Case 4:16-cv-01730-YGR Document 215 Filed 09/24/19 Page 1 of 23
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`NORTHERN DISTRICT OF CALIFORNIA
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`WINDY CITY INNOVATIONS, LLC,
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`Plaintiff,
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`v.
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`FACEBOOK, INC.,
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`Defendant,
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`Case No.: 16-CV-1730 YGR
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`ORDER GRANTING FACEBOOK’S MOTION
`FOR SUMMARY JUDGMENT; DENYING AS
`MOOT MOTIONS TO STRIKE AND EXCLUDE
`EXPERT OPINIONS
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`DKT. NOS. 153, 155, 160
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`Plaintiff Windy City Innovations, LLC brings this patent infringement action against
`defendant Facebook, Inc. stemming from alleged infringement of Windy City’s U.S. Patent No.
`8,458,245 (the “’245 patent”) entitled “Real Time Communications System” issued June 4, 2013.1
`Presently before the Court are three motions. Facebook moves for summary judgment (Dkt. No.
`160) on the grounds that: (1) Windy City lacks standing; (2) Claim 19 and its dependent claims of
`the ’245 Patent are invalid under 35 U.S.C. section 101; and (3) Facebook does not infringe the
`’245 patent directly or indirectly. In addition, both Facebook and Windy City have moved to strike
`or exclude certain opinions of their opposing experts. (Dkt. Nos. 153, 155.)
`The Court, having duly considered the pleadings and papers in support of and in
`opposition to the motion for summary judgment, along with the admissible evidence, rules as
`follows: Facebook’s Motion for Summary Judgment is GRANTED on grounds of invalidity under
`Section 101. In light of the Court’s ruling on summary judgment the motions to strike or
`exclude expert opinions are DENIED AS MOOT.
`
`1 All other patent issues originally raised in the complaint have been resolved through the
`IPR process. The ’245 Patent is a continuation of earlier applications in the patent family of U.S.
`Patent No. 5, 956,491, filed April 1, 1996.
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`Case 4:16-cv-01730-YGR Document 215 Filed 09/24/19 Page 2 of 23
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`I.
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`APPLICABLE STANDARDS
`Summary judgment is appropriate when “there is no genuine dispute as to any material
`fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A fact is
`“material” if it “might affect the outcome of the suit under the governing law,” and a dispute as
`to a material fact is “genuine” if there is sufficient evidence for a reasonable trier of fact to
`decide in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
`(1986). The moving party bears the initial burden of demonstrating the absence of a genuine
`issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). For issues where the
`opposing party has the burden of proof, the moving party need only point out “that there is an
`absence of evidence to support the nonmoving party’s case.” Id. at 325. The burden then shifts to
`the nonmoving party to set forth, by affidavit or as otherwise provided in Rule 56, “specific facts
`showing that there is a genuine issue for trial.” Liberty Lobby, 477 U.S. at 250 (internal
`quotation marks omitted). Summary judgment is mandated “against a party who fails to make a
`showing sufficient to establish the existence of an element essential to that party’s case, and on
`which that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317,
`322 (1986).
`A moving party defendant bears the burden of specifying the basis for the motion and the
`elements of the causes of action upon which the plaintiff will be unable to establish a genuine issue
`of material fact. Id. at 323. The burden then shifts to the plaintiff to establish the existence of a
`material fact that may affect the outcome of the case under the governing substantive law. Anderson
`v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In the summary judgment context, a court
`construes all disputed facts in the light most favorable to the non-moving party. Ellison v.
`Robertson, 357 F.3d 1072, 1075 (9th Cir. 2004).
`II.
`STANDING
`As a first basis for summary judgment, Facebook argues that Windy City does not have
`standing to bring this action because it never acquired ownership rights in the ‘245 Patent or
`‘491 patent family. The Court’s jurisdiction is a prerequisite to consideration of the merits of a
`case. See Steel Co. v. Citizens for a Better Env't, 523 U.S. 83, 93-102 (1998). Because the
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`Case 4:16-cv-01730-YGR Document 215 Filed 09/24/19 Page 3 of 23
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`question of standing is jurisdictional, the Court addresses Facebook’s standing arguments as a
`threshold matter. See Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1364 (Fed. Cir.
`2010) (“A court may exercise jurisdiction only if a plaintiff has standing to sue on the date it
`files suit.”) (citing Keene Corp. v. United States, 508 U.S. 200, 207 (1993)).
