Ivanti, Inc. v. Patch My PC, LLC

669 F.Supp.3d 1109

IVANTI, INC., Plaintiff, v. PATCH MY PC, LLC, Defendant.

Civil Action No. 22-cv-00643-NYW-SKC

United States District Court, D. Colorado

Signed April 13, 2023

Emily Lauren Wasserman, Davis Graham & Stubbs LLP, Denver, CO, Michael Bryan Dunbar, Michael F. Heim, Robert Allan Bullwinkel, Heim Payne & Chorush, LLP, Houston, TX, for Plaintiff.

Daniel W. McDonald, Merchant & Gould, Atlanta, GA, Kristen Marie Geary, Peter A. Gergely, Ryan James Fletcher, Merchant & Gould PC, Denver, CO, Peter Steven Selness, Merchant & Gould, P.C., Minneapolis, MN, for Defendant.

ORDER ON MOTION TO DISMISS

Nina Y. Wang, United States District Judge

This matter is before the Court on Defendant Patch My PC, LLC's Motion to Dismiss (the "Motion" or "Motion to Dismiss") [Doc. 18]. The Court has reviewed the Motion, the related briefing, and the applicable case law, and concludes that oral argument would not materially assist in the resolution of this matter. For the reasons set forth herein, the Motion to Dismiss is respectfully GRANTED.

BACKGROUND

This case revolves around three patents: United States Patent No. 6,990,660 ("the '660 Patent");¹ United States Patent No. 7,823,147 ("the '147 Patent"); and United States Patent No. 8,407,687 ("the '687 Patent") (collectively, the "Patents-in-Suit").² [Doc. 1 at ¶¶ 7-10]. The Court takes the following facts from the Complaint for Patent Infringement (the "Complaint") [Doc. 1] and the Patents-in Suit, and presumes they are true for the purposes of this Order.

These patents "relate to systems and methods for updating existing software across a remote network based on the use of patch fingerprints to check for the need to update software and then update[e] that software as required." [Id. at ¶ 7]; see also [id. at ¶ 11 (alleging that the Patents-In-Suit relate to '[m]ethods, systems, and configured storage media . . . for discovering software updates, discovering if a given computer can use the software update, and then updating the computers with the software as needed automatically across a network without storing the updates on an intermediate machine within the network.' ") (quoting Doc. 1-1 at 2)³].⁴ The subject inventions "facilitate software development, software installation, software updating, and file distribution based on software and patch finger printing across multiple operating systems and devices, across a network." [Id. at ¶ 11 (quoting Doc. 1-1 at col. 3, ll. 33-37) (alterations omitted)].

The systems and methods in the Patents-in-Suit contemplate the following components: a "package computer," an "update server," and a "target computer." [Id. at ¶ 12]. The package computer maintains software patches that may be needed to update target computers within the network. [Id.]. The update server accesses those software patches so that the patches can be deployed to the target computers within the network. [Id.]. The update server may also include "a repository component" that maintains "patch fingerprint" information and information about the network's target computers. [Id.].

Patch fingerprints maintain software patch information and permit the system to determine if a given software package should be loaded onto a target computer. [Id. at ¶ 13]. The system uses information in the patch fingerprint, inventory library, and specific information gleaned from each target computer to "intelligently recommend which patches and drives are required for a given [target] computer." [Id. (quoting Doc. 1-1 at 13, 3:66-4:3)]. The system may also include a "discovery agent," which can be used to "discover the hardware and software on a target machine" and "return scan results for patch fingerprints, which indicate whether it is appropriate to install a specific patch associated with each fingerprint." [Id. at ¶ 14 (quoting Doc. 1-1 at 13, 4:4-14) (alteration marks omitted)].

