Case 1:11-cv-00908-SLR-MPT Document 378 Filed 02/24/15 Page 1 of 27 PageID #: 16516
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`INTELLECTUAL VENTURES I, LLC and
`INTELLECTUAL VENTURES II LLC,
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`Plaintiffs,
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`v.
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`MOTOROLA MOBllLITY LLC,
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`Defendant.
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`Civ. No. 11-908-SLR
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`Brian E. Farnan, Esquire of Farnan, LLP, Wilmington, Delaware. Counsel for Plaintiff.
`Of Counsel: Margaret Elizabeth Day, Esquire, David L. Alberti, Esquire, Clayton
`Thompson, Esquire, Marc C. Belloli, Esquire, Yakov Zolotorev, Esquire, and Nickolas
`Bohl, Esquire of Feinberg Day Alberti & Thompson LLP.
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`Jack B. Blumenfeld, Esquire and Stephen J. Krafschik, Esquire of Morris Nichols, Arsht
`& Tunnell LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel: Candice
`Decaire, Esquire, D. Clay Holloway, Esquire, and Steven Moore, Esquire of Kilpatrick
`Townsend & Stockton LLP, and David A. Nelson, Esquire, David A. Perlson, Esquire,
`Patrick D. Curran, Esquire and Joshua L. Sohn, Esquire of Quinn Emanuel Urquhart &
`Sullivan LLP.
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`MEMORANDUM OPINION
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`Dated: FebruaryJJ\--, 2015
`Wilmington, Delaware
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`

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`Case 1:11-cv-00908-SLR-MPT Document 378 Filed 02/24/15 Page 2 of 27 PageID #: 16517
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`R~~dge
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`I. INTRODUCTION
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`Plaintiff Intellectual Ventures I, LLC ("IV I") and Intellectual Ventures II, LLC ("IV
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`II") (collectively "IV") brought this patent infringement action against defendant Motorola
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`Mobility, Inc. ("Motorola") on October 6, 2011, alleging infringement of six patents: U.S.
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`Patent Nos. 7,810,144 ("the '144 patent"), 6,412,953 ("the '953 patent"), 7,409,450 ("the
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`'450 patent"), 7, 120,462 ("the '462 patent"), 6,557 ,054 ("the '054 patent"), and
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`6,658,464 ("the '464 patent"). (D.I. 1) Motorola answered and asserted affirmative
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`defenses of, inter alia, failure to state a claim, non-infringement, invalidity, prosecution
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`history estoppel, the equitable doctrines of waiver, acquiescence, laches and unclean
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`hands, and statutory time limitation on damages. (D.I. 10) Motorola also asserted
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`counterclaims for non-infringement and invalidity. Id.
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`On August 20, 2013, Motorola filed a motion for summary judgment of invalidity
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`(D.I. 230), and on September 10, 2013, Motorola filed a motion for summary judgment
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`of non-infringement (D.I. 252). In a memorandum opinion and order dated January 2,
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`2014, the court issued its claim construction and resolved several summary judgment
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`motions, finding no infringement of claim 26 of the '144 patent and invalidity of claim 1
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`of the '953 patent based on the asserted prior art. (D. I. 284) On January 8, 2014, the
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`court limited trial to those issues related to the '462, '054 and '464 patents. (D.I. 288)
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`A nine-day jury trial was held on January 24 - February 4, 2014. The trial
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`resulted in a hung jury and a mistrial was declared. The court granted in part and
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`denied in part Motorola's motion for judgment as a matter of law, granting judgment as a
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`matter of law with respect to invalidity of claims 1 and 8 of the '464 patent. (D.I. 319)
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`

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`Case 1:11-cv-00908-SLR-MPT Document 378 Filed 02/24/15 Page 3 of 27 PageID #: 16518
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`The court set two new trial dates for the '144, '450, 054 and '462 patents, with the first
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`trial to begin on March 16, 2015. Presently before the court is Motorola's supplemental
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`brief on patent eligibility and indefiniteness. 1 (D.I. 360) The court has jurisdiction
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`II. BACKGROUND
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`A. The Parties
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`IV I and IV II are limited liability companies organized and existing under the laws
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`of the State of Delaware, with their principal place of business in Bellevue, Washington.
