Visual Interactive Phone Concepts, Inc. v. United States Cellular Corporation
Filing
195
Opinion and Order. Signed by the Honorable William T. Hart on 11/15/2016:Mailed notice(clw, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
VISUAL INTERACTIVE PHONE
CONCEPTS, INC.,
Plaintiff-Counterclaim-Defendant,
v.
UNITED STATES CELLULAR
CORPORATION,
Defendant-Counterclaim-Plaintiff,
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No. 11 C 5289
OPINION AND ORDER
Defendant United States Cellular Corporation ("UCC") has moved for
judgment on the pleadings, Fed. R. Civ. P. 12(c), contending that the patent at
issue, owned by plaintiff Visual Interactive Phone Concepts, Inc. ("VIPC"), does
not claim patentable subject matter within the meaning of 35 U.S.C. § 101. A
motion for judgment on the pleadings is considered pursuant to the same standard
as applies to a Rule 12(b)(6) motion to dismiss. The allegations are to be viewed
in a light most favorable to the non-moving party. The pleadings and the public
record are considered. The Federal Circuit adopts the standard applied by the
local Circuit. Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC,
635 F. App'x. 914, 917 (Fed. Cir. 2015); Buchanan-Moore v. Cy. of Milwaukee,
570 F.3d 824, 827 (7th Cir. 2009).
The parties have completed discovery. The court has considered UCC's
motion for summary judgment on the ground that VIPC violated 35 U.S.A.§ 305
by enlarging its patent claims during reexamination proceedings. The motion was
denied as premature before construction proceedings. VIPC v. UCC, 2014 WL
561731 (N.D. Ill.) ("VIPC I"). Thereafter, UCC's motion to strike VIPC’s final
infringement contentions was granted in part and plaintiff was given leave to
amend. (Dkt. 150). UCC contends that the amendment is inadequate.
Construction proceedings have been completed. An order has issued
construing certain claim terms of U.S. Patent No. 5,724,092 ("the '092 patent")
entitled "Videophone Interactive Mailbox Facility System and Method of
Processing Information." VIPC v. UCC, 2016 WL 4265750 (N.D. Ill.) ("VIPC
II").
The '092 patent has been reexamined and amended. Infringement of Claims
1 and 3 is alleged. As amended, Claims 1 and 3 provide as follows:
1. A videophone interactive mailbox facility system including a
central data center for processing of information to conduct a
transaction, comprising:
2
a) a user station having a videophone for viewing
transaction information and video1 sent or received to
conduct a transaction; and means for inputting said
transaction information into said videophone; said
videophone including a video screen,1 a memory chip for
storing said transaction information and an interface chip
for interfacing with said central data center; wherein said
videophone is a single integrated device that includes a
general purpose computer and a telephone;2 and
b) said central data center electronically connected to
said user station including a computer processor
connected to a video storage center1 for centralized
transmitting, receipt of and storage of said transaction
information and vendor-type video product and service1
information with said user station; database storage
components for receiving and storing said transaction
information sent from said user station; and a network
interface for electronically connecting and making said
computer processor compatible with said user station.
***
3. A videophone interactive mailbox facility system including a
central data center for processing information, comprising:
a) a user station having a videophone for viewing
information sent or received; and means for inputting
said information into said videophone; wherein said
videophone is a single integrated device that includes a
general purpose computer and a telephone;2 and
1
2
Language added as a result of Ex Parte Reexamination Certificate issued in 2010.
Language added as a result of Ex Parte Reexamination Certificate issued in 2013.
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b) said central data center electronically connected to
said user station and including a computer processor
connected to a video storage center1 for centralized
transmitting, receipt of and storage of said information
and vendor-type video product and service information1
with said user station; database storage components for
receiving and storing said information sent from said
user station; and a network interface for electronically
connecting and making said computer processor
compatible with said user station.
The initial difference between Claim 1 and Claim 3 of the '092 patent was
that, in Claim .1 "the user station" "videophone" was claimed to include a
"memory chip for storing said transaction information and an interface chip for
interfacing with said central data center." During reexaminations the Claims were
amended. In Claim 1, "user station" was amended to add the words "information
and video," and "video screen." The words "wherein said videophone is a single
integrated device that includes a general purpose computer and a telephone" were
added to both Claim 1 and Claim 3. The words "connected to a video storage
center" and "video product and service" were added to the "central data center"
claim in Claim 1. The words "connected to a video storage center" and "said
information and vendor-type video product and service information" were added
to the "central data center" claim in Claim 3.
