Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 1 of 28 PageID #: 8881
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`VB ASSETS, LLC,
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC., AMAZON.COM LLC,
`AMAZON WEB SERVICES, INC., A2Z
`DEVELOPMENT CENTER, INC. d/b/a LAB126,
`RAWLES LLC, AMZN MOBILE LLC, AMZN
`MOBILE 2 LLC, AMAZON.COM SERVICES, INC.
`f/k/a AMAZON FULFILLMENT SERVICES, INC.,
`and AMAZON DIGITAL SERVICES LLC,
`
`Defendants.
`
`C.A. No. 1:19-cv-01410-MN
`
`REDACTED PUBLIC VERSION
`
`DEFENDANTS’ OMNIBUS REPLY BRIEF IN SUPPORT OF
`MOTIONS FOR SUMMARY JUDGMENT OF INVALIDITY
`AND NON-INFRINGEMENT
`
`ASHBY & GEDDES, P.A.
`Steven J. Balick (#2114)
`sbalick@ashbygeddes.com
`Andrew C. Mayo (#5207)
`amayo@ashbygeddes.com
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-1888
`
`Counsel for Defendants
`Amazon.com, Inc., Amazon.com LLC, Amazon
`Web Services, Inc., A2Z Development Center,
`Inc. d/b/a Lab126, Rawles, LLC, AMZN
`Mobile LLC, AMZN Mobile 2 LLC,
`Amazon.com Services, Inc. f/k/a Amazon
`Fulfillment Services, Inc., and Amazon.com
`Services LLC
`
`Of counsel:
`
`J. David Hadden, CSB No. 176148
`Saina S. Shamilov, CSB No. 215636
`Ravi R. Ranganath, CSB No. 272981
`Vigen Salmastlian, CSB No. 276846
`Allen Wang, CBS No. 278953
`Johnson Kuncheria, CSB No. 335765
`Min Wu, CSB No. 307512
`Jeffrey A. Ware, CSB No. 271603
`Rebecca A.E. Fewkes, CSB No. 209168
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
`
`Dated: March 24, 2023
`
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 2 of 28 PageID #: 8882
`
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`Page
`
`THE ASSERTED CLAIMS ARE DIRECTED TO PATENT-INELIGIBLE
`SUBJECT MATTER AND INVALID UNDER § 101 .......................................................1
`
`A.
`
`B.
`
`C.
`
`The ’703 patent is patent ineligible. .........................................................................1
`
`The ’097 patent is patent ineligible. .........................................................................3
`
`The ’681 patent is patent ineligible. .........................................................................4
`
`II.
`
`THE ACCUSED TECHNOLOGY DOES NOT INFRINGE ANY OF
`THE ASSERTED CLAIMS AS A MATTER OF LAW. ....................................................9
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`VB Assets does not show any “utterance” in Alexa meets the asserted
`claims of the ’681 patent. .........................................................................................9
`
`
`Alexa does not
` as required by the asserted claims of the ’681 patent. ...................12
`
`VB Assets does not show that a specific pair of utterances in Alexa
`meets each requirement of the asserted claims of the ’536 patent. ........................13
`
`
`Alexa does not
` as required by the asserted claims of the ’097 patent. .........................14
`
` as required by
`asserted claims 1, 27, 29, 35, and 36 of the ’176 patent. .......................................16
`
` as required by asserted
`claims 14, 40, 43, 45, and 46 of the ’176 patent. ...................................................18
`
`The accused technology does not infringe asserted claims of the
`’703 patent. ............................................................................................................19
`
`III.
