Icon Health & Fitness v. Polar Electro Oy

Filing 185

MEMORANDUM DECISION AND ORDER.granting 147 Motion for Judgment on the Pleadings. See Order for Details. Signed by Judge Bruce S. Jenkins on 3/10/2017. (las)

FILED
2017 MAR 10 PM 12:02
CLERK
U.S. DISTRICT COURT
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH, CENTRAL DIVISION

ICON HEALTH & FITNESS, INC.,
Plaintiff,
v.

MEMORANDUM OPINION & ORDER
REGARDING POLAR ELECTRO OY AND
POLAR ELECTRO INC.'S MOTION FOR
JUDGMENT ON THE PLEADINGS

POLAR ELECTRO OY et al.,
Case No.: 1:11-cv-00167-BSJ
Defendants.
Honorable Bruce S. Jenkins

Pending before the Court is Defendants', Polar Electro Oy and Polar Electro Inc.
(collectively, "Polar"), Motion for Judgment on the Pleadings filed pursuant to Federal Rule of
Civil Procedure 12(c). (Dkt. No. 147) ("Motion"). Polar contends that certain claims of U.S.
Patent No. 6,701,271 ("'271 patent") are directed to patent-ineligible subject matter and are,
therefore, invalid under 35 U.S.C. § 101("Section101"). For the reasons discussed below, the
Court grants Polar's Motion.

I.

Procedural Background
On November 18, 2011, ICON Health & Fitness, Inc. ("Icon") filed a Complaint against

Polar Electro Oy ("Polar Oy") asserting infringement of U.S. Patent No. 7,789,800 ('"800
patent") and the '271 patent. (Dkt. No. 1). On June 8, 2012, Icon filed an amended complaint
adding Polar Electro, Inc. ("Polar Inc.") and asserting infringement of an additional patent, U.S.
Patent No. 6,921,351 ("'351 patent). (Dkt. No. 9). The case was stayed with respect to the '800
patent and the '271 patent pending finalization of reexamination proceedings for those patents.
(Dkt. No. 51). The Court entered a scheduling order for the case concerning the '271 patent after
finalization of the '271 patent reexamination. (Dkt. No. '141).
After entry of the scheduling order, Polar filed its Motion, requesting that the Court find
that claims 15, 42, 49, 51, 54, 80, 81, 82, 90, and 91 of the '271 patent are directed to patent1

ineligible subject matter and thus invalid under 35 U.S.C. § 101. (Dkt. No. 147). Icon filed an
opposition ("Opposition") (Dkt. No. 166) together with two declarations: (1) a Declaration of
Tyson K. Hottinger (Dkt. No. 167), along with three letters related to alleged discovery disputes
between the parties; and (2) a Declaration of Dr. David Brienza. (Dkt. No. 168). With its
Opposition, Icon also filed a Request that the Court take judicial notice of two groups of
documents. The first group consists of the prosecution history of two patents that are unrelated to
the asserted '271 patent: (1) the prosecution history file wrapper of U.S. Patent Application No.
11/545,018, which issued as U.S. Patent No. 8,512,238; and (2) the prosecution history file
wrapper of U.S. Patent Application No. 13/418,781, which issued as U.S. Patent No. 9,149,213.
The second group of documents includes portions of the two separate reexaminations of the '271
patent: (1) the ex parte reexamination of U.S. Patent No. 6,701,271 that was assigned Control
No. 90/013,409; and (2) the inter partes reexamination of U.S. Patent No. 6,701,271 that was
assigned Control No. 95/002,337. (Dkt. No. 169). Polar filed a reply brief in support of its
Motion (Dkt. No. 171) and shortly thereafter a Notice of Errata. (Dkt. No. 174).
On January 19, 2017, the Court held a hearing during which Icon presented arguments
based on new cases it had not previously cited. The Court allowed Polar to file a short response
to Icon's arguments related to the new cases, which Polar filed shortly after the hearing. (Dkt.
No. 178). In response, Icon filed a Supplemental Opposition Brief. (Dkt. No. 180). Neither party
sought constrnction of any claim tenns in its briefing on the Motion.

II.

The '271 Patent
A.

Technological Background

Based on a review of the '271 patent and the parties' briefing, the Court arrives at the
following conclusions concerning the '271 patent. First, the '271 patent generally discloses a
method and system:
for providing feedback [that] includes receiving data indicative of a
physical characteristic of a first subject and a physical characteristic of a
second subject; determining an evaluation of the data [or course of action];
and providing a notification regarding the evaluation [or course of action]
to a device"

2

(See e.g., Dkt. No. 147, Ex. A, '271 patent col. 2:11-28).

