United States District Court, D. Delaware
Stephen B. Brauerman, Sara E. Bussiere, BAYARD, P.A.,
H. Ostrow, Jeffrey P. Weingart, Antonio Papageorgiou, MEISTER
SEELIG & FEIN LLP, New York, New York Attorneys for Plaintiff
B. Blumenfeld, Karen Jacobs, MORRIS, NICHOLS, ARSHT & TUNNELL
LLP, Wilmington, Delaware
L. Keefe, Mark R. Weinstein, Benjamin G. Damstedt, COOLEY
LLP, Palo Alto, California Emily Terrell, COOLEY LLP,
Washington, D.C. Attorneys for Defendants
U.S. DISTRICT JUDGE
before the Court is Defendants' Facebook Inc.
("Facebook") and Instagram LLC's
("Instagram" and collectively with Facebook,
"Defendants") motion to dismiss for failure to
state a claim (the "Motion"), filed pursuant to
Federal Rule of Civil Procedure 12(b)(6). (D.I.
Defendants argue that Plaintiff Search and Social Media
Partners, LLC's ("SSMP" or "Plaintiff)
asserted United States Patents Nos. 8, 620, 828 (the
'"828 patent") and 8, 719, 176 (the
'"176 patent") (collectively, the
"asserted patents" or the
"patents-in-suit") are directed to
non-patent-eligible subject matter pursuant to 35 U.S.C.
§ 101 ("Section 101"). For the reasons that
follow, the Court will grant the Motion as to the asserted
claims of the '828 patent and deny it as to the asserted
claims of the '176 patent, without prejudice to
Defendants' ability to re-present the latter § 101
challenge at the summary judgment stage.
'828 patent, entitled "Social Networking System,
Method and Device," issued on December 31, 2013. (D.I. 1
Ex. A) The '176 patent, entitled "Social News
Gathering, Prioritizing, Tagging, Searching and
Syndication," issued on May 6, 2014. (Id. Ex.
B) The '878 patent is a continuation application of the
'176 patent, and the patents therefore share a
specification. (See D.I. 15 at 3 n.7) Both patents
claim priority to application No. 60/486, 630, filed on July
Abstract of the '828 patent explains that its claims
recite "[a] social networking system, method and device
[that] provides a social network environment in which one
user subscribes to a newsfeed or ticker related to another
user." ('828 patent at Abstract) The Abstract of the
'176 patent explains that the claims are directed to
"[a] search method [that] allows user-definition of
search algorithms and includes a ranking method that assigns
relevancy scores to documents by polling users[, ] [a]
user-generated news service [that] allows users to syndicate
news[, and] [a] user-generated resource [that] allows users
to create, approve and disapprove of submissions."
(' 176 patent at Abstract)
Rule 12(b)(6) Motion to Dismiss
a motion to dismiss under Federal Rule of Civil Procedure
12(b)(6) requires the Court to accept as true all material
allegations of the complaint. See Spruill v. Gillis,
372 F.3d 218, 223 (3d Cir. 2004). "The issue is not
whether a plaintiff will ultimately prevail but whether the
claimant is entitled to offer evidence to support the
claims." In re Burlington Coat Factory Sec.
Litig., 114 F.3d 1410, 1420 (3d Cir. 1997) (internal
quotation marks omitted). Thus, the Court may grant such a
motion to dismiss only if, after "accepting all
well-pleaded allegations in the complaint as true, and
viewing them in the light most favorable to plaintiff,
plaintiff is not entitled to relief" Maio v. Aetna,
Inc., 221 F.3d 472, 481-82 (3d Cir. 2000) (internal
quotation marks omitted).
well-pleaded complaint must contain more than mere labels and
conclusions. See Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S.
544, 555 (2007). A plaintiff must plead facts sufficient to
show that a claim has substantive plausibility. See
Johnson v. City of Shelby, 135 S.Ct. 346, 347 (2014). A
complaint may not be dismissed, however, for imperfect
statements of the legal theory supporting the claim asserted.
See Id. at 346.
survive a motion to dismiss, a civil plaintiff must allege
facts that 'raise a right to relief above the speculative
level on the assumption that the allegations in the complaint
are true (even if doubtful in fact).'" Victaulic
Co. v. Tieman, 499 F.3d 227, 234 (3d Cir. 2007) (quoting
Twombly, 550 U.S. at 555). A claim is facially
plausible "when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged."
