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`Case 8:19-cv-01150-JLS-ADS Document 35-5 Filed 10/31/19 Page 1 of 37 Page ID #:468
`
`
`
`EXHIBIT 2
`
`EXHIBIT 2
`
`

`

`Case: 18-1132 Document: 67 Page: 1 Filed: 10/30/2018
`Case 8:19-cv-01150-JLS-ADS Document 35-5 Filed 10/31/19 Page 2 of 37 Page ID #:469
`
`18-1132, -1346, -1448
`
`United States Court of Appeals
`for the Federal Circuit
`
`
`
`
`
`
`
`
`
`
`
`
`UNILOC USA, INC. AND UNILOC LUXEMBOURG, S.A.,
`Plaintiffs-Appellants,
`
`v.
`
`ADP, LLC,
`Defendant
`
`BIG FISH GAMES, INC.,
`Defendant-Appellee.
`
`
`2018-1132, -1346
`
`
`Appeals from the United States District Court for the Eastern District of Texas
`in Nos. 2:16-cv-00741-RWS and 2:16-cv-00858-RWS,
`Judge Robert W. Schroeder III
`
`
`UNILOC USA, INC. AND UNILOC LUXEMBOURG, S.A.,
`Plaintiffs-Appellants,
`
`v.
`
`BITDEFENDER LLC, KASPERSKY LAB, INC.,
`Defendants-Appellees.
`
`2018-1448
`
`Appeals from the United States District Court for the Eastern District of Texas
`in Nos. 2:16-cv-00394-RWS, and 2:16-cv-00871-RWS,
`Judge Robert W. Schroeder III
`
`

`

`Case: 18-1132 Document: 67 Page: 2 Filed: 10/30/2018
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`
`
`CORRECTED REPLY BRIEF OF PLAINTIFFS-APPELLANTS
`UNILOC USA, INC. AND UNILOC LUXEMBOURG, S.A.
`
`Paul J. Hayes
`James J. Foster
`Aaron S. Jacobs
`Prince Lobel Tye LLP
`One International Place, Suite 3700
`Boston, MA 02110
`(617) 456-8000
`jfoster@princelobel.com
`
`Counsel for Plaintiffs-Appellants
`
`October 30, 2018
`
`
`
`

`

`Case: 18-1132 Document: 67 Page: 3 Filed: 10/30/2018
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`Case 8:19-cv-OQP§G:JL&JA1I§§ Dmmsfié’ Fi’éflfoflallllfilefith/fioéfigw Page ID #:471
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`Uniloc USA, Inc. et al.
`
`ADP LLC BIg Fish Games Inc
`IVG'I'ec«Wages USE Inc. et x
`new: me me
`
`Case No.
`
`CERTIFICATE OF INTEREST
`
`ANIERDED
`Counsel for the:
`3 (petitioner) I (appellant) E (respondent) Z (nppellee) E (unions) I (name of party)
`
`Appellants Uniloc USA. Inc. and Uniloc Luxembourg. S.A.
`We: the following (use "None' if applicable: use extra sheets If accessory):
`
`3. Parent corporations and
`2. None of Real Patty in interest
`publicly held companies
`(Please onb' include an real party
`1. Full Name of Party
`thntown IO‘oormooeof
`ininterectNO’l‘identifiedinl
`Representedbyme
`stockIn the x.”
`Uniloc USA Inc — um Comm my m
`
`Uniloc Luxembourg S.A.
`
`Uniloc 2017 LLC
`
`CF Uniloc Holdings LLC
`
`
`
`4. Themesofnlllnwfimsnndthepmornseodnmthnt nppenredfortho pnrtyornm'lcus now
`represented by me in the trial court or agency or are expected to appear in this coon (and who have not
`or will not enter an appearance in this case) are;
`Lawfrmaooeanmhtn‘scwn: PrinceLobelTye.LLP
`
`Amy: Wong n In: use: Pam J. Hayes; James J. Foster; Anton 8. Jacobs
`
`Law firms that appeared: Pnnce Label Tye. LLP; Cesarl and McKenna LLP; Nelson Baumoatmer. TaoloclI Law FIrm
`
`W attorneys who aopeamt KM Gannon; Robert Gllmm; Dem Bostock; Mlcnael Eroolnl;
`Dill“ McGonagle; Jason Wit-ms; Ema R. NM. Ill; Anthony Veccnlone; CM Tm; KW Smley
`
`5. Thetitlenndnumborofnnycnseknmtocounseltobemdincmthuormothercomornwy
`thatwflldimtlyaflxtwbedkectbrnfiectedhythiscoun‘cdedfloninthewndm:appeal. SeeI-‘ed. Cir.
`R. ‘7. Maxi») and 47.56)). (I‘ltepnniee Mattuh continuation paces” neeeuary).
`
`UnIloc USA. Ito. et al. v. Blackboard. Inc. No. 1:17-cv-00753 (LY) (WD. Tex)
`Nutanix. Inc. v. Uniloc USA. Inc. et al. No. 42170-03181 (JSW) (ND. Cal.)
`Pebtlon tor IPR by UbIson. Inc. and Squaw EnIx Holdings Co. Ltd. No. 2017-1291
`Petition f0I' IPR by Bitdetender. Inc.. No. 2017-1315
`
`
`
`
`
`

