Voip Pal Com Inc (VPLM)

[nomorerollbacks]

It is better written but still as.empty.as.the.original.alice.motion filing.


UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
VOIP-PAL.COM, INC., a Nevada corporation,
Plaintiff,
v.
TWITTER, INC., a Delaware corporation,
Defendant.
Case No. 5:18-cv-04523-LHK [Lead Case]
DEFENDANTS’ CONSOLIDATED REPLY IN SUPPORT OF DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS PLAINTIFF’S COMPLAINTS; MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT
ORAL ARGUMENT REQUESTED
JURY TRIAL DEMANDED
Date: March 21, 2019 Time: 1:30 p.m. Courtroom: 8 - 4th Floor Judge Lucy H. Koh
Case No. 5:18-cv-06054-LHK
VOIP-PAL.COM, INC., a Nevada corporation,
Plaintiff,
v.
CELLCO PARTNERSHIP d/b/a/ Verizon Wireless, a Delaware corporation
Defendant.
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 1 of 24
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
VOIP-PAL.COM, INC., a Nevada corporation,
Plaintiff,
v.
AT&T CORP, a Delaware corporation,
Defendant.
Case No. 5:18-cv-06177-LHK
Case No. 5:18-cv-06217-LHK
VOIP-PAL.COM, INC., a Nevada corporation,
Plaintiff,
v.
APPLE INC., a California corporation,
Defendant.
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 2 of 24
i DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
TABLE OF CONTENTS I. INTRODUCTION .............................................................................................................. 1 II. UNDER ALICE STEP ONE, THE ASSERTED CLAIMS ARE DIRECTED TO ABSTRACT IDEAS. .......................................................................................................... 3 A. The Asserted Claims Are Written In Functional, Results-Oriented Language That A Person Could Carry Out As Mental Steps Or With A Pen And Paper. ............................................................................................................... 3 B. The Purported Benefits Of “User-Specific Calling” And “Transparent Routing” Are Insufficient. ....................................................................................... 5 C. The Asserted Means-Plus-Function Claims Are Similarly Ineligible. ................... 6 D. Defendants’ “Brick and Mortar” Analogy Is Properly Tied To The Claim Language And Confirms The Abstract Nature Of The Claims............................... 8 E. VoIP-Pal’s Cited District Court Decisions Involving Communication Routing Are Of No Avail To VoIP-Pal................................................................. 10 III. UNDER ALICE STEP 2, THE ASSERTED CLAIMS LACK ANY INVENTIVE CONCEPT. ....................................................................................................................... 11 A. None Of The Purported Benefits Lauded By VoIP-Pal Exist In The Claims, And Therefore Cannot Supply An Inventive Concept. ......................................... 11 B. The Asserted Claims Recite Functional Descriptions Of Conventional Call Routing Technology, Not Unconventional Computer Network Systems. ............ 12 IV. NO FACTUAL ISSUES STAND IN THE WAY OF DISMISSAL. ............................... 14 V. CONCLUSION ................................................................................................................. 15
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 3 of 24
ii DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
TABLE OF AUTHORITIES
Cases Page(s) Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016) ...........................................................................................10, 13
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) ...................................................................................................... passim
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) ...........................................................................................11, 14
British Telecomms. PLC v. IAC/InterActiveCorp, No. 18-366-WCB, 2019 U.S. Dist. LEXIS 17269 (D. Del. Feb. 4, 2019) ................................14
BroadSoft, Inc. v. CallWave Commc’ns., LLC, 282 F. Supp. 3d 771 (D. Del. 2017), aff’d, 739 F. App’x 985 (Fed. Cir. 2018) ...................4, 12
BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018) ...................................................................................................2
Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014) .................................................................................................12
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018) ...................................................................................................5
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017) ...................................................................................................6
Diamond v. Diehr, 450 U.S. 175 (1981) ....................................................................................................................3
Evolutionary Intelligence, LLC v. Sprint Nextel Corp., 137 F. Supp. 3d 1157 (N.D. Cal. 2015), aff’d, 677 F. App’x 679 (Fed. Cir. 2017) .........................................................................................................................................15
Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299 (Fed. Cir. 2018) .................................................................................................14
Genband US LLC v. Metaswitch Networks Corp., No. 2:14-cv-33-JRG-RSP, 2016 U.S. Dist. LEXIS 37946 (E.D. Tex. Jan. 6, 2016) ............................................................................................................10
Glasswall Sols., Ltd. v. Clearswift Ltd., No. 2018-1407, 2018 U.S. App. LEXIS 35818 (Fed. Cir. Dec. 20, 2018) ...............................15
Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp., No. 6:18-CV-00298-JRG, 2019 U.S. Dist. LEXIS 11355 (E.D. Tex. Jan. 24, 2019) .........................................................10
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) .............................................................................................4, 11
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 4 of 24
iii DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018) .............................................................................................2, 15
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016) ...................................................................................................5
Messaging Gateway Sols., LLC v. Amdocs, Inc., No. 14-732-RGA, 2015 U.S. Dist. LEXIS 49408 (D. Del. Apr. 15, 2015) ..............................13
Phoenix Licensing, L.L.C. v. Consumer Cellular, Inc., No. 2:16-CV-0152-JRG-RSP, 2017 U.S. Dist. LEXIS 47790 (E.D. Tex. Mar. 7, 2017) .............................................................................................................8
Procter & Gamble Co. v. QuantifiCare Inc., 288 F. Supp. 3d 1002 (N.D. Cal. 2017) ..................................................................................7, 8
Pure Data Sys., LLC v. Ubisoft, Inc., 329 F. Supp. 3d 1054 (N.D. Cal. 2018) ................................................................................9, 10
