MARYELLEN NOREIKA, District Judge.
Presently before the Court is the motion of Plaintiffs Olympus Corporation and Olympus America Inc. ("Plaintiffs") for judgment on the pleadings (D.I. 18) that the claims of U.S. Patent No. 8,478,102 ("the '102 Patent") are invalid as claiming ineligible subject matter under 35 U.S.C. § 101. For the reasons set forth below, the Court DENIES Plaintiffs' motion.
On February 6, 2018, Plaintiffs filed the present action against Defendant Maxell, Ltd. ("Defendant" or "Maxell"), seeking a declaratory judgment that certain of Plaintiffs' products do not infringe various patents owned by Maxell—i.e., U.S. Patent Nos. 6,765,616 ("the '616 Patent"), 7,199,821 ("the '821 Patent"), 7,551,209 ("the '209 Patent"), 8,130,284 ("the '284 Patent") and 9,451,229 ("the '229 Patent") (collectively, "the Maxell Patents"). (D.I. ¶ 1). On April 27, 2018, Defendant answered the complaint, agreeing that there is "an actual, substantial, continuing and justiciable controversy" as to whether Plaintiffs infringe four of the Maxell Patents (D.I. 10 at 5-9), and Defendant asserted counterclaims of infringement for the '616, '821, '209 and '284 Patents (D.I. 10 at 11-25). Defendant also asserted counterclaims of infringement against Plaintiffs for six additional patents: U.S. Patent Nos. 8,059,177, 9,100,604, 8,599,244, 8,417,088, 7,457,529 and the '102 Patent. (D.I. 10 at 26-48). On May 18, 2018, Plaintiffs each answered the counterclaims (D.I. 16, 17), and on July 7, 2018, Plaintiffs filed the present motion for judgment on the pleadings (D.I. 18), alleging that the '102 Patent is invalid as claiming ineligible subject matter under 35 U.S.C. § 101.
The '102 Patent, which is titled "Information Recording/Play-Backing Apparatus," is directed to "[p]ortable information recording/play-back arrangements, wherein a controller judges whether a mode . . . is an imaging mode or a dubbing mode" and the controller controls the source of power for imaging and play-back modules when in imaging mode, and the controller penults dubbing operations when in dubbing mode and the play-back modules operate on external power. ('102 Patent at Abstract). The '102 Patent contains five claims, each of which recites a "portable information recording/play-back apparatus" with additional limitations related to imaging and recording/play-back modules, media storage and battery monitoring. Claim 1 is the only independent claim of the '102 Patent and it recites:
('102 Patent at Claim 1). The remaining four claims ultimately depend from claim 1. Claims 2 and 3 add limitations related to video display on the recording/play-back apparatus and claims 4 and 5 add limitations related to the type of media storage on the apparatus (hard drive versus optical drive). (See id. at Claims 2-5).
Rule 12(c) of the Federal Rules of Civil Procedure provides that a party may move for judgment on the pleadings "[Wier the pleadings are closed — but early enough not to delay trial." In ruling on a Rule 12(c) motion, the Court must accept as true all well-pleaded allegations in the non-movant's pleadings and draw all reasonable inferences in favor of the non-movant. See Zimmerman v. Corbett, 873 F.3d 414, 417-18 (3d Cir. 2017); see also Rosenau v. UnifUnd Corp., 539 F.3d 218, 221 (3d Cir. 2008); 3G Licensing, S.A. v. Blackberry Ltd., 302 F.Supp.3d 640, 648 (D. Del. 2018). Judgment under Rule 12(c) is only appropriate where "the movant clearly establishes that no material issue of fact remains to be resolved and that [the movant] is entitled to judgment as a matter of law." Rosenau, 539 F.3d at 221. "Patent eligibility can be determined on the pleadings under Rule 12(c) when there are no factual allegations that, when taken as true, prevent resolving the eligibility question as a matter of law." Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018).
