Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 1 of 52
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
`
`Plaintiffs,
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`
`
`v.
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`
`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
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`
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`
`
`THE UNITED STATES,
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`
`
`
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`
`
`
`
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`No. 19-859 C
`
`Judge Ryan T. Holte
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`
`
`Defendant.
`
`
`PLAINTIFFS’ BRIEF IN OPPOSITION TO THE UNITED STATES’
`MOTION TO DISMISS UNDER RULE 12(b)(6)
`
`
`
`O’KELLY & ERNST, LLC
`Sean T. O’Kelly (No. 4349)
`824 N. Market St., Suite 1001A
`Wilmington, DE 19801
`(302) 778-4000
`(302) 295-2873 (facsimile)
`sokelly@oelegal.com
`
`O’ROURKE LAW OFFICE, LLC
`Gerard M. O'Rourke (No. 3265)
`1201 N. Orange Street
`Suite 7260
`Wilmington, DE 19801-1186
`(302) 562-6960
`gorourke@orourkefirm.com
`
`Attorneys for Plaintiffs
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`
`
`
`
`Dated: December 20, 2019
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`

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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 2 of 52
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`
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ................................................................................................................... 1
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`F. STANDARDS GOVERNING A MOTION TO DISMISS ............................................... 11
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`G.
`
`THE LAW GOVERNING MOTIONS BASED ON 35 U.S.C. § 101 .......................... 13
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`i. The Law On Patent-Ineligible Concepts ........................................................................ 14
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`ii.
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`The Law Of Inventive Concept .................................................................................. 16
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`V. ARGUMENT ........................................................................................................................ 20
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`A.
`
`THE CLAIMS OF THE ’355 PATENT ARE PATENTABLE UNDER § 101. ........... 21
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`1.
`
`The claims are not directed to an abstract idea. .......................................................... 23
`
`2.
`
`The Claims Contain an Inventive Concept Under Alice Step 2. ................................ 23
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`3.
`
`The ’355 Patent Is Entitled To An Especially Strong Presumption Of Validity ........ 24
`
`4.
`
`Factual Disputes Over Step 2 Preclude Granting This Motion .................................. 25
`
`5.
`
`Claim 2 Is Not Representative Of The Asserted Claims ............................................ 25
`
`B.
`
`THE CLAIMS OF THE ‘816 PATENT ARE PATENTABLE UNDER 35 U.S.C. § 101
`
`
`
`27
`
`1.
`
`The Claims of the ‘816 are not directed to an Abstract idea. ..................................... 27
`
`2.
`
`The Claims Contain An Inventive Concept. ............................................................... 30
`
`4.
`
`Factual Disputes Over Step 2 Preclude Granting This Motion............................... 31
`
`5.
`
`Claim 3 Is Not Representative Of The Asserted Claims ............................................ 31
`
`K.
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`CLAIMS OF THE ‘383 PATENT ARE PATENTABLE UNDER 35 U.S.C. § 101 .... 31
`
`
`
`i
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 3 of 52
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`1 The Claims of the ‘383 are not directed to an Abstract idea. ............................................ 31
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`L.
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`CLAIMS OF THE ‘748 PATENT ARE PATENTABLE UNDER 35 U.S.C. § 101 .... 33
`
`1.
`
`The Claims of the ‘748 patent are not directed to an Abstract idea. .......................... 34
`
`3.
`
`The Claims Contain An Inventive Concept ................................................................ 36
`
`4.
`
`Factual Disputes Over Alice Step 2 Preclude Granting This Motion ......................... 37
`
`5.
`
`Claim 2 Is Not Representative Of The Asserted Claims ............................................ 37
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`M. CLAIMS OF THE ‘337 PATENT ARE PATENTABLE UNDER 35 U.S.C. § 101 .... 38
`
`4.
`
`The ‘384 patent and the ‘748 patent are patentable .................................................... 42
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`N.
`
`CLAIM CONSTRUCTION ISSUES COMPEL DENIAL OF THE GOVERNMENT’S
`
`MOTION................................................................................................................................... 42
`
`O.
