SCANCOMM LLC v. BLOCK INC (2025)

OPINION AND ORDER

Before the Court is Defendant Block, Inc.’s (“Block”) Motion to Dismiss for Failure to Claim Patent Eligible Subject Matter Under 35 U.S.C. § 101 (“Motion,” Doc. 19).¹ For the reasons that follow, the Court grants the motion.

Background 2

Block seeks an order determining that the patent-in–suit, System for Communication from a User to the Publisher of a Scannable Label, U.S. Patent No. 11,003,878 (“the ’878 Patent,” Doc. 15-1),³ or at least Claim 19 of the ’878 Patent, is directed to ineligible subject matter under 35 U.S.C. § 101. Plaintiff ScanComm LLC (“ScanComm”) is the assignee of the ’878 Patent.

I. The ’878 Patent

The ’878 Patent is for a system for communication from a user to the publisher of a scannable label. In systems and methods prior to the inventions of the ’878 Patent, “[t]ypically, a smartphone having a built-in digital camera and a built-in QR scanning app functions as a QR code scanner and extracts (and optionally displays) the encoded digital data in its original format (numeric, alphanumeric, binary, or character).” (Doc. 15 ¶ 10) (citing ’878 Patent 2:35-39). Thus, as used prior to the ’878 patent, QR codes typically embodied directly the information encoded therein, such as addresses, URLs, or login credentials. (Id. ¶ 11) (citing ’878 Patent 2:51-3:10). The ’878 Patent indicates that according to one such use, “Users may ․ add a vCard contact to their device, open a URI, or compose an e-mail or text message after scanning QR codes.” (Id. ¶ 12) (citing ’878 Patent 2:25-27). By design, such systems permit the receiving user full access to “real world” contact information like telephone numbers or email addresses, which could potentially be abused. (Id.).

The ’878 Patent addressed this deficiency in the technological state of the art relating to QR codes. (Id. ¶ 13). For example, the ’878 Patent indicates that

In accordance with another aspect of the present inventions, a first individual seeking to establish a relationship (either personal or professional) with other individuals is able to initiate limited communication with those other individuals by means of an encoded label that is physically associated with the first individual, but that does not include any private information (such as email addresses or Facebook pages) that the first individual does not want to disclose to strangers. The encoded label may then be used by another individual to establish a private and/or anonymous communication with the first individual.

(Id.) (citing ’878 Patent 3:39-49).

The inventions claimed in the ’878 Patent departed from the prior use of QR codes, in that “at least some (and preferably all) of the stored information about a particular business or individual responsible for publishing the QR code is not directly embodied in the code, but rather is stored on the remote app or on the same secure remote server which is selectively accessible by the local apps of the respective parties.” (Id. ¶ 14) (citing ’878 Patent 4:57-63, 5:53-61). Instead of encoding this information directly into the QR code, the inventions of the ’878 Patent used QR codes combine them with the use of a “remote app” and “secure remote server.” (Id. ¶ 15). The remote server could then be used for secure, private communication between users. (Id. ¶ 16) (citing ’878 Patent 4:35-56). This allows greater flexibility in the amount of personal information that is shared among users. (Id.) For example, it allows a first user to receive text or email messages from a second user without the second user actually having the first user's phone number or email address. (Id.) (citing ’878 Patent 5:16-33, 7:53-68).

As the ’878 Patent explains, rather than embodying certain information about an individual or business directly into the QR code, that information may be “stored on the remote app or on the same secure remote server which is selectively accessible by the local apps of the respective parties.” (Id. ¶ 17) (’878 Patent 4:57-63; 5:53-61). Using this approach, the inventions of the ’878 Patent enabled, for example, “a customer (the consumer) [to] send a private text message, email, or message to the owner or management of a business (the publisher), without either party knowing the phone number or email address of the other party.” (Id. ¶ 18) (’878 Patent 4:29-34).

Similarly, according the inventions of the ’878 Patent, the

known information about the publisher may include first name, last name, phone number, address, email, Identification and/or Driver's License number, social security number, and photo, but the specified information disclosed to the unrelated consumer scanning the QR code associated with such an anonymous profile might be limited to first name, photo, and a temporary contact number which may be used to send a limited number of text messages during a limited time to the particular publisher.