Section 101 of the Patent Act provides that anyone who "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. 35 U.S.C. § 101. The Supreme Court has long recognized three exceptions to the broad categories of subject matter eligible for patenting under § 101: laws of nature, physical phenomena and abstract ideas. Alice Corp. Pty. v. CLS Bank Intl, 573 U.S. 208, 134 S.Ct. 2347, 2354 (2014). These "are `the basic tools of scientific and technological work' that lie beyond the domain of patent protection." Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-78 (2012)); see also Alice, 134 S. Ct. at 2354. A claim to any one of these three categories is directed to ineligible subject matter under § 101. "[W]hether a claim recites patent eligible subject matter is a question of law which may contain underlying facts." Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
Courts follow a two-step "framework 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; see also Mayo, 566 U.S. at 77-78. First, at step one, the Court determines whether the claims are directed to one of the three patent-ineligible concepts. Alice, 134 S. Ct. at 2355. If the claims are not directed to a patent-ineligible concept, "the claims satisfy § 101 and [the Court] need not proceed to the second step." Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018). If, however, the Court finds that the claims at issue are directed a patent-ineligible concept, the Court must then, at step two, search for 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.'" Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo, 566 U.S. at 72-73).
At step one of Alice, "the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see also Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (step one looks at the "focus of the claimed advance over the prior art" to determine if the claim's "character as a whole" is to ineligible subject matter). In performing step one of Alice, the Court should be careful not to oversimplify the claims or the claimed invention because, at some level, all inventions are based upon or touch on abstract ideas, natural phenomena or laws of nature. Alice, 134 S. Ct. at 2354; see also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016). "At step one, therefore, it is not enough to merely identify a patent-ineligible concept underlying the claim; [courts] must determine whether that patent-ineligible concept is what the claim is `directed to.'" Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016).
At step two of Alice, in searching for an inventive concept, the Court looks at the claim elements and their combination to determine if they transform the ineligible concept into something "significantly more." Alice, 134 S. Ct. at 2355; see also McRO, 837 F.3d at 1312. This second step is satisfied when the claim elements "involve more than performance of `wellunderstood, routine, [and] conventional activities previously known to the industry.'" Berkheimer, 881 F.3d at 1367 (citation and internal quotation marks omitted); see also Mayo, 566 U.S. at 73. "The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and nongeneric arrangement of known, conventional pieces." Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Whether claim elements or their combination are well-understood, routine or conventional to a person of ordinary skill in the art is a question of fact. Berkheimer, 881 F.3d at 1368.
At both steps of the Alice framework, courts often find it useful "to compare the claims at issue with claims that have been considered in the now considerably large body of decisions applying § 101." TMI Sols. LLC v. Bath & Body Works Direct, Inc., C.A. No. 17-965-LPS-CJB, 2018 WL 4660370, at *5 (D. Del. Sept. 28, 2018) (citing Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
Plaintiffs argue that claims 1-5 of the '102 Patent are directed to ineligible subject matter under § 101. As to step one of the Alice framework, Plaintiffs argue that the claims
Defendant argues that the '102 Patent is not directed to an abstract idea, but to an improvement in the functioning of camera technology — i.e., "a video camera with two storage media and a controller that suppresses power to one of those media under certain conditions." (D.I. 25 at 10). Defendant focuses on the fact that the claims all require a dual-medium camera, wherein "power management functions" are additional limitations that render, the camera "feasible and usable." (Id.). To achieve this, according to Defendant, the claims require the camera to have a controller that functions to modify power supply to the storage media when the camera is operating in a specific mode. (Id. at 11). Defendant argues that Plaintiffs are simply taking an intended "goal" of the claimed invention — e.g., battery conservation —c and articulating that as an abstract idea that is claimed, thereby rendering the claimed subject matter ineligible under § 101. (Id. at 10-11).
