Case 2:16-cv-00741-RWS Document 34-1 Filed 10/11/16 Page 1 of 5 PageID #: 242
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`October 11, 2016
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`Hon. Rodney Gilstrap
`United States District Court for the Eastern District of Texas
`Sam B. Hall, Jr. Federal Building and United States Courthouse
`100 East Houston Street
`Marshall, TX 75670
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`Re: Uniloc USA, Inc., et al. v. ADP, LLC, No. 2:16-cv-741
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`Dear Judge Gilstrap:
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`Uniloc and ADP submit this joint letter pursuant to the Court’s Standing Order Regarding
`Motions under 35 U.S.C. § 101.
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`I. Plaintiff’s Position: Claim Construction Is Necessary To Inform The Court’s § 101 Analysis
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`ADP filed a motion to dismiss Uniloc’s complaint, arguing that all (including unasserted) claims are
`invalid under 35 U.S.C. § 101. See Dkt. No. 17 (“Motion” or “Mot.”). Claim construction is necessary to
`determine whether the Asserted Patents1 contain patent-eligible subject matter. See Bancorp Servs., L.L.C.
`v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[claim construction] will
`ordinarily be desirable – and often necessary – to resolve claim construction disputes prior to a §101
`analysis.”). The inquiry under Alice is whether “the claims at issue” are directed to an abstract idea, and, if
`so, whether “the elements of each claim both individually and ‘as an ordered combination’” transform the
`nature of the claim into a patent-eligible application. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
`(2014). Conducting that claim-by-claim, element-by-element inquiry would benefit from a fuller record in
`this case as the claims are specific to problems in application management within networks.2
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`The Asserted Patents relate to network management and application management when users roam
`on a computer network from computer to computer. ADP argues that: (1) all of the claims of the Asserted
`Patents are directed to abstract ideas (Mot. at 9-21), and (2) all claims fail to recite inventive concepts (id. at
`23-29). ADP’s arguments are based on an overly-broad claim construction disregarding the explicit
`problem of application management for roaming users in computer networks to which the claims are
`directed. For example, as to the ’293 Patent, ADP argues that the claims cover “the abstract idea of
`providing on-demand distribution of information…” Mot. at 16. However, the asserted claims of the ’293
`Patent recite elements such as: “network management server,” “on-demand server,” “a segment configured
`to initiate registration operations,” “application program” and “file packet,” that are terms material to the
`claims and, thus, require construction.
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`ADP’s argument that the above terms merely represent abstract ideas is inapposite, as it reads out
`inventive concepts to particular problems in network and application management; construction is thus
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`1 U.S. Patent Nos. 6,324,578 (“the ’578 Patent”), 6,510,466 (“the ’466 Patent), 7,069,293 (“the ’293 Patent”) and 6,728,766
`(“the ’766 Patent”)
`2 Courts in this district have routinely denied Rule 12 motions made on §101 grounds as premature. See, e.g., Phoenix Licensing,
`LLC, et al. v. Advance America, Cash Advance Centers, Inc., 2:15-cv-01375, Dkt. No. 25 (E.D. Tex. Sept. 30, 2016); Wetro Lan
`LLC v. Phoenix Contact USA Inc., 2016 U.S. Dist. LEXIS 41012 *9-11 (E.D. Tex. Mar. 29, 2016).
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`required. The foregoing terms must be construed to give the claims proper context and meaning.
`Interpreting the interaction of these features as an abstract idea is simply unreasonable. See, Genband USA
`LLC v. Metaswitch Networks Ltd., No. 2:14-cv-33-JRG, Dkt. No. 582 (E.D. Tex. Sep. 29, 2016). In
`Genband, one of the claims was directed to first and second protocol agents working in IP telephony
`devices to communicate using a third protocol. Id. at 73-74. The Court rejected defendants’ arguments that
`the claim covered an abstract idea. Id. As in Genband, the claims of the ’293 Patent reciting the above
`elements “are not abstract but rather specific components that have a concrete nature and perform specific
`functions within a network.” Id. at 76, ¶ 5.
