TriPlay Inc. et al v. WhatsApp Inc.

Filing 145

REPORT AND RECOMMENDATIONS recommending DENYING D.I. 120 MOTION to Dismiss filed by WhatsApp Inc.. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no lo nger than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 12/4/2017. Signed by Judge Christopher J. Burke on 11/20/2017. (mlc)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
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TRIPLAY, INC.,
Plaintiff,

v.
WHATSAPP INC.,
Defendant.

Civil Action No. 13-1703-LPS-CJB

REPORT AND RECOMMENDATION
Presently pending before the Court is Defendant WhatsApp Inc.' s ("Defendant" or
"WhatsApp") motion to dismiss Plaintiff TriPlay, Inc. 's ("Plaintiff' or "TriPlay") Third
Amended Complaint ("TAC") for failure to state a claim, filed pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure (the "Motion"). (D.I. 120) Defendant argues that the claims of
Plaintiffs United States Patent Nos. 8,332,475 (the '"475 patent") and 8,874,677 (the '"677
patent," and together with the '475 patent, the "Asserted Patents") 1 are directed to non-patenteligible subject matter under 35 U.S.C. § 101("Section101"). (D.I. 121at1) For the reasons
that follow, the Court recommends that Defendant's Motion be DENIED.
I.

BACKGROUND2

A.

Asserted Patents

Plaintiffs TAC also alleges infringement of two additional patents, U.S. Patent
No. 9,055,416 (the '"416 patent") and 9,049,574 (the '"574 patent"). (D.I. 80 at iii! 29-34)
Defendant's deadline to answer or otherwise respond to the TAC with respect to the '416 and
'574 patents has been stayed pending the Court's resolution of the instant Motion. (D.I. 87 at 2)
2

The Court will assume familiarity with the facts arid procedural history detailed in
its prior opinions in this action. (D.I. 52 at 1-6; D.I. 108 at 1-4) To the extent that certain facts
are particularly relevant to the issues raised by the instant Motion, the Court will include them
herein.

The two Asserted Patents are both entitled "Messaging System and Method[;]" they relate
to the electronic messaging field, and, "in particular, to cross-platform messaging." ('475 patent,
col. 1:5-6; '677 patent, col. 1:5-6)3 The patents share identical specifications. (D.I. 93 at 2 n.2) 4
At the time of patenting, the "versatility of contemporary electronic messaging services
[wa]s growing and giving rise to new message formats and new devices with messaging
capabilities." ('4 75 patent, col. 1: 10-12) The specificati_on lists examples of"[e]merging
message formats" such as "MMS (Multimedia Message Service)" that complemented "traditional
messaging services (e.g., e-mail, Short Message Service, instant messaging, etc.)." (Id, col.
1: 12-16) The adoption of these new messaging capabilities sometimes resulted in a situation
where communication devices supported "different and not always compatible message and
communication formats." (Id., col. 1:16-19) The specification described this as "[t]he problem
of cross-platform messaging[.]" (Id., col. 1:20)
The inventions were designed to address this problem. They provide for, inter alia, a
system for "message communication via a communication media between one or more
originating communication devices assigned to a sender and one or more destination
.communication devices assigned to a receiver[.]" (Id., col. 5:22-26) The specification describes
the system as comprising an "access block" and a "media block[.]" (Id, col. 5:27-36) The
patents further set forth various systems and methods that generally involve adapting or

3

The '475 and '677 patents appear on the docket in this action more than once.
(See, e.g., D.I. 94, exs. 1-2) Citation to the patents will simply be to the '"475 patent" and the
"'677 patent."
4

In light of this, the Court will cite only to the '475 patent unless otherwise noted,
and when the Court hereafter refers to "the patent" or "the patent specification," that is a
reference to the '475 patent unless otherwise noted.
2

converting the layout and/or format of a message based on criteria relating to the capabilities of
the destination device or to the communication media being transferred. (See, e.g., id, cols.
5:22-45, 6:36-59, 7:1-19, 7:30-53) The '677 patent varies from the '475 patent, inter alia, in that
its claims explicitly recite an "initial message includ[ing] a video[,]" and conversion of that
video. (See, e.g., '677 patent, col. 23:23-51)
The specification depicts a generalized flow chart of the messaging system's operation.
('475 patent, FIG. 6) The system is set in motion when Subscriber A sends an electronic message
to Subscriber Band Non-Subscriber C. (Id, col. 16:46-49) Prior to delivery of the message, it is
rerouted to the claimed messaging system. (Id, col. 16:49-51) Upon receipt of the message, the
messaging system identifies the message's originating and destination devices, and analyzes
these devices' message layout and format capabilities. (Id, col. 16:51-65) The system then
makes a delivery decision as to instructions for the format and/or layout of the message to be
delivered. (Id, col. 16:56-65) Pursuant to these instructions, the message will then be converted
such that its format will be transcoded and/or its layout will be adapted in accordance with the
capabilities of the destination devices. (Id, col. 17:6-8) At this point, any necessary repackaging of the message will also occur, which can include replacing some of the media items
contained in the message with links. (Id, col. 17: 8-12) The converted message is then delivered
to the destination devices, and the messaging system registers this transaction. (Id, col. 17: 1320)

B.

Procedural History
1.

The District Court Case

The Court, in resolving Defendant's previous motion to dismiss the claims of the '475

3

patent as ineligible for patent protection under Section 101, (the "1st Section 101 R&R"), granted
that motion as to claim 12 of the '475 patent. (D.I. 52 at 40; D.I. 72 at 2) With respect to claim
1, however, the Court concluded that claim construction was necessary to determine whether the
claim was directed to patent-eligible subject matter. (D.I. 52 at 39-40; D.I. 72 at 3) The Court
only addressed claims 1 and 12 in that opinion, finding that Defendant had not then carried its
burden to demonstrate why any additional claims of the patents should be dismissed. (D.1. 52 at
13) Subsequent to that ruling; Plaintiff added claims for infringement of the '677 patent to the
case. (D.I. 46, 80)
Chief Judge Leonard P. Stark referred to the Court all issues of claim construction and
any renewed motions to dismiss that were to be filed in the future, (D.1. 86), and stayed discovery
in the case (which had not yet begun) until the resolution of the instant Motion, (D.I. 82).
Accordingly, the parties engaged in claim construction with respect to terms bearing on the
patentability of the '475 and '677 patents. (D.1. 93, 96, 100, 103) After a Markman hearing, (D.1.
105), the Court issued a Report and Recommendation regarding the disputed claim terms (the
"Claim Construction R&R"), (D.I. 108). Chief Judge Stark subsequently overruled objections to
the Claim Construction R&R and adopted it in its entirety. (D.1. 118)
On December 15, 2016, Defendant filed the instant Motion, (D.I. 120), and briefing was
completed on January 23, 2017, (D.1. 124). The Court heard oral argument on the Motion on
October 11, 2017. (D.I. 142 (hereinafter, "Tr.")) Following that argument, Defendant filed two
Notices of Supplemental Authority regarding recently-issued decisions from the United States
Court of Appeals for the Federal Circuit. (D.I. 141, 143)

2.

The IPRs and Their Relationship to the District Court Case
4

Additionally, on February 14, 2015, Defendant filed a petition for inter partes review
("IPR") of certain claims (1, 6, 9, 12, 17, 18, 23, 28, 37.and 39-42) of the '475 patent. (See D.I.
117 at 1; D.I. 128 at 2) The United States Patent and Trademark Office's Patent Trial and
Appeal Board ("PTAB") instituted IPR on each of the asserted grounds, and on August 17, 2016,
ultimately issued a Final Written Decision holding all instituted claims invalid in light of certain
prior art. (D.1. 117 at 1; D.I. 128 at 2) Plaintiff did not appeal that decision. (D.1. 128 at 2)
On March 6, 2016, Defendant filed IPR petitions with respect to 21 claims of the '677
patent, and the PTAB instituted IPR for 12 of those 21 claims. (D.I. 128 at 2) On August 28,
2017, the PTAB issued Final Written Decisions upholding the validity of all challenged claims of
the '677 patent. (D.1. 136, exs. A & Bat 9) Defendant has filed appeals of the PTAB's rulings
with respect to the '677 patent with the Federal Circuit. (See D.I. 139 at 2 & n.4)

II.

STANDARD OF REVIEW
A.

