Case 1:14-md-02534-TSE-JFA Document 202 Filed 02/06/15 Page 1 of 50 PageID# 4689
`F
`r1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
`
`FEB - 6 2015
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`•
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`MDLNo. I:14md2534
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`)
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`) )
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`) )
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`IN RE: TLI COMMUNICATIONS LLC
`PATENT LITIGATION
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`This document relates to ALL member cases
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`MEMORANDUM OPINION
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`The remaining, but still numerous, defendants in this multidistrict litigation ("MDL")
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`patent infringement action have filed a consolidated motion to dismiss that raises, inter alia, the
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`following two important and potentially dispositive questions:
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`(1) Whether the patent at issue, United States Patent 6,038,295, titled an "Apparatus and
`Method for Recording, Communicating and Administering Digital Images"
`(hereinafter '"295 patent"), is invalid because it claims patent-ineligible subject
`matter under 35 U.S.C. § 101: and
`
`(2) Whether Claims 1 and 25 of the '295 patent contain means-plus-function terms, and if
`so, whether these claims are fatally indefinite under 35 U.S.C. § 112(1) for failing to
`disclose corresponding structure.
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`For the reasons that follow, defendants' motion to dismiss on § 101 and § 112(1) grounds must
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`be granted:
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`(1) The '295 patent is directed to an abstract idea and lacks an inventive concept, making
`it ineligible for patent protection under § 101; and
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`(2) Claims 1 and 25 of the '295 patent contain means-plus-function terms without
`disclosing corresponding structure and these claims arc therefore fatally indefinite
`pursuant to § 112(f).
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`1Initially, plaintiff sued 30 defendants in this consolidated MDL action. Since then, stipulations
`of dismissal have been filed with respect to the following defendants: (1) Max Media LLC, (2)
`For a Song Inc., (3) WIII, Inc., (4) Photobucket.com, Inc., (5) Smugmug, Inc, (6) Lucidiom, Inc.,
`and (7) Richmond Camera Shop, Inc.
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`1
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`Facebook/Instagram Ex. 1017
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`001
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`A.
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`Plaintiff TLI Communications LLC (“Tl..l”), a Delaware limited liability corporation, is a
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`non-producing entity and the owner by assignment of the ‘295 patent? The twenty—three
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`remaining defendants in this consolidated MDL action include various social media and software
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`entities.3
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`The ‘29S patent, titled an “Apparatus and Method For Recording, Communicating and
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`Administering Digital Images,” is directed to an apparatus and method that
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`simplifies transmission ofdigitai images which have been recorded, optimizes the
`communication of the image data and provides a method for administering the storage of
`the digital images, which is simple, fast and surveyable so that the digital images may be
`archived.
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`‘295 patent, co1.1_. 1.66-eol.2_. 1.4. The ‘295 patent has 26 claims: 3 independent claims and 23
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`dependent claims.
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`Independent Claim 1
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`is a system claim. independent Claim 1? is a method
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`claim, and independent Claim 25 is an apparatus claim.
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`Independent Claim 1, a system claim, consists 01':
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`A communication system for recording and administering digital images,
`comprising:
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`2 11 is undisputed that plaititiff owns all right, title and interest in the ‘295 patent and is therefore
`a proper plaintiff. See Sigma/k Tec'fm0lugfc.s' LLC v. AOL £116., 910 F. Supp. 2d 850, 860 (ED.
`Va. 2012) (noting that assignee possessed “core rights to practice the patent and to enforce the
`patent”). See (#50 Morron-'
`‘.-'. Micmsofi C.'m'p., 499 F.3d 1332, 1339 (Fed. Cir. 2007) (noting that
`assignee held the “entire bundle ofstielts" with respect to the patent and was entitled “to sue for
`infringement in its own name").
`
`3 The remaining defendaiits are: (l ) AV Automotive, I_.LC., (2) Apple Inc., (3') Hall Automotive.
`LLC. (4) Yahoo! Inc., (5) 'I'umlbr_. Inc., (6) Twitter. Ine._. (7) Google, Inc., (8) Pinterest, lnc., (9)
`Facebook, Inc, (10) lnstagram, LLC, (1 1) Dropbox Inc., (12) lACfInterActiveCorp._. (13)
`CityGrid Media LLC, (14) Vimeo LLC, (15) Imgur LLC, (16) Shutterlly Inc., (17) 'I'ripAdvisor
`Inc., (18) TripAdvisor LLC, (19) Snapchat Inc., (20) Yelp lnc., (21) Capitol One Financial
`Corporation, (22) Capital One, N./\., and (23) Capital One Services, LLC.
