Case 1:18-cv-01608-RGA Document 25 Filed 12/11/19 Page 1 of 7 PageID #: 353
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`GRACENOTE, INC.,
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`Plaintiff;
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`V.
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`Civil Action No. 18-1608-RGA
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`FREE STREAM MEDIA CORP.
`SAMBA TV,
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`d/b/a
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`Defendant.
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`MEMORANDUM OPINION
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`David E. Moore, Bindu A. Palapura, and Stephanie E. O'Byrne, POTTER ANDERSON &
`CORROON LLP, Wilmington, DE; Steven Yovits and Mark Scott, KELLEY DRYE &
`WARREN LLP, Chicago, IL; and Clifford Katz and Malavika Rao, KELLEY DRYE &
`WARREN LLP, New York, NY, attorneys for Plaintiff.
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`Kelly E. Farnan, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; Sten Jensen,
`ORRICK HERRINGTON & SUTCLIFFE LLP, Washington, D.C. ; Clement Seth Roberts,
`ORRICK HERRINGTON & SUTCLIFFE LLP, San Francisco, CA; and Alyssa Caridis,
`ORRICK HERRINGTON & SUTCLIFFE LLP, Los Angeles, CA, attorneys for Defendant.
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`December n , 2019
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`Case 1:18-cv-01608-RGA Document 25 Filed 12/11/19 Page 2 of 7 PageID #: 354
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`I
`S DISTRICT JUDGE:
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`Before me is the Report & Recommendation ("Report") of a United States Magistrate
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`Judge. (D.I. 22). It addresses Defendant's Motion to Dismiss for Failure to State a Claim under
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`Rule 12(b)(6). (D.I. 10). Defendant filed objections to the Report. (D.I. 23). Plaintiff responded
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`to Defendant's objections. (D.I. 24). The Magistrate Judge's Report is comprehensive, and I will
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`adopt the factual findings and legal conclusions in the Report. I do not separately recite any of
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`them except as I think necessary to explain my decision.
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`I.
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`LEGAL ST AND ARD
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`Magistrate Judges have the authority to make recommendations as to the appropriate
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`resolution of a motion to dismiss pursuant to 28 U.S.C. § 636(b)(l)(B). In the event of an
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`objection, this Court reviews the objected-to determinations de novo.
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`When reviewing a motion to dismiss pursuant to Federal Rule of Civil Procedure
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`12(b)(6), the Court must accept the complaint's factual allegations as true. See Bell Atl. Corp. v.
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`Twombly, 550 U.S. 544, 555-56 (2007). Rule 8(a) requires "a short and plain statement of the
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`claim showing that the pleader is entitled to relief." Id. at 555. The factual allegations do not
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`have to be detailed, but they must provide more than labels, conclusions, or a "formulaic
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`recitation" of the claim elements. Id. ("Factual assumptions must be enough to raise a right to
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`relief above the speculative level ... on the assumption that the allegations in the complaint are
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`true (even if doubtful in fact)."). There must also be sufficient factual matter to state a facially
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`plausible claim to relief. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The facial plausibility
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`standard is satisfied when the complaint's factual content "allows the court to draw the
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`reasonable inference that the defendant is liable for the misconduct alleged." Id. ("Where a
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`complaint pleads facts that are merely consistent with a defendant's liability, it stops short of the
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`line between possibility and plausibility of entitlement to relief." (internal quotation marks
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`omitted)).
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`II.
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`DISCUSSION
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`Defendant objects to the Report's findings that U.S. Patent Nos. 8,171,030 ("the '030
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`Patent"), as well as 9,066,114, 9,479,831 , and 9,407,962 (collectively, the "Trigger Patents")
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`claim patent-eligible subject matter.
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`a. The '030 Patent
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`Defendant's first objection to the Report is that it failed to find that claim 1 of the ' 030
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`Patent is directed to an abstract idea. (D.I. 23 at 4). Defendant asserts that the Report misapplied
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`the Federal Circuit' s ruling in Enfish LLC v. Microsoft Corporation because the ' 030 Patent
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`claims using a well-known "tree" database to index and store videos using a "robust hash" and
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`"traversal index," which are "abstract concepts that long predate videos and video databases."