Standard of Review Regarding a Rule 12(b )(6) Motion that Challenges
Patent Eligibility Pursuant to Section 101

Pursuant to Rule 12(b)(6), a party may move to dismiss the plaintiffs complaint based on
the failure to state a claim upot?- which relief can be granted. Fed. R. Civ. P. 12(b)(6). The
sufficiency of pleadings for non-fraud cases is governed by Federal Rule of Civil Procedure 8,
which requires "a short and plain statement of the claim showing that the pleader is entitled to
relief[.]" Fed. R. Civ. P. 8(a)(2). In order to survive a motion to dismiss pursuant to Rule
12(b)(6), "a complaint must contain sufficient factual matter, accepted as true, to state a claim to
relief that is plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (internal
quotation marks and citation omitted). In assessing the plausibility of a claim, the court must

5

"construe the complaint in the light most favorable to the plaintiff, and determine whether, under
any reasonable reading of the complaint, the plaintiff may be entitled to relief." Fowler v. UPMC

Shadyside, 578 F.3d 203, 210 (3d Cir. 2009) (internal quotation marks and citation omitted).
Here though, this Rule 12(b)(6) Motion is used to assert an affirmative defense-that the
patents are subject matter ineligible under Section 101. In that scenario, dismissal is permitted
only ifthe well-pleaded factual allegations in the Complaint, construed in the light most
favorable to the plaintiff, suffice to establish the defense. 5 See Jones v. Bock, 549 U.S. 199, 215
(2007); Bristol-Myers Squibb Co. v. Merck& Co., Inc., Civil Action No. 15-560-GMS, 2016 WL
1072841, at *1 n.1 (D. Del. Mar. 17, 2016); Genetic Techs. Ltd. v. Agilent Techs., Inc., 24 F.
Supp. 3d 922, 927 (N.D. Cal. 2014).
Patentability under Section 101 is a question oflaw. In re Bilski, 545 F.3d 943, 951 (Fed.
Cir. 2008), afj"d, Bilski v. Kappas, 561 U.S. 593 (2010). Yet this question oflaw is also one that
"may be informed by subsidiary factual issues." CyberFone Sys., LLC v. Cellco P 'ship, 885 F.
Supp. 2d 710, 715 (D. Del. 2012) (citing In re Comiskey, 554 F.3d 967, 976 (Fed. Cir. 2009)).
There has been some uncertainty regarding the appropriate standard of proof in Section 101

Although the Court is resolving a motion to dismiss, it may consider not only the
allegations in the Complaint, but also, inter alia, exhibits attached to the Complaint, documents
incorporated into the Complaint by reference, and matters of public record. See, e.g., Oshiver v.
Levin, Fishbein, Sedran & Berman, 38 F.3d 1380, 1384-85 n.2 (3d Cir. 1994); Quest Integrity
USA, LLC v. Clean Harbors Indus. Servs., Inc., C.A. No. 14-1482-SLR, Civ. No. 14-1483-SLR,
2015 WL 4477700, at *2 (D. Del. July 22, 2015). The Court's decision below considers certain
content in Defendant's IPR petitions and the PTAB's rulings in the IPR proceedings. This is
permissible here, as IPR records are "matter[s] of public record[.]" Princeton Dig. Image Corp.
v. Konami Dig. Entm 't Inc., Civil Action No. 12-1461-LPS-CJB, 2017 WL 239326, at 3 n.7 (D.
Del. Jan. 19, 2017) (internal quotation marks and citation omitted); see also Choon 's Design,
LLC v. Zenacon, LLC, No. 2:13-cv-13568, 2015 WL 539441, at *5 (E.D. Mich. Feb. 9, 2015)
(citing cases).
6

cases, specifically as to whether a "clear and convincing" standard of proof applies. See
Intellectual Ventures I LLC v. Symantec Corp., 100 F. Supp. 3d 371, 379-80 (D. Del. 2015)
(citing cases), ajf'd in part, rev 'din part, 838 F.3d 1307 (Fed. Cir. 2016). However, assuming
that the "clear and convincing" standard of proof applies to Section 101 challenges (as the Court
does here), see Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1342 (Fed. Cir. 2013) ("[A]ny
attack on an issued patent based on a challenge to the eligibility of the subject matter must be
proven by clear and convincing evidence.") (internal quotation marks and citation omitted),
vacated sub nom. WildTangent, Inc. v. Ultramercial, LLC, 134 S.Ct. 2870 (2014), it applies only
to the resolution of factual disputes, and not to resolution of pure issues of law, see MAZ
Encryption Techs. LLC v. Blackberry Corp., C.A. No. 13-304-LPS, 2016 WL 5661981, at *4 (D.
Del. Sept. 29, 2016); TriPlay, Inc. v. WhatsApp Inc., Civil Action No. 13-1703-LPS, 2015 WL
1927696, at *5 (D. Del. Apr. 28, 2015) (citing cases), adopted in all substantive respects, 2015
WL 4730907 (D. Del. Aug. 10, 2015). And as to the instant Motion, which was filed at the
pleading stage (a stage at which any facts of record that are clearly in dispute are to be construed
in the light most favorable to the plaintiff), the "clear and convincing" standard of proof should
not come into play at all. See Blue Spike, LLC v. Google Inc., Case No. 14-cv-01650-YGR, 2015
WL 5260506, at *4 (N.D. Cal. Sept. 8, 2015); Shortridge v. Found Constr. Payroll Serv., LLC,
Case No. 14-cv-04850-JCS, 2015 WL 1739256, at *7 (N.D. Cal. Apr. 14, 2015); Modern
Telecom Sys. LLC v. Earthlink, Inc., No. SA CV 14-0347-DOC, 2015 WL 1239992, at *7-8

7

(C.D. Cal. Mar. 17, 2015); cf Modern Telecom Sys. LLC v. Lenovo (United States) Inc., Case
No.: SA CV 14-1266-DOC (JEMx), 2015 WL 7776873, at *5 (C.D. Cal. Dec. 2, 2015). 6

B.

Assessing Patentable Subject Matter

Patent-eligible subject matter is defined in Section 101 of the Patent Act:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
35 U.S.C. § 101. In choosing such expansive terms "modified by the comprehensive 'any,'
Congress plainly contemplated that the patent laws would be given wide scope." Diamond v.

Chakrabarty, 447 U.S. 303, 308 (1980).
Yet while the scope of Section 101 is broad, there is an "important implicit exception [to
it]: [l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.

Ltd v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and citation
omitted); see also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012). "Phenomena of nature, though just discovered, mental processes, and abstract
intellectual concepts are not patentable, [because] they are the basic tools of scientific and

6

As noted above, however, the Court has engaged in claim construction prior to
resolving the instant Motion. It may thus apply its legal analysis as to the meaning of certain
claim terms to the issues at play in the Motion. See Loyalty Conversion Sys. Corp. v. Am.
Airlines, Inc., 66 F. Supp. 3d 829, 835 (E.D. Tex. 2014) (Bryson, J., sitting by designation)
(waiting to resolve a Rule 12(c) motion regarding patent eligibility until after the Court first
engaged in claim construction, so as to ensure that "there are no issues of claim construction that
would affect the Court's legal analysis of the patentability issue"); see also Vehicle Intelligence
& Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App'x 914, 916, 920 (Fed. Cir. 2015)
(affirming district court's grant of Rule 12(c) motion following claim construction); CertusView
Techs., LLC v. S & N Locating Servs., LLC, 111 F. Supp. 3d 688, 704-05 (E.D. Va. 2015).
8

technological work." Prometheus, 132 S. Ct. at 1293 (quoting Gottschalk v. Benson, 409 U.S.
63, 67 (1972)).
The Supreme Court of the United States has also recognized, however, that "too broad an
interpretation of this exclusionary principle could eviscerate patent law." Id; see also Alice, 134
S. Ct. at 2354. This is because "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Prometheus, 132 S. Ct. at 1293; see

also Alice, 134 S. Ct. at 2354. To that end, it has explained that "an application of a law of
nature, [natural phenomena or abstract idea] to a known structure or process may well be
deserving of patent protection." Diamondv. Diehr, 450 U.S. 175, 187 (1981) (emphasis in
original).
In Alice Corp. Pty. Ltd v. CLS Bank Int'!, 134 S. Ct. 2347 (2014), the Supreme Court
provided the framework for assessing whether a patent contains eligible subject matter under
Section 101. Under this now familiar two-part test, courts "must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an abstract idea. Alice, 134 S.
Ct. at 2355. If so, the courts must then determine "[w]hat else is there in the claims" by
considering "the elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id (internal quotation marks and citation omitted). The Supreme
Court describes this second part of the test 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 quotation
marks and citation omitted).

9

C.

Considerations Relevant to Deciding a Rule 12 Motion that Challenges the
Eligibility of Multiple Patent Claims, B?sed on the Analysis of a Single
Representative Claim

In Cronos Techs., LLC v. Expedia, Inc., C.A. No. 13-1538-LPS, 2015 WL 5234040 (D.

