Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 1 of 18 PageID #: 6452
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`EVOLVED WIRELESS, LLC,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`Defendant.
`
`EVOLVED WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`HTC CORPORATION and
`HTC AMERICA, INC.,
`Defendants.
`
`EVOLVED WIRELESS, LLC,
`Plaintiff,
`
`v.
`LENOVO GROUP LTD.,
`LEVONO (UNITED STATES) INC., and
`MOTOROLA MOBILITY,
`Defendants.
`
`EVOLVED WIRELESS, LLC,
`Plaintiff,
`
`v.
`SAMSUNG ELECTRONICS CO., and
`SAMSUNG ELECTRONICS AMERICA,
`Defendants.
`
`EVOLVED WIRELESS, LLC,
`Plaintiff,
`
`v.
`ZTE (USA) INC.,
`Defendant.
`
`)
`)
`)
`)
`) Civ. No. 15-542-SLR
`)
`)
`
`)
`)
`)
`)
`) Civ. No. 15-543-SLR
`)
`)
`)
`
`)
`)
`)
`)
`) Civ. No. 15-544-SLR
`)
`)
`)
`)
`
`)
`)
`)
`)
`) Civ. No. 15-545-SLR
`)
`)
`)
`
`)
`)
`)
`)
`) Civ. No. 15-546-SLR
`)
`)
`
`

`

`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 2 of 18 PageID #: 6453
`
`EVOLVED WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY, and
`NOKIA INC.,
`
`Defendants.
`
`)
`)
`)
`)
`) Civ. No. 15-547-SLR
`)
`)
`)
`)
`
`Brian E. Farnan, Esq. and Michael J. Farnan, Esq. of FARNAN LLP, Wilmington, DE;
`John C. Phillips, Jr., Esq. and David A. Bilson, Esq. of PHILLIPS, GOLDMAN,
`MCLAUGHLIN & HALL, P.A., Wilmington, DE; Christopher K. Larus, Esq., Marla R.
`Butler, Esq., Ryan M. Schultz, Esq., Andrew D. Hedden, Esq., Benjamen C. Linden,
`Esq., Ryan E. Damberger, Esq., and Anthony F. Schlehuber, Esq. of ROBINS
`KAPLAN LLP, Minneapolis, MN; Andrea L. Gathing, Esq. of ROBINS KAPLAN LLP,
`Mountain View, CA. Counsel for Plaintiff Evolved Wireless, LLC.
`
`David E. Moore, Esq., Bindu A. Palapura, Esq., and Stephanie E. O'Byrne, Esq. of
`POTTER ANDERSON & CORROON LLP, Wilmington, DE; Michael D. Jay, Esq., Bill
`Ward, Esq., Joseph E. Lasher, Esq., and Nandan Padmanabhan, Esq. of BOIES,
`SCHILLER & FLEXNER LLP, Santa Monica, CA; Steven C. Holtzman, Esq. of
`BOIES, SCHILLER & FLEXNER LLP, Oakland, CA. Counsel for Defendant Apple
`Inc.
`
`Philip A. Rovner, Esq. and Jonathan A. Choa, Esq. of POTTER ANDERSON &
`CORROON LLP, Wilmington, DE; Stephen S. Korniczky, Esq., Martin R. Bader, Esq.,
`and Ericka J. Schulz, Esq. of SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP,
`San Diego, CA. Counsel for Defendants HTC Corporation and HTC America, Inc.
`
`David E. Moore, Esq., Bindu A. Palapura, Esq., and Stephanie E. O'Byrne, Esq. of
`POTTER ANDERSON & CORROON LLP, Wilmington, DE; Mitchell G. Stockwell,
`Esq. and Richard W. Goldstucker, Esq. of KILPATRICK TOWNSEND & STOCKTON
`LLP, Atlanta, GA; Taylor H. Ludlam, Esq. of KILPATRICK TOWNSEND &
`STOCKTON LLP, Raleigh, NC; Akarsh P. Belagodu, Esq. of KILPATRICK
`TOWNSEND & STOCKTON LLP, Washington, D.C. Counsel for Defendants Lenovo
`Group Ltd., Lenovo (United States) Inc., and Motorola Mobility.
`
`John W. Shaw, Esq., Karen E. Keller, Esq., Andrew E. Russell, Esq., and David M.
`Fry, Esq. of SHAW KELLER LLP, Wilmington, DE; Kevin P.B. Johnson, Esq., Victoria
`F. Maroulis, Esq., Todd M. Briggs, Esq., and Charles M. Stiernberg, Esq. of QUINN
`EMANUEL URQUHART & SULLIVAN, LLP, Redwood Shores, CA. Counsel for
`Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`

