LUCY H. KOH, United States District Judge.
Plaintiff Immersion Corporation ("Immersion") filed a patent infringement suit
Plaintiff Immersion is a Delaware corporation with its principal place of business in San Jose, California. ECF No. 1 ("Compl.") at ¶ 24. Immersion pioneered the use of haptic effects,
Defendant Fitbit, which sells wearable fitness trackers, is a Delaware corporation with its principal place of business in San Francisco, California. Id. ¶ 25. Some of Fitbit's products include haptic feedback features, such as a silent alarm that vibrates to wake the user from sleep. Id. ¶ 10. Other haptic feedback features include haptic confirmation of commands and haptic notification of incoming phone calls. Id. Immersion alleges that these products infringe Immersion's '105, '299, and '301 Patents. The Court next summarizes these patents.
The '105 Patent is titled "Haptic Feedback for Touchpads and Other Touch Controls." Compl. Exh. A ('105 patent). It was filed on January 14, 2008 and was issued on November 15, 2011. Id.
Most of the claims in the '105 Patent generally relate to a device, such as a laptop computer touchpad mouse, that facilitates a user's interaction with a computer and that can provide haptic feedback to the user. '105 patent at col. 1:28-32, col. 2:7-10. Specifically, the '105 Patent is directed to a haptic feedback device such as a touchpad provided on a portable computer, or a touch screen found on a variety of devices. Id. at col. 2:7-10. The touch control "inputs a position signal to a processor of the computer based on a location of user contact on the touch surface. The computer can position a cursor in a displayed graphical environment based at least in part on the position signal, or perform a different function." '105 patent abstract. "At least one actuator is also coupled to the touch input device and outputs a force
"The haptic sensations, such as a pulse, vibration, or spatial texture, are preferably output in accordance with an interaction of a controlled cursor with a graphical object in the graphical environment." Id. at col. 2:48-51. "For example, a pulse can be out-put when the cursor is moved between menu elements in a menu, moved over said icon, or moved over a hyperlink." Id. col. 2:51-53. Such haptic feedback "can assist and inform the user of interactions and events within a graphical user interface or other environment and ease cursor targeting tasks." Id. at col. 2:63-66. "User-independent events can also be relayed to the user using haptic sensations on the touchpad." Id. at col. 12:50-51. For example, "an appointment reminder, receipt of email, explosion in a game, etc., can be signified using a vibration, pulse, or other time-based force." Id. at col. 12:51-54.
The specification of the '105 Patent describes several embodiments. First and most prominently, the specification describes a touchpad mouse for a laptop computer. Id. at col. 3:32-col. 6:43 & fig. 1. Another disclosed embodiment is a touchpad on a remote control device, such as a television remote control. Id. at col. 6:44-col. 7:8 & fig. 2. The specification also describes a touch screen device, such as a touch screen PDA. Id. at col. 15:15-col. 16:17 & fig. 8A.
Immersion asserts "at least claims 19, 20, and 21" of the '105 Patent. Compl. ¶ 44; Opp'n at 7 n.1. In the Complaint, Immersion identified claim 19 as a representative claim. Compl. ¶ 45. Claim 19 differs from many of the other claims of the '105 Patent because it does not appear to be limited to a touch screen or a touch input device.
Independent claim 19 and dependent claims 20 and 21 recite:
'105 patent at col. 18:42-58.
The '299 Patent is titled "Apparatus and Method for Providing Condition-Based Vibrotactile Feedback." Compl. Exh. B ('299 patent). It was filed on May 4, 2009 and was issued on January 8, 2013. Id.
The processing device "is associated with or includes a counter that is configured to count the number of strokes or stroke cycles to determine when a predetermined threshold is reached." Id. at col. 4:30-33. "When the accumulative total reaches a predetermined threshold, processing device 22 determines that the user has brushed for an adequate amount." Id. at col. 4:46-50. "When it is determined that the threshold is reached, processing device 22 instructs alerting device 24 to send an alert to the user indicating that the threshold has been reached." Id. at col. 4:55-58.
In addition to the toothbrush, the specification describes other embodiments including a manual ventilator and an exercise strap with vibrotactile feedback. Id. at col. 8:59-col. 10:20 & fig. 6, col. 10:21-col. 11:10 & fig. 7.
Immersion asserts "at least claims 14, 15, 16, 18, 20 and 22" of the '299 Patent. Compl. ¶ 56. In the Complaint, Immersion identified claim 14 as a representative claim. Id. ¶ 57. The asserted claims recite:
'299 patent at col. 12:27-col. 13:4-5.
The '301 Patent is titled "Systems and Methods for Transmitting Haptic Messages." Compl. Exh. C ('301 patent). It was filed on July 14, 2009 and was issued on January 28, 2014.
The '301 Patent is "directed to systems and methods for mobile devices to be configured to exchange data or messages with each other via network interfaces and provide haptic effects partially based on the exchanged data or messages transmitting haptic messages." Compl. ¶ 35. The specification identifies a mobile phone as an illustrative embodiment. '301 patent at col. 2:58-59. The illustrative device contains a "display, a user interface device, memory, and a processor in communication with each of these elements." Id. at col. 3:1-3. The illustrative device also contains a "sensor configured to sense a user's physical interaction with the mobile device," and an actuator "configured to output a haptic effect to the user." Id. at col. 3:8-9.
