Mod Stack LLC v. Aculab, Inc.
Filing
55
MEMORANDUM OPINION Signed by Judge Colm F. Connolly on 8/2/2019. (nmf)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MOD STACK LLC,
Plaintiff,
v.
Civil Action No. 18-332-CFC
ACULAB, INC.,
Defendant.
Stamatios Stamoulis, STAMOULIS & WEINBLATT LLC, Wilmington, DE,
David R. Bennett, DIRECTION IP LAW, Chicago, IL
Counsel for Plaintiff
Jeremy D. Anderson, FISH & RICHARDSON P.C., Wilmington, DE, Neil J.
McNabnay, David B. Conrad, Ricardo J. Bonilla, Theresa M. Dawson, Rodeen
Talebi, FISH & RICHARDSON P.C., Dallas, TX
Counsel for Defendant
MEMORANDUM OPINION
August 2, 2019
Wilmington, Delaware
COLM F.
NNOLL Y,
UNITED STATES DIS~ T JUDGE
I have before me Defendant Aculab, Inc. 's ("Defendant" or "Aculab")
Renewed Rule 12(b)(6) Motion to Dismiss for Failure to State a Claim. D.I. 19.
The matter is fully briefed. D.I. 20, D.I. 25, D.I. 28. For the reasons that follow, I
will deny Aculab' s motion.
I.
BACKGROUND 1
Plaintiff Mod Stack LLC ("Mod Stack" or "Plaintiff') initiated this patent
infringement action on February 28, 2018, accusing Aculab's ApplianX IP
Gateway of infringing at least claim 1 of U.S. Patent No. 7,460,520 (the "#520
patent"). D.I. 1. On April 25, 2018, Aculab filed its first motion to dismiss. D.I.
10. In lieu of filing a response to Aculab' s motion, Mod Stock filed an Amended
Complaint, once again accusing Aculab' s ApplianX IP Gateway of infringing at
least claim 1 of the #520 patent. D.I. 16. Aculab then filed the instant motion to
dismiss Mod Stack's Amended Complaint, asserting that the #520 patent is
directed to patent ineligible subject matter. D.I. 19; see also D.I. 20 at 1. In the
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As I am assessing the merits of a Rule 12(b)(6) motion to dismiss, I accept as true
all factual allegations in the Amended Complaint and view those facts in the light
most favorable to Mod Stack. See Umland v. Planco Fin. Servs ., 542 F .3d 59, 64
(3d Cir. 2008).
alternative, Aculab moves to dismiss Mod Stack's Amended Complaint because
Mod Stack has failed to adequately plead direct infringement. See D.I. 20 at 2.
The #520 patent covers "a system and method for supporting multiple
central controllers of voice-band calls." #520 patent at 1:14-16. Specifically, the
claimed invention "relates to a system and method for simultaneously interfacing
with different types of call controllers in a voice gateway." Id. at 3:23-25.
According to the patent's specification, although "[t]he call controllers may use
different call control protocols[,] [t]he voice gateway [] adapts each of these
different call control protocols to a common representation so that all can be
interfaced simultaneously." Id. at 3:25-29.
The #520 patent contains twenty-seven claims, six of which are independent
claims. Id. at 18:56-24:14. Claim 1 recites as follows 2 :
1. An apparatus connecting a local packet network (LPN)
and a circuit-switched network, the apparatus comprising:
a first protocol endpoint configured to receive at least one
first external call control message of a first protocol
2
I recognize that the parties dispute whether claim 1 is representative. See D.I. 20
at 8; D.I. 25 at 15. As will be discussed below, I have found that Aculab has failed
to meet its burden to show that claim 1 is not patent eligible. Because Aculab
asserts that claim 1 is representative of all claims of the #520 patent, I need only
analyze claim 1. See 3G Licensing, S.A. v. HTC Corp., 2019 WL 2904670, at *2
(D. Del. July 5, 2019). Should Aculab wish to raise a 35 U.S.C. § 101 challenge at
summary judgment and should the parties continue to dispute whether claim 1 is
representative of the #520 patent's other claims, Aculab bears the burden of
establishing claim 1 as representative. JSDQ Mesh Techs. LLC v. Fluidmesh
Networks, LLC, 2016 WL 4639140, at *2 (D. Del. Sept. 6, 2016).