`

`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 3 of 18 PageID #: 6454
`
`Kelly E. Farnan, Esq. and Travis S. Hunter, Esq. of RICHARDS, LAYTON & FINGER,
`P.A., Wilmington, DE; Jay H. Reiziss, Esq. and Natalie A. Bennett, Esq. of
`MCDERMOTT WILL & EMERY LLP, Washington, D.C.; Charles M. McMahon, Esq.
`and Hersh H. Mehta, Esq. of MCDERMOTT WILL & EMERY LLP, Chicago, IL.
`Counsel for Defendant ZTE (USA) Inc.
`
`Rodger D. Smith II, Esq. and Jeremy A. Tigan, Esq. of MORRIS, NICHOLS, ARSHT
`& TUNNELL LLP, Wilmington, DE; Richard A. Cederoth, Esq. of SIDLEY AUSTIN
`LLP, Chicago, IL; Ellen S. Robbins, Esq. of SIDLEY AUSTIN LLP, Los Angeles, CA;
`Joseph A. Micallef, Esq., Anna M. Weinberg, Esq., and Wonjoo Suh, Esq. of SIDLEY
`AUSTIN LLP, Washington, D.C. Counsel for Defendants Microsoft Corp., Microsoft
`Mobile Oy, and Microsoft Mobile Inc. (f/k/a Nokia Inc.)
`
`MEMORANDUM OPINION
`
`Dated: October _1_L, 2016
`Wilmington, Delaware
`
`

`

`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 4 of 18 PageID #: 6455
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`R~N
`
`I.
`
`INTRODUCTION
`
`In June 2015, plaintiff Evolved Wireless, LLC ("plaintiff') brought separate patent
`
`infringement actions against the following defendants: Apple, Inc.; HTC Corporation;
`
`HTC America, Inc.; Lenovo Group Ltd.; Lenovo (United States) Inc.; Motorola Mobility;
`
`Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; ZTE (USA) Inc.;
`
`Microsoft Corp.; Microsoft Mobile Oy; and Microsoft Mobile Inc. (collectively,
`
`"defendants"). In each separate action, plaintiff alleges that the defendants infringe five
`
`patents, including U.S. Patent Nos. 7,746,916 ("the '916 patent") and 8,218,481 ("the
`
`'481 patent"). The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
`
`Defendants have moved for judgment on the pleadings as to the '916 patent and
`
`'481 patent, arguing that those patents claim patent-ineligible subject matter under 35
`
`U.S.C. § 101. (D.I. 71)1 Patent eligibility under§ 101 is a question of law that may be
`
`resolved at the pleading stage. Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558
`
`Fed. Appx. 988, 991 (Fed. Cir. 2014); Content Extraction & Transmission LLC v. Wells
`
`Fargo Bank, 776 F.3d 1343, 1349 (Fed.Cir.2014) (affirming decision to declare claims
`
`patent-ineligible under§ 101 at pleading stage). For the reasons discussed below,
`
`defendants' motions are denied.
`
`II.
`
`BACKGROUND
`
`The '916 and '481 patents relate to mobile phones and devices using the LTE
`
`standard, which is the current standard in wireless communications systems. (D.I. 111
`
`15) Mobile (cellular) phones and devices allow users to make or receive telephone
`
`All docket citations are to Evolved Wireless, LLC v. Apple, Inc., 15-542-SLR.
`
`

