Pers. Beasties Grp. LLC v. Nike, Inc.

• Decision Date: 25 October 2018
• Docket Number: 18-cv-516 (JGK)
• Citation: 341 F.Supp.3d 382
• Parties: PERSONAL BEASTIES GROUP LLC, Plaintiff, v. NIKE, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

341 F.Supp.3d 382

PERSONAL BEASTIES GROUP LLC, Plaintiff,

v.NIKE, INC., Defendant.

18-cv-516 (JGK)

United States District Court, S.D. New York.

Signed October 25, 2018

Erik James Dykema, King & Spalding LLP, Craig Lee Uhrich, Vinson & Elkins L.L.P., New York, NY, for Plaintiff.

Richard Mulloy, Amy Walters, Edward H. Sikorski, DLA Piper LLP, San Diego, CA, Tamar Y. Duvdevani, DLA Piper US LLP, New York, NY, for Defendant.

OPINION AND ORDER

John G. Koeltl, United States District Judge

Personal Beasties Group LLC, the plaintiff and owner of U.S. Patent No. 6,769,915 (the " '915 Patent"), alleges that Nike, Inc., the defendant, infringed its '915 Patent. The defendant has moved to dismiss the plaintiff's complaint under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted, arguing that the '915 Patent is ineligible for patent protection under 35 U.S.C. § 101. For the reasons explained below, the defendant's motion is granted .

I.

In deciding a motion to dismiss pursuant to Rule 12(b)(6), the allegations in the complaint are accepted as true, and all reasonable inferences must be drawn in the plaintiff's favor. McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 191 (2d Cir. 2007). The Court's function on a motion to dismiss is "not to weigh the evidence that might be presented at a trial but merely to determine whether the complaint itself is legally sufficient." Goldman v. Belden, 754 F.2d 1059, 1067 (2d Cir.1985). The Court should not dismiss the complaint if the plaintiff has stated "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009).

While the Court should construe the factual allegations in the light most favorable to the plaintiff, "the tenet that a court must accept as true all of the allegations contained in the complaint is inapplicable to legal conclusions." Id. When presented with a motion to dismiss pursuant to Rule 12(b)(6), the Court may consider documents that are referenced in the complaint, documents that the plaintiff relied on in bringing suit and that are either in the plaintiff's possession or that the plaintiff knew of when bringing suit, or matters of which judicial notice may be taken. See Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2002) ; see also Mercator Corp. v. Windhorst, 159 F.Supp.3d 463, 466–67 (S.D.N.Y. 2016).

II.

The '915 Patent, entitled "Interactive System for Personal Life Patterns," was issued to the plaintiff in August 2004. '915 Patent, at [45, 54, 73]. It contains twenty-two claims, comprised of fifteen system claims and seven dependent method claims. Id. col. 7 l. 34 – col. 10 l. 9. The abstract describes the invention as follows:

A user-interactive behavioral modification system includes a base module with an input for a first set of personal data. A feedback interface provides feedback in response to the first data set. A main database maintains the first data set. A main controller generates a main output signal for causing feedback to the user according to a predetermined set of behavioral pattern rules. The feedback interface receives a feedback input signal and includes a display for displaying an appearance of a character based on the first set of personal data an din response to the received input signal. The appearance of the character is controlled to encourage the user to perform desired behavioral responses according to the behavioral pattern rules.

Id. at [57]. In other words, a user inputs information – such as behavioral patterns, goals, and a desired rate of change – into a handheld device. That information is maintained in a "main database." A "main controller" then generates a signal to send feedback to the user according to a set of predetermined behavioral rules. The feedback manifests as a cartoon-like character who, based upon the user's behavior and the predetermined rules, responds accordingly. For example, the character appears in an encouraging pose when the user engages in behavior in line with the user's goals. See id. fig. 7, 36a. The '915 Patent application states that this system and method is unlike other computer-aided life-management tools because it "more deeply engag[es] user interaction"; while other tools are passive, depending upon a user's commitment to interact with them, the claimed invention actively interacts with the user. Id. col. 1 ll. 20-38. Put simply, the '915 Patent claims an invention that collects information, analyzes that information, and then displays the result of the analysis by using a character. The plaintiff alleges that the defendant infringed this patent.

