Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 1 of 25 PageID #: 750
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`BRITISH TELECOMMUNICATIONS PLC,
`
` Plaintiff,
`
`v.
`
`IAC/INTERACTIVECORP,
`MATCH GROUP, INC.,
`MATCH GROUP, LLC, and
`VIMEO, INC.,
`
` Defendants.
`
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`)
`)
`)
`)
`)
`)
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`)
`)
`
`C.A. No. 18-366-GMS
`
`JURY TRIAL DEMANDED
`
`PLAINTIFF’S ANSWERING BRIEF
`IN OPPOSITION TO MATCH GROUP LLC’S
`MOTION TO DISMISS THE COUNTS ASSERTED AGAINST IT
`
`OF COUNSEL:
`Daniel A. Boehnen
`Grantland G. Drutchas
`Jeffrey P. Armstrong
`MCDONNELL BOEHNEN
`HULBERT & BERGHOFF LLP
`300 South Wacker Drive
`Chicago, IL 60606
`(312) 913-0001
`
`Dated: July 17, 2018
`
`Philip A. Rovner (#3215)
`Jonathan A. Choa (#5319)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza
`P.O. Box 951
`Wilmington, DE 19899
`(302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Attorneys for Plaintiff
`British Telecommunications plc
`
`VIMEO/IAC EXHIBIT 1033
`VIMEO ET AL., v. BT, IPR2019-00833
`
`

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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 2 of 25 PageID #: 751
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................................ 1
`
`STATEMENT OF FACTS ................................................................................................... 2
`
`I.
`
`II.
`
`A.
`
`B.
`
`C.
`
`Subject Matter of the Thint Patent .............................................................................. 2
`
`Subject Matter of the Titmuss Patent .......................................................................... 2
`
`Subject Matter of the Thompson Patent ...................................................................... 4
`
`III.
`
`LEGAL STANDARDS ........................................................................................................ 5
`
`IV. ARGUMENT ....................................................................................................................... 7
`
`A.
`
`B.
`
`There are no claims against MGL under Counts I, III, or V to dismiss ...................... 7
`
`Count IV meets the Iqbal/Twombly standard and disputed factual questions preclude
`dismissal of Count IV under Rule 12(b)(6) ................................................................. 7
`
`C. Disputed facts preclude dismissal of Counts II and VI under Rule 12(b)(6) .............. 9
`
`D. Dismissal of Count II should be denied because Titmuss is directed to patentable
`subject matter under § 101 ........................................................................................ 10
`
`1.
`
`2.
`
`Titmuss is not abstract under step 1 of Alice because the claims are directed to
`improvements in information distribution systems .......................................... 10
`
`Titmuss is patent eligible under step 2 of Alice because the claims include
`inventive arrangements of elements that improve over the prior art ................ 13
`
`E. Dismissal of Count VI should be denied because Thompson is directed to patentable
`subject matter under § 101 ........................................................................................ 16
`
`1.
`
`2.
`
`Thompson is not abstract under step 1 of Alice because the claims are directed
`to improvements specific to messaging systems .............................................. 16
`
`Thompson is patent eligible under step 2 of Alice because the claims include
`inventive arrangements of elements that improve over the prior art ................ 19
`
`V.
`
`CONCLUSION .................................................................................................................. 20
`
`i
`
`

`

`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 3 of 25 PageID #: 752
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Aatrix Software v. Green Shades Software,
`882 F.3d 1121 (Fed. Cir. 2018), reh’g en banc denied, 890 F.3d 1354 (Fed. Cir. 2018) ...... passim
`
`Absolute Software v. Stealth Signal,
`659 F.3d 1121 (Fed. Cir. 2011)....................................................................................................... 9
`
`Advanced Cardiovascular Sys. v. Scimed Life Sys.,
`988 F.2d 1157 (Fed. Cir. 1993)....................................................................................................... 6
`
`Alice v. CLS Bank,
`134 S.Ct. 2347(2014). ............................................................................................................ passim
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ................................................................................................................ 6, 7, 8
`
`Bascom Global Internet Svs. v. AT&T Mobility,
`827 F.3d 1341 (Fed. Cir. 2016).............................................................................................. passim
`
`Bell Atlantic v. Twombly,
`550 U.S. 544 (2007). ........................................................................................................... 5, 6, 7, 8
`
`Berkheimer v. HP,
`881 F.3d 1360 (Fed. Cir. 2018), reh’g en banc denied, 890 F.3d 1369 (Fed. Cir. 2018). ..... passim
`
`DDR Holdings v. Hotels.com,
`773 F.3d 1245 (Fed. Cir. 2014)....................................................................................................... 7
`
`Disc Disease Solutions v. VGH Solutions,
`888 F.3d 1256 (Fed. Cir. 2018)................................................................................................... 6, 8
`
`Enfish v. Microsoft,
`822 F.3d 1327 (Fed. Cir. 2016).............................................................................................. passim
`
`Erickson v. Pardus,
`551 U.S. 89 (2007) .......................................................................................................................... 8
`
`Intellectual Ventures I v. Symantec,
`883 F.3d 1307 (Fed. Cir. 2016)............................................................................................... 17, 18
`
`Jedi Technologies v. Spark Networks,
`2017 WL 3315279 (D. Del. Aug. 3, 2017) ................................................................................... 13
`
`Lumen View v. Findthebest.com,
`984 F. Supp. 2d 189 (S.D.N.Y. 2013)........................................................................................... 13
`
`ii
`
`

