AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE LTD., Plaintiff, v. ASUSTEK COMPUTER, INC., et al., Defendants. AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE LTD., Plaintiff, v. ASUSTEK COMPUTER INC, et al., Defendants.
Claims of US patent in suit was found to be patent eligible subject matter under 35 USC 101 because the invention is narrow and specific, and there is no genuine risk of pre-empting future research and development.
Broad description of the invention
The patent claims methods and systems for an invention to decompress digital video using a single memory.
ASUS contests the viability of the claim for infringement of the `087 patent on the grounds that the patent is invalid as it is not directed to patent eligible subject matter. See 35 U.S.C. § 101. “[P]atent eligibility is a question of law,” In re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014), and can be raised in a Rule 12(b)(6) motion. See Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1349 (Fed. Cir. 2014) (noting that, “[a]lthough the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter, claim construction is not an inviolable prerequisite to a validity determination under § 101”). But see Bancorp Servs., L.L.C. v. Sun Life Assurance. Co. Can. (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (stating that “it will ordinarily be desirable — and often necessary — to resolve claim construction disputes prior to a [Section] 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter”).
The Supreme Court has endorsed a two-step framework in determining whether there is § 101 patent invalidity. “First, [a court] determine[s] whether the claims at issue are directed to [a] patent-ineligible concept” — i.e., a laws of nature, a natural phenomenon, or an abstract idea. Alice Corp. Pt. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If so, then the court moves on to the second step, that is, do the additional elements beyond the patent-ineligible concepts (if any) “`transform the nature of the claim’ into a patent-eligible application.” Id.; see also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012) (noting that “`an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection'”; but adding that “one must do more than simply state the law of nature while adding the words `apply it'”) (emphasis in original). The Supreme Court has described the second step as “a search for an inventive concept” — that is, “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, 134 S. Ct. at 2355 (internal quotation marks omitted).
In the instant case, ASUS has asserted § 101 patent invalidity on the basis that the claims at issue are trying to patent an abstract idea. “The abstract ideas category embodies the longstanding rule that [a]n idea of itself is not patentable.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015) (internal quotation marks omitted). The Supreme Court has never “delimit[ed] the precise contours of the abstract ideas category” but has provided some guidance.” DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal quotation marks omitted). For example, “[w]e know that mathematical algorithms, including those executed on a generic computer, are abstract ideas. We [also] know that some fundamental economic and conventional business practices [e.g., hedging, intermediated settlement] are also abstract ideas.” Id. One district court has indicated that longstanding practices should be deemed abstract because they “are often the building blocks of future research and development. Patents on these practices would significantly impede productive or inventive activity, to the detriment of society.” Enfish, LLC v. Microsoft Corp., 56 F. Supp. 3d 1167, 1174 (C.D. Cal. 2014).
The Federal Circuit has also provided some guidance as to what should fall in the abstract ideas category. More specifically, the Federal Circuit has noted that an abstraction is “an idea, having no particular concrete or tangible form.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). Of course, as one district court has fairly pointed out, under this “`broad formulation[,] . . . one could conceivably conclude that all process or method patents . . . are directed to an abstract idea.'” Modern Telecom Sys. LLV v. Lenovo (United States) Inc., No. SA CV 14-1266-DOC (JEMx), 2015 U.S. Dist. LEXIS 161793, at *19 (C.D. Cal. Dec. 2, 2015) (emphasis added).
The above indicates that the step one inquiry may be a complicated matter if only because it is not clear what abstract means in the first place. The step one inquiry is further complicated by the fact that it is not always easy to say what a patent claim is “directed to.” Alice, 134 S. Ct. at 2355.
The Federal Circuit has indicated that a court must consider the claims “in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (emphasis added); see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (stating that, at step one, “it is often useful to determine the breadth of the claims in order to determine whether the claims extend to cover a `fundamental . . . practice long prevalent in our system'”). The Federal Circuit has also indicated that, in evaluating the claims as a whole, a court must “`identify and define whatever fundamental concept appears wrapped up in the claim[s].'” Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) (case decided before Alice; emphasis added). Some district courts have stated that this means that a “court must identify the purpose of the claim — in order words, determine what the claimed invention is trying to achieve.” Enfish, 56 F. Supp. 3d at 1173 (emphasis added).
Unfortunately, the fundamental concept or purpose of a claim can be expressed at varying levels of generality or specificity, which could then impact whether it is directed to an abstract idea (i.e., the more general the purpose, the more likely to be abstract). Cf. TriPlay, Inc. v. WhatsApp Inc., No. 13-1703-LPS, 2015 U.S. Dist. LEXIS 55068, at *27 (D. Del. Apr. 28, 2015) (noting that “the Alice step one analysis can turn on how far a court goes in peeling back a claim’s limitations while trying to divine what the claim is `really’ directed to”). One district court has implicitly tried to give some more concreteness to the step one inquiry, stating that “[c]ourts should recite a claim’s purpose at a reasonably high level of generality. Step one is a sort of `quick look’ test, the purpose of which is to identify a risk of preemption and ineligibility.” Id. (emphasis added).
In the instant case, the Court concludes that the purpose of the claims at issue is to decompress digital video using a single memory. That is the gist of the invention at issue. Given this purpose, the Court is satisfied that there is no genuine risk of preempting future research and development — i.e., Avago is not simply claiming an abstract idea in the attempt to lay claim to a building block of future research and development; the invention has specific configuration, not a broad abstract idea. See Alice, 134 S. Ct. at 2354 (stating that, “in applying the § 101 exception, we must distinguish between the buildin[g] block[s] of human ingenuity and those that integrate the building blocks into something more, thereby transform[ing] them into a patent-eligible invention”) (internal quotation marks omitted). Because ASUS has failed to establish that the claims at issue are directed to a patent-ineligible concept, i.e., an abstract idea, the Court need not address step two of Alice which embodies the inventive concept test.
Accordingly, the Court denies ASUS’s motion to dismiss to the extent it is based on a challenge to the validity of the `087 patent. Of course, this ruling does not preclude ASUS from making an argument that the invention claimed in the patent is invalid on other grounds, such as obviousness.