Skillz Platform Inc. v. AviaGames Inc., No. 5:2021cv02436 - Document 80 (N.D. Cal. 2022)
Court Description: ORDER GRANTING IN PART AND DENYING IN PART 25 MOTION TO DISMISS. Signed by Judge Beth Labson Freeman on 3/14/2022. (blflc4, COURT STAFF) (Filed on 3/14/2022)
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1 2 3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA 5 SAN JOSE DIVISION 6 7 SKILLZ PLATFORM INC., Plaintiff, 8 v. 9 10 AVIAGAMES INC., Defendant. 11 United States District Court Northern District of California Case No. 21-cv-02436-BLF ORDER GRANTING IN PART AND DENYING IN PART MOTION TO DISMISS [Re: ECF No. 25] 12 13 Before the Court is Defendant AviaGames Inc.’s (“AviaGames”) Motion to Dismiss Plaintiff 14 Skillz Platform Inc.’s (“Skillz”) initial Complaint under Federal Rule of Civil Procedure 12(b)(6) 15 for failure to state a claim for patent infringement based on a lack of patent eligible subject matter 16 under 35 U.S.C. § 101 for its two asserted patents—U.S. Patent Nos. 9,649,564 (the “’564 Patent”) 17 and 9,479,602 (the “’602 Patent”) (collectively, the “Asserted Patents”). 18 Based on the below reasoning, the Court (1) DENIES AviaGames’ Motion as to the ’564 19 Patent and (2) GRANTS AviaGames’ Motion WITHOUT LEAVE TO AMEND as to the ’602 20 Patent. 21 I. BACKGROUND 22 Skillz is a Delaware corporation with its principal place of business in Oregon. See 23 Complaint, ECF No. 1 ¶ 12. Skillz owns the Asserted Patents. See id. ¶¶ 60, 82. Further, Skillz 24 maintains a mobile gaming platform, and it enables third-party game developers to make games 25 available on the platform through a Software Development Kit (“SDK”). See id. ¶¶ 2, 12, 22–27, 26 32–44. AviaGames is a Delaware corporation with its principal place of business in California. See 27 id. ¶ 13. 28 Pocket7Games—which AviaGames developed using Skillz’s intellectual property that it gleaned Skillz alleges that AviaGames maintains a competing mobile gaming platform— 1 2 Skillz asserts two patents against AviaGames—the ‘602 Patent and the ‘564 Patent—related 3 to mobile gaming. Skillz alleges that AviaGames’ Pocket7Games application and standalone game 4 applications, including “Bingo Clash,” “Solitaire Clash,” “21 Gold,” “Explodocube,” and “Tile 5 Blitz,” infringe the Asserted Patents. See id. ¶¶ 71–96. The ‘564 Patent 6 A. 7 Skillz owns the ’564 Patent, which is entitled “Peer-to-Peer Wagering Platform.” The ’564 8 Patent was filed on December 21, 2015 and granted on May 16, 2017, although it belongs to a long 9 line of continuation and continuation-in-part applications leading back to an application filed on 10 11 United States District Court Northern District of California while developing games for Skillz’s platform. See id. ¶¶ 4–11, 45–56. August 8, 2012. See ’564 Patent at 1. Claim 1 of the ’564 Patent provides the following: 12 13 14 15 16 17 18 19 20 21 22 23 24 1. A method comprising: receiving, at a client including an executable game instance, a stream of pseudo random number seeds characterized by a unique match identifier for an online digital gaming competition, the client enrolled in the online competition; receiving, at the client and from a game server, game data for executing the game instance, the game instance requiring one or more random numbers to complete execution of the game instance; generating, using the stream of pseudo-random number seeds, a plurality of pseudo-random numbers; and executing the game instance by the client and using the plurality of pseudo-random numbers to provide the online competition to a player such that a beginning of gameplay experience is common between the game instance and a second game instance executing on a second client enrolled in the online digital gaming competition; wherein at least one of receiving, generating, and executing is implemented by at least one data processor forming part of at least one computing system. 25 ’564 Patent, Claim 1. Claim 11 of the ’564 Patent is substantially the same as claim 1, but it claims 26 a “non-transitory computer program product storing instructions.” And claim 18 of the ’564 Patent 27 is substantially the same, but it is a system claim. The dependent claims provide that the game 28 instance is a game of skill (claims 2, 12, 19); the game instance is a game of skill having random 2 United States District Court Northern District of California 1 elements (claims 3, 13, 20); the game instance initializes associated random elements to a common 2 pseudo-random value (claims 4, 14, 21); generating the plurality of pseudo-random numbers 3 includes generating a stream of pseudo-random numbers (claims 5, 15); the second game instance 4 is executed by a second client using the plurality of pseudo-random numbers (claims 6, 16); the 5 stream of random numbers is received from a remote transactional server independent of the game 6 server (claims 7, 17); the client includes a wagering module (claim 8); the client, game server, and 7 transactional server are separate and remote (claim 9); and the client is a mobile device (claim 10). 8 The ’564 Patent relates to ensuring that competitors in a mobile online gaming tournament 9 played over client devices communicating with remote servers have (1) common gameplay within 10 a single tournament that (2) varies randomly between tournaments. The ’564 Patent explains that 11 “random numbers are typically used in gameplay engines to decide game elements and properties 12 (e.g., what obstacles are present can be decided based on the value that a random number generator 13 returns)[.]” ’564 Patent, 14:51–55. The ’564 Patent further explains that “the use of common 14 random numbers can provide a common gameplay experience to a subset of users (e.g., the players 15 involved in a third party game tournament) . . . to standardize (or level the playing field) for a game 16 of skill that still has random elements.” Id., 14:55–60. The alleged innovation of the ’564 Patent is 17 to use a “tournament identification number as a seed to generate pseudo-random numbers, thus 18 causing gameplay to be different between tournaments, but not between game instances involved in 19 a given tournament.” Id., 15:3–7. 20 During prosecution of the ’564 Patent, the first set of claims considered by the examiner 21 were substantially the same as the resulting claims, with the only difference being that the phrase 22 “pseudo random number seeds characterized by a unique match identifier” in the final independent 23 claims was replaced with “pseudo random number seeds associated with a unique match identifier” 24 in the preliminary claims. See January 26, 2016 Amendment at 2–5 (emphasis added). On 25 August 23, 2016, the examiner issued a Non-Final Rejection of the preliminary claims. See 26 Sacksteder Decl., ECF No. 25-1, Ex. E, August 23, 2016 Non-Final Rejection. The examiner stated 27 that the claims were valid under § 101 because they were “necessarily rooted in computer 28 technology and thus not drawn to an abstract idea.” See id. ¶ 7. Further, the examiner stated that 3 United States District Court Northern District of California 1 “the claimed invention does not merely take an abstract idea (i.e. a generic game) and ‘apply’ it 2 using only conventional components. Rather, . . . the presence of a randomized number generation 3 seeding system is rooted in particularized computing elements. Thus, the claimed invention aligns 4 with the facts of the Federal Circuit decision in Enfish.” Id. However, the examiner issued a non- 5 final rejection of all but final Claim 8 as invalid in light of U.S. Patent Application 6 No. 2010/0022307 (“Steuer”) and U.S. Patent Application No. 2010/0311496 (“Taylor”), and final 7 Claim 8 as invalid in light of Steuer, Taylor, and U.S. Patent Application No. 2005/0090307 8 (“Walker”). See id. ¶¶ 12–23. The examiner found that Steuer anticipated all elements of the claims, 9 other than the fact that the stream of pseudo-random number seeds was “associated with a unique 10 match identifier.” See id. ¶ 16. However, the examiner found that this element was obvious in light 11 of the Taylor reference, since it discloses using a seed combined with a current date and time to 12 produce a unique input value for a game. See id. ¶ 16. Further, the examiner found the three 13 independent claims invalid based on the doctrine of nonstatutory double patenting over claims 1, 8, 14 and 15 of U.S. Patent No. 9,240,101. See id. ¶¶ 24–27. 15 In response, the applicants amended the claims to their final form (replacing “associated 16 with” with “characterized by” in the independent claims) and filed a terminal disclaimer over 17 U.S. Patent No. 9,240,101. See November 22, 2016 Amendment at 3–6, 8. The examiner granted 18 the patent as amended. See January 18, 2017 Notice of Allowance. 19 B. 20 21 22 The ‘602 Patent Skillz also owns the ‘602 Patent, which is entitled “Event Platform for Peer-to-Peer Digital Gaming Competition.” The ’602 Patent was filed on May 20, 2015 and granted on October 25, 2016. Claim 1 of the ’602 Patent recites the following: 23 24 25 26 27 28 1. A method for implementation by at least one data processor forming part of at least one computing system, the method comprising: receiving, by at least one data processor, data identifying a peer-topeer gaming event and comprising a request to register for the peerto-peer gaming event, the request originating from peer-to-peer gaming platform software stored in memory of a client and executing on the client, the client being remote from the data least one data 4 1 2 3 4 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 processor, the peer-to-peer event being a geographically restricted peer-to-peer gaming competition having a plurality of participants each playing a skill-based digital game; associating, using the at least one data processor, the client with the peer-to-peer gaming event; receiving data characterizing a location of the client according to a geolocation system of the client, wherein the geolocation system of the client is a global positioning system (GPS) service or a local positioning system (LPS) utilizing beacons; and comparing the location of the client to a predefined geolocation of the peer-to-peer event to determine, using the at least one data processor, that the client satisfies a geographical location requirement of the peer-to-peer gaming event; and causing, using the at least one data processor, provision of the skillbased digital game to the client during the peer-to-peer gaming event, the skill-based digital game exchanging game data with a game server remote from the at least one data processor and the client. ’602 Patent, Claim 1. Claim 10 recites substantially the same limitations as claim 1 in the context of a claim directed to “[a] non-transitory computer program product storing instructions,” and 14 claim 19 recites substantially the same limitations in the context of a system claim. Claims 2, 11, 15 and 20 recite that the skill-based game is a single player or multiplayer game. Claims 3–5, 12–14, 16 and 21–23 pertain to a video feed recording in-game actions that can be shared with other users. 17 Claims 6, 15, and 24 pertain to presenting users with targeted advertisements during the course of 18 game events. Claims 7 and 16 disclose a method for transmitting monetary prizes for games. Claims 19 8 and 17 recite that the “gaming platform software executing on the client provides a random number 20 seed to an operating system independent random number generator so that an initial state of the 21 skill-based digital game is consistent for the plurality of participants.” And claims 9 and 18 recite 22 that the skill-based game is concurrently played by the plurality of participants. 23 24 25 26 27 The ’602 Patent specification discusses a platform for mobile gaming tournaments. The ’602 Patent discloses that fans of electronic sports or “eSports” have community organized gatherings in bars and restaurants to watch video streams of each other’s gameplay while enjoying food and socializing. See ’602 Patent, 1:11–19. Bars catering to these events, called “eSports bars” have arisen. See id., 1:20–26. But outside of eSports bars, “eSporting events are generally organized 28 5 United States District Court Northern District of California 1 in an ad-hoc manner.” Id., 1:27–31. Further, venues often lack sufficient hardware for hosting these 2 events. See id., 1:31–38. 3 The ’602 Patent generally relates to a platform for hosting gaming events with geographic 4 restrictions. See ’602 Patent, Abstract. The platform consists of a client device and a data processor 5 remote from the client device. See, e.g., id. 1:47–52. After associating a client device with the 6 gaming event, the processor receives location data from the client based on the client’s geolocation 7 system, which is either a global positioning system (GPS) or a local positioning system (LPS) 8 utilizing beacons. See id. Then, the processor determines if the client’s location satisfies a 9 geographical location requirement of the gaming event by comparing the client’s location to a 10 predefined location of the gaming event. See id. If the client satisfies the location criteria, the 11 processor provides game content to the client. See id., 9:29–43. The specification indicates that an 12 advantage of the geographic restrictions of the alleged invention is that they can ensure that 13 participants in a live event are located in the same place, thereby ensuring “[s]ocial aspects of live 14 events.” See ’602 Patent, 4:13–17, 4:62–5:2, 3:1–15, 3:64–4:11, 4:62–5:2. The ’602 Patent further 15 relates to techniques for managing gaming events and ensuring fair play amongst event participants, 16 including (1) a random number seed provided to an operating system independent random number 17 generator so that each player has a consistent initial state of the game, see id., Claims 8, 17, and 18 (2) broadcasting a video feed of one user’s game display to other users participating in the same 19 gaming event, see id., Claims 3–5, 12–14, 21–23. 