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`The ’293 Patent, as well as the other Asserted Patents, solve particular problems in the computer
`field, thus rendering them patent eligible. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
`(Fed. Cir. 2014) (upholding a claim as a patent-eligible inventive concept where the claimed solution was
`“necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm
`of computer networks” because “it amount[ed] to an inventive concept for resolving this particular Internet-
`centric problem”). For example, the ’293 Patent solves a longstanding problem in the industry for roaming
`users on networks so as to provide hardware portability by distributing application programs registered at
`on-demand servers according to client machine characteristics across heterogeneous networks. The
`solutions of the ’293 Patent, as well as the other Asserted Patents, significantly improve mobility and
`hardware portability of the application programs, specifically in networks with roaming users on different
`machines.
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`Each of the terms of the ’293 Patent, as well as the other Asserted Patents, are intended to place
`meaningful limits on claims that distinguish the claimed inventions from the prior art and are relevant – at a
`minimum – to the Court’s second-step determination of whether the elements transform the nature of the
`claim into a patent-eligible application. For example, the claim element “a segment configured to initiate
`registration operations” of the ’293 patent includes “an import data file and a call to an import program
`executing on a target station.” This is a solution to the longstanding problem of roaming users in networks
`as described above. As the ’293 patent describes, “a profile manage import call is included in the
`distributed file packet along with an import text containing the data required to properly install and register
`the application program on the on-demand server and make it available to authorized users.” The presence
`of the above language in the ’293 specification “is the single best guide to the meaning of the claim terms
`(Phillips, 415 F.3d at 1318). Although some of the above language is recited in an unasserted dependent
`claim, the scope of the element of the broader independent claim is uncertain. As even ADP is uncertain as
`to the scope of the broader element, there are clearly factual disputes regarding the proper context and
`meaning of this and other disputed elements; construction of the asserted claims is thus required.3
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`For example, as to the ’466 Patent, ADP argues that the claims cover “the abstract idea of
`centralized offering of products.” Mot. at 14. The asserted claims of the ’466 Patent recite material
`elements such as: “installing a plurality of application programs at the server,” “login request,” “user
`desktop,” “plurality of display regions” and “application management information,” that require
`construction. As to the ’578 Patent, ADP argues that the claims cover “the abstract idea of providing two-
`tiered customization…” Mot. at 9. The asserted claims of the ’578 Patent again recite material elements
`such as: “application program,” “configurable preferences,” “application launcher program,” “user set,”
`“executing the application launcher program,” “administrator set,” “configuration manager program” and
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`3 There are also numerous means plus function terms found in the Asserted Patents that need to be construed.
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`“instance,” that require construction. As to the ’766 Patent, ADP argues that the claims cover “the abstract
`idea of the centralized management of permissions.” Mot. at 19. The asserted claims of the ’766 Patent
`recite material elements such as: “license management policy,” “license management server,”
`“administrative policy override definition,” “user policy override definition” and “on-demand server,” that
`require construction.
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`The asserted claims are directed to particular methods and apparatuses that represent specific
`solutions to problems identified in the Asserted Patents. Thus, Uniloc requests that the Court defer
`deciding the Motion until the completion of claim construction.
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`II. Defendant’s Position: No Claim Construction Can Render Plaintiff’s Claims Patentable
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`While the Court’s standing order does not require Uniloc to propose all of its claim
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`constructions at this stage of the action, Uniloc must do more than simply list claim terms for each
`patent-in-suit and then state without support that each term “requires construction.” Patents whose
`claims “require construction” are still appropriately invalidated at the pleading stage if the claims
`would still be directed to ineligible subject matter even if construed as a patentee suggests. See, e.g.,
`Preservation Wellness v. Allscripts Healthcare, 2:15-cv-1559-WCB, 2016 WL 2742379, at *6 (E.D.
