1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 ENOVSYS LLC, Case No. 23-cv-04549-EJD
9 Plaintiff, ORDER GRANTING MOTION TO DISMISS 10 v.
11 UBER TECHNOLOGIES, INC., Re: ECF No. 29 Defendant. 12
13 Plaintiff Enovsys LLC (“Enovsys”) accuses Uber Technologies, Inc. (“Uber”) of 14 infringing U.S. Patent Nos. 6,441,752 (“’752 patent”); 6,756,918 (“’918 patent”); and 7,199,726 15 (“’726 patent”) (collectively, the “Asserted Patents”) related to location-based wireless 16 technology. Complaint (“Compl.”), ECF No. 1. Uber moves to dismiss Enovsys’s complaint 17 under Rule 12(b)(6) on the basis that (1) the Asserted Patents are invalid because they recite 18 patent-ineligible subject matter under 35 U.S.C. § 101; and (2) the complaint fails to state a claim 19 for willful and indirect infringement.1 Uber’s Motion to Dismiss (“Mot.” or “Motion”), ECF No. 20 29. 21 For the reasons set forth below, the Court GRANTS Uber’s Motion, and Enovsys’s 22 complaint is DISMISSED WITHOUT LEAVE TO AMEND. 23 24 25
26 1 Enovsys confirmed during the hearing on Uber and Lyft’s motion to dismiss it is “not 27 maintaining the willful or indirect [infringement claims] with regard to [Uber or Lyft.]” February 29, 2024, Hearing Tr. at 6:8–10. 1 I. BACKGROUND 2 A. Overview of the Asserted Patents 3 The ’726 patent is a continuation of the ’918 patent, which is a continuation-in-part of the 4 ’752 patent. Compl., Exs. A–C. The Asserted Patents have similar specifications, claim priority 5 to December 30, 2000, and expired on December 30, 2020. The Asserted Patents are all titled 6 “Method and Apparatus for Locating Mobile Units Tracking Another or Within a Prescribed 7 Geographic Boundary” and are directed broadly to methods and systems for collecting and 8 analyzing the location of mobile devices, including their proximity, within a geographic region 9 and providing the location of nearby devices to a user. See id. 10 The ’918 patent’s specification explains that the “wireless industry is currently gearing 11 towards the provision of a wide range of location-based services to the general public” and “such 12 services will include utilizing the location of a subscriber’s portable remote unit to channel a wide 13 range of location-based services to the subscriber.” ’918 patent, 1:17–21. Accordingly, Enovsys 14 argues, the Asserted Patents “disclose a need to use such an improved system not only for safety 15 reasons but to prevent network overloading and power consumption of location enabled devices.” 16 Enovsys’s Opposition to Uber’s Motion to Dismiss (“Opp.”), ECF No. 38 at 3. 17 Claim 15 of the ’918 patent, which Uber contends is representative of all Asserted Claims2, 18 is shown below:
19 15. A method for determining that a first 20 portable remote unit of a wireless consumer associated with a network is being tracked by at least 21 a Second portable remote unit that is in motion with the first portable remote unit over a tracking period 22 comprising, i) obtaining the location information of 23 the first portable mobile remote unit, said 24 location information provided at intervals during said tracking period; 25
26 2 Enovsys asserts that Uber has infringed claims 1, 3, 4, 6, 7, and 12 of the ’752 patent (Compl. 27 ¶ 57), claims 1, 4, 6, 8, 12, and 13 of the ’726 patent (id. ¶ 119), and claims 1, 2, 15, 22, and 24 of the ’918 patent (id. ¶ 198) (collectively, the “Asserted Claims”). ii) obtaining the location information of 1 the at least second portable communication 2 unit that is within a specified geographic boundary of the first portable remote unit, 3 said location information provided at intervals during Said tracking period; 4 iii) using the location obtained according to step (i) and (ii) to verify whether the first 5 portable remote unit and second portable 6 remote unit have maintained relative proximity during the tracking period; 7 iv) forwarding the result of the verification to a network requestor at the end 8 of the tracking period. 9 Claim 1 of the ’752 patent is shown below: 10 1. A method for providing the location of a portable mobile remote unit in a geographic region of 11 a wireless network to a wireless consumer requesting 12 the location of portable mobile remote units that are maintaining close proximity to the wireless consumer 13 in the geographic region comprising: i) obtaining the location of the wireless 14 consumer at intervals over a period of time; 15 ii) requesting at each interval, at the network, that all mobile remote units within close 16 proximity of the wireless consumer disclose their location to the network; 17 iii) maintaining a list of mobile remote units that provided their location at each interval after 18 the request of (ii); 19 iv) from the list of (iii), forwarding the location of at least a mobile remote unit to the mobile 20 consumer upon determination that the remote unit maintained close proximity to the 21 mobile consumer over the period of time of (i). 22 23 Claim 1 of the ’726 patent is shown below:
24 1. A communication system comprising: 25 (i) a portable mobile remote unit; (ii) a network of communication units; 26 (iii) the portable mobile remote unit able to communicate with at least a transmitter 27 within the network to establish its geographic location within the system; 1 (iv) means to request for the location 2 information of portable mobile remote units that are in a geographic boundary that is 3 prescribed within the coverage area of said network; 4 (v) means to provide the location information of the portable mobile remote unit to the 5 network upon determination that the portable 6 mobile remote unit is within said prescribed geographic boundary requested by the 7 network; (vi) means to determine and report to the system that, another portable mobile 8 remote unit has maintained relative proximity to the portable mobile remote over a period 9 of time while in motion. 10 Enovsys generally asserts that Uber infringes the Asserted Patents because its ride services 11 permit a customer to request a service through Uber’s App from Uber drivers located in the same 12 geographic area and allow the rider to track the location of nearby Uber drivers, including the 13 driver accepting the service request. Compl. ¶ 19. 