Repifi Vendor Logistics, Inc. v. Intellicentrics, Inc. et al
Filing
43
MEMORANDUM OPINION AND OPINION. It is ORDERED that Defendants' Motions to Dismiss, (Dkt. 7 , 16 ), are GRANTED. It is further ORDERED that Plaintiff's claims are hereby DISMISSED without prejudice. Signed by District Judge Sean D. Jordan on 3/30/2021. (baf, )
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
REPIFI VENDOR LOGISTICS, INC.
v.
INTELLICENTRICS, INC., ET AL.
§
§
§
§
§
CIVIL NO. 4:20-CV-448-SDJ
MEMORANDUM OPINION AND ORDER
Before the Court are Defendants IntelliCentrics, Inc.’s and IntelliCentrics
Global
Holdings,
Ltd.’s
(together,
“IntelliCentrics”)
Motions
to
Dismiss.
(Dkt. #7, #16). Plaintiff Repifi Vendor Logistics, Inc. (“Repifi”) filed a response in
opposition, (Dkt. #11), IntelliCentrics filed a reply, (Dkt. #12), Repifi filed a sur-reply,
(Dkt. #14), and the Court held a hearing on the motions, (Dkt. #25). Having
considered the motions, the arguments presented by the parties, and the relevant
law, the Court concludes that the motions should be GRANTED.
I. BACKGROUND
Repifi is the owner of U.S. Patent No. 10,304,268 (the “’268 patent”), which is
titled “Visitor Credentialing System for an Access-Controlled Environment.”
According to the ’268 patent and Repifi’s complaint, the ’268 patent “is directed to a
method for credentialing visitors to an access-controlled environment by an access
administrator.” ’268 patent col. 1 ll. 56–58; see also (Dkt. #1 ¶ 7). Specifically, claim 1
of the ’268 patent, the claim IntelliCentrics is alleged to have infringed, recites the
following:
1. A method for credentialing visitors to an access-controlled
environment by an access administrator, comprising the steps of:
1
(a) providing a smart-phone based credentialing platform having global
positioning system (GPS) capability;
(b) providing an electronic badge having a display having electronically
controlled and changeable indicia thereon, the badge adapted
communicate with a smart-phone;
(c) enrolling a visitor into the credentialing platform by entering visitor
information based on requirements of the administrator;
(d) approving, by the administrator, that the requirements of the step of
enrolling are met;
(e) requesting, by the visitor, at least one location for which access is
desired and submitting the at least one location to the administrator via
the credentialing platform, said location having a pre-defined area;
(f) approving, by the administrator, the request for access at the at least
one location;
(g) checking in on the smart-phone, by the visitor, via the credentialing
platform, to establish check-in data including check-in time and date by
the visitor, wherein the check-in data is recorded by the credentialing
platform;
(h) communicating between the smart-phone and the electronic badge,
indicia data for forming a display image on the display on the electronic
badge;
(i) displaying on the badge display indicia showing access by the visitor
is authorized to the location during the specific time interval;
(j) recording, by the credentialing platform, geo-location data of the
visitor during the visitor’s presence in the pre-defined area;
(k) checking out of the system when the visitor departs the pre-defined
area of the at least one location, establishing check-out data, including
check-out time and date and geo-location;
(l) recording, by the credentialing platform, the check-in data, the geolocation data and the check-out data of the visitor; and
(m) removing from the badge display, the indicia showing access by the
visitor is authorized.
2
’268 patent col. 6 l. 54–col. 7 l. 29.