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`(D.I. 1 at,-{,-{ 1-2) IV I owns the '144, '450, '054, and '464 patents. (Id. at,-{,-{ 10, 14, 18,
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`20) IV II is the exclusive licensee of the '953 patent and owns the '462 patent. (Id. at W
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`12, 16)
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`Motorola is a corporation organized and existing under the laws of the State of
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`Delaware, with its principal place of business in Libertyville, Illinois. (Id. at,-{ 3) It
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`makes, manufactures, and/or sells the accused products. (Id. at,-{ 28)
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`B. The Patents
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`1. The '054 Patent
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`The '054 patent, titled "Method and System for Distributing Updates by
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`Presenting Directory of Software Available for User Installation That Is Not Already
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`Installed on User Station," was filed April 20, 2000 and issued April 29, 2003. 2 The
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`1 The parties submitted briefing pursuant to the court's January 6, 2015 letter. (D. I.
`358)
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`2 The '054 patent is a continuation of application no. 08/982, 157 filed on December
`1, 1997, which is a continuation of application no. 08/641,010, filed on April 29, 1996,
`2
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`invention relates to "a method and corresponding system for distributing updates for a
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`plurality of different products to a plurality of uncoordinated user stations via a non-
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`proprietary network." ('054 patent, col. 1 :30-34) The claimed invention purports to
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`improve upon the "expenseO" and "time lag" of information products "replicated in
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`computer-readable form on magnetic or optical storage diskettes" by utilizing "electronic
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`transfer from a central computer server to a subscriber's computer over common
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`carriers or wide area networks." (Id. at col. 1 :40-62)
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`2. The '450 Patent
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`The '450 patent, titled "Transmission Control Protocol/Internet Protocol (TCP/IP)
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`Packet-Centric Wireless Point to Multi-Point (PTMP) Transmission System
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`Architecture," was filed February 28, 2005 and issued August 5, 2008.3 The '450 patent
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`claims a system and method for "coupling one or more subscriber customer premise
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`equipment (CPE) stations with a base station over a shared wireless bandwidth using a
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`packet-centric protocol; and allocating the wireless bandwidth and system resources
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`based on contents of packets." ('450 patent, Abstract) The invention specifically relates
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`to "a system and method for implementing a QoS [quality of service] aware wireless
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`point-to-multi-point transmission system." (Id. at col. 3:27-30)
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`3. The '144 Patent
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`which is a continuation-in-part of application no. 08/251,824, filed on May 31, 1994,
`which is a continuation of application no. 08/251,724 filed on May 31, 1994.
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`3 The '450 patent is a continuation of application no. 09/349,477, filed on July 9,
`1999, which claims priority from provisional application no. 60/092,452 filed on July 10,
`1998.
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`3
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`

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`The '144 patent, titled "File Transfer System for Direct Transfer Between
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`Computers," was filed on April 7, 2009 and issued on October 5, 2010. 4 The '144
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`patent "relates to transferring computer files electronically from one location to another,
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`and more particularly to electronic transfer of computer files directly between two or
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`more computers or computing devices." ('144 patent, col. 2:4-7)
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`Ill. STANDARDS OF REVIEW
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`A. Summary Judgment
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`"The court shall grant summary judgment if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law." Fed. R. Civ. P. 56(a). The moving party bears the burden of
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`demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus.
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`Co. v. Zenith Radio Corp., 415 U.S. 574, 586 n.10 (1986). A party asserting that a fact
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`cannot be - or, alternatively, is - genuinely disputed must support the assertion either
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`by citing to "particular parts of materials in the record, including depositions, documents,
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`electronically stored information, affidavits or declarations, stipulations (including those
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`made for the purposes of the motions only), admissions, interrogatory answers, or other
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`materials," or by "showing that the materials cited do not establish the absence or
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`presence of a genuine dispute, or that an adverse party cannot produce admissible
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`evidence to support the fact." Fed. R. Civ. P. 56(c)(1 )(A) & (B). If the moving party has
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`4 The '144 patent is a continuation of application no. 10/657 ,221, filed on September
`9, 2003, which is a continuation of application no. 10/167,697, filed on June 13, 2002,
`which is a continuation of application no. 09/694,472, filed on October 24, 2000, which
`is a continuation of application no. 09/190,219, filed on November 13, 1998, which
`claims priority to provisional application no. 60/065,533, filed on November 13, 1997.
