Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 1 of 25
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`MEDIA CHAIN, LLC,
`PLAINTIFF,
`
`v.
`
`ROKU, INC.,
`
`DEFENDANT.
`
`§
`§
`§
`§
`§
`§
`§
`
`CIVIL NO. 1:21-CV-00027-LY
`
`PLAINTIFF’S RESPONSE IN OPPOSITION TO DEFENDANT ROKU’S
`MOTION FOR JUDGMENT ON THE PLEADINGS
`
`EX1070
`Roku V. Media Chain
`U.S. Patent No. 9,715,581
`
`

`

`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 2 of 25
`
`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ................................................................................................................... 1
`
`II. LEGAL ARGUMENT ............................................................................................................ 1
`
`A.
`
`Judgment Should Not be Granted for Non-Infringement. ............................................ 1
`
`1.
`
`Pleading Standard for Infringement .............................................................................. 1
`
`2. Media Chain Adequately Pled the “Decline” Claim Limitation. .................................. 2
`
`3.
`
`Should the Court Find that Media Chain Inadequately Pled Infringement, Media
`Chain Should be Permitted to Re-Plead........................................................................ 4
`
`B.
`
`Judgment Should Not be Granted Under 35 U.S.C. § 101 ........................................... 5
`
`1.
`
`2.
`
`3.
`
`Patent Eligibility Under 35 U.S.C. §101....................................................................... 5
`
`Factual Disputes Preclude the Motion from Being Granted ......................................... 6
`
`Claim 1 of the ’581 Patent is Not Representative Because There are at Least Three
`Categories of Claims ..................................................................................................... 8
`
`4.
`
`The “Base” Category of Claims are Patent Eligible ..................................................... 9
`
`i.
`
`ii.
`
`Summary of the Claimed Invention in the “Base” Category .................................. 9
`
`Patent Eligibility Analysis for the “Base” Category of Claims ............................ 11
`
`a. Alice Step One................................................................................................. 11
`
`b. Alice Step Two ................................................................................................ 12
`
`5.
`
`The “Second” Category of Claims are Patent Eligible. .............................................. 14
`
`i.
`
`ii.
`
`Summary of Additional Claim Elements in the “Second” Category of Claims ... 14
`
`These Additional Limitations Further Support Patent Eligibility. ........................ 15
`
`6.
`
`The “Third” Category of Claims are Patent Eligible .................................................. 15
`
`i.
`
`ii.
`
`Summary of Additional Claim Elements in the “Third” Category of Claims ...... 15
`
`These Additional Limitations Further Support Patent Eligibility. ........................ 16
`
`7.
`
`Roku’s Cited Decisions are Distinguishable ............................................................... 18
`
`III. CONCLUSION ..................................................................................................................... 20
`
`ii
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`

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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 3 of 25
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`TABLE OF AUTHORITIES
`
`Cases
`
`Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) ............. 7, 8
`
`Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016) ........................... 18
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) .................................................. 5, 15
`
`Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................................... 1
`
`Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ........................................................................... 1
`
`Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) ................................................................. 8
`
`BlackBerry Ltd. v. Facebook, Inc., 2018 WL 4847053 (C.D. Cal. Aug. 21, 2018) ....................... 7
`
`Bot M8 LLC v. Sony Corporation of American, 4 F.4th 1342 (Fed. Cir. 2021) ..................... 2, 3, 4
`
`Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347
`(Fed. Cir. 2007) ........................................................................................................................... 4
`
`Conopco, Inc. v. Warner-Lambert Co., 2000 WL 342872 (D.N.J. Jan. 26, 2000) ....................... 13
`
`CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, 15 F.4th 1091 (Fed. Cir. 2021) 6, 20
`
`Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018) ...................................... 6
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) .............................. 6, 11
`
`Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256 (Fed. Cir. 2018) .................................. 2
`
`Doe v. MySpace, Inc., 528 F.3d 413 (5th Cir. 2008) ...................................................................... 1
`
`Dueling v. Devon Energy Corp., 623 Fed. Appx. 127 (5th Cir. 2015) ........................................... 4
`
`Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) ........................................... 11, 17
`
`ESW Holdings, Inc. v. Roku, Inc., 2019 WL 10303653 (W.D. Tex. May 13, 2019) ................ 6, 17
`
`Ferring B.V. v. Serenity Pharmaceuticals, LLC, 2020 WL 1164700 (S.D.N.Y. Mar. 11, 2020) . 13
`
`Free Stream Media Corp. v. Alphonso Inc., 996 F.3d 1355 (Fed. Cir. 2021) ........................ 18, 19
`
`Hebert Abstract Co. v. Touchstone Props., Ltd., 914 F.2d 74 (5th Cir. 1990) ............................... 1
`
`IDB Ventures, LLC v. Charlotte Russe Holdings, Inc., 2018 WL 5634231 (E.D. Tex. Oct. 31,
`2018) ........................................................................................................................................... 7
`
`iii
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 4 of 25
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`Intellectual Ventures II LLC v. FedEx Corp., 2018 WL 78230928 (E.D. Tex. May 10, 2018) ..... 7
`
`K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277 (Fed. Cir. 2013) ................ 2
`
`Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372 (Fed. Cir. 2017) ........................................ 2
`
`Martin's Herend Imports, Inc. v. Diamond & Gem Trading U.S. Co., 195 F.3d 765 (5th Cir.
