Google LLC v. Sonos, Inc.

1

2

3

4 UNITED STATES DISTRICT COURT

5 NORTHERN DISTRICT OF CALIFORNIA

6

7 GOOGLE LLC, Case No. 20-cv-03845-EMC

8 Plaintiff,

ORDER GRANTING DEFENDANT’S

9 v. MOTION TO DISMISS SECOND

CAUSE OF ACTION

10 SONOS, INC.,

Docket No. 39

11 Defendant.

12

13

14 Plaintiff Google LLC has filed a patent infringement suit against Defendant Sonos, Inc.

15 The case involves five different patents but the pending motion to dismiss filed by Sonos

16 implicates one patent only – i.e., the ‘489 patent. Sonos moves to dismiss the cause of action

17 asserting infringement of the ‘489 patent on the ground that the invention at issue is patent

18 ineligible under 35 U.S.C. § 101. According to Sonos, the ‘489 patent is unpatentable because it

19 simply claims an abstract idea as the invention.

20 I. FACTUAL & PROCEDURAL BACKGROUND

21 The ‘489 patent is titled “Generating Media Content Availability Notification.”

22 The invention “relates generally to determining if media content is available from different

23 content sources” and “notifying a user when the availability of the media content changes.” ‘489

24 patent, col. 1:13-16.

25 The background of the invention is described as follows:

26 In today’s digital age, media content such as movies, video clips,

television shows, music, etc., is becoming available from an ever-

27 increasing number of different content sources. For example, the

etc.), made available to certain entities (e.g., institutions, hospitals,

1 airlines, etc.), or placed on an online source for download or

streaming. The timing of when media content is available from the

2 different content sources can also differ. For example, a movie may

only be shown in a movie theater for a limited period of time,

3 followed by a period of time in which it is available via on-demand

television or online streaming, before being released for download

4 or on a physical media format. This increase in the number of

different content sources, combined with the increase in disparate

5 release schedules for media content, often leads to confusion among

consumers.

6

7 ‘489 patent, col. 1:17-33.

8 Google asserts that Sonos infringes the ‘489 patent, including but not limited to claim 15.

9 See FAC ¶ 47 (alleging infringement of at least claim 15). Claim 15 provides as follows:

10 15. One or more non-transitory computer-readable media having

instructions therein, the instructions being executable by one or

11 more processors to execute a method comprising:

12 receiving, at the one or more processors, a selection of media

content and content delivery preferences, wherein the

13 content delivery preferences comprise a selection of a

plurality of unique online content sources specified by a user

14 interface and user account data for each of the plurality of

unique online content sources;

15

requesting, over a network, content availability data from the

16 plurality of unique online content sources based at least in

part on the selection of media content and the user account

17 data, wherein the content availability data indicates whether

the selection of media content is available to a user account

18 in the user account data;

19 receiving, at the one or more processors, the content

availability data; and

20

using the content availability data to generate a notification

21 for an electronic device, wherein the notification indicates

that the selection of media content is available to at least one

22 user account in the user account data from at least one of the

plurality of unique online content sources.

23

24 ‘489 patent, claim 15; see also ‘489 patent, col. 16:20-22 & FIG. 5 (describing “a process for

25 generating a media content availability notification,” made of the steps of receiving, requesting,

26 receiving, and using).

27 Google alleges that “[t]he ‘489 patent provides a number of solutions to [the] problem

1 things, providing the ability to identify desired online media content availability without repeated

2 user involvement and streamline its delivery in a preferred manner even from protected sources.”

3 FAC ¶ 42. Google adds that the invention “offers a [solution to a] problem that is uniquely

4 associated with the Internet and other large networks – i.e., the ability to easily and efficiently

5 access voluminous amounts of data that is geographically distributed, at different times, in

6 different formats, with differing access restrictions.” FAC ¶ 42. Finally, Google alleges that the

7 ‘489 patent is different from the prior art because, e.g., the prior art “failed to notify a user that

8 selected media content had become available, and was instead limited to merely delivering media

9 content to subscribers distributed across a number of geographic locations” and because the prior

10 art “did not provide . . . a user’s ability to specify a price threshold below which the user would

11 desire to obtain that media content.” FAC ¶ 44.

12 II. DISCUSSION

13 A. Legal Standard

14 Federal Rule of Civil Procedure 8(a)(2) requires a complaint to include “a short and plain

15 statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A

16 complaint that fails to meet this standard may be dismissed pursuant to Federal Rule of Civil

17 Procedure 12(b)(6). See Fed. R. Civ. P. 12(b)(6). To overcome a Rule 12(b)(6) motion to dismiss

18 after the Supreme Court’s decisions in Ashcroft v. Iqbal, 556 U.S. 662 (2009), and Bell Atlantic

19 Corp. v. Twombly, 550 U.S. 544 (2007), a plaintiff’s “factual allegations [in the complaint] ‘must

20 . . . suggest that the claim has at least a plausible chance of success.’” Levitt v. Yelp! Inc., 765

21 F.3d 1123, 1135 (9th Cir. 2014). The court “accept[s] factual allegations in the complaint as true

22 and construe[s] the pleadings in the light most favorable to the nonmoving party.” Manzarek v. St.

23 Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). But “allegations in a

24 complaint . . . may not simply recite the elements of a cause of action [and] must contain sufficient

25 allegations of underlying facts to give fair notice and to enable the opposing party to defend itself

26 effectively.” Levitt, 765 F.3d at 1135 (internal quotation marks omitted). “A claim has facial

27 plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable

1 plausibility standard is not akin to a probability requirement, but it asks for more than a sheer

2 possibility that a defendant has acted unlawfully.” Id. (internal quotation marks omitted).

