Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 1 of 18
`
`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`ALMONDNET, INC.,
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC.; AMAZON.COM
`SERVICES LLC; and AMAZON WEB
`SERVICES, INC.,
`
`Defendants.
`
`Civil Action No. 6:21-cv-00898-ADA-DTG
`
`JURY TRIAL DEMANDED
`
`PUBIC VERSION
`
`AMAZON’S REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF
`INVALIDITY UNDER 35 U.S.C. § 101
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 2 of 18
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`THE ’639 PATENT CLAIMS ARE INELIGIBLE UNDER § 101 ....................................2
`
`A.
`
`B.
`
`These claims are directed to an abstract idea and do not improve
`the functionality of computer networks. ..................................................................2
`
`The claim elements are ordered in a logical manner to implement
`the abstract idea........................................................................................................5
`
`II.
`
`THE ’139 PATENT CLAIMS RECITE INELIGIBLE SUBJECT MATTER ...................8
`
`A.
`
`B.
`
`The ’139 patent claims are directed to an abstract idea and not a
`technological advance. .............................................................................................8
`
`The claims lack an inventive concept. ...................................................................10
`
`III.
`
`CONCLUSION ..................................................................................................................10
`
`
`
`
`
`
`i
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 3 of 18
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Affinity Labs of Texas, LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016)..............................................................................................3, 9
`
`Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016)..................................................................................................6
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)..........................................................................................2, 3, 7
`
`Bridge & Post, Inc. v. Verizon Commc’ns, Inc.,
`778 F. App’x 882 (Fed. Cir. 2019) ............................................................................................5
`
`Broadband iTV, Inc. v. Amazon.com, Inc.,
`No. 6:20-cv-00921-ADA, 2022 WL 4703425 (W.D. Tex. Sept. 30, 2022) ..............................6
`
`Chamberlain Grp., Inc. v. Techtronic Indus. Co.,
`935 F.3d 1341 (Fed. Cir. 2019)..................................................................................................6
`
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019)....................................................................................................3
`
`Customedia Techs., LLC v. Dish Network Corp.,
`951 F.3d 1359 (Fed. Cir. 2020)..................................................................................................5
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014). (Op. at 14–15.) ...................................................................7, 8
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)..................................................................................................5
`
`In re TLI Commc’ns LLC Pat. Litig.,
`823 F.3d 607 (Fed. Cir. 2016)....................................................................................................5
`
`PersonalWeb Techs. LLC v. Google LLC,
`8 F.4th 1310 (Fed. Cir. 2021) ..................................................................................................10
`
`SAP Am., Inc. v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018)..................................................................................................3
`
`Trinity Info Media, LLC v. Covalent, Inc.,
`72 F.4th 1355 (Fed. Cir. 2023) ..........................................................................................2, 3, 8
`
`ii
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 4 of 18
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page(s)
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014)....................................................................................................5
`
`Univ. of Fla. Rsch. Found., Inc. v. Gen. Elec. Co.,
`916 F.3d 1363 (Fed. Cir. 2019)..................................................................................................9
`
`USC IP P’ship, L.P. v. Facebook, Inc.,
`576 F. Supp. 3d 446 (W.D. Tex. 2021) ......................................................................................6
`
`
`
`
`iii
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 5 of 18
`
`TABLE OF DOCKET CITES
`
`
`Docket No. Description
`
`Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 101, filed
`August 23, 2023 (Mot.)
`Opening Expert Report of Dr. Ward Hanson regarding invalidity, served
`June 16, 2023 (Hanson)
`Excerpts from the deposition transcript of Roy Shkedi, taken April 20, 2023
`Excerpts from the deposition transcript of Jason Frankovitz, taken August
`11, 2023 (Frankovitz Dep.)
`Opposition to Defendants’ Motion for Summary Judgment of Invalidity
`Under 35 U.S.C. § 101, filed September 7, 2023 (Op.)