(Id. ¶ 19) (’878 Patent 4:47-56).

In this way, the “encoded label” might be “associated” with an individual but need “not include any private information,” and could instead be used “to establish a private and/or anonymous communication with the first individual.” (Id. ¶ 20) (’878 Patent 3:39-49). Thus, the ’878 patent used QR codes in combination with a remote app and/or secure remote server, in order to establish secure two-way communication between parties, particularly where they “have not authorized the release of their respective names and phone numbers (or other public contact information) to the other party.” (Id. ¶ 21) (’878 Patent Abstract).

The ’878 patent used QR codes in a way which allowed “an anonymous profile that permits the disclosure of only a specific subset of the otherwise available information,” where certain contact “information is not directly embodied in the displayed code” as QR codes were previously used to do, “but rather is stored on a secure remote server which is selectively accessible.” (Id. ¶ 22) (’878 Patent Abstract).

These concepts are captured, for example, in the limitations of Claim 19, whereby the “scanned image of the code symbol” contains “a digital identification code of the second user in the form of digital data embedded in the code symbol,” which allows “secure two-way communication” between a “first user” and “second user,” whereby the “first user” can obtain “the contact information of the second user.” (Id. ¶ 23). Claim 19 uses a “secure server.” (Id. ¶ 24). According to Claim 19, “secure two-way communication” “comprises using a secure server” and “the secure server is configured to enable private communication.” (Id.). Claim 19 provides a flexibility not present in the prior use of QR codes. (Id. ¶ 25). While the contact information received according to Claim 19 could be real-world contact information like an email address or telephone number, it need not be. (Id.). As taught in the ’878 patent, the contact information could be a username. (Id.) (’878 Patent 9:4–6). But it would still be possible for a user to receive text messages or emails from another user via the secure server without sharing his or her phone number or email address through the use of the secure server. (Id.).

Thus, Claim 19 claims a “tangible, non-transitory, machine-readable medium having stored instructions thereon that when executed by one or more processors effectuate operations” involving the use of “a code symbol” in combination with an “application” and a “secure server.” (Id. ¶ 26). Claim 19's combination of these elements departed from the prior use of QR codes, such as obtaining a vCard containing real-world contact information like a phone number or email address. (Id. ¶ 27). Under the arrangement of the “code symbol,” “application” and “secure server” claimed in Claim 19, users could engage in private, secure communications without necessarily sharing real-world contact information that could be used (and potentially abused) outside the recited app and secure server. (Id.).

II. Defendant's Product

Defendant offers and distributes the well-known Cash App. (Doc. 15 ¶ 38). Cash App is a mobile payment service that allows users to transfer money to one another using a mobile phone app. (Doc. 15-2 at 3). Cash App supports QR code scanning. (Id.). After scanning a unique QR code of another user, a user scanning the QR code is redirected to a window, where the user can make money payments to another user:

(Id. at 2). Plaintiff asserts this technology infringes one or more of the claims of the ’878 Patent, including at least Claim 19. (Doc. 15 ¶ 40).

Legal Standard

“At the motion to dismiss stage, all well-pleaded facts are accepted as true, and the reasonable inferences therefrom are construed in the light most favorable to the plaintiff.” Bryant v. Avado Brands, Inc., 187 F.3d 1271, 1273 n.1 (11th Cir. 1999). In determining whether this action should be dismissed for failure to state a claim, Federal Rule of Civil Procedure 8(a)(2) provides that a pleading must contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Although detailed factual allegations are not necessarily required, the pleading must contain more than “ ‘labels and conclusions’ or ‘a formulaic recitation of the elements of a cause of action.’ ” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). Importantly, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’ ” Id. (quoting Twombly, 550 U.S. at 570).

Discussion

As the Court explains below, it can reach patent eligibility at the pleading stage. There is no fact dispute or claim construction issue that precludes a decision on eligibility. Claim 19 is representative for the purpose of the eligibility analysis. Claim 19 is directed to an abstract idea and does not contain an inventive concept that transforms it into patentable subject matter. The remainder of the Order explains why.

