Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 1 of 28 PagelD #: 7684
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`LUMINATI NETWORKS LTD.
`
`Plaintiff,
`
`V.
`
`TESO LT, UAB; OXYSALES, UAB;
`METACLUSTER LT, UAB;
`
`Defendants.
`
`Case No. 2:19-cv-395-JRG
`
`PLAINTIFF'S RESPONSE TO DEFENDANTS'
`MOTION FOR JUDGMENT ON THE PLEADINGS
`
`Metacluster LT, UAB
`EX1022
`Page 1 of 29
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 2 of 28 PagelD #: 7685
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................................. 1
`I.
`II. STATEMENT OF THE ISSUES ......................................................................................... 1
`III. FACTUAL AND PROCEDURAL BACKGROUND ......................................................... 2
`
`A. Claim Construction ............................................................................................................... 3
`
`B.
`
`'319 and '510 Patent Claims ................................................................................................ 5
`
`C.
`
`'614 Patent Claims ............................................................................................................... 7
`
`D. Dependent Claims .............................................................................................................. 10
`
`IV. LUMINATl'S ASSERTED PATENT CLAIMS ARE VALID UNDER 101. ................ 11
`
`A. Legal Standard .................................................................................................................... 11
`
`B. The Asserted Patents Satisfy Alice Step One, Because They Are Directed Toward an
`Entirely New Network Based on an Innovative Server-Client Device-Web Server
`Architecture ........................................................................................................................ 12
`
`1. Defendants' argument that the claims use "routine and ordinary devices and servers
`... in a routine and ordinary way" is incorrect and a misapplication of the law ..... 13
`
`2. Defendants' Cited Cases Involve the Use of Computers as Tools to Carry Out a
`Conventional Process, Not an Improvement to the Function of the Computer, Itself,
`as in the Asserted Patent Claims .............................................................................. 15
`
`C. The Asserted Patents Meet Alice Step Two By Reciting Inventive Concepts ................... 20
`
`1. The Asserted Patents recite inventive concepts and improvements ........................ 20
`
`2. Under Alice step two, the question of whether the claims are conventional is a
`question of fact not amenable to dismissal or summary judgment.. ........................ 23
`
`V. CONCLUSION .................................................................................................................... 23
`
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 3 of 28 PagelD #: 7686
`
`TABLE OF AUTHORITIES
`
`Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) ......... 20, 23
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int'/, 573 U.S. 208 (2014) .......................................... 11, 12, 16
`
`Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) .................. 20, 22, 23
`
`Ancora Techs. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. 2018) ............................................... 16
`
`BASCOM Glob. Internet Servs. Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) ... 20,
`21
`
`Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) ......................................................... 12, 23
`
`buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) ............................................. 18, 21
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'/ Ass'n, 776 F.3d 1343 (Fed.
`Cir. 2014) .................................................................................................................................. 12
`
`CXT Sys. v. Acad., Ltd., No. 2:18-CV-00171-RWS-RSP, 2019 U.S. Dist. LEXIS 51992 (E.D.
`Tex. Mar. 27, 2019) ................................................................................................................... 23
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) ...................... 13, 19, 20
`
`Diamond v. Diehr, 450 U.S. 175, 187 (1981) ............................................................................... 21
`
`Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) ................................ 17, 21
`
`Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) ........................................... 11, 14
`
`Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299 (Fed. Cir. 2018) ................................. 11, 13
`
`Freeny v. Fossil Grp., Inc., No. 2:18-CV-00049-JRG-RSP, 2019 U.S. Dist. LEXIS 36688 (E.D.
