Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 1 of 62 PageID #: 2058
`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 1 of 62 PagelD #: 2058
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 2 of 62 PageID #: 2059
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`
`
`
`
`AMDOCS (ISRAEL) LIMITED,
`Plaintiff-Appellant
`
`v.
`
`OPENET TELECOM, INC.,
`OPENET TELECOM LTD.,
`Defendants-Appellees
`______________________
`
`2015-1180
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Virginia in No. 1:10-cv-00910-LMB-
`TRJ, Judge Leonie M. Brinkema.
`______________________
`
`Decided: November 1, 2016
`______________________
`
`S. CALVIN WALDEN, Wilmer Cutler Pickering Hale and
`Dorr LLP, New York, NY, argued for plaintiff-appellant.
`Also represented by BRITTANY BLUEITT AMADI, GREGORY
`H. LANTIER, JAMES QUARLES III, Washington, DC.
`
`BRIAN PANDYA, Wiley Rein, LLP, Washington, DC, ar-
`gued for defendants-appellees. Also represented by SCOTT
`A. FELDER, JAMES HAROLD WALLACE, JR., ERIC HAROLD
`WEISBLATT.
`
`
`______________________
`
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 3 of 62 PageID #: 2060
`
`
`
` 2
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`Before NEWMAN, PLAGER, and REYNA, Circuit Judges.
`Opinion for the court filed by Circuit Judge PLAGER.
`Dissenting opinion filed by Circuit Judge REYNA.
`PLAGER, Circuit Judge.
`This is a patent case, in which the outcome turns on
`the application of the “abstract idea” test, a judicially-
`created limitation on patent eligibility under § 101 of the
`Patent Act, 35 U.S.C. § 101.
`Limited
`(Israel)
`Plaintiff-Appellant
`Amdocs
`(“Amdocs”) sued Defendants-Appellees Openet Telecom,
`Inc. and Openet Telecom Ltd. (collectively, “Openet”) for
`infringing four U.S. Patents, Nos. 7,631,065 (“’065 pa-
`tent”); 7,412,510 (“’510 patent”); 6,947,984 (“’984 patent”);
`and 6,836,797 (“’797 patent”). In the wake of Alice Corp.
`v. CLS Bank International, 134 S. Ct. 2347 (2014), the
`district court granted Openet’s motion for judgment on
`the pleadings, finding that the patents were not directed
`to patent eligible subject matter under § 101. Amdocs
`appeals.
`For the reasons we shall explain, we reverse and re-
`mand for further proceedings.
`BACKGROUND
`Prosecution History and Technology
`Although we need not recapitulate every detail of
`these patents, we describe them sufficiently for purposes
`of this opinion. Additional background is available in our
`opinion from the prior appeal in this case. See Amdocs
`(Israel) Ltd. v. Openet Telecom, Inc., 761 F.3d 1329, 1331–
`36 (Fed. Cir. 2014) (“Amdocs I”).
`
`The patents in suit concern, inter alia, parts of a
`system designed to solve an accounting and billing prob-
`lem faced by network service providers. Each patent
`descends from U.S. Patent Application No. 09/442,876,
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 4 of 62 PageID #: 2061
`
`AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`3
`
`which issued as U.S. Patent No. 6,418,467. One of the
`patents in suit, the ’797 patent, issued as a result of a
`continuation-in-part application, while the other three
`patents issued as a result of continuation applications.
`The ’065 patent concerns a system, method, and com-
`puter program for merging data in a network-based
`filtering and aggregating platform as well as a related
`apparatus for enhancing networking accounting data
`records. The ’510 patent concerns a system, method, and
`computer program for reporting on the collection of net-
`work usage information. The ’984 patent concerns a
`system and accompanying method and computer program
`for reporting on the collection of network usage infor-
`mation from a plurality of network devices. The ’797
`patent concerns a system, method, and computer program
`for generating a single record reflecting multiple services
`for accounting purposes.
`Each patent’s written description describes the same
`system, which allows network service providers to account
`for and bill for internet protocol (“IP”) network communi-
`cations. The system includes network devices; infor-
`mation source modules (“ISMs”); gatherers; a central
`event manager (“CEM”); a central database; a user inter-
`face server; and terminals or clients. See, e.g., ’065 patent
`at 4:29–33, 43–54.
