Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 1 of 16 PageID #: 1438
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`
`
`HTC CORPORATION
`
`Plaintiff,
`
`v.
`
`INNOVATION SCIENCES, LLC,
`
`Defendant
`
`
`
`
`
`Case No.: 4:20-cv-00180
`
`JURY TRIAL DEMANDED
`
`
`
`FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
`
`Plaintiff HTC Corporation (“Plaintiff” or “HTC”), by and through its attorneys, hereby
`
`alleges as follows:
`
`1.
`
`Through this complaint, Plaintiff seeks declaratory judgment that U.S. Patent No.
`
`10,104,425 (the ’425 patent) is directed to patent ineligible subject matter under 35 U.S.C. § 101.
`
`2.
`
`The U.S. District Court for the Eastern District of Virginia has previously found
`
`substantially similar claims of patents related to the ’425 patent to be ineligible under Alice Corp.
`
`Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Honorable Judge Liam O’Grady granted
`
`a motion to dismiss eight patents related to the ’425 patent as being ineligible under § 101 in two
`
`earlier cases, Virginia Innovation Scis., Inc. v. HTC America, Inc., Civ. No. 1:16-cv-1350 (E.D.
`
`Va. Jan. 5, 2017) and Virginia Innovation Scis., Inc. v. Amazon.com, Inc., Civ. No. 1:16-cv-00861
`
`(E.D. Va. Jan. 5, 2017) (hereinafter, “Amazon I”). Virginia Innovation Scis. Inc. v. Amazon.com,
`
`Inc., 227 F. Supp. 3d 582 (E.D. Va. 2017). That opinion was subsequently appealed and affirmed
`
`by the Federal Circuit. Virginia Innovation Scis., Inc. v. HTC Corp., 718 F. App’x 988 (Fed. Cir.
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 2 of 16 PageID #: 1439
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`2018).
`
`3.
`
`After dismissal of these eight patents, the district court also granted summary
`
`judgment of patent ineligibility with respect to U.S. Reissue Patent No. 46,140 under § 101 and
`
`non-infringement with respect to U.S. Patent No. 8,135,398 patent in Amazon I. See Innovation
`
`Scis., LLC v. Amazon.com, Inc., 778 F. App’x 859 (Fed. Cir. 2019). Once again, the Federal
`
`Circuit affirmed. Id.
`
`4.
`
`While appeals were pending from the cases above, Virginia Innovation Sciences,
`
`Inc. (“VIS”), the predecessor entity of Defendant Innovation Sciences LLC (“Innovation
`
`Sciences” or “Defendant”), filed two more cases against HTC and Amazon in the Eastern District
`
`of Virginia, Virginia Innovation Scis., Inc. v. HTC Corp., 3-17-cv-00560 (E.D. Va. 2017), and
`
`Virginia Innovation Scis., Inc., v. Amazon.com, Inc., 2-17-cv-00422 (E.D. Va. 2017). After HTC
`
`sent VIS a Rule 11 letter raising concerns that (1) venue was not proper as to HTC America, Inc.
`
`following the Supreme Court’s decision in TC Heartland LLC v. Kraft Food Grp. Brands LLC,
`
`137 S. Ct. 1514 (2017) and (2) VIS was asserting claims substantially similar to those found by
`
`the Eastern District of Virginia to be ineligible under § 101 (see Ex. F), VIS voluntarily dismissed
`
`these cases in October 2017 before HTC or Amazon responded to the complaint in their
`
`respective cases.
`
`5.
`
`Nine months later, VIS filed a third case against HTC Corporation in this District,
`
`asserting infringement of another three patents, all of which are related to the eight patents
`
`previously held unpatentable under 35 U.S.C. § 101. Virginia Innovation Scis., Inc. v. HTC
`
`Corp., Civ. No. 4:18-cv-00476 (E.D. Tex. filed Jul. 5, 2018), now consolidated in Virginia
`
`Innovation Scis., Inc. v. Amazon.com, Inc., Civ. No. 4:18-cv-00474 (E.D. Tex. filed Jul. 5, 2018)
`
`(the “First E.D. Tex. Action”).
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 3 of 16 PageID #: 1440
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`6.
