smarTen LLC v. Samsung Electronics America, Inc.
Filing
34
MEMORANDUM OPINION. Signed by District Judge Leonie M. Brinkema on 3/16/18. (gwalk, ) Order to follow
IN THE UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF VIRGINIA
Alexandria Division
SMARTEN LLC,
Plaintiff,
No. l:17-cv-1381 (LMB/IDD)
SAMSUNG ELECTRONICS AMERICA, INC.,
Defendant.
MEMORANDUM OPINION
Before the Court is defendant's Motion to Dismiss [Dkt. No. 15] pursuant to Fed. R. Civ.
P. 12(b)(6), in which defendant argues that this patent infringement action should be dismissed
because none of the patents-in-issue are patent-eligible under 35 U.S.C. § 101. Plaintiff has
responded to the motion and oral argument has been held. For the reasons that follow,
defendant's Motion to Dismiss will be granted.
1.
BACKGROUND
Plaintiff SmarTEN LLC ("plaintiff or "SmarTEN") alleges that defendant Samsung
Electronics America, Inc. ("defendant" or "Samsung") has infringed on four patents which
SmarTEN owns: Patent Numbers 9,280,640 ("'640 patent"); 9,378,657 ("'657 patent");
9,514,655 ("'655 patent"); and 9,728,102 ("'102 patent"). Compl. [Dkt. No. 1] 4.
The four patents-in-suit, all of which are continuations of the same parent application,
disclose a "mobile computing device executing weight, nutrition, health, behavior and exercise
application software" that "serves as a simulated combination personal trainer and
dietician/nutritionist for the user using comprehensive databases storing personalized health.
nutrition and exercise information." '640 patent abs. The patents include 132 claims, each of
which recites a "hand-held mobile weight and exercise management computing device," ^
'640
patent 88:65-67, or a "hand-held mobile nutrition and physical activity management computing
device," see '102 patent 100:11-12. When the applications for these patents were filed, there
were many "commercial programs," such as Weight Watchers, as well as "individual health care
professionals" and "multidisciplinary medical weight management centers" that provided clients
with "nutrhional and exercise direction along with help to keep on track." '640 patent 2:6-16. In
addition, these services had already been incorporated into applications for mobile devices and
tablets such as iPhones and iPads designed "to assist dieters in successfully meeting their weight
loss goals," id. at 2:36-38; however, according to the patents, there existed a "need for an easy to
use weight, nutrition, exercise and behavior monitoring data processing system that, for example,
simplifies data entry for food consumed and/or exercise modes of operation and/or behavior
parameters, while providing valuable health beneficial feedback and rewards for behavior change
and goal achievement," id at 3:3-8. Accordingly, the patents claim to provide software that
"serves as a simulated personal trainer, dietician/nutritionist, and physician's assistant for the
user while having access to massive amounts of personalized health, nutrition and exercise
information." Id at 3:20-23.
At bottom, the invention claimed by the patents is a handheld device with software that
processes, organizes, and displays nutrition and exercise data and provides feedback to the user.
Although the patents claim a "device," they describe software which "may be implemented by
any of a wide array of commercially available, conventional mobile computing devices,
including, for example, conventional smart phones, such as Apple's iPhone 4s or 5, or
Samsung's quad-core processor-based Galaxy S3, a tablet computing device such as Apple's
iPad, or anyof a number of laptop computers." Id at 10:23-28. Similarly, although the claims
reference other hardware, such as a pedometer, a GPS, and a digital camera, see, e.g.. id. at
89:22-25, 91:53-57, the patents do not purport to invent any such hardware, but instead make
clear that the hardware included on conventional mobile computing devices may be used as part
of the invention, ^
id at 10:32-33, 10:64-65, 44:62-64.
Plaintiff alleges that on February 8, 2017, it sent defendant a letter to advise it that its
products were infringing the '640, '657, and '655 patents, and included a copy of the entire '640
patent and the claims of the '657 and '655 patents. Compl. | 5. Using claim 1 of the '640 patent
as anexample, the letter explained that Samsung's smartphones with a built-in S Health App^
infringed plaintiffs patent. Id. Plaintiff alleges that Samsung did not respond to the letter but
instead has continued to sell infringing smartphones.