`

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`
`
`
`TABLE OF CONTENTS
`
`A.
`
`The ’293 patent. ............................................................................................... 2
`
`1. Alice step one requires categorizing what a claim is “directed to.” ........... 2
`
`2. The claimed advance determines how to categorize what a claim is
`“directed to.” .................................................................................................... 3
`
`3. The district court did not identify, or consider, the claimed advance. ....... 5
`
`4. The claims are eligible for patenting under tests this Court has
`established. ....................................................................................................... 6
`
`5. This Court may consider the prosecution history....................................... 9
`
`6. Alice step two............................................................................................11
`
`B.
`
`The ’466 patent. .............................................................................................13
`
`1. Alice step one. ...........................................................................................14
`
`2. Alice step two............................................................................................16
`
`C.
`
`The ’766 patent. .............................................................................................18
`
`1. Alice step one. ...........................................................................................18
`
`2. Alice step two............................................................................................21
`
`The ’578 patent. .............................................................................................22
`
`This Court should vacate the ADP judgment. ...............................................26
`
`D.
`
`E.
`
`
`
`
`
`
`
`
`
`i
`
`

`

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`
`TABLE OF AUTHORITIES
`
`Cases
`
`Aatrix Software, Inc. v. Green Shades Software,
`882 F.3d 1121 (Fed. Cir. 2018) .............................................................................. 9
`
`Aatrix Software, Inc. v. Green Shades Software,
`890 F.3d 1354 (Fed. Cir. 2018) (en banc) ........................................................9, 12
`
`Affinity Labs of Texas, LLC v. DirecTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016) .............................................................................. 4
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct. 2347 (2014) ................................................................................... passim
`
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
`841 F.3d 1288 (Fed. Cir. 2016) .............................................................................. 8
`
`Bascom Global Internet Services v. AT&T Mobility,
`827 F.3d 1341 (Fed. Cir. 2016) ........................................................... 8, 24, 25, 26
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) ..................................................................... 11, 26
`
`Data Engine Technologies LLC v. Google,
`No. 2017-1135 (Fed. Cir. Oct. 9, 2018)........................................................ passim
`
`Electric Power Group, LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) .............................................................................. 4
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) ................................................................... 4, 8, 24
`
`Finjan, Inc. v. Blue Coat Systems, Inc.,
`879 F.3d 1299 (Fed. Cir. 2018) .............................................................................. 4
`
`Gust Inc. v. AlphaCap Ventures LLC,
`No. 2017-2414 (Fed. Cir., Sept. 28, 2018) .........................................................3, 5
`
`Interval Licensing LLC v. AOL, Inc.,
`896 F.3d 1335 (Fed. Cir. 2018) .............................................................................. 2
`
`McRo, Inc. v. Bandai Namco Games America,
`837 F.3d at 1299 (Fed. Cir. 2016) ........................................................................23
`
`
`
`
`
`ii
`
`

