Case 2:16-cv-00741-RWS Document 267 Filed 09/28/17 Page 1 of 25 PageID #: 5348
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`UNILOC USA, INC. AND UNILOC
`LUXEMBOURG, S.A.,
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`v.
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`ADP, LLC,
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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-00741-RWS
`(LEAD)
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`CIVIL ACTION NO. 2:16-CV-00858-RWS
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`Plaintiffs,
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`Defendant.
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`Defendant.
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`BIG FISH GAMES, INC.,
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`MEMORANDUM OPINION AND ORDER
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`Before the Court are Defendant ADP, LLC (“ADP”) and Big Fish Games, Inc.’s (“Big
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`Fish”) (collectively, “ADP Defendants”) Motions to Dismiss the Complaint for Failure to State a
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`Claim (Docket Nos. 17 and 80, respectively) against Uniloc USA, Inc. and Uniloc Luxembourg,
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`S.A.’s (“Uniloc”).1 Uniloc’s case against Big Fish is consolidated with its case against ADP for
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`pretrial purposes, with the exception of venue. Docket No. 25.2 The motions were originally filed
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`while the cases were pending before Judge Gilstrap. On March 28, 2017, while ADP and Big
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`1 Defendant Zendesk, Inc. was dismissed on August 11, 2017, and its motion to dismiss (Docket No. 70)
`was terminated on August 16, 2017. Defendants Blackboard, Inc. and Box, Inc. were dismissed on August
`16, 2017, and their respective motions to dismiss (Docket Nos. 58 and 89) were also terminated on August
`16, 2017.
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`2 “Docket No.” refers to the docket in Lead Case No. 2:16-cv-741 unless otherwise indicated.
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`Case 2:16-cv-00741-RWS Document 267 Filed 09/28/17 Page 2 of 25 PageID #: 5349
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`Fish’s motions were still pending before Judge Gilstrap, this Court ruled on several motions to
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`dismiss in Lead Case No. 2:16-cv-393 (“AVG”). See Docket No. 129 in AVG (the “AVG Order”).
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` The AVG Order addressed claims 1, 2, 7, 15 and 22 of U.S. Patent No. 6,510,466 (“the
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`’466 Patent”) and claims 1, 3, 7, 9, 13 and 15 of U.S. Patent No. 6,728,766 (“the ’766 Patent”).
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`See Docket No. 129 in AVG at 2. Of those claims, the Court held that claims 1, 2 and 7 of the ’466
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`Patent and claims 1 and 3 of the ’766 Patent are drawn to ineligible subject matter. Id. at 20. The
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`remaining claims the Court considered are means-plus-function claims. The Court held that the
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`defendants had not sufficiently established that the means-plus-function claims are represented by
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`the allegedly representative non-means-plus-function claims and accordingly declined to decide
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`whether the means-plus-function claims are also directed to ineligible subject matter. Id. at 7.
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`After the ADP cases were reassigned to the undersigned (Docket No. 149), the Court
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`ordered the parties in this case to file supplemental briefing on the effects of the AVG Order on the
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`pending motions. Docket No. 160. Uniloc, ADP, and Big Fish each filed supplemental briefs
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`(respectively, Docket Nos. 190, 174, and 180).
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`The claims Uniloc asserts against the ADP Defendants are not limited to the ones that it
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`asserted against the defendants in AVG.3 Specifically, the claims asserted in this case but not
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`asserted in AVG include claims 5, 11 and 17 of the ’766 Patent and claims 3–5, 8, 9, 13, 16–20,
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`22–24, 28–33, 35–37, 41 and 42 of the ’466 Patent. See Compl. against ADP, Docket No. 1; Am.
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`Compl. against Big Fish, Docket No. 57; Uniloc Supp. Br., Docket No. 190 at 2. Uniloc also
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`asserts against the ADP Defendants two additional patents, U.S. Patent Nos. 6,324,578 (“the ’578
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`3 Uniloc has also asserted infringement of the Asserted Patents in Lead Case No. 2:16-cv-862 against
`Defendants Netsuite, Inc. and Nutanix, Inc. Nutanix Inc. joins ADP’s motion to dismiss (2:16-cv-862,
`Docket No. 39 at 2). Netsuite filed its own Motion to Dismiss the Amended Complaint for Failure to State
`a Claim (2:16-cv-862, Docket No. 25).