`Tex. Feb. 12, 2019) ................................................................................................................... 17
`
`Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015) ..................... 17
`
`Intellectual Ventures I LLC v. Symantec Corp., 100 F. Supp. 3d 371 (D. Del. 2015) .................. 18
`
`Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp., 362 F. Supp. 3d 370 (E.D. Tex. Jan. 24,
`2019) .......................................................................................................................................... 16
`
`Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018) ................................... 17, 21
`
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 4 of 28 PagelD #: 7687
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`Koninklijke KPN NV. v. Gema/to M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019) ................. 16, 19
`
`Mortg. Grader, Inc. v. First Choice Loan Servs., Inc. 811 F.3d 1314 (Fed. Cir. 2016) ............... 18
`
`Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299 (Fed. Cir. 2020) ............. 16, 19
`
`Parus Holdings, Inc. v. Sallie Mae Bank, 137 F. Supp. 3d 660 (N.D. Cal. 2015) ........................ 17
`
`Reese v. Sprint Nextel Corp., 774 Fed. App'x 656 (Fed. Cir. 2019) ............................................ 17
`
`Specialized Monitoring Sols., LLC v. ADT LLC, 367 F. Supp. 3d 575 (E.D. Tex. 2019) ............ 15
`
`SRI Int'!, Inc. v. Cisco Systems, Inc., 930 F.3d 1295 (Fed. Cir. 2019) .................................. passim
`
`TecSec, Inc. v. Adobe Inc., 978 F.3d 1278 (Fed. Cir. 2020) ......................................................... 16
`
`Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014) ............... 17
`
`Uniloc United States, Inc. v. Samsung Elecs. Am., Inc., No. 2:17-CV-00651-JRG, 2018 U.S.
`Dist. LEXIS 176336 (E.D. Tex. Sep. 18, 2018) ............................................... ......................... 11
`
`Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303 (Fed. Cir. 2020) ...................... 11, 13, 16
`
`Windy City Innovations, LLC v. Facebook, Inc., 411 F. Supp. 3d 886 (N.D. Cal 2019) .............. 18
`
`11
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 5 of 28 PagelD #: 7688
`
`I.
`
`INTRODUCTION
`
`Defendants' Motion for Judgment on the Pleadings ("Motion") is meritless. Defendants
`
`know they cannot win their Alice motion based on the actual claim limitations, which are tangible
`
`and not abstract. So, instead, they build "straw man" claims by misconstruing the claim
`
`requirements and rewriting the claims to make them seem more generic than they are. To do so,
`
`Defendants intentionally gloss over the claimed, innovative server-client, device-web server
`
`architecture and other important limitations.
`
`Defendants' arguments lack basic credibility. The Patent Office reviewed and granted
`
`these claims, yet Defendants would have the Court believe the claims do nothing more than
`
`describe the Internet, or, even more unbelievably, a method of communication practiced by middle
`
`school children. The Patent Office knows what the Internet is. Indeed, the Patent Office was well(cid:173)
`
`informed of the standard in Alice as well when it issued these patents in 2019. The patent
`
`examiners understood that the Asserted Patents created a new network of client-peer devices that
`
`constitutes a tangible, patentable advance in network technology. The Motion should be denied. 1
`
`II.
`
`STATEMENT OF THE ISSUES
`
`Defendants' 12(c) Motion raises the following issue:
`
`Whether the Asserted Patents are unpatentable under 35 U.S.C. § 101 as abstract, when the
`
`patents claim methods that create a novel computer network architecture performed by a client
`
`device, such as a normal consumer cell phone or laptop, serving as a proxy within a server-client,
`
`device-web server system architecture, when courts regularly hold that improvements to network
`
`architecture are patentable and not abstract.
`
`1 Defendants' previous motion to dismiss the complaint under 35 U.S.C. § 101 was denied without
`prejudice. Dkt. 85.
`
`1
`
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 6 of 28 PagelD #: 7689
`
`III.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`The patent claims at issue address a new computer network architecture. The asserted
`
`claims include claims 1,2, 14, 15, 17, 18,21,22,24,25,26,and27ofU.S.PatentNo. 10,257,319
`
`("'319 Patent"), claims 1, 2, 8, 9, 10, 11, 13, 15, 16, 18, 19, 20, 22, and 23 of U.S Patent No.
`
`10,484,510 ("'510 Patent"), and claims 1, 2, 4, 5, 6, 7, 9, 10, 11, 12, 15, 16, 17, 18, 19, 20, 22, 23,
`
`25, 26, 28 and 29 of U.S. Patent No. 10,469,614 ("'614 Patent")2, with the patents referred
`
`collectively as the Asserted Patents. Complaint at ,r,r 28, 54, 67, 80.