`Network devices represent any devices that could be
`included on a network, including application servers, and
`also represent the source of information accessed by the
`ISMs. Id. at 5:10–26. The ISMs act as an interface
`between the gatherers and the network devices and
`enable the gatherers to collect data from the network
`devices. Id. at 5:33–35. The ISMs represent modular
`interfaces that send IP usage data in real time from
`network devices to gatherers. Id. at 5:35–39. Gatherers
`can be hardware and software installed on the same
`network segment as a network device or on an application
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 5 of 62 PageID #: 2062
`
`
`
` 4
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`server itself to minimize the data traffic impact on a
`network; gatherers “gather the information from the
`ISMs.” Id. at 6:54, 58–64. Gatherers also normalize data
`from the various types of ISMs and serve as a distributed
`filtering and aggregation system. Id. at 7:5–8. The CEM
`provides management and control of the ISMs and gath-
`erers, and the CEM can perform several functions includ-
`ing performing data merges to remove redundant data.
`Id. at 8:13–67. The central database is the optional
`central repository of the information collected by the
`system and is one example of a sink for the data generat-
`ed by the system. Id. at 9:1–5. The user interface server
`allows multiple clients or terminals to access the system,
`and its primary purpose is to provide remote and local
`platform independent control for the system. Id. at 10:5–
`12.
`
`Importantly, these components are arrayed in a dis-
`tributed architecture that minimizes the impact on net-
`work and system resources. Id. at 3:56–65. Through this
`distributed architecture, the system minimizes network
`impact by collecting and processing data close to its
`source. Id. The system includes distributed data gather-
`ing, filtering, and enhancements that enable load distri-
`bution. Id. at 4:33–42. This allows data to reside close to
`the information sources, thereby reducing congestion in
`network bottlenecks, while still allowing data to be acces-
`sible from a central location. Id. at 4:35–39. Each patent
`explains that this is an advantage over prior art systems
`that stored information in one location, which made it
`difficult to keep up with massive record flows from the
`network devices and which required huge databases. See,
`e.g., id. at 4:39–42.
`
`Procedural History
`In 2010, Amdocs sued Openet for patent infringement
`
`in the United States District Court for the Eastern Dis-
`trict of Virginia. Amdocs asserted that Openet infringed
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 6 of 62 PageID #: 2063
`
`AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`5
`
`claims 1, 4, 7, 13, and 17 of the ’065 patent; claims 16, 17,
`and 19 of the ’510 patent; claims 1, 2, 7, 8, and 13 of the
`’984 patent; and claims 1, 2, 7, 8, and 19 of the ’797 pa-
`tent.
`In its answer and counterclaim, Openet alleged inva-
`lidity, unenforceability, and non-infringement.
` The
`parties filed motions addressing claim construction and
`summary judgment. The district court granted Openet’s
`motion for summary judgment of non-infringement and
`Amdocs’s motion for summary judgment of no inequitable
`conduct. Upon motions of the parties, which the court
`granted, certain claim constructions were made. Howev-
`er, the court denied the parties’ motions for summary
`judgment with respect to validity. The court later issued
`an opinion explaining its bases for its non-infringement
`and inequitable conduct summary judgment rulings,
`while also providing its claim constructions. Amdocs
`appealed the trial court’s judgment to this court.
` On appeal, we affirmed two claim constructions and
`vacated and modified another construction. We approved
`of the district court’s construction of “enhance” to mean
`“to apply a number of field enhancements in a distributed
`fashion.” Amdocs I, 761 F.3d at 1338–40. In so doing, we
`approved of the district court’s “reading the ‘in a distrib-
`uted fashion’ and the ‘close to the source’ of network
`information requirements into the term ‘enhance.’” Id. at
`1340. We also approved of the construction of “complet-
`ing” to mean “enhance a record until all required fields
`have been populated.” Id.
