Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 1 of 20 PageID #: 756
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CIVIL ACTION NO. 2:16-CV-00393-RWS
`(LEAD)
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`CIVIL ACTION NO. 2:16-CV-00394–RWS
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`CIVIL ACTION NO. 2:16-CV-00396-RWS
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`CIVIL ACTION NO. 2:16-CV-00397-RWS
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`CIVIL ACTION NO. 2:16-CV-00871-RWS
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`CIVIL ACTION NO. 2:16-CV-00872-RWS
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`MEMORANDUM OPINION AND ORDER
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`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.,
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`Plaintiffs,
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`v.
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`AVG TECHNOLOGIES USA, INC.,
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`Defendant.
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`BITDEFENDER LLC,
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`Defendant.
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`PIRIFORM, INC.
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`Defendant.
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`UBISOFT, INC.
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`Defendant.
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`KASPERSKY LAB, INC.,
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`Defendant.
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`SQUARE ENIX, INC.,
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`Defendant.
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 2 of 20 PageID #: 757
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`Before the Court is Defendant BitDefender LLC’s Motion to Dismiss for Failure to State
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`a Claim (Docket No. 23 in Case No. 2:16-cv-3941), which is joined by Defendant Piriform, Inc.
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`(collectively with BitDefender LLC, “Defendants”).2 Docket No. 20 in Case No. 2:16-cv-396.
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`The Motion was fully briefed (see Docket Nos. 26, 29 and 32), and the Court held a hearing on
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`Friday, December 2, 2016. See Docket No. 91 in Case No. 2:16-cv-393 (“Tr.”) at 2:1. Defendants’
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`Motion alleges that the asserted patent claims are drawn to ineligible subject matter under 35
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`U.S.C. § 101 and Alice Corp. v. CLS Bank, Int’l, 134 S. Ct. 2347 (2014). For the reasons that
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`follow, Defendants’ Motion is GRANTED-IN-PART and DENIED-IN-PART.
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`BACKGROUND
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`This is a consolidation of six patent-infringement actions in which Plaintiffs Uniloc USA,
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`Inc. and Uniloc Luxembourg S.A. (collectively, “Uniloc”) assert infringement of U.S. Patent Nos.
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`6,510,466 (“the ’466 Patent”), entitled “Methods, Systems and Computer Program Products for
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`Centralized Management of Application Programs on a Network,” and 6,728,766 (“the ’766
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`Patent”), entitled “Methods, Systems and Computer Program Products for License Use
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`management on a Network” (collectively, the “Asserted Patents”). See Docket No. 1 at ¶¶ 10, 22,
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`27, 29; Docket No. 39. The Defendants are providers of software, and the accused products are
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`Defendants’ software licensing and delivery systems. Docket No. 23 at 2.
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`The Asserted Patents relate to “application program management on a computer network.”
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`’466 Patent, col. 1:21–23; ’766 Patent, col. 1:21-23.3 The computer network includes a server
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`1 Unless specifically stated otherwise, “Docket No.” refers to the docket in Case No. 2:16-cv-394.
`2 BitDefender’s motion was originally also joined by Defendant AVG Technologies USA, Inc.,
`which has since been dismissed. See Case No. 2:16-cv-393, Docket No. 21 (joining motion);
`Docket No. 127 (dismissing AVG).
`3 Although the Asserted Patents are related to each other, their specifications are somewhat
`different.
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 3 of 20 PageID #: 758
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`supporting client stations and can be called a “client-server environment.” Docket No. 26 at 2
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`(citations omitted). The client-server environment is characterized by the possibility than any
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`given user may use different clients at different times. See ’466 Patent at col. 1:44–56. In the
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`context of the client-server environment, the claimed inventions of the Asserted Patents seek to
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`centralize application management so that “the entire process [can] be controlled from a single
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`point for an entire managed network environment.” Id. at col. 3:35–36; ’766 Patent, col: 3:35–36.