`
`The '319 and '510 Patents, directed to architecture and methods for fetching content over
`
`the Internet, share the same named inventors (Derry Shribman and Ofer Vilenski), the same
`
`specification (the '510 Patent is a continuation of the '319 Patent), and the same title: "System
`
`Providing Faster and More Efficient Data Communication." Complaint at ,r,r 14-15, 62, 75; see
`
`also Dkt. 1-2 and 1-3. Both patents claim priority to provisional application 61/249,624, filed on
`
`October 8, 2009. Complaint at ,r,r 62, 75. The '614 Patent claims methods for fetching content
`
`over the Internet and has the same named inventors. It is in a different patent family that claims
`
`priority to provisional application 61/870,815, filed on August 28, 2013. Complaint at ,r,r 14-15,
`
`48; Dkt. 1-1. The Asserted Patents claim methods performed by a client device, such as a phone,
`
`that serves as a proxy in an innovative server-client device-web server network architecture.
`
`r
`
`Server
`
`r
`
`Web
`Server
`
`2 Please note that Luminati is not currently asserting infringement of claims 7 and 28 of the '614
`Patent, but this list comprises the claims asserted in Luminati's P.R. 3-1 disclosures.
`
`2
`
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 7 of 28 PagelD #: 7690
`
`A.
`
`Claim Construction
`
`The Court has issued a Claim Construction Memorandum and Order ("Order") (Dkt. 191),
`
`construing a number of terms in the Asserted Patents, including "client device," "second server"
`
`and "first server." Please note that the "second server" of the '319 and '510 Patents corresponds
`
`with the "first server" of the '614 Patent in the claimed [first/second] server<-> client device<->
`
`web server architecture of the Asserted Patents shown above.
`
`Patent
`
`Claim Term
`
`'319 / '510
`
`"client device"
`
`Construction Pursuant to Claim
`Construction Order
`
`"communication device that is operating
`in the role of a client"
`
`'319 / '510
`
`"second server"
`
`"server that is not the client device"
`
`'614
`
`"client device"
`
`"device operating in the role of a client
`by requesting services, functionalities, or
`resources from the server"
`
`'614
`
`"first server"
`
`"server that is not the client device"
`
`The Court construed "client device" for the '319 and '510 Patents as "a communication
`
`device that is operating in the role of a client." Order at 12. In doing so, the Order expressly noted
`
`that "[t]he patents do not include servers as a type of 'communication device' , but that is not
`
`sufficient to construe 'client device' as unable to act as a server in all cases." Id. This is consistent
`
`with the operation of a proxy, because the "client device" must necessarily be able to "act like a
`
`server," which would require the client device to both (a) "act" as a server in receiving requests
`
`from the second server and (b) "act" as a client in sending requests to the recited first server/web
`
`server. Having recognized that servers are not communication devices, the Court construed
`
`"second server" for the '319 and '510 patents as a "server that is not the client device." Id. at 12
`
`3
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 8 of 28 PagelD #: 7691
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`and 14. Consistent with the '319 and '510 Patent specification and Claim Construction Order,
`
`servers are not communication devices and cannot be "client devices."
`
`Similarly, the Court construed "client device" for the '614 Patents as "a device operating
`
`in the role of a client by requesting services, functionalities, or resources from the server." Claim
`
`Construction Order at 15. As recognized by the Court, during claim construction Defendants
`
`denied that "they will claim client devices and servers are interchangeable general use computers."
`
`Order at 15. In issuing its construction, the Court expressly referenced Defendants' representations
`
`as a basis for its claim construction. Order at 15 ("Regardless, Defendants deny that they will
`
`assert that client devices are interchangeable general use computers, undercutting Luminati's
`
`proffered need for construction and resolving the dispute about claim scope.") The Court adopted
`
`the same construction for "first server" in the '614 Patent as "second server" in the '319 and '510
`
`Patents.