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`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 5 of 18 PageID #: 6456
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`calls and transmit and receive data wirelessly over a wide geographical area. (Id. at~
`
`18) The increasing number of mobile devices and the advancement of mobile device
`
`technology with increased features have driven demand for faster and more reliable
`
`data transmissions. (Id. at ~ 22) The patents claim "specific solutions to improve
`
`mobile device functionality over the prior art with faster, more reliable, and more efficient
`
`voice and data transmissions." (Id. at~ 25)
`
`A.
`
`The '916 Patent
`
`The '916 patent claims methods and systems for generating and transmitting "a
`
`code sequence from a transmitting party to a receiving party in a wireless
`
`communication system." (D.I. 1-1 at 1 :15-18) As the patent specification explains, a
`
`"preamble" of a wireless communication system is used for initial synchronization, cell
`
`search, and channel estimation. (D.I. 1-1 at 1 :20-26) The preamble is comprised of a
`
`code sequence, and the code sequence is further comprised of orthogonal or quasi-
`
`orthogonal codes. (D.I. 1-1 at 1 :20-26)
`
`The '916 patent has 11 claims, including method claims 1-5 and 11 and
`
`apparatus claims 6-10. (D.I. 1-1at17:35-18:65) For the purposes of this motion, the
`
`parties have primarily focused on claim 1, which states:
`
`1.
`
`A method for transmitting a code sequence from a transmitting party to a
`receiving party in a wireless communication system, the method
`comprising:
`
`(a) acquiring a code sequence having a second length by a cyclic
`extension of a code sequence having a first length;
`
`(b) performing a circular shift to the code sequence having the
`second length; and
`
`(c)
`
`transmitting the circular shifted code sequence having the second
`length to the receiving party,
`
`2
`
`

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`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 6 of 18 PageID #: 6457
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`(d) wherein the first length is a largest prime number smaller than the
`second length, and
`
`(e) wherein the cyclic extension of the code sequence having the first
`length is performed such that a part of the code sequence having
`the first length, having a length corresponding to a difference
`between the first length and the second length, is added to either
`a start or an end of the code sequence having the first length, and
`
`(f) wherein the circular shift is performed to the code sequence
`having the second length such that either a rear portion of the
`code sequence having the second length moves to a start of the
`code sequence having the second length, or a front portion of the
`code sequence having the second length moves to an end of the
`code sequence having the second length.
`
`(Id. at 17:35-57)
`
`Limitations (a) through (c) of claim 1 provide the steps for generating and
`
`transmitting a code sequence. Limitation (a) explains that a code sequence is acquired
`
`by performing a mathematical operation called a "cyclic extension" on a starting code
`
`sequence. (Id. at 17:38-41) The cyclic extension copies the front of the starting
`
`sequence to its end (or copies the end of the starting sequence to its front). (Id. at
`
`17:46-50) For example, a cyclic extension of the sequence "34567" yields "345673"
`
`because the "3" at the front of "34567" is copied to the end. (D.I. 72 at 4) Limitation (b)
`
`requires another mathematical operation called a "circular shift," which shifts the
`
`cyclically extended sequence by moving a portion of the sequence from one end of the
`
`sequence to the opposite end. (D.I. 1-1 at 11 :25-29) For example, a circular shift of
`
`"345673" yields "733456" because the "73" at the end of the sequence is moved to the
`
`front of the sequence and the remaining numbers are shifted to the right. (D.I. 72 at 4)
`
`Limitation (c) requires the transmission of the circular-shifted code sequence "to the
`
`receiving party." (D.I. 1-1at17:42-43)
`
`3
`
`

