Certusview Technologies, LLC v. S & N Locating Services, LLC et al
Filing
250
OPINION AND ORDER - GRANTS S&N's Motion for Judgment on the pleadings based on Failure to Claim Patent-Eligible Subject Matter, ECF No. 197. In light of such decision, the Court FINDS AS MOOT plaintiff's 213 Motion for Summary Judgment; and defendants' 216 Motion for Summary Judgment. The Clerk is REQUESTED to entr judgment in Defendants' favor pursuant to Rule 58 of the FR of Civil Procedure. Signed by District Judge Mark S. Davis on 1/21/15. (afar, )
-'
I
riLI
UNITED
STATES
DISTRICT
EASTERN DISTRICT
COURT
JAN 2 " 2015
OF VIRGINIA
Norfolk Division
CLERK, US DISTRICT COUR'
'•_
CERTUSVIEW TECHNOLOGIES,
-OLK. VA
LLC,
Plaintiff,
Civil
v.
S&N LOCATING
SERVICES,
No.
2:13cv346
LLC,
and
S&N COMMUNICATIONS,
INC.,
Defendants.
OPINION AND
This matter is
the
Pleadings
Inc.,
and
S&N
"Defendants") .
that
the
before the Court on a Motion for Judgment on
filed on October 28,
Locating
ECF No.
claims
CertusView
of
Services,
197.
the
Technologies,
invalid for failure
U.S.C.
§ 101.
ORDER
2014
LLC
by
S&N Communications,
(collectively
In such motion,
patents
LLC
Defendants
asserted
("CertusView"
"S&N"
or
against
or
contend
them
"Plaintiff")
by
are
to claim patentable subject matter under 35
The parties'
have filed a joint request for oral
argument on this motion.
Joint Notice Regarding Oral Argument,
ECF
after
No.
record,
228.
the
However,
Court
determines
examining
that
oral
the
argument
briefs
is
and
the
unnecessary
because the facts and legal contentions are adequately presented
and oral argument would not aid in the decisional process.
Fed.
R.
Civ.
P.
78(b);
E.D.
Va.
Loc.
R.
7 (J) .
For
the
reasons
set
forth below, the Court GRANTS Defendants' motion.1
I. FACTUAL AND PROCEDURAL BACKGROUND2
A. Locate Operations and the Patents-in-Suit
Plaintiff
involving
holds,
inter
"technology
alia,
for
the
the
five
related
prevention
of
patents,
damage
to
underground infrastructure," see First Am. Compl. H 8, at issue
in this action:
U.S.
U.S.
8,4 07,001
Patent No.
8,340,359
("the
Patent No.
8,290,204
("the
*359 patent"),
x001 patent"),
U.S.
'344 patent"), and U.S. Patent No.
and, collectively with the
"the patents-in-suit").3
("the
'204,
Patent No.
*204 patent"),
U.S.
Patent No.
8,265,344
("the
8,532,341 ("the '341 patent"
4001,
*359,
and '344 patents,
"Underground man-made objects, such as
1 A Motion for Summary Judgment filed by Defendants on November
14, 2014 and a Motion for Summary Judgment on Anticipation and Certain
Obviousness Arguments filed by Plaintiff on November 14, 2014 are also
pending in this matter. As a result of the Court's November 20, 2014
Order, ECF No. 220, that vacated the deadlines in the Court's March
27, 2014 Rule 16(b) Scheduling Order, the parties have not fullybriefed such motions.
However,
the Court's resolution of Defendants'
motion for judgment on the pleadings renders such motions
Accordingly, the Court will DENY AS MOOT both motions.
moot.
2 For the purpose of deciding the motion currently before the
Court, the facts of this case are drawn from Plaintiff's First Amended
Complaint and are assumed true, with all reasonable inferences from
those
facts
drawn
in
Plaintiff's
favor.
See
Drager
v.
PLIVA
USA,
Inc. , 741 F.3d 470, 474 (4th Cir. 2014) (citing Butler v. United
States, 702 F.3d 749, 751 (4th Cir. 2012); Edwards v. City of
Goldsboro, 178 F.3d 231, 244 (4th Cir. 1999)). The facts recited here
are not to be considered factual findings for any purpose other than
consideration of the pending motion.
3 Plaintiff
patents,
has
respectively,
attached
the
'204,
'001,
'359,
'344,
and
'341
as Exhibits A-E of the First Amended Compl.
utility lines
from
and pipes
excavation
Accordingly,
.
.
. are very
activities."
local
and
federal
susceptible
x001
patent
regulations
to
at
damage
1:18-20.
require persons
who
wish to excavate land to notify owners of underground facilities
in
the
area
in
which
such
area," prior to excavation.
1:29-31.
The
whether they
identified
whether
underground
own or
dig
excavators
wish
to
dig,
See id. at 1:20-23;
facility owners
area.
'204 patent
facilities
at
are
must
then determine
1:31-33.
present
To
at
a
paint,
flags,
A
or
"locate
some
operation"
other marking
is
"the
object
at
the
ascertain
dig
facility owners must conduct a "locate operation."
47-50.
"dig
'204 patent at
operate any underground facilities
underground
1:33-39,
the
area,
See id.
at
application of
or
material
indicate the presence of an underground facility."
to
Joint Claim
Constr. Chart at 2, ECF No. 101-2.
A person performing a locate
operation is a "locate technician."
Id.
To
conduct
locate
operations,
underground facility owners
may use in-house locate technicians
contract
locating
behalf.
that
See
is,
ECF
the
Nos.
at
locate
"the
55-1
"independent
firms" to perform locate operations on their
%204 patent
operation,
or may hire
set
to
1:53-55.
Before
conducting
technician receives a
of
55-2.
instructions
Thus,
as
"locate
necessary
discussed
a
below,
for
the
locate
ticket,"
a
locate
Court
consider such exhibits for the purposes of resolving this motion.
3
may
technician to perform a locate operation."
64,
ECF No.
121;
may include
see
Opinion and Order at
'204 patent at 1:57-59.
"the address
Such locate ticket
or description of
the dig area
to be
marked,
the day and/or time that the dig area is to be marked,
and/or
whether
the
user
is
to
mark
telecommunications
(e.g.,
telephone
power,
sewer,
or
gas,
water,
some
and/or
At the dig area,
uses
a
"locate
electronic
methods
facilities,"
present.
"using
wand,"
to
Id.
paint
device
detect
determine
at
or
to
some
that
the
whether
1:33-37.
The
other
dig
cable
area
television),
the locate technician
"use [s]
presence
a
of
underground
locate
physical
number
exist
in
the
dig
area."
facilities
are
technician then marks,
marking
Id.
of
underground
system,
such
flags," the "[l]ocation of those underground facilities,
which
for
other underground facility."
'204 patent at 1:59-64.
a
the
at
1:37-39.
as
if any,
"Paint
is
generally applied as a sequence of dashes or dots on the surface
. . . directly above the underground facility and is color-coded
to indicate to the excavator the type
facility
present."
identifying
ground
Id.
at
the
Id.
at
underground
directly
above
1:44-47.
A
the
locate
...
1:39-44.
facility
"can
underground
technician
of the underground
Similarly,
be
placed
facility being
dispenses
flags
in
marked."
"paint
Id. at 1:47-48.
the
flags
. . . using various devices."
paint
"is typically applied using a paint marking tool."
and/or
However,
'001
patent at 1:30-31.
resulting
marks."
"It
from
a
Such paint,
locate
flags,
operation
or other marking objects
are
to
as
"locate
'204 patent at 1:50-52.
is
required,
generally
to
recommended,
document
facilities located,
the
i.e.
or
type
and
telephone,
1:65-67,
2:1.
"Often
times [,]
required to document the distance,
in
the
it
some
number
power,
the approximate geographic location of
at
referred
is
jurisdictions
of
gas
underground
. . . etc.,
locate marks."
also
and
Id.
recommended
or 'offset[,]'
or
of the locate
marks from environmental landmarks that exist at the dig area,"
such
as
trees,
structures,
the
curbs,
because
location of
driveways,
such offsets
the
locate
pedestals,
"serve
marks
after
as
evidence
those
documentation
information
'manifest.'"
regarding
Id.
at
containing
a
locate
"some
operation
2:17-18.
supporting
marks
may
Id. at 2:2-16.
or
is
"Currently,
building
locate
have been disturbed by the excavation process."
The
and
all
of
often
locate
the
called
marks
a
are
generally documented using a sketching process which results in
the creation of a paper manifest."
Id. at 2:39-41.
A
manifest
may
typically
contain
a
variety
of
information related to a locate operation including a
sketch or drawing of the dig area that identifies the
approximate
location
of
the
locate
marks
and
environmental landmarks present at the dig area; the
time and date the locate operation was performed;
identification of the entity and the locate technician
performing the locate operation; the entity requesting
the
locate
operation;
the
geographic
address
of
the
dig area; the type of markings used for the locate
operation
(e.g.,
colored
paint,
flags,
or
other
markers); notes from the locate technician; and/or a
technician signature.
Id. at 2:18-29.
Generally,
locate operation,
if an in-house employee conducts the
the facility owner/operator will only document
on the manifest "the existence of its underground facilities and
the approximate location of its locate marks."
However,
if
independent
operation,
of
multiple
contract
underground
locating
facility
firm
to
Id. at 2:30-33.
owners
conduct
hire
the
an
locate
such firm "may document on the manifest some or all
the underground facilities
at
the dig area that
it located
and the approximate location of all the locate marks."
2:33-38.
Manifests
"are
stored
manually
or
Id. at
in
some
jurisdictions are digitally scanned/photographed and the image
stored electronically."
However,
contains flaws.
the
Id. at 2:43-45.
locate
operation
process
described
above
The sketching process that is generally used to
document locate marks, through the creation of a paper manifest,
can be problematic because "[s]ketches are produced by hand, are
not to scale, prone to human error, and costly in drafting time
spent by the locate technician."
Id. at 2:39-43.
"Inaccurate
markings of the utility lines can result in physical damage to
utility
lines,
property damage,
the excavation process
that,
and/or personal
in turn,
can
injury during
expose
the utility
line owner or contractor to significant legal
patent at 1:34-37.
In addition,
liability."
'001
locate operation documentation
is suboptimal as manifests "are not easily interrogated for data
in
any
paper
mechanized
or
digital
Plaintiff,
way"
"because
images."
Id.
the
manifests
at
are
as
According
2:45-47.
stored
to
the inventors of the patents-in-suit "appreciated the
need for new methods
reliability of
and systems
sketches."
Pleadings at 4,
ECF No.
PL's
207.
to
increase
the
Opp'n to Mot.
Thus,
accuracy and
for J.
on
the
the technology claimed in
the patents-in-suit purportedly solves some of the problems that
locate technicians encountered in documenting locate operations.
1.
The
*204
Patent
The '204 patent is titled "Searchable Electronic Records of
Underground Facility Locate Marking Operations."
'204 patent at
1:1-3.
that
patent
In
is
creating
brief,
the
"directed
a
specification
to
searchable
methods,
indicates
apparatus
and
record,
or
electronic
the
'204
systems
for
'electronic
manifest,' relating to a geographic area including a dig area to
be excavated or otherwise disturbed,"
id.
at 2:51-55,
with part
of such electronic record to include "the geographic location of
one
or
more
physical
locate
marks,
applied
to
the
dig
area
during a locate operation . . . somehow identified with respect
to
its
Plaintiff
immediate
has
surroundings
asserted
that
in
Defendants
the
geographic
infringed
Claims
area."
1,
2,
19,
and 21 of
Summ.
J.
the
at 5 n.l,
Plaintiff
'204
patent.
ECF No.
asserts
See PL's Mem.
Supp.
Mot.
for
213.
that
Defendants
method claims of the '204 patent,
infringed
three
Claims 1, 2, and 19.
of
the
Claim 1,
an independent method claim, recites:
A method for generating a searchable electronic record
of a locate operation performed by a locate technician
in a dig area, wherein at least a portion of the dig
area is planned to be excavated or disturbed during
excavation activities, the method comprising:
A)
electronically
receiving
source
data
representing at
least one
input
image of
a
geographic area comprising the dig area;
B) processing the source data so as to display at
least a portion of the at least one input image
on a display device;
C) adding to the displayed at least one input
image at least one digital representation of at
least one physical locate mark so as to generate
a marked-up image including the at least one
digital
representation
of
the
at
least
one
physical locate mark, the at least one physical
locate mark applied to ground in the dig area by
the locate technician during a locate operation
comprising identifying, using the at least one
physical locate mark, a presence or an absence of
at least one underground facility within the dig
area;
and
D)
electronically
transmitting
and/or
electronically storing information relating to
the marked-up image information relating to the
marked-up image so as to generate the searchable
electronic record of the locate operation.
Id. at 34:52-67,
recites:
35:1-9.
"The method of
Claim 2 is dependent upon Claim 1 and
Claim 1,
wherein C)
comprises:
adding,
via a user input device associated with the display device, the
at least one digital representation of the at least one physical
8
locate mark to the displayed at least one input image,
generate
the marked-up
dependent
upon
Claim
Claim 19 recites:
image."
17,
Id.
which,
at
in
35:10-14.
turn,
Claim 19
depends
"The method of claim 17,
so as to
is
on
1.
Claim
wherein the at least
one photographic image comprises one or more of a topographical
image, a satellite image,
Claim 17
recites:
and an aerial image."
"The method of
claim 1,
Id. at 36:4-6.
wherein the at
least
one input image comprises at least one photographic image."
at
Id.
35:66-67.
In
addition,
Plaintiff
asserts
that
one apparatus claim in the '204 patent,
Defendants
Claim 21.
infringed
Claim 21, an
independent apparatus claim, recites:
An
apparatus
searchable
for
facilitating
electronic
record
of
generation
a
locate
of
a
operation
performed by a locate technician in a dig area,
wherein at least a portion of the dig area is planned
to
be
excavated
or
disturbed
during
activities, the apparatus comprising:
excavation
a communication interface;
a display device;
a
memory
to
store
processor-executable
instructions; and
a
processing
unit
coupled
to
interface, the display device,
wherein
upon
execution
of
executable instructions by the
the processing unit:
controls
the
communication
the
communication
and the memory,
the
processorprocessing unit,
interface
to
electronically receive source data representing
at least one input image of a geographic area
including the dig area;
processes
the
source
data
and
controls
the
display device so as to display at least a
portion of the at least one input image;
adds to the displayed at least one input image at
least one digital representation of at least one
physical locate mark so as to generate a markedup image including the at least one digital
representation of
the
at
least
one
physical
locate mark,
the at least one physical locate
mark applied to ground in the dig area by the
locate
technician
during
a
locate
operation
comprising identifying, using the at least one
physical locate mark, a presence or an absence of
at least one underground facility within the dig
area;
and
further
controls
the
communication
interface
and/or the memory to electronically transmit
and/or electronically store information relating
to
the
marked-up
searchable
image
so
to
record
electronic
as
of
generate
the
the
locate
operation.
Id.
at 36:35-67
2.
The
344
Patent
The
is
'344
Patent
titled
"Electronic
Underground Facility Locate Operation."
Manifest
of
'344 patent at 1:1-3.
Such patent is directed to methods and apparatus for generating
a searchable electronic record of a locate operation.
Plaintiff
asserts
claims
that Defendants
have
infringed two apparatus
such patent,
Claims
such patent,
Claims 13 and 17.
Summ.
5 n.l.
J.
at
1 and 4,
Claim
1,
as well
as
two method claims of
See PL's Mem.
an
independent
Supp.
Mot.
apparatus
apparatus
searchable
for
electronic
facilitating
record
of
generation
a
locate
of
a
operation
performed by a locate technician in response to a
locate ticket and in advance of planned excavation
activities at a dig area identified by the locate
ticket, the apparatus comprising:
a communication interface;
10
for
claim,
recites:
An
of
a display device;
a
memory
to
store
processor-executable
instructions; and
a processing unit coupled to the communication
interface, the display device, and the memory,
wherein
upon
execution
of
the
processorexecutable instructions by the processing unit,
the processing unit:
controls
the
communication
interface
to
electronically receive:
ticket
locate
information
ticket,
the
derived
ticket
from
the
information
including
geographic
information
identifying the dig area,
wherein at
least a portion of the dig area may be
excavated
or
disturbed
during
the
planned excavation activities; and
an image of a geographic area including
the dig area;
controls the display device to display at
least a portion of the received image;
combines the electronically received image
with image-related information so as
to
generate the searchable electronic record,
the image-related information comprising:
a geographic location associated with
the dig area;
a
timestamp indicative of
when the
locate operation occurred, the locate
operation
comprising
identifying,
in
advance
of
the
planned
excavation
activities
and
using
at
least
one
physical locate mark applied to ground,
pavement or other surface by the locate
technician during the locate operation,
a presence or an absence of the at
least one underground facility within
the dig area identified by the ticket
information; and
at least one digital representation of
the at least one physical locate mark
applied
to
the
other surface by
ground,
pavement
or
the locate technician
during the locate operation; and
controls
the
communication
interface
and/or
the memory to electronically transmit and/or
electronically
store
11
the
searchable
electronic record of the locate operation so
that performance of the locate operation is
verifiable.
Id.
at
17:40-67,
dependent
upon
18:1-19.
Claim
1.
Claim
Claim
4
4
is
recites:
an
apparatus
"The
apparatus
[C]laim 1, wherein the image comprises an aerial image."
