Case 3:24-cv-00540-MHL Document 35 Filed 10/17/24 Page 1 of 27 PageID# 287
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`RICHMOND DIVISION
`
`Plaintiff,
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`v.
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`
`
`SOUNDCLEAR TECHNOLOGIES LLC, §
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`
`§
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`§
`
`§ Civil Action No. 3:24-cv-00540-MHL
`§
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`§
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`§ JURY TRIAL DEMANDED
`§
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`§
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`§
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`
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`GOOGLE LLC,
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`
`
`
`Defendant.
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`REPLY BRIEF IN SUPPORT OF GOOGLE LLC’S
`MOTION TO DISMISS PLAINTIFF’S COMPLAINT UNDER RULE 12(b)(6)
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`Case 3:24-cv-00540-MHL Document 35 Filed 10/17/24 Page 2 of 27 PageID# 288
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`III.
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`IV.
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`V.
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`B.
`C.
`D.
`E.
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`INTRODUCTION ............................................................................................................. 1
`THE CLAIMS OF THE ’337 AND ’675 PATENTS ARE PATENT
`INELIGIBLE UNDER 35 U.S.C. § 101 ............................................................................ 1
`A.
`The patents do not claim an improvement in computer capabilities (Alice
`Step One). .............................................................................................................. 1
`The patents also fail the case law comparison test (Alice Step One). ................... 6
`The patents also fail the functional test (Alice Step One). .................................... 7
`The patents fail the real-world analogy test (Alice Step One). .............................. 8
`There is no inventive concept in the claim elements individually (Alice
`Step Two). ............................................................................................................ 10
`There is no inventive concept in the claim elements as an ordered
`combination (Alice Step Two). ............................................................................ 13
`SoundClear’s remaining complaints are meritless. .............................................. 13
`1.
`Dismissal is not premature. ...................................................................... 13
`2.
`The asserted claims are representative. .................................................... 15
`SOUNDCLEAR FAILS TO STATE A PLAUSIBLE CLAIM FOR DIRECT
`INFRINGEMENT OF THE ’337 AND ’675 PATENTS ................................................ 16
`SOUNDCLEAR FAILS TO STATE A PLAUSIBLE CLAIM FOR DIRECT
`INFRINGEMENT OF THE ’487 PATENT .................................................................... 19
`SOUNDCLEAR FAILS TO STATE A PLAUSIBLE CLAIM FOR WILLFUL
`INFRINGEMENT............................................................................................................ 20
`
`F.
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`G.
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`-i-
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`Case 3:24-cv-00540-MHL Document 35 Filed 10/17/24 Page 3 of 27 PageID# 289
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`
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .............................................................................................................9, 11
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) .................................................................................................................16
`
`Bancorp Servs., LLC v. Sun Life Assurance Co. of Can.,
`687 F.3d 1266 (Fed. Cir. 2012)................................................................................................13
`
`Beteiro, LLC v. DraftKings Inc.,
`104 F.4th 1350 (Fed. Cir. 2024) ................................................................................................9
`
`Bot M8 LLC v. Sony Corp. of Am.,
`4 F.4th 1342 (Fed. Cir. 2021) ............................................................................................17, 19
`
`Bozeman Fin. LLC v. FRB of Atlanta,
`955 F.3d 971 (Fed. Cir. 2020)..................................................................................................13
`
`CLS Bank Int’l v. Alice Corp. Pty Ltd.,
`717 F.3d 1269 (Fed. Cir. 2013)..................................................................................................8
`
`Dialect, LLC v. Amazon.com, Inc.,
`701 F. Supp. 3d 332 (E.D. Va. 2023) ........................................................................................5
`
`DriverDo, LLC v. Soc. Auto Transp., Inc.,
`No. 3:23cv265, 2024 WL 1376218 (E.D. Va. Mar. 29, 2024) ........................................ passim
`
`Dropbox, Inc. v. Synchronoss Techs., Inc.,
`815 F. App’x 529 (Fed. Cir. 2020) ............................................................................................8
