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`Exhibit 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`Plaintiff,
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`SOUNDCLEAR TECHNOLOGIES, LLC, )
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`) Civil Action No. 1:24-cv-01283 (AJT/WBP)
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`v.
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`AMAZON.COM, INC., et al.,
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`Defendants.
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`ORDER
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`In this patent infringement case, Defendants Amazon.com, Inc.; Amazon.com Services,
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`LLC; and Amazon Web Services, Inc. (collectively “Amazon”) filed a Motion to Transfer Venue
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`Under 28 U.S.C. § 1404, [Doc. No. 40] (the “Motion to Transfer”), and a Motion to Dismiss, [Doc.
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`No. 31] (the “Motion to Dismiss”). The Court held a hearing on the Motions on November 1, 2024,
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`following which it took the Motions under advisement. Upon consideration of the Motions, the
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`memoranda and exhibits submitted in support thereof and in opposition thereto, the argument of
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`counsel at the hearing, and for the reasons stated below, the Motion to Transfer is DENIED, and
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`the Motion to Dismiss is GRANTED.
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`I.
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`STATEMENT OF FACTS1
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`Plaintiff SoundClear Technologies, LLC (“SoundClear”) is a Virginia limited liability
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`company. [Doc. No. 1] ¶ 2. Amazon is incorporated in Delaware, has a principal place of business
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`in Seattle, Washington, and a second headquarters in Arlington, Virginia. Id. ¶¶ 3–4. SoundClear
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`owns three patents: 11,069,337 (“337 patent”), 11,244,675 (“675 patent”), and 9,223,487 (“487
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`patent”) (collectively “the patents”). SoundClear alleges that it did not grant Amazon prior
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`1 The following facts are undisputed unless indicated otherwise.
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`1
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`approval, authorization, or license to use any part of the patents, id. ¶¶ 33, 40, 47, and that Amazon
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`infringed the patents in making and selling four product lines: Amazon Echo,2 Amazon Kindle and
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`Fire,3 Amazon Fire TV and Fire TV Cube (second generation), and Alexa Built-in products. Id. ¶
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`15.
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`The United States Patent and Trademark Office (“USPTO”) issued the 337 patent on July
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`20, 2021. Id. ¶ 30. The patent covers a “voice-content control device” that detects a user’s voice
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`through its microphone, measures the user’s distance from the device, and remits an output
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`response while adjusting the sound volume depending on the user’s distance from the speaker.
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`[Doc. No. 1-2] at 4–5. SoundClear alleges that Amazon infringed the 337 patent in various models
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`of Amazon’s Alexa and Echo. [Doc. No. 1] ¶¶ 60–61.
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`The USPTO issued the 675 patent on February 8, 2022. Id. ¶ 37. This device operates like
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`the 337 patent with only a few relevant differences: (i) the device does not adjust sound volume
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`based on the speaker’s distance from the device; (ii) the device changes the output response based
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`on whether a voice is predetermined or not; and (iii) the device can send its output response to
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`2 SoundClear alleges multiple versions of the Amazon Echo violate the patents:
`Amazon Echo 1st Generation, Amazon Echo 2nd Generation, Amazon Echo 3rd Generation,
`Amazon Echo Dot 1st Generation, Amazon Echo Dot 2nd Generation, Amazon Echo Dot 3rd
`Generation, Amazon Echo Dot Kids Edition 1st Generation, Amazon Echo Dot Kids Edition 2nd
`Generation, Amazon Echo Look, Amazon Echo Show 2nd Generation, Amazon Echo Spot, Amazon
`Echo Plus 1st Generation, Amazon Echo Plus 2nd Generation, Amazon Echo Studio, Amazon Echo
`(4th Generation), Amazon Echo Dot (4th Generation), Amazon Echo Dot With Clock (3rd
`Generation), Amazon Echo Dot With Clock (4th Generation), Amazon Echo Dot Kids (3rd
`Generation), Amazon Echo Dot Kids (4th Generation), Amazon Echo Hub (all generations),
`Amazon Echo Show 5 (all generations), Amazon Echo Show 8 (all generations), Amazon Echo
`Show 10 (all generations), Amazon Echo Show 15 (all generations), Amazon Echo Show 15 10 (3rd
`generation).
