Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 1 of 52 PageID: 2095
`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 1 of 52 PageID: 2095
`Charles M. Lizza
`
`
`
`Phone:
`
`(973) 286-6715
`
`Fax:
`
`(973) 286-6815
`
`clizza@saul .com
`www.sau1.com
`
`August 20, 2015
`
`VIA ECF & FEDEX
`
`Hon. Esther Salas, U.S.D.J.
`United States District Court
`
`District of New Jersey
`Martin Luther King, Jr. Federal Courthouse
`50 Walnut Street
`
`Newark, New Jersey 07101
`
`$2
`
`Jazz Pharmaceuticals, Inc, et al. v. Amneal Pharmaceuticals, LLC, et al.
`Civil Action No. 13-391 (ES MAD}! Consolidated)
`
`Dear Judge Salas:
`
`This firm, together with Quinn Emanuel Urquhart & Sullivan, LLP and Richard G. Greco
`PC, represents plaintiffs Jazz Pharmaceuticals, Inc. and Jazz Pharmaceuticals Ireland Limited
`(collectively, “Jazz”) in the above-referenced matter. We write in response to defendant Watson
`Laboratories, Inc.’s (“Watson’s”) letter identifying supplemental authority purportedly relevant
`to Watson’s pending motion to dismiss (D.I. 162).
`
`Watson overstates the significance of Becton, Dickinson and Co. v. Baxter International,
`Inc, Civil Action No. 1-14-cv-222-LY (W.D. Tex. Aug. 3, 2015). As an initial matter, that
`decision was issued by a court from a different Circuit and has no precedential value in this
`District. Furthermore, as Watson’s letter concedes, Becton Dickinson was decided on summary
`judgment — not on a motion to dismiss, which applies a different standard. Notably, although the
`Becton Dickinson court had not issued a formal claim construction order, it had received
`extensive briefing from the parties and conducted a claim construction hearing, and could
`reasonably conclude that “there is no reasonable construction of any term” that would render the
`asserted patents patent-eligible. See Becton Dickinson Order at 2 n.2. By contrast, as noted in
`Jazz’s opposition, Watson’s motion raises new issues of claim construction that the parties have
`not previously presented to the Court. Case No. 14-7757, D.I. 20, at 39-40.1
`
`1 To the extent that cases outside of this Circuit are considered, another Texas court
`recently denied a motion to dismiss under § 101 because the claims had not yet been construed.
`See Phoenix Licensing, LLC v. CenturyLink, Inc, Civil Action No. 2-14-cv-965-JRG-RSP, at 5
`(ED. Tex. Aug. 14, 2015) (“The difficulty of making a substantive ruling on the validity of an
`
`One Riverfront Plaza, Suite 1520 0 Newark, NJ 07102-5426 0 Phone: (973) 286-6700 9 Fax: (973) 286-6800
`
`
`DELAWARE
`
`MARYLAND
`
`NEW YORK
`NEW JERSEY
`MASSACHUSETTS
`A DELAWARE LIMITED LIABILITY PARTNERSHIP
`
`PENNSYLVANIA WASHINGTON, DC
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 2 of 52 PageID: 2096
`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 2 of 52 PageID: 2096
`Hon. Esther Salas, U.S.D.J.
`August 20, 2015
`Page 2
`
`Nor does the Becion Dickinson decision justify Watson’s misguided attempt to dismiss
`seven patents by analyzing only a single allegedly representative claim. The Becton court had
`before it a single patent and “reviewed the [asserted patent] and all of its associated claims”
`before concluding that the claims were substantially similar, and need not be separately
`analyzed. Becton Dickinson Order at 3 n3. Watson’s motion, however, concerns seven patents
`with fundamentally different claims, many of which are wholly dissimilar in form and are
`directed to distinct and different implementations of the claimed central database. Watson does
`not offer any reason why a single claim can properly represent all seven patents at issue here.
`See Civil Action No. 14-7757, DJ. 20, at 13-14.
`
`Finally, the only similarity between the asserted claims in Becton Dickinson and the
`claims at issue in this case is that they both relate to the pharmaceutical industry. The claims in
`Becton Dickinson recited, at the highest level of abstraction, a method for pharmacists to
`supervise the work of non-pharmacists using image-capture devices, such as a camera that
`transmits images of the non-pharmacist’s work over the internet. See Becton Dickinson Order at
`4-5. Jazz’s patents, on the other hand, claim specific methods and systems for distributing
`sensitive drugs using a specialized central computer database. See Case No. 14-775 7, DJ. 20, at
`12, 24-25.
`