In the present case, the relevant inquiry at step one of Alice is whether the claims are directed to an improvement in computing devices or other technology, or whether they are simply to "a process that qualifies as an `abstract idea' for which computers are invoked merely as a tool." Enfish, 822 F.3d at 1336; see also Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) ("We look to whether the claims in the patent focus on a specific means or method, or are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery."). The Federal Circuit has "repeatedly held that inventions which are directed to improvements in the functioning and operation of the computer are patent eligible." Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1127 (Fed. Cir. 2018); see also Core Wireless, 880 F.3d at 1361-62 (collecting cases). Here, the Court agrees with Defendant that the '102 Patent claims are to an improvement in the functioning of a specific technology — not to an abstract idea that is merely implemented on generic computers or machinery.
As noted above, it is helpful to compare the claims at issue to claims previously found to be directed to an abstract idea in other cases. See, e.g., Enfish, 822 F.3d at 1334 (noting the lack of "definitive rule" for determining whether something is an abstract idea and explaining that both the Supreme Court and Federal Circuit "have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases").
Id. at 612 (citation omitted). Thus, the claims were not directed to an improvement in the functioning of a telephone unit, server or any technology — rather, the claims merely implemented the method of classifying and storing images (an abstract idea) on that conventional hardware.
The Court does not find the claims at issue here to be similar to those found ineligible in TLI Communications. Claim 1 of the '102 Patent is directed to a specific type of technology — a recording/play-back apparatus — with features designed to improve upon the prior art. The relevant problems with prior devices and the claimed solution are disclosed in the patent. The specification describes one of the problems with prior art cameras:
('102 Patent at 2:8-15 (emphasis added)). The specification also provides:
(Id. at 2:16-28 (emphasis added)). According to the specification, the claimed invention "can provide an information recording/play-backing device requiring a smaller power consumption," and the "object" of battery conservation "may be achieved by the invention disclosed in the claims." (Id. at 2:21-22 & 2:29-31). Further, the specification discloses that the claimed invention uses a controller to monitor the device's mode of operation, and it also details how the disclosed controller monitors and differentially suppresses power consumption and operation. (See, e.g., id. at 3:44-47 & 4:5-5:48 & Figs. 3-5). Claim 1 requires a controller that "judges" the mode the claimed recording/play-back apparatus is operating in and "controls" the apparatus accordingly. (Id. at Claim 1). The same is true for its dependent claims. (Id. at Claims 2-5).
The Court finds the claims at issue here to be similar to others directed to technological improvements found eligible at Alice step one. See, e.g., Core Wireless, 880 F.3d at 1361-62 (finding claims directed to "improved user interface for electronic devices, particularly those with small screens" and not the abstract idea of displaying generic index on computer where claims required "particular manner of displaying a limited set of information to the user" and specification explained problems in prior devices); Visual Memory, 867 F.3d at 1259 (finding claims directed to "an improved computer memory system, not to the abstract idea of categorical data storage" where claims required operational characteristics be defined based on the type of processor connected to the memory system, and where specification discussed improvement in performance over prior memory systems); Enfish, 822 F.3d at 1339 (finding claims to data storage and retrieval system not abstract but instead directed to "a specific type of data structure designed to improve the way a computer stores and retrieves data in memory" where claims were limited to "selfreferential" table and not any form of storage, and where specification explained benefits of claimed self-referential table over prior database structures).
On its face, claim 1 of the '102 Patent is directed to a "recording/play-back apparatus" that uses a controller to monitor and control different modes of operation and power consumption of the apparatus. As discussed above, the patent describes battery-consumption problems with prior devices and how the claimed controller improves those devices. Contrary to Plaintiffs' suggestion, the focus of claim 1 is an improved camera, not a generic improvement in battery (or resource) conservation untethered from any technology.
Although the Court is mindful that "[a] claim is not representative simply because it is an independent claim," Berkheimer, 881 F.3d at 1365, it is not clear how the dependent claims of the '102 Patent could add limitations that change the non-abstract concept of claim 1 into an abstract one.
Because the Court finds that the claims of the '102 Patent are not directed to an abstract idea, an analysis under step two of the Alice framework is unnecessary. See Core Wireless, 880 F.3d at 1363.
For the foregoing reasons, the Court DENIES Plaintiffs' motion for judgment on the pleadings (D.I. 18). An appropriate order will follow.