Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 1 of 15 PageID #: 900
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Case No. 1:19-cv-01410-MN
`
`))))))))))))))))
`
`
`
`
`VB Assets, LLC,
`
`
`v.
`
`Plaintiff,
`
`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.
`
`DEFENDANTS’ REPLY IN SUPPORT OF MOTION TO DISMISS FIRST AMENDED
`COMPLAINT PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 12(B)(6)
`
`Steven J. Balick (#2114)
`Andrew C. Mayo (#5207)
`ASHBY & GEDDES
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-1888
`sbalick@ashbygeddes.com
`amayo@ashbygeddes.com
`
`Counsel for Defendants
`Amazon.com, Inc.; Amazon.com LLC; Amazon
`Web Services, Inc.; A2Z Development Center,
`Inc. d/b/a/ Lab126; Rawles LLC; AMZN Mo-
`bile LLC; AMZN Mobile 2 LLC; Amazon.com
`Services, Inc. f/k/a Amazon Fulfillment Ser-
`vices, Inc.; and Amazon Digital Services LLC
`
`Of counsel:
`
`J. David Hadden, CSB No. 176148
`Email: dhadden@fenwick.com
`Saina S. Shamilov, CSB No. 215636
`Email: sshamilov@fenwick.com
`Ravi R. Ranganath, CSB No. 272981
`Email: rranganath@fenwick.com
`Vigen Salmastlian, CSB No. 276846
`Email: vsalmastlian@fenwick.com
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`Telephone:
`650.988.8500
`Facsimile:
`650.938.5200
`
`
`Dated: December 4, 2019
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 2 of 15 PageID #: 901
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`
`
`I.
`
`II.
`
`III.
`
`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION ...............................................................................................................1
`
`CLAIM CONSTRUCTION CANNOT SAVE VB ASSETS’ PATENTS. .........................1
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`VB ASSETS’ PATENT CLAIMS ARE DIRECTED TO ABSTRACT IDEAS AND
`THUS FAIL AT ALICE STEP 1. ........................................................................................2
`
`A.
`
`B.
`
`C.
`
`The Baldwin Patents Are Directed to an Abstract Idea. ..........................................3
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`The Kennewick Patent Is Directed to an Abstract Idea. ..........................................4
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`The Freeman Patents Are Directed to an Abstract Idea. ..........................................5
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`IV.
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`VB ASSETS’ CLAIMS DISCLOSE NO INVENTIVE CONCEPT, AND THUS FAIL
`AT ALICE STEP 2. ..............................................................................................................8
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`V.
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`CONCLUSION ..................................................................................................................10
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 3 of 15 PageID #: 902
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`
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`CASES
`
`TABLE OF AUTHORITIES
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`PAGE(S)
`
`Affinity Labs of Tex., LLC v. Amazon.com, Inc.,
`838 F.3d 1266 (Fed. Cir. 2016)............................................................................................6
`
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016)............................................................................................2
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)..............................................................................3, 7, 8, 10
`
`British Telecommc’nns PLC v. IAC/InterActive Corp.,
`381 F. Supp. 3d 293 (D. Del. 2019) .............................................................................3, 4, 9
`
`BSG Tech. LLC v. Buyseasons Inc.,
`899 F.3d 1281 (Fed. Cir. 2018)........................................................................................5, 9
`
`Content Extraction and Transmission LLC v. Wells Fargo Bank N.A..,
`776 F.3d 1343 (Fed. Cir. 2014)............................................................................................1
`
`Epic IP LLC v. Backblaze, Inc.,
`351 F. Supp. 733 (D. Del. 2018) ..........................................................................................8
`
`In re Marco Guldenaar Holding B.V.,
`911 F.3d 1157 (Fed. Cir. 2018) (Mayer, J. concurring) .......................................................5
`
`In re TLI Commc’ns LLC Pat. Litig.,
`823 F.3d 607 (Fed. Cir. 2016)........................................................................................2, 10
`
`Intellectual Ventures I LLC v. Capital One Bank (USA),
`792 F.3d 1363 (Fed. Cir. 2015)............................................................................................9
`
`IPA Techs. Inc. v. Amazon.com, Inc.,
