Case 5:15-cv-03295-BLF Document 156 Filed 12/13/16 Page 1 of 21
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`Case No. 15-cv-03295-BLF
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`ORDER DENYING BLUE COAT’S
`MOTION FOR JUDGMENT ON THE
`PLEADINGS
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`FINJAN, INC.,
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`Plaintiff,
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`v.
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`BLUE COAT SYSTEMS, LLC,
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`Defendant.
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`Defendant Blue Coat Systems, LLC (“Blue Coat”) brings this motion for judgment on the
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`pleadings that U.S. Patent No. 8,677,494 (the “’494 patent”) is invalid for failure to claim patent-
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`eligible subject matter under 35 U.S.C. § 101. ECF 104. For the reasons discussed below, the
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`Court DENIES Blue Coat’s motion.
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`I. BACKGROUND
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`A. The ’494 Patent
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`Finjan owns the ’494 patent, which is entitled “Malicious Mobile Code Runtime
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`Monitoring System and Methods.” The ’494 patent was filed on November 7, 2011 and issued on
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`March 18, 2014, but belongs to a long line of continuation and continuation-in-part applications
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`which originated from patent applications filed in 1996. One of these parent applications resulted
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`in U.S. Patent No. 6,092,194 (the “’194 patent”), which the ’494 patent identifies in its
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`specification and states is “incorporated by reference.” ’494 patent, col. 1 ll. 33-38.
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`The ’494 patent generally relates to systems and methods for protecting devices on an
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`internal network from code, applications, and/or information downloaded from the Internet that
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`perform malicious operations. Id., Abstract. According to the ’494 patent, at the time of
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`invention, virus protection strategies for networked computers “met with limited success at best”
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`because virus scanning was localized and reactive: virus protection programs were installed on
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`individual computers and only protected against known viruses. Id., col. 2 ll. 11-21. Because of
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`this, these “program[s] [would] inevitably [be] surmounted by some new virus,” at which point
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`they would need to be updated or replaced and the cycle would begin again. Id. In addition,
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`certain types of viruses were “not well recognized or understood, let alone protected against.” Id.,
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`col. 2 ll. 22-24. This included viruses that were hidden in executable programs such as
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`“Downloadables.”1 Id., col. 2 ll. 23-30. “Accordingly, there remains a need for efficient, accurate,
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`and flexible protection of computers and other network connectable devices from malicious
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`Downloadables.” Id., col. 2 ll. 45-48.
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`The ’494 patent purports to address this problem by detecting whether downloadable
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`content contains potentially malicious code before it is allowed to be run on the destination
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`computer. See id., col. 5 l. 60-col. 6 l. 6. At a high level, the disclosed embodiments describe a
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`protection engine that generally resides on a network server and inspects incoming downloads for
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`executable code. See id., col. 2 l. 20-col. 3 l. 4; ’194 patent, col. 3 ll. 10-21. The claims are
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`directed to a narrow aspect of this, which involve a solution consisting of three basic steps that
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`appear to be most closely detailed in the ’194 patent:
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`First, an incoming Downloadable is intercepted. ’494 patent, col. 21 l. 20, col. 22 l. 8. The
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`’194 specification describes an “Internal Network Security System” which sits in between an
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`external computer network and the internal computer network and “examines Downloadables
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`received from external computer network 105, and prevents Downloadables deemed suspicious
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`from reaching the internal computer network 115.” ’194 patent, col. 3 ll. 10-13.
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`Second, the Downloadable is scanned and “security profile data,” which includes “a list of
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`suspicious computer operations that may be attempted by the Downloadable,” is derived. ’494
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`patent, col. 21 ll. 21-23, col. 22 ll. 10-13. The ’194 specification discloses a “code scanner”
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`component that scans through a Downloadable and generates the “security profile data” (also
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`1 The parties agree in their Patent Local Rule 4-3 Joint Claim Construction Statement that a
`“Downloadable” is “an executable application program, which is downloaded from a source
`computer and run on the destination computer.” ECF 79 at 1.