Figure 18 illustrates the steps of the overall operation of one of the methods of transmitting haptic messages:
The specification provides details about implementing the steps in the process. "Users may interact with the user interface through movements or gestures," which the sensors detect. '301 patent at col. 7:7-9. "As the user tilts, shakes, thrusts, or otherwise moves mobile device 102, the one or more sensors 114 detect these movements" and send signals to the processor. Id. at col. 7:9-13. "The signals may comprise one or more of: angle of the movement, speed of the movement, distance covered by the movement, or X-Y orientation of the movement." Id. at col. 7:13-16; see also id. at col. 24:22-35 (describing different user movements). The processor then determines a change in a display of the mobile device based at least in part on the sensor signals. Id. col. 24:51-53. "Next, the processor 110 transmits a first data signal to a second mobile device, the first data signal comprising data associated with the user interaction
"Then, the processor 110 receives a second data signal from the second mobile device 1810." Id. at col. 25:6-7. "Next, processor 110 determines a second change in the display of the first mobile device based at least in part on the second data signal 1812." Id. at col. 25:15-17. "For example, the user of the second mobile device may move their finger across the second mobile device to draw a picture. The second mobile device may then transmit a corresponding second signal to the first mobile device. The processor 110 of the first mobile device may then modify its display in a way that substantially correspond[s] to the display of the second mobile device." Id. at col. 25:22-28.
"Then, processor 110 determines a haptic effect based at least in part on the second data signal 1814." Id. at col. 25:33-34. In some embodiments, a user may embed a haptic effect into a message. Id. at col. 10:19-20. "For example, in one embodiment a user may send a message including the word `love.' In such an embodiment, the user may append a haptic effect comprising a beating heart to the word love. Then the recipient can feel the beating heart when the recipient interacts with the word love." Id. at col. 10:41-46.
"Finally, the processor 110 transmits a haptic signal associated with the haptic effect to an actuator 118 configured to output the haptic effect." Id. at col.25:49-51.
Immersion asserts "at least claims 27, 28, 29 and 31" of the '301 Patent. Compl. ¶ 67. In the Complaint, Immersion identified claim 27 as a representative claim. Id. ¶ 68. The asserted claims recite:
'301 patent at col. 28:26-54.
On July 10, 2017, Immersion filed the instant patent infringement suit. ECF No. 1. Immersion alleges that Fitbit "ha[s] infringed and continue[s] to infringe, directly and indirectly through induced and/or contributory infringement," the patents-in-suit. Id. ¶ 41. The products accused include the Fitbit Flex, Fitbit Flex 2, Fitbit Alta, Fitbit Alta HR, Fitbit Charge, Fitbit
On October 4, 2017, Fitbit filed the instant motion to dismiss. ECF No. 23 ("Mot."). On November 1, 2017, Immersion filed an opposition. ECF No. 36 ("Opp'n"). On November 17, 2017, Fitbit filed a reply. ECF No. 41 ("Reply").
Pursuant to Federal Rule of Civil Procedure 12(b)(6), a defendant may move to dismiss an action for failure to allege "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. The plausibility standard is not akin to a `probability requirement,' but it asks for more than a sheer possibility that a defendant has acted unlawfully." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (citation omitted).
For purposes of ruling on a Rule 12(b)(6) motion, the Court "accept[s] factual allegations in the complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving party." Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). Nonetheless, the Court is not required to "`assume the truth of legal conclusions merely because they are cast in the form of factual allegations.'" Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir. 2011) (quoting W. Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981)). Mere "conclusory allegations of law and unwarranted inferences are insufficient to defeat a motion to dismiss." Adams v. Johnson, 355 F.3d 1179, 1183 (9th Cir. 2004). Furthermore, "`[a] plaintiff may plead [him]self out of court'" if he "plead[s] facts which establish that he cannot prevail on his ... claim." Weisbuch v. County of Los Angeles, 119 F.3d 778, 783 n.1 (9th Cir. 1997) (quoting Warzon v. Drew, 60 F.3d 1234, 1239 (7th Cir. 1995)).
Fitbit's motion argues that the patents-in-suit fail to claim patent-eligible subject matter under 35 U.S.C. § 101 in light of the U.S. Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank International, ___ U.S. ___, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). The ultimate question whether a claim recites patent-eligible subject matter under § 101 is a question of law. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017) ("Patent eligibility under § 101 is an issue of law[.]"); In re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014) (same). However, the Federal Circuit has identified that there are certain factual questions underlying the § 101 analysis. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed. Cir. 2018). Accordingly, a district court may resolve the issue of patent eligibility under § 101 by way of a motion to dismiss. See, e.g., Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017) (affirming determination of ineligibility made on 12(b)(6) motion); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1345 (Fed. Cir. 2014) (same).
Although claim construction is often desirable, and may sometimes be necessary, to resolve whether a patent claim is directed to patent-eligible subject matter, the Federal Circuit has explained
Section 101 of Title 35 of the United States Code "defines the subject matter that may be patented under the Patent Act." Bilski v. Kappos, 561 U.S. 593, 601, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). Under § 101, the scope of patentable subject matter encompasses "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Id. (quoting 35 U.S.C. § 101). These categories are broad, but they are not limitless. Section 101 "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice, 134 S.Ct. at 2354 (citation omitted). These three categories of subject matter are excepted from patent-eligibility because "they are the basic tools of scientific and technological work," which are "free to all men and reserved exclusively to none." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) (citations omitted). The U.S. Supreme Court has explained that allowing patent claims for such purported inventions would "tend to impede innovation more than it would tend to promote it," thereby thwarting the primary object of the patent laws. Id. However, the U.S. Supreme Court has also cautioned that "[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Alice, 134 S.Ct. at 2354 (alteration, internal quotation marks, and citation omitted). Accordingly, courts must "tread carefully in construing this exclusionary principle lest it swallow all of patent law." Id.