`[Doc. No. 1] ¶ 15.
`3 SoundClear also alleges that multiple versions of the Amazon Kindle and Fire violate the patents:
`Amazon Kindle Fire (2nd Generation), Kindle Fire (2.5th Generation), Kindle Fire (3rd Generation),
`Fire HD (4th Generation), Fire/Fire HD (5th Generation), Fire HD (6th Generation), Fire/Fire HD
`(7th Generation), Fire HD (8th Generation), Fire/Fire HD (9th Generation), Fire HD (10th
`Generation), Fire HD 10 (11th Generation), Fire 7 (12th Generation), Fire HD 8 (12th Generation),
`Fire HD 10 (13th Generation), Fire Max 11 (13th Generation).
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`Id.
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`2
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`another device (such as a phone or television) as text rather than projecting an audio response. See
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`[Doc. No. 1-3] at 2, 8. SoundClear alleges that Amazon infringed the 675 patent through various
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`models of Amazon’s Alexa and Echo. [Doc. No. 1] ¶ 73.
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`The USPTO issued the 487 patent on December 29, 2015. Id. ¶ 44. The 487 patent
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`describes a process for controlling touchscreen devices. If a user places two fingers on the
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`touchscreen and moves the fingers together at the proper angle, the device will create an invisible
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`rectangle around the user’s “pinched” selection; once completed, the user may then command all
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`items in that area (such as deleting, rotating, or copying) at once. [Doc. No. 1-1] at 6, 9, 11.
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`SoundClear alleges that Amazon infringed the 487 patent with various models of Amazon’s Fire
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`and Kindle. [Doc. No. 1] ¶¶ 15, 84.
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`II.
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`STANDARD OF REVIEW
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`A. Motion to Transfer
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`Transfer of venue is governed by 28 U.S.C. § 1404 which provides: “[f]or the convenience
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`of parties and witnesses, in the interest of justice, a district court may transfer any civil action to
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`any other district or division where it might have been brought.” Accordingly, there is a two-part
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`inquiry when considering whether to transfer venue, “(1) whether the claims might have been
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`brought in the transferee forum, and (2) whether the interest of justice and convenience of the
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`parties and witnesses justify transfer to that forum.” Trend Micro Inc. v. Open Text, Inc., No. 1:22-
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`CV-1063, 2023 WL 6446333, at *5 (E.D. Va. Sept. 29, 2023) (internal citations omitted).
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`With respect to the first prong of the transfer analysis, patent infringement cases can be
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`brought “in the judicial district where the defendant resides, or where the defendant has committed
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`acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b).
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`Pursuant to Section 1400(b), a defendant resides only in its state of incorporation. Trend Micro
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`Inc., 2023 WL 6446333, at *4. As for the second prong of the transfer inquiry, courts consider “(1)
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`3
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`the weight accorded to plaintiff’s choice of venue; (2) witness convenience and access; (3)
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`convenience of the parties; and (4) the interest of justice.” Trs. of the Plumbers & Pipefitters Nat.
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`Pension Fund v. Plumbing Servs., Inc., 791 F.3d 436, 444 (4th Cir. 2015). At bottom, “the decision
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`whether to transfer is left to the discretion of the trial court.” Fed. Trade Comm’n v. Pukke, 53
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`F.4th 80, 110 (4th Cir. 2022).
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`B. Eligibility for Patent Protection under 35 U.S.C. § 101.
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`The Patent Act provides that “any new and useful process, machine, manufacture, or
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`composition of matter, or any new and useful improvement thereof” may be patented. 35 U.S.C.