`
`Despite their representations to the Court, Defendants are now asserting that "client devices
`
`and servers of the Asserted Claims are nothing more than software roles running on routine and
`
`conventional general-purpose computers." Motion at 5. This is contrary to the above positions
`
`they provided to the Court and the Court's claim constructions. A server is not a "communication
`
`device" and Defendants are barred from now arguing that client devices and servers are
`
`interchangeable having already made directly contrary representations to the Court during claim
`
`construction. Defendants repeatedly and improperly rely upon this misrepresentation of the
`
`construction of client devices and servers as general purpose computers throughout their Motion.
`
`Motion at 5, 13, 15, 17, 18, and 21.
`
`Indeed, it is the central argument for their Motion and
`
`consequently, should be denied on this basis alone.
`
`4
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 9 of 28 PagelD #: 7692
`
`B.
`
`'319 and '510 Patent Claims
`
`The
`
`'319 and
`
`'510 Patents create a "system designed for
`
`increasing network
`
`communication speed for users . . . . " Dkt. 1-2 at Abstract. 3 As described in the shared
`
`specification, "[t]he present invention is related to Internet communication, and more particularly,
`
`to improving data communication speed and bandwidth efficiency on the Internet." Id. at 1 :23-
`
`25. "The need for a new method of data transfer that is fast for the consumer, cheap for the content
`
`distributor and does not require infrastructure investment for ISPs, has become a major issue which
`
`is yet unsolved." Id. at 1:54-57. The '319 and '510 Patents discuss that previous "proxy servers"
`
`fail to provide a "comprehensive solution for Internet surfing," at least in part because they "would
`
`need to be deployed at every point around the world where the Internet is being consumed." Id. at
`
`2:24-27; see also 2:8-23. Instead, to create a new type of consumer-based network that never
`
`existed before, these patents employ "client devices," which are consumer devices that operate as
`
`proxies. Id. at 3:13-55. The client devices are modified to function as a client, peer or agent and
`
`serve as a proxy in the system, permitting "any number of agents and peers." Id. at 4:43-64.
`
`The present system and method provides for faster and more efficient data
`communication within a communication network. An example of such a
`communication network 100 is provided by the schematic diagram of FIG. 3. The
`network 100 of FIG. 3 contains multiple communication devices. Due to
`functionality provided by software stored within each communication device,
`which may be the same in each communication device, each communication device
`may serve as a client, peer, or agent, depending upon requirements of the network
`100, as is described in detail herein. It should be noted that a detailed description
`of a communication device is provided with regard to the description of FIG. 4.
`
`Returning to FIG. 3, the exemplary embodiment of the network 100 illustrates that
`one of the communication devices is functioning as a client 102. The client 102 is
`capable of communication with one or more peers 112, 114, 116 and one or more
`agents 122. For exemplary purposes, the network contains three peers and one
`agent, although it is noted that a client can communicate with any number of agents
`
`3 Citations to the specification of the '319 Patent at Dkt. 1-2 also apply to the same portion of the
`'510 Patent (Dkt. 1-3).
`
`5
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 10 of 28 PagelD #: 7693
`
`and peers.
`
`In contrast to the servers, each communication device, may function as a client, peer, or
`
`agent. Separate and apart from the communications devices, the specification also discloses a web
`
`server and acceleration server as part of the communication network 100. Id. at 4:62-5:20.
`
`r
`
`Server
`
`Ill
`
`r
`
`Ill
`
`Web
`Server
`
`'-.
`As illustrated in the above annotated figures, independent claims 1 of the '319 and '510
`
`Patents recite methods that employ a specific, concrete server-client device-web server
`
`architecture with the steps performed by the client device:
`
`'319 Patent Claim 1:
`
`A method for use with a first client device, for use with a first server that
`comprises a web server that is a Hypertext Transfer Protocol (HTTP) server that
`responds to HTTP requests, the first server stores a first content identified by a first
`content identifier, and for use with a second server, the method by the first client
`device comprising:
`receiving, from the second server, the first content identifier;
`sending, to the first server over the Internet, a Hypertext Transfer Protocol
`(HTTP) request that comprises the first content identifier;
`receiving, the first content from the first server over the Internet in response to
`the sending of the first content identifier; and
`sending, the first content by the first client device to the second server, in
`response to the receiving of the first content identifier.