Del. Sept. 8, 2015), Chief Judge Stark noted "several considerations relevant to deciding a Rule
12 motion that challenges the patent eligibility of multiple patent claims based on analysis of a
single representative claim." 2015 WL 5234040, at *2. The District Court set out these
considerations as follows:
First, are all non-representative claims adequately represented by
the representative claim (i.e., do all of the challenged claims relate
to the same abstract idea and do any of the non-representative
claims add one or more inventive concepts that would result in
patent eligibility)?[] Second, are there issues of claim construction
that must be decided before resolving the motion? Finally, is there
any set of facts that could be proven relating to preemption,[]
questions of patentability,[] or whether the claims "solve a
technological problem,"[] that would result in a determination that
one [] or more of the claims are patent-eligible?
Id (citations and footnotes omitted) (emphasis in original); see also Yodlee, Inc. v. Plaid Techs.
Inc., Civil Action No. 14-1445-LPS, 2016 WL 2982503, at *3 (D. Del. May 23, 2016).

III.

DISCUSSION
For purposes of the Court's Section 101 analysis, the parties have agreed upon

representative claims from the two patents, and have agreed on which other claims are properly
associated with those representative claims. (D.I. 84 at 2-3) 7 And in arguing that the
representative claims of the '475 and '677 patents are patent-eligible, Plaintiff focuses on three

7

Plaintiff has acknowledged that if its arguments about the eligibility of a
representative claim in an Asserted Patent are unsuccessful, that would render all of the claims
associated with that representative claim ineligible. (See D.I. 84 at 2-3)
10

elements of the claimed invention that are found in various claims. Plaintiff refers to these
elements as: (1) the "access block/media block messaging system solution"; (2) the "message
template solution"; and (3) the "video delivery/clickable icon solution." (See, e.g., D.I. 122 at 7)
For ease of reference, the Court sets out below a chart of the four representative claims currently
at issue in Defendant's Motion (two from each patent), the relevant claims associated therewith,
and the purported "technical solutions" (or "elements") that Plaintiff asserts are incorporated
within each set of claims. 8
Representative
Claim

Claims Associated
with Representative
Claims

Purported Technical Solutions Incorporated
Within Claim Set

'4 75 patent,
claim 1

2, 3, 4, 5

access block/media block messaging system
element

'475 patent,
claim 8

7,8, 19,20,29,30,36

access block/media block messaging system
element and/or message template element

Plaintiff had originally identified six representative claims, which included four
claims from the '475 patent-daims 1, 3, 8 and 12. (D.I. 84 at 2-3; D.I. 122 at 7 & n.3)
However, in light of the current state of affairs, only representative claims 1and8 of that patent
need be addressed in this opinion. With respect to representative claim 3, Plaintiff had argued in
its answering brief that claim 3 and its associated claims (which included claims 2, 3, 4 and 5)
were patent eligible because they incorporated the access block/media block messaging system
element as well as another element referred to as the "multiple device solution." (D.I. 122 at 7)
Plaintiff then only devoted a few lines of argument to the "multiple device solution." (Id at 6-7,
18) By the time of oral argument on Defendant's Motion, however, Plaintiff represented that the
representative claims of the '475 patent at issue are claims 1 and 8 only. (See Plaintiffs Oral
Argument Presentation, Slide 16) The Court thereafter ordered Plaintiff to file a supplemental
letter indicating which claims should be addressed in this opinion. (Tr. at 98-100) Plaintiffs
supplemental letter confirms that Plaintiff is no longer relying on representative claim 3 of the
'475 patent for purposes of this Motion. (See D.I. 140 (Plaintiff stating that the claims to be
addressed included claims 2-5, which contain the elements ofrepresentative claim 1 of the '475
patent)) With respect to representative claim 12 of the '475 patent, the Court has already found
that claim to be ineligible, and has dismissed any claims of infringement relating to claim 12
from the case.
11

'677 patent,
claim 15

1, 2, 6, 7, 11, 13, 15, 16,
17, 20 and 21

access block/media block messaging system
element plus video delivery/clickable icon
element

'677 patent,
claim 9

3, 4, 5, 8, 9, 10, 12, 18
and 19

access block/media block messaging system
element plus video delivery/clickable icon
element plus message template element

(D.I. 122 at 7; Plaintiffs Oral Argument Presentation, Slide 16; D.I. 140)
The Court will first provide brief overviews of these three elements. Next, the Court will
set out the legal framework for its inquiries at step one and step two of the Alice test. Lastly, the
Court will tum to the parties' arguments with respect to the patent eligibility of the '475 and '677
patents.

A.

Key Elements of '475 and '677 Patents
1.

Access Block/Media Block Messaging System Element

The access block/media block messaging system element of Plaintiffs invention is
recited in all representative claims in the patents at issue here (i.e., representative claims 1 and 8
of the '475 patent, and representative claims 9 and 15 of the '677 patent). The specification
explains that the claimed intermediary messaging system is made up of an "access block"
configured to receive a message from a sender having initial layout and format characteristics,
and to transit the message to a receiver, and a "media block" that is operatively coupled to the
access block, and that is configured to adapt the initial layout and/or format characteristics of the
message to a layout and/or format that is compatible with the receiver's device. ('475 patent, col.
5:22-45; see also FIG. 2) These features of the invention are computers that are configured in a
particular way so as to carry out the invention. (Id., cols. 9:64-10:3, 11 :64-12:3, 23:10, 17) In
short, the "access block" is responsible for receiving and sending the message, and the "media
12

block" is responsible for selecting a message format and layout that will be compatible with the
recipient's device, and for converting the message accordingly.

2.

Message Template Element

The message template element of Plaintiffs invention is recited in representative claim 8
of the '475 patent, as well as representative claim 9 of the '677 patent. (See, e.g., D.I. 122 at 7)
The specification explains that the claimed messaging system and/or client may be configured to
provide a subscriber with a pre-defined template for composing messages, which may be
personalized pursuant to the subscriber's preferences. ('475 patent, cols. 19:49-51, 20:45-48)
Such templates can vary in type (e.g., general, greeting-like, interactive message, e-mail or text)
and will have different corresponding content structures. (Id, col. 19:51-57 & Table 1) Each
type of template and/or each template has a "unique identifier" capable of being recognized by
the messaging system and/or client and stored in the metadata of the message. (Id, col. 19:4957) For template-based messaging, the media block is configured to convert the initial layout of
the message in accordance with the recognized unique identifier and the display capabilities of
the receiver's device. (Id., cols. 6:4-12; 21 :1-5)

3.

Video Delivery/Clickable Icon Element

The video delivery/clickable icon element of Plaintiffs invention is recited in
representative claims 9 and 15 of the '677 patent, which are directed to receiving, converting and
forwarding messages that include a video. (See, e.g., D.I. 122 at 7) The specification of the '677
patent explains that the message manager component of the media block may choose to
repackage a message based on the capabilities of the destination device, such as available
bandwidth. ('677 patent, col. 16:27-32) To that end, the message manager may choose to send a
13

converted message as one entity or as multiple entities to be reassembled upon receipt. (Id, col.
10:55-56) The specification indicates that when a message contains a media item such as a
video, and delivery or successful downloading of the video would be hindered in some way (by,
for example, bandwidth), the media manager may choose to replace the video with a
corresponding link. (Id., cols. 10:55-58, 16:64-17:3)
While the specification discusses replacing a media item in a converted message, the
claims of the '677 patent recite converting a message including a video into a message with a
clickable icon based on the video. (See, e.g., id, col. 24:13-24) During claim construction, the
Court construed the term "clickable icon" in these claims to mean a "visual representation that is
clickable." (Claim Construction R&R at 37) In doing so, it rejected Plaintiffs arguments that:
(1) the "providing ... a clickable icon" term in the claims of the '677 patent is limited only to
providing "a link to a data file or program"; and (2) the clickable icon must, in all instances,
replace the video item in a message. (Id at 34-37 (internal quotation marks omitted))

B.

The Alice Test

The Court next sets out the legal requirements as to both steps of the Alice inquiry.

1.

Alice Step One

Under step one of Alice, the claims are considered in their entirety to ascertain not simply
whether they involve a patent-ineligible concept, but whether "'their character as a whole is
directed to excluded subject matter'" (here, an abstract idea). Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,

14

790 FJd 1343, 1346 (Fed. Cir. 2015)). 9 Courts look to whether the claims "focus on a specific
means or method[, ... ] or are instead directed to a result or effect that itself is the abstract
idea[.]" McRo, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
"The 'abstract ideas' category embodies 'the longstanding rule that [a]n idea of itself is not
patentable."' Alice, 134 S. Ct. at 2355 (quoting Gottschalk, 409 U.S. at 67) (certain quotation
marks omitted).

2.

