Case 2:18-cv-01844-GW-KS Document 487 Filed 10/01/19 Page 1 of 56 Page ID #:28239
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`**AMENDED**
`CIVIL MINUTES - GENERAL
`Case No. CV 18-1844-GW-KSx
`CV 18-2693-GW-KSx
`BlackBerry Limited v. Facebook, Inc. et al
`BlackBerry Limited v. Snap Inc.
`
`Title
`
`Date October 1, 2019
`
`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`None Present
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`None Present
`None Present
`IN CHAMBERS - FINAL RULINGS ON:
`
`PROCEEDINGS:
`
`DEFENDANTS' CONSOLIDATED MOTION FOR SUMMARY JUDGMENT OF
`INVALIDITY UNDER 35 U.S.C. § 101 (U.S. PATENT NOS. 8,296,351, 8,676,929, AND
`9,349,120) [239]
`
`DEFENDANT SNAP, INC.'S MOTION FOR LEAVE TO FILE A FIRST AMENDED
`ANSWER AND COUNTERCLAIMS TO BLACKBERRY LIMITED'S COMPLAINT
`[242]
`
`BLACKBERRY'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF U.S.
`PATENT NO. 8,825,084 [244]
`
`BLACKBERRY'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF
`INFRINGEMENT OF U.S. PATENT NOS. 8,677,250, 8,279,173, AND 9,349,120 [247]
`
`FACEBOOK DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF
`INVALIDITY UNDER 35 U.S.C. § 101
`(U.S. PATENT NO. 8,279,173) [267]
`
`DEFENDANT SNAP INC.'S MOTION FOR SUMMARY JUDGMENT OF
`INVALIDITY UNDER SECTION 101 OF U.S. PATENT NOS. 8,825,084 AND
`8,326,327 [272]
`
`Attached hereto is the Court’s Final Rulings on the above-entitled Motions.
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
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`Page 1 of 1
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`Initials of Preparer
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`JG
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`1
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`BLACKBERRY 2005
`SNAP, INC. V. BLACKBERRY LIMITED
`IPR2019-00715
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`Case 2:18-cv-01844-GW-KS Document 487 Filed 10/01/19 Page 2 of 56 Page ID #:28240
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`BlackBerry Limited v. Facebook, Inc. et al; Case No. 2:18-cv-01844-GW-(KSx)
`BlackBerry Limited v. Snap Inc.; Case No. 2:18-cv-02693-GW-(KSx)
`Final Rulings on: (1) Consolidated Defendants’ Motion for Summary Judgment as to Motion for
`Summary Judgement of Invalidity under 35 U.S.C. § 101 of US Patent Nos. 8,296,351, 8,676,929
`and 9,349,120; (2) Facebook Defendants’ Motion for Summary Judgment as to Invalidity under
`35 U.S.C. Section 101 (U.S. Patent No. 8,279,173); (3) BlackBerry’s Motion for Partial Summary
`Judgment as to Infringement of U.S. Patents 8,677,250; 8,279,173; and 9,349,120 against
`Facebook Defendants; (4) Snap’s Motion for Summary Judgment as to Invalidity under Section
`101 of U.S. Patent Nos. 8,825,084 and 8,326,327; (5) BlackBerry’s Motion for Partial Summary
`Judgment as to Infringement of U.S. Patent 8,825,084 against Snap; and (6) Snap’s Motion for
`Leave to File a First Amended Answer and Counterclaims
`
`[Portions of the parties’ briefing related to the pending motions addressed by this Ruling were filed under seal. The
`Court has h
`
`
` the portions of this Ruling that it understands as pertaining to material the parties have
`stated is confidential. The parties will be expected to state their positions as to whether the highlighted material and/or
`any other material should remain under seal in a joint report filed three days after the issuance of the sealed version
`of this Order, including by proposing any redactions they would wish made to a public version of the document.]
`
`
`I. Background
`
`Plaintiff BlackBerry Limited (“BlackBerry”) has filed suit against Facebook, Inc.,
`WhatsApp, Inc., and Instagram, LLC (collectively, “Facebook Defendants”), alleging
`infringement of nine patents. BlackBerry Limited v. Facebook, Inc. et al, Case No. 2:18-cv-01844-
`GW-(KSx) (“Facebook Case”), Docket No. 1; see also Docket No. 15 (Facebook First Amended
`Complaint). BlackBerry separately filed suit against Snap Inc., alleging infringement of six
`patents. BlackBerry Limited v. Snap Inc., Case No. 2:18-cv-02693-GW-(KSx) (“Snap Case”),
`Docket No. 1.
