Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 1 of 35 PageID #: 700
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.,
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`Plaintiffs,
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`v.
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`ADP, LLC,
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`Defendant.
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`§
`§
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`§
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`Civil Action No. 2:16-cv-741 (JRG)
`LEAD CASE
`
`JURY TRIAL DEMANDED
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`
`PLAINTIFFS’ OPPOSITION TO DEFENDANT’S MOTION TO DISMISS
`FOR FAILURE TO STATE A CLAIM
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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 2 of 35 PageID #: 701
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`TABLE OF CONTENTS
`
`
`I. 
`
`II. 
`
`III. 
`
`STATEMENT OF ISSUES TO BE DECIDED.............................................................. 1 
`
`COMPUTER PROBLEMS ADDRESSED BY THE ASSERTED PATENTS ........... 1 
`
`LEGAL STANDARDS ..................................................................................................... 6 
`
`IV.  ARGUMENT ..................................................................................................................... 8 
`
`A. 
`B. 
`
`Step 1: The Patents-in-Suit Claim Patentable Subject Matter ................................ 8 
`The Asserted Patents are Directed Toward an Improvement in the Way
`Computers Operate ............................................................................................... 19 
`Step 2: The Claims of the Asserted Patents Add an Inventive Concept ............... 23 
`The Specific Components Recited in the Claims Perform Specific
`a. 
`Functions Within a Network ..................................................................... 28 
`UNILOC’S ‘293 PATENT INFRINGEMENT CLAIM IS SUFFICIENT ................ 30 
`
`C. 
`
`V. 
`
`VI.  CONCLUSION ............................................................................................................... 30 
`
`
`
`
`i
`
`

`

`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 3 of 35 PageID #: 702
`
`TABLE OF AUTHORITIES
`
`Cases 
`2-Way Computing, Inc., v. Grandstream Networks, Inc.,
`2:16-cv-0111-RCJ-PAL (D. Nev. Oct. 18, 2016) ................................................................... 18
`
` 
`800 Adept, Inc. v. Murex Sec., Ltd.,
` 539 F.3d 1354 (Fed. Cir. 2008) .................................................................................................. 2
`
`Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ........................................................................................................... passim
` 
`Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................................... 6
` 
`Audio MPEG, Inc. v. HP, Inc.,
`2:15-cv-00073-HCM-RJK (E.D. Va. Jun. 29, 2016) ............................................................... 22
`
` 
`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) ................................................. 8, 24, 29
`
` 
`Blitzsafe Texas, LLC, v. Volkswagen Group of Am., Inc.,
`Case No. 2:15-cv-1278-JRG-RSP (E.D. Tex. Aug. 19, 2016) ................................................ 32
`
` 
`Core Wireless Lic. S.à.r.l. v. LG Elecs., Inc.,
`2016 U.S. Dist. LEXIS 123232 (E.D. Tex. Aug. 8, 2016) ................................................ 11, 15
`
` 
`Core Wireless Lic. S.à.r.l. v. LG Elecs., Inc.,
`2016 U.S. Dist. LEXIS 35663 (E.D. Tex. Mar. 20, 2016) ........................................... 11, 14, 18
`
` 
`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, 603 (5th Cir. 2009) .................................................................................................. 6
` 
`
`ii
`
`

`

`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 4 of 35 PageID #: 703
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`Harrington v. State Farm Fire & Cas. Co.,
`563 F.3d 141, 147 (5th Cir. 2009) .................................................................................................. 6
` 
`In re Bill of Lading Transmission & Proc. Sys. Patent Lit.,
` 681 F.3d 1323 (Fed. Cir. 2012) .................................................................................................. 6
` 
`In re BRCA1- & BRCA2-Based Hereditary Cancer Test Pat. Lit.,
`774 F.3d 755 (Fed. Cir. 2014)............................................................................................. 8
`
` 
`JDS Techs., Inc. v. Exacq Techs.,
`2016 U.S. Dist. LEXIS 73622 (E.D. Mich., June 7, 2016) ....................................................... 9
`
` 
`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) ............................................................................ 9
`
` 
`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) .................................................... 24
`
` 
`RPost Holdings, Inc. v. Readnotify.com Pty. Ltd.,
` No. 2:11-cv-16, 2012 WL 3201898 (E.D. Tex. Jun. 29, 2012) ................................................. 6
` 
`Turner v. Pleasant, 663 F.3d 770 (5th Cir. 2011) ........................................................................... 6
` 
`Rules
` 
`35 U.S.C. §101 .......................................................................................................................... 1, 25
`35 U.S.C. § 282 ............................................................................................................................... 9
`Fed. R. Civ. P. 12(b)(6)................................................................................................................... 7
`
`iii
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`