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`Facebook/Instagram Ex. 1017
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`02
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`Facebook/Instagram Ex. 1017
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`002
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`at least one telephone unit including:
`a telephone portion for making telephone call,
`a digital pick up unit for recording images,
`a memory for storing digital images recorded by the digital
`image pick up unit,
`means for allocating classification information prescribed
`by a user of said at least one telephone unit to characterize
`digital images obtained by said digital pick up unit,
`a processor for processing the digital images recorded by
`the digital image pick up unit;
`a server including the following components:
`a receiving unit for receiving data sent from said at least
`one telephone unit,
`an analysis unit for analyzing the data received by the
`receiving unit from the telephone unit,
`the data including classilication information to characterize
`the digital images,
`a memory in which at least the digital images are archived,
`the archiving taken [sic] into consideration the classifying
`inl'ormation; and
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`a transmission system coupled to said at least one telephone
`unit and to the said server to provide for transmission of
`data from said at least one telephone unit and to the said
`server. the data including at least the digital images
`recorded by the digital image pick up unit and classification
`i1ifo1'1natio1i.
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`The claimed communication system describes two components: (1) at least one telephone
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`unit and (2) a server. The "295 patent specilication describes the telephone unit as including the
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`“standard features ofa telephone unit including, for example, an earphone .
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`.
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`. a keypad .
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`.
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`which serves as an operating field for the telephone unit .
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`.
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`. as well as a microphone .
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`.
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`"295
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`patent, col.5, 1155-58. As Claim 1 indicates, the telephone unit consists ofa digital pick up unit,
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`a memory, a means for allocating classification information, and a processor. The digital image
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`pick up unit is integrated into the telephone unit and operates as a “digital photo camera ofthe
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`type which is known.” M, col.5, ll.59-6}, col.6,ll.1-2. Thus, “recording images” is the function
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`of the digital image pick up unit. M, eol.S_. 1.59. These images may be compressed using “still
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`picture image data compression methods” and are then stored using the telephone unit memory.
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`003
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`Facebook/lnstagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`003
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`M, col.6, 11.2-6. Also stored with the digital images is ciassitication information—information
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`associated with the digital iinages"i——wliich is allocated using “the allocation means.” Id. co1.6,
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`11.46-4?‘. The telephone unit also includes a data processor which processes the digital images
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`and can be used for other processing tasks such as pattern recognition or voice recognition. M,
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`eol.6, 11.8-12.
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`The second part ofthe comintiiiication system is the server which is comprised ofa
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`receiving unit for “receiving the data that is sent from the telephone unit,” and an analysis unit,
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`which serves to “analyze the image content and record the image according to the meaning
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`derived from the image analysis.“ It/., col.5, 11.6-8, col.6, 1.65-col.7. 1.1. The data is sent from
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`the telephone unit to the receiving unit “via the transmission systcin." Id._. col.5, 11.65;’. The
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`server itself then provides a "'inemory .
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`.
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`. for storing the data, as well as the digital images which
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`[are] contained in the data." lei, col.5, 11.1 1-13. The classiiication information is transmitted to
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`the server front the telephone unit and is “used for archiving the images in the server memory.“
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`Id, co1.?, 1152-55. The classilieation information “charactcrize[s] the digital images." Id. col.2,
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`1.18.
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`Dependent claims 2-8 build upon Claim 1 by adding the following limitations to the
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`communication system: wirclessly coupling the transmission system to a telephone unit (Claim
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`2),’ implementing a speech recognition unit (Claim 3),
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`incorporating audio data as the
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`4 lmportantly. the term “classil'zcation information" is a disputed claim term, as plaintiff argues
`that "classification in1'ormation” should be given its plain and ordinary meaning and needs no
`filrthcr construction. Deliendaiits argue instead that “classilieation iI‘ll‘OI'I‘l"lElli0I]” should be
`construed to mean “information explicitly input by a user to characterize an individual image."
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`3 See ‘295 patent, col.9, 11.13-15 (“A communication system as claimed in claim 1, wherein said
`transmission system is wirelessly coupled to said at least one telephone unit."').