`Magistrate Judge Burke’s decision in Execware, LLC v. BJ’s Wholesale Club, Inc, Civ.
`No. 14-233-LPS (D. Del. July 15, 2015) is more instructive with respect to the types of claims in
`Jazz’s patents. The claims in Execware were directed to a specific novel implementation of a
`computer database that, much like Jazz’s claimed central database, overcame problems in prior
`art approaches. See Execware Opinion at 3-4 (attached hereto as Exhibit B). Magistrate Judge
`Burke considered the claims under the Alice framework, and concluded that (1) they are not
`directed to an abstract idea because they claim a particular improvement over the prior art, and
`not the underlying process to which that improvement is applied (id at 21-22, 29), and (2) they
`contain an inventive concept because they describe a particular interface that departed from the
`way the task was performed in the prior art, and did not simply claim a generic computer that
`performs the abstract idea (id. at 35-36). Magistrate Judge Burke also noted that the defendants’
`failure to clearly and consistently articulate precisely what was the abstract idea — as is also true
`of Watson’s motion — suggested a weakness in their overall position. Id. at 19 n.11.
`
`
`
`(continued...)
`
`issued patent in what is—in essence—a complete vacuum cannot be understated”) (attached
`hereto as Exhibit A).
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 3 of 52 PageID: 2097
`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 3 of 52 PageID: 2097
`Hon. Esther Salas, U.S.D.J.
`August 20, 2015
`Page 3
`
`Jazz appreciates the Court’s consideration of these matters and is prepared to provide
`additional briefing on the subject if the Court so requests.
`
`Respectfully submitted,
`
`Charles M. Lizza
`
`Exhibits
`
`cc:
`
`All Counsel (Via e-mail)
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 4 of 52 PageID: 2098
`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 4 of 52 PageID: 2098
`
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 5 of 52 PageID: 2099
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`§
`§
`§
`§
`
`REPORT AND RECOMMENDATION
`
`Case No. 2:14-CV-965-JRG-RSP
`
` LEAD CASE
`
`
`
`Before the Court are Moving Defendants’1 Motion to Dismiss Asserted Patents under
`
`§ 101 (Dkt. No. 40, “CenturyLink Motion to Dismiss”) and Defendants’ Hyatt Corporation,
`
`Hyatt Hotels Corporation (collectively, “Hyatt”) Motion to Dismiss under § 101 (Dkt. No. 45,
`
`“Hyatt Motion to Dismiss”). For the following reasons, it is recommended that the CenturyLink
`
`Motion to Dismiss (Dkt. No. 40) and the Hyatt Motion to Dismiss (Dkt. No. 45) be DENIED.
`
`At the outset, the Court observes that the Hyatt Motion to Dismiss incorporates the
`
`arguments sets forth by the Moving Defendants in the CenturyLink Motion to Dismiss. (See Dkt.
`
`No. 45 at 3) (“In support thereof, Hyatt adopts and incorporates by reference the arguments and
`
`analysis set forth in the CenturyLink Motion to Dismiss.”). Accordingly, although the Court’s
`
`analysis and conclusions in this Report and Recommendation specifically address the parties’
`
`briefing in the CenturyLink Motion to Dismiss, the ruling set forth herein applies equally to the
`
`Hyatt Motion to Dismiss in light of Hyatt’s adoption and incorporation of the Century Link
`
`Motion to Dismiss.
`
`
`1 The Moving Defendants include CenturyLink, Inc., Charter Communications, Inc., Dish
`Network Corporation, Dish Network, LLC, Hilton Worldwide Holdings Inc., Hilton Worldwide
`Inc., Holland America Line N.V., Insight Communications Company, Inc., Southwest Airlines
`Co., T-Mobile US, Inc., T-Mobile USA, Inc., Time Warner Cable Enterprises LLC, and Time
`Warner Cable Inc.
`
`PHOENIX LICENSING, L.L.C., ET AL.
`
`v.
`
`
`
`
`CENTURYLINK, INC.
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 6 of 52 PageID: 2100
`
`APPLICABLE LAW
`
`When considering a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), a
`
`court must assume that all well-pleaded facts are true, and view those facts in the light most
`
`favorable to the plaintiff. Bowlby v. City of Aberdeen, 681 F.3d 215, 218 (5th Cir. 2012). The
`
`court may consider “the complaint, any documents attached to the complaint, and any documents
`
`attached to the motion to dismiss that are central to the claim and referenced by the complaint.”
`
`Lone Star Fund V (U.S.) L.P. v. Barclays Bank PLC, 594 F.3d 383, 387 (5th Cir. 2010). The
