Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 1 of 22 PageID #:241
`
`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
` Plaintiff,
`v.
`
`
`AUTONETTV MEDIA, INC.,
`
`
`
` Defendant.
`
`
`MEMORANDUM OF LAW IN SUPPORT OF AUTONETTV MEDIA, INC.’S
`RULE 12(b)(6) MOTION TO DISMISS FOR
`FAILURE TO STATE A CLAIM
`
`
`
`
`
`
`
`
`Civil Action No.: 16-cv-6649
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`T-REX PROPERTY AB,
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 2 of 22 PageID #:242
`
`TABLE OF CONTENTS
`
`Page(s)
`
`I. 
`
`BACKGROUND ................................................................................................................... 1 
`
`A. 
`
`The Patents-in-Suit disclose nothing more than using generic computer
`components to perform a task that was previously done manually. ........................1 
`
`1. 
`
`2. 
`
`3. 
`
`The ’470 Patent. ............................................................................................2 
`
`The ’334 Patent has only minor differences with the ’470 Patent. ...............4 
`
`The ’603 Patent is directed to advertisements on a billboard. .......................6 
`
`II.  LEGAL STANDARD ............................................................................................................ 7 
`
`A. 
`
`B. 
`
`This case should be dismissed on the pleadings under Rule 12(b)(6). ....................7 
`
`The law of 35 U.S.C. § 101. ....................................................................................8 
`
`III.  ARGUMENT ......................................................................................................................... 9 
`
`A. 
`
`The Patents-in-Suit are invalid under 35 U.S.C. § 101. .........................................10 
`
`1. 
`
`2. 
`
`The asserted patent claims are directed to an abstract idea. ........................10 
`
`The asserted claims contain no inventive concept to transform the
`abstract idea into patent-eligible subject matter. ........................................13 
`
`IV.  CONCLUSION .................................................................................................................... 15 
`
`
`
`
`
`-i-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 3 of 22 PageID #:243
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Alice Corp. v. CLS Bank International,
`134 S. Ct. 2347 (2014) ...........................................................................................12, 13, 17, 20
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...........................................................................................................11, 23
`
`Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012)....................................................................................12, 18, 21
`
`Bender v. LG Elecs. U.S.A., Inc.,
`No. C 09-02114 JF (PVT), 2010 WL 889541 (N.D. Cal. Mar. 11, 2010) ...............................23
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) ...........................................................................................................12, 13
`
`Content Extraction and Transmission LLC v. Wells Fargo Bank, NA,
`776 F.3d 1343 (Fed. Cir. 2014)................................................................................................18
`
`Cuvillier v. Sullivan,
`503 F.3d 397 (5th Cir. 2007) .............................................................................................11, 12
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011)..........................................................................................13, 22
`
`Diamond v. Chakrabarty,
`447 U.S. 303 (1980) .................................................................................................................12
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) .................................................................................................................13
`
`Fort Props., Inc. v. Am. Master Lease LLC,
`671 F.3d 1317 (Fed. Cir. 2012)................................................................................................14
`
`Halo Elecs., Inc. v. Bel Fuse Inc.,
`No. 2:07-CV-07-00331-PMP-PAL, 2007 WL 2156332 (D. Nev. July 26,
`2007) ........................................................................................................................................23
`
`Intellectual Ventures I LLC v. Capital One Bank (USA),
`792 F.3d 1363 (Fed. Cir. 2015)................................................................................................18
`
`-ii-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 4 of 22 PageID #:244
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015)................................................................................................21
`
`Landmark Tech., LLC v. Assurant, Inc.,
