IPA Technologies Inc. v. Amazon.com, Inc. et al
Filing
53
MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 1/18/2019. Associated Cases: 1:16-cv-01266-RGA, 1:18-cv-00001-RGA, 1:18-cv-00318-RGA(nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
IP A TECHNOLOGIES, INC.,
Plaintiff,
V.
Civil Action No. 16-1266-RGA
AMAZON.COM, INC., and AMAZON
DIGITAL SERVICES, LLC,
Defendants.
IPA TECHNOLOGIES, INC.,
Plaintiff,
Civil Action No. 18-01-RGA
V.
MICROSOFT CORPORATION,
Defendant.
IP A TECHNOLOGIES, INC.,
Plaintiff,
Civil Action No. 18-318-RGA
V.
GOOGLELLC,
Defendant.
MEMORANDUM OPINION
Stephen P. Brauerman and Sara E. Bussiere, BAYARD, P.A., Wilmington, DE; Paul J.
Skiermont (argued), Sarah E. Spires, SadafR. Abdullah, Steven W. Hartsell, Alexander E.
Gasser, and Christopher M. Hodge, SKIERMONT DERBY, Dallas, TX; Mieke Malmberg,
SKIERMONT DERBY, Los Angeles, CA.
Attorneys for Plaintiff
Steven J. Balick, & Andrew C. Mayo, ASHBY & GEDDES, P.A. , Wilmington, DE; J. David
Hadden (argued), Saina S. Sharnilov, Todd R. Gregorian, Ravi Ranganath, & Athul K. Acharya,
FENWICK & WEST LLP, Mountain View, CA.
Attorneys for Defendants Amazon.corn and Amazon Digital Services, LLC.
Rodger D. Smith II, MORRIS , NICHOLS , ARSHT & TUNNELL LLP, Wilmington, DE;
Richard A. Cederoth (argued) & Nathaniel C. Love, SIDLEY AUSTIN LLP, Chicago, IL;
Joseph A. Micallef & Scott M. Border, SIDLEY AUSTIN LLP, Washington, DC.
Attorneys for Defendant Microsoft Corporation.
Jack B. Blumenfeld and Rodger D. Smith II, MORRIS , NICHOLS , ARSHT & TUNNELL LLP,
Wilmington, DE; Michael C. Hendershot (argued), David T. Okano, and Evan McLean, PAUL
HASTINGS LLP, Palo Alto, CA; Arvind Jairarn, PAUL HASTINGS LLP, Washington, DC.
Attorneys for Defendant Google LLC.
January
Jt,
2019
Presently before the Court is Defendants' Motion to Dismiss Pursuant to Federal Rule of
Civil Procedure 12(b)(6). (D.I. 35). The issues are fully briefed. (D.I. 36, 37, 45). The Court
held oral argument on November 16, 2018. 1 (D.I. 51). For the reasons that follow, the Court
grants Defendants' motion to dismiss as to the '021 patent, '061 patent, and '718 patent and
denies Defendants' motion to dismiss the claims of infringement of the ' 115 patent, the ' 128
patent, and the '560 patent.
I.
BACKGROUND
Plaintiff IPA Technologies ("Plaintiff') filed suit on December 19, 2016 alleging
Defendants Amazon.com and Amazon Digital Services ("Defendants") infringe U.S. Patent Nos.
6,742,021 ("the ' 021 patent"), 6,523 ,061 ("the ' 061 patent"), and 6,757,718 ("the '718 patent")
owned by Plaintiff (collectively "the Halverson patents"). (D.I. 1). On March 31, 2018, the
Court granted Defendants' first Motion to Dismiss without prejudice as to claim 1 of the ' 021
patent, claim 1 of the ' 061 patent, and claim 1 of the ' 718 patent, and otherwise denied the
motion. (D.I. 30, 31). On April 11, 2018, Plaintiff filed an amended complaint, reasserting these
claims and asserting new claims that Defendants infringe U.S Patent Nos. 6,851 ,115 ("the '115
patent"), 7,069,560 ("the '560 patent"), and 7,036,128 ("the ' 128 patent") (collectively, "the
Cheyer patents"). (D.I. 33). Defendants filed a motion to dismiss the claims for infringement of
the six asserted patents as invalid under 35 U.S.C. § 101. (D.I. 35). The asserted Halverson
patents are generally directed to navigating an electronic data source by means of spoken
1
On January 1, 2018, Plaintiff filed suit asserting the same patents against Microsoft Corporation. (C.A. No . 18-01RGA, D.I. 1). On February 26, 2018, Plaintiff filed suit asserting the same patents against Google LLC. (C.A. No .
18-318-RGA, D.I. 1). In these related cases, Defendants Microsoft Corporation and Google LLC have filed Motions
toDismissandprovidedadditionalbriefing. (C.A. No . 18-01 , D.I.17, 18, 19, 30; C.A. No . 18-3!8, D.I.10 , 11 , 16,
22). Defendant Google solely moved to dismiss the claims ofthe ' 021 , '061 , and ' 718 patents. (C.A. No. 18-3 18,
D.I. 18). Oral argument included presentations from the Amazon defendants, Microsoft, and Google. All docket
item references in this opinion refer to C.A. No . 16-1266 unless otherwise specified.
1
language. ('021 patent, Abstract). The Halverson patents share a common specification. (D.I.
37 at 7-8).
