United States District Court, D. Delaware
Stamatios Stamoulis, Richard C Weinblatt, Sheekhar Vyas,
STAMOULIS & WEINBLATT LLC, Wilmington, DE James T.
Bailey, Gregory Pollaro, LAW OFFICES OF JAMES T. BAILEY, New
York, NY Attorneys for Plaintiff
Jacobs, Megan E. Dellinger, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, DE Alan M. Fisch, R. William Sigler,
Jeffrey Saltman, Joseph Edell, FISCH SIGLER LLP, Washington,
DC Attorneys for Defendants
U.S. District Judge
before the Court are: (I) Defendants Amazon.com, Inc. and
Amazon Web Services, Inc.'s (collectively,
"Amazon" or "Defendants") motion for
summary judgment of invalidity under 35 U.S.C. § 101
(D.I. 124); and (ii) Plaintiff Kaavo Inc.'s
("Kaavo" or "Plaintiff) motion for
reconsideration of the Court's March 31, 2016 Order in
light of subsequently-issued authority (D.I.
131). For the reasons stated below, the Court
will grant Defendants' motion and deny Plaintiffs motion.
sued Defendants for infringement of United States Patent No.
8, 271, 974 (the '"974 patent"), which is
entitled "Cloud Computing Lifecycle Management for
N-tier Applications." In related cases. Magistrate Judge
Burke issued a report and recommendation that the asserted
independent claims, as well as dependent claim 12, be found
patent ineligible under. § 101. (CA. No. 14-1192 D.L 35;
C.A. No. 14-1193 D.I. 42) ("R&R") Over
Plaintiffs objection (C.A. No. 14-1192 D.I. 39; C.A. No.
14-1193 D.I. 46), the Court adopted the R&R in full (C.A.
No. 14-1192 D.I. 44; C.A. No. 14-1193 D.L 52). Later,
Magistrate Judge Burke ordered limited discovery as well as
claim construction and summary judgment briefing, with
respect to the eligibility of the remaining dependent claims,
and conducted a hearing on these issues. (See D.I.
116) Thereafter, the Court denied without prejudice
Defendants' summary judgment motion and Plaintiffs
request to re-file a Rule 60 motion for reconsideration of
the Court's ruling on the independent claims, instead
ordering new briefing to allow the parties - and the Court -
to consider anew all § 101 issues in light of the
manifold decisions issued by the Federal Circuit with respect
to patent eligibility since this Court's earlier opinion
issued in March 2016. (See D.I. 118, 121)
parties completed briefing (see D.I. 126, 132, 136)
and submitted expert declarations (see D.L 127, 133,
137). On March 12, 2018. the Court held a combined hearing on
the motions and claim construction. (See D.I. 140
'974 patent generally relates to "methods, devices,
and systems [in] the fields of computers, information
technology, virtualization, and cloud computing, " and,
more particularly, the "management of a cloud computing
environment for use by a software application." '974
patent, col. 1 ll. 6-11. The application may include software
"(e.g. a web portal with email functionality, database
programs, word processing programs, accounting programs,
inventory management programs, numerical analysis programs),
" or services "(e.g.. an autonomous unit that is
responsible for a transformation, storage and/or retrieval of
data, such as a database management service or a database API
service)." Id. col. 1 ll. 46-55.
patent explains that "[c]loud computing may be used to
leverage virtualization of the resources of, for example,
datacenters." Id. col. 1 ll.21-22. According to
the patent, "[v]irtualization technology facilitates the
operation of multiple virtual servers within a single
physical server system, such that each virtual sever may
operate within its own unique system environment (e.g.,
operating system, applications)." Id. col. 1
ll. 12-15. "Cloud providers, which may operate resources
such as datacenters and/or other information
technology-related capabilities, may facilitate the use of
such resources by providing users (which may be remote to the
cloud provider) with access to their resources."
Id. col. 1 ll. 22-26. The patent refers to these
"potentially accessible resources" collectively as
a "cloud computing environment" or a "cloud
environment." Id. col. 1 ll. 27-29.
cloud computing environment "may be an N-tier
environment." Id. Abstract; Fig. 8. The patent
describes the N-tier computing environment as "having
any number of tiers (e.g., logical groupings of components
directed to a general type of functionality)" that is
made available to the application by the cloud environment.
Id. col. 5 ll. 22-30; see also Id. col. 5
ll. (noting that "application cloud environment
configuration ... may include an environment containing ...
20 or more tiers"). The patent lists some examples of
tiers such as "a presentation tier, an application tier
(e.g., a logic or business logic tier), and a database
tier." Id. col. 5 ll. 34-35.
patent explains that "[e]ach individual cloud
configuration may contribute all, a portion, or none of each
individual tier of the N-tier configuration of application
cloud environment configuration." Id. col. 6
ll. 3-5; see also Id. col. 6 ll. 6-10 ("[A]n
embodiment of application cloud environment configuration 110
may include application tier that contains servers (e.g.,
virtual servers, physical servers) from cloud configurations
111 and 112, and a database tier that contains servers from
cloud configurations 112-115."). The patent also
describes "various modules of an embodiment of an N-tier
configuration Hfecycle management engine for managing a cloud
computing environment for use by a software
application." Id. col. 13 ll. 57-60; see
also Id. col. 13 I. 64-col. 16 1. 39 (listing examples
of several modules).