The disclosed method reflects three fundamental actions: (1) receiving information regarding
physical characteristic(s) of subjects; (2) evaluating, or determining a course of action based on,
the characteristic(s); and (3) providing a notification of the evaluation/course of action. (See Dkt.
No. 147, Ex. A, Figs. 1 and 2).
Second, the '271 patent broadly defines the terms used to describe and to claim the
disclosed method via examples. With respect to "physical characteristic," the '271 patent gives
examples, stating that it "might be or include the subject's heart rate, blood pressure, blood sugar
level, posture, temperature, respiration rate, facial response or position, weight, height, galvanic
skin response, pheromone emission, brain wave pattern or rhythm, odor, motion, etc., or a
change in any one or more of them." (See e.g. Dkt. No. 147, Ex. A, '271 patent Abstract; col.
1 :57-64; col. 4:22-23, 53-58).
Third, the '271 patent gives examples of the "determining an evaluation" such that it
"may be or include summarizing, tabulating, charting, collecting, aggregating, averaging,
comparing, correlating, etc. some or all of the raw physical characteristic data received." (See
e.g., Dkt. No. 147, Ex. A, col. 6:56-66).

Fourth, with respect to "determining a course of action," the '271 patent shows that the
course of action can be either of an actor such as a teacher or entertainer, or of a subject such as a
student or an audience member. (See e.g., Dkt. No. 147, Ex. A, col. 7:27-30; col. 8:14-23, 26-29,
51-55, and col. 9:13-17). The '271 patent gives examples of a person reading stories or giving a
lecture. In those examples, the person is provided with feedback on the stories or on the parts of
the lecture that the audience liked best, or on what story ending they might prefer. Id. Another
example provided by the '271 patent is a course of action to get subjects to do something, or to
improve the chances of the subjects actually doing something. Id. In the Background of the
Invention, the '271 patent provides examples of situations where it might be "desirable to have
infonnation regarding how a subject or a group of subjects feels about information being
delivered or presented to them or how the subjects react while information is being delivered or

3

presented to them." (Dkt. No. 147, Ex. A, col. 1:17-21). For example, the "Background of the
Invention, states:
[A] teacher may wish to know if the students in her class understand the
material the teacher is discussing. A lecturer may wish to know what
portions of his lecture the audience members find most interesting.
Alternatively, the lecturer may want to have a better idea of when to take a
break. An entertainer may wish to know what ending to provide to a story
or song medley being presented to an audience.
(Dkt. No. 147, Ex. A, col. 1:22-29).
The '271 patent gives another example in the context of a person giving a presentation:
[A]ssume a speaker is giving a presentation to an audience often people
and that the speaker may want to direct the presentation along one of
several potential themes depending on the interest of the audience. In the
method of the present invention, information regarding each of the
audience member's heart rates, posture, etc. may be obtained and used to
help detennine which of the themes the audience members are the most
interested in. Once the information is communicated to the speaker, the
speaker can direct the presentation appropriately.
(Dkt. No. 147, Ex. A, col. 4:2-11).
The speaker receives feedback infonnation regarding the audience, such as posture (e.g., they are
slumping in their seats) or facial response (e.g., they are yawning); the speaker can then make a
decision based upon the information. For example, it might be time for the speaker to take a
break, speak up, or move to a more rousing topic.
Fifth, the '271 patent gives examples of a "notification" such that it "may be or include
an email message, instant message communication, electronic signal or other communication
(e.g., radio or wireless transmission, FTP, HTTP or HTML transmission, XML feed), an audible
sound, a visual display, a voice message, etc." (See e.g., Dkt. No. 147, Ex. A, col. 7:11-16). The
notification can be any fonnat. (See e.g., Dkt. No. 147, Ex. A, col. 8:37-45).
Sixth, the '271 patent discloses that no unique or specific hardware or software is needed
to implement the disclosed method, stating, for example, that "embodiments of the present
invention are not limited to any specific combination of hardware and software." (See e.g., Dkt.
No. 147, Ex. A, col. 12:25-27). Indeed, the '271 patent discloses that implementation of the
disclosed method could be:

4

implemented in many different ways using a wide range of programming
techniques as well as general-purpose hardware or dedicated controllers.
In addition, many, if not all, of the steps for the methods described above
are optional or can be combined or performed in one or more alternative
orders or sequences.
(Dkt. No. 147, Ex. A, col. 14:22-28). Thus, implementation of the disclosed method can be via
conventional technology used conventionally.

B.

