Ipa Technologies Inc. v. Amazon.Com, Inc. et alREPLY BRIEF re MOTION to DismissD. Del.April 21, 2017{01205479;v1 } IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE IPA TECHNOLOGIES, INC., Plaintiff, v. AMAZON.COM, INC. and AMAZON DIGITAL SERVICES, LLC, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) The Honorable Richard G. Andrews Civil Action No. 1:16-CV-01266-RGA JURY TRIAL DEMANDED REPLY OF DEFENDANTS AMAZON.COM, INC. AND AMAZON DIGITAL SERVICES, LLC IN SUPPORT OF MOTION TO DISMISS PURSUANT TO FED. R. CIV. P. 12(b)(6) Of Counsel: J. David Hadden Saina S. Shamilov Ravi Ranganath Todd R. Gregorian FENWICK & WEST LLP 801 California Street Mountain View, California 94041 (650) 988-8500 Hilary L. Preston VINSON & ELKINS LLP 666 Fifth Avenue, 26th Floor New York, New York 10103 (212) 237-0000 Jeffrey T. Han VINSON & ELKINS LLP 2801 Via Fortuna, Suite 100 Austin, Texas 78746 (512) 542-8400 Steven J. Balick (#2114) sbalick@ashby-geddes.com Andrew C. Mayo (#5207) amayo@ashby-geddes.com ASHBY & GEDDES, P.A. 500 Delaware Avenue, 8th Floor P.O. Box 1150 Wilmington, Delaware 19899 (302) 654-1888 Counsel for Defendants AMAZON.COM, INC. and AMAZON DIGITAL SERVICES, LLC April 21, 2017 Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 1 of 14 PageID #: 259 - i - TABLE OF CONTENTS I. INTRODUCTION -------------------------------------------------------------------------------- - 1 - II. IPA’S PATENTS ATTEMPT TO MISAPPROPRIATE OVER A DECADE OF SUBSEQUENT RESEARCH IN NATURAL LANGUAGE PROCESSING. ----------------------------------------------------------------------------------- - 1 - III. THE IPA PATENTS DISCLOSE AND CLAIM A RESULT RATHER THAN A SPECIFIC TECHNICAL SOLUTION FOR ACHIEVING IT. --------------------------------------------------------------------------------- - 2 - IV. IPA’S CLAIMS RECITE NO INVENTIVE CONCEPT, AND INSTEAD RELY ON GENERIC COMPONENTS ARRANGED IN A CONVENTIONAL OR NON-SPECIFIC MANNER. --------------------------------------------------------------- - 6 - V. NO CLAIM CONSTRUCTION ISSUE OR FACT DISPUTE PREVENTS THE COURT FROM DECIDING PATENT-ELIGIBILITY ON THE PLEADINGS. ------------------------------------------------------------------------------------- - 7 - A. IPA Does Not Identify Any Claim Construction Issue Relevant to the Eligibility of Its Claims. ----------------------------------------------------------- - 7 - B. The Court Need Not Resolve Any Fact Dispute to Decide the Motion. ------------ 9 VI. CONCLUSION --------------------------------------------------------------------------------- - 10 - Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 2 of 14 PageID #: 260 - ii - TABLE OF AUTHORITIES Cases: Page(s) Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266 (Fed. Cir. 2016), cert. denied, No. 16-1047, 2017 WL 844050 (Apr. 17, 2017) ------------------------------------------------------------------------- 6, 9 Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016), cert. denied, No. 16-1046, 2017 WL 844031 (Apr. 17, 2017) ---------------------------------------------------------------------------- 5 Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016) ---------------------------------------------------------------- 5, 8 Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 2511 (2016) ----------------------- 9 Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012) ------------------------------------------------------------------- 7 Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) ------------------------------------------------------------------- 7 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) ------------------------------------------------------------------- 7 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015) ---------------------- 7-9 CyberFone Sys. LLC v. Cellco P’ship, 885 F. Supp. 2d 710 (D. Del. 2012), aff’d sub nom. Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014) ------------------------------ 8 DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014) ------------------------------------------------------------------- 4 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) ------------------------------------------------------------------- 3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) ------------------------------------------------------------------- 4 FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016) ------------------------------------------------------------------- 9 In re TLI Comm’cns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) ----------------------------------------------------------------- 6, 10 Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 3 of 14 