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 REGARDING FIRST AND SECOND MOTIONS FOR 10 v. RECONSIDERATION
11 UBER TECHNOLOGIES, INC., Re: ECF Nos. 65, 69 Defendant. 12
13 This is a patent infringement case alleging that Defendant Uber Technologies, Inc. 14 infringed 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”). The Court is in receipt of Plaintiff Enovsys, 16 LLC’s Second Motion for Leave to File a Motion for Reconsideration. ECF No. 69 (“Second 17 Reconsideration Motion”). Enovsys seeks reconsideration of the Court’s June 17, 2024 order 18 granting Uber’s motion to dismiss, ECF No. 64 (“MTD Order”). Also pending is the portion of 19 Enovsys’s First Motion for Leave to File a Motion for Reconsideration, ECF No. 65 (“First 20 Reconsideration Motion”), that seeks an order clarifying the scope of the MTD Order. Having 21 considered the parties’ briefing on the Second Reconsideration Motion and the scope of the MTD 22 Order, the Court finds that the MTD Order applied to all claims of the Asserted Patents and 23 DENIES Enovsys’s Second Reconsideration Motion. 24 I. BACKGROUND 25 Enovsys filed its complaint on September 5, 2023, alleging infringement of “one or more 26 claims” of the Asserted Patents. E.g., ECF No. 1 ¶¶ 1, 18. Enovsys specifically alleged that the 27 accused products infringe “at least”: 1 • claims 1, 3, 4, 6, 7, and 12 of the ’752 patent; 2 • claims 1, 4, 6, 8, 12, and 13 of the ’726 patent; and 3 • claims 1, 2, 15, 22 and 24 of the ’918 patent. 4 Id. ¶¶ 57, 119, 198. 5 Uber filed a motion to dismiss, and on June 17, 2024, the Court dismissed the complaint 6 without leave to amend, finding the Asserted Patents to be patent ineligible under 35 U.S.C. § 101. 7 MTD Order 21–22. 8 On July 12, 2024, the Court denied in part Enovsys’s First Reconsideration Motion but 9 deferred ruling on the proper scope of the MTD Order. ECF No. 66. The Court later clarified that 10 the MTD Order invalidated only “asserted claims” but found that there was still a question of 11 which claims were “asserted” for purposes of the MTD Order. ECF No. 73. The Court therefore 12 ordered the parties to meet and confer to attempt to resolve this issue. Id. Pursuant to the Court’s 13 order, the parties met and conferred but were unable to reach an agreement. As such, they 14 submitted a joint statement briefing their opposed positions. ECF No. 76 (“Joint Statement”). 15 Meanwhile, on December 1, 2024, Enovsys filed the instant Second Reconsideration 16 Motion. The Second Reconsideration Motion requests leave to file a motion for reconsideration of 17 the MTD Order based on the PTAB’s November 22, 2024 decisions to deny institution of inter 18 partes review (“IPR”) and materials submitted in those proceedings. 19 II. LEGAL STANDARD 20 Northern District of California Local Rule 7-9 governs the procedure for motions for 21 reconsideration. See Civil L.R. 7.9(b) (“A motion for leave to file a motion for reconsideration 22 must be made in accordance with the requirements of Civil L.R. 7-9.”). Leave from the Court is 23 required before a party may file a motion for reconsideration. Id. A movant seeking leave to file a 24 motion for reconsideration must “show reasonable diligence in bringing the motion.” Id. The 25 movant must also show one of the following is met: (1) “at the time of the motion for leave, a 26 material difference in fact or law exists from that which was presented to the Court before entry of 27 the interlocutory order for which reconsideration is sought,” (2) there is an “emergence of new 1 material facts or a change of law occurring after the time of such order,” or (3) there was “[a] 2 manifest failure by the Court to consider material facts or dispositive legal arguments which were 3 presented to the Court before such interlocutory order.” Id. 4 III. DISCUSSION 5 Given that Enovsys’s Second Reconsideration Motion depends, in part, on final resolution 6 of its First Reconsideration Motion, the Court begins its analysis by determining which claims of 7 the Asserted Patents were “at issue” in the MTD Order. 