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`The Court Cannot Disregard Allegations In the Complaint ........................................... 43
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`VI. CONCLUSION ..................................................................................................................... 45
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`ii
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 4 of 52
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`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) ........ passim
`
`Acceleration Bay, LLC, v. Activision Blizzard, Inc., 2017 U.S. Dist. LEXIS 138623 (D. Del.
`
`August 29, 2017) ................................................................................................................. 15, 29
`
`Affinity Labs of Texas, LLC, v. DIRECTV, LLC, 838 F.3d 1353 (Fed. Cir. 2016) ....................... 19
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) ............................................ 9, 13, 14
`
`Art+Com Innovation Pool GMBH v. Google, Inc., 183 F. Supp. 3d 552 (D. Del. 2016) ...... 15, 37
`
`Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013) ....................... 13
`
`Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743 (Fed. Cir. 2019) .... 44
`
`BASCOM Global Internet Servs., v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) .. 16, 17
`
`Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) ........................................................ passim
`
`Cary v. United States, 552 F.3d 1373 (Fed. Cir. 2009) ................................................................ 12
`
`Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019) ................................................ 45
`
`ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019) ..................................... 27
`
`Clarilogic, Inc. v. FormFree Holdings Corp., 681 Fed. Appx. 950 (Fed. Cir. 2017) .................. 20
`
`Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2019) .................................... 20
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) ...................... 16, 23, 29
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`Elec. Power Group, LLC v. Alston S.A., 830 F.3d 1350 (Fed. Cir. 2016) .................................... 27
`
`Enfish, LLC, v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2017) .............................. passim
`
`Hewlett–Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464 (Fed. Cir. 1990) .......................... 25
`
`Idexx Labs, Inc. v. Charles River Labs, Inc., 2016 U.S. Dist. Lexis 87888 (D. Del. July 1, 2016)
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`................................................................................................................................................... 15
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`
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`iii
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 5 of 52
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`In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) ..................................................................................... 9
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`Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017)
`
`
`
`................................................................................................................................. 19, 20, 36, 40
`
`Intellectual Ventures LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir. 2017) .................... 19, 20
`
`Intervet Am., Inc. v. Kee—Vet Labs., Inc., 887 F.2d 1050 (Fed. Cir. 1989) ................................. 25
`
`JSDQ Mesh Techs. LLC v. Fluidmesh Networks, LLC, 2016 WL 4639140 (D. Del. Sept. 6, 2016)
`
`................................................................................................................................................... 12
`
`Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) ..... 13, 14
`
`Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012) .................................... 8
`
`McRO, Inc., v. Bandai Namco, 837 F.3d 1299, 1316 (Fed. Cir. 2016) ........................................ 16
`
`Messaging Gateway, 2015 WL1744343 (D. Del. 2015) ........................................................ 30, 37
`
`Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988) .............................. 45
`
`OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) ....................................... 20
`
`SAP Am., Inc. v. InvestPic. LLC, 898 F.3d 1161 (Fed. Cir. 2018) ............................................... 20
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`Sciele Pharma, Inc. v. Lupin Ltd., 684 F.3d 1253 (Fed. Cir. 2012).............................................. 45
`
`Sonos, Inc. v. D&M Holdings, Inc., 2017 U.S. Dist LEXIS 35272 (D. Del. March 13, 2017) .... 15
`
`State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir.
`
`1998) ........................................................................................................................................... 8
`
`Univ. of Florida Research v. General Elec. Co., 916 F.3d 1363 (Fed. Cir. 2019) ....................... 27
`
`Wang Labs, Inc. v America Online, Inc., 197 F.3d 1377 (Fed. Cir. 1999) ................................... 19
`
`Statutes
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`35 U.S.C. § 101 ................................................................................................................. 12, 13, 24
`
`Regulations
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`iv
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 6 of 52
`Case 1:19—cv-00859—RTH Document 15 Filed 12/20/19 Page 6 of 52
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`83 Fed. Reg. 51340, 51340 (Oct. 11, 2018) .................................................................................... 6
`83 Fed. Reg. 51340, 51340 (Oct. 11, 2018) .................................................................................... 6
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`v
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 7 of 52
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`I.
