NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

DATA SCAPE LIMITED,

Plaintiff-Appellant

v.

WESTERN DIGITAL CORPORATION, WESTERN 

DIGITAL TECHNOLOGIES, INC.,

Defendants-Appellees

______________________

2019-2161

______________________

Appeal from the United States District Court for the 

Central District of California in No. 8:18-cv-02285-DOCKES, Judge David O. Carter.

______________________

Decided: July 1, 2020

______________________

MARC AARON FENSTER, Russ August & Kabat, Los Angeles, CA, for plaintiff-appellant. Also represented by 

PAUL ANTHONY KROEGER, REZA MIRZAIE, BENJAMIN T.

WANG. 

 STANLEY MARTIN GIBSON, Jeffer Mangels Butler & 

Mitchell, Los Angeles, CA, for defendants-appellees. Also 

represented by GREGORY S. CORDREY, Irvine, CA. 

 ______________________

Case: 19-2161 Document: 58 Page: 1 Filed: 07/01/2020
2 DATA SCAPE LIMITED v. WESTERN DIGITAL CORPORATION

Before LOURIE, DYK, and CHEN, Circuit Judges.

CHEN, Circuit Judge.

Data Scape Ltd. owns U.S. Patent Nos. 8,386,581 (the 

’581 patent), 7,720,929 (the ’929 patent), 7,617,537 (the 

’537 patent), and 9,715,893 (the ’893 patent) (collectively, 

the Asserted Patents), which describe and claim methods, 

systems, and apparatuses for transferring music from one 

device onto another device. ’929 patent col. 2 ll. 43–47; ’893 

patent col. 1 ll. 41–44. The ’581, ’929, and ’537 patents all 

share a common specification and priority date and are collectively referred to as the Morohashi Patents. Data Scape 

Ltd. v. Western Digital Corp., No. 8:18-cv-02285-DOC-KES, 

2019 WL 4145245, at *1 (C.D. Cal. May 17, 2019) (ECF 41) 

(Motion to Dismiss). The ’893 patent is part of a separate, 

but similar patent family directed to the same subject matter. Id.

Data Scape sued Western Digital Corporation and 

Western Digital Technologies, Inc. (collectively, Western 

Digital) in the United States District Court for the Central 

District of California, alleging that Western Digital infringed the Asserted Patents. The district court held the

claims of the Asserted Patents invalid under 35 U.S.C. 

§ 101 and dismissed the complaint with prejudice. Motion 

to Dismiss at *8. Data Scape filed a motion to alter or 

amend the judgment and allow Data Scape to file an 

amended complaint, which the district court denied. Data 

Scape Ltd. v. Western Digital Corp., No. 8:18-cv-02285-

DOC-KES, 2019 WL 6391616, at *10 (C.D. Cal. July 12, 

2019) (ECF 53) (Motion to Alter). Data Scape appeals. We 

affirm.

BACKGROUND

A

The Morohashi patents describe the “cumbersome” 

problem, when seeking to transfer several songs from a 

Case: 19-2161 Document: 58 Page: 2 Filed: 07/01/2020
DATA SCAPE LIMITED v. WESTERN DIGITAL CORPORATION 3

server to a playback device, of “selecting pieces of music [] 

to be transferred piece by piece.” ’929 patent col. 2 ll. 24–

29. “[T]o solve this problem,” according to the Morohashi 

patents, “a list of selected pieces of music from the musical 

data stored in the music server is created and the selected 

musical data on the list is transferred in a batch operation.” 

Id. at col. 2 ll. 30–34. Like the Morohashi patents, the ’893 

patent is focused on the selective transfer of music files 

from a first storage medium to a second storage medium, 

in which the transfer process, to avoid unnecessary duplication, automatically checks to ensure that a particular file 

is not already stored on the second storage medium before 

transferring (i.e., “ripping”) that file. ’893 patent col. 1 l. 

63–col. 2 l. 4.

