The opinion
IN THE UNITED STATES DISTRICT COURT FOR THE
MIDDLE DISTRICT OF NORTH CAROLINA
SHARON TEDESCO, et al.,
Plaintiffs,
v.
Civil Action No. 1:23-1030
SPOONFLOWER, INC., et al.,
Defendants.
MEMORANDUM OPINION AND ORDER
Pending before the court is the motion to dismiss of
defendants Spoonflower, Inc. (“Spoonflower”) and Shutterfly LLC
(“Shutterfly”) brought under Rule 12(b)(6) of the Federal Rules
of Civil Procedure. See ECF No. 16. For the reasons explained
below, the motion is GRANTED.
I. Background
This case arises from defendants’ alleged patent
infringement. See Compl., ECF No. 1 at ¶ 1.
Plaintiffs Sharon and Marc Tedesco patented an invention
called “Fabric Having a Procedure Map,” intended to improve the
“[a]ccurate measuring, marking, and cutting of fabric . . . for
many applications, including upholstery of furniture and the
fabrication of garments, draperies linens and quilts.” Patent
No. 7,310,885, ECF No. 1-1 at 5. According to the patent, the
process had traditionally been done by hand, requiring “careful
and repetitive work.” See id.
At the time the Tedescos filed the initial patent on
December 25, 2007, “[i]n present practice, in order to identify
the straight of grain at any point on a conventional fabric, one
must either reference the selvedge, and measure and mark the
straight of grain at that point, or, if there is no selvedge,
find another way of determining the straight-of-grain.” Id. A
similar process was used for “[i]dentification of other fabric
characteristics [like] a nap or lay direction, or the position
and repeat of a decorative pattern . . . .” Id.
Because of this tedious process, when the patent was filed,
“a significant percentage of sewn items arrive[d] on the market
with visible problems resulting from failure to correctly
account for fabric characteristics . . . .” Id. According to
the patent’s “Summary of the Invention,” the invention sought to
solve this problem by using machines to produce fabrics “having
a procedure map thereon, the procedure map comprising at least
one set of machine-made markings which identifies one or more of
certain fabric characteristics . . . .” Id.
The initial patent contains thirty-two patent “claims.”
See id. at 7-9. The complaint states that “[a]n example of the
pertinent scope of the ‘885 Patent can be found in claim 24 of
the ‘885 Patent.” Compl., ECF No. 1 at ¶ 12. Claim twenty-
four, like the “Summery of the Invention,” describes the
invention as “[a] fabric which has a procedure map thereon, the
procedure map comprising at least one set of machine-made
markings . . . .” Patent No. 7,310,885, ECF No. 1-1 at 8.
Claim twenty-four goes on to describe the various ways in which
the markings may appear on the fabrics and the fabric
characteristics they may identify. See id.
The Tedescos filed a continuation of the patent on August
12, 2008. See Patent No. 7,409,769, ECF No. 1-2. This patent
sets forth twenty claims. See id. The complaint states that
“[e]xamples of the pertinent scope of the ‘769 Patent can be
found in claims 6 and 9, and in claims 14 and 20, of the ‘769
Patent.” Compl., ECF No. 1 at ¶ 13. Those claims, like the
initial patent, describe the invention as a “fabric having a
procedure map thereon . . . .” Patent No. 7,409,769, ECF No. 1-
2 at 7-8.
Defendant Spoonflower engages in the custom fabric printing
business and is a subsidiary of defendant Shutterfly. See
Compl., ECF No. 1 at ¶¶ 2, 4-5. The Tedescos bring this suit
against defendants alleging that Spoonflower infringed upon
their procedure map patents by selling “products that infringe
claims of the Asserted Patents, and using methods that infringe
claims of the Asserted Patents, including but not limited to
fabrics comprising procedure maps that facilitate the cutting
and shaping of fabric for its consumers’ projects . . . .” See
id. at ¶ 19.
Defendants filed this motion to dismiss, arguing that the
procedure map is an “abstract idea” not patentable under 35 U.S.C.
§ 101. See Mem. Supp. Mot. to Dismiss, ECF No. 17 at 3.
II. Legal Standard
Although patent appeals are reviewed by the United States
Court of Appeals for the Federal Circuit, the regional circuit
law determines the standard for motions to dismiss. See Mobile
Acuity Ltd. v. Blippar Ltd., 110 F.4th 1280, 1288 (Fed. Cir.
2024) (citing Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60
F.4th 1349, 1356 (Fed. Cir. 2023)).
