Tranxition, Inc. v. Lenovo (United States) Inc.
Filing
294
OPINION & ORDER: Lenovo's motion for partial summary judgment 229 and motion for summary judgment 234 are granted. All other outstanding motions are denied as moot. See 31-page opinion & order attached. Signed on 7/9/2015 by Judge Marco A. Hernandez. (mr)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
TRANXITION, INC.,
a Delaware corporation,
No. 3:12-cv-01065-HZ
Plaintiff,
OPINION & ORDER
v.
LENOVO (UNITED STATES) INC.,
a Delaware corporation,
Defendant.
Arthur S. Beeman
Joel T. Muchmore
Arent Fox LLP
55 Second St., 21st Floor
San Francisco, CA 94105
Dayna J. Christian
Nicholas M.M. Drum
Immix Law Group
121 SW Salmon St., Ste. 1000
Portland, OR 97204
Attorneys for Plaintiff
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Eric J. Klein
Todd E. Landis
Akin Gump Strauss Hauer & Feld LLP
1700 Pacific Ave., Ste. 4100
Dallas, TX 75201
Fred I. Williams
Akin Gump Strauss Hauer & Feld LLP
600 Congress Ave., Ste. 1350
Austin, TX 78701
Kenneth L. Walhood
Blunck & Walhood LLC
2350 Willamette Falls Dr.
West Linn, OR 97068
Attorneys for Defendant
HERNÁNDEZ, District Judge:
Plaintiff Tranxition, Inc. owns U.S. Patent Nos. 6,728,877 (the “ ‘877 patent”) and
7,346,766 (the “ ‘766 patent”). The claims generally recite a software method for transferring
customized user settings from an old computer to a new computer. Tranxition filed the present
infringement action against Defendant Lenovo (United States) Inc. and a separate action against
Novell, Inc. that is also before this Court (Case No. 3:12-cv-01404-HZ). The parties in the
Novell case have agreed to allow the merits of this case to proceed first.
Currently before the Court are two motions from Lenovo seeking summary judgment of
invalidity under Section 101 of the Patent Act. Lenovo’s motion for partial summary judgment
[229] attacks one specific claim in the ‘877 patent, while Lenovo’s motion for summary
judgment [234] is broader in scope, as it attacks all of the remaining independent claims in both
of Tranxition’s patents-in-suit.
For reasons explained below, the Court finds that Tranxition’s patents are aimed at a
patent-ineligible abstract idea. Neither of the patent’s claims, whether read singly or in
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combination, state an inventive concept sufficient to satisfy the Supreme Court’s test for
patentability of an abstract idea under Section 101 of the Patent Act. Therefore, Lenovo’s
motions for summary judgment are granted, and Tranxition’s ‘877 and ‘766 patents are invalid.
BACKGROUND
The patents at issue recite the same concept: “a method and system for automatic
transitioning of configuration settings among computer systems.” ‘877 patent, col. 1, ll. 18–21. 1
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Tranxition calls this “the migration process.” ‘877 patent, col. 1, ll. 6–7. “In today’s world,” the
patents explain, “technology changes very quickly, [and] it is very common to replace an old
computer system every few years with a new computing system.” ‘877 patent, col. 1, ll. 24–26.
A major problem with this change-over is that computer users often spend significant time
customizing the settings on their old computers, and would like to transfer many of those settings
to their new computers. The transferred settings could be simple, such as a custom desktop
wallpaper, or sophisticated, such as network settings. ‘877 patent, col. 1, ll. 36–47. As the
complexity of computers grows, the number of possible configuration settings and the places
they might be located increases. It can take significant time and effort to find the old settings,
identify where on the new system those settings are located, and then change the new system to
match the old one. ‘877 patent, col. 1, ll. 48–62. The patents claim that “[m]any users often
decide to stick with an obsolete old computer system rather than wrestle migration and manual
reconfiguration required for a new computer system.” ‘877 patent, col. 2, ll. 9–13. And, like any
human process, this “transitioning” of settings from one system to the other is “prone to errors
that lead to user frustration.” ‘877 patent, col. 2, ll. 19–21.
1
The two patents share a history—the ‘766 patent is a continuation of the patent application that later
became the ‘877 patent—and the same title, abstract, and specification. For background purposes, the
Court cites only to the ‘877 patent, and refers the reader to the same columns and lines of the ‘766 patent
without a duplicate parallel citation.
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The patents aim to address this problem by “automatically determin[ing] configuration
settings customized by a user or network administrator on a[n] old computer system,” and
providing “an automatic migration of configuration settings from an old computer system to a
new computing system without using a time consuming manual migration process.” ‘877 patent,
col. 2, ll. 38–44.
The method and system claims that make up the patents describe how the invention
achieves automatic migration. First, it identifies the various configuration settings, which include
Internet browser settings, a desktop “look and feel,” user preferences, e-mail address books,
folder names and locations, passwords, registry settings, and more. ‘877 patent, col. 17, ll. 65–
67; col. 18, ll. 1–23. It then identifies the locations of these various settings, and allows the user
to select the settings he or she would like to transfer to the new computer. ‘766 patent, col. 17, ll.
56–62. Next, the invention retrieves the chosen settings, and completes the personality transfer
by “manipulating” and “transitioning” the configuration settings to the new computer system.
‘877 patent, col. 17, ll. 55–62; ‘766 patent, col. 17, ll. 63–67; col. 18, ll. 1–3.
Between the ‘877 patent and the ‘766 patent, there are five independent claims that
describe the invention’s technological concepts—Claims 1, 16, and 30 of the ‘877 patent, and
Claims 1 and 42 of the ‘766 patent. The remaining claims that are the subject of Lenovo’s
motions and this Opinion & Order are dependent, either directly or indirectly, of those claims.
Plaintiff’s Response to Defendant’s Motion for Summary Judgment II (“Pl. Resp. II”), ECF No.
250, at 4–5.
In total, Lenovo asks for summary judgment of invalidity on claims 1–12, 15–26, 29, and
30 of the ‘877 patent, and claims 1–3, 5–11, 15, and 42–44 of the ‘766 patent. Lenovo moved
separately for summary judgment of invalidity against Claim 30 of the ‘877 patent, see
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Defendant’s Motion for Summary Judgment (“Def. Mot. I”), ECF No. 229, and against the other
claims (hereinafter the “Primary Claims”). See Defendant’s Motion for Summary Judgment
(“Def. Mot. II”), ECF No. 234. Lenovo’s asserted grounds for invalidity are the same, however,
against both the Primary Claims and Claim 30. Lenovo argues that the claims are unpatentable
under Section 101 of the Patent Act because they are directed at an abstract idea and they do not
contain an “inventive concept sufficient to transform the claimed abstract idea into a patenteligible subject matter.” Def. Mot. II at 1 (quoting Alice Corp. Pty. Ltd. v. CLS Bank, Int’l, 134
S. Ct. 2347, 2357 (2014)). Tranxition contends that the patents disclose a “computer-based
solution to a uniquely computer problem,” which is either not abstract, or is sufficiently
inventive to be worthy of patent protection. Pl. Resp. II at 1–2.