In essence, the claimed method streamlines the credentialing and check-in/out
processes for visitors to access-controlled facilities, such as healthcare facilities and
office buildings. The credentialing platform is provided in the form of a smart-phone
software application (“app”), through which visitors can input their information and
obtain approval from the facility administrator. Once approved, visitors can then use
the app to request access to a pre-defined, access-controlled location. Once access is
granted, visitors can check in on the app after arriving at the facility. The app records
the check-in information, such as the date and time, and communicates data to an
electronic badge that causes the badge to reflect that the visitor is authorized. The
app then, using the smart phone’s GPS technology, tracks the visitor’s location and
automatically checks out the visitor when the visitor leaves the facility. The app
records the check-out information and communicates data to the electronic badge,
causing the badge to reflect that the visitor is no longer authorized.
Repifi alleges that IntelliCentrics has implemented a similar method using a
smart-phone app and an electronic badge to facilitate visitor credentialing and
checking in and out at healthcare facilities. Repifi filed this infringement suit against
IntelliCentrics, claiming that IntelliCentrics’s method infringes claim 1 of the
’268 patent. IntelliCentrics now moves to dismiss Repifi’s claims for failure to state a
claim upon which relief can be granted, arguing that claim 1 of the ’268 patent does
not claim a patentable invention under 35 U.S.C. § 101.
3
II. LEGAL STANDARD
A. Rule 12(b)(6)
Patent eligibility under Section 101 can often be resolved on a motion to
dismiss. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) (“Berkheimer I”).
When a Rule 12(b)(6) motion to dismiss for failure to state a claim challenges the
eligibility of a patent, courts apply the same, well-known standard that applies to all
Rule 12(b)(6) motions. Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d
1354, 1357 (Fed. Cir. 2018) (per curiam).
In order to survive a Rule 12(b)(6) motion to dismiss, “a complaint must contain
sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible
on its face.’” Waller v. Hanlon, 922 F.3d 590, 599 (5th Cir. 2019) (quoting Ashcroft v.
Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009)). This involves a twostep inquiry. First, courts assess the allegations of the complaint and distinguish
well-pleaded factual allegations from unsupported legal conclusions. Id. (quoting
Doe v. Robertson, 751 F.3d 383, 388 (5th Cir. 2014)). The complaint need not lay out
its factual allegations in significant detail, but it must be enough that, when accepted
as true, the allegations suggest that the plaintiff’s right to recovery is more than just
speculative. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955,
167 L.Ed.2d 929 (2007). This means that a complaint requires more than mere “labels
and conclusions” or a “formulaic recitation of the elements of a cause of action,” and
courts need not assume the truth of legal conclusions framed as allegations. Id.
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Second, courts must “ask whether the remaining allegations are sufficient to
nudge the plaintiff’s claim across the plausibility threshold.” Waller, 922 F.3d at 599
(quotation omitted); accord Iqbal, 556 U.S. at 678. In other words, courts determine
whether the complaint’s factual allegations establish more than just a possibility of
the plaintiff’s success on its claims. Waller, 922 F.3d at 599. Making this
determination is “a content-specific task that requires the reviewing court to draw on
its judicial experience and common sense.” Id. (quoting Iqbal, 556 U.S. at 679).
B. The Alice/Mayo Test
35 U.S.C. § 101 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.” However, the Supreme Court has long held that
Section 101 contains an implicit exception to patent eligibility for claims directed
toward laws of nature, physical phenomena, and abstract ideas. Diamond v.
Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980); accord Ass’n
for Molecular Pathology v. Myriad Genetic, Inc., 569 U.S. 576, 589, 133 S.Ct. 2107,
186 L.Ed.2d 124 (2013). Relevant here, “[t]he abstract idea exception has been
applied to prevent patenting of claims that abstractly cover results where ‘it matters
not by what process or machinery the result is accomplished.’” McRO, Inc. v. Bandai
Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (quoting O’Reilly v.
Morse, 56 U.S. 62, 113, 15 How. 62, 14 L.Ed. 601 (1853)). In other words, “[a] patent
is not good for an effect, or the result of a certain process because such patents would
5
prohibit all other persons from making the same thing by any means whatsoever.”
