WIRELESS MEDIA INNOVATIONS, LLC v. MAHER TERMINALS, LLC
OPINION. Signed by Judge Jose L. Linares on 4/20/15. (DD, )
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
WIRELESS MEDIA INNOVATIONS, LLC
Civil Action No. 14-7004; 14-7006 (JLL)
MAHER TERMINALS, LLC
WIRELESS MEDIA INNOVATIONS, LLC
GLOBAL TERMINAL & CONTAINER
LINARES, District Judge.
This matter comes before the Court by way of TWO motions to dismiss Plaintiff Wireless
Media Innovations, LLC (“Plaintiff’)’s Complaints in two separate actions against Defendant
Maher Terminals, LLC (“Maher”) and Defendant Global Terminal & Container Services, LLC
(“Global”)(Collectively “Defendants”) under Federal Rule of Civil Procedure 1 2(b)(6). (CM/ECF
No. 14; No. 14). No oral argument was heard pursuant to Federal Rule of Civil Procedure 78.
The Court has considered the submissions and arguments made in support of and in opposition to
the instant motions. For the reasons set forth below, Defendants’ motions are GRANTED.
Plaintiff is a limited liability company organized under the laws of Delaware. (Maher
Comp. at ¶J 1-2). Plaintiff is the owner of two patents covering certain systems and methods
relating to the monitoring of shipping containers. (Id. at ¶ 7-9). The Patents are U.S. Patent
‘291 Patent”) and U.S. Patent 5,712,789
‘789 Patent”). Maher is a
limited liability corporation organized under the laws of Delaware, with its principle place of
business in New Jersey. (Id. at ¶ 2). Global is a limited liability corporation organized under the
laws of Delaware, with its principle place of business in New Jersey, as well. (Global Comp. at
2). In nearly identical Complaints, Plaintiff alleges that Defendants operate at least one terminal
operating system and operative methods associated therewith to monitor the locations and load
statuses of containers at Defendants’ respective terminals. (Maher and Global Comp. at 11).
Plaintiff alleges that by monitoring the containers, Defendants infringed and continue to infringe
on one or more claims of Plaintiff’s ‘291 Patent and Plaintiff’s ‘789 Patent. (Id. at 12). Plaintiff
has pled one count of infringement for each of its two Patents, against each Defendant,
respectively. (Id. at ¶J 10-17).
Defendants filed two separate motions to dismiss asserting that Plaintiff’s Patents are
ineligible for patent protection under 35 U.S.C.
§ 101 because they are directed at an abstract
idea. The principal issues are whether the Court can assess invalidity under
§ 101 before formal
claim construction, and, if so, whether the Patents are, in fact, ineligible for patent protection
according to the abstractness test articulated in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct.
II. LEGAL STANDARD
For a complaint to survive dismissal, it “must contain sufficient factual matter, accepted
as true, to ‘state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “Threadbare recitals
of the elements of a cause of action, supported by mere conclusory statements, do not suffice.”
Id. In determining the sufficiency of a complaint, the Court must accept all well-pleaded factual
allegations in the complaint as true and draw all reasonable inferences in favor of the nonmoving party. See Phillips v. County ofAllegheny, 515 F.3d 224, 234 (3d Cir. 2008). But, “the
tenet that a court must accept as true all of the allegations contained in a complaint is
inapplicable to legal conclusions.” Iqbal, 556 U.S. at 678. Thus, legal conclusions draped in the
guise of factual allegations may not benefit from the presumption of truthfulness. Id.; In re Nice
Sys., Ltd. Sec. Litig., 135 F. Supp. 2d 551, 565 (D.N.J. 2001).
A. Motions Before the Court
1. Defendants’ Motions
Defendants contend that dismissal of Plaintiffs Complaints is warranted on the following
grounds: (1) The question of Patent eligibility under 35 U.S.C. 101 can and should be decided
at the Pleading stage on a motion to dismiss; (2) In view of Bilski, Mayo, and Alice, the ‘789 and
‘291 Patents claim ineligible subject matter; and (3) in the alternative, Plaintiffs Complaints
should be dismissed under Fed. R. Civ. P. 12(b)(6) for failing to comply with Twombly and
2. Plaintiff’s Opposition
Plaintiff rebuts Defendants’ arguments on the following grounds: (1) Defendants’
motions are premature; (2) The Patents in suit claim patent-eligible subject matter; and (3)
Plaintiffs Complaints satisfy the pleading standard.