`No. 6:15-CV-76-RWS-JDL, 2015 WL 4388311 (E.D. Tex. July 14, 2015) .....................16, 17
`
`Lovelace v. Software Spectrum,
`78 F.3d 1015 (5th Cir. 1996) ...................................................................................................11
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) .......................................................................................................13, 14
`
`Morales v. Square, Inc.,
`75 F.Supp.3d 716, 724 (W.D. Tex. 2014)................................................................................15
`
`OIP Techs., Inc. v. Amazon.com, Inc.,
`788 F.3d 1359 (Fed. Cir. 2015)................................................................................................17
`
`Parker v. Flook,
`437 U.S. 584 (1978) .................................................................................................................13
`
`Potter Voice Techs., LLC v. Apple Inc.,
`No. C 13-1710 CW, 2015 WL 5672598 (N.D. Cal. June 11, 2015) ........................................18
`
`Tuxis Techs., LLC v. Amazon.com, Inc.,
`No. CV 13-1771-RGA, 2014 WL 4382446 (D. Del. Sept. 3, 2014) .......................................21
`
`Ultramercial, Inc. v. Hulu,
`LLC, 772 F.3d 709 (Fed. Cir. 2014) (Mayer, J., concurring) ................................12, 16, 17, 19
`
`Statutes
`
`35 U.S.C. § 101 ..............................................................................................................2, 12, 14, 22
`
`Other Authorities
`
`Fed. R. Civ. P. 12(b)(6)........................................................................................................1, 11, 14
`
`
`
`-iii-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 5 of 22 PageID #:245
`
`Defendant AutoNetTV Media, Inc., (“AutoNetTV”) moves to dismiss this case because
`
`the Complaint does not state a claim upon which relief can be granted. Specifically, the patent
`
`claims asserted in the Complaint are invalid because they are directed to the abstract idea of
`
`displaying information in public places based on third party instructions. The patentees
`
`acknowledged that they did not invent the concept of scheduling the display of information in
`
`public spaces. Instead, they sought to allow third parties to choose in real-time what information
`
`is displayed. But the asserted claims merely cobble together generic computer components (i.e.,
`
`computers, a database, a modem, a projector, televisions, and cameras), and then claim the end
`
`result of dynamic updates and third-party control that is not limited to a specific mechanism for
`
`achieving that result. Therefore, the asserted claims are patent-eligible subject matter. Since
`
`resolving this issue does not require discovery or formal claim construction, AutoNetTV
`
`respectfully requests that the Court dismiss the complaint pursuant to Fed. R. Civ. P. 12(b)(6).
`
`I.
`
`BACKGROUND
`
`On June 24, 2016, Plaintiff T-Rex filed this lawsuit accusing AutoNetTV of infringing
`
`claims 25 and 26 of U.S. Patent No. RE39,470 (the “’470 Patent”), claims 22 and 32 of U.S. Patent
`
`No. 7,382,334 (the “’334 Patent”), and claims 42 and 43 of U.S. Patent No. 6,430,603 (the “’603
`
`Patent”). T-Rex has filed 59 lawsuits since June 2012 in this and other districts involving one or
`
`more of the Patents-in-Suit and the alleged infringement by digital display boards and billboards.
`
`A.
`
`The Patents-in-Suit disclose nothing more than using generic computer
`components to perform a task that was previously done manually.
`
`The ’470 and ’334 Patents are both entitled “Digital Information System.” The ’603 Patent
`
`is entitled, “System for Direct Placement of Commercial Advertising, Public Service
`
`Announcements and Other Content on Electronic Billboard Displays.”
`
`-1-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 6 of 22 PageID #:246
`
`1.
`
`The ’470 Patent.
`
`The ’470 Patent is directed to using computers to more efficiently manage the display of
`
`information in public places based on third party instructions. The ’470 Patent describes the
`
`alleged invention in the context of railway stations. See ’470 Patent, 1:37-47. The patentees
`
`acknowledged that managing the display of information in this context was not new, but had been
`
`done manually (id., 1:33-36) and not in “real time” (id., 1:53-54). See also id., 2:10-14; 5:23-27.
`
`The alleged solution to the pre-existing “static” system of “scheduling the display of
`
`information” was merely adding generic computer components (e.g., “digital technology”) to
`
`schedule the display of information more efficiently and in “real time.” Specifically, the patentees
`
`wanted to provide a “flexible system” so external mediators could “dynamically control in real
`
`time” the transmission of instructions for a display in different places. See id., 2:39-44; 2:45-49.
