IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

VIDEOSHARE, LLC, §
Plaintiff §
§ CIVIL NO. 6-19-CV-00663-ADA
v. §
§
GOOGLE LLC, YOUTUBE, LLC, §
Defendants §

ORDER DENYING DEFENDANTS’ MOTION TO DISMISS

Before the Court is Defendants’ Motion to Dismiss Based on Claim Preclusion (ECF No.

18). Plaintiff filed a response on February 19, 2020 (ECF No. 21) and Defendants filed a reply on

February 26, 2020 (ECF No. 23). The Court held a hearing on the issue on March 13, 2020. ECF

No. 28. After considering the parties’ briefs, the applicable law, oral argument, and the case file,

the Court DENIES Defendants’ Motion based on the reasons that follow.

I. BACKGROUND

This case concerns the same Plaintiff (VideoShare, LLC) filing the same cause of action

(patent infringement) against the same Defendants (Google, LLC and Youtube, LLC) concerning

the same product (streaming video), albeit in a different venue. Defendants assert that Plaintiff’s

case should be dismissed based on res judicata, also known as claim preclusion, because a federal

court in Delaware held that a similar previously litigated patent was invalid under 35 U.S.C. § 101.

On June 4, 2013, Plaintiff filed suit in the District of Delaware asserting that Defendants

infringed U.S. Patent No. 8,464,302 and an additional patent. VideoShare, LLC v. Google, Inc. and

Youtube, LLC, No.13-cv-990 (GMS). Specifically, Plaintiff identified “Defendants’ infringing

products and services” as “products and services for receiving, converting, and sharing streaming

video, including those marketed as Youtube.” Id., ECF No. 47 at ¶ 11 (D. Del. June 9, 2015).

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Defendants filed a Rule 12(c) motion, asserting lack of patentable subject matter of both patents-

in-suit. On August 2, 2016, the district court found that both patents-in-suit were invalid pursuant

to 35 U.S.C. § 101. VideoShare, LLC v. Google, Inc., 2016 WL 4137524 (D. Del. Aug. 2, 2016)

(“VideoShare I”). The Federal Circuit subsequently affirmed the district court’s Order.

Videoshare, LLC v. Google, Inc., 695 F. App’x 577 (Fed. Cir. 2017) (“VideoShare II”).

Several years later, in January 2019, Plaintiff filed the patent application that would later

issue as U.S. Patent No. 10,362,341. The ’341 Patent is a continuation of the ’302 Patent and shares

an identical specification except for the ’341 Patent’s more extensive listing of related patent

applications. On April 4, 2019, the patent examiner issued a rejection of all claims for nonstatutory

double patenting, finding that the claims of the ’341 Patent were not patentably distinct from the

claims of the ’302 Patent. Plaintiff filed a terminal disclaimer in response to the double patenting

rejection, but did not dispute the examiner’s conclusions. The ’341 Patent issued on July 23, 2019.

In November 2019, Plaintiff filed its current complaint against Defendants, alleging

infringement of the ’341 Patent in the Western District of Texas. As it did in the Delaware

litigation, Plaintiff identifies “Defendants’ infringing products and services” as “products and

services for receiving, converting, and sharing streaming video, including those distributed

through YouTube.” ECF No. 1, Pl.’s Compl., at ¶ 9. Defendants filed the instant Motion to Dismiss

in February 2020, arguing that the Court should dismiss the case based on the doctrine of claim

preclusion.

II. LEGAL STANDARD

To survive a motion to dismiss, “a complaint must contain sufficient factual matter,

accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S.

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662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Courts “are not

bound to accept as true a legal conclusion couched as a factual allegation.” Id.

Whether a cause of action is barred by claim preclusion is a question of law. SimpleAir,

Inc. v. Google LLC, 884 F.3d 1160, 1165 (Fed. Cir. 2018). Thus, claim preclusion is appropriately

addressed in a motion to dismiss. Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344 (Fed. Cir. 2014)

(affirming dismissal on claim preclusion grounds). The Federal Circuit “looks to the law of the

regional circuit for guidance regarding the principles of claim preclusion.” Id. at 1348. The test

for claim preclusion in the Fifth Circuit has four elements: (1) the parties in the later action are

identical to, or in privity with, the parties in the earlier action; (2) the judgment in the earlier case

was rendered by a court with proper jurisdiction; (3) there has been a final judgment on the merits;

and (4) the earlier case and later case involve the same cause of action. SimpleAir, 884 F.3d at

1165. The fourth element is governed by Federal Circuit law. Id.

The Federal Circuit applies the “transactional test” articulated in the Restatement (Second)

of Judgments. Id. The test asks whether the later cause of action forms “all or any part of the

transaction, or series of connected transactions, out of which the [earlier] action arose.”

