Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 1 of 16 PageID #: 506
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`SOUND VIEW INNOVATIONS, LLC,
`
`
`
`C.A. No. 16-116 (RGA)
`
`)))))))))
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`
`FACEBOOK, INC.,
`
`
`
`
`
`Defendant.
`
`
`
`FACEBOOK’S REPLY BRIEF IN SUPPORT OF ITS
`RULE 12(B)(6) MOTION TO DISMISS FOR
`LACK OF PATENTABLE SUBJECT MATTER PURSUANT TO 35 U.S.C. § 101
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`Karen Jacobs (#2881)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`kjacobs@mnat.com
`
`Attorneys for Defendant
`
`
`
`
`
`
`OF COUNSEL:
`
`Heidi Keefe
`Sarah Whitney
`Elizabeth Stameshkin
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843-5000
`
`Phillip E. Morton
`COOLEY LLP
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, DC 20004
` (202) 842-7800
`
`
`
`
`May 26, 2016
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 2 of 16 PageID #: 507
`
`TABLE OF CONTENTS
`
`Page
`
`B. 
`
`Introduction .................................................................... Error! Bookmark not defined. 
`Plaintiff Misstates Applicable Legal Standards ............... Error! Bookmark not defined. 
`Plaintiff Neglects to Address the PTAB’s Prior § 101 RejectionError! Bookmark not defined. 
`Alice Step One – The ’593 Patent Claims an Abstract IdeaError! Bookmark not defined. 
`Plaintiff’s Characterization Confirms that the ’593 Patent Is Directed To
`A. 
`An Abstract Idea. ................................................ Error! Bookmark not defined. 
`The ’593 Patent Does Not Claim An Improvement to Computer
`Functionality Itself. ............................................. Error! Bookmark not defined. 
`Facebook’s Cited Case Law Confirms that the ‘593 Patent is Directed to
`an Abstract Idea. ................................................. Error! Bookmark not defined. 
`Alice Step Two – The ’593 Patent Lacks Inventive ConceptError! Bookmark not defined. 
`The Limitations of the ’593 Patent Claims Do Not Confer Eligibility.Error! Bookmark not defin
`A. 
`The ’593 Patent Addresses A Business Problem. . Error! Bookmark not defined. 
`B. 
`The ’593 Patent Recites Generic Components Using Functional Language.Error! Bookmark not
`C. 
`Conclusion ..................................................................... Error! Bookmark not defined. 
`
`C. 
`
`i
`
`
`
`I. 
`II. 
`III. 
`IV. 
`
`V. 
`
`VI. 
`
`
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 3 of 16 PageID #: 508
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013) .............................................................................................. 4
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ................................................................................................. passim
`
`Art+COM Innovationpool GmbH v. Google, Inc.,
`---F. Supp. 3d ---, No. 14-217-RGA, 2016 WL 1718221 (D. Del. Apr. 28,
`2016) ..................................................................................................................................... 7
`
`Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012) .............................................................................................. 3
`
`Bilski v. Kappas,
`561 U.S. 593 (2011) .............................................................................................................. 8
`
`CyberSource, Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) .............................................................................................. 7
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014.) ............................................................................................. 8
`
`Enfish, LLC v. Microsoft Corp.,
`No. 2015-1244, 2016 WL 2756255 (May 12, 2016) .................................................. 1, 5, 6, 7
`
`Genetic Techs. Ltd. v. Bristol-Myers Squibb Co.,
`72 F. Supp. 3d 521 (D. Del. 2014) ..................................................................................... 1, 2
`
`In re Bilski,
`545 F.3d 943 (Fed. Cir. 2008)................................................................................................ 2
`
`Intellectual Ventures I LLC v. Capital One Bank, N.A.,
`792 F.3d 1363 (Fed. Cir. 2015) ...................................................................................... 4, 6, 7
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`100 F. Supp. 3d 371 (D. Del. 2015) ....................................................................................... 2