`

`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 4 of 25 PageID #: 753
`
`MAZ Encryption Tech. v. Blackberry,
`2016 WL 5661981 (D. Del., Sep. 29, 2016) ..................................................................... 12, 13, 18
`
`McRo v. Bandai Namco Games America,
`837 F.3d 1299 (Fed. Cir. 2016)..................................................................................... 6, 11, 15, 18
`
`Thales Visionix v. U.S.,
`850 F.3d 1343 (Fed. Cir. 2017)................................................................................................. 6, 15
`
`Visual Memory v. NVIDIA,
`867 F.3d 1253 (Fed. Cir. 2017).............................................................................................. passim
`
`Yodlee v. Plaid Techs.,
`2016 WL 2982503 (D. Del. May 23, 2016) ...................................................................... 12, 13, 18
`
`Statutes
`
`35 U.S.C. § 101 ...................................................................................................................... passim
`
`Rules
`
`Rule 12(b)(6). ......................................................................................................................... passim
`
`iii
`
`

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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 5 of 25 PageID #: 754
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`Plaintiff British Telecommunications plc (“BT”) respectfully submits this answering brief
`
`in opposition to Match Group, LLC’s (“MGL”) Motion to Dismiss All Claims of the First
`
`Amended Complaint Asserted Against It. D.I. 25.
`
`I.
`
`INTRODUCTION
`
`Plaintiff BT’s First Amended Complaint (“FAC”) pleads facts showing, inter alia, that
`
`defendants IAC and Vimeo infringe U.S. Pats. 6,240,450 (“Sharples”); 6,578,079 (“Gittins”); and
`
`7,974,200 (“Walker”). The FAC also pleads facts showing that IAC, Match Group, Inc., and
`
`Match Group, LLC infringe U.S. Pats. 6,397,040 (“Titmuss”); 7,243,105 (“Thint”); and 9,177,297
`
`(“Thompson”). D.I. 17. This Court should deny MGL’s motion to dismiss, D.I. 25, in full.
`
`First, MGL asks this Court to dismiss Counts I (Sharples), III (Gittins), and V (Walker) as
`
`against MGL. D.I. 25, p. 6. However, Counts I, III, and V do not allege infringement by MGL.
`
`Thus, there is nothing to dismiss as to MGL under Counts I, III, and V. As such, that aspect of
`
`MGL’s motion should be dismissed as moot.
`
`Second, MGL asks this Court to dismiss Count IV (Thint) because it allegedly fails to
`
`plead sufficient facts to establish that MGL infringes Thint. D.I. 25, pp. 7-9. The Court should
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`deny this request because Count IV and the associated claim chart more than fully meet the
`
`Iqbal/Twombly pleading standard, putting MGL and its co-defendants on notice as to why they
`
`infringe the Thint patent. MGL simply tries to disregard disputed questions of fact.
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`Finally, MGL asks this Court to dismiss Counts II (Titmuss) and VI (Thompson) because
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`those patents are allegedly invalid as claiming unpatentable subject matter under 35 U.S.C. §
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`101. D.I. 25, pp. 9-17. MGL is legally and factually wrong on the merits of both step 1 and step
`
`2 of Alice1, and MGL ignores the factual questions that must be addressed in step 2 of Alice in
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`1 Alice v. CLS Bank, 134 S.Ct. 2347 (2014).
`
`

