Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 1 of 26
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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, LLC,
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`Plaintiff,
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`Defendant.
`
`Civil Action No. 1:19-cv-11586-FDS
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`ORAL ARGUMENT REQUESTED
`
`
`PHILIPS NORTH AMERICA LLC’S MEMORANDUM IN SUPPORT OF ITS
`MOTION FOR RECONSIDERATION OF THE MEMORANDUM AND
`ORDER ON CROSS-MOTIONS FOR SUMMARY JUDGMENT (Dkt. 401)
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`
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`

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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 2 of 26
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`I.
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`II.
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`
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`
`
`III.
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`
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`TABLE OF CONTENTS
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`Introduction ..........................................................................................................................1
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`Argument .............................................................................................................................1
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`A. The Standard for Reconsideration ...............................................................................1
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`B. Claim 1 Covers the Inventive Concepts Alleged by Philips .......................................2
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`C. The Court Erred By Requiring the Claim to Recite Ipsis Verbis the Reasons
` For Its Inventive Nature ..............................................................................................5
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` i. The Federal Circuit Frequently Finds Claims Directed to Inventive
` Concepts Without Reciting the “Reasons Why” They Are Inventive
` and not “Conventional”........................................................................................9
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`D. The Inventive Concepts Render the Asserted Claims Patent-Eligible ......................13
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`Conclusion .........................................................................................................................20
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`i
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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 3 of 26
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`TABLE OF AUTHORITIES
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`Page(s)
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`
`
`Cases 
`
`Ahmed v. Rosenblatt,
`118 F.3d 886 (1st Cir. 1997) ....................................................................................................... 3
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .................................................................................................................... 8
`
`Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,
`967 F.3d 1285 (Fed. Cir. 2020)........................................................................................... 19, 20
`
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
`841 F.3d 1288 (Fed. Cir. 2016)................................................................................................. 27
`
`Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016)........................................................................................... 26, 27
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018).......................................................................................... passim
`
`Cavallaro v. UMass Memorial Health Care, Inc.,
`No. 09-40181, 2010 WL 9433452 (D. Mass. Dec. 20, 2010) ..................................................... 3
`
`Cellspin Soft, Inc. v. Fitbit, Inc.,
`927 F.3d 1306 (Fed. Cir. 2019)................................................................................................... 7
`
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019)............................................................................................. 18, 19
`
`Cooperative Entertainment v. Kollective,
`Tech., 50 F.4th 127 (Fed. Cir. 2022) ............................................................................. 16, 17, 18
`
`Cooperative Entertainment v. Kollective,
`Tech., 544 F.Supp.3d 890 (N.D. Cal. 2021) ............................................................................. 17
`
`Fromson v. Advance Offset Plate,
`755 F.2d 1549 (Fed. Cir. 1985)................................................................................................. 27
`
`GmbH & Co. KG v. Duo Sec. LLC,
`15 F.4th 1091 (Fed. Cir. 2021) .......................................................................................... passim
`
`Maldonado v. AMS Servicing LLC,
`Nos. 11-40444, 11-40219, 2012 WL 220249 (D. Mass. Jan. 24, 2012) ..................................... 3
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`566 U.S. 66 (2012) .......................................................................................................... 9, 10, 11
`
`ii
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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 4 of 26
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`
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`Parker v. Flook,
`437 U.S. 584 (1978) ...................................................................................................... 20, 21, 22
`
`Reiner v. I. Leon Co.,
`285 F.2d 501 (2d Cir. 1960)...................................................................................................... 27
`
`Ruiz Rivera v. Pfizer Pharms., LLC,
`521 F.3d 76 (1st Cir. 2008) ......................................................................................................... 2
`
`Shea v. Porter,
`56 F.Supp.3d 65 (D. Mass. 2014) ............................................................................................... 2
`
`Stonkus v. City of Brockton Sch. Dept.,
`322 F.3d 97 (1st Cir. 2003) ......................................................................................................... 3
`
`Ungar v. Palestine Liberation Org.,
`599 F.3d 79 (1st Cir. 2010) ......................................................................................................... 4
`
`Vargas v. Pfizer,
`522 F.3d 55 (1st Cir. 2008) ......................................................................................................... 2
`
`Statutes 
`
`35 U.S.C. § 101 ......................................................................................................................... 4, 16
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`Rules 
`
`Fed. R. Civ. P. 60(b) ....................................................................................................................... 5
`
`iii
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`I.