`Tex. May 10, 2016); Rothschild Location Techs. LLC v. Geotab USA, Inc., 6:15-cv-682-RWS-JDL,
`2016 WL 3584195, at *4 (E.D. Tex. January 4, 2016). Uniloc should (a) identify evidence from the
`specifications or file histories that shows why certain terms need construction, and (b) explain how
`construction of those terms would materially affect the Section 101 analysis. The former allows the
`Court to test the bona fides of plaintiff’s argument that its claim terms warrant construction; the latter
`enables the Court to assess whether such constructions, even if available, should defer entry of
`judgment under Section 101. That Uniloc does neither shows that ADP is correct in asserting the
`invalidity of the patents-in-suit.
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`Uniloc already received—and declined—two opportunities to identify evidence that its patent
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`terms require construction. In July and August of this year, Uniloc filed opposition and sur-reply briefs
`in Uniloc v. BitDefender, 16-cv-394-RWS (E.D. Tex.) against a motion to dismiss two of the four
`patents asserted in this action. Uniloc chose not to identify any evidence that its claims require
`construction, nor even a single construction that would, if adopted, limit the claims to patentable
`subject matter. Instead, Uniloc relied on the plain language of the claims and on attorney argument to
`assert patentability. See 16-cv-394 (RWS) D.I. 26 at 9–12, D.I. 32 at 8–9. Uniloc’s Opposition Brief in
`that action discussed many of the same terms identified in this letter as requiring construction (e.g.
`“user desktop interface,” “plurality of display regions,” “policy override definition,” and “on-demand
`server”), yet Uniloc never argued that those terms required a specialized construction. See Uniloc v.
`BitDefender, 16-cv-394 (RWS), D.I. 26 at 11, 15. Similarly, Uniloc presented no argument to Judge
`Schroeder that construction of its claims drafted in means-plus-function form was material to the
`validity of its patents.4 As Uniloc chose to rely on the plain meaning of its claim terms to address
`Section 101 before Judge Schroeder, its claims should rise and fall on those same meanings here.
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`4 In any event, patents with means-plus-function claims can still be invalidated at the pleading stage if a patentee does not
`identify meaningful limits on those claims in the specification. See Landmark Tech., LLC v. Assurant, Inc., No. 6:15-CV-
`76-RWS-JDL, 2015 WL 4388311, at *3 (E.D. Tex. July 14, 2015) (“[T]he mere presence of means plus function terms
`does not require a deferred ruling on validity under § 101.”). In Landmark, this Court dismissed a complaint asserting a
`patent with means-plus-function claims where even the corresponding structures in the specification that most favored
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`Case 2:16-cv-00741-RWS Document 34-1 Filed 10/11/16 Page 4 of 5 PageID #: 245
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`In fact, the intrinsic evidence supports ADP’s position that the claims in this suit require no
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`specialized constructions. For example, Uniloc argues in this letter that the ’293 Patent’s “segment
`configured to initiate registration operations” includes “an import data file and a call to an import program
`executing on a target station.” But this is not a proffered construction—instead, those limitations are simply
`borrowed from unasserted dependent claim 3. No claim construction is needed to ascertain that Uniloc’s
`asserted claim 1 is necessarily broader and captures other methods of application management for roaming
`users, thereby impermissibly pre-empting the abstract idea of on-demand distribution of information as
`applied on computers. Even in this argument, Uniloc relies on the plain language of the claims to address
`Section 101; the Court may as well. As a further example, Uniloc also argues that the ’293 Patent’s term
`“application program” requires construction, but the specification gives a definition with no limits,
`stating: “the term ‘application program’ generally refers to code associated with the underlying
`program functions.” (’293 Patent 14:27-29). As to the ’578 Patent, Uniloc argues that terms like
`“configurable preferences,” “user set,” and “administrator set” require construction. Yet the
`specification never defines or limits the term “preference,” and in fact explains that “[t]he designation
`of user versus administrator settable preferences may be established by the software designer providing
`the configurable application program.” (’578 Patent 9:5-29). Thus a user set of preferences is just a set
`of preferences which a software designer established as “user . . . settable,” and an administrator set
`those which are “administrator settable.” Even informed by the specification, this is the sort of “wholly
`subjective” and “qualitative” distinction which this Court has found unable to salvage an abstract
`claim. Intellectual Ventures I LLC v. J. Crew Grp., Inc., No. 6:16-CV-196-JRG, 2016 WL 4591794, at
`*5 (E.D. Tex. Aug. 24, 2016).
