United States District Court, D. Hawaii
Broadband iTV, Inc., Plaintiff: Frederick A. Tecce, John D.
Simmons, Keith A. Jones, LEAD ATTORNEYS, PRO HAC VICE,
Panitch Schwarze Belisario & Nadel, Philadelphia, PA; John S.
Rhee, Paul Alston, LEAD ATTORNEYS, Alston Hunt Floyd & Ing,
Hawaiian Telcom, Inc., Defendant: Brandon H. Stroy, Sasha G.
Rao, LEAD ATTORNEYS, PRO HAC VICE, Maynard Cooper & Gale LLP,
San Francisco, CA; Randall Y. Yamamoto, LEAD ATTORNEY,
Yamamoto Kim LLP, Honolulu, HI.
Oceanic Time Warner Cable, LLC, Defendant: Aaron Stiefel,
David S. Benyacar, LEAD ATTORNEYS, PRO HAC VICE, Daniel L.
Reisner, LEAD ATTORNEY, Kaye Scholer LLP, New York, NY; Brett
R. Tobin, Lisa W. Munger, LEAD ATTORNEYS, Goodsill Anderson
Quinn & Stifel LLLP, Honolulu, HI.
Time Warner Cable, Inc., Defendant: Aaron Stiefel, David S.
Benyacar, LEAD ATTORNEYS, PRO HAC VICE, Kaye Scholer LLP, New
York, NY; Daniel L. Reisner, Nathan Brown, LEAD ATTORNEYS,
Kaye Scholer LLP, New York, NY; Brett R. Tobin, Lisa W.
Munger, LEAD ATTORNEYS, Goodsill Anderson Quinn & Stifel
LLLP, Honolulu, HI.
GRANTING IN PART AND DENYING IN PART DEFENDANTS OCEANIC TIME
WARNER CABLE, LLC AND TIME WARNER CABLE,
INC.'S MOTION FOR SUMMARY JUDGMENT REGARDING INVALIDITY
OF U.S. PATENT NO. 7,631,336
Kay, Senior United States District Judge.
reasons set forth below, the Court GRANTS IN PART and DENIES
IN PART Defendants Oceanic Time Warner Cable, LLC and Time
Warner Cable, Inc.'s Motion for Summary Judgment
regarding Invalidity of U.S. Patent No. 7,631,336, ECF No.
AND PROCEDURAL HISTORY
December 8, 2009, the United States Patent and Trademark
Office (" USPTO" ) issued Patent No. 7,631,336 (the
" '336 Patent" ), entitled " Method for
Converting, Navigating and Displaying Video Content Uploaded
from the Internet to a Digital TV Video-on-Demand
Platform." Am. Compl. ¶ 19, Ex. A, ECF Nos. 100,
100-1. The patent was issued in the name of Milton Diaz Perez
(" Diaz Perez" ) and based on United States Patent
Application No. 11/685,188 (the " '188
which was assigned to Broadband iTV, Inc. ("
Plaintiff" ). Am. Compl. ¶ 18, ECF No. 100.
'336 Patent discloses and claims various features related
to the delivery of video-on-demand (" VOD"
) content to a VOD server. Id.
¶ 21. According to the patent itself, the invention is
intended to facilitate " the provision of video content
to viewers through digital TV infrastructure." '336
Patent at Col. 1, ln. 17-18. Specifically, it relates
to a method for " converting, navigating and displaying
video content uploaded from the Internet on a digital TV
video-on-demand platform." Id. at Col. 1, ln.
19-21. The patent includes eleven claims, out of which Claim
1 is independent and Claims 2-10 are dependent. See id. at
April 9, 2014, Plaintiff filed a Complaint against Defendants
Oceanic Time Warner Cable, LLC, Time Warner Cable, Inc., Time
Warner Entertainment Company, LP (collectively, "
TWC" ), and Hawaiian Telcom, Inc. (" HTI" )
(collectively, " Defendants" ). Compl., ECF No. 1.
The Complaint was amended on December 5, 2014. Am. Compl.,
ECF No. 100. The Amended Complaint accuses Defendants of
infringing the '336 Patent by " making, using,
offering for sale and selling the '336 patent's
claimed method for converting, navigating and displaying
video content in connection with their providing, selling and
offering for sale digital television services."
Id. ¶ 22. Defendants deny that they infringe
the '336 Patent. Def. HTI's Answer and Affirmative
Defenses to Plf. BBiTV's Am. Compl. ¶ 22, ECF No.
