Tobii Tech. v. Weinblatt
| Decision Date | 30 August 2021 |
| Docket Number | 2:20-cv-08062 (BRM) (JSA) |
| Parties | TOBII TECHNOLOGY, INC., Plaintiff, v. LEE S. WEINBLATT, Defendant. |
| Court | U.S. District Court — District of New Jersey |
NOT FOR PUBLICATION
Before this Court is a Motion to Dismiss filed by Plaintiff Tobii Technology, Inc. (“Tobii”) seeking to dismiss a Counterclaim filed by Defendant Lee S. Weinblatt's (“Weinblatt”) pursuant to Federal Rule of Civil Procedure 12(b)(6). (ECF No. 20.) Weinblatt opposed the motion. (ECF No. 26.) Tobii replied. (ECF No. 27.) Having reviewed the submissions filed in connection with the motion and having declined to hold oral argument pursuant to Federal Rule of Civil Procedure 78(b), for the reasons set forth below and for good cause appearing, Tobii's Motion to Dismiss is GRANTED in part and DENIED in part.
For the purposes of this Motion to Dismiss, the Court “accept[s] as true all factual allegations in the [Counterclaim] and draw[s] all inferences from the facts alleged in the light most favorable to” Weinblatt Phillips v. Cnty. of Allegheny, 515 F.3d 224, 228 (3d Cir. 2008) (citing Worldcom, Inc. v. Graphnet Inc., 343 F.3d 651, 653 (3d Cir. 2003)). Furthermore, the Court also considers any “document integral to or explicitly relied upon in the complaint.” In re Burlington Coat Factory Secs. Litig., 114 F.3d 1410, 1426 (3d Cir. 1997) (citing Shaw v. Dig. Equip. Corp., 82 F.3d 1194, 1220 (1st Cir. 1996)).
Weinblatt is an inventor in the field of eye movement technology. (ECF No. 26 at 9.) Weinblatt is the holder of U.S. Patent No. 7, 641, 341 B2 (the “'341 Patent”), which was issued on January 5, 2010. (ECF No. 9-1 at 2.) The '341 Patent covers an improved method and apparatus for measuring a viewer's saccadic eye motion (or saccade), as an indicator of the level of the viewer's interest in a visual stimulus such as an advertisement. (ECF No. 26 at 11-12.) Weinblatt alleges Tobii manufactures and sells products that are covered by one or more claims of the '341 Patent. (Id. at 9-10.)
On July 1, 2020, Tobii filed a Complaint against Weinblatt, seeking a declaratory judgment that Tobii is not infringing and has not infringed the '341 Patent. (ECF No. 1.) On November 11, 2020, Weinblatt filed a Counterclaim alleging infringement by Tobii of the '341 Patent. (ECF No. 9 at 22-29.) The Counterclaim asserts infringement of claims 1, 3-7, 10-11, 13-14, 16-20, 2324, and 26 of the '341 Patent (the “Asserted Claims”). (Id. at 25.) On December 16, 2020, Tobii filed a Motion to Dismiss with prejudice Weinblatt's Counterclaim, seeking to invalidate the Asserted Claims under 35 U.S.C. §§ 101 and 112, ¶¶ 2 & 6.[1] (ECF No. 20.) On January 18, 2021, Weinblatt opposed the motion, defending the validity of the '341 Patent under § 101 () and § 112 (definiteness). (ECF No. 26.) On January 25, 2021, Tobii filed a Reply. (ECF No. 27.)
In deciding a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), a district court is “required to accept as true all factual allegations in the complaint and draw all inferences in the facts alleged in the light most favorable to the [plaintiff].” Phillips, 515 F.3d at 228 (citing Worldcom, 343 F.3d at 653). “[A] complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007) (citations omitted). However, the plaintiff's “obligation to provide the ‘grounds' of his ‘entitle[ment] to relief' requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action.” Id. (citing Papasan v. Allain, 478 U.S. 265, 286 (1986)). A court is “not bound to accept as true a legal conclusion couched as a factual allegation.” Papasan, 478 U.S. at 286 (citations omitted). Instead, assuming the factual allegations in the complaint are true, those “[f]actual allegations must be enough to raise a right to relief above the speculative level.” Twombly, 550 U.S. at 555 (citing 5 C. Wright & A. Miller, Federal Practice and Procedure § 1216, pp 235-36 (3d ed. 2004)).