`307 F. Supp. 3d 356 (D. Del. 2018) .............................................................................1, 2, 8
`
`SAP Am., Inc. v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018)..........................................................................................10
`
`TrackTime, LLC v. Amazon.com, Inc.,
`No. 18-1518 (MN), 2019 WL 2524779 (D. Del. June 19, 2019) ........................................8
`
`Two-Way Media Ltd. v. Comcast Cable Commc’ns LLC,
`874 F.3d 1329 (Fed. Cir. 2017)................................................................................3, 4, 5, 8
`
`Valentine Commc’ns, LLC v. Six Contents Hotels, Inc.,
`389 F. Supp. 3d 1223 (N.D. Ga. 2019) ................................................................................9
`
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 4 of 15 PageID #: 903
`TABLE OF AUTHORITIES
`(CONTINUED)
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`Page(s)
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`Voit Techs., LLC v. Del-Ton, Inc.,
`757 Fed. App’x 1000 (Fed. Cir. 2019) ...............................................................................10
`
`STATUTES
`
`35 U.S. Code § 101 .......................................................................................................... passim
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 5 of 15 PageID #: 904
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`I.
`
`INTRODUCTION
`VB Assets’ arguments all fail as a matter of law. VB Assets argues that the Court should
`
`defer the § 101 analysis until after claim construction; yet, courts routinely resolve § 101 chal-
`
`lenges on the pleadings alone, especially when, as it is here, the patentee offers no proposed con-
`
`structions, let alone constructions that would change the eligibility analysis. VB Assets argues
`
`that its claims cannot be abstract because they purportedly improve the prior art. But the Federal
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`Circuit and courts in this district have consistently held that novelty does not establish patent eli-
`
`gibility because even novel abstract ideas are unpatentable. VB Assets proclaims that its claims
`
`are inventive by paraphrasing the claimed abstract ideas or citing functional claim limitations. The
`
`Federal Circuit has rejected both approaches. Simply calling the idea of using shared information,
`
`voice shopping, and voice advertisement inventive does not make it so. To survive a § 101 chal-
`
`lenge, VB Assets must identify a specific technological solution in its claims or an inventive con-
`
`cept that transforms the claimed idea into patent eligible subject matter. VB Assets does neither.
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`The Court should dismiss VB Assets’ amended complaint with prejudice for failure to allege in-
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`fringement of a patentable claim under § 101.
`
`II.
`
`CLAIM CONSTRUCTION CANNOT SAVE VB ASSETS’ PATENTS.
`VB Assets contends that it would be “premature” to determine the ineligibility of its claims
`
`because “there will likely be claim construction disputes” in this case.1 (Opp. at 4.) It argues that
`
`the Court should defer resolution of the § 101 issue because parties “may dispute the meaning of”
`
`
`1 Both the Federal Circuit and courts in this district have rejected generalized pleas for claim
`construction, and have repeatedly confirmed that patent eligibility can be determined without any
`formal claim construction. Content Extraction and Transmission LLC v. Wells Fargo Bank N.A..,
`776 F.3d 1343, 1349 (Fed. Cir. 2014) (“claim construction is not an inviolable prerequisite to a
`validity determination under § 101”); IPA Techs. Inc. v. Amazon.com, Inc., 307 F. Supp. 3d 356,
`372 (D. Del. 2018) (“I do not find claim construction of these terms a necessary predicate to de-
`ciding this motion. Plaintiff does not propose any interpretation of these terms, let alone one that
`it argues would render the claims patentable.”).
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 6 of 15 PageID #: 905
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`
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`the terms “short-term shared knowledge,” “context,” “speech recognition engine,” “speech recog-
`
`nition,” and “domain agent.” (Opp. at 3 (emphasis added).) But VB Assets does not identify any
`
`dispute based on Amazon’s motion or proposed constructions for these terms. Instead it lists pos-
`
`sible constructions and points to descriptions of the terms in the patents. (See, e.g., id. at 3 (“short-
`
`term shared knowledge” and “context” should be construed “based on the intrinsic record”; “do-
`
`main agent” and “speech recognition engine” terms “may be construed as . . .”).)
