Samsung Electronics Co, Ltd. v. Blaze Mobile, Inc.

[3] 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION [7] 8 SAMSUNG ELECTRONICS CO, LTD., et Case No. 5:21-cv-02989-EJD al., 9 ORDER DENYING SAMSUNG’S Plaintiffs, MOTION UNDER FED. R. CIV. P. 12(C) 10 FOR JUDGMENT OF v. UNPATENTABLITY UNDER SECTION 11 101 AS TO ADVERTISING PATENTS BLAZE MOBILE, INC., et al., [12] Defendants. Re: Dkt. No. 47 [13] 14 Plaintiffs Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. 15 (collectively, “Samsung”) initiated this action for a declaratory judgment of non-infringement as 16 to eight patents owned by Defendants Blaze Mobile, Inc. and Michelle Fisher (collectively 17 “Blaze”). Blaze answered and counterclaimed for infringement. Pursuant to Federal Rule of Civil 18 Procedure 12(c), Samsung moves for judgment of unpatentability under 35 U.S.C. § 101 . Dkt. 19 No. 47. Blaze filed an opposition with an appendix identifying the representative claims for the 20 patents-in-suit for purposes of addressing Samsung’s motion (Dkt. No. 50), and Samsung filed a 21 reply (Dkt. No. 52). The Court conducted a hearing on May 12, 2022. Based upon all pleadings 22 filed to date and the comments of counsel, Samsung’s motion is denied as to the Advertising 23 Patents. The Court will issue a separate order addressing the remaining Patents-in-Suit. 24 I. BACKGROUND 25 Blaze and Fisher own the following eight patents, which are directed to performing a 26 variety of functions on a mobile device: [27] Case No.: 5:21-cv-02989-EJD [1] • U.S. Patent No. 9,378,493, (“the ’493 Patent”) is entitled “Mobile Communication Device 2 Near Field Communication (NFC) Transactions”; 3 • U.S. Patent No. 9,652,771, (“the ’771 Patent”) is entitled “Induction Based Transactions at a Mobile Device with Authentication”; [4] • U.S. Patent No. 9,996,849, (“the ’849 Patent”) is entitled “Remote Delivery of 5 Advertisements”; 6 • U.S. Patent No. 10,339,556, (“the ’556 Patent”) is entitled “Selecting and Transmitting an Advertisement from a Server in Response to User Input”; [7] • U.S. Patent No. 10,621,612, (“the ’612 Patent”) is entitled “Displaying an 8 Advertisement in Response to User Input Using a Non-Browser Based Application”; 9 • U.S. Patent No. 10,699,259, (“the ’259 Patent”) is entitled “Remote Transaction Processing Using a Mobile Device”; [10] • U.S. Patent No. 10,565,575, (“the ’575 Patent”) is entitled “NFC Mobile Device 11 Transactions with a Digital Artifact”; and 12 • U.S. Patent No. 10,825,007, (“the ’007 Patent”) is entitled “Remote Transaction Processing of at a Transaction Server.” [13] 14 The eight patents are collectively referred to as the “Patents-in-Suit.” The ’849, ’556, and ’612 are 15 collectively referred to as the “Advertising Patents”; the ’493, ’771, and ’575 are referred to as the 16 “NFC Security Patents”; and the ’259 and ’007 are referred to as the “Mobile Payment Patents.” 17 Blaze alleges that the Advertising Patents relate to improvements in “the reliability and 18 performance of non-browser mobile application running on a mobile device for delivering 19 advertisements, for example, a coupon (i.e., advertisement) which can be displayed in the non20 browser based application if the mobile device is offline and loses connection with a wireless 21 network.” Blaze’s Answer and Affirmative Defenses to Complaint for Declaratory Judgment; 22 And Counterclaims for Patent Infringement (“Blaze Counterclaims”), Dkt. No. 30, ¶ 22. Further, 23 Blaze alleges that “[t]he delivery of advertisements based upon certain targeting parameters in 24 response to user input from a non-browser base application stored on a mobile device as done by 25 the Accused Samsung Ads Products are a material part of the claims of the [Advertising] Patent[s] 26 and thus the Accused Samsung Ads Products perform the key inventive functions of the [27] Case No.: 5:21-cv-02989-EJD 1 [Advertising] Patent[s]. Id., ¶¶ 254, 286, 320 . 