`

`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 6 of 25 PageID #: 755
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`light of the Federal Circuit’s Aatrix2 and Berkheimer3 decisions. The Court should deny MGL’s
`
`request to dismiss Counts II and VI because: (i) Titmuss and Thompson are directed to patent-
`
`eligible subject matter under § 101, and (ii) disputed questions of fact preclude dismissal of
`
`Counts II and IV under Rule 12(b)(6).
`
`II.
`
`STATEMENT OF FACTS
`
`A.
`
`Subject Matter of the Thint Patent
`
`Thint is directed to “an improved method of updating a user profile based at least in part
`
`on rules, event statistics relating to a user’s activity, and personalized rule weightings.” D.I. 17, ¶¶
`
`107-110, Ex. J. In operation, the Thint invention produces an updated user profile based upon
`
`both (i) a received set of event statistics reflecting user activity and (ii) a first set of rules that are
`
`weighted according to a set of personalized rule weightings which are, in turn, generated
`
`according to a second set of rules based on user preference data. D.I. 17, Ex. J, p. 15; Thint, 16:5-
`
`20. In some embodiments, the “second set of rules” includes “integrated meta-rules that specify
`
`personalized rule weights which in turn affect the strength of contribution of rules.” D.I. 17, ¶
`
`109; Thint, 3:1-4. Unlike prior art systems that “offer little in the way of user control and
`
`personalisation of the profile update itself,” Thint gives users more control and personalization of
`
`the user profile update itself via the recited combination of rules, preference data, rule weights,
`
`and event statistics. D.I. 17, ¶ 109; Thint, 2:19-25.
`
`B.
`
`Subject Matter of the Titmuss Patent
`
`Titmuss is directed to improving the user convenience and the system efficiency for
`
`situations where a user is receiving information sources over a telecommunications system. The
`
`2 Aatrix Software v. Green Shades Software, 882 F.3d 1121 (Fed. Cir. 2018), reh’g en banc
`denied, 890 F.3d 1354 (Fed. Cir. 2018).
`3 Berkheimer v. HP, 881 F.3d 1360 (Fed. Cir. 2018), reh’g en banc denied, 890 F.3d 1369 (Fed.
`Cir. 2018).
`
`2
`
`

`

`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 7 of 25 PageID #: 756
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`improvement of the Titmuss invention resides in dynamically developing and delivering a
`
`shortlist of information sources based on the user’s geographical location. D.I. 17, ¶ 82-86. The
`
`invention is rooted in overcoming problems traditionally arising in networked information
`
`systems used for this purpose. D.I. 17, ¶ 84. Titmuss explains, “some prior art information
`
`systems could provide personalized information to a user at a fixed location” or could “broadcast
`
`the same information to all users in a specific area,” and other prior art information systems
`
`“could transmit user-requested information to a user when the user was within predefined overlay
`
`areas along a predetermined travel route.” Id.; Titmuss, 1:43-2:26. Titmuss goes beyond those
`
`systems to provide individualized information sources to individual users who are moving
`
`without a predetermined travel route.
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`The Titmuss invention also improves efficiency of the telecommunications system, which
`
`is constrained by the fact that “radio frequency channels which are used in mobile
`
`communications generally have available the lowest bandwidth due to demands on the RF
`
`spectrum and to the channel conditions within the RF spectrum” and, thus, “the amount of
`
`information which a mobile user can currently receive and select from is relatively limited.”
`
`Titmuss, 1:36-41. To overcome such technical constraints, Titmuss describes inventive
`
`programming configured to, inter alia, (i) “generat[e] a shortlist of information sources for said
`
`user on the basis of said tracking information and said location data,” and (ii) “transmit[] said
`
`shortlist to a terminal associated with said user so as to allow said user to select an information
`
`source of interest and thereby to access information from said source.” D.I. 17, ¶ 85; Titmuss,
`
`3:3-7, 12:35-50. In some embodiments, the inventive programming takes the form of an “agent”
`
`implemented “in an object-oriented model such as Object Management Group’s Common Object
`
`Request Broker Architecture (CORBA).” Titmuss, 5:65-6:22, Figs. 3-7. The Patent Office
`
`expressly recognized this combination of features as a patentable improvement over the prior art,
`
`3
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`