Restatement § 24. “What factual grouping constitutes a ‘transaction,’ and what groupings

constitute a ‘series,’ are to be determined pragmatically, giving weight to such considerations as

whether the facts are related in time, space, origin, or motivation, whether they form a convenient

trial unit, and whether their treatment as a unit conforms to the parties’ expectations or business

understanding or usage.” Id. “If the overlap between the transactional facts of the suits is

substantial, the later action should ordinarily be precluded.” SimpleAir, 884 F.3d at 1165.

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 III. ANALYSIS

This appears to be a case of first impression. The parties have not cited to any prior cases

where a court analyzed whether claim preclusion applies to a subsequent patent in a second case

based on the patent ineligibility of another patent in the same family in the first case.

A. Analysis of claim scope of the ’302 and ’341 Patents

The Parties agree that the sole issue before the Court is the fourth element—whether the

earlier case and the later case involve the same cause of action. Pl.’s Resp. to Def.’s Mot., ECF

No. 21 at 4 (hereinafter “Resp.”). Defendants proffer two main arguments in support of their

contention that the two actions involve the same cause of action. Mot. to Dismiss, ECF No. 18 at

5–6 (the “Motion”). First, Defendants contend that the accused “products or processes are

essentially the same.” Id. (citing Senju, 746 F.3d at 1349). Second, Defendants argue that the

“scope of the asserted patent claims in the two suits are essentially the same.” Id. (citing SimpleAir,

884 F.3d at 1167). Plaintiff does not seriously dispute Defendants first contention; thus, the Court

will focus on Defendants’ second argument.

Defendants maintain the scope of the asserted patent claims are essentially the same,

requiring the Court to dismiss the current suit. Mot. at 5–6. Defendants base their argument that

the claims are essentially the same on two theories. First, Defendants argue that the claims are

“patentably indistinct.” Id. at 6. Specifically, Defendants contend the claims are not patentably

distinct because both cover the same concept of converting a video file in a second file format for

sharing over a computer network. Id. at 9. Although the ’341 Patent also requires storing the first

original file and delivering one of the first or second file formats, Defendants contend that such a

minor change is obvious. Id. Further bolstering their point, Defendants point to the fact that

Plaintiff made no effort to dispute the examiner’s findings, and instead, filed a terminal disclaimer.

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Id. Thus, Defendants contend that the claims of the ’341 Patent are not patentably distinct. Id.; see

also SimpleAir, 884 F.3d at 1168.

Secondly, Defendants contend that the claims of the ’341 Patent are narrower versions of

the originally asserted ’302 Patent claims, making them essentially the same because they do not

create new legal rights to assert infringement that differ from the rights asserted in the original

patent. Id. at 6; see Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1342 (Fed. Cir.

2012). Specifically, Defendants argue that the claims of the ’341 Patent are narrower than those of

the ’302 Patent because instead of just sending the converted file, the ’341 Patent sends one of two

different files. Id. at 9. Additionally, Defendants point out that the ’341 Patent’s “structured

hierarchical network” is both a narrower and an “obvious variant on the ‘network’ of the ’302

Patent.” Id. Thus, Defendants claim the ’341 patent is not patentably distinct.

In response to Defendant’s first argument (that the claims are not “patentably distinct”),

Plaintiff contends that the present case and the Delaware case involve distinct causes of action.

Resp. at 4. Plaintiff points out that a terminal disclaimer “is not an admission or presumption

regarding the patentability of the claims of a continuation patent.” Id. (emphasis in original).

Additionally, Plaintiff argues that because the ’341 Patent was not in existence at the time of the

Delaware lawsuit, the claims of the ’341 Patent could not have been litigated in the previous suit.

Id. at 2.

More importantly, Plaintiff next argues claim preclusion is not applicable in this case

because there was no determination of the scope of the patent’s claims. More specifically, unlike

infringement or invalidity under §§ 102 and 103, Plaintiff contends that patent ineligibility

pursuant to 35 U.S.C. § 101 does not concern the scope of a patent’s claims.