`Expert Report of Jason Frankovitz Regarding Validity, served July 28, 2023
`(Frankovitz)
`Excerpts from the deposition transcript of Ward Hanson, taken August 15,
`2023
`Decision Denying Institution of Covered Business Method Patent Review,
`Paper 8, in Case CBM2017-00046, dated October 16, 2017
`
`132
`
`137-16
`
`137-17
`
`137-18
`
`160
`
`161-1
`
`161-4
`
`161-5
`
`
`
`
`
`iv
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 6 of 18
`
`
`
`There are no genuine disputes of material fact—summary judgment that the asserted claims
`
`are ineligible under § 101 is thus warranted. Contrary to AlmondNet’s assertions, these claims are
`
`not directed to an Internet-centric problem. Rather, as both the ’6391 and ’139 patents admit, they
`
`address problems advertisers and print media have faced for over a century.
`
`The ’639 patent attempts to address limits on ad revenue due to space constraints for ads.
`
`Its claims purport to solve this non-Internet problem in the context of the Internet using what the
`
`patent admits were “known modules and technology,” including well known “tags”—e.g., cookies.
`
`These claims are ineligible because they do not improve the computers or computer networks.
`
`Instead, they recite using existing computers and networks as tools to implement the abstract idea
`
`at the heart of the claims—“receiving additional revenue from Internet advertising using profile
`
`and website visit information to expand advertising opportunities.”
`
`The ’139 patent fares no better. It also instructs the reader to use admittedly known
`
`technology (see Background of the Invention) to gather information about a visitor from their visit
`
`to a first website to determine whether to display an ad when the visitor visits a second website
`
`(for example, when a calculation determines that placing the ad will yield a profit—a business
`
`decision). Thus, AlmondNet fails to refute that the claims’ focus is “directing targeted
`
`advertisements to users on a second website based on profile information collected from a first
`
`website if a condition is met.”
`
`Nor can AlmondNet generate a material factual dispute at Alice Step 2. Its expert’s
`
`opinions are untethered to the claim language and belied by the patents’ admissions that the
`
`claimed abstract ideas are implemented using conventional technology.2
`
`
`1 Based on AlmondNet’s representation that it was dropping its infringement claims related to
`the ’586 patent from the case, Amazon does not individually address it here.
`2 As AlmondNet failed to address any dependent claims, (compare Mot. at 12 n.6, 16–17, 19
`
`1
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 7 of 18
`
`
`I.
`
`THE ’639 PATENT CLAIMS ARE INELIGIBLE UNDER § 101
`A.
`
`These claims are directed to an abstract idea and do not improve the
`functionality of computer networks.
`
`The asserted claims of the ’639 patent are directed to the abstract idea of receiving
`
`additional revenue from Internet advertising using profile and website visit information to expand
`
`advertising opportunities. (Dkt. 137-16 (Hanson) ¶¶ 1048–50.) It purports to address a non-
`
`technical problem—saturation (’639 patent, 2:52–54)—in the same non-technical way that the
`
`patent admits newspapers and magazines have in the past: the targeted placement of ads that do
`
`not fit in the first media on a second. (’639 patent, 2:29–30 (saturation previously addressed “by
`
`adding supplements to newspapers or magazines”).) Even though the claims are not limited to
`
`“saturation,” the problem this patent purports to solve is undeniably relevant to its non-technical
`
`focus. Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1363 (Fed. Cir. 2023). And
`
`Amazon’s articulation of the abstract idea does not require “saturation,” or “overflow ads,”
`
`rendering large swathes of the opposition irrelevant. (Op. at 1 (asserting that “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’”); id. at 10–11 (urging the Court to
`
`reject Amazon’s abstract idea because the claims do not require overflow ads or saturation).)3
`
`By contrast, AlmondNet’s assertion that the claims are directed to “the virtual expansion
`
`of a website’s advertising space in a way that improves the functionality of a networked advertising
`
`system,” (Op. at 6–8), finds no support in the patent. The claims never mention “virtual expansion”
`
`
`n.8, 22 with Op.), the Court may treat the independent claims as representative. See Berkheimer
`v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018).
