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S.A. v. HTC Corp.
United States District Court, D. Delaware
July 5, 2019
3G LICENSING, S.A., KONINKLIJKE KPN N.V., and ORANGE S.A., Plaintiffs,
HTC CORPORATION and HTC AMERICA INC., Defendants. 3G LICENSING, S.A., KONINKLIJKE KPN N.V., and ORANGE S.A., Plaintiffs,
LENOVO GROUP LTD., LENOVO HOLDING CO., INC., LENOVO UNITED STATES INC., and MOTOROLA MOBILITY, LLC, Defendants. 3G LICENSING, S.A., KONINKLIJKE KPN N.V., and ORANGE S.A., Plaintiffs,
LG ELECTRONICS INC., LG ELECTRONICS U.S.A, INC. and LG ELECTRONICS MOBILECOMM U.S.A., INC., Defendants. ALIGN TECHNOLOGY, INC., Plaintiff,
3SHAPE A/S and 3SHAPE INC., Defendants. ALIGN TECHNOLOGY, INC., Plaintiff,
3SHAPE A/S and 3SHAPE INC., Defendants. ALIGN TECHNOLOGY, INC., Plaintiff,
3SHAPE A/S, 3SHAPE TRIOS A/S, and 3SHAPE INC., Defendants. DIGI PORTAL, LLC, Plaintiff,
QUOTIENT TECHNOLOGY INC., Defendant.
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE.
Wilmington this 5th day of July,
Court having heard oral argument in all of the above-listed
cases on June 18, 2019,  IT IS HEREBY ORDERED
Quotient Technology, Inc.'s motion to dismiss (C.A. No.
18-1485 D.I. 11) is DENIED.
Align Technology, Inc.'s motions to strike (C.A. No.
17-1646 D.I. 105; C.A. No. 17-1647, D.I. 91) are
3Shape A/S et al.'s motions to dismiss (C.A. No. 17-1646
D.I. 102; C.A. No. 17-1647 D.I. 88) are
3Shape A/S et al.'s motion to dismiss (C.A. No. 18-1949
D.I. 11) remains pending, although the Court announced it
will deny the motion at least with respect to Count I
(relating to the '420 Patent).
Defendants HTC Corp., Lenovo Group Ltd., and LG Electronics
Inc.'s motions for judgment on the pleadings (C.A. 17-83
D.I. 270; C.A. 17-84 D.I. 247; C.A. 17-85 D.I. 243) are
Google, LLC's motion to dismiss (C.A. No. 18-1587 D.I. 7)
is DENIED IN PART (with
respect to the '073, '027, '729 and '691
Patents) and GRANTED IN PART (with respect
to the '708 Patent).
Location Based Services LLC's motion to amend its
complaint (C.A. No. 18-1587 D.I. 38) is
the foregoing motions were argued at the June 18 hearing and
the rulings provided above were all announced from the bench
at the conclusion of the hearing, as follows:
. . . As you will imagine, because there were so many motions
[argued], I do have quite a bit to say, so here we go with
First, in terms of the legal standards, I don't think
anything was in dispute, but for purposes of the record I am
adopting incorporating by reference my September 2018
decision in the Align cases, the 17-1646 and
17-1647. So what I think of the Rule 12(b)(6)
standard and Section 101 law is set out there; and I'm
not going to read it into the record but I do hereby adopt it
by reference. Let me discuss the cases that were argued today
in the order they were argued.
First was the Digi Portal case. That was the
first case argued this morning. In the Digi Portal
case, the defendant Quotient Technology moved to dismiss the
complaint under Rule 12(b)(6) on the basis of Section 101.
Applying the law as I understand it, and having carefully
reviewed the entire record and heard oral argument -- and I
should just sa[y] I have carefully reviewed the entire record
in all these cases and, of course, heard oral argument in all
these cases so I may not repeat that, but we did go through
that very same process for all the cases -- but having done
so in the Digi Portal case, I find that the defendant has not
shown that the '854 patent claims ineligible subject matter
so I am denying defendant's motion in the Digi Portal
Quotient argues that claim 1 is representative. Because, as I
will explain, I find that Quotient has failed to meet its
burden to show that claim 1 is not patent eligible and
because Quotient's position is that claim 1 is
representative of all asserted claims, I need only analyze
claim 1. There is no basis to find any other claim directed
to non-patentable subject matter given my findings with
respect to claim 1's patentability.
At Step 1 of Alice,  I find that defendant
oversimplified the abstract idea. The claim is directed to
more than just providing targeted information, including
advertising to a user.