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`§ 101. The act defines “process” as “process, art or method, and includes a new use of a known
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`process, machine, manufacture, composition of matter, or material.” Id. § 100(b). Abstract ideas
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`are ineligible for patent protection, Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
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`66, 71 (2012), but courts must not construe this exception too broadly because “all inventions at
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`some level embody, use, reflect, rest upon, or apply . . . abstract ideas.” Id. at 72. The abstract idea
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`exception prevents patenting a result where “it matters not by what process or machinery the result
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`is accomplished.” O'Reilly v. Morse, 56 U.S. 62, 113 (1854).
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`When assessing whether a patent is valid under 35 U.S.C. § 101,4 the Alice framework
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`applies. At Alice’s first step, the court must determine whether the patent covers an ineligible
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`concept, such an abstract idea, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014),
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`4 A patent is presumed valid, and a patent challenger must show ineligibility for patent protection by clear and
`convincing evidence. Microsoft Corp. v. l4l Ltd. P’ship, 564 U.S. 91, 95 (2011). Patent validity is question of law that
`may contain underlying facts. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). At the pleading stage, a
`court may determine patent eligibility where there are no factual allegations that prevent resolving the question. Aatrix
`Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018). Although claim construction and
`discovery can be helpful in determining patent validity, it is not necessary where a patentee does not “propose a
`specific claim construction or identify specific facts that need development and explain why those circumstances must
`be resolved” prior to ruling on the patent’s validity under § 101. Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th
`1355, 1361 (Fed. Cir. 2023). Here, SoundClear has not proffered specific facts that must be determined before ruling
`on the patents’ validity, and the Court has not independently found any reason that warrants delaying its ruling pending
`claim construction or the determination of specific facts.
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`4
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`and for that purpose, the Court must consider the patent’s claims “in their entirety to determine . .
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`. their character as a whole.” McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299,
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`1312 (Fed. Cir. 2016). If the asserted patent is for “a specific means or method that improves the
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`relevant technology” rather than merely “a result or effect that itself is the abstract idea,” then it
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`passes Alice’s step one. Id. at 1314. If there is an abstract idea, Alice’s step two requires the court
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`to examine the patent claim and determine if there is something “significantly more” that
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`“‘transform[s] the nature of the claim’ into a patent-eligible claim or ‘inventive concept.’” Id. at
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`217–18 (quoting Mayo, 566 U.S. at 73) (alteration omitted).
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`III. DISCUSSION
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`A. Motion to Transfer
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`In support of its Motion to Transfer, Amazon contends that (1) the Northern District of
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`California is the center of the infringing conduct because Lab126 is in Northern California, [Doc.
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`No. 41] at 15; (2) the key party and non-party witnesses are located in Northern California, id. at
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`15–17; (3) the non-testimonial sources of evidence are typically accessed from Northern
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`California, id. at 14; and (4) Northern California courts have a local interest in adjudicating the
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`case, id. at 17.
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`1. This action could have been brought in the Northern District of California
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`Venue is proper in the Northern District of California if it is a district where the defendant
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`“has committed acts of infringement” and maintains a “regular and established place of business.”
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`See 28 U.S.C. § 1400(b). As SoundClear concedes, some acts of infringement occurred at
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`Amazon’s Northern California facilities, which employ thousands of employees; and this action
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`could have been brought in the Northern District of California.
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`5
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`2. The convenience of the parties and interests of justice factors disfavor transfer
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`In assessing whether the interests of justice and convenience of the parties justify transfer
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`to the Northern District of California, the Court must analyze “(1) the weight accorded to plaintiff’s
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`choice of venue; (2) witness convenience and access; (3) convenience of the parties; and (4) the
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`interest of justice.” Pipefitters, 791 F.3d at 444.
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`As for the first factor, a plaintiff’s “choice of venue is entitled to substantial weight in
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`determining whether transfer is appropriate.” Id.; Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255
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`(1981). But “the level of deference of such choice varies with the significance of the contacts
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`between the venue chosen by the plaintiff and the underlying cause of action.” ThroughPuter, Inc.