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`Case 2:16-cv-00741-RWS Document 267 Filed 09/28/17 Page 3 of 25 PageID #: 5350
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`Patent”) and 7,069,293 (“the ’293 Patent”), that it did not assert against the defendants in AVG.
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`Specifically, Uniloc asserts claims 1–8, 10–39, 41–46 of the ’578 Patent, and claims 1, 12 and 17
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`of the ’293 Patent. 4 Docket No. 190 at 2.
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`The ’578 and ’293 Patents are related to the ’466 and ’766 Patents, with the ’578 and ’766
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`Patents sharing a common specification and the ’466 and ’293 Patents also sharing a common
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`specification.5
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`ADP Defendants challenge all claims of the four asserted patents, alleging that they are
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`invalid under 35 U.S.C. § 101. Docket No. 17 at 6.6 For the reasons that follow, ADP’s Motion
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`is GRANTED-IN-PART and DENIED-IN-PART.
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`I.
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`BACKGROUND
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`The background of the ’466 and ’766 Patents is addressed in the AVG Order. See Docket
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`No. 129 in AVG, at 2–4. Like the ’466 and ’766 Patents, the ’578 and ’293 Patents address aspects
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`of application management in the client-server environment.
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`The ’578 Patent is directed to obtaining user and administrator sets of configuration
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`preferences for applications and then executing the applications using both sets of obtained
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`preferences. See ’578 Patent, col. 3:40–45. Claim 1 of the ’578 Patent provides:
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`4 In its supplemental briefing, Uniloc does not include claim 22 of the ʼ466 Patent and claim 12 of the ʼ578
`Patent in its chart of asserted claims against ADP. As Uniloc has not indicated to the Court that it intended
`to drop these two claims, the Court considers these two claims in this Order.
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`5 “[T]he Asserted Patents are all part of a family of patents drawn toward addressing the inefficiencies in
`application management in client-server environment. Accordingly, they share similar specifications.”
`Docket No. 64 at 5–6. “The ‘293 Patent is a divisional of the ‘466 Patent and shares its specification. The
`‘578 Patent is a Parent to the ‘766 Patent and shares its specification. Further, each pair of Patents
`incorporates by reference the other pair’s specification.” Docket No. 174 at 2 n.3.
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`6 ADP and Big Fish’s motions to dismiss for failure to state a valid claim are nearly identical with the
`exception that Big Fish’s Motion does not address the ʼ766 Patent, as Uniloc has not asserted infringement
`of this patent against Big Fish. See Am. Compl. against Big Fish, Docket No. 57. The Court primarily
`discusses and cites to ADP’s motion (the “Motion,” Docket No. 17).
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`Case 2:16-cv-00741-RWS Document 267 Filed 09/28/17 Page 4 of 25 PageID #: 5351
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`1. A method for management of configurable application programs on a
`network comprising the steps of:
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`installing an application program having a plurality of configurable preferences
`and a plurality of authorized users on a server coupled to the network;
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`distributing an application launcher program associated with the application
`program to a client coupled to the network;
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`obtaining a user set of the plurality of configurable preferences associated with
`one of the plurality of authorized users executing the application launcher
`program;
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`obtaining an administrator set of the plurality of configurable preferences from
`an administrator; and
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`executing the application program using the obtained user set and the obtained
`administrator set of the plurality of configurable preferences responsive to
`a request from the one of the plurality of authorized users.