`
`court must then decide whether those facts state a claim for relief that is plausible on its face.
`
`Bowlby, 681 F.3d at 217. “A claim has facial plausibility when the pleaded factual content allows
`
`the court to draw the reasonable inference that the defendant is liable for the misconduct
`
`alleged.” Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).
`
`Under Title 35, patentable inventions are divided into broad, statutory categories of
`
`invention. See 35 U.S.C. § 101 (“ . . . process, machine, manufacture, or composition of matter,
`
`or any new and useful improvement thereof . . . .”) So-called “abstract ideas,” however, are
`
`ineligible for patent protection under the current law. Alice Corp. Pty. v. CLS Bank Int'l, 134 S.
`
`Ct. 2347, 2352, 189 L. Ed. 2d 296 (2014). A section 101 analysis begins by identifying whether
`
`an invention fits within one of the four statutorily provided categories of patent-eligible subject
`
`matter: processes, machines, manufactures, and compositions of matter. Ultramercial, Inc. v.
`
`Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir. 2014) (citing 35 U.S.C. § 101).
`
`Section 101 contains an important implicit exception: Laws of nature, natural
`
`phenomena, and abstract ideas. Id. at 714 (citing Alice, 134 S.Ct. at 2354). First the Court must
`
`determine whether claims at issue are directed to one of these exceptions. Id. (citing Mayo
`
`Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296–97 (2012)). If
`
`the Court determines that the claims at issue are directed to one of those patent-ineligible
`
`- 2 -
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 7 of 52 PageID: 2101
`
`concepts, the Court must determine whether “an element or combination of elements that is
`
`‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon
`
`the [ineligible concept] itself.’ ” Id. (quoting Mayo, 132 S.Ct. at 1294) (alteration in original).
`
`DISCUSSION
`
`In the CenturyLink Motion to Dismiss, Defendants urge the Court to render Plaintiffs’
`
`Patents invalid under 35 U.S.C. § 101 in the context of a Rule 12(b)(6) motion to dismiss. (Mot.
`
`at 1.) Although the Court recognizes that, under certain circumstances, a determination of patent
`
`validity under section 101 may be made at the pleading stage on a motion to dismiss (see, e.g.,
`
`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)), the issue of patentable subject
`
`matter requires a legal analysis that can—and often does—“contain underlying factual issues.”
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340–41 (Fed. Cir.
`
`2013).
`
`
`
`At the outset, the Court observes that it has yet to hear argument on the parties’ disputed
`
`claim terms requiring construction. (See July 21, 2015 Docket Notice) (setting the Claim
`
`Construction Hearing for August 28, 2015). Nevertheless, the Moving Defendants argue that
`
`claim construction is not a necessary prerequisite given that the Asserted Patents “are directed to
`
`methods or systems for automating the creation of personalized marketing correspondence using
`
`generic computer components.” (See Mot. at 11) (“Accordingly, the Court does not need to
`
`address any particular claim construction issue or consider any factors outside the pleadings to
`
`resolve this legal issue.”). Although the Court agrees that this is a correct statement of the law
`
`under certain circumstances (see, e.g., Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d
`
`1266, 1273 (Fed. Cir. 2012) (“[W]e perceive no flaw in the notion that claim construction is not an
`
`inviolable prerequisite to a validity determination under § 101.”)), those circumstances do not apply
`
`- 3 -
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 8 of 52 PageID: 2102
`
`here given the nature of the Asserted Patents and the parties’ unresolved claim construction
`
`disputes.
`
`While handling the issue of section 101 eligibility at the pleading stage is permissible,
`
`those issues are often inextricably tied to claim construction. Thus, it seems a definitive ruling on
`
`eligibility before claim construction is only warranted in narrow circumstances, making such a
`
`ruling the exception rather than the rule. The need for claim construction is especially apparent
`
`here, where Defendants dispute the meaning of various terms among the various claims it
`
