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Yes - and here are a few more FACTS:
Apple made a lame, and unnecessary attempt to push the "reset" button and get the entire IPR scenario where they LOST on a clean sweep of 8 IPRs thrown out. AND FAILED. This failure and REVALIDATION of Voip Pal's patents happened AFTER Judge Koh dismissed the case on these same patents - which is being appealed. 8 IPR Sweep REVALIDATED. Period.
It is an irrefutable fact, simply by the very nature of the PTAB - as Patent Litigation is ALL that the PTAB does - that the PTAB is FAR SUPERIOR and better suited to understand, evaluate and rule upon the complexities and validities of patents. Something, as Emil stated quite elonqently in his recent article: Patent matters have no business being looked at in a generalized court by jurists who lack the specialized experience to comprehend their complexities.
Fact: The entire, corrupt system of cancelling patents in favor of big business is ON TRIAL currently, at both the Congressional and Supreme Court levels, with the very foundation of which Judge Koh, and other judges have used to "invalidate" patents (Alice) on trial for being revoked or revised.
In the next days, to weeks, to months (but not years) THIS goliath battle will indeed take place and be decided for the US. And it is not just little Voip-pal - but the entire future of innovation in the US which is at stake.
Meanwhile - Europe holds no ridiculous controversy or impediments to patent enforcement - and Voip-pal is well positioned moving forward on that front.
FACT: I'm scooping up as many cheap shares as possible at these levels while others are distracted with Chicken Little Cries: The Sky is Falling!!!
Nonsense.
Yes! The comments are very enlightening -
You are so very right. No sense listening to historic accounts that remember only what they want to remember. As I recall, certain "voices" that claim otherwise were spelling gloom and doom, fraud and certain loss when I traded along the way at .24.... .35.... You know - to the tunes of $100's of thousands. And still, I sit, having made all that money back, more than willing to load again.
We are closer now, than we have ever, actually been when the stock was MUCH higher. The only difference is, now, the small pool of investors who have stayed behind this stock from the beginning realize that this journey isn't cut and dried. Law isn't just law - it takes many battles to enforce and prove...many shenanagins to endure from those who stand to lose once the patents are beyond reproach.
A standard tactic in oil companies is, after all, to pollute, cut corners and risk an ecological disaster - having already done the math to realize that today's profits and use of the monies will be a better financial bet than the loss of paying the fines, that they already have factored in paying later on.
It's reprehensible. Some would say all is fair - but others know better.
This is no different. Apple will pay someday. They already have accounted for it. This is a game. So the gamble is - when. And do we wait, or move on.
I wait. I add - I profit along the way. But what others do is their choice.
Thank you!
Thanks!
Thank you!! This is a very good day. The volume indicates that there are those who understand the significance - the pps indicates that many holders are, at this point, dumbfounded and confused about what is happening.
And I can hardly blame them. This process - not just with this stock, but with the entire patent infringement conundrum in the US is beyond complex. Emil's recent article is a pretty good characterization and assessment of the mess.
We are awaiting what promises to be a landmark case, with the potential to completely re-write and redirect the future of patent litigation before the Supreme Court. We have other cases being told, "hold your britches -we're already in the process of looking at this issue." -
Effectively, should that turn in the direction many patent litigation experts are anticipating - the questions before Judge Koh, and the appeal on the first case become moot - and, properly, are tossed back to the PTAB, where they belong in the first place, so that legal specialists in the patent arenas can decide patentability, not general courts. Now that the PTAB, following the clean sweep, and Apple's weak effort to overturn that well-considered decision has finally decided to deny Apple's request for rehearing - the matter is settled.
That today's news didn't cause an immediate pps climb is an indicator of confusion and investor fatigue. Nothing more. Wait for it. The delayed action, as the reality of this scenario is fully understood...will be like grace in slow motion. Turning into a lovely and beautiful thing.
Now - onto the birthday cake!
And this announcement comes... on my Birthday. Coincidence? I think not. Somebody up there likes me -
Love it. Now there is some unfettered truth.
Nope - still very much alive, in filed appeal. First rulings get overturned all the time - actually, more often than not in this arena. It's actually expected. Appeal is scheduled. The other lawsuit just got their attempt at dismissal DENIED as MOOT as in ... well, you know: Moot.
Not a problem - an opportunity!!
This is the patent, and lawsuit, correct? where yesterday's win happened:
https://portal.unifiedpatents.com/litigation/California%20Northern%20District%20Court/case/5:18-cv-07020
Alexa - Hmmm -
Me: "Alexa which stock ticker made the most money for me this year?"
Alexa: "According to your trading account it was VPLM"
Me: Thank you Alexa
Your opinion, however elegant, is noted. Meanwhile, The Supreme Court, and nation awaits the opinion from the Solicitor General to put an end to Alice for good. Denial of that?
https://wlflegalpulse.com/2019/02/19/will-a-scotus-grant-in-berkheimer-v-hp-finally-get-alice-out-of-wonderland/
It's anything but dead. Anything but dismissed. Stay tuned. The underlying concepts are being debated at the highest levels and smart money in IP circles is on the end of Alice. Meanwhile... .02 bargains.
The very basis and premise of Judge Koh's arguments are in question at the highest court in the land. That's my point, my friend. Argument, therefore, of particulars in this case would be as extraneous as taking the time to argue whether a comma, or a semicolon was more appropriate in the sentence: The house is on fire, water needed. or The house is on fire; water needed.
The point is: THE HOUSE IS ON FIRE .... PLEASE BRING WATER!
My 2 cents.
You are correct BigRaj - 100%
if I had NOT made an offer, and there were people on the internet talking about it back and forth for weeks - speculating, calling me all sorts of names - examining over and over - and questioning my motives, intelligence - my very integrity for doing so - and not on little, obscure, micro-chat boards, but rather on major news outlets, like Reuters - you can bloody well bet that I would have something or other, in particular to say if I could simply deny it....
Me Thinks The Protestors Doth Protest Too Much -
Why shall we stop there? It's a Friday in May, afterall... Why don't we dispute the existence of taxation, and debate whether or not it is a made up concept designed to just confuse us???
Not surprising - Maybe we should look at her investment portfolio... and those of her relatives. Heck, former PTAB Director Michelle Lee didnt feel there was any conflict of interest in having a beneficial interest in the winning side - Maybe it extends further than we imagined...
That doesn't make any sense. You see, if a company were to do a press release on an offer which had been rejected prior to a significant event that changed the playing field, and did not include information regarding the change of circumstances, they would effectively be committing SEC fraud. They aren't going to do that. So speculation that this is, indeed, possibly the case is moot and ludicrous. This was an offer that was presented and rejected within the current scope of events as presented as public knowledge. I assure you.
The latest update indicates that the appeal process can take up to a year. I know that many here are groaning over that bit - but you are correct in saying, "a blessing in disguise". What is needed - sorely - is for the case that is currently before the Supreme Court to be settled, once and for all putting this Alice nonsense that has caused horrific disruption in the ability for real inventors to protect inventions and enforce their patents - thus stifling innovation in the US. There are major advances happening in medicine and technology throughout the world. Not in the US. Why? Because the greed of an administration that favored big business over individual inventors put a process in place that made it so.
This is being corrected. Meanwhile, Voip-Pal needs to delay, and bide it's time until that social correction in play is complete, so that they can prevail in the US.
There is NO such obstacle in Europe or India. Therefore, Voip-pal is correct in turning the focus to Germany, as a start, while the USA gets it's act together.
Not dead in the water by a longshot. A setback, but one that can and will be overcome. And a vital case pending before the Supreme Court which will effectively make all of Apple's protestations null and void - restoring to Voip-Pal, the full weight and power of it's patent portfolio. So now, while we sit in the .02's might be a great time to consider some very low priced shares. JMHO
It's also very important for people to understand - By Judge Koh gutting the meat out of Voip-Pal's argument (something I believe will be overturned), she eliminated what she needed to find in our favor. The PTAB has no such restriction. That testimony, which Judge Koh removed from her analysis is alive and well, and absolutely before the PTAB in their complete record - which was a big part of them granting and affirming the patents, denying the IPR... So, for those who think the PTAB will simply follow suit and nod to Judge Koh - you're wrong. They have the evidence before them that she disallowed. Wrongfully.
You're not going to get one. Emil is still working hard to keep moving forward. All inventors with patents face these challenges. It's part of the process. One can't win everything, all the time. This is being appealed, and there are significant grounds to do so. So an apology for hard work, patience and perseverance? Not not necessary.
Nope. Licensing is the solution. Licensing in Europe is the solution, with revenue coming in from enforceable patents and a process that is far superior and expedient for the inventor to protect his/her IP - in Europe.
Well stated.
Yep. It'll get remanded back to her court upon request, and she'll have to include that testimony. And that's ok. It will buy additional time for the Berkheimer case before the Supreme Court to make its way into settled case law.
Here's the part where it is clear that Silicon Valley Insiders got to the Judge. A key clarification in the argument that sealed the deal at the PTAB was the testimony of Dr. Mangione-Smith. She appears to have abused her judicial discretion in this case, counter to the public interest. What a court "may" do and what a court must do are two different things. A court "May" use discretion to eliminate evidence for procedural reasons. However, what it must do is to seek Justice and Equity in an even-handed application of the law. This entire Judicial Decision is written in a tone that appears to look for reasons to deny the patent rights to the Plaintiff, rather than to discern the facts of the matter. It will be appealed.
As an exhibit to the opposition, Plaintiff attached the Declaration of William Mangione-Smith,
an expert, in support of Plaintiff’s response to Apple’s IPR petition. ECF No. 76-5 (“MangioneSmith Declaration”). Plaintiff does not request judicial notice of the Mangione-Smith Declaration.
The Court will not consider the Mangione-Smith Declaration as part of its analysis because the
Declaration is extrinsic to the complaints and Patents. See, e.g., Evolutionary Intelligence, LLC v.
Sprint Nextel Corp., 137 F. Supp. 3d 1157, 1163 n.5 (N.D. Cal. 2015), aff’d, 677 Fed. App’x 679
(Fed. Cir. 2017) (“On such [Rule 12] motions, the court may only consider the complaint,
documents incorporated by reference in the complaint, and judicially noticed facts. Accordingly,
because the Taylor declaration meets none of these criteria, the court does not consider it.”).
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As you can see - it's complicated. One of the problems here is that the Judge disregarded the ENTIRE testimony at the PTAB of Dr. Mangione-Smith for a sketchy and improperly applied procedural reason - something that will likely be overturned upon objection to it in appeal. Don't lose hope. This is only round 1 of this match.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
VOIP-PAL.COM, INC.,
Plaintiff,
v.
APPLE INC,
Defendant.
Case No. 18-CV-06217-LHK
ORDER GRANTING CONSOLIDATED
MOTIONS TO DISMISS
VOIP-PAL.COM, INC.,
Plaintiff,
v.
AT&T CORP,
Defendant.
Case No. 18-CV-06177-LHK
VOIP-PAL.COM, INC.,
Plaintiff,
v.
TWITTER INC.,
Defendant.
Case No. 18-CV-04523-LHK
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VOIP-PAL.COM, INC.,
Plaintiff,
v.
VERIZON WIRELESS SERVICES, LLC,
et al.,
Defendant.
Case No. 18-CV-06054-LHK
Plaintiff Voip-Pal.Com, Inc. filed 4 related patent infringement suits against Defendants
Apple Inc. (“Apple”), AT&T Corp. (“AT&T”), Twitter Inc. (“Twitter”), and Cellco Partnership
d/b/a/ Verizon Wireless Services, LLC (“Verizon”) (collectively, “Defendants”). Plaintiff alleges
that Apple, AT&T, and Verizon (but not Twitter) infringe various claims of U.S. Patent No.
8,542,815 (“the ’815 Patent”) to Perreault et al. Plaintiff also alleges that all Defendants infringe
various claims of U.S. Patent No. 9,179,005 (“the ’005 Patent”) to Perreault et al. In all 4 related
cases, each Defendant filed an omnibus motion to dismiss, thus resulting in 4 omnibus motions to
dismiss. However, the briefing on the omnibus motions to dismiss, Plaintiff’s oppositions, and
Defendants’ replies is identical in all 4 cases. Thus, for ease of reference and unless otherwise
specified, the Court refers to documents filed in the Twitter litigation, Case No. 18-CV-04523-
LHK.
Before the Court is Defendants’ consolidated motions to dismiss, which contend that the
asserted claims of the patents-in-suit fail to recite patent-eligible subject matter under 35 U.S.C. §
101. ECF No. 71 (“Mot.”). Having considered the submissions of the parties, the relevant law, and
the record in this case, the Court GRANTS Defendants’ consolidated motions to dismiss the
asserted claims of the ’815 Patent and the ’005 Patent.