3 B. General Law on Patent Eligibility

4 Title 35 U.S.C. § 101 defines what is patent eligible. It provides as follows: “Whoever

5 invents or discovers any new and useful process, machine, manufacture, or composition of matter,

6 or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions

7 and requirements of this title.” 35 U.S.C. § 101. The Supreme Court has held that § 101

8 “‘contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas

9 are not patentable.’” Genetic Techs. Ld. v. Merial L.L.C., 818 F.3d 1369, 1374 (Fed. Cir. 2016).

10 “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts

11 are not patentable, as they are the basic tools of scientific and technological work.'“ Id.

12 “[M]onopolization of those tools through the grant of a patent might tend to impede innovation

13 more than it would tend to promote it.” Mayo Collab. Servs. v. Prometheus Labs., Inc., 566 U.S.

14 66, 71 (2012).

15 On the other hand, “too broad an interpretation of [the above] exclusionary principle could

16 eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply

17 laws of nature, natural phenomena, or abstract ideas.” Id. “‘[A]n application of a law of nature or

18 mathematical formula to a known structure or process may well be deserving of patent

19 protection,’” but “to transform an unpatentable law of nature into a patent-eligible application of

20 such a law, one must do more than simply state the law of nature while adding the words ‘apply

21 it.’” Id. at 71-72 (emphasis in original).

22 “Patent eligibility under 35 U.S.C. § 101 is a question of law . . . .” Genetic Techs., 818

23 F.3d at 1373. The Federal Circuit has “repeatedly recognized that in many cases it is possible and

24 proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.” Id.

25 However, the Federal Circuit has also noted that there can be underlying factual questions to a §

26 101 inquiry – e.g., “[w]hether something is well-understood, routine, and conventional to a skilled

27 artisan at the time of the patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360,

1 1121, 1128 (Fed. Cir. 2018) (noting that a court, in evaluating whether a patent has an inventive

2 concept for purposes of patent eligibility, considers whether the patent involves more than the

3 performance of well understood, routine, and conventional activities – which is a question of fact).

4 See, e.g., Berkheimer, 881 F.3d at 1370 (stating that, “[a]t this stage of the case, . . . there is at least

5 a genuine issue of material fact in light of the specification regarding whether claims 4-7 archive

6 documents in an inventive manner that improves these aspects of the disclosed archival system[;]

7 [w]hether claims 4-7 perform well-understood, routine, and conventional activities to a skilled

8 artisan is a genuine issue of material fact making summary judgment inappropriate”).

9 There is a two-step test for patent eligibility under § 101.

10 The test “distinguish[es] patents that claim laws of nature, natural

phenomena, and abstract ideas from those that claim patent-eligible

11 applications of those concepts.” As set forth [by the Supreme

Court] in Alice [Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208

12 (2014)]:

13 First, we determine whether the claims at issue are

directed to one of those patent-ineligible concepts. If

14 so, we then ask, what else is there in the claims

before us? . . . We have described step two of this

15 analysis as a search for an inventive concept – i.e., an

element or combination of elements that is sufficient

16 to ensure that the patent in practice amounts to

significantly more than a patent upon the ineligible

17 concept itself.

18 Genetic Techs., 818 F.3d at 1374 (emphasis added).

19 With respect to step one, the Federal Circuit has emphasized that “‘it is not enough to

20 merely identify a patent-ineligible concept underlying the claim; we must determine whether that

21 patent-ineligible concept is what the claim is “directed to.”’” Thales Visionix, Inc. v. United

22 States, 850 F.3d 1343, 1349 (Fed. Cir. 2017). In other words, what is the focus of the claim? See,

23 e.g., BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1286 (Fed. Cir. 2018) (asking “whether

24 ‘the focus of the claims’ is on a ‘specific asserted improvement in computer capabilities . . . , or,

25 instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely

26 as a tool’”); see also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,

27 1341 (Fed. Cir. 2013) (indicating that a court must “‘identify and define whatever fundamental

1 As for step two, the Federal Circuit has underscored that

2 [t]he inventive concept . . . cannot be furnished by the unpatentable

law of nature (or natural phenomenon or abstract idea) itself. That

3 is, . . . a claim directed to a newly discovered law of nature (or

natural phenomenon or abstract idea) cannot rely on the novelty of

4 that discovery for the inventive concept necessary for patent

eligibility; instead, the application must provide something

5 inventive, beyond mere “well-understood, routine, conventional

activity.” “[S]imply appending conventional steps, specified at a

6 high level of generality, to laws of nature, natural phenomena, and

abstract ideas cannot make those laws, phenomena, and ideas

7 patentable.”

8 Genetic Techs., 818 F.3d at 1376. In addition, “[t]he prohibition against patenting abstract ideas

9 cannot be circumvented by attempting to limit the use of the formula to a particular technological

10 environment or adding insignificant post solution activity.” Mayo, 566 U.S. at 73 (internal

11 quotation marks omitted).

12 C. Burden of Proof Regarding Patent Eligibility

13 Although the parties seem to agree that Sonos has the burden of proving patent

14 ineligibility, the parties disagree as to what is the exact burden of proof – i.e., clear and convincing

15 or something lesser (such as preponderance of the evidence). Not surprisingly, Google argues for

16 the higher burden of proof, and Sonos the lesser.

17 Prior to the Supreme Court’s decision in Alice (issued in 2014), there was some Federal

18 Circuit authority suggesting that patent eligibility should be shown by clear and convincing

19 evidence – even at the pleading stage. See Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1338

20 (Fed. Cir. 2013) (stating that “it will be rare that a patent infringement suit can be dismissed at the

21 pleading stage for lack of patentable subject matter . . . because every issued patent is presumed to

22 have been issued properly, absent clear and convincing evidence to the contrary”), vacated by

23 WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014) (vacating judgment and

24 remanding for further consideration in slight of Alice).