`3 Amazon inadvertently provided a slightly different but substantially similar formulation of
`the abstract idea in its Motion. (See Mot. at 9, 12 (“receiving revenue from Internet advertising
`targeted using user profile and website visit information”).)
`
`2
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 8 of 18
`
`
`of anything. (’639 patent, claim 24.) And while the term “saturation” is repeated ad nauseam in
`
`the specification and file history, “virtual expansion” is nowhere to be found. The term is a
`
`marketing buzzword created by AlmondNet’s attorneys to oppose Amazon’s motion. It is not the
`
`focus of the claims. Trinity, 72 F.4th at 1363 (“Our focus is on the claims . . . .”); ChargePoint,
`
`Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019).
`
`Lacking any intrinsic support, AlmondNet relies on conclusory expert testimony that the
`
`claims recite an improvement to technology. But this simply an attempt to opine on the ultimate
`
`legal question at step one. Berkheimer, 881 F.3d at 1367. Specifically, AlmondNet draws an
`
`analogy between “the technical innovation of ‘virtual memory’” and what it deems a “virtual”
`
`expansion of advertising space. (Op. at 8.) But the only support it cites is its expert’s bare
`
`conclusion—without any supporting explanation—that the two are “roughly analogous.” (Dkt.
`
`161-1 (Frankovitz) ¶ 411).) The more apt analogy is the one described in the patent itself: using
`
`print media supplements or inserting additional messaging into credit card billing. (’639, 1:30-
`
`2:31.) The patent simply seeks to apply this concept on the Internet using admittedly “known
`
`modules and technology.” (’639 patent, 3:7–10.) In other words, by using existing computers and
`
`networks as tools, not improving them. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
`
`(Fed. Cir. 2018). Likewise, the statement that “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” is again based on pure ipse dixit. (Frankovitz ¶ 411.) And even if
`
`Mr. Frankovitz’s conclusory assertions are credited, there is still no explanation in the patent, much
`
`less in the claims, about how the use of admittedly conventional, “existing modules and
`
`technology,” (’639 patent, 3:22–29), provides any improvement to the functioning of a computer
`
`network. Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
`
`3
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 9 of 18
`
`
`(“There is nothing in [the asserted] claim [] that is directed to how to implement [the abstract idea].
`
`Rather, the claim is drawn to the idea itself.”) (emphasis in original).
`
`Even AlmondNet’s articulation of the supposed advance provided by these claims confirms
`
`they are non-technical. AlmondNet describes the claimed advance as “the ability of the first site
`
`to retain revenue from advertisements shown outside of the first site.” (Op. at 7 (emphasis added);
`
`see also id. (“Indeed, the applicant described the first site’s profit from advertisements displayed
`
`on other sites as a ‘significant advance’ over the prior art.”) (emphasis added).) AlmondNet is
`
`mistaken that Amazon failed to account for this purported advance, (Op. at 1, 7-94), as it falls
`
`squarely within “receiving additional revenue from Internet advertising using profile and website
`
`visit information to expand advertising opportunities.”
`
`Likewise, the PTAB’s analysis in a CBM institution decision for the ’639 patent confirmed
`
`the claims do not recite a “technological invention,” and that it is a “covered business method
`
`patent.” (Dkt. 161-5 at 8.) AlmondNet contends that the Board’s decision undermines Amazon’s
`
`position here because the Board ruled that the petitioner’s description of the claims as directed to
`
`“securing revenue from advertising” failed to account for the limitations “off-site,” “targeted,” and
`
`“Internet.” (Op. at 9 (citing Dkt. 161-5 at 11–16).) Yet Amazon’s description is narrowly tailored
`
`and accounts for all three concepts—i.e., that the advertising occurs “offsite,” is “targeted” (using
`
`profile and website visit information), and occurs over the Internet. (Hanson ¶ 1048 (stating the
`
`abstract idea as “receiving additional revenue from Internet advertising using profile and website
`
`visit information to expand advertising opportunities” (emphasis in original)); id. at ¶ 1049
`
`(“Expanding advertising opportunities by referring overflow ads to a different site . . . .”).)