`
`'510 Patent Claim 1:
`
`A method for use with a web server that responds to Hypertext Transfer Protocol
`(HTTP) requests and stores a first content identified by a first content identifier, the
`method by a first client device comprising:
`establishing a Transmission Control Protocol (TCP) connection with a second
`server;
`sending, to the web server over an Internet, the first content identifier;
`receiving, the first content from the web server over the Internet in response to
`the sending of the first content identifier; and
`sending the received first content, to the second server over the established
`TCP connection, in response to the receiving of the first content identifier.
`
`6
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 11 of 28 PagelD #: 7694
`
`C.
`
`'614 Patent Claims
`
`Like the '319 and '510 Patents, the '614 Patent creates a client device network of "tunnel
`
`devices" that are client devices ( circled in red below) within a server-client, device-web server
`
`architecture. Complaint at ,-i 51; Dkt. 1-1 at 1:19-23 ("apparatus and method for improving
`
`communication over the Internet by using intermediate nodes, and in particular, to using devices
`
`that may doubly function as an end-user and as an intermediate node.").
`
`Each of devices herein may consist of, include, be part of, or be based on, a part of,
`or the whole of, the computer 11 or the system 100 shown in FIG. 1. Each of the
`servers herein may consist of, may include, or may be based on, a part or a whole
`of the functionalities or structure ( such as software) of any server described in the
`'604 Patent, such as the web server, the proxy server, or the acceleration server.
`Each of the clients or devices herein may consist of, may include, or may be based
`on, a part or a whole of the functionalities or structure (such as software) of any
`client or device described in the '604 Patent, such as the peer, client, or agent
`devices.
`
`In one example, an accessing to a data server is improved by using an intermediate
`device referred to as 'tunnel' device, that is executing a 'tunnel' flowchart. FIG. 5
`shows a system 30 including two client devices, a client device #1 3 la and a client
`device #2 31b, that may access the data 20 servers 22a and 22b using one or more
`of a tunnel device #1 33a, a tunnel device #2 33b, and a tunnel device #3 33c, under
`the management and control of an acceleration server 32. These network elements
`communicates with each other using the Internet 113. Dkt. 1-1 at 83:4-15.
`
`22b =
`
`Data
`Server
`#2
`
`Server
`#1
`
`22b =
`
`Server
`#2
`
`FIG. 5
`
`FIG. 11
`
`The '614 Patent further improves on the above network by having the proxy client devices
`
`7
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 12 of 28 PagelD #: 7695
`
`dynamically shift between two states based on a criteria. Specifically, the client (tunnel) device is
`
`available as a proxy in the first state (for example, when there is sufficiently available bandwidth)
`
`and unavailable in the second state (for example, when there is not sufficiently available
`
`bandwidth). Complaint at ,r 51. Criteria-based dynamic switching improves the performance of
`
`the system by maintaining a new, dynamic network made exclusively of available client devices
`
`that can meet a given performance criteria. Dkt. 1-1 at 124:3-13.
`
`A device may be selected to provide a service, such as a tunnel device that may be
`selected (alone or as part of a group) by a client device as part of the 'Select
`Tunnels' step 101a in the flowchart 100. The selected tunnel device may shift to the
`' offline' state 301 or to the 'congested' state 303, and thus respectively becomes
`unavailable or less effective to use. In such a case, a new tunnel device, that was
`not formerly selected, may be now selected as a substitute for the 'offline' or
`'congested' tunnel device as part of a 'Replace Device' step 321d.
