Opinion
Case No. 2:21-cv-01360-JWH-MRW
2021-11-23
TRINITY INFO MEDIA, LLC, Plaintiff, v. COVALENT, INC., Defendant.
Ashley D. Posner, Posner Law Corporation, Sherman Oaks, CA, Gregory L. Hillyer, Pro Hac Vice, Hillyer Legal PLLC, Washington, DC, for Plaintiff. Thomas E. Dietrich, Stephen Charles McArthur, McArthur Law Firm PC, Beverly Hills, CA, for Defendant.
Ashley D. Posner, Posner Law Corporation, Sherman Oaks, CA, Gregory L. Hillyer, Pro Hac Vice, Hillyer Legal PLLC, Washington, DC, for Plaintiff.
Thomas E. Dietrich, Stephen Charles McArthur, McArthur Law Firm PC, Beverly Hills, CA, for Defendant.
MEMORANDUM OPINION AND ORDER ON MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM [ECF No. 30]
John W. Holcomb, UNITED STATES DISTRICT JUDGE
I. INTRODUCTION
Before the Court is the motion of Defendant Covalent, Inc. to dismiss the First Amended Complaint filed by Plaintiff Trinity Info Media, LLC, pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. After considering the papers filed in support and in opposition, as well as the oral argument of counsel at the hearing on the Motion, the Court GRANTS the Motion.
Def. Covalent, Inc.’s Mot. to Dismiss for Failure to State a Claim (the "Motion") [ECF No. 30].
The Court considered the following papers: (1) Compl. [ECF No. 1]; (2) the First Am. Compl. (the "Amended Complaint") [ECF No. 28]; (3) the Motion; (4) Pl.’s Opp'n to the Motion (the "Opposition") [ECF No. 32]; (5) Def.’s Reply in Supp. of the Motion (including its attachments) (the "Reply") [ECF No. 33]; (6) Pl.’s Suppl. Opp'n to the Motion ("Pl.’s Suppl. Brief") [ECF No. 38]; and (7) Def.’s Suppl. Br. in Supp. of the Motion ("Def.’s Suppl. Brief") [ECF No. 39].
II. BACKGROUND
A. Procedural Background
On February 15, 2021, Trinity filed its Complaint, thereby commencing this action. On April 28, Trinity filed the operative Amended Complaint. In that pleading, Trinity asserts that Covalent's activities infringe U.S. Patent Nos. 9,087,321 (the "’321 Patent") and 10,936,685 (the "’685 Patent") (jointly, the "Patents-in-Suit").
Unless otherwise indicated, all dates are in 2021.
See generally Amended Complaint.
On May 12, Covalent filed the instant Motion, which seeks the dismissal of the Amended Complaint on the ground that the Patents-in-Suit are invalid pursuant to 35 U.S.C. § 101 for claiming patent-ineligible subject matter. Trinity timely filed its Opposition, and Covalent timely filed its Reply.
On July 2, the Court conducted a hearing to address a tentative order that the Court provided to the parties the previous day. At that hearing, the Court directed the parties to file simultaneous supplemental briefing.
See Minutes of Video Hearing re: Motion [ECF No. 37].
See Pl.’s Suppl. Brief; Def.’s Suppl. Brief.
B. Technological Background
Trinity is the assignee of the Patents-in-Suit, both entitled "Poll-based Networking System." David Shaun Neal and Timothy Beggy are the named inventors on both patents. The application that issued as the ’321 Patent was filed on November 22, 2010, and the patent issued on July 21, 2015. The ’321 Patent claims priority to Provisional Application No. 61/309,038 (the "Provisional Application"), which was filed on March 1, 2010.
See ’321 Patent [ECF No. 28-1]; ’685 Patent [ECF No. 28-2].
Id.
’321 Patent.
Id.
The continuation-in-part application that issued as the ’685 Patent was filed on July 2, 2018, and it claims priority to both the ’321 Patent and the Provisional Application. The ’685 Patent issued on March 2.
’685 Patent.
Id.
The ’321 Patent's specification discloses that the invention "relates to ... a networking system that connects users based on similarities as determined through poll answering and provides real-time results to the users." Similarly, the ’685 Patent ’s specification states that the invention "relates to ... a networking system that matches users to people, products, good [sic ], and services based on similarities as determined through poll answering and provides real-time results in the form of a matching number to the users." The flow chart reproduced below depicts "a process for poll-based networking according to" the claimed invention of the ’321 Patent : The ’685 Patent discloses a similar "process for poll-based networking," but it further discloses comparing the user's answers to "the profile descriptors of the products, goods, and services" and displaying those products, goods, and services "that have a likelihood of match within a predetermined threshold."
’321 Patent at 1:11-14.
’685 Patent at 1:19-23.
’321 Patent at Fig. 1, 3:31-32.
’685 Patent at Fig. 1, 4:1-2.
According to the Patents-in-Suit, that "poll-based networking" provides "real-time polling and matching" through "a unique matching logic that enables the system to efficiently manage a large number of members/users [and products/goods/services in the case of the ’685 Patent ]." Using that logic, "the system progressively updates the matching and presentation of similar users[, products, goods, and/or services]."