`
`INTRODUCTION
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`
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`Plaintiffs e-Numerate Solutions, Inc., and e-Numerate, LLC, (collectively, “e-Numerate”)
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`sued the United States (“the Government”) for infringing seven patents that are directed to
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`fundamental improvements in computer functionality. In particular, the patents-in-suit claim
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`specific and patentable improvements to mark-up languages used to process numerical data on
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`computers. The Government’s motion to dismiss under 35 U.S.C. § 101 and CFC Rule 12(b)(6)
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`never disputes that the claimed inventions allow computers to process numerical data in a
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`manner that was simply not possible using the prior art HTML and XML markup languages.
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`This groundbreaking advance of the patents-in-suit is fatal to the Government’s Motion to
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`Dismiss.
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`
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`The Government’s motion should be denied because the relief it seeks (invalidation of
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`seven duly issued patents) on a preliminary motion is contrary to the substantive law governing
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`35 U.S.C. § 101, as well as the procedural law governing motions to dismiss under Rule
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`12(b)(6). With regard to § 101, the claimed inventions are not “abstract” because they represent
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`a specific implementation to a problem in the software arts. Similarly, the claimed elements of
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`the asserted claims both individually and as an “ordered combination” contain an “inventive
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`concept” required by § 101 because the claims represent a significant advance in computer
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`functionality. Finally, the claimed elements - both individually and as an ordered combination -
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`were not “well understood, routine and conventional” and are inventive for that reason as well.
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`
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`From a procedural standpoint, the Government’s motion is equally defective. It is
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`hornbook law that the well-pleaded allegations of the Complaint must be accepted as true on a
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`motion to dismiss. Here, the allegations in the Complaint compel denial of the Government’s
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`motion and the Court is not free to reject those allegations in deciding this motion. In any event,
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`1
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 8 of 52
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`factual disputes exist as to whether the claimed elements individually and as an ordered
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`combination are “well-understood, routine and conventional.” These disputes compel denial of
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`the Government’s motion.
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`
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`The Government’s arguments in support of its motion are contrary to the controlling
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`Federal Circuit decisions governing § 101 challenges and demonstrate the factual disputes
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`present in the pending motion. The Government asserts that the claims are directed to broad
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`“abstract ideas” but fails to discuss meaningful claim language directed to “tags” and “macros”
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`that it finds legally inconvenient (that is, the Government improperly reads out claim language
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`from the claims in its effort to assert that the claims are abstract). The Government asserts that
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`the claims use only “functional language” and “generic computer terms” even though that is
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`clearly not the case given the very specific claim language used in each patent. The Government
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`also states that everything in the claims is “known” and “commonly used” when, again, that is
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`false. Finally, the Government launches into a “parade of horribles” by claiming that the
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`patents-in-suit “preempt the field” (they do not), that the patents were “called into question in
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`other litigation” (they were not since no ruling on § 101 ever occurred), and that the patents-in-
`
`suit warrant scrutiny based on when they were prosecuted (they do not since they easily pass
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`muster under the current § 101 law). To top it all off, the Government asks the Court to
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`disregard well–pleaded allegations contained in the Complaint and to ignore the factual disputes
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`between the parties (or even to decide them in the Government’s favor on a motion to dismiss).
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`That is improper.
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`
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`In short, the Government argues as if the Federal Circuit did not decide the Enfish,
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`BASCOM, DDR Holdings, Berkheimer and Aatrix decisions and their progeny discussed herein.
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`However, those cases control this motion. Whether the Court decides the claimed inventions are
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`2
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 9 of 52
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`not abstract (Enfish); that the claims contain an inventive concept (BASCOM, DDR Holdings);
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`and/or that factual disputes exists regarding whether the claim elements individual and/or as an
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`“ordered combination” were “well-understood, routine, or conventional” (Berkheimer, Aatrix),
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`the end result is the same: the Government’s motion must be denied.
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`II.
`
`QUESTIONS PRESENTED
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`e-Numerate respectfully submits that there are four questions presented by the Government’s
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`motion.