`
`The following six motions are pending in the case:
`(1) Consolidated Defendants’ Motion for Summary Judgment as to Motion for
`Summary Judgement of Invalidity under 35 U.S.C. § 101 of US Patent Nos.
`8,296,351, 8,676,929 and 9,349,120 (Docket No. 239);
`
`
`
`(2) Facebook Defendants’ Motion for Summary Judgment as to Invalidity under 35
`U.S.C. Section 101 (U.S. Patent No. 8,279,173) (Docket No. 267);
`
`(3) BlackBerry’s Motion for Partial Summary Judgment as to Infringement of U.S.
`Patents 8,677,250; 8,279,173; and 9,349,120 against Facebook Defendants (Docket
`No. 247);
`
`(4) Snap’s Motion for Summary Judgment as to Invalidity under Section 101 of
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`
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`U.S. Patent Nos. 8,825,084 and 8,326,327 (Docket No. 272);
`
`(5) BlackBerry’s Motion for Partial Summary Judgment as to Infringement of U.S.
`Patent 8,825,084 against Snap (Docket No. 244); and
`
`(6) Snap’s Motion for Leave to File a First Amended Answer and Counterclaims
`(Docket No. 242-4).
`
`The motions have been fully briefed.1 After briefing was completed on the motions, Facebook
`Defendants and Snap each filed one ex parte application seeking to submit an additional filing
`with respect to issues raised in some of the pending motions. Docket Nos. 353, 369. A hearing
`was held on the motions on September 5, 2019 and the matters were taken under submission.2
`For the reasons stated in this Order, the Court would rule as follows:
`(1) GRANT-IN-PART and DENY-IN-PART Consolidated Defendants’ Motion
`for Summary Judgment as to Motion for Summary Judgement of Invalidity under
`35 U.S.C. § 101 of US Patent Nos. 8,296,351, 8,676,929 and 9,349,120 (Docket
`No. 239);
`
`(2) DENY Facebook Defendants’ Motion for Summary Judgment as to Invalidity
`under 35 U.S.C. Section 101 (U.S. Patent No. 8,279,173) (Docket No. 267);
`
`(3) DENY BlackBerry’s Motion for Partial Summary Judgment as to Infringement
`of U.S. Patents 8,677,250; 8,279,173; and 9,349,120 against Facebook Defendants
`(Docket No. 247) and DENY AS MOOT Facebook Defendants’ ex parte
`application to file a surreply regarding motion (Docket No. 353);
`
`(4) GRANT Snap’s Motion for Summary Judgment as to Invalidity under Section
`101 of U.S. Patent Nos. 8,825,084 and 8,326,327 (Docket No. 272);
`
`(5) DENY AS MOOT BlackBerry’s Motion for Partial Summary Judgment as to
`Infringement of U.S. Patent 8,825,084 against Snap (Docket No. 244); and
`
`(6) DENY AS MOOT Snap’s Motion for Leave to File a First Amended Answer
`and Counterclaims (Docket No. 242-4) and DENY AS MOOT Snap’s ex parte
`application to file a supplemental brief regarding motion (Docket No. 369).
`                                                            
`1 The docket numbers for the briefing on the motions addressed by this Ruling will be provided as relevant
`in the discussion sections of this Order.
`The Court notes that for sealed versions of briefing, Plaintiff’s submissions (and one of Defendants’
`submissions – see Docket No. 279) are only available as sealed declarations in support of applications to seal. Plaintiff
`has not, after the Court has granted leave to file a document under seal, “thereafter file[d] the document with whatever
`motion or other document the under-seal filing is intended to support.” See L.R. 79-5.2.2(c). The parties are expected
`to comply with this local rule requirement in a timely manner with future sealed filings.
`2 At the hearing, a tentative ruling was provided to the parties regarding the Court’s tentative thoughts on
`the pending motions.
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`II. Legal Standard
`A. Summary Judgment
`Summary judgment shall be granted when a movant “shows that there is no genuine issue
`as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ.
