Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 1 of 44 PageID: 133
`
`Ronald Abramson
`David G. Liston
`Ari J. Jaffess
`LEWIS BAACH pllc
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`Tel: (212) 826-7001
`Attorneys for Plaintiff
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`
`
`
`
`WAG ACQUISITION, L.L.C.,
`
`
` Plaintiff,
`
`
`
`v.
`
`Case No.: 2:15-cv-3581-ES-JAD
`
`
`
`
`
`MOTION DAY: July 20, 2015
`
`
`WEBPOWER, INC., and
`DOES 1-20,
`
`
` Defendants.
`
`
`
`
`
`
`PLAINTIFF’S BRIEF IN OPPOSITION TO
`
`DEFENDANT WEBPOWER, INC.’S MOTION TO DISMISS
`
`

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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 2 of 44 PageID: 134
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`
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`TABLE OF CONTENTS
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`A. Defendants Get It Wrong Again on the Alleged “Abstract Idea” .................... 4
`
`B. Defendants’ Newly Cited § 101 Authorities Are Not Even Close on their
`Facts to WAG’s Patents and do not Support Defendants’ “Abstract Idea”
`Approach .......................................................................................................................................... 10
`
`C. Defendants Likewise Misapply Step 2 of the Mayo/Alice Analysis,
`Dissecting the Inventive Features Out of the Invention. ............................................. 12
`
`D. Numerous Recent Decisions Uphold Computer-Related Patents Under
`§ 101 and are Inconsistent with Defendants’ Analysis ................................................ 14
`
`E. Recent Cases in which Computer-Related Patent Claims Pass Step 1 of the
`Mayo/Alice Analysis .................................................................................................................... 15
`1. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-CV-4811, 2015 WL
`774655 (N.D. Ill. Feb. 24, 2015) ................................................................................. 15
`2.
`Summit 6 LLC v. HTC Corp., No. 7:14-cv-00014-O (N.D. Tex. May 28,
`2015) ..................................................................................................................................... 17
`3. Mobile-Plan-It LLC v. Facebook Inc., No. 14–cv–01709–RS, 2015 WL
`1801425 (N.D. Cal. Apr. 20, 2015) ............................................................................ 18
`4.
`Intellectual Ventures I LLC v. Capital One Fin. Corp., No. PWG-14-111,
`2015 U.S. Dist. LEXIS 62601 (D. Md. May 12, 2015) ......................................... 19
`5.
`StoneEagle Servs., Inc. v. Pay-Plus Solutions, Inc., No. 8:13–cv–2240–
`T–33MAP, 2015 WL 4042097 (M.D. Fla. July 1, 2015)..................................... 20
`
`F. Recent Cases Upholding Computer-Related Patents Under Mayo/Alice
`Step 2 ................................................................................................................................................. 21
`1. Card Verification Solutions, LLC v. Citigroup, Inc., No. 13 C 6339, 2014
`WL 4922524 (N.D. Ill. Sept. 29, 2014) ..................................................................... 25
`2. Fairfield Indus., Inc. v. Wireless Seismic, Inc., No. 4:14–CV–2972, 2014
`WL 7342525 (S.D. Tex. Dec. 23, 2014) .................................................................... 26
`3.
`Smartflash LLC v. Apple Inc., No. 6:13CV447-JRG-KNM, 2015 WL
`661174 (E.D. Tex. Feb. 13, 2015) .............................................................................. 27
`4.
