IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 11-318-LPS
`
`JURY TRIAL DEMANDED
`
`)))))))))))
`
`WALKER DIGITAL, LLC,
`
`Plaintiff,
`
`v.
`
`LINKEDIN CORPORATION, BUCKAROO
`ACQUISITION CORP., INC., AND GOOGLE
`INC.,
`
`Defendants.
`
`MEMORANDUM OF LAW IN SUPPORT OF DEFENDANTS
`LINKEDIN CORPORATION AND GOOGLE INC.’S
`MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
`BASED ON CLAIMING UNPATENTABLE SUBJECT MATTER
`
`Richard L. Horwitz (#2246)
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza 6th Floor
`1313 N. Market Street
`Wilmington, DE 19899
`Tel: (302) 984-6000
`rhorwitz@potteranderson.com
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Defendants LinkedIn Corporation
`and Google Inc.
`
`OF COUNSEL:
`
`Jeannine Yoo Sano
`Eric Lancaster
`WHITE & CASE LLP
`
`Kevin X. McGann
`Jason Liang Xu
`James Gagen
`WHITE & CASE LLP
`
`Attorneys for Defendant Google Inc.
`
`Nicholas A. Brown
`Stephen M. Ullmer
`GREENBERG TRAURIG, LLP
`
`Daralyn J. Durie
`Ryan M. Kent
`Eugene Novikov
`DURIE TANGRI LLP
`
`Attorneys for Defendant LinkedIn
`Corporation
`
`Dated: August 27, 2012
`1072223 / (36776/36851)
`
`

`

`TABLE OF CONTENTS
`
`PAGE
`
`SUMMARY OF ARGUMENT .......................................................................................................1
`
`STATEMENT OF THE CASE........................................................................................................1
`
`STATEMENT OF FACTS ..............................................................................................................2
`
`ARGUMENT...................................................................................................................................4
`
`I.
`
`II.
`
`CONTEXT OF MOTION AND APPLICABLE LEGAL STANDARD............................4
`
`THE ASSERTED METHOD CLAIMS OF THE ’270 AND ’272 PATENTS ARE
`INVALID.............................................................................................................................5
`
`A.
`
`B.
`
`The ’270 Method Claims Seek Ownership of an Abstract Idea, However
`Implemented, and Are Ineligible for Patent Protection ...........................................5
`
`The ’272 Method Claims Also Seek Ownership of an Abstract Idea,
`However Implemented...........................................................................................11
`
`III.
`
`THE SYSTEM CLAIMS DO NOT ADD ANY MEANINGFUL STRUCTURAL
`LIMITATION TO THE UNPATENTABLE METHOD CLAIMS AND ARE
`LIKEWISE INVALID.......................................................................................................16
`
`CONCLUSION..............................................................................................................................19
`
`-i-
`
`

`

`CASES
`
`TABLE OF AUTHORITIES
`
`Advanced Software Design Corp. v. Fiserv Inc.,
`641 F.3d 1368 (Fed. Cir. 2011)................................................................................................14
`
`Pages
`
`Bancorp Serv. v. Sun Life Assur. Co. of Canada,
`No. 2011-1467, 2012 WL 3037176 (Fed. Cir. July 26, 2012).......................................9, 10, 17
`
`Bilski v. Kappos,
`130 S. Ct. 3218 (2010)..................................................................................................... passim
`
`CLS Bank v. Alice PTY,
`685 F.3d 1341 (Fed. Cir. 2012)............................................................................................4, 10
`
`CyberFone Sys., LLC v. Cellco P’ship,
`C.A. No. 1:11-cv-827-SLR, Memorandum Opinion at 13 (D. Del. Aug. 16, 2012).................9
`
`Cybersource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011)........................................................................................ passim
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012)........................................................................................4, 9, 13
`
`Digital-Vending Servs. v. The Univ. of Phoenix,
`672 F.3d 1270 (Fed. Cir. 2012)................................................................................................18
`
`Fort Props. v. Am. Master Lease,
`671 F.3d 1317 (Fed. Cir. 2012)................................................................................................10
`
`FuzzySharp Techs., Inc. v. 3DLabs Inc.,
`No. 2011-1160 (Fed. Cir. Nov. 4, 2011)..................................................................................18
`
`Gottschalk v. Benson,
`409 U.S. 63 (1972)...........................................................................................................7, 8, 15
`
`In re Abele,
`684 F.2d 902 (C.C.P.A. 1982) .................................................................................................17
`
`In re Bilski,
`545 F.3d 943 (Fed. Cir. 2008) (en banc) aff’d sub nom. Bilski v. Kappos,
`130 S. Ct. 3218 (2010)...............................................................................................................4
`
`In re Comiskey,
`554 F.3d 967 (Fed. Cir. 2009)....................................................................................................4
`
`-ii-
`
`