Alice Step Two

The Supreme Court has explained that step two of the Alice framework asks whether the
claims contain an "inventive concept," meaning "an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more than a patent upon
the [ineligible concept] itself." Alice, 134 S. Ct. at 2355 (internal quotation marks and citation
omitted). The purpose of the "inventive concept" requirement is to "ensure that the claim is
more than a drafting effort designed to monopolize the abstract idea." Id. at 2357 (internal
quotationmarks, citation, and brackets omitted).
Neither "limiting the use of an abstract idea to a particular technological environment[,]"

9

An abstract idea can be, but need not amount to, a "preexisting, fundamental
truth" about the natural world "that has always existed," or a "method of organizing human
activity" (such as a "longstanding commercial practice"). Alice, 134 S. Ct. at 2356 (internal
quotation marks and citations omitted); see also DDR Holdings, LLC v. Hotels.com, L.P., 773
FJd 1245, 1256-57 (Fed. Cir. 2014); cf CLS Bank Int'! v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1286 (Fed. Cir. 2013) (explaining that a claim directed to an abstract idea is one directed to a
"'disembodied' concept ... a basic building block of human ingenuity, untethered from any realworld application") (citation omitted). Beyond that, the concept of an "abstract idea" has not
been crisply defined, see Alice, 134 S. Ct. at 2357 (declining to "labor to delimit the precise
contours of the 'abstract ideas' category"), and the Supreme Court and the Federal Circuit have
found it sufficient to compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases, see, e.g., Enfish, 822 F.3d at 1334-35.

15

nor simply stating an abstract idea and adding the words "apply it with a computer[,]" will
transform an abstract idea into a patent-eligible invention. Id. at 2358 (internal quotation marks
and citations omitted). And the additional elements within the claim, apart from the abstract idea
itself, must involve more than "'well-understood, routine, conventional activit[ies]' previously
known to the industry." Id. at 2359 (quoting Prometheus, 132 S. Ct. at 1294); see also
Prometheus, 132 S. Ct. at 1300 ("[S]imply appending conventional steps, specified at a high

level of generality, to ... abstract ideas cannot make those ... ideas patentable."). The Alice
Court held that, based on these principles, "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at
2358. "Given the ubiquity of computers," it said, "wholly generic computer implementation is
not generally the sort of' additional featur[ e]' that provides any 'practical assurance that the
process is more than a drafting effort designed to monopolize the [abstract idea] itself."' Id.
(quoting Prometheus, 132 S. Ct. at 1297).

C.

Parties' Arguments

The Court will now consider the representative claims from the '475 and '677 patents.
1.

The '475 Patent
a.

Representative Claim 1

In the Court's 1st Section 101 R&R, which found independent claim 12 of the '475 patent
patent ineligible, the Court concluded that both that claim and claim 1 (the two claims at issue in
the R&R) were directed to the abstract idea of "converting and forwarding messages, so that the
messages are sent in a format and layout in which they can be received by a recipient[.]" (1st
Section 101, R&R at 25-26; see also D.I. 72 at 2; D.I. 121 at 9) Thus, the remaining question
16

with respect to representative claim 1 of the '475 patent is whether it contains an inventive
concept that amounts to significantly more than the abstract idea itself. Representative claim 1
recites:

1. A system for message communication via a communication
media between one or more originating communication devices
assigned to a sender and one or more destination communication
devices assigned to a receiver, the system comprising:
a)

an access block configured to receive, directly or indirectly,
from at least one originating communication device a
message having initial characteristics comprising, at least
message format and an initial message layout, and to
transmit the message to at least one destination
communication device;

b)

a media block operatively coupled to said access block and
configured to select, before transmitting, at least one
message format and a message layout for each of the at
least one message formats fitting to each of said at least one
destination device, and to then convert at least said initial
message layout to the selected message layouts, said
selection and conversion being done in accordance with at
least one criterion selected from a group comprising:
i)

criterion related to message communication
capabilities of the destination communication device
with regard to message communication capabilities of
the originating communication device;

ii)

criterion related to message displaying capabilities of
the destination communication device with regard to
message communication capabilities of the originating
communication device; and

iii) criterion related to the communication media.
('475 patent, col. 23:6-34 (emphasis added))
In reserving judgment on whether claim 1 of the '475 patent is directed to patent-

17

ineligible subject matter, the Court explained that-unlike claim 12, which it found to be patent
ineligible-claim 1 requires an "access block" and a "media block" (collectively, the "block
terms"). (1st Section 101 R&R at 37) 10 The Court articulated the question, then, with respect to
claim 1 as "whether the additional 'access block' and 'media block' elements add any significant
limitations to claim 1, such that they render the claim patent eligible." (Id.) Because it was

10

Claim 12, in comparison, recites:
12. A method of message communication via a messaging system
between one or more originating communication devices assigned
to a sender and one or more destination communication devices
assigned to a receiver, the method comprising:
a)

before delivery to the receiver, obtaining by a messaging
system a message having initial characteristics comprising,
at least, a message format and an initial message layout;

b)

selecting a message layout and converting at least said
initial message layout to said selected message layout to
form an adapted message layout in accordance with at least
one criterion selected from a group comprising:
i)

ii)

criterion related to message displaying capabilities
of the destination communication device with
regard to message communication capabilities of the
originating communication device; and

iii)

c)

criterion related to message communication
capabilities of the destination communication
device with regard to message communication
capabilities of the originating communication
device;

criterion related to communication media between
originating and destination device; and

facilitating delivery of the adapted message to the receiver.

('475 patent, cols. 24:55-25:12)
18

plausible that Plaintiff could put forward reasonable constructions for those terms that would
"include specific components that tie down the claim to something other than just a claim on the
abstract idea" and thus render the claim patent eligible, the Court indicated that claim
construction was necessary prior to making a final determination on patent eligibility. (Id. at 3840)
Claim construction has since occurred. The Court construed "access block" to mean "a
computer comprising a user's gateway that supports communications with communication
devices and a traffic manager that is operably connected to the user's gateway and manages the
message delivery within the messaging system." (Claim Construction R&R at 20) "Media
block" was construed as "a computer comprising a message manager and a transcoder
operatively connected to the message manager, the transcoder being configured to convert the
message format of media items." (Id. at 26)
During the arguments over claim construction, Defendant fought against Plaintiffs
position that these terms should be construed to incorporate particular components (a user's
gateway, traffic manager, message manager, and transcoder); alternatively, Defendant contended
that even were the block terms limited to containing those components, the terms were still
indefinite, because the components are merely "'empty boxes"' described in terms of "'what they
do, not ... how they do it."' (Id. at 15 (internal citations omitted); see also id. at 13 & n.10, 21,
22 n.14) The Court ultimately disagreed, and concluded that the terms connote sufficient
structure to a person of ordinary skill in the art. The Court found this was so, inter alia, because
(1) the patent describes the role of the block terms in the overall message communication system
and how those blocks are connected to other parts of the system, and (2) the patent further
19

describes "what the required components of an 'access block' [and 'media block'] are and how
those components work to take in and send out information." (Id. at 15-16; see also id. at 21, 24)
The Court's constructions for the block terms flowed from the way in which the specification
"describ[es] the internal components and operative algorithms" associated with those terms, anq
thus it incorporated these required internal components. (D.I. 118 at 4-5)
With all of this in mind, the Court now turns to the Section 101 inquiry. In Defendant's
view, the "access block" and "media block" limitations recited in claim 1, even as construed by
the Court, are "functional" and "conventional" and do not add any significant limitations to the
claim that could render the claim patent eligible. (D.I. 121 at 16-17; D.I. 124 at 4; Defendant's
Oral Argument Presentation, Slide 57) Even when these limitations are viewed as an ordered
combination, Defendant contends that they do not claim an inventive concept, because they fail
to reveal a specific improvement in the recited computer technology, and instead recite nothing
more than well-understood, routine and conventional activities. (D.I. 121 at 17; D.I. 124 at 6)
Plaintiff disagrees. Plaintiff first posits that the Court's finding that the "access block"
and "media block" limitations refer to specific structures compels a conclusion that claim 1
includes an inventive concept. (D.I. 122 at 14-15) That is, according to Plaintiff, these
limitations in the claimed system amount to a "discrete implementation of an abstract idea that
addresses a particular technological problem[.]" (Id. at 15; see also id. at 2 (explaining that the
representative claims' recitation of an "access block" and a "media block," and the Court's
constructions of these terms, help "confirm that all the claims contain an inventive concept
because they include specific structural components that ensure the claims amount to
significantly more than a patent upon an abstract idea")) Plaintiff also points out that '"an
20

inventive.concept can be found in the non-conventional and non-generic arrangement of known,
conventional pieces[,]'" (id. at 15 (quoting Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)); it asserts that "an intermediate messaging system

including an 'access block' and 'media block' was not conventional" and that, therefore,
representative claim 1 is patent eligible, (id at 16; see also Plaintiffs Oral Argument
Presentation, Slide 19).