The Asserted Claims

In accordance with LR 2.3, the asserted claims are: 15, 42, 49, 51, 54, 80, 81, 82, 90, and
91 ("Asserted Claims"). 1 (Dkt. No. 167-2, p. 3). During reexamination of the '271 patent,
independent claim 1 was cancelled. (Dkt. No. 147-1, Ex. 1, p. 22of26). All of the Asserted
Claims depend directly or indirectly from claim 1, which reads:
A method for providing feedback, comprising:
receiving first data indicative of a physical characteristic
of a first subject from a first device associated with said
first subject and second data indicative of a physical
characteristic of a second subject from a second device
associated with said second subject;
detennining an evaluation of said first data and said
second data, wherein said evaluation is representative
of a state of both said first subject and said second
subject; and
providing a notification regarding said evaluation to a
device.
Because all of the Asserted Claims depend directly or indirectly from claim 1, they each
include the subject matter of claim 1. 35 U.S.C. § 112 (fourth paragraph).2 The following table
summarizes the subject matter added to claim 1 by the Asserted Claims.

1

ICON contends that it also alleges infringement of claims 46, 60, 61, 84, 85, 92, 94, and 95. See
Dkt. No. 166, p. 1, n.3. The court finds that whether these additional claims are considered or
not, the result of the court's analysis, as outlined herein, is the same.
2
The '271 patent was filed May 17, 2001. (Dkt. No. No. 147, Ex. A, face page). This is prior to
the September 16, 2012 effective date of the Leahy-Smith America Invents Act ("AIA"). Thus,
reference herein is to the pre-AIA version of 35 U.S.C. § 112. Biosig Instruments, Inc. v.
Nautilus, Inc., 783 F.3d 1374, 1377 n. 1 (Fed. Cir. 2015).
5

-

Dependent Claim
Claim 15 (depends from claim 14, which
depends from claim 13, which depends from
claim 1)

Added Sub,ject Matter
This claim adds receiving a notification
regarding a plurality of options, and selecting
the device to which the notification is sent
based on selecting one of the plurality of
options.

Claims 42, 80, and 90 (each depends from ·
claim 1)

These claims add that the first device of claim
1 is a sensor that senses a physical
characteristic of a subject; a remote server
receives the first data from the first sensor
through the internet; and the remote server
determines which of multiple options to
provide to the first subject based on first data
and second data.

Claims 49 (depends from claim 42), 81
(depends from claim 80), and 91 (depends from
claim 90)

These claims add that the device is a softwareapplication operating on a portable
computer/cell phone that has a touchscreen
input device.

Claims 51 (depends from claim 42) and 82
(depends from claim 80)

These claims add that the first device of claim1 is a portable wireless sensor configured to
wirelessly connect to a cell phone through a
wireless connection; they also add that the
remote server receives the first data from the
first sensor through the internet through the
wireless connection between the first sensor
and cell phone through a wireless cellular
connection of the cell phone to the internet.

Claim 54 (depends from claim 51)

This claim adds that the first portable wireless
sensor of claim 51 is a heart rate sensor.

(Dkt. No. 147, pg. 5).
It is apparent from the above summary as well as from the full text of the Asserted
Claims that each Asserted Claim articulates the claimed method slightly differently, but claim 1
exemplifies the general concept claimed by the Asserted Claims. It is further apparent that the
general concept claimed by the Asserted Claims is providing and using feedback based upon data
gathered from subjects, which amounts to (1) observing physical characteristic(s) of subjects; (2)
evaluating the characteristic(s); and (3) providing a notification of the evaluation. (See also Dkt.
No. 147, Ex. A, Fig. 1).

6

III.

Legal Standards
A.

Motion for Judgment on the Pleadings

Pursuant to Federal Rule of Civil Procedure 12(c), a party may move for judgment on the
pleadings "[a]fter pleadings are closed- but early enough not to delay trial." To decide a motion
for judgment on the pleadings, the Court accepts as true the non-movant's well-pleaded factual
allegations and all reasonable inferences are indulged in favor of the non-movant. Shaw v.
Valdex, 819 F.2d 965, 968 (10th Cir. 1987). Furthennore, the movant must clearly establish that
no material issue of fact remains to be resolved and that the movant is entitled to judgment as a
matter oflaw. Colony Ins. Co. v. Burke, 698 F.3d 1222, 1228 (10th Cir. 2012).
Whether a claim recites patent-ineligible subject matter is a question oflaw. In re Bilski,
545 F.3d 943, 951 (Fed. Cir. 2008), ajf'd 561 U.S. 593 (2010) ("[w]hether a claim is drawn to
patent-eligible subject matter under§ 101 is an issue oflaw[.]"). This detennination is a threshold
inquiry that is properly decided on the pleadings. See Ultramercial, 772 F.3d 709, 717 (Fed. Cir.
2014). The Federal Circuit and district courts have made clear that Section 101 patent eligibility
may be, and regularly is, decided at the pleadings stage, without claim construction. See, e.g.,
BancorpServs., L.L.C. v. Sun Life Assurance Co. of Canada (US.), 687F.3d1266, 1273-74
(Fed. Cir. 2012) (explaining the Federal Circuit "perceive[s] no flaw in the notion that claim
construction is not an inviolable prerequisite to a validity determination under § 101 ");see also
Epic Tech, 2015 WL 8160884 at *5 (D. Utah 2015). Deciding the patent eligibility of the
Asserted Claims is appropriate now.
B.