`
`CONCLUSION ..................................................................................................................20
`
`
`
`
`
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 3 of 28 PageID #: 8883
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016)..............................................................................................4, 8
`
`BSG Tech LLC v. BuySeasons, Inc.,
`899 F.3d 1281 (Fed. Cir. 2018)..............................................................................................4, 6
`
`Callwave Commc’ns, LLC v. AT&T Mobility, LLC,
`207 F. Supp. 3d 405 (D. Del. 2016) ...........................................................................................8
`
`cxLoyalty, Inc. v. Maritz Holdings Inc.,
`986 F.3d 1367 (Fed. Cir. 2021)..................................................................................................8
`
`Dropbox, Inc. v. Synchronoss Techs., Inc.,
`815 F. App’x 529 (Fed. Cir. 2020) ............................................................................................2
`
`Dynacore Holdings Corp. v. U.S. Phillips Corp.,
`363 F.3d 1263 (2004) .........................................................................................................16, 18
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016)..............................................................................................1, 4
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)..................................................................................................5
`
`Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd.,
`955 F.3d 1317 (Fed. Cir. 2020)..................................................................................................8
`
`Horizon Pharma, Inc. v. Dr. Reddy’s Lab’ys Inc.,
`839 F. App’x 500 (Fed. Cir. 2021) ......................................................................................4, 20
`
`In re Greenstein,
`782 F. App’x 1035 (Fed. Cir. 2019) ..........................................................................................3
`
`Intell. Sci. and Tech. Inc. v. Sony Elecs., Inc.,
`589 F.3d 1179 (Fed. Cir. 2009)..........................................................................................10, 17
`
`IPA Techs., Inc. v. Amazon.com, Inc.,
`307 F.Supp.3d 356 (D. Del. 2018) .............................................................................................7
`
`SAP Am., Inc. v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018)......................................................................................1, 2, 4, 8
`
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 4 of 28 PageID #: 8884
`
`
`
`SIMO Holdings Inc. v. Hong Kong uCloud-link Network Tech, Ltd.,
`983 F.3d 1367 (Fed. Cir. 2021)..................................................................................................9
`
`Univ. of. Fla. Rsch. Found. v. Gen. Elec. Co.,
`916 F.3d 1363 (Fed. Cir. 2019)..................................................................................................7
`
`Versata Dev. Grp., Inc. v. SAP Am., Inc.,
`793 F.3d 1306 (Fed. Cir. 2015)..................................................................................................3
`
`STATUTES
`
`35 U.S.C. § 101 ........................................................................................................................3, 4, 9
`
`
`
`
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 5 of 28 PageID #: 8885
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`
`
`No.
`1.
`2.
`3.
`4.
`5.
`6.
`7.
`8.
`9.
`10.
`11.
`12.
`13.
`14.
`
`15.
`
`16.
`
`17.
`18.
`19.
`20.
`21.
`22.
`23.
`24.
`25.
`26.
`27.
`
`28.
`29.
`30.
`31.
`
`TABLE OF EXHIBITS1
`
`Exhibit
` U.S. Patent No. 8,073,681 (the “’681 patent”)
` U.S. Patent No. 7,818,176 (the “’176 patent”)
` U.S. Patent No. 8,886,536 (the “’536 patent”)
` U.S. Patent No. 9,269,097 (the “’097 patent”)
` U.S. Patent No. 9,626,703 (the “’703 patent”)
` Opening Expert Report of Michael T. Johnson, Ph.D. (“Johnson Op. Rpt.”)
` Rebuttal Expert Report of Michael T. Johnson, Ph.D. (“Johnson Reb. Rpt.”)
` Reply Expert Report of Michael T. Johnson, Ph.D. (“Johnson Reply Rpt.”)
` Opening Expert Report of Nathaniel Polish, Ph.D. (“Polish Op. Rpt.”)
` Rebuttal Expert Report of Nathaniel Polish, Ph.D. (“Polish Reb. Rpt.”)
` Reply Expert Report of Nathaniel Polish, Ph.D. (“Polish Reply Rpt.”)
` Opening Expert Report of John Charles Peck, Jr. (“Peck Op. Rpt.”)
` Rebuttal Expert Report of Keith R. Ugone, Ph.D. (“Ugone Reb. Rpt.”)
` Excerpt of Deposition Transcript of Michael T. Johnson, Ph.D. (November 12, 2022)
`(“Johnson Dep.”)
` Excerpt of Deposition Transcript of Nathaniel Polish, Ph.D. (December 8, 2022)
`(“Polish Dep.”)
` Excerpt of Deposition Transcript of Nathaniel Polish, Ph.D. (December 16, 2022)
`(“Polish Dep.”)
` Excerpt of Deposition Transcript of John Charles Peck, Jr. (“Peck Dep.”)
` Excerpt of Deposition Transcript of Björn Hoffmeister (“Hoffmeister Dep.”)