Claim 19 of the ’929 Morohashi patent is illustrative 

for purposes of this appeal:

19. A communication method, comprising the steps 

of:

editing management information of data to 

be transferred from an apparatus to an external apparatus by selecting certain data 

to be transferred, said management information stored in a storage medium of the 

apparatus, without regard to the connection of said apparatus and said external apparatus;

detecting, at the apparatus, whether said 

apparatus and said external apparatus are 

connected;

comparing at the apparatus, said edited 

management information with management information of data stored in said external apparatus; and

transmitting the selected data from said 

apparatus to said external apparatus based 

Case: 19-2161 Document: 58 Page: 3 Filed: 07/01/2020
4 DATA SCAPE LIMITED v. WESTERN DIGITAL CORPORATION

on said management information and a result of the comparison when said detection 

indicates that said apparatus and said external apparatus are connected.

’929 patent claim 19.

B

In December 2018, Data Scape filed a complaint in the 

Central District of California, alleging infringement of the 

Asserted Patents. Western Digital moved to dismiss the 

complaint under Federal Rule of Civil Procedure 12(b)(6), 

arguing that the claims of the Asserted Patents were invalid under 35 U.S.C. § 101 because the claims were directed 

to an abstract idea implemented using generic computer 

processes. The district court granted the motion to dismiss 

with prejudice. Motion to Dismiss at *8. Subsequently, 

Data Scape filed a motion to alter the judgment, requesting 

leave to amend the complaint. The district court denied 

the motion, finding the amended complaint futile. Motion 

to Alter at *10.

Data Scape timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 

DISCUSSION

On appeal, Data Scape argues that the claims of the 

Asserted Patents are not directed to an abstract idea and, 

in any event, include inventive concepts. Data Scape further contends that the district court erred in holding all the 

Asserted Patents’ claims ineligible when the district court 

and Western Digital only substantively addressed 

claim 19.

We review Rule 12(b)(6) dismissals under the law of the 

appropriate regional circuit. Aatrix Software, Inc. v. Green 

Shades Software, Inc., 882 F.3d 1121, 1124 (Fed. Cir. 

2018). The Ninth Circuit reviews such dismissals de novo. 

Barrett v. Belleque, 544 F.3d 1060, 1061 (9th Cir. 2008). 

Case: 19-2161 Document: 58 Page: 4 Filed: 07/01/2020
DATA SCAPE LIMITED v. WESTERN DIGITAL CORPORATION 5

Like the district court, we must “take all well pleaded allegations of material fact as true and construed in [Data 

Scape’s] favor.” Thompson v. Paul, 547 F.3d 1055, 1059 

(9th Cir. 2008) (citing Maduka v. Sunrise Hosp., 375 F.3d 

909, 911 (9th Cir. 2004)). 

Section 101 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, may obtain a patent therefor.” 35 U.S.C. § 101. 

But the provision “contains an important implicit exception: Laws of nature, natural phenomena, and abstract 

ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 

573 U.S. 208, 216 (2014) (internal quotation marks omitted). A claim is invalid under § 101 where (1) it is “directed 

to” a patent-ineligible concept, such as an abstract idea, 

and (2) the particular elements of the claim, considered 

“both individually and as an ordered combination,” do not 

add enough to “transform the nature of the claim into a patent-eligible application,” i.e., do not set forth an “inventive 

concept.” Alice, 573 U.S. at 217 (internal quotation marks 

omitted); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 

1166–67 (Fed. Cir. 2018).

A

Under the first step of the Alice inquiry, we agree with 

the district court that the claims of the Asserted Patents 

are directed to the abstract idea of selective data storage, 

transfer, and processing. Motion to Dismiss at *8. We have 

previously held that “[t]he concept of data collection, recognition, and storage is undisputedly well-known.” Content 

Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l 

Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir. 

2019) (“The asserted claims are drawn to the idea of capturing and transmitting data from one device to another.”). 

We have also held more specifically that “the concept of delivering user-selected media content to portable devices is 

Case: 19-2161 Document: 58 Page: 5 Filed: 07/01/2020
6 DATA SCAPE LIMITED v. WESTERN DIGITAL CORPORATION

an abstract idea.” Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). Despite 

Data Scape’s contentions, the Asserted Patents are not directed to any improvement in how a computer functions 

but merely use computers for their standard functions of 

storing, transferring, and processing data. See SAP, 898 

F.3d at 1168. The claims here do not differ materially from 

prior data transfer claims we have held were directed to 

abstract ideas. 