18:26-27.
claim
of
Id. at
Claim 13 is an independent method claim that recites:
A method for generating a searchable electronic record
of a locate operation performed by a locate technician
in response to a locate ticket and in advance of
planned excavation activities at a dig area identified
by the locate ticket, the method comprising:
A) electronically receiving:
Al)
ticket
information
derived
from
the
locate
ticket,
the
ticket
information
including geographic information identifying
the dig area, wherein at least a portion of
the dig area may be excavated or disturbed
during the planned excavation activities;
and
A2) an image of a geographic area comprising
the dig area;
B) combining the electronically received image
with image-related information so as to generate
the
searchable
electronic
record,
the
imagerelated information comprising:
a geographic location associated with the
dig area;
a timestamp
indicative of when the locate
operation occurred,
the
locate
operation
comprising identifying, in advance of the
planned excavation activities and using at
least one physical locate mark applied to
ground, pavement or other surface by the
locate
technician
during
the
locate
operation, a presence or an absence of the
at least one underground facility within the
dig
area
identified
by
the
ticket
information; and
at least one digital representation of the
at least one physical locate mark applied to
ground,
pavement or other surface by the
12
locate
technician
during
the
locate
operation; and
C)
electronically
transmitting
and/or
electronically storing the searchable electronic
record of a locate operation so that performance
of the location operation is verifiable.
Id. at 18:55-67,
on Claim 13,
19:1-21.
Claim 17 is a method claim,
that recites:
"The method of claim 13,
image comprises an aerial image."
3.
The
'359
patent
The
is
'359
dependent
wherein the
Id. at 19:30-31.
Patent
titled
Underground Facility Locate Marks."
"Electronic
Manifest
'359 patent at 1:1-2.
of
Such
patent claims methods and apparatus for generating a searchable
electronic record of a locate operation.
Plaintiff alleges that
Defendants infringed one method claim of the '359 patent, Claim
1.
See PL's Mem. Supp. Mot. for Summ. J. at 5 n.l.
Claim 1,
an independent method claim, recites:
A method for generating a searchable electronic record
of
a
locate
operation
performed
by
a
locate
technician,
the
locate
operation
comprising
identifying, using at least one physical locate mark,
a presence or an absence of at least one underground
facility within a dig area, wherein at least a portion
of the dig area may be excavated or disturbed during
excavation activities, the method comprising:
A) electronically receiving an aerial image of a
geographic area comprising the dig area, at least
a portion of the received aerial image being
displayed on a display device;
B) adding to the displayed aerial image at least
one digital representation of the at least one
physical locate mark, applied to ground, pavement
or other surface by the locate technician during
the locate operation, so as to generate a markedup digital image including the at least one
13
digital
representation
of
the
at
least
one
physical locate mark; and
C)
electronically
transmitting
and/or
electronically storing the searchable electronic
record of
the
locate
operation,
wherein
the
searchable
electronic
record
comprises
the
marked-up digital
image and a data set,
and
wherein the data set comprises:
a set of geographic points along a marking
path
of
the
at
least
one
underground
facility,
the
set
of
geographic
points
including
geographical
coordinates
corresponding to the at least one physical
locate mark;
a property address associated with the at
least one physical locate mark;
a timestamp indicative of when the locate
operation occurred;
a name of the locate technician;
a
name
of
a
company
responsible
for
performing the locate operation; and
a
ticket
number
associated
with
the
locate
operation.
Id.
at 17:53-67,
18:1-21.
4.
The
Locate
'341
patent
Operations
1:1-3.
The
methods,
is
*341 Patent
titled
"Electronically
for Underground Utilities."
specification
apparatus
electronic
record,
geographic
area
otherwise
The
and
or
systems
with
a
dig
such
that
for
'electronic
including
disturbed,"
indicates
it
'341 patent
is
creating
manifest,'
area
to
electronic
Documenting
directed
a
to
excavated
manifest
"to
searchable
relating
be
at
a
or
including
"the geographic location of one or more physical locate marks,
applied to the dig area during a locate operation . . . ."
at
2:61-67.
Plaintiff
asserts
14
that
Defendants
have
Id.
infringed
five claims of
PL's
Mem.
such patent,
Supp.
Mot.
for
Claims 1,
Summ.
J.
7,
at
5
16,
17,
n.l.
and 28.
Claim
1
See
is
an
independent method claim that recites:
A method, comprising:
A) performing a locate operation of at least one
underground facility in a dig area
that
is
planned to
be
excavated or disturbed during
excavation activities
by applying
to
ground,
pavement or other surface in the dig area at
least one physical colored marker to indicate a
presence or an absence of
the at
least one
underground facility below the ground, pavement
or other surface in the dig area;
B) displaying on a display device at least one
digital image of a geographic area comprising the
dig area;
C) adding to the displayed digital image at least
one electronic colored marker corresponding to
the at least one physical colored marker applied
to the ground, pavement or other surface in the
dig area
including
marker;
so as to generate a marked-up image
the at least one electronic colored
and
D)
electronically
transmitting
and/or
electronically storing information relating to
the
marked-up
image
to
document
the
locate
operation performed in A).
Id.
at
34:61-67,
35:1-15.
Claim 7 is dependent on Claim 1 and
recites:
The method of claim 1, wherein B) comprises:
Bl) electronically receiving ticket information
derived from a locate request ticket, the locate
dig
area
and
request
ticket
specifying
the
requesting
performance
of
the
locate
operation;
and
B2)
selecting the at
least one digital
image for
display on the display device based at least in
part on the ticket information received in Bl).
Id.
at
35:46-53.
Claim 16
is
an independent
15
computer-readable
medium claim that recites:
A
computer-readable
storage
device
instructions that,
when executed by
processor, perform a method comprising:
A)
documenting
a
performance
encoded
with
at
least one
of
a
locate
operation of at least one underground facility in
a dig area that is planned to be excavated or
disturbed
during
excavation
activities,
the
locate operation comprising applying to ground,
pavement or other surface in the dig area at
least one physical colored marker to indicate a
presence or an absence of
the at
least one
underground facility below the ground, pavement
or other surface in the dig area, wherein A)
comprises:
B) displaying on a display device at least one
digital image of a geographic area comprising the
dig area;
C) adding to the displayed digital image at least
one electronic colored marker corresponding to
the at least one physical colored marker applied
to the ground, pavement or other surface in the
dig area so as to generate a marked-up image
including the at least one electronic colored
marker;
and
D)
electronically
electronically storing
transmitting
and/or
information relating to
the marked-up image.
Id.
at
36:36-57.
Claim
17
is
also
an
independent
apparatus
claim and it recites:
An apparatus comprising:
a communication interface;
a display device;
a user input device;
a
memory
to
store
processor-executable
instructions; and
a
processing
unit
coupled
to
the
communication
interface,
the display device,
the user input
device, and the memory, wherein upon execution of
the
processor-executable
instructions
by
the
processing unit, the processing unit:
A)
documents
a
performance
of
a
locate
operation
of
at
least
one
underground
16
facility in a dig area that is planned to be
excavated or
disturbed during
excavation
activities, the locate operation comprising
applying
to
ground,
pavement
or
other
surface
in
the
dig
area
at
least
one
physical
colored
marker
to
indicate
a
presence
or
an
absence
of
the
at
least
one
underground
facility
below
the
ground,
pavement or other surface in the dig area,
wherein in A), the processing unit:
B) displays on the display device at least
one
digital
image of
a
geographic
area
comprising the dig area;
C) adds to the displayed digital image at
least
one
electronic
colored
marker
corresponding to the at least one physical
colored
marker
applied
to
the
ground,
pavement or other surface in the dig area so
as to generate a marked-up image including
the
at
least
one
electronic
colored marker;
and
D)
electronically
transmits
electronically stores information
to the marked-up image.
Id. at 36:58-67,
it
recites:
37:1-20.
"The
one timestamp
Claim 28 is dependent on Claim 17 and
apparatus
information relating
to
the
of
claim
marked-up
17,
wherein
image
in
includes
D) ,
at
the
least
indicative of a date and/or a time at which the
locate operation is performed in A)."
5.
The
and/or
relating
'001 patent
is
The
'001
titled
Id. at 38:47-50.
Patent
"Systems and Methods
for
Using
Location Data to Electronically Display Dispensing of Markers by
a
Marking
System
or
Marking
Tool."
'001
patent
at
1:1-4.
Plaintiff alleges that Defendants have infringed Claim l of such
patent.
See PL's Mem. Supp. Mot. for Summ. J. at 5 n.l.
17
Claim
1 is an independent system claim that recites:
A system for electronically displaying information
relating to use of a marking system or a marking tool
configured to dispense one or more markers to mark, on
ground, pavement, or other surface, a location of an
underground utility, the system comprising:
a processor to receive location data relating to
the use of the marking system or the marking
tool;
and
a display device
communicatively coupled
to
the
processor,
wherein the processor uses the location data to
control the display device so as to visually
display a dispensing of the one or more markers
that mark the location of the underground utility
on an electronic representation of an area that
is
marked
and
includes
the
location
of
the
underground utility.
Id.
at
8:14-28.
B. Procedural History
On May 29,
2013,
Plaintiff filed an action in this Court
alleging
that
Defendants
"have
infringed,
infringe,
literally and/or under the doctrine of equivalents,"
four of the five patents-in-suit "by making,
sell,
and/or
claims
of
inducing
the
others
[patents] ."
6,
selling
2013,
devices
[patents]
to
and/or
and
by
infringe
actively
one
or
23,
27,
continue
covered
and
more
filed
an
amended
32,
ECF No.
55.
by
the
intentionally
claims
Compl. 11 14, 18, 22, 26, ECF No. 1.
Plaintiff
to
using, offering to
services
infringement of all five patents-in-suit.
19,
and
of
the
On December
complaint,
alleging
See Am. Compl. 11 15,
On December 23,
2013,
Defendants
filed an Answer denying Plaintiff's allegations of infringement.
18
Defs.'
Answer
infringement,
various
at
6-10,
including
affirmative
patents-in-suit.
defenses,
at
61.
or
April
heard argument
terms.
2014,
from
On May 16,
Opinion and Order
the
Defendants
the
the
.
[and]
ECF No.
accorded
held
a
concerning
121.
their
assert
"declaratory
Markman
hearing
of
interface
and/or
and
the
unit;"
the
"marking system or a marking tool."
28,
33,
and
ten disputed claim
construction and
ordinary
searchable
electronic
"display
memory;"
meaning:
device;"
"electronically
transmitting/transmit and/or electronically storing/store;"
at 21,
with
The Court determined that
plain
"processor/processing
"communication
also
the
("Markman Opinion and Order") construing such
"generate/generating/generation
record;"
of
invalidity"
the following six disputed terms required no
be
allege
Id. at 15-20.
Court
parties
.
any
2014, the Court issued a claim construction
disputed claim terms.
should
and
seeking
.
deny
invalidity
11-12.
non-infringement
1,
contributory,
including
regard to all five patents-in-suit.
On
Defendants
Plaintiff,
against
of
No.
induced
Id.
counterclaims
judgment[s]
ECF
37, 40,
68.
Markman Opinion and Order
The Court construed the
remaining
four disputed claim terms as follows:
"location data"
-
"data
that
identifies
a
geographic
location;"
"information relating to the marked-up image"
- "non-
image data relating generally to a locate operation;"
19
and
"searchable electronic record of a locate operation" "one or more computer-readable files that include some
or all of the information regarding a locate
operation,-" and
"locate [request] ticket" - "the set of instructions
necessary for a locate technician to perform a locate
operation."
Id.
at 44,
49-50,
58,
63-64.
On August 28, 2014, Defendants moved for an order requiring
Plaintiff to limit the number of claims it has asserted against
Defendants.
Claims,
Defs.'
ECF No.
140.
part, Defendants'
to
elect
claims
Renewed
Mot.
to
On October 1, 2014,
fifteen
Plaintiff
reduced
Defendants
representative
originally
the
to
number
those
patents-in-suit.
Number
of
Asserted
the Court granted,
in
motion to limit claims and ordered Plaintiff
had
claims
of
stated
the
sixty-eight
against
Defendants.
Accordingly,
patent
above
from
asserted
See Opinion and Order, ECF No. 159.
now
Limit
with
claims
Plaintiff has
asserted
respect
to
each
against
of
the
PL's Mem. Supp. Mot. for Summ. J. at 5 n.l;
Defs.' Mem. Supp. Mot. for J. on the Pleadings at 2 & n.l, ECF
No.
198.
In addition,
the
Court ordered Defendants
maximum of
twenty-five
Plaintiff.
Opinion and Order, ECF No. 159.
On
October
28,
prior
2014,
references
Defendants
for judgment on the pleadings.
motion,
art
filed
ECF No. 197.
to
to elect a
the
assert
instant
motion
In support of such
Defendants contend that the patents-in-suit are
20
against
invalid
because
they
U.S.C.
8.
do
§ 101.
not
claim
Defs.'
patentable
Mem. Supp. Mot.
According to Defendants,
whether
a
forth by
Ltd.
v.
the
CLS
(2014),
claim
patent
States
under
35
two-step test governing
claims
Supreme
Bank International,
matter
for J. on the Pleadings at
under the
impermissibly
United
subject
an
abstract
Court
idea,
in Alice
573 U.S.
, 134
set
Corp.
S.
Pty.
Ct.
2870
Plaintiff's patents are invalid because they attempt to
an
abstract
idea
and
do
not
transform
patent-eligible invention.
See id. at 11,
step,
the
Defendants
contend
such
14.
idea
into
a
Under the first
patents-in-suit
do
not
claim
patentable subject matter because they merely purport to claim
the abstract idea of "recording a locate operation."
Under
the
hardware
suit
do
second
components"
not
operation
in
Defendants'
recited in
transform
into
Additionally,
asserted
step,
the
the
abstract
view,
claims
idea of
patent-eligible
subject
their brief,
Defendants
in
method
claim,"
Claim
1
of
of
the
the
"generic
patents-in-
recording
matter.
the
Id. at 11.
Id.
compare
'204
a
"an
locate
at
14.
exemplary
patent,
to
an
alleged "conventional method of recording a locate operation" to
demonstrate
computerized
that
terms
such
claim
...
recording a locate operation."
On
November
13,
2014,
opposition to Defendants'
"does
to
the
nothing
more
conventional
than
practice
add
of
Id. at 3-4.
CertusView
filed
its
brief
in
motion for judgment on the pleadings.
21
ECF
No.
207.
procedural
Plaintiff
and
substantive
Plaintiff contends
material
opposes
outside
grounds.
that Defendants'
the
pleadings,
"conventional"
locate operation.
the
at
Pleadings
Defendants'
3.
As
motion
Regarding
on
both
procedure,
motion improperly relies on
especially
in
describing
PL's Opp'n to Mot.
corollaries
to
its
a
for J. on
contention
that
Defendants' motion for judgment on the pleadings is, in reality,
a
motion
that
for
summary
Defendants'
judgment
motion
must
in
fail
disguise,
because
Plaintiff
it
asserts
lacks
factual
the
support requisite for the Court to grant summary judgment to S&N
and also constitutes an impermissible second motion for summary
judgment in addition to Defendants' currently pending motion for
summary judgment, ECF No. 216,
See id.
under this Court's local rules.
at 16-17.
Regarding
substance,
Plaintiff
begins
by
arguing
that
Defendants have failed to carry their burden of establishing the
invalidity
evidence
of
the
because
patents-in-suit
they
have
not
by
clear
provided
and
a
convincing
claim-by-claim
analysis of the validity vel non of the patents-in-suit.
18.
Next,
CertusView
contends
that
the
Id. at
patents-in-suit
are
patentable under the first part of the Alice test because they
are
not
directed
operation."
locate
Id.
operation
to
the
abstract
at 19-20.
is
not
an
idea
of
"recording
In Plaintiff's view,
abstract
22
idea
because
a
locate
recording a
recording
a
locate
operations
because the
"necessarily,
a
real
world
operation"
"patents do not describe any method for doing that
automatically."
the
is,
Id.
"application of
at
20.
paint,
Also,
flags,
Plaintiff
or
underscores
that
some other marking object
or material to indicate the presence of an underground facility"
is "a concrete process performed by a real person,
world."
in-suit
Id.
do
at 19.
not
contends that
recording
attempt
the
locate
Plaintiff,
the
As a
further indication that the patents-
to
claims
claim
in
that
an
abstract
idea,
the patents-in-suit do
operations.
fact
in the real
Id.
the
at
claims
20-21.
at
Plaintiff
not
preempt
According
issue
"concern
to
the
performance of real world steps" indicates that the patents are
not directed to an abstract idea.
With
respect
contends
that
subject
matter
to
its
the
second
patents
because
Id.
they
are
at 21.
prong
of
directed
are
Alice,
to
CertusView
patent-eligible
transformative.
Plaintiff
argues that "the use of an image or representation of a dig area
is transformative" as an "inventive contribution" over the prior
art, rather than merely a recitation of the conventional methods
used to conduct locating operations.
also contends
that,
taken together,
Id.
all
at
the
22-23.
Plaintiff
claim elements
in
each patent are patent-eligible because they provide a new and
useful process in combination.
to
Plaintiff,
the
Id. at 24.
patents-in-suit
23
Moreover, according
involve
computerized
components
that
"play
a
significant
claimed method to be
performed,
an obvious
for permitting
more
mechanism
quickly"
inventions
include
of
because
the
"no
computerized
a
art
patents"
elements"
in
permitting
the
rather than function solely as
prior
asserted
part
solution
systems
and
be
achieved
contemplated
"it
"to complete
to
was
the
would allow locate technicians the ability to
the
necessary
to
invention that
rely on an image
or other electronic representations of a dig area when preparing
a sketch or manifest."
Id. at 24.