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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 8 of 25 PageID #: 757
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`initially when originally granting the Titmuss patent and, again, when confirming the patentability
`
`of the claims during ex parte reexamination. Ex. A, p. 5; Ex. B, pp. 4-5.
`
`The nonconventional combination of features claimed in Titmuss results in technical
`
`improvements over prior art systems and improves the functioning and operation of an
`
`information system by enabling “information [to be] delivered dynamically in accordance with
`
`the location of each of the users,” so that “users are not overwhelmed with irrelevant data and the
`
`network and backend servers avoid processing high volumes of unnecessary data.” D.I. 17, ¶ 86;
`
`Titmuss, 3:3-12. Indeed, absent the improvements of Titmuss, “(i) a user can be overwhelmed
`
`with information where the vast majority of it is irrelevant and/or out of context, and (ii) the
`
`network and backend servers would otherwise process and transmit higher volumes of
`
`unnecessary data to users’ smartphones.” D.I. 17, ¶ 83. “Also, a shortlist of relevant information
`
`sources results in less data for a user’s smartphone to process and less data for the user’s
`
`smartphone to display, which can be particularly advantageous in some embodiments where
`
`smartphones may have smaller screens.” Id.
`
`C.
`
`Subject Matter of the Thompson Patent
`
`Thompson is directed to improving user convenience and system efficiency for situations
`
`where members of a user community are distributing messages over a data network. D.I. 17, ¶
`
`132-34. The Thompson invention “propagates messages to different subsets of members in
`
`different stages, or rounds, while utilizing feedback from members of a particular subset to
`
`automatically determine membership of the next subset.” D.I. 17, ¶ 133; Thompson, 3:27-31.
`
`The invention is thus rooted in overcoming problems arising specifically in the realm of
`
`telecommunication-based messaging systems. D.I. 17, ¶ 133.
`
`To improve upon prior messaging systems, the invention inter alia “automatically
`
`select[s] a second distribution rule from the plurality of distribution rules in dependence on the
`
`4
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`

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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 9 of 25 PageID #: 758
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`feedback data received [from one or more of the first subset of members] in respect of the first
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`data message, the selected second rule being a rule which meets a predefined criterion or criteria
`
`based on the received feedback, [and] the selected second rule being assigned for use in sending a
`
`second data message to a second, different, subset of members over said data network.” D.I. 17, ¶
`
`133; Thompson 13:40-63. The Patent Trial and Appeals Board expressly recognized this specific
`
`combination of features as a patentable improvement over the prior art. Ex. C, p. 4.
`
`This nonconventional combination of claimed features results in technical improvements
`
`over prior art systems and improves the functioning and operation of a messaging system by
`
`“enabl[ing] automatic adaption and optimization of message distribution policies with a view to
`
`satisfying the changing requirements of members over time.” The invention provides “particular
`
`advantages since (1) the space of possible distribution policies is very large and such automated
`
`systems enable parts of this space to be explored and evaluated in terms of effectiveness and (2)
`
`as the purpose of messaging systems change, adaption of distribution policies enables such
`
`changes to be incorporated in the same system without significant modification.” D.I. 17, ¶ 133;
`
`Thompson, 2:22-33. These improvements create an ability to adapt, thereby allowing the
`
`messaging system to send better information to users without overwhelming the users with
`
`numerous messages, while also reducing the volume of information that the messaging system
`
`needs to process and transmit to users. Overall, the Thompson invention provides users more
`
`relevant information with more efficiency of computational resources and network bandwidth.
`
`D.I. 17, ¶ 134.
`
`III.
`
`LEGAL STANDARDS
`
`A complaint must “state a claim to relief that is plausible on its face.” Bell Atlantic v.
`
`Twombly, 550 U.S. 544, 570 (2007). “This plausibility standard is met when ‘the plaintiff pleads
`
`factual content that allows the court to draw the reasonable inference that the defendant is liable
`
`5
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`