B. The Patents
The ‘789 Patent entitled “CONTAINER MONITORING SYSTEM AND METHOD”,
was filed on August 28, 1995 and was issued on January27, 1998. The abstract to the ‘789
A container monitoring system and method tracks location and load
status of shipping containers within a defined premises and generates container
status reports for customers receiving containers, suppliers or shippers of
goods, and container carriers. Carrier and container identifiers are used to track
and monitor movements and status of each container from a point of departure
to a final destination and return. A combined computer and
telecommunications system is also disclosed for executing the tasks of the
container monitoring system.
The ‘291 Patent entitled “CONTAINER AND INVENTORY MONITORING
METHODS AND SYSTEMS”, was filed on January 26, 1998 and was issued on
November 14, 2000. The application for the ‘291 patent was “related to” the ‘888
application, on which the ‘789 Patent was granted. The abstract to the ‘291 patent
Container and inventory monitoring methods and systems provide
detailed logistical control of containers, shipping racks and resident and intransit inventory. The methods and systems create and maintain accurate real
time records of the location, movement and load status of containers, racks and
inventory within the facility boundaries and between facilities such as
factories, assembly plants, warehouses, shipping yards and freight switching
facilities. Detailed data on container switching, unloading and loading activity
is recorded and archived. A virtual inventory accounting is provided by
tracking from customer release orders to supplier shipments and rack returns.
The following claims are representative of the patents and read as follows:
Claim 1 of the ‘789 patent recites:
1. A container monitoring system for accumulating and storing information on
shipping containers including container location and container load status, the
a receiving area for receiving containers to be monitored by the system,
said receiving area within a defined boundary within which
containers are to be monitored by the system,
a container entry point at the boundary at which containers are identified
by pre-existing identification codes which are recorded at the
container entry point,
a switching vehicle for moving containers to and from a receiving area
and to and from a facility within the boundary according to
instructions received from the facility, and
means for recording information on locations and load status of
containers within the defined boundary.
(‘789 patent at 9:47-65.)
Claim 9 of the ‘789 patent recites:
9. A method for monitoring location and load status of shipping containers
comprising the steps of:
identifying carriers and containers by identification codes at a point of
entry to a facility,
recording identification codes of containers to be monitored,
moving a container from the point of entry to a receiving area and
recording the location of the container within the receiving area,
moving a container from a receiving area via a switching vehicle to a
final destination according to instructions received from the facility and
recording the location of the final destination of the container,
moving the container from the final destination to a receiving area and
recording the receiving area location of the container and the status of a
load in the container.
(‘789 patent at 10:30-45.)
Claim 1 of the ‘291 patent recites:
1. A computerized system for monitoring and recording location and load status
of shipping containers relative to a facility with an associated yard defined by a
boundary within which containers are to be monitored by the system, and a
controlled entry point to the boundary, the system comprising:
means for recording identification codes of containers which enter the
means for communicating and recording information on movements,
location and load status of containers within the boundary in
response to movement and changes in location and load status of
containers made according to instructions received from the
means for generating reports of recorded information on locations and
load status of containers within the boundary, and
means for generating reports on container locations and load status
relative to designated docks associated with a facility.
(‘291 patent at 18:40-59.)
Claim 32 of the ‘291 patent recites:
32. A method of generating a live unload exception report for monitoring
containers intended to be unloaded at a dock of a facility upon arrival at the
facility without being first placed in a yard associated with the facility, but
which were switched at least once before arriving at a dock, the method
comprising the steps of:
(a) identifying live unload containers from information received by an
advance shipping notice,
(b) recording a date and time of arrival of an identified live unload
(c) recording a date and time of contact with the live unload container by
a switcher which flags the container as a live unload exception,
(d) recording a total number of switches of the container before the
container arrives at a dock.