Claim 1 of the ' 021 patent reads:
1. A method for speech-based navigation of an electronic data source, the electronic
data source being located at one or more network servers located remotely from a
user, comprising the steps of:
(a) receiving a spoken request for desired information from the user;
(b) rendering an interpretation of the spoken request;
(c) constructing at least part of a navigation query based upon the
interpretation;
(d) soliciting additional input from the user, including user interaction in a
non-spoken modality different than the original request without
requiring the user to request said non-spoken modality;
(e) refining the navigation query, based upon the additional input;
(f) using the refined navigation query to select a portion of the electronic
data source; and
(g) transmitting the selected portion of the electronic data source from the
network server to a client device of the user.
('021 patent, claim 1). Claim 1 of the ' 061 patent reads:
1. A method for utilizing agents for speech-based navigation of an electronic data
source, comprising the steps of:
(a) receiving a spoken request for desired information from a user;
(b) rendering an interpretation of the spoken request;
(c) constructing a navigation query based upon the interpretation;
(d) routing the navigation query to at least one agent, wherein the at least
one agent utilizes the navigation query to select a portion of the
electronic data source; and
(e) invoking a user interface agent for outputting the selected portion of the
electronic data source to the user, wherein a facilitator manages data flow
among multiple agents and maintains a registration of each of said
agents' capabilities.
('061 patent, claim 1). Claim 1 of the ' 718 patent reads:
2
1. A method for speech-based navigation of an electronic data source located at one
or more network servers located remotely from a user, wherein a data link is
established between a mobile information appliance of the user and the one or more
network servers, comprising the steps of:
(a) receiving a spoken request for desired information from the user utilizing
the mobile information appliance of the user, wherein said mobile
information appliance comprises a portable remote control device or a
set-top box for a television;
(b) rendering an interpretation of the spoken request;
(c) constructing a navigation query based upon the interpretation;
(d) utilizing the navigation query to select a portion of the electronic data
source; and
(e) transmitting the selected portion of the electronic data source from the
network server to the mobile information appliance of the user.
(' 718 patent, claim 1).
The asserted Cheyer patents are generally directed to a software "architecture
support[ing] cooperative task completion by flexible and autonomous electronic agents." (' 115
patent, Abstract). The Cheyer patents share a "nearly identical" specification. (D.I. 36 at 8).
Claim 61 of the' 115 patent reads:
61. A facilitator agent arranged to coordinate cooperative task completion within a
distributed computing environment having a plurality of autonomous serviceproviding electronic agents, the facilitator agent comprising:
an agent registry that declares capabilities of service-providing electronic agents
currently active within the distributed computing environment; and
a facilitating engine operable to parse a service requesting order to interpret a
compound goal set forth therein, the compound goal including both local and global
constraints and control parameters, the service request formed according to an
Interagent Communication Language (ICL), wherein the ICL includes
a layer of conversational protocol defined by event types and parameter lists
associated with one or more of the events, wherein the parameter lists
further refine the one or more events; and
a content layer comprising one or more of goals, triggers, and data elements
associated with the events; and
the facilitating engine further operable to construct a goal satisfaction plan by using
reasoning that includes one or more of domain-independent coordination strategies,
3
domain-specific reasoning, and application-specific reasoning comprising rules and
learning algorithms.
('061 patent, claim 61). Claim 52 of the ' 560 patent reads:
52. A computer implemented process for providing coordinated task completion
within a distributed computing environment, the distributed computing
environment including a plurality of autonomous electronic agents, the computer
implemented method comprising the steps of:
providing at least one agent registry including the capabilities of service
providing electronic agents;
interpreting a service request in the form of a base goal, the service request
being in a interagent communication language (ICL), the ICL including a
layer of conversational protocol defined by event types and parameter lists
associated with one or more of the events, wherein the Parameter lists
further refine the one or more events;
determining a plurality of sub goals necessary to accomplish the base goal;
selecting from said registry at least one service providing agent capable of
completing said sub goals;
delegating at least one sub goal as a peer to peer service request directly
from a service requesting agent to a service providing agent; and
delegating any remaining sub goals as service request in the interagent
communication language to the selected agents capable of completing the
remaining sub-goals.
(' 560 patent, claim 52). Claim 1 of the ' 128 patent reads :
1. A collaborative computer-implemented community of distributed electronic
agents, organized to provide a mobile computing environment, the computerimplemented community of distributed electronic agents comprising:
An agent registry wherein one or more capabilities of each of the electronic
agents are registered in the form of an interagent communication language
(ICL), wherein the interagent language includes a layer of conversational
protocol defined by event types and parameter lists associated with one or
more events, and wherein the parameter lists further refine the one or more
events;
a facilitator agent arranged to coordinate cooperative task completion
among the electronic agents by delegating one or more received ICL goals
to a selected one or more of the electronic agents based upon the registered
capabilities of the selected agents;
4
one or more service-providing electronic agents, being in bi-directional
communication with the facilitator agent, including at least one location
agent operable to ascertain a current physical location of a user; and
one or more computer interface agents being in bi-directional
communication with the facilitator agent, the mobile computer interface
agents being operable to process at least one mobile user input type and to
responsively generate and present to the facilitator agent one or more ICL
goals corresponding to the user's desired request.
('128 Patent, claim 1).