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`The ’293 Patent describes distributing applications to on-demand servers from a centralized
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`network management server. See ’293 Patent at col. 50–53. For example, Claim 1 of the ’293
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`Patent provides:
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`1. A method for distribution of application programs to a target on-demand
`server on a network comprising the following executed on a centralized network
`management server coupled to the network:
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`providing an application program to be distributed to the network management
`server;
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`specifying a source directory and a target directory for distribution of the
`application program;
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`preparing a file packet associated with the application program and including a
`segment configured to initiate registration operations for the application
`program at the target on-demand server; and
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`distributing the file packet to the target on-demand server to make the
`application program available for use by a user at a client.
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`II.
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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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`(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, the Court must “first determine whether
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`the claims at issue are directed to a patent-ineligible concept.” Alice Corp. Pty. v. CLS Bank Int’l,
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`134 S. Ct. 2347, 2355, (2014). Claims directed to software inventions do not automatically satisfy
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`this first step of the inquiry. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
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`Rather, “the first step in the Alice inquiry . . . asks whether the focus of the claims is on [a] specific
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`asserted improvement in computer capabilities . . . or, instead, on . . . an ‘abstract idea’ for which
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`computers 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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`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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`III. ANALYSIS
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`A. Asserted and Challenged Claims
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`ADP challenges all claims of the Asserted Patents, even though Uniloc has not alleged
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`infringement of every claim of the Asserted Patents. Uniloc argues that it would be legally
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`improper for the Court to invalidate unasserted claims. Docket No. 64 at 6 n.1 (citing 800 Adept,
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`Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1367 (Fed. Cir. 2008)). ADP argues that its challenge to
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`all claims in the four asserted patents is appropriate. Docket No. 88 at 9–10 (citing A Pty Ltd. v.
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`Ebay, Inc., Case No. 1:15-cv-155-RP, 2015 WL 10990118 at *4 (W.D. Tex. Oct. 8, 2015)). In the
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`interest of judicial economy, the Court declines to consider arguments regarding unasserted claims
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`at this time. Accordingly, to the extent ADP challenges any claim not asserted in this action, the
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`Motion is DENIED without prejudice.
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`B. Representative Claims
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`In the AVG case, the Court denied the defendants’ motion to dismiss as to claims 7, 9, 13,
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`and 15 of the ʼ766 Patent and claims 15 and 22 of the 466 Patent on the basis that defendants had
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`failed to carry their burden of showing that these means-plus-function claims are similar in scope
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`to or represented by the non-means-plus-function claims. Docket No. 129 in AVG, at 7.
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`Here, however, ADP asserts that claim 1 of each of the four asserted patents is
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`representative of the remaining respective independent claims, and that the attendant dependent
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`claims are representative of similar dependent claims. Docket No. 17 at 8–11. ADP argues that
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`each of the following independent claims are system claims which recite “the limitations of claim
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`1 in a means-plus-function language”: claims 17 and 31 of the ʼ578 Patent, claim 15 of the ʼ466
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`Patent, claim 12 of the ʼ293 Patent, and claim 7 of the ʼ766 Patent. Id. ADP further argues that
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`each of the following independent claims recites “computer readable program means” for
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`performing the functions of claim 1 of each Patent: claims 32 and 46 of the ʼ578 Patent, claim 16
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`of the ʼ466 Patent, claim 17 of the ʼ293 Patent, and claim 13 of the ʼ766 Patent. Id. As to the
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`remaining independent claims 15 and 16 of the ʼ578 Patent, ADP asserts that claim 15 is a method
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`claim “which recites the features of claim 1 as executed at a client, not a server,” and that claim
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`16 is “a combined server-client system which combines the limitations of claims 17 and 31.” Id.
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`at 8.
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`Uniloc does not refute or even acknowledge ADP’s assertions of representativeness in its
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`Opposition and instead argues only about claim 1 of each patent and the respective dependent
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`claims. See Docket No. 64 at 13–14, 16–18, 20, 22–23. In fact, nowhere in its Opposition does
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`Uniloc address or cite to any of the other claims. See id. Uniloc’s Opposition treats the claims of
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`each patent collectively, never indicating that an inventive concept might be found in a means-
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`plus-function claim that is not also found in a non-means-plus-function claim. E.g., Docket No.