104; Def. TWC's Answer to Am. Compl. ¶ 22, ECF No.
to the parties' stipulation, the Court ordered the
severance of the cases against TWC and HTI on April 16, 2015.
The severed cases were consolidated " for all pre-trial
purposes, including claim construction." Stipulation and
Order at 2, ECF No. 164. Following an off-the-record
technology tutorial, held on June 3, 2015, and a Markman
hearing, held on June 4, 2015, the Court issued its Claim
Construction Order on June 24, 2015. ECF No. 290.
correspondence from the parties, the Court issued a Minute
Order on August 4, 2015 outlining the number of permissible
summary judgment motions. ECF No. 432. In the interests of
judicial economy and pursuant to Federal Rules of Civil
Procedure 1 and 16, the Court permitted each party to file
one summary judgment motion regarding patent validity. In
addition, each Defendant was permitted to file one summary
judgment motion regarding patent infringement, and Plaintiff
was permitted to file one summary judgment motion regarding
patent infringement with respect to each Defendant.
Id. at 2.
instant motion relates to the validity of the '336
Patent. On August 10, 2015, TWC filed its Motion for Summary
Judgment Regarding Invalidity of U.S. Patent No. 7,631,336,
ECF No. 474 (" TWC's MSJ" ), and a Concise
Statement of Facts attached thereto, ECF No. 475 ("
TWC's CSF" ). TWC's motion challenges first that
the '336 Patent is invalid as related to
ineligible subject matter under 35 U.S.C. § 101, and
second, that the '336 Patent is invalid as "
anticipated" or " obvious" over prior art,
pursuant to 35 U.S.C. § § 102, 103.
August 27, 2015, Plaintiff filed its Memorandum in Opposition
to TWC's MSJ, ECF No. 561 (" Plf.'s Opp. to
TWC's MSJ" ), and a Concise Statement of Facts
attached thereto, ECF No. 562 (" Plf.'s CSF --
TWC's MSJ" ).
September 4, 2015, TWC filed its Reply Memorandum in Further
Support of its MSJ, ECF No. 620 (" TWC's Reply"
), and a Reply Concise Statement of Facts attached thereto,
ECF No. 621 (" TWC's Reply CSF" ). Hearings
were held on TWC's MSJ and HTI's MSJ on September 17,
Summary Judgment Standard
party is entitled to summary judgment on any claim or defense
if it can be shown " that there is no genuine dispute as
to any material fact and the movant is entitled to judgment
as a matter of law.'" Maxwell v. Cnty. of San
Diego, 697 F.3d 941, 947 (9th Cir. 2012) (quoting
Fed.R.Civ.P. 56(a)). A party asserting that a fact cannot be
or is genuinely disputed must support the assertion by either
" citing to particular parts of materials in the
record" or " showing that the materials cited do
not establish the absence or presence of a genuine dispute,
or that an adverse party cannot produce admissible evidence
to support the fact." Fed.R.Civ.P. 56(c)(1).
genuine issue of material fact exists if " a reasonable
jury could return a verdict for the nonmoving party."
United States v. Arango, 670 F.3d 988, 992 (9th Cir.
2012) (quoting Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)).
Conversely, " [w]here the record taken as a whole could
not lead a rational trier of fact to find for the nonmoving
party, there is no genuine issue for trial." Scott
v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167
L.Ed.2d 686 (2007).
movant has the burden of persuading the court as to the
absence of a genuine issue of material fact. Avalos v.
Baca, 596 F.3d 583, 587 (9th Cir. 2010). If the movant
satisfies its burden, the nonmovant must present evidence of
a " genuine issue for trial," Fed.R.Civ.P. 56(e),
that is " significantly probative or more than merely
colorable,"  LVRC Holdings LLC v. Brekka,
581 F.3d 1127, 1137 (9th Cir. 2009) (citation omitted). When
evaluating a motion for summary judgment, the court must
" view the facts and draw reasonable inferences in the
light most favorable to the party opposing the summary
judgment motion." Scott, 550 U.S. at 378.
Standards Related to Patent Eligibility Under 35 U.S.C.
of patent-eligible subject matter under 35 U.S.C. § 101
(" Section 101" ) are questions of law.
CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1369 (Fed. Cir. 2011). To the extent that the
Court must resolve underlying questions of fact related to
eligibility, they must be proven by clear and convincing
evidence. See, e.g., Affinity Labs. of Texas, LLC v.
DirecTV, LLC, 109 F.Supp.3d 916, 2015 WL 3764356 * 16
(W.D. Tex. July 7, 2015); Kickstarter, Inc. v. Fan
Funded, LLC, No. 11 Civ. 6909 (KPF), 2015 WL 3947178 * 5
n. 7 (S.D.N.Y. June 29, 2015). Defendants, as the moving
parties, bear the burden of establishing that the claims are
patent-ineligible under Section 101. See, e.g., Modern
Telecom Sys. LLC v. Juno Online Servs., Inc., No. SA CV
14-0348-DOC (ANx), 2015 WL 1240182 * 7 (C.D. Cal. Mar. 17,
disagree regarding whether a presumption of eligibility
should apply in Section 101 cases. A recent Federal Circuit
concurrence stated that " no presumption of eligibility
attends the section 101 inquiry." Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 717 (Fed. Cir. 2014) (Mayer,
J., concurring). District courts have taken different
approaches. Compare, e.g., Tranxition, Inc. v. Lenovo
(U.S.) Inc., No. 3:12-cv-01065-HZ, 2015 WL 4203469 * 4
(D. Or. July 9, 2015) (declining to apply presumption of
eligibility in Section 101 challenge) with Exergen Corp.
v. Brooklands Inc., Civil Action No. 12-12243-DPW, 125
F.Supp.3d 307, 2015 WL 5096464 * 2 (D. Mass. Aug. 28, 2015)
(applying presumption of eligibility in Section 101 challenge
but noting that it " has less significance in the
context of a largely legal determination" ). Given the
most recent available guidance from the Federal Circuit, the
Court will assume that such a presumption does not
Standards Related to Patent Anticipation and Obviousness
Under 35 U.S.C. § § 102, 103
Determinations of " anticipation" and "
obviousness" under 35 U.S.C. § § 102, 103
(" Section 102," " Section 103" ) are
reviewed differently from subject matter eligibility
determinations under Section 101. In Section 102 and Section
103 challenges, a patent is entitled to " a presumption
of validity, and the burden of proof falls upon the party
seeking to establish the invalidity of a patent claim."
See, e.g., Nystrom v. Trex Co., 374 F.3d 1105, 1117
(Fed. Cir. 2004) (quotation omitted). However, where (as
here) the prior art references offered by a defendant were
not disclosed to the USPTO during the patent's
prosecution, " the rationale underlying the presumption
-- that the PTO, in its expertise, has approved the
claim" -- is " much diminished." KSR
Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418, 127
S.Ct. 1727, 167 L.Ed.2d 705 (2007).
patent is " anticipated" under Section 102 where
" every limitation is found either expressly or
inherently in a single prior art reference." King
Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274
(Fed. Cir. 2010); see also, e.g., Schering Corp. v.
Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
Anticipation is a question of fact, Schering, 339 F.3d at
1377, which must be proven by clear and convincing
evidence, see, e.g., Sciele Pharma Inc. v. Lupin
Ltd., 684 F.3d 1253, 1259-61 (Fed. Cir. 2012) (citing
Microsoft, 131 S.Ct. at 2250).
addition to the prior art references themselves, any expert
testimony concerning anticipation " must be testimony
from one skilled in the art and must identify each claim
element, state the witnesses' interpretation of the claim
element, and explain in detail how each claim element is
disclosed in the prior art reference." Schumer v.
Lab. Comp. Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir.
patent is " obvious" under Section 103, meanwhile,
where " the differences between the claimed invention
and the prior art are such that the claimed invention as
a whole would have been obvious before the effective
filing date of the claimed invention to a person having
ordinary skill in the art [" PHOSITA" ]." 35
U.S.C. § 103 (emphasis added). Determinations of
obviousness under Section 103 are questions of law, based on
underlying " factual determinations" regarding the
" scope and content of the prior art, differences
between the prior art and the claims at issue, the level of
ordinary skill in the pertinent art, and any objective
indicia of non-obviousness." Randall Mfg. v.
Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citations
with anticipation, TWC has the burden of proving invalidity
by clear and convincing evidence. See Quad Envt'l
Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 872
(Fed. Cir. 1991). All factual inferences must be drawn in
favor of Plaintiff. When material facts are disputed, such
that further " testimonial, documentary, and expert
evidence [is] needed for resolution," summary
adjudication is improper. Id.