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016)............................................................................................3, 15
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)..............................................................................................1, 2
`
`Esignature Software, LLC v. Adobe Inc.,
`No. 2023-1711, 2024 WL 3289488 (Fed. Cir. July 3, 2024) ...................................................10
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`-ii-
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`TABLE OF AUTHORITIES
`(continued)
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`Page(s)
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`IBM Corp. v. Zillow Group, Inc.,
`50 F.4th 1371 (Fed. Cir. 2022) ..........................................................................................2, 3, 5
`
`Intell. Ventures I LLC v. Cap. One Fin. Corp.,
`850 F.3d 1332 (Fed. Cir. 2017)..................................................................................................3
`
`Intell. Ventures I LLC v. Erie Indem. Co.,
`711 F. App’x 1012 (Fed. Cir. 2017) ........................................................................................13
`
`Intell. Ventures I LLC v. Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016)..................................................................................................9
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015)..................................................................................................4
`
`IPA Techs., Inc. v. Amazon.com, Inc.,
`307 F. Supp. 3d 356 (D. Del. 2018) .......................................................................................5, 7
`
`In re Killian,
`45 F.4th 1373 (Fed. Cir. 2022) ..................................................................................................3
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016)..................................................................................................6
`
`Mentone Sols. LLC v. Digi Int’l Inc.,
`No. 2021-1202, 2021 WL 5291802 (Fed. Cir. Nov. 15, 2021) .................................................6
`
`Mobile Acuity Ltd. v. Blippar Ltd.,
`110 F.4th 1280 (Fed. Cir. 2024) ........................................................................................11, 15
`
`Nuance Commc’ns, Inc. v. MModal LLC,
`No. CV 17-1484-MN-SRF, 2018 WL 6584129 (D. Del. Dec. 14, 2018) .....................3, 4, 5, 7
`
`People.ai, Inc. v. Clari Inc.,
`No. 2022-1364, 2023 WL 2820794 (Fed. Cir. Apr. 7, 2023) ..................................................10
`
`PersonalWeb Techs. LLC v. Google LLC,
`8 F.4th 1310 (Fed. Cir. 2021) ..................................................................................................14
`
`Prism Techs. LLC v. T-Mobile USA, Inc.,
`696 F. App’x 1014 (Fed. Cir. 2017) ........................................................................................11
`
`Realtime Data LLC v. Array Networks Inc.,
`Nos. 2021-2251, 2021-2291, 2023 WL 4924814 (Fed. Cir. Aug. 2, 2023).......................11, 12
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`-iii-
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`TABLE OF AUTHORITIES
`(continued)
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`Page(s)
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`Rembrandt Soc. Media, LP v. Facebook, Inc.,
`950 F. Supp. 2d 876 (E.D. Va. 2013) ......................................................................................20
`
`Riggs Tech. Holdings, LLC v. Cengage Learning, Inc.,
`No. 2022-1468, 2023 WL 193162 (Fed. Cir. Jan. 17, 2023) ...................................................14
`
`Sanderling Mgmt. Ltd. v. Snap Inc.,
`65 F.4th 698 (Fed. Cir. 2023) ..................................................................................................14
`
`SAP Am., Inc. v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018)................................................................................................11
`
`Sec. First Innovations, LLC v. Google LLC,
`Case No. 2:23-cv-97, 2023 WL 7726389 (E.D. Va., Nov. 15, 2023) ......................................20
`
`Trinity Info Media, LLC v. Covalent, Inc.,
`72 F.4th 1355 (Fed. Cir. 2023) ................................................................................................14
`
`Yu v. Apple Inc.,
`1 F.4th 1040 (Fed. Cir. 2021) ....................................................................................................4
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`-iv-
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`Case 3:24-cv-00540-MHL Document 35 Filed 10/17/24 Page 6 of 27 PageID# 292
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`
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`I.
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`INTRODUCTION
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`SoundClear boasts that JVC Kenwood (“JVC”) developed the patents being asserted in this
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`matter. Yet, tellingly, JVC never asserted these patents against Google’s products, which have
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`been on the market for over a decade. JVC did not do so for good reason: no Google product
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`infringes the patents, and the patents are invalid for claiming unpatentable subject matter.