On May 29, 2018, Plaintiff submitted proposed claim constructions for purposes of
Defendants' motion to dismiss. (D.I. 44-8). They are:
Claim Term
rendering an interpretation of
the spoken request
constructing at least part of a
navigation query based upon
the interpretation
I
constructing navigation query
based upon the interpretation
Plaintiff's Proposed Construction
processing the spoken request to understand it by
performing speech recognition to process voice
data into a text stream of recognized words, and
performing natural language processing to parse
the text to determine the meaning of the user' s
request
identifying an electronic network data source
where user-desired information can be found and
automatically creating (at least part of) an
operational data request based on the interpretation
of the user's request that is structured
appropriately to retrieve user-desired information
from the electronic network data source(s)
(Id.) . For the purposes of this motion, I adopt Plaintiffs proposed constructions.2
II.
LEGAL STANDARD
A. Motion to Dismiss
Rule 8 requires a complainant to provide "a short and plain statement of the claim
showing that the pleader is entitled to relief .... " Fed. R. Civ. P. 8(a)(2). Rule 12(b)(6) allows
2
Defendant Google asserts Plaintiff is collaterally estopped from asserting new constructions for terms in the
Halverson patents after it proposed differing constructions in IPA Tech., Inc. v. Amazon.com Inc., 307 F. Supp. 3d
356, 360 (D. Del. 2018). (C.A. 18-318, D.I. 22 at 7). Collateral estoppel does not apply here because my previous
opinion was not a final disposition on the merits. Rather, I dismissed Plaintiff's claims without prejudice, and
granted Plaintiff leave to amend its complaint.
5
the accused party to bring a motion to dismiss the claim for failing to meet this standard. A Rule
12(b)(6) motion may be granted only if, accepting the well-pleaded allegations in the complaint
as true and viewing them in the light most favorable to the complainant, a court concludes that
those allegations "could not raise a claim of entitlement to relief." Bell At!. Corp. v. Twombly,
550 U.S. 544, 558 (2007). The Federal Circuit follows regional circuit law for motions to
dismiss. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d
1343, 1346 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (20 15).
"Though ' detailed factual allegations' are not required, a complaint must do more than
simply provide ' labels and conclusions' or 'a formulaic recitation of the elements of a cause of
action."' Davis v. Abington Mem 'l Hosp ., 765 F.3d 236, 241 (3d Cir. 2014) (quoting Twombly,
550 U.S. at 555). I am "not required to credit bald assertions or legal conclusions improperly
alleged in the complaint." In re Rockefeller Ctr. Props., Inc. Sec. Litig., 311 F .3d 198, 216 (3d
Cir. 2002). A complaint may not be dismissed, however, "for imperfect statement of the legal
theory supporting the claim asserted." See Johnson v. City of Shelby, 135 S. Ct. 346, 346 (2014).
A complainant must plead facts sufficient to show that a claim has "substantive
plausibility." Id. at 347. That plausibility must be found on the face of the complaint. Ashcroft
v. Iqbal, 556 U.S. 662, 678 (2009). "A claim has facial plausibility when the plaintiff pleads
factual content that allows the court to draw the reasonable inference that the defendant is liable
for the misconduct alleged." Id. Deciding whether a claim is plausible will "be a contextspecific task that requires the reviewing court to draw on its judicial experience and common
sense." Id. at 679.
6
B. Patentable Subject Matter under 35 U.S.C. § 101
Section 101 of the Patent Act defines patent-eligible subject matter. It provides:
"Whoever invents 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. " 35 U.S.C. § 101. The Supreme Court
has recognized an implicit exception for three categories of subject matter not eligible for
patentability- laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS
Bank Int '!, 134 S. Ct. 2347, 2354 (2014). The purpose of these carve outs is to protect the "basic
tools of scientific and technological work." Mayo Collaborative Servs. v. Prometheus Labs.,
Inc. , 566 U.S. 66, 71 (2012). " [A] process is not unpatentable simply because it contains a law
of nature or a mathematical algorithm," as "an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent protection." Id. at 71
(emphasis omitted). In order "to transform an unpatentable law of nature into a patent-eligible
application of such a law, one must do more than simply state the law of nature while adding the
words ' apply it. "' Id. at 72 (emphasis omitted).
The Supreme Court recently reaffirmed the framework laid out in May o "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,
the court must determine whether the claims are drawn to a patent-ineligible concept. Id. If the
answer is yes, the court must look to "the elements of the claim both individually and as an
' ordered combination"' to see if there is 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. "' Id. (alteration in original).
7
"A claim that recites an abstract idea must include 'additional features' to ensure 'that the
[claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. at 2357
(alterations in original) (quoting Mayo, 566 U.S. at 77). "[S]imply appending conventional
steps, specified at a high level of generality, to ... abstract ideas cannot make those ... ideas
patentable." Mayo, 566 U.S. at 82. Further, "the prohibition against patenting abstract ideas
cannot be circumvented by attempting to limit the use of [the idea] to a particular technological
environment." Alice, 134 S. Ct. at 2358 (quoting Bilski v. Kappas , 561 U.S. 593 , 610-11
(2010)). Thus, "the mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention." Id. For this second step, the machine-ortransformation test can be a "useful clue," although it is not determinative. Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 2907 (2015).
Patent eligibility under § 101 is a question of law suitable for resolution on a motion to
dismiss. See OIP Techs. , Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015);
Content Extraction, 776 F.3d at 1346. At Alice Step Two, however, "[w]hether something is
well-understood, routine, and conventional to a skilled artisan at the time of the patent is a
factual determination." Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018); see also
Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 , 1126-27 (Fed. Cir. 2018).