2 II. STANDARDS 3 A. Federal Rule of Civil Procedure 12(c) 4 A motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c) 5 challenges the legal sufficiency of the opposing party’s pleadings and operates like a motion to 6 dismiss under Rule 12(b)(6). Morgan v. Cty. of Yolo, 436 F. Supp. 2d 1152 , 1154–55 (E.D. Cal. 7 2006). Judgment on the pleadings is appropriate if, assuming the truth of all materials facts pled 8 in the complaint, the moving party is nonetheless entitled to judgment as a matter of law. Hal 9 Roach Studios, Inc. v. Richard Feiner & Co., Inc., 896 F.2d 1542, 1550 (9th Cir. 1989). When 10 ruling on a motion for judgment on the pleadings, the court may consider materials subject to 11 judicial notice in addition to considering the allegations of the complaint. Heliotrope Gen., Inc. v. 12 Ford Motor Co., 189 F.3d 971 , 981 n.18 (9th Cir. 1999). A Rule 12(c) motion for judgment on 13 the pleadings may thus be granted if, after assessing both the complaint and matters subject to 14 judicial notice, it appears beyond doubt that the non-moving party cannot prove any facts that 15 would support his claim for relief. Enron Oil Trading & Transp. Col. v. Walbrook Ins. Co., Ltd., [16] 132 F.3d 526 , 529 (9th Cir. 1997). 17 B. 35 U.S.C. § 101 18 Section 101 of the Patent Act provides that a patent may be obtained for “any new and 19 useful process, machine, manufacture, or composition of matter, or any new and useful 20 improvement thereof.” 35 U.S.C. § 101 . However, the Supreme Court has recognized that these 21 broad categories contain an implicit exception: “[l]aws of nature, natural phenomena, and abstract 22 ideas are not patentable.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 , [23] 133 S. Ct. 2107, 2116 (2013) (internal quotation marks and citation omitted). In applying this 24 exception, courts “must distinguish between patents that claim the building blocks of human 25 ingenuity and those that integrate the building blocks into something more.” Alice Corp. Pty. Ltd. 26 v. CLS Bank Int’l, 573 U.S. 208 , 134 S. Ct. 2347 , 2354 (2014). [27] Case No.: 5:21-cv-02989-EJD 1 To determine whether a claim falls within the “abstract idea” exception, the Supreme Court 2 has established a two-step framework. First, the court must “determine whether the claims at issue 3 are directed to a patent-ineligible concept.” Id. at 2355. The “directed to inquiry” is a 4 “meaningful one” and “cannot simply ask whether the claims involve a patent-ineligible concept, 5 because essentially every routinely patent-eligible claim involving physical products and actions 6 involves a law of nature and/or natural phenomenon.” Enfish, LLC v. Microsoft Corp., 822 F.3d 7 1327, 1335 (2016). “Rather, the ‘directed to’ inquiry applies a stage-one filter to claims, 8 considered in light of the specification, based on whether ‘their character as a whole is directed to 9 excluded subject matter.’” Id. 10 Second, if the claims are directed to patent-ineligible subject matter, the Court must 11 “consider the elements of each claim both individually and ‘as an ordered combination’ to 12 determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible 13 application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 , 132 14 S. Ct. 1289 (2012)). The Supreme Court has described this as a “search for an ‘inventive 15 concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in 16 practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. 17 When assessing patent protection under § 101, the claims of the patent “must be 18 considered as a whole.” Diamond v. Diehr, 450 U.S. 175, 188 (1981). “This is particularly true in 19 a process claim because a new combination of steps in a process may be patentable even though 20 all the constituents of the combination were well known and in common use before the 21 combination was made.” Id. 22 Whether an asserted claim is invalid for lack of subject matter patentability under § 101 is 23 a question of law. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 , 1338 24 (Fed. Cir. 2017) (“Patent eligibility under § 101 is an issue of law[.]”). Although a section 101 25 analysis “may contain disputes over underlying facts,” it can often be resolved on the pleadings. 