July 8, 2020

Federal Circuit: Unrelated Patent's Citation to Asserted Patent Doesn't Suggest a Technical Solution

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

Data Scape Limited sued Western Digital in the U.S. District Court for the Central District of California, alleging infringement of four patents that claim methods, systems and apparatuses for transferring music from one device to another device. The district court dismissed the complaint with prejudice, finding that the claims of the asserted patents were invalid under Section 101.

Following the dismissal, Data Scape moved to alter the judgment to allow Data Scape to file an amended complaint. The district court denied that motion.

Alice Step One

The asserted patents describe the "cumbersome" problem, when seeking to transfer several songs from a server to a device, of selecting pieces of music to be transferred piece by piece. In order to solve the problem, "a list of selected pieces of music from the musical data stored in the music server is created and the selected musical data on the list is transferred in a batch operation."

The U.S. Court of Appeals for the Federal Circuit agreed with the district court that the patent claims were directed to the abstract idea of selective data storage, transfer and processing. "The concept of data collection, recognition, and storage is undisputedly well known," and "the asserted patents are not directed to any improvement in how a computer functions but merely use computers for their standard functions of storing, transferring, and processing data."

The Federal Circuit found that the claims of the asserted patents do not materially differ from prior data transfer claims the court has found to be abstract.

Alice Step Two

The Federal Circuit also found that the claims lacked an inventive concept. Instead, the asserted patents "generically recite editing information, detecting the connection of one apparatus to another, comparing data on the two devices, and transmitting the selected data from one apparatus to another." Such claims fail under Alice.

Data Scape's Motion for Leave to Amend the Complaint

Finally, the Federal Circuit held that the district court did not err in denying Data Scape leave to amend its complaint. The Federal Circuit agreed that Data Scape's amendment would not remedy the deficiencies in the complaint and "failed to demonstrate that leave to amend would have been anything but futile."

Data Scape cited patents from third-party companies that cited various Data Scape patents, including one of the asserted patents. The Federal Circuit dismissed this, finding that such citations "do nothing to suggest the asserted patents accomplished a technical solution."

The Federal Circuit concluded that nothing in Data Scape's proposed amendment would create a factual issue sufficient to overcome a motion to dismiss and affirmed the district court's judgment that the patents were invalid under Section 101.

* * *

Representative claim 19:

 A communication method, comprising the steps of:

editing management information of data to be transferred from an apparatus to an external apparatus by selecting certain data to be transferred, said management information stored in a storage medium of the apparatus, without regard to the connection of said apparatus and said external apparatus;

detecting, at the apparatus, whether said apparatus and said external apparatus are connected;

comparing at the apparatus, said edited management information with management information of data stored in said external apparatus; and

transmitting the selected data from said apparatus to said external apparatus based on said management information and a result of the comparison when said detection indicates that said apparatus and said external apparatus are connected.

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