Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 1 of 27
`
`UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF TEXAS
`
`WACO DIVISION
`
`Plaintiffs,
`
`
`
`v.
`
`
`
`Case No. 6:21-cv-00898-ADA
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`
`
`ALMONDNET, INC,
`
`
`
`
`
`AMAZON.COM, INC.; AMAZON.COM
`SERVICES LLC; and AMAZON WEB
`SERVICES, INC.,
`
`
`
`
`
`Defendants.
`
`
`
`
`
`OPPOSITION TO DEFENDANTS’ MOTION FOR
`SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 101
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 2 of 27
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`Introduction .........................................................................................................................1
`
`II. Relevant Legal Standards ...................................................................................................2
`
`III. Factual Background ............................................................................................................4
`
`A. The ’639 and ’586 Patents.......................................................................................................... 4
`
`B. The ’139 Patent .......................................................................................................................... 5
`
`IV. The ’639 and ’586 Patents are not directed to patent-ineligible subject matter............6
`
`A. Step One: The ’639 and ’586 patent claims are not directed to abstract ideas but instead to
`technical improvements to computer networks.......................................................................... 6
`
`B. Step Two: The asserted claims provide an inventive concept. ................................................ 12
`
`1. Amazon’s Motion relies on an incorrect legal standard. ..................................... 12
`
`2. Amazon provides no competent evidence disputing that the ordered combination
`of claim elements is inventive. ............................................................................ 13
`
`V. The ’139 Patents is not directed to patent-ineligible subject matter. ...........................15
`
`A. Step One: The ’139 Patent claims are not directed to abstract ideas but instead to technical
`improvements to computer networks. ...................................................................................... 15
`
`B. Step Two: The asserted claims provide an inventive concept. ................................................ 19
`
`
`
`
`
`
`
`i
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 3 of 27
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`Alice Corp. v. CLS Bank International,
`573 U.S. 208 (2014) ......................................................................................................... passim
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018) ....................................................................................... 3, 8, 17
`
`BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016) ..................................................................................... 4, 10, 15
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) ............................................................................... 4, 13, 15, 21
`
`Berkheimer v. HP, Inc.,
`890 F.3d 1369 (Fed. Cir. 2018) ........................................................................................ passim
`
`Customedia Techs., LLC v. Dish Network Corp.,
`951 F.3d 1359 (Fed. Cir. 2020) ............................................................................................... 12
`
`Data Engine Techs., LLC v. Google, LLC,
`906 F.3d 999 (Fed. Cir. 2018) ................................................................................................... 3
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ........................................................................................ passim
`
`Elec. Power Grp., LLC, v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) ........................................................................................... 9, 10
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) ................................................................................................. 3
`
`Exmark Mfg. Co. Inc. v. Briggs & Stratton Corp.,
`830 F. App’x 305 (Fed. Cir. 2020) .......................................................................................... 15
`
`In re Morsa,
`809 F. App’x 913 (Fed. Cir. 2020) .......................................................................................... 12
`
`Kononklijke KPN N.V. v. Gemalto M2M GmbH,
`942 F.3d 1143 (Fed. Cir. 2019) ................................................................................... 1, 3, 8, 17
`
`Mayo Collaborative Servs. v. Prometheus Labs. Inc.,
`566 U.S. 66 (2012) .................................................................................................................... 3
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016) ....................................................................................... 3, 8, 17
`
`
`
`ii
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 4 of 27
`
`USC IP P’ship, L.P. v. Facebook, Inc.,
`576 F. Supp. 3d 446 (W.D. Tex. 2021) ............................................................................. 13, 14
`
`
`
`
`
`
`
`iii
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 5 of 27
`
`I.
`
`Introduction
`
`Amazon’s Motion fails at both levels of the two-step framework set forth in Alice Corp.
`
`v. CLS Bank International, 573 U.S. 208 (2014) and its progeny. Applying that controlling law,
`
`it is clear that the asserted claims are not directed to abstract ideas, but are instead directed to
`
`inventive solutions to Internet-centric problems. Thus, they are patent-eligible as a matter of
`
`law. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) (“[T]he
`
`claimed solution amounts to an inventive concept for resolving this particular Internet-centric
`
`problem, rendering the claims patent-eligible.”).
