Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 1 of 30 PageID #:1480
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
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`OCEAN TOMO, LLC,
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`Plaintiff-Counter Defendant,
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`
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`v.
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`JONATHAN BARNEY and
`PATENTRATINGS, LLC,
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`Defendants-Counter Plaintiffs.
`
`No. 12 C 8450
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`Judge: Joan B. Gottschall
`Magistrate: Judge Mary M. Rowland
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`
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`PLAINTIFF-COUNTER DEFENDANT’S MEMORANDUM IN SUPPORT OF ITS
`MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 101
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 2 of 30 PageID #:1481
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ......................................................................................................................... 1
`THE PATENTRATINGS PATENTS-IN-SUIT ............................................................................ 4
`ARGUMENT ................................................................................................................................. 9
`I.
`THE PATENT RATINGS CLAIMS ARE DIRECTED TO ABSTRACT IDEAS .......... 9
`A.
`Fundamental Practices and Concepts Capable of Mental Formulation or
`Performance Are Abstract Ideas ............................................................................ 9
`The Relevance Patents Are Directed to Unpatentable Abstract Ideas ................. 11
`1.
`Independent Claims 1, 6 and 7 of the ’226 Patent Cover Human
`Performable Mental Processes ................................................................. 11
`Independent Claims 1 and 13 of the ’701 Patent, Claims 1, 6 and
`11 of the ’560 Patent; and Claims 1 and 13 of the ‘996 Patent
`Cover Human Performable Mental Processes ......................................... 12
`The Claims of the Relevance Patents Cover Fundamental Practices ...... 13
`The PR Relevance Patent Claims Have No Transformative
`Elements ................................................................................................... 14
`The Machine-Or-Transformation Test Further Supports the
`Finding Under the Second Prong Required Under Alice ......................... 17
`The Ratings Patents Are Direct to Unpatentable Abstract Ideas ......................... 18
`1.
`The Ratings Patents Are Directed to Human Performable Mental
`Processes .................................................................................................. 20
`The Claims of the Ratings Patents Cover Fundamental Practices ........... 20
`2.
`The Ratings Patents Claims Have No Transformative Elements ............ 21
`3.
`The Valuation Patent Is Directed to Unpatentable Abstract Ideas ...................... 23
`The Technology Obsolescence Patent Is Directed to an Unpatentable
`Abstract Idea ........................................................................................................ 23
`CONCLUSION ............................................................................................................................ 24
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`2.
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`3.
`4.
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`5.
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`B.
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`C.
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`D.
`E.
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 3 of 30 PageID #:1482
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`TABLE OF AUTHORITIES
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`Page
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`Cases 
`Alice Corp. Pty. Ltd. v. CLS Bank International,
`134 S. Ct. 2347 (2014) ....................................................................................................... passim
`Anderson v. Liberty Lobby, Inc.,
`106 S. Ct. 2505 (1986) ................................................................................................................ 6
`Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
`133 S. Ct. 2107 (2013) ................................................................................................................ 2
`Bascom Research, LLC v. Facebook, Inc.,
`3-12-cv-06293 (N.D. Cal. Jan. 5, 2015, Order) .......................................................................... 7
`Bilski v. Kappos,
`130 S. Ct. 3218 (2010) ....................................................................................................... passim
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014)......................................................................................... 7, 8, 14
`Celotex Corp. v. Catrett,
`106 S. Ct. 2548 (1986) ................................................................................................................ 6
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011)................................................................................. 6, 10, 15, 21
`Data Distribution Techs. v. Brer Affiliates,
`Case No. 12-4878 (JBS/KMW),
`2014 WL 4162765 (D.N.J. Aug. 19, 2014) ........................................................................ 15, 22
`Diamond v. Chakrabarty,
`100 S. Ct. 2204 (1980) ................................................................................................................ 6
`Diamond v. Diehr,