PageID #: 261 - iii - TABLE OF AUTHORITIES (Continued) Page(s) InfoGation Corp. v. ZTE Corp., No. 16-cv-01901-H-JLB, 2017 WL 1135638 (S.D. Cal. Mar. 27, 2017) ----------------- 4, 5 Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir. 2017) ------------------------------------------------------------------- 9 Intellectual Ventures I LLC v. Mfrs. & Traders Trust Co., 76 F. Supp. 3d 536 (D. Del. 2014) ---------------------------------------------------------------- 8 Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) ------------------------------------------------------------------- 9 Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015) ---------------------------------------------------------------- 6, 7 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) ------------------------------------------------------------------------------- 2, 9 OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015) ------------------ 6, 7, 9 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), cert. denied sub nom. Ultramercial, Inc. v. WildTangent, Inc., 135 S. Ct. 2907 (2015) ------------------------------------------------------ 7 Visual Memory LLC v. Nvidia Corp., No. CV 15-789-RGA, 2016 WL 3041847 (D. Del. May 27, 2016) (Andrews, J.), appeal docketed, No. 16-2254 (Fed. Cir. June 28, 2016) ----------------- 6, 8 Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 4 of 14 PageID #: 262 ‐ 1 ‐ I. INTRODUCTION IPA attempts to characterize its patents as disclosing Siri, a popular natural language processing application. But the IPA patents were filed in 1999—over a decade before the Siri application was developed and launched in 2010. IPA’s attempt to misappropriate over a decade of hard work by others through its general, functional claims demonstrates exactly why the Court should grant Amazon’s motion. IPA claims its patents disclose a specific technological solution, but it points only to the result the patents seek to achieve—responding to a user request—rather than any specific technological means to achieve it. And it does not identify any inventive concept that would save the patents from ineligibility. It points to the use of “multi-modal dialogue,” by which it means asking for additional non-spoken information to clarify a spoken request. But the claims do not contain any technical solution for accomplishing this goal. Such claims fail under Section 101 as a matter of law. IPA’s attempt to delay a determination of invalidity until after claim construction or summary judgment likewise fails. IPA does not propose any claim construction or identify any issue of fact that would save its claims. Federal Circuit law is clear: where, as here, the claimed subject matter is apparent on the face of the patent, courts can resolve patent eligibility as a matter of law on the pleadings. IPA’s patents on their face are directed to the abstract idea of responding to a spoken request and are ineligible under Section 101. II. IPA’S PATENTS ATTEMPT TO MISAPPROPRIATE OVER A DECADE OF SUBSEQUENT RESEARCH IN NATURAL LANGUAGE PROCESSING. IPA does not, and cannot, identify a specific technological advance in the claims of its patents. Instead, it attempts to skate by on its categorical assertion that its patents “are the Siri patents.” (Opp. at 1 (emphasis in original).) They are not. The asserted patents claim priority to an application filed in 1999. (Opp. at 5.) And, by IPA’s own admission, Siri, Inc. did not release Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 5 of 14 PageID #: 263 - 2 - the Siri natural language processing application until 2010. (Opp. at 2 (“The technology [Siri] was demonstrated as an iPhone app at technology conferences and later released as an iPhone 3GS app in February 2010.”).) Indeed, the seminal “Siri patent,” U.S. Patent No. 9,548,050, assigned to Apple Inc.—not IPA—and titled “Intelligent Automated Assistant,” was filed in 2012 and claims priority to a provisional application filed in 2010—a decade after IPA’s patents. It shares only one common inventor (out of eight total) with the IPA patents.1 IPA’s recounting of this history only confirms that its patents attempt to claim a result— meaningful computer response to spoken requests—that would only be achieved through a decade of inventive work by others. Section 101 provides an important safeguard against just these sorts of claims, which seek to preempt rather than promote innovation. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88 (2012). IPA’s patents are invalid under Section 101. III. THE IPA PATENTS DISCLOSE AND CLAIM A RESULT RATHER THAN A SPECIFIC TECHNICAL SOLUTION FOR ACHIEVING IT. While IPA appears to dispute that its claims are directed to the idea of responding to a spoken request, it acknowledges that the purported inventions “provide a system, method, and article of manufacture for navigating network-based electronic data sources in response to spoken input requests.” (Opp. at 10; see also Opp. at 4 (inventors “sought to . . . allow a user to speak directly in terms of what the user actually wants, i.e., in natural language, instead of speaking in terms of ‘arbitrary navigational structures’” (quoting ’021 patent at 1:63-2:3)).) Nowhere in its twenty-page brief, however, does IPA identify any specific solution purportedly described or claimed in its patents for achieving this result. Indeed, in attempting to articulate the purported 1 Nor did the IPA patents result from the DARPA-funded research to develop a Cognitive Assistant that Learns and Organizes (“CALO”). (Opp. at 2; see also D.I. 1 (“Compl.”) ¶ 10.) The CALO project did not begin until 2003—four years after the filing of IPA’s patents—and did not conclude until 2008. (See, e.g., July 16, 2003 DARPA press release, available at: https://web.archive.org/web/20040613012808/http:/www.darpa.mil:80/body/newsitems/pdf/pal.p df.) Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 6 of 14 PageID #: 264 - 3 - solution, IPA only rehashes the problem the patents purport to solve. (Opp. at 10 (patents “address these needs [the problem of navigating electronic data sources] ‘by providing a system, method, and article of manufacture for navigating network-based electronic data sources in response to spoken input requests’” (emphasis in original) (quoting ’021 patent at 2:27-30)); id. (“the asserted claims can only be read as providing a technological improvement or solution specific to navigating network-based electronic data sources”).) That is because the patents do not claim any solution. Rather than claiming any particular way of achieving their result, i.e. some special programming or algorithm, the patents just claim any system that performs the functions of receiving a spoken request, rendering an interpretation, and constructing a navigation query using it. Indeed, the claims do not recite any specific way to perform the claim step “rendering an interpretation of the spoken request”—the core of the patents’ idea. (See, e.g., ’021 patent at cl. 1.) Neither does the specification, which states only that this step should “[p]referably” include “speech recognition” and “natural language parsing” using existing technology. (Id. at 7:14-18 (“[p]referably this step includes performing speech recognition in order to extract words from the voice data, and further includes natural language”); 7:19-29 (“speech recognition” is performed by the “speech recognition engine,” which is a “commercial quality, speech recognition engine[] [that is] readily available on the market”); 7:54-62 (“natural language parsing” performed using conventional system that predated the patents, “Gemini Natural Language Understanding System”).) IPA elsewhere characterizes the claimed inventions as “resolv[ing] errors and ambiguities in spoken input in a user-friendly manner by engaging the user in a multi-modal dialogue.” (Opp. at 1.) IPA’s focus on this limitation does not address the claims as a whole, and conflates step 1 and step 2 of the Alice analysis. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 7 of 14 PageID #: 265 - 4 - (Fed. Cir. 2016). But even accepting IPA’s characterization, the idea of “engaging the user in a multi-modal dialogue” is just that—an idea or aspiration without any specific manner of achieving it. This, too, is not a specific technical solution. Contrary to IPA’s assertion, its claims are unlike those upheld in Enfish and DDR Holdings. Unlike the claims in Enfish, IPA’s claims do not disclose any new data structure or specific algorithm. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336-37 (Fed. Cir. 2016) (claims disclosed a new “self-referential” data structure and an “algorithm” to implement the structure). And unlike the claims in DDR Holdings, IPA’s claims do not modify the conventional operation of computing or internet technology. DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014). IPA’s patents claim the result of responding to a spoken request, relying on conventional technology or future developments to achieve it. Nor are IPA’s claims similar to those at issue in InfoGation Corp. v. ZTE Corp., No. 16- cv-01901-H-JLB, 2017 WL 1135638 (S.D. Cal. Mar. 27, 2017)—an opinion from a district court in the Southern District of California upon which IPA heavily relies. There, at least in the view of the