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`4
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`carried its burden, the nonmovant must then "come forward with specific facts showing
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`that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation
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`marks omitted). The court will "draw all reasonable inferences in favor of the
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`nonmoving party, and it may not make credibility determinations or weigh the evidence."
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`Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
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`To defeat a motion for summary judgment, the non-moving party must "do more
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`than simply show that there is some metaphysical doubt as to the material facts."
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`Matsushita, 475 U.S. at 586-87; see a/so Podohnik v. U.S. Postal Service, 409 F.3d
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`584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more
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`than just bare assertions, conclusory allegations or suspicions to show the existence of
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`a genuine issue") (internal quotation marks omitted). Although the "mere existence of
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`some alleged factual dispute between the parties will not defeat an otherwise properly
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`supported motion for summary judgment," a factual dispute is genuine where "the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party."
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`Anderson v. Liberty Lobby, Inc., 411 U.S. 242, 247-48 (1986). "If the evidence is merely
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`colorable, or is not significantly probative, summary judgment may be granted." Id. at
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`249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 411 U.S. 317, 322
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`(1986) (stating entry of summary judgment is mandated "against a party who fails to
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`make a showing sufficient to establish the existence of an element essential to that
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`party's case, and on which that party will bear the burden of proof at trial").
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`B. Invalidity
`1. 35 u.s.c. § 101
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`5
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`

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`The standard of proof to establish the invalidity of a patent is "clear and
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`convincing evidence." Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054,
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`1058 (Fed. Cir. 2004); see also, U/tramercia/, Inc. v. Hulu, LLC, 722 F.3d 1335, 1338-39
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`(Fed. Cir. 2013), vacated sub nom. WildTangent, Inc. v. Ultramercial, LLC, -
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`U.S. -
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`-, 134 S.Ct. 2870 (2014 ). Whether a claim is drawn to patent-eligible subject matter
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`under 35 U.S.C. § 101 is a threshold inquiry to be determined as a matter of law in
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`establishing the validity of the patent. CLS Bank Int'/ v. Alice Corp. Pty. Ltd., 717 F .3d
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`1269, 1277 (Fed. Cir. 2013), aff'd, Alice Corp. Pty. Ltd. v. CLS Bank Int'/, - U.S.-,
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`134 S.Ct. 2347 (2014); In re Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008) (citing In re
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`Comiskey, 499 F.3d 1365, 1371 (Fed. Cir. 2007)) ("Bilski f'). Section 101 provides that
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`patentable subject matter extends to four broad categories, including: "new and useful
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`process[ es], machine[s], manufacture, or composition[s] of matter." 35 U.S.C. § 101;
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`see also Bilski v. Kappas, 561 U.S. 593, 601 (2010) ("Bilski II"); Diamond v.
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`Chakrabarty, 447 U.S. 303, 308 (1980). A "process" is statutorily defined as a "process,
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`art or method, and includes a new use of a known process, machine manufacture,
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`composition of matter, or material." 35 U.S.C. § 100(b). The Supreme Court has
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`explained:
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`A process is a mode of treatment of certain materials to
`produce a given result. It is an act, or a series of acts,
`performed upon the subject-matter to be transformed and
`reduced to a different state or thing. If new and useful, it is
`just as patentable as is a piece of machinery. In the
`language of the patent law, it is an art. The machinery
`pointed out as suitable to perform the process may or may
`not be new or patentable; whilst the process itself may be
`altogether new, and produce an entirely new result. The
`process requires that certain things should be done with
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`6
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`certain substances, and in a certain order; but the tools to be
`used in doing this may be of secondary consequence.
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`Diamond v. Diehr, 450 U.S. 175, 182-83 (1981) (internal quotations omitted).