25 But in the wake of Alice, a split of authority arose among district courts as to whether the

26 clear-and-convincing standard applies, particularly when evaluating patent eligibility based on the

27 pleadings only.

makes little sense in the context of a motion to dismiss or motion for

1 judgment on the pleadings, and therefore declined to apply the clear

and convincing evidence standard. See, e.g., TNS Media Res., LLC

2 v. Tivo Res. & Analytics, Inc., No. 11-CV-4039-SAS, 166 F. Supp.

3d 432 (S.D.N.Y. Feb. 22, 2016) (“Because no evidence outside the

3 pleadings is considered in deciding a motion to dismiss or a motion

for judgment on the pleadings, it makes little sense to apply a clear

4 and convincing evidence standard – a burden of proof – to such

motions.”) (quotation marks and emphasis omitted); Protegrity USA,

5 Inc. v. Netskope, Inc., No. 15-CV-02515-YGR, 2015 U.S. Dist.

LEXIS 142633 (N.D. Cal. Oct. 19, 2015) (same). Other courts have

6 applied the clear and convincing evidence standard to Section 101

challenges either without discussion, or because that standard is

7 applied by the Federal Circuit in the context of other challenges to

validity. See OpenTV, Inc. v. Apple Inc., No. 15-CV-02008-EJD,

8 2016 U.S. Dist. LEXIS 10445 (N.D. Cal. Jan. 28, 2016) (noting split

of authority and collecting cases); Affinity Labs of Tex., LLC v.

9 DirecTV, LLC, 109 F. Supp. 3d 916, 932 & n.6 (W.D. Tex. 2015)

(same); c.f. Bascom Res., LLC v. LinkedIn, Inc., 77 F. Supp. 3d 940,

10 945 (N.D. Cal. 2015) (holding that “an alleged infringer asserting an

invalidity defense pursuant to § 101 bears the burden of proving

11 invalidity by clear and convincing evidence” in summary judgment

context).”

12

13 Papst Licensing GMBH & Co. v. Xilinx Inc., 193 F. Supp. 3d 1069, 1079 (N.D. Cal. 2016) (Koh,

14 J.); see also Huawei Techs. Co. v. Samsung Elecs. Co., No. 3:16-cv-02787-WHO, 2016 U.S. Dist.

15 LEXIS 162039, at *20 (N.D. Cal. Nov. 21, 2016) (noting split of authority; ultimately concluding

16 that “[i]t is not necessary to decide whether the heightened burden of proof applies here because

17 defendants fail to establish the invalidity of the patents at issue, even by a preponderance of the

18 evidence”).

19 In February 2018, however, the Federal Circuit provided some limited guidance, noting

20 that, at step two, an inventive concept means that there must be more than performance of well

21 understood, routine, and conventional activities previously known to the industry. “The question

22 of whether a claim element or combination of elements is well-understood, routine and

23 conventional to a skilled artisan in the relevant field is a question of fact. Any fact, such as this

24 one, that is pertinent to the invalidity conclusion must be proven by clear and convincing

25 evidence.” Berkheimer, 881 F.3d at 1368. Sonos seems to acknowledge Berkheimer but suggests

26 that, unless factual questions are actually implicated at step two, the burden of proof should be

27 something less than clear and convincing. See Reply at 1-2 (recognizing that the Court might

1 In the instant case, it is not necessary for the Court to opine as to what is the exact burden

2 of proof here. Even assuming that a heightened burden of proof such as clear and convincing

3 evidence applies, Sonos has sufficiently established patent ineligibility.

4 D. Patent Eligibility in the Computer Context

5 Where computers are involved (as in the instant case), patent eligibility is often contested

6 because the Supreme Court has held that

7 the mere recitation of a generic computer cannot transform a patent-

ineligible abstract idea into a patent-eligible invention. Stating an

8 abstract idea “while adding the words ‘apply it’” is not enough for

patent eligibility. Nor is limiting the use of an abstract idea “‘to a

9 particular technological environment.’” Stating an abstract idea

while adding the words “apply it with a computer” simply combines

10 those two steps, with the same deficient result. Thus, if a patent’s

recitation of a computer amounts to a mere instruction to

11 “implemen[t]” an abstract idea “on . . . a computer,” that addition

cannot impart patent eligibility. This conclusion accords with the

12 pre-emption concern that undergirds our §101 jurisprudence. Given

the ubiquity of computers, wholly generic computer implementation

13 is not generally the sort of “additional featur[e]” that provides any

“practical assurance that the process is more than a drafting effort

14 designed to monopolize the [abstract idea] itself.”

15 Alice, 573 U.S. at 223-24; cf. Bancorp Servs., L.L.C. v. Sun Life Ass. Co. of Canada, 687 F.3d

16 1266, 1278 (Fed. Cir. 2012) (stating that “the fact that the required calculations could be

17 performed more efficiently via a computer does not materially alter the patent eligibility of the

18 claimed subject matter”).

19 Not surprisingly, both parties have cited computer cases that go in their favor. The main

20 cases on which each party relies are discussed below.