`
`On December 6, 2018, and after defendants in related cases (including Amazon)
`
`moved to transfer the First E.D. Tex. Action to the Eastern District of Virginia, VIS filed a motion
`
`to substitute Innovation Sciences LLC for VIS on the basis of an alleged merger between VIS
`
`and Innovation Sciences, whereby VIS was terminated and Innovation Sciences was the surviving
`
`entity. The CEO and President of VIS, Dr. Tiehong “Anne” Wang, executed the merger
`
`documents on behalf of VIS and on behalf of Innovation Sciences, but under the alias “Anne
`
`Wong” as its “Manager.”
`
`7.
`
`On December 27, 2018, HTC Corporation moved to transfer under 28 U.S.C.
`
`1401 for forum non conveniens. On July 15, 2019, this Court issued an opinion denying the
`
`motions to transfer of HTC and the other consolidated defendants in the First E.D. Tex. Action.
`
`A petition for writ of mandamus to the Federal Circuit was denied on October 9, 2018.
`
`8.
`
`On August 9, 2019, Innovation Sciences filed a complaint at the International
`
`Trade Commission, alleging infringement of claims 14-18 and 45-48 of U.S. Patent No.
`
`10,104,425 (Ex. A at 1, “ITC Complaint”), and identifying, among others, HTC Corporation and
`
`HTC America, Inc. as proposed respondents. Id. at 2. On January 29, 2020, Defendant
`
`Innovation Sciences, LLC filed a statutory disclaimer under 37 C.F.R. § 1.321(a) with the U.S.
`
`Patent and Trademark Office disclaiming Claims 14-20 of the ’425 patent. Dkt. 15-16.
`
`9.
`
`With respect to HTC, Innovation Sciences identified three accused devices, the
`
`HTC U11, the HTC U11 Life, and the HTC U12+ smartphones of allegedly infringing at least
`
`claims 14 and 45 of the ’425 patent. Id. at 13-15. Attached to the ITC Complaint as Exhibits 22
`
`and 23, are claim charts that Defendant alleges demonstrate infringement of independent claims
`
`45 and 14 of the ’425 patent by HTC.
`
`10.
`
`For the reasons stated in paragraphs 2-9 herein, the threat of suit by Defendant
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 4 of 16 PageID #: 1441
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`against HTC alleging infringement of the ’425 patent is real and not idle.
`
`11.
`
`For this action, Plaintiff seeks a declaration that the ’425 patent is unpatentable
`
`as directed to patent ineligible subject matter under 35 U.S.C. § 101.
`
`12.
`
`A number of exhibits are attached to this complaint. Those exhibits are listed
`
`below:
`
`13.
`
`Attached hereto as Exhibit A is a true and correct copy of the public version of the
`
`Complaint filed in Certain Wireless Communication Devices and Related Components Thereof,
`
`No. 337-3402, filed August 9, 2019 at the International Trade Commission, with Exhibits 22-23
`
`to the Complaint (infringement claim charts against HTC), Investigation Number 337-TA-1180.
`
`14.
`
`Attached hereto as Exhibit B is a true and correct copy of U.S. Patent No.
`
`10,104,425.
`
`15.
`
`Attached hereto as Exhibit C is a true and correct copy of U.S. Patent No.
`
`7,899,492.
`
`16.
`
`Attached hereto as Exhibit D is a true and correct copy of U.S. Patent No.
`
`8,903,451.
`
`17.
`
`Attached hereto as Exhibit E is a true and correct copy of a printout of the business
`
`entity details of Virginia Innovation Sciences, Inc. from the Virginia Council for Corporations
`
`website, found at https://cis.scc.virginia.gov/ (printed December 23, 2019).
`
`18.
`
`Attached hereto as Exhibit F is a true and correct copy of the letter dated October
`
`3, 2017 from counsel for HTC, Yar R. Chaikovsky, to then counsel for VIS, William E. Bradley
`
`raising Rule 11 concerns regarding the complaint filed by Mr. Bradley and VIS in Virginia
`
`Innovation Scis., Inc. v. HTC Corp., 3-17-cv-00560 (E.D. Va. 2017).
`
`19.
`
`Attached hereto as Exhibit G is a true and correct copy of the public version of the
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 5 of 16 PageID #: 1442
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`Declaration of Tiehong “Anne” Wong a/k/a Tiehong Wang, dated May 23, 2019, in support of
`
`the Complaint filed in Certain Wireless Communication Devices and Related Components
`
`Thereof, No. 337-3402, filed on August 9, 2019 at the International Trade Commission (“Wong
`
`Declaration”).