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`1.
`Factual Background2
`The online chat system software that is the subject of the ’245 Patent was developed
`under a Work for Hire Agreement between UtiliCorp, an energy company, and American
`Information Systems, Inc. (“AIS”). Daniel L. Marks is listed as the sole inventor on the ’245
`Patent. Marks was an employee of AIS from approximately March 1995 through December
`1995.
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`On May 17, 1995, AIS sent a Work for Hire Agreement to Brian Spencer and Tony Fung
`of Utilicorp. The Work for Hire Agreement represented AIS’s offer of a “revised contract
`regarding development of the chat forum software” and detailed the services to be provided for
`UtiliCorp by AIS. The Work for Hire Agreement stated, in part, that it was a “revised contract
`regarding development of the chat forum software.” (Declaration of Phillip E. Morton In
`Support of Motion, Exh. 2 [“Work for Hire Agreement”].) It stated that AIS would provide
`services to UtiliCorp, as follows: (1) TelnetD server modification to allow immediate entry to a
`moderated, interactive chat session with features as listed in Appendix A; (2) moderated store-
`and-forward messaging system with threading capabilities for articles. (Id.) Appendix A stated:
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`Chat server features:
`(1) user/password authentication system
`(2) telnet vt100 textual based interface
`(3) no less than 20 moderated channel capabilities
`(4) no less than 20 unmoderated channel capabilities
`(5) remote account maintenance capabilities
`(6) logging of basic user transactions
`(7) online help
`(8) who’s online feature
`(9) rotating messages feature
`(10) online profile/authentication form
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`2 Unless otherwise stated, these facts are undisputed.
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`Case 4:16-cv-01730-YGR Document 215 Filed 09/24/19 Page 4 of 23
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`(Id.) In addition, the Work for Hire Agreement specified that the intellectual property created
`was assigned to UtiliCorp as follows:
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`All software, data, technology, designs or innovations which are made,
`conceived, reduced to practice, designed or developed by AIS for the purpose of
`fulfilling its obligations under this Agreement shall be and remain the sole
`property of Client [UtiliCorp]. AIS hereby assigns to [UtiliCorp] all such
`materials and all related copyrights or other intellectual property rights pending
`a fair-market-value joint licensing agreement between [UtiliCorp] and AIS.
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`(Id. emphasis supplied, hereinafter “Assignment Clause.”)
`On June 5, 1995, Fung signed the Work for Hire Agreement on behalf of UtiliCorp and
`returned it by fax to AIS, thereby accepting the terms offered. Over the next several months,
`Marks developed the UtiliCorp Power Quality Chat system.3 AIS and UtiliCorp regularly
`communicated about the scope and progress of that assignment. (See Morton Decl. Exh. 1
`[Marks Depo.] at 222:3-223:4; 237:21-239:5.)
`On August 15, 1996, Marks entered into an assignment of rights to AIS with respect to
`the ’245 Patent.4 On March 13, 1998, AIS entered into an assignment of rights concerning the
`’245 Patent to its attorney, Peter Tryzna, in satisfaction of its unpaid legal bills. (Morton Decl.
`Exh. 3 [Tryzna Depo.] at 46-47, 52-53, 193.) Tryzna entered into an assignment of rights for the
`’245 Patent to Windy City.
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`2.
`Chain of Title
`Facebook argues that Windy City has no rights to the alleged inventions in the ’245 patent
`because Marks and AIS never acquired any rights they could assign to Tryzna, and therefore Tryzna
`never had any rights to assign Windy City. Rather, Facebook contends that the rights belonged to
`UtiliCorp based upon the Work for Hire Agreement. To this end Facebook argues as follows:
`Marks developed the chat system software to fulfill AIS’s obligations under the UtiliCorp’s Work
`for Hire Agreement and had the features described therein. According to Marks, the UtiliCorp chat
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`3 UtiliCorp filed federal trademark applications for “Power Quality Chat” and “PQ Chat” in
`June 1995. (Morton Decl. Exh 6.)
`4 The ’245 Patent was part of the ’491 Patent family and the assignment concerns the ‘491
`Patent and its continuation application. (Morton Decl. Exh. 12.)