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`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 7 of 18 PageID #: 6458
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`Limitations (d) through (f) provide further specific limitations on the claim.
`
`Limitation (d) requires the starting sequence to have a length that is a prime number (as
`
`in the example above, because "34567" has a length of five digits, and five is a prime
`
`number). (Id. at 44-45; D.I. 72 at 4-5) Limitations (e) and (f) specify that the
`
`mathematical operations of cyclic extension and circular shift can be carried out on in
`
`either direction, front to back or back to front.
`
`Independent method claim 11 includes most of the same requirements as claim
`
`1, but reverses the order of the steps, performing the cyclic extension before the circular
`
`shift. (D.I. 1-1 at 17:44-65) Independent apparatus claim 6 includes language nearly
`
`identical to that of claim 1 but couches the mathematical operations of cyclic extension
`
`and circular shift in terms of the capabilities of a generic structural component called "a
`
`code sequence generator," and adds "a transmitting unit" with the ability to transmit. (Id.
`
`at 17:7-28)
`
`Dependent claims 2-4 and 7-8 specify that the starting sequence includes "at
`
`least a cyclic prefix or a cyclic postfix" (meaning an additional sequence portion at either
`
`the front or back, respectively), or constitutes a "Zadoff-Chu (ZC) sequence" (a
`
`particular type of prior art mathematical sequence). (D.I. 72 at 5) Dependent claims 5
`
`and 10 require that the resulting code sequence be transmitted "as a reference signal
`
`sequence" (a term the specification equates with a prior art signal in a wireless
`
`communications system). (Id.)
`
`B.
`
`The '481 Patent
`
`The '481 patent claims methods and systems for generating and transmitting a
`
`specific type of code sequence-a "preamble sequence"-over a random access
`
`4
`
`

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`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 8 of 18 PageID #: 6459
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`channel in a mobile communication system. (D.I. 1-5 at 1:18:33-42) As explained in
`
`the specification, mobile devices (referred to as "user equipment") utilize a preamble
`
`transmitted over a random access channel to access the network when the device is not
`
`yet synchronized with the base station, such as when the device is first turned on or
`
`after coming out of an idle state. (Id. at 1 :24-30; 4:55-5:3)
`
`Independent claim 1 of the '481 patent states:
`
`1.
`
`A method of transmitting a preamble sequence in a mobile communication
`system, the method comprising:
`
`(a)
`
`repeating a specific sequence, having a length (L), N times to
`generate a consecutive sequence having a length (N*L);
`
`(b) generating said preamble sequence by concatenating a single
`cyclic prefix (CP) to a front end of said consecutive sequence;
`and
`
`(c)
`
`transmitting, on a random access channel, said preamble
`sequence to a receiving side.
`
`(Id. at 18:1-42)
`
`Accordingly, the '481 patent constructs a preamble sequence by repeating
`
`consecutive sequences some number of times (i.e., "N times") and adding a single
`
`cyclic prefix. (D.I. 72 at 6) For example, a starting sequence of "123" could be repeated
`
`twice (N=2) to create the consecutive sequence "123123." (Id.) Adding a "cyclic prefix"
`
`means copying some portion at the end of the sequence to the front of the sequence.
`
`(Id. at 7) Thus, in the example above, adding a cyclic prefix to the consecutive
`
`sequence "123123" could result in "3123123," where the last digit (3) has been copied
`
`to the front of the sequence. (Id.) The '481 patent claims that the resulting preambles
`
`are less susceptible to "noise or channel change," leading to better reception of the
`
`preamble at the base station. (D.I. 1-5 at 2:45-49; D.I. 83 at 6) Independent apparatus
`
`5
`
`

`

`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 9 of 18 PageID #: 6460
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`claim 8 includes language nearly identical to that of claim 1 but couches the
`
`mathematical operations of repeating a sequence and adding a cyclic prefix in terms of
`
`the capabilities of a generic structural component called "a preamble generation unit,"
`
`and adds "a transmitting unit" with the ability to transmit the resulting sequence on a
`
`random access channel. (D.I. 1-5 at 18:60-19:3)
`
`Dependent claims 2-7 and 9-16 provide specific additional limitations to
`
`independent claims 1 and 8. Claims 2 and 9 specify that the starting "specific
`
`sequence" is a CAZAC sequence. (Id. at 18:43-45; Id. at 9:4-7) Cyclically shifted
`
`CAZAC sequences are orthogonal to each other, enabling a cell tower to differentiate
`
`between code sequences transmitted by different mobile devices. (D.I. 83 at 6) Claims
`
`3-7 and 10-14 require a cyclic shift involving various additional mathematical operations.
`
`(D.I. 1-5 at 18:46-59; Id. at 19:8-20:8) Claims 15-16 require a certain number of
`
`repetitions and a specific length of the cyclic prefix. (Id. at 20:8-16)
`
`Ill.
`
`STANDARD OF REVIEW
`
`When deciding a Rule 12(c) motion for judgment on the pleadings, a district court
`
`must view the facts and inferences to be drawn from the pleadings in the light most
`
`favorable to the non-moving party. Green v. Fund Asset Mgmt., L.P., 245 F.3d 214, 220
`
`(3d Cir. 2001); Janney Montgomery Scott, Inc. v. Shepard Niles, Inc., 11 F.3d 399, 406
`
`(3d Cir. 1993). The motion can be granted only if no relief could be afforded under any
`
`set of facts that could be provided. Turbe v. Gov't of the Virgin Islands, 938 F .2d 427,
`
`428 (3d Cir. 1991); see also Astrazeneca AB v. Dr. Reddy's Lab., Inc., 2016 WL
`
`3946799, at *7 (D. Del. July 20, 2016) ("If a complaint contains even the most basic of
`
`allegations that, when read with great liberality, could justify plaintiff's claim for relief,
`
`6
`
`