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`(Id. at 3; citing 822 F.3d 1327 (Fed. Cir. 2016)). In Enfish, the Federal Circuit held that claims to
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`a new, specific way of structuring a database were patent-eligible. 822 F.3d at 1337-38; see Elec.
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`Power Grp. , LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (explaining that the
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`claims in Enfish were eligible "because [they] focused not on asserted advances in uses to which
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`existing computer capabilities could be put, but on a specific improvement ... in how computers
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`could carry out one of their basic functions"). Defendant asserts that the Report merely
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`"[i]dentif[ied] purported benefits stemming from the use of an abstract idea," which do not make
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`a claim patent-eligible. (D.I. 23 at 4; citing OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
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`1363 (Fed. Cir. 2015)).
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`Defendant also argues that the focus of the claim in the asserted patent is essentially a
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`claim to the "creation of an index used to search and retrieve information stored in a database,"
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`Case 1:18-cv-01608-RGA Document 25 Filed 12/11/19 Page 4 of 7 PageID #: 356
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`which is an abstract idea. (D.I. 23 at 4; citing Intellectual Ventures I LLC v. Erie Indem. Co., 850
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`F.3d 1315, 1327 (Fed. Cir. 2017)). Defendant contends, "The alleged improvement of using a
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`robust hash as a traversal index does not 'enable[] a computer. .. to do things it could not do
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`before. "' (D.I. 23 at 4; citing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir.
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`2018)).
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`Plaintiff argues that Defendant improperly isolates certain elements of the asserted claims
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`in order to argue that these elements were known in the prior art. (D.I. 24 at 1). Plaintiff
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`emphasizes the structure and efficiency of the invention described by the asserted claims,
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`specifically the improvement on the structure of the database and the way traversal indexes are
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`formulated and used. (D.I. 24 at 10; D.I. 1, Ex.Eat 1:54-59, 2:2-13 , 8:52-54, 15:29-34). Unlike
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`the claims of Erie, which simply "created a system like the index at the back of a book," Plaintiff
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`contends that the claims of the ' 030 patent more analogously describe a novel improvement in
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`the organizational structure of a database or the generation of a traversal index. (D.I. 24 at 10).
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`In her report, the Magistrate Judge applied the two-step framework set forth by the
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`Supreme Court in Mayo and Alice Corp. Pty. Ltd. v. CLS Bank Intern. , 134 S. Ct. 2347 (2014).
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`(D.I. 22 at 15-18). This framework requires the Court 1) to determine whether the claims are
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`directed to a patent-ineligible concept - such as a law of nature, natural phenomenon, or abstract
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`idea- and, if they are, 2) to determine whether there is an ' inventive concept. .. sufficient to
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`ensure that the patent in practice amounts to significantly more than a patent upon the ineligible
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`concept itself.' Alice, 134 S. Ct. at 2355 (internal quotation marks and alterations omitted). In
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`applying this framework, the Magistrate Judge emphasized the factual similarity between Claim
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`1 of the ' 030 patent and the claims found to be patent-eligible in Enfish. (D.I. 22 at 16-17).
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`Because the focus of the claim language at issue in Enjish does, in fact, mirror the analogous
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`language of Claim 1 of the ' 030 patent, I think it was correct for the Magistrate Judge to do so.
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`In Enjish, the court reasoned that the specification of the asserted patents taught "benefits
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`over conventional databases, such as increased flexibility, faster search times, and smaller
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`memory requirements." 822 F.3d at 1337. Here, the '030 patent overcomes prior art concerns
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`regarding "the size and complexity of the individual signatures generally used, and the absence
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`of an indexing system for these complex signatures," thereby claiming a more accurate and
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`efficient technology than that known in the prior art. (D.I. 1, Ex. Eat 1 :54-59). The court in
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`En.fish found that "the plain focus of the claims [was] on an improvement to computer
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`functionality itself, not on economic or other tasks for which a computer is used in its ordinary
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`capacity," and found that the benefits of the invention, which included faster searching and more
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`effective data storage, distinguished the invention from conventional database structures. 822
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`F.3d at 1333, 1336-37. Here, the claim language is specifically directed to the use of a robust
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`hash to organize a multi-dimensional video database and represents an improved method
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`providing greater efficiency over conventional methods of organizing such a database. See id. at
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`1337; D.I. 1, Ex.Eat 1:54-59, 2:2-13, 8:52-54, 15:29-34.
