VB ASSETS, LLC,
`
`
`
`
`
`AMAZON.COM, INC., AMAZON.COM
`LLC, AMAZON WEB SERVICES, INC.,
`A2Z DEVELOPMENT CENTER, INC.
`D/B/A LAB126, RAWLES LLC, AMZN
`MOBILE LLC, AMZN MOBILE 2 LLC,
`AMAZON.COM SERVICES, INC. F/K/A
`AMAZON FULFILLMENT SERVICES,
`INC. and AMAZON DIGITAL SERVICES
`LLC,
`
`
`
`Plaintiff,
`
`
`
`v.
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`
`
`Defendants.
`
`
`
`
`
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`
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`
`
`
`
`
`
`C.A. No. 19-1410 (MN)
`
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`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 1 of 17 PageID #: 1225
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`MEMORANDUM ORDER
`
`At Wilmington this 16th day of September 2020:
`
`As announced at the hearing on August 20, 2020, IT IS HEREBY ORDERED that
`
`Defendants Amazon.com, Inc., Amazon.com LLC, Amazon Web Service, Inc., A2Z Development
`
`Center, Inc. d/b/a/ Lab126, Rawles LLC, AMZN Mobile LLC, AMZN Mobile 2 LLC,
`
`Amazon.com Service, Inc. f/k/a Amazon Fulfillment Services, Inc., and Amazon Digital Services
`
`LLC’s (collectively, “Amazon”) Motion to Dismiss First Amended Complaint Pursuant to Federal
`
`Rule of Civil Procedure 12(b)(6) (D.I. 25) is DENIED.
`
`
`
`Amazon moved to dismiss the operative complaint in C.A. No. 19-1410 pursuant to Rule
`
`12(b)(6) of the Federal Rules of Civil Procedure, alleging that the claims of U.S. Patent Nos.
`
`8,073,681 (“the ’681 Patent”), 9,015,049 (“the ’049 Patent”) (collectively “the Baldwin Patents”),
`
`9,626,703 (“the ’703 Patent” or “the Kennewick Patent”), 7,818,176 (“the ’176 Patent”), 8,886,536
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 2 of 17 PageID #: 1226
`
`(“the ’536 Patent”), and 9,269,097 (“the ’097 Patent”) (collectively “the “Freeman Patents”) are
`
`invalid as claiming ineligible subject matter under 35 U.S.C. § 101. Defendants’ motion was fully
`
`briefed as of December 4, 2019, (see D.I. 26, 27, 28), and the Court received further submissions
`
`regarding which Supreme Court or Federal Circuit case each party contends is analogous to the
`
`claims at issue in Defendants’ motion as related to the § 101 arguments, (see, D.I. 51, 52).
`
`The Court carefully reviewed all submissions in connection with Defendants’ motion,
`
`heard oral argument (D.I. 56) and applied the following legal standard in reaching its decision:
`
`I.
`
`LEGAL STANDARDS
`
`A. Motion to Dismiss for Failure to State a Claim
`
`In ruling on a motion to dismiss pursuant to Rule 12(b)(6), the Court must accept all well-
`
`pleaded factual allegations in the complaint as true and view them in the light most favorable to
`
`the plaintiff. See Mayer v. Belichick, 605 F.3d 223, 229 (3d Cir. 2010); see also Phillips v. Cnty.
`
`of Allegheny, 515 F.3d 224, 232-33 (3d Cir. 2008). “[A] court need not ‘accept as true allegations
`
`that contradict matters properly subject to judicial notice or by exhibit,’ such as the claims and the
`
`patent specification.” Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed.
`
`Cir. 2017) (quoting Anderson v. Kimberly-Clark Corp., 570 F. App’x 927, 931 (Fed. Cir. 2014)).
`
`Dismissal under Rule 12(b)(6) is only appropriate if a complaint does not contain “sufficient
`
`factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft
`
`v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007));
`
`see also Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). “[P]atent eligibility can
`
`be determined at the Rule 12(b)(6) stage . . . when there are no factual allegations that, taken as
`
`true, prevent resolving the eligibility question as a matter of law.” Aatrix Software, Inc. v. Green
`
`Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
`
`2
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 3 of 17 PageID #: 1227
`
`B.