`
`20.
`
`Attached hereto as Exhibit H is a true and correct copy of Defendant’s motion to
`
`substitute party, including supporting declaration and exhibits, filed in Virginia Innovation Scis.,
`
`Inc. v. HTC Corp., Civ. No. 4:18-cv-00476-ALM (E.D. Tex. filed Jul. 5, 2018), Dkt. No. 15.
`
`I.
`
`PARTIES
`
`21.
`
`Plaintiff HTC Corporation is a Taiwanese corporation with its principal place of
`
`business at No. 88, Section 3, Zhongxing Road, Xindian District, New Taipei City 231, Taiwan.
`
`22.
`
`Founded in 1997, HTC is a pioneer in the smartphone market, credited with many
`
`industry firsts and technology breakthroughs over the past 23 years—a history defined by
`
`innovation, design and engineering excellence, and the building of strategic partnerships to
`
`facilitate the development of an industry ecosystem. In addition to HTC smartphones, HTC has
`
`also expanded its portfolio of technical expertise to include cutting-edge virtual reality
`
`technology, as embodied by the HTC Vive virtual reality platform.
`
`23.
`
`Defendant Innovation Sciences LLC has alleged that it is a limited liability
`
`company incorporated under the laws of the State of Texas, with an office located at 5800 Legacy
`
`Circle, Suite 311, Plano Texas 75024. Ex. A at 3.
`
`24.
`
`Defendant Innovation Sciences LLC has alleged that Dr. Tiehong “Anne” Wong
`
`is the CEO and President of Innovation Sciences. Ex. A at 3; Ex. G at ¶ 1. In the Wong
`
`Declaration, Dr. Wong states that she has “held this position since Innovation’s formation in
`
`2005,” presumably referring to the formation of the predecessor entity, VIS, f/k/a/ Sellerbid, Inc.
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 6 of 16 PageID #: 1443
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`Id. at ¶¶ 10, 14. On information and belief, Dr. Wong is the sole employee, officer and director
`
`of Innovation Sciences.
`
`25.
`
`SellerBid, Inc. (later renamed as VIS in 2012) was formed as a Virginia company,
`
`and had its principal place of business located in Virginia at 6301 Edsall Rd., #517, Alexandria,
`
`VA 22312. Ex. E; Ex. G at ¶¶ 14-15.
`
`26.
`
`Defendant Innovation Sciences has alleged that in 2018, Virginia Innovation
`
`Sciences, Inc. was merged into Innovation Sciences, LLC. Ex. A at 4; Ex. G at ¶ 17; Ex. H.
`
`II.
`
`JURISDICTION AND VENUE
`
`27.
`
`The Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338, and
`
`2201-2202 because this action arises under the patent laws and seeks relief under the Federal
`
`Declaratory Judgment Act.
`
`28.
`
`This Court has subject matter jurisdiction over this action based on a real and
`
`immediate controversy between HTC and Defendant regarding whether the ’425 patent is
`
`directed to patent ineligible subject matter under 35 U.S.C. § 101. As detailed below, this
`
`controversy arises out of Defendant’s infringement assertions against HTC, at least demonstrated
`
`by Defendant’s filing of its complaint before the International Trade Commission. Ex. A.
`
`29.
`
`On December 26, 2019, HTC filed the original Complaint in this Action in the
`
`U.S. District Court for the Eastern District of Virginia. Dkt. 1. On February 14, 2020, Defendant
`
`Innovation Sciences, LLC filed a Motion to Dismiss and Alternative Motion to Transfer or Stay.
`
`Dkt. 14. Defendant sought dismissal based on lack of personal jurisdiction and improper venue.
`
`Dkt. 15 at 6-10. Defendant argued in the alternative for transfer to this Court. Dkt. 15 at 10-18.
`
`On March 5, 2020, the district court issued an order, finding that personal jurisdiction was met
`
`but granting Defendant’s alternative motion to transfer to this Court. Dkt. 34.
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 7 of 16 PageID #: 1444
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`III.