Federal Rule of Civil Procedure 8(a)(2) provides that a
pleading must contain “a short and plain statement of the claim
showing that the pleader is entitled to relief.” Fed. R. Civ.
P. 8(a)(2). A Rule 12 (b)(6) motion to dismiss is meant to
“test[ ] the sufficiency of a complaint” and not to “resolve
contests surrounding the facts, the merits of a claim, or the
applicability of defenses.” Republican Party of N.C. v. Martin,
980 F.2d 943, 952 (4th Cir. 1992). To survive such a motion, “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. 544, 570 (2007)).
In considering a Rule 12(b)(6) motion, a court “must accept
as true all of the factual allegations contained in the
complaint,” Erickson v. Pardus, 551 U.S. 89, 94 (2007) (per
curiam) (citations omitted), and all reasonable inferences must
be drawn in the non-moving party’s favor, see Ibarra v. United
States, 120 F.3d 472, 474 (4th Cir. 1997) (citation omitted).
However, the court “need not accept as true unwarranted
inferences, unreasonable conclusions, or arguments.” Giarratano
v. Johnson, 521 F.3d 298, 302 (4th Cir. 2008) (internal
quotation mark omitted). Rule 12(b)(6) protects against
meritless litigation by requiring sufficient factual allegations
“to raise a right to relief above the speculative level,”
Twombly, 550 U.S. at 555, so as to “nudge[ ] the[ ] claims
across the line from conceivable to plausible.” Id. at 570.
Thus, mere legal conclusions should not be accepted as true, and
“[t]hreadbare recitals of the elements of a cause of action,
supported by mere conclusory statements, do not suffice.”
Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 555).
III. Discussion
Section 101 of the Patent Act defines patent-eligible
subject matter as “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof.” 35 U.S.C. § 101. An implicit exception
applies to this statute: “Laws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. Pty., Ltd.
v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2116 (2013)). While abstract ideas are not patentable in
and of themselves, they are patentable if applied to “to a new
and useful end.” Alice, 134 S. Ct. at 2354 (quoting Gottschalk
v. Benson, 93 S. Ct. 253 (1972)).
Whether an allegedly abstract idea is patentable turns on a
two-step inquiry. First, the court must determine whether the
patented claims are directed at abstract ideas. Id. at 2355.
If so, the court turns to the second step which asks whether
“additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012)).
Step two, therefore, “searches for an ‘inventive concept’ to
ensure that in practice, the patent ‘amounts to significantly
more than a patent upon the ineligible concept itself.’” Id.
(cleaned up) (quoting Mayo, 132 S. Ct. at 1294).
Before turning to the two-step analysis, the court must
define the scope of the challenged patent claims.
A.
Limiting the analysis of a § 101 challenge to
representative claims is proper when the claims at issue are
“substantially similar and linked to the same” ineligible
concept. Mobile Acuity Ltd. v. Blippar Ltd., 110 F.4th 1280,
1290 (Fed. Cir. 2024) (quoting Cleveland Clinic Found. v. True
Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017)).
Therefore, a district court “may treat a claim as representative
in certain situations, such as if the patentee does not present
any meaningful argument for the distinctive significance of any
claim limitations not found in the representative claim or if
the parties agree to treat a claim as representative.” Id.
(quoting Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir.
2018)).
When the parties dispute whether claims represent a
challenged concept, a burden-shifting framework is triggered.
“The patent challenger who identifies a claim as
representative of a group of claims bears the initial burden to
make a prima facie showing that the group of claims are
‘substantially similar and linked to the same’ ineligible
concept.” Id. (quoting Cleveland Clinic, 859 F.3d at 1360). If
the patent challenger makes this prima facie showing, “the
burden shifts to the patent owner to present non-frivolous
arguments as to why the eligibility of the identified
representative claim cannot fairly be treated as decisive of the
eligibility of all claims in the group.” Id. “The patent owner
may, for example, articulate why a claim limitation not found in
the representative claim has ‘distinctive significance’ that
would have a material impact on the eligibility analysis.” Id.
(quoting Berkheimer, 881 F. 3d at 1365).
In this case defendants deem as representative of the
challenged concept claim twenty-four of the initial patent and
claims six, nine, fourteen, and twenty of the continuation
patent, as those are the claims offered in the complaint as
examples of the alleged invention. See Mem. Supp. Mot. Dismiss,
ECF No. 17 at 5-9. Defendants contend that each of these claims
describes a process of “printing and identifying ‘procedure
maps’ on fabric using a generic ‘machine.’” See id. at 4.