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`Case 4:16-cv-01730-YGR Document 215 Filed 09/24/19 Page 5 of 23
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`system became the subject of the ’245 Patent. Facebook then argues that Marks’ statements should
`be considered party admissions since he was designated as Windy City’s corporate representative
`on those topics. (See Declaration of Philip E. Morton In Support of Reply Exh. 24 [Marks Depo.] at
`71:4-22, 72:23-73:16.) As further corroborating evidence, the ’245 patent itself states that a chat
`transcript produced by the UtiliCorp chat system “exemplifies the use of the present invention” and
`that the source code for the UtiliCorp chat system “provid[es] a detailed description of a preferred
`embodiment of the present invention.” (Morton Decl. Exh. 4 [“’245 Patent”] at 11:60-21:17, 4:7-59;
`see also Morton Reply Decl. Exh. 24 [Marks Depo.] at 228:18-23; 230:3-13.) Thus, Facebook
`contends all intellectual property rights in the chat system were “the sole property of” UtiliCorp
`under the Assignment Clause, and the purported transfers of rights were without effect.
`Windy City disagrees, contending that the Assignment Clause did not effect an automatic,
`present assignment to UtiliCorp, and no intellectual property rights were transferred to it. Rather,
`the Assignment Clause was a contingent promise to assign that would not come into existence until
`the parties entered into a “fair-market-value joint licensing agreement.” Because they did not do so,
`the assignment did not occur and Facebook’s lack of standing argument fails.
`A court has jurisdiction in a patent action only if the plaintiff has standing to sue on the date
`it files suit. Keene Corp., 508 U.S. at 207; Minneapolis & St. Louis R.R. v. Peoria & Perkin Union
`Ry. Co., 270 U.S. 580, 586 (1926). Thus, in a patent infringement action, the plaintiff must hold
`enforceable title to the patent at the time of filing or else face dismissal. Abraxis, 625 F.3d at 1364.
`“Although state law governs the interpretation of contracts generally, the question of
`whether a patent assignment clause creates an automatic assignment or merely an obligation to
`assign is intimately bound up with the question of standing in patent cases.” DDB Techs., L.L.C. v.
`MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008). Thus, a court must interpret a
`patent assignment clause under Federal Circuit law. Id.; see also Speedplay, Inc. v. Bebop, Inc., 211
`F.3d 124, 1253 (Fed. Cir. 2000). Where a contract expressly grants rights in future inventions, “no
`further act [is] required once an invention [comes] into being,” and “the transfer of title [occurs] by
`operation of law.” FilmTec Corp. v. Allied Signal Inc., 939 F.2d 1568, 1573 (Fed. Cir. 1991)
`(contract provided that inventor “agrees to grant and does hereby grant” all rights in future
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`inventions); see also Speedplay, 211 F.3d at 1253 (contract provided employee's inventions within
`the scope of the agreement “shall belong exclusively to [employer] and [employee] hereby conveys,
`transfers, and assigns to [employer] . . . all right, title and interest in and to Inventions”); Bd. of
`Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 841–42
`(Fed.Cir.2009) (finding present assignment in the language “I will assign and do hereby assign”),
`aff'd, 563 U.S. 776 (2011). However, an assignment subject to a “subsequent written instrument” is
`agreement to assign and not enforceable. See Abraxis, 625 F.3d at 1365. Contracts which merely
`create future obligations for the inventor result in equitable rights once the inventions are made “but
`do not by themselves ‘vest legal title to patents on the inventions in the promisee.’” DDB Techs.,
`517 F.3d at 1290 (citing Arachnid, Inc. v. Merit Indus., 939 F.2d 1574, 1576, 1581 (Fed. Cir.
`1991)). Phrasing the agreement in “will be” or “shall be” language indicates a promise to assign in
`the future, not a present assignment. See Arachnid, 939 F.2d at 1581 (where contract provided
`inventions “shall be the property of [Arachnid], and all rights thereto will be assigned . . . to
`[Arachnid]” agreement “does not rise to the level of a present assignment of an existing invention,
`effective to transfer all legal and equitable rights therein to Arachnid”).
`Here, the Assignment Clause states that “all . . . innovations which are made . . . by AIS for
`the purpose of fulfilling its obligations under this agreement shall be and remain the sole property of
`[UtiliCorp].” (Morton Decl. Exh. 2). The second sentence of the assignment however expressly
`conditioned assignment on a future event, that is, the parties entering into a joint licensing
`agreement. Thus: “AIS hereby assigns . . . intellectual property rights pending a fair-market-value
`joint licensing agreement between [UtiliCorp] and AIS.” (Emphasis supplied.) The record offers no
`evidence that a subsequent agreement giving Utilicorp the intellectual property rights to the
`invention ever materialized. To the contrary, Windy City offers the declaration of Brian Spencer,
`formerly of UtiliCorp, who was personally involved in the project as a representative of UtiliCorp.
