Align Technology, Inc. v. 3Shape A/S et al

Filing 200

MEMORANDUM ORDER denying Align Technology, Inc.'s motions to strike (C.A. No. 17-1646 D.I. 105; C.A. No. 17-1647, D.I. 91) and granting 3Shape A/S et al.'s motions to dismiss (C.A. No. 17-1646 D.I. 102; C.A. No. 17-1647 D.I. 88). 3Shape A/S et al.'s motion to dismiss (C.A. No. 18-1949 D.I. 11) remains pending, although the Court announced it will deny the motion at least with respect to Count I (relating to the '420 Patent). Signed by Judge Leonard P. Stark on 07/05/2019. Associated Cases: 1:17-cv-01646-LPS, 1:17-cv-01647-LPS, 1:18-cv-01949-LPS(etg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
3G LICENSING, S.A., KONINKLIJKE
KPN N.V., and ORANGE S.A.,

)
)
)
Plaintiffs,
)
)
v.
)
)
HTC CORPORATION and
)
HTC AMERICA INC.,
)
)
Defendants.
)
__________________________________________)
3G LICENSING, S.A., KONINKLIJKE
)
KPN N.V., and ORANGE S.A.,
)
)
Plaintiffs,
)
)
v.
)
)
LENOVO GROUP LTD., LENOVO HOLDING )
CO., INC., LENOVO (UNITED STATES)
)
INC., and MOTOROLA MOBILITY, LLC,
)
)
Defendants.
)
__________________________________________)
3G LICENSING, S.A., KONINKLIJKE
)
KPN N.V., and ORANGE S.A.,
)
)
Plaintiffs,
)
)
v.
)
)
LG ELECTRONICS INC., LG
)
ELECTRONICS U.S.A, INC. and LG
)
ELECTRONICS MOBILECOMM U.S.A., INC., )
)
Defendants.
)
__________________________________________)

C.A. No. 17-83-LPS

C.A. No. 17-84-LPS

C.A. No. 17-85-LPS

ALIGN TECHNOLOGY, INC.,

)
)
Plaintiff,
)
)
v.
)
)
3SHAPE A/S and 3SHAPE INC.,
)
)
Defendants.
)
__________________________________________)
ALIGN TECHNOLOGY, INC.,
)
)
Plaintiff,
)
)
v.
)
)
3SHAPE A/S and 3SHAPE INC.,
)
)
Defendants.
)
__________________________________________)
ALIGN TECHNOLOGY, INC.,
)
)
Plaintiff,
)
)
v.
)
)
3SHAPE A/S, 3SHAPE TRIOS A/S, and
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3SHAPE INC.,
)
)
Defendants.
)
__________________________________________)
DIGI PORTAL, LLC,
)
)
Plaintiff,
)
)
v.
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)
QUOTIENT TECHNOLOGY INC.,
)
)
Defendant.
)
__________________________________________)

2

C.A. No. 17-1646-LPS

C.A. No. 17-1647-LPS

C.A. No. 18-1949-LPS-CJB

C.A. No. 18-1485-LPS-CJB

LOCATION BASED SERVICES, LLC,

)
)
Plaintiff,
)
)
v.
)
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GOOGLE LLC,
)
)
Defendants.
)
__________________________________________)

C.A. No. 18-1587-LPS-CJB

MEMORANDUM ORDER
At Wilmington this 5th day of July, 2019:
The Court having heard oral argument in all of the above-listed cases on June 18,
2019, 1 IT IS HEREBY ORDERED that:
1.

Quotient Technology, Inc.’s motion to dismiss (C.A. No. 18-1485 D.I. 11) is

DENIED.
2.

Align Technology, Inc.’s motions to strike (C.A. No. 17-1646 D.I. 105;

C.A. No. 17-1647, D.I. 91) are DENIED.
3.