`purports to be representative of all Asserted Patents.
`
`
`
`Specifically, Defendants argue “[e]ach of the Asserted Patents is directed to the abstract
`
`idea of personalized marketing correspondence.” (Mot. at 15.) To support this assertion, they
`
`choose three representative claims: Claim 2 of U.S. Patent No. 5,987,434 (“the ’434 Patent”);
`
`Claim 1 of U.S. Patent No. 7,860,744 (“the ’744 Patent”); and Claim 1 of U.S. Patent No.
`
`8,234,184 (“the ’184 Patent”). (Id.) However, in Defendants’ Responsive Claim Construction
`
`Briefing, no fewer than six disputed claim terms2 appear in one or more of the three claims
`
`Defendants purport to be representative of all Asserted Patents.3
`
`
`2 (See, e.g., Dkt. No. 179 at i) (disputing the construction of “Financial Product[s]
`[and/or] [Financial] Services,” appearing in Claim 2 of the ’434 Patent and Claim 1 of the ’744
`Patent); (id.) (disputing the construction of “Response(s),” appearing in Claim 1 of the ’184
`Patent); (id.) (disputing the construction of “Client Information” / “Personal Data Related to
`the Persons,” appearing in Claim 2 of the ’434 Patent and Claim 1 of the ’744 Patent); (id.)
`(disputing the construction of “Financial Product(s) Information” / “Product-Related
`Information,” appearing in Claim 1 of the ’434 Patent); (id.) (disputing the construction of
`“Being in Response to Mass Marketing Communications” / “Being in Response to
`Communications” and “Responding to at Least One of the One Component,” appearing in
`Claim 1 of the ’184 Patent); (id.) (disputing the construction of “Select A Subset of Financial
`Products for Each of the Clients Appropriate for That Client” / “Selecting Product-Related
`Information for Each Person,” appearing in Claim 2 of the ’434 Patent).
`
`3 The six terms identified here exclude the presently disputed claim terms that were
`previously construed by this Court in Civil Action No. 2:13-cv-001081-JRG-RSP where the
`parties provided no new claim construction arguments in their claim construction briefing.
`
`- 4 -
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 9 of 52 PageID: 2103
`
`In this case, the Court cannot simply assume Defendants’ characterization of the claims
`
`and implicit positions on the meaning of claim terms are correct without a meaningful ability to
`
`examine fully what a person of ordinary skill in the art would interpret those terms to mean.
`
`Simply put, a proper analysis under Mayo would be premature and improper given the extent of
`
`the parties’ present claim construction disputes. See Mayo Collaborative Services v. Prometheus
`
`Laboratories, Inc., 132 S. Ct. 1289, 1293–94 (2012) (requiring the Court to determine whether
`
`additional elements in the claims supply an “inventive concept” that ensures the patent covers
`
`something significantly more than the patent-ineligible matter itself).
`
`The difficulty of making a substantive ruling on the validity of an issued patent in what
`
`is—in essence—a complete vacuum cannot be understated. While the claim language of some
`
`patents may be so clear that the court need only undertake a facial analysis to render it invalid at
`
`the pleading stage, that will not be the norm and is certainly not the case here.
`
`Taken on its face, Plaintiffs’ Complaint and the issued patents set forth a plausible claim
`
`for relief. Therefore, Defendants’ contention that the Complaint fails to state a claim under Rule
`
`12(b)(6) is without merit. Accordingly, the Court recommends denying CenturyLink’s Motion to
`
`Dismiss.
`
`
`
`
`
`- 5 -
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 10 of 52 PageID: 2104
`
`CONCLUSION
`
`For the foregoing reasons, IT IS RECOMMENDED that the CenturyLink Motion to
`
`Dismiss (Dkt. No. 40) and the Hyatt Motion to Dismiss (Dkt. No. 45) be DENIED.
`
`A party’s failure to file objections to the findings, conclusions, and recommendations
`
`contained in this report by NO LATER THAN AUGUST 27, 2015 shall bar that party from de
`
`novo review by the district judge of those findings, conclusions, and recommendations and,
`
`except on grounds of plain error, from appellate review of unobjected-to factual findings, and
`
`legal conclusions accepted and adopted by the district court. Fed. R. Civ. P. 72(b)(2); see
`
`Douglass v. United Servs. Auto. Ass’n, 79 F.3d 1415, 1430 (5th Cir. 1996) (en banc).
`
`
`
`- 6 -
`
`