Id. (internal quotation marks omitted) (quoting Le Roy v. Tatham, 55 U.S. 156, 175,
14 How. 156, 14 L.Ed. 367 (1853)); see also Diamond v. Diehr, 450 U.S. 175, 182 n.7,
101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (holding that a patent may issue “for the means
or method of producing a certain result, or effect, and not for the result or effect
produced”). Courts must “therefore look to whether the claims . . . focus on a specific
means or method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invoke generic processes
and machinery.” McRO, 837 F.3d at 1314 (citations omitted).
The abstract-idea exception, “is not without limits,” though, “for ‘all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas,’ and ‘too broad an interpretation of this exclusionary
principle could eviscerate patent law.’” Ass’n for Molecular Pathology, 569 U.S.
at 589–90 (quoting Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66,
71, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012)). Thus, “[w]hether a claim recites patent
eligible subject matter is a question of law which may contain disputes over
underlying facts.” Berkheimer I, 881 F.3d at 1368.
To aid courts in making this determination, the Supreme Court has
established a two-step “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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
217, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) (emphasis added); see also Mayo,
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566 U.S. at 77. First, courts must determine whether the claims are directed to a
patent-ineligible concept. Alice, 573 U.S. at 217. If so, courts must determine whether
there are additional elements beyond the patent-ineligible concept that “transform
the nature of the claim” into a patent-eligible application. Id. (citation omitted). The
Federal Circuit has recognized that “precision has been elusive in defining an allpurpose boundary between the abstract and the concrete.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1345 (Fed. Cir. 2015). However, courts may look
to the Federal Circuit’s decisions applying Alice and Mayo for the “substantial
guidance” provided therein “in determining whether claims are unpatentable under
the ‘abstract idea’ rubric.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1258 (Fed. Cir. 2016) (“Affinity Labs I”).
III. DISCUSSION
A. Alice/Mayo Step One: Whether Claim 1 is Directed to an Abstract Idea
1.
At step one, “the claims are considered in their entirety to ascertain whether
their character as a whole is directed to excluded subject matter.” Internet Patents,
790 F.3d at 1346; see also Affinity Labs I, 838 F.3d at 1257 (stating that the first step
“calls upon us to look at the ‘focus of the claimed advance over the prior art’ to
determine if the claim’s ‘character as a whole’ is directed to excluded subject matter”).
In conducting this analysis, courts should not oversimplify key inventive concepts or
downplay an invention’s benefits. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1337–38 (Fed. Cir. 2016); see also McRO, 837 F.3d at 1313 (“[C]ourts must be careful
7
to avoid oversimplifying the claims by looking at them generally and failing to
account for the specific requirements of the claims.” (quotation omitted)). Moreover,
“it is not enough to merely identify a patent-ineligible concept underlying the claim;
we must determine whether that patent-ineligible concept is what the claim is
‘directed to.’” Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed.
Cir. 2016).
Abstract ideas, which are unpatentable, “are products of the mind, mental
steps, not capable of being controlled by others, regardless what a statute or patent
claim might say.” Berkheimer v. HP Inc., 890 F.3d 1369, 1375 (“Berkheimer II”)
(Lourie, J., concurring in denial of rehearing en banc) (citing Gottschalk v. Benson,
409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972)). In the context of software
applications, the dichotomy between patentable concrete ideas and unpatentable
abstract ideas typically turns on whether the patent is directed to “an improvement
in the functioning of a computer,” which is patentable, or to a method that simply
adds “conventional computer components to well-known business practices” or that
recites “generalized steps to be performed on a computer using conventional computer
activity,” which is unpatentable. Enfish, 822 F.3d at 1338 (citing Alice, 134 S.Ct.
at 2358–60); see also Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353,
1361 (Fed. Cir. 2020) (holding that a patent must improve the computer’s
functionality rather than merely improve the experience of users who cannot or would
rather not themselves use programming to improve their experience); In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (holding that, while
8
the claim on its face recited “concrete, tangible components such as ‘a telephone unit’
and a ‘server,’ the specification ma[de] clear that the recited physical components
merely provide[d] a generic environment in which to carry out the abstract idea of
classifying and storing digital images in an organized manner”).