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`v. Microsoft Corp., No. 3:21cv216, 2022 WL 874319, at *7 (E.D. Va. Mar. 23, 2022). In patent
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`cases, a plaintiff’s choice of forum is afforded “minimal weight,” where, as here, SoundClear has
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`few business activities in the district and is appropriately classified as a “non-practicing entity”
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`that “does not research and develop new technology,” but instead merely “acquires patents,
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`licenses the technology, and sues alleged infringers.” Glob. Touch Sols., LLC v. Toshiba Corp.,
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`109 F. Supp. 3d 882, 896 (E.D. Va. 2015) (internal citations omitted) (collecting cases). Courts
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`will also consider where “the center of the accused activity” is located, that is, in what forum were
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`the accused products designed and developed, see id. at 896–907, and whether the forum has
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`special ties to the alleged infringement activities or, conversely, whether it has the same ties as
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`every other state. Id. at 897.
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`Since SoundClear is a non-practicing entity that has not developed products or licensed its
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`technology for use in products, with no employees in Virginia, SoundClear lacks the contacts that
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`usually result in substantial weight being afforded to plaintiff’s choice of home forum.
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`Nevertheless, given that Amazon HQ2 is located in Arlington, Virginia and is involved in bringing
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`the accused products to market, Virginia has unique ties to the underlying claims; and
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`SoundClear’s choice of forum is entitled to some deference. See LTD. v. Amazon.com, Inc., No.
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`1:19-CV-1570, 2020 WL 9536937, at *14 (E.D. Va. Apr. 9, 2020) (declining motion to transfer
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`because Amazon’s “forthcoming HQ2” was evidence of strong business ties that warrant deference
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`for the plaintiff’s choice of forum in a patent infringement action).
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`With respect to witness convenience, a factor “of considerable importance in determining
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`whether a transfer of venue is appropriate under Section 1404(a)[,]” Glob. Touch Sols., 109 F.
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`Supp. 3d at 899, courts consider: (i) what testimony is central to the claims, (ii) whether the
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`material witnesses are party or non-party witnesses, (iii) the availability of the compulsory process,
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`and (iv) the costs of obtaining witnesses. Id. “[P]arty witnesses are presumed to be more willing
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`to testify in a different forum . . . there is no such presumption as to non-party witnesses.” Bluestone
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`Innovations, LLC v. LG Elecs., Inc., 940 F. Supp. 2d 310, 317 (E.D. Va. 2013) (internal citations
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`omitted). “Curing an inability to secure a key witness weighs heavily in favor of transfer. Making
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`attendance more convenient or affordable for a willing witness still weighs in favor of transfer,
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`just not as heavily.” Id.
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`SoundClear and Amazon point to party witnesses located in California, Washington,
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`Massachusetts, and Virginia who are allegedly the “most knowledgeable” about the alleged
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`infringement activities. [Doc. No. 41] at 5–9; [Doc. No. 56] at 22–26. Amazon also asserts there
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`are non-party witnesses located in California who will provide key testimony regarding whether
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`the pinch-to-zoom patent has been infringed. [Doc. No. 41] at 9–10. The party witnesses are
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`presumed to be willing to testify, albeit at a higher cost to Amazon, but those costs are not
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`dispositive. As for the non-party witnesses, Amazon has not presented any evidence or information
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`regarding whether those witnesses are willing to travel or would otherwise be available given the
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`pendency of other litigation involving the same patents in this District. See SoundClear Techs.
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`LLC v. Google LLC, No. 3:24-cv-00540-MHL (E.D. Va.). Given these considerations, the witness
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`convenience factor slightly favors transfer.
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`As for the third factor, the convenience of the parties, courts assess where the parties reside,
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`where the parties are headquartered, and where the non-witness evidence is located. See Bluestone
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`Innovations, 940 F. Supp. 2d at 316; Glob. Touch Sols., 109 F. Supp. 3d at 903; DietGoal
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`Innovations LLC v. Wegmans Food Mkts., Inc., 993 F. Supp. 2d 594, 605 (E.D. Va. 2013). Here,
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`SoundClear resides in Virginia, and the parties are all headquartered in Virginia.5 With respect to
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`where the non-testimonial evidence is located, Amazon has not demonstrated that it will incur high
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`costs to access non-testimonial evidence located in California. In sum, the convenience of the
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`parties weighs against transfer.