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`1. Whether the claims of the asserted patent are directed to an “abstract idea” when the
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`claimed inventions permit computers to process numerical data in a manner not possible
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`using prior art mark-up languages.
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`2. Whether the claim elements in the asserted patent claims, individually or as an ordered
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`combination, contain an “inventive concept” when the claims represent a significant
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`advance in computer functionality by enabling computers to process numerical data in a
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`manner not possible using prior-art mark-up languages.
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`3. Whether a factual dispute exists about whether the claim elements individually or as an
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`ordered combination were “well-understood, routine and conventional.”
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`4. Whether the Court is free to reject well-pleaded allegations in the Complaint or decide
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`factual disputes in the Government’s favor on a motion to dismiss.
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`III.
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`STATEMENT OF THE CASE
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`A. Procedural Posture
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`e-Numerate filed the pending Complaint in this matter alleging that the Government
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`infringed claims from seven United States patents: U.S. Patent No. 7,650,355 (“the ‘355
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`patent”); U.S. Patent No. 8,185,816 (“the ‘816 patent”); U.S. Patent No. 9,262,383 (“the ‘383
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`3
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 10 of 52
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`patent”); U.S. Patent No. 9,262,384 (“the ‘384 patent”); U.S. Patent No. 9,268,748 (“the ‘748
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`patent”); U.S. Patent No. 9,600,842 (“the ‘842 patent”); and U.S. Patent No. 10,223,337 (“the
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`‘337 patent”. See generally ECF 1 (Complaint). On August 5, 2019, the Court enlarged the time
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`to respond to the Complaint to October 11, 2019. On that date the Government filed the instant
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`motion. ECF 8.
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`B. Related Proceedings
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`1. The District of Delaware Action
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`e-Numerate originally filed suit on four of the seven patents asserted here against
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`Mattress Firm Holding Corp. (“Mattress Firm”) on July 11, 2017 in the United States District
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`Court for the District of Delaware (“the Delaware Action”). In response to the Complaint,
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`Mattress Firm filed a Motion To Dismiss the Complaint under 35 U.S.C. § 101 and FRCP Rule
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`12(b)(6). e-Numerate amended its Complaint and added Merrill Communications LLC and
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`Merrill Corporation (collectively “Merrill”) as parties. Mattress Firm renewed its motion to
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`dismiss under 35 U.S.C. § 101 on September 20, 2017, and Merrill joined in the motion on
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`September 26, 2017.
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`On November 9, 2017, the Court in the Delaware Action held oral argument on Mattress
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`Firm’s motion. At the time of the oral argument, the Federal Circuit had not decided its
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`landmark §101 decisions in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
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`(“Berkheimer”), and Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed.
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`Cir. 2018)(“Aatrix”).1
`
`
`1 The Government clumsily truncates a quote (which was obviously meant in jest) from the oral
`argument on e-Numerate about an exceptionally lengthy claim (claim 19) in U.S. Patent
`9,268,748 (“the ‘748 patent”) to imply that the Court was skeptical of e-Numerate’s case and that
`e-Numerate’s patentability arguments are “dubious.” See A57- 59. Neither is true as evidenced
`by the Delaware Court not ruling on Mattress Firm’s motion and the Government intervening to
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`4
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 11 of 52
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`Subsequent to the oral argument, e-Numerate submitted a declaration from Jeffrey A.
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`Bloom to explain the technological advances embodied in the patents-in-suit, their advantages
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`over the prior art, and to address specific questions asked by the Court at oral argument. The
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`Federal Circuit then issued its decision in Berkheimer on February 8, 2018, and its decision in
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`Aatrix on February 14, 2018. These decisions changed the law regarding § 101 motions by
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`recognizing that factual disputes regarding whether the claims contain an inventive concept may
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`preclude grants of summary judgment (Berkheimer) and motions to dismiss under Rule 12(b)(6).
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`(Aatrix).
