Case 2:16-cv-00741-RWS Document 36-1 Filed 10/11/16 Page 1 of 6 PageID #: 252
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`October 11, 2016
`
`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
`
`Re: Uniloc USA, Inc., et al. v. Salesforce.com, Inc., No. 2:16-cv-744
`
`Dear Judge Gilstrap:
`
`
`The parties submit this joint letter pursuant to the Court’s Standing Order Regarding
`Motions under 35 U.S.C. § 101.
`
`I. Plaintiffs Position: Claim Construction Is Necessary To Inform The Court’s § 101 Analysis
`
`
`Salesforce 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. 24 (“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
`
`
`The Asserted Patents relate to network management and application management when users
`roam on a computer network from computer to computer. Salesforce argues that: (1) all of the claims
`of the Asserted Patents are directed to abstract ideas (Mot. at 9-22), and (2) all claims fail to recite
`inventive concepts (id. at 23-29). Salesforce’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, Salesforce
`argues that the claims cover “the abstract idea of a centralized distribution model for distributing a
`product or service from a central source to end-users.” Mot. at 19. 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.
`
`
`
`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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`Case 2:16-cv-00741-RWS Document 36-1 Filed 10/11/16 Page 2 of 6 PageID #: 253
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`Salesforce’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 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.
`
`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.
`
`
`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). As there are
`clearly factual disputes regarding the proper context and meaning of this and other disputed elements,
`construction of the asserted claims is required.3
`
`For example, as to the ’466 Patent, Salesforce argues that the claims cover “the [abstract]
`idea of providing customers with a list of products or services being offered.” Mot. at 10. 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,
`Salesforce argues that the claims cover “the abstract idea of customizing a product based on a
`customer’s preferences while also accounting for the business’ preferences.” Mot. at 14. The asserted
`claims of the ’578 Patent again recite material elements such as: “application program,”
`
`3 There are also numerous means plus function terms found in the Asserted Patents that need to be construed.
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`“configurable preferences,” “application launcher program,” “user set,” “executing the application
`launcher program,” “administrator set,” “configuration manager program” and “instance,” that
`require construction. As to the ’766 Patent, Salesforce argues that the claims cover “the abstract idea
`of controlling through a policy who does and does not have access to a product or service, and
`informing customers whether or not they have such access.” Mot. at 17. 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. There are also numerous means plus function terms found
`in claims 7 and 13 that need to be construed.
`
`
`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
`
`While the Court’s standing order does not require Uniloc to propose all of its claim constructions
`at this stage, 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 have (a)
`identified evidence from the specifications or file histories that shows why certain terms need
`construction, and (b) explained how the construction of those terms would materially affect the
`§101 analysis. The former would have allowed the Court to test Uniloc’s assertion that its
`claims require construction; the latter would have enabled the Court to assess whether such
`constructions, even if available, compel deferring entry of judgment under § 101. That Uniloc
`did neither shows that assessing the invalidity of the patents-in-suit does not require construction.
`
`In addition to this letter, Uniloc already received—and declined—an opportunity to identify
`evidence its patent terms require construction. In Uniloc USA v. BitDefender Holding, No. 16-
`cv-394-RWS (E.D. Tex.), Uniloc opposed a motion to dismiss two of the four patents asserted
`here. Rather than identify any evidence its claims warrant construction, or a single proposed
`construction that would, if adopted, limit the claims to patentable subject matter, Uniloc relied on
`the plain language of the claims to assert patentability. See 16-cv-394 (RWS) D.I. 26 at 9–12,
`D.I. 32 at 8–9. Notably, Uniloc’s prior briefing discussed many of the very same terms Uniloc
`identifies here as requiring construction, yet Uniloc never argued that those terms required a
`specialized construction. See id., D.I. 26 at 11, 15.4 Uniloc also presented no argument that
`construction of any means-plus-function limitations was material to validity under § 101.5
`
`In fact, the intrinsic evidence supports Salesforce’s position that the claims in this suit require no
`specialized constructions. For example, while Uniloc argues the ‘293 Patent’s term “application
`program” requires construction, the specification gives an expansive definition, 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
`
`
`4 Uniloc’s absence of explanation is in sharp contrast with the cases it cites for the proposition
`that courts “routinely” await claim construction to decide § 101 motions. First, in Wetro Lan, the
`patentee had “proposed a construction . . . through its expert witness” and the defendant had “not
`responded with specificity”; here, Uniloc has not explained why construction could be necessary,
`let alone proposed a construction via an expert. 2016 WL 1228746, at *4. Second, Phoenix
`depended on a ruling in a prior case in which contentious claim construction briefing had already
`been submitted. See No. 14-cv-965, D.I. 184 at 3-4. Here, no such claim construction disputes
`exist; even viewing the claims most favorably to Uniloc, the §101 analysis remains unchanged.