It is clear that Plaintiff's argument is not that Plaintiff invented any of the particular
claimed components of the "access block" or "media block." (See Defendant's Oral Argument
Presentation, Slide 58; Tr. at 54 (Plaintiffs counsel asserting that "the issue is not whether the
individual things are known, but it's whether the combination is known"); id at 70 (Plaintiff's
counsel asserting that "[t]he claims that include access block and media block describe problems
and solutions in technology and these are unconventional")) In light of this, the Court basically
agrees with Defendant that each of the components of these blocks, in and of themselves, are
"[t]unctional" and "[c]onventional[.]" (Defendant's Oral Argument Presentation, Slides 15-26)
That is, the Court agrees that these components can be said to constitute "conventional" (partly
software-based) "structures" and/or that they serve as labels for what might be referred to as
"functional activity." 11

11

For example, with regard to the "gateway" aspect of the access block, the
specification teaches that the gateway "may be implemented as physical part(s) of the messaging
system, separate unit(s) located in the networks of cellular and/or landline operators and/or
service integrator(s), or may be fully or partly integrated with·one or more devices comprised in
said networks." ('475 patent, col. 18:9-17) The specification's focus on the user's gateway is
centered on what the gateway does (i.e., receives a message from a sender, and passes it on to a
receiver after conversion), rather than what it must be. (See, e.g., id, cols. 17:47-53, 19:45-48;
Defendant's Oral Argument Presentation, Slides 16-17) It appears that the concept of a
"gateway" like this was a conventional one, as the patent describes a prior art system that entailed
21

The primary question here though, is whether the ordered combination of known,
conventional elements of claim 1 are arranged in a non-conventional way, thus constituting an
inventive concept. Guidance from prior cases teaches that the specification can be key in
determining the answer to this question. For instance, in Bascom Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the Federal Circuit found that claims

directed to filtering content on the Internet did not "lend themselves to a step-one finding that
they are directed to a nonabstract idea[,]" but that they nevertheless passed step two of the Alice
test because their ordered combination of limitations recited a specific, discrete implementation
of filtering content. 827 F.3d at 1348-50. The Bascom Court explained that filtering content on
the internet was a known concept, but the patent specification at issue "describes how its
particular arrangement of elements is a technical improvement over prior art ways of filtering
such content." Id. at 1350. 12

a "mail gateway" that "receives and delivers e-mail messages to users of the communications
system." ('475 patent, col. 1:44-52) The same holds true for the "traffic manager" component of
the "access block." Nowhere does the specification indicate that the patentees invented a "traffic
manager" structure or further set out the contours of a physical structure that is a traffic manager.
Instead, the specification's focus is on what the traffic manager does-i.e., "manage the message
delivery within the messaging system[.]" (Id., col. 14:43-48; Defendant's Oral Argument
Presentation, Slides 18-20) This is also the case with respect to the "message manager"
component of the "media block"-the specification describes it as a "functional" part of the
media block that is configured to provide "layout adaption and/or[] repackaging[,]" to send
certain media items and metadata for storage, and to obtain delivery instructions. ('475 patent,
cols. 16:34-36, 17:52-67) Finally, as for the "transcoder" component of the "media block," the
specification makes clear that such component is available on the market in different models, and
tells us that it "transcod[es] the message format" based upon communications capabilities
between the originating and destination devices. (Id., col. 16:28-39)
12

See also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841F.3d1288, 1300 (Fed.
Cir. 2016) (finding that the claim recited an inventive concept, an enhancing limitation, that was
called out by the specification as the "critical advancement over the prior art"); X One, Inc. v.
Uber Techs., Inc., 239 F. Supp. 3d 1174, 1197-99 (N.D. Cal. 2017) (explaining that in

22

With regard to the block terms, admittedly, the patent specification does not provide a lot
of help on this front. The specification does immediately make clear that the problem of crossplatform messaging was known in the prior art. ('475 patent, col. 1:20-21) And then it devotes
four columns to summarizing "various systems" that were "developed to provide a solution[.]"
(Id, col. 1:20-5:17) Following this prior art summary, the specification describes the claimed
invention. But it never really seems to clearly articulate-at least with respect to the "access
block" and "media block" components of the invention-what problems remained unsolved as to
those prior art systems, and/or how the use of these components as part of a messaging system
provided an improvement over the prior art. If the use of these components were said to be a
step forward from what was in the prior art, the patentee really is supposed to set that out. See,
e.g., U.S. Patent and Trademark Office, General Information Concerning Patents Specification [Description and Claims] (October 2015),
https://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-1
7 (explaining that "[t]he specification must set forth the precise invention for which a patent is
solicited, in such manner as to distinguish it from other inventions and from what is old"). And

determining whether the ordered combination of claim limitations provides an inventive concept,
guidance may be found "in the specification regarding what was conventional at the time of the
invention[,]" and, in concluding that use of a "buddy list" combined with GPS tracking
technology constituted a non-conventional and non-generic arrangement of known, conventional
pieces, noting that the specification described this as the "solution" to a particular technological
problem); Fitbit, Inc. v. AliphCom, 233 F. Supp. 3d 799, 812-13 (N.D. Cal. 2017) (finding that
the ordered combination of claim elements, interpreted in the light most favorable to the plaintiff,
contains inventive concepts--even though none of the claim elements individually were
inventive-·where the specification highlighted tapping (a known form of validation) as the
element that overcame the problem in the prior art, and the claims added tapping into a portable
device pairing process, which ''transform[ed] a more abstract device pairing process into
something specific").
23

that makes this issue a difficult one to resolve.
But we are at the pleading stage, and this is Defendant's Motion. And so it needs to carry
its burden to demonstrate that, even if facts are construed in the light most favorable to Plaintiff,
the claims are ineligible. In the end, Defendant's arguments have not convinced the Court that
dismissal of claim 1 and its associated claims is appropriate. See, e.g., Amdocs (Israel) Ltd., 841
F.3d at 1291, 1301 (deeming a claim reciting a program designed to solve an accounting and
billing problem faced by network service providers patent-eligible, where the claim was "tied to
a specific structure of various components (network devices, gatherers, IS Ms, a central event
manager, a central database, a user interface server, and terminals or clients)"). The Court below
addresses each of Defendant's arguments to the contrary, explaining why it finds them a bit
wanting.
The Court first assesses Defendant's assertion that "[t]he features of the 'access block'
and 'media block' are simply additional functional labels describing the sort of routine activity
and corresponding generic components that any computer intermediary performing the abstract
message conversion idea would likely include; such as controlling the flow of message traffic
(using a 'gateway' and a 'traffic management server' to manage the message traffic) and
converting messages (using a 'transcoder' and 'message manager')." (D.I. 121 at 16 (emphasis
added)) In doing so, it notes that certain arguments that Defendant's counsel made earlier in the
case seem to contradict Defendant's argument here. During the claim construction hearing, for
example, Defendant's counsel suggested that Plaintiff will have "very significant infringement
problems" if it argues, for example, that Defendant's product includes a "transcoder[.]" (D.I. 105
at 55) That kind of assertion seems at odds with an argument that any message conversion
24

system like this would have a "transcoder" component. 13
Next, in arguing that claim l's elements (even taken together) are all "[f]unctional" and
"conventional[,]" Defendant pointed to the specification's summary of a prior art system ("Ye et
al.") that was disclosed in a patent application. (Defendant's Oral Argument Presentation, Slide
27) The specification explains that Ye et al. discloses a method comprising "receiving a message
in a first format, adapting the message to a MMS message, and sending the MMS message to a
user device." ('475 patent, col. 4:58-64) The Court takes Defendant's point that this description
of Ye et al. sounds somewhat similar to what claim l's system does.
Yet even though the specification does not explicitly state what it is about the invention
that is a step forward from Ye et al., the Examiner obviously granted the '4 75 patent over that
reference. (See Tr. at 55) Admittedly, that fact does not necessarily mean that claim 1 will
ultimately be patent-eligible-it may not be. But it does at least suggest to the Court that there is
a fact issue as to whether the claim (with its "access block" and media block" elements and their
respective operative algorithms that work together to take in, convert, and send out information)
solves the problem of cross-platform messaging in a sufficiently particular, non-routine,

13

It is also worth noting that Defendant's arguments here about "conventionality"
seemed to waver during the briefing process. In its opening brief, as noted above, Defendant
seemed to be firmly arguing that the features of the "access block" and "media block" described
"generic components" that "any computer intermediary" performing message conversion "would
likely include[.]" (DJ. 121 at 16 (emphasis added)) By the time of Defendant's reply brief,
though, Defendant was much more circumspect. There it suggested that it had not, in fact,
previously "argue[d] that all implementations must include all such components" of the "access
block" and "media block," and instead that it had only argued that those components "are routine
and non-inventive." (DJ. 124 at 4 n.3)
25

unconventional way. 14 It also suggests that there are genuine fact questions as to whether
allowing representative claim 1 would preempt the "building blocks" of research in the crossplatform messaging field and "risk disproportionately tying up the use of the underlying ideas[.]"
Alice, 134 S. Ct. at 2354-55, 2357 (internal quotation marks, brackets and citations omitted); see
also Internet Patents, 790 F.3d at 1348 (finding a claim ineligible where it contained "no
restriction on how the result is accomplished") (emphasis added). 15 If the record ultimately
shows that the claim recites a particular, non-conventional implementation of the idea of
converting and forwarding messages, then the claim might not foreclose a significant number of
other systems for carrying out this idea, and thus would not preempt much of the relevant field.