3Shape A/S et al.’s motions to dismiss (C.A. No. 17-1646 D.I. 102;

C.A. No. 17-1647 D.I. 88) are GRANTED.
4.

3Shape A/S et al.’s motion to dismiss (C.A. No. 18-1949 D.I. 11) remains

pending, although the Court announced it will deny the motion at least with respect to Count I
(relating to the ’420 Patent).
5.

Defendants HTC Corp., Lenovo Group Ltd., and LG Electronics Inc.’s motions

for judgment on the pleadings (C.A. 17-83 D.I. 270; C.A. 17-84 D.I. 247; C.A. 17-85 D.I. 243)
are DENIED.

1

Judge Stark and Magistrate Judge Burke jointly presided throughout the argument.
1

6.

Google, LLC’s motion to dismiss (C.A. No. 18-1587 D.I. 7) is DENIED

IN PART (with respect to the ’073, ’027, ’729 and ’691 Patents) and GRANTED IN PART
(with respect to the ’708 Patent).
7.

Location Based Services LLC’s motion to amend its complaint (C.A. No. 18-1587

D.I. 38) is DENIED.
All of the foregoing motions were argued at the June 18 hearing and the rulings
provided above were all announced from the bench at the conclusion of the hearing, as follows:
. . . As you will imagine, because there were so many
motions [argued], I do have quite a bit to say, so here we go with
that.
First, in terms of the legal standards, I don’t think anything
was in dispute, but for purposes of the record I am adopting
incorporating by reference my September 2018 decision in the
Align cases, the 17-1646 and 17-1647.[ 2] So what I think of the
Rule 12(b)(6) standard and Section 101 law is set out there; and
I’m not going to read it into the record but I do hereby adopt it by
reference. Let me discuss the cases that were argued today in the
order they were argued.
First was the Digi Portal case.[ 3] That was the first case
argued this morning. In the Digi Portal case, the defendant
Quotient Technology moved to dismiss the complaint under
Rule 12(b)(6) on the basis of Section 101.
Applying the law as I understand it, and having carefully
reviewed the entire record and heard oral argument -- and I should
just sa[y] I have carefully reviewed the entire record in all these
cases and, of course, heard oral argument in all these cases so I
may not repeat that, but we did go through that very same process
for all the cases -- but having done so in the Digi Portal case, I find
that the defendant has not shown that the ’854 patent[ 4] claims
ineligible subject matter so I am denying defendant’s motion in the
Digi Portal case.

2

See C.A. No. 17-1646 D.I. 64 at 3-9.

3

C.A. No. 18-1485-LPS-CJB.

4

U.S. Patent No. 8,352,854.
2

Quotient argues that claim 1 is representative. Because, as
I will explain, I find that Quotient has failed to meet its burden to
show that claim 1 is not patent eligible and because Quotient’s
position is that claim 1 is representative of all asserted claims, I
need only analyze claim 1. There is no basis to find any other
claim directed to non-patentable subject matter given my findings
with respect to claim 1’s patentability.
At Step 1 of Alice,[ 5] I find that defendant oversimplified
the abstract idea. The claim is directed to more than just providing
targeted information, including advertising to a user.
Claim 1 recites a new way of generating customized web
pages to improve the efficiency and scaleability of delivering them.
The patent specification further explains that this implementation
is intend[ed] to resolve technological problems in the prior art,
including long wait times to load pages in browsers and clog[ged]
networks due to continuous streaming and large amounts of local
storage that quickly becomes out of date.
While it may be possible that claim 1 could be accurately
characterized as directed to some abstract idea, all I need to decide
today is that the claim is not directed to the abstract idea articulated
by defendant.
Defendant’s characterization of the claim is not correct.
My denial of defendant’s motion is without prejudice, so
depending on how the record develops, defendant may have
another opportunity to try to meet its burden at Step 1.
Turning to Step 2, defendant has failed to show by clear
and convincing evidence that claim 1 lacks an inventive concept.
To the contrary, based on the record as it currently exists and
taking all well pled facts as true, the claim at least captures the
inventive concept of storing the template program in at least two
locations and . . . determining from which locations to retrieve the
template based on the frequency of the user request for the
customized page. These inventive concepts are stated with
specificity in the second element of the claimed method. At least
one exemplary embodiment is discussed in the specification at
Columns 4 to 5 in reference to Figures 2 and 4.
While it is true that “merely adding computer functionality
to increase the speed or efficiency of a process does not confer
patent eligibility,” and that is a quote from the Federal Circuit’s
decision at Intellectual Ventures v Capital One Bank, 792 F.3d at
5

