IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:15-cv-727-JRG-RSP
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`Case No. 2:15-cv-1216-JRG-RSP
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`PERDIEMCO, LLC,
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`v.
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`INDUSTRACK LLC, et al.
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`Plaintiff,
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`Defendants.
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`Plaintiff,
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`PERDIEMCO, LLC,
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`v.
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`GPS LOGIC, LLC, et al.
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`Defendants.
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`REPORT AND RECOMMENDATION
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`Before the Court is a Motion for Judgment on the Pleadings that the Asserted Patents1
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`Claim Ineligible Subject Matter under 35 U.S.C. § 101. Dkt. No. 62.2 Also before the Court is a
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`Motion for Judgment on the Pleadings that the Claims of the Asserted Patents are Invalid under
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`1 The Asserted Patents in Case No. 2:15-cv-727 and Case No. 2:15-cv-1216 are the same. They
`are U.S. Patent Nos. 8,223,012; 8,493,207; 8,717,166; 9,003,499; and 9,071,931. These patents
`share a common specification.
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`2 Citations to the docket are to Case No. 2:15-cv-727 except where otherwise indicated. Citations
`to the docket use the page numbers assigned by the Court’s CM/ECF system.
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` Page 1
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`35 U.S.C. § 112 ¶¶ 1 and 2.3 Dkt. No. 66. These motions were filed by Defendants Geotab Inc.,
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`Teletrac, Inc. and Navman Wireless North America Ltd., and TV Management, Inc. d/b/a/ GPS
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`North America, Inc.
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`Defendant TV Management, Inc. d/b/a GPS North America filed Motions for Judgment
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`on the Pleadings in Case No. 2:15-cv-1216 requesting the same relief and reciting substantially
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`identical arguments and authorities. Dkt. Nos. 48, 49 in Case No. 2:15-cv-1216.
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`The Court addresses these Motions (Dkt. Nos. 62, 66 in Case No. 2:15-cv-727; Dkt. Nos.
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`48, 49 in Case No. 2:15-cv-1216) collectively in this Report and Recommendation.
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`I. LAW
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`A. Judgment on the Pleadings
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`A motion for judgment on the pleadings under Rule 12(c) “is designed to dispose of cases
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`where the material facts are not in dispute and a judgment on the merits can be rendered by
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`looking to the substance of the pleadings and any judicially noticed facts.” Great Plains Trust
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`Co. v. Morgan Stanley Dean Witter & Co., 313 F.3d 305, 312 (5th Cir. 2002). “Rule 12(b)(6)
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`decisions appropriately guide the application of Rule 12(c) because the standards for deciding
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`motions under both rules are the same.” Id. at 313 n.8.
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`A court must assume that all well-pleaded facts are true and view those facts in the light
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`most favorable to the plaintiff. Bowlby v. City of Aberdeen, 681 F.3d 215, 218 (5th Cir. 2012).
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`The court may consider “the complaint, any documents attached to the complaint, and any
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`documents attached to the motion to dismiss that are central to the claim and referenced by the
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`complaint.” Lone Star Fund V (U.S.) L.P. v. Barclays Bank PLC, 594 F.3d 383, 387 (5th Cir.
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`3 Because the applications resulting in the Asserted Patents were filed before September 16,
`2012, the effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA
`version of § 112.
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`PerDiem Exhibit 2011, Page 2
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`2010). The court must then decide whether those facts state a claim for relief that is plausible on
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`its face. Bowlby, 681 F.3d at 217. “A claim has facial plausibility when the pleaded factual
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`content allows the court to draw the reasonable inference that the defendant is liable for the
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`misconduct alleged.” Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).
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`B. Subject Matter Eligibility
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`Section 101 of the Patent Act defines what is eligible for patent protection: “Whoever
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`invents or discovers any new and useful process, machine, manufacture, or composition of
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`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
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`conditions and requirements of this title.” 35 U.S.C. § 101.
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`The Supreme Court has held that there are three specific exceptions to patent eligibility
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`under § 101: laws of nature, natural phenomena, and abstract ideas. Bilski v. Kappos, 561 U.S.