`

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`
`SAP America, Inc. v. Investpic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018) ............................................................. 4, 7, 10, 24
`
`U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship,
`513 U.S. 18 (1994) ......................................................................................... 27, 28
`
`Statutes
`
`35 U.S.C. §101 .......................................................................................... 2, 9, 10, 12
`
`35 U.S.C. §102 .........................................................................................................21
`
`35 U.S.C. §103 .........................................................................................................21
`
`
`
`
`
`iii
`
`

`

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`
`This Reply Brief of Plaintiffs-Appellants (“Uniloc”) will reply to arguments
`
`by Defendants-Appellees, Big Fish Games, Inc., Bitdefender LLC, and Kaspersky
`
`Lab, Inc. (collectively, “Big Fish”),1 in their Responding Brief (“Resp.”) to
`
`Uniloc’s Opening Brief (“Br.”).
`
`This appeal involves four International Business Machines Corporation
`
`(“IBM”) patents that describe and claim inventions IBM reduced to practice before
`
`the patents’ December 14, 1998 filing date. The patents relate to different portions
`
`of a computer network design IBM had developed. Br. 3-6.
`
`The Responding Brief did not dispute any statements in the patents or the
`
`Opening Brief describing the problems in the computer industry circa 1998, nor
`
`did it dispute the inventions of the IBM patents solved various of those problems
`
`by changing the then prevailing network design, in the manner claimed.
`
`As both the nature of each invention and the district court’s analysis as to
`
`each differs by patent, each patent will be discussed separately in this Reply, as
`
`was done in the Opening Brief.
`
`
`
`
`
`
`1 Of the three appellees, only Kaspersky Lab, Inc. has been charged with infringing
`all four patents. But for convenience this Reply Brief uses the name of the first-
`named appellee (“Big Fish”) in referring to all arguments in the Responding Brief.
`
`1
`
`

`

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`
`A. The ’293 patent.2
`
`1.
`
`Alice step one requires categorizing what a claim is “directed to.”
`
`
`
`Step one of the standard decreed in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`
`134 S.Ct. 2347, 2355 (2014) (Alice), as to abstract idea challenges to patent
`
`eligibility under 35 U.S.C. §101, requires the court to determine whether a patent
`
`claim was “directed to an abstract idea.” This separates into two questions: 1) what
`
`was the claim “directed to”? and 2) was that an “abstract idea”?
`
`As to the first question, the Opening Brief, Br. at 18-23, explained the
`
`district court erred in finding the claims of the ’293 patent “directed to”
`
`“centralized distribution of software.” Big Fish disagrees. Resp. at 34-39. Part of
`
`that disagreement relates to differences over how to categorize what a claim is
`
`“directed to.”
`
`Since Alice, this Court has issued over 40 precedential opinions in “abstract
`
`idea” cases. Despite that substantial corpus, the perception remains that “there is
`
`little consensus among trial judges (or appellate judges for that matter) regarding
`
`whether a particular case will prove to have a patent with claims directed to an
`
`abstract idea.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1354-55 (Fed.
`
`Cir. 2018) (Plager, J., concurring) (emphasis added).
`
`
`2 The claims of U.S. Patent No. 7,069,293 (“the ’293 patent”) involved in this
`appeal are 1, 2, and 17. For this patent, the parties agree claim 1 is representative.
`
`2
`
`