`
`The only figure in the patent illustrates general-purpose computing components. In this
`
`drawing, “information mediators” (24) can send instructions and information to computers in a
`
`control center (10). Information mediators can be a company or person who wants to display
`
`information. See ’470 patent, 5:18-23. The central computer in the control center (10) receives
`
`those instructions and creates an “exposure list,” consisting of what, where, when and for how
`
`long to display the information. Id., 3:11-16; cl. 1. The computer then sends the information
`
`through a radio link to a projector at the subway station (16) for display. Thus ’470 Patent’s
`
`solution is to simply add generic computer components to a pre-existing, manual process.
`
`(a)
`
`Asserted claims 25 and 26 of the ’470 Patent
`
`T-Rex has specifically asserted claims 25 and 26 of the ’470 patent, shown below:
`
`Element Claim 25
`
`Claim 26
`
`-2-
`
`

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`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 7 of 22 PageID #:247
`
`26. A system for selectively displaying
`digital information at one or more of a
`plurality of locations, said system
`comprising:
`a computerized control center having
`a plurality of communication
`interfaces for receiving control
`instructions from at least one external
`information mediator,
`said computerized control center
`including means for generating and
`dynamically updating an exposure list
`from said control instructions, said
`exposure list specifying three or more
`of the following items:
`
`
`i) what information content is to be
`displayed;
`ii) at which of said plurality of
`locations said information content
`is to be displayed;
`iii) when said information content
`is to be displayed for each location
`at which content is to be displayed;
`and
`iv) how long said information
`content is to be displayed for each
`location at which content is to be
`displayed;
`a computerized device situated at each
`one of said plurality of locations, each
`computerized device being
`electronically coupled to said
`computerized control center; and a
`means for displaying images in
`accordance with said exposure list
`associated with each one of said
`computerized devices.
`
`
`25. A method of selectively
`displaying digital information at one
`or more of a plurality of locations,
`said method comprising:
`receiving control instructions from
`at least one external information
`mediator;
`
`using said control instructions to
`generate an exposure list, said
`exposure list specifying three or
`more of the following items:
`
`
`i.) what information content is
`to be displayed;
`ii.) at which of said plurality of
`locations said information
`content is to be displayed;
`iii) when said information
`content is to be displayed for
`each location at which content
`is to be displayed; and
`iv) how long said information
`content is to be displayed for
`each location at which content
`is to be displayed;
`
`
`
`
`
`
`Element 1
`
`
`
`Element 2
`
`
`
`Element 3
`
`displaying images at one or more
`of said locations in accordance
`with said exposure list;
`
`
`
`
`Element 4
`
`
`and permitting said exposure list
`to be dynamically updated.
`
`System claim 26 is no different from method claim 25 in substance. The method claim
`
`recites the abstract idea implemented on a generic computer; the system claim recites a handful of
`
`-3-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 8 of 22 PageID #:248
`
`generic computer components (e.g., “computerized device”) configured to implement the same
`
`idea. The claims are directed to nothing more than (1) receiving instructions for displaying
`
`information (Element 1); (2) the instructions including what information to display, and where,
`
`when and how long to display it (Element 2); (3) displaying the information per the instructions
`
`(Element 3); and (4) allowing the instructions to be updated “dynamically” (Element 4).
`
`Claims 25 and 26 track the only figure in the patent. Element numbers have been added to
`
`the claims in the chart above for ease of identifying the claim elements. Element 1 describes that
`
`instructions are received from a “mediator.” A mediator can be a company, a person, or a computer
`
`controlled by a company or a person. See ‘470 patent, 5:18-23; 4:49-51. Element 2 provides that
`
`instructions are used to generate an exposure list, which contains what, where, when, and how long
`
`to display information. Id., 7:10-17. Element 3 describes displaying the information. The final
`
`element, Element 4, states that the exposure list can be updated dynamically or in real time. Id.,
`
`1:54-59. The other independent claims (claims 1, 13) are directed to the same abstract idea.1
`
`2.