MSJ argues first that the '336 Patent is invalid as
directed to unpatentable subject matter, and second, that the
claims of the '336 Patent are invalid as anticipated or
obvious over prior art. The Court analyzes these challenges
sequentially below and finds (1) that the '336 Patent is
invalid as directed to unpatentable subject matter under 35
U.S.C. § 101, and (2) Plaintiff has raised sufficient
issues of material fact to preclude summary judgment that the
'336 Patent is invalid as anticipated or obvious over
The '336 Patent Is Invalid as Directed to Unpatentable
Subject Matter Under 35 U.S.C. § 101
argues in the instant motion that the '336 Patent is
invalid as directed to unpatentable subject matter under 35
U.S.C. § 101. For the reasons set forth below, the Court
agrees. Accordingly, the '336 Patent is invalid and may
not be enforced against TWC in this case.
35 U.S.C. § 101, an invention is eligible for patenting
if it fits into one of four subject-matter categories:
processes, machines, manufactures, and compositions. The
Supreme Court has recognized three implicit exclusions from
eligible subject matter: " laws of nature, natural
phenomena, and abstract ideas." Alice, 134 S.Ct. at 2354
(citation omitted). The latter exclusion, " abstract
ideas," is relevant here.
determine whether an invention impermissibly claims a law of
nature, natural phenomenon, or abstract idea, courts
undertake a two-step test. First, they must determine "
whether the claims at issue are directed to one of those
patent-ineligible concepts." Id. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S.Ct. 1289, 1296-97, 182 L.Ed.2d 321
courts next " consider the elements of each claim both
individually and 'as an ordered combination' to
determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible
application." Id. (citation omitted). This
second step was described in Alice as a " 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.'"
Id. (quoting Mayo, 132 S.Ct. at 1294, 1298).
Supreme Court explained that the second step of the Alice
test is designed to ensure that a patent reflects " more
than a drafting effort designed to monopolize the abstract
idea." Id. at 2347 (citation and alteration
omitted). Recognizing that all inventions depend, at some
level, on abstract concepts, courts are nonetheless to
invalidate patents that would " t[ie] up the future use
of these building blocks of human ingenuity." The
Supreme Court has cautioned that doing otherwise would
threaten the " pre-emption" of further innovation
through the operation of patent
monopolies on abstract ideas. Id. at 2354-55
wake of Alice, the Federal Circuit has observed that "
any given analysis in a § 101 'abstract idea'
case is hardly a clear guidepost for future cases arising
under § 101 -- each case stands on its own."
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1336 (Fed. Cir. 2015). Nonetheless, certain general
principles are clear. For example, mathematical algorithms,
even when executed on computers, are unpatentable abstract
ideas. See Gottschalk v. Benson, 409 U.S. 63, 64, 93
S.Ct. 253, 34 L.Ed.2d 273 (1972). Certain fundamental
economic and business practices are also unpatentable
abstract ideas, even when computers are used to implement
them. See Bilski v. Kappos, 561 U.S. 593, 611, 130
S.Ct. 3218, 177 L.Ed.2d 792 (2010) (risk-hedging strategy
reduced to mathematical formula was not patent eligible);
Alice, 134 S.Ct. at 2356 (same for "
computer-implemented scheme" for exchanging financial
obligations to mitigate risk).
general, even if claims " recite various computer
hardware elements," they are ineligible for patenting if
they are directed simply to the " performance of an
abstract business practice on the Internet or using a
conventional computer." DDR Holdings, LLC v.
Hotels.com, LP, 773 F.3d 1245, 1256 (Fed. Cir. 2014).
This is because " [t]he improved speed or efficiency
inherent with applying an abstract idea on a computer does
not provide an inventive concept." Personalized Media
Commc'ns, 2015 WL 4730906 at * 9 (citation omitted).
Conversely, a patent directed to an " inventive concept
for resolving [a] particular Internet-centric problem"
may not be unpatentable. See DDR Holdings, 773 F.3d at 1259.