I. BACKGROUND
Factual Background
1. The Parties
Plaintiff is a Nevada corporation with its principal place of business in Bellevue,
Washington. ECF No. 65 at ¶ 5. Plaintiff “owns a portfolio of [Voice over Internet Protocol]
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patents and patent applications.” Id. at ¶ 1.
Defendant Twitter is a California corporation with its principal place of business in San
Francisco, California. Id. at ¶ 6. Twitter uses and sells “messaging services using messaging
application software and/or equipment, servers and/or gateways that route messages to computing
devices such as smartphones, tablet computers, and personal computers.” Id. at ¶ 23.
Defendant Apple is a California corporation with its principal place of business in
Cupertino, California. Case No. 18-CV-06217-LHK, ECF No. 11 at ¶ 7. Apple “provides,
supports and/or operates messaging technology, including iMessage, an instant messaging service
supported by Apple’s Messages application and computer infrastructure that allows smartphone
and desktop users to send messages including text, images, video and audio to other users.” Id. at ¶
15.
Defendant AT&T is a Delaware corporation with its principal place of business in
Bedminster, New Jersey. Case No. 18-CV-06177-LHK, ECF No. 59 at ¶ 2. AT&T “supports and
operates a messaging platform . . . [that] allows smartphone users to send messages including text,
images, video and audio to others.” Id. at ¶ 40. AT&T also offers Voice over Internet Protocol
products and services “utilizing equipment at the customer or business premises and a collection
of servers and gateways.” Id. at ¶ 41. Moreover, AT&T “supports a Wi-Fi based calling platform .
. . [that] allows a mobile device to initiate a communication such as a call or text message between
a caller, or a first participant, and a callee, or a second participant, using an AT&T assisted voice
over IP (“VoIP”) system.” Id. at ¶ 42.
Defendant Verizon is a Delaware corporation with its principal place of business in
Basking Ridge, New Jersey. Case No. 18-CV-06054-LHK, ECF No. 119 at ¶ 2. Verizon “supports
and operates a messaging platform . . . [that] allows smartphone users to send messages including
text, images, video and audio to others.” Id. at ¶ 40. Verizon also offers Voice over Internet
Protocol products and services “utilizing equipment at the customer or business premises and a
collection of servers and gateways.” Id. at ¶ 41. Moreover, Verizon “supports a Wi-Fi based
calling platform . . . [that] allows a mobile device to initiate a communication such as a call or a
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text message between a caller, or a first participant, and a callee, or a second participant, using a
[Verizon] assisted voice over IP (“VoIP”) system.” Id. at ¶ 42.
2. The Patents
The ’815 Patent and the ’005 Patent (collectively, the “Patents”) are both titled “Producing
Routing Messages for Voice over IP Communications.” ’815 Patent at front page; ’005 Patent at
front page. The ’815 Patent was filed on November 1, 2007 and was issued on September 24,
2013. The ’005 Patent was filed on August 13, 2013 and was issued on November 3, 2015. The
’815 Patent and the ’005 Patent share the same specification.
Defendants posit that the asserted claims of the Patents fall within two categories: “multinetwork claims” and “single-network claims.” Mot. at 2. Defendants argue that asserted claims 1,
7, 12, 27, 28, 72, 73, 92, and 111 of the ’815 Patent and claims 49 and 73 of the ’005 Patent are
multi-network claims. Id. at 2, 2 n.2. Moreover, Defendants argue that asserted claims 74, 75, 77,
78, 83, 84, 94, 96, and 99 of the ’005 Patent are single-network claims. Id. at 2, 2 n.3. The
differences between the multi-network claims and the single-network claims will be explained
below, but for present purposes, the Court finds Defendants’ differentiation of the claims into 2
groups useful, and adopts Defendants’ groupings.
In addition, Defendants identify claim 1 of the ’815 Patent as representative of the multinetwork claims, an identification that Plaintiff does not dispute. Defendants identify claim 74 of
the ’005 Patent as representative of the single-network claims, an identification that Plaintiff also
does not dispute. Thus, the Court will adopt the parties’ identification of representative claims.
Claim 1 of the ’815 Patent shall be representative of the multi-network claims, and claim 74 of the
’005 Patent shall be representative of the single-network claims.
In general, the asserted claims of the Patents relate to the process of routing calls (either
voice or video) between a caller and a callee, in which calls are classified as either public network
calls or private network calls.
1
’815 Patent at 1:50-54. More specifically, the process of routing the
1 The Patents refer to “callee” to mean the recipient of a call. The Court adopts the Patents’ term of
art and will use “callee” to refer to a call recipient.
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call involves a computer “super node” routing a call based on “identifiers” associated with both
the caller and the callee. Id. at 1:54-56. Such identifiers might include what are essentially, in
layman’s terms, the phone numbers of the caller and callee. Id. at 2:17-25.
A super node contains a call routing controller, which controls communication between a
caller and a callee. 3:47-52. A caller sends a request to establish a call to the call routing
controller. 1:54-56. The request includes the callee’s identifier. Id. The call routing controller then
compares the callee identifier with attributes of the caller identifier. Id. at 2:8-25. Based on the
comparison between the callee identifier and the caller identifier, the call routing controller
determines whether the callee is a subscriber to a private network. Id. at 2:45-47, 2:65-3:2. If the
callee is a subscriber to a private network, then the call routing controller produces a routing
message so that the call is directed to the callee’s private network super node. Id. at 1:59-62,
14:24-34. If the callee is not a subscriber to a private network, then the call routing controller
produces a routing message directing the call through a gateway to a public network. Id. at 1:62-
64.
Figure 1 is helpful to understanding the invention. “[A] system for making voice over IP
telephone/videophone calls is shown generally at [item] 10.” Id. at 12:50-51. Item 11 is a super
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node located, for example, in Vancouver, Canada. Id. at 12:53-55. The Vancouver super node
includes a call controller (item 14), a routing controller (item 16), a database (item 18), a
voicemail server (item 19), and a media relay (item 9). Id. at 13:10-13. Users of the system such as
a Vancouver user (item 12) and a Calgary user (item 15) communicate with the Vancouver super
node using the internet (item 13). Id. at 13:17-21. It is important to note that the super node is
implemented via a computer. According to the specification, it “may be implemented as separate
modules on a common computer system or by separate computers, for example.” Id. at 13:13-14
Assume that the Vancouver user (item 12) is attempting to call the Calgary user (item 15).
The caller (item 12) will send a message to the Vancouver super node (item 10) and in response,
the call controller (item 14) sends a call routing controller request to the routing controller (item
16). Id. at 14:10-18. The routing controller (item 16) then queries the database (item 18), and then
produces a routing message which is sent back to the call controller (item 14). Id. The call
controller (item 14) communicates with the media relay (item 9) to create a communications link
with the callee (item 15) through the media relay (item 9) “of the same node, a different node or to
a communications supplier gateway” (item 20). Id. at 14:17-23.
As aforementioned, Plaintiff asserts the multi-network claims,2
of which claim 1 of the
’815 Patent is representative. Moreover, Plaintiff asserts the single-network claims,3
of which
claim 74 of the ’005 Patent is representative.
Claim 1 of the ’815 Patent recites:
1. A process for operating a call routing controller to facilitate communication between
callers and callees in a system comprising a plurality of nodes with which callers and callees are
associated, the process comprising:
in response to initiation of a call by a calling subscriber, receiving a caller identifier and a
callee identifier;
2 Claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the ’815 Patent and claims 49 and 73 of the ’005
Patent.
3 Claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005 Patent.
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locating a caller dialing profile comprising a username associated with the caller and a
plurality of calling attributes associated with the caller;
determining a match when at least one of said calling attributes matches a portion of said
callee identifier;
classifying the call as a public network call when said match meets public network
classification criteria and classifying the call as a private network call when said match meets
private network classification criteria;
when the call is classified as a private network call, producing a private network routing
message for receipt by a call controller, said private network routing message identifying an
address, on the private network, associated with the callee;
when the call is classified as a public network call, producing a public network routing
message for receipt by the call controller, said public network routing message identifying a
gateway to the public network.
Id. at 36:14-38.
Claim 74 of the ’005 Patent recites:
74. A method of routing communications in a packet switched network in which a first
participant identifier is associated with a first participant and a second participant identifier is
associated with a second participant in a communication, the method comprising:
after the first participant has accessed the packet switched network to initiate the
communication, using the first participant identifier to locate a first participant profile comprising
a plurality of attributes associated with the first participant;
when at least one of the first participant attributes and at least a portion of the second
participant identifier meet a first network classification criterion, producing a first network routing
message identifying an address in a first portion of the packet switched network, the address being
associated with the second participant, the first portion being controlled by an entity; and
when at least one of the first participant attributes and at least a portion of the second
participant identifier meet a second network classification criterion, producing a second network
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routing message for receipt by the controller, the second network routing message identifying an
address in a second portion of the packet switched network, the second portion not controlled by
the entity.
’005 Patent at 43:41-65.
As aforementioned, the parties have divided the asserted claims into two categories: the
multi-network claims, and the single network claims. The difference between the two types of
claims lies within the claims’ preambles. For instance, claim 1 of the ’815 Patent, which is
representative of the multi-network claims, discloses a “call routing controller to facilitate
communication between callers and callees in a system comprising a plurality of nodes.” ’815
Patent at 36:14-16 (emphasis added). Thus, claim 1 requires a call routed through a plurality of
nodes, which is why it is a multi-network claim; each node comprises a different network. On the
other hand, claim 74 of the ’005 Patent, which is representative of the single-network claims,
discloses “routing communications in a packet switched network.” ’005 Patent at 43:41-42
(emphasis added). Thus, claim 74 of the ’008 Patent refers to routing communications through a
single packet switched network, as opposed to multiple nodes (i.e. networks) like in claim 1 of the
’815 Patent.
Procedural History
Plaintiff has filed suit against Twitter, Apple, Verizon, and AT&T. The parties filed
identical omnibus motions to dismiss, oppositions, and replies in all 4 cases. In addition, there are
various inter partes review proceedings before the Patent Trial and Appeal Board concerning the
patents-in-suit. The Court first discusses the IPR proceedings, then the district court suits against
Twitter, Apple, Verizon, and AT&T.
1. The IPR Proceedings
On June 15, 2016, Apple petitioned for inter partes review (“IPR”) of the ’005 Patent in
proceeding number IPR2016-01198, and for IPR of the ’815 Patent in proceeding number
IPR2016-01201. Both of Apple’s IPR petitions were granted. On the other hand, AT&T also filed
3 IPR petitions with the PTAB, which denied institution of AT&T’s petitions. ECF No. 77 at 4
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n.4. Verizon and Twitter do not appear to have filed IPRs of the ’005 and ’815 Patents. Id.
On November 20, 2017, the PTAB in Apple’s IPRs issued final written decisions rejecting
Apple’s obviousness arguments and upholding the validity of the ’005 and the ’815 Patents. See
IPR2016-01198, Paper 53; IPR2016-01201, Paper 54. However, during the pendency of both of
Apple’s IPR proceedings, Plaintiff’s former chief operating officer and chairman sent
unauthorized ex parte communications to the PTAB. IPR2016-01198, Paper 70 at 3. In light of
these ex parte communications, on December 21, 2018, the PTAB sanctioned Plaintiff by
allowing a new panel of the PTAB to reconsider the final written decisions on the ’005 and the
’815 Patents on rehearing. Id. at 15. The reconsideration proceedings are currently pending.
2. The Twitter Litigation
On October 6, 2016, Plaintiff first filed suit against Twitter in the District of Nevada. ECF
No. 1. On January 31, 2017, the District of Nevada granted the parties’ stipulation to stay the
Twitter case pending the outcome of the IPR proceedings instituted by Apple challenging the
validity of the ’815 and ’005 Patents. ECF No. 12. On January 26, 2018, the parties submitted a
joint status report representing that the Patent Trial and Appeal Board (“PTAB”) had issued final
written decisions in Apple’s IPR proceedings upholding the validity of the Patents. ECF No. 13.
The parties requested that the stay of the case be lifted. On February 27, 2018, the District of
Nevada lifted the stay. ECF No. 25.
On February 28, 2018, Twitter moved to change venue to the Northern District of
California. ECF No. 27. On July 23, 2018, the District of Nevada granted Twitter’s motion for
change of venue to the Northern District of California. ECF No. 41.
On November 15, 2018, this Court entered an order consolidating the Twitter action with
the separately-filed Apple, AT&T, and Verizon actions (discussed below) for pretrial purposes.
ECF No. 64. Also on November 15, 2018, Plaintiff filed a first amended complaint against
Twitter. ECF No. 65.
3. The Apple Litigation
On February 9, 2016, Plaintiff first filed suit against Apple in the District of Nevada. Case
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No. 18-CV-06217-LHK, ECF No. 1. On April 6, 2016, Plaintiff filed an amended complaint
against Apple. Id., ECF No. 6. The Apple litigation was also stayed pending resolution of the IPR
proceedings. Id., ECF No. 27. On October 5, 2018, the District of Nevada granted Apple and
Plaintiff’s stipulation to transfer the case to the Northern District of California. Id., ECF No. 46.
