Ironworks Patents, LLC v. Apple, Inc.

Filing 17

MEMORANDUM OPINION regarding Motion to Dismiss (D.I. 10 ). Signed by Judge Richard G. Andrews on 6/12/2018. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

IRONWORKS PATENTS, LLC,
Plaintiff,
Civil Action No. 17-1399-RGA

V.

APPLE INC.,
Defendant.

MEMORANDUM OPINION

Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE; David Berten, Alison
Aubry Richards, Hannah Sadler, GLOBAL IP LAW GROUP, LLC, Chicago IL.
Attorneys for Plaintiff.
David E. Moore, Bindu A. Palapura, Stephanie E. O ' Byme, POTTER ANDERSON &
CORROON, Wilmington, DE; Xin-Yi Zhou, O ' MELVENY & MYERS LLP, Los Angeles, CA;
Luann L. Simmons, O' MEL VENY & MYERS LLP, San Francisco, CA.
Attorneys for Defendant.

June \ / ', 2018

~

ANDREWS, U.S. DIST

-~

CT JUDGE:

Presently before the Court is Defendant' s Motion to Dismiss for Failure to State a Claim
(D.I. 10) and related briefing (D.I. 11 , 14, 15). For the reasons that follow, the Court will deny
Defendant' s Motion to Dismiss for Failure to State a Claim.

I.

BACKGROUND
Plaintiff filed a patent infringement action on October 6, 2017 against Defendant,

alleging infringement of U.S. Patent Nos. 6,850,150 ('"the ' 150 patent"), 8,847,734 ("the ' 734
patent"), and RE39,231. (D.I. 1).
Plaintiff alleges infringement of claim 1 of the ' 150 patent and claim 1 of the ' 734 patent.
(D.I. 1 at ,r,r 55-77). The claims read as follows:
1. A portable device, comprising:
control means for monitoring and controlling the operation of the device; and
a user interface which comprises alarm means for performing a silent alarm producing a
silent, invisible, tactile sensation in the user;
wherein the control means are arranged to give the user abstract information on multiple
internal operational events of the device by using various alarm patterns of silent,
invisible sensations produced by the alarm means and sensed by the user, the alarm
patterns differing from one another such that at least one alarm pattern characteristic
sensed by the user varies, said abstract information comprising a notification of a selected
item on a menu of the user interface.
(' 150 patent, claim 1).
1. A mobile station comprising:
a user interface configured to enable a user to control operation of the mobile station by
manual input and to obtain information on the operation of the mobile station,
a tactile alert device configured to generate a tactile vibration, and
a control circuit configured to control the tactile alert device to generate a first tactile
vibration with a first pattern in response to a first event and a second tactile vibration with

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a second pattern that is distinctly humanly perceptibly different from the first pattern in
response to a second event different from the first event,
wherein one of the events is user entry of an incorrect personal identification number
code.
(' 734 patent, claim 1).
Defendant argues that the ' 150 and ' 734 patents "claim subject matter ineligible for
patent protection." (D.I. 11 at 1).
II.

LEGALSTANDARD
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
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 Atl. Corp. v. Twombly ,
550 U.S. 544, 558 (2007).
B. Patent-Eligible Subject Matter

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 'l, 134 S. Ct. 2347, 2354 (2014). The purpose of these carve outs is to protect the "basic

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tools of scientific and technological work." May o 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.
(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
Patent eligibility under § 101 is a question oflaw 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 & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1346
(Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015). The Federal Circuit follows regional circuit
law for motions to dismiss. Content Extraction, 776 F.3d at 1346.

III.

DISCUSSION
Plaintiff alleges infringement of claim 1 of the ' 150 patent and claim 1 of the '734 patent.

(D.I. 1 at ,r,r 55-77).

