Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 1 of 177 PagelD #: 7415
`
`EXHIBIT 4
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 2 of 177 PagelD #: 7416
`
`THIS EXHIBIT HAS BEEN
`~REDACTEDIN ITS ENTIRETY
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 3 of 177 PagelD #: 7417
`
`EXHIBIT 5
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 4 of 177 PagelD #: 7418
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`IN AND FOR THE DISTRICT OF DELAWARE
`
`ACCELERATION BAY LLC,
`Plaintiff,
`
`vs.
`
`INC.,
`ACTIVISION BLIZZARD,
`a Delaware Corporation,
`Defendant.
`
`ACCELERATION BAY LLC,
`Plaintiff,
`
`vs.
`
`ELECTRONIC ARTS INC.,
`Defendant.
`
`ACCELERATION BAY LLC,
`Plaintiff,
`
`vs.
`
`TAKE-TWO INTERACTIVE
`
`INC., ROCKSTAR
`SOFTWARE,
`GAMES,
`INC. and 2K SPORTS,
`INC.,
`
`Defendants.
`
`:
`:
`
`:
`
`:
`:
`
`:
`
`:
`:
`
`:
`:
`
`CIVIL ACTION
`
`NO. 15-228 (RGA)
`
`CIVIL ACTION
`
`NO. 15-282 (RGA)
`
`CIVIL ACTION
`
`NO. 15-311 (RGA)
`
`Wilmington, Delaware
`Friday, February 12, 2016
`3:42 o'clock, p.m.
`
`BEFORE:
`
`HONORABLE RICHARD G. ANDREWS, U.S.D.C.J.
`
`Valerie J. Gunning
`Official Court Reporter
`
`10
`
`il
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`
`
`
`
`1 of 26 sheets
`
`
`
`Page 1 to 1 of 62
`
`02/16/2016 09:09:30 PM
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 5 of 177 PagelD #: 7419
`
`14
`
`16
`
`1.
`2
`3
`
`4
`5
`6
`7
`8
`9
`10.
`11
`
`25
`
`infringement contentions, so we're now into what happens
`after he has providing infringement contentions. Right?
`MR. TOMASULO: Correct. So if the case is as TI
`
`1
`2
`3
`
`like that.
`
`But it does not make sense to me to be reviewing
`30(b)(6) topics until the case is defined by infringement
`
`described it, then we could provide a witness. If the case
`is about something that they want to explore, then I don't
`know howto prepare a witness.
`THE COURT: Well, so --
`MR. TOMASULO: That gets to the topics.
`THE COURT: So, all right. And why do you
`say you've gotthis great big hurry to get these depositions
`in?
`
`contentions. So get the infringement contentions in, meet
`4
`and confer. You know,the defendants will get you witnesses
`5
`6 when you have an understanding of what these witnesses are
`7
`going to be testifying about.
`8
`MR. TOMASULO: Thank you, your Honor.
`9
`MR. FRANKEL: Your Honor, if I could just ask
`10
`one questionbriefly.
`1
`The defendants havefiled motions for -- have
`
`We have given very detailed complaints. They
`
`25
`
`THE COURT: Or maybeyou filed a notice.
`
`the case.
`
`15
`
`17
`
`
`
`
`filed petitions for enter partes review.
`12
`MR. FRANKEL: Yes. I would just like to, you
`12
`THE COURT: Okay.
`13
`know,briefly respond to these issues.
`13
`MR. FRANKEL: And I imagine in the unlikely
`14
`Thefirst point is the hurry is, we have people
`14
`
`
`15 reviewing source code now without the benefit of documents,|15 event that those petitions are granted, they may consider a
`
`16 and having the depositions will make the source code review|16 motion to stay.
`17 more efficient and more effective. Beyond that, we have a
`17
`THE COURT: That's true.
`18
`number of deadlines that are coming up in the case. The
`18
`MR. FRANKEL: We have beentrying --
`19
`case is a year old at this point, and among those deadlines
`19
`THE COURT: Or I mean I assume that's true. In
`
`are picking the ESI search terms for e-mail discovery.20 20=fact, haven't you filed such a motion already?
`
`
`
`21. ‘Again, we are two-and-a-half months awayfrom starting the|21 MR. TOMASULO: No.
