Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 1 of 28 PageID #: 995
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`INVENTOR HOLDINGS, LLC,
`
`Plaintiff,
`
`v.
`
`GAMELOFT, INC.,
`
`Defendant.
`
`INVENTOR HOLDINGS, LLC,
`
`Plaintiff,
`
`v.
`
`GLU MOBILE INC.
`
`Defendant.
`
`INVENTOR HOLDINGS, LLC,
`
`Plaintiff,
`
`v.
`
`KING.COM LTD.,
`
`Defendant.
`
`INVENTOR HOLDINGS, LLC,
`
`Plaintiff,
`
`v.
`
`NGMOCO, LLC,
`
`Defendant.
`
`C.A. No. 14-1067-LPS
`
`C.A. No. 14-1068-LPS
`
`C.A. No. 14-1070-LPS
`
`C.A. No. 14-1071-LPS
`
`Petitioner Ex. 1010 Page 1
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 2 of 28 PageID #: 996
`
`INVENTOR HOLDINGS, LLC,
`
`Plaintiff,
`
`v.
`
`ROVIO ANIMATION COMPANY,
`
`Defendant.
`
`INVENTOR HOLDINGS, LLC,
`
`Plaintiff,
`
`v.
`
`SUPERCELL, INC.,
`
`Defendant.
`
`C.A. No. 14-1072-LPS
`
`C.A. No. 14-1073-LPS
`
`Stamatios Stamoulis, Richard C. Weinblatt, ST AMOULIS & WEINBLATT LLC, Wilmington,
`DE.
`
`Attorneys for Plaintiff Inventor Holdings, LLC.
`
`Jack B. Blumenfeld, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE.
`
`Eric A. Buresh, Michelle L. Marriott, Mark Lang, ERISE IP, P.A., Overland Park, KS.
`
`Attorneys for Defendant Gameloft, Inc.
`
`Steven L. Caponi, BLANK ROME LLP, Wilmington, DE.
`
`Attorney for Defendant King.com Ltd.
`
`Petitioner Ex. 1010 Page 2
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 3 of 28 PageID #: 997
`
`Richard L. Horwitz, David E. Moore, Bindu A. Palapura, POTTER ANDERSON & CORROON
`LLP, Wilmington, DE.
`
`Michael J. Sacksteder, Lauren E:Whittemore, Hana K. Andersen, FENWICK & WEST LLP,
`San Francisco, CA.
`
`Carolyn C. Chang, FENWICK & WEST LLP, Mountain View, CA.
`
`Attorneys for Defendants Glu Mobile Inc., ngmoco, LLC, Rovio Animation Company,
`and Supercell, Inc.
`
`MEMORANDUM OPINION
`
`September 30, 2015
`Wilmington, Delaware
`
`Petitioner Ex. 1010 Page 3
`
`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 4 of 28 PageID #: 998
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`I.
`
`INTRODUCTION
`
`Pending before the Court are Defendant Gamel oft, Inc.' s ("Gamel oft") Motion for
`
`Judgment on the Pleadings Pursuant to Federal Rule of Civil Procedure 12( c) ( C.A. 14-1067, D .I.
`
`13) and Defendants King.com Ltd. ("King.com"), Glu Mobile Inc. ("Glu Mobile"), ngmoco,
`
`LLC ("ngmoco"), Rovio Animation Company ("Rovio"), and Supercell, Inc. 's ("Supercell")
`
`(collectively with Gameloft, "Defendants") Motions to Dismiss Pursuant to Federal Rule of Civil
`
`Procedure 12(b)(6) (C.A. 14-1068, D.I. 10; C.A. 14-1070, D.I. 11, D.I. 16; C.A. 14-1071, D.I.
`
`10; C.A. 14-1072, D.I. 10; C.A. 14-1073, D.I. 10). 1 Although Defendants' motions are
`
`separately briefed, they raise essentially the same arguments, and the Court will address them
`
`collectively. For the reasons discussed below, the Court will grant Defondants' motions.2
`
`II.
