Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 1 of 46
`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 1 of 46
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`EXHIBIT 4
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`EXHIBIT 4
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 2 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 1 of 45
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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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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`APPLE INC,
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`Defendant.
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`AT&T CORP,
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`Defendant.
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`TWITTER INC.,
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`Defendant.
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`Case No. 18-CV-06217-LHK
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`ORDER GRANTING CONSOLIDATED
`MOTIONS TO DISMISS
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`Case No. 18-CV-06177-LHK
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`Case No. 18-CV-04523-LHK
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`ORDER GRANTING CONSOLIDATED MOTIONS TO DISMISS
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`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 2 of 45
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`VERIZON WIRELESS SERVICES, LLC,
`et al.,
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`Defendant.
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`Case No. 18-CV-06054-LHK
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`Plaintiff Voip-Pal.Com, Inc. filed 4 related patent infringement suits against Defendants
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`Apple Inc. (“Apple”), AT&T Corp. (“AT&T”), Twitter Inc. (“Twitter”), and Cellco Partnership
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`d/b/a/ Verizon Wireless Services, LLC (“Verizon”) (collectively, “Defendants”). Plaintiff alleges
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`that Apple, AT&T, and Verizon (but not Twitter) infringe various claims of U.S. Patent No.
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`8,542,815 (“the ’815 Patent”) to Perreault et al. Plaintiff also alleges that all Defendants infringe
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`various claims of U.S. Patent No. 9,179,005 (“the ’005 Patent”) to Perreault et al. In all 4 related
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`cases, each Defendant filed an omnibus motion to dismiss, thus resulting in 4 omnibus motions to
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`dismiss. However, the briefing on the omnibus motions to dismiss, Plaintiff’s oppositions, and
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`Defendants’ replies is identical in all 4 cases. Thus, for ease of reference and unless otherwise
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`specified, the Court refers to documents filed in the Twitter litigation, Case No. 18-CV-04523-
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`LHK.
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`Before the Court is Defendants’ consolidated motions to dismiss, which contend that the
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`asserted claims of the patents-in-suit fail to recite patent-eligible subject matter under 35 U.S.C. §
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`101. ECF No. 71 (“Mot.”). Having considered the submissions of the parties, the relevant law, and
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`the record in this case, the Court GRANTS Defendants’ consolidated motions to dismiss the
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`asserted claims of the ’815 Patent and the ’005 Patent.
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`I.
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`BACKGROUND
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` Factual Background
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`1. The Parties
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`Plaintiff is a Nevada corporation with its principal place of business in Bellevue,
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`Washington. ECF No. 65 at ¶ 5. Plaintiff “owns a portfolio of [Voice over Internet Protocol]
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`Case Nos. 18-CV-06217-LHK, 18-CV-06177-LHK, 18-CV-04523-LHK, 18-CV-06054-LHK
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 4 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 3 of 45
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`patents and patent applications.” Id. at ¶ 1.
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`Defendant Twitter is a California corporation with its principal place of business in San
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`Francisco, California. Id. at ¶ 6. Twitter uses and sells “messaging services using messaging
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`application software and/or equipment, servers and/or gateways that route messages to computing
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`devices such as smartphones, tablet computers, and personal computers.” Id. at ¶ 23.
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`Defendant Apple is a California corporation with its principal place of business in
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`Cupertino, California. Case No. 18-CV-06217-LHK, ECF No. 11 at ¶ 7. Apple “provides,
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`supports and/or operates messaging technology, including iMessage, an instant messaging service
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`supported by Apple’s Messages application and computer infrastructure that allows smartphone
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`and desktop users to send messages including text, images, video and audio to other users.” Id. at ¶
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`15.
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`Defendant AT&T is a Delaware corporation with its principal place of business in
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`Bedminster, New Jersey. Case No. 18-CV-06177-LHK, ECF No. 59 at ¶ 2. AT&T “supports and
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`operates a messaging platform . . . [that] allows smartphone users to send messages including text,
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`images, video and audio to others.” Id. at ¶ 40. AT&T also offers Voice over Internet Protocol
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`products and services “utilizing equipment at the customer or business premises and a collection
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`of servers and gateways.” Id. at ¶ 41. Moreover, AT&T “supports a Wi-Fi based calling platform .