26 Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) (“As our cases demonstrate, not [27] Case No.: 5:21-cv-02989-EJD 1 every § 101 determination contains genuine disputes over the underlying facts material to the § 2 101 inquiry.”). “Accordingly, a district court may resolve the issue of patent eligibility under § 3 101 by way of a motion for judgment on the pleadings.” MyMail, Ltd. v. OoVoo, LLC, -- F.3d --, [4] 2020 WL 2219036 , at *3 (N.D. Cal. May 7, 2020) (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 5 1350, 1352 (Fed. Cir. 2014) (affirming determination of ineligibility made on motion for judgment 6 on the pleadings)).1 7 III. DISCUSSION 8 Samsung contends that all of the Patents-in-Suit should be held invalid under 35 U.S.C. 9 §101—and the infringement claims asserting them should be dismissed—because they are 10 directed to abstract ideas and fail to incorporate an inventive concept. In response, Blaze asserts 11 that Samsung’s motion should be denied because there are disputed claim terms that must be 12 construed, the motion raises genuine disputes of material fact, which are not suitable for resolution 13 on the pleadings, and that each of the Patents-in-Suit is directed to a technical solution to a 14 technical problem, not an abstract idea, and recites an inventive concept. 15 A. Claim Construction 16 The Court rejects Blaze’s assertion that a § 101 invalidity analysis is premature in this case 17 without first conducting claim construction. As in Simio, LLC v. FlexSim Software Prods., Inc., 18 Blaze “has not explained how it might benefit from any particular term’s construction under an 19 Alice § 101 analysis.” 983 F.3d 1353, 1365 (Fed. Cir. 2020). Rather, Blaze identifies disputed 20 terms “non-browser based application,” “secure element,” and “secure element application” and 21 then relies on the Federal Circuit’s general guidance that claim construction is desirable, and often 22 necessary prior to a § 101 analysis, for “a full understanding of the basic character of the claimed 23 subject matter.” StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc., 2015 WL 518852 * 4 [25] 1 The novelty and nonobviousness of claims under 35 U.S.C. §§ 102 and 103 do not bear on 26 whether claims are directed to patent-eligible subject matter under § 101. Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1336 (Fed. Cir. 2017). [27] Case No.: 5:21-cv-02989-EJD 1 (M.D. Fl. 2015) (quoting Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 2 1266, 1273-74 (Fed. Cir. 2012)). Merely pointing to the claim language, without explaining how 3 claim construction would change the analysis is insufficient to defer consideration of the instant 4 motion. See Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App’x. 988, 991 n.1 5 (Fed. Cir. 2014) (patentee’s failure to “explain which terms require construction or how the [§ 6 101] analysis would change,” and instead “merely point[ing] to claim language,” was insufficient 7 to show claim construction was necessary to resolve patentability challenge). 8 B. Factual Disputes Do Not Necessary Foreclose Alice Analysis 9 The Court also rejects Blaze’s blanket assertion that Samsung’s motion is premature 10 because of factual disputes. “[C]ourts can, and regularly do, decide the issue of § 101 invalidity 11 on a Rule 12(c) motion.” Barbaro Techs., LLC v. Niantic, Inc., 475 F. Supp. 3d 1007 , 1011 (N.D. 12 Cal. 2020 ); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018) 13 (noting § 101 invalidity “may be, and frequently has been, resolved on a Rule 12(b)(6) or (c) 14 motion”). When the issue of § 101 invalidity is raised at the pleading stage “it simply means all 15 allegations must be accepted as true and construed in the light most favorable to the non-moving 16 party. Barbaro, 475 F. Supp. 3d at 1011; see also Aatrix Software, Inc. v. Green Shades Software, 17 Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018) (patent eligibility can be determined at the Rule 18 12(b)(6) stage “when there are no factual allegations that, taken as true, prevent resolving the 19 eligibility question as a matter of law.”). 