`

`Mayo Collaborative Servs. v. Prometheus Labs.,
`132 S. Ct. 1289 (2012)..................................................................................................... passim
`
`MySpace, Inc. v. GraphOn Corp.,
`672 F.3d 1250 (Fed. Cir. 2012)............................................................................................4, 13
`
`Parker v. Flook,
`437 U.S. 584 (1978)...........................................................................................................14, 15
`
`SmartGene, Inc. v. Advanced Biological Labs., SA,
`No. 08–00642 (BAH), 2012 WL 1059611 (D.D.C. Mar. 30, 2012)..........................................4
`
`STATUTES
`
`35 U.S.C. § 101...................................................................................................................... passim
`
`OTHER AUTHORITIES
`
`Webster’s Dictionary
`http://www.merriam-webster.com/dictionary/database...........................................................13
`
`-iii-
`
`

`

`SUMMARY OF ARGUMENT
`
`Patent law protects only concrete and tangible inventions: “processes, machines, articles
`
`of manufacture, and compositions of matter,” 35 U.S.C. § 101, as opposed to abstract ideas or
`
`concepts. See Bilski v. Kappos, 130 S. Ct. 3218 (2010). The patent claims asserted in this case
`
`cover nothing more than such an unpatentable abstract idea, not limited to any specific machine,
`
`and do not transform an article to another state or thing. All that these claims cover is the
`
`concept of exchanging information between anonymous parties regardless of where or how that
`
`concept is implemented. Although some of the claims may be read to require that the exchange
`
`of information involve “a computer system,” neither the elements of that computer system nor
`
`the details of how it is programmed are specified in the patent claims. Because the claimed
`
`subject matter of the asserted claims is not patent eligible, the asserted patent claims are invalid
`
`as a matter of law.
`
`STATEMENT OF THE CASE
`
`Plaintiff Walker Digital, LLC filed this case on April 11, 2011. See D.I. 1. The initial
`
`case management conference was held on November 10, 2011. See D.I. 52. The parties
`
`submitted their respective opening claim construction briefs on June 22, 2012, see D.I. 104, D.I.
`
`105, their tutorials on June 22, 2012 and June 25, 2012, see D.I. 102, D.I. 107, and their
`
`responsive claim construction briefs on July 20, 2012, see D.I. 110, D.I. 112. The claim
`
`construction hearing is scheduled to proceed on August 30, 2012. See D.I. 52 ¶ 14. No trial date
`
`has been set at this time.1 Id. ¶ 20.
`
`1 The last day to file dispositive motions on other grounds is March 1, 2013. See D.I. 52 ¶ 15.
`
`

`

`STATEMENT OF FACTS
`
`Walker Digital asserts claims 1, 2, 5, 10, 11, 23, 24, 27, 32 and 33 of U.S. Patent No.
`
`5,884,270 (“’270 patent”) and claims 1, 2, 3, 4, 9, 10, 11, 19, 27, 28, 31, 32, and 65 of U.S.
`
`Patent No. 5,884,272 (“’272 patent”). See D.I. 104 Ex. 3 at 9; D.I. 105 at 1 n.1. Both patents
`
`were filed on the same day and issued on the same day to the same group of named inventors
`
`based on virtually identical specifications. See D.I. 100-1, 100-2.
`
`Independent claim 1 of the ’270 patent provides:
`
`1. A method for operating a computer system to facilitate an exchange of
`identities between two anonymous parties, comprising the steps of:
`
`receiving from a first party first data including an identity of said first party;
`
`receiving from said first party at least two first-party rules for releasing said first
`data including a rule for releasing said identity of said first party;
`
`receiving from a second party a search request comprising at least one search
`criterion;
`
`receiving from said second party second data including an identity of said second
`party;
`
`receiving from said second party at least two second-party rules for releasing said
`second party data including a rule for releasing said identity of said second party;
`
`processing said search request to determine if said first data satisfies said search
`criterion; and
`
`if said first data satisfies said search criterion, then
`
`exchanging said first and second data, except said identities of said first and
`second parties, between said first and second parties in accordance with said first-
`party and second-party rules,
`
`after said exchanging step, upon satisfying said first-party rule for releasing said
`identity of said first party, transmitting said identity of said first party to said
`second party, and
`
`after said exchanging step, upon satisfying said second-party rule for releasing
`said identity of said second party, transmitting said identity of said second party to
`said first party.
`
`See ’270 patent claim 1, D.I. 100-1. Walker Digital asserts one other independent claim of the
`
`-2-
`
`

