D & M Holdings Inc. v. Sonos, Inc.

309 F. Supp. 3d 207
CourtDistrict Court, D. Delaware
DecidedFebruary 20, 2018
DocketCivil Action No. 16–141–RGA
StatusPublished

This text of 309 F. Supp. 3d 207 (D & M Holdings Inc. v. Sonos, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
D & M Holdings Inc. v. Sonos, Inc., 309 F. Supp. 3d 207 (D. Del. 2018).

Opinion

ANDREWS, U.S. DISTRICT JUDGE

Presently before the Court is Defendant's Motion for Summary Judgment of Invalidity of U.S. Patent No. 7,995,899 (D.I. 186) and related briefing (D.I. 190, 222, 243). The Court held oral argument on all motions for summary judgment (D.I. 177, 186, 191, 193) on January 30, 2018. (D.I. 278) ("Tr."). For the reasons that follow, the Court will grant Defendant's Motion for Summary Judgment of Invalidity of U.S. Patent No. 7,995,899. (D.I. 186).

I. BACKGROUND

Plaintiffs filed a patent infringement action on March 7, 2016 against Defendant, alleging infringement of several patents, including U.S. Patent Nos. 7,734,850 ("the '850 patent"), 7,995,899 ("the '899 patent"), and 7,987,294 ("the '294 patent"). (D.I. 1). Plaintiffs filed an amended complaint on May 1, 2017. (D.I. 65).

Plaintiffs allege infringement of claims 1, 5, 7, 8, 10, and 26 of the '899 patent. (D.I. 190 at 2; D.I. 222 at 1). Claim 5, 7, 8, and 10 depend from claim 1. They read as follows:

1. A method of playing back a recorded signal, comprising:
obtaining a recording identifier corresponding to the recorded signal;
comparing the recording identifier with previously stored identifiers in a playback preference database; and
reproducing the recorded signal using previously stored preferences if the recording identifier is found in the playback preference database and using default preferences if the recording identifier is not found in the playback preference database.
2. A method as recited in claim 1, further comprising:
obtaining playback preferences during said reproducing; and
storing the playback preferences in the playback preference database.
3. A method as recited in claim 2, wherein the playback preferences include audio control settings.
4. A method as recited in claim 3, wherein the audio control settings include programmable effects.
5. A method as recited in claim 1, further comprising obtaining the recorded signal from a compact disc.
*2116. A method as recited in claim 4, further comprising obtaining the recorded signal from a file of digitally encoded audio on a computer readable medium.
7. A method as recited in claim 6, wherein the file is digitally encoded using ISO-MPEG Audio Layer-3.
8. A method as recited in claim 6,
wherein the computer readable medium is a computer mass storage device, and wherein said method further comprises:
detecting changes in software available to playback the recorded signal, and
automatically downloading the software to playback the recorded signal.
10. A method as recited in claim 3, wherein the audio control settings include at least one of echo, reverberation, loudness, speed and direction.

( '899 patent, claims 1, 5, 7, 8, 10, 26). Claim 26 depends from independent claim 19 and dependent claims 20-22 and 24. Plaintiffs' arguments for the patentability of claim 26 are the same as their arguments for the patentability of claims 5, 7, and 10. (D.I. 222 at 12).

II. LEGAL STANDARD

Section 101 of the Patent Act defines patent-eligible subject matter. It provides: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. The Supreme Court has recognized an implicit exception for three categories of subject matter not eligible for patentability-laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS Bank Int'l , --- U.S. ----, 134 S.Ct. 2347, 2354, 189 L.Ed.2d 296 (2014). The purpose of these carve outs is to protect the "basic tools of scientific and technological work." Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 71, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012). "[A] process is not unpatentable simply because it contains a law of nature or a mathematical algorithm," as "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." Id. (emphasis omitted). In order "to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words 'apply it.' " Id. at 72, 132 S.Ct. 1289 (emphasis omitted).

The Supreme Court recently reaffirmed the framework laid out in Mayo "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice , 134 S.Ct. at 2355. First, the court must determine whether the claims are drawn to a patent-ineligible concept. Id. If the answer is yes, the court must look to "the elements of the claim both individually and 'as an ordered combination' " to see if there is an " 'inventive concept'-i.e. , an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.' " Id. (alteration in original).

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Bluebook (online)
309 F. Supp. 3d 207, Counsel Stack Legal Research, https://law.counselstack.com/opinion/d-m-holdings-inc-v-sonos-inc-ded-2018.