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`classilication information (Claim 4),? including spoken language as the elassilication iiiforinatioii
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`(Claim 5),“ including time information as the classilication ini'ormation, (Claim 6),” and
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`incorporating the telephone number (Claim T)” and location memory (Claim 8)” as the
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`classification inlbrmation prescribed by the user. Dependent claim 9 also incorporates the
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`“communication system as claimed in claim 1," but specifies that the "server includes a data
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`bank system.” Id, col.9, ll.41-42.
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`Dependent claim 10 adds an “image analysis unit for determining quality of the digital
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`images." M., col.9. ll.4=l~-'45. And dependent Claim ll includes a “control unit for controlling
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`resolution of digital images in said at least one telephone unit.” fail, col.9, ll.4?'-4‘). Dependent
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`claim 15 also includes a control unit, but the control unit controls “a transmission rate 01' data
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`used in the transmission system for transmission of the digital images." In’., col.9. 11.60-62.
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`Dependent claim 16 provides for “a control unit for controlling resolution of digital images in
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`'
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`'
`Li.
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`f
`‘See icil, col.9, ll. 1 6-l8 ( A communication system as claimed in claim 1, wherein said at least
`one telephone unit further comprises a speech recognition unit”).
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`? Sec £13., col.9, 11.19-22 (“A communication system as claimed in claim 1, wherein said at least
`one telephone unit further comprises means for incorporating audio data as the classification
`information”).
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`3
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`See id. col.9_. 11.23-27 ( A communication system as claimed in claim 4, wherein the audio data
`is language spoken into said at least one telephone unit, said at least one telephone unit including
`means for including spoken language as the classification inl'ormation.”).
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`9 See id. col.9_. 1128-32 (“A communication system as claimed in claim 1. wherein said
`connnunication system includes a means for incorporating time information of image recording
`andfor image transmission of image data as the classification in t‘ormation.”).
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`1 }See ml, col.9, ll.33-36 ( A communication system as claimed in claim 1, wherein said
`classification inl’ormation includes at least a telephone number of said at least one telephone unit
`anclfor a telephone number of said server.”).
`
`'1 See i‘ci’., col.9, ll.3?-40 (“A communication system as claimed in claim 1, wherein said
`classification itilcrinatioti includes particular location inlbrniatioii in nicinory at which the digital
`images are to be stored").
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`U:
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`005
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`005
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`said at least one telephone unit and controlling a transmission rate ofdata used in the
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`transmission system for transmission of the digital images." Iii, eol.9, 11.64-67'. Finally,
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`dependent claims 12 and 13 provide For analysis of speech signals (Claim 12)” and having the
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`server include a speech synthesis unit (Claim 13),” while dependent claim 14 provides that the
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`server is connected to the telephone unit via the Internet.”
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`The next independent claim in the ‘295 patent is the method claim, Claim 17, which
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`describes:
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`A method for recording and administering digital images, comprising the steps oi‘:
`recording images using a digital pick up unit in a telephone unit,
`storing the images recorded by the digital pick up unit in a digital form as
`digital images,
`transmitting data including at least the digital images and classification
`information to a server, wherein said classification information is
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`prescribable by a user of the telephone tiiiit for allocation to the digital
`images,
`receiving the data by the server,
`extracting classification iiiforrnation which characterizes the digital
`images from the received data, and
`storing the digital images in the server, said step of storing taking into
`consideration the classification information.
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`Specifically, the “images are recorded with the digital image pick up unit that is integrated into
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`the telephone unit.” ((3., col.7, 1157-59. The images are next “stored in digital form in the
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`telephone unit memory .
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`.
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`. as digital images.” M, eolfi’, 11.60-61. The images are then
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`transmitted “from the telephone unit .
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`.
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`. to the server. .
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`. via the transmission system." M,
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`1“ bee ml. co1.9, ll.30-33 ( A conimiinication system as claimed in claim 1, wherein said analysis
`unit includes means for analyzing speech signals, said speech signals being provided as portions
`ol'the classification i1ilbrmation.”).
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`3 See i'i:i’.. col.9. ll.54~S5 “A communication svstem as claimed in claim 1 wherein said server
`d
`'.'
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`I
`includes a speech synthesis unit").
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`H See i'd._. col.9._ 1156-58 (“A cornmanication system as Claimed in claim 1, wherein said server is
`connected to the said at least one telephone unit via the Internet”).