`

`’270 patent, claim 23, which consists almost entirely of the same process steps recited in claim 1.
`
`See D.I. 104 Ex. 3 at 9.
`
`Independent claim 1 of the ’272 patent provides:
`
`1. A method for facilitating an exchange of information between a first party and
`a second party, comprising the steps of:
`
`receiving first party information data from said first party;
`
`storing said first party information data in a secure database;
`
`receiving, from said first party, at least one first party rule for releasing said first
`party information data;
`
`storing said at leas[t] one first party rule;
`
`receiving, from said second party, a search request to the secure database, said
`search request comprising at least one search criterion to be satisfied;
`
`determining second party data relevant to said at least one first party rule;
`
`receiving, from said second party, at least one second party rule for releasing said
`second party data;
`
`processing said search request from said second party to determine if said first
`party information data satisfies said at least one search criterion;
`
`if said first party information data satisfies said at least one search criterion, then:
`
`communicating to said second party that said at least one search criterion has been
`satisfied;
`
`receiving a request from said second party for said first party information data;
`
`releasing said second party data pursuant to said second party rule;
`
`determining, based on said second party data, whether said at least one first party
`rule has been satisfied; and
`
`if said at least one first party rule has been satisfied, providing, to said second
`party, said first party information data for which said at least one first party rule
`has been satisfied.
`
`See ’272 patent claim 1, D.I. 100-2. Walker Digital asserts one other independent claim of the
`
`’272 patent, claim 65, which again consists almost entirely of the same process steps recited in
`
`claim 1. See D.I. 104 Ex. 3 at 9.
`
`-3-
`
`

`

`ARGUMENT
`
`I.
`
`CONTEXT OF MOTION AND APPLICABLE LEGAL STANDARD
`
`Patentable subject matter is a “threshold test” that determines whether the patent claims
`
`are eligible for patent protection. See Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010).
`
`Accordingly, resolving this issue before any inquiry into whether the claimed invention is novel,
`
`nonobvious, or sufficiently described makes sense.2 See SmartGene, Inc. v. Advanced Biological
`
`Labs., SA, No. 08–00642 (BAH), 2012 WL 1059611, at *7 (D.D.C. Mar. 30, 2012) (noting Mayo
`
`Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (2012), advises section 101 issues to
`
`be resolved first).
`
`Because patentable subject matter is a pure question of law measured by the four corners
`
`of the patent that is not dependent on any subsidiary factual determinations, this issue is
`
`appropriate for disposition on summary judgment at this time. See In re Bilski, 545 F.3d 943,
`
`951 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski v. Kappos, 130 S. Ct. 3218 (2010); In re
`
`Comiskey, 554 F.3d 967, 975 (Fed. Cir. 2009); Cybersource Corp. v. Retail Decisions, Inc., 654
`
`F.3d 1366, 1369 (Fed. Cir. 2011) (affirming grant of summary judgment); Dealertrack, Inc. v.
`
`Huber, 674 F.3d 1315, 1334 (Fed. Cir. 2012) (same).
`
`2 Several weeks before the Supreme Court’s decision in Mayo issued, a divided panel of the
`Federal Circuit had held that where a section 102 issue was fully presented and appropriate for
`decision as a question of law, deciding the section 102 issue first might be preferable in order to
`avoid ruling on a patentable subject matter issue not presented below. See MySpace, Inc. v.
`GraphOn Corp., 672 F.3d 1250 (Fed. Cir. 2012). The Federal Circuit made clear that this
`sequence was not mandatory and that district courts had broad discretion and authority to address
`the order of litigation issues. Id. at 1261. Judge Mayer’s dissent explained that section 101 is a
`threshold issue that must be decided before other invalidity issues can be reached, even where
`the patentability issue was not resolved in the district court. Id. at 1264 (Mayer, J., dissenting).
`In Mayo, the Supreme Court expressed the concern that focusing on section 102 first would
`render section 101 “a dead letter.” Mayo, 132 S. Ct. at 1303. The district court in SmartGene
`therefore concluded that Mayo overruled MySpace and that Mayo requires that patentable subject
`matter be addressed first. See SmartGene, 2012 WL 1059611, at *7. In any event, the Federal
`Circuit did not hold in MySpace or CLS Bank v. Alice PTY, 685 F.3d 1341 (Fed. Cir. 2012), that
`other issues pertaining to invalidity must be decided first, merely that section 101 was not a
`jurisdictional matter that was required to be resolved first.
`
`-4-
`
`