`
`BACKGROUND
`
`U.S. Patent No. 8,784,198 ("the '198 patent"), entitled "Method and Apparatus for
`
`Conducting or Facilitating a Promotion," "relates generally to a method and apparatus for
`
`conducting a promotion and, more particularly, to a method and apparatus for distributing
`
`._/
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`promotions to potential participants and for allowing the promotion participants to receive
`
`benefits associated with the promotions." (' 198 patent at 1 :28-32) It was filed on January 4,
`
`2013 and issued on July 22, 2014. (Id.) The claimed methods are generally directed to
`
`"facilitating play of a game" on a "mobile device" or "computer-readable medium" in which a
`
`1The referral of these motions to Magistrate Judge Burke (see, e.g., C.A. 14-1071, D.I. 6)
`will be vacated.
`
`2Defendant Kabam Inc. has settled with Plaintiff. (See C.A. 14-1069, D.I. 10)
`
`1
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`Petitioner Ex. 1010 Page 4
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 5 of 28 PageID #: 999
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`user receives an "in-game benefit" after a "locked outcome" of the game is unlocked using an.
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`"unlock code" associated with that outcome. (Id. at 38:50-39:2, 40:13-27)
`
`On August 19, 2014, Plaintiff Inventor Holdings, LLC ("Inventor Holdings" or
`
`"Plaintiff') filed separate actions alleging infringement of the 'f 98 patent against each
`
`Defendant: Gameloft (C.A. 14-1067, D.I. 1), Glu Mobile (C.A. 14-1068, D.I. 1), King.com (C.A.
`
`14-1070, D.I. 1), ngmoco (C.A. 14-1071, D.I. 1), Rovio (C.A. 14-1072, D.I. 1), and Supercell
`
`(C.A. 14-1073, D.I. 1). The cases have not been consolidated.3
`
`Gameloft answered Plaintiffs complaint on October 10, 2014. (C.A. 14-1067, D.I. 9)
`
`Gameloft subsequently filed its Motion for Judgment on the Pleadings on November 21, 2014.
`
`(C.A. 14-1067, D.I. 13) Briefing on Gameloft's motion was completed on December 18, 2014.
`
`(C.A. 14-1067, D.I. 14, 18, 22) Thereafter, Gameloft filed a Notice of Supplemental Authority
`
`on March 25, 2015 (C.A. 14-1067, D.I. 32), to which Plaintiff filed Objections on March 26,
`
`2015 (C.A. 14-1067, D.I. 33). Gameloft filed additional Notices of Supplemental Authority on
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`June 16, 2015 and September 1, 2015. (C.A. 14-1067, D.I. 36, 37) On April 7, 2015, the action
`
`against Gameloft was stayed pending resolution of Gameloft's motion. (See C.A. 14-1067, D.I.
`
`35)
`
`Glu Mobile, ngmoco, Rovio, and Supercell filed their Motions to Dismiss on October 10,
`
`2014. (C.A. 14-1068, C.A. 14-1071, C.A. 14-1072, C.A. 14-1073, D.I. 10)4 Briefing on these
`
`3Because Plaintiffs' briefs in response to Defendants' motions are virtually the same, the
`Court will only cite to Plaintiffs' responsive brief, D.I. 21, in C.A. 14-1070, which is
`representative.
`
`4Because these Defendants' briefs and other filings are identical both in substance and
`timing, the Court will generally refer only to the set of briefing filed in C.A. 14-1071, which is
`representative.
`
`2
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`Petitioner Ex. 1010 Page 5
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 6 of 28 PageID #: 1000
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`motions was completed on November 6, 2014. (C.A. 14-1071, D.I. 11, 12, 14) Thereafter, Glu
`
`Mobile, ngmoco, Rovio, and Supercell filed Notices of Supplemental Authority on November
`
`17, 2014 (C.A. 14-1071, D.I. 15), and Plaintiff responded with Notices of Supplemental
`
`Authority on December 12, 2014 (C.A. 14-1071, D.I. 18). Glu Mobile, ngmoco, Rovio, and
`
`Supercell filed additional Notices of Supplemental Authority on March 16, 2015, June 16, 2015
`
`and September 1, 2015. (C.A. 14-1071, D.I. 31, 35, 36). On April 7, 2015, the actions against
`
`Glu Mobile, ngmoco, Rovio, and Supercell were stayed pending resolution of their motions.
`
`(See C.A. 14-1071, D.I. 34)
`
`King.com filed its first Motion to Dismiss on November 21, 2014. (C.A. 14-1070, D.I.