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`With respect to the fourth factor, the interests of justice, the Court looks to “the public
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`interest factors aimed at systemic integrity and fairness.” Bluestone Innovations, 940 F. Supp. 2d
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`at 319. “The most prominent elements of systemic integrity are judicial economy and the
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`avoidance of inconsistent judgments.” Id. Similarly, “[f]airness is assessed by considering factors
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`such as docket congestion, interest in having local controversies decided at home, knowledge of
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`applicable law, unfairness with burdening forum citizens with jury duty, and interest in avoiding
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`unnecessary conflicts of law.” Id. Here, there exists a local interest in resolving these claims, which
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`involve the same three patents-in-suit against Google in a parallel proceeding in this District as
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`well as Amazon HQ2 employees.
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`5 For purposes of § 1400(b), “a domestic corporation ‘resides’ only in its State of incorporation.” TC Heartland LLC
`v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 258 (2017). Therefore, SoundClear’s residence is Virginia and
`Amazon’s is Delaware. See [Doc. No. 1] ¶¶ 2–13. Further, Amazon has one headquarters (i.e., HQ1) in Seattle,
`Washington and a second headquarters (i.e., HQ2) in Arlington, Virginia. Id. at ¶ 22. SoundClear, a non-practicing
`entity, has its headquarters at 1900 Reston Metro Plaza, Suite 600, Reston, Virginia 20190. Id. ¶ 2; [Doc. No. 56] at
`17.
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`For the above reasons, Amazon has not established that this case should be transferred to
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`the Northern District of California,6 and the Motion to Transfer is DENIED.
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`B. Motion to Dismiss
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`Amazon moves to dismiss SoundClear’s Complaint by arguing that (1) the patents are
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`invalid under 35 U.S.C. § 101, [Doc. No. 32] at 3; (2) SoundClear has not alleged a plausible
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`claim of patent infringement, id. at 25; and (3) if the Court does not dismiss the Complaint, it
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`should dismiss SoundClear’s request for enhanced damages as there is no evidence of willful
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`infringement, id. at 30. However, this matter is resolved in deciding only Amazon’s first
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`argument because the patents are ineligible for patent protection.
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`1. The 337 Patent
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`Amazon argues that the 337 patent is directed at an abstract idea because (i) it merely
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`collects information, analyzes information, and presents the results, [Doc. No. 32] at 8; (ii) it fails
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`to clarify how the device’s process operates, id. at 9, and (iii) there is a clear nontechnical analogue
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`because it merely tailors sound volume like humans do in a conversation, id. at 10. SoundClear
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`contends that the 337 patent is an improved voice-content control device, which is eligible for
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`protection under Alice’s first step, [Doc. No. 35] at 8, and recites unconventional features that pass
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`Alice’s second step, id. at 13–14.
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`Claim 4 of the 337 patent, which the Court finds is representative, 7 describes its voice-
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`content control method that functions as follows:
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`6 Amazon’s request to transfer to the Richmond Division is also denied because it has not explained why this case and
`SoundClear Technologies LLC v. Google LLC, No. 3:24-cv-00540-MHL (E.D. Va.), should proceed in the Richmond
`Division as opposed to this Division.
`7A claim is representative “if the patentee does not present any meaningful argument for the distinctive significance
`of any claim limitations not found in the representative claim or if the parties agree to treat a claim as representative.”