Therefore, plausible factual allegations in the complaint may create a dispute of fact as to
whether an inventive concept exists under Alice Step Two. 3
However, at the motion to dismiss stage, factual allegations in the complaint which
contradict the specification or the claims need not be credited as true under the Rule 12(b)( 6)
3
In denying rehearing en bane, Judge Moore states, "Berkheimer and Aatrix stand for the unremarkable proposition
that whether a claim element or combination of claim elements would have been well-understood, routine and
conventional to a skilled artisan in the relevant field at a particular point in time is a question of fact. " Berkheimer v.
HP, Inc., 890 F.3 d 1369, 1370 (Fed. Cir. 2018) (denial of rehearing en bane).
8
analysis. See Aatrix, 882 F.3d at 1125 ("plausible factual allegations may preclude dismissing a
case under § 101 where, for example, nothing on the record refutes those allegations as a matter
oflaw or justifies dismissal under Rule 12(b)(6)") (quoting Fair Warning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1097 (Fed. Cir. 2016)); see also Berkheimer, 881 F.3d at 1369
("improvements in the specification, to the extent . . . captured in the claims, create a factual
dispute") (emphasis added). "In a situation where the specification admits the additional claim
elements are well-understood, routine, and conventional, it will be difficult, if not impossible, for
a patentee to show a genuine dispute." Berkheimer v. HP Inc., 890 F.3d 1369, 1371 (Fed. Cir.
2018) (Moore, J.) (denial ofrehearing en bane). Therefore, factual allegations in the complaint
that claim elements are not well-understood, routine or conventional are not taken as true where
they contradict admissions in the specification or the claims themselves.
The Federal Circuit has held that the district court is not required to individually address
claims not asserted or identified by the non-moving party, so long as the court identifies a
representative claim and "all the claims are substantially similar and linked to the same abstract
idea." Id. at 1348.
III.
DISCUSSION
A. Procedural Posture
Defendants ask this Court to invalidate all claims in the Halverson and Cheyer patents as
patent ineligible under 35 U.S.C. § 101. 4 Plaintiff argues that Defendant must establish
ineligibility for every claim of the patents. (D.I. 37 at 16). As discussed above, however, the
district court is not required to individually address claims not asserted or identified by the nonmoving party, so long as the court identifies a representative claim and "all the claims are
4
Defendant Google has only filed a motion to dismi ss those claims asserting the Halverson patents. (C.A. 18-318,
D.I. 18).
9
substantially similar and linked to the same abstract idea." Content Extraction, 776 F.3d at 1348.
Plaintiff only specifically asserts one claim from each patent. (D.I. 33
,r,r 181 , 206, 229, 253,
266, 282). Moreover, Defendants argue that the asserted claims are representative of the
remainder of the claims in the asserted patents and that all claims are directed to the same
abstract idea. (D.I. 36 at 14-16, 21 -23 ; C.A. 18-318, D.I. 11 at 11-12 (addressing those claim
groupings specifically identified by Plaintiff at previous oral argument); C.A. 18-01 , D.I. 18 at
17-18). Plaintiffs sole response to these assertions is to characterize these sections of the brief
as "attorney argument." (D.I. 37 at 16; C.A. 18-01 , D.I. 19 at 19; C.A. 18-318, D.I. 16 at 16).
Plaintiff has failed to identify any claims that are not represented by the asserted claims of the
patents. Defendants have made a sufficient showing that the claims of each patent are
substantially similar and linked to the same abstract idea. Therefore, the Court will treat the
asserted claims as representative of all the claims of their respective patents.
B. Patentable Subject Matter
1. Abstract Idea
"First, we determine whether the claims at issue are directed to [an abstract idea] ." Alice,
134 S. Ct. at 2355 . "The ' abstract ideas ' category embodies ' the longstanding rule that an idea
of itself is not patentable."' Id. (quoting Gottschalk v. Benson, 409 U.S . 63 , 67 (1972)). "The
Supreme Court has not established a definitive rule to determine what constitutes an ' abstract
idea' sufficient to satisfy the first step of the Mayo/Alice inquiry." Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). The Supreme Court has recognized, however, that
"fundamental economic practice[s] ," Bilski, 561 U.S. at 611 , "method[s] of organizing human
activity," Alice, 134 S. Ct. at 235 6, and mathematical algorithms, Benson, 409 U.S. at 64, are
abstract ideas. In navigating the parameters of such categories, courts have generally sought to
10
"compare claims at issue to those claims already found to be directed to an abstract idea in
previous cases." Enfish, 822 F.3d at 1334. "[S]ome improvements in computer-related
technology when appropriately claimed are undoubtedly not abstract." Id. at 1335. "[I]n
determining whether the claims are directed to an abstract idea, we must be careful to avoid
oversimplifying the claims because '[a]t some level, all inventions . .. embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas. "' In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (alterations in original) (quoting Alice, 134 S.
Ct. at 2354).
a. Halverson Patents
Defendants argue that the Halverson patents are directed to the abstract idea of
"retrieving electronic data in response to a spoken request and transmitting the retrieved data to a
user." (D.I. 36 at 6). Plaintiff counters that the asserted patents "claim specific technologic
processes to improve computer-user interfaces and solve problems of prior systems to improve
the functioning of systems and methods for navigating electronic databases based on spoken
inputs." 5 (D.I. 37 at 13). For the reasons stated in my previous opinion and those stated below, I
conclude that the Halverson patents are directed to the abstract idea of retrieving data in response
to a spoken request and transmitting the retrieved data to a user.