“To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim for relief that is plausible on its face.'” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 570). “A claim has facial plausibility when the pleaded factual content allows the court to draw the reasonable inference that the defendant is liable for misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556). This “plausibility standard” requires the complaint to allege “more than a sheer possibility that a defendant has acted unlawfully, ” but it “is not akin to a probability requirement.” Id. (quoting Twombly, 550 U.S. at 556). “Detailed factual allegations” are not required, but “more than an unadorned, the defendant-harmed-me accusation” must be pled; it must include “further factual enhancement” and not just conclusory statements or a recitation of the elements of a cause of action. Id. (citing Twombly, 550 U.S. at 555, 557).
“Determining whether a complaint states a plausible claim for relief [is] . . . a contextspecific task that requires the reviewing court to draw on its judicial experience and common sense.” Id. at 679. “[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged-but it has not ‘show[n]'-‘that the pleader is entitled to relief.'” Id. (quoting Fed.R.Civ.P. 8(a)(2)). However, courts are “not compelled to accept ‘unsupported conclusions and unwarranted inferences, '” Baraka v. McGreevey, 481 F.3d 187, 195 (3d Cir. 2007) (quoting Schuylkill Energy Res. Inc. v. Pa. Power & Light Co., 113 F.3d 405, 417 (3d Cir. 1997)), nor “a legal conclusion couched as a factual allegation.” Papasan, 478 U.S. at 286 (citations omitted).
While, as a general rule, the court may not consider anything beyond the four corners of the complaint on a motion to dismiss pursuant to Rule 12(b)(6), the Third Circuit has held that “a court may consider certain narrowly defined types of material without converting the motion to dismiss to a summary judgment motion, including items that are integral to or explicitly relied upon in the complaint.” Coulter v. Doerr, 486 Fed.Appx. 227, 228 (3d Cir. 2012) (citing In re Rockefeller Ctr. Props. Sec. Litig., 184 F.3d 280, 287 (3d Cir. 1999)).
Tobii argues the Asserted Claims are directed to the abstract idea of displaying a stimulus (e.g., a commercial) together with monitored information relating to the stimulus. (ECF No. 20-1 at 35.) Tobii maintains the core of the '341 Patent, independent claim 1, recites a method that exposes (i.e., displays), monitors (i.e., collect), and displays information; therefore, it is of a purely functional nature and is not directed to a concrete embodiment of an idea. (Id. at 35-36.) Tobii contends what is claimed in the '341 Patent is not actively “determining” the viewer's interest but “displaying” information as an indication of a viewer's interest, which only represents the purpose or result of “displaying” and does not change the abstract nature of the claims. (ECF No. 27 at 10.) Tobii asserts the '341 Patent only uses well-known components and therefore is not a technological improvement. (Id. at 11.)
Weinblatt counters the '341 Patent is targeted at a technological improvement in the method and apparatus for determining the effectiveness of an advertisement, by focusing on the measurement of saccades, not fixations, to determine a viewer's level of interest in advertisements or specific portions thereof. (ECF No. 26 at 15-16.) Weinblatt explains claim 1 of the '341 Patent is not directed to a mere abstract idea, because it addresses a technological problem-determining a viewer's level of interest based on the saccadic information-that arises only in the computer context, with no manual or pen-and-paper equivalent. (Id. at 16.) Weinblatt states the technology underlying the '341 Patent does not merely collect information, but changes the character of the information by measuring tiny, fast saccadic movements of an eye and using that to determine the level of interest of a viewer in certain aspects of an advertisement. (Id. at 25-26.) The Court declines to make a decision on the § 101 issue at this stage.
The analysis under 35 U.S.C. § 101 follows the two-step process articulated in Alice Corp. Pty. Ltd. v. CLS Bank Int'l to determine whether the patent claims at issue recite a patent-eligible subject matter: (1) “whether the claims at issue are directed to one of those patent-ineligible concepts, ” such as “laws of nature, natural phenomena, and abstract ideas;” and (2) if so, whether “an element or combination of elements” in each claim contains an “inventive concept” which is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” 573 U.S 208, 217-18 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). “[T]he first-stage inquiry [] look[s] at the focus of the claims, ” i.e., “their character as a whole.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted). “If the claims are not directed to an abstract idea, the inquiry ends.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (citing Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017)). Otherwise, the court should proceed to step two of the Alice analysis to determine whether “the claimed elements- ‘individually...
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