8 A. Scope of the MTD Order 9 The parties agree that the question of which claims were at issue for the MTD Order is a 10 jurisdictional one. See generally Joint Statement. In other words, the claims subject to 11 invalidation are those for which a case or controversy existed when the Court issued its MTD 12 Order. See Streck, Inc. v. Rsch. & Diagnostic Sys., Inc., 665 F.3d 1269, 1282 (Fed. Cir. 2012) (“It 13 is well-established that, in patent cases, the existence of a ‘case or controversy must be evaluated 14 on a claim-by-claim basis.’”) (quoting Jervis B. Webb Co. v. So. Sys., Inc., 742 F.2d 1388, 1399 15 (Fed. Cir. 1984)). 16 Enovsys argues that the “asserted claims” for purposes of the MTD Order are the ones set 17 forth in its February 8, 2024 infringement contentions: 18 • claims 1, 4, 6, 9, 14, and 15 of the ’752 patent; 19 • claims 1, 2, 8, and 12 of the ’726 patent; and 20 • claims 1, 2, and 22 of the ’918 patent. 21 Joint Statement 2. According to Enovsys, service of its infringement contentions before the Court 22 ruled on Uber’s motion to dismiss narrowed the asserted claims, so the MTD Order’s invalidating 23 effect applied only to those claims. 24 Enovsys likens the circumstances here to those in Miller Mendel, Inc. v. City of Anna, 107 25 F.4th 1345 (Fed. Cir. 2024). In Miller Mendel, the plaintiff-patentee’s amended complaint 26 initially asserted that the defendant infringed “one or more claims of the ‘188 patent, including at 27 least Claims 1, 5, and 15.” Id. at 1355. The plaintiff later narrowed the asserted claims to only 1 claims 1, 5, and 15 in response to the defendant’s Rule 12(c) motion for judgment on the pleadings 2 and confirmed in infringement contentions that it had withdrawn all but those three claims. Id. 3 The Federal Circuit held that the district court’s order granting the Rule 12(c) motion only applied 4 to claims 1, 5, and 15, because the district court did not have jurisdiction over the other unasserted 5 claims at that time. Id. The Federal Circuit analogized to its prior cases in which a patentee’s 6 narrowing of the asserted claims before the court ruled on summary judgment motions reduced the 7 scope of the court’s subsequent order. See Streck, Inc. v. Rsch. & Diagnostic Sys., Inc., 665 F.3d 8 1269 (Fed. Cir. 2012); Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300 (Fed. Cir. 2012). In both Streck 9 and Fox, the patentees initially alleged infringement of “one or more claims,” but later narrowed 10 the claims at issue to a definite set of claims through service of infringement contentions or other 11 discovery. Streck, 665 F.3d at 1284; Fox, 700 F.3d at 1308. 12 Here, as in Miller Mendel, Enovsys’s complaint alleged that Uber infringed “one or more” 13 claims of the Asserted Patents, e.g. ECF No. 1 ¶¶ 1, 18, 56, 118, 197, and identified infringement 14 of “at least” certain claims. Id. ¶¶ 57, 119, 198. Enovsys also served infringement contentions 15 that asserted certain claims after the parties had completed briefing Uber’s motion to dismiss but 16 before the Court issued its MTD Order. However, the similarities to Miller Mendel end there.
