United States District Court, E.D. Virginia, Richmond Division
MEMORANDUM OPINION (DEFENDANT'S MOTION FOR
E. Hudson United States District Judge.
MATTER is before the Court on Defendant CalAmp Corp.'s
("Defendant") Motion for Reconsideration of Denial
of Motion to Dismiss, filed on August 4, 2016. (ECF No. 35.)
On May 27, 2016, Defendant moved to dismiss this patent
infringement suit filed by Plaintiff ORBCOMM, Inc.
("Plaintiff). (ECF No. 16.) On July 22, 2016, the Court
denied Defendant's Motion to Dismiss, finding that all
five patents at issue constitute patent-eligible subject
matter pursuant to 35 U.S.C. § 101. (ECF Nos. 29, 30.)
In its Motion for Reconsideration, Defendant relies on a case
recently decided by the United States Court of Appeals for
the Federal Circuit, Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016). Each side has
filed memoranda supporting their respective positions. The
Court heard oral argument on October 13, 2016. In light of
Electric Power Group, and for the reasons set forth
below, the Court will grant in part and deny in part
Defendant's Motion for Reconsideration.
lawsuit concerns five separate but interrelated patents. They
all involve machine-to-machine communication platforms
designed for tracking and monitoring the location and status
of widely dispersed fleet vehicles and related mobile assets.
The specific patents-in-suit include the following:
Patent No. 6, 292, 724 ("the '724 Patent")
(entitled "Method Of And System And Apparatus For
Remotely Monitoring The Location, Status, Utilization And
Condition Of Widely Geographically [Dispersed] Fleets of
Vehicular Construction Equipment And The Like And Providing
And Displaying Such Information") (Compl. ¶ 21, ECF
Patent No. 6, 611, 686 ("the '686 Patent")
(entitled "Tracking Control And Logistics System And
Method") (Compl. ¶ 27);
Patent No. 6, 651, 001 ("the '001 Patent")
(entitled "Method Of And System And Apparatus For
Integrating Maintenance Vehicle And Service Personnel
Tracking Information With The Remote Monitoring Of The
Location, Status, Utilization And Condition Of Widely
Geographically Dispersed Fleets Of Vehicular Construction
Equipment And The Like To Be Maintained, And Providing And
Displaying Together Both Construction And Maintenance Vehicle
Information") (Compl. ¶ 38);
Patent No. 6, 735, 150 ("the ' 150 Patent")
(entitled "Method Of And Apparatus For Distinguishing
Engine Idling And Working Hours") (Compl. ¶ 43);
and 5. U.S. Patent No. 8, 855, 626 ("the '626
Patent") (entitled "Wireless Control For Creation
Of, And Command Response To, Standard Freight Shipment
Messages") (Compl.¶ 51).
maintains, as it did in its original Motion to Dismiss, that
all five of the patents-in-suit are invalid because they seek
to patent abstract ideas, in contravention of
denial of Defendant's Rule (I2)(b)(6) Motion to Dismiss
was an interlocutory order. See Occupy Columbia v.
Haley, 738 F.3d 107, 115 (4th Cir. 2013). The proper
vehicle for requesting reconsideration of an interlocutory
order is Federal Rule of Civil Procedure 54(b). Fayetteville
Inv'rs v. Commercial Builders, Inc., 936 F.2d 1462,
1470 (4th Cir. 1991). Interlocutory orders are subject to
reconsideration by the issuing court any time prior to the
entry of a final judgment. Am. Canoe Ass'n v. Murphy
Farms, Inc., 326 F.3d 505, 514-15 (4th Cir. 2003).
clear that "[m]otions for reconsideration of
interlocutory orders are not subject to the strict standards
applicable to motions for reconsideration of a final
judgment" under Rules 59(e) and 60(b). Id. at
514. However, the Fourth Circuit has declined to
"thoroughly express [its] views on the interplay of
Rules 60, 59 and 54." Fayetteville, 936 F.2d at
1472. Typically, courts do not depart from a previous ruling
unless "(1) a subsequent trial produces substantially
different evidence, (2) controlling authority has since made
a contrary decision of law applicable to the issue, or (3)
the prior decision was clearly erroneous and would work
manifest injustice." Am. Canoe Ass'n, 326
F.3d at 515 (quoting Sejman v. Warner-Lambert Co.,
Inc., 845 F.2d 66, 69 (4th Cir.1988)); see also S.