`
`OpenTV, Inc. v. Netflix Inc.,
`76 F. Supp. 3d 886 (N.D. Cal. 2014).................................................................................. 7, 9
`
`Personalized Media Commc’ns, LLC v. Amazon.com, Inc.,
`--- F. Supp. 3d ---, No. 13-1608-RGA, 2015 WL 4730906 (D. Del. Aug. 10,
`2015) ............................................................................................................................. 2, 7, 8
`
`ii
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 4 of 16 PageID #: 509
`
`Pragmatus Telecom, LLC v. Genesys Telecomms. Labs., Inc.,
`114 F. Supp. 3d 192 (D. Del. 2015) ....................................................................................... 3
`
`Priceplay.com, Inc. v. AOL Advertising, Inc.,
`83 F. Supp. 3d 577 (D. Del. 2015) ......................................................................................... 3
`
`Tuxis Techs., LLC v. Amazon.com, Inc.,
`No. 13-1771-RGA, 2014 WL 4382446 (D. Del. Sept. 3, 2014) .......................................... 3, 7
`
`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed. Cir. 2013), cert. granted, judgment vacated by
`WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014) ....................................... 2, 6
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014).................................................................................... 2, 4, 6, 8
`
`Rules and Statutes
`
`35 U.S.C. § 101 .................................................................................................................. passim
`
`Fed. R. Civ. P. 12(b)(6) ............................................................................................................... 2
`
`Fed. R. Civ. P. 56 ........................................................................................................................ 2
`
`
`
`iii
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 5 of 16 PageID #: 510
`
`I.
`
`INTRODUCTION
`
`Sound View Innovations, LLC’s (“Plaintiff”) Opposition (D.I. 14, “Opp’n”) reinforces
`
`that the claims of the ’593 patent are not drawn to patentable subject matter. Invoking the
`
`Federal Circuit’s recent decision in Enfish, LLC v. Microsoft Corp. to try to avoid step one,
`
`Plaintiff attempts to portray the ’593 patent as providing a specific improvement to computer
`
`functionality itself. No. 2015-1244, 2016 WL 2756255 (May 12, 2016). But Plaintiff does not
`
`and cannot show how the ’593 patent claims improve the functioning of computers or software
`
`because they do not. Rather, the patent claims take the abstract idea of managing information and
`
`preferences among members of a community and put it on a generic computer system—the
`
`functioning of the computer system itself is not improved. Similarly, Plaintiff argues that the
`
`’593 patent is “computer-centric” in an attempt to avoid scrutiny under step two. Again, nothing
`
`in the ’593 patent claims show how the business issues identified in the specification and the
`
`recitation of generic computer components in the claims provide an “inventive concept”
`
`sufficient to confer patent eligibility. Moreover, Plaintiff misstates the legal standards and
`
`effectively ignores the U.S. Patent Office’s prior rejection of nearly identical claims on § 101
`
`grounds in a similar patent with the same inventors. The Court should, respectfully, find the
`
`’593 patent invalid for claiming unpatentable subject matter.
`
`II.
`
`PLAINTIFF MISSTATES APPLICABLE LEGAL STANDARDS
`
`Plaintiff states “[a]t the motion to dismiss stage a patent claim can be found directed
`
`towards patent ineligible subject matter if ‘the only plausible reading of the patent must be that
`
`there is clear and convincing evidence of ineligibility.’” (Opp’n at 5 (citing Genetic Techs. Ltd.
`
`v. Bristol-Myers Squibb Co., 72 F. Supp. 3d 521, 526-27 (D. Del. 2014) (internal quotes omitted
`
`by Plaintiff).) Plaintiff’s statement of the law is wrong.
`
`1
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 6 of 16 PageID #: 511
`
`Notably, Plaintiff omits the Genetic Technologies Court’s citation to—and discussion of
`
`the procedural posture of—Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir.
`
`2013), cert. granted, judgment vacated by WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct.
`
`2870 (2014). Chief Judge Stark explicitly recognized that the cited decision was vacated and
`
`then on remand and thus “Ultramercial no longer has precedential effect.” Genetic Techs., 72 F.