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`The Supreme Court recognizes three "fundamental principle" exceptions to the
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`Patent Act's subject matter eligibility requirements: "laws of nature, physical
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`phenomena, and abstract ideas." Bilski II, 561 U.S. at 601. The Supreme Court has
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`held that "[t]he concepts covered by these exceptions are 'part of the storehouse of
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`knowledge of all men ... free to all men and reserved exclusively to none.'" Bilski II, 561
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`U.S. at 602 (quoting Funk Bros. Seed Co. v. Kala lnoculant Co., 333 U.S. 127, 130
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`(1948)). "[T]he concern that drives this exclusionary principle is one of pre-emption,"
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`that is, "that patent law not inhibit further discovery by improperly tying up the future use
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`of these building blocks of human ingenuity." Alice, 134 S.Ct. at 2354 (citing Bilski II,
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`561 U.S. at 611-12 and Mayo Collaborative Services v. Prometheus Labs., Inc., 566
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`U.S.-, 132 S.Ct. 1289, 1301 (2012)).
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`Although a fundamental principle cannot be patented, the Supreme Court has
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`held that "an application of a law of nature or mathematical formula to a known
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`structure or process may well be deserving of patent protection," so long as that
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`application would not preempt substantially all uses of the fundamental principle. Bilski
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`II, 561 U.S. at 612 (quoting Diehr, 450 U.S. at 187) (internal quotations omitted); Bilski I,
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`545 F .3d at 954. The Supreme Court recently reiterated the
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`framework for distinguishing patents that claim laws of
`nature, natural phenomena, and abstract ideas from those
`that claim patent-eligible applications of those concepts.
`First, we determine whether the claims at issue are
`directed to one of those patent-ineligible concepts. If so,
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`7
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`we then ask, "[w]hat else is there in the claims before us?"
`To answer that question, we 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(cid:173)
`eligible application. We have described step two of this
`analysis as a search for an '"inventive concept"'-i.e., an
`element or combination of elements that is "sufficient to
`ensure that the patent in practice amounts to significantly
`more than a patent upon the [ineligible concept] itself."
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`Alice Corp., 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1294, 1296-98).5
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`"[T]o transform an unpatentable law of nature into a patent-eligible application of
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`such a law, one must do more than simply state the law of nature while adding the
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`words 'apply it."' Mayo, 132 S.Ct. at 1294 (citing Gottschalk v. Benson, 409 U.S. 63, 71-
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`72 (1972)). It is insufficient to add steps which "consist of well-understood, routine,
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`conventional activity," if such steps, "when viewed as a whole, add nothing significant
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`beyond the sum of their parts taken separately." Id. at 1298. "Purely 'conventional or
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`obvious' '[pre]-solution activity' is normally not sufficient to transform an unpatentable
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`law of nature into a patent-eligible application of such a law." Id. (citations omitted).
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`Also, the "prohibition against patenting abstract ideas 'cannot be circumvented by
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`attempting to limit the use of the formula to a particular technological environment' or
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`adding 'insignificant postsolution activity."' Bilski II, 561 U.S. at 610-11 (citation
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`5The machine-or-transformation test still may provide a "useful clue" in the second
`step of the Alice framework. Ultramercial, Inc. v. Hulu, LLC, Civ. No. 2010-1544, 2014
`WL 5904902, at *6 (Fed. Cir. November 14, 2014) (citing Bilski II, 561 U.S. at 604 and
`Bancorp Servs., L.L.C., v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed.
`Cir. 2012). A claimed process can be patent-eligible under§ 101 if: "(1) it is tied to a
`particular machine or apparatus, or (2) it transforms a particular article into a different
`state or thing." In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en bane), aff'd on other
`grounds, Bilski II, 561 U.S. 593.
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`8
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`

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`Case 1:11-cv-00908-SLR-MPT Document 378 Filed 02/24/15 Page 10 of 27 PageID #: 16525
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`omitted). For instance, the "mere recitation of a generic computer cannot transform a
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`patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S.Ct. at 2358.
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`"Given the ubiquity of computers, wholly generic computer implementation is not
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`generally the sort of 'additional featur[e]' that provides any 'practical assurance that the
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`process is more than a drafting effort designed to monopolize the [abstract idea] itself.'"
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`Id. (citations omitted).