21 1. Sonos’s Main Cases

22 a. Electric Power

23 In Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the patent at

24 issue claimed, inter alia, “‘[a] method of detecting events on an inter-connected electric power

25 grid in real time over a wide area and automatically analyzing the events on the . . . grid.’” Id. at

26 1351. The steps that made up the method were: (1) receiving data from grid and non-grid sources,

27 (2) detecting and analyzing events from that data, (3) displaying the results of that analysis, and

1 At step one, the Federal Circuit held that the patent was directed to or focused on an

2 abstract idea. It explained that:

3 • Information is an intangible, and so “collecting information, including when

4 limited to a particular content (which does not change its character as information)

5 [is] within the realm of abstract ideas”;

6 • “[A]nalyzing information by steps people go through in their minds, or by

7 mathematical algorithms, without more, [are] essentially mental processes within

8 the abstract-idea category”; and

9 • “[P]resenting the results of abstract processes of collecting and analyzing

10 information, without more (such as identifying a particular tool for presentation), is

11 abstract as an ancillary part of such collection and analysis.” Id. at 1353-54.

12 The patent at issue reflected “a combination of [the above] abstract-idea processes.” Id. at 1354.

13 At step two, the Federal Circuit found no inventive concept. The court acknowledged that

14 “a large portion of the lengthy claims is devoted to enumerating types of information and

15 information sources available within the power-grid environment”; however, “merely selecting

16 information, by content or source, for collection, analysis, and display does nothing significant to

17 differentiate a process from ordinary mental processes.” Id. at 1355. The court then examined

18 “how the desired result is achieved” to see if there was an inventive concept. Id. (emphasis in

19 original). The patent’s “invocation of computers, networks, and displays” did not give rise to an

20 inventive concept because the patent did not “require any nonconventional computer, network, or

21 display components, or even a ‘non-conventional and non-generic arrangement of known,

22 conventional pieces’”; instead, the patent “merely call[ed] for performance of the claimed

23 information collection, analysis, and display functions ‘on a set of generic computer components’

24 and display devices.” Id.

25 The court distinguished the case under consideration from other cases where a computer-

26 related patent had been found patent eligible.

27 The claims at issue here do not require an arguably inventive device

Cir. 2014) (at JMOL stage finding inventive concept in modification

1 of conventional mechanics behind website display to produce dual-

source integrated hybrid display). Nor do the claims here require an

2 arguably inventive distribution of functionality within a network,

thus distinguishing the claims at issue from those in Bascom, 827

3 F.3d 1341 (at pleading stage finding sufficient inventive concept in

“the installation of a filtering tool at a specific location, remote from

4 the endusers, with customizable filtering features specific to each

end user”). The claims in this case specify what information in the

5 power-grid field it is desirable to gather, analyze, and display,

including in “real time”; but they do not include any requirement for

6 performing the claimed functions of gathering, analyzing, and

displaying in real time by use of anything but entirely conventional,

7 generic technology.

8 Id. at 1355-56. Not surprisingly, Google has relied on both DDR and Bascom in arguing that the

9 patent at issue in the instant case is patent eligible.

10 b. Intellectual Ventures

11 In Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017), the

12 patent claimed, inter alia, a method for creating a database and an index to search the database.

13 See id. at 1326. Per the patent, every record in a database is associated with one or more

14 descriptive terms – e.g., “a database record for a restaurant that serves Chinese food, accepts

15 AMERICAN EXPRESS[,] and offers valet parking could be associated with the terms ‘Chinese,’

16 ‘AMERICAN EXPRESS,’ and ‘valet parking.’” Id. The database index organizes this

17 information using category tags (e.g., cuisine, payment option, amenities) and domain tags (e.g.,

18 restaurant). “Each record in the database includes an index component that identifies the category

19 and domain tags associated with that record.” Id. “When the system receives a search request, a

20 set of tags that corresponds to the request is somehow identified by the system. And the system

21 uses that set of tags to search for records that have an index component identifying the same set of

22 tags.” Id.

23 At step one, the Federal Circuit held that the patent was directed to an abstract idea –

24 “‘creating an index and using that index to search for and retrieve data.’” Id. at 1327.

25 This type of activity, i.e., organizing and accessing records through

the creation of an index-searchable database, includes longstanding

26 conduct that existed well before the advent of computers and the

Internet. For example, a hard copy-based classification system

27 (such as library-indexing system) employs a similar concept as the

1 Id. The court added that it had “previously held other patent claims ineligible for reciting similar

2 abstract concepts that merely collect, classify, or otherwise filter data.” Id.

3 At step two, the court held that there was no inventive concept that transformed the

4 abstract idea above. The fact that the patent required generic computer implementation did not

5 give rise to an inventive concept. See id. at 1328. Moreover, limitations that “recite routine

6 computer functions, such as the sending and receiving information to execute the database search .

7 . . are no more than the performance of well-understood, routine, [and] conventional activities

8 previously known to the industry.” Id. at 1329 (internal quotation marks omitted); see also

9 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (noting that, under the patent,

10 “a computer receives a request for a guarantee and transmits an offer of guarantee in return”;

11 “[t]hat a computer receives and sends the information over a network – with no further

12 specification – is not even arguably inventive”).

13 2. Google’s Main Cases

14 a. Bascom

15 In Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.

16 2016), the patent at issue concerned the filtering of information received over the Internet. The

17 prior art on filtering had drawbacks. For example, if a company put a filtering tool for Internet

18 content on each local computer used by an employee, the tool could be subject to modification by

19 employees (particularly if computer literate); also, it would be difficult and time consuming to

20 install the filtering tool on each employee’s local computer. Relocating the filtering tool to a local

21 or remote server also had drawbacks; for example, a one-size-fits-all filter was not ideal because a

22 single set of filtering criteria often was not appropriate for all end users. See id. at 1343-44.

23 The invention at issue was an improvement over the prior art because it provided

24 individually customizable filtering at a remote server. See id. at 1344.