The '336 Patent Claims an Abstract Idea
Court begins by considering Step 1 of the Alice analysis:
identifying " the concept" of the '336 Patent
and whether it claims an abstract idea. See, e.g.,
Ultramercial, 772 F.3d at 715 (" Although certain
additional limitations, such as consulting an activity log,
add a degree of particularity, the concept embodied by the
majority of the limitations describes only the abstract idea
of showing an advertisement before delivering free
content." ); Alice, 134 S.Ct. at 2355. For the reasons
discussed below, the Court finds that the '336 Patent
claims an abstract idea.
preliminary matter, the Court summarizes the claims of the
'336 Patent (of which Claims 1-4 and 7 are asserted
against TWC and HTI). Claim 1 is the only independent claim
in the patent. In summary, Claim 1 discloses:
1. A method for " automatically enabling the converting,
navigating and displaying" of videos from a publisher on
an " open online network" to a TV service provider
for inclusion in its electronic program guide ("
EPG" ), by:
a. Enabling the online uploading of videos to a Web-based
content management server (" WBCMS" )
connected to a TV service provider's " VOD
platform,"  along with metadata specifying
certain hierarchical category information related to the
b. Converting the uploaded videos into standard TV digital
format and storing " local instances" of the videos
at video ID (" VID" ) addresses in the service
provider's VOD platform;
c. Listing the titles of the videos in the service
provider's EPG using the same hierarchical category
information that was uploaded as metadata;
d. Giving TV subscribers access to the service provider's
EPG to choose from among the " hierarchically-arranged
titles of video content; "
e. Enabling a chosen video to be retrieved and sent to a
subscriber's set-top box (" STB" ) after the
subscriber sends his video request to the VOD platform using
his remote control.
See '336 Patent at Col. 21, ln. 15-Col. 22, ln. 7.
2-4 and 7 are much shorter: Claims 2 and 3 disclose uploading
videos from a user's computer and using a uniform
resource locator (" URL" ), Claim 4 discloses using
metadata expressed as a " string of category and
subcategory terms and the title delimited by standard
delimiters," and Claim 7 discloses using an EPG in which
users can store " bookmarks" for TV programs. See
id. at Col. 22, ln. 8-24, 37-41.
Alice, the Federal Circuit has examined Section 101
challenges to several patents that, like the '336 Patent,
use computer and Internet technology to transmit and store
various media. Although each Section 101 case " stands
on its own," Versata Dev. Grp., 793 F.3d at
1336, a review of similar cases is instructive. For example,
the Federal Circuit recently explained that " using
categories to organize, store, and transmit information is
well-established . . . the idea of collecting information in
classified form, then separating and transmitting that
information according to its classification, is an abstract
idea that is not patent-eligible." Cyberfone Sys.,
LLC v. CNN Interactive Grp., 558 Fed.Appx. 988, 991-92
(Fed. Cir. 2014).
the broad concept of using organizational and product group
hierarchies to determine prices for products and customers is
an abstract idea, even where it is implemented using
computers. Versata, 793 F.3d at 1333-34 (noting that
patents directed to " collecting, recognizing, and
storing data" claim abstract ideas). Similarly, a patent
directed to collecting data from documents, recognizing
information within that data, and storing it in memory claims
an abstract idea, despite the use of scanning and processing
technology. Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343,
1349 (Fed. Cir. 2014).
court decisions in this area are also persuasive. For
example, a patent directed to the " idea of compiling,
organizing, and transmitting information, using
identification codes as shorthand for that information"
was found to be directed to an abstract idea. OpenTV,
Inc. v. Apple, Inc., 2015 WL 1535328 * 3 (N.D. Cal. Apr.
6, 2015). So too was a patent found to claim an abstract idea
where it was directed to
" converting and forwarding messages, so that the
messages are sent in a format and layout in which they can be
received by a recipient." TriPlay, Inc. v. WhatsApp
Inc., 2015 WL 1927696 * 13 (D. Del. Apr. 28, 2015).
Additionally, patents premised on using combinations of
categorical information to organize videos and creating user
" bookmarks" saved through a " media-on-demand
server" were found to claim abstract ideas. Netflix,
Inc. v. Rovi Corp., Case No. 11-cv-6591 PJH, 114
F.Supp.3d 927, 2015 WL 4345069 * 9, 18 (N.D. Cal. July 15,
urges that the claims, " using generic computer
elements," implement " the idea of using the same
hierarchical ordering based on metadata to facilitate the
display and locating of video content." Mem. in Support
of TWC's MSJ at 9, ECF No. 474-1.
brief offers no suggestion of what the patent does
claim, if not an abstract idea. Plaintiff briefly
complains that Defendants' descriptions of the patent
claims are " oversimplifications," but it does not
delineate what, if anything, Defendants leave out. See
Plf.'s Opp. to TWC's MSJ at 5-6, ECF No. 561.
