Tech. Dev. & Licensing, LLC v. Comcast Corp.

• Decision Date: 19 June 2017
• Docket Number: Case No. 08-cv-3584, Case No. 09-cv-430.
• Citation: 258 F.Supp.3d 884
• Parties: TECHNOLOGY DEVELOPMENT AND LICENSING, LLC, Plaintiff, v. COMCAST CORPORATION, Dish Network Corporation and Echostar Corporation, Defendants.
• Court: U.S. District Court — Northern District of Illinois

258 F.Supp.3d 884

TECHNOLOGY DEVELOPMENT AND LICENSING, LLC, Plaintiff,

v.COMCAST CORPORATION, Dish Network Corporation and Echostar Corporation, Defendants.

Case No. 08-cv-3584, Case No. 09-cv-430.

United States District Court, N.D. Illinois, Eastern Division.

Signed June 19, 2017

Joseph Nevi Hosteny, III, Joseph Hosteny LLC, Arthur Anthony Gasey, Vitale, Vickrey, Niro & Gasey LLP, Chicago, IL, Thomas A. Boshinski, Pro Hac Vice, Alpharetta, GA, for Plaintiff.

Ajay S. Krishnan, Pro Hac Vice, Audrey Hadlock, Pro Hac Vice, David J. Silbert, Pro Hac Vice, Julie Duncan Garcia, Pro Hac Vice, Ryan K.M. Wong, Pro Hac Vice, Keker, Van Nest & Peters LLP, San Francisco, CA, Jeffrey Thomas Norberg, Neal & McDevitt, Northfield, IL, for Defendants.

MEMORANDUM OPINION AND ORDER

Elaine E. Bucklo, United States District Judge

In these twin patent infringement suits, plaintiff Technology Development and Licensing, LLC, alleges that defendants Comcast (in No. 08–cv–3584) and Dish and Echostar (in No. 09–cv–430) infringe various claims of U.S. Patent Re. 35,952, titled "Television Receiver Having Memory Control for Tune–By–Label Feature." The claimed invention provides a "television control system for selecting a television channel corresponding to a preassigned channel designation." '952 Pat., Exh. A to Pl.'s Resp. at col. 2:24–26.

Before me are defendants' motions for judgment on the pleadings, which argue that claims 1 and 2 of the patent—the only claims now at issue—are directed to patent-ineligible subject matter under 35 U.S.C. § 101. For the reasons explained below, I grant the motions.

I.

The '952 patent generally relates to a television control system that offers novel ways of selecting and tuning to television channels provided by cable and satellite providers. Claims 1 and 2 are directed to a system that allows an "operator" to assign individualized labels identifying the various channels on which programming is broadcast, and thereafter allows a viewer to use those labels, rather than the preassigned channel numbers, to select programming. The Background of the Invention explains that historically, television channels were identified by numbers corresponding to both a particular signal frequency and a number on the control of the television receiver. With the advent of cable and satellite television, however, whose providers broadcast programming on different frequencies from traditional over-the-air providers, it became increasingly difficult for viewers to find the channels and programs they were looking for. Accordingly, viewers needed a "conversion chart" to locate their desired channels, which the specification explains was awkward and inconvenient to use, particularly in large cities with more than one cable service provider, or for travelers or other viewers unfamiliar with the local system. '952 Pat. at 2:2–8 (Pl.'s Resp., Exh. A). Claims 1 and 2 of the '952 patent aim to solve this problem by allowing a TV operator to assign labels, or "channel select designations," to various "channel tuning designations," the latter of which correspond to particular signal frequencies. The viewer can then use the operator-assigned labels to select programming.

TDL filed the instant cases in June of 2008 and January of 2009, respectively, but both cases were stayed in 2009 and again in 2014 pending reexamination by the Patent and Trademark Office. TDL also asserted many—but not all—of the claims asserted here in another case, captioned Technology Development and Licensing, LLC v. General Instrument Corp. No. 07–cv–04512 (N.D. Ill.) ("Motorola "), which was also stayed pending reexamination.¹ By early 2015, all of these cases had returned to active status. Then, in December of 2016, Judge Lefkow granted summary judgment in the defendant's favor in Motorola on the ground that the asserted claims—claims 8, 9, 37, and 38—were directed to patent-ineligible subject matter. See Order of December 6, 2016 (the "Motorola Order").

