Case 3:22-cv-00412-RSH-DDL Document 22 Filed 06/17/22 PageID.630 Page 1 of 12
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`MICHAEL J. SACKSTEDER (CSB No. 191605)
`msacksteder@fenwick.com
`SHANNON E. TURNER (CSB No. 310121)
`sturner@fenwick.com
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
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`JENNIFER R. BUSH (CSB No. 229370)
`jbush@fenwick.com
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
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`Attorneys for Defendant
`INTUIT INC.
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`Samesurf, Inc.,
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`v.
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`Intuit Inc.,
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`FENWICK & WEST LLP
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`SAN DIEGO DIVISION
`)
`Case No.: 3:22-cv-00412-LL-KSC
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`DEFENDANT INTUIT INC.’S
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`REPLY IN SUPPORT OF ITS
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`MOTION TO DISMISS
`PURSUANT TO RULE 12(b)(6)
`Hearing Date: June 27, 2022
`PER CHAMBERS RULES, NO
`ORAL ARGUMENT UNLESS
`SEPARATELY ORDERED BY
`THE COURT
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`Judge: Hon. Linda Lopez
`Courtroom: 2B
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`Plaintiff,
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`Defendant.
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`))))))))))))
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`INTUIT’S REPLY IN SUPP. OF ITS MOTION TO DISMISS
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`Like many before them, the asserted patents in this case recite nothing more
`than a computer-implemented mechanism for performing actions long performed by
`human beings outside the digital realm. Courts routinely find such patents invalid
`under § 101 of the Patent Act. Samesurf’s Opposition identifies no convincing basis
`for any different outcome.
`I.
`’591 Patent Claim 1 is Representative of all Asserted Claims
`Contrary to Samesurf’s assertion, Intuit has established that claim 1 of the ’591
`patent is representative of all asserted claims. Although Samesurf incorrectly argues
`that Intuit was required to “separately address each Asserted Claim with respect to
`patentable subject matter under § 101,” Opp. at 12, Federal Circuit precedent contains
`no such requirement. Rather, a representative claim forms an appropriate basis for a
`§ 101 analysis when all asserted claims are “substantially similar and linked to the
`same abstract idea.” Content Extraction & Transmission LLC v. Wells Fargo Bank,
`Nat'l Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (citation omitted). The claims of
`related patents with “substantially the same specification”—such as those here—are
`representative across all of the patents and are therefore appropriate for subject-
`matter analysis based on a representative claim. See Two-Way Media Ltd. v. Comcast
`Cable Commc’ns, LLC, 874 F.3d 1329, 1333 (Fed. Cir. 2017).
`Following this precedent, Intuit has made a prima facie showing that claim 1
`of the ’591 patent is representative. In its opening brief, Intuit describes in detail how
`this claim is very similar in scope to the other asserted independent claims and recites
`the same basic, abstract steps as those claims: (1) sending a request by a first device
`to join a synchronized browsing session; (2) receiving information at a second device
`about the website content accessed; and (3) accessing the website content by the
`second device for synchronizing the session. See Mot. at 3-4. As for the asserted
`dependent claims, Samesurf effectively ignores an entire section of Intuit’s opening
`brief explaining how those claims are directed to the same abstract idea and fail to
`add any inventive step. See Mot., § III(D) at 21-23.
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`Because Intuit has shown that claim 1 of the ’591 patent is representative, “the
`burden shifts to the plaintiff to identify limitations that are present in the asserted
`claims but that are not represented by the allegedly representative claim.” PPS Data,
`LLC v. Jack Henry & Ass., Inc., 404 F. Supp. 3d 1021, 1031-32 (E.D. Tex.
`Sept. 2019). Samesurf fails to satisfy this burden because it presents no “meaningful
`argument for the distinctive significance of any claim limitations not found in the
`representative claim.” Quad City Pat., LLC v. Zoosk, Inc., 498 F. Supp. 3d 1178,
`1184 (N.D. Cal. 2020) (quoting Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed.
`Cir. 2018)). Indeed, Samesurf has not identified any differences between claim 1 of
`the ’591 patent and the remaining claims that would affect the § 101 analysis.