4. The Verizon and AT&T Litigation
On February 10, 2016, Plaintiff first filed suit against both Verizon and AT&T in the same
case in the District of Nevada. Case No. 18-CV-06177-LHK, ECF No. 1. On April 6, 2016,
Plaintiff filed an amended complaint. Id., ECF No. 2. On May 5, 2016, Plaintiff filed a second
amended complaint. Id., ECF No. 3. On July 29, 2016, the District of Nevada granted a stipulation
to stay the Verizon and AT&T case pending the IPR proceedings. Case No. 18-CV-06054-LHK,
ECF No. 31. On June 25, 2018, the District of Nevada granted an unopposed motion severing
AT&T from the Verizon suit. Case No. 18-CV-06177-LHK, ECF No. 4. On October 4, 2018, the
District of Nevada granted AT&T and Plaintiff’s stipulation to transfer the case to the Northern
District of California. Id., ECF No. 21. On November 15, 2018, Plaintiff filed a third amended
complaint asserting the Patents against only AT&T, with the Verizon suit proceeding separately.
Id., ECF No. 59.
After AT&T was severed from the Verizon suit, the Verizon suit proceeded separately. On
October 1, 2018, the District of Nevada granted Plaintiff and Verizon’s stipulation to transfer the
case to the Northern District of California. Case No. 18-CV-06054-LHK, ECF No. 89. On
November 15, 2018, Plaintiff filed a third amended complaint asserting the Patents against only
Verizon, with the AT&T suit proceeding separately. Id., ECF No. 119.
5. The Consolidated Motions to Dismiss
On January 10, 2019, Defendants, asserting that the patents-in-suit are directed to
unpatentable subject matter under 35 U.S.C. § 101, filed identical consolidated motions to dismiss
Plaintiff’s complaints. ECF No. 71 (“Mot.”); Case No. 18-CV-06217-LHK, ECF No. 75; Case No.
18-CV-06177-LHK, ECF No. 63; Case No. 18-CV-06054-LHK, ECF No. 123.
On February 7, 2019, Plaintiff filed identical oppositions. ECF No. 77; Case No. 18-CVCase 5:18-cv-06217-LHK Document 96 Filed 03/25/19 Page 10 of 45
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06217-LHK, ECF No. 81; Case No. 18-CV-06177-LHK, ECF No. 68; Case No. 18-CV-06054-
LHK, ECF No. 127. On February 12, 2019, Plaintiff filed identical corrected oppositions. ECF
No. 77 (“Opp.”); Case No. 18-CV-06217-LHK, ECF No. 83; Case No. 18-CV-06177-LHK, ECF
No. 69; Case No. 18-CV-06054-LHK, ECF No. 128.
4
On February 28, 2019, Defendants filed identical consolidated replies. ECF No. 78
(“Reply”); Case No. 18-CV-06217, ECF No. 84; Case No. 18-CV-06177-LHK, ECF No. 70; Case
No. 18-CV-06054-LHK, ECF No. 129.
On March 13, 2019, Plaintiff filed identical administration motions for leave to file a surreply. ECF No. 79; Case No. 18-CV-06217-LHK, ECF No. 91; Case No. 18-CV-06177-LHK,
ECF No. 71; 18-CV-06054-LHK, ECF No. 130. According to Civil Local Rule 7-3(d), once a
reply has been filed, “no additional memoranda, papers or letters may be filed without prior Court
approval.” The Court finds that the issues have been sufficiently briefed without needing to rely
on a sur-reply. Thus, the administrative motions for leave to file a sur-reply are DENIED.
II. LEGAL STANDARD
Motion to Dismiss Under Federal Rule of Civil Procedure 12(b)(6)
Pursuant to Federal Rule of Civil Procedure 12(b)(6), a defendant may move to dismiss an
action for failure to allege “enough facts to state a claim to relief that is plausible on its face.” Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged. The plausibility standard is not akin to a
‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted
4 As an exhibit to the opposition, Plaintiff attached the Declaration of William Mangione-Smith,
an expert, in support of Plaintiff’s response to Apple’s IPR petition. ECF No. 76-5 (“MangioneSmith Declaration”). Plaintiff does not request judicial notice of the Mangione-Smith Declaration.
The Court will not consider the Mangione-Smith Declaration as part of its analysis because the
Declaration is extrinsic to the complaints and Patents. See, e.g., Evolutionary Intelligence, LLC v.
Sprint Nextel Corp., 137 F. Supp. 3d 1157, 1163 n.5 (N.D. Cal. 2015), aff’d, 677 Fed. App’x 679
(Fed. Cir. 2017) (“On such [Rule 12] motions, the court may only consider the complaint,
documents incorporated by reference in the complaint, and judicially noticed facts. Accordingly,
because the Taylor declaration meets none of these criteria, the court does not consider it.”).
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unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted).
For purposes of ruling on a Rule 12(b)(6) motion, the Court “accept[s] factual allegations
in the complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving
party.” Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).
Nonetheless, the Court is not required to “‘assume the truth of legal conclusions merely because
they are cast in the form of factual allegations.’” Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir.
2011) (quoting W. Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981)). Mere “conclusory
allegations of law and unwarranted inferences are insufficient to defeat a motion to dismiss.”
Adams v. Johnson, 355 F.3d 1179, 1183 (9th Cir. 2004). Furthermore, “‘[a] plaintiff may plead
[him]self out of court’” if he “plead[s] facts which establish that he cannot prevail on his . . .
claim.” Weisbuch v. County of Los Angeles, 119 F.3d 778, 783 n.1 (9th Cir. 1997) (quoting
Warzon v. Drew, 60 F.3d 1234, 1239 (7th Cir. 1995)).
Motion to Dismiss for Patent Eligibility Challenges Under 35 U.S.C. § 101
Defendant’s motion argues that the patents-in-suit fail to claim patent-eligible subject
matter under 35 U.S.C. § 101 in light of the U.S. Supreme Court’s decision in Alice Corp. Pty.
Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). The ultimate question whether a claim
recites patent-eligible subject matter under § 101 is a question of law. Intellectual Ventures I LLC
v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017) (“Patent eligibility under § 101 is
an issue of law[.]”); In re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014) (same).
However, the Federal Circuit has identified that there are certain factual questions underlying the
§ 101 analysis. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed. Cir. 2018). Accordingly,
a district court may resolve the issue of patent eligibility under § 101 by way of a motion to
dismiss. See, e.g., Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir.
2017) (affirming determination of ineligibility made on 12(b)(6) motion); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345 (Fed. Cir. 2014)
(same).
Although claim construction is often desirable, and may sometimes be necessary, to
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resolve whether a patent claim is directed to patent-eligible subject matter, the Federal Circuit has
explained that “claim construction is not an inviolable prerequisite to a validity determination
under § 101.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266,
1273 (Fed. Cir. 2012). Where the court has a “full understanding of the basic character of the
claimed subject matter,” the question of patent eligibility may properly be resolved on the
pleadings. Content Extraction, 776 F.3d at 1349; see also Genetic Techs. Ltd. v. Bristol-Myers
Squibb Co., 72 F. Supp. 3d 521, 539 (D. Del. 2014), aff’d sub nom. Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369 (Fed. Cir. 2016).
Substantive Legal Standards Applicable Under 35 U.S.C. § 101
1. Patent-Eligible Subject Matter Under 35 U.S.C. § 101
Section 101 of Title 35 of the United States Code “defines the subject matter that may be
patented under the Patent Act.” Bilski v. Kappos, 561 U.S. 593, 601 (2010). Under § 101, the
scope of patentable subject matter encompasses “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof.” Id. (quoting
35 U.S.C. § 101). These categories are broad, but they are not limitless. Section 101 “contains an
important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice, 134 S. Ct. at 2354 (citation omitted). These three categories of subject matter
are excepted from patent-eligibility because “they are the basic tools of scientific and
technological work,” which are “free to all men and reserved exclusively to none.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (citations omitted). The
U.S. Supreme Court has explained that allowing patent claims for such purported inventions
would “tend to impede innovation more than it would tend to promote it,” thereby thwarting the
primary object of the patent laws. Id. However, the U.S. Supreme Court has also cautioned that
“[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Alice, 134 S. Ct. at 2354 (alteration, internal quotation marks, and
citation omitted). Accordingly, courts must “tread carefully in construing this exclusionary
principle lest it swallow all of patent law.” Id.
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In Alice, the leading case on patent-eligible subject matter under § 101, the U.S. Supreme
Court refined the “framework for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible applications of those
concepts” originally set forth in Mayo, 566 U.S. at 77. Alice, 134 S. Ct. at 2355. This analysis,
generally known as the “Alice” framework, proceeds in two steps as follows:
First, we determine whether the claims at issue are directed to one of those patentineligible concepts. If so, we then ask, “[w]hat else is there in the claims before
us?” To answer that question, we 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. We
have 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. (alterations in original) (citations omitted); see also In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016) (describing “the now familiar two-part test described by the [U.S.]
Supreme Court in Alice”).
2. Alice Step One—Identification of Claims Directed to an Abstract Idea
Neither the U.S. Supreme Court nor the Federal Circuit has set forth a bright-line test
separating abstract ideas from concepts that are sufficiently concrete so as to require no further
inquiry under the first step of the Alice framework. See, e.g., Alice, 134 S. Ct. at 2357 (noting that
“[the U.S. Supreme Court] need not labor to delimit the precise contours of the ‘abstract ideas’
category in this case”); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (observing that the U.S. Supreme Court did not “delimit the precise contours of the ‘abstract
ideas’ category” in Alice (citation omitted)). As a result, in evaluating whether particular claims
are directed to patent-ineligible abstract ideas, courts have generally begun by “compar[ing]
claims at issue to those claims already found to be directed to an abstract idea in previous cases.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
Two of the U.S. Supreme Court’s leading cases concerning the “abstract idea” exception
involved claims held to be abstract because they were drawn to longstanding, fundamental
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economic practices. See Alice, 134 S. Ct. at 2356 (claims “drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk” were directed to a patentineligible abstract idea); Bilski, 561 U.S. at 611-12 (claims drawn to “the basic concept of
hedging, or protecting against risk” were directed to a patent-ineligible abstract idea because
“[h]edging is a fundamental economic practice long prevalent in our system of commerce and
taught in any introductory finance class” (citation omitted)).
Similarly, the U.S. Supreme Court has recognized that information itself is intangible. See
Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Accordingly, the Federal Circuit
has generally found claims abstract where they are directed to some combination of acquiring
information, analyzing information, and/or displaying the results of that analysis. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094-95 (Fed. Cir. 2016) (claims
“directed to collecting and analyzing information to detect misuse and notifying a user when
misuse is detected” were drawn to a patent-ineligible abstract idea); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims directed to an abstract idea because
“[t]he advance they purport to make is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular assertedly inventive
technology for performing those functions”); In re TLI Commc’ns LLC, 823 F.3d at 611 (claims
were “directed to the abstract idea of classifying and storing digital images in an organized
manner”); see also Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases).
However, the determination of whether other types of computer-implemented claims are
abstract has proven more “elusive.” See, e.g., Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1345 (Fed. Cir. 2015) (“[P]recision has been elusive in defining an all-purpose
boundary between the abstract and the concrete[.]”). As a result, in addition to comparing claims
to prior U.S. Supreme Court and Federal Circuit precedents, courts considering computerimplemented inventions have taken varied approaches to determining whether particular claims
are directed to an abstract idea.
For example, courts have considered whether the claims “purport to improve the
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functioning of the computer itself,” Alice, 134 S. Ct. at 2359, which may suggest that the claims
are not abstract, or instead whether “computers are invoked merely as a tool” to carry out an
abstract process, Enfish, 822 F.3d at 1336; see also id. at 1335 (“[S]ome improvements in
computer-related technology when appropriately claimed are undoubtedly not abstract, such as a
chip architecture, an LED display, and the like. Nor do we think that claims directed to software,
as opposed to hardware, are inherently abstract[.]”). The Federal Circuit has followed this
approach to find claims patent-eligible in several cases. See Visual Memory LLC v. NVIDIA Corp.,
867 F.3d 1253, 1259–60 (Fed. Cir. 2017) (claims directed to an improved memory system were
not abstract because they “focus[ed] on a ‘specific asserted improvement in computer
capabilities’—the use of programmable operational characteristics that are configurable based on
the type of processor” (quoting Enfish, 822 F.3d at 1336)); McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (claims directed to automating part of a preexisting
method for 3-D facial expression animation were not abstract because they “focused on a specific
asserted improvement in computer animation, i.e., the automatic use of rules of a particular type”);
Enfish, 822 F.3d at 1335–36 (claims directed to a specific type of self-referential table in a
computer database were not abstract because they focused “on the specific asserted improvement
in computer capabilities (i.e., the self-referential table for a computer database)”).
