simply appending conventional steps,
specified at a high level of generality, [is] not enough to supply an inventive concept." Alice,
134 S. Ct. at 2357 (emphasis in original; internal quotation marks oinitted).
However, "[t]he inventive concept inquiry requires mo~e than recognizing that each claim
element, by itself, was known in the art." Bascom, 827 F.3d at 1350.- In Bascom, the Federal
Circuit held that "the limitations of the claims, taken individually, recite generic computer,
network and Internet components, none of which is inventive by itself," but nonetheless
determined that an ordered combination of these limitations was adequately alleged to be patenteligible under step 2 at the pleading stage. Id. at 1349. The Federal Circuit has looked to the
claims as well as the specification in performing the "inventive concept" inquiry. See Affinity
Labs of Texas v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) ("[N]either the claim
_nor the specification reveals any concrete way of employing a customized user interface.").
The "mere recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention" under step 2. Alice, 134 S. Ct. at 2358. "Given the, ubiquity
of computers, ... wholly 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. (internal citation and quotation marks
.The Supreme Court has instructed that, "in applying the § 101 exception, [courts] must
distinguish between patents that claim the building blocks of human ingenuity and those that
integrate the building blocks into something more, thereby transforming them into a patenteligible invention." Alice, 134 S. Ct. at 2354 (internal citation and quotation marks omitted).
The "concern that drives th[ el exclusionary principle [i]s one of pre-emption." Id. That is,
where a patent would preempt use of "basic tools of scientific and technological work," that is,
"[l]aws of nature, natural phenomena, and abstract ideas," the patent would "impede innovation
more than it would tend to promote it, thereby thwarting the primary object of the patent laws."
Id. (internal quotation marks omitted).
The Federal Circuit has considered the issue of preemption at both steps 1 and 2. For
example, in McRO, 837 F.3d at 1315, in support of its conclusion that a claim was patent-eligible
under step 1, the Federal Circuit held that limitations of the claim "prevent[ed] preemption of all
processes for achieving automated lip-synchronization of 3-D characters." In Bascom, 827 F.3d·
at 1350, in support of the Court's conclusion that claims reciting "a specific, discrete
implementation of the abstract idea of filtering content" were not patent-ineligible under.step 2 at
the pleading stage, the Federal Circuit explained that the claims did not preempt ''all ways of
filtering content on the Internet."
"[T]he machine-or-transformation test is a useful and important clue, an investigative
tool, for determining whether some claimed inventionsare processes under§ 101." Bilski v.
ns. 593, 604 (2010).
However, it is "not the sole test for deciding whether an
invention is a patent-eligible 'process."' Id. Under the machine-or-transformation test, a patent
claim that "uses a particular machine or apparatus" may be patent-eligible if it does not
"pre-empt uses of the principle that do not also use the specified machine or apparatus in the
manner claimed." In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), aff'd sub nom. Bilski v.
Kappos, 561 U.S. 593 (2010). In addition, "a claimed process that transforms a particular article
to a specified different state or thing by applying a fundamental principle" may be patent-eligible
· if it does not "pre-empt the use of the principle to transform any other article, to transform the
same article but in a manner not covered by the claim, or to do anything other than transform the
specified article." Id.
Ruckus argues that MTel "has the burden of pleading a~d proving compliance with
§ 287." (D.I. 16 at 10) (emphasis in original) (citing Sentry Prot. Prod., Inc. v. Eagle Mfg. Co.,
400 F.3d 910, 918 (Fed. Cir. 2005)) This duty, Ruckus contends; extends to requiring MTel to
plead compliance with§ 287 with respect to MTel's "licensees and predecessors in interest."
(D.I. 23 at 2) According to Ruckus, MTel's complaint should be~dismissed with respect to the.
'210 patent because MTel "failed to plead compliance with§ 287" and "the '210 patent expired
before the filing of the complaint." (Id. at 3)
MTel counters that it was not required to plead compliance with§ 287 because the statute
applies only to patent owners and licensees that make, offer to sell, sell, or import a "patented
article," yet neither MTel nor any of its licensees or predecessors-in-interest ever engaged in any
of these activities. (See D.I. 21 at 3) (citing Wine Ry. Appliance Co. v. Enter. Ry. Equip. Co., 297
U.S. 387 (1936)) See also Texas Dig. Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1219 (Fed. Cir.