For example, the Federal Circuit has deemed the following to be abstract ideas
to which software patent claims were directed: providing out-of-region access to
regional radio-broadcast content via a mobile software application, Affinity Labs I,
838 F.3d at 1258, a method for the wireless communication of information about the
status of a moveable barrier, such as a garage door, Chamberlain Grp. v. Techtronic
Indus. Co., 935 F.3d 1341, 1344–45 (Fed. Cir. 2019), tracking a user’s computer
network to provide tailored advertisements based on real-time data about the user
and the user’s location, Bridge and Post, Inc. v. Verizon Commc’ns, Inc., 778 F.App’x
882, 884 (Fed. Cir. 2019), providing automated entry to prospective property
purchasers seeking to tour properties, Consumer 2.0, Inc. v. Tenant Turner, Inc.,
343 F.Supp.3d 581, 584 (E.D. Va. 2018), aff’d 796 F.App’x 752 (Fed. Cir. 2020),
tracking the location of an item to provide a purchaser advance notice of delivery,
Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1181
(Fed. Cir. 2020), monitoring the performance of an interconnected electric power grid
in real time, Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016), and transmitting a request for demographic or psychographic user
information, saving the user information, and matching the user to a specific
advertiser, In re Morsa, 809 F.App’x 913, 917 (Fed. Cir. 2020).
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By contrast, the following patent claims have been held to not be directed to
abstract ideas: using a plurality of network monitors that each analyze specific types
of data on the network and integrating the monitors’ reports to identify hackers into
the network, SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019), a
medium for automatically capturing an image of a check through a mobile-phone
camera only once the image meets certain specifications, United Servs. Auto. Ass’n v.
Wells Fargo Bank, N.A., 414 F.Supp.3d 947, 950 (E.D. Tex. 2019), animation
software’s automatically employing specific, limited mathematical rules instead of
animators’ prior convention of relying on subjective determinations, McRO, 837 F.3d
at 1314, a graphical user interface’s improving the speed, accuracy, and usability of
a system used for trading market commodities, Trading Techs. Int’l, Inc. v. CQG, Inc.,
675 F.App’x 1001, 1003 (Fed. Cir. 2017), and a display interface’s allowing users to
more quickly access stored data and programs in small-screen electronics, Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1359 (Fed. Cir. 2018)
2.
The Court concludes that claim 1 of the ’268 patent is directed to the abstract
idea of credentialing visitors and checking them in and out of an access-controlled
environment. Credentialing and checking in visitors is a process that long predates
the ’268 patent. It has been practiced ever since access-controlled facilities have
existed. It is also a well-established business practice and a common method for
organizing human activity. The ’268 patent specification itself explains as much. See
’268 patent col. 1 ll. 11–13 (“It is a common practice to issue identification badges to
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employees at facilities such as hospital or other healthcare facilities, office buildings,
factories, and the like.”)
The elements of claim 1 clearly delineate a method of accomplishing this
longstanding human activity. The elements lay out the process of a visitor’s enrolling
with the facility, gaining approval by the administrator, requesting access to a
location, being granted access, checking in to that location, carrying a badge to signify
that the visitor is authorized, and then checking out. The plain object of these steps
is to establish a process of credentialing visitors and checking them in and out of the
location, as Repifi acknowledges in its complaint. See (Dkt. #1 ¶ 7) (“The ’268 patent
is directed to and claims a method for credentialing visitors to an access-controlled
environment by an access administrator for use in healthcare facilities.” (emphasis
added)). It is also confirmed in the ’268 patent’s specification. See ’268 patent col. 1
ll. 56–58 (“The present invention is directed to a method for credentialing visitors to
an access-controlled environment by an access administrator.” (emphasis added)).
