CHRISTOPHER J. BURKE, Magistrate Judge.
Presently before the Court in this patent infringement case is Defendant Rhapsody International Inc. ("Rhapsody") and Defendant Spotify USA Inc.'s ("Spotify" and collectively, "Defendants") "Early Motion for Summary Judgment of Invalidity Pursuant to 35 U.S.C. § 101 ["Section 101"]" (the "Motion"), filed pursuant to Federal Rule of Civil Procedure 56. (D.I. 9)
The '123 patent is entitled "Method and Device for Generating a User Profile on the Basis of Playlists." (D.I. 1, ex. 2 (the '123 patent")) The '123 patent has 19 claims, of which two (claim 1 and claim 11) are independent claims. (Id., cols. 8:31-10:44)
The technology described in the '123 patent relates to methods for "generating a user profile on a media device which has obtained a set of playlists." (Id., col. 1:5-7) In general, the asserted patent claims "a method and device" where "the user profile is generated on the basis of the user's own playlists and properties derived from them." (Id., Abstract) A "playlist," according to the patent, "is an ordered list of e.g. musical pieces (songs)[]" or other content, such as "pictorial pieces (video)." (Id., col. 3:4-6)
The '123 patent explains that, at the time of the invention, it was "known in the art to use user preferences, e.g. in the form of a corresponding user profile, to recommend content [i.e., a song or a movie] to users." (Id, col. 1:20-23) The use of user preferences and a user profile in this way helped "users [of, for example, a CD player, a radio or a personal computer] to select or recommend content of preferred taste to them[]" while "reliev[ing] the user of the timeconsuming task . . . of selecting appropriate media content among a huge amount of available content [of, for example, MP3 files.]" (Id., col. 1:23-30) The patent explains that the previously known art obtained user preferences in one of two ways—either it: (1) required the users to assign a rating to the content at issue; or (2) observed how the user used the content (e.g., when the content was played back). (Id., col. 1:35-38)
One problem with the prior art was that a single playlist could only be used to express "partial interests" (e.g., one playlist might "represent[] interest(s) in rock content, another . . . in movie content . . . whereas still another . . . in soap opera TV broadcasts"). (Id., col. 1:39-44) In that way, the patent explains, a single playlist "can be an incomplete and . . . only partial expression for a partial user interest in a dedicated content area[.]" (Id., col. 1:44-48) A need therefore arose, according to the patent, for a single playlist that represents "broad user interests in several and various content areas (actually preferred by its owner and user)." (Id., col. 1:49-52)
The patent lists additional problems with prior art methods/devices in this area. For example, "the task of observing usage of content [was] rather unreliable because a device that plays back content does not typically register who actually listens to and/or watches the content." (Id., col. 1:53-56) Moreover, asking a user to provide explicit ratings on the content that they play back "places an additional time-consuming burden . . . on the user." (Id., col. 1:56-58) And "current recommenders (that learn from examples)" in the market did not "efficiently analyze playlists composed by a user" in that they did "not analyze how the playlists are made" and provided recommendations for playlists in "a too simple manner, e.g. take best 10 items." (Id., col. 1:59-65)
In light of all of this, the '123 patent explains that it was "an object of the present invention" to: (1) "provide an automated generation of a reliable user profile, which contains information about the user's preferences with respect to different playlist aspects[;]" (2) "solve the [other] above-[referenced] problems of the prior art[;]" and (3) "determine user preferences on the basis of the user playlist(s)." (Id., cols. 1:66-2:5)
The Court hereby incorporates by reference the summary of the procedural background of this matter, which was set out in its March 8, 2019 Memorandum Opinion ("March 8, 2019 MO"). (D.I. 25 at 4)
The Court also incorporates by reference the standard of review applicable to summary judgment motions and the legal standards relating to Section 101, which were also set out in the March 8, 2019 MO. (Id. at 4-11)
In addressing Defendants' Motion, the Court will first discuss which claims will be addressed herein. Thereafter, it will analyze these claims under both steps of the test for patent eligibility set out in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014).
