Personalweb Techs. LLC v. Google LLC

• Decision Date: 12 August 2021
• Docket Number: 2020-1543, 2020-1553, 2020-1554
• Citation: 8 F.4th 1310
• Parties: PERSONALWEB TECHNOLOGIES LLC, Plaintiff-Appellant v. GOOGLE LLC, YouTube, LLC, Defendants-Appellees PersonalWeb Technologies LLC, Plaintiff-Appellant v. Facebook, Inc., Defendant-Appellee PersonalWeb Technologies LLC, Plaintiff-Appellant Level 3 Communications LLC, Plaintiff v. EMC Corporation, VMware, Inc., Defendants-Appellees
• Court: U.S. Court of Appeals — Federal Circuit

8 F.4th 1310

PERSONALWEB TECHNOLOGIES LLC, Plaintiff-Appellant

v.GOOGLE LLC, YouTube, LLC, Defendants-Appellees

PersonalWeb Technologies LLC, Plaintiff-Appellant

v.Facebook, Inc., Defendant-Appellee

PersonalWeb Technologies LLC, Plaintiff-Appellant

Level 3 Communications LLC, Plaintiff

v.EMC Corporation, VMware, Inc., Defendants-Appellees

2020-1543, 2020-1553, 2020-1554

United States Court of Appeals, Federal Circuit.

Decided: August 12, 2021

Lawrence Milton Hadley, Glaser Weil Fink Howard Avchen & Shapiro LLP, Los Angeles, CA, argued for plaintiff-appellant. Also represented by Joel Lance Thollander, McKool Smith, PC, Austin, TX.

Cynthia D. Vreeland, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for all defendants-appellees. Defendants-appellees EMC Corporation, VMware, Inc. also represented by Jonathan Cox, Peter M. Dichiara, Mark Christopher Fleming ; Elizabeth Bewley, Washington, DC.

Matthias A. Kamber, Keker, Van Nest & Peters LLP, San Francisco, CA, for defendants-appellees Google LLC, YouTube, LLC. Also represented by Dan L. Bagatell, Perkins Coie LLP, Hanover, NH.

Heidi Lyn Keefe, Cooley LLP, Palo Alto, CA, for defendant-appellee Facebook, Inc. Also represented by Reuben Ho-Yen Chen, Lam K. Nguyen, Mark R. Weinstein.

Before Lourie, Prost^* , and Reyna, Circuit Judges.

Prost, Circuit Judge.

PersonalWeb Technologies appeals a decision by the United States District Court for the Northern District of California granting judgment on the pleadings for appellees Google LLC, YouTube, LLC, Facebook Inc., EMC Corporation, and VMware, Inc. That decision held various claims of U.S. Patent Nos. 7,802,310 ("the ’310 patent"), 6,415,280 ("the ’280 patent"), and 7,949,662 ("the ’662 patent") ineligible for patenting, and therefore invalid, under 35 U.S.C. § 101.¹ PersonalWeb Techs. LLC v. Google LLC , No. 5:13-CV-01317, 2020 WL 520618, at *14 (N.D. Cal. Jan. 31, 2020). We affirm.

BACKGROUND

I

PersonalWeb's asserted patents, which share a specification and drawings, claim priority from an application filed in 1995. We assume general familiarity with the patented subject matter, as we have discussed the ’310 patent in prior opinions.² See Pers. Web Techs., LLC v. Apple, Inc. , 848 F.3d 987 (Fed. Cir. 2017) ; PersonalWeb Techs., LLC v. Apple, Inc. , 917 F.3d 1376 (Fed. Cir. 2019). In brief, the patents relate to data-processing systems that assign each data item a substantially unique name that depends on the item's content—a content-based identifier. ’310 patent col. 1 l. 44–col. 2 l. 5, col. 3 ll. 50–58, col. 6 ll. 20–24. These identifiers are generated by a mathematical algorithm, such as a cryptographic hash or "message digest" function. Id. at col. 12 l. 21–col. 13 l. 9. The identifier changes when the data item's content changes. Id. at col. 35 ll. 55–63. The patents claim using such identifiers to perform various data-management functions. Claim 24 of the ’310 patent, for example, sets forth a method for using content-based identifiers to control access to data. The method generally proceeds in three steps: (1) receiving a request containing a content-based identifier for a data item, (2) comparing the content-based identifier to a plurality of values, and (3) granting or disallowing access to the data item based on the comparison:

24. A computer-implemented method implemented at least in part by hardware comprising one or more processors, the method comprising:

(a) using a processor, receiving at a first computer from a second computer, a request regarding a particular data item, said request including at least a content-dependent name for the particular data item, the content-dependent name being based, at least in part, on at least a function of the data in the particular data item, wherein the data used by the function to determine the content-dependent name comprises at least some of the contents of the particular data item, wherein the function that was used comprises a message digest function or a hash function, and wherein two identical data items will have the same content-dependent name; and

(b) in response to said request:

(i) causing the content-dependent name of the particular data item to be compared to a plurality of values;

(ii) hardware in combination with software determining whether or not access to the particular data item is unauthorized based on whether the content-dependent name of the particular data item corresponds to at least one of said plurality of values, and

(iii) based on said determining in step (ii), not allowing the particular data item to be provided to or accessed by the second computer if it is determined that access to the particular data item is not authorized.

