Case 2:19-cv-00118-JRG Document 28 Filed 07/15/19 Page 1 of 23 PageID #: 231
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`QUEST NETTECH CORPORATION,
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`
`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`
`Case No. 2:19-cv-00118-JRG
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`
`JURY TRIAL DEMANDED
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`§
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`§
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`QUEST NETTECH CORPORATION’S RESPONSE IN
`OPPOSITION TO APPLE INC.’S MOTION TO DISMISS UNDER
`FEDERAL RULE OF CIVIL PROCEDURE 12(b)(6) (DKT. NO. 19)
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`
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`

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`Case 2:19-cv-00118-JRG Document 28 Filed 07/15/19 Page 2 of 23 PageID #: 232
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`
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`TABLE OF CONTENTS
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`Page(s)
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`I.
`
`II.
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`INTRODUCTION .............................................................................................................. 1
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`STATEMENT OF FACTS ................................................................................................. 3
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`A.
`
`B.
`
`C.
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`The Invention of the ’137 Patent ............................................................................ 3
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`The Claims of the ’137 Patent ................................................................................ 4
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`Applicable Claim Constructions of the ’137 Patent ............................................... 5
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`III.
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`ARGUMENT ...................................................................................................................... 7
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`A.
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`The ’137 Patent Is Patent Eligible Under 35 U.S.C. § 101 ..................................... 7
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`1.
`
`2.
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`Applicable Legal Standard Under Alice ..................................................... 7
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`Alice Step 1: The Claims Are Not Directed to an Abstract Idea ................ 8
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`(a)
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`(b)
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`The Cases Cited by Defendant Support NetTech’s Position
`that the Claims Are Directed to an Innovative Device ................. 11
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`Defendant’s Attempts to Distinguish Enfish and DDR Are
`Ineffective ..................................................................................... 13
`
`3.
`
`Alice Step 2: The Claims Disclose a Patent-Eligible Application ............ 14
`
`(a)
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`The Claims and Specification Disclose More than a
`Conventional Method or Apparatus for Storing Financial
`Transaction Records...................................................................... 14
`
`B.
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`Nettech Consents to the Dismissal of Its Claims for Indirect and Willful
`Infringement Without Prejudice ........................................................................... 17
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`IV.
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`CONCLUSION ................................................................................................................. 17
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`
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`i
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`

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`Case 2:19-cv-00118-JRG Document 28 Filed 07/15/19 Page 3 of 23 PageID #: 233
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`
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`Cases
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Alice Corp. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ......................................................................................................... passim
`
`BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016)....................................................................................14, 15, 16
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)..................................................................................................10
`
`Data Engine Tech. LLC v. Google LLC,
`906 F.3d 999 (Fed. Cir. 2018)....................................................................................................8
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)..........................................................................................13, 14
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) ...................................................................................................................7
`
`Eaton Corp. v. Rockwell Int'l Corp.,
`323 F.3d 1332 (Fed. Cir. 2003)................................................................................................10
`
`Enfish LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)......................................................................................8, 13, 14
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015)..................................................................................................8
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`566 U.S. 66, 132 S. Ct. 1289 (2012) ......................................................................................7, 8
`
`Pacing Techs, LLC. v. Garmin Int’l, Inc.,
`778 F.3d 1021 (Fed. Cir. 2015)................................................................................................10
`
`Preservation Wellness Techs. LLC v. Allscripts Healthcare Sols.,
`No. 2:15-cv-1559 WCB, 2016 WL 2742379 (E.D. Tex. May 10, 2016) ................................13
`
`Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
`827 F.3d 1042 (Fed. Cir. 2016)..................................................................................................8
`
`Smart Sys. Innovations, LLC v. Chicago Transit Auth.,
`873 F.3d 1364 (Fed. Cir. 2017)..........................................................................................11, 14
`
`ii
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`

