Zkey Investments, Llc v. Facebook, Inc.

NOTICE OF MOTION AND MOTION for Summary Judgment as to of Invalidity Under 35 U.S.C. Section 101

C.D. Cal.August 30, 2016

COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 1. NOTICE OF MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION ZKEY INVESTMENTS, LLC Plaintiff, v. FACEBOOK, INC. Defendant. Case No. 2:16-cv-00782-RSWL-KS FACEBOOK, INC.’S NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 101 DATE: October 25, 2016 TIME: 10:00AM COURTROOM: 21 JUDGE: Hon. Ronald S. W. Lew COOLEY LLP MICHAEL G. RHODES (116127) (rhodesmg@cooley.com) 101 California Street, 5th Floor San Francisco, CA 94111-5800 Telephone: (415) 693-2000 Facsimile: (415) 693-2222 HEIDI L. KEEFE (178960) (hkeefe@cooley.com) MARK R. WEINSTEIN (193043) (mweinstein@cooley.com) ANDREW C. MACE (284484) (amace@cooley.com) 3175 Hanover Street Palo Alto, CA 94304-1130 Telephone: (650) 843-5000 Attorneys for Defendant Facebook, Inc. Case 2:16-cv-00782-RSWL-KS Document 53 Filed 08/30/16 Page 1 of 2 Page ID #:214 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 2. NOTICE OF MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that on October 25, 2016 at 10:00 a.m. or on the date and time ordered by the Court, in Courtroom 21 at the United States Courthouse, 312 North Spring Street Los Angeles, CA 90012-4701, 5th Floor, Judge Ronald S. W. Lew presiding, Defendant Facebook, Inc. (“Facebook”) will and hereby does move for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure that the asserted claims of U.S. Patent No. 6,820,204 are invalid under 35 U.S.C. § 101. This Motion is based on this Notice of Motion and Motion, the Memorandum of Points and Authorities, the Declaration of Andrew C. Mace (“Mace Decl.”) and exhibits attached thereto, cited pleadings on file with the Court in this action, and on such other materials and evidence as may be presented to the Court. Dated: August 30, 2016 COOLEY LLP /s/ Heidi L. Keefe Heidi L. Keefe Attorneys for Defendant FACEBOOK, INC. Case 2:16-cv-00782-RSWL-KS Document 53 Filed 08/30/16 Page 2 of 2 Page ID #:215 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION ZKEY INVESTMENTS, LLC Plaintiff, v. FACEBOOK, INC. Defendant. Case No. 2:16-cv-00782-RSWL-KS FACEBOOK, INC.’S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 101 DATE: October 25, 2016 TIME: 10:00AM COURTROOM: 21 JUDGE: Hon. Ronald S. W. Lew COOLEY LLP MICHAEL G. RHODES (116127) (rhodesmg@cooley.com) 101 California Street, 5th Floor San Francisco, CA 94111-5800 Telephone: (415) 693-2000 Facsimile: (415) 693-2222 HEIDI L. KEEFE (178960) (hkeefe@cooley.com) MARK R. WEINSTEIN (193043) (mweinstein@cooley.com) ANDREW C. MACE (284484) (amace@cooley.com) 3175 Hanover Street Palo Alto, CA 94304-1130 Telephone: (650) 843-5000 Attorneys for Defendant Facebook, Inc. Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 1 of 27 Page ID #:216 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Table of Contents Page i. I. INTRODUCTION ........................................................................................... 1 II. STATEMENT OF UNDISPUTED MATERIAL FACTS .............................. 2 A. The Alleged Invention of the Patent-in-Suit ......................................... 2 B. The Asserted Claims of the Patent-in-Suit ........................................... 5 III. ARGUMENT .................................................................................................. 6 A. Alice Step 1 - The Asserted Claims are Directed to an Abstract Idea ........................................................................................................ 7 B. Alice Step 2 - The Asserted Patents Do Not Recite Any Inventive Concept ............................................................................... 12 IV. CONCLUSION ............................................................................................. 22 Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 2 of 27 Page ID #:217 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS ii. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 TABLE OF AUTHORITIES Page(s) Cases Activision Publ’g, Inc. v. xTV Networks Ltd., No. 16-cv-0737, 2016 U.S. Dist. LEXIS 104308 (C.D. Cal. July 25, 2016) .............................................................................................................. 15, 21 Affinity Labs of Tex., LLC v. DirecTV, LLC., 109 F.Supp.3d 916 (W.D. Tex. 2015) ........................................................... 16, 18 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) ................................................................................. passim Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 56 F. Supp. 3d 813 (E.D.Va. 2014) ..................................................................... 15 Appistry, Inc. v. Amazon.com, Inc., No. 15-cv-0311, 2015 WL 4210890 (W.D. Wash. July 9, 2015) ....................... 18 Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 771 F. Supp. 2d 1054 (E.D. Mo. 2011) ............................................................... 15 Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 15-cv-1763, --- F.3d ---, 2016 WL 3514158 (Fed. Cir. June 27, 2016) ...................................................................................................................... 8 Bascom Research, LLC, v. LinkedIn, Inc., 77 F. Supp. 3d 940 (N.D. Cal. 2015) ............................................................. 15, 21 Bilski v. Kappos, 561 U.S. 593 (2010) .................................................................................... 6, 8, 22 BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) ........................................................................... 14 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) ........................................................................... 22 DietGoal Innovations LLC v. Bravo Media LLC, 33 F. Supp. 3d 271 (S.D.N.Y. 2014) ..................................................................... 8 Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 3 of 27 Page ID #:218 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS iii. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) ............................................................................. 8 Elec. Power Grp., LLC v. Alstom S.A., No. 15-cv-1778, --- F.3d ---, 2016 WL 4073318 (Fed. Cir. Aug. 1, 2016) .................................................................................................................... 12 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) ........................................................................... 12 Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) ........................................................... 8, 13, 15, 16 Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 13-cv-3777, 2015 WL 1941331 (S.D.N.Y. Apr. 28, 2015) ......................... 19 Listingbook LLC v. Market Leader, Inc., 144 F. Supp. 3d 777 (M.D.N.C. 2015) ............................................................ 9, 15 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) ........................................................................................ 20 Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007 (C.D. Cal. 2014) ................................................................... 