`

`II.
`
`THE ASSERTED METHOD CLAIMS OF THE ’270 AND ’272 PATENTS ARE
`INVALID
`
`A.
`
`The ’270 Method Claims Seek Ownership of an Abstract Idea, However
`Implemented, and Are Ineligible for Patent Protection
`
`The asserted method claims 1, 2, 5, 10, and 11 of the ’270 patent describe an idea for
`
`exchanging information between anonymous parties. See D.I. 100-1. In this basic idea, two
`
`parties (call them Alice and Bob) provide information about themselves, including their
`
`identities, to a mutually-trusted third party, Carol. Alice and Bob both tell Carol not to release
`
`this information to any other parties unless they meet the criteria set respectively by Alice and
`
`Bob. For instance, Alice wants to submit an anonymous application for a job. Alice provides
`
`her resume that includes her name and sales experience to Carol, with instructions to pass along
`
`her experience to any company searching for an employee but not to provide Alice’s name
`
`unless the company meets Alice’s minimum salary requirement of $75,000. Bob provides to
`
`Carol information about a sensitive job opening he has, including the name of his company and
`
`the fact that it includes a salary amount of $100,000, with instructions to disclose the salary
`
`information to any applicant with sales experience but not to provide the company’s name unless
`
`the applicant has more than five years of sales experience. Carol first provides Alice with Bob’s
`
`offered salary and provides Bob with Alice’s experience without disclosing their names to each
`
`other. Only after Carol determines that Bob’s salary offer satisfies the minimum $75,000
`
`amount and that Alice has more than five years of sales experience would Carol disclose each
`
`person’s name to the other.
`
`In this example, Alice, Bob, and Carol perform every step of claim 1, whether or not they
`
`use a computer or engage in any computer programming:
`
`
`
`“receiving from a first party data including
`an identity of said first party.”
`
` Alice tells Carol, the trusted third party, her
`name and that she has a college degree and
`
`-5-
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`8 years of sales experience.
`
`“receiving from said first party at least two
`first-party rules for releasing said first data
`including a rule for releasing the identity of
`said first party.”
`
` Alice tells Carol that she can release her
`sales experience to any company with an
`open sales position but cannot release her
`name unless the company will offer more
`than $75,000 in salary.
`
`“receiving from a second party a search
`request comprising at least one search
`criterion.”
`
` Bob explains to Carol that his company is
`looking for an employee with more than 5
`years of sales experience.
`
`“receiving from said second party second
`data including an identity of said second
`party.”
`
` Bob also gives Carol his company’s name
`and that the company is willing to pay
`$100,000 in salary.
`
`“receiving from said second party at least
`two second-party rules for releasing said
`second party data including a rule for
`releasing said identity of said second
`party.”
`
` Bob tells Carol that she may release
`information about the available position to
`anyone that has a college degree but not to
`release his company’s name unless the
`person has more than 5 years of sales
`experience.
`
`“processing said search request to
`determine if said first data satisfies said
`search criterion.”
`
` Carol searches through the information she
`holds to determine candidates having more
`than 5 years of sales experience.
`
`“if said first data satisfies said search
`criterion, then exchanging said first and
`second data, except said identities of said
`first and second parties, between said first
`and second parties in accordance with said
`first-party and second-party rules.”
`
`“after said exchanging step, upon satisfying
`said first-party rule for releasing said
`identity of said first party, transmitting said
`identity of said first party to said second
`party, and after said exchanging step, upon
`satisfying said second-party rule for
`releasing said identity of said second party,
`transmitting said identity of said second
`party to said first party.”
`
` Carol determines that Alice has more than
`5 years of sales experience, and shares
`Alice’s qualifications with Bob, and Bob’s
`salary offer with Alice according to each
`person’s instructions.
`
` After Carol determines that Alice has more
`than 5 years of sales experience and that
`Bob is offering a salary above $75,000, she
`introduces Alice and Bob to one another by
`name according to each person’s
`instructions.
`
`See ’270 patent claim 1, D.I. 100-1. The steps of the dependent claims are met by Alice, Bob,
`
`-6-
`
`