Finally,
CertusView asserts
that courts which have invalidated patents that claimed abstract
ideas
have
extremely
done
broad
so
with
and
respect
high-level
to
patents
concepts
directed
that
"to
presented
significant risk of preemption—unlike the situation here."
at
a
Id.
25.
On
November
20,
2014,
Defendants
filed
Plaintiff's brief in opposition to Defendants'
221.
S&N's
substantive
reply
addresses
challenges
to
both
S&N's
their
motion.
Certusview's
motion.
reply
to
ECF No.
procedural
Accordingly,
and
this
matter is now ripe for disposition.
II.
Federal
judgment
on
Rule
the
of
STANDARD
Civil
pleadings.
OF
Procedure
REVIEW
12(c)
Such Rule
governs
provides:
motions
for
"[a]fter
the
pleadings are closed—but early enough not to delay trial—a party
may move for judgment on the pleadings."
24
Fed. R. Civ. P. 12(c).
The Court of Appeals for the Fourth Circuit has noted:
The
standard
for
Rule
12(c)
motions
is
the
same
as
applied to Rule 12(b) (6) motions, which should only be
granted if, "accepting all well-pleaded allegations in
the plaintiff's complaint as true and drawing all
reasonable
factual
inferences
from
those
facts
in
the
plaintiff's
favor,
it
appears
certain
that
the
plaintiff cannot prove any set of facts in support of
his claim entitling him to relief."
Priority Auto Grp.,
(4th Cir. 2014)
231,
244
Inc.
v.
Ford Motor
Co.,
757
F.3d
137,
(quoting Edwards v. City of Goldsboro,
(4th Cir.
1999)).
"A Rule 12(c)
139
178 F.3d
motion tests only the
sufficiency of the complaint and does not resolve the merits of
the
plaintiff's
PLIVA
USA,
claims
or
741
F.3d
Inc.,
Butler v. United States,
Under
motion
Federal
under
disputes
470,
474
702 F.3d 749,
Rule
12(b)(6)
any
of
or
Civil
12(c),
of
fact."
(4th
752
Cir.
matters
2014)
(4th Cir.
Procedure
Drager
(citing
2012)).
12(d),
outside
are presented to and not excluded by the court,
"[i]f
the
the
discretion
to
either
accept
on
pleadings
the motion must
be treated as one for summary judgment under Rule 56."
has
v.
materials
A court
beyond
the
pleadings in considering a Rule 12(c) motion, thereby converting
such motion
into
such materials
al.,
Moore's
and
a
motion
not
Federal
Charles Alan Wright,
Practice
and
for
summary
consider
Practice
them.
§
judgment,
See
2
12.34 [3] [a]
or
James
(3d
to
Wm.
ed.
Moore
2014);
Arthur R. Miller & Mary Kay Kane,
Procedure
§
1366
25
(3d
ed.
2004
&
reject
Supp.
et
5C
Federal
2014) .
However,
though
a
pleadings without
for
summary
instrument
court
not
consider
converting a Rule
judgment
that
may
under
Rule
is an exhibit
pleading for all purposes."
12(c)
56,
to
matters
outside
the
motion into a motion
"[a]
copy
a pleading
is
of
a
a part
written
of
the
Fed. R. Civ. P. 10(c).
III.
DISCUSSION
Defendants contend that they are entitled to judgment as a
matter of
law on Plaintiff's patent infringement claims because
Plaintiff's
eligible
patents
subject
are
invalid
matter
under
for
35 U.S.C.
Plaintiff has opposed Defendants'
substantive
grounds.
failure
can
below,
reach
the
the
Court
unavailing.
finds
Therefore,
substance of Defendants'
A.
As
an
Defendants'
of
first,
initial
Rule
Defendants'
Court
Plaintiff's
that
such
Procedural
the
motion
pleadings
procedural
motion
and,
will
to determine whether
As
procedural
will
then
discussed
arguments
analyze
the
Issues
Court
is
a
must
consider
procedurally
challenge
improperly
therefore,
relies
must
26
be
to
on
Defendants'
material
considered
a
whether
appropriate
vehicle to attack the validity of Plaintiff's patents.
of
response,
motion.
matter,
12(c)
Court
the
motion.
Plaintiff's
the
In
patent-
motion on both procedural and
Accordingly,
merits
claim
§ 101.
consider Plaintiff's procedural challenges
it
to
The crux
motion
is
outside
the
motion
for
summary judgment.
motion,
According to Plaintiff,
Defendants'
Additionally,
motion
for
in
motion cannot be
Plaintiff's view,
summary
judgment,
as a summary judgment
decided on the
given that
Defendants'
pleadings.
such motion is a
motion
must
fail
because it lacks sufficient factual support.
As
the
recognized,
law
.
1335
.
.
In re
Cir.
Co.
Roslin
at
(E.D.
(quoting Accenture
of
pleadings,
the
Federal
that
law,
if
1266,
Circuit
has
Sept.
Cir.
F.3d
LLC v.
1273
(Fed.
'may
contain
Sys.
3,
2014)
1333,
Sun Life
Cir.
2012)).
underlying
Corp.
v.
GmbH v.
(Bryson,
Guideware
2013)).
Thus,
eligibility under
Court
750
Am.
, Case No. 2:13cv655, 2014 WL
1341 (Fed.
the
Servs.,
Conversion
Servs.,
patent
the
(Edinburgh),
conclusion
Tex.
Global
728 F.3d 1336,
question
F.3d
F. Supp. 2d
*4
given
Inst.
Loyalty
Inc.,
4364848,
687
legal
issues.'"
matter,
for
(citing Bancorp
Can.,
"that
Airlines,
Inc.,
Appeals
2014)
of
Nevertheless,
factual
of
"[s]ection 101 patent eligibility is a question of
."
(Fed.
Assurance
Court
can
eligibility
of
resolve
the
J.)
Software,
as a general
section
such
Cir.
101
is
a
issue
the
matter
subject
on
of
the
patents-in-suit does not involve an underlying factual dispute.
Indeed,
numerous
patent-eligible
motion.
1350,
See,
1352
courts
subject
e.g.,
(Fed.
have
resolved whether
matter
buySAFE,
Cir.
a
patent
on
a
defendant's
Inc.
v.
Google,
2014);
Amdocs
27
(Isr.)
Rule
Inc.,
Ltd.
claims
12(c)
765
v.
F.3d
Openet
Telecom,
Inc. ,
5430956,
at
2014
WL
F.
*1
Supp.
(E.D.
4364848,
Va.
at
that,
inviolable
prerequisite
101,"
"it
Oct.
*4.
indicated
,
24,
That
although
will
3d
a
ordinarily
be
I:10cv910,
2014);
said,
"claim
to
No.
Loyalty
the
validity
the
determination
understanding
matter."
of
of
the
Bancorp,
patent
basic
eligibility
character
is
often
resolve claim construction disputes prior to a
for
Circuit
of
has
not
determination
desirable—and
WL
Conversion,
Federal
construction
2014
an
under
§
necessary—to
§ 101 analysis,
requires
the
claimed
a
full
subject
687 F.3d at 1273-74.
Contrary to Plaintiff's contention,
the Court finds that it
is appropriate at this juncture of the proceedings for the Court
to
ascertain,
based
patents-in-suit
solely
on
the
claim patent-eligible
pleadings,
whether
subject matter.
101 eligibility is a question of law, Roslin Inst.,
1335,
that
Alice,
101
134
hinges
S.
Ct.
analysis
on
at
the
claims
23 55
involves
of
the
steps,
both
attached
the
specifications
of
of
the
Rule
10(c),
the
Court
resolving this Rule 12(c)
claim-centric
issue
of
may
consider
motion.
section
28
101
see
which
require
Here,
therefore,
such
validity,
as
pursuant
specifications
Accordingly,
a
Plaintiff
patents-in-suit
exhibits to the First Amended Complaint and,
to
750 F.3d at
the Court's section
consideration of the patent claims at issue).
has
Section
patents-in-suit,
(indicating that
two
the
in
to resolve the
the
Court
finds
that
it
need
presented
not
in
the
themselves.
parties'
and
rely
on
any
factual
specifications
Moreover,
the
matter
of
Court
other
the
already
than
that
patents-in-suit
has
resolved
the
claim construction disputes through its Markman Opinion
Order
and
now
has
a
"full
understanding
character of the claimed subject matter."
1273-74;
see
also
Loyalty
Therefore,
for
those
contention
that
the
Conversion,
reasons,
Court
the
cannot
of
Bancorp,
2014
WL
Court
687
this
basic
F.3d at
4364848,
rejects
resolve
the
at
*4.
Plaintiff's
motion
on
the
pleadings.
Importantly,
factual disputes
issue of
the Court further concludes that there are no
that could affect
section 101
validity.
the
Court's analysis of
The only factual
dispute
the
that
Plaintiff has brought to the Court's attention in opposition to
Defendants'
motion
"conventional"
concerns
locate
Defendants'
operation,
characterization
including
Defendants'
of
chart
comparing such an operation to Claim 1 of the '204 patent.
PL's Opp'n to Motion for J. on the Pleadings at 15.
the
Court
parties
locate
need
over
not
how
operations
resolve
locate
because
the
factual
technicians
that
dispute
dispute
conduct
does
a
See
However,
between
the
"conventional"
not
affect
the
Court's conclusion that the patents-in-suit do not claim patent-
eligible subject matter.
exercise
its
discretion
Therefore,
to
the
consider
29
Court will decline to
matters
outside
the
pleadings in resolving this Rule 12(c) motion.
P.
12(d).4
because
The Court finds that such decision is appropriate
the
issue
presented—and
considering
extent
the
the
of
section
Court
disputed
that
outside
See Fed. R. Civ.
Defendants'
the
pleadings,
can
101
validity
adequately
facts
outside
briefs
the
rely
including
on
the
Defendant's memorandum in support of
is
adequately
resolve
it—without
pleadings.
factual
chart
its motion,
To
information
contained
the
will
extent
view
the
the
Court
facts
considers
the
regarding
matter
such
at
in
the Court will
not consider such materials in resolving this motion.5
to
the
all,
Rather,
the
"conventional"
Court
locate
operations in the light most favorable to the Plaintiff based on
the
facts
presented
specifications
incorporated
of
the
therein.
in
Plaintiff's
pleadings
patents-in-suit
Accordingly,
given
the
the
Plaintiff
that
and
has
absence
of
any
other factual dispute that could affect this Court's ruling, the
4 Having declined, under Rule 12(d), to convert Defendants' Rule
12(c)
motion
into
a
Rule
56
motion,
Plaintiff's argument that Defendants
Rules by filing two Rule 56 motions.
5 Although,
to
determine
"conventional" locate operations,
chart in Defendants' memorandum in
notes
that
the
specifications
descriptions of
the
traditional
the
Court
violated
need
this
not
consider
District's
Local
how locate technicians conduct
the Court has not considered the
support of their motion, the Court
of
the
patents-in-suit
contain
process of conducting a locate
operation.
'204 patent at 1:26-67, 2:1-47; '359 patent at 1:15-67,
2:1-44; '344 patent at 1:15-67, 2:1-36; '341 patent at 1:36-67, 2:157; '001 patent at 1:18-47.
Thus, the Court may consider those
descriptions because such specifications are attached to Plaintiff's
First Amended Complaint as exhibits and are part of the pleadings.
Fed.
R.
Civ.
P.
10(c).
30
Court concludes that it is appropriate to resolve the
section
101
Conversion,
validity
under
2014 WL 4364848,
Rule
12(c).
See,
issue of
e.g.,
Loyalty
at *4.
B. The Validity of the Patents-in-Suit
Having
resolve,
concluded
under
that
Rule
it
12(c),
is
whether
patent-eligible subject matter,
substance of
discussion
Defendants'
of
patent
Alice.
Thereafter,
of
asserted
the
appropriate
the
motion.
Court
patents-in-suit
The
Court
under
35
the Court will assess,
of
the
to
claim
the Court will now consider the
eligibility
claims
for
will
begin with a
U.S.C.
in turn,
the patents-in-suit
§
101
and
whether each
merely claim
an
abstract idea, rendering such claims invalid and indicating that
it is "certain" that Plaintiff "cannot prove any set of facts in
support of
Auto,
[its]
claim entitling
[it]
to relief."
See Priority
757 F.3d at 139.
1. Patent-Eligible Subject Matter
The
Intellectual
Constitution
Property
empowers
Congress
science and the useful
authors
and
inventors
arts,
the
writings and discoveries."
to
such
eligible
invents
authority,
for
or
discovers
"[t]o
exclusive
U.S.
new
31
the
promote
defined
by
and
of
limited times
to
their
I,
the
providing
useful
States
progress
to
art.
United
the
for
right
Const,
has
protection
any
of
by securing
Congress
patent
Clause
§ 8.
respective
Pursuant
subject
that
process,
matter
"[w]hoever
machine,
manufacture,
or
composition
improvement thereof,
the
conditions
may
of
matter,
or
obtain a patent
and requirements
of
this
any
new
and useful
therefor,
title."
subject
35 U.S.C.
101.
However, as the Supreme Court reiterated in Alice,
have
long
exception:
held
that
[l]aws of
this
provision
nature,
natural
ideas are not patentable.'"
contains
phenomena,
134 S. Ct. at 2354
for Molecular Pathology v. Myriad Genetics,
Ct. 2107,
2116 (2013)).
have
an
implicit
and
abstract
(quoting Ass'n
569 U.S.
In explaining such exception,
described
the
concern
that
, 133 S.
the Court
drives
this
exclusionary principle as one of pre-emption. Laws of
nature, natural phenomena, and abstract ideas are the
basic
tools
of
scientific
and
technological
work.
Monopolization of those tools through the grant of a
patent might tend to impede innovation more than it
would tend to promote it, thereby thwarting the
primary object of the patent laws. We have repeatedly
emphasized this . . . concern that patent law not
inhibit further discovery by improperly tying up the
future
use
ingenuity.
of
these
building
blocks
of
human
At the same time, we tread carefully in construing
this exclusionary principle lest it swallow all of
patent law. At some level, all inventions
embody, use, reflect, rest upon, or apply laws
nature, natural phenomena, or abstract ideas. . . .
of
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the building
blocks of human ingenuity and those that integrate the
building
blocks
into
something
more,
thereby
transforming
them
into
a
patent-eligible
invention.
The former would risk disproportionately tying up the
use
of
the
underlying
ideas,
and are
therefore
ineligible for patent protection. The latter pose no
32
§
"'[w]e
has noted:
[w]e
to
comparable risk of pre-emption, and therefore
eligible for the monopoly granted under our
remain
patent
laws.
Alice,
134
marks
Ct.
omitted).
in mind,
it
S.
2354-55
(internal citations
Accordingly,
and quotation
with those preemption principles
an invention claims patent-eligible subject matter if
directed
is
at
to
a
composition of matter"
"process,
and
does
machine,
not
manufacture,
constitute
an
or
attempt
to
patent a law of nature, natural phenomenon, or abstract idea.
Congress has
that a patent
established that
claims
ineligible
party challenging validity.
the burden of demonstrating
subject
matter
Under 35 U.S.C.
lies with
the
§ 282,
[a] patent shall be presumed valid. Each claim of a
patent (whether in independent, dependent, or multiple
dependent form) shall be presumed valid independently
of the validity of other claims; dependent or multiple
dependent claims shall be presumed valid even though
dependent
upon an
invalid claim.
The
burden of
establishing invalidity of a patent or any claim
thereof
shall
invalidity.
35 U.S.C.
§ 282.
rest
on
the
In addition,
party
asserting
such
"'[a] party seeking to establish
that particular claims are invalid must overcome the presumption
of
validity
evidence.'"
in
35
U.S.C.
§
282
Nystrom v. TREX Co.,
by
clear
(quoting State Contracting & Eng'g Corp.
Inc. ,
346
Wolf
Dist.
v.
1057,
Capstone
LEXIS
1067
(Fed.
Photography,
156527,
at
Cir.
Inc.,
*12-13
33
convincing
424 F.3d 113 6, 114 9 (Fed.
2005)
F.3d
and
2003));
v. Condotte Am.,
see
2:13-cv-09573,
(CD.
Cal.
Cir.
Oct.
also,
2014
28,
e.g.,
U.S.
2014)
(citations
omitted).6
The
Fourth
Circuit
has
established
the
following standard regarding "clear and convincing evidence:"
"[C]lear and convincing
of such weight that it
trier
of
fact
hesitancy,
to
be
as
a
to
firm
the
established,
has been defined as evidence
produces in the mind of the
belief
truth of
and,
as
or
conviction,
without
the allegations
well,
as
sought
evidence
that
proves the facts at issue to be highly probable."
United
States
(alteration
Corp.,
v.
in
Hall,
664
original)
F.3d
456,
(quoting
461-62
Jimenez
(4th
v.
determine
eligible
DaimlerChrysler
subject
whether
matter,
the
the
patents-in-suit
Court
must
claim
patent-
the
two-step
apply
framework that the Supreme Court set forth in Alice.
to
2012)
269 F.3d 439, 450 (4th Cir. 2001)).
To
Court
Cir.
must
one
of
"determine
[the]
whether
the
patent-ineligible
claims
at
concepts,"
First,
issue
are
that
is,
the
directed
laws
of
6 The Court notes that other courts have suggested that it is
inappropriate to require a party challenging the validity of a patent
for failure to claim patent-eligible subject matter to prove such
invalidity by clear and convincing evidence and that the Supreme
Court's
recent
cases
presumption applied.
, No.
2010-1544,
on
E.g.,
this
issue
have
Ultramercial,
2014 WL 5904902,
not
stated
Inc. v. Hulu,
at *9-10
(Fed.
whether
LLC,
Cir.
the
F.3d
Nov.