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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 5 of 26
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`Introduction
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`On September 1, 2022 (Dkt. 401, “Opinion”) the Court granted Fitbit’s motion for
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`summary judgment finding the claims of U.S. Patent No. 8,277,377 (the “’377 Patent”) invalid
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`under 35 U.S.C. § 101. In its Opinion, this Court stated that the asserted claims were not directed
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`to an inventive concept because the “two alleged inventive concepts [were] set out in the
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`specification, not the claim.” Opinion at 18. In this regard, the Court appears to have
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`misunderstood the Federal Circuit’s holding in Berkheimer by requiring that the claims not only
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`state the inventive concepts (which as discussed in more detail below they clearly do), but also
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`requiring that the claims recite ipsis verbis the reason said concepts are inventive. Opinion at 18-
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`19 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1369-70 (Fed. Cir. 2018)). This was a manifest
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`error of law and should be reconsidered as the Federal Circuit has frequently (including in
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`Berkheimer) found inventive concepts captured by claims without the claims reciting ipsis verbis
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`the reasons said concepts are inventive.1 After discarding the two alleged inventive concepts, the
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`Court proceeded to analyze each claim element in isolation without determining whether the
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`ordered combination of elements in the claims included an inventive concept, another clear error
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`for which Philips respectfully requests reconsideration.
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`II.
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`Argument
`A.
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`The Standard for Reconsideration
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`“[A] district court has the inherent power to reconsider its interlocutory orders” and is
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`“encourage[d] to do so where error is apparent.” Fernández–Vargas v. Pfizer, 522 F.3d 55, 61 n.2
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`(1st Cir. 2008). A motion for reconsideration should be granted “upon a showing of (1) a manifest
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`error of law, (2) new evidence, or (3) a misunderstanding or other error not of reasoning but
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`1 This motion focuses on one critical aspect of Step 2 in the Alice/Mayo analysis that mandates reversal of this
`Court’s earlier order. Other aspects of the Alice/Mayo analysis are not addressed here but reserved for later.
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`1
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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 6 of 26
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`apprehension.” Shea v. Porter, 56 F.Supp.3d 65, 79 (D. Mass. 2014) (internal quotation marks
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`omitted) (citing Ruiz Rivera v. Pfizer Pharms., LLC, 521 F.3d 76, 81-82 (1st Cir. 2008)).
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`In addition to a court’s inherent power to reconsider its interlocutory orders, the Federal
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`Rules of Civil Procedure allow for a court to “relieve a party . . . from a final judgment, order or
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`proceeding” for several reasons including “mistake, inadvertence, surprise, or excusable neglect,”
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`as well as “any other reason that justifies relief.” Fed.R.Civ.P. 60(b)(1), (6). Motions brought
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`pursuant to Fed.R.Civ.P. 60(b) are “committed to the district court's sound discretion.” Stonkus v.
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`City of Brockton Sch. Dept., 322 F.3d 97, 100 (1st Cir. 2003). While “[m]otions under this rule are
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`ordinarily granted only when exceptional circumstances are present . . . ‘district courts have broad
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`discretion to determine whether such circumstances exist.’” Maldonado v. AMS Servicing LLC,
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`Nos. 11-40444, 11-40219, 2012 WL 220249, at *3 (D. Mass. Jan. 24, 2012) (quoting Ahmed v.