20 C. The Advertising Patents 21 The Advertising Patents are directed to providing advertising on mobile devices. Claim 1 22 of the ’849 Patent recites: 23 1. A method for delivering an advertisement, comprising: 24 maintaining, at a remote management server, the advertisement; 25 selecting, at the remote management server, the advertisement based on one or more targeting parameters in response to user input from a non-browser based 26 application stored on a mobile device, wherein the one or more targeting parameters comprise personal information and purchase transaction related [27] Case No.: 5:21-cv-02989-EJD information wherein the non-browser based application stored on the mobile device 1 receives the user input via a mobile device display wherein the non-browser based application is a non-browser based application with a graphical user interface that is 2 preinstalled or downloaded and installed on the mobile device, the mobile device comprising the mobile device display, a mobile device processor, and a mobile 3 device wireless radio interface; 4 sending, from the remote management server, the advertisement to the non-browser based application and further wherein the non-browser based application displays 5 the advertisement within a specific non-browser based application generated screen, the specific nonbrowser based application generated screen corresponding 6 to a specific screen or area of the non-browser based application. 7 ’849 Patent at 9:48-10:6. Claim 12 of the ‘849 Patent, which is the only other independent claim, 8 recites the same subject matter in an apparatus-claim format: 9 12. A remote management server for delivering an advertisement, comprising: 10 a remote management server memory that stores the advertisement; 11 a remote management server processor that selects an advertisement based on one or more targeting parameters in response to user input from a non-browser based 12 application stored on a mobile device, wherein the one or more targeting parameters comprise personal information and purchase transaction related 13 information, wherein the non-browser based application stored on the mobile device receives the user input via a mobile device display, wherein the non-browser 14 based application is a non-browser based application with a graphical user interface that is preinstalled or down loaded and installed on the mobile device, the mobile 15 device comprising the mobile device display, a mobile device processor, and a mobile device wireless radio interface; [16] a remote management server transceiver that sends the advertisement to the non17 browser based application and further wherein the non-browser based application displays the advertisement within a specific non-browser based application 18 generated screen, the specific non-browser based application generated screen corresponding to a specific screen or area of the non-browser based application. [20] Id. at 10:56 -11:16. 21 1. Alice Step One: Whether The Advertising Patents’ Claims are Directed to an Abstract Idea [22] Samsung contends that the Advertising Patents are directed to the abstract concept of [23] conducting targeted advertising on a mobile device, whereas Blaze contends that they relate to [24] improvements in the reliability and performance of non-browser mobile applications running on a [25] mobile device for delivering advertisements. [27] Case No.: 5:21-cv-02989-EJD 1 “The concept of tailoring advertisements based on user data” is an abstract idea that “dates 2 back at least to local radio and television advertisements.” Bridge & Post, Inc. v. Verizon 3 Commc’ns, Inc., 778 F. App’x 882 , 884, 887 (Fed. Cir. 2019) (quoting Intellectual Ventures I LLC 4 v. Cap. One Bank (USA), 792 F.3d 1363 , 1369–70 (Fed. Cir. 2015)); see also Affinity Labs of 5 Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (similar); In re Morsa, 809 6 F. App’x 913 , 917 (Fed. Cir. 2020) (similar). Accordingly, claims directed to targeted advertising, 7 including targeted advertising delivered on mobile devices, are unpatentable. See, e.g., Free 8 Stream Media Corp. v. Alphonso Inc., 996 F.3d 1355, 1365 (Fed. Cir. 2021) (holding claims 9 ineligible for patenting because they were directed to “the abstract idea of providing targeted 10 advertising to the mobile device user”); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 11 1359, 1365 (Fed. Cir. 2020) (claim that recited “data delivery system for providing automatic 12 delivery of . . . specifically identified advertising data” was directed to abstract idea, even though 13 the claimed invention provided a reserved and dedicated section of storage to ensure memory was 14 available for at least some advertising data). 