14 B. Procedural Background 15 Enovsys filed the complaint on September 5, 2023. On November 1, 2023, Uber filed the 16 present motion to dismiss. The case was related to Enovsys LLC v. Lyft, Inc., Case No. 23-cv- 17 05157 (N.D. Cal.) (“Enovsys v. Lyft”) on December 11, 2023. ECF No. 41. Lyft filed a motion to 18 dismiss in the Enovsys v. Lyft case on November 28, 2023. The Court heard oral argument on 19 both motions on February 29, 2024. 20 II. LEGAL STANDARD 21 A. Federal Rule of Civil Procedure 12(b)(6) 22 Under Federal Rule of Civil Procedure 12(b)(6), a court must dismiss a complaint that fails 23 to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion, a plaintiff 24 must allege “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. 25 Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when the plaintiff pleads facts 26 permitting the court to “draw the reasonable inference that the defendant is liable for the 27 misconduct alleged,” although the allegations must show “more than a sheer possibility that a 1 defendant has acted unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). 2 In evaluating a Rule 12(b)(6) motion, the court must accept as true all well-pleaded factual 3 allegations and construe them in the light most favorable to the plaintiff. Reese v. BP Expl. 4 (Alaska) Inc., 643 F.3d 681, 690 (9th Cir. 2011). But the court need not “accept as true allegations 5 that contradict matters properly subject to judicial notice” or “allegations that are merely 6 conclusory, unwarranted deductions of fact, or unreasonable inferences.” In re Gilead Scis. Sec. 7 Litig., 536 F.3d 1049, 1055 (9th Cir. 2008) (internal quotation marks and citations omitted). 8 “[P]atent eligibility can be determined at the Rule 12(b)(6) stage.” Aatrix Software, Inc. v. 9 Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018) (citations omitted); see also, 10 e.g., Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1036, 1312 (Fed. Cir. 2019). To succeed on a Rule 11 12(b)(6) motion based on patent ineligibility, the movant must show that “there are no factual 12 allegations that, taken as true, prevent resolving the eligibility question as a matter of law.” Aatrix 13 Software, 882 F.3d at 1125. 14 B. Patent Eligibility 15 “Patent eligibility is governed by 35 U.S.C. § 101, which provides that ‘whoever invents or 16 discovers any new and useful process, machine, manufacture, or composition of matter, or any 17 new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and 18 requirements of this title.’” Sanderling Mgmt. Ltd. V. Snap Inc., 65 F.4th 698, 702 (Fed. Cir. 19 2023) (alterations omitted) (quoting 35 U.S.C. § 101). Accordingly, “[a] § 101 analysis begins by 20 identifying whether an invention fits within one of the four statutorily provided categories of 21 patent-eligible subject matter: processes, machines, manufactures, and compositions of matter.” 22 Aatrix Software, 882 F.3d at 1125 (quoting Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 23 (Fed. Cir. 2014)). However, the Supreme Court has recognized that these broad categories of 24 patent-eligible materials contain an implicit exception, such that “[l]aws of nature, natural 25 phenomena, and abstract ideas are not patentable.” Ass’n for Molecular Pathology v. Myriad 26 Genetics, Inc., 569 U.S. 576, 589 (2013) (internal quotation marks and citation omitted). In 27 applying this exception, courts “must distinguish between patents that claim the building blocks of 1 human ingenuity and those that integrate the building blocks into something more.” Alice Corp. 2 Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (internal quotations and citation omitted). 3 In Alice, the Supreme Court established a two-step framework to determine whether a 4 claim falls within the “abstract idea” exception. First, the court must “determine whether the 5 claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 217. This inquiry is 6 a “meaningful one” and “cannot simply ask whether the claims involve a patent-ineligible concept, 7 because essentially every routinely patent-eligible claim involving physical products and actions 8 involves a law of nature and/or natural phenomenon.” Enfish, LLC v. Microsoft Corp., 822 F.3d 9 1327, 1335 (Fed. Cir. 2016). “Rather, the . . . inquiry applies a stage-one filter to claims, 10 considered in light of the specification, based on whether ‘their character as a whole is directed to 11 excluded subject matter.’” Id. (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 12 1343, 1346 (Fed. Cir. 2015)). 13 Second, if the claims are directed to patent-ineligible subject matter, the court must 14 “consider the elements of each claim both individually and ‘as an ordered combination’ to 15 determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible 16 application.” Alice, 573 U.S. at 217 (quoting Mayo Collab. Servs. v. Prometheus Lab’ys, Inc., 566 17 U.S. 66, 78 (2012)). For example, “a new combination of steps in a process may be patentable 18 even though all the constituents of the combination were well known and in common use before 19 the combination was made.” Diamond v. Diehr, 450 U.S. 175, 188 (1981). The second step of the 20 Alice test is satisfied when the claim limitations “involve more than performance of well- 21 understood, routine, [and] conventional activities previously known to the industry.” Berkheimer 22 v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting Content Extraction & Transmission 23 LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014)) (cleaned up). 24 Whether the elements of a claim or the claimed combination are well-understood, routine, and 25 conventional activities “is a question of fact” that—if subject to a genuine dispute— “cannot be 26 answered adversely to the patentee based on the sources properly considered on a motion to 27 dismiss.” Aatrix Software, 882 F.3d at 1128; see also Berkheimer, 881 F.3d at 1369 (“While 1 patent eligibility is . . . a question of law, . . . [w]hether something is well-understood, routine, and 2 conventional to a skilled artisan at the time of the patent is a factual determination”). 