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`Facebook/lnstagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`col.7', ll.6l-64. The data is received by “the server .
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`. and the classification information .
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`which characterixc[s] the digital images [is] extracted .
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`.
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`. from the data received in the server.”
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`M, col.'?', ll.64-67. Finally, the digital images along with “possibly the classification information
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`.
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`. and potentially further information that characterizelsl or describels] the digital images are
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`stored .
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`.
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`. in the server." 1:3,, eol.7_. l.67-eol.S. L3. The specification notes that during the
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`“storing step, the classification information .
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`.
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`. is taken into consideration.” Id, col.8, 11.3-5.
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`And importantly, the “classi1ication iiiibrmation .
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`. may be prescribed by 11 user of the telephone
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`unit." M, col.8, 11.6-'z'.
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`Claims 18-24 are dependent upon Claim 1? and describe specific types of data which are
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`recognized by the system including: compressed recognized speech (Claim 18),” audio data
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`(Claim 19),” audio data consisting of spoken language (Claim 20),” time inI'ormation relating to
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`the recording and transmission ofthe image (Claim 21).” the telephone number associated with
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`the telephone unit andfor the server (Claim 22)_.19 location information related to where the
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`digital images are to be stored (Claim 23),” and digital character information (Claim 24).?”
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`'5 See id, col.l0, ll. 1 8-20 (“A method as claimed in claim 1?, further comprising: recognizing
`speech spoken into the telephone unit and storing the compressed recognized speech."').
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`1“ See id, co1.10, ll.21-24 (“A method as claimed in claim 17, further comprising the step of:
`incorporating audio data as the classification irtformatio1i.”).
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`1? See it/., c0l.10, ll.2S-26 (“A method as claimed in claim 19, wherein the audio data includes
`language spoken into the telephone unit.”).
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`is See .r'cf._. col.10, ll.27'-31 ("A method as claimed in claim 1?, further comprising the step of:
`providing time information of recording of the image and/or transmission of the data as a part of
`the classification i11forntatiot1.").
`
`'9 See r'a’._. co1.10, ll.32-36 (“A method as claimed in claim 17, further comprising the step of:
`providing a telephone number ofthe at least one telephone unit andfor ofthc server as a part of
`the classilication in1'o1mation."’).
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`007
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`007
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`The third and final independent claim in the ‘295 patent is Claim 25, an apparatus claim
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`that claims:
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`A digital image recording and administering apparatus, comprising:
`a portable telephone unit, including:
`a telephone portion having a keypad, :1 microphone, a speaker,
`an antenna, and a transmitterfrecciver for telephone
`communications;
`
`a digital still camera in said portable telephone unit, said digital
`still camera having a lens, a shutter and a digital still image pickup;
`at data processor connected to receive digital still image data from
`said digital still image pickup and perform a compression to
`generate compressed digital still image data;
`a memory in said portable telephone unit, said memor_v connected
`to receive and store said compressed digital still image data from
`said data processor;
`a classification information unit in said portable telephone unit,
`said classification information unit allocating classifying
`information pertaining to the digital still image as prescribed by a
`user of the portable telephone unit to the digital still image data,
`said classification information unit including means to receive
`audio information from the user as the classification information
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`and to allocate the classification information to the corresponding
`digital still image data;
`a server computer, including:
`a receiving unit operable to receive data sent from said portable
`telephone unit, said received data including the compressed
`digital still image data;
`an analysis unit connected to said receiving unit to extract the
`classification information from data sent from said portable
`telephone unit, said analysis unit extracting the classification
`information corresponding to the audio information from the user
`and allocated to the digital still image data;
`a memory in said server for storing the compressed digital still
`image data, said memory providing access to said compress [sic]
`digital still image data as an image archive in accordance with
`the classification information; and
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`
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`2“ See id, col. 1 O, 11.3 7"-41 ("A method as claimed in claim 17, further comprising the step of:
`providing location information in memory at which the digital images to be stored as a pai't of
`the classification informationf’).
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`21 See id., col.l{}, 11.43-46 ("A method as claimed in claim 1?, further comprising the step of:
`providing digital character information as part of the classification in formation").
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`a transmission system operable to communicate between said
`portable telephone unit and server.
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`Claim 26, which depends upon claim 25, includes the limitation that the "classification
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`infoI'tnation in said portable telephone unit includes a speech recognition ttnit which converts
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`said audio information from said user to text data that is allocated to the digital still image data.”
