Case 2:13-cv-00391-ES-JAD Document 127 Filed 04/27/15 Page 1 of 20 PageID: 1765
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`
`Consolidated Civil Action No. 13-391
`(ES/JAD)
`Civil
`(Formerly
`7757(ES/JAD))
`
`Action
`
`No.
`
`14-
`
`
`
`
`
`
`WATSON LABORATORIES, INC.,
`
`Defendant.
`
`
`
`
`WATSON’S REPLY IN SUPPORT OF MOTION TO DISMISS
`PURSUANT TO RULE 12(b)(6)
`
`
`Liza M. Walsh
`Tricia O’Reilly
`Katelyn O’Reilly
`CONNELL FOLEY LLP
`85 Livingston Avenue
`Roseland, New Jersey 07068-1765
`(973) 535-0500
`
`Of Counsel:
`
`Gary E. Hood (pro hac vice)
`Mark T. Deming (pro hac vice)
`POLSINELLI PC
`161 North Clark Street, Suite 4200
`Chicago, Illinois 60601
`(312) 819-1900
`
`Attorneys for Defendant
`Watson Laboratories, Inc.
`
`
`
`
`
`
`
`
`
`JAZZ PHARMACEUTICALS, INC. and
`JAZZ PHARMACEUTICALS IRELAND
`LIMITED,
`
`
`Plaintiffs,
`
`
`v.
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 127 Filed 04/27/15 Page 2 of 20 PageID: 1766
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`TABLE OF CONTENTS
`
`The Risk Mitigation Patents Fail the Alice Test. ............................................. 1
`
`The Risk Mitigation Patents Are Ripe for Dismissal ...................................... 3
`
`I.
`
`II.
`
`a.
`
`b.
`
`No Factual Disputes Require Resolution .............................................. 3
`
`No Claim Construction Issues Are Present ........................................... 4
`
`III. Watson’s Use of a Representative Claim Is Appropriate ................................ 5
`
`IV.
`
`Jazz Confuses Novelty & Non-obviousness with Patent Eligibility ............... 6
`
`V.
`
`The Risk Mitigation Patents Preempt the Idea of Drug Distribution .............. 8
`
`VI. The Risk Mitigation Patents Do Not Claim Specialized Computers .............. 9
`
`VII. Jazz’s Cases Undermine the Validity of the Risk Mitigation Patents ...........12
`
`a.
`
`b.
`
`c.
`
`The Claims in Diehr Improved An Existing Technological
`Process .................................................................................................12
`
`The Computer in Alappat Was Specially Programmed ......................12
`
`Unlike the Claims in DDR Holdings, the Claims of the Risk
`Mitigation Patents Merely Apply “Pre-Computer” Ideas in a
`Computerized Context .........................................................................13
`
`VIII. The Recent Wireless Media Decision is Instructive .....................................14
`
`
`
`
`
`i
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`

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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013) ............................................................................ 3
`
`In re Alappat,
`33 F.3d 1526 (Fed. Cir. 1994) .................................................................. 9, 12, 13
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ............................................................................ 1, 2, 8, 12
`
`Bancorp Servs., L.L.C. v. Sun Life Assur. Co.,
`687 F.3d 1266 (Fed. Cir. 2012) .............................................................. 3, 4, 8, 10
`
`In re Bilski,
`545 F.3d 943 (Fed. Cir. 2008) ............................................................................ 13
`
`In re Bilski,
`561 U.S. 593 (2010) .............................................................................................. 2
`
`buySafe, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014) ............................................................................ 2
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank,
`776 F.3d 1343 (Fed. Cir. 2014) .................................................................... 4, 5, 8
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) .................................................................... 13, 14
`
`Diamond v. Diehr,
`450 U.S. 175 (1980) ........................................................................................ 9, 12
`
`Enfish, LLC v. Microsoft Corp.,
`No. 2:12-cv-7360, 2014 WL 5661456 (C.D. Cal. Nov. 3, 2014) ....................... 11
`
`Shortridge v. Foundation Construction Payroll Service, LLC,
`No. 14-cv-4850, 2015 WL 1739256 (N.D. Cal. Apr. 14, 2015) ........................ 10
`
`
`
`ii
`
`