`
`Supp. 3d at 527. He also recognized that Ultramercial was pending on remand before the
`
`Federal Circuit, “which may well respond by reinstating the ‘only plausible reading’ standard
`
`for § 101 challenges arising at the pleading stage under Rule 12(b)(6).” Id. (emphasis added).
`
`The Federal Circuit declined to resurrect the standard now urged by Plaintiff and instead
`
`affirmed the district court’s grant of a motion to dismiss. Ultramercial, Inc. v. Hulu, LLC, 772
`
`F.3d 709, 717 (Fed. Cir. 2014). As such, Plaintiff’s characterization of the standard that attaches
`
`to motions to dismiss under § 101 is incorrect.
`
`Plaintiff’s statement that “typically the courts in this District either expressly apply the
`
`‘clear and convincing’ standard or invalidate patents only when there is ‘clear and convincing’
`
`evidence of invalidity’” is similarly inaccurate. (Opp’n at 5.) As evidence of this claim, Plaintiff
`
`cites to a single case from this district which was decided on a Rule 56 motion for summary
`
`judgment. (Id. (citing Intellectual Ventures I LLC v. Symantec Corp., 100 F. Supp. 3d 371, 379-
`
`80 (D. Del. 2015).) Plaintiff ignores the clear weight of this Court’s jurisprudence on § 101
`
`motions to dismiss. This Court has repeatedly recognized that “[w]hether a claim is drawn to
`
`patent-eligible subject matter under § 101 is an issue of law” and has granted motions to dismiss
`
`without addressing or imposing the “clear and convincing” standard offered by Plaintiff. See
`
`Personalized Media Commc’ns, LLC v. Amazon.com, Inc., --- F. Supp. 3d ---, No. 13-1608-
`
`RGA, 2015 WL 4730906, at *5 (D. Del. Aug. 10, 2015) (citing In re Bilski, 545 F.3d 943, 951
`
`2
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 7 of 16 PageID #: 512
`
`(Fed. Cir. 2008); see also Tuxis Techs., LLC v. Amazon.com, Inc., No. 13-1771-RGA, 2014 WL
`
`4382446, at *7 (D. Del. Sept. 3, 2014); Pragmatus Telecom, LLC v. Genesys Telecomms. Labs.,
`
`Inc., 114 F. Supp. 3d 192, 198 (D. Del. 2015); Priceplay.com, Inc. v. AOL Advertising, Inc., 83
`
`F. Supp. 3d 577, 580 (D. Del. 2015). The Court should determine the issue of patent eligibility
`
`as a matter of law.1
`
`III.
`
`PLAINTIFF NEGLECTS TO ADDRESS THE PTAB’S PRIOR § 101 REJECTION
`
`As explained in Facebook’s opening brief, the PTAB affirmed a 35 U.S.C. § 101
`
`rejection of claims that are not patentably distinct from asserted claim 9. (Facebook’s Opening
`
`Brief, D.I. 11 (“Brief”), at 8-11.) Rather than address this rejection directly, Plaintiff attempts to
`
`sidestep the merits of Facebook’s argument in a single footnote. (Opp’n at 8-9, n.1.) First,
`
`Plaintiff claims the rejection does not apply to asserted claim 1, which is a method claim. (Id.)
`
`However, Facebook’s argument was not directed to claim 1, but to claim 9—which contains
`
`nearly the exact same language as the rejected claims of the ’239 Application. (Brief at 9-10.)
`
`Second, Plaintiff argues that “Facebook readily concedes that the ’593 patent system claims are
`
`directed to an ‘implementation on a computer,’ and withstand pre-Alice § 101 scrutiny.” (Opp’n
`
`at 8, n.1) Again, Plaintiff’s argument misses the mark. That some of the claims may be directed
`
`to a system which is implemented on a computer does not save asserted claim 9, which, as
`
`affirmed by the PTAB, is directed to software per se. (See Brief at 10 (citing D.I. 11-2 at Ex. 4 at
`
`3-4).)
`
`Plaintiff’s cursory treatment of the PTAB’s rejection and its complete failure to address
`
`1 The Court should also reject Plaintiff’s attempt to interject claim construction issues into this
`straightforward motion to dismiss. (Opp’n at 5 (citing Bancorp Servs., LLC v. Sun Life Assur.
