Garmin USA, Inc., et al. v. Cellspin Soft, Inc. (Supreme Court 2019)

Question Presented: Whether patent eligibility is a question of law for the court that can be resolved on a motion to dismiss, notwithstanding allegations in a complaint that the asserted claims are inventive.

[Petition for Writ of Certiorari][Appendix].

The patent challengers begin their petition with the following line: “This is the kind of case that gives patent litigation a bad reputation.” The problem, according to the petition is that Cellspin uses its “exceptionally weak patents” to obtain “licensing fees.” The patents allow a user to connect “a digital camera to[] a mobile device so that a user can automatically publish content from the data capture device to a website. . . . an utterly routine and self-evident ‘invention.'”

The district court dismissed Cellspin’s infringement complaints for “failure to state a claim upon which relief can be granted.” Fed. R. Civ. Pro. 12(b)(6). In particular, the court found the claims so invalid that invalidity need not even be raised in a defensive pleading. On appeal, the Federal Circuit vacated and remanded. In its decision, the appellate panel agreed that the claims were directed to an abstract idea (“method of acquiring, transferring, and publishing data and multimedia content on one or more websites”). However, the court concluded that there were disputed issues of material fact on Alice Step 2 that precluded 12(b)(6) dismissal. In particular, the court noted a factual dispute on whether purported inventive features in the invention were “well-understood, routine, and conventional” at the time of the invention. In particular, Cellspin argued its two-step, two-device structure was not well known. I will note that Cellspin’s use of a 19th century cameraman does not help its cause. Consider the patents in-suit – U.S. Patents 8,738,794; 8,892,752; 9,749,847; and 9,528,698.

In the petition, the challengers argue that patent eligibility should be seen as a pure question of law: Patent eligibility is a question of law for the court, and the Federal Circuit erred in holding otherwise.

The primary argument is pretty cute — but perhaps too clever. The petition argues that Supreme Court eligibility cases have always been about determining whether the statute (section 101) should be construed to encompass the particular inventive activity in question. See, for example, Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (the question of what is eligible for patenting is one “of statutory construction”). And, statutory construction is always a matter of law. Q.E.D. (?)

= = = =

Garmin is the lead petitioner, but the group includes Canon; Fitbit, Fossil (Misfit), GoPro, JK Imaging, Moov, NIKE, and Panasonic.

= = = =

Claim 1 of the ‘794 Patent is listed below (2007 priority date):

1. A method for acquiring and transferring data from a Bluetooth enabled data capture device to one or more web services via a Bluetooth enabled mobile device, the method comprising:

providing a software module on the Bluetooth enabled data capture device;

providing a software module on the Bluetooth enabled mobile device;

establishing a paired connection between the Bluetooth enabled data capture device and the Bluetooth enabled mobile device;

acquiring new data in the Bluetooth enabled data capture device, wherein new data is data acquired after the paired connection is established;

detecting and signaling the new data for transfer to the Bluetooth enabled mobile device, wherein detecting and signaling the new data for transfer comprises:

determining the existence of new data for transfer, by the software module on the Bluetooth enabled data capture device; and sending a data signal to the Bluetooth enabled mobile device, corresponding to existence of new data, by the software module on the Bluetooth enabled data capture device automatically, over the established paired Bluetooth connection, wherein the software module on the Bluetooth enabled mobile device listens for the data signal sent from the Bluetooth enabled data capture device, wherein if permitted by the software module on the Bluetooth enabled data capture device, the data signal sent to the Bluetooth enabled mobile device comprises a data signal and one or more portions of the new data;

transferring the new data from the Bluetooth enabled data capture device to the Bluetooth enabled mobile device automatically over the paired Bluetooth connection by the software module on the Bluetooth enabled data capture device;

receiving, at the Bluetooth enabled mobile device, the new data from the Bluetooth enabled data capture device;

applying, using the software module on the Bluetooth enabled mobile device, a user identifier to the new data for each destination web service, wherein each user identifier uniquely identifies a particular user of the web service;

transferring the new data received by the Bluetooth enabled mobile device along with a user identifier to the one or more web services, using the software module on the Bluetooth enabled mobile device;

receiving, at the one or more web services, the new data and user identifier from the Bluetooth enabled mobile device, wherein the one or more web services receive the transferred new data corresponding to a user identifier; and

making available, at the one or more web services, the new data received from the Bluetooth enabled mobile device for public or private consumption over the internet, wherein one or more portions of the new data correspond to a particular user identifier.