Since the law governing the two motions is the same, this Opinion & Order resolves both
of Lenovo’s motions.
STANDARDS
Summary judgment is appropriate if there is no genuine dispute as to any material fact
and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The
moving party bears the initial responsibility of informing the court of the basis of its motion, and
identifying those portions of “ ‘the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any,’ which it believes demonstrate the
absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)
(quoting Fed. R. Civ. P. 56(c)).
Once the moving party meets its initial burden of demonstrating the absence of a genuine
issue of material fact, the burden shifts to the nonmoving party to present “specific facts”
showing a “genuine issue for trial.” Fed. Trade Comm’n v. Stefanchik, 559 F.3d 924, 927–28
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(9th Cir. 2009) (internal quotation marks omitted). The nonmoving party must go beyond the
pleadings and designate facts showing an issue for trial. Bias v. Moynihan, 508 F.3d 1212, 1218
(9th Cir. 2007) (citing Celotex, 477 U.S. at 324).
The substantive law governing a claim determines whether a fact is material. Suever v.
Connell, 579 F.3d 1047, 1056 (9th Cir. 2009). The court draws inferences from the facts in the
light most favorable to the nonmoving party. Earl v. Nielsen Media Research, Inc., 658 F.3d
1108, 1112 (9th Cir. 2011).
DISCUSSION
1. Applicable Law
Section 101 of the Patent Act is the starting point for patentability, and provides that
“[w]hoever 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. From this sweeping
statute, the Supreme Court has carved out as not patentable three broad subjects: “laws of nature,
natural phenomena, and abstract ideas.” Bilski v. Kappos, 561 U.S. 593, 601 (2010) (quoting
Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). Allowing patents over these “basic tools of
scientific and technological work” would impede, not promote innovation. Alice,134 S. Ct. at
2354 (quotation marks omitted); see also U.S. CONST. ART. I, § 8, cl. 8 (granting Congress the
power to “promote the Progress of Science and useful Arts”). The High Court has “repeatedly
emphasized this . . . concern that patent law not inhibit further discovery by improperly tying up
the future use of these building blocks of human ingenuity.” Alice, 134 S. Ct. at 2354 (quotation
marks omitted).
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But courts must “tread carefully in construing this exclusionary principle lest it swallow
all of patent law” because, “[a]t some level, all inventions embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Id. (citing Mayo, 132 S. Ct. at 1293)
(quotation marks omitted). An invention that involves or invokes an abstract concept can be
patentable, so long as it applies such a concept “to a new and useful end” or integrates these
“building blocks into something more.” Id. (quotation marks omitted).
The Supreme Court in Mayo and Alice set out a two-step analytical framework for
“distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1293–94). First, the court must “determine whether the claims at issue are
directed to one of the patent-ineligible” categories. DDR Holding, LLC v. Hotels.com L.P., 773
F.3d 1245, 1255 (Fed. Cir. 2014) (citing Alice, 134 S. Ct. at 2355). If so, the court then examines
“the elements of each claim—both individually and as an ordered combination—to determine
whether the additional elements transform the nature of the claim into a patent-eligible
application of that abstract idea.” Id. (citing Alice, 134 S. Ct. at 2355). This second step is the
search for an “inventive concept,” or some “element or combination of elements sufficient to
ensure that the claim in practice amounts to ‘significantly more’ that a patent on an ineligible
concept.” Id. (quoting Alice, 134 S. Ct. 2355). A claim that recites an abstract idea must include
“additional features” to ensure “that the [claim] is more than a drafting effort designed to
monopolize” the abstract idea. Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297).
Distinguishing between a patent-eligible claim and an ineligible one can be difficult,
especially in the realm of computer technology and software patents. Id.; see also Intellectual
Ventures II LLC v. JP Morgan Chase & Co., No. 13-cv-3777 (AKH), 2015 WL 1941331 at *5
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(S.D.N.Y. Apr. 28, 2015) (explaining that in analyzing software patents, courts must “be careful
not to mistake a difficulty in conceptualizing an esoteric-but potentially patent-eligible invention
with a patent-ineligible abstraction.”).
2. Presumption of Validity & Evidentiary Standard
Before analyzing the merits of the claims, the Court first addresses Tranxition’s
contention that “a party seeking to invalidate a patent must overcome the strong presumption of
validity with clear and convincing evidence.” Pl. Resp. II at 5 (citing United States Gypsum Co.
v. Nat’l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996)) (additional citations omitted).
Tranxition criticizes Lenovo for only offering “conclusory attorney argument” in support of its
motion, and argues that Lenovo “falls far short of its burden to establish by clear and convincing
evidence that Patents-in-Suit are invalid as abstract.” Pl. Resp. II at 1–2, 34.
Tranxition’s argument fails for two reasons. First, the Federal Circuit has explained that
the presumption of validity is now “unwarranted” when “assessing whether claims meet the
demands of Section 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 720 (Fed. Cir. 2014).
The presumption of patent validity is based on deference to the United States Patent and
Trademark Office’s expertise in approving the claim as patentable. Id. However, in light of
recent Supreme Court decisions in Mayo and Alice that have “unequivocally repudiated the
overly expansive approach to patent eligibility” under Section 101, the Federal Circuit has
explicitly stated that “while the presumption of validity attaches in many contexts, no equivalent
presumption of eligibility applies in the Section 101 calculus.” Id. at 720–21 (citing Microsoft
Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2243–47 (2011)); see also Modern Telecom Sys. LLC
v. Earthlink, Inc., No. SA CV 14-0347-DOC, 2015 WL 1239992, at *7 (C.D. Cal. Mar. 17,
2015) (declining to apply presumption of validity under Section 101); Wireless Media
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Innovations, LLC v. Maher Terminals, LLC, No. CIV.A. 14-7004, 2015 WL 1810378, at *5–6
(D.N.J. Apr. 20, 2015) (same).