The fact that claim 1 implements existing technology such as smart phones
and electronic badges to make the process more efficient does not save claim 1 from
targeting an abstract concept. Claim 1 merely applies existing technology to
automate a human process. Nothing in claim 1 indicates that it is directed to an
improvement to the technology itself. The specification further confirms this fact.
According to the specification, the technology involved in the method includes smart
phones and electronic display badges in the form of “a battery-less smart card made
by Aioi Systems Co, Ltd.” ’268 patent col. 5 ll. 24, 62–63. In order for the electronic
11
badge to display an image showing whether a visitor is authorized, the smart phone
sends data to the smart card using “near field communication (NFC), as is well
known.” ’268 patent col. 5 ll. 44–46. And if a smart phone lacks NFC write capability,
“a commercially available NFC reader/writer may be used,” which can receive
communications from the smart phone and transmit them to the electronic badge.
’268 patent col. 5 ll. 49–56. The specification makes clear that the technology
contemplated by claim 1 is all commercially available technology. Nowhere in claim
1 or in the specification does the ’268 patent purport to claim an improvement to how
smart phones function, how battery-less smart cards function, or how near-field
communication works. Rather, the patent merely applies these conventional
technological components in order to improve the abstract process of credentialing
visitors.1
Repifi contends that claim 1 is not directed to an abstract idea because it
includes an electronic badge that displays indicia that are changeable in real time
based on the location of the visitor. However, in the Alice/Mayo step-one inquiry, the
focus is not on the individual, specific elements of the claim. Instead, the focus is on
what all the elements, when taken as a whole, indicate that the claim is directed to.
Claim 1 is not directed to an electronic badge with indicia that change in real time;
rather, the electronic badge is merely one of the steps within the broader method
Repifi disputes whether a smart phone constitutes a “generic computer.” This
argument can be summarily rejected. Regardless of whether Repifi considers smart phones
“computers,” smart phones are certainly conventional technology, and the Federal Circuit
has repeatedly treated them as such when assessing patent validity under Section 101. See,
e.g., Affinity Labs I, 838 F.3d at 1262; Consumer 2.0, 343 F.Supp.3d at 588, aff’d 796 F.App’x
at 752.
1
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claimed by claim 1. See ’268 patent col. 6 ll. 54–56 (indicating that the elements of
claim 1 “compris[e] the steps” for carrying out the “method for credentialing visitors
to an access-controlled environment”). Claim 1 contains thirteen elements, four of
which mention an electronic badge, and none of which mention indicia changing in
real time. In no sense can claim 1 be read as a whole to be directed to an electronic
badge with indicia that change in real time.
Repifi’s reliance on United Services is also unavailing. The patent in United
Services claimed precisely what claim 1 of the ’268 patent does not—a technological
improvement to solve a technological problem. 414 F.Supp.3d at 954. The
technological improvement claimed by the United Services patent enhanced the
ability of a smart-phone camera to capture an image of a check such that the
information on the check could later be detected and extracted when processed by the
bank. Id. The patented technology operated such that the smart-phone camera would
not take a picture until the image conformed with certain specifications, at which
point the camera would “autocapture” an image of the check. Id. at 954, 958. The
result was that a greater percentage of check images captured with smart-phone
cameras were able to present detectable and extractable information when processed
by the bank. Id. at 955. In other words, in order to solve a technological problem—
the difficulty in smart-phone cameras capturing processable images of checks—the
patent claimed an improvement to the way smart phones take pictures of checks.
Claim 1 of the ’268 patent claims nothing of the sort. Claim 1 is not directed
toward solving any problem in the technology itself—it is directed toward making a
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human process more efficient. Nor does claim 1 claim an improvement to the
functioning of any technology—it merely claims the use of conventional technologies’
already-existing functions to aid a human process. Indeed, rather than being
analogous to the patent at issue in United Services, claim 1 is most comparable to the
patents considered in the Bridge and Post and Consumer 2.0 decisions.