`

`and Carol without a computer just as easily.3
`
`The idea for anonymous information exchange described in the asserted claims is not
`
`protectable by patent law. This type of abstract idea is not a machine, a manufactured product,
`
`or a new chemical. 35 U.S.C. § 101. Nor is it a patent-eligible “process,” as patent law defines
`
`that term, any more than writing a brief is a “process” by virtue of the fact that it involves a
`
`series of steps. Supreme Court and Federal Circuit case law requires that in order to constitute
`
`eligible subject matter under section 101, a “process” must be more than simply an abstract idea.
`
`Bilski v. Kappos, 130 S. Ct. at 3229-30. A concept standing alone is not patentable; only the
`
`specific implementation of that concept in a particular machine or its use in a particular real-
`
`world implementation is the proper subject of patent protection. Id. (whether claimed invention
`
`is “tied to a machine or transforms an article into a different state or thing” is “a useful and
`
`important clue” to whether it is patentable subject matter).
`
`Furthermore, the fact that the concept itself is narrow or specific is inadequate to render
`
`an abstract idea patent-eligible. To illustrate, both the specific algorithm recited in claim 4 of the
`
`patent at issue in Bilski and the algorithm at issue in Gottschalk v. Benson, 409 U.S. 63 (1972),
`
`3
`2. “receiving at least one first-party rule before receiving said search request and storing
`at least one first-party rule”: Carol receives Alice’s instructions about when to disclose Alice’s
`work experience or identity before Carol receives Bob’s search for a new employee. Carol stores
`Alice’s instructions in a filing cabinet.
`5. “receiving at least one second-party rule before receiving such search request and
`storing said at least one second-party rule”: Carol receives Bob’s instructions about when to
`disclose his salary offer or identity before Bob’s search for a new employee begins. Carol stores
`Bob’s instructions in a filing cabinet.
`10. “wherein at least one of said first-party rules is conditional on the content of said
`second data”: Alice’s rule for disclosing her identity depends on the salary offered by a
`company, a condition that is met by the salary information provided by Bob to Carol.
`11. “wherein at least one of said second-party rules is conditional on the content of said
`first data”: Bob will not release his company’s name unless Alice has more than five years of
`sales experience, a condition that is met by the work experience information provided by Alice to
`Carol.
`
`-7-
`
`

`

`are far more limited and specific than anything set forth in claims 1, 2, 5, 10, or 11 of the ’270
`
`patent. Claim 4 of Bilski’s patent application, for instance, provides: “The method of claim 3
`
`wherein the fixed price for the consumer transaction is determined by the relationship: Fixed Bill
`
`Price = Fi + [(Ci + Ti + LD1) x (α + βE(Wi)] wherein, Fi = fixed costs in period i; Ci = variable
`
`costs in period i; Ti = variable long distance transportation costs in period i; LDi = variable local
`
`delivery costs in period i; E(Wi) = estimated location-specific weather indicator in period i; and α
`
`and β are constants.”4 These algorithms were nonetheless held unpatentable. Indeed, one
`
`“clear” indicator that a claim is directed to “unpatentable mental processes” is where all of the
`
`claim’s steps “can be performed in the human mind, or by a human using a pen and paper.”
`
`Cybersource, 654 F.3d at 1372, 1373 (“a method that can be performed by human thought alone
`
`is merely an abstract idea and is not patent-eligible under § 101.”). As the example of Alice,
`
`Bob, and Carol demonstrates, all of the steps recited in the asserted method claims of the ’270
`
`patent may be performed without ever using a physical structure.5 This fact alone is sufficient to
`
`warrant summary judgment of invalidity. Id. at 1372.
`
`Even if the asserted method claims could be read to require a computer implementation,
`
`they would still be invalid. Adding a machine implementation limitation as an afterthought
`
`4 Claim 8 of the patent in Benson provides: “The method of converting signals from binary
`coded decimal form into binary which comprises the steps of:
`(1) storing the binary coded decimal signals in a reentrant shift register,
`(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second
`position of said register,
`(3) masking out said binary ‘1’ in said second position of said register,
`(4) adding a binary ‘1’ to the first position of said register,
`(5) shifting the signals to the left by two positions,
`(6) adding a ‘1’ to said first position, and
`(7) shifting the signals to the right by at least three positions in preparation for a succeeding
`binary ‘1’ in the second position of said register.”
`5 The only reference to an implementation outside of the human mind in the asserted method
`claims of the ’270 patent is found in the preamble, which recites that the method involves
`“operating a computer system.” Walker Digital contends that this preamble is not limiting. See
`D.I. 100 at 2; see also D.I. 105 at 6.
`
`-8-
`
`