See ’321 Patent at 5:46-49; ’685 Patent at 6:24-27.
See ’321 Patent at 5:36-38; ’685 Patent at 6:10-14.
Trinity accuses Covalent of engaging in activities that infringe Claims 1-3, 8, and 20 of the ’321 Patent (the "Asserted ’321 Patent Claims") and Claims 2, 3, 12-14, 16, 17, 20-22, 24, and 25 of the ’685 Patent (the "Asserted ’685 Patent Claims") (collectively, the "Asserted Claims"). Claim 1 of the ’321 Patent discloses:
See Amended Complaint ¶¶ 41-54 & 55-69.
A poll-based networking system, comprising:
a data processing system having one or more processors and a memory, the memory being specifically encoded with instructions such that when executed, the instructions cause the one or more processors to perform operations of:
receiving user information from a user to generate a unique user profile for the user;
providing the user a first polling question, the first polling question having a finite set of answers and a unique identification;
receiving and storing a selected answer for the first polling question;
comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users; and
displaying to the user the user profiles of other users that have a likelihood of match within a predetermined threshold.
’321 Patent at 12:15-34.
The remaining Asserted ’321 Patent Claims expand upon certain features of the poll-based networking system, as discussed further in Section IV infra. Claim 2 of the ’685 Patent discloses a "computer-implemented" method for creating a poll-based network similar to the one recited in Claim 1 of the ’321 Patent, but it also includes the limitation "wherein one or more of the operations are carried out on a hand-held device; and wherein two or more results based on the likelihood of match are displayed in a list reviewable by swiping from one result to another." Claims 12, 13, 16, and 17 of the ’685 Patent depend directly from that method claim, further disclosing specifics related to a poll-based network. Claim 3 of the ’685 Patent discloses a "computer program product for creating" the poll-based network identical to the one recited in Claim 2. Claims 20-22, 24, and 25 of the ’685 Patent depend directly from Claim 3, further disclosing specifics related to a poll-based network.
See id. at 12:25-62 & 13:48-14:3. Claim 20 expands upon certain features of "[a] computer program product for creating a poll-based network" recited in Claim 19. See id. at 16:9-44.
See ’685 Patent at 14:37-59.
See id. at 7:4-26 & 8:1-13.
See id. at 14:60-15:11.
See id. at 16:18-24 & 16:28-33.
The Court's analysis below addresses only the Asserted Claims.
III. LEGAL STANDARD
A motion to dismiss under Rule 12(b)(6) tests the legal sufficiency of the claims asserted in a complaint. Navarro v. Block , 250 F.3d 729, 732 (9th Cir. 2001). In ruling on a Rule 12(b)(6) motion, "[a]ll allegations of material fact are taken as true and construed in the light most favorable to the nonmoving party." Am. Family Ass'n v. City & County of San Francisco , 277 F.3d 1114, 1120 (9th Cir. 2002). Although a complaint attacked through a Rule 12(b)(6) motion "does not need detailed factual allegations," a plaintiff must provide "more than labels and conclusions." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007).
To state a plausible claim for relief, the complaint "must contain sufficient allegations of underlying facts" to support its legal conclusions. Starr v. Baca , 652 F.3d 1202, 1216 (9th Cir. 2011). "Factual allegations must be enough to raise a right to relief above the speculative level on the assumption that all the allegations in the complaint are true (even if doubtful in fact)...." Twombly , 550 U.S. at 555, 127 S.Ct. 1955 (citations and footnote omitted). Accordingly, to survive a motion to dismiss, a complaint "must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face," which means that a plaintiff must plead sufficient factual content to "allow[ ] the Court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (internal quotation marks omitted). A complaint must contain "well-pleaded facts" from which the Court can "infer more than the mere possibility of misconduct." Id. at 679, 129 S.Ct. 1937.
IV. DISCUSSION
Covalent moves to dismiss on the grounds that the Asserted Claims of the ’321 Patent and the ’685 Patent are invalid under 35 U.S.C. § 101. An invention or a discovery is patentable if it is a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Id. "In choosing such expansive terms ... Congress plainly contemplated that the patent laws would be given wide scope." Diamond v. Chakrabarty , 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980). Nevertheless, the Supreme Court has identified exceptions to this wide scope to distinguish patents that claim the building blocks of human ingenuity—which are ineligible for patent protection—from those that "integrate the building blocks into something more." Alice Corp. Pty. Ltd. v. CLS Bank Int'l , 573 U.S. 208, 217, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 89, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) ) (internal quotation marks omitted). Thus, the Supreme Court has identified the following exceptions to patent eligibility: "laws of nature, natural phenomena, and abstract ideas." Diamond v. Diehr , 450 U.S. 175, 185, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). The purpose of these exceptions is to prevent patents that "too broadly preempt the use of a natural law[, natural phenomena, or abstract idea]," so as "not [to] inhibit further discovery by improperly tying up the future use of [those exceptions]." Mayo , 566 U.S. at 73, 86, 132 S.Ct. 1289.