3 III. DISCUSSION 4 Uber contends that the Asserted Claims fall within the patent-ineligible “abstract ideas” 5 exception to Section 101. Specifically, Uber argues that all Asserted Claims are directed to the 6 abstract idea of (1) collecting location information, (2) analyzing it, and (3) presenting the results. 7 Mot. 9. 8 A. Representative Claim 9 A court may treat a claim as representative where all claims are “substantially similar and 10 linked to the same abstract idea.” Content Extraction & Transmission LLC, 776 F.3d at 1348. 11 Uber argues that claim 15 of the ’918 patent is representative because “the remaining independent 12 claims generally have fewer, not more limitations” and “the dependent claims add nothing of 13 significance.” Mot. 4. In its opposition brief, Enovsys states that claim 15 is “clearly not” 14 representative because of “the significant differences in methods and structures between the 15 various and disparate representative claims of the [Asserted Patents].” Opp. 6. At the hearing on 16 the motion, when asked whether the ’918 patent should be representative, counsel responded that 17 although “the claims across the three patents [are not] identical,” the parties and Court “could use 18 [it], sure.” February 29, 2024, Hearing Tr. at 34:10–23. 19 Nevertheless, the Court will evaluate whether the claims are substantially similar enough 20 to treat claim 15 of the ’918 patent as representative. 21 Enovsys argues that certain claims recite additional steps “directed to the ability to 22 compute correlation between device locations in order to determine that one is tracking another,” 23 “to limit the scope of data processed,” and “directed to the goal of conserving resources by 24 generating a narrower subset of devices out of the whole.” Opp. 5, 6. For instance, Enovsys flags 25 that claim 2 of the ’918 patent adds that the portable remote unit of claim 1 has “means to further 26 determine if location disclosure for the remote unit is prohibited at a specific geographic boundary 27 before sending its location to the network,” claim 1 of the ’752 patent requires “obtaining the 1 location of the wireless consumer at intervals over a period of time,” and claim 1 of the ’726 2 patent requires a “geographic boundary that is prescribed within the coverage area.” Id. Enovsys 3 does not elaborate beyond identifying the distinction in the claims’ language and fails to 4 meaningfully argue why the other claims are significantly distinct from claim 15 of the ’918 5 patent. See Berkheimer, 881 F.3d at 1365 (“Courts may treat a claim as representative in certain 6 situations, such as if the patentee does not present any meaningful argument for the distinctive 7 significance of any claim limitations not found in the representative claim or if the parties agree to 8 treat a claim as representative”). 9 More importantly, the claims identified by Enovsys are “substantially similar,” and as 10 discussed below, are “linked to the same abstract idea” present in claim 15 of the ’918 patent. 11 Content Extraction, 776 F.3d at 1348. The additional claims Enovsys highlights all describe (a) 12 “request[ing] or receiv[ing] the geographic location of a mobile device in its network at intervals 13 for a period of time; b) receiv[ing] and fulfill[ing] requests from third-party requestors for the 14 locations of other mobile device within specified geographic areas; and c) mak[ing] proximity or 15 tracking determinations between two mobile devices in the network.” Opp. 2. Claim 15 of the 16 ’918 patent, which Uber contends is representative, describes (1) obtaining the location 17 information of the first portable mobile remote unit; (2) obtaining the location information of a 18 second portable communication unit, (3) using the location obtained according to (1) and (2) to 19 verify whether the two portable remote units have maintained proximity; and (4) forwarding the 20 result of the verification to a network requestor. ’918 patent, claim 15. Thus, the purported 21 technological improvements Enovsys identifies are all reflected in claim 15 of the ’918 patent. 22 Enovsys has not demonstrated that any feature not found in claim 15 amounts to a 23 “distinctive significance” that would differentiate any claim. Berkheimer, 881 F.3d at 1365. The 24 Court finds that the remaining claims are substantially similar to claim 15 for purposes of Uber’s 25 Section 101 challenge claim. Thus, the Court will treat claim 15 of the ’918 patent as 26 representative. 27 1 B. Alice Step One: Whether the Claims Are Directed to an Abstract Idea 2 As noted above, see supra, at Part II(B), “[a] § 101 analysis begins by identifying whether 3 an invention fits within one of the four statutorily provided categories of patent-eligible subject 4 matter: processes, machines, manufactures, and compositions of matter.” Aatrix Software, 882 5 F.3d at 1125 (citation omitted). Applying step one of Alice, Uber argues that claim 15 of the ’918 6 patent is directed to the abstract idea of (1) collecting location information, (2) analyzing it, and 7 (3) presenting results. Mot. 2. This is essentially, Uber contends, “watching someone to see 8 where they go, figuring out if anyone is in the vicinity nearby or is following them, and then 9 reporting it.” Id. at 9. Uber analogizes the technology to (1) a detective tracking a witness and 10 suspect, (2) an emergency-dispatcher tracking emergency vehicles in a specific location, and (3) 11 the children’s “Marco Polo” game. 12 Enovsys responds that the Asserted Claims’ “own language” and the description in the 13 common specification demonstrate that the Asserted Claims are not abstract because they are 14 “grounded in new telecommunication architectures and devices and are directed to improving 15 those technological architectures by employing devices that allow for and fulfill tracking and 16 proximity determinations and to make those determinations in specific ways.” Opp. 10. Enovsys 17 also takes issue with Uber’s detective analogy, arguing it is flawed because detectives do not 18 “have every possible suspect report their location to the detective at regular intervals to determine 19 whether the suspect is following the client.” Opp. 12. 