Second, the Court fails to see how the “clear and convincing” standard applies to the
validity analysis under Section 101 in this case. The Federal Circuit has held that “any attack on
an issued patent based on a challenge to the eligibility of the subject matter must be proven by
clear and convincing evidence.” CLS Bank Int'l v. Alice Corp. Pty., 717 F.3d 1269, 1304 (Fed.
Cir. 2013) cert. granted, 134 S. Ct. 734 (2013) and aff'd, 134 S. Ct. 2347 (2014). However, the
application of that standard was based on the presumption of validity that previously attached to
patents challenged under Section 101 which, as explained above, is now “unwarranted” in light
of more recent Supreme Court decisions. See id. (“Because we believe the presumption of
validity applies to all challenges to patentability, including those under Section 101 . . . we find
that any attack on an issued patent based on a challenge to the eligibility of the subject matter
must be proven by clear and convincing evidence.”).
Furthermore, recent decisions from the Supreme Court and the Federal Circuit
invalidating patents under Section 101 have not mentioned or applied the “clear and convincing
standard” in analysis. See Alice, 134 S. Ct. at 2359–60; Internet Patents Corp. v. Active
Network, Inc., No. 2014-1048, 2015 WL 3852975, at *2–*6 (Fed. Cir. June 23, 2015); DDR
Holdings, 773 F.3d at 1255–57. Lower courts are split whether the “clear and convincing”
standard applies to eligibility challenges under Section 101. Affinity Labs of Texas, LLC v.
Amazon.Com, Inc., No. 6:15-CV-0029-WSS-JCM, 2015 WL 3757497, at *5 n.4 (W.D. Tex.
June 12, 2015) (collecting cases).
The parties have not raised any factual disputes in this case for the Court to resolve. In
analyzing Lenovo’s motions and Tranxition’s patents, the Court relies on the undisputed historic
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facts set out in the patents themselves, as well as the language of Section 101 and case law
interpreting it. Where the question of invalidity depends “not upon factual disputes, but upon
how the law applies to facts as given,” the clear and convincing evidentiary standard simply does
not come into play. Microsoft Corp., 131 S. Ct. at 2253 (Breyer, J., concurring).
3. Analysis
a. Step One of the Mayo/Alice Test
The first step of the § 101 analysis is to determine “whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355. Given the nature of the
invention at issue in this case, the question is whether the claimed invention is an abstract idea.
“The ‘abstract ideas’ category ‘embodies the longstanding rule that an idea of itself is not
patentable.’ ” Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)) (some quotation marks
omitted). The Supreme Court has not precisely defined the contours of the category, but it at
least includes a “preexisting, fundamental truth . . . about the natural world that has always
existed,” or a “method of organizing human activity” (e.g., a longstanding commercial practice
such as risk hedging). Id. at 2356–57 (citing Bilski, 561 U.S. at 599; Parker v. Flook, 437 U.S.
584, 593 (1978)).
The first step of the Mayo/Alice analysis essentially requires the Court to ask: what are
the claims generally trying to achieve? California Inst. of Tech. v. Hughes Commc'ns Inc., 59 F.
Supp. 3d 974, 993 (C.D. Cal. 2014) (hereinafter “CalTech”); see also Smartflash LLC v. Apple
Inc., No. 6:13CV447-JRG-KNM, 2015 WL 661174, at *8 (E.D. Tex. Feb. 13, 2015) (“The court
must first determine the purposes of the claimed inventions.”). The “Alice step one analysis can
turn on how far a court goes in peeling back a claim’s limitations while trying to divine what the
claim is really directed to,” TriPlay, Inc. v. WhatsApp Inc., No. CV 13-1703-LPS, 2015 WL
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1927696, at *9 (D. Del. Apr. 28, 2015), but the claim’s purpose should be stated at a “reasonably
high level of generality.” Open Text S.A. v. Box, Inc., No. 13-CV-04910-JD, 2015 WL 269036,
at *2 (N.D. Cal. Jan. 20, 2015) (citation omitted); see also Ultramercial, 772 F.3d at 715 (holding
that “the concept. . . describes only the abstract idea of showing an advertisement before
delivering free content” despite presence of other limitations); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(characterizing abstract idea as “1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory” despite claim's recitation of
specific limitations, such as a scanner).
The purpose of the Primary Claims and Claim 30 is to move a user’s custom
configuration settings from one computer to another computer. As explained more fully below,
this “migration” was a fundamental and widely-utilized process that was performed manually at
the time of the invention. Accordingly, the Court finds that both the Primary Claims and Claim
30 are directed at an abstract idea.
Tranxition argues that its invention is more specific than the “abstract idea of transferring
settings,” Pl. Resp. II at 8–9, but if one looks past the dense language in the patents, it is apparent
that the patents describe in very generic and abstract terms the process of transferring settings
between computers. See In re TLI Communications LLC Patent Litigation, 2015 WL 627858 at
*6 (E.D. Va. Feb. 6, 2015) (explaining that “court must be careful to avoid allowing the typically
convoluted language—‘patent-ese’—to obfuscate the general purpose and real essence of
software patent claims.”).
Claim 1 of the ‘877 patent discloses a method for transferring settings between computers
comprising the following steps:
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providing configuration information about configuration settings on the source
computing system, the configuration information including a name and location
of each configuration setting;
generating an extraction plan that identifies configuration settings to be
extracted from the source computing system, the generating including providing
a list of configuration settings known to the source computing system and
including identifying active configuration settings out of the provided list of
configuration settings to be extracted from the source computing system;
extracting the active configuration settings of the extraction plan from the
source computing system, the extracted configuration settings being located using
the provided configuration information;
generating a transition plan that identifies configuration settings to be
transferred from the source computing system to the target computing system,
the generating including providing active configuration settings of the extraction
plan and including identifying from the active configuration settings of the
extraction plan active configuration settings to be transferred from the source
computing system to the target computing; and
for each active configuration setting of the transition plan,
retrieving the extracted configuration settings identified as active
configuration settings of the transition plan; and
transitioning 2 one or more of the retrieved configuration settings from
a format used on the source computing system to a format used on the
target computing system.
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‘877 patent, col. 17, ll. 28–62 (emphasis added).
Contrary to Tranxition’s assertions, there is nothing at all “specific” about claim 1.
Despite its dense language, claim 1 is a sweeping general description of the migration process—
it is devoid of any detail describing how Tranxition’s claimed invention works. In plain terms,
this claim describes the steps any user would take to perform the abstract idea of “migrating”
settings between computers: identify where configuration settings are stored, build a list of
2
At the Markman claim construction hearing, the Court construed “transitioning” as meaning “changing
the arrangement of data.” Transcript of Markman Hearing, ECF No. 166, at 43.