In its Complaint, Plaintiff alleged infringement of "at least claims 1, 2, 3, 5, 9, 10, 13, and 18 of the '123 patent." (D.I. 1 at ¶ 38) In their opening brief, Defendants made reference to each of the patent's 19 claims and moved that all of these claims be found ineligible. (See D.I. 11 at 18, 21; D.I. 16 at 2) Plaintiff, in its answering brief, then made specific reference to the content of independent claim 1 and dependent claims 2, 4, 5, 6, 8, 9, 12 and 17 (together, the "key claims") in explaining why all of the patent's claims were patent eligible. (D.I. 14 at 18-22) In light of this, the Court will address claims 1, 2, 4, 5, 6, 8, 9, 12 and 17 herein, understanding that Plaintiff's arguments for eligibility as to all of the patent's claims rise and fall on the arguments it made with regard to these particular key claims. See Berkheimer v. HP Inc., 881 F.3d 1360, 1365-66 (Fed. Cir. 2018); TMI Sols. LLC v. Bath & Body Works Direct, Inc., C.A. No. 17-965-LPS-CJB, 2018 WL 4660370, at *6 (D. Del. Sept. 28, 2018). But in doing so, the Court will primarily focus on independent claim 1 (the claim that also received the most attention in the parties' briefing).
Claim 1 recites:
('123 patent, col. 8:31-55) With the exception of claim 17, each of the key claims depend on claim 1.
Defendants assert that "[t]he claims of the '123 patent are directed to the abstract idea of creating a user profile based upon lists of what a user likes." (D.I. 11 at 18 (emphasis omitted); see also Tr. at 76) Plaintiff does not contest that "creating a user profile based upon lists of what a user likes" is an abstract idea; instead, it argues that the claims are not actually "directed to" such an idea. In that regard, Plaintiff asserts that Defendants have "flatly ignored the actual claim language and numerous detailed elements." (D.I. 14 at 18)
There is surely some support in the patent specification for Defendants' view. For example, the title of the '123 patent ("Method and Device for Generating a User Profile on the Basis of Playlists") sounds a lot like a re-wording of the abstract idea (with the exception that the abstract idea does not fully encompass the concept of "[p]laylists[,]" an issue further discussed below). ('123 patent, col. 3:4-6) The patent's Abstract reads similarly when it states:
(Id., Abstract) One could read that summary and conclude that it describes the invention in a high-level, largely non-technological way, similar to the (admittedly high-level) way in which Defendants have articulated the abstract idea. (See also id., cols. 1:6-2:5 (stating that a goal of the invention is "to provide an automated generation of a reliable user profile, which contains information about the user's preferences with respect to different playlist aspects"))
Another factor that tends to support Defendants' step one position is that, as Defendants suggest, "[h]umans can take into consideration lists of user preferences and create profiles, too." (D.I. 11 at 19) Defendants describe what seems like a human analogue to claim l's method, noting how (as to the "searching" step) "[y]ou [can] observe your friend's existing playlists" and, in doing so (as to the "analyzing" step), "[y]ou realize your friend likes country music with an upbeat tempo[;]" therefore (as to the "generating" step) "[y]ou create a profile for your friend listing country songs with an upbeat tempo[.]" (Defendants' Oral Argument Presentation, Slide 28; see also Tr. at 78-79; D.I. 16 at 21; D.I. 17 at ¶ 54) Even though the claims here clearly implicate the use of a computer processor and a media device (as is discussed further below), the fact that one can see how the claims might be performed by humans is another reason suggesting the claims are directed to the aforementioned abstract idea (and not to the more particularized subject matter suggested by Plaintiff). Cf. D&M Holdings Inc. v. Sonos, Inc., 309 F.Supp.3d 207, 213-15 & n.4 (D. Del. 2018) (concluding that the claim at issue was directed to the abstract idea of "playing a recording according to one's tastes[,]" where, inter alia, portions of the specification characterized the invention as "the mere automation of a well-known manual process") (internal quotation marks and citation omitted).
On the other hand, it does seem strange to conclude—in a patent that is all about playlists—that the claims are directed to an idea that does not explicitly encompass that subject matter. After all, the patent: (1) has the word "Playlists" in its title; (2) references "playlist(s)" in every claim; (3) is entirely drawn to discussing how musical or video or other similar playlists operate and are generated; and (4) is focused on the downsides to prior art playlist-based recommendation systems. The proffered abstract idea does include the phraseology "lists of what a user likes," but that concept sounds like it is broader than what a playlist actually is (i.e., a list that typically, if not exclusively, amounts to a collection of electronic content, like songs and videos that can be played). Thinking about it this way, it seems wrong to say that the basic thrust of the claims is about creating a user profile "based upon lists of what a user likes."
With the above in mind, the Court will assume arguendo that the claims are directed to the abstract idea put forward by Defendants, and will address concerns about what else is in the claim (including the playlist elements) at step two. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327, 1339 (Fed. Cir. 2016) (noting that there may sometimes be "close calls" about how to characterize what a claim is directed to at Alice step one, and in such scenarios, an analysis of whether the claims amount to an improvement to computer technology could take place at step two).