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`. . [that] allows a mobile device to initiate a communication such as a call or text message between
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`a caller, or a first participant, and a callee, or a second participant, using an AT&T assisted voice
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`over IP (“VoIP”) system.” Id. at ¶ 42.
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`Defendant Verizon is a Delaware corporation with its principal place of business in
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`Basking Ridge, New Jersey. Case No. 18-CV-06054-LHK, ECF No. 119 at ¶ 2. Verizon “supports
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`and operates a messaging platform . . . [that] allows smartphone users to send messages including
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`text, images, video and audio to others.” Id. at ¶ 40. Verizon also offers Voice over Internet
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`Protocol products and services “utilizing equipment at the customer or business premises and a
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`collection of servers and gateways.” Id. at ¶ 41. Moreover, Verizon “supports a Wi-Fi based
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`calling platform . . . [that] allows a mobile device to initiate a communication such as a call or a
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`3
`Case Nos. 18-CV-06217-LHK, 18-CV-06177-LHK, 18-CV-04523-LHK, 18-CV-06054-LHK
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 5 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 4 of 45
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`text message between a caller, or a first participant, and a callee, or a second participant, using a
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`[Verizon] assisted voice over IP (“VoIP”) system.” Id. at ¶ 42.
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`2. The Patents
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`The ’815 Patent and the ’005 Patent (collectively, the “Patents”) are both titled “Producing
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`Routing Messages for Voice over IP Communications.” ’815 Patent at front page; ’005 Patent at
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`front page. The ’815 Patent was filed on November 1, 2007 and was issued on September 24,
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`2013. The ’005 Patent was filed on August 13, 2013 and was issued on November 3, 2015. The
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`’815 Patent and the ’005 Patent share the same specification.
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`Defendants posit that the asserted claims of the Patents fall within two categories: “multi-
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`network claims” and “single-network claims.” Mot. at 2. Defendants argue that asserted claims 1,
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`7, 12, 27, 28, 72, 73, 92, and 111 of the ’815 Patent and claims 49 and 73 of the ’005 Patent are
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`multi-network claims. Id. at 2, 2 n.2. Moreover, Defendants argue that asserted claims 74, 75, 77,
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`78, 83, 84, 94, 96, and 99 of the ’005 Patent are single-network claims. Id. at 2, 2 n.3. The
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`differences between the multi-network claims and the single-network claims will be explained
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`below, but for present purposes, the Court finds Defendants’ differentiation of the claims into 2
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`groups useful, and adopts Defendants’ groupings.
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`In addition, Defendants identify claim 1 of the ’815 Patent as representative of the multi-
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`network claims, an identification that Plaintiff does not dispute. Defendants identify claim 74 of
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`the ’005 Patent as representative of the single-network claims, an identification that Plaintiff also
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`does not dispute. Thus, the Court will adopt the parties’ identification of representative claims.
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`Claim 1 of the ’815 Patent shall be representative of the multi-network claims, and claim 74 of the
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`’005 Patent shall be representative of the single-network claims.
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`In general, the asserted claims of the Patents relate to the process of routing calls (either
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`voice or video) between a caller and a callee, in which calls are classified as either public network
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`calls or private network calls.1 ’815 Patent at 1:50-54. More specifically, the process of routing the
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`1 The Patents refer to “callee” to mean the recipient of a call. The Court adopts the Patents’ term of
`art and will use “callee” to refer to a call recipient.