`
`Amazon’s arguments to the contrary suffer from numerous flaws, each one of which is
`
`fatal to its Motion. At Alice Step One, Amazon suggests various claim summaries depending on
`
`which page of the brief the reader is on, but each of these summaries ignores the claimed
`
`advance over the prior art. This violates controlling precedent, which makes clear that the Step
`
`One “directed to” analysis must at least account for and examine each invention’s “claimed
`
`advance” over the prior art. Kononklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143,
`
`1150 (Fed. Cir. 2019). Amazon’s Step One analysis never even asks this question, much less
`
`analyzes the intrinsic evidence that answers the question. This legal error alone is dispositive.
`
`Furthermore, Amazon’s “directed to” characterizations in many instances ignore the
`
`claim requirements, and interpret the claims contrary to prior decisions by this Court and the
`
`Patent Office. For example, Amazon alleges that the claims of the ’639 and ’586 Patents are
`
`directed to “display of overflow ads” from a “website that cannot accommodate additional
`
`advertisements.” Mot. at 1; see also id. at 4, 9-10, 14 (characterizing the claimed solution as
`
`placing “overflow ads”). However, the Court has already construed the claims in a manner
`
`directly inconsistent with Amazon’s characterization, in holding that “[t]he claims do not
`
`require that the first Internet site is saturated with advertisements.” Dkt. 113 (Claim
`
`
`
`1
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 6 of 27
`
`Construction Order) at 14. Amazon also contends that the claims of the ’139 Patent are directed
`
`to “calculating profit for an ad placement” (Mot. at 6, 17-18), even though the claims do not
`
`recite or require any calculation of profit. See Ex. H at 9-12 (PTAB decision holding that “the
`
`[’139 Patent] claims do not recite any limitations regarding profit or expected profit”).
`
`Amazon’s attempt to invalidate the claims by arguing they are “directed to” things that this
`
`Court and the PTAB have already held are not the claimed focus should be rejected.
`
`While this Court need not consider Alice Step Two, Amazon likewise fails to meet its
`
`burden at that Step because the claims recite non-generic, non-routine, and unconventional
`
`solutions to Internet-specific problems. In an effort to argue otherwise, Amazon isolates claim
`
`elements and contends that each individual element, divorced from context, is routine or
`
`conventional. But Amazon’s approach runs contrary to Alice, which requires considering the
`
`entire claim “as an ordered combination.” See 573 U.S. at 217. And on this point, Amazon’s
`
`motion presents only two short, conclusory paragraphs, which themselves rely only on
`
`conclusory expert testimony insufficient to meet Amazon’s clear and convincing burden. See
`
`Mot. at 15, 22 (citing Hanson Rep. ¶¶ 1094, 1114, 1162, which are each only a single sentence
`
`with no underlying evidentiary support); see also Berkheimer v. HP, Inc., 890 F.3d 1369, 1371-
`
`72 (Fed. Cir. 2018) (Moore, J., concurring) (reasoning that absent any evidence “beyond [an]
`
`expert’s conclusory declaration,” “summary judgment had to be denied”).
`
`At minimum, the evidence shows numerous factual questions that plainly preclude
`
`granting summary judgment. Amazon’s motion should be denied in its entirety.
`
`II.
`
`Relevant Legal Standards
`
`To determine patent eligibility under § 101, courts conduct a two-step analysis as
`
`articulated by the Supreme Court in Alice, 573 U.S. at 216. Under Step One of the Alice inquiry,
`
`courts must ask “whether the claim, as a whole, is ‘directed to’ [] an abstract idea.” Ancora
`
`
`
`2
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 7 of 27
`
`Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018). Under this step, a patent
`
`claim is not abstract if it presents a “specific solution to [an] existing technological problem.”
`
`Data Engine Techs., LLC v. Google, LLC, 906 F.3d 999, 1009 (Fed. Cir. 2018).
`
`The Federal Circuit has made clear that this Step One “directed to” analysis must at least
`
`account for and examine each invention’s “claimed advance” in the art according to the record.