`
`FACTUAL BACKGROUND
`
`Defendant’s Subject Matter Ineligible Patents
`
`The ’425 Patent belongs to the same patent family as U.S. Patent 7,899,492 (“the
`
`A.
`
`30.
`
`’492 patent”). In Virginia Innovation Scis., Inc. v. HTC Corp., the U.S. District Court for the
`
`Eastern District of Virginia determined that the asserted patents in the ’492 patent family were
`
`directed to an abstract idea and found to be patent ineligible. 227 F. Supp. 3d 582, 596 (E.D. Va.
`
`2017), aff'd sub nom. Virginia Innovation Scis., Inc. v. HTC Corp., 718 F. App’x 988 (Fed. Cir.
`
`2018).
`
`31.
`
`The ’492 patent family considered by the district court consisted of the ’492
`
`Patent and seven related patents: U.S. Patent No. 8,050,711 (the “’711 patent”); U.S. Patent No.
`
`8,903,451 (the “’451 patent”); U.S. Patent No. 8,948,814 (the “’814 patent”); U.S. Patent No.
`
`9,118,794 (the “’794 patent”); U.S. Patent No. 8,712,471; U.S. Patent No. 9,286,853 (the “’853
`
`patent”); and U.S. Patent No. 9,355,611 (the “’611 patent”). Virginia Innovation Scis., 227 F.
`
`Supp. 3d at 587.
`
`32.
`
`The district court noted that there were no material differences amongst the
`
`claims of the individual patents in the ’492 patent family. The district court further noted the
`
`following exemplary independent claims: Claim 21 of the ’711 patent; (2) Claim 21 of the ’471
`
`patent; (3) Claim 30 of the ’451 patent; (4) Claim 1 of the ’814 patent; (5) Claim 1 of the ’794
`
`patent; (6) Claim 1 of the ’853 patent; (7) Claim 1 of the ’611 patent; and (8) Claim 23 of the
`
`’492 patent. Virginia Innovation Scis., 227 F. Supp. 3d at 589.
`
`33.
`
`Figure 1 of the ’492 Patent depicts a network system (104) that produces a signal
`
`that is transmitted from the base station (106) to the mobile terminal device (108). From the
`
`mobile terminal device, the signal is transmitted to the mobile signal conversion module
`
`(“MTSCM” or “intermediary device”) (112), which is contained in “housing” (110). The
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 8 of 16 PageID #: 1445
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`MTSCM converts the mobile signal into a power level and display format that is compatible with
`
`the display monitor (114), which reproduces the original signal. Phrased in non-technical terms,
`
`the claimed idea: (1) takes a video feed from a mobile network (e.g., Verizon, AT&T, T–Mobile,
`
`etc.); (2) sends it to a mobile device that; (3) sends it to an intermediary device, which (4) converts
`
`the signal; and (5) displays it on a TV in your home.
`
`
`
`34.
`
`The district court noted that “the ’492 Patent relies on generic video signals,
`
`generic mobile devices, generic display monitors, and a functional conversion process. Nothing
`
`about the ’492 patent is either specific or discrete.” Virginia Innovation Scis., 227 F. Supp. 3d at
`
`
`
`603.
`
`35.
`
`Analyzing the ’492 patent under the Alice test, the district court concluded that
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 9 of 16 PageID #: 1446
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`the mobile network, the phone, the intermediary device, and the display monitor [in
`the ’492 patent] all perform their conventional functions. There [was] no
`contention that the MTSCM’s data compression or conversion was unknown in the
`prior art; [Defendant] only argue[d] that it was unknown in this context. Moreover,
`the process for ‘converting’ and ‘compressing’ signals is described in purely
`functional terms, without any algorithm or code for achieving those results.
`[Defendant] assert[ed] that adding the intermediary device to a method of
`transmitting a video signal from a network to a display device through a mobile
`device [was] in itself an inventive concept . . . rather than creating an innovative
`‘ordered combination,’ the MTSCM’s placement between ubiquitous conventional
`devices preempt[ed] future innovation in the field of mobile-to-HDTV conversion.
`Because preemption remains the guiding principle of the § 101 inquiry, the
`functional claims of the patents in the ’492 patent family drive at the very heart
`of § 101 concerns and they must be found ineligible.
`
`Id. at 604 (emphasis added).
`
`36.
