EcoServices, LLC v. Certified Aviation Services, LLCOPPOSITION to NOTICE OF MOTION AND MOTION for Judgment of Patent Ineligibility of the '262 Patent 271C.D. Cal.August 15, 20181 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 Ronald J. Pabis (pro hac vice) rpabis@goodwinlaw.com Stephen K. Shahida (pro hac vice) sshahida@goodwinlaw.com Patrick J McCarthy (pro hac vice) pmccarthy@goodwinlaw.com Myomi Tse Coad (pro hac vice) mcoad@goodwinlaw.com GOODWIN PROCTER LLP 901 New York Avenue NW Washington, DC 20001 Tel.: +1 202 346 4000 Fax.: +1 202 346 4444 Natasha E. Daughtrey (SBN 319975) ndaughtrey@goodwinlaw.com GOODWIN PROCTER LLP 601 S Figueroa Street 41st Floor Los Angeles, California 90017 Tel.: +1 213 426 2500 Fax.: +1 213 623 1673 Attorneys for Plaintiff ECOSERVICES, LLC UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA EASTERN DIVISION ECOSERVICES, LLC, Plaintiff, v. CERTIFIED AVIATION SERVICES, LLC, Defendant. Case No. 5:16-cv-01824-RSWL-SPx ECOSERVICES’ OPPOSITION TO DEFENDANT’S MOTION FOR JUDGMENT OF PATENT INELIGIBILITY OF THE ’262 PATENT Judge: Hon. Ronald Sing Wai Lew Complaint Filed: April 22, 2016 Trial Date: June 26, 2018 Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 1 of 19 Page ID #:16692 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 i TABLE OF CONTENTS I. INTRODUCTION ........................................................................................... 1 II. ANALYSIS ..................................................................................................... 1 A. CAS has Waived its 35 U.S.C. § 101 Affirmative Defense ................. 1 B. The ’262 Patent Claims are Patentable Under the Alice Framework ............................................................................................ 4 C. CAS’s Motion Fails the First Step of Alice .......................................... 5 D. CAS Equally Fails the Second Step Under Alice ................................. 8 E. CAS Misstates the Law ....................................................................... 12 III. CONCLUSION ............................................................................................. 14 Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 2 of 19 Page ID #:16693 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 ii TABLE OF AUTHORITIES Page(s) Federal Cases Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)................................................................................... passim In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) ................................................................................ 5 Bilski v. Kappos, 561 U.S. 593 (2010) ............................................................................................... 4 Bone Care Int’l, LLC v. Pentech Pharm., Inc., No. 1:08-cv-01083 (N.D. Ill. Sept. 30, 2010) ........................................................ 2 Daiichi Pharm. Co. v. Apotex, Inc., No. 03-937 (WGB), 2005 U.S. Dist. LEXIS 26059 (D.N.J. Nov. 1, 2005) ....................................................................................................................... 2 Diamond v. Diehr, 450 U.S. 175 (1981) ......................................................................................... 5, 11 Exergen Corp. v. KAZ USA, Inc. Case 2016-2315 (Fed. Cir., March 8, 2018) ................................................... 10, 11 Gottschalk v. Benson, 409 U.S. 63 (1972) ........................................................................................... 5, 11 Jones v. Hardy, 727 F.2d 1524 (Fed. Cir. 1984) .............................................................................. 5 King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010) .............................................................................. 5 Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).................................................................................. 4, 8, 11 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) .................................................................. 9, 12, 13 OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) ............................................................................ 13 Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 3 of 19 Page ID #:16694 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 iii Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 9 Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) ................................................................................ 8 Federal Statutes 35 U.S.C. § 101 .............................................................................................................. passim § 282 ....................................................................................................................... 5 Other Authorities Fed. R. Civ. P. 12 ................................................................................................. 