Case: 22-2216 Document: 55 Page: 1 Filed: 08/06/2024
United States Court of Appeals
for the Federal Circuit
______________________
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
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:21-cv-06926-GW-PD,
Judge George H. Wu.
______________________
Decided: 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
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2 MOBILE ACUITY LTD. v. BLIPPAR LTD.
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 35 U.S.C. § 101. We affirm.
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
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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, “Blippar”) 1 directly and indirectly infringed “one
or more claims” of the ’618 and the ’658 patents. J.A. 103
¶ 70; J.A. 106 ¶ 90. On January 7, 2022, Blippar sent Mobile Acuity a letter expressing its view that “all claims” of
the Asserted Patents were invalid under § 101. J.A. 696.
The district court then issued a scheduling order, under
which the parties were “free to amend pleadings under Fed.
R. Civ. P. 15 up to January 31, 2022.” J.A. 152. The deadline for amending pleadings without the need to seek leave
was later extended to April 4, 2022.
On February 14, 2022, Mobile Acuity filed a first
amended complaint, alleging Blippar directly and
1 The Blippar entities include Blippar Ltd., Blippar
AR Ltd., Blippar Group Ltd., BlipBuilder Ltd., Blippar
USA LLC, 07446749 Ltd. (f/k/a Blippar.com Ltd.), and
Blippar LLC.
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4 MOBILE ACUITY LTD. v. BLIPPAR LTD.
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 Federal Rule of Civil
Procedure 12(b)(6). As part of its motion, Blippar contended 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. 194. The motions
went on to argue that “each of the Asserted Patents is invalid under 35 U.S.C. § 101.” J.A. 216. Rather than respond to the motion to dismiss, Mobile Acuity filed a second
amended complaint, which is the operative complaint at issue in this appeal.
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;
2 In the second amended complaint, Mobile Acuity
referred to “the use of interest points in the manner specified in claim 11” of the ’658 patent. J.A. 240 ¶ 140. However, claim 11 of the ’658 patent does not recite any use of
interest points. Mobile Acuity also referred to “a server
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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.
that contains a processor, memory and computer program
code configured to infringe claim 16” of the ’658 patent. Id.
at ¶ 142. Claim 16 of the ’658 patent does not recite a
server, a processor, memory, or computer program code.
Mobile Acuity may have intended to allege infringement of
claims 14 and 19 of the ’658 patent, respectively. Even if
so, this would not affect our analysis or the outcome of the
appeal, because the limitations of claims 14 and 19 of the
’658 patent largely parallel those of claims 11 and 16 of the
’618 patent.
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6 MOBILE ACUITY LTD. v. BLIPPAR LTD.
’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
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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 Rule 12(b)(6).
Blippar continued to argue, among other things, that claim
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8 MOBILE ACUITY LTD. v. BLIPPAR LTD.
9 of the ’618 patent and claim 9 of the ’658 patent “are representative of the entire claim set in each respective Asserted Patent” and that “each of the Asserted Patents is
invalid under 35 U.S.C. § 101.” J.A. 258, 279.
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 § 101. The district court noted: “Plaintiff
alleges that Defendants infringe at least Claims 9, 11, and
16 of the ’618 Patent and Claims 9, 11, and 16 of the ’658
Patent.” J.A. 5. The court’s opinion and order went on to
address these six “Asserted Claims.” 3
3 As we further explain, see infra III.B, because the
“Asserted Claims” are representative of all claims of the
’618 and ’658 patents, and because all claims of these two
patents were challenged in the motion to dismiss, see J.A.
279 (“each of the Asserted Patents is invalid under 35
U.S.C. § 101”), the district court’s order extended to all of
those claims. Mobile Acuity did not, at any point, narrow
the claims it was asserting. To the contrary, the operative
complaint maintained that Mobile Acuity might allege infringement of potentially all claims of both patents, see J.A.