`5 As this court has noted, “the mere presence of means plus function terms does not require a
`deferred ruling on validity under § 101.” 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).
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`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 that a software designer established as “user . . .
`settable,” and an administrator set those which are “administrator settable.” This is the very sort
`of “wholly subjective” and “qualitative” distinction that 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). Given the patents’ use of broad, generic
`computing terms, Uniloc’s analogy to Genband (a case decided after trial and irrelevant to
`whether to proceed with Section 101 analysis at the pleading stage) is inapposite, as that case
`concerned patents “meaningless outside the context of a computer network that uses specific
`[telephony technology],” whereas here the patents are drawn to any computer network. No.
`2:14-cv-33-JRG, Dkt. No. 582 at 75-76.
`
`For the sole term for which Uniloc provides any level of detail—“a segment configured …” from
`the ‘293 patent—Uniloc does no more than identify an allegedly relevant passage from the
`specification, and assert that as a result “there are clearly factual disputes regarding the proper
`context and meaning of this” term. Uniloc does not explain what those disputes are, how the
`cited passage indicates the term needs to be construed, or what an alleged construction could be.
`
`More importantly, neither in this letter nor its briefing in BitDefender does Uniloc explain how a
`narrow construction, even if adopted, would make its claims any less abstract. See CyberFone
`Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014) (affirming decision
`not to engage in claim construction before deciding § 101 eligibility where patentee did not
`explain “how the analysis would change” with construction). Uniloc’s citation to Bancorp is
`misplaced given that, there, the Federal Circuit invalidated patents under § 101 because
`“insignificant computer-based limitations,” like those at issue here, even adopting the patentee’s
`constructions, did not transform the claims into a patentable invention. 687 F.3d at 1279–81.
`
`Uniloc’s claims do no more than apply known ideas to computer environments. “No matter what
`construction 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).
`For example, ‘766 patent claim 1 addresses the conventional problem of controlling access to
`products (like a video store policy), and then applies the conventional solution of implementing
`policies and communicating results. Even if the intrinsic evidence limited terms such as “license
`management server” and “license management policy” to particular computers (such as a
`“Tivoli™ server”) and data structures (such as “TME 10™ from Tivlo Systems, Inc.”), the
`patent is still just an application of generic computer technology. See ‘766 patent col. 6:63-7:11;
`Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1349
`(Fed. Cir. 2014). The same is true for the “segment configured …” limitation, in which the
`claimed method would at best be limited to use of a prior art “PMImport applet of the eNetwork
`On-demand server” to implement the abstract idea of a centralized distribution of a product or
`service. ‘293 patent col. 17:38-54. Likewise, a narrow construction of the ‘466 Patent claims
`might limit the claimed method to distribution of particular application programs via a specific
`“user desktop interface” such as a “web browser,” the underlying method, i.e., providing a list of
`offered products, would remain abstract and lack an inventive step. See ‘466 patent col. 4:50-53.
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`Case 2:16-cv-00741-RWS Document 36-1 Filed 10/11/16 Page 6 of 6 PageID #: 257
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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
`
`Attorneys for the Plaintiffs
`
`
`
`
`
`/s/ J. Mark Mann
`J. Mark Mann
`State Bar No. 12926150
`MANN | TINDEL | THOMPSON
`300 West Main Street
`Henderson, Texas 75652
`Telephone: (903) 657-8540
`Facsimile: (903) 657-6003
`mark@themannfirm.com
`
`Kevin Johnson
`kevinjohnson@quinnemanuel.com
`Victoria Maroulis
`victoriamaroulis@quinnemanuel.com
`Ray Zado
`rayzado@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`555 Twin Dolphin Dr., 5th Floor
`Redwood Shores, CA 94065
`Tel: 650-801-5000
`Fax: 650-801-5100
`
`Sam Stake
`samstake@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Tel: 415-875-6600
`Fax: 415-845-9700
`
`Attorneys for salesforce.com, inc.
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