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`593, 601 (2010). In Mayo, the Supreme Court set out a two-step test for “distinguishing patents
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`that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-
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`eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,
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`2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–
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`97 (2012)). Subject matter eligibility under § 101 serves as an important check on the scope of
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`the patent monopoly by preventing a patentee from capturing a “building block[] of human
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`ingenuity,” “a method of organizing human activity,” a “fundamental truth,” an “idea of itself,”
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`“an original cause,” “an algorithm,” or a similar foundational concept. Alice, 134 S. Ct. at 2354–
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`57 (“the concern that drives this exclusionary principle is one of pre-emption”). The doctrine of
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`subject matter eligibility exists to prevent patent law from “inhibit[ing] further discovery by
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`improperly tying up the future use of these building blocks of human ingenuity.” Id. at 2354. Yet
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`“we tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Id.
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`PerDiem Exhibit 2011, Page 3
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`The first step of Mayo requires a court to determine if the claims are directed to a law of
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`nature, natural phenomenon, or abstract idea. Alice, 134 S. Ct. at 2355. “If not, the claims pass
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`muster under § 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). In
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`making this determination, the court looks at what the claims cover. Ultramercial, 772 F.3d at
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`714 (“We first examine the claims because claims are the definition of what a patent is intended
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`to cover.”); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed.
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`Cir. 2015) (“At step one of the Alice framework, it is often useful to determine the breadth of the
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`claims in order to determine whether the claims extend to cover a ‘fundamental … practice long
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`prevalent in our system ….’”) (quoting Alice, 134 S. Ct. at 2356).
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`“The abstract idea exception prevents patenting a result where ‘it matters not by what
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`process or machinery the result is accomplished.’” McRO, Inc. v. Bandai Namco Games
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`America, Inc., App. No. 2015-1080, slip op. at 19, 2016 U.S. App. LEXIS 16703 (Fed. Cir. Sept.
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`13, 2016). For example, in Bilski, the Supreme Court rejected as a patent-ineligible “Claims 1
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`and 4 in petitioners’ application” because the claims simply “explain[ed] the basic concept of
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`hedging, or protecting against risk.” Bilski, 561 U.S. at 611; see also BASCOM Global Internet
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`Servs. v. AT&T Mobility LLC, 2016 U.S. App. LEXIS 11687 at *26–27 (Fed. Cir. June 27, 2016)
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`(“The claims in Intellectual Ventures I preempted all use of the claimed abstract idea on ‘the
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`Internet, on a generic computer.’ The claims in Content Extraction preempted all use of the
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`claimed abstract idea on well-known generic scanning devices and data processing technology.
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`The claims in Ultramercial preempted all use of the claimed abstract idea on the Internet. And
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`the claims in Accenture preempted all use of the claimed abstract idea on generic computer
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`components performing conventional activities.”)
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`(citations omitted). However, when
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`performing this step, the Court “cannot simply ask whether the claims involve a patent-ineligible
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`PerDiem Exhibit 2011, Page 4
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`concept, because essentially every routinely patent-eligible claim involving physical products
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`and actions involves a law of nature and/or natural phenomenon—after all, they take place in the
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`physical world.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. May 12, 2016).
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`A court applies the second step of Mayo only if it finds in the first step that the claims are
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`directed to a law of nature, natural phenomenon, or abstract idea. Alice, 134 S. Ct. at 2355. The
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`second step requires the court to determine if the elements of the claim individually, or as an
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`ordered combination, “transform the nature of the claim” into a patent-eligible application. Alice,
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`134 S. Ct. at 2355. In determining if the claim is transformed, “[t]he cases most directly on point
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`are Diehr and Flook, two cases in which the [Supreme] Court reached opposite conclusions
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`about the patent eligibility of processes that embodied the equivalent of natural laws.” Mayo
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`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1298 (2012); see also Alice, 134
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`S. Ct. at 2355 (“We have described step two of this analysis as a search for an ‘inventive
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`concept.’”).
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`In Diehr, the Court “found [that] the overall process [was] patent eligible because of the
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`way the additional steps of the process integrated the equation into the process as a whole.”