Free access — add to your briefcase to read the full text and ask questions with AI
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 REGARDING FIRST AND SECOND MOTIONS FOR 10 v. RECONSIDERATION
11 UBER TECHNOLOGIES, INC., Re: ECF Nos. 65, 69 Defendant. 12
13 This is a patent infringement case alleging that Defendant Uber Technologies, Inc. 14 infringed 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”). The Court is in receipt of Plaintiff Enovsys, 16 LLC’s Second Motion for Leave to File a Motion for Reconsideration. ECF No. 69 (“Second 17 Reconsideration Motion”). Enovsys seeks reconsideration of the Court’s June 17, 2024 order 18 granting Uber’s motion to dismiss, ECF No. 64 (“MTD Order”). Also pending is the portion of 19 Enovsys’s First Motion for Leave to File a Motion for Reconsideration, ECF No. 65 (“First 20 Reconsideration Motion”), that seeks an order clarifying the scope of the MTD Order. Having 21 considered the parties’ briefing on the Second Reconsideration Motion and the scope of the MTD 22 Order, the Court finds that the MTD Order applied to all claims of the Asserted Patents and 23 DENIES Enovsys’s Second Reconsideration Motion. 24 I. BACKGROUND 25 Enovsys filed its complaint on September 5, 2023, alleging infringement of “one or more 26 claims” of the Asserted Patents. E.g., ECF No. 1 ¶¶ 1, 18. Enovsys specifically alleged that the 27 accused products infringe “at least”: 1 • claims 1, 3, 4, 6, 7, and 12 of the ’752 patent; 2 • claims 1, 4, 6, 8, 12, and 13 of the ’726 patent; and 3 • claims 1, 2, 15, 22 and 24 of the ’918 patent. 4 Id. ¶¶ 57, 119, 198. 5 Uber filed a motion to dismiss, and on June 17, 2024, the Court dismissed the complaint 6 without leave to amend, finding the Asserted Patents to be patent ineligible under 35 U.S.C. § 101. 7 MTD Order 21–22. 8 On July 12, 2024, the Court denied in part Enovsys’s First Reconsideration Motion but 9 deferred ruling on the proper scope of the MTD Order. ECF No. 66. The Court later clarified that 10 the MTD Order invalidated only “asserted claims” but found that there was still a question of 11 which claims were “asserted” for purposes of the MTD Order. ECF No. 73. The Court therefore 12 ordered the parties to meet and confer to attempt to resolve this issue. Id. Pursuant to the Court’s 13 order, the parties met and conferred but were unable to reach an agreement. As such, they 14 submitted a joint statement briefing their opposed positions. ECF No. 76 (“Joint Statement”). 15 Meanwhile, on December 1, 2024, Enovsys filed the instant Second Reconsideration 16 Motion. The Second Reconsideration Motion requests leave to file a motion for reconsideration of 17 the MTD Order based on the PTAB’s November 22, 2024 decisions to deny institution of inter 18 partes review (“IPR”) and materials submitted in those proceedings. 19 II. LEGAL STANDARD 20 Northern District of California Local Rule 7-9 governs the procedure for motions for 21 reconsideration. See Civil L.R. 7.9(b) (“A motion for leave to file a motion for reconsideration 22 must be made in accordance with the requirements of Civil L.R. 7-9.”). Leave from the Court is 23 required before a party may file a motion for reconsideration. Id. A movant seeking leave to file a 24 motion for reconsideration must “show reasonable diligence in bringing the motion.” Id. The 25 movant must also show one of the following is met: (1) “at the time of the motion for leave, a 26 material difference in fact or law exists from that which was presented to the Court before entry of 27 the interlocutory order for which reconsideration is sought,” (2) there is an “emergence of new 1 material facts or a change of law occurring after the time of such order,” or (3) there was “[a] 2 manifest failure by the Court to consider material facts or dispositive legal arguments which were 3 presented to the Court before such interlocutory order.” Id. 4 III. DISCUSSION 5 Given that Enovsys’s Second Reconsideration Motion depends, in part, on final resolution 6 of its First Reconsideration Motion, the Court begins its analysis by determining which claims of 7 the Asserted Patents were “at issue” in the MTD Order. 8 A. Scope of the MTD Order 9 The parties agree that the question of which claims were at issue for the MTD Order is a 10 jurisdictional one. See generally Joint Statement. In other words, the claims subject to 11 invalidation are those for which a case or controversy existed when the Court issued its MTD 12 Order. See Streck, Inc. v. Rsch. & Diagnostic Sys., Inc., 665 F.3d 1269, 1282 (Fed. Cir. 2012) (“It 13 is well-established that, in patent cases, the existence of a ‘case or controversy must be evaluated 14 on a claim-by-claim basis.’”) (quoting Jervis B. Webb Co. v. So. Sys., Inc., 742 F.2d 1388, 1399 15 (Fed. Cir. 1984)). 