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`64 at 27 (“For example, claims of the ’466 Patent recite . . .”); 29 (“Further, the claims of the ’578
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`Patent recite . . .”).
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`Moreover, after the Court denied the motion to dismiss in AVG as to the means-plus-
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`functions claims, the Court ordered the parties to submit supplemental briefing regarding the
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`effects of the AVG Order on the instant motions. Docket No. 160 at 2. In its supplemental briefing,
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`ADP reasserts that it has met its burden to show that the scope of the means-plus-function claims
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`are sufficiently similar to the scope of the non-means-plus-function claims. Docket No. 174 at 3–
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`4. ADP argues that it has demonstrated that the method claims are sufficiently representative of
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`the means-plus-function claims “because the system[s] claims were ‘mirror’ images reciting
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`‘means for’ performing the exact method steps found in the representative claims.” Id. (citing
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`Motion, Docket No. 17 at 8–11). ADP also reasserts in its supplemental briefing that “where
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`method claims are invalid under Section 101, corresponding system claims that contain only
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`‘minor differences in terminology but require performance of the same basic process’ are equally
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`invalid.” Id. (citing to Motion, Docket No. 17 at 18 (quoting Accenture Global Servs., GmbH v.
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`Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013))).
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`In
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`its supplemental brief, Uniloc again does not refute ADP’s assertion of
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`representativeness. Instead, Uniloc states that because “some of these [means-plus-function]
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`claims are common to both sets of cases, Uniloc submits that it makes sense to deal with those
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`claims at one time after the renewed motions are filed in the AVG cases.” Id. at 2.
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`The Court is unpersuaded by Uniloc’s decision to punt the issue of arguing the scope of
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`means-plus-function claims until after the defendants in AVG have renewed their motions. Only
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`three of the independent means-plus-function claims asserted in the AVG case overlap with the
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`claims asserted against the ADP Defendants. Uniloc does not address the additional 11
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`independent claims that it asserts against the ADP Defendants but that it did not assert in AVG.
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`See Docket Nos. 64 and 190.
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`For the reasons above, and having considered the parties’ original and supplemental
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`briefings, the Court finds that ADP has adequately shown that claim 1 of the ʼ466 Patent, claim 1
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`of the ʼ766 Patent, claim 1 of the ʼ578 Patent, and claim 1 of the ʼ293 Patent, and their dependent
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`claims, are representative. See Content Extraction and Transmission LLC v. Wells Fargo Bank,
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`Nat. Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (where the Federal Circuit found that claim 1 of
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`the asserted patents were representative because all of the claims were substantially similar and
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`linked to the same abstract idea); see also Bilski v. Kappos, 561 U.S. 593, 612 (2010).
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`Having now found the previously invalidated claim 1 of the ʼ466 Patent and claim 1 of the
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`ʼ766 to be representative of the means-plus-function claims, the Court GRANTS ADP’s Motion
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`to Dismiss as to claims 15 and 22 of the ʼ466 Patent and claims 7, 9, 13, and 15 of the ʼ766 Patent
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`for the reasons set forth in the AVG Order. See Docket No. 129 in AVG.
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`C. Need for Claim Construction
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`The parties disagree on whether claim construction is necessary to inform the Court’s
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`analysis as to patentability. Uniloc identifies a number of terms for which it argues claim
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`construction is necessary including: “configurable preferences,” see Docket No. 64. at 15-16, “an
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`instance of the selected one of the plurality of the application programs,”7 see id. at 18, “file
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`packet” and “segment configured to initiate registration operations,” see id. at 21, and “license
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`management policy information,”8 see id. at 23. Defendants argue that claim construction is not
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`necessary and that, even under the definitions and constructions proposed by Uniloc, the
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`constructions “merely specify particular data to be manipulated by its methods, or particular
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`computer environments in which to apply those methods.” Docket No. 88 at 5.
