MOBILE ACUITY LTD., Plaintiff-Appellant v. BLIPPAR LTD., BLIPPAR AR LTD., BLIPPAR GROUP LTD., BLIPBUILDER LTD., BLIPPAR USA LLC, Defendants-Appellees 07446749 LTD., FKA BLIPPAR.COM LTD, BLIPPAR LLC, Defendants
2022-2216
United States Court of Appeals for the Federal Circuit
August 6, 2024
GUY RUTTENBERG, Ruttenberg IP Law, PC, Los Angeles, CA, argued for plaintiff-appellant. Also represented by BRUCE DONOVAN KUYPER.
MARTIN BADER, Sheppard Mullin Richter & Hampton LLP, San Diego, CA, argued for defendants-appellees. Also represented by PAUL W. GARRITY, New York, NY.
Before LOURIE, BRYSON, and STARK, Circuit Judges.
STARK, Circuit Judge.
Mobile Acuity Ltd. (“Mobile Acuity“) appeals from a judgment entered by the United States District Court for the Central District of California (“Central District“) dismissing its patent infringement action for failure to state a claim on the basis that the asserted patents claim ineligible subject matter under
I
Mobile Acuity owns U.S. Patent Nos. 10,445,618 (“‘618 patent“) and 10,776,658 (“‘658 patent“) (collectively, the “Asserted Patents“). The Asserted Patents are both entitled “Storing Information for Access Using a Captured Image” and share a substantially identical specification. In general, the patents disclose methods and devices relating to “storing information so that it can be accessed using a captured image.” ‘618 patent at 1:15-17. In particular, the Asserted Patents describe methods and devices that “associate[] first information and at least a first portion of a first image, and use[] a second image that includes a portion corresponding to at least the first portion of the first image to access the associated first information.” Id. Abstract. According to the Asserted Patents, in the prior art the desire to “attach information to locations in the real world” was “achieved by using barcodes or RFID tags attached to real world objects or by associating information with absolute positions in the world.” Id. at 1:21-25.
The Asserted Patents purport to provide “an alternative mechanism by which information can be associated with real world locations and objects,” involving an originating user using “a mobile imaging device . . . to capture an image of a location,” and then “upload[ing] [the captured image] . . . to the server.” Id. at 1:26-28, 4:28-29, 50-51. The originating user defines a “target region” in the image, which is “then processed at the server . . . to create a model user image key for that location.” Id. at 4:54-56. The originating user also “defines digital content that is to be associated with the target region of the captured image.” Id. at 4:56-58. The same originating user or a different user “can subsequently obtain the digital content associated with a location (if any) by capturing an image of the location, using their respective imaging device . . ., and by sending the image to the server.” Id. at 4:62-66. The server then creates “a scene user image key for the image received” and “then searches its database . . . to see if the scene user image key corresponds to a model user image key stored in the database.” Id. at 4:67-5:4. “[I]f there is correspondence, the digital data linked by the database . . . to the corresponding model user image key is obtained.” Id. at 5:4-6.
On August 27, 2021, Mobile Acuity filed a complaint in the Central District, alleging several Blippar entities (collectively,
On February 14, 2022, Mobile Acuity filed a first amended complaint, alleging Blippar directly and indirectly infringed “at least claim 9” of the ‘618 patent and “one or more claims” of the ‘658 patent. J.A. 171 ¶ 80; J.A. 175 ¶ 106. Mobile Acuity also added allegations relating to the purported inventiveness of its technology, which it alleged “enables the use of the object or location itself as the marker for image searching, providing a seamless user experience rather than relying on a conventional visible cue,” “eliminates the need for the manufacturing step that adds a visual cue,” and allows companies to “measure campaign effectiveness and return-on-investment based on the object itself.” J.A. 163-64 ¶¶ 26-28.
On February 28, 2022, Blippar filed a motion to dismiss the first amended complaint under
In the second amended complaint, Mobile Acuity continued to allege that Blippar directly and indirectly infringed “at least claim 9” of the ‘618 patent and “one or more claims” of the ‘658 patent. J.A. 230 ¶ 83; J.A. 236 ¶ 120. Mobile Acuity also specifically alleged infringement of claims 11 and 16 of the ‘618 patent and claims 9, 11, and 16 of the ‘658 patent.2 See J.A. 234-35 ¶¶ 105, 106, 108; J.A. 240 ¶¶ 139-42. Independent claim 9 of the ‘618 patent recites:
A method of storing user-defined information for future access by multiple parties comprising, at a server controlled by a third party:
receiving from a first originating party user-defined information that is defined by the first originating party and is for access by multiple parties; and
associating the user-defined information received from the first originating party and at least a first portion of a first image in a database, wherein the user-defined information augments first user-defined information already associated at the server with at least the first portion of the first image in the database; and
providing access by a second party to the user-defined information and the first user-defined information, when a second image, captured by the second party, includes a portion corresponding to at least the first portion of the first image.
