Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 1 of 17
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`v.
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`FITBIT, INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-IT
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`
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`DEFENDANT FITBIT INC.’S REPLY BRIEF IN SUPPORT OF ITS RULE 12(b)(6)
`MOTION TO DISMISS THE AMENDED COMPLAINT
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`LEAVE TO FILE GRANTED ON JANUARY 17, 2020
`[Docket No. 38]
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 2 of 17
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`TABLE OF CONTENTS
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`Page
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`B.
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`I.
`II.
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`III.
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`INTRODUCTION ............................................................................................................. 1 
`ARGUMENT ..................................................................................................................... 3 
`A.
`Philips’ opposition provides no legal basis for denying Fitbit’s motion to
`dismiss.................................................................................................................... 3 
`1.
`Philips’ opposition ignores the claim language, the heart of the
`Alice inquiry ............................................................................................... 3 
`Philips improperly equates novelty with patent-eligibility. ....................... 5 
`No claim construction dispute prevents resolution of Fitbit’s
`motion, as Philips does not argue any construction would affect the
`outcome ...................................................................................................... 6 
`Philips’ conclusory lawyer-penned statements in the amended complaint,
`proffered for both step one and two of the Alice analysis, are inconsistent
`with the actual claim language and admissions in the specification ...................... 7 
`1.
`The ’233 patent claims recite only result-oriented use of known
`security mechanisms, not a technological improvement as alleged
`by Philips in the amended complaint. ........................................................ 7 
`Philips’ amended complaint allegations that the ’377 patent claims
`are “an advanced network architecture” conflicts with the spec
`admissions that the claimed architecture was known, and the
`claims assign no “significant application functionality” to the
`server .......................................................................................................... 8 
`Philips amended complaint does not show the ’958 patent claims a
`“concrete technological advancement” “by changing how data is
`stored” because the claims are silent on a new way to store data .............. 9 
`The ’007 patent claims recite generic, unimproved components and
`technology, not an advancement in GPS or health monitoring
`technology ................................................................................................ 10 
`CONCLUSION ................................................................................................................ 12 
`
`2.
`3.
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`2.
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`3.
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`4.
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`-i-
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 3 of 17
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Aatrix Software, Inc. v. Green Shades Software, Inc.,
`882 F.3d 1121 ........................................................................................................................1, 7
`
`Affinity Labs of Texas, LLC v. DIRECTV, LLC¸838
`F.3d 1253 (Fed. Cir. 2016) ........................................................................................................6
`
`Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,
`939 F.3d 1355 (Fed. Cir. 2019)..................................................................................................9
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018)..................................................................................................4
`
`Athena Diagnostics, Inc. v. Mayo Collab. Servs. LLC,
`915 F.3d 743 (Fed. Cir. 2019) (cert. denied) .............................................................................2
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`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) (cert. denied) ...........................................................................1
`
`Berkheimer v. HP Inc.,
`890 F.3d 1369 (Fed. Cir. 2018) (Moore, Circuit Judge; denial of reh’g en
`banc) ......................................................................................................................................1, 2
`
`Bridge & Post, Inc. v. Verizon Commc’ns, Inc.,
`778 F. App’x 882 (Fed. Cir. 2019) ............................................................................................5
`
`BSG Tech LLC v. Buyseasons, Inc.,
`899 F.3d 1281 (Fed. Cir. 2018)..................................................................................................8
`
`CardioNet, LLC. v. Infobionic, Inc.,
`348 F. Supp. 3d 87 (D. Mass. 2018) ......................................................................................3, 6
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`Cellspin Soft, Inc. v. Fitbit, Inc.,
`927 F.3d 1306 (Fed. Cir. 2019)..............................................................................................1, 2
`
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019)................................................................................................2, 6
`
`Cleveland Clinic Found v. True Health Diagnostics LLC,
`760 F. App’x 1013 (Fed. Cir. 2019) ..........................................................................................2
`
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
`880 F.3d 1356 (Fed. Cir. 2018)................................................................................................11
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 4 of 17