In Alice, the leading case on patent-eligible subject matter under § 101, the U.S. Supreme Court refined the "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts" originally set forth in Mayo, 566 U.S. at 77, 132 S.Ct. 1289. Alice, 134 S.Ct. at 2355. This analysis, generally known as the "Alice" framework, proceeds in two steps as follows:
Id. (alterations in original) (citations omitted); see also In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
Neither the U.S. Supreme Court nor the Federal Circuit has set forth a bright-line test separating abstract ideas from concepts that are sufficiently concrete so as to require no further inquiry under the first step of the Alice framework. See, e.g., Alice, 134 S.Ct. at 2357 (noting that "[the U.S. Supreme Court] need not labor to delimit the precise contours of the `abstract ideas' category in this case"); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (observing that the U.S. Supreme Court did not "delimit the precise contours of the `abstract ideas' category" in Alice (citation omitted)). As a result, in evaluating whether particular claims are directed to patent-ineligible abstract ideas, courts have generally begun by "compar[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
Two of the U.S. Supreme Court's leading cases concerning the "abstract idea" exception involved claims held to be abstract because they were drawn to longstanding, fundamental economic practices. See Alice, 134 S.Ct. at 2356 (claims "drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk" were directed to a patent-ineligible abstract idea); Bilski, 561 U.S. at 611-12, 130 S.Ct. 3218 (claims drawn to "the basic concept of hedging, or protecting against risk" were directed to a patent-ineligible abstract idea because "[h]edging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class" (citation omitted)).
Similarly, the U.S. Supreme Court has recognized that information itself is intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12, 127 S.Ct. 1746, 167 L.Ed.2d 737 (2007). Accordingly, the Federal Circuit has generally found claims abstract where they are directed to some combination of acquiring information, analyzing information, and/or displaying the results of that analysis. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094-95 (Fed. Cir. 2016) (claims "directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected" were drawn to a patent-ineligible abstract idea); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims directed to an abstract idea because "[t]he advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions"); In re TLI Commc'ns LLC, 823 F.3d at 611 (claims were "directed to the abstract idea of classifying and storing digital images in an organized manner"); see also Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases).
However, the determination of whether other types of computer-implemented claims are abstract has proven more "elusive." See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1345 (Fed. Cir. 2015) ("[P]recision has been elusive in defining an all-purpose boundary between the abstract and the concrete[.]"). As a result, in addition to comparing claims to prior U.S. Supreme Court and Federal Circuit precedents, courts considering computer-implemented inventions have taken varied approaches to determining whether particular claims are directed to an abstract idea.
Similarly, the Federal Circuit has found that claims directed to a "new and useful technique" for performing a particular task were not abstract. See Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017) (holding that "claims directed to a new and useful technique for using sensors to more efficiently track an object on a moving platform" were not abstract); Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048, 1050 (Fed. Cir. 2016) (holding that claims directed to "a new and useful laboratory technique for preserving hepatocytes," a type of liver cell, were not abstract); see also Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (holding that claims for a method to cure rubber that employed a formula to calculate the optimal cure time were not abstract).
Another helpful tool used by courts in the abstract idea inquiry is consideration of whether the claims have an analogy to the brick-and-mortar world, such that they cover a "fundamental ... practice long prevalent in our system." Alice, 134 S.Ct. at 2356; see, e.g., Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1317 (Fed. Cir. 2016) (finding an email processing software program to be abstract through comparison to a "brick-and-mortar" post office); Intellectual Ventures I LLC v. Symantec Corp., 100 F.Supp.3d 371, 383 (D. Del. 2015) ("Another helpful way of assessing whether the claims of the patent are directed to an abstract idea is to consider if all of the steps of the claim could be performed by human beings in a non-computerized `brick and mortar' context.") (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014)).
Courts will also (or alternatively, as the facts require) consider a related question of whether the claims are, in essence, directed to a mental process or a process that could be done with pencil and paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147 (Fed. Cir. 2016) (claims for translating a functional
Regardless of the particular analysis that is best suited to the specific facts at issue in a case, however, the Federal Circuit has emphasized that "the first step of the [Alice] inquiry is a meaningful one, i.e., ... a substantial class of claims are not directed to a patent-ineligible concept." Enfish, 822 F.3d at 1335. The court's task is thus not to determine whether claims merely involve an abstract idea at some level, see id., but rather to examine the claims "in their entirety to ascertain whether their character as a whole is directed to excluded subject matter," Internet Patents, 790 F.3d at 1346.
A claim drawn to an abstract idea is not necessarily invalid if the claim's limitations — considered individually or as an ordered combination — serve to "transform the claims into a patent-eligible application." Content Extraction, 776 F.3d at 1348. Thus, the second step of the Alice analysis (the search for an "inventive concept") asks whether the claim contains an element or combination of elements that "ensure[s] that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself." 134 S.Ct. at 2355 (citation omitted).