`
`11) Subsequently, Plaintiff filed an Amended Complaint on December 4, 2014 (C.A. 14-1070,
`
`D.I. 13), which King.com moved to dismiss on December 12, 2015 (C.A. 14-1070, D.I. 16).
`
`Briefing on King.corn's motion was completed on January 8, 2015. (C.A. 14-1070, D.I. 17, 21,
`
`24) Thereafter, King.com filed a Notice of Supplemental Authority on March 19, 2015 (C.A. 14-
`
`1070, D.I. 29), to which Plaintiff filed Objections on March 26, 2015 (C.A. 14-1070, D.I. 30).
`
`King.com filed additional Notices of Supplemental Authority on June 16, 2015 and September 1,
`
`2015. (C.A. 14-1070, D.I. 33, 34) On April 7, 2015, the action against King.com was stayed
`
`pending resolution of Glu Mobile's motion. (See C.A. 14-1070, D.I. 32)
`
`III.
`
`LEGAL STANDARDS
`
`A.
`
`Motion to Dismiss for Failure to State a Claim
`
`Evaluating a motion to dismiss under Federal Rule of Civil Procedure 12(b )( 6) requires
`
`the Court to accept as true all material allegations of the complaint. See Spruill v. Gillis, 3 72
`
`F.3d 218, 223 (3d Cir. 2004); "The issue is not whether a plaintiff will ultimately prevail but
`
`3
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`Petitioner Ex. 1010 Page 6
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 7 of 28 PageID #: 1001
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`whether the claimant is entitled to offer evidence to support the claims." In re Burlington Coat
`
`Factory Sec. Litig., 114 F.3d 1410, 1420 (3d Cir. 1997) (internal quotation marks omitted).
`
`Thus, the Court may grant such a morion to dismiss only if, after "accepting all well-pleaded
`
`allegations in the complaint as true, and viewing them in the light most favorable to plaintiff,
`
`plaintiff is not entitled to relief." Maio v. Aetna, Inc., 221 F.3d 472, 481-82 (3d Cir. 2000)
`
`(internal quotation marks omitted).
`
`However, "[t]o survive a motion to dismiss, a civil plaintiff must allege facts that 'raise a
`
`right to relief above the speculative level on the assumption that the allegations in the complaint
`
`are true (even if doubtful in fact)."' Victaulic Co. v. Tieman, 499 F.3d 227, 234 (3d Cir. 2007)
`
`(quoting Bell At!. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). A claim is facially plausible
`
`"when the plaintiff pleads factual content that allows the court to draw the reasonable inference
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`that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678
`
`(2009). At bottom, "[t]he complaint must state enough facts to raise a reasonable expectation
`
`that discovery will reveal evidence of [each] necessary element" of a plaintiffs claim. Wilkerson
`
`v. New Media Tech. Charter Sch. Inc., 522 F.3d 315, 321 (3d Cir. 2008) (internal quotation
`
`marks omitted).
`
`The Court is not obligated to accept as true "bald assertions," Morse v. Lower Merion
`
`Sch. Dist., 132 F .3d 902, 906 (3d Cir. 1997) (internal quotation marks omitted), "unsupported
`
`conclusions and unwarranted inferences," Schuylkill Energy Res., Inc. v. Pa. Power & Light Co.,
`
`113 F.3d 405, 417 (3d Cir. 1997), or allegations that are "self-evidently false," Nami v. Fauver,
`
`82 F.3d 63, 69 (3d Cir. 1996). "[A] complaint may be subject to dismissal under Rule 12(b)(6)
`
`when an affirmative defense ... appears on its face." ALA, Inc. v. CCAIR, Inc., 29 F.3d 855, 859
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`4
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`Petitioner Ex. 1010 Page 7
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 8 of 28 PageID #: 1002
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`(3d Cir. 1994).
`
`B.
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`Motion for Judgment on the Pleadings
`
`Pursuant to Federal Rule of Civil Procedure 12( c ), a party may move for judgment on the
`
`pleadings "[a]fter pleadings are closed- but early enough not to delay trial." When evaluating a
`
`motion for judgment on the pleadings, the Court must accept all factual allegations in a
`
`complaint as true and view them in the light most favorable to the non-moving party. See
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`Rosenau v. Unifund Corp., 539 F.3d 218, 221 (3d Cir. 2008); see also Maio, 221 F.3d at 482.