6. Plaintiff also alleges that, once the
'102 patent issued on August 8, 2017, Samsung's sale of smartphones with the built-in S Health
App also infringed that patent. Id
In this litigation, plaintiff alleges that all Samsung Galaxy S7 and S8 Series smartphones,
as well as all Note 8 Series smartphones, that had the built-in S Health App and were sold in the
United States on or after the issue date of each patent literally and directly infringe claims 1-3, 57, 9-10, 13-20, 24, 26-28, 30, 32, 34, 41, 43-44, 46, 50, 54, and 56 of the '640 patent (issued on
March 8, 2016); claims 1-8, 11, 13-15, 17, 19, and 21 of the '657 patent (issued on June 28,
2016); claims 1-9, 11, 13-17, 20, and 22-23 of the '655 patent (issued on December 6, 2016); and
claims 26-30 of the '102 patent (issued on August 8, 2017). Id ^ 7. In addition, plaintiffalleges
that Samsung's infringement has been wanton, willful, and intentional. Id | 8.
Apparently, the name of the application was changed at some point from the "S Health App" to
the "Samsung Health App." Compl. ^ 5. For the sake of clarity, this Memorandum Opinion will
refer to the application as the "S Health App."
As a result, plaintiff seeks compensatory damages adequate to compensate it for
Samsung's infringement, as well as trebledamages and costs pursuant to 35 U.S.C. § 284 and
attorney's fees pursuantto 35 U.S.C. § 285, as well as an injunction. Id at 4. Samsung has filed a
Motion to Dismiss, in which its sole argument is that each claim asserted against Samsung is
invalid under 35 U.S.C. § 101 for claiming patent-ineligible subject matter, as explained by Alice
Corp. V. CLS Bank Int'l. 134 S. Ct. 2347 (2014).
II.
DISCUSSION
A. Standard of Review
Under Rule 12(b)(6), a civil action must be dismissed if the complaint does not "contain
sufficient facts to state a claim that is 'plausible on its face.'" E.I, du Font de Nemours & Co. v.
Kolon Indus.. Inc.. 637 F.3d 435, 440 (4th Cir. 2011) (quoting Bell Atl. Corp. v. Twombly. 550
U.S. 544, 570 (2007)). Although the court must assume for the purposes of deciding the motion
that all "well-pleaded allegations" are true and must "view the complaint in the light most
favorable to the plaintiff," Philips v. Pitt Ctv. Mem'l Hosp.. 572 F.3d 176, 180 (4th Cir. 2009),
allegations that are merely conclusory need not be credited, s^ Ashcroft v. Iqbal. 556 U.S. 662,
678 (2009).
Under 35 U.S.C. § 282(a), a "patent shall be presumed valid" and the "burden of
establishing invalidity of a patent or any claim thereof shall rest on the party asserting such
invalidity." This presumption requires the party asserting invalidity to "set forth clear and
convincing evidence of invalidity." Seniu Pharm. Co. v. Lupin Ltd.. 780 F.3d 1337, 1353 (Fed.
Cir. 2015). A concurring opinion in a previous en banc Federal Circuit decision has observed
that this "presumption applies when § lOI is raised as a basis for invalidity in district court
proceedings," CLS Bank Int'l v. Alice Corp. Ptv. Ltd.. 717 F.3d 1269, 1284 (Fed. Cir. 2013) (^
banc) (Lourie, J., concurring); however, in affirming the judgment of the Federal Circuit in Alice
and articulating the test for patent-ineligibility that is implicated by defendant's Motion to
Dismiss, the Supreme Court declined to discuss the presumption of validity and did not make
any findings by clear and convincing evidence,
Alice. 134 S. Ct. 2347. Moreover, recent
Supreme Court and Federal Circuit decisions addressing § 101 invalidity claims have done so
without applying a clear and convincing evidence standard. See, e.g.. Ass'n for Molecular
Pathology v. Myriad Genetics. Inc.. 569 U.S. 576 (2013); Core Wireless Licensing S.A.R.L. v.