`Intellectual Ventures I, LLC v. Motorola Mobility LLC, No. CV 11-908-
`SLR, 2015 WL 846532 (D. Del. Feb. 24, 2015). .................................................... 29
`5. Messaging Gateway Solutions, LLC v. Amdocs, Inc., No. CV 14-732-
`RGA, 2015 WL 1744343 (D. Del. Apr. 15, 2015) ................................................. 30
`
`G. Defendants’ Contentions on “Preemption” are Specious .................................. 32
`
`H. Additional Cases Holding § 101 Motions Premature ......................................... 34
`
`

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`
`CONCLUSION ................................................................................................................ 36
`CONCLUSION .............................................................................................................. .. 36
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`

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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 4 of 44 PageID: 136
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Alice Corp. v. CLS Bank Int’l,
`
`
`
`134 S. Ct. 2347 (2014) ............................................................................passim
`
`Bilski v. Kappos,
`
`
`
`561 U.S. 593 (2010)....................................................................................... 24
`
`Card Verification Solutions, LLC v. Citigroup, Inc.,
`
`
`
`No. 13 C 6339, 2014 WL 4922524 (N.D. Ill. Sept. 29, 2014) ................ 25-26
`
`Certified Measurement, LLC v. Centerpoint Energy Houston Elec. LLC,
`
`
`
`
`
`No. 2:14-CV-627-RSP, 2015 U.S. Dist. LEXIS 39821
`
`(E.D. Tex. Mar. 29, 2015) ............................................................................. 35
`
`Corning Glass Works v. Sumitomo Elec. USA, Inc.,
`
`
`
`868 F.2d 1251 (Fed. Cir. 1989) ....................................................................... 5
`
`Data Distrib. Techs. v. BRER Affiliates, Inc.,
`
`
`
`No. 12-4878 (JBS/KMW), 2014 WL 4162765 (D.N.J. Aug. 19, 2014) ....... 35
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`
`
`
`773 F.3d 1245 (Fed. Cir. 2014) ............................................................... 15, 24
`
`Diamond v. Diehr,
`
`
`
`450 U.S. 175 (1981)................................................................................. 12-13
`
`Dunnhumby USA, LLC v. Emnos USA Corp.,
`
`
`
`No. 1:13-cv-00399 (N.D. Ill. Jan. 30, 2015) ................................................. 35
`
`Fairfield Indus., Inc. v. Wireless Seismic, Inc.,
`
`
`
`No. 4:14-CV-2972, 2014 WL 7342525 (S.D. Tex. Dec. 23, 2014) ........ 26-27
`
`Finisar Corp. v. DirecTV Grp., Inc.,
`
`
`
`523 F.3d 1323 (Fed. Cir. 2008) ..................................................................... 14
`
`Fonar Corp. v. Gen. Elec. Co.,
`
`107 F.3d 1543 (Fed. Cir. 1997) ..................................................................... 13
`
`
`
`
`
`

`
`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 5 of 44 PageID: 137
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`
`
`
`
`
`
`Intellectual Ventures I LLC v. AT&T Mobility LLC,
`
`
`
`No. CV 12-193-LPS, 2015 WL 1393386 (D. Del. Mar. 24, 2015) ............... 13
`
`Intellectual Ventures I LLC v. Capital One Bank (USA),
`
`
`
`No. 2014-1506 (Fed. Cir. July 6, 2015) ........................................................ 24
`
`Intellectual Ventures I LLC v. Capital One Fin. Corp.,
`
`
`
`
`
`No. PWG-14-111, 2015 U.S. Dist. LEXIS 62601 (D. Md. May 12, 2015)
`
` ................................................................................................................. 19-20
`
`Intellectual Ventures I, LLC v. Motorola Mobility LLC,
`
`
`
`No. CV 11-908-SLR, 2015 WL 846532 (D. Del. Feb. 24, 2015) ................. 29
`
`Internet Patents Corp. v. Active Network, Inc.,
`
`
`
`
`
`No. 2014-1048, 2015 U.S. App. LEXIS 10536 (Fed. Cir. June 23, 2015) .......