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`TABLE OF AUTHORITIES
`(Continued)
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`Page(s)
`
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`Data Engine Techs. LLC v. Google LLC,
`906 F.3d 999 (Fed. Cir. 2018)....................................................................................................5
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`Elec. Power Group v. Alstom S.A.,
`830 F.3d 1350(Fed. Cir. 2016).................................................................................................10
`
`Finjan, Inc. v. Blue Coat Systems, Inc.,
`879 F.3d 1299 (Fed. Cir. 2018) (Opp. ) .....................................................................................4
`
`Genetic Techs. Ltd. v. Merial L.L.C.,
`818 F.3d 1369 (Fed. Cir. 2016)..................................................................................................6
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016)..................................................................................................7
`
`Koninklijke KPN N.V. v. Gemalto MSM GmbH,
`942 F.3d 1143 (Fed. Cir. 2019)..................................................................................................4
`
`Secured Mail Sols. LLC v. Universal Wilde, Inc.,
`873 F.3d 905 (Fed. Cir. 2017)....................................................................................................2
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`839 F.3d 1138 (Fed. Cir. 2016)..........................................................................................1, 3, 6
`
`In re TLI Commc’ns. LLC Patent Lit.,
`823 F.3d 607 (Fed. Cir. 2016)..................................................................................................11
`
`Trading Techs. Int’l, Inc. v. IBG LLC,
`921 F.3d 1084 (Fed. Cir. 2019)................................................................................................11
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`Trading Techs. Int’l, Inc. v. IBG LLC,
`921 F.3d 1378 (Fed. Cir. 2019)................................................................................................11
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`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017)..............................................................................................6, 7
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`Other Authorities
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`Fed. R. Civ. Proc. 12(b)(6) ..............................................................................................................1
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`-iii-
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 5 of 17
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`I.
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`INTRODUCTION
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`Philips’ opposition clings to its amended complaint’s conclusory allegations as the
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`foundation for its defense of the Asserted Patents, ignoring the Federal Circuit’s instruction that
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`the claims, not the complaint, control the Supreme Court’s Mayo/Alice inquiry. Synopsys, Inc. v.
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`Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101 inquiry must focus
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`on the language of the Asserted Claims”). Philips’ near-silence on the claims and specification of
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`the Asserted Patents evidences the weakness of its opposition and affirms the Asserted Patents
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`cannot survive Fitbit’s motion to dismiss under Supreme Court and Federal Circuit precedent. If
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`the allegations of the amended complaint were supported by the claim language, Philips would
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`have relied on the claims and not the amended complaint. Reliance on mere allegations,
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`untethered to the claim language, is legally deficient.
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`Philips begins by mischaracterizing the scope and reach of Berkheimer and Aatrix.
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`Berkheimer explicitly states patent eligibility “has in many cases been resolved on motions to
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`dismiss,” and “[n]othing in this decision should be viewed as casting doubt on the propriety of
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`those cases.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018), cert. denied.
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`Ineligibility can be shown on a motion to dismiss by “[r]elying on the specification alone”
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`“where, as in Mayo, the specification admits” claim elements were well-understood, routine, and
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`conventional. Berkheimer v. HP Inc., 890 F.3d 1369, 1371 (Fed. Cir. 2018) (Moore, Circuit
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`Judge; denial of reh’g en banc) (emphasis original). Indeed, as in Mayo, the specifications of
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`Philips’ Asserted Patents admit the claims recite known and conventional technology and no
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`particular solutions. Notably, Philips’ opposition fails to address these admissions.
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`Instead, the opposition relies solely on amended complaint allegations “wholly divorced
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`from the claims or the specification,” which cannot defeat a motion to dismiss. See Cellspin Soft,
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 6 of 17
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`Inc. v. Fitbit, Inc., 927 F.3d 1306, 1317 (Fed. Cir. 2019).1 The opposition ignores the Federal
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`Circuit’s instruction to tether both steps of the Alice analysis to the claim language. See e.g.