(‘291 patent at 20:52-67.) As the other claims of the Patents are drawn to similar processes, they
suffer from the same infirmity as the representative claims and need not be considered further.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712 (Fed. Cir. 2014). (Hereinafter “Ultramercial
II”). The Federal Circuit has held that an extended claim by claim analysis is not necessary
where multiple claims are “substantially similar and linked to the same abstract idea.” See
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348
(Fed. Cir. 2014); Bilski v. Kappos, US. 130 S. Ct. 3218, 3225, 177 L.Ed.2d 792 (2010),
(determining that eleven (11) claims in a patent application were invalidly abstract after only
analyzing two (2) of the claims in detail); CyberFone Sys., LLC v. Celico Phip, 885 F.Supp.2d
710, 715 (D.Del. 2012) (invalidating all twenty-four (24) claims of a patent for abstractness after
only conducting an analysis of the first claim); and Glory Licensing LLC, 2011 WL 1870591
(dismissing three (3) patents containing 121 claims after analyzing only a single claim of a single
patent in detail). The “basic character of the claimed subject matter” in dispute in this action is
clearly evident to the Court and no further construction of the claims is required.
C. Patent Eligibility at the Pleading Stage
Courts may properly decide the question of patent eligibility at the pleading stage and
without first construing the claim terms. “[C]laim construction is not an inviolable prerequisite to
a validity determination under
§ 101.” Bancorp Servs.,
L.L. C. v. Sun Life Assur. Co. of Canada
(U.S.), 687 F.3d 1266, 1273. (Fed.Cir.2012). Where appropriate, district courts have adjudicated
subject matter eligibility before claim construction. See, e.g., See Bilski, U.S., 130 S.Ct. 3218,
177 L.Ed.2d 792; CyberFone, 885 F.Supp.2d at 715; Glory Licensing LLC v. Toys R Us, Inc.,
No. 09—4252(FSH), 2011 WL 1870591 (D.N.J. May 16, 2011), appeal dismissed, 459 F. App’x
916 (Fed.Cir.201 1); DietGoal Innovations LLC v. Bravo Media LLC, Civ. 13-8391, F.Supp.2d,
2014 WL 3582914, at *16 (S.D.N.Y. July 8, 2014) (“the computerized process disclosed in the
‘516 Patent is invalid under
§ 101, under any reasonable construction. Claim construction would
not assist the Court in resolving the
§ 101 claim of invalidity”); Sinclair—Allison, Inc.
Ave. Physician Servs., LLC, Civ. 12—360--M, 2012 WL 6629561, at *2 (W.D.Okla. Dec. 19,
2012). aff’d, 530 F. App’x 939 (Fed.Cir.2013) (“there is no requirement that claims construction
be completed before examining patentability”). Plaintiff admits that the Court may decide this
issue at the pleadings stage. See Plaintiff’s sur-reply at 4, n. 1 (“WMI does not dispute that the
Court has the power to rule on this issue at this early stage is not in dispute [sic]; the issue at
hand is whether it is appropriate to do so.”)
Courts have indeed dismissed patent suits on the pleadings because the patents were
§ 101. See, e.g., Lumen View Tech. LLCv. Findthebest.com, Inc., 984 F.Supp.2d
189, 205 (S.D.N.Y.2013) (granting judgment on the pleadings because “[t]he claimed process
elements of Claim 1 are straightforward. No components are opaque such that claim construction
would be necessary to flush out its contours”); Cardpool, Inc. v. Plastic Jungle, Inc., Civ. 12—
04182, 2013 WL 245026, *3 (N.D.Cal. Jan. 22, 2013) (“[t]here is no authority for the
proposition that a patent may not be deemed ineligible subject matter on a motion to dismiss”);
OIP Technologies, Inc.i v, Amazon.com, Inc., C—12—1233, 2012 WL 3985118, at *5 (N.D.Cal.
Sept. 11, 2012) (“the procedural posture of this case does not render Amazon’s [1 2(b)(6)]
Patentability is a question of law “that may be informed by subsidiary factual issues.”
CyberFone 885 F.Supp.2d 710, 715 (D.Del.2012) (citing In re Comiskey, 554 F.3d 967, 976
(Fed.Cir.2009)). There are no disputed facts that need to be resolved to decide this issue, which
is question of law. Although Plaintiff states that at least some claim construction is required,
even if the Court construes all claim terms in a manner most favorable to Plaintiff, it would still
find that none of the claims survive § 101.
