Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 1 of 18 PageID #: 765
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`NATERA, INC,
`
`P1aintifflCounter—Defendant,
`
`V.
`
`CA. No. 20-125-LPS
`
`ARCHERDX, INC,
`
`Defendant/C ounter-Plaintiff.
`
`
`
`CA. No. 20—518~LPS
`
`AMERANTH, INC,
`
`Plaintiff,
`
`V.
`
`0L0 INC,
`
`Defendant.
`
`VMWARE, INC,
`
`Plaintiff/Counter-Defendant,
`
`V.
`
`CA. No. 20-272-LPS
`
`CIRBA INC. (d/b/a/ DENSIFY),
`
`Defendant/Counter—Plaintiffi
`
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 2 of 18 PagelD #: 766
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`MEMORANDUM ORDER
`
`At Wilmington, this 13th day of October, 2020:
`
`WHEREAS, defendants in the above-listed cases filed Rule 12 motions to dispose of
`
`patent infringement claims on the bases that certain patent claims are invalid under 35 U.S.C.
`
`§ 101, because they are allegedly directed to unpatentable subject matter;
`
`WHEREAS, the above-listed cases brought by Natera, Inc. (“Natera”), Ameranth, Inc.
`
`(“Ameranth”), and VMware, Inc. (“VMware”) are unrelated to each other;
`
`WHEREAS, the Court heard oral argument in all the above-listed cases on September 30,
`
`2020 after considering the parties’ respective briefs and related filings;1
`
`WHEREAS, the Court continues to find that its experimental procedure of addressing
`
`multiple Section 101 motions from separate cases in one hearing is an efficient use ofjudicial
`
`resources and a beneficial tool for resolving the merits of Section 101 motions;
`
`NOW, THEREFORE, IT IS HEREBY ORDERED that, with respect to the above-
`
`listed VMware case, Plaintiff’s Rule 12 motion (CA. No. 20-272 DJ. 79) is DENIED;
`
`IT IS FURTHER ORDERED that, with respect to the above-listed Natera case,
`
`Defendant’s Rule 12 motion (CA. No. 20—125 D.I. 23) is DENIED; and
`
`IT IS FURTHER ORDERED that, with respect to the above-listed Arneranth case,
`
`Defendant’s Rule 12 motion (CA. No. 20-518 D1. 8) is GRANTED.
`
`1 Chief Judge Leonard P. Stark and Magistrate Judge Jennifer L. Hall jointly presided
`throughout the argument. The Court adopts the full bench ruling and includes herein only certain
`portions of it.
`
`

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`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 3 of 18 PageID #: 767
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`The Court’s Order is consistent with the bench ruling announced on a teleconference on
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`October 2, 2020 (see, e.g., CA. No. 20—125 D.I. 59 (“TL”) at ; CA. No. 20-518 D.I. 28; C.A.
`
`No. 20-272 DJ. 96 (“TL”) at 4-36):
`
`For the specifics on the legal standards that I have applied, I
`hereby adopt and incorporate by reference the legal standards as
`stated in the following:
`
`The Federal Circuit’s decision in Berkheimer, 881 F.3d at 1360?]
`The Federal Circuit’s statement of the law in Aatrix, 890 F.3d
`1354.[3] And I’m also incorporating by reference my discussion of
`the law as I recited at length at the end of the July 14th, 2020, 101
`day that can be found in the transcript ruling on the docket, for
`instance, in a case called Pivital IP vs. ActiveCampaign, my Civil
`Action No. 19—2176—LPS at D1. 27m .
`.
`.
`.
`
`[L]et me turn to the cases in the order that they were argued a
`.
`.
`.
`couple days ago.
`
`First, the VMware vs. Cirba doing business as Densify case. The
`motion here is VMware’s Rule 12(0) motion; and for the reasons
`I’m going to explain, that motion is denied.
`
`VMware’s motion is directed to Densify’s patent number
`10,523,492, which I will just call the ”492 patent.