`
`VB Assets also does not explain how any construction of these terms would affect the
`
`eligibility of its claims; none would. VB Assets notes that “short-term knowledge” may be deter-
`
`mined from a single conversation, and describes a few exemplary inputs to that short-term
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`knowledge. (Id.) But it points to no description in the specification or claim limitation of how a
`
`computer can be programmed to use short-term knowledge to improve its interpretation of a spo-
`
`ken utterance; none is there. And the terms “speech recognition” and “speech recognition engine”
`
`cannot affect patent eligibility because the patents make clear that these refer to techniques well
`
`known in the art. (See, e.g., ’681 patent at 7:28-30 (speech recognition engine “process[es] the
`
`utterance using any suitable technique known in the art.”) (emphasis added)); Apple, Inc. v.
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`Ameranth, Inc., 842 F.3d 1229, 1244-45 (Fed. Cir. 2016) (invalidating claim reciting generic
`
`“voice capture technologies”). Nor can the term “domain agent”; as described below, the claimed
`
`agents are mere functional black boxes not specific technological improvements. VB Assets nei-
`
`ther proposes any claim constructions nor describes how these constructions affect the § 101 anal-
`
`ysis, the Court can resolve § 101 invalidity without engaging in any claim construction. IPA, 307
`
`F. Supp. 3d at 373.
`
`III. VB ASSETS’ PATENT CLAIMS ARE DIRECTED TO ABSTRACT IDEAS AND
`THUS FAIL AT ALICE STEP 1.
`The relevant inquiry under Alice Step 1 is whether the claims are “directed to a specific
`
`improvement to computer functionality,” or are instead directed to an abstract idea. In re TLI
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 7 of 15 PageID #: 906
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`
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`Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). Rather than identifying such an
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`improvement in its claims, VB Assets focuses almost exclusively on statements in the specification
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`and prosecution history distinguishing the claims from prior art. But such arguments relate at most
`
`to novelty, not patent eligibility. Two-Way Media Ltd. v. Comcast Cable Commc’ns LLC, 874
`
`F.3d 1329, 1340 (Fed. Cir. 2017) (district court properly disregarded materials from patent office
`
`proceedings because “[e]ligibility and novelty are separate inquiries”); British Telecommc’nns
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`PLC v. IAC/InterActive Corp., 381 F. Supp. 3d 293, 310 (D. Del. 2019) (if examiner’s conclusion
`
`regarding novelty meant claims were patent-eligible, no patents would be invalidated under § 101).
`
`VB Assets’ claims are abstract and ineligible.
`
`A.
`The Baldwin Patents Are Directed to an Abstract Idea.
`VB Assets argues that the Baldwin patents are not abstract because they purportedly im-
`
`proved on prior art “Command and Control” voice user interface systems. (Opp. at 6.) It points
`
`to the patents’ disclosure of “an Automatic Speech Recognizer (‘ASR’) to generate a preliminary
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`interpretation and provide that preliminary interpretation to conversational speech engine for fur-
`
`ther processing.” (Id.) As an initial matter, VB Assets cites to descriptions of the speech recog-
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`nition engine in the specification, but to be relevant to patent eligibility, these purported improve-
`
`ments must be “captured in the claims” themselves. Berkheimer v. HP Inc., 881 F.3d 1360, 1369
`
`(Fed. Cir. 2018). The claims include no such description of the benefits of the ASR, and VB
`
`Assets identifies none. Regardless, whatever benefits may flow from the ASR cannot be attributed
`
`to VB Assets’ claims: the Baldwin patents confirm that the ASR simply uses prior art speech
`
`recognition techniques. (’681 patent at 7:24-30 (“The speech recognition engine 110 [ASR] may
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`process the utterance using any suitable technique known in the art.”).)