Plaintiff Ivanti, Inc. ("Plaintiff" or "Ivanti") "owns all substantial rights" to the Patents-in-Suit, "including the right to sue and recover damages for all infringement thereof." [Id. at ¶¶ 7-10]. Ivanti alleges that Defendant Patch My PC, LLC ("Defendant" or "Patch My PC") has infringed on each of the Patents-in-Suit. Specifically, Plaintiff alleges that Defendant's "manufacture, sale, offer for sale, and use of . . . patching services . . . , including, but not limited to, Enterprise Plus, Enterprise, and InTune only subscriptions" (the "Accused Instrumentalities") infringes on "at least" Claim 1 of the '660 Patent, the '147 Patent, and the '687 Patent (the "Asserted Claims"). [Id. at ¶¶ 15, 42, 51]. Generally, and according to Plaintiff, the Accused Instrumentalities automate the process of updating software for a system of client computers, or target computers, by downloading software updates from a package computer to an update server, using a patch fingerprint to identify software updates and their applicability to a target computer, gathering information about the target computers, and deploying updates to target computers. [Id. at ¶¶ 22-23]. Ivanti further avers that Patch My PC received notice of its patent infringement on November 2, 2021 and has continued to infringe upon the Patents-in-Suit, rendering its infringement willful and deliberate. [Id. at ¶¶ 16, 19, 43, 46, 52, 55]. As a result of Patch My PC's infringement, Ivanti seeks damages for infringement and willful infringement. [Id. at ¶¶ 17, 44, 53].

Plaintiff initiated this lawsuit on March 15, 2022, asserting one count of patent infringement for each Patent-in-Suit against Defendant. See [id. at ¶¶ 6-27]; see also [Doc. 36]. Defendant filed the instant Motion to Dismiss on May 5, 2022, arguing that each of Plaintiff's counts should be dismissed under Rule 12(b)(6) because the Patents-in-Suit all claim unpatentable subject matter. See generally [Doc. 18]. The Motion is fully briefed. [Doc. 24; Doc. 30]. The Court discusses the Parties' respective arguments below.⁵

LEGAL STANDARD

Under Rule 12(b)(6), a court may dismiss a complaint for "failure to state a claim upon which relief can be granted." Fed. R. Civ. P. 12(b)(6). In deciding a motion under Rule 12(b)(6), the Court must "accept as true all well-pleaded factual allegations . . . and view these allegations in the light most favorable to the plaintiff." Casanova v. Ulibarri, 595 F.3d 1120, 1124 (10th Cir. 2010) (quoting Smith v. United States, 561 F.3d 1090, 1098 (10th Cir. 2009)). Nevertheless, a plaintiff may not rely on mere labels or conclusions, "and a formulaic recitation of the elements of a cause of action will not do." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). Rather, "a complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009); see also Robbins v. Oklahoma, 519 F.3d 1242, 1247 (10th Cir. 2008) (explaining that plausibility refers "to the scope of the allegations in a complaint," and that the allegations must be sufficient to nudge a plaintiff's claim(s) "across the line from conceivable to plausible"). The ultimate duty of the Court is to "determine whether the complaint sufficiently alleges facts supporting all the elements necessary to establish an entitlement to relief under the legal theory proposed." Forest Guardians v. Forsgren, 478 F.3d 1149, 1160 (10th Cir. 2007).

ANALYSIS

I. Subject Matter Patentability

Patch My PC argues that Ivanti's claims must be dismissed under Rule 12(b)(6) because the claimed inventions in the Patents-in-Suit are not patentable and are thus invalid under 35 U.S.C. § 101, see [Doc. 18 at 16-26], which provides that "[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, subject to the conditions and requirements of this title." 35 U.S.C. § 101. "The Supreme Court has identified three types of subject matter that are not patent-eligible: 'Laws of nature, natural phenomena, and abstract ideas are not patentable.' " CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1367 (Fed. Cir. 2020) (quoting Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014)). The 'abstract ideas' category, the subject matter at issue in this case, embodies 'the longstanding rule that an idea of itself is not patentable.' " Id. (quoting Alice, 573 U.S. at 218, 134 S.Ct. 2347 (alteration marks omitted)).

In Alice, the Supreme Court articulated a two-step framework for determining patent eligibility. See generally 573 U.S. 208, 134 S.Ct. 2347, 189 L.Ed.2d 296. In the first step, the Court "determines whether the claims at issue are directed to a patent-ineligible concept." Id. at 218, 134 S.Ct. 2347. This step "plainly contemplates that the first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The 'directed to' inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept," id., but assesses "whether the claims . . . focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016). If the Court concludes that the claims are not directed to a patent-ineligible concept, the inquiry under § 101 ends. Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1007 (Fed. Cir. 2018).

"If the claims are directed to a patent-ineligible concept, however," the Court "next consider[s] Alice step two." Id. At step two, the Court looks at "the elements of each claim both individually and 'as an ordered combination' to determine whether the...