Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 1 of 22 PageID #: 7121
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`YYZ, LLC,
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`Plaintiff,
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`V.
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`HEWLETT-PACKARD COMPANY,
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`Defendant.
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`YYZ, LLC,
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`Plaintiff,
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`v.
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`ADOBE SYSTEMS, INC.,
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`Defendant.
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`YYZ, LLC,
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`Plaintiff,
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`v.
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`PEGASYSTEMS, INC.,
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`Defendant.
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`Civ. No. 13-136-SLR
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`Civ. No. 13-579-SLR
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`Civ. No. 13-581-SLR
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`Brian E. Farnan, Esquire and Michael J. Farnan, Esquire of Farnan LLP, Wilmington,
`Delaware. Counsel for Plaintiff. Of Counsel: Jacqueline K. Burt, Esquire, James F.
`McDonough, Ill, Esquire, Jonathan R. Miller, Esquire, Steven W. Ritcheson, Esquire
`and Rene A. Vazquez, Esquire of Heninger Garrison Davis, LLC.
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`Richard L. Horwitz, Esquire, David E. Moore, Esquire, and Bindu A. Palapura, Esquire
`of Potter Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Defendants
`Adobe Systems, Inc. and Hewlett-Packard Company. Of Counsel for Defendant Adobe
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`HP_1036_0001
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`

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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 2 of 22 PageID #: 7122
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`Systems, Inc.: Charlene M. Morrow, Esquire, Virginia K. DeMarchi, Esquire, Phillip
`Haack, Esquire, Yevgeniya A. Titova, Esquire, and Ryan J. Marton, Esquire of Fenwick
`& West LLP. Of Counsel for Defendant Hewlett-Packard Company: Matthew J. Faust,
`Esquire and Megan W. Olesek, Esquire of Kenyon & Kenyon LLP.
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`Thatcher A. Rahmeier, Esquire, M. Curt Lambert, Esquire, and Francis DiGiovanni,
`Esquire of Drinker Biddle & Reath LLP, Wilmington, Delaware. Counsel for Defendant
`Pegasystems Inc. Of Counsel: Kent E. Baldauf, Jr., Esquire, James J. Bosco, Esquire,
`and Bryan P. Clark, Esquire of The Webb Law Firm.
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`MEMORANDUM OPINION
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`Dated: October ~ , 2015
`Wilmington, Delaware
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`HP_1036_0002
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`

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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 3 of 22 PageID #: 7123
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`ROMO
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`I. INTRODUCTION
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`On January 24, 2013, plaintiff YYZ, LLC ("plaintiff") filed a patent infringement
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`action against defendant Hewlett-Packard Company1 ("HP") and against defendants
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`Adobe Systems, lnc.2 ("Adobe") and Pegasystems lnc. 3 ("Pegasystems") (collectively
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`with HP, "defendants") on April 11, 2013, alleging infringement of U.S. Patent Nos.
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`7,062,749 ("the '749 patent") and 7,603,674 ("the '674 patent"). (D.I. 1)4 The court
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`issued its claim construction order on December 12, 2014. (D.I. 112) Presently before
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`the court are defendants' motions for summary judgment of invalidity and plaintiff's
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`cross-motions for summary judgment of validity (D.I. 115; D.I. 121),5 as well as
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`defendants' motions to strike the expert declaration (D.I. 129).6 The court has
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`jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`II. BACKGROUND
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`Plaintiff is a limited liability company organized and existing under the laws of the
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`Commonwealth of Pennsylvania, having its principal place of business in Glen Mills,
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`Pennsylvania. HP is a corporation organized and existing under the laws of Delaware,
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`with its principal place of business in Palo Alto, California. Adobe is a corporation
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`organized and existing under the laws of Delaware, with its principal place of business
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`1 Civ. No. 13-136.
`2 Civ. No. 13-579.
`3 Civ. No. 13-581.
`4 All references are to Civ. No. 13-136 unless otheiwise indicated.
`5 Civ. No. 13-579, D.I. 116 and D.I. 122; Civ. No. 13-581, D.I. 111 and D.I. 117.
`6 Civ. No. 13-579, D.I. 131; Civ. No. 13-581, D.I. 125.
