Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`PLAINTIFF TOUCHSTREAM TECHNOLOGIES, INC.’S
`MOTION FOR SUMMARY JUDGMENT OF VALIDITY UNDER
`35 U.S.C. § 101 AND TO DISPOSE OF GTS “SYSTEM” THEORIES
`
`i
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 2 of 22
`
`I.
`
`II.
`
`Table of Contents
`INTRODUCTION ............................................................................................................. 1
`
`STATEMENT OF FACTS ................................................................................................ 1
`
`A.
`
`B.
`
`Google’s § 101 Theories. ....................................................................................... 4
`
`Google’s GTS “System” Theories. ........................................................................ 4
`
`III.
`
`LEGAL STANDARDS ..................................................................................................... 5
`
`A.
`
`B.
`
`Summary Judgment Standards. .............................................................................. 5
`
`The Alice Framework. ............................................................................................ 6
`
`IV.
`
`ARGUMENT ..................................................................................................................... 6
`
`A.
`
`B.
`
`C.
`
`The Asserted Patents are valid under 35 U.S.C. § 101. ......................................... 6
`
`Google’s caselaw supports the eligibility of the Asserted Claims. ...................... 12
`
`Google’s prior art theories regarding GTS fail as a matter of law. ...................... 14
`
`V.
`
`CONCLUSION ................................................................................................................ 16
`
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 3 of 22
`
`Cases
`
`Authorities Cited
`
`Page(s)
`
`Alice Corp. Pty. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ............................................................................................................ 8, 13, 14
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) .................................................................................................................... 7, 8
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)....................................................................................................... 9
`CardioNet, LLC v. InfoBionic, Inc,
`955 F.3d 1358 (Fed. Cir. 2020)....................................................................................................... 9
`Cellspin Soft, Inc. v. Fitbit, Inc.,
`927 F.3d 1306 (Fed. Cir. 2019)....................................................................................................... 9
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ........................................................................................................................ 7
`Content Extraction & Transmission LLC v. Wells Fargo Bank, NA,
`776 F.3d 1343 (Fed. Cir. 2014)..................................................................................................... 12
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)..................................................................................................... 10
`Enfish v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)..................................................................................................... 14
`Finjan Inc. v. Blue Coat Systems, Inc.,
`879 F.3d 1299 (Fed. Cir. 2018)..................................................................................................... 16
`Intellectual Ventures I v Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016)..................................................................................................... 16
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
`475 U.S. 574 (1986) ........................................................................................................................ 8
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016)........................................................................................... 9, 10, 15
`Microsoft Corp. v. i4i Ltd. P'ship,
`564 U.S. 91 (U.S. 2011) .................................................................................................................. 9
`Rafuse v. Advanced Concepts & Techs. Int’l, LLC,
`2022 WL 3030792 (W.D. Tex. Aug. 1, 2022) ................................................................................ 8
`Scott v. Harris,
`550 U.S. 372 (2007) ........................................................................................................................ 8
`SRI Int’l, Inc. v. Cisco Systems, Inc.,
`930 F.3d 1295 (Fed. Cir. 2019)..................................................................................................... 16
`Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017)....................................................................................................... 9
`Visual Memory LLC. V NVIDIA Corp.,
`867 F.3d 1253 (Fed. Cir. 2017)..................................................................................................... 15
`
`Statutes
`
`35 U.S.C. § 101 ...................................................................................................................... Passim
`
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 4 of 22
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`35 U.S.C. § 282 ............................................................................................................................... 9
`
`Rules
`
`Fed. R. Civ. P. 56(a) ....................................................................................................................... 7
`Rule 56 ........................................................................................................................................ 7, 8
`
`Other Authorities
`
`U.S. Patent No. 8,356,251 (“’251 Patent”) ............................................................................. 4, 5, 9
`U.S. Patent No. 8,904,289 (“’289 Patent”) ............................................................................. 4, 5, 6
`
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`I.
