Case Information
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA FULLVIEW, INC., Cаse No. 18-cv-00510-EMC Plaintiff, ORDER GRANTING DEFENDANT’S PARTIAL MOTION TO DISMISS v. Docket No. 80 POLYCOM, INC., Defendant. I. INTRODUCTION
Plaintiff FullView, Inc. (“FullView”) filed this lawsuit against Defendant Polycom, Inc.
(“Polycom”) alleging patent infringement. FullView is the owner of a patent disclosing technology involving the creation of composite images— i.e. , a device capable of producing panoramic photographs. Pending before the Court is Polycom’s partial motion to dismiss on the grounds that all claims in FullView’s patent are nonpatentable. Polycom also argues that the complaint fails to state a claim for global infringement under 35 U.S.C. section 271(g). For the reasons discussed below, the Court GRANTS Polycom’s motion to dismiss because the clаims are directed at nonpatentable subject matter and seeks protection of an abstract idea without an inventive concept. Polycom’s motion to dismiss FullView’s Section 271(g) claim for failure to plead sufficient facts is therefore moot.
II. BACKGROUND A. Factual Background
FullView’s Second Amended Complaint alleges as follows. Dr. Nishvjit Singh Nalwa owns numerous patents and is the co-founder and current president of FullView. Docket No. 75 (“SAC”) ¶ 7. FullView is the owner of U.S. Patent No. 6,700,711 (“’711 Patent”), which is 1 entitled “Panoramic viewing system with a composite field of view . . . .” Id . ¶ 10. It is also the 2 owner of U.S. Patent 6,128,143 (“’143 Patent”) entitled “Panoramic viewing system with support 3 stand . . . .” Id . ¶ 10. Polycom’s motion only challenges the ’711 Patent. 4 The ’711 Patent is comprised of thirty-nine claims that covers “an omni-directional or 5 panoramic viewer.” In other words, “[i]t describes several cameras looking out in different 6 directions off mirrors, from offset rather than coincident viewpoints, to provide the user with 7 seamless 360° composite images to the view’s eye that allow the user to look in any direction 8 . . . .” Id . ¶ 12. The ’711 Patent is made up of the following claims: 9 10 • Claim 25 and its dependent claims— e.g. , 26. 28, 29, 33, 35, 37, and 39—are the
11 “Composite Image Claims.”
12 13 SAC ¶ 34 (“FullView asserts only the following 18 claims here: 1, 2, 4, 5, 9, 11, 13, 15, 16, 18, 25, 26, 28, 29, 33, 35, 37 and 39.”); Mot. at 2. The ‘143 Patent is made up of eighteen claims covering a “system and apparatus for a compact аnd non-instructive omni-directional or panoramic viewer in which several cameras look off a mirrored pyramid, this pyramid and these Claim 1 and its dependent claims— • Claim 16 and 18 are the “Apparatus Claims.” • , 2, 4, 5, 9, 11, 13, and 15—are the “Method e.g. [1] Claims.”
cameras secured to a support member that intersects an inner volume of the pyramid.” . ¶ 13.
On April 1, 2011, FullView licensed the ’711 and ’143 Patents to Polycom, which allowed Polycom to manufacture its CX5000 camera that provides for 360° video conferencing. . ¶ 14. On July 2, 2012, Polycom gave notice to FullView that it intended to terminate their agreement; however, Polycom terminated the agreement earlier than required under the agreement’s 90-day- notice provision. . ¶ 16. Although Polycom ceased manufacturing its CX5000, FullView alleges that Polycom continued to sell the CX5000 without reporting these sales and, thus, foregoing payment of royalties owed to FullView. See id. ¶¶ 20, 31.
B. Procedural Background
1. History of Inter Partes Reexamination (“IPR”)
In January 2012, Polycom filed an IPR petition challenging the validity of the ’711 Patent.
Id
. ¶ 19. On January 4, 2017, the Patent Trial and Appeal Board (“PTAB”) of the United States
Patent and Trademark Office (“PTO”) upheld each of the thirty-nine claims that make up the ’711
Patent.
