`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`GUADA TECHNOLOGIES LLC,
`
`Plaintiff,
`
`V.
`
`VICE MEDIA, LLC,
`
`Defendant.
`
`Civil Action No. 17-1503-RGA
`
`M EMORANDUM OPINION
`
`Stamatios Stamoulis, ST AMOULIS & WEINBLATT LLC, Wilmington, DE; David R. Bennett,
`DIRECTION IP LAW, Chicago, IL.
`
`Attorneys for Plaintiff.
`
`Frederick L. Cottrell, III, Christine D. Haynes, RICHARDS, LAYTON & FINGER, P.A.,
`Wilmington, DE; Christopher T. McWhinney, SULLIVAN & WORCESTER LLP, Washington,
`DC; Gerald D. Silver, SULLIVAN & WORCESTER LLP, New York, NY; Kimberly B.
`Herman, SULLIVAN & WORCESTERLLP, Boston, MA.
`
`Attorneys for Defendant.
`
`September 17 , 2018
`
`
`
`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 2 of 14 PageID #: 309
`
`Presently before the Court is Defendant' s Motion to Dismiss the Complaint Pursuant to
`
`Federal Rule of Civil Procedure 12(b)(6) (D.I. 13) and related briefing (D.I. 14, 17, 22). The
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`Court held oral argument on April 13, 2018. The parties later filed follow-up submissions (D.1.
`
`23 , 24).
`
`For the reasons that follow, the Court will deny Defendant's Motion to Dismiss.
`
`I.
`
`BACKGROUND
`
`Plaintiff filed a patent infringement action on October 24, 2017 against Defendant,
`
`alleging infringement of U.S. Patent No. 7,231 ,379 ("the ' 379 patent"). (D.I. 1). At that time,
`
`Plaintiff also filed actions against six other defendants. Five of those cases have been resolved,
`
`and the sixth, against Gibson Brands, Inc., was stayed and administratively closed on May 8,
`
`2018, after the defendant filed a notice of bankruptcy. (No. 17-1498, D.I. 17, 19).
`
`The Complaint alleges that Defendant is "infringing at least claim 1 of the ' 379 patent."
`
`(D.I. 1, ,r 13). The ' 379 patent contains seven claims, which read as follows:
`
`1. A method performed in a system having multiple navigable nodes interconnected
`in a hierarchical arrangement comprising:
`
`at a first node, receiving an input from a user of the system, the input containing
`at least one word identifiable with at least one keyword from among multiple
`keywords,
`
`identifying at least one node, other than the first node, that is not directly
`connected to the first node but is associated with the at least one keyword, and
`
`jumping to the at least one node.
`
`2. The method of claim 1 further comprising:
`
`providing a verbal description associated with the at least one node to the user.
`
`3. The method of claim 1 further comprising:
`
`2
`
`
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`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 3 of 14 PageID #: 310
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`searching a thesaurus correlating keywords with synonyms.
`
`4. The method of claim 3 wherein the searching further comprises:
`
`identifying the at least one word as synonymous with the at least one keyword.
`
`5. The method of claim 1 further comprising:
`
`determining that the at least one word is neither a keyword nor a synonym of any
`keyword; and
`
`learning a meaning for the word so that the word will be treated as a learned
`synonym for at least one particular keyword of the multiple keywords.
`
`6. The method of claim 5 further comprising:
`
`adding the word to a thesaurus so that, when the word is input by a subsequent
`user, the word will be treated as synonymous with the at least one particular
`keyword.
`
`7. A method performed in connection with an arrangement of nodes representable as
`a hierarchical graph containing vertices and edges connecting at least two of the
`vertices, the method comprising:
`
`receiving an input from a user as a response to a verbal description associated
`with a first vertex;
`
`analyzing the input to identify a meaningful term that can be associated with at
`least one keyword;
`
`selecting a vertex in the graph structure that is not connected by an edge to the
`first vertex, based upon an association between the meaningful term and the at
`least one keyword and a correlation between the at least one keyword and the
`vertex; and jumping to the vertex.
`
`(D.I. 1-1, Exh. A, claims 1-7).
`
`II.