`However, we vacated the district court’s construction
`of “single record represents each of the plurality of ser-
`vices” as “one record that includes customer usage data
`for each of the plurality of services used by the customer
`on the network” but not including records that aggregated
`usage data. Id. We substituted a plain meaning interpre-
`tation that allowed for the inclusion of a plurality of
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 7 of 62 PageID #: 2064
`
`
`
` 6
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`services by aggregation. Id. at 1340–41. As a result, we
`reversed the grant of summary judgment with respect to
`the ’065 patent, the ’510 patent, and the ’984 patent and
`vacated the grant of summary judgment with respect to
`the ’797 patent. Id. at 1341–43.
`During the time the case was before us on appeal from
`the district court, the Supreme Court issued its opinion in
`Alice. Following the remand from this court in Amdocs I,
`Openet moved for judgment on the pleadings by arguing
`that, pursuant to Alice, all asserted claims were ineligible
`under § 101. In response, Amdocs argued that Openet’s
`motion was procedurally barred and contrary to the law of
`the case.
`The district court permitted the motion because it had
`not resolved whether the patents were directed to ineligi-
`ble subject matter under § 101 and because, even if the
`issue had been addressed, the court stated that Alice
`“represented a change, or a significant clarification, of the
`law.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 56 F.
`Supp. 3d 813, 819 (E.D. Va. 2014).
`In due course, the district court granted Openet’s mo-
`tion and invalidated the asserted claims of all four pa-
`tents as ineligible under § 101. Amdocs appeals. We have
`jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
`DISCUSSION
`We review a grant of judgment on the pleadings under
`the procedural law of the regional circuit. Allergan, Inc.
`v. Athena Cosmetics, Inc., 640 F.3d 1377, 1380 (Fed. Cir.
`2011). The Fourth Circuit reviews a grant of judgment on
`the pleadings without deference, applying the same
`standard as a motion to dismiss pursuant to Fed. R. Civ.
`P. 12(b)(6). Burbach Broad. Co. of Del. v. Elkins Radio
`Corp., 278 F.3d 401, 405–06 (4th Cir. 2002). Therefore,
`we assume the facts alleged in the complaint are true and
`draw all reasonable factual inferences in favor of the non-
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 8 of 62 PageID #: 2065
`
`AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`7
`
`movant. Id. We review the district court’s determination
`of patent eligibility under § 101 without deference, as a
`question of law. DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245, 1255 (Fed. Cir. 2014).
`1.
`The Doctrine: The statutory rule governing patent eli-
`gibility—that is, the criteria for identifying inventions
`that are eligible to be patented—is found in § 101 of the
`Patent Act. As recodified by Congress in 1952, § 101
`provides that “[w]hoever 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.”
`It is obvious that the subject matter described in § 101
`is expansive. As the Supreme Court has observed, the
`“subject-matter provisions of the patent law have been
`cast in broad terms to fulfill the constitutional and statu-
`tory goal of promoting ‘the Progress of Science and the
`useful Arts.’” Diamond v. Chakrabarty, 447 U.S. 303, 315
`(1980) (quoting U.S. Const. art. I, § 8, cl. 8).
`Despite this broad mandate, judicial gloss on the law
`of patent eligibility has long recognized that certain
`fundamental principles are not included in that broad
`statutory grant. Though over the years these principles
`have been described in differing terms, in today’s vernacu-
`lar these exceptions are called “[l]aws of nature, natural
`phenomena, and abstract ideas.” Alice, 134 S. Ct. at 2354
`(quotation marks and citation omitted); see also Le Roy v.
`Tatham, 55 U.S. 156, 183 (1853) (Nelson, J., dissenting)
`(tracing the “proper subject-matter of a patent” to at least
`the British case of Boulton v. Bull, 2 H. Bl. 463, 126 Eng.
`Rep. 651 (C.P. 1795)).
`The two-step framework, set out by the Supreme
`Court for distinguishing patents that claim so-called laws
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 9 of 62 PageID #: 2066
`
`
`
` 8
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`of nature, natural phenomena, and abstract ideas from
`those that claim patent-eligible applications of those
`concepts, is now familiar law. See Alice, 134 S. Ct. at
`2355 (following Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 132 S. Ct. 1289 (2012)). This framework is
`sometimes collectively referred to as Alice/Mayo.
