485 F.Supp.3d 1156
N.D. Cal.2020Background
- FullView owns U.S. Patent No. 6,700,711 (the ’711 Patent) claiming technology to produce seamless 360° composite images using multiple cameras/sensors and mirrors; the suit asserts infringement of selected claims of the ’711 (and also the ’143) Patent against Polycom.
- FullView previously licensed the patents to Polycom for the CX5000 camera; FullView alleges Polycom terminated the license early and continued selling products without paying royalties.
- Polycom petitioned the PTAB inter partes reexamination of the ’711 Patent; the PTAB upheld all claims and the Federal Circuit affirmed as to obviousness.
- Polycom moved to partially dismiss the Second Amended Complaint under Fed. R. Civ. P. 12(b)(6), arguing the Composite Image Claims are not patent-eligible subject matter under 35 U.S.C. § 101 and that all Asserted Claims are invalid under Alice as directed to an abstract idea without an inventive concept.
- The district court held the Composite Image Claims were not a statutory “manufacture” because they cover intangible embodiments, and that the Asserted Claims are directed to the abstract idea of combining multiple images and lack an inventive concept; the § 271(g) dismissal issue was rendered moot by that ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Composite Image Claims are a statutory "manufacture" under § 101 | The claimed term “image” is a tangible manufacture (photographic material or electronic display) and thus patent-eligible | Claims cover intangible/transitory images (mental images, signals/data); claim scope therefore includes non‑statutory embodiments | Court: Claim breadth covers intangible images; not a manufacture; dismissed under § 101 |
| Whether the Asserted Claims are directed to an abstract idea (Alice Step 1) | Claims are directed to a specific technical means/method to improve imaging (relying on PTAB/Fed. Cir. findings of novelty) | Combining/merging multiple images is an abstract concept (longstanding human/photographic practice) | Court: Directed to the abstract idea of combining multiple images |
| Whether the Asserted Claims supply an inventive concept (Alice Step 2) | The particular arrangement of sensors, mirrors, and offsets supplies an inventive concept | Arrangement is simple geometry/mathematics and uses conventional, well‑known components | Court: No inventive concept in the non‑abstract realm; claims remain ineligible |
| Sufficiency of the § 271(g) pleading (importation) | Alleges transmission/importation of images and post‑termination sales; seeks relief under § 271(g) | Pleading fails to allege sufficient facts about importing a patented process into the U.S. | Court: Did not rule on merits; § 271(g) issue is moot because § 101 invalidity disposes of the complaint |
Key Cases Cited
- Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208 (2014) (establishes the two‑step test for § 101 patent eligibility)
- In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (signals/transitory embodiments are not a statutory "manufacture")
- Mentor Graphics Corp. v. EVE‑USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017) (claims covering both statutory and non‑statutory embodiments are ineligible)
- Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) (particular sensor configuration and method can avoid abstract‑idea ruling at Step 1)
- RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017) (coding/combining image data is an abstract idea)
- Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (organizing/combining data into a new form can be abstract)
- In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) (recitation of generic components does not confer eligibility)
- BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018) (inventive concept must be more than conventional application of an abstract idea)
- SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018) (novelty/technical merit separate from § 101 eligibility)
- Yu v. Apple Inc., 392 F. Supp. 3d 1096 (N.D. Cal. 2019) (combining multiple images to enhance another is an abstract idea)