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`Mayo, 132 S. Ct. at 1298 (citing Diamond v. Diehr, 450 U.S. 175, 187 (1981)); see also Mayo,
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`132 S. Ct. at 1299 (“It nowhere suggested that all these steps, or at least the combination of those
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`steps, were in context obvious, already in use, or purely conventional.”). In Flook, the Court
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`found that a process was patent-ineligible because the additional steps of the process amounted
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`to nothing more than “insignificant post-solution activity.” Diehr, 450 U.S. at 191–92 (citing
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`Parker v. Flook, 437 U.S. 584 (1978)).
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`A claim may become patent-eligible when the “claimed process include[s] not only a law
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`of nature but also several unconventional steps … that confine[] the claims to a particular, useful
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`PerDiem Exhibit 2011, Page 5
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`application of the principle.” Mayo, 132 S. Ct. at 1300; see also DDR Holdings, LLC v.
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`Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“In particular, the ‘399 patent’s claims
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`address the problem of retaining website visitors that, if adhering to the routine, conventional
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`functioning of Internet hyperlink protocol, would be instantly transported away from a host’s
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`website after ‘clicking’ on an advertisement and activating a hyperlink.”); BASCOM Global
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`Internet Servs. v. AT&T Mobility LLC, 2016 U.S. App. LEXIS 11687 at *15 (Fed. Cir. June 27,
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`2016) (“some inventions’ basic thrust might more easily be understood as directed to an abstract
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`idea, but under step two of the Alice analysis, it might become clear that the specific
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`improvements in the recited computer technology go beyond ‘well-understood, routine,
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`conventional activit[ies]’ and render the invention patent-eligible”); but see Enfish, 822 F.3d at
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`1335 (“We do not read Alice to broadly hold that all improvements in computer-related
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`technology are inherently abstract and, therefore, must be considered at step two.”). A claim,
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`however, remains patent-ineligible if it describes only “‘[p]ost-solution activity’ that is purely
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`‘conventional or obvious.’” Mayo, 132 S. Ct. at 1299.
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`“The question of eligible subject matter must be determined on a claim-by-claim basis.”
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`Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1340 (Fed. Cir. 2013) vacated on other grounds
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`134 S. Ct. 2870 (2014).
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`C. Written Description
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`“The specification shall contain a written description of the invention, and of the manner
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`and process of making and using it, in such full, clear, concise, and exact terms as to enable any
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`person skilled in the art to which it pertains, or with which it is most nearly connected, to make
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`and use the same.” 35 U.S.C. § 112(a). The Federal Circuit has consistently held that this statute
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`sets forth two separate and distinct requirements, known as “enablement” and “written
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`PerDiem Exhibit 2011, Page 6
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`description.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
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`Although distinct, the doctrines of written description and enablement are related and “often rise
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`and fall together.” Id. at 1352. Both issues are routinely tried to a jury. See, e.g., Enzo Biochem,
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`Inc. v. Applera Corp., 780 F.3d 1149, 1153 (Fed. Cir. 2015) (“The case then proceeded to a jury
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`trial, where the jury found that the … patent was not invalid for lack of written description and
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`enablement.”)
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`“The test for the sufficiency of the written description ‘is whether the disclosure of the
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`application relied upon reasonably conveys to those skilled in the art that the inventor had
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`possession of the claimed subject matter as of the filing date.’” Vasudevan Software, Inc. v.
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`MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (quoting Ariad, 598 F.3d at 1351).
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`“[T]he test requires an objective inquiry into the four corners of the specification from the
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`perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must
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`describe an invention understandable to that skilled artisan and show that the inventor actually
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`invented the invention claimed.” Ariad, 598 F.3d at 1351. Whether a patent complies with the
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`written description requirement is a question of fact. Id. “A party must prove invalidity for lack
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`of written description by clear and convincing evidence.” Vasudevan Software, 782 F.3d at 682.
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`D. The “Regards as His Invention” Validity Requirement of § 112(2)
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`“A determination of whether a claim recites the subject matter which that applicant
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`regards as his invention and is sufficiently definite, so as to satisfy the requirements of 35 U.S.C.
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`§ 112, paragraph 2, is a legal conclusion and is reviewed de novo.” Allen Eng’g Corp. v. Bartell
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`Indus., 299 F.3d 1336, 1344 (Fed. Cir. 2002). “Where it would be apparent to one of skill in the
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`art, based on the specification, that the invention set forth in a claim is not what the patentee
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`regarded as his invention, we must hold that claim invalid under § 112, paragraph 2.” Id. at 1349
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`PerDiem Exhibit 2011, Page 7
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`(finding claim invalid where specification required “parallel” but claim recited “perpendicular”).