D. Defendant’s Burden
“A patent shall be presumed valid
The burden of establishing invalidity of a patent or
any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C.
§ 282(a). Plaintiff
argues that Defendants must prove subject matter ineligibility using a “clear and convincing”
standard, relying on Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1342 (Fed.
Cir. 2013) cert.
granted, judgment vacated sub nom. (“Ultramercial I”). Defendants then properly identified that
Ultramercial, has since been vacated by the Supreme Court, and the Federal circuit’s majority
did not re-address this standard. However, in his concurring opinion Judge Mayer stated:
The rationale for the presumption of validity is that the United States
Patent and Trademark Office (“PTO”), “in its expertise, has approved the
claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 426, 127 S.Ct. 1727,
167 L.Ed.2d 705 (2007). That rationale, however, is “much diminished” in
situations in which the PTO has not properly considered an issue. Id.
Because the PTO has for many years applied an insufficiently rigorous
subject matter eligibility standard, no presumption of eligibility should
attach when assessing whether claims meet the demands of section 101.
Although the Supreme Court has taken up several section 101 cases in
recent years, it has never mentioned—much less applied—any presumption
of eligibility. The reasonable inference, therefore, is that while a
presumption of validity attaches in many contexts, see Microsoft Corp. v.
i4i Ltd. P’ship, U.S. 131 S.Ct. 2238, 2243—47, 180 L.Ed.2d 131 (2011), no
equivalent presumption of eligibility applies in the section 101 calculus.
Ultramercia II, F.3d 709, 720-21 (Fed. Cir. 2014). With no authoritative law binding the Court
as to an applicable standard, the Court adopts Judge Mayer’s approach and will not afford
Plaintiff’s Patents the presumption of subject matter eligibility.
While the patent may be presumed valid as required by 35 U.S.C.
§ 282(a), its subject
matter will not be afforded a presumption of eligibility at this stage of the litigation. The Court is
cognizant that “claim construction is not an inviolable prerequisite to a validity determination
§ 101” but “will ordinarily be desirable—and often necessary—to resolve claim
construction disputes prior to a
§ 101 analysis, for the determination of patent eligibility requires
a full understanding of the basic character of the claimed subject matter.” Bancorp Servs., L.L. C.
(U.S.), 687 F.3d 1273—74. However, for the Court to apply a “clear and convincing” standard as
to subject matter eligibility at the motion to dismiss stage, the Court would effectively create a
near impossible threshold for a defendant to clear when assessing a patent’s subject matter under
the test articulated by Alice. Judge Mayer noted, “[fjrom a practical perspective, addressing
section 101 at the outset of litigation will... conserve scarce judicial resources,” as well as,
provide a deterrent “against vexatious infringement suits.” Ultramercial 11 at 719. By imposing a
“clear and convincing” standard, the practical effects of addressing section 101 at the outset of
litigation would be defeated by a Plaintiff who merely asserts that the court should differentiate
any claim in the patent at issue from a representative claim proposed by the Defendant. “Failure
to recite statutory subject matter is the sort of “basic deficiency,” that can, and should, “be
exposed at the point of minimum expenditure of time and money by the parties and the court[.j”
Id. (citing Bell At!. Corp. v. Twombly, 550 U.S. 544, 558, 127 S.Ct. 1955, 167 L.Ed.2d 929
(2007)). With that legal framework at hand, the Court now turns its analysis to Plaintiff’s patents
under the purview of Alice and Mayo.
§ 101 states: “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 therefore, subject to the conditions and requirements of this title.” The
statute is to be given a “wide scope.” Bilski, U.S. 130 S.Ct. 3218, 3225, 177 L.Ed.2d 792 (2010)
(quoting Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980)).
The Supreme Court has delineated three exceptions to Section 101’s “broad patent-eligibility
principles: ‘laws of nature, physical phenomena, and abstract ideas.’ “Id. (quoting Chakrabarty,
447 U.S. at 309).
The abstract-idea exception precludes patents that “would pre-empt use of [a particular]
approach in all fields, and would effectively grant a monopoly over an abstract idea.” Bilski, 130
S.Ct. 3218, 3231 (2010). For example, “[a] mathematical formula as such is not accorded the
protection of our patent laws, and this principle cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment.” Diamond v. Diehr, 450 U.S.