`

`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 10 of 18 PageID #: 6461
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`motions for judgment on the pleadings should be denied." (quoting Cardio-Med. Assoc.,
`
`Ltd. v. Grazer-Chester Med. Ctr., 536 F. Supp. 1065, 1072 (E.D. Pa. 1982))). However,
`
`the court need not adopt conclusory allegations or statements of law. In re Gen. Motors
`
`Class E Stock Buyout Sec. Litig., 694 F. Supp. 1119, 1125 (D. Del. 1988). Judgment on
`
`the pleadings will only be granted if it is clearly established that no material issue of fact
`
`remains to be resolved and that the movant is entitled to judgment as a matter of law.
`
`Jablonski v. Pan Am. World Airways, Inc., 863 F.2d 289, 290 (3d Cir. 1988).
`
`IV.
`
`DISCUSSION
`
`Section 101 defines patent-eligible subject matter as "any ... process, machine,
`
`manufacture, or composition of matter." 35 U.S.C. § 101. The Supreme Court has long
`
`held that that § 101 contains an important implicit exception. Mayo Collaborative Serv.
`
`v. Prometheus Lab., Inc., 132 S.Ct. 1289, 1293 (2012). "Laws of nature, natural
`
`phenomena, and abstract ideas are not patentable." Id. (internal quotation marks,
`
`brackets, and citations omitted). The purpose of these exceptions is to protect the
`
`"basic tools of scientific and technological work." Id. Defendants argue that the '916
`
`patent and the '481 patent are directed to abstract ideas and are, therefore, patent(cid:173)
`
`ineligible.
`
`In Alice, the Supreme Court endorsed a two-step "framework for distinguishing
`
`patents that claim laws of nature, natural phenomena, and abstract ideas from those
`
`that claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v. CLS
`
`Bank Int'/, 134 S.Ct. 2347, 2355 (2014). First, the court must determine if the claims at
`
`issue are directed to a patent-ineligible concept. Id. If the answer is no, that ends the
`
`matter and the defendants' motion is denied. See, e.g., Enfish, LLC v. Microsoft Corp.,
`
`7
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`

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`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 11 of 18 PageID #: 6462
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`822 F.3d 1327, 1337 (Fed. Cir. 2016) (determining at step one that the claims were not
`
`directed to an abstract idea and, therefore, not discussing step two). If, however, the
`
`answer is yes, then the court must "determine whether the additional elements
`
`transform the nature of the claim into a patent-eligible application." Alice, 134 S.Ct. at
`
`2355.
`
`A.
`
`Patent Eligibility of Mathematical Formulas
`
`Defendants argue that the claims of the '916 patent and '481 patent are "directed
`
`to a mathematical algorithm for generating a code sequence." (D.I. 72 at 10) The
`
`Federal Circuit has stated that "[m]athematical formulas are a type of abstract idea,"
`
`McRO, Inc. v. Bandai Namco Games Am. Inc., 2016 WL 4896481, at *6 (Fed. Cir. Sept.
`
`13, 2016), and "as such [are] not accorded the protection of our patent laws," Diamond
`
`v. Diehr, 450 U.S. 175, 191 (1981). "Without additional limitations, a process that
`
`employs mathematical algorithms to manipulate existing information to generate
`
`additional information is not patent eligible." Digitech Image Tech., LLC v. Elec. for
`
`Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). The prohibition against patenting
`
`mathematical algorithms "cannot be circumvented by attempting to limit the use of the
`
`formula to a particular technological environment." Diehr, 450 U.S. at 191. Similarly,
`
`"insignificant post-solution activity" will not transform an unpatentable mathematical
`
`algorithm into a patentable process. Id. at 191-92.
`
`The Federal Circuit has also made clear, however, that "an invention is not
`
`ineligible just because it relies upon a law of nature or mathematical algorithm."
`
`Digitech, 758 F.3d at 1350. A claim containing a mathematical formula can satisfy the
`
`requirements of§ 101 if it "implements or applies that formula in a structure or process
`
`8
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`