`

`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 11 of 52 PageID: 2105
`Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 11 of 52 PageID: 2105
`
`
`
`
`EXHIBIT B
`
`EXHIBIT B
`
`

`

`
`
`Case 1:14-cv-00233-LPS Document 24 Filed 07/15/15 Page 1 of 41 PageID #: 278Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 12 of 52 PageID: 2106
`
`IN THE UNITED ST ATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`EXECW ARE, LLC,
`
`Plaintiff,
`
`v.
`
`BJ'S WHOLESALE CLUB, INC.,
`
`Defendant.
`
`EXECWARE, LLC,
`
`Plaintiff,
`
`v.
`
`BLUE NILE, INC.,
`
`Defendant.
`
`EXECWARE, LLC,
`
`Plaintiff,
`
`V.
`
`BUY.COM INC.,
`
`Defendant.
`
`EXECWARE, LLC,
`
`Plaintiff,
`
`v.
`
`DOLLAR GENERAL CORP.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 14-233-LPS
`
`Civil Action No. 14-234-LPS
`
`Civil Action No. 14-235-LPS
`
`Civil Action No. 14-236-LPS
`
`

`

`
`
`Case 1:14-cv-00233-LPS Document 24 Filed 07/15/15 Page 2 of 41 PageID #: 279Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 13 of 52 PageID: 2107
`
`EXECWARE, LLC,
`
`Plaintiff,
`
`v.
`
`NORDSTROM, INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 14-240-LPS
`
`REPORT AND RECOMMENDATION
`
`Presently pending before the Court are motions to dismiss for failure to state a claim
`
`under Rule 12(b)(6) of the Federal Rules of Civil Procedure (the "Motions"), filed by Defendants
`
`BJ's Wholesale Club, Inc., Blue Nile, Inc., Buy.com Inc., Dollar General Corp., and Nordstrom,
`
`Inc. (collectively, "Defendants"). (Civil Action No. 14-233-LPS, D.I. 8; Civil Action No. 14-
`
`234-LPS, D.I. 8; Civil Action No. 14-235-LPS, D.I. 9; Civil Action No. 14-236-LPS, D.I. 9;
`
`Civil Action No. 14-240-LPS, D.I. 8) 1 Defendants argue that PlaintiffExecware, LLC's
`
`("Execware") United States Patent No. 6,216,139 (the "'139 patent") is directed to non-patent-
`
`eligible subject matter pursuant to 35 U.S.C. § 101 ("Section 101"). (D.I. 9 at 1) For the reasons
`
`that follow, the Court recommends that Defendants' Motions be DENIED.
`
`I.
`
`BACKGROUND
`
`A.
`
`Factual Background
`
`The '139 patent is entitled "Integrated Dialog Box for Rapidly Altering Presentation of
`
`Parametric Text Data Objects on a Computer Display[.]" It describes an invention meant to
`
`Identical motions were filed in each of the above-captioned actions, and the
`relevant briefing is identical in all of the actions. Future citations will be to the record in the
`earliest-filed action, Civil Action No. 14-233-LPS, unless otherwise noted.
`
`2
`
`