`
`On the issue of a representative claim, I do start by noting that the
`parties in the VMware case have a dispute about whether claim 1
`of the ’492 patent is representative of all the claims put at issue in
`VMware’s motion.
`
`VMware contends that claim 1 is representative. Densify disagrees
`and would have me consider at least claims 1, 5, and 8.
`
`2 Berkhez'mer v. HP Inc, 881 F.3d 1360 (Fed. Cir. 2018).
`
`3 Aatrz'x Software, Inc. v. Green Shades SofMare, Inc., 890 F.3d 1354, 1357-59 (Fed. Cir.
`
`2018).
`
`4 Pivital [P LLC v. ActiveCampaign, LLC, CA. No. l9~2176-LPS D.I. 27 at 151-55.
`
`

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`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 4 of 18 PageID #: 768
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`In this case, the parties agreed that VMware, as the moving party,
`has [the] burden to show that claim 1 is representative.
`
`I do not actually need to decide who has the burden and whether
`VMware has proven that claim I is representative. Instead, under
`the circumstances here, and particularly given my merits analysis,
`it is proper to assume that claim I is in fact representative.
`
`As I am finding, as I will explain, that VMware has failed to meet
`its burden at step I with respect to claim 1 and because VMware
`contends that claim 1 is representative, I conclude that it is
`appropriate to consider only claim 1 and to deny the motion in full
`based solely on my evaluation of claim 1.
`
`With respect to claim construction, both parties in this case insisted
`in their briefing and the preheating checklist letter[s] that there is
`no claim construction dispute that must be resolved before the
`Court can resolve VMware’s motion, but it’s clear to me that the
`parties actually do have a dispute on a claim term that is material
`to the Section 101 analysis.
`
`Specifically, the parties do dispute whether the claim term
`“system” in claim 1 is limited to “computer system” as Densify
`contends or is not so limited as VMware contends.
`
`In this type of situation, Where there is a claim construction dispute
`and a 101 motion pending, the Federal Circuit has explained at
`least at the 12(0) stage, the District Court must either adopt the
`nonmoving party’s construction or resolve the dispute to whatever
`extent is needed to conduct the 101 analysis. That is from the
`MyMail decision of the Federal Circuit, 934 F.3d 1373.[5]
`
`In its briefing, VMware repeatedly contends that, for example,
`claim 1[’s] “systems” are not even limited to “computer
`system[s].” You can find that, for instance, in their opening brief
`at page 9, also pages 3 and 4, and again in their reply brief at page
`1.
`
`. at the hearing this week, VMware conceded that for
`.
`Then .
`purposes of evaluating the 101 motion, the Court could adopt
`Densify’s implicit proposed claim construction, which is that
`“systems” in claim 1 is limited to “computer system[s].” So that is
`what I am doing. That is how I am, I suppose, “resolving for the
`
`5lit/hunter Ltd. v. oar/00, LLC, 934 F.3d 1373, 1379 (Fed. Cir. 2019).
`
`

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`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 5 of 18 PageID #: 769
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`purposes of the motion” the claim construction dispute that I do
`think exist[s] between parties.
`
`I am adopting for purposes of this motion the nonmoving party,
`that is, Densify’s construction of “system” and therefore I am
`treating the representative claim as limited to “computer system.”
`
`All of that at least takes me to step 1 for the Alice or Mayo
`analysis.[6] And at step 1, I conclude that .
`.
`.
`, as I have just said I
`will do for purposes of the motion, by construing “system” as
`limited to “computing system,” that leads me to conclude that at
`step 1, claim 1 is directed to improving the functioning of
`computer technology. That is, the claim is directed to
`improvement of computers as tools, not to using conventional
`computers as tools.
`
`Therefore, VMware has failed to show that claim 1 is directed to
`an abstract idea.
`
`My conclusion[,] I believe[,] is consistent [with] Enfish[7] and
`Finjan[8] and their progeny. Namely, that claims that are focused
`on an improvement in computer functionality itself, not on
`economic or other tasks for which a computer is used in its
`ordinary capacity, are not abstract.