16 Enovsys argues that the “asserted claims” for purposes of the MTD Order are the ones set 17 forth in its February 8, 2024 infringement contentions: 18 • claims 1, 4, 6, 9, 14, and 15 of the ’752 patent; 19 • claims 1, 2, 8, and 12 of the ’726 patent; and 20 • claims 1, 2, and 22 of the ’918 patent. 21 Joint Statement 2. According to Enovsys, service of its infringement contentions before the Court 22 ruled on Uber’s motion to dismiss narrowed the asserted claims, so the MTD Order’s invalidating 23 effect applied only to those claims. 24 Enovsys likens the circumstances here to those in Miller Mendel, Inc. v. City of Anna, 107 25 F.4th 1345 (Fed. Cir. 2024). In Miller Mendel, the plaintiff-patentee’s amended complaint 26 initially asserted that the defendant infringed “one or more claims of the ‘188 patent, including at 27 least Claims 1, 5, and 15.” Id. at 1355. The plaintiff later narrowed the asserted claims to only 1 claims 1, 5, and 15 in response to the defendant’s Rule 12(c) motion for judgment on the pleadings 2 and confirmed in infringement contentions that it had withdrawn all but those three claims. Id. 3 The Federal Circuit held that the district court’s order granting the Rule 12(c) motion only applied 4 to claims 1, 5, and 15, because the district court did not have jurisdiction over the other unasserted 5 claims at that time. Id. The Federal Circuit analogized to its prior cases in which a patentee’s 6 narrowing of the asserted claims before the court ruled on summary judgment motions reduced the 7 scope of the court’s subsequent order. See Streck, Inc. v. Rsch. & Diagnostic Sys., Inc., 665 F.3d 8 1269 (Fed. Cir. 2012); Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300 (Fed. Cir. 2012). In both Streck 9 and Fox, the patentees initially alleged infringement of “one or more claims,” but later narrowed 10 the claims at issue to a definite set of claims through service of infringement contentions or other 11 discovery. Streck, 665 F.3d at 1284; Fox, 700 F.3d at 1308. 12 Here, as in Miller Mendel, Enovsys’s complaint alleged that Uber infringed “one or more” 13 claims of the Asserted Patents, e.g. ECF No. 1 ¶¶ 1, 18, 56, 118, 197, and identified infringement 14 of “at least” certain claims. Id. ¶¶ 57, 119, 198. Enovsys also served infringement contentions 15 that asserted certain claims after the parties had completed briefing Uber’s motion to dismiss but 16 before the Court issued its MTD Order. However, the similarities to Miller Mendel end there. 17 Enovsys claims that service of infringement contentions pursuant to Patent Local Rule 3-1 18 narrowed the asserted claims, reducing the scope from “one or more” or “at least” certain claims 19 to only those asserted in the contentions. In this way, Enovsys equates its contentions to similar 20 narrowing events in Miller Mendel and its predecessors. See Joint Statement 3; Miller Mendel, 21 107 F.4th at 1355 (also discussing narrowing events in Streck and Fox). But that is a misleading 22 comparison. To be sure, Enovsys’s infringement contentions forgo the complaint’s broad 23 language like “one or more” and “at least,” and omit several claims originally asserted in its 24 complaint—i.e., claim 3 of the ‘752 patent, claims 4 and 6 of the ‘726 patent, and claims 15 and 25 25 of the ‘918 patent. This would seem to align with Enovsys’s assertion that the contentions 26 narrowed the number of claims at issue. However, the contentions also include claims 9, 14, and 27 15 of the ‘752 patent and claim 2 of the ‘726 patent, claims that were not previously identified in 1 the complaint. Even so, the contentions could still be considered a narrowing event if Enovsys 2 completely withdrew all but the claims asserted in the contentions. But when presented with an 3 opportunity to agree that it had withdrawn and would not assert any additional claims, Enovsys 4 refused. Joint Statement 5. This alone distinguishes the instant case from Miller Mendel, Streck, 5 and Fox. 6 More importantly, Miller Mendel is distinguishable because Enovsys’s infringement 7 contentions created confusion as to what claims were at issue before the Court entered the MTD 8 Order. Key to the Federal Circuit’s holdings in the Miller Mendel and its predecessors was that 9 the narrowing event in each case put the