`
`INTRODUCTION
`
`Google alleges that the Asserted Claims of the patents-in-suit are invalid and unenforceable
`
`under 35 U.S.C. § 101. See Dkt. No. 73 at 19. But Google has failed to produce sufficient evidence
`
`or raise any genuine issues of material fact to support the various elements necessary to prove its
`
`invalidity theory under 35 U.S.C. § 101. Because the Asserted Claims of the patents-in-suit are
`
`directed to patentable subject matter and there are no genuine issues of material fact upon which a
`
`rational jury could base a finding in favor of Google on its affirmative defense, summary judgment
`
`is appropriate and should be granted in favor of Plaintiff Touchstream Technologies Inc.
`
`(“Touchstream”).
`
`Further, Google asserts a prior art invalidity theory based on a supposed “GTS System.”
`
`But Google has no evidence that this system, either alone or in combination with Hayward,
`
`disclose the “identifying a media player” limitation of the Asserted Claims. Indeed, under
`
`questioning, Google’s expert admitted as much. Because Google cannot show that this element is
`
`present in these items of prior art, partial summary judgment of validity with respect to these
`
`references is appropriate.
`
`II.
`
`STATEMENT OF FACTS
`
`Plaintiff filed its complaint for patent infringement on June 4, 2021. The complaint asserted
`
`three patents: U.S. Patent No. 8,356,251 (“’251 Patent”), U.S. Patent No.8,782,528 (“’528
`
`Patent”), and U.S. Patent No. 8,904,289 (“’289 Patent”). Claim 1 of the ‘251 Patent, titled “Play
`
`Control of Content on a Display Device,” is representative:
`
`1. A machine-implemented method of controlling presentation of video content
`on a display device that loads any one of a plurality of different media player
`players, the method comprising::
`
`assigning, by a server system, a synchronization code to the display
`device;
`
`1
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`

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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 6 of 22
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`receiving, in the server system, a message from a personal computing
`device that is separate from the server system and separate from the
`display device, wherein the message includes the synchronization
`code;
`
`storing, by the server system, a record establishing an association between
`the personal computing device and the display device based on the
`synchronization code;
`
`receiving, in the server system, one or more signals from the personal
`computing device, the one or more signals specifying a video file to be
`acted upon and identifying a particular media player for playing the
`video content, the one or more signals further including a universal
`playback control command for controlling playing of the video content
`on the display device by the particular media player,
`
`converting, by the server system, the universal playback control command
`into corresponding programming code to control playing of the video
`content on the display device by the particular media player, wherein
`converting the universal playback control command includes selecting
`from among a plurality of specific commands, each of which
`represents a corresponding playback control command for a respective
`media player; and
`
`storing, in a database associated with the server system, information for
`transmission to or retrieval by the display device, wherein the
`information specifies the video file to be acted upon, identifies the
`particular media player for playing the video content, and includes the
`corresponding programming code to control playing of the video
`content on the display device by the particular media player in
`accordance with the universal playback control command.
`
`Defendant filed its Answer on June 29, 2022. It argued, among other things, the Asserted
`
`Claims are invalid under 35 U.S.C. § 101 because they are directed to abstract ideas or other non-
`
`statutory subject matter.