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`The court finds the comparison of Bancorp Servs., LLC v. Sun Life Assurance
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`Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012), to SiRF Tech., Inc. v. Int'/ Trade
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`Comm'n, 601 F.3d 1319 (Fed. Cir. 2010), instructive. In Bancorp, where the asserted
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`patents disclosed "specific formulae for determining the values required to manage a
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`stable value protected life insurance policy," the district court granted summary
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`judgment of invalidity under§ 101. Bancorp, 687 F.3d at 1270. Under the machine
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`prong of the machine or transformation test, the district court found that "the specified
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`computer components are no more than objects on which the claimed methods operate,
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`and that the central processor is nothing more than a general purpose computer
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`programmed in an unspecified manner." Id. at 1273. In affirming the district court's
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`findings, the Federal Circuit explained that
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`the use of a computer in an otherwise patent-ineligible
`process for no more than its most basic function - making
`calculations or computations - fails to circumvent the
`prohibition against patenting abstract ideas and mental
`processes. As we have explained, "[s]imply adding a
`'computer aided' limitation to a claim covering an abstract
`concept, without more, is insufficient to render the claim
`patent eligible." Dealertrack, Inc. v. Huber, 674 F.3d
`1315, 1333 (Fed. Cir. 2012).
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`9
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`To salvage an otherwise patent-ineligible process, a
`computer must be integral to the claimed invention,
`facilitating the process in a way that a person making
`calculations or computations could not.
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`Id. at 1278. Ultimately, the Federal Circuit concluded that "[t]he computer required by
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`some of Bancorp's claims is employed only for its most basic function, the performance
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`of repetitive calculations, and as such does not impose meaningful limits on the scope
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`of those claims." Id. at 1278.
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`In contrast to Bancorp, the Federal Circuit in SiRF found that a GPS receiver was
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`"integral" to the claims at issue and, therefore, the machine or transformation test was
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`satisfied. SiRF, 601 F.3d at 1332. As in Bancorp, the SiRF Court emphasized that a
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`machine will only "impose a meaningful limit on the scope of a claim [when it plays] a
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`significant part in permitting the claimed method to be performed, rather than function
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`solely as an obvious mechanism for permitting a solution to be achieved more quickly,
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`i.e., through the utilization of a computer for performing calculations." Id. at 1333. After
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`noting how the GPS receiver was specifically involved in each step of the method, the
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`Court concluded that "the use of [the] GPS receiver is essential to the operation of the
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`claimed methods." Id.
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`In sum, although it is "clear that computer-based programming constitutes
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`patentable subject matter so long as the basic requirements of [35 U.S.C.] § 101 are
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`met,'' AT&T, 172 F.3d at 1360, the requirements of§ 101 as applied to this area of
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`technology have been a moving target, from the complete rejection of patentability for
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`10
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`computer programs6 to the much broader enunciation of the test in State Street Bank &
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`Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), abrogated by In
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`re Bilski, 545 F.3d 943., that is, "a computer-implemented invention was considered
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`patent-eligible so long as it produced a 'useful, concrete and tangible result."' DOR
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`Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). As instructed
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`by the Federal Circuit in DOR Holdings, the Court's most recent attempt to bring clarity
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`to this area of the law: (1) "recitation of generic computer limitations does not make an
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`otherwise ineligible claim patent-eligible," id. at 1256; (2) "mathematical algorithms,
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`including those executed on a generic computer, are abstract ideas," id.; (3) "some
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`fundamental economic and conventional business practices are also abstract ideas," id.;
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`and (4) general use of the Internet "to perform an abstract business practice (with
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`insignificant added activity)" does not pass muster under§ 101, id. at 1258. In order for
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`claims addressing "Internet-centric challenges" to be patent eligible, 7 the claims must do
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`more than
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`recite a commonplace business method aimed at processing
`business information, applying a known business process to
`the particular technological environment of the Internet, or
`creating or altering contractual relations using generic
`computer functions and conventional network operations,
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`6See, e.g., 33 Fed. Reg. 15581, 15609-10 (1968). Indeed, in his dissent in Diamond
`v. Diehr, 450 U.S. 175 (1981 ), Justice Stevens's solution was to declare all computer(cid:173)
`based programming unpatentable. Id. at 219
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`7 Although the court understands that the advent of the Internet inspired countless
`inventive ways of accomplishing routine tasks better, faster, cheaper - indeed, both the
`PTO and the Federal Circuit considered such ingenuity sufficiently inventive under §
`101 to be patent eligible - apparently such is not the case under the current legal
`reasoning.
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`11
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`such as the claims in Alice, Ultramercial, buySAFE,
`Accenture, and Bancorp.