First, Plaintiff has not cited to any case altering the previous analysis of the Halverson
patents. Plaintiff argues that recent Federal Circuit cases recognizing "that specific technologic
modifications to solve a problem or improve the functioning of a known system generally
5 Defendants argue that Plaintiff is collaterally estopped from arguing that the Halverson patents are not directed to
an abstract idea. (D.I. 36 at 11-12). They are incorrect. Plaintiff is not estopped from asserting that the Halverson
patents are patent eligible. My previous order was not a final judgment on the merits, as it was without prejudice
and with leave to amend. Moreover, Plaintiffs previous voluntary dismissal in another case does not transform the
Court's previous order into a final judgment. See, e.g., Camesi v. Un iv. of Pittsburgh Med. Ctr, 729 F.3d 239, 24445 (3d Cir. 2013).
11
produce patent-eligible subject matter" require a holding that the Halverson patents are not
directed to an abstract idea. (D.I. 37 at 13-14 (quoting Trading Techs. Int '!, Inc. v. CQG, Inc.,
675 F. App 'x 1001 , 1004-05 (Fed. Cir. 2017)). In Plaintiffs view, the Halverson patents
"require specific steps that taken as a whole are directed to improved computer-user interfaces
and solve technological problems with technology solutions." (D.I. 37 at 14). Plaintiff points to
several cases that it argues support a determination that the Halverson patents are not directed to
an abstract idea. See DDR Holdings, LLC v. Hotels. com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (claims were "necessarily rooted in computer technology" and " [overcame] a problem
specifically arising in the realm of computer networks"); Thales Visionix Inc. v. United States,
850 F.3d 1343, 1348-49 (Fed. Cir. 2017) (claims specified a particular configuration of the
sensors and a particular method of utilizing the raw data that eliminated complications inherent
in conventional methods); Visual Mem. LLC v. N VIDIA Corp., 867 F.3d 1253 , 1259 (Fed. Cir.
2017) (claims did not claim merely the abstract idea of data storage, but rather an invention that
provided flexibility prior art processors did not possess, "obviat[ing] the need to design a
separate memory system for each type of processor."); Core Wireless Licensing S.A .R.L. v. LG
Elecs., Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018) ("claims are directed to a particular manner of
summarizing and presenting information in electronic devices").
However, the claims at issue are distinguishable from those in the cases cited by Plaintiff.
Unlike DDR Holdings, where the patent claims specified how interactions with the internet are
manipulated to yield a desired result, 773 F.3d at 1258, or Thales, where the claims were
"directed to systems and methods that use inertial sensors in a non-conventional manner to
reduce errors," 850 F.3d at 1349-50, the Halverson patents merely recite conventional steps
required to navigate an electronic database and recite conventional technology to implement
12
these steps. Moreover, unlike Core Wireless, where the patent claims were "directed to a
particular manner of summarizing and presenting information in electronic devices," 880 F.3d at
1362, and Data Engine Techs. LLC v. Google LLC, where the claims "recite[d] a 'specific' and
'particular' manner of navigating a three-dimensional spreadsheet," 906 F.3d 999, 1009 (Fed.
Cir. 2018), "the asserted claims are ... drafted so broadly as to cover any method that can
achieve navigating electronic databases by spoken natural input." IPA Techs. Inc. v.
Amazon.com, Inc. , 307 F. Supp. 3d 356, 364 (D. Del. 2018) (emphasis added). The claims of the
Halverson patents therefore do not recite a particular manner of achieving the functional goal.
Additionally, unlike Visual Memory LLC v. NVIDIA Corp. , 867 F.3d 1253, 1259 (Fed.
Cir. 2017), where the patent claims contained specific limitations to avoid claiming "all types
and all forms of categorical data storage," the claims of the Halverson patents do not recite any
specific limitation that renders the claims patentable. See IPA Techs., 307 F. Supp. 3d at 364-66
(discussing various claim limitations and finding no claim limitation sufficient "to tie the claims
to a specific improvement in technology or a technological solution to an identified problem").
Therefore, none of these cases alter my previous conclusion that the claims of the
Halverson patents "employ broad functional terms to claim systems and methods of delivering
content to users, ' without providing any limiting detail that confines the claim[s] to a particular
solution to an identified problem."' Id. at 366 (quoting Affinity Labs oJTex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1269 (Fed. Cir. 2016)). Nor do these cases invalidate the conclusion that
"[r]ather than claiming a technological solution to the problem, however, the asserted claims are
directed to the objective of the invention itself." IPA Techs., 307 F. Supp. 3d at 364. As I
previously stated, the goal of the invention is identified in the specification: "Allowing spoken
natural language requests as the input modality for rapidly searching and accessing desired
13
content." See id. (quoting ' 021 patent at 1:37-41). The claims are "drafted so broadly as to
cover any method that can achieve navigating electronic databases by spoken natural language
input- they recite, at a very high level of generality, the basic steps that would be required." Id.
Second, Plaintiffs new factual pleadings in its amended complaint cannot contradict the
specification and language of the claims themselves. Plaintiff now asserts that "the '021 Patent
addresses improvements to handling errors and ambiguities that arise from a spoken request for
electronically stored database information" by reciting a method that "upon the emergence of
error or ambiguities in the interpretation of the spoken natural language input, the system solicits
additional input from the user: (1) in a non-spoken modality, (2) that is different from the
original request, (3) without requiring the user to request the non-spoken modality." (D.I. 37 at
15). However, this does nothing more than recite language in claim 1 of the ' 021 patent that I
have already considered and determined is directed to the abstract idea. 6 IPA Techs., 307 F.