230 ¶ 83 (complaint alleging infringement of “at least claim
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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
9” of ’618 patent); J.A. 234 ¶ 105 (alleging “discovery will
confirm that Blippar also infringes other claims of the ’618
Patent”); J.A. 236 ¶ 120 (alleging infringement of “one or
more claims” of ’658 patent), and its opposition to the motion included argument about claims not expressly briefed
by Blippar, see, e.g., J.A. 546 (countering motion by discussing, among others, claim 14 of ’618 and ’658 patents, despite not being expressly asserted as “Asserted Claim”),
553 (same). Under these circumstances, the district court
had jurisdiction over all claims of the two patents-in-suit,
as do we. Cf. Miller Mendel, Inc. v. City of Anna, Tex., ___
F.4th ___, 2024 WL 3448673 (Fed. Cir. July 18, 2024) (explaining that district court “had no jurisdiction over the unasserted claims” when plaintiff “narrowed the scope of
claims at issue”).
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the above cited problems.”
Id. After oral argument, the
district court adopted its tentative ruling as its final decision and granted Blippar’s motion to dismiss with prejudice.
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 § 101 is an affirmative defense.” J.A. 665-66.
Mobile Acuity insisted that its proposed third amended
complaint would “further clarify that the Asserted Patents
are not invalid.” J.A. 667.
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 28 U.S.C. § 1295(a)(1).
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
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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 Rule
12(b)(6) de novo. See Holt v. Cnty. of Orange, 91 F.4th 1013,
1017 (9th Cir. 2024). In doing so, the court “accepts the
factual allegations of the complaint as true and construes
them in the light most favorable to the plaintiff.” Ryan S.
v. UnitedHealth Grp., Inc.,
98 F.4th 965, 970 (9th Cir. 2024)
(internal quotation marks and brackets omitted). To survive a motion to dismiss for failure to state a claim, a complaint must allege “enough facts to state a claim to relief
that is plausible on its face.” Bell Atl. Corp. v. Twombly,
550 U.S. 544, 570 (2007).
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 35 U.S.C. § 101, patents may be granted for “any
new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement
thereof.” This provision, however, “contains an important
implicit exception: Laws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014). The Supreme Court set forth a two-step framework for “distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.”
Id. at 217. At
step one, we ask “whether the claims at issue are directed
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12 MOBILE ACUITY LTD. v. BLIPPAR LTD.
to one of those patent-ineligible concepts.”
Id. If so, we
proceed to step two, where we “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 217-18 (internal quotation marks and
brackets omitted).
“Patent eligibility under 35 U.S.C. § 101 is ultimately
an issue of law we review de novo.” Berkheimer v. HP Inc.,
881 F.3d 1360, 1365 (Fed. Cir. 2018). The patent eligibility
inquiry, however, “may contain underlying issues of fact.”
Id. “Whether the claim elements or the claimed combination are well-understood, routine, or conventional is a question of fact.” Aatrix Software, Inc. v. Green Shades
Software, Inc.,
882 F.3d 1121, 1128 (Fed. Cir. 2018).
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 § 101 is not an affirmative defense. We agree with Mobile Acuity that a challenge
to patent eligibility on § 101 grounds is an affirmative defense to a claim of patent infringement. See, e.g., Intell.
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1324
(Fed. Cir. 2017) (describing “patent-eligibility under § 101”
as example of “an affirmative defense directed to the patent
in question”). Hence, the district court misspoke when it
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stated during oral argument “[w]e are not talking about an
affirmative defense.” J.A. 88. But this error in word choice
was harmless because the district court applied the correct
legal standard for evaluating an affirmative defense at the
motion to dismiss stage.
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, “it is possible and proper to determine patent eligibility under
35 U.S.C. § 101 on a Rule
12(b)(6) motion.” Genetic Techs. Ltd. v. Merial L.L.C.,
818
F.3d 1369, 1373 (Fed. Cir. 2016); see also, e.g., AI Visualize,
Inc. v. Nuance Commc’ns, Inc.,
97 F.4th 1371, 1381 (Fed.
Cir. 2024) (affirming grant of Rule 12(b)(6) motion).