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`Id. at 1259 (citing Alice, 134 S.Ct. at 2359; Ultramercial, 2014 WL 5904902, at *5,
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`buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); Accenture Global
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`Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013);
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`Bancorp, 687 F.3d at 1278).
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`2. 35 u.s.c. § 112, 112
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`The definiteness requirement is rooted in § 112, ~ 2, which provides that "the
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`specification shall conclude with one or more claims particularly pointing out and
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`distinctly claiming the subject matter which the applicant regards as his invention." "A
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`determination of claim indefiniteness is a legal conclusion that is drawn from the court's
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`performance of its duty as the construer of patent claims." Personalized Media Comm.,
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`LLC v. Int'/ Trade Com'n, 161 F.3d 696, 705 (Fed. Cir. 1998). Reiterating the public
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`notice function of patents, the Supreme Court recently explained that "a patent must be
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`precise enough to afford clear notice of what is claimed, thereby 'appris[ing] the public
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`of what is still open to them."' Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
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`2129 (2014) (citations omitted). In balancing the need for clarity with the inherent
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`limitations of the English language, 35 U.S.C. § 112, ~ 2 requires "that a patent's claims,
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`viewed in light of the specification and prosecution history, inform those skilled in the art
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`about the scope of the invention with reasonable certainty." Id.
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`IV. DISCUSSION
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`A.
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`Invalidity Under 35 U.S.C. § 101
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`1. The '054 Patent
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`12
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`Motorola alleges that the asserted claims8 are drawn to unpatentable subject
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`matter under 35 U.S.C. § 101. Independent claim 181, which is representative of both
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`asserted independent claims, recites:
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`181. A computer implemented method for distributing
`software updates from a remote computer system to a user
`station, the method comprising:
`
`presenting, at the user station, as a function of an
`identification of software already installed on the user
`station, a directory of software updates available for
`installation on the user station and not already installed on
`the user station;
`
`sending to the remote computer system over a
`communications network a selection of software updates for
`distribution to the user station, wherein the selection of
`software updates is selected at the user station as a function
`of the directory; and
`
`receiving from the remote computer system over the
`communications network software updates indicated by the
`selection.
`
`('054 patent, col. 72:48-63)
`
`Applying the analytical framework of Alice, the court first "determine[s] whether
`
`the claims at issue are directed to one of those patent-ineligible concepts,'' namely, laws
`
`of nature, natural phenomena, and abstract ideas. 134 S. Ct. at 2354-55. Motorola
`
`contends that the asserted claims of the '054 patent are directed to the abstract idea of
`
`"distributing software updates to a computer." (0.1. 360 at 3) In this regard, Motorola
`
`8 IV asserts independent claim 151 and the corresponding dependent claims 159
`and 162, as well as independent claim 181 and the corresponding dependent claims
`189 and 192, of the '054 patent.
`
`13
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`

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`Case 1:11-cv-00908-SLR-MPT Document 378 Filed 02/24/15 Page 15 of 27 PageID #: 16530
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`offers the following chart detailing how each step of independent claim 181 9 may be
`
`performed by a human without a computer.
`
`Claim Language
`
`Performance Without a
`Computer
`
`A user tells a software seller which
`software programs are installed on his or
`her computer. The software seller then
`tells the user which programs have an
`updated version available.
`
`181. A computer implemented method for
`distributing software updates from a
`remote computer system to a user
`station, the method comprisinq:
`(a) presenting, at the user station, as a
`function of an identification of software
`already installed on the user station, a
`directory of software updates available for
`installation on the user station and not
`already installed on the user station;
`The user tells the software seller which
`(b) sending to the remote computer
`system over a communications network a new version he or she wants.
`selection of software updates for
`distribution to the user station, wherein
`the selection of software updates is
`selected at the user station as a function
`of the directory; and
`The software seller hands to the user
`(c) receiving from the remote computer
`system over the communications network disks containing the new versions of
`software updates indicated by the
`software requested by the user.
`selection.
`
`In contrast, IV characterizes the inventive concept of the '054 patent as
`
`"automatically scanning the user's computer, presenting a directory of software for
`
`which the system has determined that an update is available, and managing the
`
`process almost entirely through the inventive transporter software." (D.I. 363 at 1) IV
`
`91ndependent claim 151 is identical to claim 181, with the exception of excluding the
`clause "and not already installed on the user station" at the end of the first limitation.
