Case 3:24-cv-00540-MHL Document 45-1 Filed 01/16/25 Page 1 of 4 PageID# 345
`Case 3:24-cv-00540-MHL Document 45-1 Filed 01/16/25 Page 1 of 4 PagelD# 345
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:24-cv-01283-AJT-WBP Document 84 Filed 01/10/25 Page 1 of 3 PageID# 1133Case 3:24-cv-00540-MHL Document 45-1 Filed 01/16/25 Page 2 of 4 PageID# 346
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`SOUNDCLEAR TECHNOLOGIES, LLC, )
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`Plaintiff,
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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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`Plaintiff SoundClear Technologies, LLC (“SoundClear”) has filed a Motion to Alter
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`Judgment pursuant to Federal Rule of Civil Procedure 59(e), [Doc. No. 65] (the “Motion”), in
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`which it seeks to alter the Court’s November 8, 2024 Order, [Doc. No. 63], which found that the
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`three patents at issue in this action—patent nos. 11,069,337 (the “337 patent”), 11,244,675 (the
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`“675 patent”), and 9,223,487 (the “487 patent”)—were invalid for patent protection under 35
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`U.S.C. § 101 and for that reason, granted the Defendants’ Motion to Dismiss, [Doc. No. 31]. In
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`support of the Motion, SoundClear contends that the Court committed clear legal error in its Alice
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`Step Two analysis and also that newly discovered evidence creates a factual issue which precludes
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`finding the 337 and 675 patents invalid at this stage of litigation. For the reasons stated below, the
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`Motion is GRANTED IN PART and DENIED IN PART.
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`Pursuant to Federal Rule of Civil Procedure 59(e), a court may alter its judgment “to correct
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`a clear error of law or prevent manifest injustice.” Zinkland v. Brown, 478 F.3d 634, 637 (4th Cir.
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`2007) (quoting Pac. Ins. Co. v. Am. Nat'l Fire Ins. Co., 148 F.3d 396, 403 (4th Cir. 1998)). In
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`considering a motion under rule 59(e), a district court may consider new evidence if it was
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`previously unavailable at the time of judgment. Id.
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`Case 1:24-cv-01283-AJT-WBP Document 84 Filed 01/10/25 Page 2 of 3 PageID# 1134Case 3:24-cv-00540-MHL Document 45-1 Filed 01/16/25 Page 3 of 4 PageID# 347
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`With respect to the previously unavailable evidence concerning the 337 and 675 patents,
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`SoundClear points to the deposition testimony of Philip Hilmes, Amazon’s Director of Audio
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`Technology, who testified that prior to 2019, he was unaware of anyone on his team at Amazon
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`using voice calculation technology to adjust output volume; he was unaware of anyone using
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`distance calculation in connection with voice control devices because it “wasn’t conventional;”
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`and he was unaware of anyone in the industry using distance calculation in voice control devices
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`before 2019. [Doc. No. 70-2] at 11. These aspects of Mr. Hilmes’ testimony were not reflected in
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`the factual allegations of SoundClear’s Complaint, unavailable at the time the Court considered
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`Defendants’ Motion to Dismiss, and, therefore, the Court did not consider that testimony in its
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`prior Order.
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`At Alice Step Two, the question of “[w]hether something is well-understood, routine, and
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`conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer
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`v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018); see also Aatrix Software, Inc. v. Green Shades
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`Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018) (“Whether the claim elements or the claimed
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`combination are well-understood, routine, conventional is a question of fact. And in this case, that
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`question cannot be answered adversely to the patentee based on the sources properly considered
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`on a motion to dismiss, such as the complaint, the patent, and materials subject to judicial notice.”).
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`When considering Mr. Hilmes’ testimony and taking all factual inferences most favorably to
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`SoundClear, a plausible claim for patent validity exists as to the 337 and 675 patents.
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`However, Mr. Hilmes’ testimony does not concern the 447 patent, and the Court finds no
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`clear error of law in its prior analysis of the 447 patent. Therefore, there are no grounds to alter the
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`judgment as it relates to the 447 patent. For these reasons, the Court will alter its November 8,
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`2024 Order to allow SoundClear to file an amended complaint that reflects this newly discovered
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`Case 1:24-cv-01283-AJT-WBP Document 84 Filed 01/10/25 Page 3 of 3 PageID# 1135Case 3:24-cv-00540-MHL Document 45-1 Filed 01/16/25 Page 4 of 4 PageID# 348
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`evidence as to the 337 and 675 patents (Counts I and II), which will be permitted to proceed, while
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`retaining its previous ruling as to the 447 patent (Count III). For the above reasons, it is hereby
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`ORDERED that the Motion, [Doc. No. 65], shall be, and the same hereby is, GRANTED
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`IN PART and DENIED IN PART. The Motion is GRANTED to the extent that the Court’s
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`Order dated November 8, 2024, [Doc. No. 63], shall be, and the same hereby is, ALTERED and
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`AMENDED to allow the filing of an amended complaint within fourteen (14) days of the date of
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`this Order to reflect the newly discovered evidence as to Counts I and II, pertaining to the 337 and
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`675 patents, as to which the Defendants’ Motion to Dismiss pursuant to Rule 12(b)(6), [Doc. No.
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`31], is DENIED; and the Motion is otherwise DENIED as to Count III, the 447 patent, as to which
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`the Court’s Order dated November 8, 2024 shall be, and the same, hereby is, AFFIRMED.
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`The Clerk is directed to forward copies of this Order to all counsel of record and transmit
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`a certified copy of the docket sheet to the United States Court of Appeals for the Federal Circuit.
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`Alexandria, Virginia
`January 10, 2025
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