`
`
`4 AlmondNet also criticizes Dr. Hanson for the same reasons. (Op. at 8, 17.) But Dr. Hanson’s
`skepticism that the Asserted Claims provide any advance over the prior art simply reflects his
`overall conclusions that the claims are invalid. (Dkt. 161-4 at 182:1–4, 184:17–19.)
`
`4
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 10 of 18
`
`
`
`AlmondNet’s remaining arguments lack merit. Amazon did not ignore individual claim
`
`limitations or oversimplify the claims. (Op. at 8.) Rather, it properly defines the “abstract idea at
`
`the heart” of the claims, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014),
`
`concluding that “their character as a whole is directed to excluded subject matter,” Enfish, LLC v.
`
`Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citations omitted). To the extent individual
`
`limitations vary or refine the idea, the court considers those at the second step of Alice. And the
`
`instruction to use conventional “tags,” “cookies,” or “electronic records,” does not change the
`
`result-oriented nature of these claims. (Op. at 9–10.) Invoking admittedly generic claim elements
`
`is never sufficient to save claims from abstraction. Bridge & Post, Inc. v. Verizon Commc’ns, Inc.,
`
`778 F. App’x 882 (Fed. Cir. 2019) (use of a “tag” insufficient to render claim non-abstract);
`
`Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1362–63 (Fed. Cir. 2020) (same
`
`for “advertising data storage”—i.e., “electronic [records]”).
`
`B.
`
`The claim elements are ordered in a logical manner to implement the
`abstract idea.
`
`While AlmondNet argues that step two is “predominantly” a question of fact, AlmondNet
`
`does not actually contest that the individual claim elements are conventional or offer evidence that
`
`creates a triable dispute. (Compare Mot. at 12–15 with Op. at 13–15.) The patent discloses using
`
`“generally existing, known modules and technology,” (’639 patent, 3:7–10), including a generic
`
`“computer,” “Internet site(s),” “tags,” and “electronic records,” (id., claim 24.). Mr. Shkedi, the
`
`inventor, confirmed that an important aspect of the patent was
`
`(Dkt. 137-17 at 39:23–40:15), and that he did not
`
`,
`
`
`
`, (id. at 45:9–46:1.) Because these “recited physical components
`
`behave exactly as expected according to their ordinary use” they cannot confer eligibility. In re
`
`TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 615 (Fed. Cir. 2016).
`
`5
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 11 of 18
`
`
`
`And AlmondNet’s ordered-combination arguments do not rebut Amazon’s showing.5 The
`
`Federal Circuit has made absolutely clear that claims do not recite an inventive concept where the
`
`steps “as an ordered combination add nothing to the [abstract idea] that is not already present when
`
`the steps are considered separately.” Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d
`
`1341, 1348–49 (Fed. Cir. 2019) (cleaned up). And is not enough to point to the entirety of the
`
`claim and argue that its ordered combination is novel. Id. Instead, the unconventional ordering of
`
`the claim must itself provide an inventive solution to the problem in the prior art. Bascom Glob.
`
`Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (inventive
`
`concept was “installation of a filtering tool at a specific location”) (emphasis added).
`
`Here, the ordering of steps logically flows from the abstract idea and cannot show an
`
`inventive concept, and AlmondNet makes precisely the argument that the Federal Circuit rejected.
`
`It relies on its expert’s opinions to argue the claim elements are not anticipated or combined in an
`
`obvious way. (Op. at 15 (citing Frankovitz ¶ 418 (“the prior art relied upon by Dr. Hanson does
`
`not disclose or render obvious any of the asserted claims”)).) But even if the claims were new and
`
`nonobvious—which Amazon disputes—that is not enough. Chamberlain, 935 F.3d at 1348–49.
