United States District Court, E.D. Virginia, Alexandria Division
O'GRADY, UNITED STATES DISTRICT JUDGE
Virginia Innovation Sciences, Inc. ("VIS") owns the
rights to a family of patents that cover a method, system,
and apparatus for transferring video signals from a network
to a mobile device and then converting those signals in a
manner that allows them to be reproduced on an
"alternative display terminal" (e.g., a
television). Alleging infringement of these patents,
Plaintiff brought suit against Defendant Amazon.com, Inc.
("Amazon") for marketing and selling, among other
things, its Amazon Fire TV and Fire Stick devices,
smartphone, mobile phone, and tablet products. Amazon has
moved to dismiss the claims related to eight of the ten
patents at issue in this case. (Dkt. No. 21). The court heard
oral argument on October 14, 2016. For the reasons that
follow, the Court finds that VIS's patents are not
directed to patent-eligible subject matter under 35 U.S.C.
§ 101, and it therefore GRANTS Amazon's motion to
owns all rights and title to, and interest in, U.S. Patent
No. 7, 899, 492, entitled Methods, Systems, and Apparatus for
Displaying the Multimedia Information from Wireless
Communication Networks" (the "'492
patent"). It also is the owner of all rights and title
to, and interest in, seven related patents: U.S. Patent No.
8, 050, 711 (the "'711 patent"); U.S. Patent
No. 8, 903, 451 (the '"451 patent"); U.S.
Patent No. 8, 948, 814 (the "'814 patent");
U.S. Patent No. 9, 118, 794 (the "'794
patent"); U.S. Patent No. 8, 712, 471; U.S. Patent No.
9, 286, 853 (the "'853 patent"); and U.S.
Patent No. 9, 355, 611 (the "'611 patent").
Collectively, these eight patents make up the "'492
patent portfolio" or "'492 patent family".
addition, VIS is the owner of all rights and title to, and
interest in U.S. Patent No. 9, 369, 844, entitled
"System and Method for Providing Locally Applicable
Internet Content with Secure Action Requests and Item
Condition Alerts" (the "'844 patent"), and
U.S. Patent No. 8, 135, 398, entitled "Method and
Apparatus for Multimedia Communications with Different User
Terminals" (the "'398 patent"). VIS also
owns U.S. Patent No. RE 46, 140, entitled "Method and
System for Conducting business in a transnational e-Commerce
Network" (the "'140 patent"), which was
issued after the initiation of this lawsuit. VIS asserts
infringement of all 10 patents, but Amazon does not challenge
the '844 patent, the '398 patent, or the ' 140
patent in the instant motion.
'492 patent was filed on June 24, 2005 and issued on
March 1, 2011. The Complaint describes the patent in general
terms before moving to specifics; it states:
The '492 Patent Portfolio generally discloses systems and
methods for converting video signals for a mobile terminal to
accommodate reproduction by an alternative display terminal.
To achieve this result, the video signal from a wireless
communication network is processed to provide a converted
video signal appropriate for an alternative display terminal.
This converted video signal is then provided to accommodate
the corresponding video display on a screen provided by the
alternative (e.g., external) display terminal.
Compl- ¶ 14.
Claim 23 of the '492 patent recites:
23. An apparatus for processing signals to accommodate
reproduction by an alternative display terminal, the
an interface module, which receives a video signal
appropriate for displaying video content on a mobile
terminal, the video signal being received from a cellular
network communication that is sent to the mobile terminal and
then received by the interface module; a signal conversion
module, in operative communication with the interface module,
which processes the video signal to produce a converted
signal for use by the alternative display terminal, wherein
processing by the signal conversion module includes
converting the video signal from a compression format
appropriate for the mobile terminal to a display format for
the alternative display terminal that is different from the
compression format, such that the converted video signal
comprises a display format and a power level appropriate for
driving the alternative display terminal; and a device
interface module, in operative communication with the signal
conversion module, which provides the converted video signal
to the alternative display terminal to accommodate displaying
the video content by the alternative display terminal.
'492 patent includes a graphical depiction of the claimed
depiction shows a network system (104) that produces a signal
which is transmitted from the base station (106) to the
mobile terminal device (108). From the mobile terminal
device, the signal is transmitted to the mobile signal
conversion module ("MTSCM" or "intermediary
device") (112), which is contained in
"housing" (110). The MTSCM converts the mobile
signal into a power level and display format that is
compatible with the display monitor (114), which reproduces
the original signal.