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`On July 6, 2018, the Delaware Court granted e-Numerate leave to amend its Complaint in
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`the Delaware Action. e-Numerate filed its Second Amended Complaint on July 20, 2018, and
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`greatly expanded the factual allegations about the inventiveness of the patents-in-suit from e-
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`Numerate’s original Complaint. Mattress Firm and Merrill renewed their motions to dismiss on
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`August 21, 2018. The Court took no action on Mattress Firm’s and Merrill’s renewed Motion.
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`On October 19, 2018, the Government filed its Statement of Interest asserting that all XBRL-
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`compliant SEC filings were done with the Government’s “authorization and consent” and that
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`the action should be dismissed and brought in the Court of Federal Claims. The Delaware
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`Action was dismissed without prejudice on November 19, 2018.
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`2. The IPR Proceedings
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`Merrill filed petitions for inter partes review (“IPR”) against certain independent claims
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`of the four patents-in-suit in the Delaware action. No IPR was filed against any claim presently
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`asserted in this action. The Patent Trial and Appeal Board (“PTAB”) instituted the IPRs against
`
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`bring the action to this Court. As an aside, it is hard to understand how anybody could argue that
`a claim as lengthy and specific as claim 19 of the ‘748 patent could be considered directed to an
`“abstract idea.”
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`5
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 12 of 52
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`the specified claims on February 13, 2019. However, the PTAB used a standard in granting the
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`IPRs that has subsequently been rejected. See 83 Fed. Reg. 51340, 51340 (Oct. 11, 2018). e-
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`Numerate filed its response on May 6, 2019. The PTAB terminated the IPRs with prejudice on
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`July 25, 2019 after Merrill withdrew from its participation. No substantive ruling on the
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`patentability of the claims was ever made in the IPRs. e-Numerate intends to amend its
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`Complaint to assert the claims involved in the IPRs against the Government now that the IPRs
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`have been dismissed with prejudice.
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`C. Technical Background Of The Patents-In-Suit
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`The following recitation of facts is taken from the Complaint, including the claims of the
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`seven asserted patents and their respective specifications. These must be accepted as true for
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`purposes of the pending motion.
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`i.
`
`The Asserted Technology
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`The seven asserted patents are directed to different inventions that generally relate to the
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`“Reusable Data Markup Language” (RDML) created by Russell Davis, a Harvard-educated
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`technologist. ECF 1 at pars. 13 - 27. At the time of his inventions, the prior art contained two
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`markup languages that had severe limitations in their ability to process numerical data: HTML
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`and XML. Id. at 15. In general, a “mark-up language” is a system solely used in computer
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`applications for inserting information about the formatting and display of a group of text
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`characters by placing non-displayed “markup” text before and after the group of text characters.
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`These markups are commonly referred to as “tags.” Id. at 15 – 17.
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`In HTML, numbers are viewed only as “text”, i.e., the numbers are read and displayed
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`only as text characters. As a result, computers running web browsers could use HTML tags to
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`6
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 13 of 52
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`display documents containing numbers, but those tags did not enable the computer to run
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`applications that could mathematically process the numbers. Id.
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`In the mid- to late 1990s, XML was invented. Unlike HTML, XML did not include a set
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`of predefined “tags,” but rather was a specification that governed the creation of tags by
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`particular user groups. However, tags created by one user were not compatible with tags created
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`by other users. Id. Because of XML’s lack of standardization and because of its separation of
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`data from its annotations (metadata), XML also did not permit users to mathematically process
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`numbers from various online sources. Id. That is, a computer could not mathematically process
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`numbers contained in different XML documents based on their tags because, inter alia, the tags
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`were not compatible.
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`In contrast to XML and HTML, RDML represented a significant technological advance
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`that allowed users for the first time to view, compare, and analyze numerical data on the internet.
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`Id. at 13 - 27. RDML accomplished this in a variety of ways. Of relevance here, RDML used
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`innovative tags that paired the metadata directly with the numerical data in machine-readable
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`form so that the numerical data could be easily identified and used in different computer
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`programs. Id. This was a new and different approach than was used by the prior art tags. Id.
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`Using these novel tags, RDML—unlike XML and HTML—permitted the processing of numbers
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`contained in different documents. Id. The patents-in-suit cover this innovative use of tags. See,
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`e.g., ‘816 patent, claim 1 and ‘383 patent, claim 1.
