3G Licensing v. Blackberry Ltd.
3G Licensing v. Blackberry Ltd.
Opinion of the Court
*646Plaintiff Koninklijke KPN N.V. ("KPN") sued multiple defendants in numerous related actions for alleged infringement of KPN's
I. BACKGROUND
KPN asserts the '662 patent in a total of eleven cases against Defendants; in seven of those cases it is the only asserted patent, while in the remaining cases it is one of five patents-in-suit.
The patent explains that errors may occur when data is transmitted, for example, "through electromagnetic radiation, inadequacies in a storage medium (transmission in time), and errors in switching and transmission equipment."
The '662 patent also generally describes the principles of data transmission and error correction in the prior art.
However, as the patent explains, these prior art systems and methods were not completely effective because transmission errors were sometimes not detected. The patent provides two specific instances when this occurred. One, referred to as "systematic errors," is when the errors repeat themselves, and the other is when the data is altered, for example, compressed or encoded, during transmission.
*647To achieve this objective, the '662 patent, unlike the prior art methods, varies the original data to create supplementary data. See
The four claims of the '662 patent are reproduced below:
1. A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:
a generating device configured to generate check data; and
a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;
wherein said varying device includes a permutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.
2. The device according to claim 1, wherein the varying device is further configured to modify the permutation in time.
3. The device according to claim 2, wherein the varying is further configured to modify the permutation based on the original data.
4. The device according to claim 3, wherein the permutating device includes a table in which subsequent permutations are stored.
As can be seen, claim 1 claims a device having three components: a generating device, a varying device, and a permutating device. The generating device generates "check data," which the specification also refers to as supplementary data. See '662 patent at 3:32-34, 37-39. The varying device varies the original data to create "varied data" and then sends the varied data to the generating device. To vary the data, the varying device uses a permutating device, which permutates the data by changing one or more bit positions in each data block without reordering the blocks. All three dependent claims recite devices that claim additional features of either the varying device or the permutating device. The devices in the dependent claims are designed to modify the permutation based on time (claim 2) and the original data (claim 3) and also include a table in which later permutations can be stored (claim 4).
II. RECENT § 101 DECISIONS
The parties completed briefing on the motion on October 4, 2017. (D.I. 29, 37, 45) The Court of Appeals has subsequently issued multiple opinions considering challenges to patentability pursuant to § 101.
On November 3, 2017, Defendants notified the Court of the Federal Circuit's decision in Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC,
On February 20, 2018, KPN notified the Court of the opinion in Aatrix Software, Inc. v. Green Shades Software, Inc. ,
*648conventional is a question of fact."
The Court is also aware of other recent § 101 opinions. See, e.g., Intellectual Ventures I LLC v. Symantec Corp.,
Even though the parties have not provided their specific analyses of all of these recent decisions, the Court has considered each of them in reaching its decision here.
III. LEGAL STANDARDS
A. Motion for Judgment on the Pleadings
Pursuant to Federal Rule of Civil Procedure 12(c), a party may move for judgment on the pleadings "[a]fter pleadings are closed-but early enough not to delay trial." When evaluating a motion for judgment on the pleadings, the Court must accept all factual allegations in a complaint as true and view them in the light most favorable to the non-moving party. See Rosenau v. Unifund Corp.,
A Rule 12(c) motion will not be granted "unless the movant clearly establishes that no material issue of fact remains to be resolved and that he is entitled to judgment as a matter of law." Rosenau,
*649Venetec Int'l, Inc. v. Nexus Med., LLC,
B. Patentable Subject Matter
Under
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
At step one, "the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
In conducting the step one analysis, courts should not "oversimplif[y]" key inventive concepts or "downplay" an invention's benefits. Enfish, LLC v. Microsoft Corp.,
At step two, courts must "look to both the claim as a whole and the individual claim elements to determine whether the claims contain an element or *650combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself." McRO,
However, "[t]he inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art." Bascom,
The Federal Circuit recently elaborated on the step two standard, stating that "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact. Any fact, such as this one, that is pertinent to the invalidity conclusion must be proven by clear and convincing evidence." Berkheimer,
"Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." Berkheimer,
As part of the step two "inventive concept" inquiry, the Federal Circuit has looked to the claims as well as the specification. See Affinity Labs of Texas, LLC v. Amazon.com Inc.,
*651("The § 101 inquiry must focus on the language of the Asserted Claims themselves.").
