Case 1:22-cv-00305-JLH Document 463 Filed 02/21/25 Page 1 of 8 PageID #: 28749
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`Plaintiff and Counterclaim Defendant,
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`ROBOCAST, INC.,
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`v.
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`NETFLIX, INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 22-305-JLH-CJB
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`Defendant and Counterclaim Plaintiff.
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`MEMORANDUM ORDER
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`Pending before the Court is Defendant Netflix, Inc.’s Motion for Summary Judgment of
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`Invalidity Under 35 U.S.C. § 101 (D.I. 350). The Court presided over a lengthy oral argument on
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`February 21, 2025. For the reasons stated below, the motion will be GRANTED.
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`1.
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`Netflix contends that all of the asserted claims are invalid under 35 U.S.C. § 101.
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`The asserted claims are claims 1, 25, 38, and 41 of U.S. Patent No. 7,155,451 (the “’451 patent”),
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`claim 1 of U.S. Patent No. 8,606,819 (the “’819 patent”), and claims 1, 13, 25, 27, and 31 of U.S.
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`Patent No. 8,965,932 (the “’932 patent”). The three patents have a common specification. All
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`three patents are expired; the latest expired in 2020. Neither of the parties’ briefs suggested that
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`there were any remaining claim construction disputes that need to be resolved before the Court
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`Case 1:22-cv-00305-JLH Document 463 Filed 02/21/25 Page 2 of 8 PageID #: 28750
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`assesses the validity of the claims under § 101.1 In the interest of brevity, my opinion assumes
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`familiarity with the intrinsic records of the asserted patents, as well as the parties’ briefs on the §
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`101 issue (D.I. 360, 381, 403) and the documents cited therein.
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`2.
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`The parties agree that the applicable legal standard is the two-step test set forth in
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`Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014). At step one, the court must “determine
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`whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea.
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`Alice, 573 U.S. at 218. I agree with Netflix that each and every one of the asserted claims is
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`directed to “the abstract idea of collecting, organizing, and automatically displaying content (e.g.,
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`a playlist of Internet content).” (D.I. 360 at 15.) The asserted claims contain a lot of words, and
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`some of those words sound complicated.2 But what the claims cover is not complicated. For
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`example, in plain English, claim 1 of the ʼ451 patent covers creating a playlist of content to be
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`displayed from different sources (e.g., Internet pages) and automatically playing that playlist for a
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`1 At oral argument, Robocast’s counsel suggested (for the first time) that there was an
`extant dispute over the construction of “node” that needed to be decided before the Court could
`assess validity under § 101. If that were the case, it should have been raised in Robocast’s briefing.
`It wasn’t, and it is therefore forfeited. Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355,
`1360–61 (Fed. Cir. 2023).
`Even if it weren’t, the Court rejects it. At the hearing, counsel for Robocast made the
`curious (and frankly, puzzling) suggestion that the Court should adopt Netflix’s proposed
`construction of “node” for purposes of assessing validity under § 101 because it provides “further
`specificity and structure to the claim.” The Court finds that, regardless of which side’s proposed
`construction of node is appropriate, it doesn’t change the Court’s conclusion below that all of the
`asserted claims are directed to an abstract idea, and none of the claims contain an inventive
`concept.
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` 2
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` For example, claim 1 of the ʼ451 patent refers to “nodes” and a “show structure of nodes.”
`But as Robocast’s counsel acknowledged at the Markman hearing, those terms are just
`“constructs” used to describe certain functions disclosed in the patent. (D.I. 402, 9/5/2024
`Markman Hearing Tr. at 9 (Robocast’s counsel explaining that the show structure of nodes is “the
`construct the invention uses to control the presentation of resources in an organized fashion”); 13–
`26 (Robocast’s counsel explaining that “the show structure is a concept of the node”).)
`2
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`Case 1:22-cv-00305-JLH Document 463 Filed 02/21/25 Page 3 of 8 PageID #: 28751
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`user, while giving the user the opportunity to adjust how long each piece of content (e.g., Internet
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`page) is displayed for.
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`3.