`
`LEGALSTANDARD
`
`A. Motion to Dismiss
`
`Rule 8 requires a complainant to provide "a short and plain statement of the claim
`
`showing that the pleader is entitled to relief .... " Fed. R. Civ. P. 8(a)(2). Rule 12(b)(6) allows
`
`the accused party to bring a motion to dismiss the claim for failing to meet this standard. A Rule
`
`3
`
`
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`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 4 of 14 PageID #: 311
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`12(b)(6) motion may be granted only if, accepting the well-pleaded allegations in the complaint
`
`as true and viewing them in the light most favorable to the complainant, a court concludes that
`
`those allegations "could not raise a claim of entitlement to relief." Bell At!. Corp. v. Twombly,
`
`550 U.S. 544, 558 (2007).
`
`B. Patent-Eligible Subject Matter
`
`Section 101 of the Patent Act defines patent-eligible subject matter. It provides:
`
`"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. The Supreme Court
`
`has recognized an implicit exception for three categories of subject matter not eligible for
`
`patentability-laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS
`
`Bank Int '!, 134 S. Ct. 2347, 2354 (2014). The purpose of these carve outs is to protect the "basic
`
`tools of scientific and technological work." Mayo Collaborative Servs. v. Prometheus Labs.,
`
`Inc., 566 U.S. 66, 71 (2012). " [A] process is not unpatentable simply because it contains a law
`
`of nature or a mathematical algorithm," as "an application of a law of nature or mathematical
`
`formula to a known structure or process may well be deserving of patent protection." Id.
`
`( emphasis omitted). In order "to transform an unpatentable law of nature into a patent-eligible
`
`application of such a law, one must do more than simply state the law of nature while adding the
`
`words ' apply it. "' Id. at 72 ( emphasis omitted).
`
`The Supreme Court recently reaffirmed the framework laid out in Mayo "for
`
`distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from
`
`those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. First,
`
`the court must determine whether the claims are drawn to a patent-ineligible concept. Id. If the
`
`4
`
`
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`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 5 of 14 PageID #: 312
`
`answer is yes, the court must look to "the elements of the claim both individually and ' as an
`
`ordered combination"' to see ifthere is an "' inventive concept'-i. e., an element or combination
`
`of elements that is ' sufficient to ensure that the patent in practice amounts to significantly more
`
`than a patent upon the [ineligible concept] itself."' Id. (alteration in original). "A claim that
`
`recites an abstract idea must include ' additional features ' to ensure 'that the [claim] is more than
`
`a drafting effort designed to monopolize the [ abstract idea]. "' Id. at 23 57 ( alterations in original)
`
`(quoting Mayo, 566 U.S. at 77). "[S]imply appending conventional steps, specified at a high
`
`level of generality, to ... abstract ideas cannot make those . .. ideas patentable." Mayo , 566
`
`U.S . at 82. Further, "the prohibition against patenting abstract ideas cannot be circumvented by
`
`attempting to limit the use of [the idea] to a particular technological environment." Alice, 134 S.
`
`Ct. at 2358 (quoting Bilski v. Kappas, 561 U.S. 593 , 610- 11 (2010)). Thus, "the mere recitation
`
`of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible
`
`invention." Alice, 134 S. Ct. at 2358. For this second step, the machine-or-transformation test
`
`can be a "useful clue," although it is not determinative. Ultramercial, Inc. v. Hulu, LLC, 772
`
`F.3d 709, 716 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 2907 (2015).
`
`Patent eligibility under § 101 is a question of law suitable for resolution on a motion to
`
`dismiss. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015);
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1346
`
`(Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015). However, " [t]he question of whether a
`
`claim element or combination of elements is well-understood, routine and conventional to a
`
`skilled artisan in the relevant field," which underlies the second step of the Mayo/Alice inquiry,
`
`"is a question of fact. Any fact, such as this one, that is pertinent to the invalidity conclusion
`
`must be proven by clear and convincing evidence." Berkheimer v. HP Inc., 881 F.3d 1360, 1368
`
`5
`
`
`
`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 6 of 14 PageID #: 313
`
`(Fed. Cir. 2018). Thus, " [w]hether [the claims] perform well-understood, routine and
`
`conventional activities to a skilled artisan" can be an issue of fact that precludes granting a
`
`motion to dismiss or for summary judgment. Id. at 1370. The Federal Circuit follows regional
`
`circuit law for motions to dismiss. Content Extraction, 776 F.3d at 1346.