`
`On June 15, 2022, this Court held a claim construction hearing, adopting the following
`
`constructions:
`
`2
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`

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`
`Claim Term
`
`Court’s Definition
`
`“an association between the personal computing device and the
`[display device/content presentation device]”
`
`Plain and ordinary meaning
`
`(‘251 patent, claim 1;’528 patent, claims 1, 28; and ‘289 patent,
`claims 1, 6)
`“video file” / “video
`content”
`
`(’251 patent, claims 1, 7)
`“converting the
`command from the
`personal computing
`device into corresponding code to control the media player”
`
`(’251 patent, claim 2)
`“universal command”
`
`(’251 patent, claim 5)
`
`“unique identification code assigned to the content presentation
`device”
`
`(’289 patent, claims 1 and 6)
`
`and
`
`“synchronization code assigned to the content presentation
`device”
`
`(’528 patent, claim 1)
`“[identify/identifying/include information indicating] a location
`of
`the particular media player”
`
`(’528 patent, claims 1, 27, 28; and ’289 patent, claims 1, 7)
`“action control command being
`independent of the particular media player”
`
`(’528 patent, claims 1, 27, 28; ’289 patent, claims 1 and 6)
`
`Plain and ordinary meaning
`
`Plain and ordinary meaning
`
`Plain and ordinary meaning,
`which is “a standard
`command used for
`controlling playback of
`media content such as play
`or pause”
`Plain and ordinary meaning
`
`Plain and ordinary meaning
`
`Plain and ordinary meaning
`
`3
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`

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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 8 of 22
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`Claim Term
`
`“identifying, [by the server system,]
`programming code corresponding to the action control command,
`wherein the programming code is for controlling
`presentation of the content presentation
`device using the particular media player”
`
`(’528 patent, claims 1, 28; ’289 patent, claims 1 and 6)
`
`Court’s Definition
`
`Plain and ordinary meaning
`
`Fact discovery in this case closed on October 27, 2022, and expert discovery closed on
`
`December 16, 2022.
`
`A.
`
`Google’s § 101 Theories.
`
`Google’s § 101 arguments can be found in four places: (1) its Third Affirmative Defense,
`
`(2) its response to Touchstream’s Interrogatory number 16, (3) its invalidity contentions, and (4)
`
`in the expert report of Dr. Ketan Mayer-Patel. But all of these merely rehash the positions in its
`
`invalidity contentions. Indeed, Google’s response to Interrogatory number 16 merely incorporated
`
`its invalidity contentions and expert report, while Google’s expert report on invalidity merely
`
`copied the contentions verbatim. Google’s positions assert, broadly, that the Asserted Claims of
`
`the Asserted Patents are invalid as directed to an abstract idea, and do not contain any inventive
`
`concept.
`
`B.
`
`Google’s GTS “System” Theories.
`
`Google asserts, through its Invalidity Contentions and the Expert Report of Dr. Mayer-
`
`Patel, that the alleged GTS System anticipates or renders obvious the Asserted Claims. However,
`
`Google fails to identify key steps of the patent in these systems. Indeed, Google’s expert Dr.
`
`Mayer-Patel admitted in his deposition that GTS does not disclose “identifying a media player.”
`
`Summary judgment in favor of Touchstream is proper for this system because there is no dispute
`
`of material fact that could overcome this finding.
`
`4
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 9 of 22
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`III.
`
`LEGAL STANDARDS
`
`A.
`
`Summary Judgment Standards.
`
`A court shall grant summary judgment if there is no genuine dispute as to any material fact
`
`and the movant is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a); see also
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). The movant bears the initial burden of
`
`pointing out to the court that there is no genuine dispute as to any material fact. See Celotex Corp.
`
`v. Catrett, 477 U.S. 317, 323, 325 (1986). Once the movant has carried its burden under Rule
`
`56(a), the nonmoving party must identify evidence in the record that creates a genuine dispute as
`
`to each of the challenged elements of its case. Id. at 324. If the nonmoving party fails to identify
`
`evidence to support an essential element of the non-moving party’s case, Rule 56 mandates the
`
`entry of summary judgment because “a complete failure of proof concerning an essential element
`
`of the nonmoving party's case necessarily renders all other facts immaterial.” Id. at 322-23.
`
`“Disputes over material facts qualify as ‘genuine’ within the meaning of Rule 56 when ‘the
`
`evidence is such that a reasonable jury could return a verdict for the nonmoving party.’” Rafuse v.