Instead, most of Plaintiff's briefing simply concerns the
second step of the Alice test, arguing that the Court need
not decide whether the patent is directed to an abstract idea
(under Alice step one) if Defendants fail to meet their
burden to show a lack of " inventive concept"
(under Alice step two). See id. at 6.
Plaintiff's limited response, the Court undertakes to
evaluate whether the '336 Patent appears to claim an
abstract idea. The Court previously identified the following
as the " novel" underlying idea of the invention:
" creating a method for uploading videos via Internet
with accompanying metadata, which allows the videos to be
automatically listed in a cable company's EPG for viewer
selection." Claim Constr. Order at 32-33, ECF No. 290.
This is essentially the abstract idea identified by TWC:
" using the same hierarchical ordering based on metadata
to facilitate the display and locating of video
same understanding of the patent's basic concept is
consistent with the Patent Trial and Appeal Board ("
PTAB" ) Decision Denying Covered Business Method Review
of the '336 Patent, which noted:
[T]he problem in the prior art described and addressed by the
'336 patent is the alleged lack of 'capability for
Internet uploading and automatic listing in any VOD EPG'
. . . [t]he problem is addressed through 'listing the
title of the video content in the [EPG] using the same
categories as those specified in the metadata uploaded along
with the video content.
Decision Denying Covered Business Method Patent Review * 12
CBM 2014-00189 (Apr. 1, 2015) (alterations omitted and
emphasis added) (citing '336 Patent at Col. 3, ln. 62-64
and Preliminary Response at 16).
PTAB concluded that the '336 Patent is a " covered
business method patent" and not a " technological
invention," as it is directed toward " primarily a
content organization problem, not a technical problem."
The PTAB was thus " not persuaded that [it] is a
technical solution to a technical problem." Id.
Court finds that the '336 Patent, consistent with the
foregoing descriptions, claims an abstract idea. As TWC
argues, the patent claims the concept of " using the
same hierarchical ordering based on metadata to facilitate
the display and locating of video content." To do so,
the patent exploits matches between hierarchical identifiers
-- uploaded at one end of the process as metadata, and read
at the other end to display listed videos -- in order to
facilitate the automatic EPG listing of videos sent to cable
companies by outside publishers. This essentially translates
hierarchical ordering information that allows videos to be
efficiently uploaded, stored, and displayed.
is on point as persuasive authority. There, the court found
that a patent claimed an " abstract idea of compiling,
organizing, and transmitting information, using
identification codes as shorthand for that information."
2015 WL 1535328 at * 3. One could apply almost an identical
description to the aforesaid abstract idea behind the
'336 Patent. Also similar is In re TLI Commc'ns
LLC Patent Litig., MDL No. 1:14md2534, 87 F.Supp.3d 773,
2015 WL 627858 (E.D. Va. Feb. 6, 2015), wherein a patent for
" recording, communicating and administering digital
images" through a server claimed simply an "
abstract idea of taking, organizing, classifying, and storing
OpenTV court noted that the problem of " how to
transmit, receive, store, and organize  information
deriving from multiple sources is not a creature of the
Internet age: solutions to this problem date back to the
invention of smoke signals." Id. at * 4;
see also, e.g., Content Extraction, 776 F.3d at 1347
(" The concept of data collection, recognition, and
storage is undisputedly well-known." ); Cyberfone Sys.,
558 Fed.Appx. at 992 (the " well-known concept" of
" using categories to organize, store, and transmit
information" is not patent-eligible); Market Track,
LLC v. Efficient Collaborative Retail Marketing, LLC,
No. 14 C 4957, 2015 WL 3637740 * 5 (N.D.Ill. June 12,
2015) (patent was directed toward abstract idea of "
identifying, organizing, and presenting stored
information," notwithstanding " degree of
particularity" conferred by requirements for database
queries, stand-alone file outputs with associated
information, and file deliveries). The same principles favor
a finding that the '336 Patent claims an abstract idea
have also considered in the " abstract idea"
analysis (even prior to Alice) whether the steps of a patent
" can be performed in the human mind, or by a human
using a pen and paper." CyberSource, 654 F.3d
at 1372. Such a finding supports the conclusion that a patent
claims " the types of methods that embody 'the basic
tools of scientific and technological work' that are free
to all men and reserved exclusively to none,' and
therefore comprise a non-patent-eligible abstract idea."