Patent-Eligible Subject Matter

Pursuant to 35 U.S.C. § 101, "[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." There are three exceptions to Section 101 's broad patenteligibility principles: laws of nature, physical phenomena, and abstract ideas. Diamond v.
Chakrabarty, 447 U.S. 303, 309 (1980).

7

The Supreme Court most recently addressed determining whether a claim recites patenteligible subject matterinAlice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2355
(2014). In Alice, the Supreme Court reaffirmed the two-step process to detennine whether a
claim recites patent-eligible subject matter set out in Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first step is to determine whether the claims at

issue are directed to patent-ineligible concepts, such as laws of nature, natural phenomena, or
abstract ideas. Id. If the claims recite, for example, an abstract idea, the Court proceeds with
second step to determine if there are additional claim elements that introduce an inventive
concept to the claim that is sufficient to transform the abstract idea into patent-eligible subject
matter. Alice, 134 S. Ct. at 2355.

C.

The presumption of Validity and the Standard of Proof

It is unsettled whether the presumption of validity provided by 35 U.S.C. § 282, along

with the associated clear and convincing standard of proof, applies to a Section 101 challenge.
For example, Judge Mayer's concurrence in Ultramercial concluded that the presumption of
validity does not apply in Section 101 inquiries. 772 F .3d at 717 ("[N]o presumption of
eligibility attends the section 101 inquiry."). In a nonprecedential opinion, a different panel of
the Federal Circuit noted that "[w]e are not persuaded that the district court was correct that a
presumption of validity does not apply." Tranxition, Inc. v. Lenovo (United States) Inc., No.
2015-1907, 2016 WL 6775967, at *4 n.l (Fed. Cir. Nov. 16, 2016). The U.S. Supreme Court has
decided Section 101 cases, such as Alice and Mayo, but it has not discussed or applied a
presumption of validity in its analysis. See Ultramercial 772 F.3d at 720-21 ("Although the
Supreme Court has taken up several section 101 cases in recent years, it has never mentionedmuch less applied-any presumption of eligibility."). 3

3

The Court notes that a presumption of validity as to a Section 101 inquiry would not apply to
the reexamination of the '271 patent because such an inquiry may not be raised in a
reexamination. See In re NTP, Inc., 654 F.3d 1268, 1275-76 (Fed. Cir. 2011) (citing 37 C.F.R. §
1.552) ("[Q]ualification as patentable subject matter under § 101 ... may not be raised in
reexamination proceedings.") (emphasis added). Thus, a presumption of validity, if any exists,

8

In the present case, the Court's decision does not depend upon a presumption of validity,
and the Court would reach its conclusion concerning whether the '271 patent Asserted Claims
are directed to patent-ineligible subject matter regardless of the applicability of the pres·umption.
In addition, the content of the '271 patent is fixed and not disputable, regardless of whether a
clear and convincing standard of proof, or a lesser standard is applied. Consequently, the Court
need not choose between the varying Federal Circuit views on the applicability of the
presumption of validity or its corresponding clear and convincing standard of proof to a Section
101 analysis.

1.
Alice Step One: Are the claims directed to a patent-ineligible abstract
idea?
The Supreme Court has confirmed that abstract ideas, such as ordinary human activities,
are ineligible under Section 101 as being directed to unpatentable subject matter. 4 In Alice, the
Suprenie Court held that computerization of the ordinary human activity of maintaining escrow
accounts is not patentable subject matter. 134 S. Ct. 2347. In Bilski v. Kappas, the Supreme
Court held that the ordinary activity of hedging losses is not patentable. 130 S. Ct. 3218, 3229-30
(2010). And in Mayo, the Supreme Court held that the ordinary human activity of observing
correlations is not patentable. 132 S. Ct. at 1293-94.
Following the Supreme Court's guidance, the Federal Circuit has confirmed that ordinary
human activity, such as collecting and utilizing data by conventional means is not patentable
subject matter. For example, in Content Extraction and Transmission LLC v. Wells Fargo Bank,