Alice Corp. Pty. Ltd. v. CLS Bank Int’l. et al., 573 U.S. 208, 134 S. Ct. 2347 (2014).
3

page 1369,[ 6] while that is true, the Court is not persuaded that this
is what is going on here. Rather, the invention is changing the
computer functionality to improve the efficiency of the
technological process that was already using a computer. While
defendant points to another patent in the prior art, the ’430
patent,[ 7] purportedly to demonstrate that retrieving customized
pages from a cache is conventional, . . . defendant’s argument only
raises a potential factual dispute that I am unable to resolve at this
stage.
That was all I had to say on the Digi Portal case where,
again, the motion is denied. I will now turn to the Align v 3Shape
cases. First, the [20]17 cases, 17-1647 and 17-1646.
The defendants here, 3Shape A/S, 3Shape Inc., and 3Shape
TRIOS who I may collectively refer to as “3Shape,” have moved
to dismiss the complaint filed by Align Technology Inc., “Align”
for failure to state a claim under Rule 12(b)(6) on the basis of
Section 101.
Before I can address the motions to dismiss, I must address
Align’s motion to strike the 12(b)(6) motion based on Rule
12(g)(2).
Align argues that two of the three defendants previously
filed a 12(b)(6) motion to dismiss the original complaint and to
invalidate all the claims on the basis of Section 101 only to
abandon that broad position and voluntarily agree to limit their
challenge only to claim 1 of each patent.
The Court in its September 7th decision[ 8] invalidated
claim 1 of both patents under Section 101. However, Align
thereafter filed an amended complaint accusing for the first time
the third defendant, 3Shape TRIOS of infringement.
I have decided to deny the motion to strike. The new
defendant, 3Shape TRIOS is entitled to file its own Rule 12 motion
in each case. The pending motions are 3Shape TRIOS’s first
opportunity to file Rule 12 motions. Align has not cited any
authority for its contention that a new defendant[,] even one related
to or associated with an original defendant[,] is somehow bound to
the earlier motions practice to which it was not a party and
therefore should be precluded from filing its own motion.
6

Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015).

7

U.S. Patent No. 5,740,430.