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 Although the Court agrees with Defendants that there is substantial overlap between this

case and VideoShare I, as the asserted patent shares a common specification and because the

Examiner initially rejected of all claims for nonstatutory double patenting, the Court ultimately

agrees with Plaintiff that claim preclusion is not applicable in this case.

As the Federal Circuit explained in SimpleAir: “[W]here different patents are asserted in a

first and second suit, a judgment in the first suit will trigger claim preclusion only if the scope of

the asserted patent claims in the two suits is essentially the same.” SimpleAir, 884 F.3d at 1167

(emphasis added). However, this analysis has typically been applied only where infringement or

noninfringement was fully adjudicated in the prior litigation. See, e.g., SimpleAir, 884 F.3d at 1163

(previous litigation resulted in three judgments of noninfringement for defendant); Aspex, 672 F.3d

at 1338 (previous litigation resulted in a finding of noninfringement). Plaintiff contends—and

Defendants do not appear to disagree—that claim preclusion has never been applied to a different

patent in a subsequent suit. Resp. at 1. More specifically to the issue in this case, claim preclusion

has never been applied where a patent was found invalid under § 101 in the first case and a different

patent was asserted in the second case. The reasons for that make sense. Unlike invalidity based

on 35 U.S.C. §§ 102 and 103 where a court has to first determine the scope of the claims in order

to find that prior art anticipates or renders obvious, respectively, the claims, patent eligibility under

35 U.S.C. § 101 does not concern the scope of a patent’s claims. It only concerns whether or not

the patents are directed to patent-eligible subject-matter.

In this case, the Delaware district court did not invalidate the ’302 patent based on the

scope of the Patent, but instead, found the patent invalid because it was directed to an abstract idea

and that there was no inventive concept that transformed the abstract idea into something

patentable. VideoShare I, 2016 WL 4137524 at *8–10. As such, the Delaware district court did not

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need to—and never did—determine the scope of the claims. Because the Delaware district court

did not determine the scope of the claims for the ’341 Patent, the Court cannot compare the

respective scopes of the ’302 and ’341 Patents to determine whether they are essentially the same.

Therefore, Defendants’ argument that claim preclusion applies to the ’302 Patent is fundamentally

flawed and the cases cited by Defendants are inapposite. See e.g., SimpleAir, 884 F.3d at 1166–67

(claim scope determined in prior litigation and remanded because district court did not analyze the

claims of the patents to determine if they were essentially the same).

Defendants primarily rely on Senju to support their argument that because the ’341 Patent

is necessarily a “narrower version” of the ’301 Patent, the claims are patentably indistinct. In Senju,

the district court held the claims invalid as obvious in the first case. 746 F.3d at 1347. Afterwards,

the patentee amended existing claims and added new claims to the patent in a reexamination

proceeding, and then filed a second action for infringement of the newly amended and added

claims against the same party. Id. The district court held the patentee’s second action-claim was

precluded by the earlier action because it raised the same cause of action as the first case, as none

of the claims emerging from reexamination were broader than the earlier patent. Id. at 1348. The

Federal Circuit affirmed, holding that “claims that emerge from reexamination do not in and of

themselves create a new cause of action that did not exist before.” Id. at 1352.

There are at least two reasons why Senju is distinguishable from the present case.1 The first

and most important distinction between this case and Senju is that the Delaware district court did

not determine the claim scope of the claims in the ’302 Patent. By contrast, the court in Senju did

determine the claim scope. Therefore, Senju is inapposite.

1
Another difference between Senju and the instant case is that the same patent was asserted in both cases, albeit with
amended and new claims, whereas a different, subsequent patent is being asserted in this case. But this fact is not
dispositive because, in both Senju and the instant case, new claims that did not exist at the time of the first litigation
were being asserted.

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 Second, a continuation patent does not necessarily have the same or narrower scope as its

parent patent, even if the examiner rejected all claims due to nonstatutory double patenting. There

is “no prohibition on broadening claims in continuation patents subject to a terminal disclaimer.”

SimpleAir, 881 F.3d at 1167. “So unlike the case of reexamined claims, claims of terminally-

disclaimed continuation patents could ‘provide larger claim scope to a patentee than the patentee

had under’ the parent patent.” Id. (citing Senju, 746 F.3d at 1353).