LG Elecs- Inc.. 880 F.3d 1356 (Fed. Cir. 2018). Although it appears to the Court that the weight
of the relevant case law indicates that the presumption of validity is not applicable to an
ineligibility determination under § 101, the Court finds that Samsung has made the relevant
invalidity showing by clear and convincing evidence. Accordingly, the Court does not find it
necessary to resolve this dispute.
B. Analysis
Under the Patent Act, "[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." 35 U.S.C. § lOL Although not evident from the text of this
provision, § 101 has been interpreted for more than 150 years to contain an "important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice. 134
S. Ct. at 2354 (internal quotation marks omitted). This "exclusionary principle" is driven by a
concern of "pre-emption." Id Because laws of nature, natural phenomena, and abstract ideas are
the "basic tools of scientific and technological work," granting patent-holders a monopoly on
them might "tend to impede innovation more than it would tend to promote it, thereby thwarting
the primary object of the patent laws." Id (internal quotation marks omitted).
At the same time, because "all inventions," at some level, "embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas," courts must "tread carefully
in construing this exclusionary principle lest it swallow all of patent law." Id (internal quotation
marks omitted). Accordingly, the Supreme Court has distinguished between patent-ineligible
claims of abstract ideas and patent-eligible "integrat[ions]" or "applications of such concepts to a
new and useful end." Id. (alterations and internal quotation marks omitted). To that end, the
Supreme Court has developed a two-part analysis for determining whether a patent is invalid for
claiming abstract ideas. First, the court must "determine whether the claims at issue are directed
to" an abstract idea. Id. at 2355. Second, if so, 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 patent-eligible application." Id. (intemal
quotation marks omitted). This second step is, at its core, a "search for an inventive concept—
i.e.. an element or combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept] itself." Id (alteration in
original) (intemal quotation marks omitted).
Before applying the Alice test, the Court must determine whether a single claim is
representative of the asserted claims for purposes of Alice. Samsung argues that Claim 1 of the
'640 patent is representative of each asserted claim. This claim recites, in full:
2
SmarTEN briefly, and unpersuasively, argues that "no Alice analysis is even necessary here"
because the claims require various machine components, such as a pedometer and a GPS
receiver, PI. 0pp. 8-9; however, the Supreme Court and the Federal Circuit have applied the
Alice test to a variety of patents that recite various hardware components, see, e.g.. Alice, 134 S.
Ct. at 2360 (explaining that "system claims [that] recite a handful of generic computer
components configured to implement" an abstract idea should be analyzed in the same way as
"method claims [that] recite the abstract idea implemented on a generic computer"); Intellectual
Ventures I LLC v. Capital One Fin. Corp.. 850 F.3d 1332, 1339-42 (Fed. Cir. 2017);
FairWaming IP. LLC v. latric Svs.. Inc.. 839 F.3d 1089, 1094-96 (Fed. Cir. 2016).