`
`In other words, the ’492 patent is directed to patent-eligible subject
`matter because it is directed to an improvement in computer
`functionality itself. That is, designing an improved computer
`environment.
`
`The patent claim, the representative claim that is, recites specific
`steps to accomplish the desired result, that being intelligent
`placement of source systems on target system[s], and the claims
`solve the technological problem arising in the computer context.
`
`More specifically, the claims are directed to an improvement in the
`design of computer environment[s] through improved placement of
`computer systems, including virtual machines, using compatibility
`
`6Alice Corp. P132. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014); Mayo Collaboration Serv.
`v. Prometheus Labs, Inc, 566 U.S. 66 (2012).
`
`7 Enfish, LLC v. Microsoft Corp, 822 F.3d 1327 (Fed. Cir. 2016).
`
`3 Finjan, Inc. v. Blue Coat Systems, Inc, 2018 WL 341882 (Fed. Cir. Jan. 10, 2018).
`
`

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`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 6 of 18 PageID #: 770
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`analyses, incorporating technical business and workload
`constraints.
`
`The patent identifies the technological problem that exists only in a
`computer environment and claims solutions to it. The claims recite
`specific steps and not just any result.
`
`Now, to counter this, VMware contends the claims are actually
`directed to the abstract idea of “analyzing data based on rules.”
`And it’s true that if that is what the claims were directed to, then
`VMware would meet its burden at step 1. Analyzing data based on
`rules has been found to be an abstract idea in cases such as Electric
`Power Group[9] and Content Extractionjw] But in my View, that
`is just simply not a fair characterization of the representative claim
`here for reasons I have already tried to explain.
`
`VMware also contends that the claimed method can be practiced
`manually by humans using pen and paper or just their mind. Such
`an inquiry is sometimes helpful to the 101 analysis, although it is
`not dispositive. And here, it cannot be and is not a basis for
`VMware to prevail on its motion given what 1 have already said.
`
`At the hearing the other day, VMware relied heavily on the Federal
`Circuit[’s] BSG decision[1 1] and my subsequent opinion in Citrix v.
`AviUZ] which itself relied on BSG. In my view, these comparisons
`are also unavailing. In 886, the claims were found to be abstract
`at step 1 because their focus was guiding database users by
`presenting summary comparison information to users before they
`input data which the Federal Circuit said was not a method
`“necessarily rooted in computer technology in order to overcome a
`problem specifically arising in the realm of” wide access
`databases.
`
`Much, but not all of that, is a direct quote from BSG Technologies,
`899 F.3d at 1286.
`
`9 E160. Power Grp., LLC v. Alstom 8.21., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016).
`
`’0 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d
`
`1343, 1347—48 (Fed. Cir. 2014).
`
`1‘ BSG Tech LLC v. Buyseasons, Inc, 899 F.3d 1281 (Fed. Cir. 2018).
`
`12 Citrix Sys, Inc. v. Avi NeMorks, Inc, 363 F. Supp. 3d 511 (D. Del. 2019).
`
`

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`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 7 of 18 PageID #: 771
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`
`
`In that case, BSG had argued that the c1aims[’] focus was an
`improvement in database functionality, pointing to the purported
`benefit of the patent.
`
`But the Federal Circuit explained that, “those benefits were not
`improvements to database functionality. Instead, they were
`benefits that flowed from performing an abstract idea in
`conjunction with the well—known database structure.” Most of that
`is a quote from page l288 of the opinion.
`
`The Federal Circuit added that “an improvement to the information
`stored by a database is not equivalent to an improvement in the
`database’s functionality.”
`
`Thereafter, in Citrix vs. Avi Networks, 363 F.Supp.3d at 511, I
`found that certain claims were abstract [at] step 1 because the
`patent there addressed a solution that was also not necessarily
`rooted in computer network[s}.
