Case 1:23-cv-01236-GBW Document 32 Filed 09/06/24 Page 1 of 6 PageID #: 2410
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 23-1236 (GBW)
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`NOKIA TECHNOLOGIES OY,
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`Plaintiff,
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`v.
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`AMAZON.COM, INC.,
`AMAZON.COM SERVICES, LLC and
`TWITCH INTERACTIVE, INC.,
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`Defendants.
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`DEFENDANTS’ RESPONSE TO PLAINTIFF’S NOTICE
`OF SUPPLEMENTAL AUTHORITY
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`Defendants Amazon.com Inc., Amazon.com Services LLC and Twitch Interactive, Inc.
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`(collectively, “Amazon”) respectfully submit this response to Plaintiff Nokia Technologies OY’s
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`(“Nokia”) Notice of Supplemental Authority (D.I. 31) regarding Amazon’s Motion for Partial
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`Dismissal Under 35 U.S.C. § 101. (“Motion to Dismiss”) (D.I. 17-18).
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`Nokia addresses in its Notice an Initial Determination by Administrative Law Judge (ALJ)
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`Cameron Elliot in an ITC investigation involving Amazon and Nokia, 337-TA-1380 (“1380
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`Investigation”). (D.I. 31-1, Ex. A.) The Initial Determination (ID) includes just two pages of
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`analysis on patent ineligibility (the remainder of the opinion concerns other grounds) and addresses
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`five patents asserted by Nokia in the ITC investigation, only one of which (the ’818 patent)
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`Amazon challenges in its Motion to Dismiss. (D.I. 17-18.) In the opinion, Judge Elliot denied
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`Amazon’s motion for summary determination (the ITC’s equivalent of summary judgment) of
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`patent ineligibility under § 101, but specifically declined to make a final ruling as to the
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`ineligibility of the ’818 patent. (D.I. 31-1, Ex. A at 5.) In fact, Judge Elliot noted that Amazon
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`may “continue to pursue [its] Section 101 challenges following the evidentiary hearing.” (Id.)
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`Case 1:23-cv-01236-GBW Document 32 Filed 09/06/24 Page 2 of 6 PageID #: 2411
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`Amazon expects to re-raise its § 101 challenge, both in front of Judge Elliot and the Commission,
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`which will ultimately issue a final written decision.
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`But even had Judge Elliot made a final recommendation regarding the ineligibility of the
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`’818 patent, that decision would still not bind this Court for two reasons. First, the initial
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`determination does not represent the final order of the Commission, which may review the initial
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`determination and issue its own final decision. Align Tech., Inc. v. Int’l Trade Comm’n, 771 F.3d
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`1317, 1323 (Fed. Cir. 2014) (distinguishing an ALJ’s order from an ALJ’s initial determination,
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`the latter of which may be reviewed by the Commission); Rockwell Automation, Inc. v. Radwell
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`Int'l, Inc., 416 F. Supp. 3d 366, 372 (D.N.J. 2019) (distinguishing the “initial determination” of an
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`ALJ from a “final determination” of the Commission). Second, even a final determination of the
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`Commission does not bind this Court. Texas Instruments Inc. v. Cypress Semiconductor Corp.,
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`90 F.3d 1558, 1569 (Fed. Cir. 1996) (“Congress did not intend decisions of the ITC on patent
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`issues to have preclusive effect.”); In re Convertible Rowing Exerciser Pat. Litig., 721 F. Supp.
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`596, 601 (D. Del. 1989) (“Other courts have also recognized that ITC determinations as to patent
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`validity have no effect upon the ability of federal courts to hear questions of patent validity in the
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`same case involving the same parties in the context of its exclusive jurisdiction under section
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`1338.”). The Court need not, and should not, defer to the interim decision of the ALJ regarding
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`the ineligibility of the ’818 patent.
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`Nor does the ID itself support Nokia’s arguments here. In the ID, Judge Elliot denied
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`summary determination of § 101 invalidity of the ’818 patent based on his assertion that Amazon
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`had not adequately acknowledged or addressed case law holding inventions “directed to improving
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`the functionality of a computer” as patent eligible. (D.I. 31 at 2.) While Amazon disputes this
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`characterization, Amazon’s brief in this case, which addresses only the single issue of patent
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`2
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`Case 1:23-cv-01236-GBW Document 32 Filed 09/06/24 Page 3 of 6 PageID #: 2412
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`ineligibility unburdened by page constraints of a multi-issue motion for summary determination,
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`addressed the very case law referenced by Judge Elliot. Indeed, as Amazon explained in its
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`Motion, the ’818 patent (like the other patents challenged in the Motion) is not directed to an
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`improvement to computing technology. (D.I. 23.) Unlike patents upheld by the Federal Circuit,
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`the ’818 patent claims do not “recite [] assertedly inventive technology for improving computers
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`as tools,” nor any computer component that is “itself improved from a technical perspective” or
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`that would “operate differently than it otherwise could.” (See id. at 4-5.) Instead, the ’818 patent
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`claims merely recite the use of “parameter values,” “parameter sets,” and “slice headers”—all of
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`which were well-understood, routine, and conventional as of the date of the patent.1 (D.I. 23 at 5.)
