AI Visualize, Inc. v. Nuance Commc'ns, Inc.

610 F.Supp.3d 638

AI VISUALIZE, INC., Plaintiff,

v.NUANCE COMMUNICATIONS, INC. and Mach7 Technologies, Inc., Defendants.

Civil Action No. 21-1458-RGA

United States District Court, D. Delaware.

Filed July 8, 2022

Andrew L. Cole, COLE SCHOTZ P.C., Wilmington, DE; Sean N. Hsu, Rajkumar Vinnakota, Gary Sorden, Vishal Patel, COLE SCHOTZ P.C., Dallas, TX., Attorneys for Plaintiff.

David E. Moore, Bindu A. Palapura, Carson R. Bartlett, POTTER ANDERSON & CORRON LLP, Wilmington, DE; David J. Lender, Anish R. Desai, WEIL GOTSHAL & MANGES LLP, New York, NY; Amanda Branch, WEIL GOTSHAL & MANGES, LLP, Redwood Shores, CA; David Greenbaum, NUANCE COMMUNICATIONS, INC., Mahwah, NJ., Attorneys for Defendants.

MEMORANDUM OPINION

ANDREWS, UNITED STATES DISTRICT JUDGE:

Before me is Defendants’ motion to dismiss pursuant to 35 U.S.C. § 101 and Federal Rule of Civil Procedure 12(b)(6). (D.I. 24). Defendants argue all Plaintiff's infringement claims should be dismissed because the Asserted Claims are directed to patent ineligible subject matter. (D.I. 25 at 1-2). Defendants also move to dismiss Plaintiff's claim of willful infringement for failure to state a claim. (Id. at 21-22). I have considered the parties’ briefing. (D.I. 25, 27, 31).

I. BACKGROUND

Medical imaging techniques such as computed axial tomography ("CT") and magnetic resonance imaging ("MRI") involve taking a series of two-dimensional scans of parallel, planar cross-sections of an area of a patient's body, resulting in a three-dimensional virtual model of the area that was scanned contained in a "volume visualization dataset"¹ ("VVD"). (D.I. 22 ¶¶ 25-26). This VVD can be used to generate virtual views² of any portion of the area that was scanned by selecting a plane to be cut through the volume of the area at a particular location and angle relative to the planar cross-sections. (Id. ¶ 27).

Plaintiff is AI Visualization ("AIV"). Its inventions allow a user to access 3D or higher dimensional³ virtual views of a VVD at her own computer over the Internet, without having to transmit and/or locally store the entire VVD. AIV is the owner of several patents related to these inventions, including U.S. Patent No. 8,701,167 ("the ’167 Patent"), U.S. Patent No. 9,106,609 ("the ’609 Patent"), U.S. Patent No. 9,438,667 ("the ’667 Patent"), and U.S. Patent No. 10,930,397 ("the ’397 Patent") (collectively, "the Asserted Patents"). (Id. ¶ 87). The Asserted Patents share an identical specification. (D.I. 25 at 3). AIV alleges Defendants’ products infringe claims 1, 6, 7, 9, 12, and 13 of the ’167 Patent ; claims 1, 4, 6-9, 19, 20, 22, 25, and 26 of the ’609 Patent ; claims 1-3, 8, 9, 11, 14, and 15 of the ’667 Patent ; and claims 1-3, 11-14, and 16-18 of the ’397 Patent (collectively, "the Asserted Claims"). (D.I. 22 ¶¶ 90, 99, 111, 121).

The parties agree that the 35 Asserted Claims can be grouped into three groups. (D.I. 25 at 5; D.I. 27 at 5). Group 1 includes claims directed to a system for remotely viewing user-requested virtual views of a VVD stored at a centralized database using standard computer equipment (i.e. , at least one transmitter, at least one central data storage medium containing the VVD, servers, a resource manager device for load balancing the servers, a security device for controlling communication between the client's device and the servers, and a physically secured site for housing the aforementioned components) and a web application that executes the user's request by (1) determining which frames of the requested view are stored locally and which are stored at the centralized database, (2) transmitting the non-locally stored frames to the user's device, and (3) displaying those frames in combination with any locally stored frames to create the requested views. (D.I. 25 at 5; D.I. 25-2 Ex. 1 at 17). Group 1 contains claims 4 and 6-9 of the ’609 Patent ; claim 1 of the ’167 Patent ; claims 1-3 of the ’667 Patent ; and claims 1-3, 11-14, and 16-18 of the ’397 Patent. (D.I. 25 at 5).