`Co. of Canada (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012).) Nowhere in its opposition does
`Plaintiff contend that claim construction would be helpful, much less required, to decide the
`issues at hand. Indeed, Plaintiff does not propose any terms requiring construction nor any
`proposed constructions which it purports would save the ’593 patent claims from ineligibility.
`
`3
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 8 of 16 PageID #: 513
`
`the similarities between asserted claim 9 and the rejected claims of the ’239 Application is
`
`telling. Even before reaching the Alice inquiry on the balance of the claims, there can be no
`
`doubt that asserted claim 9 “fail[s] to fall within a statutory category.” (D.I. 11-2 at Ex. 4.)
`
`IV.
`
`ALICE STEP ONE – THE ’593 PATENT CLAIMS AN ABSTRACT IDEA
`
`A.
`
`Plaintiff’s Characterization Confirms that the ’593 Patent Is Directed To An
`Abstract Idea.
`
`Plaintiff’s description of the ’593 patent confirms that it is directed to an abstract idea.
`
`As Plaintiff explains:
`
`The ’593 patent is generally directed to a community interest management
`system—for use in a communications network with multiple electronic sources
`and multiple user terminals—that uses information preferences of an individual
`user as well as information preferences of other users related to that user based
`on pre-defined relationships and also at least one decision rule for each user to
`determine community information preferences.
`
`(Opp’n at 9 (emphasis added).) The abstract idea of managing information and preferences
`
`among members of a community remains “at the heart” of Plaintiff’s own characterization.
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir.
`
`2013). The Federal Circuit has made clear that mere recitation of a large number of additional
`
`steps or limitations is insufficient to turn an abstraction into something concrete. See
`
`Ultramercial, 772 F.3d at 715 (eleven steps of ordered combination merely described abstract
`
`idea); Intellectual Ventures I LLC v. Capital One Bank, N.A., 792 F.3d 1363, 1367 (Fed. Cir.
`
`2015) (added limitation of communication medium “does not render the claims any less
`
`abstract”).
`
`B.
`
`The ’593 Patent Does Not Claim An Improvement to Computer
`Functionality Itself.
`
`In its attempt to sidestep Alice step one, Plaintiff relies heavily on the Federal Circuit’s
`
`recent Enfish decision and argues that the ’593 patent claims “an improvement to computer
`
`4
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 9 of 16 PageID #: 514
`
`functionality itself.” (Opp’n at 10 (citing Enfish, 2016 WL 2756255, at *5).) However, Plaintiff
`
`does not and cannot explain specifically how computer functionality itself has been improved by
`
`the ’593 patent. Instead, Plaintiff argues that the ’593 patent improves electronic information
`
`distribution systems by allowing for the transmission of “more meaningful information from
`
`electronic information sources to terminal users in a computer network.” (Opp’n at 10.) Far
`
`from any “specific asserted improvement in computer capabilities,” Plaintiff’s argument
`
`confirms that the claims at issue here focus on “a process that qualifies as an ‘abstract idea’ for
`
`which computers are invoked merely as a tool.” Enfish, 2016 WL 2756255, at *5 (emphasis
`
`added).
`
`The Federal Circuit was clear that Enfish’s reasoning holds only where “the plain focus
`
`of the claims is on an improvement to computer functionality itself, not on economic or other
`
`tasks for which a computer is used in its ordinary capacity.” Id. Plaintiff does not contend that
`
`the ’593 patent makes computers faster, more flexible, or require less memory as was the case in
`
`Enfish. Id. at *6. Rather, Plaintiff argues that the ’593 patent improved on the prior art by using
`
`computers within a computer network to provide “more meaningful information” based on
`
`community preferences. (Opp’n at 10-11.) This is precisely a case where computers are used in
`
`their ordinary capacity (i.e., as part of a computer network) to carry out an abstract idea (i.e.,
`
`managing information and preferences among members of a community). See Appendix B.
`
`C.
`
`Facebook’s Cited Case Law Confirms that the ‘593 Patent is Directed to an
`Abstract Idea.