20 The Supreme Court and the Federal Circuit have not established a bright-line test 21 separating abstract ideas from concepts that are sufficiently concrete to eliminate further inquiry 22 under the first step of the Alice framework. See, e.g., Alice, 573 U.S. at 220. Thus, in evaluating 23 whether claims are directed to patent-ineligible abstract ideas, courts have generally begun by 24 “compar[ing] claims at issue to those claims already found to be directed to an abstract idea in 25 previous cases.” Enfish, 822 F.3d at 1334. The Supreme Court has recognized that information 26 itself is intangible. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 451 n.12 (2007). As a 27 result, the Federal Circuit has generally found claims abstract where they are directed to some 1 combination of acquiring information, analyzing information, or displaying the results of that 2 analysis. See e.g., AI Visualize, Inc. v. Nuance Comms., Inc., No. 2022-2109, at *10 (Fed. Cir. 3 Apr. 4, 2024) (“We have explained that the steps of obtaining, manipulating, and displaying data, 4 particularly when claimed at a high level of generality, are abstract concepts”); see also 5 FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094–95 (Fed. Cir. 2016); Elec. Power 6 Grp., LLC v. Alstom S.A, 830 F.3d 1350, 1354 (Fed. Cir. 2016) (invalidating claims about 7 collecting, analyzing and presenting information as abstract); see also In re Killian, 45 F.4th 1373, 8 1380 (Fed. Cir. 2022) (“We have found similar claims pertaining to data gathering, analysis, and 9 notification on generic computers to be directed to abstract ideas”). 10 “[A] telltale sign of abstraction is when the claimed functions are mental processes that can 11 be performed in the human mind or using a pencil and paper.” Trinity Info Media, LLC v. 12 Covalent, Inc., 72 F.4th 1355, 1361–62 (Fed. Cir. 2023) (cleaned up). For example, in Trinity Info 13 Media, the Federal Circuit held that a “poll-based networking system that connects users based on 14 similarities as determined through poll answering and provides real-time results to the users” was 15 directed to the abstract idea of “matching based on questioning.” Id. at 1358, 1362. The patent’s 16 specifications “frame[d] the inventor’s problem in terms of how to improve existing polling 17 systems ... [and] not how to improve computer technology.” Id. at 1363. The asserted claims 18 there “[did] not require specialized computer components” and were not “directed to a 19 technological improvement in computer or mobile phone functionality.” Id. at 1364. The court 20 concluded that “plac[ing] the abstract idea in the context of a distributed networking system ... 21 [did] not change the focus of the asserted claims from an abstract idea.” Id. at 1365; Ficep Corp. 22 v. Peddinghouse Corp., 2023 WL 5346043, at *3 (Fed. Cir. Aug. 21, 2023) (patent directed to 23 abstract idea where the “focus of the claimed advance” was “automating a previously manual 24 process”). But just because a “claimed system achieves automation of a task previously 25 performed by humans ... does not mean the claimed system is necessarily directed to an abstract 26 idea.” EcoServices, LLC v. Certified Aviation Servs., LLC, 830 F. App’x 634, 643 (Fed. Cir. 27 2020) (holding patent directed to non-abstract idea that described “an improved system for 1 washing jet engines,” rather than “the mere desired result of automated jet engine washing”). 2 Against that backdrop, Uber contends the claim 15 of the ’918 patent falls squarely into 3 subject matter the Federal Circuit has deemed ineligible. In Uber’s view, the Asserted Claims 4 amount to no more than maintaining a “list” or “inventory” of units (collecting information), 5 determining if a unit is within a certain area (analyzing information), tracking a unit in motion 6 (analyzing information), and providing location information to a remote unit in addition to the 7 network (presenting results). Mot. 5–6. In support, Uber relies heavily on two recent Federal 8 Circuit decisions: Weisner v. Google (“Weisner”), 51 F.4th 1073 (Fed. Cir. 2022) and Int’l Bus. 9 Machines Corp. v. Zillow Grp. (“Zillow”), Inc., 50 F.4th 1371 (Fed. Cir. 2022). Mot. 9–12. The 10 Court will begin by comparing claim 15 of the ’918 patent with “those claims already found to be 11 directed to an abstract idea” in Weisner and Zillow, and the Court will follow by evaluating 12 decisions Enovsys argues should govern. See Enfish, 822 F.3d at 1334. 13 1. Weiser v. Google 14 In Weisner v. Google, the Federal Circuit considered whether the claims of patents that 15 were directed to collecting and reporting location history over time were patent ineligible. 16 51 F.4th at 1082–84. Although Weisner ultimately found the representative claims of all four 17 asserted patents to be directed to an abstract idea, it evaluated the patents in two buckets. 18 Regarding the first bucket, Weisner found that the claims of those patents were directed to 19 “collect[ing] information on a user’s movements and location history [and] electronically 20 record[ing] that data.” Id. at 1082. Put simply, the claims were “directed to creating a digital 21 travel log.” Id. at 1082–83. The Federal Circuit explained that “[a]utomation or digitization of a 22 conventional method of organizing human activity like the creation of a travel log on a computer 23 does not bring the claims out of the realm of abstractness.” Id. at 1083 (rejecting argument that 24 claims improve the “integrity” of the data where purported technological advantages “unlinked to 25 the claim or the patent claims or specification”). At step two, the court found that the claims in the 26 first bucket of patents “d[id] not recite significantly more than the abstract idea of digitizing a 27 travel log using conventional components,” citing generic components and features in the 1 specification such as “software 89,” “methods such as Bluetooth,” “any other handheld electronic 2 device,” the “telecommunications network” (or world wide web), and a generic “GPS or other 3 navigational system.” Id. at 1083–1084. 