`

`
`
`Case 1:14-cv-00233-LPS Document 24 Filed 07/15/15 Page 3 of 41 PageID #: 280Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 14 of 52 PageID: 2108
`
`provide a user with the ability to rapidly format and re-format databases or "text data objects,"
`
`according to the preferences of the user. ('139 Patent, at Abstract & cols. 1:6-11,2:49-52)
`
`According to the specification, database programs at the time of invention suffered from
`
`poor user interfaces, which were difficult and time consuming to use. (Id., cols. 1 :23-45; 2:6-20)
`
`These databases were designed by database operators, who were familiar with how databases
`
`work and, as such, were trained in how to manipulate the database and create tables that display
`
`the information in the database. (Id., col. 1 :23-45) But while database operators designed and
`
`constructed the databases, those databases were ultimately used for the most part by ordinary
`
`users, who were not familiar with how databases work, and who might find it difficult on their
`
`own to reformat or rearrange the tables that display the data. (Id., cols. 1 :23-45; 2:6-20) Thus, if
`
`a database user decided to reformat a view of information from the database, it might "take
`
`considerable time to produce a table reflecting the changes." (Id., col. 1 :40-42) "Even if the user
`
`is the operator of the database management system, time will be required and the user's current
`
`line of analytic reasoning may be lost." (Id., col. 1 :42-45) In other words, "while computer
`
`database management systems and spreadsheet programs with data-sorting capability ha[ d] been
`
`widely available, existing systems and programs for sorting data may not [have] adequately
`
`serve[ d] the needs of some users, especially those without specialized training or experience[.]"
`
`(Id., col. 2:6-10) The patent specification identified the problem with the then-current interfaces
`
`used to search databases: existing programs required "a series of precisely-specified steps" in
`
`order to select different sort parameters and subsets of the data for viewing-steps that could
`
`"frustrate a user interested in quickly pursuing many varying lines of thought" and that often
`
`required "substantial training, familiarity with user manuals and, in some cases, specialized
`
`3
`
`

`

`
`
`Case 1:14-cv-00233-LPS Document 24 Filed 07/15/15 Page 4 of 41 PageID #: 281Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 15 of 52 PageID: 2109
`
`personnel." (Id., col. 2:14-20)
`
`The patentee sought to solve this problem by designing a new user interface that would
`
`allow an ordinary user to "exercis[e] personal control of the format of the presentation" of the
`
`data. (Id., col. 2:25-29) This new interface would allow regular users to quickly select and sort
`
`data from a database, without necessarily having to involve a more experienced database operator
`
`or other resources. (Id., col. 2:29-65)
`
`The patent contains three independent claims (claims 1, 10, and 19), all of which relate to
`
`the same subject matter. Claim 1 claims a method involving the use of a "query dialog box" to
`
`filter and sort data from a computer database:
`
`1. A method for using a computer system to sort and display text
`data objects, comprising the steps of:
`a. imaging, on a display device controlled by the computer system,
`a query dialog box,
`wherein the query dialog box displays each of a plurality of
`parameters associated with each of the text data objects,
`forms a plurality of spaces for listing values associated with
`each displayed parameter, and further forms a space for
`selecting a sort order;
`b. designating, for each displayed parameter, a parameter value;
`c. constructing a sort order from the displayed parameters in the
`space for selecting a sort order;
`d. selecting, using the computer system, text data objects satisfying
`the designated values; and
`e. sorting, using the computer system, the selected text data objects
`according to the constructed sort order.
`
`(Id., col. 13:38-55) Claim 10 is a system claim with similar limitations, some of which are
`
`preceded with "means for." (Id., col. 14:31-50) Claim 19 claims a computer program on a
`
`memory storage device that also performs similar functions. (Id., col. 16:5-24)
`
`Each of the eight claims that depend from claim 1 adds one or more steps to the method.
`
`4
`
`