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`
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`Thales Visionix Inc. v. United States,
`850 F.3d 1343 (Fed. Cir. 2017)....................................................................................11, 12, 14
`
`In re TLI Commc’ns LLC Pat. Lit.,
`823 F.3d 607 (Fed. Cir. 2016)..................................................................................................13
`
`Statutes
`
`35 U.S.C. § 101 ...................................................................................................................... passim
`
`
`
`
`iii
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`

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`Case 2:19-cv-00118-JRG Document 28 Filed 07/15/19 Page 5 of 23 PageID #: 235
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`Plaintiff, Quest NetTech Corporation (“NetTech” or “Plaintiff”), submits this brief in
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`opposition to Defendant Apple Inc.’s (“Apple” or “Defendant”) Motion to Dismiss Under
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`Federal Rule of Civil Procedure 12(b)(6) (Dkt. No. 19).
`
`I.
`
`INTRODUCTION
`
`In 1995, Sol Wynn filed a patent application on the first mobile payment device, which
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`he called the “universal financial data card” or “multiple account electronic credit card.”
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`Described in U.S. Patent No. RE38,137 (the “’137 Patent”) as a computerized credit-card-sized
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`device, the invention allows a user to make payments using multiple accounts by wirelessly
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`connecting the credit card to a card reader, authenticating the user’s identity, and selecting an
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`account for payment. When the transaction is complete, the device automatically and securely
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`compiles and stores financial information regarding the transaction. The invention has many
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`significant benefits over the existing credit cards: it reduces the number of cards the user needs to
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`carry, it prevents unauthorized transactions by requiring that the user be authenticated before
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`making a purchase, and it automatically compiles secure and tamper-proof financial transaction
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`records that the user may later reference. Mr. Wynn’s multiple account electronic credit card was
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`so far ahead of its time that nearly 20 years passed after the filing of his patent application before
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`Apple finally released Apple Pay, its service that uses an Apple device as a wireless mobile
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`payment device.
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`Despite this ground-breaking innovation, Apple now attacks the patent eligibility of the
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`’137 Patent under 35 U.S.C. § 101. Apple, however, does not argue that a computerized mobile
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`payment device is not patent-eligible subject matter even though the claims are directed to such a
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`device. Rather, Apple argues that the patent is directed to a portable device that merely stores
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`financial transaction records, i.e., “Quicken on a card.” While it is true that the multiple account
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`electronic credit card includes as one of its many features the ability to compile and store
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`
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`financial transaction records, no reasonable litigant would read the claims and specification of
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`the ’137 Patent and conclude that the disclosed innovation is a portable data storage device.
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`Why does Apple argue that claims are “directed to” the abstract concept of “storing
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`financial transaction records in a portable and organized manner”? Two reasons are readily
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`apparent. First, if Apple admits that the claims are “directed to” a mobile payment device, which
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`is non-abstract and innovative, this motion will be lost under Alice step 1. Apple’s brief takes
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`great pains to ignore all aspects of the claims and specification relating to mobile payments in the
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`apparent hope that Plaintiff and the Court will not notice that wide swaths of the ’137 Patent
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`describing the features and benefits of Mr. Wynn’s multiple account electronic credit card have
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`gone uncited and unmentioned in Apple’s brief.
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`Second and perhaps more significant, if Apple had challenged whether claims directed to
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`a mobile payment device are patentable under Section 101 and ultimately succeeds, Apple will
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`have expressly undermined the patent eligibility of its own patents covering mobile payments
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`technology. Apple is the current assignee of dozens of patents that cover mobile payment
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`technology, of which the following are just a few:
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`Patent No.
`U.S. 7,933,799
`
`U.S. 8,195,547
`
`U.S. 9,037,513
`U.S. 9,299,072
`
`U.S. 9,324,067
`U.S. 9,524,500
`U.S. 9,842,330
`U.S. 9,864,984
`
`U.S. 10,043,185
`U.S. 10,255,595
`
`Title
`Method and System for Payment and/or Issuance of Credits via a
`Mobile Device
`Method and System for Payment and/or Issuance of Credits via a
`Mobile Device
`System and Method for Providing Electronic Event Tickets
`Apparatuses and Methods for Operating a Portable Electronic Device to
`Conduct Mobile Payment Transactions
`User Interface for Payments
`Transferring Assets
`User Interface for Stored-Value Accounts
`Apparatuses and Methods for Operating a Portable Electronic Device to
`Conduct Mobile Payment Transactions
`User Interface for Payments
`User Interface for Payments
`
`2
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`

