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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`IMPROVED SEARCH LLC,
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`Plaintiff,
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`v.
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`AOL INC.,
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`Defendant.
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`Civ. No. 15-262-SLR
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`Brian E. Farnan, Esquire and Michael J. Farnan, Esquire of Farnan LLP, Wilmington,
`Delaware. Counsel for Plaintiff. Of Counsel: Robert J. Yorio, Esquire and Bryan Boyle,
`Esquire of Carr & Ferrell LLP.
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`Jack B. Blumenfeld, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington,
`Delaware. Counsel for Defendant. Of Counsel: Kevin Hardy, Esquire, Samuel Bryant
`Davidoff, Esquire, Andrew V. Trask, Esquire, and Sanjiv P. Laud, Esquire of William &
`Connolly LLP.
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`MEMORANDUM OPINION
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`, 2016
`c:J,J..
`Dated: March
`Wilmington, Delaware
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`RJn-J;N~ge
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`I. INTRODUCTION
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`On March 25, 2015, plaintiff Improved Search LLC ("plaintiff') filed a complaint
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`alleging infringement of U.S. Patent No. 6,604, 101 ("the '101 patent") and 7,516, 154
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`("the '154 patent") against defendant AOL Inc. ("defendant"). (D.I. 1) Presently before
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`the court is defendant's motion to dismiss. (D.I. 9) The court has jurisdiction pursuant
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`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 under the laws of the State of
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`Florida with its principal place of business in Fort Lauderdale, Florida. (D.I. 1 at~ 4)
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`Defendant is a corporation organized under the laws of the State of Delaware with its
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`headquarters in New York, New York. (D.I. 1 at~ 6) The '101 patent, titled "Method
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`and System for Translingual Translation of Query and Search and Retrieval of
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`Multilingual Information on a Computer Network," was filed on June 28, 2000 and
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`issued August 5, 2003. The '154 patent, titled "Cross Language Advertising," was filed
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`on February 8, 2006 and issued on April 7, 2009. Plaintiff accuses the "AOL Search"
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`service of infringing claims 1, 2, 4, 5, 24, 25, and 27 of the '101 patent and claim 1 of
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`the '154 patent. (D.I. 1 at~~ 27, 37)
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`Ill. STANDARD OF REVIEW
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`A motion filed under Federal Rule of Civil Procedure 12(b)(6) tests the sufficiency
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`of a complaint's factual allegations. Bell At/. Corp. v. Twombly, 550 U.S. 544, 555
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`(2007); Kost v. Kozakiewicz, 1 F.3d 176, 183 (3d Cir. 1993). A complaint must contain
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`"a short and plain statement of the claim showing that the pleader is entitled to relief, in
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`order to give the defendant fair notice of what the ... claim is and the grounds upon
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`which it rests." Twombly, 550 U.S. at 545 (internal quotation marks omitted)
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`(interpreting Fed. R. Civ. P. 8(a)). Consistent with the Supreme Court's rulings in
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`Twombly and Ashcroft v. Iqbal, 556 U.S. 662 (2009), the Third Circuit requires a two(cid:173)
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`part analysis when reviewing a Rule 12(b)(6) motion. Edwards v. A.H. Cornell & Son,
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`Inc., 610 F.3d 217, 219 (3d Cir. 2010); Fowlerv. UPMC Shadyside, 578 F.3d 203, 210
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`(3d Cir. 2009). First, a court should separate the factual and legal elements of a claim,
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`accepting the facts and disregarding the legal conclusions. Fowler, 578 F.3d. at 210-
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`11. Second, a court should determine whether the remaining well-pied facts sufficiently
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`show that the plaintiff "has a 'plausible claim for relief."' Id. at 211 (quoting Iqbal, 556
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`U.S. at 679). As part of the analysis, a court must accept all well-pleaded factual
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`allegations in the complaint as true, and view them in the light most favorable to the
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`plaintiff. See Erickson v. Pardus, 551 U.S. 89, 94 (2007); Christopher v. Harbury, 536
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`U.S. 403, 406 (2002); Phillips v. Cnty. of Allegheny, 515 F.3d 224, 231 (3d Cir. 2008).
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`In this regard, a court may consider the pleadings, public record, orders, exhibits
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`attached to the complaint, and documents incorporated into the complaint by reference.
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`Tellabs, Inc. v. Makar Issues & Rights, Ltd., 551 U.S. 308, 322 (2007); Oshiver v. Levin,
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`Fishbein, Sedran & Berman, 38 F.3d 1380, 1384-85 n.2 (3d Cir. 1994).
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`The court's determination is not whether the non-moving party "will ultimately
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`prevail" but whether that party is "entitled to offer evidence to support the claims."
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`United States ex rel. Wilkins v. United Health Grp., Inc., 659 F.3d 295, 302 (3d Cir.
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`2011 ). This "does not impose a probability requirement at the pleading stage," but
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`instead "simply calls for enough facts to raise a reasonable expectation that discovery
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`2
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`will reveal evidence of [the necessary element]." Phillips, 515 F.3d at 234 (quoting
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`Twombly, 550 U.S. at 556). The court's analysis is a context-specific task requiring the
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`court "to draw on its judicial experience and common sense." Iqbal, 556 U.S. at 663-64.
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`IV. DISCUSSION
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`A. 35 U.S.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. Kappas, 561 U.S. 593,
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`601 (2010) ("Bilski II"); Diamond v. Chakrabarly, 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. § 1 OO(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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`3
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`U.S. at 602 (quoting Funk Bros. Seed Co. v. Kala 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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`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/"). 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). 1
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`1 The machine-or-transformation test still may provide a "useful clue" in the second step
`of the Alice framework. U/tramercial, 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-
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`4
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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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`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, 2 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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`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.