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`ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 766, 775 (Fed. Cir. 2019). Even worse,
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`Philips’ allegations are often directly contradictory to the patent claims and specification. “In
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`ruling on a 12(b)(6) motion, a court need not accept as true allegations that contradict . . . the
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`claims and the patent specification.” Berkheimer, 890 F.3d at 1372 (internal citation omitted)
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`(emphasis added); see also Athena Diagnostics, Inc. v. Mayo Collab. Servs. LLC, 915 F.3d 743,
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`756 (Fed. Cir. 2019), cert. denied (“the district court was not obliged to accept [allegations
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`inconsistent with the patent] as true”); Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d
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`905, 913 (Fed. Cir. 2017) (“[C]ourt[s] need not accept as true allegations that contradict . . . the
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`claims and the patent specification”). “There is no reason to task the district court with finding an
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`inventive concept that the specification [] concede[s] does not exist.” Cleveland Clinic Found v.
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`True Health Diagnostics LLC, 760 F. App’x 1013, 1019 (Fed. Cir. 2019).
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`Aside from the opposition’s effort to transform the claimed abstract ideas through artful
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`pleading, Philips appeals to the Court for charity and manufactures “disputes” in an effort to
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`delay dismissal. Philips complains the abstract idea exception is difficult to address and thus
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`should be construed narrowly, despite providing no legal support for this conclusion. D.I. 36
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`(“Opp.”) at 8. Indeed the Supreme Court just denied cert in the Berkheimer and Athena cases,
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`1 In Cellspin the Federal Circuit affirmed the step one finding that the claims were directed to an
`abstract idea, despite Cellspin’s attorney argument (similar to Philips’ allegations) that the claims
`recite a “technological improvement” of data capture devices. Addressing the step two analysis
`the Court stated: “[W]e do not read Aatrix to say that any allegation about inventiveness, wholly
`divorced from the claims or specification, defeats a motion to dismiss….As long as what makes
`the claims inventive is recited by the claims, the specification need not expressly list all the
`reasons why this claimed structure is unconventional.”
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 7 of 17
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`rejecting the same type of arguments Philips raises here regarding application of the patentability
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`analysis. https://www.supremecourt.gov/orders/ordersofthecourt/19. The opposition also asks
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`this Court to apply case law based solely on Philips’ opinion regarding what the Federal Circuit
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`“could have” held, despite its express holding to the contrary. Id. at 16. Philips complains that
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`Fitbit overgeneralizes2 (id. at 2, 9) and misinterprets (id. at 21, 13-14) the claims, yet never
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`explains how these complaints are material to the patentability analysis.
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`II.
`
`ARGUMENT
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`A.
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`Philips’ opposition provides no legal basis for denying Fitbit’s motion to dismiss
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`1.
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`Philips’ opposition ignores the claim language, the heart of the Alice inquiry
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`Philips’ opposition ignores the Asserted Patents’ claims and specifications, instead
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`relying on amended complaint allegations and attorney argument divorced from the patent
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`language. See section B. In fact, Philips makes no attempt to address the numerous specification
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`admissions highlighted in Fitbit’s motion (see D.I. 34 (Mot.) at 4-5, 10-14, 16-25), and there is
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`only one instance in its 25-page brief where Philips relies on claim language to support its
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`argument (see Opp. at 14). By focusing the other 24 pages on amended complaint allegations and
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`attorney argument, Philips violates the Federal Circuit’s clear instruction that “[t]he § 101
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`inquiry must focus on the language of the Asserted Claims.” Synopsys, 839 F.3d at 1138.3
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`Indeed, many of the cases Philips relies on illustrate the importance of the claims in the
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`2 Philips’ allegation that Fitbit “asks this court to apply a level of generality that is divorced from
`the claim language” (D.I. 36 at 2) ignores the fact that Fitbit provided an appendix correlating
`every claim element combination to the abbreviated description used in the moving papers. Other
`than objecting, Philips fails to show how a narrower consideration of the claims, that includes
`details of every limitation, changes the abstract idea analysis.