`P. 56(a); see also Miranda v. City of Cornelius, 429 F.3d 858, 860 n.1 (9th Cir. 2005). As to
`materiality, “[o]nly disputes over facts that might affect the outcome of the suit under the
`governing law will properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby,
`Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is “genuine” if there is sufficient
`evidence for a reasonable jury to return a verdict for the nonmoving party. Id.
`To satisfy its burden at summary judgment, a moving party without the burden of
`persuasion “must either produce evidence negating an essential element of the nonmoving party’s
`claim or defense or show that the nonmoving party does not have enough evidence of an essential
`element to carry its ultimate burden of persuasion at trial.” Nissan Fire & Marine Ins. Co. v. Fritz
`Cos., Inc., 210 F.3d 1099, 1102 (9th Cir. 2000); see also Devereaux v. Abbey, 263 F.3d 1070, 1076
`(9th Cir. 2001) (en banc); Fairbank v. Wunderman Cato Johnson, 212 F.3d 528, 532 (9th Cir.
`2000).
`
`If the party moving for summary judgment meets its initial burden of
`identifying for the court the portions of the materials on file that it believes
`demonstrate the absence of any genuine issue of material fact, the nonmoving
`party may not rely on the mere allegations in the pleadings in order to preclude
`summary judgment[, but instead] must set forth, by affidavit or as otherwise
`provided in Rule 56, specific facts showing that there is a genuine issue for
`trial.
`
`T.W. Elec. Serv., Inc., v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987) (internal
`citations and quotation marks omitted). In judging evidence at the summary judgment stage, the
`court does not make credibility determinations or weigh conflicting evidence, and views all
`evidence and draws all inferences in the light most favorable to the non-moving party. See id. at
`630-31 (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986)); see also
`Hrdlicka v. Reniff, 631 F.3d 1044 (9th Cir. 2011); Motley v. Parks, 432 F.3d 1072, 1075 n.1 (9th
`Cir. 2005) (en banc).
`Alternatively, a moving party with the burden of persuasion must establish “beyond
`controversy every essential element of its [claim or defense]” to satisfy its burden
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`at summary judgment. S. Cal. Gas Co. v. City of Santa Ana, 336 F.3d 885, 888 (9th Cir. 2003).
`Therefore, in order to defeat such a motion, the nonmoving party need only raise a genuine issue
`of dispute on a single element of the claim.
`B. Patent Eligibility under 35 U.S.C. § 101
`An invention or a discovery is patentable if it is a “new and useful process, machine,
`manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C.
`§ 101. “In choosing such expansive terms . . . Congress plainly contemplated that the patent laws
`would be given wide scope.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). Still, the
`Supreme Court has identified exceptions to this wide scope to distinguish patents that claim the
`building blocks of human ingenuity, which are ineligible for patent protection, from those that
`“integrate the building blocks into something more.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
`U.S. 208, 217 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
`89 (2012)) (internal quotations omitted). These exceptions to patent protection are “laws of nature,
`natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981). While the
`boundaries of the judicial exceptions remain subject to further development, the Supreme Court
`has clearly delineated the policy underlying those exceptions: avoiding patents that “too broadly
`preempt the use of a natural law [or abstract idea].” Mayo, 566 U.S. at 73. Thus, patent law should
`“not inhibit further discovery by improperly tying up the future use of laws of nature [or abstract
`ideas].” Id. at 85.
`In Mayo, the Supreme Court “set forth a framework for distinguishing patents that claim
`laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible
`applications of those concepts.” Alice, 573 U.S. at 217. The first step is to ask “whether the claims
`at issue are directed to one of those patent-ineligible concepts.” Id. If not, the claims fall within
`the scope of § 101 and are patent-eligible. If the claims are directed to one of the exceptions, the
`next step is to search for an “inventive concept” that is “sufficient to ensure that the patent in
`practice amounts to significantly more than a patent upon the natural law itself.” Mayo, 566 U.S.