Rule 56(a) of the Federal Rules of Civil Procedure,
"[t]he court shall grant summary judgment if the movant
shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law, " The moving party bears the burden of
demonstrating the absence of a genuine issue of material
fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith
Radio Corp., 475 U.S. 574, 585-86 (1986). An assertion
that a fact cannot be - or, alternatively, is - genuinely
disputed must be supported either by "citing to
particular parts of materials in the record, including
depositions, documents, electronically stored information,
affidavits or declarations, stipulations (including those
made for purposes of the motion only), admissions,
interrogatory answers, or other materials, " or by
"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)(A) & (B). If the moving
party has carried its burden, the nonmovant must then
"come forward with specific facts showing that there is
a genuine issue for trial." Matsushita, 475
U.S. at 587 (internal quotation marks omitted). The Court
will "draw all reasonable inferences in favor of the
nonmoving party, and it may not make credibility
determinations or weigh the evidence." Reeves v.
Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150
defeat a motion for summary judgment, the nonmoving party
must "do more than simply show that there is some
metaphysical doubt as to the material facts."
Matsushita, 475 U.S. at 586; see also Podobnik
v. U.S. Postal Sen'., 409 F.3d 584, 594 (3d Cir.
2005) (stating party opposing summary judgment "must
present more than just bare assertions, conclusory
allegations or suspicions to show the existence of a genuine
issue") (internal quotation marks omitted). The
"mere existence of some alleged factual dispute between
the parties will not defeat an otherwise properly supported
motion for summary judgment;" a factual dispute is
genuine only where “the evidence is such that a
reasonable jury could return a verdict for the nonmoving
party." Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 247-48 (1986). "If the evidence is merely
colorable, or is not significantly probative, summary
judgment may be granted." Id. at 249-50
(internal citations omitted); see also Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986) (stating entry of
summary judgment is mandated "against a party who fails
to make a showing sufficient to establish the existence of an
element essential to that party's case, and on which that
party will bear the burden of proof at trial"). Thus,
the "mere existence of a scintilla of evidence" in
support of the nonmoving party's position is insufficient
to defeat a motion for summary judgment; there must be
"evidence on which the jury could reasonably find"
for the nonmoving party. Anderson, 477 U.S. at 252.
Section 101: Patentable Subject Matter
35 U.S.C. § 101, "[w]hoever 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." There are
three exceptions to § 101 's broad
patent-eligibility principles: "laws of nature, physical
phenomena, and abstract ideas." Diamond v.
Chakrabarty, 447 U.S. 303, 309 (1980). "Whether a
claim recites patent eligible subject matter is a question of
law which may contain disputes over underlying facts."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed.
Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 132 S.Ct. 1289 (2012), the Supreme Court set out a
two-step "framework 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
lnt'l, 134 S.Ct. 2347, 2355 (2014). First, courts
must determine if the claims at issue are directed to a
patent-ineligible concept ("step one"). See
Id. If so, the next step is to look 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 ("step
two"). Id., The two steps are "plainly
related" and "involve overlapping scrutiny of the
content of the claims." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
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., 790 F.3d 1343,
1346 (Fed. Cir. 2015) (emphasis added); see also Affinity
Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016) (stating first step "calls upon us to
look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter").
should not "oversimplif[y]" key inventive concepts
or "downplay" an invention's benefits in
conducting a step one analysis. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337-38 (Fed. Cir.
2016); see also McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1313 (Fed. Cir, 2016)
("[C]ourts 'must be careful to avoid oversimplifying
the claims' by looking at them generally and failing to
account for the specific requirements of the claims.")
(quoting In re TLI Commc'ns LLC Patent Litig.,
823 F.3d 607, 611 (Fed. Cir. 2016)). "Whether at step
one or step two of the Alice test, in determining
the patentability of a method, a court must look to the
claims as an ordered combination, without ignoring the
requirements of the individual steps." McRO,
837 F.3d at 1313.
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 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. at 1312 (internal brackets and
quotation marks omitted). The "standard" step two
inquiry includes consideration of whether claim elements
"simply recite 'well-understood, routine,
conventional activities].'" Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016) (quoting Alice, 134
S.Ct. at 2359). "Simply appending conventional steps,
specified at a high level of generality, [is] not
enough to supply an inventive concept."
Alice, 134 S.Ct. at 2357 (internal quotation marks
"[t]he inventive concept inquiry requires more than
recognizing that each claim element, by itself, was known in
the art." Bascom, 827 F.3d at 1350. In
Bascom, the Federal Circuit held that "the
limitations of the claims, taken individually, recite generic
computer, network and Internet components, none of which is
inventive by itself, " but nonetheless determined that
an ordered combination of these limitations was
patent-eligible under step two. Id. at 1349. The
Federal Circuit has looked to the claims as well as the
specification in performing the "inventive concept"
inquiry. See Affinity Labs of Texas, LLC v. Amazon.com
Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016)
("[N]either the claim nor the specification reveals any
concrete way of employing a customized user
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, 881
F.3d at 1368; see also Aatrix Software, Inc. v. Green
Shades Software, Inc.,882 F.3d 1121, 1128 (Fed. Cir.
2018) ("While the ultimate determination of eligibility
under § 101 is a question of law, like many legal
questions, there can be subsidiary fact questions which must
be resolved en route to the ultimate legal
determination."); Automated Tracking Sols., LLC v.
Coca-Cola Co.,732 Fed.Appx. 989, 2018 WL 935455, at *5
(Fed. Cir. Feb. 16, 2018) ("We have held that
'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.'") (quoting Berkheimer, 881 F.3d at
1368). "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, 881 F.3d at 1369.
Still, "[w]hen there is no genuine issue of material
fact regarding whether the claim element or claimed
combination is well-understood, routine, [and] conventional