`
`I held there that, “While the claims arose in a technical contex ” —
`in that case, service availability in a computer network — “every
`technical advantage identified there by the patentee ultimately
`stemmed from the same generalized improved determination of
`availability that the use of a dynamic response time would provide
`in any other context.” And much of that is from page 522 of that
`Citrix opinion.
`
`In my View, BSG and Citrix do not change the outcome here with
`the ’492 patent because for the reasons already explained, the
`benefits of the claim at issue in this case do not flow solely from
`performing an abstract idea.
`
`Instead, as noted, claim 1 of the ’492 patent is directed to an
`improvement in computer technology and is necessarily rooted in
`computer technology in order to overcome a problem specifically
`arising in the realm of, in this instance, consolidation of computer
`systems.
`
`This conclusion puts the case before me now squarely in the realm
`of Enfz‘sh, Finjan, and other cases such as SRI.[13]
`
`Finally, the Court’s conclusion is supported by and consistent with
`the analysis that I conducted in denying VMware’s earlier Section
`101 motion directed to Densify’s ’687 patent. .
`.
`.
`[A]s requested
`
`‘3 SRI International, Inc. v. Cisco Systems, Inc, 930 F.3d 1295 (Fed. Cir. 2019).
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 8 of 18 PageID #: 772
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`. l have
`.
`by Densify and I don’t believe opposed by VMware .
`taken judicial notice of the briefing and my ruling on eligibility of
`Densify’s ’687 patent in a related action in this court, Civil Action
`No. 19—742-LPS.
`
`Given my conclusions here on step 1, that VM failed at step 1, the
`Court need not and will not proceed to step two.
`
`So in conclusion, with respect to the VMware motion, that motion
`is denied. It is denied without prejudice to renew in a motion [for]
`summary judgment if VMware believes in good faith at that point
`in the case that it has a basis to renew its motion based on whatever
`happens in claim construction and the record evidence at that
`point.
`
`So that is everything I had to say about VMware.
`
`Let me move next to the second case that was argued, the Natera
`vs. ArcherDX case.
`
`In that case, the defendant ArcherDX, who I may refer to as just
`“Archer” or “defendant[,]” has filed a Rule 12(c) motion which
`raises Section 101 as well as non-Section 101 issues.
`
`I’m going to address all of those issues and for the reasons I’m
`going to explain, ArcherDX’s motion is denied and it is denied in
`all respects.
`
`With respect to 101, the 101 issues arise in connection with three
`of the four patents-in—suit. Specifically, for the record, the
`following three patents ofNatera’s: Patent [Numbers] 10,513,814;
`10,557,172, and 10,590,482.
`
`On the representative claim issue in this case, the Court agrees
`with the defendant that for purposes of the motion, and only for
`purposes of the motion, and only for purposes of the Section 101
`issue in the motion, claim 1 of the ’814 patent can be treated as
`representative of all claims of all three patents that are challenged
`by the motion.
`
`As the defendant wrote in its checklist letter, DJ. 49 at page 1, “the
`Court need only determine the eligibility of claim 1 of the ’814
`patent as it will determine the eligibility of all claims in the ’814,
`”172, and ’482 patents.”
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 9 of 18 PageID #: 773
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`I agree with that. All of the claims of the challenged ’814, ’172,
`and ’482 patents appear to involve the same issues of validity and
`are substantially materially identical.
`
`Each of these claims claim methods for amplifying and sequencing
`DNA that requires PCR amplification of target loci, a universal
`primer, and target specific primers. Thus, again, the Court will
`treat claim 1 of the ’814 patent as a representative claim.
`
`In this case, the parties agree that there is no claim construction
`dispute that needs to be considered in connection with the motion;
`and I agree with that.
`
`Turning to step 1.
`
`Archer has not shown that the claims are directed to the natural
`phenomenon of cell-free DNA. In my View, the claims here, as
`represented by claim 1 of the ’814, .
`.
`. are method of preparation
`claims and therefore eligible for patenting. They are not method of
`detection claims which would not be eligible for patenting.
`They’re also not methods of diagnosis claims.