`3 An instruction this Court followed when invalidating claims in CardioNet, LLC. v. Infobionic,
`Inc., 348 F. Supp. 3d 87 (D. Mass. 2018). Plaintiffs attempted to limit the scope of the claimed
`“determination logic” through allegations and attorney argument (id. at 97), but this Court
`recognized: “The ‘determination logic’ [as described] by Plaintiffs is not a limitation set forth in
`the ’207 patent. Instead, the [claimed] ‘determination logic’ is undefined and unspecified.” Id.
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 8 of 17
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`§ 101 determination. Philips argues the ’233 claims are analogous to those found eligible in
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`Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) (Opp. at 19-20), yet the
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`Finjan court relied on claim language reciting a particular malware identification solution to
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`determine the claims recited an “improvement in computer functionality, rather than the abstract
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`idea of computer security writ large.” Finjan, 879 F.3d at 1304-05 (emphasis added). The Finjan
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`claims recited more than a “mere result,” because the claims included “specific steps” to
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`implement the malware identification solution. Id. at 1306. In direct contrast, the ’233 claims do
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`not recite a particular “security mechanism,” nor does Philips allege they do. See Opp. at 20.
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`Philips argues the ’958 claims are similar to those in Ancora Techs., Inc. v. HTC Am.,
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`Inc., 908 F.3d 1343 (Fed. Cir. 2018), which were found eligible due to the claims’ recitation of a
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`“specific technique” that “specifically identi[ed] how that functionality improvement [was]
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`effectuated in an assertedly unexpected way.” Id. at 1348. This specificity “transform[ed the]
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`claim from [] claiming only a result to one claiming a way of achieving it.” Id. at 1349. Philips
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`argues the ’958 claims “pass muster at step one for the same reasons” “by changing how data is
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`stored,” Opp. at 12 (emphasis original), yet the ’958 claims are silent on how data is stored.
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`Philips’ reliance on Koninklijke KPN N.V. v. Gemalto MSM GmbH, 942 F.3d 1143 (Fed.
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`Cir. 2019) similarly ignores the significance of the claim language to that holding. In KPN,
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`appellants did not appeal invalidation of the independent claim, because the inventive concept,
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`although discussed in the specification, was captured only in the dependent claims. Id. at 1150-
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`51. Moreover, appellees did not dispute the concept was inventive; rather, their defense was
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`based on the argument the concept was “not adequately captured in the claims[.]” Id. at 1151
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`(emphasis original). As discussed in section B, Philips’ amended complaint allegations relate to
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`concepts not captured in the patent claims.
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`The importance of the claims to the § 101 analysis in comparison to mere allegations in
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 9 of 17
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`the complaint is further illustrated in Data Engine Techs. LLC v. Google LLC, 906 F.3d 999
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`(Fed. Cir. 2018), a post-Aatrix decision. With its complaint, the Data Engine patentee submitted
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`articles that “show[ed] the state of the art at the time of the invention and evidenc[ed] the
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`significance of the claimed methods to spreadsheet technology” to “tout[] the advantages of its
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`use of notebook tabs to improve navigation through three-dimensional spreadsheets.” Id. at 1004.
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`Yet, the court emphasized it was the claims, not the complaint, which governed the § 101
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`analysis. See id. at 1001. Even though the asserted patents had “substantially identical”
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`specifications (id. 1001 n.1), one patent was eligible because the claims recited a “specific
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`implementation of a notebook tab interface,” and the other was ineligible because the claims
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`were “not limited to th[at] specific technical solution” and recited only a “generic[]”
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`implementation. Id. at 1012.
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`2.
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`Philips improperly equates novelty with patent-eligibility.
