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, )

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-' 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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