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`SiRF Tech., Inc. v. Int’l Trade Comm’n,
`601 F.3d 1319 (Fed. Cir. 2010) .......................................................................... 10
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) ........................................................ 2, 3, 4, 6, 8, 14
`
`Wireless Media Innovations, LLC v. Maher Terminals, LLC,
`No. 14-7004, 7006, 2015 WL 1810378 (D.N.J. Apr. 20, 2015)
`(Linares, J.) ....................................................................................... 3, 4, 7, 14, 15
`
`Statutes
`
`35 U.S.C. § 101 ................................................................................1, 3, 4, 5, 7, 8, 12
`
`Other Authorities
`
`Rule 12(b)(6) ............................................................................................................ 15
`
`iii
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`
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`
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`

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`
`
`Jazz’s Risk Mitigation Patents are ripe for dismissal. While Jazz tries to
`
`suggest myriad reasons why this is not the case, its arguments are ultimately
`
`without merit. Granting this motion will eliminate seven of more than fifteen
`
`patents that Jazz asserted against Watson and related defendants, thereby focusing
`
`these cases on the real dispute—families of patents allegedly covering the actual
`
`drug and its uses—rather than the “idea” of distributing it using a computer.
`
`
`
`Claims are invalid under § 101 if they: (1) are directed to an abstract idea;
`
`and (2) do not add an inventive concept to that idea. Courts are increasingly
`
`disposing of such claims at the pleading stage, even over objections like those
`
`made by Jazz here. Indeed, a recent decision from the District of New Jersey
`
`granted a motion to dismiss claims as unpatentable, and in so doing rejected
`
`arguments (just like those made by Jazz here) that the motion was premature, claim
`
`construction was necessary, and the use of representative claims was inappropriate.
`
`
`
`The Risk Mitigation Patents claim the abstract idea of drug distribution, and
`
`to that idea they add nothing more than implementation “on a computer.” This is
`
`not patent eligible under § 101, and the claims for infringement of the Risk
`
`Mitigation Patents should be dismissed with prejudice.
`
`I.
`
`The Risk Mitigation Patents Fail the Alice Test.
`
`Although Jazz tries to rephrase it, the framework for distinguishing
`
`ineligible claims from eligible claims is this: (1) does the patent claim a law of
`
`
`
`1
`
`

`

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`nature, natural phenomena, or abstract idea; and (2) if so, do the claims add an
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`inventive concept such that “the patent in practice amounts to significantly more
`
`than a patent upon the ineligible concept itself.” Alice Corp. Pty. Ltd. v. CLS Bank
`
`Int’l, 134 S. Ct. 2347, 2354–55 (2014). Once the claims of the Risk Mitigation
`
`Patents are parsed into their consitutent “idea” and “computer” parts, it is clear that
`
`they do not pass this test.
`
`
`
`Consider, for example, claim 1 of the ’730 patent without its computer
`
`components: it is a method of processing prescriptions by checking credentials,
`
`confirming patients or prescribers have completed certain steps, and making sure
`
`the drug ultimately reached the intended patient. That is, it is the idea of drug
`
`distribution. Each step could be performed with a pencil and paper, and the entire
`
`arrangement of steps could be drawn in a simple flow chart. The computer
`
`components added to the claim do nothing more than basic functions: receiving
`
`and storing data, generating reports. This falls short of the inventive concept
`
`necessary to make the claims patent eligible. Alice, 134 S. Ct. at 2359 (finding
`
`patents that “simply instruct[ed] the practitioner to implement the abstract idea of
`
`intermediated settlement on a generic computer” invalid).1
`
`
`1 See also In re Bilski, 561 U.S. 593, 611-12 (2010) (rejecting patent
`application seeking to patent the concept of hedging risk and the application of that
`concept to energy markets because it claimed an abstract idea); Ultramercial, Inc.
`v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014) (finding invalid patents that
`claimed the idea of using advertising as a currency “on the Internet”); buySafe, Inc.
`v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (finding invalid claims to
`
`
`
`2
`
`