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`Case 5:15-cv-03295-BLF Document 156 Filed 12/13/16 Page 3 of 21
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`referred to as “Downloadable Security Profile (DSP) data,” ’194 patent, col. 4 ll. 17-18). ’194
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`patent, col. 5 ll. 41-42. Figure 7 of the ’194 specification illustrates this process:
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`Id., Fig. 7. At the beginning of the process, the code scanner “disassemble[s] the machine code of
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`the Downloadable.” Id., col. 9 ll. 23-24. Next, the code scanner iterates through the machine
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`code, (1) resolving the next command in the machine code, (2) “determin[ing] whether the
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`resolved command is suspicious,” and, if so, (3) “decod[ing] and register[ing] the suspicious
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`command and its command parameters as DSP data.” Id., col. 9 ll. 20-42. The format of the DSP
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`data is “based on command class (e.g., file operations, network operations, registry operations,
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`operating system operations, resource usage thresholds).” Id., col. 9 ll. 38-42. Examples of
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`operations deemed potentially hostile include:
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`File operations: READ a file, WRITE a file;
`Network operations: LISTEN on a socket, CONNECT to a socket,
`SEND data, RECEIVE data, VIEW INTRANET;
`Registry operations: READ a registry item, WRITE a registry item;
`Operating system operations: EXIT WINDOWS, EXIT BROWSER,
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`Case 5:15-cv-03295-BLF Document 156 Filed 12/13/16 Page 4 of 21
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`START PROCESS/THREAD, KILL PROCESS/THREAD,
`CHANGE PROCESS/THREAD PRIORITY, DYNAMICALLY
`LOAD A CLASS/LIBRARY, etc.; and
`Resource usage thresholds: memory, CPU, graphics, etc.
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`Id., col. 5 l. 59-col. 6 l. 4.
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`Third, the “security profile data” is stored in a database. ’494 patent, col. 21 ll. 24-25, col.
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`22 ll. 14-16. The’194 specification discloses that, after DSP data is generated, it is stored in a
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`“DSP data” data object according to the Downloadable’s ID. ’194 patent, col. 6 ll. 9-10 (“[t]he
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`code scanner 325 then stores the DSP data into DSP data 310 (corresponding to its Downloadable
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`ID)”). The DSP data is then stored in “security database 240,” along with other data such as
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`security policies, a list of known Downloadables, and a list of known Certificates. See id., col. 3
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`ll. 47-50, col. 4 ll. 15-18.
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`The ’194 specification discloses that DSP data stored in the database can be compared,
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`along with other information, against a security policy to determine whether the Downloadable
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`should be permitted to be run on the destination computer. See id., col. 6 ll. 13-20. However, the
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`claims themselves do not recite this, nor any subsequent use of the security profile data, after it
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`gets stored in the database. ’494 patent, col. 21 ll. 22-23, col. 22 ll. 8-17.
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`Finjan currently asserts claims 1, 10, 14, 15, and 18. Mot. 2, ECF 104. Independent
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`claims 1 and 10 recite:
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`1. A computer-based method, comprising the steps of:
`receiving an incoming Downloadable;
`deriving security profile data for the Downloadable, including a list
`of suspicious computer operations that may be attempted by the
`Downloadable; and
`storing the Downloadable security profile data in a database.
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`10. A system for managing Downloadables, comprising:
`a receiver for receiving an incoming Downloadable;
`a Downloadable scanner coupled with said receiver, for deriving
`security profile data for the Downloadable, including a list of
`suspicious computer operations that may be attempted by the
`Downloadable; and
`a database manager coupled with said Downloadable scanner, for
`storing the Downloadable security profile data in a database.