I. The Court can consider eligibility at the pleading stage.

Patent eligibility under 35 U.S.C. § 101 is a question of law. Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1373 (Fed. Cir. 2016). As such, a district court may determine patent eligibility “at the Rule 12(b)(6) phase ‘when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law.’ ” Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d 1376, 1384 (Fed. Cir. 2018) (quoting Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018)). That is, “plausible factual allegations may preclude dismissing a case under § 101 where, for example, ‘nothing on th[e] record ․ refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6).’ ” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed. Cir. 2016) (alterations in original) (quoting BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)).

The Federal Circuit has held that patentees who adequately allege their claims contain inventive concepts survive a section 101 eligibility analysis under Rule 12(b)(6). Aatrix Software, 882 F.3d at 1126–27. However, the Court is “not bound to accept as true a legal conclusion couched as a factual allegation.” Twombly, 550 U.S. at 555 (citation omitted). The Court is thus not required to accept as true conclusory allegations of eligibility. The Court has disregarded, for example, allegations that the ’878 Patent used inventive or unconventional concepts or methods, that its claims were directed to eligible subject matter, or that prior art was somehow “conventional” as compared to the ’878 Patent. (See generally Doc. 15). There is, therefore, no factual dispute as to whether “the claims of the ’878 Patent are inventive and unconventional” (Doc. 22 at 10) or whether storing information at the secure server rather than in the QR Code is inventive (Doc. 22 at 13); these are purely questions of law.

Likewise, there are no claim construction issues that pose a barrier to consideration of eligibility. ScanComm points to an alleged dispute about whether the claims require storing private information on a remote app or secure server as opposed to within the QR code itself, but the Court can just adopt ScanComm's interpretation that they do require that for the purpose of ruling on the Motion. Int'l Bus. Machs. Corp. v. Zynga Inc., 642 F. Supp. 3d 481, 489 (D. Del. 2022) (citing Aatrix Software, 882 F.3d at 1125).

Thus, the fact that the Court has not conducted “claim construction ․ [and] the statutory presumption of validity that exists once a patent issued ․ do not preclude dismissal of this case at the pleadings stage, nor do they preclude a finding of ineligibility.” WhitServe LLC v. Dropbox, Inc., 854 F. App'x 367, 373 (Fed. Cir. 2021). The Court concludes that this case is ripe for resolution on the Motion.

II. Claim 19 of the ’878 Patent is representative.

“In a § 101 analysis, courts may evaluate representative claims.” Automated Tracking Sols., LLC v. Coca-Cola Co., 723 F. App'x 989, 991 (Fed. Cir. 2018) (citing Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014)). In determining whether a claim is representative of other claims, courts have looked to whether claims are “substantially similar and linked to the same abstract idea.”⁴ Content Extraction, 776 F.3d at 1348 (quoting trial court opinion).

ScanComm only alleges that “Defendant has infringed one or more claims of the ’878 patent, including at least claim 19.” (Doc. 15 ¶ 40).⁵ It is the Court's normal practice in patent validity disputes to only address the claims actually at issue in the Complaint, and not conduct a representative claim analysis unless necessary to resolve the dispute. Implicit LLC v. Home Depot U.S.A., Inc., 676 F. Supp. 3d 1312, 1318 (N.D. Ga. 2023), appeal dismissed, No. 23-2118, 2023 WL 5528619 (Fed. Cir. Aug. 28, 2023). However, as Block points out in its opening brief, ScanComm has left open the possibility that it would seek an infringement judgment based on other claims in the patent. (Doc. 19 at 21 n.2). While the Federal Circuit has permitted generic allegations that certain of the defendant's products meet “each and every element of at least one claim” of the patent-in-suit, Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018), a consequence of generic allegations of infringement of one or more claims is that the Court cannot resolve the dispute without determining that Claim 19 is representative.

Claim 19 refers to:

A tangible, non-transitory, machine-readable medium having stored instructions thereon that when executed by one or more processors effectuate operations comprising:

obtaining, with a two dimensional code scanner of an application residing on a mobile device of a first user, a scanned image of a code symbol corresponding to a unique communication profile of a second user;

extracting from the scanned image of the code symbol, using the application of the mobile device of the first user, a digital identification code of the second user in the form of digital data embedded in the code symbol;

establishing, using an application of the mobile device of the first user and the digital identification code of the second user, a secure two-way communication with the second user; and

receiving, via the application of the mobile device of the first user, contact information of the second user and providing an option for the first user to store, via the application of the mobile device of the first user, the contact information of the second user, wherein the contact information of the second user includes information associated with the profile of the second user;

wherein establishing the secure two-way communication with the second user comprises using a secure server, and

wherein the secure server is configured to enable private communication.