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`The Court has carefully reviewed the other asserted claims, and it concludes that
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`they all are likewise directed to organizing and displaying playlists of content. None of the asserted
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`claims contain any specificity as to how to accomplish the tasks of generating a playlist of content,
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`accessing content (except to say generally that it is done “automatically” and “without requiring
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`user input”), organizing and displaying content (except to say that it is put into an “organized
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`arrangement”), or permitting the user to adjust the duration of the display of content. Federal
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`Circuit case law is clear that “these types of methods of organizing digital media . . . are abstract
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`ideas.” Bluebonnet Internet Media Servs., LLC v. Pandora Media, LLC, No. 2022-2215, 2024 WL
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`1338940, at *2 (Fed. Cir. Mar. 29, 2024); see also Chewy, Inc. v. Int’l Bus. Machines Corp., 94
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`F.4th 1354, 1366 (Fed. Cir. 2024) (concluding that claims were directed to an abstract idea where
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`they “merely recite the concept of identifying advertisements based on search results, without any
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`specificity as to how this is accomplished”); Broadband iTV, Inc. v. Amazon.com, Inc., 113 F.4th
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`1359, 1368 (Fed. Cir. 2024) (holding that claims directed to “receiving metadata and organizing
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`the display of video content based on that metadata” were directed to abstract ideas); In re TLI
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`Commc’ns LLC Pat. Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (explaining that “classifying and
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`storing digital images in an organized manner” is an abstract idea); Enfish, LLC v. Microsoft Corp.,
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`822 F.3d 1327, 1334 (Fed. Cir. 2016) (instructing lower courts to “compare [the] claims at issue
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`to those claims already found to be directed to an abstract idea in previous cases”).
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`4.
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`I reject Robocast’s assertion that the claims are directed to a “[t]echnological
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`solution[]” to a “technological problem.” (D.I. 381 at 4.) According to Robocast, the problem in
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`prior art methods of surfing the Internet was that the user had to undergo a significant amount of
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`3
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`“user effort and decision-making”—i.e., the user had to think about each web page he wanted to
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`access and then click on each such page in order to access it. (D.I. 381 at 4 (arguing that prior art
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`methods of web surfing required “substantial decisional input from the user – i.e., laboriously
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`clicking through a series of links or web pages in order to individually navigate to each resource
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`to obtain its content”).) According to Robocast, the invention covered by the asserted claims
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`solved that problem by automatically generating and displaying a playlist of webpages. I am not
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`persuaded by that argument. The prior art “problem” Robocast identifies (thinking about what to
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`look at and then taking steps to access it) is not a technical problem, nor is it unique to the Internet.
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`But even if it were, the “solution” covered by the asserted claims is not a technical solution. It is
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`the abstract idea of automating the task of “collecting, organizing, and automatically displaying
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`content (e.g., a playlist of Internet content).” Calling something a technical solution does not make
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`it so. And just because a claim covers software does not make it a technical solution. See
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`Broadband iTV, 113 F.4th at 1368–69 (explaining that reordering content within a user interface
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`“is not a sufficient technological solution to a technological problem, but rather a results-oriented
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`abstract idea”; distinguishing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356
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`(Fed. Cir. 2018) and Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018)). As
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`explained above, recent Federal Circuit cases have confirmed that software methods of organizing
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`digital media for presentation to a user are abstract ideas. See, e.g., id.; Bluebonnet, 2024 WL
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`1338940, at *2.
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` 5.
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`At Alice step two, the court “consider[s] the elements of each claim both
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`individually and as an ordered combination” to determine if there is an “inventive concept—i.e.,
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`an element or combination of elements that is sufficient to ensure that the patent in practice
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`amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 573 U.S.
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`4
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`Case 1:22-cv-00305-JLH Document 463 Filed 02/21/25 Page 5 of 8 PageID #: 28753
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`at 217–18 (internal quotations and citations omitted). It is well-established that “claims to ‘an
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`abstract idea implemented on generic computer components, without providing a specific technical
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`solution beyond simply using generic computer concepts in a conventional way’ do not suffice at
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`step two.” Int’l Bus. Machines v. Zillow Grp., 50 F.4th at 1379 (quoting BASCOM Glob. Internet
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`Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)). I agree with Netflix
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`that each of the asserted claims lacks an inventive concept. The claims describe the basic concepts
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`of generating a playlist of content, accessing content, organizing and displaying content, and
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`permitting the user to adjust the duration of the display of content. The claims do not specify how
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`any of those tasks are accomplished. Nor do they, for instance, provide a new algorithm or method
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`for doing any of those tasks. Rather they just state, in functional language, that the tasks should
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`be performed. Bluebonnet, 2024 WL 1338940, at *2; Broadband iTV, 113 F.4th at 1370
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`(“Automation of an abstract idea does not constitute an inventive concept.”). “Nor do the claims
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`‘require[ ] anything other than conventional computer and network components operating
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`according to their ordinary functions.’” Bluebonnet, 2024 WL 1338940, at *2 (quoting Two-Way
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`Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)). Indeed,
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`the specification makes clear that the asserted claims can be performed using conventional
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`computer technology. (See, e.g., ʼ451 patent, 1:66–2:2, 2:23–26, 3:62–66, 6:16–59 (citing Figs.
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`1, 2), 9:16–20.)
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`6.
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`Robocast nevertheless contends that summary judgment is inappropriate because
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`there are genuine disputes of material fact about whether the claim elements or combinations of
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`elements are “well-understood, routine, [and] conventional.” (D.I. 381 at 2 (citing Berkheimer v.