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`Rosenblatt, 118 F.3d 886, 891 (1st Cir. 1997)). Additionally, “[t]he contours of Rule 60(b)(6), the
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`‘catch-all’ provision, are ‘particularly malleable,’ and the Court's ‘decision to grant or deny such
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`relief is inherently equitable in nature.’” Cavallaro v. UMass Memorial Health Care, Inc., No. 09-
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`40181, 2010 WL 9433452, at *3 (D. Mass. Dec. 20, 2010) (quoting Ungar v. Palestine Liberation
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`Org., 599 F.3d 79, 83, 84 (1st Cir. 2010)).
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`B.
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`Claim 1 Covers the Inventive Concepts Alleged by Philips
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`The Opinion recognized that Philips identified two distinct “inventive concepts” included
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`in Claim 1 of the ’377 Patent: “(1) performing computations utilizing a back-end server to remove
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`location-based restraints, and (2) monitoring exercise with an application downloaded to a web-
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`enabled wireless phone”. See Opinion at 12.
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`2
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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 7 of 26
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`It is apparent from the face of Claim 1 that both of these inventive concepts are captured
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`by the asserted claims.2 Claim 1 recites:
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`1. A method for interactive exercise monitoring, the method comprising the steps
`of
`a. downloading an application to a web-enabled wireless phone directly from
`a remote server over the internet;
`b. coupling the a web-enabled wireless phone to a device which provides
`exercise-related information;
`c. rendering a user interface on the web-enabled wireless phone;
`d. using the application, receiving data indicating a physiologic status of a
`subject;
`e. using the application, receiving data indicating an amount of exercise
`performed by the subject;
`f. wherein at least one of the data indicating a physiologic status of a subject or
`the data indicating an amount of exercise performed by the subject is
`received from the device which provides exercise-related information, and
`wherein the data indicating a physiologic status of a subject is received at
`least partially while the subject is exercising:
`g. sending the exercise-related information to an internet server via a wireless
`network;
`h. receiving a calculated response from the server, the response associated
`with a calculation performed by the server based on the exercise-related
`information; and
`i. using the application, displaying the response.
`See ’377 Patent, col. 13, ll. 23-47 (emphasis added).
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`
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`The combination of elements 1(a), 1(d), 1(e), and 1(g)-1(h) unequivocally capture the
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`second inventive concept (monitoring exercise with an application downloaded to a web-enabled
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`2 This is further supported by Philips’s technical expert, Dr. Martin, whose report describes how “the asserted claims
`of the ’377 patent provide” both “the inventive concept of utilizing a back-end server for computation that allowed
`for processing of exercise-related data without location based restraints” and “the inventive concept of monitoring
`exercise with an application downloaded to a web-enabled wireless phone”. See Dkt.338-9, Martin Rebuttal Report
`at pgs. 75-76
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`3
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`

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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 8 of 26
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`wireless phone) as the claim language requires “downloading an application to a web-enabled
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`wireless phone” and “using the application” to receive “exercise related information” in the form
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`of either “data indicating the physiological status of a subject” or “data indicating an amount of
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`exercise performed by the subject” which is then “sen[t] ... to an internet server via a wireless
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`network” from which “a calculated response” that is “associated with a calculation performed by
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`the server based on the exercise related information” is “received.”3 ’377 Patent at 13:25-46.
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`
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`Similarly, limitations 1(a), 1(g) and 1(h) demonstrate that the first inventive concept
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`(performing computations utilizing a back-end server to remove location-based restraints) is
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`captured as the claim requires “sending [] exercise-related information to an internet server via a
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`wireless network” from a “web-enabled wireless phone” and “receiving a calculated response from
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`the server, the response associated with a calculation performed by the server based on the
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`exercise-related information.” ’377 Patent at 13:25-46. Further, Dr. Martin explained how claim 1
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`eliminated location-based restraints of prior art systems by “arranging the data processing
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`components such that the data analysis was offloaded to a server that was in wireless
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`communication with a web-enabled wireless phone.” Dkt.338-9, Martin Rebuttal Report at ¶ 206.4
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`Again, the inventive concept matches the claim language nearly identically.