`
`Advanced Concepts & Techs. Int’l, LLC, No. 6:20-CV-00718-ADA, 2022 WL 3030792, at *4
`
`(W.D. Tex. Aug. 1, 2022) (quoting Anderson, 477 U.S. at 248.). “Given the required existence of
`
`a genuine dispute of material fact, ‘the mere existence of some alleged factual dispute between the
`
`parties will not defeat an otherwise properly supported motion for summary judgment.’” Id.
`
`(quoting Anderson, 477 U.S. at 247-48.). A genuine dispute is lacking when “the record taken as
`
`a whole could not lead a rational trier of fact to find for the nonmoving party.” Scott v. Harris, 550
`
`U.S. 372, 380 (2007) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
`
`586-87 (1986)).
`
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 10 of 22
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`B.
`
`The Alice Framework.
`
`The Supreme Court has established a two-step analytical framework for “distinguishing
`
`patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim
`
`patent-eligible applications of those concepts.” Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208,
`
`217 (2014). First, the court must determine “whether the claims at issue are directed to one of those
`
`patent-ineligible concepts.” Id. at 217. Second, if the claims are directed to a patent-ineligible
`
`concept, the court must “examine the elements of the claim to determine whether it contains an
`
`‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
`
`application.” Id. at 221. In creating this framework, the Supreme Court recognized that claims
`
`“designed to solve a technological problem in conventional industry practice” and that applications
`
`of abstract concepts to a new and useful end are patent eligible. Id. at 2354, 2358.
`
`IV.
`
`ARGUMENT
`
`A.
`
`The Asserted Patents are valid under 35 U.S.C. § 101.
`
`Google’s invalidity defense under 35 U.S.C. § 101 fails as a matter of law because there is
`
`no genuine issue of material fact that the Asserted Claims of the patents-in-suit are directed to
`
`patentable subject matter–they are.
`
`1. The Asserted Patents are presumed valid.
`
`Pursuant to 35 U.S.C. § 282, a defendant asserting that an issued patent is invalid “has the
`
`burden of proving invalidity by clear and convincing evidence.” Microsoft Corp. v. i4i Ltd. P'ship,
`
`564 U.S. 91, 99 (U.S. 2011). Patent claims enjoy a presumption of validity under 35 U.S.C. § 101,
`
`and a defendant must convincingly show ineligibility under both prongs of the Alice framework.
`
`See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019); Berkheimer v. HP Inc.,
`
`881 F.3d 1360, 1368 (Fed. Cir. 2018) (“Any fact…that is pertinent to the invalidity conclusion
`
`must be proven by clear and convincing evidence.”).
`
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 11 of 22
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`2. The Asserted Claims satisfy Alice Step 1 because they are directed to
`patentable subject matter.
`
`Step 1 of the Alice inquiry considers the claims “in their entirety to ascertain whether their
`
`character as a whole is directed to excluded subject matter.” CardioNet, LLC v. InfoBionic, Inc,
`
`955 F.3d 1358, 1367 (Fed. Cir. 2020) (quoting McRO, Inc. v. Bandai Namco Games Am. Inc., 837
`
`F.3d 1299, 1312 (Fed. Cir. 2016)). If the claim is not directed to excluded subject matter under
`
`Step 1, the patent is eligible and the inquiry ends. Two-Way Media Ltd. v. Comcast Cable
`
`Commc'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017).
`
`Here, the Asserted Patents make clear that there existed a problem rooted in computer
`
`technology—namely, a desire to watch media content on a television and control this operation
`
`using a personal computing device, such as a mobile phone. See, e.g., ’251 patent at 1:32-39. To
`
`meet this need, the Asserted Claims are directed to a specific computer architecture that enables a
`
`personal computing device to control the playback of videos from various media players over a
`
`network through the use of a server system, while specifying the precise intra-system messaging
`
`that effectuates the control. As such, the Asserted Claims are not directed to an abstract idea as
`
`Google suggests, and instead, are directed to a concrete solution that constitutes patentable subject
`
`matter. The first prong of the Alice test is satisfied, which ends the § 101 inquiry.