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`M, col.12_. ll.9-13.
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`B.
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`Plaintiff initially brought suit for patent infringement against sixteen defendants in the
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`United States District Court for the District of Delaware on November 18, 2013. Defendants
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`jointly moved to dismiss plaintit‘l‘s complaints on January 17, 2014. On February 10, plaintiff
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`filed amended complaints in the United States District Court for the District of Delaware against
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`ten oi‘ the defendants, and voluntarily dismissed the other six pending soils. The voluntarily
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`dismissed cases were imrnediately re-tiled against the same defendants in the United States
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`District Court for the [Eastern District ofVirginia, along with an additional Case which was filed
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`against two smaller Virginia companies.
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`In response, on February 26, defendant Facebook filed
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`a motion with the Judicial Panel on i\/lultidistrict Litigation (“Jl’ML"’) to transfer and consolidate
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`pretrial proceedings.
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`On June 12, 2014, the JPML transferred all 1? itifringeinent suits to the [Eastern District
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`of\"irginia pursuant to 28 U.S.C. § 140?, citing common questions of fact along with
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`convenience as the primary reasons for consolidating all 17 individual suits into a single
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`multitlistrict litigation.23 Shortly after the transfer, an initial Order issued, governing the general
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`practice and procedure in all of the transferred aetions.2'i
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`Tltereafier. on July 1 1, defendants Faeehook and Instagram moved to stay the
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`multidistriet litigation pending a petition for imerpm'!e.r review by the Patent and Trademark
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`Olliee (“l”l‘0”) as to the validity of the ‘295 patent. The remaining defendants in this MDL
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`action subsequently joined the motion. After full briefing and argument, the motion to stay was
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`granted pending the PTO's decision on whether to institute an t‘nrerp:.rr.'e.r proceeding.“ On
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`September 15, the Patent Trial and Appeal Board ("‘PTAB”) denied the petition for in.-'et'pCu'.‘e.<.'
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`review, linding that defendants had not demonstrated a reasonable likelihood that at least one of
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`the challenged claims of the ‘295 patent was unpatentablegs Two days later, the stay in this
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`forum was lifted and a Revised Scheduling Order issued governing the briefing with respect to
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`defendants’ individual motions to dismiss and claim construction.26 An initial status conference
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`was then held in this matter, after which the dates in the Revised Scheduling Order were further
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`revised.27 In accordance with the October 16 Order, defendants filed a single consolidated
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`motion to dismiss plaintil'l"s complaint pursuant to Rule l2(b)(6), Fed. R. Civ. P., arguing,
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`among other things, that the ‘29S patent is directed to ineligible subject matter under 35 U.S.C. §
`
`33 See In re.‘ TL]Comm1utica'ti0n.r LLC!’a!em [.r't:'g(m'un, 26 F. Supp. 3d 1396, 1397-93
`(J.P.M.L. 2014).
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`23 See In re: TL! Crmtmimieations :’.I.C1’c:temL.f!igaIfrm, No. 1:14md?.S3='l (13.1). Va. July 10,
`2014) (Initial Order).
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`34 See In re.‘ TL] Commmri.:.'.cHf()n.s’ LLC Parent Ulfgctlion, No. l:l4md2534 (ED. Va. Aug.
`2014) (Order).
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`1 l,
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`35 See Facebook, hie. v. TL} Comm:m'ica.‘irm's LIL‘, Case IPRZUI4-00566, 2014 WL 4644360. at
`*1 (l"I'Al3 Sept. 15, 2014) ("hereinafter “I"l‘AB Decision").
`
`26 See In re.‘ TL)’ Commmt.ic(:!iort.s' 1.LCI"a!em Litigation, No. l:l4I'nd2534 (ill). Va. Sept. l?',
`2014) (Revised Scheduling Order).
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`27 See In re.‘ TL! Commmticu!io.=t.s' LLC )"a{em Lftigafioit, No.
`2014) (Order).
`
`l : l4md2534 (ED. Va. Oct. 16,
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`10
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`010
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`010
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`101 and that multiple claims in the ‘295 patent are indefinite under 35 U.S.C. § 1 12(1) because
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`they contain means-plus-function terms without disclosing corresponding structure. The parties
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`fully briefed the issues raised in the dismissal motion.“ Furtlicriiiore, in accordance with the
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`October 16 Order, the parties fully briefed their positions on the disputed claim temis pursuant to
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`Mcir:’mmri 1-’.