Nat. Ass 'n, the Federal Circuit invalidated claims directed to "1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing that recognized data in a memory"
because they merely recited an abstract idea. 776 F.3d 1343, 1347 (Fed. Cir. 2014). In holding
the claims invalid, the Federal Circuit recognized that the "concept of data collection,
would only apply as a result of the U.S. Patent and Trademark Office's original examination and
issuance of the '271 patent, not as a result of a reexamination.
4
As noted above, if the step one analysis results in a conclusion that the claims are directed to an
abstract idea, then the claims are patent ineligible unless the step two analysis shows that the
claims add an inventive concept to the abstract idea as further discussed in the next section.
9

recognition, and storage is undisputedly well-known. Indeed, humans have always performed
these functions." Id. The Federal Circuit recently reinforced point in Electric Power Group, LLC

v. Alstom S.A., stating that "we have treated collecting infonnation, including when limited to
particular content (which does not change its character as information), as within the realm of
abstract ideas." 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (collecting cases).
Abstract ideas are not limited to natural human activities or financial/business methods
and systems. The Federal Circuit has also invalidated patent claims directed to the following
abstract ideas: (1) a method and system for managing an electric power grid; (2) a method of
managing a bingo game; (3) a method and system of tracking and documenting shipping
containers; (4) a method of tracking financial transactions to determine whether they exceed a
spending limit (i.e., budgeting); and (5) a method of price optimization. 5 These are just a handful
of examples of patent-ineligible subject matter, but they have a commonality: abstract ideas such
as natural human activity are not patent-eligible.
2.
Alice Step Two: Do the claims recite additional elements sufficient to
transform them into patent-eligible subject matter?

If a claim involves an abstract idea, the court next "examine[ s] the elements of the claim
to determine whether it contains an 'inventive concept' sufficient to 'transfonn' the claimed
abstract idea into a patent-eligible application." Alice, 134 S. Ct. at 2357. The court looks at the
elements both individually and as an ordered combination. Id. at 2355. In other words, if a claim
recites an abstract idea, it "must include 'additional features' to ensure 'that the [claim] is more
than a drafting effort designed to monopolize the [abstract idea]."' Id.

It is settled that reciting generic or conventional components used in their conventional
intended way does not transfonn an ordinary human activity into patentable subject matter.

5

See respectively, (1) Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016); (2)PlanetBingo, LLCv. VKGS£LC, 576 F. App'x 1005, 1007 (Fed. Cir. 2014); (3)
Wireless Media Innovations LLC 100 F.Supp.3d at 415-415; (4) Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015); and (5) OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir.), cert. denied, 136 S. Ct. 701, 193 L. Ed. 2d
522 (2015).
10

Alice, 134 S. Ct. at 2359 (adding "well-understood, routine, conventional activit[ies]" previously
known to the industry does not constitute§ 101 patent-eligible material). The Supreme Court in
Alice held that elements, such as a computer, add nothing to a claim beyond their well-known
functions, do not transfonn an abstract idea into patent-eligible subject matter. Id. at 2359-60
(using a computer to obtain data, adjust account balances based on the data, and issue automated
instrnctions is well-known and does not transform an abstract idea into a patentable-eligible
invention). The Alice Court explained that using a computer to complete the "well-understood,
routine, conventional activit[ies]" previously known to the industry does not constitute§ 101
patent-eligible material. Id. at 2359; see also Wireless Media Innovations LLC v. Maher
Terminals, LLC, 100 F.Supp.3d 405, 415-415, aff'd 2016 WL 463218 (Fed. Cir. 2016) (physical
components such as vehicles, optical scanners, and computers do not transfonn an abstract idea
into patentable subject matter).

IV.

Analysis and Discussion
Polar argues that on their face, the Asserted Claims recite the abstract idea of providing

and using feedback based on data gathered from subjects. Initially, the Court notes that humans
have received and assessed infonnation and thereafter provided feedback to one or more people
from time immemorial. The aggregation of information and the use of infonnation to provide
advice to people is a practice that has long existed. Today, the process of aggregating
information and providing advice is much quicker than in the past due to, for example, the use of
computers in the process. Likewise electronic sensors enable various information to be gathered
comprehensively and quickly. Sensors have existed in refrigerators, in heaters and furnaces, and
temperature controls for a long time. Information gathering from particular sources through the
use of sensors, absent uniqueness of a sensor, does not change the nature of the information
gathering. As noted above, the '271 patent does not disclose any unique sensor or require any
special hardware or programming.

11

A.

Alice Step One

Polar points to claim 1 as the starting point of its argument because all Asserted Claims
depend directly or indirectly from claim 1. Polar contends that the abstract idea recited by the
Asserted Claims includes three c01mnon and ordinary activities: (1) receiving data indicative of
physical characteristics of two subjects; (2) evaluating the data, which can be as simple as
collecting the received data; and (3) providing a notification regarding the evaluation, which can
be as simple as displaying the received data. (Dkt. No. 147, pgs. 14-15 of21).
Polar compares the Asserted Claims to claims found invalid by the Federal Circuit. For
instance, in Content l!,xtraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, the
Federal Circuit invalidated claims directed to "1) collecting data, 2) recognizing certain data
within the collected data set, and 3) storing that recognized data in a memory" because they
recited an abstract idea. 776 F.3d 1343, 1347 (Fed. Cir. 2014). In holding the claims invalid, the
Federal Circuit recognized that the "concept of data collection, recognition, and storage is
undisputedly well-known. Indeed, humans have always perfonned these functions." Id.
Polar also compares the Asserted Claims to the claims that the Federal Circuit recently
held patent ineligible in Electric Power Group. There, the Federal Circuit analyzed the patent
eligibility of three patents that claimed systems and methods for "performing real-time
performance monitoring of an electric power grid by collecting data from multiple data sources,
analyzing the data, and displaying the results" to determine power grid vulnerability. Electric
Power Group, 830 F.3d at 1351-52. The Federal Circuit observed that it has "treated collecting