`1999) ........................................................................................................................................... 5
`
`Mayeaux v. La. Health Serv. & Indem. Co., 376 F.3d 420 (5th Cir. 2004) .................................... 4
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) ................................... 6
`
`McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)................. 15
`
`Mortg. Grader v. First Choice Loan Services, 811 F.3d 1314 (Fed. Cir. 2016) .......................... 17
`
`Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337 (Fed. Cir. 2018) .................................................... 2
`
`Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308 (Fed. Cir. 2010) .... 4
`
`SEMICAPS Pte Ltd. v. Hamamatsu Corp., 393 F.Supp.3d 802 (N.D. Cal. 2019) ................... 9, 12
`
`Smartflash LLC v. Apple, Inc., 2015 WL 11090901 (E.D. Tex. Jan. 21, 2015) ........................... 19
`
`Taylor-Reed Corp. v. Mennen Food Products, Inc., 324 F.2d 108 (7th Cir. 1963)...................... 13
`
`Texas Instruments Inc. v. U.S. Intern. Trade Com’n, 988 F.2d 1165 (Fed. Cir. 1993) ................ 20
`
`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) .................................................. 18
`
`VB Assets, LLC v. Amazon.com, Inc., 2020 WL 5549088 (D. Del. Sept. 16, 2020) ................ 7, 19
`
`Zak v. Facebook, Inc., 206 F.Supp.3d 1262 (E.D. Mich. 2016) ............................................... 6, 12
`
`Statutes
`
`35 U.S.C. §101 ....................................................................................................................... passim
`
`Rules
`
`Fed. R. Civ. P. 12(c) ........................................................................................................... 1, 2, 5, 6
`
`Fed. R. Civ. P. 15(a) ....................................................................................................................... 4
`
`iv
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 5 of 25
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`I.
`
`INTRODUCTION
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`Plaintiff Media Chain, LLC (“Media Chain”), by and through its undersigned counsel,
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`hereby responds in opposition to Defendant Roku, Inc. (“Roku”)’s Motion for Judgment on the
`
`Pleadings [D.E. 63] (the “Motion”). Roku has not demonstrated by clear and convincing evidence
`
`that judgment on the pleadings is warranted. Media Chain has plead sufficient allegations as to
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`how Roku’s infringing systems conduct the “decline” step recited in the asserted patents.
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`Additionally, the asserted patents are not directed to an ineligible, abstract idea. At a minimum,
`
`there are significant issues of fact precluding judgment on the pleadings.
`
`II.
`
`LEGAL ARGUMENT
`
`A. Judgment Should Not be Granted for Non-Infringement.