Similarly, the Federal Circuit has found that claims directed to a “new and useful
technique” for performing a particular task were not abstract. See Thales Visionix Inc. v. United
States, 850 F.3d 1343, 1349 (Fed. Cir. 2017) (holding that “claims directed to a new and useful
technique for using sensors to more efficiently track an object on a moving platform” were not
abstract); Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048, 1050 (Fed. Cir. 2016)
(holding that claims directed to “a new and useful laboratory technique for preserving
hepatocytes,” a type of liver cell, were not abstract); see also Diamond v. Diehr, 450 U.S. 175,
187 (1981) (holding that claims for a method to cure rubber that employed a formula to calculate
the optimal cure time were not abstract).
Another helpful tool used by courts in the abstract idea inquiry is consideration of whether
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the claims have an analogy to the brick-and-mortar world, such that they cover a “fundamental . . .
practice long prevalent in our system.” Alice, 134 S. Ct. at 2356; see, e.g., Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1317 (Fed. Cir. 2016) (finding an email processing
software program to be abstract through comparison to a “brick-and-mortar” post office);
Intellectual Ventures I LLC v. Symantec Corp., 100 F. Supp. 3d 371, 383 (D. Del. 2015) (“Another
helpful way of assessing whether the claims of the patent are directed to an abstract idea is to
consider if all of the steps of the claim could be performed by human beings in a noncomputerized ‘brick and mortar’ context.” (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1353 (Fed. Cir. 2014)).
Courts will also (or alternatively, as the facts require) consider a related question of
whether the claims are, in essence, directed to a mental process or a process that could be done
with pencil and paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147 (Fed.
Cir. 2016) (claims for translating a functional description of a logic circuit into a hardware
component description of the logic circuit were patent-ineligible because the “method can be
performed mentally or with pencil and paper”); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011) (claim for verifying the validity of a credit card transaction over
the Internet was patent-ineligible because the “steps can be performed in the human mind, or by a
human using a pen and paper”); see also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (claims for computer-implemented system to enable
borrowers to shop for loan packages anonymously were abstract where “[t]he series of steps
covered by the asserted claims . . . could all be performed by humans without a computer”).5
Regardless of the particular analysis that is best suited to the specific facts at issue in a
case, however, the Federal Circuit has emphasized that “the first step of the [Alice] inquiry is a
5 One court has noted that, like all tools of analysis, the “pencil and paper” analogy must not be
unthinkingly applied. See Cal. Inst. of Tech. v. Hughes Commc’ns Inc., 59 F. Supp. 3d 974, 995
(C.D. Cal. 2014) (viewing pencil-and-paper test as a “stand-in for another concern: that humans
engaged in the same activity long before the invention of computers,” and concluding that test was
unhelpful where “error correction codes were not conventional activity that humans engaged in
before computers”).
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meaningful one, i.e., . . . a substantial class of claims are not directed to a patent-ineligible
concept.” Enfish, 822 F.3d at 1335. The court’s task is thus not to determine whether claims
merely involve an abstract idea at some level, see id., but rather to examine the claims “in their
entirety to ascertain whether their character as a whole is directed to excluded subject matter,”
Internet Patents, 790 F.3d at 1346.
3. Alice Step Two—Evaluation of Abstract Claims for an Inventive Concept
A claim drawn to an abstract idea is not necessarily invalid if the claim’s limitations—
considered individually or as an ordered combination—serve to “transform the claims into a
patent-eligible application.” Content Extraction, 776 F.3d at 1348. Thus, the second step of the
Alice analysis (the search for an “inventive concept”) asks whether the claim contains an element
or combination of elements that “ensure[s] that the patent in practice amounts to significantly
more than a patent upon the [abstract idea] itself.” 134 S. Ct. at 2355 (citation omitted).
The U.S. Supreme Court has made clear that transforming an abstract idea to a patenteligible application of the idea requires more than simply reciting the idea followed by “apply it.”
Id. at 2357 (quoting Mayo, 566 U.S. at 72). In that regard, the Federal Circuit has repeatedly held
that “[f]or the role of a computer in a computer-implemented invention to be deemed meaningful
in the context of this analysis, it must involve more than performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.’” Content Extraction, 776 F.3d at
1347-48 (alteration in original) (quoting Alice, 134 S. Ct. at 2359); see also Mortg. Grader, 811
F.3d at 1324-25 (holding that “generic computer components such as an ‘interface,’ ‘network,’
and ‘database’ . . . do not satisfy the inventive concept requirement”); Bancorp Servs., 687 F.3d at
1278 (“To salvage an otherwise patent-ineligible process, a computer must be integral to the
claimed invention, facilitating the process in a way that a person making calculations or
computations could not.”).
Likewise, “t is well-settled that mere recitation of concrete, tangible components is
insufficient to confer patent eligibility to an otherwise abstract idea” where those components
simply perform their “well-understood, routine, conventional” functions. In re TLI Commc’ns
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LLC, 823 F.3d at 613 (citation omitted); see also id. (ruling that “telephone unit,” “server,” “image
analysis unit,” and “control unit” limitations were insufficient to satisfy Alice step two where
claims were drawn to abstract idea of classifying and storing digital images in an organized
manner). “The question of whether a claim element or combination of elements is wellunderstood, routine and conventional to a skilled artisan in the relevant field is a question of fact”
that “must be proven by clear and convincing evidence.” Berkheimer, 881 F.3d at 1368. This
inquiry “goes beyond what was simply known in the prior art.” Id. at 1369.
In addition, the U.S. Supreme Court explained in Bilski that “limiting an abstract idea to
one field of use or adding token postsolution components [does] not make the concept patentable.”
561 U.S. at 612 (citing Parker v. Flook, 437 U.S. 584 (1978)); see also Alice, 134 S. Ct. at 2358
(same). The Federal Circuit has similarly stated that attempts “to limit the use of the abstract idea
to a particular technological environment” are insufficient to render an abstract idea patenteligible. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (internal quotation
marks and citation omitted); see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1366 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the
invention to a particular field of use or technological environment, such as the Internet.”).
In addition, a “non-conventional and non-generic arrangement of known, conventional
pieces” can amount to an inventive concept. BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). For example, in BASCOM, the Federal
Circuit addressed a claim for Internet content filtering performed at “a specific location, remote
from the end-users, with customizable filtering features specific to each end user.” Id. Because this
“specific location” was different from the location where Internet content filtering was
traditionally performed, the Federal Circuit concluded this was a “non-conventional and nongeneric arrangement of known, conventional pieces” that provided an inventive concept. Id. As
another example, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., the Federal Circuit held that
claims relating to solutions for managing accounting and billing data over large, disparate
networks recited an inventive concept because they contained “specific enhancing limitation[s]
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that necessarily incorporate[d] the invention’s distributed architecture.” 841 F.3d 1288, 1301 (Fed.
Cir. 2016), cert. denied, 138 S. Ct. 469 (Nov. 27, 2017). The use of a “distributed architecture,”
which stored accounting data information near the source of the information in the disparate
networks, transformed the claims into patentable subject matter. Id.
4. Preemption
In addition to these principles, courts sometimes find it helpful to assess claims against the
policy rationale for § 101. The U.S. Supreme Court has recognized that the “concern that
undergirds [the] § 101 jurisprudence” is preemption. Alice, 134 S. Ct. at 2358. Thus, courts have
readily concluded that a claim is not patent-eligible when the claim is so abstract that it preempts
“use of [the claimed] approach in all fields” and “would effectively grant a monopoly over an
abstract idea.” Bilski, 561 U.S. at 612. However, the inverse is not true: “[w]hile preemption may
signal patent ineligible subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” FairWarning, 839 F.3d at 1098 (alteration in original) (citation omitted).
III. DISCUSSION
Defendant’s motion to dismiss contends that the asserted claims of the patents-in-suit fall
within the patent-ineligible “abstract ideas” exception to § 101. The Court applies the Alice
framework described above to these claims. However, the Court need not individually analyze
every claim if certain claims are representative. See generally Alice, 134 S. Ct. at 2359-60 (finding
claims to be patent-ineligible based on analysis of one representative claim). The parties have
agreed that claim 1 of the ’815 Patent is representative of the multi-network claims, and claim 74
of the ’005 Patent is representative of the single-network claims.
First, the Court turns to the substantive Alice analysis of claim 1 of the ’815 Patent, then to
the substantive Alice analysis of claim 74 of the ’005 Patent. Lastly, the Court discusses whether
there are any factual allegations that preclude resolution of the instant motion under Federal Rule
of Civil Procedure 12.
Alice Step One for Claim 1 of the ’815 Patent—Whether the Claim is Directed to
an Abstract Idea
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Defendants argue that the asserted claims are directed to an abstract idea because: “(1) they
are written in a form free of specific tangible implementation and merely invoke computers as a
tool; (2) they are similar to claims found directed to abstract ideas in precedent from the Federal
Circuit and district courts; (3) they are directed to functions that could be performed in the human
mind or with pen and paper; (4) they are akin to long-standing human activity (switchboard
operations; and (5) they are not directed to improving the functioning of a computer itself.” Mot.
at 12. Plaintiff responds by arguing that “the asserted claims are not directed to an abstract idea,
but are instead generally directed to an improved call routing technology enabling better
interoperability of communication networks by, inter alia, evaluating a callee identifier provided
by a caller in conjunction with caller-specific ‘attributes.’” Opp. at 2. The Court agrees with
Defendants.
Step one of the Alice framework directs the Court to assess “whether the claims at issue are
directed to [an abstract idea].” Alice, 134 S. Ct. at 2355. The step one inquiry “applies a stage-one
filter to claims, considered in light of the specification, based on whether ‘their character as a
whole is directed to excluded subject matter.’” Enfish, 822 F.3d at 1335 (citation omitted). Thus,
the Court conducts its step one inquiry by first identifying what the “character as a whole” of
claim 1 of the ’815 Patent is “directed to,” and then discussing whether this is an abstract idea. In
distilling the character of a claim, the Court is careful not to express the claim’s focus at an unduly
“high level of abstraction . . . untethered from the language of the claims,” but rather at a level
consonant with the level of generality or abstraction expressed in the claims themselves. Enfish,
822 F.3d at 1337; see also Thales Visionix, 850 F.3d at 1347 (“We must therefore ensure at step
one that we articulate what the claims are directed to with enough specificity to ensure the step
one inquiry is meaningful.”).
The Court finds that claim 1 of the ’815 Patent is directed to the abstract idea of routing a
call based on characteristics of the caller and callee. Put in plain language, claim 1 discloses: (1)
“receiving a caller identifier and a callee identifier” after a call is initiated; (2) “locating a caller
dialing profile”; (3) matching the information in the “caller dialing profile” with information in the
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callee identifier; and (4) classifying the call either as a “public network call” or a “private network
call” based on “classification criteria” and producing the appropriate public network or private
network routing message to be received by a call controller. ’815 Patent at 36:14-38. Claim 1 is
abstract because first, it only discloses generalized steps to carry out generic functions, and
second, because there are long-standing practices analogous to the claimed steps.
1. Claim 1 Discloses Generalized Steps to Carry Out Generic Functions
The Federal Circuit has recognized that “[g]eneralized steps to be performed on a
computer using conventional computer activity are abstract.” RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (internal quotation marks omitted). For instance, the
Federal Circuit found that a patent claim for taking digital images using a telephone, storing the
images, then transmitting the images to a server which receives the images failed step one of Alice.
TLI Comm’cns, 823 F.3d at 610, 612. In explaining why the patent claim failed step one of Alice,
the TLI court wrote:
Contrary to TLI’s arguments on appeal, the claims here are not
directed to a specific improvement to computer functionality. Rather,
they are directed to the use of conventional or generic technology in
a nascent but well-known environment . . . . The specification does
not describe a new telephone, a new server, or a new physical
combination of the two. The specification fails to provide any
technical details for the tangible components, but instead
predominantly describes the system and methods in purely functional
terms. For example, the “telephone unit” of the claims is described as
having “the standard features of a telephone unit” . . . . Likewise, the
server is described simply in terms of performing generic computer
functions such as storing, receiving, and extracting data.
Id. In essence, the TLI court found that because the TLI patent failed to provide technical details
for the components, but instead described the system and methods “in purely functional terms,”
functions that were generic to a computer, the TLI patent claim failed step one of Alice. Id.
Here, claim 1 is akin to the TLI patent claim. Claim 1 describes the purported invention in
broad, generic, functional terms but fails to identify how those ends are achieved, with the
specification being no clearer.