175, 184, 101 S. Ct. 1048, 1055, 67 L. Ed. 2d 155 (1981) (citations omitted). “Similarly,
insignificant post-solution activity will not transform an unpatentable principle into a patenta
process.” Id. at 19 1—92. “[M]ethods which can be performed mentally, or which are the
equivalent of human mental work, are unpatentable abstract ideas
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed.Cir.2011). By contrast, “an application of a law
of nature or mathematical formula to a known structure or process may well be deserving of
patent protection.” Diehr, 450 U.S. at 1057. (emphasis in original).
The Supreme Court most recently examined the abstract-idea exception in Alice Corp.
Pty, Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), particularly as that exception applies to
computer-implemented schemes, and clarified the test that courts must apply. The Supreme
Court identified a two-part analysis for distinguishing patents that claim abstract ideas from
those that claim patent-eligible applications of abstract ideas. In Alice, the Supreme Court
identified a “framework for distinguishing patents that claim laws of nature, natural phenom
and abstract ideas from those that claim patent-eligible applications of those concep
ts.” Id. at
2355 (citing Mayo, 132 S.Ct. at 1296—97). “First, we determine whether the claims at issue
directed to one of those patent-ineligible concepts.” Id. If not, the claims pass muster under
101. Then, in the second step, if we determine that the claims at issue are directed to one of those
patent-ineligible concepts, we must determine whether the claims contain “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 conceptj itself.’ “Id. (quoting Mayo, 132
S.Ct. at 1294)
Defendants argue that Plaintiffs patents are, on their face, invalid as a matter of law
under 35 U.S.C.
§ 101. Defendants move to dismiss Plaintiffs Complaints because, Defendants
contend, the Patents Plaintiff is asserting against Defendants are directed to abstract ideas, which
are ineligible for protection under Section 101. Defendants contend that the subject matter of the
‘789 patent and the ‘291 patents represent precisely the kind of abstract ideas to which 101,
along with the relevant case law, apply to ensure that such ideas remain in the public domain.
Defendants state that the claims within the patents themselves are linked to the same underlying
abstract idea: monitoring locations, movements, and load status of shipping containers within a
container receiving yard, and storing, reporting and communicating this information in various
forms. Defendants stress that the claims are limited to general steps and means for recording
information that could be carried out by human memory, by hand, or by general purpose
computer and printing resources.
Defendants point out that in Claims 9 to 19 of the ‘789 Patent and Claims 21 to 35 of the
‘291 Parent, the claims include no field of use limitations requiring the use of a computer or
device at all. Defendants assert that the subject matter of the claims could be performed with
wholly human skill and human memory or by the use of a pencil and paper. Defendants argue
that the claims in Plaintiff’s patents are anticipatory of vast areas of ordinary shipping, container
monitoring, and information management that have long been part of the public domain.
Moreover, Defendants state that Plaintiff’s patents do not include any additional features
that qualify as “inventive concepts” sufficient to “transform the claim abstract idea into a patent
eligible application.” Defendants note that although several of the claims recite specific elements
that implement the abstract idea, they point out that elements that merely require generic
computer implementation and provide no additional, inventive, transformative concept are not
sufficient to confer patent eligibility.
Plaintiff responds to Defendants’ arguments by stating that it would be premature for the
Court to invalidate Plaintiff’s patent at the pleading stage. Plaintiff cites case law for the
proposition that dismissals for lack of eligible subject matter should be the exception, not the
rule. Plaintiff states that claim construction may be necessary for the Court to invalidate the
patents, and the accompanying material to conduct proper claim construction is not before the
Court at this time. Plaintiff argues that the Patents-in-suit arguably include several “means-plus
function” claims, which requires the Court to study the Patent’s specification and prosecution
history. Plaintiff asserts that this is a necessary exercise before deciding the present 101 issue.