Id
. ¶ 21. The Court of Appeals for the Federal Circuit affirmed the PTAB’s decision on
April 29, 2019.
Id
. ¶ 23. The narrow subject of this litigation was obviousness.
See Polycom,
Inc. v. Fullview, Inc.
,
denied the petition, as well as Polycom’s request for rehearing on September 10, 2019. . ¶ 25. 2. History of the Instant Litigation On January 23, 2018, FullView filed its initial complaint. See Docket No. 1. On March 7, 2018, this Court stayed this action pending the resolution of the IPR of the ’711 Patent. Docket No. 16. Following the Federal Circuit’s opinion upholding the PTAB’s decision, FullView amended its complaint to include a fraudulеnt concealment allegation to toll the statute of limitations for an additional year of liability. Docket No. 51 (“FAC”). Polycom moved to partially dismiss the fraud allegations for failure to satisfy Rule 9(b). Docket No. 52. Before the parties fully briefed Polycom’s motion, FullView sought leave to file an amended pleading in order to enhance its factual allegations with respect to the fraudulent concealment theory, as well as include a false marketing claim. Docket No. 68. This Court partially denied FullView’s request for leave to amend because the fraudulent concealment and false marketing claims werе futile, thereby rendering Polycom’s then-pending motion to dismiss moot. Docket No. 72. The Court, however, permitted FullView to file the remainder of its proposed SAC, which contained unopposed amendments. .
FullView filed its SAC on July 2, 2020, alleging one claim for relief: infringement of the ’711 and ’143 Patents under 35 U.S.C. section 271 in the form of (1) direct infringement; (2) infringement by inducement; and (3) infringement via the doctrine of equivalents. SAC ¶¶ 59–66. Polycom moved to dismiss the SAC. See Mot. The Court heard oral argument on August 20, 2020, wherein counsel for FullView discussed a Federal Circuit decision not cited in the parties’ briefs. The Court permitted supplemental briefing on Thales Visionix Inc. v. United States , 850 F.3d 1343 (Fed. Cir. 2017). See Docket No. 101.
III. LEGAL STANDARD
Federal Rule of Civil Procedure 8(a)(2) requires а complaint to include “a short and plain
statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A
complaint that fails to meet this standard may be dismissed pursuant to Federal Rule of Civil
Procedure 12(b)(6).
See
Fed. R. Civ. P. 12(b)(6). To overcome a Rule 12(b)(6) motion to dismiss
after the Supreme Court’s decisions in
Ashcroft v. Iqbal
,
“Patent eligibility can be determined at the Rule 12(b)(6) stage ‘when there are no fаctual
allegations that, taken as true, prevent resolving the eligibility question as a matter of law.’”
Voter
Verified, Inc. v. Election Sys. & Software LLC
,
IV. DISCUSSION In its motion to dismiss, Polycom contends the Composite Image Claims are invalid because they are not directed at patent-eligible subject matter delineated in 35 U.S.C. section 101 (“Section 101”). It also contends the Asserted Claims seek to patent abstract ideas without an inventive concept. In response to Polycom’s argument regarding failure to fit into statutory patent-eligible subject matter, FullView argues that Composite Image Claims fall under the “manufacture” category of Section 101. FullView also takes the position that every claim within the ’711 Patent contains an inventive concept and is not directed to an abstract idea. . at 7. A. Patentable Subject Matter under 25 U.S.C. Section 101 Polycom argues that the Composite Image Claims (Claim 25 and dependent claims) are invalid under Section 101 because they fit in none of the statutory categories for patent eligibility. Under Section 101, “[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[.]” 35 U.S.C. § 101. While FullView appears to argue that the Composite Image
Claims are a “manufacture” under Section 101, much of FullView’s opposition brief recounts the
PTAB and Federal Circuit’s decisions that pertained to whether the’711 Patent was novel and
sustainable under Section 102—not whether it was directed at patent-eligible subject matter under
Section 101. Polycom correctly contends that novelty bears no relevance for Section 101
purposes.
