Case 1:13-cv-00920-LPS Document 156 Filed 08/28/19 Page 1 of 3 PageID #: 6072
`
`
`August 28, 2019
`
`VIA CM/ECF
`
`The Honorable Leonard P. Stark
`United States District Court
`844 North King Street
`Wilmington, DE 19801
`
`Re:
`
`Arendi S.A.R.L. v. LG Elecs., Inc., et. al., C.A. No. 12-1595 (LPS);
`Arendi S.A.R.L. v. Apple Inc., C.A. No. 12-1596 (LPS);
`Arendi S.A.R.L. v. Microsoft Mobile, Inc., C.A. No. 12-1599 (LPS);
`Arendi S.A.R.L. v. Motorola Mobility LLC, et. al., C.A. No. 12-1601 (LPS);
`Arendi S.A.R.L. v. Sony Mobile Commc’ns (USA) Inc., et. al., C.A. No. 12-1602 (LPS);
`Arendi S.A.R.L. v. Google LLC, C.A. No. 13-919 (LPS);
`Arendi S.A.R.L. v. Oath Holdings Inc., et. al., C.A. No. 13-920 (LPS)
`
`
`Dear Chief Judge Stark:
`
`
`In accordance with the Court’s August 19, 2019 Oral Order, D.I. 145,1 Plaintiff Arendi
`S.A.R.L. (“Arendi”) submits this letter in response to Defendants’ August 23, 2019 letter, D.I. 148,
`regarding the impact, if any, of the Court’s claim construction decisions on the pending 101
`motions. Defendants take the position that the Court’s constructions “do not alter” their arguments,
`and that if anything, the Court’s constructions “bolster” their arguments. Defendants are wrong.
`
`
`A.
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`The Court’s Indefiniteness Findings Are Not Dispositive of Eligibility
`
`
`
`Defendants argue that the Court’s ruling that the means-plus-function terms of the ’854
`patent are indefinite “further confirms that the asserted claims are not patent eligible.” D.I. 148 at
`1-2. The ’854 patent claims to which Defendants refer are exclusively mean-plus-function (or ruled
`to be so by the Court as it pertains to claim 98), and the Court ruled that the specification did not
`disclose an actual algorithm to implement these claims. D.I. 143 at 24-34. That the specification
`did not, in the Court’s view, provide a sufficient algorithm does not bear on—let alone confirm—
`whether the claims of the ’854 patent or of any of the other patents-in-suit are patent-eligible under
`§101. Defendants do not provide any authority for their view that indefiniteness militates against
`eligibility. Indeed, the case law disconnects the two analyses. See Research Corp. Techs. v.
`Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010) (noting that “a patent that presents a process
`sufficient to pass the coarse eligibility filter may nonetheless be invalid as indefinite”); Amdocs
`(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1315 (Fed. Cir. 2016) (Reyna, J., dissenting)
`(“Because §101 is a ‘coarse eligibility filter,’ the recited way of accomplishing a goal need not be
`extensively detailed or even complete.”) (quoting Research Corp., 627 F.3d at 869); Evolved
`Wireless, LLC v. Apple, Inc., 221 F. Supp. 3d 485, 494 (D. Del. 2016) (“section 101 eligibility
`should not become a substitute for a patentability analysis related to prior art, adequate disclosure,
`or other conditions and requirements of Title 35”).
`
`
`1 Docket cites are to Case No. 13-919, unless otherwise noted.
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`Case 1:13-cv-00920-LPS Document 156 Filed 08/28/19 Page 2 of 3 PageID #: 6073
`The Honorable Leonard P. Stark
`August 28, 2019
`Page 2
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`
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`The Court’s Constructions Do Not Help Defendants Meet Their Burden
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`Defendants likewise overlook that this Court rejected their indefiniteness challenges to the
`non-means-plus-functions terms in the ’843 and ’993 patents. Most relevant, in finding that the
`’843 patent term “to determine if the first information belongs to one or more several predefined
`categories of information that can be searched for,” the Court rejected Defendants’ complaint that
`the claim term “fails to describe (1) what kind of ‘information’ is claimed and (2) where the search
`is performed.” D.I. 143 at 13-15. In their §101 Motion and recent letter, Defendants lodge largely
`identical complaints about the asserted claims’ alleged absence of “how to” perform certain
`actions, arguing that they recite “only result-based, functional aspirations and completed actions.
`D.I. 148 at 2. That argument was not enough to find the claim term indefinite, and it is even less
`persuasive in light of recent Federal Circuit authority holding patent-eligible claims that did not
`describe “how to” perform the claims. As explained in Arendi’s Opposition, D.I. 139, at 12-13,
`the patent-eligible claims in Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed.