20 During prosecution of the ’602 Patent, the examiner issued a non-final rejection of 21 preliminary claims on the basis that they were directed to an abstract idea and they failed to identify 22 a particular use or application that qualified as an improvement to a particular technology or 23 technical field. See Sacksteder Decl., ECF No. 25-1, Ex. A at 3–5. Further, the examiner found 24 that the dependent claims “fail[ed] to establish that the claim(s) is/are not directed to an abstract 25 idea.” Id. at 3. In response, applicant added limitations to the independent claims (1) specifying 26 that the peer-to-peer gaming platform software was stored in the memory of a client and (2) 27 indicating that the client’s location was determined based on GPS or LPS information the server 28 received from the client. See Sacksteder Decl., ECF No. 25-1, Ex. B at 2–9. The examiner allowed 6 1 2 United States District Court Northern District of California 3 the amended claims. See id., Exs. C–D. II. LEGAL STANDARD A. Motion to Dismiss Under Fed. R. Civ. Proc. 12(b)(6) 4 “A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a 5 claim upon which relief can be granted ‘tests the legal sufficiency of a claim.’” Conservation Force 6 v. Salazar, 646 F.3d 1240, 1241–42 (9th Cir. 2011) (quoting Navarro v. Block, 250 F.3d 729, 732 7 (9th Cir. 2001)). When determining whether a plaintiff has stated a claim, the Court accepts as true 8 all well-pled factual allegations and construes them in the light most favorable to the plaintiff. Reese 9 v. BP Exploration (Alaska) Inc., 643 F.3d 681, 690 (9th Cir. 2011). However, the Court need not 10 “accept as true allegations that contradict matters properly subject to judicial notice” or “allegations 11 that are merely conclusory, unwarranted deductions of fact, or unreasonable inferences.” In re 12 Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008) (internal quotation marks and citations 13 omitted). While a complaint need not contain detailed factual allegations, it “must contain sufficient 14 factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. 15 Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A 16 claim is facially plausible when it “allows the court to draw the reasonable inference that the 17 defendant is liable for the misconduct alleged.” Id. On a motion to dismiss, the Court’s review is 18 limited to the face of the complaint and matters judicially noticeable. MGIC Indem. Corp. v. 19 Weisman, 803 F.2d 500, 504 (9th Cir. 1986); N. Star Int’l v. Ariz. Corp. Comm’n, 720 F.2d 578, 581 20 (9th Cir. 1983). 21 B. 22 In deciding whether to grant leave to amend, the Court must consider the factors set forth by 23 the Supreme Court in Foman v. Davis, 371 U.S. 178 (1962), and discussed at length by the Ninth 24 Circuit in Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048 (9th Cir. 2003). A district court 25 ordinarily must grant leave to amend unless one or more of the Foman factors is present: (1) undue 26 delay, (2) bad faith or dilatory motive, (3) repeated failure to cure deficiencies by amendment, (4) 27 undue prejudice to the opposing party, or (5) futility of amendment. 28 316 F.3d at 1052. “[I]t is the consideration of prejudice to the opposing party that carries the Leave to Amend 7 Eminence Capital, United States District Court Northern District of California 1 greatest weight.” Id. However, a strong showing with respect to one of the other factors may 2 warrant denial of leave to amend. Id. 3 Courts in this District differ as to whether leave to amend is appropriate upon a finding that 4 claims are directed to patent ineligible subject matter. See Papst Licensing GmbH & Co. KG v. 5 Xilinx Inc., 193 F.Supp.3d 1069, 1095 (N.D. Cal. 2016) (dismissing patent infringement claims with 6 prejudice where “the asserted claims are directed to patent-ineligible subject matter, a defect which 7 cannot be cured through amendment of a complaint.”); Internet Patents Corp. v. General 8 Automobile Ins. Servs., Inc., 29 F.Supp.3d 1264, 1270 (N.D. Cal. 2013) (“[I]t is the duty of the court 9 to dismiss a patent infringement suit whenever it affirmatively appears that the patent is invalid.”) 10 (citation omitted); but see RingCentral, Inc. v. Dialpad, Inc., 372 F.Supp.3d 988, 1005 (N.D. Cal. 11 2019) (“Although the Court doubts whether the identified deficiencies can be cured by amendment, 12 the Court will nonetheless grant leave to amend solely to allow RingCentral an opportunity to 13 attempt to plead patent eligibility.”) (citing Aatrix, 882 F.3d at 1126–28); Yu v. Apple, 392 14 F.Supp.3d 1096, 1008 (N.D. Cal. 2019) (“In light of the plain language of the claims in the patent, 15 the Court has substantial doubt that Yu can amend around this problem. Even so, the Court cannot 16 say that any amendment would necessarily be futile, and so plaintiffs may file amended 17 complaints[.]”). 18 C. 19 A patent can be obtained for “any new and useful process, machine, manufacture, or 20 composition of matter, or any new and useful improvement thereof[.]” 35 U.S.C. § 101. However, 21 “this provision contains an important implicit exception: Laws of nature, natural phenomena, and 22 abstract ideas are not patentable.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 23 569 U.S. 576, 589 (2013) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 24 566 U.S. 66, 70 (2012)) (alterations omitted). But the application of these concepts to new and 25 useful ends remains eligible for patent protection. Id. at 589–90. Patent Validity Challenges Under 35 U.S.C. § 101 26 Patent eligibility can be determined at the Rule 12(b)(6) stage despite the lack of expert 27 testimony or claim construction. See Cleveland Clinic Found. v. True Health Diagnostics LLC, 28 859 F.3d 1352, 1360 (Fed. Cir. 2017) (affirming § 101 rejection at motion to dismiss stage where 8 United States District Court Northern District of California 1 patentee “provided no proposed construction of any terms or proposed expert testimony that would 2 change the § 101 analysis”); Yu v. Apple Inc., 1 F.4th 1040, 1046 (Fed. Cir. 2021) (“[P]atent 3 eligibility can be determined at the Rule 12(b)(6) stage without the aid of expert testimony.”); 4 PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 1319 (Fed. Cir. 2021) (affirming judgment 5 on the pleadings of invalidity where alleged improvements “lie entirely in the realm of abstract 6 ideas, with no plausibly alleged innovation in the non-abstract application realm”) (quotations and 7 alterations omitted); CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1371–74 (Fed. Cir. 2020). 8 However, “[t]his is true only when there are no factual allegations that, taken as true, prevent 9 resolving the eligibility question as a matter of law.” Aatrix Software, Inc. v. Green Shades 10 Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018). “[P]lausible factual allegations may preclude 11 dismissing a case under § 101 where, for example, ‘nothing on th[e] record ... refutes those 12 allegations as a matter of law or justifies dismissal under Rule 12(b)(6).’” FairWarning IP, LLC v. 13 Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed. Cir. 2016) (quoting BASCOM Glob. Internet Servs., Inc. 14 v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)). 15 In Alice, the Supreme Court laid out a two-part framework for assessing the validity of patent 16 claims under § 101. See Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208 (2014). Under 17 step one of the Alice framework, a court must “determine whether the claims at issue are directed to 18 a patent-ineligible concept,” including abstract ideas, natural phenomena, or laws of nature. Id. at 19 218. “[S]tep one of the Alice framework does not require an evaluation of the prior art or facts 20 outside of the intrinsic record regarding the state of the art at the time of the invention.” CardioNet, 21 955 F.3d at 1374; see Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any 22 element or steps in a process, or even of the process itself, is of no relevance in determining whether 23 the subject matter of a claim falls within the § 101 categories of possibly patentable subject 24 matter.”); Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1011 (Fed. Cir. 2018) (“The 25 eligibility question is not whether anyone has ever used tabs to organize information. That question 26 is reserved for §§ 102 and 103. The question of abstraction is whether the claim is ‘directed to’ the 27 abstract idea itself.”). However, “if the extrinsic evidence is overwhelming to the point of being 28 indisputable, then a court could take notice of that and find the claims directed to the abstract idea 9 1 of automating a fundamental practice, . . . but the court is not required to engage in such an inquiry 2 in every case.” CardioNet, 955 F.3d at 1373–74. “If the claims are not directed to a patent-ineligible 3 concept under Alice step 1, ‘the claims satisfy § 101 and we need not proceed to the second step.’” 4 Data Engine, 906 F.3d at 1007 (quoting Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 5 880 F.3d 1356, 1361 (Fed. Cir. 2018)). 6 The Supreme Court and the Federal Circuit have cautioned courts against characterizing the 7 claims at a high level of abstraction untethered from the language of the claims. Enfish, LLC v. 8 Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016); Solutran, Inc. v. Elavon, Inc., 9 931 F.3d 1161, 1167–68; McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1313 United States District Court Northern District of California 10 (Fed. Cir. 2016); TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1294 (Fed. Cir. 2020). 11 Further, courts have cautioned that “[t]he ‘novelty’ of any element or steps in a process, or 12 even of the process itself is of no relevance in determining whether the subject matter of a claim 13 falls within the § 101 categories of possibly patentable subject matter.” Diamond, 450 U.S. at 14 188–89; see Intellectual Ventures I LLC v. Symantec Corp. (“Intellectual Ventures I”), 838 F.3d 15 1307, 1315 (Fed. Cir. 2016) (“While the claims may not have been anticipated or obvious . . . that 16 does not suggest that the idea . . . is not abstract, much less that its implementation is not routine 17 and conventional.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 18 2016). 19 Courts have found that preemption is a significant indication that claims are directed to an 20 abstract idea. See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (2019) (“‘[T]he 21 concern that drives’ the judicial exceptions to patentability is ‘one of preemption[.]’”). However, 22 “[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption 23 does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 24 1379 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 25 2015). Additionally, courts commonly find “functional” claims—i.e., those that recite a result 26 without providing details for how that result is to be achieved—to be directed to abstract ideas. See 27 Univ. of Fla. Research Found. v. GE Co., 916 F.3d 1363, 1368 (Fed. Cir. 2019); Interval Licensing 28 LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018) (“result-oriented” claims paired with 10 United States District Court Northern District of California 1 specification that “lacks any description” are directed to abstract ideas). 2 Further, the fact that a claimed step can be performed by the human mind or a person with a 3 pencil and paper has often been found to be an indication that the claims are directed to patent 4 ineligible abstract ideas. See Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1378 (Fed. Cir. 5 2016); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); 6 Synopsys, 839 F.3d at 1149. 7 The second step under Alice is “a search for an ‘inventive concept’—i.e., an element or 8 combination of elements that is ‘sufficient to ensure that the patent in practice amounts to 9 significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18, 10 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). Deciding whether claims recite an 11 “inventive concept,” or something more than “well-understood, routine, conventional activities 12 previously known to the industry,” Alice, 573 U.S. at 225 (internal brackets omitted), may turn on 13 underlying “question[s] of fact,” Aatrix, 882 F.3d at 1128. “If a claim’s only ‘inventive concept’ is 14 the application of an abstract idea using conventional and well-understood techniques, the claim has 15 not been transformed into a patent-eligible application of an abstract idea.” BSG Tech LLC v. 16 Buyseasons, Inc., 899 F.3d 1281, 1290–91 (Fed. Cir. 2018); Content Extraction and Tramission 17 LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014). 18 In cases involving software innovations, the Alice step two and frequently the Alice step one 19 inquiry “often turns on whether the claims focus on specific asserted improvements in computer 20 capabilities or instead on a process or system that qualifies an abstract idea for which computers are 21 invoked merely as a tool.” Uniloc USA, Inc. v. LG Electronics USA, Inc., 957 F.3d 1303, 1306–07 22 (Fed. Cir. 2020). “[S]oftware can make patent-eligible improvements to computer technology, and 23 related claims are eligible as long as they are directed to non-abstract improvements to the 24 functionality of a computer or network platform itself.” Id. at 1309; see Customedia Techs., LLC v. 25 Dish Net. Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020). The Federal Circuit has found software- 26 related claims eligible where (1) “the claimed advance is on a solution to ‘a problem specifically 27 arising in the realm of computer networks’ or computers,” and (2) “the claim is properly 28 characterized as identifying a ‘specific’ improvement in computer capabilities or network 11 United States District Court Northern District of California 1 functionality, rather than only claiming a desirable result or function.” TecSec, 978 F.3d at 1293 2 (citations omitted); see also Packet Intelligence LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1309 3 (Fed. Cir. 2020) (“The asserted patents’ specifications make clear that the claimed invention 4 presented a technological solution to a technological problem.”); Uniloc, 57 F.3d at 1308 (finding 5 claims valid where “the claimed invention changes the normal operation of the communication 6 system itself”). The improvement need not be defined by reference to “physical components.” 