`

`
`
`Case 1:14-cv-00233-LPS Document 24 Filed 07/15/15 Page 5 of 41 PageID #: 282Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 16 of 52 PageID: 2110
`
`Claim 2 involves displaying the sorted list of text data objects that results from the query built in
`
`claim 1. (Id, col. 13:56-58) Claim 3 relates to the process of editing existing database entries
`
`after they are displayed using the interface claimed in claims 1 and 2. (Id., col. 13 :59-65) The
`
`remainder of the claims that depend from claim 1 involve adding column headings to the sorted
`
`list (claim 4), adding new text data objects (claim 5), using multiple databases (claim 6),
`
`selecting one of multiple databases (claim 7), a dialog box for associating parameters with names
`
`and text data objects (claim 8), or the step of printing the sorted text data objects (claim 9). (Id.,
`
`cols. 13:66-14:30)
`
`Dependent claims 11-18 depend from claim 10, and generally mirror dependent claims 2-
`
`9. (Id., cols. 14:51-16:4) Independent claim 19 lacks any dependent claims.
`
`B.
`
`Procedural Background
`
`Plaintiff commenced these actions on February 21, 2014. (D.I. 1) The Defendants filed
`
`the instant Motions in lieu of answering, and initial briefing was completed on the Motions on
`
`June 9, 2014. (Civil Action No. 14-235-LPS, D.I. 15)2 Subsequent to Defendants' reply brief,
`
`Plaintiff filed a motion seeking permission to file a six-page sur-reply brief ("Plaintiffs Motion
`
`to File a Sur-Reply"), (DJ. 15), which Defendants opposed, (D.I. 17).3 Defendants thereafter
`
`2
`
`The Court notes that Plaintiffs answering brief, (D .I. 10), lacks page numbers on
`all pages after page 1. The Court will therefore cite to this document by its CM/ECF page
`numbers.
`
`3
`
`The Court has reviewed Plaintiffs Motion to File a Sur-Reply and the relevant
`briefs, and has determined that the arguments offered in Defendants' reply brief were proper (and
`were not "new"), because they either expound on arguments made in Defendants' opening brief,
`or because they involve content that is directly responsive to arguments made in Plaintiffs
`answering brief. See St. Clair Intellectual Prop. Consultants, Inc. v. Samsung Elecs. Co. Ltd.,
`291 F.R.D. 75, 80 (D. Del. 2013) ("A Court may grant leave to file a sur-reply if it responds to
`new evidence, facts, or arguments.") Thus, the Court hereby DENIES Plaintiffs Motion to File
`
`5
`
`

`

`
`
`Case 1:14-cv-00233-LPS Document 24 Filed 07/15/15 Page 6 of 41 PageID #: 283Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 17 of 52 PageID: 2111
`
`submitted a notice of supplemental authority, and Plaintiff submitted a response to that notice.
`
`(D.I. 18, 20)4
`
`The motion in Civil Action No. 14-235-LPS was referred to the Court for resolution by
`
`Chief Judge Leonard P. Stark on May 28, 2014, and the other motions in the remaining cases
`
`were referred on October 15, 2014. The Court thereafter held oral argument on December 10,
`
`2014. (D.I. 23 (hereinafter, "Tr."))
`
`II.
`
`STANDARD OF REVIEW
`
`A.
`
`Standard of Review Regarding Motions to Dismiss Relating to Section 101
`Issues
`
`Pursuant to Rule 12(b)(6), a party may move to dismiss the plaintiffs complaint based on
`
`the failure to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b )( 6). The
`
`sufficiency of pleadings for non-fraud cases is governed by Federal Rule of Civil Procedure 8,
`
`which requires "a short and plain statement of the claim showing that the pleader is entitled to
`
`relief1.]" Fed. R. Civ. P. 8(a)(2). In order to survive a motion to dismiss pursuant to Rule
`
`12(b)(6), "a complaint must contain sufficient factual matter, accepted as true, to state a claim to
`
`relief that is plausible on its face[.]" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (internal
`
`quotation marks and citation omitted). In assessing the plausibility of a claim, the court must
`
`"construe the complaint in the light most favorable to the plaintiff, and determine whether, under
`
`a Sur-Reply.
`
`These filings are in violation of District of Delaware Local Rule 7. l .2(b ), because
`4
`they go beyond the "citation of subsequent authorities[,]" and instead include argument akin to
`what would be found in a brief. Though the Court will take into account relevant court decisions
`issued subsequent to the briefing in this case, the Court will not otherwise consider the content of
`these notices.
`
`6
`
`

