Tranxition, Inc. v. Lenovo (United States) Inc.

• Decision Date: 09 July 2015
• Docket Number: No. 3:12-cv-01065-HZ,3:12-cv-01065-HZ
• Parties: TRANXITION, INC., a Delaware corporation, Plaintiff, v. LENOVO (UNITED STATES) INC., a Delaware corporation, Defendant.
• Court: U.S. District Court — District of Oregon

TRANXITION, INC., a Delaware corporation, Plaintiff,
v.
LENOVO (UNITED STATES) INC., a Delaware corporation, Defendant.

No. 3:12-cv-01065-HZ

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON

July 9, 2015

OPINION & ORDER

Arthur S. Beeman
Joel T. Muchmore
Arent Fox LLP
55 Second St., 21st Floor
San Francisco, CA 94105

Dayna J. Christian
Nicholas M.M. Drum
Immix Law Group
121 SW Salmon St., Ste. 1000
Portland, OR 97204

Attorneys for Plaintiff

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Eric J. Klein
Todd E. Landis
Akin Gump Strauss Hauer & Feld LLP
1700 Pacific Ave., Ste. 4100
Dallas, TX 75201

Fred I. Williams
Akin Gump Strauss Hauer & Feld LLP
600 Congress Ave., Ste. 1350
Austin, TX 78701

Kenneth L. Walhood
Blunck & Walhood LLC
2350 Willamette Falls Dr.
West Linn, OR 97068

Attorneys for Defendant

HERNÁNDEZ, District Judge:

Plaintiff Tranxition, Inc. owns U.S. Patent Nos. 6,728,877 (the " '877 patent") and 7,346,766 (the " '766 patent"). The claims generally recite a software method for transferring customized user settings from an old computer to a new computer. Tranxition filed the present infringement action against Defendant Lenovo (United States) Inc. and a separate action against Novell, Inc. that is also before this Court (Case No. 3:12-cv-01404-HZ). The parties in the Novell case have agreed to allow the merits of this case to proceed first.

Currently before the Court are two motions from Lenovo seeking summary judgment of invalidity under Section 101 of the Patent Act. Lenovo's motion for partial summary judgment [229] attacks one specific claim in the '877 patent, while Lenovo's motion for summary judgment [234] is broader in scope, as it attacks all of the remaining independent claims in both of Tranxition's patents-in-suit.

For reasons explained below, the Court finds that Tranxition's patents are aimed at a patent-ineligible abstract idea. Neither of the patent's claims, whether read singly or in

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combination, state an inventive concept sufficient to satisfy the Supreme Court's test for patentability of an abstract idea under Section 101 of the Patent Act. Therefore, Lenovo's motions for summary judgment are granted, and Tranxition's '877 and '766 patents are invalid.

BACKGROUND

The patents at issue recite the same concept: "a method and system for automatic transitioning of configuration settings among computer systems." '877 patent, col. 1, ll. 18-21..¹ Tranxition calls this "the migration process." '877 patent, col. 1, ll. 6-7. "In today's world," the patents explain, "technology changes very quickly, [and] it is very common to replace an old computer system every few years with a new computing system." '877 patent, col. 1, ll. 24-26. A major problem with this change-over is that computer users often spend significant time customizing the settings on their old computers, and would like to transfer many of those settings to their new computers. The transferred settings could be simple, such as a custom desktop wallpaper, or sophisticated, such as network settings. '877 patent, col. 1, ll. 36-47. As the complexity of computers grows, the number of possible configuration settings and the places they might be located increases. It can take significant time and effort to find the old settings, identify where on the new system those settings are located, and then change the new system to match the old one. '877 patent, col. 1, ll. 48-62. The patents claim that "[m]any users often decide to stick with an obsolete old computer system rather than wrestle migration and manual reconfiguration required for a new computer system." '877 patent, col. 2, ll. 9-13. And, like any human process, this "transitioning" of settings from one system to the other is "prone to errors that lead to user frustration." '877 patent, col. 2, ll. 19-21.

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The patents aim to address this problem by "automatically determin[ing] configuration settings customized by a user or network administrator on a[n] old computer system," and providing "an automatic migration of configuration settings from an old computer system to a new computing system without using a time consuming manual migration process." '877 patent, col. 2, ll. 38-44.

