United States District Court, D. New Hampshire
ORDER OPINION NO.
2015 DNH 011.
LANDYA McCAFFERTY, District Judge.
This case now consists of a claim by East Coast Sheet M Fabricating Corp. ("EastCoast") that Autodesk, Inc. ("Autodesk") has infringed claim 1 of U.S. Patent No. 7, 917, 340 (the '340 patent), claim 4 of U.S. Patent No. 7, 449, 839 (the '839 patent), and claim 1 of U.S. Patent No. 8, 335, 667 (the '667 patent). Before the court are three motions for summary judgment filed by Autodesk, all of which are opposed. The court heard oral argument on those motions on December 12, 2014. For the reasons that follow, two of Autodesk's motions are granted, and the third is denied as moot.
I. Summary Judgment Standard
"Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law." Ponte v. Steelcase Inc., 741 F.3d 310, 319 (1st Cir. 2014) (quoting Cortes-Rivera v. Dept. of Corr., 626 F.3d 21, 26 (1st Cir. 2010)); see also Fed.R.Civ.P. 56(a). When ruling on a motion for summary judgment, the court must "view the entire record in the light most hospitable to the party opposing summary judgment, indulging all reasonable inferences in that party's favor.'" Winslow v. Aroostook Cnty., 736 F.3d 23, 29 (1st Cir. 2013) (quoting Suarez v. Pueblo Int'l, Inc., 229 F.3d 49, 53 (1st Cir. 2000)).
The court begins by describing, in a general way, the inventions claimed in the patents-in-suit. A person using the invention begins with visual representation of something the user ultimately wishes to build, such as a ventilation system for a building. Then the user employs a program code to assign values to various characteristics of the desired system, including its dimensions and the materials from which it is to be fabricated. Next, the invention maps the data describing the desired system to stored data describing the standard parts from which such systems are fabricated. Finally, the invention produces a manufacturing blueprint that depicts the desired system in terms of the standard parts.
For the purpose of ruling on the motions before the court, claim 1 of the '340 patent is similar enough to the other claims at issue to serve as an exemplar. That claim recites:
1 A computer readable medium having computer executable instructions for designing a ventilation system that when executed by a processor performs the following steps comprising
obtaining a visual representation of one or more components of the ventilation system,
assigning one or more property values to each of the components of said ventilation system using a first program code,
utilizing geometrical information representing said visual representation and said property values of each component for
mapping all components of the imported geometrical information to a plurality of standard fittings as a function of (1) standards information including (1A) information specific to each of the plurality of standard fittings and (1B) fabrication information of each of the plurality of specific standard fittings, (2) the imported geometrical information, and (3) the assigned property values, and
generating a manufacturing blueprint comprising the standard fittings, the fabrication information, and
a three-dimensional representation of the visual representation,
whereby each of the one or more components of the visual representation have been mapped to standard fittings and include fabrication information in the manufacturing blueprint, thus, eliminating a need to redraw every component of an architectural drawing before coordination, fabrication, and installation of the system.
'340 Patent (doc. no. 1-16) 7 l.20-col.8 l.24.
Each of the three patents-in-suit is titled "Method and Apparatus for Importing Data into Program Code." At oral argument, in response to a question from the court, Autodesk identified the claims in the patents-in-suit as apparatus claims of the Beauregard variety,  and EastCoast readily agreed. The court harbors a strong suspicion that those claims are actually method claims rather than apparatus claims, for reasons described in Section III.B.1. But, it is not clear how the court could impose such a determination upon Autodesk in the face of its concession/insistence that those claims are apparatus claims. It would be unusual for a court to reject a factual stipulation to which the parties have agreed. On the other hand, a court need not, and should not, accept an agreement by the parties that the court has subject-matter jurisdiction when it does not. See Macera v. Mort. Elec. Reg. Sys., Inc., 719 F.3d 46, 48 (1st Cir. 2013). Because "[c]laim construction is a matter of law, " Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (citation omitted), this court's ability/obligation to accept the parties' agreement on what kind of claim the plaintiff asserts would seem to fall closer to the subject-matter-jurisdiction end of the spectrum. But, without legal authority to do so, the court is reluctant to override the parties' agreement that the claims at issue are apparatus claims. Accordingly, the court follows the parties' lead and treats the claims at issue as apparatus claims.
EastCoast frames its patent-infringement claim in the following way:
Autodesk has directly and literally infringed [the '340 patent, the '839 patent, and the '667 patent] under 35 U.S.C. § 271(a) with the following combinations of Autodesk products: a) AutoCAD MEP in combination with Fabrication FABmep; b) AutoCAD MEP in combination with Fabrication CADmep; c) AutoCAD MEP in combination with Fabrication FABmep and Fabrication CADmep; d) Revit MEP in combination with Fabrication FABmep; e) Revit MEP in combination with Fabrication CADmep; and f) Revit MEP in combination with Fabrication FABmep and Fabrication CADmep.