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`More specifically, the ’337 and ’675 patents are invalid because they are directed to the
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`abstract idea of classifying a voice based on proximity and tailoring output based on the
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`classification, and they claim nothing more than implementing this abstract idea using generic
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`computer components. SoundClear urges the Court to focus on the rationale of Google’s cited
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`cases; so does Google. The reasoning of those cases support and compel only one conclusion: that
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`the ’337 and ’675 patents are invalid. SoundClear’s Opposition identifies no specific claim
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`construction issue or factual dispute that requires further development before resolving the § 101
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`issue on the pleadings. Thus, the Court need not wait and should dismiss those patents now.
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`Moreover, SoundClear’s Opposition raises only implausible infringement theories for each
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`of the Asserted Patents, based on nothing more than unreasonable speculation that the Google
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`Products might infringe the claims. The Complaint should be dismissed for failing to plead
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`plausible infringement theories as Iqbal/Twombly requires.
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`II.
`
`THE CLAIMS OF THE ’337 AND ’675 PATENTS ARE PATENT INELIGIBLE
`UNDER 35 U.S.C. § 101
`
`A.
`
`The patents do not claim an improvement in computer capabilities (Alice
`Step One).
`
`SoundClear’s main argument at Alice Step One is that its patents recite improvements in
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`computer capabilities under Enfish and its progeny. Opp. 8-9. They do not. Enfish involved claims
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`related to “a ‘self-referential’ database.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1332
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`1
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`(Fed. Cir. 2016). The Federal Circuit explained that the operative question at Step One in that case
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`was “whether the focus of the claims is on the specific asserted improvement in computer
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`capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that
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`qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335-36.
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`The Federal Circuit acknowledged that “virtually all” § 101 cases since Alice involve patents that
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`used computers as a tool, and that Enfish was the exception–a case where the claims improved on
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`the computer itself by allowing for faster searching of data, more effective data storage, and greater
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`flexibility in database configuration. Id. at 1331-33, 1336. Since Enfish, the Federal Circuit has
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`affirmed a small handful of other cases where the claims were directed to an improvement on
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`computer functionality, rather than merely using a computer as a tool. This is not one of those rare
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`cases.
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`Here, IBM Corp. v. Zillow Group, Inc., 50 F.4th 1371 (Fed. Cir. 2022) is more analogous
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`and instructive. In that case, the challenged claims were directed to “responding to a user’s
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`selection of a portion of a displayed map by simultaneously updating the map and a co-displayed
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`list of items on the map.” 50 F.4th at 1377. The Federal Circuit explained that “‘improving a user’s
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`experience while using a computer application is not, without more, sufficient to render the claims’
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`patent-eligible at step one.” Id. (quoting Customedia Techs., LLC v. Dish Network Corp., 951 F.3d
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`1359, 1365 (Fed. Cir. 2020)). There, like here, the claims failed to “recite any assertedly inventive
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`technology for improving computers as tools” but rather were “directed to an abstract idea for
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`which computers are invoked merely as a tool” because identifying, analyzing, and presenting data
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`to a user is using the device as a tool:
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`Identifying, analyzing, and presenting certain data to a user is not an improvement
`specific to computing. “Merely requiring the selection and manipulation of information—
`to provide a ‘humanly comprehensible’ amount of information useful for users . . . by itself
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`2
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`
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`does not transform the otherwise-abstract processes of information collection and
`analysis.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016).
`We have repeatedly held claims “directed
`to collection of
`information,
`comprehending the meaning of that collected information, and indication of the
`results, all on a generic computer network operating in its normal, expected manner”
`to be abstract. In re Killian, 45 F.4th 1373, 1380 (Fed. Cir. 2022); see also Intell. Ventures
`I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (describing cases).
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`IBM, 50 F.4th at 1377-78 (emphases added).
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`In this case, the asserted claims similarly recite steps for collecting information (acquiring
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`voice data), comprehending the meaning of that collected information (by classifying the acquired
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`voice as a “first” or “second” voice), and indicating the results of that analysis (by tailoring the
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`response to the user based on the voice classification). This falls squarely into the “[i]dentifying,
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`analyzing, and presenting certain data to a user” that the Federal Circuit explained is “not an
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`improvement specific to computing.” Id.