`101 S. Ct. 1048 (1981) ................................................................................................................ 6
`DietGoal Innovations LLC v. Bravo Media LLC,
`No. 13 Civ. 8391 (PAE), 2014 WL 3582914 (S.D.N.Y. July 8, 2014) .................. 10, 16, 17, 22
`Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
`758 F.3d 1344 (Fed. Cir. 2014)........................................................................................... 15, 22
`Enfish, LLC v. Microsoft Corp.,
`No. 2:12-cv-07360, 2014 WL 5661456 (C.D. Cal. Nov. 3, 2014) ........................................ 7, 8
`Funk Bros. Seed Co. v. Kalo Inoculant Co.,
`68 S. Ct. 440 (1948) .................................................................................................................... 6
`Gottschalk v. Benson,
`93 S. Ct. 253 (1972) ........................................................................................................ 6, 10, 11
`In re Bilski,
`545 F.3d 943 (Fed. Cir. 2008)................................................................................................... 18
`In re BRCA1—and BRCA2—Based Hereditary Cancer Test Patent Litigation,
`Nos. 2014-1361, 2014-1366
`2014 WL 7156722 (Fed. Cir. Dec. 17, 2014) ............................................................................. 7
`In re Comiskey,
`554 F.3d 967 (Fed. Cir. 2009)............................................................................................... 6, 10
`Le Roy v. Tatham,
`55 U.S. 156 (1853) ...................................................................................................................... 6
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 4 of 30 PageID #:1483
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Mayo Collaborative Series v. Prometheus Labs, Inc.,
`132 S. Ct. 1289 (2012) ....................................................................................................... passim
`Parker v. Flook,
`98 S. Ct. 2522 (1978) .................................................................................................... 10, 11, 16
`Planet Bingo, LLC v. VKGS, LLC,
`No. 2013-1663, 576 Fed. Appx. 1005 (Fed. Cir. Aug. 26, 2014) ........................................... 7, 9
`Ultramercial, Inc. v. Hulu,
`772 F.3d 709 (Fed. Cir. 2014)................................................................................................... 17
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014)..................................................................................................... 7
`Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC
`No. 13 C 4417 (N.D. Ill. Jan. 29, 2015, Order) .......................................................................... 7
`Statutes 
`35 U.S.C. § 101 ...................................................................................................................... passim
`Rules 
`FED. R. CIV. P. 56 ........................................................................................................................... 6
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 5 of 30 PageID #:1484
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`Plaintiff-Counter Defendant Ocean Tomo, LLC (“OT”), in support of its Motion for
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`Summary Judgment of Invalidity under 35 U.S.C. § 101, hereby presents its memorandum in
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`support thereof. Defendant-Counter Plaintiff PatentRatings’ (“PR”) U.S. Patent Nos. 6,556,992
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`(the “’992 Patent”), 7,962,511 (the “’511 Patent”), 7,716,226 (the “’226 Patent”), 8,504,560 (the
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`“’560 Patent”), 7,949,581 (the “’581 Patent”), 7,657,476 (the “’476 Patent”), 8,131,701 (the
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`“’701 Patent”) and 8,818,996 (the “’996 Patent”) (collectively, the “patents-in-suit”) are each
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`invalid under 35 U.S.C. § 101 as they do not claim patentable subject matter. In particular, and
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`under the Supreme Court’s recent holding in Alice Corp. Pty. Ltd. v. CLS Bank International,
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`134 S. Ct. 2347 (2014), the claims of the patents-in-suit are directed to abstract ideas that are not
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`entitled to protection under the patent statutes.
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`INTRODUCTION
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`This action arises out of a soured business relationship between OT, on the one hand, and
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`PR and Barney, on the other hand. OT, the leading Intellectual Capital Merchant Banc firm,
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`provides, among other things, financial products and services related to expert testimony,
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`valuation, investments, risk management and transactions throughout the United States and
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`overseas. Barney created PR, a company that owns and develops computer-generated metrics
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`that can be used to help determine the quality and relevance of issued United States patents. As
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`detailed below, the algorithm underlying these metrics has been issued a number of patents by
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`the United States Patent and Trademark Office and is used to assess the quality and relative value
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`of patent portfolios.