`Instead, Samesurf makes the untenable argument that claim 1 of the ’591
`patent is not representative of any other asserted claim, even the other independent
`claim of the ’591 patent. See Opp. at 11. This assertion strains credulity. The only
`differences between claim 1 of the ’591 patent and the remaining asserted claims that
`Samesurf does raise are the addition of a “session identifier” and the distinction
`between “shared” and “non-shared” web browsing interactions. See Opp. at 11. But
`Intuit specifically addressed
`these purported differences—which are not
`meaningful—in Section III(D) of its opening brief, noting that session identifiers and
`web browser windows are conventional computer and Internet tools required to carry
`out the abstract sending and receiving of information for simultaneous interaction,
`and that such tools cannot save the claims from ineligibility. See Mot. at 22-23.
`Moreover, the abstract idea need not cover every claim limitation. See Ultramercial,
`Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (although there were additional
`limitations in the claim, “the concept embodied by the majority of the limitations
`describes only” an abstract idea); accord Trading Techs. Int'l, Inc. v. IBG LLC, 921
`F.3d 1084, 1092-93 (Fed. Cir. 2019). The shared specification of all three patents
`discloses that the purported invention does in fact include these requirements. For
`the session identifier, the specification describes in conjunction with FIG. 3 that the
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`request to join—which is recited in the second limitation of claim 1 of the ’591
`patent—includes the session identifier: “Finally, in step 306, guest device 14
`transmits request to join 43 to synchronization server 13, including session identifier
`19.” ’591 patent, 14:23-25 (emphasis added); FIG. 3 (step 306). Likewise, with
`respect to the shareability of the web browsing interaction,1 claim 1 of the ’591 patent
`recites “detecting an activation of a hyperlink associated with the synchronized
`browsing session.” The hyperlink is only created for sharable browsing windows, so
`the existence of the hyperlink associated with the synchronized browsing session in
`the claim indicates that the content is shared. See, e.g., ’591 patent, 8:8-15 (describing
`shared browsing window). Thus, Samesurf’s purported distinctions among the
`asserted claims are not distinctions at all. Accordingly, the patent-ineligibility of all
`asserted claims can be determined based on an analysis of claim 1 of the ’591 patent.
`II.
`Intuit Met its Burden to Show the Claims are Abstract
`Samesurf spends almost 10 pages of its opposition attempting to rebut Intuit’s
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`showing that the asserted claims are directed to an abstract idea. In that space,
`Samesurf never really disputes the abstract idea embodied in the claims—sending
`and receiving information for simultaneous interaction—and never mentions it
`beyond merely reciting it one time. See Opp. at 12. Instead, Samesurf attempts to
`downplay Intuit’s analogies and goes on at length about the purported benefits of the
`claimed technique. See, e.g., id. at 13, 15, 17-20. But the proper focus of Alice Step
`1 is the invention as claimed. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759,
`769 (Fed. Cir. 2019). That language shows that the claims are not patent-eligible.
`Intuit’s proposed abstract idea closely tracks the claims’ text. The claim
`language
`repeatedly
`recites “sending” and “receiving”
`information, and
`simultaneously interacting via a “synchronized browsing session,” and other
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`1 This limitation is recited only in claim 1 of the ’448 patent; it is not recited in
`claim 1 of the ’145 patent.
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`formulations of the same ideas. See, e.g., Mot. at 7 n. 2 (identifying the sending,
`receiving, and simultaneous interaction focus in the claims). These are the core steps
`required to practice the invention as claimed (e.g.: (1) sending a request by a first
`device to join a synchronized browsing session; (2) receiving information at a second
`device about the website content accessed; and (3) accessing the website content by
`the second device for synchronizing the session). See Mot. at 7-16.
`As discussed in Intuit’s Motion, courts have correctly found claims directed to
`analogous techniques for collaborative web browsing and screen sharing to be
`abstract. See Mot. at 7-10 (discussing Pragmatus, Williamson, and other cases).