14

Cf. lnsideSales.com, Inc. v. SalesLoft, Inc., Case No. 2:16CV859DAK, 2017 WL
2559932, at *1, *3-4 (D. Utah June 13, 2017) (denying the defendant's motion to dismiss
regarding patents directed to methods and systems that allow one to track e-mail correspondence
to see if and when an e-mail was opened and whether the recipient clicked through on any
hyperlinks contained in the e-mail, as "[t]he arrangements of multiple pieces of software ...
disclosed and claimed in both patents-in-suit are the inventive concepts"); ART+COM
lnnovationpool GmbHv. Google Inc., 183 F. Supp. 3d 552, 555-56, 559-60 (D. Del. 2016)
(finding, on a motion for summary judgement, that the ordered combination of claims directed to
a software-implemented method for providing a pictorial representation of space-related data
recited not merely what a computer does, but a "specific procedure that is done by a computer"
that demonstrated a sufficient inventive concept in reciting "a specific way of overcoming a
problem which plagued prior art systems").
15

The Supreme Court has declared that the "concern that drives th[ e] exclusionary
principle [i]s one of pre-emption." Alice, 134 S. Ct. at 2354; see also Bilski, 561 U.S. at 612
(explaining that if a claim is so abstract so as to "pre-empt use of [the claimed] approach in all
fields, and would effectively grant a monopoly over an abstract idea[,]" such a claim is not be
patent-eligible); Bascom, 827 F.3d at 1350 (finding claims not to be patent ineligible at step two
in part because they did not "preempt all ways of filtering content on the Internet; rather, they
recite a specific, discrete implementation of the abstract idea of filtering content"). Notably (and
sometimes confusingly), however, courts often take pains to note that simply because a claim
does not completely preempt use of an idea, that does not mean it is patent eligible. See
FairWarning IP, LLC v. latric Sys, Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) ("While
preemption may signal patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.") (internal quotation marks and citation omitted).
26

Lastly, Defendant argues that claim 1 is similar to claims that were held to be ineligible in
EasyWeb Innovations, LLC v. Twitter, Inc., 689 F. App'x 969 (Fed. Cir. 2017) and Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) ("Symantec"). (Tr. at 22-24;

Defendant's Oral Argument Presentation, Slides 37-38) The Court views these cases as
distinguishable, however, at least in light of the current state of the record.
For example, in EasyWeb, the representative claim was directed to a system made up of
certain hardware and software. Specifically, it recited:
1. A message publishing system (MPS) operative to process a
message from a sender in a first format, comprising:
a central processor;
at least one sender account;
at least one storage area configured to store at least a first portion
of the message; and
software executing in the central processor to con-figure the
processor so as to:
identify the sender of the message as an authorized sender based on
information associated with the message in comparison to data in
the sender account, wherein the identification is dependent upon
the first format;
convert at least a second portion of the message from the first
format to a second format; and
publish the converted second portion of the message so as to be
viewable in the second format only if the sender has been identified
as an authorized sender.
EasyWeb, 689 F. App'x at 970. The EasyWeb Court rejected plaintiffs argument that an

inventive concept arises from the ordered combination of steps in claim 1, and briskly affirmed
the district court's holding that the claim "recites the most basic of steps in data collection,
analysis, and publication and they are recited in the ordinary order." Id. at 971.
Importantly, however, the case in Easy Web was on appeal from a summary judgment
ruling. Id. at 970. And in arguing for affirmance of the district court's decision that the claims

27

as an ordered combination were generic and conventional, the defendant ("Twitter") specifically
noted that it was important that:
[T]his case comes to this Court on appeal from a summary
judgment ruling, with the benefit of claim construction, expert
testimony, a full set of depositions, and infringement and invalidity
contentions. On that record, it was eminently possible [Twitter
argued, for the district court] to conclude that the claims' generic
and conventional additional steps did not contribute to a meaningful
inventive concept.
EasyWeb Innovations, LLC v. Twitter, Inc., No. 2016-2066, 2016 WL 6534351, Brief of

Plaintiff-Appellee Twitter, Inc., at *59 (Fed. Cir. Oct. 24, 2016) (emphasis in original). Twitter
further pointed to certain record evidence demonstrating that "the claims' arrangement of generic
computer steps was not inventive"-including expert testimony that a prior art patent disclosed
the same message publishing system implementation, as well as an expert report regarding
infringement and infringement contentions demonstrating that the claims were not limited to a
"particular technologically-rooted arrangement of claim elements." Id. 16

16

As for the decision in Symantec, there the trial and appellate court also had the
benefit of a full record, as the case had gone to trial. See 838 F.3d at 1312. In Symantec, the
patentee asserted that the patent, which was directed to systems and methods for receiving,
screening and distributing e-mail, claimed an invention '"not much different than a United States
Postal Service office that processes letters and packages, except that the process is all computerimplemented and done electronically in a matter of seconds."' Id. at 1316, 1318 (internal citation
omitted). The patentee argued the representative claim recited an inventive concept because
"applying business rules to email is not what computers and the Internet do in the absence of this
claim limitation."' Id. at 1318 (internal citation omitted). In rejecting this argument, the
Symantec Court explained that "the inquiry is not whether conventional computers already apply
... well-knowh business concepts like hedging or intermediated settlement[,]" but instead
whether each step did no more than require a generic computer to perform generic computer
functions; it found that the claim failed the latter inquiry. Id. at 1318-19. Here, however, it is at
least plausible at this stage that, for the reasons set out above, an intermediary messaging system
containing an access block and media block (with various internal components configured to take
in, convert, and send out messages) amounted to a non-generic, non-conventional solution to the
problem of cross-platform messaging.
28

In sum, although the decision is a difficult one, the Court cannot conclude as a matter of
law at the pleading stage that representative claim 1 of the '475 patent is patent-ineligible. In
light of the Court's conclusion, it could simply deny Defendant's Motion without further
analysis, since the remaining representative claims at issue each incorporate the "access block"
and "media block" limitations. However, the Court will briefly assess the additional key
limitations in those claims-the template-based messaging element and the video
delivery/clickable icon element.

b.

Representative Claim 8

Plaintiff asserts that representative claim 8 is patent eligible not only because it
incorporates the claimed "access block" and "media block" limitations, but additionally because
it recites template-based messaging features. (D.I. 122 at 17) Claim 8 depends from claim 7,
which in turn depends from claim 6, which in turn depends from claim 1 of the '475 patent
(which was reproduced above). Claims 6, 7 and 8 recite (with the template-related limitations
highlighted):
6. The system of claim 1 configured to receive a message having a
layout based on a template, said template characterized by at least
a unique identifier, wherein the system is further configured to
recognize the unique identifier of the template, and the media block
is further configured to select, before transmitting, at least one
message format and a message layout for each of th~ at least one
message formats fitting to each of said at least one destination
device, and then convert the initial layout of the message to the
selected message layouts, said selection and conversion being done
in accordance with at least one predefined layout corresponding to
the recognized unique identifier and the displaying capabilities of
the destination communication device.
('475 patent, col. 24:5-17 (emphasis added))
7. The system of claim 6 wherein the template is selected from a

29

group comprising initial interactive message and replying
interactive message.

(Id, col. 24:18-20 (emphasis added))
8. The system of claim 7 wherein the unique identifier
corresponding to at least one message is considered as a criterion
for selecting and converting the message format.
(Id, col. 24:21-23 (emphasis added))
(1)

Alice Step One

Defendant contends that all remaining representative claims (i.e., claim 8 of the '475
patent and claims 15 and 9 of the '677 patent) are directed to the same abstract idea as claims 1
and 12 (converting and forwarding messages, so that the messages are sent in a format and layout
in which they can be received by a recipient). (D.I. 124 at 2-3) Plaintiff responds that
representative claim S's incorporation of the template messaging element distinguishes it from
claims 1 and 12 of the '475 patent, and enables it to pass step one of the Alice test. This is
because, according to Plaintiff, "the character of claim 8 as a whole is not directed to the abstract
idea of converting and forwarding messages but, rather, to improving a technological process
[via the use of templates]." (D.I. 122 at 17)
Plaintiff analogizes the "template" limitation to the limitations in the claims in Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). (Id) In Enfish, the Federal Circuit
deemed the claims at issue to be patent eligible because they recited "non-abstract improvements
to computer technology[.]" 822 F .3d at 1335, 1339. The patents at issue in Enfish claimed a
particular type of logical model for a computer database described as a "self-referential" table.
The Court explained that for claims directed to software, the pertinent step one inquiry asks
whether the "focus" of the claims "is on the specific asserted improvement in computer
30

capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Id. at 1335-36.
As for the specific claims before it, the Enfish Court found that their "plain focus" was on a
specific improvement to the way computers operate (the self-referential table). Id. at 1336. In
reaching this conclusion, the Court emphasized that the claims did not broadly cover any form of
stori_ng tabular data, but rather specifically taught the self-referential table for a computer
database. Id. at 1337. This specificity was reflected in the claim language (which described, in
some detail, the table's attributes), but also in the teaching of the specification. Id. The
specification emphasized how the self-referential table improved upon conventional database
structures (e.g., by providing increased flexibility, faster search times, and smaller memory
requirements). Id. In light of what this demonstrated about the "plain focus" of the claims, the
Enfish Court found that the claims passed Alice's step one test. Thus, Enfish teaches that in

applying an Alice stage-one filter to a claim, a court should (in addition to looking at the claim
language) also inquire into "the focus of the claimed advance over the prior art[.]"' Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375-76 (Fed. Cir. 2016) (quoted in Enfish, 822