`
`The Federal Circuit has routinely found claims valid where they, like those asserted here,
`
`recite a “solution [that] is necessarily rooted in computer technology in order to overcome a
`
`problem specifically arising in the realm of computer networks.” DDR Holdings, LLC v.
`
`Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Moreover, the Asserted Patents do not
`
`attempt to preempt the field by merely claiming the result; rather, they recite a series of concrete
`
`steps and specific messages exchanged between a personal computing device, a server system, and
`
`a display device that provide one way to achieve that result. See McRO, 837 F.3d at 1314 (“We
`
`7
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 12 of 22
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`therefore look to whether the claims in these patents focus on a specific means or method that
`
`improves the relevant technology or are instead directed to a result or effect that itself is the abstract
`
`idea and merely invoke generic processes and machinery.”). As such, the Asserted Claims are
`
`directed to patent-eligible subject matter. See id. at 1316.
`
`The Federal Circuit has made clear that courts “must be careful to avoid oversimplifying
`
`the claims by looking at them generally and failing to account for the specific requirements of the
`
`claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016). But
`
`that is exactly what Google does. For instance, the § 101 analysis in Dr. Mayer-Patel’s expert
`
`report—which is a verbatim copy of the legal analysis in Google’s Invalidity Contentions— never
`
`discusses any particular claim as part of the § 101 analysis, instead conflating all the Asserted
`
`Claims of all three Asserted Patents. See, e.g., Exh. A, Mayer-Patel Report ¶¶ 939, 941 (making
`
`assertions concerning “[a]ll Asserted Claims of the Asserted Patents”). To the extent Dr. Mayer-
`
`Patel discusses claim language at all, he fails to account for the overall context (and most of the
`
`limitations) of the claim in which it appears. See id. ¶ 945 (generally alleging certain claim
`
`elements are included or not included for all Asserted Claims of the Asserted Patents).
`
`Further, Dr. Mayer-Patel fails to identify a particular “abstract idea” to which the Asserted
`
`Claims are supposedly directed. Instead, he lists at least three separate potential “abstract ideas”:
`
`(1) “receiving data from a first device . . . performing some conversion on it, and transmitting it to
`
`another device” (id.); (2) “organizing data associated with three systems . . . and then displaying
`
`it” (id.); and (3) “controlling the playback of media/content over a networked infrastructure” (id.
`
`¶ 941). None of these accurately characterize any of the Asserted Claims. “Even the aggregation
`
`of all three supposed ‘ideas’ fails to capture the specificity of the claimed methods.” Exh. B,
`
`Almeroth Report at ¶ 326.
`
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 13 of 22
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`Dr. Mayer-Patel offers another oversimplification of the Asserted Claims when he
`
`analogizes the claims to “a familiar scenario where a person watching television directs a co-
`
`watcher to change the channel on the television and/or change the type of media being viewed
`
`(such as by turning on a DVD or CD player using the same entertainment system).” Exh. A, Mayer-
`
`Patel Report at ¶ 941. But as Touchstream’s expert, Dr. Almeroth, has opined, “[t]here is no
`
`evidence that Dr. Mayer-Patel’s ‘person watching television’ and ‘co-watcher’ engage in a
`
`sequence of messages to ensure, for example, that either of these two individuals select appropriate
`
`programming code to interface with a media player application.” Exh. B, Almeroth Report at ¶
`
`330. Accordingly, Dr. Mayer-Patel is incorrect to suggest that “humans have always performed
`
`[the claimed] functions.” Exh. A, Mayer-Patel Report at ¶ 941. (quoting Content Extraction &
`
`Transmission LLC v. Wells Fargo Bank, NA, 776 F.3d 1343, 1347 (Fed. Cir. 2014)). Indeed,
`
`Google fails to explain how a human could possibly perform numerous critical limitations of the
`
`Asserted Claims—such as:
`
` Assigning a synchronization code to a display device by a server system;
`
` Receiving a message in the server system including the synchronization code;
`
` Storing a record in the server system based on the synchronization code;
`
` Receiving signals specifying a video file and identifying a particular media player;
`
`
`
`Including the synchronization code and a universal playback control command in
`
`the messages;
`
` Converting
`
`the universal playback control command
`
`to corresponding
`
`programming code; and
`
` Storing in a database information that specifies the video file to be acted upon,
`
`identifies the media player, and includes the corresponding programming code.