`
`The claims of the ’425 patent are similarly directed to substantially similar
`
`abstract concepts and are also therefore ineligible.
`
`37.
`
`Claims 21 and 26 of the ’425 patent also substantially overlap with the claims the
`
`Eastern District of Virginia already held to be directed to an abstract idea and patent ineligible
`
`under Alice in Virginia Innovation Scis., 227 F. Supp. 3d at 587, 604. As depicted in the chart
`
`below, Claims 21 and 26 overlap with Claims 59 and 65 of the patent ineligible ’451 patent.
`
`Claims 21 and 26 of the ’425 Patent at
`Issue in This Case
`
`
`21. A wireless device for communicating
`multimedia information comprising:
`
` a
`
` a
`
` a
`
` transceiver configured to receive, via a
`WiFi network, a wireless signal
`corresponding to the multimedia
`information directed to the wireless device,
`the multimedia information comprising a
`call with a cellular phone;
`
` display;
`
` wireless signal conversion unit coupled to
`the display, the wireless signal conversion
`
`Claims 59 and 65 of the ’451 Patent
`Found Patent Ineligible Under Alice
`
`
`59. An apparatus comprising:
`
`an input interface configured for receiving a
`multimedia signal appropriate for
`displaying a multimedia content on a
`mobile terminal;
`
`
`at least one processing unit configured for
`processing the multimedia signal,
`
`
`wherein the multimedia signal is received
`from the mobile terminal through a
`wireless local area network,
`
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 10 of 16 PageID #: 1447
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`Claims 21 and 26 of the ’425 Patent at
`Issue in This Case
`unit including a decoder configured to
`perform conversion of the wireless signal
`to accommodate production of the
`multimedia information on the display;
`and
`
` processor coupled to the transceiver and
`configured to:
`
` a
`
`
`initiate transmission, via the transceiver, of a
`request for the multimedia information;
`
`
`receive, via the transceiver, the wireless
`signal corresponding to the multimedia
`information;
`
`
`wherein the wireless signal is a compressed
`signal;
`
`
`wherein the decoder is configured to
`decompress the wireless signal, said
`conversion comprising decompressing the
`wireless signal;
`
`
`wherein the wireless device is configured to
`receive an instruction to make the call to
`the cellular phone;
`
`
`wherein a network address for the WiFi
`network is associated with a unique
`identifier of the cellular phone;
`
`
`wherein the wireless signal comprises a
`video signal; and
`
`
`wherein the call is a video call.
`
`26. The wireless device of claim 21, wherein
`the display is a high definition digital
`television.
`
`
`
`Claims 59 and 65 of the ’451 Patent
`Found Patent Ineligible Under Alice
`wherein the multimedia signal is a
`compressed digital signal,
`
`
`wherein the mobile terminal is a cellular
`phone or a personal digital assistant
`(PDA),
`
`
`wherein said processing the multimedia
`signal comprises decompressing the
`compressed digital signal to a
`decompressed digital signal,
`
`
`wherein said processing the multimedia
`signal further comprises encoding the
`decompressed digital signal to produce an
`encoded digital signal, and
`
`
`wherein the encoded digital signal comprises
`a decompressed high definition digital
`video signal; and
`
` a
`
` high definition multimedia interface
`configured for providing the encoded
`digital signal for transmission to a high
`definition digital television;
`
`
`wherein the apparatus is an intermediate
`device between the mobile terminal and
`the high definition digital television.
`
`
`65. The apparatus of claim 59, wherein the
`multimedia content is one or more of the
`following: . . . a video conference.
`
`38.
`
`Claim 45 of the ’425 patent also substantially overlaps with claims the Eastern
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`District of Virginia already held to be directed to an abstract idea and patent ineligible under
`
`Alice in Virginia Innovation Scis., 227 F. Supp. 3d at 587, 604. As depicted in the chart below,
`
`Claim 45 of the ’425 patent overlaps with Claim 30 and Claim 32 (which depends from Claim
`
`30) of the patent ineligible ’451 patent.