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`Id., col. 21 ll. 22-23, col. 22 ll. 8-17. Claim 14 additionally requires that the Downloadable
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`include a program script. Id., col. 22 ll. 26-27. Claim 15 specifically names suspicious computer
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`operations. Id., col. 22 ll. 28-30. Claim 18 requires that the Downloadable scanner comprise a
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`Case 5:15-cv-03295-BLF Document 156 Filed 12/13/16 Page 5 of 21
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`disassembler. Id., col. 22 ll. 37-39.
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`B. Procedural History
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`The parties’ dispute predates the instant case. On August 28, 2013, Finjan initiated a first
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`patent infringement action, Case No. 5:13-CV-03999-BLF (“Finjan I”), against Blue Coat,
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`alleging that Blue Coat infringed U.S. Patent Nos. 6,154,844 (the “’844 patent”), 6,965,968 (the
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`“’968 patent”), 7,418,731 (the “’731 patent”), 6,804,780 (the “’780 patent”), 7,058,822 (the “’822
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`patent”), and 7,647,633 (the “’663 patent”). The parties tried all six patents before a jury who, on
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`August 4, 2015, found that Blue Coat infringed the ’844, ’968,’731,’780, and ’633 patents. Finjan
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`I, ECF 438 at 2-3. The Court upheld these findings in its post-trial rulings. Finjan I, ECF 543. In
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`addition, the Court held a bench trial where it decided, among other things, that the ’844 patent
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`was not patent-ineligible under 35 U.S.C. § 101. Finjan I, ECF 486 at 13-18. The Court entered
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`final judgment on July 18, 2016. Finjan I, ECF 556.
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`On July 7, 2015, five days before the beginning of trial in Finjan I, Finjan initiated the
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`instant suit. ECF 1. Here it asserts three patents from Finjan I (the ’844 patent, the ’968 patent,
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`and the ’731 patent), the ’494 patent, and six others (U.S. Patent Nos. 8,566,580 (the “’580
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`patent”); 8,079,086 (the “’086 patent”); 8,225,408 (the “’408 patent”); 9,141,786 (the “’786
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`patent”); 9,189,621 (the “’621 patent”); and 9,219,755 (the “’755 patent”)). On September 16,
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`2016, Blue Coat filed a motion for judgment on the pleadings that the asserted claims of the ’494
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`patent are invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101. ECF
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`104.
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`II. LEGAL STANDARD
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`A. Motion for Judgment on the Pleadings Under Fed. R. Civ. P. 12(c)
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`Rule 12(c) provides that “[a]fter the pleadings are closed—but early enough not to delay
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`trial—a party may move for judgment on the pleadings.” Fed. R. Civ. P. 12(c). “A judgment on
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`the pleadings is properly granted when, taking all allegations in the pleadings as true, the moving
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`party is entitled to judgment as a matter of law.” Enron Oil Trading & Transp. Co. v. Walbrook
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`Ins. Co., 132 F.3d 526, 528 (9th Cir. 1997) (citing McGann v. Ernst & Young, 102 F.3d 390, 392
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`(9th Cir. 1996)). When ruling on a Rule 12(c) motion, the Court must “accept factual allegations
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`in the complaint as true and construe the pleadings in the light most favorable to the nonmoving
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`party.” Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). Any
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`existing ambiguities must be resolved in favor of the pleading. Walling v. Beverly Enters., 476
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`F.2d 393, 396 (9th Cir. 1973).
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`“If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented
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`to and not excluded by the court, the motion must be treated as one for summary judgment under
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`Rule 56.” Fed. R. Civ. P. 12(d). A court, however, may “consider certain materials—documents
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`attached to the complaint, documents incorporated by reference in the complaint, or matters of
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`judicial notice—without converting the motion to dismiss into a motion for summary judgment.”
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`United States v. Ritchie, 342 F.3d 903, 908 (9th Cir. 2003).