`
`This is the same standard as applies to a Rule 12(b)(6) motion to dismiss. See Turbe v. Gov't of
`
`Virgin Islands, 938 F.2d 427, 428 (3d Cir. 1991).
`
`A Rule 12(c) motion will not be granted "unless the movant clearly establishes that no
`
`material issue of fact remains to be resolved and that he is entitled to judgment as a matter of
`
`law." Rosenau, 539 F.3d at 221. "The purpose of judgment on the pleadings is to dispose of
`
`claims where the material facts are undisputed and judgment can be entered on the competing
`
`pleadings and exhibits thereto, and documents incorporated by reference." Venetec Int'!, Inc. v.
`
`Nexus Med., LLC, 541 F.Supp.2d 612, 617 (D. Del. 2008); see also Burlington Coat Factory,
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`114 F .3d at 1426 (explaining that any documents integral to pleadings may be considered in
`
`connection with Rule 12(c) motion). "The issue is not whether a plaintiff will ultimately prevail
`
`but whether the claimant is entitled to offer evidence to support the claims." Burlington Coat
`
`Fact01y, 114 F.3d at 1420. Thus, a court may grant a motion for judgment on the pleadings (like
`
`a motion to dismiss) only if, after "accepting all well-pleaded allegations in the complaint as true,
`
`and viewing them in the light most favorable to plaintiff, plaintiff is not entitled to relief." Maio,
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`221 F.3d at 482.
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`5
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`Petitioner Ex. 1010 Page 8
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 9 of 28 PageID #: 1003
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`. The Court may consider matters of public record as well as authentic documents upon
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`which the complaint is based if attached to the complaint or as an exhibit to the motion. See
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`Oshiver v. Levin, Fishbein, Sedran & Berman, 38 F.3d 1380, 1384 n.2 (3d Cir. 1994). The Court
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`may also take judicial notice of the factual record of a prior proceeding. See Oneida Motor
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`Freight, Inc. v. United Jersey Bank, 848 F.2d 414, 416 n.3 (3d Cir. 1988). Ultimately, a motion
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`for judgment on the pleadings can be granted "only if no relief could be afforded under any set of
`
`facts that could be proved." Turbe, 938 F.2d at 428.
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`The ultimate question_ of patent eligibility is an issue of law, making it an appropriate
`
`basis for a Rule 12(c) motion~ See In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008), aff'd Bilski v.
`
`Kappas, 561 U.S. 593 (2010). The Federal Circuit has affirmed District Courts that have granted
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`motions for judgment on the pleadings based on§ 101 challenges. See, e.g., OIP Techs., Inc. v.
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`Amazon.com, Inc., 788 F.3d 1359, 1360 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765
`
`F.3d 1350, 1355 (Fed. Cir. 2014),
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`C.
`
`Lack of Patentable Subject Matter
`
`Under 35 U.S.C. § 101, "[w]hoever invents or discovers any new and useful process,
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`machine, manufacture, or composition of matter, or any new and useful improvement thereof,
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`may obtain a patent therefor, subject to the conditions and requirements of this title." There are
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`three exceptions to§ 101 's broad patent-eligibility principles: "laws of nature, physical
`
`phenomena, and abstract ideas." Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Pertinent
`
`·here is the third category, "abstract ideas," which "embodies the longstanding rule that an idea of
`
`itself is not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014)
`
`(internal quotation marks omitted). "As early as Le Roy v. Tatham, 55 U.S. 156, 175 (1852), the
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`6
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`Petitioner Ex. 1010 Page 9
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 10 of 28 PageID #: 1004
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`Supreme c;ourt explained that ' [a] principle, in the abstract, is a fundamental truth; an original
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`cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive
`
`right.' Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed." In
`
`re Comiskey, 554 F.3d 967, 977-78 (Fed. Cir. 2009).
`
`In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), the
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`Supreme Court set out a two-step "framework for distinguishing patents that claim laws of
`
`nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications
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`of those concepts." Alice, 134 S. Ct. at 2355. First, courts must determine if the claims at issue
`
`. are directed at a patent-ineligible concept. See id. If so, the next step is to look for an
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`)
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`"'inventive concept' - i.e., an element or combination of elements that is sufficient to ensure that
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`the patent in practice amounts to significantly more than a patent upon the [ineligible concept]
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`itself." Id.