6
A hand-held mobile weight and exercise management computing device having a
housing sized to be held in a user's hand comprising:
a storage subsystem for storing health information including a user profile, said
storage subsystem being operable to store health information about a user, including
body weight, pulse rate information, a calorie-related daily goal, and an exerciserelated goal, said storage subsystem being further operable to store data relating to a
plurality of user-selectable foods and to store data relating to a plurality of userselectable exercises;
a touch screen display operable to display food-related and exercise-related
information to said user;
a user interface operable to receive input from said user and to communicate output
to said user, said user interface including a plurality of user interface displays
displayable on said touch screen display; said user interface being operable to
selectively initiate entry into said user profile or at least one food-related operation or
at least one exercise-related operation, said user interface including a plurality of
user-selectable symbols; said user-selectable symbols being operable to initiate entry
into said user profile or at least one food-related operation or at least one exerciserelated operation;
a GPS receiver in said housing operable to receive input GPS data;
a pedometer in said housing operable to generate step-related data;
said user interface being operable to display on said touch screen display in said
housing: a food mode symbol, a first exercise mode symbol for initiating an exercise
mode that uses position coordinate information based upon said input GPS data, and
a second exercise mode symbol for entry of data regarding a plurality of exercise
modes that do not use position coordinate information based upon said input GPS
data;
a processing subsystem, operatively coupled to said user interface, said GPS
receiver, said pedometer, said touch screen display, and said storage subsystem, said
processing subsystem including:
a food monitoring subsystem being operatively coupled to said storage subsystem
and being operable to receive food-related data from said user, via said user
interface, including data identifying a first set of foods input by said user, and
being operable to link said first set of foods to a specific user meal, said first set
of foods including a first food and a quantity-related parameter identified by said
said food monitoring subsystem being operable to determine the calories
expected to be consumed by said user upon eating said first food, and to store
7
food-related information in said storage subsystem relating to said first food,
including information relating to the nutritional content of said first food and the
calories consumed by said user upon eating said first food, based in part on said
food-related data from said user;
said food monitoring subsystem, in response to user selection of said food mode
symbol, being further operable to generate a food selection display screen identifying
a plurality of meal category symbols that allow the user to select a meal category
including a breakfast category symbol, a lunch category symbol, a dinner category
symbol, and a snack category symbol;
said food monitoring subsystem being further operable to generate a nutritional
rating based at least in part on a combinafion of nutrient parameters in said first food
of said first set of foods; said nutritional rating being further based upon nutritional
rating values ranging from low values, indicating a relatively undesirable
combination of nutrient parameters, with respect to at least one health-related goal,
to high values, indicating a relatively desirable combination of nutrient parameters,
with respect to said at least one health-related goal; said food monitoring subsystem
being further operable to generate a display of said nutritional rating to said user via
said user interface on said touch screen display;
said food monitoring subsystem being further operable to generate a display of
protein and fat content of at least said first food selected by said user, wherein said
nutritional rating is based in part on the protein and fat content of said first food;
said food monitoring subsystem being further operable to generate a list of said
user's favorite foods in response to food-related inputs by said user during food
selection for said specific user meal; and
an exercise monitoring subsystem being operatively coupled to said storage
subsystem and, in response to user selection of said first exercise mode symbol or
said second exercise mode symbol, being operable to receive exercise-related
data from said user, via said user interface, including data identifying a first
exercise expected to be performed by said user;
said exercise monitoring subsystem being operable to determine the calories
expected to be burned by said user upon performing said first exercise, and to
store exercise-related information in said storage subsystem relating to said first
exercise, including the calories burned by said user and an exercise quantityrelated parameter upon said user performing said first exercise, based in part on
data from said user;
said exercise monitoring subsystem being further operable to analyze data related
to user performance of at least one exercise, and to generate exercise feedback for
said user relating to said at least one exercise;
said exercise monitoring subsystem, in response to user selection of said first
exercise mode symbol, being further operable to receive exercise data including
user location data via signals received from said GPS receiver, to determine user
distance traveled using location data from said GPS receiver, and to track user
distance traveled and duration traveled;
said exercise monitoring subsystem, in response to user selection of said first
exercise mode symbol, using said user location data received from said GPS receiver
in said hand-held housing, being further operable to generate the current location of a
motion-related exercise, and to generate a visual depiction in real time indicating the
user traversing the path defined by said user location data;
said exercise monitoring subsystem being further operable to associate each of a set
of exercise levels with at least one user-selectable exercise, said user-selectable
exercise including an associated exercise parameter combination;
said exercise monitoring subsystem being further operable to allow said user to select
a user-selectable exercise to be performed from any one of said exercise levels from
said storage subsystem;
said set of exercise levels ranging from a low exercise level, linked to an exercise
with an associated exercise parameter combination that may be performed by users
having a relatively low fitness level, to a first high exercise level, linked to an
exercise having an exercise parameter combination requiring a relatively high fitness
level to perform; said set of exercise levels including a second high exercise level,
linked to an exercise requiring a relatively high fitness level to perform, where said
second high exercise level is at a lower exercise level than said first high exercise
level, but at a higher exercise level than other exercise levels in said set of exercise
levels, based upon a comparison of exercise parameter combinations associated with
exercises of respective exercise levels being compared;
said exercise monitoring subsystem being further operable, to receive said steprelated data from said pedometer, to determine the number of steps taken by said user
during a step-related exercise, and to calculate the distance traveled during said steprelated exercise;
said processing subsystem being operable to generate a prompt for said user to enter
an exercise-related goal;
said processing subsystem being further operable to monitor said user's weight over
time, and being operable to receive user weight data from said user interface and to
store said user weight data in said storage subsystem, said processing subsystem
being frirther operable to generate a weight-related display visually depicting a
plurality of instances of said user's weight over time on said touch screen display;
said touch screen display being operatively coupled to said processing subsystem to
provide feedback to said user relating to progress towards meeting said daily calorierelated goal, to display at least some of said user's favorite foods to aid in food data
entry by said user, to display said nutritional rating to said user, and to display said
protein and fat content of at least said first food selected by said user; and being
further operatively coupled to display the current location of said motion-related
exercise, to display said visual depiction of said motion-related exercise in real time
indicating the user traversing the path defined by said user location data while the
user is moving along said path, and to display to said user at least one current
exercise parameter during the user's performance of an exercise.