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`Case Nos. 18-CV-06217-LHK, 18-CV-06177-LHK, 18-CV-04523-LHK, 18-CV-06054-LHK
`ORDER GRANTING CONSOLIDATED MOTIONS TO DISMISS
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`Northern District of California
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`United States District Court
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`

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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 6 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 5 of 45
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`call involves a computer “super node” routing a call based on “identifiers” associated with both
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`the caller and the callee. Id. at 1:54-56. Such identifiers might include what are essentially, in
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`layman’s terms, the phone numbers of the caller and callee. Id. at 2:17-25.
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`A super node contains a call routing controller, which controls communication between a
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`caller and a callee. 3:47-52. A caller sends a request to establish a call to the call routing
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`controller. 1:54-56. The request includes the callee’s identifier. Id. The call routing controller then
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`compares the callee identifier with attributes of the caller identifier. Id. at 2:8-25. Based on the
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`comparison between the callee identifier and the caller identifier, the call routing controller
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`determines whether the callee is a subscriber to a private network. Id. at 2:45-47, 2:65-3:2. If the
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`callee is a subscriber to a private network, then the call routing controller produces a routing
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`message so that the call is directed to the callee’s private network super node. Id. at 1:59-62,
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`14:24-34. If the callee is not a subscriber to a private network, then the call routing controller
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`produces a routing message directing the call through a gateway to a public network. Id. at 1:62-
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`64.
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`Figure 1 is helpful to understanding the invention. “[A] system for making voice over IP
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`telephone/videophone calls is shown generally at [item] 10.” Id. at 12:50-51. Item 11 is a super
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 7 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 6 of 45
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`node located, for example, in Vancouver, Canada. Id. at 12:53-55. The Vancouver super node
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`includes a call controller (item 14), a routing controller (item 16), a database (item 18), a
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`voicemail server (item 19), and a media relay (item 9). Id. at 13:10-13. Users of the system such as
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`a Vancouver user (item 12) and a Calgary user (item 15) communicate with the Vancouver super
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`node using the internet (item 13). Id. at 13:17-21. It is important to note that the super node is
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`implemented via a computer. According to the specification, it “may be implemented as separate
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`modules on a common computer system or by separate computers, for example.” Id. at 13:13-14
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`Assume that the Vancouver user (item 12) is attempting to call the Calgary user (item 15).
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`The caller (item 12) will send a message to the Vancouver super node (item 10) and in response,
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`the call controller (item 14) sends a call routing controller request to the routing controller (item
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`16). Id. at 14:10-18. The routing controller (item 16) then queries the database (item 18), and then
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`produces a routing message which is sent back to the call controller (item 14). Id. The call
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`controller (item 14) communicates with the media relay (item 9) to create a communications link
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`with the callee (item 15) through the media relay (item 9) “of the same node, a different node or to
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`a communications supplier gateway” (item 20). Id. at 14:17-23.
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`As aforementioned, Plaintiff asserts the multi-network claims,2 of which claim 1 of the
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`’815 Patent is representative. Moreover, Plaintiff asserts the single-network claims,3 of which
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`claim 74 of the ’005 Patent is representative.
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`Claim 1 of the ’815 Patent recites:
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`1. A process for operating a call routing controller to facilitate communication between
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`callers and callees in a system comprising a plurality of nodes with which callers and callees are
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`associated, the process comprising:
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`in response to initiation of a call by a calling subscriber, receiving a caller identifier and a
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`callee identifier;
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`2 Claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the ’815 Patent and claims 49 and 73 of the ’005
`Patent.
`3 Claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005 Patent.
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`Case Nos. 18-CV-06217-LHK, 18-CV-06177-LHK, 18-CV-04523-LHK, 18-CV-06054-LHK
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 8 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 7 of 45
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`locating a caller dialing profile comprising a username associated with the caller and a
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`plurality of calling attributes associated with the caller;
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`determining a match when at least one of said calling attributes matches a portion of said
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`callee identifier;
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`classifying the call as a public network call when said match meets public network
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`classification criteria and classifying the call as a private network call when said match meets
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`private network classification criteria;
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`when the call is classified as a private network call, producing a private network routing
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`message for receipt by a call controller, said private network routing message identifying an
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`address, on the private network, associated with the callee;
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`when the call is classified as a public network call, producing a public network routing
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`message for receipt by the call controller, said public network routing message identifying a
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`gateway to the public network.