`
`VB Assets next contends that the examiner “confirm[ed] that the claims pertain to a spe-
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`cific technological improvement” by allowing the claims over a prior art reference that “lacked
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`short-term shared knowledge about the conversation or long-term shared knowledge about past
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`conversations with the user.” (Opp. at 7.) This contention lacks merit for at least three reasons.
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`First, the fact that an examiner allowed the claims over prior art is irrelevant to the eligibility of
`
`the claims. British Telecommc’ns PLC, 381 F. Supp. 3d at 310. Second, using shared knowledge
`
`is nothing more than a restatement of an abstract idea; it is not an improvement to computing
`
`technology. Third, the Baldwin patents make clear that the use of short- and long-term shared
`
`knowledge is just how humans interact with each other in everyday conversation. (’681 patent at
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`14:6-9 (“Long-term and short-term shared knowledge . . . may be used simultaneously anytime a
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`user engages in a cooperative conversation 300.”).) The claims provide no specific solution—e.g.,
`
`an algorithm or special programming—for using shared knowledge to improve voice recognition
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`technology. VB Assets does not identify one. The claims are directed to the abstract idea itself.
`
`See Two-Way Media, 874 F.3d at 1337 (claims “directed to a result or effect that itself is the ab-
`
`stract idea and merely invoke[] generic processes and machinery” are ineligible).
`
`VB Assets similarly argues that the ’049 patent discloses an improvement to prior art sys-
`
`tems because it requires the use of a “model that includes short-term knowledge.” (Opp. at 7.)
`
`But the claimed “model” is nothing more than a generic description of the use of shared
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`knowledge. (See, e.g., ’049 patent, cl. 11 (“identify a first model that includes short-term
`
`knowledge about the conversation”).) Neither the claims nor the specification of the Baldwin
`
`patents describe how a computer is to construct or use the claimed “model.”
`
`The Baldwin patents are directed to the abstract idea of responding to a spoken request
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`using shared information, and do not disclose a specific solution for achieving the result they claim.
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`They are abstract and ineligible under Alice Step 1.
`
`B.
`The Kennewick Patent Is Directed to an Abstract Idea.
`VB Assets contends that the claims of the Kennewick patent are not abstract because they
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`purportedly improved prior art online shopping systems by using “context” to complete a transac-
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`tion by identifying product, payment, and shipping information. (Opp. at 10.) It argues that the
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`Kennewick patent claims “a specific technological improvement over the prior art, namely the
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`‘context’ for the voice communications.” (Id. at 11.) But VB Assets identifies nothing in the
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`claims or the specification that explains how to use “context” to facilitate voice shopping; none
`
`exists. The Kennewick patent claims the idea of voice shopping itself, not any particular imple-
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`mentation of that idea. Such claims are ineligible as a matter of law. BSG Tech. LLC v. Buyseasons
`
`Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018) (“For an application of an abstract idea to satisfy step
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`one, the claim’s focus must be something other than the abstract idea itself.”).
`
`VB Assets points to two claim limitations as “improving the functioning of online shop-
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`ping”: the “request for user confirmation,” recited in claim 25, and “stor[ing] product information”
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`after the user identifies the product, recited in claim 29. (Opp. at 11.) But these are just results—
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`they do not disclose an algorithm or any improvement to computing technology. They are also
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`ubiquitous features of any e-commerce website. For example, www.amazon.com stored payment
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`and shipping information a decade before the 2006 priority date of the Kennewick patent.2
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`The Kennewick patent is directed to the abstract idea of responding to a spoken request by
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`completing a transaction for a product or service; it simply “asserts that the claim[s] solve[] various
`
`technical problems” while “us[ing] generic functional language to achieve these purported solu-
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`tions.” Two-Way Media, 874 F.3d at 1339. It is abstract and ineligible under § 101.
`
`C.
`The Freeman Patents Are Directed to an Abstract Idea.