Plaintiff argues that while Defendants ask the Court to rule that every single claim of
each patent is invalid, Defendants do not provide analysis for each claim for the Court to
consider. Instead, Plaintiff contends, Defendants summarily conclude that the “claims are
substantially similar” but offer no explanation of how they are purportedly similar, beyond
referencing Defendants’ misleading chart titled, “description of coverage” of the claims. Plaintiff
argues that Defendant’s attempt to generalize the patents and failure to consider each and every
claim is a failure to meet their burden of clear and convincing proof. Moreover, Plaintiff asserts
that the method claims in the patents are not simply mental processes, but rather that plausible
constructions exist which show that steps in the Patents’ claims require machines.
We agree with Defendants that claims of the ‘789 and the ‘291 Patents are directed to the
same abstract idea: monitoring locations, movement, and load status of shipping containers
within a container-receiving yard, and storing, reporting and communicating this information in
various forms through generic computer functions. Plaintiff’s arguments that the patent claims
are not abstract because they require physical steps and include the use of tangible components is
beside the point; the claims merely recite the abstract idea of monitoring the location and load
status of containers in a yard. See Alice, 134. S. Ct. 2347, 2358 (2014) (“The fact that a computer
necessarily exist[sj in the physical, rather than purely conceptual, realm.. .is beside the point.”)
We first examine the claims because the claims are the definition of what a patent is
intended to cover. An examination of the claim limitations of the ‘789 patent show that claim I
includes a system for monitoring shipping containers. Without purporting to construe the claim,
the claim recites the bounds of the area in which the containers are monitored, recorded and
means by which they are moved. Plaintiff argues that claim 1 is not limited to the idea of
monitoring containers in the abstract, but rather it specifies details of how the monitoring is
done, including the use of tangible components. Plaintiff further points to the use a physical
“entry point” and the use of “switching vehicles” reflect that the monitoring takes place in
concrete, real world application, not as an abstract idea. Moreover, Plaintiff states that the
arguably contains a means-plus-function term (“means for recording”) which includes
physical structures used to carry out the function of recording information, such as data input
terminals at the entry point, switching vehicles, optical scanners, a mainframe computer
a database, and any required network connections. Despite Plaintiff’s contentions, the Alice court
There is no dispute that a computer is a tangible system (in 101
terms, a “machine”), or that many computer-implemented claims are formally
addressed to patent-eligible subject matter. But if that were the end of the
101 inquiry, an applicant could claim any principle of the physical or social
sciences by reciting a computer system configured to implement the relevant
concept. Such a result would make the determination of patent eligibility
“depend simply on the draftsman’s art,” Flook, supra, at 593, 98 S.Ct. 2522,
thereby eviscerating the rule that” ‘[Ijaws of nature, natural phenomena, and
abstract ideas are not patentable,’ “Myriad, 569 U.S. 133 S.Ct., at 2116.
Alice at 2358-59. Although Plaintiff is correct that claim incorporates tangible components into
the monitoring system, this is not enough for the system to become patent-eligible subject matter.
See Ultramercial 11772 F.3d 709, 715 (Fed. Cir. 2014) (“Although certain additional limitations,
such as consulting an activity log, add a degree of particularity, the concept embodied by the
majority of the limitations describes only [an] abstract idea...”) Despite Plaintiff’s contentions,
Claim 1 articulates nothing more than the process of monitoring, recording, sorting,
communicating, and generating information regarding shipping containers in a shipping yard.
These are all abstract ideas themselves.
A further examination of the ‘789 patent shows that claim 9 includes 5 steps for
monitoring the location and load status of shipping containers. Without purporting to construe
the claims, the steps include: (1) identifying the carriers and containers by an ID code;
recording the ID code of the monitored container; (3) moving and recording the movem
ent of the
container from a storage area to a receiving area; (4) moving the container from the receivi
area to a vehicle to the final destination and recording the relevant information; and
the container from the final destination to receiving area and recording the relevan
(‘789 patent at 10:30-45.)