The U.S. Supreme Court has made clear that transforming an abstract idea to a patent-eligible application of the idea requires more than simply reciting the idea followed by "apply it." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 132 S.Ct. 1289). In that regard, the Federal Circuit has repeatedly held that "[f]or the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of `well-understood, routine, [and] conventional activities previously known to the industry.'" Content Extraction, 776 F.3d at 1347-48 (alteration in original) (quoting Alice, 134 S.Ct. at 2359); see also Mortg. Grader, 811 F.3d at 1324-25 (holding that "generic computer components such as an `interface,' `network,' and `database' ... do not satisfy the inventive concept requirement"); Bancorp Servs., 687 F.3d at 1278 ("To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.").
In addition, the U.S. Supreme Court explained in Bilski that "limiting an abstract idea to one field of use or adding token postsolution components [does] not make the concept patentable." 561 U.S. at 612, 130 S.Ct. 3218 (citing Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978)); see also Alice, 134 S.Ct. at 2358 (same). The Federal Circuit has similarly stated that attempts "to limit the use of the abstract idea to a particular technological environment" are insufficient to render an abstract idea patent-eligible. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (internal quotation marks and citation omitted); see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet.").
In addition, a "non-conventional and non-generic arrangement of known, conventional pieces" can amount to an inventive concept. BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). For example, in BASCOM, the Federal Circuit addressed a claim for Internet content filtering performed at "a specific location, remote from the end-users, with customizable filtering features specific to each end user." Id. Because this "specific location" was different from the location where Internet content filtering was traditionally performed, the Federal Circuit concluded this was a "non-conventional and non-generic arrangement of known, conventional pieces" that provided an inventive concept. Id. As another example, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., the Federal Circuit held that claims relating to solutions for managing accounting and billing data over large, disparate networks recited an inventive concept because they contained "specific enhancing limitation[s] that necessarily incorporate[d] the invention's distributed architecture." 841 F.3d 1288, 1301 (Fed. Cir. 2016), cert. denied, ___ U.S. ___, 138 S.Ct. 469, 199 L.Ed.2d 356 (2017). The use of a "distributed architecture," which stored accounting data information near the source of the information in the disparate networks, transformed the claims into patentable subject matter. Id.
In addition to these principles, courts sometimes find it helpful to assess claims against the policy rationale for § 101. The U.S. Supreme Court has recognized that the "concern that undergirds [the] § 101 jurisprudence" is preemption. Alice, 134 S.Ct. at 2358. Thus, courts have readily concluded that a claim is not patent-eligible when the claim is so abstract that it preempts "use of [the claimed] approach
Fitbit's motion to dismiss contends that the asserted claims of the patents-in-suit fall within the patent-ineligible "abstract ideas" exception to § 101. The Court applies the Alice framework described above to these claims. However, the Court need not individually analyze every claim if certain claims are representative. See generally Alice, 134 S.Ct. at 2359-60 (finding claims to be patent-ineligible based on analysis of one representative claim). Here, the parties agree that claim 19 of the '105 Patent and claim 27 of the '301 Patent are representative. Mot. at 4, 8; Compl. ¶¶ 45, 68. Immersion asserts claim 14 of the '299 Patent is representative, Compl. ¶ 57, while Fitbit contends that claim 20 of the '299 Patent is representative, Mot. at 7. As a result, the Court analyzes claim 19 of the '105 Patent, claims 14 and 20 of the '299 Patent, and claim 27 of the '301 Patent.
Step one of the Alice framework directs the Court to assess "whether the claims at issue are directed to [an abstract idea]." Alice, 134 S.Ct. at 2355. The step one inquiry "applies a stage-one filter to claims, considered in light of the specification, based on whether `their character as a whole is directed to excluded subject matter.'" Enfish, 822 F.3d at 1335 (citation omitted). Thus, the Court conducts its step one inquiry by first identifying what the "character as a whole" of claim 19 of the '105 Patent is "directed to," and then discussing whether this is an abstract idea. In distilling the character of a claim, the Court is careful not to express the claim's focus at an unduly "high level of abstraction ... untethered from the language of the claims," but rather at a level consonant with the level of generality or abstraction expressed in the claims themselves. Enfish, 822 F.3d at 1337; see also Thales Visionix, 850 F.3d at 1347 ("We must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful.").
Fitbit argues that claim 19 of the '105 Patent is directed to "vibrating to communicate that an event that is independent of the user of a device, e.g., receipt of an email, has occurred." Mot. at 9. Fitbit asserts that "[t]here is no purpose for the haptic effect beyond simply communicating to the user that the event occurred." Id. Fitbit cites FairWarning for the proposition that notification is an abstract idea, and Fitbit goes on to argue that the fact that the claim is framed as a device does not eliminate its abstract nature because the device comprises only generic components. Id. at 10.
Immersion counters that "[c]laim 19 does not simply recite vibrating to communicate an independent event, but also involves signaling through the use of a processor and actuator to physically drive the felt haptic effect of a portable computer device with a touch-controlled graphical user interface, in response to a pre-determined event that did not result from the user's interaction with the computer device through the user interface." Opp'n at 9.
Fitbit replies that claim 19's inclusion of "`a processor,' an `actuator,' and `signaling'" do not affect the "directed to" inquiry, because "those items merely reflect a conventional implementation of the idea." Reply at 2. Moreover, Fitbit argues that "the mere presence of physical components in the claims is insufficient to confer patent eligibility." Id. at 3 (citing Alice, 134 S.Ct. at 2358). Fitbit also points out that claim 19 does not mention a "touch-controlled graphical user interface," as Immersion asserts that it does. Id. at 3.