There is no doubt that the “caller identifier” and the “callee identifier” are generic. Indeed,
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the specification concedes that the invention did not invent the “caller identifier” or the “callee
identifier.” Specifically, the specification discloses that “[t]he caller identifier field may include a
[publicly switched telephone network] number or a system subscriber username.” ’815 Patent at
17:13-15. Moreover, as examples of callee identifiers, the specification identifies “a callee
telephone/videophone number.” Id. at 14:49-50. Essentially, the caller and callee identifiers
consist of either a telephone number or a username. Neither a telephone number nor a username
can be considered unique to the ’815 Patent, as the specification admits.
Claim 1 proceeds to claim “locating a caller dialing profile.” Id. at 36:20-23. However, the
claim itself vaguely defines caller dialing profile as “comprising a username associated with the
caller and a plurality of calling attributes associated with the caller.” Id. The specification makes
clear that the ’815 Patent did not invent the caller dialing profile, but rather, the caller dialing
profile is comprised of various identificatory attributes of subscribers that are left undefined in the
claim and specification. See, e.g., id. at 18:1-4 (“Effectively the dialing profile is a record
identifying calling attributes of the caller identified by the caller identifier. More generally, dialing
profiles represent calling attributes of respective subscribers” (emphasis added).).
After “locating a caller dialing profile,” claim 1 proceeds to claim matching the
information in the caller dialing profile with information in the callee identifier. Id. at 36:23-25.
As discussed above, the callee identifier is essentially “a callee telephone/videophone number,” id.
at 14:49-50, which the ’815 Patent did not invent. The specification makes clear that this matching
process is not unique to the Patent either, especially as the ’815 Patent did not invent the callee
identifier or any of the information associated with the matching process, such as an area code.
See, e.g., id. at 2:8-10 (“Using the call classification criteria may involve comparing calling
attributes associated with the caller dialing profile with aspects of the callee identifier.”); id. at
2:17-19 (“Comparing may involve determining whether the callee identifier includes a portion that
matches an area code associated with the caller dialing profile.”); id. at 2:20-22 (“Comparing may
involve determining whether the callee identifier has a length within a range specified in the caller
dialing profile.”).
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Finally, the call is either classified as a “public network call” or a “private network call”
based on undefined “classification criteria,” and the appropriate public network or private network
routing message is sent to the call controller. Id. at 36:26-38. In essence, this step in claim 1
discloses classifying a call based on these “classification criteria,” then sending a message based
on that analysis. According to the specification, this process is as generically-implemented on a
computer as the previously-described steps: “The process involves, in response to initiation of a
call by a calling subscriber, receiving a callee identifier from the calling subscriber, using call
classification criteria associated with the calling subscriber to classify the call as a public network
call or a private network call and producing a routing message . . . .” Id. at 14:25-30; see also id. at
2:45-47 (“The process may involve classifying the call as a private network call when the reformatted callee identifier identifies a subscriber to the private network.”); id. at 2:48-50 (“The
process may involve determining whether the callee identifier complies with a pre-defined
username format and if so, classifying the call as a private network call.”); id. at 2:51-57 (“The
process may involve causing a database of records to be searched to locate a direct in dial (DID)
bank table record associating a public telephone number with the reformatted callee identifier . . .
and if a DID bank table record is not found, classifying the call as a public network call.”).
Claim 1 is similar to other claims that courts have found to be abstract. In West View
Research, LLC v. Audi AG, the Federal Circuit held that claims that “do not go beyond receiving
or collecting data queries, analyzing the data query, retrieving and processing the information
constituting a response to the initial data query, and generating a visual or audio response to the
initial data query” were directed to the abstract idea of collecting and analyzing information. 685
F. App’x 923, 926 (Fed. Cir. 2017). Claim 1 is akin to the West View Research court’s holding
that “retrieving and processing the information constituting a response to the initial data query”
was abstract. Id. Here, the initial data query involves locating the caller dialing profile and
matching information in the dialing profile with callee information. Then, based on the matching
information, a call is classified as a public network or a private network call and a routing message
is generated in response, like how in West View Research the information “constituting a response
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to the initial data query” led to “retrieving and processing the information” (i.e., matching
information in the dialing profile with callee information) and then “generating a . . . response”
(i.e., a routing message). Id.
Moreover, the claim does not provide for any specific implementation of the abstract idea.
The claim does not specify, for instance, the content of the caller and callee identifiers, the
technology that matches information in the caller dialing profile with information in the callee
identifier, what network classification criteria are used to classify the call as a public network or a
private network call, or how the classification is implemented. See Clarilogic, Inc. v. FormFree
Holdings Corp., 681 Fed. App’x 950, 954 (Fed. Cir. 2017) (“But a method for collection, analysis,
and generation of information reports, where the claims are not limited to how the collected
information is analyzed or reformed, is the height of abstraction” (emphasis added).). Rather, the
claim recites a generalized solution in broad, functional language—namely, “locating,”
“determining,” and “classifying,” a call based on a caller identifier and a callee identifier. See
Electric Power Grp., 830 F.3d at 1353-54 (“collecting,” “gathering,” “analyzing,” and
“presenting” information are “within the realm of abstract ideas”); Content Extraction, 776 F.3d at
1347 (affirming that “the claims of the asserted patents are drawn to the abstract idea of 1)
collecting data, 2) recognizing certain data within the collected set, and 3) storing that recognized
data in memory). Otherwise stated, the claim “recite[s] the what of the invention, but none of the
how that is necessary to turn the abstract ideas into a patent-eligible application.” TDE Petroleum
Data Sols., Inc. v. AKM Enter., Inc., 657 Fed. App’x 991, 993 (Fed. Cir. 2016), cert. denied, 137
S. Ct. 1230.
Plaintiff argues that claim 1 does more than simply describe a function or outcome without
describing how to achieve these results in a non-abstract way. Opp. at 11. Plaintiff then cites the
specification to argue that the call controller sets up a call based on a routing message. Id. For
instance, Plaintiff argues that the “‘routing message’ that sets up the ‘call controller’ is based on a
classification of a call destination, which, in turn, was identified by a caller-specific evaluation of
the ‘callee identifier’ (i.e., based on ‘attributes’ associated with the initiating caller in their
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‘dialing profile.’). Id. (emphasis in original).
Plaintiff’s argument is unconvincing. Alice’s step one inquiry must focus on the claim
language. See, e.g., Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013) (“[T]he important inquiry for a § 101 analysis is to look to the claim.”);
CMG Fin. Servs., Inc. v. Pac. Tr. Bank, F.S.B., 50 F. Supp. 3d 1306, 1326 (C.D. Cal. 2014)
(“None of the elements in these Claims limit the level of their inherent abstraction.”), aff’d, 616
Fed. App’x 420 (Fed. Cir. 2015). Here, the claim language is written in vague, functional terms—
“locating,” “determining,” and “classifying,” a call based on a caller identifier and a callee
identifier—to then send a routing message. Moreover, as Defendants point out, “claim 1 fails to
specify how attributes are compared to a callee identifier, what criteria matter, or how a routing
message may be used to ‘set up’ a call controller or ‘identif[y] network infrastructure for a given
call.” Reply at 3-4 (emphasis in original). Therefore, Defendants’ reliance on Two-Way Media Ltd.
v. Comcast Cable Commc’ns, LLC is entirely appropriate. 874 F.3d 1329 (Fed. Cir. 2017). In TwoWay Media, the Federal Circuit found as abstract a claim requiring “the functional results of
‘converting, ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records’” because the claim
did “not sufficiently describe how to achieve these results in a non-abstract way.” Id. at 1337.
Analogously, claim 1 discloses “locating a caller dialing profile” without describing how the caller
dialing profile is located; “determining a match” without specifying any kind of structure or nonfunctional language to describe how a match is determined and compared to the callee identifier;
and “classifying a call” without identifying how the call is classified. All the steps recited in claim
1 are generic and are not novel to the ’815 Patent, as discussed above, and nothing in the claim
language limits the claim in such a way that the claim becomes non-abstract.
2. Long-Standing Practices are Analogous to Claim 1
More evidence of the claim’s abstract nature lies in the Parus Holdings, Inc. v. Sallie Mae
Bank court’s decision. 137 F. Supp. 3d 660 (D. Del. 2015), aff’d, 677 Fed. App’x 682 (Fed. Cir.
2017). In Parus Holdings, the claim in question called “for using a ‘computer and
telecommunications network for receiving, sending and managing information from a subscriber
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to the network and from the network to a subscriber.’” Id. at 672. Here, claim 1 similarly calls for
using a computer and telecommunications network for sending information from a subscriber to
the network (and ultimately, the callee) by: receiving information related to the caller and callee
(i.e., the caller identifier and the callee identifier); managing that information by locating a caller
dialing profile and matching the information in the caller dialing profile with information in the
callee identifier; and finally, classifying the call either as a “public network call” or a “private
network call” and sending a routing message to the computer and telecommunications network.
The Parus Holdings court found the claim in question to be abstract because the patent claim had
“pre-Internet analogs” that could be performed by humans, such as a personal assistant directing
calls. Id.
The Parus Holdings court is not alone in holding that such call routing patent claims could
be performed by humans. Likewise, in Telinit Techs., LLC v. Alteva, Inc., the court found as
abstract a claim requiring: “(1) receiving a data network request; (2) identifying a telephone
number associated with that request; (3) signaling a switch to make a call; (4) monitoring the call;
and (5) providing a user with notifications if there is a change in the status of the call.” 2015 WL
5578604, at *16-17 (E.D. Tex. Sept. 21, 2015). The Telinit court found that this “is precisely the
function of a telephone operator.” Id. Here, claim 1 similarly calls for the computer or
telecommunications network to receive a data network request for a call by identifying a caller
identifier and a callee identifier, locating a dialing profile and matching part of the callee’s
identifier to the dialing profile, then signaling the network via a routing message after the call is
classified as a private network or a public network call.
Plaintiff attacks the analogy to a switchboard operator, arguing that unlike in claim 1,
“switchboard routing used only the callee identifier (i.e., telephone number) to identify, and route
to, the destination (i.e., callee) and did not need information about the caller.” Opp. at 16. But even
Plaintiff concedes that “telephone operators might have used a caller’s identity to properly
attribute toll charges, or to record the caller’s number for a call back in case the connection was
lost.” Id. (emphasis added). Thus, Plaintiff’s own concession renders Plaintiff’s argument
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impotent.
6
Plaintiff also argues that “Defendants’ assertion that the claims are directed to an abstract
idea is even less plausible for means-plus-function claims such as the apparatus in Claim 28 of the
’815 Patent.” Opp. at 14. Plaintiff admits that “Claim 28 is similar to Claim 1,” though there are
differences in how each claim is interpreted because claim 28 is a means-plus-function claim. Id.
In brief, a means-plus-function claim is limited “to the means specified in the written description
and equivalents thereof.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997). Thus,
courts look to limitations imposed in the specification to interpret a means-plus-function claim.
Claim 28 of the ’815 Patent recites:
28. A call routing apparatus for facilitating communications between callers and callees in
a system comprising a plurality of nodes with which callers and callees are associated, the
apparatus comprising:
receiving means for receiving a caller identifier and a callee identifier, in response to
initiation of a call by a calling subscriber;
means for locating a caller dialing profile comprising a username associated with the caller
and a plurality of calling attributes associated with the caller;
means for determining a match when at least one of said calling attributes matches at least
a portion of said callee identifier;
means for classifying the call as a public network call when said match meets public
6 Defendants request judicial notice of a YouTube video about 1940s telephone technology. Reply
at 9 n.3. The Court may take judicial notice of matters that are either “generally known within the
trial court’s territorial jurisdiction” or “can be accurately and readily determined from sources
whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b). However, to the extent
any facts in materials subject to judicial notice are subject to reasonable dispute, the Court will not
take judicial notice of those facts. Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir. 2001),
overruled on other grounds by Galbraith v. Cty. of Santa Clara, 307 F.3d 1119 (9th Cir. 2002).
The Court finds that the contents of the YouTube video are unverified and unsubstantiated, and are
therefore subject to reasonable dispute. Thus, the Court DENIES Defendants’ request for judicial
notice. See, e.g., Point Ruston, LLC v. Pac. Northwest Regional Council of the United Bhd. Of
Carpenters and Joiners of Am., 658 F. Supp. 2d 1266, 1279 (W.D. Wash. 2009) (declining to take
judicial notice of YouTube video because “there are questions of authenticity regarding this
proposed evidence, and there appears to be a reasonable dispute concerning the substance of the
evidence”).
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network classification criteria;
means for classifying a call as a private network call when said match meets private
network classification criteria;
means for producing a private network routing message for receipt by a call controller,
when the call is classified as a private network call, said private network routing message
identifying an address, on the private network, associated with the callee; and
means for producing a public network routing message for receipt by a call controller,
when the call is classified as a public network call, said public network routing message
identifying a gateway to the public network.
’815 Patent at 38:53-39:12.
Plaintiff argues that claim 28 corresponds to the algorithms depicted in Figures 8A to 8D.