`
`As discussed at length in Facebook’s opening brief, case law from around the country—
`
`including the Federal Circuit—confirms that the ’593 patent is directed to an abstract idea.
`
`(Brief at 11-15.) Although Plaintiff faults Facebook for comparing the ’593 patent to other,
`
`invalidated patents (Opp’n at 11-13), the Federal Circuit’s recent Enfish decision confirms the
`
`5
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 10 of 16 PageID #: 515
`
`propriety of Facebook’s approach: “both this court and the Supreme Court have found it
`
`sufficient to compare claims at issue to those claims already found to be directed to an abstract
`
`idea in previous cases.” Enfish, 2016 WL 2756255, at *4 (emphasis added).
`
`Plaintiff does not address Facebook’s comparisons of the abstract idea of the ’593 patent
`
`to the abstract ideas of similar, invalidated patents. Instead, Plaintiff either skips directly to Alice
`
`step two—wholly ignoring the step one inquiry—or conclusorily dismisses Facebook’s
`
`comparisons without any analysis.2
`
`Specifically, Plaintiff cannot escape the similarities between the abstract ideas at issue in
`
`the patents in Capital One (i.e., displaying tailored content based on information known about
`
`the user) and this case (i.e., managing electronic information sent based on preferences derived
`
`from information known about the user and related users). See 792 F.3d at 1369-71. Plaintiff
`
`similarly ignores the import of Ultramercial to the step one analysis (i.e., claim length and
`
`complexity does not change abstraction into patentable subject matter). See 772 F.3d at 714-15.
`
`Instead, for both of these cases, Plaintiff jumps directly to step two and argues that the claims at
`
`issue described only generic computer components without sufficient particularity, as opposed to
`
`the allegedly specific components found in the claims of the ’593 patent. For the reasons
`
`discussed below in step two, Plaintiff is simply wrong. (See Section V, infra.)
`
`Plaintiff’s analysis of district court cases from this District and from California is
`
`similarly cursory. As discussed in Facebook’s opening brief, the abstract ideas at issue in
`
`2 Facebook acknowledges that it may be “relevant to ask whether the claims are directed to an
`improvement to computer functionality versus being directed to an abstract idea, even at the first
`step of the Alice analysis.” Enfish, 2016 WL 2756255, at *4. However, as discussed above, the
`’593 patent does not improve how a computer actually functions. (See Section IV B., supra.)
`Accordingly, Enfish is inapposite and any discussion of the implementation of the abstract idea is
`only relevant to Alice step two. Ultramercial, 772 F.3d at 715 (“[A]ny novelty in
`implementation of the idea is a factor to be considered only in the second step of the Alice
`analysis.”).
`
`6
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 11 of 16 PageID #: 516
`
`Personalized Media, Tuxis Techs., Morsa, and OpenTV are similar to the abstract idea of the
`
`’593 patent and all generally relate to the concept of showing information (e.g., customized
`
`presentations, targeted advertising, related products) to a user based on some information that is
`
`known about the user. (Brief at 14-15.) While the abstract ideas at issue in these cases are not
`
`identical, the undeniable similarities are certainly relevant to the first step of Alice. See Enfish,
`
`2016 WL 2756255, at *4.3
`
`V.
`
`ALICE STEP TWO – THE ’593 PATENT LACKS INVENTIVE CONCEPT
`
`A.
`
`The Limitations of the ’593 Patent Claims Do Not Confer Eligibility.
`
`First, contrary to Plaintiff’s assertions, Facebook did not conduct a cursory review.