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`B. Patent Validity Challenges Under 35 U.S.C. § 101
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`35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process,
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`machine, or composition of matter, or any new and useful improvement thereof, may obtain a
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`patent therefor, subject to the conditions and requirements of this title.” However, the Supreme
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`Court has recognized that these broad categories contain an implicit exception: “[l]aws of nature,
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`natural phenomena, and abstract ideas are not patentable.” Ass’n for Molecular Pathology v.
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`Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 186 L. Ed. 2d 124 (2013) (internal quotation marks
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`and citation omitted).
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`To determine whether a claim falls outside this exception, the Supreme Court has
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`established a two-step framework: First, the court must “determine whether the claims at issue are
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`directed to a patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, ––– U.S. ––––,
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`134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). Second, if the claims are directed to patent-ineligible
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`subject matter, the Court must “consider the elements of each claim both individually and ‘as an
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`ordered combination’ to determine whether the additional elements ‘transform the nature of the
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`claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus
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`Laboratories, Inc., 132 S.Ct. 1289, 1298, 1297, 182 L. Ed. 2d 321 (2012)). The Supreme Court
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`has described this as a “search for an ‘inventive concept’—i.e., an element or combination of
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`elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than
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`a patent upon the [ineligible concept] itself.’” Id.
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`In evaluating step one, “the ‘directed to’ inquiry applies a stage-one filter to claims,
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`considered in light of the specification, based on whether ‘their character as a whole is directed to
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`excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
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`(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). In
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`the software context, claims may fail step one because they are directed to an abstract idea. The
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`Federal Circuit has found this to be true in a number of cases, and some commonalities have
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`emerged. For example, fundamental economic activities and business practices, even if performed
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`on a computer, are often abstract. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362
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`(Fed. Cir. 2015), cert. denied, 136 S. Ct. 701, 193 L. Ed. 2d 522 (2015) (collecting cases). In
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`addition, “we have treated collecting information, including when limited to particular content
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`(which does not change its character as information), as within the realm of abstract ideas.” Elec.
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`Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (collecting cases); see also,
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`e.g., In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP,
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`LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016). Mental steps, including
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`mathematical algorithms, are also generally considered abstract ideas. Elec. Power Grp., 830 F.3d
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`at 1353 (collecting cases); see, e.g., Parker v. Flook, 437 U.S. 584, 589-90, 98 S.Ct. 2522, 57
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`L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972).
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`However, the Federal Circuit has recognized that “precision has been elusive in defining an all-
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`purpose boundary between the abstract and the concrete.” Internet Patents, 790 F.3d at 1345.
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`Courts must tow the fine line between assessing a claim’s “character as a whole” and “describing
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`the claims at such a high level of abstraction and untethered from the language of the claims [such
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`that it] all but ensures that the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at 1335,
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`1337.
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`To date, the Federal Circuit has provided two examples of software claims that are not
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`directed to an abstract idea. First, in Enfish, the Federal Circuit determined that claims directed to
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`a specific type of self-referential table constituted a specific “solution to a problem in the software
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`arts” such that they were “non-abstract improvements to computer technology.” 822 F.3d at 1339.
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`The court noted that “[t]he Supreme Court has suggested that claims ‘purport[ing] to improve the
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`functioning of the computer itself,’ or ‘improv[ing] an existing technological process’ might not
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`succumb to the abstract idea exception.” Id. at 1335. The court found that because the claims
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`focused “on the specific asserted improvement in computer capabilities (i.e., the self-referential
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`table for a computer database)” instead of “a process that qualifies as an ‘abstract idea’ for which
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`computers are invoked merely as a tool,” they were not directed to an abstract idea. Id. at 1335-
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`36, 1339.
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`Second, in McRO, Inc. v. Bandai Namco Games Am. Inc., the Federal Circuit found that
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`patents that automated part of a preexisting method for 3-D facial expression animation were not
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`abstract because they “focused on a specific asserted improvement in computer animation, i.e., the
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`automatic use of rules of a particular type.” 837 F.3d 1299, 1314 (Fed. Cir. 2016). Here too the
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`court found that this was not the case of using a computer as a tool to implement an abstract idea;
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`instead, the claims set forth a process of following a distinct set of rules, which was different from
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`the process used by human animators, to improve animation technology. Id. at 1314 (“It is the
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`incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing
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`technological process’ by allowing the automation of further tasks.”). This moved the clams
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`beyond the realm of the abstract. Id.