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`HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).) Robocast asserts that because it submitted expert
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`testimony on that issue and Netflix did not, it would be inappropriate to grant summary judgment
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`5
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`Case 1:22-cv-00305-JLH Document 463 Filed 02/21/25 Page 6 of 8 PageID #: 28754
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`to Netflix on this record. I disagree. “[T]he Federal Circuit has made clear that the introduction
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`of expert testimony by the non-movant does not necessarily require the denial of a summary
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`judgment motion.” F45 Training Pty Ltd. v. Body Fit Training USA Inc., No. 20-1194-WCB, 2022
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`WL 17177621, at *13 (D. Del. Nov. 17, 2022) (Bryson, J., by designation) (collecting cases). For
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`instance, in CareDX, Inc. v. Natera, Inc., 40 F.4th 1371 (Fed. Cir. 2022), the Federal Circuit
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`affirmed the district court’s grant of summary judgment of invalidity under § 101 notwithstanding
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`that only the non-movant submitted expert testimony because the non-movant’s “expert testimony
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`and other intrinsic evidence was contrary to, and therefore could not overcome, the admissions in
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`the specification.” Id. at 1377. Furthermore, an expert’s “conclusory” assertion that there is an
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`inventive concept is insufficient where the intrinsic evidence demonstrates otherwise. Move, Inc.
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`v. Real Estate Alliance Ltd., 721 F. App’x 950, 957 (Fed. Cir. 2018).
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`7.
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`In this case, much of the cited testimony of Robocast’s expert, Dr. Almeroth (see
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`D.I. 381 at 5–7 (citing D.I. 361, Ex. 5)), is conclusory and/or contradicted by the specification,
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`which states that the claimed methods are information-processing steps that can be performed
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`using routine computer and network technology—just like other claims the Federal Circuit has
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`held ineligible as a matter of law. Even more importantly, the purported “specific” improvements
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`to computer technology proffered by Dr. Almeroth are themselves abstract ideas. For instance,
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`Dr. Almeroth contends that the limitation requiring that the show structure of nodes is created
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`based on an online search provides an inventive concept (D.I. 361, Ex. 5 ¶ 1164), but providing
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`content based on search results is an abstract idea. See Intell. Ventures I LLC v. Capital One Bank
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`(USA), 792 F.3d 1363, 1369–70 (holding that claims directed to “present[ing] [] web pages tailored
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`to an individual user” based on “dynamic web site navigation data” are directed to an abstract
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`idea). Similarly, Dr. Almeroth asserts that the multidimensional show structure of nodes limitation
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`6
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`provides an inventive concept because it allows two sequences to be displayed concurrently (D.I.
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`361, Ex. 5 ¶ 1166), but the concept of playing two resources concurrently is an abstract idea.3 See
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`Hawk Technology Systems, LLC v. Castle Retail, LLC, 60 F.4th 1349, 1353, 1356–58 (Fed. Cir.
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`2023) (holding that claims involving “multiple simultaneously displayed and stored video images”
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`are directed to an abstract idea). Having carefully reviewed the cited portions of his report in view
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`of the intrinsic record (e.g., ʼ451 patent, 1:66–2:2, 2:23–26, 6:16–59 (citing Figs. 1, 2), 9:16–20),
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`I conclude that Dr. Almeroth’s opinions are insufficient to create a genuine dispute of material fact
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`about whether the elements of each of the asserted claims—whether viewed individually or as an
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`ordered combination—supply an inventive concept.
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`8.
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`In sum, “[t]aken individually or in combination, the recited limitations neither
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`improve the functions of the computer itself, nor provide specific programming, tailored software,
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`or meaningful guidance for implementing the abstract concept.” Int’l Bus. Machines, 50 F.4th at
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`1380 (quoting Intell. Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir.
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`2017)). Since “[n]one of the claims recite an inventive concept sufficient to transform the claimed
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`abstract idea into a patent-eligible application of the abstract idea,” id., the Court will grant
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`Netflix’s request for summary judgment that the asserted claims are unpatentable under 35 U.S.C.
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`§ 101.
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`3 For the same reason, the Court rejects Robocast’s suggestion at oral argument that the
`requirement in claim 1 of the ʼ932 patent for simultaneous display of multiple resources makes
`this claim directed to something other than the abstract idea of collecting, organizing, and
`automatically displaying content, or that it supplies an inventive concept.
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`9.
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`As discussed at the conclusion of the February 21, 2025 hearing, the parties shall
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`meet and confer and propose a joint stipulation resolving the remaining pending motions, as well
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`as a joint proposed form of final judgment.
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`Dated: February 21, 2025
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`__________________________________
`Jennifer L. Hall
`U.S. District Judge
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`8
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