'640 patent 88:65-91:36.
The various other asserted dependent claims are not meaningfully different from Claim 1,
and even the other asserted independent claims make only insignificant tweaks to the device
described in this claim. For example, dependent Claim 5 claims only the "device according to
claim 1, further including a camera, wherein said food monitoring subsystem is operable to
receive image data from said camera of a [sid least one food item," id at 91:53-57, and
dependent Claim 10 claims only the "device according to claim 1, wherein said processing
subsystem is operable to store in said user profile data indicative of said user's age and height,"
id. at 92:29-32. As will be discussed below, the reason Claim 1 is directed at patent-ineligible
subject matter is because it is primarily directed to collecting, analyzing, and displaying data, and
the other asserted claims involve only slight adjustments or additions to the ways in which the
device described in Claim 1 of the '640 patent collects, analyzes, and displays data. Accordingly,
the Alice analysis applies similarly to all of the asserted claims.
SmarTEN contends that "many claims besides claim 1 of the '640 patent illustrate a new and
useful improved machine." PI. 0pp. 21 (formatting altered). SmarTEN's argument on this point
is merely a list of claims from the '640 patent, as well as the other patents, that are different in
some respect from Claim 1 of the '640 patent. See id. at 21-26. Although SmarTEN is correct
that the various other asserted claims are not identical to Claim 1 of the '640 patent, SmarTEN
makes no attempt to argue that the differences among the claims are relevant to the § 101
analysis, and the Court's review of the claims has convinced it that Claim 1 is properly
representative for this purpose.
10
Moreover, the patent prosecution history confirms this conclusion. All of the claims in
the '657 patent and the '102 patent were rejected for being "not patentably distinct from" the
claims of the '640 patent, leading the patentee to file a terminal disclaimer with respect to each
patent rather than contest the rejection.
Def Mem. Ex. G, at 4; id Ex. I, at 3-4.'' For the '655
patent, SmarTEN preemptively filed a terminal disclaimer to avoid such a rejection. Id Ex. H, at
3. Although SmarTEN argues without elaboration that there is no "relationship between
obviousness type double patenting and patent eligible subject matter," the conclusion by both
SmarTEN and the Patent Office that its later-filed patents are "not patentably distinct from" the
claims of the '640 patent only reinforces the Court's conclusion that Claim 1 of the '640 patent is
representative of plaintiffs invention.
1.
Abstract Idea
The first Alice step addresses whether the asserted claims are "directed to a result or
effect that itself is" a patent-ineligible abstract idea. Smart Svs. Innovations. LLC v. Chi. Transit
Auth.. 873 F.3d 1364, 1371 (Fed. Cir. 2017) (internal quotation marks omitted). For example, in
Electric Power Group. LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016), the Federal
Circuit reviewed a group of patents that "describe[d] and claim[ed] 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." The representative claim
recited a "method of detecting events on an interconnected electric power grid in real time over a
wide area and automatically analyzing the events on the" grid by receiving data from a plurality
The doctrine of obviousness-type double patenting prohibits "the issuance of the claims in a
second patent not patentably distinct from the claims of the first patent," In re Longi. 759 F.2d
887, 892 (Fed. Cir. 1985), and, in particular, prohibits a patentee from obtaining a second patent
for an "obvious" modification of a previously patented invention, s^ id A patentee may avoid
such a rejection by filing a "terminal disclaimer," which disclaims any portion of the term of the
second patent past the end of the term of the first patent.
