Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 1 of 32 PageID #: 656
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
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`Plaintiffs,
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`Uniloc USA, Inc. et al.,
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`v.
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`ADP, LLC, et al.,
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`Defendants.
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` No. 2:16-cv-741-JRG
` LEAD CASE
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`BLACKBOARD’S MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM
`AND IMPROPER VENUE
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`
`J. Thad Heartfield
`THE HEARTFIELD LAW FIRM
`2195 Dowlen Road
`Beaumont, Texas 77706
`(409) 866-3318
`
`Daniel R. Foster
`Christopher D. Bright
`MCDERMOTT WILL & EMERY LLP
`4 Park Plaza, Suite 1700
`Irvine, California 92614
`(949) 851-0633
`
`Michael S. Nadel
`MCDERMOTT WILL & EMERY LLP
`500 North Capitol Street, N.W.
`Washington, D.C. 20001
`(202) 756-8000
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`Attorneys for Defendant Blackboard Inc.
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`

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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 2 of 32 PageID #: 657
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`Pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(b)(3), Defendant
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`Blackboard Inc. (“Blackboard”) moves to dismiss the claims against it by Plaintiffs Uniloc USA,
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`Inc. and Uniloc Luxembourg, S.A. (collectively, “Uniloc”) for failure to state a claim upon
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`which relief can be granted and for improper venue.
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`I.
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`INTRODUCTION
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`Uniloc’s asserted patents should be found subject matter ineligible under 35 U.S.C.
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`under 35 U.S.C. § 101 because they attempt to monopolize, without contributing any technical
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`innovation, longstanding ideas about how businesses manage and interact with their customers.
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`Businesses have long been communicating with their customers so that they can provide their
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`services to their customers. The asserted patents are drawn to precisely abstract concepts of this
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`sort.
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`Specifically, the ’466 patent is directed to providing customers with a list of available
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`products or services from which the customer can select which product or service it wants; the
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`’578 patent is drawn to tailoring a product or service to each customer’s preferences; and the
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`’293 patent is directed to centralized distribution of a product or service.1 Accordingly, none of
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`the patents in suit is “directed to an improvement in the functioning of a computer,” but rather,
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`they are drawn to “well-known business practices.” See In Re TLI Commc’n LLC Patent Litig.,
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`823 F.3d 607, 612 (Fed. Cir. 2016) (internal quotation marks omitted). As such, each one of the
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`patents in suit is directed to an abstract idea.
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`1 Each of the patents-in-suit is attached to Uniloc’s Amended Complaint as an exhibit. The ’466
`and ’293 patents share the same specification. In addition, the ’578 patent incorporates by reference the
`’466 and ’293 patents, and vice versa. ’466 patent at col. 7:41-48. Accordingly, even though citations
`herein may be to only one of the asserted patents, this is for readability only, since the same disclosure is
`found in all three patents.
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`

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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 3 of 32 PageID #: 658
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`Moreover, the patents in suit couch this abstract idea in generic software and computer
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`networking technology; however, simply reciting in the claims such generic computing
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`technology is insufficient to confer subject matter eligibility. See Alice Corp. Pty. Ltd. v. CLS
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`Bank Int’l, 134 S. Ct. 2347, 2358 (2014) (“[T]he mere recitation of a generic computer,” or
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`“limiting the use of an abstract idea to a particular technological environment,” cannot
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`“transform a patent-ineligible abstract idea into a patent-eligible invention.”) (internal citations
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`omitted). Here, none of the patents in suit claim “a technical improvement over prior art ways
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`of” implementing the business practices they describe, and therefore do not transform the
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`abstract idea into patentable technological applications. See Bascom Global Internet Servs, Inc.
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`v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) (emphasis added). Uniloc’s claims
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`against Blackboard should therefore be dismissed.
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`Uniloc’s claims against Blackboard should also be dismissed for improper venue, if the
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`Supreme Court reverses In re TC Heartland LLC, 821 F.3d 1338 (Fed. Cir. 2016).
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`II.
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`STATEMENT OF THE ISSUES
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`1. Whether the pertinent claims of the asserted patents are drawn to patent-ineligible
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`subject matter under 35 U.S.C. § 101.