4 Regarding the second bucket of asserted patents, the Federal Circuit determined the claims 5 were “directed to creating and using travel histories to improve computerized search results.” Id. 6 at 1084 (emphasis added). The court distinguished the second group because those patents 7 emphasized “using the location histories in computerized searching” as “a distinct concept” from 8 “mere accumulation of location histories.” Id. In contrast with the preambles of claim 1 of the 9 first bucket of patents which “focus on creating the location histories,” the preambles to claim 1 of 10 the second bucket of patents recited a “method of enhancing digital search results for a business in 11 a target geographic area using URLs of location histories,” and a “method of combining enhanced 12 computerized searching for a target business with use of humans as physical encounter links.” Id. 13 at 1084. Although “a much closer question,” the court concluded that the claims in the second 14 bucket were likewise directed to an abstract idea. Id. at 1085. At step two, however, the plaintiff 15 had plausibly alleged that the claims recite “a specific implementation of the abstract idea that 16 purports to solve a problem unique to the Internet.” Id. 17 Predictably, Enovsys argues that the Asserted Patents are more like the second bucket of 18 patents, while Uber contends the Asserted Patents are more like those in the first. Claim 15 of the 19 ’918 patent describes a “method for determining that a first portable remote unit of a wireless 20 consumer associated with a network is being tracked by at least a second portable remote unit that 21 is in motion with the first portable unit over a tracking period.” Although seemingly close, the 22 Asserted Claims are more like the patents in the second bucket of patents in Weisner for purposes 23 of step one. The preamble to claim 15 recites “a method for determining” that one portable remote 24 unit is being tracked by a second portable remote unit over a tracking period. Like the second 25 bucket of patents in Weisner, the claim language also supports a focus on creating and using the 26 locations of the portable remote units to determine their proximity to each other. As in Weisner, 27 the body of claim 15 “first describe[s] accumulation” of two portable mobile remote units in a 1 “generic fashion,” and then, in more detail describes the use of the location of the two mobile 2 remote units to “verify” whether the two portable remote units have maintained relative proximity 3 and “forward[] the result” to a network requester. Id. at 1084; ’918 patent, 14:8–15 (first half of 4 claim 15 describing obtaining the location information of two portable mobile remote units); ’918 5 patent, 14:16–22 (second half of claim 15 describing using the location information to verify 6 proximity and forwarding result of verification). And as in Weisner, the specification also 7 supports this emphasis on using the locations “as a distinct concept from mere accumulation of 8 location” information. 51 F.4th at 1082–84; ’918 patent,1:21–24 (for location-based services “to 9 be successful, the remote unit must be able to obtain and relay its location information to other 10 communication targets of the network requesting such information”). 11 But whether the claims here are more like the first or second bucket is inconsequential for 12 step one. Even with the additional focus on using the locations of the portable remote units rather 13 than just accumulation of the locations, the Court follows Weisner and finds that, under step one, 14 claim 15 of the ’918 patent is directed to patent ineligible subject matter. Weisner, 51 F.4th at 15 1082, 1084 (claims directed to “creating a digital travel log” and claims directed to “creating and 16 using travel histories to improve computerized search results” both directed to an abstract idea). 17 Claim 15 is directed to an abstract idea of collecting location information (“obtaining the location 18 information of the first portable mobile remote unit” and “obtaining the location information of 19 the at least second portable communication unit”), analyzing the information (“using the location 20 obtained” to “verify” the “relative proximity” of both units”), and displaying the results of that 21 analysis (“forwarding the result of the verification to a network requestor”). 22 2. IBM v. Zillow 23 In Zillow, the Federal Circuit affirmed the district court’s finding that two of the asserted 24 patents claimed ineligible subject matter under Section 101. Zillow, 50 F.4th at 1374. As to the 25 first patent, which described a method for “coordinated geospatial, list-based and filter-based 26 selection,” the Federal Circuit found that the claims recited the abstract steps of “presenting a map, 27 having a user select a portion of that map, and then synchronizing the map and its corresponding 1 list to display a more limited data set to the user.” Id. at 1378. The court further agreed with the 2 district court that the patent was “result-oriented, describing required functions (presenting, 3 receiving, selecting, synchronizing), without explaining how to accomplish any of the tasks.” Id. 4 (“[i]dentifying, analyzing, and presenting certain data to a user is not an improvement specific to 5 computing”). At step two, the court explained that the claims used “functional language, at a high 6 level of generality and divorced from any computer technology.” Id. at 1379. Thus, they did not 7 provide inventive concepts sufficient to pass muster under step two. 8 Regarding the second asserted patent, which claimed a method of displaying objects in 9 visually distinct layers, the Federal Circuit agreed that the claims were directed to “the abstract 10 idea of organizing and displaying visual information.” Id. (explaining that the claims “merely 11 organize and arrange sets of visual information into layers and then present said layers on a 12 generic display device”). While the claimed methods “may speed up that organizational process, 13 by using a computer,” they do not “recite an improvement in any computing technology.” Id. at 14 1380. The court further concluded that the second patent failed step two because “[a]ny of the 15 patent’s improved efficiency [came] not from an improvement in the computer but from applying 16 the claimed abstract idea to a computer display.” Id. at 1382. 