11
id at 894.
of grid and non-grid sources; analyzing and updating the data metrics in real time in areas such
as voltages, power flows, damping, and oscillation modes; and displaying various visualizations
of the measurements and metrics. Id at 1351-52. In short, the "focus of the asserted claims" was
on "collecting information, analyzing it, and displaying certain results of the collection and
analysis." Id at 1353. In analyzing this claim, the Federal Circuit began with the well-accepted
rule that because "[i]nformation as such is an intangible," "collecting" and "analyzing
information," as well as "presenting the results of abstract processes of collecting and analyzing
information," are all "within the realm of abstract ideas." Id at 1353-54. Although the Federal
Circuit recognized that an advance based on a "particular assertedly inventive technology" for
"gathering and analyzing information of a specified content, then displaying the results" could be
patent eligible, the asserted claims in Electric Power Group were found to be "clearly focused on
the combination of th[e]se abstract-idea processes" of gathering, analyzing, and displaying data
and, as such, the Federal Circuit held that they were directed to an abstract idea. Id at 1354.
Samsung argues that the asserted claims at issue in the present civil action fall directly
within the lines drawn in Electric Power Group. The Court agrees. Like the claims in Electric
Power Group, the claims here are primarily directed at collecting, analyzing, and displaying data.
Specifically, Claim 1 of the '640 patent describes a set of subsystems that collect and store
health, food, exercise, and weight data from the user and other sources; step-related data from a
pedometer; and location data from a GPS receiver. '640 patent 89:1-52, 90:15-30, 91:14-21. The
claim further describes how the subsystems can analyze the data to determine, for example, the
calories contained in particular foods or burned by particular exercises, to evaluate user
performance and the user's weight, and to provide feedback to the user about his progress toward
his health goals. Id at 89:38-45, 90:23-54, 81:14-36. Lastly, the claim describes how the device
can display nutritional ratings, a number of different symbols, and "food-related and exerciserelated information," as well as "generate a visual depiction" of the user moving in real time. Id
at 89:9-33, 89:54-90:15, 90:42-49. Taken together, these descriptions make clear that Claim 1 is
directed at collecting, analyzing, and displaying data, which is a patent-ineligible abstract idea.
In response to this simple application of Electric Power Group. SmarTEN primarily
argues that the claims are not directed to an abstract idea but instead are "directed to specific
means for improving the claimed mobile weight and exercise management computing device."
PL 0pp. 13 (formatting altered). SmarTEN specifically cites as improvements the inclusion of a
pedometer and GPS receiver, id at 14-15; the display of the user's path in real time using GPS
data, id at 15; the ability to select GPS-based exercises directly from the initial user interface, id
at 16-17; and the generation of lists of a user's favorite foods, jd at 17-18. This argument is
unpersuasive. As Federal Circuit precedent makes clear, a claim is directed to the improvement
of a device when it is focused on "a specific improvement—[such as] a particular database
technique—in how computers c[an] carry out" a function, rather than on "asserted advances in
uses to which existing computer capabilities could be put." Electric Power Group. 830 F.3d at
1354; see also, e.g.. Smart Svs. Innovations. 873 F.3d at 1372 ("The question in such cases is
whether the focus of the claims is on the specific asserted improvement in computer capabilities
or whether computers are invoked merely as a tool." (internal quotation marks omitted)); Visual
Memory LLC v. NVIDIA Corp.. 867 F.3d 1253, 1259 (Fed. Cir. 2017) ("[T]he claims here are
directed to a technological improvement: an enhanced computer memory system."); Enfish. LLC
v. Microsoft Corp.. 822 F.3d 1327, 1339 (Fed. Cir. 2016) ("In sum, the self-referential table
recited in the claims on appeal is a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory.... [T]he claims are directed to a specific
implementation of a solution to a problem in the software arts.")- SmarTEN does not claim either
in its patent or its brief that the patent is directed to any technological advance or solution to a
technological problem. Instead, it is clear that the claims in issue are directed to asserted
advances in the uses to which already existing technology, particularly conventional mobile
computing devices with built-in GPS receivers and pedometer functions, can be put. As a result,
under the first step of Alice, the claims are directed at an abstract idea: the collection, analysis,
and display of data.
