Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 1 of 34 PageID #: 1291
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`§
`§ Case No. 2:16-cv-00741-JRG
`§
`
`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00860-JRG
`
`
`UNILOC USA, INC., et al,
`
`Plaintiffs,
`
`
`v.
`
`
`
`ADP, LLC,
`BOX, INC.,
`
`Defendants.
`
`
`PLAINTIFFS’ OPPOSITION TO DEFENDANT
`BOX, INC.’S MOTION TO DISMISS
`
`
`
`
`2AA9538
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 2 of 34 PageID #: 1292
`
`TABLE OF CONTENTS
`
`STATEMENT OF ISSUES TO BE DECIDED ................................................................. 1 
`
`COMPUTER PROBLEMS ADDRESSED BY THE ASSERTED PATENTS ................. 1 
`
`LEGAL STANDARDS ...................................................................................................... 5 
`
`ARGUMENT ...................................................................................................................... 7 
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`VI. 
`
` 
`
`
`
`
`
`A. 
`B. 
`
`C. 
`
`Step 1: The Asserted Patents Claim Patentable Subject Matter ............................. 7 
`The Asserted Patents are Directed Toward an Improvement in the Way
`Computers Operate ............................................................................................... 16 
`Step 2: The Claims of the Asserted Patents Add an Inventive Concept ............... 20 
`The Specific Components Recited in the Claims Perform Specific
`a. 
`Functions Within a Network ..................................................................... 26 
`Box has Failed to Sustain its Burden of Showing that Generic
`Components as Arranged in the Asserted Claims do not Amount to
`Inventive Concepts.................................................................................... 28 
`VENUE IS PROPER UNDER CONTROLLING LAW .................................................. 29 
`
`b.  
`
`CONCLUSION ................................................................................................................. 29 
`
`i
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 3 of 34 PageID #: 1293
`
`
`
`TABLE OF AUTHORITIES
`
`Cases 
`2-Way Computing, Inc., v. Grandstream Networks, Inc.,
`2:16-cv-0111-RCJ-PAL (D. Nev. Oct. 18, 2016) .................................................................... 14
`Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ...................................................................................................... passim
`Amdocs (Isr.) Ltd. v. Opennet Telecom, Inc.,
`2016 U.S. App. LEXIS 19593 (Fed. Cir. Nov. 1, 2016) .................................................... 25, 26
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009)) .................................................................................................................. 5
`Audio MPEG, Inc. v. HP, Inc.,
`2:15-cv-00073-HCM-RJK (E.D. Va. Jun. 29, 2016) ............................................................... 18
`Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012) .................................................................................................. 7
`Bascom Global Internet Servs. v. AT&T Mobility LLC,
`2016 U.S. App. Lexis 11687 (Fed. Cir. Jun. 27, 2016) ........................................... 7, 20, 24, 29
`Core Wireless Lic. S.à.r.l. v. LG Elecs., Inc.,
`2016 U.S. Dist. LEXIS 123232 (E.D. Tex. Aug. 8, 2016) ...................................................... 15
`Core Wireless Lic. S.à.r.l. v. LG Elecs., Inc.,
`2016 U.S. Dist. LEXIS 35663 (E.D. Tex. Mar. 20, 2016) ....................................................... 15
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ......................................................................................... passim
`Diamond v. Diehr,
`450 U.S. 175 (1981) ................................................................................................................... 6
`Enfish LLC v. Microsoft Corp.,
`2016 U.S. App. LEXIS 8699 (Fed. Cir. May 12, 2016) ................................................... passim
`Genband US LLC v. Metaswitch Networks Ltd.,
`2016 U.S. Dist. LEXIS 134659 (E.D. Tex. Sept. 29, 2016) ............................................. passim
`Gonzalez v. Kay,