`
`Ancora, 908 F.3d at 1347-49; see also Kononklijke, 942 F.3d at 1150 (“At step one of the Alice
`
`framework, we ‘look at the focus of the claimed advance over the prior art to determine if the
`
`claim’s character as a whole is directed to excluded subject matter.’”).
`
`Furthermore, the “directed to” inquiry “cannot simply ask whether the claims involve a
`
`patent-ineligible concept, because essentially every routinely patent-eligible claim involving
`
`physical products and actions involves a law of nature and/or natural phenomenon—after all,
`
`they take place in the physical world.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
`
`1299, 1313 (Fed. Cir. 2016) (emphasis in original); see also Mayo Collaborative Servs. v.
`
`Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (cautioning against oversimplification because
`
`“all inventions… embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or
`
`abstract ideas”). Rather, the “directed to” inquiry evaluates claims based on whether “their
`
`character as a whole is directed to excluded subject matter.” Enfish, LLC v. Microsoft Corp.,
`
`822 F.3d 1327, 1334-36 (Fed. Cir. 2016). If the claims are not directed to an abstract idea, then
`
`the inquiry ends and the claims are eligible under § 101. Ancora, 908 F.3d at 1349.
`
`If the claims are “directed to” an abstract idea, the second step of the Alice analysis calls
`
`for the court to “consider the elements of each claim both individually and ‘as an ordered
`
`combination’ to determine whether [the claims contain] an element or combination of elements
`
`that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent
`
`upon the [abstract idea] itself.’” Alice, 573 U.S. at 217-18. Even a novel arrangement of purely
`
`
`
`3
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 8 of 27
`
`conventional elements can form the inventive concept. BASCOM Glob. Internet Servs., Inc. v.
`
`AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). Claims are patent-eligible if “the
`
`claimed solution is necessarily rooted in computer technology in order to overcome a problem
`
`specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257.
`
`The Step Two inquiry of “whether a claim element or combination of elements is well-
`
`understood, routine, and conventional to a skilled artisan in the relevant field is a question of
`
`fact,” which “must be proven by clear and convincing evidence.” Berkheimer v. HP Inc., 881
`
`F.3d 1360, 1368 (Fed. Cir. 2018). Facts supporting invalidity under Step Two cannot be
`
`established by attorney argument or “conclusory” statements alone. Berkheimer, 890 F.3d at
`
`1372-73. And because summary judgment is appropriate only if there is “no genuine dispute as
`
`to any material fact,” any genuine factual dispute as to whether claims perform conventional
`
`activities “mak[es] summary judgment inappropriate.” Berkheimer, 881 F.3d at 1365, 1370.
`
`III.
`
`Factual Background
`
`A.
`
`The ’639 and ’586 Patents
`
`The ’639 and ’586 Patents share a common specification, and each relates to offsite
`
`targeted advertising. Ex. A (Frankovitz Rep.) ¶24. As the common specification teaches, the
`
`invention “provides a very technical solution to the saturation of many communication media.”
`
`’639 Pat. 2:51-53. The solution allows the website to “let its advertisers reach its audience
`
`outside of its web site” (i.e., offsite). Id., 3:30-47; Frankovitz Rep. ¶¶24-25 (explaining that the
`
`patents use the “term ‘site’ in a particular way that refers to the entity that benefits from the
`
`operation of the ‘site’ in question”). Although in certain instances, the solution may require a
`
`“lower price” for advertisements than advertisements that would appear on the website, it can
`
`still be greatly advantageous “to sell its advertisers the visitor to its web site outside its site” in
`
`order to sell “a bigger number of [ad] exposures.” ’639 Pat., 3:35-47; Frankovitz Rep. ¶24.