`
`1. Pleading Standard for Infringement
`
`A motion brought pursuant to Rule 12(c) “is designed to dispose of cases where the
`
`material facts are not in dispute and a judgment on the merits can be rendered by looking to the
`
`substance of the pleadings and any judicially noticed facts.” Hebert Abstract Co. v. Touchstone
`
`Props., Ltd., 914 F.2d 74, 76 (5th Cir. 1990). Courts evaluate a motion under Rule 12(c) for
`
`judgment on the pleadings using the same standard as a motion to dismiss under Rule 12(b)(6) for
`
`failure to state a claim. Doe v. MySpace, Inc., 528 F.3d 413, 418 (5th Cir. 2008). In deciding a
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`motion under Rule 12(c), the Court must view the complaint in the light most favorable to the
`
`plaintiff. Id. While the Court must accept the factual allegations in the pleadings as true, the
`
`“plaintiff must plead ‘enough facts to state a claim to relief that is plausible on its face.’” Id.
`
`(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is facially plausible when
`
`the plaintiff pleads facts that allow the court to “draw the reasonable inference that the defendant
`
`is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). A court must
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`1
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 6 of 25
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`accept all well-pleaded facts as true and must draw all reasonable inferences in favor of the
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`plaintiff. Lormand v. U.S. Unwired, Inc., 565 F.3d 228, 232 (5th Cir. 2009).
`
`“A plaintiff is not required to plead infringement on an element-by-element basis.” Bot
`
`M8 LLC v. Sony Corporation of American, 4 F.4th 1342, 1352 (Fed. Cir. 2021) (citing Nalco Co.
`
`v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018) (“[T]he Federal Rules of Civil Procedure
`
`do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.”);
`
`(Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018) (finding that a
`
`plaintiff need not plead every element, but must only give the alleged infringer fair notice of
`
`infringement)). Instead, it is enough “that a complaint place the alleged infringer ‘on notice of
`
`what activity ... is being accused of infringement.’” Bot M8 LLC, 4 F.4th at 1352 (citing Lifetime
`
`Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017); quoting K-Tech Telecomms.,
`
`Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1284 (Fed. Cir. 2013)). “To the extent this district
`
`court and others have adopted a blanket element-by-element pleading standard for patent
`
`infringement, that approach is unsupported and goes beyond the standard the Supreme Court
`
`articulated in Iqbal and Twombly. Id.
`
`2. Media Chain Adequately Pled the “Decline” Claim Limitation.
`
`Roku incorrectly asserts that Media Chain’s allegations contradict the elements of the
`
`asserted claims requiring user data extraction when the user declines to stream or license media
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`content. Motion, at 3-6. Roku cherry-picks language from the documents supporting Media
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`Chain’s allegations to contrive the argument that the possibility of “viewing” media content means
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`that the user is only “accepting” to stream content. See id., at 4-5. Not only is Roku’s position in
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`this regard argumentative on the merits of Media Chain’s claims (and thus inappropriate for
`
`resolution under Fed. R. Civ. P. 12(c)), but its position is also unsupported by the four-corners of
`
`the pleadings before this Court.
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`2
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 7 of 25
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`Roku, for purposes of the Motion, has accepted all of Plaintiff’s claim construction
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`proposals, including Plaintiff’s position that the “decline” limitation does not require an
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`affirmative act by a user. Thus, a user’s passive interaction with a device, such as navigating or
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`scrolling past an offer to license or stream media content, constitutes a user’s decision to “decline”
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`to license or stream the content. Motion, at 2. Viewing the allegations most favorably for Media
`
`Chain, this interaction meets the “decline” limitation. Although not required to put Roku on notice
`
`of its alleged infringement, Media Chain’s exhibits from Roku detail the accused systems and/or
`
`devices extracting data when the user “interacts” with media content:
`
`“When you visit websites, apps, channels, and connected devices (including Smart
`TVs) to which Roku provides advertising or measurement and analytics services,
`we may receive information about your activities, including the content you view,
`the date and time of your visits, how you interact with these websites, apps and
`devices, and how you interact and respond to ads.”
`
`Complaint, Exhibit C [D.E. 1-3] at 6, 16, 26, 27, 38, 39 54, 55, 71 and 72 (emphasis added).
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`Furthermore, Media Chain includes specific references in the literature demonstrating that
`
`the user’s interaction with the system may include a decision to decline streaming content:
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`A stream is counted every time a stream is opened (i.e. a user presses play). If a
`user stops and starts a title multiple times, that will be counted as multiple streams.