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)
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(“[P]atent eligibility can be determined at the Rule 12(b)(6)
stage when there are no factual allegations that, taken as
true, prevent resolving the eligibility question as a matter
of law.”) (internal quotation marks omitted). Thus, we see
no error in the district court’s treatment of the factual allegations in Mobile Acuity’s operative complaint.
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 § 101 challenge to representative claims is proper when the claims at issue are
“substantially similar and linked to the same” ineligible
concept. Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017) (internal
quotation marks omitted); see also Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A.,
776 F.3d
1343, 1348 (Fed. Cir. 2014). Thus, a district court “may
treat a claim as representative in certain situations, such
as if the patentee does not present any meaningful argument for the distinctive significance of any claim limitations not found in the representative claim or if the parties
agree to treat a claim as representative.” Berkheimer,
881
F.3d at 1365.
“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
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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 § 101, before patents lose presumption). In
the context of a dispute over the representativeness of a
claim, this burden means that if the patent owner presents
a non-frivolous argument that the eligibility of the purported representative claim does not fairly represent all
claims in the group for purposes of eligibility, 4 the patent
4 Mobile Acuity argues that treating claims as representative is “particularly troubling at the pleading stage,
since additional asserted claims may be identified during
discovery.” Appellant’s Br. at 45. A patent owner cannot
defeat a representative claim contention by conclusorily asserting it needs discovery, for the patent owner must “present [a] meaningful argument for the distinctive
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16 MOBILE ACUITY LTD. v. BLIPPAR LTD.
challenger bears the burden to prove either that (i) the representative claim is, in fact, representative, in that any differences among the claims are not material to the
eligibility analysis (i.e., the claims are substantially similar and are linked to the same ineligible concept); or (ii)
each separate claim (i.e., those not fairly represented by
the purported representative claim) is ineligible for patenting. This approach is mandated by the longstanding principle that “[e]ach claim of a patent (whether in
independent, dependent, or multiple dependent form) shall
be presumed valid independently of the validity of other
claims.” 35 U.S.C. § 282; see also Intell. Ventures I LLC v.
Symantec Corp.,
838 F.3d 1307, 1316 n.9 (Fed. Cir. 2016)
(“Addressing each of the asserted claims is unnecessary
when all the claims are substantially similar and linked to
the same abstract idea.”) (internal quotation marks omitted).
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 –
significance of any claim limitations not found in the representative claim[s].” Berkheimer, 881 F.3d at 1365. Still,
a patent owner may potentially point to a need for discovery as part of its non-frivolous argument against a representative claim contention.
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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 the purported representative claim does not
fairly represent all claims of the Asserted Patents. Hence,
the district court would have been free to treat just these
two claims (claim 9 of the ’618 patent and claim 9 of the
’658 patent) as representative and limit its explicit analysis
to these two. In fact, however, the court did more, separately analyzing all six claims Mobile Acuity specifically
identified in the operative complaint – claims 9, 11, and 16
of both the ’618 and ’658 patents – exercising its discretion
to treat this broader group of claims as “representative of
the claims of the Asserted Patents.” J.A. 11.
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
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18 MOBILE ACUITY LTD. v. BLIPPAR LTD.
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
5 It follows that our ruling, like that of the district
court, therefore applies to all claims of both Asserted Patents. That is, each such claim is ineligible for patenting.
6 The district court found that: (1) the independent
claims of the Asserted Patents are directed to “‘leaving’ information at a location or object for one’s future use or reference,” J.A. 8; (2) claim 11 of the ’618 patent and claim 14
of the ’658 patent are directed to “collecting information,
analyzing it, and displaying certain results of the collection
and analysis,” id. (internal quotation marks omitted); and
(3) claim 14 of the ’618 patent is directed to “comparing
data and displaying information based on that comparison,”
id. These immaterially different formulations indicate that the district court found, correctly, that the claims
at issue are all linked to the same ineligible concept.