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`Defendant argues that the Federal Circuit's decision in Erie, which was about an
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`improvement in the technology of computer databases, supports a finding of ineligibility in this
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`case. The court in Erie found that the claims failed to focus on how the use of certain tags led to
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`an improvement in the database search technology. 850 F.3d at 1328. Distinguishing the facts of
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`this case from Erie , the Magistrate Judge explained that the specification of the ' 030 patent
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`"resolves accuracy and performance issues presented by known methods" by focusing on the
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`generation of a robust hash as a traversal index. (D.I. 22 at 18; D.I. 1, Ex.Eat 5:23-36).
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`Accordingly, I agree with the Magistrate Judge's finding that the asserted claim of the '030
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`patent does not recite an abstract idea. (D.I. 22 at 17).
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`I overrule Defendant' s first objection to the Report.
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`b. The Trigger Patents
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`Defendant's second objection to the Report is that it failed to find representative claim 11
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`of the Trigger Patents is directed to the abstract idea of comparing observed data against a
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`reference and taking an action upon detecting a match. (D.I. 23 at 6). Defendant characterizes the
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`language of the asserted claims of the Trigger Patents in a broad manner, stating that the claims
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`are directed to "the abstract idea of comparing observed data against a reference and taking an
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`action upon detecting a match." (D.I. 23 at 6).
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`The Magistrate Judge applied the two-step framework set forth by the Supreme Court in
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`Mayo and Alice. (D.I. 22 at 7-14). The Report explains that the Defendant's characterization of
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`the asserted claims is overbroad because it would encompass the precise disadvantageous
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`concepts that the specification expressly states that the claimed invention is designed to avoid,
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`such as watermarking and trigger points based on the time of day. (D.1. 22 at 10-11 , citing D.I. 1,
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`Ex. Cat 2:42-43, 2:52-53 , 6:62-65 , 9:33-35).
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`The asserted claims must be read as a whole to determine whether they are directed to a
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`functional improvement. Data Engine Techs, LLC v. Google LLC, 906 F.3d 999, 1011 (Fed. Cir.
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`2018). When read as a whole, the asserted claims of the Trigger Patents are directed to a system
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`and method of implementing accurate fingerprinting in a multimedia stream to avoid the
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`necessity of involving a broadcaster corporation. (D.I. 1, Ex.Cat 9:27-47). The Magistrate Judge
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`appropriately compared the asserted claims in the Trigger Patents to those at issue in Thales
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`Visionix Inc. v. United States, in which the Federal Circuit determined that the use of
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`Case 1:18-cv-01608-RGA Document 25 Filed 12/11/19 Page 7 of 7 PageID #: 359
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`conventional sensors and a mathematical equation to more accurately calculate the position of an
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`object on a moving platform did not render the claims ineligible because the claims identified a
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`particular configuration of the sensors and a particular way of using the raw data that eliminated
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`problems inherent in prior art methods. 850 F.3d 1343 , 1349 (Fed. Cir. 2017). "Similarly, the
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`asserted claims of the Trigger Patent recite known fingerprints in an unconventional manner to
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`improve the accuracy of a trigger' s position within a multimedia stream." (D.I. 22 at 12, citing
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`D.I. 1, Ex.Cat 3:21-25 (emphasis added)) . I agree with the Magistrate Judge ' s thorough analysis
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`that "the asserted claims of the Trigger Patents are directed to a method of achieving a specific
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`solution to a known technological problem in the field of the invention, thereby improving the
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`computer technology itself," and conclusion that the Trigger Patents do not claim an abstract
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`idea. (D.I. 22 at 14; citing D.I. 1, Ex. C at 2:50-53, 5: 10-17).
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`I overrule Defendant' s second objection to the Report.
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`III.
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`CONCLUSION
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`For the reasons discussed above, I will adopt the Magistrate Judge's Report and deny
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`Defendant's Motion to Dismiss. An accompanying order will be entered.
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