# United States **Court of Appeals**  **for the Federal Circuit**

______________________ SANDERLING MANAGEMENT LTD., Plaintiff

- Appellant

v.

SNAP INC., Defendant

- Appellee

______________________

2021

- 2173

______________________ Appeal from the United States District Court for the Central District of California in No. 2:21

- cv

- 02324

- GW

- JC, Judge George H. Wu.

______________________
Decided: April 12, 2023

______________________

L AURA A. W YTSMA , Venable LLP, Los Angeles, CA, argued for plaintiff

- appellant. Also represented by T IMOTHY J. C ARROLL , Chicago, IL.

S TEVEN S CHORTGEN , Sheppard Mullin Richter & Hampton LLP, Dallas, TX, argued for defendant

- appellee. Also represented by J ENNIFER A YERS ; T ODD E. L UNDELL , Costa Mesa, CA; J ESSE A. S ALEN , K ARIN D OUGAN V OGEL , San Diego, CA.

______________________

Before C HEN , C UNNINGHAM , and S TARK , Circuit Judges

. Case: 21-2173 Document: 49 Page: 1 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

. v. SNAP INC

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S TARK , Circuit Judge

. Sanderling Management Ltd. (“Sanderling”) appeals from the district court’ s dismissal of Sanderling’s patent infringement suit against Snap Inc. (“Snap”) due to the asserted claims’ lack of patent

- eligible subject matter under 35 U.S.C. § 101 (“Section 101 ”)

. Sanderling also asks us to review t he district court’s denial of its motion for leave to amend its complaint. We affirm.

I Sanderling owns U.S. Patent No s . 9,355,412 (the “’412 patent”) , 9,639,866 (the “’ 86 6 patent”) , and 10,108,986 (the “’986 paten t”)

. The ’412, ’866, and ’986 patents, all sharing the title “Dynamic Promotional Layout Management and Distribution Rules,” are directed to a method using distribution rules to load digital image branding functions to users when certain conditions are me t

. The patents share a

common specification, which describes the digital image branding function as a transformation, using

, for example

, an icon or a filter, that display s in a client terminal for the user to apply to a digital image. See ’412 patent 5:64

- 67 ; ’866 patent 6:7

- 10 ; ’986 patent 6:7

- 10

. A distribution ru le “is a rule used in determi ning how to target a group of end users, for instance, a rule that determines that only a group of end users having certain characteristics and/or match a certain requirement.” ’412 patent 6:3 -8 ; ’866 patent 6:13

- 16 ; ’986 patent 6:13

- 16

. The district court viewed c laim 1 of each patent as representative of all the claims in th at entire patent. Although Sanderling initially objected to treating any claims as representative, i t has not appealed the district court’s decision on this issue

. 1 F or our purposes, c laim 1 of the

1 As we have previously stated, “ [c] ourts may treat a claim as representative in certain situations, such as if the patentee does not present any meaningful argument for Case: 21-2173 Document: 49 Page: 2 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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’412 patent is representative of all the claims involved i n this appeal, and it recit es t he follow ing : A computerized method of distributing a digital image processing function, said computerized method comprising:
using at least one server having at least one hardware processor and over a network to accessa database storing at least one digital image processing function associated with at least one distribution rule defining a geographic location;receiving, over said network, a Global Positioning S ystem (GPS) location indication from eachof a plurality of mobile devices, each said location indication is determined according to a GPSmodule executed by one of said plurality of mobile devices;

the distinctive significance of any claim limitations not found in the representative claim or if the parties agree to
tre at a claim as representative.” Berkheimer v. HP, Inc.

, 881 F.3d 1360, 1365 (Fed. Cir. 2018). Here, the district court rejected Sanderling’s “generalized objections” to Snap’s representative claim contentions , objections which consisted of nothing more th an assertions that Snap’s approach was “improper” and “premature” because “[t]hereare likely to be [unspecified] claim construction arguments” later in the litigation. Appx 8, 237. District courts have discretion to require parties litigating Section 101 motions to identify representative claims and to articulate why (or why not) claims are representative (including by explaining how a limitation missing from a p urportedly representative claim could make a material impact to the Section 101 analysis ). Case: 21-2173 Document: 49 Page: 3 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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matching, using said at least one hardware processor, each said GPS location indication with said geographic location; and automatically forwarding, over said network and in response to receiving said Global Position System (GPS) location indication, said at least one digital image processing function to at leastone mobile device of said plurality of mobile devices, said at least one mobile device having a respective said GPS location indication which matches said geographic location;
wherein said at least one image process ing function is set to be used by an application executed on said at least one mobile device to process adigital image designated at said at least one mobile device to create an output digital image. ’412 patent cl. 1 ; see also Appellee Resp. Br. at 6- 8 ( showing similarity of claim 1 of ’412, ’866, and ’986 patents).Sanderling sued Snap in the Northern District of Illinois, alleging infringement of every claim of the three asserted patents. Snap moved to transfer and to dismiss under Federal Rule of Civil Procedure 12(b)(6). The Illinois district court’s standing order – which has not been challenged in either the district court or here – put Sanderling
to the choice of either amending its c omplaint or responding to the motion. Sanderling chose to respond to the motion