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`Id. at 36:14-38.
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`Claim 74 of the ’005 Patent recites:
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`74. A method of routing communications in a packet switched network in which a first
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`participant identifier is associated with a first participant and a second participant identifier is
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`associated with a second participant in a communication, the method comprising:
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`after the first participant has accessed the packet switched network to initiate the
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`communication, using the first participant identifier to locate a first participant profile comprising
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`a plurality of attributes associated with the first participant;
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`when at least one of the first participant attributes and at least a portion of the second
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`participant identifier meet a first network classification criterion, producing a first network routing
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`message identifying an address in a first portion of the packet switched network, the address being
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`associated with the second participant, the first portion being controlled by an entity; and
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`when at least one of the first participant attributes and at least a portion of the second
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`participant identifier meet a second network classification criterion, producing a second network
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 9 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 8 of 45
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`routing message for receipt by the controller, the second network routing message identifying an
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`address in a second portion of the packet switched network, the second portion not controlled by
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`the entity.
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`’005 Patent at 43:41-65.
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`As aforementioned, the parties have divided the asserted claims into two categories: the
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`multi-network claims, and the single network claims. The difference between the two types of
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`claims lies within the claims’ preambles. For instance, claim 1 of the ’815 Patent, which is
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`representative of the multi-network claims, discloses a “call routing controller to facilitate
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`communication between callers and callees in a system comprising a plurality of nodes.” ’815
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`Patent at 36:14-16 (emphasis added). Thus, claim 1 requires a call routed through a plurality of
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`nodes, which is why it is a multi-network claim; each node comprises a different network. On the
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`other hand, claim 74 of the ’005 Patent, which is representative of the single-network claims,
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`discloses “routing communications in a packet switched network.” ’005 Patent at 43:41-42
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`(emphasis added). Thus, claim 74 of the ’008 Patent refers to routing communications through a
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`single packet switched network, as opposed to multiple nodes (i.e. networks) like in claim 1 of the
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`’815 Patent.
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` Procedural History
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`Plaintiff has filed suit against Twitter, Apple, Verizon, and AT&T. The parties filed
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`identical omnibus motions to dismiss, oppositions, and replies in all 4 cases. In addition, there are
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`various inter partes review proceedings before the Patent Trial and Appeal Board concerning the
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`patents-in-suit. The Court first discusses the IPR proceedings, then the district court suits against
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`Twitter, Apple, Verizon, and AT&T.
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`1. The IPR Proceedings
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`On June 15, 2016, Apple petitioned for inter partes review (“IPR”) of the ’005 Patent in
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`proceeding number IPR2016-01198, and for IPR of the ’815 Patent in proceeding number
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`IPR2016-01201. Both of Apple’s IPR petitions were granted. On the other hand, AT&T also filed
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`3 IPR petitions with the PTAB, which denied institution of AT&T’s petitions. ECF No. 77 at 4
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 10 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 9 of 45
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`n.4. Verizon and Twitter do not appear to have filed IPRs of the ’005 and ’815 Patents. Id.
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`On November 20, 2017, the PTAB in Apple’s IPRs issued final written decisions rejecting
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`Apple’s obviousness arguments and upholding the validity of the ’005 and the ’815 Patents. See
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`IPR2016-01198, Paper 53; IPR2016-01201, Paper 54. However, during the pendency of both of
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`Apple’s IPR proceedings, Plaintiff’s former chief operating officer and chairman sent
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`unauthorized ex parte communications to the PTAB. IPR2016-01198, Paper 70 at 3. In light of
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`these ex parte communications, on December 21, 2018, the PTAB sanctioned Plaintiff by
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`allowing a new panel of the PTAB to reconsider the final written decisions on the ’005 and the
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`’815 Patents on rehearing. Id. at 15. The reconsideration proceedings are currently pending.