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settings to transfer, fetch the settings from the old computer, and then manipulate the settings to
match the format of the new computer. Claim 1 is the very essence of an “ordered combination
of steps. . . having no particular concrete or tangible form.” Ultramercial, 772 F.3d at 715
(finding the patent’s claimed eleven-step process for “displaying an advertisement in exchange
for access to copyrighted media” recited an abstract idea).
Tranxition argues that its claims “disclose a computer-based solution to a uniquely
computer problem—the migration of a computer’s complex personality from a source computer
to a target computer,” a concept that is “far from a naturally existing abstract concept employed
on a general purpose machine[.]” Pl. Response II at 1. The Supreme Court, Federal Circuit, and
many district courts have often relied on analogies to familiar “real-world” concepts to find that
a software patent embraced an abstract idea. See Alice, 134 S. Ct. at 2356 (finding the patent at
issue embraced the abstract idea of “using a third-party intermediary to mitigate settlement
risk.”); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (holding that the
creation of a third-party transaction guarantee was an abstract idea that was “beyond question of
ancient lineage.”); Ultramercial, 772 F.3d at 715 (“showing an advertisement before delivering
free content.”); DietGoal Innovations, Inc. v. Bravo Media LLC, 33 F. Supp. 3d 271 (S.D.N.Y.
2014) (“meal planning”).
But there is no requirement that the idea be “directed to long-standing, pre-technology,
conventional tasks,” Pl. Resp. II at 11, before it can be found as “abstract” under step one of the
Alice test. See Internet Patents Corp., 2015 WL 3852975 at *5 (Fed. Cir. June 23, 2015) (holding
that the claimed “idea of retaining information in the navigation of online forms” was abstract);
Smartflash LLC, 2015 WL 661174 at *8 (finding that “conditioning and controlling access to
data based on payment [] is abstract and a fundamental building block of the economy in the
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digital age.”); CalTech, 59 F. Supp. 3d 974, 977, 993 (C.D. Cal. 2014) (holding that the general
purpose of the “claims—encoding and decoding data for error correction—[was] abstract”
because the ideas existed before the patents and were well known in the field of binary coding
for modern electronic systems).
Much like the claims at issue in Internet Patents Corp., Smartflash, and CalTech, the
concept of migrating custom settings from an old computer to a new computer existed before
Tranxition’s invention; the patents themselves admit as much. The “Background of the
Invention” section states that, at the time of the invention in 2004, consumers purchased
approximately 80,000,000 computers each year to replace old computers systems. See ‘877
patent, col. 1, ll. 27–30. “When a new computer system is used,” the patents explain, “a user or a
user’s agent typically has to re-configure the new computing system to include configuration
settings that were used on an old computer system. All but the most rudimentary pieces of ‘the
migration process’ are done by hand. This requires many hours of hands-on time[.]” ‘877
patent, col. 2, ll. 2–8. By necessary implication, a significant number of users were manually
migrating settings between an old computer and a new computer. 3 Tranxition’s claimed
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invention is directed at a practice that was well-known, conventional, and routine at the time of
the invention, and is therefore not directed to patent-eligible subject matter. Internet Patents
Corp., 2015 WL 3852975 at *5.
Tranxition argues that the migration process is not a manual one because the “many
hundreds of settings potentially captured and transferred cannot, as a practical matter, be
migrated manually.” Pl. Resp. II at 2. Kelly Mackin, one of the inventors, also opined that “[i]t
3
Furthermore, that passage suggests that at least some of the “rudimentary pieces” of the migration
process were already being completed automatically, which is the primary claimed innovation disclosed
in Tranxition’s patents. Not only was manual migration well-known and widely practiced at the time of
the invention, but arguably automatic migration was as well.
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would be impossible in a practical sense to perform a migration of configuration settings to the
same extent contemplated by the invention . . . ranging from, depending on the system, 70010,000 or more settings.” Mackin Declaration (“Decl.”), ECF No. 238, at ¶ 13. It may be true
that a human could not migrate ten thousand settings by hand, but the asserted claims do not
require that level of complexity. Claim 1 of the ‘877 patent claims only “transitioning one or
more of the retrieved configuration settings.” ‘877 patent, col. 17, ll. 59–62 (emphasis added).
The other independent claims similarly claim only “manipulating at least one of the extracted
configuration settings,” ‘766 patent, col. 17, ll. 66–67 (emphasis added), and “manipulating the
(sic) at least one extracted program configuration setting.” ‘766 patent, col. 21, ll. 3–4 (emphasis
added).
There is no dispute that, prior to the patents, users were engaged in a manual migration
process involving at least one configuration setting—as mentioned above, the background of the
patents explains that at the time of the invention, “[a]ll but the most rudimentary pieces of ‘the
migration process’ are done by hand.” ‘877 patent, col. 2, ll. 6–8. Whatever complexity
Tranxition and Ms. Mackin believes its patents may have envisioned, the patents plainly lay
claim to a simple migration involving only one setting. See Planet Bingo, LLC v. VKGS LLC,
576 F. App’x 1005, 1008 (Fed. Cir. 2014) (rejecting argument that unclaimed complexity could
impart patent eligibility: “At most, the claims require ‘two sets of Bingo numbers,’ ‘a player,’
and ‘a manager.’ . . . [T]he claims fall far short of capturing an invention that necessarily handles
‘thousands, if not millions’ of bingo numbers or players.”).
Dependent Claim 2 of the ‘877 patent is also aimed at an abstract idea. It claims “[t]he
method of claim 1 where the provided configuration information is stored in a personality
object.” At the Markman hearing, the Court construed “personality object” as
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an object-oriented programming object . . . which, one, is not directly associated
with an initialization file; and, two, is not a wizard or other programming module
capable of reading and writing settings containing; three, at least one object with
information about configuration settings; and, four, multiple transition rules for
locating configuration settings.
Transcript of Markman Hearing, ECF No. 166, at 44.
Collecting configuration setting into an “object-oriented programming object” is a
complicated way of describing the abstract idea of collecting computer-readable data into a
group. A “Personality object” is simply the name given to that particular collection of data.