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`As claimed in the ‘355 patent, one of the most important applications of this ability to
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`process numbers is in the use of automated routines called “macros.” Id. at 20. RDML
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`standardizes the recording of steps in a macro that includes the identification of the specific data
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`items that these steps apply to. In addition, RDML stores this information in a second document
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`7
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 14 of 52
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`(i.e., an external file) that is accessible on the internet so that it can be used by any process
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`related to the specific data elements involved. See, e.g., ‘355 patent, claim 1. As a result (and
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`contrary to the Government’s assertions), the macros described and claimed in the patents-in-suit
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`are neither “conventional” nor “well-understood.”
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`ii
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`The Claimed Inventions Could Not Be Performed By Hand
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`Throughout its brief, the Government argues that the claimed inventions could be
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`performed by hand and/or simply involve age old common business practices. That is wrong.
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`ECF 1 at pars. 21 - 27. The claimed inventions are entirely and necessarily computer based.
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`Prior art before the filing of the patents-in-suit would not and could not encode the metadata
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`necessary for a human or automated process to unambiguously identify the attributes and
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`characteristics of similarly named numerical data elements so that these differing data elements
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`could be combined to yield an identified result. Id. Moreover, the entire point of the inventions
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`of the patents-in-suit is to avoid doing raw numerical processing by hand. Put another way, there
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`was simply no need to use the patented markup language, tags, and macros to intelligently
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`process numbers located in different and otherwise incompatible documents on the Internet
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`before the Internet existed. Thus, the patents do not simply claim automation of methods that had
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`been previously performed by hand before computers existed.
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`D. The Abrogation Of The State Street Bank Standard Is Not Relevant
`
`The Government makes much of the fact that the Supreme Court abrogated the patent
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`eligibility standard in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d
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`1368 (Fed. Cir. 1998). The Government implies that all of the patents-in-suit are invalid because
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`they (or parent applications of them) were prosecuted prior to the Supreme Court’s decision in
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`Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 71 (2012) (“Mayo”), and
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`
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`8
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 15 of 52
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (“Alice”). See Br. at 3 – 4, 9,
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`and 34 – 35. The Government is wrong. Of the asserted patents, the ‘355 patent was prosecuted
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`at least in part after In re Bilski, 545 F.3d 943, 1004 (Fed. Cir. 2008) , but before Alice and Mayo
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`were decided. The ‘816 patent issued after Mayo was decided, but before Alice was decided.
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`However, the five other asserted patents (the ‘383, the ‘384, the ‘748, the ‘842, and the ‘337)
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`were all prosecuted and allowed by the USPTO after Alice and Mayo were issued. Thus, there is
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`a strong presumption under 35 U.S.C. § 282 that the Examiner followed these decisions in
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`allowing these patents. The Government’s misleading assertion to the contrary that the patents-
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`in-suit warrant “scrutiny” is legally and factually wrong.2
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`E. The Prosecution History of the ’355 Patent
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`The application that issued as the ‘355 patent was originally rejected under 35 U.S.C. §
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`101. However, multiple amendments were made to the claims to overcome both the § 101
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`rejection and prior art rejections. Contrary to the Government’s arguments, the claim did not
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`issue simply because e-Numerate added a limitation requiring “display” of the data or specify
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`that the invention was “computer implemented.” Instead, there were multiple substantive
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`2 The Government’s bullet points on page 9 of its Brief cites the application that issued as the
`‘355 and two abandoned applications that had tangential 101 rejections in them. That is, the
`Examiner required that e-Numerate add the phrase “non-transitory” to “computer-readable
`medium” to overcome the § 101 rejection. The abandoned applications have no relevance
`whatsoever to the pending dispute.
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 16 of 52
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`limitations inserted into each independent claim far beyond a requirement to “display” data or
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`use it on a computer.
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`Thus, as originally filed, claim 1 of the ‘355 patent provided:
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`A method of processing tagged numerical data, comprising:
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`Receiving a series of numerical values having tags indicating characteristics of the numerical
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`values;
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`Receiving a macro defined to perform an operation on the series of numerical values; and
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`Performing an operation defined by the macro on the series of numerical values based on the
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`tags.
