By Jody Coultas, J.D.
Factual disputes about whether patent claims are inventive may preclude dismissal at the pleadings stage under § 101.
The federal district court in Oakland misapplied Federal Circuit precedent in granting dismissal of more than a dozen patent infringement claims related to methods and systems for using a digital capture device or digital camera, paired a Bluetooth-enabled mobile device, to publish data on websites with minimal or no user intervention, according to the U.S. Court of Appeals for the Federal Circuit. The district court erred by not accepting the patent holder’s well-pleaded allegations as true with respect to whether its patents capture, transfer, and publish data in a way that is plausibly inventive. Accepting those allegations as true, the court declined to find that the asserted claims were ineligible for protection under Section 101 of the Patent Act as a matter of law. The court vacated the grant of the motions to dismiss and an attorney fee award, and remanded the issues for further proceedings consistent with this opinion (Cellspin Soft, Inc. v. Fitbit, Inc., June 25, 2019, O’Malley, .).
Cellspin’s four asserted patents all were titled "Automatic Multimedia Upload for Publishing Data and Multimedia Content" and recited the same specification. Focusing primarily on U.S. Patent No. 8,738,794 ("the ’794 patent"), the court noted that the specification described a "method of utilizing a digital data capture device [such as a digital or video camera or wearable fitness tracker] in conjunction with a Bluetooth™ enabled mobile device for publishing data and multimedia content on one or more websites automatically or with minimal user intervention." According to the patent, the conventional method for publishing data and multimedia content on a website was time-consuming required and manual user intervention. To solve this problem, the ’794 patent used a digital data capture device in conjunction with a Bluetooth-enabled mobile device to automatically publish data and multimedia content on one or more websites simultaneously. The other three patents disclosed methods and systems to accomplish the purposes of the ’794 patent’s invention, but with some variations in the claims, such as reference to a digital camera device instead of a digital capture device.
Cellspin brought 14 infringement actions over the patents-in-suit against several wearable fitness device and digital camera makers. Defendants Fitbit, Moov, Nike, Fossil, Cannon, GoPro, Panasonic, JK, and Garmin filed motions to dismiss plaintiff’s claims on the ground that the asserted patents were not patent eligible under 35 U.S.C. §101.
The district court dismissed the infringement claims, holding that Cellspin’s patents were ineligible for protection under Section 101 of the Patent Act. All four patents were directed to the abstract idea of capturing, transferring, and publishing data and multimedia content, and their claims contained no inventive concept rendering them patentable, the court found. Following the dismissal order, the court awarded attorney fees to Fitbit, Moov, Nike, Fossil, Canon, and GoPro, concluding that the claims were "exceptionally meritless." Cellspin appealed to the Federal Circuit.
In patent eligibility cases, courts must first determine whether the claim at issue is "directed to . . . [a] patent-ineligible con-cept," such as an abstract idea. If the court finds that the claims are directed to an abstract idea, the court then must determine whether the claimed elements recite an inventive concept. An inventive concept reflects something more than the application of an abstract idea using "well-understood, routine, and conventional activities previously known to the industry."
Patent eligibility. Although the district court correctly found that the asserted patent claims were directed to an abstract idea, the Federal Circuit vacated the holding based on the district court’s erroneous inventive concept inquiry. Contrary to Cellspin’s argument, the asserted claims are drawn to the idea of capturing and transmitting data from one device to another. The Federal Circuit has consistently held that similar claims reciting the collection, transfer, and publishing of data are directed to an abstract idea. Moving to the second step of determining patent eligibility, Cellspin identified several ways in which its application of capturing, transferring, and publishing data was unconventional. However, the district court discounted these allegations because Cellspin "fail[ed] to cite to support in the [shared specification]" for its allegations. In Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018), the court held that plausible and specific factual allegations that aspects of the claims are inventive are sufficient to defeat a motion to dismiss. Thus, the district court erred by not accepting Cellspin’s allegations as true, and its decision directly conflicted with Aatrix and the principle that factual disputes about whether an aspect of the claims is inventive may preclude dismissal at the pleadings stage, according to the court.
Accepting Cellspin’s allegations as true, the Federal Circuit could not conclude that the asserted claims lack an inventive concept. Cellspin specifically alleged that using hypertext transfer protocol ("HTTP") at a specific location, here at the intermediary mobile device, was inventive. Also, Cellspin alleged that establishing a paired connection before transmitting data was inventive. The court disagreed with Appellees that the limitations relied on by Cellspin "amount to nothing more than minor variations in the technological environment in which the abstract ideas are implemented."
Attorney fees. Because the Federal Circuit overturned the district court dismissal of the infringement claims, it also vacated the attorney fees award. The court also noted that the district court must address certain errors in the attorney fees analysis that could remain issues on remand. Specifically, the district court erred in concluding that issued patents are presumed valid but not presumed patent eligible. It was also improper for the district court to fault Cellspin for amending its complaint just a few days before the scheduled hearing on the motions to dismiss.
Attorneys: John J. Edmonds (Collins Edmonds & Schlather, PLLC) for Cellspin Soft, Inc. David Shane Brun (Venable, LLP) for Fitbit, Inc. and Moov, Inc. Ricardo Bonilla (Fish & Richardson PC) for Fossil Group, Inc.
Companies: Cellspin Soft, Inc.; JK Imaging Ltd.; Fitbit, Inc.
MainStory: TopStory Patent TechnologyInternet FedCirNews
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