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`In approximately 2004, OT and PR entered into a License Agreement pursuant to which,
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`among other things, PR licensed to OT the right to use PR’s patented technology in order to
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`determine the quality and relevance of patents for certain of OT’s clients. As part of the business
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`relationship, Barney became a Member of OT, and OT became a Member of PR. Over the years,
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 6 of 30 PageID #:1485
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`OT has made substantial capital investments and loans for the development of this technology,
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`secured by PR’s assets.
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`Since 2007, however, the parties’ business relationship has been plagued by a number of
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`disputes which, following the commencement of three separate lawsuits, the removal of one to
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`this court, and the consolidation of all of those actions under this caption, resulted in the case
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`currently pending before this Court. PR’s patented technology is the foundation of the parties’
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`business relationship, and this is reflected in the claims asserted by the parties. Many of the
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`claims specifically invoke the License Agreement under which PR licensed its patented
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`technology to OT, including the various amendments thereto and a related promissory note and
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`security agreement. Specifically, OT seeks a declaration from this Court that it is not currently
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`in breach of these agreements and that they remain in full force and effect. PR, on the other
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`hand, accuses OT of disclosing information in breach of the License Agreement, and also
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`contends that it was fraudulently induced to enter into the 2007 amendment to the License
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`Agreement and the related note and security agreement. The remainder of the parties’ claims
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`concern a number of agreements entered into in connection with the License Agreement and
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`violations of other statutory and common-law duties that the parties contend arose as a result of
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`the parties’ business relationship. At its core, this relationship revolves around the patents-in-
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`suit. For this reason, in order for there to be either an amicable resolution of this dispute or a full
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`adjudication of the Parties’ claims, the validity of the patents-in-suit must be resolved.
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`In this regard, a series of recent decisions from the U.S. Supreme Court have
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`substantially altered the landscape regarding process patents implemented on computers and
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`raised the bar for patentability. (See Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2354
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`(2014); Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013); Mayo
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 7 of 30 PageID #:1486
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`Collaborative Series v. Prometheus Labs, Inc., 132 S. Ct. 1289 (2012); and Bilski v. Kappos, 130
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`S. Ct. 3218 (2010)). These decisions have rendered the claimed subject matter of the patents-in-
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`suit ineligible for patent protection under 35 U.S.C. § 101. Each of the claims in the patents-in-
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`suit are directed to fundamental mathematical and statistical tools, such as regression analysis,
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`which are applied to preexisting data collected by a general-purpose computer to determine
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`relationships between the collected and analyzed data. The claims do nothing more than
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`describe the implementation of an abstract idea (i.e., the application of a statistical tool to
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`collected data) on a generic computer. Multivariate regression analysis and probit and logit
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`regression models described in the patents-in-suit have long been used as basic tools in the study
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`of relationships between data.
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`Under Alice, claims directed to such abstract ideas are unpatentable unless they further
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`include elements that individually or collectively transform the idea into something that in
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`practice would be significantly more than a patent on the abstraction itself. 134 S. Ct. at 2358.
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`The asserted claims in the patents-in-suit do not transform the idea. Instead, the claims simply
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`claim the use of well-known statistical algorithms applied to data collected by a general
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`computer. For example, claim 1 of the ’560 Patent requires 1) a computer system receiving a
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`first set of information, 2) a computer system identifying an additional document not part of the
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`first set of information that is citationally related to the first set of information, and 3) a computer
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`system that programmatically calculates the degree of citational relationship between data not
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`included in the first information set and at varying degrees of relatedness through the use of
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`regression analysis.
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 8 of 30 PageID #:1487
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`In essence, the ’560 Patent is directed to the use of a statistical tool to determine the
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`degree to which documents are related. This is the essence of bibliometrics and statistical
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`modeling.