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`2. Whether the claims against Blackboard should be dismissed for improper venue
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`because 28 U.S.C. § 1400(b) is the exclusive provision governing venue in patent infringement
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`actions and is not supplemented by 28 U.S.C. § 1391(c).
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`III.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`A.
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`The Asserted Patents Recognize That Networked Computing Employed by
`the Patents Already Existed at the Time of the Alleged Invention.
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`Each of the patents in suit “relates to network management in general and in particular to
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`application program management on a computer network.” ’578 patent at col. 1:22-24; ’466
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`2
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 4 of 32 PageID #: 659
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`patent at col. 1:21-23; ’293 patent at col. 1:24-26. Sharing disclosure, each of the patents in suit
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`is directed to various embodiments of such application program management on a computer
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`network. Common to them all is the use of an “on-demand” server for distribution of application
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`programs. ’578 patent at col. 3:50-55; ’466 patent at col. 3:55-60; ’293 patent at col. 3:58-63.
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`Each of the patents in suit is more particularly directed to variations on this common construct of
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`an on-demand server for distribution of application programs. ’578 patent at col. 3:55-4:2
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`(“configurable preferences”); ’466 patent at col. 3:60-4:9 (“selection” of an application program
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`and “license” determination); ’293 patent at col. 4:13-26 (use of “file packages (packets)” to
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`distribute application programs).
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`The patents in suit do not purport to make technical improvements to conventional on-
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`demand servers or conventional client computers. In fact, the asserted patents explicitly note that
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`“operations according to the present invention may be realized in the hardware of existing on-
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`demand servers,” ’578 patent at col. 14:51-53, ’293 patent at col. 21:10-12 (emphasis added).2
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`The term “existing on-demand server” in the asserted patents refers to a server delivering
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`applications “as needed responsive to user requests as requests are received,” consistent with the
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`ordinary meaning of the term in the art. ’578 patent at col. 6:51-53, ’293 patent at col. 6:65-67.
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`Similarly, the conventional client computers that are recited in the claims of the asserted patents
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`“may be hardware from a variety of designers operating a variety of different operating
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`systems.” ’578 patent at col. 6:60-62, ’293 patent at col. 7:7-9. Thus, the patents acknowledge
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`that the named inventors did not create “the modern distributed processing computer
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`environment” using conventional on-demand servers and conventional client computers. ’578
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`patent at col. 1:44-57, ’293 patent at col. 1:47-59.
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`2 As the ’293 patent is a divisional of the ’466 patent, citations to the ’293 patent also refer to the
`disclosure of the ’466 patent, and vice versa.
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`3
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 5 of 32 PageID #: 660
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`Using conventional on-demand servers and conventional client computers, the asserted
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`patents do not describe or claim any technical improvements over prior art systems for achieving
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`desirable outcomes, including managing a large number of diverse users, providing easy access
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`and personalized options to authorized users, and keeping out unauthorized users. Instead, the
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`patents only reiterate these desired outcomes without describing any specific technical
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`improvements. Confirming the patents’ lack of technical contribution to the art, the patents in
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`suit identify commercially-available software and servers (which the named inventors do not
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`purport to have invented). See ’466 patent, col. 16:56-60 (“Server system 22, as described
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`previously, may be configured to operate in a TivoliTM environment….”), col. 2:7-11 (“[T]he
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`Tivoli Management Environment (TME) 10™ system from Tivoli Systems, Inc. provides a
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`software distribution feature which may be used to transmit a file package to client and server
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`stations on a network from a central Tivoli™ server”); ’578 patent at 2:6-9 (“TivoliTM server 20
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`provides a means for software distribution and management in computer network system 10.”);
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`7:9-10 (“TivoliTM server 20 provides a means for software distribution and management in
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`computer network system 10.”).
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`Exemplifying a description of functional results without a specific technical improvement
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`in servers or client computers, the asserted patents state that one of “the challenges for a network
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`administrator [is] in maintaining proper licenses for existing software” (’466 patent at col. 1:52-
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`56) and purport to “provide for license use management by determining license availability
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`before initiating execution of the application program” (’466 patent, at Abstract). The patents,
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`however, provide no details of how this is accomplished, and instead only disclose, for example
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`in relation to Figure 7 of the ’466 and ’293 patents, the functional result that “the server system
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`4
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`accepts a license request from the application” and either displays an error message or executes
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`the application. ’466 patent at col. 16:43-56.