Ronald A. Katz Tech. Licensing, L.P. v. FedEx Corp., No. 2:15-cv-02329-JPM-tmp, 2016 U.S. Dist. LEXIS 38479 (W.D. Tenn. Mar. 24, 2016)......................................................................................................11
Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905 (Fed. Cir. 2017) .....................................................................................................8
Stanacard v. Rubard, LLC, No. 12CIV5176CMMHD, 2015 U.S. Dist. LEXIS 157345 (S.D.N.Y. Nov. 18, 2015) .....................................................................................................9, 12
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016) .............................................................................................6, 15
Twilio, Inc. v. Telesign Corporation, No. 16-cv-06925-LHK, 2017 WL 1208588 (N.D. Cal. Mar. 31, 2017) ...................................11
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329 (Fed. Cir. 2017) .............................................................................................4, 10
Uniloc US, Inc. v. Med. Info. Tech., Inc., 2017 U.S. Dist. LEXIS 192677 (E.D. Tex. Mar. 30, 2017), aff’d, Uniloc USA, Inc. v. Picis, Inc., No. 2017-2171, 2019 U.S. App. LEXIS 3922 (Fed. Cir. Feb. 8, 2019) ...............................................................................................................3
Uniloc USA, Inc. v. Apple Inc., No. C 18-00358-WHA, 2018 U.S. Dist. LEXIS 84239 (N.D. Cal. May 18, 2018) .........................................................................................................15
Univ. of Florida Research Found., Inc. v. GE Co., No. 2018-1284, 2019 U.S. App. LEXIS 5568 (Fed. Cir. Feb. 26, 2019) ...................................4
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 5 of 24
iv DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) .................................................................................................14
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 6 of 24
1 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
This Reply responds to Plaintiff VoIP-Pal’s Opposition to Defendants’ Consolidated
Motion to Dismiss Plaintiff’s Complaint (e.g., VoIP-Pal’s Corrected Opposition (“Opp.”) is AT&T
ECF No. 69 and Defendants’ Motion to Dismiss (“Mot.”) is AT&T ECF No. 63).
MEMORANDUM OF POINTS AND AUTHORITIES
I. INTRODUCTION VoIP-Pal’s arguments commit the cardinal error of Section 101 analysis—they focus on the
patent specification and alleged “benefits” instead of the purported invention as set forth in the
asserted claims. The claims recite high-level steps written in functional language, such as
“determining a match” between information about the caller and callee, “classifying the call,” and
“producing a routing message.” Although VoIP-Pal attempts to paint its claims in a more specific
light as particular to “integrating public and private networks,” its infringement theories—that the
claims “are used with almost all cellular and WiFi voice and message communications” and are
met by such broad activities as making a video call, sending a text message from an app, and
replying to a tweet—flatly contradict VoIP-Pal’s argument. See AT&T ECF No. 3-21 at 2.
VoIP-Pal’s claims are directed to nothing more than the abstract idea of determining where
to route a communication as between two [networks/network portions] using information about
the participants. And, significantly, VoIP-Pal does not dispute Defendants’ identification of
claim 1 of the ’815 patent as representative of the multi-network claims and claim 74 of the ’005
patent as representative of the single-network claims.
Regarding Alice step one, VoIP-Pal argues that the claims are not directed to an abstract
idea because the claims allegedly “improve call router controller technology” by providing
purported benefits that VoIP-Pal calls “user specific calling” and “transparent routing.” But those
purported benefits appear nowhere in the claims. Contrary to VoIP-Pal’s assertions, the claims are
explicitly directed to concepts long held abstract: acquiring information (e.g., “locating a caller
dialing profile”); analyzing information (e.g., “determining a match [of] attributes [to an]
identifier” and “classifying the call . . . when said match meets . . . classification criteria”); and
producing information (e.g., “producing a . . . routing message for receipt by a call controller”).
Given the claims exhibit these hallmarks of an abstract idea, Defendants’ reference to the analogy
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 7 of 24
2 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
of telephone operators merely confirms the other reasons for finding that the asserted claims are
directed to an abstract idea. Defendants’ Motion does not depend on the Court’s acceptance of this
analogy. Nonetheless, it is common knowledge that, for example, telephone operators would
conventionally classify telephone calls as long distance relative to the caller’s area code if the
callee’s area code was different than the caller’s area code.
Regarding Alice step two, VoIP-Pal argues that its claims contain an inventive concept
because “using caller attributes to utilize callee identifiers and caller attributes to transparently route
calls between private/public networks is unconventional.” Opp. at 18. But again, VoIP-Pal fails
to tie its arguments to the language of the claims. The claims do not specify “transparency.” VoIP
Pal identifies nothing in the claims that amounts to “significantly more” than the abstract idea itself.
Indeed, the asserted single-network claims refer to one network and not to two networks or public
and private networks.
In an apparent attempt to fill holes in the intrinsic record, VoIP-Pal’s Opposition introduces
an improper expert declaration, which this Court should exclude as outside the pleadings. VoIP
Pal also argues that a factual dispute exists as to whether the claims are necessarily rooted in
computer technology because VoIP-Pal would “show that a VoIP system is inherently a computer
network.” Opp. at 24. In addition to the fact that almost no asserted claim recites “VoIP,” VoIP
Pal’s argument is irrelevant to a Section 101 analysis. As a matter of law, merely limiting an
abstract idea to a particular technological environment (a computer network, the Internet, a VoIP
system, etc.) does not demonstrate an inventive concept. See, e.g., Interval Licensing LLC v. AOL,
Inc., 896 F.3d 1335, 1346 (Fed. Cir. 2018) (“It is well-settled that placing an abstract idea in the
context of a computer does not ‘improve’ the computer or convert the idea into a patent-eligible
application of that idea.”); BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018)
(“As a matter of law, narrowing or reformulating an abstract idea does not add ‘significantly more’
to it.”). Moreover, Defendants’ discussion of the claims and material historical facts do not
contradict the specification or the Third Amended Complaint, leaving no factual dispute for future
resolution. VoIP-Pal’s Complaints should thus be dismissed with prejudice because the asserted
