United States District Court, D. Delaware
E. Moore, Bindu A. Palapura, and Stephanie E. O'Byrne,
POTTER ANDERSON & CORROON LLP, Wilmington, DE; Steven
Yovits and Mark Scott, KELLEY DRYE & WARREN LLP, Chicago,
IL; and Clifford Katz and Malavika Rao, KELLEY DRYE &
WARREN LLP, New York, NY, attorneys for Plaintiff.
E. Farnan, RICHARDS, LAYTON & FINGER, PA., Wilmington,
DE; Sten Jensen, ORRICK HERRINGTON & SUTCLIFFE LLP,
Washington, D.C.; Clement Seth Roberts, ORRICK HERRINGTON
& SUTCLIFFE LLP, San Francisco, CA; and Alyssa Caridis,
ORRICK HERRINGTON & SUTCLIFFE LLP, Los Angeles, CA,
attorneys for Defendant.
ANDREWS, UNITED STATES DISTRICT JUDGE.
me is the Report & Recommendation ("Report") of
a United States Magistrate Judge. (D.I. 22). It addresses
Defendant's Motion to Dismiss for Failure to State a
Claim under Rule 12(b)(6). (D.I. 10). Defendant filed
objections to the Report. (D.I. 23). Plaintiff responded to
Defendant's objections. (D.I. 24). The Magistrate
Judge's Report is comprehensive, and I will adopt the
factual findings and legal conclusions in the Report. I do
not separately recite any of them except as I think necessary
to explain my decision.
Judges have the authority to make recommendations as to the
appropriate resolution of a motion to dismiss pursuant to 28
U.S.C. § 636(b)(1)(B). In the event of an objection,
this Court reviews the objected-to determinations de
reviewing a motion to dismiss pursuant to Federal Rule of
Civil Procedure 12(b)(6), the Court must accept the
complaint's factual allegations as true. See Bell
Ail. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007). Rule
8(a) requires "a short and plain statement of the claim
showing that the pleader is entitled to relief."
Id. at 555. The factual allegations do not have to
be detailed, but they must provide more than labels,
conclusions, or a "formulaic recitation" of the
claim elements. Id. ("Factual assumptions must
be enough to 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)."). There
must also be sufficient factual matter to state a facially
plausible claim to relief. Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009). The facial plausibility standard is
satisfied when the complaint's factual content
"allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged."
Id. ("Where a complaint pleads facts that are
merely consistent with a defendant's liability, it stops
short of the line between possibility and plausibility of
entitlement to relief." (internal quotation marks
objects to the Report's findings that U.S. Patent Nos. 8,
171, 030 ("the '030 Patent"), as well as 9,
066, 114, 9, 479, 831, and 9, 407, 962 (collectively, the
"Trigger Patents") claim patent-eligible subject
first objection to the Report is that it failed to find that
claim 1 of the '030 Patent is directed to an abstract
idea. (D.I. 23 at 4). Defendant asserts that the Report
misapplied the Federal Circuit's ruling in Enfish LLC
v. Microsoft Corporation because the '030 Patent
claims using a well-known "tree" database to index
and store videos using a "robust hash" and
"traversal index," which are "abstract
concepts that long predate videos and video databases."
(Id. at 3; citing 822 F.3d 1327 (Fed. Cir. 2016)).
In Enfish, the Federal Circuit held that claims to a
new, specific way of structuring a database were
patent-eligible. 822 F.3d at 1337-38; see Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (explaining that the claims in Enfish were
eligible "because [they] focused not on asserted
advances in uses to which existing computer capabilities
could be put, but on a specific improvement... in how
computers could carry out one of their basic
functions"). Defendant asserts that the Report merely
"[i]dentif[ied] purported benefits stemming from the use
of an abstract idea," which do not make a claim
patent-eligible. (D.I. 23 at 4; citing OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
also argues that the focus of the claim in the asserted
patent is essentially a claim to the "creation of an
index used to search and retrieve information stored in a
database," which is an abstract idea. (D.I. 23 at 4;
citing Intellectual Ventures I LLC v. Erie Indem.
Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017)). Defendant
contends, "The alleged improvement of using a robust
hash as a traversal index does not 'enable a
computer... to do things it could not do before.'"
(D.I. 23 at 4; citing Finjan, Inc. v. Blue Coat Sys.,
Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018)).
argues that Defendant improperly isolates certain elements of
the asserted claims in order to argue that these elements
were known in the prior art. (D.I. 24 at 1). Plaintiff
emphasizes the structure and efficiency of the invention
described by the asserted claims, specifically the
improvement on the structure of the database and the way
traversal indexes are formulated and used. (D.I. 24 at 10;
D.I. 1, Ex. E at 1:54-59, 2:2-13, 8:52-54, 15:29-34). Unlike
the claims of Erie, which simply "created a
system like the index at the back of a book," Plaintiff
contends that the claims of the '030 patent more
analogously describe a novel improvement in the
organizational structure of a database or the generation of a
traversal index. (D.I. 24 at 10).
report, the Magistrate Judge applied the two-step framework
set forth by the Supreme Court in Mayo and Alice Corp.
Pty. Ltd. v. CLS Bank Intern.,134 S.Ct. 2347 (2014).
(D.I. 22 at 15-18). This framework requires the Court 1) to
determine whether the claims are directed to a
patent-ineligible concept - such as a law of nature, natural
phenomenon, or abstract idea - and, if they are, 2) to
determine whether there is an 'inventive concept...
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 (internal quotation
marks and alterations omitted). In applying this framework,
the Magistrate Judge emphasized the factual similarity
between Claim 1 of the '030 patent and the claims found
to be patent-eligible in Enfish. ...