F.3d at 1335) (internal quotation marks and citation omitted); see also, e.g., MAZ Encryption
Techs., LLC, 2016 WL 5661981, at *7 (noting that it is "plain from the reexamination

prosecution history (with support in the specification) that the two-table limitations added during
reexamination are sufficiently important that they must be included in any accurate description of
the nature of claim 31 as a whole").
Enfish also explained that, in some cases involving computer-related claims, "there may

be close calls about how to characterize what the claims are directed to[.]" Enfish, 822 F.3d

31

1339. In such circumstances, the Enjish Court stated, "an analysis of whether there are arguably
concrete improvements in the recited computer technology could take place under step two" of
the Alice test. Id.; see also Bascom, 827 F.3d at 1349 (finding that the claims and specific
limitations did not readily lend themselves to a step-one finding that they are directed to a nonabstract idea, and deferring "consideration of the specific claim limitations' narrowing effect for
step two").
Here, the patent specification exp fains that certain embodiments of the claimed
messaging system allow for messages to be composed utilizing the afore-mentioned pre-defined
templates. Each template is described as having the "unique identifier" capable of being
recognized by the messaging system and/or client and stored in the metadata of the message.
('475 patent, col. 19:49-57) The delivery instructions for such template-based messaging with
regard to layout of the message "are based on predefined layout of message matching to template
unique identifier and capabilities of destination device." (Id., cols. 21 :3-5, 24:12-17)
Importantly, the patent also describes this aspect of the invention as providing a "novel
solution facilitating ubiquitous templates supporting different types of originating and destination

devices and seamlessly matching the template-based messages to capabilities of the originating
and/or destination devices and subscriber's preferences." (Id. at col. 20:35-40 (emphasis added))
The specification then describes the benefits of using such templates in the claimed messaging
system. It explains that this results in·a "reduction in need of content analysis [by allowing for
the] ability to provide layout-related delivery instructions based on pre-defined rules and
parameters (e.g. in a form of a look-up table)." (Id. at col. 21:8-12; see also D.I. 122 at 6)
In the Court's view, this is one of those close calls, described in Enfish, where it makes

32

sense to defer consideration of the message template element until step two of the Alice test. On
the one hand, claim 8 (incorporating claims 1, 6 and 7) does recite the use of a template with a
unique identifier in converting the message at issue. And, as was just described, there is a
portion of the patent specification (albeit a small portion, and one not found until column
20--<mly three columns before the patent's claims are set out), that touts the message template
element as a "novel solution" to certain problems in cross-platform messaging.
On the other hand, much of the content of claim 8 (in light of the claim's incorporation of
the text of claim 1 and claim 6) is tied up in a higher-level description of a messaging system that
converts and forwards messages. Indeed, that is that (broad) concept that is described in the '475
patent Abstract (which makes no mention of templates). ('475 patent, Abstract) Moreover, the
specification provides little specificity about exactly how it is that the message template element
improved upon a problem in the prior art. And as Defendant points out, (Defendant's Oral
Argument Presentation, Slide 76), the specification also notes the existence of a prior art
reference known as "Huang" (a patent application), which in tum disclosed a "multimedia
sharing method for email message recipient, involving integrating multimedia file into template
to construct email message that is transmitted to recipient, and opening file when message is
received[,]" ('475 patent, col. 2:26-31).
In light of the mixed record on this question, the Court will defer consideration of the
specific claim limitation(s) at issue until step two of the Alice test.

(2)

Alice Step Two

Defendant asserts that representative claim S's use of templates-which can "just be[]
predefined layout[s]"-is merely an inconsequential data-gathering step and extra-solution

33

activity that adds nothing meaningful at step two. (D.I. 121 at 3, 19; D.I. 124 at 7) It states that
the limitation does not save the claims here because Plaintiff did not invent the notion of a
template with unique identifier, as templates were known in the prior art. (Tr. at 36-37;
Defendant's Oral Argument Presentation, Slide 76; D.I. 121 at 19 (Defendant arguing that claim
8's use of a template is "a well-understood concept that adds nothing meaningful"))
But Defendant seems to be talking past Plaintiff. Plaintiff is not contending that it
invented the idea of a template. Nor is it contending that it invented the concept of a template
with a unique identifier. Rather, Plaintiff is asserting that claim 8 recites a non-conventional
"particular use of templates" with unique identifiers to facilitate the process of converting and

forwarding electronic messages and, in tum, making that process more efficient. (See, e.g., Tr.
at 57, 62-63, 65-67; D .I. 122 at 18; Plaintiffs Oral Argument Presentation, Slide 31 (Plaintiff
contending that it was "[n]ot conventional to incorporate five elements relating to templates as
part of a messaging conversion"))
The Court finds that it cannot conclude, as a matter of law at the pleading stage, that
representative claim 8 does not pass muster under step two of Alice. As discussed above with
respect to representative claim 1 of the '475 patent, it is at least plausible that the combination of
the access block and media block (and their internal components working together) contribute a
meaningful inventive concept to the field of cross-platform messaging. But it is also plausible
that the combination of those features-together with the template-based messaging element
(i.e., a system for message conversion that is assisted in the conversion process by a template
with a unique identifier)-amounts to the requisite inventive concept. The Court so concludes
for a few reasons, set out below.

34

First, it is worth noting that claim 8 does not simply recite creation of a message from a
template. Instead, it describes a messaging system that utilizes the template's unique identifier to
convert the message into one with a layout and format that will be compatible with the
recipient's device. The latter is a bit more of a particular solution to the problem of crossplatform messaging than the former.
Second, the record indicates that there are outstanding fact questions regarding the
"conventionality" of this type of messaging system, and as to related questions of preemption.
.Considered in the light most favorable to Plaintiff, these facts suggest that it is plausible that
claim 8 could be patent-eligible.
For example, the Federal Circuit has instructed that a patent's "written description is
particularly useful in determining what is well-known or conventional." Symantec, 838 F.3d at
1317; see also Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir.
2017) ("The fact that many of these technologies were well-known can be discerned from
Secured Mail's patents themselves."). As noted above, the specification does not robustly
describe how the invention's use of templates assist in the message conversion process, or how it
improves over prior art systems such as Huang. But it does at least state that this element
provides a "novel solution" allowing for greater efficiency in message conversion. ('475 patent,
cols. 20:36, 21 :8-12) And, of course, the claim was granted over Huang.
Moreover, on the question of "conventionality," Plaintiff notes that during the IPR
proceedings Defendant did not cite to any prior art "of any messaging system incorporating
templates to identify the content structure of messages [.]" (Plaintiffs Oral Argument
Presentation, Slide 31; Tr. at 58-59; see also D.I. 123, ex. 4 at 18-19) The Court understands that

35

this fact is not dispositive of the patent-eligibility question. As Defendant notes, (Tr. at 93-95),
the Federal Circuit instructed in Symantec that "'[t]he novelty of any element or steps in a
process, or even of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the [Section] 101 categories of possibly patentable subject matter."'
838 F.3d at 1315 (citing Diehr, 450 U.S. at 188-89) (certain internal quotation marks omitted,
emphasis added); 17 see also Amdocs (Israel) Ltd., 841 F.3d at 1311 (Reyna, J., dissenting) (noting
that the distinction between inventiveness and novelty is that "[n]ovelty is the question of
whether the claimed invention is new [and] [i]nventiveness is the question of whether the
claimed matter is [an] invention at all, new or otherwise"); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that "a claim for a new abstract idea is still

an abstract idea") (emphasis in original). However, the Federal Circuit has also clearly stated
that the Section 101 inquiry and considerations relating to invalidity (e.g., "'the [section] 102
novelty inquiry"') "'might sometimes overlap."' Synopsis, Inc., 838 F.3d at 1151 (quoting
Prometheus, 132 S. Ct. at 1304); see also Internet Patents, 790 F.3d at 1347 (explaining that