Opp. at 14. The algorithms depicted in Figures 8A to 8D are carried out by the routing controller,
discussed above. ’815 Patent at 17:43-44 (“The [routing controller] message handler process is
shown in greater detail . . . in FIGS 8A through 8D.”). However, the routing controller is
implemented via generic computer means. As the specification admits, the routing controller “may
be implemented as separate modules on a common computer system or by separate computers, for
example.” Id. at 13:13-14 (emphasis added). The specification lacks any additional detail as to
whether these are specialized computers containing the routing controller. The routing controller
circuit itself also contains only generic computer components: a processor, different types of
memory, and an [input/output] port.” Id. at 17:19-21. See, e.g., SRI Int’l, Inc. v. Cisco Sys., Inc.,
__F.3d__, 2019 WL 1271160, at *13 (Fed. Cir. Mar. 20, 2019) (“[T]he claims only rely on generic
computer components, including a computer, memory, processor, and mass storage device.”);
Accenture, 728 F.3d at 1343 (describing an input/output adapter as a “generic computer
component[]”). Moreover, as Plaintiff even admits, “Claim 28 is similar to Claim 1.” Opp. at 14.
The claim language of claim 28 is a near-verbatim copy of the claim language of claim 1. Above,
the Court discussed at length why claim 1’s limitations are generic. Thus, the same logic applies to
claim 28. Consequently, the algorithmic structure disclosed in Figures 8A to 8D of the ’815 Patent
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do not actually transform claim 28’s limitations into a non-abstract idea. Moreover, claim 1 is still
representative of means-plus-function claim 28, an argument that Plaintiff does not challenge.
In sum, the Court finds that claim 1 of the ’815 Patent is directed to an abstract idea. The
Court next analyzes Alice step two.
Alice Step Two for Claim 1 of the ’815 Patent—Whether the Claim Contains an
Inventive Concept
Defendants argue that the limitations of Claim 1 are generic computer implementations of
the abstract idea, and are thus unpatentable. Mot. at 21. On the other hand, Plaintiff argues that
claim 1 recites “a specially programmed routing controller to provide call placement and routing
in an individually customizable manner for each caller,” which was unconventional at the time of
the invention. Opp. at 18.
“In step two of the Alice inquiry, [the Court] search[es] for an ‘inventive concept sufficient
to transform the nature of the claim into a patent-eligible application.” RecogniCorp, 855 F.3d at
1327 (quoting McRO, 837 F.3d at 1312) (internal quotation marks omitted)). “To save the patent
at step two, an inventive concept must be evident in the claims.” Id. This inventive concept “must
be significantly more than the abstract idea itself,” BASCOM, 827 F.3d at 1349; “must be more
than well-understood, routine, conventional activity,” Affinity Labs of Texas, LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016); “and cannot simply be an instruction to implement or
apply the abstract idea on a computer.” BASCOM, 827 F.3d at 1349. For example, it may be found
in an “inventive set of components or methods,” “inventive programming,” or an inventive
approach in “how the desired result is achieved.” Elec. Power Grp., 830 F.3d at 1355. “If a
claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and wellunderstood techniques, the claim has not been transformed into a patent-eligible application of an
abstract idea.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290-91 (Fed. Cir. 2018).
The Court finds that none of the claim’s elements, assessed individually, provides an
inventive concept. Claim 1 discloses: (1) “receiving a caller identifier and a callee identifier” after
a call is initiated; (2) “locating a caller dialing profile”; (3) matching the information in the “caller
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dialing profile” with information in the callee identifier; and (4) classifying the call either as a
“public network call” or a “private network call” based on “classification criteria” and producing
the appropriate public network or private network routing message to be received by a call
controller. ’815 Patent at 36:14-38.
As discussed above, none of claim 1’s elements are unique to the ’815 Patent. In fact, the
patent specification confirms that the ’815 Patent did not invent the limitations found in claim 1.
For instance, the specification concedes that the invention did not invent the “caller
identifier” or the “callee identifier.” The specification discloses that “[t]he caller identifier field
may include a [publicly switched telephone network] number or a system subscriber username.”
Id. at 17:13-15. Moreover, as examples of callee identifiers, the specification identifies “a callee
telephone/videophone number.” Id. at 14:49-50. Essentially, the caller and callee identifiers
consist of either a telephone number or a username, neither of which is unique to the ’815 Patent.
In addition, “locating a caller dialing profile” does not provide an inventive concept either.
The specification makes clear that the ’815 Patent did not invent the caller dialing profile, but
rather, the caller dialing profile is comprised of various identificatory attributes of subscribers that
are left undefined in the claim and specification. See, e.g., id. at 18:1-4 (“Effectively the dialing
profile is a record identifying calling attributes of the caller identified by the caller identifier. More
generally, dialing profiles represent calling attributes of respective subscribers” (emphasis
added).). Also, case law has held that locating information is not an inventive concept. In
CyberSource Corp. v. Retail Decisions, Inc., the Federal Circuit held that a step requiring
“obtaining information . . . can be performed by a human who simply reads records of . . .
transactions from a preexisting database.” 654 F.3d 1366, 1372 (Fed. Cir. 2011) (emphasis added).
Additionally, matching the information in the “caller dialing profile” with information in
the callee identifier is likewise generic, as discussed above. The callee identifier is essentially “a
callee telephone/videophone number.” ’815 Patent at 14:49-50. The specification makes clear that
this matching process is not unique to the Patent either, especially as the ’815 Patent did not invent
the callee identifier or the process of matching the caller dialing profile with the callee identifier.
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See, e.g., id. at 2:8-10 (“Using the call classification criteria may involve comparing calling
attributes associated with the caller dialing profile with aspects of the callee identifier.”); id. at
2:17-19 (“Comparing may involve determining whether the callee identifier includes a portion that
matches an area code associated with the caller dialing profile.”); id. at 2:20-22 (“Comparing may
involve determining whether the callee identifier has a length within a range specified in the caller
dialing profile.”).
Moreover, case law has held that the process of matching information does not provide an
inventive concept. In Intellectual Ventures I LLC v. Symantec Corp., the method claim in question
called for receiving data, determining whether the received data matched certain characteristics,
and outputting data based on the determining step. 838 F.3d 1307, 1313 (Fed. Cir. 2016). The
Federal Circuit found that none of these steps provided an inventive concept because the claim
performs “generic computer functions.” Id. at 1315.
Furthermore, classifying the call either as a “public network call” or a “private network
call” based on “classification criteria” and producing the appropriate public network or private
network routing message to be received by a call controller does not provide an inventive concept
either. Importantly, this process is performed on a generic computer, upon which the claimed step
does not improve. The specification discloses that the super node, which includes the routing
controller, “may be implemented as separate modules on a common computer system or by
separate computers.” ’815 Patent at 13:10-14. Case law confirms that the process does not provide
an inventive concept. In Accenture, the claim in question applied a set of rules to a database of
tasks. Accenture, 728 F.3d at 1345. The Accenture court found the claim to be “generalized
software components arranged to implement an abstract concept on a computer.” Id. Here, the
classification criteria provide the set of rules, as described in Accenture, which is applied to the
task of classifying and routing a call. As for the process of sending a routing message, the Federal
Circuit has held that “receiv[ing] and send[ing] information over a network . . . is not even
arguably inventive.” buySAFE, 765 F.3d at 1355.
Thus, none of claim 1’s elements, assessed individually, provides an inventive concept.
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Moreover, the ordered combination of these elements also does not yield an inventive concept. In
BASCOM, the Federal Circuit held that “an inventive concept can be found in the nonconventional and non-generic arrangement of known, conventional pieces.” 827 F.3d at 1350.
However, the arrangement of claim 1’s elements are conventional, as evidenced by Two-Way
Media.
In Two-Way Media, the claim in question was directed to “first processing the data, then
routing it, [and] controlling it . . . .” 874 F.3d at 1339. This was done in the context of
“transmitting message packets over a communications network.” Id. at 1334. Here, claim 1
discloses a similar structure to the Two-Way Media claim. First, data is processed by “locating a
caller dialing profile” after a call is initiated and the caller identifier and callee identifier is
received, and then the information in the “caller dialing profile” is matched with information in the
callee identifier. Then, data is routed by classifying the call as either a public network call or a
private network call. Lastly, the data is controlled by sending the appropriate routing message to
the network controller in order to control where the call goes. The Two-Way Media court
invalidated the claim, called the ordering of claim elements a “conventional ordering of steps . . .
with conventional technology to achieve its desired result.” Id. Thus, claim 1’s elements are also a
conventional ordering of steps.
Plaintiff cites to DDR Holdings, a case Plaintiff claims is analogous, for the proposition
that “claims [that] solve problems necessarily rooted in network technology . . . are eligible” for a
patent. Opp. at 23 (citing DDR Holdings, 773 F.3d at 1257, 1259) (emphasis in original).
However, DDR Holdings is distinguishable from the instant case because the DDR Holdings
patent claims “specify how interactions with the Internet are manipulated to yield a desired
result—a result that overrides the routine and conventional sequence of events ordinarily triggered
by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258. Here, we have the situation where
generic aspects of computing—routing a call using a generic call controller—are performed using
generic elements the ’815 Patent did not invent—caller and callee identifiers, a dialing profile, and
classification criteria. Neither the ’815 Patent specification nor claims provide any details on how
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interactions with the internet are manipulated to yield a desired result, like in DDR Holdings.
Thus, claim 1 is much more analogous to the claim in Two-Way Media, in which the claim in
question in a telecommunications patent was described and implemented in purely generic terms.
Therefore, claim 1 of the ’815 Patent does not contain an inventive concept. The Court
finds that at Alice step one, claim 1 of the ’815 Patent is directed to an abstract idea. At Alice step
two, there is no inventive concept sufficient to save the claim. Thus, the Court concludes that the
multi-network claims—claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the ’815 Patent and claims
49 and 73 of the ’005 Patent—of which claim 1 of the ’815 Patent is representative, are patentineligible under § 101. Defendants’ motion to dismiss the multi-network claims is therefore
GRANTED.
Alice Step One for Claim 74 of the ’005 Patent—Whether the Claim is Directed to
an Abstract Idea
The arguments in Defendants’ motion to dismiss and Plaintiff’s opposition are identical as
to both claim 1 of the ’815 Patent and claim 74 of the ’005 Patent. In fact, in Defendants’ motion
and Plaintiff’s opposition, the § 101 analysis of claim 1 of the ’815 Patent and claim 74 of the
’005 Patent is combined.
Defendants argue that the asserted claims are directed to an abstract idea because: “(1) they
are written in a form free of specific tangible implementation and merely invoke computers as a
tool; (2) they are similar to claims found directed to abstract ideas in precedent from the Federal
Circuit and district courts; (3) they are directed to functions that could be performed in the human
mind or with pen and paper; (4) they are akin to long-standing human activity (switchboard
operations; and (5) they are not directed to improving the functioning of a computer itself.” Mot.
at 12. Plaintiff argues that “the asserted claims are not directed to an abstract idea, but are instead
generally directed to an improved call routing technology enabling better interoperability of
communication networks by, inter alia, evaluating a callee identifier provided by a caller in
conjunction with caller-specific ‘attributes.’” Opp. at 2. The Court agrees with Defendants.
Step one of the Alice framework directs the Court to assess “whether the claims at issue are
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directed to [an abstract idea].” Alice, 134 S. Ct. at 2355. The step one inquiry “applies a stage-one
filter to claims, considered in light of the specification, based on whether ‘their character as a
whole is directed to excluded subject matter.’” Enfish, 822 F.3d at 1335 (citation omitted). Thus,
the Court conducts its step one inquiry by first identifying what the “character as a whole” of
claim 1 of the ’815 Patent is “directed to,” and then discussing whether this is an abstract idea. In
distilling the character of a claim, the Court is careful not to express the claim’s focus at an unduly
“high level of abstraction . . . untethered from the language of claims,” but rather at a level
consonant with the level of generality or abstraction expressed in the claims themselves. Enfish,
822 F.3d at 1337; see also Thales Visionix, 850 F.3d at 1347 (“We must therefore ensure at step
one that we articulate what the claims are directed to with enough specificity to ensure the step
one inquiry is meaningful.”).
Like for claim 1 of the ’815 Patent, the Court finds that claim 74 of the ’005 Patent is
directed to the abstract idea of routing a call based on characteristics of the caller and callee. Put in
plain language, claim 74 discloses: (1) using a “participant identifier” to locate a “first participant
profile” comprising of “attributes associated with the first participant,” who starts a
communication with a second participant; (2) sending a “first network routing message” that
identifies an address in a first portion of the network for receipt by a controller when some
information about the first participant and a portion of a “second participant identifier” meet a
criterion; and (3) sending a “second network routing message” that identifies an address in a
second portion of the network for receipt by a controller when some information about the first
participant and a portion of the “second participant identifier” meet a second criterion. ’005 Patent
at 43:41-65. In essence, claim 74 of the ’005 Patent is essentially the same as claim 1 of the ’815
Patent, but with two routing messages being sent as opposed to just the one routing message being
sent in claim 1 of the ’815 Patent. For this reason, claim 74 of the ’005 Patent suffers from the
same defects as claim 1 of the ’815 Patent. Claim 74 is abstract because first, it only discloses
generalized steps to carry out generic functions, and second, because there are long-standing
practices analogous to the claimed steps.
