§ 101 Patent-Eligibility Turns on a Technical Solution to a Technical Problem: Pebble Tide LLC v. Arlo Technologies
By Charles Bieneman
Categories: 35 U.S.C. § 101, Patent Eligibility, Software Patents
In an interesting dichotomy, patent claims directed to outputting digital content did not survive, but claims directed to social network search output did survive, respective motions to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test. Pebble Tide LLC v. Arlo Tech., Inc. (D. Del. Jan 31, 2020).
Pebble Tide LLC sued three defendants alleging infringement of U.S. Patent Nos. 10,261,739 and 10,303,411, both directed to “capturing, storing, accessing, and outputting digital content.” In an unrelated action, Mimzi LLC sued five defendants alleging infringement of U.S. Patent No. 9,128,981, directed to a “phone assisted ‘photographic memory.’” Delaware’s Judge Stark, in a bench ruling then documented in a written memorandum, held that Pebble Tide’s ’739 and ’411 patents were invalid under § 101, but that Mimzi’s ’981 patent, though directed to an abstract idea, could not be deemed patent-ineligible at the pleadings stage.
Pebble Tide Cases
The parties agreed that claim 1 of Pebble Tide’s ’739 patent was representative of Pebble Tide’s patent claims for purposes of the defendants’ motion. Under Step One of the Alice test, Judge Stark found that the claim – which, you can see via the above link – “is directed to the abstract idea of wirelessly outputting data from one device to another.” As the Federal Circuit explained in Cellspin Soft Inc. v. Fitbit, Inc., No. 2018-1817 (Fed. Cir. June 25, 2019), “claims reciting the collection, transfer and publishing of data are directed to an abstract idea.”
At this point, you might look at claim 1 of the ’739 patent and, from its sheer length, presume that it recited some technical, and therefore patent-eligible, features. But looking at the claim elements, Judge Stark cited ChargePoint, Inc. v. SemaConnect, Inc., 920 F. 3d 759 (Fed. Cir. 2019), for the proposition that simply transmitting data from one device to another, or describing devices in functional terms, could not overcome the abstractness.
Then turning to Step Two of the Alice test, Judge Stark explained that neither the recited “interplay of the job object process in the device object process” nor the recited “information apparatus” or inventive concepts. Instead, the claims simply recited features of known computing devices.
A “more challenging question in the Pebble cases,” said Judge Stark, was whether the claims recited in unconventional combination of elements. Unlike the Cellspin claims, which survived Alice Step Two, the claims here “use merely functional language” without explaining how the purported combination achieved technical benefit. And unlike the claims in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC (Fed. Cir. 2016), the present claims did not recite “a specific, discrete implementation of the abstract idea” or a “technical improvement.” The claims here were more like the claim in Two-Way Media Ltd. v. Comcast Cable Communications (Fed. Cir. 2016), which “use a conventional ordering of steps with conventional technology to achieve its desired results.”
Mimzi Cases
Judge Stark declined to hold Mimzi’s ’981 patent ineligible under § 101 despite agreeing that the defendants had shown, under Alice Step One, that the representative claims were “directed to the abstract idea of providing and ranking location related information in response to a spoken request.” This was “analogous to a hotel concierge recommending a local restaurant,” or to the information collection and analysis that the Federal Circuit held to be an unpatentable abstract idea in Electric Power Group, LLC v. Alstom, S.A. (Fed. Cir. 2016).
But under Alice Step Two, the ’981 patent survived. Because this was a motion on the pleadings, the court was required to “take the well pled factual allegations as true. The plaintiff was successful in raising a question of whether claim recitations about use of “location metadata and transcripts from a user’s spoken request” were part of a nonconventional ordered combination.
Judge Stark emphasized that he did not agree “that any of those individual claim elements . . . is anything other unconventional.” But the Mimzi’s complaint alleged “an improvement in computer capabilities [via] a series of complex steps.” And the complaint identified “extrinsic evidence from a third party, specifically Google,” concerning an purported deficiency in search technology that the ’981 patent allegedly addressed. Under Cellspin and Aatrix Software, Inc. v. Green Shades Software, Inc. (Fed. Cir. 2018), “plausible and specific factual allegations relating to inventiveness can be sufficient to survive a motion to dismiss.” That threshold was met here, even though the specification did not “expressly list all the reasons why this claim structure is unconventional.”
Lessons for Practice
Let’s be honest, the first lesson here is a reinforcement of what we all already know: the line between patent-eligible and patent-ineligible can be razor thin. And the second lesson which is probably most relevant for patents drafted, as was the ’981 patent here, well before Alice (2014) and Bilski v. Kappos, 561 US 593 (2010), may be that creative lawyering can help a patent survive a § 101 challenge, at least at the pleadings stage.
But beyond cynicism, these cases demonstrate the importance of being able to show a technical solution to a technical problem, whether you are drafting, prosecuting, or litigating patent claims.