parties on notice of the limited set of asserted claims such 10 that “both parties knew which claims were at issue before the court ruled on the motion.” Miller 11 Mendel, 107 F.4th at 1355; see also Streck, 665 F.3d at 1284 (explaining that service of 12 preliminary infringement contentions narrowed the asserted claims because “the parties knew 13 precisely which claims were at issue well before the court ruled on the parties’ summary judgment 14 motions or conducted trial”). Not so here. It is unclear whether Enovsys has fully withdrawn 15 claims that were originally asserted in the complaint but are no longer identified in the 16 contentions. That Enovsys and Uber did not know which claims were at issue before the MTD 17 Order is evident from the current dispute and the parties’ failure to agree on the affected claims 18 after meeting and conferring. See Joint Statement 1. Because the parties did not know which 19 claims were at issue before the Court issued its MTD Order, Enovsys’s service of infringement 20 contentions are not the narrowing event that Enovsys describes it to be. 21 The facts here are instead closer to those in Mobile Acuity Ltd. v. Blippar Ltd., which Uber 22 relies upon in its statement. 110 F.4th 1280 (Fed. Cir. 2024). In Mobile Acuity, the Federal 23 Circuit partly distinguished Miller Mendel and explained that “the district court [has] jurisdiction 24 over all claims of the [] patents-in-suit,” where “the Asserted Claims are representative of all 25 claims,” and “all claims of [the patents-in-suit] were challenged in the motion to dismiss.” Id. at 26 1287 n.3 (internal quotations omitted). Notably, the Federal Circuit found the patentee’s claim 27 that it had narrowed the asserted claims to be undercut by open-ended allegations in the operative 1 complaint and discussion of “unasserted” claims in the patentee’s opposition brief. Id. 2 Most of the same factors in Mobile Acuity are present here. As noted above, Enovsys used 3 open-ended terms like “at least” and “one or more” in its complaint to keep the scope of the 4 asserted claims indefinite. Such language implies that Enovsys might potentially allege all claims 5 of the Asserted Patents. See id. (noting that the operative complaint alleged that defendant 6 infringed “at least claim 8” of one patent and “one or more claims” of another). The Court held 7 that claim 15 of the ‘918 patent was representative of all claims in the Asserted Patents for 8 purposes of a section 101 determination. MTD Order at 7–8. And despite labeling them as 9 “unasserted” claims, Uber challenged all claims of the Asserted Patents in the motion to dismiss. 10 See, e.g., ECF No. 29 at 6–7 (“The remaining unasserted claims are directed to abstract ideas that 11 correspond to the abstract ideas of the various limitations of the Asserted Claims, so are covered 12 by the analysis of the Asserted Claims.”), 16 (“Any minor variations on these abstract ideas 13 introduced in the unasserted claims are likewise abstract and not patent eligible.”). Enovsys 14 admitted as much in its opposition. ECF No. 38 at 5 n.6 (“Uber seeks dismissal of the Complaint 15 because it asserts all claims of each of the patents-in-suit are invalid under 35 U.S.C. § 101.”). In 16 contrast to the patentee in Mobile Acuity, however, Enovsys did not rely on arguments concerning 17 unasserted claims in its opposition. Enovsys was careful to distinguish such claims. See id. at 5 18 n.3 (explaining that an exhibit showed various “asserted and non-asserted claims”), 25 (seeking a 19 holding that “the asserted claims are directed at patent-eligible subject matter” (emphasis added)). 20 On balance, the Court finds Mobile Acuity to be more relevant here than the Miller Mendel 21 line of cases. In its complaint, Enovsys used open-ended language, leaving open the possibility 22 that it may assert infringement of any of the claims of the Asserted Patents. Uber’s motion to 23 dismiss accordingly challenged all the claims of the Asserted Patents as patent ineligible. 24 Enovsys’s service of infringement contentions before the Court ruled on Uber’s motion did not 25 reduce the scope of asserted claims, because the contentions did not narrow or clarify which 26 claims were asserted and which were withdrawn. Under these circumstances, the Court had 27 jurisdiction over all claims of the Asserted Patents when it issued the MTD Order. Mobile Acuity, 1 110 F.4th at 1287 n.3. 