Even a cursory review of the claim language of the two patents shows that the ’341 Patent

uses broader claim language, thus indicating potentially broader claim scope. More specifically,

the claim 1, limitation [g] of the ’302 Patent requires “generating an identification tag identifying

the stored steaming video file,” whereas the claim 1, limitation [d] of the ’341 Patent states “the

first server system generating an identifier for video content corresponding to the first video file

and the second video file.” See Mot. at 8 (contending that these two limitations are substantially

similar). Because the term “identifier” could, and generally does, encompass a broader meaning

than “identification tag,” the scope of the ’341 Patent is likely broader in scope than the ’302

Patent, at least with respect to “identifier.” Thus, even if this was one of the rare cases where claim

construction was not a necessary step to resolve a patent’s subject-matter eligibility,2 the Court

finds the claims are not essentially the same for purposes of claim preclusion.

The Court also believes Defendants’ argument that Plaintiff’s filing of a “terminal

disclaimer without opposition to the examiner’s double patenting rejection provides a ‘strong clue’

that the patentee thought the continuation patent lacked a patentable distinction over the parent” is

incorrect for at least two reasons. Def.’s Reply, ECF No. 23 at 2. First, it is well-established that a

2
For the reasons described in Slyce Acquisition Inc. v. Syte – Visual Conception Ltd., No. 6:19-cv-257-ADA, 2020
WL 278481 (W.D. Tex. Jan. 10, 2020), the Court’s general practice is to defer resolving § 101 related Rule 12(b)
motions until after claim construction and after fact discovery opens.

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terminal disclaimer is not an admission or presumption regarding the patentability of the claims of

a continuation patent. See SimpleAir, 881 F.3d at 1163 (holding the lower court “erred by

presuming that terminally-disclaimed continuation patents are patentably indistinct variations of

their parent patents without analyzing the scope of the patent claims.”); Motionless Keyboard Co.

v. Microsoft Corp., 486 F.3d 1376, 1385 (Fed. Cir. 2007) (“A terminal disclaimer is simply not an

admission that a later-filed invention is obvious.”); Ventana Med. Sys., Inc. v. Biogenex Labs.,

Inc., 473 F.3d 1173, 1184 n.4 (Fed. Cir. 2006) (rejecting accused infringer’s argument that by

filing terminal disclaimer patentee effectively admitted that claims of patent had similar scope);

Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 941 (Fed. Cir. 1992) (rejecting argument that patent

applicant admitted to obviousness-type double patenting by filing terminal disclaimer); Quad

Envtl. Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 874 (Fed. Cir. 1991) (“[T]he filing of a

terminal disclaimer simply serves the statutory function of removing the rejection of double

patenting, and raises neither presumption nor estoppel on the merits of the rejection.”).

Second, the PTO and district courts have different claim construction standards. The PTO

uses the “broadest reasonable interpretation” (“BRI”) standard during prosecution. Manual of

Patent Examining Procedure § 2111 (“During patent examination, the pending claims must be

‘given their broadest reasonable interpretation consistent with the specification.’”). Courts, on the

other hand, interpret claims under the Phillips standard. See Phillips v. AWH Corp., 415 F.3d 1303

(Fed. Cir. 2005) (en banc). In other words, the nonstatutory double patent rejections—and the

concomitant terminal disclaimer—resulted from the BRI standard while the analysis of claim

preclusion is based on the Phillips standard. Because the BRI standard is the same or broader—

but not narrower—than the Phillips standard, it is quite possible that had the Examiner used the

Phillips standard instead of the BRI standard, the Examiner would not have rejected the claims of

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the ’341 Patent based on nonstatutory double patenting. Facebook, Inc. v. Pragmatus AV, LLC,

2014 WL 4454956, 4 (Fed. Cir. Sept. 11, 2014) (nonprecedential) (“the broadest reasonable

interpretation of a claim term may be the same as or broader than the construction of a term under

the Phillips standard. But it cannot be narrower.”).