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`“Application management” is not explicitly defined in the Asserted Patents. However, the
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`’466 Patent specification describes “an application management system for managing configurable
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`application programs using both user and administrative preferences for various application
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`programs.” ’466 Patent, col. 7:25–28. The specification further explains that “application
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`management information may include configurable user preference information for the plurality
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`of application programs,” id. at col. 4:53–55, or may include “user, software, device, preference
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`and access control information.” Id. at col. 7:62–64. Application management thus includes many
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`aspects of providing software to users in the context of a client-server environment. See id. at col
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`1:44–56.
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`Claim 1 of the ’466 Patent provides:
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`1. A method for management of application programs on a network including a
`server and a client comprising the steps of:
`installing a plurality of application programs at the server;
`receiving at the server a login request from a user at the client;
`establishing a user desktop interface at the client associated with the user
`responsive to the login request from the user, the desktop interface including
`a plurality of display regions associated with a set of the plurality of
`application programs installed at the server for which the user is authorized;
`receiving at the server a selection of one of the plurality of application programs
`from the user desktop interface; and
`providing an instance of the selected one of the plurality of application
`programs to the client for execution responsive to the selection.
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 4 of 20 PageID #: 759
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`Claim 1 of the ’766 Patent provides:
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`1. A method for management of license use for a network comprising the steps
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`of:
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`maintaining license management policy information for a plurality of
`application programs at a license management server, the license
`management policy information including at least one of a user identity
`based policy, an administrator policy override definition or a user policy
`override definition;
`receiving at the license management server a request for a license availability
`of a selected one of the plurality of application programs from a user at a
`client;
`determining the license availability for the selected one of the plurality of
`application programs for the user based on the maintained license
`management policy information; and
`providing an unavailability indication to the client responsive to the selection if
`the license availability indicates that a license is not available for the user
`or an availability indication if the licensed availability indicates that a
`license is available for the user.
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`The ’466 and ’766 Patents address different aspects of application management in the
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`client-server environment. The ’466 Patent addresses installing application software on the server
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`and providing instances of that software to the clients for execution. ’466 Patent, col. 3:48–50.
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`The ’466 Patent further addresses establishing a user-specific desktop interface for clients from
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`which users may select display regions associated with the application software. See id. at col.
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`4:39–44. By contrast, the ’766 Patent addresses the management of licenses for the application
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`software, including maintaining license-related policies and information in the client-server
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`environment such that license availability can be communicated to clients on a user-specific basis.
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`’766 Patent, col. 3:24–28, 3:40–45, 5:38–60.
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`LEGAL STANDARD
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`Federal Rule of Civil Procedure 12(b)(6)
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`Under Federal Rule of Civil Procedure 12(b)(6), the Court must dismiss a complaint that
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`does not state a claim for relief that is “plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 5 of 20 PageID #: 760
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`(2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). To state a plausible claim,
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`Plaintiffs must plead facts sufficient to allow the Court to draw a reasonable inference that
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`Defendants are liable for the alleged patent infringement. See id. (citing Twombly, 550 U.S. at
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`556). At this stage, the Court accepts all well-pleaded facts as true and views those facts in the
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`light most favorable to the Plaintiffs. Bustos v. Martini Club, Inc., 599 F.3d 458, 461 (5th Cir.
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`2010).
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`Eligibility Under 35 U.S.C. § 101
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`In determining whether a claim is patent-ineligible under Alice, the Court must “first
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`determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 134 S.
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`Ct. at 2355. Claims directed to software inventions do not automatically satisfy this first step of
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`the inquiry. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Rather, “the
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`first step in the Alice inquiry . . . asks whether the focus of the claims is on [a] specific asserted
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`improvement in computer capabilities . . . or, instead, on . . . an ‘abstract idea’ for which computers
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`are invoked merely as a tool.” Id. at 1335–36.