`
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 14 of 22
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`(‘251 patent, claim 1).
`
`In short, the Asserted Claims are directed to a specific, concrete computer architecture that
`
`enables a personal computing device to control the playback of videos from various media players
`
`over a network on a display device through the use of a server system. To accomplish this, the
`
`Asserted Claims require the exchange of a specific set of messages between the recited
`
`components, with the precise requirements of the intra-system messaging varying claim-to-claim.
`
`Accordingly, contrary to the assertions of Dr. Mayer-Patel, the Asserted Claims of the Asserted
`
`Patents satisfy the first prong of the Alice test, ending the inquiry and allowing this Court to grant
`
`summary judgment of validity under 35 U.S.C. § 101.
`
`3. The Asserted Claims satisfy Alice Step 2 because they recite an inventive
`concept.
`
`The Asserted Claims are not directed to an abstract idea, which ends the Alice inquiry. But
`
`even if they were, they also satisfy step two of the Alice test because they contain an “inventive
`
`concept.” Alice, 573 U.S. at 219. The Supreme Court has explained that step two requires
`
`“consider[ing] the elements of each claim both individually and ‘as an ordered combination’ to
`
`determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible
`
`application” (quoting Mayo at 79, 78). Individual components of the Asserted Claims are
`
`inventive, including the synchronization code (or unique identification code), the identification of
`
`media players, and the conversion or identification of programming code.
`
`Even so, these elements alone fail to capture the inventive organization and ordering of
`
`these functions. Indeed, the Asserted Claims employ an inventive ordering of messages that,
`
`among other things, allow the use of different media players, associate different computer
`
`components, and allow a server system intermediary to coordinate between the media players,
`
`video files, control commands, personal computing devices, and display devices. The order of
`
`10
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 15 of 22
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`messages is inventive, as is the organization of how the information is processed and the playback
`
`actions are effectuated. The components together “as an ordered combination” are a different,
`
`concrete improvement. Alice Corp. v. CLS Bank, 573 U.S, 208, 225.
`
`The Asserted Claims also include inventive concepts that are exactly what the Supreme
`
`Court suggested is patent-eligible: improvement to the functioning of the computer itself. Id. at
`
`225. See Enfish v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (collecting cases) (“The claims
`
`here are directed to an improvement in the functioning of a computer. In contrast, the claims at
`
`issue in Alice and Versata can readily be understood as simply adding conventional computer
`
`components to well-known business practices.”) In Enfish, the Federal Circuit considered an
`
`improvement to database technology. Here, the improvements to the delivery and control of
`
`streaming digital media between a personal computing device, server system, and a display device
`
`are analogous to the improvements to database technology that survived a § 101 challenge in
`
`Enfish.
`
`4. Google’s § 101 analysis fails to generate a genuine issue of material fact.
`
`Touchstream’s Interrogatory No. 16 asked Google to state the “full bases” of any invalidity
`
`theories it intended to bring, including invalidity for unpatentable subject matter under § 101.
`
`Google’s response points to its invalidity contentions and forthcoming expert report on invalidity.
