Case 6:21-cv-00898-ADA Document 224 Filed 11/02/23 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Civil Action No. 6:21-cv-00898-ADA
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`JURY TRIAL DEMANDED
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`))))))))))))
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`ALMONDNET, INC.,
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`Plaintiff,
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`v.
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`AMAZON.COM, INC., AMAZON.COM
`SERVICES LLC, and AMAZON WEB
`SERVICES, INC.,
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`Defendants.
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`DEFENDANTS’ NOTICE OF SUPPLEMENTAL AUTHORITY IN SUPPORT OF
`MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 101
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`Defendants Amazon.com, Inc. Amazon.com Services LLC, and Amazon Web Services,
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`Inc. respectfully notify the Court of the decision in KOM Software Inc. v. NetApp, Inc., No. 18-
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`CV-00160-WCB, 2023 WL 6460025 (D. Del. Oct. 4, 2023) that is relevant to Amazon’s Motion
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`for Summary Judgment of Invalidity under 35 U.S.C. § 101 (Dkt. 132), and issued after Amazon
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`filed its reply in support of the Motion on September 15, 2023 (Dkt. 189). A copy of the decision
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`is attached as Exhibit 1.
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`In KOM Software, Federal Circuit Judge William C. Bryson, sitting by designation in the
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`District of Delaware, held that patent claims were ineligible under 35 U.S.C. § 101 on a motion
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`for judgment on the pleadings. Relevant here, Judge Bryson reiterated the parties’ burdens at Alice
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`step two as follows:
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`To be sure, [the defendant] bears the burden of proof on its motion. However, when
`the defendant contends that the asserted claim lacks a plausible factual basis in the
`form of an inventive concept, the patent owner is required to respond with more
`than conclusory allegations of inventiveness. In that circumstance, the patent
`owner must make plausible and specific factual allegations that aspects of the
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`1
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`Case 6:21-cv-00898-ADA Document 224 Filed 11/02/23 Page 2 of 5
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`claims are inventive.
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`KOM Software, 2023 WL 6460025, at *10-11 (internal citations and quotation marks omitted).
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`Applying that standard to the case before him, Judge Bryson ruled that the patentee had not pro-
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`vided “an articulation of what the alleged inventive concept is or how it is embodied in the claims,”
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`or how the inventive concept is “described and enabled by the specification.” Id. at *11. Judge
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`Bryson also rejected the patentee’s conclusory argument that the claims are novel and generally
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`“represent an improvement over the prior art,” as “[t]hat is presumably true of all patent claims”
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`and “would eviscerate step two of Alice.” Id.
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`KOM Software is relevant to Amazon’s motion because it makes clear that the patentee
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`must come forward with its specific contentions regarding step two of Alice, including any ordered
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`combination arguments. Just like the patentee in KOM Software, AlmondNet’s step two arguments
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`focus on criticizing Amazon and its expert. Compare id., at *10 (patentee arguing that defendant
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`“has not pointed to any information in the specification or provided any expert testimony that the
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`claim limitations together were not inventive”) with Dkt. 160 at 13, 20 (AlmondNet arguing that
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`Amazon provides “no competent evidence” that the ordered combination is conventional). In other
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`words, AlmondNet simply argued that Amazon had failed to prove a negative while at the same
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`time ignored its burden to identify the alleged inventive concept. See KOM Software, 2023 WL
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`6460025, at *11 (“[W]hat is required is for the patentee to point to the alleged improvement, con-
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`sisting of an inventive concept that is embodied in the claims and described and enabled by the
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`specification.”).
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`The gist of AlmondNet’s argument at step two is thus that the ordered combination of claim
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`elements is inventive. But AlmondNet has identified nothing specific in the ordering of the ele-
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`ments that represents an unconventional solution. Instead, its expert Mr. Frankovitz opines that
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`the ’639 patent enables a new type of “virtual expansion of advertising space” (Dkt. 160 at 14) and
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`2
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`Case 6:21-cv-00898-ADA Document 224 Filed 11/02/23 Page 3 of 5
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`the ’139 patent is a new type of “expansion of advertising space an ad server can control” (id. at
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`21). But these assertions are not tied to any claim language. See KOM Software, 2023 WL
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`6460025, at *10 (“[T]he patent owner is required to respond with more than conclusory allegations
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`of inventiveness.”) In other words, AlmondNet merely contends that the claims as a whole are
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`new “as compared to the prior art at the time.” (Dkt. 160 at 15 n.5.) This is the wrong test: novelty
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`under Section 102 is not patent eligibility under Section 101. They are separate inquiries, and
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`merely alleging the claim as a whole is novel does not meet the patentee’s burden to identify an
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`inventive element or ordered combination of elements. KOM Software, 2023 WL 6460025, at *11
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`(“It is not sufficient to allege generally that the claims represent an improvement over the prior
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`art.”)
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`Therefore, AlmondNet’s step two argument fails as a matter of law, and the Court should
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`grant Amazon’s motion.
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`3
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`Case 6:21-cv-00898-ADA Document 224 Filed 11/02/23 Page 4 of 5
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`Dated: November 2, 2023
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`Of Counsel:
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`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
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`Respectfully submitted,
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`
`
`By: /s/ Todd R. Gregorian
`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
`FENWICK & WEST LLP
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`Case 6:21-cv-00898-ADA Document 224 Filed 11/02/23 Page 5 of 5
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`902 Broadway, 18th Floor
`New York, NY 10010
`Tel: (212) 921-2001
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`Counsel for Defendants
`AMAZON.COM, INC., AMAZON.COM SERVICES
`LLC, and AMAZON WEB SERVICES, INC.
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