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`If the Court determines that the claims are directed to an abstract idea, it then determines
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`whether the claims contain an inventive concept sufficient to transform the claimed abstract idea
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`into a patent-eligible application. Alice, 134 S. Ct. at 2357. An inventive concept is “some element
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`or combination of elements sufficient to ensure that the claim in practice amounts to ‘significantly
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`more’ than a patent on an ineligible concept.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
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`1245, 1255 (Fed. Cir. 2014). The Court “consider[s] the elements of each claim both individually
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`and as an ordered combination to determine whether the additional elements transform the nature
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`of the claim into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (internal quotation
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`omitted). Even if each claim element, by itself, was known in the art, “an inventive concept can
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 6 of 20 PageID #: 761
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`be found in the non-conventional and non-generic arrangement of known, conventional pieces.”
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`Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350.
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`Asserted, Challenged and Representative Claims
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`ANALYSIS
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`Defendants’ motion originally challenged the patent-eligibility of all claims of the Asserted
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`Patents, but Defendants subsequently limited it to challenge only the claims that Uniloc actually
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`asserts: claims 1, 2, 7, 15 and 22 of the ’466 Patent and claims 1, 3, 7, 9, 13 and 15 of the ’766
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`Patent.4 Docket No. 29 at 2; Tr. at 15:8–12. To the extent the motion challenges any other claim
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`of the Asserted Patents, it is DENIED without prejudice.
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`Of the ’466 Patent claims, claims 1 and 15 are independent, claims 2 and 7 depend from
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`claim 1, and claim 22 depends from claim 15. Docket No. 23 at 5. Defendants assert that claim 1
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`is representative of claim 15 and claim 7 is representative of claim 22. Docket No. 23 at 5–6. In
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`support of their assertion, Defendants state, “Claims 15 and 22, although drafted as systems, are
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`identical in substance to Claims 1 and 7 for the purposes of this motion because Claims 15 and 22
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`merely recited the limitations of claim 1 in means-plus-function language.” Id. at 6.
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`Of the ’766 Patent claims, claims 1, 7 and 13 are independent, claim 3 depends from claim
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`1, claim 9 depends from claim 7, and claim 15 depends from claim 13. See Docket No. 23 at 7.
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`Defendants assert that claim 1 of the ’766 Patent is representative of claims 7 and 13 and claim 3
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`is representative of claims 9 and 15. In support of their assertion, Defendants state, “Claims 7 and
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`9, although drawn as means plus function claims, are identical in substance to Claims 1 and 3 for
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`4 In its opposition, Uniloc represented that it is only asserting claims 1, 2, 7, 15 and 22 of the ’466
`Patent and claims 1, 3, 7, 9, 13 and 15 of the ’766 Patent. Docket No. 26 at 2.
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 7 of 20 PageID #: 762
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`purposes of this motion. Claims 13 and 15, although drawn as computer product claims, are
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`identical in substance to Claims 1 and 3 for purposes of this motion.” Id.
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`Defendants have not shown that the scope of the means-plus-function claims (claims 15
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`and 22 of the ’466 Patent and claims 7, 9, 13 and 15 of the ’766 Patent) is similar to the scope of
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`the non-means-plus-function claims (claims 1 and 7 of the ’466 Patent and claims 1 and 3 of the
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`’766 Patent). See Perdiemco, LLC v. Industrack LLC, Case No. 2:15-cv-727, 2016 WL5719697,
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`at *7 adopted 2016 WL 5475707 (E.D. Tex. Sept. 29, 2016) (“When the movant relies on a
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`representative claim in its § 101 analysis, it bears the burden of showing that the other asserted
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`claims are ‘substantially similar and linked to the same abstract idea.’ ”) (quoting Content
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`Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014);
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`citing also Wright & Miller, Federal Practice and Procedure: Civil 3d § 1357 (2004)). Generally,
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`means-plus-function claims have a narrower scope than non-means-plus-function claims. See 35
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`U.S.C. § 112(f) (limiting the construction of means-plus-function terms to “the corresponding
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`structure, material, or acts described in the specification and equivalents thereof”). As such, they
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`may be patent-eligible even when similar non-means-plus-function claims are not. Because
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`Defendants only make arguments with respect to the non-means-plus-function claims and have
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`not shown the latter to be representative of the means-plus-function claims, the motion is DENIED
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`without prejudice as to claims 15 and 22 of the ’466 Patent and claims 7, 9, 13 and 15 of the ’766
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`Patent.