Group 2 includes claims directed to the same system as the Group 1 claims, where the web application determines whether any of the frames of the requested views are locally stored by assigning each request a "unique identifiable key" and comparing that key with a prior request's key to determine whether any values are equivalent. (D.I. 25 at 6; D.I. 25-2 Ex. 1 at 18). Group 2 contains claims 19-20 of the ’609 Patent ; claims 6-7 of the ’167 Patent ; and claims 8-9 of the ’667 Patent. (Id. ).

Group 3 is directed to the same system disclosed in the Group 1 claims, except the web application does not check to see whether frames from the requested views are stored locally. (D.I. 25 at 6-7; D.I. 25-2 Ex. 1 at 19). Instead, the web application requests all frames of the requested views from a centralized server, which first transmits a lower image quality version of the frames for the user to view immediately, and then transmits the higher image quality version. (Id. ). Group 3 contains claims 22, 25, and 26 of the ’609 Patent ; claims 9, 12, and 13 of the ’167 Patent ; and claims 11, 14, and 15 of the ’667 Patent. (Id. ).

The parties agree Claim 1 of the ’609 Patent is representative of Group 1, Claim 19 of the ’609 Patent is representative of Group 2, and Claim 22 of the ’609 Patent is representative of Group 3. (D.I. 25 at 5; D.I. 27 at 5); see Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A. , 776 F.3d 1343, 1348 (Fed. Cir. 2014) (finding the district court did not err in limiting its Section 101 analysis to a single representative claim where all claims were "substantially similar and linked to the same abstract idea"). Therefore, I will limit my analysis to Claims 1, 19, and 22 of the ’609 Patent.

Claim 1 of the ’609 Patent discloses:

A system for viewing at a client device at a remote location a series of three-dimensional virtual views over the Internet of a volume visualization dataset contained on at least one centralized database comprising:

at least one transmitter for accepting volume visualization dataset from remote location and transmitting it securely to the centralized database;

at least one central data storage medium containing the volume visualization dataset;

a plurality of servers in communication with the at least one centralized database and capable of processing the volume visualization dataset to create virtual views based on client request;

a resource manager device for load balancing the plurality of servers;

a security device controlling the plurality of communications between a client device, and the server; including resource manager and central storage medium;

at least one physically secured site for housing the centralized database, plurality of servers, at least a resource manager, and at least a security device;

a web application adapted to satisfy a user's request for the three-dimensional virtual views by:

a) accepting at a remote location at least one user request for a series of virtual views of the volume visualization dataset, the series of views comprising a plurality of separate view frames, the remote location having a local data storage medium for storing frames of views of the volume visualization dataset, b) determining if any frame of the requested views of the volume visualization dataset is stored on the local data storage medium,

c) transmitting from the remote location to at least one of the servers a request for any frame of the requested views not stored on the local data storage medium,

d) at at least one of the servers, creating the requested frames of the requested views from the volume visualization dataset in the central storage medium,

e) transmitting the created frames of the requested views from at least one of the servers to the client device,

f) receiving the requested views from the at least one server, and displaying to the user at the remote location the requested series of three-dimensional virtual views of the volume visualization dataset by sequentially displaying frames transmitted from at least one of the servers along with any frames of the requested series of views stored on the local data storage medium.

(D.I. 25-2 Ex. 1 at 17).

Claim 19 of the ’609 Patent discloses:

The system of claim 1 wherein the web application determines storage of any frame of the requested views of the volume visualization dataset on the local data storage medium is by:

creating a unique identifiable key of a request by the remote location of a three-dimensional virtual view of the volume visualization dataset;

storing on the local data storage medium the unique identifiable key of a prior request by the remote location of a three-dimensional virtual view;

comparing the unique identifiable key of a current request by the remote location of a three-dimensional virtual view with a stored unique identifiable key of a prior request by the remote location of a three-dimensional virtual view;

determining if values of the current and prior unique identifiable keys are equivalent;

if the values are equivalent, displaying from the local data storage medium a stored frame of the prior request of the three-dimensional virtual view; and

if the values are not equivalent, displaying a frame transmitted from the server of the current request by the remote location of a three-dimensional virtual view.

(D.I. 25-2 Ex. 1 at 18).

Claim 22 of the ’609 Patent discloses:

A system for viewing at a client device at a remote location a series of three-dimensional virtual views over the Internet of a volume visualization dataset contained on at least one centralized database comprising:

at least one transmitter for accepting the volume visualization dataset from the remote location and transmitting it securely to the centralized database;

at least one central data storage medium containing the volume visualization dataset;

a plurality of servers in communication with the at least one centralized database and capable of processing the volume visualization dataset to create virtual views

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