14,
2014) (Mayer, J., concurring) (stating that "[a]lthough the Supreme
Court has taken up several section 101 cases in recent years, it has
never mentioned—much less applied—any presumption of eligibility. The
reasonable inference,
therefore,
is that while a presumption of
validity attaches in many contexts, ... no equivalent presumption of
eligibility applies in the section 101 calculus.").
While the Court
recognizes the persuasiveness of such reasoning, the Court is dutybound to apply the law as enacted by Congress and signed by the
President,
and in light of
the Federal Circuit's interpretation
thereof.
Defendants have not presented any authority indicating that
the presumption of validity no longer applies to challenges to a
patent's validity under section 101. Accordingly, the Court concludes
that Defendants must show, by clear and convincing evidence, that the
patents-in-suit claim patent-ineligible subject matter.
34
nature,
natural phenomena,
Ct.
2355
at
(citing
Mayo
Labs. , Inc. , 566 U.S.
determine
abstract
face'
idea,
"a
a
2014
WL
ideas.
Collaborative
Alice,
Servs.
v.
134
claim
directed
to
must
court
is
evaluate
the
5430956,
at
'concept'
*2
a
claims
'[o]n
the claims are
561 U.S.
To
patent-ineligible
(quoting Alice,
(citing Bilski v. Kappos,
S.
Prometheus
, 132 S. Ct. 1289, 1296-97 (2012)).
to determine to which
Amdocs,
2356)
whether
and abstract
134
593, 609
their
'drawn.'"
S.
Ct.
(2010)).
at
In
other words, a court "must identify the purpose of the claim . .
. what the claimed invention is trying to achieve
whether the purpose is abstract."
Commc'ns
Inc.,
5661290, at *13
F.
Supp.
Importantly,
Cal. Inst, of Tech. v. Hughes
3d
(CD. Cal. Nov.
. . . and ask
, No.
2:13cv07245,
2014 WL
3, 2014).
though the Supreme Court has not "delimit[ed]
the precise contours of the 'abstract ideas' category" of patent
ineligible subject matter, Alice, 134 S. Ct. at 2357,
has
indicated
that
such
category
"preexisting, fundamental truth[s]
from
id.
any human action,"
(citation and
internal
at
is
not
limited
the Court
simply
to
that exist in principle apart
2356
(alteration
quotation marks
omitted).
in original)
Indeed,
the
Supreme Court has suggested that a "method of organizing human
activity" or "fundamental economic practice" can fall within the
patent-ineligible
Furthermore,
the
category
Federal
of
Circuit
35
abstract
has
ideas.
rejected
the
See
id.
notion
that
"the
addition of merely novel or non-routine components to the
claimed
idea
concrete."
prior
WL
turns
Ultramercial,
art
Enfish,
necessarily
plays
LLC v.
5661456,
no
role
*4-5
Inc. v• Valve Corp.,
abstraction
2014 WL 5 904 902,
Microsoft
at
an
in
a
court's
Corp.,
(CD.
No.
No.
Cal.
into
at *4.
something
At step one,
analysis.
See,
e.g.,
2:12-cv-07360-MRP-MRW,
Nov.
3,
2014) .
SACV 13-1874-GW(FFMx),
But
see
2014
McRO,
2014 WL 4772200,
at *9 (CD. Cal. Sept. 22, 2014) (unpublished).
If
an
invention
abstract idea,
is
second,
directed
toward
the Court must
a
patent-ineligible
"consider the elements of
each claim both individually and 'as an ordered combination'
determine
whether
of the claim'
S.
Ct.
routine,
5904902,
additional
elements
'transform the
into a patent eligible application."
at 2355
additional
the
(quoting Mayo,
elements
"must
conventional
132 S.
be
more
activity.'"
at *5 (quoting Mayo,
Ct.
nature
Alice, 134
at 1297-98) .
than
to
Those
'we11-understood,
Ultramercial,
132 S. Ct. at 1298).
2014
WL
This second
step is "a search for an 'inventive concept'—i.e., an element or
combination
of
elements
that
patent in practice amounts
upon
the
[ineligible
emphasis in original)
"transformation
into
is
'sufficient
itself.'"
(quoting Mayo,
that
the
Id.
(alteration
132 S. Ct. at 1294).
patent-eligible
'more than simply stat[ing]
ensure
the
to significantly more than a patent
concept]
a
to
application
and
Yet,
requires
[abstract idea] while adding the
36
words 'apply it.'"
original)
Alice, 134 S. Ct. at 2357 (alterations in
(quoting Mayo, 132 S. Ct. at 1294).
prohibition
against
patenting
abstract
Moreover, "the
ideas
'cannot
be
circumvented by attempting to limit the use of the formula to a
particular technological environment'
postsolution activity,'" Bilski,
Diamond
v.
narrowness
Diehr,
of
an
450
U.S.
abstract
561 U.S.
175,
idea
or adding 'insignificant
at 610-11
191-92
does
not
(quoting
(1981)),
and
the
render patentable
an
otherwise patent-ineligible idea, see buySAFE, 765 F.3d at 1353
(citing
Mayo,
132
recitation of a
S.
Ct.
generic
at
1303).
computer
.
Nor
.
does
"the
mere
. transform a patent-
ineligible abstract idea into a patent-eligible invention."7
Alice,
134 S. Ct.
at 2358.
2. The Validity of the Patents-in-Suit
The Court will now consider whether each of the patents-in-
suit
claims
patent-eligible
subject
Alice framework stated above.
Plaintiff's asserted claims,
matter
However,
the
under
the
two-step
before analyzing each of
Court will address Plaintiff's
contention that the Court should deny Defendants' motion because
Defendants have failed to challenge the validity of the patents-
7 In addition,
the
"machine-or-transformation"
test,
under which
a court determines whether a process "is tied to a particular machine
or apparatus" or "transforms a particular article into a different
state or thing," "is a useful and important clue, an investigative
tool,
for determining whether some claimed inventions are processes
under § 101."
Bilski, 561 U.S.
quotation marks omitted).
at 602,
37
604
(citations and internal
in-suit claim-by-claim.
Pleadings
requires
claims
at
See PL's Opp'n to Mot. for J. on the
18-19.
Plaintiff
the Court to address
in
the
correctly
the elements of
patents-in-suit
ordered combination.
notes
both
that
Alice
the asserted
individually
and
as
an
However, Plaintiff overlooks the fact that
the Alice Court itself considered only a representative claim to
determine
Alice,
the validity of all of the claims
132
S.
Ct.
at
2352
n.2.
Other
at issue.
courts
have
See
also
considered the validity of multiple patent claims based on a
representative claim.
*l-2; Amdocs,
E.g., Ultramercial,
2014 WL 5430956, at *5.
2014 WL 5904902, at
Therefore, to the extent
it is permissible to challenge the validity of multiple patent
claims under section 101 through an analysis of a representative
claim,
the
Defendants'
Court
rejects
Plaintiff's
contention
regarding
failure to present a claim-by-claim analysis of the
patents-in-suit.
See Wolf,
2014 U.S.
Dist.
LEXIS 156527,
at
*30-31 n.3.
a.
i. Claims 1,
2,
The
19,
'204
Patent
and 21 Claim an Abstract Idea
Under the first step in Alice, the Court finds that Claims
1, 2, 19, and 21 of the '204 patent are directed to the abstract
idea of creating computer-readable files
as
applied
conducting
in
a
the
particular
locate
operation.
38
to store information,
technological
Claim
1
of
environment
of
the
is
patent
directed at a method for generating a
"searchable electronic
record of a locate operation," that is,
"one or more computer-
readable
files
that
include
some
or
all
of
the
information
regarding a locate operation," Markman Opinion and Order at 58,
"performed by a locate technician in a dig area, wherein at
least a portion of the dig area is planned to be excavated . . .
'204 patent at 34:52-56.
Claim
1
include
involve:
an
A)
At their core,
electronically
image
of
the
dig
the elements of
receiving
area;
B)
information,
displaying
to
such
information, including the image, on a display device; C) adding
a digital representation of physical locate marks to the image;
and D) electronically transmitting and/or storing non-image data
relating generally to a locate operation to create a computerreadable
file
operation.
including
Those
elements
taking input information,
it;
information
embrace
related
to
the abstract
a
locate
process
in the form of an image;
of
displaying
adding additional information to it-the representation of
the physical locate marks;
and storing such information in a
computer
as
readable
file,
applied
in
the
particular
technological environment of conducting locate operations.
The
mere fact that Claim 1 involves information specific to a locate
operation does not,
that
it
is
prohibition
without more,
directed
towards
an
against
patenting
39
alter the Court's conclusion
abstract
abstract
idea
ideas
because
'cannot
"the
be
circumvented by attempting to limit the use of the formula to a
particular technological environment' . . . ."
Bilski, 561 U.S.
at 610 (quoting Diehr, 450 U.S. at 191-92)).
Accordingly, the
Court concludes that Claim 1 is directed to an abstract idea.
The
claims,
Court
also determines
Claims 2 and 19,
creating
that
the
other asserted method
are directed at the abstract idea of
computer-readable
files
to
store
information,
as
applied in the particular technological environment of locate
operations.
Such claims are dependent on Claim 1 and do not
limit the application of the idea in Claim 1 in such a manner as
to alter the Court's analysis
stated above.
Claim 2 simply
limits element C in Claim 1 to require the use of a "user input
device"
to add the physical locate marks to the input image.
'204 patent at 35:10-14.
The manner in which the locate mark
information is added to the image does not alter the fact that
the purpose of the method in Claim 2 is to take information in
the
form of
an
input
image,
display
that
information on
a
display device,
add more information to it in the form of a
representation
of
electronically
a
transmit
physical
and/or
locate
store
mark,
non-image
and
data
then
relating
generally to a locate operation to create a computer readable
file
that
directed
to
stores
the
that
same
information.
abstract
conjunction with Claim 17,
idea as
Likewise,
Claim
19
Claim 1.
Claim 19,
is
in
limits Claim 1 to require that the
40
input image in Claim 1 comprise a photographic image,
such
photographic image comprising "one or more of a topographical
image, a satellite image, and an aerial image."
35:66-67, 36:4-6.
See id. at
In other words, Claim 19 limits the claimed
invention by limiting the type of information that is displayed
on the display device,
to which the information regarding the
representation
locate
of
the
marks
is
added,
and
ultimately included in the computer-readable file.
that
is
However, the
alteration of the initial input information into the display
device does not alter the Court's conclusion that Claim 19 is
directed
file
at
to
the
abstract
store
idea of
information,
as
creating
a
applied
in
computer-readable
the
particular
technological environment of locate operations.
In
addition,
the
asserted
apparatus
claim
of
the
'204
patent, Claim 21, is directed to the same abstract idea to which
Claim 1
is
directed because
substance, from Claim 1.
. . . against'
Claim 21
is
indistinguishable,
The Supreme Court has "long 'warn[ed]
interpreting § 101 'in ways that make patent
eligibility depend simply on the draftsman's art.'"
S.
Ct.
Ct.
at
at
2360
1294) .
treated the
in
(alteration in original)
Put simply,
same as
Alice, 134
(quoting Mayo,
a system or medium
claim
132
S.
can be
a method claim where there is no "material
difference" between the categories of claims.
at 1277; see also Accenture,
Bancorp,
687 F.3d
728 F.3d at 1341 (citing CLS Bank
41
Int'l v. Alice Corp. , 717 F.3d 1269, 1274 n. 1 (Fed. Cir. 2013)
(en
banc),
aff'd,
134
S.
Ct.
2347
(2014))
(noting
majority of the Federal Circuit sitting en banc,
different opinions,
track method
has held that "system claims that closely
claims
Court
held
and
that
because they merely
components
a
though in
are
grounded
by
the
same meaningful
limitations will generally rise and fall together.").
Alice
that
system claims
"recite[d]
configured
to
were
Thus, the
patent-ineligible
a handful of generic computer
implement
the
same
idea"
as
the
abstract idea implemented on a generic computer stated in the
patent's method claims.
See 134 S.
Ct.
at 2360.
substance, Claim 21 is identical to Claim 1.
Here,
in
Claim 1 recites a
method for performing the abstract idea of creating a computerreadable file to store information, as applied in the particular
technological
Similarly,
computer
environment
Claim
21
components
of
simply
conducting
recites
configured
"a
locate
handful
to implement
the
operations.
of
generic
same
idea,"
namely a "communication interface," "display device," "memory to
store processor executable instructions," and a "processing unit
coupled
to"
executable
such
other
instructions
components
by
the
that
through
processing
"processor-
unit"
cause
the
processing unit to facilitate the performance of elements A-D of
the method stated
in
Claim
1.
Therefore,
the
Court
concludes
that Claim 21 purports to claim the abstract idea of creating a
42
computer-readable file to store information, as applied in the
particular
technological
operations,
because
involves
configuration
a
environment
it
is
an
of
of
conducting
claim
apparatus
generic
locate
merely
computer
execute the abstract idea stated in Claim 1.
that
components
to
See Alice, 134 S.
Ct. at 2360.8
ii. Claims 1, 2, 19, and 21 Do Not Transform the Abstract
Idea to Which They Are Directed
As indicated above,
given that Claims 1,
2,
19,
and 21 of
the '204 patent are directed towards an abstract idea, to claim
patent-eligible
subject matter under step two of
the Alice
framework, they must "contain an inventive concept sufficient to
transform
the
claimed
abstract
idea
into
a
patent-eligible
application" by including "additional features to ensure that
the claim is more than a drafting effort designed to monopolize
the
abstract
idea."
marks, alterations,
134
S.
Ct.
at
2357
(internal
and citations omitted).
Plaintiff has not
directed a significant portion of its brief
Defendants'
8
See
motion to an analysis
also
Joao
Bock
of
Transaction
in opposition to
the extent
Sys.
quotation
LLC
v.
to which the
Jack
Henry
&
Assocs., Inc., Civ. No. 12-1138-SLR, 2014 WL 7149400, at *8 (D. Del.
Dec.
15,
2014)
(unpublished)
(second and third alterations in
original)
(quoting CLS Bank,
717 F.3d at 1289)
(stating that "[t]he
fact that the asserted claims are apparatus claims, not method claims,
does not change the court's analysis. Indeed,
if that were the case,
then 'applying a presumptively different approach to system [or
apparatus] claims generally would reward precisely the type of clever
claim drafting that the Supreme Court has repeatedly instructed [the
Court]
to ignore.'").
43
elements of the claims of the patents-in-suit transform such
claims into patent-eligible subject matter; however, Plaintiff's
primary argument is that the use of an image or electronic
representation of a dig area is a transformative additional
feature that renders the claims of the patents-in-suit patent-
eligible.
24.
See PL's Opp'n to Mot. for J. on the Pleadings at
In addition,
Plaintiff
contends
that
the
computerized
components in such claims necessarily were required "to complete
the invention that would allow locate technicians the ability to
rely on an image or other electronic representation of a dig
area when preparing a sketch or manifest," and, therefore, that
those components
"play a significant part
claimed method to be performed,
in permitting the
rather than function solely as
an obvious mechanism for permitting a solution to be achieved
more quickly."
Id. at 26.
Notwithstanding those arguments, as
discussed below, the asserted claims of the '204 patent do not
amount to significantly more than a patent upon the abstract
idea of creating a computer-readable file to store information,
as
applied
in
the
particular
technological
environment
of
sufficient
to
conducting locate operations.
Claim
1
lacks
an
"inventive
concept"
transform such claim into a patent-eligible application of the
abstract idea it claims, rather than simply an attempt to claim
such abstract idea.
As the Supreme Court has noted,
44
"[g]iven
the
ubiquity
implementation
featur[e]'
of
is
that
[claimed]
computers,
not
wholly
generally
provides
any
the
generic
sort
'practical
computer
of
'additional
assurance
that
the
process is more than a drafting effort designed to
monopolize the [abstract idea]
itself.'"
Alice,
134 S. Ct. at
2358 (second and fourth alterations in original)
132 S. Ct. at 1297) .
(quoting Mayo,
Element A of Claim 1 recites the generic
step of "electronically receiving source data representing at
least one input image of a geographic area comprising the dig
area," yet, electronic receipt of data is far from an innovative
additional
at
*1,
feature.
*5
See,
(indicating
e.g.,
that
Ultramercial,
the
element
2014
of
WL
5904902,
receiving
media
products comprised of text data, music data, and video data was
part
of
abstract
routine,
idea);
collecting
conventional
Amdocs,
data
2014
WL
communication
activity
5430956,
usage
conventional action for a computer);
cf.
in
at
implementing
*11
an
(finding that
information
was
buySAFE,
F.3d at
765
a
1355 (finding that a computer receiving and sending information
over
a
network
with
no
arguably inventive").
needed
innovative
claiming
an
further
was
"not
even
Similarly, element B does not supply the
additional
abstract
specification
feature
idea because
to
prevent
Claim 1
it
simply involves
from
using
generic computer components to perform the conventional computer
function
of
processing
data
to
45
display
an
input
image
on
a
display device.
Media LLC,
3582914,
See, e.g., DietGoal Innovations LLC v. Bravo
F. Supp. 2d
at
*13
(S.D.N.Y.
"displaying
[]
conventional
computer
Capital
One
, No. 13 Civ. 8391 (PAE) , 2014 WL
results
Fin.
July
8,
task);
amounted
Intellectual
Corp.,
(AJT/TRJ) , 2014 WL 1513273,
(finding
display"
on a visual
2014)
Civil
Action
at *2-3
Ventures
No.
I,
to
a
LLC v.
l:13-cv-00740
(E.D. Va. Apr.