`

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`
`As to why that confusion persists, this Court recently stated “much of the
`
`confusion in abstract idea law after Alice is in the proper categorization of what a
`
`claim is directed to.” Gust Inc. v. AlphaCap Ventures LLC, No. 2017-2414, slip op.
`
`at 13 (Fed. Cir., Sept. 28, 2018) (emphasis added). The district court opinions here
`
`well illustrate that confusion.
`
`2.
`
`The claimed advance determines how to categorize what a claim is
`“directed to.”
`
`
`To the general public, “directed to” can mean almost anything. But to a
`
`patent practitioner -- or anyone else familiar with how patent applications and
`
`claims are drafted -- “what a claim is directed to” has a very narrow meaning in
`
`this context.
`
`In the written description portion of a patent, the inventors give their views
`
`as to how their invention differs from, and provides advantages over, the prior art
`
`of which they are aware. (For some patents in which claims have been amended,
`
`the prosecution history is also relevant.) The inventors then draft a claim or claims
`
`to delineate the metes and bounds of that invention, in so doing capturing the
`
`expressed differences from the prior art that provide those advantages.
`
`Thus, to a patent practitioner, what a claim is “directed to” is defined by the
`
`inventive features that form the advance over the art.
`
`Several of this Court’s opinions explicitly recognize that categorizing what a
`
`claim is “directed to” begins with looking at the claimed advance. In Affinity Labs
`
`3
`
`

`

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`
`of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016), this
`
`Court observed the “‘abstract idea’ step of the inquiry calls upon us to look at the
`
`‘focus of the claimed advance over the prior art’ to determine if the claim’s
`
`‘character as a whole’ is directed to excluded subject matter” (emphasis added).
`
`Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018),
`
`articulated the same standard: “Starting at [Alice] step one, we must first examine
`
`the . . . patent’s ‘claimed advance’ to determine whether the claims are directed to
`
`an abstract idea” (emphasis added).
`
`What Affinity Labs and Finjan refer to as the “claimed advance” are the
`
`differences between the claim and the known prior art and the advantages that flow
`
`from those differences.
`
`Other opinions are less explicit, although consistent with that approach. For
`
`example, this Court has described the first stage inquiry of Alice as looking at the
`
`“focus” of the claims and their “character as a whole.” Electric Power Group, LLC
`
`v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v. Microsoft
`
`Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (“character as a whole”); Data Engine
`
`Technologies LLC v. Google, No. 2017-1135, slip op. at 19 (Fed. Cir. Oct. 9, 2018)
`
`(“directed to” inquiry requires “claims be read as a whole”); SAP America, Inc. v.
`
`Investpic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“‘focus’ of the claims, their
`
`‘character as a whole’”). But, for the same reasons as above, any characterization
`
`4
`
`

`

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`of the “focus” of a claim or its “character as a whole” must, to some extent,
`
`describe or incorporate the claimed advance.3
`
`3.
`
`The district court did not identify, or consider, the claimed
`advance.
`
`
`
`A probable reason for the confusion in abstract idea law, which this Court’s
`
`recent Gust decision (slip op. at 13) refers to, is that “directed to,” taken out of
`
`context, could mean almost anything. In arguing what a claim is “directed to,” a
`
`defendant or court may overgeneralize: “Dr. Salk’s vaccine is not eligible for
`
`patenting because it is directed to the abstract idea of preventing polio.”
`
`That seems to be what happened here. The district court’s characterization of
`
`the claims of the ’293 patent as directed to “centralized distribution of software”
`
`does nothing more than describe, broadly, the field of the invention, ignoring the
`
`claimed advance and novel claim limitations. And Big Fish takes the same
`
`approach, using “directed to” as describing the field of the invention, rather than
`
`the claimed advance. Resp. at 35-36.
`
`As discussed in the Opening Brief, Br. at 16-23, the following limitation
`
`provided the claimed advance:
`
`preparing a file packet associated with the application program and
`including a segment configured to initiate registration operations for the
`
`
`3 The “claimed” advance should be based upon the intrinsic record --the
`specification and claims of the patent and, in appropriate cases, the prosecution
`history. This should not be a novelty inquiry, as there may be prior art the
`inventors were not aware of.
`
`5
`
`