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`
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`Thus, it is clear from the claim language itself that the two inventive concepts are, contrary
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`to the Court’s Opinion, captured by claim 1. Whether these inventive concepts found in the ordered
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`3 Additionally, Dr. Martin, Philips’s technical expert, explains in his infringement report how these limitations cover
`downloading the Fitbit App to a web-enabled wireless phone (such as a smartphone) (see generally Dkt. 338-2,
`Martin Opening Report, at ¶¶ 50-57), using the Fitbit App to receive data such as heart rate and steps from the Fitbit
`devices (see generally id. at ¶¶ 76-86), sending that data to Fitbit’s servers (see generally id. at ¶¶ 125-131) and
`receiving from the server the user’s cardio fitness score (see generally id. at ¶¶ 132-171).
`4 Fitbit’s arguments as to this point miss the mark as they focus on whether the connection between the web-enabled
`wireless phone and the device which provides exercise-related information (see limitation 1(b)) must be wireless.
`However, as Dr. Martin’s report explained in the quote above, the location-based restraints are eliminated because
`the phone and the back-end server communicate via “a wireless network” (see limitation 1(g)). Dkt. 338-9, Martin
`Rebuttal Report at ¶ 206.
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`4
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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 9 of 26
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`elements of the claim are “conventional” is a matter of disputed fact, which as discussed in more
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`detail below, is at the very least supported by Dr. Martin’s testimony.
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`As is also discussed in more detail below, it was clear error for the Court to fail to compare
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`the claim language to the inventive concepts themselves and instead only compare the claim
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`language to specification’s discussion of how said concepts were not conventional, but in fact
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`inventive.
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`C.
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`The Court Erred By Requiring the Claim to Recite Ipsis Verbis the Reasons
`for Its Inventive Nature
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`The Opinion acknowledged that the patent’s specification describes how the alleged
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`inventive concepts were unconventional and improvements over the prior art (i.e. why the claims
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`and inventive concepts were inventive). Opinion at 18. For example, as noted by the Court, the
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`specification discusses several reasons why the inventive concept of performing computations
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`utilizing a back-end server to remove location-based restraints was an improvement over the prior
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`art including: (1) computing capacity was increased, (2) processing power was increased, and (3)
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`memory that was freed up on the web-enabled wireless phone could then be used for an enhanced
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`user interface. Id. at 18 (quoting ’377 patent at col. 4 ll. 30-42). Notably, none of these three
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`“reasons why” the inventive concepts captured by the claims were unconventional improvements
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`(i.e. why they were “inventive”) are themselves “inventive concepts” (nor has Philips ever alleged
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`that they were). Instead, they are merely benefits that flow from the practice of the asserted claims
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`due to the claims’ inventive nature.5
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`However, when rejecting the inventive concepts as not being “captured” by the claims, the
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`Opinion only considered whether these “reasons why” the concepts were inventive (as recited in
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`the specification) were also explicitly recited by Claim 1. Id. at 19-20. Id. at 19 (“Here, Claim 1
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`5 At the very least, the specification’s discussion of these improvements, the intrinsic evidence and the expert
`testimony create a dispute of fact as to whether these benefits flow from the practice of the asserted claims that was
`inappropriate to resolve at summary judgment.
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`5
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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 10 of 26
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`does not address an enhanced user interface, increased computing capacity, or greater
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`processing power.”). The Opinion never considered whether the inventive concepts themselves
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`(i.e. (1) performing computations utilizing a back-end server to remove location-based restraints,
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`and (2) monitoring exercise with an application downloaded to a web-enabled wireless phone)
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`were captured by Claim 1 (and as discussed above, they are). Not only was it an error to conflate
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`the alleged inventive concepts with the myriad “reasons why” said inventive concepts are
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`inventive, such as the many benefits they provide, but the Federal Circuit has held that the
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`specification (to say nothing of the claims) “need not expressly list all the reasons why [the]
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`claimed structure is unconventional” as long as “what makes the claims inventive is recited by the
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`claims.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1317 (Fed. Cir. 2019).6 As discussed
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`above, “what makes the claims inventive” (i.e. the inventive concepts) are recited by the elements
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`of the claim as a whole, thus it was error to require that the claims also recite “all the reasons why”
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`the claimed invention was unconventional.