`
`
`
`4
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 9 of 27
`
`At a high level, the invention of the ’639 and ’586 Patents operates whereby “clients
`
`visiting the first broadcaster are tagged at the instance of this broadcaster,” and then when
`
`visiting a site of a second broadcaster, “a recognized visitor” (i.e., a visitor recognized as having
`
`visited the first broadcaster) “is presented with the first broadcaster’s special message [such as
`
`an advertisement], situated in the second broadcaster.” ’639 Pat., 10:51-63. Aspects of this
`
`process are reflected in the Asserted Claims. For example, method claim 24 of the ’639 Patent
`
`recites in part, “creation of electronic records of visitor computers that visit a first Internet site,
`
`using a tag on each of said visitors”; “computer-facilitating delivery to visitor computers
`
`visiting a second, different Internet site of advertisements”; and “computer-causing the
`
`proprietor of the second Internet site to receive revenue from direction of the advertisements to
`
`the visitor computers visiting the second Internet site as a consequence of computer-
`
`determining, using the tags and said electronic records, that such visitor computers have visited
`
`the first Internet site”; where both the second Internet site and the first Internet site retain
`
`revenue from the process. Frankovitz Rep. ¶26. The solution allows the owner of the first
`
`website to benefit from advertisements placed outside that site in a manner that would not
`
`otherwise have been possible. ’639 Pat., 10:64-11:6. This approach thus allows for a “‘virtual
`
`expansion’ of a site’s online advertising space, roughly analogous to the technological
`
`advancement of using ‘virtual memory’ in computing to virtually expand the amount of
`
`memory available to a computer system.” Frankovitz Rep. ¶¶411, 424.
`
`B.
`
`The ’139 Patent
`
`At a high level, the ’139 Patent “facilitate[s] selection of media properties on which to
`
`display an advertisement, responsive to a profile collected on a first media property.” ’139 Pat.,
`
`6:12-18. The patent makes clear that “a media property (in the present context) can also be
`
`defined as any equipment [e.g., a server computer] that controls an ad space viewed by a
`
`
`
`5
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 10 of 27
`
`visitor.” Id., 3:38-48. This is reflected, e.g., in asserted claim 37 in the sole asserted independent
`
`claim of the ’139 Patent, which recites, in part: “A system comprising one or more computers”
`
`programmed to perform a method comprising “(a) automatically directing, to a third-party
`
`server computer controlling advertising space on a second media property, indicia of a condition
`
`for display of an advertisement, which condition relates specifically to an electronic visitor; and
`
`(b) automatically electronically authorizing the [third-party] server computer to automatically
`
`cause display of an advertisement, to the electronic visitor when the electronic visitor visits the
`
`second media property at a time after the electronic visitor visits the first media property,
`
`subject to determining that the condition has been met.” Id., Claim 37.
`
`The intrinsic record further makes clear that by using the term “third-party,” the
`
`“authorizing is being done of an unrelated site, to capture [a] distinction” over the prior art.
`
`Frankovitz Rep. ¶¶19-20 (citing the ’139 Patent File History and the file history of its
`
`grandparent application) (emphasis in original). Thus, in the claims as issued, the “third-party
`
`server computer” must have a third-party relationship (i.e., be unrelated to) the machine
`
`performing the claimed process. Id. at ¶¶19-20, 436. As such, the asserted claims of the ’139
`
`Patent, in view of the intrinsic record, recite a particular technique for an advertising network
`
`server to effectively expand its control over advertising placements in a distributed manner, by
`
`using third-party servers that the advertising network doesn’t control to evaluate visitor-specific
`
`conditions provided by the advertising network. See Frankovitz Rep. ¶439.
`
`IV.
`
`The ’639 and ’586 Patents are not directed to patent-ineligible subject matter.
`
`A.
`
`Step One: The ’639 and ’586 patent claims are not directed to abstract ideas
`but instead to technical improvements to computer networks.
`
`Amazon’s arguments fail at Step One of the Alice analysis, thus precluding summary
`
`judgment. The ’639 and ’586 Patent claims are “directed to” the virtual expansion of a website’s
`
`
`
`6
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 11 of 27
`
`online advertising space in a way that improves the functionality of a networked advertising
`
`system. Specifically, as described by the ’586 and ’639 Patents, the advertising space of a
`
`website is limited via “financial, aesthetic and pragmatic considerations.” ’639 Pat., 2:47-52.