17 The Court finds that the Asserted Patents are like those invalidated in Zillow. The claims 18 in both are “directed to limiting and coordinating the display of information.” Id. at 1378. And 19 similar to the first patent in Zillow, the Asserted Patents here are “result-oriented, describing 20 required functions” (obtaining location information of two mobile units, using the location 21 information, and forwarding the result), “without explaining how to accomplish any of the tasks.” 22 Id. at 1378 (emphasis added). 23 Enovsys’s attempt to distinguish the claims here is not persuasive. It argues that the claims 24 are distinct because they are directed to methods and systems “to improve making proximity and 25 tracking determinations by applying various filtering to reduce the amount of data that needs to be 26 processed to make such determinations.” Opp. 15. But the Federal Circuit has “treated collecting 27 information” as “within the realm of abstract ideas” even when the information is “limited to 1 particular content.” Elec. Power Grp., 830 F.3d at 1353 (collecting information limited to 2 particular content “does not change its character as information”). And Zillow found that the 3 patents’ purported improvement of the ability of users to identify and analyze relevant data within 4 larger data sets was not enough to transform the claims to patentable subject matter. Zillow, 50 5 F.4th at 1277–78. The Asserted Claims’ use of “various filtering” techniques similarly is not 6 enough. 7 3. DDR Holdings, BASCOM, and Amdocs 8 Enovsys argues that the Asserted Patents are more like those in DDR Holdings, BASCOM, 9 and Amdocs because, as in those cases, the Asserted Patents “do not broadly and generically 10 claim” location tracking but rather “specify how interactions with the [wireless networks] are 11 manipulated to yield a desired result.” Opp. 21 (citing DDR Holdings, LLC v. Hotels.com, L.P., 12 773 F.3d 1245 (Fed. Cir. 2014)). But all three of those cases involved claims that addressed 13 “problems unique to technology.” See DDR Holdings, 773 F.3d at 1245 (asserted patent 14 addressed “a challenge particular to the Internet” and claimed a “solution [] necessarily rooted in 15 computer technology” that overcame “a problem specifically arising in the realm of computer 16 networks”); see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 17 (Fed. Cir. 2016) (claims recited an implementation of an Internet content filtering system); 18 Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1301 (Fed. Cir. 2016) (“purposeful[] 19 arrange[ment] of components in a distributed architecture to achieve a technological solution” 20 involved a specific implementation as an improvement for the Internet). 21 The Court agrees that the claims here are more aligned with those in Weisner and Zillow. 22 Although BASCOM involved a patent that claimed the installation of “a filtering tool,” the 23 Federal Circuit reasoned that “the[] specific limitations do not readily lend themselves to a step- 24 one finding that they are directed to a nonabstract idea” where the claims were directed to 25 something narrower: (1) the more specific problem of providing Internet-content filtering in a 26 manner that can be customized for the person attempting to access such content while avoiding the 27 need for (potentially millions of) local servers or computers to perform such filtering and while 1 being less susceptible to circumvention by the user; and (2) “the even more particular problem of 2 structuring a filtering scheme not just to be effective, but also to make user-level customization 3 remain administrable as users are added instead of becoming intractably complex.” BASCOM, 4 827 F.3d at 1348. 5 And DDR Holdings found that the claims “[stood] apart” from other cases involving a 6 computer and the internet because “the claimed solution [was] necessarily rooted in computer 7 technology in order to overcome a problem specifically arising in the realm of computer 8 networks.” DDR Holdings, 773 F.3d at 1257. Amdocs highlighted this distinction in noting that 9 ineligible claims “may be contrasted with eligible claims” in DDR Holdings because the claims in 10 DDR Holdings “focused on a challenge particular to the Internet.” Amdocs, 841 F.3d at 1297 11 (finding patent eligible under step two where claims “entail[ed] an unconventional technological 12 solution (enhancing data in a distributed fashion) to a technological problem (massive record 13 flows which previously required massive databases)”). 14 * * * 15 The Court finds the claims here more analogous to those found abstract under step one in 16 Weisner and Zillow. First, the claims do not purport to solve a problem unique to the internet or 17 computer functionality, as in DDR Holdings, BASCOM, and Amdocs. Next, as described by 18 Envosys, the claims involve “request[ing] a geographic location of a mobile device” (collecting 19 information), “receiv[ing]” requests (analyzing information); “mak[ing] proximity and tracking 20 determinations” (analyzing information); and “fulfill[ing] requests” (sending information) from a 21 mobile device “for the locations of other mobile device in specified geographic areas.” See Opp. 22 2. 23 4. Whether the Asserted Patents Claim an Improvement in Functionality 24 Enovsys argues that the Asserted Patents “employ[] several improvements to conventional 25 communication network architecture to solve problems specific to wireless network.” Opp. 1. 26 The specific technological improvements Enovsys identifies all focus on some variation of using 27 “geographic boundaries and exclusion regions” to “improve network efficiency” or conserving 1 resources “by focusing on a certain region.” Opp. 4, 11. 2 In the context of software-based inventions, Alice/Mayo step one “often turns on whether 3 the claims focus on the specific asserted improvement in computer capabilities or, instead, on a 4 process that qualifies as an abstract idea for which computers are invoked merely as a tool.” 5 Trinity Info Media, LLC v, 72 F.4th at 1362–63. 