`577 F.3d 600 (5th Cir. 2009) ...................................................................................................... 5
`Harrington v. State Farm Fire & Cas. Co.,
`563 F.3d 141 (5th Cir. 2009) ...................................................................................................... 5
`In re BRCA1- & BRCA2-Based Hereditary Cancer Test Pat. Lit.,
`774 F.3d 755 (Fed. Cir. 2014) .................................................................................................... 7
`JDS Techs., Inc. v. Exacq Techs.,
`2016 U.S. Dist. LEXIS 73622 (E.D. Mich., June 7, 2016) ....................................................... 8
`
`ii
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 4 of 34 PageID #: 1294
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ............................................................................................................... 6
`McRo, Inc. v. Bandai Namco Games AM. Inc.,
`2016 WL 4896481 (Fed. Cir. Sept. 13, 2016) ............................................................................ 8
`Nystrom v. Trex Co.,
`424 F.3d 1136 (Fed. Cir. 2005) .................................................................................................. 7
`Perdiemco, LLC v. Industrack LLC,
`2016 U.S. Dist. LEXIS 135667 (E.D. Tex., July 7, 2016) ................................................ passim
`Personalized Media Commc’ns, LLC v. Samsung Elec. Am., Inc.,
`2016 U.S. Dist. LEXIS 135669 (E.D. Tex. Sept. 21, 2016) .................................................... 20
`RPost Holdings, Inc. v. Readnotify.com Pty. Ltd.,
`No. 2:11-cv-16, 2012 WL 3201898 (E.D. Tex. Jun. 29, 2012) ................................................. 5
`Turner v. Pleasant,
`663 F.3d 770 (5th Cir. 2011 ....................................................................................................... 5
`
`Rules 
`35 U.S.C. § 282 ............................................................................................................................... 7
`35 U.S.C. §101 .......................................................................................................................... 1, 18
`
`
`
`
`
`
`
`
`iii
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 5 of 34 PageID #: 1295
`
`Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together “Uniloc” or
`
`“Plaintiffs”), respectfully submit this opposition to the motion of defendant, Box, Inc.
`
`(“Defendant” or “Box”), to dismiss for failure to state a claim or for improper venue (“Motion” or
`
`“Mot.”). For the reasons set forth herein, the Motion should be denied.
`
`I.
`
`STATEMENT OF ISSUES TO BE DECIDED1
`
`A.
`
`
`B.
`
`Has Box proved by clear and convincing evidence that the claims of the
`Asserted Patents are directed to abstract ideas under 35 U.S.C. §101?2
`
`If so, has Box proved by clear and convincing evidence that any such
`claim(s) of the Asserted Patents include no inventive concepts under 35
`U.S.C. §101?
`
`Is Venue proper in this District under controlling law?
`
`
`C.
`
`COMPUTER PROBLEMS ADDRESSED BY THE ASSERTED PATENTS
`
`II.
`
`As explained in detail below, the Asserted Patents solve particular problems in the
`
`computer field, thus rendering them patent eligible. See Enfish LLC v. Microsoft Corp., 2016 U.S.
`
`App. LEXIS 8699, at *21 (Fed. Cir. May 12, 2016) (“claims [that] are directed to a specific
`
`implementation of a solution to a problem in the software arts” are not invalid under Section 101).
`
`Moreover, the claims of the Asserted Patents are “necessarily rooted in computer technology in
`
`order to overcome a problem specifically arising in the realm of computer networks” because they
`
`“amount to an inventive concept for resolving this particular Internet-centric problem.” DDR
`
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) Thus, contrary to Box’s
`
`argument, the claims are patent eligible. Id. at 1259.
`
`                                                            
`1 Box did not provide a Statement of the Issues. Therefore, Uniloc includes this Statement pursuant
`to L.R. 7(c).
`
` The Asserted Patents are U.S. Patent Nos. 6,510,466 (“the ’466 Patent”), 6,324,578 (“the ’78
`Patents”) and 7,069,293 (“the ’293 Patent”). The Asserted Patents are all related and share a
`common specification. Copies of the Asserted Patents were filed with the Complaint. See Dkt.
`No. 1.