2002) (collecting Federal Circuit cases applying Wine Railway to current statutory counterpart);
In re Elonex Phase II Power Mgmt. Litig., 2002 WL 242363, at *2 (D. Del. Feb. 20, 2002) ("As
[the licensee] had no products to mark, the provisions of Section 287(a) cannot apply to bar
pre-suit damages."); Med. Graphics Corp. v. SensorMedics Corp., 1995 WL 523633, at *3 (D.
Minn. June 5, 1995); Tulip Computers. Int 'l B. V v. Dell Computer Corp., 2003 WL 1606081, at
*13 (D: Del. Feb. 4, 2003). MTel represented at the hearing that no predecessors-in-interest nor
licensees of the '210 patent have ever practiced it. (Tr. at 34) (Court: "So you can represent
today at least that nobody who has ever held this patent, at least the '210, ever practiced it."
Counsel: "That is correct, Your Honor. So we have talked to the inventors. We have done
investigation. We have talked to the owners of the company.").
The Court agrees with MTel that it was not required to plead compliance with§ 287.
Sentry, and the other cases cited by Ruckus, address circumstances in which parties to whom the
marking statute applies were required to plead compliance with§ 287. See, e.g., Sentry, 400 F.3d
at 918. Such is not the case here. Ruckus's contentions with respect to marking amount to mere
speculation that some predecessor-in-interest or licensee may have. practiced the '210 patent.
MTel was not required to plead compliance with the marking statute under Wine Railway
because there is no evidence that any predecessor-in-interest or licensee has ever practiced the
Rule 12 requires the Court to view the complaint in the light most favorable to MTel at
this stage. 7 Facts may arise during discovery that may require MTel to seek leave to amend its
complaint, but it is not required to do so now based on speculation as to what may be revealed
Thus, the Court will deny Ruckus's motion with respect to marking.
Patent-Eligible Subject Matter
Ruckus argues that asserted claims 1-5 of the '891 patent are invalid under§ 101 for two
·independent reasons: (l).the claims do not fall under aily of the four statutory categories of
patentable subject matter defined by§ 101 ("process, machine, manufacture, or composition of
matter") and (2) the claims are directed to a patent-ineligible abstract idea.
Statutory Subject Matter
Ruckus contends that the asserted claims of the '891 patent are directed to "'a transitory,
propagating signal,"' which is unpatentable under In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007). (D.I. 16 at 15 (quoting Nuijten, 500 E.3d at 1357)) According to Ruckus, "[w]hile claims
1-4 ostensibly claim a one-step method for transmitting a signal, such a method is
indistinguishable from claiming the signal itself." (Id.) Ruckus argues that "claim 5 includes the
additional nominal step of transmitting the plurality of carriers from the same transmission.
W ere there a duty to plead marking in this case, dismissal would still not be appropriate.
· MTel contingently sought leave to amend its complaint to plead compliance with§ 287 ifthe
Court were inclined to side with Ruckus (Tr. at 35), which Ruckus agreed ''\~uuld be fair" (id. at
source, which merely defines a multi-carrier modulated signal." (Id.) MTel counters that the
claims come within the "process" category of patentable subject matter. (Tr. at 63)
The Court agrees with MTel. On its face, the '891 patent claims methods for "operating
a plurality of paging carriers in a single mask-defined, bandlimited channel," or what may
otherwise be characterized as a process for transmitting information in a bandlimited channel by
spacing carriers at certain relative frequency differences. ('891 patent at 6:4-5, 31-32) Ruckus's
sole authority for its "signal" theory of patent-ineligibility, Nuijten, is distinguishable. The claim
at issue in Nuijten explicitly recited a "signal," unlike the claims of the '891 patent; the Federal
Circuit held-there that "a process claim must cover an act or series of acts and Nuijten's signal
claims do not." 500 F.3d at 1355 (emphasis added). The claims of the '891 patent do cover "an
act" - namely, the act of transmitting specifically-arranged carriers in a bandlimited channeland, therefore, qualify as process claims under § 101.