`

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`II. The Risk Mitigation Patents Are Ripe for Dismissal.
`
`Jazz does not identify any compelling reason for the Court to delay ruling on
`
`the validity of the Risk Mitigation Patents. Where, as here, there is no genuine
`
`dispute to resolve through litigation, the merits of the subject patents should be
`
`resolved at the beginning of the case. See Ultramercial, 772 F.3d at 717 (Mayer, J.,
`
`concurring) (“[W]hether the claims meet the demands of 35 U.S.C. § 101 is a
`
`threshold question, one that must be addressed at the outset of litigation.”).
`
`a.
`
`No Factual Disputes Require Resolution.
`
`While Jazz suggests factual questions prohibit the Court from granting the
`
`instant motion, it fails to explain what those may be. (Dkt. #20, Opp. at 39).
`
`Indeed, far from disputing any of the facts of which Watson invited the Court to
`
`take judicial notice, Jazz avails itself of the same convenience (id. at 4 n.4),
`
`implicitly recognizing that the historical context in which the Risk Mitigation
`
`Patents should be viewed is not materially in dispute. In reality, all Jazz argues is
`
`that, to the extent the Court is inclined to grant Watson’s motion, there must be a
`
`fact question present. That is not enough. See, e.g., Wireless Media Innovations,
`
`creating a “transaction performance guaranty” by using a computer to send and
`receive information over a network); Accenture Global Servs., GmbH v. Guidewire
`Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013) (finding invalid
`“generalized software components arranged to implement an abstract concept [of
`generating insurance-policy-related tasks based on rules to be completed upon the
`occurrence of an event] on a computer”); Bancorp Servs., L.L.C. v. Sun Life Assur.
`Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (finding invalid claims that recited a
`computer “only for its most basic function, the performance of repetitive
`calculations”).
`
`
`
`3
`
`

`

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`LLC v. Maher Terminals, LLC, No. 14-7004, 7006, 2015 WL 1810378, at *4
`
`(D.N.J. Apr. 20, 2015) (Linares, J.) (granting motion to dismiss under § 101 where
`
`“[t]here are no disputed facts that need to be resolved to decide this issue”).
`
`b.
`
`No Claim Construction Issues Are Present.
`
`Jazz also suggests claim construction issues prohibit the Court from granting
`
`the instant motion, but it merely argues that if the claims are to be read as reciting
`
`only a “general purpose” computer, then there must be a claim construction issue.
`
`(Opp. at 40). Nowhere, though, does Jazz indicate what that issue might be. Jazz
`
`does not identify what terms it would construe or explain how those constructions
`
`would change the claims to make them patent-eligible.
`
`Watson has not suggested that the claims of the Risk Mitigation Patents
`
`require construction for purposes of the instant motion, and indeed construction at
`
`this juncture is not necessary. The Court need only read the claim language as it is
`
`stated. Indeed, as the Federal Circuit has held, “claim construction is not an
`
`inviolable prerequisite to a validity determination under § 101.” Bancorp, 687 F.3d
`
`at 1273; see also Content Extraction & Transmission LLC v. Wells Fargo Bank,
`
`776 F.3d 1343, 1349 (Fed. Cir. 2014) (affirming grant of motion to dismiss prior to
`
`formal claim construction); Ultramercial, 772 F.3d at 714, 717 (same); Wireless
`
`Media, 2015 WL 1810378 at *4 (“Courts may properly decide the question of
`
`patent eligibility at the pleading stage and without first construing the claim
`
`
`
`4
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`

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`terms.”). There is no claim construction issue for the Court to resolve before it can
`
`dispose of the Risk Mitigation Patent claims as ineligible under § 101.
`
`III. Watson’s Use of a Representative Claim Is Appropriate.
`
`It is proper for the Court to rely on a representative claim here because all of
`
`the claims of the Risk Mitigation Patents are substantially similar and linked to the
`
`same abstract idea. See Content Extraction, 776 F.3d at 1348. The Risk Mitigation
`
`Patents include more than 100 claims, but they are all directed to the same basic
`
`idea of drug distribution.2
`
`Jazz’s own reliance on representative statements, in fact, belies its point.
`
`Jazz collectively describes all of its Risk Mitigation Patents as “claim[ing] specific
`
`methods and systems for distributing sensitive drugs . . . .” (Opp. at 1). It states
`
`that, “[a]t a high level, each patent discloses drug distribution systems and methods
`
`using a central computer database to track prescriptions for sensitive drugs and
`
`identify potential abuse, misuses and diversion.” (Id. at 9). Indeed, Jazz
`
`acknowledges that the Risk Mitigation Patents all share a common specification
`
`such that its citations to the ’730 patent “are exemplary.” (Id. at 9, n.6; see also id.
`
`at 19).
`
`
`2 Although Jazz contests the use of a representative claim, it is telling that
`nowhere does Jazz adequately explain how the claims allegedly materially differ
`from each other. Instead, Jazz argues that “the claims . . . are not directed to an
`abstract idea, much less the same abstract idea” (Opp. at 14, emphasis in original),
`and at various points in its brief suggests without explanation how certain claims
`add certain elements to the “invention.”
`
`
`
`5
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`

