Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 1 of 8 PageID #: 1134
`Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 1 of 8 PageID #: 1134
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`EXHIBIT A
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`EXHIBIT A
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`Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 2 of 8 PageID #: 1135
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`December 2, 2016
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`Hon. Rodney Gilstrap
`United States District Court for the Eastern District of Texas
`Sam B. Hall, Jr. Federal Building and United States Courthouse
`100 East Houston Street
`Marshall, TX 75670
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`Re: Uniloc USA, Inc., et al. v. Box, Inc., No. 2:16-cv-860
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`Dear Judge Gilstrap:
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`I. Plaintiff’s Position: Claim Construction Is Necessary To Inform The Court’s § 101 Analysis
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`Box filed a motion to dismiss Uniloc’s complaint, arguing that the asserted claims are invalid under
`35 U.S.C. § 101. See Dkt. No. 89 (“Motion” or “Mot.”). Claim construction is necessary to determine
`whether the Asserted Patents1 contain patent-eligible subject matter. See Bancorp Servs., L.L.C. v. Sun Life
`Assur. Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[claim construction] will ordinarily be
`desirable – and often necessary – to resolve claim construction disputes prior to a §101 analysis.”). The
`inquiry under Alice is whether “the claims at issue” are directed to an abstract idea, and, if so, whether “the
`elements of each claim both individually and ‘as an ordered combination’” transform the nature of the claim
`into a patent-eligible application. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). Conducting
`that claim-by-claim, element-by-element inquiry would benefit from a fuller record in this case as the claims
`are specific to problems in application management within networks.2
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`The Asserted Patents relate to network management and application management when users roam
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`on a computer network from computer to computer. Box argues that: (1) the asserted claims of the Asserted
`Patents are directed to abstract ideas (Mot. at 11-21), and (2) all claims fail to recite inventive concepts (id. at
`21-26). Box’s arguments are based on an overly-broad claim construction disregarding the explicit problem
`of application management for roaming users in computer networks to which the claims are directed. For
`example, as to the ’293 Patents, Box argues that the asserted claims cover “the abstract idea of software
`distribution,” Mot. at 11. However, the asserted claims of the ’293 Patent recite elements such as: “network
`management server,” “on-demand server,” “a segment configured to initiate registration operations,”
`“application program” and “file packet,” that are terms material to the claims and, thus, require construction.
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`Box’s argument that the above terms merely represent abstract ideas is inapposite, as it reads out
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`inventive concepts to particular problems in network and application management; construction is thus
`required. The foregoing terms must be construed to give the claims proper context and meaning. Interpreting
`the interaction of these features as an abstract idea is simply unreasonable. See, Genband USA LLC v.
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`1 U.S. Patent Nos. 6,324,578 (“the ’578 Patent”), 6,510,466 (“the ’466 Patent), and 7,069,293 (“the ’293
`Patent”).
`2 Courts in this district have routinely denied Rule 12 motions made on §101 grounds as premature. See, e.g.,
`Phoenix Licensing, LLC, et al. v. Advance America, Cash Advance Centers, Inc., 2:15-cv-01375, Dkt. No. 25
`(E.D. Tex. Sept. 30, 2016); Wetro Lan LLC v. Phoenix Contact USA Inc., 2016 U.S. Dist. LEXIS 41012 *9-
`11 (E.D. Tex. Mar. 29, 2016).
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`Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 3 of 8 PageID #: 1136
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`Hon. Rodney Gilstrap
`December 2, 2016
`Page 2
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`Metaswitch Networks Ltd., No. 2:14-cv-33-JRG, Dkt. No. 582 (E.D. Tex. Sep. 29, 2016). In Genband, one
`of the claims was directed to first and second protocol agents working in IP telephony devices to
`communicate using a third protocol. Id. at 73-74. The Court rejected defendants’ arguments that the claim
`covered an abstract idea. Id. As in Genband, the claims of the ’293 Patent reciting the above elements “are
`not abstract but rather specific components that have a concrete nature and perform specific functions within
`a network.” Id. at 76.