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 8 of 24
3 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
claims are directed to patent ineligible subject matter.1
II. UNDER ALICE STEP ONE, THE ASSERTED CLAIMS ARE DIRECTED TO ABSTRACT IDEAS.
A. The Asserted Claims Are Written In Functional, Results-Oriented Language That A Person Could Carry Out As Mental Steps Or With A Pen And Paper. The asserted claims are written in functional, goal-oriented language that could be carried
out in a person’s mind or by pen and paper, and VoIP-Pal’s Opposition fails to show otherwise.
VoIP-Pal argues that the claims are not directed to acquiring, analyzing, and presenting
information, referring to passages from the specification to argue that the call controller causes a
communication link to be established in response to a routing message. Opp. at 11. VoIP-Pal
further argues that “the asserted claims define, with particularity, the process through which the
call controller is set up to route the communications.” Id. at 12. Specifically, VoIP-Pal asserts that
“calling attributes” located from a “caller dialing profile” are compared to “at least a portion of the
callee identifier” to identify a “match”; when the match meets “classification criteria,” the call is
classified as a public or private network call in the “classifying” step; and the classification of the
call yields a “routing message” that “sets up the call controller.” Id. And VoIP-Pal further argues
that the call controller is set up to “establish the call” by “identifying a gateway to the public
network.” Id. at 14. But VoIP-Pal’s own argument illustrates that the claim elements are fashioned
from vague functional terms—“attributes,” “criteria,” and “classifying”—to obtain results (a
classification and routing message). The claims do not specify how attributes are compared to a
1 VoIP-Pal repeatedly cites to inter partes review proceedings and Apple’s arguments in those IPRs regarding prior art. Opp. at 4, 21 n.16, 25. Patent eligibility was not—and indeed, could not have been—analyzed in those IPRs. Likewise, any statements that Apple or the PTAB made about novelty and obviousness over particular prior art references are irrelevant to the subject matter eligibility analysis. See Diamond v. Diehr, 450 U.S. 175, 188-90 (1981); Uniloc US, Inc. v. Med. Info. Tech., Inc., 2017 U.S. Dist. LEXIS 192677, at *9 (E.D. Tex. Mar. 30, 2017) (“denial of a petition for inter partes review is irrelevant to the eligibility analysis”), aff’d, Uniloc USA, Inc. v. Picis, Inc., No. 2017-2171, 2019 U.S. App. LEXIS 3922 (Fed. Cir. Feb. 8, 2019). VoIP-Pal’s reference to AT&T’s and Verizon’s withdrawal of their previous motions to dismiss is also an irrelevant diversion. Opp. at 1. In Nevada, AT&T and Verizon filed motions to dismiss VoIP-Pal’s Second Amended Complaints. AT&T ECF No. 6. In response to the motions, VoIPPal sought leave to file Third Amended Complaints. AT&T and Verizon withdrew their motions so the allegations in the Third Amended Complaints could be addressed in an efficient and orderly manner. AT&T ECF No. 49. After transfer to this Court, VoIP-Pal filed Third Amended Complaints against AT&T and Verizon and the First Amended Complaint against Twitter. Those recent Complaints are the subject of Defendants’ present Consolidated Motion to Dismiss.
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 9 of 24
4 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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.
VoIP-Pal attempts to find eligibility in identifying an end goal—improving the problem of
integration when “two networks have significant differences such as the use of incompatible callee
identifiers, addressing schemes and protocols” (Opp. at 5)—but the asserted claims do not explain
how that goal is accomplished. See, e.g., Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
874 F.3d 1329, 1337 (Fed. Cir. 2017) (“[A claimed] method for routing information using result
based functional language . . . requires the functional results of ‘converting,’ ‘routing,’
‘controlling,’ ‘monitoring,’ and ‘accumulating records’ but does not sufficiently describe how to
achieve these results in a non-abstract way.”); Univ. of Florida Research Found., Inc. v. GE Co.,
No. 2018-1284, 2019 U.S. App. LEXIS 5568, at *9 (Fed. Cir. Feb. 26, 2019) (“That the automation
[of collecting, analyzing, manipulating, and displaying of medical data] can result in life altering
consequences . . . is laudable, but it does not render it any less abstract.”); BroadSoft, Inc. v.
CallWave Commc’ns., LLC, 282 F. Supp. 3d 771, 781 (D. Del. 2017) (finding abstract the process
of “accessing stored information and directing the call in accordance with the stored instructions”),
aff’d, 739 F. App’x 985 (Fed. Cir. 2018). Furthermore, the asserted single-network claims refer to
one network, not two. To the extent a “gateway” is mentioned in the claims, it is merely a potential
call routing destination—i.e., a generic part of the technological environment in which the abstract
idea occurs. And for claims that require “initiation of a call,” receiving a call is likewise abstract.
Mot. at 16 (citing cases).
Additionally, VoIP-Pal does not contest that a person could perform the claimed steps in
their mind or with a pen and paper. On that point, VoIP-Pal argues only that telephone operators
did not look at caller information to classify calls. Opp. at 16-17. But that conflates separate issues
under Alice step one: whether the claims could be performed in a person’s mind with whether the
claims reflect an actual longstanding practice. See, e.g., Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (analyzing as separate issues whether the claims could
be performed as mental steps and whether the claims were directed to long-standing practices).
