IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`PEBBLE TIDE LLC,
`
`Plaintiff,
`
`V.
`
`ARLO TECHNOLOGIES, INC,
`
`Defendant.
`
`PEBBLE TIDE LLC,
`
`Plaintiff,
`
`V.
`
`UNIDEN AMERICA CORPORATION,
`
`Defendant.
`
`PEBBLE TIDE LLC,
`
`Plaintiff,
`
`V.
`
`PETCUBE, INC,
`
`Defendant.
`
`MIMZI, LLC.,
`
`Plaintiff,
`
`V .
`
`FOURSQUARE LABS, INC.
`
`Defendant.
`
`C.A. No. 19-769-LPS
`
`C.A. No. 19-1177-LPS
`
`C.A. No. 19-1397-LPS
`
`C.A. No. 18-1767-LPS
`
`ROKU EXH. 1007
`
`

`

`MIMZI, LLC,
`
`Plaintiff,
`
`V.
`
`TRIP ADVISOR INC. ET AL,
`
`Defendants.
`
`MIMZI, LLC,
`
`Plaintiff,
`
`V.
`
`ACER INC.,
`
`Defendant.
`
`MIMZI, LLC,
`
`Plaintiff,
`
`V .
`
`ASUSTEK COMPUTER INC.,
`
`Defendants.
`
`MIMZI, LLC,
`
`Plaintiff,
`
`V.
`
`HTC CORP.,
`
`Defendant.
`
`C.A. No. 18-1768-LPS
`
`C.A. No. 19-272-LPS
`
`C.A. No. 19-273-LPS
`
`C.A. No. 19-274-LPS
`
`ROKU EXH. 1007
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`

`

`MEMORANDUM ORDER
`
`At Wilmington this 31st day of January, 2020:
`
`WHEREAS, defendants in the above-listed cases filed Rule 12 motions to dispose of
`
`patent infringement claims on the bases that certain patent claims are invalid under 35 U.S.C.
`
`§ 101 , because they are allegedly directed to unpatentable subject matter;
`
`WHEREAS, the above-listed cases brought by Pebble Tide LLC ("Pebble Tide" or
`
`"Pebble") are unrelated to the above-listed cases brought by Mimzi, LLC ("Mimzi");
`
`WHEREAS, the Court heard oral argument in all the above-listed cases on January 10,
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`2020 and has considered the parties' respective briefs and related filings; 1
`
`WHEREAS, the Court continues to find that its experimental procedure of addressing
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`multiple Section 101 motions from separate cases in one hearing is an efficient use of judicial
`
`resources and a beneficial tool for resolving the merits of Section 101 motions;
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`NOW, THEREFORE, IT IS HEREBY ORDERED that, with respect to the above(cid:173)
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`listed Pebble Tide cases, Defendants' Rule 12 motions (C.A. No. 19-769 D.I. 16; C.A. No. 19-
`
`1177 D.I. 12; C.A. No. 19-1397 D.I. 8, 18) are GRANTED, and
`
`IT IS FURTHER ORDERED that, with respect to the above-listed Mimzi cases,
`
`Defendants' Rule 12 motions (C.A. No. 18-1767 D.I. 24; C.A. No. 18-1768 D.I. 20; C.A. No.
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`19-272 D.I. 12; C.A. No. 19-273 D.I. 11 ; C.A. No. 19-274 D.I. 11) are DENIED.
`
`The Court's Order is consistent with the following bench ruling announced at that the
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`conclusion of the January 10 hearing (see Tr. at 96-118):
`
`The first [] cases that were argued all involve Pebble, three
`related cases ... [t]hey all seek to dismiss the amended complairit
`on the same grounds, the lack of patent eligibility under Section
`101. Two patents are asserted . . . [t]he first one is patent No.
`
`1 Chief Judge Leonard P. Stark and Magistrate Judge Jennifer L. Hall jointly presided throughout
`the argument. The Court adopts the full bench ruling and includes here only a portion of it.
`
`1
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`ROKU EXH. 1007
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`