`
` ................................................................................................................. 10-11
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`
`
`
`132 S. Ct. 1289 (2012) ..................................................................................... 2
`
`Messaging Gateway Solutions, LLC v. Amdocs, Inc.,
`
`
`
`No. CV 14-732-RGA, 2015 WL 1744343 (D. Del. Apr. 15, 2015).............. 30
`
`Microsoft Corp. v. i4i Ltd. P’ship,
`
`
`
`131 S. Ct. 2238 (2011) ............................................................................. 16-17
`
`Mobile-Plan-It LLC v. Facebook Inc.,
`
`
`
`No. 14-cv-01709-RS, 2015 WL 1801425 (N.D. Cal. Apr. 20, 2015) ..... 18-19
`
`Modern Telecom Sys. LLC v. Juno Online Servs. Inc.,
`
`
`
`
`
`No. SA CV 14-0348-DOC, 2015 WL 1240182 (C.D. Cal. Mar. 17, 2015)
`
` ................................................................................................................. 31, 35
`
`My Health, Inc. v. Lifescan, Inc.,
`
`
`
`No. 2:14-cv-683-RWS-RSP (E.D. Tex. Mar. 19, 2015) ......................... 34-35
`
`Nomadix, Inc. v. Hospitality Core Servs. LLC,
`
`No. CV 14-08256 DDP VBKX, 2015 WL 1525537 (C.D. Cal. Apr. 3, 2015)
`
`
`
` ....................................................................................................................... 35
`
`
`
`
`
`
`
`

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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 6 of 44 PageID: 138
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`
`
`
`
`
`
`OIP Techs., Inc. v. Amazon.com. Inc.,
`
`
`
`No. 2012-1696, 2015 U.S. App. LEXIS 9721 (Fed. Cir. June 11, 2015) ..... 11
`
`Presqriber, LLC v. Advanced Data Sys. Corp.,
`
`
`
`No. 14-859 (E.D. Tex. June 29, 2015) .......................................................... 34
`
`REC Software USA, Inc. v. HTC Am., Inc.,
`
`
`
`No. C14-1025 MJP, 2015 WL 1401315 (W.D. Wash. Mar. 26, 2015) ........ 35
`
`Smartflash LLC v. Apple Inc.,
`
`
`
`
`
`No. 6:13CV447-JRG-KNM, 2015 WL 661174 (E.D. Tex. Feb. 13, 2015) ......
`
` ........................................................................................................... 13, 27-28
`
`Source Search Techs., LLC v. Kayak Software Corp.,
`
`
`
`No. 11-3388, 2015 U.S. Dist. LEXIS 85266 (D.N.J. July 1, 2015) ........ 33-34
`
`StoneEagle Servs., Inc. v. Pay-Plus Solutions, Inc.,
`
`
`
`
`
`No. 8:13-CV-2240-T-33MAP, 2015 WL 518852 (M.D. Fla. Feb. 9, 2015) ....
`
` ....................................................................................................................... 35
`
`StoneEagle Servs., Inc. v. Pay-Plus Solutions, Inc.,
`
`
`
`
`
`No. 8:13-cv-2240-T-33MAP, 2015 WL 4042097 (M.D. Fla. July 1, 2015) ....
`
` ................................................................................................................. 20-21
`
`Summit 6 LLC v. HTC Corp.,
`
`
`
`No. 7:14-cv-00014-O (N.D. Tex. May 28, 2015) ................................... 17, 19
`
`Trading Techs., Int’l, Inc. v. CQG, Inc.,
`
`
`
`No. 05-CV-4811, 2015 WL 774655 (N.D. Ill. Feb. 24, 2015) ................ 15-16
`
`Typhoon Touch Techs., Inc. v. Dell, Inc.,
`
`
`
`659 F.3d 1376 (Fed. Cir. 2011) ..................................................................... 13
`
`Ultramercial, Inc. v. Hulu LLC,
`
`
`
`772 F.3d 709 (Fed. Cir. 2014) ....................................................................... 15
`
`Wireless Media Innovations, LLC v. Maher Terminals, LLC,
`
`No. 14-7004 (JLL), 2015 U.S. Dist. LEXIS 51811 (D.N.J. Apr. 20, 2015) . 12
`
`
`
`
`
`
`
`

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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 7 of 44 PageID: 139
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`Plaintiff WAG Acquisition, L.L.C. (“WAG”) submits this brief in
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`opposition to the motion to dismiss filed herein by Defendant Webpower, Inc.
`
`(“Webpower”), joining in the motion to dismiss pending in the other cases brought
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`by WAG in this Court. By the present motion, Webpower, and by extension all of
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`the Defendants in WAG’s other actions before this Court, seek to interpose a new
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`argument for invalidity of WAG’s patents for alleged unpatentable subject matter,
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`prior to the oral argument scheduled for July 29, 2015.1
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`Defendants are transparently using the present motion by Webpower as a
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`vehicle to re-brief their prior joint submission on the alleged invalidity of WAG’s
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`patents under 35 U.S.C. § 101. Alleged invalidity under § 101 is the only ground
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`substantively addressed in Webpower’s brief. This gambit also reflects that
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`Defendants view § 101 as their only hope, and recognize that their other arguments
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`(on allegedly inadequately pleaded allegations and the like), even at best, cannot
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`get them any further than an amended complaint.
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`In other words, Webpower’s motion is a “do-over” on § 101.