VoIP-Pal’s arguments address only the latter issue (longstanding practice), and even there, VoIP
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 10 of 24
5 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Pal is incorrect. See infra Section II.D.
VoIP-Pal further argues, “claims organizing or analyzing information are eligible when
directed to something more,” citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313-14 (Fed. Cir. 2016), and Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356,
1362-63 (Fed. Cir. 2018). Opp. at 12-13. Those decisions are distinguishable because they
involved patent claims that are very different from VoIP-Pal’s asserted claims: McRO involved
claims for automating 3-D animation that recited specific rules that are lacking in VoIP-Pal’s
asserted claims. McRO, 837 F.3d at 1313-14. Likewise, Core Wireless concerned claims for “a
specific manner of displaying a limited set of information to the user, rather than using conventional
user interface methods to display a generic index on a computer.” Core Wireless, 880 F.3d at 1363
(emphasis added).
B. The Purported Benefits Of “User-Specific Calling” And “Transparent Routing” Are Insufficient. VoIP-Pal contends that the asserted claims are not directed to abstract ideas because they
give rise to “user-specific calling” and “transparent routing” as purported benefits. Opp. at 7-10
(citing Third Amended Complaint, AT&T ECF No. 59 ¶¶ 9-10, 12-14). That contention is
irrelevant because the asserted claims do not recite or require those purported benefits.
VoIP-Pal’s Third Amended Complaint against AT&T avers that the Asserted Patents
“support user-specific calling styles from any continent or country based on the application of user
specific attributes to callee identifiers and network classification criteria to route a call. It was
unnecessary for the user to do anything special to ‘trigger’ such user-specific call processing.”
AT&T ECF No. 59 ¶ 12. VoIP-Pal’s Opposition further states, “Different callers with differently
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 (italics
in original). Contrary to VoIP-Pal’s contentions, the asserted claims do not require “user-specific
calling.” The claims do not contain any limitation regarding “calling styles from any continent or
country” or “the string of digits that a caller may dial,” much less using caller attributes to allow
the same string of dialed digits to reach different destinations.
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 11 of 24
6 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
For “transparent routing,” VoIP-Pal acknowledges that this purported benefit simply refers
to automatic routing without requiring the user’s manual input:
. . . enables using a caller’s attributes to evaluate a callee identifier against network routing criteria to cause a call to automatically be routed over a system network (“private network”) or another network interconnected to the system network via a gateway (e.g., a “public network”) 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 PSTN call) and even without the user knowing whether the destination is on the private or public network.
Opp. at 8 (citing AT&T ECF No. 59 ¶¶ 9-10, 13-14) (italics in original; emphasis in bold italics
added). Here again, the asserted claims do not require automatic (or “transparent”) routing of a call
or communication without the user manually specifying information, such as the network to use.
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 PSTN call without dialing the prefix “9.”
Unclaimed features such as “user-specific calling” or “transparent routing” cannot save the
asserted claims from a finding of abstractness or patent ineligibility. Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“[D]etails from the specification cannot
save a claim directed to an abstract idea that recites generic computer parts.”) (citing Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013)).
Even if the Court were to find that “user-specific calling” or “transparent routing” are
required by the claims, those features would not change the claims’ abstract nature or impart an
inventive concept. By VoIP-Pal’s own descriptions, those features merely automate functions that
were previously carried out manually. Opp. at 7-9. The Federal Circuit has held that “mere
automation of manual processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017). “In those cases, ‘the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use computers as tools.’” Id.
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)).
C. The Asserted Means-Plus-Function Claims Are Similarly Ineligible. VoIP-Pal argues that the asserted claims written in means-plus-function form are not
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 12 of 24
7 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
directed to an abstract idea. Opp. at 14. But such claims (claims 28 and 111 of the ’815 patent and
claim 73 of the ’005 patent) merely recast the elements of the asserted method claims (such as the
representative claims) in means-plus-function format. As a general matter, this variation in claim
format does not change the abstract nature of the asserted claims. See Procter & Gamble Co. v.
QuantifiCare Inc., 288 F. Supp. 3d 1002, 1025, 1030 (N.D. Cal. 2017) (means-plus-function claim
was found ineligible on a motion to dismiss because the specification’s description of the relevant
elements confirmed that the claim remained focused on “acquiring and analyzing information”).
VoIP-Pal asserts that the structure associated with the means-plus-function elements of
claim 28 of the ’815 patent correspond to algorithms shown in Figures 8A-8D, which are carried
out by the routing controller. Opp. at 14-15. As an initial matter, the specification describes the
routing controller in generic computer terms as an item that “may be implemented as separate
modules on a common computer system or by separate computers, for example.” ’005 patent at
13:20-22. The routing controller includes generic computer components: a processor, program
memory, a table memory, buffer memory, and an I/O port. E.g., id. at 17:25-53, Fig. 7. The
program memory contains code that directs the processor to carry out the functions of the routing
controller, which produces a routing message. Id.