`22
`claim construction process and then there are other
`22
`THE COURT: I thought you said --
`23
`deadlines coming up, and there are a lot of depositions that
`23
`MR. FRANKEL: No. They have not moved to stay
`24 we needto take.
`24
`
`
`
`
`
`are not the six page pro forma complaints that identify the
`1
`features. His description of the technology that we're
`2
`interested in is the technology that we're interested in.
`3.
`4 That's what we've talked about in our meet and confers.
`5
`If you take a look at the topics, they are
`6
`specific and they are directed to those issues. And the one
`7
`point he mentioned about the situation where there's a
`8
`network of servers that appears, that is described in the
`9
`complaint, and I've identified those paragraphs to
`10
`defendants’ counsel.
`
`So wethink they've been given fair notice of
`11
`12 what our theoryis and we're going to give our infringement
`13
`contentions, and we don't wantto wait until April or May to
`14
`start this process.
`15
`We gave them specific topics --
`16
`THE COURT:All right.
`17
`MR. FRANKEL: Yes.
`
`MR. TOMASULO: Wefiled a notice. I think we
`1
`are required to file a notice, so we did do that.
`2.
`THE COURT: Well, good that youdid.
`3
`MR. BLUMENFELD: Some Judgesrequireit.
`4
`THE COURT: Okay. I don’t think I actually do,
`5
`but I do like to know about such things.
`6
`But, in any event, you're unlikely to be making
`7
`any motions until you see how -- until six months go by,
`8
`9 more or less, right, and that you either get an inclusion
`10
`decision or not?
`
`MR. TOMASULO: We-- I don't know when we'll
`11
`12 make such a motion, but I think what he's going to ask is
`13
`that if we don't hold it against them that he -- the status
`14
`of taking depositions.
`15
`THE COURT: Well, I would say -- you know, I
`16
`17
`
`MR. TOMASULO: And I don't have--
`
`actually --
`
`THE COURT: So just on that topic, I did look at
`18
`THE COURT: Well, so, you get them the
`18
`
`
`19 infringement contentions on March 2nd. You know, you can't|19 the docket, because I thought part of what yousaid,
`
`really schedule depositions until you have them. After you20s 20=Mr. Frankel, was that the defendants had noticed four
`
`
`get them the infringement contentions, since you both seem21° 21=depositions.
`
`22
`to understand whatthe architecture is, talk to each other.
`22
`MR. FRANKEL: The defendants noticed four
`23
`~=Relate, you know, because I also understandpart of their
`23
`depositions, and a month ago when we were here, agreed to
`
`complaint is, you know, your 30(b)(6) topics are too general24 24=‘proceed with these depositions.
`
`
`or too vague, or they don't know what they are, something25 THE COURT: Well, but just in terms of noticing 25
`
`
`5 of 26 sheets
`02/16/2016 09:09:30 PM
`Page 14 to 17 of 62
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 6 of 177 PagelD #: 7420
`
`
`38
`
`40
`
`it.
`
`it
`
`right?
`
`THE COURT: Okay.
`MR. FRANKEL: If they do haveit, we wouldlike
`
`THE COURT: Okay. So that issue is resolved;
`
`Those studios, we wentto their people and we
`got -- that’s how we got the source codein thefirst place
`and that's the source code they reviewed.
`Whentheysay that there haven't been technical
`
`1
`likely that they have the design documents that describe the
`1
`2
`‘types of networks that their code creates, and that's what
`2
`3
`3. we wanted to get from defendants.
`4
`4
`THE COURT: Okay. Design documents. Does
`5
`5 Demonware have design documents?
`6
`6
`MR. TOMASULO: The way these -- I don't know.
`MR. TOMASULO: Aslongasit's what I said and
`7
`7
`The answeris, the way these games are -- these two games
`not what he said, because what hesaid is not correct.
`8
`8
`werebuilt by twodifferent, they're called studios.
`THE COURT: Well, what I thought hesaidis,
`9
`9
`THE COURT: Okay.
`10 what I thought we agreed on, there are two principles here,
`10
`MR. TOMASULO: And so those studios -- for Call
`11.
`one of which is Demonwareis a wholly-owned subsidiary, so
`11.
`of Duty, there have been different studios over the years.