`
`The patents effectively make “additional space available, either at an alternative site or in an
`
`alternative media” for display of advertisements to users who have visited the first website. Id.,
`
`3:22-26. As the patents make clear, “[r]evenue from this resource would not ordinarily have
`
`accrued to the original advertising media site without” this approach. Id., 3:22-29. The ability of
`
`the first website to effectively expand its advertising space to include ad space on websites it
`
`doesn’t itself control is “an innovative and very financially attractive solution generally using
`
`existing modules and technology in an unobvious way.” Id., 3:22-29. In other words, the novel
`
`arrangement of existing modules provides a technological advance by virtually expanding the
`
`advertising space of a website. See id.; see also Frankovitz Rep. ¶411 (explaining that the
`
`claimed invention “improv[es] the functionality of a networked advertising system”).
`
`The intrinsic record additionally makes clear that the ability of the first site to retain
`
`revenue from advertisements shown outside of the first site (and thus the ability of the first site
`
`to effectively expand its advertising space beyond the first site) is a claimed advance over the
`
`prior art. See Ex. B (’639 Patent File History) at 00003171 (the fact that “some of the resulting
`
`revenue,” from “the advertising delivered when the tagged visitor contacts the second site,” “is
`
`paid to the first site” is a “crucial feature [] missing from Roth (or the Engage system more
`
`generally)”); id. at 00003172 (“[C]rucially, nothing in Roth discloses or suggests paying some
`
`of the revenue to the previous sites visited by the viewer….”). Indeed, the applicant described
`
`the first site’s profit from advertisements displayed on other sites as a “significant advance”
`
`over the prior art, including art relied upon by Amazon. Id. at 00003174 (“Assignee here made a
`
`significant advance over Roth/Engage by ensuring that the site that tags the computers receives
`
`
`
`7
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 12 of 27
`
`payment for them, when the tags are used to display advertisements.”).1
`
`As AlmondNet’s expert explains, this claimed advance is roughly analogous to the
`
`technical innovation of “virtual memory” in computer systems, which virtually expands the
`
`amount of memory available to a computer system through a logical process that “allows an
`
`operating system to escape the limitations of physical RAM.” Frankovitz Rep. ¶411; see
`
`generally Ex. C (summarizing virtual memory technology). Just as virtual memory improves the
`
`functionality of a computer system, the inventions of the ’639 and ’586 Patents improve the
`
`functionality of a networked advertising system. Frankovitz Rep. ¶411.
`
`Ignoring this claimed advance over the prior art, Amazon wrongly contends that the
`
`claims are all directed to merely “receiving revenue from internet advertising targeted using
`
`user profile and website visit information.” Mot. at 9, 12. Indeed, Amazon’s expert admitted
`
`. See Ex. D (Hanson Dep.) 181:21-182:6
`
`
`
`
`
`
`
`
`
`. Amazon’s characterization, therefore, improperly “oversimplif[ies] the claims” in
`
`a manner that the Federal Circuit has cautioned against. See McRO, 837 F.3d at 1313; Ancora
`
`Techs., 908 F.3d at 1347 (“We examine the patent’s ‘claimed advance’ to determine whether the
`
`claims are directed to an abstract idea.”); Kononklijke, 942 F.3d at 1150 (“At step one of the
`
`Alice framework, we ‘look at the focus of the claimed advance over the prior art to determine if
`
`the claim’s character as a whole is directed to excluded subject matter.’”).
`
`1 The fact that the ability to allow a first site to profit from off-site advertisements being shown
`to its visitors was the claimed advance over the prior art was further confirmed by the Reasons
`for Allowance. Id. at 00002942 (“[T]he [prior art] references do not disclose… that the first site
`automatically receives revenue because the advertisement was displayed on the second site.”).