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`This approach repeats itself across all of the asserted patents: the named inventors
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`identify an overarching desirable outcome that is applicable to modern computer networks,
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`purport to disclose and claim this outcome, but then fail to disclose or claim any specific
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`technical improvements over the prior art for how this outcome can be achieved. The claims of
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`the ’466 patent are directed to “establishing a user desktop interface . . . including a plurality of
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`display regions” reflecting “application programs installed at the server for which the user is
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`authorized.” See ’466 patent, claim 1. Again, however, neither the claims of the ’466 patent nor
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`its specification describe a technical improvement over the prior art for accomplishing this, and
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`instead merely indicate that “currently available web browser applications are known to those of
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`skill in the art which provide a user interface.” See ’466 patent, col. 9:43-48.
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`The ’578 patent is no different: its claims require “obtaining . . . configurable
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`preferences” (see ’578 patent, claim 1), but the specification’s description of the corresponding
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`steps in the figures (blocks 56 and 58 of FIG. 2; and blocks 76, 82, and 84 of FIG. 3) only
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`indicates that “preferences [are] obtained” using software, without any details of what this
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`involves or what this software does (see ’578 patent, col. 8:55-9:4, 9:66-10:10:5, 10:19-10:29).
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`Finally, the ’293 patent claims “preparing a file packet associated with the application
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`program[,] including a segment configured to initiate registration operations” and “distributing
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`the file packet.” See ’293 patent, claim 1. As with the other asserted patents, however, the ’293
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`patent does not claim or disclose a technical improvement over the prior art for implementing
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`this feature, and instead merely directs the reader to acquire two publicly-available prior art
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`products: “the TME 10™ package,” which “distribut[es] a software package” and “run[s] pre
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`5
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 7 of 32 PageID #: 662
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`and post-processing commands during the software distribution process”; and “the PMImport
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`applet of the eNetwork On-demand server (version 1.0) from IBM,” which “register[s] a
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`transferred file packet containing an application program . . . in a manner which makes it . . .
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`available to users at clients.” See ’293 patent, col. 17:38-54.
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`B.
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`Uniloc Offers Only Non-Particularized Infringement Allegations in the
`Amended Complaint, Corroborating the Lack of Any Particularized
`Improvements in the Asserted Patents.
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`Uniloc’s litigation conduct underscores its own belief that the patents in suit claim
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`outcomes that are desirable across a variety of business contexts, and not any particular technical
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`solutions for achieving these outcomes. First, Uniloc has filed more than twenty lawsuits this
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`year in this District on the patents in suit, alleging that businesses in a wide variety of industries
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`infringe Uniloc’s patents. Uniloc’s Amended Complaint (the “complaint”) against Blackboard is
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`exemplary. It repeatedly alleges that Blackboard infringes the asserted patents through the
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`“Blackboard software distribution and management system.” (Doc. 37 ¶ 11).3 The complaint
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`lacks any discussion of how this vaguely defined “system” is implemented in a way that
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`allegedly infringes the patents in suit. Uniloc alleges infringement of claims 1-5, 7-9, 13, 15-20,
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`22-24, 28-33, 35-37, and 41-42 of the ’466 patent; claims 1-8, 10-11, 13-39, and 41-46 of the
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`’578 patent; and claims 1, 12 and 17 of the ’293 patent, but it provides no particularized
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`infringement allegations for any of these claims. Uniloc’s complaint includes screen shots for
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`multiple Blackboard products across a variety of contexts, but the complaint never shows how
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`these screen shots relate to the allegedly infringing “Blackboard software distribution and
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`management system.” (Doc. 37 ¶¶ 11-30).
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`3 The complaint alleges that Blackboard is a Delaware corporation with its principal place of
`business in Washington, D.C. Id. ¶ 4. That allegation is true. Blackboard is not alleged to have, and
`does not have, a regular and established place of business in this district. See Part VI infra.
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`6
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 8 of 32 PageID #: 663
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`IV.
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`LEGAL STANDARD REGARDING PATENT INELIGIBILITY.
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`A.
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`Patent Eligibility Is Properly Decided Upon a Motion To Dismiss.