`at 72-73. In doing so, a court must “consider the elements of each claim both individually and ‘as
`an ordered combination’ to determine whether the additional elements ‘transform the nature of the
`claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-
`79). If, in considering the claim elements individually and as an ordered combination, they merely
`recite well-understood, routine, and conventional steps, they will not constitute an inventive
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`Case 2:18-cv-01844-GW-KS Document 487 Filed 10/01/19 Page 6 of 56 Page ID #:28244
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`concept for patent eligibility purposes. Aatrix Software, Inc. v. Green Shades Software, Inc., 882
`F.3d 1121, 1128 (Fed. Cir. 2018). “Whether the claim elements or the claimed combination are
`well-understood, routine, conventional is a question of fact.” Id.; see also Berkheimer v. HP Inc.,
`881 F.3d 1360, 1368-69 (Fed. Cir. 2018) (“Like indefiniteness, enablement, or obviousness,
`whether a claim recites patent eligible subject matter is a question of law which may contain
`underlying facts.”).
`C. Patent Infringement
`A determination of patent infringement requires a two-step analysis. Markman v. Westview
`Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). The first step is to construe the claims; i.e.,
`to determine the scope and meaning of what is allegedly infringed. Id. This step is a question of
`law. Id. at 970-71. The second step is to compare the properly construed claims to the accused
`product to determine whether each of the claim limitations is met, either literally or under the
`doctrine of equivalents. Id. at 976; CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1365
`(Fed. Cir. 2002); Tex. Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1173 (Fed. Cir.
`1993) (although no literal infringement of a claim, an accused device may still infringe under the
`doctrine of equivalents.). This determination is a question of fact. Bai v. L &L Wings Inc., 160
`F.3d 1350, 1353 (Fed. Cir. 1998); Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1207 (Fed.
`Cir. 2001).
`III. Discussion Regarding 35 U.S.C. § 101 Invalidity
`
`Three of Defendants’ pending motions are motions for summary judgment of invalidity
`under 35 U.S.C. § 101. See Consolidated Defendants’ Motion for Summary Judgment as to
`Motion for Summary Judgement of Invalidity Under 35 U.S.C. § 101 of US Patent Nos. 8,296,351,
`8,676,929 and 9,349,120, Docket No. 239;3 Facebook Defendants’ Motion for Summary Judgment
`as to Invalidity Under 35 U.S.C. Section 101 (U.S. Patent No. 8,279,173), Docket No. 267;4 Snap’s
`Motion for Summary Judgment as to Invalidity Under Section 101 of U.S. Patent Nos. 8,825,084
`
`                                                            
`3 See also BlackBerry’s Opposition to Consolidated Defendants’ Motion, Docket No. 281 (public), Docket
`No. 284-1 (sealed); Consolidated Defendants’ Reply in support of Motion, Docket No. 310 (public), Docket No. 342
`(sealed); Statement of Disputed/ and Undisputed Facts regarding Consolidated Defendants’ Motion, Docket No. 310-
`1.
`
`4 See also BlackBerry’s Opposition to Facebook Defendants’ Motion, Docket No. 314 (public), Docket No.
`316-1 (sealed); Facebook Defendants’ Reply in support of Motion, Docket No. 343; Statement of Disputed and
`Undisputed Facts regarding Facebook Defendants’ Motion, Docket No. 343-1.
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`Case 2:18-cv-01844-GW-KS Document 487 Filed 10/01/19 Page 7 of 56 Page ID #:28245
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`AND 8,326,327, Docket No. 272.5
`The § 101 motions involve the following asserted patents: U.S. Patent Nos. 8,296,351 (“the
`’351 Patent”); 8,676,929 (“the ’929 Patent”); 9,349,120 (“the ’120 Patent”); 8,279,173 (“the ’173
`Patent”); 8,326,327 (“the ’327 Patent”); and 8,825,084 (“the ’084 Patent”). The parties’ § 101
`disputes are addressed in turn.6
`A. U.S. Patent No. 8,296,351
`1. Background of the Patent and the Asserted Claims
`The ’351 Patent is titled “System and Method for Pushing Information to a Mobile Device.”
`It issued on October 23, 2012.
`BlackBerry argues that Facebook Defendants infringe Claims 1, 14, and 21 of the ’351
`Patent. See Statement of Disputed Facts regarding Consolidated § 101 Motion, Docket No. 310-
`1 ¶ 22. BlackBerry argues that Snap infringes Claims 1, 2, 14, 20, and 21 of the ’351 Patent. Id.
`¶ 24.