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`Philips’ opposition leans heavily on the amended complaint’s repeated allegations that
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`the claims present technological advancements. Opp. at 10-11 (’958 claims “technological
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`advancements”), 17 (prior art did not include the ’377 invention), 18-19 (’233 claims
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`“improvements over the prior art”), 22 (’007 patents claimed “technological advancement”).4 As
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`a preliminary matter, this Court is “not required to accept [the patentee’s] legal conclusions as
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`true, even if couched as factual allegations,” including “repeated characterization of its
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`inventions as ‘technical innovations.’” Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F.
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`App’x 882, 894 (Fed. Cir. 2019).
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`But, even assuming these allegations are true, they are not enough to confer patent
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`eligibility to Philips’ claims. “[P]urported technological innovations” are “relevant to a novelty
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`4 See also Opp. at 12-13 (’958 claims a “technical improvement”), 16 (’377 claims a
`“technological improvement”), 24 (’007 claims “improvements over the prior art”).
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 10 of 17
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`and obviousness analysis, and not whether the claims [are] directed to eligible subject matter,”
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`because “ [e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast
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`Cable Commc’ns, LLC, 874 F.3d 1329, 1339-40 (Fed. Cir. 2017) (affirming district court’s
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`rejection of evidence attached to its complaint because such evidence “was relevant to a novelty
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`and obviousness analysis, and not whether the claims were directed to eligible subject matter”).5
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`This is because “a claim for a new abstract idea is still an abstract idea” (Synopsys, Inc., 839 F.3d
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`at 1151) and adding “novel or non-routine components is not necessarily enough [for claims to]
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`survive a § 101 challenge.” ChargePoint, 920 F.3d at 773. As such, mere allegations of novelty
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`alone do not provide a basis to deny Fitbit’s motion.
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`3.
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`No claim construction dispute prevents resolution of Fitbit’s motion, as
`Philips does not argue any construction would affect the outcome
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`Philips tries to manufacture claim construction disputes by arguing Fitbit misinterpreted
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`the ’377 patent’s claimed “response” (Opp. at 13-14) and the ’233 patent’s claimed “security
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`mechanism” (id. at 21). While Fitbit maintains its previous interpretation of the claim language,6
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`the exact claim scope in these instances will not affect this Court’s § 101 analysis. Philips does
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`not disagree: it offers no alternative scope for these terms, nor does it explain how a different
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`scope for these terms would affect the claims’ eligibility.
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`Undefined and irrelevant claim construction “disputes” do not mandate denial of a
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`motion to dismiss.7 Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1374 (Fed. Cir. 2016)
`
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`5 See also Affinity Labs of Texas, LLC v. DIRECTV, LLC¸838 F.3d 1253 (Fed. Cir. 2016)
`(finding no error in the district court refusing to rely on allegations that using a “user-
`downloadable application” was novel, because “the eligibility finding does not turn on novelty.”
`Id. at 1263, n.3.
`6 Philips contests including “encryption” in the scope of the claimed “security mechanism” (Opp.
`at 21), yet the ’233 claims state encryption is a “security mechanism.” ’233 patent, claim 2.
`7 Even if the Court disagrees with Fitbit and finds a relevant claim construction dispute, § 101
`still may be resolved at this stage. CardioNet, 348 F. Supp. 3d at 90 (“‘[i]f there are claim
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 11 of 17
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`(allowing § 101 analysis when “there is no claim construction dispute relevant to the eligibility
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`issue”). And even if Philips had proposed constructions, such constructions cannot infuse
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`technological improvements or inventive concepts into the actual functional and generic claim
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`language. See Two-Way Media, 874 F.3d at 1336, 1338 (affirming district court’s determination
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`that “claims cannot fairly be read to recite [purportedly inventive] computer architecture even in
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`light of [Two-Way Media’s] proposed claim constructions” as patentee’s proposed constructions
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`did not “sufficiently tie the claims to particular scalable network architecture”).
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`B.
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`Philips’ conclusory lawyer-penned statements in the amended complaint,
`proffered for both step one and two of the Alice analysis, are inconsistent with
`the actual claim language and admissions in the specification
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`1.
`
`The ’233 patent claims recite only result-oriented use of known security
`mechanisms, not a technological improvement as alleged by Philips in the
`amended complaint.