The Field of the Invention is described as follows:
4
This invention relates to a videophone interactive mailbox
facility system wherein the system has a videophone, a printer,
a computer, and a central data center for processing
information from a plurality of stations for purchasers and
sellers.
Col. 1:9-13.
The Patent Overview states:
Accordingly, the primary innovative feature of the present
invention is that it provides for a videophone interactive
mailbox facility system that allows the user to view products
and services; review letters, bills and payments for
services/products which can be viewed on the videophone
screen, such that the user can review the pertinent information
and immediately decide if it is correct and then transmit the
appropriate letter, bill, and/or payment for services or products.
Col. 5:47-54.
A two-stage framework for determining whether a particular patent claim is
directed to patentable subject matter is set forth in two decisions of the Supreme
Court. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012), Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). The
Federal Circuit has applied this framework in a number of recent cases. See
Affinity Labs of Tex., LLC v. DirectTV, LLC, ___ F.3d ___, 2016 WL 5335501
(Fed. Cir. Sept. 23, 2016); Affinity Labs of Tex., LLC v. Amazon.com Inc., __
F.3d ___, 2016 WL 5335502 (Fed. Cir. Sept. 23, 2016); Electric Power Group,
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LLC v. Alstom S. A., 830 F.3d 1350 (Fed. Cir. 2016); In re TLI Commc'ns LLC
Patent Litig., 823 F.3d 607 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016). It is necessary to determine (1) whether a claim is
directed to a patent ineligible concept--a law of nature, a natural phenomenon or
an abstract idea, and if so, (2) whether the elements of the claim, considered both
individually and as an ordered combination, add enough to transform the nature of
the claim into a patent-eligible combination. The two stages are referred to as the
"abstract idea" step and the "inventive concept" step. The "abstract idea" step
requires focus on the claimed advance over prior art to determine if the claim's
character as a whole is directed to excluded subject matter. The "inventive
concept" step requires an examination to determine whether the claims reveal an
inventive application of the subject matter that removes the claim from the realm
of abstract ideas. In each step, the court must avoid oversimplification. Alstom,
830 F.3d at 1353; TLI, 823 F.3d at 611-12; Enfish, 822 F.3d at 1334-35; Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375-76 (Fed. Cir. 2016), cert.
denied, __ S. Ct. __, 2016 WL 4247339 (Oct. 3, 2016).
A.
The '092 patent has two main components: a user station having a
videophone and an electronically connected central data center. The videophone
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is an integrated device that includes a telephone, general purpose computer, a
video screen, a memory chip, an interface chip, encoders, and means for inputting
transaction information.
The Background of the Invention states "[t]here are many known audio and
video presentation interactive network systems where a subscriber can buy
products and/or services with the aid of the subscriber’s telephone and cable
television system." The Background further states:
The problems inherent with the above audio/video interactive
network systems are that the subscriber's interaction with the
cable television system or computer system is limited mainly to
the subscribers's one-way input of data to the interactive system
by phone or personal computer. These systems do not provide
for an immediate confirmation of an order and do not provide
proper security to the transactions carried out.
Col. 1:18-21, 35-42.
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An overview diagram of a proposed interactive facility is as follows:
The broad general definition of a "videophone" in the patent and the prior art
indicates that the thrust of the patent is the interactive mailbox facility system, not
the videophone itself. The videophone is defined to include existing and "any"
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future capabilities of cellular or wireless videophones and related equipment. The
'092 Patent defines the videophone as follows:
The present invention defines a videophone to be any device
having the capabilities to receive video/voice and/or video/text
as its primary function and which, in the future, may have
additional capabilities added to it that will enable it to perform
functions that a PC computer performs today. Further, a
videophone is defined to include cellular videophones or
wireless videophones or all videophones integrated with
additional PC technologies and similar capabilities (disk
storage, CDs, diskettes, and memory in the megabyte range and
up and/or keyboards) . Any videophone that receives any kind
of electronic video/voice and/or video/text or any form of video
for viewing by the client and is stored on a computer facility
which generates any form of video and in which the party on the
videophone is not utilizing his videophone to converse and see
the other calling party or parties he called in real time (both
sides physically there) is also defined to be a videophone of the
present invention.
Col. 14:61-15:11
The videophone is also claimed as including a "video screen," a "memory
chip" and an "interface chip," items commonly found in computer-based systems.