In Bridge and Post, the patent at issue claimed “a method for providing
directed media to a user on a network.” 778 F.App’x at 886. When a user accessed a
website, the technology would retrieve a persistent device identifier, retrieve
information related to that identifier, including data regarding the location and
history of the device, analyze the information, and provide targeted marketing based
on the analysis. This technological method maximized advertising revenue by
delivering real-time information about internet users and their locations. Id. at 884.
Nonetheless, the Federal Circuit concluded that the patent was “directed to the
abstract idea of using persistent identifiers to implement targeted marketing.” Id.
at 887. The court reasoned that targeted marketing is a fundamental concept that
existed well before the patent at issue, and the patent claimed nothing more than
implementing targeted marketing with a computer over the internet. Id. Similarly
here, claim 1 of the ’268 patent is directed to the longstanding concept of controlling
access to certain types of facilities and deploys only conventional, commercially
available technologies to improve the abstract process of credentialing visitors.
In Consumer 2.0, the patent claimed “[a] method for providing automated entry
to properties.” 343 F.Supp.3d at 584. The method provided a means for prospective
14
buyers of property to register through their mobile phones and gain automated access
to tour properties, obviating the need for the presence of a real-estate agent. Id. The
court concluded that the patent was directed to the abstract idea of providing access
to properties, quoting Alice for the proposition that longstanding commercial
practices and methods of organizing human activity are abstract ideas. Id. at 587–88
(quoting Alice, 573 U.S. at 220). Because the technology merely automated a human
process, the court concluded that the patent remained directed to an abstract idea.
Id. at 588. In order to avoid being directed to an abstract idea, the court reasoned
that the patent would need to claim some improvement to how computers carry out
a function rather than the mere application of existing computer functions to improve
an abstract process. See id. at 587–88.
The same is true here. Claim 1 of the ’268 patent is directed to the abstract
idea of controlling access to certain types of facilities, a well-established commercial
activity and method of organizing human activity. And, like the patent at issue in
Consumer 2.0, Repifi’s patent merely claims the use of functions already available on
conventional technologies, in this case smart phones and electronic display badges,
to improve the abstract process of controlling access. For these reasons, the Court
concludes that claim 1 is directed to an abstract idea.
B. Alice/Mayo Step Two: Whether Claim 1 Supplies an Inventive Concept
1.
Because the Court concludes that claim 1 is directed to an abstract idea, the
Court must next determine whether an element of the claim or a combination of
15
elements “is sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the ineligible concept itself.” Alice, 573 U.S. at 217 (cleaned
up). The Supreme Court describes step two “as a search for an ‘inventive concept.’”
Id. As part of this inquiry, courts look to both the claims and the specification, though
each claim element is considered individually, not in combination as in step
one. See Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271
(Fed. Cir. 2016) (“Affinity Labs II ”) (“[N]either the claim nor the specification reveals
any concrete way of employing a customized user interface.”); Trading Techs.,
675 F.App’x at 1005. However, “it is not enough just to disclose the improvement in
the specification; instead, the Court’s task becomes to ‘analyze the asserted claims
and determine whether they capture these improvements.’” Align Tech., Inc. v.
3Shape A/S, 339 F.Supp.3d 435, 443 (D. Del. 2018) (emphasis omitted) (quoting
Berkheimer I, 881 F.3d at 1369); see also RecogniCorp, 855 F.3d at 1327 (“To save a
patent at step two, an inventive concept must be evident in the claims.”); Alice,
573 U.S. at 221 (“[W]e must examine the elements of the claim to determine whether
it contains an ‘inventive concept.’”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1149 (Fed. Cir. 2016) (“The § 101 inquiry must focus on the language of the
Asserted Claims themselves.”).
