United States District Court, D. Delaware
Honorable Maryellen Noreika United-States District Judge
Wilmington this 6th day of January 2020:
announced at the hearing on December 20, 2019, IT IS HEREBY
1. Uber Technologies, Inc.'s (“Uber”) Motion
to Dismiss for Failure to State a Claim (D.I. 11 in C. A. No.
19-561) is DENIED.
2. Lyft, Inc.'s (“Lyft”) Motion to Dismiss
for Failure to State a Claim (D.I. 10 in C. A. No. 19-566) is
moved to dismiss the operative complaints in each of their
actions pursuant to Rule 12(b)(6) of the Federal Rules of
Civil Procedure, alleging that the claims of U.S. Patent No.
6, 754, 580 (“the '580 Patent”) are invalid
as claiming ineligible subject matter under 35 U.S.C. §
101 and also invalid as indefinite under 35 U.S.C. §
112. In their motions, Defendants also seek dismissal of
Plaintiff's allegations of direct infringement under Rule
12(b)(6) as insufficiently pleaded under the standards of
Iqbal and Twombly. Defendants' motions
were fully briefed as of September 9, 2019,  and the Court
received further submissions in both cases regarding which
Supreme Court or Federal Circuit case each party contends is
analogous to the claims at issue in Defendants' motions
as related to the § 101 arguments. (See D.I.
22, 23, 24 in C. A. No. 19-561; D.I. 17, 19, 20 in C. A. No.
19-566). The Court carefully reviewed all submissions in
connection with Defendants' motions, heard oral
argument and applied the following legal standard
in reaching its decision:
Motion to Dismiss for Failure to State a Claim
ruling on a motion to dismiss pursuant to Rule 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, 216 (2014). These three
exceptions “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, 573 U.S. at 216. 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, 573 U.S. at 217;
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,
573 U.S. at 217. 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, 573
U.S. at 217-18 (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 addressing 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, 573 U.S. at 217; 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,
573 U.S. at 218; 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 1288, 1294 (Fed. Cir. 2016)); see
also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334
(Fed. Cir. 2016).
Pleading Direct Infringement
for direct infringement arises under 35 U.S.C. § 271(a)
when a party, without authorization, “makes, uses,
offers to sell, or sells any patented invention, within the
United States or imports into the United States any patented
invention during the term of the patent.” The
activities set forth in § 271(a) do not result in direct
infringement unless the accused product embodies the complete
patented invention. See Rotec Indus., Inc. v. Mitsubishi
Corp., 215 F.3d 1246, 1252 & n.2 (Fed. Cir. 2000).
Therefore, to state a claim of direct infringement sufficient
to withstand a motion to dismiss, a plaintiff must plead
facts that plausibly suggest that the accused product meets
each limitation of the asserted claim(s). See TMI Sols.
LLC v. Bath & Body Works Direct, Inc., C. A. No.
17-965-LPS-CJB, 2018 WL 4660370, at *9 (D. Del. Sept. 28,
Federal Circuit has provided guidance on pleading direct
infringement under Iqbal / Twombly. See
generally Disc Disease Sols. Inc. v. VGH Sols., Inc.,
888 F.3d 1256 (Fed. Cir. 2018). In Disc Disease, the
Federal Circuit reversed the district court's dismissal
of plaintiff's direct infringement claims, finding that
the plaintiff's allegations were sufficient under the
plausibility standard of Iqbal and Twombly
because the complaint specifically identified the three
accused products and alleged that the accused products met
“each and every element of at least one claim” of
the asserted patents, either literally or equivalently.
Disc Disease, 888 F.3d at 1260. Following Disc
Disease, another court in this District similarly found
that a plaintiff plausibly pleaded an infringement claim
where the complaint specifically identified the infringing
product and alleged “that it practices each limitation
of at least one claim in” the relevant patents.
Promos Tech., Inc. v. Samsung Elec. Co., No.
18-307-RGA, 2018 WL 5630585, at *4 (D. Del. Oct. 31, 2018);
see also AgroFresh Inc. v. Hazel Techs., Inc., No.
18-1486-MN, 2019 WL 1859296, at *2 (D. Del. Apr. 25, 2019)
(applying Disc Disease to find allegations of direct
infringement sufficiently pleaded); DoDots Licensing
Sols. LLC v. Lenovo Holding Co., No. 18-98-MN, 2018 WL
6629709, at *2 (D. Del. Dec. 19, 2018) (same).
112 of the Patent Act requires a patent applicant to
“particularly point out and distinctly claim the
subject matter” regarded as the applicant's
invention. 35 U.S.C. § 112 ¶ 2. “The primary
purpose of the definiteness requirement is to ensure that the
claims are written in such a way that they give notice to the
public of the extent of the legal protection afforded by the
patent, so that interested members of the public,
e.g. competitors of the patent owner, can determine
whether or not they infringe.” All Dental Prodx,
LLC v. Advantage Dental Prods., Inc., 309 F.3d 774,
779-80 (Fed. Cir. 2002) (citing Warner-Jenkinson Co. v.
Hilton-Davis Chem. Co., 520 U.S. 17, 28-29 (1997)). Put
another way, “[a] patent holder should know what he
owns, and the public should know what he does not.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
Ltd., 535 U.S. 722, 731 (2002).
patent claim is indefinite if, “viewed in light of the
specification and prosecution history, [it fails to] inform
those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014).
Definiteness is a question of law, but the Court must
sometimes render factual findings based on extrinsic evidence
to resolve the ultimate issue of definiteness. See,
e.g., Sonix Tech. Co. v. Publications Int'l,
Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017). “Any
fact critical to a holding on indefiniteness . . . must be
proven by the challenger by clear and convincing
evidence.” Intel Corp. v. VIA Techs., Inc.,
319 F.3d 1357, 1366 (Fed. Cir. 2003); see also Tech.
Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338
(Fed. Cir. 2008).
THE COURT'S RULING
ruling to deny Defendants' motions to
dismiss under Federal Rule of Civil Procedure
12(b)(6) was announced from the bench at the conclusion of
the hearing as follows:
. . . Thank you for the arguments that we had here today. I
am prepared to rule on the pending motions. I will not be
issuing written opinions, but I will issue an order stating
my rulings. I want to emphasize before I get to the rulings
that while I am not issuing a written opinion, we have
followed a full and thorough process before making the
decisions I am about to state. There was full briefing on
each of the pending motions, there were additional
submissions regarding what each party viewed as the most