, and thereafter t he court transferred the case to the Central District of California

. Th at court ultimately granted Snap’s motion to dismiss with prejudice and denied Sanderl ing’s request for leave to amend its complaint

, a request Sanderling made for the first time at the hearing on Snap’s motion

. Sanderling moved for reconsideration, which the district court denied. The district court entered Case: 21-2173 Document: 49 Page: 4 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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its judgment on July 21, 2021

, and Sanderling timely appealed. 2

II

W hen reviewing a district court decision on a motion to dismiss or a motion to amend, we apply the same standard of review as the applicable regional circuit. See Nalco Co. v. Chem

- Mod, LLC , 883 F.3d 1337, 1346 (Fed. Cir. 2018) (motion to dismiss); Simio, LLC v. FlexSim Software Prods. , 983 F.3d 1353, 1358 (Fed. Cir. 2020) (motion to amend). The Ninth Circuit reviews Rule 12(b)(6) dismissals for failure to state a claim de novo , construing all allegations of material fact in the light most favorable to the nonmoving party. See OIP Techs., Inc. v. Amazon.com, Inc. , 7 88 F.3d 1359, 1362 (Fed. Cir. 2015); McShannock v. JP Morgan Chase Bank NA , 976 F.3d 881, 886

- 87 (9th Cir. 2020)

. The Ninth Circuit reviews “the denial of leave to amend for an abuse of discretion, but [it] review s the question of futility of amendment de novo.” B&G Foods N. Am., Inc. v. E mbry , 29 F.4th 527, 534 (9th Cir. 2022).
Patent eligibility is governed by 35 U.S.C. § 101 , which provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, mayobtain a patent therefor, subject to the conditions and requirements of this ti tle.” “Laws of nature, natural phenomena, and abstract ideas” are, however, “an important implicit exception” to Section 101. Alice Corp. Pty. Ltd. v. CLS Bank Int’l , 573 U.S. 208, 216 (2014). Accordingly, Alice directs us to determine whether a p atent claim s patent

ineligible subject matter in two steps: first we “determine whether the claims at issue are directed to one of those

2 The district court had jurisdiction pursuant to 28 U.S.C. § 1331. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). Case: 21-2173 Document: 49 Page: 5 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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patent

- ineligible concepts” (“step one”); and, if so, we nextsearch for an “inventive concept” by “consider[ing] the element s of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent

- eligible application” (“step two”). Id. at 217 (internal quotation marks omitted)

. “Patent eligibi lity under 35 U.S.C. § 101 is ultimately

a n issue of law we review de novo,” although “[t]he patent eligibility inquiry may contain underlying issues of fact.” Berkheimer v. HP, Inc. , 881 F.3d 1360, 136 5 (Fed. Cir. 2018)

. Section 101 disputes “may be res olved on a Rule 12(b)(6) [or Rule 12(c)] motion when there are no factualallegations that, taken as true, prevent resolving the eligibility as a matter of law.” Uniloc USA, Inc. v. LG Elecs. USA, Inc. , 957 F.3d 1303, 1306 (Fed. Cir. 2020) (internal quota tion marks omitted)

. In particular, at step two of the Alice test, “w hether a claim element or combination o f elements is well

- understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer , 881 F.3d at 1368. However, of course, “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” Id.

I II

A Considering the claims as a whole at step one of the Alice test, we reach the same conclusion as the district court: the claims are directed to an abstract idea. Typically

, as is true here, the step one analysis for computer

related inventions requires us to “ask whether the claims are directed to an improvement to computer functionality versus be ing directed to an abstract idea.” Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327, 1335 (Fed. Cir. 2016). The claims of the asserted patents are not directed to a specific improvement in computer functionality but , instead, to the Case: 21-2173 Document: 49 Page: 6 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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use of computers as a too l; here

, a too l to identify when a condition is met and then to distribute information based on satisfaction of that condition

. As the district court articulated, in a formulation we agree with , the claims are directed to the abstract idea “ ‘ of providi ng information – in this case, a processing function – b ased on meeting a condition ,’ e.g. , matching a GPS location indication with a geographic location.” Appx11. Even though the information being distributed is of a particular variety – here, digital i maging processing based on a distribution rule that determines when a condition is met – distribution of information is an abstract idea. See Intell. Ventures I LLC v. Cap. One Bank , 792 F.3d 1363, 1369 (Fed. Cir. 2015) ( “Providing this minimal tailoring – e.g., providing different newspaper inserts based on the location of the individual – is an abstract idea.”). Sanderling argues that the district court erred in reading the claims “at such a high level of abstraction