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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 5 of 35 PageID #: 704
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`Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together “Uniloc” or
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`“Plaintiffs”), respectfully submit this opposition to the motion of defendant, ADP, LLC
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`(“Defendant” or “ADP”), to dismiss for failure to state a claim (“Motion” or “Mot.”). For the
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`reasons set forth herein, the Motion should be denied.
`
`I.
`
`STATEMENT OF ISSUES TO BE DECIDED
`
`A.
`
`
`B.
`
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`C.
`
`The claims of Asserted Patents are not directed abstract ideas and, therefore,
`are patent eligible under 35 U.S.C. §101.
`
`The claims of the Asserted Patents include inventive concepts and, therefore,
`are patent eligible under 35 U.S.C. §101.
`
`The Original Complaint for Patent Infringement properly states a claim for
`relief of the 7,069,293 Patent.
`
`
`COMPUTER PROBLEMS ADDRESSED BY THE ASSERTED PATENTS
`
`II.
`
`As explained in detail below, the Asserted Patents solve particular problems in the
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`computer field, thus rendering them patent eligible. See Enfish LLC v. Microsoft Corp., 2016
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`U.S. App. LEXIS 8699, at *21 (Fed. Cir. May 12, 2016) (“claims [that] are directed to a specific
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`implementation of a solution to a problem in the software arts” are not invalid under Section
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`101). Moreover, the claims of the Asserted Patents are “necessarily rooted in computer
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`technology in order to overcome a problem specifically arising in the realm of computer
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`networks” because they “amount to an inventive concept for resolving this particular Internet-
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`centric problem.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
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`Thus, contrary to ADP’s argument, the claims are patent eligible. Id. at 1259.
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`The Asserted Patents, originally issued to IBM, relate to network and application
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`management on a computer network. See ’466 Patent at 1:21-23; ’766 Patent at 1:21-23.
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`Further, the Asserted Patents are all part of a family of patents drawn toward addressing the
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`inefficiencies in application management in a client-server environment. Accordingly, they
`
`1
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`

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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 6 of 35 PageID #: 705
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`share similar specifications.1 Prior to the inventions claimed in the Asserted Patents, many
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`information technology organizations struggled with application deployment management
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`particularly with the advent of large, distributed networks. See, e.g., ’578 Patent 1:45-48.
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`Among the problems facing the industry were: configuring geographically diverse machines
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`running different operating systems; installing new and updated software in a timely and
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`efficient manner; monitoring software and data to ensure that they were synchronized with
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`administrative policy; and automating the software life cycle from development through
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`production. Another major challenge facing the industry at that time was maintaining proper
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`licensing procedures for existing software installations. Id. at 1:52-56.
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`A known approach to reducing software distribution was to use an application server to
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`store and maintain application programs which may then be transmitted over a network to a
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`plurality of client stations using a software program, such as Systems Management Server
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`(“SMS”) from Microsoft Corporation. Id. at 1:57-62. However, a customized install was
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`required each time for each different version of a given application. Id. at 1:67-2:2. Further, an
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`install was specific to a client station rather than to a given user. Id. at 2:2-3. Moreover,
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`applications could not be deleted or updated on the station. Id. at 2:3-6. In addition,
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`combinations of network connections, differing hardware, native applications and network
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`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”
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`initiative for Windows®, and International Business Machines Corporation’s Workspace On
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`                                                            
`1 Uniloc asserts: claims 1-8, 10-13, 15, 17-24, 26-29, 31-39, 41-42 and 46 of the ’578 Patent;
`claims 1, 12 and 17 of the ’293 Patent; claims 1- 2, 7, 15-17, 22, 30 and 35 of the ’466 Patent;
`and claims 1, 3, 5, 7, 9, 11, 13, 15 and 17 of the ’766 Patent (collectively “Asserted Patents”).
`See Dkt. No. 1 at ¶¶ 27, 38, 49, 60. ADP, however, seeks to invalidate all claims of the Asserted
`Patents (Mot. at 1). Uniloc submits that invalidating unasserted claims is legally improper. See
`e.g., 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1367 (Fed. Cir. 2008). 
`
`2
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`