`He informs that UtiliCorp “did not agree to or wish to own any intellectual property or inventions
`that came from the [chat system] work, or any other work, by AIS.” (Spencer Decl., Dkt. No. 131-
`4, ¶ 5.) UtiliCorp considered the idea of owning the intellectual property but ultimately decided
`against it in favor of paying only for software license fees for use of the chat system. (Id. at ¶ 6.)
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`Case 4:16-cv-01730-YGR Document 215 Filed 09/24/19 Page 7 of 23
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`After AIS delivered the basic chat system, it pitched an additional project to UtiliCorp for a more
`advanced chat system, but UtiliCorp declined. (Id.)
`In the absence of evidence of an agreement transferring rights to Utilicorp, the patent rights
`apparently remained with AIS and Marks, making the chain of title as represented by Windy City.
`At a minimum, disputed issues of material fact as to the ownership rights preclude dismissal of the
`action for lack of standing.5 Therefore, summary judgment on these grounds is DENIED.
`III.
`INVALIDITY UNDER SECTION 101
`Having found that jurisdiction is established, the Court turns to Facebook’s motion for
`summary judgment on the grounds that the ’245 Patent is invalid under section 101. Claim 19
`and its dependent claims are the only remaining claims asserted to have been infringed.
`Facebook contends that Claim 19 concerns an abstract idea implemented on generic components
`and therefore falls outside matters eligible for patent protection. Windy City counters that the
`claims at issue both recite a specific apparatus that improves upon Internet communications
`technologies in non-abstract and unconventional ways to overcome technological problems
`existing at the time and are directed to a specific improvement for computer capabilities.
`Claim 19 of the ’245 Patent recites:
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`An apparatus to receive a communication via an Internet network, the apparatus
`including:
` computer system, and
` plurality of participator computers,
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`each of the participator computers communicatively connected to the
`computer system responsive to each of the plurality of participator
`computers being associated with a respective login name and a password;
` first of the plurality of participator computers being programmed to
`communicate such that a private message is sent to the computer
`system,
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`5 The Court further notes that automatic assignment appears contrary to AIS’s
`contemporaneous understanding of the Work for Hire Agreement, as evidenced by the 1996
`assignment from Marks to AIS and the 1998 assignment from AIS to Trzyna. (Morton Decl. Exh.
`12.)
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`the private message including a pointer pointing to a communication
`that includes pre-stored data representing at least one of a video, a
`graphic, Sound, and multimedia;
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`the computer system, including a computer and a database which serves as a
`repository of tokens6 for other programs to access, thereby affording
`information to each of the participator computers which are otherwise
`independent of each other; wherein
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`the computer system communicates the private message to a second of the
`plurality of participator computers; and
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`the second participator computer is programmed to receive the
`communication provided within the private message, which originates
`from the first participator computer,
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`the communication being sent in real time and via the Internet network,
`and the second participator computer internally determines whether or
`not the second participator computer can present the pre-stored data, if
`it is determined that the second participator computer cannot present
`the pre-stored data then obtaining an agent with an ability to present the
`pre-stored data, and otherwise presenting the pre-stored data
`independent of the first participator computer.
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`(Id. at 23:7-44.)
`A.
`Section 101 Standard
`In Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208 (2014), the Supreme Court reiterated its
`two-step framework “for distinguishing patents that claim laws of nature, natural phenomena, and
`abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 217
`(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)). In the
`first step, a court determines “whether the claims at issue are directed to one of those patent-
`ineligible concepts.” Id. “The ‘abstract ideas’ category embodies the longstanding rule that an idea
`of itself is not patentable.” Id. at 218 (internal quotations omitted). Thus, “claims directed to
`‘analyzing information by steps people go through in their minds, or by mathematical algorithms,
`without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp.,
`LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (emphasis supplied). The use of
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`6 The parties have stipulated that a “database” is “a collection of logically related data,” a
`“private message” is a “message with only one intended recipient,” and a “token” is a “piece of
`information associated with user identity.” (Dkt. No. 104, Joint Claim Construction and Prehearing
`Statement, at 2.)