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`In contrast, claim 1 of the ‘355 patent as issued was extensively amended as shown in the
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`below chart where terms added by amendment are illustrated in bold.
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 17 of 52
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`A computer-implemented method of processing tagged numerical data, the method
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`comprising:
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`receiving a series of numerical values having tags indicating characteristics of the numerical
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`values;
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`generating at least one first title corresponding to the series of numerical values;
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`receiving a macro defined to perform an operation on the series of numerical values;
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`performing an operation defined by the macro on the series of numerical values to transform
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`the series of numerical values into a new representation of the series of numerical values
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`based on the tags;
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`generating at least one second title corresponding to results of the operation;
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`and displaying the results of the operation and the at least one second title, wherein:
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`the macro makes a copy of the series of numerical values before the operation is
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`performed, the macro comprises at least one arithmetic statement, the at least one
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`arithmetic statement comprises a variable, the variable is referenced in a local or remote
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`document other than a document that contains the macro, and the step of receiving the
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`macro comprises receiving the macro including interpreted code, meta-data, and error
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`handling instructions.
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` A
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` simple comparison between the claims in the two charts shows how extensively the
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`‘355 patent claims were amended. The issued claims of the ‘355 patent pass must under both
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`Alice and Mayo for the reasons set forth infra.
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`F. STANDARDS GOVERNING A MOTION TO DISMISS
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 18 of 52
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`In deciding a motion under CFC Rule 12(b)(6), all well-pleaded allegations (including
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`facts) must be accepted as true and all reasonable inferences must be drawn in favor of e-
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`Numerate. See Cary v. United States, 552 F.3d 1373, 1376 (Fed. Cir. 2009) . Thus, courts have
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`imposed a heavy burden on a defendant bringing a motion to dismiss under 35 U.S.C. § 101. “At
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`the motion to dismiss stage a patent claim can be found directed towards patent-ineligible subject
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`matter if the only plausible reading of the patent must be that there is clear and convincing
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`evidence of ineligibility.” JSDQ Mesh Techs. LLC v. Fluidmesh Networks, LLC, 2016 WL
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`4639140, at *1 (D. Del. Sept. 6, 2016) (emphasis in original).
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`The Federal Circuit and district courts have also made clear that, although § 101 presents
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`a question of law, underlying factual issues may arise. Berkheimer, 881 F.3d at 1365 (“The
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`patent eligibility issue may contain underlying issues of fact”); Aatrix Software, Inc., v. Green
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`Shades Software, Inc., 890 F.3d 1121, 1128 (Fed. Cir. 2018) (“While the ultimate determination
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`of eligibility under § 101 is a question of law, like many legal questions, there can be subsidiary
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`fact questions which must be resolved en route to the ultimate legal determination”); JSDQ Mesh
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`Techs, LLC at *8. In addition, claim construction issues may arise that make a motion to dismiss
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`a wholly inappropriate vehicle for resolving a challenge under § 101. Aatrix Software, 890 F.3d
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`at 1125. The requirement that a court determine whether there is any set of facts that could be
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`proven that would result in the challenged claims being patent-eligible also weighs heavily
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`against granting a motion to dismiss. JSDQ Mesh Techs, LLC at *8.
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`The Government’s own statement of the law on motions to dismiss undercuts its own
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`motion.3 The Government concedes that a motion to dismiss can be granted only when
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`3 The cases cited by the Government on page 5 are distinguishable because they were either: (1)
`decided pre-Aatrix or (2) involved situations where the facts were not disputed. As a result,
`these cases are inapposite.
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`Case 1:19-cv-00859-RTH Document 15 Filed 12/20/19 Page 19 of 52
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`“procedurally appropriate” and when the “undisputed facts require a holding of ineligibility”.
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`Br. at 5 (emphasis supplied). Here, the Government’s motion cannot be granted. It is
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`procedurally inappropriate because it requires disregarding the well-pleaded allegations of the
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`Complaint. It