`First, we determine whether “the claims at issue are
`directed to one of those patent-ineligible concepts.” Id. If
`so, we next consider elements of each claim both individ-
`ually and “as an ordered combination” to determine
`whether the additional elements “‘transform the nature of
`the claim’ into a patent-eligible application.” Id. (quoting
`Mayo, 132 S. Ct. at 1298, 1297).
`The Court describes step two of this analysis as a
`search for an “inventive concept”—i.e., an element or
`ordered combination of elements that is “sufficient to
`ensure that the patent in practice amounts to significant-
`ly more than a patent upon the [ineligible concept] itself.”
`Id. (quoting Mayo, 132 S. Ct. at 1294).
`2.
`The Cases: Our cases generally follow the step
`one/step two Supreme Court format, reserving step two
`for the more comprehensive analysis in search of the
`‘inventive concept.’ Recent cases, however, suggest that
`there is considerable overlap between step one and step
`two, and in some situations this analysis could be accom-
`plished without going beyond step one. See Enfish, LLC,
`v. Microsoft Corp., 822 F.3d 1327, 1334–36 (Fed. Cir.
`2016); see also Elec. Power Grp., LLC v. Alstom S.A., 830
`F.3d 1350, 1353 (Fed. Cir. 2016) (“the two stages involve
`overlapping scrutiny of the content of the claims . . . [and]
`there can be close questions about when the inquiry
`should proceed from the first stage to the second);
`BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
`LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) (“[T]he claims
`and their specific limitations do not readily lend them-
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 10 of 62 PageID #: 2067
`
`AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`9
`
`selves to a step-one finding that they are directed to a
`nonabstract idea. We therefore defer our consideration of
`the specific claim limitations’ narrowing effect for step
`two.”).
`Whether the more detailed analysis is undertaken at
`step one or at step two, the analysis presumably would be
`based on a generally-accepted and understood definition
`of, or test for, what an ‘abstract idea’ encompasses.
`However, a search for a single test or definition in the
`decided cases concerning § 101 from this court, and in-
`deed from the Supreme Court, reveals that at present
`there is no such single, succinct, usable definition or test.
`The problem with articulating a single, universal defini-
`tion of ‘abstract idea’ is that it is difficult to fashion a
`workable definition to be applied to as-yet-unknown cases
`with as-yet-unknown inventions. That is not for want of
`trying; to the extent the efforts so far have been unsuc-
`cessful it is because they often end up using alternative
`but equally abstract terms or are overly narrow.1
`Instead of a definition, then, the decisional mecha-
`nism courts now apply is to examine earlier cases in
`which a similar or parallel descriptive nature can be
`seen—what prior cases were about, and which way they
`were decided. See, e.g., Elec. Power Grp., 830 F.3d at
`
`
`1 For examples, compare In re Bilski, 545 F.3d 943,
`955–56 (Fed. Cir. 2008) (en banc), reaffirming ‘machine-
`or-transformation’ as the § 101 test for process claims,
`with Bilski v. Kappos, 561 U.S. 593, 604 (2010), indicating
`that ‘machine-or-transformation’ is perhaps one possible
`test, but not the only one. See also the several opinions in
`this court’s CLS Bank International v. Alice Corp., 717
`F.3d 1269 (Fed. Cir. 2013) (en banc).
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 11 of 62 PageID #: 2068
`
`
`
` 10
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`1353–54.2 That is the classic common law methodology
`for creating law when a single governing definitional
`context is not available. See generally Karl N. Llewellyn,
`The Common Law Tradition: Deciding Appeals (1960).
`This more flexible approach is also the approach em-
`ployed by the Supreme Court. See Alice, 134 S. Ct. at
`2355–57. We shall follow that approach here.
