Case 1:13-cv-00920-LPS Document 183 Filed 12/13/19 Page 1 of 3 PageID #: 6226
`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
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`(302) 658-9200
`(302) 658-3989 FAX
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`December 13, 2019
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`VIA ELECTRONIC FILING
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`JACK B. BLUMENFELD
`(302) 351-9291
`jblumenfeld@mnat.com
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`
`The Honorable Leonard P. Stark
`United States District Court
`844 North King Street
`Wilmington, DE 19801
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`Re:
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`Dear Chief Judge Stark:
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`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., e. 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
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`Pursuant to the Court’s October 28, 2019 Order, Defendants1 submit this letter
`responding to the questions in the “101 Motions Pre-Hearing Checklist” for the December 20,
`2019 Hearing on Defendants’ Motion for Judgment on the Pleadings (D.I. 1152).
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`1.
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`(a) What claim(s) is/are representative? (b) For which claim(s) must the Court
`determine eligibility?
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`As discussed in Defendants’ letter briefing on this question (D.I. 134 and 137), Arendi
`and Defendants agree that claim 1 of the ’843 patent, claim 2 of the ’356 patent and claim 1 of
`the ’993 patent are representative of the claims in those respective patents. Google and Oath
`contend that either claim 13 or claim 93 is representative of the claims in the ’854 patent.
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`Defendants disagree with Arendi’s prior assertion that the Court should also separately
`evaluate the patent ineligibility of the dependent claims if the independent claims are found to be
`patent ineligible. (D.I. 135 at 2-3.) Arendi did not provide any argument in its opposition to the
`Section 101 Motion or in the prior letter briefing to the Court articulating why the dependent
`claims would be patent-eligible if the representative claims are not, and has therefore waived any
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`1 The Blackberry defendants (C.A. No. 12-1597) did not join the Motion and therefore do not
`join this letter.
`2 All docket references in this letter cite to C.A. No. 12-1595.
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`Case 1:13-cv-00920-LPS Document 183 Filed 12/13/19 Page 2 of 3 PageID #: 6227
`The Honorable Leonard P. Stark
`December 13, 2019
`Page 2
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`such argument. See, e.g. Athena Diagnostics, Inc. v. Mayo Collaborative Svcs., LLC, 915 F.3d
`743, 756 (Fed. Cir. 2019) (holding that arguments specific to claims not specifically addressed in
`plaintiff’s briefing were waived); British Telecomms. PLC v. IAC/InterActiveCorp, 381 F. Supp.
`3d 293, 321-22 (D. Del. 2019) (same).
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`2.
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`(a) Is claim construction necessary before patentability can be decided? (b) If so,
`which terms must be construed? (c) What are your proposed constructions for the
`term(s) you contend must be construed?
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`No. Claim construction in this matter has been fully briefed and argued, and the Court
`issued a Claim Construction Opinion on August 19, 2019. Defendants do not believe any further
`claim construction is necessary to decide the subject matter eligibility of the Asserted Claims.
`As discussed in Defendants’ prior letter briefing on this question (D.I. 134 and 137), which is
`incorporated by reference, the Court’s claim construction rulings provide further support for
`Defendants’ Motion.
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`3.
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`If you are contending that factual dispute(s) should cause the Court to deny the
`motion, identify with specificity such factual dispute(s).
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`Defendants do not contend that there are any relevant factual disputes and none were
`identified by Arendi in the briefing on the Motion.
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`4.
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`(a) Are there materials other than the complaint/answer and the intrinsic patent
`record (i.e., the patent and prosecution history) that you contend the Court should
`consider in evaluating the motion? (b) If so, identify those materials and the basis on
`which the Court may properly consider them at this stage.
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`Defendants do not contend there are any additional materials beyond the Complaints, the
`Answers and the intrinsic patent record that that Court should consider in evaluating the Motion.
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`Arendi attached three unrelated patents addressed in Federal Circuit patent eligibility
`cases to its Responsive Brief. (D.I. 128, Exs. 5-7.) These unrelated patents are not relevant to
`the subject matter eligibility of the Asserted Claims and not properly before the Court for
`consideration on a Motion for Judgment on the Pleadings.
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`5. What Supreme Court or Federal Circuit case is this case most like? That is, if the
`Court is to analogize the claims at issue in the motion to claims that have previously
`been found to be patent (in)eligible by a higher court, which case provides the best
`analogy?
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`
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`The most analogous Federal Circuit case to the Asserted Claims is Content Extraction &
`Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014). Similar to the claims at
`issue here, the Content Extraction claims generally recited 1) extracting data from documents,
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`Case 1:13-cv-00920-LPS Document 183 Filed 12/13/19 Page 3 of 3 PageID #: 6228
`The Honorable Leonard P. Stark
`December 13, 2019
`Page 3
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`2) recognizing specific information from the extracted data, and 3) storing that information in a
`memory. Id. at 1345.
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`Regarding Step One of Alice, the Federal Circuit found that the Content Extraction
`claims were directed to the abstract idea of recognizing and storing certain data within the
`collected data set. Id. at 1347. Although the claims recited hardware devices like a “scanner,”
`the Federal Circuit still found the claims invalid because “[t]he concept of data collection,
`recognition, and storage is undisputedly well-known” and “humans have always performed these
`functions.” Id. Similarly, the Asserted Claims here are directed to the abstract idea of
`identifying information in a document (like a name in a letter), searching for related information
`in a separate source (such as an address book), and using the related information found in some
`way (like addressing the letter). In fact, the Asserted Patents admit that the basic abstract idea of
`identifying information in a document, searching for related information and using the related
`information predates its invention, and simply propose taking what was done manually and
`automating it on a computer (e.g., ’843, 1:28-42).
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`Turning to the second step of Alice, the Federal Circuit determined that the Content
`Extraction claims were not directed to an inventive concept because they “merely recite[d] the
`use of existing scanning and processing technology to recognize and store data from specific data
`fields such as amounts, addresses, and dates.” Id. at 1348. The Federal Circuit considered the
`claim limitations – both individually and as an ordered combination – and held there was no
`inventive concept in the use of generic computer hardware “to perform well-understood, routine,
`and conventional activities commonly used in industry.” Id. Similarly, there is no inventive
`concept in Arendi’s Asserted Claims because they require no more than generic computers, word
`processors, and database programs to implement the abstract idea and fail to describe how to
`program a conventional computer system in order to implement the abstract idea.
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`6.
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`Why should/shouldn’t the Court deny the motion without prejudice to renew at a
`later stage of this litigation?
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`JBB/bac
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`cc:
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`Jack B. Blumenfeld (#1014)
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`Clerk of the Court (via hand delivery)
`All Counsel of Record (via electronic mail)
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`There is no reason to delay a decision on patent eligibility in this matter. Claim
`construction and fact discovery are complete. Moreover, Arendi has not identified any factual
`disputes or other issues that would preclude the Court resolving the Motion at this time.
`Respectfully,
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`/s/ Jack B. Blumenfeld
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