`Lacking a substantive basis to rebut these cases, Samesurf instead belittles them on
`procedural grounds. See Opp. at 17-18. But district court cases such as Pragmatus
`are still persuasive, and the Federal Circuit’s affirmance of Williamson without
`opinion is meaningful even if not precedential. Rule 36 of the Federal Circuit’s Rules
`of Practice permits a per curiam judgment of affirmance without opinion when “the
`record supports summary judgment….” Fed. Cir. R. App. Proc. 36(a)(3). In
`Williamson, the only issue the district court addressed on summary judgment was
`ineligibility under § 101, and since the district court found the claims ineligible, there
`can be no question that they were found to be directed to an abstract idea as a matter
`of law. In order to affirm, the Federal Circuit must have agreed.2
`The cases upon which Samesurf relies, by contrast, relate to improvements
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`2 Samesurf also complains fruitlessly about Intuit’s reliance on “unpublished, non-
`precedential opinions” of the Federal Circuit. See Opp. at 18. But the Federal
`Circuit’s rules do not prohibit citation to such opinions. See Fed. Cir. R. App. Proc.
`32.1(c). While the Federal Circuit treats such opinions as persuasive, rather than
`binding, it does not restrict other courts in their treatment of them. See id. at Rule
`32.1(d). Regardless of whether their precedential value is binding or precedential,
`these opinions reveal the thinking of the Federal Circuit on a relevant issue.
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`made directly to physical devices or to ephemeral objects that could only be used by
`computers. Here, assuming the claims improve information exchange and security,
`these improvements are only tethered to the human activity of exchanging and
`simultaneously sharing information. See Trading Techs. Int'l, Inc., 921 F.3d at 1090
`(finding the alleged efficiency improvements only made the user’s actions more
`efficient). And the mere use of computers in this process does not make the claim
`patent eligible. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055
`(Fed. Cir. 2017); see Univ. of Fla. Rsch. Found., Inc. v. Gen. Elec. Co., 916 F.3d
`1363, 1367 (Fed. Cir. 2019) (holding that “automation” of “pen and paper
`methodologies” is a “quintessential ‘do it on a computer’ patent” and does not make
`an idea less abstract under Alice Step 1 (citation omitted)). The asserted claims do
`not improve the generic server or computer devices themselves.
`Samesurf cannot overcome Intuit’s precedent or bolster its own by relying on
`the claimed “synchronization server.” At best, this server constitutes a device in the
`middle to facilitate the simultaneous interaction in which information is sent and
`received. Use of a computerized intermediary has repeatedly been found to be
`abstract. See Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208, 221-26 (2014);
`see also Credit Acceptance Corp., 859 F.3d at 1055; Univ. of Fla. Rsch. Found., Inc.,
`916 F.3d at 1367. Here, the synchronization server is nothing more than the overhead
`projector that allows multiple individuals to collaborate on the same content.
`Samesurf effectively concedes this fact when it asserts that “communications
`by a host and a guest device are managed by the synchronization server, such that the
`same data … is shared with the guest device so that the host device and the guest
`device can engage in a ‘synchronized browsing session.’” Opp. at 21. That
`management function merely facilitates sending and receiving information to permit
`simultaneous interaction.
`Nor can Samesurf rely on the specification’s discussion of the synchronization
`server. The specification discloses that the synchronization server merely processes
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`data and “takes information from the host device and informs the guest device so that
`it may interact directly with” a website. Opp. at 14. In other words, it sends and
`receives data to facilitate human interaction on a page. This is, of course, the claims’
`abstract idea. The Supreme Court and Federal Circuit have repeatedly held that
`claims cannot merely take an abstract idea (here sharing and collaborating on
`information) and use a computer to carry out the abstract idea (here the
`synchronization server). See Alice, 573 U.S. at 221-26; Credit Acceptance Corp.,
`859 F.3d at 1055; Univ. of Fla. Rsch. Found., Inc., 916 F.3d at 1367.
`Left without a mechanism within the claims themselves for preserving them,
`Samesurf tries to refocus on the purported benefits of the recited technique in
`bandwidth and security.3 But again, Samesurf’s opposition contains no real
`explanation for how the claims create these effects. For example, regarding security,
`Samesurf does little more than mention a distinction between “shared” and “non-
`shared” interactions and browser windows. See Opp. at 15-16. But the claims
`purported to implement this shared vs. non-shared distinction merely recite
`tautologies in which, for example, “shared user input web browsing interactions” are
`depicted in “a shared web browsing window,” while “non-shared web browsing
`interactions are depicted in a non-shared web browser window.” See, e.g., ’145
`patent, claims 14, 18. They could just have easily said that shared documents are
`shown on the overhead projector, while non-shared documents are kept in a sealed
`envelope.