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`However, not all claims relating to computer technologies are not abstract. Where the
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`focus of the claims is on “certain independently abstract ideas that use computers as tools” instead
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`of “an improvement in computers as tools,” claims may fail step one. See, e.g., Elec. Power Grp.,
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`830 F.3d at 1354; see, e.g., Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262
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`(Fed. Cir. 2016) (claims relating to “deliver[ing] content to a handheld wireless electronic device”
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`were directed to an abstract idea because they claimed “the general concept of out-of-region
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`delivery of broadcast content through the use of conventional devices, without offering any
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`technological means of effecting that concept”); Synopsys, Inc. v. Mentor Graphics Corp., 839
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`F.3d 1138, 1140 (Fed. Cir. 2016) (claims related to logic circuit design in computer hardware were
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`“drawn to the abstract idea of: translating a functional description of a logic circuit into a hardware
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`component description of the logic circuit”); Tranxition, Inc. v. Lenovo (United States) Inc., No.
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`2015-1907, 2016 WL 6775967, at *3 (Fed. Cir. Nov. 16, 2016) (claims relating to migration of
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`computer settings were directed to an abstract idea because “manual migration is an abstract idea”
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`and the claims merely “automate[d] the migration of data between two computers”). This has
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`proven true for patents in the computer security space. For example, in BASCOM Glob. Internet
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`Servs., Inc. v. AT&T Mobility LLC, the Federal Circuit found that claims2 reciting an Internet
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`content filtering system were directed to an abstract idea because “filtering content . . . is a
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`longstanding, well-known method of organizing human behavior, similar to concepts previously
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`found to be abstract.” 827 F.3d 1341, 1348 (Fed. Cir. 2016). In Intellectual Ventures I LLC v.
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`Symantec Corp., the Federal Circuit found claims3 related to filtering unwanted content from
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`email were directed to an abstract idea because “it was long-prevalent practice for people
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`receiving paper mail to look at an envelope and discard certain letters, without opening them, from
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`sources from which they did not wish to receive mail based on characteristics of the mail” and
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`2 One of the asserted claims, claim 1 of U.S. Patent No. 5,987,606 , recited:
`1. A content filtering system for filtering content retrieved from an
`Internet computer network by individual controlled access
`network accounts, said filtering system comprising:
`a local client computer generating network access requests for said
`individual controlled access network accounts;
`at least one filtering scheme;
`a plurality of sets of logical filtering elements; and
`a remote ISP server coupled to said client computer and said Internet
`computer network, said ISP server associating each said network
`account to at least one filtering scheme and at least one set of
`filtering elements, said ISP server further receiving said network
`access requests from said client computer and executing said
`associated filtering scheme utilizing said associated set of logical
`filtering elements.
`827 F.3d at 1345 (quoting U.S. Patent No. 5,987,606 at col. 6 l. 62-col. 7 l. 10).
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` 3
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` One of the asserted claims, claim 9 of U.S. Patent No. 6,460,050, recited:
`9. A method for identifying characteristics of data files, comprising:
`receiving, on a processing system, file content identifiers for data
`files from a plurality of file content identifier generator agents,
`each agent provided on a source system and creating file content
`IDs using a mathematical algorithm, via a network;
`determining, on the processing system, whether each received
`content identifier matches a characteristic of other identifiers;
`and
`outputting, to at least one of the source systems responsive to a
`request from said source system, an
`indication of
`the
`characteristic of the data file based on said step of determining.
`838 F.3d at 1313 (quoting U.S. Patent No. 6,460,050 at col. 8, ll. 13-26).