7 Uniloc, 957 F.3d at 1309; Enfish, 822 F.3d at 1339 (“To hold otherwise risks resurrecting a bright- 8 line machine-or-transformation test, . . . or creating a categorical ban on software patents.”). 9 However, the Federal Circuit has stated that software patents are invalid where they “merely recite 10 generalized steps to be performed on a computer using conventional computer activity.” Uniloc, 11 957 F.3d at 1308; see also BASCOM, 827 F.3d at 1350 (claims would be invalid if they “merely 12 recite[d] the abstract idea of filtering content along with the requirement to perform it on the Internet, 13 or to perform it on a set of generic computer components”). 14 In determining whether claims are directed to a patent-eligible improved computer system 15 rather than an abstract idea, courts have found that technical advantages described in the 16 specification can be a significant indication of eligibility. See CardioNet, 955 F.3d at 1369–70 17 (advantages disclosed in specification for patent directed to cardiac monitoring device are 18 “important in our determination that the claims are drawn to a technological improvement”); Visual 19 Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259–60 (Fed. Cir. 2017); but see Intellectual 20 Ventures I, 838 F.3d at 1322 (“The district court erred in relying on technological details set forth 21 in the patent’s specification and not set forth in the claims to find an inventive concept.”). Courts 22 also consider the prosecution history to be relevant to assessing whether the claims are directed to 23 an improvement in computer technology. 24 908 F.3d 1343, 1348–49 (Fed. Cir. 2018) (finding claims were directed to a “non-abstract computer- 25 functionality improvement” where “[t]he prosecution history reinforces what the patent itself 26 indicates about the change in previous verification techniques for computer security”). And courts 27 also must consider factual allegations in the Complaint. See Aatrix, 882 F.3d at 1125. See Ancora Techs., Inc. v. HTC America, Inc., 28 12 United States District Court Northern District of California 1 III. DISCUSSION 2 Unsurprisingly, the parties disagree as to whether the ’564 and ’602 Patents are patent 3 eligible under § 101. AviaGames generally argues that the claims of the ’564 and ’602 Patents are 4 directed to abstract ideas like managing games and manipulating data; lacking in a non-abstract 5 improvement to computer technology because they recite conventional and generic computer 6 elements; and lacking in an inventive concept. In response, Skillz generally argues that AviaGames 7 overgeneralizes the claims of the ’564 and ’602 claims and ignores their specific implementation 8 details; disregards excerpts from the specification and Skillz’s complaint indicating the specific 9 advantages and technological solutions that the claims offered; and raises factual issues about the 10 conventionality of various technologies that cannot be resolved at the 12(b)(6) stage. The Court 11 considers each of the Asserted Patents in turn. 12 A. 13 At a high level, the ’564 Patent pertains to a plurality of client devices participating in a 14 digital gaming competition by communicating with remote game servers. In order to ensure that all 15 users have common gameplay, the clients generate pseudo-random number seeds using a unique 16 match identifier common to all of them. They use these seeds to generate pseudo-random numbers, 17 which they then use to bring about randomized behavior in gameplay. Since the client devices 18 participating in a particular game all use the same unique match identifier to generate pseudo- 19 random number seeds and ultimately pseudo-random numbers, they generate the same pseudo- 20 random numbers, which results in identical initial gameplay. However, since client devices in future 21 games will receive a different unique match identifier, gameplay can randomly vary between 22 different games—while being the same for two different clients playing the same game. ’564 Patent 23 As a threshold matter, the Court notes that the parties appear to agree that Claim 1 of the 24 ’564 Patent is representative of all claims. Skillz does not argue that any of the dependent claims 25 are directed to subject matter that is materially different from Claim 1, nor does it argue that any of 26 the dependent claims contain an inventive concept that is not already contained in Claim 1. The 27 Court agrees with the parties, so the Court’s analysis will focus only on Claim 1 of the ’564 Patent 28 as representative of the other claims. See Planet Bingo, LLC v. VKGS LLC, 13 1 576 Fed.Appx. 1005, 1007 (Fed. Cir. 2014) (“[T]here is no meaningful distinction between the 2 method and system claims or between the independent and dependent claims.”); Elec. Power Grp. 3 v. Alstom S.A., 830 F.3d 1350, 1352 (Fed. Cir. 2016) (finding claim was representative where 4 plaintiff did not “present[] any meaningful argument for the distinctive significant of any claim 5 limitations other than those included in” the representative claim). 6 Independent claim 1 of the ’564 Patent recites the following: 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 1. A method comprising: receiving, at a client including an executable game instance, a stream of pseudo random number seeds characterized by a unique match identifier for an online digital gaming competition, the client enrolled in the online competition; receiving, at the client and from a game server, game data for executing the game instance, the game instance requiring one or more random numbers to complete execution of the game instance; generating, using the stream of pseudo-random number seeds, a plurality of pseudo-random numbers; and executing the game instance by the client and using the plurality of pseudo-random numbers to provide the online competition to a player such that a beginning of gameplay experience is common between the game instance and a second game instance executing on a second client enrolled in the online digital gaming competition; wherein at least one of receiving, generating, and executing is implemented by at least one data processor forming part of at least one computing system. ’602 Patent, Claim 1. 21 The parties dispute whether the ’564 claims are directed to an abstract idea under Alice step 22 one, with Skillz arguing that the claims are directed to a non-abstract improvement in computer 23 technology. Further, the parties dispute that the ’564 claims contain an inventive concept under 24 Alice step two. The Court will consider each issue in turn. 25 1. Alice Step One: Whether the Claims are Directed to an Abstract Idea 26 AviaGames argues that Claim 1 involves four steps: (1) receiving a stream of pseudo- 27 random number seeds; (2) receiving game data from the game server; (3) generating a plurality of 28 pseudo-random numbers using the stream of pseudo-random number seeds; and (4) executing the 14 United States District Court Northern District of California 1 game instance using the plurality of pseudo-random numbers. See Motion, ECF No. 25 at 20–21. 2 Based on the claims and the purported advance in the specification, AviaGames argues that the ’564 3 Patent is directed to “managing a game so that multiple players experience common initial 4 gameplay.” See id. at 21. Accordingly, AviaGames argues that the ’564 Patent is analogous to 5 providing two Solitaire players decks of cards that have the playing cards in the same, shuffled 6 order. See id. at 21–22. Further, AviaGames argues that courts have found that similar claims 7 directed to the management of games on a computing device are nothing more than the abstract idea 8 of organizing human activity. 9 834 Fed.Appx. 583, 588 (Fed. Cir. 2020); Planet Bingo, 576 Fed.Appx. at 1008). And AviaGames 10 argues that the recitation of pseudo-random number generation is an improper attempt to patent a 11 mathematical algorithm. See id. at 22–23. Additionally, AviaGames argues that the ’564 claims do 12 not provide an improvement in computing technology, because they recite generic computer 13 components and could be carried out by a human using pen and paper. See id. See id. at 21–22 (citing, e.g., GREE, Inc. v. Supercell Oy, 14 In response, Skillz argues that AviaGames overgeneralizes the ’564 claims. Skillz argues 15 the claims are directed to specific implementations using pseudo-random number seeds to 16 standardize gameplay in an electronic skills-based game—not merely “managing a game so that 17 multiple players experience common initial gameplay.” See Opposition, ECF No. 33 at 8–9. 18 Regarding AviaGames’ Solitaire analogy, Skillz argues that the process a human would use to 19 arrange multiple decks of cards is not the same as the claimed ’564 process, since it does not involve 20 the use of pseudo-random number seeds. See id. at 9 (citing McRO, 837 F.3d at 1303–304). Further, 21 Skillz argues that the specific steps of the ’564 claims would not ordinarily be performed by human 22 beings. See id. at 9–10. Additionally, Skillz argues that the ’564 claims are non-abstract because 23 they are directed to a specific technological improvement—namely, the use of common random 24 number seeds computed using a game instance’s unique match identifier to standardize randomized 25 behavior in the game instance. See id. at 6–7. Skillz further argues that the examiner’s explicit 26 finding that the ’564 claims are patent eligible support its arguments. See id. at 7–8. 27 The Court finds that AviaGames has failed show that the claims of the ’564 Patent are 28 directed to abstract ideas at the pleading stage. AviaGames proposes that the ’564 claims are 15 United States District Court Northern District of California 1 directed to the abstract idea of “managing a game.” See Motion, ECF No. 25 at 22. But this only 2 partially captures the subject matter of the claims—in fact, it only appears to pertain to the final step 3 of executing a game using pseudo-random numbers. Prior to this step, there are steps of distributing 4 game data to client devices, using a unique match identifier to generate pseudo-random numbers, 5 and other limitations that AviaGames’ proposed abstract idea clearly fails to account for. The Court 6 finds that AviaGames has failed to heed the Federal Circuit’s warning that “describing the claims at 7 such a high level of abstraction and untethered from the language of the claims all but ensures that 8 the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at 1337. 9 The overbreadth of AviaGames’ account of the ’564 claims is confirmed by the 10 inapplicability of its real-world analogy. AviaGames argues that the ’564 claims are analogous to 11 providing two Solitaire players decks of cards that have the playing cards in the same, shuffled 12 order. See Motion, ECF No. 25 at 21–22. The Court finds that this real-world analogy is too remote 13 from the claim elements. For example, in AviaGames’ analogy, one person shuffles two decks of 14 cards and then distributes them to multiple players. But this ignores the fact that the ’564 claims 15 happen in a different order and with additional elements—a unique match identifier is distributed to 16 each player and using this, each player’s client device does a common randomizing operation to 17 result in standardized, randomized gameplay. AviaGames’ purported real-world analogy leaves out 18 the unique match identifier, and it reorders claimed steps. The Court therefore does not find 19 AviaGames’ real-world analogy to support that the claims are directed to abstract ideas. 20 Skillz’s caselaw underlines the inadequacy of AviaGames’ proffered real-world analogies. 21 In McRO, Inc. v. Bandai Namco Games Am., Inc., for example, the Federal Circuit found claims 22 directed to “a specific asserted improvement in computer animation” where defendants “provided 23 no evidence that the process previously used by animators is the same as the process required by the 24 claims.” See McRO, 837 F.3d at 1314. Similarly, AviaGames fails to show that real-world Solitaire 25 tournaments were previously organized via a process analogous to the ’564 claims—e.g., by 26 distributing a common number to participants or organizers and having them shuffle decks in some 27 process derived from that number. Further, in Finjan, Inc. v. Blue Coat Systems, Inc., the Federal 28 Circuit found software-claims patent eligible where “the claims recite[d] more than a mere result” 16 1 and “there [was] no contention that the only thing disclosed is the result and not an inventive 2 arrangement for accomplishing the result.” Finjan, 879 F.3d at 1305–1306. Here, AviaGames 3 appears to assert that the ’564 claims are merely directed to the result of “managing a game so that 4 multiple players experience common initial gameplay,” or merely “managing a game.” See Motion, 5 ECF No. 25 at 21–22. But even AviaGames acknowledges that the ’564 claims provide specific 6 steps for achieving that result: “Claim 1’s method essentially involves four steps: (1) receiving a 7 stream of pseudo-random number seeds; (2) receiving game data from the game server; (3) 8 generating a plurality of pseudo-random numbers using the stream of pseudorandom number seeds; 9 and (4) executing the game instance using the plurality of pseudo-random numbers.” See id. United States District Court Northern District of California 10 at 20–21. 11 Further, AviaGames’ caselaw fails to move the needle. AviaGames points to cases where 12 courts found claims pertaining to the management of games were directed to the abstract idea of 13 “organizing human activity.” 14 AviaGames’ closest case is GREE, but there the Federal Circuit found claims to be abstract that 15 were broad enough to cover the “long-standing and conventional game of correspondence chess.” 16 GREE, 834 Fed.Appx. at 588. Here, AviaGames has cited only one real-world analog to the ’564 17 claims—providing two Solitaire players decks of cards that have the playing cards in the same, 18 shuffled order. But AviaGames fails to assert that this real-world analog is either (1) a long-standing 19 and conventional practice or (2) that the ’564 claims would be broad enough to cover such conduct. 