1, 2, 3 Fed. R. Civ. P. 50 ................................................................................................. 1, 2, 6 Fed. R. Civ. P. 56 ......................................................................................................... 1 Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 4 of 19 Page ID #:16695 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 1 Plaintiff EcoServices, LLC (“EcoServices”) respectfully opposes Defendant Certified Aviation Services, LLC’s (“CAS”) Motion for Judgment of Patent Ineligibility of U.S. Patent No. 9,162,262 (“the ’262 Patent”) as follows. I. INTRODUCTION The ʼ262 Patent claims a system for washing jet engines. The asserted claims disclose components configured in a certain way to work together to optimize engine washing, thus promoting safe and efficient air travel. The jury heard Mr. Sebastian Nordlund, one of the named inventors of the ʼ262 Patent, testify about the details of his inventions. That testimony stands unrebutted. The trial evidence also showed that the application that led to the ʼ262 Patent went through rigorous examination before the Patent Office. Additionally, the jury rejected CAS’s unrelenting attacks on the validity of the inventions claimed in the ’262 Patent. In answering the Complaint, CAS had generally asserted every statutory basis to allege the ’262 Patent is invalid, although, as time went on, CAS dropped many of its defenses. One of CAS’s invalidity allegations, the subject of the instant Motion, was a boilerplate assertion that the ’262 Patent is unpatentable under 35 U.S.C. § 101 (“Section 101”). But CAS neither provided an expert report with additional detail in support of the allegation, nor did it file a motion to dismiss the case under Fed. R. Civ. P. 12 or move for summary judgment under Fed. R. Civ. P. 56 or judgment as a matter of law under Fed. R. Civ. P. 50 at any stage on this ground. That is, not until after the jury returned a verdict in favor of EcoServices on every issue at trial. Not only has CAS waived its Section 101 defense, but its attempt to revive the argument now, post-verdict, also fails as a matter of substantive patent law. II. ANALYSIS A. CAS has Waived its 35 U.S.C. § 101 Affirmative Defense CAS has waived any invalidity argument under 35 U.S.C. § 101. Although CAS’s invalidity contentions at the outset of this litigation included a generic Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 5 of 19 Page ID #:16696 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 2 allegation under Section 101, by the time the case proceeded to expert reports, CAS failed to include even a passing reference to this allegation in Dr. Micklow’s August 31, 2017 invalidity expert report. Indeed, where a defense expert fails to address an affirmative defense, such as under Section 101, in his or her expert report, that defense has been considered as abandoned. See Bone Care Int’l, LLC v. Pentech Pharm., Inc., No. 1:08-cv-01083, slip op. at 6, 10 (N.D. Ill. Sept. 30, 2010) (granting plaintiff’s motion in limine as to the defense of lack of utility because defendants failed to “point to any evidence that their experts addressed defenses other than obviousness in their reports…”); see also Daiichi Pharm. Co. v. Apotex, Inc., No. 03-937 (WGB), 2005 U.S. Dist. LEXIS 26059, at *15 (D.N.J. Nov. 1, 2005) (holding that defendant has waived is § 102(f) affirmative defense where defendant “missed several opportunities throughout discovery to raise the section 102(f) defense, to fully flesh out the basis behind the claim, and to give [plaintiff] ample notice and time to demonstrate why the affirmative defense should not succeed.”). Moreover and not surprisingly, Dr. Micklow’s trial testimony was void of any reference to this argument. CAS opted to pursue other invalidity defenses and effectively dropped this defense long before the trial. As the Court is aware, the current trend in patent cases for a viable Section 101 defense is for the defendant to move for dismissal on the pleadings under Fed. R. Civ. P. 12. CAS simply failed to do so here. To the extent resolution of patentability under Section 101 depends on claim construction, accused infringers can also raise the issue as part of the Markman claim construction process. CAS also failed to do that. Alternatively, if the defense remains viable at the close of discovery, defendants can move for a summary judgment motion on this issue. CAS again failed to so move.1 1 CAS did not even raise the issue as part of its Rule 50(a) motion. Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 6 of 19 Page ID #:16697 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 3 Clearly, a successful validity challenge at the pleadings stage brought under Fed. R. Civ. P. 12, alternatively raised later during the claim construction stage, or even later still during the summary judgment phase as provided by the Court’s Scheduling Order, could have avoided significant time and associated financial cost. It stands to reason then CAS itself never believed the argument to be half plausible. Why else would CAS lie in wait throughout the pleadings, fact and expert discovery, summary judgment, and trial, only to move on the issue after the trial? Affirmative defenses are not meant to be used as the proverbial “card up the sleeve” in the post-verdict context after the defendant loses on all issues in a jury trial. There is simply no reasonable explanation as to why CAS failed to move on this issue pursuant to the various opportunities afforded to CAS under this Court’s controlling Scheduling Order. Either the instant motion is meant as an untimely grasp at the straws, or it is intended to further run up the litigation cost for EcoServices. Neither goal should be rewarded. Finally, EcoServices takes issue with CAS’s attempt to excuse its untimely filing by suggesting that this Court invited briefing on the issue as part of the post- verdict motions practice. Specifically, CAS states that the Court, after the jury returned its verdict, “instructed. [sic] CAS to file briefing on the remaining issues, including ‘the 101’ issue.” ECF No. 271 at 1. The fact remains, however, that it was CAS that proposed briefing the issue while the parties were awaiting the jury to return the verdict. Reporter’s Transcript of Proceedings (“Trial Tr.”) July 2, 2018 at 136:2-25. Then, after the jury returned the verdict and the Court excused the jury, the Court simply asked the parties regarding any agreed briefing schedule for post- verdict motions, stating “And we will give you a hearing date if I need one.” Id. at 146:13-14. The Court went on to ask for clarification of the issues CAS was proposing to brief, asking “And that is for the 101 and the 112 motion?” Id. at 146:14. Counsel for CAS then confirmed as much. Id. at 146:15. EcoServices’ counsel promptly noted the untimeliness of raising those issues post-verdict and Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 7 of 19 Page ID #:16698 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 4 added that EcoServices will address the waiver in response to any such filing. Id. at 136:21-24. Although unsettling, it is not surprising that CAS paints this sequence of events as the Court’s instruction to brief the Section 101 issue; CAS has waived the argument. B. The ’262 Patent Claims are Patentable Under the Alice Framework Even assuming CAS has not waived its patentability defense, its argument is meritless, and its Motion should be denied, as a matter of law. Section 101 of the Patent Act provides that a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The statute is inclusive and judicial exceptions to it are limited. Indeed, only three narrow exceptions to the broad patent-eligibility principles of Section 101 exist - “laws of nature, physical phenomena, and abstract ideas.” Bilski v. Kappos, 561 U.S. 593, 601-02 (2010) (“Bilski II”) (citation omitted). The Supreme Court has reiterated its reluctance to broadly apply these three narrow exceptions: “[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (internal citation omitted)). So, when it comes to a patentability analysis under Section §101, the Supreme Court has instructed the courts to “first determine whether the claims at issue are directed to a patent ineligible concept.” Alice, 134 S. Ct. at 2355 (emphasis added). If this threshold determination is not met, the inquiry ends. Otherwise, the court moves to the second step of the inquiry to “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into patent-eligible application.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298). Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 8 of 19 Page ID #:16699 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 5 In addition, the appropriate analysis of whether a claim satisfies Section 101 requires viewing the claim as a whole, and not individual limitations, let alone random passages in the specification, or the title. Diamond v. Diehr, 450 U.S. 175, 188-89 (1981); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1277 (Fed. Cir. 2010) (“The Supreme Court has stated that a § 101 patentability analysis is directed to the claim as a whole, not individual limitations.”). By definition, “each claim must be considered as defining a separate invention.” Jones v. Hardy, 727 F.2d 1524, 1528 (Fed. Cir. 1984) (citing 35 U.S.C. § 282). “[I]t is irrelevant that any individual step or limitation of such processes by itself would be unpatentable under § 101.” In re Bilski, 545 F.3d 943, 958 (Fed. Cir. 2008). Claims - even ones directed to abstract ideas - are patentable where the claim (i) contains an “inventive concept,” Alice, 134 S. Ct. at 2357; (ii) is “more than a drafting effort designed to monopolize” the abstract idea, id. at 2358 (citation omitted); (iii) “improve[s] an existing technological process,” id.; or (iv) supplies a “‘new and useful’ application of the idea.” Id. at 2357 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). C. CAS’s Motion Fails the First Step of Alice The ’262 Patent claims an