’310 patent claim 24.

The relevant ’280 and ’662 patent claims reflect a similar pattern but are geared toward different data-management functions. Specifically, the ’280 patent claims use content-based identifiers to retrieve data items, and the ’662 patent claims use content-based identifiers to mark duplicate data items for deletion. E.g. , ’280 patent claim 31; ’662 patent claim 33. The disclosed systems are "intended to work with an existing operating system." ’310 patent col. 6 ll. 25–32.

II

PersonalWeb sued the appellees for patent infringement in the Eastern District of Texas. After claim construction, the cases were transferred to the Northern District of California. That court stayed the cases pending resolution of several inter partes reviews ("IPRs") at the Patent Trial and Appeal Board ("Board"), which challenged various claims. In six IPRs filed by EMC and VMware, the Board held all challenged claims unpatentable (including ’280 patent claims 26 and 38, as well as ’662 patent claim 30). In doing so, the Board found that using hash-based identifiers for data management was disclosed in the prior art. J.A. 3426 (addressing ’280 patent ); J.A. 3462–63 (addressing ’662 patent ). We affirmed all six Board decisions. Pers. Web Techs., LLC v. EMC Corp. , 612 F. App'x 611 (Fed. Cir. 2015). The Board also held various ’310 patent claims unpatentable in a separate IPR filed by Apple Inc. On appeal, we affirmed the Board's claim construction but remanded for it to reassess obviousness under proper procedural constraints.

PersonalWeb Techs. , 848 F.3d at 994. Along the way, we noted that a prior-art reference "discloses a system for using content-based identifiers in performing file-management functions, such as backing up files." Id. at 989. On review of the Board's remand decision, we reversed the Board's finding that a particular limitation was inherently disclosed in the prior art, but we did not disturb our earlier observation that content-based identifiers were known. PersonalWeb , 917 F.3d at 1380–83 (reiterating that "none of the parties disagreed" that the prior-art identifier "corresponded to the claimed content-based identifier").

After the stay was lifted, the appellees moved for judgment on the pleadings that the remaining asserted claims were ineligible under 35 U.S.C. § 101. The district court granted the motion. PersonalWeb , 2020 WL 520618, at *14.³ PersonalWeb appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

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. The Supreme Court has held that "this provision contains an important implicit exception: [l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bank Int'l , 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc. , 569 U.S. 576, 589, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013) ). This exception reflects the " ‘concern that patent law not inhibit further discovery by improperly tying up the future use of’ these building blocks of human ingenuity." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 85, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) ). To assess patent eligibility, we apply the two-step framework set forth in Mayo and further detailed in Alice . At step one, we "determine whether the claims at issue are directed to a patent-ineligible concept" such as an abstract idea. Alice , 573 U.S. at 218, 134 S.Ct. 2347. At step two, "we consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application." Id. at 217, 134 S.Ct. 2347 (cleaned up).

Patent eligibility is a question of law that may involve underlying questions of fact. Simio, LLC v. FlexSim Software Prods., Inc. , 983 F.3d 1353, 1358–59 (Fed. Cir. 2020). But "not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry." Berkheimer v. HP Inc. , 881 F.3d 1360, 1368 (Fed. Cir. 2018). Indeed, that inquiry "may be, and frequently has been, resolved on a Rule 12(b)(6) or (c) motion where the undisputed facts, considered under the standards required by that Rule, require a holding of ineligibility under the substantive standards of law." SAP Am., Inc. v. InvestPic, LLC , 898 F.3d 1161, 1166 (Fed. Cir. 2018) (collecting cases). We apply the procedural law of the regional circuit, here the Ninth Circuit, which reviews Rule 12(c) motions de novo. Allergan, Inc. v. Athena Cosms., Inc. , 640 F.3d 1377, 1380 (Fed. Cir. 2011) (citing Or. Nat. Desert Ass'n v. U.S. Forest Serv. , 550 F.3d 778, 782 (9th Cir. 2008) ). The governing standard is "functionally identical" to that for a motion to dismiss.

Dworkin v. Hustler Mag. Inc. , 867 F.2d 1188, 1192 (9th Cir. 1989). The standard is "whether the complaint at issue contains ‘sufficient factual matter, accepted as true, to state a claim of relief that is plausible on its face.’ " Harris v. Cnty. of Orange , 682 F.3d 1126, 1131 (9th Cir. 2012) (quoting Ashcroft v. Iqbal , 556 U.S. 662,...