20 See Motion, ECF No. 25 at 20–21. Accordingly, GREE is inapposite. See id. at 21–22. But AviaGames’ caselaw is inapposite. 21 Otherwise, AviaGames cites Marco Guldenaar and In re Smith, but these pertained to claims 22 that simply recited the rules of dice and wagering games. See In re Marco Guldenaar Holding B.V., 23 911 F.3d 1157, 1159 (Fed. Cir. 2018); In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016). The Court 24 sees little similarity between claims that outline abstract rules for playing a game and the ’564 25 claims, which pertain to specific steps for setting up common, randomized gameplay in a networked 26 computing environment. Planet Bingo is similar, since the claims in that case were merely drawn 27 to implementing a generic bingo game. See Planet Bingo, 576 Fed.Appx. at 1007–1008. The Court 28 finds that there is little in common between the ’564 claims and these cases—other than a connection 17 United States District Court Northern District of California 1 to games. The ‘564 claims allegedly improve how games are played in a computing environment, 2 whereas AviaGames’ cases involve claims that simply recite or apply rules of a game. 3 AviaGames’ failure to show that the ’564 claims are directed to abstract ideas is further 4 underlined by Skillz’s plausible allegations that the ’564 claims are directed to a specific 5 improvement in computer technology. Skillz alleges that the inventors of the ’564 Patent recognized 6 that games frequently use random numbers to determine game elements and properties, but within 7 a competitive gaming tournament, there are advantages to providing common gameplay to different 8 users so as to “level the playing field” for a game of skill. See Complaint, ECF No. 1 ¶ 85 (citing 9 ’564 Patent, 14:51–60). Accordingly, the inventors’ allegedly inventive solution was to use a 10 tournament-specific identification number to derive pseudo-random numbers for gaming sessions— 11 that way, gameplay would be “different between tournaments, but not between game instances in a 12 given tournament.” 13 improvement of the ’564 claims in light of the prior art are similar to those courts have found 14 sufficient to withstand an eligibility challenge in other cases. See, e.g., BASCOM, 827 F.3d 15 at 1343–45 (vacating dismissal of patent claims where patent “describes its invention as combining 16 the advantages of the then-known filtering tools while avoiding their drawbacks”); Finjan, 879 F.3d 17 at 1304 (affirming denial of motion for judgment as a matter of law for patent ineligibility where 18 claimed invention “enables more flexible and nuanced virus filtering”). The Court must accept these 19 plausible factual allegations, which are supported by the claims and the specification, as true at this 20 stage. See Cellspin, 927 F.3d at 1317 (“While we do not read Aatrix to say that any allegation about 21 inventiveness, wholly divorced from the claims or the specification, defeats a motion to dismiss, 22 plausible and specific factual allegations that aspects of the claims are inventive are sufficient. . . . 23 As long as what makes the claims inventive is recited by the claims, the specification need not 24 expressly list all the reasons why this claimed structure is unconventional.”) (citing Aatrix, 882 F.3d 25 at 1128); ’564 Patent, 14:49–60. In light of these allegations, the Court finds that Skillz has 26 adequately pled that the claims are directed to a non-abstract improvement in computer technology. 27 See, e.g., McRO, 837 F.3d at 1314. 28 See id. (citing ’564 Patent, 15:5–7). These allegations of the specific AviaGames’ arguments to the contrary are unavailing. AviaGames argues that the functional 18 United States District Court Northern District of California 1 steps of the ’564 claims can be carried out by a human using pen and paper. See Motion, ECF No. 25 2 at 22. But the Court has no evidence in front of it on this point. AviaGames fails to identify a single 3 example of a pseudo-random number generation function—let alone one that can be performed by 4 a human. See Motion, ECF No. 25 at 22. AviaGames argues that the “pseudo-random number 5 generation” portion of the claims is an improper attempt to patent a mathematical algorithm. See 6 id. at 22–23. But it is a well-established principle of Federal Circuit caselaw that claims to an 7 otherwise patentable process can be patent eligible even if that process includes a mathematical 8 algorithm. See, e.g., In re Bd. of Trs. of Leland Stanford Junior Univ., 989 F.3d 1367, 1369 (Fed. 9 Cir. 2021); Koninklijke N.V. v. Gemalto M2M Gmbh, 942 F.3d 1143, 1145–46 (Fed. Cir. 2019). 10 And as outlined above, AviaGames has failed to show that the entirety of the ’564 claims are directed 11 to unpatentable abstract ideas—rather, it focuses only on certain elements of the claims in its abstract 12 idea analysis, to the exclusion of others. Accordingly, AviaGames has not adequately demonstrated 13 that the incorporation of a mathematical algorithm dooms the claims here. 14 AviaGames argues that the ’564 claims recite generic computer components used in their 15 conventional capacities. See id. at 22–23. According to AviaGames, the conventional components 16 of the ’564 claims include pseudo-random number seeds, which it argues based on a single prior art 17 reference in the intrinsic record were “well-known” for online digital gaming. 18 ECF No. 37 at 10 (citing U.S. Patent Application No. 2010/0022307 (“Steuer”)). But “[t]he mere 19 fact that something is disclosed in a piece of prior art, for example, does not mean it was well- 20 understood, routine, and conventional.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 21 2018). And the Court notes that the examiner considered the Steuer reference at length during 22 prosecution, and yet the examiner still allowed the ’564 claims and explicitly found they were patent 23 eligible under § 101. See Sacksteder Decl., ECF No. 25-1, Ex. E, August 23, 2016 Non-Final 24 Rejection ¶¶ 7, 12–17. AviaGames argues that the Court should not defer to the examiner’s 25 conclusions, but it fails to specify why—other than to say that the examiner’s decision predated 26 “most of the relevant Federal Circuit case law discussed above.” See Motion, ECF No. 25 at 25. 27 That is not enough. 28 See Reply, Accordingly, the Court finds that AviaGames has failed to show that the ’564 claims are 19 1 directed to patent ineligible abstract ideas at Alice step one. 2. Alice Step Two: Whether the Asserted Claims Contain an “Inventive Concept” Sufficient to Confer Patent Eligibility 2 3 4 Since the Court finds that the ’564 claims are not directed to abstract ideas under Alice step one, the Court does not need to reach Alice step two. See Uniloc, 957 F.3d at 1309 (“Because we 5 hold the claims patent eligible under Alice step one, we need not proceed to the second step of 6 Alice.”) (citing Visual Memory, 867 F.3d at 1262). 7 *** 8 Based on the above reasoning, the Court finds that AviaGames has not adequately shown 9 10 that the ’564 claims are directed to patent ineligible subject matter under § 101. Accordingly, the Court DENIES AviaGames’ Motion to Dismiss as to Skillz’s claim for infringement of the ’564 11 United States District Court Northern District of California Patent. 12 13 14 B. ’602 Patent AviaGames further asserts that the claims of the ’602 Patent are directed to abstract ideas. As a threshold matter, the parties dispute whether independent claim 1 of the ’602 Patent is 15 representative of the other claims. AviaGames argues that claim 1 can be treated as representative 16 of all claims because the other claims are “substantially similar and linked to the same abstract idea.” 17 See Motion, ECF No. 25 at 13 (citing Content Extraction, 776 F.3d at 1348). In response, Skillz 18 argues that claim 1 of the ’602 Patent is not representative of (1) claims 8 and 17, which require 19 using pseudo-random number seeds that do not depend on the client device so that an initial state of 20 the game is consistent for the plurality of participants or (2) claims 3–5, 12–14, and 21–23, which 21 require a video feed recording in-game actions and broadcasting the capture to other client devices 22 participating in a peer-to-peer event. See Opposition, ECF No. 33 at 16–17. 23 The Court agrees with Skillz. AviaGames has only provided conclusory argument in support 24 25 of claim 1 being representative of all other ’602 Patent claims. Accordingly, the Court will assess the eligibility of the ’602 claims in three buckets: (1) independent claim 1, which is representative 26 of claims 2, 6, 7, 9–11, 15–18, 20, and 24; (2) dependent claims 8 and 17; and (3) dependent claims 27 3–5, 12–14, and 21–23. See, e.g., Alice, 573 U.S. at 226 (“[T]he system claims are no different from 28 20 1 the method claims in substance.”); Planet Bingo, 576 Fed.Appx. at 1007 (“[T]here is no meaningful 2 distinction between the method and system claims[.]”). 3 1. Claims 1, 2, 6, 7, 9–11, 15–18, 20, and 24 4 Independent claim 1 of the ’602 Patent is directed to Skillz’s alleged invention whereby a 5 server provides a game to a client device only if the location of the client device, based on its GPS 6 or LPS geolocation system, meets certain geographic criteria. Claim 1 of the ’602 Patent recites the 7 following limitations: 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 1. A method for implementation by at least one data processor forming part of at least one computing system, the method comprising: receiving, by at least one data processor, data identifying a peer-topeer gaming event and comprising a request to register for the peerto-peer gaming event, the request originating from peer-to-peer gaming platform software stored in memory of a client and executing on the client, the client being remote from the data least one data processor, the peer-to-peer event being a geographically restricted peer-to-peer gaming competition having a plurality of participants each playing a skill-based digital game; associating, using the at least one data processor, the client with the peer-to-peer gaming event; receiving data characterizing a location of the client according to a geolocation system of the client, wherein the geolocation system of the client is a global positioning system (GPS) service or a local positioning system (LPS) utilizing beacons; and comparing the location of the client to a predefined geolocation of the peer-to-peer event to determine, using the at least one data processor, that the client satisfies a geographical location requirement of the peer-to-peer gaming event; and causing, using the at least one data processor, provision of the skillbased digital game to the client during the peer-to-peer gaming event, the skill-based digital game exchanging game data with a game server remote from the at least one data processor and the client. 24 25 ’602 Patent, Claim 1. As the Court found above, the parties do not dispute that claim 1 is 26 representative of claims 2, 6, 7, 9–11, 15–18, 20, and 24. The Court agrees. Claims 10 and 19 are 27 software and system versions of claim 1, and courts commonly consider similar claims to be 28 representative. See Planet Bingo, 576 Fed.Appx. at 1007 (“[T]here is no meaningful distinction 21 United States District Court Northern District of California 1 between the method and system claims[.]”); Alice, 573 U.S. at 226 (“[T]he system claims are no 2 different from the method claims in substance”); Front Row Techs., LLC v. NBA Media Ventures, 3 LLC, 204 F.Supp.3d 1190, 1265 (D.N.M. 2016) (“After comparing the various independent system 4 claims, the Court concludes that they are substantially similar[.]”), aff’d sub nom., Front Row Techs. 5 LLC v. MLB Advanced Media, L.P., 697 Fed.Appx. 701 (Fed. Cir. 2017). Further, the remaining 6 claims pertain to secondary aspects of a game or gaming platform. See ’602 Patent, Claims 2, 9, 7 11, 18, and 20 (specifying number of participants in a game or event); id., Claims 6, 15, and 24 8 (targeted advertising related to events); id., Claims 7 and 16 (method for transmitting monetary 9 prizes for games); Elec. Power, 830 F.3d at 1352 (considering claim representative where plaintiff 10 did not “present[] any meaningful argument for the distinctive significant of any claim limitations 11 other than those included in” the representative claim); Content Extraction, 776 F.3d at 1348. 12 Claim 1 of the ’602 Patent primarily pertains to a remote server that only provides game 13 content to a particular client device if that client device’s geolocation meets certain criteria. In the 14 Complaint, Skillz alleges that the alleged invention of Claim 1 could be used to restrict peer-to-peer 15 gaming events such that users can only participate if they are at certain geographical locations. See 16 Complaint, ECF No. 1 ¶ 64. For example, Skillz alleges that using the alleged invention of ’602 17 Patent, peer-to-peer gaming events can be geographically restricted such that if they involve cash 18 games, they can be restricted “to comply with local laws and regulations.” Id. ¶ 64; see also id. ¶ 19 30. Skillz further alleges that this was an unconventional, novel technological solution to an issue 20 arising specifically in the context of electronic sports. See id. ¶¶ 62, 65. Skillz alleges that its 21 invention in Claim 1 was novel because “it makes it harder for users to trick the system to circumvent 22 geographical restrictions.” Id. ¶ 65. According to Skillz, other approaches for determining user 23 location—for example, based on user-provided information (like a home address) or IP addresses— 24 could be falsified or spoofed using a proxy, whereas real-time location systems like GPS or LPS are 25 harder to circumvent. See id.; see also id. ¶ 66. 