United States District Court, D. Delaware
REPORT AND RECOMMENDATION
R. FALLBON UNITED STATES MAGISTRATE JUDGE.
before the Court is the Defendant's motion to dismiss
Plaintiffs action for patent infringement, arguing that the
asserted patent claims are ineligible under 35 U.S.C. §
101 because they are directed to an abstract idea. (D.I.
Defendant also argues that the Complaint's allegations of
indirect patent infringement are insufficient and should be
dismissed. (D.I. 7 at 19-20) As explained below, the asserted
patent is directed to an abstract idea and concedes that all
of the claimed techniques and devices asserted by Plaintiff
to be inventive were actually well-known and conventional.
Therefore, the Court recommends that the District Court GRANT
the motion, finding the patent claims ineligible and
dismissing the case with prejudice.
Tenaha Licensing LLC ("Plaintiff or "Tenaha")
is a Texas corporation with its principal place of business
in Piano, Texas. (D.I. 1 at ¶ 1) Defendant Ascom (US)
Inc. ("Defendant" or "Ascom") is a
Delaware corporation with its principal place of business in
Morrisville, North Carolina. (Id. at ¶ 2; D.I.
8 at ¶ 2)
is the assignee of the asserted patent in this patent
infringement suit-U.S. Patent No. 8, 238, 869 ("the
'869 patent"). (D.I. 1, ex. A) The '869 patent
is entitled "LIFESAVER PERSONAL ALERT AND NOTIFICATION
DEVICE[, ]" ('869 patent, Title; D.I. 1 at ¶
8), and describes methods of relaying notifications to users.
(See '869 patent, col. 1:10-11 (describing the
"field of invention" as "devices and methods
for personal alert and notification")) The background
section of the patent describes two categories of
"currently known alert systems" that provide
"specific message[s]" to either an individual or
the general public: "wide area alert/notification
systems" and "local area alert/notification
systems[.]" (Id., col. 1:14-18; see also
id., col. 1:19-62 (describing each system)) The '869
patent explains that the "present invention is directed
to systems, devices and methods of transmitting in a wide
area notification zone a plurality of notifications to a
plurality of users in an automated, independent, and
localized manner." (Id., cols. 1:66-2:12) The
specification explains this goal is accomplished by
activating a "low-range transceiver" to "send
a notification to [a] plurality of users via wearable
transceivers" in response to a "signal from a wide
area notification device[.]" (Id., col. 2:2-12)
"Most preferably," the low-range transceiver is
activated by a "trigger device." (Id.;
but see id, cols. 10:63-11:12 (asserted claim 15 not
reciting "trigger device")) The patent describes,
in expansive terms, several "suitable devices" for
the "wide area notification device," "trigger
device," "low-range transceiver," and the
"wearable transceiver" of the invention.
(Id. cols 2:13-9:34)
alleges Defendant infringes "at least claim 15 of the
15. A method of providing emergency and non-emergency event
notification to a plurality of users, comprising:
using a low-range transceiver to automatically relay within a
wide area notification area a first emergency notification
signal from a wide area notification device, and to further
provide an audible and/or visible alert notification in
response to the first emergency notification signal; and
manually, and independently from the first emergency
notification signal, providing a second non-emergency
notification signal to at least one of the plurality of users
using the low-range transceiver, wherein the nonemergency
notification signal is a user-specific and event-specific
notification signal that is transmitted by an operator of the
low-range transceiver to a wireless transmitter that is worn
by a user, wherein the user is a person other than the
(Id., cols. 10:63-11:12; D.I. 1 at ¶ 14)
filed its Complaint for patent infringement on March 26,
2019. (D.I. 1) On April 22, 2019, Defendant filed the pending
motion to dismiss the Complaint for lack of patent-eligible
subject matter pursuant to 35 U.S.C. § 101 and for
failure to state a claim of indirect infringement. (D.I. 6;
D.I. 7) Briefing was completed on June 20, 2019, (D.I. 14),
and the Court heard oral argument on November 15, 2019, (D.I.
21 (hereinafter "Tr.")).
STANDARD OF REVIEW
Failure to State a Claim
moves to dismiss the pending action pursuant to Rule
12(b)(6), which permits a party to seek dismissal of a
complaint for failure to state a claim upon which relief can
be granted. Fed.R.Civ.P. 12(b)(6). According to Ascom,
Tenaha's Complaint fails to state a claim because the
asserted claims of the '869 patent are ineligible for
patent protection under 35 U.S.C. § 101. Patent
eligibility under 35 U.S.C. § 101 is a threshold test.
Bilski v. Kappos, 561 U.S. 593, 602 (2010).
Therefore, "patent 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).
considering a Rule 12(b)(6) motion to dismiss, the court must
accept as true all factual allegations in the complaint and
view them in the light most favorable to the plaintiff.
Umland v. Planco Fin. Servs., 542 F.3d 59, 64 (3d
Cir. 2008). Dismissal under Rule 12(b)(6) is only appropriate
if the 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). However, "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 Solutions
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)).
Patent-Eligible Subject Matter
101 of the Patent Act provides that patentable subject matter
extends to four broad categories: "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. The Supreme Court
recognizes three exceptions to the subject matter eligibility
requirements of [Section] 101: laws of nature, physical
phenomena, and abstract ideas. Alice Corp, Pty. v. CLS
Bank lnt'l, 573 U.S. 208, 218 (2014). The purpose of
these exceptions is to protect the "basic tools of
scientific and technological work," Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 71 (2012), which are "part of the storehouse of
knowledge of all men . . . free to all men and reserved
exclusively to none," Bilski, 561 U.S. at 602
(internal quotation marks and citations omitted).
Supreme Court articulated 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, 573 U.S. at 217; see also Mayo, 566
U.S. at 77-78. At step one, the court must determine whether
the claims are directed to one of the three patent-ineligible
concepts. Alice, 573 U.S. at 217. If not, "the
claims satisfy [Section] 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 the claims are directed to a patent-ineligible
concept, the court must proceed to the second step of
identifying 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, 573 U.S. at 217-18 (quoting
Mayo, 566 U.S. at 72-73).
one, "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)
("DIRECTV") ("The 'abstract
idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to
determine if the claim's 'character as a whole'
is directed to excluded subject matter."). However,
"courts must be careful to avoid oversimplifying the
claims by looking at them generally and failing to account
for the specific requirements of the claims." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016) (internal quotation marks omitted). "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. Cellz Direct, Inc., 827 F.3d 1042, 1050 (Fed.
two, the court must "look to both the claim as a whole
and the individual claim elements" to determine whether
they "amount[ ] to significantly more than a patent upon
the [ineligible concept] itself." McRO, 837
F.3d at 1312. "Simply appending conventional steps,
specified at a high level of generality, [is] not enough to
supply an inventive concept." Alice, 573 U.S.
at 222 (internal quotation marks omitted). Instead, the claim
elements must "involve more than performance of
'well-understood, routine, [and] conventional activities
previously known to the industry.'" Berkheimer
v. HP Inc.,881 F.3d 1360, 1367 (Fed. Cir. 2018)
(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 ...