`
`Claim 45 of the ’425 Patent
`at Issue in This Case
`
`
`45. A wireless device for communicating
`information comprising:
`
`Claim 30 and 32 of the ’451 Patent
`Found Patent Ineligible Under Alice
`
`
`30. A cellular phone comprising:
`
`an input interface configured for receiving a
`multimedia
`signal
`appropriate
`for
`displaying a multimedia content on the
`cellular phone, wherein the multimedia
`signal is a compressed digital signal;
`
`
`at least one processing unit configured for
`processing the multimedia signal,
`
`
`wherein said processing the multimedia
`signal
`comprises decompressing
`the
`compressed
`digital
`signal
`to
`a
`decompressed digital signal,
`
`
`wherein said processing the multimedia
`signal further comprises encoding
`the
`decompressed digital signal to produce an
`encoded digital signal, and
`
`
`wherein the encoded digital signal comprises
`a decompressed high definition digital
`video signal; and
`
` a
`
` high definition digital output interface
`configured for providing
`the encoded
`digital signal for transmission to a high
`definition digital television;
`
`
`wherein the cellular phone is configured for
`receiving power from the high definition
`digital
`television
`through
`the high
`definition digital output interface.
`
`
`
` a
`
` a
`
` transceiver configured to receive, via a
`WiFi network, a first wireless signal
`corresponding to information directed to
`the wireless device,
`the
`information
`comprising a call, the first wireless signal
`being a compressed signal, wherein the
`wireless device is configured to receive an
`instruction to make the call; and
`
` wireless signal conversion unit including a
`decoder configured to perform a conversion
`of the first wireless signal to accommodate
`production of the information,
`
`
`to
`is configured
`the decoder
`wherein
`decompress the first wireless signal, said
`conversion comprising decompressing the
`first wireless signal;
`
`
`wherein the wireless device is further
`configured to communicate information
`for managing a status update via the
`WiFi network in connection with a
`second wireless signal regarding the
`status update, the second wireless signal
`being transmitted from a sensing device
`via
`a
`short
`range
`wireless
`communication channel,
`the second
`wireless signal comprising information
`associated with an identifier for the
`sensing device; and
`
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 12 of 16 PageID #: 1449
`
`
`
`Claim 45 of the ’425 Patent
`at Issue in This Case
`wherein the WiFi network is separate from
`the short range wireless communication
`channel.
`
`
`
`Claim 30 and 32 of the ’451 Patent
`Found Patent Ineligible Under Alice
`32. The cellular phone of claim 30 comprises
`a decoder, wherein
`the decoder
`is
`configured
`for
`performing
`said
`decompressing
`the compressed digital
`signal to the decompressed digital signal,
`and wherein the decompressed digital
`signal is appropriate for the cellular phone
`to accommodate displaying the multimedia
`content on a display screen of the cellular
`phone; and wherein the cellular phone
`further comprises an encoder, wherein the
`encoder is configured for performing said
`encoding the decompressed digital signal to
`produce the encoded digital signal for
`transmission to the high definition digital
`television.
`
`39.
`
`Claim 45 is directed to nothing more than abstract ideas. The preamble and first
`
`three limitations of Claim 45 of the ’425 patent mirror limitations and concepts contained in the
`
`patent ineligible ’451 patent, as depicted above in text highlighted variously in purple, red and
`
`blue. As the Eastern District of Virginia noted, the claimed signal conversion module and its
`
`decompressing of compressed signals is claimed purely on its function without any algorithm
`
`for achieving those results. Virginia Innovation Scis., 227 F. Supp. 3d at 604.
`
`40.
`
`The only added concept in Claim 45 of the ’425 patent, as compared to the patent
`
`ineligible Claim 30 of the ’451 patent, is contained in the last two limitations. These last two
`
`limitations add an additional functionality to the nebulous “wireless device for communicating
`
`information”: the claimed wireless device may receive a signal containing an update from
`
`another device.
`
`41.
`
`Simply receiving a status update from a sensing device is a well-known abstract
`
`idea; for time immemorial, a human yelp in response to pain has provided an update to that
`
`human’s status (and whose voice even serves as an identifier). This additional concept amounts
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 13 of 16 PageID #: 1450
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`to functionally claiming the addition of the well-known and conventional function of receiving
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`status updates from another device into the otherwise nondescript “wireless device for
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`communicating information.” Chamberlain Grp. v. Techtronic Indus. Co., 935 F.3d 1341, 1346
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`(Fed. Cir. 2019) (“wirelessly communicating status information” held to an abstract idea).
