Interactive Wearables, LLC v. Polar Electro Oy

501 F.Supp.3d 162

INTERACTIVE WEARABLES, LLC, Plaintiff,

v.POLAR ELECTRO OY and Polar Electro Inc., Defendants.

Case No. 19-CV-3084 (GRB)

United States District Court, E.D. New York.

Signed November 19, 2020

Charles Wizenfeld, Michael S. DeVincenzo, King & Wood Mallesons LLP, New York, NY, for Plaintiff.

Eric Harold Yecies, Holland & Knight, New York, NY, Anthony James Fuga, Pro Hac Vice, Holland & Knight LLP, Chicago, IL, John P. Moran, Pro Hac Vice, Holland & Knight LLP, Washington, DC, for Defendants.

MEMORANDUM & ORDER

GARY R. BROWN, United States District Judge.

Before the Court is defendants Polar Electro Oy and Polar Electro Inc.’s (collectively, "Defendants") Motion to Dismiss for lack of patent-eligible subject matter under 35 U.S.C. § 101 (the "Motion"). Docket Entry ("DE") 22. For the reasons set forth below, the Court hereby GRANTS Defendants’ Motion and dismisses this case with prejudice.

I. Factual and Procedural History

On May 23, 2019, plaintiff Interactive Wearables, LLC's ("Plaintiff") filed a Complaint for Patent Infringement ("Complaint") against Defendants, alleging that Defendants infringe United States Patent Numbers 9,668,016 (the "’016 Patent") and 10,264,311 (the "’311 Patent") (collectively, the "Asserted Patents") through their making, using, testing, offering for sale, selling, and/or importing "smartwatches designed to operate with" remote control devices, including, for example, the Polar M600 watch. DE 1 at 7-9.

Both of the Asserted Patents relate to wearable content players that provide for the capacity to "provid[e] information [relating to content] in conjunction with media content." ’016 Patent, col. 1 ll. 34-40.¹ The specification notes that, "[w]hile information regarding [radio broadcast content] can be introduced prior to, or announced subsequent to, the broadcast of the respective [content], the information is typically not provided during the course of the broadcast and, as a result, an individual who misses the respective introduction or announcement may never receive the desired information." Id. at col. 1 l. 64–col. 2 l. 4. Similarly, "[a]n individual may also wish to know, without having to resort to a printed TV Guide, which may not be at hand, or having to switch channels to an online TV Guide, when the TV program, show or movie started and when it will finish or how much of it has been missed, in order to be able to decide whether or not to watch this TV program, show or movie." Id. at col. 2 ll. 19-25. The invention addressed by the patents seeks to address this problem by "providing information in conjunction with media content, which [thereby] overcomes the shortfalls of the prior art" that could not "provide radio broadcasts or television broadcasts along with information regarding the content of the respective broadcast." Id. at col. 2 ll. 40-48. Both patents contain five independent claims—claims 1, 11, 21, 31, and 32—and twenty-seven dependent claims. Representative claim 32² of the ’016 Patent recites:

32. A content player comprising:

a receiver configured to receive content and together with the content information associated with the content,

a processor coupled to the receiver and configured to process the content and the information associated with the content,

memory coupled to the processor,

a first display coupled to the processor, and

playing device equipment coupled to the processor and configured to provide the content to a user of the content player, the playing device equipment comprising an audio player; wherein the content player is a wearable content player configured to be controlled by a wireless remote control device comprising a second display, the wireless remote control device being configured to receive commands directing operations of the wearable content player, and wherein the wireless remote control device is configured to provide to the user at least a portion of the information associated with the content.

Id. at col. 26 ll. 7-27. Independent claims 1 and 31 recite substantially the same concept but add that the remote control device is "wirelessly coupled" with the content player. Id. at col. 22 ll. 1-24, col. 25 l. 12–col. 26 l. 6. In turn, independent claims 11 and 21 recite substantially the same concept but do so in the context of a method; claim 11 further lacks the limitation of a memory coupled to the processor. Id. at col. 23 ll. 1-21, col. 24 ll. 16-34.