At both steps one and two, it is often useful for the Court to compare the claims at issue with claims that have been considered in the now considerably large body of decisions applying § 101. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
Finally, as a procedural matter, the Federal Circuit has observed frequently that § 101 disputes may be amenable to resolution on motions for judgment on the pleadings, motions to dismiss, or summary judgment. See, e.g., Berkheimer,
IV. DISCUSSION
A. Step One
At step one of the Alice / Mayo test, the question is whether the asserted claims are directed to a patent-ineligible concept. "[A]ll inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo,
Applying this analysis, the Court agrees with Defendants that the claims of the '662 patent are directed to the abstract idea of reordering data and generating additional data. (D.I. 29 at 10-12; see also Tr. at 70 (KPN seemingly agreeing that '662 patent at its core relates to data manipulation in form of reordering and generating data) )
The Federal Circuit has found other claims reciting similar steps of manipulating data invalid under § 101. See Two-Way Media,
On this same reasoning, the claims here-which do not say how data is reordered, how to use reordered data, how to generate additional data, how to use additional data, or even that any data is transmitted-are directed to an abstract idea. Simply "reciting ... data manipulation steps" without additional limitations, constitutes, at step one, an abstract idea. Capital One,
The dependent claims are also abstract. The additional limitations of these claims do not say how the permutations are modified in time or modified based on the data, and but indicate (for Claim 4) that the permutations are stored in a generic table.
The Court is not persuaded by KPN's contrary view. KPN contends that the claims are directed to a specific implementation of a solution to a problem in the computer field rather than an abstract idea. (D.I. 37 at 6-12) But all of the components of the claims are generic devices. As the specification explains, the functions used to generate data in the claimed device "can be implemented in software as well as hardware (for example as an ASIC)." '662 patent at 4:8-10; see also
Accordingly, the Court must turn to step two of the analysis.
B. Step two
At step two, the Court looks at "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." Alice,
Defendants argue that the claimed devices are generic devices that perform the customary computer functions of reordering and generating data. (D.I. 29 at 18) Defendants further contend that the patent's intended use of error checking merely restates the express goal of the patent and does nothing more than limit the technology to a particular field of use. (Id. at 18) Finally, Defendants assert that there is nothing inventive about the data itself that is generated (blocks consisting of bits) or the process of permutating the data (changing bit position without reordering the blocks making up the data). (Id. at 19)
KPN responds that "[n]othing more is needed to refute Defendants' motion" than the "specification's statements about the purported invention." (D.I. 37 at 18) (citing MAZ Encryption Techs. LLC v. Blackberry Corp.,
*653KPN points to a portion of the specification purportedly explaining that the claimed devices disclose a "new, non-conventional way of generating check data that represented a marked improvement over the prior art." Id. at 18-19) ( citing '662 patent at 2:41-62, 6:30-35).
The Court agrees with Defendants. No "saving inventive concept," Two-Way Media,
Even accepting, arguendo, KPN's contention that the specification discloses an inventive way of checking errors in transmitted data, the patent still fails at step two because that purported inventive concept is not captured in the claims. See, e.g., Two-Way Media,
As KPN observes, the specification explains that the "object of the invention" is met "by a method for the transmission of data between a transmitting end and a receiving end of a transmission channel while providing an error check." '662 patent at 2:18, 27-30. According to the specification, the method is performed by generating supplementary data at the transmitting end and regenerating the supplementary data at the receiving end using certain functions. Id. at 2:31-38. The specification then explains how error checking is done: "by comparing the regenerated supplementary data with the transmitted supplementary data." Id. at 2:39-41.
These particular features of the purported inventive concept, however, are not recited in Claim 1. While the claim recites various device limitations to generate, vary, and permutate data, there is no reference in the claim to a transmission channel, a transmitting end, a receiving end, or even to data transmission. Without such limitations, the other aspects of the purported inventive concept are also absent from the claim: the process of generating supplementary data at the transmitting end of a transmission channel and regenerating the supplementary data at receiving end of the channel, id. at 2:30-38; the requirement for "a form of synchronization" to exist between the user data and the supplementary data, id. at 2:59-62; and the process of "comparing the regenerated supplementary data with the transmitted supplementary data," id. at 2:39-41, which is how error checking is accomplished, according to the patent.
Additionally, none of the capabilities or functions disclosed in the specification are described as anything other than conventional. This applies to: (i) the patent's central concept of generating supplementary *654data to check for errors in transmitted data, which was already known, see '662 patent at 3: 32-56; Fig 1; (ii) the data structure used to generate supplementary data, see id. at 3: 12-19 (describing conventional data structures); (iii) how the permutation is done, see id. at 5:58-65 (simply interchanging bit positions in a conventional manner); (iv) the permutation functions used to vary the data, see id. at 5:37-38, 41-42, 6:12-13 (using conventional linear and non-linear functions); and (v) software and hardware used to implement the functions, see id. at 4:8-11, 6:14-30; see also 3:66-4:1 ; 4:46-48 (using conventional adder and random number generator known in prior art). That the patent uses terms like "generating device," "varying device," "permutating device," "check data," and "varied data" does not save it because those terms simply refer to generic computer structures and functions. See Capital One,
The dependent claims recite no additional features that capture an inventive concept. Claim 2 recites a device that is able "to modify the permutation in time." '662 patent at 8:5-6. Claim 3 recites a device that is able "to modify the permutation based on the original data." Id. at 8:8-9. The device in Claim 4 includes "a table in which subsequent permutations are stored." Id. at 8:11-12. KPN has not persuaded the Court how modifying the permutation based on time or the original data, or storing permutations in a table, go beyond conventional computer operations and qualify for eligibility under § 101.