`
` 2
`
`1
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 6 of 34 PageID #: 1296
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`The Asserted Patents, originally issued to IBM, relate to network and application
`
`management on a computer network. See ’466 Patent at 1:21-23; ’578 Patent at 1:21-23. Further,
`
`the Asserted Patents are all part of a family of patents drawn toward addressing the inefficiencies
`
`in application management in a client-server environment. Accordingly, they share similar
`
`specifications.3 Prior to the inventions claimed in the Asserted Patents, many information
`
`technology organizations struggled with application deployment management particularly with the
`
`advent of large, distributed networks. See, e.g., ’578 Patent 1:45-48. Among the problems facing
`
`the industry were: configuring geographically diverse machines running different operating
`
`systems; installing new and updated software in a timely and efficient manner; monitoring
`
`software and data to ensure that they were synchronized with administrative policy; and
`
`automating the software life cycle from development through production. Another major
`
`challenge facing the industry at that time was maintaining proper licensing procedures for existing
`
`software installations. Id. at 1:52-56.
`
`A known approach to reducing software distribution was to use an application server to
`
`store and maintain application programs which may then be transmitted over a network to a
`
`plurality of client stations using a software program, such as Systems Management Server
`
`(“SMS”) from Microsoft Corporation. Id. at 1:57-62. However, a customized install was required
`
`each time for each different version of a given application. Id. at 1:67-2:2. Further, an install was
`
`specific to a client station rather than to a given user. Id. at 2:2-3. Moreover, applications could
`
`not be deleted or updated on the station. Id. at 2:3-6. In addition, combinations of network
`
`                                                            
`3 Uniloc asserts: claims 1-8, 10-11, 13-39, and 41-46 of the ’578 Patent; claims 1, 12 and 17 of the
`’293 Patent; claims 1- 5, 7-9, 13, 15-20, 22-24, 28-33, 35-37, and 41-42 of the ’466 Patent. See
`Dkt. No. 51 at ¶¶ 30, 41, 52.  
`
`2
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 7 of 34 PageID #: 1297
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`connections, differing hardware, native applications and network applications made portability of
`
`preferences or operating environments difficult. Id. at 2:19-25.
`
`Attempted solutions such as Novell’s Z.E.N.works™, Microsoft’s “Zero Administration”
`
`initiative for Windows®, and International Business Machines Corporation’s Workspace On
`
`Demand™ attempted to address the issue of mobility of users within a network including
`
`preference mobility. Id. at 2:35-40. These efforts typically required pre-installation of software at
`
`the station to support their services. Id. at 2:40-42. Some of these efforts were largely limited to a
`
`homogenous environment, where the station and server utilized the same operating system. Id.at
`
`2:47-49. Traditional mainframe models for centralized management, such as with the IBM 3270
`
`system or an X Windows environment, only allowed for execution of applications to occur at the
`
`server rather than the client station. Id. at 2:50-55. None of these attempted solutions addressing
`
`the issue of mobility of users presented application choices for a given user. Id. at 3:8-11. Instead,
`
`they presented information associated with a given client station. Id. Moreover, users had to either
`
`manually define their session characteristics at each different client station in the network, or
`
`maintain local characteristic definitions which may have been inappropriate for particular
`
`executing applications. Id.at 3:11-17.
`
`The ’466 Patent seeks to resolve the long-standing problem of providing a seamless
`
`integration of application access and session characteristics across heterogeneous networks. See
`
`’466 Patent at 3:21-23. The claimed subject matter of the ’466 Patent is directed to resolving that
`
`problem by providing methods, systems and computer program products for centralized
`
`management of application programs on a network including a server and a client. See, e.g., id. at
`
`21:17-18; 22:57-59; 23:9-10. A plurality of application programs are installed at a server, which
`
`receives a login request from a user at a client. Id. at 21:20-22. A user desktop interface is
`
`3
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`

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`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 8 of 34 PageID #: 1298
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`established at the client in response to the login request and includes a plurality of display regions
`
`associated with a set of application programs from the user desktop interface and, in response, an
`
`instance of the selected application program is provided to the client for execution. Id. at 21:30-
`
`35. Thus, the application programs may be installed at the server and an instance of a selected
`
`application program may be provided to a client when needed for execution.
`
`
`
`The ’578 Patent seeks to reduce costs and increase uniformity in managing software in a
`
`network environment by delivering configured applications when demanded by a user and
`
`provides “an essentially hardware transparent ability for an individual user to interface to an on-
`
`demand server supported client station while maintaining the user’s personal preferences for each
`
`application program.” ’578 Patent at 6:2-9. The ’578 Patent is directed to resolving that problem
`
`by claiming a method for management of configurable programs on a network. Id. at 14:65-67.