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`The Opinion relied heavily on the Federal Circuit’s decision in Berkheimer, but that case
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`only stands for the principle that the claims must contain limitations directed to the inventive
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`concept itself, not that the claims must recite ipsis verbis the “reasons why” the claims are
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`inventive.7 See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In Berkheimer, the Federal
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`Circuit reversed in part a district court’s dismissal of infringement claims involving a patent that
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`described methods for digitally processing and archiving files. At Step 1 of the Alice/Mayo
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`analysis, the Federal Circuit found that the asserted claims were directed to the abstract ideas of
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`parsing, compiling, comparing, storing, and editing data. Id. at 1366 (citing Alice Corp. Pty. Ltd.
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`v. CLS Bank Int’l, 573 U.S. 208 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
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`6 Both Philips and Fitbit cited to Cellspin in their opening briefs. See Dkt. 334 at 3; Dkt. 361 at 1-2.
`7 Further, Philips had no opportunity to rebut such an interpretation of Berkheimer as Fitbit never cited to
`Berkheimer for the proposition that claims must recite the “reasons why” they are inventive. See generally Dkt. No.
`334, Fitbit Opening Brief; Dkt. No. 374, Fitbit Reply Brief.
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`6
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`

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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 11 of 26
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`566 U.S. 66 (2012)). At Step 2, the patent owner alleged two “improvements to computer
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`functionality” that provided inventive concepts: (1) reducing redundancies in storage and (2) using
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`the one-to-many editing feature. Id. at 1369 (“[Patent owner] argues that the claimed combination
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`improves computer functionality through the elimination of redundancy and the one-to-many
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`editing feature, which provides inventive concepts”). The Federal Circuit noted that the
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`specification described why these inventive concepts were not “conventional” and were
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`distinguished over the prior art as they increased efficiency, reduced storage costs and substantially
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`reduced the effort needed to up-date files. Id. at 1369-1370. But the Federal Circuit did not require
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`that the claims recite these “reasons why” the claims were unconventional in order to “capture”
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`the inventive concepts. Id. at 1370.
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`Instead, the Federal Circuit only analyzed whether the claims included limitations “directed
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`to the . . . inventive concept described in the specification.” Id. at 1370. That is, whether the claims
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`captured reducing redundancies in storage and/or using the one-to-many editing feature. Id. For
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`instance, in finding that the independent claim 1 (along with dependent claims 2-3 and 9) did not
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`contain limitations directed to the inventive concepts, the Federal Circuit never analyzed whether
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`any of these claims recited the “reasons why” the claims were unconventional. Id. at 1369-70.
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`Instead, the Federal Circuit found that the claims were ineligible because they did “not include
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`limitations which incorporate eliminating redundancy of stored object structures or effecting a
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`one-to-many change of linked documents within an archive” (i.e. the inventive concepts). Id. at
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`1369 (emphasis added).
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`Likewise, the Federal Circuit found dependent claim 4 patent eligible because it recited
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`“storing a reconciled object structure in the archive without substantial redundancy” (i.e. reducing
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`redundancy). Id. at 1370. And the Federal Circuit determined that several other claims (claims 5-
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`7 which depended from claim 4) also included the additional inventive concept of using the one-
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`7
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`

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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 12 of 26
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`to-many feature because they further claimed “selectively editing an object structure, linked to
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`other structures to thereby effect a one-to-many change in a plurality of archived items”. Id.
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`Indeed, applying this Court’s analysis in the Opinion at issue in this case to Berkheimer
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`would have led to the opposite outcome with respect to claims 4-7 of the patent at issue in
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`Berkheimer (all found by the Federal Circuit to cover the alleged inventive concepts) as none of
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`these claims explicitly recited efficiency, reducing storage costs, or reducing effort needed to up-
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`date files (the “reasons why” the claims were unconventional as set out by the specification):8
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`4. The method as in claim 1 which includes storing a reconciled
`object structure in the archive without substantial redundancy.