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`HP_1036_0003
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 4 of 22 PageID #: 7124
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`in San Jose, California. Pegasystems is a Massachusetts corporation with its principal
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`place of business in Cambridge, Massachusetts.
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`The '7 49 patent, titled "Measuring, Monitoring and Tracking Enterprise
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`Communications and Processes" was filed on December 15, 2000 and was issued June
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`13, 2006. The '67 4 patent, titled "Apparatus and System for Measuring, Monitoring,
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`Tracking and Simulating Enterprise Communications and Processes" was filed on April
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`5, 2006, as a continuation of the '7 49 patent and was issued on October 13, 2009.
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`Plaintiff asserts claims 22, 23, 27, 28, and 29 of the '749 patent and claims 51, 52, 55,
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`56, and 57 of the '67 4 patent against HP; claim 55 of the '7 49 patent and claims 1, 2, 3,
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`6, 7, 38, 41, 46, and 4 7 of the '67 4 patent against Adobe; and claims 1 , 2, 3, 4, 5, and
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`56 of the '7 49 patent and claims 70, 71, 75, and 76 of the '67 4 patent against
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`Pegasystems (collectively the "asserted claims"). (D.I. 116 at 1)
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`Ill. STANDARD OF REVIEW
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`"The court shall grant summary judgment if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law." Fed. R. Civ. P. 56(a). The moving party bears the burden of
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`demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus.
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`Co. v. Zenith Radio Corp., 415 U.S. 475, 586 n. 10 (1986). A party asserting that a fact
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`cannot be-or, alternatively, is-genuinely disputed must be supported either by citing
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`to "particular parts of materials in the record, including depositions, documents,
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`electronically stored information, affidavits or declarations, stipulations (including those
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`made for the purposes of the motions only), admissions, interrogatory answers, or other
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`materials," or by "showing that the materials cited do not establish the absence or
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`2
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`HP_1036_0004
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 5 of 22 PageID #: 7125
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`presence of a genuine dispute, or that an adverse party cannot produce admissible
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`evidence to support the fact." Fed. R. Civ. P. 56(c)(1 )(A) & (B). If the moving party has
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`carried its burden, the nonmovant must then "come forward with specific facts showing
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`that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation
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`marks omitted). The Court will "draw all reasonable inferences in favor of the nonmoving
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`party, and it may not make credibility determinations or weigh the evidence." Reeves v.
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`Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
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`To defeat a motion for summary judgment, the non-moving party must "do more
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`than simply show that there is some metaphysical doubt as to the material facts."
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`Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d
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`584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more
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`than just bare assertions, conclusory allegations or suspicions to show the existence of
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`a genuine issue") (internal quotation marks omitted). Although the "mere existence of
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`some alleged factual dispute between the parties will not defeat an otherwise properly
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`supported motion for summary judgment,'' a factual dispute is genuine where "the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party."
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). "If the evidence is merely
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`colorable, or is not significantly probative, summary judgment may be granted." Id. at
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`249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322
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`(1986) (stating entry of summary judgment is mandated "against a party who fails to
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`make a showing sufficient to establish the existence of an element essential to that
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`party's case, and on which that party will bear the burden of proof at trial").
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`IV. DISCUSSION
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`3
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`HP_1036_0005
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 6 of 22 PageID #: 7126
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`A. 35 U.5.C. § 101
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`Section 101 provides that patentable subject matter extends to four broad
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`categories, including: "new and useful process[es], machine[s], manufacture, or
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`composition[s] of matter." 35 U.S.C. § 101; see also Bilski v. Kappos, 561 U.S. 593,
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`601 (2010) ("Bilski If'}; Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). A "process"
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`is statutorily defined as a "process, art or method, and includes a new use of a known
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`process, machine manufacture, composition of matter, or material." 35 U.S.C. § 100(b).
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`The Supreme Court has explained:
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`A process is a mode of treatment of certain materials to produce a given
`result. It is an act, or a series of acts, performed upon the subject-matter
`to be transformed and reduced to a different state or thing. If new and
`useful, it is just as patentable as is a piece of machinery. In the language
`of the patent law, it is an art. The machinery pointed out as suitable to
`perform the process may or may not be new or patentable; whilst the
`process itself may be altogether new, and produce an entirely new result.
`The process requires that certain things should be done with certain
`substances, and in a certain order; but the tools to be used in doing this
`may be of secondary consequence.