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`2. The Twitter Litigation
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`On October 6, 2016, Plaintiff first filed suit against Twitter in the District of Nevada. ECF
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`No. 1. On January 31, 2017, the District of Nevada granted the parties’ stipulation to stay the
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`Twitter case pending the outcome of the IPR proceedings instituted by Apple challenging the
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`validity of the ’815 and ’005 Patents. ECF No. 12. On January 26, 2018, the parties submitted a
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`joint status report representing that the Patent Trial and Appeal Board (“PTAB”) had issued final
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`written decisions in Apple’s IPR proceedings upholding the validity of the Patents. ECF No. 13.
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`The parties requested that the stay of the case be lifted. On February 27, 2018, the District of
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`Nevada lifted the stay. ECF No. 25.
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`On February 28, 2018, Twitter moved to change venue to the Northern District of
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`California. ECF No. 27. On July 23, 2018, the District of Nevada granted Twitter’s motion for
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`change of venue to the Northern District of California. ECF No. 41.
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`On November 15, 2018, this Court entered an order consolidating the Twitter action with
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`the separately-filed Apple, AT&T, and Verizon actions (discussed below) for pretrial purposes.
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`ECF No. 64. Also on November 15, 2018, Plaintiff filed a first amended complaint against
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`Twitter. ECF No. 65.
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`3. The Apple Litigation
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`On February 9, 2016, Plaintiff first filed suit against Apple in the District of Nevada. Case
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`9
`Case Nos. 18-CV-06217-LHK, 18-CV-06177-LHK, 18-CV-04523-LHK, 18-CV-06054-LHK
`ORDER GRANTING CONSOLIDATED MOTIONS TO DISMISS
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`Northern District of California
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 11 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 10 of 45
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`No. 18-CV-06217-LHK, ECF No. 1. On April 6, 2016, Plaintiff filed an amended complaint
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`against Apple. Id., ECF No. 6. The Apple litigation was also stayed pending resolution of the IPR
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`proceedings. Id., ECF No. 27. On October 5, 2018, the District of Nevada granted Apple and
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`Plaintiff’s stipulation to transfer the case to the Northern District of California. Id., ECF No. 46.
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`4. The Verizon and AT&T Litigation
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`On February 10, 2016, Plaintiff first filed suit against both Verizon and AT&T in the same
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`case in the District of Nevada. Case No. 18-CV-06177-LHK, ECF No. 1. On April 6, 2016,
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`Plaintiff filed an amended complaint. Id., ECF No. 2. On May 5, 2016, Plaintiff filed a second
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`amended complaint. Id., ECF No. 3. On July 29, 2016, the District of Nevada granted a stipulation
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`to stay the Verizon and AT&T case pending the IPR proceedings. Case No. 18-CV-06054-LHK,
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`ECF No. 31. On June 25, 2018, the District of Nevada granted an unopposed motion severing
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`AT&T from the Verizon suit. Case No. 18-CV-06177-LHK, ECF No. 4. On October 4, 2018, the
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`District of Nevada granted AT&T and Plaintiff’s stipulation to transfer the case to the Northern
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`District of California. Id., ECF No. 21. On November 15, 2018, Plaintiff filed a third amended
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`complaint asserting the Patents against only AT&T, with the Verizon suit proceeding separately.
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`Id., ECF No. 59.
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`After AT&T was severed from the Verizon suit, the Verizon suit proceeded separately. On
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`October 1, 2018, the District of Nevada granted Plaintiff and Verizon’s stipulation to transfer the
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`case to the Northern District of California. Case No. 18-CV-06054-LHK, ECF No. 89. On
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`November 15, 2018, Plaintiff filed a third amended complaint asserting the Patents against only
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`Verizon, with the AT&T suit proceeding separately. Id., ECF No. 119.