`
`III. DISCUSSION
`
`A. Abstract Idea
`
`"First, we determine whether the claims at issue are directed to [an abstract idea]." Alice,
`
`134 S. Ct. at 2355. "The 'abstract ideas' category embodies 'the longstanding rule that [a]n idea
`
`of itself is not patentable. "' Id. ( quoting Gottschalk v. Benson, 409 U.S . 63 , 67 (1972)). "The
`
`Supreme Court has not established a definitive rule to determine what constitutes an 'abstract
`
`idea' sufficient to satisfy the first step of the Mayo/Alice inquiry." Enfish, LLC v. Microsoft
`
`Corp. , 822 F.3d 1327, 1334 (Fed. Cir. 2016). The Supreme Court has recognized, however, that
`
`"fundamental economic practice[s]," Bilski, 561 U.S. at 611 , "method[s] of organizing human
`
`activity," Alice, 134 S. Ct. at 2356, and mathematical algorithms, Benson, 409 U.S. at 64, are
`
`abstract ideas. In navigating the parameters of such categories, courts have generally sought to
`
`"compare claims at issue to those claims already found to be directed to an abstract idea in
`
`previous cases." Enfish, 822 F.3d at 1334. "But in determining whether the claims are directed
`
`to an abstract idea, we must be careful to avoid oversimplifying the claims because ' [ a ]t some
`
`level, all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural
`
`phenomena, or abstract ideas. "' In re TL! Commc 'ns LLC Patent Litig. , 823 F.3d 607, 611 (Fed.
`
`Cir. 2016) (alterations in original) (quoting Alice, 134 S. Ct. at 2354).
`
`The purported invention pertains to hierarchically arranged decisional networks. A
`
`hierarchically arranged decisional network is an arrangement of "nodes" (numbered boxes),
`
`6
`
`
`
`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 7 of 14 PageID #: 314
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`which are connected by "edges" (lines connecting the numbered boxes). ('379 patent, Fig. 1). 1
`
`A user makes a decision at a particular node, after which an "edge" is used to traverse from that
`
`node to an adjacent node, which corresponds to the user' s decision. (Id.) .
`
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`FIG.1
`
`For example, at node 1, a user may choose between two items, which correspond to nodes 2 and
`
`3. If the user chooses the item corresponding to node 2, she may then choose between items
`
`corresponding to nodes 4 and 5.
`
`The patent describes a traversal problem in prior art networks. In the prior art, "if the
`
`user navigates down the wrong hierarchy of nodes, the user must either backtrack up the nodes
`
`or start over." (D.I. 17 at 4 (citing '379 patent at 2:9-12)).
`
`Plaintiff alleges that the invention solves this problem by "not locking the user into
`
`movement to adjacent nodes or having to start over at the top node." (D.I. 17 at 4). Instead, says
`
`1 Plaintiff distinguishes hierarchical networks from other networks in the prior art, such as "Bayesian
`networks." (D.I. 17 at 6 n.2).
`
`7
`
`
`
`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 8 of 14 PageID #: 315
`
`Plaintiff, the invention allows the system to "jump" laterally from one branch to another. (Id.
`
`(citing '379 patent at 3:35-43)). Plaintiff argues that "jumping" is accomplished "by associating
`
`each node with descriptions, and matching words in user' s responses with those descriptions so
`
`the system can jump to nodes that may not be directly connected to a user's current node in the
`
`hierarchically arranged decisional network." (D.I. 17 at 1-2).