`Dependent claims 159, 162, 189 and 192 require that the software updates be
`"automatically installed" and that the "communications network" include the Internet.
`
`14
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`

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`Case 1:11-cv-00908-SLR-MPT Document 378 Filed 02/24/15 Page 16 of 27 PageID #: 16531
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`argues that the invention cannot be divorced from its computerized medium, noting that,
`
`at a minimum, specific software and hardware is needed to "present ... a directory of
`
`software updates." IV contends that the invention differs from the "conventional
`
`scenario" of a user finding, acquiring and installing updates by disclosing "a computer(cid:173)
`
`enabled process where now the operations of finding, acquiring, and installing updates
`
`are generally automated, can be performed on virtually any machine, and over a non(cid:173)
`
`proprietary network." (D.I. 363 at 4; see also D.I. 335 at 495:3-500:30)
`
`While the claims of the '054 patent do not recite a mathematical algorithm or a
`
`fundamental economic or longstanding commercial practice, they nonetheless recite
`
`nothing more than an abstraction with "no particular concrete or tangible form."
`
`U/tramercial, 2014 WL 5904902, at *4. When broken into their fundamental elements,
`
`the independent claims recite: ( 1) presenting a directory of software updates at the user
`
`station; (2) selecting and transmitting the desired software updates; and (3) receiving
`
`the requested software updates. Although IV argues that the invention consists of more
`
`than the application of an abstract concept on a computer by virtue of reciting a "specific
`
`technological solution," the claims generically recite the steps of "presenting," "sending,"
`
`and "receiving," with no description of the underlying programming. Moreover, the
`
`limitations provided by the dependent claims - that the software updates be
`
`"automatically installed on the user station" over "the Internet" - do not make the
`
`claimed invention any less abstract. As such, the court concludes that the claims are
`
`directed to the abstract idea of distributing software updates to a computer.
`
`15
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`

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`Case 1:11-cv-00908-SLR-MPT Document 378 Filed 02/24/15 Page 17 of 27 PageID #: 16532
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`Turning to step two of the Alice framework, the court examines whether the
`
`claims are limited by an "inventive concept" such that "the patent in practice amounts to
`
`significantly more than a patent upon the [ineligible concept] itself." Alice, 134 S. Ct. at
`
`2355. Here, the asserted claims recite several computer components including a
`
`"remote computer system,'' "user station," and "communications network." ('054 patent,
`
`col. 72:48-63) The specification elaborates that the "[c]ommunications network 20 can
`
`be any electronic distribution system suitable for transporting information objects ...
`
`. " (Id. at col. 8:13-21) (emphasis added) The specification also states that "[r]eferences
`
`herein to the user's station, workstation, computer or terminal will be understood to
`
`embrace any 'information appliance' or intelligent device having the basic computer-
`
`like functions of programmed logic, storage and presentation .... " (Id. at col. 27:2-6)
`
`(emphasis added) Motorola argues that the recitation of such generic computer
`
`components is insufficient to confer patent eligibility.
`
`IV responds that the very fact that the invention may be used on most computers
`
`"is one of the reasons why the '054 patent claims are inventive." (D.I. 363 at 6) The
`
`specification highlights a "flexible client interface" which operates "with any one of a
`
`number of online services by providing a generic client interface foundation ...
`
`combined with a set of translators and protocol drivers capable of communicating the
`
`user's functional requests to any one of a set of online services, using their
`
`corresponding proprietary protocols." ('054 patent, col. 24:45-54 )10 Essentially, IV
`
`101V argues that the invention cannot be abstract because the patent examiner
`allowed the patent over various methods of distributing software updates described in
`the prior art and because Motorola raised no anticipation argument against the '054
`16
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`

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`Case 1:11-cv-00908-SLR-MPT Document 378 Filed 02/24/15 Page 18 of 27 PageID #: 16533
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`argues that a computer program that functions across platforms and is capable of
`
`performing the claimed limitations is "doing far more than storing, transmitting, and
`
`receiving information." (D.I. 363 at 10)
`
`The recitation of specific hardware elements such as a "remote computer