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`Diamond v. Diehr, 450 U.S. 175, 182-83 (1981) (internal quotations omitted).
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`The Supreme Court recognizes three "fundamental principle" exceptions to the
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`Patent Act's subject matter eligibility requirements: "laws of nature, physical
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`phenomena, and abstract ideas." Bilski II, 561 U.S. at 601. In this regard, the Court
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`has held that "[t]he concepts covered by these exceptions are 'part of the storehouse of
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`knowledge of all men ... free to all men and reserved exclusively to none."' Bilski II, 561
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`U.S. at 602 (quoting Funk Bros. Seed Co. v. Kalo lnoculant Co., 333 U.S. 127, 130
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`(1948)). "[T]he concern that drives this exclusionary principle is one of pre-emption,"
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`that is, '"that patent law not inhibit further discovery by improperly tying up the future use
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`of' these building blocks of human ingenuity." Alice Corp. Pty. Ltd. v. CLS Bank Int'/, -
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`4
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`HP_1036_0006
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 7 of 22 PageID #: 7127
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`U.S.-, 134 S.Ct. 2347, 2354 (2014) (citing Bilski II, 561 U.S. at 611-12 and Mayo
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`Collaborative Servs.v. Prometheus Labs., Inc., 566 U.S.-, 132 S.Ct. 1289, 1301
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`(2012)).
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`Although a fundamental principle cannot be patented, the Supreme Court has
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`held that "an application of a law of nature or mathematical formula to a known structure
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`or process may well be deserving of patent protection,'' so long as that application
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`would not preempt substantially all uses of the fundamental principle. Bilski II, 561 U.S.
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`at 611 (quoting Diehr, 450 U.S. at 187) (internal quotations omitted); In re Bilski, 545
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`F.3d 943, 954 (Fed. Cir. 2008) ("Bilski f'). The Court has described the
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`framework for distinguishing patents that claim laws of nature, natural
`phenomena, and abstract ideas from those that claim patent-eligible
`applications of those concepts. First, we determine whether the claims at
`issue are directed to one of those patent-ineligible concepts. If so, we
`then ask, "[w]hat else is there in the claims before us?" To answer that
`question, we consider the elements of each claim both individually and "as
`an ordered combination" to determine whether the additional elements
`"transform the nature of the claim" into a patent-eligible application. We
`have described step two of this analysis as a search for an '"inventive
`concept"'-i.e., 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."
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`Alice, 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1294, 1296-98).7
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`"[T]o transform an unpatentable law of nature into a patent-eligible application of
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`such a law, one must do more than simply state the law of nature while adding the
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`7 The machine-or-transformation test still may provide a "useful clue" in the second step
`of the Alice framework. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
`2014) (citing Bilski II, 561 U.S. at 604 and Bancorp Servs., L.L.C. v. Sun Life Assurance
`Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012). A claimed process can be patent(cid:173)
`eligible under§ 101 if: "(1) it is tied to a particular machine or apparatus, or (2) it
`transforms a particular article into a different state or thing." Bilski I, 545 F.3d at 954,
`aff'd on other grounds, Bilski II, 561 U.S. 593.
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`5
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`HP_1036_0007
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 8 of 22 PageID #: 7128
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`words 'apply it."' Mayo, 132 S.Ct. at 1294 (citing Gottschalk v. Benson, 409 U.S. 63,
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`71-72 (1972)) (emphasis omitted). It is insufficient to add steps which "consist of well-
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`understood, routine, conventional activity," if such steps, "when viewed as a whole, add
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`nothing significant beyond the sum of their parts taken separately." Mayo, 132 S. Ct. at
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`1298. "Purely 'conventional or obvious' '[pre]-solution activity' is normally not sufficient
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`to transform an unpatentable law of nature into a patent-eligible application of such a
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`law." Id. (citations omitted). Also, the "prohibition against patenting abstract ideas
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`'cannot be circumvented by attempting to limit the use of the formula to a particular
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`technological environment' or adding 'insignificant post-solution activity.'" Bilski II, 561
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`U.S. at 610-11 (citation omitted). For instance, the "mere recitation of a generic
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`computer cannot transform a patent-ineligible abstract idea into a patent-eligible
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`invention." Alice, 134 S.Ct. at 2358. "Given the ubiquity of computers, wholly generic
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`computer implementation is not generally the sort of 'additional featur[e]' that provides
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`any 'practical assurance that the process is more than a drafting effort designed to
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`monopolize the [abstract idea] itself."' Id. (citations omitted).