`
`Plaintiff argues, "Independent claims 1 and 7 of the '3 79 patent2 are directed to methods
`
`for improved navigation in a computerized hierarchically arranged decisional network that must
`
`be navigated by a user as part of the processing, and that is also constructed to accept user inputs
`
`or data for navigation." (D.I. 17 at 12 (citing '379 patent at 2:9-16)). 3 As a result, argues
`
`Plaintiff, those independent claims are "directed to an improvement in the functioning of a
`
`computer," and are not abstract. Enfish, 822 F.3d at 1338. At oral argument, Plaintiff further
`
`analogized this case to McRo, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
`
`2016). In McRo , the Federal Circuit found that claims were not directed to an abstract idea
`
`because the claims were "focused on a specific asserted improvement in computer animation"
`
`whereby "[t]he claimed process uses a combined order of specific rules that renders information
`
`into a specific format." 837 F.3d at 1314-15. Plaintiff argues that the claims here provide
`
`"implementation details," which are not "purely functional," but rather amount to computer
`
`improvement. (D.I. 17 at 15). First, argues Plaintiff, the "receiving an input" claim limitation
`
`"requires a specific user ... who provides the input, provides the location where the input is
`
`received ... , and what the input is ... . " (Id. (citing '379 patent at 22:47-53)). Second, argues
`
`2 Independent claim 7 is substantially similar to claim I, except that it refers to "vertices" instead of
`"nodes," and requires the user' s input to occur "as a response to a verbal description." Plaintiff makes no arguments
`for the validity of claim 7 that it does not make for claim 1. (D.1. 17 at 12).
`
`3 Plaintiff argues that the claims cover a "computerized" network, even though the claims do not expressly
`do so. (D.l. 17 at 12). I assume for purposes of a motion to dismiss that P laintifPs reading of the patent claims is
`correct.
`
`8
`
`
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`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 9 of 14 PageID #: 316
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`Plaintiff, the "identifying at least one node .. . associated with the at least one keyword"
`
`limitation requires "nodes associated with keywords." (D.I. 17 at 15-16 (citing ' 379 patent at
`
`22:54-56)). Plaintiff argues that "nodes" in "the ordinary setup of a hierarchically arranged
`
`decision network" are "not associated with keywords." (D.I. 17 at 14). Third, argues Plaintiff,
`
`the "jumping" limitation "requires the system to directly traverse from one node/vertex to
`
`another node/vertex that is not directly connected." (Id. at 16).
`
`Defendant, on the other hand, argues that the claims of the ' 3 79 patent are directed to the
`
`abstract idea of "using keywords to search hierarchically-arranged data." (D.I. 14 at 7).
`
`Defendant continues, "The claims of the '3 79 Patent are [] abstract because a human being could
`
`perform the steps of each method claim mentally or with pen and paper." (Id. at 13). "[A]
`
`method that can be performed by human thought alone is merely an abstract idea and is not
`
`patent-eligible under§ 101." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
`
`(Fed. Cir. 2011). Claim 1 recites, "a system having multiple navigable nodes interconnected in a
`
`hierarchical arrangement." Defendant argues that the claimed "nodes" and "interconnections"
`
`are "not physical" or "tangible objects," but rather are "pieces of information" and "logical
`
`relationships between them," respectively. (D.I. 14 at 14). "Such logic constructs," argues
`
`Defendant, "are organizational concepts that humans memorize and work with mentally, even
`
`unknowingly." (Id.) . Defendant continues, "Similarly, the claim feature that nodes must be
`
`' interconnected in a hierarchical arrangement' is an abstract concept drawn from mathematical
`
`'graph theory. "' (Id. (citing ' 379 patent at 2:64-3:43)).
`
`I agree with Defendant. The claims are directed to the idea of "using keywords to search
`
`hierarchically-arranged data." (D.I. 14 at 7). I assume that Plaintiff is correct that the claims
`
`cover a "computerized" network; even so, the claims are not directed to an invention that
`
`9
`
`
`
`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 10 of 14 PageID #: 317
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`improves the functionality of that computerized network. See Enfish, 822 F.3d at 1336 (finding
`
`that the claims at issue were not directed to an abstract idea because "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"). Plaintiff makes no argument as to how the
`
`claims' "implementation details" amount to an "improvement to computer functionality," or
`
`anything other than generic automation of a once-manual method. Plaintiff argues that "nodes"
`
`in "the ordinary setup of a hierarchically arranged decision network" are "not associated with
`
`keywords." (D.I. 17 at 14, 19). However, "keywords" do not necessarily invoke computer
`
`functionality at all. They merely label certain decisions in a decisional hierarchy. Plaintiff
`
`further argues that the claims provide "implementation details." (Id. at 15-16). However,
`
`"receiving an input," "identifying at least one node," and "jumping," are all steps that a person
`
`can perform mentally in navigating a decisional hierarchy. The "implementation details" can be
`
`computerized, but the '379 patent provides no information as to how they might improve the
`
`functionality of a computer or computerized data set.