(’878 Patent 10:22–49). Claim 20 is dependent of Claim 19. The ’878 Patent sets forth two other independent claims: Claims 1 and 13. Claim 1 differs from Claim 19 only in that it claims “[a] method for facilitating communications between users of a mobile application” comprising the same elements as Claim 19. (Id. 8:19–20).

Claim 13 is essentially the reverse of Claims 1 and 19. While those claims begin with “obtaining ․ a scanned image of a code symbol corresponding to a unique communication profile of a second user,” Claim 13 creates the unique communication profile, generates the code symbol, and displays the symbol ending with essentially the same steps of establishing a connection and transmitting (rather than receiving) the contact information:

13. A method for facilitating communication between users of a mobile application, comprising:

creating, using an application of a mobile device of a first user, a unique communication profile of a first user;

generating, using the application of the mobile device of the first user, a two dimensional code symbol corresponding to the unique communication profile of the first user;

displaying, using the application of the mobile device of the first user, the code symbol for scanning by a second user, wherein the code symbol includes a digital identification code of the first user in the form of digital data embedded in the code symbol;

establishing, using the application of the mobile device and the digital identification code of the first user, a secure two-way communication with the second user; and

transmitting via the application of the mobile device of the first user, contact information of the first user and providing an option for the second user to store, via an application of the mobile device of the second user, the contact information of the first user;

wherein establishing the secure two-way communication with the second user comprises using a secure server; and

wherein the secure server is configured to enable private communication.

(Id. 9:22–48). But the Court does not read the ’878 Patent as claiming as novel creating and generating the QR code; the Patent's preamble acknowledges as prior art the existence of “[v]arious QR code apps” which “are available that can be used for publishing (generating and printing) a new QR code” and that “[mobile phone users already] can generate and print their own QR codes for others to scan and use by visiting one of several pay or free QR code-generating sites or apps.” (Id. 2:12–15, 2:27–30). ScanComm alleges that “[i]nstead of encoding ․ information directly into the QR code, the inventions of the ’878 patent used QR codes in an inventive and unconventional manner, combining them with the use of a ‘remote app’ and ‘secure remote server.’ ” (Doc. 15 ¶ 15). In this respect, Claim 19 is also representative of Claim 13, because it relies on the use of a remote app and secure remote server in connection with the QR code.

Block persuasively argues that the dependent claims of the ’878 Patent do not meaningfully differ for eligibility purposes (Doc. 19-1 at 21); the Court agrees that they are “substantially similar and linked to the same abstract idea” for the reasons Block gave. Content Extraction, 776 F.3d at 1348.

Finally, ScanComm does not dispute that Claim 19 is representative other than arguing that the claims of the ’878 Patent are not directed to an abstract idea. It discusses dependent Claims 3 and 17 in its brief, but only in the context of those claims containing limitations that the “information of the second user that is used to establish communication be stored on the secure server.” (Doc. 22 at 12). But all the independent claims include an element that “establishing the secure two-way communication with the second user comprises using a secure server.” Accordingly, the Court will use Claim 19 as the representative claim for the remainder of the analysis.

III. Claim 19 is invalid under Section 101.

Under 35 U.S.C. § 101, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may be eligible for patent protection. The United States Supreme Court has recognized an “important implicit exception” to this definition of patentable subject matter, however. Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66, 70 (2012). Specifically, excepted from section 101’s reach are “laws of nature, physical phenomena, and abstract ideas.” Bilski v. Kappos, 561 U.S. 593, 601 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). This case concerns the final category of “abstract ideas.”

As a threshold matter, “an invention is not rendered ineligible for [a] patent simply because it involves an abstract concept.” Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014). The Supreme Court has provided a two-step test for determining whether a patent concerns an abstract idea. First is the determination of “whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims focus on a patent-ineligible concept, then the court must “consider the elements 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.” Id. (quoting Mayo, 566 U.S. at 79). This second step entails “a search for an inventive concept—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’ ” Id. (alteration in original) (quoting Mayo, 556 U.S. at 73). An “inventive concept must do more than simply recite ‘well-understood, routine, conventional activity.’ ” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (quoting Mayo, 556 U.S. at 79).