(implicitly finding that the element of
that
16,
2014)
"displaying the data
stream via an interactive interface" did not establish that the
implementation of an abstract idea rendered it patent-eligible) .
The generic limitation in element C of "adding to the displayed
at least one input image at least one digital representation of
at least one physical locate mark so as to generate a marked-up
image" including such digital representation is also far from a
transformative
concept
computerization
"identif[ying]
of
because
the
it
only
traditional
involves
process
of
a
generic
manually
the approximate location of the locate marks . .
. present at the dig area" on a "sketch or drawing of the dig
area,"
as
indicated
in the
'204 patent at 2:17-22; Wolf,
'204 patent's
specification.
2014 U.S. Dist.
See
LEXIS 156527,
at
*35 (finding that the elements of a claim did not transform the
abstract
idea
individually
to
and
which
as
a
the
claim
whole,
was
the
directed
independent
because
claims
"taken
[did]
nothing more than recite a series of conventional steps carried
46
out
using
basic
camera
and
computer
functions
and
mostly
essential to placing searchable event photographs online
inspection and ordering,"
the abstract
idea
for
to which those
patents were directed).
The
fourth element
of
Claim 1,
element D,
also
lacks
an
innovative concept sufficient to transform such claim into a
patent-eligible
application of
an abstract
idea because
it
simply recites the use of common computer components, performing
generic computer functions,
to accomplish via such components
what persons in the locate operations industry had traditionally
done
by
hand:
creating
manifests
regarding a locate operation.
to
document
information
The "electronic transmi[ssion]"
and "electronic storage" of information to create a "searchable
electronic record of a locate operation,"
'204 patent at 35:6-9,
that is, a "computer readable file that includes some or all of
the information regarding a locate operation," Markman Opinion &
Order
at
58,
is
tantamount
to
using
computer
components
to
perform their conventional functions, as applied in the locate
operations industry.
See Alice, 134 S. Ct. at 235 9 (noting that
"electronic recordkeeping [is]
of
a
computer"
computer);
and
buySAFE,
is
765
a
one of the most basic functions
"purely
F.3d at
conventional"
1355
use
(finding that
of
a
using a
computer to send and receive information over a network without
any further specification was
"not even arguably inventive").
47
Indeed,
element
D
is
akin
conventional process of
that
contain
operation."
the
to
the
computerization
the
storing hand-sketched paper manifests
"a variety of
information
See '204 patent at 2:17-47.
individual
of
elements
of
Claim
1
related to a
locate
Consequently, none of
transform such
claim into
patent-eligible subject matter.
Furthermore,
elements,
considered
as
an
ordered
combination
of
Claim 1 does not sufficiently transform the subject
matter claimed to permit Plaintiff to obtain a patent over the
abstract
idea
information,
of
creating
applied
as
a
in
environment of conducting
doubt
that
abstract
Alice
idea
territory
Ct.
does
by
at
operations
not
that
move
file
particular
locate operations.
'merely
"a
into
store
technological
There can be no
claim
section
requiring
to
directed
101
at
an
eligibility
generic
computer
buySAFE, 765 F.3d at 1354 (quoting Alice, 134
2357) .
have
the
established
implementation.'"
S.
computer-readable
As
stated
typically
above,
been
conventionally,
documented
by
hand
locate
through
creating manifests that include sketches or drawings of the dig
area that indicate the approximate location of locate marks and
that are stored manually "and/or digitally scanned/photographed
and the image stored electronically."
67,
2:1-47.
recites
a
As
method
an
for
ordered
using
See '204 patent at 1:65-
combination,
generic
48
Claim
computer
1
basically
components
to
perform
that
Accordingly,
matter
conventional
documentation
process.9
Claim 1 does not claim patent-eligible subject
under
computer
same
Alice
because
implementation
it
of
merely
the
documenting a locate operation.10
recites
traditional
the
generic
process
of
The elements of Claim 1, both
individually and as a combination, do not transform it from an
9The Court notes that the description of the claimed invention in
the specification includes detail absent in the claims of the '204
patent that might suggest that the elements of the asserted claims in
the '204 patent are more than just an attempt to claim an abstract
idea.
However, the Court's analysis of patentability under section
101 involves the elements of the asserted claims as they are written,
rather than with the supplementation of detail added in the
specification.
See Accenture, 728 F.3d at 1345 (finding that "the
complexity of the implementing software or the level of detail in the
specification does not transform a claim reciting only an abstract
concept into a patent-eligible system or method.").
10 see Intellectual Ventures I LLC v. Mfrs.
F. Supp. 3d
& Traders Trust Co.,
, Civ. No. 13-1274-SLR, 2014 WL 7215193, at *10 (D.
Del. Dec. 18, 2014)
(finding that the elements of obtaining hard-copy
images from different sources, organized into groups, scanning such
images, categorizing such images, storing such images, and producing
products with such images failed to transform a method claim because
such elements merely "'computerize[d]' a known idea for organizing
images"); cf. Content Extraction & Transmission LLC v. Wells Fargo
Bank,
F.3d
, Nos. 2013-1588, -1589, 2014-112, -1687, 2014 WL
7272219, at *3-4 (Fed. Cir. Dec. 23, 2014)
step
two,
the
asserted
patents
(holding that, under Alice
contained
no
limitations
that
transformed the claims into patent-eligible applications because the
plaintiff's claims "merely recite the use of [] existing scanning and
processing technology to recognize and store data from specific data
fields such as amounts,
addresses and dates.
There is no 'inventive
concept' in [the plaintiff's] use of a generic scanner and computer to
perform well-understood, routine, and conventional activities commonly
used in the industry. At most, [the plaintiff's] claims attempt to
limit the abstract idea of recognizing and storing information from
hard copy documents using a scanner and a computer to a particular
technological environment. Such limitation has been held insufficient
to
save
a
claim
in
this
context.");
Cal.
Inst,
of
Tech.,
5661290, at *16 (noting that in the Alice step two analysis,
"highly relevant"
"that humans
engaged in the
before the invention of computers").
49
2014
WL
it was
same activity long
attempt
to claim the abstract
idea of
creating a computer-
readable file to store information, as applied in the particular
technological
environment
of
conducting
locate operations.11
Thus, the Court finds that Defendants have shown by clear and
convincing evidence that Claim 1 of the '204 patent is invalid
under
35 U.S.C.
§
101
and,
therefore,
the
Court
will
GRANT
Defendants' motion as to Claim 1.
For the same
abstract
reason that Claim
1 fails
idea to which it is directed,
claim patent-eligible subject matter.
is identical
to Claim
to transform the
Claim 21 also fails to
As stated above, Claim 21
1 in substance
because
it only recites
generic computer components configured to implement the method
in Claim 1.
Accordingly,
to the extent that Defendants have
shown by clear and convincing evidence that Claim 1 fails to
claim patent-eligible subject matter,
showing with respect to Claim 21.
they have made the same
See Alice,
134 S.
Ct.
at
11 That Claim 1—or any of Plaintiff's other asserted claims-fails
to claim patent-eligible subject matter does not detract from the
value of the
transformative
industry.
method
effect
However,
that Plaintiff attempted
of such method on the
to claim or the
locate operations
this Court does not inquire into the value or
effect of the claimed invention to determine whether such invention is
patent-eligible.
Even
if
the
invention
claimed
represents
the
development of a new process that solves a problem existing in the
art, that, alone, does not render it patent eligible.
See Amdocs,
2014 WL 5430956, at *11. With regard to patents that attempt to claim
an abstract idea, the Court does not consider the extent to which the
patents claiming such idea transform the field to which they pertain.
That
an abstract
idea
is transformative does
not render it patent-
eligible.
Rather, the Court considers whether the elements of the
patent claims at issue transform the abstract idea itself.
50
2360.
Thus,
the
Court
will
GRANT
Defendants'
motion
with
respect to claim 21.
The dependent claims
in the
'204 patent
that Plaintiff
asserts also do not sufficiently transform the method asserted
in Claim 1 so as to render the method in Claims 2 and 19 patent-
eligible.
Individually, the additional element in Claim 2 adds
little to Claim 1 that might transform the claimed method into a
patent-eligible application of the abstract idea of creating a
computer-readable file to store information, as applied in the
particular
technological
operation.
Such element merely associates an additional generic
component,
a "user input device,"
device"
recited
in
environment
of
conducting
a
with the generic
Claim 1 and then
recites
using
locate
"display
such
input
device to add a digital representation of the locate mark to the
input image displayed on the display device.
That element is a
computerized analog of the conventional process of indicating
the approximate
location of a locate mark on the
sketch or
drawing of the dig area that is typically included in a paper
manifest.
See '204 patent at 2:17-22.
individually,
Claim
2
is
not
Therefore,
transformative
considered
under
Alice.
Likewise, in combination with the other elements in Claim 1, on
which
Claim
2
is
dependent,
Claim
2
is
not
transformative
because it merely adds another generic component to the patent-
ineligible
method
in
Claim
1
51
involving
the
computerized
implementation
of
the
conventional
process
information related to a locate operation.
finds
that
evidence,
Defendants
have
shown,
of
documenting
Therefore, the Court
by
clear
and
convincing
that Claim 2 is invalid because it does not claim
patent-eligible
subject
matter.
The
Court
will
GRANT
Defendants' motion with respect to Claim 2 as well.
Like Claim 2,
Claim 19 does not
include
an additional
feature sufficient to transform the method claimed therein from
an attempt to claim the abstract idea of creating a computerreadable file to store information, as applied in the particular
technological
environment
of
conducting
a
locate
operation.
Individually, Claim 19 recites the method in Claim 1 wherein the
input
image
in
element
A
thereof
is
a photographic
image
comprising "one or more of a topographical image, a satellite
image, and an aerial image."
6.
See '204 patent at 35:66-67, 36:4-
Although, viewing the facts in the light most favorable to
Plaintiff,
the use
of a photographic image in documenting a
locate operation might be novel,
use
of
such an
otherwise,
image,
the Court concludes that the
topographical,
satellite,
aerial,
or
does not sufficiently transform the method in Claim
19 from an attempt
to claim the abstract idea of creating a
computer-readable file to store information, as applied in the
particular
operation.
technological
environment
of
conducting
a
locate
The '204 patent itself indicates that "manifests"
52
documenting some or all of the information regarding a locate
operation "may typically contain" "a sketch or drawing of the
dig area that identifies the approximate location of the locate
marks . . . present at the dig area."
Thus,
at
best,
the
method
in
'204 patent at 2:17-22.
Claim
19
differs
from
the
conventional method of documenting a locate operation described
in the
'204 patent
satellite,
through:
1)
or aerial image,
the use of a topographical,
rather than a sketch or drawing,
upon which to add representations of the location of locate
marks; and 2)
the use of generic computer components to create
computer-readable
files
containing information that typically
would be present in a paper manifest.
above,
the
latter
conventional.
The
addition
Court
photographic image,
is
also
For the reasons stated
not
finds
that
transformative,
the
but
recitation of
rather than a sketch or drawing,
a
as the
backdrop to which representations of locate marks are added to a
"manifest" does not transform the claimed method from an attempt
to
claim an
abstract
idea.
A
"sketch or
drawing of
the
dig
area," id. at 2:20, at its core, is a hand-made image of the dig
area.
To
the
involved the
the
that
conventional
"identifi[cation]
locate marks
image,
extent
...
in
of
the
the
dig
locate
approximate
area"
operations
location of
on such a hand-made
the use of a photographic image—even a topographical,
satellite,
or
aerial
one-to
replace
53
the hand-made
sketch or
drawing used in conventional locate operations does not recite a
transformative
substitutes
additional
a
more
accurate
photographic image,
the
feature
because
image
of
the
operation).
directed
is
reduces
information,
effect
of
However,
the
the
effect
"human
the
of
error"
in
the use of a
human
Cf.
hand-made
error
id.
on
the
at 2:41-43
conventional
locate
the abstract idea to which Claim 19 is
creation
as
simply
area,
the
Undoubtedly,
documentation of locate marks in a manifest.
(noting
dig
process,
drawing or sketch of the dig area.
image
the
element
for the image previously incorporated into
locate-operation-documentation
photographic
such
of
applied
computer-readable
in
the
files
particular
environment of conducting a locate operation and,
to
store
technological
therefore, it
is hardly transformative to recite the use of a more accurate
photographic image as the baseline upon which representations of
locate
marks
accuracy
file.12
of
are
the
added
because
information
Therefore,
such
stored
use
in
merely
the
improves
computer
the
readable
the Court finds that Defendants have shown by
12 A hypothetical involving the use of a photographic image in a
conventional
locate
operation
might
be
instructive
of
why
the
recitation of a topographical, satellite, or aerial image as the input
image upon which the digital representation of the locate marks is
added does not transform Claim 19 into a patent-eligible method.
Rather than using a hand-made drawing or sketch of the dig area, the
conventional method of
documenting a locate operation might be
performed using a photographic image of the dig area-possibly a
topographical, satellite, or aerial image.
Instead of drawing or
sketching the dig area, a person might obtain a photographic image of
the dig area.
Such person could then, by hand, "identif[y] the
54
clear and convincing evidence that,
both individually and as an
ordered combination with the other elements
and
Claim
matter
Claim
because
features
idea.
1,
to
it
19
does
does
transform it
Accordingly,
not
not
claim
claimed in Claim 17
patent-eligible
include
sufficient
from an attempt
to
subject
additional
claim an abstract
the Court will GRANT Defendants' motion with
respect to Claim 19.
The Court rejects Plaintiff's argument that Claim 1 is not
directed
the
towards
recording of
an
abstract
idea because
locate operations.
In
it
this
does
case,
field in which Claim 1 might operate is narrow,
effect
within
Conversion,
that
field
2014 WL 4364848,
of
use
at *11
is
broad.
not
preempt
though the
its preemptive
Cf.
Loyalty
(noting that "in this case,
although the field of use is narrow—conversion of one entity's
approximate location of the locate marks . . . present at the dig
area" on such image, rather than on the "sketch or drawing" typically
used in documenting information regarding a locate operation.
Cf.
'204 patent at 2:17-22.
That hypothetical process would result in a
paper manifest that likely would be more accurate than one relying on
a draft or sketch of the dig area.
However, the recitation of that
hypothetical method of creating a paper manifest incorporating a
photographic image as the medium to which hand-made representations of
physical locate marks are added would not render such process patenteligible subject matter.
It follows, therefore, that the recitation
of a photographic image in the method of Claim 1—that the Court has
found to be patent-ineligible because it merely recites the use of
generic computer components to perform the conventional method of
creating a paper manifest documenting a locate operation—does not
alter the Court's conclusion that such method is patent-ineligible
because it simply involves the use of generic computer components to
perform the patent-ineligible hypothetical method of creating a hand
made manifest to store information concerning a locate operation that
includes a photographic image of the dig area to which representations
of
locate marks have been added.
55
loyalty
points
effect of
into
those
[the plaintiff's]
broad.").
As
the
some
another
entity-the
specification indicates,
jurisdictions
preemptive
claims within that field of use is
facility locating industry,
in
of
in
the
underground
" [i]t is generally recommended,
required,
to
document
.
.
.
or
the
approximate geographic location of the locate marks," with such
documentation-the
"manifest"-"typically
contain[ing]
a
variety
of information related to a locate operation including a sketch
or
drawing
location
present
Thus,
of
of
at
the
the
the
dig
locate
dig
area
that
marks
and
area."
the specification of
'204
the
identifies
the
the
approximate
environmental
patent
'204 patent
at
landmarks
1:65-67,
indicates
2:1-22.
that
the
documentation of locate marks on an image or representation of a
dig area,
for example, through the creation of a sketch of the
dig
that
area
identifies
the approximate
location of
marks, is common in the field of locate operations.13
Claim
1 might
Court
concludes
not
preempt
that
manually
Claim 1 has
creating
a
locate
Although
manifest,
a broad preemptive effect
the
in
the technological environment of conducting locate operations as
indicated
in
operations
the
specification
involving
the
because
computerized
it
preempts
documentation
of
locate
locate
13 Plaintiff makes much of the fact that the use of an image of
the dig area to create a manifest is novel in the field of locate
operations; however, the Federal Circuit has rejected the notion that
"the addition of merely novel or non-routine components to the claimed
idea necessarily turns
an abstraction into something concrete."
Ultramercial,
2014 WL 5904902,
at *4.
56
marks on an "image []
PL's Opp'n to Mot.
or other representation[]
of a dig area,"
for J. on the Pleadings at 22, and storage
of such image in a computer-readable file.14
Preventing the use
of
in
generic
manner,
computer
to store
ordinarily
components,
performing
a
conventional
information regarding a locate operation that
would
be
included
in
paper
manifests
has
a
broad
preemptive effect.
The
Court
also
rejects
Plaintiff's
contention
that
the
presence of "real-world steps" in Claim 1 renders it patentable
subject matter.
require
Plaintiff argues that
"[b]ecause the claims
real-world physical activities in conjunction with
the
computerized steps, the methods and systems are not ephemeral or
purely mental,
and,
idea."
Opp'n
However,
PL's
Plaintiff
proposition
that
thus,
to
has
they are not directed to an abstract
Mot.
for
cited
no
J.
on
the
authority
Pleadings
to
support
"real-world steps" somehow prevent
invention from qualifying as an abstract idea.
at
23.
its
a claimed
To the contrary,
numerous courts have concluded that patent claims were directed
14 CL_ Wolf,
2014 U.S.
Dist.