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`“existing computers as tools in aid of processes focused on ‘abstract ideas’” does not transform an
`otherwise abstract idea. Id. at 1353.
`If the claims at issue are determined to be abstract in the first step, they may nevertheless be
`considered patent-eligible if, in the second step, the elements of the claims individually or “‘as an
`ordered combination” add enough to “transform the nature of the claim” into a patent-eligible
`application of the abstract principle. Alice, 573 U.S. at 217 (quoting Mayo). “[A]n inventive
`concept must be evident in the claims.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
`(Fed. Cir. 2017), cert. denied, 138 S.Ct. 672 (2018); see also Accenture Global Servs. GmbH v.
`Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (patent-ineligibility focuses on the
`scope of the claims, not the length of the specification). Thus, the court must decide whether the
`claims recite something beyond “well-understood, routine, conventional activities previously known
`to the industry.” Alice, 573 U.S. at 225. As in step one, simply reciting the use of a computer
`cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Id. at 223.
`
`B.
`Alice Step-One Analysis
`On the Alice stage one question, Facebook argues Claim 19 describes nothing more than
`an abstract process for sending a message, determining how to display it, and locating the means
`to display it. The patent describes generalized steps to be performed on a computer using
`conventional computer activity and existing capabilities, without specifying how the end result is
`achieved. Facebook argues the claims of the ’245 patent do not recite how the second
`participator computer performs the function of determining whether or not it can present the pre-
`stored data, how the second participator computer obtains an agent with an ability to present the
`pre-stored data, what the agent is, or how it functions.
`Windy City counters: Claim 19 is specifically directed to an improved architecture for
`communicating online. The computer architecture of Claim 19 is not simply the means for
`implementing some other invention; the computer architecture of Claim 19 is the invention.
`Thus, Claim 19 describes the architecture behind the claimed computer improvement by
`reciting: (1) how the multimedia is sent (i.e., by pre-storing the data and utilizing a pointer
`associated with that pre-stored data); and (2) how it is transmitted to a recipient (i.e., by
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`communicating the pointer and providing the recipient with the ability to determine internally
`how to present the data). (Oppo. at 12:5-10.)
`“At step one, the court must first examine the patent's ‘claimed advance’ to determine
`whether the claims are directed to an abstract idea.” Finjan, Inc. v. Blue Coat Sys., Inc., 879
`F.3d 1299, 1303 (Fed. Cir. 2018). If the claim describes nothing more than the analysis that
`people go through in their minds, without more, it is abstract and therefore ineligible for a patent.
`Elec. Power Group, 830 F.3d at 1354. In software cases, the step-one determination often turns
`on whether the claim sets forth a specific improvement in computer capabilities versus a process
`“for which computers are invoked merely as a tool.” Finjan, 879 F.3d at 1303 (quoting Enfish,
`LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)). Courts find that patents are
`directed to an abstract idea where they do not claim a particular way of programming or
`designing software but only claim the resulting systems. Id. at 1305–06. Thus, the claim must
`state the way in which it will reach a result, not just the function or result itself. See Interval
`Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1338, 1340-47 (Fed. Cir. 2018) (“[T]he claims do
`not recite how the attention manager performs the function of determining where to display
`images in the ‘windowed’ environment so that they do not interfere with a user’s primary
`activity.”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (patents
`directed to an abstract idea because they “do not claim a particular way of programming or
`designing the software . . . but instead merely claim the resulting systems.”); Affinity Labs of
`Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258-59 (Fed. Cir. 2016) (holding that claims were
`directed to an abstract idea where they claimed “the function of wirelessly communicating
`regional broadcast content to an out-of-region recipient, not a particular way of performing that
`function”).
`The Federal Circuit has cautioned courts against “[d]escribing the claims at . . . a high
`level of abstraction and untethered from the language of the claims [since it] all but ensures that
`the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at 1337. “The ‘directed to’ inquiry .