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`Indeed, nothing in the last two limitations appears to otherwise limit the claimed device—by
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`algorithms or otherwise—and instead serve only to limit the technological environment in which
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`a general purpose wireless computing device operates. Accordingly, like its predecessor claims
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`of the ’492 patent family, Claim 45 of the ’425 patent is also directed to patent ineligible subject
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`matter.
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`42.
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`Further, the claims depending from Claim 45 of the ’425 patent asserted by
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`Defendant in its ITC complaint also add nothing patentable to Claim 45. Claim 46 requires the
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`short range wireless communication channel to be a “Zigbee channel,” thereby limiting the claim
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`to a particular technological environment, but otherwise effects no improvement to the claimed
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`invention. In the ’425 patent, the only mention of Zigbee is as one of a number of well-known
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`communication protocol standards for wireless personal area networks.
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`43.
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`Claim 47 of the ’425 patent fares no better, requiring the received signal to be a
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`compressed video signal in relation to a video call, again doing nothing but limiting the claim to
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`a particular technological environment, that of video calling. Limiting the application of the
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`independent claim to the space of video calling effects no technological improvement to the
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`claimed invention, and adds nothing patentable to a claim that is otherwise patent ineligible.
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`44.
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`Claim 48 of the ’425 patent requires a data package that includes information for
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`the network address for the WiFi network and a device identifier for the claimed wireless device.
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`But this adds nothing but a generic and conventional implementation detail that is part and parcel
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 14 of 16 PageID #: 1451
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`with a system receiving data on a WiFi network. This is akin to an independent claim that covers
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`sending a letter to a customer, and adding a dependent claim requiring that the letter include the
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`address of the customer. Such generic and conventional implementation details are fundamental
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`to implementation of the abstract idea and add nothing patentable to an otherwise patent-
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`ineligible claim.
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`COUNT 1
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`Declaratory Judgment of Patent Ineligibility of U.S. Patent No. 10,104,425
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`45.
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`Plaintiff re-alleges and incorporates all of the preceding paragraphs as if fully set
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`forth herein.
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`46.
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`A concrete and immediate controversy has arisen between the parties regarding
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`the patentability of the ’425 patent.
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`47.
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`For at least the reasons alleged above, the claims of the ’425 patent are directed
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`to ineligible subject matter and thus fail to meet the requirements of 35 U.S.C. § 101.
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`48.
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`Plaintiff seeks and is entitled to a declaratory judgment that the claims of the ’425
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`patent are directed to ineligible subject matter and are therefore unpatentable under 35 U.S.C. §
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`101.
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`DEMAND FOR JURY TRIAL
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`Plaintiff hereby demands a trial by jury on all issues so triable.
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`REQUEST FOR RELIEF
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`WHEREFORE, Plaintiff respectfully requests the Court to enter judgment in its favor and against
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`Defendant as follows:
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`1.
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`Declaratory judgment that the claims of the ’425 patent are not patentable under 35
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`U.S.C. § 101.
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 15 of 16 PageID #: 1452
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`Awarding Plaintiff costs incurred in connection with this action; and
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`For such other and further relief as the Court deems just and proper.
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`2.
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`3.
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`DATED:
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`May 1, 2020
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`PAUL HASTINGS LLP
`
`By: /s/ Yar R. Chaikovsky
`Yar R. Chaikovsky
`yarchaikovsky@paulhastings.com
`Philip Ou
`philipou@paulhastings.com
`Bruce Yen
`bruceyen@paulhastings.com
`Joshua Yin
`joshuayin@paulhastings.com
`
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone: 1(650) 320-1800
`Facsimile:
`1(650) 320-1900
`
`Harry L. Gillam, Jr.
`TX Bar No. 07921800
`GILLAM & SMITH LLP
`303 S. Washington Ave.
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`gil@gillamsmithlaw.com
`
`Attorneys for Plaintiff,
`HTC CORPORATION
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`Case 4:20-cv-00180-ALM Document 44 Filed 05/01/20 Page 16 of 16 PageID #: 1453
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 1, 2020, I electronically filed the foregoing
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`document with the Clerk of the Court using the CM/ECF system which will send
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`notification of such filing via electronic mail to all counsel of record.
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`/s/ Yar R. Chaikovsky
`Yar R. Chaikovsky
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