information, including when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas." Electric Power Group, 830 F.3d at 1353
(internal citations omitted). The Federal Circuit concluded that the idea of collecting and
analyzing information or data, even when particularly limited, to be an abstract idea. Electric
Power Group, 830 F.3d at 1353-54 (collecting cases) (Dkt. No. 171, pgs. 9-10of16).

Icon takes issue with Polar's description of the Asserted Claims, arguing that the
Asserted Claims are like those at issue in Enfish, LLC v. Microsoft Corp., 822 F3d 1350 (Fed.
12

Cir. 2016) and are therefore directed to patent-eligible subject matter. Icon presented arguments
directed to only two of the Asserted Claims, claims 15 and 80. Those arguments were directed to
distinguishing claims 15 and 80 from the asserted claims in Content Extraction. First, Icon
argued that claim 15 does not merely recite "collecting data," but "separate devices (e.g.,
sensors) sense, measure, and create objective data concerning physical characteristics (e.g., brain
waves) and then transmit the sensed characteristics in the fonn of data from each person," and
that claim 15 "evaluates a combination of the collected data and provides a notification of that
evaluation (not of the collected data), receives notification of options, selects an option and

selects a device based on the option selection." (See Dkt. No. 166, pg. 21-22 of31) (emphasis in
original). Icon asserted that these claim limitations do not have "any counterpart in the Content
Extraction claim." Id. Icon also argued that asserted claim 80 "introduces a key inventive

component in the last clause: detennining which option(s) 'to provide to the first subject."' Id.
Icon argues that in Content Extraction the subjects are hard copy documents, and thus, Content
Extraction is inapplicable to the present case. (Id. at pg. 23 of 31 ). While Icon's arguments

pointed out that limitations of claims 15 and 80 were not identical to the Content Extraction
claim, Icon did not argue or explain why such limitations rendered claims 15 and 80 patent
eligible. Icon did not present separate arguments regarding any of the other Asserted Claims, and
accordingly, the Court need not address those claims.
The Court agrees with Polar and finds that the Asserted Claims are directed to the
abstract idea of providing and using feedback based upon data gathered from subjects.
Controlling precedent establishes that the idea of collecting and analyzing infonnation or data,
even when particularly limited, is an abstract idea under Section 101. See Electric Power Group,
830 F.3d at 1353-54 (collecting cases). The abstract idea claimed by the Asserted Claims recites
three ordinary activities: (1) receiving data indicative of physical characteristics of two subjects;
(2) evaluating the data, which can be as simple as collecting the received data; and (3) providing
a notification regarding the evaluation, which can be as simple as displaying the received data.

13

(See '271 patent, col. 6:56-60; 7:31-35). The Asserted Claims fall directly into the abstract idea
category of collecting and analyzing information or data.
W11ile it is true, as Icon notes, that the Asserted Claims recite "providing a notification"
and utilizing "a sensor," the Federal Circuit has ruled that claims reciting common hardware to
perform functions a human could not, such as a scanner to collect data, do not thereby negate the
abstract nature of the claim. As the Federal Circuit held in Content Extraction, added limitations
must "involve more than perfonnance of well-understood, routine [and] conventional activities
previously known in the industry." 776 F.3d at 1347-48. Icon's argument that sensors make the
Asserted Claims not abstract is unpersuasive. The '271 patent does not disclose and Icon does
not argue that the sensors are of a unique and new structure. Instead, they are disclosed as simply
conventional sensors being used conventionally, which is insufficient to transform the abstract
idea into patent-eligible subject matter. 6
Icon's argues that the recitation of an evaluation and a notification render the Asserted
Claims not abstract. The '271 patent, however, does not disclose such actions as being unique or
novel. Instead, it discloses that these are common actions where an evaluation can be as simple
as summarizing, tabulating, charting, or collecting information; (See e.g., Dkt. No. 147, Ex. A,
col. 6:56 - col. 7:3) and a notification according to the '271 patent can be as simple as an audible
sound. (See e.g., Dkt. No. 147, Ex. A, col. 7:11-16).
Icon points to Enjish to argue that the Asserted Claims are patent eligible. Unlike the
claims here, the Enfish claims were not abstract because they were "directed to a specific
improvement to the way computers operate." Enjish, 822 F.3d at 1336. But, Icon did not argue
that the '271 patent teaches an improvement in how a computer functions, or any new sensor