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`SoundClear’s argument that its patents recite improvements in computer capabilities is
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`often repeated by patentees, and courts commonly reject those arguments. In Nuance
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`Communications, Inc. v. MModal LLC, No. CV 17-1484-MN-SRF, 2018 WL 6584129 (D. Del.
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`Dec. 14, 2018), for example, the patents related to “categorizing input data in speech recognition
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`systems and classifying the data into predetermined classifications.” Id. at *2. The plaintiff argued
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`its patent provided a “technological solution” by claiming an “improvement in the way computer
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`systems process data received from [automated speech recognition] systems.” Id. at *5. Unlike
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`SoundClear, the plaintiff in that case was able to point specifically at two claim limitations that
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`seemed to relate to how the device processes input data: the limitations covered “bounding” and
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`“normalizing” portions of the input data stream. Id. The court even recognized that the
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`specification contended that the invention “improve[d] the functioning of a computer” and differed
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`from prior art systems in part because of the reliance on “templates to bound the word or sequence
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`3
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`
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`of words . . . .” Id. at *7. The court nonetheless held that the claim was directed to the abstract idea
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`of “receiving data, recognizing words using well-known [automated speech recognition]
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`technology, and storing the data in the appropriate fields of a report template.” Id. at *8. The court
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`explained that the claimed “normalizing” and “bounding” limitations were recited “using
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`functional language, without identifying how the claimed function is performed.” Id. at *6
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`(emphasis added). Thus, the court found that “[t]he focus of the claims in this case is not on a
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`specific improved structure to enhance computer functionality, but instead is directed to an abstract
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`end-result.” Id. (citing RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017)).
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`Similar to Nuance, the mere fact that the ’337 and ’675 patents here purport to differ from
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`prior art systems does not insulate them from § 101. See also Yu v. Apple Inc., 1 F.4th 1040, 1044
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`(Fed. Cir. 2021) (dismissal under § 101 despite specification’s contention of alleged improvement
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`in the particular configuration of lenses and image sensors); Internet Patents Corp. v. Active
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`Network, Inc., 790 F.3d 1343, 1345 (Fed. Cir. 2015) (dismissal on § 101 despite specification’s
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`contention that the alleged invention improved on the prior art); DriverDo, LLC v. Soc. Auto
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`Transp., Inc., No. 3:23cv265, 2024 WL 1376218, at *17 (E.D. Va. Mar. 29, 2024) (dismissal on §
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`101 despite plaintiff’s contention that the alleged invention “was revolutionary over prior systems”
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`by “mak[ing] it easier to choose intermediate locations that are convenient to one of the trip’s
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`endpoints or to the route the driver will take”).
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`As in Nuance, the asserted claims here use results-oriented, functional language, without
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`identifying how the claimed function is performed. Mot. 16-18. Similar to Nuance, neither the
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`claims nor the specifications here specify how claimed limitations, e.g., classifying “based on the
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`distance between the user and the voice-content control device,” are to be achieved. ’337 patent,
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`Claim 4[c]; see also ’675 patent, Claim 6[b]. And similar to Nuance, the specifications here
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`4
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`emphasize that it does not matter how the result is to be achieved, which further indicates that
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`computers are invoked merely as a tool. Mot. 17 (citing ’337 patent 8:10-12; ’675 patent 10:22-
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`24). Thus, as in Nuance, the asserted claims’ focus here is “not on a specific improved structure to
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`enhance computer functionality,” but rather “an abstract end-result.” 2018 WL 6584129, at *7.
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`As another example, IPA Technologies, Inc. v. Amazon.com, Inc., 307 F. Supp. 3d 356 (D.
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`Del. 2018) involved patents “generally directed to navigating an electronic data source by means
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`of spoken language.” Id. at 359. Like SoundClear does here, the plaintiff in that case argued the
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`asserted patents “provide ‘specific improvements’ to existing technology and provide a specific
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`solution to a problem necessarily rooted in technology.” Id. at 363. The court rejected plaintiff’s
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`arguments explaining that “[r]ather than claiming a technological solution to the problem,
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`however, the asserted claims are directed to the objective of the invention itself.” Id. at 364. The
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`court further rejected plaintiff’s arguments that claim terms such as “data source” and “network
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`servers” meant the claims were a specific improvement in technology because those were clearly
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`generic terms. Id. at 364-65. In invalidating the claims, the court also found that the claim elements
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`were recited in functional terms with “no explanation as to how they are accomplished, and nothing
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`ties them specifically to addressing the problem disclosed by the patent . . . .” Id. at 367 (emphasis
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`added). Similar to IPA Technologies, the asserted claims here are directed to the objective itself:
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`classifying a voice based on proximity, and tailoring output based on that classification. And as in
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`IPA Technologies, the asserted claims here do not recite how results are accomplished. Mot. 16-
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`18.