`Multiple streams can be associated with the same title but multiple title cannot be
`associated with the same stream…. Streams can generally be expected to exceed
`visits. If visits exceeds streams, that would indicate account holders are starting
`your channel, then exiting without ever streaming any content.
`
`Id. at 8, 18, 26, 27, 28, 29, 41, 42, 56, 57, 58, 74, and 75 (emphasis added). As recited above,
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`Roku’s system can track when a user is offered a license to content on a channel and exits without
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`streaming any content, i.e., declines the licenses to the content offered on that channel.
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`Roku’s reliance on the Bot M8 decision is misplaced. In Bot M8, the Federal Circuit
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`affirmed the district court’s dismissal of two of the four asserted patents in that case because the
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`plaintiff’s allegations directly contradicted an element of the asserted claims. Bot M8 LLC, 4 F.4th
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`3
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 8 of 25
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`at 1354. Here, Media Chain has not pled anything contradictory, nor has Roku identified
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`contradictory language that would wholly preclude Media Chain from possibly claiming
`
`infringement. In contrast, the afore-cited language from Media Chain’s complaint demonstrates
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`that a user’s interaction with the accused Roku system constitutes a decision to “decline” as recited
`
`in the asserted claims and accepting Media Chain’s proffered claim construction of “decline.” The
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`court in Bot M8 held that such plausible allegations preclude a dismissal of claims at the pleading
`
`stage. Id. at 1356 (“We find that Sony—like the district court—demands too much at this stage of
`
`the proceedings. Bot M8 need not ‘prove its case at the pleading stage.’ [citation omitted]. The
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`FAC plausibly alleges that the PS4 completes its execution of the fault inspection program before
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`the game is started and supports those assertions with specific factual allegations. Nothing more is
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`required.”).
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`3. Should the Court Find that Media Chain Inadequately Pled
`Infringement, Media Chain Should be Permitted to Re-Plead.
`
`“The denial of a motion to amend a pleading under Rule 15(a) is a procedural matter …
`
`governed by the law of the regional circuit.” Pressure Products Medical Supplies, Inc. v.
`
`Greatbatch Ltd., 599 F.3d 1308, 1315 (Fed. Cir. 2010) (citing Cent. Admixture Pharmacy Servs.,
`
`Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1357 (Fed. Cir. 2007)). “Because of
`
`the liberal pleading presumption underlying Rule 15(a), we have acknowledged that the term
`
`‘discretion’ in this context ‘may be misleading, because [Rule] 15(a) evinces a bias in favor of
`
`granting leave to amend.’” Dueling v. Devon Energy Corp., 623 Fed. Appx. 127, 128 (5th Cir.
`
`2015) (citing Mayeaux v. La. Health Serv. & Indem. Co., 376 F.3d 420, 425 (5th Cir. 2004)).
`
`“[U]nless there is a substantial reason, such as undue delay, bad faith, dilatory motive, or undue
`
`prejudice to the opposing party, the discretion of the district court is not broad enough to permit
`
`denial.” Id. at 128-129 (quoting Martin's Herend Imports, Inc. v. Diamond & Gem Trading U.S.
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`4
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 9 of 25
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`Co., 195 F.3d 765, 770 (5th Cir. 1999) (internal quotation marks omitted)). “In other words,
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`‘district courts must entertain a presumption in favor of granting parties leave to amend.’” Id.
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`Here, in accordance with the foregoing standard, if the Court is inclined to grant Roku’s
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`Motion under Fed. R. Civ. P. 12(c) the Court should grant Media Chain leave to re-plead its claims
`
`of infringement. If required, Media Chain can further supplement its allegations. For example,
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`Roku’s “developer” web pages further support situations where data extraction occurs when a user
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`declines to stream or license media content, including but not limited to the following:
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`The bounce rate is not affected by whether video is full screen or windowed. We
`track the fact that a launch event occurred, a play event did or didn't occur, and
`seconds streamed. Likely the stream launched at start failed to play, or the channel
`crashed on launch or exited before video played. (emphasis added).
`
`You can track customers' progress through your channel's signup workflow to
`identify where users may be abandoning the process. For example, customers may
`successfully enter their login credentials to create an account, but exit the flow
`when prompted to enter their payment information. By firing events on each page,
`the generated feedback can be used to minimize friction in the sign-up workflow
`and thus reduce abandonment. (emphasis added).