This conclusion is reinforced by the Federal Circuit's determination that claims are also
directed to abstract ideas if they "merely implement an old practice in a new environment."
FairWarning IP. 839 F.3d at 1094. In FairWarning. the court confronted patent claims that were
directed to a computerized "method of detecting improper access of a patient's protected health
information" that involved "generating a rule for monitoring audit log data" based on "access in
excess of a specific volume, accesses during a pre-determined time interval, [and] accesses by a
specific user"; applying the rule to the data to determine whether any such access had been
achieved; storing, "in a memory, a hit if the event has occurred"; and providing a notification of
the event. Id at 1092. The Federal Circuit held that these claims were directed to an abstract idea
under Alice because the claimed rules reflected "the same questions" that "humans in analogous
situations detecting fraud have asked for decades, if not centuries." Id at 1095. Although the
claims required a computer, "it is this incorporation of a computer, not the claimed rule, that
purportedly improves the existing technological process by allowing the automation of further
tasks," and although the claims "purport[ed] to accelerate the process of analyzing audit log data,
the speed increase comes from the capabilities of a general-purpose computer, rather than the
patented method itself" Id (internal quotation marks omitted) (alterations omitted).
SmarTEN's asserted claims function similarly. They reflect a practice that humans have
been engaging in for decades, if not centuries; monitoring and improving one's health by
managing nutrition and exercise. Although the claims require a mobile computing device and
purport to enhance the process of analyzing health-related data, the purported advances come
from the capabilities of a conventional mobile computing device, rather than from anything
specific to the asserted device itself See also DietGoal Innovations LLC v. Bravo Media LLC.
33 F. Supp. 3d 271, 284 (S.D.N.Y. 2014), affd, 599 F. App'x 956 (Fed. Cir. 2015) (finding
claims directed to a "computerized method of selecting meals that align with the user's
individual preferences and nutritional goals (for example, by planning out dinners for the week
that accord with a low-calorie diet) and calculating the dietary impact of the addition or
subtraction of certain foods (for example, by determining how many calories you will save by
swapping out French fries for broccoli)" ineligible under § 101 because these are "conventional
and quotidian tasks" that humans do regularly and the patent "merely provides a new and
presumably better method for calculating and visualizing the dietary impact of certain food
choices," which is "not the kind of 'discover[y]' that § 101 was designed to protect" (alteration
inoriginal) (internal quotation marks omitted)).^ Accordingly, it is clear that plaintiffs claims
are directed to an abstract idea.
2.
Inventive Concept
Under the second Alice step, the Court must "consider the elements of the claim, both
individually and as an ordered combination, to assess whether the additional elements transform
the nature of the claim into a patent-eligible application of the abstract idea." Two-Way Media
Ltd. v. Comcast Cable Comms.. LLC. 874 F.3d 1329, 1338 (Fed. Cir. 2017). This analysis is, at
^Plaintiffs brief in opposition to the Motion to Dismiss does not respond to defendant's
arguments drawn from FairWaming and DietGoaL or even mention these cases.
its core, a search for an "inventive concept," or something that ensures "that the patent in
practice amounts to significantly more than a patent" upon the abstract idea itself. Alice. 134 S.
Ct. at 2355 (internal quotation marks omitted). Although the Federal Circuit has not produced an
enumerated list of such "inventive concepts," it has held that merely "reciting the use of a
generic computer . .. cannot convert a patent-ineligible abstract idea into a patent-eligible
invention." Two-Wav Media. 874 F.3d at 1338.