‘618 patent at 13:58-14:7 (as corrected). Claim 11 of the ‘618 patent depends from claim 9 and recites:
A method as claimed in claim 9, further comprising:
extracting interest points from the portion of the second image;
extracting interest points from the first image;
providing access by a second party to the user-defined information, when the interest points extracted from the portion of the second image matches the interest points extracted from the first image.
Id. at 14:14-21. Independent claim 16 of the ‘618 patent recites a server that contains a processor, memory, and computer program code configured to perform the method of claim 9:
A server for control by a third party comprising:
a processor; and a memory including computer program code,
wherein the memory, computer program code and processor are configured:
to receive user-defined information from a first user different to the third party for access by multiple parties; and
to associate the received user-defined information and at least a first portion of a first image in a database, wherein the user-defined information augments first user-defined information already associated at the server with at least the first portion of the first image in the database; and
to provide access by a remote second user to the user-defined information and the first user-defined information when a second image, captured by the remote second user, includes a portion corresponding to at least the first portion of the first image.
Id. at 14:43-60 (as corrected).
Independent claim 9 of the ‘658 patent is substantially identical to claim 9 of the ‘618 patent, except for the last (“providing access“) limitation:
A method comprising, at a server controlled by a third party:
receiving from a first originating party user-defined information that is defined by the first originating party and is for access by multiple parties; and
associating the user-defined information received from the first originating party
and at least a first portion of a first image in a database, wherein the user-defined information augments first user-defined information already associated at the server with at least the first portion of the first image in the database; and providing access by a second party to the user-defined information and the first user-defined information, in dependence upon the first portion of the first image and a second image, captured by the second party, and also a location at which the second image is captured.
‘658 patent at 13:66-14:14 (as corrected).
On March 28, 2022, Blippar filed a motion to dismiss the second amended complaint pursuant to
Rather than amending its complaint a third time, which Mobile Acuity could have done without leave of court under the governing scheduling order until April 4, 2022, Mobile Acuity filed an opposition to Blippar‘s motion to dismiss. In it, Mobile Acuity stated that “[t]o the extent the Court grants any aspect of Blippar‘s motion, Plaintiff respectfully requests an opportunity to cure any defects through amendment.” J.A. 561. Mobile Acuity did not provide a proposed amended complaint with its opposition.
Prior to hearing argument on Blippar‘s motion to dismiss, the district court issued a tentative ruling, which later became its final order, indicating that the claims of the Asserted Patents were directed to patent ineligible subject matter under
The trial court concluded that the “Asserted Claims are directed to abstract ideas.” J.A. 7. It held that the “independent claims of the Asserted Patents are directed to the abstract idea of leaving information at a location or object for one‘s future use or reference,” id. (internal quotation marks omitted), and, further, that the dependent claims identified in the operative complaint “do not add enough to transform the claims from abstract to concrete,” J.A. 9. The court also determined that the Asserted Claims “do not recite an inventive concept” because the “alleged inventive concept and the described advancement over the prior art” were nothing more than the abstract idea itself, and “the remainder of Plaintiff‘s inventive concept analysis focuses on general descriptions in the specification and of the commercial embodiments.” J.A. 10-11. The district court added that Mobile Acuity failed to “refer the Court to any limitations in the claims” that “would change the Court‘s analysis,” making the Asserted Claims “representative of the claims of the Asserted Patents.” J.A. 11. The district court concluded by stating it did not “at this point see a way in which the Plaintiff could amend the complaint to avoid the above cited problems.” Id. After oral argument, the district court adopted its tentative ruling
Mobile Acuity then filed a motion to alter or amend the judgment and for leave to file a third amended complaint. Mobile Acuity argued its requested relief was necessary because the district court had “made assumptions concerning the meaning of certain limitations, without any record to do so” and had “manifestly erred” in finding a lack of inventive concept. J.A. 663. Mobile Acuity also contended that the court erred in “treat[ing] claims 9 of the ‘618 and ‘658 Patents as representative of the Asserted Patents” and by failing to consider Mobile Acuity‘s argument that “invalidity under
Prior to the hearing on the motion, the district court issued a tentative order, which later became its final order, denying Mobile Acuity‘s requests. The court explained that Mobile Acuity “simply reiterate[d] the same arguments the Court previously rejected,” the additional limitations in other claims of the Asserted Patents did not “prevent the Court from treating Claim 9 of the Asserted Patents as representative,” and the proposed amendments to the complaint did not “cure the defects in [Mobile Acuity‘s] second amended complaint.” J.A. 17, 19, 20.