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`5. The Consolidated Motions to Dismiss
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`On January 10, 2019, Defendants, asserting that the patents-in-suit are directed to
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`unpatentable subject matter under 35 U.S.C. § 101, filed identical consolidated motions to dismiss
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`Plaintiff’s complaints. ECF No. 71 (“Mot.”); Case No. 18-CV-06217-LHK, ECF No. 75; Case No.
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`18-CV-06177-LHK, ECF No. 63; Case No. 18-CV-06054-LHK, ECF No. 123.
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`On February 7, 2019, Plaintiff filed identical oppositions. ECF No. 77; Case No. 18-CV-
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`10
`Case Nos. 18-CV-06217-LHK, 18-CV-06177-LHK, 18-CV-04523-LHK, 18-CV-06054-LHK
`ORDER GRANTING CONSOLIDATED MOTIONS TO DISMISS
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`Northern District of California
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`United States District Court
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 12 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 11 of 45
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`
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`06217-LHK, ECF No. 81; Case No. 18-CV-06177-LHK, ECF No. 68; Case No. 18-CV-06054-
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`LHK, ECF No. 127. On February 12, 2019, Plaintiff filed identical corrected oppositions. ECF
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`No. 77 (“Opp.”); Case No. 18-CV-06217-LHK, ECF No. 83; Case No. 18-CV-06177-LHK, ECF
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`No. 69; Case No. 18-CV-06054-LHK, ECF No. 128.4
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`On February 28, 2019, Defendants filed identical consolidated replies. ECF No. 78
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`(“Reply”); Case No. 18-CV-06217, ECF No. 84; Case No. 18-CV-06177-LHK, ECF No. 70; Case
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`No. 18-CV-06054-LHK, ECF No. 129.
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`On March 13, 2019, Plaintiff filed identical administration motions for leave to file a sur-
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`reply. ECF No. 79; Case No. 18-CV-06217-LHK, ECF No. 91; Case No. 18-CV-06177-LHK,
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`ECF No. 71; 18-CV-06054-LHK, ECF No. 130. According to Civil Local Rule 7-3(d), once a
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`reply has been filed, “no additional memoranda, papers or letters may be filed without prior Court
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`approval.” The Court finds that the issues have been sufficiently briefed without needing to rely
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`on a sur-reply. Thus, the administrative motions for leave to file a sur-reply are DENIED.
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`II.
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`LEGAL STANDARD
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` Motion to Dismiss Under Federal Rule of Civil Procedure 12(b)(6)
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`Pursuant to Federal Rule of Civil Procedure 12(b)(6), a defendant may move to dismiss an
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`action for failure to allege “enough facts to state a claim to relief that is plausible on its face.” Bell
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`Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the
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`plaintiff pleads factual content that allows the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged. The plausibility standard is not akin to a
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`‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted
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`4 As an exhibit to the opposition, Plaintiff attached the Declaration of William Mangione-Smith,
`an expert, in support of Plaintiff’s response to Apple’s IPR petition. ECF No. 76-5 (“Mangione-
`Smith Declaration”). Plaintiff does not request judicial notice of the Mangione-Smith Declaration.
`The Court will not consider the Mangione-Smith Declaration as part of its analysis because the
`Declaration is extrinsic to the complaints and Patents. See, e.g., Evolutionary Intelligence, LLC v.
`Sprint Nextel Corp., 137 F. Supp. 3d 1157, 1163 n.5 (N.D. Cal. 2015), aff’d, 677 Fed. App’x 679
`(Fed. Cir. 2017) (“On such [Rule 12] motions, the court may only consider the complaint,
`documents incorporated by reference in the complaint, and judicially noticed facts. Accordingly,
`because the Taylor declaration meets none of these criteria, the court does not consider it.”).
`11
`Case Nos. 18-CV-06217-LHK, 18-CV-06177-LHK, 18-CV-04523-LHK, 18-CV-06054-LHK
`ORDER GRANTING CONSOLIDATED MOTIONS TO DISMISS
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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 13 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 12 of 45
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`unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted).
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`For purposes of ruling on a Rule 12(b)(6) motion, the Court “accept[s] factual allegations
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`in the complaint as true and construe[s] 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).