`
`The ’334 Patent has only minor differences with the ’470 Patent.
`
`The ’334 Patent is a continuation-in-part of the ’470 Patent. The only difference between
`
`the ’334 Patent and the ’470 Patent is that the information to be displayed is sent to cinemas and
`
`TVs (’334 Patent) instead of subway stations (’470 Patent). That difference is apparent in the
`
`patents’ figures. In the ’334 Patent, the subway station and projector (16 and 22 in the figure) in
`
`the ’470 Patent have been replaced by cinema, camera, and TV-set (16, 22 and 40 in the figure).
`
`See e.g., ’334 Patent, 5:59-63. The systems in the two patents are otherwise the same.
`
`
`
`1 Claims 1 and 25 are method claims and claims 13 and 26 are system claims.
`
`-4-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 9 of 22 PageID #:249
`
`T-Rex asserts independent claims 22 and 32 of the ’334 Patent, with one claim a method
`
`claim and the other a system claim:
`
`Claim 22
`22. A method of coordinating and
`controlling electronic displays in a digital
`information system for exposing
`information on at least one display device
`through the medium of at least one
`electronic display, characterized in that it
`comprises the following steps:
`
`
`
`
`
`generating an exposure list comprising
`control instructions for coordinating and
`controlling electronic displays with
`regard to what shall be exposed, when it
`shall be exposed, where it shall be
`exposed and for how long it shall be
`exposed;
`using a control center for coordinating
`and controlling electronic displays,
`wherein the control center is able to
`create and update said exposure list in
`real time with control instruction fields
`via dynamic booking of information in
`time for exposure from mediators; and
`wherein the exposure list enables each
`electronic display to be controlled,
`independently of other electronic
`displays, to receive the same or different
`information in accordance with the
`exposure list for exposure of respective
`electronic display.
`
`Claim 32
`32. An arrangement for coordinating and
`controlling electronic displays in a digital
`information system for displaying information
`on at least one display device through the
`medium of at least one electronic display, said
`information being supplied by mediators of
`information, for exposure or display,
`characterized in that it comprises:
`computerized control center means, wherein
`the control center has communication
`interfaces against;
`computerized means for coordinating and
`controlling electronic displays;
`exposure handler means whereby the control
`center functions, in real time and through the
`medium of said exposure handler, to create
`and update an exposure list having control
`instruction fields, via dynamic booking of
`display information from mediators; and
`
`wherein said exposure list, containing
`control instructions, coordinates and controls
`the electronic displays in question with
`respect to what shall be exposed, where it
`shall be exposed, when it shall be exposed,
`and for how long it shall be exposed,
`
`and enables each electronic display
`independently of other electronic displays, to
`receive the same or different information
`according to the exposure list for exposure or
`display by respective electronic display.
`
`As is shown in the chart above, system claim 32 is no different from method claim 22 in
`
`substance and includes the same elements. The method claim recites the abstract idea implemented
`
`-5-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 10 of 22 PageID #:250
`
`on a generic computer; the system claim recites a handful of generic computer components (e.g.,
`
`“computerized control center means”) configured to implement the same idea.
`
`3.
`
`The ’603 Patent is directed to advertisements on a billboard.
`
`The ’603 Patent, entitled “System for Direct Placement of Commercial Advertising, Public
`
`Service Announcements and Other Content on Electronic Billboard Displays,” names a different
`
`inventor, but like the ’470 and ’334 Patents, is directed to the abstract idea of displaying
`
`information in public places based on third party instructions. Directed to billboards, the ’603
`
`Patent permits advertisers to electronically select locations and times to display advertisements.
`
`See, e.g., ’603 Patent, Abstract.