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`The Court issued a Claim Construction Memorandum and Opinion in this case on August
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`16, 2017 (Docket No. 233). However, the Court did not construe the terms that Uniloc identified
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`above as needing construction. Even so, “claim construction is not an inviolable prerequisite to a
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`7 The Court invalidated claim 1 of the ʼ466 Patent in the AVG Order and therefore need not consider the
`patentability of this term again. See Docket No. 129 in AVG. The Court notes, however, that Uniloc does
`not provide a proposed construction for “an instance of the selected one of the plurality of application
`programs,” but instead only states that it “is important to clarify the general character of the patent . . . .”
`See Docket No. 64 at 18.
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`8 The Court also invalidated claim 1 of the ʼ766 Patent in the AVG Order. See Docket No. 129 in AVG.
`Even if the Court was to accept Uniloc’s proposed construction of “license management policy
`information,” as setting “policies, such as the limit of the number of users, whether crossing the limit of
`users is allowed or not and how users are counted,” Uniloc does not show how the construction would save
`its claim from being patent-ineligible. See Docket No. 103 at 7.
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`validity determination under § 101.” Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.),
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`687 F.3d 1266, 1273-74 (Fed. Cir. 2012). As the Court discusses below, the Court does not require
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`claim construction to determine the patent-eligibility of the Asserted Patents.
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`The Court next considers whether the remaining claims of each Asserted Patent are patent-
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`eligible.
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`D. Alice Step 1
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`ʼ578 Patent, Claim 1
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`
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`ADP argues that the claims of the ’578 Patent are directed to the abstract idea of providing
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`two-tiered customization. Docket No. 17 at 14. ADP analogizes claim 1 of the ’578 Patent to
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`“conventional activity” among a supplier, a business and individual employees of the business. Id.
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`at 9–10. ADP also analogizes the claims to non-computerized methods used by travel agencies or
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`medical providers. Id. at 14–15. ADP argues that the claims merely couch conventional activity
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`in computer-related terms, which cannot rescue the claims from abstraction. Id. at 16 (citing
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`Device Enhancement LLC v. Amazon.com, Inc., 189 F.Supp.3d 392 (D. Del. 2016)). ADP provides
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`the example of “configurable preferences,” a claim term ADP describes as “so broad as to be no
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`different than the conventional preferences by which conventional suppliers customize their
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`services to increase consumer satisfaction.” Id. at 16–17. ADP next argues that computerized
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`preference management is an unpatentable abstract concept. Id. at 17 (citing Clear with Computers
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`v. Altec Indus., No. 6:14-cv-79, 2015 WL 993392, at *4 (E.D. Tex. Mar. 3, 2015)).
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`
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`Uniloc argues that “the Asserted Patents solve particular problems in the computer field,
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`thus rendering them patent eligible.” Docket No. 64 at 5 (citing Enfish LLC v. Microsoft Corp.,
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`822 F.3d 1327, 1336 (Fed. Cir. 2016)). “The ’578 Patent,” Uniloc argues, “seeks to reduce costs
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`and increase uniformity in managing software in a network environment by delivering configured
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`applications when demanded by a user and provides ‘an essentially hardware transparent ability
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`for an individual user to interface to an on-demand server supported client station while
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`maintaining the user’s personal preferences for each application program.’ ” Id. at 8–9 (citing ’578
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`Patent, col. 6:2–9). Uniloc states, “[t]he ’578 Patent is directed to resolving that problem by
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`claiming a method for management of configurable programs on a network.” Id. at 9 (citing ’578
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`Patent, col. 14:65–67). Specifically, “[a]n application launcher program associated with the
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`application program is distributed to a client coupled to the network;” “[a] user set of the plurality
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`of configurable preferences associated with one of the plurality of authorized users executing the
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`application launcher program is obtained;” “an administrator set of the plurality of configurable
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`preferences is obtained from an administrator;” and “[t]he application program is then executed
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`using the obtained user set and the obtained administrator set of the plurality of configurable
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`preferences responsive to a request from the one of the plurality of authorized users.” Id. at 9
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`(citing ’578 Patent, col. 15:1–13). The specification states that the claimed invention “provides
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`for the desired reduced costs and increased uniformity in managing software in a network
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`environment by delivering configured application when demanded by a user.” Id. (citing ’578
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`Patent, col. 6:2–5).