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`Nowhere does Jazz make an effort to explain how any of the claims of the
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`Risk Mitigation Patents vary such that use of a representative claim might
`
`somehow be improper. Watson presented analysis of a representative claim
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`appropriately and for good reason—this provides the Court the necessary basis to
`
`consider its motion, while avoiding bogging the instant inquiry down in the
`
`repetitive nature of these claims.3
`
`IV. Jazz Confuses Novelty & Non-obviousness with Patent Eligibility.
`
`Jazz tries to make much of “[t]he patent office . . . recogniz[ing] that the
`
`combination of the required claim limitations including a central computer
`
`database to perform these functions was novel and unconventional . . . .” (Opp. at
`
`3, 33–34). This misses the mark. The only question presently before the Court is
`
`whether the Risk Mitigation Patents claim patent-eligible subject matter.
`
`In recent years, the Supreme Court has “endeavor[ed] to right the ship and
`
`return the nation’s patent system to its constitutional moorings” by giving clearer
`
`guidance about subject matter eligibility. Ultramercial, 772 F.3d at 720 (Mayer, J.
`
`concurring). As the Patent Office did not previously have this guidance available to
`
`it, and as it “ha[d] for many years applied an insufficiently rigorous subject matter
`
`eligibility standard, no presumption of eligibility should attach when assessing
`
`3 Jazz’s allegation
`instant motion “relies entirely on a
`the
`that
`mischaracterization of Jazz’s asserted patents,” (Opp. at 1), and that “Watson’s
`characterization of the asserted patents is deliberately misleading,” (id. at 10), are
`without merit.
`
`
`
`6
`
`

`

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`whether claims meet the demands of section 101.” Id.; see also Wireless Media,
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`2015 WL 1810378 at *6 (evaluating patents challenged under § 101 without
`
`affording them a presumption of subject matter eligibility). Indeed, Jazz once
`
`overcame § 101 objections not by arguing the claims used an “unconventional”
`
`computer to do “non-routine” procedures, but simply by stating the claims used a
`
`generic computer. Such arguments, once acceptable, are no longer sufficient.
`
`Jazz continues to prosecute applications that belong to the Risk Mitigation
`
`Patents family, but as the Patent Office begins to apply the new subject-matter
`
`eligibility guidance, it is maintaining its § 101 rejections of Jazz’s pending
`
`applications. See Ex. Q (Dec. 17, 2014 Non-final Rejection of App. No.
`
`14/196,603); Ex. R (Feb. 23, 2015 Non-final Rejection of App. No. 14/219,941);
`
`Ex. S (Mar. 2, 2015 Non-final Rejection of App. No. 14/219,904). Each of those
`
`applications involve claims substantially similar to those here, and in each instance
`
`the Patent Office rejected them as directed to abstract ideas4 to which is added
`
`nothing more than the recitation of a generic computer to perform well-understood,
`
`routine, and conventional activities previously known in the industry. Ex. Q at 2–3;
`
`Ex. R at 2–3; Ex. S at 2–3. Jazz’s reliance on the Patent Office’s previous
`
`
`4 The Patent Office identified the abstract idea as “treatment of a patient with
`a prescription drug” in the ’603 application and as “reconciling inventory” in the
`’941 and ’904 applications. These characterizations of the general idea claimed by
`the Risk Mitigation Patents are consistent with Watson’s identification of “drug
`distribution” as the abstract idea.
`
`
`
`7
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`

