Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 1 of 11 PageID #: 6361
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICTOF DELAWARE
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`LG ELECTRONICS., INC.,
`LG ELECTRONICS USA, INC., and
`LG ELECONTRONICS MOBILECOMM U.S.A.,
`INC.
`
`C.A. No. 12-1595-LPS
`
`Defendants.
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`APPLE INC.
`
`Defendant.
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`MICROSOFT MOBILE INC .
`
`Defendant.
`
`C.A. No. 12-1596-LPS
`
`C.A. No. 12-1599-LPS
`
`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 2 of 11 PageID #: 6362
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.
`
`Defendant.
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`SONY MOBILE COMMUNICATIONS (USA)
`INC. f/k/a SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC.,
`SONY CORPORATION, and
`SONY CORPORATION OF AMERICA
`
`Defendants.
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`GOOGLE, LLC
`
`Defendant.
`
`C.A. No. 12-1601-LPS
`
`C.A. No. 12-1602-LPS
`
`C.A. No. 13-919-LPS
`
`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 3 of 11 PageID #: 6363
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`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`OATH HOLDINGS INC. and
`OATH INC.
`
`Defendants.
`
`SMART LOCKING TECHNOLOGIES, LLC
`
`Plaintiff,
`
`V.
`
`IGLOOHOME INC.
`
`Defendant.
`
`SMART LOCKING TECHNOLOGIES, LLC,
`
`Plaintiff,
`
`V.
`
`LOCKSTATE, INC.
`
`Defendant.
`
`C.A. No. 13-920-LPS
`
`C.A. No. 19-992-LPS
`
`C.A. No. 19-993-LPS
`
`MEMORANDUM ORDER
`
`At Wilmington this 2nd day of January 2020:
`
`WHEREAS, defendants in the above-listed cases have filed Rule 12 motions to dispose
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`of patent infringement claims on the bases that certain patent claims are invalid under 35 U.S.C.
`
`§ 101 , because they are allegedly directed to unpatentable subject matter;
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`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 4 of 11 PageID #: 6364
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`WHEREAS, the above-listed cases brought by Arendi S.A.R.L. ("Arendi") are unrelated
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`to the above-listed cases brought by Smart Locking Technologies, LLC ("Smart Locking");
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`WHEREAS, the Court heard oral argument in all the above-listed cases on December 20,
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`2019 and has considered the parties' respective briefs and related filings;
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`WHEREAS, the Court continues to find that its experimental procedure of addressing
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`multiple Section 101 motions from separate and unrelated cases in one hearing is an efficient use
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`of judicial resources and a beneficial tool for resolving the merits of Section 101 motions;
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`NOW, THEREFORE, IT IS HEREBY ORDERED that, with respect to the above(cid:173)
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`listed Smart Locking cases, Defendants' Rule 12(b)(6) motions to dismiss (C.A. No. 19-992 D.I.
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`9, 16; C.A. No. 19-993 D.I. 8, 15) are DENIED.
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`NOW, THEREFORE, IT IS HEREBY FURTHER ORDERED that, with respect to
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`the above-listed Arendi cases, Defendants' Rule 12(c) motions for judgment on the pleadings
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`(C.A. No. 12-1595 D.I. 115; C.A. No. 12-1596 D.I 122; C.A. No. 12-1599 D.I. 123; C.A. No.
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`12-1601 D.I. 123; C.A. No. 12-1602 D.I. 115; C.A. No. 13-919 D.I. 122; C.A. No. 13-920 D.I.
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`126) are GRANTED IN PART and DENIED IN PART, as follows:
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`1.
`
`The motions are DENIED with respect to representative claim 1 of U.S.
`
`Patent No. 7,917,843.
`
`2.
`
`The motions are GRANTED with respect to representative claim 93 of
`
`U.S. Patent No. 7,496,854, representative claim 2 of U.S. Patent No. 7,921,356, and
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`representative claim 1 of U.S. Patent No. 8,306,993.
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`3.
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`The motions are TAKEN UNDER ADVISEMENT with respect to
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`asserted, arguably non-representative, dependent claims of the ' 854, '3 56, and '993 patents; the
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`parties shall continue to comply with the process for supplemental briefing previously set out
`
`2
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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 5 of 11 PageID #: 6365
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`(see, e.g., C.A. No. 12-1595 D.I.177).
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`The Court' s Order is consistent with the following bench ruling announced at that the
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`conclusion of the December 20 hearing (see Tr. at 106-18):
`
`I'm going to talk about the motions in the order that they
`were argued earlier today. First, [are] the Smart Locking cases.