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`Based on IBM, Nuance, and IPA Technologies, among others, SoundClear’s argument that
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`classifying a voice based on proximity and tailoring output based on that classification constitutes
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`an improvement in computer capabilities lacks merit. The claims are abstract. See also Dialect,
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`5
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`
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`LLC v. Amazon.com, Inc., 701 F. Supp. 3d 332, 340 (E.D. Va. 2023) (rejecting plaintiff’s argument
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`that interpreting speech based on “a domain and context” constituted a patent eligible “specific
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`improvement”).
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`B.
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`The patents also fail the case law comparison test (Alice Step One).
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`SoundClear’s opposition does not dispute that examining earlier cases of a similar or
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`parallel descriptive nature is an accepted approach to determine whether classifying a voice based
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`on proximity and tailoring output based on that classification is an abstract idea. Opp. 10. But
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`rather than relying on similar cases (involving speech recognition, data processing, and indicating
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`the results of that processing), SoundClear instead relies on dissimilar cases (involving data
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`transmission methods, 3D animation of faces, video quality, and heart arrhythmias). In grasping
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`to avoid the unfavorable results of cases analyzing similar patents, SoundClear fails to explain why
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`this Court should ignore similar cases in favor of dissimilar ones.
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`For example, SoundClear relies on four cases covering wildly dissimilar technologies:
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`Mentone, McRO, Contour, and CardioNet. Opp. 14-16. Mentone involved a patent related to
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`“dynamic resource allocation in general packet radio systems.” Mentone Sols. LLC v. Digi Int’l
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`Inc., No. 2021-1202, 2021 WL 5291802, at *1 (Fed. Cir. Nov. 15, 2021). Specifically, the
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`representative claim in Mentone was for a data transmission method that “increase[d] the capacity
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`of networks to communicate data by allowing the network to use timeslots for transmission”
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`resulting in higher data transmission rates. Id. at *2. McRO involved methods for automatically
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`animating lip synchronization and facial expressions of animated 3D characters. McRO, Inc. v.
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`Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed. Cir. 2016). Contour involved “dual-
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`recording” two video qualities in point-of-view cameras, and CardioNet involved the detection of
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`heart arrhythmias in patients. Opp. 16 (citing Contour IP Holding LLC v. GoPro, Inc., 113 F.4th
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`6
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`
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`1373 (Fed. Cir. 2024), CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020)). What
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`SoundClear does not (and cannot) explain is why claims for managing data transmission,
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`animating 3D faces, video recording quality, or detecting heart arrhythmias are somehow more
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`germane than Google’s cited cases involving speech recognition, data processing, and indicating
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`the results of that processing.
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`SoundClear’s attempts to distinguish the other cases cited by Google, such as Dialect,
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`Nuance and IPA Technologies are unavailing. Opp. 13-14, 18-19. SoundClear’s emphasis on claim
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`construction in Dialect and IPA Technologies is undercut by the fact that SoundClear identifies no
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`claim construction issues here. See II.G.1 below. And SoundClear does not even attempt to
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`distinguish Nuance at Step One, effectively conceding that the abstract Nuance claims are similar
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`to the asserted claims here. Opp. 18. Google’s opening brief walked through how and why the
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`asserted claims are similar to the abstract claims in Dialect. Mot. 15-16. None of SoundClear’s
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`arguments to distinguish Dialect withstand scrutiny. Both Dialect and the present case involve
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`collecting voice data, analyzing it, and determining how to respond to a user based on the results
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`of that analysis. Mot. 15-16. Just as in Dialect, the asserted claims here recite nothing beyond the
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`abstract idea itself implemented on generic computer components. See II.E below. Similar to
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`Dialect, the results-oriented claims here recite no algorithm for how proximity is used for voice
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`classification, and just as in Dialect, the results-oriented claiming preempts the abstract idea itself.