8

C.A. No. 17-1646 D.I. 64-65; C.A. No. 17-1647 D.I. 62-63.
4

Now, I don’t expect and I certainly don’t intend to invite
serial Rule 12 motions. That would be improper and a violation of
the rules. It would also be highly disrespectful of the Court’s
overstressed and limited judicial resources. Here, however, for
whatever reason, the plaintiff voluntarily chose to file an amended
complaint against a new defendant. That triggered a right in the
new defendant to file a Rule 12 motion. In other words, Align
opened the door to these new motions and the Court is not going to
deprive the new defendant of its opportunity under Rule 12 to
move to dismiss.
Turning to the merits of the motions to dismiss. First, in
the 17-1646 motion, the motion is granted with respect to the ’065
patent.[ 9]
For Step 1, Align states that claim 7 is representative but
does not say how claim 7 is distinguishable from the already
invalid claim 1. In the Court’s view, claims 1 and 7 are nearly
identical in substance. There are some nondispositive differences
to the preamble. Thus, for the reasons stated in the Court’s
September 7th decision which again I will incorporate hereby by
reference, I find that all of the asserted claims of the ’065 patent
are directed to the abstract concept of modifying a finish line of a
dental prothesis.
While Align argues that the ’065 patent teaches a specific
method for updating a finish line using newly acquired second
finish line data, the claim is not specific about that process. It does
not, for instance, provide a particular method for automatically
generating a finishing line or a specific process for incorporating a
technician or a dentist[’s] manual adjustments. Rather, claim 7 is
directed at a general computerized process that previously had
been done manually, creating a first finishing line that may be
manually modified. The use of a computer is distinguishable from
the manual process only insofar as the computer reduces the back
and forth between technicians or dentists when adjusting the finish
line. The ability to make changes to the computer generated finish
line does not make the claim non-abstract. It simply allows the
technician or dentist to make changes faster.
Although claim 7 is representative, I also find that none of
the other asserted claims offers anything to bring them out of the
realm of abstraction as they all essentially recite aspects of the
abstract idea such as modifying the finish line, drawing it at the

9

U.S. Patent No. 7,112,065.
5

[apical] limit, drawing the finishing line continuously or through a
series of dots and so forth.
I disagree with Align’s contention that claim construction is
required in this case before the Court can make its decision on
Section 101. The motion to dismiss was filed two months before
the Court held a claim construction hearing but Align did not raise
the issue of claim construction until its letter briefing for this
hearing which was just last month. In any event, even adopting
plaintiff’s proposed construction for second finish line data would
not [change] the outcome here. The proposed construction merely
[e]ncapsulates the view that the second finish line data is different
from the first finish line data or that a change has been made
between the two iterations just as the line changes when it is
manually modified.
Align’s attempts to liken this case to Data Engine[ 10] are
also unpersuasive. In Data Engine, the invention of a tabbed
layout to represent a three-dimensional spreadsheet improved the
functioning of the computer itself. Here, while Align may in fact
have invented an improvement over the prior art finishing line
system, the claims do not capture those specific improvements.
At Step 2 of Alice, plaintiff argues the asserted claims are
directed to a specific technique for updating a virtual finish line by
providing a visual display of the original finish line such that the
user can intuitively draw a second line to obtain a new finish line,
to obtain new finish line data that is used to update the original
inaccurate data. But as the Court stated in the September 7th
decision, all of the purported improvements by Align are the result
of using a generic computer[;] but performing an abstract concept
on a generic computer is not an inventive concept.
Here, the purported inventive concept of saving time,
because the dentist can renew and refine the model on the spot, is
merely the benefit of the dentist being able to place the finish line
on a 3D motion model by virtue of its transmission via a computer
and computer network instead of the technician having to send a
dentist a physical model to mark. These words equally apply to all
asserted claims here.
Even assuming the Court has discretion to consider Align’s
declaration, the Court would only consider it for purposes of
assessing whether an amended complaint, one that would
incorporate the substance of the declaration[,] would be futile.
Having considered the declaration for that limited purpose, the
10

Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018).
6

Court concludes that such an amended complaint would be futile.
The declaration did not materially change the analysis. Therefore,
defendant’s motion to dismiss the claims relating to the ’065 patent
is granted.
Let me now turn to the ’850 patent[ 11] which is asserted in
the 17-1647, Align v 3Shape[] action. This motion is granted.
Here, I find that at Alice Step 1, all of the asserted claims
are directed to an abstract idea. The differences between already
invalid claim 1 and asserted claim 20 are minimal. Claim 1 is a
method claim reciting certain steps, and claim 20 is an apparatus
claim directed to a generic computer performing those same steps.
As the Court previously stated with regards to claim 1, the
invention is directed to the abstract concept of describing an
orthodontic treatment plan. And . . . even though an orthodontist
could not show a patient her mental model, she could express that
mental model of the treatment plan to the patient using, for
instance, photographs, physical models or drawings.
Align now argues that claim 20 of the ’850 patent requires
predetermining a treatment path for each tooth which was never
done before Align’s Clear Aligner technique. The Court finds,
however, that the claim does not embody this alleged invention.
Neither the specification, nor the claims discuss how tooth
movement is calculated or how treatment paths are developed via
software. Rather, the claims discuss in broad terms the creation of
a virtual 3D model of teeth to create a virtual treatment plan.
Further, while plaintiff [c]ites Core Wireless[ 12] as the
closest case supporting its position, the Court has already rejected
this contention in its September 7th decision.
The dependent claims are also directed to the same abstract
idea. The dependent claims described aspects of the system and
process[,] such as the specific views or angles of the 3D model,
renderings of the model or renderings of the model along the
treatment path. None of these add any sort of technical feature that
improves computer functionality and neither do[] any of the other
dependent claims.
Turning to Alice Step 2. None of the asserted claims
provide an inventive concept. The Court has already determined
that “the benefit of allowing an orthodontist to more easily explain
11

U.S. Patent No. 6,227,850.

12

Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018).
7

[a] treatment plan to a patient via a 3D model[, while] an
improvement [over] explaining . . . the plan verbally[,] is not a
technological improvement that supplies an inventive concept.”[ 13]
Furthermore, “the ’850 patent does not disclose a new method by
which a 3D model of teeth could be made[,] or the method by
which a 3D model can be repositioned virtually to display a
different angle.”[ 14]
Finally, the Court is not persuaded that claim construction
is required or that considering the declarations for the limited
purposes for which it would be proper makes a material difference.
That is all I have to say on the 2017 Align cases.
The next case that was argued was the 2018 Align case . . .
18-1949. The motion there is directed to two asserted patents, the
’634 patent[ 15] and the ’420 patent.[ 16]
With respect to the ’634 patent, I need to take the motion
under advisement. My present inclination, and it is a fairly strong
one but not one I’m ready to put in an order, is that at least some of
the claims will survive the motion. It may be that all of the claims
survive the motion but I’m not prepared today to delineate between
those claims that survive the motion and those that may not. So I
will have to do some further work on the ’634 patent.
With respect to the ’420 patent, which is the other patent
that was at issue in the 2018 Align case, the parties have a dispute
there as to whether certain claims are representative but the Court
need not decide that issue as the motion is denied as to all claims
of the ’420 patent regardless of the outcome of the
representativeness question.
At Step 1, it is unclear at the moment to me whether the
claims are all directed to an abstract idea but even assuming
defendant has met its burden on Step 1, it has failed to meet its
burden at Step 2. The specification discloses that the curve or
plane is applied to the final desired tooth positions. There is at
minimum a question of fact as to whether the use of the Spee curve
or Andrew[’]s plane to determine initial graphic placement is

13

C.A. 17-1647 D.I. 63 at 31.

14

Id. at 32.

15

U.S. Patent No. 7,357,634.