`
`40
`~
`
`41a
`
`l
`
`41b
`
`l
`
`41c
`
`l
`
`41d
`
`l
`
`41e
`
`l
`
`42 --l>
`
`TYPE
`
`IP ADDRESS
`
`SIGN-IN
`DATE / TIME
`
`LOCATION
`
`STATUS
`
`42a ➔
`
`Tunnel
`
`125.12.67 .0
`
`23/1 7:32
`
`Boston, MA, USA
`
`Online
`
`42b ➔
`
`Tunnel
`
`109.23. 78.5
`
`2311 8:55
`
`Munich, Germany
`
`Congested
`
`42c ➔
`
`Client
`
`36.83. 92.12
`
`23/110:44
`
`Sidney, Australia
`
`42d ➔
`
`Client
`
`125.66.69.73
`
`2411 15:34
`
`Tel-Aviv, Israel
`
`Online
`
`Offline
`
`Client I Tunnel 103.52.25.73
`42e ➔
`
`2411 20:42
`
`Cairo, Egypt
`
`Congested
`
`FIG. 5a
`
`This network created by a registry of available client devices as proxies has notable
`
`advantages. For example, it provides untraceability and anonymity, which in turn stops requests
`
`from being blocked.
`
`'614 Patent at 87:51-88:10. This anonymity addressed a well-known
`
`problem with direct requests over the Internet that otherwise permit web servers to identify
`
`requesting devices ( emphasis added):
`
`8
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 13 of 28 PagelD #: 7696
`
`"Since 2014, Luminati has offered proxy-based services relying on its "Residential
`Proxy Network" that practice one or more claims of the Asserted Patents. Luminati
`permits its business customers to utilize its residential proxy network to gather data
`over the Internet using residential proxy devices from various localities as required
`by the customers. Because each of these residential proxy devices has its own
`residential IP address, web servers receiving requests from these proxy devices do
`not recognize such requests as originating from the actual user making the request.
`Instead, the server identifies the request as coming from a residential device based
`upon the residential IP address of the proxy device. These residential proxy devices
`provide businesses with a number of advantages. For example, online retailers may
`anonymously use these residential proxy devices to gather information from web
`servers (such as for comparative pricing), businesses may utilize these devices to
`test their web sites from any city in the world, and cyber security firms may employ
`these devices to test web sites for malicious code."
`
`The claimed solution provides concrete structure differing from the prior art, including a
`
`novel, unconventional network architecture. The Asserted Claims require this new server-client
`
`device-web server network architecture to operate. The '614 Patent also requires additional
`
`functionality on the proxy client device to optimize the architecture by dynamically ensuring that
`
`client devices meet certain criteria, such as available bandwidth, access to wi-fi connections versus
`
`cellular connections, etc. The real-time nature of the '614 Patent also ensures that the content
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`obtained is fresh and that not cached.
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`Independent claim 1 of the '614 Patent also recites a method that employs the same
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`specific, concrete server-client device-web server architecture illustrated above with steps
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`performed by the client device, with additional steps to optimize the utility of the architecture by
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`dynamically determining whether a client device satisfies certain criteria and selectively making
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`it available or not available for use in the network based on that determination:
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`'614 Patent, Claim 1 :
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`A method for use with a resource associated with a criterion in a client device that
`communicates with a first server over the Internet, the client device is identified in
`the Internet using a first identifier and is associated with first and second state
`according to a utilization of the resource, the method comprising:
`initiating, by the client device, communication with the first server over the
`Internet in response to connecting to the Internet, the communication
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`9
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 14 of 28 PagelD #: 7697
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`comprises sending, by the client device, the first identifier to the first server
`over the Internet;
`when connected to the Internet, periodically or continuously determining
`whether the resource utilization satisfies the criterion;
`responsive to the determining that the utilization of the resource satisfies the
`criterion, shifting to the first state or staying in the first state;
`responsive to the determining that the utilization of the resource does not satisfy
`the criterion, shifting to the second state or staying in the second state;
`responsive to being in the first state, receiving, by the client device, a request
`from the first server; and
`performing a task, by the client device, in response to the receiving of the
`request from the first server,
`wherein the method is further configured for fetching over the Internet a first
`content identified by a first content identifier from a web server that is
`distinct from the first server, and the task comprising:
`receiving, by the client device, the first content identifier from the first
`server;
`sending, by the client device, the first content identifier to the web server;
`receiving, by the client device, the first content from the web server in
`response to the sending of the first content identifier; and
`sending, by the client device, the received first content to the first server.