` Excerpt of Deposition Transcript of Kelly Vanee (“Vanee Dep.”)
` Excerpt of Deposition Transcript of Vinod Krishnan (“Krishnan Dep.”)
` Excerpt of Deposition Transcript of Michael Rye Kennewick (“Kennewick Dep.”)
` Excerpt of Deposition Transcript of Thomas Freeman (“Freeman Dep.”)
` Excerpt of Deposition Transcript of Larry Baldwin (“Baldwin Dep.”)
` Excerpt of Deposition Transcript of Rajiv Mehta (“Mehta Dep.”)
` Email from I. Liston to V. Salmastlian dated June 3, 2022
` Email from J. Yoon to V. Salmastlian dated August 14, 2022
` Amazon.com, Inc. v. VB Assets, LLC, IPR2020-01367, Exhibit 2005 (May 21, 2021)
`(“VB Assets Disclaimer”)
` Amazon.com, Inc. v. VB Assets, LLC, IPR2020-01367, Paper 6 (Dec. 17, 2020)
` Exhibit 79 of Vinod Krishnan’s June 3, 2022 deposition
` AMZ_VB_PA_00012284-94, titled “Logic and Conversation” (“Grice paper”)
` AMZ_VB_00483521-28,
`
`
`
`
`
`1 Exhibits 1-35 were attached to the Declaration of Saina S. Shamilov (D.I. 188-191) in support
`of Amazon’s opening brief. Exhibits 15 and 17-22 have been updated to include additional testi-
`mony cited in this reply, and Exhibit 36 is a new exhibit. Exhibits 15, 17-22 and 36 are attached
`to the Declaration of Vigen Salmastlian accompanying this reply.
`
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 6 of 28 PageID #: 8886
`
`No.
`32.
`
`33.
`34.
`35.
`36.
`
`Exhibit
` VoiceBox-0006684-91, titled “Enhancing the VUE (Voice-User-Experience) Through
`Conversational Speech” (“VUE paper”)
` VB Assets’ February 18, 2021 Response to Amazon’s Interrogatories
` Amazon’s July 30, 2021 Response to VB Assets’ Interrogatories
` Excerpt of Deposition Transcript of Frederic Deramat (“Deramat Dep.”)
` Amazon.com, Inc. v. VB Assets, LLC, IPR2020-01380, Paper 6 (Nov. 9, 2020)
`
`
`
`
`
`
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 7 of 28 PageID #: 8887
`
`
`
`I.
`
`THE ASSERTED CLAIMS ARE DIRECTED TO PATENT-INELIGIBLE
`SUBJECT MATTER AND INVALID UNDER § 101
`A.
`The ’703 patent is patent ineligible.
`
`It is undisputed that the asserted claims of the ’703 patent are directed to an abstract idea
`
`at Alice step 1. (See D.I. 186 (“Op. Br.”) at 9; D.I. 57 (holding claim 30 of the ’703 patent directed
`
`to the abstract idea of using “a spoken request to buy something”); D.I. 203 (“Opp.”) at 18, n. 4
`
`(declining to “make arguments under Step 1 of the Alice framework” for the ’703 patent).) And
`
`there is no genuine dispute that the claims lack an inventive concept under Alice step 2.
`
`VB Assets argues first that the asserted claims of the ’703 patent are inventive because the
`
`limitation “identifying . . . a product or service to be purchased . . . based at least on the determined
`
`context” is “an advance over the prior art.” (Opp. at 18.) VB Assets is wrong. First, whether the
`
`claims constitute an advance over prior art is irrelevant to their eligibility. SAP Am., Inc. v. In-
`
`vestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). Second, the limitation VB Assets cites is
`
`nothing more than a result: neither the claims nor specification describes how to determine a
`
`product or service to be purchased based on the determined context because VB Assets had no
`
`such solution. (Ex. 5, ’703 patent, claim 1; Ex. 6, Johnson Op. Rpt. ¶ 3055 (claims and specifica-
`
`tion describe only result of identifying a product or service to be purchased); Ex. 16, Polish Dep.,
`
`331:6-20, 346:23-347:2 (
`
`); Ex. 21, Kennewick Dep., 228:23-229:22 (
`
`
`
`).) Such “result-focused, functional” claims
`
`are not inventive. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016).