The United States Supreme Court's decision in Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155, and the Federal Circuit's decision in Thales Visionix, 850 F.3d 1343, are instructive in evaluating the parties' arguments. In Diehr, the claimed invention was "a process for molding raw, uncured synthetic rubber into cured precision products." 450 U.S. at 177, 101 S.Ct. 1048. Before the invention of the claimed process, rubber manufacturers calculated how long to leave rubber in a mold press by using the Arrhenius equation, which is a law of nature. Id. However, the industry was not able to "obtain uniformly accurate cures because the temperature of the molding press could not be precisely measured, thus making it difficult to do the necessary computations to determine cure time." Id. at 178, 101 S.Ct. 1048. The new process overcame this problem by "constantly measuring the actual temperature inside the mold" and then feeding the temperatures into a computer that "repeatedly recalculates the cure time by use of the Arrhenius equation." Id. The patent examiner rejected the claims as drawn to ineligible subject matter under § 101.
The U.S. Supreme Court disagreed. The U.S. Supreme Court concluded that "a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer." Id. at 187, 101 S.Ct. 1048. Applying that conclusion to the rubber-curing process before it, the U.S. Supreme Court held that "Arrhenius' equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by § 101." Id. at 188, 101 S.Ct. 1048. The U.S. Supreme Court also explained that claims "must be considered as a whole" and that "[i]t is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis." Id.
The Federal Circuit applied Diehr in Thales Visionix. In Thales Visionix, the patent disclosed an inertial tracking system for tracking the motion of an object relative to a moving reference frame. The system used inertial sensors and mathematical equations to track the position and orientation of the object. 850 F.3d at 1345. The trial court held that the claims were directed to the abstract idea of using laws
The Federal Circuit in Thales Visionix also cautioned that "[a]t step one, `it is not enough to merely identify a patent-ineligible concept underlying the claim;' we must determine whether that patent-ineligible concept is what the claim is `directed to.'" Id. at 1349 (quoting Rapid Litig., 827 F.3d at 1050). The Federal Circuit determined that "[f]ar from claiming the equations themselves, the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed." Id. As such, the Federal Circuit held that the claims were not directed to an abstract idea and that they survived Alice step one as a result. Id.
Under Diehr and Thales Visionix, it is clear that simply incorporating an abstract idea in part of a claim that is otherwise directed to patentable subject matter does not necessarily render the entire claim ineligible. Applying that principle to claim 19 of the '105 Patent, the Court finds that claim 19 is directed to a device that provides haptic feedback to communicate that one of several predetermined user-independent events has occurred. While Fitbit is correct that notification is a prominent idea of claim 19 and that notification is an abstract idea, see, e.g., FairWarning, 839 F.3d at 1094, characterizing claim 19 as directed only to the abstract idea of notification, or even as directed only to the abstract idea of notification through vibration, strays too far from the weight of the claim. The weight of the claim clearly focuses on a tangible, non-abstract device as the invention which, through the allegedly unconventional combination of components, contains the new and useful feature of notifying the device's user of independent events through vibration. See Thales Visionix, 850 F.3d at 1348-49; '105 patent at col. 1:64-col. 2:3 (noting that touchpads of the prior art lack haptic feedback); '105 patent at col. 12:61-67 (discussing scenario in which a user is notified of an event by vibration after having looked away from the screen). Indeed, a significant majority of the specification details various physical features of the claimed inventions, including different types of actuators and how an actuator can be coupled to the housing of the device. See '105 patent at col. 5:5-col. 12:49, col. 15:1-col. 16:17. The fact that part of the claim contains an abstract idea does not make the claim patent-ineligible under § 101. See Alice, 134 S.Ct. at 2354 ("[A]n invention is not rendered ineligible for patent simply because it involves an abstract concept.").
Fitbit would have the Court ignore the physical components of claim 19 because the components considered individually are not new or inventive. See Mot. at 10; Reply at 4. However, this argument directly contradicts Diehr's admonition that "[i]t is inappropriate to dissect the claims into old and new elements and then
Moreover, the cases that Fitbit cites for the proposition that ordinary components do not render a claim patent-eligible often concern method claims that use generic computers as tools to implement the abstract idea in the method. See, e.g., Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1261 (Fed. Cir. 2016) (holding that method claim that implemented abstract idea using conventional tangible components was directed to an abstract idea at step one); Elec. Power Grp., 830 F.3d at 1355 (same); see also FairWarning, 839 F.3d at 1096 (describing a system claim as "merely graft[ing] generic computer components onto otherwise ineligible method claims"). These cases are distinguishable from the instant claim, where the focus of the claim is a new and useful application of notification embodied in a physical device. See Thales Visionix, 850 F.3d at 1349 ("the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed" (emphasis added)). Here, the '105 Patent states that no previous touchpad incorporated haptic feedback and describes the problem as how to notify a user that a task has completed or another event has occurred when the user is not looking at the screen. '105 patent at col. 1:64-65, col. 12:61-67. Accordingly, Immersion's invention of a touchpad or other similar device that provides haptic feedback is a new arrangement of known components that solves the problem of how to provide non-audio, non-visual notification to a user. Such an invention is patent-eligible.