B

As for the second step of the Alice inquiry, the claims 

lack any inventive concept that would transform their subject matter into something more than the abstract idea. 

Claim 19 of the ’929 patent generically recites editing information, detecting the connection of one apparatus to another, comparing data on the two devices, and transmitting 

selected data from one apparatus to another. ’929 patent 

claim 19. Similar to previous cases, nothing in the claims 

“requires anything other than conventional computer and 

network components operating according to their ordinary 

functions.” Two-Way Media Ltd. v. Comcast Cable 

Comm’ns, LLC, 874 F.3d 1329, 1339 (Fed Cir. 2017); see 

also SAP, 898 F.3d at 1170; Affinity Labs, 838 F.3d at 1271. 

Such claims fail under Alice.

C

The district court did not err in holding all the claims 

of the Asserted Patents invalid. The court correctly determined that Western Digital substantively challenged all 

the Asserted Patents’ claims. Motion to Dismiss at *4; J.A. 

216–18 (explaining the various similarities in the Morohashi Patents of the different apparatus claims and that 

the method claims directly correspond to the functional 

language used in the apparatus claims), 220–21 (“Because 

the claims of the ’893 Patent recite the same generic steps 

of transferring selected data from one source to another as 

recited in [the] Morohashi patents, claim 19 of the ’929 

Case: 19-2161 Document: 58 Page: 6 Filed: 07/01/2020
DATA SCAPE LIMITED v. WESTERN DIGITAL CORPORATION 7

Patent is representative of the claims in the Asserted Patents.”), 225, 235–37. Although Data Scape disputes that 

claim 19 of the ’929 patent is representative, it presented 

no separate argument for the eligibility of any claim aside 

from claim 19 in its opposition to the motion to dismiss.

Data Scape’s only statement about the claims themselves 

merely states that “even a cursory review of the independent claims, much less their dependents, prove there is significant non-overlap in claim elements in the Morohashi 

patent family alone—and very little overlap at all between 

that family and the claims of the Hirano ’893 patent.” Id.

at 304. Because Data Scape did not present any “meaningful argument for the distinctive significance of any claim 

limitations” not found in claim 19, the district court did not 

err in treating claim 19 as representative. Berkheimer v. 

HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018).

The district court also did not err in denying Data 

Scape leave to amend its complaint, finding that it would 

have been futile. We agree with the district court that Data 

Scape’s “amendments do not remedy the deficiencies in its 

Complaint” and that as such Data Scape “failed to demonstrate that leave to amend would have been anything but 

futile.” Motion to Alter at *10. For example, Data Scape’s 

citations to patents from other companies citing various 

Data Scape patents do nothing to suggest the Asserted Patents accomplished a technical solution. See, e.g., J.A. 844–

45 (citing U.S. Patent No. 7,546,353; and U.S. Patent Application Nos. 2006/0288036 and 2008/0086494). These patents merely happen to cite similar Data Scape patents, 

and in one case one of the Asserted Patents, and discuss 

challenges in the technical space. Moreover, Data Scape 

proposed certain claim constructions that the district court 

correctly found would have led to the same result. Nothing 

in Data Scape’s proposed amendments would create a factual issue sufficient to overcome a motion to dismiss, rendering the amended complaint futile. Flowers v. First 

Hawaiian Bank, 295 F.3d 966, 976 (9th Cir. 2002) (“A 

Case: 19-2161 Document: 58 Page: 7 Filed: 07/01/2020
8 DATA SCAPE LIMITED v. WESTERN DIGITAL CORPORATION

district court, however, does not abuse its discretion in 

denying leave to amend where amendment would be futile.”); see also Cellspin, 927 F.3d at 1317–18 (requiring 

“plausible and specific factual allegations that aspects of 

the claims are inventive” to defeat a motion to dismiss).

CONCLUSION

We have considered Data Scape’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm the district court’s judgment.

AFFIRMED

Case: 19-2161 Document: 58 Page: 8 Filed: 07/01/2020