United States District Court, D. Delaware
S.I.SV.EL. SOCIETA ITALIANA PER LO SVILUPPO 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 and Michael J. Guo, 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"), 7, 734, 680 (the "'680
patent") and 8, 321, 456 (the '"456
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 '456 patent only. For the reasons
set out below, the Court GRANTS Defendants' Motion as it
relates to that patent.
'456 patent is entitled "Generating Metadata for
Association with a Collection of Content Items[.]" (D.I.
1, ex. 4 (the "'456 patent")) The '456
patent has three independent claims (claims 1, 13 and 14) and
11 dependent claims. (Id., cols. 14:53-16:62) The
"Field of the Invention" section of the patent
states that the invention described therein relates to: (1)
"a method of automatically generating metadata for
association with a collection of content items accessible to
a system for processing data included in the content items[,
]" (id., col. 1:7-10); (2) "a system for
automatically generating metadata for association with a
collection of content items[, ]" (id., col.
1:11-13); and (3) "a computer program[J"
(id., col. 1:15).
of providing an example of how the disclosed invention can be
useful, the '456 patent begins by describing how it can
be beneficial in the context of visual image content
evaluation. The patent explains that at the time of the
invention, groups of visual images in a collection of such
images could be annotated in various ways. (Id.,
col. 1:26-27) This could be done by: (1) identifying an image
representation for each of the groups; (2) determining the
similarity of each of the image representations to each of
the other image representations; and (3) annotating the
groups of visual images based on the similarity of each image
representation to the other image representations.
(Id., col. 1:27-32) For example, the image
representation for one group could be an average of one or
more image characteristics for all visual images of the
group. (Id., col. 1:32-35)
'456 patent explains, however, that an existing problem
with such a method was that the average value of an image
characteristic "is often not meaningful."
(Id., col. 1:36-37) In particular, it notes that for
large groups of images, the average value of an image
characteristic will "tend to be the median value of the
range of possible values of the characteristic . . . mak[ing]
the annotation less suitable for browsing and searching
hierarchically organized visual images." (Id.,
col. 1:36-42) The invention then purports to provide a
"method, system and computer program . . . that are
suitable for generation, with a minimum of human
intervention, or none at all, of an efficient representation
of collections of content items for rapid location of such
collections by a system for processing the content
items." (Id., col. 1:46-52) The patent explains
that by "processing [a] selected attribute value(s) to
generate the metadata for association with the collection [of
content items], a more efficient representation is obtained,
compared, for example, to selection of a representative
content item or an exhaustive list of all the content
items' metadata." (Id., col. 2:4-8)
Court hereby incorporates by reference the summary of the
procedural background of this matter, which was set out in
its March 8, 2019 Memorandum Opinion ("March 8, 2019
MO"). (D.I. 25 at 4)
STANDARD OF REVIEW
Court also incorporates by reference the standard of review
applicable to summary judgment motions and the legal
standards relating to Section 101, which were also set out in
the March 8, 2019 MO. (Id. at 4-11)
resolving Defendants' Motion, the Court will first
discuss which claims will be specifically addressed herein.
Thereafter, it will analyze the relevant claims under both
steps of the test for patent eligibility set out in Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.Ct. 2347
Claims at Issue
Complaint, Plaintiff alleged infringement of "at least
claim 1 of the '456 patent[.]" (D.I. 1 at ¶ 97)
In their opening brief, Defendants addressed each of the
patent's 14 claims and moved that all of these claims be
found ineligible. (D.I. 11 at 29) Plaintiff, in its answering
brief, then made specific reference only to the content of
independent claim 1 and dependent claims 5 and 6, in
explaining why all of the patent's claims were patent
eligible. (D.I. 14 at 24- 28; see also D.I. 16 at
29) In light of this, the Court will address only these three
claims herein, understanding that Plaintiffs arguments for
eligibility as to all of the patent's claims rise and
fall on the arguments it made with regard to these particular