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`
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`Apple’s position must be that mobile payment devices are patentable subject matter, or
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`else it has been purchasing and seeking patents for many years which it believes are worthless.
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`For this reason and for those set forth below, Apple’s motion under Section 101 contending that
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`a seminal mobile payment device patent is unpatentable because it merely acts as a storage
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`device is meritless and should be denied.
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`II.
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`STATEMENT OF FACTS
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`A.
`
`The Invention of the ’137 Patent
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`Sol Wynn invented a new mobile payment device that allows a user to conduct
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`transactions using multiple accounts and contemporaneously receive and store data from those
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`transactions on the card. ’137 Patent, 1:59-2:10. The invention improves on the prior art by
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`reducing the number of cards a user has to carry by storing account information for multiple
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`accounts on the electronic card. Id., 4:64-5:22. When the electronic card is in communication
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`with a card reader, such as by a wireless connection, the user may authenticate his identity by
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`entering a PIN number to gain access to the accounts stored on the card. Id., 5:67-6:19. The user
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`may then use one of the stored accounts, e.g., a credit card account, to purchase goods and
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`services. Id., 6:19-30.
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`When a transaction is consummated, “financial transaction records are automatically
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`compiled and stored as [the electronic card] is being used to obtain goods and/or services,
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`thereby obviating the need to independently enter data after the transaction occurs.” Id., 5:23-26.
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`“This automatic data compilation and storage feature also eliminates the possibility of data
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`tampering.” Id., 5:27-28. The secure storage of the transaction data “may be used to satisfy any
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`documentation requirements regarding those transactions.” Id., 5:33-36. The user may query this
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`financial data, obtain statements, review spending patterns, and perform searches of the
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`transactions by various criteria. Id., 5:55-65.
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`3
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`

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`
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`This inventive electronic card represents an advance over known credit cards and
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`automatic teller machine cards which were capable of conducting transactions only with respect
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`to the account relating to the card. Id., 5:37:41. The prior art cards could not store financial
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`records for transactions executing using the card, nor could they track the account balances for
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`multiple accounts, which “makes the job of reconciling accounts balances or financial planning
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`difficult” and expensive in terms of time and expense. Id., 5:41-49.
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`B.
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`The Claims of the ’137 Patent
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`The claims of the ’137 Patent are directed to a novel “multiple account electronic credit
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`card” for conducting transactions using multiple accounts and obtaining and accessing financial
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`data related to those transactions. The term “multiple account electronic credit card” appears in
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`the preamble of independent claims 1, 10, and 33, and in the body of independent claim 3. Claim
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`10 is representative:
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`10. A multiple account electronic credit card for handling multiple
`accounts, the credit card comprising:
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`a common processor for controlling operation of the credit card
`relative to all of the multiple accounts;
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`a memory for storing financial transaction records relative to the
`multiple accounts, and for storing holder
`information and
`secondary account information;
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`an interface for communication with a card reader;
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`wherein said holder information comprises personal information
`identifying an authorized person for the electronic credit card and
`wherein the secondary account information comprises electronic
`credit card issuer information identifying a respective issuer of
`each of the multiple accounts so that the issuer of each of the
`multiple accounts is identified on the credit card;
`
`wherein said memory is of sufficient size to store financial transaction
`records related to a predetermined time period of use and including
`a software facility associated with the processor and the memory
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`4
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`