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`Patent eligibility under 35 U.S.C. § 101 is a question of law and is a threshold legal
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`inquiry properly considered in a Rule 12 motion to dismiss. In re Bilski, 545 F.3d 943, 950-951
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`(Fed. Cir. 2008) (en banc) aff’d, 130 S. Ct. 3218 (2010); Clear with Computers, LLC v. Dick’s
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`Sporting Goods, Inc., 21 F. Supp. 3d 758, 762 (E.D. Tex. 2014) (“[T]he Court determines
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`whether the complaint alleges ‘enough facts to state a claim to relief that is plausible on its
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`face.’”) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Indeed, the Federal
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`Circuit frequently affirms patent ineligibility at the pleading stage. Content Extraction &
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`Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347-49 (Fed. Cir. 2014)
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`(affirming lower court holding that abstract software claims were unpatentable at the pleading
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`stage under Rule 12(b)(6)); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 717 (Fed.
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`Cir. 2014) (same).
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`Moreover, claim construction is not required for the § 101 analysis. Content Extraction
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`& Transmission, 776 F.3d at 1349; see also Morales v. Square, Inc., 75 F. Supp. 3d 716, 721-22
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`(W.D. Tex. 2014) (“Given the absence of [any] dispute [requiring resolution] and the ‘salutary
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`effects’ of addressing § 101 at the outset of litigation, the Court finds that neither separate claim
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`construction proceedings nor further development of the factual record is required before
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`addressing the § 101 issue.” (internal citations omitted)), aff’d 621 F. App’x 660 (Fed. Cir.
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`2015); Lumen View Tech. LLC v. Findthebest.com, Inc., 984 F. Supp. 2d 189, 205 (S.D.N.Y.
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`2013) (“[T]he Federal Circuit has said that conducting a claim construction analysis before
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`addressing § 101 is not required.” (quotations marks omitted)).
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`7
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 9 of 32 PageID #: 664
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`B.
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`35 U.S.C. § 101 Bars Claims That Recite Abstract Ideas and Lack an
`Inventive Concept.
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`To be subject matter eligible for patenting, a patent must claim a “new and useful
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`process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Excluded from the
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`scope of patentable inventions are “[l]aws of nature, natural phenomena, and abstract ideas”
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`because they “are the basic tools of scientific and technological work.” Alice, 134 S. Ct. at 2354
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`(internal quotation marks omitted). To determine patent eligibility under 35 U.S.C. §101, Alice
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`set forth a two-step test:
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`First, the Court must determine whether the claims at issue are directed to an abstract idea
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`or other patent-ineligible concept. Id. at 2355. Abstract ideas ineligible for patenting include at
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`least fundamental business practices, id. at 2357, and methods for organizing human activity,
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`Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015).
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`Here, the identification of abstract ideas can be facilitated by “contrast[ing] claims ‘directed to
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`an improvement in the functioning of a computer’ with claims ‘simply adding conventional
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`components to well-known business practices.’” TLI Commc’n, 823 F.3d at 612. Ideas deemed
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`abstract by the Federal Circuit have included tailoring a website’s content to a user’s personal
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`profile, because tailoring content based on a user’s identity is a fundamental practice “long
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`prevalent in our system.” Intellectual Ventures I, 792 F.3d at 1369. As the Federal Circuit
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`explained:
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`[A] newspaper might advertise based on the customer’s location. Providing this
`minimal tailoring—e.g., providing different newspaper inserts based upon the
`location of the individual—is an abstract idea.
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`Id. Likewise, the Federal Circuit held that a patent claiming “[a] distributed system for accessing
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`and distributing electronic documents” was an abstract idea because it was drawn to the idea of
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`cataloguing implemented on a generic computer. Cloud Satchel, LLC v. Amazon.com, Inc., 76 F.
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`8
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 10 of 32 PageID #: 665
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`Supp. 3d 553, 562 (D. Del. 2014), aff’d sub nom. Cloud Satchel, LLC v. Barnes & Noble, Inc.,
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`626 F. App’x 1010 (Fed. Cir. 2015). Similarly, a system that forbade access to data unless
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`specified conditions were met was found to be a patent ineligible abstract idea. Ultramercial,
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`772 F.3d at 714-15.
