Va. Innovation Scis. Inc. v. Amazon.com, Inc., Civil No. 1:16–cv–00861
Decision Date | 05 January 2017 |
Docket Number | Civil No. 1:16–cv–00861 |
Citation | 227 F.Supp.3d 582 |
Parties | VIRGINIA INNOVATION SCIENCES INC., Plaintiff, v. AMAZON.COM, INC., Defendant. |
Court | U.S. District Court — Eastern District of Virginia |
Walter Dekalb Kelley, Jr., Kristen Marie Ward, Hausfeld LLP, William Eugene Bradley, Cahn & Samuels LLP, Washington, DC, for Plaintiff.
Robert Armistead Angle, Troutman Sanders LLP, Richmond, VA, Laura Anne Kuykendall, Troutman Sanders LLP, Mary Catherine Zinsner, Troutman Sanders LLP, Tysons Corner, VA, for Defendant.
Plaintiff Virginia Innovation Sciences, Inc. ("VIS") owns the rights to a family of patents that cover a method, system, and apparatus for transferring video signals from a network to a mobile device and then converting those signals in a manner that allows them to be reproduced on an "alternative display terminal" (e.g. , a television). Alleging infringement of these patents, Plaintiff brought suit against Defendant Amazon.com, Inc. ("Amazon") for marketing and selling, among other things, its Amazon Fire TV and Fire Stick devices, smartphone, mobile phone, and tablet products. Amazon has moved to dismiss the claims related to eight of the ten patents at issue in this case. (Dkt. No. 21). The court heard oral argument on October 14, 2016. For the reasons that follow, the Court finds that VIS's patents are not directed to patent-eligible subject matter under 35 U.S.C. § 101, and it therefore GRANTS Amazon's motion to dismiss.
VIS owns all rights and title to, and interest in, U.S. Patent No. 7,899,492, entitled "Methods, Systems, and Apparatus for Displaying the Multimedia Information from Wireless Communication Networks" (the " '492 patent"). It also is the owner of all rights and title to, and interest in, seven related patents: U.S. Patent No. 8,050,711 (the " '711 patent") ; U.S. Patent No. 8,903,451 (the " '451 patent") ; U.S. Patent No. 8,948,814 (the " '814 patent") ; U.S. Patent No. 9,118,794 (the " '794 patent") ; U.S. Patent No. 8,712,471 ; U.S. Patent No. 9,286,853 (the " '853 patent") ; and U.S. Patent No. 9,355,611 (the " '611 patent"). Collectively, these eight patents make up the " '492 patent portfolio" or " '492 patent family".
In addition, VIS is the owner of all rights and title to, and interest in U.S. Patent No. 9,369,844, entitled "System and Method for Providing Locally Applicable Internet Content with Secure Action Requests and Item Condition Alerts" (the " '844 patent"), and U.S. Patent No. 8,135,398, entitled "Method and Apparatus for Multimedia Communications with Different User Terminals" (the " '398 patent"). VIS also owns U.S. Patent No. RE 46,140, entitled "Method and System for Conducting business in a transnational e–Commerce Network" (the " '140 patent"), which was issued after the initiation of this lawsuit.1 VIS asserts infringement of all 10 patents, but Amazon does not challenge the '844 patent, the '398 patent, or the '140 patent in the instant motion.
The '492 patent was filed on June 24, 2005 and issued on March 1, 2011. The Complaint describes the patent in general terms before moving to specifics; it states:
The '492 Patent Portfolio generally discloses systems and methods for converting video signals for a mobile terminal to accommodate reproduction by an alternative display terminal. To achieve this result, the video signal from a wireless communication network is processed to provide a converted video signal appropriate for an alternative display terminal. This converted video signal is then provided to accommodate the corresponding video display on a screen provided by the alternative (e.g. , external) display terminal
Compl. ¶ 14.
Exemplary Claim 23 of the '492 patent recites:
The '492 patent includes a graphical depiction of the claimed invention:
The depiction shows a network system (104) that produces a signal which is transmitted from the base station (106) to the mobile terminal device (108). From the mobile terminal device, the signal is transmitted to the mobile signal conversion module ("MTSCM" or "intermediary device") (112), which is contained in "housing" (110). The MTSCM converts the mobile signal into a power level and display format that is compatible with the display monitor (114), which reproduces the original signal.
Phrased in non-technical terms, the claimed idea: (1) takes a video feed from a mobile network (e.g. , Verizon, AT & T, T–Mobile, etc.); (2) sends it to a mobile device that; (3) sends it to an intermediary device, which (4) converts the signal; and (5) displays it on a TV in your home. All of the asserted patents claim some form of this same invention.2 As an additional example, Claims 28–33 of the '814 are reproduced in their entirety below:
Although VIS filed this complaint in July 2016, the '492 patent family has a history of related proceedings. In 2013, VIS sued Samsung for infringement in the Eastern District of Virginia. Virginia Innovation Sciences, Inc. v. Samsung Electronics Co. , 983 F.Supp.2d 713 (E.D. Va. 2014). After a claim construction hearing and an adverse non-infringement ruling, VIS appealed to the Federal Circuit. Virginia Innovation Sciences, Inc. v. Samsung Electronics Co. , 614 Fed.Appx. 503 (Fed. Cir. 2015). The Federal Circuit reversed, writing that:
[A]lthough the intrinsic evidence strongly suggests that the claimed 'display format' must be a video signal that is 'ready for use' by a conventional external monitor, the intrinsic evidence before us does not provide a complete understanding of the term. Thus, while review of the intrinsic evidence is commonly dispositive in understanding the ordinary meaning of a claim, such is not the case in this particular instance. For example, the specification does not provide an explanation of what separates a video signal that is 'ready for use' by an external monitor from a video signal that is not. Nor does the specification explain what type of additional processing an external monitor may perform on a signal in a 'display format' in order to display the video content within that signal.
Id. at 510. Thus, the Federal Circuit determined that it could not construe the term "display format" on the record before it and therefore...
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