`
`An application launcher program associated with the application program is distributed to a client
`
`coupled to the network. Id. at 15:1-3. A user set of the plurality of configurable preferences
`
`associated with one of the plurality of authorized users executing the application launcher program
`
`is obtained. Id. at 15:4-7. In addition, an administrator set of the plurality of configurable
`
`preferences is obtained from an administrator. Id. at 15:8-9. The application program is then
`
`executed using the obtained user set and the obtained administrator set of the plurality of
`
`configurable preferences responsive to a request from the one of the plurality of authorized users.
`
`Id. at 15:9-13. This provides for the desired reduced costs and increased uniformity in managing
`
`software in a network environment by delivering configured applications when demanded by a
`
`user. Id. at 6:2-5.
`
`
`
`The ’293 Patent provides an approach to the limited capabilities associated with centralized
`
`management of software distribution by providing “a uniform framework for deployment of new
`
`4
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 9 of 34 PageID #: 1299
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`or updated application programs from different software designers.” ’293 Patent at 3:32-34. The
`
`claims of the ’293 Patent are directed toward resolving this problem by, inter alia, providing a
`
`method for distribution of application programs to a target on-demand server on a network. Id. at
`
`21:22-25. Source and target directories for distribution of the application program are specified.
`
`Id. at 21:26-30. Further, a file packet associated with the application program is prepared and
`
`includes a segment configured to initiate registration operations for the application program at the
`
`target on-demand server. Id. at 15:34-37. The file packet is distributed to the target on-demand
`
`server to make the application program available for use by a user at a client. Id.at 15:34-37.
`
`III. LEGAL STANDARDS
`
`
`As they are not unique to patent law, motions to dismiss are evaluated under the law of the
`
`regional circuit courts. See, e.g., In re Bill of Lading Transmission & Proc. Sys. Patent Lit., 681
`
`F.3d 1323, 1331 (Fed. Cir. 2012). In the Fifth Circuit, motions to dismiss under Fed. R. Civ. P.
`
`12(b)(6) are disfavored and rarely granted. Turner v. Pleasant, 663 F.3d 770, 775 (5th Cir. 2011);
`
`see also RPost Holdings, Inc. v. Readnotify.com Pty. Ltd., No. 2:11-cv-16, 2012 WL 3201898, at
`
`*1 (E.D. Tex. Jun. 29, 2012).
`
`
`
`In evaluating a Rule 12(b)(6) motion, the complaint should be liberally construed in favor
`
`of the plaintiff and all facts pleaded in the complaint should be taken as true. Harrington v. State
`
`Farm Fire & Cas. Co., 563 F.3d 141, 147 (5th Cir. 2009). Upon reviewing the facts most favorably
`
`to the plaintiff, the Court must decide whether the facts state a claim for relief that is plausible on
`
`its face. Gonzalez v. Kay, 577 F.3d 600, 603 (5th Cir. 2009) (quoting Ashcroft v. Iqbal, 556 U.S.
`
`662 (2009)).
`
`Under 35 U.S.C. § 101, an inventor may obtain a patent for “any new and useful process,
`
`machine, manufacture, or composition of matter.” Excluded from patent protection are “laws of
`
`5
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 10 of 34 PageID #: 1300
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`nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981).
`
`“[T]he concern that drives this exclusionary principle [i]s one of pre-emption,” that is, “that patent
`
`law not inhibit further discovery by improperly tying up the future use of these building blocks of
`
`human ingenuity.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation
`
`marks omitted). The Supreme Court recognized, however, that “too broad an interpretation of this
`
`exclusionary principle could eviscerate patent law” because “all inventions at some level embody,
`
`use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo
`
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012). Accordingly, “an
`
`invention is not rendered ineligible for patent simply because it involves an abstract concept.”
