Weisner v. Google LLC

• Decision Date: 28 July 2021
• Docket Number: 20 Civ. 2862 (AKH)
• Citation: 551 F.Supp.3d 334
• Parties: Sholem WEISNER and Shmuel Nemanov, Plaintiff and Involuntary Plaintiff, v. GOOGLE LLC, Defendant.
• Court: U.S. District Court — Southern District of New York

551 F.Supp.3d 334

Sholem WEISNER and Shmuel Nemanov, Plaintiff and Involuntary Plaintiff,

v.GOOGLE LLC, Defendant.

20 Civ. 2862 (AKH)

United States District Court, S.D. New York.

Signed July 28, 2021

Matthew De Preter, William L. Niro, Aronberg Goldgehn, Chicago, IL, Max Moskowitz, Ostrolenk Faber LLP, New York, NY, Jacob Ginsburg, Jacob Ginsburg, Esq. PLLC, Monsey, NY, for Plaintiff and Involuntary Plaintiff Sholem Weisner.

Penina Green, Brooklyn, NY, for Plaintiff and Involuntary Plaintiff Shmuel Nemanov.

Allen W. Wang, Fenwick & West LLP, Mountain View, CA, Daniel Ledesma, Kevin X. McGann, Scott David Baker, Fenwick & West LLP, New York, NY, for Defendant.

ORDER GRANTING MOTION TO DISMISS

ALVIN K. HELLERSTEIN, U.S.D.J.:

Plaintiff Weisner and Involuntary Plaintiff Shmuel Nemanov (collectively "Plaintiffs") bring this action against Defendant Google, LLC ("Google") alleging direct and indirect patent infringement under 35 U.S.C. § 271 (a) - (c) of four patents related to the location history and tracking used in the Google Maps platform. Google seeks to dismiss Plaintiff's Second Amended Complaint ("SAC") under 35 U.S.C. § 101 as invalid patents, and under 12(b)(6) for failure to state a claim under which relief could be granted. ECF No. 75. Google's motion to dismiss is granted.

I. BACKGROUND

Plaintiffs are the co-inventors and co-owners of four patents, U.S. Patent Nos. 10,380,202 ; 10,394,905 ; 10,642,910 ; and 10,642,911 (the " 202 Patent", the " 905 Patent", the " 910 Patent", and the " 911 Patent," respectively). The patents were filed in 2007 and issued in August 2019. SAC ¶ 31, ECF No. 72. The patents all stem from a common parent application and share similar specifications.

A. The 202 Patent

The 202 Patent is "generally directed to a method and a system of creating and/or using physical location histories ... by combining physical encounters between individual members and stationary vendor members of a network at the physical premises of the stationary vendor member in the ‘brick and mortar’ world with mobile web identifiers of the cyber world." SAC ¶ 34. The 202 Patent claims are directed to accumulating "a digital record of a person's physical presence across time." 202 Patent at 1:6-7. This record of location histories would allow a person to review their own history "with the satisfaction, nostalgia, and practical value associated with a digital leg history that meaningfully characterizes that person's life and past physical activities." Id. at 1:33-37. Such records permit a person to review their "life history in a novel and interesting way." Id. at 2:3-6, 2:41-43. The record would also include a "visual timeline" of the included location histories and would include a URL for the vendor. Id. at 21:64-67.

B. The 905 Patent

The 905 Patent is "generally directed to a method and system of combining enhanced computerized searching for a target business with use of physical encounters between individuals having communication devices and vendors ... by increasing the ranking of vendor members in a digital search result by using physical location histories of physical encounters in the ‘brick and mortar’ world between individual members having communication devices and the vendor members." SAC ¶ 40. In essence, the patent uses location history to provide suggestions and recommendations for places to go based on the location history of others with similar histories. Claim 1 identifies a "physical location relationship" between (1) "a searching person," (2) "a reference individual member," (3) "a first stationary vendor member," and (4) "a second stationary vendor member." 905 Patent at 21:38-43, 21:54-56. The relationship limitation states that the location histories for the reference individual member and the searching person both include key data of a secondary vendor. Id. at 21:52-56. The second limitation states that "the reference individual member's physical location history includes key data of the first stationary vendor". Id. at 21:50-52. The system then generates "a computerized search result that increases a ranking of the first stationary vendor," in response to a request from the searching person, thereby creating suggestions for stores or restaurants based on the location histories of users who were previously in the area. Id. at 21:46-49.