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`“[T]here must be a showing of a logical inconsistency or contradiction between the claims and
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`the specification.” JuxtaComm-Texas Software, LLC v. Axway, Inc., Case No. 6:10-cv-11, Dkt.
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`No. 1079 at 8, 2012 U.S. Dist. LEXIS 186559 at *16 (E.D. Tex. July 5, 2012).
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`II. ANALYSIS
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`A. Subject Matter Eligibility
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`Defendants move for judgment on the pleadings under Fed. R. Civ. P. 12(c) that the
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`asserted patents claim ineligible subject matter under 35 U.S.C. § 101.4 Defendants contend that
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`all asserted claims of all asserted patents embody an abstract idea—“managing the dissemination
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`of location and/or event information within a community.” Dkt. No. 62 at 10; see also Case No.
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`2:15-cv-1216, Dkt. No. 48 at 8. “At most, they recite different ways of organizing people into
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`groups and managing the dissemination of location/event information through use of
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`conventional computer and GPS technology. But for the recitation of conventional computer and
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`location tracking elements, all the Asserted Claims could be performed entirely by human
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`activity.” Dkt. No. 62 at 10.
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`Defendants begin their analysis with claim 6 of the ’012 Patent, arguing that
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`“[r]epresentative claim 6 merely requires (1) interfacing with an administrator who (2) authorizes
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`a first user to (3) access the location/zone/event information of a second user and (4) convey that
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`information to a third user.” Dkt. No. 62 at 17. Defendants provide a highlighted copy of the
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`claim in which “[t]erms that recite only generic computing or location tracking technology and
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`4 Rule 12(d) provides that “[i]f, on a motion under Rule 12(b)(6) or 12(c), matters outside the
`pleadings are presented to and not excluded by the court, the motion must be treated as one for
`summary judgment under Rule 56.” Fed. R. Civ. P. 12(d). Defendants cite matters outside the
`pleadings that pertain to the nature of PerDiem and its business. Dkt. No. 62 at 8; Dkt. No. 48 at
`7 in Case No. 2:15-cv-1216. Because the cited materials are extrinsic to the pleadings and
`irrelevant to the § 101 inquiry, the Court will exclude these materials.
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`PerDiem Exhibit 2011, Page 8
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`‘codes’ to facilitate a computerized implementation of the claimed method have not been
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`highlighted.” Id. at 18.
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`That claim is reproduced here with Defendants’ highlighting:
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`Dkt. No. 62 at 17–18; see also Case No. 2:15-cv-1216, Dkt. No. 48 at 16 (underlining instead of
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`highlighting).
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`
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`Having purportedly factored out all the conventional computer components, Defendants
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`construct an analogy between the remaining, highlighted portion of claim 6 and a scenario in
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`which “[e]ach highlighted step of claim 6 could easily be performed by humans without the need
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`for any computer or location tracking technology.” Dkt. No. 62 at 18.
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`[C]onsider an exemplary scenario similar to one contemplated in Perdiem’s
`common specification of a mother desiring to track the location of her daughter
`who is travelling on a class field trip from Florida to Washington D.C. In this
`scenario, the mother (administrator) may authorize a chaperone (first user) that
`has travelled with the daughter’s (second user) class to supervise and track her
`daughter as well as have access to and convey the daughter’s location (access
`object location information associated with the second user). When the class
`arrives at their hotel in Washington (associating the second user with a zone
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`PerDiem Exhibit 2011, Page 9
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`and/or event), the chaperone is authorized to notify the mother and father (third
`user) that they have safely arrived at their destination (conveying location, zone
`and/or event information to a third user).
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`Dkt. No. 62 at 18–19. This example apparently confirms that claim 6 is directed to no more than
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`the abstract idea of “managing the dissemination of location and/or event information within a
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`community” and is therefore patent ineligible.
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`
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`There are a number of fatal problems with Defendants’ analysis of claim 6. First, it is
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`improper to “simply ask whether the claims involve a patent-ineligible concept.” Enfish, 822
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`F.3d at 1335. To be sure, “mere recitation of a generic computer cannot transform a patent-
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`ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358. But this is not
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`a license to delete all computer-related limitations from a claim and thereby declare it abstract.