OpenTV, the Court finds that this inquiry further supports a
finding that the '336 Patent claims an abstract idea.
Even though the '336 Patent anticipates that its steps
will be performed through computer operation, it describes a
process that a person could perform " [u]sing a pen,
and her own brain." OpenTV, 2015 WL 1535328 *
4; see also, e.g., Tranxition, 2015 WL 4203469 * 13
(finding that a human could perform steps of a patented
method to transfer computer settings by locating the settings
she wanted on the first computer, " extracting"
those settings, locating where similar settings are stored on
a new computer, and applying the new settings).
possible, for example, that a person could write down a list
of categorical identifiers for a video and send the video on
tape, along with the list, to a cable company, whose
employees could then manually upload the video to the
company's VOD platforms and use the same list of
categorical identifiers to designate where the video will be
displayed in subscribers' EPGs. This was, in essence, the
former state of affairs that the parties described to the
Court at its Technology Tutorial of June 3, 2015. See also
Transcript of Proceedings of June 4, 2015 (" Tr." )
at 13:9-15:17, 22:6-15, ECF No. 258.
of the foregoing reasons, the Court finds that the '336
Patent claims an abstract idea.
The '336 Patent Lacks a Sufficient " Inventive
Concept" to Be Patent-Eligible
concluded that the '336 Patent claims an abstract idea,
the Court considers whether it nonetheless adds a sufficient
" inventive concept" to qualify as eligible subject
matter under step two of the Alice test. 134 S.Ct. at 2355.
The elements of the claims, either individually or in
combination, must " ensure that the patent in practice
amounts to significantly more than a patent upon the
[abstract idea] itself." If not, the patent must be
invalidated. Id. (quotations omitted).
Conventional or obvious" implementing activity does not
" transform an unpatentable principle into a patentable
process." Bilski, 561 U.S. at 610; see
also, e.g., OpenTV, 2015 WL 1535328 at * 6 (where an
invention " does not go beyond the 'routine or
conventional use' of existing electronic components . . .
[t]he fact that a company may be the first to successfully
apply an abstract idea within a new technological context
does not transform the abstract idea into something tangible
and patentable" ) (citation omitted). It also
is not enough for a patent to
recite the use of computer hardware or software that would
" limit the use of [the idea] to a particular
technological environment," such as VOD. Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336 (Fed. Cir. 2013) (citations omitted). " Given
the ubiquity of computers . . . wholly generic computer
implementation is not generally the sort of additional
feature that provides any practical assurance that the
process is more than a drafting effort designed to monopolize
the abstract idea itself." Alice, 134 S.Ct. at
2358 (alterations and citations omitted).
to contain an inventive concept, computer system technology
must do more than perform " well-understood, routine,
and conventional activities previously known to the
industry." Id. at 2359 (alteration omitted);
see also Content Extraction, 776 F.3d at 1348.
District courts examining inventions implemented through the
use of computers and Internet technology, post-Alice, have
found it useful to compare the Federal Circuit decisions of
Ultramercial and DDR Holdings in this regard. See, e.g.,
Netflix, 2015 WL 4345069 at * 5. The Court does the same
first case, Ultramercial, the Federal Circuit found invalid
under Section 101 a patent for a method that allowed a user
to view copyrighted media (such as a television show) online,
free of charge, in exchange for viewing an advertisement
online. 772 F.3d 709. As here, the patent purported to recite
a detailed series of steps: (1) receiving the copyrighted
media from a content provider, (2) selecting an ad, (3)
offering the media on the Internet, (4) restricting public
access to the media, (5) offering the media to the customer
in exchange for watching the selected ad, (6) receiving a
request to view the ad from a user, (7) facilitating display
of the ad, (8) allowing the consumer to access the media, (9)
allowing the consumer access to the media if the ad is
interactive, (10) updating the activity log, and (11)
receiving payment from the ad sponsor. Id. at
Federal Circuit first concluded that the patent was drawn to
the abstract idea of " showing an advertisement before
delivering free content." Id. at 715. Second,
in its search for an " inventive concept," the
court concluded that some of the patent's steps were
" not previously employed in this art."
Nonetheless, they were " conventional steps, specified
at a high level of generality, which is ...