Here, again, a comparison to Electric Power Group is useful. In that case, the Federal
Circuit held that the claims were not sufficiently inventive: they "d[id] not require a new source
of type of information, or new techniques for analyzing it," nor did they "require any
nonconventional computer, network or display components, or even a non-conventional and nongeneric arrangement of known, conventional pieces." Electric Power Group. 830 F.3d at 1355.
Indeed, "[n]othing in the claims, understood in light of the specification, require[d] anything
other than off-the-shelf, conventional computer, network, and display technology for gathering,
sending, and presenting the desired information." Id. The claims asserted by SmarTEN are
similar. They require gathering and storing data, but from sources such as a GPS, a digital
camera, and a pedometer, as well as from the user inputting information. As the patent makes
clear, all of these sources of information are conventional, and many mobile computing devices
already contain the requisite GPS, digital camera, and pedometer capabilities. See, e.g.. '640
patent 10:23-65, 44:62-64. Similarly, the claims do not provide for any new techniques of
analysis, nor do they include any nonconventional structural components—or even
nonconventional arrangements of conventional structural pieces. Instead, all of the necessary
structural components are commonly included as part of a conventional mobile computing hand
held device, and the patent does not describe how the invention represents a "critical
advancement over the prior art" or an "unconventional technological solution ... to a
technological problem." Amdocs (Isr.) Ltd. v. Openet Telecom. Inc.. 841 F.3d 1288, 1300 (Fed.
Cir. 2016): see also DietGoal. 33 F. Supp. 3d at 287 (finding that "creating customized lists by
retrieving information by a stored database" and "manipulating data based on inputs from the
user, making computations from stored data, and displaying the results on a visual display" are
"conventional computer tasks" and employing them in the food-related data context does
"nothing to 'transform' the nature of the claim from the mental process of meal planning into a
novel method or unique application of that idea").
Rather than responding directly to this argument, SmarTEN argues that there is an
inventive concept underlying the claims because the '640 patent contains "detailed statements of
advantages" showing the inventiveness of the patent and because the "large combination of
features in the [']640 patent claims ensure that any abstract ideas ... are not broadly covered, but
rather are tied down to ensure that the patent claims are not directed to any abstract idea by
itself." PI. 0pp. 18-21. As discussed above, that the claimed device might have some advantages
over prior health management applications is not sufficient to show an inventive concept.
Instead, SmarTEN must identify something more that transforms the nature of the claim—for
example, use of a new source of data or new techniques for analyzing that data, or use of
nonconventional components or nonconventional arrangements of conventional components. For
the reasons described above, SmarTEN is unable to identify any such inventive concept. In
addition, the narrowing limitations in the claim do not demonstrate an inventive concept. The
Federal Circuit has made clear, in post-Alice decisions,^ that even narrow applications of non-
^The single case that SmarTEN relies on for this narrowness argument, Accenture Global Servs..
GmbH V. Guidewire Software. Inc.. 728 F.3d 1336 (Fed. Cir. 2013), predates the Alice decision
inventive concepts are not patent eligible. See, e.g.. Smart Svs. Innovations. 873 F.3d at 1374 n.9
("The operative test here does not require concreteness and narrowness, set Alice. 134 S. Ct. at
2355, rather, the claims must have an inventive concept."); BuvSAFE. Inc. v. Google. Inc.. 765
F.3d 1350, 1353 (Fed. Cir. 2014) ("[T]he exclusion applies if a claim involves a[n] . .. abstract
idea, even if the particular ... abstract idea at issue is narrow."); id. at 1355 ("At best, th[e
claims'] narrowing is an attempt to limit the use of the abstract... idea to a particular
technological environment, which has long been held insufficient to save a claim in this context."
(internal quotation marks omitted) (alterations omitted)). Therefore, it is clear that the asserted
claims do not involve any "inventive concept," and they are therefore patent-ineligible under
§ 101.
III.
CONCLUSION
For the reasons stated above, the Motion to Dismiss will be granted and the Complaint
will be dismissed by an appropriate Order to be issued with this Memorandum Opinion.
Entered this
day of March, 2018.
Alexandria, Virginia
Leonie M. Brinkema
United States District Judge
and does not include any discussion or application of the "inventive concept" (or any similar)
test.
18
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