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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 7 of 35 PageID #: 706
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`Demand™ attempted to address the issue of mobility of users within a network including
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`preference mobility. Id. at 2:35-40. These efforts typically required pre-installation of software
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`at the station to support their services. Id. at 2:40-42. Some of these efforts were largely limited
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`to a homogenous environment, where the station and server utilized the same operating system.
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`Id.at 2:47-49. Traditional mainframe models for centralized management, such as with the IBM
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`3270 system or an X Windows environment, only allowed for execution of applications to occur
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`at the server rather than the client station. Id. at 2:50-55. None of these attempted solutions
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`addressing the issue of mobility of users presented application choices for a given user. Id. at
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`3:8-11. Instead, they presented information associated with a given client station. Id. Moreover,
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`users had to either manually define their session characteristics at each different client station in
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`the network, or maintain local characteristic definitions which may have been inappropriate for
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`particular executing applications. Id.at 3:11-17.
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`The ’466 Patent seeks to resolve the long-standing problem of providing a seamless
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`integration of application access and session characteristics across heterogeneous networks. See
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`’466 Patent at 3:21-23. The claimed subject matter of the ’466 Patent is directed to resolving
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`that problem by providing methods, systems and computer program products for centralized
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`management of application programs on a network including a server and a client. See, e.g., id. at
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`21:17-18; 22:57-59; 23:9-10. A plurality of application programs are installed at a server, which
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`receives a login request from a user at a client. Id. at 21:20-22. A user desktop interface is
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`established at the client in response to the login request and includes a plurality of display
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`regions associated with a set of application programs from the user desktop interface and, in
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`response, an instance of the selected application program is provided to the client for execution.
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`3
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`

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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 8 of 35 PageID #: 707
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`Id. at 21:30-35. Thus, the application programs may be installed at the server and an instance of
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`a selected application program may be provided to a client when needed for execution.
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`Similarly, the ’766 Patent seeks to resolve license use management problems associated
`
`with managing applications in a distributed network environment with a plurality of client
`
`stations and a plurality of users accessing the applications from different clients. See ’766 Patent
`
`at 3:25-31. The claimed subject matter of the patent is directed to resolving the problem by
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`maintaining license management policy information for a plurality of application programs at a
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`license management server. Id. at 14:66-15:2. A request is received at the license management
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`server for a license availability of a selected one of the plurality of application programs. Id. at
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`15:5-8. The license availability for the selected application program is determined based on the
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`maintained license management policy information. Id. at 15:8-11. An unavailability indication
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`is provided to the client responsive to the selection if the license availability indicates that a
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`license is not available for the user; or, an availability indication is provided if the license
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`availability indicates that a license is available. Id. at 15:12-17. This allows for licenses to be
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`associated with a user, thereby allowing the user to move between different computers while
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`maintaining a license. Further, this allows for a software designer to provide an application
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`allowing administrators to change license use policies depending upon the requesting user. The
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`solution embodied in the ’766 Patent reduces costs and increases “uniformity in managing
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`software in a network environment by delivering configured applications when demanded by a
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`user.” Id. at 6:2-5.
`
`
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`The ’578 Patent seeks to reduce costs and increase uniformity in managing software in a
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`network environment by delivering configured applications when demanded by a user and
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`provides “an essentially hardware transparent ability for an individual user to interface to an on-
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`4
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`