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`
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`that enables transfer of data stored in the memory to a new
`multiple account electronic credit card; and
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`wherein said common processor is effective for handling the financial
`transaction records relative to all of the multiple accounts while
`being able to identify and retrieve information relating to specific
`accounts upon responsive to operator commands.
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`21:33-59 (emphasis added).
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`Claim 10 is drawn to a “multiple account electronic credit card” that includes a processor
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`for controlling the operation of the multiple account electronic credit card; a memory for storing
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`information regarding the multiple credit cards necessary for making purchases, including
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`information regarding the credit card holder and the issuers of each of the multiple credit cards;
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`and an interface for communicating with the card reader. Id., 21:33-48. The memory on the card
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`must also be capable of storing financial transaction records and contain software executed by
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`the processor for transferring transaction records to a new card. Id., 21:49-54. The processor is
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`able to identify and retrieve financial transaction records at the request of the user. Id., 21:55-59.
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`Dependent claims add further structure or functionality to the multiple account electronic
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`credit card. For instance, claim 13 adds a frequency select circuit for communicating with a card
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`reader on one of a number of preselected frequencies. Id., 21:62-63.
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`C.
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`Applicable Claim Constructions of the ’137 Patent
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`To fully appreciate the inventive concept in the claims of the ’137 Patent, and in
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`exemplary claim 10 in particular, the term “multiple account electronic credit card” should be
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`treated as limiting and construed as “an electronic device for conducting financial transactions
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`using one or more of the multiple accounts stored on the device.” See id., 1:59-67; 2:41-50; 5:23-
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`26; 6:11-30. Similarly, the term “operation of the [credit] card” should be construed as including
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`the operations disclosed in the specification as “the authentication of an authorized user of one or
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`more of the multiple credit card accounts, the purchase of goods and services using one or more
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`5
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`

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`
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`of the multiple credit card accounts, and the receipt and storage of financial transaction records
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`relative to purchases made using one or more of the multiple credit card accounts.” Id., 5:14-
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`5:36; 5:67-6:30. These constructions are fully supported by the specification and give needed
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`context to the remaining limitations of the claims.
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`The necessity of these constructions to give full meaning to the claims is apparent from a
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`review of the claims and the specification. The term “multiple account electronic credit card”
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`appears in the preamble of claim 10 and provides antecedent basis for the terms “credit card” and
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`“multiple accounts” throughout the claim. For instance, the term “common processor for
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`controlling operation of the credit card relative to all of the multiple accounts,” id., 21:35-36
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`(emphasis added), has meaning only if “credit card” and “multiple accounts” derive their
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`antecedent basis from “multiple account electronic credit card” in the preamble. Moreover,
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`“operation of the credit card” requires construction to provide an understanding of the features of
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`the inventive “multiple account electronic credit card.”
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`While the term “multiple account electronic credit card” does not appear in the
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`specification, which refers to a “universal financial data card” or “UFDC,” the claims’ use of the
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`term “credit card” within “multiple account electronic credit card” suggests that it is a type of
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`UFDC that can be used for conducting financial transactions, and not merely for storing data.
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`See, e.g., id.at 2:10-17 (stating that the types of accounts used with the inventive card include
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`“checking, savings, credit accounts, gasoline and department store accounts . . .”). In this
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`context, and in view of the specification’s teaching that “financial transaction records are
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`automatically compiled and stored as UFDC 201 is being used to obtain goods and/or services,”
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`id., 5:23-26, the claimed “financial transaction records” must be understood to include at least
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`those records which are automatically downloaded to the claimed “multiple account electronic
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`6
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`