`
`Patent-Eligible Subject Matter
`
`Section 101 of the Patent Act provides that anyone who “invents or discovers any new and
`
`useful process, machine, manufacture, or composition of matter, or any new and useful
`
`improvement thereof” may obtain a patent. 35 U.S.C. § 101. The Supreme Court has long
`
`recognized three exceptions to the broad categories of subject matter eligible for patenting under
`
`§ 101: laws of nature, physical phenomena, and abstract ideas. Alice Corp. Pty. v. CLS Bank Int’l,
`
`573 U.S. 208, 216 (2014). These three exceptions “are ‘the basic tools of scientific and
`
`technological work’ that lie beyond the domain of patent protection.” Ass’n for Molecular
`
`Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013) (quoting Mayo Collaborative Servs.
`
`v. Prometheus Labs., Inc., 566 U.S. 66, 77-78 (2012)); see also Alice, 573 U.S. at 216. A claim to
`
`any one of these three categories is directed to ineligible subject matter under § 101. “[W]hether
`
`a claim recites patent eligible subject matter is a question of law which may contain underlying
`
`facts.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
`
`Courts follow a 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.” Alice, 573 U.S. at 217; see also Mayo, 566 U.S. at 77-78. First, at step one, the Court
`
`determines whether the claims are directed to one of the three patent-ineligible concepts. Alice,
`
`573 U.S. at 217. If the claims are not directed to a patent-ineligible concept, “the claims satisfy
`
`§ 101 and [the Court] need not proceed to the second step.” Core Wireless Licensing S.A.R.L. v.
`
`LG Elecs., Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018). If, however, the Court finds that the claims
`
`at issue are directed a patent-ineligible concept, the Court must then, at step two, search for an
`
`“inventive concept” – i.e., “an element or combination of elements that is ‘sufficient to ensure that
`
`3
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 4 of 17 PageID #: 1228
`
`the patent in practice amounts to significantly more than a patent upon the [ineligible concept]
`
`itself.’” Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S. at 72-73).
`
`1.
`
`Step One of the Alice Framework
`
`At step one of Alice, “the claims are considered in their entirety to ascertain whether their
`
`character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active
`
`Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see also Affinity Labs of Texas, LLC v.
`
`DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (step one looks at the “focus of the claimed
`
`advance over the prior art” to determine if the claim’s “character as a whole” is to ineligible subject
`
`matter). In addressing step one of Alice, the Court should be careful not to oversimplify the claims
`
`or the claimed invention because, at some level, all inventions are based upon or touch on abstract
`
`ideas, natural phenomena, or laws of nature. Alice, 573 U.S. at 217; see also McRO, Inc. v. Bandai
`
`Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp.,
`
`822 F.3d 1327, 1337 (Fed. Cir. 2016). “At step one, therefore, it is not enough to merely identify
`
`a patent-ineligible concept underlying the claim; [courts] must determine whether that patent-
`
`ineligible concept is what the claim is ‘directed to.’” Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
`
`827 F.3d 1042, 1050 (Fed. Cir. 2016).
`
`2.
`
`Step Two of the Alice Framework
`
`At step two of Alice, in searching for an inventive concept, the Court looks at the claim
`
`elements and their combination to determine if they transform the ineligible concept into
`
`something “significantly more.” Alice, 573 U.S. at 218; see also McRO, 837 F.3d at 1312. This
`
`second step is satisfied when the claim elements “involve more than performance of ‘well-
`
`understood, routine, [and] conventional activities previously known to the industry.’” Berkheimer,
`
`881 F.3d at 1367 (citation and quotation marks omitted); see also Mayo, 566 U.S. at 73. “The
`
`4
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 5 of 17 PageID #: 1229
`
`inventive concept inquiry requires more than recognizing that each claim element, by itself, was
`
`known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic
`
`arrangement of known, conventional pieces.” Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
`
`LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Whether claim elements or their combination are
`
`well-understood, routine, or conventional to a person of ordinary skill in the art is a question of
`
`fact. Berkheimer, 881 F.3d at 1368.
