Ficep Corp. v. Peddinghaus Corp.

587 F.Supp.3d 115

FICEP CORPORATION, Plaintiff,

v.PEDDINGHAUS CORPORATION, Defendant.

Civil Action No. 19-1994-RGA

United States District Court, D. Delaware.

Filed February 28, 2022

Adam W. Poff, Robert M. Vrana, YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE; Matthew B. Lowrie (argued), Kevin M. Littman, FOLEY & LARDNER LLP, Boston, MA, Attorneys for Plaintiff.

Kelly E. Farnan, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; Stephanie P. Koh (argued), Leif E. Peterson, II, SIDLEY AUSTIN LLP, Chicago, IL, Attorneys for Defendant.

MEMORANDUM OPINION

ANDREWS, UNITED STATES DISTRICT JUDGE:

Before me is Defendant's Motion for Summary Judgment of Unpatentability Under 35 U.S.C. § 101. (D.I. 49). I have reviewed the parties’ briefing (D.I. 50, 53, 58), and I heard oral argument on February 17, 2022. (References to the transcript of the oral argument are indicated by "Tr."). For the reasons that follow, I will GRANT this motion.

I. BACKGROUND

In its First Amended Complaint (D.I. 13), Plaintiff Ficep Corporation alleges that Defendant Peddinghaus Corporation infringes one or more claims of U.S. Patent No. 7,974,719 ("the ’719 patent"). Ficep and Peddinghaus are competitors in the production of steel fabrication machinery, which can be used to manufacture large steel beams for use in construction projects. (D.I. 13 at ¶¶ 6, 9; ’719 patent, 3:62–4:7). The ’719 patent is entitled "Method and an Apparatus for Automatic Manufacture of an Object with Multiple Intersecting Components." It generally relates to "systems and methods for automatic manufacture of an object based on automatic transmission of a three-dimensional rendering of the object, such as a rendering from a CAD to an assembly line for manufacture." ( ’719 patent, 1:9–13).

Peddinghaus filed a motion to dismiss the First Amended Complaint for lack of patent eligible subject matter. (D.I. 15). The Magistrate Judge issued a Report & Recommendation recommending that I deny the motion because there were factual disputes as to whether the claims recited an inventive concept. (D.I. 30). I did not rule on the merits as to any objections to the Report & Recommendation, but I did adopt its conclusion that I deny the motion to dismiss. (D.I. 33 at 2). I suggested an early summary judgment motion on the patent eligibility issue would be appropriate. (Id. ). Peddinghaus later filed the present motion for summary judgment of unpatentability. (D.I. 49).

II. LEGAL STANDARDS

A. Summary Judgment

"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). Material facts are those "that could affect the outcome" of the proceeding. Lamont v. New Jersey , 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). "[A] dispute about a material fact is ‘genuine’ if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Id. The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586–87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ; Williams v. Borough of West Chester , 891 F.2d 458, 460–61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute ...." FED. R. CIV. P. 56(c)(1). The non-moving party's evidence "must amount to more than a scintilla, but may amount to less (in the evaluation of the court) than a preponderance." Williams , 891 F.2d at 461.

When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Wishkin v. Potter , 476 F.3d 180, 184 (3d Cir. 2007). If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. , 477 U.S. at 322, 106 S.Ct. 2548.

B. Patent-Eligible Subject Matter

Section 101 of the Patent Act defines patent-eligible subject matter. It provides: "Whoever 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, subject to the conditions and requirements of this title." 35 U.S.C. § 101. The Supreme Court recognizes three categories of subject matter that are not eligible for patents—laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS Bank Int'l , 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). The purpose of these exceptions is to protect the "basic tools of scientific and technological work." Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc. , 566 U.S. 66, 71, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012).

In Alice , the Supreme Court reaffirmed the framework laid out in Mayo "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts."

Alice , 573 U.S. at 217, 134 S.Ct. 2347. First, the court must determine whether the claims are drawn to a patent-ineligible concept. Id. If the answer is yes, the court must look to "the elements of the claim both individually and as an ordered combination" to see if there is 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. at 217–18, 134 S.Ct. 2347 (cleaned up).

"While the ultimate determination of eligibility under § 101 is a question of law, ... there can be subsidiary fact questions which must be resolved en route to the ultimate legal determination." Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d 1121, 1128 (Fed. Cir. 2018).

III. DISCUSSION

A. Representative Claim

A court may treat a claim as representative where all claims are "substantially similar and linked to the same abstract idea." Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n , 776 F.3d 1343, 1348 (Fed. Cir. 2014). Peddinghaus argues that claim 7 is representative of all claims of the ’719 patent. (D.I. 50 at 3 & n.1). Ficep disagrees. (D.I. 53 at 25).

Claims 1, 7, and 14 are the only independent claims in the ’719 patent. These claims are written as method, apparatus, and article of manufacture claims, respectively, but recite substantially the same limitations, including: (1) creating a design model of an object having multiple individual components defining an intersection at which the two components are in contact with one another; (2) identifying and extracting component dimensions, intersection parameters, and manufacturing parameters from the design file; (3) transmitting that information to the manufacturing machine; and (4) manufacturing components, using the manufacturing machine, based at least in part on the transmitted component dimensions, intersection parameters, and manufacturing parameters. (See ’719 patent, claims 1, 7, and 14). Thus, I agree with Peddinghaus that claim 7 is representative of the independent claims of the ’719 patent.

Peddinghaus further argues that claim 7 is representative of the dependent claims because they do not include limitations that would alter the § 101 analysis. (D.I. 50 at 3 n.1 & 16 n.6). Specifically, Peddinghaus contends,

Claims 8, 9, and 13 recite further generic computer components such as a "data storage unit," a "monitor," and a "wireless connection" over which the transmitter can send data. Claim 10 adds that an object is assembled from the manufactured components, as it would be in any prior art manufacturing method. Claims 11 and 12 merely describe generic aspects of the design model, all of which the specification acknowledges are in the prior art. Claims 2–6 are directed to similar subject matter, but in the context of method claim 1.

(Id. at 16 n.6) (internal citations omitted).

In response, Ficep argues that the limitations in claims 4 and 10 (assembly of the object) and claim 13 (wireless connection) further tie the claims to "the physical world and manufacturing process." (D.I. 53 at 25). I agree with Peddinghaus that the limitations in the dependent claims do not alter the § 101 analysis. The dependent claims merely add generic components and limitations that are conventional and uninventive.

Because all the independent claims recite the same concept and the dependent claims offer only minor, non-technical limitations, I will consider claim 7 as representative. See Content Extraction , 776 F.3d at 1348 ; Berkheimer v. HP Inc. , 881 F.3d 1360, 1365 (Fed. Cir. 2018) ("[C]ourts may treat a claim as representative ... if the patentee does not present any meaningful argument for the distinctive significance of any claim limitations not found in the representative claim.").

Representative claim 7 recites:

7. An apparatus for automatic manufacture of an object, comprising:

a computing device adapted to create a design model of an object having multiple individual components, at least two of the individual components defining an intersection at which the two

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