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`"Simply appending conventional steps, specified at a high level of generality, [is] not
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`enough to supply an inventive concept." Id. at 2357 (internal quotation marks omitted; emphasis
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`in original). In Bilski, 130 S. Ct. at 3231, for example, the Supreme Court held that the claims
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`involved were drawn to the patent-ineligible abstract idea of "hedging, or protecting against
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`risk," which was a "fundamental economic practice." Similarly, in Alice, 134 S. Ct. at 2356, the
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`Supreme Court found that the claims were drawn to the patent-ineligible abstract idea of
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`"intermediated settlement," which was also a "fundamental economic practice." In both cases,
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`the Supreme Court found that the additional steps delineated in the claims did not embody an
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`"inventive concept" sufficient to ensure that the patents amounted to more than patents upon the
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`ineligible fundamental concepts themselves.
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`7
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`Petitioner Ex. 1010 Page 10
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 11 of 28 PageID #: 1005
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`In determining, at the second step, if a patent embodies an inventive concept, courts may
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`consider whether the process "is tied to a particular machine or apparatus" or "transforms a
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`particular article into a different state or thing." Kappas, 130 S. Ct. at 3225. "[T]o impart
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`patent-eligibility to an otherwise unpatentabl~ process under the theory that the process is linked
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`to a machine, the use of the machine must impose meaningful limits on the claim's scope."
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`CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (internal
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`quotation marks omitted). To be "a meaningful limit on the scope of the claims," the addition of
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`a machine "must play a significant part in permitting the claimed method to be performed, rather
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`than function solely as an obvious mechanism for permitting a solution to be achieved more
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`quickly." SiRF Tech., Inc. v. ITC, 601F.3d1319, 1332-33 (Fed. Cir. 2010). Hence, the "mere
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`recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent(cid:173)
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`eligible 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 feature that provides any
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`practical assurance that the process is more than a drafting effort designed to monopolize the
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`abstract idea itself." Id.
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`"[T]he machine-or-transformation test is a useful and important clue, an investigative
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`tool, for determining whether some claimed inventions are processes under§ 101." Bilski, 130
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`S. Ct. at 3227. However, it is "not the sole test for deciding whether an invention is a patent(cid:173)
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`eligible 'process.'" Id. "[I]n applying the § 101 exception, [courts] must distinguish between
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`patents that claim the building blocks of human ingenuity and those that integrate the building
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`blocks into something more, thereby transforming them into a patent-eligible invention." Alice,
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`134 S. Ct. at 2354 (internal citation and quotation marks omitted). The "concern that drives the
`
`8
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`Petitioner Ex. 1010 Page 11
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 12 of 28 PageID #: 1006
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`exclusionary principle [i]s one of pre-emption." Id. That is, where a patent would pre-empt use
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`of basic tools of scientific and technological work, i.e., laws of nature, natural phenomena, and
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`abstract ideas, the patent would "impede innovation more than it would tend to promote it,
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`thereby thwarting the primary object of the patent laws." Id. (internal quotation marks omitted).
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`IV.
`
`DISCUSSION
`
`Defendants contend that all claims of the' 198 patent are patent-ineligible under the
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`analytical framework set forth in Mayo and Alice. Specifically, Defendants argue that the '198
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`patent "claims the economic strategy and abstract idea of providing an 'unlock code' in exchange
`
`for a qualifying activity for an 'outcome' to reveal the benefit of the locked 'outcome."' (C.A.
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`14-1071, D.I. 11 at 2; C.A. 14-1067, D.I. 14 at 2; see also D.l. 17 at 2 ("The independent claims
`
`of U.S. Patent No. 8,784,198 are directed at the abstract idea of using a code to unlock a benefit
`
`in a game.")) Defendants further argue that "[t]he only 'inventive concept' the '198 Patent
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`purports to add is implementation of this unlock code concept on a generic mobile device."