`
`At both steps of the Alice framework, courts often find it useful “to compare the claims at
`
`issue with claims that have been considered in the now considerably large body of decisions
`
`applying § 101.” TMI Sols. LLC v. Bath & Body Works Direct, Inc., C.A. No. 17-965-LPS-CJB,
`
`2018 WL 4660370, at *5 (D. Del. Sept. 28, 2018) (citing Amdocs (Israel) Ltd. v. Openet Telecom,
`
`Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)); see also Enfish, 822 F.3d at 1334.
`
`I.
`
`THE COURT’S RULING
`
`The ruling to deny Defendants’ motion under Rule 12(b)(6) was announced from the bench
`
`at the conclusion of the hearing as follows:
`
`. . . thank you for the arguments today. I found them to be
`
`helpful. I am prepared to rule on the pending motion[]. I will not be
`issuing a written opinion, but I will issue an order stating my rulings.
`As I have done in other cases, before I get to the rulings, I want to
`emphasize that although I am not issuing a written opinion, we have
`followed a full and thorough process before making the decisions I
`am about to state. There was briefing on the pending motion[], there
`were additional submissions, including those discussing what each
`party viewed as the most analogous case, and there has been oral
`argument here today. All of the submissions and the arguments have
`been carefully considered.
`
`Now, as to my ruling. I am not going to read into the record
`
`my understanding of Section 101 law or the applicable pleading
`standards. I have a legal standard section that I have included in
`earlier opinions, including in Innovative Global Systems, LLC v.
`Keep Truckin, Inc., No. 19-641. I incorporate that law and adopt it
`into my ruling today, and I will also set it out in the order that I issue.
`
`5
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 6 of 17 PageID #: 1230
`
`*
`
`*
`
`*
`
`Now I turn to VB Assets. Here we have six patents [– the
`
`’681 and ’049 Patents (i.e. the Baldwin Patents), the ’703 Patent (i.e.
`the Kennewick Patent, and the ’176, ’536, and ’097 Patents (i.e. the
`Freeman Patents –] which generally relate to various aspects of
`computer voice recognition systems.
`
`Defendants have moved to dismiss pursuant to Rule
`
`12(b)(6), arguing that the asserted claims are directed to patent-
`ineligible subject matter. After reviewing the entire record, hearing
`argument, and applying the law as I understand it, I am going to
`deny the motion.
`
`As I have done previously, first I want to address
`
`representativeness of the claims discussed. In Defendants’ brief,
`they address one claim of each patent and refer to two of those
`claims as “the asserted and representative claim” for their respective
`patents with no other analysis as to how those claims (or any others)
`are actually representative. [(See D.I. 26 at 11, 15).]
`
`Plaintiff, in its answering brief, disputes that the claims
`
`specified in Defendants’ brief are representative of the other claims
`in the patents and offers some showing as to why they are not
`representative. [(See D.I. 27 at 9, 11, 13, 14-15).]
`
`I find that Defendants’ conclusory assertions that claims are
`
`representative are not sufficient, particularly in light of Plaintiff’s
`response. And, thus, the only claims that I address today are the
`ones specifically mentioned in Defendants’ motion: claim 41 of the
`’681 Patent, claim 11 of the ’049 Patent, claim 30 of the ’703 Patent,
`claim 27 of the ’176 Patent, claim 44 of the ’536 Patent, and claim
`1 of the ’097 Patent.
`
`[Claim 41 of the ’681 Patent claims:
`41. A system for providing a cooperative conversational voice user
`interface, comprising:
`a voice input device configured to receive an utterance during a
`current conversation with a user; and;
`a conversational speech engine, wherein the conversational speech
`engine includes one or more processors configured to:
`accumulate short-term shared knowledge about the current
`conversation, wherein the short-term shared knowledge
`includes knowledge about the utterance received during
`the current conversation;
`
`6
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 7 of 17 PageID #: 1231
`
`accumulate long-term shared knowledge about the user,
`wherein
`the
`long-term shared knowledge
`includes
`knowledge about one or more past conversations with the
`user;
`identify a context associated with the utterance from the
`short-term shared knowledge and the long-term shared
`knowledge;
`infer additional information about the utterance from the
`short-term shared knowledge and the long-term shared
`knowledge in response to determining that the utterance
`contains insufficient information to complete a request in
`the identified context;
`establish an intended meaning for the utterance within the
`identified identify a context based on the additional
`information inferred about the utterance; and
`generate a response to the utterance based on the intended
`meaning established within the identified context.