Also, in determining inventiveness, courts often analyze whether claim
elements “simply recite ‘well-understood, routine, conventional activit[ies].’” Bascom
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)
(quoting Alice, 134 S.Ct. at 2359). “Simply appending conventional steps, specified at
16
a high level of generality, [is] not enough to supply an inventive concept,” Alice,
573 U.S. at 222 (cleaned up), but an inventive combination of conventional
limitations may supply an inventive concept. See Bascom, 827 F.3d at 1349. Where
there is no question on the face of the pleadings that each claim element or ordered
combination of elements is well-understood, routine, and conventional, patent
eligibility may be resolved on a motion to dismiss. Berkheimer I, 881 F.3d at 1368.
But, when there exists a question as to “[w]hether a claim element or combination of
elements is well-understood, routine and conventional to a skilled artisan in the
relevant field,” such question is a “question of fact” and “must be proven by clear and
convincing evidence.” Automated Tracking Sols., LLC v. Coca-Cola Co., 723 F.App’x
989, 995 (Fed. Cir. 2018) (quoting Berkheimer I, 881 F.3d at 1368); see also Aatrix,
882 F.3d at 1128 (“While the ultimate determination of eligibility under § 101 is a
question of law, like many legal questions, there can be subsidiary fact questions
which must be resolved en route to the ultimate legal determination.”).
2.
The only element of claim 1 that Repifi contends supplies an inventive concept
is the electronic badge. Repifi argues that providing an electronic badge with a
display that changes in real time is an improvement over the prior art of providing
paper badges. The elements regarding the electronic badge recite the following:
(a) providing an electronic badge having a display having electronically
controlled and changeable indicia thereon, the badge adapted
communicate with a smart-phone;
...
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(h) communicating between the smart-phone and the electronic badge,
indicia data for forming a display image on the display on the
electronic badge;
(i) displaying on the badge display indicia showing access by the visitor
is authorized to the location during the specific time interval;
...
(m) removing from the badge display, the indicia showing access by the
visitor is authorized.
’268 patent col. 6 ll. 57–58, col. 7 ll. 12–17, 28–29. The two primary functions of the
electronic badge based on these elements are (1) its ability to communicate with a
smart phone and (2) its ability to change its display in response to the
communications from the smart phone. However, none of the elements lists the
technology or the method by which the electronic badge is able to perform these
functions. In other words, the elements do not claim any technological improvements
to the electronic badge that enable it to communicate with a smart phone and change
its display accordingly; rather, the elements simply claim the use of an electronic
badge that can perform these functions. See Affinity Labs I, 838 F.3d at 1258 (“There
is nothing in claim 1 that is directed to how to implement out-of-region broadcasting
on a cellular telephone. Rather, the claim is drawn to the idea itself.”).
The specification further supports this conclusion. As noted above, the
specification indicates that the electronic badge referenced in claim 1 can be a
commercially available smart card with an “e-Paper rewritable display” that is
capable of communicating with smart phones that have “NFC write capability.”2
The Court notes that, in its response in opposition, Repifi provides an inaccurate
description of the ’268 patent specification in an apparent attempt to make the claimed
electronic badges seem distinct from generally available badges. Repifi states: “‘Currently
available display badges may not be capable of communicating directly with smart phones
2
18
’268 patent col. 5 ll. 44–67. And for smart phones that do not have NFC write
capability, an NFC reader/writer, which is also commercially available, can be used
to facilitate communication between the smart phone and the electronic badge.
’268 patent col. 5 ll. 49–53. In short, the electronic badge is an off-the-shelf,
conventional piece of technology, and nothing in the ’268 patent indicates that the
badge’s ability to communicate with a smart phone and change its display screen is a
feature that readily available electronic badges do not have. See Electric Power,
830 F.3d at 1355 (concluding that there was no inventive concept when there was
“nothing in the patent contain[ing] any suggestion that the displays needed for
[purposes of the claimed method] [were] anything but readily available”).