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`(C.A. 14-1071, D.I. 11 at 2; C.A. 14-1067, D.I. 14 at 2; see also C.A. 14-1070, D.I. 17 at 2)
`
`Plaintiff responds that Defendants mischaracterize the underlying concepts of the claimed
`
`invention by "not view[ing] the claim as a whole" and ignoring the "express limitations" of the
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`claims. (See C.A. 14-1070, D.I. 21 at 10, 12) Plaintiff argues that the invention of the '198
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`patent is not directed to an abstract idea but instead is "particular to mobile device gaming." (Id.
`
`at 12) Plaintiff emphasizes that "the claimed technology necessitates the use of discrete
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`computer hardware and software components configured and programmed in a particular way
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`that enable performance of the specified functions carried out in the context of a mobile game."
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`(Id. at 13)
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`9
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`Petitioner Ex. 1010 Page 12
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 13 of 28 PageID #: 1007
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`Independent claim 1 recites the following:
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`A mobile device operable to facilitate a game playable on
`the mobile device, the mobile device comprising:
`
`an input mechanism for receiving input from a user
`of the mobile device;
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`a display screen for outputting results of the game;
`
`a processor;
`
`a memory, the memory operable to store a first
`software program for conducting the game on the
`mobile device and a locked outcome of the game
`such that, upon the first software program being
`stored in the memory, the processor is operable with
`the first software program to:
`
`facilitate play of the game by
`recognizing inputs from the user via
`the input mechanism;
`
`receive a signal comprising an
`unlock code;
`
`unlock the locked outcome of the
`game using the unlock code, thereby
`determining an unlocked outcome;
`
`determine an intra-game benefit
`associated with the unlocked
`outcome; and
`
`incorporate the intra-game benefit
`into the game while it is being played
`on the mobile device by the user.
`
`('198 patent at 38:50-39:2)
`
`The only other independent claim, claim 18, is similar to independent claim 1 except that
`
`its recited steps are performed by a computer-readable medium instead of a mobile device:
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`10
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`Petitioner Ex. 1010 Page 13
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`

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`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 14 of 28 PageID #: 1008
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`A non-transitory computer-readable medium storing
`instructions for directing a processor of a mobile device to perform
`·a method, the method comprising:
`
`facilitating play of a game on the mobile device by
`recognizing inputs provided by a user via an input
`mechanism of the mobile device, at least one of the
`inputs causing progress in the game;
`
`receiving a signal comprising an unlock code;
`
`determining a locked outcome of the game;
`
`unlocking the locked outcome of the game using the
`unlock code, thereby determining an unlocked
`outcome;
`
`determining an intra-game benefit associated with
`the unlocked outcome; and
`
`providing the intra-game benefit to the user by
`incorporating the intra-game benefit into the game.
`
`(Id. at 40: 13-27)
`
`The various dependent claims provide basic variations on the elements of the independent
`
`claims, such as: the source of the signal being either the mobile device's "input mechanism" (id.
`
`at 39:3-8, 40:38-41) or "a third party via a network" (id. at 39:9-15, 40:42-46); the locked
`
`outcome being previously "stored in a memory" and subsequently "retrieved" or "accessed" (id.
`
`at 40:28-37), "stored in an encrypted form" (id. at 39:22-27, 40:55-61), or "download[ed] ...
`
`over the internet" (id. at 39:28-31, 40:51-54); the method further comprising "receiving a request
`
`to use a previously stored unlock code" (id. at 39:16-21, 40:47-50); the processor being able to
`
`"receive indication of payment from the user ... for the unlock code" (id. at 39:32-35, 40:62-65)
`
`and further requiring "verifi [cation] that payment for the unlock code has been provided from the
`
`11
`
`Petitioner Ex. 1010 Page 14
`
`

`
`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 15 of 28 PageID #: 1009
`
`user" (id. at 39:36-43); various forms of intra-game benefits (id. at 40:4-10, 40:66-41 :5),
`
`including "an advancement within the game," and further requiring the unlock code for
`
`"advancement in the game".(id. at 39:44-48, 41:6-11); the use of a "second software program to
`
`download at least one of the first software program and a decryption algorithm into the memory"
`
`(id. at 39:49-53); the processor being able "to verify that the user has completed a qualifying
`
`activity that is a prerequisite to unlocking the locked outcome" (id. at 39:54-57, 41:12-18) and
`
`further "wherein the qualifying activity is watching a specified advertisement" (id. at 39:58-59,
`
`41:19-21);-and the use of a "GPS detector" (id. at 39:60-64, 41:22-25) and further "determin[ing]
`
`an intra-game benefit based on the location" (id. at 39:65-40:3, 41 :26-29).5
`
`Plaintiff argues that the Court should not decide patentability before ruling on claim
`
`construction, insisting, "[a]t most, Defendant has raised disputed material fact issues." (C.A. 14-
`
`1070, D .I. 21 at 15 n. 7)6 Without proposing any particular constructions for any terms, Plaintiff
`
`argues that "Defendant's arguments confirm that at least 'unlock code' and 'unlocked outcome'
`
`require construction." (C.A. 14-1070, D.I. 21 at 10 n.4) (referring to C.A. 14-1070, D.I. 17 at 6
`
`5The Court finds that the briefing is adequate to permit it to resolve the § 101 challenge
`with respect to each asserted claim of the '198 patent.
