676 F.Supp.3d 766
N.D. Cal.2023Background
- Plaintiff Wildseed Mobile LLC sued Google LLC and YouTube LLC for infringement of five patents and asserted three patents in this §101 motion: U.S. Pat. Nos. 9,141,960; 10,251,021; and 10,959,040.
- The FAC alleges claims that use media stored on a user’s portable device and the user’s location to infer entertainment preferences and recommend nearby venues/events; Claim 1 of the ’960 patent was treated as representative.
- The specification describes inferring location (GPS, triangulation, access-point location) and inferring user preferences from media metadata (genres, artists, etc.).
- Defendants moved for judgment on the pleadings under Rule 12(c) arguing the asserted patents are directed to abstract ideas and thus ineligible under 35 U.S.C. § 101; parties agreed no claim construction was required to decide eligibility.
- The court applied the two-step Alice framework and treated Claim 1 of the ’960 patent as representative of the asserted claims.
- Ruling: the court held the three patents are directed to an abstract idea, contain no inventive concept or improvement to computer functionality, and are invalid under § 101; Counts II–IV of the FAC were dismissed with prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claims are directed to an abstract idea (Alice step one) | Claims are improvements to portable media players that use device capabilities to enhance user experience | Claims recite tailoring/recommendations based on user media and location — a longstanding, abstract human practice | Directed to an abstract idea (tailored venue/event recommendations) |
| Whether the claims recite an inventive concept or improve computer functionality (Alice step two) | The combination of portable media players and recommendation functionality amounts to a device-functionality improvement | Claim elements are generic computer-implemented steps (retrieve, infer, access, identify, generate, communicate); no nonconventional arrangement | No inventive concept; claims are routine/conventional implementations and not patent-eligible |
| Whether claim construction was required before ruling on §101 | Wildseed emphasized device-specific limitations (portable media players) and argued specificity matters | Defendants and court: the basic character of the claimed subject matter is clear without construction | Court found no claim construction necessary to resolve §101 at the pleading stage |
| Remedy / procedural disposition | Wildseed sought to proceed on asserted claims | Defendants sought partial judgment on the pleadings under Rule 12(c) | Motion granted; Counts II–IV dismissed with prejudice |
Key Cases Cited
- Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014) (establishes two-step §101 framework)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (natural-law/abstract-idea exclusion rationale)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (distinguishes abstract idea from software-based improvement to computer functionality)
- Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) (minimal tailoring of content is an abstract idea)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014) (routine data-recognition and extraction on a computer insufficient for §101)
- BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (inventive concept can exist in a nonconventional, non-generic arrangement)
- Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018) (distinguishes generic implementations from specific functional improvements)
- Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329 (Fed. Cir. 2017) (conventional ordering of steps and generic technology do not supply inventive concept)
- Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d 1266 (Fed. Cir. 2013) (claim construction not always required for §101 determination)
- Weisner v. Google LLC, 51 F.4th 1073 (Fed. Cir. 2022) (specific technical implementations of location-based search can survive §101 at pleading stage)