`Even assuming the claims solved issues with bandwidth usage and security,
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`3 Samesurf admits only certain claims are directed to improved security. See Opp. at
`15 (“Asserted Claims 6, and 15-16 of the ’591 Patent; Asserted Claims 5, 14, and 16-
`17 of the ’145 Patent; and Asserted Claims 1-4, 6-8, 11-14, and 16 of the ’448
`Patent.”). Arguments regarding improved security do not apply to the other claims.
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`these are only the claims’ desired results, not their focus. Such hoped-for results
`cannot rescue a claim’s eligibility separate from the claims. See ChargePoint, Inc.,
`Inc., 920 F.3d at 769; cf. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356
`(Fed. Cir. 2016) (“the essentially result-focused, functional character of claim
`language has been a frequent feature of claims held ineligible under § 101.”).
`Nowhere does the claim language recite the words “bandwidth” or “security.”
`Samesurf’s alleged focus is far from the actual claim language; and the focus cannot
`be imported from the specification. See The Chamberlain Grp., Inc. v. Techtronic
`Indus. Co., 935 F.3d 1341, 1346 (Fed. Cir. 2019). Furthermore, “even if the idea is
`novel and non-obvious—[it] is not enough to save it from ineligibility.” Solutran,
`Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019).
`Finally, Samesurf asserts without proper support that the synchronization
`server’s use of a URL and cookie information, and “operating a browser by the guest
`device based on the data received from the synchronization server,” is how claim 1
`of the ʼ591 patent reduces the use of bandwidth. Opp. at 21 (citing ’591 patent at
`2:23-36). But this argument is unavailing for multiple reasons. First, this use of URL
`and cookies limitation is not recited in the independent claims of the ’448 or ’145
`patents. Therefore, the ’448 and ’145 patents receive no benefit from this argument.
`Second, the claims’ text, which guides the inquiry, makes no mention of reduced
`bandwidth or improved operation, or how the use of a URL and cookies, and
`“operating a browser by the guest device based on the data received from the
`synchronization server” could achieve this alleged improvement. Third, the passage
`from the specification upon which Samesurf relies (’591 patent at 2:23-36) describes
`only the drawbacks in bandwidth usage and security in the prior art. It makes no
`mention of the patented technique’s use of URLs, cookies, browsers, guest devices,
`host devices, synchronization servers, or anything else relevant to the claims.
`Accordingly, Samesurf’s alleged “how” is still lacking.
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`III. The Asserted Claims Do Not Recite an Inventive Step
`The asserted claims do not include any inventive concept sufficient to
`transform the claimed abstract idea into a patent-eligible application. Alice, 573 U.S.
`at 221. Samesurf alleges three possibilities, none of which rises to the level of an
`inventive concept: (1) URL and cookie information associated with the website and
`the host device (Opp. at 23); (2) operating a browser by the guest device based on the
`data received from the synchronization server (Opp. at 23); and (3) a synchronization
`server that takes web interaction data from the host device and applies it at the guest
`device (Opp. at 24). Nor are these concepts recited in all asserted independent claims.
`Concepts (1) and (2) are recited only in the claims of the ’591 patent. Thus, the first
`two have no bearing on the analysis regarding the ’145 or ’448 patents.
`Since these concepts are part of the asserted abstract idea of the claims, they
`are irrelevant to the Alice Step 2 analysis. As discussed in the previous section,
`Samesurf pointed to each of these limitations in its unsuccessful attempt to rebut
`Intuit’s showing of an abstract idea in the Step 1 analysis. But such limitations are
`not relevant to step 2 of the Alice analysis. Step 2 considers whether elements
`additional to what a claim is “directed to” transform the nature of the claim into a
`patent-eligible application. Alice, 573 U.S. at 217-218. Thus, the Court should
`consider only any additional elements beyond those included in the abstract idea. Id.
`Even when these additional limitations are fully considered in the context of
`the claim as a whole, they are nothing more than well-understood, routine, and
`conventional steps or components that fail to rescue the claims from ineligibility.