`

`
`
`Case 1:14-cv-00233-LPS Document 24 Filed 07/15/15 Page 7 of 41 PageID #: 284Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 18 of 52 PageID: 2112
`
`any reasonable reading of the complaint, the plaintiff may be entitled to relief." Fowler v. UPMC
`
`Shadyside, 578 F.3d 203, 210 (3d Cir. 2009) (citing Phillips v. Cnty. of Allegheny, 515 F.3d 224,
`
`233 (3d Cir. 2008)).
`
`Here, the Motions filed pursuant to Rule 12(b)(6) are used to assert an affirmative
`
`defense. In that scenario, dismissal is permitted only if the well-pleaded factual allegations in the
`
`Complaint, construed in the light most favorable to the plaintiff, suffice to establish the defense.
`
`See Jones v. Bock, 549 U.S. 199, 215 (2007); Kabba} v. Google, Inc., Civ. No. 13-1522-RGA,
`
`2014 WL 1369864, at *2 n.2 (D. Del. Apr. 7, 2014); see also Genetic Techs. Ltd. v. Agilent
`
`Techs., Inc., 24 F. Supp. 3d 922, 927 (N.D. Cal. Mar. 7, 2014).
`
`Patentability under Section 101 is a "threshold inquiry" and a question oflaw. In re
`
`Bilski, 545 F.3d 943, 950-51 (Fed. Cir. 2008), ajf'd, Bilski v. Kappas, 561 U.S. 593 (2010). Yet
`
`this question oflaw is also one that "may be informed by subsidiary factual issues[.]"
`
`CyberFone Sys., LLC v. Cellco P'ship, 885 F. Supp. 2d 710, 715 (D. Del. 2012) (citing In re
`
`Comiskey, 554 F.3d 967, 976 (Fed. Cir. 2009)). 5 Some members of the United States Court of
`
`Appeals for the Federal Circuit have suggested that "any attack on an issued patent based on a
`
`challenge to the eligibility of the subject matter must be proven by clear and convincing
`
`evidence[,]" CLS Bank Int'! v. Alice Co. Pty. Ltd., 717 F.3d 1269, 1304-05 (Fed. Cir. 2013)
`
`In its answering brief, Plaintiff relies repeatedly on the Federal Circuit's opinion
`in Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013) ("Ultramercial If'). (D.I. 10
`at 4, 7, 9, 12) That opinion has since been vacated, and the Federal Circuit's subsequent opinion
`in the case reversed its prior decision in Ultramercial II. Ultramercial, Inc. v. Hulu, LLC, 772
`F.3d 709, 709-12 (Fed. Cir. 2014), cert. denied sub nom., Ultramercial, LLC v. WildTangent,
`Inc., - S.Ct. -, No. 14-1392, 2015 WL 2457913 (U.S. June 29, 2015). As such, Ultramercial
`II lacks precedential effect, and the Court will not consider it here. See TriPlay, Inc. v.
`WhatsApp Inc., Civil Action No. 13-1703-LPS, 2015 WL 1927696, at *4 n.3 (D. Del. Apr. 28,
`2015) (describing the differences between these Ultramercial decisions).
`
`7
`
`

`

`
`
`Case 1:14-cv-00233-LPS Document 24 Filed 07/15/15 Page 8 of 41 PageID #: 285Case 2:13-cv-00391-ES-JAD Document 163 Filed 08/20/15 Page 19 of 52 PageID: 2113
`
`(Rader, J., concurring-in-part and dissenting-in-part), but at least one other member of that Court
`
`has come to the opposite conclusion, see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 720-21
`
`(Fed. Cir. 2014) ("Ultramercial !If') (Mayer, J., concurring), all of which has led to some
`
`uncertainty regarding the appropriate standard of proof in Section 101 cases, see Intellectual
`
`Ventures I LLC v. Symantec Corp., C.A. No. 10-1067-LPS, C.A. No. 12-1581-LPS, 2015 WL
`
`1843528, at *5-6 (D. Del. Apr. 22, 2015) (citing cases). However, even to the extent that the
`
`"clear and convincing" standard of proof is applicable to Section 101 challenges, it would apply
`
`only to the resolution of factual disputes, and not to resolution of pure issues of law. See
`
`TriPlay, Inc. v. WhatsApp Inc., Civil Action No.