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`10,261 ,739, and the second is 10,303,411. Everybody now agrees
`at this point that the '739 patent, claim 1, is representative, and
`therefore my ruling applies to all asserted claims of both patents .
`
`. . . [M]y decision is to grant the defendants' motion, and
`let me try to explain why.
`
`First, as to Step One of Alice2 ••• I find that the
`representative claim is not directed to a specific improvement in
`computer functionality or to a specific implementation of a
`solution to a technological problem. Rather, it is directed to the
`abstract idea of wirelessly outputting data from one device to
`another. This is an abstract idea. We know that from cases that
`have already been decided by the Federal Circuit. For instance, in
`Cellspin,3 the Federal Circuit said, we have consistently held that
`similar claims reciting the collection, transfer and publishing of
`data are directed to an abstract idea.
`
`In ChargePoint,4 the Federal Circuit found [to be] abstract
`claims directed to transmitting data from one device to another.
`This conclusion at Step One is supported by the fact that the
`representative claim lacks limiting technical details. Neither of the
`claims, nor for that matter the specification, explain[ s] how the
`claimed invention's components perform their recited functions.
`Rather, they describe those components in purely functional terms .
`
`. . . I find that the defendants have done what they need to
`[do] at Step Two as well. At Step Two, the plaintiff has at times
`said that the inventive concept is the pervasive output process
`which may be a result of the interplay of the job object process and
`the device object process .... [Plaintiff has] also referred to the
`information apparatus as possibly being an inventive concept. I
`find it is clear even on Rule 12 .. . that none of these purported
`inventive concepts alone or in combination are an inventive
`concept that [saves] the patentability at Step Two.
`
`Let me give some examples of what one finds in the
`specification of the ' 739 patent that supports my conclusion ...
`For example, including with respect to the component of
`
`2 Alice Corp. Pty. Ltd v. CLS Bank Int '!, 573 U.S. 208 (2014); see also Mayo
`Collaborative Serv. v. Prometheus Labs. , Inc., 566 U.S. 66 (2012).
`
`3 Cellspin Soft, Inc. v. Fitbit, Inc. , 927 F.3d 1306 (Fed. Cir. 2019).
`
`4 ChargePoint v. Serna Connect, 920 F.3d 759 (Fed. Cir. 2019).
`
`2
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`ROKU EXH. 1007
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`establishing a wireless connection between an information
`apparatus and a server, one sees in the specification that
`"information apparatuses refer generally to computing devices."
`That's at column 1, lines 28 to 41. The specification also says that
`"output devices and information apparatuses could already in the
`prior art be connected through a wireless connection." That is at
`column 2, lines 26 to 30 of the specification .. .
`
`Now, the more challenging question on this motion in the
`Pebble cases was that plaintiffs are also asserting that the ordered
`combination of the conventional computer components and
`processes are somehow an inventive concept. That is, plaintiff[]
`argue[ s] that the combination of elements in the representative
`claim cannot today at least be found to be conventional, well
`understood and routine. I disagree.
`
`Plaintiff[] analogize[s] [its] combination to Cellspin's two
`device, two-step structure requiring a connection before data
`transfer, which ... the Federal Circuit found that that invention
`survived the Step Two analysis. [B]ut the Court agrees instead
`here with defendants, that the claims use merely functional
`language and that nothing in the claims or the specification details
`how this purported combination achieved the touted results of
`solving the problem of widespread incompatibility between
`wireless devices and corresponding output devices . ...
`
`Plaintiff[] . . . attempt[ s] to analogize this case to
`BASCOM, 5 but that comparison is not ultimately a favorable one
`for the plaintiff .. .. In BASCOM, for instance, the Federal Circuit
`found that the ordered combination of plaintiffs claim limitations
`revealed an inventive concept after plaintiffs oral argument
`demonstrated that the specific method described by the asserted
`patents cannot be said as a matter of law to have been conventional
`or generic. The Federal Circuit was persuaded by plaintiff that the
`claims at issue in BASCOM recite a specific, discrete
`implementation of the abstract idea and that the patent describes
`how its particular arrangement of elements is a technical
`improvement over the prior art . ...
`
`Here, by contrast, Pebble has not shown that the asserted
`patent recites a specific method or a specific discrete
`implementation of the abstract idea that is unconventional. When I
`asked Pebble Tide's counsel to identify where the asserted patents
`
`5 BASCOM Global Internet Servs. , Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
`
`2016).
`
`3
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`ROKU EXH. 1007
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`or complaints concretely describe a specific method that was
`unconventional, he was unable to do so. . . . In my view, this case
`is closer to the Two-Way Media decision6 of the Federal Circuit in
`2017 where that Court held or found that a particular ordered
`combination of asserted limitations did not reveal an inventive
`concept because unlike in BASCOM, there, the claim used a
`conventional ordering of steps with conventional technology to
`achieve its desired results.
`
`As a final note, I have considered plaintiffs recently
`proposed claim constructions and agree with defendants that even
`assuming that those are the correct constructions of those disputed
`claim terms, the representative claim is still not patent eligible.
`
`So for all those reasons in the Pebble Tide cases, the
`motions are granted.
`
`Let me turn then to the Mirnzi cases which were argued
`second.
`
`There are five related Mimzi cases. Three defendants,
`Acer, HTC and ASUSTeK, moved under 12(b)(6). Two other
`defendants, Foursquare and TripAdvisor, move under Rule 12(c).
`There is one asserted patent, the[] 9,128,981 patent. At this point,
`the parties agree that there [are] three representative claims: claims