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`I-l”*.s‘riv'eii-' hi.i‘Ii':riiieiir.s', Inc, 517 U.S. 370 (1996).
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`lixtensivc oral argument on
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`defendants‘ motion to dismiss and the claim term disputes was held at the University of Virginia
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`School 0fLaw on Tuesday, January 20, 2015 from 1 pm. to 5 [).[I1.,29 and at the Albert V. Bryan
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`Courthotise in Alexandria on Friday, January 30. 2015 from 2 pm. to 5 p.m. Supplemental oral
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`argument on selected issues was held via a telephone conference on Tuesday, February 3, 2015
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`from 3:30 pm. to 4:15 p.m. As such, defendants’ motion is now ripe for disposition.
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`II.
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`Section 101 of Title 35. which defines the subject matter eligible for patent protection,
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`provides as follows:
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`Whoever invents or discovers any new and useful process, machine, maiiufacture. or
`composition of matter, or new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
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`In two recent clecisions—i'vIayr; CoH.cibrJi'ar1'i=e Sei'i:'s. v. Pr‘0nieH'ieii.s' Lcihx, Inc., 132 S.Ct. 1289
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`(2012) and Aiicre Corp. Pry. Ltd. v. CLS‘ Bank hi: ’i., 134 S.Ct. 2347" 20l4)—the Su rcine Court
`P
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`invalidated patents for failing to pass muster under § 101, and in doing so, significantly altered
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`2s
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`.
`.
`.
`.
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`.
`.
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`Notably, the parties bl'lClS addressing defendants’ motion to dismiss totaled more than 1 10
`pages. not including the voluminous exhibits accompanying the briefs.
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`29 Oral argument at the University ofVirginia School of Law occurred as a result of an invitation
`by Professors John Dtiffy and Margo Bagley, well-known scholars and teachers of intellectual
`property law at the University of Virginia School of Law.
`It was their view and this court's View
`that it would be beneficial and perhaps even inspii'ational to students of their patent law class to
`see significant and topical issues in patent law argued by accomplished and experienced lawyers.
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`11
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`011
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`011
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`

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`the § 101 legal landscape. Prior to xilice and Mayo, courts generally regarded § 101 as no more
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`than a "coarse [patent] eligibility filter." 1t'e.vcm'ch Corp.
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`'I'ec'r':.s-., Inc. 1'.
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`.-1-!t'cm.rQfi' Corp, 627
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`F.3d 859, 869 (Fed. Cir. 2010). That description is no longer accurate; Aifcc and Maya make
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`clear that § 101 is now a much liner patent eligibility liltcr. As one district court accurately
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`noted, the Supreme Court, in its last few terms, “has indicated that patentability [under § 101] is
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`a higher bar.” Er.ji.s'}1, LLC v. Mfcro.m_fi Corp, No. 2:12-cv-073360, 2014 WL 5661456, at *2
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`(C.D. Cal. Nov. 3, 2014).
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`In part, this shift in the role o1'§ 101 is driven by the concern that a
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`"robust application of section 101 ensures that the nation‘s patent laws remain tethered to their
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`constitutional moorings.” I/1’ Engine, htc. v. /IOL Im:., 5?6 1’. App’); 982, 996 (Fed. Cir. 2014)
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`(Mayer, 1., concurring).'m
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`Section 101's broad language provides little specific or detailed guidance as to what
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`constitutes patcntable subject matter. Nonetheless, over the years, the Supreme Court has carved
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`out three subject matter categories that are not patentable: (i) laws of nature, (ii) natural
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`phenomena, and (iii) abstract ideas. See zlfice, 134 S.Ct. at 2354.
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`3
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`1 Laws oi‘ nature, natural
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`3° It is important to note that in conjunction with applying a more stringent § 101 standard. courts
`are also adjudieating § 101 challenges earlier in the litigation process, as “|:s]ubject matter
`eligibility challenges provide the most eflieient and ellcetive tool for clearing the patent thicket,
`weeding out those patents that stifle innovation and transgrcss the public domain.” Ui!!'(t!?It’!‘L'i(I(
`Inc. v. I-Infra, LLC, 772 F.3d '?09, 719 (Fed. Cir. 2014) (Mayer, J., concurring). As such, "claim
`construction is not an inviolable prerequisite to a validity determination under § 101." Bcun:'nrp
`Servs, L. 1.. C. v. SI£I1L.fifi.‘ z1.S'Sl':‘l". C0. 0_f(.‘rmrrda, 687 F.3d 1266, 12773 (Fed. Cir. 2012).