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`Because computer software comprises a set of instructions,8 the first step of
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`Alice is, for the most part, a given; i.e., computer-implemented patents generally involve
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`abstract ideas. The more difficult part of the analysis is subsumed in the second step of
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`the Alice analysis, that is, determining whether the claims "merely recite the
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`performance of some business practice known from the pre-Internet world along with
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`the requirement to perform it on the Internet," or whether the claims are directed to "a
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`8 Or, to put it another way, software generally comprises a method "of organizing human
`activity.'' Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367-
`68 (Fed. Cir. 2015) (citing Alice, 134 S.Ct. 2351-52, and Bilski II, 561 U.S. at 599).
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`6
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`HP_1036_0008
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 9 of 22 PageID #: 7129
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`problem specifically arising in the realm of computer technology" and the claimed
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`solution specifies how computer technology should be manipulated to overcome the
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`problem. DOR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
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`2014).
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`In DOR, for example, the claims at issue involved computer technology directed
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`at retaining website visitors. 9 In its analysis, the Federal Circuit rejected the notion that
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`the pre-Internet analog to the claims at issue ended the inquiry, explaining that while
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`9 In DOR, representative claim 19 of the '399 patent recites:
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`A system useful in an outsource provider serving web pages offering
`commercial opportunities, the system comprising:
`(a) a computer store containing data, for each of a plurality of first web
`pages, defining a plurality of visually perceptible elements, which visually
`perceptible elements correspond to the plurality of first web pages;
`(i) wherein each of the first web pages belongs to one of a plurality of
`web page owners;
`(ii) wherein each of the first web pages displays at least one active link
`associated with a commerce object associated with a buying opportunity
`of a selected one of a plurality of merchants; and
`(iii) wherein the selected merchant, the out-source provider, and the
`owner of the first web page displaying the associated link are each third
`parties with respect to one other;
`(b) a computer server at the outsource provider, which computer server
`is coupled to the computer store and programmed to:
`(i) receive from the web browser of a computer user a signal indicating
`activation of one of the links displayed by one of the first web pages;
`(ii) automatically identify as the source page the one of the first web
`pages on which the link has been activated;
`(iii) in response to identification of the source page, automatically
`retrieve the stored data corresponding to the source page; and
`(iv) using the data retrieved, automatically generate and transmit to the
`web browser a second web page that displays:
`(A) information associated with the commerce object associated with
`the link that has been activated, and
`(8) the plurality of visually perceptible elements visually
`corresponding to the source page.
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`773 F.3d at 1249-50 (emphasis added).
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`7
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`HP_1036_0009
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 10 of 22 PageID #: 7130
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`the "store within a store" concept ... may have been well-known by the
`relevant time frame, that practice did not have to account for the
`ephemeral nature of an Internet "location" or the near-instantaneous
`transport between these locations made possible by standard Internet
`communication protocols, which introduces a problem that does not arise
`in the "brick and mortar" context.
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`773 F.3d at 1258. In other words, "[a]lthough the claims address[ed] a business
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`challenge ... , it [was] a challenge particular to the Internet." Id. at 1257. The Court
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`concluded that, under any of the characterizations of the abstract idea, the claims
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`satisfied step two of Alice as being
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`different enough in substance from those in Ultramercial because they do
`not broadly and generically claim "use of the Internet" to perform an
`abstract business practice (with insignificant added activity). Unlike the
`claims in Ultramercial, the claims at issue here specify how interactions
`with the Internet are manipulated to yield a desired result - a result that
`overrides the routine and conventional sequence of events ordinarily
`triggered by the click of a hyperlink ....
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`In sum, [U.S. Patent No. 7,818,399]'s claims are unlike the claims in Alice,
`Ultramercial, buySAFE, Accenture, and Bancorp that were found to be
`"directed to" little more than an abstract concept. To be sure, the '399
`patent's claims do not recite an invention as technologically complex as an
`improved, particularized method of digital data compression. But nor do
`they recite a commonplace business method aimed at processing
`business information, applying a known business process to the particular
`technological environment of the Internet, or creating or altering
`contractual relations using generic computer functions and conventional
`network operation, such as the claims in Alice, Ultramercial, buySAFE,
`Accenture, and Bancorp.