See Intellectual Ventures I LLC v. Symantec Corp.
,
According to FullView, the only claim term within the Composite Image Claims that is disputed by the parties is “image.” It contends the claimed term “image” is a “manufacture” under Section 101. In support of this argument, FullView cites to the Merriam-Webster Dictionary because “image” invokes seven definitions, two of which read as follows: Image , noun 1 a : a visual representation of something: such as 16 (1) : a likeness of an object produced on a photographic material 17 (2) : a picture produced on an electronic display (such as a television or computer screen) 18 b : the optical counterpart of an object produced by an optical device (such as a lens or mirror) or an electronic 19 device 2 a : 20 (1) : a mental picture or impression of something (2) : a mental conception held in common by 21 members of a group and symbolic of a basic attitude and orientation 22 b : IDEA, CONCEPT https://www.merriam-webster.com/dictionary/image (emphasis in original). According to
23 FullView, definition numbers 1a & 1b describe “image” as used in the Composite Image Claims. 24 Thus, FullView explains that the composite image—produced on a photographic material or on an 25 electronic display—is both tangible and a manufacture under Section 101. In response, Polycom 26 contends that the fact that there seven dictionary definitions оf “image” buttresses its position that 27 the Composite Image Claims are too broad and, thus, not a “manufacture” since these definitions 28 encompass intangible embodiments, such as transitory mental images and data.
Here, Claim 25 of the ’711 Patent reads as follows:
A composite image produce[d] with a plurality of sensors each having an individual field of view, by following the method of: for at least one of the plurality of sensors, redirecting at least a portion of its individual field of view with a reflective area; and merging images corresponding to the individual fields of view to produce the composite image having a corresponding field of view, wherein each one of at least two fields of view corresponding to images that are merged has a portion, where the images are merged, that has viewing directions that are substantially similar to the viewing directions of the other portion, and wherein the viewing directions within each one of such two portions appear to originate substantially from a point that is offset from the point for the other one of such two portions.
SAC, Ex. A, cl 25. The Composite Image Claims are broad enough to cover intangible images—
i.e.
, it can include mental images or optical counterparts of an object produced by a lens, mirror, оr
electronic device, like a reflection.
Two Federal Circuit decisions provide guidance on the definition of a “manufacture.” The
first,
In re Nuijten
,
Second, in
Mentor Graphics Corp. v. EVE-USA
,
Inc
.,
FullView offers no persuasive response to Nuijten or Mentor . Instead, FullView takes the conсlusory position that “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent . . . the claimed ‘image’ is not a transitory signal—and neither does the ’711 Patent describe or claim or embrace a transitory signal or wave as a potential storage medium for its claimed composite image.” Docket No. 84 (“Opp.”) at 13. But this fails to deal with Nuijten and Mentor . Moreover, it is inconsistent with FullView’s own argument: FullView argues that the transmission of composite images in the form of intangible data into the United States via worldwide communication networks infringes under Section 271(g). Opp. at 19 (“the purpose of a video conferencing product is to allow user to communicate by transmitting images captured at one location to another location.”) (emphasis in original). This makes the claims at issue comparable to Mentor .
Accordingly, the Court GRANTS Polycom’s motion to dismiss the Composite Image Claims as patent ineligible under Section 101.
B. Patentability under The Two-Step Alice Test
Moreover, all the Asserted Claims raise fundamental questions about patentability under
Section 101. Polycom alleges all claims within the ’711 Patent are directed at an abstract idea
without offering an inventive concept under
Alice Corp. Pty. v. CLS Bank Int'l
,
In
Alice
, the Supreme Court recognized that it has “long held that [Section 101] contains
an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.”
Id
. at 216 (citing
Association for Molecular Pathology v. Myriad Genetics, Inc.