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`More importantly, neither in its letter to this Court nor its briefing before Judge Schroeder does
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`Uniloc explain how a narrow construction, even if adopted, would make its claims any less abstract.
`See CyberFone Sys., LLC v. CNN Interactive Group, Inc., 558 F. App’x 988 (Fed. Cir. 2014)
`(affirming district court decision not to engage in claim construction before deciding Section 101
`eligibility where patentee did not explain “how the analysis would change” with construction).
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`Whether Uniloc’s claims apply to a generic or specific computer environment, they still use
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`conventional techniques to solve conventional problems. For example, the ’766 Patent requires:
`• “maintaining license management policy information” at a “license management server,”
`• “receiving . . . a request for license availability,”
`• “determining the license availability . . . based on the maintained license management policy
`information,” and
`• providing either an “availability indication” or an “unavailability indication.”
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`(’766 Patent Claim 1). This takes the conventional problem of centralized management of permissions
`(like library lending rules), and then applies a conventional solution of implementing policies and
`communicating results. Even if, as Uniloc asserts, the intrinsic evidence arguendo limits terms like
`“license management server” and “license management policy” to particular computers and data
`structures, the patent is still just an application of a conventional solution to specific machines and
`data. Likewise, a narrow construction of the claims of the ’466 Patent might limit the claimed method
`to the distribution of particular application programs via a “user desktop interface,” i.e., a particular
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`plaintiff were “generic computer elements.” Id. at *5; see also TDE Petroleum Data Sols., Inc. v. AKM Enter., Inc., No.
`CIV.A. H–15–1821, 2015 WL 5311059, at *6, *9 n.2 (S.D. Tex. Sept. 11, 2015).
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`selection mechanism, but the underlying method, i.e., centralized ordering and delivery of customized
`products, would remain abstract. “[T]he Federal Circuit has routinely held an abstract idea does not
`become nonabstract by limiting the invention to a particular field of use or technological
`environment.” Rothschild, 2016 WL 3584195 at *6 (quoting Intellectual Ventures I LLC v. Capital
`One Bank, 792 F.3d 1363, 1367 (Fed. Cir. 2015)) (internal quotation marks omitted).
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`Uniloc’s claims apply known ideas to computer environments. “No matter what construction
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`the Court adopts the substance of the claims is the same.” Asghari-Kamrani v. United Servs. Auto.
`Ass'n, No. 2:15CV478, 2016 WL 3670804, at *6 (E.D. Va. July 5, 2016). Whether or not plaintiff’s
`claims are limited to specific computer data structures or network configurations, the claimed methods
`and solutions are abstract and unpatentable.
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`
`/s/ Kevin Gannon
`Paul J. Hayes
`Kevin Gannon
`CESARI AND MCKENNA, LLP
`88 Black Falcon Ave Suite 271
`Boston, MA 02110
`Telephone: (617) 951-2500
`Facsimile: (617) 951-3927
`Email: pjh@c-m.com
`Email: kgannon@c-m.com
`
`Craig Tadlock
`State Bar No. 00791766
`TADLOCK LAW FIRM PLLC
`2701 Dallas Parkway, Suite 360
`Plano, TX 75093
`Tel: (903) 730-6789
`Email: craig@tadlocklawfirm.com
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`Attorneys for the Plaintiffs
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`/s/ William J. McCabe
`William J. McCabe
`E-Mail: WMcCabe@perkinscoie.com
`Matthew J. Moffa (admitted pro hac vice)
`E-Mail: MMoffa@perkinscoie.com
`PERKINS COIE LLP
`30 Rockefeller Plaza, 22nd Floor
`New York, NY 10112-0085
`Telephone: (212) 262-6900
`Facsimile: (212) 977-1649
`
`Michael E. Jones
`Texas Bar No.: 10929400
`E-Mail: mikejones@potterminton.com
`POTTER MINTON, PC
`110 North College Suite 500
`Tyler, TX 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 593-0846
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`Attorneys for Defendant ADP, LLC
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