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`Case 5:15-cv-03295-BLF Document 156 Filed 12/13/16 Page 10 of 21
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`“[c]haracterizing e-mail based on a known list of identifiers is no less abstract.” 838 F.3d 1307,
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`1314 (Fed. Cir. 2016). The court found these claims distinguishable from those in Enfish and
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`McRO because there was no “specific or limiting recitation of . . . improved computer
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`technology;” instead, they merely “use[d] generic computers to perform generic computer
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`functions.” Id. at 1315, 1316. Thus, non-abstract claims that “improve the functioning of the
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`computer itself,” Alice, 134 S.Ct. at 2359, such as those in Enfish and McRO, remain a narrow
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`class.
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`In assessing step two, courts must “consider the elements of each claim both individually
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`and ‘as an ordered combination’” and assess whether there are any “additional features” in the
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`claims that constitute an “inventive concept.” Alice, 134 S.Ct. at 2357. This inventive concept
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`“must be significantly more than the abstract idea itself,” BASCOM, 827 F.3d at 1349, “must be
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`more than well-understood, routine, conventional activity,” Affinity, 838 F.3d at 1262, “and cannot
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`simply be an instruction to implement or apply the abstract idea on a computer.” BASCOM, 827
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`F.3d at 1349. For example, it may be found in an “inventive set of components or methods,”
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`“inventive programming,” or an inventive approach in “how the desired result is achieved.” Elec.
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`Power Grp., 830 F.3d at 1355.
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`To date, the Federal Circuit has found an inventive concept in three cases. First, in DDR
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`Holdings, LLC v. Hotels.com, L.P., the Federal Circuit found that claims that addressed the
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`“Internet-centric problem” of third-party merchant advertisements that would “lure . . . visitor
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`traffic away” from a host website (because clicking on the advertisement would redirect the visitor
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`to the merchant’s website) amounted to an inventive concept. 773 F.3d 1245, 1248, 1259 (Fed.
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`Cir. 2014). The claims solved this problem by generating composite websites that combined the
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`visual elements of the host’s webpage with the content of the third-party merchant. Id. at 1248.
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`The Federal Circuit reasoned that the claims “specify how interactions with the Internet are
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`manipulated to yield a desired result” such that the interactions are “not merely the routine or
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`conventional use of the Internet.” Id. at 1259. Accordingly, there was sufficient transformation
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`for the claims to not be patent-ineligible. Id.
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`Second, in BASCOM, the Federal Circuit found that the claims directed to Internet content
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`Case 5:15-cv-03295-BLF Document 156 Filed 12/13/16 Page 11 of 21
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`filtering recited the inventive concept of “install[ing] a filtering tool at a specific location, remote
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`from the end-users, with customizable filtering features specific to each end user.” 827 F.3d at
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`1350. The court reasoned that “an inventive concept can be found in the non-conventional and
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`non-generic arrangement of known, conventional pieces.” Id. The court found this to be the case
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`there because the patents claimed a specific type of content filtering that took advantage of an ISP
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`server’s ability to associate internet requests with user accounts. Id. Thus, they “harnesse[d] [a]
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`technical feature of the network” to claim a “specific method of filtering Internet content cannot
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`be said, as a matter of law, to have been conventional or generic.” Id.
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`Third, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., the Federal Circuit found that
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`claims relating to solutions for managing accounting and billing data over large, disparate
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`networks recited an inventive concept because they contained “specific enhancing limitation[s]
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`that necessarily incorporates the invention’s distributed architecture—an architecture providing a
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`technological solution to a technological problem.” No. 2015-1180, 2016 WL 6440387, at *11
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`(Fed. Cir. Nov. 1, 2016). Use of this “distributed architecture” transformed the claims into
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`patentable subject matter. Id.