`12
`you do have control and access over whateverit is they have
`12 And so those-- that studio is an entity unto itself even
`
`
`13 though those twostudios, say like Sledgehammer are owned by|13 even though they're a separate company.
`14 Activision.
`14
`And the secondthing is that to, if they have
`15
`15
`design documentsfor these things, you're going to find that
`16
`16
`out and produce them. And that sounded to me like what you
`17.
`17
`agreed to what I said. It didn't sound to me any different
`18
`18
`than what hesaid.
`
`
`
`
`
`
`
`
`
`I thought -- yes. We'll do what
`MR. TOMASULO:
`19
`documents produced, that's just simply incorrect.
`19
`‘I said, whichis to look for the design documents that are
`20
`THE COURT: And so --
`20
`relevant to Call of Duty, and we are not withholding
`21
`MR. TOMASULO: They're --
`21
`anything like that. Ali of those things, if they were
`22
`THE COURT: So he's saying there should be
`22
`relevant, they would have beenat the studio in the first
`23
`design documentsfor Call of Duty. You are saying, I take
`23
`
`24=it, we've produced what we have and we looked at Demonware|24 place.
`25
`‘for these things, too. Is that right?
`25
`THE COURT: Okay.
`
`41
`
`MR. TOMASULO: Well, this is the first I've
`
`1
`
`MR. TOMASULO: But we'll also ask Demonware and
`
`39
`
`44
`
`find them.
`
`2 we'll do what-- we'll ask Demonwareif they have these
`‘heard of a specific request that we go look for Demonware's
`2
`3.
`kinds of documents that are relevantto Call of Duty.
`supposedly design documents.
`3.
`4
`THE COURT: Okay. All right.
`Whatever documentsthe studio --
`4
`5
`MR. TOMASULO: And we'll produce them if we can
`THE COURT:
`Solet's take care of that.
`5
`6
`MR. TOMASULO: Okay.
`6
`THE COURT: Okay.
`7
`THE COURT: Because you're willing to do it. So
`7
`MR. FRANKEL: Your Honor, I think we are close,
`8
`can you contact Demonwarein the next ten days and find out
`8
`but I just want to confirm that the fact that Demonwareis a
`9
`9 whether they have any design documents, advise Mr. Frankel
`subsidiary is not going to be a basis for them to be less
`10
`10
`if they do, and then promptly get them if they do. And if
`involved in the discovery here, becauseit's -- you know,
`11.
`11.
`they don't, advise them ofthat.
`
`12 12__it's not just for Call of Duty. They designed a kit.MR. TOMASULO: So there's a specific type of
`
`13
`document called a technical design document. He's a
`13
`THE COURT: Well, you know, we're nottalking
`14
`software engineer, so he probably knows whatthat is, All
`14
`about discovery generally. We're talking about core
`15
` wecan ask Demonware,if they have any CDDsthat were
`15
`technical documents, and for core technical documents,
`16
`relevant, or CDs or something simitar that were relevant to
`16
`they're a wholly-ownedsubsidiary.
`17
`how Call of Duty operates.
`17
`Activision, if they're the one who have the
`18
`THE COURT: Okay.
`18
`relevant technical documents, Activision needs to get them
`19
`MR. FRANKEL: Your Honor, this is exactly what
`19
`from Demonware, and I think twice now, Mr. Tomasulo has said
`20 we clearly asked for in correspondence and in the meet and
`20
`he would.
`MR. TOMASULO: What I want-~ there is a
`21
`~=confer. Demonware, as a wholly-owned subsidiary, be a part
`21
`
`22~~of the discovery process, including core technical 22~~distinction here, and what -- Demonwareis not an accused
`
`23=discovery, andif it comes downtoit, depositions. If 23 product. They have more -- so they have some files that are
`
`24
`all -- and I think counsel has agreed that wewill get that
`24
`incorporatedinto the client side server, into the client
`[ 25
`discovery from them. If they don't haveit, they don't have
`25
`side code for Call of Duty. That was produced, and we'll go
`11 of 26 sheets
`02/16/2016 09:09:30 PM
`Page 38 to 41 of 62
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 7 of 177 PagelD #: 7421
`
`EXHIBIT 6
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 8 of 177 PagelD #: 7422
`
`Gage 2:16-cv-00737-SJO-MBWitBBSEPESDSHICTCOURPage 1 of frifpage ID #:637
`CENTRALDISTRICT OF CALIFORNIA
`pend
`—
`
`CIVIL MINUTES - GENERAL
`
`Closed
`JS-5/ISS-6
`Scan Only _
`
`CASE NO.: CV_16-00737 SJO (MRWx)
`
`DATE: July 25, 2016
`
`Activision Publishing, Inc. v. xTV Networks LTD., et al.