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`The ’293 Patent, as well as the other Asserted Patents, solve particular problems in the computer
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`field, thus rendering them patent eligible. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed.
`Cir. 2014) (upholding a claim as a patent-eligible inventive concept where the claimed solution was
`“necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm
`of computer networks” because “it amount[ed] to an inventive concept for resolving this particular Internet-
`centric problem”). For example, the ’293 Patent solves a longstanding problem in the industry for roaming
`users on networks so as to provide hardware portability by distributing application programs registered at on-
`demand servers according to client machine characteristics across heterogeneous networks. The solutions of
`the ’293 Patent, as well as the other Asserted Patents, significantly improve mobility and hardware
`portability of the application programs, specifically in networks with roaming users on different machines.
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`Each of the terms of the ’293 Patent, as well as the other Asserted Patents, are intended to place
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`meaningful limits on claims that distinguish the claimed inventions from the prior art and are relevant – at a
`minimum – to the Court’s second-step determination of whether the elements transform the nature of the
`claim into a patent-eligible application. For example, the claim element “a segment configured to initiate
`registration operations” of the ’293 patent includes “an import data file and a call to an import program
`executing on a target station.” This is a solution to the longstanding problem of roaming users in networks as
`described above. As the ’293 patent describes, “a profile manage import call is included in the distributed
`file packet along with an import text containing the data required to properly install and register the
`application program on the on-demand server and make it available to authorized users.” The presence of
`the above language in the ’293 specification “is the single best guide to the meaning of the claim terms
`(Phillips, 415 F.3d at 1318). As there are clearly factual disputes regarding the proper context and meaning of
`this and other disputed elements, construction of the asserted claims is required.3
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`For example, as to the ’466 Patent, Box argues that the claims cover “the abstract idea of software
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`distribution.” Mot. at 11. The asserted claims of the ’466 Patent recite material elements such as: “installing
`a plurality of application programs at the server,” “login request,” “user desktop,” “plurality of display
`regions” and “application management information,” that require construction. As to the ’578 Patent, Box
`argues that the claims cover “the abstract idea of customization based on preferences.” Mot. at 18. The
`asserted claims of the ’578 Patent again recite material elements such as: “application program,”
`“configurable preferences,” “application launcher program,” “user set,” “executing the application launcher
`program,” “administrator set,” “configuration manager program” and “instance,” that require construction.
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`3 There are also numerous means plus function terms found in the Asserted Patents that need to be
`construed.
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`2
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`Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 4 of 8 PageID #: 1137
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`Hon. Rodney Gilstrap
`December 2, 2016
`Page 3
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`The asserted claims are directed to particular methods and apparatuses that represent specific
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`solutions to problems identified in the Asserted Patents. Thus, Uniloc requests that the Court defer deciding
`the Motion until the completion of claim construction.
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`3
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`Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 5 of 8 PageID #: 1138
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`Hon. Rodney Gilstrap
`December 2, 2016
`Page 4
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`II. Defendant’s Position: No Claim Construction Can Render Plaintiff’s Claims Patentable
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`Uniloc’s portion of the joint letter fails to (a) identify evidence from the specifications or file
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`histories that shows why certain terms need construction, or (b) explain how construction of those terms
`would materially affect the Section 101 analysis. Rather, Uniloc simply lists claim terms for each patent-
`in-suit and then states without support that the terms “require construction.” Even if Uniloc is correct,
`patents whose claims “require construction” are still appropriately invalidated at the pleading stage if the
`claims would still be directed to ineligible subject matter even if construed as a patentee suggests. See,
`e.g., Preservation Wellness v. Allscripts Healthcare, 2:15-cv-1559-WCB, 2016 WL 2742379, at *6
`(E.D. Tex. May 10, 2016); Rothschild Location Techs. LLC v. Geotab USA, Inc., 6:15-cv-682-RWS-
`JDL, 2016 WL 3584195, at *4 (E.D. Tex. January 4, 2016).