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`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 12 of 18 PageID #: 6463
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`which, when considered as a whole, is performing a function which the patent laws were
`
`designed to protect." Diehr, 450 U.S. at 192.
`
`Applying these guidelines in the relevant field of technology can be somewhat
`
`difficult, because "[t]he essence of software is manipulating existing data and generating
`
`additional data through algorithms." Ca/. Inst. of Tech. v. Hughes Commc'ns Inc., 59 F.
`
`Supp. 3d 974, 987 (C.D. Cal. 2014); Op/us Techs. Ltd. v. Sears Holding Corp., 2013 WL
`
`1003632, at *12 (C.D. Cal. Mar. 4, 2013) ("All software only 'receives data,' 'applies
`
`algorithms,' and 'ends with decisions."'). Ultimately, the Federal Circuit instructs that not
`
`all "claims directed to software ... are inherently abstract." Enfish, LLC v. Microsoft
`
`Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Claims "improv[ing] the functioning of [a]
`
`computer" or "improving an existing technological process" are patent-eligible even if
`
`they rely on a mathematical algorithm. Id. at 1336; see also Hughes, 59 F. Supp. 3d at
`
`993 ("When claims provide a specific computing solution for a computing problem,
`
`these claims should generally be patentable, even if their novel elements are
`
`mathematical algorithms.").
`
`Accordingly, courts must distinguishing between claims directed to an
`
`unpatentable mathematical algorithm and claims directed to improving a technological
`
`process. Courts have found that claims were directed to an abstract idea where they
`
`were simply reciting the "use of an abstract mathematical formula on any general
`
`purpose computer." Enfish, 822 F.3d at 1338. For example, in Benson, the Supreme
`
`Court rejected as patent-ineligible "a method for converting binary-coded decimal (BCD)
`
`numerals into pure binary code." Gottschalk v. Benson, 409 U.S. 63, 64 (1972). The
`
`patent was essentially for a mathematical algorithm. Although the patent could be used
`
`9
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`