`Claim 11 of the ’049 Patent claims:
`11. A system for facilitating conversation-based responses, the
`system comprising:
`one or more physical processors programmed with one or more
`computer program instructions such that, when executed, the
`one or more computer program instructions cause the one or
`more physical processors to:
`receive a natural language utterance during a conversation
`between a user and the system;
`identify a first model that includes short-term knowledge
`about the conversation, wherein the short-term knowledge
`is based on one or more prior natural language utterances
`received during the conversation;
`identify, based on the short-term knowledge, context
`information for the natural language utterance;
`determine, based on
`the context
`information, an
`interpretation of the natural language utterance; and
`generate, based on the interpretation of the natural language
`utterance, a response to the natural language utterance.
`Claim 30 of the ’703 Patent claims:
`30. A system for providing voice commerce, the system comprising:
`
`7
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 8 of 17 PageID #: 1232
`
`one or more physical processors programmed with computer
`program instructions which, when executed, cause the one or
`more physical processors to:
`receive a user input comprising a natural language utterance;
`provide, without further user input after the receipt of the
`user input, the natural language utterance as an input to a
`speech recognition engine;
`obtain, without further user input after the receipt of the user
`input, one or more words or phrases recognized from the
`natural language utterance as an output of the speech
`recognition engine;
`identify, without further user input after the receipt of the
`user input, a context based at least on the one or more
`words or phrases;
`determine, without further user input identifying a product
`or service after the receipt of the user input, a first product
`or service to be purchased on behalf of a user based at least
`on the determined context;
`obtain, without further user input identifying a payment
`information after the receipt of the user input, first
`payment information with which to pay for the product or
`service;
`obtain, without further user input identifying shipping
`information after the receipt of the user input, first
`shipping information with which to deliver the product or
`service, wherein the first shipping information specifies a
`name or address of a recipient to which the product or
`service is to be delivered after the product or service is
`purchased; and
`complete, without further user input identifying a product or
`service, payment information, or shipping information
`after the receipt of the user input, a purchase transaction
`for the first product or service based on the first payment
`information and the first shipping information.
`Claim 27 of the ’176 Patent claims:
`27. A system for selecting and presenting advertisements in
`response to processing natural language utterances, comprising:
`an input device that receives a natural language utterance
`containing at least one request at an input device;
`a speech recognition engine coupled to the input device, wherein
`the speech recognition engine recognizes one or more words or
`
`8
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 9 of 17 PageID #: 1233
`
`phrases in the natural language utterance, wherein to recognize
`the words or phrases in the natural language utterance, the
`speech recognition engine is configured to:
`map a stream of phonemes contained in the natural language
`utterance to one or more syllables that are phonemically
`represented in an acoustic grammar; and
`generate a preliminary interpretation for the natural language
`utterance from the one or more syllables, wherein the
`preliminary interpretation generated from the one or more
`syllables includes the recognized words or phrases;
`a conversational language processor coupled to the speech
`recognition engine, wherein
`the conversational
`language
`processor is configured to:
`interpret
`the recognized words or phrases, wherein
`interpreting the recognized words or phrases includes
`establishing a context for the natural language utterance;
`select an advertisement in the context established for the
`natural language utterance; and
`present the selected advertisement via an output device.
`Claim 44 of the ’536 Patent claims:
`44. A computer-implemented method of providing promotional
`content related to one or more natural language utterances and/or
`responses, the method being implemented by a computer system that
`includes one or more physical processors executing one or more
`computer program instructions which, when executed, perform the
`method, the method comprising:
`receiving, at the one or more physical processors, a first natural
`language utterance;
`providing, by the one or more physical processors, a response to
`the first natural language utterance;
`receiving, at the one or more physical processors, a second natural
`language utterance relating to the first natural language
`utterance;
`identifying, by the one or more physical processors, requests
`associated with the second natural language utterance, wherein
`the requests include a first request to be processed by a first
`device associated with a user and a second request to be
`processed by a second device associated with the user,
`determining, by the one or more physical processors, promotional
`content that relates to one or more of the first request or the
`second request; and
`
`9
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 10 of 17 PageID #: 1234
`
`presenting, by the one or more physical processors, the
`promotional content to the user.