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`
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`Uniloc also argues that ADP’s supplier analogy is erroneous because the claimed client-
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`server environment and other computer-related limitations render the claimed steps “clearly not
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`tasks that can be completed by a supplier providing supplies to two employees of a business.” Id.
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`at 14–15. Uniloc states that the fact that the asserted claims cannot be performed by the human
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`hand or in the human mind without specific hardware or circuitry “negates ADP’s argument that
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`the claims are simply an abstract idea.” Id. at 15 (citing Genband US LLC v. Metaswitch Networks
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`Ltd., 211 F. Supp. 3d 858, 906 (E.D. Tex. 2016), vacated and remanded on other grounds). Uniloc
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`also disputes ADP’s construction of “configurable preferences,” which Uniloc argues is
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`inconsistent with the disclosure of the ’578 specification. Id.
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`Turning first to “configurable preferences,” the Court notes that despite the term’s
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`appearance on a list of terms that Uniloc identified as necessary for construction prior to a Section
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`101 analysis, see id. at 15–16 (citing Docket No. 34-1), the term does not appear on the parties’
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`April 20, 2017 Joint Claim Construction and Prehearing Statement as a term requiring
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`construction.9 See Docket No. 148. Nor did the Court construe the term “configurable
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`preferences” in its Claim Construction Memorandum and Order. See Docket No. 233.
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`Accordingly, “configurable preferences” takes its plain and ordinary meaning—any preferences
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`pertaining to the claimed application program that may be configured.
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`The claims of the ’578 Patent involve computers but do nothing to improve their
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`functionality. The claims employ off-the-shelf computer components without modification. See
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`Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d, 1350 1355 (Fed. Cir. 2016). The Court has already
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`held that the kind of benefits they provide—“increased efficiency” or “reduced costs”—are not
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`technological benefits. Docket No. 129 in AVG, at 11–12. As with the ’466 Patent, the claims of
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`the ’578 are overly vague in that they recite “executing the application program using the obtained
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`user set and the obtained administrator set [of preferences],” e.g., ’578 Patent, col. 15:10–12,
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`without claiming any “particular way of programming or designing the software” to facilitate
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`execution of the program according to the claim. See id. at 11 (citing Apple, Inc. v. Ameranth,
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`Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016)).
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`9 The Court encourages parties to resolve disputes throughout the litigation, and the construction of
`“configurable preferences” may reflect one such successful resolution.
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`Page 12 of 25
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`Case 2:16-cv-00741-RWS Document 267 Filed 09/28/17 Page 13 of 25 PageID #: 5360
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`ADP’s assertion that the ’578 Patent claims are directed to “two-tiered customization” is
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`well supported in the claims. The focus of claim 1 is obtaining user and administrator sets of
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`configuration preferences and then executing an application using those preferences. The
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`application launcher, which the specification teaches may be as simple as an icon that provides a
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`URL, see ’578 Patent, col. 8:6–20, is not the central focus of the claims; rather, it is a generic
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`means by which the claims execute applications in light of two sets of preferences. Accordingly,
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`the Court finds that the claims of the ’578 Patent are directed to the abstract idea of “providing
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`two-tiered customization” in a client-server environment.
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`ʼ293 Patent, Claim 1
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`ADP argues that the claims of the ’293 Patent are directed to the abstract idea of “providing
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`on-demand distribution of information.” Docket No. 17 at 21. ADP analogizes claim 1 of the
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`’293 Patent to a library implementing an inter-library loan system using a central repository. Id.
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`at 22–23. In ADP’s analogy, the claimed servers are like libraries, and the source and target
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`directories are like shelves. Id. (citing Clear with Computers, 2015 WL 993392, at *4). Moreover,
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`ADP argues, “specifying source and destination directories is a conventional and necessary step
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`for receiving or storing any file over a network, and therefore contributes no weight in the abstract
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`idea analysis.” Id. at 23 (citing NexusCard, Inc. v. Kroger Co., 173 F.Supp.3d 462, 467 (E.D. Tex.