`
`VB Assets next contends that the use of “context” is inventive. (See Opp. at 19 (arguing
`
`that “context” is not “well-understood, routine, and conventional”).) This contention lacks merit.
`
`The Court declined to construe “context,” and VB Assets’ expert Dr. Polish asserts that
`
`
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 8 of 28 PageID #: 8888
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`
`
`63:13; Ex. 15, Polish Dep., 27:22-24, 57:4-11 (
`
`
`
` (D.I. 90; D.I. 89 (Markman Hr’g Tr.) at 62:15-
`
`).) “Context,” particularly as applied by VB
`
`Assets, cannot supply an inventive concept.2 Dropbox, Inc. v. Synchronoss Techs., Inc., 815 F.
`
`App’x 529, 532-33 (Fed. Cir. 2020) (claimed advance over prior art was a “functional abstraction”
`
`where the specification treated an element of the claimed invention as a “black box”).
`
`Finally, VB Assets suggests that the “press’s reaction” to the launch of Alexa—including
`
`praise of the ability to order paper towels by voice—shows that the ’703 patent’s claims were not
`
`routine and conventional.3 (Opp. at 19-20.) This argument fails. While Alexa is a remarkable
`
`technological achievement, it has nothing to do with VB Assets or its patents. (Op. Br. at 26-27.)
`
`Indeed, thousands of Amazon engineers developed an actual solution to the challenge of voice
`
`shopping; the ’703 patent discloses no such solution, and VB Assets never had one. (Ex. 16, Polish
`
`Dep., 361:20-362:12
`
`), 370:22-371:12 (
`
`(
`
`47:9-23 (
`
`Kennewick Dep., 172:21-173:22 (
`
`
`
`), 373:9-15
`
`); Ex. 22, Freeman Dep.,
`
`); Ex. 21,
`
`.) In any event, the
`
`
`2 Though unrelated to patent eligibility, there is no genuine dispute that the asserted prior art
`discloses the ’703 patent’s “context” limitations. (See Opp. at 19.) While VB Assets now claims
`that the United System does not disclose the asserted claims, Dr. Polish did not provide any opinion
`about this system. (Ex. 16, Polish Dep., 432:25-433:12; Opp. at 19; Op. Br. at 16; Ex. 8, Johnson
`Reply Rpt., ¶ 1051.) Dr. Polish also did not dispute that the MIT Galaxy System, the MINT Sys-
`tem, and the HeyAnita System disclose the “context” limitations of the ’703 patent. (See, e.g., Ex.
`10, Polish Reb. Rpt., ¶¶ 537, 553, 561, 637-651, 654, 659, 663, 665 (
`
`).)
`3 In support of this argument, VB Assets cites Dr. Polish’s opinion regarding secondary con-
`siderations of non-obviousness. (Opp. at 20 (citing Ex. 10, Polish Reb. Rpt., ¶ 694).) But obvi-
`ousness is distinct from patent eligibility. See SAP Am., Inc., 898 F.3d at 1163.
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 9 of 28 PageID #: 8889
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`
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`commercial success of a product alleged to practice a patent does not establish that claims are
`
`inventive at Alice Step 2. In re Greenstein, 782 F. App’x 1035, 1038 (Fed. Cir. 2019); Versata
`
`Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015).
`
`The asserted claims of the ’703 patent recite nothing more than a combination of purely
`
`functional and well-understood, routine, and conventional claim limitations. There is no genuine
`
`dispute that the claims are non-inventive at Alice Step 2, and ineligible and invalid under § 101.4
`
`B.
`
`The ’097 patent is patent ineligible.
`
`There is no dispute that the asserted claims of the ’097 patent are directed to an abstract
`
`idea. (See D.I. 57 at 15 (asserted claims directed to “nothing more than the first half of targeted
`
`marketing: accumulating data about how a person interacts with an advertisement or product”);
`
`Opp. at 18 (declining to offer any argument regarding Alice Step 1 for the ’097 patent).)