25 To summarize, the ISP server receives a request to access a website,

associates the request with a particular user, and identifies the

26 requested website. The filtering tool then applies the filtering

mechanism associated with the particular user to the requested

27 website to determine whether the user associated with that request is

that the request was denied.

1

2 Id. at 1345.

3 At step one, the Federal Circuit held that the patent at issue was directed to an abstract

4 idea: “We agree with the district court that filtering content is an abstract idea because it is a

5 longstanding, well-known method of organizing human behavior, similar to concepts previously

6 found to be abstract” (e.g., tracking financial transactions; collecting data, recognizing data, and

7 storing; organizing information through mathematical correlations). Id. at 1348.

8 At step two, the court recognized that limitations such as “local client computer,” “remote

9 ISP server,” and so forth were well known generic computer components. See id. But an

10 inventive concept can arise from the ordered combination of such components.

11 In light of Mayo and Alice, it is of course now standard for a § 101

inquiry to consider whether various claim elements simply recite

12 “well-understood, routine, conventional activit[ies].” The district

court’s analysis in this case, however, looks similar to an

13 obviousness analysis under 35 U.S.C. § 103, except lacking an

explanation of a reason to combine the limitations as claimed. The

14 inventive concept inquiry requires more than recognizing that each

claim element, by itself, was known in the art. As is the case here,

15 an inventive concept can be found in the non-conventional and non-

generic arrangement of known, conventional pieces.

16

The inventive concept described and claimed in the ‘606 patent is

17 the installation of a filtering tool at a specific location, remote from

the end-users, with customizable filtering features specific to each

18 end user. This design gives the filtering tool both the benefits of a

filter on a local computer and the benefits of a filter on the ISP

19 server. . . . On this limited record [the case had been decided by the

lower court at the 12(b)(6) phase], this specific method of filtering

20 Internet content cannot be said, as a matter of law, to have been

conventional or generic.

21

The claims do not merely recite the abstract idea of filtering content

22 along with the requirement to perform it on the Internet, or to

perform it on a set of generic computer components. Nor do the

23 claims preempt all ways of filtering content on the Internet; rather,

they recite a specific, discrete implementation of the abstract idea of

24 filtering content. Filtering content on the Internet was already a

known concept, and the patent describes how its particular

25 arrangement of elements is a technical improvement over prior art

ways of filtering such content.

26

27 Id. at 1349-50; see also id. at 1352 (noting the same).

1 b. DDR

2 In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the patent at

3 issue was

4 directed to systems and methods of generating a composite web

page that combines certain visual elements of a “host” website with

5 content of a third-party merchant. For example, the generated

composite webpage may combine the logo, background color, and

6 fonts of the host website with product information from the

merchant.

7

8 Id. at 1248.

9 The Federal Circuit began its § 101 analysis by noting that,

10 [i]n some instances, patent-ineligible abstract ideas are plainly

identifiable and divisible from the generic computer limitations

11 recited by the remainder of the claim. For example, the Supreme

Court in Alice determined that the claims at issue “simply

12 instruct[ed] the practitioner to implement the abstract idea of

intermediated settlement on a generic computer.” 134 S. Ct. at

13 2359. In Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.

Nov. 14, 2014), the claims merely recited the abstract idea of using

14 advertising as a currency as applied to the particular technological

environment of the Internet. In buySAFE, Inc. v. Google, Inc., 765

15 F.3d 1350, 1355 (Fed. Cir. 2014), the claims recited no more than

using a computer to send and receive information over a network in

16 order to implement the abstract idea of creating a “transaction

performance guaranty.” In Accenture Global Servs., GmbH v.

17 Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013),

the claims merely recited “generalized software components

18 arranged to implement an abstract concept [of generating insurance-

policy-related tasks based on rules to be completed upon the

19 occurrence of an event] on a computer.” And in Bancorp Servs.,

L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278

20 (Fed. Cir. 2012), the claims recited no more than the use of a

computer “employed only for its most basic function, the

21 performance of repetitive calculations,” to implement the abstract

idea of managing a stable-value protected life insurance policy.

22 Under Supreme Court precedent, the above claims were recited too

broadly and generically to be considered sufficiently specific and

23 meaningful applications of their underlying abstract ideas. Although

many of the claims recited various computer hardware elements,

24 these claims in substance were directed to nothing more than the

performance of an abstract business practice on the Internet or using

25 a conventional computer.

26 Id. at 1256.

27 Turning to step one, the court acknowledged that “identifying the precise nature of the

1 Id. at 1257. But ultimately, the court stated, “under any of [the defendant’s or the dissent’s]

2 characterizations [e.g., making two web pages look the same], the . . . patent’s claims satisfy . . .

3 step two.” Id. This was because the patent provided an improvement in computer technology.

4 See id. (stating that “the claimed solution is necessarily rooted in computer technology in order to

5 overcome a problem specifically arising in the realm of computer networks”).

6 In particular, the . . . patent’s claims address the problem of

retaining website visitors that, if adhering to the routine,

7 conventional functioning of Internet hyperlink protocol, would be

instantly transported away from a host’s website after “clicking” on

8 an advertisement and activating a hyperlink. . . .

9 [Under the patent], upon the click of an advertisement for a third-

party product displayed on a host’s website, the visitor is no longer

10 transported to the third party’s website. Instead, the patent claims

call for an “outsource provider” having a web server which directs

11 the visitor to an automatically-generated hybrid web page that

combines visual “look and feel” elements from the host website and

12 product information from the third-party merchant’s website related

to the clicked advertisement. In this way, rather than instantly

13 losing visitors to the third-party’s website, the host website can

instead send its visitors to a web page on the outsource provider's

14 server that 1) incorporates “look and feel” elements from the host

website, and 2) provides visitors with the opportunity to purchase

15 products from the third-party merchant without actually entering

that merchant’s website.