6 Enovsys’s argument that the claims are not abstract because they are directed to improving 7 efficiency and conserving resources is unavailing. Opp. 4, 10–11. This argument relies on the 8 patent’s discussion of “using geographic boundaries and exclusion regions” to “improve network 9 efficiency” and “ameliorate overloading and conserve storage space.” Id. at 4. But as explained 10 above, this amounts to merely manipulating, or filtering, information that the Federal Circuit has 11 found “by itself does not transform the otherwise-abstract processes of information collection and 12 analysis.” Elec. Power Grp., 830 F.3d at 1355. And efficiently managing location information 13 within a specified geographic zone is not a technological solution because it can be performed by 14 humans. Emergency dispatchers, for example, who receive an emergency call from one location 15 can request the locations of emergency vehicles within that same neighborhood, maintain a list of 16 those vehicles in the neighborhood, and track the distance between the emergency vehicle and the 17 caller. Air traffic controllers similarly obtain the location of one aircraft, obtain the location of a 18 second aircraft within a specified geographic boundary, and use both locations to verify the 19 relative distance between the two to prevent collisions and facilitate the safe operation of the 20 airspace. Even children playing Marco Polo efficiently manage location information within a 21 specified geographic zone. See Mot. 18 (“In a game of Marco Polo, a child may call out to other 22 children within a specific boundary of a swimming pool at intervals (‘Marco’) and receive 23 responses from each child (‘Polo’) to help him understand the location of each child in the 24 swimming pool and to let him know if another child is nearby (i.e., in ‘proximity’)”). In all three 25 examples, geographic boundaries can be implemented to improve efficiency. 26 Claim 15 of the ’918 patent––like the claims directed to creating and using travel histories 27 in Weisner and claims describing a method for coordinated geospatial, list-based and filter-based 1 selection and displaying data on a map in Zillow––is directed to an abstract idea under step one of 2 Alice. And the Asserted Patents’ “improvements” of increasing efficiency and conserving 3 resources are similarly directed to abstract ideas. The Court proceeds to step two of Alice. 4 C. Alice Step Two: Whether the Claims Recite an Inventive Concept 5 Because the Court finds that claim 15 of the ’918 patent is directed to patent-ineligible 6 subject matter, i.e., an abstract idea, the Court must engage in what the Supreme Court has 7 described as a search for an “inventive concept”: an element or combination of elements that “in 8 practice amounts to significantly more than a patent upon the [abstract idea] itself.” Mayo, 566 9 U.S. at 72–73 (citation omitted). Under step two, the Court “consider[s] the elements of each 10 claim both individually and ‘as an ordered combination’ to determine whether the additional 11 elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 12 217. To be an “inventive concept,” the patent must “involve more than performance of well- 13 understood, routine, [and] conventional activities previously known to the industry.” Berkheimer, 14 881 F.3d at 1367 (quotations omitted). Simply reciting “concrete, tangible components is 15 insufficient to confer patent eligibility to an otherwise abstract idea.” In re TLI Comms. LLC 16 Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). 17 Uber argues that claim 15 of the ’918 patent fails step two because it “recites only generic 18 or black box computer components” and “fails to disclose how” the claims are performed. 19 Mot. 19. Enovsys responds that each of the Asserted Claims “recites elements and limitations that 20 were not routine or conventional at the time of the invention.” Opp. 18. For example, Enovsys 21 argues that “[t]elecommunication networks that allow for a third-party request for the location of a 22 mobile device, in communication with the network to position its physical location, were not 23 routine in 2000.” Id. But this is undermined by the specification, which describes how “[i]n 24 relevant prior art … the location of a remote unit is employed to execute location specific 25 instructions transmitted to the remote unit.” ’918 patent, 1:17–19; see also id. at 1:44–47 (“In 26 Chapman, ….a global status and positioning reporting system is described. A remote unit obtains 27 its global location and updates the network with status information and location information as 1 required”); see also AI Visualize, No. 22-2109, at *14 (observing that “the intrinsic record 2 undermines [patentee’s] argument” on step two where the specification “show[ed] that [the 3 relevant technology was] known in the art”). 4 Enovsys also contends that the “limitations providing for improved techniques for making 5 safety, proximity or tracking determinations”––transform the Asserted Claims into a patent- 6 eligible application of the concept of providing proximity determinations. Opp. 20–21. Enovsys 7 again identifies a list of claimed features that amount to filtering or manipulating the data it argues 8 improves efficiency and conserves resources. See Opp. 18. But unlike the “specific method of 9 filtering Internet content” in BASCOM the Federal Circuit found was not, as a matter of law, 10 conventional or generic, Enovsys has not demonstrated that the method of filtering the data here 11 (e.g., having multiple devices disclose their locations only when within a prescribed geographic 12 boundary, obtaining the location of two mobile units and determining their proximity, and having 13 a mobile device respond to a notification within a telecommunication network only if it exists 14 within a geographic boundary) was not well-understood, routine, and conventional. BASCOM 15 found that the claims passed step two because the inventive concept “harnesse[d]” a specific 16 technical feature of network technology. BASCOM, 827 F.3d at 1350. Importantly, the claims did 17 not “merely recite the abstract idea of filtering content along with the requirement to perform