16

U.S. Patent No. 9,844,420.
8

routine and conventional. For that reason, defendant’s motion is
denied.
That’s all I have to say about the [3Shape]/Align cases . . . .
. . . I have next the three related 3G cases: 3G versus HTC,
versus Lenovo and versus LG, 17-83, 17-84 and 17-85.
I begin with the ’564 patent.[ 17] With respect to the ’564
patent, the motion is denied.
Defendant has failed to meet its burden on Step 1. The
patent -- that is the ’564 patent now -- sets forth a specific problem
to be solved: That prior art devices face drawbacks in exploiting
the maximum capacity of the wireless transmission system, and
that current solutions require complex and otherwise limited
systems.
The patent then sets forth a specific way of solving this
capacity problem to precode distinct signals in a matrix in a
particular way and to have each antenna transmit and/or receive
each precoded signal simultaneously. According to the patent, this
approach differs sharply from the cyclical sending proposed by the
prior art which induced high complexity at reception, and has the
advantage that the invention can be used to exploit the maximum
capacity of the MIMO, multi-input multi-output[,] channel given
that it does not use space time codes and maximum space time
diverse through the linear precoding. Further, the size of the
precoding matrix is not limited to the number of antennas as it was
in the prior art.
The disputed claims do more than just ma[th]. For
example, claim 5 discloses a method for receiving wireless signals
where each of a plurality of receiving antennas receives a signal
and puts that signal in a column in a reception matrix which
mirrors the original transmission matrix. The reception matrix is
then multiplied against a de-precoding matrix, an inverse of the
precoding matrix used prior to transmission to arrive at the
estimated source matrix.
Although claim 5 focuses on the reception function and
claims generic structure, such as M transmit antennas, P receiver
antennas, several matrices and implicitly a processor to perform
the calculations, the claims provide a specific application of math
to a technical problem. That improves the functionality of the
generic components.

17

U.S. Patent No. 7,933,564.
9

Therefore, I agree with plaintiff that the case that is most
analogous here is Thales.[ 18] Although [it is] not necessar[y] to
reach Step 2, I further conclude under Step 2 there is at least a
question of fact as to whether utilization of the plurality of
antennas to receive and sort signal data in a reception matrix and
then de-precode the matrix in the manner described was routine
and conventional[,] which further precludes dismissing the claims
at this time. That is, there is a factual dispute at minimum on those
questions. There are at least three express[] statements in the
specification that point out how, in the inventor’s view, some of
what is being disclosed is wholly novel and inventive; and these
statements, while not dispositive, further support the Court’s
holding.
Turning next to the ’091 patent.[ 19] The motion with
respect to this patent is also denied. The Court is persuaded by
plaintiff that claim construction is necessary before the 101
disputes can be considered on the merits with respect to the ’091
patent.
Plaintiff contends that initiate and initiating must be
construed as occurring automatically. If automatically is somehow
embodied in the claim, that may improve the functionality of the
prior art[,] as it would appear to address the problem to be solved,
automatically providing the most efficient communication under
limited bandwidth situations. This claim construction dispute,
however, has not been briefed and, of course, has not been
decided.
Under the circumstances of this case, the Court does not
fault the plaintiff for failing to present this claim construction
dispute earlier[,] such as at the time the Court was construing
claims. The Court excuses plaintiff’s failure to do so because the
parties’ disagreement here only became clear after the claim
construction process and particularly in connection with the
briefing on the 101 motion, briefing which concluded only I think
last week and certainly very recently.
Therefore, I am denying the motion to dismiss the ’091
patent without prejudice to renew at summary judgment. If the
motion is to be renewed, the parties will have to include in their
summary judgment briefing some additional briefing on claim
construction.

18

Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017).

19

U.S. Patent No. 7,995,091.
10

That’s all I have to say on the 3G cases.
That leaves just the last case, LBS or Location Based
Services versus Google. There are two sets of patents here, and
also plaintiff’s motion for leave to file an amended complaint.
I’ll start with the first four patents, what I’m going to call
the visual path patents: The ’073,[ 20] ’027,[ 21] ’729,[ 22] and
’691[ 23] patents.
For these four patents, I am denying the motion but I am
doing so very reluctantly. And I want to explain the nature of my
reluctance in denying the motion.
At Step 1 of Alice, I find that claim 1 of the ’073 patent,
which is representative, is directed to the abstract idea of providing
a visual travel path using images.
Indeed, the patent specification states that the visual path
enables a user of a mobile device to visualize the path for travel
purposes. The defendants have met their burden at Step 1.
Turning to Step 2, it is fair to say that the specifications are
at best for plaintiff highly problematic. The specifications do not
discuss the prior art, do not discuss any problem in the prior art, do
not discuss any solution to any problem and do not affirmatively
indicate any inventive concept.
Plaintiff points to stitching and scrolling as purportedly
inventive concepts, yet the patents say essentially nothing about
how to do stitching or scrolling. Arguably, in fact, the depiction in
Figure 3 and the related discussion in the specification supports a
view that a person of ordinary skill in the art would have well
understood just how routine and conventional these techniques
were at the time of the patent. It could very well be that the
patentee did not bother to provide any further explanation because
the patentee knew that these techniques were not inventive.
However, all of that would at this point be speculation.
Making today’s decision even more difficult is plaintiff’s
proposed amended complaint. I do appreciate how plaintiff
handled this matter procedurally. They were advised of a
purported deficiency in their patent, and they got an expert and
20

