Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 1 of 13 PageID #: 1073
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`Plaintiffs,
`
`UNILOC USA, INC. et al.,
`
`
`
`v.
`
`ADP, LLC, et al.,
`
`
`
`Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`No. 2:16-cv-00741-JRG
` LEAD CASE
`
`
`
`
`
`
`
`
`
`
`BLACKBOARD’S REPLY IN SUPPORT OF ITS MOTION TO DISMISS FOR
`FAILURE TO STATE A CLAIM AND IMPROPER VENUE
`
`
`
`
`J. Thad Heartfield
`The Heartfield Law Firm
`2195 Dowlen Road
`Beaumont, Texas 77706
`(409) 866-3318
`
`Michael S. Nadel
`Natalie A. Bennett
`MCDERMOTT WILL & EMERY LLP
`500 North Capitol Street, N.W.
`Washington, D.C. 20001
`(202) 756-8000
`
`Daniel R. Foster
`Christopher D. Bright
`McDermott Will & Emery LLP
`4 Park Plaza, Suite 1700
`Irvine, California 92614
`(949) 851-0633
`
`Attorneys for Defendant Blackboard Inc.
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 2 of 13 PageID #: 1074
`
`Uniloc’s attempt to save the asserted patents from invalidity under 35 U.S.C. § 101 fails
`
`because the patents’ claims are directed to nothing more than the abstract ideas of routine
`
`business practices of businesses delivering their products and services (“application program[s]”)
`
`to their customers through on-demand servers. Although each asserted patent adds its own gloss
`
`to such routine business practices – providing customers with a list of available products or
`
`services from which the customer can select which product or service it wants (’466 patent);
`
`tailoring a product or service to each customer’s preferences (’578 patent); and centralized
`
`distribution of a product or service (’293 patent) – none of the asserted patents offers any specific
`
`improvement in computers beyond widely available generic computing technologies. Nowhere
`
`to be found in the asserted patents is any new kind of computer hardware or unique computer
`
`algorithm.
`
`In its opposition, Uniloc repeatedly claims that the asserted patents “solve a problem
`
`particular to computers, namely providing application programs to roaming users who login from
`
`different clients with varying hardware and operating systems.” E.g., Opp’n at 11. Even
`
`assuming such problem existed in the prior art (which it did not), the asserted claims do not
`
`recite any computer hardware or software that is new to solve that problem. Nowhere does
`
`Uniloc identify any asserted claim elements that purportedly expressly address the problem.
`
`This is exactly the sort of failure that renders the claims patent ineligible. See Intellectual
`
`Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1359 (Fed. Cir. 2016) (“[T]he asserted claims
`
`do not contain any limitations that address the protection gap or volume problem, e.g., by
`
`requiring automatic updates to the antivirus or antispam software or the ability to deal with a
`
`large volume of such software … [W]hen a claim directed to an abstract idea ‘contains no
`
`restriction on how the result is accomplished . . . [and] [t]he mechanism . . . is not described,
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 3 of 13 PageID #: 1075
`
`although this is stated to be the essential innovation[,]’ then the claim is not patent-eligible.”).1
`
`The problem identified by Uniloc and the asserted patents are thus ships passing in the night –
`
`they do not meet up in the asserted claims. The asserted patents thus fail the test for patent
`
`eligibility under Section 101.
`
`I.
`
`THE ASSERTED PATENTS CLAIM ABSTRACT IDEAS.
`
`A.
`
`Uniloc’s Own Descriptions Reveal the Abstract Ideas of the Asserted Patents.
`
`Uniloc describes the ’466 patent as follows: “application programs may be installed at
`
`the server and an instance of a selected application program may be provided to a client when
`
`needed for execution.” Opp’n at 4. This precisely aligns with Blackboard’s description of the
`
`’466 patent as the abstract idea of “providing customers with a list of available products or
`
`services from which the customer can select which product or service it wants.”
`
`Uniloc describes the ’578 patent as follows: “delivering configured applications when
`
`demanded by a user” using “configurable preferences.” Opp’n at 5. This too precisely aligns
`
`with Blackboard’s description of the ’578 patent as the abstract idea of “tailoring a product or
`
`service to each customer’s preferences.”