6

The Comi recognizes that Alice's first step looks at "the focus of the claims, their character as a
whole." Electric Power, 830 F.3d at 1353. In the second step, the Court determines whether
additional limitations represent a patent-eligible application of the abstract idea. Id. Icon,
however, distinguishes Content Extraction in response to Polar' s step one analysis on such a
basis. Thus, the Court addresses certain of Icon's step two arguments in its discussion of Alice's
step one.
14

strncture. Instead, Icon discussed the claims as using conventional sensors to collect objective
data and a conventional computer to evaluate data, send notifications, and make determinations.
(See e.g., Dkt. No. 166, p. 11 of 31: 1-3 and iii! 2 and 3). These are the ordinary functions of
sensors and a computer. Because the '271 patent claims are not directed to an improvement in
how sensors sense or operate, or an improvement in how computers compute, the Asserted
Claims are unlike those in En.fish. See Electric Power Group, 830 F.3d at 1354.
For the foregoing reasons, the Court concludes that the Asserted Claims are directed to an
abstract idea.
B.

Alice Step Two

At step two of the Alice analysis, Polar argues that the Asserted Claims do not recite any
inventive concepts to transform the claimed abstract idea into patent-eligible subject matter. (See,
e.g., Dkt. No. 147, pgs. 16-17of21). To qualify as patent-eligible subject matter, a claim must
recite "significantly more" than the abstract idea, for example by "improv[ing] an existing
technological process,'' and not merely by "implement[ing] [the idea] on a computer." Alice, 134
S. Ct. at 2358. Polar argues that the Asserted Claims do not improve an existing technological
process or product and merely recite using conventional devices for their conventional purpose e.g., sensors for sensing and displays for displaying. (Dkt. No. 147, pgs. 16-17 of21).
Icon argues that the Asserted Claims recite an inventive concept and provides several
different bases for its argument. First, Icon argues that "[a]s an ordered combination, the
additional elements do introduce inventive concepts." (Dkt. No. 166, pgs. 27-28of31). Icon
contends that "by putting a sensor that collects 'data indicative of a physical characteristic' in
communication with a remote, internet-accessible server that also receives similar data about one
or more other subjects, the claims at issue enable the combined evaluation of more than one
subject's objective physical-characteristics data, resulting in the provision of one or more
options." (Dkt. No. 166, pgs. 27-28 of31). Second, Icon relies uponDDRHoldings, LLCv.
Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2016) and Bascom Global Internet Services,
Inc. v. AT&T Mobility, LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) in support of its argument that
15

the Asserted Claims, even if directed to an abstract idea, contain inventive concepts to transform
the claims into patentable subject matter. Third, at the January 19, 2017 hearing, Icon argued that
the Asserted Claims teach a "unique distributed architecture" of databases and, for this reason,
the Asserted Claims contain an inventive concept. (See Hearing Tr., 27:23-31 :2, Jan 19, 2017).
Fourth, Icon argued that certain arguments in Polar's own patent applications, which are
unrelated to the Asserted Claims, estop Polar from making its step two arguments. (Dkt. No. 166,
pgs. 25-27). Fifth, Icon argued that the reexamination of the '271 patent demonstrated that it was
an improvement over existing technology. (Dkt. No. 166, pgs. 28-29 of 31 ).
The Court does not find Icon's arguments persuasive. It finds no inventive concept in the
ordered combination of the claim limitations. The Asserted Claims are quite similar to those
asserted in Electric Power Group, where the Federal Circuit reasoned that "limiting the claims
[directed to collecting data, analyzing the data, and displaying the results] to the particular
technological environment of power-grid monitoring is, without more, insufficient to transform
them into patent-eligible applications of the abstract idea at their core." 830 F.3d at 1354.
Furthermore, "merely selecting information, by content or source, for collection, analysis, and
display does nothing significant to differentiate a process from ordinary mental processes, whose
implicit exclusion from§ 101 undergirds the information-based category of abstract ideas." Id. at
1355. Here, the '271 patent does not disclose and the Asserted Claims do not "require[] anything
other than off-the-shelf, conventional computer, network, and display technology for gathering,
sending, and presenting the desired information" and, therefore, do not include an "inventive
concept of the application." Id.
For the same reason, Icon's argument related to a unique architecture of databases is
unavailing. As noted above, the '271 patent discloses that no unique or specific hardware or
software is needed to implement the disclosed method, stating, for example, that "embodiments
of the present invention are not limited to any specific combination of hardware and software."