`Berkheimer, 881 F.3d at 1365. The challenger “bears the initial burden to make a prima facie showing that the group
`of claims are ‘substantially similar and linked to the same’ ineligible concept.” Mobile Acuity Ltd. v. Blippar Ltd., 110
`F.4th 1280, 1290 (Fed. Cir. 2024). The four other claims in the 337 patent all discuss the voice-content control device
`and the storage medium for the voice-content control program, [Doc. No. 1-2] at 18–19, and do not contain any claim
`limitations that are “distinctive[ly] significant.” See Berkheimer, 881 F.3d at 1365
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`[a] calculating a distance between a user and a voice-content control device;
`[b] acquiring a voice spoken by a user;
`[c] analyzing the acquired voice to classify the acquired voice as either one of a
`first voice and a second voice based on the distance between the user and the
`voice-content control device;
`[d] analyzing the acquired voice to execute processing intended by the user;
`[e] generating, based on content of the executed processing, output sentence that is
`text data for a voice to be output to the user; and
`[f] adjusting a sound volume of voice data obtained by converting the output
`sentence thereinto, wherein
`[g] at the generating,
`[g1] a first output sentence is generated as the output sentence when the acquired
`voice has been classified as the first voice, and
`[g2] a second output sentence is generated as the output sentence in which a part
`of information included in the first output sentence is omitted when the
`acquired voice has been classified as the second voice, wherein
`[h] at adjusting the sound volume of voice data, further adjusting the sound volume
`of voice data such that the sound volume of voice data obtained by converting
`the first output sentence thereinto differs from the sound volume of voice data
`obtained by converting the second output sentence thereinto.
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`[Doc. No. 1-2] at 19:22–20:9. In short, this patent describes a device that calculates the user’s
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`distance from the device, categorizes the voice based on the distance, and adjusts the output sound
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`volume based on its calculation. [Doc. No. 1-2] at 19:22–20:9.
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`This claim contains two aspects that are “well-settled indicators of abstractness.” See
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`Beteiro, LLC v. DraftKings Inc., 104 F. 4th 1350, 1355 (Fed. Cir. 2024) (discussing well-settled
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`features of abstractness include “recit[ing] generic steps . . . [and] results-focused functional
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`language containing no specificity about how the purported invention achieves those results”).
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`First, the patent only broadly discusses the generic steps at a high level of generality rather than
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`describing how these results are achieved. In Beteiro, claim language such as “detecting
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`information, generating and transmitting a notification based on the information, receiving a
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`message. . . and processing information” were only generic steps that did not confer patent
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`eligibility. Id. Similarly, the 337 patent describes “calculating . . . analyzing . . . generating . . .
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`[and] adjusting” without providing significant detail to explain how the process in the device is
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`executed. See Dialware Commc’ns, LLC v. Hasbro, Inc., No. cv-16-9012, 2017 WL 3453298, at
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`*2 (C.D. Cal. Mar. 22, 2017)(“At core, the patents attempt to state methods for toys to
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`communicate by sending, receiving, and responding to signals. The claims do not state a means by
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`which to communicate, but rather are directed at the abstract process of communication itself.”).
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`Second, claims with “result-focused functional language . . . . are almost always found to
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`be ineligible for patenting under Section 101.” Beteiro, 104 F. 4th at 1356; see Elec. Power Grp.
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`LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (“[T]he essentially result-focused,
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`functional character of claim language has been a frequent feature of claims held ineligible under
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`§ 101.”); Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
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`2017) (“The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’
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`‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these
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`results in a non-abstract way.”). The 337 patent explains that the device calculates the user’s
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`distance from the device, but it does not explain how the device completes this calculation. It also
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`explains that the device generates a response and adjusts the sound volume based on this
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`calculation; but it does not explain the process by which this is completed. Simply stated, the 337
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`patent seeks to patent an abstract idea because “it matters not by what process or machinery the
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`result is accomplished.” See O’Reilly, 56 U.S. at 62.
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`Nor is the patent not abstract, as SoundClear contends, because it involves an improved
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`“output content control device.” [Doc. No. 35] at 15. For an improvement to be eligible for patent
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`protection, those improvements must demonstrate a specific process for achieving the
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`improvement. Because the 337 patent merely expresses an idea for improvement, without
`
`expressing the process by which the improvement is executed, it is an abstract idea.