`VB Assets characterizes the purported technological improvement of the claims of the
`
`
`2 In resolving patent eligibility, the Court can make “general historical observations” about
`what technology was well-understood, routine, and conventional as of the date of the patents. See
`In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1164 (Fed. Cir. 2018) (Mayer, J. concurring).
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`Freeman patents as follows:
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`[T]he [Freeman] patents advantageously use a speech recognition engine and nat-
`ural language processing to interpret natural language utterances, establish context
`for the natural language utterance, identify requests associated with the natural lan-
`guage utterances, and provide an advertisement or promotional content to the user
`. . . allowing the user to engage in a productive, cooperative dialogue to resolve
`requests and advance a conversation.
`
`(Opp. at 12 (emphasis added).) This is nothing but a list of aspirational results, and VB Assets
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`does not identify any specific way of achieving these results other than by using existing technol-
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`ogy in a conventional manner. The Freeman patents neither claim nor disclose any new speech
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`recognition engine or way of interpreting spoken requests—to the contrary, they expressly state
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`that this should be done using prior art systems. (See, e.g., ’176 patent at 3:3-19 (describing “Au-
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`tomatic Speech Recognizer 110” as performing natural language processing using techniques dis-
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`closed in various prior art patents); see also ’681 patent at 7:28-30 (“The speech recognition engine
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`110 may process the utterance using any suitable technique known in the art.”).) VB Assets’
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`claims do not improve these prior art techniques.
`
`Claim 27 of the ’176 patent illustrates the results-focused character of the Freeman patent
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`claims. It requires a “speech recognition engine” and a “conversational language processor” con-
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`figured to “interpret the recognized words or phrases” and “select an advertisement in the context
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`established for the natural language utterance.” (’176 patent, cl. 27.) The claim discloses no new
`
`speech recognition engine—this is purely conventional technology that predates the patents. And
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`the claim provides no algorithm or technique for configuring the conversational language proces-
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`sor to “interpret” the recognized words, determine a context, or generate an advertisement based
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`on the context. Such results-based claims are abstract and ineligible. Affinity Labs of Tex., LLC
`
`v. Amazon.com, Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (invalidating claims that “do no more
`
`than describe a desired function or outcome, without providing any limiting detail that confines
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 11 of 15 PageID #: 910
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`the claim to a particular solution to an identified problem”).
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`VB Assets points to individual claim elements as evidence that the claims of the Freeman
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`patents improved on the prior art and are not abstract. But none describes a technological solution
`
`for achieving the claimed results. First, VB Assets argues that claim 27 of the ’176 patent improves
`
`on prior art voice recognition systems because it requires mapping phonemes to syllables. (Opp.
`
`at 12, 13.) But according to VB Assets’ own patents, mapping phonemes to syllables was a stand-
`
`ard feature of prior art speech recognition engines, and not an innovation of the Freeman patents.
`
`(See, e.g., ’681 patent at 7:28-33 (describing “suitable [speech recognition] technique[s] known in
`
`the art” including “interpret[ing] the utterance using techniques of phonetic dictation to recognize
`
`a phoneme stream”); ’176 patent at 3:39-41 (describing use of conventional “techniques of pho-
`
`netic dictation to recognize a stream of phonemes”).) This is not a technological solution, and VB
`
`Assets’ arguments to the contrary, which conflict with the disclosures of the patents themselves,
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`are entitled to no weight. Berkheimer, 890 F.3d at 1370-71.
`
`Second, VB Assets argues that the “domain agents” claimed in the ’536 patent render its
`
`claims patent-eligible. (Opp. at 13.) That too is wrong. As an initial matter, the only claim of the
`
`’536 patent that VB Assets charts in its complaint, claim 44, does not require “domain agents.”
`
`(See, e.g., D.I. 22-11 (Claim Chart for Claim 44 of the ’536 patent).) Moreover, the claims that
`
`do recite “domain agents” describe them only as black boxes that provide interpretations; nothing
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`in the claims provides any information about what they are or how they provide an interpretation.