Dependent claims 3 through 10 are different descriptions of the type of information that could be
included in this collection of data. E.g., ‘877 patent, col 18, ll. 65–67 (“The method of claim 2
wherein the personality object includes desktop, network, Internet, mail, and applications
configuration information.”). Again, once one cuts through the “patent-ese,” claims 2 and 3
through 10 describe the abstract idea of collecting and organizing generic data in a computerreadable format. See Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992
(Fed. Cir. 2014) (“the well-known concept of categorical data storage, i.e., the idea of collecting
information in classified form, then separating and transmitting that information according to its
classification, is an abstract idea that is not patent-eligible.”); CyberSource Corp. v. Retail
Decisions, Inc., 645 F.3d 1366, 1375 (Fed. Cir. 2011) (holding that the claimed process to
“manipulate data to organize it in a logical way” was not sufficiently transformative to state a
patent eligible invention).
Claim 11 describes the abstract process of a generic computer installation. ‘877 patent,
col. 18, ll. 23–27 (“The method of claim 1 including providing the transitioned configuration
settings to a target computing system for installation of the configuration settings on the target
computing system.”). Claim 12 actually describes that nothing happens. ‘877 patent, col. 18, ll.
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28–31 (“The method of claim 11 wherein when an application is not installed on the target
computing system, the configuration settings for that application are not installed on the target
computing system.”). Finally, claim 15 is a generic and abstract description of data and data
organization. ‘877 patent, col. 18, ll. 38–41 (“The method of claim 1 wherein the extraction plan
includes an inclusion list of configuration settings to be extracted.”). All of these dependent
claims recite abstract ideas with “no particular concrete or tangible form.” Ultramercial, 772 F.3d
at 715.
The other independent claims fare no better, and the Court finds they are directed at the
same abstract ideas of claim 1 of the ‘877 patent. Claim 16 of the ‘877 patent re-hashes the
identical abstract language of claim 1 for transitioning settings between computers, but adds the
additional abstractions of an unspecified “user interface application,” “an extraction application,”
and a “transition application.” ‘877 patent, col. 18, ll. 42–67; col. 19, ll. 1–3. The dependent
claims of claim 16, including claims 17–26 and 28–29, are identical to the claims dependent of
claim 1 in all material respects and fail for the same reasons. Claim 1 of the ‘766 patent and its
dependent claims describe essentially the same process of the claim 1 of the ‘877 patent with
different generic verbs. ‘766 patent, col. 17, ll. 51–67; col. 18, ll. 1–9 (e.g. “displaying,”
“receiving,” and “storing”). Finally, claim 42 of the ‘766 patent and its dependent claims
describes the same abstract processes as claim 1 of the ‘877 patent and its dependent claims, as
applied to the situation where the operating systems of the two computers are different.
Claim 30 of the ‘877 patent recites a “computer readable medium containing a data
structure” comprised of “information for locating” the various configuration settings that a user
might desire to migrate to a new computer system. ‘877 patent, col. 20, ll. 16–34 (e.g.
“information for locating of user preference that affect the appearance and operation of a basic
17 – OPINION & ORDER
windowed interface”). Whether read alone or in context, claim 30 is directed at the abstract idea
of gathering and organizing data. See Cyberfone, 558 F. App'x at 992 (“the well-known concept
of categorical data storage, i.e., the idea of collecting information in classified form, then
separating and transmitting that information according to its classification, is an abstract idea that
is not patent-eligible.”).
b. Step Two of the Mayo/Alice Test
Having found that both the Primary Claims and Claim 30 are directed at abstract ideas,
the analysis moves to Alice step two. The question here is whether the elements of each claim,
either individually or as an ordered combination, state an “inventive concept” sufficient to
“ensure that the claim in practice amounts to ‘significantly more’ than a patent on an ineligible
concept.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 134 S. Ct. at 2355).
“To transform an unpatentable law of nature into a patent-eligible application of such a
law, one must do more than simply state the law of nature while adding the words ‘apply it.’ ”
Mayo, 132 S. Ct. at 1294. Additional steps consisting of “well-understood, routine, conventional
activity” will not save an otherwise patent ineligible claim. Id. at 1298. “Further, the prohibition
against patenting abstract ideas cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment or adding insignificant postsolution activity.”
Intellectual Ventures II, 2015 WL 1941331 at *5 (quoting Bilski, 561 U.S. at 610–11). “Given
the ubiquity of computers, wholly generic computer implementation is not generally the sort of
‘additional feature’ that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’ ” Alice, 134 S. Ct. at 2358 (quoting
Mayo, 132 S. Ct. at 1297) (internal citation omitted).
18 – OPINION & ORDER
The claims of the ‘877 and ‘766 patents, considered both individually and as an ordered
combination, fail to state an additional feature that transforms the abstract idea of migrating
settings from one computer to another into a patent-eligible invention.
To start, there is little more to claim 1 of the ‘877 patent than the abstract idea itself.
Tranxition insists that claim 1 discloses both meaningful limitations and unconventional steps,
but the Court disagrees. The steps described in claim 1 are nothing more than abstract
descriptions of rudimentary computer operations that add “nothing of practical significance to
the underlying abstract idea.” Ultramercial, 772 F.3d at 716 (citing Cybersouce, 654 F.3d at
1370). For instance, “providing configuration information about configuration settings” is simply
data gathering. Content Extraction, 776 F.3d at 1347 (“The concept of data collection,
recognition, and storage is undisputedly well-known. Indeed, humans have always performed
these functions.”). The step of “generating an extraction plan 4 that identifies configuration
3F
settings to be extracted from the source computing system” essentially describes making a list.
The other claimed limitations such as “extracting,” “retrieving,” and “transitioning” similarly fail
to state an inventive concept. See TLI Communications, 2015 WL 627858 at *12 (explaining
that “extraction of . . . information amounts to manipulating data based on inputs from the user,
which is yet another conventional computer task.”) (citing DietGoal, 33 F. Supp. 3d at 287)
(quotation marks omitted).
The primary problem with this claim is representative of the problem with all of the
claims in Tranxition’s patents at issue here: it is entirely devoid of any detail about how the
invention works. Despite Tranxition’s insistence that its patents disclose “specific application of
concepts for migrating a computer’s personality,” Pl. Resp. II at 8, upon close examination, the
4
At the Markman hearing, the Court construed “extraction plan” as “a plan for extracting configuration
settings that includes a full list of identity units to be located and an exclusion list and an inclusion list.”
Transcript of Markman hearing, ECF No. 166, at 43.
19 – OPINION & ORDER
claims are comprised of little more than synonyms for generic conventional computer processing
steps. Nowhere in Tranxition’s patents is there an “additional feature[e] that provides any
practical assurance” that the method and system it claims to have invented is anything “more
than a drafting effort designed to monopolize the [abstract] idea itself.” Alice, 134 S. Ct. at 2358
(citing Mayo, 132 S. Ct. at 1297) (internal quotation marks omitted). The claimed limitations are
generic conventional computer processing steps stated at a high level of generality, and therefore
do not state an inventive concept. Alice, 134 S. Ct. 2357 (“Simply appending conventional steps,
specified at a high level of generality [is] not enough to supply an inventive concept.”) (citations
and quotation marks omitted).