The Tedescos argue that these claims are not representative
of the challenged concept. They argue that the challenged
claims may relate to other aspects of the invention, such as
claim eighteen of U.S. Patent 7,310,885, which describes a
process by which a machine detects markings on the fabric; claim
twenty-three of that patent, which says that the procedure map
may be woven into the fabric using invisible ink; or claim
twenty-four of U.S. Patent 7,409,769, which requires “the signal
points be a combination of markings that show straight-of-grain
in each of two directions” and also be printed marked in
invisible ink detectable only by machine. See Response, ECF No.
20 at 17-18.
The Tedescos, therefore, argue that “Defendants are making
uneducated and inaccurate guesses as to the claims that
ultimately will be asserted against them . . .” before initial
claims must be disclosed under Rule 103.1 of the Middle District
of North Carolina’s Local Patent Rules and discovery reveals
“the hidden processes” used in defendants’ factories. See id.
Local Rule 103.1 requires plaintiffs to serve upon all
defendants a “Disclosure of Asserted Claims and Preliminary
Infringement Contentions[,]” which, among other things, contains
the claims each defendant allegedly infringed. See Patent L.R.
103.1.
The court disagrees. The allegations of the complaint
allege an infringement upon the general idea of a procedure map
being printed by a machine to mark and identify fabric
characteristics; the Tedescos may not conduct a fishing
expedition before determining what additional infringement
claims to assert.
As in all civil cases, a complaint alleging patent
infringement “must place the alleged infringer ‘on notice of
what activity . . . is being accused of infringement.’”
Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379
(Fed. Cir. 2017). Patents are often found invalid at the
12(b)(6) stage:
Since the Supreme Court decisions in
both Mayo and Alice, “the rate at which
patents were found invalid [under § 101]
increased significantly. From June 2014 to
February 2017, district courts rendered 157
decisions regarding patent invalidity under
§ 101 at the motion to dismiss stage. Of
those 157 decisions, 94 of them, or 60%,
found the claims invalid.
Wanker v. United States, 146 Fed. Cl. 582, 595 (Fed. Cir. 2020)
(cleaned up) (quoting Jeffrey A. Lefstin, Peter S. Menell &
David O. Taylor, Final Report of the Berkeley Center for Law &
Technology Section 101 Workshop: Addressing Patent Eligibility
Challenges, 33 Berkeley Tech. L.J. 551, 576-79 (2018)).
The United States Court of Appeals for the Federal Circuit
has “repeatedly affirmed § 101 rejections at the motion to
dismiss stage, before claim construction or significant
discovery has commenced.” Trinity Info Media, LLC v. Covalent,
Inc., 72 F.4th 1355, 1360-61 (Fed. Cir. 2023) (quoting Cleveland
Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352,
1360 (Fed. Cir. 2017)). “A patentee must do more than invoke a
generic need for claim construction or discovery to avoid grant
of a motion to dismiss under § 101.” Id. Instead, the patentee
must propose a specific claim construction or identify specific
facts that need development and explain why those circumstances
must be resolved before the scope of the claims can be
understood for § 101 purposes. See id.
The Tedescos have invoked a generic need for discovery and
have neither identified specific claim terms that require
construction nor facts that need development before
understanding the scope of the challenged claims. Therefore,
the court will consider as representative of the challenged
concept claims claim twenty-four of the initial patent and
claims six, nine, fourteen, and twenty of the continuation
patent, as those claims are cited as examples of the protected
invention and consistent with the specific allegations of the
complaint.
The court will analyze these claims under the two Alice
prongs to determine whether the claims seek to protect a patent-
ineligible abstract idea.
B.
At the first stage, the court “considers the claims at
issue ‘in their entirety’ to determine ‘whether their character
as a whole’ is directed to a law of nature, natural phenomenon,
or abstract idea.” Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). This requires the
court to begin “by ascertaining the ‘basic character’ of the
claimed subject matter.” Contour IP Holding LLC v. GoPro, Inc.,
113 F.4th 1373, 1379 (Fed. Cir. 2024) (quoting Trinity Info
Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1361 (Fed. Cir.
2023)). In doing so, the court “must avoid describing the
claims at a high level of abstraction, divorced from the claim
language itself.” Id. (quoting Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1337 (Fed. Cir. 2016)).
With this delicate balance in mind, the court agrees with
defendants’ description of the basic character of the claimed
subject-matter: A procedure by which fabric characteristics are
identified and marked onto fabric by a machine.
Defendants argue that this is an abstract idea because
“long before the alleged ‘inventions’ of the patents, humans
routinely identified fabric characteristics such as straight of
grain, nap or lay direction, and position and repeat of a
decorative pattern, and that humans routinely marked the fabric
to indicate these characteristics.” Mem. Supp. Mot. Dismiss,
ECF No. 17 at 17. The court agrees.