in non-technical terms, the claimed idea: (1) takes a video
feed from a mobile network (e.g., Verizon, AT&T,
T-Mobile, etc.); (2) sends it to a mobile device that; (3)
sends it to an intermediary device, which (4) converts the
signal; and (5) displays it on a TV in your home. All of the
asserted patents claim some form of this same
invention. As an additional example, Claims 28-33 of
the '814 are reproduced in their entirety below:
28. An apparatus comprising:
an input interface configured to receive a multimedia signal
through a wireless local area network, wherein the multimedia
signal is a compressed digital signal;
at least one processing unit configured to perform a
processing of the multimedia signal, wherein the processing
of the multimedia signal comprises decompressing the
compressed digital signal to a decompressed digital signal,
wherein the processing of the multimedia signal further
comprises encoding the decompressed digital signal to produce
an encoded digital signal, and wherein the encoded digital
signal comprises a decompressed high definition digital video
signal; and a high definition multimedia interface configured
to transmit the encoded digital signal to a high definition
wherein the apparatus is configured to interface with a wired
connection to receive power through the wired connection
while the encoded digital signal is transmitted to the high
definition digital display through the high definition
multimedia interface; and wherein the power received
contributes power for said processing of the multimedia
29. The apparatus of claim 28 further comprising a decoder,
wherein the decoder is configured to perform said
decompressing the compressed digital signal to the
decompressed digital signal, and wherein the apparatus
further comprises an encoder, wherein the encoder is
configured to perform said encoding the decompressed digital
signal to produce the encoded digital signal for transmission
to the high definition digital display; wherein a maximum
throughput rate for transmitting the encoded digital signal
through the high definition multimedia interface is at least
30. The apparatus of claim 29, wherein the power is received
during said processing of the multimedia signal.
31. The apparatus of claim 30, wherein the maximum throughput
rate supports said transmitting the encoded digital signal in
32. The apparatus of claim 30, wherein the multimedia signal
is received from a mobile terminal through the wireless local
area network; and wherein the apparatus is an intermediate
device between the mobile terminal and the high definition
digital display; and wherein the mobile terminal is a
cellular phone or a personal digital assistant (PDA).
33. The apparatus of claim 32, wherein the input interface
receives the multimedia signal after the multimedia signal is
wirelessly received by the mobile terminal.
VIS filed this complaint in July 2016, the '492 patent
family has a history of related proceedings. In 2013, VIS
sued Samsung for infringement in the Eastern District of
Virginia. Virginia Innovation Sciences, Inc. v. Samsung
Electronics Co., 983 F.Supp.2d 713 (E.D. Va. 2014).
After a claim construction hearing and an adverse
non-infringement ruling, VIS appealed to the Federal Circuit.
Virginia Innovation Sciences, Inc. v. Samsung Electronics
Co., 614 Fed.App'x 503 (Fed. Cir. 2015). The Federal
Circuit reversed, writing that:
[A]lthough the intrinsic evidence strongly suggests that the
claimed 'display format' must be a video signal that
is 'ready for use' by a conventional external
monitor, the intrinsic evidence before us does not provide a
complete understanding of the term. Thus, while review of the
intrinsic evidence is commonly dispositive in understanding
the ordinary meaning of a claim, such is not the case in this
particular instance. For example, the specification does not
provide an explanation of what separates a video signal that
is 'ready for use' by an external monitor from a
video signal that is not. Nor does the specification explain
what type of additional processing an external monitor may
perform on a signal in a 'display format' in order to
display the video content within that signal.
Id. at 510. Thus, the Federal Circuit determined
that it could not construe the term "display
format" on the record before it and therefore remanded
the case. The parties settled on remand.
litigating that case, Samsung petitioned the U.S. Patent and
Trademark Office ("USPTO") for inter
partes review of the '492 patent, the '711
patent, and the '471 patent. The USPTO denied the
institution of inter partes review for all three
patents. Under 35 U.S.C. § 311, the request for
inter partes review examined whether the patent
claims could be cancelled "on a ground that could be
raised under [35 U.S.C. §§102 or 103] and only on
the basis of prior art consisting of patents or printed
publications." Applying this standard, the USPTO found
that none of challenged '492 family's patents were
obvious under the prior art. In particular, the USPTO found
that they were novel over Palin (U.S. Patent No. 7, 580,
005), which claims "a system ... for transmitting an
image from a first display device having certain display
capabilities to a second display device having different
display capabilities." The USPTO ruled that, because
"isolating and reassembling one or more external display
device ... as a Bluetooth packet does not alter the
'format' of the video signal contained therein,
" the '492 patent family's conversion of the
video signal constituted an improvement over the prior art.
Opp'n, Ex. 7 at 13 (Dkt. No. 36). In short, Palin did not
teach the '492 patent family's "conversion to a
display format... that is different from the compression
format." Id., Ex. 6 at 14. As such, the
teachings of the '492 patent family were found novel and
not obvious under 35 U.S.C. §§102 and 103.
VIS brought suit against HTC Corporation in February 2016.
That case was transferred from the Eastern District of
Virginia's Norfolk division to its Alexandria division in
October 26, 2016. It is now pending before the Court.
See Transfer Order, Virginia Innovation
Sciences, Inc. v. HTC Corp., 1:16-cv-01350 (E.D. Va.
October 26, 2016), Dkt. No. 51.
motion to dismiss, the plaintiff must provide sufficient
facts to show that it has stated a "plausible claim for
relief." Ashcroft v. Iqbal,556 U.S. 662, 679
(2009). At this stage, courts must accept all facts as true,
but should not give weight to purely legal conclusions.
Bell Atlantic Corp. v. Twombly,550 U.S. 544, 570
(2007); United ...