district court, the claims improved an existing technological process: “how an online server communicates in real time with a local mapping database within a mobile navigation” to provide a user with real-time information such as traffic and road conditions. Id. at *6. According to the InfoGation patent, existing navigation software required real-time route data to be transmitted between computers in a proprietary format. Id. This created problems: for example, the proprietary server could not be used with navigation systems and mapping databases from other vendors, and it required high bandwidth communication channels. Id. According to the district court, the patent disclosed a technical solution to this problem: using a non-proprietary, natural language description to format the route data sent by a computer to the local mapping database. Id. By having the server generate data in a non- proprietary format, the patent made it easier for Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 8 of 14 PageID #: 266 - 5 - navigation systems from any vendor to work with the server. And by using readily compressible text, route data could be sent over lower bandwidth channels. Id. Although the claims did not include a particular algorithm for generating the natural language description of the route data, the specification, unlike the specification here, provided a detailed technical description and examples. (See U.S. Patent No. 6,292,743) at cols. 9-10.) Notably, the InfoGation court distinguished the use of natural language to communicate between computers from the use of natural language to obtain information for a human user. InfoGation, 2017 WL 1135638, at *6 (claims were directed to providing data “between technical components within the network/system” and not simply “directed to the idea of providing directions in a natural language to a person, such as the end user in a navigational system.”). IPA’s claims relate to direct natural language communication with users—i.e., they are the type of claim that the InfoGation court expressly distinguished. They recite functions that are not unique to computing technology and do not disclose any detail for implementing the functions. The Federal Circuit found results-focused claims like IPA’s ineligible in Ameranth and Affinity/DIRECTV. In Ameranth, the claims were directed to software for generating menus with particular features. But rather than “claim[ing] a particular way of programming or designing the software to create menus that have these features,” they “merely claim[ed] the resulting systems.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016). In Affinity/DIRECTV, the claims were directed to a system for streaming user-selected out-of-market radio over the internet. But the claims recited that result “untethered to any specific or concrete way of implementing it.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1256 (Fed. Cir. 2016), cert. denied, No. 16-1046, 2017 WL 844031 (Apr. 17, 2017). IPA’s claims do exactly this, and therefore are Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 9 of 14 PageID #: 267 - 6 - not directed to an improvement of an existing technological process.2 IV. IPA’S CLAIMS RECITE NO INVENTIVE CONCEPT, AND INSTEAD RELY ON GENERIC COMPONENTS ARRANGED IN A CONVENTIONAL OR NON- SPECIFIC MANNER. Not only does IPA fail to identify any specific solution in its patents, but it also fails to identify any inventive concept in its claims. The primary element IPA points to as purportedly supplying an inventive concept is the idea of “multi-modal dialogue”—soliciting user feedback using a “non-spoken modality.” (Opp. at 19.) For example, the patents describe an embodiment that purportedly would provide a menu list of movies in response to a user’s spoken request to see “that movie starring and directed by Clint Eastwood.” (’021 patent at 11:24-53.) The user could then select a movie from the list using a “convenient [non-verbal] input modality” such as buttons on a generic remote control. (Id. at 11:54-60.) But the claims do not describe any solution for interpreting and generating a menu list from the user’s initial query. The idea of multi-modal dialogue is yet another goal, not a way to accomplish it. This is not inventive. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (claim patent- ineligible where patent did not describe the element claimed to be the innovation). IPA separately asserts that its claims recite an inventive concept as an ordered combination, contending that its claims require a “specific way of doing something.” (Opp. at 18.) But the 2 Contrary to IPA’s assertion, Amazon does not bear the burden of proving the invalidity of each claim by clear and convincing evidence. (Opp. at 8.) See Visual Memory LLC v. Nvidia Corp., No. CV 15-789-RGA, 2016 WL 3041847, at *5 (D. Del. May 27, 2016) (Andrews, J.) (“Patent eligibility is a matter of law. With questions of law, the clear and convincing standard ‘has no application.’”