`
`AlmondNet also argues that not all claim elements are necessary to implement the idea
`
`articulated by Amazon. (Op. at 13–14.) But the addition of allegedly superfluous steps does not
`
`provide an inventive concept where “claims merely reflect a sequence performed in a logical order
`
`dictated by the abstract idea.” USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp. 3d 446, 457
`
`(W.D. Tex. 2021); Broadband iTV, Inc. v. Amazon.com, Inc., No. 6:20-cv-00921-ADA, 2022 WL
`
`
`5 The opening brief recognized that Alice Step 2 may depend on underlying questions of fact,
`and thus Amazon does not rely on an incorrect legal standard as AlmondNet claims. (Op. at 12–
`13.) While AlmondNet may disagree that genuine factual disputes “rarely” occur in the context
`of § 101 determinations, that is not a “legal standard” Amazon applied, and AlmondNet has failed
`to identify a genuine factual dispute here.
`
`6
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 12 of 18
`
`
`4703425, at *17 (W.D. Tex. Sept. 30, 2022); see also Berkheimer, 881 F.3d at 1370. AlmondNet
`
`never explains how the ordered combination amounts to anything more than the abstract idea itself.
`
`Unable to cobble together any evidence that the elements combine in an unconventional
`
`way, AlmondNet attacks Amazon’s expert’s opinion. (Op. at 15.) Yet, given AlmondNet’s
`
`admissions, and its failure to provide any explanation of how the combination and ordering of
`
`conventional elements in the claim is itself a technological solution, Dr. Hanson’s testimony is
`
`unnecessary to carry Amazon’s burden. Even so, AlmondNet’s criticisms fail. Dr. Hanson’s
`
`conclusions on ordered combination, (Hanson ¶ 1094), follow his analysis of the individual claim
`
`elements, (id. ¶¶ 1055–93). Those dozens of preceding paragraphs thoroughly explain why there
`
`is nothing inventive about the individual claim elements and include discussion of prior art
`
`references that previously disclosed combinations of the elements. (E.g., id. ¶¶ 1059–1066
`
`(explaining that “tagging” and receiving revenue from targeted advertising were well known prior
`
`to the ’639 patent).) When read in context of Dr. Hanson’s overall analysis, his concluding
`
`paragraph—which adequately details the sequence of conventional steps he describes
`
`previously—are far from conclusory.6
`
`Finally, these claims are nothing like those ruled patent-eligible in DDR Holdings, LLC v.
`
`Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Op. at 14–15.) Those claims solved the
`
`Internet-centric problem of a visitor being taken away from host website when the visitor clicked
`
`on a hyperlink for a third party’s website, such as an advertisement. Id. at 1248. The claims solved
`
`this problem by causing the hyperlink to operate unconventionally, such that clicking resulted in a
`
`hybrid webpage that maintained the “look and feel” of the host website but displayed the product
`
`
`6 (Hanson ¶ 1094.) Notably, AlmondNet did not move for summary judgment of patent
`eligibility based on Dr. Hanson’s supposedly conclusory opinions.
`
`7
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 13 of 18
`
`
`information from the advertiser’s website. Id. at 1257. Whereas in DDR the lack of any analogous
`
`pre-Internet problem was key to the court’s holding, id. at 1257–58, here, the patent expressly
`
`confirms that it does not address an Internet-specific problem. Rather, it addresses the “financially
`
`limiting problem” of media “saturation,” (’639 patent, 2:25–27), which existed in “magazines and
`
`newspapers” long before the advent of the Internet, (id., 2:17–19; Hanson ¶ 140.) And whereas
`
`the DDR claim solved a technological problem by improving the operation of the hyperlink and
`
`web browsers, DDR Holdings, 773 F.3d at 1258, here, the claims use pre-existing “tags” or
`
`“cookies” in their conventional manner to identify visitors to different websites. (Dkt. 137-17 at
`
`45:9–46:1.) In other words, the patent “generically claim[s] ‘use of the Internet’ to perform an
`
`abstract business practice (with insignificant added activity).” DDR Holdings, 773 F.3d at 1258.
`
`II.
`
`THE ’139 PATENT CLAIMS RECITE INELIGIBLE SUBJECT MATTER
`A.
`
`The ’139 patent claims are directed to an abstract idea and not a
`technological advance.