. . . untethered from the [claim] language.” Appellant Br. at 27

. Sanderling analogizes its claims to those we upheld in McRO, Inc. v. Bandai Namco Games Am. Inc. , 837 F.3d 1299, 1313 (Fed. Cir. 2016) , where we cautioned that courts

“‘ must be careful to avoid oversimplifying the claims ’ by

. . . failing to account for the [ir] specific requirements

. ” We do not agree with Sanderling’s criticism of the district court nor with its comparison. In McR O , we found that patents for automatic animation of lip synchronization and facial

ex pressions of 3D animated characters were not directed to an abstract idea

. Th o se claims were , instead, directed to eligible subject

- matter because they provided “a combined order of specific rules that render [ed] information into a specific format

. ” I d. at 1315. The claims of the asserted patents here, by contrast, ha ve a “distribution rule” that merely receive s , match es , and then distribute s the corresponding function based on the user’s location, a much more generic set of steps than McRO ’s specific cl aim language

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Sanderling also argues that the district court erred at step one by failing to construe claim terms. “[C] laim construction is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur a nce Co. of Can

. (U.S.) , 687 F.3d 1266, 1273 (Fed. Cir. 2012). If claims are directed to ineligible (or eligible) subject matter under all plausible constructions, then thecourt need not engage in claim construction before resolving a Section 101 motion. 3 In aid of determining whether a particular motion requires claim construction before disposition of the motion, a district court is free to require the party asking for construction to provide a n actual proposed construction, to demonstrate t hat its con struction is not frivolous, and to articulate how adoption of the construction would materially impact the analysis at step one (and/or at step two). Here, w hile Sanderling identifiedterms it wanted the district court to construe before deciding Snap’ s m otion, Sanderling failed to provide proposed constructions for those terms. 4 Sanderling also failed to explain why any proposed constructions were not frivolous

or how its constructions would make any difference to the Alice analysis. Thus, the district court did not err by

3 Whe n a non

- moving party proposes a construction, “the court must proceed by adopting the non

- moving party’s constructions, or the court must resolve the disputes to whatever extent is needed to conduct the § 101 analysis, which may well be less than a full, formal claim construction.” Aatrix Software, Inc. v. Green Shades Software Inc. , 882 F.3d 1121, 1125 (Fed. Cir. 2018) ( internal citation omitted)

.

4 Sanderling sought construction of “distribution rule” and “few seconds or less” (which does not appear inclaim 1 of any of the asserted patents). It also now contends that the term “dynamic” needs construction , a term that does not appear in any of the claims. Case: 21-2173 Document: 49 Page: 8 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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resolving the motion to dismiss without first undertaking claim construction. See Cleveland Clinic Found. v. True Health Diagnostics LLC , 859 F.3d 1352, 1360 (Fed. Cir. 2017) (affirming grant of motion to dismiss not preceded by clai m construction where p atentee “provided no proposed construction of any terms or proposed expert testimony that would change the § 101 analysis ” ). 5 Accordingly, we conclude that the claims at issue in this appeal are directed to an abstract idea within the meaning of Alice . We will proceed to step two.

B

At the second step of the Alice inquiry, we must “look to see whether there are any ‘ additional features ’ in the claims that constitute an ‘ inventive concept .’” Intell. Ventures I LLC v. Cap. One Fin. Corp. , 850 F.3d 1332, 13 41 (Fed. Cir. 2017). Such inventive features must be more than “well

- understood, routine, conventional activity.” Id. Having undertaken this effor t, we again agree with the district court : the elements of the representative claim, individually and as an ordered combination, do not constitut e an inventive concept. “If a claim’s only ‘ inventive concept ’ is the application of an abstract idea using conventional and well -understoodtechniques, the claim has not been transformed into a patent

- eligible application of an abstract idea.” BSG Tech

5 Sanderling state s that the day before argument on Snap’s motion, Snap “accused plaintiff of relying on ‘ phantom unclaimed limitations ,’ ” such as “dynamic loading ,” and “[t]his argument alone should h ave precluded consideration of the motion to dismiss.” Appellant Br. at 41. Sanderling is wrong. The district court correctly concluded that Sander l ing failed to “explain where [‘dynamic loading’] is found in the claims or why it would not just be more of the same abstract idea.” Appx27. Case: 21-2173 Document: 49 Page: 9 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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LLC v. Buyseasons, Inc. , 899 F.3d 1281, 1290

