United States District Court, D. Delaware
S.I.SV.EL. SOCIETA ITALIANA PER LO S VILUPPO DELL' ELETTRONICA S.P.A, Plaintiff,
RHAPSODY INTERNATIONAL INC., Defendant. S.I.SV.EL. SOCIETA ITALIANA PER LO SVILUPPO DELL' ELETTRONICA S.P.A, Plaintiff,
SPOTIFY USA INC., Defendant.
Timothy Devlin, DEVLIN LAW FIRM LLC, Wilmington, DE, Attorney
E. Moore, Bindu A. Palapura and Stephanie E. O'Byrne,
POTTER ANDERSON & CORROON LLP, Wilmington, DE; Patrick
Bageant, HOLLYSTONE LAW, Boise, ID, Attorneys for Defendant
Rhapsody International Inc.
E. Moore, Bindu A. Palapura and Stephanie E. O'Byrne,
POTTER ANDERSON & CORROON LLP, Wilmington, DE; Stefani E.
Shanberg, MORRISON & FOERSTER LLP, San Francisco, CA,
Attorneys for Defendant Spotify USA Inc.
UNITED STATES MAGISTRATE JUDGE
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)Defendants argue that Plaintiff S.I.SV.EL.
Societa Italiana per lo Sviluppo Dell'Elettronica
S.p.A's ("Plaintiff') asserted United States
Patent Nos. 7, 412, 202 (the "'202 patent"), 8,
490, 123 (the '"123 patent"), 7, 035, 863 (the
"'863 patent"), 8, 321, 456 (the "'456
patent"), and 7, 734, 680 (the '"680
patent") (collectively, the "asserted patents"
or the "patents-in-suit") are directed to
non-patent-eligible subject matter pursuant to Section 101.
(D.I. 11) This Memorandum Opinion will address the Motion as
it relates to the '202 patent only. For the reasons
set out below, the Court GRANTS Defendants' Motion as it
relates to that patent.
'202 patent is entitled "Method and Apparatus for
Generating Recommendations based on User Preferences and
Environmental Characteristics." (D.I. 1, ex. 1 (the
'"202 patent")) The technology described in the
'202 patent "relates to recommendation systems, such
as recommenders for audio programming, television programming
or other content, and more particularly, to a method and
apparatus for generating recommendations based on
environmental characteristics, such as  geographic
location, characteristics of the location or the
weather." ('202 patent, col. 1:8-13; see also
id., Abstract (noting that, in general, the patent
discloses "[a] recommendation system ... that generates
recommendations for one or more items based on user
preferences and one or more environmental factors"))
The '202 patent contains 35 claims, of which six (claims
1, 7, 15, 23, 26 and 31) are independent claims.
(Id., cols. 5:56-8:54)
of setting out the need for the asserted invention at issue,
the '202 patent explains that at the time, users of
electronic devices (like portable radios) could receive a
transmitted audio signal from a given radio station at an
assigned frequency within a certain radius of the
station's antenna. (Id., col. 1:17-23) "As
the user moves away from the transmitting antenna, however,
the received signal gradually degrades until the user
eventually must select a new radio station."
(Id., col. 1:23-26) The patent notes that in such a
scenario, if the user was in an unfamiliar radio market, or
if there were a large number of frequencies to choose from,
this might make it challenging for the user to select a new
station. (Id., col. 1:26-32) It then explains that,
at the time, there were systems that provided a solution to
this problem-systems that could identify a "program
type" field associated with each radio station, such
that a user could select a new radio station based on the
user's preferred program type. (Id., col.
1:34-42) This type of "program type code" could be
used to "enable suitable receivers and recorders to be
pre-set to respond only to programs of the desired
type." (Id., col. 1:42-44)
the '202 patent explains that these prior art systems
also had some limitations. That is, they did not account for
"the current location of the user or other environmental
factors." (Id., col. 1:48-49) "For
example, in a given geographic area, the user may have a
preferred radio station having a program type that is
distinct from the user's program type preferences in his
or her home area." (Id., col. 1:49-52)
According to the patent, a need thus existed for: (1) "a
method and apparatus for making recommendations based on the
preferences of the user and environmental characteristics,
such as location, characteristics of the location or
weather[;]" (2) "a method and apparatus for
lea[rn]ing a user[']s preferences under various
environmental characteristics[;]" and (3) a "method
and apparatus for selecting an alternate radio station or
another item based on the user[']s demonstrated
preferences under similar environmental characteristics, such
as in the same or a similar geographic area."
(Id., col. 1:53-62) The '202 patent, as is
further described below, purports to have addressed these
needs. (Id., cols. 1:65-2:20)
January 8, 2018, Plaintiff filed its Complaint. (D.I. 1) On
March 22, 2018, Defendants filed the instant Motion. (D.I. 9)
The parties thereafter jointly consented to the Court's
jurisdiction to conduct all proceedings and to enter a final
order as to the Motion. (D.I. 10)
parties completed briefing on the instant Motion on June 19,
2018. (D.I. 20) Defendants requested oral argument on the
pending Motion, (D.I. 22), and the Court held argument on
November 7, 2018, (D.I. 23 (hereinafter "Tr.")).
STANDARD OF REVIEW
Standard of Review Regarding a Rule 56 Motion
of summary judgment is appropriate where "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." Fed.R.Civ.P. 56(a). The moving party bears the
burden of demonstrating the absence of a genuine issue of
material fact. See Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 585 n.10 (1986). If the
moving party has sufficiently demonstrated the absence of
such a dispute, the nonmovant must then "come forward
with specific facts showing that there is a genuine issue for
trial." Id. at 587 (internal quotation marks,
citation and emphasis omitted). If the nonmoving party fails
to make a sufficient showing in this regard, then the moving
party is entitled to judgment as a matter of law. Celotex
Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). During
this process, 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 (2000).
in order to 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 Elec. Indus. Co., 475 U.S.
at 586-87. The "mere existence of some alleged
factual dispute between the parties will not defeat an
otherwise properly supported motion for summary judgment; the
requirement is that there be no genuine issue of
material fact." Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 247-48 (1986) (emphasis in
original). Facts that could alter the outcome are
"material," and a factual dispute is
"genuine," only where "the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party." Id. at 248. "If the
evidence is merely colorable ... or is not significantly
probative ... summary judgment may be granted."
Id. at 249-50 (internal citations omitted).
asserting that a fact cannot be-or, alternatively,
is-genuinely disputed must support the assertion 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) &
Legal Standards Relating to Patentable Subject
subject matter is defined in the Patent Act as follows:
Whoever 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.
35 U.S.C. § 101. While the scope of Section 101 is
broad, there is an "important implicit exception [to
it]: [l]aws of nature, natural phenomena, and abstract ideas
are not patentable." Alice Corp. Pty. Ltd. v. CLS
Bank Int'l, 134 S.Ct. 2347, 2354 (2014) (internal
quotation marks and citation omitted).
Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134
S.Ct. 2347 (2014), the Supreme Court of the United States
provided the two-step framework for assessing whether a
patent contains eligible subject matter under Section 101.
The Court briefly discusses both of these steps below.
to step one, courts "must... determine whether the
claims at issue are directed to a patent-ineligible concept[,
]" such as an abstract idea. Alice, 134 S.Ct.
at 2355. Here the claims are considered in their entirety to
ascertain not simply whether they involve a
patent-ineligible concept, but whether "'their
character as a whole is directed to [an abstract
idea.]'" Enfish, LLC v. Microsoft Corp.,822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc.,790 F.3d 1343,
1346 (Fed. Cir. 2015)). "The abstract ideas category
embodies the ...