Supp. 3d at 364 n.2). Plaintiff has not pled any facts that would alter my previous opinion:
the claims here are 'aspirational in nature and devoid of any implementation
details or technical description that would permit [me] to conclude that the claim
as a whole is directed to something other than the abstract idea' of retrieving
electronic data in response to a spoken request, and transmitting the retrieved data
to a user.
Id. at 369 (quoting Move, Inc. v. Real Estate Alliance Ltd. , 721 F. App'x 950, 954 (Fed. Cir.
2018).
b. Cheyer Patents
Defendants (other than Google) argue that the Cheyer patents are directed to an abstract
idea. The Amazon defendants allege that the Cheyer patents are directed to the abstract idea of
6
Plaintiff also alleges that the '061 patent "teaches a particular type of electronic architecture that improves the
functioning of the computer itself' and the ' 718 patent " utilize[s] distinct elements ... that are not part of the ' 021
or '061 patents." (D.I. 37 at 15 n.4). However, these arguments were previously presented and rejected.
14
"breaking tasks down and delegating them to appropriate actors." (D.I. 36 at 17). Defendant
Microsoft asserts that the abstract idea is "retrieving electronic data in response to a request."
(C.A. 18-01, D.I. 18 at 7). Plaintiff counters that the Cheyer patents "are directed to specific
technologic processes to overcome the shortcomings of prior art systems with improvements to
software architecture in distributed computing environments that advance computer-user
interfaces over the then-existing state of the art and improve the computer's ability to complete
tasks for users." (D.I. 37 at 18). For the reasons stated below, I conclude that the Cheyer patents
are not directed to an abstract idea.
Improvements to efficiency and scalability in task completion in distributed computing
environments "can be a non-abstract computer-functionality improvement if done by a specific
technique that departs from earlier approaches to solve a specific computer problem." Ancora
Techs., Inc. v. HTC America, Inc., 908 F.3d 1343, 1348 (Fed. Cir. 2018) (citing Finjan, 879 F.3d
at 1304-05). The Cheyer patents describe a specific software architecture that employs
facilitators for delegation and coordination, construction of arbitrarily complex goals, an
expandable inter-agent communication language, service-providing agents and a distributed
process where no single agent defines the set of possible inputs. ('115 patent col. 5:3-9, col.
8:40-55). Moreover, the Cheyer patents "expressly disclose and claim inventive improvements
over then-existing OAA technology." (D.I. 37 at 21). For example, the specification of the ' 115
patent states, "The agent library preferably minimizes the effort required to construct a new
system and maximizes the ease with which legacy systems can be 'wrapped' and made
compatible with the agent-based architecture of the present invention." ('115 patent col. 7:4852). The agent library also enables the incorporation of new agents "without any need to revise
code for the facilitator, the natural language agents, or any other client agents." (Id. col. 8:45-
15
49). " [A] single request can produce cooperation and flexible communication among many
agents, written in different programming languages and spread across multiple machines." (Id.
col. 8:52-55). These are problems the Cheyer patents identify with prior art technologies in
distributed computing. (See id. col. 3 :24-27 ("restriction of the [distributed object-oriented
programming] approach is that the interactions among objects are fixed through explicitly coded
instructions"); col. 3 :53-58 (disadvantages of mobile agent are programmatic specificity of agent
interactions, lack of coordination support, and execution environment irregularities); col 4: 13-16
(blackboard architecture does not allow programmatic control to refer to a specific process
during computation); col. 4:37-55 (previous agent based technologies and architectures are
limited in the extent to which agents can specify complex goals, influence strategies used by the
facilitator, integrate human agents, deal with compound goals, and in system scalability)).
Moreover, the Cheyer patents lay out specific structures by which these improvements in
functionality are achieved. Claim 61 of the ' 115 patent discloses a "facilitator agent" which
coordinates cooperative task completion by (1) using an agent registry, (2) parsing a service
requesting order, (3) interpreting a compound goal according to an Interagent Communication
language, and (4) constructing a goal satisfaction plan. Claim 52 of the ' 560 patent describes the
method by which tasks are delegated and Claim 1 of the ' 128 patent describe the construction of
the distributed computing layout as a whole. The specific structures and methods laid out in
these claims provide concrete improvements in the underlying computer technology over the
prior art. Interactions between objects are not fixed through explicitly coded instructions;
coordination support is provided by the facilitating agent; a user may refer to a specific process
when making its request; the system does not need to be rewritten when new agents are added;
agents can influence strategies used by the facilitator; and the system provides more flexibility in
16
dealing with compound goals. Therefore, these claims are directed to improvements of the
underlying computer functionality in a distributed computing environment, not to the abstract
idea of "retrieving electronic data in response to a request" or "breaking tasks down and
delegating information to appropriate actors." 7
Defendants argue that the Cheyer specifications do not explain or state how a facilitator
engine performs certain tasks. However, as Plaintiff correctly states, "whether a patent
specification teaches an ordinarily skilled artisan how to implement the claimed invention
presents an enablement issue, not an eligibility issue ... " Visual Mem. , 867 F.3d at 1260-61.