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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 9 of 35 PageID #: 708
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`demand server supported client station while maintaining the user’s personal preferences for
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`each application program.” ’578 Patent at 6:2-9. The ’578 Patent is directed to resolving that
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`problem by claiming a method for management of configurable programs on a network. Id. at
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`14:65-67. An application launcher program associated with the application program is
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`distributed to a client coupled to the network. Id. at 15:1-3. A user set of the plurality of
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`configurable preferences associated with one of the plurality of authorized users executing the
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`application launcher program is obtained. Id. at 15:4-7. In addition, an administrator set of the
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`plurality of configurable preferences is obtained from an administrator. Id. at 15:8-9. The
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`application program is then executed using the obtained user set and the obtained administrator
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`set of the plurality of configurable preferences responsive to a request from the one of the
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`plurality of authorized users. Id. at 15:9-13. This provides for the desired reduced costs and
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`increased uniformity in managing software in a network environment by delivering configured
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`applications when demanded by a user. Id. at 6:2-5.
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`
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`The ’293 Patent provides an approach to the limited capabilities associated with
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`centralized management of software distribution by providing “a uniform framework for
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`deployment of new or updated application programs from different software designers.” ’293
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`Patent at 3:32-34. The claims of the ’293 Patent are directed toward resolving this problem by,
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`inter alia, providing a method for distribution of application programs to a target on-demand
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`server on a network. Id. at 21:22-25. Source and target directories for distribution of the
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`application program are specified. Id. at 21:26-30. Further, a file packet associated with the
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`application program is prepared and includes a segment configured to initiate registration
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`operations for the application program at the target on-demand server. Id. at 15:34-37. The file
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`5
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`

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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 10 of 35 PageID #: 709
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`packet is distributed to the target on-demand server to make the application program available
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`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,
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`machine, manufacture, or composition of matter.” Excluded from patent protection are “laws of
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`nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981).
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`“[T]he concern that drives this exclusionary principle [i]s one of pre-emption,” that is, “that
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`patent law not inhibit further discovery by improperly tying up the future use of these building
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`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
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`interpretation of this exclusionary principle could eviscerate patent law” because “all inventions
`
`6
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`

`

`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 11 of 35 PageID #: 710
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`at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or
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`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
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`mathematical formula to a known structure or process may well be deserving of patent
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`protection.” Diehr, 450 U.S. at 187. The abstract-ideas exception does not apply if the claimed
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`invention “solve[s] a technological problem in ‘conventional industry practice,’” “improve[s] an
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`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
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`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
`
`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
`
`7
`
`

`

`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 12 of 35 PageID #: 711
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`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 Patents-in-Suit 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
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`computer is not inherently troubling.” Id. at 17. “Instead, the analysis turns on ‘whether the
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`claims in these patents focus on a specific means 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.
`
`ADP argues that the Asserted Patents are abstract, comparing them to activities a human
`
`can do manually and simply applying those actions to a computer. Mot. at 9-21. This over-
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`generalization of the Asserted Patents is exactly what the Federal Circuit has cautioned against in
`
`8
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`