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`Need for Claim Construction
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`The parties disagree as to whether claim construction is necessary to adjudicate the patent
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`eligibility of the remaining claims. Docket No. 32 at 8. Uniloc argues that claim construction is
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`required because Defendants’ arguments that the claims are directed to “the idea of managing the
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 8 of 20 PageID #: 763
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`distribution of software over a network” and “preempt all ways of managing applications in a
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`client-server environment” reflect an overgeneralized construction of the claims. Id. at 8–9.
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`Uniloc further argues that the claims do not “monopolize every potential solution to the problem”
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`addressed by the claims and that any dispute as to the scope of the claims should preclude dismissal
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`under Section 101. Id. at 9.
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`The Court is not persuaded that there is a legitimate claim construction dispute in this case
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`that would frustrate its ability to rule on the instant motions to dismiss. Uniloc’s argument that the
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`scope of preemption is incomplete is irrelevant because complete preemption is not required under
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`Alice. See 134 S. Ct. at 2355. Significantly, neither Uniloc nor Defendants has proposed any
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`construction of any term in the Asserted Patents, much less demonstrated that such a construction
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`is plausible or favors Uniloc in this eligibility analysis. While some cases may require that the
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`claims be construed before their eligibility can be assessed, this is not such a case.
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`Alice Step One
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`“The Supreme Court has not established a definitive rule to determine what constitutes an
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`‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice inquiry.” Enfish, 822 F.3d at
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`1334. “Rather, both [the Federal Circuit] and the Supreme Court have found it sufficient to
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`compare claims at issue to those claims already found to be directed to an abstract idea in previous
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`cases.” Id. In the context of software inventions, the Federal Circuit has instructed that claims
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`directed to improvements in the functioning of a computer are not directed to an abstract idea. Id.
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`at 1335. Conversely, claims may be directed to abstract ideas if they are directed to fundamental
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`economic and conventional business practices. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
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`1359, 1362–63 (Fed. Cir. 2015). Claims may also be directed to abstract ideas if “[t]hey do not
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`claim a particular way of programming or designing the software to [accomplish the claimed
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 9 of 20 PageID #: 764
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`functionality], but instead merely claim the resulting systems” or if the claims “are not directed to
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`a specific improvement in the way computers operate.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
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`1229, 1241 (Fed. Cir. 2016).
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`Defendants contend that all of the asserted claims are directed to the idea of “managing the
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`distribution of software over a network.” Docket No. 23 at 12. In support of their contention,
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`Defendants compare the instant claims to those in Ultramercial, 772 F.3d at 715, Content
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`Extraction, 776 F.3d at 1347, Intellectual Ventures I, LLC v. Motorola Mobility LLC, 81 F.Supp.3d
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`356 (D. Del. Feb 24, 2015) and Tranxition, Inc. v. Lenovo (United States) Inc., Case No. 3:12-cv-
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`1065, 2015 U.S. Dist. LEXIS 89593, at *6 (D. Or. July 9, 2015). Id. at 12–15 (also citing
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`Landmark Tech. at *8, *18; Intellectual Ventures II, 2015 U.S. Dist. LEXIS 56092, at *13–14, 49;
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`Neochloris, Inc. v. Emerson Process Management LLP, 2015 U.S. Dist. LEXIS 138957, at *13
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`(N.D. Ill. Oct. 13, 2015)).
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`Defendants argue that the asserted claims are directed to abstract ideas because the
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`component steps of the method claims are themselves abstract. Id. at 14–15. Defendants further
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`argue that “distributing and maintaining software for network users” “has been recognized in the
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`past, and is now [recognized as] a basic and fundamental process.” Id. at 15. Finally, Defendants
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`support their allegation that the asserted claims are abstract “by comparing computer elements
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`with what a human can do manually without a computer.” Id. at 15–17 (citing Clear With
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`Computers, LLC v. Dick’s Sporting Goods, Inc., 21 F.Supp.3d 758, 765–66 (E.D. Tex. 2014)).