Moreover, the patent claims specifically state that the facilitating engine "construct[s] a goal
satisfaction plan by using reasoning that includes one or more of domain-independent
coordination strategies, domain-specific reasoning, and application-specific reasoning." (' 115
Patent col. 35:23-27). While Defendants argue this language is a black-box, the language does
incorporate the improvements on prior art. Specifically, the facilitating engine's claimed use of
these different strategies enables (1) the facilitating agent to provide coordination support (by
using a domain-independent coordination strategy), (2) a user to refer to a specific process when
making its request (by using domain-specific reasoning), and (3) the agents to influence the
strategies used by the facilitator agent (by using application-specific reasoning). Thus, the
Cheyer patents claim specific improvements over the prior art.
The Cheyer patents, therefore, are not directed to an abstract idea and the Court need not
address Alice Step Two for the Cheyer patents.
7
While these ideas are certainly components of the claimed invention, the claims are not directed to these ideas.
Rather, the invention improves computer functionality by creating a specific architecture which allows faster
coordination of tasks and retrieval of information.
17
2. Inventive Concept
The determination that a patent is directed to an abstract idea "does not render the subject
matter ineligible." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015). Having decided that the Halverson patents' claims are directed to an abstract idea,
the Court must next "determine whether the claims do significantly more than simply describe
the abstract method." Ultramercial, 772 F .3d at 715. Since "a known idea, or one that is routine
and conventional, is not inventive in patent terms," this analysis "favors inquiries analogous to
those undertaken for determination of patentable invention." Internet Patents, 790 F.3d at 1346.
Indeed, the Federal Circuit has noted that the two stages of the Alice two-step inquiry "are
plainly related" and "involve overlapping scrutiny of the content of the claims .... " Elec.
Power Grp., 830 F.3d at 1353. Furthermore, neither " [a] simple instruction to apply an abstract
idea on a computer," nor "claiming the improved speed or efficiency inherent with applying the
abstract idea on a computer" satisfies the requirement of an "inventive concept." Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015).
Defendants argue that the Halverson patents lacks an inventive concept. (C.A. 18-318,
D.I. 11 at 16-22). Plaintiff submits that the claims contain an inventive concept because " [t]he
Halverson specification discloses and the [amended complaint] pleads that the claimed
inventions improve the functioning of the computer itself and improves upon then-existing
technology." (D.I. 37).
I agree with Defendants. As I stated in my previous opinion, "the specification's
statement that the claims are directed to solving a technological problem cannot overcome the
specification's recitation of conventional technology to implement the invention, combined with
broad, functional claim language that merely describes an abstract idea." IPA Techs., 307 F.
18
Supp. 3d at 370. Neither can the additional facts pled by Plaintiff in its amended complaint.
"Whether something is well-understood, routine, and conventional to a skilled artisan at the time
of the patent is a factual determination." Berkheimer, 881 F.3d at 1369. "In a situation where
the specification admits the additional claim elements are well-understood, routine, and
conventional, it will be difficult, if not impossible, for a patentee to show a genuine dispute"
sufficient to deny a motion to dismiss. Berkheimer, 890 F.3d at 1371 .
The majority of Plaintiffs new factual allegations do not alter the Alice Step Two
analysis. Many of the new allegations are boilerplate, stating, "The claimed inventions are
directed to new computer functionality and improvements to technological processes that address
problems rooted in and arising from computer technology." 8 (D.I. 33
,r,r 96, 131, 152).
I am not
required to treat boilerplate allegations that the claims are directed to new computer functionality
and improvements to technological processes as true where those allegations contradict the
language of the claims and specification. See, e.g. , Berkheimer, 881 F.3d at 1369-70
(improvements must be "captured in the claims"); Schuykill Energy Res. , Inc. v. Pa. Power &
Light Co., 113 F.3d 405, 417 (3d Cir. 1997) ("unsupported conclusions and unwarranted
inferences" need not be accepted as true). Moreover, these boilerplate allegations do not change
the fact that the "specification is replete with references to implementing the claims using
conventional technology." IPA Techs., 307 F. Supp. 3d at 370.
Many of the new allegations simply quote, cite or otherwise incorporate language from
the claims and specification. (D.I.3o,r,r97-106, 111-12, 130, 132-34, 136, 153). These
8
Paragraphs 114 and 137 of the amended complaint are also boilerplate. Paragraph 114 is representative and states,
"The above-disclosed and claimed speech-based navigation method additionally constitutes an unconventional
technical solution (for example, multi-modal feedback to solicit additional user input, to refine and use an electronic
data source query without requiring a user to request a non-spoken modality) to address a technical problem of
electronic data source navigational methods to interpret, construct, query, and refine spoken requests." Paragraph
137 provides a different example in the parenthetical.
19
allegations add no new factual information for the Court to consider in determining whether the
claims contain an inventive concept. Additionally, a significant percentage of Plaintiffs new
factual allegations simply recite the prosecution history of the Halverson patents. (D.I. 33
,r,r
115-25, 138-47, 155-65). These paragraphs of the Complaint allege facts such as the number of
prior art references the Halverson patents were issued over, the number of times the Halverson
patents have been cited as prior art since being issued, and the examiners' recitations of why they
found the Halverson patents to be novel. However, these types of facts are not properly
considered in determining a motion to dismiss for patent ineligibility under§ 101. Every patent
that is issued is generally (and often specifically) issued over prior art references and is found to
be novel. Moreover, as Defendants correctly point out, citations are no measure of whether the
patent is directed to an abstract idea or an inventive concept. (D.I. 36 at 113 n.3 ("one of the
patents invalidated in Alice has been cited 325 times")).