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`See II.C below. Just as in Dialect, Nuance, and IPA Technologies, the asserted claims are directed
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`to an abstract idea. See Mot. 15-16; II.A above.
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`C.
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`The patents also fail the functional test (Alice Step One).
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`The patents’ results-oriented claiming is a fatal defect SoundClear cannot overcome.
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`Although Google’s opening brief devoted three pages to explaining how the asserted claims are
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`7
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`
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`results-oriented, which are “almost always” patent ineligible, Mot. 16 (citing Beteiro, LLC v.
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`DraftKings Inc., 104 F.4th 1350, 1356 (Fed. Cir. 2024)), SoundClear’s opposition failed to
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`meaningfully respond. See also DriverDo, 2024 WL 1376218, at *15 (“[t]he invalidation of purely
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`functional claims is a consistent theme in the Federal Circuit’s recent § 101 jurisprudence.”).
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`SoundClear’s muddled opposition merely repeats the same legal conclusion over and over again
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`that the claims are specific and not results-oriented, Opp. 8, 22, with no attempt to explain how or
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`why. SoundClear’s inability to articulate any specifics shows that the claims are results-oriented,
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`which are “almost always” patent ineligible.
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`SoundClear makes much of the specifications’ identification of problems that the alleged
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`inventions purport to solve. Opp. 8, 9, 20, 22. But courts have routinely rejected such arguments:
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`“[plaintiff] makes much of passages in the specification asserting that the ’505 patent solved a
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`technological problem. But that is not enough. The patent has to describe how to solve the problem
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`in a manner that encompasses something more than the ‘principle in the abstract.’” Dropbox, Inc.
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`v. Synchronoss Techs., Inc., 815 F. App’x 529, 533 (Fed. Cir. 2020) (citations omitted) (emphasis
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`original); see also DriverDo, 2024 WL 1376218, at *17 (rejecting plaintiff’s argument that the
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`claims provided a technological improvement over prior systems because the claims failed to
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`“explain any mechanism by which, or how the claimed interface ‘makes it easier.’”) (emphasis
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`original).
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`D.
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`The patents fail the real-world analogy test (Alice Step One).
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`Google’s opening brief set forth how each of the asserted claims had a clear long-prevalent,
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`pre-computer analog, and hence failed the real-world analogy test. Mot. 19-20. In its opposition,
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`SoundClear called Google’s analogies “unhelpful” and misleadingly relied on a concurring
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`opinion (without identifying it as such) from the Federal Circuit’s divided en banc decision in CLS
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`8
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`Case 3:24-cv-00540-MHL Document 35 Filed 10/17/24 Page 14 of 27 PageID# 300
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`Bank Int’l v. Alice Corp. Pty Ltd., 717 F.3d 1269, 1277 (Fed. Cir. 2013), which was ultimately
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`overturned by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).
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`See Opp. at 16. But more recent and more persuasive authority holds that analogizing claims to
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`“real-world” activities or to “fundamental . . . practices long prevalent” are a “yet another clue that
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`the claims may be abstract and unpatentable.” Beteiro, 104 F.4th at 1356. See also DriverDo, 2024
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`WL 1376218, at *20 (claims abstract because they were “directed to a method of organizing human
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`activity”).
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`Besides SoundClear’s unsupported complaint about analogies generally, SoundClear
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`asserts there can be no real-world analogy here because the asserted claims supposedly set forth
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`specific rules, automate tasks, function in a “specific, automated process,” and involve a specific
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`voice-controlled device. Opp. 17. SoundClear’s attempt to block a real-world analogy lacks merit.
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`First, specific “rules” do not preclude a real-world analogy. In Intellectual Ventures I LLC
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`v. Symantec Corp., 838 F.3d 1307, 1316-17 (Fed. Cir. 2016), one of the patents related to
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`“receiving, screening, and distributing e-mail . . . .” The district court analogized the claims to a
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`“corporate mailroom,” which the Federal Circuit considered a “useful” analogy. Id. at 1317. The
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`Federal Circuit explained: “Such mailrooms receive correspondence, keep business rules defining
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`actions to be taken regarding correspondence based on attributes of the correspondence, apply
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`those business rules to correspondence, and take certain actions based on the application of
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`business rules.” Id. (emphasis added). The Federal Circuit went on to explain that the claimed
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`screening of messages were abstract “fundamental . . . practice[s] long prevalent in our system and
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`method[s] of organizing human activity.” Id. at 1318 (alterations in original) (citations and internal
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`quotation marks omitted).