`The dissent, in its discussion of the majority opinion’s
`approach, states that the analysis in which the majority
`engages involves a comparison “of the asserted claims in
`this case to the claims at issue in some, but not all, of the
`cases where we have addressed patent eligibility.” Dis-
`sent at 1. As earlier noted, applying prior precedents of
`the court to the current case is indeed the common law
`approach for deciding cases, including patent cases—i.e.,
`applying the law to comparable facts. See, e.g., Alice, 134
`S. Ct. at 2355–60 (relying on precedent with respect to
`step one and step two); Elec. Power Grp., 830 F.3d at
`1353–56 (same). Furthermore, discussing in an opinion
`only the most relevant prior opinions, rather than every
`prior opinion in an actively-litigated field, is a necessary
`discipline if opinions are to be read, rather than just
`written.
`The dissent offers a different paradigm for identifying
`an abstract idea: “it is apparent that a desired goal (i.e., a
`
`2 See also Robert W. Bahr, Deputy Comm’r for Pa-
`tent Examination Policy, USPTO, Recent Subject Matter
`Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and
`TLI Commc’ns LLC v. A.V. Automotive, LLC) (2016) at 2:
`“In summary, when performing an analysis of whether a
`claim is directed to an abstract idea (Step 2A), examiners
`are to continue to determine if the claim recites (i.e., sets
`forth or describes) a concept that is similar to concepts
`previously found abstract by the courts.”
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 12 of 62 PageID #: 2069
`
`AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`11
`
`‘result or effect’), absent structural or procedural means
`for achieving that goal, is an abstract idea.” Dissent at 6–
`7. The dissent focuses on the difference between ‘means’
`and ‘ends.’ Id. at 6. We note that, though not in terms of
`‘abstract idea’ but rather adequacy of definition, years ago
`the Supreme Court outlawed such broad ‘ends’ or function
`claiming as inconsistent with the purposes of the Patent
`Statute.3 Congress, however, a few years later softened
`the rule. Patentees could write claim language to broadly
`describe the purpose or function of their invention, and
`when they did the claim would not cover the bare function
`or goal, however performed, but only as limited to the
`particular means (and equivalents) for implementing that
`function or goal as described by the patentee in the pa-
`tent’s “specification.”
`This, of course, is the “means-plus-function” practice
`codified in 35 U.S.C. § 112 ¶ 6 (now § 112(f)). The dis-
`sent’s paradigm would seem similar, but differs in signifi-
`cant respects. Though § 112 ¶ 6 permits the ‘means’ to be
`found in the patentee’s “specification,” meaning the
`written description and the claims of the patent, the
`dissent would save the patent’s eligibility under § 101
`only if the claim at issue itself explicitly states the neces-
`sary ‘means.’ In the dissent’s step two, we must find “a
`particular means for accomplishing an underlying goal”
`through careful “limitation-by-limitation analysis” of the
`claim. Id. at 9. We commend the dissent for seeking a
`creative way of incorporating aspects of well-known
`doctrine in the search for what is an ‘abstract idea,’ but
`that is not now the law, either in statute or in court
`
`
`3 See Halliburton Oil Well Cementing Co. v. Walker,
`329 U.S. 1 (1946).
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 13 of 62 PageID #: 2070
`
`
`
` 12
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`decision.4 At best, as this court has previously stated, the
`dissent’s analysis may be “one helpful way of double-
`checking the application of the Supreme Court’s frame-
`work to particular claims—specifically, when determining
`whether the claims meet the requirement of an inventive
`concept in application.” Elec. Power Grp., 830 F.3d at
`1356.
`
`3.
`We begin, then, with an examination of eligible and
`ineligible claims of a similar nature from past cases. For
`example, in Digitech, one of the representative claims
`described a process of organizing information through
`mathematical correlations with merely generic gathering
`and processing activities. See Digitech Image Techs., LLC
`v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir.
`2014). The claim at issue:
`A method of generating a device profile that de-
`scribes properties of a device in a digital image
`reproduction system for capturing, transforming
`or rendering an image, said method comprising:
`generating first data for describing a device de-
`pendent transformation of color information con-
`tent of the image to a device independent color
`
`4 We state our concern lest the dissent’s generaliza-
`tions of law may mislead the reader. In the complexities
`of § 101, the law is evolving into greater certitude based
`on experience, not on generalizations. Words out of
`context are less useful—especially if inapt. For example,
`the Court’s rejection of Samuel Morse’s notorious claim 8,
`regarding the use of electromagnetism, was for overbroad
`preemption of a natural law, not because it was an “ab-
`stract idea.” See, e.g., Mayo, 132 S. Ct. at 1294 (citing
`O’Reilly v. Morse, 56 U.S. 62, 112–20 (1854)).