`Operating a browser based on information received and receipt of URL and cookie
`information have been ubiquitous since the dawn of Web browsing. See, e.g., ’591
`patent at 1:47-49 (noting that browsing is common); see also prior art listed on the
`patents’ faces, e.g., U.S. Pat. Pub. 2006/0129641 at [0009] (“Cookies reside on each
`user's local computer to be used as personal identifiers sent together with a Uniform
`Resource Locator (URL) requests.”); U.S. Pat. Pub. 2005/0097107 at [0005]
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`(disclosing use of URLs and cookies); U.S. Pat. Pub. 2005/0138122 at [0033] (“The
`device-session can be created by any prior art session handling procedure like URL
`rewriting or use of cookies.”); U.S. Pat. Pub. 2009/0241037 at [0020] (using URLs
`and cookies in co-browsing). Likewise, the specification admits the synchronization
`server is conventional. See Mot. at 17 (citing ’591 patent at 6:3-21, 9:20-31).
`Nor can Berkheimer rescue the claims here. “[N]ot every § 101 determination
`contains genuine disputes over the underlying facts material to the § 101 inquiry.”
`Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Although Berkheimer
`is often cited for the proposition that Step 2 of the Alice framework can sometimes
`raise a fact issue, the Federal Circuit held that some of the claims at issue did not
`raise such a fact question. The Berkheimer court found two conditions in which no
`genuine factual dispute may exist: when improvements in the specification are not
`captured in the claims and when the specification or patent owner admits that the
`alleged inventive concepts are conventional. 881 F.3d at 1367-69 (affirming finding
`of ineligibility as to claims 1-3 and 9). Both examples from Berkheimer showing a
`lack of factual dispute are present here. First, Samesurf admits, at minimum for the
`independent claims of the ’145 and ’448 patents, that the “improvements in the
`specification” are not “captured in the claims.” Berkheimer, 881 F.3d at 1369.
`Further, as noted above, the specification admits that browsing is common and the
`synchronization server is a conventional device.
`Nor can result-oriented functional claiming of activities performed by general
`purpose computers save the claims. See Affinity Labs of Tex., LLC v. DIRECTV,
`LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“The patent in this case is not directed
`to the solution of a ‘technological problem’. . . . Instead, it claims the general concept
`of out-of-region delivery of broadcast content through the use of conventional
`devices, without offering any technological means of effecting that concept.”).
`Samesurf argues that the synchronization server—an admitted generic computer—
`performs actions “that are required by the Asserted Claims to conduct a
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`synchronization browsing session between a guest and a host device.” Opp. at 24.
`The Federal Circuit and Supreme Court have specifically rejected the idea that an
`otherwise ineligible algorithm or software could be made patent-eligible by merely
`adding a generic computer to the claim for the special purpose of executing the
`algorithm or software. See, e.g., Eon Corp. IP Holdings LLC v. AT&T Mobility LLC,
`785 F.3d 616, 623 (Fed. Cir. 2015).
`Samesurf’s analogy
`to BASCOM’s “non-conventional and non-generic
`arrangement of known conventional pieces” (Opp. at 24-25) also is misplaced. In
`BASCOM, the Federal Circuit found that the claims at issue contained an inventive
`arrangement of elements through “the installation of a filtering tool at a specific
`location, remote from the end-users, with customizable filtering features specific to
`each end user,” which solved a problem in the prior art. BASCOM Global Internet
`Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (emphasis
`added). Here, the physical components are arranged in the conventional way a server
`communicates with generic (host and guest) devices.
`Samesurf also conflates the different considerations of inventive concept and
`novelty in its analysis, arguing that because the synchronization server allegedly
`“provides a novel way of co-browsing the Internet,” the claims “possess an inventive
`concept.” Opp. at 24. But novelty is not dispositive; “even if the idea is novel and
`non-obvious—[it] is not enough to save it from ineligibility.” Solutran, Inc., 931
`F.3d at 1169.
`IV. CONCLUSION
`
`Nothing in Samesurf’s Opposition changes the relevant facts. The claims of the
`asserted patents are directed toward an abstract idea, and they contain no additional
`inventive concept to save them from invalidity. Accordingly, Intuit respectfully asks
`the Court to find the patents invalid and dismiss Samesurf’s complaint.
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`Case 3:22-cv-00412-RSH-DDL Document 22 Filed 06/17/22 PageID.641 Page 12 of 12
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`Dated: June 17, 2022
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`Respectfully submitted,
`FENWICK & WEST LLP
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`By: /s/ Michael J. Sacksteder
`Michael J. Sacksteder
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`Attorneys for Defendant
`INTUIT INC.
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