improved system for washing jet engines and it is not directed to an abstract idea. As its expert, Dr. Micklow, did during trial, CAS continues to mischaracterize the claimed inventions as requiring automation. See, e.g., Trial Tr. June 28, 2018 at 183:7-12 ( “You know, when I talk about the patent, right in the title of the patent it says automated detection and control system for high pressure application wash. And so that information detector right from the title in the patent has to be automated. So it’s an automated detection and control system.”). CAS repeatedly injects some variant of the term (e.g., automated, automation, automate) throughout the Motion. Based upon this overuse of the term, CAS then declares that the “asserted claims are directed to automating the conventional process of washing engines” which CAS labels as an abstract idea. ECF No. 271 at 9. In doing so, CAS ignores the language of the asserted claims, Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 9 of 19 Page ID #:16700 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 6 disregards this Court’s claim construction analysis as well as the Markman Order, and misapplies the principles annunciated by the Supreme Court in Alice, and its Federal Circuit progeny. First, although the claimed invention undoubtedly introduces some level of automation, what is claimed is a specific combination of hardware components and no variant of the term “automate” appears in the asserted claims. CAS attempted to conflate the disclosure of automated embodiments (like RFID) in the ’262 Patent specification with the claimed inventions during trial but the Court and ultimately the jury rejected those efforts. See, e.g., Trial Tr. June 28, 2018 at 183:24-184:3 (“Well, we have to take the operator out of the picture. In the body of the patent, they talk about eliminating human error associated with the selection of the engine and therefore, the information detector must be automated to eliminate foreseeable human error.”); see also Trial Tr. June 28, 2018 at 156:3-5 (Counsel for CAS arguing under Rule 50 that the accused Cyclean does not infringe the ’262 Patent because “it’s clear that the patent as indicated by the title and the examples provided has to have an automatic detection system.”). As with infringement where the focus of the inquiry must remain on the claims, (as opposed to the title or the specification), so, too, with the patentability analysis under Alice. See Alice, 134 S. Ct. at 2355. Thus, the very premise of CAS’s motion is flawed as a matter of basic patent law. What is claimed in the ’262 Patent is not automation, whether automation is abstract or otherwise. The claims are directed to the specific hardware configured as claimed to regulate the wash parameters in the turbine engine washing system. Second, to the extent CAS now, post-verdict, wants to reargue the meaning of the claims, that ship has unequivocally sailed. The parties engaged in extensive claim construction briefing under the Scheduling Order, and the Court issued its Markman Order on May 18, 2017. (ECF No. 80). The Court construed the meaning of the claims, the parties tried the case with the Court’s claim construction in mind, Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 10 of 19 Page ID #:16701 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 7 and the jury returned its verdict with that same construction in hand. CAS’s entire argument here is premised on the meaning of the claims, and as such, it amounts to an impermissible request for reconsideration of the Court’s May 18, 2017 Markman Order. As the Court recalls, during the claim construction phase of the case, the parties had a dispute as to whether the claimed “information detector” should have been construed to be limited to the automated embodiments from the specification, such as an RFID tag. EcoServices contended that these specification limitations should not be read into the claims because there is nothing in the claims, the written description, or the prosecution history dictating such an overly narrow reading of plain language. CAS, on the other hand, argued that the claimed information detector required these specific automated detection elements. See, e.g., ECF No. 75 at 8-10 (citing to “’262 Patent at Title” in support of its argument that “the heart of [the ’262 Patent] is an ‘automated detection and control system and method for high pressure wash application’ in order to minimize the risk of human error in manual operation.”) (emphasis in original). Ultimately, the Court squarely rejected CAS’s attempts to narrow the claims.2 Yet CAS reargues the claim construction once more. In the end, CAS’s reliance on the specification to reargue claim construction, while ignoring the actual language of the claims, is meant to justify CAS’s conclusion that the ’262 Patent is directed to an abstract idea. Such a results- oriented approach to a patentability analysis has been squarely rejected by the Federal Circuit. As the Federal Circuit has held, a patent claim should not be found to be for an unpatentable abstract idea unless that abstractness “exhibit[s] itself so 2 Unmoved, CAS continued to argue its non-infringement theory based on its own construction of the claim language repeatedly, including in filing a non-infringement summary judgement on that bases (ECF No. 104), which the Court denied in its entirety. Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 11 of 19 Page ID #:16702 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 8 manifestly as to override the broad statutory categories of eligible subject matter.” Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010) (emphasis added). Further, “inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.” Id. at 869. The asserted claims do not claim the abstract automation of an existing invention. The unrebutted trial testimony of one of the inventors, Mr. Nordlund, and EcoServices’ technical expert, Mr. Kushnick, showed the long-felt need for the claimed inventions. The same testimony also showed that the automated examples of the claimed information detector from the specification are just that: examples. See Trial Tr. June 27, 2018 at 84:11-18; see also id. at 198:7-25 (“Q. Were you here for Mr. Nordlund’s testimony this morning? A. Yes, I was. Q. He's the inventor of the ’262? A. Yes, sir. Q. Did you hear him say that, Mr. Nordlund say that the examples of the ’262 specifications are not the only examples of information detectors? A. Yes, sir, I heard that. Q. Do you agree with that? A. Yes, sir, I do.”). In any event the Court rejected CAS’s attempts at importing automation as a limiting language into the claims on multiple occasions. EcoServices, therefore, respectfully requests that the Court denies CAS’s yet another attempt at this argument, even if it is presented under the guise of the first step of an Alice inquiry. The ’262 Patent does not claim an abstract idea. D. CAS Equally Fails the Second Step Under Alice The Court can deny CAS’s Motion based on the fact that the asserted claims are not directed to an abstract idea without moving to the second step under Alice. Regardless, the Motion also fails under the second step of the analysis. The inquiry at step two looks to the presence of “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 (quoting Mayo, 132 S. Ct. at 1294). An element or combination of Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 12 of 19 Page ID #:16703 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 9 elements is not an inventive concept if and only if it “amounts to a mere instruction to ‘implement’ an abstract idea ‘on a computer’” or simply to “apply it.” Alice, 134 S. Ct. at 2358 (citation omitted). To force the facts of this case (including the relevant claim language) into that mold, CAS wrongly states the asserted claims “merely spell out the steps of that conventional process and say ‘automate it.’” ECF No. 271 at 11. Although CAS puts quotation marks around the phrase ‘automate it’, CAS fails to provide the Court with a citation as to where the term appears in the claims. The reason is simple: the claims do not use that phrase. In essence, CAS tries to adduce the “gist” of the invention through this obvious misstatement, while ignoring the entirety of the claim. This approach, however, violates a fundamental requirement in the Patent Act that has long served to ensure that innovation is properly secured under the law. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (stating “courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.”) (citations omitted); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (“It is a ‘bedrock principle’ of patent law that the ‘claims of a patent define the invention to which the patentee is entitled the right to exclude.’”) (citation omitted). As the trial evidence showed, from the time its provisional patent application was filed (Nov. 28, 2006) until the ’262 Patent issued (Oct. 20, 2015), it took almost 9 years. All told, the prosecution history of the patent contains 535 pages (JX419). Despite the detailed scrutiny the application faced at the Patent Office, CAS declares that the claimed invention “does not disclose a new method for automating” jet engine washing. ECF No. 271 at 11 (emphasis in original). According to CAS, the patent “simply spells out the steps of the conventional process and says ‘do it on a machine.’” Id. CAS is wrong. For the Court’s benefit, exemplary claim 1 of the ’262 Patent is reproduced below, lest the scope of the claim gets eroded in CAS’s characterization of the Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 13 of 19 Page ID #:16704 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 10 claim. The three underlined limitation are the only part of the claim that CAS addresses and proposes to re-construe in its tortured argument. 