For example, suppose that, under the BRI standard, the claim scope of the ’341 Patent was

such that it fit entirely within the claim scope of the’302 Patent. But because the BRI standard is

the same or broader than the Phillips standard, it is possible that that under the Phillips standard,

the claim scope of the ’302 Patent could be smaller than under the BRI standard such that the claim

scope of the ’341 Patent no longer completely fits within the claim scope of the ’302 Patent. While

this example may be somewhat contrived, it still illustrates that it is very difficult—if not

impossible—for a court to determine whether the difference in claim construction standards may

sufficiently change the claim scope to affect the claim preclusion analysis. Accordingly, the Court

believes that, in most cases, such an analysis would have a sufficiently large “margin of error” that

minimizes the utility of a terminal disclaimer when analyzing claim scope for claim preclusion

purposes.

For at least these two reasons, the Court believes Defendants’ argument that Plaintiff’s

filing of a terminal disclaimer without opposition to the examiner’s double patenting rejection

provides a “strong clue” that the patentee thought the continuation patent lacked a patentable

distinction over the parent is incorrect.

B. The Court declines to determine whether the ’302 and ’341 Patents have the
same claim scope at this stage of the litigation

But this approach begs the question: why not determine whether the claims in the two

patents have the same scope at this stage in the litigation? There are at least three reasons for not

doing so. First, the Court believes comparing the scope of a patent that this early stage in the

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litigation is inappropriate without the benefit of formal claim construction. MyMail, Ltd. v. ooVoo,

LLC, 934 F.3d 1373, 1379 (Fed. Cir. 2019) (citing Bancorp Servs., LLC v. Sun Life Assurance Co.

of Can., 687 F.3d 1266, 1273–74 (Fed. Cir. 2012)) (“[I]t will ordinarily be desirable—and often

necessary—to resolve claim construction disputes prior to a § 101 analysis, for the determination

of patent eligibility requires a full understanding of the basic character of the claimed subject

matter.”).3

The Court’s approach is consistent with Federal Circuit case law that Defendants cite. In

SimpleAir, the Federal Circuit acknowledged that the claim language in the previously litigated

patents and the patents-at-issue in the case were very similar. 884 F.3d at 1168. In fact, the court

stated it did not see how the two patents were “fundamentally different invention[s] from those

patents asserted in the previous litigation.” Id. Yet despite these apparent similarities, the Federal

Circuit decided to leave “it to the district court’s discretion on remand whether formal claim

construction is necessary to resolve whether the ’838 and ’048 claims are essentially the same as,

i.e., patentably indistinct from, those in the previously adjudicated parent parents.” Id. at 1168–69;

see also Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d 1316 (Fed. Cir. 2016) (holding that a

district court’s finding of invalidity under 35 U.S.C. § 101 did not automatically render that

judgment res judicata as to new claims granted upon reexamination). Here, at such an early stage

in the litigation, the Court believes claim preclusion is premature and inapplicable. Because the

claim scope of the earlier litigated patent was not determined and because the Court has not

3
The Court acknowledges that some Courts have applied claim preclusion at the 12(b) stage, before formal claim
construction. See e.g., MAZ Encryption Tech., LLC v. Blackberry Ltd., 347 F. Supp. 3d 283, 293 (N.D. Tex. 2018).
The Court respectfully disagrees with that approach for the reasons described in the Court’s order for Slyce. 2020 WL
278481, at *5. The Court believes that under the facts of this case, where no formal claim construction has occurred
and no claim construction occurred in the previous case, granting a 12(b)(6) motion to dismiss based upon claim
preclusion is premature.

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construed the claims in this case—which, after all, is a question of law—the Court will not

determine the claim scope at this point in the litigation.

Second, the Court also finds Defendants’ argument that the ’341 Patent is necessarily a

“narrower version” of the ’301 Patent, thus making the claims patentably indistinct, misses the

mark. Defendants are correct that the addition of limitations to the ’341 Patent (as compared with

the ’301 Patent) necessarily narrows the scope of infringement because the accused products must

have additional limitation(s) in order to infringe the ’341 Patent (whereas the accused products did

not need to have the additional limitation(s) in order to infringe the ’301 Patent). By contrast,

adding a limitation to the ’341 Patent may provide some invalidity protection because the

additional limitation may not be asserted in the prior art. In other words, the additional limitation

may prevent a reference from anticipating a ’341 Patent claim or from multiple references from

rendering it obvious. As such, if the ’341 Patent were actually a “narrower version” of the ’301

Patent, it may not be invalid.