`
`
`
`
`8
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 13 of 27
`
`Amazon’s formulation of the alleged “abstract idea” is strikingly similar to the alleged
`
`“abstract idea” that the PTAB previously considered in Covered Business Method reviews:
`
`“securing revenue from advertising.” See Ex. E at 11 (denying CBM for failure to establish
`
`patent-ineligibility of the ’639 Patent). There, the PTAB held that “Petitioner has improperly
`
`omitted ‘offsite’ from what independent claim 1 [and claim 24] is ‘directed to.’” Id. at 16; see
`
`also Ex. F at 16 (same for the ’586 Patent). Of course, the “offsite” aspect of the claims reflects
`
`the claimed advance over the prior art, that the first site derives revenue from advertisements
`
`shown on a second site (i.e., “offsite”) by virtue of visitors having visited the first site.
`
`Amazon’s purported “abstract idea” fails for exactly the same reason that the petitioner’s
`
`previous challenges in the CBMs failed—it does not account for the claimed advance over the
`
`prior art, which is the first site’s ability to virtually expand its ad space and profit from offsite
`
`ads in the claimed manner, which the prior art does not demonstrate.
`
`Amazon’s additional arguments regarding Step One fail. First, Amazon alleges that the
`
`claims recite only results, and thus are patent-ineligible under the reasoning of Electric Power
`
`Group. Mot. at 10 (citing Elec. Power Grp., LLC, v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
`
`2016)). However, a cursory review of the claims makes clear that they do not merely cite
`
`results. For example, limitation 24(a) of the ’639 patent recites “computer-causing creation of
`
`electronic records of visitor computers that visit a first Internet site, using a tag on each of said
`
`visitor computers.” Thus, the claim does not recite merely the result of creating electronic
`
`records, but recites specific tools to create such records. Likewise, limitation 24(c) recites
`
`“direction of the advertisements to the visitor computers visiting a second [different] Internet
`
`site as a consequence of computer-determining, using the tags and said electronic records, that
`
`such visitor computers have visited the first Internet site.” And as a result of this specific
`
`process, the “proprietor of the first Internet site retains” revenue. ’639 Pat. at limitation 24(f).
`
`
`
`9
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 14 of 27
`
`The claims thus specify the use of “existing modules and technology” (such as tags) to allow a
`
`website to profit from ads placed offsite “in an unobvious way.” Id. at 3:17-29.
`
`This case is thus unlike Electric Power Group, where the claims “[m]erely requir[ed] the
`
`selection and manipulation of information,” with no specifics regarding how to perform that
`
`selection and manipulation. 830 F.3d at 1356. Indeed, that case recognized that “non-
`
`conventional and non-generic arrangement of known, conventional pieces” can render claims
`
`patent-eligible. Id. at 1355-56 (citing BASCOM, 827 F.3d at 1349–52).
`
`Second, Amazon states that “the patents simply take a common business model—
`
`referring overflow ads to a different site—and apply it in the context of internet advertising.”
`
`Mot. at 10-11; see also Mot. at 1 (characterizing the patented solution as placing “overflow ads”
`
`to “target a visitor on a website that cannot accommodate additional advertisements”).
`
`As an initial matter, the claims are not directed to “referring overflow ads to a different
`
`site,” as the claims do not recite or require “overflow ads.” Indeed, the Court has already
`
`considered and rejected Amazon’s argument in this respect.2 As such, “overflow ads” (i.e., ads
`
`resulting from saturation, or as Amazon states, when “a website [] cannot accommodate
`
`additional advertisements”) are not recited or required by the claims. Cf. Dkt. No. 134 at 5-6
`
`(requesting exclusion of non-infringement opinions rooted in this rejected reasoning).
`
`But even if the claims were directed to overflow ads, contrary to this Court’s prior
`
`holding, Amazon presents no evidence other than conclusory expert testimony that “referring
`
`overflow ads to a different site” was a “common business model” as of the priority of the
`
`asserted patents. See Mot. at 10 (citing Hanson Rep. ¶ 1049, simply parroting Amazon’s
`
`2 Dkt. 113 at 12 (describing Amazon’s contention “that the claimed invention is premised on the
`situation [where] the first Internet site becomes ‘saturated’ with advertisements, thus forcing
`advertisements that were sold for display on the first Internet site to instead be displayed on the
`second site”); id at 14 (“[W]ith respect to Amazon’s argument . . ., the Court disagrees. The
`claims do not require that the first Internet site is saturated with advertisements.”).