`Cir. 2018), Data Engine Technologies LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018), Core
`Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), and Finjan,
`Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), did not explain “how to engineer
`or program” the claimed components or tasks. Defendants’ letter does even attempt to reconcile
`their argument with these cases.
`
`B.
`
`Defendants argue that the Court’s Markman Order found that “the disputed claim
`limitations cover broad, generic, conventional computing functionality.” D.I. 148 at 2. As
`explained in Arendi’s Opposition, the claims in Ancora, Data Engine, and Finjan were drawn to
`conventional components and programs, including “a conventional computer having a
`conventional BIOS” in Ancora, an “IBM-compatible personal computer” in Data Engine, and a
`“Intel Pentium microprocessor or a Motorola Power PC microprocessor in Finjan. D.I. 139 at 13-
`14. Defendants do not address these cases in their letter either. Rather, Defendants attempt to
`support their argument with reference to the Court’s Markman Order, arguing that this Court
`“repeatedly noted” that the patents describe “conventional word processing and spreadsheet files
`and conventional word processor and spreadsheet programs.” D.I. 148 at 2. Defendants ignore that
`the Markman Order says that the term “document” “is not solely limited to conventional word
`processing and spreadsheet files.” D.I. 143 at 5. Indeed, the Court’s construction and reasoning
`confirms that “document” means more than conventional word processor or spreadsheet files. Id.
`at 7 (noting that … “it follows that ‘document includes not only conventional word processor files
`and spreadsheet files, but also files from similar programs.”).
`
`Defendants state that the Court’s constructions of the “user command” and “single execute
`command” limitations “suggest that the asserted claims may be implemented by virtually any type
`of input device … belying Arendi’s argument that the claims are similar to the improved user
`interface’’ in Core Wireless. D.I. 148 at 2. To quote Chief Judge Prost in Commil USA, LLC v.
`Cisco Systems, Inc., 720 F.3d 1361 (Fed. Cir. 2013), Defendants do little more than construct a
`straw man and set him ablaze. First, this argument disregards that the proper inquiry is whether
`the claims “as a whole” are directed to patentable subject matter. MAZ Encryption Techs. LLC v.
`Blackberry Corp., C.A. No. 13-304-LPS, 2016 WL 5661981, at *2 (D. Del. Sept. 29, 2016).
`Second, Arendi does not contend that its asserted claims disclose an “improved user interface.”
`
`

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`Case 1:13-cv-00920-LPS Document 156 Filed 08/28/19 Page 3 of 3 PageID #: 6074
`The Honorable Leonard P. Stark
`August 28, 2019
`Page 3
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`Defendants Should Not Receive A Second Bite At the Claim Construction Apple
`
`The user interface through which a user provides commands is but one portion of a broader
`invention. Contrary to Defendants’ gross mischaracterization, the link to Core Wireless is that
`those claims were “directed to a particular manner of summarizing and presenting information in
`electronic devices,” 880 F.3d at 1362, just as the asserted claims disclose a specific manner of a
`specific way of improving information searching and retrieval between two different computer
`programs without disrupting the user’s work or requiring the user to be familiar with and have
`access to an external information source. That this invention can be realized with a variety of input
`devices does not make it abstract.
`
`C.
`
`During claim construction, Defendants pressed for indefiniteness with respect to nearly all
`of the asserted claims of the ’854 patent. Defendants did not, however, argue that claim 93 was
`indefinite. Claim 93 is not a means-plus-function claim, and Defendants did not ask this Court to
`treat it like one or otherwise argue that the claim was indefinite. Defendants now seek to lump
`claim 93 in with the other claims ruled indefinite by the Court and then argue that such
`indefiniteness justifies a determination that the claim is ineligible. As discussed above,
`indefiniteness is not a proxy for eligibility (and claim 93 is not indefinite in the first instance).
`Claim 93 is drawn to the same patent-eligible subject matter as the rest of the asserted claims, as
`explained in Arendi’s Opposition. D.I. 139 at 12.
`
`Defendants take the opportunity—arguably in contravention of this Court’s instructions—
`to argue ineligibility against claim 93 afresh and offer a new analogy. As before, however,
`Defendants’ current analogy for claim 93 eviscerates the entirety of the patent specification, the
`invention’s purpose, and the advantages over the prior art. The analogy blurs the line between the
`“first computer program” and the “second computer program,” assigning “Sam Smith” to both. It
`also hopelessly breaks down when it comes to Sam simply “recognizing” something. As the
`Federal Circuit said in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016),
`“describing the claims at such a high level of abstraction and untethered from the language of the
`claims all but ensures that the exceptions to § 101 swallow the rule.”
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`Respectfully submitted,
`
`/s/ Eve H. Ormerod
`
`Eve H. Ormerod (No. 5369)
`
`cc:
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`
`
`Clerk of Court (via CM/ECF)
`All Counsel of Record (via CM/ECF)
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