`
`(See, e.g., ’536 patent, cl. 1 (reciting “providing [] one or more recognized words to a first domain
`
`agent,” “obtaining a first interpretation . . . from the first domain agent,” and “obtaining a second
`
`interpretation . . . from the second domain agent”).) Indeed, merely reciting the use of an “‘agent’
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`as an intermediary using broad functional language, providing no detail regarding how an ‘agent’
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`is implemented in the claimed method,” does not constitute a “specific technological improvement
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`or solution to a technological problem . . . .” IPA, 307 F. Supp. 3d at 366.
`
`Third, VB Assets points to the ’097 patent claims’ requirement of using a “pronoun” to
`
`determine context and interpret an utterance as evidence that its claims are not abstract. (Opp. at
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`14.) But nothing in the claims or specification of the ’097 patent describes how to interpret pro-
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`nouns (something humans have done since the beginning of time); the claims merely recite the
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`result of doing so. (See, e.g., ’097 patent, cl. 1 (reciting “interpreting . . . the natural language
`
`utterance . . . and, responsive to the existence of a pronoun in the natural language utterance, de-
`
`termining whether the pronoun refers to one or more of the product or service or a provider of the
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`product or service”.) This is not a specific technological solution. Two-Way Media, 874 F.3d at
`
`1337 (“The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘moni-
`
`toring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results
`
`in a non-abstract way”).
`
`The Freeman patents are directed to the abstract idea of responding to a spoken request
`
`with an advertisement and disclose no technological solution for achieving this result. They are
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`abstract and ineligible under § 101.
`
`IV. VB ASSETS’ CLAIMS DISCLOSE NO INVENTIVE CONCEPT, AND THUS FAIL
`AT ALICE STEP 2.
`VB Assets does not identify any inventive concept required to save its claims at Alice step
`
`2. It relies on either its complaint or the prosecution history to show that certain claim elements
`
`purportedly did not exist in the prior art and were therefore inventive. But, again, the law is clear
`
`that novelty of claims is distinct from eligibility. See, e.g., TrackTime, LLC v. Amazon.com, Inc.,
`
`No. 18-1518 (MN), 2019 WL 2524779, at *5 (D. Del. June 19, 2019) (novelty “is not the test for
`
`patent eligibility”); Epic IP LLC v. Backblaze, Inc., 351 F. Supp. 733, 751 (D. Del. 2018) (“[T]he
`
`Berkheimer and Aatrix cases do not stand for the proposition that a plaintiff can avoid dismissal
`
`simply by reciting in the complaint that the invention at issue is novel.”); British Telecomm’ns
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 13 of 15 PageID #: 912
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`
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`PLC, 381 F.Supp.3d at 310 (examiner’s conclusions regarding novelty irrelevant to patent eligi-
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`bility). None of the claim elements VB Assets identifies supplies the required inventive concept.
`
`VB Assets argues that the Baldwin patents are inventive because they “allowed a user to
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`converse naturally with a voice user interface system based on shared knowledge.” (Opp. at 16.)
`
`This is an aspiration, not an inventive concept. Nor is the idea of “using both ‘short-term’ and
`
`long-term’ shared knowledge . . . for various purposes in a conversational speech engine.” (Id.)
`
`This is a restatement of the abstract idea to which the Baldwin patents are directed; it does not
`
`make the claims inventive. BSG Tech. 899 F.3d at 1290 (“It has been clear since Alice that a
`
`claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive
`
`concept that renders the invention ‘significantly more’ than that ineligible concept.”).
`
`VB Assets argues that the claims of the Kennewick patent “are directed to a specific im-
`
`provement to voice user interface systems that uses payment and shipping information along with
`
`context to avoid the prior art menu-based systems.” (Opp. at 18.) But as noted above, storing
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`customer payment and shipping information was standard practice in on-line commerce by 2006.
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`This is not inventive. Nor is the idea of using “context” to help the user find what they are looking
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`for. See, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1365, 1370-
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`71 (Fed. Cir. 2015) (invalidating claims directed to “providing customized web page content to
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`the user as a function of user-specific information and the user’s navigation history”); Valentine
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`Commc’ns, LLC v. Six Contents Hotels, Inc., 389 F. Supp. 3d 1223, 1230-31 (N.D. Ga. 2019)
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`(invalidating claims directed to providing discounts to users based on location information).