it on 18 the Internet, or to perform it on a set of generic computer components.” Id. “[S]uch claims,” the 19 Federal Circuit explained, “would not contain an inventive concept.” The claims here recite only 20 the abstract idea of receiving location information, reporting location information, and filtering 21 reported locations along with the addition of generic computer components such as “network,” 22 “wireless consumer,” “transmitter,” and “memory means.” See BSG Tech LLC v. Buyseasons, 23 Inc., 899 F.3d 1281, 1290-91 (Fed. Cir. 2018) (“If a claim’s only ‘inventive concept’ is the 24 application of an abstract idea using conventional and well understood techniques, the claim has 25 not been transformed into a patent-eligible application of an abstract idea”). Merely adding use of 26 “a network,” or a “transmitter” or other technology to a conventional method of human activity 27 “does not constitute a patentable improvement in computer technology.” Credit Acceptance Corp. 1 v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). 2 Enovsys argues that the Court should follow DDR Holdings and find that the claims satisfy 3 step two because “[l]ike the claims” in that case, the Asserted Claims “do not broadly and 4 generically claim location tracking or even merely making proximity or tracking determinations 5 but rather specify how interactions with the [wireless networks] are manipulated to yield a desired 6 result.” Opp. 22 (citations omitted). The Court is unpersuaded that the claims are like those in 7 DDR Holdings as stated above. The claimed system in that case “generate[d] and direct[d] the 8 visitor to [a] hybrid web page that presents product information from the third-party and visual 9 look and feel elements from the host website.” DDR Holdings, 773 F.3d at 1258–59. The claimed 10 solution was “necessarily rooted in computer technology in order to overcome a problem 11 specifically arising in the realm of computer networks.” Id. at 1257. The claimed solution here 12 “for telecommunication systems” (Opp. 2, 4) to the problem of “certain technical and safety [] 13 pitfalls in networks of deployed location enabled devices” is to use “processing techniques” or 14 “geographic boundaries.” Opp. 4. These processing techniques and geographic boundaries rely 15 on generic components such as “networks,” and “transmitters” and otherwise do not provide a 16 technical improvement over the prior art. 17 The Court also finds unpersuasive Enovsys’s argument that the claims here should pass 18 step two like those the Federal Circuit found not ineligible––the second bucket of patents––in 19 Weisner. As explained above, the Court agrees that the claims are more like the second bucket of 20 patents for purposes of step one. However, Weiser reasoned that the second bucket of patents 21 supplied an inventive concept because the plaintiff had plausibly alleged that the claims recite “a 22 specific implementation of the abstract idea that purports to solve a problem unique to the 23 Internet.” Weisner, 51 F.4th at 1085. The claims’ “specificity as to the mechanism through which 24 they achieve[d] improved search results”––a “new technique”––was sufficient to capture an 25 inventive concept. Id. at 1085. The claims there “add[ed] significantly more” to the abstract idea 26 by implementing “a specific solution to a problem rooted in computer technology.” Id. at 1088. 27 The same cannot be said here. The Asserted Patents recite limitations that amount to collecting, 1 analyzing, and presenting location information with generic components such as “portable mobile 2 remote unit,” “communication unit,” “network,” and “transmitter.” Plaintiff does not allege any 3 “new technique,” “specific implementation” of, or “specific solution” to this abstract idea. 4 The Court concludes that the Asserted Patents fail to recite an inventive concept “sufficient 5 to ensure that the claim amounts to significantly more than the abstract idea itself.” Content 6 Extraction, 776 F.3d at 1347 (quotations omitted). 3 7 IV. CONCLUSION 8 For the reasons stated, the Court finds that the Asserted Patents are directed to patent- 9 ineligible subject matter under 35 U.S.C. § 101. The Court reviewed the Asserted Patents when 10 deciding this motion, and an amendment would not change the Court’s Alice analysis. See 11 Sanderling Mgmt. Ltd. v. Snap Inc., 65 F.4th 698, 706 (Fed. Cir. 2023) (affirming dismissal under 12 § 101 and agreeing that under circumstances of that case, “amendment of the complaint would 13 have been futile”); see also Wireless Discovery LLC v. eHarmony, Inc., 654 F. Supp. 3d 360, 376 14 (D. Del. 2023) (“The claims of the patents say what they say, [and] [a]mending the complaint 15 would not change the Court’s § 101 analysis.”). 16 17 18 19 20 21
22 3 Enovsys separately argues that Uber’s motion is “ill-timed” because of the presence of means- plus-function elements that must be construed. Opp. 24. The Court finds that it “has a full 23 understanding of the basic character of the claimed subject matter,” and therefore, the “question of patent eligibility may properly be resolved on the pleadings.” Content Extraction & Transmission 24 LLC, 776 F.3d at 1349. As to any potential claim construction issues, Enovsys has failed to propose any constructions or explain why they would be relevant to the Court’s patent eligibility 25 analysis. Absent any such proposal, the Court declines to speculate and concludes that under a plain and ordinary reading of the claims, the Asserted Claims are directed to a patent-ineligible 26 abstract idea and contain no inventive concept. See Trinity Info Media, 72 F.4th at 1360–61 (to avoid a dismissal under § 101, a “patentee must propose a specific claim construction or identify 27 specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes.”). 1 Thus, the Court GRANTS Uber’s motion to dismiss, and Enovsys’s complaint is 2 || DISMISSED WITHOUT LEAVE TO AMEND. 3 4 IT ISSO ORDERED. 5 6 Dated: June 17, 2024 7 8 EDWARD J. DAVILA 9 United States District Judge 10 11 a 12
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Z 18 19 20 21 22 23 24 25 26 27 28 || Case No.: 23-cv-04549-EJD ORDER GRANTING MOTION TO DISMISS