Case 1:13-cv-00920-LPS Document 152 Filed 08/23/19 Page 1 of 4 PageID #: 6054
`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`
`JACK B. BLUMENFELD
`(302) 351-9291
`jblumenfeld@mnat.com
`
`
`The Honorable Leonard P. Stark
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, Delaware 19801
`
`August 23, 2019
`
`
`Re: Arendi S.A.R.L. v. LG Elecs., Inc., et al., C.A. No. 12-1595-LPS
`
`Arendi S.A.R.L. v. Apple Inc., C.A. No. 12-1596-LPS
`
`Arendi S.A.R.L. v. Microsoft Mobile, Inc., C.A. No. 12-1599-LPS
`
`Arendi S.A.R.L. v. Motorola Mobility LLC, et al., C.A. No. 12-1601-LPS
`
`Arendi S.A.R.L. v. Sony Mobile Commc’ns (USA) Inc., et. al., C.A. No. 12-1602-LPS
`
`Arendi S.A.R.L. v. Google LLC, C.A. No. 13-919-LPS
`Arendi S.A.R.L. v. Oath Holdings Inc., et al., C.A. No. 13-920-LPS
`
`Dear Chief Judge Stark:
`
`Pursuant to the Court’s August 19, 2019 Order (e.g., D.I. 132 in C.A. No. 12-1595),
`Defendants1 in the above entitled actions submit this letter brief to “address[] the impact, if any
`of the Court’s claim construction decisions on the pending 101 motions” and “which claim(s)
`is/are representative[] and (2) [the] claims for which the Court must determine eligibility.”
`The Impact, If Any, Of the Court’s Claim Construction Decisions on the Pending 101
`Motions
`As established in Defendants’ Opening Brief (e.g., D.I. 115 in C.A. No. 12-1595), the
`then pending proposed claim constructions have no impact on whether the patents should be
`found patent-ineligible. (See Opening Brief at 15-16). Arendi did not dispute this, or even
`mention any of the parties’ proposed constructions, in its Opposition Brief (e.g., D.I. 128 in
`C.A. No. 12-1595). Defendants maintain that the Court’s constructions do not alter the
`conclusion that all asserted claims of each asserted patent are drawn to patent-ineligible subject
`matter. In fact, several of the Court’s constructions and the Court’s analysis of the asserted
`patents further bolster the conclusion that the asserted claims should be found patent-ineligible.
`First, the Court’s findings that all of the disputed means-plus-function limitations lack
`any disclosure of an algorithm in the specification2 further confirms that the asserted claims are
`
`1 The Blackberry defendants (C.A. No. 12-1597) did not join the Motion and therefore do not
`join this letter brief.
`2 As noted by the Court, each of the asserted patents are either related or share a similar
`specification. (Claim Construction Opinion at 6 n.4). The ’843, ’854 and ’356 patents are
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`Case 1:13-cv-00920-LPS Document 152 Filed 08/23/19 Page 2 of 4 PageID #: 6055
`The Honorable Leonard P. Stark
`August 23, 2019
`Page 2
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`not patent eligible. (Claim Construction Opinion at 23-34.) As established in Defendants’
`Opening Brief, the asserted claims are directed to abstract ideas and fail to claim an inventive
`concept because they recite only result-based, functional aspirations and completed actions, that
`are devoid of details about “how to engineer or program” the underlying, generic computer
`components to accomplish the desired tasks. (Opening Brief at 12). As one example,
`Defendants noted that the claims did not disclose and the specification did not describe “how the
`document text is analyzed to identify particular information (or information types).” (Id.) In the
`Claim Construction Opinion, the Court agreed that the “specification fails to disclose any actual
`algorithm . . . that could be followed to determine which text, of all of the text in a document, is
`a name or address. (Claim Construction Opinion at 24-25) (emphasis in original). The Court
`similarly found that the specification did not disclose any algorithm describing how any
`information is “marked” or “identified” in the document (id.), how any information is “inserted”
`into the document (id. at 26-30) or how any operations (or actions) are performed following
`identification of the “second information.” (id. at 31-32).