The routing controller compares information in the dialing profiles of the caller and callee,
generates a routing message, which reflects the result of the comparison and is used to determine
how to route the call. Mot. at 4-5, 13-14. The routing controller searches a database to obtain the
dialing profiles—for example, “to locate and retrieve from the database 18 a record associating
calling attributes with the calling subscriber.” Id.; ’005 patent at 17:63-66. While Figures 8A-8D
provide more detail concerning the specific types of information that is compared, the information
is still conventional: the dialing profiles include information such as the user name, domain,
international and national dialing digits, country code, and number length. Mot. at 4-5, 13-14; ’005
patent at 17:63-66, Figs. 9 (user or subscriber profile), 10 (caller profile), 11 and 12 (callee
profiles); see Phoenix Licensing, L.L.C. v. Consumer Cellular, Inc., No. 2:16-CV-0152-JRG-RSP,
2017 U.S. Dist. LEXIS 47790, at *72-77 (E.D. Tex. Mar. 7, 2017) (finding means-plus-function
claims that required conventional computer and network components for obtaining, selecting,
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 13 of 24
8 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
preparing, and delivering marketing communications ineligible). Moreover, those figures confirm
that the alleged structure merely “involves analyzing information by steps people go through in
their minds.” See Procter & Gamble, 288 F. Supp. 3d at 1025 (finding that “merely spell[ing] out
the algorithmic processes in more detail” did not shift the focus of the claims away from the abstract
idea) (internal quotations and citations omitted).
As a result, the purported algorithmic structure identified by VoIP-Pal for the asserted
means-plus-function claims—Figures 8A-8D and related descriptions in the specification—merely
describes an abstract process of acquiring, analyzing, and presenting information. Mot. at 15-17.
The basic character of the claim remains unchanged by the purported structure in the specification
and is not substantively different than the representative claim for purposes of Section 101.
Therefore, the asserted means-plus-function claims are also directed to an abstract idea.
D. Defendants’ “Brick and Mortar” Analogy Is Properly Tied To The Claim Language And Confirms The Abstract Nature Of The Claims. VoIP-Pal’s asserted claims are directed to an abstract idea for the reasons explained above.
In addition, Defendants’ analogy of telephone operators illustrates and confirms the abstract nature
of the asserted claims, but Defendants’ Motion does not depend on the Court’s acceptance of this
analogy. VoIP-Pal’s criticism of Defendants’ “brick and mortar” analogy—that switchboard
operators allegedly never used information about a caller to classify or route calls—is incorrect. Opp. at 16.2 VoIP-Pal concedes that switchboard operators long ago routed calls using callee
information and that caller information was readily available, known to the operators, and used by
them for other purposes. Id. (discussing use of caller information for toll charges, recording for
call back, and via incoming trunks). But VoIP-Pal goes too far in asking the Court to ignore
common knowledge that switchboard operators used information about the caller, not just the
callee, to classify and route calls.
2 VoIP-Pal’s averment regarding the practice of switchboard operators is not reflected in the Third Amended Complaint or in the specification of the asserted patents, and therefore, need not be accepted as true for purposes of resolving the Rule 12 motion. Moreover, the Court can disregard this statement because it contradicts historical fact. See Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017) (a “court need not ‘accept as true allegations that contradict matters properly subject to judicial notice’” in ruling on Rule 12 motion) (citations omitted).
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 14 of 24
9 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Switchboard operators did in fact classify and route calls based on attributes of a caller.3
For example, a long-distance operator would need to know if the caller and callee were in the same
service area. E.g., Stanacard v. Rubard, LLC, No. 12CIV5176CMMHD, 2015 U.S. Dist. LEXIS
157345, at *21 (S.D.N.Y. Nov. 18, 2015) (in finding call-routing claims reflected longstanding
practices, holding that operator “recognized Ruth as the caller from the line that rang at Central”
and callerID implemented the same feature with machinery instead of humans) (emphasis added);
see supra n.3. VoIP-Pal claims nothing more than the use of that caller information (i.e., caller ID)
to classify calls, which has been found abstract for similar claims directed to long-distance call
routing. See Stanacard, 2015 U.S. Dist. LEXIS 157345, at *21-24 (finding claims directed to the
abstract idea of “connecting two people via long distance telephony using caller ID and call
forwarding,” which recite “nothing more tha[n] caller ID as it has long existed”). The same holds true here.4
VoIP-Pal relies on two cases in its effort to refute the telephone operator analogy under
Alice step one, but they are distinguishable. Opp. at 17. First, in Pure Data Sys., LLC v. Ubisoft,
Inc., 329 F. Supp. 3d 1054 (N.D. Cal. 2018), this Court agreed that the claims were akin to certain
“brick and mortar” practices that rendered them abstract under Alice step one. Id. at 1065. In that
way, Pure Data supports Defendants’ argument that the claims are abstract. The Court in Pure
Data, however, rejected the argument that those practices were sufficiently well-known and
conventional to a skilled artisan in the relevant field under Alice step two. Id. at 1067-68. Thus, at
3 VoIP-Pal curiously argues that “Defendants[’] reliance on the historical fact that telephone operators routed calls in some fashion has no foundation . . . and there is no record to support such conclusions.” Opp. at 20. This incorrectly intimates that the Court must ignore common sense and historical observations in deciding Rule 12 motions. Nevertheless, this historical fact is readily ascertainable and properly subject to judicial notice. See, e.g., Telephone Technology – 1940s – USA,” YouTube, available at https://www.youtube.com/watch?v=1801JMLNV9U (last accessed February 28, 2019) (demonstrating long-distance operator routing calls and using caller’s phone number in routing process). 4 Defendants object to VoIP-Pal’s proffered expert declaration in support of its opposition brief as presenting matters outside the pleadings under Rule 12 and not subject to judicial notice. See infra Section IV. Even were the Court to consider this declaration, VoIP-Pal’s expert admits that caller information was used in the routing process. AT&T ECF No. 69-6 ¶ 15 (“[A]n issue emerged where a caller would be a customer of one telephone company and the callee would be a customer of another. The solution that emerged to the problem was to introduce trunk lines, which connect one company to another.”); id. ¶ 20 (“These devices comprise a set of input ports, each dedicated to, and associated with a specific caller, and output ports, each associated with the callee.”).