`

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`acceptance of its novelty and non-obviousness arguments is misplaced.
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`V. The Risk Mitigation Patents Preempt the Idea of Drug Distribution.
`
`Jazz’s criticism of Watson’s opening brief as “not discuss[ing] preemption”
`
`demonstrates a fundamental misunderstanding of the law. Analyzing claims
`
`according to the Alice framework identifies claims that violate the rule against
`
`preemption, but “preemption” is not a magic, buzz word that must be invoked.
`
`Indeed, the word does not appear once in Ultramercial or Content Extraction,
`
`cases in which the Federal Circuit invalidated patents on this basis.
`
`Jazz tries to muddy the water, though, by arguing the Risk Mitigation
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`Patents do not preempt the “concept” of drug distribution. A patent need not be so
`
`broad to be invalid under § 101. In Alice, for example, the abstract idea was “the
`
`concept of intermediated settlement, i.e., the use of a third party to mitigate
`
`settlement risk.” 134 S. Ct. at 2356. In Ultramercial, it was “us[ing] an
`
`advertisement as an exchange or currency.” 772 F.3d at 714. In Bancorp, it was
`
`“managing a stable value protected life insurance policy by performing
`
`calculations and manipulating the results.” 687 F.3d at 1280.
`
`The point is that an idea, however described, is not in and of itself a
`
`patentable invention. And it does not become patent-eligible simply by claiming
`
`the idea as done by a computer. See Alice, 134 S. Ct. at 2358 (“Stating an abstract
`
`idea while adding the words ‘apply it’ is not enough for patent eligibility.”). The
`
`
`
`8
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`

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`Court should decline Jazz’s invitation to perceive a dispute sufficient to deny the
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`instant motion on the basis of the appropriate way to define the abstract idea here.
`
`In short, it is sufficient to simply recognize the Risk Mitigation Patents for what
`
`they are—claiming an idea implemented “on a computer.”
`
`VI. The Risk Mitigation Patents Do Not Claim Specialized Computers.
`
`For all the claims’ verbosity, not one recites the use of a computer for
`
`anything other than routine functions—receiving, storing, and performing
`
`operations on data. Jazz contends its claims are patentable because the central
`
`computer database is “a specific computer implementation,” (Opp. at 32), that it is
`
`“implemented as a relational database,” (id. at 9), and done to “detect and prevent
`
`drug abuse, misuse, and diversion.” (Id. at 33). Not one claim limitation recites
`
`anything other than a generic computer, however, and the written description only
`
`discusses a computer in the most basic terms. See ’730 patent at 3:46–4:6 & Fig. 1.
`
`Even if the Risk Mitigation Patents were limited to a specific computer
`
`implementation—and they are not—that does not make them patent eligible. When
`
`computer-implemented claims are upheld it is because the computers as claimed
`
`are tailored to the particular invention. See infra at Section VII (discussing special-
`
`purpose computer application of Diehr and special-purpose computer of Alappat).
`
`By contrast, the Risk Mitigation Patents simply claim a computer running a
`
`relational database, which is not a special-purpose machine—it is a conventional
`
`
`
`9
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`

`

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`function performed by a generic computer. See Shortridge v. Foundation
`
`Construction Payroll Service, LLC, No. 14-cv-4850, 2015 WL 1739256, at *12
`
`(N.D. Cal. Apr. 14, 2015) (“[U]sing relational databases to store and organize labor
`
`data . . . does no more than require a generic computer to perform generic
`
`computer functions.”).
`
`That the claimed systems of the Risk Mitigation Patents can be used to
`
`perform drug misuse detection and prevention is beside the point—they do not
`
`actually claim that detection and prevention process. Instead, they claim only an
`
`arrangement of data stored in a database—the analytical process, the decision
`
`making procedure, the actual “doing” appears nowhere in the claims.
`
`Jazz criticizes Watson for “dissect[ing] the claims” into their constituent
`
`parts, but Jazz does not explain why the claims taken “as a whole” are patent
`
`eligible. Instead, Jazz reiterates only that the claims recite its “solution to the
`
`problem of abuse, misuse, and diversion,” but that is effectively saying that the
`
`claims as a whole simply recite the idea of drug distribution “on a computer,”
`
`which is exactly why the claims are not patent eligible.
`
`It is not enough that the use of the computer might speed up the process.
`
`“[T]he fact that the required calculations could be performed more efficiently via a
`
`computer does not materially alter the patent eligibility of the claimed subject
`
`matter.” Bancorp, 687 F.3d at 1278; see also SiRF Tech., Inc. v. Int’l Trade
`
`
`
`10
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`