Mobile Acuity timely appealed. We have jurisdiction under
II
We review a district court‘s decisions on motions to dismiss and motions for leave to amend according to applicable regional circuit law. See Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1356 (Fed. Cir. 2023) (motions to dismiss); Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342, 1357 (Fed. Cir. 2021) (motions for leave to amend).
The Ninth Circuit reviews a district court‘s grant of a motion to dismiss for failure to state a claim under
The Ninth Circuit reviews a district court‘s denial of leave to amend a complaint for abuse of discretion. See Lund v. Cowan, 5 F.4th 964, 968 (9th Cir. 2021). The question of futility of amendment, however, is reviewed de novo. See United States v. United Healthcare Ins. Co., 848 F.3d 1161, 1172 (9th Cir. 2016). “A determination of futility contemplates whether, upon de novo review, the amendment could present a viable claim on the merits for which relief could be granted.” Murray v. Schriro, 745 F.3d 984, 1015 (9th Cir. 2014).
Under
“Patent eligibility under
III
Mobile Acuity asserts that the district court committed the following errors: (1) failing to recognize that Blippar‘s nonpatentable subject matter contention is an affirmative defense and must be evaluated as such at the pleading stage; (2) treating claim 9 of each of the Asserted Patents as representative of all claims; (3) finding that the Asserted Patents are invalid for claiming patent ineligible subject matter; and (4) denying Mobile Acuity‘s request for leave to file a third amended complaint. We address each issue in turn.
A
Mobile Acuity first argues that the district court erred in holding that a challenge under
Mobile Acuity wrongly contends that the district court required it to “anticipate [the] defendant‘s affirmative defense in its complaint.” Appellant‘s Br. at 19. The district court did not grant Blippar‘s motion to dismiss on the grounds that Mobile Acuity failed to address patentable subject matter in its complaints. Rather, the district court correctly applied Ninth Circuit law, which provides that a complaint may be dismissed based on an affirmative defense that “clearly appears on the face of the pleading.” Boquist v. Courtney, 32 F.4th 764, 774 (9th Cir. 2022). Here, the district court‘s analysis was directed to precisely this question: is the lack of patentable subject matter apparent on the face of the complaint, which alleged infringement of the Asserted Patents, which are themselves attached as exhibits to the complaint? See Plaskett v. Wormuth, 18 F.4th 1072, 1083 (9th Cir. 2021) (court considers on motion to dismiss “allegations contained in the pleadings, exhibits attached to the complaint, and matters properly subject to judicial notice“). Accordingly, as we have repeatedly recognized,
Mobile Acuity relatedly argues that the district court failed to accept the factual allegations pleaded in the complaint. We disagree. As we explain in more detail below, see infra III.C and III.D, Mobile Acuity‘s alleged facts, even taken as true, demonstrate that the claims of the Asserted Patents are not patent eligible. See Universal Secure Registry LLC v. Apple Inc., 10 F.4th 1342, 1346 (Fed. Cir. 2021) (“[P]atent eligibility can be determined at the
B
Mobile Acuity next contends that the district court erred in treating claim 9 of each of the Asserted Patents as representative of all claims. We are not persuaded.
Limiting the analysis of a
“District courts have discretion to require parties litigating Section 101 motions to identify representative claims and to articulate why (or why not) claims are representative.” Sanderling Mgmt. Ltd. v. Snap Inc., 65 F.4th 698, 701 n.1 (Fed. Cir. 2023) (emphasis added). The patent challenger who identifies a claim as representative of a group of claims bears the initial burden to make a prima facie showing that the group of claims are “substantially similar and linked to the same” ineligible concept. Cleveland Clinic, 859 F.3d at 1360; see also Content Extraction, 776 F.3d at 1348. Once this occurs, the burden shifts to the patent owner to present non-frivolous arguments as to why the eligibility of the identified representative claim cannot fairly be treated as decisive of the eligibility of all claims in the group. The patent owner may, for example, articulate why a claim limitation not found in the representative claim has “distinctive significance” that would have a material impact on the eligibility analysis. Berkheimer, 881 F.3d at 1365; see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1352 (Fed. Cir. 2016). If the patent owner fails to meet its obligation to make non-frivolous arguments in opposition to the representative claim contention, it forfeits its right to argue that the claims in the group identified by the movant are patent eligible even if the representative claim is ultimately found to be ineligible. See generally WhitServe LLC v. Dropbox, Inc., 854 F. App‘x 367, 368 n.1 (Fed. Cir. 2021) (nonprecedential); Brit. Telecomms. PLC v. IAC/InterActiveCorp, 813 F. App‘x 584, 587-88 (Fed. Cir. 2020) (nonprecedential).