The remaining factual allegations also do not change the results of the inventive concept
determination. Paragraphs 107-10 of the amended complaint expand upon the specification
language related to the construction of a navigation query after receipt of the spoken request and
the use of a multi-modal feedback approach and the benefits of these claims. Paragraphs 107
and 108 together assert that the construction of a navigation query results in "improvements to
computer functionality and technological processes including increased efficiency and speedand they achieve these technological benefits by fundamentally changing the manner in which a
user interfaces and interacts with computer technology itself." (D.I. 33
,r 108).
However, no
portion of the claims or specification cited shows how the construction of a navigation query
results in increased efficiency or speed in computer functionality. ('021 patent col. 8:40-10:38).
As I previously held, neither the claims nor the specification teach how to construct a navigation
20
query. IPA Techs., 307 F. Supp. 3d at 371. In fact, the specification clearly states that persons of
ordinary skill in the art will be thoroughly familiar with how to do so. ('021 patent col 9:9-14).
Therefore, the construction of the navigation query alone cannot support the allegations of
increased efficiency or speed giving rise to an inventive concept. The language of these
paragraphs seems to suggest that it is the use of spoken language and the interpretation of the
spoken request to construct the navigation query that creates the increased convenience,
efficiency, and speed. However, nowhere does the specification or claims explain how the
invention renders an interpretation of the spoken request to increase convenience, efficiency, and
speed of the computer functionality. Instead, the specification states that speech recognition (i.e. ,
rendering an interpretation of the spoken request) can be achieved by " [a] variety of commercial
quality speech recognition engines, [which] are readily available on the market, as practitioners
will know." ('021 patent at 7:19-31). The allegations of improvements to computer
functionality in paragraphs 107-08 are therefore contradicted by the claims and the specification
and cannot be credited.
Plaintiff also includes new allegations that the multimodal feedback approach included in
the claims improves computer functionality by creating faster searches. (D.I. 33
,r,r
109-10).
However, as I previously held,
At the level the claims are drafted, the multi-modal feedback essentially requires
gathering additional data in a non-spoken modality and using the data to modify
the initial navigation query, without further limitation as to how this is
accomplished in the context of generating a navigation query from a spoken
request. Refining search terms in a database query does not qualify as inventive,
even if for the purpose of error correction.
IPA Techs. , 307 F. Supp. 3d at 371. A mere increase in the speed of a process cannot be an
inventive concept where the technology is conventional, and the ordered combination of steps
21
using that conventional technology is not shown to be inventive. Intellectual Ventures I LLC, 792
F.3d at 1367; IPA Techs., 307 F. Supp. 3d at 372.
Similarly, paragraphs 113, 135, and 154 of the amended complaint assert that the claimed
"speech-based navigation method" in the Halverson patents "provide[s] significant benefits and
improvements to the capacity and underlying computer functionality over their prior art
navigation methods-namely, increased speed, convenience, and efficiency in creating a proper
query to search an electronic data source and providing information requested by a user, as well
as a greater degree of freedom for users to use and the navigation system to accept and process
an expanded set of intuitive inputs." (D.I. 33 1 113, 135, 154). However, these allegations
cannot overcome the specifications' continued references to using conventional technology to
implement the claims, nor do the claim elements as an ordered combination impart an inventive
concept. The steps of the claimed method are the basic steps used to navigate an electronic
method. The ordered combination of the "speech-based navigation method" claimed is the only
logical sequence of steps that could be followed to achieve the result. As I found previously,
"any changes to their ordering would render the claims useless for accomplishing their goal."
IPA Techs. , 307 F. Supp. 3d at 372. Thus, there is nothing unconventional or inventive about the
ordered combination of steps. Moreover, because the ordered combination of the claim elements
is not inventive, the alleged improvements of convenience, efficiency, and speed attributed to the
method cannot confer an inventive concept upon the combination either.
Finally, paragraphs 126, 148, and 166 of the amended complaint allege facts surrounding
the priority dates of the Halverson patents. Specifically, these paragraphs allege, "The
technology disclosed and claimed ... was not then well-understood, routine, or conventional,"
because the first device marketed as a smartphone was not announced until 2000, the first mobile
22
camera phone came to the United States in 2002, and the first mobile phone with any text to
speech capability was not released until late 2004. (D.I. 33
,r,r 126, 148, 166).
However, as
previously discussed, the Halverson "specification is replete with references to implementing the
claims using conventional technology. " IPA Techs., 307 F. Supp. 3d at 370. These references
directly contradict Plaintiffs allegations in the amended complaint. Moreover, the method
claimed in the Halverson patents does not confer an inventive concept, even combined with the
factual allegations in the amended complaint. A method reciting the high-level, basic steps of
electronic database navigation in the only logical sequence to achieve the function and using
well-understood, routine, and conventional technology to do so cannot be unconventional or
inventive. Therefore, these paragraphs cannot infer an inventive concept when the Halverson
patents themselves make clear that the technology is not inventive.
Because the claims of the Halverson patents are directed to the abstract idea of "retrieving
electronic data in response to a spoken request and transmitting the retrieved data to a user" and
do not contain an inventive concept, the Court finds that the claims are patent ineligible under
§ 101.
IV.
CONCLUSION
For the reasons set forth above, Defendants' motion to dismiss (D.I. 35) is GRANTED as
to the ' 021 , '061 , and ' 718 patents and DENIED as to the ' 115, ' 560, and '128 patents.
An appropriate order will be entered.
23
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