Accordingly, the elements regarding the electronic badge do not provide an inventive
concept sufficient to transform claim 1 into patentable subject matter.
Nor do the elements, when considered as an “ordered combination,” supply an
adequate inventive concept. The ordered combination of elements of claim 1 consists
of humans carrying out generic human functions (e.g., inputting information,
lacking NFC write capability,’ at lines 5:56-57, suggesting that standard, garden-variety
badges are not fit for the claimed method.” (Dkt. #11 at 7). But no such distinction exists
between generally available badges and the badges used in Repifi’s claimed method. An
examination of the paragraph surrounding the language Repifi quotes from the specification
reveals that the specification does not at all say what Repifi implies. Repifi suggests that the
badges used in its claimed method are capable of communicating directly with smart phones
that lack NFC write capability, while generally available badges lack such capability. This is
untrue. The language quoted by Repifi is derived from a paragraph in the specification
explaining that, if a smart phone does not have NFC write capability, then users of Repifi’s
claimed method will have to use an NFC reader/writer in order for the electronic visitor badge
to be able to communicate with the smart phone. ’268 patent col. 5 ll. 44–61. In other words,
when the specification references “[c]urrently available display badges,” ’268 patent col. 5 ll.
56–57, it is not distinguishing the claimed electronic badges; it is referring to the claimed
badges. This further indicates that the electronic badges used in the claimed method are,
in fact, generally available.
19
requesting access, and granting approval) and conventional technology carrying out
conventional functions (e.g., smart phones using GPS tracking, smart phones storing
information, smart phones transmitting data to a smart card–electronic badge, and
the smart card–electronic badge responding to the transmitted data). And the only
alleged improvements over the prior art provided by the ordered combination all stem
from the automation of a historically human process. See (Dkt. #11 at 15–16) (arguing
that the automated method is a “clear improvement” because it “enhances hospital
visitor experiences by promoting efficiency and convenience”). But the automation of
the human process cannot be the inventive concept because the automation of the
human process is itself the abstract idea. See ChargePoint, Inc. v. SemaConnect, Inc.,
920 F.3d 759, 774 (Fed. Cir. 2019) (“[A] claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that renders the
invention significantly more than that ineligible concept.” (quotation omitted)). Mere
automation of longstanding human processes using conventional technology
necessarily increases convenience and efficiency, but that does not make it
patentable. Accordingly, claim 1 fails to supply an inventive concept sufficient to
convert claim 1 into a claim over patentable subject matter.
*
*
*
Because claim 1 of the ’268 patent is directed to an abstract idea and does not
contain an inventive concept sufficient to transform the claim into a patent-eligible
claim, claim 1 is invalid under 35 U.S.C. § 101. Accordingly, IntelliCentrics’s motions
20
.
are granted, and Repifi’s complaint is dismissed for failure to state a claim upon
which relief can be granted.3
IV. CONCLUSION
For the foregoing reasons, it is ORDERED that Defendants’ Motions to
Dismiss, (Dkt. #7, #16), are GRANTED. It is further ORDERED that Plaintiff’s
claims are hereby DISMISSED without prejudice.
So ORDERED and SIGNED this 30th day of March, 2021.
____________________________________
SEAN D. JORDAN
UNITED STATES DISTRICT JUDGE
The parties dispute whether claim 1 is representative of the other claims in the
’268 patent. However, the Court need not address this issue because all of the infringement
allegations in Repifi’s complaint refer only to claim 1. There are no claims alleging that
IntelliCentrics infringed any of the other claims in the ’268 patent. Accordingly, the
conclusion that claim 1 is invalid mandates dismissal. See X One, Inc. v. Uber Techs., Inc.,
239 F.Supp.3d 1174, 1188 (N.D. Cal. 2017) (considering the validity of only those claims that
were alleged in the complaint to have been infringed).
3
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