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1. Claim 74 Discloses Generalized Steps to Carry Out Generic Functions
For instance, as discussed above, the TLI court found that because the TLI patent failed to
provide technical details for components, but instead described the system and methods “in purely
functional terms,” functions that were generic to a computer, the TLI patent claim failed step one
of Alice. TLI, 823 F.3d at 612. Here, claim 74 of the ’005 Patent describes the methods in purely
functional terms with functions generic to a computer. Thus, claim 74 is directed to an abstract
idea.
The idea of using a “participant identifier” to locate a “first participant profile” comprising
of “attributes associated with the first participant,” who starts a communication with a second
participant is purely functional language that is generic to a computer. The phrase “participant
identifier” is not found in the ’005 Patent specification. However, “participant identifier” is akin to
the aforementioned caller identifier and callee identifier in claim 1 of the ’815 Patent because the
participant identifier functions in the same way as the caller and callee identifiers. For instance, in
claim 1 of the ’815 Patent, a portion of the callee identifier is used to match various attributes
associated with a caller, and a routing message is sent out based on the match. ’815 Patent at
36:23-25. Likewise, in claim 74 of the ’005 Patent, a portion of the second participant identifier is
used in conjunction with various attributes associated with a first participant, and a routing
message is sent out based on whether a portion of the second participant identifier and the
attributes associated with a first participant meet a classification criterion. ’005 Patent at 43:51-58.
Moreover, both claims refer to the use of “identifiers,” which is defined in the specification as
caller and callee identifiers.
Thus, “participant identifier” is defined in the specification as “a [publicly switched
telephone network] number or a system subscriber username.” Id. at 17:23-24. The specification
additionally identifies an identifier as “telephone/videophone number.” Id. at 14:48-49.
Essentially, an identifier consists of either a telephone number or a username. A telephone number
or a username can hardly be considered unique to the ’005 Patent, as the specification admits and
as common sense dictates.
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Likewise, the “first participant profile” of claim 74 is equally as generic. The specification
never uses the phrase “participant profile,” but the Court finds participant profile equivalent to the
dialing profile discussed above in relation to the ’815 Patent because the participant profile
functions in the same way as the dialing profile. The participant profile comprises “a plurality of
attributes associated with the . . . participant,” id. at 43:48-50, much like how a caller dialing
profile comprises “a plurality of calling attributes associated with the caller,” ’815 Patent at 36:20-
22. The specification makes clear that the ’005 Patent did not invent the participant profile, but
rather, the participant profile is comprised of various identificatory attributes of subscribers that
are left undefined in the claim and specification. See, e.g., ’005 Patent at 18:10-13 (“Effectively
the dialing profile is a record identifying calling attributes of the caller identified by the caller
identifier. More generally, dialing profiles represent calling attributes of respective subscribers”
(emphasis added).).
Then, claim 74 proceeds to claim, without further detail, starting a communication between
a first participant and a second participant. Id. at 43:46-47. The process of initiating a
communication is described in the specification as using a generic computer with a routing
controller to connect two parties. The specification discloses that the super node, which includes
the routing controller that routes communications, “may be implemented as separate modules on a
common computer system or by separate computers, for example.” Id. at 13:21-22.
In the next step of claim 74, claim 74 claims sending a “first network routing message”
that identifies an address in a first portion of the network for receipt by a controller when some
information about the first participant and a portion of a “second participant identifier” meet a
criterion. As discussed above, a routing message is sent by the routing controller, a component of
the super node, which is comprised of generic computers. Therefore, the process of sending a
network routing message is generic. For instance, a claim that recited steps “by which data was
obtained . . . and transmitted by a telephone . . . and sent over a channel to different destinations”
was held to represent “nothing more than a disembodied concept of data sorting and storage.”
Morales v. Square, Inc., 75 F. Supp. 716, 725 (W.D. Tex. 2014), aff’d, 621 Fed. App’x 660 (Fed.
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Cir. 2015) (citing CyberFone Sys., LLC v. Cellco P’ship, 885 F. Supp. 2d 710, 719 (D. Del.
2012)). Moreover, the claim does not define what “criterion” must be met for the first network
routing message to be sent. Claim 74 thereby repeats the same mistake as claim 1 of the ’815
Patent in that claim 74 recites steps in very vague terms. As the Federal Circuit has held,
“[g]eneralized steps to be performed on a computer using conventional computer activity are
abstract.” RecogniCorp, 855 F.3d at 1326.
The final step of claim 74 claims sending a “second network routing message” that
identifies an address in a second portion of the network for receipt by a controller when some
information about the first participant and a portion of the “second participant identifier” meet a
second criterion. This final step is near-identical to the above-described step, the differences being
that a “second network routing message” is sent when another criterion is met by information
about the first participant and a portion of a “second participant identifier.” As the Court has
discussed at length, the process of sending a network routing message is not unique to the Patent,
and is implemented using generic computers.
2. Long-Standing Practices are Analogous to Claim 74
As claim 74 is quite similar to claim 1 of the ’815 Patent, Parus Holdings again confirms
the claim’s abstract nature. 137 F. Supp. 3d 660. In Parus Holdings, the claim in question called
“for using a ‘computer and telecommunications network for receiving, sending and managing
information from a subscriber to the network and from the network to a subscriber.’” Id. at 672.
Here, claim 74 similarly calls for using a computer and telecommunications network for sending
information from a subscriber to the network (and ultimately, the second participant) by: receiving
a first participant profile comprising of attributes associated with the first participant, who starts a
communication with a second participant; and then sending two network routing messages for
receipt by a controller after some information about the first participant and a portion of a second
participant identifier meet a criterion. The Parus Holdings court found the claim in question to be
abstract because the patent claim had “pre-Internet analogs” that could be performed by humans,
such as a personal assistant directing calls. Id.
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The Parus Holdings court is not alone in holding that such call routing patent claims could
be performed by humans. Likewise, in Telinit, the court found as abstract a claim requiring: “(1)
receiving a data network request; (2) identifying a telephone number associated with that request;
(3) signaling a switch to make a call; (4) monitoring the call; and (5) providing a user with
notifications if there is a change in the status of the call.” 2015 WL 5578604, at *16-17. The
Telinit court found that this “is precisely the function of a telephone operator.” Id. Here, claim 74
similarly calls for the computer or telecommunications network to receive a first participant
profile comprising of attributes associated with the first participant, who starts a communication
with a second participant; identify whether information about the first participant and a portion of
a second participant identifier meet a criterion; and then signal the controller by sending network
routing messages.
Therefore, the Court finds that claim 74 of the ’005 Patent is directed to an abstract idea.
Alice Step Two for Claim 74 of the ’005 Patent—Whether the Claim Contains an
Inventive Concept
Defendants argue that claim 74 contains “only well-known, routine, and conventional
functionality that does not amount to significantly more than the abstract idea itself.” Mot. at 20.
Plaintiff responds by arguing that the claim recites “a specially programmed routing controller to
provide call placement and routing in an individually customizable manner for each caller,” a
controller that was unconventional at the time of the invention. Opp. at 18.
As aforementioned, in “step two of the Alice inquiry, [the Court] search[es] for an
‘inventive concept sufficient to transform the nature of the claim into a patent-eligible
application.” RecogniCorp, 855 F.3d at 1327 (quoting McRO, 837 F.3d at 1312) (internal
quotation marks omitted)). “To save the patent at step two, an inventive concept must be evident
in the claims.” Id. This inventive concept “must be significantly more than the abstract idea itself,”
BASCOM, 827 F.3d at 1349; “must be more than well-understood, routine, conventional activity,”
Affinity Labs of Texas, 838 F.3d at 1262; “and cannot simply be an instruction to implement or
apply the abstract idea on a computer.” BASCOM, 827 F.3d at 1349. For example, it may be found
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ORDER GRANTING CONSOLIDATED MOTIONS TO DISMISS
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in an “inventive set of components or methods,” “inventive programming,” or an inventive
approach in “how the desired result is achieved.” Elec. Power Grp., 830 F.3d at 1355. “If a
claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and wellunderstood techniques, the claim has not been transformed into a patent-eligible application of an
abstract idea.” BSG Tech LLC, 899 F.3d at 1290-91.
The Court finds that none of the claim’s elements, assessed individually, provides an
inventive concept. Claim 74 recites: (1) using a “participant identifier” to locate a “first participant
profile” comprising of “attributes associated with the first participant,” who starts a
communication with a second participant; (2) sending a “first network routing message” that
identifies an address in a first portion of the network for receipt by a controller when some
information about the first participant and a portion of a “second participant identifier” meet a
criterion; and (3) sending a “second network routing message” that identifies an address in a
second portion of the network for receipt by a controller when some information about the first
participant and a portion of the “second participant identifier” meet a second criterion. ’005 Patent
at 43:41-65.
As discussed above, none of claim 74’s elements are unique to the ’005 Patent. In fact, the
patent specification confirms that the ’005 Patent did not invent the limitations found in claim 1.
First, using a “participant identifier” to locate a “first participant profile” comprising of
“attributes associated with the first participant,” who starts a communication with a second
participant is not an inventive concept. For instance, “participant identifier” is defined in the
specification as “a [publicly switched telephone network] number or a system subscriber
username.” Id. at 17:23-24. The specification additionally identifies an identifier as
“telephone/videophone number.” Id. at 14:48-49. At bottom, an identifier consists of either a
telephone number or a username. Use of a telephone number or a username, which are not unique
to the ’005 Patent, can hardly be considered inventive enough to lift claim 74 out of abstractness.
Moreover, the specification makes clear that the ’005 Patent did not invent the participant profile,
but rather, the participant profile is comprised of various identificatory attributes of subscribers
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left undefined by the claim and specification. See, e.g., Id. at 18:10-13 (“Effectively the dialing
profile is a record identifying calling attributes of the caller identified by the caller identifier. More
generally, dialing profiles represent calling attributes of respective subscribers.”). In addition, the
concept of locating information using the participant identifier is not an inventive concept. In
CyberSource Corp., the Federal Circuit held that a step requiring “obtaining information . . . can
be performed by a human who simply reads records of . . . transactions from a preexisting
database.” 654 F.3d at 1372.
Moreover, sending a “network routing message” that identifies an address in a portion of
the network for receipt by a controller when some information about the first participant and a
portion of a “second participant identifier” meet a criterion is also not inventive. This process is
analogous to a claim found in Intellectual Ventures I. In Intellectual Ventures I, the claim in
question called for determining whether the received data matched certain characteristics and
outputting data based on the determining step. 838 F.3d at 1313. The Federal Circuit held that the
steps provided did not provide an inventive concept because the claim performs “generic computer
functions.” Id. at 1315. Here, whether information about the first participant and a portion of the
second participant identifier meet a criterion is the same as the Intellectual Venture I’s
determination of whether data matched certain characteristics. In claim 74, the determination is
made by deciding, based on information about the first participant and a portion of the second
participant identifier, whether a criterion is met. Then, claim 74 discloses sending a network
routing message when the determining step has concluded. This is analogous to the Intellectual
Venture I’s step of outputting data based on the determining step, as claim 74’s routing message is
sent after the determination of whether the criterion is met. Moreover, as for the process of
sending a routing message, the Federal Circuit has held that “receiv[ing] and send[ing]
information over a network . . . is not even arguably inventive.” buySAFE, 765 F.3d at 1355.
Thus, none of claim 74’s elements, assessed individually, provides an inventive concept.
Furthermore, the ordered combination of these elements also does not yield an inventive concept.
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conventional and non-generic arrangement of known, conventional pieces.” 827 F.3d at 1350.
However, the arrangement of claim 74’s elements are conventional, as evidenced by Two-Way
Media.
In Two-Way Media, the claim in question was directed to “first processing the data, then
routing it, [and] controlling it . . . .” 874 F.3d at 1339. This was done in the context of
“transmitting message packets over a communications network.” Id. at 1334. The Two-Way Media
court invalidated the claim, called the ordering of claim elements a “conventional ordering of steps
. . . with conventional technology to achieve its desired result.” Id. Here, claim 74 is analogous to
the Two-Way Media claim. First, data is processed by locating a first participant profile
comprising of attributes associated with the first participant, these attributes being used in
conjunction with a second participant identifier to see if a criterion is met. Then, telephonic
communications data is routed and controlled when network routing messages for receipt by a
controller are produced.