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`Second, if a patent claims an abstract idea, the court must consider whether the claims
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`include additional elements, i.e., an inventive concept, sufficient to “‘transform the nature of the
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`claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2350 (quoting Mayo Collaborative
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`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). An inventive concept cannot be
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`supplied by limiting an abstract idea “to a particular technological environment” or adding “well
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`understood, routine, conventional activities previously known to the industry.” Id. at 2358-59
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`(internal quotation marks omitted). Instead, the asserted claims must “describe[] how [their]
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`particular arrangement of elements is a technical improvement over prior art ways of”
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`accomplishing the abstract ideas identified in step one of the Alice framework. Bascom, 827
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`F.3d at 1351.
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`Accordingly, simply using a computer “does not alter the analysis” in step two of the
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`Alice inquiry, as “the mere recitation of a generic computer cannot transform a patent-ineligible
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`abstract idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2357-58; see also Affinity Labs
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`of Tex. v. DirecTV, LLC, No. 2015-1845 (Fed. Cir. Sept. 23, 2016) (“simply recit[ing] the user of
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`generic features . . . is not enough” to satisfy step two). Similarly, “merely disclos[ing] the use
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`of generic computer network technology to achieve an online variation of a well-established,
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`real-world practice” does not transform an abstract idea into a patent-eligible invention.
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`Intellectual Ventures I LLC v. J. Crew Group, Inc., No. 6:16-cv-196-JRG, 2016 WL 4591794, at
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`*4 (E.D. Tex. Aug. 24, 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
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`9
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 11 of 32 PageID #: 666
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`Cir. 2014) (“That a computer receives and sends the information over a network—with no
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`further specification—is not even arguably inventive.”).
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`Courts in this District have found numerous patents ineligible under the Alice
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`framework.4
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`V.
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`ARGUMENT REGARDING PATENT INELIGIBILITY
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`All of the asserted patents are patent ineligible because each fails the two-part Alice
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`framework, namely, each is directed to an abstract idea and lacks an inventive concept that can
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`transform any claim into a patent-eligible application. See Alice, 134 S. Ct. at 2350.
`
`A.
`
`Step One of the Alice Framework: All of the Asserted Patents Claim
`Abstract Ideas.
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`The asserted patents should be found subject matter ineligible because they are directed
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`to fundamental business practices regarding providing tailored offerings to customers and
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`preventing non-customers from accessing those offerings. These business practices—and
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`methods for organizing human activity—were employed long before the priority date of the
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`asserted patents, e.g., by hotels, libraries, video rental stores, and other “brick-and-mortar”
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`businesses. See Open Parking, LLC v. ParkMe, Inc., No. 2:15-cv-976, 2016 WL 3547957, at *9
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`(W.D. Pa. June 30, 2016) (“[T]he existence of a brick and mortar analog to the solution
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`[specified in the patent claims] will be fatal under § 101); Network Apparel Grp., LP v. Airwave
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`4 See, e.g., J. Crew Group., Inc., 2016 WL 4591794; Preservation Wellness Techs. LLC v.
`Allscripts Healthcare Sols., No. 2:15-cv-1559-WCB, 2016 WL 2742379 (E.D. Tex. May 10, 2016);
`Gonzalez v. Infostream Grp., Inc., No. 2:14-cv-906-JRG, 2016 WL 1643313 (E.D. Tex. Apr. 26, 2016);
`NexusCard, Inc., 2016 WL 1162180 (E.D. Tex. Mar. 24, 2016); Voxathon LLC v. Alpine Elecs. of Am.,
`Inc., No. 2:15-cv-562-JRG, 2016 WL 260350 (E.D. Tex. Jan. 21, 2016); Orostream LLC v. ABS-CBN
`Int'l, No. 2:15-vc-248-JRG, 2015 WL 5836949 (E.D. Tex. Oct. 1, 2015); eDekka LLC, 2015 WL 5579840
`(E.D. Tex. Sept. 21, 2015); Telinit Techs., LLC v. Alteva, Inc., No. 2:14-vc-369, 2015 WL 5578604 (E.D.
`Tex. Sept. 21, 2015); Uniloc USA, Inc. v. E-MDS, Inc., No. 6:14-cv-00625-RWS, 2015 WL 10791906
`(E.D. Tex. Aug. 19, 2015); Kroy IP Holds., LLC v. Safeway, Inc., 107 F. Supp. 3d 677 (E.D. Tex. 2015);
`Clear with Computers, LLC v. Altec Indus., Inc., No. 6:14-cv-79, 2015 WL 993392 (E.D. Tex. Mar. 3,
`2015), aff'd, 636 F. App'x 1015 (Fed. Cir. 2016); Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc., 66
`F. Supp. 3d 829 (E.D. Tex. 2014); Clear with Computers, LLC, 21 F. Supp. 3d 758.