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`Uniloc already received—and declined—a number of opportunities to identify evidence that its
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`patent terms required construction. In July and August of this year, Uniloc filed opposition and sur-reply
`briefs in Uniloc v. BitDefender, 16-cv-394-RWS (E.D. Tex.) against a motion to dismiss two of the three
`patents asserted in this action. Uniloc chose not to identify any evidence that its claims required
`construction, nor even a single construction that would, if adopted, limit the claims to patentable subject
`matter. Instead, Uniloc relied on the plain language of the claims and on attorney argument to assert
`patentability. See 16-cv-394 (RWS) D.I. 26 at 9–12, D.I. 32 at 8–9. Uniloc’s Opposition Brief in that
`action discussed many of the same terms identified in this letter as requiring construction (e.g. “user
`desktop interface,” “plurality of display regions,” and “on-demand server”), yet Uniloc never argued that
`those terms required a specialized construction.4 See 16-cv-394 (RWS), D.I. 26 at 11, 15. Similarly,
`Uniloc presented no argument to Judge Schroeder that construction of its claims drafted in means-plus-
`function form was material to the validity of its patents.5 Uniloc also failed to identify any claim
`construction evidence or explain how construction would materially affect the Section 101 analysis in
`any of the four letter briefs it has recently submitted to the Court on this topic. Dkt. Nos. 34-1, 36-1, 75-
`1, 83-1. Uniloc’s repeated failure to provide this information is fatal to its position.
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`The intrinsic evidence supports Box’s position that the claims in this suit require no specialized
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`constructions to determine the § 101 issue. For example, Uniloc argues in this letter that the ’293
`Patent’s “segment configured to initiate registration operations” includes “an import data file and a call
`to an import program executing on a target station.” But this is not a proffered construction—instead,
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`4 Uniloc’s absence of explanation is in sharp contrast with the cases it cites for the proposition that
`courts “routinely” await claim construction to decide § 101 motions. First, in Wetro Lan, the patentee
`had “proposed a construction . . . through its expert witness” and the defendant had “not responded with
`specificity”; here, Uniloc has not explained why construction could be necessary, let alone proposed a
`construction via an expert. 2016 WL 1228746, at *4. Second, Phoenix depended on a prior ruling in
`which contentious claim construction briefing had already been submitted. See No. 14-cv-965, D.I. 184
`at 3-4. Here, no such claim construction disputes exist.
`5 As this court has noted, “the mere presence of means plus function terms does not require a deferred
`ruling on validity under § 101.” See Landmark Tech., LLC v. Assurant, Inc., No. 6:15- CV-76-RWS-
`JDL, 2015 WL 4388311, at *3 (E.D. Tex. July 14, 2015).
`4
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`Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 6 of 8 PageID #: 1139
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`Hon. Rodney Gilstrap
`December 2, 2016
`Page 5
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`those limitations are simply borrowed from unasserted dependent claim 3. Uniloc’s asserted claim 1 is
`necessarily broader and captures other methods of application management for roaming users, thereby
`impermissibly pre-empting the abstract idea of distributing software. Uniloc also argues that the ’293
`Patent’s term “application program” requires construction, but the specification gives a definition with
`no limits: “the term ‘application program’ generally refers to code associated with the underlying
`program functions.” ’293 Patent 14:27-29. On the ’578 Patent, Uniloc argues that terms like
`“configurable preferences,” “user set,” and “administrator set” require construction. Yet the
`specification never defines or limits the term “preference,” and in fact explains that “[t]he designation of
`user versus administrator settable preferences may be established by the software designer providing the
`configurable application program.” ’578 Patent 9:5-29. Thus a user set of preferences is just a set of
`preferences which a software designer established as “user . . . settable,” and an administrator set those
`which are “administrator settable.” This is the sort of “wholly subjective” and “qualitative” distinction
`which this Court has found unable to salvage an abstract claim. Intellectual Ventures I LLC v. J. Crew
`Grp., Inc., No. 6:16-CV-196-JRG, 2016 WL 4591794, at *5 (E.D. Tex. Aug. 24, 2016).6
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`For the sole term for which Uniloc provides any level of detail—“a segment configured …” from
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`the ‘293 patent—Uniloc simply identifies an allegedly-relevant passage from the specification, and
`asserts that as a result “there are clearly factual disputes regarding the proper context and meaning of
`this” term. Uniloc does not explain what those disputes are, how the cited passage indicates the term
`needs to be construed, or what an alleged construction could be.