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`In their prior brief (D.I. 48-1 in Case No. 14-23402 at 12), Defendants
`
`argued that WAG was seeking to patent the purported abstract idea of
`
`
`1 Webpower made the present motion to dismiss well before its answering deadline
`herein, in order to join the oral argument currently scheduled for July 29 on the
`joint motion to dismiss in WAG’s other cases. See D.I. 13 in Case No. 15-3581
`(letter to the Court from Webpower’s counsel). Webpower is being represented
`herein by the same law firm that represents the defendants in a number of the other
`WAG cases.
`2 Unless otherwise specified, docket citations herein are to Case No. 14-2340.
`
`

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`2
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`“transmitting media data from a server to a media player over the Internet at a rate
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`greater than the rate played on the media player.” WAG pointed out in its
`
`responding brief, D.I. 49 (hereinafter “WAG Prior Br.”) at 25, that this formulation
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`was fundamentally in error, because if that is what WAG’s patents did, they would
`
`fail to address the very problem those patents sought to solve – regulating the flow
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`of streaming media to provide reliable and timely delivery of the media and
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`overcome the inherent shortcomings of the Internet as a data delivery medium.
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`Defendants’ new argument now seeks to take this cue, but to overextend it,
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`beyond logic and precedent, to argue that the entire “abstract idea” inquiry can
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`both begin and end at the “purpose” or “problem to be solved” by the invention,
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`without the slightest consideration of how the solution to the problem is actually
`
`implemented and claimed in the patents.
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`Defendants’ new argument fares no better than the prior one.
`
`Any proper analysis under § 101 must be grounded in the Supreme Court’s
`
`decisions in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
`
`(2012), and Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Mayo and Alice
`
`define a two-part test for patentable subject matter. “Step 1” of this analysis is to
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`“determine whether the claims at issue are directed to a patent-ineligible concept,”
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`such as an “abstract idea.” Alice, 134 S. Ct. at 2355. If so, the inquiry is still not
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`over, as a second step (“Step 2”) is then required. Under Step 2, the court must
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`“consider the elements of each claim both individually and ‘as an ordered
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`combination’ to determine whether the additional elements ‘transform the nature of
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`the claim’ into a patent-eligible application.” Id. (citations omitted). Alice further
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`

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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 9 of 44 PageID: 141
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`3
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`describes Step 2 of this analysis “as a search for an ‘inventive concept’ – i.e., an
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`element or combination of elements that is ‘sufficient to ensure that the patent in
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`practice amounts to significantly more than a patent upon the ineligible concept
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`itself.’” Id. (citation omitted).
`
`As applied by the Supreme Court in Alice, the focus of Step 1 is whether the
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`patent “claims” are “drawn to a patent-ineligible abstract idea.” 134 S. Ct. at 2352.
`
`While the Supreme Court took a high-level view of the patent claims at issue in
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`that case, its approach was clearly and expressly tethered to the patent claim
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`language. The Supreme Court in Alice was careful both to state and apply Step 1 of
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`the patent eligibility analysis with explicit reference to the “claims.” Defendants’
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`approach would shortcut the proper approach under Step 1 by focusing only on the
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`overall purpose of the claims, without considering the scope of the particular
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`implementing mechanism to achieve the purpose that the claims actually cover.
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`Defendants go on from there to repeat the same mistake they made in their
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`earlier joint brief with regard to “Step 2” of the Alice/Mayo analysis – the step that
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`asks whether the patent claim, even if it were characterized as embodying an
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`abstract idea, nevertheless reflects an additional “inventive” aspect that makes the
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`subject matter as a whole patent-eligible. The Defendants beat the same drum of
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`“routine components,” but fail again to look beyond the individual elements of the
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`claims in isolation. Using the same process of over-dissection as in their prior
`
`brief, they ignore the inventive interconnections of the individual components that
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`enable the claims to overcome the problems to be addressed. As numerous cases
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`have emphasized, both before the last set of briefs on these motions, and since that
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`4
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`time, such a process of excessive dissection, failing to give due regard to the
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`operation of the claims when viewed as a whole, is completely improper, and
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`exactly what the courts at all levels have warned against.
`
`A. Defendants Get It Wrong Again on the Alleged “Abstract Idea”
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`In their first go-round, Defendants came up with an asserted “abstract idea”
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`formulation for WAG’s claims — sending data faster than its normal playback rate
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`— a procedure that, as WAG pointed out, would not even be effective to carry out
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`the purpose of WAG’s inventions. (WAG Prior Br. at 29.)
