The opinion
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
MIRA ADVANCED TECHNOLOGY
:
SYSTEMS, INC.,
:
Plaintiff, :
: 1:21-CV-07931 (ALC)
-against- :
: OPINION AND ORDER
GOOGLE LLC, :
:
Defendant. :
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ANDREW L. CARTER, JR., United States District Judge:
BACKGROUND
Plaintiff Mira Advanced Technology Systems, Inc (“Mira”) brings an action against
Defendant Google, LLC. (“Google”) for direct and indirect patent infringement under 35 U.S.C. §
1. At issue is United States Patent No. 10,594,854, which is a personal organizer for mobile devices
with “a location-based reminder function.” ECF No. #1 Ex. A (the “854 patent”). Before the Court
is Defendant’s Motion to Dismiss for Failure to State a Claim pursuant to Federal. R. Civ. P.
12(b)(6).
I. Factual Background
A. The Parties
Plaintiff Mira is a West Virginia corporation. Its principal place of business is also in West
Virginia. Relevant here, Mira is the owner of all right, title, and interest of the ‘854 patent, and thus
holds all rights to sue and recover damages for infringement of the aforementioned patent.
Google, the Defendant, is multinational technology company; it has a principal place of
business in California, and it is a Delaware corporation.
B. The ‘854 patent
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On March 17, 2020, the U.S. Patent and Trademark Office (the “PTO”) issued the ‘854
patent to inventor Nitesh Ratnaker. ‘854 Patent. The ‘854 patent is a “location specific personal
organizer system for communication devices.” ‘854 Patent. Utilizing its built-in global positioning
system (“GPS”) mobile devices can determine “if any task in [the] personal organizer is due at its
current location” and alert the user. ‘854 Patent. Like an address book, each “contact list entry” in
Mira’s organizer system has data fields for the location’s name, physical address, geocode, contact
details, website URL and any reminders or tasks. Users can input tasks in multiple forms: text or
images, videos, or audio. To operate Mira’s patent relies on geocoding, which is a process for
determining the unique geographic coordinates for place names or street addresses. At the least,
users must enter the address of a physical location and a task into Mira’s personal organizer system.
A physical address in a contact list entry initiates a search request sent to a geo-code database on a
remote web server. GPS coordinates, alongside other information, corresponding to the physical
address are then auto filled and saved in the relevant data fields for that contact list entry. Now, as a
user goes about their daily life as soon as their device detects its user has ventured into a saved
location, a notification denoting whatever task the user had previously associated with that location
will appear. For example, a could set a reminder instructing them to buy stamps if they are near a
post office.
The term ‘claim’ is used in patent applications to delineate the scope of legal protections
possessed by patent owners. Seven claims, one independent the rest dependent, are used for the ‘854
Patent. The examiner evaluating the Asserted Patent cites several references to prior art including,
Yokoyama, Moran, Ratnakar, Jayanthi, Myllymaki, Massenzio, Blass, Yardeni, Jayanthi and Klassen.
These patents include a parking location reminder (Ratnakar, US. Patent No. 7,411,518). An
electronic diary that stores a user’s schedule and retrieves and transmits address data for upcoming
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destinations to the user’s navigation apparatus (Yokoyama, U.S. Patent No. 5,654,908). A mobile
device that detects proximity to a point on a route and presents the associated audio track
(Myllymaki, 2002/0102988 Al* 8/2002) and a mobile organizer system that alerts users based on the
time or their proximity to a specified task location. (Blass, 2006/0058948). The main drawback to
Blass’ organizer is that inputting tasks associated with a location require users to be physically there.
(Blass, 2006/0058948).
C. Infringement Allegations
Mira alleges that the Google Keep software application has and continues to infringe upon
their ‘854 Patent in violation of 35 U.S.C. § 271(c).