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`THE PATENTRATINGS PATENTS-IN-SUIT
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`PR owns the patents-in-suit that are directed to four basic subject areas. The first subject
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`area is the “Relevance Patents” which include the ’226 Patent, the ’701 Patent, the ’560 Patent
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`and the ’996 Patent. The Relevance Patents essentially claim a method for applying well-known
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`fundamental bibliometric and statistical modeling tools to date collected by a general-purpose
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`computer. Representative claims for the Relevance Patents are set forth in Exhibit A.
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`The second subject area is called the “Ratings Patents” and includes the ’992 Patent and
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`the ’511 Patent. These patents claim a method for rating patents based on the application of a
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`regression model applied to data (“metrics”) extracted from the patents. Representative claims
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`from these patents are set forth in Exhibit B.
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`The third subject area is the “Valuation Patent,” which includes the ’476 Patent. The
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`’476 Patent claims a method for placing valuations on patents based on extracting metrics from
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`them and calculating the likelihood that the owners will pay maintenance fees by applying
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`fundamental statistical tools. Representative claims from this patent are set forth in Exhibit C.
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`The fourth subject area is the “Technology Obsolescence Patent,” which includes the
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`’581 Patent. The ’581 Patent claims a method for forecasting the rate of obsolescence for a
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`patent based on citations extracted from data objects. Representative claims from this patent are
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`set forth in Exhibit D.
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`Claim 1 of the ’560 Patent is an example of the claims of the Relevance Patents and
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`recites the following:
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`1.
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`A computer-implemented method, comprising:
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 9 of 30 PageID #:1488
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`receiving, by a computer system, a first set of information identifying an
`input set of documents, said input set comprising a plurality of documents;
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`identifying, by the computer system, an additional document that is not a
`member of the input set, but which is citationally related to at least some of the
`documents in the input set;
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`programmatically calculating, by the computer system, a data value that
`represents a degree to which said document is citationally related to the at least
`some of the documents in the input set, said data value dependent upon at least
`(a) how many citational relationships exist at generations higher than a first
`generation between the input set of documents and said additional document and
`(b) generation levels of said citational relationships, wherein calculating said data
`value comprises assigning different amounts of weight to citational relationships
`of different generation levels, said amounts of weight being based at least in part
`on a generational citation count determined for each of the different generation
`levels and an analysis in which multi-generation citational relationships between
`documents are used
`to predict existences of first generation citational
`relationships between documents, said analysis performed over a document
`population; and
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`storing the data value in computer storage in association with identifiers of
`the input set of documents and the additional document.
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`As can be seen by this exemplary claim, the Relevance Patents claim the counting of
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`citations by a computer to measure the relatedness of documents, which is a fundamental tool of
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`bibliometrics. (Ex. E; Thomas Decl. ¶¶ 88–91, 96.) In addition, the claim requires
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`“programmatically calculating,” which is nothing more than the application of multivariate
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`statistical techniques, notably logit and probit regression, to generate scores for patents based on
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`these metrics. Thus, the PR patents claim the computer implementation of standard statistical
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`techniques to determine the relationship between two sets of data, which is nothing more than a
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`claim to a basic tool of scientific and technological work. (Ex. E; Thomas Decl. ¶¶ 92–93.) As a
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`consequence, the PR claims are directed to an abstract idea that does not amount to patentable
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`subject matter under 35 U.S.C. § 101.
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 10 of 30 PageID #:1489
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`Standard for Summary Judgment
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`A court shall grant summary judgment if there is no genuine dispute as to any material
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`fact and the moving party is entitled to a judgment as a matter of law. FED. R. CIV. P. 56; see
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`Celotex Corp. v. Catrett, 106 S. Ct. 2548, 2552 (1986); Anderson v. Liberty Lobby, Inc., 106 S.