Tranxition’s oft-repeated argument that it invented a “computer solution to a computer
problem” which is entitled to patent protection is unavailing. See, e.g., Pl. Resp. II at 2, 4, 9, 12–
16. Tranxition relies heavily on DDR Holdings, a Federal Circuit case in which that court upheld
as valid a patent that recited a method to retain website visitors who clicked on a third party
advertisement. DDR Holdings, LLC v. Hotels.com, L.P.,773 F.3d 1245, 1258–59 (Fed. Cir.
2014). The patents described a process where a user clicked an advertisement, but rather than
transporting immediately to the third-party’s webpage, the primary site’s web servers displayed a
hybrid page that maintained the “look and feel” of the main website while simultaneously
displaying information about the advertisement’s subject. Id. 1257–58. The Federal Circuit found
the claims did not “broadly and generically claim ‘use of the Internet’ to perform an abstract
business practice[.]” Id. at 1258. Instead, the claims specified “how interactions with the Internet
are manipulated to yield a desired result—a result that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink.” Id. The invention was
patentable because it was “not merely the routine or conventional use of the Internet,” but was
20 – OPINION & ORDER
instead “necessarily rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” Id. at 1257, 1259.
First, the mere fact that Tranxition’s patents claim to solve a computer technology
problem does not automatically qualify its invention for patent eligibility under DDR Holdings.
See id. at 1258 (“We caution, however, that not all claims purporting to address Internet-centric
challenges are eligible for patent.”).
Second, and more importantly, there is a key difference between Tranxition’s claims to
an automatic migration process and the claims in DDR Holdings. Tranxition’s invention is not
“necessarily rooted in computer technology” in the same sense as a server computer specially
programmed to display a hybrid web page. True, the problem of transferring user settings from
one computer to another did not arise until computers were invented. And true, Tranxition’s
invention necessarily requires a “source computing system” and a “targeting computing system.”
The nature of the process that Tranxition’s invention claims, however, is a human one. As
explained above, the patents themselves explain that migration is a manual process predating the
invention:
Another problem is that there is no easy way to transfer old configuration settings
to a new computing system. When a new computer system is used, a user or a
user’s agent typically has to re-configure the new computing system to
include configuration settings that were used on an old computer system. All
but the most rudimentary pieces of “the migration process” are done by hand.
This requires many hours of hands-on time with lost productivity and a “start
from scratch” resignation.
...
Yet another problem is that configurations settings on an old computing system
may be stored in a new location, in a new file, or in new format on a new
computing system. An old configuration setting may have to be translated or
otherwise modified to provide the same results on the target computing system.
Such translation and/or modifications are typically completed by hand and
are prone to errors that lead to user frustration.
21 – OPINION & ORDER
‘877 patent, col. 2, ll. 1–9, 13–20. The patents then claim to perform the manual migration
“automatically”:
It is . . . desirable to provide an automatic migration of configuration settings
from an old computing system to a new computing system without using a time
consuming manual migration process.
‘877 patent, col. 2, ll. 38–44.
The activity at issue in DDR Holdings, by contrast, could only be performed by a
computer. The process was “necessarily rooted in computer technology” because there is no
manual process that could achieve the same result—there is no way for a person to display a
hybrid website.
There is, however, a way for a human being to manually transfer settings from one
computer to another. First, the user would locate the settings he or she wanted to transfer from
the old computer. Next, he or she would “extract” those settings from the old computer, and then
turn to the new computer and locate where the similar setting is stored there. Finally, the user
would “transition” the old setting to the new system by applying it.
Of course, this is exactly the process described in Tranxition’s patents, except Tranxition
claims to perform the migration “automatically” with a computer. ‘877 patent, col. 2, ll. 38–44;
col. 17, ll. 28–31. Stating a manual process and then claiming to “do it with a computer” is not
an inventive concept that can confer patent eligibility. Alice, 134 S. Ct. at 2358 (holding that the
addition of an “instruction to ‘implemen[t]’ an abstract idea ‘on a computer’ . . . cannot impart
patent eligibility.”); see also DDR Holdings, 773 F.3d at 1259 (explaining that the claims were
patentable because “they do not broadly and generically claim ‘use of the Internet’ to perform” a
long-standing practice).
Tranxition’s patents explain that one of primary problems with the manual migration
process is that it can take a long time. E.g. ‘877 patent, col. 1, ll. 58–61 (“The average user . . .
22 – OPINION & ORDER
may have to spend large amounts of time reading documentation or help screens to figure out
where the configuration settings are stored”); ‘877 patent, col. 2, ll. 6–9 (performing the
migration process “by hand . . . requires many hours of hands-on time with lost productivity”).
The other problem is that the potential complexity of the migration could lead to errors. ‘877
patent, col. 2, ll. 18–20 (“Such translation and/or modifications are typically completed by hand
and are prone to errors that lead to user frustration.”); ‘877 patent, col. 2, ll. 28–31 (“a manual
migration process . . . can decrease quality of service on the new computing system since one or
more configuration settings may be missed . . . and not be transferred”). Thus, the patents
explain, “[i]t is . . . desirable to provide an automatic migration of configuration settings . . .
without using a time consuming manual migration process.” ‘877 patent, col. 2, ll. 41–45.
Using a generic computer to perform a manual task more efficiently and accurately than a
human could is not a patentable idea, and courts have routinely invalidated patents asserting such
claims. See, e.g., MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1267 (Fed. Cir. 2012)
(“While running a particular process on a computer undeniably improves efficiency and
accuracy, cloaking an otherwise abstract idea in the guise of a computer-implemented claim is
insufficient to bring it within section 101.”); E. Coast Sheet Metal Fabricating Corp. v.
Autodesk, Inc., No. 12-CV-517-LM, 2015 WL 226084, at *7 (D.N.H. Jan. 15, 2015) amended in
part, No. 12-CV-517-LM, 2015 WL 925614 (D.N.H. Mar. 3, 2015) (“The lesson of Alice and . . .
other cases . . . is that when the alleged innovation involves the use of a generic computer to do
what such computers typically do, i.e., speed up a process by eliminating the need for human
activity, that innovation is not an invention eligible for patent protection.”); Tenon & Groove,
LLC v. Plusgrade S.E.C., No. CV12-1118-GMS-SRF, 2015 WL 82531, at *5 (D. Del. Jan. 6,
2015) report and recommendation adopted, No. CV 12-1118-GMS-SRF, 2015 WL 1133213 (D.