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. . . 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 requirements as to how these steps of information manipulation are performed. As we have by now
frequently held, claims reciting generalized steps of collecting, analyzing, and presenting information, using nothing
other than the conventional operations of generic computer
components, are directed to abstract ideas. See, e.g., AI
Visualize,
97 F.4th at 1378 (“We have explained that the
steps of obtaining, manipulating, and displaying data, particularly when claimed at a high level of generality, are abstract concepts.”); Elec. Power Grp.,
830 F.3d at 1353-54
(finding challenged claim directed to abstract idea of “collecting information, analyzing it, and displaying certain results of the collection and analysis”); Berkheimer,
881 F.3d
at 1366-67 (same for “parsing, comparing, storing, and editing data”). In particular, the requirement in claim 9 of
the ’618 patent that a portion of the second image be “corresponding” with a portion of the first image does not, contrary to Mobile Acuity’s insistence, “invoke[] a specific
method for comparing the images.” Appellant’s Br. at 27-
28. The claim provides no details as to how the “corresponding” portions of images are determined.
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.
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20 MOBILE ACUITY LTD. v. BLIPPAR LTD.
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
7 Mobile Acuity insists that it “identified claim constructions, including for ‘correspondence’ and ‘interest
points.’” Appellant’s Br. at 23 (citing J.A. 604-05). In support, it cites several paragraphs of its proposed third
amended complaint, but these contain no proposed
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MOBILE ACUITY LTD. v. BLIPPAR LTD. 21
motion to dismiss based on the purported need for claim
construction, a “patentee must propose a specific claim construction . . . and explain why [any dispute] . . . must be resolved before the scope of the claims can be understood for
§ 101 purposes.” Trinity Info Media, LLC v. Covalent, Inc.,
72 F.4th 1355, 1361 (Fed. Cir. 2023); see also Cleveland
Clinic,
859 F.3d at 1360 (collecting cases affirming patentability decisions at pleading stage without claim construction). Finally, Mobile Acuity suggests that the claimed
invention describes “a nonabstract computer-functionality
improvement,” specifically an improvement in “computer
vision capabilities.” Appellant’s Br. at 32-33. Instead, we
agree with the district court (see J.A. 11) that the claims,
at best, “improv[e] a user’s experience while using a computer application,” which “is not, without more, sufficient
to render the claims directed to an improvement in computer functionality.” Customedia Techs., LLC v. Dish Network Corp.,
951 F.3d 1359, 1365 (Fed. Cir. 2020).
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
construction nor any analysis of how any particular construction would impact the issue of patentability.
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22 MOBILE ACUITY LTD. v. BLIPPAR LTD.
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
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MOBILE ACUITY LTD. v. BLIPPAR LTD. 23
specification as existing in the prior art. 8 Even assuming
the specification leaves room for Mobile Acuity to plausibly
allege that the use of “interest points” is nonetheless an inventive concept, it has failed to do so. See Weisner v. Google
LLC, 51 F.4th 1073, 1083 (Fed. Cir. 2022) (explaining that
“district court[s] [may] appropriately rel[y] on statements
in the specification . . . to conclude that the claims rely on
the use of existing technology”) (internal quotation marks
omitted).
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
8 See, e.g., ’618 patent at 6:47-57 (“Various methods
can be used to determine interest points. For example,
Hartley and Zisserman . . . use interest points defined by
regions of minima in the image auto-correlation function.
Interest points may also be defined using Scale invariant
Feature Transform (SIFT) features as described in [a publication by] David G. Lowe.”); id. at 8:9-16 (“It is possible
but not necessary for the scene image to contain all of the
target region of the model image. . . . A suitable process
. . . uses the Random Sample Consensus (RANSAC) algorithm which is described in Hartley and Zisserman.”).
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24 MOBILE ACUITY LTD. v. BLIPPAR LTD.
“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