- 91 (Fed. Cir. 2018). The distribution rule is just that : the application of the abstract idea using common computer components. See , e.g. , ’412 patent 7:30

- 34 (“[T]he term client terminal refers to any network connected device, including, but not limited t o, personal digital assistants (PDAs), tablets, electronic book readers, handheld computers, cellular phones, personal media devices (PMDs), smart phones, and/or the like.”) ; id. 12:54

- 55 (noting that client terminal may include processor and main memory) ; id. cl. 1 (claiming u se of “server,” “hardware processor,” and “mobile device”)

.
“ [T] he invocation of ‘ already

- available computers that arenot themselves plausibly asserted to be an advance

. . . amounts to a recitation of what is well

- understood, routi ne, and conventional. ’ ” Customedia Techs., LLC v. Dish Network Corp. , 951 F.3d 1359, 1366 (Fed. Cir. 2020). Sanderling’s contention that the claims improve “scalability and speed” is unavailing; even if true, “ claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept.” Intell. Venture s I , 792 F.3d at 1367.Sanderling argues that fact disputes should have precluded the district court from granting Sna p’s motion to dismiss. Sanderling failed, however, to timely identify

, prior to the district court’s ruling on the motion, any specific fact disputes

. The district court was correct to conclude that it “is not required to accept Plaintiff’s generalized a ssertions that factual considerations about the state of the art preclude a decision at the pleadings stage.” 6 A ppx 26.

6 It is within a district court’s discretion to require a party opposing a Rule 12 motion based on Section 101 toidentify, and articulate the significance of, specific fact disputes that purportedly make granting the motion improper. A patentee’s failure to do so should, as here, Case: 21-2173 Document: 49 Page: 10 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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Finally, Sanderling contends that the prosecution histories of the three patents

- in

- suit demonstrate that the claims contain an inven tive concept. For instance, Sanderling points to evidence that the Patent Office concluded, inallowing the ’866 patent, that the claimed inventions improve mobile device technology itself. Appellant Br. at 29

- 30 (citing Appx465)

. Sanderling further sug gests that thedistrict court’s “marginaliz[ation]” of the prosecution history deprived its patents of their statutory presumption ofvalidity and improperly put the burden of proof on Sanderling, the party opposing the motion to dismiss. Our review of th e record persuades us that the district court committed

no ne of these alleged error s

. There is no indication the district court failed to presume the patents were valid. And

c ourts are not required to defer to Patent Office determinations as to eligibili ty. See OIP Techs. , 788 F.3d at 1362 (“Patent eligibility under 35 U.S.C. § 101 is an issue of law reviewed de novo.”).
Thus, the asserted claims fail both steps of the Alice inquiry . The claims are patent ineligible.

IV In the Ninth Circuit, “[a]lthough leave to amend should be given freely, a district court may dismiss without leave where a plaintiff’s proposed amendments would fail to cure the pleading deficiencies and amendment would be futile.” Cervantes v. Countrywide Home Loans, Inc.

, 656 F.3d 1034, 1041 (9th Cir. 2011). Th e Ninth Circuit reviews a district court’s conclusion that amendment would be futile de novo

. See Juniper Networks, Inc. v. Shipley , 643 F.3d 1346, 1352 (Fed. Cir. 2011) (“Under Ninth Circuit law, dismissal with

pr ejudice is only appropriate when it is clear on de novo

preclude the court from denying the motion simply based on a vague pronouncement to the effect that “a factual dispute exists.” Case: 21-2173 Document: 49 Page: 11 Filed: 04/12/2023SANDERLING MANAGEMENT LTD

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review that the complaint could not be saved by amendment.”) (internal quotation marks omitted). Applying de novo review, we agree with the district court that Sanderling’s proposed amendment (which w asonly submitted after the court granted the motion to dismiss, and done so only in connection with the motion for reconsideration) would have been futile. No amendment to a complaint can alter what a patent itself states. In this case, then, o ur agreem ent with the district court as to what the patent discloses, and our agreement with the court’s application of the Alice test
, leads inexorably to the conclusion that amendment of the complaint would have been futile. Sanderling’s proposed amendment merely sought to add conclusory statements that the claimed steps were not well- known

, routine, and conventional. The district court

w as not required to credit such c onclusory allegations. See In re Tracht Gut, LLC , 836 F.3d 1146, 1150 (9th Cir. 2016)(“[T]he trial court does not have to accept as true conclusory allegations in a complaint

. . . . ”).
Nothing about the proposed amendment would have cured the deficienci es in the original complaint. Therefore, the district court did not err in finding amendment futile and denying Sanderling’s motion for reconsideration.

V We have considered Sanderling’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm the district court’s decision.

AFFIRMED

C OSTS

No costs. Case: 21-2173 Document: 49 Page: 12 Filed: 04/12/2023