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`Case 3:24-cv-00540-MHL Document 35 Filed 10/17/24 Page 15 of 27 PageID# 301
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`Second, the Federal Circuit has made clear that “[a]utomation or digitization of a
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`conventional method of organizing human activity . . . does not bring the claims out of the realm
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`of abstractness.” People.ai, Inc. v. Clari Inc., No. 2022-1364, 2023 WL 2820794, at *7 (Fed.
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`Cir. Apr. 7, 2023). See also DriverDo, 2024 WL 1376218, at *14 (“[M]ere automation of
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`manual processes using generic computers does not constitute a patentable improvement in
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`computer technology.”) (citing IBM, 50 F.4th at 1378).
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`Third, SoundClear makes the exact same mistake here as the plaintiff in Esignature
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`Software, LLC v. Adobe Inc., No. 2023-1711, 2024 WL 3289488 (Fed. Cir. July 3, 2024). In
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`Esignature, the plaintiff argued “because secure electronic documents were not digitally signed as
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`claimed before the ’527 patent, the district court’s articulation was not a longstanding business
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`practice, and therefore not an abstract idea.” Id. at *2 (emphasis original). The Federal Circuit
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`rejected this argument, explaining that the district court did not, under governing case law, need
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`to conclude that “applying digital signatures in an electronic document was, itself, a longstanding
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`business practice.” Id. at *3 (emphasis original). SoundClear’s argument that the claims involve a
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`specific voice-controlled device thus misses the point. What matters is not whether the specific
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`claimed steps have been long practiced, but rather whether there are long-standing pre-computer
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`analogs. See also DriverDo, 2024 WL 1376218, at *20 (claims directed to a method of organizing
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`human activity despite their recitation of a server running an internet service and a mobile device
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`running a mobile device application).
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`E.
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`There is no inventive concept in the claim elements individually (Alice Step
`Two).
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`At Alice Step Two, SoundClear’s main argument is that Google missed certain limitations
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`in its analysis. Opp. 6-7. But Google did not miss those limitations. Google pointed out that those
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`Case 3:24-cv-00540-MHL Document 35 Filed 10/17/24 Page 16 of 27 PageID# 302
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`limitations were admittedly known based on the ’337 and ’675 patent specifications, and
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`admittedly known claim elements cannot be the inventive concept at Step Two–a point of law that
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`SoundClear does not dispute. Compare Mot. 20-21 with Opp. 6-7. And SoundClear’s argument is
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`undercut by its failure to identify any inventive concept supposedly missed.
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`SoundClear’s Step Two arguments are premised on an erroneous understanding of § 101
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`law. First, SoundClear argues that the ’337 and ’675 patents identified “technical problems” and
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`articulated “unconventional” processes that solved them, presupposing that constitutes an
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`inventive concept at Step Two. Opp. 17, 22. But SoundClear’s approach mistakes novelty with the
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`Step Two search for an “‘inventive concept’—i.e., an element or combination of elements that is
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`‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon
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`the [ineligible concept] itself.’” Alice, 573 U.S. at 217-18. The Federal Circuit has rejected
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`SoundClear’s approach explaining:
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`To the extent [plaintiff] is suggesting that its alleged “inventive concept” is not found in
`the prior art, that contention is unavailing at step two, as “a claim for a new abstract idea
`is still an abstract idea.” Synopsys, 839 F.3d at 1151; see also SAP Am., Inc. v. InvestPic,
`LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“We may assume that the techniques claimed
`are groundbreaking, innovative, or even brilliant, but that is not enough for eligibility.”)
`(internal quotation marks and brackets omitted).
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`Mobile Acuity Ltd. v. Blippar Ltd., 110 F.4th 1280, 1294 (Fed. Cir. 2024) (emphasis added). See
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