`

`cannot salvage a claim directed to a purely mental concept: “simply appending conventional
`
`steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract
`
`ideas cannot make those laws, phenomena, and ideas patentable.” Mayo, 132 S. Ct. at 1292;
`
`accord Bancorp Serv. v. Sun Life Assur. Co. of Canada, No. 2011-1467, 2012 WL 3037176, at
`
`*11-12 (Fed. Cir. July 26, 2012) (“Using a computer to accelerate an ineligible mental process
`
`does not make that process patent-eligible.”). The implementation itself, not just the concept,
`
`must be specific and inventive. Mayo, 132 S. Ct. at 1294. Claims 1, 2, 5, 10, and 11 of the ’270
`
`patent all lack any specific implementation details. See D.I. 100-1. see also D.I. 107. The
`
`computer system referenced in the preamble (and only in the preamble) is any general-purpose
`
`computer that performs the listed functions, regardless of what type of hardware is used or how
`
`such hardware may be programmed. See id.
`
`The Federal Circuit has repeatedly confirmed that this type of abstract concept cannot be
`
`transformed into patentable subject matter by virtue of specifying that the concept be performed
`
`using a computer. See, e.g., Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1332-33 (Fed. Cir. 2012)
`
`(“computer-aided method” containing generic references to computer devices such as “remote
`
`application entry and display device” and “terminal device” not limited to any particular pieces
`
`of equipment rejected as unpatentable). To be patentable, the claims themselves must specify a
`
`level of involvement or detail with the machine itself. See CyberFone Sys., LLC v. Cellco
`
`P’ship, C.A. No. 1:11-cv-827-SLR, Memorandum Opinion at 13 (D. Del. Aug. 16, 2012)
`
`(general purpose computer generically performing calculations does not constitute patentable
`
`subject matter).6
`
`To the extent the asserted method claims in this case may be deemed to incorporate the
`
`6
`
`Attached as Exhibit C to Motion for Leave filed herewith.
`
`-9-
`
`

`

`use of the computer, the computer would only make a process that may be performed manually
`
`faster. See Bancorp, 2012 WL 3037176, at *11 (rejecting claim to computer-implemented idea
`
`because “the computer simply performs more efficiently what could otherwise be accomplished
`
`manually”); CLS Bank v. Alice PTY, 685 F.3d at 1351(distinguishing between “the mere
`
`implementation on a computer of an otherwise-ineligible abstract idea” and cases where
`
`“addition of a machine impose[s] a meaningful limit on the scope of a claim, and play[s] a
`
`significant part in permitting the claimed method to be performed, rather than function[ing]
`
`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”). At most, the preamble
`
`recites that the method involves “operating a computer system.” Even if Walker Digital were to
`
`contend that the preamble was limiting, cf. D.I. 100 at 2, D.I. 105 at 6, stating that the claimed
`
`method involves a computer system provides no meaningful limit on the scope of a claim. See
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`Fort Props. v. Am. Master Lease, 671 F.3d 1317, 1323 (Fed. Cir. 2012) (claims held
`
`unpatentable where “computer limitation … does not ‘play a significant part in permitting the
`
`claimed method to be performed.’”).
`
`The prohibition on patenting ideas affirmed by the Supreme Court in Bilski would be
`
`meaningless if that prohibition could be evaded by reciting that the claimed idea is to be
`
`implemented using a “computer system.” Nothing in Bilski suggests that the claimed hedging
`
`process would have been patentable had the claim added that the algorithm was to be executed
`
`on a general-purpose computer. In reality, commodities traders (who would have performed the
`
`process claimed in Bilski) manipulate information with computers; they do not use pencil and
`
`paper or chalk and slate. The process claimed in Bilski would have been abstract regardless of
`
`whether or not the claim called for the method to be performed on a computer. The same is true
`
`-10-
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`

