Case 1:16-cv-00455-RGA Document 424 Filed 05/23/18 Page 1 of 5 PageID #: 31785
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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
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`
`JACK B. BLUMENFELD
`(302) 351-9291
`jblumenfeld@mnat.com
`
`
`
`May 23, 2018
`
`
`VIA ELECTRONIC FILING
`
`The Honorable Richard G. Andrews
`United States District Court
` for the District of Delaware
`844 North King Street
`Wilmington, DE 19801
`
`Re:
`
`Dear Judge Andrews:
`
`
`Acceleration Bay LLC; C.A. Nos. 16-453 (RGA); 16-454 (RGA); and 16-455 (RGA)
`
`At the May 17, 2018 oral argument, Defendants explained their position that there are two
`separate tests for patent ineligibility: a Statutory Eligibility Test and an Alice Eligibility Test. First,
`the Statutory Eligibility Test requires that the claim be (1) construed and (2) compared to the four
`categories listed in 35 U.S.C. §101. If the claim is not directed to one of the four statutory categories
`in §101, the claim is patent ineligible and the analysis ends there. Defendants explained that because
`the computer readable media claims at issue here were properly construed to cover carrier waves,
`they were patent ineligible under the Statutory Eligibility Test. See In re Nuijten, 500 F.3d 1346,
`1354 (Fed. Cir. 2007) (“The claim must be within at least one category, so the court can proceed to
`other aspects of the § 101 analysis.”)
`
`Second, if the claim is directed to one of the four statutory categories under §101, the Alice
`Eligibility Test is performed. The Alice test requires that the subject matter of the claim be
`“considered as a whole” and evaluated for whether it is directed to an abstract idea, law of nature or
`physical phenomena. Plaintiff argued that, under that “considered-as-a-whole” analysis, the asserted
`computer readable media claims should be considered method claims and therefore patent eligible.
`(Tr. 64:2-7; 72:9-14). The Cybersource case relied on by Plaintiff did not address the Statutory
`Eligibility Test. It addressed only the Alice Test. Accordingly, the holding in Cybersource cannot be
`considered to have altered the Statutory Eligibility Test to include a “considered-as-whole” inquiry,
`because the Court simply did not consider the Statutory Eligibility Test. It found the claims at issue
`to be ineligible under Alice and did not address whether those same claims would also be invalid
`under the Statutory Eligibility Test.
`
`The Court asked the parties to submit authority dealing with statutory patent ineligibility after
`the 2011 Cybersource case. Accordingly, Defendants refer the Court to the following authority,
`which confirms that the Statutory Eligibility Test is a separate and distinct test for patent eligibility
`from the Alice Eligibility Test and that the asserted computer readable media claims at issue here are
`all invalid as encompassing patent ineligible carrier waves:
`
`

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`Case 1:16-cv-00455-RGA Document 424 Filed 05/23/18 Page 2 of 5 PageID #: 31786
`
`The Honorable Richard G. Andrews
`May 23, 2018
`Page 2
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`1.
`
`Mentor Graphics Corp. v. Eve-USA, Inc., 851 F.3d 1274, 1294 (Fed. Cir. 2017), cited in
`Defendants’ briefs, resolves this issue in Defendants’ favor. There, the Federal Circuit found
`that claims 19, 24, 28, 30 and 33 of U.S. Patent No. 7,069,526 to be patent ineligible because
`“the claims embrace unpatentable electromagnetic carrier waives.” The claims at issue in
`Mentor Graphics are similar to those at issue here, in that they were directed to Computer
`Readable Medium containing instructions for performing a method. For example, claim 19
`of the ’526 patent at issue in Mentor Graphics recited:
`
`19. A machine-readable medium containing instructions that when
`executed on a data processing system causes the system to perform a
`method for debugging an electronic system having instrumentation
`circuitry included therein, wherein the electronic system is described
`with a hardware description language (HDL), the method comprising:
`
`activating at least one aspect of the instrumentation circuitry available
`for debugging the electronic system via the instrumentation circuitry,
`the aspect selected from the group consisting of design visibility,
`design patching and design control;
`
`determining configuration information based on the certain design
`visibility, design patching or design control aspects that are activated;
`
`configuring the instrumentation circuitry in accordance with the
`configuration information;
`
`receiving debug data from the configured instrumentation circuitry
`operating within the electronic system;
`
`translating the debug data into HDL-related debug information; and
`
`relating the HDL-related debug information to the HDL description
`of the electronic system.
`
`Although the CRM claims at issue in Mentor Graphics were directed to method steps, the
`Federal Circuit did not engage in the Alice analysis proposed by Plaintiff to consider the
`invention “as a whole” and convert those claims into method claims for purposes of deciding
`the Statutory Eligibility Test. Rather, the Federal Circuit held the claims to be patent
`ineligible because they “cover carrier signals themselves. The presence of other acts recited
`in the claims does not transform a claim covering a thing – the signal itself – into one
`covering the process by which that thing is made…[W]hen a claim covers both statutory and
`non-statutory embodiments, it is not eligible for patenting.” Id. (internal citations and
`quotation marks omitted).
`
`2.
`
`Allvoice Developments US, LLC v. Microsoft Corp., 612 F. App'x 1009, 1017 (Fed. Cir.
`2015) (nonprecedential). The Federal Circuit, citing to both Nuitjen and Alice, confirmed
`that the test for statutory eligibility is separate and apart from the test for Alice eligibility:
`
`