`
`Alice, 134 S. Ct. at 2354. “[A]n application of a law of nature or mathematical formula to a known
`
`structure or process may well be deserving of patent protection.” Diehr, 450 U.S. at 187. The
`
`abstract-ideas exception does not apply if the claimed invention “solve[s] a technological problem
`
`in ‘conventional industry practice,’” “improve[s] an existing technological process,” or otherwise
`
`“effect[s] an improvement in any other technology or technical field.” Alice, 134 S. Ct. at 2358-
`
`59.
`
`A court must first “determine whether the claims at issue are directed to one of those patent-
`
`ineligible concepts[:]” laws of nature, natural phenomena, or abstract ideas. Id. at 2355. If so, then
`
`secondly, the court must “search for an ‘inventive concept’— i.e., an element or combination of
`
`elements that is sufficient to ensure that the patent in practice amounts to significantly more than
`
`a patent upon the [ineligible concept] itself.” Id. (internal quotation marks omitted). Only when a
`
`claim fails both steps is it rendered ineligible subject matter under Section 101.
`
`“A party seeking to establish that particular claims are invalid must overcome the
`
`presumption of validity in 35 U.S.C. § 282 by clear and convincing evidence.” Nystrom v. Trex
`
`6
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 11 of 34 PageID #: 1301
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`Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005). The Federal Circuit has cautioned that “it will
`
`ordinarily be desirable—and often necessary—to resolve claim construction disputes prior to a §
`
`101 analysis, for the determination of patent eligibility requires a full understanding of the basic
`
`character of the claimed subject matter.” Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada
`
`(U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012). Even then, claims must be construed in favor of
`
`the nonmovant. BASCOM Global Internet Servs. v. AT&T Mobility LLC, 2016 U.S. App. Lexis
`
`11687, at *23 (Fed. Cir. Jun. 27, 2016). For these reasons, courts often decline to resolve
`
`challenges under Section 101 on a motion to dismiss. The ultimate question of eligibility under
`
`Section 101 is an issue of law. In re BRCA1- & BRCA2-Based Hereditary Cancer Test Pat. Lit.,
`
`774 F.3d 755, 759 (Fed. Cir. 2014).
`
`IV. ARGUMENT
`
`A.
`
`Step 1: The Asserted Patents Claim Patentable Subject Matter
`
`The Step 1 analysis applies a “filter to claims, considered in light of the specification based
`
`on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, 2016 U.S.
`
`App. LEXIS 8699, at *11 (internal citations omitted). When “the claims are directed to a specific
`
`implementation of a solution to a problem in the software arts” they are not directed to an abstract
`
`idea. Id. at *21. To be sure, “mere recitation of a generic computer cannot transform a patent-
`
`ineligible abstract idea into a patent-eligible invention.” Perdiemco, LLC v. Industrack LLC, 2016
`
`U.S. Dist. LEXIS 135667 at*16 (E.D. Tex., July 7, 2016)(internal citations omitted). “But this is
`
`not a license to delete all computer-related limitations from a claim and thereby declare it abstract.”
`
`Id. “Moreover, the mere fact that all the recited computer components are ‘conventional’ because
`
`the applicant did not invent an entirely new kind of computer is not inherently troubling.” Id. at
`
`17. “Instead, the analysis turns on ‘whether the claims in these patents focus on a specific means
`
`7
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 12 of 34 PageID #: 1302
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`or method that improves the relevant technology or are instead directed to a result or effect that
`
`itself is the abstract idea and merely invoke generic processes and machinery.” Id.
`
`Box argues that the Asserted Patents are abstract, comparing the ’466 and ’293 patents “to
`
`the abstract idea of software distribution,” and the asserted claims of the ’578 Patent as “directed
`
`to the abstract idea of customization based on preferences.” Mot. at 1. This over-generalization of
`
`the Asserted Patents is exactly what the Federal Circuit has cautioned against in an Alice analysis,
`
`warning that “describing the claims at such a high level of abstraction and untethered from the
`
`language of the claims all but ensures that the exceptions to §101 swallow the rule.” Enfish, 2016
`
`U.S. App. LEXIS 8699, at *16; see also McRo, Inc. v. Bandai Namco Games AM. Inc., 2016 WL
`
`4896481, at *7 (Fed. Cir. Sept. 13, 2016)(“[C]ourts must be careful to avoid oversimplifying the
`
`claims by looking at them generally and failing to account for the specific requirements of the
`
`claims.”). Box’s over-generalization of the scope of these claims should be rejected.
