United States District Court, E.D. Virginia, Alexandria Division
M. Brinkema, United States District Judge
the Court is defendant's Motion to Dismiss [Dkt. No. 15]
pursuant to Fed.R.Civ.P. 12(b)(6), in which defendant argues
that this patent infringement action should be dismissed
because none of the patents-in-issue are patent-eligible
under 35 U.S.C. § 101. Plaintiff has responded to the
motion and oral argument has been held. For the reasons that
follow, defendant's Motion to Dismiss will be granted.
SmarTEN LLC ("plaintiff or "SmarTEN") alleges
that defendant Samsung Electronics America, Inc.
("defendant" or "Samsung") has infringed
on four patents which SmarTEN owns: Patent Numbers 9, 280,
640 ('"640 patent"); 9, 378, 657
("'657 patent"); 9, 514, 655 ("'655
patent"); and 9, 728, 102 ("'102 patent").
Compl. [Dkt. No. 1] ¶ 4.
four patents-in-suit, all of which are continuations of the
same parent application, disclose a "mobile computing
device executing weight, nutrition, health, behavior and
exercise application software" that "serves as a
simulated combination personal trainer and
dietician/nutritionist for the user using comprehensive
databases storing personalized health, nutrition and exercise
information." '640 patent abs. The patents include
132 claims, each of which recites a "hand-held mobile
weight and exercise management computing device, " see
'640 patent 88:65-67, or a "hand-held mobile
nutrition and physical activity management computing device,
" see ' 102 patent 100:11 -12. When the applications
for these patents were filed, there were many
"commercial programs, " such as Weight Watchers, as
well as "individual health care professionals" and
"multidisciplinary medical weight management
centers" that provided clients with "nutritional
and exercise direction along with help to keep on
track." '640 patent 2:6-16. In addition, these
services had already been incorporated into applications for
mobile devices and tablets such as iPhones and iPads designed
"to assist dieters in successfully meeting their weight
loss goals, " Id. at 2:36-38; however,
according to the patents, there existed a "need for an
easy to use weight, nutrition, exercise and behavior
monitoring data processing system that, for example,
simplifies data entry for food consumed and/or exercise modes
of operation and/or behavior parameters, while providing
valuable health beneficial feedback and rewards for behavior
change and goal achievement, " Id. at 3:3-8.
Accordingly, the patents claim to provide software that
"serves as a simulated personal trainer,
dietician/nutritionist, and physician's assistant for the
user while having access to massive amounts of personalized
health, nutrition and exercise information."
Id. at 3:20-23.
bottom, the invention claimed by the patents is a handheld
device with software that processes, organizes, and displays
nutrition and exercise data and provides feedback to the
user. Although the patents claim a "device, " they
describe software which "may be implemented by any of a
wide array of commercially available, conventional mobile
computing devices, including, for example, conventional smart
phones, such as Apple's iPhone 4s or 5, or Samsung's
quad-core processor-based Galaxy S3, a tablet computing
device such as Apple's iPad, or any of a number of laptop
computers." Id. at 10:23-28. Similarly,
although the claims reference other hardware, such as a
pedometer, a GPS, and a digital camera, see, e.g..
id. at 89:22-25, 91:53-57, the patents do not
purport to invent any such hardware, but instead make clear
that the hardware included on conventional mobile computing
devices may be used as part of the invention, see
Id. at 10:32-33, 10:64-65, 44:62-64.
alleges that on February 8, 2017, it sent defendant a letter
to advise it that its products were infringing the '640,
'657, and '655 patents, and included a copy of the
entire '640 patent and the claims of the '657 and
'655 patents. Compl. ¶ 5. Using claim 1 of the
'640 patent as an example, the letter explained that
Samsung's smartphones with a built-in S Health
Appinfringed plaintiffs patent. Id.
Plaintiff alleges that Samsung did not respond to the letter
but instead has continued to sell infringing smartphones.
Id. ¶ 6. Plaintiff also alleges that, once the
'102 patent issued on August 8, 2017, Samsung's sale
of smartphones with the built-in S Health App also infringed
that patent. Id.
litigation, plaintiff alleges that all Samsung Galaxy S7 and
S8 Series smartphones, as well as all Note 8 Series
smartphones, that had the built-in S Health App and were sold
in the United States on or after the issue date of each
patent literally and directly infringe claims 1-3, 5-7, 9-10,
13-20, 24, 26-28, 30, 32, 34, 41, 43-44, 46, 50, 54, and 56
of the '640 patent (issued on March 8, 2016); claims 1-8,
11. 13-15, 17, 19, and 21 of the '657 patent (issued on
June 28. 2016); claims 1-9, 11, 13-17, 20, and 22-23 of
the'655 patent (issued on December 6, 2016); and claims
26-30 of the '102 patent (issued on August 8, 2017).