Google Keep software application (“the Accused Infringing Software”), when running and
being operated in a host smart communication device equipped with an on-board GPS
module (after being pre-loaded or installed in the host smart communication device), causes
the host smart communication device to practice one or more respective methods claimed in
one or more of claims 1, 3, 5 and 7 of the Asserted Patent (hereinafter “the Asserted
Claims”) when a specific functional component (“the Accused Infringing Component”) of
the Accused Infringing Software…is invoked to carry out its functions.
ECF No. 28 at 10 (hereinafter “Am. Compl.”). Allegedly, Google’s software commits infringement by
practicing “one or more of the Asserted Claims by performing, either literally or under the doctrine
of equivalents, each and every step of the same respective one or more claimed methods, through
running and operating of the Accused Infringing Software (installed, or otherwise incorporated or
embodied, in the Accused Infringing Devices), particularly its Accused Infringing Component.” Id.
at 13. Mira contests Google’s unauthorized production and sale of devices pre-loaded with the
Accused Infringing Software and any subsequent import or export from the United States.
Plaintiff also claims that Google is in violation of 35 U.S.C § 271(b) by actively inducing its
“unwary end-users” to commit infringement. Id. at 14. The affirmative acts described are: first,
having the Accused Infringing Software pre-installed on Android smartphones and second, having
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the Accused Infringing Software available for download by unwary end-users within the United
States, in at least Google’s Play Store and Apple’s App Store. Finally, Plaintiff alleges that Google’s
infringement was and continues to be willful and deliberate. Since at least January 18, 2021, the
Defendant has had actual notice of their infringement of the ‘854 Patent. Thus, Plaintiff argues the
case is exceptional under 35 U.S.C. § 285.
D. Procedural History
On March 25, 2021, Mira filed A complaint against sole-defendant Google. See ECF No. 1
(“Compl.”). Filed in the Eastern District of Virginia and assigned to District Judge T. Ellis, III and
Magistrate Judge John Anderson, the complaint alleged infringement against a sole defendant. In
response Google filed a Motion to Dismiss for Failure to State a Claim on May 28, 2021. The
Defendant posited two main arguments. First, the ‘854 Patent concerned subject matter ineligible
for patent protection under 35 U.S.C. § 101 and second, Plaintiff had failed to adequately plead
direct or indirect infringement. Google also filed a concurrent motion to transfer.
The Court received Mira’s amended complaint on June 25, 2021, and Google’s motion in
opposition on July 23, 2021. Am. Compl. ECF No. 30. These motions to dismiss and transfer were
denied by the court. See ECF No. 29. Google then renewed their motion to transfer the case
pursuant to 28 U.S.C. § 1404(a) with Mira submitting a response on August 17, 2021. On September
22, 2021, District Judge T. S. Ellis, III granted a transfer to the Southern District of New York.
Accordingly, the Court deemed Defendant’s motion to dismiss unnecessary to address. Currently
before this court is Defendant’s Motion to Dismiss the Plaintiff’s amended complaint in its entirety
with prejudice and without leave to amend. ECF No. 61.
II. Applicable Legal Standards
A. Motion to Dismiss
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For a 12(b)(6) motion to dismiss to prevail “a complaint must contain sufficient factual
matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 554, 570 (2007)). If a “plaintiff
pleads factual content that allows the Court to draw the reasonable inference that the defendant is
liable for the misconduct alleged,” then the claim has facial plausibility. Id. at 678. Courts “may
consider the facts as asserted within the four corners of the complaint together with the documents
attached to the complaint as exhibits, and any documents incorporated in the complaint by
reference,” to decide the motion. Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64
(2d Cir. 2010) (citation and internal quotation marks omitted). District courts deciding issues in
patent cases should “appl[y] the law of the circuit in which it sits to nonpatent issues and the law of
the Federal Circuit to issues of substantive patent law.” In re Omeprazole Patent Litig., 490 F. Supp. 2d
381, 399 (S.D.N.Y. 2007) (citing Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1378-79 (Fed.
Cir. 2005)); see, e.g., Desenberg v. Google, Inc., No. 09-CV-10121, 2009 U.S. Dist. LEXIS 66122, 2009
WL 2337122, at 5 (S.D.N.Y. July 30, 2009). Travel Sentry, Inc. v. Tropp, 527 F. Supp. 3d 256, 262
(E.D.N.Y. 2021).