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`Fitbit and Philips agree that the ’233 claims are directed to secure data transfer between
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`devices.8 Mot. at 4; Opp. heading at 18. Despite this, and relying solely on allegations from the
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`amended complaint, Philips argues the ’233 claims are non-abstract and pass Alice step one and
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`two analysis because they “improved” existing security mechanisms and provided a functionality
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`“not present in the prior art.” Opp. at 18-20.
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`Philips’ arguments on both the steps one and two Alice analysis, based solely on
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`allegations in the amended complaint, are inconsistent with the ’233 patent. For example,
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`Philips’ allegations that the prior art lacked sufficient protection for personal information
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`transmitted between known devices (Opp. at 6) and “the ’233 patent . . . provided a type of
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`security mechanism that was not present in the prior art” (id. at 19) are contradicted by the ’233
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`construction disputes, . . . the court [may] proceed by adopting the non-moving party’s
`construction,’ (citing Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125).
`8 A concept which the Federal Circuit has deemed an abstract idea. Intellectual Ventures I LLC v.
`Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 12 of 17
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`specification’s admission that the claims encompass known security mechanisms (’233 patent,
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`13:41-44, 14:7-8), governing known communications protocol (id. at 4:47-56, 4:60-63, 6:14-16,
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`6:23-28, 6:49-51), between known devices (id. at 1:63, 11:50-53). The opposition simply argues
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`that the known security mechanism used in the claimed system is different because the type of
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`data that is being transmitted and secured by the generic security mechanism was personal
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`medical data (Opp. at 7). An abstract idea is not transformed merely because it “applies an
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`abstract idea in a narrow way.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287 (Fed.
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`Cir. 2018). Philips alleges that the ’233 patent also improved technology and thus passed Alice
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`step two analysis because “it was nearly impossible to obtain real-time health information…”
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`(Opp. at 20 (citing Compl. ¶¶ 80-81)), yet the ’233 claims do not require providing real-time
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`information.
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`2.
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`Philips’ amended complaint allegations that the ’377 patent claims are “an
`advanced network architecture” conflicts with the spec admissions that the
`claimed architecture was known, and the claims assign no “significant
`application functionality” to the server
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`The ’377 patent claim language and specification demonstrates the claims’ direction to
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`collecting, analyzing, and presenting data (see Mot. at 10-14) using “off-the shelf” wireless
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`devices, yet Philips argues without citation to claim or specification that the subject matter
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`claimed reflects “advancements in the arrangement of computer components[.]” Opp. at 13-14.
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`The supposed “advancements” that Philips relies on for the Alice step one analysis are not
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`captured in the claims. For instance, the ’377 claims do not recite processing data “in real time,”
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`nor do they require all “data analysis [] offloaded to a server” (Compl. at ¶ 112) or “significant
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`application functionality on the server” (id. at ¶ 111). Rather, the claims recite multiple devices
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`processing data, and require only one, generic, server action (calculating a “response”). See ’377
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`patent, 13:23-43. Thus, despite Philips’ allegations in the amended complaint, the claim language
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 13 of 17
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`imparts on the server no particular type or volume of “data analysis,” and certainly does not
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`require the server to perform “significant application functionality.” Compare id. with Compl. at
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`¶ 111. In the step two analysis Philips ignores the admissions in the specification that the same
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`distributed architecture claimed in the patent was used in the prior art, albeit with a modified
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`cellular or wired telephone instead of an “off-the-shelf” wireless device. ’377 patent, 2:22-51.
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`Substituting an “off-the shelf” wireless device for a modified cellular or wired telephone does
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`not transform an abstract idea into patentable subject matter, nor reflect an improvement in
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`wireless technology—it is after all “off the shelf” technology used “in a known fashion.” Id. at
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`3:36-57; 7:46-60.
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`3.