`The issue in front of me is Defendants' renewed [Rule] 12(b)(6)
`motion to dismiss for failure to state a claim. Defendants' motion
`is denied. Let me try to explain why.
`
`The motion contends that two asserted patents, [U.S. Patent
`Nos.] 6,300,873 and 6,696,918, are invalid under Section 101 due
`to lack of patentable subject matter. The legal standards that I'm
`applying ... are set out [in the following cases.] .. . [As to] the
`Rule 12(b)(6) standard I hereby incorporate and adopt by reference
`the articulation of that standard in the DiStefano Patent Trust [III]
`v. Linkedln decision, ... which was a decision of mine in 2018,
`affirmed by the Federal Circuit ... . [tJ I also adopt the Section
`101 standards articulated by the Federal Circuit in Berkheimer v.
`HP, Inc . .. _[2l
`
`The parties agree in the Smart Locking cases that one
`claim, claim 36 of the ' 873 patent, is representative and that the
`Court need assess the patentability of only this one claim. The
`parties agree that no claim construction disputes need to be
`resolved before addressing the motion.
`
`The Court concludes that Defendants have failed to make
`the necessary showing at both Steps 1 and 2 of the Alice test. [3l
`
`Starting with Step 1. The claims are directed to a device, a
`mechanism[,] which in the Court' s view is not abstract. Although
`Defendants have identified an abstract idea, specifically "providing
`temporary access to a location," I'm not persuaded that the claim is
`directed to this abstract idea. . . . The character as a whole of claim
`
`1 DiStefano Patent Trust !IL LLC v. Linkedln Corp., 346 F. Supp. 3d 616 (D. Del. 2018),
`aff'd, 784 F. App'x 785 (Fed. Cir. 2019) (Rule 36).
`
`2 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), en bane reh 'g denied, 890 F.3d
`1369 (Fed. Cir. 2018), petitionfor cert. filed.
`
`3 Alice Corp. Pty. Ltd v. CLS Bank Int '!, 573 U.S. 208 (2014); see also Mayo
`Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).
`
`3
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`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 6 of 11 PageID #: 6366
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`36, the representative claim, is a physical device with two specific
`tangible components: an actuator and an access code entry unit.
`The access code entry unit further must be configured to accept a
`one-time use access code as described in columns 7 and 8 of the
`specification. Further, figures 1 and 2 of the patent illustrate
`embodiments of the access code entry unit[,] which further
`supports the Court' s conclusion that the character of the
`representative claim as a whole is directed to something concrete
`and tangible and not abstract. . . .
`
`Defendants cite the ChargePointf4l decision for the concept
`that just because something is a physical product, [that] does not
`mean that Defendant fails at Step 1 of the Alice test to identify an
`abstract idea to which the claims are directed. And, I agree that
`that is generally true[. B]ut here, there is sufficient specificity to
`limit the claimed access code entry unit to those embodiments that
`are configured to accept a one-time use access code. So for those
`reasons, the motion fails at Step 1.
`
`At Step 2, the inventive concept is the one-time use access
`code; that is, an access code that can be used once and no more
`than once[;] as well as an access code entry unit configured to give
`that access. This inventive concept is clearly captured in the
`claims. You can't practice the claims without the one-time use
`access code and the access code entry unit configured to accept
`such a code.
`
`Further, the [amended] complaint contains well-pleaded
`factual allegations that plausibly allege in a non-conclusory fashion
`that the claimed invention was not routine, conventional, or well
`understood at the priority date. For example, the amended
`complaint ... adequately and plausibly alleges the one-time use
`access code was not wholly conventional, routine, and well
`understood. . . . [For] instance in paragraphs 14 and . . . 1 7.
`
`Also helpful to the plaintiff in succeeding at Step 2 is that
`the specification expressly describes a problem in the prior art and
`explains how the invention is solving it. Cases such as Cellspin, [SJ
`cited by Plaintiff, provide that this is helpful information for a
`
`4 Charge Point v. Serna Connect, 920 F.3d 759 (Fed. Cir. 2019), petition for cert. filed.
`
`5 Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019), petitionfor cert. filed
`sub nom., Garmin USA, Inc. v. Cellspin Soft, Inc.
`
`4
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`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 7 of 11 PageID #: 6367
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`patentee to allege and to have a specification that supports such
`allegations.
`
`Defendants argue that the claims are not about an
`improvement to the device but about an improv[ement] to the
`performance of the locking mechanism device. I'm not sure how
`much ... sense that distinction makes in this case or if it is even a
`meaningful distinction. In this case, the lock performs in such a
`way that the specification clearly explains the prior art device
`could not - I think what that means [is] . . . that the function of the
`lock is improved[.] [B]ut more importantly, the argument has not
`provided for me a persuasive basis to grant Defendants' motion.