`. . cannot simply ask whether the claims involve a patent-ineligible concept,” but rather must
`consider whether the claim “as a whole” and “in light of the specification” is directed to
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`excluded subject matter. Enfish, 822 F.3d at 1335 (emphasis in original). The patent
`specification’s statements differentiating it from prior art or “conventional” implementations
`“may bolster a conclusion that claims are directed to a non-abstract improvement of technology
`rather than an abstract idea.” Id. at 1337, 1339 (emphasis supplied). Likewise, the step-one
`inquiry may “involve looking to the specification to understand ‘the problem facing the inventor’
`and, ultimately, what the patent describes as the invention.” ChargePoint, Inc. v. SemaConnect,
`Inc., 920 F.3d 759, 767 (Fed. Cir. 2019). However, “[u]ltimately, the § 101 inquiry must focus
`on the language of the Asserted Claims themselves, and the specification cannot be used to
`import details . . . if those details are not claimed.” ChargePoint, 920 F.3d at 769 (internal
`citations and quotations omitted). “Even a specification full of technical details about a physical
`invention may nonetheless conclude with claims that claim nothing more than the broad law or
`abstract idea underlying the claims.” Id. (emphasis supplied); see also Accenture, 728 F.3d at
`1345 (“[T]he level of detail in the specification does not transform a claim reciting only an
`abstract concept into a patent-eligible system or method.”); Int'l Bus. Machines Corp. v.
`Groupon, Inc., 289 F. Supp. 3d 596, 602 (D. Del. 2017); see also Two-Way Media Ltd. v.
`Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1338-39 (Fed. Cir. 2017), cert. denied, 139 S.
`Ct. 378 (2018) (“The main problem that Two-Way Media cannot overcome is that the claim—as
`opposed to something purportedly described in the specification—is missing an inventive
`concept.”)
`Thus, in Accenture, the Federal Circuit held that a complex specification, including
`detailed software implementation guidelines, did not preclude a finding that the claim at issue
`was abstract. Accenture, 728 F.3d at 1345. “[T]he important inquiry for a § 101 analysis is to
`look to the claim.” Id. When the verbiage of computer-implementation was stripped away,
`“[t]he limitations of claim 1 [were] essentially a database of tasks, a means to allow a client to
`access those tasks, and a set of rules that are applied to that task on a given event.” Id. Where
`“the claims themselves only contain generalized software components arranged to implement an
`abstract concept on a computer” without any additional features or limits, “the complexity of the
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`implementing software or the level of detail in the specification does not transform a claim
`reciting only an abstract concept into a patent-eligible system or method.” Id.
`Similarly, in its recent ChargePoint decision, the Federal Circuit determined that a claim
`describing an apparatus for communicating a request to charge an electric vehicle to a remote
`server over a network and relay that communication to a controller device to enable or disable
`the electric supply to charge the vehicle. ChargePoint, 920 F.3d 759 at 766. The court
`concluded that the claim involved an abstract idea—communicating requests to and from a
`remote server—and that the claim itself was directed to this abstract idea. Id. at 766-770. While
`it looked to the specification to understand the problem facing the inventor and how the inventor
`described the invention, the court ultimately held that the claim language was written so broadly
`as to preempt the use of any networked charging stations and therefore impermissibly abstract.
`Id. at 769-70. “The breadth of the claim language here illustrates why any reliance on the
`specification in the § 101 analysis must always yield to the claim language . . . . and the
`specification cannot be used to import details from the specification if those details are not
`claimed.” Id. at 769.
`Here, Claim 19 describes an “apparatus” to transmit messages via the internet, including
`a computer system, a database with tokens to control access to information for participator
`computers, and private messages containing “pointers” directing to pre-stored data (video,
`graphics, sound or multimedia). Claim 19 describes the interaction of these elements as: (1) a
`first computer sending a private message; (2) a controller computer communicating the private
`message to a second computer; and (3) a second computer receiving the private message and
`determining whether it can present the data, or else obtaining an agent to present the data,
`independent of the first computer. The only example of a “pointer” in the specification is an
`Internet Uniform Resource Locators, or URL—essentially a webpage “address” enabling an
`Internet browser to locate it on the Internet—pointing to pre-stored audio and video data, which
`can be fetched and communicated to a participator computer. (’245 Patent at 5:36-41.) The
`specification describes “tokens” in the controller computer database as being used to control
`permissions, priority, moderator privileges, visibility of one user to another, and regulation of
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`user data and messages. (Id. at 8:6-58.) The only reference to “pre-stored” data other than
`tokens in the specification is to “URLs [which] can point to pre-stored audio and video
`communications, which the Controller Computer 3 can fetch and communicate to the
`Participator Computers 5.” (Id. at 5:38-41, referring to Fig. 1.)
`Windy City contends that Claim 19 describes “an improved architecture for
`communicating online,” “a particular way to implement a real-time communication system,” and
`a “very specific means or m