`Claim 1 of the ’097 Patent claims:
`1. A method for providing natural language processing based on
`advertisements, the method being implemented on a computer
`system having one or more physical processors executing computer
`program instructions which, when executed, perform the method,
`the method comprising:
`providing, by the computer system, an advertisement associated
`with a product or service for presentation to a user;
`receiving, at the computer system, a natural language utterance of
`the user; and
`interpreting, by the computer system, the natural language
`utterance based on the advertisement and, responsive to the
`existence of a pronoun in the natural language utterance,
`determining whether the pronoun refers to one or more of the
`product or service or a provider of the product or service.]
`
`
`One additional comment before I go through the claims. In
`
`the briefing, Plaintiff argued that the motion is premature because
`there may be claim construction disputes as to certain terms. In
`doing so, Plaintiff tells me how certain terms may be construed but
`offers nothing on whether there are disputes as to those
`constructions or, if there are, how those disputes would impact the
`analysis. [(See D.I. 27 at 3-4).] It does not ultimately matter here,
`but, for future reference, I will say that I agree with those cases that
`require parties making such arguments about claim construction to
`explain the dispute and how the dispute will impact the analysis in
`order to prevail. If you simply say what Plaintiff did here regarding
`claim construction, that will not convince me that the motion is
`premature.
`
`Now, let me turn to the “Baldwin Patents,” which share a
`
`specification but have different claims. The parties make essentially
`the same arguments with respect to the eligibility of the claims of
`both of the Baldwin Patents. Having looked at the claims, however,
`it does not seem that the same analysis applies to each of the claims.
`So I will take them separately.
`
`First, claim 41 of the ’681 Patent. At Step 1 of Alice,
`
`Defendants argue that claim 41 is directed to “the abstract idea of
`responding to a spoken request using shared information.” [(D.I. 26
`at 10).] And Defendants argue that the claims are like those found
`invalid in Bridge and Post, Inc. v. Verizon Commc’ns, Inc.[, 778 F.
`
`10
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 11 of 17 PageID #: 1235
`
`App’x 882 (Fed. Cir. 2019)]. [(See D.I. 51).] Plaintiff argues that
`claim 41 is not directed to an abstract idea but instead to an
`improvement over prior voice recognition computer systems, one
`that is more intuitive with an improved user interface for speech
`recognition that makes inferences using short-term knowledge and
`long-term knowledge. [(D.I. 27 at 7).] Plaintiff argues that the
`inventors overcame problems with prior art “Command and Control
`systems by allowing a user to directly make a request to the system
`in a normal, conversational fashion.” [(Id. at 7-8).]
`
`I agree with Plaintiff. In the Court’s view, Defendants have
`
`oversimplified claim 41 and characterized it at an improperly high
`level of abstraction, in contravention of the Federal Circuit’s
`instruction in McRO and Enfish. [See McRO, 837 F.3d at 1313;
`Enfish, 822 F.3d at 1337.] Despite Defendants’ arguments to the
`contrary, claim 41 is not like those in Bridge and Post. The focus
`of those claims was directed to tracking a user’s computer network
`activity and using information gained about the user to deliver
`targeted media, such as advertisements. The claims used persistent
`identifiers to implement targeted marketing, which the Federal
`Circuit noted is a form of ‘“tailoring information based on provided
`data,’” which has previously been held to be an abstract idea. [778
`F. App’x at 887 (quoting Intellectual Ventures I LLC v. Capital One
`Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)) (modifications
`omitted).]
`
`Here, the focus of claim 41 is an improved user interface for
`
`speech recognition, not simply tailoring advertisements based on
`data provided. Some of the limitations are functional, but the claim
`is directed to making function better using short-term knowledge
`and long-term knowledge, improving the way speech recognition
`happens. That is not an abstract idea.