16

17 Id. at 1257-58.

18 The court acknowledged the dissent’s contention that “the ‘store within a store’ concept,

19 such as a warehouse store that contains a kiosk for selling a third-party partner’s cruise vacation

20 packages, is the pre-Internet analog” of the patent. Id. at 1258. But the court did not find the

21 comparison apt because, although the “concept may have been well-known, by the relevant

22 timeframe, that practice did not have to account for the ephemeral nature of an Internet ‘location’

23 or the near-instantaneous transport between these locations made possible by standard Internet

24 communication protocols.” Id. (emphasizing that the brick-and-mortar context did not face the

25 same issue).

26 The Federal Circuit admitted still that

27 not all claims purporting to address Internet-centric challenges are

“directed to a specific method of advertising and content distribution

1 that was previously unknown and never employed on the Internet

before.” 2014 U.S. App. LEXIS 21633. But this alone could not

2 render its claims patent-eligible. In particular, we found the claims

to merely recite the abstract idea of “offering media content in

3 exchange for viewing an advertisement,” along with “routine

additional steps such as updating an activity log, requiring a request

4 from the consumer to view the ad, restrictions on public access, and

use of the Internet.” 2014 U.S. App. LEXIS 21633.

5

The ‘399 patent’s claims are different enough in substance from

6 those in Ultramercial because they do not broadly and generically

claim “use of the Internet” to perform an abstract business practice

7 (with insignificant added activity). Unlike the claims in

Ultramercial, the claims at issue here specify how interactions with

8 the Internet are manipulated to yield a desired result – a result that

overrides the routine and conventional sequence of events ordinarily

9 triggered by the click of a hyperlink. Instead of the computer

network operating in its normal, expected manner by sending the

10 website visitor to the third-party website that appears to be

connected with the clicked advertisement, the claimed system

11 generates and directs the visitor to the above-described hybrid web

page that presents product information from the third-party and

12 visual “look and feel” elements from the host website. When the

limitations of the ‘399 patent’s asserted claims are taken together as

13 an ordered combination, the claims recite an invention that is not

merely the routine or conventional use of the Internet.

14

15 Id. at 1258-59 (emphasis added). Compare Two-Way Media Ltd v. Comcast Cable Communs.,

16 LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (concluding there was “no inventive concept in the

17 ordered combination of [the patent claim] limitations[;][t]he claim uses a conventional ordering of

18 steps – first processing the data, then routing it, controlling it, and monitoring its reception – with

19 conventional technology to achieve its desired result”).

20 c. Finjan

21 In Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the patent at

22 issue was related to identification of and protection against malware. Specifically, the patent

23 claimed, inter alia, a method of (1) receiving a downloadable (i.e., an executable application

24 program), (2) generating a security profile that identifies suspicious code in the received

25 downloadable, and (3) linking the security profile to the downloadable before a web server makes

26 the downloadable available to web clients. See id. at 1303.

27 The Federal Circuit acknowledged that, in a prior case, it had held that:

1 • performing a virus scan on an intermediary computer (to ensure the files are

2 scanned before they can reach a user’s computer) is a conventional approach and

3 therefore also abstract.

4 See id. at 1304. But the court nevertheless concluded at step one that the patent at issue was not

5 directed to an abstract idea.

6 The security profile must include the information about potentially

hostile operations produced by a “behavior-based” virus scan. This

7 operation is distinguished from traditional, “code-matching” virus

scans that are limited to recognizing the presence of previously-

8 identified viruses, typically by comparing the code in a

downloadable to a database of known suspicious code. The

9 question, then, is whether this behavior-based virus scan in the '844

patent constitutes an improvement in computer functionality. We

10 think it does.

11 The “behavior-based” approach to virus scanning was pioneered by

Finjan and is disclosed in the ‘844 patent’s specification. In contrast

12 to traditional “code-matching” systems, which simply look for the

presence of known viruses, “behavior-based” scans can analyze a

13 downloadable’s code and determine whether it performs potentially

dangerous or unwanted operations – such as renaming or deleting

14 files. Because security profiles communicate the granular

information about potentially suspicious code made available by

15 behavior-based scans, they can be used to protect against previously

unknown viruses as well as “obfuscated code” – known viruses that

16 have been cosmetically modified to avoid detection by code-

matching virus scans.

17

18 Id. (emphasis added). The court added that “[t]he security profile approach also enables more

19 flexible and nuanced virus filtering. After an inspector generates a security profile for a

20 downloadable, a user’s computer can determine whether to access that downloadable by reviewing

21 its security profile according to the rules in whatever ‘security policy’ is associated with the user.”

22 Id. (emphasis in original). In short, the patent was “directed to a non-abstract improvement in

23 computer functionality, rather than the abstract idea of computer security writ large.” Id. at 1305.

24 The defendant protested that the patent at issue did not “sufficiently describe how to

25 implement that idea.” Id. The Federal Circuit did not dispute that “a result, even an innovative

26 result, is not itself patentable,” but, it held, here, “the claims recite more than a mere result.

27 Instead, they recite specific steps – generating a security profile that identifies suspicious code and

1 E. Step One

2 Taking into account, inter alia, the above cases, the Court concludes that the ‘498 patent is

3 not patent eligible.

4 As noted above, at step one, the Court must ask what the invention claimed in the patent is

5 directed to – i.e., what is its focus? As Sonos asserts, the invention claimed in the ‘489 patent is

6 directed to collecting information, analyzing it, and providing a notification. See ‘489 patent, col.