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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 10 of 25 PageID #: 759
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`for the misconduct alleged.’” Disc Disease Solutions v. VGH Solutions, 888 F.3d 1256, 1260
`
`(Fed. Cir. 2018) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). “Disputed issues are
`
`construed favorably to the complainant, and all reasonable inferences are drawn in favor of the
`
`complainant. Thus, to the extent that factual questions are raised and are material to the result,
`
`dismissal is improper unless there is no reasonable view of the facts which could support the
`
`claim.” Advanced Cardiovascular Sys. v. Scimed Life Sys., 988 F.2d 1157, 1161 (Fed. Cir. 1993).
`
`For Rule 12(b)(6) motions alleging a failure to adequately plead infringement, a complaint
`
`explaining that a specific product infringes at least one claim of an asserted patent is sufficient to
`
`put a defendant on fair notice under the Iqbal/Twombly standard. Disc Disease, 888 F.3d at 1260.
`
`For Rule 12(b)(b) motions alleging invalidity under § 101, “patentees who adequately
`
`allege their claims contain inventive concepts survive a § 101 eligibility analysis under Rule
`
`12(b)(6).” Aatrix Software v. Green Shades Software, 882 F.3d 1121, 1126-27 (Fed. Cir. 2018),
`
`reh’g en banc denied, 890 F.3d 1354 (Fed. Cir. 2018). The Supreme Court defined a two-step
`
`analysis to determine whether claims are directed to patent-eligible subject matter under § 101.
`
`Alice v. CLS Bank, 134 S.Ct. 2347, 2355 (2014). In the context of the present case, step 1 of Alice
`
`requires determining “whether the claims are directed to an improvement to computer
`
`functionality versus being directed to an abstract idea.” Visual Memory v. NVIDIA, 867 F.3d
`
`1253, 1261-62 (Fed. Cir. 2017). Improvements arising specifically in the realm of computer
`
`software and/or networks are not abstract under step 1. Enfish v. Microsoft, 822 F.3d 1327, 1334-
`
`39 (Fed. Cir. 2016). Under step 1, courts “‘must be careful to avoid oversimplifying the claims’
`
`by looking at them generally and failing to account for the specific requirements of the claims.”
`
`McRo v. Bandai Namco Games America, 837 F.3d 1299, 1313 (Fed. Cir. 2016); Thales Visionix
`
`v. U.S., 850 F.3d 1343, 1346-47 (Fed. Cir. 2017).
`
`6
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`

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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 11 of 25 PageID #: 760
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`If the invention is deemed abstract under step 1 of Alice, then step 2 requires
`
`“consider[ing] 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 of that abstract idea.” DDR Holdings v. Hotels.com, 773 F.3d 1245, 1255 (Fed. Cir.
`
`2014). Claims that recite a non-conventional arrangement of well-understood, routine, or
`
`conventional elements that result in a technical improvement over the prior art are patent eligible
`
`under step 2 of Alice. Bascom Global Internet Svs. v. AT&T Mobility, 827 F.3d 1341, 1349-50
`
`(Fed. Cir. 2016). “[W]hether a claim element or combination of elements is well-understood,
`
`routine and conventional to a skilled artisan in the relevant field is a question of fact” which
`
`“must be proven by clear and convincing evidence.” Berkheimer v. HP, 881 F.3d 1360, 1368
`
`(Fed. Cir. 2018), reh’g en banc denied, 890 F.3d 1369 (Fed. Cir. 2018).
`
`IV.
`
`ARGUMENT
`
`A.
`
`There are no claims against MGL under Counts I, III, or V to dismiss
`
`MGL asks this Court to dismiss Counts I (Sharples), III (Gittins), and V (Walker) as
`
`against MGL. D.I. 25, p. 6. However, these Counts make no assertion against MGL. Thus, there
`
`is nothing to dismiss. Therefore, this Court should deny as moot MGL’s request to dismiss
`
`Counts I, III, and V as against MGL. If BT later determines that MGL infringes Sharples, Gittins,
`
`and/or Walker, then BT will seek leave to amend its pleadings to add counts of infringement
`
`against MGL.
`
`B.
`
`Count IV meets the Iqbal/Twombly standard and disputed factual questions
`preclude dismissal of Count IV under Rule 12(b)(6)
`
`MGL asks this Court to dismiss Count IV (Thint) simply because MGL disagrees with the
`
`well-pleaded infringement allegations in the FAC. D.I. 25, pp. 7-9. This Court should deny
`
`7
`
`