`
`Ct. 2505, 2511 (1986). It is well settled that ineligibility under § 101 is a question of law for the
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`court. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011); In re
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`Comiskey, 554 F.3d 967, 975 (Fed. Cir. 2009). Consequently, this Court may decide the issue at
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`the summary judgment stage.
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`The Legal Standards for Patent Eligibility under 35 U.S.C. § 101
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`Section 101 of the Patent Act defines patentable subject matter, stating that: “Whoever
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`invents or discovers any new and useful process, machine, manufacture, or composition of
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`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
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`conditions and requirements of this title.” 35 U.S.C. § 101. However, the definition of
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`patentable subject matter provided by Section 101 does not encompass everything created by
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`human ingenuity. The Supreme Court has consistently maintained that laws of nature, physical
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`phenomena and abstract ideas are not patentable. Diamond v. Chakrabarty, 100 S. Ct. 2204,
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`2208 (1980); Diamond v. Diehr, 101 S. Ct. 1048, 1056 (1981); Gottschalk v. Benson, 93 S. Ct.
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`253, 255 (1972); Funk Bros. Seed Co. v. Kalo Inoculant Co., 68 S. Ct. 440, 441 (1948); Le Roy
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`v. Tatham, 55 U.S. 156, 175 (1853).
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`Section 101 further prevents patentees from too broadly claiming a building block of
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`research and development. Building blocks may include basic tools of mathematics or formulas
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`describing preexisting natural relationships. Mayo Collaborative Servs. v. Prometheus Labs.,
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`Inc., 132 S. Ct. 1289, 1296–97 (2012).
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 11 of 30 PageID #:1490
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`Most recently, the Supreme Court reiterated that abstract ideas are not patentable in Alice
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`Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). In a unanimous
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`decision, the court reaffirmed that laws of nature, natural phenomena and abstract ideas are “the
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`basic tools of scientific and technological work.” Id. at 2354. “[M]onopolization of those tools
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`through the grant of a patent might tend to impede innovation more than it would tend to
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`promote it,” thereby thwarting the primary object of the patent laws. Id.
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`Alice, however, went further and clearly applied this rule to computer-implemented ideas.
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`The decision represents a sea change regarding the eligibility of claims involving abstract ideas.
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`Six days after the opinion issued, the USPTO’s Deputy Commissioner for Patent Examination
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`Policy issued a Memorandum to the Patent Examining Corps providing instructions for
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`analyzing claims with abstract ideas following Alice. The decision also inspired an uptick in
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`motions brought pursuant to both Rule 56 and Rule 12 for findings of patent invalidity pursuant
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`to Section 101. A number of these motions have already been granted. See, e.g., In re BRCA1—
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`and BRCA2—Based Hereditary Cancer Test Patent Litigation, Nos. 2014-1361, 2014-1366,
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`2014 WL 7156722, at *6–9 (Fed. Cir. Dec. 17, 2014); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
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`709, 713–17 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352–55 (Fed. Cir.
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`2014); Planet Bingo, LLC v. VKGS, LLC, No. 2013-1663, 576 Fed. Appx. 1005, 1007–9 (Fed.
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`Cir. Aug. 26, 2014); Enfish, LLC v. Microsoft Corp., No. 2:12-cv-07360, 2014 WL 5661456, at
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`*2–13 (C.D. Cal. Nov. 3, 2014); Bascom Research, LLC v. Facebook, Inc., 3-12-cv-06293 (N.D.
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`Cal. Jan. 5, 2015, Order); Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC; No.
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`13 C 4417, (N.D. Ill. Jan. 29, 2015, Order).
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`The Alice decision confirmed that the courts must evaluate patent eligibility using the
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`two-part test applied in Mayo. First, a court should determine whether a challenged claim is
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 12 of 30 PageID #:1491
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`directed to a law of nature, a natural phenomenon or an abstract idea. Alice, 134 S. Ct. at 2355.