Indeed, other district courts that have rejected § 101 challenges where the claims are directed to a physical device that merely incorporates an abstract idea as part of its operation. See POWERbahn, LLC v. Found. Fitness LLC, No. 3:15-cv-00327-MMD-WGC, 2016 WL 4318978, at *3 (D. Nev. Aug. 11, 2016) ("While it is true that the claim includes a formula, the claim is clearly directed at a piece of exercise equipment, and the formula is simply one part of the overall scheme. Including a law of nature as one part of a claim does not transform the entire scheme into an abstract idea."); Polaris Innovations Ltd. v. Kingston Tech. Co., 223 F.Supp.3d 1026, 1034 (C.D. Cal. 2016) (noting that the defendant had not "cited any case where a court found that a claim for a purportedly novel physical configuration of a piece of computer hardware was deemed patent-ineligible because it was merely the embodiment of an abstract process" and distinguishing cases involving "patented processes running on what the courts found to be generic hardware"); Baxter Int'l, 2016 WL 2770787 at *12 (declining defendant's invitation to ignore physical components of a claimed invention that were known in the prior art and instead considering the patent as a whole).
As such, the Court concludes at step one of the Alice framework that claim 19 is not directed to an abstract idea. Accordingly, the Court need not reach Alice step two. Fitbit's motion to dismiss the '105 Patent claims is DENIED.
The parties' arguments regarding the '299 Patent are substantially similar to their arguments regarding the '105 Patent. Fitbit argues that claim 20 of the '299 Patent is "directed to the abstract idea of vibrating to communicate movement of a device or expiration of a timer." Mot. at 15. Just as it did for the '105 Patent, Fitbit invokes FairWarning to argue that notification is an abstract idea, and then Fitbit argues that the physical components of the claimed device "are merely generic electronic components used to perform the abstract idea." Mot. at 16. Fitbit also argues that the '299 Patent claims "fundamental practices long prevalent in human society." Id. Specifically, Fitbit argues that the "concept of notifying a person when either a motion threshold has been reached or time has run out has long been performed by humans," such as a physical therapist who counts the number of times a patient has performed an exercise movement and notifies the patient upon completion. Id.
Immersion responds that the '299 Patent "claims the improvement of the operation of a vibrotactile device based on the timing of sensed motion and rest of a device that a user may hold or wear, and it is thus not an abstract idea." Opp'n at 17. Specifically, Immersion argues that the incorporation of haptic feedback into a motion-tracking device improved upon previous motion-tracking devices by enabling user notification through vibration, which is helpful in hectic environments where a visual or auditory notification might not be effective. Id. at 17-18. Immersion also disputes Fitbit's characterization of the asserted claims in the '299 Patent as replicating longstanding human activity, as such characterization ignores the physical components of the device. Id. at 18.
Fitbit responds that Immersion fails to distinguish the Federal Circuit's cases holding that collecting and analyzing data and notifying the user of the results of that analysis claim an abstract idea. Reply at 9.
The Court finds that claim 14 of the '299 Patent is directed to an apparatus that senses motion, counts the number of motions that occur, and notifies a user through haptic feedback once a threshold number of motions occur. The Court finds that claim 20 of the '299 Patent is directed to an apparatus that senses motion, tracks time, and notifies a user through haptic feedback when either a threshold amount of motion occurs or time expires, whichever happens first. The Court finds Fitbit's arguments that the '299 Patent is directed to an abstract idea unpersuasive for essentially the same reasons detailed above for the '105 Patent. Namely, characterizing claims 14 and 20 as directed to the abstract idea of notification based on motion or a timer ignores the fact that the claimed invention is a tangible device comprising a new and useful arrangement of components that solves the problem of how to notify a user that a predetermined number of motions have occurred in an environment where audio or visual alerts would not be effective.
The Federal Circuit's recent decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), supports the Court's conclusion that claims 14 and 20 are not directed to an abstract idea. The claims at issue in Core Wireless disclosed computing devices with improved display interfaces, where the improved interfaces were particularly useful for electronic devices with small screens. Id. at 1359. The defendant argued that the claims were directed to the abstract idea of an index, but the Federal Circuit rejected this argument. Id. at 1362. The Federal Circuit reasoned that "[a]lthough the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and presenting information in electronic devices." Id. The Federal Circuit found the situation in Core Wireless analogous to that in Enfish, Thales, Visual Memory, and Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), in each of which the Federal Circuit found that the claims recited a specific improvement over prior systems, which meant that the claims were not abstract. Core Wireless, 880 F.3d at 1363. In Core Wireless, the Federal Circuit also looked to the specification to confirm that the claims disclosed an improvement to prior systems. Id. The Federal Circuit concluded that the claims were "directed to an improvement in the functioning of computers, particularly those with small screens." Id. As a result, the Federal Circuit held that the claims were not directed to an abstract idea at step one. Id.
In the instant case, claims 14 and 20 of the '299 Patent disclose an improvement in motion detection devices. Before the invention described in the '299 Patent, "there were alarms that could be triggered by timers that tracked the operation or movement of a device." Opp'n at 15. However, such alarms provided audio or visual notification that may be ineffective when the user is "operating in hectic environments... and/or when bombarded with competing audio and/or visual stimuli." Id.; '299 patent at col. 1:65-col. 2:5. The '299 Patent improved the operation of these devices by adding haptic feedback, which enhances the usefulness of the devices in circumstances where audio or visual notification might not be effective. In one example described in the specification, the invention is embodied in a manual resuscitator that tracks the number of times an emergency responder has squeezed the resuscitator. See '299 patent at col. 8:59-col. 10:20. "Emergency rooms, trauma centers, ambulances, accident scenes, and other emergency environments are often chaotic and highly charged." Id. at col.7:22-24. The addition of haptic feedback thus presents an improvement over audio and visual notifications by "operat[ing] in conjunction with the emergency personnel on a sensory channel not otherwise overloaded with other stimuli." Id. at col. 9:32-34. In other words, a haptic notification overcomes the challenge of how to alert the user that a certain number of movements has been reached in environments where audio or visual notification may be ineffective. Thus, because claim 14 and claim 20 disclose improvements in motion tracking devices, they are not directed to an abstract idea at step one, and the Court need not reach Alice step two. See Core Wireless, 880 F.3d at 1363; Thales Visionix, 850 F.3d at 1348-49.