`
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`10
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 12 of 32 PageID #: 667
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`Networks Inc., No. 6:15-cv-00134, 2016 WL 4718428, at *6 (W.D. Tex. Mar. 30, 2016) (finding
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`that claims were patent ineligible because “the problem the [patent-at-issue] addresses . . . did
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`exist in the ‘brick and mortar’ context” and thus “longstanding practices to address this problem
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`predate the Internet”). Blackboard thus respectfully requests that the Court find that all four
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`asserted patents are directed to ineligible subject matter.
`
`1.
`
`The ’466 Patent Claims the Abstract Idea of Providing Customers
`with a List of Available Offerings.
`
`The ’466 patent claims the idea of providing a customer with a list of products or services
`
`being offered—an abstract concept that is fundamental to commerce. The central concept of the
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`’466 patent, establishing “display regions associated with [a variety of options] . . . for which the
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`user is authorized,” attempts to monopolize the age-old idea of providing users with a menu, and
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`is a concept that courts in this District and others have found to be subject matter ineligible. See,
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`e.g., Preservation Wellness Techs. LLC v. Allscripts Healthcare Solutions, No. 2:15-cv-1559-
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`WCB, 2016 WL 2742379, at *1-3 (E.D. Tex. May 10, 2016).
`
`To take a familiar example, universities employ this abstract concept when providing
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`students with lists of available courses:
`
`University Comparison
`Universities have been managing academic
`programs and/or courses for students long
`before the advent of computer networks.
`
`’466 Patent Claim 15
`A method for management of application
`programs on a network including a server and
`a client comprising the steps of:
`
`
`5 The other independent claims of the ’466 patent are subject to the same analysis. Independent
`claims 15 and 16, respectively, recite the same limitations as independent claim 1 in the means-plus-
`function and Beauregard claim formats. But patent claims are subject to the same § 101 analysis where
`they are “merely method claims in the guise of a device” because they “do not overcome the Supreme
`Court’s warning to avoid permitting ‘competent draftsmen’ to endow abstract claims with patent-eligible
`status.” Alice, 717 F.3d at 1288; see also Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc., 66 F. Supp.
`3d 829, 839 (E.D. Tex. 2014); eDekka LLC v. 3Balls.com, Inc., No. 2:15-CV-541 JRG, 2015 WL
`5579840, at *5 (E.D. Tex. Sept. 21, 2015) (“Because the system claim and method claim contain only
`minor differences in terminology [but] require performance of the same basic process, they should rise or
`fall together.”).
`
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`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 13 of 32 PageID #: 668
`
`’466 Patent Claim 15
`installing a plurality of application programs at
`the server;
`
`receiving at the server a login request from a
`user at the client;
`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;
`
`receiving at the server a selection of one of the
`plurality of application programs from the user
`desktop interface; and
`
`University Comparison
`A university offers a variety of courses (e.g.,
`English 101, Computer Science 106, etc.)
`and/or academic programs (e.g., an English or
`Computer Science major).
`The university receives an application for
`admission from a prospective student.
`Responsive to reviewing the application for
`admission and admitting the student, the
`university sends the student a course catalog
`and sign-up sheet with a list including courses
`and/or academic programs offered by the
`university that the student, as a first year
`admitted to the university, is authorized to
`take.
`The university receives from the admitted first
`year student a selection of course(s) and/or
`academic program(s) from the catalog from
`the student’s completed sign-up sheet.
`The university enrolls the student in the
`selected course(s) and/or academic
`program(s) for the student to attend.
`
`providing an instance of the selected one of
`the plurality of application programs to the
`client for execution responsive to the selection
`
`Further examples include an office supply company providing supplies to employees of a
`
`customer using a limited order form that accounts for the customer’s purchase restrictions, or a
`
`hotel providing amenities to guests using a list of options that varies by the type of hotel room
`
`the guest has booked. This abstract concept has existed long before the patents were drafted.