`TITLE:
`ied aiNE ETSEA SESS ASH SSAAIANSI ENT SEY NS SSSCS AATRS SGTSA SS SSet
`ee eeeeeeeeaaee a aa eeee ee eeeeee aaSeSee Se So StSe eet eetce
`
`PRESENT: THE HONORABLE 8S. JAMES OTERO, UNITED STATES DISTRICT JUDGE
`
`Victor Paul Cruz
`Courtroom Clerk
`
`Not Present
`Court Reporter
`
`COUNSEL PRESENT FOR PLAINTIFF:
`
`COUNSEL PRESENT FOR DEFENDANTS:
`
`Not Present
`
`Not Present
`
`PROCEEDINGS(in chambers): ORDER GRANTING DEFENDANTS’ MOTION TO DISMISS
`PLAINTIFF'S FIRST AMENDED COMPLAINT[Docket No. 27]
`
`This matter is before the Court on Defendants xTV Networks, Ltd. and xTV Networks US, Inc's.,
`(together, "Defendants")' Motion to DismissPlaintiffs First Amended Complaint("Motion"), filed
`April 26, 2016. Plaintiff Activision Publishing, Inc. ("Plaintiff") opposed the Motion ("Opposition")
`on May 10, 2016, and Defendantsreplied ("Reply") on May 17, 2016. On May 16, 2016, the Court
`invited the parties to file supplemental briefs in light of new authority from the United States Court
`of Appeals for the Federal Circuit. Defendants filed their supplemental brief ("Defendants'
`Supplemental Brief") on June 6, 2016, and Plaintiff filed its supplemental brief (‘Plaintiff's
`Supplemental Brief’) on June 13, 2016. The Court found this matter suitable for disposition
`without oral argument and vacated the hearing set for May 23, 2016. See Fed. R. Civ. P. 78(b).
`For the reasonsstated below, the Court GRANTS Defendants' Motion.
`
`I.
`
`FACTUAL AND PROCEDURAL HISTORY
`
`Plaintiff commencedthe instant patentlitigation against Defendants on February 2, 2016 and filed
`its First Amended Complaint for Patent Infringement("FAC") on April 11,2016. (See Compl., ECF
`No. 1; FAC, ECF No. 22.) Inits FAC, Plaintiff alleges that Defendantsdirectly infringe U.S. Patent
`No. 6,549,933 ("the '933 Patent") through their manufacture, use, sale, importation, licensing
`and/or offering for sale of the following products: "xTV Now," "Digital Signage," "Compute Stick,"
`and related software and services ("Accused Products").
`(FAC §f[ 13, 31-35.) Plaintiff further
`alleges that Defendantsindirectly infringe the '933 Patent by contributing to and actively inducing
`others, including end user customers, to directly infringe the '933 patent by their use, sell, import,
`and/or offer for sale of the Accused Products.
`(FAC Jf 36-42.)
`
`* Previously named defendant xTVNow, Inc. was dismissed from this action without
`prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1) on March 8, 2016.
`(See
`Notice of Dismissal as to xTVNow, Inc., ECF No. 15.)
`
`Page 1 of
`
`16
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 9 of 177 PagelD #: 7423
`
`Gage 2:16-cv-00737-SJO-MRWi7PBSETERSpistaOTCARPage 2 of 16 Page ID #:638
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 16-00737 SJO (MRWx)
`
`DATE: July 25, 2016
`
`titled "Managing, Accessing, and Retrieving Networked Information Using
`The '933 Patent,
`Physical Objects Associated with the Networked Information,” issued on April 15, 2003, and the
`application leading to the '933 Patent wasfiled on August 4, 1998.
