Diatek Licensing LLC v. AccuWeather, Inc.

Background

Diatek Licensing LLC alleged that AccuWeather, Inc.’s online video streaming services infringed claim one of U.S. Patent No. 7,079,752 and claim one of U.S. Patent No. 8,195,828. The court considered only those two claims. AccuWeather moved to dismiss under Rule 12(b)(6), arguing that the asserted claims covered patent-ineligible subject matter under Section 101 of the Patent Act.

The ’752 Patent concerned recording scrambled digital video in a way that would allow trick-mode functions, including fast-forward, rewind, and slow motion. Claim one required descrambling data from a scrambled stream to extract additional information needed for at least one trick-mode function, and recording that additional information on the recording medium.

The ’828 Patent concerned transmitting encoded video in sections over a network. Claim one required creating and transmitting an HTTP GET request containing information such as playback speed and initial position, followed by transmitting selected video frames in chunks using an extended HTTP chunked-transfer method. Each chunk included a selected video frame and information about that frame’s starting time in the original video stream.

The Court’s Analysis

The court applied the two-part test from Alice Corp. v. CLS Bank International. First, it asked whether the claims were directed to an abstract idea. If so, it asked whether the claim elements, individually or together, contained an “inventive concept”—a feature that transformed the abstract idea into a patent-eligible application.

For the ’752 Patent, the court held that claim one was directed to the abstract idea of manipulating and storing data. Although the claim addressed the technical problem of using trick modes with scrambled video, it did not specify what data had to be extracted or how the data had to be extracted and stored. The court therefore found that the claim described a desired result rather than a specific way of achieving that result.

For the ’828 Patent, the court likewise held that claim one was directed to the abstract idea of transmitting audiovisual data. The claim identified an HTTP GET request, playback-related parameters, and transmission of selected video frames in chunks, but did not explain specifically how to modify HTTP GET or how to create a technically novel transmission method. The court concluded that the claim recited the desired result of allowing trick-mode video requests rather than a specific technological solution.

At the second step, the court found that neither claim contained an inventive concept. The ’752 claim generically referred to recording, descrambling, and extracting data without explaining how those techniques were implemented. The ’828 claim generically referred to creating and transmitting an HTTP GET request and sending video frames in chunks, also without technical details showing an inventive implementation. The court further found that Diatek’s Amended Complaint offered only conclusory allegations that the claims were not well-understood, routine, or conventional and did not identify specific inventive claim elements.

Disposition

The court granted AccuWeather’s motion to dismiss the Amended Complaint and dismissed the Amended Complaint. The court granted Diatek leave to file a Second Amended Complaint if Diatek could plead facts making it plausible that activities recited in at least one asserted claim were not well-understood, routine, or conventional. The court stated that the Second Amended Complaint had to be filed within thirty days. If Diatek did not amend within that period and did not show good cause, the court would dismiss the action with prejudice and close the case.