B. Validity of Patents
35 U.S.C. § 101 states a patentable invention is “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof.” Judicial
exceptions to patentability are “laws of nature, abstract ideas and natural phenomena.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014). Even if every other legal requirement of patentability is
met, a patent claim without patent-eligible subject matter as described in §101 must be rejected. In re
Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008), affirmed by Bilski v. Kappos, 561 U.S. 593 (2010). Patent
eligibility can be decided on a Motion to Dismiss “when there are no factual allegations that, taken
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as true, prevent resolving the eligibility questions as a matter of law.” Aatrix Software, Inc. v. Green
Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
DISCUSSION
1. Alice/Mayo Test
Introduced in Mayo and further clarified in Alice, courts have relied on the two-step
Alice/Mayo test to determine patent eligibility. Alice, 573 U.S. at 208; Mayo Collaborative Servs. v.
Prometheus Laws., Inc. 566 U.S. 66 (2012). This test requires that courts consider the elements of each
asserted 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 218.
Step one of the Alice/Mayo test is to determine whether patent claims are directed to an
abstract idea (such as mathematical concepts, methods of organizing human activity and mental
processes), a law of nature or a natural phenomenon. The “‘directed to’ inquiry applies a stage-one
filter to claims, considered in light of the specification, based on whether ‘their character as a whole
is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016). A claim “directed to” an abstract theory is not patent eligible because the structure of the
claim monopolizes the judicial exception in 35 U.S.C. § 101 and restricts others from using “basic
tools of scientific or technological work.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc. 569 U.S.
576, 576 (2013). However, the Supreme Court cautions courts to “tread carefully in construing this
exclusionary principle lest it swallow all of patent law…At some level, ‘all inventions... embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’…Thus, an
invention is not rendered ineligible for patent simply because it involves an abstract concept.” See
Diamond v. Diehr, 450 U.S. 175 (1981). Applications of concepts derived from laws of nature or
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natural phenomena that are “to a new and useful end” have been determined to remain eligible for
patent protection. Mayo, 566 U.S. at 71. In other words, patent claims improving existing
technological processes tend not to be directed towards an abstract idea. Enfish, 822 F.3d at 1335.
Step two of the Alice/Mayo analysis is only reached if the first step determines claims are
directed to an abstract idea and are therefore not patent-eligible. Id. at 1339. Step two is an
examination of whether an abstract idea embodies an “inventive concept.” Alice, 573 U.S. at 217-18,
(citing Mayo, 566 U.S. at 72-73). Abstract concepts can be valid patent claims but only when they
illustrate an element of inventiveness that advances prior art. Verint Sys. v. Red Box Recorders Ltd., 226
F. Supp. 3d 190, 202 (S.D.N.Y. 2016). However,
an inventive concept is unlikely to exist when the processes or calculations claimed in a
patent could be accomplished within the human mind…or even when assisted with a simple
device or accomplished in real time with variable inputs being affected…[T]o salvage an
otherwise patent-ineligible process, a computer must be integral to the claimed invention,
facilitating the process in a way that a person making calculations and computations could
not.
Ghaly Devices LLC v. Humor Rainbow, Inc., 443 F. Supp. 3d 421, 428 (S.D.N.Y. 2020) (internal citations
omitted).
ANALYSIS
Google outlines two arguments in support of their motion to dismiss. First, Google argues
Mira’s ‘854 patent is invalid because it attempts to protect an abstract idea without an inventive
concept, instead of the subject matter eligible for patent protection under 35 U.S.C. § 101. Second,
Google argues that even if the ‘854 patent is valid, Plaintiff’s complaint does not reach the pleading
threshold for claims of direct, indirect, or willful infringement. ECF No. 66. The Court agrees,
finding that Mira’s claims are directed towards patent-ineligible concepts.