2 B. Second Motion for Reconsideration 3 The Court now turns to the Second Reconsideration Motion. Enovsys submits that the 4 emergence of new material facts—the PTAB’s factual findings and decisions to deny institution of 5 IPR for the Asserted Patents—warrants reconsideration of the MTD Order. Specifically, Enovsys 6 argues the PTAB decisions demonstrate that (1) claim 15 of the ‘918 patent is not representative 7 for purposes of a section 101 determination, and (2) the claims of the Asserted Patents are directed 8 to a technical improvement over the prior art. The Court addresses each of these arguments in 9 turn. 10 1. Representativeness 11 Enovsys challenges the Court’s finding that claim 15 of the ‘918 patent is representative of 12 all claims of the Asserted Patents.1 Second Reconsideration Motion 3. In Enovsys’s view, the 13 PTAB’s IPR decisions demonstrate that the claims of the Asserted Patents fall into two distinct 14 categories: “Proximity Alert Claims” and “Geographic Boundary Claims.” This distinction, 15 according to Enovsys, is at odds with the Court’s finding that all claims of the Asserted Patents are 16 “substantially similar” and “linked to the same abstract idea” such that claim 15 of the ‘918 patent 17 may be analyzed as representative. MTD Order 8. 18 The Proximity Alert Claims—claims 1, 4, 9, 14, and 15 of the ‘752 patent and claims 1, 2, 19 15, and 22 of the ‘918 patent—are directed to a “tracking mode,” that is “determining if a user is 20 being tracked by any other mobile unit.” ECF No. 68-2 (PTAB Decision Denying Institution of IPR 21 of ‘752 patent) at 8; ECF No. 68-3 (PTAB Decision Denying Institution of IPR of ‘918 patent) at 22 38. Enovsys frames the Proximity Alert Claims as those directed to determining “whether one PRU 23 was tracking another PRU . . . within a pollable geographic boundary of a mobile telecommunication 24
25 1 In its half of the Joint Statement, Enovsys repeats the same arguments regarding 26 representativeness that it makes in the Second Reconsideration Motion. See Joint Statement 3–4. The Court ordered the Joint Statement to answer the narrow question of which claims were at 27 issue in the MTD Order, not to relitigate the question of representativeness. ECF No. 73. Thus, the Court will not consider the representativeness arguments made in the joint statement. 1 network over a tracking period by determining that the two PRUs maintained a tracking proximity 2 during the tracking period while moving in tandem.” Second Reconsideration Motion 3–4. The 3 Geographic Boundary Claim2—claim 6 of the ‘752 patent—is directed to “specifying a geographic 4 boundary, splitting the boundary into subregions and verifying the location of remote units within 5 the subregions.” ECF No. 68-2 at 8–9. Enovsys explains that this claim and others in the same 6 category address “the problem of finding a nearby PRU for a requesting PRU . . . by dividing the 7 network into geographic regions that were individually polled or queried for the existence of PRUs.” 8 Second Reconsideration Motion 4. Enovsys contends that the PTAB’s adoption of these two 9 categories demonstrates that there are two distinct types of embodiments being claimed, making it 10 inappropriate to consider claim 15 of the ‘918 patent as representative of all claims. 11 The Court disagrees. Enovsys fails to identify what aspects of Proximity Alert Claims or 12 Geographic Boundary Claims are not present in claim 15 of the ‘918 patent. Indeed, claim 15 is 13 itself a Proximity Alert Claim, because claim 15 recites “using the location obtained according to 14 step (i) and (ii) to verify whether the first portable remote unit and second portable remote unit 15 have maintained relative proximity during the tracking period.” ‘918 patent at 14:16–19. Claim 16 15 also encompasses Geographic Boundary Claims, because it recites “obtaining the location 17 information of the at least second portable communication unit that is within a specified 18 geographic boundary of the first portable remote unit.” Id. at 14:11–14. This element exemplifies 19 what Enovsys claims is distinctive about Geographic Boundary Claims: “finding a nearby PRU for 20 a requesting PRU.” See Second Reconsideration Motion 4. Regardless of the distinction between 21 Proximity Alert Claims and Geographic Boundary Claims, Enovsys fails to show how claim 15 of 22 the ‘918 patent is not representative of both categories. As the Court explained in its MTD Order, 23 claim 15 is therefore representative because it is “substantially similar” to and “linked to the same 24 abstract idea” as the other claims in the Asserted Patents. Content Extraction & Transmission 25