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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 12 of 25 PageID #: 761
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`MGL’s request to dismiss Count IV because (i) the pleadings meet the Iqbal/Twombly standard
`
`and (ii) disputed questions of fact preclude dismissal under Rule 12(b)(6).
`
`The FAC states MGL has, together with IAC/INTERACTIVECORP and Match Group,
`
`Inc., “directly infringed, actively induced the infringement of, and/or contributorily infringed the
`
`Thint ‘105 patent by providing infringing products/services under the name of ‘Daily Matches’
`
`for Match.com.” The pleading also includes an infringement claim chart in Exhibit J to the FAC.
`
`D.I. 17, ¶¶ 106-17, Ex. J. The claim chart includes detailed factual allegations showing how the
`
`“Daily Matches” feature practices every element of illustrative claim 10. Id. Indeed, the factual
`
`allegations in the FAC plus the claim chart are far more detailed than the factual allegations of the
`
`complaint in the Disc Disease case, which the Federal Circuit concluded were “sufficient under
`
`the plausibility standard of Iqbal/Twombly.” 888 F.3d at 1260. In the Disc Disease case, the
`
`complaint “specifically identified the three accused products…and alleged that the accused
`
`products meet ‘each and every element of at least one claim of the [asserted patents], either
`
`literally or equivalently.’” Id. The Federal Circuit noted that “[s]pecific facts are not necessary;
`
`the statement need only ‘give the defendant fair notice of what the…claim is and the ground upon
`
`which it rests.” Id. (quoting Erickson v. Pardus, 551 U.S. 89, 93 (2007)). Here, the pleadings in
`
`the FAC give MGL fair notice of not only the accused feature but also the factual basis for
`
`applying the claim against the accused feature. Thus, the Court should deny MGL’s request to
`
`dismiss Count IV because the FAC satisfies the Iqbal/Twombly standard.4
`
`MGL contends the FAC “contains nothing showing that two sets of rules are present in the
`
`accused Match.com service, much less that one set of rules is weighted by another set of rules”
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`and that “BT equates the claims’ rules with Match.com’s user preference data.” D.I. 22, p. 7.
`
`4 IAC has been on notice of BT’s infringement allegations regarding Thint for over a year, so any
`contention that they are not aware of the accused conduct is disingenuous at best.
`
`8
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`