`5. The method as in claim 4 which includes selectively editing an
`object structure, linked to other structures to thereby effect a one-to-
`many change in a plurality of archived items.
`6. The method as in clam 5 which includes compiling an item to
`be output from the archive, wherein at least one object-type structure
`of the item has been edited during the one-to-many change and
`wherein the compiled item includes a plurality of linked object-type
`structures converted into a predetermined output file formal.
`7. The method as in claim 6 which includes compiling a plurality
`of items wherein the at least one object-type structure had been
`linked in the archive to members of the plurality.
`Ex. A, U.S. Patent No. 7,447,713 at claims 4-7. The Federal Circuit found these claims could not
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`be declared ineligible as they created issues of fact with regard to Step 2 of the Alice/Mayo analysis.
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`The Federal Circuit even noted that “[t]hese claims recite a specific method of archiving that,
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`according to the specification, provides benefits that improve computer functionality.”
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`Berkheimer, 861 F.3d at 1370. Thus, it is apparent that benefits outlined in the specification do not
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`8 As explained above, claim 1 (from which claims 4-7 depend) was found by the Federal Circuit to not capture the
`inventive concepts and thus does not itself recite any of these “reasons why” said inventive concepts were
`unconventional.
`
`8
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`

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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 13 of 26
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`need to be recited in the claims themselves as long as the claims contain limitations “directed to
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`the . . . inventive concept[s].”9
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`i.
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`The Federal Circuit Frequently Finds Claims Directed to Inventive
`Concepts Without Reciting the “Reasons Why” They Are Inventive
`and not “Conventional”
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`Further, the Federal Circuit has consistently found claims patent eligible that do not
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`explicitly recite why they are unconventional. For example, in CosmoKey,10 the Federal Circuit
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`reversed a lower court’s holding that a patent claiming an authentication method was not patent
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`eligible. CosmoKey Sols. GmbH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091 (Fed. Cir. 2021). The
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`Federal Circuit held that the representative claim included an inventive concept finding that the
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`last four steps of the claimed method “recite[d] an improved method for overcoming hacking by
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`ensuring that the authentication function is normally inactive, activating only for a transaction,
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`communicating the activation within a certain time window, and thereafter ensuring that the
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`authentication function is automatically deactivated.” Id. at 1099. The Federal Circuit noted that
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`the specification described how “the particular arrangement of steps in [the asserted claim]
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`provide[d] a technical improvement over conventional authentication methods.” Id. The Federal
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`Circuit further determined that the specification taught that the claims were unconventional
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`because “compared to the prior art and conventional multifactor authentication systems, the
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`[asserted patent] performs user authentication with fewer resources, less user interaction, and
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`9 The Court’s confusion with regard to Berkheimer was likely the result of a misunderstanding of the word
`“improvements”, which in Berkheimer, was used to refer to the alleged inventive concepts not the reasons those
`concepts were inventive as the Court apparently took it to mean. Opinion at 18 (quoting Berkheimer, 881 F.3d at
`136 for the proposition that “improvements in the specification can ‘create a factual dispute’ . . . only when ‘they
`are captured in the claims’”) (emphasis added). Throughout Berkheimer, the Federal Circuit used the term
`“improvements” to refer to the inventive concepts: “[Patent owner] argues that the claimed combination improves
`computer functionality through the elimination of redundancy and the one-to-many editing feature, which provides
`inventive concepts. The specification of the '713 patent discusses the state of the art at the time the patent was filed
`and the purported improvements of the invention. . . . The specification explains that the claimed improvement
`increases efficiency and computer functionality over the prior art systems.” Berkheimer, 881 F.3d at 1369; see also
`id. at 1370 (“[T]here is at least a genuine issue of material fact in light of the specification regarding whether claims
`4–7 archive documents in an inventive manner that improves these aspects of the disclosed archival system.”).