, 569
U.S. 576, 589 (2013)). However, because all inventions will eventually touch upon laws of
nature, natural phenomena, or abstract ideas, “an invention is not rendered ineligible for patent
simply because it involves an abstract concept.” . (citing
Diamond v. Diehr
,
1. Step 1: Whether the Patent is Directed to an Abstract Idea
Polycom argues the Asserted Claims are directed at an abstract idea because the concept of
merging or redirecting multiple images to form a composite image is something “that humans
have been creating in their visual cortex since the dawn of humanity” because “each eye sees a
slightly different image (including blind spots) thаt the brain combines to form a composite
image.” Mot. at 1–2. FullView’s response, like its response to statutory-patent eligibility, relies
exclusively on the Federal Circuit’s decision on novelty: “as clear from the Federal Circuit’s
treatment of the ’711 invention . . . , both it and the PTAB clearly understood the claims to be
directed to a specific means or method for improving technology and not simply directed to an
abstract end-result.” Opp. at 7. But as stated above, novelty is separate from eligibility.
See, e.g.
,
Intellectual Ventures
,
In
RecogniCorp
, thе Federal Circuit decided whether a patent that was directed at building
a composite facial image using encoding and decoding—
i.e.
, mathematics—passed the
Alice
test
for patentability.
RecogniCorp
,
1. A method for creating a composite image, comprising: displaying facial feature images on a first area of a first display via a first device associated with the first display, wherein the facial feature images are associated with facial feature element codes; selecting a facial feature image from the first area of the first display via a user interface associated with the first device, wherein the first device incorporates the selеcted facial feature image into a composite image on a second area of the first display, wherein the composite image is associated with a composite facial image code having at least a facial feature element code and wherein the composite facial image code is derived by performing at least one multiplication operation on a facial code using one or more code factors as input parameters to the multiplication operation; and reproducing the composite image on a secоnd display based on the composite facial image code.
Id
. The district court, prior to claim construction, granted the defendant’s motion for judgment on
the pleadings under
Alice
because the claims were directed at the abstract idea of coding
composite facial images without an inventive concept.
Id
. at 1325. The Federal Circuit affirmed.
Id
. at 1328. With respect to the patent vis-à-vis an abstract idea, the court held that “assign[ing]
image codes to images through an interface using a mathematical formula, and then reproducing
the image based on the codes . . . . [is] an abstract concept long utilized to transmit information.”
Id
. Accоrding to the Court of Appeals, it was analogous to Morse code or ordering food at a
restaurant via a numbering system.
Id
. The
RecogniCorp
court relied on a previous decision from
the Federal Circuit that held a claim that “recites a process of taking two data sets and combining
them into a single data set simply by organizing existing data into a new form” was an abstract
concept. . at 1327 (citing
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.
,
Similarly, in Yanbin , a district court concluded that the patent-in-suit similar to the disputed technology here failed the Alice test. There, Mr. Yu brought an action against Apple and Samsung alleging that both companies infringed his patent, which “claims an invention of a digital camera capable of producing high resolution images with better colors and details in a greater range . . . . The patent proposes an arrangement of multiple image sensors, lenses, and a processor to produce high quality and film-like true color digital images.” . at 1101. The court concluded that the claim was directed at “the abstract idea of taking two pictures and using those pictures to enhance each other in some way.” . at 1104. The court reached this conclusion because “[s]ince the earliest years of the photographic medium, those having skills in the art have used multiple exposures, or the combining of multiple images, to enhance image . . . . Such a fundamental and long prevalent practice is a quintessential abstract idea.” . (internal quotations and alterations omitted).
Here, the’711 Patent is directed to what the courts in
RecogniCorp
and
Yanbin
found to be
an abstract concept under
Alice
—the technology taught by the ’711 Patent combines one picture
with another picture to form a larger picture, albeit a seamless one. FullView’s attempt to
distinguish
Yanbin
misses the point. FullView argues that the district court refused to consider the
defendant’s assertion that the claim was the same process as viewing images from a human’s two
eyes. This is true—the defendant in
Yanbin
did, in fact, make a broad challenge that the patent
should be invalidated because the “same idea can be found in the mental processes that produce
human vision from inputs from two eyes[.]”