Claim 1 recites a new way of generating customized web pages
to improve the efficiency and scaleability of delivering
them. The patent specification further explains that this
implementation is intend[ed] to resolve technological
problems in the prior art, including long wait times to load
pages in browsers and clog[ged] networks due to continuous
streaming and large amounts of local storage that quickly
becomes out of date.
While it may be possible that claim 1 could be accurately
characterized as directed to some abstract idea, all I need
to decide today is that the claim is not directed to the
abstract idea articulated by defendant.
Defendant's characterization of the claim is not correct.
My denial of defendant's motion is without prejudice, so
depending on how the record develops, defendant may have
another opportunity to try to meet its burden at Step 1.
Turning to Step 2, defendant has failed to show by clear and
convincing evidence that claim 1 lacks an inventive concept.
To the contrary, based on the record as it currently exists
and taking all well pled facts as true, the claim at least
captures the inventive concept of storing the template
program in at least two locations and . . . determining from
which locations to retrieve the template based on the
frequency of the user request for the customized page. These
inventive concepts are stated with specificity in the second
element of the claimed method. At least one exemplary
embodiment is discussed in the specification at Columns 4 to
5 in reference to Figures 2 and 4.
While it is true that “merely adding computer
functionality to increase the speed or efficiency of a
process does not confer patent eligibility, ” and that
is a quote from the Federal Circuit's decision at
Intellectual Ventures v Capital One Bank, 792 F.3d
at page 1369,  while that is true, the Court is not
persuaded that this is what is going on here. Rather, the
invention is changing the computer functionality to improve
the efficiency of the technological process that was already
using a computer. While defendant points to another patent in
the prior art, the '430 patent,  purportedly to demonstrate
that retrieving customized pages from a cache is
conventional, . . . defendant's argument only raises a
potential factual dispute that I am unable to resolve at this
That was all I had to say on the Digi Portal case
where, again, the motion is denied. I will now turn to the
Align v 3Shape cases. First, the 17 cases,
17-1647 and 17-1646.
The defendants here, 3Shape A/S, 3Shape Inc., and 3Shape
TRIOS who I may collectively refer to as “3Shape,
” have moved to dismiss the complaint filed by Align
Technology Inc., “Align” for failure to state a
claim under Rule 12(b)(6) on the basis of Section 101.
Before I can address the motions to dismiss, I must address
Align's motion to strike the 12(b)(6) motion based on
Align argues that two of the three defendants previously
filed a 12(b)(6) motion to dismiss the original complaint and
to invalidate all the claims on the basis of Section 101 only
to abandon that broad position and voluntarily agree to limit
their challenge only to claim 1 of each patent.
The Court in its September 7th decision invalidated claim
1 of both patents under Section 101. However, Align
thereafter filed an amended complaint accusing for the first
time the third defendant, 3Shape TRIOS of infringement.
I have decided to deny the motion to strike. The new
defendant, 3Shape TRIOS is entitled to file its own Rule 12
motion in each case. The pending motions are 3Shape
TRIOS's first opportunity to file Rule 12 motions. Align
has not cited any authority for its contention that a new
defendant[, ] even one related to or associated with an
original defendant[, ] is somehow bound to the earlier
motions practice to which it was not a party and therefore
should be precluded from filing its own motion.
Now, I don't expect and I certainly don't intend to
invite serial Rule 12 motions. That would be improper and a
violation of the rules. It would also be highly disrespectful
of the Court's overstressed and limited judicial
resources. Here, however, for whatever reason, the plaintiff
voluntarily chose to file an amended complaint against a new
defendant. That triggered a right in the new defendant to
file a Rule 12 motion. In other words, Align opened the door
to these new motions and the Court is not going to deprive
the new defendant of its opportunity under Rule 12 to move to
Turning to the merits of the motions to dismiss. First, in
the 17-1646 motion, the motion is granted with respect to the
For Step 1, Align states that claim 7 is representative but
does not say how claim 7 is distinguishable from the already
invalid claim 1. In the Court's view, claims 1 and 7 are
nearly identical in substance. There are some nondispositive
differences to the preamble. Thus, for the reasons stated in
the Court's September 7th decision which again I will
incorporate hereby by reference, I find that all of the
asserted claims of the '065 patent are directed to the
abstract concept of modifying a finish line of a dental
While Align argues that the '065 patent teaches a
specific method for updating a finish line using newly
acquired second finish line data, the claim is not specific
about that process. It does not, for instance, provide a
particular method for automatically generating a finishing
line or a specific process for incorporating a technician or
a dentist['s] manual adjustments. Rather, claim 7 is
directed at a general computerized process that previously
had been done manually, creating a first finishing line that
may be manually modified. The use of a computer is
distinguishable from the manual process only insofar as the
computer reduces the back and forth between technicians or
dentists when adjusting the ...