LEXIS
156527,
at *29-30,
*39-40
(finding that patents "directed to the abstract idea of providing
event photographs organized by participant, as applied using the
internet" were not patent-eligible merely because they "[did] not
monopolize the field of event photograph distribution."); Joao Bock,
2014 WL 7149400, at *8 (noting that " [w]ith the ubiquity of computers,
arguing that a field is not preempted because a claim may be performed
'by hand' is not persuasive. . . . Allowing the asserted claims to
survive would tie up any innovation related to performing banking
transactions on computers which would,
in turn,
monopolize the
'abstract idea.'").
57
to
an
abstract
involved
idea,
"real-world
543 0956, at *9
even
though
where
steps."
Inc.
C-13-4479-RMW,
of
*2,
*10
v.
in
Claim
1
e.g.,
C-13-4483,
of
such
Amdocs,
contained
claims
2014
that
user
F. Supp.
C-13-4486,
WL
the
actions);
3d
, Case
2014 WL 4966326,
(same); DietGoal,
Therefore,
assertion
renders
patent
Elsevier Inc.,
(same).
CertusView's
elements
See,
such
*4 (N.D. Cal. Sept. 30, 2014)
at
the
(finding that a patent claimed an abstract idea
elements
Cogent Med.,
No.
even
Court
the presence
the
subject
matter
Court
rejects
asserted
unpersuasive
"real-world"
Plaintiff's
in
2014 WL 3582914,
finds
of
at *2,
of
such
claim
steps
patent-
eligible.
Finally,
computerized
the
components
the
argument
claims
that
of
the
the
'204
patent "play a significant part in permitting the claimed method
to
be
performed,
rather
than
mechanism
for
quickly."
See PL's Opp'n to Mot.
26.
As
permitting
function
stated above,
asserted claims of the
that
perform
unlike
the
Institute
of
a
the
as
to
achieved
be
an
obvious
more
for J. on the Pleadings at
computer components
included in the
'204 patent are simply generic components
conventional
case
solution
solely
upon
Technology
computer
which
v.
functions.
Plaintiff
Hughes
relies,
Communications,
Importantly,
California
Inc.,
the
computer components in the asserted claims of the '204 patent do
not
"improve
a
computer's
functionality
58
by
applying
concepts
unique
to
computing
computing."
v.
...
to
solve
a problem unique
to
2014 WL 5661290, at *20; see also DDR Holdings, LLC
Hotels.com,
L.P.,
F.3d
,
No.2013-1505,
6845152, at *12 (Fed. Cir. Dec. 5, 2014)
2014
WL
(finding that the use
of computer components in a claim transformed such claim because
"[i]nstead of
the
computer network operating
in its normal,
expected manner by sending the website visitor to the thirdparty website . . . the claimed system generates and directs the
visitor to the above-described hybrid web page
. . . .").
Instead, they simply attempt to solve problems in the particular
15
The
Federal
Circuit
announced its
decision
subsequent to the parties' briefing in this case.
in DDR
Holdings
Accordingly, even
though the parties' briefs did not address the decision in DDR
Holdings, the Court has considered it-along with the Federal Circuit's
December 23, 2014 decision in Content Extraction-in resolving this
motion.
The Court finds that the asserted claims of the patents-insuit in this case are distinguishable from the claims at issue in DDR
Holdings.
The DDR Holdings court, in determining that a trial court
properly denied a motion for judgment as a matter of law on the basis
of invalidity under section 101, emphasized that the claims at issue
[stood]
apart because they do not merely recite the
performance of some business practice known from the preinternet world along with the requirement to perform it on
the internet. Instead, the claimed solution is necessarily
rooted in computer technology in order to overcome a
problem
specifically
arising
in
the
realm of
computer
networks.
2014 WL 6845152, at *10.
the patents-in-suit
Unlike DDR Holdings, the asserted claims of
do not solve any problem unique to computing.
Rather, as the Court has noted above and will note further below, such
claims merely recite the use of generic computer components to perform
tasks routinely performed manually in the field of conducting a locate
operation.
In general, they recite the performance of business
practices common in the field of conducting a locate operation, but
with the requirement to perform such practices using generic computer
components. Thus, the Federal Circuit's decision in DDR Holdings does
not
alter
the
Court's
conclusion
that
the
asserted
claims
of
the
patents-in-suit are invalid because they do not claim patent-eligible
subject matter.
59
technological environment of conducting locate operations,
as
human error in the creation of
are
contained
using
in paper manifests,
generic
computer
computer operations.
sketches of a dig area that
see
components
Accordingly,
such
'204
to
patent
perform
at
2:30-32,
conventional
the Court rejects Plaintiff's
argument that the computer components in the asserted claims of
the
'204
patent
play
a
significant
part
in
permitting
the
claimed method to be performed.
b.
The
Court
next
The
'344
considers
Patent
whether
the
'344
patent
claims
patent-eligible subject matter under the two-part test set forth
in Alice.
Like
the
asserted claims of
idea
and
the
individually
such claims
'204
the
as
the
Court concludes
that
the
'344 patent are directed to an abstract
elements
and
patent,
an
of
such
ordered
claims,
combination,
considered
do
not
into patent-eligible subject matter.
both
transform
Accordingly,
the Court will GRANT Defendants' motion with respect to the '344
patent.
i.
Under
Claims 1,
the
first
4,
13,
step
and 17 Claim an Abstract Idea
in
Alice,
asserted method and apparatus claims,
the
Court
Claims 1,
finds
4,
that
13,
the
and 17,
of the '344 patent are directed to the abstract idea of creating
a computer-readable file to store information, as applied in the
particular
technological
environment
60
of
conducting
a
locate
operation,
for much the same reasons that the asserted claims in
the '204 patent are directed to such abstract idea.
directed
to
a
method
for
generating
record of a locate operation,"
readable
files
that
include
that
some
a
"searchable
is,
or
Claim 13 is
electronic
"one or more computerall
of
the
information
regarding a locate operation," Markman Opinion and Order at 58,
"performed by a locate technician in response to a locate ticket
and in advance of planned excavation activities
identified by the locate ticket . . . ."
59.
The
elements
of
Claim
13
"the
set
of
instructions
x344 patent at 18:55-
comprise:
receiving information derived from a
necessary
at a dig area
A)
electronically
"locate ticket,"
for
a
locate
that
is,
technician
to
perform a locate operation," Markman Opinion and Order at 63-64,
and an image of the dig area; B) combining such image of the dig
area
with
"image-related
information"
that
includes
the
geographic location of the dig area, a timestamp indicative of
when the locate operation occurred, and a digital representation
of
at
least
one
physical
locate
mark;
and
C)
electronically
transmitting and/or storing non-image data relating generally to
a locate operation to create a computer-readable file including
information
related
to
operation is verifiable.
Those
elements
information,
embrace
a
See
the
locate
operation,
'344 patent at
abstract
process
in the form of an image of
61
so
that
18:60-67,
of
such
19:1-21.
taking
input
the dig area and locate
ticket information;
combining additional information to it, the
geographic location of the dig area,
representation of
information in a
the
particular
the physical
a timestamp, and a digital
locate marks;
computer readable
technological
file,
and
storing such
merely as
environment
of
applied in
conducting
locate
operations.
Therefore, the Court concludes that Claim 13 of the
'344 patent
is
directed
to
the
abstract
idea
of
creating
a
computer-readable file to store information,
as applied in the
particular
conducting
technological
environment
of
locate
operations.
The
claim,
Court
also
Claim 17,
determines
that
the
other
asserted
method
is directed to the same abstract idea as
to which Claim 13 is directed.
that
Claim 17 is dependent on Claim
13 and does not limit the application of the claimed method in a
manner that prevents such claim from being directed towards an
abstract idea.
require
Claim 17 merely limits the method in Claim 13 to
that the
image
in Claim
See '344 patent at 19:30-31.
13 comprise
an aerial
image.
Put simply, Claim 17 limits Claim
13 by altering the form of information with which the geographic
location,
timestamp,
are combined.
of
the
with
'204
which
and digital representation of a locate mark
Nonetheless,
patent,
as
limiting
additional
stated above
the
form
information
of
is
regarding Claim 19
initial
combined
information
and
then
transmitted or stored as a computer readable file does not alter
62
the
Court's
conclusion
that
such
Claim
is
that
directed
the
towards
an
abstract idea.
Similarly,
the
Court
finds
asserted
apparatus
claims in the '344 patent,
Claims 1 and 4, are directed towards
the
which
same
abstract
idea
to
such patent are directed.
indicated that if,
the
asserted
method
claims
in
As noted above, the Supreme Court has
in substance,
an apparatus claim involves the
mere configuration of generic computer components to execute the
abstract idea claimed in a method claim,
directed
towards
See Alice,
the
134 S. Ct.
simply recites
same
abstract
at 2360.
idea
Here,
the use of generic
13.
"processing unit,"
See
Likewise,
the
directed
to
patent
Claim 4
method
concludes
file
'344
that
to
the
store
at
in
Claims
the
method
claim.
Claim 1 of the '344 patent
"display device,"
in the
"memory,"
to perform the method recited in Claim
17:40-67,
simply recites
claimed
as
computer components,
form of a "communication interface,"
and
such apparatus claim is
1
abstract
Claim
and
4
as
18:55-67,
an apparatus
17.
idea of
information,
18:1-19,
of
used
Accordingly,
the
'344
creating
a
applied
patent
in
19:1-21.
to
execute
the
are
Court
also
computer-readable
the
particular
technological environment of conducting a locate operation.
ii.
Claims 1,
4,
13,
and 17 Do Not Transform the Abstract
Idea to Which They Are Directed
Under the second stage of the Alice test,
63
Claims 1, 4, 13,
and 17 satisfy the patentable subject matter requirement of
U.S.C.
they
35
§ 101 only if they transform the abstract idea to which
are
directed
abstract idea.
did not
Just as
a
patent-eligible
claims
components
application
the asserted claims in the
transform such claims
matter because,
such
into
to
recited
to perform the
so
also
the
operation,
do
patent
fail under Alice because
'204 patent
use
of
the elements of
generic
conventional method of
locate
an
constitute patentable subject
individually and in combination,
merely
of
the
asserted
they
computer
documenting a
claims
of
the
lack additional
'344
features
that transform those claims into a patentable application of an
abstract idea,
rather than an attempt to claim such idea itself.
The asserted claims
in
the
the asserted claims
in the
'344 patent principally differ from
'204 patent because the
'344 patent
incorporates the electronic receipt of locate ticket information
and the addition of the geographic location of
a
timestamp
that
process
to
the
input
simply
image
initially
reflects
the
use
the dig area and
received.
of
However,
generic
computer
components to record information traditionally included in paper
manifests,
which,
as
determined above with respect
to
the
'204
patent, does not transform the abstract idea claimed.
Individually,
do
not
transform
eligible.
the
such
elements
claim
in Claim 13
so
as
to
of
render
the
'344
Claim
13
patent
patent-
Elements Al and A2 recite "electronically receiving,"
64
respectively,
"ticket information derived from a locate ticket"
and "an image of the geographic area comprising the dig area,-"
however,
the
as noted above with respect to element A of Claim 1 of
'204
patent,
electronic
receipt
of
transformative
additional
feature
eligible
otherwise
patent-ineligible
an
that
data
will
is
not
render
a
patent-
abstract
idea.
Accordingly, just as element A in Claim 1 of the '204 patent did
not
transform
such
claim
because
it
merely
electronically receiving an image of the dig area,
element
A2
reciting
fail
to
transform
electronically receiving
area comprising the dig area."
establishes
locate
Claim
that,
in
operation,
containing
the
the
of
of
the
"an image
so also does
'344
patent
the
geographic
of
by
Moreover, the '344 patent itself
conventional
locate
"set
13
recited
process
technicians
of
conducting
receive
necessary
instructions
locate
for
a
tickets
a
locate
technician to perform a locate operation."
'344 patent at 1:46-
48.
is
Given
that
such
set
of
instructions
"necessary
for
a
locate technician to perform a locate operation," the fact that
element Al simply recites the electronic receipt of such ticket
information,
receive
which
the
locate
in some other manner,
technician
conventionally
can hardly be
said to
would
transform
Claim 13.
Likewise,
the
abstract
element
idea
to
B,
which
considered
Claim
65
13
alone,
is
does
directed.
not
The
transform
addition
of
a
digital
transformative
patent.
representation
for
the
Furthermore,
associated
with
when
locate
the
abstract
combination
received
reasons
dig
operation
such
image"
locate
and
"a
Claim
is
akin
to
do
the
'204
indicative
not
In
with
the
not
"a geographic location
13.
information
is
timestamp
occurred"
in
mark
regarding
stated above
area"
embodied
of
a
the combination of
the
idea
of
transform
element
the
of
the
B,
the
"electronically
computerization
of
the
conventional process of manually documenting a locate operation.
In
a
conventional
information
may
locate
regarding
"typically
a
operation,
the
locate
operation,
.
contain
the
documentation
.
.
among
time
and
other
date
of
the
things,
the
locate
operation was performed" and "the geographic address of the dig
area."
See '344 patent at 2:6-18.
recites
the combination of
Element B of Claim 13 simply
that same
information with an image
to create a computer-readable file containing such information.
Therefore,
method
generic
element B is tantamount to reciting the conventional
of
documenting
computer
a
locate
components.
element is not transformative.
Finally,
transform
process
storing"
considered
Claim
of
13
into
operation,
Therefore,
See 134 S.
Ct.
as
under
element
patent-eligible
subject
transmitting
Alice,
using
such
at 2357-58.
individually,
"electronically
applied
and/or
C
does
matter.
not
The
electronically
"one or more computer readable files that include some
66
or all of the information regarding a locate operation," Markman
Opinion
and
record
of
locate
Order
a
at
locate
operation
transformative
58
(construing
operation"),
is
verifiable,"
additional
involves the use of
"so
that
in
at
2359
most
(noting that
basic
use
13
computer components
of
of
a
a
the
because
a
it
to perform the
See Alice, 134 S. Ct.
computer"
computer);
of
constitute
"electronic recordkeeping
functions
conventional"
not
Claim
generic task of electronic recordkeeping.
electronic
performance
does
feature
generic
"searchable
[is]
and
buySAFE,
one of
is
765
a
the
"purely
F.3d
at
1355
(finding that using a computer to send and receive information
over a network without any further specification was
arguably
inventive");
Accordingly,
none
claim
patent-eligible
into
of
see
the
also
elements
supra
"not
even
Part
III.B.2.a.ii.
in Claim 13
transform such
subject
matter
when
considered
individually.
When
fail
considered
to
transform
in
combination,
such
claim
application of an abstract idea.
much
the
same
limitations
received;
as
that:
Claim
locate
1
of
the
ticket
the
into
elements
the
in
Claim
13
patent-eligible
Claim 13 of the '344 patent is
'204
patent,
information
is
with
the
added
electronically
and an electronically received image is combined with
a geographic location associated with a dig area and a timestamp
indicative of when the locate operation occurred.
67
Thus,
to the
extent
that
the
subject matter,
'204
patent
fails
whether Claim 13
to
claim
patent-eligible
is patentable depends
on
the
extent to which such additional limitations in Claim 13 qualify
as
transformative
generic
additional
computer
implementation
'additional feature'
the
process
is
monopolize the
2358
As
than
a
[abstract idea]
in
the
is
To
not
reiterate,
generally
"wholly
the
sort
of
that provides any 'practical assurance that
more
(alteration
1297) .
features.
drafting
effort
itself.'"
original)
(quoting
specification
Alice,
Mayo,
indicates,
designed
134 S.
132
S.
receiving
Ct. at
Ct.
a
to
at
locate
ticket containing the information necessary to perform a locate
operation
and
documenting
information
regarding
a
locate
operation in a manifest containing the geographic address of the
dig
area
and
the
performed
was
a
time
typical
operations.
In
patent,
directed
is
and
essence,
date
the
feature
Claim
13,
towards
locate
of
like
operation
conventional
Claim
performing
1 of
that
was
locate
the
'204
conventional
activity using generic computer implementation of such process.
Accordingly,
necessary
under Alice,
to
transform
Claim 13 lacks an innovative concept
such
claim
into
a
patent-eligible
application of an abstract idea, rather than simply an attempt
to claim the abstract idea of creating a computer-readable file
to store information,
environment of
as applied in the particular technological
conducting a locate operation.
68
Thus,
Defendants
have shown,
by clear and convincing evidence,
that
Claim 13 is
invalid because it does not claim patent-eligible subject matter
under
35
U.S.C.
§
101
and,
therefore,
the
Court
will
GRANT
Defendants' motion with respect to Claim 13.
The Court also finds that Claim 17
not
contain
into
an
innovative
patent-eligible
respect
to Claim
concept
subject
19 of
the
of
the
sufficient
matter.
to
transform
stated
As
'204 patent,
'344 patent does
above
it
with
the recitation of an
aerial image as the medium to which representations of physical
locate
marks
are
added
is
not
transformative.
Similarly,
the
recitation of an aerial image with which a geographic location
associated with the dig area and a timestamp are combined does
not
constitute
particular
an
innovative
technological
concept,
environment
when
of
considered
locate
in
the
operations,
because the geographic address of a dig area and an indication
of
the date and time at
which a
locate operation was performed
were typically incorporated into a paper manifest containing a
sketch
or
drawing
of
the
dig
information with an aerial
area.
The
image using a
combination
of
such
computerized process,
rather than combining such information with a sketch or drawing
of the dig area using a manual process,
because
it
conventional
locate
is
essentially
method
operation,
of
albeit
the
recording
using
an
69
same
is not
as
computerizing
information
aerial
transformative
image
relating
rather
the
to
a
than a
sketch.