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`Case 1:15-cv-00547-SLR-SRF Document 110 Filed 10/31/16 Page 13 of 18 PageID #: 6464
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`in any general purpose computer, it was "not limited to any particular art or technology,
`
`to any particular apparatus or machinery, or to any particular end use." Id. Similarly,
`
`courts have found patent-ineligible "a purely conventional computer implementation of a
`
`mathematical formula." Enfish, 822 F.3d at 1338. For example, in Flook, the Supreme
`
`Court rejected as patent-ineligible "a formula for computing an alarm limit." Parker v.
`
`Flook, 437 U.S. 584, 586 (1978).
`
`In contrast, the Federal Circuit has found a patent-eligible technological
`
`improvement where the claims "provided an Internet-based solution to solve a problem
`
`unique to the Internet that (1) did not foreclose other ways of solving the problem, and
`
`(2) recited a specific series of steps that resulted in a departure from the routine and
`
`conventional sequence of events after the click of a hyperlink advertisement."
`
`Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
`
`2015) (discussing DOR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014)).
`
`Specifically, in DOR Holdings, the Federal Circuit upheld as patent-eligible a software
`
`patent that generated a "hybrid website" when a visitor to the host website clicked an
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`advertisement. 773 F.3d at 1257. The hybrid website retained the "look and feel" of the
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`host website and allowed users to make purchases without leaving the host website.
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`This prevented the host website from losing its audience. Id. at 1248-49.
`
`Similarly, in Enfish, the Federal Circuit upheld as patent-eligible claims disclosing
`
`a logical model, called a "self-referential model," because the claims provided "a specific
`
`improvement to the way computers operate," 822 F.3d at 1330, 1336. Unlike
`
`conventional logical models, the self-referential model could store all data entities in a
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`single table and define the table's columns by rows in that same table. Id. at 1332. The
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`self-referential model improved the functioning of a computer by permitting "faster
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`searching of data," "more effective storage of data," and "more flexibility in configuring
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`the database."2 Id. at 1333.
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`All of the cases that found claims to be patent-eligible improvements to
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`computers have not been resolved at the same step of the Alice framework. Some
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`cases had to consider both Alice steps. See, e.g., DOR Holdings, 773 F.3d at 1257.
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`This court has suggested that "computer software comprises a set of instructions,"
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`making the first step of Alice, "for the most part, a given; i.e., computer-implemented
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`patents generally involve abstract ideas." CyberFone Systems, LLC v. Lexmark Int'/,
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`Inc., 137 F. Supp. 3d 648, 652 (D. Del. 2015). "[S]ubsumed in the second step of Alice"
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`is the question of whether a claim improved a technological process. Id. More recently,
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`however, the Federal Circuit stated that courts should inquire at step one of Alice - as
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`opposed to step two -
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`"whether the focus of the claims is on the specific asserted
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`improvement in computer capabilities." Enfish, 822 F.3d at 1336-37. Accordingly, the
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`court will consider under the first step of Alice whether the '916 and '481 patents are
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`directed to an abstract idea or a specific improvement in computer capabilities.
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`B.
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`Analysis
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`In determining whether the mathematical algorithms disclosed in the patents at
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`issue are directed to an abstract idea or technological improvement, the court finds
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`2
`In Enfish, the court noted that the self-referential model "function[ed] differently
`than conventional database structures." Id. at 1337. This is similar to the consideration
`given in DOR Holdings to whether the patent departed from routine and conventional
`steps. See 773 F.3d at 1259. Unlike DOR Holdings, however, the court in Enfish did
`not consider whether the patent preempted other ways of solving the problem. See
`DOR Holdings, 773 F.3d at 1259.
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`instructive cases addressing similar technological problems and solutions. 3
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`In Hughes,
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`the patent claimed a particular form of error correction code called an irregular repeat
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`and accumulate ("IRA") code. Cal. Inst. of Tech. v. Hughes Commc'ns Inc., 59 F. Supp.
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`3d at 977-78. During data transmission, a random or irregular fluctuation (known as
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`noise) can occur in the signal and corrupt data. Id. at 977. An error correction code
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`mitigates this problem by introducing redundancy. Id. An IRA code repeats (i.e.,
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`duplicates) different original bits irregularly (i.e., a different number of times), and then
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`randomly permutes and combines these information bits to eventually form parity bits.
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`Id. at 978. The parity bits are transmitted along with the original information bits. Id.
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`The receiver can determine whether an error occurred during transmission by adding
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`together the original information bits and parity bits. Id. The receiver knows whether
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`this sum is supposed to be odd or even, and that an error occurred if the result does not
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`3
`Defendants have cited several cases that the court finds inapplicable. Some of
`the cases involve claims that "can readily be understood as simply adding conventional
`computer components to well-known business practices." Enfish, 822 F.3d at 1338; see
`Alice, 134 S.Ct. at 2357 (using computers for intermediate settlements); Ultramercial, Inc.