`

`here. Reciting the use of a general-purpose computer in the preamble does not remove the
`
`claimed intangible processes from the realm of abstraction.
`
`B.
`
`The ’272 Method Claims Also Seek Ownership of an Abstract Idea, However
`Implemented
`
`Walker Digital has asserted method claims 1-4, 9-11, 19, 27-28, and 31-32 of the ’272
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`patent. See D.I. 105 at 1 n.1. The same defects that render the method claims of the ’270 patent
`
`unpatentable also apply to the method claims of the ’272 patent. As with the ’270 patent, the
`
`asserted method claims of the ’272 patent are directed to a series of process steps unconnected to
`
`any particular machine. While the method claims of the ’270 patent may involve a computer
`
`system, there is no similar requirement in any of the method claims of the ’272 patent, making
`
`them even less tethered to any specific machine or technological implementation than even the
`
`claims of the ’270 patent.
`
`Returning to the example of Alice, Bob, and Carol, these parties can complete their
`
`transaction pursuant to claim 1 of the ’272 patent without ever using computer technology (but
`
`this time with only one round of information exchange):
`
`
`
`
`
`
`
`
`
`
`
`“receiving first party information data from
`said first party.”
`
` Alice gives Carol information about her
`sales experience.
`
`“storing said first party information data in
`a secure database.”
`
` Carol puts the information about Alice’s
`experience in a locked filing cabinet.
`
`“receiving, from said first party, at least
`one first party rule for releasing said first
`party information data.”
`
` Alice tells Carol not to disclose her
`experience unless a position has a salary of
`more than $75,000.
`
`“storing said at lease [sic] one first party
`rule.”
`
` Carol puts Alice’s instruction in the filing
`cabinet.
`
`“receiving, from said second party, a search
`request to the secure database, said search
`request comprising at least one search
`criterion to be satisfied.”
`
` Bob gives Carol a job posting and asks
`Carol to look for people with over 5 years
`of sales experience.
`
`-11-
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`“determining second party data relevant to
`said at least one first party rule.”
`
` Carol identifies Bob’s salary offer of
`$100,000 as being relevant to Alice’s rule.
`
`“receiving, from said second party, at least
`one second party rule for releasing said
`second party data.”
`
` Bob tells Carol not to release the salary
`offer unless the person has over 5 years of
`sales experience.
`
`“processing said search request from said
`second party to determine if said first party
`information data satisfies said at least one
`search criterion.”
`
`“if said first party information data satisfies
`at least one search criterion, then
`communicating to said second party that
`said at least one search criterion has been
`satisfied.”
`
` Carol checks her files to see if Alice has
`over 5 years of sales experience.
`
` Carol tells Bob that she has a possible
`matching candidate.
`
`“receiving a request from said second party
`for said first party information data.”
`
` Bob asks Carol for the candidate’s sales
`experience.
`
`“releasing said second party data pursuant
`to said second party rule.”
`
`“determining, based on said second party
`data, whether said at least one first party
`rule has been satisfied.”
`
`“if said at least one first party rule has been
`satisfied, providing, to said second party,
`said first party information data for which
`said at least one first party rule has been
`satisfied.”
`
` Carol tells Alice about Bob’s salary offer
`based on Bob’s instruction that the salary
`offer can be disclosed to a candidate with
`over 5 years of sales experience.
`
` Carol determines that Bob’s salary offer
`exceeds Alice’s salary requirement, such
`that Alice’s work experience can be
`revealed.
`
` Because Bob is offering more than $75,000
`in salary, Carol tells Bob about Alice’s
`sales experience.
`
`See ’272 patent claim 1. The same is true of the dependent claims at issue in this case. 7
`
`7
`2. “authenticating authorship of said first party information data”: Carol verifies that
`Alice is who she says she is.
`4. “the step of authenticating includes the substep of recognizing an identifier selected
`from the group consisting of a password, a name, and an identification number”: Carol asks
`Alice for her social security number.
`
`-12-
`
`

`

`The sole structural requirement in claim 1 is “storing said first party information