26 AviaGames argues that Claim 1 is invalid because (1) under Alice step one, Claim 1 is 27 directed to the abstract idea of comparing a participant’s location to the location of an event and 28 limiting event participants to those within the predefined geographical boundary and (2) under Alice 22 1 step two, Claim 1 adds no inventive concept because it recites generic computing elements and no 2 improvement in the functioning of a computer. See Motion, ECF No. 25 at 10–20. In response, 3 Skillz argues that (1) under Alice step one, Claim 1 is directed to an improvement in computing 4 devices, not an abstract idea, and AviaGames overgeneralizes the claims and (2) under Alice step 5 two, Claim 1 has an inventive concept in that it is an unconventional solution rooted in computer 6 technology. See Opposition, ECF No. 33 at 22–25. The Court will address each issue in turn. 7 a. Alice Step One: Whether the Claims are Directed to an Abstract Idea 8 9 AviaGames argues that the “focus” of the asserted claims of the ’602 Patent is “limiting event participation based on location.” Motion, ECF No. 25 at 10. AviaGames argues that this is 10 an abstract idea, because it has long been used for live sports broadcasts (blacking out home market 11 United States District Court Northern District of California when a stadium fails to sell enough tickets to a game) and in examples involving activity 12 participation restrictions based on geographic location, like hunting and fishing zones and speed 13 limits. See id. at 10. AviaGames further argues that the specification makes clear that the central 14 15 focus of the ’602 Patent is to “ensure the event participants are co-located,” which has long been a practice regarding live sports events. See id. at 11. Additionally, AviaGames argues that the ’602 16 Patent claims do not improve a technological process, because they do not claim a novel way of 17 18 achieving the purported advancement and they merely recite functional objectives like “receiving,” “comparing,” etc. See id. at 12. AviaGames argues that the ’602 claims are directed to abstract 19 ideas in light of caselaw finding claims patent ineligible that are directed to (1) managing games; 20 (2) managing access to information; and (3) data comparison that can be performed by the human 21 mind or an algorithm. See id. at 13–15. 22 Skillz disagrees, arguing that the claims of the ’602 Patent embody a specific improvement 23 to digital games, because using GPS or LPS to determine client location rather than user profile 24 information or IP addresses like the prior art allows remote gaming tournaments with geographical 25 restrictions that cannot be easily circumvented by users. See Opposition, ECF No. 33 at 15, 17–18. 26 Skillz argues that AviaGames overgeneralizes the claims by ignoring the GPS or LPS requirement— 27 particularly since it was added during prosecution to overcome a § 101 rejection—and the 28 23 United States District Court Northern District of California 1 requirement that various claimed elements are physically remote. See id. at 18–19. Further, Skillz 2 argues that AviaGames assumes that the claimed gaming tournaments only have a single location. 3 See id. at 19. Taking into account the specific technical limitations of the ’602 claims, Skillz argues 4 that AviaGames’ real-world analogies and caselaw are inapposite. See id. at 19–22. 5 The Court agrees with AviaGames that claim 1 of the ’602 Patent is directed to an abstract 6 idea. Claim 1 merely recites the familiar concepts of gathering data, communicating it, comparing 7 it, and managing access to further data. Skillz argues that such an analysis ignores certain technical 8 details of the claims, like the GPS or LPS requirements and the physical remoteness of various 9 components. But the Court finds that the level of abstraction it has applied to the claims is consistent 10 with what the Federal Circuit and other courts have applied. See Elec. Power, 830 F.3d at 11 1351–1352, 1354 (finding claims that included limitation of “receiving data from other power 12 system data sources, the other power system data sources comprising at least one of transmission 13 maps, power plant locations, EMS/SCADA systems” to be directed to abstract idea of “gathering 14 and analyzing information of a specified content, then displaying the results”); Content Extraction, 15 776 F.3d at 1345, 1347 (claims including the limitation “receiving output representing a diversity 16 of types of hard copy documents from an automated digitizing unit” were directed to “abstract idea 17 of 1) collecting data, 2) recognizing certain data with the collected data set, and 3) storing that 18 recognized data in a memory”); X One, Inc. v. Uber Techs., Inc., No. 16–CV–06050–LHK, 19 239 F.Supp.3d 1174, 1190–93 (finding claims reciting GPS directed to an abstract idea). Skillz can 20 only point to inapposite district court cases in support of its contention that the claims are directed 21 more narrowly. See, e.g., SEMICAPS Pte Ltd. v. Hamamatsu Corp., 393 F.Supp.3d 802, 815 22 (N.D. Cal. Nov. 6, 2019) (distinguishing claims Elec. Power, 830 F.3d 1350, as “accumulating 23 existing data,” whereas claims at issue “improved detection sensitivity”) (emphasis in original)). 24 So characterized, the “character as a whole” of claim 1 of the ’602 Patent is an abstract idea. 25 The Federal Circuit has held that claimed steps of gathering, communicating, comparing, and 26 managing access to data are directed to abstract ideas. See PersonalWeb, 8 F.4th at 1317 (steps of 27 comparing data against other data and controlling access to data items are abstract); Elec. Power, 28 830 F.3d at 1353 (“[W]e have treated collecting information, including when limited to particular 24 United States District Court Northern District of California 1 content (which does not change its character as information), as within the realm of abstract ideas.”); 2 Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1347 (Fed. Cir. 2019) (“[T]he 3 broad concept of communicating information wirelessly, without more, is an abstract idea.”). 4 Further, courts have found claims pertaining to location tracking to be directed to abstract ideas. 5 See X One, 239 F.Supp.3d at 1190–93; Intellectual Ventures I LLC v. Capital One Bank (USA) 6 (“Intellectual Ventures II”), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (“There is no dispute that 7 newspaper inserts had often been tailored based on information known about the customer—for 8 example, a newspaper might advertise based on the customer’s location. Providing this minimal 9 tailoring—e.g., providing different newspaper inserts based upon the location of the individual—is 10 an abstract idea.”); Elec. Comm. Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1181 11 (Fed. Cir. 2020) (“Two of the six identified functions—monitoring the location of a mobile thing 12 and notifying a party in advance of arrival of that mobile thing—amount to nothing more than the 13 fundamental business practice of providing advance notification of the pickup or delivery of a 14 mobile thing.”). Skillz quibbles with AviaGames’ cited caselaw. See Opposition, ECF No. 33 at 15 20–21. But the abstractness of similar claimed steps cannot be denied—it is supported by a wide 16 array of Federal Circuit caselaw. See, e.g., Elec. Power, 830 F.3d at 1353–54 (collecting cases). 17 The specification of the ’602 Patent supports the Court’s finding. The specification indicates 18 that the ’602 claims are directed to restricting access to gaming events based on a user’s location. 19 See ’602 Patent, 4:13–17 (“The event can be for a defined location and time. For example, an event 20 may occur at or during a specific time and at a designated location or venue.”); 4:62–5:2 (“Event 21 organizers and venues can benefit from the presence of the participant[.]”); id., 3:1–15 (“Social 22 aspects of live events can be ensured by imposing location restrictions (geographic and/or temporal) 23 and the current subject matter can enforce those restrictions to ensure that event participants are co- 24 located for the event.”); id., 3:64–4:11 (“Live events may be location-based, . . . foster social 25 interactions among players, increase game engagement, and/or build the gaming community.”); id., 26 4:62–5:2. The specification provides scant disclosures related to GPS or LPS. See id., 9:36–39 27 (“Client 210i, uses built-in geolocation system (e.g., geolocation systems/devices utilizing GPS, 28 wireless wide area network (WWAN), and WIFI technologies) to determine the client’s location.”); 25 United States District Court Northern District of California 1 id., 2:3–7, 4:58–62. 2 AviaGames provides ample real-world examples indicating that limiting event participation 3 by location is a longstanding practice and not a technological solution to a technological problem. 4 See Motion, ECF No. 25 at 10 (citing “geographic access limitations placed on live sport broadcasts 5 that has been in place for decades” and “hunting and fishing zones, speed limits, rolling a shopping 6 cart in a grocery store parking lot, participating in state lotteries, alcohol purchases on certain days 7 at varying ages depending on the state in which the person is located, and purchasing items without 8 sales tax”); id. at 11 (citing practices of “live sport event providers for centuries” in requiring 9 participants to gather to participate in a gaming event). Skillz argues that AviaGames assumes that 10 claim 1 of the ’602 Patent requires users to be co-located, which is not supported by the claims. See 11 Opposition, ECF No. 33 at 19. But AviaGames’ real-world examples are not so limited. For 12 example, state lotteries and hunting and fishing zones could require that an individual be located in 13 one of many locations. See Motion, ECF No. 25 at 10. Based on AviaGames’ examples, the Court 14 finds that it is not plausible that claim 1 of the ‘602 Patent provides a technological solution to a 15 technological problem. The problem of people saying they are where they are not, when access to 16 plenty of events and real-world benefits (lotteries, live sports broadcasts, legality of hunting and 17 fishing) are based around being in a particular location, is not a new or technological problem. 18 Skillz argues that claim 1 of the ’602 Patent is directed to an improvement in computer 19 functionality based on the GPS or LPS limitation. The Court disagrees. Prior art in the intrinsic 20 record suggests that GPS was commonplace, including in the context of gaming. 21 U.S. Patent Application No. 2012/0028718, ¶ 0097 (cited on face of ’602 Patent); 22 U.S. Patent No. 8,683,272 (same). While “[t]he mere fact that something is disclosed in a piece of 23 prior art, for example, does not mean it was well-understood, routine, and conventional,” 24 Berkheimer, 881 F.3d at 1369, the way the ’602 specification discusses GPS and LPS technology 25 further indicates that the inventors of the ’602 Patent incorporated generally available GPS or LPS, 26 that these were conventional technologies, and the ’602 claims do not use them for anything other 27 than their generic function of determining location. See ’602 Patent, 3:24–27 (“The current subject 28 matter can be implemented using a mobile device, such as a tablet or smart phone and which can be 26 See United States District Court Northern District of California 1 standalone and/or connected to a television, projector, and/or other display device.”); id., 9:36–39 2 (“Client 210i, uses built-in geolocation systems (e.g., geolocation systems/devices utilizing GPS, 3 wireless wide area network (WWAN), and WIFI technologies) to determine the client’s location.”); 4 id., 4:58–62 (referencing “global positioning system (GPS) service or a local positioning system 5 (LPS) utilizing beacons” with no elaboration). After all, “positioning” is literally in the name of 6 these technologies (“Global Positioning System” and “Local Positioning System”). It is therefore 7 implausible that the claimed use of these technologies—to determine location—was anything other 8 than conventional. 9 Accordingly, the Court finds Skillz’s cases, which found that claims were not directed to 10 abstract ideas where they disclosed a specific improvement in computer technology, are not 11 persuasive. Those cases involved improvements in the functionality of a computer itself—not 12 merely the application of well-known computer technology to a particular technology area. See 13 Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) (“[T]he method of claim 14 1 employs a new kind of file that enables a computer security system to do things it could not do 15 before.”); Ancora, 908 F.3d at 1348–49 (claims were directed to a “non-abstract computer- 16 functionality improvement” where they relied on “specific and unique characteristics of certain 17 aspects of [BIOS memory] that the patent asserts . . . were not previously used in the way now 18 claimed”); McRO, 837 F.3d 1299, 1313 (Fed. Cir. 2016) (“[T]he claimed improvement here is 19 allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in 20 animated characters’ that previously could only be produced by human animators.”). 21 To the extent Skillz is asserting that the use of GPS or LPS was an improvement in the 22 context of mobile gaming, the Court considers such a narrowing to a particular technological field 23 to be insufficient to convert the use of GPS or LPS into a non-abstract improvement in computer 24 technology. See, e.g., Fitbit, Inc. v. AliphCom, No. 16–cv–00118–BLF, 2017 WL 819235, at *10 25 (N.D. Cal. Mar. 2, 2017) (“While it is possible that claim 20 provides certain benefits to the field of 26 portable activity monitoring, this does not mean that it constitutes a ‘specific asserted improvement 27 in [portable activity monitoring device] capabilities’—the intermediated settlement scheme of Alice 28 likely provided benefits to the financial world, the binary conversion method of Gottschalk likely 27 United States District Court Northern District of California 1 provided benefits to the computer world, and the same can likely be said for many other patent- 2 ineligible claims.”); In re TLI Comms. LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) 3 (“[A]lthough the claims limit the abstract idea to a particular environment—a mobile telephone 4 system—that does not make the claims any less abstract for the step 1 analysis.”); Affinity Labs v. 5 DirecTV (“Affinity Labs II”), 838 F.3d 1253, 1258–59 (Fed. Cir. 2016) (“All that limitation does is 6 to confine the abstract idea to a particular technological environment—in this case, cellular 7 telephones. The Supreme Court and this court have repeatedly made clear that merely limiting the 8 field of use of the abstract idea to a particular existing technological environment does not render 9 the claims any less abstract.”); Intellectual Ventures II, 792 F.3d at 1366 (“An abstract idea does not 10 become nonabstract by limiting the invention to a particular field of use or technological 11 environment, such as the Internet.”) (citing Alice, 573 U.S. at 223). 