As a result, Fitbit's motion to dismiss the '299 Patent claims is DENIED.
Fitbit argues that claim 27 of the '301 Patent is directed to "providing a vibration and associated change in visual display based on interaction between two devices, e.g., when a signal is received by a first mobile device from a second mobile device." Mot. at 19. Specifically, Fitbit asserts that claim 27 of the '301 Patent is directed to transmitting haptic messages. Id. Fitbit argues that claim 27 thus "regards basic, routine functions that have been repeatedly found to be abstract," such as collecting, analyzing, and outputting information. Id.
Immersion counters that claim 27 "is directed to a processor on a (first) mobile device that (1) receives a signal from a second mobile device, (2) changes the display on the first mobile device based on the sensed motion of that device and another interaction of the user with the first mobile device, such as with the touchscreen of the mobile device specifically (claim 29), and (3), operates an actuator that physically vibrates the housing such that a tactile sensation (or haptic effect) is felt on the first mobile device based on the data in the signal received from the second mobile device." Opp'n at 22. Immersion asserts that claim 27 "cover[s] an improvement on a messaging system between two mobile devices to output a haptic effect based on movement of a mobile device." Id. According to Immersion, this improvement "solves the technological problem of how to notify a user without a graphical display, or in addition to the display of graphics." Id. at 20.
Fitbit replies that claim 27's recitation of generic data signals and generic components does not render the claim non-abstract. Reply at 13-14.
The Court finds that claim 27 of the '301 Patent is directed to receiving sensor and data signals, analyzing those signals, and outputting other signals in response. Although claim 27 discloses a generic processor, the focus of the claim is on receiving various signals and determining resulting output signals. Specifically, the processor is configured to receive a first sensor signal related to the first device's movement, a second sensor signal related to an interaction with the first device, and a data signal from a second mobile device transmitted via a network interface. '301 patent at col. 28:26-35. Based on these signals, the processor determines a change in display and a haptic effect and then the processor outputs a haptic effect. Id. at col. 28:36-41. However, the claim does not provide any limiting rules or algorithms that describe how the processor performs these functions. The Court finds that claim 27 is thus directed to the abstract idea for two reasons, which the Court explains in turn.
First, the Court finds that claim 27 falls within the category of gathering and processing information, which the Federal Circuit has established is an abstract idea. Specifically, in Electric Power Group, the Federal Circuit stated that "collecting information, including when limited to particular content (which does not change its character as information), [i]s within the realm of abstract ideas." 830 F.3d at 1353. In addition, the Federal Circuit has treated "analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Id. at 1354. The Federal Circuit held in Electric Power Group that claims for "a process of gathering and analyzing information of a specified
Here, the first three functions that the processor is configured to perform are receiving sensor and data signals. '301 patent at col. 28:26-35. This amounts to nothing more than gathering data, which is an abstract idea. See Elec. Power Grp., 830 F.3d at 1353. The next two functions of the processor are determining a change in display signal and determining a haptic effect based on the received signals. '301 patent at col. 28:36-40. In other words, the processor receives the sensor and data signals and, presumably applying some unspecified rules or algorithms, analyzes how the display signal should change and what type of haptic effect should be produced as a result of the received signals. Without specifying what particular rules or types of rules are applied by the processor, claim 27 describes nothing more than generic data analysis. Cf. McRO, 837 F.3d at 1313-1314 (claims relating to automating part of a 3-D animation method that are limited to the use of a specific "genus" of rules, rather than claiming the use of all rules, are not directed to an abstract idea at step one). Finally, the processor is configured to "output[] the haptic effect." '301 patent at col. 28:41. It is not entirely clear from the claim itself whether the processor outputs the haptic effect or whether the processor transmits a signal to an actuator that transmits a haptic effect. The specification suggests it is the latter. See id. at col. 25:49-51 ("Finally, the processor 110 transmits a haptic signal associated with the haptic effect to an actuator 118 configured to output the haptic effect."). Transmitting a signal to an actuator does not make the focus of the claim any less abstract because outputting a signal is no more than the transmission of data. Similarly, the Federal Circuit has held that displaying the results of collecting and analyzing information, without more, "is abstract as an ancillary part of such collection and analysis." Elec. Power Grp., 830 F.3d at 1354; see also W. View Research, 685 F. App'x at 926 (holding claim that included generating a visual or audio response to a data query is directed to the abstract idea of collecting, analyzing, and displaying information).