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 14 of 62 PageID #: 2071
`
`AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`13
`
`space through use of measured chromatic stimuli
`and device response characteristic functions;
`generating second data for describing a device de-
`pendent transformation of spatial information
`content of the image in said device independent
`color space through use of spatial stimuli and de-
`vice response characteristic functions; and
`combining said first and second data into the de-
`vice profile.
`Id. at 1351 (quoting patent at issue).
`While the court did not parse the analysis into dis-
`crete step one and step two stages, it found that this claim
`recited an “ineligible abstract process of gathering and
`combining data that does not require input from a physi-
`cal device” and that “the two data sets and the resulting
`device profile are ineligible subject matter.” Id. The court
`observed that “[w]ithout additional limitations, a process
`that employs mathematical algorithms to manipulate
`existing information to generate additional information is
`not patent eligible.” Id. The court determined that the
`claim was ineligible.
`Similarly, in Content Extraction, the court examined a
`representative claim reciting:
`A method of processing information from a diver-
`sity of types of hard copy documents, said method
`comprising the steps of:
`(a) receiving output representing a diversity of
`types of hard copy documents from an automated
`digitizing unit and storing information from said
`diversity of types of hard copy documents into a
`memory, said information not fixed from one doc-
`ument to the next, said receiving step not preced-
`ed by scanning, via said automated digitizing
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 15 of 62 PageID #: 2072
`
`
`
` 14
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`unit, of a separate document containing format
`requirements;
`(b) recognizing portions of said hard copy docu-
`ments corresponding to a first data field; and
`(c) storing information from said portions of said
`hard copy documents corresponding to said first
`data field into memory locations for said first data
`field.
`Content Extraction & Transmission LLC v. Wells Fargo
`Bank, Nat’l Ass’n, 776 F.3d 1343, 1345 (Fed. Cir. 2014).
`Under step one, the court characterized all of the
`claims at issue (which were similar to the representative
`claim) as being directed to the abstract idea of “1) collect-
`ing data, 2) recognizing certain data within the collected
`data set, and 3) storing that recognized data in a
`memory.” Id. at 1347. The court commented that data
`collection, recognition, and storage were “undisputedly
`well-known.” Id. Under step two, the court found no
`limitations5 that, considered alone and in an ordered
`combination, transformed the claim into a patent-eligible
`application of an abstract idea. Id. at 1347–48. The court
`observed that the role of a computer in a computer-
`implemented invention would only be meaningful in a
`§ 101 analysis if it involved more than the performance of
`“well-understood, routine, [and] conventional activities
`previously known to the industry.” Id. (quoting Alice, 134
`S. Ct. at 2359). The court noted that all of the limitations
`
`5 Though the Supreme Court does not uniformly
`adhere to the practice, this court often has used the term
`“limitation” to refer to requirements stated in a patent
`claim, and the term “element” to refer to the parts of an
`entity accused of infringing. We will follow that practice
`here.
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 16 of 62 PageID #: 2073
`
`AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`15
`
`at issue involved well-known, routine, and conventional
`functions of computers and scanners. Id. at 1348–49.
`The claims were ineligible.
`More recently, in In re TLI, the court examined a rep-
`resentative claim that recited:
`A method for recording and administering digital
`images, comprising the steps of:
`recording images using a digital pick up unit in a
`telephone unit,
`storing the images recorded by the digital pick up
`unit in a digital form as digital images,
`transmitting data including at least the digital
`images and classification information to a server,
`wherein said classification information is pre-
`scribable by a user of the telephone unit for allo-
`cation to the digital images,
`receiving the data by the server,
`extracting classification information which char-
`acterizes the digital images from the received da-
`ta, and
`storing the digital images in the server, said step
`of storing taking into consideration the classifica-
`tion information.