`
`But neither creates a triable issue of fact. Google’s contentions lack any substantive analysis of the
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`Asserted Claims in favor of conclusory recitations of the case law, while Google’s expert report
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`on invalidity merely copies the contentions. Compare Exh. C, Google’s Invalidity Contentions at
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`pp. 41–47, with Exh. A, Mayer-Patel Report at ¶¶ 939-46. Consequently, no genuine issue of
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`material fact prevents this Court from granting summary judgment of validity under 35 U.S.C. §
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`101.
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 16 of 22
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`B.
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`Google’s caselaw supports the eligibility of the Asserted Claims.
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`With respect to the caselaw in its contentions, Google cites to McRo, Inc. v. Bandai Namco
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`Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) to support its theory that the Asserted Claims are
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`not patent eligible. Exh. A, Mayer-Patel Report at ¶ 941; Exh. C, Google’s Invalidity Contentions
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`at 44. But this decision actually supports the eligibility of the Asserted Patents. In McRo, the
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`Federal Circuit noted the concern underlying Alice is one of preemption. Id. The court went on to
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`find that claims directed to a rules-based method for automatically animating computer-generated
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`facial expressions to match speech were eligible subject matter. The court considered the
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`preemptive concern and held that because the computer-animation claims contained a specific
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`organization of rules, it did not broadly preempt automatic generation of facial expressions—
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`rather, it only preempted automatic generation of facial expressions performed in a certain way.
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`Id. at 1315. Similarly, the Asserted Claims here contain a specific structure (“personal computing
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`device”, “server system”, “display device”) and specific messaging rules (e.g., “assigning,”
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`“receiving …,” “obtaining …,” “converting …,” “identifying …,” “storing”.) They do not preempt
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`all methods of remote control of content, only the remote control of content done according to the
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`organization and rules as claimed.
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`Other decisions cited by Google also support the eligibility of the Asserted Claims. Indeed,
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`a trend emerges from Federal Circuit decisions: teaching how an improvement works with concrete
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`steps and specific components makes a claim directed to an eligible improvement, not an abstract
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`idea. For instance, in Visual Memory LLC. V NVIDIA Corp., 867 F.3d 1253, 1259-60 (Fed. Cir.
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`2017), the court found patents relating to organization of programmable memory caches to be
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`eligible and not abstract at step one because they were directed to the concrete improvement of
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`computer memory and not the abstract idea of categorical data storage. Id. at 1259. The court noted
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`Case 6:21-cv-00569-ADA Document 143 Filed 01/05/23 Page 17 of 22
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`claim language linking the invention to specific computer parts (memory and bus components) to
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`support this finding.
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`Likewise, in Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the
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`court considered an improvement in virus scanning technology, and compared the improvements
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`to Intellectual Ventures I v Symantec Corp., 838 F.3d 1307, 1319 (Fed. Cir. 2016) (which were
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`patent-ineligible because virus scanning was an abstract concept). In Finjan, the court found that
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`the claims were eligible, being directed to a specific improvement in virus scanning. The invention
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`used a behavior-based scanning method that identified malicious code by its effects, rather than its
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`appearance. Id. at 1304. The court emphasized the difference between claiming a method to
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`achieve a result, and claiming the result itself. Id. at 1305. Like the Finjan claims, the Asserted
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`Claims here do not claim the result of a lower cost, lighter weight system; nor do they claim the
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`result of interoperability. Rather, they teach a specific architecture and messaging that achieves
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`those results.
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`Finally, in SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019), the
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`court considered claims that covered a method for monitoring an entire computer network for
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`threats, and combining information from across the network to identify intrusions. The claims were
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`not simply directed to abstract idea of “just analyzing data from multiple sources to detect
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`suspicious activity” because they teach the use of specific system parts and specific steps: “indeed,
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`representative claim 1 recites using network monitors to detect suspicious network activity based
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`on analysis of network traffic data, generating reports of that suspicious activity, and integrating
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`those reports using hierarchical monitors.” Id. at 1303.
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`This trio of decisions illustrates that the Asserted Claims are not directed to an abstract
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