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`True and correct copies of these additional Roku webpages are attached herewith as Exhibit “A.”
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`Accordingly, the Motion should be denied with respect to non-infringement, or at a
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`minimum Media Chain should be granted leave to amend its Complaint for the first time.
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`B. Judgment Should Not be Granted Under 35 U.S.C. § 101
`
`1. Patent Eligibility Under 35 U.S.C. §101
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`35 U.S.C. §101 defines patent-eligible subject matter as “any new and useful process,
`
`machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
`
`The Supreme Court established a two-step inquiry in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
`
`U.S. 208 (2014) for examining patent eligibility. At step one, a court must “determine whether the
`
`claims at issue are directed to a patent-ineligible concept” such as an abstract idea. Alice, 673 U.S.
`
`at 218. If so, step two requires a court to “consider the elements of each claim both individually
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`5
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 10 of 25
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`and ‘as an ordered combination’ to determine whether the additional elements ‘transform the
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`nature of the claim; into a patent-eligible application.” Id (quoting Mayo Collaborative Servs. v.
`
`Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)).
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`The Federal Circuit has acknowledged that “[d]istinguishing between claims that recite a
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`patent-eligible invention and claims that add too little to a patent-ineligible abstract concept can
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`be difficult, as the line separating the two is not always clear.” DDR Holdings, LLC v. Hotels.com,
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`L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). “All inventions at some level embody, use, reflect,
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`rest upon, or apply laws of nature, natural phenomena, or abstract ideas,” and so it is not enough
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`to ask whether the claims merely involve a subject matter that is excepted from patent eligibility.
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`Zak v. Facebook, Inc., 206 F.Supp.3d 1262, 1267 (E.D. Mich. 2016) (quoting Mayo Collaborative
`
`Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)).
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`2. Factual Disputes Preclude the Motion from Being Granted
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`“Patent eligibility under §101 is a question of law that may contain underlying issues of
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`fact.” CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, 15 F.4th 1091, 1095 (Fed. Cir.
`
`2021). “Patent eligibility can be determined on the pleadings under Rule 12(c) when there are no
`
`factual allegations that, when taken as true, prevent resolving the eligibility question as a matter
`
`of law.” Id. (citing Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1007 (Fed. Cir. 2018)).
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`As the party asserting ineligibility, Roku bears the burden of establishing all facts by clear and
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`convincing evidence. See ESW Holdings, Inc. v. Roku, Inc., 2019 WL 10303653, No. 6:19-cv-
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`00044-ADA at *2 (W.D. Tex. May 13, 2019) (collecting caselaw).
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`Factual issues in the Alice analysis often preclude deciding patent eligibility on a 12(b)(6)
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`or 12(c) motion. Several district courts have denied ruling on the pleadings when the court could
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`not determine if functional language in a computer implemented claim was directed to an abstract
`
`idea or a technological improvement without a more developed record. See e.g. VB Assets, LLC v.
`
`6
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`Amazon.com, Inc., C.A. No. 19-1419, 2020 WL 5549088, at *7 (D. Del. Sept. 16, 2020) (denying
`
`motion on Alice step one, but with leave to re-file as summary judgment); IDB Ventures, LLC v.
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`Charlotte Russe Holdings, Inc., No. 2:17-cv-660-WCB-RSP, 2018 WL 5634231, at *5 (E.D. Tex.
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`Oct. 31, 2018) (denying motion to dismiss but leaving open possibility of renewed motion with a
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`developed record).
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`Factual issues also often arise with respect to the second Alice step because “whether the
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`claim elements or the claimed combinations are ‘well-understood, routine, and conventional is a
`
`question of fact.’” Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128 (Fed.
`
`Cir. 2018). With respect to the factual disputes arising on the second step, BlackBerry Ltd. v.