12 Skillz further argues that the ’602 claims “do not preempt all processes for achieving the 13 claimed result.” See Opposition, ECF No. 33 at 17–18. But AviaGames does not raise preemption 14 as an issue regarding the ’602 claims in its Motion. See Motion, ECF No. 25. And the Federal 15 Circuit has held that a lack of preemption is not sufficient to show that claims are directed to patent- 16 eligible subject matter. See Ariosa, 788 F.3d at 1379 (“While preemption may signal patent 17 ineligible subject matter, the absence of complete preemption does not demonstrate patent 18 eligibility.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) 19 (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in 20 the e-commerce setting do not make them any less abstract.”); see also ChargePoint, 920 F.3d at 21 769 (“Even a specification full of technical details about a physical invention may nonetheless 22 conclude with claims that claim nothing more than the broad law or abstract idea underlying the 23 claims, thus preempting all use of that law or idea.”). Further, the Court notes that the ’602 Patent 24 does not support that the use of GPS or LPS is as “specific” as Skillz asserts, including by providing 25 a non-limiting list of generic hardware components for implementing LPS. See ’602 Patent, 4:58–62 26 (referencing a “local position system (LPS) utilizing beacons (for example, wireless routers, base 27 stations, low-power dedicated beacons, and the like).”). 28 Accordingly, the Court finds that AviaGames has adequately shown that claim 1 of the ’602 28 1 Patent is directed to abstract ideas. The Court continues to Alice step two. b. Alice Step Two: Whether the Asserted Claims Contain an “Inventive Concept” Sufficient to Confer Patent Eligibility 2 3 The second step of Alice considers whether the claims contain an inventive step that 4 transforms the unpatentable abstract idea into patentable subject matter. Alice, 573 U.S. at 217. The 5 parties dispute whether the claim 1 of the ’602 Patent provides an inventive concept under Alice 6 step two. 7 AviaGames argues that the claims recite only generic computing elements used according 8 to their conventional, routine functions, including generic processors, memories, and mobile 9 devices, along with generic networks that conventionally exchange data. See Motion, ECF No. 25 10 at 15–16. Accordingly, AviaGames argues that the claims are not directed to an improvement in 11 United States District Court Northern District of California the functioning of a computer like courts require at Alice step two. See id. at 16. Further, 12 13 AviaGames argues that although the examiner found the ’602 claims were patent eligible, the Court should depart from the examiner’s reasoning, because it was improperly based on the idea that 14 claims directed to physical elements must be patent eligible, which the caselaw does not support. 15 16 17 See id. at 18–19. Additionally, AviaGames argues that Skillz’s allegations in the Complaint regarding the unconventionality of the ’602 claims and the technical problems they solved are not plausible, because they are unsupported by the ’602 Patent itself. See id. at 19–20. 18 In response, Skillz argues that AviaGames has failed to show the lack of an inventive concept 19 20 in claim 1 of the ’602 Patent. See Opposition, ECF No. 33 at 22–25. Skillz argues that AviaGames is asking the Court to disregard Skillz’s factual allegations, which is improper at the Rule 12(b)(6) 21 stage. See id. at 22. Further, Skillz argues that AviaGames fails to consider the claim elements of 22 23 24 25 the ’602 as an ordered combination, as the Federal Circuit requires. See id. at 22–23 (citing BASCOM, 827 F.3d at 1349–50). Skillz analogizes the ’602 claims to those found patent eligible in DDR, because they provide an unconventional solution that is “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of [digital games].” See 26 id. at 23 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014)). 27 Further, Skillz analogizes the ’602 claims to those found eligible in BASCOM, where the Court 28 29 United States District Court Northern District of California 1 found an inventive concept in the “non-conventional and non-generic arrangement of known, 2 conventional pieces” in order to “overcome the problem of ‘susceptib[ility] to circumvention by the 3 user.’” See id. at 23–24 (citing BASCOM, 827 F.3d at 1348, 1350). At the very least, Skillz argues 4 that there are disputes of fact as to (1) the conventionality of the ’602 claims and (2) claim 5 construction that render AviaGames’ Motion premature. See Opposition, ECF No. 33 at 24–25. 6 The Court agrees with AviaGames. Claim 1 of the ’602 Patent is directed to generic 7 technology used in its conventional capacity: for example, a “processor” “receiv[es] . . . data”; a 8 “geolocation system” provides “data characterizing a location of the client”; a “digital game” 9 “exchang[es] game data with a [remote] game server.” ’602 Patent, Claim 1; see also id. 10 13:4–14:40; Yu, 1 F.4th at 1045 (no inventive concept where “the claimed hardware configuration 11 itself is not an advance”) (emphasis omitted). Skillz does not assert that it invented any of these 12 components, and the specification does not describe them as inventive. 13 The Court further agrees with AviaGames that it is appropriate to depart from the examiner’s 14 findings regarding eligibility of the ’602 claims. See Motion, ECF No. 25 at 18–19. The prosecution 15 history of the ’602 Patent indicates that the examiner found the addition of physical elements to the 16 ’602 claims to be sufficient to confer patent eligibility. See Sacksteder Decl., ECF No. 25-1, Ex. D 17 (“Claims may be amended to include the physical elements of claim 3.”). Courts have repeatedly 18 found otherwise. See, e.g., Chamberlain, 935 F.3d at 1348 (“[T]he mere physical nature of . . . 19 claim elements (e.g., controller, interface, and wireless data transmitter) is not enough to save the 20 claims from abstractness, where the claimed advance is directed to the wireless communication of 21 status 22 898 F.3d at 1169–70 (“Some of the claims require various databases and processors, which are in 23 the physical realm of things. But it is clear, from the claims themselves and the specification, that 24 these limitations require no improved computer resources InvestPic claims to have invented, just 25 already available computers, with their already available basic functions, to use as tools in executing 26 the claimed process.”); TLI, 823 F.3d at 611 (“While claim 17 requires concrete, tangible 27 components such as ‘a telephone unit’ and a ‘server,’ the specification makes clear that the recited 28 physical components merely provide a generic environment in which to carry out the abstract idea information using off-the-shelf technology 30 for its intended purpose.”); SAP, United States District Court Northern District of California 1 of classifying and storing digital images in an organized manner.”) 2 It is further worth noting that Skillz alleges that in the prior art, the location determining step 3 could be done by a human providing his or her location, but GPS and LPS are better suited because 4 they make it harder for a user to circumvent geographical restrictions. See Opposition, ECF No. 33 5 at 22–23 (citing Complaint, ECF No. 1 ¶ 65). But the Federal Circuit has expressly indicated that 6 mere accuracy or efficiency gains resulting from the automation of human activity via a computer 7 are not sufficient to render claims patent eligible. See OIP, 788 F.3d at 1363 (“[R]elying on a 8 computer to perform routine tasks more quickly or more accurately is insufficient to render a claim 9 patent eligible.”); Data Engine, 906 F.3d at 1013 (“The mere automation of this process does not 10 negate its abstraction.”); PersonalWeb, 8 F.4th at 1319 (finding that claims fail Alice step two where 11 they “merely ‘automate or otherwise make more efficient traditional … methods.’”) (quoting OIP, 12 788 F.3d at 1363); Credit Acceptance Corp. v. Westlak Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) 13 (“Our prior cases have made clear that mere automation of manual processes using generic 14 computers does not constitute a patentable improvement in computer technology.”); Cellspin, 15 927 F.3d at 1316 (“But the need to perform tasks automatically is not a unique technical problem.”). 16 The Court acknowledges that Skillz also alleges that the use of GPS or LPS makes it harder for users 17 to circumvent geographic restrictions, which is analogous to BASCOM. See BASCOM, 827 F.3d at 18 1348 (finding claims patent eligible that caused computer system to be “less susceptible to 19 circumvention by the user”). However, the Court also notes that BASCOM did not involve 20 automation of human activity, whereas claim 1 of the ’602 Patent does. 21 Skillz argues that AviaGames fails to consider claim 1 of the ’602 Patent “as an ordered 22 combination,” citing BASCOM. See Opposition, ECF No. 22–23 (citing BASCOM, 827 F.3d 23 at 1349–50). But Skillz has failed to show what about the ordered combination of the ’602 claims 24 is an inventive concept. Its factual allegations focus primarily on the use of a mobile device’s GPS 25 or LPS location to determine whether the device’s location meets certain criteria. See Complaint, 26 ECF No. 1 ¶ 65. Otherwise, the claims simply situate this technology in a generic server-client 27 network environment and indicate that the GPS or LPS location is used to determine whether or not 28 to provide game content to the device. Courts have found the situation of claims in a computer 31 United States District Court Northern District of California 1 networking environment or the siting of claims in a particular area of technology to be insufficient 2 to provide an inventive concept for purposes of Alice step two. See BSG, 899 F.3d at 1291 (“As a 3 matter of law, narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.”); 4 Ultramercial, 772 F.3d at 716 (“Narrowing the abstract idea of using advertising as a currency to 5 the Internet is an attempt to limit the use of the abstract idea to a particular technological 6 environment, which is insufficient to save a claim.”) (internal quotations and alterations omitted). 7 Accordingly, the Court disagrees with Skillz that the “ordered combination” of the elements of 8 claim 1 of the ’602 Patent is sufficient to provide an inventive concept. 9 Skillz argues that by finding a lack of an inventive concept in the ‘602 claims, the Court 10 must improperly ignore the factual allegations to the contrary that Skillz provides in the Complaint. 11 See Opposition, ECF No. 33 at 22. Further, Skillz argues that such allegations are at least sufficient 12 to raise a fact issue as to the conventionality of the ’602 claims. See id. at 24–25. But the Court 13 does not need to accept “allegations that are merely conclusory, unwarranted deductions of fact, or 14 unreasonable inferences.” In re Gilead, 536 F.3d at 1055. And the Court finds that in light of the 15 intrinsic record, the allegations Skillz cites in support of an inventive concept in the ’602 claims are 16 conclusory or implausible. See Opposition, ECF No. 33 at 22–23 (citing Complaint, ECF No. 1 ¶¶ 17 63–65). 18 unconventional, innovative, or an improvement are implausible in light of the intrinsic record, which 19 indicates that these technologies were conventional and that the ’602 claims recite using them for 20 generic location-determining functions. 21 narrowed its claims to specific database structures, those structures are well-understood and 22 conventional. Such narrowing does not supply an inventive concept.”). Accordingly, while the 23 Court acknowledges caselaw like Cellspin advising courts that “specific, plausible factual 24 allegations” are sufficient to overcome a motion to dismiss on § 101 grounds, the Court finds that 25 Skillz’s allegations supporting the alleged presence of an inventive concept in the ’602 claims are 26 not plausible, and therefore not sufficient to create a fact issue or otherwise defeat AviaGames’ 27 Motion. Cellspin, 927 F.3d at 1317–18. 28 As the Court found above, Skillz’s allegations that the use of GPS or LPS was See BSG, 899 F.3d at 1291 (“Although BSG Tech Skillz primarily points to the DDR and BASCOM cases in support of its contention that 32 United States District Court Northern District of California 1 claim 1 of the ’602 Patent provides an inventive concept. See Opposition, ECF No. 33 at 22–24 2 (citing DDR, 773 F.3d at 1257–59; BASCOM, 827 F.3d at 1348, 1350). But neither case strikes the 3 Court as particularly applicable to the ’602 claims. DDR pertains to claims “necessarily rooted in 4 computer technology,” and the Court found above that it is not plausible to consider the ’602 claims 5 to be “necessarily rooted in computer technology.” See DDR, 773 F.3d at 1257; see also X One, 6 239 F.Supp.3d at 1191. 7 arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350. But Skillz has failed to 8 plausibly allege how the “arrangement” of the ’602 claims is anything other than a generic computer 9 network that uses conventional GPS or LPS technology for its generic location-determining 10 function. Accordingly, the Court is not persuaded that DDR or BASCOM indicate that Skillz has 11 shown the presence of an inventive concept in the ’602 claims. Further, BASCOM pertains to a “non-conventional and non-generic 12 Skillz argues that AviaGames’ Motion should be denied because claim construction has not 13 yet taken place. See Opposition, ECF No. 33 at 25. But Skillz fails to raise a single claim 14 construction dispute or propose a single construction, instead opting to list several terms that 15 AviaGames “oversimplif[ies]” or for which AviaGames “ignores narrower claim constructions.” 