`
`Finally, Uniloc describes the ’293 patent as follows: “The file packet is distributed to the
`
`target on-demand server to make the application program available for use by a user at a client.”
`
`Opp’n at 5. This also precisely aligns with Blackboard’s description of the ’293 patent as the
`
`abstract idea of “centralized distribution of a product or service.”
`
`
`1 Although discussed in Blackboard’s motion, Uniloc’s opposition does not address the Intellectual Ventures I LLC
`v. Symantec Corp. case at all.
`
`
`
`2
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 4 of 13 PageID #: 1076
`
`B.
`
`The Asserted Claims Do Not Recite Any Specialized Computer Hardware or
`Software Beyond the Abstract Ideas.
`
`1.
`
`The Asserted ’466 Patent Claims Recite Generic Computers
`Performing Abstract Ideas.
`
`Uniloc argues that the ’466 patent is not abstract because “it inherently require[s] a
`
`computer.” Opp’n at 11. That is not the test for patent eligibility. If that were the test, all patent
`
`claims reciting computer technologies would be patent eligible, and clearly that is not the case.
`
`Only those patents that purport to provide a specific computer improvement may be eligible. See
`
`In Re TLI Commc’n LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). Uniloc identifies
`
`nothing in the asserted independent claims of the ’466 patent that purportedly recites – without a
`
`further claim construction – any specific computer improvement. Rather, Uniloc resorts to
`
`offering a construction for a single term in a futile attempt to save those claims. For the term “an
`
`instance of the selected one of the plurality of application programs,” Uniloc offers the proposed
`
`construction “a modified version of an application program that is adapted to the type of
`
`hardware and/or operating system from which a user requests execution.” Opp’n at 12-13.
`
`Uniloc argues that this claim construction is important to expressing the solution to the “problem
`
`of providing seamless integration of application access across heterogeneous networks.” Id. at
`
`12. However, Uniloc’s proposed construction – even if accepted – is unhelpful to its cause.
`
`Nothing about Uniloc’s proposed construction expresses that the adaptation of the application
`
`program occurs for each of multiple “heterogeneous networks.” And even if it did, such
`
`tailoring of a product or service is nothing more than abstract. See Intellectual Ventures I LLC v.
`
`Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (“[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.”). Uniloc’s
`
`reliance on Core Wireless is misplaced because the claim language itself taught a specific type of
`
`
`
`3
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 5 of 13 PageID #: 1077
`
`computer improvement in the nature of a specialized algorithm. Core Wireless Licensing
`
`S.A.R.L. v. LG Elecs., Inc., 2016 U.S. Dist. LEXIS 123232, at *31-32 (E.D. Tex. Aug. 8, 2016)
`
`(“The claim teaches further delaying or metering the transmission by an integer multiple of the
`
`transmission time interval. This is an archetypal example of an invention directed to
`
`‘improv[ing] the functioning of the computer itself’ or ‘improv[ing] an existing technological
`
`process’ that Courts have repeatedly held to be patent-eligible.”).
`
`Uniloc devotes much of its argument about the ’466 patent to two dependent claims –
`
`claims 2 and 7. Of course, this does not help any of the independent claims of the ’466 patent.
`
`In any event, Uniloc’s arguments about the dependent claims also fail. Uniloc argues that the
`
`“display regions” are responsive to information “maintained at the server” (for claim 2), and that
`
`the “user desktop interface is configured responsive to an identifier of the user” (for claim 7).
`
`Again, such tailoring a product or service to a customer’s tastes is nothing more than an abstract
`
`idea. See Intellectual Ventures I LLC, 792 F.3d at 1369; 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.’”).
`
`2.
`
`The Asserted ’578 Patent Claims Recite Generic Computers
`Performing Abstract Ideas.
`
`Stripping away Uniloc’s flawed argument that claims reciting computers cannot be
`
`invalid under Section 101, Uniloc’s attempt to save the independent claims of the ’578 patent
`
`boils down to this: an application program is executed using sets of “configurable preferences,”
`
`and such a term requires claim construction before a Section 101 analysis. Opp’n at 14-15. But
`
`
`
`4
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 6 of 13 PageID #: 1078
`
`the ’578 patent specification never seemingly 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, these are just sets 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. See 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).