`
`Plaintiff identifies several "claim construction issues," which it says preclude me from
`
`granting Defendant's motion, and proposes a claim construction for each purported issue. (D.I.
`
`17 at 7-9). However, even were I to adopt Plaintiff's constructions, the independent claims
`
`would be abstract. First, Plaintiff proposes that, "A system having multiple navigable nodes
`
`interconnected in a hierarchical arrangement" and "an arrangement of nodes representable as a
`
`hierarchical graph containing vertices and edges connecting at least two of the vertices" mean "a
`
`computerized system of multiple nodes interconnected in a hierarchically arranged decisional
`
`network in which a user provides inputs or responses at each node to navigate through adjacent
`
`nodes in the hierarchical arrangement." (D.I. 17 at 8). At most, Plaintiff's proposed construction
`
`10
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`
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`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 11 of 14 PageID #: 318
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`puts the claims into a more specific technological environment. "The prohibition against
`
`patenting abstract ideas cannot be circumvented by attempting to limit the use of [the idea] to a
`
`particular technological environment." Alice, 134 S. Ct. at 2358. Second, Plaintiff proposes that
`
`"jumping" means "a direct traversal from one node or vertex to another node or vertex that is not
`
`directly connected to it (i.e., without traversal through any intervening nodes or vertices or to a
`
`node or vertex whose only least common ancestor with that node or vertex is the root node or
`
`vertex)." (D.I. 17 at 8). However, the claims do not actually disclose a mechanism for
`
`"jumping." Plaintiff does little more than claim the idea of moving directly from one "node" in a
`
`decisional hierarchy to another non-adjacent node. Third, Plaintiff proposes that the "jumping to
`
`the at least one node" and "jumping to the vertex" limitations require that the "system," rather
`
`than the "user," jumps to the "at least one node" or "vertex." (Id. at 9). At most, Plaintiffs
`
`proposal amounts to the automation of the mental process of jumping from one node to another.
`
`The proposal does not render the claims non-abstract.
`
`The dependent claims are no less abstract than the independent claims. Claim 2, like
`
`claim 7, covers, "providing a verbal description associated with the at least one node to the user."
`
`Claims 3 and 4 cover using a "thesaurus" to correlate keywords with synonyms. Searching a
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`thesaurus is human task that in no way improves the functioning of a computer. At most, it is an
`
`"insignificant post-solution activity" added onto claim 1 's abstract use of keywords. Mayo, 566
`
`U.S. at 73 (quoting Bilski, 561 U.S. at 611)). Claims 5 and 6 cover, "learning a meaning for [a]
`
`word," and "adding the word to a thesaurus," respectively. Claim 5 does not specify a
`
`mechanism for "learning," but rather claims the abstract idea of "learning." Likewise, claim 6
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`does not specify a mechanism for "adding." Accordingly, each dependent claim is just as
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`abstract as the independent claims.
`
`11
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`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 12 of 14 PageID #: 319
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`I find that all claims of the ' 379 patent are directed to an abstract idea.
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`B. Inventive Concept
`
`The determination that a patent is directed to an abstract idea "does not render the subject
`
`matter ineligible." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
`
`Cir. 2015). Having decided that the patent' s claims are directed to an abstract idea, the Court
`
`must next "determine whether the claims do significantly more than simply describe the abstract
`
`method." Ultramercial, 772 F.3d at 715. Since " a known idea, or one that is routine and
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`conventional, is not inventive in patent terms," this analysis "favors inquiries analogous to those
`
`undertaken for determination of patentable invention." Internet Patents, 790 F.3d at 1346.
`
`Indeed, the Federal Circuit has noted that the two stages of the Alice two-step inquiry "are
`
`plainly related" and "involve overlapping scrutiny of the content of the claims . .. . " Elec.
`
`Power Grp. LLC v. Alstom S A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Furthermore, neither " [a]
`
`simple instruction to apply an abstract idea on a computer," nor "claiming the improved speed or
`
`efficiency inherent with applying the abstract idea on a computer" satisfies the requirement of an
`
`" inventive concept." Intellectual Ventures I, LLC v. Capital One Bank (USA), 792 F.3d 1363,
`
`1367 (Fed. Cir. 2015).