A. Step One of the Alice Analysis

Step one of the Alice inquiry asks “what the patent asserts to be the focus of the claimed advance over the prior art.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020) (punctuation omitted) (quoting Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019)). The Court must focus on the language of the claims at issue and consider that language in light of the patent's specification. Id.

The Federal Circuit has “consistently held that ․ claims reciting the collection, transfer, and publishing of data are directed to an abstract idea.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir. 2019). That court has:

explained that the “realm of abstract ideas” includes “collecting information, including when limited to particular content.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (collecting cases). We have also “treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Id. And we have found that “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Id. Here, the claims are directed to a combination of these abstract-idea categories. Specifically, the claims here are directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected. See id.

FairWarning, 839 F.3d at 1093–94.

The Federal Circuit has already addressed Section 101 eligibility in the context of scannable codes, including QR codes, in Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 907 (Fed. Cir. 2017). That case involved “methods whereby a sender affixes an identifier on the outer surface of a mail object” permitting “[c]omputers and networks ․ to communicate the information about the mail object's contents and its sender after the mail object is delivered.” Id. The Federal Circuit found that the claims failed Alice Step One because they “generically provide for the encoding of various data onto a mail object but do not set out how this is to be performed,” stating only “that various identifiers are affixed to a mail object, stored in a database, scanned from the mail object, and retrieved from the database.” Id. at 910. There was “no description of how the unique identifier is generated, or how a unique identifier is different from a personal name, or return address.” Id. And, the court added, “[t]he fact that the sender generates a barcode, which itself is not claimed, does not render the idea any less abstract.” Id. Relevant here, to the extent that the claims were limited by use of a QR code, the court noted that the “method is not limited to any particular technology of generating, printing, or scanning a barcode, of sending a mail object, or of sending the recipient-specific information over a network.” Id. at 911. The court thus held that “the claims embrace the abstract idea of using a marking affixed to the outside of a mail object to communicate information about the mail object, i.e., the sender, recipient, and contents of the mail object.” Id.

Like Secured Mail, the ’878 Patent generically claims generating and scanning QR codes which encode and retrieve data in a server. (’878 Patent 10:22–49) (“extracting from the scanned image of the code symbol ․ a digital identification code ․ establishing, using ․ the digital identification code of the second user, a secure two-way communication ․ using a secure server”). The Patent contains “no description of how the unique identifier is generated” and does not claim the generation of the barcode itself. Secured Mail, 873 F.3d at 910. To put it another way, there is nothing inventive about how the QR code is generated or used that enables secure two-way communication. The QR code is used in its conventional sense: to encode and transmit data.

The Federal Circuit did not see “how a unique identifier is different from a personal name, or return address.” Id. ScanComm makes two arguments to the contrary here, neither are persuasive. First, it argues that using the digital identification code “ ‘permits the disclosure of only a specific subset of the otherwise available information,’ where certain contact ‘information is not directly embodied in the displayed code.’ ” (Doc. 22 at 6). That may be so, but the method only does so by storing that information or its equivalent and retrieving it based on the digital identification code, which is akin to “organizing and accessing records through the creation of an index-searchable database,” something that the Federal Circuit has held “includes longstanding conduct that existed well before the advent of computers and the Internet.” Intell. Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017); see also ThroughTEK Co. v. Reolink Innovation Inc., 730 F. Supp. 3d 92, 104 (D. Del. 2024) (“[C]laim 12 is directed at the abstract idea of using an image (such as a barcode or QR code) to convey identification information needed to establish a communication link (a P2P connection).”), appeal docketed No. 24-1773 (Fed. Cir. May 3, 2024).

Second, ScanComm argues that the Patent's method “[i]mprov[es] security” which “can be a non-abstract computer-functionality improvement,” but the Patent only does so by substituting the actual information for an identifier which is used to pull up profile information from the secure server, hardly “a specific technique that departs from earlier approaches to solve a specific computer problem.” Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1348 (Fed. Cir. 2018).