17
Therefore,
does
not
claim
the Court
finds
patent-eligible
will GRANT Defendants'
that,
like Claim 13,
subject
matter.
Claim
The
Court
motion as to Claim 17.
Having concluded that Claims 13 and 17, the asserted method
claims in the '344 patent,
matter,
fail to claim patent-eligible subject
the Court must also conclude that Claims 1 and 4 of such
patent do not claim patent-eligible subject matter.
above,
As
stated
Claims 1 and 4 simply recite generic computer components
configured to implement the methods stated in Claims 13 and 17,
respectively.
Accordingly,
under
Alice,
for
the
purposes
of
determining whether Claims 1 and 4 claim patent-eligible subject
matter, the validity of such claims is tied to Claims 13 and 17.
Claims
13
therefore,
Defendants'
and
17
nor do
do
not
Claims
claim
1 and 4.
motion with respect
patentable
Thus,
to Claims
subject
matter,
the Court will GRANT
1 and 4 of
the
'344
patent.16
c.
The
'359
Patent
The Court will now analyze whether the
patent-eligible
subject
matter.
The
'359 patent claims
asserted
claim
in
such
16 Although Plaintiff did not specifically address the '344 patent
in its brief, to the extent Plaintiff's arguments with respect to
preemptive effect, "real-world" steps, and the "significant role" of
the enumerated computer components in permitting the claimed method to
be performed apply to the
'344 patent,
the Court rejects those
arguments with respect to such patent for the same reasons stated
above with respect to the '204 patent.
In addition, the Court rejects
those same arguments with respect to the '359, '341, and '001 patents
for the same reasons stated above.
70
patent,
the
Claim 1,
claims
elements
method
in
of
is directed towards the same abstract idea as
the
Claim
claims
in
'204
1,
and
which
the
'204
'344
patents.
Similarly,
is
very
similar
to
and
'344
patents,
the
when
the
asserted
considered
either individually or in an ordered combination do not include
an inventive concept sufficient to transform such claim into the
patent-eligible application of an abstract idea.
i.
Claims 1 Is Directed Towards an Abstract Idea
Under step one of Alice, the Court finds that, by clear and
convincing evidence,
Defendants have shown that Claim 1 of the
'359 patent is directed towards the abstract idea of creating a
computer-readable file to store information,
particular
technological
operation.
Claim 1 of such patent is directed at a method for
generating
a
"searchable
operation," that is,
include
some
operation,"
or
electronic
all
of
the
conducting
record
information
Markman Opinion and Order
simplest
of
of
a
a
locate
locate
"one or more computer-readable files that
locate technician."
their
environment
as applied in the
See
form,
at
regarding
58,
elements
in
Claim
locate
"performed by a
'359 patent at 17:53-55.
the
a
Distilled to
1
recite:
electronically receiving an aerial image of the dig area,
such image displayed,
adding
A)
with
at least in part on a display device; B)
to such image a digital representation of a physical
locate mark; and C)
electronically transmitting and/or storing a
71
computer
readable
information
file
regarding
that
a
includes
locate
some
operation,
or
with
all
of
such
the
computer
readable file comprising the aerial image to which at least one
digital representation of a physical locate mark has been added
and a
data
set
marking path,
including
a
set
of
geographic
points,
including geographical coordinates
physical locate marks,
along
responding
a
to
the property address associated with the
physical locate marks, a timestamp of when the locate operation
occurred,
the
name
of
the
locate
technician,
the
name
of
the
company that performed the locate operation, and a ticket number
associated with such operation.
Those
elements
information,
embrace
the
See id.
abstract
at
17:53-67,
process
in the form of the aerial image,
of
18:1-21.
receiving
adding additional
information to it, in the form of the digital representation of
the
physical
locate
mark,
and
then
storing
such
combined
information in a computer readable file with other information
related to the locate operation.
In short,
such patent claims
the abstract idea of creating a computer-readable file to store
information,
environment
as
of
merely recites
that
stores
applied
conducting
a method
much
of
in
a
for
the
the
locate
particular
operation
creating a
information
operation.
72
technological
because
Claim
computer-readable
pertinent
to
a
1
file
locate
ii.
Claim 1 Does Not Transform the Abstract Idea to Which It Is
Directed
Under Alice step two, the Court finds
shown,
Claim
clear and convincing evidence,
by
1,
individually
and
as
an
that Defendants have
that
ordered
the
elements of
combination,
fail
to
transform such claim into the patent-eligible application of the
abstract idea to which Claim 1 is directed.
Elements A and B of
Claim 1 are essentially the same as elements A and B of Claim 1
of
the
'204
patent,
Claim
19 of the
Claim
1 of the
for
the
101.
same
as
'204 patent
l359 patent
reasons
Element
limited by
C
of
additional
therefore,
element
do not
in
transform
into a patent-eligible application
Claim
the
and,
the
19
'359
is
deficient
patent
is
the
under
only
35
U.S.C.
element
§
that
differs in any material way from the asserted claims in the '204
and
'344
because
patents.
it merely
computer-readable
particular
recites
element C
the process
file containing
technological
operations.
omitted)
However,
See,
e.g.,
(holding
that
of
generic
information specific
to the
a
creating
of
conducting
Ct.
at 2359
134 S.
"[u]sing
transformative
a
environment
Alice,
is not
computer
to
locate
(citation
create
and
maintain 'shadow' accounts amounts to electronic record keepingone
of
the
Conversion,
most
2014
recording and
basic
WL
storage
functions
4364848,
are
at
of
*10
conventional
73
a
computer.");
(indicating
functions
Loyalty
that
data
of a generic
computer) .
The
fact
that
the
information
included
in
the
generic computer-readable file might be detailed and specific to
the particular technological environment of
does
not
affect
the
Court's
conclusion
information on a computer-readable
See Content Extraction,
"an
attempt
to
limit
2014
the
file
that
is not
WL 7272219,
abstract
locate operations
at
idea
storing
transformative.
* 4
of
such
(finding that
recognizing
and
storing information from hard copy documents using a scanner and
a computer to a particular technological
transformative).
innovative
Additionally,
concept
because
environment"
was not
element C lacks a transformative
it
merely
recites
a
computerized
process of documenting information related to a locate operation
that
conventionally
would
be
documenting such information.
included
in
a
paper
manifest
As the '359 patent itself states,
paper manifests "may typically contain a variety of information
related to a locate operation including a sketch or drawing of
the dig
area
locate marks
that
identifies
the approximate
. . . present at the dig area,
location of
the
the time and date
the locate operation was performed, identification of the entity
and the locate technician performing the locate operation,
. . . the geographic
patent
that
at
the
element
2:13-24.
information
C—a
set
of
address of
Accordingly,
to
be
the dig area
the
included
geographic
74
in
points
patent
the
. . . ."
itself
data
including
set
[and]
'359
indicates
stated
in
geographical
coordinates
address
corresponding
to
physical
locate
associated with the physical
indicative
of
when
the
technician,
the name of
the
operation,
operation
locate
marks,
locate marks,
occurred,
the
the company responsible
and
a
ticket
a
a
property
timestamp
name
of
the
for performing
number—is
essentially
the
same as the information that would traditionally be included in
the documentation of a locate operation in a hand-made manifest.
Although geographical coordinates corresponding to the physical
locate marks
might
differ
in detail
from a
sketch identifying
the approximate location of the locate marks,
does
not
that
the
a
mere
differ
in kind.
inclusion of
attempt
creating
a
applied
in
to
a
Similarly,
ticket
obtain
a
number
patent
computer-readable
the
file
particular
conducting a locate operation.
the
such information
Court
does
transforms
on
to
the
element
abstract
store
not
find
C
from
idea
of
information,
environment
technological
as
of
Thus, individually,
the elements
in Claim 1 of the '359 patent do not satisfy Alice step two.
Considered as an ordered combination,
1
also
fail
to
transform
such
claim
the elements in Claim
into
a
patent-eligible
application of the abstract idea to which Claim 1 is directed.
Just as
Claim
1
with the asserted claims
of
the
'359
patent
in the
merely
'204 and
recites
a
'344 patents,
method
of
using
generic computer components to perform the conventional locateoperation-documentation process
described
75
in
the
specification
to the
'204
'359 patent.
and
'344
Accordingly,
patents
do
not
does
Claim
1
claim
patent-eligible
Alice.
The Court recognizes that some of the information,
locate marks,
the
coordinates
computer-readable
conventional
however,
'359
file
method
the Court
contains
from,
of
finds
the
fail
under
for
to physical
data set
greater
stored in
detail
than,
or
paper manifests created during
documenting
that
patent
corresponding
included in element C in
might otherwise be absent
the
the
subject
so
the geographic
in
those claims in the
matter,
example,
also
just as
a
locate
such additional
operation;
information does
not transform the method in Claim 1 from an attempt to claim the
abstract
idea
information,
of
a
applied
as
creating
in
environment
of
conducting
information
is
the
would be
included
concludes
that
same
in a
computer-readable
a
the
locate
sort
of
particular
information
have
shown,
to
because
that
clear
such
ordinarily
Therefore,
by
store
technological
operation,
paper manifest.
Defendants
file
and
the
Court
convincing
evidence, that Claim 1 in the '359 patent does not claim patent-
eligible subject matter under 35 U.S.C.
§ 101.
The Court will
GRANT Defendants' motion with respect to such claim.
d.
Next,
The
the Court will determine whether the asserted claims
in the '341 patent, Claims 1,
eligible
'341 Patent
subject matter.
7,
16,
17,
Similar to the
76
and 28,
'204,
claim patent'344,
and
'359
patents, the asserted claims in the '341 patent are directed to
an abstract idea.
claims,
Like the other patents,
the elements in such
both individually and as an ordered combination,
transform
such
claims
into
patent-eligible
Therefore,
the Court will GRANT Defendants'
subject
do not
matter.
motion with respect
to the '341 patent.
i. Claims 1, 7, 16,
17,
and 28 Are Directed to an Abstract Idea
The Court begins by applying the
finds that the
to
asserted claims in the
the abstract
information,
environment
idea of
as
of
first step in Alice and
'341 patent are directed
electronically transmitting or storing
applied
in
conducting
a
the
particular
locate
technological
operation.
At
its
core,
Claim 1 recites a method of: A) performing a locate operation in
which
a
physical
pavement,
colored
or another
marker
is
surface in a
applied
dig
area
to
the
ground,
to indicate the
presence or absence of an underground facility; B) displaying on
a display device a digital image of the dig area; C)
such
image
physical
an
electronic
colored
electronically
marker
colored
marker
applied
in
transmitting
and/or
the
adding to
corresponding
dig
area;
electronically
to
the
and
D)
storing
image data relating generally to a locate operation.
non-
See '341
patent at 34:62-67, 34:1-15; Markman Opinion and Order at 49-50
(construing
"information-relating
to
the
marked-up
image"
"non-image data relating generally to a locate operation.").
77
as
In
other words,
a
locate
digital
Claim 1 recites the abstract process of performing
operation;
image,
displaying
on
a
display
information to such image,
marker;
and
storing
information,
information,
electronically
Defendants
device;
the
adding
form
of
a
additional
in the form of an electronic colored
transmitting
and/or
electronically
in the form of non-image
data relating
generally to a locate operation.
that
in
have
shown,
by
Therefore, the Court concludes
clear and convincing evidence,
that Claim 1 in the '341 patent is directed to the abstract idea
of
electronically
applied
in
transmitting
the
storing
information,
as
technological
particular
or
environment
of
conducting a locate operation, because Claim 1 merely recites a
process
form
of taking
of
a
information
locate-operation-related
digital
in
the
image,
form
of
adding
an
more
information in the
information
electronic
colored
to
such
marker,
then electronically transmitting or storing information,
and
in the
form of non-image data relating generally to a locate operation.
The
claim,
the
Court
Claim 7,
also
determines
that
the
other
which is dependent on Claim 1,
same abstract
idea
to which Claim 1
limits element B in Claim 1,
is
asserted
method
is directed to
directed.
Claim 7
"displaying on a display device at
least one digital image of a geographic area comprising the dig
area,"
in
two
ways:
Bl)
electronically
receiving
ticket
information derived from a locate request ticket that specifies
78
the dig area and requests performance of the
locate operation;
and B2) "selecting the at least one digital image for display on
the
display
device
based
at
information received in Bl)."
least
in
part
on
the
See '341 patent at 35:4-5,
ticket
46-53.
The Court finds that despite the additional limitations in Claim
7,
Claim
because
7
is
directed
such
information
to
the
limitations
received
in
abstract
merely
element
manner in which information,
is
same
B
idea
in Claim
the
amount
of
limit
the
increase
of
Claim
1
in the form of
and
the digital
1
image,
selected.
Likewise,
storage
device
respectively,
Claim 1.
the
Court
and
concludes
apparatus
that
the
claims,
computer-readable
Claims
16
and
17,
are directed towards the same abstract idea in
As noted above with respect to the asserted claims in
the '204 and '344 patents, to avoid interpreting section 101 to
make
when
patent
an
eligibility depend simply
apparatus
or
on
computer-readable
art,
the draftsman's
medium
claim
merely
recites generic computer components configured to implement the
same
idea present
treated the
same
in
for
a
the
method
claim,
purposes
of
such
claims
determining whether
claim patent-eligible subject matter.
See Alice,
2360
2014
(citations
omitted) ;
Joao
Bock,
should
WL
be
they
134 S. Ct. at
7149400,
at
*8
(finding that "[t]he fact that the asserted claims are apparatus
claims,
not
method
claims,
does
79
not
change
the
court's
analysis");
cf.
F.S.B. ,
F.
2014
WL
CMG
Supp.
4922349,
omitted)
Fin.
Servs.,
2d
at
, Case No.
*7
(holding that
Inc.
(CD.
Cal.
"[c]omparing the
identical
....
Thus,
Pac.
Trust
Bank,
CV 11-10344 PSG (MRWx) ,
Aug.
claims with that of the method claims,
functionally
v.
29,
2014)
language of
(citations
the
system
it is clear that they are
they must
be
treated as
equivalent for the purposes of the § 101 analysis."); DietGoal,
2014 WL 3582914,
at
*14
(same) .
In this
case,
Claim 16
merely
recites generic computer components,
in the form of a computer-
readable
processor,
storage
device
and
a
accomplish the method in Claim 1.
Likewise,
generic
Claim
17
merely
computer
configured
to
See '341 patent at 36:36-57.
recites
components—a
an
apparatus
"communication
containing
interface,"
"display device," "user input device," "memory," and "processing
unit"—configured to perform the method in Claim 1.
Court concludes that,
the
abstract
idea
information,
as
directed
differ,
The
to
of
electronically
applied
that
in substance,
Court
the
to the extent that Claim 1 is directed to
in
the
transmitting
particular
environment of conducting a locate operation,
are
Thus,
same
abstract
idea
or
storing
technological
Claims 16 and 17
because
they
do
not
to
the
from the method in Claim 1.
further
finds
that
Claim
28
is
directed
same abstract idea as Claim 17 because Claim 28 is dependent on
Claim 17, but does not include sufficient additional limitations
80
to prevent such claim from being directed to the abstract idea
claimed in Claim 17.
with
the
Claim 28 recites the apparatus in Claim 17
additional
limitation
information relating
to
the
that
in D)
marked-up
of
image
such
claim,
includes
at
"the
least
one timestamp indicative of a date and/or a time at which the
locate operation is performed in A)."
Claim
28
limits
the
locate operation"
a timestamp.
information
The
Court
"non-image
data
relating
generally
electronically
that
transmitted
such
limitation
Court concludes that Claim 28,
'341
or
is
the
a
stored
patent,
is
particular
in
Claim
insufficient
to
17.
direct
therefore,
the
like the other asserted claims in
directed
to
the
electronically transmitting or storing
in
to
Claim 28 simply limits the form of
Claim 28 to patent-eligible subject matter and,
the
Thus,
in Claim 17 to require that such data include
In other words,
finds
Id. at 38:47-50.
technological
abstract
information,
environment
of
idea
of
as applied
conducting
a
locate operation.
ii. Claims 1, 7,
16,
17,
and 2 8 Do Not Transform the Abstract
Idea to Which They Are Directed
Step two of Alice
the elements of
additional
as
an
patent-eligible
the Court to ascertain whether
the asserted claims in the
features
ordered
requires
that are sufficient,
combination,
application
to
transform
of
an
81
'341 patent contain
either individually or
such
abstract
claims
idea,
into
rather
the
than
simply an attempt to claim the abstract idea itself.
of Claim 1 does not
Element A
include a transformative additional feature
because it merely recites the commonplace practice—indeed,
one
that is not just commonplace, but also "required"-of performing
a locate operation,
uses
physical
absence
of
a process during which a locate technician
colored
markers
underground
to
indicate
the
See
id.
facilities.
presence
at
or
1:36-62
(describing the conventional process of using color-coded paint
or flags
to indicate
the presence or absence of underground
facilities at a dig area).
Element B, involving the display of
a digital image of the dig area on a display device, does not
constitute
a
transformative
additional
feature
for
the
same
reason element B in Claim 1 of the '204 fails to do so, namely,
because using a generic computer component, a display device, to
perform the common computer task of displaying information is
not
transformative under Alice.
transform
Claim
l
into
a
Similarly,
patent-eligible
element C does
application
of
not
an
abstract idea for the same reasons that element C of Claim 1 of
the '204 patent did not render that claim patent-eligible.
The
only difference between the elements C in Claim 1 of the '341
patent
and
Claim
1
of
the
'204
patent
is
that
the
former
requires the addition of an "electronic colored marker"
to the
displayed image, rather than the "digital representation" added
in
the
latter;
that
is
a
distinction
82
without
a
difference.