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`See McRO, slip op. at 20 (“in determining the patentability of a method, a court must look to the
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`claims as an ordered combination, without ignoring the requirements of the individual steps”).
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`The presence of computer components in a claim can often be consequential to the outcome of
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`the § 101 analysis—in some circumstances the computer-related limitations of the claim will
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`dispositively render the claim patent-eligible. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P.,
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`773 F.3d 1245, 1257 (Fed. Cir. 2014) (“the claimed solution is necessarily rooted in computer
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`technology in order to overcome a problem specifically arising in the realm of computer
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`networks”). Moreover, the mere fact that all the recited computer components are “conventional”
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`because the applicant did not invent an entirely new kind of computer is not inherently troubling.
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`See, e.g., Enfish, 822 F.3d at 1338 (“we are not persuaded that the invention’s ability to run on a
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`general-purpose computer dooms the claims”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–
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`19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since
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`PerDiem Exhibit 2011, Page 10
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`uncovered, and claimed discoveries almost of necessity will be combinations of what, in some
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`sense, is already known.”).
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`Instead, the analysis turns on “whether the claims in these patents focus on a specific
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`means or method that improves the relevant technology or are instead directed to a result or
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`effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO,
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`slip op. at 23. This analysis requires the movant to substantively engage with the role played by
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`the computer limitations in the context of the claim, not ignore those limitations. Here, claim 6
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`requires a variety of computer-related components, including: “user identification code[s],” “a
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`location information source,” and “an information access code.” The claim then recites a specific
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`structure of rules for providing information about the locations of objects to users and for
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`managing user access to this information. It is therefore not apparent that claim 6 recites
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`“‘nothing significantly more’ than an instruction to apply [an] abstract idea . . . using some
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`unspecified, generic computer.” Alice, 134 S. Ct. at 2360. Instead, claim 6 defines a set of rules
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`for organizing and improving the behavior of a computerized location information system. Here,
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`as in McRO, “[t]he specific structure of the claimed rules would prevent broad preemption of all
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`rules-based means” for achieving the desired result. McRO, slip op. at 22.
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`
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`The second problem with Defendants’ argument is the premise that analogizing the
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`method of claim 6 to a class field trip “confirms that claim 6 is directed to an abstract idea.” Dkt.
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`No. 62 at 19; see also Case No. 2:15-cv-1216, Dkt. No. 48 at 17. Even assuming arguendo that
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`the field trip analogy falls squarely within the scope of claim 6, this fact is not necessarily
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`dispositive—“processes that automate tasks that humans are capable of performing are patent
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`eligible if properly claimed.” McRO, slip op. at 22. More importantly, the field trip analogy
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`omits or glosses over many limitations of the claim, including the aforementioned “location
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`PerDiem Exhibit 2011, Page 11
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`information source” and access codes. As discussed supra, these limitations are not
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`afterthoughts. Managing the information provided by the location information source using a set
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`of relationships defined in part by access codes is what the claim is all about. The analogy also
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`fails to capture another key feature of the claim: centralization. In the field trip analogy a variety
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`of independent actors (mother, father, chaperone) must coordinate with one another and no
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`single actor performs all the claimed steps. It is also not clear that any actor in the analogy
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`performs the “interfacing” and “conveying” steps. These deficiencies in the analogy help to
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`illustrate why claim 6 is not merely a computerized version of conventional human activity, it is
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`an improvement to a computer system that administers, manages, and conveys location
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`information in a centralized way.