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`31 Nor are these exceptions new; the Supreme Court has “interpreted § 101 and its predecessors
`in light o1'[these exceptions] for more titan 150 years.” .r1.’r'ce, 134 S.Ct. at 2354. Although these
`three exceptions are not mentioned in the statute, they are "consistent with the notion that a
`patentable process must be new and useliul." Dt'e{Gom' Imtrn'u!.*'ons LLC 1'. Bravo .5.-fedir: UL‘,
`No. 13 Civ. 8391 (PAE), 2014 WL 3582914, at *5 (S.D.N.Y. July 8, 2014). One noted
`comntentator has observed that the creation 01‘ these exceptions was necessary for a full
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`1’)
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`012
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`012
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`

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`phenomena, and abstract ideas are excluded from the protection of§ 101 in large measttt'c
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`because "monopolization ofthose tools through the grant ofa patent might tend to impede
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`innovation more than it would tend to promote it." 1-’t'l'.{:y0, l32 S.Ct. at 1293. At the Same time.
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`however, the Supreme Court has recognized that each of these three excluded categories must
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`have limits, “lest it swallow all of patent law," because, at some level, “all inventions .
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`.
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`.
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`embody, use, retleet, rest upon, or apply laws ofnature, natural phenomena, or abstract ideas.”
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`./Mace, 134 S.Ct. at 2354.
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`It follows that an invention is not ineligible for patent protection
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`simply because it involves one ofthe three common law exceptions to § 101. See id.
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`Thus, the Supreme Court has crafted a two-step analysis to guide lower courts in the task
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`of distinguishing subject matter eligible for patent protection under § 101 from subject matter
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`ineligible for such protection. The tirst step in the analysis is to determine vvhetlter the claims at
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`issue are directed to one of‘ those "patent-ineligible concepts [laws ofnature, natural phenomena,
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`or abstract ideas]." Id. at 2355 (citing .»’t4'uyo, 132 S.Ct. at 1296-97). An idea is abstract it'it has
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`“no particular concrete or tangible form.” Uitramerciai, TF2 F.3d at 715. An abstract idea need
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`not be a “preexisting, fundamental truth” and can instead merely be a “longstanding commercial
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`practice." Ai’.='cc. 134 S.Ct. at 2356. And a "method that can be performed by ituman thought
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`alone” is an abstract idea. CybeI‘Source Corp. tt. Remit Deci.s'i(m.s', Inc., 654 l".3d 1366, 13753
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`(Fed. Cir. 201 1).
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`In determining whether an idea in a software patent is abstract, courts must be
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`careful to avoid allowing the typicaliy convoluted claim language-—“patent-esc"-—-to obfuscate
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`the general purpose and real essence of'sot‘t\vare patent claims.
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`implementation ot'§ 101 by designating certain categories ofsubjeet matter as ineligible for
`patent protection under § 101 for policy reasons. See Mark A. Lemley et al., L.f'fE3 ..-ifier B."t'.t‘ki_. 63
`STAN. L. REV. 1315, 1328 (2011).
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`I3
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`013
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`Facebook/Instagram Ex. 1017
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`Facebook/Instagram Ex. 1017
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`013
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`If it is determined that a claim is directed to an abstract idea then the next step in the
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`§ 101 analysis is to ascertain whether the patent Contains or is directed to an "inventive concept"
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`that serves to “transform the nature ofthe claim” into patenbeligibie subject matter. A!r'(:e, 134
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`S.Ct. at 2355.
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`In this regard. it is settled that “well-understood, routine, conventional activity” is
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`insuftieient to constitute an inventive concept. Mayo, 132 S.Ct. at 1294. This is so because :1
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`claim that recites an abstract idea must include “additional features to ensure that the [claim] is
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`more than a drafting effort designed to monopolize the [abstract idea].” Alice, 134 S.Ct. at 235?’
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`(internal quotation marks and citations omitted). And limiting an abstract idea to a "particular
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`technological environment” is similarly insufficient to pass muster under step two