`

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` #:480
`
`application program at the target on-demand server; and distributing the
`file packet to the target on-demand server to make the application
`program available for use by a user at a client.
`
`This language appears in the claims, verbatim. Appx135 at 21:23-37. The
`
`’293 patent’s specification described this as the inventive feature. Appx126-127 at
`
`4:14-26; 5:33-58; Appx133-134 at 17:55-20:64; Appx122-124 at FIG. 8-10. This
`
`limitation was added to the claims to distinguish over the prior art. Appx693,
`
`Appx700. The patent examiner recognized this limitation as imparting
`
`patentability. Appx751. And the Patent Office later twice denied institution of inter
`
`partes reviews because the prior art the petitioner cited did not disclose this
`
`limitation. Appx753, Appx762, Appx766, Appx772-773, Appx776, Appx788; Br.
`
`at 18-20.
`
`By ignoring the claimed advance, Big Fish and the district court do not
`
`accurately describe what the claims are “directed to.”
`
`4.
`
`The claims are eligible for patenting under tests this Court has
`established.
`
`
`The Opening Brief cited five cases in which this Court stated a claim is not
`
`“directed to” an abstract result if it claims a specific and improved means of
`
`accomplishing that result, rather than the result itself. Br. at 20-21. To that list can
`
`now be added Data Engine, slip op. at 13 (claim not directed to abstract idea but
`
`“to a specific method for navigating through three-dimensional electronic
`
`6
`
`

`

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` #:481
`
`spreadsheets [which] provides a specific solution to then-existing technological
`
`problems in computers and prior art electronic spreadsheets” (emphasis added)).
`
`As to that, Big Fish does not dispute this Court has adopted that position.
`
`Nor does Big Fish dispute the ’293 patent claims are limited to a specific improved
`
`means of centralizing the distribution of software, as discussed above. Rather, Big
`
`Fish’s only response to this seemingly dispositive argument is that the specification
`
`contains scattered references to “[c]entralized control of software distribution”
`
`(4:14) and “centralized management of application programs” (3:43-45). Resp. at
`
`36. Those references, however, are to the field of the invention, not the claimed
`
`advance.
`
`The Opening Brief also cited five cases in which this Court stated claims for
`
`software-related inventions are not “directed to” an abstract idea if they are
`
`“directed to improvements in the way computers and networks carry out [their]
`
`basic functions,” SAP, 898 F.3d at 1168, as opposed to invoking a computer
`
`merely as a tool to implement an abstract idea. Br. at 21-22. As to that, Big Fish
`
`does not dispute that is the law or that the claimed invention improves the
`
`functionality of the computer network itself, in the way the patent describes.
`
`Instead, Big Fish argues the claimed invention is able to improve the
`
`functionality of the computer network only by adding “conventional computer
`
`components,” “apply[ing] conventional techniques,” and utilizing “routine activity
`
`7
`
`

`

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` #:482
`
`of commercial network management software.” Resp. at 38-39. Whether those
`
`assertions are true presents a factual question, discussed under Alice step two. But
`
`the assertions are, in any event, irrelevant:
`
`[W]e are not persuaded that the invention’s ability to run on a general
`purpose computer dooms the claims. Unlike the claims at issue in Alice
`… the claims here are directed to an improvement in the functioning of
`a computer. In contrast, the claims at issue in Alice can readily be
`understood as simply adding conventional computer components to
`well-known business practices.
`
`Enfish, 822 F.3d at 1338.
`
`
`
`Other cases have made the same point. In Bascom Global Internet Services
`
`v. AT&T Mobility, 827 F.3d 1341, 1350 (Fed. Cir. 2016), this Court held “[a]s is
`
`the case here, an inventive concept can be found in the nonconventional and non-
`
`generic arrangement of known, conventional pieces.” Similarly, in Amdocs (Israel)
`
`Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016), this Court held
`
`that eligibility can be found when “the claims solve a technology-based problem,”
`
`in an unconventional manner, “even with conventional, generic components.”
`
`Big Fish also argues the claimed “file packet” and “segment” are “nothing
`
`more than inherent functions that were part of then-existing off-the-shelf software
`
`products.” Resp. 36. The patent does not support that characterization.
`
`The patent’s enabling disclosure teaches how to reduce the invention to
`
`practice by installing software containing the invention on an available Tivoli
`
`server to interact with other servers that had the “ability” to support installation of
`
`8
`
`