`
`According to the ’603 Patent’s specification, scheduling the display of third-party
`
`information on a billboard was far from a novel idea and has “remained essentially unchanged
`
`throughout the twentieth century.” Id., 1:32-33. The patentee also acknowledged that he did not
`
`invent the use of electronic billboards. Id. 1:54-55. Because of “[t]he high cost of printing,
`
`transporting and mounting a message on a conventional billboard[, however,] . . . a conventional
`
`billboard cannot be readily changed to reflect current events within the geographic area of the
`
`billboard.” Id., 1:34-39. Hence, like the ’470 and ’334 Patents, the ’603 Patent simply purports to
`
`streamline a pre-existing system by adding generic computer components. See, e.g., id., 2:4-15.
`
`Figure 1 includes a “network” comprising a “plurality of electronic displays 30.” Id., 2:50-
`
`65; Fig. 1. A customer may access the “central information processing station” via the Internet
`
`through a “Customer Interface Web Server 40” to obtain and enter security code and billing code
`
`information. Id., 2:66-3:6. After selecting a time and location, the customer “transmits the
`
`advertising content on-line through the Internet, a direct phone line or a high speed connection (for
`
`example, ISDN or DSL)” for content review by a “system security employee” before the content
`
`is “read to the server 100 associated with each display 30.” Id., 3:22-30. No special components
`-6-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 11 of 22 PageID #:251
`
`are required. Instead, the ’603 Patent indicates that “a suitable server is the IBM RISC 6000
`
`server.” Id., 3:29-30. The system verifies that advertisements are run as scheduled and produces
`
`billing and reporting information. Id., 3:62-4:4:49.T-Rex asserts claims 42 and 43 of the ’603
`
`Patent, both of which depend from claim 13:
`
`Claim 13
`13. A system for presenting video or still-image content at selected times and locations on a
`networked connection of multiple electronic displays, said system comprising:
`a network interconnecting a plurality of electronic displays provided at various geographic
`locations;
`means for scheduling the presentation of video or still-image content at selected time slots
`on selected electronic displays of said network and receiving said video or still-image
`content from a content provider;
`transmission means in communication with said receiving means for communicating
`scheduled content to respective server devices associated with corresponding selected
`electronic displays of said network,
`each said associated device initiating display of said video or still-image content at
`selected times on a corresponding selected electronic display of said network.
`
`Dependent claim 42 is directed to displaying images on a split screen. Id., cl. 42. Dependent claim
`
`43 indicates that the split screen of claim 42 is capable of displaying a still image in one display
`
`area and a real time video, near real time video, or still frame in a second display area. Id., cl. 43.
`
`II.
`
`LEGAL STANDARD
`
`A.
`
`This case should be dismissed on the pleadings under Rule 12(b)(6).
`
`To survive a Rule 12(b)(6) motion, a complaint “must provide the plaintiff’s grounds for
`
`entitlement to relief—including factual allegations that when assumed to be true raise a right to
`
`relief above the speculative level.” Cuvillier v. Sullivan, 503 F.3d 397, 401 (5th Cir. 2007) (internal
`
`citations and quotations omitted). In deciding a Rule 12(b)(6) motion, courts consider documents
`
`attached to or incorporated into the complaint as well as facts alleged in the complaint. Lovelace
`
`v. Software Spectrum, 78 F.3d 1015, 1017 (5th Cir. 1996). Although factual allegations are taken
`
`as true, legal conclusions are given no deference—those matters are left for the court to decide.
`
`-7-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 12 of 22 PageID #:252
`
`See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (tenet that allegations are taken as true on a motion
`
`to dismiss “is inapplicable to legal conclusions”). “[W]hen the allegations in a complaint, however
`
`true, could not raise a claim of entitlement to relief [as a matter of law], this basic deficiency should
`
`. . . be exposed at the point of minimum expenditure of time and money by the parties and the
`
`court.” Cuvillier, 503 F.3d at 401 (internal citations and quotations omitted).
`
`Patentability under 35 U.S.C. § 101 is a threshold legal issue. Bilski v. Kappos, 561 U.S.