Yanbin
,
2. Step 2: Whether the Patent Offers an Inventive Concept to the Abstract Idea
This Court then turns to the second step articulated by the Supreme Court. FullView
reasserts the Federal Circuit’s finding of non-obviousness in response to the second step in
Alice
that requires an inventive concept. The Federal Circuit found “counterintuitive” that the “nature
of using mirrors to make the viewpoints of multiple sensors coincide . . . only to turn around and
deliberately offset the viewpoints, such that the offset is perceptible to the viewer.”
Polycom
, 767
F. App'x at 982. Although it could be argued this position is relevant here, the Federal Circuit has
held that the inventive concept must be “in the non-abstract application realm.”
SAP
, 898 F.3d
1168. “If a claim’s only ‘inventive concept’ is the application of an abstract idea using
conventional and well-understood techniques, the claim has not been transformed into a patent-
eligible application of an abstract idea.”
BSG Tech LLC v. Buyseasons, Inc.
,
FullView has not pointed to anything inventive in the ’711 Patent that is separate and apart
from the abstract idea of merging images. At the hearing, it became clear that the arrangement of
cameras, sensors, and mirrors is the only concept that FullView purports to be inventive. But the
putative invention here is simple geometry, a branch of mathematics—and math is not patentable.
In
RecogniCorp
, the owner of the patent argued, unsuccessfully, that the mathematical formula
associated with the coding and decoding of composite images was the inventive concept that
transformed the otherwise abstract idea into a patent-eligible application.
See RecogniCorp
, 855
F.3d at 1328. The Federal Circuit rejected this argument.
Id
. (“Claims that are directed to a non-
abstract idea are not rendered abstract simply because they use a mathematical formula. But the
converse is also true: A claim directed to an abstract idea does not automatically become eligible
merely by adding a mathematical formula.”).
At the hearing, FullView relied on
Thales Visionix Inc. v. United States
,
The Federal Circuit reversed on the grounds that the patent was not directed at an abstract
idea, relying heavily on the Supreme Court’s decision in
Diamond v. Diehr
,
portion of its individual field of view with a reflective area; and merging images corresponding to the individual fields of view to produce the composite image having a corresponding field of view, wherein each one of at least two fields of view corresponding to images that are merged has a portion, where the images are merged, that has viewing directions that are substantially similar to the viewing directions of thе other portion, and wherein the viewing directions within each one of such two portions appear to originate substantially from a point that is offset from the point for the other one of such two portions.
SAC, Ex. A, cl 1 (emphasis added). Polycom contends the claim does not offer any specifics as to what a plurality of sensors are or how many sensors are necessary. By contrast, in Thales , the patent specifically describes the arrangement with particularity:
1. A system for tracking the motion of an object relative to a moving reference frame, comprising:
a first inertial sensor mounted on the tracked object; a second inertial sensor mounted on the moving reference frame; and an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.
22. A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.
Thales
,
Accordingly, because there exists no inventive concept “in the non-abstract application
realm,”
see SAP
,
• Polycom’s motion to dismiss is GRANTED without prejudice because the Composite Image Claims contained in the ’711 Patent are not a “manufacture” since it seeks to patent intangible embodiments, and the Composite Image Claims do not fit into any other patent-eligible category under Section 101; • Polycоm’s motion to dismiss is GRANTED without prejudice because the ’711 Patent is directed at the abstract idea of combining multiple pictures to create one larger picture, and there exists no inventive concept; and • Polycom’s motion to dismiss the SAC’s Section 271(g) claim for failure to plead sufficient facts regarding importing patented processes into the United States is moot.
This order disposes of Docket No. 80.
IT IS SO ORDERED .
Dated: September 10, 2020
______________________________________ EDWARD M. CHEN United States District Judge
Notes
[1] The Composite Image Claims, Method Claims, and Apparatus Claims are hereinafter 28 collectively referred to as the “Asserted Claims.”
[2] A court “need not . . . accept as true allegations that contradict matters properly subject to
judicial notice or by exhibit.”
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,