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`Philips amended complaint does not show the ’958 patent claims a “concrete
`technological advancement” “by changing how data is stored” because the
`claims are silent on a new way to store data
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`The ’958 patent claim language and specification indicate the claims are directed to
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`collecting and storing health data if there is a connection interruption. Mot. at 16-19. Philips
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`argues the claims are non-abstract under Alice step one because they offer a “concrete
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`technological advancement” “by changing how data is stored.” Opp. at 11-12 (emphasis in
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`original). Despite this assertion’s emphasis and foundational role in the opposition, it lacks
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`support in the ’958 patent and isn’t even alleged in Philips’ amended complaint. The ’958 claims
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`are silent as to “how data is stored”; they only recite when data is stored. The ’958 specification
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`describes storing data in any media on a device, and identifies no specific method for storing
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`data on the device after an interruption. Mot. at 18-19. Rather than providing mechanisms
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`regarding “how data is stored,” the ’958 patent claims simply recite the result of storing data
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`upon connection interruption. See Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d
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`1355, 1363 (Fed. Cir. 2019) (claims must recite “mechanisms for achieving [a] desired result”).
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`Philips arguments that the ’958 patent claims pass Alice step two because the amended
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 14 of 17
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`complaint contends the claims are not directed to components used in a conventional way is in
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`conflict with the claim language and specification. The opposition itself never even describes
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`how the ’958 claims allegedly “chang[e] how data is stored.” In fact, Philips admits at the time of
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`the invention, it was “the convention” to “store data locally” or to transfer data wirelessly to a
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`remote server for storage (Compl. at ¶¶ 132-34), yet the ’958 claims also recite storing data
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`locally. Nothing in the claims or the specification indicates an unconventional use of the generic
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`components.
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`4.
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`The ’007 patent claims recite generic, unimproved components and
`technology, not an advancement in GPS or health monitoring technology
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`The ’007 claims recite the well-recognized abstract idea of collecting, analyzing, and
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`presenting data (see Elec. Power Group v. Alstom S.A., 830 F.3d 1350, 1353(Fed. Cir. 2016))
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`using known methods and generic components. See Mot. at 21-23. Once again relying only on
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`the amended complaint and devoid of ’007 patent support, the opposition pursues Alice step one
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`and two eligibility by arguing the claims present novel advancements in GPS technology and
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`athletic monitors. Opp. at 21-22.
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`Philips arguments are contradicted by the ’007 patent. The claims recite a known GPS
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`module performing its standard function: determining latitude and longitude. ’007 patent, 4:54-
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`59, 5:41-44, 7:29-39.9 Philips’ alleges in the amended complaint the ’007 patent improved
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`athletic monitors “with a device that could ‘continuously and consistently provide[] accurate,
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`athletic performance data to an athlete’” (Opp. at 25 (citing Compl. at ¶ 65)), yet the ’007
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`specification admits this function was already performed by treadmills (’007 patent, 1:16-24) and
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`the claims do not require “continuously” providing data to the athlete. Philips argues allowing
`
`
`9 Philips even admits the ’007 patent claims do not recite an advance in GPS technology. Compl.
`at 22.
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`Case 1:19-cv-11586-IT Document 39 Filed 01/17/20 Page 15 of 17
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`the claimed device’s audio functionality was an improvement (Opp. at 23-24), yet the ’007
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`patent admits the claims encompass generic devices providing audio through generic headphones
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`used in a conventional manner (i.e. worn “as usual”) ’007 patent, 5:5, 4:36–39. The claims
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`merely connect known components, used in a conventional manner, to perform the abstract idea
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`of providing performance feedback (see Mot. at 23).
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`Next, Philips claims it is irrelevant whether any particular component was improved,
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`because the ’007 patent improves a system for exercise monitoring. Opp. at 23. Yet the ’007
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`claims simply recite using known components and performing conventional functions “in a
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`nascent but well-known environment,” which does not confer patent eligibility. In re TLI
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`Commc’ns. LLC Patent Lit., 823 F.3d 607, 612 (Fed. Cir. 2016). The opposition’s reliance on
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`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F