Iqbal, 556 U.S. at 678. At bottom, "[t]he
complaint must state enough facts to raise a reasonable
expectation that discovery will reveal evidence of [each]
necessary element" of a plaintiffs claim. Wilkerson
v. New Media Tech. Charter Sch. Inc., 522 F.3d 315, 321
(3d Cir. 2008) (internal quotation marks omitted).
Court is not obligated to accept as true "bald
assertions," Morse v. Lower Merion Sch. Dist.,
132 F.3d 902, 906 (3d Cir. 1997) (internal quotation marks
omitted), "unsupported conclusions and unwarranted
inferences," Schuylkill Energy Res., Inc. v. Pa.
Power & Light Co., 113 F.3d 405, 417 (3d Cir. 1997), or
allegations that are "self-evidently false,"
Nami v. Fauver, 82 F.3d 63, 69 (3d Cir. 1996).
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. Cir. 2018).
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
Int'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)
("Affinity Labs F) (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").
conducting the step one analysis, courts should not
"oversimplif[y]" key inventive concepts or
"downplay" an invention's benefits. 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)).
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." McRo, 837 F.3d 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 omitted; emphasis in original).
"[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.
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 Solutions, LLC
v. Coca-Cola Co., 723 Fed.Appx. 989, 995 (Fed. Cir.
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).
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; see also Exergen Corp. v. Kaz USA,
Inc., 725 Fed.Appx. 959, 965 (Fed. Cir. 2018)
("Something is not well-understood, routine, and
conventional merely because it is disclosed in a prior art
reference. There are many obscure references that nonetheless
qualify as prior art.").
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., 838 F.3d 1266, 1271 (Fed. Cir. 2016)
("Affinity Labs IF) ("[N]either the claim
nor the specification reveals any concrete way of employing a
customized user interface."). Still, it is not enough
just to disclose the improvement in the specification;
instead, the Court's task becomes to "analyze the
asserted claims and determine whether they
capture these improvements."
Berkheimer, 881 F.3d at 1369 (emphasis added). In other
words, "[t]o save a patent at step two, an inventive
concept must be evident in the
claims.'" RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (emphasis
added); see also Alice, 134 S.Ct. at 2357
("[W]e must examine the elements of the
claim to determine whether it contains an
'inventive concept.'") (emphasis added);
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1149 (Fed. Cir. 2016) ("The § 101 inquiry
must focus on the language of the Asserted Claims
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. SeeAmdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
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, 881 F.3d at 1368 ("Whether a claim
recites patent eligible subject matter is a question of law
which may contain disputes over underlying facts. Patent
eligibility has in many cases been resolved on
motions to dismiss or summary judgment. Nothing in this
decision should be viewed as casting doubt on the propriety
of those cases. When there is no genuine issue
of material fact regarding whether the claim element or
claimed combination is well-understood, routine, conventional
to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law.")
(emphasis added); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1351-52 (Fed. Cir. 2014) (affirming grant of Rule
12(c) motion for judgment on pleadings for lack of patentable
subject matter); Intellectual Ventures ILLC v. Symantec
Corp., 725 Fed.Appx. 976, 978 n. 1 (Fed. Cir. 2018)
(affirming grant of summary judgment of patent ineligibility
and stating Berkheimer "does not compel a
Plaintiff asserts that Facebook directly and indirectly
infringes claims 11-14 and 18-20 of the '828 patent.
(D.I. 1 at ¶¶ 37, 38, 44-45) Claims 11 and 18 are
independent claims, and they are reproduced below:
system for use in a social network environment comprising:
a first computer system communicatively coupled to a first
computer network, said first computer system comprising a
data processor and a memory and being configured for at least
partly providing a first social network environment, the
first social network environment having a multitude of
different social groups;
an account component configured for storing a first user
account in said memory and storing a second user account,
said second user account being different from said first user
a subscription component for establishing a first
subscription in which said second user account is subscribed
to said first user account;
a real-time news ticker component configured for providing,
per said first subscription, a plurality of real-time news
items pertaining to said first user account when said second
user account is in use; and wherein:
said first social network environment comprises a first
social group that is one of said multitude of different
social groups, said first social group being selected from
the group consisting of:
(i) a group pertaining to a first academic institution;
(ii) a group pertaining to a first religious ...