`

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` #:483
`
`the invention. Appx 133, 17:43, 41, 47. The patent, however, does not describe the
`
`“file packet” with the included “segment” of the claims of this patent as “inherent
`
`functions,” whatever that means, in any then existing publicly available software.
`
`In any event, what the specification discloses, as regards what was
`
`conventional at the time, is a question of historical fact. Aatrix Software, Inc. v.
`
`Green Shades Software, 890 F.3d 1354, 1356-58 (Fed. Cir. 2018) (en banc).
`
`5.
`
`This Court may consider the prosecution history.
`
`
`
`
`Big Fish argues that it would be “inappropriate” for a court to consider on a
`
`motion to dismiss anything other than “the complaint, any documents attached to
`
`the complaint, and any documents attached to the motion to dismiss that are central
`
`to the claim and referenced by the complaint.” Resp. at 15. But this Court, in
`
`Aatrix Software, Inc. v. Green Shades Software, 882 F.3d 1121, 1128 (Fed. Cir.
`
`2018), ruled that on a §101 motion to dismiss a court may consider “materials
`
`subject to judicial notice,” which this Court later described as including “matters of
`
`public record.” Data Engine (slip op. at 14 n.2).
`
`
`
`Big Fish argues that Uniloc did not provide any authority that prosecution
`
`histories of the patents in suit are subject to judicial notice. Resp. at 15-16. Eight
`
`days after Big Fish filed its brief, this Court resolved that issue in Data Engine
`
`(slip op. at 14 n.2) by ruling that a court may take judicial notice of prosecution
`
`9
`
`

