Plausible and specific factual allegations of inventive claims are enough to survive a motion to dismiss for Patent Ineligible Subject Matter
| July 22, 2019
Cellspin Soft, Inc. v. Fitbit, Inc.
June 25, 2019
Lourie, O’Malley, and Taranto
Summary:
Cellspin sued Fitbit and nine other defendants for infringement of various claims of four different patents relating to connecting a data capture device such as a digital camera to a mobile device. Fitbit filed a motion to dismiss under Rule 12(b)(6) because the asserted claims of all of the patents are to patent ineligible subject matter under § 101. The district court granted the motion to dismiss and Cellspin appealed to the CAFC. The CAFC agreed with the district court that the claims recite an abstract idea under step one of the Alice test. However, under step two of the Alice test, the CAFC stated that Cellspin made “specific, plausible factual allegations about why aspects of its claimed inventions were not conventional,” and that “the district court erred by not accepting those allegations as true.” Thus, the CAFC vacated the district court decision and remanded.
Details:
Cellspin sued Fitbit and nine other defendants for infringement of several claims of four different patents. The four patents are U.S. Patent Nos. 8,738,794; 8,892,752; 9,258,698; and 9,749,847. These patents share the same specification and relate to connecting a data capture device such as a digital camera, to a mobile device so that a user can automatically publish content from the data capture device to a website.
According to the ‘794 patent, prior art devices had to transfer their content from the digital capture device to a personal computer using a memory stick or cable. The ‘794 patent teaches using a short-range wireless communication protocol such as bluetooth to automatically or with minimal user intervention transfer and upload data from a data capture device to a mobile device. The mobile device can then automatically or with minimal user intervention publish the content on websites.
Claim 1 of the ‘794 patent recites:
1. A method for acquiring and transferring data from a Bluetooth enabled data capture device to one or more web services via a Bluetooth enabled mobile device, the method comprising:
providing a software module on the Bluetooth enabled data capture device;
providing a software module on the Bluetooth enabled mobile device;
establishing a paired connection between the Bluetooth enabled data capture device and the Bluetooth enabled mobile device;
acquiring new data in the Bluetooth enabled data capture device, wherein new data is data acquired after the paired connection is established;
detecting and signaling the new data for transfer to the Bluetooth enabled mobile device, wherein detecting and signaling the new data for transfer comprises:
determining the existence of new data for transfer, by the software module on the Bluetooth enabled data capture device; and
sending a data signal to the Bluetooth enabled mobile device, corresponding to existence of new data, by the software module on the Bluetooth enabled data capture device automatically, over the established paired Bluetooth connection, wherein the software module on the Bluetooth enabled mobile device listens for the data signal sent from the Bluetooth enabled data capture device, wherein if permitted by the software module on the Bluetooth enabled data capture device, the data signal sent to the Bluetooth enabled mobile device comprises a data signal and one or more portions of the new data;
transferring the new data from the Bluetooth enabled data capture device to the Bluetooth enabled mobile device automatically over the paired Bluetooth connection by the software module on the Bluetooth enabled data capture device;
receiving, at the Bluetooth enabled mobile device, the new data from the Bluetooth enabled data capture device;
applying, using the software module on the Bluetooth enabled mobile device, a user identifier to the new data for each destination web service, wherein each user identifier uniquely identifies a particular user of the web service;
transferring the new data received by the Bluetooth enabled mobile device along with a user identifier to the one or more web services, using the software module on the Bluetooth enabled mobile device;
receiving, at the one or more web services, the new data and user identifier from the Bluetooth enabled mobile device, wherein the one or more web services receive the transferred new data corresponding to a user identifier; and
making available, at the one or more web services, the new data received from the Bluetooth enabled mobile device for public or private consumption over the internet, wherein one or more portions of the new data correspond to a particular user identifier.
The opinion highlighted as relevant that claim 1 requires establishing a paired connection between the data capture device and the mobile device before data is transmitted between the two. The other claims from the other patents recite small variations of claim 1 of the ‘794 patent.
Nine defendants filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) and one defendant filed a motion to dismiss under Federal Rule of Civil Procedure 12(c). The motions argued that the asserted patents are ineligible under § 101. The district court granted the motions to dismiss stating that all of the asserted claims from all of the asserted patents are to ineligible subject matter under § 101.
CAFC – Step One Analysis
Cellspin argued that the claims are directed to improving internet-capable data capture devices and mobile networks and that its claims recite technological improvements because the claims describe improving data capture devices by allowing even “internet-incapable” capture devices to transfer newly captured data to the internet via an internet capable mobile device.