`
`Curiously, rather than referring to one of the asserted patents, Uniloc refers to another
`
`patent for the proposition that “the original assignee and owner of the ’578 Patent (IBM) further
`
`defined computer-related preferences to be ‘such things as the background color on their
`
`computer screen, mouse click rates, options within a specific software application, start-up
`
`screens, etc.’, as well as ‘station configuration passwords.’ U.S. Patent No. 5,875,327 at 1:18-20,
`
`4:35-43.” Id. at 15. Such a laundry list of possible examples is no construction at all,
`
`emphasized by the open-ended “etc.” Again, such tailoring a product or service to a customer’s
`
`tastes (or “configurable preferences”) is nothing more than an abstract idea. See Intellectual
`
`Ventures I LLC, 792 F.3d at 1369; Clear with Computers, LLC, Nos. 6:14-cv-79 & -89, 2015
`
`WL 993392, at *4; OpenTV, Inc., 76 F. Supp. 3d at 892. Uniloc’s analogy to Genband is
`
`irrelevant to the abstract idea of the ’578 patent claims – which recite no special computer
`
`algorithms – because Genband involved claims reciting specific improvements in IP protocols.
`
`Genband Us Llc v. Metaswitch Networks, 2016 U.S. Dist. LEXIS 134659, at *109 (E.D. Tex.
`
`Sept. 29, 2016) (“[T]he claims deal with specific problems that arise in specific computer
`
`networks—for example, IP communications between different IP telephony devices using first
`
`
`
`5
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 7 of 13 PageID #: 1079
`
`and second IP protocols via the implementation of specific components (e.g., protocol agents and
`
`an interworking agent) that perform specific functions (e.g., implementing a specific third
`
`protocol that operates in multiple specific ways, or the specific handling of particular data—such
`
`as media capabilities description and media stream management information).”).
`
`As for the dependent claims of the ’578 patent, Uniloc only discusses claims 2 and 8.
`
`Uniloc summarily argues that the following claim limitations recite more than conventional
`
`computer activity: “a configuration manager program associated with the application program”
`
`(claim 2) and “default preference values for any of the plurality of configurable preferences”
`
`(claim 8). But each of these is merely derivative of the “configurable preferences” expressed in
`
`the independent claims and do not add anything beyond the abstract idea of tailoring a product or
`
`service to a customer’s tastes (or “configurable preferences”), especially when one considers that
`
`Uniloc offers no limit to what such preferences might be.
`
`C.
`
`The Aserted ’293 Patent Claims Recite Generic Computers
`Performing Abstract Ideas.
`
`Perhaps no asserted patent better illustrates Uniloc’s problem of ships passing in the night
`
`than the ’293 patent. Uniloc argues that claim 1 of the ’293 patent is directed to “solving the
`
`longstanding problem in the industry of limited capabilities associated with centralized
`
`management of software distribution for roaming users within a network.” Opp’n at 17-18.
`
`Uniloc then points to the claim terms “file packet” and “segment configured to initiate
`
`registration operations.” Id. at 17. But Uniloc offers no explanation how these claim terms
`
`expressly address the problem. A file packet is ubiquitous in computer networks and does not
`
`save the claim alone. See Intellectual Ventures II LLC v. JP Morgan Chase & Co., 2015 U.S.
`
`Dist. LEXIS 56092, at *53 (S.D.N.Y. Apr. 28, 2015) (“The remaining claims either repeat the
`
`method recited in Claim 1 in slightly more detail … (reciting ‘[t]he method of claim 5, wherein
`
`
`
`6
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 8 of 13 PageID #: 1080
`
`analyzing the data packets comprises analyzing data packets that have been received at at least
`
`two of the plurality of devices’), or limit the method to implementation on generic computer
`
`technology … (claiming a ‘data collection and processing center comprising a computer with a
`
`firewall coupled to a computer network’). As discussed above, these additional features are
`
`insufficient to transform the abstract idea into a patent-eligible application.”). For example, in
`
`Genband, the Court’s decision relied on more than data packets. See Genband, 2016 U.S. Dist.