This ordered combination of steps recites an abstraction—an idea, having no particular
concrete or tangible form; the process of monitoring and moving shipping containers and
collecting the relevant data as to the location of the shipping containers. Plaintiff argues
because this claim covers a method of “moving” containers, as well “monitoring” them
they have to be moved, this does not constitute a mental process and does not fit into
any of the
judicial exceptions to § 101. However, the Federal circuit has articulated that the mere
of a physical step to collect data will not render a claim patent eligible. In re Grams
, 888 F.2d
835, 840 (Fed. Cir. 1989); Bilski, 561 U.S. 593, 611(2010). Here, Claim 9 is reflect
more that the abstract process of monitoring and moving shipping containers and
relevant data as to the location of the shipping containers.
An examination of the claim limitations of the ‘291 patent shows that claim 1 includ
computerized system for monitoring and recording location and load status of
containers relative to a facility. Without purporting to construe the claim, the claim
the system comprises the means for recording the identification codes of the
communicating the movements of the containers, and generating reports of the
information regarding the containers. While Plaintiff argues that the claim
is not abstract because
it includes the use of tangible components, the Court has already noted that
an abstract idea is not
rendered patentable just because of connections to the physical world. Alice,
134 S. Ct. at 2358.
It is apparent to the Court that this claim is limited to general steps and
means for monitoring,
recording, sorting, communicating and generating location and load status
could be carried out by human memory, by hand, or by conventional equipm
ent and general
purpose computer and printer resources. CyberSource, 654 F.3d at 1372.
Finally, a further examination of the ‘291 patent shows that claim 32 includes steps for
generating a report for monitoring containers to be unloaded without first being placed in a yard
at the container facility. Without purporting to construe the claims, the steps include: (1)
identifying the containers to be unloaded; (2) recording the date and time of the arrival of the
container; (3) recording the date and time of contact with a switching vehicle; and (4) record
the total number of times a container has been switched before arriving at the dock. (‘291 patent
This ordered combination of steps recites an abstraction—an idea, having no particular
concrete or tangible form; the process of inputting data in a computer for the purpose of
generating a report regarding container without first being placed in a yard at the contain
facility. As previously noted, while Plaintiff argues that the claim is not abstract because it
includes the use of tangible components, such as a mainframe computer, the Court has already
noted that an abstract idea is not rendered patentable just because of connections to the physic
world. Alice, 134 S. Ct. at 2358. Moreover, the Federal circuit has articulated that the mere
presence of a physical step, such as inputting information into a computer, to collect data,
not render a claim patent eligible. In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989); Bilski,
U.S. 593, 611(2010). Here, Claim 32 recites nothing more than the abstract process of inputti
data in a computer for the purpose of generating a report regarding container without first
placed in a yard at the container facility.
The second step in the analysis requires us to determine whether the claims do
significantly more than simply describe that abstract method. Mayo, 132 S.Ct. at
1297. We must
examine the limitations of the claims to determine whether the claims contain an
concept” to “transform” the claimed abstract idea into patent-eligible subject matter
. Alice, 134
S.Ct. at 2357 (quoting Mayo, 132 S.Ct. at 1294, 1298). The transformation of an abstrac idea
into patent-eligible subject matter “requires more than simply stat[ing] the [abstract idea] while
adding the words ‘apply it.’ “Id. (quoting Mayo, 132 S.Ct. at 1294) (alterations in original).
claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim
more than a drafting effort designed to monopolize the [abstract idea].’ “Id. (quoting Mayo, 132
S.Ct. at 1297) (alterations in original). Those “additional features” must be more than “wellunderstood, routine, conventional activity.” Mayo, 132 S.Ct. at 1298.