Finally, ScanComm's reliance on Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-CV-00980-JRG, 2018 WL 7823098, at *4 (E.D. Tex. May 10, 2018) actually harms its case. That case distinguished Secured Mail because the invention there was “directed towards a technological solution to a technological problem, namely, the elimination of a previously necessary third party in ‘transferring bar code data between businesses and consumers using different hardware and software applications’ ” which “improves upon the previously existing technological structure that required sophisticated software developed by third parties by allowing users to easily transfer bar code data between parties that may be using different operating systems or software applications.” But Claim 19 requires the use of a third party to host a “secure server ․ configured to enable private communication” and Claim 13 specifies “[a] method for facilitating communication between users of a mobile application,” i.e., software. (’878 Patent 10:45–49, 9:22–23) (emphasis added).

Claim 19 is directed to an abstract idea and therefore fails Alice Step One.

B. Step Two of the Alice Analysis

This conclusion does not end the analysis, as the Court “must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72, 79). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’ ” Id. (quoting Mayo, 556 U.S. at 77). This “transformation into a patent-eligible application requires ‘more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’ ” Id. (quoting Mayo, 556 U.S. at 72). The Supreme Court has “described step two of this analysis as a search for an ‘inventive concept’—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. at 217–18 (citing Mayo, 566 U.S. at 72-73). But this search has important limitations.

“The introduction of a computer into the claims does not alter the analysis at ․ step two.” Id. at 222. “[S]ending data to a third-party ․ is itself an abstract idea, it cannot serve as an inventive concept.” Universal Secure Registry LLC v. Apple Inc., 10 F.4th 1342, 1350 (Fed. Cir. 2021) (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1349, 1352 (Fed. Cir. 2016)). So, ScanComm cannot rely on the fact that a mobile device obtains a scanned image of a symbol or converts the symbol into a digital identification code, or that the digital identification code is sent to a server to transform its abstract ideas into an inventive concept. And the use of a QR code to initiate communication was disposed of as conventional in Secured Mail. The Federal Circuit noted that “a ‘bi-directional communication line’ [was not] inventive; the idea of responding to or inquiring about mail using a personalized identifier through the use of a marking (such as an account number printed on a utility bill, or a check number printed on a check) has long been a conventional concept.” 873 F.3d at 912. Therefore, the Court finds that Claim 19 is patent ineligible under 35 U.S.C. § 101.

Conclusion

For the above reasons, it is

ORDERED that Defendant Block, Inc.’s Motion to Dismiss for Failure to Claim Patent Eligible Subject Matter Under 35 U.S.C. § 101 (Doc. 19) is GRANTED, and this civil action is DISMISSED WITH PREJUDICE.

The earlier-filed Motion to Dismiss (Doc. 11) is DENIED AS MOOT.

SO ORDERED this 21st day of March, 2025.

FOOTNOTES

1.   Block filed its Motion without first withdrawing its earlier-filed Motion to Dismiss (Doc. 11) in violation of Section III.m. of the Court's Standing Order (Doc. 5 at 32–33). The Court will deny the earlier-filed Motion to Dismiss as moot. See S. Pilot Ins. Co. v. CECS, Inc., 15 F. Supp. 3d 1284, 1287 (N.D. Ga.), order clarified, 15 F. Supp. 3d 1329 (N.D. Ga. 2013) (citing Dresdner Bank AG v. M/V Olympia Voyager, 463 F.3d 1210, 1215 (11th Cir. 2006); Fritz v. Standard Sec. Life Ins. Co., 676 F.2d 1356, 1358 (11th Cir. 1982)).

3.   As the ’878 Patent is central to the Amended Complaint and its authenticity is undisputed, the Court may consider the Patent, including the claims and specification, in ruling on the Motion. Johnson v. City of Atlanta, 107 F.4th 1292, 1300 (11th Cir. 2024); see also Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017) (“[T]his court has determined claims to be patent-ineligible at the motion to dismiss stage based on intrinsic evidence from the specification without need for ‘extraneous fact finding outside the record.’ ”) (citation omitted).

4.   In some ways, this dovetails with the Alice factors, as whether a claim is linked to the “same abstract idea” as another claim will often hinge on a determination about whether both claims are abstract and whether either claim has an inventive concept which distinguishes it from another abstract claim. See Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208 (2014).

5.   The Claim Chart attached to the Complaint only references Claim 19. (Doc. 15-2).

Victoria Marie Calvert, United States District Judge