But adding limitations to a claim has a different effect in the context of a § 101 analysis

than it does in the context of an infringement or §§ 102 and 103 invalidity analysis. More

specifically, in the context of an infringement or §§ 102 or 103 invalidity analysis, the additional

limitation narrows the claim scope. But in the context of a § 101 analysis, the additional limitation

may—individually or in conjunction with the other claim limitations (i.e., “as an ordered

combination” of elements)—“‘transform the nature of the claim’ into a patent-eligible

application.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In other words,

contrary to Defendants’ argument that adding limitations narrows the claim scope, thus making

the claims patentably indistinct, adding limitations to a claim may actually provide the inventive

concept that transforms the abstract idea in a patentable invention. Berkheimer v. HP Inc., 881

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F.3d 1360, 1370 (Fed. Cir. 2018) (holding dependent claims 4 to 7 “contain limitations directed to

the arguably unconventional inventive concept described in the specification.”).

Third, to determine whether the claims in the two patents have the same scope would

require this Court to determine the claim scope of the ’301 Patent—which has not been asserted

in this case, and is also invalid—and the ’341 Patent—which has been asserted in this case. To do

so, the Court would need to construe the claim terms in both patents and then conduct a § 101

analysis on both patents (which may require factual evidence). Not only is this an impractical

approach, it also requires construing and analyzing an unasserted, invalid patent, which is outside

the scope of the present case.

C. Claim preclusion cannot be readily applied to (1) analyzing patent eligibility

Because this is a case of first impression, the Court has carefully considered the doctrines

of claim preclusion and patent eligibility in order to provide its opinion whether the former can be

readily applied to the latter, in case another court may benefit from the time this Court has spent

analyzing this issue. The Court concludes that the doctrine of claim preclusion cannot be readily

applied to analyzing patent eligibility. As described above, because one element of claim

preclusion is whether or not the two patents have the same scope, if the scope of the first patent

was not determined when evaluating its patent eligibility, then it is axiomatic that claim preclusion

based on patent ineligibility cannot apply to the second patent.

The Court also does not believe that the doctrine of claim preclusion cannot be readily

applied to either step of the Alice two-step test. Obviously, for claim preclusion to potentially apply

in a later case, the court in the prior case has to have determined (1) that the claims in the first

patent were directed to a patent ineligible concept and (2) that there is not an inventive concept

that transforms the claimed patent ineligible concept into a patent-eligible application. Alice, 573

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U.S. at 217–18. But even if the prior court determined that the first patent was directed to a patent

ineligible concept, that determination is unlikely to have any preclusive effect on whether the

second patent is also directed to a patent ineligible concept for a few reasons. First, in many cases,

the language of the claims of the second patent may be sufficiently different from that of the first

patent such that it is not facially, i.e., without further analysis, obvious that both patents are directed

to the same patent ineligible concept. Second, the later patent may use terms which the prior court

did not construe (if it construed any at all), which may altogether prevent the application of claim

preclusion because “it will ordinarily be desirable—and often necessary—to resolve claim

construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires

a full understanding of the basic character of the claimed subject matter.” MyMail, 934 F.3d at

1379. Third, a difference in the type of claims, e.g., method or apparatus, in the first and second

patents could also prevent the application of claim preclusion because it may be more difficult to

determine if an apparatus claim in the second patent is directed to an abstract idea given the

recitation of real-world components, which may not be present in the method claim of the first

patent. Because patents are presumed valid, overcoming this presumption requires clear and

convincing evidence. Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019)

(quoting Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95–96 (2011)). But to the extent that any

of these aforementioned reasons apply to the second patent, given that it takes clear and convincing

evidence to invalidate a patent, it appears that the applicability of claim preclusion to the first step

of the Alice analysis will be rather limited, if not rare.

Likewise, a prior court’s determination that there is not an inventive concept that

transforms the claimed patent ineligible concept into a patent-eligible application also is unlikely

to have any preclusive effect on whether there is an inventive concept in the second patent for at

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least two reasons. First, as was the case for the first step of the Alice analysis, unresolved claim

construction disputes may prevent the application of claim preclusion to the second Alice step.

Second, as described above, because any new or additional limitations may provide an inventive

concept that was missing in the first patent, these limitations also prevent the application of claim

preclusion.

IV. CONCLUSION

Based on the foregoing, the Court finds that Defendants’ Rule 12(b)(6) Motion to Dismiss

based on claim preclusion should be DENIED.

SIGNED this 4th day of May, 2020.

ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE

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