Preservation Technologies LLC v. MindGeek USA Inc. et al

Motion to Dismiss hearing set for 11/05/2018 at 8:30 a.m.

C.D. Cal.August 6, 2018

DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Alper T. Ertas (SBN 264120) VENABLE LLP 2049 Century Park East Suite 2300 Los Angeles, CA 90067 Telephone: (310) 229-9900 Facsimile: (310) 229-9901 atertas@venable.com Frank M. Gasparo (Admitted Pro Hac Vice) Todd M. Nosher (Admitted Pro Hac Vice) VENABLE LLP 1270 Avenue of the Americas Twenty-Fourth Floor New York, New York 10020 Telephone: (212) 307-5500 Facsimile: (212) 307-5598 fmgasparo@venable.com tmnosher@venable.com Attorneys for Defendants MindGeek USA Inc. et al. IN THE UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA PRESERVATION TECHNOLOGIES LLC, Plaintiff, v. MINDGEEK USA INC. ET AL. Defendants. Civil Action No. 2:17-cv-08906-DOC- JPR (Consolidated for Pre-trial Purposes) DEFENDANTS MINDGEEK USA INC. ET AL. NOTICE OF MOTION AND MOTION TO DISMISS PLAINTIFF PRESERVATION TECHNOLOGIES LLC’S COMPLAINTS PURSUANT TO FED. R. CIV. P. 12(b)(6) Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 1 of 55 Page ID #:134 DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 TABLE OF CONTENTS Page NOTICE OF MOTION.................................................................................................... i MEMORANDUM OF POINTS AND AUTHORITIES................................................ 1 FACTUAL BACKGROUND......................................................................................... 4 LEGAL AUTHORITY................................................................................................... 6 A. Fed. R. Civ. P. 12(b)(6) Motions To Dismiss............................................ 6 B. Patent Ineligibility Under 35 U.S.C. § 101................................................ 6 1. Alice Step One ................................................................................. 7 2. Alice Step Two................................................................................. 8 TIMING OF DEFENDANTS’ MOTION ...................................................................... 9 A. Invalidity Under § 101 Can Be Adjudicated At The Pleadings Stage....... 9 1. Claim Construction Is Not Required For A § 101 Determination 10 2. There Are No Legitimate Disputes of Fact To Delay A Finding of Invalidity ........................................................................................ 11 3. The Asserted Patents Share Significant—And In Some Cases Identical—Overlap In The Subject Matter Claimed...................... 12 ARGUMENT................................................................................................................ 13 A. The Asserted Patents Are Invalid Under 35 U.S.C. § 101....................... 13 1. Group 1: Method and Apparatus for Cataloguing Multimedia Data................................................................................................ 13 2. Group 2: Digital Library System .................................................. 25 3. Group 3: Surveying System and Method et al............................... 32 4. Group 4: Method and Apparatus for Management of Multimedia Assets.............................................................................................. 36 B. Plaintiff’s Claims of Indirect and Willful Infringement Against MG Content Are Not Adequately Plead.......................................................... 43 CONCLUSION............................................................................................................. 45 Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 2 of 55 Page ID #:135 i DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 TABLE OF AUTHORITIES Page(s) Cases Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) ...................................................................10, 11, 12 Activision Publ’g, Inc. v. xTV Networks Ltd., No. 16-737, 2016 U.S. Dist. LEXIS 104308 (C.D. Cal. July 25, 2016) .......8, 17, 19 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)......................................................................................passim Ashcroft v. Iqbal, 556 U.S. 662 (2009)................................................................................................... 6 Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012) ............................................................................... 10 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007)................................................................................................... 6 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) .....................................................................9, 10, 11 Bilski v. Kappos, 130 S. Ct. 3218 (2010)............................................................................................. 13 Callwave Communs., LLC v. AT&T Mobility, LLC, 207 F. Supp. 3d 405 (D. Del. 2016) ........................................................................ 19 Chavez v. United States, 683 F.3d 1102 (9th Cir. 2012) ............................................................................. 7, 12 CliniComp Int’l, Inc. v. Cerner Corp., 2018 U.S. Dist. LEXIS 83560 (S.D. Cal. May 16, 2018) ....................................... 45 CMG Fin. Servs. v. Pac. Tr. Bank, F.S.B., 50 F. Supp. 3d 1306 (C.D. Cal. 2014)..................................................................... 11 Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 3 of 55 Page ID #:136 ii DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Coffelt v. NVIDIA Corp., No. 2016 U.S. Dist. LEXIS 185157 (C.D. Cal. June 21, 2016)................................ 2 Collarity, Inc. v. Google Inc., 2015 U.S. Dist. LEXIS 159031 (D. Del. 2015)....................................................... 17 Commer. Copy Innovations, Inc. v. Ricoh Elecs., Inc., 2017 U.S. Dist. LEXIS 219052 (C.D. Cal. Oct. 16, 2017) ..................................... 46 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) ........................................................................... 8, 11 Deckers Outdoor Corp. v. J.C. Penney Co., 45 F. Supp. 3d 1181, 1187 (C.D. Cal. 2014)........................................................... 45 Eclipse IP LLC v. McKinley Equip. Corp., No. 14-742, 2014 U.S. Dist. LEXIS 125529 (C.D. Cal. Sep. 4, 2014)................... 10 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) ........................................................................... 8, 18 EveryMD.com LLC v. Facebook Inc., No. 16-6473, 2017 U.S. Dist. LEXIS 178835 (C.D. Cal. May 10, 2017) ........................................................................................................................ 10 Hewlett Packard Co. v. ServiceNow, Inc., No. 14-570, 2015 U.S. Dist. LEXIS 29384 (N.D. Cal. Mar. 10, 2015).................. 21 Jedi Techs., Inc. v. Spark Networks, Inc., 2017 U.S. Dist. LEXIS 122313 (D. Del. Aug. 3, 2017).......................................... 40 In re Longi, 759 F.2d 887 (Fed. Cir. 1985) ................................................................................... 3 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)..................................................................................................... 7 Move, Inc. v. Real Estate All. Ltd., 221 F. Supp. 3d 1149 (C.D. Cal. 2016).........................................................7, 17, 26 Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 4 of 55 Page ID #:137 iii DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Papst Licensing GMBH & Co. v. Xilinx Inc., 193 F. Supp. 3d 1069 (N.D. Cal. 2016)..................................................................... 8 Prod. Ass’n Techs. LLC v. Clique Media Grp., No. 17-5463, 2017 U.S. Dist. LEXIS 217133 (C.D. Cal. Oct. 12 2017) .............. 4, 8 Proxyconn Inc. v. Microsoft Corp., 2012 U.S. Dist. LEXIS 70614 (C.D. Cal. May 16, 2012)....................................... 46 Puma SE v. Forever 21, Inc., 2017 U.S. Dist. LEXIS 211140 (C.D. Cal. June 29, 2017)..................................... 45 RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322 (Fed. Cir. 2017) ................................................................................. 9 Reese v. Sprint Nextel Corp., 2018 U.S. Dist. LEXIS 60072 (C.D. Cal. Apr. 9, 2018)..................................... 7, 10 SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016 (Fed. Cir. 2018) ............................................................................... 10 Secure Mail Sols. LLC v. Universal Wilde, Inc., 169 F. Supp. 3d 1039 (C.D. Cal. 2016)..................................................................... 3 Shortridge v. Found. Constr. Payroll Serv., LLC, 655 F. App’x 848 (Fed. Cir. 2016) ............................................................................ 8 Smarten LLC v. Samsung Elecs. Am., Inc., No. 17-1381, 2018 U.S. Dist. LEXIS 44054 (E.D. Va. Mar. 16, 2018) ............. 4, 13 TS Patents LLC v. Yahoo, 279 F. Supp. 3d 968 (N.D. Cal. 2017)...............................................................18, 19 Uniloc USA, Inc. v. Apple Inc., No. 18-358, 2018 U.S. Dist. LEXIS 84239 (N.D. Cal. May 18, 2018) ............10, 19 Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) ............................................................................... 21 Versata Software v. NetBrain Techs, 2015 U.S. Dist. LEXIS 132000 (D. Del. Sep. 30, 2015)...................................40, 42 Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 5 of 55 Page ID #:138 iv DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d 1376 (Fed. Cir. 2018) ............................................................................... 10 Wolf v. Capstone Photography, Inc., No. 13-9573, 2014 U.S. Dist. LEXIS 156527 (C.D. Cal. Oct. 28, 2014) ........................................................................................................................ 11 Zkey Invs., LLC v. Facebook Inc., 225 F. Supp. 3d 1147 (C.D. Cal. 2016)..................................................................... 9 Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 6 of 55 Page ID #:139 i DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 NOTICE OF MOTION TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that on November 5, 2018 at 8:30 a.m., or as soon thereafter as this matter may be heard, Defendants MindGeek USA Inc., MindGeek S.ar.l., MG Content RK Ltd. and MG Content DP Ltd., (collectively, “Defendants”) will and hereby respectfully move to dismiss all infringement claims that Plaintiff Preservation Technologies LLC (“Plaintiff”) asserts in its Complaints: Dkt. No. 1 in this action (the “First Complaint”) and Dkt. No. 1 in Civil Action 18-3058 (the “Second Complaint”). All eleven Asserted Patents are invalid under 35 U.S.C. § 101, and Plaintiff’s Second Complaint fails to state a claim for indirect or willful infringement. Therefore, Plaintiff’s Complaints fail to state a plausible claim for relief under Federal Rule of Civil Procedure 12(b)(6). See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). This Motion will be heard in the Courtroom of Judge David O. Carter for the United States District Court in the Central District of California. The Court is located at the Ronald Reagan Federal Building and United States Courthouse, Courtroom 9D, 411 West Fourth Street, Santa Ana, CA 92701-4516. This Motion is based on this Notice of Motion, the Memorandum of Points and Authorities set forth below, the pleadings on file herein and upon such other matters as may be presented to the Court at the time of the hearing. This Motion is made following the conference of counsel pursuant to L.R. 7-3, which took place on at least the following dates: March 22, 2018; April 4, 2018; May 8, 2018; May 17, 2018; June 29, 2018, July 3, 2018 and August 2, 2018. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 7 of 55 Page ID #:140 ii DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 /s/ Alper T. Ertas Alper T. Ertas VENABLE LLP 2049 Century Park East Suite 2300 Los Angeles, CA 90067 Telephone: (310) 229-9900 Facsimile: (310) 229-9901 atertas@venable.com Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 8 of 55 Page ID #:141 -1- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 MEMORANDUM OF POINTS AND AUTHORITIES Defendants MindGeek USA Inc., MindGeek S.ar.l., MG Content RK Ltd. and MG Content DP Ltd., (collectively, “Defendants”), by and through their undersigned counsel, respectfully move to dismiss Plaintiff Preservation Technologies LLC’s (“Plaintiff” or “Preservation Technologies”) Complaints1 under Fed. R. Civ. P. 12(b)(6) because Plaintiff’s eleven Asserted Patents—all of which have expired—are invalid under 35 U.S.C. § 101. MG Content RK Ltd. and MG Content DP Ltd. (collectively, “MG Content”) separately move to dismiss all claims of indirect and willful infringement based on Plaintiff’s failure to plead that MG Content had requisite knowledge of the Asserted Patents. The claims of the Asserted Patents do not recite any patentable subject matter— only the abstract concepts embodied by the very titles of the patents themselves: • Cataloging multimedia data (U.S. Patent Nos. 5,832,495; 6,212,527; and 6,549,911) all titled “Method and Apparatus for Cataloguing Multimedia Data” (collectively, “Group 1”). • Digital library system (U.S. Patent Nos. 5,832,499; 6,092,080; and 6,353,831) all titled “Digital Library System” (“Group 2”). • Cataloging and surveying data (U.S. Patent Nos. 6,581,071 and 6,574,638) respectively titled “Surveying System and Method” and “Method and Apparatus for Cataloguing Multimedia Data Using Surveying Data” (“Group 3”). 