`
`The asserted claims of the ’139 patent are directed to directing targeted advertisements to
`
`users on a second website based on profile information collected from a first website, if a condition
`
`is met. (Hanson ¶ 1125.) They recite no new means of collecting user profile information,
`
`determining whether a condition is met, or displaying ads. (Id. ¶ 1126.) The specification confirms
`
`that the underlying problem they purport to solve was placing an ad where the cost exceeded the
`
`expected return. (’139 patent, 6:1–8.) Although the patent’s description of the problem it is aiming
`
`to solve is relevant to § 101, Trinity, 72 F.4th at 1363, the abstract idea advanced by Amazon does
`
`not require “calculating profit for an ad placement,” and AlmondNet’s arguments premised on that
`
`incorrectly stated articulation should be rejected. (Op. at 2; id. at 17ؘ–18.)
`
`AlmondNet again advances a claim focus that is untethered to the claims and specification:
`
`“a method for an advertising network server to effectively expand its control over advertising
`
`8
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 14 of 18
`
`
`placements in a distributed manner, using third-party servers that the advertising network does not
`
`control, which third-party servers control advertising space on media properties that the ad network
`
`might not otherwise have access to.” (Op. at 16.; id. at 16–19.) Notably, AlmondNet does not cite
`
`any passage from the ’139 patent’s specification supporting that focus. Rather, it asserts that the
`
`claimed solution “expands the functionality of prior art ad servers,” (Op. at 16), but never explains
`
`how these claims do so. AlmondNet’s omissions are understandable because the Background of
`
`the Invention admits that technology involving ad servers placing advertisements in spaces on
`
`media properties controlled by third-party servers was already known but financially inefficient.
`
`(’139 patent, 5:19–6:8.) The claims relate to a business problem, not a technical one.
`
`AlmondNet points to claim elements that recite providing a third-party server a condition
`
`for display of an advertisement and authorizing the display, but this merely confirms the claims
`
`are results-oriented and lack implementation details. Affinity Labs, 838 F.3d at 1258. And stripped
`
`of the supposedly novel “control” element, the purported advance identified by AlmondNet—“the
`
`authorizing of a third-party system to display an ad subject to a visitor-specific condition,” (Op. at
`
`16, 17)—is virtually indistinguishable from Amazon’s articulation of the abstract idea, (Hanson ¶
`
`1125 (“directing targeted advertisements to users on a second website based on profile information
`
`collected from a first website if a condition is met”).)
`
`AlmondNet fails to distinguish these claims from those held abstract because they simply
`
`automate mental processes. Calculating expected profit falls within the scope of the claims, and
`
`AlmondNet does not dispute this process can be performed by humans. (Mot. at 19; Op. at 18–
`
`19.) And AlmondNet’s argument that humans cannot perform server-to-server communications
`
`ignores that this line of caselaw considers whether a process is being computer-automated. Univ.
`
`of Fla. Rsch. Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019).
`
`9
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 15 of 18
`
`
`
`B.
`
`The claims lack an inventive concept.
`
`AlmondNet argues two claim elements provide an inventive concept: “directing, to a third-
`
`party server computer controlling advertising space, indicia of a condition for display of an
`
`advertisement, which condition relates specifically to an electronic visitor,” (Op. at 19), and
`
`“automatically electronically authorizing the [third-party] server computer to automatically cause
`
`display of an advertisement . . ., subject to determining that the condition [which relates
`
`specifically to an electronic visitor] has been met.” (Op. at 20.) But these limitations simply restate
`
`the abstract idea and cannot provide an inventive concept at Alice Step 2. PersonalWeb Techs.
`
`LLC v. Google LLC, 8 F.4th 1310, 1318 (Fed. Cir. 2021).7
`
`And AlmondNet again has no rebuttal to Amazon’s arguments about the conventionality
`
`of the ordered combination of claim elements. (Op. at 20–21.) Its attacks on Dr. Hanson fail for
`
`the same reasons they do for the ’639 patent—AlmondNet ignores the extensive analysis preceding
`
`Dr. Hanson’s concluding paragraph on ordered combination. (Hanson ¶¶ 1132–62.) And
`
`AlmondNet’s reliance on Mr. Frankovitz does not save these claims for two reasons. First, Mr.