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`If the answer is yes, then the court considers the claim elements individually and as an ordered
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`combination to determine whether additional elements exist that “transform the nature of the
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`claim” into patent-eligible subject matter. Id. The additional elements must amount to an
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`“inventive concept” that is “sufficient to ensure that the patent in practice amounts to
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`significantly more than a patent upon the ineligible concept itself.” Id.; see also buySAFE, Inc.
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`v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Only those claims that pass the second
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`test can be deemed patent eligible. Each of the above considerations is a question of law that can
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`be resolved by the Court on summary judgment. Enfish, 2014 WL 5661456, at *1.
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`In Alice, the claims of the patent were directed to a “computer-implemented scheme for
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`mitigating ‘settlement risk’ (i.e., the risk that only one party to a financial transaction will pay
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`what it owes) by using a third-party intermediary.” Alice, 134 S. Ct. at 2351–52. Initially, the
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`Court determined that the claims were directed to an abstract idea because they sought to cover
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`intermediated settlement, a fundamental economic practice long prevalent in our system of
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`commerce. Id. at 2357. Second, the Court found that the claim elements requiring “generic
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`computer implementation” failed to transform the abstract idea of intermediated settlement into a
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`patent-eligible invention. The additional elements were “[p]urely conventional” and amounted
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`to “electronic recordkeeping—one of the most basic functions of a computer.” Id. at 2358–59.
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`It is important to note that in carrying out the first part of the two-part test, the Court
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`should determine the purpose of the claim by determining what the claimed invention is trying to
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`achieve and whether that purpose is abstract. For example, in Alice, the Court determined that
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`the claims were directed to mitigating settlement risk using a third party, even though the claims
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`recited more. Despite these additional elements, the claims were designed to achieve the purpose
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`Case: 1:12-cv-08450 Document #: 95 Filed: 01/30/15 Page 13 of 30 PageID #:1492
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`of mitigating settlement risk. The Supreme Court took a similar approach in Bilski and Mayo by
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`characterizing the claims in terms of the inventions’ purposes: hedging risk and applying a
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`natural law, respectively. Bilski, 130 S.Ct at 3230; Mayo, 132 S. Ct. at 1296–97.
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`Once the purpose of the claims have been determined, a court must determine whether
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`the claim is abstract. Recent decisions have suggested that long-standing, fundamental practices
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`may be abstract. For example, in Bilski, the Supreme Court found unpatentable a claim
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`addressed to hedging risk, a fundamental economic practice long in use. 130 S.Ct at 3230.
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`Similarly, in Alice, the Supreme Court found a claim directed to a computerized method of
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`intermediate settlement unpatentable because it was a long-standing concept. Alice, 134 S. Ct. at
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`2356 (noting that intermediated settlement is a fundamental economic concept and a building
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`block of the economy).
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`I.
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`The Patent Ratings Claims Are Directed to Abstract Ideas
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`ARGUMENT
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`A.
`
`Fundamental Practices and Concepts Capable of Mental Formulation or
`Performance Are Abstract Ideas
`
`The Supreme Court in Alice did not “delimit the precise contours of the ‘abstract ideas’
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`category.” 134 S. Ct. at 2357. However, the Court did rely on earlier precedents to confirm that
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`the claims were directed to an abstract idea. See, e.g., id. at 2356–57. Alice and other Supreme
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`Court cases and Federal Circuit cases teach two principal themes that can be applied to
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`determine whether an abstract idea is claimed.
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`One theme present in these cases is that patent claims to processes or functions that are
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`required to be performed by a conventional computer are impermissibly abstract if the claims
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`could also be performed in the human mind or with pen and paper. See, e.g., Planet Bingo, LLC
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`v. VKGS LLC, 576 Fed. App’x 1005, 1008–09 (Fed. Cir. 2014) (claim for “selecting, storing, and
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`retrieving two sets of numbers” could be done mentally and thus was drawn to patent-ineligible
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`subject matter); CyberSource, 654 F.3d at 1371 (“[M]ethods which can be performed mentally,
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`or which are the equivalent of human mental work, are unpatentable abstract ideas—the ‘basic
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`tools of scientific and technologic work’ that are open to all.”); In re Comiskey, 554 F.3d 967,
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`980 (Fed. Cir. 2009); DietGoal Innovations LLC v. Bravo Media LLC, No. 13 Civ. 8391 (PAE),
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`2014 WL 3582914, at *10 (S.D.N.Y. July 8, 2014).