In Mayo , the Supreme Court "set forth a 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, 134 S.Ct. 2347. The first step is to ask "whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If not, the claims fall within the scope of § 101 and are patent-eligible. If the claims are directed to one of the exceptions, the next step is to search for an "inventive concept" that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law[, natural phenomenon, or abstract idea] itself." Mayo , 566 U.S. at 72-73, 132 S.Ct. 1289. In doing so, a court must "consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application." Alice , 573 U.S. at 217, 134 S.Ct. 2347 (quoting Mayo , 566 U.S. at 78-79, 132 S.Ct. 1289 ). If, in considering the claim elements individually and as an ordered combination, those elements merely recite well-understood, routine, and conventional steps, then they will not constitute an inventive concept for patent eligibility purposes. Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d 1121, 1128 (Fed. Cir. 2018). "Whether the claim elements or the claimed combination are well-understood, routine, conventional is a question of fact." Id. ; see also Berkheimer v. HP Inc. , 881 F.3d 1360, 1368 (Fed. Cir. 2018) ("Like indefiniteness, enablement, or obviousness, whether a claim recites patent eligible subject matter is a question of law which may contain underlying facts.").
In patent infringement actions, an accused infringer may move to dismiss under § 101 on the basis that the claimed invention is ineligible for patent protection and that, thus, the patent is invalid. In this context, the moving party "bear[s] the burden of establishing that the claims are patent-ineligible under § 101." Modern Telecom Sys. LLC v. Earthlink, Inc. , 2015 WL 1239992, at *7 (C.D. Cal. Mar. 17, 2015). "[I]n applying § 101 jurisprudence at the pleading stage, the Court construes the patent claims in a manner most favorable to Plaintiff." Id. at *8 (citing Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n , 776 F.3d 1343, 1349 (Fed. Cir. 2014) ).
The Court first addresses Trinity's objections to certain evidence that Covalent submitted with its Reply. The Court then turns to the two-step test articulated in Alice / Mayo .
A. Evidentiary Objections
Trinity objects to attorney Thomas Dietrich's Declaration filed in support of Covalent's Reply, as well as the portions of the Reply that rely on that declaration. Trinity argues that the Dietrich Declaration refers "to unauthenticated information, that constitutes hearsay, is unreliable, is inaccurate and otherwise constitutes impermissible extrinsic evidence that is outside of the pleadings or other materials on which the Court may properly consider in addressing the Motion to Dismiss." The Court agrees with Trinity that the Dietrich Declaration relies on information that the Court cannot consider on a Rule 12(b)(6) motion to dismiss. As Trinity notes, " ‘[c]ourts regularly decline to consider declarations and exhibits submitted in support of ... a motion to dismiss,’ particularly ‘if they constitute evidence not referenced in the complaint or not a proper subject of judicial notice.’ " The challenged information in the Dietrich Declaration is neither present in the Amended Complaint nor subject to judicial notice. Further, the Court need not consider the Dietrich Declaration to resolve the instant Motion. Accordingly, the Court SUSTAINS Trinity's objections to the Dietrich Declaration and to the portions of the Reply that rely on that declaration.
Decl. of Thomas Deitrich ("Dietrich Declaration") [ECF No. 33-1].
See Trinity's Obj. to Covalent's Reply ("Trinity's Objections to Reply") [ECF No. 34].
Id. at 2:6-12.
Id. at 3:22-4:2 (quoting Gerritsen v. Warner Bros. Entertainment Inc. , 112 F. Supp. 3d 1011, 1020-21 (C.D. Cal. 2015) ).
B. Alice /Mayo Step One
Covalent argues that the Asserted Claims are directed to the abstract idea of "matching users who gave corresponding answers to a question." Covalent asserts that Claim 1 of the ’321 Patent and Claim 2 of the ’685 Patent are representative of the Asserted Claims. Covalent summarizes the steps of those claims as follows: (1) receive user information; (2) provide the user with a question with a finite number of answers (e.g. , yes or no); (3) compare the user's answer to other users’ answers or product descriptors to see if there are any matches; and (4) display matching profiles to the user. Covalent contends that each of those steps is a mental process that can be "performed entirely in the human mind," which courts have found to be directed to an abstract idea. As Covalent also argues, "[c]omputerizing that abstract matchmaking concept does not create patentability" and " ‘the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tool.’ "
See Motion at 15:27-28.
Id. at 23:24-25:7.
See id. at 15:28-16:15.
Id. at 16:23-17:11 & 17:25-18:2 (citing Voter Verified, Inc. v. Election Sys. & Software LLC , 887 F.3d 1376, 1385-86 (Fed. Cir. 2018) ; Jedi Techs., Inc. v. Spark Networks, Inc. , 2017 WL 3315279, at *7-*8 (D. Del. Aug. 3, 2017) ).
Id. at 18:3-15 (quoting Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) ; Jedi Techs. , 2017 WL 3315279, at *7-*8 ; Aatrix Software, Inc. v. Green Shades Software, Inc. , 890 F.3d 1354, 1359 (Fed. Cir. 2018) ).