`1, 8, and 9. I will focus as the parties have today on claim 1 ...
`
`These motions are denied ... .
`
`It's not because of Step One. I find that the defendants
`have met their burden at Step One.
`
`At Step One, defendants have met their burden to
`demonstrate that the claim, the representative claim, that is, I'm
`thinking really mostly of claim 1 but the analysis is the same for
`claims 8 and 9. Defendants have met their burden to demonstrate
`that the claim is directed to the abstract idea of providing and
`ranking location related information in response to a spoken
`request.
`
`This is an abstract idea. It' s analogous to a hotel concierge
`recommending a local restaurant. It is analogous to what the
`
`6 Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329 (Fed. Cir.
`
`2017).
`
`4
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`ROKU EXH. 1007
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`Federal Circuit found to be an abstract idea in the Electric Power
`Group case, 7 collecting and analyzing information and displaying
`it. It' s analogous to what I found to be an abstract idea in the
`SSMP decision. 8
`
`Further, this articulation of the abstract idea I find is fair to
`the claims ...
`
`I find [that] the claim does not recite a specific
`improvement to computer technology. Instead, the claim merely
`recites high level functional results . . . The claim does not in my
`view recite how to make the computer processor more efficient,
`how to make speech recognition more accurate or how to enable
`databases to have more storage capacity or improved search
`capabilities. Nor does the claim describe how these technologies
`are implemented . .. .
`
`Turning to Step Two. If, as I must, I take the well pied
`factual allegations as true, I find that there is a fact dispute as to
`whether the representative claim[' s] ordered combination of
`elements is wholly conventional, routine and well understood.
`That is, there is a fact dispute as to whether the ordered
`combination of claim limitations [- ] using location metadata and
`transcripts from a user' s spoken request and automatically mining
`and retrieving social network information based on ranking factors
`to improve IP searching [- ] . . . was conventional, well understood
`and routine.
`
`Mind you, I do not agree with the plaintiff to the extent it is
`also arguing that any of those individual claim elements, including
`the memory component, is anything other than conventional,
`routine, and well understood. Instead, on that point, the
`specification repeatedly emphasizes how each of the components
`used to practice the claims was available, sometimes widely
`available[,] in the prior art ....
`
`I must credit plaintiff's non-conclusory factual allegations
`in the complaint which are plausible and are not contradicted by
`anything in the specification. Among those factual allegations that
`I feel I must credit are those set out in paragraphs 18 and 19 of the
`
`7 Elec. Power Grp., LLC v. Alstom S A., 830 F.3d 1350 (Fed. Cir. 2016).
`
`8 Search and Social Media Partners, LLC v. Facebook, Inc., 346 F. Supp. 3d 626 (D. Del.
`
`2018).
`
`5
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`ROKU EXH. 1007
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`complaint which allege, among other things, that the claims are
`directed to a new and useful configuration of components and
`describe an improvement in computer capabilities by specifying a
`complex series of steps performed by or through a mobile device
`to produce a desired result.
`
`The complaint also goes outside the specification and
`identifies extrinsic evidence from a third party, specifically
`Google.
`
`The allegations in paragraphs 21 [ and] 22 regarding
`Google' s then Vice President of Search Products, two months after
`the '981 patent's priority date plausibly describe purported
`deficiencies and then current search technologies, deficiencies [in]
`which the plaintiff plausibly at this early stage of the case alleges
`are solved by the ' 981 patent. As in Cellspin and Aatrix,9 where
`the Federal Circuit explained that plausible and specific factual
`allegations relating to inventiveness can be sufficient to survive a
`motion to dismiss, I find that is what the situation is here.
`
`It's further worth noting, as the Federal Circuit did recently
`in Cellspin, as long as what makes the claims inventive is recited
`by the claims, the specification need not expressly list all the
`reasons why this claimed structure is unconventional . . . . So any
`purported failure of the specification here to affirmatively disclose
`how unconventional the ordered combination is, is not fatal to the
`plaintiff's claims.
`
`Here, in my view, claim 1 requires a particular memory
`structure which stores a transcript of a user's spoken request and
`the metadata associated with the spoken request, including the
`user's location information. This data is then fed to a social
`network database that then takes the request, mines the user social
`network database based on a set of social network factors to
`provide the user with improved search results on a mobile device.
`
`So as in BASCOM, the limitations of the claim of the '981
`patent, taken together as the ordered combination, may ultimately
`be found to recite a specific discrete implementation of the abstract
`idea of providing tailored search results based on a user's location
`and ranked social network feedback such as popularity or
`credibility ...
`
`9 Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018).
`
`6
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`ROKU EXH. 1007
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`Given my analysis, it is not necessary to consider plaintiff's
`proposed claim construction or how it proposes to amend its
`complaint.
`
`Also, claims 8 and 9 are more specific than claim 1, so my
`reasoning in denying the motion with respect to claim 1 also means
`necessarily that I am denying the motion with respect to claims 8
`and 9 and all other claims since it is now agreed that claims 1, 8,
`and 9 are representative of all claims at issue in the motions.
`
`HONORABL LEONARDP. STARK
`UNITED STATES DISTRICT JUDGE
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`7
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`ROKU EXH. 1007
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`