MEMORANDUM OPINION

RICHARD G. ANDREWS, District Judge.

Before the Court is the Motion of Amazon.com, Inc. to Dismiss for Failure to State a Claim. (D.I.10). The motion is fully briefed (D.I.11, 12 & 14) and oral argument was held on May 23, 2014. (D.I. 21). For the reasons that follow, Amazon.com Inc.'s Motion is granted with respect to claim 1.1

I. BACKGROUND

This is a patent infringement case filed by Tuxis Technologies, LLC on October 29, 2013. (D.I. 1). Tuxis alleges infringement of the 6,055,513 ("the '513 patent") against Amazon.com, Inc. The '513 patent relates to a method of upselling, and the patentees describe the invention as follows:

Id., claim 1. The term "upsell" is defined in the patent to be "an offer or provision of a good or service which is selected for offer to the customer and differs from the good or service for which the primary contact was made." Id. at 13:38-41. The patentee defined "real time" as "during the course of the communication initiated with the primary transaction or primary interaction." Id. at Abstract.

In response, Amazon asserts the '513 patent's claims are invalid because they do not claim patent-eligible subject matter under 35 U.S.C. § 101.

II. LEGALSTANDARD

At the motion to dismiss stage a patent claim can be found directed towards patent ineligible subject matter if the "only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility."2 Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (emphasis in original), vacated, 134 S.Ct. 2870 (2014).3 Section 101 provides that, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. To this broad statement of what can be protected via a patent, the Supreme Court has recognized "three narrow categories of subject matter outside the eligibility bounds of § 101—laws of nature, physical phenomena, and abstract ideas." Ultramercial, 722 F.3d at 1341. The purpose of these carve outs are to protect the "basic tools of scientific and technological work." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012). However, "a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm," but "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." Id. at 1293-94 (quotation marks and italics omitted). The "[Supreme Court] has . . . made clear [that] to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words `apply it.'" Id. at 1294 (emphasis omitted).

The Supreme Court recently reaffirmed the framework laid out in Mayo for distinguishing "patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S.___, at___ (slip op., at 7) (2014). First, the court must determine whether the claims are drawn to a patent-ineligible concept. Id. If the answer is yes, the court must look to the rest of the claim to see if there is an `"inventive concept'—i.e., an element or combination of elements that is `sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'" Id. (alteration in original); see also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) ("[T]he court must first `identify and define whatever fundamental concept appears wrapped up in the claim.' Then, proceeding with the preemption analysis, the balance of the claim is evaluated to determine whether `additional substantive limitations . . . narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.'" (internal citation omitted)). Furthermore, "the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant postsolution activity." Bilski v. Kappas, 130 S.Ct. 3218, 3230 (2010) (internal quotation marks omitted).

III. DISCUSSION

In applying the framework set out above, it is clear that the claim 1 of the '513 patent is drawn to unpatentable subject matter. It claims the fundamental concept of upselling—a marketing technique as old as the field itself. While the additional limitations of the claim do narrow its scope, they are insufficient to save it from invalidity.

1. Fundamental Concept

Claim 1 is a method claim, and therefore falls within the statutory class of processes. See 35 U.S.C. § 1OO(b). Amazon argues that claim 1 is "directed to the basic idea of offering something to a customer based on his or her interest in something else," a concept that "has been a cornerstone of commercial activity since time immemorial." (D.I. 11, p. 9). It "simply deconstruct[s] the abstract concept of cross-selling4 into a series of constituent and inherent steps according to which a customer makes contact with a merchant for the purpose of one purchase transaction, and the merchant offers a second purchase transaction." (Id. at p. 10 (footnote added)). Tuxis agrees upselling is an abstract idea. (D.I. 12, p. 7). Instead, Tuxis argues that "the claims are patent-eligible because they are meaningfully limited and do not pre-empt use of that abstract concept." Id. Because the parties are in accord regarding the classification of upselling as an abstract idea, the§ 101 analysis progresses to the second step.

2. Preemption Analysis

Once an abstract idea is identified, the Court must perform a preemption analysis and determine whether the remainder of the claim includes limitations that "narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself." Accenture, 728 F.3d at 1341. "[T]he relevant inquiry is whether a claim, as a whole, includes meaningful limitations restricting it to an application, rather than merely an abstract idea." Ultramercial, 722 F.3d at 1344 (emphasis omitted). "A claim that recites an abstract idea must include `additional features' to ensure `that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].'" Alice Corp, 573 U.S. ___, at ___ (slip op., at 11) (alterations in original). After analyzing the additional limitations imposed by claim 1 of the '513 patent, the idea of upselling has not been sufficiently limited to prevent the claim from "cover[ing] the full abstract idea itself" Accenture, 728 F.3d at 1341.

Tuxis maintains that claim 1 does not pre-empt the concept of upselling because the claim limitations sufficiently narrow its scope. The full text of claim 1 is provided above, but it can be broken down into the following main steps:

According to Tuxis, prior methods of upselling suffered from information deficits and therefore were unable to accurately predict what the customer wants. (D.I. 12, p. 2). The method embodied in claim 1, Tuxis argues, overcomes this by basing its upsell recommendation on novel combinations of data, namely the "identity of the good or service of the primary transaction and the second data element [related to the user]." (Id. at p. 8 (alteration in original)). Moreover, the whole transaction is performed in real time using an electronic communications device. '513 patent, claim 1. Based on these limitations, Tuxis highlights twelve large classes of previously known upsell techniques that are excluded by claim 1's limitations, including:

(D.I. 12, pp. 8-9).