`10 Philips discussed CosmoKey twice in its opening brief. See Dkt. 361 at 10, 14.
`
`9
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`

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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 14 of 26
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`simpler devices.” Id. Indeed, according to the specification it was “an object of the invention to
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`provide an authentication method that is easy to handle and can be carried out with mobile devices
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`of low complexity.” Id. However, the representative claim (reproduced below) claims the inventive
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`concept (i.e. the last four steps of the claim) without reciting ipsis verbis any of the “reasons why”
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`these steps made the claim as a whole unconventional:
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`A method of authenticating a user to a transaction at a terminal, comprising
`the steps of:
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`transmitting a user identification from the terminal to a transaction partner
`via a first communication channel,
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`providing an authentication step in which an authentication device uses a
`second communication channel for checking an authentication function that
`is implemented in a mobile device of the user,
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`as a criterion for deciding whether the authentication to the transaction shall
`be granted or denied, having the authentication device check whether a
`predetermined time relation exists between the transmission of the user
`identification and a response from the second communication channel,
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`ensuring that the authentication function is normally inactive and is
`activated by the user only preliminarily for the transaction,
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`ensuring that said response from the second communication channel
`includes information that the authentication function is active, and
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`thereafter ensuring that the authentication function is automatically
`deactivated.
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`Id. at 1094. For example, the claim only recites that “a mobile device of the user” be used to
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`implement the method, there is no limitation requiring that said mobile device be a “simpler
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`device” or a “mobile device[] of low complexity.” Likewise there is no limitation that requires
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`“fewer resources” or “less user interaction”, yet the Federal Circuit still found that the
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`10
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`Case 1:19-cv-11586-FDS Document 404 Filed 10/21/22 Page 15 of 26
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`representative claim “recite[d] an inventive concept” because the claim as a whole encompassed
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`the inventive concept explained in the specification. Id. at 1099.
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`Similarly, the Federal Circuit’s recent opinion in Cooperative Entertainment11 only further
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`illustrates that claims themselves do not need to recite the “reasons why” they are unconventional.
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`Cooperative Entertainment v. Kollective Tech., 50 F.4th 127 (Fed. Cir. 2022). In Cooperative
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`Entertainment, the Federal Circuit found two alleged inventive concepts captured by the claims:
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`(1) a “required dynamic P2P (peer-to-peer) network wherein multiple peer nodes consume the
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`same content and are configured to communicate outside the [content distribution networks]” and
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`(2) requiring that “trace routs be used in content segmentation.” Id. at 131. The Federal Circuit
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`noted that the specification and the patent owner’s amended complaint detailed how “claim 1’s
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`dynamic P2P network structure [was] different from and improves upon the prior art” including
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`that it: “provide[d] for smooth playback and avoid[ed] stuttering problems or delays or buffering
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`problems”, “save[d] time, improve[d] redundancy”, “reduce[d] or eliminate[d] costs for content
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`delivery”, and “leveraged and used” the computing capacity of client devices “to the maximum
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`extent”. Id. at 132. However, none of these benefits that flowed from the inventive concept were
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`recited in the asserted claims themselves. See Ex. B, U.S. Patent No. 9,432,452 at claims 1-5. None
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`of the claims refer to smooth playback, buffering, costs or computing capacity. Id. Indeed, the
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`Federal Circuit specifically found that the patent owners’ “allegations related to system capacity
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`[were] plausibly tethered” to claim 1, despite the fact that (as the district court had noted)
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`“capacity” was used only twice in the entire specification and does not appear at all in claim 1. Id.
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`at 131; Cooperative Entertainment v. Kollective Tech., 544 F.Supp.3d 890, 897 (N.D. Cal. 2021).
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`The Federal Circuit concluded that the asserted claims “recite[s] a specific network structure, the
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`11 The Federal Circuit’s opinion in Cooperative Entertainment was published on September