Further, Covalent maintains that those claims do not require "any specific hardware or software to perform the claimed steps," nor do they recite "any improvements to the operating technology." Covalent notes that the independent claims do not require " ‘real-time’ processing speed" nor " ‘[p]rogressive polling’ " (i.e. , asking multiple questions and comparing the aggregate of answers to generate matches). Covalent argues that even to the extent that the dependent claims recite those limitations, those steps still recite "the sort of information processing and presentation the Federal Circuit has repeatedly held" ineligible. Finally, according to Covalent, "[e]ven with regard to the dependent claims in the ’321 Patent that recite using two servers or in the ’685 Patent that recite using remote processing devices, the Federal Circuit has ‘consistently held ... that claims are not saved from abstraction merely because they recite components more specific than a generic computer.’ "
Id. at 16:17-19.
Id. at 16:19-22.
Id. at 17:12-24 (citing Elec. Power Group, LLC v. Alstom S.A. , 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) ; Voter Verified , 887 F.3d at 1385 ).
Id. at 18:18-28 (quoting BSG Tech LLC v. Buyseasons, Inc. , 899 F.3d 1281, 1286-87 (Fed. Cir. 2018) ).
Trinity responds that Covalent's analysis ignores "at least five (5) express limitations to create the impression that claim 1 is abstract." Specifically, Trinity argues that the following limitations show that Claim 1 of the ’321 Patent is not abstract: (1) "a data processing system having one or more processors and a memory," which may include mobile phones; (2) a "unique identification" and relatedly comparing answers "based on the unique identification"; (3) "receiving and storing a selected answer for the first polling question"; and (4) "a likelihood of a match within a predetermined threshold." Regarding Claim 2 of the ’685 Patent, Trinity also contends that the "swiping" limitation is not an "abstract idea." Trinity asserts that "swiping match results on a mobile phone was non-conventional" as of the 2010 priority date for the ’685 Patent. Trinity maintains that each of those limitations shows that the Asserted Claims are "directed to improvements to the functionality of a computer or network platform itself." Trinity further argues that the dependent claims of the ’321 Patent provide additional non-abstract elements.
See Opposition at 12:5-6.
Id. at 12:8-24 (citing Amended Complaint ¶¶ 29 & 32).
Id. at 14:2-21.
Id. at 13:5-14:1.
Id. at 14:22-15:8.
Id. at 15:9-26.
Id.
Id. at 16:7-17:3.
Id. at 22:13-23:8.
Trinity also disagrees with Covalent's assertion that the claimed steps are directed to mental processes, arguing that "[i]t is self-evident that claim 1 cannot be performed mentally because the improvement involves nanosecond comparisons and aggregations of result values with huge numbers of polls and members." According to Trinity, "A human cannot mentally perform polling operations that use selection criteria involving servers, storage, identifiers and/or thresholds." Additionally, Trinity distinguishes Covalent's cited cases on the ground that the claims there were not directed to a " ‘specific improvement to the functionality of a computer,’ " unlike the Asserted Claims.
Id. at 17:6-9.
Id. at 17:8-10.
Id. at 17:14-20:1.
Covalent replies that the Asserted Claims are not directed to an improvement of a computer's functionality, but, rather, they use the computer as a tool or a generic technological environment to perform a process. Specifically, Covalent argues that it did not directly consider the limitations that Trinity addresses in its Opposition because it "simply eliminated the standard computer components recited in Claim 1 [of the ’321 Patent ] to show the focus of the claim—a computer-automated matchmaking process." Covalent notes that the Federal Circuit has found that "componentry such as ‘processors,’ ‘memory,’ and ‘servers’ " is insufficient to transform an abstract claim into a non-abstract claim. As Covalent argues, "[t]he servers and processors claimed in Trinity's Patents merely provide the environment in which the abstract matchmaking process is performed." Specifically regarding dependent Claim 8 of the ’321 Patent, Covalent contends that " ‘claims are not saved from abstraction merely because they recite components more specific than a generic computer.’ "
See Reply at 6:10-13.
Id. at 6:13-7:6.
Id. at 7:15-18.
Id. at 7:7-15 (quoting BSG Tech , 899 F.3d at 1286-87 ) (citing SAP Am., Inc. v. InvestPic, LLC , 898 F.3d 1161, 1167-68 (Fed. Cir. 2018) ).
Further, Covalent asserts that much of Trinity's discussion regarding the supposed non-abstract limitations errs by seeking to import details from the specifications into the claims, such as "real-time" matching and "progressive polling." Covalent argues that the Federal Circuit has found that mobile devices also constitute generic technological environments insufficient to transform an otherwise ineligible claim into an eligible one. Finally, Covalent maintains that Trinity's arguments for why the steps are not directed to mental processes are unpersuasive, stating "[t]hat Trinity's claimed process might perform steps faster than a human is irrelevant, for ‘it is not enough ... to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.’ "
Id. at 4:8-6:2 (citing, inter alia, ChargePoint, Inc. v. SemaConnect , Inc., 920 F.3d 759, 766-69 (Fed. Cir. 2019) ).