`

`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 13 of 35 PageID #: 712
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`an Alice analysis, warning that “describing the claims at such a high level of abstraction and
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`untethered from the language of the claims all but ensures that the exceptions to §101 swallow
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`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.”). ADP’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 ’578 Patent
`
`ADP first argues that the claims of the ’578 Patent “are directed to the abstract idea of
`
`providing two-tiered customization, a method of organizing human activity and long-standing
`
`commercial practice which well predates the Patents-in-Suit.” Mot. at 9. ADP erroneously
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`compares the limitations of claim 1 to a supplier providing supplies to two employees of a
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`business. Id. at 10.
`
`
`
`Claim 1 of the ’578 Patent recites:
`
`1. A method for management of configurable application programs on a network
`comprising the steps of:
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`[a] installing an application program having a plurality of configurable
`preferences and a plurality of authorized users on a server coupled to the
`network;
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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 14 of 35 PageID #: 713
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`[b] distributing an application launcher program associated with the application
`program to a client coupled to the network;
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`[c] obtaining a user set of the plurality of configurable preferences associated with
`one of the plurality of authorized users executing the application launcher
`program;
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`[d] obtaining an administrator set of the plurality of configurable preferences from
`an administrator; and
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`[e] executing the application program 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.
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`Importantly, this claim recites a specific method for management of configurable
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`
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`application programs on a network, wherein an application program having a plurality of
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`configurable preferences and a plurality of authorized users is installed on a server coupled to the
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`network. The claim further recites distributing an application launcher program associated with
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`the application program to be distributed to a client connected to the network. A user set of the
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`plurality of configurable preferences associated with one of the plurality of authorized users
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`executing the application launcher program is obtained and an administrator set of the plurality
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`of configurable preferences is obtained from an administrator. The application program is then
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`executed using the obtained user set and the obtained administrator set of the plurality of
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`configurable preferences responsive to a request from the one of the plurality of authorized users.
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`The steps of the claim are inherently electronic and “specific to devices like computers.” Core
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`Wireless Lic. S.à.r.l. v. LG Elecs., Inc., 2016 U.S. Dist. LEXIS 35663, at *11 (E.D. Tex. Mar. 20,
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`2016). They expressly require a client-server environment, distribution of application launcher
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`program and an execution of an application program using the obtained user and administrator
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`sets of configurable preferences. These steps are, therefore, clearly not tasks that can be
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`completed by a supplier providing supplies to two employees of a business. Such claims are
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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 15 of 35 PageID #: 714
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`“concrete, not abstract.” Id. at *12 (citing DDR Holdings, 773 F.3d at 1257). Likewise, the
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`claimed functionality must be performed on a computer network, using servers and application
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`programs. “[T]he asserted claims cannot be performed by the human hand or in the human mind
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`without specific hardware or circuitry.” Genband, 2016 U.S. Dist. LEXIS 134659, at *110. This
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`negates ADP’s argument that the claims are simply an abstract idea. Id.
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`ADP further argues that the claimed “’configurable preferences’ described in the ’578
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`Patent… are so broad as to be no different than the conventional preferences by which
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`conventional suppliers customize their services to increase consumer satisfaction.” Mot. at 11.
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`ADP’s construction of these claimed terms is inconsistent with the disclosure of the ’578
`
`specification, which details that “configurable preferences” implies more than “a single generic
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`example” of “color display preferences.” Id. at 12. The specification discloses that “configurable
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`preferences” can relate to “[t]he combinations of network connections, differing hardware, native
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`applications and network applications” employed by a given user that moves from workstation to
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`workstation. ’578 Patent at 2:18-20; 2:23-24. Therefore, the term “configurable preferences” is
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`not a conventional preference that can be utilized by suppliers to customize their service, but
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`rather is a term that is more specialized and serves to address the ongoing issue of roaming users
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`within a network. Moreover, in a prior patent cited by an Examiner of the United States Patent
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`and Trademark Office, the original assignee and owner of the ’578 Patent (IBM) further defined
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`computer-related preferences to be “such things as the background color on their computer
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`screen, mouse click rates, options within a specific software application, start-up screens, etc.”
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`5,875,327 Patent at 1:18-20, as well as “station configuration passwords”. Id at 4:35-43. The
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`claimed elements “user set of the plurality of configurable preferences” and “administrator set of
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`the plurality of configurable preferences” are terms that Uniloc identified as necessary for
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`Case 2:16-cv-00741-RWS Document 64 Filed 11/07/16 Page 16 of 35 PageID #: 715
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`construction (Dkt. No. 34-1) prior to a Section 101 analysis in order to ascribe proper meanings
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`to the terms that are consistent with the teachings of the ’578 Patent. Uniloc’s position is that the
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`meanings of these claimed terms be consistent with the ‘578 Patent teachings, which is contrary
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`to Defendant’s apparent construction of the terms; thus, there is clearly a dispute as the proper
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`meanings of those claimed terms.
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`ADP further argues that the dependent claims are equally abstract by making the same
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`analogy to the supplier who supplies goods to a customer company. Mot. at 12, 13. However,
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`the dependent claims require additional specific limitations that cannot be performed by a
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`supplier. For example, Claim 2 requires “a configuration manager program associated with the
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`application program.” Claim 5 requires “displaying an icon associated with the application
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`program on a screen of the client.” ’578 Patent at 15:16-17; 15:34-35. Accordingly, these
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`limitations cannot be performed by humans and are inherently computer-related functions.
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`ii)
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`The ’466 Patent
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`ADP alleges that the ’466 Patent is abstract because it “is a method of organizing human
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`activity and long-standing commercial practice which predates the Patents-in-Suit.” Mot. at 14.
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`In so arguing, ADP improperly reads the indispensable computer limitations out of the claim.
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`See, e.g., Perdiemco, LLC v. Industrack LLC, 2016 U.S. Dist. LEXIS 135667, at *16 (E.D. Tex.
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`Sept. 21, 2016) (Alice “is not a license to delete all computer-related limitations from