U.S. Patent No. 7,734,073.

21

U.S. Patent No. 8,805,027.

22

U.S. Patent No. 9,286,729.

23

U.S. Patent No. 8,207,691.
11

they tried to fix it. That is a good way of handling this type of
problem, and it is far better than just showing up at the hearing and
suddenly announcing we would like to amend our complaint and
we hired an expert and here is what we could do. It is far better to
do it, and so I appreciate that plaintiff did that.
The problem here is that what I got from the expert is
almost entirely unhelpful. It is wholly conclusory and really
doesn’t strengthen the plaintiff’s case on the merits. Arguably, it
only raises further doubts. So this is a tricky situation.
But I am, as I said, I am denying the motion. We’re at Rule
12. While the suspicions and doubts I had with these four patents
have truly only been heightened through this process, I think it
would be wrong under Rule 12 for me to act on my suspicion and
speculation when instead I think what the record is telling me is
that there is a factual dispute at Step 2 and plaintiff will have a
chance, as the cases proceed, to see if they can prove the
allegations that they have stated.
So at this stage, I feel I am required to deny defendant’s
motion with respect to the four patents. I am, however, also
denying the motion to amend because I find that the declaration is
wholly conclusory and doesn’t help the plaintiff in any regard so
the case will go forward on the original complaint.
Turning to the ’708 patent,[ 24] also referred to as the
itinerary patent, I’ll grant the motion to dismiss and deny the
motion to amend with respect to this patent. The parties agree that
at least claim 1 is representative. At Step 1, I find claim 1 of the
’708 patent is directed to the abstract idea of providing and altering
itineraries for a group of individuals. The itinerary[] patent
specification does not discuss the prior art or any problem the
patent purports to resolve. There is nothing at all technological
about planning itinerary groups for groups of people and plaintiff
fails to explain how the claim does anything [but add] computer
functionality to this wholly nontechnical process.
Plaintiff’s argument that the claims solve a problem with
existing mobile navigation computer networks and they facilitate
leading individual improved goals simultaneously is not supported
in the intrinsic record.
As defendants argue, the claimed convention could be
accomplished by a hotel concierge or tour guide, although less
efficiently.
24

U.S. Patent No. 7,729,708.
12

Turning to Step 2. While plaintiff argues the inventive
concept is the root determination for real-time location for multiple
mobile peer devices, the specification expressly provides the
contrary, noting that “there are several appropriate negotiation
network types for a mobile peer mesh network.”
And using a computer to cause a human process to happen
in real-time is not a technical solution to computer functionality.
As there is no technical problem in the prior art that the claimed
method purports to resolve, I find there is no inventive concept.
Plaintiff contends that claims 12 and 23 are also
representative, but I disagree. Claim 12 limits the type of goal
which is not an inventive concept and does not impact the Section
101 analysis. Claim 23 has a limitation of downloading a map or
directions which is also not inventive.
Given my findings, I’m not persuaded that there is anything
in any of the other claims that need separate discussion. I’m also
not persuaded that plaintiff’s proposed claim construction or
proposed amended complaint could materially affect the analysis.
That is my ruling in the LBS case.

________________________________
HONORABLE LEONARD P. STARK
UNITED STATES DISTRICT JUDGE

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