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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 13 of 25 PageID #: 762
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`Both assertions are baseless. The claim chart states “Match.com generates and stores a first set of
`
`rules used for matching the user with other users” that are “based on information in the user’s
`
`profile, e.g., user preferences and user attributes,” and explains that “Match.com generates
`
`personalized rule weightings for the user according to a second set of rules and with reference to a
`
`set of user preference data.” Ex. J, pp. 17-18 (emphasis added). MGL simply disagrees with the
`
`allegations in the FAC and the claim chart, raising factual and claim construction disputes in
`
`support of its Motion. For example, MGL argues that the “Daily Matches” feature does not
`
`infringe Thint, but cites only its own self-serving interpretations of the claim terms “rules” and
`
`“preference.” Absolute Software v. Stealth Signal, 659 F.3d 1121, 1129-30 (Fed. Cir. 2011)
`
`(“Infringement, whether literal or under the doctrine of equivalents, is a question of fact.”).
`
`C.
`
`Disputed facts preclude dismissal of Counts II and VI under Rule 12(b)(6)
`
`MGL asks this Court to dismiss Counts II (Titmuss) and VI (Thompson) because Titmuss
`
`and Thompson are allegedly invalid under § 101. D.I. 25, pp. 9-17. On a Rule 12(b)(6) motion
`
`asserting invalidity under § 101, all factual inferences must be drawn in favor of the non-moving
`
`party. Visual Memory, 867 F.3d at 1261-62; Aatrix, 882 F.3d at 1126-27. If the Court’s analysis
`
`gets to step 2 of Alice, “[t]he question of whether a claim element or combination of elements is
`
`well-understood, routine and conventional to a skilled artisan in the relevant field is a question of
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`fact” which “must be proven by clear and convincing evidence.” Berkheimer, 881 F.3d at 1368.
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`The importance of Berkheimer and Aatrix, and the impact they have on the merits of MGL’s
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`motion, cannot be overstated. As Judge Reyna noted in his dissent to the denial of rehearing en
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`banc, “Aatrix and Berkheimer alter the § 101 analysis in a significant and fundamental manner by
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`presenting patent eligibility under § 101 as predominately a question of fact.” Berkheimer v. HP,
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`890 F.3d 1369, 1377 (Fed. Cir. 2018).
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`9
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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 14 of 25 PageID #: 763
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`Here, as described further below, the FAC pleads facts showing the claims in Titmuss and
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`Thompson recite inventive elements and/or unconventional combinations of elements that are not
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`abstract and were not well-understood, routine, or conventional to skilled artisans in the field at
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`the time of the invention. MGL cherry-picks conventional elements from the specifications, but
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`MGL ignores the inventive elements and unconventional combinations of elements in the claims
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`that the Patent Office expressly relied upon when allowing the claims over the prior art. As such,
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`MGL’s arguments are insufficient to rebut the FAC’s well-plead allegations of inventive elements
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`and/or unconventional combinations of elements. Thus, dismissal under Rule 12(b)(6) is
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`inappropriate for at least this initial reason. Aatrix, 882 F.3d at 1126-27.
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`D.
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`Dismissal of Count II should be denied because Titmuss is directed to
`patentable subject matter under § 101
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`Dismissal of Count II (Titmuss) under Rule 12(b)(6) is additionally inappropriate because
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`Titmuss is patent eligible under both steps 1 and 2 of Alice.
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`1.
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`Titmuss is not abstract under step 1 of Alice because the claims are directed to
`improvements in information distribution systems
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`Inventions covering specific solutions to problems in the software and computer
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`networking arts are not abstract under step 1 of Alice. Enfish, 822 F.3d at 1334-39; Visual
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`Memory, 867 F.3d at 1259-62. Like the Enfish and Visual Memory claims, Titmuss is directed to
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`specific solutions to specific problems in the software and telecommunication arts.
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`To overcome wireless spectrum constraints and provide improved functionality over prior
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`art information distribution systems, claim 15 of Titmuss recites, inter alia, (i) “generating a
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`shortlist of information sources for said user on the basis of said tracking information and said
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`location data,” and (ii) “transmitting said shortlist to a terminal associated with said user so as to
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`5 BT has analyzed claim 1 because that is the only claim MGL substantively challenged. BT does
`not, however, concede that claim 1 is representative of all claims for purposes of 35 U.S.C. § 101.
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`10
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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 15 of 25 PageID #: 764
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`allow said user to select an information source of interest and thereby to access information from
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`said source.” D.I. 17, ¶ 85; Titmuss, 3:3-7, 12:35-50. Generating and sending a shortlist of
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`information sources to a user prevents a user from becoming overwhelmed with irrelevant and/or
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`out of context information, reduces the amount of data the network and backend servers would
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`otherwise have to process and transmit, and reduces the amount of data for the user’s smartphone
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`to display, which is especially helpful for phones having smaller screens. D.I. 17, ¶ 83.
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`Similar to the claims in Enfish and Visual Memory, Titmuss claim 1 recites a specific
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`implementation of a solution to problems with information systems. Like Enfish, where the
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`claimed “self-referential table” improved databases by making them faster to search, more
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`effective, and easier to configure, Titmuss improves the function and operation of an information
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`system itself rather than performing well-known functions using a computer in its ordinary
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`capacity. And, like Visual Memory, where the claimed invention gave greater flexibility and
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`avoided performance impairments of prior art systems, Titmuss provides a more effective and
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`bandwidth- and screen-efficient means for providing users with customized information. Thus,
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`claim 1 is not abstract under step 1 of Alice, and the Court should deny MGL’s motion.
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`MGL tries to oversimplify the claims as “matching users to ‘information sources’ based
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`on location” by equating Titmuss with a backpacker using a travel guide. D.I. 25, pp. 13-17.
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`MGL’s approach runs contrary to explicit Federal Circuit guidance against “‘oversimplifying the
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`claims’ by looking at them generally and failing to account for the specific requirements of the
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`claims.” McRo, 837 F.3d at 1313. Here, the claims are not directed simply to matching users to
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`information sources based on location in any abstract context as MGL contends. Instead, the
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`claims are directed to a very specific implementation that includes the patentable improvements
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`of “generating a shortlist of information sources for said user on the basis of said tracking
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`information and said location data,” and “transmitting said shortlist to a terminal associated with
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`11
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`Case 1:18-cv-00366-GMS Document 32 Filed 07/17/18 Page 16 of 25 PageID #: 765
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`said user so as to allow said user to select an information source of interest and thereby to access
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`information from said source.” D.I. 17, ¶ 85; Titmuss, 12:35-50; Ex. A, p. 5 (generating and
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`transmitting the shortlist are patentable improvements); Ex. B, pp. 4-5 (same). In fact, the
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`Titmuss invention seeks to avoid the very problems inherent in MGL’s purported analogy of a
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`backpacker who must first find a suitable travel guide, then pore through the potentially
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`overwhelming amount of information, and identify the arguably relevant items for his or her
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`location, plus