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"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 [a]n 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." En.fish, 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 2356, and mathematical algorithms, Benson, 409 U.S. at 64, are
abstract ideas. In navigating the parameters of such categories, courts have generally sought to
"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. "But in 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 TLI Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016) (alterations in original) (quoting Alice, 134 S. Ct. at 2354).
Defendant argues that the asserted claims "fail the first step of the Alice test because they
apply an abstract idea-using a vocabulary to ~onvey information-to the user interface of a
portable electronic device." (D.I. 11 at 7). More specifically, Defendant argues,
The two asserted claims apply the abstract idea . .. in two contexts: (1) conveying
"abstract information on multiple internal operational events" of a device, such as
"a notification of a selected item on a menu of the user interface," via different
"alarm patterns of silent, invisible sensations" (Claim 1 of the' 150 Patent); and (2)
conveying information regarding multiple "event[s] ," such as the "entry of an
incorrect personal identification number code," via "tactile vibration[ s]" with
different "pattern[s]" (Claim 1 of the ' 734 patent).

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(D.I. 11 at 7). Defendant notes that the shared specification compares the alleged invention to
the Braille system and explains that the claimed invention is "a kind oflimited application of
Braille system by means of vibration." (Id. (citing ' 150 patent, 2:31-33)).
Defendant argues that the "idea of using a vocabulary to convey information is abstract,"
and cites several Federal Circuit cases to that effect. (D.I. 11 at 8).
However, Plaintiff notes that " [c]laims to tangible systems are typically patent eligible.
(D.I. '14 at 9 (citing Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 , 11 25
(Fed. Cir. 2018) (finding error in a district court decision where the patentee made "factual
allegations" that, if accepted as true, "establish that the claimed combination contains inventive
components and improves the workings of the computer"); Immersion Corp. v. Fitbit, Inc., 201 8
WL 1156979, at *14 (N.D. Cal. Mar. 5, 2018) ("other district courts ... have rejected § 101
challenges where the claims are directed to a physical device that merely incorporates an abstract
idea as part of its operation")).
In Immersion Corp., a court in the Northern District of California rejected a patent

eligibility challenge, stating the following:
Under Diehr and Thales Visionix, it is clear that simply incorporating an abstract
idea in part of a claim that is otherwise directed to patentable subject matter does
not necessarily render the entire claim ineligible. Applying that principle to claim
19 of the '105 Patent, the Court finds that claim 19 is directed to a device that
provides haptic feedback to communicate that one of several predetermined userindependent events has occurred. While Fitbit is correct that notification is a
prominent idea of claim 19 and that notification is an abstract idea, see,
e.g. , FairWarning [IP LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) ], characterizing claim 19 as directed only to the abstract idea of notification,
or even as directed only to the abstract idea of notification through vibration, strays
too far from the weight of the claim. The weight of the claim clearly focuses on a
tangible, non-abstract device as the invention which, through the allegedly
unconventional combination of components, contains the new and useful feature of
notifying the device ' s user of independent events through vibration.

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2018 WL 115679, at * 13. Here, limitations in the asserted claims similarly prevent preemption
of all inventions that use vibrations, or "a vocabulary to convey information." The claims are
directed to tangible systems-a "portable device" and a "mobile station," respectively-and
include "specific components that are configured to perform specific functions in response to
specific events." (D.I. 14 at 11 ). For example, the asserted claims of the ' 734 and ' 150 patents
respectively require components to perform specific functions in response to "user entry of an
incorrect personal identification number code" and "a selected item on a menu of the user
interface."
Thus, these claims are akin to the claims in Visual Memory LLC v. N VIDIA Corp. , 867
F.3d 1253, 1259 (Fed. Cir. 2017), where the Federal Circuit reversed the district court' s
conclusion that the claims were directed to the "abstract idea of categorical data storage," stating
that the claims "demonstrate[ d] that they are directed to an improved computer memory system,
not the abstract idea of categorical data storage." Likewise, the asserted claims here are directed
to an improved "portable device" and "mobile station," respectively. The claims might
incorporate the abstract idea of "using a vocabulary to convey information," but that does not
mean that each claim in its entirety is directed to the abstract idea of "using a vocabulary to
convey information," or to any other abstract idea.
Defendant characterizes the claims as pertaining to the abstract idea alone. (D.I. 11 at 7).
Because of the claims ' additional limitations, detailed above, Defendant' s characterization
"strays too far from the weight of the claim[s]." See Immerson Corp. , 2018 WL 115679, at *13 .
Defendant argues that "courts routinely invalidate patents claiming tangible systems."
(D.I. 15 at 5). As support, Defendant cites Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838
F.3d 1266, 1272 (Fed. Cir. 2016) (invalidating claims reciting "a handheld wireless device");