`
`As the Federal Circuit recently held in Illumina,[14] a patent
`directed to a method of preparation that exploits and does not
`otherwise claim a natural phenomenon is patent eligible. .
`.
`.
`
`Considering the claim as a whole in light of the specification, it is,
`as l have said, in my View a claim directed to a method of
`preparation of cell-free DNA.
`
`The claims here compare favorably to those that were upheld so
`recently by the Federal Circuit against a 101 challenge in Illumina.
`For instance, in Illumina, the natural phenomenon of cell—free
`DNA was simply sorted by size, and then the sorted DNA was
`analyzed, but the cell—free DNA itself was unchanged, and yet that
`claim was found to be patent eligible.
`
`Here, the patented method includes multiple steps modifying the
`cell-free DNA using a specific process.
`
`It seems to me then that if the claim at issue in Illumina was patent
`eligible, the claim being challenged here today also must be patent
`eligible.
`
`1" Illumina, Inc. v. Ariosa Diagnostics, Inc, 967 F.3d 1319, 1325~26 (Fed. Cir. 2020).
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 10 of 18 PageID #: 774
`
`Further explanation of the comparison between Natera’s claim and
`the ones upheld in Illumina is found in Natera’s briefing; for
`instance, D.I. 27 at pages 15 to 16, and in Natera’s slide 17 as
`shown at the hearing the other day.
`
`Archer’s motion largely turns on Archer’s reading the
`representative claim as being a detecting claim. A claim directed,
`that is, to detecting a natural phenomenon, one that begins and
`ends with a natural phenomenon.
`
`If this were the right reading of the claim, the claim would be non-
`patentable. We know that from cases like Cleveland Clinic[15] and
`Ariosa.[l6]
`
`But in my view, this View of the representative claim is not an
`accurate one. The word “detecting” or any form of it does not
`appear in the representative claim.
`
`As Natera writes, for instance, in its opening brief at 17, “Natera’s
`patent claims do not recite detecting, let alone detecting a naturally
`occurring cell-free DNA.”
`
`To the extent Archer is asking me to read “detecting” into the
`claim, that is at least an implicit claim construction issue and
`would pre[s]ent a dispute {needing to be] resolved. Of course,
`Natera insists that these are not “detecting” claims.
`
`That implicit claim construction dispute is not a dispute that has
`been briefed or one that I could resolve in favor of the defendant at
`this stage. So even if I were to View it as a claim construction
`dispute, it would be just another reason to deny the defendant’s
`motion.
`
`I recognize there are references to “detecting” in the specification
`but, again, not in the claim. And, again, I’m not in a position today
`to construe the claim over Natera’s objection as having a
`“detection” limitation in the claim.
`
`Nor am I persuaded, based on what has been presented to me thus
`far, to do that. Instead, my analysis of the claims in light of the
`specification persuades me that the claims are directed to an
`
`15 Cleveland Clinic Found. v. True Health Diagnostics LLC, 760 F. App’x 1013 (Fed.
`
`Cir. 2019).
`
`16 Ariosa Diagnostics, Inc. v. Sequenom, Inc, 788 F.3d 1371 (Fed. Cir. 2015).
`
`

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`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 11 of 18 PagelD #: 775
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`improved method of synthesizing ctDNA, cell-free DNA, that
`exploits the natural phenomenon of certain primers dimerized less
`frequently than others.
`
`Unlike in Ariosa, the claims here do not begin and end with a
`natural phenomena for at least the reason that in practicing the
`claimed method, one does not end up with the same and only thing
`that one had when one started to practice the claim.
`
`It is true the Federal Circuit held in Genetic Tech, 818 F.3d at
`137217 — a case that Archer also relies on — .
`.
`. that a method for
`detection comprising amplifying genomic DNA with a primer pair
`and analyzing the amplified DNA sequence is not patent eligible.
`But, again, in my View, the representative claim is not a detecting
`claim, so what was at issue in Genetic Tech. is just not what {ijs at
`issue here.