`
`Finally, I do not see a preemption problem. Given that
`Defendants have failed at Step 1 and Step 2, it can't be that there is
`some independent problem of preemption that makes the patents
`ineligible, nonetheless; but in any event, the claims seem to me to
`be pretty narrow and the plaintiff argues that they' re pretty narrow.
`And, I think we saw evidence of that from the fact that the
`embodiment that Defendants started with, the hotel safe, is one that
`I think by their own admission actually isn't even within the scope
`of the claims because it' s not limited to a one-time use only access
`code .. . .
`
`So for all those reasons, the motion is denied.
`
`Let me turn now to the Arendi cases.
`
`The multiple defendants in these several cases [listed
`above] have all moved for judgment on the pleadings pursuant to
`Federal Rule of Civil Procedure 12(c). I hereby adopt and
`incorporate by reference the Rule 12(c) standard as articulated in
`the Intellectual Ventures I LLC v. AT&T Mobility, LLC case ...
`here in this court in 2016, affirmed by the Federal Circuit in 2019 .
`• • • [6l And I adopt, again, and incorporate by reference the
`[Section] 101 standard explained just [a] moment ago in
`connection with the Smart Locking cases.
`
`The motions in the Arendi cases present a more difficult
`issue than the one in the Smart Locking case. This is first, but not
`principally, because in the Arendi cases, there are four patents, and
`I have to think about four representative claims as opposed to one
`representative claim. Happily for me, the parties are in agreement
`
`6 Intellectual Ventures I LLC v. AT&T Mobility LLC, 235 F. Supp. 3d 577 (D. Del. 2016),
`aff'd, 748 F. App'x 330 (Fed. Cir. 2019) (Rule 36).
`
`5
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`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 8 of 11 PageID #: 6368
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`as to which claims are the representative claims. And for purposes
`of the record, I'll just read them in: the 7,917,403 patent, claim 1;
`the 8,306,993 patent, claim 1; the 7,496,854 patent, claim 93 ; and
`the 7,921 ,356 patent, claim 2. The parties further agree no claim
`construction is required before deciding the motion as the Court
`has already issued its claim construction opinion.
`
`The hard part for me on these motions is trying to figure
`out what type of patents these are. Are the representative claims of
`these patents directed to a computer-only context providing an
`alleged improvement in computer functionality? Or, instead, are
`these patent claims directed to automation of activity that has long
`been performed in the non-computerized physical world? That is,
`are they [merely] the conventional use of conventional computer
`components to do something more quickly or more efficiently,
`perhaps, but to do something that humans have long done before
`computers?
`
`I'm having trouble deciding which of those two categories
`of patents these patents fall into [because] actually the patents fall
`somewhere in between these two categories. That is, I think the
`most reasonable view of these patents is that they are directed to
`solving a problem in a computerized context and, thereby,
`improving computer functionality, but [the] problem that they are
`addressed to [is one] that has long arisen in a non-computerized
`context. And by the way, the patents don't purport to solve the
`problem in the non-computerized context.
`
`I also think that where in between those two categories
`these two patents fall is different among the four patents, which I
`will try to explain. The problem that I think the patents are
`directed to is how to get information from the second source when
`you are working in a first document. Clearly, this problem does
`arise in a computer context. As the specification explains, a user
`could be writing a letter in [a] word processing program and need
`the address of the recipient and need to retrieve that address from
`another program, such as a database. The patents disclose
`automating that retrieval and other automated interactions with the
`second program.
`
`But equally clearly, such problems do also arise in the
`physical world, as I think was demonstrated today by counsel
`pretending to write a letter to Santa Claus and needing to get the
`address from her partner who [was] looking it up in a Rolodex
`while she continued to write her letter.
`
`I'm not sure that the law is entirely clear as to how to apply
`
`6
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`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 9 of 11 PageID #: 6369
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`the Alice test to a patent that is directed to improving computer
`functionality where the problem purportedly solved is a problem
`that also exists in the physical world.
`
`Noting all of those complications and the difficulty I have
`found, I need to make a decision. . . . [S]o I will turn to the two
`steps of the Alice test.
`
`At Step 1, Defendants have identified an abstract idea;
`specifically, "identifying information in a document, searching for
`related information in a separate source, and using [the] found
`information in some way." That is an abstract idea. It is devoid of
`a concrete or tangible [application].