23 – OPINION & ORDER
Del. Mar. 11, 2015) (“However, the specifications themselves reveal that the processes may be
performed mentally by a human, expressly stating that the inventions “eliminate [ ] manual,
time-consuming processes and replace [ ] those with an efficient, automatic process. . . . The
Federal Circuit has stressed that merely using a computer to perform more efficiently what could
otherwise be accomplished manually does not confer patent-eligibility.”) (citing Bancorp Servs.
LLC v. Sun Life Assur. Co. of Can., 687 F.3d 1266, 1279 (Fed. Cir. 2012) (additional citation
and quotation marks omitted).
The claims dependent on claim 1 similarly fail to disclose an inventive concept. Claim 2
discloses “[t]he method of claim 1 where the provided configuration information is stored in a
personality object.” ‘877 patent, col. 17, ll 63–64. Claims 3 through 10 then disclose the types of
data that could be stored in this “personality object,” including user preferences, email settings,
and application configuration information. ‘877 patent, col. 17, ll. 65–67; col. 18, ll. 1–23. These
claims, when read together, disclose the creation a list of where configuration information can be
found, and grouping that information as a collection of data (i.e., an “object”) that the
programmer can manipulate through software. These claims fail to state an inventive concept
because they merely describe in generic and abstract terms how to perform the first steps in the
manual migration process—locate user settings to transfer and collect that information for later
use—on a computer. Alice, 134 S. Ct. at 2358 (the addition of an “instruction to ‘implemen[t]’
an abstract idea ‘on a computer’ . . . cannot impart patent eligibility.”); CyberSource, 654 F.3d at
1370 (holding the claimed limitation was “mere collection and organization of data,” and was
not sufficient to confer patent eligibility).
The other claims dependent on claim 1 similarly do not provide an inventive concept.
Claim 11 describes a generic installation; claim 12 actually describes a situation where no
24 – OPINION & ORDER
settings are transferred at all; claim 15 is another generic list of “configuration settings to be
extracted.” ‘877 patent, col. 18, ll. 23–41.
Independent claim 16 of the ‘877 patent discloses a “computer system” for implementing
the method claim of claim 1. The language of claim 16 is nearly identical to the language in
claim 1 and recites the same abstract ideas at a high level of generality (e.g. “extracting the
active configuration settings,” “transitions one or more of the retrieved settings”), except that
claim 16 adds “a user interface application,” “an extraction application,” and a “transition
application.” ‘877 patent, col. 18, ll 42–67; col. 19, ll. 1–3. The disclosure of these generic
applications does not add any meaningful, practical limitation to the abstract idea of performing
an existing manual migration process on a computer. Alice, 134 S. Ct. at 2360 (“[T]he system
claims are no different from the method claims in substance. The method claims recite the
abstract idea implemented on a generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.”). The claims dependent on claim
16 are identical in all material respects to the claims dependent on claim 1, and thus they fail to
state an inventive concept for reasons previously explained.
Independent claim 30 of the ‘877 patent recites a “data structure” that contains
“information for locating” the various configuration settings to be transferred. ‘877 patent, col.
20, ll. 16–34. This disclosed activity is, again, nothing more than data gathering and
organization—a wholly conventional and widely-practiced computer function that does not add
an inventive concept. E.g., Content Extraction, 776 F.3d at 1347 (“The concept of data
collection, recognition, and storage is undisputedly well-known.”).
Tranxition offered the declaration of Kelly Mackin in an effort to show an inventive
concept. Ms. Mackin opined that the “Personality object . . . [was] one of the central inventive
25 – OPINION & ORDER
contributions that the ‘877 patent provides. It was unique when the invention was conceived to
use a data structure and the elements in Claim 30 in combination to store and apply information
about locating multiple, disparate, and non-uniform-in-format configuration settings.” Mackin
Declaration (“Decl.”), ECF No. 251, at ¶ 9. She also claims that the “Personality object carries
the critical responsibility of bridging know how (for locating the configuration settings) and the
application’s data engine (the automatic transition system).” Id. at ¶ 8. But there is nothing
unique or inventive about using a “data structure” to organize a collection of information—that is
what a computer does. As cited throughout this Opinion, courts have repeatedly rejected the idea
that merely “organizing” or “manipulating” data on a computer is somehow inventive.
Ms. Mackin’s assertion that the personality object “bridged” the gap between the
information and the software is similarly unhelpful. Like the claims in the patents, it is a broadly
sweeping abstract assertion devoid of any detail explaining how the claimed invention works.
Her declaration is another iteration of the same idea: performing the previously-practiced manual
migration of settings between computers more quickly and efficiently with a computer. That is
not an inventive concept. MySpace, 672 F.3d at 1267 (“While running a particular process on a
computer undeniably improves efficiency and accuracy, cloaking an otherwise abstract idea in
the guise of a computer-implemented claim is insufficient to bring it within section 101.”).
The independent and dependent claims of the ‘766 patent also fail to state an inventive
concept. Claim 1 of the ‘766 patent is essentially the same as claim 1 of the ‘877 patent, except
that the ‘766 patent uses slightly different verbiage, such as “displaying an indication of the
configuration settings that can be extracted,” “receiving a selection,” “manipulating at least one
of the extracted settings,” and “storing the extracted configuration settings.” ‘766 patent, col. 17,
ll. 51–67; col. 18, ll. 1–9 (emphasis added). These are routine, conventional processing steps that
26 – OPINION & ORDER
any generic computer can perform, and are not, therefore, an inventive concept. See
CyberSource, 654 F.3d at 1375 (claims that recited “mere manipulation or reorganization of
data” were not sufficient to confer patent eligibility); TLI Communications, 2015 WL 627858 at
*12 (holding that receiving, extracting, and storing data was conventional computer activity and
not an inventive concept.). Dependent claims 2 and 3 disclose a generic installation, and
dependent claims 5 through 11 simply describe different types of configuration data (e.g. “7. The
method of claim 1 wherein the extracted configuration settings include browser bookmarks”),
and those too fail to state an inventive concept. ‘766 patent, col. 18, ll. 8–14, 15–28, 36–37.
Independent claim 42 describes the migration process using the same generic language as the
other independent claims, but applies the migration to two computers with different operating
systems; its dependent claims 43 and 44 simply describe different types of generic data. Again,
the language in these claims is little more than an exercise in creatively re-naming conventional
computer functions.