Id. at 7:19-8:7 (citing Intellectual Ventures I LLC v. Erie Indem. Co. , 850 F.3d 1315 (Fed. Cir. 2017) ; TLI Comms. LLC v. AV Auto., L.L.C. , 823 F.3d 607, 613 (Fed. Cir. 2016) ; Cellspin Soft, Inc. v. Fitbit, Inc. , 927 F.3d 1306, 1317 (Fed. Cir. 2019) ).
Id. at 8:8-9:8 (quoting Customedia Techs., LLC v. Dish Network Corp. , 951 F.3d 1359, 1364 (Fed. Cir. 2020) ).
In its supplemental brief, Trinity argues that the Court must accept as true all reasonable inferences from the allegations in the Amended Complaint regarding the "improvement of general-purpose computing, advances to the matching protocols, the absence of prior art, etc." Trinity contends that those factual allegations, when taken as true, preclude a finding that the Asserted Claims are directed to an abstract idea rather than to an improvement to computer functionality at step one of the Alice / Mayo inquiry. Covalent responds in its supplement brief that the Court need not accept Trinity's unsupported factual arguments that are based on only attorney argument. Covalent also argues that the intrinsic evidence, and Trinity's own infringement allegations, show that the Asserted Claims are not directed to an improvement in computer functionality, but, rather, they are directed to the abstract idea of matchmaking and increasing the speed of the matchmaking process.
Pl.’s Suppl. Brief at 2:10-18.
See id. at 3:1-5:13 (specifically referencing the portions of the Court's tentative order addressing step one of the Alice /Mayo framework).
See Def.’s Suppl. Brief at 4:14-5:26.
See id. at 3:7-4:13.
The Court agrees with Covalent that Claim 1 of the ’321 Patent is directed to the abstract idea of "matching users who gave corresponding answers to a question." Each recited step in that claim recites a mental process, and the fact that the claimed computer system may perform them faster does not make the claims less abstract. See Customedia Techs. , 951 F.3d at 1364 ("claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [is] insufficient to render the claims patent eligible as an improvement to computer functionality") (internal quotation marks omitted). Further, limiting that abstract idea to the particular environment of the claimed "processor," "memory ... specifically encoded with instructions," and "unique identification" for "receiving and storing" selected answers in the memory do not make Claim 1 less abstract. See, e.g., Smart Sys. Innovations, LLC v. Chicago Transit Auth. , 873 F.3d 1364, 1373 (Fed. Cir. 2017) ("merely limiting the field of use of the abstract idea to a particular ... environment does not render the claims any less abstract").
See ’321 Patent at 6:2-3 ("Each poll answer has a unique ID within that poll, stating at 0 and going to N-1 where N is the number of answers."), 6:9-12 ("The selected answer is then compared 106 against the selected answers of other users, based on the unique identification (i.e. , for that same question), to generate a likelihood of match between the user and each of the other users"), & 6:22-25 ("For example, the user is provided with a next polling question having a finite set of answers and a unique identification, with the system thereafter receiving and storing the selected answer.").
Further, the steps of the claim do not improve the functionality of the "processor" or "memory"; rather, they use those generic computer components as tools to perform the functions faster than a human would. Finally, the Federal Circuit has found that analyzing and comparing data—such as against a predetermined threshold—is also an abstract idea. See Berkheimer , 881 F.3d at 1366 ("parsing, comparing, storing, and editing data" was an abstract idea). Ultimately, Claim 1 amounts to little more than a system for "collecting information, analyzing it, and displaying certain results of the collection and analysis," bringing it within "a familiar class of claims" directed to an abstract idea. Elec. Power Grp. , 830 F.3d at 1353.
The Court also agrees with Covalent that Claim 1 of the ’321 Patent is representative of independent Claim 19, from which asserted Claim 20 depends. Courts need not consider each asserted claim where all the claims are "substantially similar and linked to the same abstract idea." Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n , 776 F.3d 1343, 1348 (Fed. Cir. 2014). The only distinction between the two claims is that instead of reciting a "processor" and a "memory ... specifically encoded with instructions," Claim 19 recites "[a] computer program product comprising computer-readable instruction means stored on a non-transitory computer-readable medium that are executable by a computer...." Assuming that the preamble of Claim 19 is limiting, those limitations are effectively the same as the processor and memory recited in Claim 1. Thus, Claim 19 is also directed to an abstract idea.
See id. at 16:9-12.
Claims 2 and 3 of the ’685 Patent are directed to the abstract idea of "matching users who gave corresponding answers to a question." The only relevant distinction between those claims and Claims 1 and 19 of the ’321 Patent is that Claims 2 and 3 of the ’685 Patent also recite that "one or more of the operations are carried out on a hand-held device; and wherein two or more results based on the likelihood of match are displayed in a list reviewable by swiping from one result to another." Considering those claims as a whole, it is apparent that they are directed to the same abstract idea.
See ’685 Patent at 14:37-15:11.
