Xoran Techs., LLC v. Planmeca United States, Inc.

• Decision Date: 22 May 2018
• Docket Number: No. 17 CV 7131,17 CV 7131
• Parties: XORAN TECHNOLOGIES, LLC, Plaintiff, v. PLANMECA USA, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

XORAN TECHNOLOGIES, LLC, Plaintiff, v. PLANMECA USA, INC., Defendant.

No. 17 CV 7131

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

May 22, 2018

Judge Sara L. Ellis

OPINION AND ORDER

Plaintiff Xoran Technologies, LLC ("Xoran") brings this suit against Defendant Planmeca USA, Inc. ("Planmeca") under the patent laws of the United States including 35 U.S.C. §§ 271 and 281 alleging that Planmeca infringes claims 1-11 ("claims at issue") of patent 7,551,711 ("the '711 Patent") by manufacturing, importing, selling, and offering for sale ProMax 3D scanners. Planmeca moves to dismiss this suit for failure to state a claim on the grounds that the claims of the '711 Patent are ineligible for patent protection under 35 U.S.C. § 101 ("Section 101"). The Court denies Defendant Planmeca USA, Inc.'s motion to dismiss [18] because the claims at issue of the '711 Patent are not directed to abstract ideas and satisfy the requirements of Section 101 regarding eligibility for patent protection.

BACKGROUND¹

I. Claims at Issue

Xoran owns all right, title, and interest in the '711 Patent, which the United States Patent Office ("USPTO") issued on June 23, 2009. The claims at issue of the '711 Patent relate to a Cone Beam Computed Tomography ("CBCT" or "CT") scanner that also takes external images of a patient. The '711 Patent describes "[a] prior art CT scanner system" which "includes a plurality of cameras that take external images of the patient;" however, "[a] drawback to the prior CT scanner is that several cameras are needed to generate the three dimensional photographic image." '711 patent col. 1, ll. 16-18, 23-25. Therefore, the '711 Patent discloses a CT scanner including a single camera for the purposes of taking external images of the exterior of a patient. The '711 Patent also discloses that a technician viewing a 3D CT image on a display can zoom out such that the 3D CT image changes to a corresponding 3D external image, or alternatively, the technician may view the 3D CT image and the 3D external image simultaneously on the display. '711 patent col. 1, ll. 51-56.

Claim 1 of the '711 Patent, the sole independent claim of the claims at issue, states:

A scanner comprising:

a gantry including a first arm section and a second arm section;

an x-ray source mounted to the first arm section;

an x-ray detector mounted to the second arm section; a camera mounted to one of the first arm section and the second arm section;

a motor that rotates the gantry about an axis of rotation, wherein the x-ray detector takes a plurality of x-rays images and the camera takes a plurality of external images as the gantry rotates;

a computer that generates a three dimensional CT image from the plurality of x-ray images and a three dimensional external image from the plurality of external images and stores the three dimensional CT image and the three dimensional external image; and

a display that displays the three dimensional CT image, wherein the three dimensional CT image changes to the three dimensional external image as the three dimensional CT image is zoomed outwardly.

'711 Patent col. 3 ll. 44-59, col. 4 ll. 1-4.

II. Accused Products

Planmeca manufactures, imports, sells, and offers to sell ProMax 3D scanners. The ProMax 3D family of scanners includes the feature of being an all-in-one x-ray unit not only for 3D imaging but also 2D panoramic and cephalometric imaging. A Planmeca brochure states that they "are the first company to combine three different types of 3D data with one X-ray unit," and that "[t]he Planmeca ProMax® 3D family brings together a Cone Beam Computed Tomography (CBCT) Image, 3D facial photo and 3D model scan into one 3D image." Doc. 1 ¶ 15.

LEGAL STANDARD

A motion to dismiss under Rule 12(b)(6) challenges the sufficiency of the complaint, not its merits. Fed. R. Civ. P. 12(b)(6); Gibson v. City of Chicago, 910 F.2d 1510, 1520 (7th Cir. 1990). In considering a Rule 12(b)(6) motion to dismiss, the Court accepts as true all well- pleaded facts in the plaintiff's complaint and draws all reasonable inferences from those facts in the plaintiff's favor. AnchorBank, FSB v. Hofer, 649 F.3d 610, 614 (7th Cir. 2011). To survive a Rule 12(b)(6) motion, the complaint must not only provide the defendant with fair notice of a claim's basis but must also be facially plausible. Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009); see also Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Iqbal, 556 U.S. at 678.

ANALYSIS

Planmeca argues that all of the claims of the '711 Patent are invalid because they are directed to an abstract idea, namely the taking and displaying different images of the same object, using a generic computer scanner. Xoran responds that the '711 Patent claims a statutory machine that falls within the scope of patentable subject matter. For the purposes of evaluating patent eligibility, the Court finds that claim 1 of the '711 patent is representative of the claims at issue, as it is the sole independent claim of the claims at issue, and the dependent claims recite only slight variations of independent claim 1. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1352 (Fed. Cir. 2016) (agreeing with the district court's treatment of a specific claim as representative and doing the same); Planet Bingo, LLC. v. VKGS LLC, 576 Fed. App'x. 1005, 1007 (Fed. Cir. 2014) (finding that analysis of the independent claims was sufficient as the dependent claims recited only slight variations of the independent claims).

Whether a claim recites patent-eligible subject matter pursuant to Section 101 is an issue of law. In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008). The Federal Circuit has held "that patent eligibility can be determined at the Rule 12(b)(6) stage." Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018) (citing Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1373 (Fed. Cir. 2016); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1346, 1351 (Fed. Cir. 2014)). However, if there are claim construction disputes at the Rule 12(b)(6) stage, either the Court must adopt non-moving party's constructions or resolve the disputes to whatever extent is needed to conduct the Section 101 analysis. Aatrix, 882 F.3d, 1125 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352; Content Extraction, 776 F.3d at 1349; Genetic Techs., 818 F.3d at 1373). It is noted that neither party has raised a dispute over any of the claim terms in the claims at issue in the '711 Patent. The Court thus proceeds with determining patent eligibility under Section 101. See Genetic Techs., 818 F.3d at 1373-74 (explaining that the Federal Circuit has "repeatedly recognized that in many cases it is possible and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion" and that "[i]n many cases, too, evaluation of a patent claim's subject matter eligibility under § 101 can proceed even before a formal claim construction").

Section 101 defines patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. However, the Supreme Court has long held that an important implicit exception to Section 101 is that "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)) (internal quotation marks omitted). There is a balance between the "concern that patent law not inhibit further discovery by improperly tying up the future use" of the building blocks of human ingenuity, Alice, 134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1301 (2012)) (internal quotation marks omitted), and the fact that "[a]t some level, 'all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'" Alice, 134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. at 1293). Therefore, in applying the Section 101 exception, the Court must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more, thereby transforming them into patent-eligible inventions. Alice, 134 S. Ct. at 2354-55 (citing Mayo, 132 S. Ct. at 1294, 1303).

The Supreme Court identified in Alice a "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2355). Step one requires determining "whether the claims at issue are directed to one of those patent-ineligible concepts." Ultramercial, 772 F.3d at 714 (quoting Alice, 134 S. Ct. at 2355) (internal quotation marks omitted); see Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1371 (Fed. Cir. 2017) (explaining that in step one of the Alice inquiry, "claims are construed in their entirety to ascertain whether their character as a whole is directed to exclude subject matter.") (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)) (internal quotation marks omitted). If the claims at issue are directed to one of those patent-ineligible concepts, then step two requires determining "whether the claims contain 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 ...