By Joseph Herndon --
In the U.S. District Court for the Central District of California, Dialware Communications sued Hasbro, Inc. alleging that Hasbro's Furby toys infringe on five patents: U.S. Patent Nos. 7,183,929 (the "'929 Patent"), 7,383,297 (the "'297 Patent"), 7,568,963 (the "'963 Patent"), 9,039,482 (the "'482 Patent"), and 9,275,517 (the "'517 Patent"). According to the Complaint, Hasbro's Furby is a toy that communicates with human users and electronic devices. Furby can be controlled either by voice commands or by commands sent from a smartphone or tablet app. Furbys can also perform various actions such as moving their ears or feet. Plaintiff alleges that these features, among others, infringe the Patents-In-Suit.
As a whole, the Patents-In-Suit generally claim methods of interacting, controlling, or communicating with toys via acoustic sounds generated by either a human or another device. As such, Hasbro filed a Motion to Dismiss for Failure to State a Claim in which Hasbro contended that each of the Patents-In-Suit claims unpatentable subject matter and the Patents-In-Suit are therefore invalid. More specifically, Hasbro argued that the Patents-In-Suit are directed toward the abstract idea of communication. The District Court agreed, and granted the Motion to Dismiss.
Patents-In-Suit
The '929 Patent generally relates to a method of controlling a device by sound. Claim 45 is representative and is reproduced below.
45. A method of controlling at least one device by sound, comprising:
generating a sound;
receiving the sound by the at least one device;
analyzing the received sound for at least one parameter of a distance from the at least one device to a source of the sound, whether the source of the sound is approaching or moving away, an amplitude of the sound and a pitch of the sound; and
responding by the at least one device with different physical responses to sounds with different values of the at least one parameter.
The '297 Patent relates generally to a method of communicating between an electronic device and computer by "providing" a computer with a sound receiving and generating system; "transmitting from the electronic device at least one first acoustic signal" to the computer; "receiving" the sound by the computer; and "processing" the received sound ('297 Patent, cl. 1).
The '963 Patent generally relates to two toys communicating; claim 35 is representative and is reproduced below.
39. A toy kit comprising:
a first child-safe toy which indirectly generates acoustic signals, by motion of at least parts thereof; and
at least a second child-safe toy which receives the acoustic signals through a microphone and analyzes the acoustic signals and exhibits a behavior, responsive to said analysis of said acoustic signals,
whereby the motion that indirectly generates the acoustic signals is perceptible by a player of the first toy.
The '482 patent claims a "method for interactive communication with a toy . . . comprising: receiving by the toy . . . at least one first signal including an embedded code;" "analyzing" the code; "determining" a response such as "transmitting" the data elsewhere, "processing the code to obtain a coupon," and various other responses ('482 Patent, cl. 7).
Finally, the '517 Patent relates to a method of interactive play between two toys and claim 1 is representative and is reproduced below.
1. A method for interactive communication with a toy apparatus, said method comprising:
programming the toy apparatus;
transmitting a machine-originated signal by a cellphone;
receiving the signal by the toy apparatus; and
producing by the toy apparatus at least one response to the signal,
wherein said toy apparatus is programmed by the signal.
Abstract Idea Analysis
The District Court followed the two-step analysis for determining whether the patents claim abstract ideas or patent-eligible subject matter. The first step is to determine whether the claims at issue are directed to patent-ineligible subject matter. If so, then a court proceeds to the second step to look to the claims individually and "as an ordered combination" for an "inventive concept" which transforms the nature of the claim into a patent eligible application.
Here, the District Court found that the Patents-In-Suit involve toys that communicate or interact amongst one another, with humans, or with computers. The District Court summarized the patents as claiming toys that generate, receive, and analyze sounds; transmit, receive, and respond to a signal; and generate acoustic signals, receive the acoustic signals, analyze the signal, and then perform a responsive function. In summary, the District Court found that the patents attempt to state methods for toys to communicate by sending, receiving, and responding to signals.
As such, the District Court found that since claims do not state a means by which to communicate, or details of the communication, the claims are directed at the abstract process of communication itself. Of course, communication is a practice which has long been used by both people and devices. Furthermore, the claims here do little to limit or describe the stated communication beyond their basic general terms. The claims lack technical descriptions or solutions.
Plaintiff attempted to characterize the patents as "tangible toys or devices" and therefore not abstract. However, the District Court, while acknowledging that the Patents-In-Suit do involve tangible toys and devices, noted that the mere inclusion of tangible elements in an otherwise abstract idea does not render the subject matter any less abstract.
Having found that the Patents-In-Suit are directed to an abstract idea, the Court then turned to step two.
The District Court found that the Patents-In-Suit generally rely upon generic descriptors rather than technical elements to carry out the communication between toys and humans or computers. On the whole, the Patents-In-Suit state claims for "generating," "receiving," "analyzing," "responding," "processing," and "transmitting" with very little technical specificity. What few technical components are included in the Patents-In-Suit are common speakers, microphones, and motors.
In its Opposition, Plaintiff predominately argued that the conventional components found in the Patents-In-Suit are combined for unconventional purposes. Specifically, Plaintiff argued that the Patents-in-Suit teach the use of audio hardware, which is designed for human communications, for the unconventional purpose of computer communications. But the claims here do no more than require basic microphones and speakers to perform basic functions of microphones and speakers. The Patents-In-Suit do nothing more than apply basic technology contained in other devices existing at the time the patent was created to carry out their abstract idea.
Accordingly, the District Court found that the asserted claims fail to disclose any inventive concept which would transform the claims' abstract idea into a patent-eligible subject matter. As such, the asserted claims of the Patents-In-Suit were found invalid under 35 U.S.C. § 101.
Clearly, in today's reality for software patents, the claims in these patents are too broad. Many of the patents have priority dates going back to 1998 and issue dates over 10 years ago. But, claims of this scope and lack of detail would not make it through the Patent Office using today's examination standards.
This case is yet another example, however, where the language of the claims should satisfy section 101 and be considered patentable subject matter, and then, the invalidity challenge should arise under section 102/103 to show that nothing new and unobvious is claimed by virtue of such broad claims.
Order Granting Defendant's Motion to Dismiss by District Judge Manuel L. Real
My father seemed to believe that every mechanical job could be effectively handled with slip joint pliers. This seems to be the situation with the type of case highlighted below where anytime there’s a 103 or 112 issue that is more easily decided early and outside of a jury, well, we’ll say the claimed invention is conventional (103 tone) and/or overbroad (112 tone) and do the Alice two step, throw the bum out with 12(b)(6). Now, I don’t mind throwing out claims that are directed toward the abstract (with nothing more), but my feeling (and I look at many more 101 decisions than your average patent lawyer) is that the court system is doing a bad job in terms of handling patentability issues around claims with heavy 102/112 ramifications that seem to be directed toward patent eligible subject matter. For certain types of claims, the patent eligibility filter seems to be getting just too narrow for the tastes of many patent practitioners.
Posted by: GBC | July 20, 2017 at 04:40 PM