`
`593, 602 (2010). Accordingly, the § 101 inquiry is properly raised at the pleadings stage if it is
`
`apparent from the face of the patent that the asserted claims are not directed to eligible subject
`
`matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 718-19 (Fed. Cir. 2014).
`
`B.
`
`The law of 35 U.S.C. § 101.
`
`Section 101 of the Patent Act sets forth four categories of patentable subject matter: “any
`
`new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Also,
`
`the law recognizes three exceptions to patent eligibility: “laws of nature, physical phenomena, and
`
`abstract ideas.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (emphasis added). Abstract
`
`ideas are ineligible for patent protection because a monopoly over these ideas would preempt their
`
`use in all fields. See Bilski, 561 U.S. at 611-12. In other words, “abstract intellectual concepts are
`
`not patentable, as they are the basic tools of scientific and technological work.” Id. at 653 (quoting
`
`Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
`
`Determining whether a patent claim is impermissibly directed to an abstract idea involves
`
`two steps. First, the court determines “whether the claims at issue are directed to a patent-ineligible
`
`concept.” Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). Second, if the
`
`claim contains an abstract idea, the court evaluates whether there is “an ‘inventive concept’—i.e.,
`
`an element or combination of elements that is sufficient to ensure that the patent in practice
`
`-8-
`
`

`
`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 13 of 22 PageID #:253
`
`amounts to significantly more than a patent upon the ineligible concept itself.” Id. (internal
`
`quotations and citations omitted).
`
`Transformation into a patent-eligible application requires “more than simply stating the
`
`abstract idea while adding the words ‘apply it.’” Id. at 2357 (quoting Mayo Collaborative Servs.
`
`v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). Indeed, if a claim could be performed
`
`in the human mind, or by a human using pen and paper, it is not patent-eligible. CyberSource
`
`Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). Also, a claim is not
`
`meaningfully limited if it includes only token or insignificant pre- or post-solution activity—such
`
`as identifying a relevant audience, category of use, field of use, or technological environment.
`
`Mayo, 132 S. Ct. at 1297-98, 1300-01; Bilski, 561 U.S. at 610; Diamond v. Diehr, 450 U.S. 175,
`
`191-92 & n.14 (1981); Parker v. Flook, 437 U.S. 584, 595 n.18 (1978). And “simply appending
`
`conventional steps, specified at a high level of generality, to laws of nature, natural phenomena,
`
`and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Mayo, 132 S. Ct. at
`
`1300; see also Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1323 (Fed. Cir. 2012).
`
` Notably, claim construction is not required to conduct a § 101 analysis. Bancorp Servs.,
`
`L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273 (Fed. Cir. 2012).
`
`III. ARGUMENT
`
`T-Rex’s Complaint should be dismissed because the asserted claims of the Patents-in-Suit
`
`are invalid under 35 U.S.C. § 101 for failing both prongs of the Alice test. Each of the asserted
`
`claims is directed to the abstract idea of displaying information in public places based on
`
`instructions from a third party. Abstract ideas are not eligible for patenting. None of the asserted
`
`claims contains an “inventive concept sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent upon the ineligible concept itself.” Because T-Rex has failed to
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`state a claim upon which relief may be granted, this case should be dismissed with prejudice.
`-9-
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`

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`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 14 of 22 PageID #:254
`
`A.
`
`The Patents-in-Suit are invalid under 35 U.S.C. § 101.
`
`1.
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`The asserted patent claims are directed to an abstract idea.
`
`To determine patent eligibility under § 101, courts first assess whether the claims are
`
`directed to an abstract idea. Alice, 134 S. Ct. at 2355. The asserted claims in the Patents-in-Suit
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`are directed to the abstract concept of displaying information in public places based on a third
`
`party’s instructions. The’470 Patent and the ’334 Patent differ only in that the information is
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`displayed on cinemas and TVs (’334 Patent) instead of subway stations (’470 Patent). The method
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`and system claims in both patents are otherwise identical. The asserted claims in the ’603 Patent
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`concern billboards. Like the asserted claims of the ’470 and ’334 Patents, they are directed to the
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`abstract idea of displaying information in public places based on a third party’s instructions.