(See e.g., Dkt. No. 147, Ex. A, coL 12:25-27). More particularly, the '271 patent discloses that
implementation of the disclosed method could be:
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implemented in many different ways using a wide range of programming
techniques as well as general-purpose hardware or dedicated controllers.
In addition, many, if not all, of the steps for the methods described above
are optional or can be combined or performed in one or more alternative
orders or sequences.
(Dkt. No. 147, Ex. A, col. 14:22-28). Thus the abstract idea underlying the '271 patent can be
implemented via conventional technology used conventionally. Once again, there is no inventive
concept in such an application of conventional technology.
Icon cited a Declaration of Dr. David Brienza in support of its argument that the Asserted
Claims include an inventive concept. But, on a motion for judgment on the pleadings, the court
considers only the Complaint, the Answer, and the documents attached as exhibits to either. See

Burkett v. Convergys Corp., 2:14-CV-376-EJF, 2015 WL 4487706 at *9 (D. Utah, July 23,
2015). The declaration meets none of these criteria. Additionally, whether the Asserted Claims
are directed to patent-eligible subject matter is a question oflaw, and Dr. Brienza's legal
conclusions invade the province of the Court. Accenture Global Servs. v. Guidewire Software,

Inc., 728 F.3d 1336, 1340-41 (Fed. Cir. 2013); see also Genband US LLC v. Metaswitch
Networks Corp., No. 2:14-cv-33-JRG-RSP, 2016 WL 98745 at *3 (E.D. Tex. Jan. 8, 2016)
(striking an expert's opinion on subject matter eligibility because it did nothing more than
analyze the law and offer legal conclusions).
Furthermore, even if the Court were to consider the declaration, it does not alter the
analysis. The Supreme Court has held that "[t]he 'novelty' of any element or steps in a process,
or even of the process itself, is of no relevance in determining whether the subject matter of a
claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr,
450 U.S. 175, 189 (1981) (emphasis added).
Icon's reliance upon DDR Holdings and Bascom is also unpersuasive. Icon argues that
the '271 patent improved existing technology, specifically making "share and compare" possible.
(Dkt. No. 166, pg. 28 of 31 ). But, sharing and comparing information has long been possible.
Icon does not argue or explain why this Court should consider sharing and comparing
information either new or inventive. The Federal Circuit in DDR Holdings found a computer-

17

implemented method of manipulating computer interactions to be patent-eligible because the
"claimed solution amounts to an inventive concept for resolving" the Internet-centric problem of
making two web pages look the same. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d at
1258. The claims here do not provide any inventive functionality in employing generic
components such as sensors and touchscreens. As in Electric Power Group, the Asserted Claims
"specify what infonnation ... to gather, analyze, and display ... by use of [nothing] but entirely
conventional, generic technology." 830 F.3d at 1356 (analyzing the claims-at-issue against DDR

Holdings). The Asserted Claims do not solve or claim to solve any internet or tech-centric
problem.

Bascom is inapposite here for the same reason. In Bascom, the Federal Circuit found that
the patent-at-issue claimed "a technology-based solution (not an abstract-idea-based solution
implemented with generic technical components in a conventional way) to filter content on the
Internet that overcomes existing problems with other Internet filtering systems ... the claimed
invention represents a software-based invention that improves the performance of the computer
system itself." Bascom Global Internet Services, 827 F.3d at 1351. None of the Asserted Claims
relate to or propose a technology-based solution to sensors, the Internet, or a computer.
Icon's argues that Polar should be estopped from arguing patent-ineligibility in this case
because of arguments it made in patent applications that are entirely unrelated to the '271 patent.
The Court sees no basis for estopping Polar.
Finally, Icon's argument based on the reexamination of the '271 patent is legally
irrelevant. The question of patent-eligible subject matter cannot be raised in a reexamination. See

In re NTP, Inc., 654 F.3d 1268, 1275-76 (Fed. Cir. 2011) (citing 37 C.F.R. § 1.552)
("[Q]ualification as patentable subject matter under § 101 ... may not be raised in reexamination
proceedings."). Since this issue cannot be raised in a reexamination proceeding, the USPTO's
decision has no bearing on subject matter eligibility. Id.; see also SmartGene, Inc. v. Advanced

Biological Labs., SA, 852 F.Supp.2d 42, 50 (D.D.C. 2012), afj"d, 555 F.App'x 950 (Fed. Cir.
2014).
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For the foregoing reasons, the Court concludes that the Asserted Claims are directed to an
abstract idea and do not include an inventive concept that would render them patent-eligible.

V.

Conclusion
Because the Asserted Claims are directed to patent-ineligible subject matter, Polar's

Motion for Judgment on the Pleadings is granted.
Let judgment be entered accordingly .

.-riv
DATED this!!____ day of March, 2017.

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