`
`Facebook, Inc., No. CV 18-1844, 2018 WL 4847053, at *5 (C.D. Cal. Aug. 21, 2018) is instructive
`
`because it concerned advertising-related technology. In BlackBerry, the court denied a Rule
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`12(b)(6) motion on patent eligibility because “it would be premature to conclude as a matter of
`
`law that the claimed steps taken individually or as an ordered combination were well-understood,
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`routine, and conventional.” BlackBerry, at *5. Specifically, there was a factual dispute whether the
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`way data was organized was routine and conventional. Id., at *7. The plaintiff’s claims “refer to
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`organizing advertising information” in such a way that BlackBerry alleged it was unconventional
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`and satisfied step two of Alice. Id. (emphasis added). Thus, a factual dispute whether limitations
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`involve more than well-understood, routine, and conventional activities previously known in the
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`industry is grounds to deny a Rule 12(c) motion. See also Intellectual Ventures II LLC v. FedEx
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`Corp., 2018 WL 7823098, at *7 (E.D. Tex. May 10, 2018) (denying motion).
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`Moreover, should the Court have difficulty finding support for the factual dispute squarely
`
`within the pleadings, Media Chain should be permitted to re-plead its allegations. This was the
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`case in Aatrix Software, where the patent owner alleged that certain “data files” were not well
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`7
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 12 of 25
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`understood and routine. Aatrix Software, 882 F.3d at 1129. The patent owner conceded “that
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`nothing in the specification describes this importation of data as conventional.” Id. However, the
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`Federal Circuit reversed and remanded the district court’s dismissal since a proposed amended
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`complaint would not have been futile as it could include additional facts. Id., at 1129-30.
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`3. Claim 1 of the ’581 Patent is Not Representative Because There
`are at Least Three Categories of Claims
`
`Roku asserts that claim 1 of the ’581 patent “is representative of the six other asserted
`
`independent claims of the asserted claims.” Motion, at 16. Notwithstanding, Roku provides a chart
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`tabling eighteen points of difference between claim 1 of the ’581 patent and the other independent
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`claims. Id., at 17-18. In bullet point fashion, Roku then briefly argues how these differences, as
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`well as added limitations in the asserted dependent claims, allegedly do not affect its §101 analysis.
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`Motion, at 18-20. Nearly all of Roku’s arguments to claims other than claim 1 of the ’581 patent
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`are a wrote regurgitation of the claim language and adding, without citation or support, that the
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`limitation “does not make the method any less abstract, well understood, routine, or conventional”
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`or “does not change the analysis.” Id.
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`“Courts may treat a claim as representative in certain situations, such as if the patentee does
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`not present any meaningful argument for the distinctive significance of any claim limitations not
`
`found in the representative claim or if the parties agree to treat a claim as representative.”
`
`Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018). Media Chain disagrees that claim 1
`
`of the ’581 patent is representative of all claims, and the parties have certainly not agreed to treat
`
`this claim as representative.
`
`For purposes of the 35 U.S.C. §101 analysis, the asserted claims can be more appropriately
`
`divided into several, distinct categories. The broadest independent claim is claim 1 of the ’191
`
`patent, which Media Chain identifies herein as a “base” category of claims. If claim 1 of the ’191
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 13 of 25
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`patent is directed to patentable subject matter, all claims are directed to patentable subject matter.
`
`A “second” category of claims can be represented by claim 1 of the ’581 patent, which adds several
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`limitations related to loading, analyzing, accessing, and reproducing media content. This “second”
`
`category similarly includes dependent claims that prevent unauthorized reproduction of the media
`
`content. A “third” category of claims can be represented by claim 1 of the ’691 patent, which
`
`incorporates fingerprint technology to uniquely recognize the media content item. These three
`
`categories of claims can be briefly summarized as follows:1
`
`
`
`“Base” Category
`
`“Second” category
`
`“Third” category
`
`Brief summary broadest independent
`claim with receiving,
`evaluating, extracting,
`aggregating, storing,
`and analyzing steps.
`
`addition of loading,
`analyzing, accessing,
`reproducing, and/or declining
`to reproduce the media
`content item
`
`addition of
`fingerprint
`technology
`
`Representative
`Claim
`
`If the
`Representative
`Claim is patent
`eligible, other
`claims that are
`also patent
`eligible:
`
`
`
`Claim 1 of ’191 patent Claim 1 of ’581 patent
`
`All claims
`
`Claims 2 and 3 of ’590 patent;
`Claims 2 and 3 of ‘560 patent;
`Claims 2 and 3 of ’191 patent;
`Claims 2, 3, 10, and 11 of
`‘691 patent; Claims 9 and 10
`of ’194 patent; and all claims
`dependent thereto.