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`A court should indeed consider the purpose of a claimed invention in order
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`to test the formulation of an alleged “abstract idea” under Step 1 of the Alice/Mayo
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`analysis. But while it is necessary that the purported “abstract idea” at least address
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`the purpose of the invention, or the problem it seeks to solve, a statement of the
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`purpose, or of the problem to be solved, is by no means sufficient to make this
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`determination without any consideration of what the claims themselves actually
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`provide.
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`Webpower’s new formulation of the “abstract idea” it says characterizes
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`WAG’s patents is simply a statement of the problem to be solved by WAG’s
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`inventions: “regulating the flow of media from a source to an end user over the
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`Internet to overcome transmission problems.” Webpower simply characterizes that
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`purpose itself as an “abstract idea” and then bypasses the remainder of Step 1 and
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`proceeds directly to Step 2.
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`While it is proper to consider the purpose of patent claims, this cannot
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`substitute for the entire analysis. Indeed, as WAG stated in its prior brief, its
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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 11 of 44 PageID: 143
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`5
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`patents concern “providing a mechanism” for regulating the flow of media. (WAG
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`Prior Br. at 28-29 (emphasis added).) WAG’s prior brief was explicit that WAG’s
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`patents could not be characterized as merely claiming the general idea of
`
`regulating Internet data transport:
`
`In viewing the claims as a whole, it is apparent that both sets of claims [in
`WAG’s “buffering” and “pull” patents] provide inventive feedback-
`regulating mechanisms to control end-to-end data flow in a system operating
`over the Internet. This is not the general idea of providing reliable and
`timely communications transport, or even the general idea of using a
`regulating mechanism, but rather specific implementations, where the
`implementations themselves are based on a nonconventional arrangement of
`components or steps.
`
`WAG Prior Br. at 37.
`
`WAG’s characterization of its patents flows from the wording of the patents’
`
`“claims.” What patents cover is of course defined by the patent claims. See
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`Corning Glass Works v. Sumitomo Elec. USA, Inc., 868 F.2d 1251, 1257 (Fed. Cir.
`
`1989) (“A claim in a patent provides the metes and bounds of the right which the
`
`patent confers”). It is evident on the face of the patent claims that what they
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`actually cover are specified technological mechanisms for regulating the flow of
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`streaming media over the Internet. The claims are plainly not drafted to cover the
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`broad concept of solving that problem itself.3
`
`
`3 Defendants have not proposed “representative claims,” and WAG would argue
`that prior to infringement contentions under the Local Patent Rules, winnowing
`down the claims to be considered would be premature. Nevertheless, the following
`claims, while not by any means exhaustive as to patent-eligible features in the
`claims at issue in this case, will serve to illustrate the points made by WAG in this
`brief:
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`

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`6
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`U.S. Pat. No. 8,364,839, Claim 1:
`1. A method for distributing streaming media via the Inter[net] to at least one user
`system of at least one user, the streaming media comprising a plurality of
`sequential media data elements for a digitally encoded audio or video program
`encoded for playback at a playback rate, the user system being assumed to have a
`user buffer for receiving media data and facilities to play back the streaming media
`at the playback rate for viewing or listening by said at least one user, from a server
`having a server buffer for buffering sequential media data elements, said method
`comprising:
`
`loading the server buffer with streaming media data elements;
`sending an initial amount of streaming media data elements to the user
`system at an initial sending rate more rapid than the playback rate; and
`thereafter, sending further streaming media data elements to the user system
`at about the playback rate and filling the server buffer or moving a data
`window through the server buffer at about the playback rate;
`
`wherein the initial amount of streaming media data elements, and the initial
`sending rate, are sufficient for the user system to begin playing back the
`streaming media while the user buffer continues to fill;
`wherein the further streaming media data elements are received at about the
`playback rate by the user system if there are no interruptions in the
`transmission of streaming media data elements between the server and the
`user system; and
`wherein said method further comprises detecting if any interruptions in the
`transmission of streaming media data elements between the server and the
`user system have occurred such that streaming media data elements that
`have been sent by the server to the user system have been delayed or not
`received by the user system.