As the Federal Circuit has found, claims limited to mobile devices are still abstract. See TLI Comms. LLC v. AV Auto., L.L.C. , 823 F.3d 607, 613 (Fed. Cir. 2016) ("although the claims limit the abstract idea to a particular environment—a mobile telephone system—that does not make the claims any less abstract for the step 1 analysis"). Further, the act of "swiping" review matches displayed in a list merely "improv[es] a user's experience while using a computer application," which is, without more, insufficient to justify a finding that the claims are directed to an improvement in computer functionality. See Customedia , 951 F.3d at 1365 ; see also Trading Techs. Int'l, Inc. v. IBG LLC , 921 F.3d 1084, 1092–93 (Fed. Cir. 2019) (finding that "placing an order based on displayed market information is a fundamental economic practice" and "[t]he fact that the claims add a degree of particularity as to how an order is placed in this case does not impact our analysis at step one"); Crandall Techs. LLC v. Vudu, Inc. , 2021 WL 521215, at *1 (N.D. Cal. Feb. 12, 2021) (finding that "remotely launching an application on one device from another ... using gestures on a touchscreen" did not constitute "an improvement to the functionality of a computer network"). Thus, Claims 2 and 3 of the ’685 Patent are also directed to an abstract idea.
Claims 2, 3, and 20 of the ’321 Patent are similarly directed to an abstract idea. Claim 2 recites:
The poll-based networking system as set forth in claim 1, wherein the one or more processors are further configured to perform operations of:
providing the user with a next polling question, the next polling question having a finite set of answers and a unique identification;
receiving and storing a selected answer for the next polling question;
cumulatively comparing the selected answer for the first polling question and the next polling question against the selected answers of other users to generate a likelihood of match between the user and each of the other users;
displaying to the user the user profiles of other users that have a likelihood of match within a predetermined threshold; and
repeating the process for a plurality of next polling questions.
See ’321 Patent at 12:35-52.
Claim 20 recites those same limitations. Claim 3 depends from Claim 2 and recites that the system matches users by comparing all of the selected answers by each user and generates the likelihood of a match as a "match percentage." Unlike Claim 1, those claims do recite "progressive polling." But "cumulatively comparing" those selected answers and displaying the likelihood of a match as a percentage is still merely "collecting information, analyzing it, and displaying certain results of the collection and analysis." Elec. Power Grp. , 830 F.3d at 1353. Claims 2, 3, and 20 of the ’321 Patent are therefore likewise directed to an abstract idea.
Id. at 16:28-44.
Id. at 12:53-62.
The Court finds that Claim 8 of the ’321 Patent is also directed to an abstract idea. A court in this district has found that claims reciting steps to perform tasks simultaneously are directed to the abstract idea of "multitasking." See Kinglite Holdings Inc. v. Micro-Star Int'l Co. , 2016 WL 4205356, at *4-*5 (C.D. Cal. May 26, 2016). In Kinglite Holdings , the claims recited using a "basic input and output system (BIOS)" to perform "a first task in response to the interrupt signal at the interrupt times" and "performing a second task between the successive interrupt times." Id. at *3. The court found that the claims directed to using a BIOS to "perform tasks in an efficient order, such as in parallel, rather than in sequence" were directed to the abstract idea of "multitasking." See id. at *3-*5. The court analogized the claims to a chef who needs to do "two things nearly simultaneously," such as cooking a poached egg while also stirring and adding broth to rice to make a risotto. See id. at *4. The court also found that the claimed method was "not directed towards an improvement of the BIOS itself. Rather, the invention simply purport[ed] to improve the experience of the user of the computer because the user is able to access aspects of the system faster than it would without the multitasking improvement." Id. at *5. Thus, "[t]he BIOS itself functions the same way with or without the improvement," and "the BIOS [was] merely a conduit for multitasking." Id. (citing In re TLI , 823 F.3d at 612 ).
Here, Claim 8 of the ’321 Patent recites:
The poll-based networking system as set forth in claim 1, wherein the one or more processors is further configured to perform operations of:
collecting the selected answers with a web server and storing the selected answers in a database;
upon receipt of a selected answer, separately transmitting the selected answer from the web server, through a match aggregator, to a plurality of match servers, each match server being assigned a distinct subset of the other users, such that each match server compares the selected answer of the user against the selected answers of the users in its distinct subset to generate a likelihood of match between the user and each of the users in its distinct subset;
receiving in the match aggregator, from each match server, a likelihood of match between the user and the users in the distinct subset;
compiling the likelihood of matches from the plurality of match servers to generate the likelihood of match between the user and each of the other users; and
transmitting the likelihood of match between the user and each of the other users to the web server for further processing.
’321 Patent at 13:48-14:3.
Figure 5, reproduced below, depicts an embodiment of the claimed invention similar to the one disclosed in Claim 8: The specification of the ’321 Patent discloses that "using a plurality of match servers would allow the system to quickly connect the users based on their similarities." As the specification further explains, "[b]y using the ‘divide and conquer’ design, the system can scale to a nearly unlimited number of members and polls." Thus, the invention described in the specification purports to improve the matching process through the use of multiple match servers in parallel—as opposed to a single or a sequential set of match servers.
Id. , Fig. 5.
Id. at 1:56-60.
Id. at 7:61-62.
