Case 1:16-cv-00455-RGA Document 357 Filed 01/02/18 Page 1 of 2 PageID #: 24312
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`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
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`1201 NO R TH M AR KE T S TR E ET
`P.O. B O X 1347
`W I L M IN G TO N, DE L AWARE 19899-1347
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`
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`(302) 658-9200
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`(302) 658-3989 FAX
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`JACK B. BLUMENFELD
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`(302) 351-9291
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`(302) 425-3012 FAX
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`jblumenfeld@mnat.com
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`
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`The Honorable Richard G. Andrews
`United States District Court
` for the District of Delaware
`844 North King Street
`Wilmington, DE 19801
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`January 2, 2018
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`VIA ELECTRONIC FILING
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`Re:
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`Acceleration Bay LLC; C.A. Nos. 16-453 (RGA); 16-454 (RGA); and 16-455 (RGA)
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`Dear Judge Andrews:
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`Defendants write to request the Court’s guidance on how to proceed with respect to the
`patent ineligibility of the six asserted “Computer Readable Medium” claims of the patents-in-
`suit. We have raised this issue with Plaintiffs’ counsel several times, who have responded only
`they “will provide a response in the future.” For the reasons set forth below, we believe that
`there are good reasons to address this issue now.
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` At the November 22 hearing, counsel for Plaintiff agreed that if the computer readable
`medium includes carrier waves, those claims are patent ineligible.
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`[PLAINTIFF COUNSEL]: The dispute here is the scope of computer-readable medium,
`which is our position is that in the context of the claims and the specification, it should be
`limited to non-fleeting medium.
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`THE COURT: Do you agree [if] this includes fleeting medium such as carrier waves,
`that the claims are ineligible?
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`[PLAINTIFF COUNSEL]: The short answer is yes. (Tr. 65-66)
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` The Court’s December 20, 2017 Phase 1 Claim Construction Order (D.I. 386 in C.A. No.
`16-453) adopted Defendants’ proposed construction and held that “computer readable medium”
`(term 27) is "any medium for storing or transporting computer readable instructions, including
`memory, storage devices, carrier waves, and communications links." Based on that construction,
`Defendants believe – as Plaintiff’s counsel had confirmed – that the “computer readable
`medium” claims are invalid as a matter of law for including ineligible subject matter, including
`carrier waves. See, e.g., Mentor Graphics Corp., 851 F.3d at 1294; Kinglite Holdings Inc. v.
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`

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`Case 1:16-cv-00455-RGA Document 357 Filed 01/02/18 Page 2 of 2 PageID #: 24313
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`The Honorable Richard G. Andrews
`January 2, 2018
`Page 2
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`Micro-Star Int’l Co. Ltd., C.A. No. 14-03009-JVS, 2016 WL 4205356, at *15-18 (C.D. Cal. May
`26, 2016).
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`On December 21, 2017, Defendants, mindful of the Court’s direction that the Parties
`should discuss limits for summary judgment briefing, requested that Plaintiff is stipulate to
`invalidity of the six computer readable media claims, subject to its right to challenge the claim
`construction on appeal. If Plaintiff would not so stipulate, Defendants also requested that
`Plaintiff agree to a shortened briefing schedule to resolve the issue before summary judgment
`motions are filed on February 2, 2018. Given Plaintiff’s failure to respond, Defendants request
`guidance on how to proceed.
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`Defendants submit that the issue is one of law, that it has already been resolved in
`Defendants’ favor, and that getting clarity on this issue before summary judgment motions are
`filed would streamline the proceedings. If the issue is resolved as Defendants believe it should
`be, the summary judgment briefing will involve only ten, instead of sixteen claims, thus reducing
`the burden on the Court and the parties. Defendants believe that the issue could be submitted on
`letter briefs of no longer than three pages.
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`Respectfully,
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`/s/ Jack B. Blumenfeld
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`Jack B. Blumenfeld (#1014)
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`JBB/rah
`cc:
`Clerk of Court (Via Hand Delivery)
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`All Counsel of Record (Via Electronic Mail)
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