`
`U.S. Patent No. 8,122,141, Claim 1:
`A method for distributing streaming media via a data communications medium
`such as the Internet to at least one user system of at least one user, the streaming
`media comprising a plurality of sequential media data elements for a digitally
`encoded audio or video program, comprising
`providing a server programmed to receive requests from the user system for
`media data elements corresponding to specified serial identifiers and to send
`media data elements to the user system responsive to said requests, at a rate
`more rapid than the rate at which said streaming media is played back by a
`
`
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`

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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 13 of 44 PageID: 145
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`
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`7
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`
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`While Alice did not purport “to delimit the precise contours of the “abstract
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`ideas” category” (134 S. Ct. at 2357), the decision did specifically address how the
`
`Supreme Court found the patent at issue in that case to be characterized by an
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`abstract idea. The Supreme Court’s approach certainly was not simply that of
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`identifying the “purpose” of the patents, divorced from the claim language.
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`Rather, the Court stated that it first looked to see whether the patent claims
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`were “directed” or “drawn” to a “patent-ineligible concept,” such as an abstract
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`idea. 134 S. Ct. at 2355. The Court in Alice reached the conclusion that the patent
`
`claims in question were drawn to an abstract idea based on the finding that “[o]n
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`their face, the claims before us are drawn to the concept of intermediated
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`settlement, i.e., the use of a third party to mitigate settlement risk.” Id. at 2356
`
`(emphasis added).
`
`It is inescapable that at Step 1 of the Alice/Mayo analysis, the court must
`
`consider what it is that the claims themselves are “drawn” (i.e., drafted) to, and not
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`just shortcut the analysis by considering only the problem that the claimed
`
`implementation seeks to address. To do only the latter necessarily raises the level
`
`
`user; and
`providing a machine-readable medium accessible to said user, on which
`there has been recorded software for implementing a media player for
`receiving and playing the streaming media on said user system, said
`software being programmed to cause the media player to maintain a record
`of the identifier of the last data element that has been received; and to
`transmit requests to the server to send one or more data elements, specifying
`the identifiers of the data elements, as said media player requires in order to
`maintain a sufficient number of media data elements in the media player for
`uninterrupted playback.
`
`
`
`

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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 14 of 44 PageID: 146
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`
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`8
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`
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`of abstraction over and above what the patent claims themselves expressly specify,
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`inherently biasing the analysis. This is not what the Supreme Court prescribed, but
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`rather an improper gloss on the Supreme Court’s analysis.
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`The Court should therefore begin the “Step 1” analysis with the same
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`inquiry posed by the Supreme Court itself in Alice: that is, are the present claims,
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`“on their face,” “drawn to” a “patent-ineligible abstract idea?”
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`On their face, it is very much evident that the patent claims here are not
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`drawn to the mere concept of regulated data transmission over the Internet. Rather,
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`the claims on their face are drawn to specific mechanisms that operate to achieve
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`that objective. These are not claims that simply recite the desired result of
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`regulated data flow and then just say to “do it with a computer.” Rather, the claims
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`enumerate specific mechanisms for holding, transferring, and transforming data,
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`pacing data transfer, and detecting flow irregularities that operate together in
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`practice to transmit data in a regulated manner.
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`The present patent claims are clearly drawn to certain specific means that
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`WAG invented, by which the desired result may be achieved. They are not drawn
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`to the result itself or to any and all mechanisms that have the same functional
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`result.
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`Defendants try to turn the former (specific means or mechanisms) into the
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`latter (claim for the entire result), by improperly rechanneling the Step 1 inquiry
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`solely to the purpose to be achieved by the claims, to the exclusion of what is
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`actually covered by the literal claim language, effectively reading the word
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`“claims” out of the Step 1 test.
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`Under Defendants’ approach, every patent in existence (computer-
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`implemented or not) would be vulnerable under Step 1 of Alice. It is hard to
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`conceive of a single invention — whether for software or otherwise — for which a
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`statement of the problem to be solved would not amount to an abstraction.4 A test
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`that would fail everything — as Defendants’ test surely would — could not be
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`what the Supreme Court intended.
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`To the contrary, the Court in Alice, mindful that innovation is a key driver of
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`this country’s economy, remarked that: “we tread carefully in construing this
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`exclusionary principle lest it swallow all of patent law.” 134 S. Ct. at 2354.
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`Defendants’ focus on an invention’s “purpose,” to the exclusion of considering the
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`implementation prescribed by its actual claims, would do just that.