The burden to prove the ineligibility of any patent claim stays with the patent challenger at all times. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019) (holding that patents are presumed valid and alleged infringer must prove patents do not satisfy prerequisites, including
Because the eligibility findings with respect to representative claims only extend to claims for which they are representative, and correspondingly do not extend to claims they do not represent, it is important for courts to resolve any disputes over representativeness and clearly state which claims are, and are not, adequately represented by others.
Here, Blippar argued in its opening brief supporting its motion to dismiss that claim 9 of the ‘618 patent and claim 9 of the ‘658 patent “are representative of the entire claim set in each respective Asserted Patent.” J.A. 258. Blippar explained how the other claims in the Asserted Patents are substantially similar to the representative claims — because the other claims’ additional limitations only “tack on generic computer components . . . or introduce conventional computer activities” — and are all directed to the same abstract idea: leaving information at a location or object for future access and use. J.A. 258, 260. In response, Mobile Acuity failed, as the district court put it, to “refer the Court to any limitations in the claims that Plaintiff does not currently assert that would change the Court‘s analysis.” J.A. 11. While Mobile Acuity pointed to claims 11 and 16 of both the ‘618 and ‘658 patents, these claims did “not prevent the Court from treating Claim 9 of the Asserted Patents as representative,” J.A. 19, because Mobile Acuity did not present a non-frivolous argument that the eligibility of
On appeal, Mobile Acuity contends that claim 14 of the ‘618 patent and claim 14 of the ‘658 patent add elements that were ignored by the district court. This argument is unavailing because the district court also expressly addressed the eligibility of those two claims, finding that they did not contain any further elements affecting the eligibility analysis. J.A. 19. In any event, even before us Mobile Acuity has failed to identify any limitations in any of its claims that are materially different — for purposes of a patentable subject matter analysis — from the claims the district court treated as representative.
We agree with the district court that the six claims it treated as representative of all claims of the two Asserted Patents are, in fact, representative. Therefore, we, like the district court, need only analyze the patent eligibility of these representative claims.5
C
1
We turn next to the district court‘s finding that the claims of the Asserted Patents are directed to patent ineligible subject matter. We agree with the district court that the claims it considered — which are representative of all claims of the Asserted Patents — are directed to an abstract idea, although we articulate the abstract idea slightly (and not materially) differently than the district court.6 Specifically, Mobile Acuity‘s claims are directed to the abstract idea of receiving information, associating information with images, comparing the images, and presenting information based on that comparison.
Taking claim 9 of the ‘618 patent and claim 9 of the ‘658 patent as examples, the claims recite the steps of “receiving . . . user-defined information,” “associating” that information with an image in a database, and “providing access” to that information either “when a second image . . . includes a portion corresponding to at least the first portion of the first image,” ‘618 patent at 13:58-14:7, or “in dependence upon the first portion of the first image and a second image . . . and also a location at which the second image is captured,” ‘658 patent at 14:11-14. These claims consist solely of result-orientated, functional language and omit any specific
The other representative claims of the ‘618 and ‘658 patents add nothing of significance to the eligibility analysis. Mobile Acuity argues that claim 11 of the ‘618 patent (as well as claim 14 of the ‘658 patent) recites extracting and matching “interest points” from the first and second images to perform the correspondence between images. The claims, however, provide no specificity as to how the “interest points” are determined or used in image comparison.
Mobile Acuity directs us to the specification, which purportedly “teaches one of ordinary skill in the art how to match and compare the user-uploaded image through the use of correspondence and interest points.” Appellant‘s Br. at 28. Even assuming this “teaching” can be found, it is not included in the claims, yet it is the claims that must supply the non-abstract idea. See Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285, 1293 (Fed. Cir. 2020) (“[F]eatures that are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis.“); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101 inquiry must focus on the language of the Asserted Claims themselves.“).