`2 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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`5
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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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`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. 3 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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`3 In DOR, representative claim 19 of U.S. Patent No. 7,818,399 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
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`6
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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, the 399 patent'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, U/tramercial, buySAFE,
`Accenture, and Bancorp.
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`(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
`(B) 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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`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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`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-
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`implemented invention under§ 101.4 For instance, in Intellectual Ventures, a case that
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`also presented claims directed at websites, 5 the Court explained that, "[a]t step one of
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`4 See, e.g., In re Smith, Civ. No. 2015-1664, 2016 WL 909410 (Fed. Cir. Mar. 10, 2016);
`Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016);
`Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, Civ. No. 2015-1411,
`2015 WL 9461707 (Fed. Cir. Dec. 28, 2015); Versata Dev. Grp., Inc. v. SAP America,
`Inc., 793 F.3d 1306 (Fed. Cir. 2015); Intellectual Ventures, 792 F.3d 1363; Internet
`Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015); OIP Techs., Inc.
`v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015); Al/voice Devs. US, LLC v.
`Microsoft Corp., 612 Fed. Appx. 1009 (Fed. Cir. 2015); Content Extraction and
`Transmission LLC v. Wells Fargo Bank, Nat'/ Ass'n, 776 F.3d 1343 (Fed. Cir. 2014).
`5 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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`8
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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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`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 1370.6
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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."7 Id. at 1370. The Federal Circuit explained:
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`Intellectual Ventures, 792 F.3d at 1368.
`6 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).
`7 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
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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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`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.[81
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`Id. at 1371 (citations omitted).
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`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 programs9 to the almost complete acceptance of such, 10 to
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`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.
`8 But recall the "store within a store" pre-Internet analog rejected in DOR.
`9 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.
`10 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).
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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
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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), 11 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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`11 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).
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`law, the§ 101 analysis should be, and is, a difficult exercise. 12 At their broadest, the
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`various decisions of the Federal Circuit13 would likely ring the death-knell for patent
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`protection of computer-implemented inventions, 14 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 used 15 or the steps claimed 16 - that transforms an
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`abstract idea into patent-eligible subject matter is a challenging task. In trying to sort
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`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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`12 And, therefore, not an exercise that lends itself to, e.g., shifting fees pursuant to 35
`U.S.C. § 285.
`13 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.
`14 Ironically so, given the national concerns about piracy of American intellectual
`property.
`15 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.
`16 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.
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`judgment on the pleadings. The second requirement, which may well involve issues of
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`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.
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`B. Claim Construction
`
`The Federal Circuit has "never set forth a bright line rule requiring district courts
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`to construe claims before determining subject matter eligibility." U/tramercial, LLC v.
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`Hu/u, LLC, 657 F.3d 1323, 1325 (Fed. Cir. 2011), vacated sub nom. WildTangent, 132
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`S.Ct. 2431 (2012). "Although the determination of patent eligibility requires a full
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`understanding of the basic character of the claimed subject matter, claim construction is
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`not an inviolable prerequisite to a validity determination under§ 101." Content
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`Extraction, 776 F.3d at 1349 (citing Ultramercial, 772 F.3d at 714-15; Bancorp, 687 F.3d
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`at 1273-74). However, it may be "desirable-and often necessary-to resolve claim
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`construction disputes prior to a§ 101 analysis." Bancorp, 687 F.3d at 1273-74.
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`The parties have not raised issues of claim construction. The parties argue for
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`and against invalidity based on the "character" of the patents and the claim language.
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`Having reviewed the patents and briefing, the court concludes it may proceed with a§
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`101 analysis.
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`C. The Patents-in-Suit
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`The '101 patent "relates generally to translation of query and retrieval of
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`multilingual information on the web." It describes "a method and system for conducting
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`a translingual search on the Internet and accessing multilingual websites through
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`dialectal standardization, pre-search translation and post-search translation." ('101
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`patent, 1 :9-14) The specification states that "most of the [Internet] search tools cater
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`primarily to the needs of the English speaking Internet user. This attribute renders
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`these search tools almost useless to the non-English speaking Internet users who
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`constitute as much as 75% of the Internet user population." ('101 patent, 2:14-18) The
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`patent provides the following example of the problem:
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`[W]hen preparing a Chinese To-fu dish which calls for "shrimp caviare," a
`search was made on a super engine, such as Altavista.com to check the
`availability of "shrimp caviare" anywhere in the world. A search using
`Altavista.com under "all language" revealed no matching results under
`either "English" or "Chinese" setting. A search was then made for the
`English term "shrimp caviare" at China.com, which is a Chinese search
`engine, but to no avail. Subsequently, the term "shrimp caviare" was
`looked up in Chinese to find its Chinese equivalent. The Chinese
`equivalent thus found was "xiazi" (meaning, "shrimp roe"). This word was
`then used for making the search on China.com and yielded as many as
`twenty-four hits.
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`('101 patent, 2:32-44)
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`The patent purports to solve this problem with a three-stage process and system:
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`"dialectal standardization, pre-search engine translation, and post search engine
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`translation." ('101 patent, 5:1-4) The dialectal standardization identifies a keyword from
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`an input query and standardizes it to a commonly known word. ('101 patent, 5:24-67)
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`Examples of dialectal variations in British versus American English "include centre vs.
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`center, lorry vs. truck, queue vs. line and petrol vs. gasoline." ('101 patent, 5:40-43)
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`The pre-search translation "translates the standardized keyword into an equivalent in a
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`target language." The translated keyword is then used in a search engine of the target
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`language. ('101 patent, 6:5-13) The post-search translation