`
`Plaintiff points to two claim limitations which it argues provide an "inventive concept."
`
`Plaintiff argues that "jumping" was not "how prior art hierarchies were navigated," and
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`thus provides an inventive concept. (D.I. 17 at 19). Plaintiff also argues that using "keywords"
`
`to "jump" from "node" to "node" provides the required inventive concept. (Id.) .
`
`An inventive concept "must be more than ' well-understood, routine, conventional
`
`activity. '" Ultramercial, 772 F.3d at 715 . Defendant argues that both "jumping" and "keyword
`
`searching" were "well-known" concepts when the patent was filed on November 19, 2002. (D.I.
`
`12
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`
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`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 13 of 14 PageID #: 320
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`14 at 16; D.I. 22 at 4-6; see D.I. 1-1). However, Defendant provides no citation demonstrating
`
`that "jumping" and "keyword searching" were then well-known. 4 The patent does refer to the
`
`association between keywords and nodes as "an index." ('379 patent at 5:1-6). However, that
`
`reference does not speak to the conventionality of keywords, nodes, and jumping. Thus, there
`
`remains an open question as to whether the claimed "jumping" and "keywords" were "well(cid:173)
`
`understood, routine, conventional activit[ies] ."
`
`"The question of whether a claim element or combination of elements is well-understood,
`
`routine and conventional to a skilled artisan in the relevant field is a question of fact. Any fact,
`
`such as this one, that is pertinent to the invalidity conclusion must be proven by clear and
`
`convincing evidence." Berkheimer, 881 F.3d at 1368. Thus, "[w]hether [the claims] perform
`
`well-understood, routine and conventional activities to a skilled artisan [can be] a genuine issue
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`_of material fact .... " Id. at 1370. Here, there exists a factual dispute as to whether the
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`purported inventive concepts were "well-understood, routine and conventional" in 2002.
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`Therefore, I need not determine whether the '379 patent discloses a mechanism for "jumping."
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`See Intellectual Ventures I LLC v. Erie Indem. Co., 850F.3d1315, 1331 (Fed. Cir. 2017)
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`("Nowhere do the claims recite elements or components that describe how the invention
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`overcomes these compatibility issues."); Two-Way Media Ltd. v. Comcast Cable Commc'ns,
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`LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) ("Inquiry therefore must turn to any requirements for
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`how the desired result is achieved."). Likewise, I cannot determine at this time whether
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`4 Defendant's argument is that the use of keywords and jumping were conventional as the Google search
`engine already existed (D.I. 14 at 16) and Microsoft's Windows was already "ubiquitous" (D.I. 22 at 3). These facts
`are asserted as though they self-evidently prove Defendant's point. Perhaps they do, but they are not referred to in
`the patent and Defendant provides no other basis upon which I can determine the factual correctness of Defendant's
`argument given that we are at the motion to dismiss stage of the case.
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`13
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`
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`Case 1:17-cv-01503-RGA Document 25 Filed 09/17/18 Page 14 of 14 PageID #: 321
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`"jumping" and "keywords" provide an inventive concept. 5 Defendant may re-raise the issue at
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`summary judgment.
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`For the reasons given above, I find that claims 1-7 of the ' 379 patent are drawn to an
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`abstract idea, but that there is a factual issue as to whether they provide an inventive concept.
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`Therefore, I will deny Defendant's Motion to Dismiss.
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`IV. CONCLUSION
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`Defendant's Motion to Dismiss the Complaint Pursuant to Federal Rule of Civil
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`Procedure 12(b)(6) (D.I. 13) is denied.
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`A separate order will be entered.
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`5 The add itional material covered by the dependent claims does not add an inventive concept. Claim 2 adds
`no material beyond what is covered by independent claim 7. Every other dependent claim covers a "well(cid:173)
`understood, routine, or conventional activity." Ultram ercial, 772 F.3d at 715. Claims 3 and 4 cover using a
`thesaurus, and claims 5 and 6 cover "learning a meaning for a word" and "adding the word to a thesaurus."
`Thesauruses are well-known, and their expansion is conventional. Plaintiff fai ls to point to any mechanism for
`"learning" or "adding" that might provide an inventive concept.
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`14
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`