(citation omitted) (quoting Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 114 (2011))), appeal docketed, No. 16-2254 (Fed. Cir. June 28, 2016). Accordingly, the Supreme Court in Alice and the Federal Circuit have resolved Section 101 patent-eligibility as a matter of law without applying the “clear and convincing” standard. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015); In re TLI Comm’cns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016); see also Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266 (Fed. Cir. 2016) (affirming grant of motion for judgment on the pleadings in the face of appellant’s argument that “clear and convincing” standard applied), cert. denied, No. 16-1047, 2017 WL 844050 (Apr. 17, 2017). Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 10 of 14 PageID #: 268 - 7 - specification makes clear that the patents do not require any specific configuration. Instead, the claimed functions may be “divide[d] and allocate[d]” in unspecified ways “between client and server.” (’021 patent at 6:41-43.) This makes the claims unlike those in Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348–49 (Fed. Cir. 2016), which disclosed a specific architecture to achieve the desired result. As noted in Amazon’s opening brief, the recited steps—receiving a spoken request, clarifying and interpreting the request, and querying a database based on that interpretation—are inherent to the idea of responding to any spoken request, not any “specific way” to do so. They are non-inventive. V. NO CLAIM CONSTRUCTION ISSUE OR FACT DISPUTE PREVENTS THE COURT FROM DECIDING PATENT-ELIGIBILITY ON THE PLEADINGS. The Court should reject IPA’s plea to defer ruling on Amazon’s motion because the Court need not construe the claims or resolve fact disputes before deciding patent-eligibility. Indeed, IPA does not identify any specific claim construction that would save its claims. Nor does it identify any issue of fact that must first be resolved. The Federal Circuit has repeatedly held that eligibility under Section 101 is a question of law that courts can resolve on the pleadings.3 The Court can and should do so here. A. IPA Does Not Identify Any Claim Construction Issue Relevant to the Eligibility of Its Claims. The very case IPA relies on to argue that claim construction is necessary actually supports the opposite point, as it states that claim construction is not a prerequisite to a determination under Section 101. Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1273 (Fed. 3 See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351-52 (Fed. Cir. 2014) (affirming pleading stage judgment of ineligibility under Section 101); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015) (same); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1349 (Fed. Cir. 2014) (same), cert. denied, 136 S. Ct. 119 (2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713, 717 (Fed. Cir. 2014) (same), cert. denied sub nom. Ultramercial, Inc. v. WildTangent, Inc., 135 S. Ct. 2907 (2015); Internet Patents, 790 F.3d at 1348-49 (same). Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 11 of 14 PageID #: 269 - 8 - Cir. 2012). Where a court understands the “basic character of the claimed subject matter,” patent eligibility properly may be resolved on the pleadings. Content Extraction, 776 F.3d at 1349. Absent “a compelling reason” why claim construction is required, the Court should not defer ruling on a Section 101 motion. CyberFone Sys. LLC v. Cellco P’ship, 885 F. Supp. 2d 710, 715 (D. Del. 2012), aff’d sub nom. Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014). IPA identifies no claim construction that would change the basic character of what its patents claim. See Visual Memory LLC v. Nvidia Corp., No. CV 15-789-RGA, 2016 WL 3041847, at *5 (D. Del. May 27, 2016) (Andrews, J.) (declining to defer ruling where plaintiff failed to offer a claim construction or explain its relevance to the Section 101 analysis); Intellectual Ventures I LLC v. Mfrs. & Traders Trust Co., 76 F. Supp. 3d 536, 544 (D. Del. 2014) (same). It implies that the “soliciting” and “refining” steps and the “client device” term should be construed (Opp. at 7), but does not propose constructions for these terms, let alone explain how those constructions would affect the eligibility of