`
`Because I find that claim 41 of the ’681 Patent is not directed
`
`to an abstract idea, I do not reach Step 2 of the Alice/Mayo inquiry.
`[And again for that I cite to Core Wireless Licensing S.A.R.L., 880
`F.3d at 1363.]
`
`Next, we have claim 11 of the ’049 Patent. At Alice Step 1,
`
`Defendants argue that, like claim 41, claim 11 claims “the abstract
`idea of responding to a spoken request using shared information.”
`[(E.g., D.I. 26 at 10).] Plaintiff counters that the claim “pertain[s] to
`a
`specific
`technological
`improvement,” arguing
`that
`the
`specification “disclose[s] an Automatic Speech Recognizer (‘ASR’)
`to generate a preliminary interpretation and provide that preliminary
`interpretation to a conversational speech engine for further
`
`11
`
`

`

`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 12 of 17 PageID #: 1236
`
`processing.” [(D.I. 27 at 6).] Plaintiff also argues that the “inventors
`overcame problems with Command and Control systems by
`allowing a user to directly make a request to the system in a normal,
`conversational fashion.” [(Id. at 7-8).] The parties rely on the same
`purportedly analogous cases – Bridge and Post and McRO.
`
`Here, claim 11 seems different to me than claim 41. I have
`
`concerns about this claim being framed in terms of functional
`language without any indication of how to achieve the result. But I
`cannot conclude at this stage that the claim is directed to an abstract
`idea – or, more particularly, to the abstract idea articulated by
`Defendants – instead of some improvement in technology.
`
`Thus, when the claims are considered as a whole and based
`
`on the current record, I cannot agree with Defendants that the claims
`are directed to the abstract idea asserted. It may be, however, that
`further proceedings and a more developed record lends clarity to this
`issue. I will thus follow the approach of Judge Bryson in a similar
`situation while he was sitting by designation in IDB Ventures, LLC
`v. Charlotte Russe Holdings, Inc. in the Eastern District of Texas
`and deny the motion to dismiss. [No. 2:17-660-WCB-RSP, 2018
`WL 5634231, at *5 (E.D. Tex. Oct. 31, 2018) (Bryson, J., sitting by
`designation) (on a motion to dismiss, finding that defendants failed
`to persuade the court that claims directed to an abstract idea at step
`one but leaving open possibility for further record to shed light on
`the issue).] And, in doing so, I am denying the motion with leave to
`renew it at summary judgment to the extent that the claim is still at
`issue and there are no factual issues precluding that.
`
`And, just to be complete, given that Defendants have not
`
`persuaded me on the current record that the claims are directed to
`the abstract idea of responding to a spoken request using shared
`information, I need not address Step 2 of the Alice/Mayo analysis
`here. [See Core Wireless Licensing S.A.R.L., 880 F.3d at 1363.]
`
`Now I turn to claim 30 of the “Kennewick Patent” or the
`
`’703 Patent.
`
`Defendants argue that claim 30 “claims the abstract idea of
`
`responding to a spoken request by completing a purchase.” [(E.g.,
`D.I. 26 at 15).] Plaintiff disagrees, arguing “the ’703 Patent pertains
`to using ‘context’ to accurately identify speech.” [(D.I. 27 at 10-
`11).] Context, in turn, Plaintiff argues, “connotes the accumulation
`of information in a single conversation, cross-modality awareness
`(e.g., awareness that the user providing voice input is also utilizing
`a web-interface) and potentially using cross-modality information to
`
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`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 13 of 17 PageID #: 1237
`
`build a better model for speech [recognition].” [(Id. at 10).] That
`use of context for voice communications, according to Plaintiff, is
`“a specific technological improvement over the prior art.” [(Id. at
`11).]
`
`Here, I agree with Defendants. Claim 30 is directed to a
`
`spoken request to buy something. It is claiming organizing human
`activity, an abstract idea. And it claims a result in a functional
`manner without sufficient description of how the claimed result is
`achieved. Fundamentally, the claim is focused on “determin[ing]”
`an item or service to be purchased “obtain[ing]” payment
`information, “obtaining” shipping information, and “complet[ing]”
`the purchase. This is consistent with the specification, which
`confirms that its invention generally relates to “systems and
`methods for preparing and/or completing checkout of product or
`service purchases via a single utterance.” [’703 Patent col. 1 ll. 14-
`17.]