26 2 Enovsys notes that though the PTAB did not describe the challenged claims of the ‘726 patent as Geographic Boundary Claims, they include similar limitations. Second Reconsideration Motion 3 27 n.3. The Court will therefore collectively refer to both claim 6 of the ‘752 patent and analogous claims in the ‘726 patent as “Geographic Boundary Claims”. 1 LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). The minor 2 differences between claim 15 and the other claims in the Asserted Patents are not enough to 3 convince the Court otherwise. MTD Order 8. 4 2. Technical Improvement over Prior Art 5 Enovsys next contends that the PTAB confirmed that both the Proximity Alert Claims and 6 Geographic Boundary Claim are directed to non-obvious technical solutions, a finding 7 irreconcilable with the Court’s Alice determination. At first blush, this argument appears to sound 8 in nonobviousness under 35 U.S.C. § 103 or novelty under 35 U.S.C. § 102 rather than in 9 patentable subject matter eligibility under 35 U.S.C. § 101. The PTAB only addressed 10 nonobviousness, and it would be legal error to conflate the three different inquiries. See SAP Am., 11 Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“Nor is it enough for subject-matter 12 eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster 13 under 35 U.S.C. §§ 102 and 103.” (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 14 566 U.S. 66, 89–90 (2012)); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. 15 Cir. 2016) (“Synopsys equates the inventive concept inquiry with novelty and contends that the 16 Asserted Claims contain an inventive concept because they were not shown to have been 17 anticipated by or obvious over the prior art . . . . That position misstates the law.”) (citations 18 omitted). But Enovsys clarifies in its reply brief that the legal significance of the PTAB’s 19 decisions is that they show the claims of the Asserted Patents present a technical solution rooted in 20 computer technology. ECF No. 72 (“Reply”) at 5. This is relevant to whether the claimed 21 invention is directed to a technological improvement under Alice step one and whether the claims 22 involve more than the performance of a well-understood, routine, and conventional method under 23 Alice step two. See id. at 5–6. Accordingly, being careful not to engage in a § 103 24 nonobviousness inquiry, the Court proceeds to analyze whether the PTAB proceedings would 25 change the Alice determination in the MTD Order. 26 First, Enovsys argues that the claims of the Asserted Patents are a technological 27 improvement and thus are not directed to an abstract idea under Alice step one. Whether claims 1 are directed to a patent-eligible, technological improvement depends in part on “whether the 2 claims . . . focus on a specific means or method that improves the relevant technology or are 3 instead directed to a result or effect that itself is the abstract idea and merely invoke generic 4 processes.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) 5 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). 6 With respect to the Geographic Boundary Claims, Enovsys emphasizes that the Asserted 7 Patents are distinguishable from the prior art because they require dividing the coverage area into 8 subregions that may be individually polled for PRU information. See Second Reconsideration 9 Motion 8; Reply 1–4. The PTAB similarly distinguished the Proximity Alert Claims from the 10 prior art because the former requires that two PRUs move together over a pre-defined distance and 11 tracking period while within a specified proximity. See Second Reconsideration Motion 6–7; 12 Reply 5. Yet, Enovsys fails to explain how these nonobviousness determinations change the 13 Court’s holding that “efficiently managing location information within a specified geographic 14 zone is not a technological solution because it can be performed by humans.” MTD Order 17. 15 Take, for example, the recurring scenario of the emergency dispatcher that the parties discuss in 16 their briefings. Emergency dispatchers may have a fleet of units across a wider geographic zone 17 (e.g., a city), but it would be inefficient to request the location of every unit to respond to an 18 incident. Instead, once the dispatchers receive the location of an incident, they request the 19 locations of only the emergency response units within a subregion (e.g., the neighborhood in 20 which the incident was reported) to coordinate a response. Likewise, the dispatcher may track the 21 units on approach to determine whether they maintain proximity to one another. While the 22 claimed methods here “may speed up that organizational process by using a computer, they do not 23 recite an improvement in any computing technology.” Int'l Bus. Machines Corp. v. Zillow Grp., 24 Inc., 50 F.4th 1371, 1380 (Fed. Cir. 2022). 