15 Here, claim 1 of the ’849 Patent is directed to the abstract concept of providing targeted 16 advertising on a mobile device. It recites a result-oriented method for delivering an advertisement, 17 comprising: “maintaining” the advertisement at a remote server; “selecting” the advertisement 18 based on “targeting parameters in response to user input”; and “sending” the advertisement to the 19 non-browser based application. ‘849 Patent at 9:51-53. Claim 12 of the ‘849 is similarly directed 20 to the abstract concept of providing an advertisement by using a “remote management server” that 21 “stores” and “selects” the advertisement based on user input, and a remote management server 22 transceiver that sends the advertisement. Id. at 10:60-64 . The targeted advertising is performed in 23 a computer environment, but that does not necessarily transform the targeted advertising “out of 24 the realm of abstraction.” PersonalWeb Tech. LLC v. Google, 8 F.4th 1310 , 1316 (Fed. Cir. 25 2021). “An abstract idea on ‘an Internet computer network’ . . . is still an abstract idea.” Bascom 26 Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). [27] Case No.: 5:21-cv-02989-EJD 1 The Federal Circuit instructs that at Alice step one, courts “consider the ‘claims in their 2 entirety to ascertain whether their character as a whole is directed to excluded subject matter.’ ” 3 ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 765 (Fed. Cir. 2019) (quoting Internet 4 Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). The Advertising 5 Patents’ claims, as a whole, resemble claims the Federal Circuit has found abstract. For example, 6 in Bridge & Post, which is a nonprecedential decision, the patents at issue described tracking a 7 user on a network and serving tailored advertisements. One of the claims at issue in Bridge & 8 Post recited a “[a] method for providing directed media to a user on a network.” Bridge & Post, 9 778 Fed. Appx. at 885. The claim required “receiving a user request to access a website, 10 retrieving a ‘persistent device identifier’ from the user’s device, and gathering current and 11 historical information about both the user and the device.” Id. The collected information and 12 identifier are analyzed to determine what advertisement should be shown to the user. Id. 13 Blaze does not deny that providing targeted advertising is an abstract idea. Instead, Blaze 14 contends that the claims in Bridge & Post are distinguishable because they “merely required 15 tracking users with personal markings.” Opp’n at 22. This in inaccurate. One of the claims in 16 Bridge & Post required receiving a request from the user for content, retrieving historic 17 information for the user (including patterns of usage), “analyzing” the historic information and 18 other information “to determine” content for the user, and then “placing” that content in a web site 19 for the user where the content “is customized to the user.” Bridge & Post, 778 Fed. Appx. at 88620 87. Blaze further contends that Bridge & Post is distinguishable because the claims referred to a 21 “directed media component” and did not say anything about advertising. The argument is 22 unpersuasive. The Federal Circuit viewed the claims as a whole as “directed to the use of 23 persistent identifiers to implement targeted marketing,” which the Federal Circuit viewed as 24 advertising. Id. at 887. 25 The Advertising Patents’ claims are also similar to those in Free Stream Media. In Free 26 Stream Media, the claims were directed to: “(1) gathering information about television users’ [27] Case No.: 5:21-cv-02989-EJD 1 viewing habits; (2) matching the information with other content (i.e., targeted advertisements) 2 based on relevancy to the television viewer; and (3) sending that content to a second device.” 3 Free Stream, 996 F.3d at 1361–62. The Federal Circuit concluded that the claims were directed to 4 the abstract idea of targeted advertising. Id. The Advertising Patents’ claims in the present case 5 contain comparable steps that are directed to the abstract idea of sending a targeted advertisement 6 to a user’s device. 