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`Case 1:16-cv-00455-RGA Document 424 Filed 05/23/18 Page 3 of 5 PageID #: 31787
`
`The Honorable Richard G. Andrews
`May 23, 2018
`Page 3
`
`
`Section 101 thus specifies four independent categories of inventions
`or discoveries that are eligible for protection: processes, machines,
`manufactures, and compositions of matter. … If a claim is drawn to
`subject matter that falls outside the four statutory categories of § 101,
`it is not patent eligible. In re Nuitjen, 500 F.3d 1346, 1354 (Fed. Cir.
`2007). This is true without regard to whether it might otherwise be
`ineligible because it encompasses a law of nature, natural
`phenomenon, or abstract idea. See Alice Corp. Pty. Ltd. v. CLS Bank
`Int’l, 124 S. Ct. 2347, 2354 (2014).
`
`3.
`
`4.
`
`5.
`
`Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir.
`2014). The Federal Circuit addressed both the Statutory Eligibility Test and Alice Eligibility
`Test tests and confirmed that they are separate. At issue were (1) apparatus claims directed
`to a “device profile” claims and (2) method claims directed to a method for creating a device
`profile. The Court noted the statutory requirement that “[f]or all categories except process
`claims, the eligible subject matter must exist in some physical or tangible form” and found
`that apparatus “device profile” claims, as properly construed, were not directed to statutory
`subject matter. The Court rejected the patentee’s argument that the claimed “device profile”
`was in fact "hardware or software within a digital image processing system," finding that
`“position is not supported by the claim language.” Regarding the method claims, the Court
`noted they were in a statutory category (process). However, the Court went on to apply the
`Alice Eligibility Test, and found that, when “considered as a whole,” the method claims were
`“directed to an abstract idea” and “not patent eligible under section 101.”
`
`Kinglite Holdings Inc. v. Micro-Star Int'l Co., No. CV1403009JVSPJWX, 2016 WL
`4205356, at *3, 9-10 (C.D. Cal. May 26, 2016): At issue were both “computer useable
`medium” claims and method claims. The court conducted a separate “Alice Analysis” and
`“Nuitjen Analysis.” First, the court looked at the “central idea” of the claims and found that
`both the computer useable medium and method claims were invalid under Alice Eligibility
`Test as being directed to an abstract idea. It noted that “a computer readable medium
`limitation or digital data limitation do not convert a patent-ineligible idea into a patent-
`eligible one.” The court conducted a separate “Nuitjen Analysis,” but only for the
`“computer useable medium” claims. For that test, the court focused on claim construction
`and concluded the claims “encompass transitory forms of signal transmission” and are
`therefore “invalid because those transitory embodiments are not directed to statutory subject
`matter.”
`
`Icon Health & Fitness, Inc. v. Garmin Int'l, No. 1:11-CV-166-RJS, 2015 WL 5714248, at
`*3–5 (D. Utah Sept. 29, 2015), aff'd sub nom. Icon Health & Fitness, Inc. v. Polar Electro
`Oy, 656 F. App'x 1008 (Fed. Cir. 2016). The court granted judgment on the pleadings after
`finding the claims, properly construed, covered a “data signal” that was not limited to
`statutory subject matter. The court rejected patentee’s argument that the “data signal” claims
`were actually process claims, finding: “Although claims 1 and 2 mention certain acts, they
`describe the data signal and not the process through which the data signal is created.”
`
`

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`Case 1:16-cv-00455-RGA Document 424 Filed 05/23/18 Page 4 of 5 PageID #: 31788
`
`The Honorable Richard G. Andrews
`May 23, 2018
`Page 4
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`6.
`
`The Manual of Patent Examining Procedure (MPEP) 2106 confirms that there are both
`Statutory and Alice Eligibility Tests, and that the former focuses on claim construction, and
`the latter on the claim as a whole.
`
`
`See The United States Patent and Trademark Office – Manual of Patent Examining Procedure at
`Section 2016 (located at https://www.uspto.gov/web/offices/pac/mpep/s2106.html).
`
`
`
`
`
`

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`Case 1:16-cv-00455-RGA Document 424 Filed 05/23/18 Page 5 of 5 PageID #: 31789
`
`The Honorable Richard G. Andrews
`May 23, 2018
`Page 5
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`
`
`
`Respectfully,
`
`/s/ Jack B. Blumenfeld
`
`Jack B. Blumenfeld (#1014)
`
`JBB/dlw
`cc:
`All Counsel of Record (Via Electronic Mail)
`
`
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`
`