Although the Motorola Order is now final, it did not resolve the § 101 patent eligibility of claims 1 and 2, which are conceptually distinct from the claims at issue in Motorola. Specifically, claims 1 and 2 are drawn to the "tune-by-label" feature described above, while claims 8, 9, 37, and 38 are directed to a distinct, "favorites list" feature of the invention, which allows an operator to create multiple lists of favorite channels that are stored in memory for later use by a viewer to select programming. Indeed, at step 1 of the Alice inquiry, Judge Lefkow described the claims before her as concerning the "routine, conventional activity ... of making multiple lists of selected television channels and storing them so a user can readily choose a desired channel without having to go through the cable provider's full viewer guide." Motorola Order at 8. In this case, by contrast, defendants assert that claims 1 and 2 are drawn to the abstract idea of a conversion chart—an argument that was neither raised nor resolved in Motorola. Accordingly, my analysis begins on a clean slate.

I.

Under 35 U.S.C. § 101, "[w]hoever invents or discovers any new and useful process, machine, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." The Supreme Court has long recognized that this provision contains "an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'l , 569 U.S. 576, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014), (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc. , ––– U.S. ––––, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) ). The Alice Court cautioned, however, that because "[a]t some level, all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas," courts must "tread carefully in construing this exclusionary principle lest it swallow all of patent law." Id. (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 132 S.Ct. at 1293–94 ) (ellipses in Alice , internal quotation marks omitted).

Alice established a two-part framework for determining whether patent claims are drawn to patent-eligible subject matter. First, the court must determine whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea. Id. at 2355. If so, the court must determine whether the claim elements, individually or in combination, contain an "inventive concept" that "transform[s] the nature of the claim" into a patent-eligible application. Id. (quoting Mayo, 566 U.S. 66, 72, 78, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) ). Although the two steps are "plainly related" and involve "overlapping scrutiny of the content of the claims," the first stage inquiry looks at the "focus" of the claims, i.e., their "character as a whole," while the second stage inquiry looks "more precisely at what the claim elements add." Elec. Power Group, LLC v. Alstom S.A. , 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted).

"Whether a claim is drawn to patent-eligible subject matter under § 101 is an issue of law." In re Bilski , 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc), aff'd , 561 U.S. 593, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). Patent eligibility may be resolved on the pleadings and the prosecution history when no material facts are in dispute. Genetic Technologies Ltd. v. Merial L.L.D. , 818 F.3d 1369, 1373 (Fed. Cir. 2016) ; Joao Control & Monitoring Systems, LLC v. Telular Corp. , 173 F. Supp. 3d 717, 724 (N.D. Ill. 2016).

Issued patents generally enjoy a presumption of validity under 35 U.S.C. § 282(a). In Microsoft Corp. v. I 4 I Ltd. Partnership , 564 U.S. 91, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011), a case involving § 102(b)'s "on-sale bar,"² the Supreme Court held that to overcome this presumption, an accused infringer must present clear and convincing evidence of invalidity. Id. at 95, 131 S.Ct. 2238. But as Justice Breyer observed in a concurring opinion joined by Justices Scalia and Alito, the standard announced by the Court applies only when the validity of a patent turns—as it did in the case before it—on disputed factual issues. Id. at 114, 131 S.Ct. 2238. Where, by contrast, the ultimate question of patent validity turns "not upon factual disputes, but upon how the law applies to the facts as given," the clear and convincing standard "has no application." Id. But neither the Supreme Court nor the Federal Circuit has offered definitive guidance on whether, or under what circumstances, the clear and convincing evidentiary standard applies in the § 101 context.

Meanwhile, district courts, and, indeed, individual judges of the Federal Circuit, have disagreed on the issue. Compare CLS Bank Int'l v. Alice Co. Pty. Ltd. , 717 F.3d 1269, 1304–05 (Fed. Cir. 2013) (Rader, J., concurring-in-part and dissenting-in-part) ("any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence") with Ultramercial, Inc. v. Hulu, LLC , 772 F.3d 709, 720–21 (Fed. Cir. 2014) (Mayer, J., concurring) ("no presumption of eligibility attends the section 101 inquiry."); compare also Trading Technologies International, Inc. v. CQG, Inc. , 05–cv–4811, 2015 WL 774655, *3 (N.D. Ill. Feb. 24, 2015) (Coleman, J.) (applying clear and convincing standard to deny motion for judgment as a matter of law under § 101 ), aff'd 675 Fed.Appx. 1001, n. 1 (Jan. 18, 2017) (acknowledging, but declining to resolve, dispute over whether clear and convincing standard applies); with Tranxition, Inc. v. Lenovo (U.S.) Inc. , No. 3:12-cv-01065-HZ, 2015 WL 4203469, at *4 (D. Or. July 9, 2015) ("the clear and convincing evidentiary standard simply does not come into play" when resolving summary judgment motion based on § 101 ), aff'd 664 Fed.Appx. 968, 972 n. 1 (declining to "address the proper evidentiary standard"). See also ...