Second, Claim 27 is analogous to claims that the Federal Circuit has held to be directed to an abstract idea in part because they use function-based claiming. For example, the patents in Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017), concerned "a system for streaming audio/visual data over a communications system like the internet." Id. at 1333. The Federal Circuit held that the claims were directed to an abstract idea in part because the claims used "result-based functional language" such as "converting," "routing," "controlling," "monitoring," and "accumulating records" without "sufficiently describ[ing] how to achieve these results in a non-abstract way." Id. at 1337. Similarly, in DIRECTV, the Federal Circuit held that a claim that broadly disclosed "the function of wirelessly communicating regional broadcast content to an out-of-region recipient, not a particular way of performing that function," was directed to
Id. (alteration in original).
In the instant case, claim 27 requires receiving sensor and data signals, determining a resulting change in display, and determining a resulting haptic effect, but "[t]here is nothing in claim [27] that is directed to how to implement" these functions. As a result, claim 27, like the claims in Two-Way Media and DIRECTV, "manipulates data but fails to do so in a non-abstract way." Two-Way Media, 874 F.3d at 1337; see also Secured Mail Sols., 873 F.3d at 911 (finding claims regarding the creation of unique mail identifiers were directed to an abstract idea at step one in part because the claims were "not limited by rules or steps that establish how the focus of the methods is achieved"); Clarilogic, Inc. v. FormFree Holdings Corp., 681 F. App'x 950, 954 (Fed. Cir. 2017) (unpublished) ("But a method for collection, analysis, and generation of information reports, where the claims are not limited to how the collected information is analyzed or reformed, is the height of abstraction."); Capital One Fin. Corp., 850 F.3d at 1342 (explaining that "our law demands more" than claim language that "provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it"); Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) ("At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem.").
Accordingly, the Court finds that claim 27 of the '301 Patent is directed to an abstract idea. The Court next analyzes Alice step two.
"In step two of the Alice inquiry, [the Court] search[es] for an `inventive concept sufficient to transform the nature of the claim into a patent-eligible application.'" RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (quoting McRO, 837 F.3d at 1312 (internal quotation marks omitted)). "To save the patent at step two, an inventive concept must be evident in the claims." Id. This inventive concept "must be significantly more than the abstract idea itself," BASCOM, 827 F.3d at 1349, "must be more than well-understood, routine, conventional activity," DIRECTV, 838 F.3d at 1262, "and cannot simply be an instruction to implement or apply the abstract idea on a computer." BASCOM, 827 F.3d at 1349. For example, it may be found in an "inventive set of components or methods," "inventive programming,"
Fitbit argues that claim 27's required mobile devices, processor, sensor, display, signaling protocol, and haptic mechanism are all generic, and so cannot supply an inventive concept. Mot. at 21. Fitbit also argues that the ordered combination of elements in the claim does not provide an inventive concept because the "combination of steps performed by the generic processor on generic signals is purely conventional — receiving sensor signals and data signals and outputting other signals." Id.
Immersion responds that claim 27 "include[s] at least the inventive concept of generating both graphical and haptic feedback in response to messages exchanged between mobile devices, which include information or data regarding physical interactions with those devices." Opp'n at 24. Immersion asserts that "the '301 Patent uses a specific combination of graphical and haptic output to better notify a user of information that is sent by another mobile device, and the patent uses multiple sensors to provide information about the user's interaction with mobile devices." Id. at 25.
The Court finds that none of the claim elements, assessed individually, provide an inventive concept. The mobile devices, network interface, processor, and haptic feedback system are, in broad terms, generic, conventional components. The specification confirms that these are generic components. See '301 patent at col. 2:66-67 ("Other mobile devices and haptic feedback systems may be utilized."); id. at col. 6:46-54 (noting that the network interface "may comprise one or more methods of mobile communication, such as infrared, radio, Wi-Fi, or cellular network communication," or a "wired network interface"); id. at col. 6:57-65 (describing possible types of sensors including "a position sensor, location sensor, rotational velocity sensor, image sensor, pressure sensor, or another type of sensor"); id. at col. 25:61-col. 26:12 (describing different types of processors). The claim calls on these generic components to perform their routine functions. Processors have long performed the functions of receiving signals, analyzing them, and outputting other signals in response. Nothing about the claim or specification suggests that the way these steps are accomplished are anything but generic — as explained above, the claims recite these steps only functionally and require no inventive algorithm or data structure for performing them. See DIRECTV, 838 F.3d at 1262 (finding no inventive concept where "[t]he claim simply recites the use of generic features of cellular telephones, such as a storage medium and a graphical user interface, as well as routine functions, such as transmitting and receiving signals, to implement the underlying idea.").
Finally, the ordered combination of these elements also does not yield an inventive concept. In BASCOM, the Federal Circuit held that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." 827 F.3d at 1350. Here, however, claim 27 follows a conventional order of how data is usually analyzed: data is first received, then processed, and then signals are outputted as a result. In its step two analysis in Electric Power Group, the Federal Circuit reasoned that "merely selecting information, by content or source, for collection, analysis, and display" does not provide an inventive concept. 830 F.3d at 1355. Nor did the claim in Electric Power Group "require a new source or type of information, or new techniques for analyzing it," or "invoke any assertedly inventive programming." Id.
Because the Court finds at Alice step one that the '301 claims are directed to an abstract idea and at step two that there is no inventive concept sufficient to save the claims, the Court concludes that the asserted '301 claims are patent-ineligible under § 101. Fitbit's motion to dismiss the '301 claims is therefore GRANTED.
For the foregoing reasons, the Court DENIES Fitbit's motion to dismiss the '105 and '299 claims. The Court GRANTS Fitbit's motion to dismiss the '301 claims.