7 1:13-16 (“The present disclosure relates generally to determining if media content is available

8 from different content sources. The present disclosure more specifically relates to notifying a user

9 when the availability of the media content changes.”). Under Electric Power, therefore, the

10 invention is directed to an abstract idea. Electric Power clearly states that collecting information

11 and analyzing it fall within the abstract idea category. See also Intellectual Ventures, 850 F.3d at

12 1327 (holding that patent was directed to an abstract idea – i.e., “‘creating an index and using that

13 index to search for and retrieve data’”; also taking note of “patent claims [held] ineligible for

14 reciting similar abstract concepts that merely collect, classify, or otherwise filter data”). As for

15 notification, it ultimately is no different from the presentation of the results of collecting and

16 analyzing information – which Electric Power also deemed within the category of abstract ideas.

17 See Elec. Power, 830 F.3d at 1353-54 (stating that mere presentation of results – without, e.g.,

18 identification of a particular tool for presentation – “is abstract as an ancillary part of such

19 collection and analysis”);

20 Google contends that the ‘489 patent is not directed to an abstract idea because it addresses

21 an Internet-centric problem. See, e.g., Opp’n at 1, 6-7. In so arguing, Google seems to comparing

22 the instant case to DDR. But even in DDR, the Federal Circuit explicitly noted that “not all claims

23 purporting to address Internet-centric challenges are eligible for patent.” DDR, 773 F.3d at 1258;

24 see also Mayo, 566 U.S. at 73 (stating that “[t]he prohibition against patenting abstract ideas

25 cannot be circumvented by attempting to limit the use of the formula to a particular technological

26 environment or adding insignificant post solution activity”) (internal quotation marks omitted).

27 Furthermore, DDR involved a patent which improved computer technology; here the ‘489 patent

1 indicates that the ‘489 patent is ultimately directed to overcoming “humans’ limitations in

2 manually searching for media content.” Opp’n at 6. Simply using a computer as a tool to perform

3 a task more efficiently does not create patent eligibility. See Bancorp, 687 F.3d at 1278 (stating

4 that “the fact that the required calculations could be performed more efficiently via a computer

5 does not materially alter the patent eligibility of the claimed subject matter”).

6 The Court acknowledges that, in Finjan, the Federal Circuit was willing to stop the inquiry

7 at step one, but, there, it was clear the invention claimed was an improvement in computer

8 functionality. Here, Google has not sufficiently explained how the ‘489 patent is an improvement

9 in computer functionality. Again, as noted above, Google is ultimately asserting that the ‘489

10 patent is an improvement over human limitations. Notably, in the other two cases on which

11 Google primarily relies – i.e., Bascom and DDR – the Federal Circuit proceeded to step two. See,

12 e.g., DDR, 773 F.3d at 1257 (at step one, acknowledging that “identifying the precise nature of the

13 abstract idea is not as straightforward as in Alice or some of our other recent abstract idea cases”

14 and therefore turning to step two to resolve the case).

15 F. Step Two

16 At step two, the Court asks whether the patent at issue has an inventive concept. The

17 inventive concept (1) cannot be furnished by the unpatentable abstract idea and (2) must provide

18 something beyond well understood, routine, conventional activity.

19 The inventive concept . . . cannot be furnished by the unpatentable

law of nature (or natural phenomenon or abstract idea) itself. That

20 is, . . . a claim directed to a newly discovered law of nature (or

natural phenomenon or abstract idea) cannot rely on the novelty of

21 that discovery for the inventive concept necessary for patent

eligibility; instead, the application must provide something

22 inventive, beyond mere “well-understood, routine, conventional

activity.” “[S]imply appending conventional steps, specified at a

23 high level of generality, to laws of nature, natural phenomena, and

abstract ideas cannot make those laws, phenomena, and ideas

24 patentable.”

25 Genetic Techs., 818 F.3d at 1376. In addition, “[t]he prohibition against patenting abstract ideas

26 cannot be circumvented by attempting to limit the use of the formula to a particular technological

27 environment or adding insignificant post solution activity.” Mayo, 566 U.S. at 73 (internal

1 In its opposition, Google asserts two inventive concepts: (1) “targeted searching of

2 aggregated content” and (2) notification of when desired content becomes available. Opp’n at 8-9;

3 see also Opp’n at 10 (asserting that “[t]he patent employs a specific tool (targeted searches based

4 on content delivery preferences) to provide a specific solution (an electronic notification that is

5 generated when content becomes available) to a specific problem (media content spread across

6 different sources in a network having different access rights and non-synchronized times of

7 availability)”); Opp’n at 13 (addressing why the invention is different from the prior art – the prior

8 art did not “disclose a method for selecting a plurality of unique online content sources specified

9 by a user interface device and user account data” nor did it disclose “using content availability

10 data to generate a notification”).

11 But the targeted searching, see, e.g., Opp’n at 9 (referring to using data fields such as

12 “unique online content sources, user account data, prioritization selection, pricing, and the

13 potential for identification of related content”), does not support an inventive concept in light of

14 Electric Power. There, the Federal Circuit noted that “merely selecting information, by content or

15 source, for collection, analysis, and display does nothing significant to differentiate a process from

16 ordinary mental processes.” Elec. Power, 830 F.3d at 1355. Nothing indicates that the target

17 searching taught by the ‘489 patent uses something other than routine, unconventional activity.

18 As for notification, as discussed above, it ultimately is no different from the mere presentation of

19 results which, under Electric Power again, falls under the category of abstract ideas.

20 Google protests still that the ‘489 patent has an inventive concept because it provides an

21 architecture for achieving the desired result. But for an architecture to provide an inventive

22 concept beyond the unpatentable abstract idea, there must be sufficient specificity as to “how the

23 desired result is achieved.” Id. at 1355 (emphasis in original). Specificity is important as it staves

24 off the potential monopolization of the basic tools of scientific and technological work. Cf.