Borrowing from and building on the analogy employed by the Kinglite Holdings court, each "match server" here acts as a separate chef assigned to a different step in cooking the risotto. For example, one chef would be assigned to cook the poached egg while another chef would be assigned to stir and add broth to the rice. Once each task is complete, the chefs then combine their separate efforts to make the risotto, similar to the "receiving in the match aggregator ..." and "compiling the likelihood of matches ..." limitations. The "match servers" and "match aggregator" do not improve the functionality of the "processor"; rather, they "improve the experience of the user of the [data processing system] because the user is able to access aspects of the system faster than it would without the multitasking improvement." See Kinglite Holdings , 2016 WL 4205356, at *5. Accordingly, Claim 8 is also directed to an abstract idea.
Finally, the Court rejects Trinity's argument that the Court must accept its allegations that the Asserted Claims are directed to "the improvement of general-purpose computing" and "advances to matching protocols." Step one of the Alice / Mayo inquiry is a purely "legal question that can be answered based on the intrinsic evidence," whereas step two may involve factual questions. See CardioNet, LLC v. InfoBionic, Inc. , 955 F.3d 1358, 1372 (Fed. Cir. 2020), cert. denied sub nom. InfoBionic, Inc. v. Cardionet, LLC , ––– U.S. ––––, 141 S. Ct. 1266, 209 L.Ed.2d 8 (2021) ; see also GREE, Inc. v. Supercell Oy , 2021 WL 1917131, at *3 (E.D. Tex. Apr. 16, 2021), report and recommendation adopted, 2021 WL 1702424 (E.D. Tex. Apr. 29, 2021) ("The issue of whether the claims are directed to a patent ineligible concept under Alice Step One is a question of law for the Court, but fact questions may exist concerning the analysis under Alice Step Two."). Trinity does not cite any legal authority holding that factual issues may preclude a finding that a claim is directed to an abstract idea rather than an improvement in computer functionality. When viewed as a whole in light of the intrinsic evidence, the Asserted Claims are all directed to an abstract idea.
Because the Court finds that the Asserted Claims are directed to an abstract idea, the Court continues to step two of the Alice / Mayo framework.
C. Alice /Mayo Step Two
Covalent argues that the Asserted Claims do not recite an inventive concept, as "[t]hey merely describe the abstract process of matching users who gave corresponding answers to a question through the use of off-the-shelf computer technology." Relying on the District of Delaware's decision in Jedi Techs. and the Federal Circuit's decision in OIP Techs., Inc. v. Amazon.com, Inc. , 788 F.3d 1359 (Fed. Cir. 2015), Covalent explains that "[t]he Asserted Claims recite nothing more than generic computer technology and structures." Covalent emphasizes that the specifications of the Patents-in-Suit "make clear the claimed invention can be implemented on generic hardware and software using any well-known programming method."
See Motion at 21:9-12.
Id. at 21:12-22:12 (citing 2017 WL 3315279, at *7-*8 ; 788 F.3d 1359, 1361, 1363-64 (Fed. Cir. 2015) ).
Id. at 22:12-15 (citing ’321 Patent at 9:56-59, 11:21-59; ’685 Patent at 5:41-63, 9:37-38, 10:16-33, 11:20-52, 12:33-34, 13:32-55).
Covalent also contends that the additional limitations in Claim 2 of the ’685 Patent and the dependent claims do not recite an inventive concept. Specifically, Covalent argues that the "swiping limitation" in the ’685 Patent ’s Claim 2 is not sufficiently inventive, as " ‘[s]imply appending conventional steps, specified at a high level of generality, [is] not "enough" to supply an inventive concept.’ " As Covalent notes, the specification "contains no references whatsoever to swiping, [ ]neither the specification nor the claims describe how the swiping limitation should be implemented or performed," and "[t]he ’685 Patent does not purport to have invented swiping or to have improved the process." Additionally, Covalent argues that "[t]he dependent claims simply add additional abstract concepts—such as asking multiple questions, determining a match by a percentage of corresponding answers, performing the abstract process on multiple generic computer servers, matching users by gender, or performing the process using known distributed computing techniques." Thus, according to Covalent, none of those additional limitations recites an inventive concept.
Id. at 23:3-8 (quoting Alice , 573 U.S. at 216, 134 S.Ct. 2347 ) (citing OIP Techs. , 788 F.3d at 1364 ).
Id. at 23:8-12.
Id. at 24:21-25.
Trinity responds that, even assuming that the Court finds that the Asserted Claims are directed to an abstract idea, "the claims still recite an ‘inventive concept’ that provides ‘significantly more’ and transforms the idea recited in claim 1 into a patent-eligible application in the matching field." Trinity cites the following limitations that it argues are non-conventional: "(1) a progressive poll that matches a user with other users in real time; (2) the use of multiple processors, match servers, unique identifications and/or a match aggregator; (3) carrying out one or more matching operations on a handheld device; or (4) a computer product in the form of a matching app; and (4) [sic ] results reviewable by swiping." Trinity asserts that whether those limitations are non-conventional is a factual question inappropriate for resolution at the motion-to-dismiss stage. Trinity also argues that the ordered combination of limitations in Claim 1 of the ’321 Patent "recites steps in a non-traditional system to rapidly connect multiple users using progressive polling that compare answers in real time based on their unique identification (ID)."