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`Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a
`
`machine to impose a meaningful limit on the scope of a claim, it must play a
`
`significant part in permitting the claimed method to be performed, rather than
`
`function solely as an obvious mechanism for permitting a solution to be achieved
`
`more quickly, i.e., through the utilization of a computer for performing
`
`calculations.”); Enfish, LLC v. Microsoft Corp., No. 2:12-cv-7360, 2014 WL
`
`5661456, at *11 (C.D. Cal. Nov. 3, 2014) (“The fact that a computer can perform
`
`brute force calculations faster than humans is irrelevant. Rapid processing of data
`
`is a generic function of computers.”).
`
`The claims of the Risk Mitigation Patents could be rewritten to omit the
`
`computer components and the methods could still be performed. For example, in
`
`claim 1 of the ’730 patent, the prescription requests and related information could
`
`be received by a “pharmacist” rather than by a “computer processor.” The
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`pharmacist could record all the data in an “exclusive ledger” rather than an
`
`“exclusive computer database.” The pharmacist could then perform the remaining
`
`steps—checking credentials to determine eligibility, confirming reading of
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`educational materials, checking for abuse, mailing the drug, confirming receipt of
`
`the drug, and generating a periodic report.
`
`Jazz’s attempt to distinguish the Risk Mitigation Patents from the “mental
`
`processes” case law is unavailing. The argument that “the claims of the asserted
`
`
`
`11
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`