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`The other challenged patents—the Pixel Average Patents and Sequence Indicator Patents—
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`likewise do not improve computers “from a technical perspective” or cause computers to “operate
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`differently” than they otherwise could. (See D.I. 23 at 1-3, 9-10.) Thus, any purported
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`“improvement” claimed by the challenged patents does not amount to a technological solution that
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`renders the claims non-abstract at Alice Step 1.
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`For these reasons, and those set forth in Amazon’s Motion to Dismiss and related briefing,
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`the Court should not credit the “supplemental authority” submitted by Nokia, and should hold the
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`challenged patents invalid for failure to claim patent-eligible subject matter under § 101.
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`1 Notably, Nokia itself did not argue that the ’818 patent was directed to the purported
`improvement in the Initial Determination, of achieving “reduced complexity.” (D.I. 22 at 9-13
`(alleging improvement in efficiency and compression, but not “reduced complexity”).)
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`3
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`Case 1:23-cv-01236-GBW Document 32 Filed 09/06/24 Page 4 of 6 PageID #: 2413
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
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`/s/ Jeremy A. Tigan
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`Jack B. Blumenfeld (#1014)
`Jeremy A. Tigan (#5239)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@morrisnichols.com
`jtigan@morrisnichols.com
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`Attorneys for Defendants Amazon.com, Inc.,
`Amazon.com Services, LLC and
`Twitch Interactive, Inc.
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`OF COUNSEL:
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`J. David Hadden
`Saina S. Shamilov
`Ravi R. Ranganath
`Vigen Salmastlian
`Allen Wang
`Rebecca Fewkes
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
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`Todd R. Gregorian
`Ethan M. Thomas
`FENWICK & WEST LLP
`555 California Street
`San Francisco, CA 94104
`(415) 875-2300
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`September 6, 2024
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`Case 1:23-cv-01236-GBW Document 32 Filed 09/06/24 Page 5 of 6 PageID #: 2414
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 6, 2024, I caused the foregoing to be electronically filed
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`with the Clerk of the Court using CM/ECF, which will send notification of such filing to all
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`registered participants.
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`I further certify that I caused copies of the foregoing document to be served on
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`September 6, 2024, upon the following in the manner indicated:
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`Brian E. Farnan, Esquire
`Michael J. Farnan, Esquire
`FARNAN LLP
`919 North Market Street, 12th Floor
`Wilmington DE 19801
`Attorneys for Plaintiff
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`Warren H. Lipschitz, Esquire
`Alexandra F. Easley, Esquire
`MCKOOL SMITH, P.C.
`300 Crescent Court, Suite 1200
`Dallas, TX 75224
`Attorneys for Plaintiff
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`R. Mitch Verboncoeur, Esquire
`Joshua Budwin, Esquire
`MCKOOL SMITH, P.C.
`303 Colorado Street, Suite 2100
`Austin, TX 78701
`Attorneys for Plaintiff
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`Kevin Burgess, Esquire
`MCKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, TX 75670
`Attorneys for Plaintiff
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`Joshua J. Newcomer, Esquire
`MCKOOL SMITH, P.C.
`600 Travis Street, Suite 7000
`Houston, TX 77002
`Attorneys for Plaintiff
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`Case 1:23-cv-01236-GBW Document 32 Filed 09/06/24 Page 6 of 6 PageID #: 2415
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`Theodore Stevenson, III, Esquire
`ALSTON & BIRD LLP
`2200 Ross Avenue, Suite 2300
`Dallas, TX 75201
`Attorneys for Plaintiff
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`John D. Haynes, Esquire
`Nicholas T. Tsui, Esquire
`Shawn P. Gannon, Esquire
`Mark A. McCarty, Esquire
`Bryan W. Lutz, Esquire
`ALSTON & BIRD LLP
`1201 West Peachtree Street
`Atlanta, GA 30309
`Attorneys for Plaintiff
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`Stephen R. Lareau, Esquire
`ALSTON & BIRD LLP
`1120 South Tryon Street, Suite 300
`Charlotte, NC 28203-6818
`Attorneys for Plaintiff
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`/s/ Jeremy A. Tigan
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`Jeremy A. Tigan (#5239)
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`2
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