7 The Advertising Patents’ claims also resemble claims in Affinity Labs, where the patent 8 claimed a media system comprising a network based media managing system stores content; a 9 collection of instructions configured to initiate presentation of graphical interface, to facility a 10 user’s selection of content, and to send a request for delivery of content; and a network based 11 delivery source configured to select and to send content in response to user’s selection. 838 F.3d at 12 1271. The Advertising Patents’ claims also resemble the claims in Intellectual Ventures, where 13 the patent related to “customizing information based on (1) information known about the user and 14 (2) navigation data.” 792 F.3d at 1369 . See also Customedia, 951 F.3d at 1362-65 (claim recited 15 a “data delivery system for providing automatic delivery of . . . specifically identified advertising 16 data); In re Morsa, 809 F. App’x at 917 (claim recited a “process” that “transmit[s]” a “request for 17 demographic and/or psychographic user information” to the user and then “sav[es]” the “user 18 information” on the system to match the user to a specific advertiser.). 19 Blaze asserts that the cases discussed above are distinguishable because the Advertising 20 Patents’ claims “recite a specific device for accomplishing a specific technical need using a ‘non21 browser based application’ in an ordered and novel combination.” Opp’n at 22. “The Supreme 22 Court has suggested that claims ‘purport[ing] to improve the functioning of the computer itself,’ or 23 ‘improv[ing] an existing technological process’ might not succumb to the abstract idea exception.” 24 Enfish, 822 F.3d at 1335 (quoting Alice, 573 U.S. at 225). Here, Blaze assert that the claims in the 25 Advertising Patents recite two technological improvements to memory usage: first, the use of a [27] Case No.: 5:21-cv-02989-EJD 1 single non-browser application; and second, choosing the advertisement at the remote 2 management server. 3 Blaze acknowledges that the claims do not expressly state technological improvements, but 4 argues that the claims do not need to recite the actual benefit achieved by the claimed invention, 5 citing Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1309 (Fed. Cir. 2020). The issue, 6 however, is not whether the claims recite a benefit in the abstract. Rather, the issue is whether the 7 claims are directed to an improvement to computer functionality or technical improvement. 8 Enfish, 822 F.3d at 1335 . The Advertising Patents’ claims are not. Instead, they recite 9 generalized steps to be performed on conventional computer components and steps to implement 10 the abstract concept of targeted advertising on mobile devices. The single non-browser 11 application performs the generalized steps of receiving input, receiving and advertisement, and 12 displaying an advertisement. The remote server similarly performs the generalized step of 13 choosing the advertisement. See e.g., Intellectual Ventures, 792 F.3d at 1363 (server is tasked 14 with providing web pages); Free Stream Media, 996 F.3d at 1359 (“relevancy-matching server 15 uses primary data from the networked device to select advertisements or other targeted data based 16 on a relevancy factor associated with the user”). Nothing more concrete is disclosed regarding the 17 single non-browser application and the remote server. “[M]erely provid[ing] a generic 18 environment in which to carry out the abstract idea” does not transform a claim into a patent19 eligible application. In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 611 (Fed. Cir. 2016). 20 At step one of the Alice test, courts also look to what the specification describes as the 21 invention . . . to help understand the focus of the claims.” See ChargePoint, 920 F.3d at 768 n.2. 22 According to the Advertising Patents’ specifications, the technological improvement is due to the 23 customization of a mobile application running on a mobile communication device of a user. See 24 ’849 Patent at 1:50–59, 5:52–59 (“a single mobile application can be customized by a large 25 number of different special interest groups (“SIG”) . . . . Less memory is, therefore, required by a 26 mobile communication device in order to support applications required by multiple special interest [27] Case No.: 5:21-cv-02989-EJD 1 groups (SIGs).”). However, the Patent and Trademark Appeals Board (“PTAB”) recently found 2 that substantially similar