III. Validity of ‘854 patent
A. Alice/Mayo Analysis Step 1: Abstract Ideas
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Defendant describes Mira’s patent as “providing a reminder to a user at a particular
location,” and analogizes it to CalAmp which concerns a method patent for “...determining if
something is in the right place at the right time.” ECF No. 61 at 1. In CalAmp the representative
claim recited:
A method for determining whether an article tracking device is within a spatial zone, the
method comprising the steps of: obtaining a current time and a current position of the
device; determining a spatial zone that corresponds to the current time; determining whether
the current position of the device is within the spatial zone; and sending a request to a server
for a subset of server database records in response to the determination of whether the
current position of the device is within the spatial zone.
CalAmp Wireless Networks Corp. v. ORBCOMM, Inc., 233 F. Supp. 3d 509, 512 (E.D. Va. 2017). The
CalAmp court granted a Rule 12(b)(6) motion, holding that claims directed to methods for determining
whether a device is at a particular location were patent ineligible under the two-step Alice/Mayo
framework. Id. Attempting to differentiate itself, Plaintiff claims CalAmp’s patent “has no resemblance
or similarities whatsoever to Mira’s patented method.” ECF 66 at. 12. Nonetheless, we tend to agree
with Defendant. The ‘854 patent essentially operates by using location addresses entered by a user to
submit a search request to a remote server to receive a set of GPS coordinates in return. The
technology requires the device to use its onboard GPS to determine its spatial zone. Upon determining
its current location reflects the coordinates of a pre-saved contact list entry, the mobile device displays
the user a task reminder. Although Mira’s patented process has slight variations to CalAmp’s patent,
the general concept is very similar, which indicates that Mira’s claim is not patentable.
The pivotal question in Alice/Mayo step one is whether claims are focused on an
“improvement in computer capabilities” or “instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.” Enfish, 822 F.3d at 1336; Chewy, Inc. v. IBM, 2021
U.S. Dist. LEXIS 158871, at 16, 19 (S.D.N.Y. Aug. 23, 2021) (designed specifically to resolve the
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problem in prior uses of JavaScript requiring the development of multiple JavaScript libraries to hold
a combination of formatting and content). Otherwise, the individual steps of collecting information,
analyzing information, and presenting the results of the analysis are all abstract ideas. Electric Power
Group LLC v. Alstom SA, 830 F.3d 1350 (Fed. Cir. 2016). For example, the patent at issue in Verint
Sys. v. Red Box Recorders Ltd. solved an industry-wide problem confronted by call centers that handled
voice over Internet protocol communications. The patent did so by electronically identifying
information to be protected and rendering it unintelligible to anyone without authorization to access
that information. 226 F. Supp. 3d 190 (S.D.N.Y. 2016). The claim in Verint’s patent application
describes “receiving data packets from the network…communicating the data packets to a data
analysis engine… identifying…an interaction to which the data packets belong responsive to
information included within the data packets; and storing…the interaction contained within the data
packets in a storage device.” Id. at 202. The Verint court stated “[t]hese steps are concededly rather
basic, but this Court cannot determine that they are ‘abstract’ as described in step one of Alice.” Id.
The method patent in Verint appears remarkably similar to Mira’s software which essentially: (i)
enables users to input an intended geographical location into their device, (ii) have that information
sent to a remote server to query against the remote geo-code database and obtain relevant GPS
coordinates (iii) receives GPS coordinates from the remote server and (iv) stores the received GPS
coordinates with the user’s corresponding reminder entry. However, the patent in Verint is distinct
from the patent before us because whereas the former improves computer capabilities by identifying
sensitive information and preventing unauthorized access, the latter only improves the user
experience. Mira’s purported innovation is the retrieval of GPS coordinates from a remote database
so users do not have to physically travel to a location or manually input coordinates.