VIPC amended its claims during reexamination proceedings to specify that the
videophone includes a "general purpose computer and a telephone." The '092
Patent Description of the Prior Art describes video entertainment and datamanagement system that employs a "terminal having a video LCD display screen at
the customer location, a video tape player, a telephone, headphones, and a digital
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ROM processor." Col. 2:9-17. The claimed videophone consists of, and is
operated by, commonly known devices. A review of the prior art supports that the
focus of the Claims is the interactive system, not the tangible components .
Also, the term "means for inputting said transaction information into said
videophone" has been construed without objection to mean conventional items: a
"touch pad" the "touch panel on the LCD screen," "pushbuttons," and "keyboards."
VIPC II, 2016 WL 4265750 at *2, 4.
The videophone, as claimed in the '092 patent, is based on the knowledge of
one skilled in the art to select the claimed videophone based on pre-existing or
future technology, not on technical data provided by the '092 patent. The focus of
Claims 1 and 3 is not on the videophone, but rather on the commercial practice or
idea of conducting transactions using generic telephone and computer components
and centralized data storage.
The "central data center" is claimed to include a "computer processor
connected to a video storage center," "database storage components," and "a
network interface" for connecting the central data center to other computers and
devices. These are items of known general use.
All of the tangible components found in the claims are conventional or found
in prior art. The functional character of the claim language is result-focused. The
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Claims recite the abstract idea of storing and transmitting information, and name
conventional components to achieve those results. The focus of the '092 patent is
on a well-know abstract idea.
Plaintiff argues that the inclusion of tangible components, alone, saves the
patent from being abstract. The Federal Circuit has found, however, a number of
claims involving tangible components to be abstract. In TLI, 823 F.3d at 610-611,
the tangible components included a "server" and a "telephone unit." The court
found the claims abstract saying that “the specification makes clear that the recited
physical components merely provide a generic environment in which to carry out
the abstract idea.” The TLI telephone had features similar to the videophone in the
'092 patent.
In Alstom, 830 F.3d at 1351-52, the claims included a system claim that
required tangible components including an "interconnected electric power grid,"
and interfaces for "receiving a plurality of data streams," "data from other power
system data sources," and "data from a plurality of non-grid data sources." The
court stated that "the claims' invocation of computers, networks, and displays does
not transform the claimed subject matter into patent-eligible applications. The
claims at issue do not require any nonconventional computer, network, or display
components, or even a 'non-conventional and non-generic arrangement of known,
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conventional pieces,' but merely call for performance of the claimed information
collection, analysis, and display functions 'on a set of generic computer
components' and display devices." Id. at 1355 (quoting Bascom Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016)).
The court held the claims to be abstract stating:
Though lengthy and numerous, the claims do not go
beyond requiring the collection, analysis, and display of
available information in a particular field, stating those
functions in general terms, without limiting them to
technical means for performing the functions that are
arguably an advance over conventional computer and
network technology. The claims, defining a desirable
information-based result and not limited to inventive
means of achieving the result, fail under § 101.
Alstom, 830 F.3d at 1351.
More recently the same conclusion was reached in the DirectTV case. There
the patent contained two independent claims, one a system claim and the other a
method claim. The claims were directed to streaming regional broadcast signals to
cellular telephones located outside the region served by a regional broadcaster.
The court again stated that, in cases involving the conveyance and manipulation of
information using wireless communication and technology involving tangible
components, use of a conventional arrangement of components is insufficient
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absent additional features constituting an inventive concept. Id., 2016 WL
5335501 at*7-10.
On the same day the Federal Circuit decided the DirectTV case, it also
decided the Amazon.com case. There the patent was described as directed to a
"system" and " method for targeted advertising" for delivery to a user of a portable
device based on demographic information about the user. 2016 WL 5335502 at *1.
The court stated that "the claims do no more than describe a desired function or
outcome, without providing any limiting detail that confines the claim to a
particular solution to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a concrete embodiment
of that idea." Id. at *3. The similarities of the '092 claims are clear.
A comparison of the '092 patent claims with prior art reveals that the claims
focus on the functionality of conducting a transaction and disclose no more than
the abstract idea of conducting transactions using conventional computer
components, a telephone and centralized data storage.
B.