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`Nevertheless, not all technological aspects of how a patented invention is implemented
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`supply a basis for finding an “inventive concept.” A claim that simply takes an abstract idea and
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`adds “the requirement to perform it on the Internet, or to perform it on a set of generic computer
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`components . . . would not contain an inventive concept.” BASCOM, 827 F.3d at 1350. For
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`example, in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, the Federal
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`Circuit found that claims directed to the abstract ideas of extracting data and recognizing patterns
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`did not recite an inventive concept because they simply recited “generic scanner and computer to
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`perform well-understood, routine, and conventional activities commonly used in industry.” 776
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`F.3d 1343, 1348 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119, 193 L. Ed. 2d 208 (2015). In
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`Affinity Labs, the court found there was no inventive concept because “[t]he claim simply recites
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`the use of generic features of cellular telephones, such as a storage medium and a graphical user
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`interface, as well as routine functions, such as transmitting and receiving signals, to implement the
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`underlying idea.” 838 F.3d at 1262. In Intellectual Ventures I, the court found that the claimed
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`Case 5:15-cv-03295-BLF Document 156 Filed 12/13/16 Page 12 of 21
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`email filtering methods and systems did not recite an inventive concept because “the asserted
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`claims describe only generic computer elements” or “generic computers that use generic virus
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`screening technology.” 838 F.3d at 1316, 1320. Accordingly, the search for an inventive
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`concept remains one that court must approach cautiously, “scrutiniz[ing] the claim elements more
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`microscopically” than in step one. Elec. Power Grp., 830 F.3d at 1354.
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`In addition to these principles, several other considerations may be helpful in conducting a
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`§ 101 analysis: First, the Supreme Court has recognized that the “concern that undergirds [the]
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`§ 101 jurisprudence” is preemption. Alice, 134 S. Ct. at 2358. If a claim is so abstract so as to
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`“pre-empt use of [the claimed] approach in all fields, and would effectively grant a monopoly over
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`an abstract idea” is not patent-eligible. Bilski v. Kappos, 561 U.S. 593, 612, 130 S. Ct. 3218,
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`3231, 177 L. Ed. 2d 792 (2010). However, the inverse is not true: “[w]hile preemption may signal
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`patent ineligible subject matter, the absence of complete preemption does not demonstrate patent
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`eligibility.” FairWarning, 839 F.3d at 1098 (internal quotation marks and citation omitted).
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`Second (and relatedly), “claims that are ‘so result-focused, so functional, as to effectively
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`cover any solution to an identified problem’ are frequently held ineligible under section 101.”
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`Affinity Labs, 838 F.3d at 1265. For example, in Elec. Power Grp., the Federal Circuit found that
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`claims directed to “any way of effectively monitoring multiple sources on a power grid” instead of
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`“some specific way of enabling a computer to monitor data from multiple sources across an
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`electric power grid” did not contain an inventive concept. 830 F.3d at 1356. The Federal Circuit
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`has noted that this framework “is one helpful way of double-checking the application of the
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`Supreme Court's framework to particular claims—specifically, when determining whether the
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`claims meet the requirement of an inventive concept in application.” Id.
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`III. DISCUSSION
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`With these principles in mind, the Court turns to the claims at issue. As set forth below,
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`the Court finds that the asserted claims of the ’494 patent are not patent-ineligible because,
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`although they are directed to an abstract idea, they recite an inventive concept. 134 S. Ct. at 2355.
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`A. Relevance of ’194 Patent
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`Before turning to the merits, this case requires the Court to clarify the scope of materials
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`Case 5:15-cv-03295-BLF Document 156 Filed 12/13/16 Page 13 of 21
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`relevant to its analysis. This case presents an interesting scenario where the claims themselves are
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`basic and broad, but significant clarifying detail is provided in a specification that belongs not to
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`the ’494 patent itself, but to a parent patent (the ’194 patent), which the ’494 patent identifies and
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`declares to be “hereby incorporated by reference.” ’494 patent, col. 1 ll. 37-38. Finjan,
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`unsurprisingly, urges the Court to pay particul