Case 1:19-cv-01410-MN Document 280 Filed 11/05/23 Page 1 of 2 PageID #: 10960
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`November 5, 2023
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`VIA CM/ECF
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`The Honorable Maryellen Noreika
`United States District Court
`844 N. King Street
`Wilmington, DE 19801
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`In Re:
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`VB Assets, LLC v. Amazon.com, Inc., et al.
`C.A. No. 19-1410-MN
`Joint Letter to the Court
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`Dear Judge Noreika,
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`The parties jointly write further to Your Honor’s instructions at the Pretrial Conference
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`that the Court will hear argument on any remaining § 101 issues after the trial day on Monday,
`November 6, 2023. (See Pretrial Conference Hr’g Tr., D.I. 269, at 31:12-32:22.)
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`We are pleased to update the Court that, subject to Your Honor’s approval, the parties have
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`agreed to streamline and limit the scope of the § 101 issues and proceed as follows:
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`’681 Patent. The Court ruled in its motion to dismiss the order that the ’681 patent claim
`presented was not directed to an abstract idea, satisfying Alice Step 1. (D.I. 57 at 11.) The
`parties agree that they do not have distinct arguments for or against eligibility at Step 1
`based on any differences between that claim and currently asserted claim 13. Thus, the
`Court’s earlier guidance should apply, and there are no § 101 issues for the jury to decide
`on the ’681 Patent.
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`’703 and ’097 Patents. The Court ruled that the claims presented were directed to the
`abstract ideas of “claims the abstract idea of responding to a spoken request by completing
`a purchase…[i.e.,] a spoken request to buy something” (’703 Patent), and “processing
`natural language responses to promotional content based on pronouns,” (’097 Patent). (
`D.I. at 12-13, 15; see also MSJ Hr’g Tr. at 13:7-14:8.) The parties agree that they do not
`have distinct arguments for or against eligibility at Step 1 based on any differences between
`those claims and the ones asserted for trial. Thus, the Court’s guidance should apply, and
`the trial will address these patents with respect to Alice Step 2.
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`’176 Patent. The Court ruled that the claim presented was directed to a technological
`improvement to voice recognition—"mapping phonemes to syllables and providing
`preliminary interpretations based on that mapping to a conversational language processor
`for interpretation”—and thus is not directed to an abstract idea. (D.I. 57 at 14.) Claim 40
`asserted for trial does not claim phoneme mapping. Plaintiff asserts Claim 40 is not
`directed to an abstract idea under Alice Step 1. Defendant asserts the claim is directed to
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`Case 1:19-cv-01410-MN Document 280 Filed 11/05/23 Page 2 of 2 PageID #: 10961
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`the abstract idea of “responding to a spoken request with an advertisement.” The parties
`will present their further § 101 arguments to the Court on Monday evening.
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`The parties will update the jury instructions and verdict form after the Court’s decision on
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`§ 101 for the ’176 Patent.
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`Respectfully submitted,
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`/s/ Neal C. Belgam
`Neal C. Belgam (No. 2721)
`Jason Z. Miller (No. 6310)
`SMITH, KATZENSTEIN & JENKINS, LLP
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`jzm@skjlaw.com
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`Counsel for Plaintiff VB Assets, LLC
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