Case 6:21-cv-00898-ADA Document 225 Filed 11/09/23 Page 1 of 5
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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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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`Case No. 6:21-cv-00898-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF’S RESPONSE TO DEFENDANTS’
`NOTICE OF SUPPLEMENTAL AUTHORITY
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`Case 6:21-cv-00898-ADA Document 225 Filed 11/09/23 Page 2 of 5
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`Amazon’s notice of supplemental authority (Dkt. 224) cites KOM Software Inc. v.
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`NetApp, Inc for the proposition that in responding to a motion for judgment under 35 U.S.C.
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`§ 101, “the patent owner must make plausible and specific factual allegations that aspects of the
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`claims are inventive.” No. 18-CV-00160-WCB, 2023 WL 6460025, at *10-11 (D. Del. Oct. 4,
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`2023). But KOM Software makes clear that AlmondNet has met any applicable Alice step two
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`burden here. This is because AlmondNet has made plausible and specific factual allegations that
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`aspects of the asserted claims of the ’639 and ’139 Patents are inventive. For example:
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`• AlmondNet addressed “method claim 24 of the ’639 Patent” and explained
`that the solution recited in that claim “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,” such that it 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.” See
`Dkt. 160 at 5 (citing ’639 Pat. at Claim 24 & 10:64-11:6; Ex. A (Frankovitz
`Rep.) ¶¶ 411, 424).
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`• AlmondNet addressed “claim 37” of the ’139 Patent and explained that due to
`the claim’s recitation of authorizing a third-party server computer to cause
`display of an advertisement, “the asserted claims . . . recite a particular
`technique of 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.” Dkt. 160 at 6 (citing ’139
`Pat. at Claim 37; Frankovitz Rep. ¶¶ 436, 439).
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`In response to this showing, Amazon failed to present any contrary evidence.
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`Further, Amazon wrongly contends that the inventive concepts identified by AlmondNet
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`“are not tied to any claim language.” Dkt. 224 at 3. Indeed, AlmondNet explicitly addressed the
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`inventive concepts in the context of the claim requirements and provided extensive expert
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`testimony explaining why the claims result in the inventive concepts it identified. See Dkt. 160
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`at 5-6; id. at 7-8 (reciting file history explaining the claim language that provided the
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`“significant advance” over the prior art); id. at 19-20 (reciting specific claim limitations that
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`Case 6:21-cv-00898-ADA Document 225 Filed 11/09/23 Page 3 of 5
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`were not conventional). And AlmondNet’s expert evidence makes clear that the inventive
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`concepts are derived from the claims themselves. See, e.g., Frankovitz Rep. ¶ 411 (explaining
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`how the ’639 Patent “claims” should be understood as providing for a virtual expansion of ad
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`space); id. at ¶ 417 (explaining that “the claims specify precisely how the revenue is
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`apportioned, in a way that allows the first site to profit from a virtual expansion of its
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`advertising space”); id. at ¶ 439 (explaining how the ’139 Patent “claims” should be understood
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`as allowing for “distributed, effective expansion of an ad network’s system through the novel
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`use of third-party server computers”); id. at ¶ 443 (explaining how at least “limitation 37(a) of
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`the ’139 Patent . . . allows for an effective expansion of an advertising server’s control over
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`advertising placements, using servers that the advertising network doesn’t control”). Again,
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`Amazon cites no contrary evidence.
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`In sum, this is not a case like KOM Software, in which plaintiff did “not provide” any
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`“articulation of what the alleged inventive concept is or how it is embodied in the claims,” and
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`instead merely “allege[d] generally that the claims represent an [unspecified] improvement over
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`the prior art.” KOM Software, 2023 WL 6460025, at *11. Here, in sharp contrast, AlmondNet
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`provided extensive descriptions (supported by unrebutted expert testimony) of the inventive
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`concepts and how they are embodied in the claims. At a minimum, there is a genuine dispute of
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`material fact as to the “inventive concept” issue.
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`Accordingly, and for the reasons in AlmondNet’s response brief, Amazon’s motion for
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`summary judgment under 35 U.S.C. § 101 (Dkt. 132) should be denied.
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`Date: November 9, 2023
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`Respectfully submitted,
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`By: /s/ Reza Mirzaie
`Reza Mirzaie
`Marc A. Fenster
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`Case 6:21-cv-00898-ADA Document 225 Filed 11/09/23 Page 4 of 5
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`Benjamin T. Wang
`Adam Hoffman
`James A. Milkey
`Amy E. Hayden
`James S. Tsuei
`Jonathan Ma
`Daniel B. Kolko
`Jason M. Wietholter
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Tel: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`bwang@raklaw.com
`ahoffman@raklaw.com
`jmilkey@raklaw.com
`ahayden@raklaw.com
`jtsuei@raklaw.com
`jma@raklaw.com
`dkolko@raklaw.com
`jwietholter@raklaw.com
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`Counsel for Plaintiff AlmondNet, Inc.
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`Case 6:21-cv-00898-ADA Document 225 Filed 11/09/23 Page 5 of 5
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that on November 9, 2023, all counsel of record who have appeared in this case are being served
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`with a copy of the foregoing via the Court’s CM/ECF system.
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`/s/ Reza Mirzaie
`Reza Mirzaie
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