8 Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811 F. 3d 1314 (Fed. Cir. 2016) ................................................................... passim MyMedicalRecords, Inc. v. Walgreen Co., No. 13-cv-0631, 2014 WL 7339201 (C.D. Cal. Dec. 23, 2014) ..................... 9, 10 Open Text S.A. v. Alfresco Software Ltd., No. 13-cv-4843, 2014 WL 4684429 (N.D. Cal. Sept. 19, 2014) .................. 16, 17 Open Text S.A. v. Box, Inc., 78 F. Supp. 3d 1043 (N.D. Cal. 2015) ....................................................... 9, 14, 21 Parker v. Flook, 437 U.S. 584 (1978) .............................................................................................. 8 Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014) ...................................................................... 8 In re Roslin Inst. (Edinburgh), 750 F.3d 1333 (Fed. Cir. 2014) ......................................................................... 2, 6 Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 4 of 27 Page ID #:219 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS iv. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 Secure Mail Solutions LLC v. Universal Wilde, Inc., No. 15-cv-7562, --- F. Supp. 3d ---, 2016 WL 3392414 (C.D. Cal. Feb. 16, 2016) .......................................................................................... 15, 18, 21 In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) ...................................................................... passim Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) ......................................................................... 6, 11 Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App’x 914 (Fed. Cir. 2015) ...................................................................... 13 Walker Digital, LLC v. Google, Inc., 66 F. Supp. 3d 501 (D. Del. 2014) ............................................................ 9, 13, 21 Statutes 35 U.S.C. § 101 .................................................................................................. passim Other Authorities Fed. R. Civ. P. 12(b)(6) .............................................................................................. 8 Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 5 of 27 Page ID #:220 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 1. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 I. INTRODUCTION Plaintiff’s asserted claims are invalid because they do not claim patent- eligible subject matter under the Supreme Court’s landmark decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (“Alice”). The Court in Alice held that patent claims are invalid as a matter of law when, as here, they purport to cover an abstract idea implemented on a generic computer and add nothing inventive. Following Alice, the Federal Circuit and district courts throughout the country have invalidated claims similar to those in Plaintiff’s patent by granting early motions for summary judgment or motions to dismiss. The claims here are directed to the abstract idea of allowing individuals to manage and selectively share with others items of information about themselves, from a collection of information about multiple individuals. This simple concept of managing and selectively sharing information is a basic building block of human interaction, and is commonly encountered in various ways on a daily basis, such as an office building’s front desk security that controls access to building directory information. The claims also fail to add any inventive concept to this abstract idea. The claims instead recite generic and off-the-shelf computer components such as a “network,” “network device,” “database management system” and “network server” that, under Alice, “cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” 134 S. Ct. at 2358. The patent specification confirms that the alleged invention does not involve any new or unique technology-the claims merely recite using well-known computer equipment performing purely conventional functions to facilitate the ages-old idea of managing and selectively sharing information. Id. at 2359. For the reasons set forth below, therefore, Facebook respectfully requests that the Court grant summary judgment that the asserted claims are invalid as a matter of law under 35 U.S.C. § 101. Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 6 of 27 Page ID #:221 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 2. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 II. STATEMENT OF UNDISPUTED MATERIAL FACTS The numbered paragraphs below contain the facts relevant to the present motion. The patent eligibility issues presented by this motion, however, present a pure question of law for the Court. See In re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014). The invalidity of the asserted patent, as shown below, is demonstrated through statements in the patent itself. There are accordingly few, if any, “material facts” bearing on this motion. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811 F. 3d 1314, 1325 (Fed. Cir. 2016) (“In such circumstances, the § 101 inquiry may appropriately be resolved on a motion for summary judgment.”). A. The Alleged Invention of the Patent-in-Suit 1. U.S. Patent No. 6,820,204 (“’204 patent”) relates generally to techniques for “storing, accessing and exchanging information” and more specifically to techniques for allowing users to manage and selectively share information over a communications network. (’204, 1:14-19.)1 The application that resulted in the ’204 patent was filed on March 31, 2000. The patent purports to claim priority to a provisional application filed on March 31, 1999. 2. The ’204 patent acknowledges that people have long selectively shared information about themselves with others, including manually without the aid of computer technology: Information exchange is a common facet of everyday life. For many years, individuals have manually distributed their personal information, such as by passing out business cards, filling out forms, surveys and warranty 1 Citations to “(’204, xx:yy-zz)” refer to column and line numbers in the ’204 patent. A copy of the ’204 patent is attached as Exhibit 1 to the Declaration of Andrew C. Mace in Support of Facebook, Inc.’s Motion for Summary Judgment of Invalidity (“Mace Decl.”). Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 7 of 27 Page ID #:222 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 3. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 cards with their names and addresses, providing career and educational information on their resumes and reciting their credit card numbers over the telephone while making purchases. In addition, individuals have manually collected the personal information of others, such as by collecting business cards, maintaining an address book or RolodexTM and storing telephone books and catalogs. (’204, 1:21-32.) 