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`credit card” when a transaction is performed. Thus, the “multiple account electronic credit card”
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`is not simply a storage device for financial transaction data, but a device which performs
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`purchase transactions and receives and stores records of those transactions.
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`Similarly, the “multiple account electronic credit card” is not merely a location for
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`storing the claimed “holder information” and “secondary account information.” Rather, this
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`information is maintained on the multiple account electronic credit card at least for the purpose
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`of authorizing a user of the card to use one of the multiple accounts to conduct a transaction. Id.,
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`6:11-30.
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`With this understanding of the inventive concept embodied in the claims, which may
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`depend on the Court completing the Markman process, a proper analysis of patentability under
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`35 U.S.C. § 101 may be performed.
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`III. ARGUMENT
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`A.
`
`The ’137 Patent Is Patent Eligible Under 35 U.S.C. § 101
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`The claims of the ’137 Patent are patent eligible under Section 101 because they are not
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`directed to the abstract concept of “storing financial transaction records in a portable and
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`organized manner” as Defendant contends. Moreover, even if the claims were directed to that
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`concept, the claims embody the inventive concept of a “multiple account electronic credit card”
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`that transforms the claim into a patent-eligible application.
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`1.
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`Applicable Legal Standard Under Alice
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`Section 101 defines patent-eligible subject matter as “any new and useful process,
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`machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
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`35 U.S.C. § 101. Laws of nature, natural phenomena, and abstract ideas, however, are not
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`patentable. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-71, 132
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`S. Ct. 1289 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)).
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`7
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`

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`To determine whether a patent claims ineligible subject matter, the Supreme Court has
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`established a two-step framework. First, the Court must determine whether the claims at issue are
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`directed to a patent-ineligible concept such as an abstract idea. Alice Corp. v. CLS Bank Int’l,
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`573 U.S. 208, 217 (2014). Second, if the claims are directed to an abstract idea, the Court must
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`“consider the elements of each claim both individually and ‘as an ordered combination’ to
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`determine whether the additional elements ‘transform the nature of the claim’ into a patent-
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`eligible application.” Id. (quoting Mayo, 566 U.S. at 78-79). To transform an abstract idea into a
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`patent-eligible application, the claims must do “more than simply stat[e] the abstract idea while
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`adding the words ‘apply it.’” Id. at 221 (quoting Mayo, 566 U.S. at 72 (internal alterations
`
`omitted)).
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`2.
`
`Alice Step 1: The Claims Are Not Directed to an Abstract Idea
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`To determine whether a claim is “directed to” an abstract concept, “it is not enough to
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`merely identify a patent-ineligible concept underlying the claim; we must determine whether that
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`patent-ineligible concept is what the claim is ‘directed to.’” Data Engine Tech. LLC v. Google
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`LLC, 906 F.3d 999, 1011 (Fed. Cir. 2018) (quoting Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
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`827 F.3d 1042, 1050 (Fed. Cir. 2016)). “The ‘directed to’ inquiry, therefore, cannot simply ask
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`whether the claims involve a patent-ineligible concept, because essentially every routinely
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`patent-eligible claim involving physical products and actions involves a law of nature and/or
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`natural phenomenon—after all, they take place in the physical world.” Enfish LLC v. Microsoft
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`Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (emphasis in original) (citing Mayo, 132 S. Ct. at
`
`1293). “Rather, the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of
`
`the specification, based on whether ‘their character as a whole is directed to excluded subject
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`matter.’” Id. (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
`
`Cir. 2015)) (emphasis added).
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`8
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`