16 See id. This is not sufficient to raise fact issues that prevent the Court from ruling on patent 17 eligibility at the pleading stage. See Front Row Techs., 204 F.Supp.3d at 1238–45 (ruling on subject 18 matter eligibility before claim construction where “the parties have not identified any disputed claim 19 constructions that prevent the Court from addressing the § 101 merits at this stage”). 20 Accordingly, the Court finds that Skillz has failed to show an inventive concept in claim 1 21 of the ’602 Patent. Since the Court finds that the claim 1 is directed to abstract ideas without an 22 inventive concept to transform the unpatentable abstract ideas into patent eligible subject matter, the 23 Court finds that AviaGames has shown that claim 1 is directed to patent ineligible subject matter. 24 Further, the Court finds that claims 2, 6, 7, 9–11, 15–18, 20, and 24 of the ’602 Patent are also 25 directed to patent ineligible subject matter, since claim 1 is representative of these claims, and Skillz 26 does not specifically argue that any of these claims are directed to patent eligible subject matter. 27 28 2. Claims 3–5, 12–14, 21–23 – Recording In-Game Actions Claims 3–5, 12–14, and 21–23 (“Broadcasting Claims”) pertain to taking a video recording 33 1 of a user’s screen during gameplay and broadcasting it to other client devices participating in a 2 particular gaming event. Claim 3 of the ’602 Patent recites the following: 3 4 5 6 7 8 3. The method of claim 1, further comprising: generating, using the at least one data processor, a video feed recording in-game actions by, using the peer-to-peer gaming platform, capturing an interface display space of the skill-based digital game and broadcasting the capture to peer-to-peer gaming platforms of one or more additional clients participating in the peerto-peer event. Claim 4 of the ’602 Patent recites the following: 9 10 United States District Court Northern District of California 11 12 4. The method of claim 3, wherein generating the video feed includes simultaneously broadcasting the capture and a second capture of ingame actions of another client to enable comparison of the in-game actions between participants of the peer-to-peer gaming event. Claim 5 of the ’602 Patent recites the following: 13 14 15 5. The method of claim 4, wherein the another client is selected based on a ranking of performance of the second client in the peer-to-peer gaming competition. 16 Claims 12 to 14 and 21 to 23 of the ’602 Patent recite materially the same limitations as 17 Claims 3 to 5. Claims 12 and 21 recite the same limitations as Claim 3 in the context of software 18 and system claims. Claims 4, 13, and 22 recite broadcasting two client device’s screens to another 19 client device. And Claims 5, 14, and 23 recite a method for selecting which client device’s screen 20 to broadcast. The Court finds that Claim 3 of the ’602 Patent is representative of Claims 4, 5, 12 to 21 14, and 21 to 23. See Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d 1376, 1385 22 (Fed. Cir. 2018) (“While these claims encompass both methods and systems, we find there to be no 23 distinction between them for § 101 purposes, as they simply recite the same concept.”) (citing Alice, 24 573 U.S. at 226). Neither party appears to dispute this. 25 In the Complaint, Skillz alleges that maintaining electronic records of each competitor’s in- 26 game actions and making them available to other competitors serves to effectively minimize 27 cheating. See Complaint, ECF No. 1 ¶ 30. Accordingly, Skillz alleges that claims 3–5, 12–14, and 28 21–23 are directed to a novel, unconventional, and technological solution to an issue arising 34 1 specifically in the context of electronic sports. See id. ¶¶ 66–67. The ’602 specification includes 2 several disclosures relevant to Claim 3: 3 The ’602 specification states that outside of bars dedicated to eSports, venues for eSporting 4 events “often lack sufficient network connections for gaming consoles or computer systems 5 used in the competition. While many bars have television, often these bars and other venues 6 lack appropriate audio/video and related equipment, (such as A/V connectors, adaptors, 7 power outlets, power cords, and the like) to display event participant game-play and/or 8 connect to gaming consoles and/or computing systems.” ’602 Patent, 1:31–38. 9 United States District Court Northern District of California • • The ’602 Patent states that “[a] video feed recording in-game actions can be generated by, 10 using the peer-to-peer gaming platform, capturing an interface display space of the skill- 11 based digital game and broadcasting the capture to peer-to-peer gaming platforms of one or 12 more additional clients participating in the peer-to-peer event. Generating the video feed 13 can include simultaneously broadcasting the capture and a second capture of in-game 14 actions of another client to enable comparison of the in-game actions between participants 15 of the peer-to-peer gaming event. The another client can be selected based on a ranking of 16 performance of the second client in the peer-to-peer gaming competition.” ’602 Patent, 17 2:7–18. 18 • The ’602 Patent states that “some example implementations of the current subject matter 19 can provide for viewing of event participant gameplay without requiring special 20 audio/visual equipment, connections, adaptors, and the like. The viewing may take place at 21 a venue without interfering with existing patrons who are not participating in the event (e.g., 22 other venue customers). The viewing may be customized for each event participant, which 23 can increase participant engagement and enjoyment. The current subject matter can be 24 implemented using a mobile device, such as a tablet or smart phone and which can be 25 standalone and/or connected to a television, projector, and/or other display device.” ’602 26 Patent, 3:16–27. 27 28 • The ’602 Patent includes details regarding a “[v]ideo replay engine,” which allows video recordings of user gameplay “to be streamed live and stored for all game entries which can 35 1 later be verified for authenticity (e.g., anti-cheating) and also reviewed live by an event host 2 for entertainment, information, and to increase engagement of players.” Id., 6:3–9. The 3 ’602 Patent further provides details regarding example implementations involving capturing 4 screen shots of a graphical user interface “at an appropriate rate,” capturing open graphics 5 library layers, or capturing data in a pixel buffer. Id., 6:9–23. The ’602 Patent states that 6 “other implementations are possible.” Id., 6:23. Additionally, the ’602 Patent discloses that 7 the video capture can include recording metadata like time of capture, location based data, 8 and user input. See id. 6:24–31. United States District Court Northern District of California 9 • The ’602 Patent discloses details about generating a live broadcast of captured video 10 between user client devices, such that “an audience (e.g., other participants) can view a 11 participant’s game play without requiring existing audio/video equipment in a venue.” Id., 12 6:32–42. The ’602 Patent discloses that this live video feed functionality can allow 13 participants to view their gameplay side-by-side with another game, and can be controlled 14 by an event host. Id., 6:43–61. 15 • The ’602 Patent describes details of a user interface for streaming event videos. See id., 16 9:1–21, 11:28–46. 17 The parties dispute whether claims 3–5, 12–14, and 21–23 are directed to patent eligible 18 subject matter. The Court considers representative claim 3 under the two-step Alice framework 19 below. 20 a. Alice Step One: Whether the Claims are Directed to an Abstract Idea 21 Skillz argues that the Broadcasting Claims are not directed to an abstract idea because they 22 “improve . . . capturing in-game actions.” Opposition, ECF No. 33 at 16. Skillz argues that the 23 Complaint and the ’602 specification identify the technological problem of participants’ ability to 24 cheat at peer-to-peer gaming events, and the Broadcasting Claims provide a specific and substantial 25 improvement over prior anti-cheating methods in broadcasting the display of client devices to other 26 client devices. See id. at 17. In response, AviaGames argues that using video recording to prevent 27 cheating is an ordinary function for mobile devices and does not make the claims patent eligible, 28 citing to various pieces of prior art cited on the face of the ’602 Patent that disclose similar anti36 United States District Court Northern District of California 1 cheating methods. See Reply, ECF No. 37 at 6. 2 The Court agrees with AviaGames. Skillz has not shown that the Broadcasting Claims are 3 directed to a specific improvement in computer technology. Because the claims are directed to 4 broad functions—“generating,” “recording,” “capturing,” and “broadcasting”—without any 5 technological improvement for performing those functions, they are not directed to a specific 6 technological improvement. See Interval Licensing, 896 F.3d at 1346. Further, while Skillz pleads 7 that “[t]he solution implemented by the ’602 Patent provides a specific and substantial improvement 8 over prior anti-cheating methods by generating an electronic record of the peer-to-peer gaming 9 event,” the Court does not need to accept such conclusory allegations as true. In re Gilead, 536 10 F.3d at 1055. Neither the Complaint nor the specification provide any information about prior art 11 approaches to anti-cheating. Further, AviaGames points to prior art in the intrinsic record that 12 suggests that recording the display of a client device for recording and streaming to other devices 13 was well-established in the prior art. See, e.g., U.S. Patent Application 2008/0234047A1 at [0060]; 14 U.S. Patent Application 2009/0208181 ¶¶ 0002, 0006, claim 1 (cited in the ’602 Patent); U.S. Patent 15 No. 6,699,127, 3:59–4:10 (same). While a prior art reference alone is not sufficient to indicate that 16 a technology was conventional, Berkheimer, 881 F.3d at 1369, this Court considers AviaGames’ 17 multiple prior art references on the face of the patent to be sufficient to render Skillz’s assertion that 18 the Broadcasting Claims were directed to a specific improvement in computer technology to be an 19 unreasonable inference at the pleading stage. In re Gilead, 536 F.3d at 1055. 20 Contrary to Skillz’s arguments, the Court finds that the Broadcasting Claims are directed to 21 the abstract idea of storing, communicating, and displaying data. Courts have consistently found 22 similar claims to be directed to abstract ideas. Interval Licensing, 896 F.3d at 1345 (“[T]he 23 collection, organization, and display of two sets of information on a generic display device is 24 abstract[.]”); Affinity Labs II, 838 F.3d at 1258 (claims directed to abstract idea of “providing out- 25 of-region access to regional broadcast content”); Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 26 1084, 1092 (Fed. Cir. 2019) (finding claims for receiving and displaying information directed to 27 abstract ideas); TLI, 823 F.3d at 611 (finding claims directed to “the abstract idea of classifying and 28 storing digital images in an organized manner”); Content Extraction, 776 F.3d at 1347 (“The 37 United States District Court Northern District of California 1 concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans 2 have always performed these functions.”); Yu, 1 F.4th at 1042 (claims directed to “the abstract idea 3 of taking two pictures (which may be at different exposures) and using one picture to enhance the 4 other in some way”); see also Bozeman, 955 F.3d at 979 (claims reciting process involving receiving 5 data and comparing it to other data to detect fraud were directed to abstract idea). 6 Further, the Broadcasting Claims are drafted at a high level—reciting “generating,” 7 “recording,” “capturing,” and “broadcasting” steps—similar to claims that courts have previously 8 found to be directed to abstract ideas. See OIP, 788 F.3d at 1363; Univ. of Fla., 916 F.3d at 1368; 9 Affinity Labs II, 838 F.3d at 1258 (“There is nothing in claim 1 that is directed to how to implement 10 out-of-region broadcasting on a cellular telephone. Rather, the claim is drawn to the idea itself.”); 11 Mayo, 566 U.S. at 78–80. The specification provides little additional detail, instead opting for broad 12 descriptions similar to the claims. See, e.g., ’602 Patent, 6:3–61 (“Video replay engine 270 can . . . 13 enable processing, streaming, and storing of the captured video; and support retrieval, usage, and 14 sharing of video content.”). 15 Additionally, analogies between these claims and longstanding, real-world practices are 16 plentiful. For example, the idea of recording or broadcasting a video feed showing people’s 17 behavior to ensure that they do not break laws or violate policies is just the abstract idea of a security 18 camera. Even before security cameras, security guards arguably provided the same function— 19 serving as a human recording device that could report on any suspicious activity and serve as a 20 warning to potential wrongdoers. The fact that the Broadcasting Claims appear to simply adapt 21 fundamental concepts, including the stuff of “brick-and-mortar” and “pen and paper” analogies, to 22 the context of mobile gaming serves as a strong indication that these claims are directed to nothing 23 more than abstract ideas. See Intellectual Ventures I, 838 F.3d at 1317; CyberSource, 654 F.3d 24 at 1372. 25 26 27 Accordingly, the Court finds that the Broadcasting Claims are directed to the idea of storing, communicating, and displaying data. b. Alice Step Two: Whether the Asserted Claims Contain an “Inventive Concept” 28 38 Sufficient to Confer Patent Eligibility 1 AviaGames argues that the Broadcasting Claims do not contain an inventive step because 2 they add only “token postsolution components” or “insignificant post-solution activity.” See 3 Motion, ECF No. 25 at 17–18 (citing Bilski, 561 U.S. at 612; Apple, Inc. v. Ameranth, Inc., 4 842 F.3d 1229, 1244 (Fed. Cir. 2016)). In response, Skillz argues that the Broadcasting Claims are 5 6 not so trivial, since Skillz alleges they provide a “specific and substantial improvement over prior anti-cheating methods by generating an electronic record of the peer-to-peer gaming event[.]” 