`
`Frankovitz improperly cites the abstract idea the claims are directed to as the inventive concept.
`
`(Op. at 21 (citing Frankovitz ¶ 450).) Second, Mr. Frankovitz’s is incorrect that these claims
`
`address an Internet-centric problem. (Id.) He provides no support for that opinion, (id. ¶ 451),
`
`which is contradicted by the patent’s repeated description of the underlying goal of placing
`
`advertisements when profitable—a business practice. (’139 patent, Abstract, 1:20–24.)
`
`III. CONCLUSION
`
`Amazon requests that the Court grant summary judgment of ineligibility under § 101.
`
`
`7 Any ambiguity about whether Mr. Frankovitz disclaimed relying on individual claim
`elements at Alice Step 2 arose from his choice to provide a misleading response to a simple and
`direct question. (Dkt. 137-18 at 156:5–16.)
`
`10
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 16 of 18
`
`
`
`Dated: September 15, 2023
`
`
`
`
`Of Counsel:
`
`Deron R. Dacus (TX Bar #00790553)
`ddacus@dacusfirm.com
`THE DACUS FIRM, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Tel: (903) 705-1117
`Fax: (903) 581-2543
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Ravi R. Ranganath
`
`J. David Hadden (CA Bar No. 176148)
`Email: dhadden@fenwick.com
`Saina S. Shamilov (CA Bar No. 215636)
`Email: sshamilov@fenwick.com
`Ravi R. Ranganath (CA Bar No. 272981)
`Email: rranganath@fenwick.com
`Johnson K. Kuncheria (TX Bar No. 24070092)
`Email: jkuncheria@fenwick.com
`Johnathan L. Chai (CA Bar No. 339315)
`Email: jchai@fenwick.com
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Tel: (650) 988-8500
`Fax: (650) 938-5200
`
`Todd R. Gregorian (CA Bar No. 236096)
`Email: tgregorian@fenwick.com
`Eric B. Young, (CA Bar No. 318754)
`Email: eyoung@fenwick.com
`Dargaye Churnet (Admitted Pro Hac Vice)
`Email: dchurnet@fenwick.com
`Christopher L. Larson (CA Bar No. 308247)
`Email: clarson@fenwick.com
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Tel: (415) 875-2300
`
`Jeffrey A. Ware (WA Bar No. 43779)
`Email: jware@fenwick.com
`FENWICK & WEST LLP
`401 Union Street, 5th Floor
`Seattle, WA 98101
`Tel: (206) 389-4510
`
`James S. Trainor (Admitted Pro Hac Vice)
`Email: jtrainor@fenwick.com
`Jessica Lin (NY Bar No. 5035860)
`Email: jessica.lin@fenwick.com
`Eric Menist (NY Bar No. 5721568)
`Email: emenist@fenwick.com
`
`11
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 17 of 18
`
`
`
`FENWICK & WEST LLP
`902 Broadway, 18th Floor
`New York, NY 10010
`Tel: (212) 921-2001
`
`Counsel for Defendants
`AMAZON.COM, INC., AMAZON.COM SERVICES
`LLC, and AMAZON WEB SERVICES, INC.
`
`
`
`12
`
`

`

`Case 6:21-cv-00898-ADA Document 206 Filed 09/21/23 Page 18 of 18
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that all counsel of record who are deemed to have consented to electronic
`
`service are being served with a true and correct copy of this document on September 15, 2023 via
`
`the Court’s CM/ECF system per Local Rule CV 5(a)(3) and that this document was served via
`
`email on all counsel of record. Additionally, this document and the attachments thereto were
`
`served via email on all counsel of record.
`
`/s/ Ravi R. Ranganath
`Ravi R. Ranganath
`
`
`
`
`
`
`
`13
`
`