25 Enovsys briefly argues that the individually pollable geographic boundaries in the 26 Geographic Boundary Claims and tracking system in the Proximity Alert Claims are solutions 27 “necessarily rooted in computer technology under Alice steps one/two,” invoking DDR Holdings, 1 LLC v. Hotels.com, L.P., 773 F.3d 1257 (Fed. Cir. 2014) (finding invention patent-eligible where 2 “the claimed solution [was] necessarily rooted in computer technology in order to overcome a 3 problem specifically arising in the realm of computer networks.”). Reply 2. But neither Enovsys 4 nor the PTAB explain how either solution requires the use of computer technology. Nor is the 5 Court persuaded that the PTAB proceedings alter the Court’s conclusion that the Asserted Patents 6 do not solve a problem unique to the internet or computer functionality. MTD Order 16. Dividing 7 a large amount of information into smaller parts to improve efficiency is hardly a problem unique 8 to the internet or computers. Similarly, dividing a coverage area into subregions that may be 9 individually polled is just one way to make a large amount of PRU information manageable. 10 There is no dispute that this method increases efficiency, but the mere selection and manipulation 11 of information does not change the fact that the claims are directed to the abstract idea of 12 collecting and analyzing information. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 13 (Fed. Cir. 2016) (“Merely requiring the selection and manipulation of information—to provide a 14 ‘humanly comprehensible’ amount of information . . .—by itself does not transform the otherwise- 15 abstract processes of information collection and analysis.”). The Proximity Alert Claims suffer 16 from the same deficiency, because they are directed to the abstract idea of analyzing proximity 17 information. As such, the PTAB proceedings do not disturb the Court’s findings in Alice step one 18 that the claims of the Asserted Patents are directed to abstract ideas. 19 Next, Enovsys contends that the PTAB’s decisions contradict the Court’s finding that the 20 method of filtering data covered by the claims of the Asserted Patents is well-understood, routine, 21 and conventional under Alice step two. Reply 6; MTD Order 18–19. In particular, Enovsys 22 argues that the PTAB’s findings are at odds with the Court’s conclusion that the Geographic 23 Boundary Claims and Proximity Alert Claims rely on generic telecommunications components. 24 Second Reconsideration Motion 9; Reply 6. The Court previously distinguished the Asserted 25 Patents from those found to pass Alice step two, because the latter harnessed specific technical 26 features of the relevant technology to solve problems exclusive to that technology. See MTD 27 Order 18–20 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1 1350 (Fed. Cir. 2016)). In contrast, the Court found that the Asserted Patents only applied the 2 || abstract methods using generic components such as “portable mobile remote unit,” 3 “communication unit,” “network,” and “transmitter.” Jd. at 20-21. Despite stating that the PTAB 4 || found otherwise, Enovsys does not point to anything in the PTAB’s findings to support its 5 assertion. Rather, the PTAB found that the use of individually pollable geographic boundaries and 6 || tracking determinations using PRUs moving in tandem during a tracking period were nonobvious 7 || improvements over the prior art. These findings still do not demonstrate what specific features of 8 telecommunications technology the Asserted Patents harness. And even if they did, the methods 9 covered by the Asserted Patents are directed to solving a problem generic to managing large 10 amounts of information, not one unique to telecommunications. See supra. 11 As such, the PTAB proceedings and IPR decisions do not persuade the Court that its Alice 12 || holding requires reconsideration. 13 || IV. CONCLUSION 14 For the foregoing reasons, Enovsys’s Second Reconsideration Motion is DENIED.
a 16 IT IS SO ORDERED. 17 || Dated: June 30, 2025 18
EDWARD J. DAVILA 20 United States District Judge 21 22 23 24 25 26 27 28 || Case No.: 23-cv-04549-EJD ORDER RE MOTS. FOR RECONSIDERATION