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`In Gottschalk v. Benson, 93 S. Ct. 253 (1972), the Court invalidated a claim to a method
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`of programming a general-purpose computer to convert binary-coded decimal numbers (“BCD”)
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`into pure binary numbers through the use of a mathematical algorithm. The Court relied on the
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`mental character of the claim:
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`The conversion of BCD numerals to pure binary numerals can be done mentally
`. . . . The method sought to be patented varies the ordinary arithmetic steps a
`human would use by changing the order of the steps, changing the symbolism for
`writing the multiplier used in some step, and by taking subtotals after each
`successive operation. The mathematical procedures can be carried out in existing
`computers long in use, no new machinery being necessary. And, as noted, they
`can also be performed without a computer.
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`Id. at 255. The Supreme Court extended its Benson holding in Parker v. Flook, 98 S. Ct. 2522,
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`2523–24 (1978), where the patent claimed a method for calculating and updating values of
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`“alarm limits” for process variables like temperature in catalytic conversion. In holding the
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`claim to be unpatentably abstract, the Court emphasized that the calculations, although
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`“primarily useful for computerized [applications],” could still “be made [using a ] pencil and
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`paper.” Id.
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`The second theme in the precedents is that claims directed to long-standing, widespread
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`basic practices are too abstract to patent. The claim in Alice was drawn to using a computer as a
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`neutral intermediary to reduce the risk of effecting a settlement. Alice, 134 S. Ct. at 2357.
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`Because intermediated settlement is a widespread and long-standing practice in stock and
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`commodity exchanges (among other institutions), the Court found that the claim, even though
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`long and complex, was directed to “an ‘abstract idea’ beyond the scope of § 101.” Alice, 134 S.
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`Ct. at 2356. Given its focus on a fundamental practice, the claim in Alice was like the claim in
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`Bilski v. Kappos, 130 S. Ct. 3218 (2010), which was lengthy but ultimately directed to using a
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`computer to hedge against the risk of price fluctuations. The concept of hedging is “long
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`prevalent in our system of commerce and taught in any introductory finance class” and was
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`therefore a patent-ineligible “abstract idea, just like the algorithms at issue in Benson and Flook.”
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`Bilski, 130 S. Ct. at 3222.
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`When these principles are applied to the claims of the PR patents-in-suit in the sections
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`below, it becomes apparent that the claims of the PR patents-in-suit are directed to unpatentable
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`abstract ideas.
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`B.
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`The Relevance Patents Are Directed to Unpatentable Abstract Ideas
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`1.
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`Independent Claims 1, 6 and 7 of the ’226 Patent Cover Human
`Performable Mental Processes
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`As with the Supreme Court and Federal Circuit cases cited above, the claims of the ’226
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`Patent are directed to concepts that could be performed in the mind or with pen and paper. (Ex.
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`E; Thomas Decl. ¶ 98.) Claims 1, 6 and 7 simply require using a computer for 1) identifying
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`and counting indirect links between documents in a citation database and 2) applying a probit (or
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`logit) regression model to calculate the probability that a direct citation link exist between two
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`documents. In particular the claims require
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`assigning a first generation relatedness score to said two or more input
`documents, said first generation relatedness score being calculated by a computer
`at least in part by counting a number of shared citational relationships occurring
`between said two or more input document . . . . said first generation relatedness
`score being statistically calculated by said computer to estimate an event
`probability that said at least two or more of said input documents are citationally
`related to one another . . . .
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