`
`Indeed, other courts have found similar claims to be patent ineligible. For example, in
`
`Preservation Wellness, 2016 WL 2742379, at *1-3, a court in this district found claims directed
`
`to remote access to medical records to be ineligible for patenting. Just as the claims of the ’466
`
`patent permit access to an application program “responsive to [a] login request,” the claims at
`
`issue in Preservation Wellness only permitted authorized physicians to access medical records.
`
`And, just as the ’466 patent requires “a user desktop interface . . . associated with a set of the
`
`plurality of application programs . . . for which the user is authorized,” the claims at issue in
`
`Preservation Wellness required “physician-only access screens” containing the “medical records
`
`of the associated participating patient.” The Preservation Wellness court concluded that the
`
`
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`12
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`

`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 14 of 32 PageID #: 669
`
`claims at issue in that case were directed to the patent ineligible, abstract idea of “providing
`
`tiered access to patient medical records of various types.” Id. at *9. The Court should similarly
`
`find here that the ’466 patent is directed to the abstract idea of providing customers with a list of
`
`accessible products and services.
`
`Dependent claims 7, 22, and 35 add that the list of options available to a customer
`
`depends on the customer’s identity.6 Businesses, including hotels, have long tailored their
`
`listings of available products and services to specific customers (e.g., returning customers); these
`
`dependent claims are thus equally directed to abstract ideas. See Clear with Computers, LLC v.
`
`Altec Indus., Inc., Nos. 6:14-cv-79 & -89, 2015 WL 993392, at *4 (E.D. Tex. Mar. 3, 2015)
`
`(“[T]he asserted claims are directed to the abstract idea of creating a customized sales proposal
`
`for a customer.”); OpenTV, Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 892 (N.D. Cal. 2014) (“The
`
`concept of gathering information about one’s intended market and attempting to customize the
`
`information then provided is as old as the saying, ‘know your audience.’”). Combining the
`
`abstract idea of the independent claims with this abstract idea found in the dependent claims does
`
`not render any claims of the ’466 patent less abstract. See NexusCard, 2016 WL 1162180, at *5
`
`(“[T]he Court finds that describing two abstract ideas in connection with each other—‘collecting
`
`customer information’ and ‘membership discount programs’—does not cause either abstract idea
`
`to then become a concrete thing”).
`
`Beyond these abstract ideas, the dependent claims of the ’466 patent only add
`
`conventional computer activity to the foregoing abstract idea. See, e.g., ’466 patent at claims 2,
`
`17, and 30 (“maintaining . . . information”). Such generic computing technology (which is
`
`6 Moreover, a court may base its ruling on the analysis of a representative claim, even absent
`agreement of the parties. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324
`n.6 (Fed. Cir. 2016); NexusCard, Inc. v. Kroger Co., No. 2:15-cv-968-JRG-RSP, 2016 WL 1162180, at
`*2 n.1 (E.D. Tex. Mar. 24, 2016).
`
`
`
`13
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`

`Case 2:16-cv-00741-RWS Document 58 Filed 10/28/16 Page 15 of 32 PageID #: 670
`
`properly analyzed under step two of the Alice framework, and discussed in more detail below),
`
`does not render the idea underlying all claims of the ’466 patent less abstract. See Network
`
`Apparel, 154 F. Supp. 3d at 477 (“Application of the first step does not include a detailed
`
`examination of the asserted claims, either individually or as an ordered combination; that
`
`analysis is properly lodged within step two.”); VideoShare, LLC v. Google, Inc., No. 13-cv-990
`
`(GMS), 2016 WL 4137524, at *5 (D. Del. Aug. 2, 2016) (“Consideration of additional
`
`limitations provided by the claims is properly deferred to the second step of the Alice analysis.”).
`
`Accordingly, the Court should find that the claims of the ’466 patent are directed to the
`
`abstract idea of providing a customer with a list of products or services being offered.
`
`2.
`
`The ’578 Patent Claims the Abstract Idea of Customizing a Product
`To Suit a Customer’s Preferences.
`
`The ’578 patent claims the abstract idea of customizing a product based on a customer’s
`
`preferences while also accounting for the business’ preferences. This concept—providing
`
`products or services based on what the customer wants so long as the business is capable and
`
`willing to provide such an offering—is one of the world’s most basic business concepts,
`
`frequently embodied