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`For the Freeman patents, VB Assets simply paraphrases representative claims and asserts
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`that they are inventive. (See Opp, at 18-19 (“[T]he claimed inventions of the [Freeman] patents
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`encompass an unconventional inventive concept . . . because the Charted Claims provide a non-
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`conventional and useful way of using speech recognition and natural language processing to allow
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`{01513705;v1 }
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 14 of 15 PageID #: 913
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`a user to engage in a productive, cooperative dialogue to resolve requests and advance an ad-
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`enabled conversation.”). This is insufficient to save the claims. Voit Techs., LLC v. Del-Ton, Inc.,
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`757 Fed. App’x 1000, 1004 (Fed. Cir. 2019) (“Voit has to do more than simply restate the claim
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`limitations and assert that the claims are directed to a technological improvement without an ex-
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`planation of the nature of that improvement.”). VB Assets contends that the idea of mapping
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`phonemes to syllables supplies an inventive concept, but its own patents concede this was a stand-
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`ard prior art technique (see, e.g., ’681 patent at 7:28-33; ’176 patent at 3:39-41), and thus this
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`contention must be rejected because it contradicts the intrinsic evidence. See, e.g., Berkheimer,
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`890 F.3d at 1370-71 (“In a situation where the specification admits the additional claim elements
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`are well-understood, routine, and conventional, it will be difficult, if not impossible, for a patentee
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`to show a genuine dispute.”).
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`Finally, VB Assets argues that the “concept of multiple domain agents” in the ’536 patent
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`and “implementing context related to pronouns” in the ’097 patent are inventive concepts. (Opp.at
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`19.) But, as discussed above, both of these concepts are purely functional. The ’536 patent claims
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`do not provide any information about the claimed agents other than saying what they achieve. And
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`the ’097 patent claims do not explain how to determine or use context related to pronouns. Such
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`functional claim limitations cannot supply an inventive concept as a matter of law. SAP Am., Inc.
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`v. InvestPic, LLC, 898 F.3d 1161, 1169 (Fed. Cir. 2018) (claim limitations that “are themselves
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`abstract” cannot supply inventive concept); TLI, 823 F.3d at 615 (“vague, functional descriptions
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`of server components are insufficient” to constitute an inventive concept.).
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`V.
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`CONCLUSION
`For the foregoing reasons, the Court should dismiss VB Assets’ complaint with prejudice
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`for failure to allege infringement of a patentable claim under § 101.
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`Case 1:19-cv-01410-MN Document 28 Filed 12/04/19 Page 15 of 15 PageID #: 914
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`Of Counsel:
`J. David Hadden, CSB No. 176148
`Email: dhadden@fenwick.com
`Saina S. Shamilov, CSB No. 215636
`Email: sshamilov@fenwick.com
`Ravi R. Ranganath, CSB No. 272981
`rranganath@fenwick.com
`Vigen Salmastlian, CSB No. 276846
`Email: vsalmastlian@fenwick.com
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.520
`Melanie L. Mayer, WSBA No. 36971
`Email: mmayer@fenwick.com
`FENWICK & WEST LLP
`1191 Second Avenue, 10th Floor
`Seattle, WA 98101
`Telephone:
`206.389.4510
`Facsimile:
`206.389.4511
`
`December 4, 2019
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`{01513705;v1 }
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`ASHBY & GEDDES
`
`/s/ Steven J. Balick
`Steven J. Balick (#2114)
`Andrew C. Mayo (#5207)
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-1888
`sbalick@ashbygeddes.com
`amayo@ashbygeddes.com
`
`
`
`
`
`Counsel for Defendants
`Amazon.com, Inc.; Amazon.com LLC; Ama-
`zon 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 Ful-
`fillment Services, Inc.; and Amazon Digital
`Services LLC
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`11
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