`
`LEXIS 37946, at *27 (“This is not a case in which an abstract idea or mathematical principle is
`
`carried out on a computer—the recited operations … [use] specific types of data packets and
`
`specific channels defined by particular protocols.”).
`
`Moreover, Uniloc appears to offer some kind of construction for the term “segment
`
`configured to initiate registration operations” that would incorporate the teachings of the ’293
`
`patent, which include “an import data file and a call to an import program executing on a target
`
`station” and “a variable field into which the target station inserts its identification during
`
`registration operations.” Id. at 17. Even if such limitations were incorporated from the
`
`specification into the term, nothing about the term would then express a “segment” that
`
`addresses the challenge of “roaming users within a network.”
`
`D.
`
`The Asserted Claims Are Unlike the Specific Computer Improvements in
`Enfish and Perdiemco.
`
`Despite suggesting that the asserted claims are like the specific computer improvements
`
`in Enfish, Uniloc does not point to language in the asserted claims that expresses a specific
`
`computer improvement. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) In
`
`Enfish, the Federal Circuit held that a “self-referential table” for a computer database was a new
`
`kind of computer structure that was not abstract. Id. at 1337. With broad generalizations about
`
`purportedly solving the “problem of user[s] roaming in networks,” Uniloc attempts to compare
`
`
`
`7
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 9 of 13 PageID #: 1081
`
`the asserted claims to Enfish without actually identifying any language in the asserted claims that
`
`expresses a new computer structure or algorithm. Opp’n at 19. This is exactly the kind of arm-
`
`waving about purported problems and solutions that the Federal Circuit has rejected. See
`
`Intellectual Ventures I, 838 F.3d 1307 at 1359 (“[T]he asserted claims do not contain any
`
`limitations that address the protection gap or volume problem, e.g., by requiring automatic
`
`updates to the antivirus or antispam software or the ability to deal with a large volume of such
`
`software … [W]hen a claim directed to an abstract idea ‘contains no restriction on how the result
`
`is accomplished . . . [and] [t]he mechanism . . . is not described, although this is stated to be the
`
`essential innovation[,]’ then the claim is not patent-eligible.”).
`
`Uniloc does no better by relying on Perdiemco. In Perdiemco, the claim language recited
`
`“code[s]” and “a specialized procedure for accomplishing this result [location information
`
`management and dissemination] by using four different access codes, an administrator, users,
`
`location information, zones, and a variety of other features all working together in a particular
`
`fashion.” Perdiemco, LLC v. Industrack LLC, 2016 U.S. Dist. LEXIS 135667, at *18-20 (E.D.
`
`Tex. Sep. 21, 2016). Drawing analogy to the new “self-referential table” in Enfish, the Court
`
`held that the claims were not abstract.
`
`The asserted claims recite no such new, specific computer improvement, either hardware
`
`or software. No less than three times in the course of a single page, Uniloc argues that the
`
`asserted claims recite an improvement for a “heterogenous network” environment. Opp’n at 21.
`
`But the abstract asserted claims do not become concrete by a solving a problem not expressly
`
`addressed in the claims. See Intellectual Ventures I, 838 F.3d 1307 at 1359. Nothing in the
`
`claim language refers to a “heterogenous network” environment.
`
`
`
`8
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 10 of 13 PageID #: 1082
`
`II.
`
`THE ASSERTED PATENTS LACK AN INVENTIVE CONCEPT.
`
`Relying on its tired mantra that the asserted patents address the problem of application
`
`access and delivery over “heterogeneous networks,” Uniloc argues that the asserted patents
`
`express allegedly inventive concepts of “allowing for user preferences to be tracked independent
`
`of the hardware location of the user” (’578 patent), “provid[ing] application programs on-
`
`demand from a server to a user logging in to a client supported by the server” (’466 patent), and
`
`“delivering configured applications when demanded by a user” (’293 patent). Opp’n at 23, 25.
`
`None of these statements refer to language in the asserted claims. But regardless, there is
`
`nothing inventive about these concepts.
`
`The use of an “on-demand” server for distribution of application programs to client
`
`computers is conventional technology, as admitted by the asserted patents. ’578 patent at col.