We conclude that the limitations of the ‘291 and the ‘789 patents do not transform the
abstract idea they recite into patent-eligible subject matter because the claims simply instruc
practitioner to implement the abstract idea with routine, conventional activity. Ultramercial
715. None of the 5 steps in claim 9 of the ‘789 patent or the 4 steps in claim 32 of the ‘291
patent, viewed “both individually and ‘as an ordered combination,’ “transform the nature of
claim into patent-eligible subject matter. See Alice, 134 S.Ct. at 2355 (quoting Mayo, 132
1297, 1298). The majority of these steps comprise the abstract ideas of the process of monito
and moving shipping containers and collecting the relevant data as to the location of
containers, and the process of inputting data in a computer for the purpose of genera
ting a report
regarding container without first being placed in a yard at the container facility, respec
Adding routine steps of recording, identifying, and communicating the ID code
of a particular
container, or moving the container from the receiving area to a vehicle does not
otherwise abstract idea into patent-eligible subject matter. Instead, the claimed sequen
ce of steps
comprises only “conventional steps, specified at a high level of generality,” which
to supply an “inventive concept.” Id. at 2357 (quoting Mayo, 132 S.Ct. at 1294,
Indeed, the steps of monitoring, recording, and inputting information represe
“data-gathering steps,” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
(Fed.Cir.201 1), and thus add nothing of practical significance to the underlying abstrac
The claims’ invocation of a computer also adds no inventive concept. While the Suprem
Court has held that the machine-or-transformation test is not the sole test govern
analyses, Bilski, 561 U.S. at 604, 130 S.Ct. 3218, that test can provide a “usefu
l clue” in the
second step of the Alice framework, see Bancorp Servs., L.L.C. v. Sun Lfe Assura
nce Co. of
Can., 687 F.3d 1266, 1278 (Fed.Cir.2012) (holding that the machine-or-transform
remains an important clue in determining whether some inventions are proces
cert. denied, 573 U.S.
134 S.Ct. 2870, 189 L.Ed.2d 832 (2014). A claimed process can be
§ 101 if: “(1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing.” In re Bilski, 545
F.3d 943, 954
(Fed.Cir,2008) (en bane), affd on other grounds, Bilski, 561 U.S. 593, 130 S.Ct.
The claims of the ‘789 and ‘291 patents, however, are not tied to any particu
machine or apparatus, only a general purpose computer, general communicatio
n devices, and
general vehicles. As the Supreme Court has previously held, adding a compu
ter to otherwise
conventional steps does not make an invention patent-eligible. Alice, 134 S.Ct.
at 2357. Any
transformation from the use of computers or the transfer of content betwee
n computers is merely
what computers do and does not change the analysis. Moreover, storing and
information in a database based upon that information, is one of the most
basic function of a
database system. Id. at 2359. (“[E]lectronic recordkeeping” is “one of the
most basic functions of
a computer.”) Although several claims recite specific system elements,
these elements merely
require generic computer functions that are not inventive.
The claims of the ‘789 and ‘291 patents also fail to satisfy the transformation prong of the
machine-or-transformation test. The methods as claimed refer to a system for monito
shipping containers and a computerized system for monitoring and recording locatio
n and load
status of shipping containers relative to a facility. These ordered steps for record
ing and inputting
relevant information as to shipping containers cannot meet the test because they
are not physical
objects or substances, and they are not representative of physical objects or substa
545 F,3d at 963. Nowhere does the patents tie the claims to a novel machine.
We therefore hold
that the claims of the ‘789 and ‘291 patents do not transform any article to differe
nt state or
thing. While this test is not conclusive, it is a further reason why the claims of
the ‘789 and ‘291
patents do not contain anything more than conventional steps relating to monito
and inputting relevant information as to shipping containers at a container facility
. Therefore, the
Court holds that the ‘789 and ‘291 patens do not cover patent-eligible subjec
Because the ‘789 and ‘291 patent claims are directed to no more than a patentineligible
abstract idea, we GRANT Defendant Maher Terminals, LLC and Defend
ant Global Terminal &
Container Services, LLC’s motions to dismiss.
An appropriate order accompanies this Opinion.
In the alternative, the Court would most likely fmd that Plaintiff’s
Complaints satisfy the Twombly and Iqbal
pleading standard. The fact that Plaintiff filed nearly identical compla
ints in other districts against other parties does
not necessarily mean these Complaints fail to comply with Iqbal
and Twombly. Plaintiffs Complaints sufficiently
identify the accused product. Plaintiff is not required to identif
y the accused product by trade name; rather,
identification of the product category is sufficient. Defendants’
motions seek to dismiss Plaintiffs indirect
infringement claims in its Complaints, but Plaintiff does not allege
indirect infringement claims in its Complaints,
(though they reserved their right in the future). Even if the Court finds
that Plaintiffs Complaints are deficient, it
would most likely grant Plaintiff leave to amend.
Date: Apri1, 2015
bnites States District Judge
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