`
`Claim 25 of the ’470 Patent is representative of the asserted claims. In assessing whether
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`this claim is directed to an abstract idea, the Court must look past the claim language to the purpose
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`of the claim to determine what the invention is trying to achieve. Morales v. Square, Inc., 75
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`F.Supp.3d 716, 724 (W.D. Tex. 2014). All that claim 25 is “trying to achieve” is a method of
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`“displaying information in public places based on instructions given by a third party.” See id. In
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`particular, claim 25 is directed to nothing more than the conventional idea of displaying
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`information in public places based on instructions given by a third party:
`
`Claim Language
`A method of selectively displaying digital
`information at one or more of a plurality of
`locations, said method comprising:
`receiving control instructions from at least
`one external information mediator;
`using said control instructions to generate an
`exposure list, said exposure list specifying
`three or more of the following items:
`i.) what information content is to be
`displayed;
`ii.) at which of said plurality of locations said
`information content is to be displayed;
`
`Claimed Idea
`A method for displaying information at
`multiple locations
`
`receiving instructions for displaying
`information
`the instructions including what information to
`display, where to display it, when to display
`it, and for how long to display it
`
`-10-
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`

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`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 15 of 22 PageID #:255
`
`iii) when said information content is to be
`displayed for each location at which content is
`to be displayed; and
`iv) how long said information content is to be
`displayed for each location at which content is
`to be displayed;
`displaying images at one or more of said
`locations in accordance with said exposure list;
`and permitting said exposure list to be
`dynamically updated.
`
`displaying the information according to the
`instructions
`allowing the instructions to be updated
`
`At a high level, this claim describes the most basic steps for displaying information based
`
`on instructions received from an external source (e.g., a person) about what, where, when, and how
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`long to display that information. See, e.g., ’470 Patent, 1:27-31. But scheduling the display of
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`information by determining what, where, when and how long to display information is an abstract
`
`idea that can be implemented in a variety of ways, including by a human. Such a broad concept is
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`not patent eligible because it “recite[s] an abstraction—an idea, having no particular concrete or
`
`tangible form.” Ultramercial, 772 F.3d at 715.
`
`Claim 25 is analogous to the claims at issue in Landmark Tech., LLC v. Assurant, Inc.,
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`which this Court determined were “directed to an abstract idea: searching for and retrieving
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`information on a computer system.” Landmark Tech., LLC v. Assurant, Inc., No. 6:15-CV-76-
`
`RWS-JDL, 2015 WL 4388311, at *5 (E.D. Tex. July 14, 2015). In Landmark, the asserted claim
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`generally recited methods for “’storing,’ ‘interrelating,’ ‘searching,’ and ‘retrieving’ textual and
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`graphical information.” But “none of the claim elements provide[ed] for any specific computer
`
`software or hardware” and instead “recite[ed] only the well-known concepts of storing,
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`interrelating, searching, and retrieving information.” Id. at *10-12. As in Landmark, claim 25 does
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`not provide any specific software or hardware elements. Instead claim 25 recites the well-known
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`concept of receiving (i.e., receiving instructions on how to display information), processing (i.e.,
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`ordering the information to be displayed according to the instructions), and displaying information
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`-11-
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`

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`Case: 1:16-cv-06649 Document #: 15 Filed: 09/02/16 Page 16 of 22 PageID #:256
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`(i.e., displaying the information according to the instructions). Like the patent in Landmark, the
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`Patents-in-Suit are directed to an abstract idea regarding the receipt and display of information.
`
`In fact, the specifications of the Patents-in-Suit admit that scheduling the display of
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`information in public places based on instructions given by a third party was a routine, well-known
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`task in use long before the addition of computer components. To schedule the display of
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`information in subway stations, for example, an advertising company would provide instructions
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`about what, where, when, and how long to display that informati