Finally,
when
transform
considered
Claim
transmission or
1
of
individually,
the
electronic
'341
element
patent.
storage
of
D
does
The
non-image
not
electronic
data
relating
generally to a locate operation, element D of Claim 1, recites a
generic process of electronically storing information.
However,
such
suggests
element
is
not
the use of generic
transformative
because
it
merely
computer components to perform "one of the
most basic functions" of a computer,
"electronic recordkeeping."
See, e.g., Alice,
134 S. Ct. at 2359
(citation omitted); Amdocs,
2014
at
WL
5430956,
*8.
Moreover,
element D simply recites a
computerized method of performing a conventional activity in the
particular
because
technological
the
paper
environment
manifests
of
locate
conventionally
used
operations
to
document
locate operations "may typically contain" non-image information
relating generally to a locate operation,
time
and
date
the
"identification of
the
locate
operation,"
of
markings
locate
the
1
"the
locate
entity
was
"the
performed,"
technician performing
requesting
the
locate
"the geographic address of the dig area," "the type
used
for
technician,"
Claim
operation
entity and
operation,"
patent at 2:27-39,
in
locate
in the form of
do
the
"and/or
49-50.
not
locate
a
operation,"
technician
Therefore,
transform
such
subject matter.
83
"notes
from
signature."
the
'341
individually, the elements
claim
into
patent-eligible
Taken together,
as an ordered combination,
the elements of
Claim 1 of the '341 patent do not transform such claim into the
patent-eligible application of an abstract idea for the same
reasons that Claim 1 of the
eligible
subject
'204 patent fails to claim patent-
matter.
As
discussed
above,
in
conventional process of documenting a locate operation,
create
manifests
that
include
some
or
all
of
the
the
persons
information
regarding a locate operation, and such manifests "may typically
contain"
non-image
operation.
recites
the
It follows,
an
method,
information
electronic
relating
therefore,
method
of
practitioner
the
to
particular
locate operation,
Ct.
at
shown,
'341
that Claim
performing
to
locate
which
1,
a
simply
that
conventional
fails under Alice because such claim "simply instruct[s]
implement
electronically transmitting or
in
generally
2359.
by
abstract
storing
technological
Therefore,
is
idea.
abstract
idea"
information,
environment
of
as
the
Court
invalid
The
because
Court will,
holds
evidence,
it
claims
of
applied
conducting
using generic computer components.
clear and convincing
patent
the
See 134 S.
that
Defendants
that
Claim
a
accordingly,
a
have
1 of
the
patent-ineligible
GRANT Defendants'
motion as to such claim.
Having concluded that
that
Claims
because
they
16
and
merely
17
of
recite
Claim 1 is
the
a
'341
invalid,
patent
the
are
computer-readable
84
Court
finds
also
invalid
storage
device
and
an
apparatus
comprised
of
generic
computer
components
configured to perform the method in Claim 1 of such patent.
Thus, for the same reasons,
that
Claim
21
of
the
stated above, where the Court found
'204
because
the
functionally identical method claim in Claim 1 was invalid,
the
Court finds that Claims
16
patent
was
invalid
and 17 are invalid because they are
functionally identical to Claim 1.
Consequently, the Court will
GRANT Defendants' motion with respect to Claims 16 and 17 of the
'341
patent
because
Defendants
have
shown,
by
clear
and
convincing evidence, that such claims are invalid for failure to
claim patent-eligible subject matter.
The Court also concludes
on Claim 1,
that Claim 7,
which is dependent
fails under step two of Alice because it does
include elements that, individually or in combination,
not
transform
the method stated in Claim 1 into a patent-eligible application
of
an abstract idea.
not
transform
electronically
request
ticket,
requesting
locate
the
Individually,
such
claim
receiving
with
performance
technicians
use
because
ticket
such
element Bl
ticket
of
a
locate
it
information
specifying
locate
tickets
of
Claim 7 does
merely
from
the
dig
recites
a
area
operation.
in
the
locate
and
However,
conventional
process of conducting locate operations because a locate ticket
is "the set of instructions necessary for a locate technician to
perform
a
locate
operation."
'341
85
patent
at
1:67,
2:1-2.
Moreover,
such
tickets
"might
specify"
description of the dig area to be marked."
"the
address
Id. at 2:2-4.
or
Thus,
element Bl merely recites an electronic process of receiving
ticket
information
receive
not
a
locate
in some other manner and,
contain
See,
that
e.g.,
a
transformative
Content Extraction,
technician
therefore,
additional
contain
only
a
recites
transformative
selecting
the
feature
under
does
Alice.
at *3-4.
The
element B2 of Claim 7 does
innovative
digital
would
such element
2014 WL 7272219,
Court also finds that, individually,
not
ordinarily
concept.
image
Such
displayed
claim
on
the
display device based in part on the ticket information received.
The Court has already determined that the use of a digital image
is
not
claims
transformative,
in
document
the
a
as
discussed above
'204 patent.
locate
operation,
If
a
it
is
with
digital
respect
image
hardly
is
to
the
used
to
transformative
to
determine what digital image to use in conducting such operation
based
on
a
locate
ticket
because,
by
definition,
the
locate
ticket provides the information necessary for the technician to
perform the locate operation in the first place-a locate ticket
is "the set of
instructions necessary for a locate technician to
perform a locate operation," Markman Opinion and Order at
(emphasis added).
Using information from the locate ticket to
select the digital image
both a
locate
63-64
ticket
is a logical corollary to the use of
to provide
86
a
locate
technician with the
information
necessary
to
conduct
a
locate
operation
digital image to document a locate operation.
and
a
Thus, element B2
also fails to transform the abstract idea to which Claim 7 is
directed.
Considered in combination with the other elements in Claim
1,
the additional elements in Claim 7 do not transform such
claim into the patent-eligible application of an abstract idea.
Claim
1
merely
recites
an
electronic
iteration
of
the
conventional process of storing information relating generally
to a locate operation.
Claim 7 adds to such process by reciting
an electronic method of receiving a locate ticket and selecting
a digital image based on such ticket; however, the conventional
method of storing information relating generally to a locate
operation also includes a locate technician receiving a locate
ticket
because
necessary
Thus,
such
ticket
contains
for the technician
the Court
finds
that,
the
set
to perform a
in combination,
Claim 7 and in Claim 1 merely recite
of
instructions
locate
operation.
the elements
in
an electronic method of
using generic computer components to perform the conventional
method
of storing
operation.
shown,
information
Therefore,
relating
generally
to a
locate
the Court concludes that Defendants have
by clear and convincing evidence,
that Claim 7 of the
'341 patent does not transform such claim from an attempt to
claim
the
abstract
idea
of
electronically
87
transmitting
or
storing information, as applied in the particular technological
environment of conducting a locate operation.
The Court will
GRANT Defendants' motion as to Claim 7 of the '341 patent.
Finally, with respect to the '341 patent, the Court holds
that Claim 28 does not
satisfy the second part of
the Alice
test, as required to constitute a valid claim under 35 U.S.C §
101.
Individually,
the additional element in Claim 28 alters
the apparatus claim in Claim 17, which is functionally identical
to the method claim in Claim l, by requiring that the non-image
data
relating
generally
to
a
locate
operation,
which
the
apparatus electronically transmits and/or electronically stores,
contain "at least one timestamp indicative of a date and/or a
time at which the locate operation is performed in A)."
patent at 38:47-50.
not
transform
the
However, such element,
claimed
reciting an electronic
invention
'341
individually, does
because
method of conducting
it
the
is
akin
to
conventional
method of documenting a locate operation in a paper manifest.
As
the
contain"
specification
different
indicates,
forms
of
manifests
non-image
generally to a locate operation.
"may
information
Importantly,
typically
relating
such non-image
information includes "the time and date the locate operation was
performed."
Id^ at 2:27-29, 32-33.
Thus, the Court finds that
the additional element in Claim 28 is not transformative because
it merely
recites
the
use
of
generic
88
computer
components
to
perform part of the conventional process of documenting a locate
operation, namely,
storing information concerning the date and
time at which the locate operation occurred in a paper manifest.
Likewise,
the Court finds that such element, when considered in
conjunction with the elements in Claim 17,
does not transform
Claim 28 into a patent-eligible application because such claim
merely
recites
an
apparatus
composed
of
generic
computer
components configured to perform an electronic method of storing
information relating to a locate operation that ordinarily would
be stored using paper manifests in the conventional method of
documenting a locate operation.
shown,
'341
Accordingly,
by clear and convincing evidence,
patent,
along
with the
other
Defendants have
that Claim 28 of the
asserted
claims
in such
patent, is invalid because it is directed to the abstract idea
of
electronically
applied
in
conducting a
that,
the
transmitting
locate operation,
storing
information,
as
technological
particular
or
environment
of
but does not
contain elements
individually or as an ordered combination,
transform such
claim into a patent-eligible application of an abstract idea.
Therefore,
the Court will GRANT Defendants'
motion as to Claim
28 of the '341 patent.
e.
The
'001 Patent
Lastly, the Court will consider whether Claim 1 of the '001
patent,
the only asserted claim in such patent,
89
claims patent-
eligible subject matter under 35 U.S.C.
two-step framework stated in Alice,
Claim 1 is directed
displaying
to the
information,
Applying the
the Court concludes that
abstract
as
§ 101.
idea of electronically
applied
in
the
particular
technological environment of conducting a locate operation.
The
Court also finds that the elements in Claim 1, individually and
as an ordered combination, fail to transform such claim into the
patent-eligible application of an abstract idea.
Court will GRANT Defendants'
Therefore, the
motion with respect to Claim 1 of
the '001 patent.
i. Claim 1 Is Directed to an Abstract Idea
Under the now familiar first step of Alice,
determine whether
Claim
1
is
directed
to
an
the Court must
abstract
idea.
Claim 1 is directed at a system for "electronically displaying
information relating to the use of a marking tool configured to
dispense one or more markers to mark ... a location of an
underground utility
. . . ."
'001 patent at 8:14-17.
The
elements in Claim 1 comprise: "a processor to receive" data that
identifies a geographic location "relating to the use of the
marking system or the marking tool;"
and a "display device
communicatively coupled to the processor."
See id. at 8:19-22;
Markman Opinion and Order at 44 (construing "location data" as
"data that identifies a geographic location").
Further,
"the
processor uses" the data that identifies a geographic location
90
"to
control
the
display device
so
as
to
visually
display
the
dispensing of the one or more markers that mark the location of
the underground utility on an electronic representation of an
area that is marked and includes the location of the underground
utility."
44.
'001 patent at 8:23-28; Markman Opinion and Order at
Those elements embrace the abstract idea of a
receiving
information,
in
the
form of
data
that
system for:
identifies
a
geographic location relating to the use of the marking system or
marking tool; and displaying information on a display device, in
the form of the visual display of the
more markers
"dispensing of the one or
that mark the location of
on an electronic representation of an
includes
the
location
patent at 8:19-28.
directed
of
the
Thus,
the underground utility
area that
underground
is marked and
utility."
See
'001
the Court concludes that Claim 1 is
to
the
abstract
idea
information,
as
applied
of
in
electronically
the
particular
displaying
technological
environment of conducting a locate operation.
ii.
Claim 1 Does Not Transform the Abstract Idea to Which It Is
Directed
The
last
Court
remaining
will
now
asserted
consider
claim,
whether
Claim
1
the
of
elements
the
'001
in
the
patent,
individually or as an ordered combination,
transform such claim
into
abstract
a
patent-eligible
recitation
of
generic
application
computer
of
an
components
91
to
idea.
perform
The
routine,
conventional activities does not provide a limitation sufficient
to
render
patent-eligible,
abstract idea.
at
*4.
The
an
otherwise
patent-ineligible
See, e.g., Content Extraction, 2014 WL 7272219,
first
element
in Claim 1 recites
a
processor to
receive data that identifies a geographic location relating to
the use of the marking system or the marking tool.
at 8:19-20.
computer
In essence,
component,
4001 patent
that element recites using a generic
the
processor,
see,
e.g.,
Intellectual
Ventures, 2014 WL 1513273, at *3 (noting that a processor is a
conventional computer component); Joao Bock, 2014 WL 7149400, at
*7
(finding that a processing device was
a generic computer
component), to perform the conventional operation of receiving
data,
see,
e.g.,
buySAFE,
765
"receiv[ing]
and send[ing]
no
specification-is
further
Therefore,
individually,
transformative.
3582914,
at *15
visual display"
Alice,
see
at
1355
(finding
that
the information over a network—with
not
even
arguably
inventive").
the first element in Claim 1 is not
Likewise,
computer component,
F.3d
element
2 simply recites
a display device,
(noting that a
a generic
see DietGoal,
"user interface,
are generic computer components),
2014
WL
database,
or
that,
under
is insufficient to render such element transformative,
134
S.
transformative
component,
Ct.
at
because
2358.
Finally,
it
recites
only
element
one
3
generic
is
not
computer
the processor, using data to cause another generic
92
component,
the
computer
display device,
function
Conversion,
of
displaying
2014 WL 43648484,
information"
was
to perform
one
of
conventional
information.
at *9
the
the
See
Loyalty
(finding that "displaying
"basic
functions
of
a
generic
computer"); DietGoal, 2014 WL 3582914, at *13 (citing Accenture,
728
F.3d
making
at
1338,
1344-45)
computations
from
(holding that
stored
data,
manipulating
and
data,
"displaying
the
results on a visual display" were conventional computer tasks).
Accordingly,
the elements in Claim 1,
considered individually,
do not transform such claim into the patent-eligible application
of the abstract idea to which such claim is directed.
The Court also finds that the elements of Claim 1 fail to
transform such claim when considered as an ordered combination
because
they
merely
recite
the
use
of
generic
computer
components configured to perform routine, conventional computer
functions.
a display
Using a processor to receive information and control
device
to visually
"additional feature"
is
more
than
a
abstract
idea"
applied
in
in Claim 1 that
drafting
of
the
display
effort
electronically
particular
Claim
citation,
"ensure[s]
designed
to
displaying
technological
conducting a locate operation.
(alterations,
information
See Alice,
is
that
not
an
the claim
monopolize
the
information,
as
environment
of
134 S.
Ct.
at 2357
and internal quotation marks omitted).
l merely recites using
conventional computer components,
93
performed in a conventional way, to implement the abstract idea
of
electronically
displaying
information,
limited
to
the
particular field of conducting a locate operation through the
sort of information that is displayed.
However, the specificity
of the information that the processor receives and the display
device displays does not alter the Court's conclusion that, as a
whole,
the elements in Claim 1 are not transformative of the
abstract
idea they embrace because
"limiting the use of an
abstract idea to a particular technological environment" is not
enough to confer patent eligibility.
quotation marks omitted)
Id^ at 2358
(internal
(citing Bilski, 561 U.S. at 610-11).
Therefore, the Court finds that Defendants have shown, by clear
and convincing evidence,
that Claim 1 of the '001 patent is
invalid because it does not claim patent-eligible subject matter
under 35 U.S.C. § 101.
The Court will GRANT Defendants' motion
with respect to the '001 patent.17
17 As noted above, the Supreme Court has indicated that the
machine-or-transformation test remains a "useful and important clue .
. for determining whether some claimed inventions are processes
under § 101."
Bilski, 561 U.S. at 604.
invention must be
To satisfy such test, the
"tied to a particular machine or
apparatus"
"transform a particular article into a different state or thing."
at 602
(citation and internal quotation marks omitted).
or
Id^
In their
briefs, the parties presented no argument with respect to the machineor-transformation test.
The Court has employed the methodology that
the Supreme Court applied in Alice to determine whether the asserted
claims
of
the patents-in-suit
claim patent-eligible
subject matter
under
35 U.S.C.
§ 101.
However,
applying the machine-ortransformation test would not alter the Court's conclusion.
The
asserted claims fail under the machine prong of such test because they
"are not tied to any particular novel machine or apparatus,"
94
only
Considering the elements of the asserted claims in the
patents-in-suit,
both
individually
and
as
an
ordered
combination, under Alice, Defendants have shown, by clear and
convincing evidence,
that such claims do not claim patent-
eligible subject matter under 35 U.S.C. § 101.
the
asserted claims
of
the
patents-in-suit
To the extent
are
invalid,
it
appears certain that Plaintiff cannot prove any set of facts in
support of
relief.
its patent infringement claims entitling it to
Therefore,
pursuant
to Rule
12(c),
the Court will
direct the Clerk to enter judgment in favor of Defendants.
IV.
CONCLUSION
For the reasons stated above, the Court GRANTS S&N's Motion
for Judgment on the Pleadings Based on Failure to Claim Patent-
Eligible
Subject
decision,
Summary
the
Matter,
Court
Judgment
Arguments,
ECF No.
ECF No.
DENIES
on
AS
197.
MOOT
Anticipation
213,
In light
Plaintiff's
and
and Defendants'
Certain
of
Motion
such
for
Obviousness
Motion for Summary
Judgment, ECF No. 216.
The
Clerk
favor pursuant
is REQUESTED
to Rule
58
to enter
of
the
judgment
Federal
in Defendants'
Rules
of
Civil
Procedure.
generic computer components configured to implement abstract ideas.
See Ultramercial, 2014 WL 5904302, at *6.
The asserted claims also
fail under the transformation prong of the machine-or-transformation
test because they do not transform any "particular article into a
different state or thing."
See Bilski, 561 U.S. at 604.
95
The Clerk is REQUESTED to send a copy of this Opinion and
Order to all counsel of record.
IT IS SO ORDERED.
/b/
Mark
S.
Davis
United States District Judge
Norfolk, Virginia
January £M , 2015
96
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