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`Id. at 1258-59 (citing Alice, 134 S.Ct. at 2359; Ultramercial, 772 F.3d 709, 714-16 (Fed.
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`Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014);
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`Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45
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`(Fed. Cir. 2013); Bancorp, 687 F.3d at 1277-78); but see Dealertrack, Inc. v. Huber, 674
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`F.3d 1315, 1331-35 (Fed. Cir. 2012).
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`8
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`HP_1036_00010
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 11 of 22 PageID #: 7131
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`In DOR, the analytical framework (in the context of computer-implemented
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`inventions) was articulated so as to require that the inventive concept "recite a specific
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`way" to solve a "particular Internet-centric problem," with the claimed solution being
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`"necessarily rooted in computer technology," so that the result "is not merely the routine
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`or conventional use of the Internet." 773 F.3d at 1257, 1259. Since providing that
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`explanation, the Federal Circuit has not preserved the validity of any other computer-
`implemented invention under§ 101.1° For instance, in Intellectual Ventures, a case that
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`also presented claims directed at websites, 11 the Court explained that, "[a]t step one of
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`the Alice framework, it is often useful to determine the breadth of the claims in order to
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`determine whether the claims extend to cover a '"fundamental ... practice long
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`prevalent in our system."' Intellectual Ventures, 792 F.3d at 1369 (citing Alice, 134 S.
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`Ct. at 2356). The Court characterized the claims at issue as relating to "customizing
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`information based on (1) information known about the user and (2) navigation data." Id.
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`10 See, e.g., Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat'/ Ass'n,
`776 F.3d 1343 (Fed. Cir. 2014); Al/voice Devs. US, LLC v. Microsoft Corp., Civ. No.
`(Fed. Cir. 2015); OIP Techs., Inc. v.
`2014-1258, 2015 WL 2445055, - Fed. Appx. -
`Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015); Internet Patents Corp. v. Active
`Network, Inc., 790 F .3d 1343 (Fed. Cir. 2015); Intellectual Ventures, 792 F .3d 1363;
`Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015).
`11 Representative claim 1 of U.S. Patent No. 7,603,382 recites:
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`A system for providing web pages accessed from a web site in a manner
`which presents the web pages tailored to an individual user, comprising:
`an interactive interface configured to provide dynamic web site
`navigation data to the user, the interactive interface comprising:
`a display depicting portions of the web site visited by the user as a
`function of the web site navigation data; and
`a display depicting portions of the web site visited by the user as a
`function of the user's personal characteristics.
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`Intellectual Ventures, 792 F .3d at 1368.
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`9
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`HP_1036_00011
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 12 of 22 PageID #: 7132
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`Likening "[t]his sort of information tailoring" to "providing different newspaper inserts
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`based upon the location of the individual," id., the Court concluded that the first aspect
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`of the inventive concept was an abstract idea. The second aspect of the inventive
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`concept, using "navigation data (i.e., information relating to when the user navigated to
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`the website) to 'customize' the website," id., the Court again concluded that "[t]ailoring
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`information based[, e.g.,] on the time of day of viewing is also an abstract, overly broad
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`concept long-practiced in our society." Id. at 1370.12
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`Turning to the second step of Alice, the Intellectual Ventures Court concluded
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`that the claims at issue presented no inventive concept "that would support patent
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`eligibility." 13 Id. at 1370. The Federal Circuit explained:
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`Steps that do nothing more than spell out what it means to "apply it on a
`computer'' cannot confer patentability. . . . Requiring the use of a
`"software" "brain" "tasked with tailoring information and providing it to the
`user'' provides no additional limitation beyond applying an abstract idea,
`restricted to the Internet, on a generic computer.
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`12 In this regard, the observation made by the district court in Paone v. Broadcom Corp.,
`Civ. No. 15-0596, 2015 WL 4988279 (E.D.N.Y. Aug. 19, 2015), is worth noting, that (in
`the context of encryption technology) it was of
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`no moment that "[e]ncryption, in general, represents a basic building block
`of human ingenuity that has been used for hundreds, if not thousands, of
`years." That is because [U.S. Patent No. 6,259, 789] does not claim a
`process that can or does involve the encryption of data for some purpose
`that is otherwise abstract. Rather, it claims a specific method of doing so.