`
`6Plaintiff argues that because patents are presumed valid, Defendants confront a burden of
`proving invalidity by clear and convincing evidence. (See C.A. 14-1071, D.I. 12 at 6) However,
`Plaintiff has failed to identify a disputed fact that is material to resolution of the issue of patent
`eligibility here. The issue of patentability is a question oflaw, see In re Bilsld, 545 F.3d at 950-
`51, although it is one that "may be informed by subsidiary factual issues," CyberFone Sys., LLC
`v. Cellco P 'ship, 885 F. Supp. 2d 710, 715 (D. Del. 2012). In the absence of underlying disputed
`facts, Defendants do not have the burden Plaintiff would have the Court impose on them. See
`Modern Telecom Sys. LLC v. Earth/ink, Inc., 2015 WL 1239992, at *7-8 (C.D. Cal. Mar. 17,
`2015) ("Because, ordinarily, no evidence outside the pleadings is considered in resolving a ·
`motion to dismiss or a motion for judgment on the pleadings, it makes little sense to apply a
`'clear and convincing evidence' standard - a burden of proof- to such motions.").
`
`12
`
`Petitioner Ex. 1010 Page 15
`
`

`
`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 16 of 28 PageID #: 1010
`
`(Defendants' analogizing of the "unlock code" and "unlocked outcome" to "roll[ing] a set of
`
`doubles" and "being able to move forward [in a game]," respectively)) But the Court is not
`
`required to withhold judgment on patentability until it resolves all potential claim construction
`
`disputes. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273
`
`(Fed. Cir. 2012), cert denied, 134 S. Ct. 2870 (2014) ("[C]laim construction is not an inviolable
`
`prerequisite to a validity determination under § 101."); CyberFone Sys., LLC v. Cellco P 'ship,
`
`885 F. Supp. 2d 710, 719 (D. Del. 2012) (deciding§ 101 issue before ~laim construction where
`
`plaintiff failed to explain how claim construction woul~ alter§ 101 analysis); Intellectual
`
`Ventures I LLC v. Mfrs. & Traders Trust Co., 2014 WL 7215193, at *6 (D. Del. Dec. 18, 2014)
`
`(proceeding with § 101 analysis after finding that "Plaintiffs arguments throughout the briefing
`
`make no mentiori of how the construction of certain limitations would inform the§ 101 analysis"
`
`and that "parties' arguments are not focused on specific claim limitations, but instead on the
`
`broader concepts of the claims and the computer components used").
`
`Here, the closest any party comes to showing any claim construction dispute that is
`
`relevant to the§ 101 analysis is Defendants' contention (with which Plaintiffs disagree) that the
`
`"unlock code" and "unlocked outcome" terms should be construed so as to include "roll[ing] a
`
`set of doubles" and "being able to move forward [in a board game].". The Court agrees with
`
`Defendants that "the vast breadth of the claim language and the specification of the ' 198 Patent"
`
`(C.A. 14-1071, D.I. 11 at 19) provide a sufficient basis for the Court to resolve the particular
`
`i'
`claim construction issue raised by Plaintiff.
`
`More precisely, the Court agrees that "unlock code" and "unlocked outeome" should be
`
`given their full, plain and ordinary meaning in the context of the '198 patent's claims.