`
`There is also no genuine dispute that the asserted claims lack an inventive concept. VB
`
`Assets argues that the claims “describe an enhancement to prior art voice systems by allowing a
`
`computer system to understand a pronoun in the context of preceding advertisement without find-
`
`ing that pronoun ambiguous.” (Opp. at 21.) But it does not point to any description in the patent
`
`of how to determine what a “pronoun” in a user’s utterance refers to. (Op. Br. at 19.) Nor could
`
`it: neither its technical expert nor the patent inventor could find any such disclosure in the patent,
`
`and VB Assets had no such solution. (Ex. 16, Polish Dep., 393:21-394:6; Ex. 22, Freeman Dep.,
`
`194:13-195:20; Ex. 21, Kennewick Dep., 228:4-229:10 (
`
`
`
`¶¶ 3090-91; Ex. 8, Johnson Reply Rpt., ¶ 1049.) The use of pronouns in targeted advertisement is
`
`); see also Ex. 6, Johnson Op. Rpt.,
`
`
`4 VB Assets does not contend that any of the asserted dependent claims of the ’703 patent, or
`that the ordered combination of asserted claims, adds an inventive concept. (See Opp. at 18-20.)
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 10 of 28 PageID #: 8890
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`
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`nothing more than an aspirational result—itself an abstract idea—that the patent nowhere de-
`
`scribes. It cannot provide an inventive concept as a matter of law.5 See BSG Tech LLC v.
`
`BuySeasons, Inc., 899 F.3d 1281, 1289 (Fed. Cir. 2018) (alleged technological improvement must
`
`find some support in the specification); id. at 1290 (abstract idea itself “cannot supply the inventive
`
`concept”); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1260 (Fed. Cir. 2016)
`
`(lack of implementation detail for claimed inventive concept renders claim ineligible); Elec. Power
`
`Grp., LLC, 830 F.3d at 1356 (result-focused and functional claims are non-inventive).
`
`VB Assets devotes pages of argument in an attempt to manufacture a fact dispute over
`
`whether the MIT Galaxy prior art system qualifies as prior art or discloses the asserted claims.6
`
`(Id. at 21-22.) But the parties’ disputes about whether prior art systems are in fact prior art or
`
`render the asserted claims obvious are irrelevant to patent eligibility.7 SAP Am., Inc., 898 F.3d at
`
`1163. The ’097 patent fails at Alice Step 2, and is ineligible and invalid under § 101.8
`
`C.
`
`The ’681 patent is patent ineligible.
`
`VB Assets does not dispute that the Court has not previously analyzed the eligibility of any
`
`currently asserted claim of the ’681 patent. It argues, however, that the Court’s conclusion that
`
`
`5 VB Assets cites to Dr. Polish’s opinion tha
`
` (Opp. at
`21 (citing Ex. 10, Polish Reb. Rpt., ¶ 829).) But this conclusory assertion is unsupported and
`cannot establish a genuine dispute of material fact. Horizon Pharma, Inc. v. Dr. Reddy’s Lab’ys
`Inc., 839 F. App’x 500, 505 (Fed. Cir. 2021) (“a conclusory statement on the ultimate issue does
`not create a genuine issue of fact.”) (citation omitted, emphasis in original).
`6 Contrary to VB Assets’ assertion, Dr. Polish did not substantively respond to Dr. Johnson’s
`opinion that the MIT Galaxy System is prior art to each asserted patent. (Ex. 6, Johnson Op. Rpt.,
`¶¶ 227-49; Ex. 10, Polish Reb. Rpt., ¶¶ 53-56.)
`7 VB Assets’ argument that “the presence of a claim element in a single prior art reference is
`not sufficient to show that an inventive concept was well-understood, routine or conventional” is
`a red herring, as Amazon did not rely solely on prior art to establish the non-inventiveness of the
`claims. (See, e.g., Op. Br. at 18.)
`8 VB Assets does not contend that any other claim elements provide an inventive concept, or
`argue that the ordered combination of claim elements is inventive. (See Opp. at 20-22.)
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 11 of 28 PageID #: 8891
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`
`
`claim 41 of the ’681 patent is not abstract applies to the currently asserted claims.9 (Opp. at 12-
`
`13.) But VB Assets statutorily disclaimed claim 41, among other claims, in May 2021, before a
`
`Final Written Decision issued on Amazon’s IPR challenging the ’681 patent, admitting that the
`
`claim did not include any new subject matter that did not already exist in the prior art. (Ex. 27,
`
`VB Assets Disclaimer at 1.) That claim is thus irrelevant.