`v. Hulu, LLC, 772 F.3d 709, 714-17 (Fed. Cir. 2014) (using the Internet to exchange
`advertising for copyrighted content); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354-
`55 (Fed. Cir. 2014) (adding generic computer functionality to the formation of guaranteed
`contractual relationships). The '916 and '481 patents, however, do not claim a
`longstanding commercial practice made more efficient by using a computer. Other cases
`cited by defendants encompass "inventions pertaining to methods of organizing human
`activity," which has consistently been considered an abstract idea. See In re TU
`Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (claims directed to
`abstract idea of classifying and storing digital images in an organized manner); Cyberfone
`Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 991 (Fed. Cir. 2014) (claims
`for capturing and storing data on a telephone directed to abstract idea); Content
`Extraction v. Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (claims directed to
`abstract idea of collecting, sorting, and storing data); Visual Memory LLC v. Nvidia Corp.,
`2016 WL 3041847, at *6 (D. Del. May 27, 2016) (finding claims directed to tiered data
`storage an abstract idea). The claims of the '916 and '481 patents, however, do not
`involve collecting, organizing, and storing data.
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`match. Id. Accordingly, the invention was not patent-ineligible under§ 101 just
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`because it involved, like the patents at issue here, repeating original data bits,
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`combining the original bits with the duplicate bits, and transmitting the combined bits.
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`More importantly, the court in Hughes found that the invention provided a patent(cid:173)
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`eligible technological improvement over the prior art. The benefit of an IRA code is that
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`not all bits are repeated the same number of times. Hughes, 59 F. Supp. 3d at 978.
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`Although greater repetition allows for better error correction, it also forces the
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`transmitter to send more bits, thereby increasing data transfer time. Id. IRA codes,
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`therefore, balance the competing goals of data accuracy and efficiency. Id. This is
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`similar to other types of technological improvements found to be patent-eligible. See
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`France Telecom S.A. v. Marvell Semiconductor Inc., 39 F. Supp. 3d 1080, 1097 (N.D.
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`Cal. 2014) (holding that a method for correcting errors in telecommunication was not
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`abstract where its purpose was "more accurate and efficient data transmission");
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`Intellectual Ventures I LLC v. Ricoh Am. Corp., 2016 WL 1129183, at *7 (D. Del. Mar.
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`22, 2016) (finding patent-eligible an invention based on a mathematical algorithm that
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`could "improve the image scanning rate" for a scanner).
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`The '916 and '481 patents describe problems and solutions firmly rooted in
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`technology used for wireless communications. Specifically, the '916 patent explains
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`that the number of code sequences available in the prior art to maintain orthogonality
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`was "limited." (D.I. 1-1at1:31-34) As a result, telecommunication systems either had a
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`higher level of interference or were only able to serve a limited number of mobile
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`phones for a particular base station. (D.I. 11[ 29) The '916 patent relates to a
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`technique for optimizing the number of unique code sequences with orthogonality,
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`overcoming the limitations rooted in prior art. (0.1. 11{ 28; 0.1. 1-1 at 7:35-44; Id. at
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`8:13-23)
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`Similarly, the '481 patent describes several problems in the prior art with
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`transmitting preamble sequences over a random access channel. (0.1. 1-5 at 1 :45-2:33;
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`0.1. 11J1J 54-59) Specifically, prior art systems used a preamble of fixed length, limiting
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`flexibility under different cell sizes. (0.1. 11{ 53) The '481 patent identifies several
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`objects of the invention, including "using a long sequence to maximize time/frequency
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`diversity and alleviat[e] performance attenuation due to channel;" "transmitting data
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`through a code sequence in a mobile communication system, in which the quantity of
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`data can be increased and the transmitted data becomes robust to noise or channel
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`change;" and "minimizing access time of a user equipment to a random access channel
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`in a mobile communication system." (0.1. 1-5 at 2:37-56) Because the '916 and '481
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`patents are directed to technological improvements resolving specific problems in a
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`wireless communications system, the court finds that they claim patent-eligible subject
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`matter under§ 101.
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`The defendants ask this court to disregard the preamble and claim limitations as
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`nothing more than limits to a "particular technological environment" or "insignificant
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`post-solution activity," thereby leaving only a patent-ineligible mathematical algorithm.
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`(0.1. 72 at 2, 12) The court, however, finds no reason to depart from the usual practice
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`of considering plaintiff's patent claims as a whole. As the Supreme Court instructs, a
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`claim containing a mathematical formula can satisfy the requirements of§ 101 if it
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`"implements or applies that formula in a structure or process which, when considered as
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`a whole, is performing a function which the patent laws were designed to protect."
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`Diehr, 450