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`Plaintiffs respond that the asserted claims are not directed to an abstract idea because “the
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`claims are directed to a specific implementation of a solution to a problem in the software arts.”
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`Docket No. 26 at 7 (quoting Enfish, 2016 U.S. App. LEXIS 8699, at *16). Plaintiffs further
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`respond that the alleged abstract idea, “managing the distribution of software over a network,”
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 10 of 20 PageID #: 765
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`represents an over-generalization of the Asserted Patents. Id. Plaintiffs argue that the claims are
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`not abstract because “the need for this type of [claimed] technology in the marketplace at the time
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`it was invented is apparent.” Id. at 8. Plaintiffs state that the “present inventions remedied [certain]
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`deficiencies [in the prior art] by providing ‘a seamless integration of application access and session
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`characteristics across heterogeneous networks.’ ” Id. at 9 (citing ’466 Patent, col 3:21–25).
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`Plaintiffs recite several limitations of the asserted claims and state these limitations give rise to
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`purported advantages of the claimed technology. Id. at 9–12. Plaintiffs also deny that the claimed
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`methods can be performed by a human mind and argue that the methods are not directed to abstract
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`ideas because they require a computer. Id. at 13–14.
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`Additionally, Plaintiffs argue that the claimed inventions of the ’466 and ’766 Patents
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`improve the operation of a network of computers. Id. at 13. Plaintiffs state that the claimed
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`technology of the ’466 Patent “fill[s] a gap in the art at the time, in providing increased efficiency
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`in the management of application programs in a client server environment to address the then new
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`problem of user roaming in networks.” Id. “The ’766 Patent allows for a reduction in costs
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`associated with license use management of application programs in a client server environment.”
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`Id.
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`Defendants reply that Asserted Patents do not improve the functioning of a computer under
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`Enfish because their claims are not as specific as the Enfish claims, Docket No. 29 at 3, and because
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`improved efficiency or reduced costs are not cognizable improvements to the functioning of a
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`computer. Id. at 5 n.25. Plaintiffs’ surreply asserts that their claims are non-abstract because their
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`claims are not overly vague. Docket No. 32 at 2–3 (citing ContentGuard Holdings, Inc. v.
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`Amazon.com, Inc. 142 F. Supp. 3d 510, 512–13 (E.D.Tex. 2015)). Plaintiffs also re-urge in
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`surreply that Defendants’ alleged abstraction is over-generalized. Id. at 4–6 (citations omitted).
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 11 of 20 PageID #: 766
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` The Court agrees with Plaintiffs that “managing the distribution of software over a
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`network” describes the claims at too high a level of abstraction but disagrees that this is fatal to
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`Defendants’ motion. Defendants’ description is not “untethered from the language of the claims”
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`because it is derived from the preambles of claim 1 of the ’466 Patent and claim 1 of the ’766
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`Patent. Cf. Enfish, 822 F.3d at 1337. Moreover, Defendants have shown that the claims are
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`directed to abstract ideas at a lower level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842
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`F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels
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`of abstraction.”).
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`The ’466 Patent is directed to providing a user-specific desktop interface that includes
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`establishing display regions associated with application programs for which the user is authorized
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`and, in response to the user’s selection of one such display region, providing an instance of the
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`application program to the user’s client for execution. The claims do not improve the functioning
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`of a computer or computer network because “increased efficiency in the management of
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`application programs” is not a technological benefit. Additionally, the claims are overly vague
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`because they recite “establishing a user desktop” with certain features without claiming any
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`“particular way of programming or designing the software to create [user desktops] that have these
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`feature.” Ameranth, 842 F.3d at 1241.
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`The ’766 Patent is directed to using “license management policy information” to provide
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`an indication of whether a license is available to a user for an application program in response to
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`a request for license availability. Claims to the maintenance of information and announcement of
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`that information in response to a request have been found to be abstract. See Elec. Power Grp.,
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`LLC v. Alston S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016). Moreover, the ’766 Patent is not
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`directed to an improvement of a computer or computer network. Reduced costs associated with
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 12 of 20 PageID #: 767
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`license use management in a client server environment, like increased efficiency, is a business
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`benefit rather than a benefit to the client server environment itself.