`
`Instead, Facebook analyzed the specific limitations and components present in each of the
`
`asserted claims. It found nothing more than a lengthy recitation of instructions to apply the
`
`abstract idea of managing information and preferences among members of a community on a
`
`computer. (Brief at 15-17.) Although the claims of the ’593 patent have numerous steps,
`
`“[s]teps that do nothing more than spell out what it means to “apply it on a computer” cannot
`
`confer patent eligibility.” Capital One, 792 F.3d at 1370-71 (citing Alice Corp. Pty. Ltd. v. CLS
`
`Bank Int’l, 134 S. Ct. 2347, 2359 (2014).) Even accepting the incorrect premise that the claims
`
`recite a specific way of managing information, “[s]pecificity by itself does not bestow
`
`eligibility.” Art+COM Innovationpool GmbH v. Google, Inc., ---F. Supp. 3d ---, No. 14-217-
`
`3 Plaintiff takes issue with Facebook’s illustration of the abstract nature of the ’593 patent
`through its example of a family and guests deciding on where to order dinner. (Opp’n at 14-15.)
`Although Facebook’s example was simply meant to be illustrative, Plaintiff appears to require an
`element-by-element mapping of each of the different components of the ’593 claims. (Id.) While
`such a comparison is unnecessary to demonstrate the abstract nature of the asserted claims,
`Facebook attaches Appendix B, which shows how each and every limitation and component of
`the ’593 patent can also be performed using pen and paper, without the use of a computer, by a
`consumer survey company. See CyberSource, Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
`1372-73 (Fed. Cir. 2011) (“[A] method that can be performed by human thought alone is merely
`an abstract idea and is not patent-eligible under § 101.”).
`
`7
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 12 of 16 PageID #: 517
`
`RGA, 2016 WL 1718221, *5 (D. Del. Apr. 28, 2016) (citing Alice, 134 S. Ct. at 2358-60; Bilski
`
`v. Kappas, 561 U.S. 593, 599-601 (2011)). Unlike claims found to be eligible under Alice step
`
`two, the claims of the ’593 patent simply “recite a commonplace business method. . . using
`
`generic computer functions and conventional network operations.” DDR Holdings, LLC v.
`
`Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014.)
`
`Second, Plaintiff’s discussion of the alleged points of novelty misses the mark.4 That the
`
`Examiner did not find the specific combination of elements in the prior art is a necessary
`
`prerequisite to issuance of any patent.5 Plaintiff’s reliance on the alleged novelty of providing
`
`information based on (1) preferences of a user and (2) preferences of users related to the user and
`
`(3) at least one decision rule, does not “do significantly more than simply describe [the] abstract
`
`method.” Ultramercial, 772 F.3d at 715. Nor does Plaintiff explain how these alleged
`
`distinctions over the prior art have any bearing whatsoever on Alice step two; they do not. See
`
`Personalized Media, 2015 WL 4730906, at *3 (“That the method was a new means of
`
`transmitting information is not relevant to the § 101 analysis.”).
`
`B.
`
`The ’593 Patent Addresses A Business Problem.
`
`In its search for an “inventive concept” to satisfy Alice step two, Plaintiff argues that the
`
`inventors of the ’593 patent “provided computer-specific solutions to problems they recognized
`
`in state-of-the art electronic systems.” (Opp’n at 18 (citing ’593 Patent at 1:33-37).) Yet
`
`
`4 Plaintiff also wrongfully claims that Facebook “conced[ed] that ‘the prior art did not implement
`the abstract idea in quite the same way’ as the ’593 patent.” (Opp’n at 17 (citing Brief at 18).)
`Critically, the cited passage does not reflect Facebook’s argument, but rather the arguments
`applicants made before the PTO in distinguishing their alleged invention over the prior art.
`(Brief at 18.) Facebook never “conceded” anything about the alleged novelty of the ’593 patent.
`5 Simply because an Examiner was unable to find any such combinations does not mean that the
`combinations do not exist. Facebook intends to present prior art invalidating the claims of the
`’593 patent at the appropriate juncture.
`
`8
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 13 of 16 PageID #: 518
`
`Plaintiff cannot explain what the allegedly “computer-specific solutions” are or how those
`
`solution “overcome[] a problem specifically arising in a particular technological realm.” (Id.
`
`(citation omitted).) The passage in the specification cited by Plaintiff offers no guidance: “An
`
`object of the present invention is to provide an electronic information management method of the
`
`above known type and a related system but wherein the electronic information management
`
`method is better suited to the information needs of a user for such method and related devices.”