`
`In sum, the representative claim does not claim cell—free DNA or
`modified cell-free DNA, nor does it claim detection of cell-free
`DNA or modified cell—free DNA. Instead, it claims a method of
`preparation of cell-free DNA through a method involving
`manipulation of a natural phenomenon and man-made steps,
`including steps which create pieces of DNA that do not exist in
`nature.
`
`The claim then, like that upheld in Illumina, is directed to patent
`eligible subject matter.
`
`As I have found that the defendant has not met its burden at step 1,
`the Court will not proceed to step 2. Also, again because claim 1
`of the ’8 14 patent is a representative claim, my decision with
`respect to this claim applies to all of the other claims ArcherDX
`challenges in its motion.
`
`That’s it on the 101 issues. Let me turn to the non-101 issues in
`Archer’s motion.
`
`First, I’ll note that there is a pending request from the plaintiff that
`I take judicial notice of certain documents.
`
`I hereby grant the judicial notice motion
`
`17 Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1372 (Fed. Cir. 2016).
`
`10
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 12 of 18 PageID #: 776
`
`Now turning to the issues pressed by the defendant.
`
`The first relates to the safe harbor provision of [35 U.S.C. §]
`
`271 (e).
`
`Taking the well~pled allegations of the complaint as true, as the
`Court must, there are factual disputes that preclude granting this
`portion of Archer’s motion. In other words, Natera has piausibly
`stated infringement by the two accused products at issue in this
`part of the motion.
`
`In sum, the burden was on Archer to show that the safe harbor
`protects all the alleged activities with respect to these two
`products, and Archer has failed.
`
`The next issue in the motion is declaratory judgment jurisdiction.
`
`Here, the defendant contends that the Court lacks subject matter
`jurisdiction to grant a declaratory judgment with respect to
`infringement of the patents—in—suit by Stratafide and PCM
`products.
`
`In my View, the defendant is not correct. Instead, the facts alleged
`show a substantial controversy between parties having adverse
`legal interest[s], .
`.
`. sufficient immediacy[, and] reality.
`
`Finally are the disputes about the ArcherMET product.
`
`The Court finds that Natera has adequately and plausibly alleged
`that Archer has used the patented method in the US. at least by
`conducting quality control on its ArcherMET product here in the
`United States Where the accused product is allegedly manufactured
`before exporting these products to Japan for sale.
`
`With that, I conclude by reiterating ArcherDX’s Rule 12(c) motion
`is denied in all respects.
`
`That takes me at long last to the third case that was argued,
`Amaranth vs. Ola. This is 010’s l2(b)(6) motion, raising only 101
`issues.
`
`11
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 13 of 18 PageID #: 777
`
`For the reasons i am going to explain, 010’s motion is granted.
`
`010’s motion is directed to Patent No. 9,747,651 (the ’651 patent),
`which describes an information management and synchronous
`communications system for use in the hospital services industry.
`
`With respect to which claims I have to consider, at this point there
`is no dispute, the parties have agreed, including through a
`stipulation [and] supplemental letters, that I should decide the
`patent eligibility of the following claims which are the totality of
`the asserted claims in the now amended complaint: claims 1, 3, 6,
`9, 10, and 11.
`
`With respect to claim construction, there is no dispute for purposes
`of the motion. Ameranth has proposed certain constructions, and
`010 agrees that I should adopt those proposed constructions for
`purposes of evaluating the motion, and I am doing so, all
`consistent with what the Federal Circuit has set out is an
`acceptable method for proceeding, for instance, as described in the
`Two- Way Media decision, 874 F.3d at 1338.[18]
`
`I find that even applying plaintiff’s proposed construction[s], the
`challenged claims are not patent eligible. The claims even
`construed as plaintiffs wish are result focused and directed to an
`abstract idea and fail to provide an inventive concept.
`
`Let me go through the Alice/Mayo analysis to explain howl got to
`that conclusion.
`
`First at step 1. As defendants contend, the Court concludes that the
`asserted claims are directed to the abstract idea of “communicating
`hospitality-related information using a system that is capable of
`synchronous communications and messaging.”