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`Id. at *7 (citation omitted) (emphasis omitted).
`13 Despite the "dynamic presentation of data - that is, ... the claimed invention in 'real
`time' customizes the web page based on the information it knows about the particular
`viewer'' - and despite the claimed "interactive interface," which was "broadly construed
`by the district court to mean 'a selectively tailored medium by which a web site user
`communicates with a web site information provider."' Intellectual Ventures, 792 F.3d at
`1369-70.
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`10
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`HP_1036_00012
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 13 of 22 PageID #: 7133
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`Id. at 1370-71. In distinguishing DOR, the Intellectual Ventures Court offered the
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`following analysis:
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`The patent at issue in [DOR] dealt with a problem unique to the Internet:
`Internet users visiting one web site might be interested in viewing products
`sold on a different web site, but the owners of the first web site did not
`want to constantly redirect users away from their web site to a different
`web site. . . . The claimed solution used a series of steps that created a
`hybrid web page incorporating "look and feel" elements from the host web
`site with commerce objects from the third-party web site. . . . The patent
`at issue in DOR provided an Internet-based solution to solve a problem
`unique to the Internet that (1) did not foreclose other ways of solving the
`problem, and (2) recited a specific series of steps that resulted in a
`departure from the routine and conventional sequences of events after the
`click of a hyperlink advertisement. . . . The patent claims [in Intellectual
`Ventures] do not address problems unique to the Internet, so DOR has no
`applicability.1141
`
`Id. at 1371 (citations omitted).
`
`In reviewing post-Alice cases such as DOR and Intellectual Ventures, the court is
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`struck by the evolution of the § 101 jurisprudence, from the complete rejection of
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`patentability for computer programs15 to the almost complete acceptance of such, 16 to
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`the current (apparent) requirements that the patent claims in suit (1) disclose a problem
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`"necessarily rooted in computer technology," and (2) claim a solution that (a) not only
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`departs from the "routine and conventional" use of the technology, but (b) is sufficiently
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`specific so as to negate the risk of pre-emption. See DOR, 773 F.3d at 1257;
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`Intellectual Ventures, 792 F.3d at 1371. In other words, even though most of the patent
`
`14 But recall the "store within a store" pre-Internet analog rejected in DOR.
`15 See, e.g., 33 Fed. Reg. 15581, 15609-10 (1968), and Justice Steven's dissent in
`Diehr, whose solution was to declare all computer-based programming unpatentable,
`450 U.S. at 219.
`16 State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir.
`1998), abrogated by Bilski I, in which "a computer-implemented invention was
`considered patent-eligible so long as it produced a 'useful, concrete and tangible
`result."' DOR, 773 F.3d at 1255 (citing State Street Bank, 149 F.3d at 1373).
`
`11
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`HP_1036_00013
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 14 of 22 PageID #: 7134
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`claims now being challenged under§ 101 would have survived such challenges if
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`mounted at the time of issuance, these claims are now in jeopardy under the
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`heightened specificity required by the Federal Circuit post-A/ice. Moreover, it is less
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`than clear how a § 101 inquiry that is focused through the lens of specificity can be
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`harmonized with the roles given to other aspects of the patent law (such as enablement
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`under§ 112 and non-obviousness under§ 103), 17 especially in light of the Federal
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`Circuit's past characterization of§ 101 eligibility as a "coarse" gauge of the suitability of
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`broad subject matter categories for patent protection. Research Corp. Techs., Inc. v.
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`Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010). Given the evolving state of the
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`law, the § 101 analysis should be, and is, a difficult exercise. 18 At their broadest, the
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`various decisions of the Federal Circuit19 would likely ring the death-knell for patent
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`17 Indeed, Judge Plager, in his dissent in Dealertrack, suggested that,
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`as a matter of efficient judicial process I object to and dissent from that
`part of the opinion regarding the '427 patent and its validity under§ 101,
`the section of the Patent Act that describes what is patentable subject
`matter. I believe that this court should exercise its inherent power to
`control the processes of litigation ... , and insist that litigants, and trial
`courts, initially address patent invalidity issues in infringement suits in
`terms of the defenses provided in the statute: "conditions of patentability,"
`specifically §§ 102 and 103, and in addition §§ 112 and 251, and not foray
`into the jurisprudential morass of§ 101 unless absolutely necessary.