`
`As set forth in more detail supra and below, the claimed inventions are directed to
`
`remedying specific problems with prior systems and do not merely invoke generic computer
`
`components. See, e.g., Genband US LLC v. Metaswitch Networks Ltd., 2016 U.S. Dist. LEXIS
`
`134659, at **112-114 (E.D. Tex. Sept. 29, 2016); see also JDS Techs., Inc. v. Exacq Techs., 2016
`
`U.S. Dist. LEXIS 73622 at *20 (E.D. Mich., June 7, 2016).
`
`
`
`i)
`
`The ’466 Patent
`
`Box alleges that the ’466 Patent is abstract because it is directed to the “abstract idea of
`
`software distribution.” Mot. at 11. In so arguing, Box improperly generalizes the nature of the
`
`claims and reads the indispensable computer limitations out of the claim. See, e.g., Perdiemco,
`
`LLC v. Industrack LLC, 2016 U.S. Dist. LEXIS 135667, at *16 (E.D. Tex. Sept. 21, 2016) (Alice
`
`8
`
`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 13 of 34 PageID #: 1303
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`“is not a license to delete all computer-related limitations from a claim and thereby declare it
`
`abstract”).4 Box then attempts to analogize the claims to recent case law. Mot. at 11-14.
`
`However, claim 1 of the ’466 Patent recites:
`
`1. A method for management of application programs on a network including a
`server and a client comprising the steps of:
`
`[a] installing a plurality of application programs at the server;
`
`[b] receiving at the server a login request from a user at the client;
`
`[c] establishing a user desktop interface at the client associated with the user
`responsive to the login request from the user, the desktop interface including a
`plurality of display regions associated with a set of the plurality of application
`programs installed at the server for which the user is authorized;
`
`[d] receiving at the server a selection of one of the plurality of application programs
`from the user desktop interface; and
`
`[e] providing an instance of the selected one of the plurality of application programs
`to the client for execution responsive to the selection.
`
`Importantly, this claim recites inherent computer-related limitations that are narrowly
`
`
`
`drawn to address specific problems that existed in 1998, such as “receiving at the server a selection
`
`of one of the plurality of application programs from the user desktop interface” and “providing an
`
`instance of the selected one of the plurality of application programs to the client for execution
`
`responsive to the selection.” Id. at 21:30-33. Cf. Core Wireless, 2016 U.S. Dist. LEXIS 35663, at
`
`*11 (“concepts of ‘application,’ ‘summary window,’ and ‘unlaunched state’ are specific to devices
`
`like computers”). This claim specifically recites a client server environment where an instance of
`
`an application program is provided to a client in response to selection of the program from a user
`
`desktop interface associated with an authorized user. Notably, the instance of the application
`
`programs (i.e., executable computer program instructions) is provided to the client for execution.
`
`These steps of the claim are inherently electronic and not tasks that could be performed by the
`
`                                                            
`4 Adopted by 2016 U.S. Dist. LEXIS 134654 (E.D. Tex. Sept. 29, 2016).
`
`9
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`

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`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 14 of 34 PageID #: 1304
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`human hand. See, e.g., Genband, 2016 U.S. Dist. LEXIS 134659, at **110-111. Neither are they
`
`mental processes or methods of organizing human activity that merely invoke a computer. Rather,
`
`they inherently require a computer because they solve a problem particular to computers, namely
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`providing application programs to roaming users who login from different clients with varying
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`hardware and operating systems. Such claims are patent eligible. Core Wireless, 2016 U.S. Dist.
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`LEXIS 35663, at *12 (claim that “purports to ‘improve the functioning of the computer itself’” is
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`patent eligible) (citing Alice, 134 S. Ct. at 2359).
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`
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`Box argues that the ’466 Patent does “not improve anything about how a computer
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`operates,” arguing that the patent merely invokes generic computer components to implement an
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`abstract idea. Mot. at 15. However, the claims call for more than use of generic computer
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`components to implement an abstract idea. In fact, the claim recites establishing a “user desktop
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`interface” associated with a user that includes “a plurality of display regions associated with a set
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`of the plurality of application programs installed at the server for which the user is authorized.”