1 There are two operative Complaints. The first, filed December 11, 2017 in this action, names MindGeek USA Inc. and MindGeek S.ar.l. as Defendants, (the “First Complaint”). The second, filed April 11, 2018 in Civil Action 18-3058 (now consolidated with this case for pre-trial purposes), names MG Content RK Ltd. and MG Content DP Ltd. as defendants, (the “Second Complaint”). These pleadings are substantively similar, but for additional language in the latter suggesting, among other things, that the Asserted Patents are directed to “more than the mere performance of well-understood, conventional activities known in the industry.” Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 9 of 55 Page ID #:142 -2- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 • Management of multimedia assets (U.S. Patent Nos. 5,813,014; 6,199,060; and 6,477,537) all titled “Method and Apparatus for Management of Multimedia Assets” (“Group 4”). Indeed the claims of the Asserted Patents—which share significant overlap—are directed to nothing more than general data management, namely cataloging, organizing, storing, surveying and distributing data. But these conventional concepts have long been performed by humans using a pen and paper. The Applicant himself confirmed this point by stating that “[a]n analogy can be drawn between the multimedia catalogue of the invention and a card catalog in a library.” ‘495 Patent at 3:60-61 (Summary of Invention); ‘527 and ‘911 Patents at 3:50-52. And the limitations of the claims—alone or in combination—simply tie the abstract concepts to a general computing environment. This was made clear during prosecution of one of the earliest-filed patents.2 Specifically, the Examiner rejected a majority of proposed claims in the application leading to the ‘495 Patent because “[they] describe[d] abstract matter, as opposed to the computerized subsystem described at points in the Specification and in claims (13-24, 27-29)” and were thus “directed to non- statutory subject matter.” Ex. 1 (emphasis added). To overcome this pre-Alice rejection, the Applicant responded by adding generic computer technology: Applicant has amended [independent] claims 1, 25 and 30 to claim a method in a computer system. As such, Applicant believes that claims 1-12, 25-25 and 30-34 claim statutory subject matter and are allowable. Ex. 2 (emphasis added). The Applicant made no other argument to refute this § 101 rejection. But post-Alice, abstract ideas cannot become patentable by simply applying those ideas to a general purpose computer. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 2 This Court can take judicial notice of the file histories of the Asserted Patents under Fed. R. Evid. 201(b)(2) as they are public records that memorialize the relevant proceedings before the U.S. Patent and Trademark Office (“PTO”). Coffelt v. NVIDIA Corp., No. 2016 U.S. Dist. LEXIS 185157, at *14, n.3 (C.D. Cal. June 21, 2016). Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 10 of 55 Page ID #:143 -3- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 S. Ct. 2347, 2359 (2014). The forgoing amendment—and Applicant’s similar attempt to tie the remaining patents to a generic computing environment—are fatal to the Asserted Patents under current law. Id. Despite the number of Asserted Patents at issue, a § 101 determination will not be as difficult as Plaintiff may claim.3 Indeed, the patent claims are highly repetitive— in many instances repeating limitations verbatim or slight variations thereof. Moreover, the Examiner issued obviousness-type double patenting4 rejections in applications leading to five Asserted Patents as summarized below. Ex. 3. Subject Patent5 Basis For Double Patenting Rejection Applicant’s Response To Double Patenting Rejection ‘911 Patent All claims of the ‘527 Patent No rebuttal, terminal disclaimer filed ‘638 Patent All claims of the ‘527 Patent No rebuttal, terminal disclaimer filed ‘071 Patent All claims of the ‘495 and ‘014 Patents No rebuttal, terminal disclaimer filed ‘499 Patent Claims 17-18 in Application leading to ‘014 Patent No rebuttal, terminal disclaimer filed ‘527 Patent All claims of the ‘495 Patent Rebutted, overcome via amendment The Examiner made clear during prosecution of the above patents that “[a]lthough the conflicting claims are not identical, they are not patentably distinct from each other 3 During the parties’ meet and confer discussions, Plaintiff argued that Defendants’ motion would be unwieldy. That is not the case given the significant overlap of the subject matter claimed and the numerous terminal disclaimers filed. Under Plaintiff’s position, a patentee could defeat a § 101 challenge by asserting as many patents and claims as possible. But that is not the law. See, e.g., Secure Mail Sols. LLC v. Universal Wilde, Inc., 169 F. Supp. 3d 1039, 1046 (C.D. Cal. 2016) (“it is well-established that courts do not need to assess every claim in conducting a § 101 analysis.”). 4 Obviousness-type double patenting prohibits “the issuance of the claims in a second patent not patentably distinct from the claims of the first patent.” In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985). However, a patent may still issue in the face of a double patenting rejection if the applicant files a terminal disclaimer under 35 U.S.C. § 253, so that the second patent will expire contemporaneously with the first. Id at 894. 5 The rejections were made on all claims of the subject patents with the exception of the ‘499 Patent (claims 1, 3-7 only) and the ‘527 Patent (claims 25-26, 30-34 only). Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 11 of 55 Page ID #:144 -4- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 because they are substantially similar in scope and they use the same limitations, using varying terminology.” Id. (emphasis added). The Applicant did not refute the double patenting rejections in four of the five patent applications—instead filing terminal disclaimers to overcome the same. Ex. 4. The intrinsic record therefore finds that the ‘911, ‘527 and ‘638 Patents are not patentably distinct from one another (see overlapping double patenting rejections in shaded first two rows of the table above)— and the ‘499, ‘014 and ‘071 Patents are likewise not patentably distinct. These parallels will greatly simplify the Court’s § 101 analysis. Smarten LLC v. Samsung Elecs. Am., Inc., No. 17-1381, 2018 U.S. Dist. LEXIS 44054, at *17 (E.D. Va. Mar. 16, 2018). The Asserted Patents are devoid of any inventive concept to sustain patentability—and do not expressly claim an improvement on computer functionality or any other existing technological processes. Alice, 134 S. Ct. at 2359. The sheer volume and verbosity of the patent claims do not change this fact.6 At bottom, the Asserted Patents are textbook examples of what the Supreme Court and lower courts have described as being undeserving of patent protection under § 101. FACTUAL BACKGROUND Plaintiff brings this action on 11 patents originally granted to named inventor Samuel Gustman—and assigned to the Survivors of the Shoah Visual History Foundation (“Shoah Foundation”), a non-profit organization dedicated to recording testimony of Holocaust survivors, now affiliated with the University of Southern California (“USC”). Plaintiff’s Complaints discuss the Shoah Foundation at length and the noble work it has done over the past few decades. However, despite its name, Plaintiff appears to have nothing to do with the work of the Shoah Foundation. 6 Prod. Ass’n Techs. LLC v. Clique Media Grp., No. 17-5463, 2017 U.S. Dist. LEXIS 217133, at *19 (C.D. Cal. Oct. 12 2017) (“While [the asserted claim is] certainly verbose, a conventional step is still a conventional step.”). Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 12 of 55 Page ID #:145 -5- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Plaintiff alleges to have “all substantial rights and interest to the Asserted Patents for this lawsuit, including all rights to recover for all past and future infringements thereof.” Dkt. No. 1, ¶ 28 in 18-3058 (emphasis added). But there is no assignment of record at the PTO evidencing Plaintiff’s purported rights and interest.7 Based on other public records and news sources it appears that certain rights to the Asserted Patents may have been auctioned off by USC through Ocean Tomo to a private equity firm named Altitude Capital Partners. Those rights then ostensibly passed to the related entity Digital Innovations, LLC, before resting with Plaintiff who now monetizes the Asserted Patents through serial litigation. Indeed, since its formation in 2011, Plaintiff has filed over 20 lawsuits against 30+ entities, a vast majority resulting in quick settlements. None of the prior litigations reached a decision on the merits. Nor have any inter partes review petitions been filed on the Asserted Patents. One prior defendant, NFL Enterprises LLC, filed a motion to dismiss challenging patent eligibility of nine Asserted Patents under 35 U.S.C. § 101. Dkt. No. 11 in 14-cv-1295 (D. Del.). But that motion was never fully briefed. Instead, the court denied the motion three weeks after its filing “[in] response to an emergency email filed by the parties.” Dkt. No. 17 in 14- cv-1295 (D. Del.). The docket does not reveal the contents of that joint email or otherwise disclose the reasons for denial of the motion without full briefing. Turning to the present case, this is the second time Plaintiff has sued a MindGeek entity on the Asserted Patents. Nearly four years ago, Plaintiff brought suit against MindGeek USA, Inc. (“MindGeek USA”) in the District of Delaware alleging infringement of the same 11 patents. Dkt. No. 1 in 14-cv-1292 (D. Del.) (“the 2014 Action”). Plaintiff voluntarily dismissed the 2014 Action without prejudice within months of filing—and before MindGeek USA had a chance to file a § 101 motion. 7 Defendants reserve all rights (which may not be waived) to challenge standing deficiencies upon discovery of any applicable assignments or other contracts conferring rights to the Asserted Patents including relevant litigation funding agreements. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 13 of 55 Page ID #:146 -6- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Plaintiff gave no reasons for its sudden dismissal. MindGeek USA thus presumed that dismissal was a direct result of the defenses it articulated to Plaintiff and its refusal to succumb to Plaintiff’s early settlement demands. Plaintiff remained silent for over three years until the filing of this new litigation reasserting its prior infringement claims.8 LEGAL AUTHORITY A. Fed. R. Civ. P. 12(b)(6) Motions To Dismiss To survive a motion to dismiss, a complaint must state a claim that is plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). A claim is facially plausible when “the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. In evaluating the sufficiency of a complaint, factual allegations must be enough to raise a right to relief above the speculative level. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). “A pleading that offers ‘labels and conclusions’ or ‘a formulaic recitation of the elements of a cause of action will not do.’” Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 555). Indeed, courts shall discount conclusory statements—which are not entitled to the presumption of truth—before determining whether a claim is plausible. Chavez v. United States, 683 F.3d 1102, 1108 (9th Cir. 2012). B. Patent Ineligibility Under 35 U.S.C. § 101 The Patent Act states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. That section, however, “contains an important implicit exception” for “laws of nature, natural phenomena, and abstract ideas,” which are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 8 Plaintiff’s dismissal, followed by a 3+ year delay in reasserting its infringement claims on to the same patents raises concerns of equitable estoppel. This is particularly true when Plaintiff’s delay extended well beyond expiry of most of the Asserted Patents. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 14 of 55 Page ID #:147 -7- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 566 U.S. 66, 70 (2012) (quotations and citations omitted). Abstract ideas—without more—are not patentable because “they are the basic tools of scientific and technological work,” which are “free to all men and reserved exclusively to none.” Id. (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). The Supreme Court has established a two-step test to determine patent eligibility under 35 U.S.C. § 101. Alice 134 S. Ct. at 2355; Mayo, 566 U.S. at 66. 1. Alice Step One First, the court must determine whether the claims at issue are directed to one of the foregoing patent-ineligible concepts—including abstract ideas. Alice, 134 S. Ct. at 2355. The abstract idea exclusion embodies “the longstanding rule that an idea of itself is not patentable.” Alice, 134 S. Ct. at 2355 (quotations and citations omitted). Courts “in this district have held that the court should first identify the purpose of the claim— in other words, what the claimed invention is trying to achieve—and ask whether that purpose is abstract.” Reese v. Sprint Nextel Corp., 2018 U.S. Dist. LEXIS 60072, at *12 (C.D. Cal. Apr. 9, 2018) (quotations and citations omitted). A court should determine this purpose “at a reasonably high level of generality.” Move, Inc. v. Real Estate All. Ltd., 221 F. Supp. 3d 1149, 1161 (C.D. Cal. 2016) (citation omitted). When reviewing computer-implemented claims, courts have taken “varied approaches” to determine whether claims are directed to an abstract idea. Papst Licensing GMBH & Co. v. Xilinx Inc., 193 F. Supp. 3d 1069, 1081 (N.D. Cal. 2016). One key question is whether the subject claims improve computer functionality, or simply use generic computers to carry out the abstract ideas. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Another consideration is whether the claims are “directed to a mental process or a process that could be done with pen and paper.” Papst Licensing, 193 F. Supp. 3d at 1082. The general concepts of organizing, storing, and surveying data have long been viewed as abstract. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 15 of 55 Page ID #:148 -8- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). Cataloging data is equally abstract. Shortridge v. Found. Constr. Payroll Serv., LLC, 655 F. App’x 848, 853 (Fed. Cir. 2016) (affirming judgment on the pleadings for patent claims of cataloging labor data). Although certain specialized databases have been found patent eligible under § 101, the underlying patent claims in those cases are directed to specific “improvements in computer-related technology…such as a chip architecture, an LED display, and the like.” Enfish, 822 F.3d at 1335. Indeed, courts regularly distinguish Enfish and following decisions from cases like this where the patents do not claim specific improvements in computer functionality. See, e.g., Prod. Ass’n Techs., 2017 U.S. Dist. LEXIS 217133, at *17-18; Activision Publ’g, Inc. v. xTV Networks Ltd., No. 16-737, 2016 U.S. Dist. LEXIS 104308, at *23-24 (C.D. Cal. July 25, 2016). 2. Alice Step Two After determining that claims are directed to an abstract idea, the court must then “consider the elements of each claim both individually and ‘as an ordered combination’ to decide whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 66). The addition of well-understood, routine or conventional steps does not transform an abstract idea into a patentable concept. Id.; Zkey Invs., LLC v. Facebook Inc., 225 F. Supp. 3d 1147, 1156 (C.D. Cal. 2016). Addressing this issue, the Federal Circuit recently clarified that whether something is well-understood, routine or conventional to a skilled artisan at the time of the purported invention is an issue of fact. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) reh’g and en banc petition denied, 890 F.3d 1369 (Fed. Cir. 2018). However, Berkheimer makes clear that: [N]ot every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry. Whether a claim recites patent eligible subject matter is a question of law which may contain disputes over underlying facts. Patent eligibility has in many cases been Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 16 of 55 Page ID #:149 -9- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 resolved on motions to dismiss or summary judgment. Nothing in this decision should be viewed as casting doubt on the propriety of those cases. 881 F.3d at 1368 (internal quotations and citations omitted). During Alice step two, the court must “search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Alice, 134 S. Ct. at 2355 (citation and quotation omitted). While a court may look to the specification during its analysis, it is not enough for a patentee to disclose an inventive concept in the specification alone. Simply put, “[t]o save a patent at step two, an inventive concept must be evident in the claims.”9 RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017). TIMING OF DEFENDANTS’ MOTION A. Invalidity Under § 101 Can Be Adjudicated At The Pleadings Stage Patent eligibility under § 101 is a question of law, which “may contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (emphasis added); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1129-30 (Fed. Cir. 2018). But “[l]ike other legal questions based on underlying facts, this question may be, and frequently has been, resolved on a Rule 12(b)(6) or (c) motion where the undisputed facts, considered under the standards required by that Rule, require a holding of ineligibility under the substantive standards of law.”10 SAP Am., Inc. v. InvestPic, LLC, 9 A patentee may not circumvent § 101 by simply limiting the use of an abstract idea to a particular technological environment. Alice, 134 S. Ct. at 2357. Here, Plaintiff’s attempt to limit its claims to multimedia data does not salvage patentability. Instead, it is a textbook example of a prohibited field of use limitation. 10 Nothing in Berkheimer precludes dismissal of this action at the pleadings stage. Indeed, courts throughout the country have continued to dismiss or order judgment on the pleadings in cases involving § 101 ineligible patents post-Berkheimer. See, e.g., Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d 1376, 1379 (Fed. Cir. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 17 of 55 Page ID #:150 -10- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 890 F.3d 1016, 1020 (Fed. Cir. 2018). Many § 101 analyses contain no factual dispute over the conventional nature of the subject claims. Berkheimer, 881 F.3d. at 1368. This is particularly true in cases like this where the patents cover relatively nontechnical concepts. EveryMD.com LLC v. Facebook Inc., No. 16-6473, 2017 U.S. Dist. LEXIS 178835, at *12 (C.D. Cal. May 10, 2017). The judicial efficiencies of addressing § 101 eligibility at the pleadings stage are well documented. See, e.g., Eclipse IP LLC v. McKinley Equip. Corp., No. 14-742, 2014 U.S. Dist. LEXIS 125529, at *16 (C.D. Cal. Sep. 4, 2014). These efficiencies will benefit both the Court and parties alike. 1. Claim Construction Is Not Required For A § 101 Determination Section 101 challenges may be decided on the pleadings without the need of claim construction. Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273 (Fed. Cir. 2012); Reese, 2018 U.S. Dist. LEXIS 60072, at *9. Again, this is particularly true for patents covering nontechnical concepts where the “basic character of the claimed subject matter is readily ascertainable from the face of the patent.” Wolf v. Capstone Photography, Inc., No. 13-9573, 2014 U.S. Dist. LEXIS 156527, at *17 (C.D. Cal. Oct. 28, 2014). The basic character of what is claimed in the Asserted Patents is not only apparent from the face of the patents—but is readily understood from the patent titles themselves. Accordingly, the Court need not delay this motion to conduct a full Markman proceeding. Nonetheless, should Plaintiff propose specific constructions it deems critical to this motion, and the Court agrees that at least some claim construction is necessary, the Court may simply adopt Plaintiff’s construction or the construction most favorable to Plaintiff for the limited purpose of 2018) (affirming Rule 12(b)(6) dismissal on § 101 grounds); Uniloc USA, Inc. v. Apple Inc., No. 18-358, 2018 U.S. Dist. LEXIS 84239, at *25 (N.D. Cal. May 18, 2018). Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 18 of 55 Page ID #:151 -11- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 this motion. Content Extraction, 776 F.3d at 1349; Aatrix, 882 F.3d at 1125; CMG Fin. Servs. v. Pac. Tr. Bank, F.S.B., 50 F. Supp. 3d 1306, 1317 n.3 (C.D. Cal. 2014).11 2. There Are No Legitimate Disputes of Fact To Delay A Finding of Invalidity Whether something is well-understood, routine or conventional to one of skill in the art at the time of the purported invention can involve issues of underlying fact. Berkheimer, 881 F.3d at 1365. That is not the case here. There is no reasonable dispute that Plaintiff’s claim elements are well-understood, routine and conventional. The elements—alone and in combination—relate to cataloging, organizing, storing, surveying and retrieving data. These are the epitome of conventional tasks. Plaintiff’s Complaints confirm this point and fail to allege any colorable question of patentability. The First Complaint does not expressly allege that the Asserted Patents are directed to improvements in computer functionality. And the Second Complaint, filed two months after Berkheimer and Aatrix, offers only conclusory allegations of purported improvements—allegations that can and should be discounted. Chavez, 683 F.3d at 1108. Specifically, the Second Complaint states: The claims of the patents in suit are directed to the real world problems of video archive systems and embody specific technological improvements to the then existing technology. Gustman created a digital library system that incorporated a unique distributed modular infrastructure and advanced techniques for indexing, accessing, distributing, and surveying multimedia data and involve more than the mere performance of well-understood, conventional activities known in the industry. Dkt. No. 1 at ¶ 25. Tellingly, this pleading provides no detail about the “specific technological improvements,” or how the claimed digital library system “created a unique distributed modular infrastructure and advanced techniques for indexing, 11 Defendants reserve all rights to address any claim construction positions set forth in Plaintiff’s opposition. Notably, Plaintiff did not raise any issue of claim construction during the Parties’ meet and confer discussions for this motion. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 19 of 55 Page ID #:152 -12- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 accessing, distributing, and surveying multimedia data.” Id. This is not surprising because the claimed infrastructure was not unique, and the claimed data management techniques were not advanced. The Applicant simply took well-known data management concepts and applied them to a computer. Although the Federal Circuit recently found that certain pleadings may raise a factual dispute relevant to Alice Step 2 (Aatrix, 882 F.3d at 1126), no colorable dispute exists here. Plaintiff’s Complaints fall well short of the detailed allegations set forth in the operative pleading in Aatrix. Id. at 1127. Indeed, allowing patentees to manufacture disputes of fact using such bare allegations would eviscerate pretrial § 101 challenges altogether. 3. The Asserted Patents Share Significant—And In Some Cases Identical—Overlap In The Subject Matter Claimed During prosecution, the Examiner issued obviousness-type double patenting rejections on applications leading to five of the Asserted Patents. The Applicant did not refute the double patenting rejections on four patents (i.e., the ‘911, 499, 638 and ‘071 Patents)—instead filing terminal disclaimers for each—and keeping the patentably indistinct claim language as-is. Thus, the intrinsic record finds that the ‘911, ‘527 and ‘638 Patents are not patentably distinct from one another—and the ‘495, ‘014 and ‘071 Patents are likewise not patentably distinct. See Table at 3 supra. As a corollary, the ‘911, ‘527 and ‘638 Patents should fall together on § 101 grounds—as should the ‘495, ‘014 and ‘071 Patents. The recent Smarten decision is instructive on this point: [T]he Alice analysis applies similarly to all of the asserted claim. . . [T]he patent prosecution history confirms this conclusion. All of the claims in the ‘657 patent and the ‘102 patent were rejected for being “not patentably distinct from” the claims of the ‘640 patent, leading the patentee to file a terminal disclaimer with respect to each patent rather than contest the rejection. Although [Plaintiff] argues without elaboration that there is no ‘relationship between obviousness type double patenting and patent eligible subject matter,’ the conclusion by both [plaintiff] and the Patent Office that its later-filed patents are “not patentably distinct from” the claims of the ‘640 patent only reinforces Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 20 of 55 Page ID #:153 -13- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 the Court’s conclusion that Claim 1 of the ‘640 patent is representative of plaintiff’s invention. Smarten, 2018 U.S. Dist. LEXIS 44054, at *17. Similar overlap exists here, thus simplifying Defendants’ motion at the pleadings stage. ARGUMENT A. The Asserted Patents Are Invalid Under 35 U.S.C. § 101 All claims of the Asserted Patents are directed to abstract ideas lacking any elements that transform the nature of those claims into a patent-eligible subject matter.12 The Asserted Patents are individually addressed by group below. 1. Group 1: Method and Apparatus for Cataloguing Multimedia Data Group 1 consists of the ‘495, ‘527 and ‘911 Patents, all entitled Method and Apparatus for Cataloguing Multimedia Data. All three patents expired over two years ago. The patents in this group are of the same family: the ‘911 Patent13 is a continuation of the ‘527 Patent, which in turn is a continuation of the ‘495 Patent. These patents share a common specification, and as discussed above, have significant if not identical overlap in the subject matter claimed (as evidenced by the Applicant’s acquiesce in filing a terminal disclaimer on the ‘911 Patent). 12 To determine whether a given claim satisfies § 101, courts may consider the machine or transformation test. Bilski v. Kappos, 130 S. Ct. 3218, at 3227 (2010). This test determines whether the claim “(1) is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Id. at 3225; Power Analytics Corp. v. Operation Tech., Inc., No. 16-1955, 2017 U.S. Dist. LEXIS 216875, at *16 (C.D. Cal. July 13, 2017). Plaintiff’s Patents fail both prongs. The claims admittedly can be carried out by any general computer and do not transform anything into another state. They simply manipulate data. 13 The Applicant failed to identify the grandparent ‘495 Patent and its priority date in either the ‘911 Patent or its underling application. 35 U.S.C. § 120; 37 CFR §1.78 (d)(2). This may adversely affect the validity and/or enforceability of the ‘911 Patent. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 21 of 55 Page ID #:154 -14- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 In determining whether a patent is directed to an abstract idea, courts in this district look to the purpose of the claim. The patents’ title, specification and claims here make this task quite simple. Each of the patents state that “[t]he invention catalogues data such as multimedia data.” See ‘495, ‘527 and ‘911 Patent Abstracts. This purpose is repeated verbatim in the shared “Summary of Invention.”‘495 Patent at 3:48. And the patent claims are directed to cataloging data and quality control of data collection. The patents of Group 1 are thus directed to the abstract concept of cataloging data and quality control of data collection. Group 1’s claim elements, viewed individually or in combination, do not transform these abstract ideas into patent eligible subject matter. This is perhaps best explained by the Applicant himself who equated the “invention[s]” of Group 1 to a traditional library card catalog: An analogy can be drawn between the multimedia catalogue of the invention and a card catalogue in a library. The card catalogue contains a single catalogue element (i.e., a card). The card catalogue is comprised of a plurality of catalogue element instances (i.e., a plurality of cards). Each card is associated with a book or some other material contained in the library. A card contains information or attributes (e.g., author, title, numbering system). The attributes are used to build an indexing system (e.g., numbering system) that can be used to facilitate a search through the catalogue. The card contains information or attributes that can be used to satisfy a query operation (e.g., select a card from the card catalogue) performed on the card catalogue. ‘495 Patent at 3:63-4:6; ‘527 Patent at 3:62-4:8; ‘911 Patent at 3:62-4:8. Through this analogy, the Applicant literally matches key claim limitations from the Asserted Patents to a common card catalog system. The only difference is that the claimed limitations are tied to a generic “computer system.” ‘495 Patent at 7:12-14; claim 1. The file history is further instructive. During prosecution, the Examiner issued a § 101 rejection for a majority of the original claims in the application leading to the ‘495 Patent. Ex. 1. The Examiner held that the claims “describe[d] abstract matter, as Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 22 of 55 Page ID #:155 -15- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 opposed to the computerized subsystem described at points in the Specification and in claims (13-24, 27-29)” and “clearly read on a card catalog of multimedia sources. . .” Id. The Applicant overcame this rejection by simply adding “a method in a computer system” to the rejected independent claims. Ex. 2. While this was acceptable pre-Alice, applicants may no longer satisfy § 101 by applying abstract ideas to a general “computer system.” Alice, 134 S. Ct. at 2359. Moreover, tying the abstract concept of cataloging data to a generic computing environment does not improve computer functionality—it simply automates a process long performed without computers. See ‘495 Patent at 1:10- 12 (“Increasingly, computer systems are being used to present multimedia material.”); ‘527 Patent and ‘911 Patents at 1:10-12; ‘499 and ‘080 Patents at 1:9-10, ‘831, ‘060 and ‘537 Patents at 1:12-13 and ‘014 Patent at 1:10-11. The titles of the Asserted Patents even confirm this point. See, e.g., “Digital Library System.” Because the patent claims in Group 1 are directed to an abstract idea, the Court must next determine whether the additional elements of those claims confer patentability. Alice, 134 S. Ct. at 2355. The ‘495 Patent: Abstract idea: cataloging data. The ‘495 Patent contains 29 claims, five of which are independent claims. The claims are lengthy. But they are also highly repetitive which simplifies the analysis. At bottom, there are no claim elements that transform the abstract concept of cataloging data into patent-eligible subject matter. Those elements simply add routine and conventional steps to the claim. Representative claim 1 is reproduced in table form below highlighting the conventional elements of each limitation. Claim 1’s Language Conventional Elements In a computer system, a method of cataloguing multimedia data comprising the steps of: Cataloging data. creating a catalogue comprising a plurality of elements and relationships between said plurality of elements, said plurality of elements identifying data associated Creating catalog comprising elements (elements Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 23 of 55 Page ID #:156 -16- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim 1’s Language Conventional Elements with said multimedia data, said data including keywords interrelated via one or more associative, whole-part and inheritance relationships, and other multimedia data associated with said multimedia data; akin to cards in a card catalog), elements identifying data including associative keywords. specifying a description for a portion of said multimedia data; Specifying description of data. creating a catalogue element in said catalogue, said catalogue element containing a pointer to said portion of said multimedia data; and Element containing a pointer to data. creating for said catalogue element a pointer to at least one of said keywords, said at least one of said keywords containing a plurality of pointers to a set of elements in said catalogue interrelated to said at least one of said keywords via said one or more associative, whole-part and inheritance relationships, and creating for said catalogue element a plurality of pointers to elements in said catalogue that identify other multimedia data associated with said portion of multimedia data. Pointer to at least one keyword, keyword containing plurality of pointers to a set of elements interrelated to keyword. These conventional steps—which do not improve the functionality of the generic systems that carry them out—fail to transform the abstract idea into patentable subject matter. This is true whether the elements are viewed individually or in combination as there is no “non-conventional and non-generic arrangement of known, conventional pieces.” Move, 221 F. Supp. 3d at 1165 (citing BASCOM Glob. Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)). The claimed system—which again, Applicant equates to a common card catalog—includes: • elements (“i.e., a card”) (‘495 Patent at 3:63-64); • plurality of elements (“i.e., plurality of cards”) (Id. at 3:63-65); Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 24 of 55 Page ID #:157 -17- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 • keywords associated by relationships; • descriptions of data; • attributes (analogous to information on a card) (Id. at 3:66-67); and • pointers for identification (Id. at 13:10-16) (“The relationships that form a set can be implemented using any of the known techniques known in the art. For example, the relationships can be implemented in a programming language using pointers.”). (emphasis added). None of this is inventive. Indeed, cataloging data using elements, attributes and keywords interrelated through “associative, whole-part and inheritance relationships” is not only routine—but the basic underpinning of conventional data storage and recall. Collarity, Inc. v. Google Inc., 2015 U.S. Dist. LEXIS 159031, at *4-8 (D. Del. 2015) (invalidating patent to enhance online searching that recited methods to generate, refine and suggest keywords”). The same holds true for the use of pointers which the specification acknowledges was “known in the art.” Activision, 2016 U.S. Dist. LEXIS 104308, at *21-22 (“using a ‘pointer’ …is indistinguishable from the idea of using an information desk, a catalogue, or the Dewey Decimal System to locate a desired library book…This concept is far from new.”). The specification further concedes that “[i]nformation is obtained for an existing element using a technique known in the art. For example, in a relational database management system, one or more queries can be used to select instances of keyword 210 and proposed keyword 214 and their interrelationships.” ‘495 Patent at 23:4-11. The ‘495 Patent thus relies on routine techniques known in the art of data management. This falls well short of the specific functional improvement upon prior art relational databases claimed in Enfish—let alone any inventive element needed for patentability. Dependent claims 2-12 likewise fail Alice Step 2, as their conventional limitations, viewed alone or in combination, fail to confer patentability. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 25 of 55 Page ID #:158 -18- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim Description of Conventional Limitations Claim 2 Creating a pointer to keywords, identifying references to keyword. Claim 3 Examining proposed elements, determining if element is approved and either transforming into an attribute or deleting if unapproved. Claim 4 Hierarchy of elements.14 Claim 5 Data includes persons, proposed persons and proposed keywords. Claim 6 Thesaural elements for use as an alternate for another element, identifying another element and creating a relationship between same. Claim 7 Deleting content. Claim 8 Identifying, reassigning and deleting content. Claim 9 Modifying relationships between elements and keywords. Claim 10 Reassigning and deleting attributes and attribute elements. Claim 11 Creating event for second portion of data. Claim 12 Quality assurance event. These are all routine data management tasks that can be carried out by any general purpose computer. Independent claim 13 recites an article of manufacture having generic “computer readable program code embodied therein for cataloguing multimedia data using a general indexing structure.” The claim further recites “code configured to cause a computer to” carry out the previously claimed cataloging methods. Tellingly, the claim offers no further detail about the program code. Although the specification references program code—it does so only once and in the most generic terms. Id. at 7:12-14 (“An embodiment of the invention can be implemented as computer software in the form of computer readable program code executed on a general purpose computer such as illustrated in FIG. 1.”). Unspecified program code executed on a general purpose computer to perform conventional tasks is not inventive and does not pass Alice Step 2. 14 TS Patents LLC v. Yahoo, 279 F. Supp. 3d 968, 985 (N.D. Cal. 2017) (“organizing and viewing data on a network in a reducible hierarchy—falls squarely within the realm of ideas that the Federal Circuit has consistently found to be abstract.”). Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 26 of 55 Page ID #:159 -19- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Alice, 134 S. Ct. at 2355; Uniloc, 2018 U.S. Dist. LEXIS 84239, at *4 (“Despite being dressed up with ‘illustrative’ tables and flow charts presenting hypothetical examples of specific implementation, the [] patent discloses no inventive source code, formula, or circuitry.”); Callwave Communs., LLC v. AT&T Mobility, LLC, 207 F. Supp. 3d 405, 416 (D. Del. 2016); TS Patents, 279 F. Supp. 3d at 1000. The combination of these program code limitations does not change the outcome of patent ineligibility. Dependent claims 14-24 similarly recite generic program code to carry out the unpatentable methods disclosed in dependent claims 2-12. Whether analyzed individually or in combination, these claims fail Alice Step 2. Independent claim 25 recites a “system for cataloguing multimedia data,” adding other elements of “a processing unit,” “cataloguing facility” and “relationship management facility,” along with interrelated keywords. As the specification makes clear, each of these elements in claim 25 is conventional—alone or in combination. See ‘495 Patent at 7:16-18 (“The keyboard and mouse are for introducing user input to the computer system and communicating that user input to central processing unit (CPU)”); 14:21-24 (“[t]he cataloguing facility includes a user interface that comprises a series of screens. The cataloguing facility also includes processes for processing input to the user interface.”) (emphasis added); Figs. 3A-3F, 4; 14:15-16 (“[t]he relationship management facility is used to review the elements and relationships proposed by a cataloguer.”); 22:45-47 (“[i]n addition to the control buttons, a drag and drop capability is provided in the relationship management facility.”). A cataloging system with a generic processing unit, cataloging facility and relationship management facility using interrelated keywords fails Alice Step 2. Dependent claim 26 recites a cataloging facility having a “cataloguing interface” containing the same elements from prior claims including claim 1. And dependent claim 27 recites a “relationship management facility” having a “relationship management interface” coupled to “a plurality of relationship management processes.” Again, the Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 27 of 55 Page ID #:160 -20- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 specification underscores the conventional nature of these limitations. ‘495 Patent at 23:14-6 (“The relationship management interface screens presented in FIGS. 7A-7B illustrate an interface for viewing element instances and managing their relationships.”). And claims 28 and 29 fail for the same reasons article of manufacture claims 13-23 fail. Id. at claim 13. They recite generic program code to perform the previously claimed conventional limitations—but neither the claims, nor even the specification, reveal the substance of any inventive code. The ‘527 Patent: Abstract idea: quality control of data collection. The ‘527 Patent has 18 claims. They share significant overlap with each other—and with the claims of the ‘495 Patent as evidenced by the numerous double patent rejections issued by the Examiner. Ex. 5. Accordingly the § 101 analysis here is comparable to that of the ‘495 Patent. Independent claim 1 is representative and recites: Claim 1’s Language Conventional Elements A method of managing the quality of a data collection of multimedia data comprising: Managing the quality of data. reviewing multimedia data; creating a quality event in a catalogue of said multimedia data, said quality event containing information regarding the quality of data collection; Reviewing data, and creating a quality event regarding data collection. associating said quality event with an input data portion of said multimedia data. Associating the quality event with input data. Managing the quality of data collection by reviewing data, creating a quality event and associating the quality event to input data is not inventive. While the specification does not use the term “quality event,” it does describe “a quality assurance event[s]” used to mark the input data. Specifically, “[a]n event can mark a positive, negative, or neutral quality assurance event…. A quality assurance event can also identify a fact or piece of information.” ‘527 Patent at 4:43-46. This form of quality Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 28 of 55 Page ID #:161 -21- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 control is easily done with a pen and paper and does not salvage the claim. The combination of reviewing data, creating a quality event, and associating the events with input data is no less conventional. Dependent claims 2-4 likewise fail Alice Step 2 as they simply add the positive, negative and neutral quality events noted above. Independent claim 5 recites a “method creating a hierarchal catalogue for multimedia data” using catalog elements and sets of keywords. But again, hierarchal catalogs are not inventive. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331 (Fed. Cir. 2015) (“Versata’s concept of organizational hierarchies for products and customers is abstract because it represents a disembodied concept, a basic building block of human ingenuity”); Hewlett Packard Co. v. ServiceNow, Inc., No. 14-570, 2015 U.S. Dist. LEXIS 29384, at *18 (N.D. Cal. Mar. 10, 2015). The combination of these limitations (i.e., creating a type for elements; creating a first set of keywords; and creating a second set of keywords steps) does not change this outcome. The seven following dependent claims (6-13) contain equally conventional elements. Claim Description of Conventional Limitations Claim 6 Creating first and second sets of types associated with keywords. Claim 7 Interrelated sets of types to form a hierarchy of types. Claim 8 Interrelated sets of keywords to form a hierarchy of keywords. Claim 9 Sets of keywords associated with thesaural (alternate information) keywords. Claim 10 Associating alternate expressions of content using thesaural person. Claim 11 Associating alternate expressions of content using thesaural keyword. Claim 12 Using thesaural keyword structure comprising identifier, keyword identifier, label, language choice identifier and preferred flag. Claim 13 Associating alternate expressions of content using thesaural person, thesaural person data structure with identifier, name and preferred flag. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 29 of 55 Page ID #:162 -22- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 None of this is inventive, either alone, or where applicable, in combination. As explained in the specification, “thesaural keyword and thesaural person attribute elements are examples of attribute elements that contain alternate information,” “Thesaural keyword and person attribute elements contain alternate information for the keyword and person attributes elements, respectively” and “Thesaural keyword 212 can be one or more words.” ‘527 Patent at 5:1-7; 8:64-9:2. This is just a tortuous description of using keywords or attributes for alternate information. Independent claim 14 recites a “method of creating alternate expressions of content of a multimedia data catalogue” comprised of previously claimed limitations. Specifically, claim 14 includes creating a catalog containing elements, where a first element is a phrase associating the cataloged data with attributes, and an associated second element provides an alternative definition of the first element. The claim concludes by associating the first and second elements in hierarchal form. As described with the other patents in Group 1 including claim 5 of the ‘527 Patent, these elements alone or in combination fail Alice Step 2. Dependent claims 15-18 also restate prior limitations from Group 1 (namely, thesaural keyword, thesaural person and elements) and thus fail to add any inventive concepts to the ‘527 Patent. The ‘911 Patent: Abstract idea: cataloging data. The ‘911 Patent contains 34 claims. The Examiner issued a double patenting rejection on all claims in the application leading to the ‘911 Patent in view of the ‘527 Patent finding that they were “not patentably distinct” from each other and contained “the same limitations using varying terminology.” Ex. 3. The Applicant did not refute this rejection, instead filing a terminal disclaimer to overcome it. Ex. 4. Therefore, the § 101 analysis here will mirror that of the ‘495 Patent. Although the ‘911 Patent should fall with the ‘495 Patent on § 101 grounds, all claims of the ‘911 Patent are nonetheless addressed below. Representative claim 1 recites: Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 30 of 55 Page ID #:163 -23- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim 1’s Language Conventional Elements A method of cataloguing multimedia data comprising the steps of: Method of cataloging data. (See ‘495 Patent claim 1 reciting limitation near verbatim). specifying a description for a portion of said multimedia data; Specifying a description for a portion of data. (Id. at claim 1 reciting limitation verbatim). creating a catalogue element for said portion of said multimedia data; Creating catalog element for data (element akin to card in a card catalog). (See ‘527 Patent claim 14 reciting limitation near verbatim). creating a plurality of attributes and attribute elements; and Creating attributes (attributes akin to information on cards in card catalog). creating a plurality of relationships between said catalogue element and said plurality of attributes and attribute elements. Creating relationships between catalog elements and attributes. (Id. at claim 25 reciting limitations near verbatim). Cataloging data by specifying descriptions of data, and organizing data using elements, attributes and relationships of the same is not inventive. This is true whether the claim elements are analyzed individually or in combination. Indeed, these are well- known, routine steps lacking inventive features tied to a general purpose computer. Dependent claims 2-13 also fail for the same reasons as dependent claims 2-12 in the ‘495 Patent—and all claims of the ‘527 Patent. They simply add the following routine limitations to the cataloging method of claim 1. Claim Description of Conventional Limitations Claim 2 Identifying references to attribute elements, creating plurality of relationships between catalog elements and attribute elements. Claim 3 Examining proposed elements, determining if element is approved and either transforming into an attribute or deleting if unapproved. Claim 4 Inserting proposed element into hierarchy of elements. Claim 5 Hierarchical relationships. Claim 6 Thesaural element for use as an alternate for another element. Claim 7 Deleting elements. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 31 of 55 Page ID #:164 -24- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim 8 Deleting elements, identifying and then reassigning or deleting attributes and attribute elements. Claim 9 Modifying relationships. Claim 10 Deleting elements, identifying and then reassigning or deleting second plurality of attributes and attribute elements. Claim 11 Cataloging data, creating an event element for second portion of data. Claim 12 Cataloging data, creating quality assurance element for second portion of data. Independent claim 14, and dependent claims 15-24 fail for the same reasons the article of manufacture claims fail in the ‘495 and ‘527 Patents. They recite generic program code to perform the conventional methods of prior claims (including ‘911 Patent claims 2-13). The remaining system and method claims 25-34 share the conventional limitations from the prior claims in the ‘495 and ‘527 Patents including quality management of data collection and cataloging data using keywords, hierarchy categorization, and thesaural categorization. They also disclose a “cataloging facility” and “relationship management” (claims 27-29). But as described in the specification, these elements are routine. ‘911 Patent at 14:24-28 (“cataloguing facility includes a user interface that comprises a series of screens…[and] also includes processes for processing input to the user interface.”); Id. at 22:3-11 (“Relationship management includes a user interface to allow the relationship management user to perform the management functions…[t]he user interface provides areas to display elements. A drag and drop capability provides a means for graphically specifying element relationships. In addition, control buttons are provided to select management operations.”). The patents in Group 1 therefore fail the Alice Test of patent eligibility. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 32 of 55 Page ID #:165 -25- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 2. Group 2: Digital Library System Group 2 consists of the ‘499, ‘080 and ‘831 Patents, all entitled Digital Library System. All patents are part of the same family: the ‘831 Patent15 is a continuation of the ‘080 Patent, which in turn is a continuation of the ‘499 Patent. Accordingly, the patents in Group 2 share a common specification, and once again have significant overlap in the subject matter claimed. These patents are all directed to the abstract idea of cataloging, storing, retrieving and distributing data. See, e.g., ‘499, ‘080 and ‘831 Patents’ Field of Invention (“This invention relates to systems for cataloguing, storing, receiving and distributing multimedia data.”). The conventional steps recited in Group 2 do not improve computer functionality regardless of whether the elements are viewed individually or in combination. As discussed below, the patents in this group fail to recite “non-conventional and non- generic arrangement[s] of known, conventional pieces.” Move, 221 F. Supp. 3d at 1165. The ‘499 Patent: Abstract idea: cataloging, storing, retrieving and distributing data. The ‘499 Patent has 18 claims. Representative claim 1 recites: Claim 1’s Language Conventional Elements A digital library system comprising: Library system. a data capture system, said data capture system including a cataloguing system, said cataloguing system having a catalogue of multimedia data comprising at least one catalogue element associated with a plurality of keywords of said catalogue, said plurality of keywords identifying said multimedia data, said plurality of keywords being interrelated by one or more of associative, whole-part and inheritance relationships: Data capture system including a cataloguing system having catalogue of data including an element (akin to card in a card catalog) associated with interrelated keywords. An access management system coupled to said data capture system; Coupling conventional systems. 15 As with the ‘911 Patent, the Applicant failed to identify the grandparent ‘499 Patent and its priority date in either the ‘831 Patent or its underlying application. Thus the concerns discussed in note 14 also exist here, and should impact patent expiry as well. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 33 of 55 Page ID #:166 -26- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim 1’s Language Conventional Elements a distribution system coupled to said access management system. Coupling conventional systems. Claim 1 fails for the same reasons provided for claim 1 of the ‘499 Patent. The limitations add no inventive concepts and simply claim generic, conventional features. At bottom, claim 1 is directed to a digital library system comprised of: the previously discussed cataloging system of Group 1, and generic access management and distribution systems. As confirmed by the ‘499 specification, none of this is inventive. A digital library is the epitome of an abstract idea—which as claimed simply incorporates the earlier claimed cataloging system coupled with generic access management and distribution systems. The latter two systems are admittedly conventional. ‘499 Patent at Fig. 3; 4:62-66 (“asset management system includes a browser, an indexing server, an archive server, a tertiary storage manager, and a method player. Generalized interfaces define a communication protocol that can be used by any vendor-supplied browser, indexing server, archive server, tertiary storage manager, and/or method player to communicate with another asset management system component.”); 13:39, 13:26-30 (“Network 312 is preferably a local area network (LAN)… network is used to establish a link between a plurality of remote sites and a main site. Preferably, data distribution system 300 includes main site 302 and a plurality of remote sites (e.g., remote sites 306A-306D). These sites can be located around the world.”). Whether viewed alone or in combination, the limitations of claim 1 fail to transform the abstract digital library into patentable subject matter. Dependent claims 2-12 also fail Alice Step 2 as they add the following routine elements to the digital library system of claim 1. Claim Description of Conventional Limitations Claim 2 Transfer system. Id. at 8:15-18 (“Transfer system 246 consists of one or more transfer stations. A system comprised of multiple transfer stations with an interface is available from Electrosonics, Los Angeles, Calif.”). Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 34 of 55 Page ID #:167 -27- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim Description of Conventional Limitations Claim 3 Browser, text interface, indexing server, archive server, method player, and first and second media interfaces. Claim 4 Database management system, catalog elements / attributes. Claim 5 Operations for querying. Claim 6 Tertiary storage. Id. at 4:63-66 (“Generalized interfaces define a communication protocol that can be used by any vendor-supplied browser, indexing server, archive server, tertiary storage manager, and/or method player to communicate with another asset management system component.”). Claim 7 Cache manager. Id. at 5:30-32 (“Preferably, cache management is supplied by an instance of tertiary storage manager.”). Claim 8 Distribution system, permanent and temporary storage. Claim 9 Asset management system. Id. at 4:53-60 (“asset management system includes a browser, an indexing server, an archive server, a tertiary storage manager, and a method player.”). Claim 10 Instance of asset management system. Claim 11 Temporary storage is cache. Claim 12 Temporary storage is named cache. Id. at 12:28-34 (“In addition to the regular cache that can be managed as discussed above, the invention includes a plurality of named caches. A named cache can be used to store data on a more permanent basis. A named cache is a portion of cache… that is can be managed separate from the general cache pool”). Claim 13 is directed to a retrieval method including steps of searching a local cache for data stored in a catalog, and retrieving the data from either a remote cache or permanent storage if not found on the local cache. These steps alone or in combination are not inventive. Claim 14 is no less conventional—and simply adds the steps of determining the availability of space in the local cache, freeing up space if necessary and updating cache management information. Claim 15 recites the additional steps of determining the contents of the cache, and freeing the cache if it does not contain Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 35 of 55 Page ID #:168 -28- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 information in use or is not marked for semi-permanent data retention. Again, none of this is inventive. Lastly, claims 16-18 fail for the same reasons as prior article of manufacture claims (see, e.g., ‘495 Patent, claim 13) as they recite only generic program code configured to carry out the abstract methods above. The ‘080 Patent: Abstract idea: cataloging, storing, retrieving and distributing data. The ‘080 Patent has 16 claims. Representative claim 1 recites: Claim 1’s Language Conventional Elements A digital library system comprising: Library system. (See ‘499 Patent claim 1 reciting limitation verbatim). a cataloguing system having a catalogue of multimedia data comprising at least one catalogue element associated with a plurality of keywords identifying said multimedia data; Cataloging system having a catalogue of data including an element associated with keywords. an access management system coupled to said cataloguing system; and Coupling conventional systems. (Id. at claim 1) a distribution system coupled to said access management system. Coupling conventional systems. (Id. at claim 1 reciting limitation verbatim). As shown in parentheticals above, this claim is substantially similar to claim 1 of the ‘499 Patent and fails Alice Step 2 for the same reasons. A digital library system comprised of the previously discussed catalog system coupled to a generic access management system—which in turn is coupled to a conventional distribution system is not inventive. The combination of cataloging, access management and distribution does not change this fact. Dependent claims 2-13 likewise share the routine features found in the dependent claims of the ‘499 Patent. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 36 of 55 Page ID #:169 -29- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim Description of Conventional Limitations Claim 2 Browser, text interface, indexing server, archive server, method player, and first and second media interfaces. (See ‘499 Patent, claim 3 reciting limitations verbatim). Claim 3 Database management system. (Id. at claim 4 reciting limitations verbatim). Claim 4 Operations for querying. (Id. at claim 5 reciting limitations verbatim). Claim 5 Tertiary storage. (Id. at claim 6 reciting limitations verbatim). Claim 6 Cache manager. (Id. at claim 7 reciting limitations verbatim). Claim 7 Distribution system, permanent and temporary storage. (Id. at claim 8 reciting limitations near verbatim). Claim 8 Asset management system. (Id. at claim 9 reciting limitations verbatim). Claim 9 Instance of asset management system. (Id. at claim 10 reciting limitations verbatim). Claim 10 Temporary storage of cache. (Id. at claim 11 reciting limitations verbatim). Claim 11 Temporary storage of named cache. (Id. at claim 12 reciting limitations verbatim). Claim 12 Remote sites connected to wide area network. Claim 13 Wide area network being the internet. The limitations of adding remote sites connected to wide area network (claim 12), and more specifically the internet (claim 13), are equally routine. Claim 14 simply adds associative keywords to the system of claim 1. Claim 15 also recites a cataloging system configured to receive textual information as input. And claim 16 recites a transfer system configured to convert multimedia data from analog to digital format—but recites no specifics for doing so, only generic examples. Id. at 8:30- 33. “The conversion capabilities of transfer system 246 can be used to convert analog data for use with the invention. For example, multimedia data 250 is converted by transfer system 246 to Digital Betacam version 258.” As shown below, these limitations do not salvage the ‘080 Patent. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 37 of 55 Page ID #:170 -30- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim Description of Conventional Limitations Claim 14 Cataloging data, access management system coupled with distribution system. (See ‘499 Patent, claim 1). Claim 15 Receiving textual information as input. Claim 16 Transfer system configured to convert analog data to digital format. The ‘831 Patent: Abstract idea: cataloging, storing, retrieving and distributing data. The ‘831 Patent contains 20 claims, three of which are independent claims. Representative claim 1 recites: Claim 1’s Language Conventional Elements A digital library system comprising: Library system. (See ‘080 Patent, claim 1 reciting limitation verbatim). a means for catalouging multimedia data using at least one catalogue element associated with a plurality of keywords identifying said multimedia data; Cataloging data using an element associated with keywords. (Id. at claim 1). a means for managing access to said cataloguing system; and Managing access to cataloging system. (See ‘499 Patent at claim 1) a means for distributing said multimedia data. Distributing data. (Id. at claim 1) This claim essentially mirrors claims of the ‘499 and ‘080 Patents. As discussed earlier, the steps of cataloging data using elements and keywords, and managing access and distributing data are not inventive—alone or in combination. The Applicant confirms this point throughout the specification. See, e.g., ‘831 Patent at 7:51-18 (“[a]n embodiment of the invention can be implemented as computer software in the form of computer readable program code executed on a general purpose compute.”); Id. at 4:62- 66 (“asset management system is used to access the data using the catalogue created by the cataloguing system…asset management system includes a browser, an indexing server, an archive server, a tertiary storage manager, and a method player)”. The Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 38 of 55 Page ID #:171 -31- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 remaining claims fare no better—and likewise revisit earlier limitations from the ‘499 and ‘080 Patents. Claim Description of Conventional Limitations Claim 2 “means for browsing,” “first means for interfacing with archive server,” and “second means for interfacing with a method player” Claim 3 “means for managing a database” Claim 4 “means of querying” elements and attributes Claim 5 “means of storing data using a tertiary storage manager” Claim 6 “means for…permanently storing” and “temporarily storing” data Claim 7 “means for searching a local cache” for data, “means for retrieving” data from “remote cache” or “permanent storage” if not found on local cache. Claim 8 “means for determining…space available in” cache, “means for freeing space in” cache and “means for updating cache management information.” Claim 9 “means for” determining if cache contains information currently being use, if cache contains information marked for semi-permanent retention, and free cache if information not current used or so marked. Claim 10 “means for” creating a catalog, describing data, creating catalogue element containing pointer including pointers to relational keywords. Claim 11 “means for identifying references” to keywords, “means for creating” pointer to keywords for catalog element. Claim 12 “means for examining proposed element” to determine if it is an approved element, “means for transforming” approved elements into existing attribute elements, and “means for deleting” unapproved elements. Claim 13 “means for” creating hierarchy of elements Claim 14 “means for identifying…another element” Claim 15 “means for deleting” catalog elements Claim 16 “means for identifying” keywords, “means for reassigning” keywords, “means for deleting” keywords Claim 17 “means for modifying relationships” between elements and keywords Claim 18 “means for locating,” reassigning and deleting a plurality of attributes and attribute elements Claim 19 “means for creating” event elements Claim 20 Adding quality assurance event Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 39 of 55 Page ID #:172 -32- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Notwithstanding any constructions that Plaintiff may proffer, these limitations are conventional and do not add an inventive concept to the claims. 3. Group 3: Surveying System and Method et al. Group 3 consists of the ‘638 and ‘071 Patents. Both patents expired over two years ago. These patents are grouped together given the similarities of their claimed subject matter. The ‘638 and ‘071 Patents are directed to the abstract idea of collecting data from a survey and using survey data for cataloging. Both patents are subject to terminal disclaimers. The Examiner rejected the application leading to the ‘638 Patent for obviousness-type double patenting over the ‘527 Patent. Likewise, the Examiner rejected the application leading to the ‘071 Patent for double patenting over the ‘495 and ‘014 Patents. Ex. 3. The Applicant did not refute these rejections and filed terminal disclaimers in both applications. The ‘638 Patent therefore should fall with the ‘527 and ‘911 Patents on § 101 grounds; and the ‘071 Patent should fall with the ‘014 and ‘499 Patents. Nonetheless, Defendants address the patents of Group 3 individually below. The ‘638 Patent: Abstract concept: cataloging survey data. The ‘638 Patent contains 26 claims. Representative claim 1 recites: Claim 1’s Language Conventional Elements In a computer system, associating multimedia data with surveying data comprising: Associating data. obtaining an association between survey data and at least one catalogue element of a catalogue, said at least one catalogue element associated with said multimedia data; Obtaining an association between survey data and an element associated with data searching said survey data to identify said at least one catalogue element; Searching survey data to identify the element. identifying said multimedia data using said at least one catalogue element. Identifying data using the element. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 40 of 55 Page ID #:173 -33- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim 1 is directed to associating survey data with catalog elements, searching that survey data to identify such elements and identifying data through the elements. None of this inventive—alone or combination. Claims 2-9 depend from claim 1 and simply add conventional limitations including survey elements; attributes; question and answer elements; segment and phrase elements; and keywords, phrases and types. Again, these claims simply tie routine surveying concepts to the “computer system” of claim 1. Skillsurvey,178 F. Supp. 3d at 260 (“All these steps together, comprising anonymously collecting survey data, summarizing survey data, and presenting survey data, are ways to implement the abstract idea of reference-checking with generic computer technology.”). As with the other Asserted Patents, the ‘638 Patent specification confirms the lack of inventive elements claimed. ‘638 Patent at 22:52-61; 24:9-16: An embodiment of the invention can be implemented as computer software in the form of computer readable code executed on a general purpose computer such as computer illustrated in FIG. 12, or in the form of bytecode class files executable within a Java runtime environment running on such a computer. A keyboard and mouse are coupled to a bidirectional system bus. The keyboard and mouse are for introducing user input to the computer system and communicating that user input to processor.”). (citations omitted) Application code may be embodied in any form of computer program product. A computer program product comprises a medium configured to store or transport computer readable code or data, or in which computer readable code or data may be embedded. Some examples of computer program products are CD-ROM disks, ROM cards, floppy disks, magnetic tapes, computer hard drives, servers on a network, and carrier waves. Claim 10 recites “a memory for storing survey information accessible by at least one computer” with the survey information including sets of elements, and data associated with elements in the memory. As confirmed by the specification, there is nothing inventive about the claimed memory. Id. at “[m]ain memory is comprised of dynamic random access memory (DRAM). Video memory is a dual-ported video Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 41 of 55 Page ID #:174 -34- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 random access memory. One port of the video memory is coupled to video amplifier. The video amplifier is used to drive the cathode ray tube (CRT) raster monitor.”) (citations omitted). Following dependent claims 11-17 add no inventive concepts— they simply add conventional limitations to the memory of claim 10 including: elements, attributes, keywords and phrases. Remaining claims 18-26 all fail because they recite generic program code. See e.g., ‘495 Patent, claim 13. The ‘071 Patent: Abstract concept: general management of survey data. The ‘071 Patent includes 39 claims. It fails Alice for the same reasons as stated for the ‘014 and ‘499 Patents—which the prosecution history suggests are not patentably distinct. Representative claim 1 recites. Claim 1’s Language Conventional Elements In a computer system, a surveying method comprising: Surveying method in a computer system obtaining a schema comprising a definition of elements, said schema usable in defining at least one survey and in retaining responses associated with said at least one survey; Obtaining schema including a definition of elements usable in defining a survey and in retaining responses obtaining a definition of said at least one survey comprising instances of said element definitions of said schema; Obtaining definition of the survey. capturing said responses in attributes of instances of said schema. Capturing the responses. Claim 1 and the subsequent dependent claims all fail Alice Step 2. The ‘071 Patent “Field of the Invention” confirms this point stating “this invention relates to the collection and entering of data associated with a survey or other data collection mechanism using a computer system.” ‘071 Patent at 1:4-6. (emphasis added). Indeed, as with the other Asserted Patents, the ‘071 specification makes clear that “the invention can be implemented as computer software in the form of computer readable code executed on a general purpose computer…or in the form of bytecode class files executable within a Java runtime environment running on such a computer.” (citations Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 42 of 55 Page ID #:175 -35- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 omitted). At bottom, claim 1 recites a computer implemented surveying method using “schema[s],” “elements” and “attributes.” According to the specification, “a survey schema comprises survey elements that may be used to build different forms or versions of a survey,” examples of which include the common terms: “section, question group, question, answer, data object, insert, choice group, choice item, for example.” None of the limitations above are inventive—alone or in combination. The same holds true for dependent claims 2-8. Claim Description of Conventional Limitations Claim 2 Elements comprise a section, question group, question and answer; obtaining instances from each. Claim 3 Elements comprises an insert, said insert capable of being repeated in said at least one survey. Claim 4 Elements comprise a question and answer associated with said question, one instance of said answer being associated with one instance of said insert and a second instance of said answer being associated with a second instance of said insert. Claim 5 Storing a response in an attribute of an answer instance of said schema. Claim 6 Storing a response in at least one attribute of a data object associated with an answer element. Claim 7 Defining, in said schema, at least one answer having a type designation; creating a relationship between at least one question of said first element set and said at least one answer. Claim 8 Defining at least one data object having at least one attribute capable of storing a response to said at least one question, said data object associated with said at least one answer These are simply methods for automating conventional surveying techniques that one can carry out using a pen and paper. Applying the methods “in a computer system,” where the claims fail to improve computer functionality is a textbook example of patent ineligibility. Claims 9-17 fail for the same reasons the memory claims of the ‘638 Patent fail. Method claims 18-24 likewise add no inventive features—instead relying on previously Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 43 of 55 Page ID #:176 -36- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 discussed routine elements in this group. Remaining claims 25-39 fail because they recite generic program code. 4. Group 4: Method and Apparatus for Management of Multimedia Assets Lastly, Group 4 consists of the ‘014, ‘060 and ‘537 Patents all entitled Method and Apparatus for Cataloguing Multimedia Data. The patents in this group are related: the ‘537 Patent is a continuation of the ‘060 Patent and the ‘060 Patent is a divisional of the ‘014 Patent. The patents in Group 4 share the same specification and significant overlap in the subject matter claimed. Once again, the prosecution history finds that the ‘014, ‘071 and ‘495 Patents are not patentably distinct. Ex. 3. Thus if the ‘071 or ‘495 Patents fall, the ‘014 Patent should as well. The Group 4 patents are all directed to the abstract idea of general data management, namely cataloging, retrieving and storing data and interfacing conventional components. The common Abstract states “[t]he invention is a generalized solution for management of multimedia assets.” This purpose is restated in the “Summary of the Invention” for all three patents. See, e.g., ‘014 Patent at 4:66-68. Further, the patent claims are generally directed to various methods, systems, applications and articles of manufacture relating to the cataloging, retrieving and storing of data. The limitations of the patents in Group 4 do not improve the functionality of the generic systems that carry them out. Likewise, there is no unconventional and non- generic arrangement of known, conventional pieces. The ‘014 Patent: Abstract idea: cataloging, retrieving and storing data. Representative independent claim 1 recites: Claim 1’s Language Conventional Elements A method of accessing multimedia data comprising the steps of: Method of accessing data. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 44 of 55 Page ID #:177 -37- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim 1’s Language Conventional Elements defining a catalogue for said multimedia data having a plurality of catalogue elements each of which is associated with a portion of said multimedia data, said plurality of catalogue elements associated with a plurality of keywords of said catalogue, said plurality of keywords identifying said multimedia data, said plurality of keywords being interrelated by one or more of associative, whole-part and inheritance relationships; Defining a catalog for data having elements (akin to card in card catalog) and interrelated keywords. specifying a search request; Specifying a search. identifying a result of said search request that satisfies said search request, said result containing one or more of said plurality of catalogue elements; Identifying a result. retrieving said portion of said multimedia data associated with said one or more of said plurality of catalogue elements; Retrieving data. storing in said catalogue said search request; and Storing search request. storing in said catalogue said search result. Storing search result. Claim 1 recites a method of accessing data defining a catalog; having elements associated with interrelated keywords identifying the data; retrieving data through search requests and storing the search requests and results. These routine elements mirror those found in previously discussed claims in this patent group—and taken individually or in combination, add no inventive concept to the ‘014 Patent. Dependent method claims 2-14 are similar in this regard. Claim Description of Conventional Limitations Claim 2 Adding a search request and result. Claim 3 Storing search requests. Claim 4 Storing search requests. Claim 5 Identifying data performing queries. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 45 of 55 Page ID #:178 -38- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim Description of Conventional Limitations Claim 6 Identifying data using keywords. Claim 7 Identifying sets of types of instances. Claim 8 Adding child keyword instances to identification step. Claim 9 Identifying catalog elements related to keyword instances. Claim 10 Adding person instances, identifying plurality of container elements. Claim 11 Identifying and examining keywords. Claim 12 Identifying plurality of person information instances and person information instances. Claim 13 Retrieving data using identifiers and pointers. Claim 14 Retrieving data by searching cache. The storing limitations reference “cardinality information” and “conjunctivity information,” both of which are well-known terms—particularly in the field of database management. The only reference to these terms in the specification is that “[a]ttributes of query element record 1106 store the cardinal and conjunctive information for its associated instance of query element.” See ‘014 Patent at 21:11-14. The concepts underlying those terms have long been used by humans to organize information. None of the limitations of claims 2-14 are inventive alone or in combination. Independent claim 15 recites “a multimedia system” having conventional elements including “a browser,” “text interface,” “indexing server,” “archiving serving,” and first and second “media interface[s]” to transmit “identifiers.” These elements simply carry out the abstract data management concepts of the ‘014 Patent. The specification confirms the generic nature of each of these elements. ‘014 Patent at 4:66-5:6 (“The invention is a generalized solution for management of multimedia assets. Generalized interfaces are used between a browser component, indexing server, archive server, tertiary storage manager, and method player components. The Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 46 of 55 Page ID #:179 -39- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 generalized interface defines a communication protocol that can be used by any browser, indexing server, archive server, tertiary storage manager, or method player component.”). Dependent claims 16-20 also fail Alice Step 2 as they simply add: a database management system (16); application programing interface (17); operations for querying (18); a tertiary storage manager (19) and a cache manager (20). The claims provide no details about these elements beyond their generic recitation. The specification makes clear these elements are all conventional. ‘014 Patent at 2:39-42 (“A system having an index server, tertiary storage manager, and archive server is illustrated in FIG. 1D. Such a system is provided by IBM. The system offers index server 148 (e.g., IBM’s DB2 or Oracle’s DBMS), archive server 146, and tertiary storage manager 144 in an integrated system that runs on mainframe 140.”); Id. at 8:17- 18 ([p]referably, interfaces…are software interfaces such as an application program interface (API).”). Remaining article of manufacture claims 21-34, all fail because they recite generic “computer readable program code” configured to perform the previously claimed methods. To the extent Plaintiff attempts to equate the claimed program code with the SQL routines referenced in the specification, those routines are conventional as well and fail to add any inventive feature to the claims. See, e.g., Jedi Techs., Inc. v. Spark Networks, Inc., 2017 U.S. Dist. LEXIS 122313, at *26 (D. Del. Aug. 3, 2017) (invalidating patent under § 101 whose specification referenced specific SQL); Versata Software v. NetBrain Techs, 2015 U.S. Dist. LEXIS 132000, at *41 (D. Del. Sep. 30, 2015) (“Structured Query Language (‘SQL’) is a typical database search language”). The ‘060 Patent: Abstract idea: interfacing conventional components. Representative independent claim 1 recites: Claim 1’s Language Conventional Elements Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 47 of 55 Page ID #:180 -40- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 A method of interfacing components in a multimedia system comprising: Interfacing conventional components. See ‘060 Patent Abstract (“Generalized interfaces are used between a browser component, indexing server, archive server, tertiary storage manager, and method player components. defining a generalized protocol for interfacing components of a multimedia system, said generalized protocol comprising commands configured to access multimedia data, said multimedia data associated with a catalogue; Defining a generalized protocol for interfacing