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`2016)). As with the ’578 Patent, ADP alleges that the claims of the ’293 Patent merely “wrap []
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`conventional practices in generic computer terminology.” Id. at 23.
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`Uniloc argues that the “computer problem” solved by the ’293 Patent was “the limited
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`capabilities associated with centralized management of software.” Docket No. 64 at 9. Uniloc
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`states that the ’293 Patent addresses that problem by providing “a uniform framework for
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`deployment of new or updated application programs from different software designers.” Id.
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`Page 13 of 25
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`Case 2:16-cv-00741-RWS Document 267 Filed 09/28/17 Page 14 of 25 PageID #: 5361
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`(quoting ’293 Patent, col. 3:32–34). Uniloc again disputes ADP’s analogy on the grounds that the
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`computer-related limitations of the claims render it not abstract. Id. at 20–21. Specifically, Uniloc
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`puts great weight on the claimed “segment configured to initiate registration operations,” which it
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`states should be construed to “include[ ] ‘an import data file and a call to an import program
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`executing on a target station.’ ” Id. at 21 (quoting ’293 Patent, col. 5:45–48).
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`The claims of the ’293 Patent also fail to improve the functioning of a computer. They
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`provide for off-the-shelf components, with claim 2 even specifying TivoliTM, a commercially-
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`available brand, as limiting the “network management server” in claim 1. ʼ293 Patent, col. 21:38–
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`39. The Court agrees with the ADP Defendants that the allegedly “uniform framework” provided
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`by the ’293 Patent includes only generic activities of servers. Docket No. 17 at 23. Even under
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`Uniloc’s proposed construction of “segment configured to initiate registration operations,” the
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`claim still does not amount to more than a routine activity of commercial network management
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`software as described by the specification itself, and is therefore directed to an abstract idea. See
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`’293 Patent, col. 17:20–54 (describing the TME 10TM network management software).
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`ADP’s assertion of the alleged abstract idea as “providing on-demand distribution of
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`information” is not a perfect fit for the claims, which use an on-demand server but do not distribute
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`the software “on-demand” in the sense of the distribution being responsive to a request from a
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`user. Rather, the claims are directed to the centralized distribution of software to a plurality of on-
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`demand servers from a central network management server. See Docket No. 64 at 9. Thus, the
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`Court finds that a better characterization of the abstract idea is “centralized distribution of
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`software.”10
`
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`10 An abstract idea can be described in different ways, and the Court describing the idea differently from
`ADP is not fatal to its motion. See Docket No. 129 in AVG at 11 (citing Ameranth, 842 F.3d at 1240).
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`Page 14 of 25
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`Case 2:16-cv-00741-RWS Document 267 Filed 09/28/17 Page 15 of 25 PageID #: 5362
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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.11
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`E. Alice Step Two
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`Having concluded that claim 1 of the ʼ578 Patent and ʼ293 Patent are drawn to abstract
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`ideas, the next step is to determine whether the claims contain meaningful limitations that create
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`an inventive concept. Alice, 124 S. Ct. at 2359. The Court also considers whether the remaining
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`claims of the ʼ466 and ʼ766 Patents create an inventive concept.
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`Defendants generally argue that none of the claims of the Asserted Patents provide an
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`inventive concept because they recite generic computer equipment like “networks,” “clients,”
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`“servers,” and “remote workstations” for exchanging generic information. Docket No. 17 at 27.
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`Likewise, Defendants contend that the claimed steps of “install[ing],” “distribut[ing],” and
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`“executing” programs over a network are “standard computer functionality undertaken in any
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`client-server system.” Id. Defendants characterize limitations like “obtaining preferences” and
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`“preparing a ‘file packet’ ” as basic computer tasks that correspond to conventional information
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`management steps, and which are not activities unique to computer hardware. Id. at 28.
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`Defendants assert that any ordered combinations of these claim elements also fail because even
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`the claims that recite specific methods for performing computer tasks implement the above-listed
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`abstract ideas in generi