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`Moreover, the claims also recite “providing an instance of the selected one of the plurality of
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`application programs to the client for execution.” The meaning of the term “an instance of the
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`selected one of the plurality of application programs” is important to clarify the general character
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`of the patent as a solution to the problem of providing seamless integration of application access
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`across heterogeneous networks that is specific enough to avoid the risk of pre-emption. For
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`example, a proposed construction of the term as “a particular version of an application program
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`that is adapted to the type of hardware and/or operating system from which a user requests
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`execution” is not only consistent with the teachings of the ’466 Patent specification (see id. at 11:4-
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`8) but is also consistent with the plain language of the claim itself. See claim 1 at 21:17-35
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`(“application programs” vs. “instance of… application program”). The terms recited in the steps
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`10
`
`

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`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 15 of 34 PageID #: 1305
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`of the Claim 1 are not merely conventional techniques of providing responses from a server, but
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`rather are elements or combination of elements that provide user mobility in a client-server
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`environment. See Core Wireless Lic. S.à.r.l. v. LG Elecs., Inc., 2016 U.S. Dist. LEXIS 123232, at
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`*31 (E.D. Tex. Aug. 8, 2016) (claim “directed to a specific type of packet traffic-metering that is
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`confined to, and solves problems arising in, mobile device networks” is “not directed to an abstract
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`idea”), adopted by 2016 U.S. Dist. LEXIS 122745 (E.D. Tex. Sept. 12, 2016).
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`Box asserts that the dependent claims are equally abstract and add nothing to save the
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`patents from abstraction. Mot. at 17. Box’s argument should be rejected. For example, claim 2,
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`of the ’466 Patent recites:
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`A method according to claim 1 further comprising the steps of:
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`maintaining application management information for the plurality of applications
`at the server; and
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`wherein the establishing step includes the step of including a plurality of display
`regions associated with a set of the plurality of application programs for which the
`user is authorized responsive to the application management information.
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`’466 Patent at 21:36-45. This dependent claim recites that the display regions associated with the
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`application programs for which the user is authorized is responsive to application management
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`information maintained at the server. The elements of this claim are also inherently electronic and
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`not amenable to tasks performed by a human. Likewise, claim 7 specifically recites that the user
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`desktop interface is configured responsive to an identifier of the user associated with the login
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`request so as to provide associated information to the interface. Id. at 22:11-17. Again, the
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`elements of the claim are inherently electronic and not amenable to tasks performed by a human.
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`ii)
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`The ’293 Patent
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`As with the ’466 Patent, Box argues that the ’293 Patent is abstract because it is directed
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`to the “abstract idea of software distribution.” Mot. at 11. In doing so, Box again improperly
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`11
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`

`

`Case 2:16-cv-00741-RWS Document 112 Filed 12/09/16 Page 16 of 34 PageID #: 1306
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`“delete[s] all computer-related limitations from a claim and thereby declare[s] it abstract.” See
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`Perdiemco, 2016 U.S. Dist. LEXIS 135667, at *16. Box then attempts to analogize the claims to
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`recent case law. Mot. at 11-14. Box’s purported analogy should be rejected.
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`Box argues that the ’293 Patent is merely directed to “the abstract idea of software
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`distribution. Mot. at 11. This is not true. Claim 1of the ’293 Patent recites:
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`A method for distribution of application programs to a target on-demand server on
`a network comprising the following executed on a centralized network management
`server coupled to the network:
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`[a] providing an application program to be distributed to the network management
`server;
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`[b] specifying a source directory and a target directory for distribution of the
`application program;
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`[c] preparing a file packet associated with the application program and including a
`segment configured to initiate registration operations for the application program
`at the target on-demand server; and
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`[d] distributing the file packet to the target on-demand server to make the
`application program available for use by a user at a client.
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`This claim is directed to a method for distribution of application programs to a target on-
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`demand server, wherein source and target directories for distribution of an application program are
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`specified. Notably, t