its claims. It does offer a construction for the term “navigation query” as “an electronic query, form, series of menu selections, or the like; being structured appropriately so as to navigate a particular data source of interest in search of desired information” that, according to IPA, places “meaningful limits” on the claims. (Id., quoting ’021 patent at 8:55-58.) But under IPA’s construction, a “navigation query” can still be any electronic search request of any undefined and limitless structure so long as it somehow achieves the desired result of navigating to a particular source of interest. Indeed, the specification confirms that skilled practitioners would have to create these queries themselves using either conventional or yet-to-be-developed means not recited in the claims. (’021 patent at 9:9-14.) The “navigation query” does not confine the claimed invention to any specific application. Ameranth, 842 F.3d at 1243-44. IPA thus has identified no compelling reason to delay resolution of Amazon’s motion. Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 12 of 14 PageID #: 270 - 9 - B. The Court Need Not Resolve Any Fact Dispute to Decide the Motion. Contrary to IPA’s contention, the Court need not first resolve any fact issues, including any related to preemption or whether the claim limitations “were ‘well-understood, routine, or conventional’ as of the date of the inventions,” before finding the IPA claims ineligible under Section 101. (Opp. at 8-9.) As to preemption, if the Court determines that the IPA patents “disclose patent ineligible subject matter under the Mayo framework . . . preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 2511 (2016). Thus, the Court need not engage in any separate preemption analysis if it finds the claims ineligible under Alice. Moreover, courts routinely analyze Section 101 eligibility including preemption and whether a claim discloses an improvement to computing technology on the pleadings. See, e.g., Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1320-21 (Fed. Cir. 2016); OIP, 788 F.3d at 1360, 1363; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed. Cir. 2016). And the Court may properly determine whether the claims recite generic, routine and conventional technology by reference to the pleadings alone. The Federal Circuit has in fact expressly approved of “the practice of taking note of fundamental economic concepts and technological developments” in deciding motions on the pleadings. Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016), cert. denied, No. 16-1047, 2017 WL 844050 (Apr. 17, 2017). Nor can there be any genuine factual dispute regarding whether the claimed “receiving,” “rendering,” and “transmitting” steps are basic computing functions. (Opp. at 9.) Such steps are generic and non-inventive. See, e.g., Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1329 (Fed. Cir. 2017) (observing that “sending and receiving information to execute the database search, e.g., receiving a request for information and delivering records” were routine computer functions and non-inventive); Content Extraction, 776 F.3d at Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 13 of 14 PageID #: 271 - 10 - 1348 (claim requiring use of a conventional scanner to recognize and store data non-inventive); In re TLI Comm’cns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (claim requiring recording, storing, and transmitting images and extracting information from the received data disclosed no inventive concept). The IPA patents claim patent ineligible subject matter on their face and are invalid under Section 101. VI. CONCLUSION For the foregoing reasons, Amazon respectfully requests that the Court find the claims of the IPA patents invalid for failure to claim patent-eligible subject-matter under Section 101 and grant Amazon’s motion. Dated: April 21, 2017 Respectfully submitted, Of Counsel: J. David Hadden Saina S. Shamilov Ravi Ranganath Todd R Gregorian (pro hac vice pending) FENWICK & WEST LLP 801 California Street Mountain View, California 94041 (650) 988-8500 Hilary L. Preston VINSON & ELKINS LLP 666 Fifth Avenue, 26th Floor New York, New York 10103 (212) 237-0000 Jeffrey T. Han VINSON & ELKINS LLP 2801 Via Fortuna, Suite 100 Austin, Texas 78746 (512) 542-8400 /s/ Andrew C. Mayo Steven J. Balick (#2114) sbalick@ashby-geddes.com Andrew C. Mayo (#5207) amayo@ashby-geddes.com ASHBY & GEDDES, P.A. 500 Delaware Avenue, 8th Floor P.O. Box 1150 Wilmington, Delaware 19899 (302) 654-1888 Counsel for Defendants AMAZON.COM, INC. and AMAZON DIGITAL SERVICES, LLC Case 1:16-cv-01266-RGA Document 17 Filed 04/21/17 Page 14 of 14 PageID #: 272