`

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` #:484
`
`histories, and that this Court may consider prosecution histories as relevant to this
`
`Court’s de novo review of a §101 dismissal on the pleadings.
`
`
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`Big Fish argues that prosecution histories would be irrelevant to §101,
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`because novelty is not an issue. Resp. at 15-16. Big Fish misunderstands the law.
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`As argued above at p. 2, Alice step one raises two questions: 1) what is the claim
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`“directed to”? and 2) is that an abstract idea? As to the second question, this Court
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`has ruled that a novel abstract idea is still an abstract idea. SAP, 898 F.3d at 1163.
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`So novelty may be irrelevant to abstractness.
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`But as to the first question, and as discussed above at pp. 2-5, to determine
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`what a claim is “directed to” requires the court to determine the “claimed
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`advance,” which would require determining what the intrinsic record claims to be
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`points of novelty. Similarly, Alice step two requires the court to determine whether
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`there is an inventive concept, to which novelty would obviously be relevant.
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`
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`In any event, Data Engine has resolved the issue by ruling prosecution
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`histories relevant to §101.
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`
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`Big Fish argues Uniloc waived “its right to rely” on the prosecution history
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`of the ‘273 patent and two IPR decisions, by not citing them in the district court. 4
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`Resp. at 14-15. However, Uniloc did not advance a new theory of eligibility on
`
`
`4 Uniloc did supply the district court with one of the decisions denying institution
`of an IPR. Appx805-808. The other decision did not issue until January 2018.
`Appx776.
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`10
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`appeal. In the district court Uniloc based its eligibility theory on the same claim
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`limitation it relies on in this Court. Big Fish admits as much:
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`Uniloc attempted this same strategy before the district court, putting
`“great weight” on the “file packet” and “segment configured to initiate
`registration operation” portions of the claims.
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`Resp. at 35. The district court acknowledged that reliance, as well. Appx16. All
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`Uniloc has done in this Court that it had not done in the district court is call to this
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`Court’s attention, for use in its de novo review, certain “matters of public record”
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`that support that theory, because they conflict with the finding of the district court.
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`6.
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`Alice step two.
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`
`
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`If this Court reaches Alice step two, the issue would be whether in December
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`1998 the conventional way to implement centralized distribution of software would
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`be to use the features called out in the limitation discussed above. On that issue,
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`Big Fish had the burden of proof by clear and convincing evidence. Berkheimer v.
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`HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
`
`
`
`The argument is obviously a nonstarter. The patent examiner allowed the
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`claims because he could not find anything in the prior art that had those features. In
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`the past two years, the Patent Office has twice refused to institute IPRs of this
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`patent because the petitioner could not find prior art with these features. As the
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`features apparently did not exist in the art in December 1998, they could hardly
`
`have been conventional.
`
`11
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`
`
`In an attempt to support its position, Big Fish could only cite to the patent’s
`
`enabling disclosure. But enabling disclosures, as they are required to do, simply
`
`teach one of skill in the art how to reduce the invention to practice. Those
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`disclosures could, and likely will, involve nonconventional, if not innovative,
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`steps. In this case, the inventors described certain third-party network management
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`software as having the “ability” to run the patented IBM program, not as already
`
`having the program. Br. 24-28. Big Fish responded (Resp. at 41-42) that the
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`specification identified a specific commercial software program “that performed
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`these functions,” citing 17:52-54. But what the specification actually said was the
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`product “supports [the] capability” to perform the steps, not that it had been
`
`performing the steps, or that performing the steps had been conventional in the art.
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`In any event, as mentioned above, what the specification discloses, as
`
`regards what was conventional at the time, is a question of historical fact. Aatrix,
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`890 F.3d at 1356-58.
`
`Big Fish argues Uniloc has waived arguments in its appellate brief regarding
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`“factual disputes” the §101 motion raises. Resp. 18. But Big Fish did not identify
`
`any factual dispute Uniloc raised for the first time on this appeal. Nor does Uniloc
`
`know of any such dispute, as all the factual disputes Uniloc raised in its appellate
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`brief were argued in this district court. The district court’s opinions summarize
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`various Uniloc arguments that the ordered combinations of these patent claims
`
`12
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`were not conventional, or even found, in the art. Appx18. In fact, Big Fish
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`acknowledges as much: “Uniloc argued to the district court that the various claim
`
`elements, individually and as an ordered combination, supplied an inventive
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`concept at Alice step two despite using generic components.” Resp. at 17.
`
`B.
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`The ’466 patent.
`
`To review, the ’466 patent5 describes its claimed advance, circa December
`
`1998, as providing mobility to a user and hardware portability by: 1) establishing a
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`user desktop interface responsive to an identifier of the user and responsive to a
`
`login request, which interface presents to the user a desktop screen through a web
`
`browser interface, where 2) the user desktop accesses and downloads selected
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`applications for which the user is authorized from the server responsive to a
`
`
`5 The claims of U.S. Patent No. 6,510,466 (“the ’466 patent”) involved in this
`appeal are 1-5, 7-9, 13, 15-20, 22-24, 28-33, 35-37, and 41-42 with 1-5, 7-9, and
`13 being representative of the other claims.
`
`Big Fish argues (Resp. 5, 19, 47 n.9) it established in the district court that claim 1
`of each of the ’466, ’766, and ’578 patents was representative of all claims in that
`patent, including dependent claims. That is not accurate. The issue in the district
`court was whether, in each patent, the set of claim 1 and its dependent claims was
`representative of the other sets of claims. As to that, the district court found each
`set of claim 1 representative, Appx9-10, and Uniloc has not appealed that finding.
`
`But Uniloc did not “concede,” nor did the district court find, claim 1 of any patent
`was representative of its dependent claims, which in some cases add significant
`limitations. Thus, the district court considered the dependent claims separately.
`Appx21-22, Appx25.
`
`
`13
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`request from the user, where 3) the user can make that request by selecting an icon
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`associated with the application, which icon is displayed on the user desktop screen
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`at the client, and 4) the application is then provided from the server and executed at
`
`the client, rather than at the server. Appx86 at 3:21-23; 3:44-53; 3:59-4:3; Appx95-
`
`96 at 21:17-18; 22:57-59; 23:9-10; Br. 28-30.
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`1.
`
`Alice step one.
`
`
`
`In the district court, the defendant (in this case, Bitdefender) had argued
`
`claim 1 of the ’466 patent was directed to “managing the distribution of software
`
`over a network.” That description obviously did not capture the above claimed
`
`advance; it identified only the field of the invention. The district court rejected it as
`
`describing the claim at too high a level of abstraction, but stated the claim was