The second step of Mayo/Alice requires a review of the claims of the '092
patent to determine the existence of a "concrete implementation of the abstract idea
in the form of an 'inventive concept.'" Id. at *4 (citing Alice, 134 S. Ct. at 2355;
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Mayo, 132 S. Ct. at 1294). VIPC contends that the '092 patent videophone is a new
hardware invention, citing Enfish, supra, and DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed., Cir. 2014). However, in both cases the patents were
directed at overcoming problems in computer technology arising in the realm of
internet networks. VIPC's claims relate to performing commercial transactions
using conventional equipment.
VIPC relies on the Patent Office's allowance of the claims in reexamination
after the addition to the claims of the words "wherein said videophone is a single
integrated device that includes a general purpose computer and a telephone." It
argues that the videophone was a new device, citing the action of the Patent Office
action upon reexaminations as proof of the novelty of the device. The Patent
Office allowed the claims because it found that the prior art that was the subject of
the reexamination did not disclose the integrated device limitation. VIPC v. UCC,
2014 WL 561731 (N.D. Ill.) ("VIPC I"). The Patent Office did not make any
finding that the videophone represented an inventive concept. Reexaminations
under 35 U.S.C. § 101 focus on prior art and do not consider § 101 issues, the
resolution of which have changed since the '092 patent filing date.
The videophone has been construed by the language in the claims to include
"a video screen, a memory chip for storing said transaction information and an
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interface chip for interfacing with said data center” and that it is a "single
integrated device that includes a general purpose computer and a telephone." The
Patent's Specification referring as it does to "any device" which may be developed
in the future, does not support that the videophone is a new or improved invention.
It appears rather that the inventors intended to cover any device considered to be a
videophone or that would be considered to be a videophone in the future. FIG. 4 of
the '092 patent is as follows:
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The detailed description of the videophone, as claimed in the user station, is
as follows:
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Each user station 100, as depicted in FIG. 4, includes a
videophone 120 having a video screen 122, a handset 124,
pushbuttons 126 for dialing, a memory chip 128, and a
telephone line. Connected to the videophone 120 is a printer
140 for printing hard copies of transactions or receipts for
products and services, a screen printer 160 for transactions on
video screen 122, and an encryption encoder microchip 180 and
a decoder 182 for message privacy and transaction
authentication.
Col. 4:19-27.
The Patent does not explain how to construct a videophone. The
Specification does not disclose an improved videophone. It does not provide an
enabling description or technical data that would allow a person of ordinary skill in
the art to construct a videophone.
VIPC also cites the machine-or-transformation test in support of its argument
that the claims pass step-two. The Federal Circuit has stated that post-Mayo/Alice
this test is no longer sufficient alone to render a claim patent-eligible. MercedesBenz , 635 F. App'x at 919; Hotels.com., 773 F.3d at 1256.
The 1995 priority date of the '092 Patent is urged by VIPC as a factor to be
considered in evaluating the videophone. VIPC states that cell phones were
unknown at that time. A similar argument was rejected in Amazon.com., 2016 WL
5335502 at *3-4. The court rejected the contention that the claim included a
technological innovation because, as of the priority date, wireless streaming of
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media was not routine conventional or well-known. While noting that other
broadcast media providing similar function were already well-known at the time,
the court also rejected the patent holder's contentions because the specification
failed to describe a specific means for performing the relevant function. Similarly,
in this case the Patent describes the claimed videophone in broad terms of
functionality that rely on prior art with no description of how to implement
functionality.
The '092 patent, when considered with all of its components, lacks inventive
concept and fails the second step of the Alice/Mayo framework.
The claimed videophone can consist of generic computer components and a
telephone that perform ordinary functions in a conventional manner. The '092
patent presents a risk of broad preemption of the abstract idea of conducting
transactions over a network.
IT IS THEREFORE ORDERED AS FOLLOWS:
(1) Defendant's motion to strike and dismiss [156] is denied as moot.
Defendant's motion for judgment on the pleadings [187] is granted.
(2) The court concludes U.S. Patent No. 5,724,092 does not claim patentable
subject matter under 35 U.S.C. § 101 and dismisses plaintiff Visual Interactive
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Phone Concepts, Inc.'s claims of infringement against defendant United States
Cellular Corporation with prejudice.
(3) The Clerk of the Court is directed to enter judgment in favor of defendant
and against plaintiff dismissing plaintiff's cause of action with prejudice.
ENTER:
UNITED STATES DISTRICT JUDGE
DATED: NOVEMBER 15, 2016
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