The defendant moves to dismiss the complaint, arguing that the '915 Patent is ineligible for patent protection under 35 U.S.C. § 101 as an abstract idea.

III.

A.

Before conducting a 35 U.S.C. § 101 analysis, it is necessary to determine the scope of the '915 Patent claims to be assessed. The defendant argues that Claim 1¹ is representative of all twenty-two claims. The plaintiff responds that the dependent claims add additional, patentably distinct limitations. Particularly, the plaintiff points to Claims 7, 10, and 12.²

Addressing each asserted claim in a § 101 analysis is unnecessary when the claims are "substantially similar and linked to the same abstract idea." Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (internal quotation marks omitted). Such is the case here. Claims 7 and 10 add only the existence of an alert system and the selection of a predetermined set of rules, respectively. These additions are intimately linked to the abstract idea of modifying undesirable behavioral patterns in the manner described in Claim 1. Claim 12 is a method claim that substantively replicates Claim 1. Where, as here, the system and method claims "are grounded by the same meaningful limitations," they "will generally rise and fall together." Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) ; see Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 134 S.Ct. 2347, 2360, 189 L.Ed.2d 296 (2014) (refusing to distinguish between "method claims recit[ing] the abstract idea implemented on a generic computer" and "system claims recit[ing] a handful of generic computer components configured to implement the same idea"). Thus, none of the claims that the plaintiff identified are patently distinctive. Nor are the other dependent claims not specifically mentioned by the plaintiff. Therefore, it is appropriate to proceed with the § 101 analysis treating Claim 1 as representative of all the '915 Patent's claims.

B.

Patent eligibility, a question of law often involving subsidiary factual questions, can be decided on a motion to dismiss "when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law."³

Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125, 1128 (Fed. Cir. 2018) ; see Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017) (collecting cases affirming § 101 rejections at the motion to dismiss stage), cert. denied, ––– U.S. ––––, 138 S.Ct. 2621, 201 L.Ed.2d 1026 (2018) ; Quantum Stream Inc. v. Charter Commc'ns, Inc., 309 F.Supp.3d 171, 189 (S.D.N.Y. 2018) (dismissing the plaintiff's complaint because the three patents allegedly infringed were patent ineligible under § 101 ).Under 35 U.S.C. § 101, anyone who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent there for." But patent protection does not extend to "[l]aws of nature, natural phenomena, and abstract ideas." Alice, 134 S.Ct. at 2354.

The two-step test described by the Supreme Court in Alice guides the § 101 inquiry. First, a court must "determine whether the claim[ ] at issue [is] directed to one of those patent-ineligible concepts" noted above. Id. at 2355. In this "first-stage filter," the court looks at the character of the claim as a whole, evaluating its "basic thrust." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ; Bascom Glob. Internet Servs., Inc. v. AT & T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016).But the court must avoid oversimplifying the claim because, at some level of abstraction, all inventions can be reduced to patent-ineligible concepts. See In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016).

If the claim at issue embodies a patent-ineligible concept, the court moves to Alice's second step, where the court considers the claim's elements "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, 134 S.Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) ). In this "more precis[e]" inquiry, the court searches for an " ‘inventive concept’ in the application of the ineligible matter to which ... the claim is directed." Elec. Power, 830 F.3d at 1353.An inventive concept exists when an "element or combination of elements ... ‘sufficient[ly] ... ensure[s]that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’ " Alice, 134 S.Ct. at 2355 (final alteration in original) (quoting Mayo, 566 U.S. at 73, 132 S.Ct. 1289 ).

1.

The defendant argues that Claim 1 boils down to a system for (1) collecting information, (2) analyzing information, and (3) providing...