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 15 of 24
10 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
most, Pure Data confirms that analogies from dissimilar industries or fields may be helpful in
illustrating abstractness under Alice step one but might not be sufficient to demonstrate what was
well-known, routine, and conventional under Alice step two. Crucially, VoIP-Pal does not contest
that the practices of switchboard operators are relevant to this case and fails to connect the
proposition from Pure Data to the circumstances here.
Likewise, VoIP-Pal relies on Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp., for the
proposition that a brick and mortar analogy does not apply if used in a way that “ignore[s] the
language” of the asserted claims. No. 6:18-CV-00298-JRG, 2019 U.S. Dist. LEXIS 11355, at *16
17 (E.D. Tex. Jan. 24, 2019) (finding the “analogy of selecting and donating books from and to a
library or store” was too far removed from the claimed invention of “using the selection and
contribution of content by the users to their respective personalized access points to distribute
content through a network”). But here, the practice of switchboard operators in using caller and
callee information to classify and determine how to route calls tracks the elements of VoIP-Pal’s
claims, which require “comparing” caller and callee information to “classify” a call.
Finally, even if operators never used caller information (which Defendants dispute), the
Court need not rely on any actual practice of operators using caller information to find the claims
directed to an abstract idea. See, e.g., Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253,
1263 n.3 (Fed. Cir. 2016) (“The eligibility finding does not turn on [] novelty . . . .”); Two-Way
Media, 874 F.3d at 1340 (“Eligibility and novelty are separate inquiries.”).
E. VoIP-Pal’s Cited District Court Decisions Involving Communication Routing Are Of No Avail To VoIP-Pal. VoIP-Pal asserts, “Courts have found similar telephone and other communication routing
claims to be eligible,” citing three district court decisions, only one of which is from this District,
without discussion. Opp. at 6. These non-binding decisions are distinguishable and do not
overcome the Federal Circuit authority cited in Defendants’ Motion. In Genband US LLC v.
Metaswitch Networks Corp., No. 2:14-cv-33-JRG-RSP, 2016 U.S. Dist. LEXIS 37946 (E.D. Tex.
Jan. 6, 2016), the court found claims not abstract because they involved a specific set of operations
for transforming a computer address in the context of a problem “specifically arising in computer
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 16 of 24
11 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
networks.” Id. at *23-24. In Ronald A. Katz Tech. Licensing, L.P. v. FedEx Corp., No. 2:15-cv
02329-JPM-TMP, 2016 U.S. Dist. LEXIS 38479 (W.D. Tenn. Mar. 24, 2016), the claim included
four structural elements that could carry out activities that were directed to more than “only [] the
abstract idea of item-ordering” and described “a specific way of processing calls to restrict access.”
Id. at *16-17. In Twilio, Inc. v. Telesign Corporation, No. 16-cv-06925-LHK, 2017 WL 1208588
(N.D. Cal. March 31, 2017), the Court found “platform patent” claims with highly computer
specific limitations (API, URI) to be “directed to a specific improvement in a type of computer
technology.” Id. at *26-29. In contrast, the Court found “score patent” claims to be directed to an
abstract idea and ineligible. Id. at *13-23.
III. UNDER ALICE STEP 2, THE ASSERTED CLAIMS LACK ANY INVENTIVE CONCEPT.
A. None Of The Purported Benefits Lauded By VoIP-Pal Exist In The Claims, And Therefore Cannot Supply An Inventive Concept. VoIP-Pal argues that Defendants disregard certain concepts that allegedly impart an
inventive concept, e.g., that the inventions relate to “individually customizable routing schemes
and elements”; “new and useful routing controller”; “facilitating the interoperability of private and
public communication networks”; “customization of dialing to follow any local PSTN convention
(or other dialing styles)”; and a “specially programmed routing controller.” Opp. at 18, 20, 21, 23,
24. Fatal to VoIP-Pal’s argument—regardless of whether such concepts described at that level of
generality could even qualify as inventive—is that none of those concepts or elements are reflected
in the claims. See supra Section II.B. The inventive concept inquiry must look to the language in
the claims, not to technical concepts that may be described in the specification. Symantec, 838 F.3d
at 1322 (“The district court erred in relying on the technological details set forth in the patent’s
specification and not set forth in the claims to find an inventive concept.”) (citing cases);
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)(holding that improvements described
in the specification may be relevant only “to the extent they are captured in the claims”).
In substance, much of VoIP-Pal’s argument under Alice step two regarding use of caller
attributes and callee identifiers to transparently route calls between private and public networks
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 17 of 24
12 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
(Opp. at 18-23) is a repackaging of its arguments regarding “user-specific calling” and “transparent
routing” under Alice step one. As explained above, those features are not claimed and merely
automate functions that were previously carried out manually, which is not an inventive concept.
Moreover, the Third Amended Complaint provides that “user-specific calling” is achieved through
storing user-specific attributes about the caller in a “dialing profile.” AT&T ECF No. 59 ¶ 12.
Storing information specific to a user in a database for call processing is routine computer activity
and not inventive. Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343,
1347-48 (Fed. Cir. 2014); Broadsoft, 282 F. Supp. 3d at 784-88 (holding that storing multiple phone
addresses for a subscriber in a database for call routing is abstract and not inventive). Automating
the call routing without user intervention is also not inventive. Broadsoft, 282 F. Supp. 3d at 780
83 (invalidating claims that receive a call, access stored information, and “execut[e] an automated
response”); Stanacard,2015 U.S. Dist. LEXIS 157345, at *20-21 (recognizing that in longstanding
switchboard operator practice, the caller “didn’t have to dial any numbers at all” to have the call
routed).