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`patents on their face cannot be performed by a human or using pencil paper, as
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`they expressly recite a machine – the central computer database” (see Opp. at 38)
`
`is trivial. If the inquiry was that myopic, no “computer” claim would ever fail
`
`under § 101, a misperception that the Supreme Court has been correcting.
`
`VII. Jazz’s Cases Undermine the Validity of the Risk Mitigation Patents.
`
`a.
`
`The Claims in Diehr Improved An Existing Technological Process.
`
`First, Jazz attempts to analogize its Risk Mitigation Patents to the claims at
`
`issue in a case decided over thirty years ago, Diamond v. Diehr, 450 U.S. 175
`
`(1980). As the Supreme Court explained in Alice, the claims in Diehr were directed
`
`to “a computer-implemented process for curing rubber.” Alice, 134 S. Ct. at 2358.
`
`The process involved using a sensor to measure temperature inside a rubber mold,
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`something that had not been practiced in the industry previously, and then
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`repeatedly recalculating the remaining cure time using a mathematical equation. Id.
`
`As the Court summarized: “the claims in Diehr were patent eligible because they
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`improved an existing technological process, not because they were implemented on
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`a computer.” Id. Jazz does not even begin to contend that the Risk Mitigation
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`Patents improve on an existing technological process, because they do not.
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`b.
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`The Computer in Alappat Was Specially Programmed.
`
`Jazz next relies on a case decided over twenty years ago, In re Alappat, 33
`
`F.3d 1526 (Fed. Cir. 1994). The claims at issue there were directed to creating a
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`smooth waveform display in a digital oscilloscope. Id. at 1537–38. The Federal
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`Circuit rejected the notion that the claims were invalid as implementing a
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`mathematical concept on a general purpose computer, finding it had become a
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`“special purpose computer” by virtue of it being “programmed to perform
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`particular functions.”5 Id. at 1545. The Risk Mitigation Patents, however, do not
`
`claim a particular program for carrying out drug distribution. They recite
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`“receiving” data, “checking” credentials, and “determining” patterns for potential
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`abuse, but they do not specifically claim how the checks and determinations
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`performed. Thus, they fall far short of a programmed “special purpose” computer.
`
`c.
`
`Unlike the Claims in DDR Holdings, the Claims of the Risk
`Mitigation Patents Merely Apply “Pre-Computer” Ideas in a
`Computerized Context.
`
`Finally, Jazz cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
`
`(Fed. Cir. 2014), which concerned claims directed to a system for generating
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`“hybrid webpages” that give Internet users the impression that they are still visiting
`
`an original website when in fact they have navigated on to a third-party
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`advertiser’s web pages. 773 F.3d at 1248–49. The Federal Circuit found the claims
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`patent-eligible because “the claimed solution [was] necessarily rooted in computer
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`technology in order to overcome a problem specifically arising in the realm of
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`5 The Federal Circuit also found the claims patent-eligible because they
`recited “a specific machine to produce a useful, concrete, and tangible result,” id.
`at 1544, a standard that it later abrogated in In re Bilski, 545 F.3d 943 (Fed. Cir.
`2008).
`
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`computer networks.” Id. at 1257. “[T]hey do not merely recite the performance of
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`some business practice known from the pre-Internet world along with the
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`requirement to perform it on the Internet.” Id. In other words, the claims recited an
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`improvement on Internet technology and “not merely the routine or conventional
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`use of the Internet.” Id. at 1259.
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`The claims of the Risk Mitigation Patents do not share these qualities. The
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`“solution” of the Risk Mitigation Patents is, in Jazz’s own words, reducing “[t]he
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`potential for intentional misuse of the drugs against others.” (Opp. at 9). This is not
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`a solution rooted in “computer technology” intended to overcome a problem
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`arising in the realm of “computer networks.” See DDR Holdings, 773 F.3d at 1257.
`
`On the contrary, the Risk Mitigation Patents take a concept that existed from the
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`pre-Internet (or pre-“relational database”) world and claim its application “on the
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`Internet” (or “on a centralized computer database”). Id. at 1257–59. The claims of
`
`the Risk Mitigation Patents are the very kinds of claims that the Federal Circuit
`
`was distinguishing in order to uphold the validity of the claims in DDR.6
`
`VIII. The Recent Wireless Media Decision is Instructive.
`
`The recent Wireless Media decision from this district accords with Watson’s
`
`
`6 For the same reasons, Jazz’s attempts to distinguish Ultramercial,
`MoneySuite, and Enpat are unavailing. In each instance, Jazz argues that its
`“specialized” computer database that performs “unconventional” functions makes
`it unlike the claims in each of those cases. Stripped of these false premises,
`however, there is nothing to substantively distinguish the claims of the Risk
`Mitigation Patents from those found invalid in the cases Watson cited.
`
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`position. The plaintiff there, like Jazz here, contested disposition at the pleading
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`stage, before claim construction, using representative claims. 2015 WL 1810378 at
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`*2-6. The plaintiff there, like Jazz here, argued the claims were complicated,
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`computer-implemented inventions.7 Id. The Court was not persuaded and
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`invalidated the patents because the claims “d[id] not transform the abstract idea
`
`they recite into patent-eligible subject matter because the claims simply instruct the
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`practitioner to implement the abstract idea with routine, conventional activity.” Id.
`
`at *11. The steps of those invalid patents are remarkably similar to the equally
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`conventional steps claimed in the Risk Mitigation Patents: collecting data,
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`processing the data, generating reports, etc. They amount to no more than an idea
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`for monitoring shipping—done on a computer—just as the Risk Mitigation Patents
`
`amount to nothing more than the idea of drug distribution—done on a computer.
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`Just as in that case, the Court should find the Risk Mitigation Patents invalid.
`
`CONCLUSION
`
`WHEREFORE, Watson requests the Court grant it relief as stated in its Brief
`
`in Support of its Motion to Dismiss Pursuant to Rule 12(b)(6).
`
`Dated: April 27, 2015
`
` s/Liza M. Walsh
`
`
`
`
`
`
`7 The patents at issue were directed to an abstract idea the Court described
`as: “monitoring locations, movement, and load status of shipping containers within
`a container-receiving yard, and storing, reporting and communicating this
`information in various forms through generic computer functions.” Id. at *8.
`
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`Liza M. Walsh
`Tricia O’Reilly
`Katelyn O’Reilly
`CONNELL FOLEY LLP
`85 Livingston Avenue
`Roseland, New Jersey 07068-1765
`(973) 535-0500
`
`
`Of Counsel:
`
`Gary E. Hood (pro hac vice)
`Mark T. Deming (pro hac vice)
`POLSINELLI PC
`161 North Clark Street, Suite 4200
`Chicago, Illinois 60601
`(312) 819-1900
`
`Attorneys for Defendant
`Watson Laboratories, Inc.
`
`
`
`
`
`16
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`