`
`(’593 Patent at 1:33-37 (emphasis added).) Finding ways to provide information that is “better
`
`suited” to the needs of consumers is an age-old problem present in many walks of life and is in
`
`no way specific to computers or “a particular technological realm.” (Opp’n at 18.)6 Similarly,
`
`providing information that is “more interesting for the specific first user than the information
`
`they would get based on their own preferences only” is not a “computer-specific solution” to this
`
`problem. (Opp’n at 8.) At best, Plaintiff has described a well-known business problem and a
`
`generic means of solving that problem—neither the problem nor the solution can be remotely
`
`characterized as “computer-specific.”
`
`C.
`
`The ’593 Patent Recites Generic Components Using Functional Language.
`
`Contrary to Plaintiff’s insinuation, Facebook does not argue that “claims must be directed
`
`to ‘specific hardware’ to claim an inventive concept.” (Opp’n at 18.) Rather, Facebook’s
`
`argument recognizes that “wholly generic computer implementation is not generally the sort of
`
`‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a
`
`drafting effort designed to monopolize the [abstract idea] itself.’” Alice, 134 S. Ct. at 2358
`
`(citations omitted). Although Plaintiff argues that the ’593 patent identifies “a specific computer
`
`
`6 Indeed, the long list of cases cited in Facebook’s opening brief proves this point. (See Brief at
`7, 13-15; see also OpenTV, Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014)
`(customizing information for one’s intended market “is as old as the saying, ‘know your
`audience.’”).
`
`9
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 14 of 16 PageID #: 519
`
`architecture containing multiple components,” (Opp’n at 19), all of these components are
`
`described using purely functional and generic terms—terms which merely describe what the
`
`components do. The naming conventions employed by the inventors strongly suggests that the
`
`components were nothing more than generic “devices and/or network elements” which would
`
`have been known in the art and cannot confer patent eligibility under Alice step two. (See Brief
`
`at 16-18.)
`
`VI. CONCLUSION
`
`The ’593 patent is invalid because it is directed to an abstract idea and the asserted claims
`
`lack any inventive concept sufficient to confer patent eligibility. Nothing in the ’593 patent is
`
`directed to any improvement to computer functionality itself and does not provide a computer-
`
`centric solution to a computer-centric problem. Accordingly, the Court should grant Facebook’s
`
`Motion to Dismiss.
`
`10
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 15 of 16 PageID #: 520
`
`
`
`
`
`
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`
`/s/
`
`
`
`
`Jack B. Blumenfeld (#1014)
`Karen Jacobs (#2881)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`kjacobs@mnat.com
`
`Attorneys for Defendant
`
`
`11
`
`
`
`OF COUNSEL:
`
`Heidi Keefe
`Sarah Whitney
`Elizabeth Stameshkin
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843-5000
`
`Phillip E. Morton
`COOLEY LLP
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, DC 20004
` (202) 842-7800
`
`
`
`May 26, 2016
`
`

`
`Case 1:16-cv-00116-RGA Document 17 Filed 05/26/16 Page 16 of 16 PageID #: 521
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 26, 2016, I caused the foregoing to be electronically
`
`
`
`
`
`filed with the Clerk of the Court using CM/ECF, which will send notification of such filing to all
`
`registered participants.
`
`
`
`
`
`I further certify that I caused copies of the foregoing document to be served on
`
`May 26, 2016, upon the following in the manner indicated:
`
`John C. Phillips, Jr., Esquire
`Megan C. Haney, Esquire
`PHILLIPS, GOLDMAN, MCLAUGHLIN & HALL, P.A.
`1200 North Broom Street
`Wilmington, DE 19806-4204
`Attorneys for Plaintiff
`
`Alan S. Kellman, Esquire
`Tamir Packin, Esquire
`Tom BenGera, Esquire
`Edward Geist, Esquire
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Attorneys for Plaintiff
`
`
`
`
`
`
`
`
`
`
`
`
`
`VIA ELECTRONIC MAIL
`
`VIA ELECTRONIC MAIL
`
`/s/ Karen Jacobs
`
`
`
`
`Karen Jacobs (#2881)