The cases on which KPN primarily relies in urging the Court to reach a contrary conclusion are unavailing. (See D.I. 37 at 1, 6-8, 11-1 2) KPN contends that the Federal Circuit's Amdocs case is most analogous. (See Tr. at 92) But there, unlike here, the claims being challenged captured the inventive concept. In Amdocs,
Similarly, in MAZ Encryption,
In sum, evaluating the claims both individually and as an ordered combination, the Court finds that they recite no more than the routine steps of reordering data and generating data using generic components and conventional computer operations. While the '662 patent purports to have met a need the in prior art for "a method which allows data to be checked for errors in a better way, and thus considerably increases the probability of transmission errors being detected," '662 patent, 2:20-23, the claims recite no inventive step to achieve this stated goal. At bottom, even though the '662 patent may in its specification disclose a solution to a technological problem, its claims fail to claim one. See Alice,
V. CONCLUSION
For the reasons stated above, on the record before the Court, the claims of the '662 patentare directed to an abstract idea and are not directed to patent-eligible subject matter. Therefore, the Court will grant Defendants' motion. An order follows.
ORDER
At Wilmington, this 22nd day of March, 2018:
For the reasons set forth in the Memorandum Opinion issued this date,
IT IS HEREBY ORDERED that Defendants' motion for judgment on the pleadings (C.A. No. 17-82 D.I. 28; C.A. No. 17-84 D.I. 32; C.A. No. 17-85 D.I. 24; C.A. No. 17-86 D.I. 30; C.A. No. 17-90 D.I. 24; C.A. No. 17-91 D.I. 24; C.A. No. 17-92 D.I. 21) that
Unless otherwise noted, all references to the docket index (D.I.) are to C.A. No. 17-82.
The '662 patent is the only asserted patent against Gemalto (C.A. No. 17-86), Kyocera (C.A. No. 17-87), NEC (C.A. No. 17-88), Sierra (C.A. No. 17-90), TCL (C.A. No. 17-91), Telit (C.A. No. 17-92), and OnePlus (C.A. No. 17-89). It is one of five patents asserted against Blackberry (C.A. No. 17-82), HTC (C.A. No. 17-83), Lenovo (C.A. No. 17-84), and LG (C.A. No. 17-85).
KPN does not contend that the Court must conduct claim construction before making a decision on the § 101 issues. (Tr. at 66) KPN previously asserted the '662 patent against Samsung Electronics Co., Ltd. in a case filed December 30, 2014 in the Eastern District of Texas (C.A. No. 2-14-cv-01165-JRG). That court issued a claim construction opinion. (D.I. 29-1 Ex. D) KPN disputes that the previous court's constructions are the most favorable constructions available to it and reserves the right to propose different constructions as this case proceeds. (See D.I. 37 at 6) The Court finds that in the instant case claim construction is not a prerequisite for determining the patent's subject matter eligibility. See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (US.),
The Court has considered the other issues raised by the parties-including (i) whether the '662 patent claims survive the machine or transformation test (see D.I. 37 at 10); (ii) whether the claims can be performed in the human mind (see D.I. 29 at 12-13; D.I. 37 at 12-13); (iii) preemption concerns (see D.I. 29 at 16-17; D.I. 37 at 16; D.I. 45 at 8); and (iv) the relevancy of the Patent Trial and Appeal Board's decision not to institute inter partes review on some claims of the '662 patent (see D.I. 37 at 19; D.I. 45 at 10)-and has found none of them alters the outcome here. None warrants further discussion.
Reference
- Full Case Name
- 3G LICENSING, S.A., Koninklijke KPN N.V., and Orange S.A. v. BLACKBERRY LIMITED and Blackberry Corporation, 3G Licensing, S.A., Koninklijke KPN N.V., and Orange S.A. v. Lenovo Group Ltd., Lenovo Holding Co., Inc., Lenovo (United States) Inc. and Motorola Mobility LLC, 3G Licensing, S.A., Koninklijke KPN N.V., and Orange S.A. v. LG Electronics Inc., LG Electronics, U.S.A., Inc. and LG Electronics MobileComm U.S.A., Inc., Koninklijke KPN N.V. v. Gemalto IOT LLC, Gemalto M2M GMBH, and Gemalto Inc., Koninklijke KPN N.V. v. Sierra Wireless, Inc. and Sierra Wireless America, Inc., Koninklijke KPN N.V. v. TCL Communication, Inc., TCL Communication Technology Holding Limited, TCT Mobile, Inc., TCT Mobile (US) Inc., and TCT Mobile (US) Holdings, Inc., Koninklijke KPN N.V. v. Telit Wireless Solutions, Inc.
- Cited By
- 3 cases
- Status
- Published