`
`Claim 1 of the ’351 Patent recites:
`1. A system for pushing information to a mobile device, comprising:
`a proxy content server that receives information over a computer network
`from an information source and stores the information to one of
`a plurality of channels based on pre-defined information
`categories, wherein the plurality of channels comprise memory
`locations included in at least one of the proxy content server or a
`proxy content server database;
`the proxy content server to receive a feedback signal over a wireless
`network that indicates a position of the mobile device, and to use
`the feedback signal to select a channel for transmission of the
`                                                            
`5 See also BlackBerry’s Opposition to Snap’s Motion, Docket No. 272; Snap’s Reply in support of Motion,
`Docket No. 345 (public), Docket No. 364 (sealed); Statement of Disputed and Undisputed Facts Regarding Snap’s
`Motion, Docket No. 345-1.
`
`6 Some of the underlying “undisputed” facts cited in this ruling have been disputed by BlackBerry or
`Defendants. The Court has reviewed said disputes and relies only on facts that are supported by the cited evidence,
`altering the proffered facts if necessary to accurately reflect the uncontroverted evidence. To the extent that the cited
`underlying “undisputed” facts have been disputed, the Court finds that the stated disputes: (1) fail to controvert the
`proffered “undisputed” facts, (2) dispute the facts on grounds not germane to the factual statements, and/or (3) fail to
`cite evidence in support of the disputing party’s position. As such, the Court treats such facts as undisputed. Any
`proffered facts not included in this ruling were found to be: (1) improper opinions or conclusions rather than facts, (2)
`unsupported by admissible evidence, (3) irrelevant to the Court’s present analysis, or (4) some combination thereof.
`To the extent the Court uses any facts in this ruling and does not note that they are disputed, it has determined that
`they are undisputed.
`Neither party submitted evidentiary objections separated from their statement(s) of disputed facts to the other
`side’s proffered evidence.
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`information from the selected channel over the wireless network
`to the mobile device, wherein the information comprises at least
`one of static advertising information, dynamic advertising
`information, default advertising
`information, or content
`information, and wherein a combination of the static advertising
`information with one of the dynamic or default advertising
`information comprises an advertisement or an information
`bulletin.
`’351 Patent, Claim 1. Claim 2 depends from Claim 1 and states:
`2. The system of claim 1, wherein the feedback signal is generated by the
`mobile device.
`Id. at Claim 2.
`Claim 14 of the ’351 Patent is the only other independent claim of the ’351 Patent. It
`recites:
`
`14. A system for pushing information to a mobile device, comprising:
`a proxy content server that receives information over a computer network
`from an information source and stores the information to one of
`a plurality of channels based on pre-defined information
`categories, wherein the plurality of channels comprise memory
`locations included in at least one of the proxy content server or a
`proxy content server database;
`the proxy content server to select a channel in response to a triggering
`event for transmission of the information from the selected
`channel over the wireless network to the mobile device, wherein
`the information comprises at least one of static advertising
`information,
`dynamic
`advertising
`information,
`default
`advertising information, or content information, and wherein a
`combination of the static advertising information with one of the
`dynamic or default advertising information comprises an
`advertisement or an information bulletin.
`Id. at Claim 14. Claims 20 and 21 depend from Claim 14 and state:
`20. The system of claim 14, wherein the information source automatically
`transmits the information to the proxy content server.
`21. The system of claim 14, further comprising:
`the proxy content server database coupled to the proxy content server
`that stores data relating to the mobile device, wherein the data is
`also used by the proxy content server to select the channel for
`transmission over the wireless network to the mobile device.
`
`Id. at Claims 20, 21.
` 2. Mayo/Alice Step One
`At the motion to dismiss stage, the Court considered Defendants’ arguments that both the
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`Case 2:18-cv-01844-GW-KS Document 487 Filed 10/01/19 Page 9 of 56 Page ID #:28247
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`’351 and ’929 Patent are invalid under § 101. As to the ’351 Patent, the Court stated:
`Even assuming without deciding that the claims of the ’351 Patent are drawn
`to an abstract idea, factual issues preclude dismissal. Considering the claims
`and allegations in the Complaint and First Amended Complaint in the light
`most favorable to BlackBerry, the parties have submitted a factual dispute
`regarding whether the “proxy content server” and its specific architecture as
`recited in the claims provide for a well-understood, routine, and/or
`conventional computer component. Courts have found, both in the context of
`step one and step two of the patent eligibility framework, that claims directed
`to an unconventional architecture for organizing data or computer
`components may be patent eligible. [Visual Memory LLC v. NVIDIA Corp.,
`867 F.3d 1253, 1261-62 (Fed. Cir. 2017)]; Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327, 1336 (Fed. Cir. 2016); Bascom Glob. Internet Servs., Inc. v.
`AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Here, as
`BlackBerry observes, the claims refer to organizing advertising information
`into a “plurality of memory location channels” based on pre-defined
`categories. Consolidated Opposition at 15-16.
`Docket No. 68 at 11. But in a footnote, the Court further stated:
`If the proxy content server is a routine, conventional, and well-understood
`element, legal authority would suggest that at least the independent claims of
`the ’351 Patent are drawn to patent-ineligible concepts. Intellectual Ventures
`I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)
`[“Capital One Bank”] (finding claims drawn to providing tailored web pages
`patent ineligible and observing at step one, “[t]here is no dispute that
`newspaper inserts had often been tailored based on information known about
`the customer − for example, a newspaper might advertise based on the
`customer’s location.”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
`611 (Fed. Cir. 2016) (finding claims regarding recording digital images,
`classifying them, and transmitting them to a server patent-ineligible and
`observing at step one that the claims are drawn to the “concept of classifying
`an image and storing the image based on its classification.”); Return Mail,
`Inc. v. United States Postal Serv., 868 F.3d 1350, 1368 (Fed. Cir. 2017)
`(“Encoding and decoding mail recipient information − including whether the
`sender wants a corrected address − are processes that can, and have been,
`performed in the human mind.”). The Court declines to make a determination
`on the issue on the current record. Bancorp Servs., L.L.C. v. Sun Life Assur.
`Co. of Canada (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[I]t will
`ordinarily be desirable − and often necessary − to resolve claim construction
`disputes prior to a § 101 analysis, for the determination of patent eligibility
`requires a full understanding of the basic character of the claimed subject
`matter.”); Berkheimer, 881 F.3d at 1369 (declining to dismiss certain
`dependent claims at issue to the extent they presented a factual question as to
`whether they were drawn to improvements to computer functionality)[.]
`Id. at 12 n.7.
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`Case 2:18-cv-01844-GW-KS Document 487 Filed 10/01/19 Page 10 o0f56 Page ID #:28248
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`During claim construction, the parties offered the following proposed claim constructions
`
`for proxy content server:
`
`providesit to another device”
`
`Defendants’ Proposed Construction
`BlackBerry’s Proposed Construction
`“server that aggregates information from an|“a computer that receives information over a
`information source for distribution to a|
`computer network and provides it
`to another
`device”
`device”
`
`Proposed modified construction: “server that|Proposed modified construction: “a server that
`aggregates information from an information|receives information over a computer network and
`source for distribution to a device”
`
`Docket No. 157 at 10. Notably, the parties’ proposed modified constructions were very close.
`
`Both BlackBerry and Defendants agreed that a “proxy content server” wasa server, and primarily
`
`disputed BlackBerry’s proposal that it “aggregate” and “distribute” information. The Court
`
`concluded that the plain claim language itself already reflected that the proxy content server
`
`performed these functions, and it declined to construe the term. Jd. at 11-12.
`
`The Court also madethe explicit point that nothing in the claim construction order “should
`
`be deemed to suggest that the Court has reached a determination regarding whether: (1) the term
`
`‘proxy content server’ was a term coined by the inventors; or (2) a ‘proxy content server’ as
`
`claimed, including its recited functions in the claims, is a routine, conventional, and/or well-
`
`understood components.” Jd. at 12. This clarification wasin reaction to the arguments presented
`
`by the parties in their claim construction briefs and expert declarations, which purported to be
`
`driven by claim construction issues, but more often seemedto reflect the parties’ § 101 disputes.
`
`Theparties carry on with their dispute regarding the “proxy content server” now in framing
`
`their arguments at both Mayo/Alice steps, but particularly in the context ofMayo/Alice Step Two.
`
`Asa legal matter at step one, the Court agrees with Defendants that the claims considered
`
`as a whole are directed to the ideas of saving and organizing information and choosing some of
`
`that information to send to a person based on the person’slocation or a “triggering event.” These
`
`are concepts that the Federal Circuit has repeatedly held to be abstract.