`
`D.
`
`Dependent Claims
`
`Dependent claims add limitations such as causmg the client device and server to
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`periodically communicate ( claim 17 of the '319 Patent and claim 8 of the '510 Patent);
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`downloading the software application containing the computer instructions that causes the client
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`device to perform the claimed steps (claim 13 of the '510 Patent); receiving the request from the
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`first server over the established TCP connection ( claim 15 of the '510 Patent); the client device
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`performs the determining step (claim 2 of the '614 Patent); the client device is a smartphone (claim
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`16 of the '614 Patent); and the client device is using a client operating system, which can be a
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`mobile operating system including Android version 2.2 or Apple iOS version 3 (claims 9, 11, and
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`12 of the '614 Patent). Each of the dependent claims asserted against Defendants, in the context
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`of the overall invention, includes additional unconventional, novel claim limitations that would
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`render those claims valid under § 101 even if an independent claim is deemed ineligible.
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`IV.
`
`LUMINATl'S ASSERTED PATENT CLAIMS ARE VALID UNDER 101
`
`A.
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`Legal Standard
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`For questions of patent eligibility under §IO 1, the Supreme Court instructs courts to
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`distinguish between claims that claim patent ineligible subject matter and those that "integrate the
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`building blocks into something more." Uniloc United States, Inc. v. Samsung Elecs. Am., Inc., No.
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`2:17-CV-00651-JRG, 2018 U.S. Dist. LEXIS 176336, at *3-5 (E.D. Tex. Sep. 18, 2018) (citing
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`Alice Corp. Pty. Ltd. v. CLS Bank Int'/, 573 U.S. 208,217 (2014).
`
`The Alice test on patent eligibility consists of two-parts which ask: ( 1) Are the claims at
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`issue directed to a patent-ineligible concept, i.e., law of nature, natural phenomena, or abstract
`
`idea; and (2) if so, do the claims contain additional element(s) sufficient to ensure that the claims
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`amount to significantly more than the ineligible concept itself? Alice, 573 U.S. at 221. The Court
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`simultaneously recognized that "[a]t some level, all inventions embody, use, reflect, rest upon, or
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`apply laws of nature, natural phenomena, or abstract ideas," and that "an invention is not rendered
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`ineligible for patent simply because it involves an abstract concept." Id. (internal quotations and
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`citations omitted).
`
`"In cases involving software innovations, [the first step of the Alice] inquiry often turns on
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`whether the claims focus on 'the specific asserted improvement in computer capabilities ... or,
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`instead, on a process that qualifies as an abstract idea for which computers are invoked merely as
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`a tool."' Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
`
`Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016)); see also, e.g., Uniloc
`
`USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1307 (Fed. Cir. 2020) ("We have routinely held
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`software claims patent eligible under Alice step one when they are directed to improvements to the
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`functionality of a computer or network platform itself.").
`
`The second step of the Alice test only applies if step one finds that the patent claims address
`
`11
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`Case 2:19-cv-00395-JRG Document 224 Filed 01/13/21 Page 16 of 28 PagelD #: 7699
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`only abstract, ineligible ideas. If so, the patent claim is nonetheless patentable under step two
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`when the claim limitations "involve more than performance of 'well-understood, routine, [and]
`
`conventional activities previously known to the industry."' Content Extraction & Transmission
`
`LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (quoting Alice,
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`573 U.S. at 225). "The question of whether a claim element or combination of elements is well(cid:173)
`
`understood, routine and conventional to a skilled artisan in the relevant field is a question of fact"
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`that must be "proven by clear and convincing evidence." Berkheimer v. HP Inc., 881 F.3d 1360,
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`1368 (Fed. Cir. 2018).
`
`B.
`
`The Asserted Patents Satisfy Alice Step One, Because They Are Directed
`Toward an Entirely New Network Based on an Innovative Server-Client
`Device-Web Ser