`
`Claim 1 of ’691
`patent
`
`Claim 9 of ‘691
`patent; Claim 1
`of ‘154 patent;
`and all claims
`dependent
`thereto
`
`4. The “Base” Category of Claims are Patent Eligible
`
`i.
`
`Summary of the Claimed Invention in the “Base” Category
`
`The Asserted Patents claim priority to a provisional patent application filed on November
`
`4, 2011. See ’581 Patent, at Cover Page. As explained in the specification,2 in 2011 there was “a
`
`
`1 Attached herewith is demonstrative Exhibit “B,” which is a comparative claim chart showing the
`differences between the recited limitations in each of the representative claims.
`
` 2
`
` The Court should consider the patent’s specification in the Alice framework. SEMICAPS Pte Ltd.
`v. Hamamatsu Corp., 393 F.Supp.3d 802, 816 (N.D. Cal. 2019).
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 14 of 25
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`dramatic shift in the marketplace away from media content distributed on physical media to digital
`
`media content that may be distributed via the internet.” ‘581 Patent, at 1:26-28. Prior to the
`
`distribution of online media content, the distribution of media content was “incorporated into
`
`physical media such as a compact disk (CD), a digital video disk (DVD), a printed publication,
`
`and/or any other physical media.” Id., at 1:13-19. Physical security solutions are inapplicable to
`
`digital platforms. See id., at 1:20-25. Thus, one of the problems facing media content owners was
`
`the “significantly less control over the distribution of such digital media content that may be
`
`distributed via the internet.” Id., at 1:29-32. Although not specifically mentioned in the
`
`specification, all can remember emerging digital platforms such as Napster® and Limewire® and
`
`the problems facing media content creators in the face of unfettered access to their content through
`
`these file sharing systems. This is particularly true where users of these digital platforms could
`
`remain anonymous.
`
`With this background, the specification describes numerous embodiments of systems and
`
`methods aimed at assisting media content owners transitioning to what was then the burgeoning
`
`digital world. Claim 1 of the ’191 patent recites an inventive embodiment of a computer
`
`implemented method that includes “receiving” first and second requests from first and second
`
`users “to reproduce the media content item.” Exhibit “A,” at ’191 1[a]. The system evaluates each
`
`request to determine whether the users previously acquired a license and, if they have not, offer
`
`each user a license. Id., at ’191 1[b]. After the requests are evaluated, the system extracts user-
`
`specific data where the first user accepted the offer and the second user declined the offer. Id., at
`
`’191 1[c] and 1[d]. The user data is then aggregated into a statistics record and stored in a license
`
`database such that the data is accessible to a third party. Id., at ’191 1[e] and 1[f]. Finally, the
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`Case 1:21-cv-00027-LY Document 64 Filed 12/02/21 Page 15 of 25
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`statistics record is “analyzed” to determine a target demographic and the media content item is
`
`marketed to other users corresponding to the target demographic. Id., at ’191 1[g] and 1[h].
`
`ii.
`
`Patent Eligibility Analysis for the “Base” Category of Claims
`
`a. Alice Step One
`
`Although computer-related technology is at the center of §101 jurisprudence, the Federal
`
`Circuit has expressly stated that not “all improvements in computer-related technology are
`
`inherently abstract and, therefore, must be considered at step two.” Enfish, LLC v. Microsoft Corp.,
`
`822 F.3d 1327, 1335 (Fed. Cir. 2016). In Enfish, for example, those claims concerned “a data
`
`storage and retrieval system for a computer memory.” Enfish, at 1336. There, the Federal Circuit
`
`found that those claims were “directed to a specific improvement in the way computers operate,
`
`embodied in the self-referential table” recited in the claim. Id. In reversing the district court, the
`
`Federal Circuit criticized the district court for “describing the claims at such a high level of
`
`abstraction and untethered from the language of the claims.” Enfish, at 1337.
`
`Here, Roku characterizes all the asserted claims at a high level, untethered from the
`
`language of the claims and specification, as uniformly directed to “the abstract idea of tracking
`
`which media content items c