Ruckus alternatively argues that the claims of the '891 patent are patent-ineligible as
being directed to the abstract idea of "modulating a multi-carrier signal" according to a
mathematical formula. (D.I. 16 at 15-17) Ruckus contends that the '891 patent's claims are
similar to those found to be ineligible in Parker v. Flook, 437 U.S. 584, 588-96 (1978). (D.I. 16
at 16) MTel counters that the claims are not directed to a patent-ineligible abstract idea, but
rather are directed to a technical solution that may utilize a mathematical formula. (D.I. 21 at 11
& n.42 (citing Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed.
Cir. 2014) ("In determining whether a process claim recites an abstract idea, we must examine
the claim ·as a whole, keeping in mind that an invention is not ineligible just because it relies ,
upon a law of nature or mathematical algorithm.")))
There are disputed issues of fact and potential claim construction disputes that preclude
the Court from ruling, at this time, that the claims of the '891 patent are patent-:ineligible. On the
current record, the Court cannot agree with Ruckus that the claims asserted here are similar to
those analyzed in Flook. Flook appears to be distinguishable because the claims, read in a light
most favorable to MTel, are not "'directed essentially to a method of calculating, [or] using a
mathematical formula."' Flook, 437 U.S. at 595 (quoting In re Richman, 563 F.2d 1026, 1030
Ruckus (and the other Texas Defendants) may develop facts during discoverythat could
show that the ideas covered by the claims of the '891 patent are "conventional" or "routine," but
the '891 patent's specification, which the Court must accept as true at this point, seems to
indicate that the '891 patent is directed to the technical solution of achieving "higher capacity
over a bandlimited channel for paging without the need for.stringent subchannel interference.
protection." ('891 patent at 2:15-17) Facts developed, as.well as further rulings from the Court,
may also establish the breadth of the claims and better inform the Court's preemption analysis. 8
Ruckus argues that Claim 1 of the '403 patent is directed to an abstract idea and that it
"effectively captures any situation in which transmitters have transmitted different information at
some point in time after having transmitted a block of information in simulcast." (D.I. 16 at 17)
The Court finds that Ruckus has not shown that any claims of the asserted patents are
patent-ineligible under step 1. It is therefore unnecessary for the Court to consider step 2 for any
of the asserted patents.
Ruckus further argues that "this claim is so abstract that there is no discernible relationship
between the blocks of information transmitted, including the criteria for which transmitters
transmit which information or whether the blocks of information are intended for the same or
different receivers." (Id.)
. This latter argument by Ruckus highlights the need for claim construction before ruling
on Ruckus's§ 101 arguments. One or more of the claim limitations may, potentially, be
construed in a manner that defines and clearly .limits the arguably broad language of the claims.
As with the· claims of the '891 patent, further development of the record will also inform the
Court's preemption analysis. Ruckus's citation to Alice for the proposition that claim 1 covets
"basic tools of scientific and technological. work" (id. (citing 134 S. Ct. at 2354)) is unsupported
by any evidence at this stage of the case. T-he Court cannot determine now if using "first and
second sets of transmitters" to broadcast in simulcast and then broadcast independently is an
abstract concept of the kind held to be patent-ineligible in Alice. (See '403 patent at 33:23-25).
Claims 10 and 11
As Ruckus characterizes claims 10 and 11 of the '403 patent, they cover the concept
embodied in claim 1 with an "additional ostensible step of dynamically reassigning" transmitters.
(D .I. 16 at 18) For the reasons already discussed above with respect to claim 1, issues of fact and
potential claim construction disputes must be resolved before the Court can rule on these
arguments. On the clirrent record, the Court cannot say that claims 10 and 11 are directed to
patent-ineligible subject matter.
Ruckus argues that the asserted claims of this patent are directed to "the ideas of
multi-carrier transmission and simulcasting," which "are well-known abstract ideas.;' (D.I. 16 at
.19) This is a factual assertion that, in this case, the Court cannot take as true based on the limited
record before it at the Rule 12 stage. (See D.l. 21 at 6-8) On the current record, the Court cannot
say whether multi-carrier transmission and simulcasting are abstract ideas or whether they were
well-known in the art. This case is riot akin to Alice, Bilski, or other cases involving Claims that
.covered concepts that were so widely known that courts could take judicial notice of the fact that
they were "conventional," "well-known," or "routine."
For the foregoing reasons, Ruckus's Motion (D.I. 15) will be denied. Specifically,
Ruckus's motion to dismiss for failure to mark will be denied and the motion to dismiss for
failure to claim patent-eligible subject matter will be denied without prejudice. An appropriate
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