B. The Asserted Claims Recite Functional Descriptions Of Conventional Call Routing Technology, Not Unconventional Computer Network Systems. VoIP-Pal argues that the asserted claims are not conventional because “the claims recite a
specially programmed routing controller to provide call placement and routing in an individually
customizable manner for each caller.” Opp. at 18. But regardless of whether VoIP-Pal’s argument
is correct, it is irrelevant and would not save VoIP-Pal’s claims because the actual language of the
claims does not recite such a requirement. Instead, they simply recite steps of matching an
“attribute” of one participant to information from another participant and classifying a
communication when the “match” meets “criteria.” Whether one could discern from those vague
steps a potential to use the claims to “customize” routing is a distinct (and irrelevant) question from
whether the claims are written in a way such that they “ensure that the patent in practice amounts
to significantly more than a patent upon the ineligible concept itself.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (internal citations and quotations omitted). They do not.
The cases to which VoIP-Pal attempts to analogize its claims do not demonstrate an
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 18 of 24
13 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
inventive concept. For example, in DDR Holdings LLC v. Hotels.com, the “claims address[ed] the
[Internet-centric] problem of retaining website visitors . . . [that are] instantly transported away
from a host’s website” after clicking a hyperlink. 773 F.3d 1245, 1257 (Fed. Cir. 2014). The claims
recited an automatically-generated hybrid web page: a solution for a particular Internet-centric
problem that is “necessarily rooted in computer technology.” Id. The claims in DDR Holdings
“required doing something to a web page, not simply doing something on a web page.” Affinity
Labs, 838 F.3d at 1262. Here, the asserted claims are not directed to an Internet-centric problem
(nor do most even recite the use of the Internet); rather they are directed to routing of
communications such as calls, which pre-dates the Internet. Nor do the claims recite a technological
improvement to call routing; instead they merely recite determining where to route a
communication using information about the participants. See id. Messaging Gateway Sols., LLC
v. Amdocs, Inc. is similarly distinguishable. No. 14-732-RGA, 2015 U.S. Dist. LEXIS 49408 (D.
Del. Apr. 15, 2015). There, the district court cited DDR Holdings in finding patent eligible claims
reciting inserting a “text message into an Internet Protocol (IP) message,” where the “text message
contains a multidigit address that is fewer than seven digits and that is associated with a URL of
the internet server.” Id. at *7-8, *15-16. The court found the claims to be “directed to a problem
unique to text message telecommunication between a mobile device and a computer” and to
“specif[y] how an interaction between a mobile phone and a computer is manipulated in order to
achieve a desired result which overrides conventional practice.” Id. at *15-16. Unlike in Messaging
Gateway, the claims here lack the same specificity that tied the claim language to the problem
arising in the realm of computer networks. Id.
This case is also distinguishable from the other cases that VoIP-Pal cites—BASCOM,
Amdocs, Avocent, and Meetrix—because the claims do not specify any specific, unconventional
arrangement of computer network elements. The only purported computer component claimed is
a “controller,” and the remaining functional context of the claims do not recite any non
conventional or non-generic characteristics of the controller. ’815 patent asserted claims (“call
routing controller” and “call controller”); ’005 patent at claim 49 and 73 (“call controller”), other
asserted claims (“controller”); see Mot. at 21-23. By contrast:
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 19 of 24
14 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
? In BASCOM Glob. Internet Servs. v. AT&T Mobility LLC, the claims recited “installation
of a filtering tool at a specific location, remote from the end-users, with customizable
filtering features specific to each end user.” 827 F.3d 1341, 1350 (Fed. Cir. 2016). The
Federal Circuit found that the “specific location” was different from the location of
traditional content filters, and therefore, could represent a “non-conventional and non
generic arrangement of known, conventional pieces.” Id. ? In Avocent Huntsville, LLC v. ZPE Sys., the claimed invention “consolidate[ed] and
conver[ted] . . . [a plurality of different types of] management data at a single” management
application closer to the managed devices. No. 3:17-cv-04319-WHO, 2018 U.S. Dist.
LEXIS 47655, at *20-21 (N.D. Cal. Mar. 21, 2018). ? In Meetrix IP, LLC v. Citrix Sys., the claims recited “PSTN, VoIP, IP, and VPN . . .
[elements that] work together to operate in an unconventional manner.” No. 1-16-CV
1033-LY, 2017 U.S. Dist. LEXIS 196967, at *9 (W.D. Tex. July 27, 2017). ? In Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., the Federal Circuit found an inventive
concept where the claimed “generic gatherers, network devices, and other components work[ed] in an unconventional distributed fashion.” 841 F.3d 1288, 1301 (Fed. Cir. 2016).5
IV. NO FACTUAL ISSUES STAND IN THE WAY OF DISMISSAL. Citing Berkheimer, VoIP-Pal contends that discovery is necessary before the Court can find
the claims ineligible. But as Berkheimer acknowledged, “not every § 101 determination contains
genuine disputes over the underlying facts material to the § 101 inquiry.” 881 F.3d at 1368.
“District courts have frequently decided section 101 issues on motions to dismiss, and the Federal
Circuit has approved of that procedure on numerous occasions, including in cases post-dating the
decisions in Aatrix and Berkheimer.” British Telecomms. PLC v. IAC/InterActiveCorp, No. 18
366-WCB, 2019 U.S. Dist. LEXIS 17269, at *66 (D. Del. Feb. 4, 2019) (collecting cases).
Here, there exists no factual dispute relevant to disposition of VoIP-Pal’s claims for failure
5 VoIP-Pal also relies upon Visual Memory and Finjan, but those cases did not address Alice step two. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017); Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299, 1306 (Fed. Cir. 2018).