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`
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`The purported abstract concept advanced by Defendant, “storing financial transaction
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`records in a portable and organized manner,” runs afoul of the above precedent because the
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`claims, as a whole, are directed to an innovative “multiple account electronic credit card,” not a
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`generic device embodying the abstract concept of data storage.
`
`Claim 10 is drawn to a “multiple account electronic credit card” that includes a
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`“processor for controlling operation of the credit card relative to all of the multiple accounts,”
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`’137 Patent, 21:33-37 (emphasis added), and other components necessary for the operation of the
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`card. According to the specification, “the invention relates to methods and apparatus for a
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`universal financial data system, part of which advantageously serves as a highly portable cash
`
`substitute that is also capable of electronically compiling, storing, and retrieving data related to
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`multitudes of financial accounts and transactions in real time as the transactions occur.” ’137
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`Patent, 1:11-16 (emphasis added). The core features and benefits of the invention are that the
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`multiple account electronic credit card “serves as a portable cash substitute,” id., 1:61; is capable
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`of storing information regarding multiple accounts “[t]o reduce the number of cards a user has to
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`carry,” id., 1:63-67; authenticates the user to ensure that he is authorized to use the card prior to
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`making a purchase, id., 5:67-6:3; and “has the intelligence to gather transaction data as
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`transactions occur to update its accounts.” Id., 1:62-63 (emphasis added). The fact that the
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`financial transaction records are stored on the device is only one of many aspects of the invention
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`as a whole and is not, by itself, the innovation that claim 10 is “directed to.” Simply put, the
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`claims are directed to much more than “Quicken on a card.”
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`As discussed above, the Court should treat “multiple account electronic credit card” as a
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`limitation and construe it because it provides antecedent basis to claim terms such as “a common
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`processor for controlling operation of the credit card relative to all of the multiple accounts.” See
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`9
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`

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`Case 2:19-cv-00118-JRG Document 28 Filed 07/15/19 Page 14 of 23 PageID #: 244
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`
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`Pacing Techs, LLC. v. Garmin Int’l, Inc., 778 F.3d 1021, 1023-24 (Fed. Cir. 2015) (stating that a
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`term in a preamble may be limiting “[w]hen limitations in the body of the claim rely upon and
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`derive antecedent basis form the preamble”) (quoting Eaton Corp. v. Rockwell Int'l Corp., 323
`
`F.3d 1332, 1339 (Fed. Cir. 2003)). The “multiple account electronic credit card” also “recites
`
`essential structure that is important to the invention [and is] necessary to give meaning to the
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`claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (citations omitted).
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`Similarly, a construction of “operation of the [credit] card” is required to delineate the features of
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`the “multiple account electronic credit card.” These terms together give the claims their full
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`meaning in light of the disclosure of the invention in the specification.
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`Defendants’ characterization of the invention of the ’137 Patent as “storing financial
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`records in a portable and organized manner” is expressly rejected by the specification. The
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`specification admits that “[f]inancial data storage systems are . . . known.” ’137 Patent, 1:39. The
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`Quicken software is identified as an example of a system “capable of managing data related to
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`financial accounts and transactions.” Id., 1:39-44. The invention of the ’137 Patent was novel
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`over Quicken not because the invention is portable, but because “these prior financial data
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`storage systems are not designed to operate as cash substitutes.” Id., 1:44-45. Because the
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`invention is directed to an innovative “multiple account electronic credit card” that operates as a
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`cash substitute, Defendant’s asserted abstract idea of “storing financial transaction records” must
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`be incorrect and should be rejected.
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`For these reasons, Defendant has not shown that the claims are directed to an abstract
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`idea. Instead, the ’137 Patent is directed to an innovative multiple account electronic credit card.
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`As such, the Court need not address the second step of the Alice inquiry because the claims are
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`patent eligible under Section 101.
`
`10
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`