`
`Is that abstract idea a fair characterization of the claims? I
`find that it is. All four of the representative claims involve doing
`what the abstract idea says. This is true even for the '993 patent
`which allows for the source database to itself be updated while the
`user is working in a frrst document. That concept is captured in the
`''using the found information in some way" portion of the
`Defendants' abstract idea ... .
`
`But these conclusions do not end the Step 1 analysis. And
`this is where the question arises: Are these claims directed to an
`improvement in computer functionality[;] .. . do they recite a
`specific implementation of a solution to a technological problem?
`The Federal Circuit cases and the parties seem to all agree that ...
`this is a Step 1 question .. ..
`
`So let me ask that question for each of the four
`representative claims.
`
`First, with the ' 843 patent, claim 1. I find that this claim is
`directed to an improvement in computer functionality.
`Specifically, and looking carefully at the claim language, the claim
`is directed to displaying an electronic document using a first
`computer program, while displaying that document, analyzing first
`information in that document for types of information that can be
`searched for in an information source external to the document,
`caus[ing] a search for that type of information in the external
`information source, using a second computer program, and if any
`second information related to the search term is found, using at
`least part of that second information to perform an action in the
`first computer program. Given that understanding of
`representative claim 1 of the ' 843 patent, I find that Defendants
`have not met their burden at Step 1 with respect to this claim, and
`the motion is denied as to the ' 843 patent.
`
`7
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`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 10 of 11 PageID #: 6370
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`Further support for this interpretation and this conclusion
`about the '843 patent is found in at least four recent cases that the
`Court finds sufficiently analogous to this claim: Data Engine, [71
`Ancora, [SJ Core Wireless, [91 and Finjan[.][IOJ ... Defendants
`argue[] that the ' 843 patent, claim 1 is purely functional, that it
`doesn't disclose how this purported improvement in computer
`functionality is accomplished, and that the improvement isn't
`captured in the claims. But the Court is persuaded that the '843
`patent claim is analogous to and as specific on these points as the
`claim language found adequate by the Federal Circuit in these
`other cases.
`
`Defendants also argue that the claim only uses conventional
`computer components, but this does not provide a meritorious
`basis to grant the motion. As Defendants concede, the use of
`conventional computer components does not, by itself, lead to a
`conclusion of non-subject matter eligibility. And on this point,
`Arendi persuasively refers the Court again to Data Engine,
`Ancora, and Finjan.
`
`Turning more briefly to the other three patents and their
`representative claims, I have reached the opposite conclusion. For
`example, the '993 patent, claim 1, I find is not directed to an
`improvement in computer functionality. Basically, I don't see
`where in this claim the ... purported inventive concept of
`beneficial coordination is captured in the claims. The claim does
`not appear to require that both applications be able to be opened at
`the same time. So I will grant the motion with respect to '993
`patent, claim 1.
`
`. . . There is no factual dispute to defeat the motion at Step
`2 because whether beneficial coordination was routine,
`conventional, well understood is not a pertinent question given that
`that purported innovation is not captured in the claim.
`
`It's a similar conclusion and analysis for both the '854
`patent, claim 93, and the '356 patent, claim 2.
`
`For the '854 [patent], claim 93 , I find that the claim is not
`
`7 Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018).
`
`8 Ancora Techs. , Inc. v. HTC Am. Inc., 908 F.3d 1343 (Fed. Cir. 2018).
`
`9 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018).
`1° Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018).
`
`8
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`

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`Case 1:13-cv-00920-LPS Document 189 Filed 01/02/20 Page 11 of 11 PageID #: 6371
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`directed to an improvement in computer functionality. The
`beneficial coordination concept is not captured in the claim. And
`all the points [that I] just made about the ' 993 patent apply equally
`here.
`
`Similarly for the '3 56 patent, claim 2, I find that the claim
`is not directed to an improvement in computer functionality. I'm
`not seeing in this claim where the temporal limitation is present.
`That is, something that captures the purported improvement of
`being able to work in two programs at the same time and use
`information from one program in the other program without having
`to close one of the programs.
`
`So all that said, the motion is granted with respect to the
`' 993, '854, and '356 patent representative claims. The motion is
`denied with respect to the representative claim of the '843 patent.
`
`I am going to provide the parties .. . an opportunity to brief
`how to apply my decision granting the motion with respect to the
`three patents ['993, ' 854, and ' 356] on the representative claim[s] .
`. . [to the] other asserted claims of those patents.
`
`HONORABLE LEONARD P. ST
`UNITED STATES DISTRICT JUDGE
`
`9
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`