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 20 of 24
15 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
to satisfy § 101. For example, VoIP-Pal promises to “elicit evidence to show that a VoIP system
is inherently a computer network” that communicates using PSTN and non-PSTN protocols, which
may have incompatible caller/callee identifiers. Opp. at 24-25. VoIP-Pal’s proposed evidence,
however, cannot create a genuine dispute for two reasons. First, none of the asserted claims include
the term PSTN, none discuss communicating via PSTN and non-PSTN protocols, and none discuss
processing incompatible caller/callee identifiers. See Synopsys, 839 F.3d at 1149 (“The § 101
inquiry must focus on the language of the Asserted Claims themselves.”). Second, whether “a VoIP
system is inherently a computer network” is irrelevant to the Section 101 analysis because limiting
an abstract idea to a particular technological environment (e.g., a computer network or VoIP
system) is legally insufficient to demonstrate an inventive concept. See, e.g., Interval Licensing,
896 F.3d at 1346.
VoIP-Pal’s declaration from its technical expert also does not create a factual dispute. For
one, the Court should disregard VoIP-Pal’s procedurally improper attempt to introduce evidence
outside the pleadings in a Rule 12(b)(6) motion. See Evolutionary Intelligence, LLC v. Sprint
Nextel Corp., 137 F. Supp. 3d 1157, 1163 n.5 (N.D. Cal. 2015) (finding expert declaration
submitted in opposition to Rule 12 motion on § 101 “not appropriate for the court to consider on a
motion to dismiss”), aff’d, 677 F. App’x 679 (Fed. Cir. 2017). Regardless, the declaration merely
provides a history of telephone and VoIP technology and does not include an opinion or evidence
that the VoIP-Pal patents are inventive over then-existing telephony systems. AT&T ECF No. 68
6 ¶¶ 12-25. As the Federal Circuit found in a similar situation, an expert’s “declaration of the
alleged advantages in the claimed invention also does not preclude dismissal on the pleadings.”
Glasswall Sols., Ltd. v. Clearswift Ltd., No. 2018-1407, 2018 U.S. App. LEXIS 35818, at *5 (Fed.
Cir. Dec. 20, 2018); see Uniloc USA, Inc. v. Apple Inc., No. C 18-00358-WHA, 2018 U.S. Dist.
LEXIS 84239, at *23 (N.D. Cal. May 18, 2018) (finding no factual dispute as to the “routine and
conventional nature” of claimed invention where alleged improvements are “results flowing from
an underlying patent-ineligible concept rather than from any specific hardware configuration”).
V. CONCLUSION Defendants respectfully request that the Court grant the motion to dismiss with prejudice.
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 21 of 24
16 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
DATED: February 28, 2019
By: /s/ Gene W. Lee Gene W. Lee
PERKINS COIE LLP Gene W. Lee (pro hac vice) Thomas Matthew (pro hac vice) 30 Rockefeller Plaza 22nd Floor New York, NY 10112-0015 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail]
By: /s/ Megan S. Woodworth Megan S. Woodworth
VENABLE LLP Frank C. Cimino, Jr. (pro hac vice) Megan S. Woodworth (pro hac vice) 600 Massachusetts Ave., NW Washington, D.C. 20001 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail]
Sarah Stahnke (SBN 264838) Amisha Manek (SBN 305163) 3150 Porter Drive Palo Alto, CA 94304-1212 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail]
Attorneys for Defendant Twitter, Inc.
William A. Hector (SBN 298490) 101 California Street, Suite 3800 San Francisco, CA 94111 Telephone: [phone] Facsimile: [phone] [e-mail]
Attorneys for Defendant Cellco Partnership
By: /s/ Bryant C. Boren, Jr. Bryan C. Boren, Jr.
BAKER BOTTS LLP Bryant C. Boren, Jr. 1001 Page Mill Road, Bldg. One, St. 200 Palo Alto, CA 94304 Telephone: [phone] Facsimile: [phone] [e-mail]
Wayne O. Stacy 101 California Street, Suite 3600 San Francisco, CA 94111 Telephone: [phone] Facsimile: [phone] [e-mail]
Attorneys for Defendant AT&T Corp.
By: /s/ Peter C. Magic Peter C. Magic
DESMARAIS LLP John M. Desmarais (SBN 320875) Ameet A. Modi (pro hac vice application to be submitted) 230 Park Avenue New York, NY 10169 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail]
Peter C. Magic (SBN 278917) [e-mail] 101 California Street, Suite 3070 San Francisco, CA 94111 Telephone: [phone] Facsimile: [phone]
Attorneys for Defendant Apple Inc.
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 22 of 24
17 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LHK
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Samir A. Bhavsar (pro hac vice) Morgan Grissum (pro hac vice) 2001 Ross Avenue, Suite 900 Dallas, Texas 75201 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail]
Lauren J. Dreyer (pro hac vice) 1299 Pennsylvania Ave NW Washington, DC 20004 Telephone: [phone] Facsimile: [phone] [e-mail]
Attorneys for Defendant AT&T Corp.
ATTESTATION OF CONCURRENCE IN FILING Pursuant to Northern District of California Local Rule 5-1(i)(3), I attest that concurrence
in the filing of this document has been obtained from the other Signatories to this document.
By: /s/ Bryant C. Boren, Jr. Bryan C. Boren, Jr. BAKER BOTTS LLP Bryant C. Boren, Jr. 1001 Page Mill Road, Bldg. One, St. 200 Palo Alto, CA 94304 Telephone: [phone] Facsimile: [phone] [e-mail]
Case 5:18-cv-06177-LHK Document 70 Filed 02/28/19 Page 23 of 24
18 DEFS.’REPLY IN SUPPORT OF MOTION TO DISMISS CASE NOS.18-CV-04523,-06054,-06177,-06217-LH