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`11
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`Turning to Alice’s second step, there is nothing “significantly more” that transforms the
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`337 patent to an inventive concept. The 337 patent is directed to the abstract idea of tailoring
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`information to a user based on their distance from the device. SoundClear alleges that the
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`unconventional features of the device transform it into something significantly more than an
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`abstract idea, [Doc. No. 35] at 13; however, it provides no unique steps of improving speech
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`detection devices and is nothing more than the abstract idea of moderating a sound response based
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`on the distance of the speaker.
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`For these reasons, the 337 patent is ineligible for patent protection under 35 U.S.C. § 101.
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`2. The 675 Patent
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`The 675 patent is ineligible for patent protection for essentially the same reasons that the
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`337 patent is ineligible.8 Claim 5 of the 675 patent, which the Court finds is representative,9
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`describes an output content control method with the following process:
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`[a] acquiring a voice spoken by a user;
`[b] calculating a distance between the user and an output-content control
`device by a proximity sensor to classify the voice into either a first voice
`or a second voice based on the calculated distance;
`[c] analyzing the acquired voice to detect intention information indicating
`what kind of information is wished to be acquired by the user;
`[d] acquiring notification information which includes content information
`as a content of information to be notified to the user based on the
`intention information; and
`[e] generating, when the voice is determined to be the first voice, a first
`output sentence in which at least one word selected among words
`included in the content information of the notification information is
`replaced with another word; and
`[f] generating, when the voice is [] determined to be the second voice, a
`second output sentence which includes all of the intention information
`and the content information.
`
`
`
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`8 The parties advance essentially the positions with respect to the 675 patent as the 337 patent. See [Doc. No. 32] at
`14–16; [Doc. No. 35] at 15–16.
`9 The other claims of the 675 patent all cover the output-content control device or the storage medium for the device.
`[Doc. No. 1-3] at 19–20.
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`[Doc. No. 1-3] at 22:3-28. Put simply, the 675 patent tailors the output response based on its
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`classification of the speaker’s voice and can omit information from the response if the speaker is
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`not a “predetermined” voice.
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`
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`Like the 337 patent, the 675 patent contains both results-focused language and generic
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`language that does not explain how the process is executed within the device. Reflecting its abstract
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`nature, the 675 patent can filter the output response in any number of ways to change the output
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`response based on the detected user voice and is devoid of any indication as to how the device
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`processes this step, or any other steps, in the process.
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`
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`This patent also seeks to cover a process of minimal tailoring based on a user’s information,
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`which is an abstract idea. In Intellectual Ventures I LLC v. Capitol One Bank, the Federal Circuit
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`considered a patent that “claims methods and systems for providing customized web page content
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`to the user as a function of user-specific information and the user's navigation history.” 792 F.3d
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`1363, 1365 (Fed. Cir. 2015). It held that this minimal tailoring based on information known about
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`the viewer is an abstract idea. Id. at 1369. Similarly, the 675 patent engages in this same tailoring
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`process based on whether it recognizes a user’s voice or not. This kind of tailoring is an abstract
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`idea. See generally Alstom, 830 F.3d at 1353-54 (collecting cases). SoundClear alleges that the
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`675 patent is not abstract because it is an improved output content control device. [Doc. No. 35]
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`at 15. But the 675 patent merely expresses an abstract idea for improvement without expressing
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`the process by which the improvement is executed.
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`
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`Moving to Alice’s step two, there are no additional features of this claim that transform it
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`into an inventive concept. See Alice, 573 U.S. at 215. There are no unconventional features or
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`unique steps that transform this abstract idea into something innovative or inventive.
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`For the above reasons, the 675 patent is invalid under 35 U.S.C. § 101.
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`C. The 487 Patent
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`Claim 11 of the 487 patent, which the Court finds representative,10 covers a method of
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`selecting items on a touchscreen:
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`[a] indicating objects on a display;
`[b] detecting user’s touches to a touch panel superposed on the display and
`acquiring positions of the user’s touches to the touch panel as touch
`positions;
`[c] deciding whether or not first and second touch positions are acquired by
`the detecting and acquiring step;
`[d] calculating a distance between the first and second touch positions;
`[e] deciding whether or not the calculated distance between the first and
`second touch positions decreases in accordance with the lapse of t