`
`Dealertrack, 674 F.3d at 1335. But see CLS Bank Int'/ v. Alice Corp. Pty., 717 F.3d
`1269, 1277 (Fed. Cir. 2013), aff'd, 134 S. Ct. 2347 (2014).
`18 And, therefore, not an exercise that lends itself to, e.g., shifting fees pursuant to 35
`U.S.C. § 285.
`19 See, e.g., Dealertrack, where the claim was about as specific as that examined in
`DOR, yet the Federal Circuit found the patent deficient because it did "not specify how
`the computer hardware and database [were] specially programmed to perform the
`steps claimed in the patent," 674 F.3d at 1333-34 (emphasis added). The disclosure of
`such programming details would likely nullify the ability of a patentee to enforce the
`patent, given the ease with which software can be tweaked and still perform the desired
`function.
`
`12
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`HP_1036_00014
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 15 of 22 PageID #: 7135
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`protection of computer-implemented inventions, 20 a result not clearly mandated (at least
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`not yet). On the other hand, to recognize and articulate the requisite degree of
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`specificity - either in the equipment used21 or the steps claimed22 - that transforms an
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`abstract idea into patent-eligible subject matter is a challenging task. In trying to sort
`
`through the various iterations of the§ 101 standard, the court looks to DOR as a
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`benchmark; i.e., the claims (informed by the specification) must describe a problem and
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`solution rooted in computer technology, and the solution must be (1) specific enough to
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`preclude the risk of pre-emption, and (2) innovative enough to "override the routine and
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`conventional" use of the computer. DOR, 773 F.3d at 1258-59. The pre-emption
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`concern is generally amenable to review in the context of a motion to dismiss or for
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`judgment on the pleadings. The second requirement, which may well involve issues of
`
`fact relating to the state of the art in the technological environment involved, is more
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`appropriately addressed after discovery in the context of a motion for summary
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`judgment.
`
`B. The Patents-in-Suit
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`The specification discloses "computer-based apparatus and systems for
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`measuring, monitoring, tracking and simulating enterprise [or business] communications
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`20 Ironically so, given the national concerns about piracy of American intellectual
`property.
`21 See, e.g., SiRF Tech., Inc. v. Int'/ Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010), a
`case where the Federal Circuit found that a GPS receiver was "integral" to the claims at
`issue. The Court emphasized that a machine will only "impose a meaningful limit on the
`scope of a claim [when it plays] a significant part in permitting the claimed method to be
`performed, rather than function solely as an obvious mechanism for permitting a
`solution to be achieved more quickly, i.e., through the utilization of a computer for
`performing calculations." Id. at 1333.
`22 See, e.g., DOR, 773 F.3d at 1257-58; TQP Dev., LLC v. Intuit Inc., Civ. No. 12-180,
`2014 WL 651935 (E.D. Tex. Feb. 19, 2014); Paone, 2015 WL 4988279.
`
`13
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`HP_1036_00015
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`Case 1:13-cv-00136-SLR Document 152 Filed 10/08/15 Page 16 of 22 PageID #: 7136
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`and processes in an asynchronous messaging environment." ( 1 :8-11 )23 "Whether
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`communications occur horizontally or vertically, among applications or users,
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`communications [including enterprise communications] are increasingly asynchronous
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`or message based." (1 :37-48) Asynchronous communications "are problematic
`
`because of their loosely coupled nature" and "precise information on the progress of the
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`processes is difficult to obtain - messages may be in transit and not instantly locatable."
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`(2:5-9) Figure 1 depicts a sample process, which includes the steps of receiving an
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`order inquiry, providing a customer quotation, creating a customer outline agreement,
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`creating a sales order, scheduling production, manufacturing a product, shipping a
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`product, and invoicing a customer. (3:39-43) The specification calls these steps "sub-
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`processes" and messages transferred from one sub-process to another are "original
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`messages." (3:44-45, 56-57) The sub-processes "actually communicate through a
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`messaging broker, such as an IBM MQSeries component." (3:45-51) The specification
`
`expl