Therefore, claim 74 of the ’005 Patent does not contain an inventive concept. The Court
finds that at Alice step one, claim 74 of the ’005 Patent is directed to an abstract idea. At Alice step
two, there is no inventive concept sufficient to save the claim. Thus, the Court concludes that the
single-network claims—claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005 Patent—of which
claim 74 of the ’005 Patent is representative, are patent-ineligible under § 101. Defendants’
motion to dismiss the single-network claims is therefore GRANTED.
Whether there Exist Factual Questions that Preclude Resolution of the Instant
Motion under Rule 12
Plaintiff’s opposition cites disclosures in the complaints that Plaintiffs argue preclude
resolution of the instant motion under Rule 12. Opp. at 7. In particular, Plaintiff’s opposition
mentions two specific features—user-specific calling and transparent routing—disclosed by the
complaints that purportedly demonstrate that the asserted claims are not directed to abstract ideas.
First, Plaintiff argues that claim 1 discloses “user-specific calling,” which precludes a
finding of abstractness because in user-specific calling, “[d]ifferent callers with differently
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configured attributes could dial the same string of digits to reach different destinations because the
meaning of the callee identifier is different based on each caller’s attributes.” Opp. at 7-8
(emphasis in original). Plaintiff cites the ’815 Patent specification to show that user-specific
calling exists because the Patent describes “calling attributes associated with the caller” to
evaluate a “callee identifier” to identify the callee. Id. at 7 (citing ’815 Patent at 36:15-23).
Moreover, Plaintiff states that “ser-specific call placement provides benefits such as the ability
to support local [public switched telephone network] styles (or even unconventional styles) of
calling no matter where in the world a caller is located.” Id. at 8.
However, the ’815 Patent’s claim language contains no mention of these alleged benefits
of user-specific calling, such as supporting local public switched telephone network telephone
number styles or unconventional styles of calling regardless of where a caller is located. After all,
Alice’s step one inquiry must focus on the claim language. See, e.g., Accenture, 728 F.3d at 1345
(“[T]he important inquiry for a § 101 analysis is to look to the claim.”); CMG Fin. Servs., Inc., 50
F. Supp. 3d 1306, 1326 (“None of the elements in these Claims limit the level of their inherent
abstraction.”), aff’d, 616 Fed. App’x 420 (Fed. Cir. 2015). Also, the patent specification fails to
disclose user-specific calling. Regardless, even if the specification disclosed user-specific calling,
as the Federal Circuit has held, “details from the specification cannot save a claim directed to an
abstract idea that recites generic computer parts.” Synopsys, Inc., 839 F.3d at 1149.
Second, Plaintiff also argues that the asserted claims disclose “transparent routing,”
rendering the claims non-abstract. Opp. at 8. Plaintiff asserts that the “improved call routing
controller, system and method of the claim invention also enables using a caller’s attributes to
evaluate a callee identifier against network routing criteria to cause a call to automatically be
routed over system network . . . or another network interconnected to the system network via a
gateway . . . transparently to the user—without the user manually specifying the network to use
for routing by the user’s manner of placing the call (e.g., by dialing a prefix of “9” to make a
[public switched telephone network] call).” Id.
However, as aforementioned, Alice’s step one inquiry must focus on the claim language.
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See, e.g., Accenture, 728 F.3d at 1345 (“[T]he important inquiry for a § 101 analysis is to look to
the claim.”). Like with user-specific calling, the concepts embodied by transparent routing appear
nowhere in the claims. As Defendants correctly point out, the “claims do not recite any limitation
regarding what the caller specifies, or does not specify, to place a call, nor do the claims refer to a
caller making a [public switched telephone network] call without dialing the prefix ‘9.’” Reply at
6.
At bottom, under Federal Circuit law, “[w]hether a claim recites patent eligible subject
matter is a question of law which . . . has in many cases been resolved on motions to dismiss or
summary judgment.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).7
“As our cases
demonstrate, not every § 101 determination contains genuine disputes over the underlying facts
material to the § 101 inquiry.” Id. “In some cases, when improvements in the specification are
captured in the claims, whether an element or combination of elements is well-understood
becomes a question of fact.” Symantec Corp. v. Zscaler, Inc., 2018 WL 3539269, at *2 (N.D. Cal.
July 23, 2018) (citing Berkheimer, 881 F.3d at 1368-69) (emphasis added). Here, however,
attorney argument in the complaint cannot save the claims because the purported improvements
have not been captured in the claim language.
IV. CONCLUSION
For the foregoing reasons, the Court finds that the asserted multi-network claims (claims 1,
7, 12, 27, 28, 72, 73, 92, and 111 of the ’815 Patent and claims 49 and 73 of the ’005 Patent) and
the asserted single-network claims (claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005
Patent) are directed to unpatentable subject matter and are thus invalid under 35 U.S.C. § 101. The
Court therefore GRANTS Defendants’ omnibus motions to dismiss.
IT IS SO ORDERED.
7 For this reason, the Court rejects Plaintiff’s alternative argument that the motion is premature.
There's nothing clear cut about it. One cannot simply extract one sentence, written out of a misunderstanding of an incredibly complex issue and say - well, see it's obvious. It was a bad ruling, and it will be overturned.
I agree. This is not a dead issue. Far from it. One little setback (ok, it was at least a medium sized setback, I'll admit that), does not derail the engine that could.
Correction: The Engine that WILL.
I have been in meetings all day, including ones with consulting attorneys who feel, strongly, that not only an appeal will be successful (after reading the decision in its entirety), but also that, should Voip-Pal be successful in getting a stay until the Supreme Court HP Inc. v. Berkheimer currently pending, and awaiting a brief from the US Solicitor General, so that this new case law can be applied in an appellate hearing, Voip-Pal has an excellent chance of prevailing.
Europe is not a "done deal" necessarily. There's really no such thing as a patent being beyond any scrutiny for revocation - major hurdles have passed, and European law and patent standards make the likelihood of prevailing in European courts, which WILL absolutely enforce a judgment (unlike that which we see in US courts) EXTREMELY likely - Translation: Infringers in Europe - which include Apple, et al, and so many more, are calculating their risk analysis right now, as Voip-Pal turns its attention to European prosecution, and both licensing and acquisition possibilities have become very real and current interests.
Europe isn't the USA. And by the way, they couldn't care less what the US Courts decide regarding patent matters. They don't actually respect our law all that much!
Agreed -
There's no boogeyman - there is just a very broken patent process in the US - check it out - it's all the Supreme Court wants to talk about these days..... There's no surprise there. So the question is - Do you believe that there is life beyond the borders of the good ol' USA? Because this unfortunate (and incorrect) set back in the US aside - the patents in Europe are complete, and perfected, with a very definite, end of ANY objection period closed. Permanently closed. So - best of luck to you. To me, this represents a great chance to gain shares at prices I haven't seen for years.
I agree. I also believe that this is a case that Judge Koh very much wanted out of her courtroom. So, a legitimate strategy to do that would to be to pen a decision and cite prior cases that were decided long before the current guidance and published Supreme Court opinion - and effectively "punt" this case to appeals, while keeping some level of professional dignity under the excuse of having no settled case law to cite to the contrary...yet.
I believe it was her loophole to get out of the hot seat - and I believe it will come back to bite her, professionally, as this plays out.
JMHO
Meanwhile -- Europe. And what is the most logical reason why these litigants who definitely have a European market would not have raised any objections during the long open period where they might object? Very simple: European patent laws do not have the convoluted mess that we have in the US. If they grant a patent, and nobody objects to it - the matter is closed, and the patents are immediately enforceable. Onward Ho!
Not even close. The appeal can be filed almost immediately. There's no 2 years about it.
I know that people are upset, and it is disappointing. Judge Koh misapplied the law, and make a few significant errors that will be easy to appeal. This isn't over by a longshot. Court battles are always a risk. It's a week of the unexpected. Did anyone truly believe the Mueller investigation to net absolutely NOTHING actionable? No. Nobody did. And the ruling here is wrong. It will be overturned.
That's what I heard also. In these cases it's typical to hear within 2-3 weeks. Right now, what is happening is the Judge's clerks are working on gathering case law to consider, as she directs, and she'll rule when she's confident of her position. In rare cases it could take as long as 4 months - but that's exceptionally rare, and not warranted here. It's already been a week. I think we'll hear by the end of next week.
Thanks -
For those who have been asking for a good and thorough explanation of the trouble with Alice... Here it is. Clear, concise - and put into laymen's terms:
http://www.ipwatchdog.com/2019/03/21/alice-due-reversal-science-proves-reasoning-unsound/id=107594/
Thanks - but, in reality, the 84.91% increase sounds like a huge move - but in reality, the short interest to begin with was only 65000 shares, which at the earlier price in Feb of .06 is less than $4,000. We're still talking about a total of about $6,000 being on the block at risk as short interest...not something I'm going to factor into my buy/hold/sell analysis. Heck, I know of a half dozen players here who would toss $6,000 at this just to make it look bad for spite - profits be damned.
In my opinion, this is where some of the traditional technical analysis fails us here with this particular stock. We have a good amount of day trading interest here, as with any stock, with investors looking to standard analysis tools - but what is at play here, because this isn't a manufacturing company whose product is hot, or not - rather 100% of the value of the company lies in the fates of court decisions....something which can be wildly unpredictable, and sometimes the court gets it wrong, followed by lengthy and expensive appeals (on both sides)... So our PPS is highly influenced by investor fatigue.
Think about this historically for a second - we were literally just talking about this last night. Not that long ago - a couple of years - there was enough excitement about getting the patents done and APPROVED!!! that the PPS increased significantly. Now, this tidy little group of longs, mostly, aren't IP lawyers - and honestly didn't know enough about the process to understand that getting the patents granted wasn't even CLOSE to the end. We thought it was. Truly. Inches away. Most of us had no idea about things like IPR's and Alice Challenges...we thought we had won, and PPS showed that - moving from .02's all the way up to .20's.
Then the cold wet blanket of reality hit once we were challenged - Then revived when David beat Goliath in 8 IPR wins!
Since that time, most of us have done enormous amounts of due diligence, have consulted top professionals in this field, and we're still here - not based on ignorance of the process anymore - but rather, based on an informed analysis, having watched this, and other IP matters play out. We aren't going to be caught off guard again.
The funny thing is, most of us - I would guess, would never have invested long ago, had we known then, what we know now about the process. But here we are. So we have investor fatigue. Some have fallen away. We've added some new investors along the way - and there are many, many "casual skeptics" still watching this stock from the sidelines wondering if it's about to hit.
I'm going to take a Contrarian View of the increased short interest, based on my analysis of the court case, and buy more.
That's my 2 1/2 cents...(Adjusted for inflation)
I think it depends on the Judge's calendar and priorities. My guess is yes this week -or very early April, as there is no sense in allowing the issue to fester, and the Judge errs on the side of "orderliness" for her courtroom. However, there may be more going on in her deliberation than meets the eye, and some clarification on issues being sought in light of the current status and fate of Alice.
In my mind, the "nebulousness" around Alice is still playing out. On one hand, you have some very clear guidance from the Supreme Court saying, "No Judicial Exceptions". And then, you have - after that guidance - what appears to be the PTAB making convoluted statements in its testimony to the Senate Committee, which seem, to me, to be attempting to redefine what Judicial Exceptions means...or at a bare minimum, pussyfooting around the issue.
So, the matter of law isn't 100% settled in the sense that all players have simply laid down and accepted their fate. But the Supreme Court, ultimately, will have the final say. And we have seen a clear indication of how they are feeling.
There is no speculation needed. She denied Apple's Group's "demand" for a jury trial to hear out the Alice arguments. She stated that she will rule on the papers, and ended all further arguments. She has what she needs to rule, and clearly does not intend to have this become a three ring circus with legal tricks and sleight of hand.
In Apple's closing, written argument to their Request for Motion to Dismiss, they introduced brand new evidence (that wasn't evidence at all - but rather a sneaky youtube video from the 40's which proves less than nothing but insinuates much) LOL - think for a moment about a litigant trying to use "REEFER MADNESS" to prove that we've known for a long time that marijuana does, indeed, cause violent tendencies. I'm dying laughing over here...
Well, here's the deal. You aren't ALLOWED to introduce new evidence in a Motion to Dismiss. You just can't do it. Judge Koh knows this.
Although Voip-Pal's lawyer, just in case, put forward a motion to request the chance to debate and disprove this sneaky Apple trick - the Judge shut that down too - OBVIOUSLY - because she already knew it was improper, had disallowed the sneak attack and had already discarded it mentally. She's no dummy. And she knows what Apple is up to.
So here we are. Judge Koh has all of the info needed to make a ruling. That info includes the latest Supreme Court Decision and written opinion regarding there being NO Judicial Exceptions.
I truly believe, that in a just, sane world, there is no possibility for anything except for Judge Koh to deny Apple's motion to dismiss and to proceed with discovery on the damages.
But then, again - we have the Kardashian's, held out as "Celebrities" So, can you truly believe in Justice, right and wrong? One has to leave room for the unexpected....
Nicely stated -