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`In sum, the claims of the Asserted Patents are directed to abstract ideas. Because step one
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`of the Alice inquiry is satisfied, the Court proceeds to step two.
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`Alice Step Two
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`At the second step of the Alice eligibility inquiry, the Court evaluates “whether the claims
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`here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic
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`computer” (i.e., provide an inventive concept). Alice, 124 S. Ct. at 2359. The Court first analyzes
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`the claim elements separately and then as an ordered combination. Id. at 2359–60.
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`’446 Patent, Claim 1
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`Defendants argue that the individual limitations of claim 1 of the ’466 Patent do not provide
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`an inventive concept. They argue that even if the preamble is limiting, it does not provide an
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`inventive concept because similar preambles have not been held to provide an inventive concept
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`and the preamble of claim 1 recites only generic equipment being used in a conventional manner.
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`Docket No. 23 at 18–19. They next contend that the first step recites routine activity—installing
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`computer software—on a generic computer, the “server.” Id. at 19. According to Defendants, the
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`second step also recites generic computer components (i.e., “server” and “client”) performing an
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`allegedly abstract idea of logging into a network. Id. Defendants also characterize the third step—
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`providing the user interface—as an abstract idea and argue that, therefore, it also does not provide
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`an inventive concept. Id. at 20. Finally, Defendants characterize the fourth and fifth steps—
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`communicating the user’s selection to a server and providing a copy of the program, respectively—
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`as abstract ideas. Id. Defendants also argue that the asserted claims are not like those in DDR
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`Holdings because the claims in that case solved a problem specific to the Internet as opposed to
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`Case 2:16-cv-00393-RWS Document 129 Filed 03/28/17 Page 13 of 20 PageID #: 768
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`the claims in this case, which “describe a widely-understood and well-known abstract idea—
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`managing the distribution of software over a network—and then implement the abstract idea using
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`conventional computer components.” Id. at 23. Defendants also distinguish the claimed invention
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`of the ’466 Patent from the “technology-based solution” of Bascom because the instant claims rely
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`only on generic computer technology. Id. at 29–30.
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`Plaintiffs respond that Defendants ignore that “[t]he ‘inventive concept’ may arise in one
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`or more of the individual claim limitations or in the ordered combination of the limitations” and
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`“[t]he inventive concept inquiry requires more than recognizing that each claim element, by itself,
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`was known in the art.” Docket No. 26 at 14 (citing Bascom, 2016 LEXIS 11687, at *18). Plaintiffs
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`state that “[t]he inventive concept inherent in the ’466 Patent allows for a variety of application
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`programs to be maintained at the server and an instance of a selected one of the application
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`programs to be provided as needed to a user logged onto a client device.” Id. at 14. Plaintiffs
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`further state that certain limitations of the ’466 Patent claims “allow[] for individual application
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`programs to be provided to the user as needed where they are executed at a client device.” Id. at
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`15. Plaintiffs also compare the claims to those in DDR Holdings and Bascom and argue that the
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`claims of the ’466 Patent are patent-eligible because they are limited to a discrete implementation
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`for centralized management of applications. Id. at 15–18.
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`In reply, Defendants argue that “[t]he limitations of the Asserted Claims considered as an
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`ordered combination do not add anything significantly more to transform the Asserted Claims to
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`patent eligibility.” Docket No. 29 at 8. Defendants assert that the specifications of the Asserted
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`Patents “make clear that, even considered as an ordered combination, there is nothing ‘discrete’ in
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`the limitations recited in the Asserted Claims.” Id. The ordered combination contains no inventive
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`concept, Defendants argue, because even as combined, the limitations “function as expected in an
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`entirely predictable fashion and in accordance with the conventional use at the time of the
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`invention.” Id. at 8–9 (citing Tridia Corp. v. Lead Case Sauce Labs, 2016 U.S. Dist. LEXIS 99878,
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`at *23 (N.D. Ga. 2016)).