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from a first call controller associated with the circuitswitched network and to map the at least one first
external call control message to at least one
corresponding first internal call control message of an
internal protocol;
a second protocol endpoint configured to receive at least
one second external call control message of a second
protocol from an integrated access device {IAD)
associated with the LPN and to map the at least one
second external call control message to at least one
corresponding second internal call control message of
an internal protocol; and
a protocol adapter configured to receive the first and the
second internal call control messages and to route the
at least one first internal call control message to the
second protocol endpoint and the at least one second
internal call control message to the first protocol
endpoint;
wherein the first protocol endpoint is further configured
to receive the at least one second internal call control
message and to map the at least one second internal
call control message to a third external call control
message of the first protocol, and
wherein the second protocol endpoint is further
configured to receive the at least one first internal call
control message and to map the at least one first
internal call control message to a fourth external call
control message of the second protocol.
#520 patent at claim 1.
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II.
LEGAL STAND ARDS
A.
Motion to Dismiss Under Fed. R. Civ. P. 12{b){6)
To state a claim upon which relief can be granted, a complaint must contain
"a short and plain statement of the claim showing that the pleader is entitled to
relief." FED. R. CIV. P. 8(A)(2). Detailed factual allegations are not required, but
the complaint must set forth sufficient factual matter, accepted as true, to "state a
claim to relief that is plausible on its face." Bell At/. Corp. v. Twombly, 550 U.S.
544, 570 (2007). A claim is facially plausible when the factual content "allows the
court to draw the reasonable inference that the defendant is liable for the
misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). When
considering a Rule l 2(b)( 6) motion to dismiss, the court must accept as true all
factual allegations in the complaint and view them in the light most favorable to
the plaintiff. Umland, 542 F .3d at 64.
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.
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There are three judicially-created limitations on the literal words of§ 101.
The Supreme Court has long held that laws of nature, natural phenomena, and
abstract ideas are not patentable subject matter. Alice Corp. Pty. v. CLS Bank Int'/,
573 U.S. 208,216 (2014). These exceptions to patentable subject matter arise
from the concern that the monopolization of "the[ se] basic tools of scientific and
technological work" "might tend to impede innovation more than it would tend to
promote it." Id. (internal quotation marks and citations omitted).
"[A]n invention is not rendered ineligible for patent [protection] simply
because it involves an abstract concept." Id. at 217. "[A]pplication[s] of such
concepts to a new and useful end ... remain eligible for patent protection." Id.
(internal quotation marks and citations omitted). But in order "to transform an
unpatentable law of nature [or abstract idea] into a patent-eligible application of
such a law [or abstract idea], one must do more than simply state the law of nature
[or abstract idea] while adding the words 'apply it."' Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72 (2012) (emphasis omitted).
In Alice, the Supreme Court made clear that the framework laid out in Mayo
for determining if a patent claims eligible subject matter involves two steps. The
court must first determine whether the patent's claims are drawn to a patentineligible concept -
i.e., are the claims directed to a law of nature, natural
phenomenon, or abstract idea? 573 U.S. at 217. If the answer to this question is
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no, then the patent is not invalid for teaching ineligible subject matter. If the
answer to this question is yes, then the court must proceed to step two, where it
considers "the elements of each claim both individually and as an ordered
combination" to determine 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. at 217-18 ( alteration in original) (internal quotations and citations omitted). 3
III.
DISCUSSION
Aculab moves to dismiss Mod Stack's Amended Complaint on two grounds:
first, it contends that the claims of the #520 patent cover patent ineligible subject
matter, and second, it argues that Mod Stack's allegations of direct infringement
3
The Court in Alice literally said that this two-step framework is "for
distinguishing patents that claim laws of nature, natural phenomena, and abstract
ideas from those that claim patent-eligible applications of those concepts." 573
U.S. at 217. But as a matter of logic, I do not see how the first step of the
Alice/Mayo framework can distinguish (or even help to distinguish) patents in
terms of these two categories (i.e., the categories of ( 1) "patents that claim laws of
nature, natural phenomena, and abstract ideas" and (2) patents "that claim patenteligible applications of [laws of nature, natural phenomena, and abstract ideas]").
Both categories by definition claim laws of nature, natural phenomena, and abstract
ideas; and only one of Alice's steps (i.e., the second, "inventive concept" step)
could distinguish the two categories. I therefore understand Alice's two-step
framework to be the framework by which courts are to distinguish patents that
claim eligible subject matter under § 101 from patents that do not claim eligible
subject matter under§ 101.
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fail to state a claim upon which relief may be granted. 4 For the reasons set out
below, I will deny Aculab's motion.
A.
Patent Eligible Subject Matter
At step one of Alice, Aculab contends that the #520 patent's claims are
directed to the abstract idea of "using a common language to translate between two
foreign languages." D.I. 20 at 8. It reiterates this same idea in its reply brief. D.I.