`
`That same abstract idea applies to all six claims the Court is
`reviewing.
`
`Amaranth counters instead that the claims are directed to, “rule
`capable, intelligent automated assistant or 1AA systems for use
`with remote wireless handheld computing devices and the
`Internet.”
`
`‘3 Two—Way Media Ltd. v. Comcast Cable Comma ’ns, LLC, 874 F.3d 1329, 1338 (Fed.
`Cir. 2017).
`
`12
`
`

`

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`
`
`
`I disagree. The 1AA systems are merely one feature of the
`invention claimed. The specification makes it clear that the
`invention is not directed to those components. The specification
`identifies the provision of an improved information management
`synchronous communication system and method as a principle
`object of the invention. For that, I would cite to column 3 of the
`patent at lines 1 to 3.
`
`Here, and for the reasons I have already stated, the claims are
`similar to those of the related patent[s] that have already been
`found abstract by the Federal Circuit in two other cases: Apple Inc.
`vs. Amaranth Inc, 842 F.3d 1229,?9] including at page 1234,
`which the Federal Circuit decided in 2016, as well as Amaranth
`Inc. vs. Domino ’5 Pizza LLC, 792 F. App’x 780,[2°] including at
`page 786, which the Federal Circuit decided in 2019.
`
`. ., the claims here provide
`Like the claims at issue in those cases .
`only results [-] focused and functional language without providing
`any specifics as to how to carry out the desired goal.
`
`And we know from the Apple and Domino’s Pizza decision[s] that
`that is not enough to become patent eligible. I specifically cite to
`842 F.3d at 1241 as well as 792 F. App’x at 786.
`
`The claims here, like those there in those other two cases, state that
`they solve the problem but don’t describe how.
`
`Amaranth tries but fails to distinguish the earlier Federal Circuit
`cases, Apple and Domino ’s[,] by pointing to the addition[s] in the
`specification. Specifically, the addition of Figure 10 which itself
`points to communication conversion, and by further pointing to
`text relating to Figure 10 which has been added to the
`specification, such as in column 18. But Figure 10 [and] the new
`text of the specification about it do not in my view change the
`Section 101 outcome. The new material is just more high level
`results [-]focused ideas.
`
`in the ’651 patent-in-suit, just like the related patents that were
`already invalidated, neither the claims, nor the specification
`describe[s] any specific programming steps for the IAA system or
`the free format messaging, nor do they claim an improvement to
`computer functionality.
`
`‘9 Apple, Inc. v, Amaranth, Inc, 842 F.3d 1229, 1234 (Fed. Cir. 2016).
`
`2“ Amaranth, Inc. v. Domino ’3 Pizza, LLC, 792 F. App’x 780, 786 (Fed. Cir. 2019).
`
`i3
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 15 of 18 PageID #: 779
`
`
`
`
`
`Ameranth makes much of the claimed invention in this case being
`able to purportedly concurrently handle free and fixed format
`messages, but the claims don’t say anything about this or explain
`how it is accomplished.
`
`Further support for the Court’s conclusion is the patent’s
`description of the problem being solved as one of computerizing
`the traditional pen-and—paper ordering and reservation system
`practiced in the hospital and restaurant industries, but we know
`that automation of [a] business practice is not patent eligible. That
`is stated in many cases, including the Customedia decision of the
`Federal Circuit this year, 951 F.3d at page l365.[21]
`
`These claims are not really directed to an improvement to
`computer functionality but instead automate pen—and-paper
`traditional business practices, specifically the practices of ordering
`and making reservations. I cite as support, among other things, the
`discussion in column 1 of the patent at line[s] 38 to 46. This is not
`a computer only problem.
`
`The defendant[] ha[s] met its burden at step 1. So let me turn to
`step 2.