Coal Corp. v. IEG Pty, Ltd, No. 2:14CV617, 2016 WL
393954, at * 1 (E.D. Va. Jan. 29, 2016); Al Shimari v.
CACI lnt'l, Inc., 933 F.Supp.2d 793, 798 (E.D. Va.
2013). It is with this framework in mind that the Court
reconsiders its denial of Defendant's Motion to Dismiss.
motion to dismiss under Rule 12(b)(6) tests the sufficiency
of a complaint; importantly, it does not resolve contests
surrounding the facts, the merits of a claim, or the
applicability of defenses." Republican Party of N.C.
v. Martin, 980 F.2d 943, 952 (4th Cir. 1992) (citation
omitted). Patent eligibility under 35 U.S.C. § 101 is an
issue of law; as such, it is suitable for resolution on a
motion to dismiss. Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1373 (Fed. Cir. 2016). The Court
is permitted to make a patent eligibility determination at
the Rule 12(b)(6) stage, so long as it has a "full
understanding of the basic character of the claimed subject
matter." Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1349
(Fed. Cir. 2014). In considering such a motion, the Complaint
and patents-in-suit must be viewed in the light most
favorable to the plaintiff. Id. As with all Rule
12(b)(6) motions, the Court's analysis is "limited
to the face of the complaint, materials incorporated into the
complaint by reference, and matters of judicial notice."
OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362 (Fed. Cir. 2015) (applying Federal Circuit
and Ninth Circuit law).
101 of the Patent Act describes the subject matter eligible
for patent protection. It provides: "[w]hoever invents
or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new or useful
improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35
U.S.C. § 101. Section 101 also "contains an
important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."
Alice Corp. Pty. Ltd. v. CIS Bank Int'l, 134
S.Ct. 2347, 2354 (2014) (citing Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116
(2013)). However, a patent is not rendered ineligible
"simply because it involves an abstract concept."
Id. (citing Diamond v. Diehr, 450 U.S. 175,
187 (1981)). "[A]pplication[s] of such concepts 'to
a new and useful end'... remain eligible for patent
protection." Id. (citing Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)).
Alice, the Supreme Court reiterated the two-step
analytical framework "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132
S.Ct. 1289, 1297 (2012)). The first step is to
"determine whether the claims at issue are directed to
one of those patent-ineligible concepts." Id.
If so, the analysis moves to the second step, asking
"what else is there in the claims before us?"
Id. The second step is a 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."
Mayo, 132 S.Ct. at 1294 (citations omitted).
Electric Power Group, the impetus for this Motion
for Reconsideration, the Federal Circuit held that the
patents in that case failed to meet the eligibility
requirements of §101. Elec. Power Grp., 830
F.3d at 1356. Those patents all claimed "systems and
methods for performing real-time performance monitoring of an
electric power grid by collecting data from multiple data
sources, analyzing the data, and displaying the
results." Id. at 1351. At the first step of the
Alice analysis, the court determined that the
patents were '"directed to' a patent-ineligible
concept" because the claims focused merely on
collecting, analyzing, and displaying information.
Id. at 1353. Proceeding to step two, the court
determined that the patents contained no inventive concept to
remove the claims from the class of ineligible subject
matter. Id. at 1354. The patents were invalid
because the claims merely required the collection, analysis,
and display of information "without limiting them to
technical means for performing the functions that are
arguably an advance over conventional computer ...