`(FAC { 30, Ex. K ("933
`Patent”).) The '933 Patent claims network-based systems for managing information through the
`use of independently portable physical objects. (See '933 Patent cols. 13-18.) The '933 Patent
`contains three independent claims—claims 1, 28, and 55—and seventy-seven (77) dependent
`claims. (/d.) Plaintiff alleges that Defendants infringe at least claims 28 and 55, and Plaintiff does
`not appear to challenge this assertion in its Opposition.
`(FAC [J 31-33, 38-40; Opp'n 8-15, ECF
`No. 28.) Claims 28 and 55 readin their entirety:
`
`28.
`
`(ii)
`
`A method of information management in a network-based system,
`comprising the stepsof:
`(a)
`reading an ID (referred to as a Thing ID) from an independently
`portable physical object that is a data storage device (referred to as
`an Informative Thing), wherein:
`(i)
`the Thing ID represents an identity fo the Informative Thing;
`and
`the Thing ID is associated with information stored at an
`information store separate from the Informative Thing;
`determining a location for where the information is stored based on
`the Thing ID; and
`retrieving the information associated with the Informative Thing form
`the network-based system using the Thing ID.
`
`(bo)
`
`(c)
`
`(‘933 Patent col. 14 |. 62-col. 15 |. 10 [emphasis added].)
`
`55. An article of manufacture comprising an independently portable physical object
`that is a data storage device (referred to as an Informative Thing), wherein;
`(a)—the Informative Thing stores and ID (referred to as a Thing ID),
`thereon, wherein the Thing ID represents an identity of the Informative
`Thing;
`(b)—the Thing ID is associated with information stored at an information
`store separate from the Informative Thing on a network-based system;
`and
`the Thing ID is used to determine a location for wherethe information
`is stored and retrieve the information associated with the Informative
`Thing from the information store.
`
`(c)
`
`(‘933 Patent col. 16 Il. 34-47 [emphasis added].)
`
`Page 2 of
`
`16
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 10 of 177 PagelD #: 7424
`
`Gage 2:16-cv-00737-SJO-MBWiTPBSTESDSHAOHCOURTage 30f16 Page ID #:639
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 16-00737 SJO (MRWx)
`
`DATE: July 25, 2016
`
`On September 3, 2015, Plaintiff notified Defendants' Managing Director, Joe Ward, of the '933
`Patent and offered to license the '933 Patent in connection with the Accused Products.
`(FAC
`37.) Defendants declined to license rights to the '933 Patent.
`(FAC { 37.)
`
`I.
`
`DISCUSSION
`
`In their Motion, Defendants principally argue that the claims of the '933 Patent are not eligible for
`patent protection under 35 U.S.C. § 101 ("Section 101") because the methods and systems
`claimed therein "do nothing more than claim a long-practiced, well known process, and applyit
`to a computer."
`(Mot. 1, ECF No. 27-1.) Specifically, Defendants argue that the claims are
`directed to the abstract conceptof "information management,"i.e. "organizing data to be able to
`locate information at a second location," and that the claims contain generic computer hardware
`that cannot supply the "inventive concept"sufficient to transform this abstract idea into a patent-
`eligible invention.
`(See Mot. 13-18.) Defendants also argue that Plaintiff's claims against xTV
`Networks, Ltd. should be dismissed under Rule 12(b)(2) of the Federal Rules of Civil Procedure
`("Rule 12(b)(2)") for lack of personal jurisdiction.
`(Mot. 2, 19-20.)
`
`Plaintiff responds that the '933 Patent claims a specialized and novel physical, portable device for
`the retrieval of information stored in a computer network providing limited access through a
`specific retrieval process, and does not broadly encompass "storing an identification at one
`location and using that identification to locate and retrieve something at a second location." (See
`Opp'n 1, ECF No. 29.) Plaintiff thus argues that the invention underlying the claims of the '933
`Patent has "features unique to computing which improve the functioning of the computers
`themselves and which addressa technological limit with respect to data storage in network-based
`computer systems that existed [in 1998]." (Opp'n 1.) Plaintiff also argues that the claim terms
`"Thing ID" and "Informative Thing" have specific definitions set forth in the specification of the '933
`Patent, and that it would be improper to invalidate the asserted claims prior to claim construction.
`(Opp'n 2.)