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`
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`A final problem with Defendants’ position is a failure to meaningfully address
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`preemption, which is the fundamental concern at stage one of the Mayo analysis. See Mayo, 132
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`S. Ct. at 1301 (§ 101 embodies “a concern that patent law not inhibit further discovery by
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`improperly tying up the future use of laws of nature . . . [or] the basic tools of scientific and
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`technological work”); see also McRO, slip op. at 25 (“The concern underlying the exceptions to
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`§ 101 is not tangibility, but preemption.”). Defendants do not show that claim 6 preempts the
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`idea of “managing the dissemination of location and/or event information within a community”
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`such that “it matters not by what process or machinery the result is accomplished.” See O’Reilly
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`v. Morse, 56 U.S. 62, 113 (U.S. 1854); see McRO, slip op. at 19 (quoting same). Instead, claim 6
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`recites a specialized procedure for accomplishing this result by using four different access codes,
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`an administrator, users, location information, zones, and a variety of other features all working
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`together in a particular fashion. Defendants cannot argue that there is a danger of claim 6 “tying
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`up the future use” of the concept of location information management and dissemination. There
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`PerDiem Exhibit 2011, Page 12
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`are other ways to accomplish this result without following the strictures of the claim (e.g. by
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`following Defendants’ chaperone protocol, which omits many claim limitations).
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`Accordingly, like the claims in Enfish and McRO, the Court finds that claim 6 of the ’012
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`Patent is not directed to an abstract idea and therefore survives step one of the Mayo eligibility
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`analysis. See McRO, slip op. at 27 (“By incorporating the specific features of the rules as
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`claim limitations, claim 1 . . . does not preempt approaches that use rules of a different
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`structure or different techniques.”); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
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`Cir. 2016) (“we are not faced with a situation where general-purpose computer components are
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`added post-hoc to a fundamental economic practice or mathematical equation”).
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`Defendants contends that “[a] similar analysis and conclusion is applicable to all Asserted
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`Claims of the ’012 patent. While there are slight differences in the steps recited in the various
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`claims, all are directed to the same abstract idea.” Dkt. No. 62 at 19; see also Case No. 2:15-cv-
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`1216, Dkt. No. 48 at 8. Defendants attach copies of the other claims in appendices to their
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`motions. This is as detailed as the representative claim analysis gets for any of the asserted
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`patents—a bare recital that all asserted claims are basically the same.
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`To the extent Defendants’ characterization of the claims is accurate, the other asserted
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`claims of the ’012 Patent are patent-eligible for the same reasons as claim 6. Moreover, the Court
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`finds that Defendants have not met their burden to identify a representative claim. When the
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`movant relies on a representative claim in its § 101 analysis, it bears the burden of showing that
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`the other asserted claims are “substantially similar and linked to the same abstract idea.” See
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`Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed.
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`Cir. 2014); see also Wright & Miller, Federal Practice and Procedure: Civil 3d § 1357 (2004)
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`(“All federal courts are in agreement that the burden is on the moving party [under Rules
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`PerDiem Exhibit 2011, Page 13
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`12(b)(6) and 12(c)] to prove that no legally cognizable claim for relief exists.”). District courts
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`have denied motions to dismiss where the movant failed to carry this burden. See JSDQ Mesh
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`Techs. LLC v. Fluidmesh Networks, LLC, Case No. 16-cv-212-GMS, 2016 U.S. Dist. LEXIS
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`119811 at *7 (D. Del. Sept. 6, 2016) (“Fluidmesh fails to provide meaningful analysis for each of
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`the challenged patent claims at issue”). Accordingly, the Court finds that Defendants have not
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`shown the other claims of the ’012 Patent are patent-ineligible.
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`Defendants’ arguments about claim 6 on the ’012 Patent are representative of
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`Defendants’ arguments about the other asserted patents. For every asserted patent, Defendants
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`strip away all limitations related to computers as mere “conventional concepts” or “conventional
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`computer and location tracking elements” without addressing the role played by those elements
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`in the context of the claim as an ordered combination. Dkt. No. 62 at 20, 21–22, 23–24, 25–26;
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`see also Case No. 2:15-cv-1216, Dkt. No. 48 at 18, 19–20, 22–23, 24–25. For every asserted
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`patent, Defendants propose a scenario of a class field trip illustrating how children, parents,
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`chaperones, and school employees participating in a class field trip could approximate the
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`behavior described in each exemplary claim. However, as discussed above, the proposed
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`scenarios fail by assuming that each and every computer-related limitation can be properly
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`excluded from the claims and by crafting a scenario that involves the decentralized actions of
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`multiple participants, unlike the claims. Likewise, Defendants’ identification of a representative
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`claim is equally conclusory for every asserted patent.
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`Accordingly, Defendants have not shown that the asserted claims are patent-ineligible.