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`Nonetheless, the Court is not required to “‘assume the truth of legal conclusions merely because
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`they are cast in the form of factual allegations.’” Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir.
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`2011) (quoting W. Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981)). Mere “conclusory
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`allegations of law and unwarranted inferences are insufficient to defeat a motion to dismiss.”
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`Adams v. Johnson, 355 F.3d 1179, 1183 (9th Cir. 2004). Furthermore, “‘[a] plaintiff may plead
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`[him]self out of court’” if he “plead[s] facts which establish that he cannot prevail on his . . .
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`claim.” Weisbuch v. County of Los Angeles, 119 F.3d 778, 783 n.1 (9th Cir. 1997) (quoting
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`Warzon v. Drew, 60 F.3d 1234, 1239 (7th Cir. 1995)).
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` Motion to Dismiss for Patent Eligibility Challenges Under 35 U.S.C. § 101
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`Defendant’s motion argues that the patents-in-suit fail to claim patent-eligible subject
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`matter under 35 U.S.C. § 101 in light of the U.S. Supreme Court’s decision in Alice Corp. Pty.
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`Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). The ultimate question whether a claim
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`recites patent-eligible subject matter under § 101 is a question of law. Intellectual Ventures I LLC
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`v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017) (“Patent eligibility under § 101 is
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`an issue of law[.]”); In re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014) (same).
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`However, the Federal Circuit has identified that there are certain factual questions underlying the
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`§ 101 analysis. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed. Cir. 2018). Accordingly,
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`a district court may resolve the issue of patent eligibility under § 101 by way of a motion to
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`dismiss. See, e.g., Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir.
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`2017) (affirming determination of ineligibility made on 12(b)(6) motion); Content Extraction &
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`Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345 (Fed. Cir. 2014)
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`(same).
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`Although claim construction is often desirable, and may sometimes be necessary, to
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`12
`Case Nos. 18-CV-06217-LHK, 18-CV-06177-LHK, 18-CV-04523-LHK, 18-CV-06054-LHK
`ORDER GRANTING CONSOLIDATED MOTIONS TO DISMISS
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`Northern District of California
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`United States District Court
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`

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`Case 3:21-cv-09773-JD Document 48-4 Filed 11/21/22 Page 14 of 46
`Case 5:18-cv-04523-LHK Document 82 Filed 03/25/19 Page 13 of 45
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`resolve whether a patent claim is directed to patent-eligible subject matter, the Federal Circuit has
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`explained that “claim construction is not an inviolable prerequisite to a validity determination
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`under § 101.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266,
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`1273 (Fed. Cir. 2012). Where the court has a “full understanding of the basic character of the
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`claimed subject matter,” the question of patent eligibility may properly be resolved on the
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`pleadings. Content Extraction, 776 F.3d at 1349; see also Genetic Techs. Ltd. v. Bristol-Myers
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`Squibb Co., 72 F. Supp. 3d 521, 539 (D. Del. 2014), aff’d sub nom. Genetic Techs. Ltd. v. Merial
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`L.L.C., 818 F.3d 1369 (Fed. Cir. 2016).
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` Substantive Legal Standards Applicable Under 35 U.S.C. § 101
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`1. Patent-Eligible Subject Matter Under 35 U.S.C. § 101
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`Section 101 of Title 35 of the United States Code “defines the subject matter that may be
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`patented under the Patent Act.” Bilski v. Kappos, 561 U.S. 593, 601 (2010). Under § 101, the
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`scope of patentable subject matter encompasses “any new and useful process, machine,
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`manufacture, or composition of matter, or any new and useful improvement thereof.” Id. (quoting
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`35 U.S.C. § 101). These categories are broad, but they are not limitless. Section 101 “contains an
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`important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not
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`patentable.” Alice, 134 S. Ct. at 2354 (citation omitted). These three categories of subject matter
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`are excepted from patent-eligibility because “they are the basic tools of scientific and
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`technological work,”