`
`At step 2, the Court must determine if there is an inventive concept
`that is something more than the application of an abstract idea
`using welluunderstood, routine and conventional activities
`previously known to the industry. That articulation of step 2 can
`be found in Cellspin, 927 F.3d at l316,[22] or atAatrz'x, 882 F.3d at
`1128.[23]
`
`The defendant has met its burden to show that there is no inventive
`concept in any of the challenged claims at issue in the motion.
`
`Ameranth contends that factual disputes precludefl siding with 010
`at step 2, but I disagree with that.
`
`In making this argument, Amaranth relies heavily on the Court’s
`obligation to take as true the well-pled factual allegations in its
`
`2‘ Customedia Techs, LLC v. Dish Network Corp, 951 F.3d 1359, 1365 (Fed. Cir. 2020).
`
`22 Cellspin Sofi, Inc. v. Fitbz't, Inc, 927 F.3d 1306, 1316 (Fed. Cir. 2019).
`
`23 Aatrix Software, Inc. v. Green Shades Sofa/rare, Inc., 882 F.3d 1121, 1128 (Fed. Cir.
`
`2018).
`
`14
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 16 of 18 PageID #: 780
`
`complaint, and Ameranth relies equally heavy, if not more so, on
`the declaration of its expert, Dr. Valerdi, an expert report that is
`incorporated into the complaint. But in many material respects, the
`factual allegations and analysis of Dr. Valerdi [arel contradicted by
`the patent itself.
`
`When there is a conflict between the materials prepared for
`litigation, including complaints and expert report[s], and the
`intrinsic evidence of the patent itself, the Court must resolve that
`conflict in favor of the patent itself and is not obligated to credit
`the plaintiff‘s contradictory allegation. .
`.
`.
`
`Additionally, many of the factual allegations on which plaintiff
`relies are merely conclusory and do not need to be credited for this
`reason as well.
`
`Amaranth contends that even if the specific claim limitations and
`components with which the claim is practiced are conventional, the
`ordered combination of these known components was not
`conventional, routine and well understood at the patent’s priority
`date.
`
`This argument is unavailing in the context of this case. The
`plaintiff really has not actually pointed to any unconventional
`ordered combinations, and the patent doesn’t explain how one
`would perform it in any event.
`
`There is simply here no basis to conclude that the practice of the
`abstract idea .
`.
`. with what the patent repeatedly describes as
`“typica ” — and that’s a quote, “typica ” computer hardware [—]
`using “well-known” software programming in the order that the
`claim sets out, an order which is logical and expected .
`.
`. [is]
`anything other than .
`.
`. conventional, well understood, and routine.
`And I think it is important to understand just how repeatedly the
`specification describe[s] the invention as using typical hardware
`and commonly known software programming steps. You can see
`this in column 6, in column 7, in column 13 of the patent.
`
`In this regard, the case is analogous with What the Federal Circuit
`described in Aatrix, 890 F.3d at 1356: “In a situation where the
`specification admits the additional claim elements are well
`understood, routine and conventional, it will be difficult, if not
`impossible, for patentee to Show a genuine dispute.”
`
`The best comparisons here again are between the ’651 patent and
`the claims from the related patents that were found ineligible for
`
`15
`
`

`

`Case 1:20-cv-00518-LPS Document 29 Filed 10/13/20 Page 17 of 18 PageID #: 781
`
`
`
`patenting in Apple and Domino’s, cases in which the Circuit called
`out that the specification “expressly recited that the hardware
`needed was typical and that the programming steps were
`commonly known,” and that the patent provided no disclosure of
`how the invention would be technologically implemented.
`
`That is from Apple, 842 F.3d at 1244, and I would say also see
`Domino ’5', 792 F. App’x at 788.
`
`In Domino ’3, notably, the Federal Circuit found the claims
`ineligible and rejected the patentee’s contentions at step 2, even
`though the record there contains supporting declarations for the
`plaintiff, just as I have here in the form of Dr. Valerdi’s
`declaration.
`
`In this case, Dr. Valerdi’s declaration contradicts the specification
`and therefore is not to be credited and does not change the outcome
`here.
`
`In this re