`In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610
`(Fed. Cir. 2016).
`Under step one, the court found that the claims were
`directed to the abstract idea of “classifying and storing
`digital images in an organized manner.” Id. at 613. Also
`under step one, the court found that the claims were not
`directed to a specific improvement in computer functional-
`ity, but instead were directed to the “use of conventional
`or generic technology in a nascent, but well-known envi-
`ronment, without any claim that the invention reflect[ed]
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 17 of 62 PageID #: 2074
`
`
`
` 16
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`an inventive solution to any problem presented by com-
`bining the two.” Id. at 612. Under step two, the court
`found that the claims did not recite any limitations that
`when considered individually and as an ordered combina-
`tion transformed the abstract idea into a patent-eligible
`application of that idea. Instead, the recited components
`and functions were well-understood, routine, conventional
`activities previously known in the industry. See id. at
`613–14. The components were described in “vague,
`functional” terms that were insufficient to confer eligibil-
`ity and failed to provide the requisite details to implement
`the claimed abstract idea. Id. at 615.
`The ineligible claims in the preceding cases6 may be
`contrasted with eligible claims in other cases. For exam-
`ple, in DDR Holdings, the court found that the asserted
`claims did not recite a step or function performed by a
`computerized mathematical algorithm but were instead
`focused on a challenge particular to the Internet. DDR
`Holdings, 773 F.3d at 1257. The representative claim
`recited:
`A system useful in an outsource provider serving
`web pages offering commercial opportunities, the
`system comprising:
`
`
`6 For additional examples of ineligible claims post-
`Alice, see, e.g., FairWarning IP, LLC v. Iatric Systems,
`Inc., No. 15-1985, 2016 WL 5899185 (Fed. Cir. Oct. 11,
`2016); Intellectual Ventures I LLC v. Symantec Corp., No.
`15-1769, 2016 WL 5539870 (Fed. Cir. Sept. 30, 2016);
`Affinity Labs of Texas, LLC v. DirecTV, LLC, No. 15-1845,
`2016 WL 5335501 (Fed. Cir. Sept. 23, 2016); Affinity Labs
`of Texas, LLC v. Amazon.com Inc., No. 15-2080, 2016 WL
`5335502 (Fed. Cir. Sept. 23, 2016); Electric Power Group,
`830 F.3d 1350.
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 18 of 62 PageID #: 2075
`
`AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`17
`
`(a) a computer store containing data, for each of a
`plurality of first web pages, defining a plurality of
`visually perceptible elements, which visually per-
`ceptible elements correspond to the plurality of
`first web pages;
`(i) wherein each of the first web pages belongs to
`one of a plurality of web page owners;
`(ii) wherein each of the first web pages displays at
`least one active link associated with a commerce
`object associated with a buying opportunity of a
`selected one of a plurality of merchants; and
`(iii) wherein the selected merchant, the out-source
`provider, and the owner of the first web page dis-
`playing the associated link are each third parties
`with respect to one other;
`(b) a computer server at the outsource provider,
`which computer server is coupled to the computer
`store and programmed to:
`(i) receive from the web browser of a computer us-
`er a signal indicating activation of one of the links
`displayed by one of the first web pages;
`(ii) automatically identify as the source page the
`one of the first web pages on which the link has
`been activated;
`(iii) in response to identification of the source
`page, automatically retrieve the stored data corre-
`sponding to the source page; and
`(iv) using the data retrieved, automatically gener-
`ate and transmit to the web browser a second web
`page that displays: (A) information associated
`with the commerce object associated with the link
`that has been activated, and (B) the plurality of
`visually perceptible elements visually correspond-
`ing to the source page.
`
`

`

`Case 1:16-cv-00455-RGA Document 38-1 Filed 11/02/16 Page 19 of 62 PageID #: 2076
`
`
`
` 18
`
` AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC.
`
`Id. at 1249–50.
`The court observed that the “claimed solution [was]
`necessarily rooted in computer technology in order to
`overcome a problem specifically arising in the realm of
`computer networks.” Id. at 1257. Analyzing the claims
`und