claims appearing in a since abandoned Blaze patent application were 3 directed to the abstract idea of “customizing delivery of artifacts, e.g., advertisements or other 4 content, to a user on a mobile device based on targeting parameters.” Ex Parte Michelle Fisher, [5] 2020 WL 1041299 , at *7 (P.T.A.B. Feb. 28, 2020) (determining U.S. Pat. App. 14/867,328 6 claimed unpatentable abstract subject matter). The PTAB determined that “[t]he addition of basic 7 user customization features to the interface does not alter the abstract nature of the claims and does 8 not add an inventive component that renders the claims patentable. Id. at *5 . Thus, even 9 assuming the Advertising Patents’ claims recited a customization feature, doing so would not alter 10 the abstract nature of the claims. Id.; see also Affinity Labs, 838 F.3d at 1271 (“Like the basic 11 concept of tailoring content to a user . . . the basic concept of customizing a user interface is an 12 abstract idea.”). 13 The Court finds that the Advertising Patents’ claims are directed to the abstract idea of 14 targeted advertising. Therefore, the Court proceeds to Alice step two. 15 2. Alice Step 2: Inventive Concept 16 Having determined that the claims of the Advertising Patents are directed to a patent17 ineligible concept, the Court next “consider[s] the elements of each claim both individually and 18 ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of 19 the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 20 78–79). The claims “must do significantly more than simply describe [the] abstract idea itself.” 21 Affinity Labs, 838 F.3d at 1262 . Further, the inventive concept in the claims “must be more than 22 well-understood, routine, conventional activity,” “and cannot simply be an instruction to 23 implement or apply the abstract idea on a computer.” Bascom, 827 F.3d at 1349 ; In re TLI, 823 24 F.3d at 613 (“It is well-settled that mere recitation of concrete, tangible components is insufficient 25 . . . . Rather, the components must involve more than performance of well-understood, routine, 26 conventional activities previously known to the industry.”). For example, “the invocation of [27] Case No.: 5:21-cv-02989-EJD 1 ‘already-available computers that are not themselves plausibly asserted to be an advance . . . 2 amounts to a recitation of what is well-understood, routine, and conventional.’” Customedia, 951 3 F.3d at 1366 (quoting SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)). 4 Here, the Advertising Patents’ claims invoke already-available generic computing 5 components such as “remote management server,” “non-browser based application,” and a 6 “mobile device” comprising a “mobile device display, a mobile device processor, and a mobile 7 device wireless radio interface.” ‘849 Patent at 2:3–7, 3:58–62, 5:31–33. Further, the activities of 8 these generic computing components, i.e., “maintaining,” “selecting,” “receiv[ing],” “sending,” 9 and “display[ing] information, are also conventional. ’849 Patent at claims 1, 12. Despite the 10 Advertising Patents’ generic components and conventional activities, Blaze contends that the 11 Patents recite an inventive concept because the specific ordered combination of the limitations 12 provides technical advantages. 13 The Federal Circuit has held that even if individual elements of a claim are generic or 14 conventional, the claims are patent-eligible when the ordered combination of elements provides a 15 technical improvement over the prior art. See, e.g., Bascom, 827 F.3d at 1350 (claims eligible 16 even though individual elements were generic computer and network components, because there 17 was “an inventive concept … in the non-conventional and non-generic arrangement of [the] 18 known, conventional pieces”); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 19 1288, 1303 (Fed. Cir. 2016) (“[w]hile some individual limitations arguably may be generic, others 20 are unconventional and the ordered combination of these limitations yields an inventive 21 concept.”). 