`
`The asserted ’681 patent claims are abstract at Alice Step 1. As the Federal Circuit noted
`
`in Enfish, “the first step in the Alice inquiry . . . asks whether the focus of the claims is on [a]
`
`specific asserted improvement in computer capabilities . . . .” Enfish, LLC v. Microsoft Corp., 822
`
`F.3d 1327, 1335-36 (Fed. Cir. 2016). Here, the undisputed record shows that the claims are not
`
`directed to an improvement in computing technology, but are instead aimed at the aspirational
`
`application of well-known observations about human interactions to human-computer interactions.
`
`The patent inventors, Tom Freeman and Larry Baldwin of VoiceBox Technologies, described the
`
`concept of “Cooperative Conversations” in the VUE paper in 2006. (VUE paper at Cover.) The
`
`paper described shared short-term and long-term knowledge as key concepts of the “Cooperative
`
`Conversations” model. (Id. at VoiceBox-0006689.) These concepts came directly from a paper
`
`authored by Paul Grice, a noted philosopher of language, nearly two decades earlier. (Id.) In that
`
`1975 paper, Grice described the “Cooperative Principle” of human conversations—i.e., “that each
`
`participant contributes to the exchange for the benefit of the exchange, and those exchanges have
`
`an ‘accepted purpose or direction.’” (Id.) The VUE paper described an aspiration to implement
`
`the “maxims” of human conversation, described by Dr. Grice decades earlier, in a computer speech
`
`system. (Id.) For example,
`
`
`
`
`9 The Court invited the parties to raise issues related to patent eligibility again at summary
`judgment with “a more developed record.” (See D.I. 57 at 16.) Thus, Amazon focuses in this brief
`on evidence developed in discovery that shows the asserted claims are ineligible.
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 12 of 28 PageID #: 8892
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`
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`likewise testified that
`
` (Ex. 23, Baldwin Dep., 150:15-151:15.) Mr. Freeman
`
`
`
` (Ex. 22, Freeman Dep., 100:24-101:10; see also id. at 126:4-13 (
`
`
`
`
`
`
`
`to utilize the concepts described by Grice in a computerized speech system, it described just that
`
`).) Though the VUE paper proposed
`
`idea rather than any specific solution.10 As Mr. Freeman explained,
`
`(Id. at 106:13-19; see also id. at 104:3-14 (
`
`
`
`
`
`
`
`).) Messrs. Freeman and Baldwin
`
`filed the application that led to the ’681 patent the same day the VUE paper was published.11 (See
`
`VUE paper at Cover; ’681 patent at Cover.) This makes sense, because as Mr. Baldwin explained,
`
`12 (Ex. 23, Baldwin Dep., 131:15-21.)
`
`
`10 VB Assets’ only response to the overwhelming record evidence showing that the ’681 patent
`repackaged concepts from Grice is that the paper did not describe the use of shared knowledge by
`a computer speech system. (See Opp. at 16.) But taking decades-old principles and applying them
`on a computer is neither a technological solution nor inventive. BSG Tech. LLC, 899 F.3d at 1285.
`11 In the Opening Brief, Amazon incorrectly stated that the VUE paper was published 15 years
`before the ’681 patent was filed. (Op. Br. at 20; Opp. at 15-16.) Amazon intended to say that the
`’681 patent and the contemporaneous VUE paper recycle concepts from the Grice paper, which
`was published more than 15 years before the patent was filed.
`12 Compare VUE paper at VoiceBox-0006686-6690, with ’681 patent at 1:13-2:67, 3:15-40,
`10:26-56, 10:57-67, 13:10-17:50, 4:33-5:30, 13:10-14:23.
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 13 of 28 PageID #: 8893
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`
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`The authors of the VUE paper and the ’681 patent described only the aspiration of using
`
`shared knowledge in speech processing because they had no actual solution. Mr. Freeman admit-
`
`ted that
`
`Freeman Dep., 170:3-11; see also id. at 142:2-8 (
`
`
`
` (Ex. 22,
`
`).)