1. A system for washing turbine engines comprising: a washing unit for providing a washing liquid to the turbine engines; an information detector configured to gather information related to engine type; and a control unit configured to accept the information related to engine type from the information detector and to determine a washing program to be used as a function of the information relating to engine type from a set of preprogrammed washing programs, and further configured to regulate the washing unit according to washing parameters associated with the washing program used. It is facially clear that CAS is wrong in suggesting the claim simply applies automation to a conventional jet engine washing system. Instead, the claim requires certain configurations of the sub-components that in an inventive combination solve the problems long existing in conventional systems at the time of the invention. CAS’s argument that the ’262 Patent lacks inventive steps because it merely discloses a conventional washing process (Motion at 11), is not only wrong, it necessarily implicates underlying factual disputes. The evidentiary record on those issue developed at trial is extensive, although largely ignored in CAS’s Motion, apparently because the facts at trial do not prove, by clear and convincing evidence that the elements of the claim were merely well-understood, routine and conventional as required by the 101 analysis. See Exergen Corp. v. KAZ USA, Inc. Case 2016-2315 (Fed. Cir., March 8, 2018). In other words, in order to succeed in its motion, CAS needs to prove, by clear and convincing evidence, that the claim elements at issue were well-understood, routine and conventional. There was no such testimony at trial and the sparse portions of the transcript cited by CAS cannot support a finding that this underlying factual inquiry was proven by clear and convincing evidence. Such a finding would also be inconsistent with the jury’s Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 14 of 19 Page ID #:16705 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 11 findings when it decided those factual disputes in favor of EcoServices by rejecting CAS’s attempts to invalidate the ’262 Patent for the alleged obviousness in view of the prior art.3 Furthermore, in Alice, the Supreme Court indicated that a claim - even one directed to an abstract idea - is patentable where the claim is “more than a drafting effort designed to monopolize” the abstract idea, 134 S. Ct. at 2358 (citation omitted), or “improve[s] an existing technological process,” id., or supplies a “‘new and useful’ application of the idea.” Id. at 2357 (quoting Gottschalk, 409 U.S. at 67). Here, if the claims were assumed to be directed to automation (which they are not), they recite specific configurations of components, using prescribed connections to achieve the ultimate goal. This claimed configuration makes an improvement in the relevant technical field, in which, as the evidence showed, there was a real need for an improved jet engine washing solution. And as the jury concluded, the asserted claims were not obvious in view of any of the prior art that CAS presented during trial. Likewise, in Mayo, the Supreme Court after first considering the three claim steps individually and concluding that none gave rise to an inventive concept on its own, the Court considered the claim as a whole, inquiring whether “the three steps as an ordered combination adds [something more] to the laws of nature that is not already present when the steps are considered separately.” Mayo, 132 S. Ct. at 1298. As the Court explained, the “claims must be considered as a whole,” such that “a new combination of steps in a process may be patentable even though all the constituents . . . were well known and in common use before the combination was made.” Diehr, 450 U.S. at 188. 3 This question of fact underlying the Section 101 analysis and whether these facts were proven by clear and convincing evidence is one that is given clear error deference by the Federal Circuit. See Exergen Corp. v. KAZ USA, Inc. Case 2016- 2315 at p. 9. Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 15 of 19 Page ID #:16706 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 12 Here, it is telling that CAS never considers the claim as a whole. All machines, no matter how inventive, can be broken down into known elements. But resorting to that type of hindsight with the goal of destroying patent rights remains legally erroneous. E. CAS Misstates the Law Without citing any authority, CAS boldly asserts that the “abstract idea of automating a known process is not eligible for patent protection.” ECF No. 271 at 4. In fact, the Federal Circuit has rejected that notion. See, e.g., McRO, 837 F.3d 1299. In McRO, the asserted patents related to automating a 3-D animator’s task. The district court had ruled that the claims were drawn to the abstract idea of automating 3-D animation, dismissing the case on the pleadings. The Federal Circuit reversed. The Court repeated its previous caution that “courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, 837 F.3d at 1313 (citation