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`The Supreme Court made clear that the law must make provision to allow
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`computer-implemented patents. Alice, 134 S. Ct. at 2359 (“many computer-
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`implemented claims are formally addressed to patent-eligible subject matter”). As
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`addressed in WAG’s prior brief, there is no computer-implemented patent that
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`could survive Defendants’ ratcheted-up analysis.
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`4 For example, under Defendants’ analysis, Edison couldn’t have patented the light
`bulb (U.S. Patent No. 223,898). As for Step 1, the purpose of providing artificial
`lighting is an abstract idea. In Step 2, Defendants would characterize the technique
`of heating the bulb filament until it glows as something that was known since the
`invention of fire, and the fact that a vacuum inside the bulb would keep the heated
`filament from burning, as a patent-ineligible natural phenomenon.
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`In sum, when a patent claim spells out, and is limited to, a specified
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`mechanism for performing a function, it is erroneous, in applying Step 1 to the
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`claim, to disregard the claimed mechanism and consider only the claim’s function
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`or purpose. Defendants’ approach, substituting the ends for the means, would lead
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`to this error. When Step 1 is properly applied, focusing on the actual claim
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`language, it can be seen that WAG’s claims easily pass this test.
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`B. Defendants’ Newly Cited § 101 Authorities Are Not Even Close on their
`Facts to WAG’s Patents and do not Support Defendants’ “Abstract Idea”
`Approach
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`Plaintiff’s prior brief already distinguished the § 101 cases cited by
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`Defendants as of the December 2014 date of the prior brief. WAG Prior Br. at 22-
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`43. Webpower’s current update adds nothing different. Webpower has cited a
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`handful of recent cases, which are all readily distinguishable, and has omitted the
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`groundswell of cases that go against the Defendants’ strained § 101 arguments.
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`For example, Webpower’s brief relies extensively on Internet Patents Corp.
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`v. Active Network, Inc., No. 2014-1048, 2015 U.S. App. LEXIS 10536 (Fed. Cir.
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`June 23, 2015). Internet Patents is not only distinguishable, it actually makes
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`Plaintiff’s point on when an abstract idea is actually claimed by a patent. Internet
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`Patents involved a claim whose point of novelty was the entirely functional
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`characteristic of “maintaining” the user’s “state,” e.g., data the user has entered on
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`a web page form, between two discrete accesses to the web page. In holding that
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`the patent was drawn to an abstract idea, the Federal Circuit noted the broad
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`functional nature of what was claimed by the patent, which, unlike the claims at
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`issue here, was not limited to how the claimed function was carried out:
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`As the district court observed, claim 1 contains no restriction on how the
`result is accomplished. The mechanism for maintaining the state is not
`described, although this is stated to be the essential innovation. The court
`concluded that the claim is directed to the idea itself—the abstract idea of
`avoiding loss of data. IPC's proposed interpretation of "maintaining state"
`describes the effect or result dissociated from any method by which
`maintaining the state is accomplished upon the activation of an icon.
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`Id. at *13 (emphasis added). Whereas the claims in Internet Patents “contain[] no
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`restriction on how the [claimed] result is accomplished,” WAG’s patent claims do.
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`On their face, the claims of WAG’s patents are not for a result disassociated from
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`the method by which the result is accomplished. The claims each specify a distinct
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`technological mechanism to solve the stated problem. Unlike the claims in Internet
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`Patents, WAG’s patents do not claim any and all implementations that perform the
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`function of regulating the flow of streaming media data over the Internet, without
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`stating any specific mechanism for doing so.
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`OIP Techs., Inc. v. Amazon.com. Inc., No. 2012-1696, 2015 U.S. App.
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`LEXIS 9721 (Fed. Cir. June 11, 2015), which Defendants also rely on, concerns a
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`business method for pricing products for sale, involving only the everyday uses of
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`a computer to facilitate an ancient and time-worn business practice.
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`Defendants argue that WAG’s claimed operations for data transmission are
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`no different in character than the high-level operations of sending, storing, etc.,
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`business information, as found in OIP, wherein the computer operations are no
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`more specific than general directives to “communicate,” “gather statistics,”
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`Case 2:15-cv-03581-ES-JAD Document 16 Filed 07/06/15 Page 18 of 44 PageID: 150
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`“automatically determine,” and “send messages.” Defendants completely overlook
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`the specifi