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`B. Written Description
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`Defendants move for judgment on the pleadings that the asserted patents are invalid
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`under § 112(1) for failure to provide adequate written description. Dkt. No. 66 at 19–29; see also
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`PerDiem Exhibit 2011, Page 14
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`Case No. 2:15-cv-1216, Dkt. No. 49 at 19–29. Defendants contend that “[t]he common
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`specification and prosecution history of the Asserted Patents unequivocally establish that the
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`inventor required user defined zones and user defined events to be essential to his purported
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`invention. . . . Because each of the Asserted Claims does not include both a user defined zone
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`and user defined event, and are thus broader than the specification disclosure, the Asserted
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`Claims are invalid for failing to comply with the written description requirement.” Dkt. No. 66 at
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`19.
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`Defendants acknowledge that “[c]ompliance with the written description requirement of
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`35 U.S.C. § 112 ¶ 1 is a question of fact.” Dkt. No. 66 at 17. This fact question is routinely
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`submitted to a jury and is often the subject of expert testimony. Experts can be especially
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`important to the written description question because the test for sufficiency of the written
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`description is “whether the disclosure of the application relied upon reasonably conveys to those
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`skilled in the art that the inventor had possession of the claimed subject matter as of the filing
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`date.’” Vasudevan Software, 782 F.3d at 682 (emphasis added). In Vasudevan, the Federal
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`Circuit reversed a district court’s summary judgment of invalidity for failure to meet the written
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`description requirement because the district court had not credited the uncontroverted testimony
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`of the non-movant’s expert witness. Id. at 1356. The Federal Circuit held that “[a]s a general
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`rule, summary judgment [on the written description defense] is inappropriate where an expert’s
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`testimony supports the non-moving party’s case.” Id. at 1356–57.
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`In the context of a 12(c) motion, the Court may not consider expert testimony or any
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`other evidence outside the pleadings. Fed. R. Civ. P. 12(d). Instead, the Court must draw all
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`reasonable factual inferences in favor of the non-movant. For this reason, the Court cannot
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`conclude that Defendants have established their written description defense by clear and
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`PerDiem Exhibit 2011, Page 15
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`convincing evidence. Even if the claims do not recite every “essential” technological feature
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`discussed in the specification, this does not render them invalid as a matter of law. See Cooper
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`Cameron Corp. v. Kvaerner Oilfield Prods., 291 F.3d 1317, 1323 (Fed. Cir. 2002) (“we did not
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`announce a new ‘essential element’ test mandating an inquiry into what an inventor considers to
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`be essential to his invention and requiring that the claims incorporate those elements.”). A
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`motion for judgment on the pleadings under Rule 12(c) “is designed to dispose of cases where
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`the material facts are not in dispute.” Great Plains Trust, 313 F.3d at 312. Judgment on the
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`pleadings is, therefore, not the proper way to resolve this fact-intensive defense.
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`C. “Regards as His Invention”
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`
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`Defendants contend that the asserted patents are invalid under § 112(2) for failing to
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`claim “what the patentee regarded as his invention.” Dkt. No. 66 at 29; see also Case No. 2:15-
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`cv-1216, Dkt. No. 49 at 29. This argument is based on the same premise as Defendants’ § 112(1)
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`defense, that “the inventor of the Asserted Patents unequivocally regarded user defined zones
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`and user defined events as required features of his purported invention.” Id.
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`
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`Unlike written description, validity under § 112(2) is a question of law. Allen Eng’g, 299
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`F.3d 1344. However, the party asserting this defense must make “a showing of a logical
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`inconsistency or contradiction between the claims and the specification.” JuxtaComm-Texas
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`Software, Case No. 6:10-cv-11, Dkt. No. 1079 at 8. The fact that the asserted claims do not
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`encompass every feature, or even every important feature, disclosed in the specification does not
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`imply a logical contradiction. See Allen Eng’g, 299 F.3d 1349 (claims invalidated because
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`“parallel” and “perpendicular” have opposite meanings). Defendants cite no authority for the
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`proposition that every feature disclosed in the specification must be claimed, and indeed the
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`converse appears to be true. Cf. TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d
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`PerDiem Exhibit 2011, Page 16
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`1364, 1373 (Fed. Cir. 2008) (“[T]he claims of the patent need not encompass