None of the limitations recited by Tuxis, however, are "meaningful." Ultramercial, 722 F.3d at 1344. Although the claim elements have some narrowing effect on the scope of claim 1, the practical effect is insubstantial, as evidenced by the categories of upselling provided by Tuxis that are not covered by claim 1. Six of the twelve categories reserved for the public involve recommending a second item without using the identity of the good or service purchased in the initial transaction (D.I. 12, pp. 8-9 (numbers 2, 3, 5, 6, 8, and 9)), and two more do not rely on information relating to the customer. (Id. (numbers 11 and 12)). The four remaining categories are: upselling not based on remote commerce, upselling not conducted in real time, upselling based on loyalty card information, and upselling based on non-targeted pushed goods. (Id. (numbers 1, 4, 7, and 10, respectively)). Reserving for the public these narrow methods of upselling does not "meaningful[ly]" limit the abstract idea. Allowing claim 1 would permit the general concept of upselling to be patented, which pre-empts its use in all fields and "effectively grant[ s] a monopoly over an abstract idea." Bilski, 130 S. Ct. at 3231.

Additionally, claim 1 lacks an "inventive concept." There is no "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 Corp, 573 U.S. ___, at___ (slip op., at 7) (alteration in original). Claim 1 requires nothing more than suggesting an additional good or service, in real time over an electronic communications device, based on certain information obtained about the customer and the initial purchase. Shrewd sales representatives have long made their living off of this basic practice. A simple hypothetical is instructive: A man enters a clothing store to purchase a new pair of dress slacks ("a user initiated primary transaction for the purchase of a good or service"). The sales representative assists the man in finding a pair of pants, and in the process learns that the man is a banker ("a second data element relating to the [identity of the customer]"). Knowing that suspenders are fashionable in the banking profession, the sales representative offers the banker a pair of suspenders that match his pants (''utilizing at least in part the primary transaction data including the identity of the good or service of the primary transaction and the second data element [related to the customer] and determining at least one item for a prospective upsell"). The customer agrees with the sales representative and purchases the suspenders ("receiving an acceptance of the offer . . . in real time"). This type of marketing strategy is at the heart of claim 1 and has been practiced as long as markets have been in operation. Conduct this transaction on "an electronic communications device" instead of in a physical store and it would be an infringing sales practice if claim 1 were valid. This cannot be permitted, as it would "tend to impede innovation more than it would tend to promote it." Mayo, 132 S. Ct. at 1293.

Moreover, the fact that the upsell item can be recommended "in real time" using a computer does not save claim 1 because the computer must be "integral" and facilitate "the process in a way that a person making calculations or computations could not." Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter."); Alice Corp, 573 U.S.___, at___ (slip op., at 15) (invalidating claims that amounted to "`nothing significantly more' than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer"); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) ("Simply adding a `computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible."). As demonstrated above, a computer is not an integral part of the claim here. A human being can generate an upsell recommendation "during the course of the user initiated communication," although perhaps not with the efficiency or speed of a computer. The computer performs nothing more than purely conventional steps that are well-understood, routine, and previously known to the industry. See Alice Corp, 573 U.S. ___, at ___ (slip op., at 15). Therefore, the addition of an electronic communications device does not save claim 1 from invalidity.

Finally, to the extent the Plaintiff argues the patent in this case is similar to the patent in Ultramercial and therefore should be found to be patentable, the Court disagrees. In Ultramercial the Federal Circuit found that the claim was patentable in part because the patent claimed a "particular internet and computer-based method for monetizing copyrighted products." Ultramercial, 722 F.3d at 1350. According to the Federal Circuit, "the claim [in Ultramercial] appears far from over generalized, with eleven separate and specific steps with many limitations and sub-steps in each category." Id. at 1352-53. In addition, the steps recited in Ultramercial were more than "token pre- or post-solution steps," i.e., "they are central to the solution itself." Id. at 1347, 1352. Here the '513 patent fails to limit claim 1, other than to confine the claim to real time upsell offers based on particular pieces of information that are transmitted over an electronic communications device. This is not a practical application with concrete steps, and is far less patentable then what was claimed in Ultramercial. Claim 1 "simply append[s] conventional steps, specified at a high level of generality," to an abstract idea. Mayo, 132 S.Ct. at 1300. The Supreme Court's decision to vacate and remand Ultramercial to the Federal Circuit for further Consideration in light of Alice Corp further undercuts any reliance on this precedent.

Because the evidence is clear and convincing that claim 1 of the '513 patent is directed towards an unpatentable abstract idea, it is invalid under 35 U.S.C. § 101.5

IV. CONCLUSION

For the reasons stated above, the Motion of Amazon.com, Inc. to Dismiss for Failure to State a Claim (D.I. 10) is granted with respect to claim 1. An appropriate Order will follow.