See Opposition at 20:4-7.
Id. at 20:8-14 (citing Amended Complaint ¶ 32).
Id. at 20:20-21:4.
Id. 21:5-16 (citing ’321 Patent at 1:56-3:24).
Covalent first replies that "conducting the matching process in real-time" is not recited in the Asserted Claims, and, even if it was, "using computers to make processes faster is well-known." Covalent next replies that "the use of multiple processors" is not an inventive concept, as the Federal Circuit has already rejected that argument in SAP America . Regarding the use of "mobile devices," "mobile apps," and "swiping" on a mobile device, Covalent argues that each was well-known as of the priority date, which Covalent contends was July 2, 2018—the date that the continuation-in-part application was filed. Specifically addressing the "swiping" limitation, Covalent argues that "[s]wiping between matches is merely a way for users to sort data," and it cannot constitute an inventive concept for the reasons that it raised in its Motion.
See Reply at 9:17-10:4.
Id. at 10:5-15 (citing 898 F.32 at 1170).
Id. at 10:16-12:15.
Id. at 12:16-24.
The Court agrees with Covalent that the Asserted Claims do not recite an inventive concept. As stated above, the "progressive polling" concept recited in Claims 2, 3, and 20, and the "multitasking" concept in Claim 8 of the ’321 Patent are abstract ideas, and, thus, they cannot qualify as the inventive concept. See BSG Tech , 899 F.3d at 1290 ("[i]t has been clear since Alice that a claimed invention's use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept"). Additionally, the "mere recitation of concrete, tangible components [such as a hand-held device] is insufficient to confer patent eligibility to an otherwise abstract idea." TLI , 823 F.3d at 613 (finding that "the claims’ recitation of a ‘telephone unit,’ a ‘server,’ an ‘image analysis unit,’ and a ‘control unit’ fails to add an inventive concept sufficient to bring the abstract idea into the realm of patentability").
Nor is the "swiping" limitation an inventive concept. The specification does not describe "swiping" at all, and the applicant relied on the specification's disclosure of the use of "hand-held devices" in the ’321 Patent to support the claimed limitation in the ’685 Patent. The implication of the applicant's statement is that "swiping" using a hand-held mobile device was well-known enough not to be described; otherwise, the ’685 Patent ’s earliest priority date would be July 2, 2018—the filing date for the ’685 Patent. Taken together, the "swiping limitation" simply "append[s] [a] conventional step[ ], specified at a high level of generality," which is "not enough to supply an inventive concept." Alice , 573 U.S. at 222, 134 S.Ct. 2347 (internal quotation marks omitted); see also Front Row Techs., LLC v. NBA Media Ventures, LLC , 204 F. Supp. 3d 1190, 1274 (D.N.M. 2016), aff'd sub nom. Front Row Techs. LLC v. MLB Advanced Media, L.P. , 697 F. App'x 701 (Fed. Cir. 2017) (finding that the limitations of a "cellular telecommunications network," a "server," a "touch-sensitive display screen," and a "802.11 wireless module" were insufficient to recite an inventive concept).
See Sept. 1, 2020 Applicant's Arguments and Remarks Made in an Amendment, ’685 Patent File History, at 10 (citing ’321 Patent at 8:26-43); see also Dror v. Kenu, Inc. , 2019 WL 5684520, at *5 (N.D. Cal. Nov. 1, 2019) ("[t]he court can take judicial notice of patent-prosecution histories as a matter of public record") (citing Data Engine Techs. LLC v. Google LLC , 906 F.3d 999, 1008 n.2 (Fed. Cir. 2018) ).
See Reply at 12:18-20 (citing OIP Techs., 788 F.3d at 1364 ).
Accordingly, the Court finds that the Asserted Claims do not provide an inventive concept.
D. Request for Formal Claim Construction and Fact Discovery
Trinity argues that, at a minimum, the Court should deny Covalent's instant Motion because the Court needs to conduct a formal claim construction proceeding to determine the scope of the Asserted Claims and that the Court should permit Trinity to take minimal fact discovery to show that the limitations are non-conventional. However, other than as discussed above, Trinity does not provide any concrete claim construction dispute or fact discovery issue that would preclude the dismissal of the Asserted Claims. Accordingly, the Court finds that Trinity's conclusory requests are unavailing. See Simio, LLC v. FlexSim Software Prod., Inc. , 983 F.3d 1353, 1365 (Fed. Cir. 2020) ("The main problem with that argument is that Simio has not explained how it might benefit from any particular term's construction under an Alice § 101 analysis."); see also Cleveland Clinic Found. v. True Health Diagnostics LLC , 859 F.3d 1352, 1360 (Fed. Cir. 2017) (affirming district court's § 101 determination on a motion to dismiss because plaintiff proposed no claim construction that would have changed the analysis).
See Opposition at 23:9-24:28.
V. CONCLUSION
For the foregoing reasons, the Court hereby ORDERS as follows:
1. Covalent's instant Motion is GRANTED .
2. The Amended Complaint is DISMISSED .
3. Judgment will issue accordingly.