`
`Asjust one preliminary example in addition to the three cited by the Court in the motion
`
`to dismiss, in Affinity Labs ofTexas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1256 (Fed. Cir. 2016),
`
`the Federal Circuit considered claims that were:
`
`directed to a broadcast system in which a cellular telephone located outside
`the range of a regional broadcaster (1) requests and receives network-based
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`content from the broadcaster via a streaming signal, (2) is configured to
`wirelessly download an application for performing those functions, and (3)
`contains a display that allows the user to select particular content.
`
`Id. The Federal Circuit rejected the idea that tailoring content based on user location was patent-
`eligible, first explaining at Mayo/Alice Step One:
`The practice of conveying regional content to out-of-region recipients has
`been employed by nearly every form of media that has a local distribution. It
`is not tied to any particular technology and can be implemented in myriad
`ways ranging from the low-tech, such as by mailing copies of a local
`newspaper to an out-of-state subscriber, to the high-tech, such as by using
`satellites to disseminate broadcasts of sporting events.
`. . .
`The ’379 patent claims the function of wirelessly communicating regional
`broadcast content to an out-of-region recipient, not a particular way of
`performing that function. While independent claim 1 refers to general
`components such as a cellular telephone, a graphical user interface, and a
`downloadable application, the claimed invention is entirely functional in
`nature . . . . There is nothing in claim 1 that is directed to how to implement
`out-of-region broadcasting on a cellular telephone. Rather, the claim is drawn
`to the idea itself.
`
`Id. at 1258. Similarly here, the claims as a whole describe using the proxy content server to collect
`and organize information, then select certain of that information for transmission to a mobile
`device based on the mobile device’s location (provided via a “feedback signal”) or a “time
`triggering event.” There is no information about how the proxy content server decides to organize
`information (i.e. how it selects “predefined information categories” for information storage) or
`how it subsequently chooses what information to send to a mobile device.
`BlackBerry strenuously argues that the claims are non-abstract. It asserts that the ’351
`Patent claims are drawn to a technical solution necessarily rooted in computer technology, and
`thus survive Mayo/Alice Step One. It argues, for instance, that the ’351 Patent “addresses an
`information synchronization problem between mobile devices and information sources.” Docket
`No. 284-1 at 7. It further states that “the proxy content server operates as a specialized gateway
`between the many information sources and mobile devices.” Id.
`The same, however, could be said of the more detailed claims invalidated by the Federal
`Circuit in Electric Power Group, which related to compiling and processing large amounts of data
`as part of a streamlined, real-time method. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
`1350, 1352 (Fed. Cir. 2016) (claims required, among many other things, “accumulating and
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`Case 2:18-cv-01844-GW-KS Document 487 Filed 10/01/19 Page 12 of 56 Page ID #:28250
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`updating the measurements from the data streams and the dynamic stability metrics, grid data, and
`non-grid data
`in
`real
`time as
`to wide area and
`local area portions of
`the
`interconnected electric power grid.”). As part of an oft-cited paragraph, the Federal Circuit
`collected cases for the proposition that “collecting information, including when limited to
`particular content (which does not change its character as information), [is] within the realm of
`abstract ideas.” Id. at 1354. The fact that the claimed methods related to processing a huge amount
`of information from many disparate sources did not seem to sway the Federal Circuit’s analysis
`(and here, there is not necessarily a requirement that the claimed server indeed process data from
`even a plurality of sources). Similarly here, at least for purpose of Mayo/Alice Step One,
`BlackBerry’s arguments simply relate to dressing up the abstract concept of collecting and
`compiling information. See id. at 1355 (stating at Step Two that “[m]erely requiring the selection
`and manipulation of information – to provide a ‘humanly comprehensible’ amount of information
`useful for users – by itself does not transform the otherwise-abstract processes of information
`collection and analysis.” (citation omitted)). BlackBerry did not discuss Electric Power at the
`hearing, although it reiterated its argument that the proxy content server’s ability to compile and
`organize data from thousands of sources supports the position that the claims are directed to a
`technological improvement.
`Importantly, although with its “gatekeeper” argument BlackBerry emphasizes that the
`claimed steps result in savings in bandwidth and processing, these results of practicing the abstract
`idea cann