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Cloud Satchel, LLC v. Amazon.com, Inc., 76 F. Supp. 3d 553 , 563 (D. Del. 2014) (invalidating
claims reciting a "portable ... device"); and Intellectual Ventures I LLC v. T-Mobile USA, Inc.,
2017 WL 3706495 , at *9, *12 (invalidating claims reciting a "mobile station"). (D.I. 15 at 5-6).
However, these cases are not analogous to the case at hand. In Affinity Labs of Texas , the claim
covered " [a] media system, comprising" several elements, including "a collection of instructions
.. . configured for execution by a processor of a handless wireless device." 838 F.3d at 1267-68.
The Federal Circuit affirmed that the claim was directed to the abstract idea of "delivering userselected media content to portable devices." Id. at 1269. In Cloud Satchel, the claim covered
"[a] distributed system for accessing and distributing electronic documents using electronic
document references, the distributed system comprising" several elements, including "a portable
electronic document reference transport device." 76 F. Supp. 2d at 561-62. The court found that
the claim was directed to the abstract idea of "storage and retrieval of electronic documents." Id.
at 563 . In Intellectual Ventures I, the claim covered "[a] method of transmitting a multimedia
message, comprising" several steps, including "receiving a multimedia message from a first
mobile station." 2017 WL 3706495 , at *9. The court found that the claim was directed to the
abstract idea of "converting a multimedia message into a common format-an email messagefor sending to another party and then converting the received common format back into [a]
multimedia message." Id. at *9-10. None of these claims are directed to an improved tangible
system. Rather, the claims merely recite unimproved tangible systems within them. Here, on the
other hand, the claims are directed to an improved "portable device" and "mobile station,"
respectively, and recite limitations for those improved tangible systems. Accordingly, each case
cited by Defendant is distinguishable from the case at hand. 1

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Defendant also argues that the asserted claims use "functional language," such as "alarm means" and
"control means," making them abstract. (D.I. 15 at 6). However, functional claiming is generally permissible.

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I find that the asserted claims are not directed to an abstract idea.
IV. CONCLUSION

Defendant's Motion to Dismiss for Failure to State a Claim is denied. (D.I. 10)
A separate order will be entered.

Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1255-56 (Fed. Cir. 2008). Defendant does not articulate
why functional claiming renders these particular claims abstract.
Defendant also argues that the specification describes the "idea underlying the claimed invention" as
abstract information being conveyed to a user "by utilizing specific silent alarm patterns the user is able to feel. "
(D.I. 15 at 7 (citing ' 150 patent at 2:32-34)). ). It is entirely appropriate for a court to look to the specification to
understand the claim architecture. SRI Int '/, Inc. v. Cisco Sys., 179 F. Supp. 3d 339, 354 (D. Del. 2016) ("The
claims as an ordered combination (in light of the specification) sufficiently delineate 'how' the method is performed
to 'improve the functioning of the computer itself,' thereby providing an inventive concept."). Defendant argues
that the specification's description "refute[s] [Plaintiff's] claim that [Defendant] oversimplified the abstract idea
underlying the claimed invention." (D.l. 15 at 7). However, the specification ' s description does not change the
claim architecture. As discussed above, limitations within the claims themselves render the asserted claims nonabstract.
Accordingly, Defendant's arguments fall short.

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