The CAFC characterized the claims as “drawn to the idea of capturing and transmitting data from one device to another.” And the CAFC stated that they have “consistently held that similar claims reciting the collection, transfer, and publishing of data are directed to an abstract idea,” and that these cases “compel the conclusion that the asserted claims are directed to an abstract idea as well.” The CAFC further stated that the patents acknowledge that users could already transfer data from a data capture device (even an internet-incapable device) to a website using a cable connected to a PC, and that the patents provided a way to automate this transfer. Thus, the CAFC concluded that the district court correctly held that the asserted claims are to an abstract idea.
CAFC – Step Two Analysis
Cellspin argued that the claimed invention was unconventional. They described the prior art devices as including a capture device with built-in wireless internet, but that these devices were inferior because at the time of the patent priority date, these combined devices were bulky, expensive in terms of hardware and expensive in terms of requiring an extra or separate cellular service for the data capture device. Cellspin stated that its device was unconventional in that it separated the steps of capturing and publishing the data by separate devices linked by a wireless, paired connection. This invention allowed for the data capture device to serve one core function of capturing data without the need to incorporate other hardware and software components for storing data and publishing on the internet. And one mobile device with one data plan can be used to control several data capture devices.
Cellspin further argued that its specific ordered combination of elements was inventive because Cellspin’s claimed device requires establishing a paired connection between the mobile device and the data capture device before data is transmitted, whereas the prior art data capture device forwarded data to a mobile device as captured regardless of whether the mobile device is capable of receiving the data, i.e. whether the mobile device is on and whether the mobile device is near the data capture device. Cellspin also argued that its use of HTTP transfers of data received over a paired connection to web services was non-existent prior to its invention.
The district court stated that Cellspin failed to cite support in the patent specifications for its allegations regarding the inventive concepts and benefits of its invention. However, the CAFC stated that in the Aatrix case (Aatrix Software Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018)), they repeatedly cited allegations in the complaint to conclude that the disputed claims were potentially inventive. The CAFC stated:
While we do not read Aatrix to say that any allegation about inventiveness, wholly divorced from the claims or the specification, defeats a motion to dismiss, plausible and specific factual allegations that aspects of the claims are inventive are sufficient. Id. As long as what makes the claims inventive is recited by the claims, the specification need not expressly list all the reasons why this claimed structure is unconventional.
The CAFC stated that in this case, Cellspin made “specific, plausible factual allegations about why aspects of its claimed inventions were not conventional,” and that “the district court erred by not accepting those allegations as true.”
The district court also did not give weight to Cellspins’ allegations because Cellspin relied on Berkheimer (Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)), which was distinguished by the district court because the Berkheimer case dealt with a motion for summary judgment. But the CAFC stated that the district court’s conclusion cannot be reconciled with the Aatrix case and stated:
The district court thus further erred by ignoring the principle, implicit in Berkheimer and explicit in Aatrix, that factual disputes about whether an aspect of the claims is inventive may preclude dismissal at the pleadings stage under § 101.
The CAFC further stated that Cellspin did more than just label certain techniques as inventive; Cellspin pointed to evidence suggesting that these techniques had not been implemented in the same way. The CAFC concluded that Cellspin sufficiently alleged that they claimed significantly more than the idea of capturing, transferring or publishing data, and thus the district court erred by granting the motion to dismiss.
Attorney Fees
The CAFC also commented on the district court’s decision to award attorney fees to the defendant. The district court awarded attorney fees to the defendants because the district court deemed the case exceptional due to actions by Cellspin. But since the CAFC found that the district court erred in granting the motions to dismiss, the CAFC vacated the award of attorney fees. But the CAFC went further to point out errors by the district court in determining the case to be exceptional.
The CAFC faulted the district court for not presuming that the issued patents are eligible. The CAFC stated that issued patents are not only presumed to be valid but also presumed to be patent eligible. In citing Berkheimer, the CAFC stated that underlying facts regarding whether a claim element or combination is well-understood or routine must be proven by clear and convincing evidence.
Comments
A patent owner as a plaintiff in an infringement suit can defend against a motion to dismiss by providing “specific, plausible factual allegations” about why aspects of the claimed invention were not conventional. Explicit description in the specification providing reasons why the claimed invention is unconventional is not required as long as the claim recites what makes the claim inventive. Also, this case states that underlying facts regarding ineligibility must be proven by clear and convincing evidence.
Even though this case states that explicit description in the specification regarding why the invention is unconventional is not required, patent applicants should consider including a description in the specification regarding why the invention or certain aspects of the invention are unconventional to make their patents stronger.