22 Blaze argues that the Advertising Patents’ claims “reflect an unconventional arrangement 23 that shifts the selection of individualized advertisement from a mobile device . . . to selection of 24 individualized advertisement at the remote server and deliver to a single non-browser based 25 application—all of which makes Blaze’s invention more efficient and improves the performance 26 of the computer system.” Opp’n at 24-25. Blaze alleges that the Advertising Patents relate to [27] Case No.: 5:21-cv-02989-EJD 1 improvements in “the reliability and performance of non-browser mobile application running on a 2 mobile device for delivering advertisements, for example, a coupon (i.e., advertisement) which 3 can be displayed in the non-browser based application if the mobile device is offline and loses 4 connection with a wireless network.” Blaze Counterclaims ¶ 22. Further, Blaze alleges that the 5 content can be displayed on the non-browser based application without connection to a server. Id. 6 ¶¶ 44-48. 7 At the pleading stage, the Court finds Blaze’s alleged inventive concept is at least plausible 8 based on the specification. The specification describes one implementation that has memory 9 advantages: 10 In one implementation, association between a SIG and an end user is validated via an out-of-band process-e.g., a banking customer may 11 have to specify their SIG and provide heir SIG credentials ( e.g., online banking user ID/password) that are unique to the SIG. The 12 management server validates the credentials with the SIG. Once the end user has been authenticated by the SIG, it will be possible to 13 deliver the SIG’s branding and messaging specifically to the end user. Such a technique minimizes the number of applications that 14 need to be executed by a mobile communication device. For example, a single mobile application can be customized by a large 15 number of different special interest groups (SIGs). In one implementation, the mobile application can be customized to display 16 different screens, user interfaces and/or controls. Less memory is, therefore, required by a mobile communication device in order to 17 support applications required by multiple special interest groups (SIGs). [18] 19 ’849 Patent, 5:51-59. The specification also describes another implementation with the remote 20 server selecting advertisements. Id. at 7:24-33. According to Blaze, “[p]roviding targeted 21 advertisements from a remote server to a non-browser application solved a technical problem 22 unique to mobile device with limited memory.” Opp’n at 24. The specification also discusses 23 offline access. ‘849 Patent at 6:62-67. Blaze contends that by allowing the display of an 24 advertisement in the non-browser based application when the mobile device has lost contact with 25 the internet, Blaze’s inventions disclose an inventive concept that improves the function and 26 reliability of the mobile device. Blaze also asserts U.S. Patent Application Publication No. [27] Case No.: 5:21-cv-02989-EJD 1 20008/0052192, which has been incorporated by reference into the Advertisement Patents, 2 || discloses scalability advantages. See Dkt. No. 51-3 at J 116. 3 Samsung raises essentially two counterarguments. First, Samsung reasserts that the claims 4 || implement targeted advertising using nothing more than well-understood, routine, conventional 5 activities previously known in the industry. Second, Samsung argues that the Blaze’s alleged 6 || inventive concept is essentially caching, i.e., storing data in memory, which is yet another 7 conventional computing function. But Bascom instructs that an inventive concept can be found in 8 the non-conventional and non-generic arrangement of known, conventional pieces. Bascom, 827 9 || F.3d at 350. At this stage in the proceedings, Blaze’s “plausible and specific factual allegations 10 || that aspects of the claims are inventive” are sufficient to defeat Samsung’s motion. Cellspin Soft, 11 || Inc. v. Fitbit, Inc., 927 F.3d 1306, 1317 (Fed. Cir. 2019). 12 || IV. CONCLUSION 5 13 For the reasons stated above, Samsung’s motion for judgment on the pleadings as to the 14 || Advertising Patents is DENIED. The Court will issue a separate order addressing the remaining 3 15 Patents-in-Suit. a 16 IT IS SO ORDERED. 3 17 Dated: September 30, 2022 [18] 19 aM. EDWARD J. DAVILA 20 United States District Judge [26] Case No.: 5:21-cv-02989-EJD 28 || ORDER DENYING SAMSUNG’S MOTION FOR JUDGMENT ON THE PLEADINGS AS TO ADVERTISING PATENTS