White Knuckle Gaming v. Electronic Arts
Filing
37
MEMORANDUM DECISION granting 16 Motion to Dismiss ; finding as moot 18 Motion to Strike. Signed by Judge Jill N. Parrish on 6/2/16. (jlw)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
WHITE KNUCKLE GAMING, LLC, a Utah
limited liability company,
MEMORANDUM DECISION AND
ORDER GRANTING DEFENDANT’S
MOTION TO DISMISS
Plaintiff,
v.
Case No. 1:15-cv-150-JNP-PMW
ELECTRONIC ARTS INC., a Delaware
corporation.
District Judge Jill N. Parrish
Defendant.
Before the court are two motions filed by defendant Electronic Arts Inc. (“EA”). First, is
a Motion to Dismiss Based on Unpatentability Under 35 U.S.C. § 101 (the “Motion to Dismiss”).
(Docket 16). Second, is a Motion to Strike, or in the Alternative Dismiss, Plaintiff’s Willfulness
and Agency Allegations (the “Motion to Strike”). (Docket 18). The court held oral argument on
the motions on April 8, 2016. At the conclusion of the hearing, the court took the motions under
advisement. After considering the written submissions 1 and the arguments presented at the
hearing, the court issues this Memorandum Decision and Order GRANTING Defendant’s
Motion to Dismiss. Given this ruling, the Motion to Strike is moot.
INTRODUCTION
White Knuckle Gaming, LLC (“White Knuckle”) brought this action alleging that EA
had infringed on its Patent No. 8,545,575 (the “Patent”). The process Patent at issue allows a
gaming company to update the software parameters of sports video games to reflect recent reallife occurrences. These parameters would include things like performance statistics, athletes’
appearances, and uniform appearances. The parameters are updated by the gaming company on a
1
The court also notes that it reviewed the supplemental authority and responses thereto. (Dockets 32–36).
regular basis and are incorporated into the video game’s software via a network. The actual
game-play of the sports video game would therefore reflect recent real-world developments. The
game would, for example, reflect any recent changes in a sports team’s uniforms.
EA brings this motion to dismiss, arguing that the Patent is invalid because it is aimed at
an unpatentable abstract idea. Specifically, it argues that the Patent is directed towards the
abstract idea of updating software. White Knuckle argues that the Patent is not aimed at an
abstract idea, but rather the Patent allows “updates to the machine-implemented video games
[that] change the performance of the machine-implemented video game itself and improve how
the video game itself performs.”
LEGAL STANDARDS
To survive a Rule 12(b)(6) motion to dismiss, a plaintiff must “state a claim upon which
relief can be granted.” Fed. R. Civ. P. 12(b)(6). The Federal Circuit has explained that while
Federal Circuit law governs the substance of the patent claims, regional circuit law governs the
general procedural standards for Rule 12(b)(6) motions. OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362 (Fed. Cir. 2015). And under Tenth Circuit law, a plaintiff must plead both a
viable legal theory and enough factual matter that, taken as true, makes the claim for relief
plausible on its face. Bryson v. Gonzales, 534 F.3d 1282, 1286 (10th Cir. 2008). The court must
accept the “well-pleaded allegations of the complaint as true and must construe them in the light
most favorable to the plaintiff.” David v. City & County of Denver, 101 F.3d 1344, 1352 (10th
Cir. 1996). But the “tenet that a court must accept as true all of the allegations contained in a
complaint is inapplicable to legal conclusions. Threadbare recitals of the elements of a cause of
action, supported by mere conclusory statements, do not suffice.” Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009).
2
The issue of invalidity under 35 U.S.C. section 101, which is the basis of this motion,
presents a question of law. 2 Accenture Global Servs. GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1340–41 (Fed. Cir. 2013). Although every issued patent is presumed to have been issued
validly, a district court may consider patent validity under Section 101 at the pleadings stage. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (affirming a district court’s finding
of invalidity under Section 101 at the pleading stage).
It is not always necessary to construe the patent claims before determining subject matter
eligibility. See Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266,
1273–74 (Fed. Cir. 2012). In this case, neither party has sought the construction of any of the
terms in the Patent. And both parties agree that claim 1 is a representative claim. This lack of
dispute regarding construction demonstrates that it is appropriate to address validity under
Section 101 at this stage of the proceedings.
ANALYSIS
EA argues that the Patent is invalid because the Patent’s claims are directed to an
unpatentable abstract idea. Because all of White Knuckle’s causes of action are based on the
allegedly invalid patent, EA argues that the Complaint should be dismissed with prejudice.
The categories of patent-eligible subject matter are set forth in 35 U.S.C. section 101,
which provides:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of any 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. “Section 100(b) of the Patent Act defines the ‘process’ category tautologically,
stating that: ‘the term process means process, art or method, and includes a new use of a known
2
The court notes that it found the analysis in Open Text S.A. v. Alfresco Software Ltd., to be persuasive and helpful in
evaluating this case. 2014 WL 4684429 (N.D. Cal. September 19, 2014).
3
process, machine, manufacture, composition of matter, or material.’” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (quoting 35 U.S.C. § 100(b)).