`
`This testimony—which the Court did not have when resolving Amazon’s motion to dis-
`
`miss—makes clear that the ’681 patent merely describes decades-old observations about human
`
`conversation, and directs skilled artisans to utilize them in a speech system. Such aspirational
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`claims are not a specific technological solution, and are abstract at Alice Step 1. IPA Techs., Inc.
`
`v. Amazon.com, Inc., 307 F.Supp.3d 356, 369 (D. Del. 2018) (claim that is “aspirational in nature”
`
`directed to abstract idea at Alice Step 1); Univ. of. Fla. Rsch. Found. v. Gen. Elec. Co., 916 F.3d
`
`1363, 1367 (Fed. Cir. 2019) (invalidating patent that takes existing concept and “simply proposes
`
`doing so with a computer”).
`
`VB Assets’ arguments do not change this conclusion. It argues first that the ’681 patent
`
`claims improve voice interfaces by
`
`
`
` (Opp. at 14 (quoting Ex. 10, Polish Reb. Rpt. ¶ 794).) But
`
`neither VB Assets nor its expert Dr. Polish identify any solution in the patent that would provide
`
`this benefit. (See Ex. 7, Johnson Reply Rpt. ¶ 1009 (noting that Dr. Polish points only to “generic,
`
`results-oriented disclosures in the ’681 patent specification” that are “aspirational, and identical to
`
`the abstract idea”); see also Ex. 16, Polish Dep., 391:5-19 (
`
`
`
`
`
`).) Indeed, the only disclosure Dr. Polish cites to support
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 14 of 28 PageID #: 8894
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`
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`his description of the purported improvement enabled by the ’681 patent is a description of the
`
`advantages of the claimed system—a result—not a technological solution. (Opp. at 14; Ex. 1, ’681
`
`patent, 2:49-54 (describing “advantages . . . provided over existing voice user interfaces, such as
`
`Command and Control systems”)); see, e.g., Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd.,
`
`955 F.3d 1317, 1328-29 (Fed. Cir. 2020) (declining to consider specification’s description of ben-
`
`efits of the alleged invention untethered to claims). And Dr. Polish’s conclusory expert testimony
`
`cannot change the claims’ abstract nature. cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367,
`
`1378 (Fed. Cir. 2021) (rejecting “conclusory expert testimony” regarding Alice Step 1).
`
`VB Assets next argues that the claims are non-abstract and inventive because the Patent
`
`Office concluded certain prior art did not disclose the asserted claims, including “determining
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`context from short and long term knowledge.”13 (Opp. at 14-15 (citing Notice of Allowance,
`
`arguing “[t]he file history confirms that the claims pertain to a specific technological improve-
`
`ment”) (emphasis in original); id. at 17.) This argument fails for two reasons. First, as noted
`
`above, VB Assets disclaimed claim 41 of the ’681 patent—reciting the similar limitations “iden-
`
`tify[ing] a context associated with the utterance from the short-term shared knowledge and the
`
`long-term shared knowledge” and “establish[ing] an intended meaning for the utterance.” In doing
`
`so, VB Assets effectively admitted the prior art already disclosed these limitations. Second,
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`whether prior art discloses the asserted claim limitation bears on novelty and nonobviousness, not
`
`eligibility. SAP Am., Inc., 898 F.3d at 1169-70; Affinity Labs, 838 F.3d at 1263 (purported novelty
`
`of a claimed feature does not “avoid the problem of abstractness”); Callwave Commc’ns, LLC v.
`
`
`13 VB Assets does not identify any dependent claims that recite an inventive concept, or con-
`tend that the ordered combination of claim limitations is inventive. (See Opp. at 17-18.)
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 15 of 28 PageID #: 8895
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`
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`AT&T Mobility, LLC, 207 F. Supp. 3d 405, 415 (D. Del. 2016) (“repeated assertions that the in-
`
`ventive concept is demonstrated by the fact that the PTO granted the claims over certain prior art,
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`both initially and after reexamination, are irrelevant to the § 101 inquiry.”).
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`There is thus no material dispute that the ’681 patent’s asserted claims are abstract, non-
`
`inventive and ineligible. The Court should grant summary judgment of invalidity under § 101.
`
`II.
`
`THE ACCUSED TECHNOLOGY DOES NOT INFRINGE ANY OF THE
`ASSERTED CLAIMS AS A MATTER OF LAW.