`
`
`
`10
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 15 of 27
`
`assertion without evidence). Indeed, AlmondNet’s expert testified to the contrary: “I am aware
`
`of no instances (and Dr. Hanson does not identify any in his patent eligibility analysis) of any
`
`entity ‘expanding advertising opportunities by referring overflow ads to a different site and
`
`receiving additional revenue as a result’ before the priority date of the ’639 Patent.” Frankovitz
`
`Rep. ¶412. Indeed, throughout the entirety Dr. Hanson’s invalidity report, he does not mention
`
`any examples of any prior art solution involving “referring overflow ads to a different site and
`
`receiving additional revenue as a result.” See generally Hanson Rep. ¶¶ 141, 1049, 1053, 1077
`
`(only four results for “overflow ads” in Dr. Hanson’s report, each discussing only what is
`
`described in the asserted patents themselves).
`
`Amazon further argues that “the patents provide no specific technical solution because
`
`the problem they purport to solve—saturation—is a non-technical problem that requires a non-
`
`technical, business solution.” Mot. at 10. According to Amazon, the “solution is a series of
`
`contracts between and among an agency and two websites.” Mot. at 10. Amazon’s theory,
`
`however, is again inconsistent with the claims, which do not recite or require “contracts
`
`between and among an agency and two websites.” Indeed, the prosecution history makes
`
`explicit that “a series of contracts” is not the focus of the claims. During prosecution, the
`
`examiner issued a restriction between two groups: “Group I” and “Group II.” Ex. B at
`
`00003332-33. The applicant responded by electing “Group I,” and provided amendments “to
`
`remove ‘contracting’ steps.” Id. at 00003319.3 Thus, Amazon’s characterization of the claims as
`
`simply “a series of contracts” (Mot. at 10) is inconsistent with both the applicant and examiner’s
`
`understanding of the invention as not being directed to “the act of entering into a contract.” Ex.
`
`B at 00003333.
`
`
`3 As the examiner clarified, “[w]hile the two entities disclosed in Group I may operate under a
`contract, the act of entering into a contract does not require that the method disclosed in Group I
`ever be performed.” Id. at 00003333 (emphasis added).
`
`
`
`11
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 180 Filed 09/14/23 Page 16 of 27
`
`Amazon additionally argues that “the Federal Circuit has consistently held claims
`
`directed to targeted advertising impermissibly abstract.” Mot. at 11-12 (citing Customedia and
`
`In re Morsa). While Amazon does not provide any serious analysis of the cases on which it relies,
`
`they are inapposite. Specifically, in Customedia, the patentee argued that “the claimed invention
`
`improves [a] data delivery system’s ability to store advertising data, transfer data at improved
`
`speeds and efficiencies, and prevent system inoperability.” Customedia Techs., LLC v. Dish
`
`Network Corp., 951 F.3d 1359, 1363 (Fed. Cir. 2020). At most, this represented an efficiency
`
`improvement to a conventional process of storing and transferring advertising data. Id. Likewise, in
`
`Morsa, the claims were “directed to the ‘fundamental economic practices long prevalent in our
`
`system of commerce.’” In re Morsa, 809 F. App’x 913, 916 (Fed. Cir. 2020). In contrast, the
`
`claimed advance of the ’639 and ’586 Patents does not merely make advertising more efficient, but
`
`fundamentally improves the functionality of a networked advertising system such that it is able to
`
`achieve results (such as the virtual expansion of ad space) that were not previously possible (much
`
`less “long prevalent”) under the prior art. See Frankovitz Rep. ¶¶411-13.
`
`Because Amazon has not shown that the claims of the ’639 and ’586 Patents are directed to
`
`an abstract idea, summary judgment must be denied.
`
`B.
`
`Step Two: The asserted claims provide an inventive concept.
`
`1.
`
`Amazon’s Motion relies on an incorrect legal standard.
`
`“[T]o the extent it is at issue in the case, whether a claim element or combination is
`
`well-understood, routine, and conventional is a question of fact. This inquiry falls under step
`
`two in the § 101 framework, in which we ‘consider the elements of each claim b