“[C]oncepts that courts have found to be abstract have
involved processes that humans can perform without the aid of a
computer, such as processes that can be ‘done mentally’ or using
pen and paper.” Listingbook, LLC v. Market Leader, Inc., 144 F.
Supp. 3d 777, 786 (M.D.N.C. Nov. 13, 2015) (quoting Gottschalk,
93 S. Ct. at 253). “To determine the focus of the claimed
advance at Alice step one, we look to whether the claims are
directed to ‘a specific means or method that improves the
relevant technology’ rather than simply being directed to ‘a
result or effect that itself is the abstract idea.’” Contour IP
Holding LLC, 113 F.4th at 1379 (quoting McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)).
There are numerous examples of similar concepts being
deemed unpatentable abstract ideas.
A patent intended to automate the “previously manual
processing of loan applications” is an abstract idea because
“mere automation of manual processes using generic computers
does not constitute a patentable improvement in computer
technology[,]” and the “‘focus of the claims’ is on the method
of financing, and the recited generic computer elements ‘are
invoked merely as a tool.’” Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (quoting Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
A patent aimed at providing a “consistent and repeatable
hair cut” which is “achieved through the recited steps of
defining a head shape, designating zones, and assigning patterns
to zones” is an abstract idea because “[i]dentifying head shape
and applying hair designs accordingly is an abstract idea
capable . . . of being performed entirely in one’s mind.” In re
Brown, 645 F. App’x 1014, 1016-17 (Fed. Cir. 2016) (per curiam).
A patent that claims a “method for authenticating a user
during an electronic transaction” is an abstract idea because
the claims are “directed to a common method for solving an old
problem[]”: “[U]sing a third party and a random, time-sensitive
code to confirm the identity of a participant to a transaction.”
Asghari-Kamrani v. United Servs. Auto. Ass’n, No. 2:15cv478,
2016 WL 3670804, at *4 (E.D. Va. July 5, 2016).
The Tedesco’s invention is directed at the abstract idea of
marking fabrics to identify fabric characteristics. The patents
claim to improve upon this process by using a machine to improve
the efficiency of the otherwise tedious process. However, the
invocation of a generic machine to automate a previously manual
process is not inventive; the machine is merely used as a tool.
The patents do not describe the machine, and while they do
describe elements of patterns that may be printed by the
machine, the complaint contains no specific allegations that
defendants infringed upon those aspects of the patents.
C.
“The second step in the analysis requires us to determine
whether the claims do significantly more than simply describe
that abstract method.” Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014) (citing Mayo Collaborative Serv.
v. Prometheus Lab’ys, Inc., 132 S. Ct. 1289, 1297 (2012)). The
transformation of an abstract idea into patent-eligible subject
matter “requires more than simply stat[ing] the [abstract idea]
while adding the words ‘apply it.’” Id. (quoting Alice, 134 S.
Ct. at 2357). “A claim that recites an abstract idea must
include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract
idea].’” Id. “Those ‘additional features’ must be more than
‘well-understood, routine, conventional activity.’” Id.
(quoting Mayo, 132 S. Ct. at 1298).
For instance, “claiming the improved speed or efficiency
inherent with applying the abstract idea on a computer [does
not] provide a sufficient inventive concept.” Intellectual
Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1367 (Fed.
Cir. 2015) (citing Bancorp Servs., LLC v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). This is because
“[w]hen a claim ‘abstractly covers results’ without regard to a
specific process or machinery for achieving those results, it
creates preemption concerns because it ‘would prohibit all other
persons from making the same thing by any means whatsoever.’”
Contour IP Holding LLC, 113 F.4th at 1379 (quoting McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016)).
The Tedescos’ patents do not add an inventive concept to
the abstract idea of marking fabric characteristics because the
patents do not describe a specific process or machinery for
achieving the result. The patents describe the abstract concept
and essentially say “apply it” using a non-descript machine.
The patents’ contention that a machine would make this process
more efficient is likely true, but, as noted above, the use of a
generic machine adds no inventive concept to the abstract idea.
Iv. Conclusion
Based on the foregoing, the asserted claims are patent
ineligible subject matter. Accordingly, defendants’ motion to
dismiss (ECF No. 16) is GRANTED.
The Clerk is directed to send a copy of this Memorandum
Opinion and Order to counsel of record.
IT IS SO ORDERED this 26th day of September, 2025.
BNTER:
Raut O Dabo
David A. Faber
Senior United States District Judge
16