Tranxition points to an “exemplary embodiment” and other portions of Ms. Mackin’s
declaration to show more specific and concrete applications of the claimed invention. See Pl.
Resp. II at 8–9, 22; Mackin Decl., at ¶ 10. But the analysis of patent eligibility under Section 101
must focus on the language of the claims themselves, not the additional detail set forth in the
specification, or the inventor’s testimony about the meaning of the patent claims. Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1334 (Fed. Cir. 2012) (“In considering patent eligibility under §
101, one must focus on the claims. This is because a claim may preempt only that which the
claims encompass, not what is disclosed but left unclaimed.”); Howmedica Osteonics Corp. v.
Wright Medical Technology, Inc., 540 F.3d 1337, 1346–47 (Fed. Cir. 2008) (rejecting as
irrelevant inventor testimony regarding the scope of the claim language).
27 – OPINION & ORDER
Tranxition attempts to manufacture an inventive concept by characterizing the “source
computing system” and “target computing system” described in its patents as “special purpose”
computers programmed by its software to perform a specific function. Pl. Resp. II at 18–19
(citing In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994)). There is nothing unique, innovative,
or “special” about these computing systems. The “source” is the computer from which settings
are taken, and the “target” is the computer to which those settings are applied. The systems
themselves are passive in the process; they do not serve any particular purpose, much less a
special one. The “source” and “target” systems are generic computers to which the abstract idea
of migrating settings is applied, and that is not a patentable concept. See Alice, 134 S. Ct. at
2358 (“recitation of a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”). Moreover, if given effect, Tranxition’s argument would essentially
validate every software patent as a matter of course because all software requires computer
implementation. See Intellectual Ventures II, 2015 WL 1941331, at *12 (rejecting same
argument by patent-holder based on Alappat that “programming creates a new machine, because
a general purpose computer in effect becomes a special purpose computer once it is programmed
to perform particular functions pursuant to instructions from program software.”).
c. Preemption Concerns
There is an additional rationale that supports the Court’s determination that Tranxition’s
patents are invalid. Underlying the threshold analysis of patentability under Section 101 is the
need to protect the basic tools of discovery—natural phenomena, mental processes, and abstract
ideas—from monopolization or preemption through patent. See Mayo, 132 S. Ct. at 1293–94,
1301; Alice, 134 S. Ct. at 2354 (stating that “the concern that drives” the exclusion of the
“building blocks of human ingenuity” from patent eligibility is “one of preemption.”); see also
28 – OPINION & ORDER
Tenon & Groove, 2015 WL 1133213, at *4 (explaining that “[t]he focus on preemption goes
hand-in-hand with the inventive concept requirement: they ensure that the patentee is not granted
a disproportionate monopoly over the ‘building blocks of human ingenuity.’ ”) (quoting Alice,
134 S. Ct. at 2354–55).
A patent over Tranxition’s claimed process risks preempting the abstract idea of
migrating settings from one computer to the other. The methods and processes described in
Tranxition’s patents are extraordinarily rudimentary and are stated at such a high level of
generality that they threaten to foreclose any attempt to migrate settings between computers. As
explained previously, the claimed invention only requires a single setting to be “transitioned”
from the old computer to a new computer. In simple terms, Tranxition claims a patent over any
method that locates configuration settings, makes a list of settings to change, and then applies
one of those settings to the new system. The potential preemptive effect is sweeping.
Tranxition’s claims that this is a “computer-only” problem does not alleviate the concern
that the patent essentially seeks to foreclose innovation on an abstract idea in that particular field.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 1:10CV910 LMB/TRJ, 2014 WL 5430956, at
*4 (E.D. Va. Oct. 24, 2014) (“The preemption concern must also be considered in light of the
field to which the patent is directed. If the claimed abstract idea ‘has no substantial practical
application except in connection’ with the particular field claimed, then allowing a claim to that
idea, even if limited to a particular field, ‘would wholly pre-empt’ the idea and ‘in practical
effect would be a patent on the [idea] itself.’ ”) (quoting Gottschalk, 409 U.S. at 71–72).
Tranxition argues that its claimed invention does not present substantial preemption
concerns because the claims “recite specific methods and systems to migrate a computer’s
personality from a source computer to a target computer.” Pl. Resp. II at 33. However, as
29 – OPINION & ORDER
explained throughout this Opinion, the language in Tranxition’s patents is not specific at all; it
describes very basic computer functionality with generic, if somewhat complicated, terminology.
The Court struggles to grasp what other process might be used to transfer settings from one
computer to another, other than Tranxition’s claimed method of identifying the available
settings, choosing what settings to transfer, and then “transitioning” those settings to the other
machine.
The potentially extensive preemptive scope of Tranxition’s patents was demonstrated, at
least in part, during the discovery process in this case. Not only did Tranxition seek information
about Lenovo’s products that were designed to perform the “migration” of settings between
systems, but it also sought to discover information about Lenovo’s “Rescue and Recovery”
product. Pl. Mot. to Compel Discovery Regarding Lenovo’s Infringing Product “Rescue and
Recovery,” ECF No. 248. Rescue and Recovery, Lenovo insisted, was designed as a “software
tool used to back-up files from a computer hard disk so that they can be restored later if needed
. . . . It is not designed to manipulate files from . . . a source computer to a . . . target computer.”
Def. Resp. to Pl. Mot. to Strike, ECF No. 257, at 21. Through an expert, Tranxition was able to
demonstrate how a user could easily manipulate the Rescue and Recovery software program to
migrate Internet browser application settings from one computer to another. Decl. of Ronen
Levy, ECF No. 245, at 4–16. Although not designed for migration, it was clear that Rescue and
Recovery could be used to migrate settings, and thus it might infringe Tranxition’s patents.
The conclusion to draw is that the claims in Tranxition’s patents not only threaten to
preempt the “migration process” generally, but they are so broad that they could preempt the
entire field of computer data backup and restore, at least insofar as the programs written to
implement backup and restore are capable of taking settings from one computer and applying
30 – OPINION & ORDER
them to another. Without a sufficient “inventive concept” that limits Tranxition’s patents to
something narrower than a claim to the abstract idea of migrating settings between computers,
Tranxition’s ‘877 and ‘766 patents present substantial preemption concerns, and are, therefore,
invalid.
ORDER
For the reasons stated, Lenovo’s motion for partial summary judgment [229] and motion
for summary judgment [234] are granted. All other outstanding motions are denied as moot.
IT IS SO ORDERED.
Dated this
day of ________________, 2015.
MARCO A. HERNÁNDEZ
United States District Judge
31 – OPINION & ORDER
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