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`Plaintiffs argue in surreply that Defendants have provided no evidence that the claims are
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`directed toward “conventional computer, network, and display technology.” Docket No. 32 at 7
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`(citing Docket No. 29 at 4). Plaintiffs further argue that the asserted claims supply an inventive
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`concept like those in SimpleAir, Inc. v. Google Inc., 136 F. Supp. 3d 745 (E.D. Tex. 2015).
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`The individual limitations of claim 1 of the ’466 Patent fail to provide an inventive concept.
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`Defendants have shown that each limitation enumerates a routine function of computers. Although
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`the Court credits the specification in listing purported advantages of the claimed invention, see
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`Enfish, 822 F.3d at 1337 (discussing purported benefits of the claimed invention over the prior
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`art), Plaintiffs provide no authority for their argument that these advantages can constitute an
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`inventive concept in themselves. A claim may be sufficiently limited that it has an inventive
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`concept under Alice even if the claimed invention has no advantages over the prior art, and a
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`claimed invention may have advantages over similar prior art inventions but be claimed in an
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`insufficiently limited way to confer eligibility under Alice.
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`Moreover, the purported advantages of the claimed invention are not stated in the claims,
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`and unclaimed advantages cannot, in themselves, constitute an inventive concept because any
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`inventive concept must be found in the claims. See Bascom, 827 F.3d at 1349 (“The ‘inventive
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`concept’ may arise in one or more of the individual claim limitations or in the ordered combination
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`of the limitations.”) (citing Alice, 134 S. Ct. at 2355). Plaintiffs attempt to tie the purported
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`advantages listed in the specification to certain limitations of claim 1. Even if Plaintiffs are correct
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`that one or more individual claim limitations is responsible for a certain advantage discussed in
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`the specification, claim 1 is still patent-ineligible. The existence of other, less advantageous ways
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`of accomplishing similar goals, in this case maintaining Electronic Health Records, may be
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`evidence that the claims do not preempt every form of Electronic Health Record, but maintaining
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`an Electronic Health Record is not the abstract idea to be limited. Rather, organizing data in a
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`hierarchical format is the abstract idea to be limited,5 and the fact that there may be other ways of
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`making an Electronic Health Record is irrelevant to whether the ’466 Patent meaningfully limits
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`that idea.
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`Finally, the ordered combination of limitations also fails to provide an inventive concept
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`under Bascom and DDR Holdings. There is no inventive concept because, unlike the claims in
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`Bascom, the claims here rely upon only generic computer components used in a routine
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`arrangement. Specifically, the “client” and “server” are generic computers, and they are set up in
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`a generic client-server arrangement. See, e.g., ’466 Patent, col. 1:57–2:11 (describing prior art
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`client-server environments). The traditional arrangement of computer components in the instant
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`claims distinguishes this case from Bascom, in which the non-generic arrangement of otherwise
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`generic computer components provided the inventive concept behind the unique Internet-filtering
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`solution. See Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
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`(Fed. Cir. 2016).
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`DDR Holdings also supports the conclusion that claim 1 of the ’466 Patent provides no
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`inventive concept. In that case, the Federal Circuit upheld patent-eligibility of the claims at step
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`two of the Alice inquiry because they solved a problem unique to the Internet with no brick-and-
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`mortar analog. DDR Holdings, 773 F.3d at 1257–58. The Federal Circuit “caution[ed], however,
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`5 The Court rephrases the abstract idea here to emphasize that the medical nature of the claimed
`invention is a field of use restriction and does not contribute to an inventive concept. See Parker
`v. Flook, 98 S. Ct. 2522, 2528–29 (1978).
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`that not all claims purporting to address Internet-centric challenges are eligible for patent” and
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`contrasted the claims to those in Ultramercial, which “broadly and generically claim ‘use of the
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`Internet’ to perform an abstract business practice (with insignificant added activity).” Id. at 1258.
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`The Federal Circuit further stated that the DDR Holdings claims “specify how interactions with
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`the Internet are manipulated to yield a desired result—a result that overrides the routine and
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`convention