`
`The remaining limitations – for example, “recogniz[ing]”
`
`one or more words or phrases from a natural language utterance and
`“identify[ing] . . . context based at least on” those words or phrases
`– do not offer any concrete technological improvements, but merely
`claim implementation of the abstract idea. In that way, claim 30 is
`like the ones rejected [in] Bridge and Post.
`
`Additionally, unlike the claims in McRO, which the Federal
`
`Circuit found sufficient because their “incorporation of the claimed
`rules, not the use of the computer, . . . improved the existing
`technological process by allowing the automation of further tasks,”
`[837 F.3d at 1314 (citations and modifications omitted),] claim 30
`provides no indication of how “one or more words or phrases” are
`to be “recognize[d]” nor how “context” based on those words or
`phrases is to be “identif[ied].” And, despite its argument, Plaintiff
`points to no place in the specification or claim where “context” is
`described or defined in the manner it argues should be applied.
`
`Turning to Step 2 of Alice, this claim also has issues at this
`
`step that concern me given the functional claiming. And, it may be
`the result of moving on so many patents, but in the briefing the
`parties offered just a paragraph or two on this step and today
`Plaintiff made some additional arguments that there are factual
`issues. So I think that where I come out is that my gut tells me that
`Defendants are right and this claim has a problem. But, given the
`arguments, I cannot make a finding at Step 2 as to whether there is
`or is not a factual issue. Thus, despite my current leanings, I cannot
`grant the motion and find this claim ineligible on this record.
`
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`Case 1:19-cv-01410-MN Document 57 Filed 09/16/20 Page 14 of 17 PageID #: 1238
`
`So let’s start with that patent – the ’176 Patent and claim 27.
`
`Next, we have the three “Freeman Patents.” Again, the
`
`briefing and the argument on these patents was largely the same for
`each of the claims. As with the Baldwin Patents, however, I have
`looked carefully at the claims, and my analysis for at least one of the
`patents differs from the other two.
`
`
`
`At Step 1, Defendants assert that claim 27 is directed to the
`
`abstract idea of “responding to a spoken request with an
`advertisement.” [(E.g., D.I. 26 at 17).] Plaintiff counters that the
`prosecution history of the ’176 Patent “confirm[s] that the claim[]
`pertain[s] to a specific technological improvement” – namely,
`“using a speech recognition engine to map ‘phonemes’ to ‘syllables’
`and coupling it with a conversational language processor.” [(D.I. 27
`at 12 (citing D.I. 22 ¶¶ 107-108)).]
`
`Here, I agree with Plaintiff – claim 27 is not directed to an
`
`abstract idea. In short, claim 27 is akin to those upheld by the
`Federal Circuit in McRO. The ’176 Patent describes problems with
`prior advertisement systems based on voice recognition and, in
`particular, the inability to engage users in a productive, cooperative
`dialogue to resolve requests, instead forcing users to use a fixed set
`of commands or keywords. [E.g., ’176 Patent col. 1 ll. 32-49.]
`Additionally, it discusses how the invention solves that inability by
`mapping phonemes
`to syllables and providing preliminary
`interpretations based on that mapping to a conversational language
`processor for interpretation. [E.g., id. col. 3 ll. 28-65.] That specific
`solution is the focus of claim 27. Like the claims in McRO, claim
`27 may extend to a “genus” of methods, but that genus is limited to
`methods having specific, common, captured characteristics. [See
`McRO, 837 F.3d at 1313-15.] Thus, contrary to Defendants’
`suggestion, when looked at as a whole claim 27 is directed to a
`patentable, technological improvement over the existing voice user
`interfaces.
` The claim uses limited methods in a process
`“specifically designed to achieve an improved technological result
`in conventional industry practice.” [See id. at 1316.] Under McRO,
`that is sufficient. [Id.]
`
`Next, we turn to claim 44 of the ’536 Patent and claim 1 of
`
`the ’097 Patent.
`
`At Step 1, Defendants and Plaintiff make essentially the
`
`same