“The Supreme Court has ‘long held that this provision contains an implicit exception:
Laws of nature, natural phenomena, and abstract ideas are not patentable’” OIP Techs., 788 F.3d
at 1363 (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The Supreme Court detailed a two-part test for evaluating claims of patent eligibility in
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). First, the court must
“determine whether the claims at issue are directed to a patent-ineligible concept” such as an
abstract idea. Id. If so, the court must then “consider 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.” Id. (quoting Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1298 (2012)).
I.
The Patent claims are directed to a patent-ineligible concept.
The court must first determine whether the Patent claims are directed to a
patent-ineligible concept. The Supreme Court has repeatedly held that “[t]he ‘abstract ideas’
category embodies ‘the longstanding rule that ‘[a]n idea of itself is not patentable’” Id. at 2355
(quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). And “[a]n abstract idea does not become
nonabstract by limiting the invention to a particular field of use or technological environment,
such as the Internet.” Intellectual Ventures, LLC v. Capital One Bank, 792 F.3d 1363, 1366 (Fed.
Cir. 2015). The Supreme Court has invalidated multiple patents on this basis. See, e.g., Bilski,
561 U.S. 593 (2010) (holding that risk hedging was an abstract idea); Alice, 134 S. Ct. 2356
(holding that patents drawn to computerize the use of a third-party intermediary was an attempt
to patent an idea).
4
The Patent claims in this case fall within the category of abstract ideas. The claims recite
a simple internet-based method of updating the software of sports video games. This is an
abstract idea—updating software in sports video games—and it is performed on a conventional
computer, server, and network. Indeed, the claims do not explain or limit how the computer or
server would be programmed, or how the network would be configured. Rather, the claims
include diagrams and descriptions of generic computers and networks. The claims simply recite
these conventional components performing basic, intended functions, in a routine, conventional
manner.
It is a longstanding business practice in the video game industry to update sports video
games parameters to reflect real-world developments. Indeed, the patent concedes that “video
game producers typically produce professional sports video games” distributed on such video
game media, and the corresponding video game parameters, “once per year.” The Patent also
states that sports video games have long included “parameters[] stored on the video game
medium” to simulate “actual leagues with correct teams, hometowns[,]” “realistic stadiums,”
“specific athletes” and “uniforms.” The Patent purports to improve this practice by storing the
updated software on a “network server,” and coupling a game machine to the network server that
downloads the data. Thus, the Patent claims do nothing more than recite the performance of a
long-established business practice—re-writing software to produce an updated version—using a
general purpose computer and the internet. But as the Federal Circuit has explained, general uses
of the internet “to perform an abstract business practice (with insignificant added activity)” does
not pass muster under § 101. DDR Holdings, LLC v. Hotels.Com, LP, 773 F.3d 1245, 1258 (Fed.
Cir. 2014).
5
The fact that the Patent is limited to the specific field of use of sports video games, or that
it is performed over the internet, makes no difference. The Supreme Court has explained that
“the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit
the use of the [abstract idea] to a particular technological environment.” Alice, 134 S. Ct. at
2358. Accordingly, the court holds that the Patent is directed to a patent-ineligible abstract idea.
II.
There are no additional elements that transform the nature of the claims into
patent-eligible material.
Having determined that the Patent claims are directed to an abstract idea, the court must
“consider 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 patenteligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298). In both Alice Corp. and Mayo, the
Supreme Court described this second step as “a search for an ‘inventive concept’—i.e., an
element or combination of elements that is sufficient to ensure the patent in practice amounts to
significantly more than a patent upon the [abstract idea] itself.’” Id. at 2355 (quoting Mayo, 132
S. Ct. at 1294).
The Supreme Court expressly held that a claim directed to an abstract idea does not
become patent eligible under Section 101 by “merely require[ing] generic computer
implementation.” The Supreme Court explained that the claims in Alice lacked such an inventive
concept because they did “not, for example, purport to improve the functioning of the computer
itself” or “effect an improvement in any other technology or technical field.” Instead, the claims
only applied the abstract idea “using some unspecified, generic computer.”
The Patent claims in this case suffer from the same defect. The Patent claims are directed
to the abstract idea of updating software parameters. They do not become patent-eligible by
merely requiring “generic computer implementation” via a network. As explained above, the
6
gaming industry has a longstanding practice of updating sports video games’ parameters to
reflect real life. The Patent’s only improvement is that the software updates are able to happen
more frequently and quickly because they are done via the internet. But that is accomplished
using a network in the normal manner.
This is exactly the type of “wholly generic computer implementation [that] is not
generally the sort of ‘additional featur[e]’ 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). Indeed, the Federal Circuit has recently explained
that “claiming the improved speed or efficiency inherent with applying the abstract idea on a
computer” does not provide a sufficient inventive concept.” Intellectual Ventures I, LLC v.
Capital One Bank, 792 F.3d 1363, 1367 (Fed. Cir. 2015). Accordingly, the court holds that the
Patent has no additional elements that transform the nature of the claims into patent-eligible
material.
CONCLUSION
The court holds that the Patent is drawn to a patent-ineligible abstract idea, and merely
requiring generic computer implementation fails to transform that idea into a patent-eligible
invention. Accordingly, EA’s Motion to Dismiss is GRANTED, and the Motion to Strike is
moot.
Signed June 2, 2016.
BY THE COURT
______________________________
Jill N. Parrish
United States District Court Judge
7
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?