Defendants filed the fully briefed Motion on December 23, 2019, following the consent of the parties to the undersigned, then serving as a magistrate judge, for all purposes. Subsequently, the undersigned was confirmed as a United States District Judge. However, in the interests of judicial economy, the undersigned retained jurisdiction over this matter pending its resolution.

II. Legal Standards

A. Patent Eligibility Under 35 U.S.C. § 101

Anyone who "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. 35 U.S.C. § 101. The Supreme Court has "long held that this provision contains an important implicit exception[:] Laws of nature, natural phenomena, and abstract ideas are not patentable." Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) ). Accordingly, in addressing patentability under § 101, the Court must distinguish between claims that merely set forth these "building blocks of human ingenuity" and those that "integrate the building blocks into something more." Alice Corp. Pty. Ltd. v. CLS Bank Int'l , 573 U.S. 208, 216-17, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014).

Under the two-part test described by the Supreme Court in Alice , the Court "must first determine whether the claims at issue are directed to a patent-ineligible concept," such as an abstract idea. Alice , 573 U.S. at 218, 134 S.Ct. 2347. This inquiry is not concerned merely with "whether the claims involve a patent-ineligible concept"; rather, it "applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’ " Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) ). Thus, as Plaintiff observes, the first step of the Alice framework is concerned with the "risk that a claim will pre-empt others from using an abstract idea" regardless of its implementation. DE 23 at 11; see, e.g. , Mayo , 566 U.S. at 72, 132 S.Ct. 1289 ; Alice , 573 U.S. at 216, 223, 134 S.Ct. 2347. In contrast, "claims ‘purport[ing] to improve the functioning of the computer itself,’ or ‘improv[ing] an existing technological process’ might not succumb to the abstract idea exception." Enfish , 822 F.3d at 1335 (quoting Alice , 573 U.S. at 223-25, 134 S.Ct. 2347 ). As in Enfish , "the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool." Enfish , 822 F.3d at 1335-36.³

If the challenged claims are found to recite a patent-ineligible concept, the Court must then "examine the elements of the claim[s]" to establish whether they "include ‘additional features’ to ensure ‘that the [claims] [are] more than a drafting effort designed to monopolize the [abstract idea].’ " Alice , 573 U.S. at 221, 134 S.Ct. 2347 (quoting Mayo , 566 U.S. at 77, 132 S.Ct. 1289 ). 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." Alice , 573 U.S. at 217, 134 S.Ct. 2347 (quoting Mayo, 566 U.S. at 78, 132 S.Ct. 1289 ). This second step is described "as 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. at 217-18, 134 S.Ct. 2347 (quoting Mayo , 566 U.S. at 72-73, 132 S.Ct. 1289 ). "An inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer." BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC , 827 F.3d 1341, 1349 (Fed. Cir. 2016) (citing Alice , 573 U.S. at 222-23, 134 S.Ct. 2347 ). Nor does it suffice to "limit[ ] the use of an abstract idea ‘to a particular technological environment.’ " Alice , 573 U.S. at 223, 134 S.Ct. 2347 (quoting Bilski v. Kappos , 561 U.S. 593, 610-11, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) ). Rather, the claims "must involve more than performance of ‘well-understood, routine, conventional activit[ies] previously known to the industry.’ " TLI Commc'ns , 823 F.3d at 613 (quoting Alice , 573 U.S. at 225, 134 S.Ct. 2347 ); see also Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n , 776 F.3d 1343, 1347–48 (Fed. Cir. 2014). The use of conventional components is not, on its own, necessarily a bar to finding an inventive concept, as "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." BASCOM , 827 F.3d at 1350. Whether through non-conventional components or arrangement, however, the claims must "improve the functioning of the computer itself ... [or] effect an improvement in any other technology or technical field." Alice , 573 U.S. at 225, 134 S.Ct. 2347. For example, a claim may exhibit an inventive concept where it is addressed to "a technical solution to a...