25 Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 927 F.3d 1333, 1341 (Fed. Cir.

26 2019) (stating that, “[f]or there to be a patent eligible application of a natural law, there must be a

27 ‘discover[y]’ and the claims must recite a specific application of that ‘discovery’ with established

1 application . . . prevents monopolization of the ‘basic tools of scientific and technological work’”);

2 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (stating that

3 “the structure of the limited rules reflects a specific implementation”; “[b]y incorporating the

4 specific features of the rules as claim limitations, claim 1 is limited to a specific process for

5 automatically animating characters using particular information and techniques and does not

6 preempt approaches that use rules of a different structure or different techniques”).

7 In Bascom, for example, the desired result of filtering was achieved through a specific

8 configuration, i.e., installing a filtering tool at a specific location remote from end-users but with

9 customizable filtering features specific to each end-user. See Bascom, 827 F.3d at 1349-50. Here,

10 the ‘489 patent provides few specifics on how “receiving,” “requesting,” “receiving,” and “using”

11 is accomplished; while there is some reference to content selection, that is, as noted above,

12 abstract in nature. Cf. Two-Way, 874 F.3d at 1337 (at step one, noting that “[t]he claim requires

13 the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating

14 records,’ but does not sufficiently describe how to achieve these results in a non-abstract way”);

15 see also Intellectual Ventures, 850 F.3d at 1329 (noting that limitations that “recite routine

16 computer functions, such as the sending and receiving information to execute the database search .

17 . . are no more than the performance of well-understood, routine, [and] conventional activities

18 previously known to the industry”) (internal quotation marks omitted).

19 G. Premature

20 As a last ditch effort, Google argues that the Court should not resolve the patent eligibility

21 issue at the 12(b)(6) phase and/or prior to claim construction – i.e., it is premature to decide the

22 patent eligibility issue now.

23 To the extent Google makes a claim construction argument, it is not convincing. District

24 courts have held that deferral of a § 101 analysis may be necessary “when a patentee identifies

25 terms requiring construction and explains how resolution of construction disputes is material to

26 resolving the § 101 challenge.” KHN Sols. Inc. v. Vertisense Inc., No. 16-cv-00962-HSG, 2016

27 U.S. Dist. LEXIS 136147, at *5 (N.D. Cal. Sep. 30, 2016); see also Bancorp, 687 F.3d at 1273

1 § 101,” although “it will ordinarily be desirable – and often necessary – to resolve claim

2 construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a

3 full understanding of the basic character of the claimed subject matter”). However, Google has

4 not adequately explained how patent eligibility in the instant case will turn on any specific claim

5 construction; nor can the Court discern how it might be helpful here. Google simply argues that

6 Sonos fails to appreciate that “the ‘489 patent is directed to computing-network-specific

7 problems” and that Sonos’s analogy to human information gathering is not proper. Opp’n at 17.

8 As for the 12(b)(6) argument, it is perhaps a stronger argument, but it ultimately lacks

9 merit as well. As noted above, “[p]atent eligibility under 35 U.S.C. § 101 is a question of law,”

10 such that, “in many cases it is possible and proper to determine patent eligibility under 35 U.S.C. §

11 101 on a Rule 12(b)(6) motion.” Genetic Techs., 818 F.3d at 1373. Admittedly, at step two,

12 where a court evaluates whether there is an inventive concept, there may be a question of fact as to

13 “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time

14 of the patent.” Berkheimer, 881 F.3d at 1369; see also Aatrix, 882 F.3d at 1128 (noting that a

15 court, in evaluating whether a patent has an inventive concept for purposes of patent eligibility,

16 considers whether the patent involves more than the performance of well understood, routine, and

17 conventional activities – which is a question of fact). But here Google has presented no question

18 of fact that needs to be resolved. Notably, in DDR (webpages) and Finjan (virus screening), there

19 was an improvement in the computer functionality. See, e.g., DDR, 773 F.3d at 1258-59 (noting

20 that “the claims at issue here specify how interactions with the Internet are manipulated to yield a

21 desired result – a result that overrides the routine and conventional sequence of events ordinarily

22 triggered by the click of a hyperlink”); Finjan, 879 F.3d at 1304 (noting that the invention covered

23 a behavior-based virus scan, which was different from the traditional code-matching virus scans

24 limited to recognizing the presence of previously identified viruses). In the instant case, the ‘489

25 patent does not lay claim to any improvement in computer functionality. Even if the patent has

26 elements that the prior art did not, see Opp’n at 13 (addressing why the invention is different from

27 the prior art – the prior art did not “disclose a method for selecting a plurality of unique online

1 “using content availability data to generate a notification”), those differences are not about

2 computer functionality.1

3 III. CONCLUSION

4 For the foregoing reasons, Sonos’s motion to dismiss is granted.

5 This order disposes of Docket No. 39.

6

7 IT IS SO ORDERED.

8

9 Dated: November 2, 2020

10

11 ______________________________________

EDWARD M. CHEN

12 United States District Judge

13

14

15

16

17

18

19

20

21

22

23

24

1 The Federal Circuit has cautioned that inventive concept (patent eligibility) should not be

25

confused with novelty (patent validity). See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d

1138, 1151 (Fed. Cir. 2016) (stating that the party misstated the law by asserting that the patent

26

claims contained an inventive concept “because they were not shown to have been anticipated by

. . . or obvious over . . . the prior art”; even though “‘the § 101 patent-eligibility inquiry and . . .

27

the § 102 novelty inquiry might sometimes overlap,’” “a claim for a new abstract idea is still an