7 Opposition, ECF No. 33 at 24 (citing Complaint, ECF No. 1 ¶ 67). On reply, AviaGames argues 8 that generating a video feed recording to prevent cheating is conventional based on prior art cited 9 on the face of the patent. See Reply, ECF No. 37 at 9. 10 The Court agrees with AviaGames. Skillz fails to point to any inventive concept outside of 11 United States District Court Northern District of California the abstract ideas themselves. Skillz argues that the inventive concept of the Broadcasting Claims 12 13 14 15 16 is “generating an electronic record of the peer-to-peer gaming event.” But this is nothing more than the abstract idea of storing data. See TLI, 823 F.3d at 612 (invalidating claims directed to “generic computer functions such as storing, receiving, and extracting data”); Stanford, 989 F.3d at 1374 (“Simply storing information and providing it upon request does not alone transform the abstract idea into patent eligible subject matter.”). Courts have consistently found that if an alleged inventive 17 concept is merely part of the abstract idea the claims are directed to, then it is insufficient to satisfy 18 step two of the Alice test. See ChargePoint, 920 F.3d at 775 (“Because [network communication] 19 is the abstract idea itself, this cannot supply the inventive concept at step two. The claims are 20 therefore ineligible.”); Credit Acceptance, 859 F.3d at 1056 (invalidating claims where “the use and 21 arrangement of conventional and generic computer components recited in the claims . . . do not 22 23 24 transform the claim, as a whole, into ‘significantly more’ than a claim to the abstract idea itself”); SAP, 898 F.3d at 1168 (“What is needed is an inventive concept in the non-abstract application realm.”). 25 Courts have declined to find similarly high-level, functional claims supported by scant 26 additional details in the specification, as having an inventive concept. See Affinity Labs of Texas, 27 LLC v. DirecTV, LLC (“Affinity Labs I”), 109 F.Supp.3d 916, 926 (W.D. Tex. 2015) (“[T]he Federal 28 39 United States District Court Northern District of California 1 Circuit has invalidated patents under § 101 for not qualifying as an inventive concept because it did 2 not specify how the patent performs the steps claimed in the patent.”); TLI, 823 F.3d at 615 (no 3 inventive concept where “the specification limits its discussion of these components to abstract 4 functional descriptions devoid of technical explanation as to how to implement the invention”); 5 Clarilogic, Inc. v. FormFree Holdings Corp., 681 Fed.Appx. 950, 954–55 (Fed. Cir. 2017) (holding 6 claim ineligible where it recited an “unknown and unclaimed process” to allegedly transform data); 7 Yu, 1 F.4th at 1045 (no inventive concept where claim is “recited at a high level of generality”). 8 While the specification provides some detail—for example, different methods for sampling a user’s 9 display for storage and broadcasting—it fails to provide any detail for many of the claimed steps of 10 the Broadcasting Claims, and it makes clear that even the detail it does provide is non-limiting. ’602 11 Patent, 6:3–61. 12 Additionally, the Broadcasting Claims are implemented on generic hardware, and Skillz fails 13 to argue that any of the claimed hardware is inventive or unconventional. Courts have consistently 14 found a lack of an inventive concept in similar circumstances. See Elec. Power, 830 F.3d at 1355 15 (“We have repeatedly held that such invocations of computers and networks that are not even 16 arguably inventive are ‘insufficient to pass the test of an inventive concept in the application’ of an 17 abstract idea.”) (quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014)); ’602 18 Patent, 2:47–67, 13:4–14:40 (describing generic hardware that can be used to implement the alleged 19 inventions). 20 Further, limiting the abstract ideas to the mobile gaming context is not sufficient to serve as 21 an inventive concept for purposes of the § 101 inquiry. See Content Extraction, 776 F.3d at 1348 22 (no inventive concept where claims “attempt[ed] to limit the abstract idea of recognizing and storing 23 information . . . to a particular technological environment”); BSG, 899 F.3d at 1291 (“As a matter 24 of law, narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.”); TLI, 25 823 F.3d at 614 (“[T]he telephone unit simply provides the environment in which the abstract idea 26 . . . is carried out.”). 27 Accordingly, the Court finds that the Broadcasting Claims are patent ineligible. 28 40 1 2 3 3. Claim 8 and 17 – Random Number Generation The parties dispute whether dependent Claims 8 and 17 of the ’602 Patent impact the § 101 analysis. Claim 8 of the ’602 Patent recites the following: 4 8. The method of claim 1, wherein the peer-to-peer gaming platform software executing on the client provides a random number seed to an operating system independent random number generator so that an initial state of the skill-based digital game is consistent for the plurality of participants. 5 6 7 8 Claim 17 of the ’602 Patent is nearly identical, with the only difference that it claims a computer 9 program, rather than a method. The Court will treat Claim 8 as representative. Neither party appears United States District Court Northern District of California 10 to oppose this. 11 Skillz’s only allegation related to claims 8 or 17 of the ’602 Patent in the Complaint is a brief 12 reference to the ’602 Patent’s identification of varying difficulty between game instances. See 13 Complaint, ECF No. 1 ¶ 63. One of the problems with the prior art the ’602 Patent specification 14 identifies is that “games played by event participants often vary in difficulty (and therefore player 15 outcome varies) because the game may present a different scenario each time the game is played. 16 Such a condition makes it challenging to determine event competition winners or rankings in a fair 17 manner.” ’602 Patent, 1:38–43. The specification describes that “[t]he peer-to-peer gaming 18 platform software executing on the client can provide a random number seed to an operating system 19 independent random number generator so that an initial state of the skill-based digital game is 20 consistent for the plurality of participants.” Id., 2:39–44. Further, the specification describes that 21 “[t]he starting game state can be the same for all entries and all participants, for example, by having 22 the peer-to-peer gaming platform 240i provide a seed to an operating system independent number 23 generator. In some implementations, a stream of random numbers can be provided from event server 24 260. Game instances 230i, which often have elements of randomness, can start in a consistent state 25 across all participants.” Id., 7:3–11. 26 AviaGames argues that claims 8 and 17 merely add “token postsolution components” or 27 “insignificant post-solution activity” to the idea of the ’602 claims. See Motion, ECF No. 25 28 at 17–18. Further, AviaGames argues that claims 8 and 17 fail to describe any specific technological 41 United States District Court Northern District of California 1 solution for how these insignificant steps are carried out such that they might provide an inventive 2 concept. See id. Skillz argues that these claims solve problems disclosed in the specification— 3 including that it is difficult to determine competition winners without a consistent initial state for 4 different users’ games. See Opposition, ECF No. 33 at 16–17. Further, Skillz argues that these 5 claims are not directed to abstract ideas for the same reason the ’564 Patent claims are not directed 6 to abstract ideas. See id. at 17. 7 The Court agrees with AviaGames. Claims 8 and 17 are entirely functional in nature—they 8 describe a claimed outcome—“an initial state of the skill-based digital game is consistent for the 9 plurality of participants”—but they fail to provide specific steps for how this outcome is achieved. 10 For example, the claim recites that the software executing on the client “provides” a random number 11 seed to an operating system independent random number generator without any indication as to 12 where the seed comes from, how it is derived, etc. Courts have found such broad claims with 13 similarly functional language patent ineligible, including because they pose significant preemption 14 concerns that are not present in more specific claims. 15 Ultramercial, 772 F.3d at 715–16. See ChargePoint, 920 F.3d at 769; 16 Skillz cannot hide behind the ’564 claims in seeking to argue that claims 8 and 17 of the 17 ’602 Patent are directed to patent eligible subject matter. Claims 8 and 17 are directed to a different 18 method, and they are significantly less detailed and more functionally claimed than the ’564 claims. 19 For example, there is no mention of the “unique match identifier” in the ’602 claims, which appears 20 to be central to the allegedly unconventional approach that the ’564 claims provide. See Complaint, 21 ECF No. 1 ¶¶ 84, 86, 87; see Sacksteder Decl., ECF No. 25-1, Ex. E ¶¶ 12–17. Further, claims 8 22 and 17 are not supported by the ample specification disclosures, prosecution history disclosures, or 23 factual allegations that support the eligibility of the ’564 claims at this stage. 24 Under Alice step one, the Court finds that the functional claims are directed to the abstract 25 idea of a mathematical algorithm. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 26 1327 (Fed. Cir. 2017) (“A process that start[s] with data, add[s] an algorithm, and end[s] with a new 27 form of data [is] directed to an abstract idea.”) (citing Digitech Image Techs., LLC v. Elecs. for 28 Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)); Elec. Power, 830 F.3d at 1354 (“[W]e have treated 42 United States District Court Northern District of California 1 analyzing information . . . by mathematical algorithms, without more, as essentially mental 2 processes within the abstract-idea category.”); Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972) (“It 3 is conceded that one may not patent an idea. But in practical effect that would be the result if the 4 formula for converting BCD numerals to pure binary numerals were patented in this case.”). The 5 Court’s analysis is supported by the significant preemption concerns of functional claims like claims 6 8 and 17 of the ’602 Patent. See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (2019) 7 (“‘[T]he concern that drives’ the judicial exceptions to patentability is ‘one of preemption[.]’”); 8 Univ. of Fla., 916 F.3d at 1368. 9 Further, the Court finds that Skillz has failed to show that claims 8 or 17 are directed to an 10 improvement in computer functionality under Alice step one or that they contain an inventive 11 concept under Alice step two. Instead, Skillz has primarily deferred to the arguments it provided in 12 support of the ’564 claims, which the Court considers to be inapposite. Claims 8 and 17 do not 13 provide a specific technological improvement or solution—they do not provide enough detail to 14 provide a non-abstract solution. See Affinity Labs I, 109 F.Supp.3d at 926 (“[T]he Federal Circuit 15 has invalidated patents under § 101 for not qualifying as an inventive concept because it did not 16 specify how the patent performs the steps claimed in the patent.”); TLI, 823 F.3d at 615 (no inventive 17 concept where “the specification limits its discussion of these components to abstract functional 18 descriptions devoid of technical explanation as to how to implement the invention”); Intellectual 19 Ventures I, 838 F.3d at 1322 (“The district court erred in relying on technological details set forth 20 in the patent’s specification and not set forth in the claims to find an inventive concept.”). Further, 21 the ’602 Patent makes clear that the claims are implemented on generic and conventional computing 22 elements. Accordingly, the Court finds that claims 8 and 17 do not disclose a non-abstract 23 improvement in computing technology or an inventive concept. 24 Additionally, the Court finds support for the patent ineligibility of claims 8 and 17 of the 25 ’602 Patent in the Apple case AviaGames cites. See Motion, ECF No. 25 at 17 (citing Apple v. 26 Ameranth, Inc., 842 F.3d at 1244). The Court there found that claims that depended from patent- 27 ineligible claims were directed to “insignificant post-solution activity” where the claim called for a 28 desired result and did “not attempt to claim any method for achieving that result.” See Apple v. 43 1 Ameranth, Inc., 842 F.3d at 1244. The Court finds that this description fits claims 8 and 17 of the 2 ’602 Patent perfectly. Accordingly, the Court finds that AviaGames has adequately shown that claims 8 and 17 of 3 4 the ’602 Patent are directed to patent ineligible subject matter. *** United States District Court Northern District of California 5 6 Based on the above reasoning, the Court finds that AviaGames has adequately shown that 7 the ’602 claims are invalid as directed to patent-ineligible subject matter. Accordingly, the Court 8 DISMISSES Skillz’s infringement claim based on the ’602 Patent. Further, since the Court finds 9 that AviaGames has shown that the claims of the ’602 Patent are directed to patent ineligible subject 10 matter, the Court finds that amendment would be futile. See Eminence Capital, 316 F.3d at 1052; 11 Papst, 193 F.Supp.3d at 1095 (“[T]he asserted claims are directed to patent-ineligible subject 12 matter, a defect which cannot be cured through amendment of a complaint[.]”); Internet Patents, 13 29 F.Supp.3d at 1270 (N.D. Cal. 2013). Accordingly, the Court’s dismissal is WITHOUT LEAVE 14 TO AMEND. 15 IV. ORDER 16 For the foregoing reasons, IT IS HEREBY ORDERED that: 17 1. 18 19 20 21 22 23 AviaGames’ Motion to Dismiss Skillz’s infringement claim under the ’564 Patent is DENIED; and 2. AviaGames’ Motion to Dismiss Skillz’s infringement claim under the ’602 Patent is GRANTED WITHOUT LEAVE TO AMEND. Dated: March 14, 2022 ______________________________________ BETH LABSON FREEMAN United States District Judge 24 25 26 27 28 44
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