omitted). Focusing on the building blocks of the claims, the Court concluded that it was those specific claimed features that allowed for the improvement realized by the invention, i.e. computer automation. The Court noted that that “processes that automate tasks that humans are capable of performing are patent eligible if properly claimed.” Id. Ultimately, the Court disagreed with the accused infringer’s assertion that the claims simply use a computer as a tool to automate conventional activity, stating “[w]hile the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.” Id. at 1314. McRO is directly on point here. The claimed system here, while it uses computer hardware and software and adds some level of automation, also uses a combined order of specific hardware, parameters and rules that form a specific system that is then used to create desired results: a more effective and efficient jet Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 16 of 19 Page ID #:16707 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 13 engine wash. CAS’s attempt to recast a less than handful of claim terms as generic parts fails on two fronts. First, to the extent CAS is redefining claim limitations, it is ignoring this Court’s claim construction Order. Second, just like in McRO, there is no record evidence that the specific combination of the claimed parts of the system is so generic to preempt any future use of computers in washing jet engines. As was the case in McRO, attorney argument alone cannot fill that void. To be sure, there are cases where courts have invalidated patents under the Alice construct. CAS cites some of those. But cases should not be cited for their mere words. And the cases that CAS cites are inapposite. As an example, CAS heavily relies upon OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015). In OIP, the Federal Circuit indeed upheld a dismissal of a case, again at the pleadings stage, based on unpatentability under 35 U.S.C. §101. But that decision was based on the facts of that case, and specifically the claim at issue. There, the claims were directed to the concept of offer-based price optimization. Claim 1 broadly recited a “method of pricing a product for sale,” and the specification describes the invention as an “automatic pricing method and apparatus for use in electronic commerce.” OIP, 788 F.3d at 1361-62. As the Court noted, the “concept of ‘offer based pricing’ is similar to other ‘fundamental economic concepts’ found to be abstract ideas by the Supreme Court and this court.” Id. at 1362. The asserted method claims in OIP are a far cry from the novel system claimed in the ’262 Patent that includes specific hardware used to regulate the wash parameters in the turbine engine washing system. CAS shows a total lack of respect for the trial process by ignoring the extensive trial testimony about the state of the prior art, the problems the inventors set out to solve, the challenges they faced and the solution that they arrived at, which incidentally was validated by the Patent Office after years of prosecution. No amount of attorney argument post-trial can erase the unrebutted trial testimony. Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 17 of 19 Page ID #:16708 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 14 III. CONCLUSION Even if the Court finds that CAS has not waived its Section 101 argument, the argument has no merit. By attacking the ’262 Patent as an abstract idea of “automating a conventional engine washing process,” CAS ignores the fact that for each advancement in technology, there are countless innovations in the manufacturing of the many building blocks of any technical field with the goal of making things cheaper, more efficient or more effective. The trial evidence showed the goal of the inventors here was to solve a functional problem. What they invented and ultimately claimed after years of scrutiny from the Patent Office, however, is the sole legal determinant of the scope of their intellectual property. CAS’s focus on the title, disparate passages from the specification, and CAS’s recitation of the “gist of the invention” is misplaced. Therefore, EcoServices respectfully requests that the Court denies CAS’s Motion. Dated: August 15, 2018 Respectfully submitted, By: /s/ Natasha E. Daughtrey Ronald J. Pabis rpabis@goodwinlaw.com Stephen K. Shahida sshahida@goodwinlaw.com Patrick J McCarthy pmccarthy@goodwinlaw.com Myomi Tse Coad mcoad@goodwinlaw.com GOODWIN PROCTER LLP 901 New York Avenue NW Washington, DC 20001 Tel.: +1 202 346 4000 Fax.: +1 202 346 4444 Natasha E. Daughtrey ndaughtrey@goodwinlaw.com GOODWIN PROCTER LLP 601 S Figueroa Street Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 18 of 19 Page ID #:16709 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 15 41st Floor Los Angeles, California 90017 Tel.: +1 213 426 2500 Fax.: +1 213 623 1673 Attorneys for Plaintiff: ECOSERVICES, LLC Case 5:16-cv-01824-RSWL-SP Document 278 Filed 08/15/18 Page 19 of 19 Page ID #:16710