`
`With the parties’ argumentslaid out, the Court now examines the applicable legal standards.
`
`A.
`
`Section 101 Analytical Framework
`
`"Section 101 defines the subject matter that may be patented under the Patent Act." Bilskiv.
`Kappos, 561 U.S. 593, 601 (2010). Section 101 reads in its entirety:
`"Whoever invents or
`discovers any new and useful process, machine, manufacture, or composition of matter, or any
`new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
`requirements of this title." 35 U.S.C. § 101.
`"Section 101 thus specifies four independent
`categories of inventions or discoveries that are eligible for patent protection:
`processes,
`machines, manufactures, and compositions of matter." Bilski, 561 U.S. at 601.
`
`Page 3 of
`
`16
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 11 of 177 PagelD #: 7425
`
`Gage 2:16-cv-00737-SJO-MRYVi7PRSHEFESSSHASOHERPage 4ofi6 Page ID #:640
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 16-00737 SJO (MRWx)
`
`DATE: July 25, 2016
`
`. Congress plainly
`.
`Although acknowledging that "[iJn choosing such expansive terms .
`contemplated that the patent laws would be given wide scope,” the Supreme Court long ago
`identified three exceptions to Section 101: "laws of nature, physical phenomena, and abstract
`ideas." Diamond v. Chakrabarty, 447 U.S. 303, 308-09 (1980). Although these exceptions are
`not required by the statutory text, they are consistent with the idea that certain discoveries "are
`part of the storehouse of knowledge of all men" and are "free to all men and reserved exclusively
`to none." Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). Thus, "the
`concern that drives this exclusionary principle [is] one of pre-emption." Alice Corp. Pty. v. CLS
`BankInt'l, 134 S. Ct. 2347, 2354 (2014) (citation omitted). Consequently, the Supreme Court has
`required that "[i]f there is to be invention from such a discovery, it must come from the application
`of the law of nature to a new and useful end." Funk Bros., 333 U.S. at 130. These principles have
`been held to apply with equal force to product and process claims. Gottschalk v. Benson, 409
`U.S. 63, 67-68 (1972).
`
`Alice Corp. v. CLS Bank ("Alice") represents the Supreme Court's latest attempt to clarify how
`courts should apply these difficult principles.
`In Alice, the Supreme Court expanded on the two-
`step approach for resolving Section 101 issuesfirst articulated in Mayo Collaborative Servs.v.
`Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012). First, a court must "determine whether
`the claims at issue are directed to one of those patent-ineligible concepts." Alice, 134 S. Ct. at
`2355 (citing Mayo, 132 S. Ct. at 1296-97).
`If so, then the court must ask "[w]hat else is there in
`the claims," which requires consideration of "the elements of each claim both individually and 'as
`an ordered combination’ to determine whether the additional elements'transform the nature of the
`claim’ into a patent-eligible application." /d. (citing Mayo, 132 S. Ct. at 1297-98).
`In this second
`step, the court must "search for an ‘inventive concept'—i.e., an element or combination of
`elementsthatis 'sufficient to ensure that the patent in practice amountsto significantly more than
`a patent upon the[ineligible concept] itself." /d. (citing Mayo, 132 S. Ct. at 1294). This two-step
`analytical framework has been labeled the "Alice/Mayo test" or simply the "Alice test."
`
`Identifying whether a claim is "directed to an abstract idea" under step one of the Alice/Mayo test
`is not always a simple undertaking. Although there is some disagreement among courts as to how
`expansively a claim should be examined at Alice/Mayo step one, the Federal Circuit recently
`instructed that the directed to' inquiry applies a stage-onefilter to claims, consideredin light of
`the specification, based on whether ‘their character as a whole is directed to excluded subject
`matter." Enfish, LLC v. Microsoft Corp., — F.3d —, 2016 WL 2756255, at *4 (Fed. Cir. May 12,
`2016) (quoting /nternet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
`2015)); see also Cal. Inst. Tech. v. Hughes Commc'ns,Inc., 59 F. Supp. 3d 974, 991-92 (C.D. Cal.