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`Case 2:19-cv-00118-JRG Document 28 Filed 07/15/19 Page 15 of 23 PageID #: 245
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`(a)
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`The Cases Cited by Defendant Support NetTech’s Position that
`the Claims Are Directed to an Innovative Device
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`Defendant relies heavily on Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873
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`F.3d 1364 (Fed. Cir. 2017), for the proposition that claims directed to the type of abstract
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`concept that Defendant seeks to assign to the claims of the ’137 Patent are invalid under Section
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`101. Putting aside that Defendant’s identification of an abstract concept in this case is incorrect,
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`the claims in the Smart Systems are distinguishable because they were not directed to a new type
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`of device. In Smart Systems, the claimed methods were
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`directed to the formation of financial transactions in a particular field (i.e.,
`mass transit) and data collection related to such transactions. The Asserted
`Claims are not directed to a new type of bankcard, turnstile, or database,
`nor do the claims provide a method for processing data that improves
`existing technological processes. Rather, the claims are directed to the
`collection, storage, and recognition of data. We have determined that
`claims directed to the collection, storage, and recognition of data are
`directed to an abstract idea.
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`Smart Sys Innovations, 873 F.3d at 1372 (emphasis added) (citations omitted). By contrast, it is
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`undisputed in this case that the claims are directed to a new type of device:
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`[W]hat is desired is an improved method and apparatus for a universal
`financial data system and card that not only serves as a portable cash
`substitute but also has the intelligence to gather transaction data as
`transactions occur to update its accounts. To reduce the number of cards a
`user has to carry, the improved apparatus is preferably capable of storing
`financial and transaction data related to multiple accounts, some or all of
`which may be issued by different financial institutions.
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`’137 Patent, 1:11-16. 1:59-67.
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`Far different from the method claims of the Smart Systems case, the claims of the ’137
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`Patent more closely resemble those in Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed.
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`Cir. 2017). In that case, the patent disclosed “an inertial tracking system for tracking the motion
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`of an object relative to a moving reference frame.” Id. at 1344. The defendant in that case
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`contended that the claims were directed to the abstract idea of using “mathematical equations for
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`Case 2:19-cv-00118-JRG Document 28 Filed 07/15/19 Page 16 of 23 PageID #: 246
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`determining the relative position of a moving object to a moving reference frame.” Id. at 1348.
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`But, the Federal Circuit rejected this argument, finding that the claims were “directed to a new
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`and useful technique for using sensors to more efficiently track an object on a moving platform.”
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`Id. at 1349. The fact “[t]hat a mathematical equation is required to complete the claimed method
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`and system does not doom the claims to abstraction.” Id.
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`Here, Defendant argues that since (1) processors, memory circuit, etc., are generic
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`computer components; (2) the ’137 Patent does not describe a newly invented processor,
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`memory circuit, etc.; and (3) the claims are allegedly directly solely to the storage of financial
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`transaction data, the claims are not patent eligible. See Dkt. 19 at 10-12. But, putting aside for the
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`moment Defendant’s erroneous identification of an abstract concept to which the claims are
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`directed, Defendant does not address the relevant inquiry: whether the claims as a whole are
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`directed to a new and useful device for performing and tracking financial transactions. See, e.g.,
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`Thales, 850 F.3d at 1349 (holding that “[j]ust as claims directed to a new and useful technique
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`for defining a database that runs on general-purpose computer equipment are patent eligible . . . ,
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`so too are claims directed to a new and useful technique for using sensors to more efficiently
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`track an object on a moving platform.”)
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`On this record, it is undisputed that prior to the filing date of September 12, 1995, Sol
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`Wynn invented a new multiple account electronic credit card that provided the benefits of
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`serving as a portable cash substitute, ’137 Patent, 1:61; reducing the number of cards a user had
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`to carry, id., 1:63-64; securely and automatically compiling and storing financial transaction
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`records for the transactions corresponding to the multiple accounts, id., 5:23-35; and requiring
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`authentication of the identity of a rightful user of the card prior to making a purchase, id., 5:67-
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`6:3. Having utterly failed to examine whether the claims as a whole are directed to a new and
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`Case 2:19-cv-00118-JRG Document 28 Filed 07/15/19 Page 17 of 23 PageID #: 247
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`useful device, Defendant has failed to demonstrate that the claims of the ’137 Patent are directly
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`to an abstract idea.
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`The remaining cases cited by Defendant do not alter this conclusion. In In re TLI
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`Commc’ns LLC Pat. Lit., 823 F.3d 607, 611 (Fed. Cir. 2016), the claims were “drawn to the
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`concept of classifying