Id. 1 7. In addition, plaintiff alleges that
Samsung's infringement has been wanton, willful, and
intentional. Id. ¶ 8.
result, plaintiff seeks compensatory damages adequate to
compensate it for Samsung's infringement, as well as
treble damages and costs pursuant to 35 U.S.C. § 284 and
attorney's fees pursuant to 35 U.S.C. § 285, as well
as an injunction. Id. at 4. Samsung has filed a
Motion to Dismiss, in which its sole argument is that each
claim asserted against Samsung is invalid under 35 U.S.C.
§ 101 for claiming patent-ineligible subject matter, as
explained by Alice Corp. v. CLS Bank Int'l. 134
S.Ct. 2347 (2014).
Standard of Review
Rule 12(b)(6), a civil action must be dismissed if the
complaint does not "contain sufficient facts to state a
claim that is 'plausible on its face.'" E.I,
du Pont de Nemours & Co. v. Kolon Indus., Inc., 637
F.3d 435, 440 (4th Cir. 2011) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544. 570 (2007)). Although the court
must assume for the purposes of deciding the motion that all
''well-pleaded allegations" are true and must
"view the complaint in the light most favorable to the
plaintiff, " Philips v. Pitt Cty. Mem'l
Hosp.. 572 F.3d 176, 180 (4th Cir. 2009), allegations
that are merely conclusory need not be credited, see
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
35 U.S.C. § 282(a), a "patent shall be presumed
valid" and the "burden of establishing invalidity
of a patent or any claim thereof shall rest on the party
asserting such invalidity." This presumption requires
the party asserting invalidity to "set forth clear and
convincing evidence of invalidity." Seniu Pharm. Co.
v. Lupin Ltd.. 780 F.3d 1337, 1353 (Fed. Cir. 2015). A
concurring opinion in a previous en banc Federal
Circuit decision has observed that this "presumption
applies when § 101 is raised as a basis for invalidity
in district court proceedings." CLS Bank Int'l
v. Alice Corp. Pty. Ltd.. 717 F.3d 1269, 1284 (Fed. Cir.
2013) (en banc) (Lourie, J., concurring); however,
in affirming the judgment of the Federal Circuit in
Alice and articulating the test for
patent-ineligibility that is implicated by defendant's
Motion to Dismiss, the Supreme Court declined to discuss the
presumption of validity and did not make any findings by
clear and convincing evidence, see Alice, 134 S.Ct.
2347. Moreover, recent Supreme Court and Federal Circuit
decisions addressing § 101 invalidity claims have done
so without applying a clear and convincing evidence standard.
See, e.g., Ass:n for Molecular
Pathology v. Myriad Genetics. Inc., 569 U.S. 576 (2013);
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
880 F.3d 1356 (Fed. Cir. 2018). Although it appears to the
Court that the weight of the relevant case law indicates that
the presumption of validity is not applicable to an
ineligibility determination under § 101, the Court finds
that Samsung has made the relevant invalidity showing by
clear and convincing evidence. Accordingly, the Court does
not find it necessary to resolve this dispute.
the Patent Act, "[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain
a patent therefor." 35 U.S.C. § 101. Although not
evident from the text of this provision, § 101 has been
interpreted for more than 150 years to contain an
"important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."
Alice, 134 S.Ct. at 2354 (internal quotation marks
omitted). This "exclusionary principle" is driven
by a concern of "pre-emption." Id. Because
laws of nature, natural phenomena, and abstract ideas are the
"basic tools of scientific and technological work."
granting patent-holders a monopoly on them might "tend
to impede innovation more than it would tend to promote it,
thereby thwarting the primary object of the patent
laws." Id. (internal quotation marks omitted).
same time, because "all inventions, " at some
level, "embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas, "
courts must "tread carefully in construing this
exclusionary principle lest it swallow all of patent
law." Id. (internal quotation marks omitted).
Accordingly, the Supreme Court has distinguished between
patent-ineligible claims of abstract ideas and
patent-eligible "integrations]" or
"applications of such concepts to a new and useful
end." Id. (alterations and internal quotation
marks omitted). To that end. the Supreme Court has developed
a two-part analysis for determining whether a patent is
invalid for claiming abstract ideas. First, the court must
"determine whether the claims at issue are directed
to" an abstract idea. Id. at 2355. Second, if
so. the court must "consider the elements of each claim
both individually and as an ordered combination to determine
whether the additional elements transform the nature of the
claim into a patent-eligible application." Ia\ (internal
quotation marks omitted). This second step is, at its core, 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." Id. (alteration in original) (internal
quotation marks omitted).
applying the Alice test, the Court must determine
whether a single claim is representative of the asserted
claims for purposes of Alice. Samsung argues that
Claim 1 of the '640 patent is representative of each
asserted claim. This claim recites, in full:
A hand-held mobile weight and exercise management computing
device having a housing sized to be held in a ...