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Rulings in this circuit are consistent with the notion that automating a process already
performed by humans does not lead to patentability under Alice. CalAmp, 233 F. Supp. 3d at 513. The
‘854 patent automates the system of accessing GPS coordinates, but it is not an improvement in
mobile technology or an improvement to the functioning of the device itself. The “need to perform
tasks automatically is not a unique technical problem.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306,
1316 (Fed. Cir. 2019). Therefore “a series of computerized steps is not eligible for protection if the
steps ‘could all be performed by humans without a computer.’’’ Perry St. Software, Inc. v. Jedi Techs., Inc.,
548 F. Supp. 3d 418, 432 (S.D.N.Y. 2021) (quoting Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324 (Fed. Cir. 2016)). U.S Patent No. 8, 150,766 is “essentially a scheme for
computerized management of account balances across a multi-bank, multi-account depository
system,” and S.D.N.Y. held that this patent was invalid because it “merely recites execution on a
computer of a bookkeeping process that could be executed by humans manually: essentially, accessing
and obtaining information.” Island Intellectual Prop., LLC v. Stonecastle Asset Mgmt. LLC, 463 F. Supp. 3d
490, 499 (S.D.N.Y. 2020). Similarly, Mira’s improvement to prior art - the acquisition of GPS
coordinates that autofill the data fields in Mira’s task organizer - could theoretically be performed by
users. The Plaintiff contends having users perform this task puts “tremendous amount of burden on
the user…and [is] susceptible to human errors.” ECF No. 66. However, precedent in this circuit
dictates that “improving a user’s experience ([by] providing “quick and easy access” to low-level data)
does not make the asserted claims non-abstract at step one because the patent does not articulate any
specific technological improvement. See Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1361
(Fed. Cir. 2020).” DigiMedia Tech, LLC v. Viacom CBS Inc., No. 21-CV-1831 (JGK), 2022 WL 836788,
at 6 (S.D.N.Y. Mar. 21, 2022).
B. Alice/Mayo Analysis Step 2: Inventive Concept
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The Alice/Mayo framework requires courts to establish the existence of an “inventive
concept” for patents directed towards an abstract idea. A patent with claims directed to an abstract
idea without an inventive concept is not patentable under 35 U.S.C. § 101. Any patent application’s
claims must contain an “inventive concept” that renders the patent “significantly more than” the
ineligible matter itself. Alice at 1980 (citing Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589, 106 USPQ2d 1972, 1979 (2013). This “inventive concept” needs to be “more than
performance of well-understood, routine, and conventional activities previously known to the
industry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (internal quotation marks
omitted).
Plaintiff considers the ‘854 patent as an advancement on previously existing software, but
courts have established that relying on a database to access information does not satisfy the
inventive concept requirement, nor does sending information over a network. Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). Moreover, Plaintiff acknowledges
users could manually perform the same process but describes it as “an inconvenience” that may
“result in human errors from time to time.” ECF No. 66 at 4. Yet, “relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to render a claim patent
eligible.” Kickstarter, Inc. v. Fan Funded, LLC, No. 11–cv–6909 (KPF), 2015 WL 3947178, at 13
(S.D.N.Y. June 29, 2015) (quoting OIP Techs., 788 F.3d at 1363). Claim 1 in Patent ‘854 does not
explain any non-standard technology or methodology; therefore, Patent ‘854 fails step two of the
Alice/Mayo analysis. Zeta Glob. Corp. v. Maropost Mktg. Cloud, Inc., 2022 U.S. Dist. LEXIS 120208, at
11 (S.D.N.Y. July 7, 2022). After having carefully considered all of Mira’s arguments, I find them
unpersuasive. Patent ‘854 fails to transform the concept of location-based reminders into patent-
eligible subject matter. It claims the abstract idea of location-based notifications by accessing a
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remote server and lacks the “inventive concept” which would be sufficient to “transform” the
claimed subject matter into a patent-eligible application.
IV. Google’s Alleged Infringement
Since the patent claims in this case are invalid, Mira has no right of action against Google for
infringement.
CONCLUSION
For the reasons stated above, the Defendant’s motion is GRANTED, and the Plaintiff’s
infringement claim is DISMISSED.
SO ORDERED.
Dated: New York, New York
August 31, 2022
/s/ Andrew L. Carter, Jr.
ANDREW L. CARTER, JR.
United States District Judge
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