`A.
`VB Assets does not show any “utterance” in Alexa meets the asserted claims
`of the ’681 patent.
`
`It is undisputed that every asserted claim of the ’681 patent requires “receiving an utterance
`
`. . . during a current conversation” (element 1.a) and processing it in a specific way (elements 1.b-
`
`1.g). (See, e.g., Ex. 1, ’681 patent, claim 1; Opp. at 24.) Specifically, every claim requires accu-
`
`mulating “short-term shared knowledge . . . about the utterance,” accumulating “long-term shared
`
`knowledge,” “determining an intended meaning for the utterance,” “identifying . . . a context as-
`
`sociated with the utterance from the short-term . . . and the long-term shared knowledge,” “estab-
`
`lishing the intended meaning [of the utterance] within the identified context,” and generating a
`
`response to the utterance” that is “grammatically or syntactically adapt[ed].” (Id.) Thus, to prove
`
`infringement VB Assets must show Alexa processes an utterance as required by each claim ele-
`
`ment. See SIMO Holdings Inc. v. Hong Kong uCloud-link Network Tech, Ltd., 983 F.3d 1367,
`
`1380 (Fed. Cir. 2021). Yet, Dr. Polish testified
`
`
`
`Assets does not address. (Ex. 15, Polish Dep., 122:3-10.) Instead, to save its claims, VB Assets
`
`points to Dr. Polish’s report. (Opp. at 24.) But when an expert admits that the opinions in his
`
`report are not what the law requires, as Dr. Polish did at his deposition, those admissions govern
`
`—a fatal admission that VB
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`Case 1:19-cv-01410-MN Document 217 Filed 03/30/23 Page 16 of 28 PageID #: 8896
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`
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`and cannot be ignored.14 Nor can VB Assets avoid summary judgment by “simply framing the
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`expert’s conclusion as an assertation that a particular critical claim limitation is found in the ac-
`
`cused device.” Intell. Sci. and Tech. Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1184 (Fed. Cir. 2009).
`
`And pointing to Dr. Polish’s expert report does not save VB Assets’ claim. In the report,
`
`as Dr. Polish acknowledged in his deposition, he did not consistently map a single utterance to all
`
`claim elements as required. VB Assets points to “screenshots of examples of interactions with
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`Alexa” in Dr. Polish’s report—a
`
`—that he mapped to some, but not all, elements of the claims. (Opp. at 23-24 (citing
`
`Polish Op. Rpt., pp. 52-53).) VB Assets claims that Dr. Polish did not “need[] to rely on screen-
`
`shots of user interactions with Alexa for each element” because some elements are directed to
`
`“internal components and processing in Alexa . . . .” (Id. at 25.) But Dr. Polish failed to consist-
`
`ently map the elements of the claim to any utterance—whether in a screenshot or otherwise. The
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`claims require a specific utterance to be processed in a specific way regardless of whether that
`
`processing is done by any accused “internal components . . . in Alexa.” Dr. Polish did not explain
`
`for any utterance what in Alexa is the claimed “identif[ied] . . . context associated with the utter-
`
`ance,” how that specific context is identified “from the short-term . . . and the long-term shared
`
`knowledge,” what is “the intended meaning within the identified context” and the “generat[ed] []
`
`response to the utterance” that is “grammatically or syntactically adapt[ed].”15 (Ex. 1, ’681 patent,
`
`claims 1, 13, 25; Ex. 9, Polish Op. Rpt., ¶¶ 170-72, 180-82; Ex. 11, Polish Reply Rpt., ¶¶ 73-75.)
`
`
`14 VB Assets submits a new declaration from Dr. Polish reaffirming the “statements and opin-
`ions” in his reports as “true and correct.” (D.I. 204 at 2.) But Dr. Polish’s declaration cannot
`eviscerate his deposition testimony admitting the numerous flaws in his opinions.
`15 While VB Assets claims that its infringement theory covers “the single utterance in a one-
`shot interaction,” Dr. Polish did not map a “one-shot interaction” to each limitation of the claims.
`(See, e.g., Opp. at 24-25 (discussing only limitation 1.b regarding short-term shared knowledge);
`see also Ex. 15, Polis