United States District Court, D. Delaware
Honorable Maryellen Noreika United States District Judge
Wilmington this 19th day of June 2019:
announced at the hearing on June 14, 2019, IT IS HEREBY
ORDERED that Defendant 18Birdies, LLC's
(“Defendant” or “18Birdies”) Motion
to Dismiss (D.I. 7) is GRANTED and Defendant's Motion to
Transfer (D.I. 14) is DENIED AS MOOT.
motion to dismiss was fully briefed as of February 15, 2019
(see D.I. 7, 8, 9, 13, 19, 20; see also
D.I. 23),  and the Court received further submissions
regarding which Supreme Court or Federal Circuit case each
party contends is analogous to the claims at issue in
Defendants' motion to dismiss (see D.I. 25, 26;
see also D.I. 24). The Court carefully reviewed all
submissions in connection with Defendant's motion to
dismiss, heard oral argument (see D.I. 28) and
applied the following legal standard in reaching its
Motion to Dismiss for Failure to State a Claim
ruling on a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6), the Court must accept all well-pleaded
factual allegations in the complaint as true and view them in
the light most favorable to the plaintiff. See Mayer v.
Belichick, 605 F.3d 223, 229 (3d Cir. 2010); see
also Phillips v. Cnty. of Allegheny, 515 F.3d 224,
232-33 (3d Cir. 2008). “[A] court need not
‘accept as true allegations that contradict matters
properly subject to judicial notice or by exhibit,' such
as the claims and the patent specification.”
Secured Mail Sols. LLC v. Universal Wilde, Inc., 873
F.3d 905, 913 (Fed. Cir. 2017) (quoting Anderson v.
Kimberly-Clark Corp., 570 Fed.Appx. 927, 931 (Fed. Cir.
2014)). Dismissal under Rule 12(b)(6) is only appropriate if
a complaint does not contain “sufficient factual
matter, accepted as true, to ‘state a claim to relief
that is plausible on its face.'” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007)); see
also Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d
Cir. 2009). “[P]atent eligibility can be determined at
the Rule 12(b)(6) stage . . . when there are no factual
allegations that, taken as true, prevent resolving the
eligibility question as a matter of law.” Aatrix
Software, Inc. v. Green Shades Software, Inc., 882 F.3d
1121, 1125 (Fed. Cir. 2018).
Patent-Eligible Subject Matter
101 of the Patent Act provides that anyone who “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. 35 U.S.C.
§ 101. The Supreme Court has long recognized three
exceptions to the broad categories of subject matter eligible
for patenting under § 101: laws of nature, physical
phenomena, and abstract ideas. Alice Corp. Pty. v. CLS
Bank Int'l, 573 U.S. 208, 134 S.Ct. 2347, 2354
(2014). These “are ‘the basic tools of scientific
and technological work' that lie beyond the domain of
patent protection.” Ass'n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 77-78 (2012)); see also
Alice, 134 S.Ct. at 2354. A claim to any one of these
three categories is directed to ineligible subject matter
under § 101. “[W]hether a claim recites patent
eligible subject matter is a question of law which may
contain underlying facts.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
follow 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, 134 S.Ct. at 2355;
see also Mayo, 566 U.S. at 77-78. First, at step
one, the Court determines whether the claims are directed to
one of the three patent-ineligible concepts. Alice,
134 S.Ct. at 2355. If the claims are not directed to a
patent-ineligible concept, “the claims satisfy §
101 and [the Court] need not proceed to the second
step.” Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018). If,
however, the Court finds that the claims at issue are
directed a patent-ineligible concept, the Court must then, at
step two, search 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.'” Alice, 134
S.Ct. at 2355 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
Step One of the Alice Framework
one of Alice, “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); see also Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016) (step one looks at the “focus of the claimed
advance over the prior art” to determine if the
claim's “character as a whole” is to
ineligible subject matter). In performing step one of
Alice, the Court should be careful not to
oversimplify the claims or the claimed invention because, at
some level, all inventions are based upon or touch on
abstract ideas, natural phenomena, or laws of nature.
Alice, 134 S.Ct. at 2354; see also McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016). “At step one, therefore, it is not enough
to merely identify a patent-ineligible concept underlying the
claim; [courts] must determine whether that patent-ineligible
concept is what the claim is ‘directed to.'”
Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827
F.3d 1042, 1050 (Fed. Cir. 2016).
Step Two of the Alice Framework
two of Alice, in searching for an inventive concept,
the Court looks at the claim elements and their combination
to determine if they transform the ineligible concept into
something “significantly more.” Alice,
134 S.Ct. at 2355; see also McRO, 837 F.3d at 1312.
This second step is satisfied when the claim elements
“involve more than performance of
‘well-understood, routine, [and] conventional
activities previously known to the industry.'”
Berkheimer, 881 F.3d at 1367 (citation and internal
quotation marks omitted); see also Mayo, 566 U.S. at
73. “The inventive concept inquiry requires more than
recognizing that each claim element, by itself, was known in
the art. . . . [A]n inventive concept can be found in the
non-conventional and non-generic arrangement of known,
conventional pieces.” Bascom Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed.
Cir. 2016). Whether claim elements or their combination are
well-understood, routine, or conventional to a person of
ordinary skill in the art is a question of fact.
Berkheimer, 881 F.3d at 1368.
steps of the Alice framework, courts often find it
useful “to compare the claims at issue with claims that
have been considered in the now considerably large body of
decisions applying § 101.” TMI Sols. LLC v.
Bath & Body Works Direct, Inc., C.A. No.
17-965-LPS-CJB, 2018 WL 4660370, at *5 (D. Del. Sept. 28,
2018) (citing Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d ...