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`More importantly, neither in this letter, its briefing in BitDefender, nor its four prior letters does
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`Uniloc explain how a narrow construction, even if adopted, would make its claims any less abstract. See
`CyberFone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014) (affirming
`decision not to engage in claim construction before deciding § 101 eligibility where patentee did not
`explain “how the analysis would change” with construction).7 Indeed, “[n]o matter what construction
`the Court adopts the substance of the claims is the same.” Asghari-Kamrani v. United Servs. Auto.
`Ass’n, No. 2:15CV478, 2016 WL 3670804, at *6 (E.D. Va. July 5, 2016). For example, even if the
`“segment configured …” limitation of the ‘293 patent, were limited to use of a prior art “PMImport
`applet of the eNetwork On-demand server” to implement the abstract idea of distributing software, the
`patent would still just be an application of generic computer technology. ‘293 patent col. 17:38-54.
`Likewise, even if narrow construction of the ‘466 Patent claims limits the claimed method to distribution
`of particular application programs via a specific “user desktop interface” such as a “web browser,” the
`underlying idea of distributing software would remain abstract and lack an inventive step. See ‘466
`patent col. 4:50-53.
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`6 Given the patents’ use of broad, generic computing terms, Uniloc’s analogy to Genband (a case
`decided after trial and irrelevant to whether to proceed with Section 101 analysis at the pleading stage) is
`inapposite, as that case concerned patents “meaningless outside the context of a computer network that
`uses specific [telephony technology],” whereas here the patents are drawn to any computer network. No.
`2:14-cv-33-JRG, Dkt. No. 582 at 75-76.
`7 Uniloc’s reliance on Bancorp is misplaced; there, the Federal Circuit invalidated patents under § 101
`because “insignificant computer-based limitations,” like those at issue here, did not transform the claims
`into a patentable invention. 687 F.3d at 1279–81.
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`Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 7 of 8 PageID #: 1140
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`Hon. Rodney Gilstrap
`December 2, 2016
`Page 6
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`CESARI AND MCKENNA, LLP
`
`/s/ Kevin Gannon
`Paul J. Hayes
`Kevin Gannon
`CESARI AND MCKENNA, LLP
`88 Black Falcon Ave Suite 271
`Boston, MA 02110
`Telephone: (617) 951-2500
`Facsimile: (617) 951-3927
`Email: pjh@c-m.com
`Email: kgannon@c-m.com
`
`Craig Tadlock
`State Bar No. 00791766
`TADLOCK LAW FIRM PLLC
`2701 Dallas Parkway, Suite 360
`Plano, TX 75093
`Tel: (903) 730-6789
`Email: craig@tadlocklawfirm.com
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`Attorneys for the Plaintiffs
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`REED SMITH LLP
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`/s/ Seth B. Herring
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`John P. Bovich (Lead counsel, Pro Hac Vice)
`jbovich@reedsmith.com
`Christine M. Morgan
`cmorgan@reedsmith.com
`Seth B. Herring (Pro Hac Vice)
`sherring@reedsmith.com
`REED SMITH LLP
`101 Second Street, Suite 1800
`San Francisco, CA 94105-3659
`Telephone: 415.543.8700
`Facsimile:
`415.391.8269
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`Peter John Chassman (Texas Bar No. 00787233)
`cchassman@reedsmith.com
`REED SMITH LLP
`811 Main Street, Suite 1700
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`Case 2:16-cv-00741-RWS Document 99-1 Filed 12/02/16 Page 8 of 8 PageID #: 1141
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`Hon. Rodney Gilstrap
`December 2, 2016
`Page 7
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`Houston, TX 77002-6119
`Telephone:
`713.469.3885
`Facsimile:
`713.469.3899
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`Counsel for Defendant Box, Inc.
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