`
`14:51-53 (“operations according to the present invention may be realized in the hardware of
`
`existing on-demand servers”); ’293 patent at col. 21:10-12 (emphasis added). Similarly, the
`
`asserted patents utilize conventional client computers. ’578 patent at col. 6:60-62 (client
`
`computers “may be hardware from a variety of designers operating a variety of different
`
`operating systems”); col. 9:43-48; ’293 patent at col. 7:7-9. The asserted patents instead identify
`
`commercially-available servers and user interfaces (which the named inventors do not purport to
`
`have invented). See ’466 patent, col. 16:56-60 (“Server system 22, as described previously, may
`
`be configured to operate in a TivoliTM environment….”), col. 2:7-11 (“[T]he Tivoli
`
`Management Environment (TME) 10™ system from Tivoli Systems, Inc. provides a software
`
`distribution feature which may be used to transmit a file package to client and server stations on
`
`a network from a central Tivoli™ server”); ’578 patent at 2:6-9 (“TivoliTM server 20 provides a
`
`means for software distribution and management in computer network system 10.”); 7:9-10
`
`(“TivoliTM server 20 provides a means for software distribution and management in computer
`
`
`
`9
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 11 of 13 PageID #: 1083
`
`network system 10.”); ’466 patent (“currently available web browser applications are known to
`
`those of skill in the art” which provide a user interface”).
`
`The addition of using “configurable preferences” (as in the ’578 patent) to application
`
`distribution using on-demand servers does not supply an inventive concept either. As
`
`Blackboard explained in its motion, the specification only indicates that “preferences [are]
`
`obtained” using software, without any details of what this involves or what this software does
`
`(see ’578 patent, col. 8:55-9:4, 9:66-10:10:5, 10:19-10:29). Nowhere in its response does Uniloc
`
`identify any specialized software for such “configurable preferences” in the ’578 patent, the
`
`“application launcher program” (’578 patent), or for the “a segment configured to initiate
`
`registration operations” (’293 patent). Even assuming that “these terms recite specific
`
`components that have specific meanings within the context of application management in a
`
`client-server environment” as argued by Uniloc (Opp’n at 27), nothing about them reveals any
`
`new kind of software or computer structure allegedly invented by Uniloc.
`
`This case simply does not fall in to the bucket of cases exemplified by Personalized
`
`Media Commun’s, LLC v. Apple Inc., No. 2:15-cv-1366-JRG-RSP (E.D. Tex. Sept. 13, 2016),
`
`where the Court found that a new type of “control signal” – that did not previously exist – for
`
`decryption was sufficient to recite an inventive concept. Uniloc points to no such new type of
`
`signal or other computer hardware or software in the asserted patents. Indeed, this case falls into
`
`the category of abstract ideas without inventive concepts described by the Federal Circuit.
`
`Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d at 1357, 1360.
`
`*
`
`
`
`*
`
`
`
`*
`
`For the above reasons, Blackboard respectfully requests that this Court dismiss Uniloc’s
`
`claims against it.
`
`
`
`10
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 12 of 13 PageID #: 1084
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Christopher D. Bright
`J. Thad Heartfield ((Texas Bar No. 09346800)
`The Heartfield Law Firm
`2195 Dowlen Road
`Beaumont, Texas 77706
`(409) 866-3318
`
`Michael S. Nadel
`Natalie A. Bennett
`MCDERMOTT WILL & EMERY LLP
`500 North Capitol Street, N.W.
`Washington, D.C. 20001
`(202) 756-8000
`
`Daniel R. Foster
`Christopher D. Bright
`McDermott Will & Emery LLP
`4 Park Plaza, Suite 1700
`Irvine, California 92614
`(949) 851-0633
`
`Attorneys for Defendant Blackboard Inc.
`
`
`
`
`

`

`Case 2:16-cv-00741-RWS Document 95 Filed 11/25/16 Page 13 of 13 PageID #: 1085
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that on November 25, 2016, the foregoing was electronically filed with
`
`the CM/ECF system, which will send a notification of such filing to all counsel of record.
`
`
` /s/ Christopher D. Bright
` Christopher D. Bright
`
`
`
`
`
`
`
`
`