C. The 910 Patent

The 910 Patent is "generally directed to a method, system and computer-readable medium for accumulating physical location histories based on digital member entries using a URL or an identifier associated with a URL." SAC ¶ 52. This occurs when an individual member "captur[es] digital member entries and accumulat[es] a physical location history over time at an account associated with the URL or associated identifier of the individual member, ... [which includes] at least one visual timeline of digital member entries ... of a vendor member or a second individual member, during a physical encounter." SAC ¶ 52. Claim 1 of the 910 Patent describes a unilateral physical encounter entry, where a user would input their own "digital member entry" through photos or entries. 910 Patent at 21:28-30.

D. The 911 Patent

The 911 patent is aimed at "a method and system of enhancing digital search results for a business in a target geographic area using URLs of location histories ... by increasing the ranking of vendor members in a digital search result by using physical location histories of physical encounters in the ‘brick and mortar’ world between individual members having communication devices and the vendor members." SAC ¶ 46. A user would be able to search for vendors within a specified geographic area and view their past location history and places visited. See Id. ¶ 45. Claim 1 of the 911 patent states that the search results are prioritized using the criteria of "an appearance of one of the stationary vendor member URLs in the location history of the individual member." 911 Patent at 21:48-51.

Plaintiff alleges that Google is "making, using and/or selling a copycat method and/or system" which infringes on the patents at issue. See SAC ¶¶ 55, 57, 59, 61. Specifically, Plaintiff claims that certain features contained within the Google Maps platform such as the "Your Timeline," "Your Places," and "Your Photos" infringe the patents. See id. ¶¶ 40, 47, Exhs. A-E.

II. PROCEDURAL HISTORY

Plaintiff served Google with cease-and-desist letters in July 2019 and March 2020 regarding the patents. SAC ¶ 63. Weisner filed the instant suit against Google, alleging twelve counts of direct and indirect infringement of the four patents and seeking injunctive and monetary relief. See Am. Compl, ECF No. 15. On January 4, 2021, I ordered that Shmuel Nemanov be re-aligned as an involuntary plaintiff, and, in a separate order that same day, I dismissed the Amended Complaint, holding that Plaintiffs had failed to allege sufficient factual information to satisfy the pleading requirements. See ECF Nos. 67, 68. Following oral argument on January 5, 2021, I further held that the claims of the asserted patents are directed to an abstract idea and also noted that the disclosure of the patent may be insufficient to satisfy the requirements of 35 U.S.C. § 112. See ECF No. 69. I granted Plaintiffs leave to file a Second Amended Complaint and instructed Plaintiffs to "be specific with regard to infringement" and "allege what is claimed that is not an abstract idea." Hearing Tr. at 24:7-10, 19-24, ECF No. 70. On January 22, 2021, Plaintiffs filed the SAC. See ECF No. 72. Google again moves to dismiss the SAC on the grounds that the patents are invalid under 35 U.S.C. § 101. See Mot. Dismiss, ECF No. 76. Google also seeks dismissal under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief could be granted. See id.

III. DISCUSSION

A. 35 U.S.C. § 101 -Patent Eligibility

"Patent eligibility, a question of law often involving subsidiary factual questions, can be decided on a motion to dismiss ‘when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law.’ " Island Intellectual Property, LLC v. Stonecastle Asset Mgmt. LLC , 463 F.Supp.3d 490, 494 (S.D.N.Y. 2020) (quoting Pers. Beasties Grp. LLC v. Nike, Inc. , 341 F. Supp. 3d 382, 386 (S.D.N.Y. 2018) ) (quoting Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d 1121, 1125, 1128 (Fed. Cir. 2018) ), aff'd, 792 F. App'x 949 (Fed. Cir. 2020). Although a court must construe the facts in the light most favorable to the non-moving party, it should not accept as true allegations that contradict matters subject to judicial notice, such as the patent claims, specification, and prosecution history. See, e.g. , Secured Mail Sols. LLC v. Universal Wilde, Inc. , 873 F.3d 905, 913 (Fed. Cir. 2017). Factual disputes about whether an aspect of the claims is inventive "may preclude dismissal at the pleadings stage under § 101." Cellspin Soft, Inc. v. Fitbit, Inc. 927 F.3d 1306, 1318 (Fed. Cir. 2019) (citing Aatrix Software, Inc. , 882 F.3d at 1126-1127 ).

The Supreme Court reiterated a two-step test for determining whether claims are directed to patent-ineligible subject matter in Alice Corp. v. CLS Bank Int'l , 573 U.S. 208, 217-18, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). Step One asks whether the claims as a whole are directed to a patent-ineligible concept, such as an abstract idea. See id. at 217-18, 134 S.Ct. 2347 ; Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 77-79, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) ; Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327, 1335 (Fed. Cir. 2016). If the claims are directed to an abstract concept, then Step Two requires the court to "search for an ‘inventive concept,’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’ " Alice , 573 U.S. at 217-18, 221, 224-26, 134 S.Ct. 2347 (quoting Mayo...