`2014) (requiring that a court "identify the purpose of the claim—in other words, what the claimed
`invention is trying to achieve—and ask whether that purpose is abstract,” making the Alice/Mayo
`step 1 "a sort of ‘quick look’ test, the object of which is to identify a risk of preemption and
`ineligibility"); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014)
`(although blurring steps one and twoin analyzing internet-based patentclaims, finding the claims
`not patent-ineligible where they "specify how interaction with the Internet are manipulated to yield
`
`Page 4 of
`
`16
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 12 of 177 PagelD #: 7426
`
`gage 2:16-cv-00737-SJO-MBVi7PBSETESSpSHAOTCOREage 5o0f16 Page ID #:641
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 16-00737 SJO (MRWx)
`
`DATE: July 25, 2016
`
`a desired result—a result that overrides the routine and conventional sequenceof events ordinarily
`triggered by the click of the hyperlink").
`It is "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," which can entail reviewing both the claim langauge and the
`specification. Enfish, — F.3d —, 2016 WL 2756255, at *4-*6.
`
`If the claim is directed to an abstract idea, the Court must then determine whether the specific
`claim elements, considered both individually and "as an ordered combination," "transform the
`nature of the claim"into a patent-eligible invention. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132
`S. Ct. at 1297).
`In Alice, the Supreme Court considered whether "[t]he introduction of a computer
`into the claims" directed toward the abstract idea of intermediated settlement was sufficient to
`"transform the nature of the claim" by adding an “inventive concept." /d. at 2357. The Supreme
`Court held that it did not, and made clear that "the mere recitation of a generic computer cannot
`transform a patent-ineligible abstract idea into a patent-eligible invention.” /d. at 2358.
`"Nor is
`limiting the use of an abstract idea ‘to a particular technological environment"sufficient to impart
`patent-eligibility.
`/d. (quoting Bilski, 561 U.S. at 610-11).
`In its discussion, the Supreme Court in
`Alice distinguished an earlier case, Diamond v. Diehr, in which the Court held that a computer-
`implemented processfor curing rubber, which employed a "well-known" mathematical equation,
`was nevertheless patent-eligible because it used that equation in a process designed to solve a
`technological problem in "conventional industry practice."? Alice, 134 S. Ct. at 2358 (citing Diehr,
`450 U.S. at 177-78). Moreover, the Federal Circuit recently held in Bascom Global Internet
`Services,
`Inc. v. AT&T Mobility LLC that "an inventive concept can be found in the non-
`conventional and non-generic arrangement of known, conventional pieces," particularly where the
`invention claimed is more than the implementation of an abstract idea "on generic computer
`components, without providing a specific technical solution beyond simply using generic computer
`concepts in a conventional way." — F.3d —, 2016 WL 3514158, at *6, *8 (Fed. Cir. June 27,
`2016).
`
`With this high-level understanding of the purpose and limits of Section 101, the Court addresses
`whether a motion to dismiss may properly be brought on Section 101 grounds.
`
`B.
`
`The Appropriateness of Ruling on Section 101 Motions at the Pleadings Stage and
`the Defendant's Burden
`
`Federal Rule of Civil Procedure 12(b)(6) permits a party to move to dismiss an action for "failure
`to state a claim upon whichrelief can be granted" if "made before pleading if a responsive
`pleading is allowed." Fed. R. Civ. P. 12(b)(6). "Patenteligibility under [Section] 101 is a question
`
`In particular, the Supreme Court in Diehr explained that the claimed contribution to the
`*
`art was the step of "constantly measuring the actual temperature inside a rubber molding
`press" used to create synthetic rubber products. Diehr, 450 U.S. at 206.
`
`Page 5 of
`
`16
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 13 of 177 PagelD #: 7427
`
`Gage 2:16-cv-00737-SJO-MRWitBBSHEPESDSHAETAthFPage 60f16 Page ID #:642
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 16-00737 SJO (MRWx)
`
`DATE: July 25, 2016
`
`of law that may, in appropriate cases, be decided on the pleadings without the benefit of a claim
`construction hearing." Modern Telecom Sys. LLC v. Earthlink, Inc., No. CV 14-0347 DOC, 2015
`WL 1239992, at *6 (C.D. Cal. Mar. 17, 2015) (citing Content Extraction & Transmission LLC v.
`Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1349 (Fed. Cir. 2014) (affirming district court's
`decision to grant motion to dismiss based on patent-ineligible subject matter under Section 101
`without having a claim construction hearing); Ultramercial, Inc. v. Hulu, LLC ("UltramercialII"), 772
`F.3d 709, 711 (same). However,"it will ordinarily be desirable—and often necessary—to resolve
`claim construction disputes prior to a [Section] 101 analysis, for the determination of patent
`eligibility requires a full understanding of the basic character of the claimed subject matter."
`Bancorp Servs., L.L.C. v. Sun Life Assurance. Co. Can. (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir.
`2012); but see Content Extraction, 776 F.3d at 1349 ("Although the determination of patent
`eligibility requires a full understanding of the basic character of the claimed subject matter, claim
`construction is not an inviolable prerequisite to a validity determination under [Section] 101.").
`
`"Although the clear and convincing evidence standard is not applicable" to a Section 101 motion
`brought pursuant to Federal Rule of Civil Procedure 12(b)(6), the movant"still bear[s] the burden
`of establishing that the claims are patent-ineligible under [Section] 101." Modern Telecom, 2015
`WL 1239992 at *8. "Additionally, in applying [Section] 101 jurisprudence at the pleading stage,
`the Court construes the patent claims in a manner mostfavorableto Plaintiff." /d. (citing Content
`Extraction, 776 F.3d at 1349).
`
`C.
`
`Analysis
`
`Having determined that the Court can rule on Defendants’ Motion at the pleadings stage, the Court
`now applies the Alice/Mayotest to determine whether the claims of the '933 Patent are patent-
`eligible. Before diving into step one, however, the Court notes that Defendants' arguments
`principally relate to patent-eligibility of claim 28 of the '933 Patent, which Defendants argue is
`"representative" of the rest of the claims in the '933 Patent for the purposes of the Section 101
`analysis.
`(Mot. 11.) Plaintiff does not dispute the representativenessof claim 28, (see generally
`Opp'n), and the Court independently finds the claims sufficiently similar to analyze them together
`for Section 101 purposes.
`
`1.
`
`Step 1: The Claims Are Directed to a Patent-Ineligible Abstract Idea
`
`The first step in determining whether a claim satisfies Section 101 is determining whether the
`claim at issue is directed to a "patent-ineligible concept" such as an abstract idea. Alice, 134 S.
`Ct. at 2355. Underthe first step of the Alice/Mayotest, "the court mustidentify the purpose of the
`claim—in other words, what the claimed invention is trying to achieve—and ask whether that
`purposeis abstract." Cal. Inst. Tech., 59 F. Supp. 3d at 991. To accomplish this task, the Court
`must "appl[y] a stage-onefilter to claims, consideredin light fo the specification, based on whether
`‘their character as a whole is directed to excluded subject matter." Enfish, — F.3d —, 2016 WL
`2756255, at *4 (quoting Internet Patents Corp., 790 F.3d at 1346). Moreover, because "all
`
`Page 6 of
`
`16
`
`

`

`Case 1:16-cv-00453-RGA Document 87-1 Filed 03/17/17 Page 14 of 177 PagelD #: 7428
`
`Gage 2:16-cv-00737-SJO-MBWitPBSHEPESSHASOF!ORTage 7of16 Page ID #:643
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 16-00737 SJO (MRWx)
`
`DATE: July 25, 2016
`
`improvements in computer-related technology are inherently abstract,"it is "relevant to ask
`whether the claims are directed to an improvement to computer functionality versus being directed
`to an abstract idea, even atthe first step of the Alice analysis." /d.
`
`Defendants in their Motion argue that claims 28 and 55 of the '933 Patent are directed to "the
`general abstract idea of storing an identification ("Thing ID") on a portable device ("Informative
`Thing") and using that ID to locate and retrieve something associated with the ID at a second
`location." (Mot. 13-14.) Thus, according to Defendants, "[c]laim 28 broadly recites a 'method of
`information management,’ and the claim elements recite nothing more than using an ID stored on
`a portable deviceto retrieve information stored elsewhere (e.g., ina network)." (Mot. 14.) Plaintiff
`responds that the '933 Patent "seeks to deviate from [
`] broad and traditional
`information
`management and claim a specialized portable device used to improve the functioning of
`networked computers and provide end users with something tangible that they can easily use and
`understand to managetheir information while limi