The district court found that the additional limitations of claim 16 of the ‘618 patent “only provide the generic computer environment to carry out the abstract idea.” J.A. 8. The district court also found that the additional limitations of claims 11 and 16 of the ‘658 patent “do not add enough to transform the claims from abstract to concrete.” J.A. 9. Mobile Acuity does not challenge these findings on appeal and we see no basis to disagree with them.
We can quickly dispose of several other of Mobile Acuity‘s remaining arguments. It suggests that claim construction (of the terms “corresponding” and “interest points“) was necessary as a prerequisite to deciding the motion to dismiss, but Mobile Acuity failed to identify a claim construction dispute before the district court and failed even to propose a construction it contended would make a difference to the § 101 analysis. J.A. 17.7 To defeat a motion to dismiss based on the
Thus, we agree with the district court that the claims of the Asserted Patents are directed to an abstract idea at step one of Alice.
2
Turning to step two of the Alice test, we again agree with the district court. The claims of the Asserted Patents do not recite an inventive concept.
As an initial matter, Mobile Acuity makes no attempt on appeal to argue that there are material differences (for purposes of the patentability analysis) among the six representative claims, except for the recitation of “interest points” in claim 11 of the ‘618 patent. Thus, in our discussion we do not need to delineate among the representative claims other than to specifically address Mobile Acuity‘s arguments regarding the “interest points.”
Mobile Acuity argues that the “inventive concept” in its claims is “using the object (or location) itself as the trigger for leaving information to be collected in the future.” Appellant‘s Br. at 38. That purported “inventive concept” is part of the abstract idea of comparing images and displaying information based on the comparison. But the abstract idea “cannot supply the inventive concept that renders the invention ‘significantly more’ than that abstract idea at step two.” Simio, LLC v. FlexSim Software Prod., Inc., 983 F.3d 1353, 1364 (Fed. Cir. 2020) (internal quotation marks and brackets omitted); see also Intell. Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1368 (Fed. Cir. 2015) (“Instructing one to ‘apply’ an abstract idea and reciting no more than generic computer elements performing generic computer tasks does not make an abstract idea patent-eligible.“). To the extent Mobile Acuity is suggesting that its alleged “inventive concept” is not found in the prior art, that contention is unavailing at step two, as “a claim for a new abstract idea is still an abstract idea.” Synopsys, 839 F.3d at 1151; see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“We may assume that the techniques claimed are groundbreaking, innovative, or even brilliant, but that is not enough for eligibility.“) (internal quotation marks and brackets omitted).
Mobile Acuity further argues that the inventive concept is found in the claim limitations requiring use of “interest points” for image comparison, which purportedly “provides users an innovative way to retrieve information.” Appellant‘s Br. at 40. Methods of mapping interest points to compare images is expressly described in the specification as existing in the prior art.8 Even assuming the specification
For the foregoing reasons, we agree with the district court that the claims of the Asserted Patents are directed to ineligible subject matter.
D
Finally, we turn to Mobile Acuity‘s contention that the district court erred in denying its motion for leave to amend. Because the district court held that any amendment would be futile, as it would fail to cure the defects in the operative complaint, we review the district court‘s decision de novo. See United Healthcare, 848 F.3d at 1172.
We agree with the district court that Mobile Acuity‘s proposed third amended complaint does not fix the problems plaguing the operative complaint. Mobile Acuity argues that its amendments make clear that the concepts of “corresponding” and “interest points” are “concrete” and “refer to specific features.” Appellant‘s Br. at 47. Even the inclusion in the claims of some specific concepts about image comparison does not alter the abstract character of the claims as a whole. See Simio, 983 F.3d at 1362; Cellspin, 927 F.3d at 1316.
Mobile Acuity also contends that the allegations in the proposed third amended complaint “more clearly sets forth the inventive concept” of using physical objects as the “trigger” for searching and providing access to data. Appellant‘s Br. at 48. Its purported “inventive concept,” including “put[ting] the control into the hands of the users to define information linked to a photograph on a database,” Appellant‘s Br. at 49 (citing J.A. 632-33 ¶¶ 31, 38), are nothing more than the implementation of an abstract idea with conventional computer operations, and are not “significantly more” than the abstract idea itself, as required to survive step two of the Alice test. See Synopsys, 839 F.3d at 1151; SAP Am., 898 F.3d at 1163.
For these reasons, the district court did not err in finding that Mobile Acuity‘s proposed third amended complaint would be futile. Accordingly, the district court did not err in denying Mobile Acuity‘s motion for leave to amend.
IV
We have considered Mobile Acuity‘s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm the district court‘s grant of Blippar‘s motion to dismiss and denial of Mobile Acuity‘s motion for leave to amend.
AFFIRMED