`Second, the Court’s findings that several of the disputed claim limitations cover broad,
`generic, conventional computing functionality, further support the conclusion that the asserted
`patents are patent ineligible. For example, the Court found that the claimed “document” is “a
`word processing, spreadsheet or similar file into which text can be entered.” (Claim
`Construction Opinion at 5). In its analysis, the Court repeatedly noted that the patents describe,
`but are not limited to, conventional word processing and spreadsheet files and conventional word
`processor and spreadsheet programs. (Claim Construction Opinion at 5-6). Similarly, the
`Court’s constructions of the “user command” and “single execute command” limitations suggest
`that the asserted claims may be implemented by virtually any type of input device with a series
`of user inputs (Claim Construction Opinion at 18-19), belying Arendi’s argument in the
`opposition brief that the asserted claims are similar to the “improved user interface” “directed to
`a particular manner of summarizing and presenting information in electronic devices” that was
`found to be patent-eligible in Core Wireless. (Opposition Brief at 6-7, 10-11) (citing Core
`Wireless Licensing SARL v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018)).
`Which Claims Are Representative and Which Claims The Court Must Determine
`Eligibility
`Defendants’ Opening Brief proposed that the following claims were representative: claim
`1 of the ’843 patent (Opening Brief at 6), claim 13 of the ’854 patent (id. at 7), claim 2 of the
`’356 patent (id. at 8-9) and claim 1 of the ’993 patent (id. at 11). Defendants’ Opening Brief also
`addressed why the claims are representative and why the other asserted claims are “substantially
`similar and linked to the same abstract idea.” (Opening Brief at 6, 7, 9 and 11) (quoting Content
`Extraction & Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348 (Fed. Cir. 2014)).
`Arendi did not dispute that the identified claims were representative.
`
`As noted, however, the Court’s Claim Construction Opinion found all challenged means-
`plus-function elements of the ’854 patent to be indefinite, rendering all ‘854 claims incorporating
`
`
`continuations of the same patent application and share the same patent specification. The ’993
`patent has a similar specification.
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`

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`Case 1:13-cv-00920-LPS Document 152 Filed 08/23/19 Page 3 of 4 PageID #: 6056
`The Honorable Leonard P. Stark
`August 23, 2019
`Page 3
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`such elements invalid. Thus, the only remaining claim of the ‘854 patent asserted by Arendi
`(against Google) is Claim 93, which therefore may also be considered the “representative” ’854
`claim. This claim is directed to the abstract idea of entering information (such as a name or
`address) into a document, using that name to find related information (like an address) in another
`source (like an address book), and then inserting the found information into the document.
`A letter written by Jane Jones is instructive:
`
`Claim 93 of the ’854 Patent
`93. A method for assisting a computer operator
`to retrieve information from a database that is
`related to text in a document, the method
`comprising the steps of:
`Using the first computer program to analyze the
`document, without direction from the operator,
`to identify text in the document that can be used
`to search for related information;
`
`Example of Abstract Idea
`Jane Jones begins to write a letter to her friend
`Wanda Williams. Jane wants to include current
`address information for Wanda in the header of
`the letter.
`Jane hands the draft letter to her assistant, Sam
`Smith. Sam reads the draft letter, sees that the
`letter is directed to “Ms. Wanda Williams,” and
`determines that there is a blank space for
`Wanda’s address. Sam recognizes that he can
`use the text “Wanda Williams” to search for
`Wanda’s address information in Jane’s address
`book.
`Sam uses the text from the draft letter, “Wanda
`Williams,” to search in Jane’s address book and
`finds Wanda’s current address.
`address
`Sam
`inserts Wanda’s
`located
`information into the blank space in the draft
`letter.
`
`Using a second computer program and the text
`identified in step (1) to search the database and
`to locate related information, and
`Inserting the information located in step (2) into
`the document.
`
`
`The Court’s claim construction rulings make clear that this claim recites only the basic idea of
`using generic and conventional computer elements (e.g., generic and unspecified “computer
`programs”), rather than a human armed with paper, pen and an address book, to identify
`information (like a name) written into a document to find related information (like an address) in
`a separate source that can then be inserted into the document. As the Court found in holding all
`other asserted claims of the ’854 patent indefinite, the patent specification provides no specific
`instruction or algorithm as to how the abstract method should be implemented on a conventional
`computer. Like the other claims at issue, ’854 claim 93, as construed, simply does not reference
`or require a concrete and unconventional approach to implementing the basic idea of identifying
`information in a document, searching for related information in a separate source, and using the
`found information in some way. See Content Extraction, 776 F.3d at 1348.
`
`Respectfully,
`
`/s/ Jack B. Blumenfeld
`
`Jack B. Blumenfeld (#1014)
`
`JBB/bac
`
`
`
`

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`Case 1:13-cv-00920-LPS Document 152 Filed 08/23/19 Page 4 of 4 PageID #: 6057
`The Honorable Leonard P. Stark
`August 23, 2019
`Page 4
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`cc:
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`Clerk of the Court (via hand delivery)
`All Counsel of Record (via electronic mail)
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