3. The ’204 patent asserts, however, that sharing personal information poses various challenges. The ’204 patent acknowledges the everyday problem that sharing information can lead to unnecessary copies of that information or information that is outdated: As the amount of exchanged information has grown, the drawbacks and limitations of manual information exchange have become more glaring--i.e., manual information exchange is disorganized, error-prone, repetitive and time-consuming. . . . [C]ertain drawbacks, such as the lack of control over the copy of the information once it is transmitted and the excessive redundancy that results each time the copied information is stored in another database. Another problem is that copies of the data often become out-of- synchronization, and thus obsolete, as information such as telephone numbers and addresses change. (’204, 1:32-36, 1:63-2:2.) Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 8 of 27 Page ID #:223 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 4. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 4. The ’204 patent also acknowledges the common sense problem that people often only want to share particular pieces of information with particular individuals or groups: Another problem in the prior art is controlling access to stored information. For example, an individual may want to provide broad access to personal contact information such as address and telephone number, but may not wish to publicly share credit card information that is stored in the same database. (’204, 3:9-14.) 5. To attempt to address these problems, the ’204 patent “provides a system and method for information exchange that provides control over the content of stored information, as well as control over the access to the stored information.” (’204, 3:35-38.) “Each user of the system and method has granular control over its own user profile information, and can control access to each stored data element of its user profile information on a user-by-user basis.” (’204, 3:38-41.) 6. The ’204 patent asserts that this idea-i.e., allowing individuals to manage and selectively share with others items of information about themselves from a collection of information about multiple individuals-is broadly applicable, confirming its abstract nature: For example, it should be apparent that the inventive concepts described above are applicable to any stored data, including data from personal calendars, contact databases, e-mail systems and document management systems. (’204, 31:31-35.) Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 9 of 27 Page ID #:224 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 5. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 B. The Asserted Claims of the Patent-in-Suit 7. Plaintiff has asserted claims 1-3, 5, 8-11 and 16-17. Claim 1 of the ’204 patent, reproduced below, discloses the core concept of the asserted claims: 1. In a network including a plurality of network devices operated by a plurality of users, a real-time information exchange, system for sharing user profile information between respective users of the network devices, comprising: a database management system connected to the network and storing the user profile information for a plurality of registered users of the information exchange system, the user profile information including a plurality of data elements, each data element having an associated one of the plurality of registered users; wherein each data element has an associated subset of users to whom access to the data element has been granted; and wherein users not included in the associated subset of users are denied access to the data element. (’204, 31:38-54 (claim 1).) 8. Although claim 1 uses technical jargon such as “network,” “network device,” and “database management system,” the basic concept is straightforward. In essence, claim 1 describes a system in which information about users is stored in a database, and particular user information in the database is disclosed only to an “associated” subset of users. The claim provides no technical detail regarding how to carry out the claimed “association”-in fact, manually noting the association using pen and paper might suffice. Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 10 of 27 Page ID #:225 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 6. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 9. The specification confirms that the implementation details in the claim, such as a “network,” “network device,” and “database management system,” merely refer to well-known and generic computer technologies. For example, the “network” may be a “communications network, such as the Internet.” (’204, 3:45- 49; see also id., 8:31-35.) The “network device” “may be any device that is adapted to communicate with the information exchange system through the network, such as a personal computer running a standard Internet web browser application . . . .” (’204, 3:49-55; see also id., 8:35-41.) The “database management system” comprises commercially-available products such as “a Netfinity 7000TM server executing OracleTM database software.” (’204, 11:42-46.) 10. The remaining asserted claims are substantially similar for purposes of § 101 analysis. Asserted claims 2-3, 5 and 8-11 depend, directly or indirectly, from claim 1; claim 16 is an independent claim, from which claim 17 depends. These claims add additional details to representative claim 1, but do not change the basic concept to which the claims are directed. They merely attempt to cover variations on the basic concept of allowing individuals to manage and selectively share items of information about themselves from a collection of information about multiple individuals using generic technology. III. ARGUMENT The validity of the asserted claims under 35 U.S.C. § 101, which defines patentable subject matter, is a “threshold” issue for the Court to decide as a matter of law. Bilski v. Kappos, 561 U.S. 593, 601-02 (2010); see also, e.g., In re Roslin, 750 F.3d at 1335. The Federal Circuit has recognized that “claim construction is not an inviolable prerequisite to a validity determination under § 101.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1349 (Fed. Cir. 2014); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 719 (Fed. Cir. 2014) (“No formal claim construction was required because the asserted claims disclosed no more than ‘an abstract idea garnished with accessories’ and there was Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 11 of 27 Page ID #:226 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 7. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 no ‘reasonable construction that would bring [them] within patentable subject matter.’”) (citation omitted). No claim construction is necessary to resolve the present motion because, as demonstrated below, the invalidity of the asserted claims under § 101 is clear. The Supreme Court in Alice set forth a two-step test “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. First, the Court must determine if the claims at issue are directed to a patent- ineligible concept, such as an abstract idea. Id. If the Court determines that the claims are directed to an abstract idea, it must then “determine whether the additional elements transform the nature of the claim into a patent-eligible application.” Id. (internal quotations and citation omitted). The Supreme Court describes this second step “as a 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.” Id. (internal quotations, citation and brackets omitted). As demonstrated below, the claims fail both steps of the Alice framework. A. Alice Step 1 - The Asserted Claims are Directed to an Abstract Idea The first step of the Alice test asks “whether the claims at issue are directed to a patent-ineligible concept,” i.e., whether they are directed to laws of nature, natural phenomena, or abstract ideas. Alice, 134 S. Ct. at 2355. Patent-ineligible abstract ideas include, for example: (1) a “mental concept,” or something that “could ‘be performed in the human mind, or by a human using a pen and paper,’” (2) “a fundamental . . . practice long prevalent,” (3) “organizing human activity,” or (4) claims “directed essentially to a method of calculating” that is “not tied to a Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 12 of 27 Page ID #:227 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 8. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 specific structure or machine.”2 In Alice, for example, the Supreme Court rejected claims “drawn to the concept of intermediated settlement” as “long prevalent” and “a building block of the modern economy.” 134 S. Ct. at 2356 (citing Bilski, 561 U.S. at 611). Relying on Alice, the Federal Circuit has repeatedly invalidated patents directed to abstract ideas like the one presented here. In a case addressing an analogous abstract idea, the Federal Circuit ruled that claims directed to customizing information based on information known about the user was a patent- ineligible abstract idea-“a ‘fundamental . . . practice . . . long prevalent in our system.’” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-71 (Fed. Cir. 2015) (quoting Alice, 134 S. Ct. at 2356); see also Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 15-cv-1763, --- F.3d ---, 2016 WL 3514158, at *5 (Fed. Cir. June 27, 2016) (“[F]iltering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior.”) (citation omitted).3 In Morsa, the Federal Circuit affirmed the invalidity of a patent directed to the abstract idea of showing particular content to a user based on the user’s characteristics. Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014) (Staton, J.); aff’d, 622 F. App’x 915 (Fed. Cir. 2015). The Federal Circuit also affirmed the invalidity of a patent directed to the abstract idea of “anonymous loan shopping,” where the claimed steps “could all be 2 See, e.g., DietGoal Innovations LLC v. Bravo Media LLC, 33 F. Supp. 3d 271, 282-84 (S.D.N.Y. 2014) and Parker v. Flook, 437 U.S. 584, 594-95 (1978); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007-08 (Fed. Cir. 2014); Alice Corp., 134 S. Ct. at 2356; and Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1348, 1350-51 (Fed. Cir. 2014). 3 Although the Federal Circuit vacated the district court’s invalidity finding under § 101 in Bascom, that case is distinguishable because it was an appeal of a dismissal under Rule 12(b)(6) made on an accordingly limited record. Here, there is ample support, including the ’204 patent itself, showing that there are no genuine issues of material fact that would preclude summary judgment of invalidity. Nonetheless, despite its ultimate decision to vacate, the Federal Circuit again confirmed that the concept of filtering content is an abstract idea. Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 13 of 27 Page ID #:228 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 9. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 performed by humans without a computer.” Mortg. Grader, 811 F. 3d at 1324. In TLI, the Federal Circuit recently affirmed the invalidity of claims directed to a method of organizing human activity-classifying and storing digital images in an organized manner-because the claims recited only generic computer technology- a “telephone unit,” a “server,” an “image analysis unit,” and a “control unit.” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). District courts across the country have likewise invalidated many claims under § 101 following Alice, including claims directed to sharing information among individuals similar to the ’204 patent. For example, in Walker Digital, the district court found that claims directed to “anonymously exchanging information about people” were not patentable. Walker Digital, LLC v. Google, Inc., 66 F. Supp. 3d 501, 513 (D. Del. 2014). The claims in that case recited a system for “exchanging information” between parties, and included the steps of receiving party information, storing that information in a database, receiving rules about how that information should be released, and using the rules to determine whether the party information could be disclosed to a second party-steps that closely parallel the limitations of the asserted claims of the ’204 patent in this case. Id. at 511-512. In Open Text, the district court invalidated claims directed at the abstract idea of sharing information and collaboration. Open Text S.A. v. Box, Inc., 78 F. Supp. 3d 1043, 1047 (N.D. Cal. 2015). “A system for groups of people to collaborate and share information without specialized software or expertise,” the court held, “is clearly a ‘method of organizing human activity,’ and thus an unpatentable abstract idea.” Id. In Listingbook, the district invalidated claims drawn to “sharing information between a real estate agent and her clients . . . .” Listingbook LLC v. Market Leader, Inc., 144 F. Supp. 3d 777, 786 (M.D.N.C. 2015). In MyMedicalRecords, Judge Wright in this district invalidated claims directed to “collecting, accessing and managing personal health records in a secure and private manner,” observing that “[t]he concept of secure record access and management, in Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 14 of 27 Page ID #:229 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 10. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 the context of personal health records or not, is an age-old idea.” MyMedicalRecords, Inc. v. Walgreen Co., No. 13-cv-0631, 2014 WL 7339201, at *2-3 (C.D. Cal. Dec. 23, 2014) (Wright, J.). Similarly, the asserted claims here boil down to the abstract idea of allowing individuals to manage and selectively share items of information about themselves from a collection of information about multiple individuals. The abstract idea of the asserted claims is confirmed by the specification of the ’204 patent. The ’204 patent acknowledges that individuals have long selectively shared information about themselves, but that such information sharing comes with various challenges, regardless of any specific technological context. (’204, 1:21-32, 1:32-36, 1:63-2:2, 3:9-14.) To attempt to address challenges of information sharing, the ’204 patent purports to disclose “systems and methods for storing, accessing and exchanging information, and in particular to a system and method for providing users with granular control over arbitrary information that allows for selective, real-time information sharing in a communications network such as the Internet.” (’204, 1:14-19.) The abstract idea of the ’204 patent is illustrated with a simple example involving front desk security, a fixture in multi-tenant office buildings throughout the country. In particular, an office worker may provide information about herself to the front desk and specify to whom that information may be disclosed. For example, if the worker is hosting a meeting, the worker may inform the front desk to disclose to attendees the floor on which the meeting is being held. The worker may also inform the front desk that it may provide the worker’s direct office telephone number or the phone number of her assistant from the building’s directory to attendees in case the attendees need to get in touch with the worker. The front desk will enter the worker’s instructions into the building directory so that when attendees arrive and ask for the worker, the front desk may disclose the specified information to the attendees. This simple scenario captures the idea of the Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 15 of 27 Page ID #:230 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 11. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 asserted claims-an individual manages and selectively shares information about herself from a collection of information about individuals.4 Plaintiff’s asserted claims recite a number of additional limitations that may add additional specificity, but do not change the nature of the abstract idea itself. See Ultramercial, 772 F.3d at 715 (“Although certain additional limitations . . . add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea. . . .”). Expanding on the example of front desk security discussed above makes this clear. Claim 2 reflects nothing more than the ability of the office worker to specify to whom information about her meeting may be disclosed. Claim 3 relates to the office worker being able to provide information to the front desk that is in addition to standard information in the building’s directory. Claims 4 and 5 reflect the fact that the worker could provide personal information to both the building’s front desk and to the worker’s company’s own reception desk within the building. Claims 8 and 9 relate to the ability of the front desk to provide updated information to the meeting attendees either with, or without, first receiving a request for an update. Claims 10 and 11 reflect the common sense idea that the worker can group information together (such as the worker’s office telephone number and assistant’s office telephone number) and identify groups of individuals to whom the front desk may disclose that information. Lastly, claims 16 and 17, like claims 4 and 5, simply reflect the fact that the worker could provide personal information to both the building’s front desk and to the worker’s company’s own reception desk within the building, and selectively specify to whom information about her meeting may be disclosed. The application of the abstract idea to the claims is discussed in more detail below. 4 Patient medical records provide another illustration of the abstract idea of the ’204 patent in practice. As is commonly known, patients fill out paper medical forms to disclose various pieces of personal information and may specify to the doctor’s office what information may be shared with whom, including other medical providers, pharmacies and insurers. Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 16 of 27 Page ID #:231 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 12. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 The claims are clearly directed to an abstract idea and not to an improvement in computer functionality. As explained above, the ’204 patent acknowledges that individuals have long selectively shared information and that such information sharing poses some challenges, regardless of any technological context. The ’204 patent purports to address challenges of information sharing using generic and conventional computer components, as explained in more detail below regarding the second step of Alice. The ’204 patent and its claims therefore stand in stark contrast to, for example, the patent in Enfish, whose claims were “directed to a specific improvement in the way computers operate, embodied in the self- referential table” for a computer database that functioned differently than conventional database structures. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336-37 (Fed. Cir. 2016). That technology purportedly improved the functioning of the computer itself by providing “increased flexibility, faster search times, and smaller memory requirements.” Id. at 1337 (citations omitted). Here, the ’204 patent makes no such claim. Instead, like the patent in TLI, the claims recite only conventional and generic computer networking and database technology for carrying out an abstract idea. TLI, 823 F.3d at 613-15; see also Elec. Power Grp., LLC v. Alstom S.A., No. 15-cv-1778, --- F.3d ---, 2016 WL 4073318, at *4 (Fed. Cir. Aug. 1, 2016) (“[T]he focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.”). Accordingly, Plaintiff’s claims fail the first step of the Alice framework because they are directed to the abstract idea of allowing individuals to manage and selectively share items of information about themselves from a collection of information about multiple individuals. B. Alice Step 2 - The Asserted Patents Do Not Recite Any Inventive Concept At Alice’s second step, “we must examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 17 of 27 Page ID #:232 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 13. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 claimed abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357 (internal quotations and citation omitted). A valid claim must include “additional features” beyond the abstract idea itself, which “requires more than simply stating the abstract idea while adding the words ‘apply it.’” Id. (internal quotations, citations and brackets omitted). For example, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2357-58. Therefore, the recitation of a general-purpose computer with generic components does not amount to an “inventive concept” sufficient to transform an abstract idea into patent-eligible subject matter, nor does reciting “[s]teps that do nothing more than spell out what it means to ‘apply it on a computer.’” See Intellectual Ventures I LLC, 792 F.3d at 1369-71 (quoting Alice, 134 S. Ct. at 2358); see also, e.g., TLI, 823 F.3d at 613 (recitation of “telephone unit,” “server,” “image analysis unit,” and “control unit” did not confer patent eligibility to abstract idea of classifying and storing digital images in an organized manner); Mortg. Grader, 811 F. 3d at 1324-25 (invalidating claims directed to an abstract idea that added only “generic computer components such as an ‘interface,’ ‘network,’ and ‘database’”); Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App’x 914, 915 (Fed. Cir. 2015) (invalidating claims that “cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity”); Walker Digital, 66 F. Supp. 3d at 515 (invalidating claims applying an abstract idea “by way of a generic computer with standard computer components including a ‘memory,’ a ‘processor,’ and a ‘communication port.’”). Here, the claims do not add any “inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357 (internal quotations and citation omitted). Rather, they recite textbook examples of the types of generic computer components that do not supply inventive concepts under Alice. Each asserted claim is addressed below. Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 18 of 27 Page ID #:233 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 14. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 Independent claim 1 recites only generic and conventional computer-related components, such as a “network,” “network device,” and “database management system.” The “network,” according to the ’204 patent, may be a “communications network, such as the Internet.” (’204, 3:45-49; see also id., 8:31-35.) A “network device,” the patent explains, generically refers to “any device that is adapted to communicate with the information exchange system through the network, such as a personal computer running a standard Internet web browser application, a personal digital assistant (‘PDA’), a wireless application protocol telephone (‘WAP phone’), a pager or a network appliance.” (’204, 3:49-55 (emphasis added); see also id., 8:35-41.) And the “database management system,” a term that generically refers to the software for manipulating a database, can be provided by commercially- available off-the-shelf products. (’204, 11:42-46 (“In a preferred embodiment, the database management system 50 includes a Netfinity 7000TM server executing OracleTM database software.” (emphasis added))); Mace Decl. Ex. 2, at 336-40 (describing concept of a database and explaining that “database management system” refers generally to the software that manipulates a database); id. Ex. 3, at 105 (defining “data base management system” as “[a] software system that controls the creation, organization, and modification of a data base and access to the data stored within it”); id. Ex. 4, at 111 (dictionary entry for “database management system” (“DBMS”) identifying “well-known DBMSs”). Courts have repeatedly found that the computer-related components of claim 1 fail to provide the required inventive concept under Alice. As to networks and network communication, the Federal Circuit in BuySAFE observed: “That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive.” BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see also Mortg. Grader, 811 F.3d at 1324-25 (“Instead, the claims ‘add’ only generic computer components such as an ‘interface,’ ‘network,’ and ‘database.’”); Open Text, 78 F. Supp. 3d at 1045 (“The Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 19 of 27 Page ID #:234 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 15. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 problem with the asserted claims is that their core concept is inherently abstract, and their implementation, which consists of standard technology like browsers, servers, and networks, has nothing inventive whatsoever about it.”); Bascom Research v. LinkedIn, Inc., 77 F. Supp. 3d 940, 954 (N.D. Cal. 2015) (“[T]he use of a computer network and a server is not inventive.”) (citations omitted); Secure Mail Solutions LLC v. Universal Wilde, Inc., No. 15-cv-7562, --- F. Supp. 3d ---, 2016 WL 3392414, at *10 (C.D. Cal. Feb. 16, 2016) (Carter, J.) (“The claims’ invocation of [a network such as] the Internet also adds no inventive concept.”); Activision Publ’g, Inc. v. xTV Networks Ltd., No. 16-cv-0737, 2016 U.S. Dist. LEXIS 104308, at *27 (C.D. Cal. July 25, 2016) (Otero, J.) (“[T]he invocation of a network and recitation of routine and generic processing from a ‘network-based system’ are not inventive concepts.”) Courts have also found that conventional use of a database does not provide an inventive concept. See Intellectual Ventures I, 792 F.3d at 1368 (“The recited elements, e.g., a database, a user profile (“a profile keyed to a user identity” ’137 patent col. 10 l. 5), and a communication medium, are all generic computer elements.”); Mortg. Grader, 811 F.3d at 1324-25 (“Instead, the claims ‘add’ only generic computer components such as an ‘interface,’ ‘network,’ and ‘database.’ These generic computer components do not satisfy the inventive concept requirement.”); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 56 F. Supp. 3d 813, 823 (E.D.Va. 2014) (“[S]toring and querying information in a database . . . is one of the most basic functions of a database system.” (citing Alice, 134 S. Ct. at 2359)); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011) (“[S]toring, retrieving, and providing data . . . are inconsequential data gathering and insignificant post solution activity.”) (internal quotations and citation omitted), aff’d, 687 F.3d 1266 (Fed. Cir. 2012); Listingbook, 144 F. Supp. 3d at 790 (database is a “generic computer element”); Bascom Research, 77 F. Supp. 3d at 951-952 (“[C]onventional tables or relational Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 20 of 27 Page ID #:235 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 16. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 databases” not inventive.) (citations omitted); Secure Mail Solutions, 2016 WL 3392414, at *10 (“[C]laims pertaining to storing, receiving data, and providing that data via a network . . . are simply ‘routine and generic processing and storing capabilit[y] of computers generally.’” (quoting Affinity Labs of Tex., LLC v. DirecTV, LLC, 109 F. Supp. 3d 916, 940-941 (W.D. Tex. 2015))). Nor does any other limitation in claim 1 disclose an inventive concept. “Data elements” (and “data fields”) are well-understood, routine and conventional. See Content Extraction, 776 F.3d at 1348; see also Mace Decl. Ex. 3, at 107 (defining “data element” as “[a] unit of data that, in a certain context, is considered indivisible, for example, the data element ‘age of a person’ with values consisting of all three-decimal digit combinations”). Similarly, “user profile information” is a well-known, generic concept. See Intellectual Ventures I, 792 F.3d at 1368 (“The recited elements, e.g., a database, a user profile (‘a profile keyed to a user identity’ ’137 patent col. 10 l. 5), and a communication medium, are all generic computer elements.”); see also Mace Decl. Ex. 3, at 457 (defining “user profile” as “[a] description of a user that includes such information as user ID, user name, access authority, and other attributes obtained at logon”). Dependent claim 2 likewise fails to disclose an inventive concept. The claim recites a “profile management application” that provides “facilities to selectively control the granting and denying of access to each of its associated data elements by other respective users.” The phrase “profile management application” is not recited in the specification of the ’204 patent, which instead simply repeats the vague and functional language from the claim, describing “facilities” that “allow the registered user 12 to selectively grant access to this stored profile data to one or more third parties 17a-c on an element-by-element basis.” (’204, 9:11-14.) Such “abstract functional descriptions devoid of technical explanation as to how to implement the invention” do not add an inventive concept. TLI, 823 F.3d at 615; see also id. (“Such vague, functional descriptions of server components are insufficient to Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 21 of 27 Page ID #:236 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 17. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 transform the abstract idea into a patent-eligible invention.”); see also Open Text S.A. v. Alfresco Software Ltd., No. 13-cv-4843, 2014 WL 4684429, at *2 (N.D. Cal. Sept. 19, 2014) (“No special technology or programming is mentioned or envisioned in the claims.”). The recitation of the “profile management application” is in essence an instruction to apply on a computer the ability of an office worker to instruct front desk security as explained in the illustration above. Dependent claim 3 recites “data fields” that are pre-defined or user-created for storing user profile information in the database management system. As noted above, “data fields” are well-understood, routine and conventional. Content Extraction, 776 F.3d at 1348. This is nothing more than conventional use of a database, as shown by the patent’s recommendation to use off-the-shelf products. ’204, 11:42-46 (“In a preferred embodiment, the database management system 50 includes a Netfinity 7000TM server executing OracleTM database software.”). Moreover, the claim’s high-level functional description fails to add an inventive concept. TLI, 823 F.3d at 615. In the example of front desk security given above, claim 3 reflects little more than an instruction to apply on a computer an office worker’s ability to provide additional information that may not be present in the building directory used by the front desk. Dependent claim 4 recites “databases distributed across the network” and claim 5 further recites an “affiliate system” that includes an “affiliate database management system.” The specification makes clear that the distributed databases and affiliate system are intended to address the practical issue of maintaining control over information rather than a specific issue unique to computer technology. (’204, 4:37-39 (“The affiliated entity may be any entity that desires to maintain control over its internal information, such as a corporation running an intranet.”).) In the front desk security example given above to illustrate the abstract idea, claims 4 and 5 simply relate to the practice of having both front desk security for a building and a reception desk (which may have different or additional information) Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 22 of 27 Page ID #:237 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 18. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 for a particular tenant in the building. As explained below, the claims recite only generic technology for implementing this idea and neither claim discloses an inventive concept. In particular, a distributed database generically refers the concept of a “database spread over several machines in a network” and was known prior to the ’204 patent. See Mace Decl. Ex. 2, at 340; see also id. Ex. 4, at 139-40 (dictionary entry for “distributed database”). The ’204 patent does not purport to have conceived of the idea of “distributed databases,” and Oxford’s Dictionary of Computing confirms that the concept is broad and generic, explaining that “[d]istributed database systems may vary very considerably.” Mace Decl. Ex. 4, at 139-40. Courts have accordingly found that the concept of a networked database, and the idea of a distributed system, fail to provide an inventive concept. See, e.g., Secure Mail Solutions, 2016 WL 3392414, at *10 (“[C]laims pertaining to storing, receiving data, and providing that data via a network . . . are simply ‘routine and generic processing and storing capability[y] of computers generally.’” (quoting Affinity Labs, 109 F. Supp. 3d at 940-941)); Appistry, Inc. v. Amazon.com, Inc., No. 15-cv-0311, 2015 WL 4210890, at *4 (W.D. Wash. July 9, 2015) (“That computers are capable of dividing a task between two or more linked computers in order to complete the task more quickly and more efficiently is similarly basic.”). The generically-described “affiliate database management system” of claim 5 fails to provide an inventive concept for these same reasons-it is simply a conventional database management system that an entity desires to maintain control over. (’204, 4:37-39.) As to the “firewall” recited in claim 5, it also provides no inventive concept. The specification of the ’204 patent explains that “[a]s known in the art, a firewall is a combination of hardware technologies such as one or more routers, that are used to give users in a private computer network or system, such as affiliate system 350, secure access to the Internet while protecting the internal network from Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 23 of 27 Page ID #:238 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 19. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 unsolicited users.” (’204, 16:48-54 (emphasis added).) The ’204 patent’s conventional use of a firewall does not provide an inventive concept. See Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 13-cv-3777, 2015 WL 1941331, at *16 (S.D.N.Y. Apr. 28, 2015) (invalidating claims reciting “a computer with a firewall coupled to a computer network”) (citation omitted). Dependent claims 8 and 9 also fail to provide an inventive concept required by Alice. Dependent claim 8 recites generic “facilities” that “push” data to a user. Dependent claim 9 recites “intelligent synchronization software” that “download[s]” information. The specification of the ’204 patent largely parrots the claim language, providing only a vague and functional description of the “intelligent synchronization software,” stating that it “automatically pulls newly updated information from the information exchange system 10 . . . .” (’204, 10:64- 11:3; see also id. at 11:3-11:19.) As with other claim limitations already discussed, such “abstract functional descriptions devoid of technical explanation as to how to implement the invention” do not add an inventive concept. TLI, 823 F.3d at 615; see also id. (“Such vague, functional descriptions of server components are insufficient to transform the abstract idea into a patent-eligible invention.”). Moreover, the overbreadth and generic nature of claims 8 and 9 is confirmed by their attempt to lay claim to the only two concepts that exist for communication between networked devices (or, for that matter, between people). In everyday language, one might refer to these concepts as unsolicited and solicited communication. In computer science jargon, these concepts are referred to as “push” and “pull.” See Mace Decl. Ex. 5, at 390 (defining “push” as “2. In networks and the Internet, to send data or a program from a server to a client at the instigation of the server. Compare pull (definition 1).”); id., at 389 (defining “pull” as “1. The process of retrieving data from a network server. Compare push (definition 2).”). The concepts of “push” and “pull” are straightforward. In the front desk security illustration given above, if security personnel provided an Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 24 of 27 Page ID #:239 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 20. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 update to an attendee without first being asked, the update can be said to “pushed” to the attendee. But if the update is provided in response to a request for an update, the update can be said to be “pulled” by the attendee. Because there is simply no other way that two entities can exchange information, claims 8 and 9 attempt to preempt all methods of communication. These claims accordingly fail to provide an inventive concept. Alice, 134 S. Ct. at 2355 (an “inventive concept” must “ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012))). Claims 10 and 11 relate to the concepts of allowing a user to define “views” of information and “groups” of users and to specify access to those views. As with previous limitations, claims 10 and 11 simply provide an abstract functional description that is devoid of technical explanation, and accordingly fail to provide an inventive concept. TLI, 823 F.3d at 615. The abstract nature of the claims is confirmed by the specification of the ’204 patent, which explains that “views” are essentially custom business cards. (’204, 25:7-14 (“Custom views are groups of profile information that the user creates. For example, after selection of item 1806, the user could create a customs view called ‘Business Card’ consisting of the user's work address and pager numbers.”).) In the front desk security illustration provided above, claims 10 and 11 reflect the ability of an office worker to specify a group of meeting attendees who have access to a specified set of pieces of information, such as the floor on which the meeting is being held and the user’s cellular telephone number. Lastly, independent claim 16 and dependent claim 17 are substantially similar to claims 4 and 5 for purposes of § 101. These claims recite generic computer technology, including a “database management system” and a “network server” with a “processor” and “memory.” As explained above for claim 1, a “database management system” is a generic and conventional computer component. Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 25 of 27 Page ID #:240 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 21. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 As to “network server,” the specification confirms that conventional, off-the-shelf products can be used. (’204, 11:30-35 (“Preferably, the main server 40 and each of the secondary servers 44a-d includes a Netfinity 5000TM web server, running a hardened Linux kernel to protect against unsolicited attacks.”).) Courts have also repeatedly found that a “server” does not supply an inventive concept. See TLI, 823 F.3d at 613 (“[T]he claims’ recitation of . . . a “server” . . . fail[s] to add an inventive concept sufficient to bring the abstract idea into the realm of patentability.”); Walker Digital, 66 F. Supp. 3d at 515 (“Finally, independent claim 65 applies the method disclosed in claim 1 by way of a generic computer with standard computer components including a ‘memory,’ a ‘processor,’ and ‘a communication port.’ None of these components converts a general computer into a specialized computer.”); Open Text, 78 F. Supp. 3d at 1045 (“The problem with the asserted claims is that their core concept is inherently abstract, and their implementation, which consists of standard technology like browsers, servers, and networks, has nothing inventive whatsoever about it.”); Bascom Research, 77 F. Supp. 3d at 954 (“[T]he use of a computer network and a server is not inventive.”) (citations omitted); Secure Mail Solutions, 2016 WL 3392414, at *8 (processor is “generic technological component”); Activision, 2016 U.S. Dist. LEXIS 104308, at *27 (“Additionally, the invocation of a network and recitation of routine and generic processing from a ‘network-based system’ are not inventive concepts.”). Claim 17 further recites a “second” database management system and a “second” network server, but for the same reasons discussed above for claims 4 and 5, these generic computer components fail to provide the inventive concept required by Alice. Even considering each asserted claim as an “ordered combination” adds nothing to confer patent-eligibility. Alice, 134 S. Ct. at 2359-60. Nothing in the claims “purport[s] to improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field.” Id.at 2359. Nor are the Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 26 of 27 Page ID #:241 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 22. FACEBOOK’S MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 claims “necessarily rooted in computer technology” to “overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). As explained above, the ’204 patent acknowledges that individuals have long selectively shared information and purports to address common-sense everyday problems with information sharing using only generic computer technology. For this reason, the claims are also not adequately tied to “a particular machine or apparatus.” Bilski, 561 U.S. at 600. As explained above, courts have repeatedly held that the computer components recited in the asserted claims are generic and conventional. In sum, the claims of the asserted patents here are directed to an abstract idea and provide no “inventive concept” sufficient to save them from invalidity. They are therefore patent ineligible under § 101. Alice, 134 S. Ct. at 2357, 2360. IV. CONCLUSION For the foregoing reasons, Facebook respectfully requests that the Court grant its Motion for Summary Judgment, and hold that the asserted patent is invalid under § 101. Dated: August 30, 2016 COOLEY LLP /s/ Heidi L. Keefe Heidi L. Keefe Attorneys for Defendant Facebook, Inc. Case 2:16-cv-00782-RSWL-KS Document 53-1 Filed 08/30/16 Page 27 of 27 Page ID #:242 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 1. [PROPOSED] ORDER AND JUDGMENT UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION ZKEY INVESTMENTS, LLC Plaintiff, v. FACEBOOK, INC. Defendant. Case No. 2:16-cv-00782-RSWL-KS [PROPOSED] ORDER AND JUDGMENT DATE: October 25, 2016 TIME: 10:00AM COURTROOM: 21 JUDGE: Hon. Ronald S. W. Lew COOLEY LLP MICHAEL G. RHODES (116127) (rhodesmg@cooley.com) 101 California Street, 5th Floor San Francisco, CA 94111-5800 Telephone: (415) 693-2000 Facsimile: (415) 693-2222 HEIDI L. KEEFE (178960) (hkeefe@cooley.com) MARK R. WEINSTEIN (193043) (mweinstein@cooley.com) ANDREW C. MACE (284484) (amace@cooley.com) 3175 Hanover Street Palo Alto, CA 94304-1130 Telephone: (650) 843-5000 Attorneys for Defendant Facebook, Inc. Case 2:16-cv-00782-RSWL-KS Document 53-2 Filed 08/30/16 Page 1 of 2 Page ID #:243 COOLEY LLP ATTORNEYS AT LAW SAN FR AN C I SC O 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 Case No. 2:16-cv-00782-RSWL-KS 2. [PROPOSED] ORDER AND JUDGMENT The Court, having read and considered all papers filed in support of and in opposition to Defendant Facebook, Inc.’s Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 101 in this action, all pleadings and papers on file in this action, the applicable law, and the arguments of counsel made at any hearing on the motion, hereby GRANTS Defendant Facebook, Inc.’s Motion. IT IS FURTHER HEREBY ORDERED, ADJUDGED, AND DECREED that judgment be entered in favor of Defendant Facebook, Inc. and against Plaintiff ZKey Investments, LLC. Defendant shall recover the costs of suit, in accord with Federal Rule of Civil Procedure 54(d). IT IS SO ORDERED. Dated: ____________________ _____________________________ HON. RONALD S.W. LEW United States District Court Judge Case 2:16-cv-00782-RSWL-KS Document 53-2 Filed 08/30/16 Page 2 of 2 Page ID #:244