Third Am. Compl. (doc. no. 119) ¶ 11. Unhelpfully, this paragraph does not allege any specific acts of infringement. Allegations elsewhere in the complaint hint that EastCoast could be basing its claim on Autodesk's alleged manufacture, offering for sale, and sale of infringing products. See id. ¶¶ 8-9 (alleging that Autodesk made certain products, offered them for sale, and sold them). Moving beyond the complaint, the excerpt from EastCoast's Final Infringement Contentions that is attached to Autodesk's memorandum of law, see Def.'s Mem. of Law, Freed Decl., Ex. F (doc. no. 110-3), at 41-43 of 60, does not identify the specific acts of infringement on which EastCoast's claim is based. While the complaint vaguely suggests the possibility of a claim based upon acts other than the sale of the accused products, there is nothing in the subsequent litigation of the case to suggest that EastCoast's claim of infringement goes beyond the act of sale. And, there is at least one bit of litigation history suggesting that EastCoast's claim is limited to the act of sale. In its memorandum of law in support of its motion for partial summary judgment on the issue of infringement, Autodesk stated: "Grant of this motion would leave standing for resolution only EastCoast's assertions of infringement by distribution of the Stand-alone products individually as DVD/CD-ROMS." Doc. no. 110-1, at 10 n.9. In its Objection, EastCoast did not object to that characterization of the case, and most certainly did not mention claims based upon other acts of infringement that would survive if the court were to grant Autodesk's motion. Consequently, the court understands EastCoast's infringement claims to be limited to the act of sale.
The court considers in turn each of the three legal theories under which Autodesk moves for summary judgment, beginning with the issue of the patent eligibility of the claimed inventions.
A. Patent Eligibility of EastCoast's Subject Matter
In document no. 114, Autodesk seeks judgment as a matter of law that the three patents-in-suit are all invalid because the subject matter they claim is not patentable. Specifically, Autodesk argues that: (1) the claimed inventions do not exist in a physical or tangible form; and (2) the subject matter of the patents-in-suit consists of nothing more than "abstract ideas unaccompanied by inventive concept, " Def.'s Mem. of Law (doc. no. 114-1). Autodesk's second argument carries the day.
1. The Relevant Law
"Patent eligibility under [35 U.S.C.] § 101 presents an issue of law." CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1276 (Fed. Cir. 2013) (citing Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1273 (Fed. Cir. 2012)). "Section 101 of the Patent Act defines the subject matter eligible for patent protection." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347, 2354 (2014). That statute provides that
[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, subject to the conditions and requirements of this title.
35 U.S.C. § 101. As used in § 101, "[t]he term process' means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material." 35 U.S.C. § 100(b). Finally, the Supreme Court has long "held that [§ 101] contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice, 134 S.Ct. at 2354 (quoting Ass'n for Mol. Path. v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116 (2013)).
2. Abstract Ideas
Autodesk argues that the three claims at issue are directed to non-patentable subject matter in the form of abstract ideas. There is a growing jurisprudence on this issue which has been aptly described and summarized by Judge Pfaelzer in California Institute of Technology v. Hughes Communications, Inc., ___ F.Supp. 3d ___, No. 2:13-cv-07245-MRP-JEM, 2014 WL 5661290 (C.D. Cal. Nov. 3, 2014). Much of that jurisprudence has arisen in the context of process claims. See, e.g., Gottschalk v. Benson, 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978); Diamond v. Diehr, 450 U.S. 175 (1981); Bilski v. Kappos, 561 U.S. 593 (2010); Mayo v. Collab. Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012). The lone exception to this pattern, in the Supreme Court, is Alice, which involved method claims, system claims, and an apparatus claim. See 134 S.Ct. at 2353. Given that all three claims in this case are apparatus claims, Alice is of particular relevance to this court's analysis.
In Alice, when describing the unpatentability of laws of nature, natural phenomena, and abstract ideas, Justice Thomas explained:
"[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it, " thereby thwarting the primary object of the patent laws. Mayo, 132 S.Ct. at 1293; see U.S. Const., Art. I, § 8, cl. 8 (Congress "shall have Power... To promote the Progress of Science and useful Arts"). We have "repeatedly emphasized this... concern that patent law not inhibit further discovery by improperly tying up the future use of" these building blocks of human ingenuity. Mayo, 132 S.Ct. at 1301 (citing [O'Reilly v.] Morse, [15 How. 62, ] 113 [(1853)]).
At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 132 S.Ct. at 1293-94. At some level, "all inventions... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Id. at 1293. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U.S. 175, 187 (1981). "[A]pplication[s]" of such concepts "to a new and useful end, '" we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the "buildin[g] block[s]'" of human ingenuity and those that integrate the building blocks into something more, Mayo, 132 S.Ct. at 1303, thereby "transform[ing]" them into a patent-eligible invention, id. at 1294.
Alice, 134 S.Ct. at 2354 (parallel citations and internal cross-references omitted).
The Supreme Court has established a two-step "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patenteligible applications of those concepts." Alice, 134 S.Ct. at 2355. As Justice Thomas explained:
First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. [Mayo, ] 132 S.Ct. at 1296-97. If so, we then ask, "[w]hat else is there in the claims before us?" Id. at 1297. To answer that question, we consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. Id. at 1298, 1297. We have described step two of this analysis as a search for an "inventive concept'" - i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Id. at 1294.
Id. (parallel citations and footnote omitted). In other words, at step one of Alice/Mayo, the court determines whether the claim involves an abstract concept. At step two, if the abstract concept is not accompanied by an inventive concept, then the patent ...