At step two, the Court notes that there is surely more in the claims beyond "creating a user profile based upon lists of what a user likes." For one thing, that formulation of the abstract idea does not capture that, in claim 1, the user profile at issue is being created after the searching for and analyzing of a first playlist that is among a plurality of playlists (including at least one playlist associated with a different user). (Tr. at 90-91) And it does not explicitly capture that the analyzing and generating process is focused on identifying a playlist feature (either an occurrence frequency or a content relationship of the plurality of playlists) that expresses a property of the first playlist (and is later used to generate the user profile). (Id.)
Defendants contend that they do not, and that the claim elements are "non-inventive, whether taken alone or in combination." (D.I. 11 at 21-22 (explaining how many of the dependent claims are "a generic recitation of a conventional and well-known concept; none is unique, novel, or inventive[]")) In response, Plaintiff's main argument is that the claims "recite[] an unconventional ordered combination of elements, and thus recite patentable subject matter." (D.I. 14 at 20; see also Tr. at 93)
In assessing this "ordered combination of elements" issue, it should be noted that the patentee did not suggest that the use of a "playlist" was a new or unconventional thing. ('123 patent, col. 3:4-6) Nor are the "content items" found in the playlists said to be new or inventive. (Id., col. 1:14-22 (noting that a content item can be "items of any media type (e.g. MP3)")) But do the ordered combination of claim elements nevertheless amount to hardware and software "perform[ing] [more than] well-understood, routine, and conventional activities commonly used in industry[,]" Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014), or amounting to a "non-conventional and non-generic arrangement of known, conventional pieces[,]" BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), or providing a solution "rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks[,]" DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)?
Defendants say no. Their expert, Dr. Kevin Jeffay, states in one paragraph of his declaration that "[a]s an ordered combination, the claimed limitations were still well-known and conventional to a [person of skill in the art]." (D.I. 17 at ¶ 58) He goes on to conclude that "[s]earching for a user's playlist(s), analyzing identified features of content from the user's playlist(s), and generating a user profile based upon analysis of those features was a well-known and conventional methodology far before the relevant date for the '123 patent." (Id.) Other than that, Dr. Jeffay says little more about this "ordered combination of elements" issue.
In rebuttal, Plaintiff primarily points to the declaration of its expert, Dr. Michael J. Pazzani. Dr. Pazzani's declaration on this point, while not lengthy, included more than just conclusory statements about "unconventionality." To that end, Dr. Pazzani explained that:
(D.I. 15 at ¶ 22)
In his declaration, Dr. Pazzani goes on to state:
(D.I. 15 at ¶ 23) This seems diametrically opposed to Dr. Jeffay's testimony. Dr. Jeffay explained that in the relevant time frame, it would have been decidedly conventional for a person of skill in the art to search a user's digital playlists and generate a user profile based on a feature of the playlists. (See D.I. 17 at ¶ 58) Yet Dr. Pazzani is saying that in the relevant time frame, it would have been entirely unconventional to do just that.
In sum, on the question of whether the ordered combination of elements in the claims amount to an inventive concept, there appear to be material disputes of fact. In coming to this conclusion, the Court recognizes that the claims do not appear to provide a detailed explanation of how the methods/mediums/devices analyze playlists to come up with the features at issue, or how they generate the user profiles at issue. (Tr. at 84; D.I. 11 at 20; see also '123 patent, col. 2:11-15) And at least to this lay person, the ordered combination of steps in the claims does not, at first blush, seem to be particularly complex. Those issues certainly may be relevant to patent eligibility. But with the experts having disagreements on key factual issues relevant to step two, a factfinder should really weigh in on this eligibility issue. See Vaporstream, Inc. v. Snap Inc., No. 2:17-cv-00220-MLH (KSx), 2018 WL 1116530, at *6 (C.D. Cal. Feb. 27, 2018) (denying the defendant's motion for summary judgment on Section 101 grounds because the parties' experts offered conflicting testimony with regard to "what was well-understood, routine, and conventional at the time of the invention"). For this reason, the Motion should be denied.
For the foregoing reasons, the Court finds that Defendants' Section 101 Motion with regard to the '123 patent should be DENIED.
Additionally, it is worth noting that in Dr. Jeffay's deposition, he appeared to be unfamiliar with the way that Dr. Pazzani was using the "cold start" phraseology, and Dr. Jeffay testified that he did not recall hearing the term "cold start problem" with respect to recommendation systems prior to his involvement in this case. (D.I. 21, ex. B at 129-30) To the extent there is a fact dispute between the experts about what the "cold start problem" is and/or how it relates to recommendation methods/systems like those claimed in the patent, that would seem to bolster the argument that the Motion should be denied at step two.