The method and system claims that make up the patents describe how the invention achieves automatic migration. First, it identifies the various configuration settings, which include Internet browser settings, a desktop "look and feel," user preferences, e-mail address books, folder names and locations, passwords, registry settings, and more. '877 patent, col. 17, ll. 65-67; col. 18, ll. 1-23. It then identifies the locations of these various settings, and allows the user to select the settings he or she would like to transfer to the new computer. '766 patent, col. 17, ll. 56-62. Next, the invention retrieves the chosen settings, and completes the personality transfer by "manipulating" and "transitioning" the configuration settings to the new computer system. '877 patent, col. 17, ll. 55-62; '766 patent, col. 17, ll. 63-67; col. 18, ll. 1-3.

Between the '877 patent and the '766 patent, there are five independent claims that describe the invention's technological concepts—Claims 1, 16, and 30 of the '877 patent, and Claims 1 and 42 of the '766 patent. The remaining claims that are the subject of Lenovo's motions and this Opinion & Order are dependent, either directly or indirectly, of those claims. Plaintiff's Response to Defendant's Motion for Summary Judgment II ("Pl. Resp. II"), ECF No. 250, at 4-5.

In total, Lenovo asks for summary judgment of invalidity on claims 1-12, 15-26, 29, and 30 of the '877 patent, and claims 1-3, 5-11, 15, and 42-44 of the '766 patent. Lenovo moved separately for summary judgment of invalidity against Claim 30 of the '877 patent, see

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Defendant's Motion for Summary Judgment ("Def. Mot. I"), ECF No. 229, and against the other claims (hereinafter the "Primary Claims"). See Defendant's Motion for Summary Judgment ("Def. Mot. II"), ECF No. 234. Lenovo's asserted grounds for invalidity are the same, however, against both the Primary Claims and Claim 30. Lenovo argues that the claims are unpatentable under Section 101 of the Patent Act because they are directed at an abstract idea and they do not contain an "inventive concept sufficient to transform the claimed abstract idea into a patent-eligible subject matter." Def. Mot. II at 1 (quoting Alice Corp. Pty. Ltd. v. CLS Bank, Int'l, 134 S. Ct. 2347, 2357 (2014)). Tranxition contends that the patents disclose a "computer-based solution to a uniquely computer problem," which is either not abstract, or is sufficiently inventive to be worthy of patent protection. Pl. Resp. II at 1-2.

Since the law governing the two motions is the same, this Opinion & Order resolves both of Lenovo's motions.

STANDARDS

Summary judgment is appropriate if there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The moving party bears the initial responsibility of informing the court of the basis of its motion, and identifying those portions of " 'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (quoting Fed. R. Civ. P. 56(c)).

Once the moving party meets its initial burden of demonstrating the absence of a genuine issue of material fact, the burden shifts to the nonmoving party to present "specific facts" showing a "genuine issue for trial." Fed. Trade Comm'n v. Stefanchik, 559 F.3d 924, 927-28

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(9th Cir. 2009) (internal quotation marks omitted). The nonmoving party must go beyond the pleadings and designate facts showing an issue for trial. Bias v. Moynihan, 508 F.3d 1212, 1218 (9th Cir. 2007) (citing Celotex, 477 U.S. at 324).

The substantive law governing a claim determines whether a fact is material. Suever v. Connell, 579 F.3d 1047, 1056 (9th Cir. 2009). The court draws inferences from the facts in the light most favorable to the nonmoving party. Earl v. Nielsen Media Research, Inc., 658 F.3d 1108, 1112 (9th Cir. 2011).

DISCUSSION

1. Applicable Law

Section 101 of the Patent Act is the starting point for patentability, and provides that "[w]hoever 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 therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. From this sweeping statute, the Supreme Court has carved out as not patentable three broad subjects: "laws of nature, natural phenomena, and abstract ideas." Bilski v. Kappos, 561 U.S. 593, 601 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). Allowing patents over these "basic tools of scientific and technological work" would impede, not promote innovation. Alice,134 S. Ct. at 2354 (quotation marks omitted); see also U.S. CONST. ART. I, § 8, cl. 8 (granting Congress the power to "promote the Progress of Science and useful Arts"). The High Court has "repeatedly emphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human...