`
`13
`
`Petitioner Ex. 1010 Page 16
`
`

`
`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 17 of 28 PageID #: 1011
`
`The words of a claim are generally given their ordinary and
`customary meaning as understood by a person of ordinary skill in
`the art when read in the context of the specification and
`prosecution history. There are only two exceptions to this general
`rule: 1) when a patentee sets out a definition and acts as his own
`lexicographer, or 2) when the patentee disavows the full scope of a
`claim term either in the specification or during prosecution.
`
`Thorner v. Sony Computer Entm 't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (internal
`
`citation omitted). Here, neither exception is present. To the contrary, the specification
`
`emphasizes the breadth with which the inventors were using the terms "unlock code" and
`
`"unlocked outcome":
`
`In some embodiments, an unlock code used to unlock an outcome
`may include or otherwise provide some or all of the information or
`data needed to associate a benefit with an outcome, identify, select
`or otherwise determine a benefit associated with the outcome,
`complete a benefit being revealed by the unlock code, etc.
`
`An unlock code can comprise or include a written, spoken or
`data entered password, a radio or television signal, a sequence or
`group of keypad selections or entries, a sequence or group of .
`handwritten or spoken entries, an electronic or electromagnetic
`signal, a numerical or alphanumerical sequence, a sequence,
`group or combination of musical notes or other sounds, words,
`syllables, phrases, tones, etc. to be provided audibly or
`symbolically to unlock an outcome, a barcode, a decoding key,
`rule or algorithm for a code or cypher, etc. An unlock code can
`also be based on, include, or comprise an identifier associated
`with a particular user, user device, intermediary, intermediary
`device, etc. receiving the unlock code or otherwise being allowed
`to use or distribute the unlock code.
`
`An unlock code may also include user biometric information
`(e.g., voiceprint, fingerprint, retinal scan, DNA, etc. information)
`so that the unlock code may only be used by a specific user.
`
`(' 198 patent at 5:16-59) (emphasis added) Defendants' example of "roll[ing] a set of doubles" is
`
`14
`
`Petitioner Ex. 1010 Page 17
`
`

`
`Case 1:14-cv-01067-LPS Document 38 Filed 09/30/15 Page 18 of 28 PageID #: 1012
`
`"a numerical or alphanumerical sequence" and comes within the plain and ordinary meaning of
`
`"unlock code."
`
`Likewise, the patent specification expressly indicates that "unlocked outcome" should be
`
`broadly construed to have its plain and ordinary meamng. To begin with, "locked" encompasses
`
`virtually all ways that the outcome can be locked:
`
`The term "locked," as used herein, should be construed broadly
`and is not meant to imply or suggest any specific manner or
`method of hiding, covering, encoding or encrypting, storing,
`screening, concealing, masking, etc. a prize, value, symbol, or
`other benefit associated with an outcome or to limit how a prize,
`value, symbol, or other benefit associated with the outcome is
`hidden, covered, encoded or encrypted, stored, screened,
`concealed, masked, etc.
`
`(Id. at 5:7-15) (emphasis added) Similarly, "outcome" includes a large variety of outcomes:
`
`The outcomes may be a symbol, value, prize identifier or
`indicator, etc. For example, the outcome may be "television,"
`"ten-thousand dollars" "cherry" "oran°e" "4" "PI-173068 "etc
`'
`'
`0
`'
`'
`'
`.
`The outcomes of "television" and "ten-thousand dollars" indicate
`specific prizes for the outcomes. The outcomes of "cherry" and
`"orange" indicate a specific outcome, but not specific prize or
`benefit associated with the outcome. The controller 52, an
`intermediary, or other device or entity may· then associate prizes
`or benefits to these outcomes at a later time and the associated
`prizes and benefits may vary. For example, on one day an
`outcome of "cherry" may be associated with a prize of "ten
`dollars" while on the next day an outcome of"cherry" may be
`associated with a prize of "one hundred dollars." The outcome of
`"PI-173068" provides a specific outcome identifier, but like the
`"cherry" and "orange" outcomes, the outcome identifier does not
`indicate a specific prize or benefit associated with the outcome,
`thereby allowing a specific prize or benefit for the outcome to be
`determined by another entity or device and to change over time if
`desired.
`
`Other prizes or benefits that may be associated with an outcome
`include a warrantee for a pr