United States District Court, E.D. Virginia, Richmond Division
MEMORANDUM OPINION (GRANTING DEFENDANT'S PARTIAL
MOTION TO DISMISS)
E. Hudson United States District Judge
MATTER is before the Court on Defendant ORBCOMM, Inc.'s
Motion to Dismiss Count Two of Plaintiff CalAmp Wireless
Network Corporation's two-count patent infringement
Complaint. (ECF No. 23.) At issue in Count Two is U.S. Patent
No. 6, 850, 839 ("the '839 Patent"), entitled
"Time Sensitive Article Tracking Device." It claims
a system and method for tracking an object by determining
whether the object is presently located within a prescribed
geographic area and taking appropriate action depending on
whether the object is or is not within that area. ORBCOMM
alleges that the '839 Patent is an abstract idea and
therefore unpatentable subject matter pursuant to 35U.S.C.
parties have filed memoranda of law outlining their
respective positions. In its opening brief, ORBCOMM took the
position that Count Two should be dismissed in its entirety.
Count Two alleges infringement of Claims 1, 2, 4, 5, 9, 10,
11, 12, 13, 15, 16, 18, and 19 of the '839 Patent.
However, ORBCOMM conceded in its reply brief that Claims 4
and 5 are patent-eligible. Thus, the Court will not consider
those claims in its analysis. The Court will dispense with
oral argument because the facts and legal contentions are
adequately presented in the materials before the Court, and
oral argument would not aid in the decisional process. E.D.
Va. Local Civ. R. 7(J). For the reasons set forth below, the
Court will grant ORBCOMM's Motion.
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.
MerialL.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, 716 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. Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1293 (Fed. Cir.
2016). 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); see
also Philips v. Pitt Cty. Mem'l Hosp., 572 F.3d 176,
180 (4th Cir. 2009).
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. CLSBank Int'l, 134
S.Ct. 2347, 2354 (2014) (quoting 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. (quoting 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., 566 U.S.
66, 77-78 (2012)). At the first step, the Court must
"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, where the Court
asks "what else is there in the claims before us?"
Id. This 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, 566 U.S. at 73 (citations omitted).
with this framework in mind that the Court conducts its
analysis. Claim 1, a representative claim of the '839
A method for determining whether an article tracking device
is within a spatial zone, the method comprising the steps of:
obtaining a current time and a current position of the
device; determining a spatial zone that corresponds to the
current time; determining whether the current position of the
device is within the spatial zone; and sending a request to a
server for a subset of server database records in response to
the determination of whether the current position of the
device is within the spatial zone.
'839 Patent Bl col. 6 11. 2-14. Distilled to its essence,
the '839 Patent claims a system and method of tracking an
object by: (1) assessing the current location of the object;
(2) obtaining the object's required location for the
corresponding time; (3) determining whether the object is in
the required location; and (4) requesting information in
response to that determination. In other words, the Patent
determines whether an object is in the right place at the
reasons that follow, the Court concludes that this method is
an abstract idea that falls short at both steps of the
Alice analysis. The '839 Patent is therefore
unpatentable under § 101.
at Alice step one, determining whether an object is
in the right place at the right time, as claimed in the
'839 Patent, falls squarely into a ...