28 at 1. After reviewing the claims of the #520 patent, as well as the patent's
specification, I am not persuaded that Aculab' s proposed abstract idea
satisfactorily captures the substance of the claims. For that reason, I will deny
Aculab's renewed motion to dismiss based on 35 U.S.C. § 101.
The Supreme Court and the Federal Circuit have cautioned against
oversimplifying a patent's claims when conducting a§ 101 analysis. See McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) ("We
have previously cautioned that courts must be careful to avoid oversimplifying the
claims by looking at them generally and failing to account for the specific
requirements of the claims." (internal quotation marks omitted)); see also Alice,
573 U.S. at 217 ("[W]e tread carefully in construing this exclusionary principle lest
it swallow all of patent law. At some level, all inventions ... embody, use, reflect,
4
Mod Stack's amended complaint also alleges induced infringement of the #520
patent. See D.I. 16 at ,r,r 44-45. Aculab's renewed motion to dismiss, however,
does not address these allegations, and thus, I will not address them here.
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rest upon, or apply laws of nature, natural phenomena, or abstract ideas." (internal
quotation marks and citation omitted)). Here, Aculab, with its proposed abstract
idea of "using a common language to translate between two foreign languages,"
has done exactly what the Supreme Court and the Federal Circuit have cautioned
against- it has oversimplified the claims and described claim 1 (and the #520
patent as a whole) in such a way that its proposed abstract idea is "untethered from
the language of the claim[]." See En.fish, LLC v. Microsoft Corp., 822 F.3d 1327,
1337 (Fed. Cir. 2016). Claim 1 recites an allegedly new way for improving a voice
gateway, such that it may simultaneously handle multiple call control protocols
and messages. #520 patent at claim 1; see also id. at 3:23-29. Thus, to me, it
seems that claim 1 is directed to much more than just using a common language as
a translation tool.
Therefore, I am not convinced, at this point in the case, that the claims of the
#520 patent cover patent ineligible subject matter. See 3G Licensing, 2019 WL
2904670, at *2 ("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."); see also
Groove Digital, Inc. v. Jam City, Inc., 2019 WL 351254, at *3 (D. Del. Jan. 29,
2019) (denying defendant's§ 101 motion at step one because defendant failed to
propose a satisfactory abstract idea).
(
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B.
Sufficiency of the Claims
In order to survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6), "a
complaint must contain sufficient factual matter, accepted as true, to state a claim
to relief that is plausible on its face." Nalco Co. v. Chem-Mod, LLC, 883 F.3d
1337, 1347 (Fed. Cir. 2018) (internal quotation marks and citation omitted). But a
plaintiff is not required to "prove its case at the pleading stage." Id. at 1350
(internal quotation marks and citation omitted). Moreover, the "Federal Rules of
Civil Procedure do not require a plaintiff to plead facts establishing that each
element of an asserted claim is met." In re Bill ofLading Transmission &
Processing Sys. Patent Litig., 681 F.3d 1323, 1335 (Fed. Cir. 2012). Rather, the
complaint must merely "place the potential infringer ... on notice of what activity
... is being accused of infringement." Nalco, 883 F.3d at 1350 (internal quotation
marks and citation omitted).
Aculab contends that "Mod Stack has not alleged facts sufficient to meet a
plausible infringement claim against Aculab." D.I. 20 at 18. I disagree. The
Amended Complaint identifies a specific product, Aculab's ApplianX IP Gateway,
which it alleges directly infringes at least claim 1 of the #520 patent. D.I. 16 at ,I
36. It describes the overall purpose of the invention and describes the elements of
claim 1, including the claimed use of a protocol adapter to receive and route
internal call control messages. Id. at ,I,I 11, 28-33. In the direct infringement count
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specifically, Mod Stack identifies the ApplianX IP Gateway, identifies an asserted
claim, and provides examples of how the ApplianX IP Gateway meets the elements
of claim 1, thus making sufficiently clear the basis of its infringement allegation.
See id at ,r,r 36-43. Moreover, the Amended Complaint "is supported by various
publicly-accessible documents, and as a whole provides fair notice of how it is
[Aculab's] accused product[] [is] alleged to infringe" the #520 patent. BioMerieux,
S.A. v. Hologic, Inc., 2018 WL 4603267, at *4 (D. Del. Sept. 25, 2018) (internal
quotation marks omitted). Thus, Mod Stack has pleaded sufficient allegations to
plausibly state a claim for direct infringement.
IV.
CONCLUSION
For the reasons set forth above, I will deny Aculab' s motion to dismiss for
failure to state a claim upon which relief may be granted. The Court will issue an
order consistent with this Memorandum Opinion.
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