conventional components including commands configured to access data associated with catalog. invoking a search request using said generalized protocol, said search request configured to initiate a search of said catalogue to identify multimedia data; Invoking a search request configured to initiate a search of catalog to identify data. communicating between at least two of said components using said generalized protocol; Using generalized protocol to communicate between components. returning a search response using said generalized protocol, said search response identifying a plurality of catalogue elements; Returning a search response identifying catalog elements. invoking a retrieval request using said generalized protocol, said retrieval request specifying at least one of said plurality of said catalogue elements; Invoking a retrieval request a specifying catalog element. invoking a transmit request using said generalized protocol, said transmit request configured to transmit multimedia data identified by said at least one of said plurality of catalogue elements. Invoking a transmit request to transmit data Claim 1 is directed to basic search and retrieval concepts through the generic interfacing of components. The Applicant does not even attempt to claim an inventive protocol for such interfacing, claiming instead “a generalized protocol.” This language is dispositive—and reinforced by the specification. Id. at 5:1-2 (“the invention is a Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 48 of 55 Page ID #:181 -41- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 generalized solution for management of multimedia assets.”). And the generalized protocol is simply “for interfacing components,” all of which are conventional: “browser component, indexing server, archive server, tertiary storage manager, and method player components.” See ‘499 Patent Claim 1. That the protocol involves invoking a search request, communicating between conventional components, returning a search response, involving a retrieval request, and invoking a transmit request is of no consequence. These again are conventional steps long used for data management—and are not inventive. The subsequent dependent method claims 2-14 likewise lack any inventive concept. Those claims merely add: “an application programing interface” (2); “browser, index server, archive serve and a method player” (3-6); and catalog elements, segment elements and index elements (7-14). Here again, the specification confirms the conventional nature of these limitations. Id. at 8:17-18 (“Preferably, interfaces 310, 312, and 314 are software interfaces such as an application program interface (API).” Claims 15-18 all fail for the same reasons discussed above for program code claims of the ‘014 Patent, and the other program code claims of the Asserted Patents. The ‘537 Patent: Abstract idea: conventional application program interfaces. The ‘537 Abstract makes clear the conventional nature of the purported invention: “The system is a generalized solution for management of multimedia assets. Generalized interfaces are used between a browser component, indexing server, archive server, tertiary storage manager, and method player components. The generalized interface defines a communication protocol that can be used by any browser, indexing server, archive server, tertiary storage manager, or method player component.”). The specification confirms the same: The invention implements a generalized interface for interconnecting system components of a multimedia system. Thus, it is possible to integrate components from different systems or vendors to design an optimal multimedia system. FIG. 3 illustrates an embodiment of the invention having generalized interfaces between system components. Browser 318 includes a user interface that accepts input from a user and Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 49 of 55 Page ID #:182 -42- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 displays multimedia data. Browser 318 formulates requests based on user-specified criteria for transmittal to indexing server 316. Indexing server 316includes a mechanism for identifying stored multimedia data based on the request sent by browser 318. Archive server 306 and tertiary storage manager 304 retrieve the stored multimedia data identified by indexing server 316. Method player 302converts the stored multimedia data into a form that can be played on browser 318…Preferably, interfaces 310, 312, and 314 are software interfaces such as an application program interface (API). ‘537 Patent at 8:3-26. The ‘537 Patent includes 83 claims, only one of which is an independent claim. Plaintiff will likely try to equate claim volume with patentability— but that is not the law. Prod. Ass’n Techs., 2017 U.S. Dist. LEXIS 217133, at *19. Independent claim 1 and remaining dependent claims are all directed to a conventional software interface, namely an application program interface (API) embodied on generic “computer readable medium for execution on a computer” to interface conventional components. Specifically, representative claim 1 recites: Claim 1’s Language Conventional Elements An application program interface (API) embodied on a computer readable medium for execution on a computer in conjunction with an application program to interface components in a multimedia system comprising: Interfacing conventional components. See ‘537 Patent at 5:7- 10 (“Generalized interfaces are used between a browser component, indexing server, archive server, tertiary storage manager, and method player components.”). an API protocol means comprising a command interface between a first system component and at least one additional system component, said command interface comprising: Command interface between two conventional components. means for selecting multimedia data that satisfies a criteria of said first system component selected using said API protocol means, said multimedia data associated with a multimedia catalogue, said catalogue associated with said at least one additional system component; Selecting data that satisfies a criteria Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 50 of 55 Page ID #:183 -43- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Claim 1’s Language Conventional Elements means for retrieving from said at least one additional system component multimedia data selected by said selecting means; Retrieving data means for displaying said multimedia data retrieved by said retrieving means. Displaying data Claim 1 simply recites a conventional software interface. The added limitations of selecting data associated with a catalog that satisfies a criteria and retrieving and displaying data—is not inventive. Nor are the remaining dependent claims that simply add to the claimed software interface, routine limitations, most of which are found in the other Asserted Patents. The additional limitations of Boolean Soundex Code16 and search strings are not inventive. B. Plaintiff’s Claims of Indirect and Willful Infringement Against MG Content Are Not Adequately Plead The Second Complaint alleges that “[o]ther than the ‘071 and ‘638 Patents, MindGeek USA, Incorporated (‘MG USA’) acquired knowledge of the Asserted Patents no later than September 30, 2014, the date MG USA received Plaintiff’s Notice of Infringement Letter.” Dkt. No. 1 at ¶ 51. It further states that “MG USA received notice of the ‘071 and ‘638 Patents no later than Plaintiff’s Notice of Infringement letter of October 3, 2014. Id. Plaintiff then leaps to the conclusion that “upon information and belief,” all Defendants (i.e., the MG Content entities) “have had notice and actual knowledge of the Plaintiff’s rights in the Asserted Patents other than the ‘071 and ‘638 Patents since at least September 30, 2014,” and likewise “have had notice and actual knowledge of the Plaintiff’s rights in the ‘071 and ‘638 Patents since at least October 3, 2014.” Id. at ¶¶ 52-53 (emphasis added). 16 Soundex code was invented nearly a century ago. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 51 of 55 Page ID #:184 -44- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 But Plaintiff does not allege how the MG Content entities, who are based in Dublin, Ireland and were not named in the 2014 Action, obtained notice and actual knowledge of the Asserted Patents on the dates claimed. Indeed, the Second Complaint is silent on this key point. Thus, Plaintiff has not adequately pled that MG Content had notice or actual knowledge of the Asserted Patents prior to the filing of the Second Complaint. Stated differently, Plaintiff has failed to plead pre-suit knowledge of the Asserted Patents. Recognizing the infirmity of its statement made “on information and belief,” Plaintiff pleads a fallback position that the MG Content entities “have had notice and actual knowledge of the Asserted Patents at least as of the service date of this Complaint,” i.e., post-suit knowledge. Id. at ¶ 54. As a threshold matter, Plaintiffs cannot sustain claims of indirect and willful infringement based on post-suit knowledge of expired patents. CliniComp Int’l, Inc. v. Cerner Corp., 2018 U.S. Dist. LEXIS 83560, at *6 (S.D. Cal. May 16, 2018) (“[i]nduced infringement as well as willful infringement require Defendant to have knowledge of the infringement prior to the patent’s expiration.”). All eleven Asserted Patents expired before Plaintiff filed its Second Complaint. Thus all indirect and willfulness claims relating to those patents must fall. Should Plaintiff attempt to argue that the ‘831 Patent (or any other patent) has not expired, the Second Complaint still failed to adequately allege MG Content’s pre- suit knowledge of such patents. Courts in this district have held that pre-suit knowledge is required for a claim of willful infringement. Deckers Outdoor Corp. v. J.C. Penney Co., 45 F. Supp. 3d 1181, 1187 (C.D. Cal. 2014) (“California federal courts have taken the view that a plaintiff must plead presuit knowledge in order to adequately plead willful infringement.”); see also Puma SE v. Forever 21, Inc., 2017 U.S. Dist. LEXIS 211140, at *8-9 (C.D. Cal. June 29, 2017) (“Nothing in the Halo decision supports Puma’s position that a plaintiff pleading willful patent infringement no longer need allege pre-suit knowledge of the patent.”). As for indirect infringement, some courts Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 52 of 55 Page ID #:185 -45- DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 hold that plaintiffs must plead pre-suit knowledge to sustain such claims. Proxyconn Inc. v. Microsoft Corp., 2012 U.S. Dist. LEXIS 70614, at *14 (C.D. Cal. May 16, 2012) (“knowledge after filing of the present action is not sufficient for pleading the requisite knowledge for indirect infringement”). Other courts in this district have allowed indirect infringement claims to proceed based on post-suit knowledge for post-suit activity. Commer. Copy Innovations, Inc. v. Ricoh Elecs., Inc., 2017 U.S. Dist. LEXIS 219052, at *12 (C.D. Cal. Oct. 16, 2017) (“there is a split in authority regarding whether a patentee must plead pre-suit knowledge for claims of indirect infringement.”). Accordingly, Plaintiff’s claims of indirect and willful infringement against MG Content should be dismissed. CONCLUSION For the foregoing reasons, Plaintiff’s motion should, respectfully, be granted. And because Plaintiff cannot amend the Complaints to overcome its § 101 defect, the action should be dismissed with prejudice as to all Defendants. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 53 of 55 Page ID #:186 DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Dated: August 6, 2018 /s/ Alper T. Ertas Alper T. Ertas VENABLE LLP 2049 Century Park East Suite 2300 Los Angeles, CA 90067 Telephone: (310) 229-9900 Facsimile: (310) 229-9901 atertas@venable.com Frank M. Gasparo (Admitted Pro Hac Vice) Todd M. Nosher (Admitted Pro Hac Vice) VENABLE LLP 1270 Avenue of the Americas Twenty-Fourth Floor New York, New York 10020 Telephone: (212) 307-5500 Facsimile: (212) 307-5598 fmgasparo@venable.com tmnosher@venable.com Attorneys for Defendants MindGeek USA Inc. et al. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 54 of 55 Page ID #:187 DEFENDANTS’ MOTION TO DISMISS CASE NO. 2:17-CV-08906-DOC-JPR 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V E N A B L E L L P 2 0 4 9 C E N T U R Y P A R K E A S T , S U IT E 2 3 0 0 L O S A N G E L E S , C A 9 0 0 6 7 3 1 0 -2 2 9 -9 9 0 0 Exhibit List • Exhibit 1–Examiner § 101 rejection in Application leading to ‘495 Patent. • Exhibit 2–Applicant’s Amendment in response to § 101 rejection in Application leading to ‘495 Patent. • Exhibit 3–Examiner’s Obviousness-Type Double Patenting (“OTDP”) rejections in applications leading to the ‘911, ‘638, ‘071, ‘499 and ‘527 Patents.  3-1: Examiner’s OTDP rejection in application leading to the ‘911 Patent.  3-2: Examiner’s OTDP rejection in application leading to the ‘638 Patent.  3-3: Examiner’s OTDP rejection in application leading to the ‘071 Patent.  3-4: Examiner’s OTDP rejection in application leading to the ‘499 Patent.  3-5: Examiner’s OTDP rejections in application leading to the ‘527 Patent. • Exhibit 4–Applicant’s Terminal Disclaimers filed in applications leading to the ‘911, ‘638, ‘071 and ‘499 Patents.  4-1: Terminal disclaimer filed in application leading to ‘911 Patent.  4-2: Terminal disclaimer filed in application leading to ‘638 Patent.  4-3: Terminal disclaimer filed in application leading to ‘071 Patent.  4-4: Terminal disclaimer filed in application leading to ‘499 Patent. • Exhibit 5–Examiner’s OTDP rejections on application leading to the ‘527 Patent. Case 2:17-cv-08906-DOC-JPR Document 40 Filed 08/06/18 Page 55 of 55 Page ID #:188