"pragmatic analysis of [Section] 101 is facilitated by considerations analogous to those of
[Sections] 102 and 103 as applied to the particular case"); (Tr. at 95). What is in the prior art
(and what is not) as to messaging systems like this one could well impact an analysis of whether
claim 8's use of templates amounts to the incorporation of "well-understood, routine,
conventional activit[ies] previously known [in an] industry[,]" Alice, 134 S.Ct. at 2359 (internal

17

The Symantec Court further explained that "the jury's general finding that [the
defendant] did not prove by clear and convincing evidence that three particular prior art
references do not disclose all the limitations of or render obvious the asserted claims does not
resolve the question of whether the claims embody an inventive concept at the second step of
[]Alice." 838 F.3d at 1315.
36

quotation marks and citation omitted), or "pre-empt [the] use of [the asserted abstract idea] in all
[or nearly all] fields," id. at 2354; see also Trading Techs. Int'!, Inc. v. CQG, Inc., 675 F. App'x
1001, 1005 (Fed. Cir. 2017) ("Th[e] threshold level of eligibility is often usefully explored by
way of the substantive statutory criteria of patentability, for an invention that is new, useful and
unobvious is more readily distinguished from the generalized knowledge that characterizes
ineligible subject matter."); (D.I. 122 at 19 n.8). The Court would benefit from a more full
record exploring these questions of conventionality and preemption (if not "novelty")-one that
includes, for example, excerpts from the prosecution history and/or expert testimony regarding
the message template element.
Third, while Defendant cited to a few cases in support of its contrary position, the Court
finds those cases to be inapposite. That, in turn, strengthens the Court's view that the claim
should not be doomed here at step two.
For example, Defendant repeatedly cites for support to the Federal Circuit's decision in
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015). (D.I. 121 at 19;

D.I. 124 at 2; Defendant's Oral Argument Presentation, Slide 79) In Internet Patents, the Federal
Circuit found that patent claims were directed to an abstract idea where they covered the concept
of retaining information lost while navigating online forms (or maintaining "data state")-but did
not describe the mechanism to be used to maintain the state information. 790 F.3d at 1348.
Certain dependent claims were directed to a method and computer system wherein a dynamically
generated online application form set was formed by "combining information from a template
file" and a "database or conditional merge file or both[,]" and was then displayed. Id. at 1349.
The Internet Patents Court found that this and other limitations in the dependent claims at issue

37

did not save the claims from ineligibility. Instead, it held (with little discussion) that the abovereferenced limitations "represent[ed] merely [a] generic data collection step[.]" Id.
As Plaintiff points out, however, the claim reciting a "template" in Internet
Patents appears distinguishable from the instant claim. The former claim "says nothing more

about a template" than "combining information from a template file." (D.I. 122 at 17 n.7; see
also Plaintiff's Oral Argument Presentation, Slide 34) In that claim, then, the template file did

not seem to play much of a role in the end result of maintaining the state. Here, in contrast, the
claimed template with a unique identifier is said by the patent to play an important role in the
purpose of the claims (the conversion and forwarding of messages) and purportedly makes that
process more efficient.
Defendant recently filed a Notice of Supplemental Authority with respect to a just-issued
decision from the Federal Circuit, Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905
(Fed. Cir. 2017), (D.I. 141), presumably because it saw similarities between the claims at issue
there and those at issue here. Certain claims in Secured Mail were directed to a method of
verifying the authenticity of a piece of mail by affixing thereto a barcode that "includes at least a
unique identifier [that constitutes a number assigned by the sender], sender data, recipient data
and shipping method data," storing an authenticating portion of the barcode in a database, and
allowing for the recipient to access the database and verify the authenticity of the mail object via
the authenticating portion. Secured Mail Sols. LLC, 873 F.3d at 908 (citation omitted). There,
the patentee had argued that the "'development of a unique, sender-generated identifier is the
critical invention.'" Id. at 911 (citation omitted, emphasis in original). But the Secured Mail
Court disagreed, finding that the sender-generated identifier is not an inventive concept. This

38

was because "[t]he claim language does not explain how the sender generates the information,
only that the information itself is unique or new" and "[t]he claim language does not provide any
specific showing of what is inventive about the identifier or about the technology used to
generate and process it." Id. at 911-12. Here, in contrast, as discussed above, Plaintiff does not
contend that it developed the concept of a template with unique identifier; rather, Plaintiff
contends (with some support from the patent) that converting and generating an electronic
message using'the template and unique identifier as described is what is "inventive."
For all of these reasons, the Court cannot conclude, as a matter of law at the pleading
stage, that representative claim 8 of the '475 patent is patent-ineligible.

2.

'677 Patent

As noted above, while the '677 patent has the same specification as the '475 patent, its
claims are directed to receiving, converting, and forwarding messages that include a video. The
representative claims of the '677 patent at issue in this Motion are claims 15 and 9.

a.

Representative Claim 15

Plaintiff asserts that representative claim 15 is patent eligible because it incorporates the
claimed "access block" and "media block" limitations, and additionally because it recites the
video delivery/clickable icon element. (D.I. 122 at 7, 18) Representative claim 15 depends from
claim 6. Claims 6 and 15 recite as follows:

6. A messaging system comprising an access block operatively
coupled to a media block, wherein:
the access block is configured to receive an initial message sent by
an originating communication device to a destination
communication device, the initial message being characterized, at
least, by message format, an initial message layout, and data
indicative of at least one receiver associated with the initial
message, wherein the initial message includes a video;
39

the media block is configured to obtain data indicative of
displaying capabilities of the destination communication device
and enable conversion, in accordance with a criterion related to the
displaying capabilities of the destination communication device, of
the initial message into an adapted message, wherein the·
conversion comprises:
a)

providing, by the media block, a clickable icon:
i)
ii)

b)

based on the video from the initial message and
clickable into an adapted version of the video,
wherein the adapted version of the video is adapted
to the displaying capabilities of the destination
communication device, and

determining, by the media block, an adapted message
layout, comprising the clickable icon; and

the access block is further configured to enable transmitting the
adapted message to the destination communication device
associated with the at least one receiver.
('677 patent, col. 24:6-32)
15. The system of claim 6, wherein the media block is configured
to convert the initial message into the adapted message, and
wherein the clickable icon is adapted to the displaying capabilities
of the destination device.

(Id., col. 26:10-14)
(1)

Alice Step One

Plaintiff asserts that representative claim 15's incorporation of the video
delivery/clickable icon element enables it to pass step one of the Alice test because the claim is
an "improvement to a technological process." (D.I. 122 at 19) However, for much the same
reasons as discussed above with respect to the message template element found in representative
claim 8 of the '475 patent, the Court finds that the eligibility question here is better assessed at

40

step two. Again, this is because there is evidence on both sides as to whether the claim is
"directed to" this element.
With regard to claim 15's language, on the one hand, the claim could be viewed as
broadly covering the concept of converting and forwarding messages, via the use of an access
block and media block (albeit a concept that requires that the initial message to be converted
must include a video). On the other hand, the claim (as do all of the other claims of this patent)
does include prominent limitations relating to the "clickable icon."
As for what can be gleaned from the '677 patent's specification, the written description
does not put the video delivery/clickable icon element front and center. This is not necessarily
surprising, in that the specification is identical to the '475 patent's specification-and the '475
patent's claims do not even require the message at issue to include a video. In fact, the term
"video" is only used in the patent specification a handful of times, and then only in general terms
(instead of in a discussion regarding the specific claimed solution). (See, e.g., '677 patent, cols.
10:31, 12:18, 19:55, 21 :16) Additionally, while the specification does summarize another prior

art system (disclosed in a patent application, and referred to as "Kim") that is directed to
."converting a format of a multimedia message and transmitting a uniform resource locator and an
access code of the converted multimedia message[,]" ('677 patent, col. 4:9-17), it never explains
how the '677 patent attacks a challenge inherent in Kim (or other prior art systems). Beyond this,
the specification merely makes one or two passing references to the general concept of a media
item in a message being replaced by a link. (Id, cols. 10:55-58, 16:64-17:4)
As it is a "close call" as to whether claim 15 can be said to be directed to the abstract
idea at issue, the Court will move on to a step two analysis of the claim.

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(2)

Alice Step Two

The Court cannot conclude that representative claim 15 fails to pass muster under step
two of Alice. This is because (in addition to its inclusion of the block terms, discussed in detail
above), it is plausible that claim 15's recitation of the video delivery/clickable icon element
amounts to a sufficiently "[s]pecific" process of converting and forwarding messages that include
a video. (See Defendant's Oral Argument Presentation, Slides 46-50 (Defendant noting that the
law requires a "specific" or "particular" improvement for a claim to teach an inventive concept))
Here again, Defendant argues that "converting, forwarding, and displaying video are
routine computer functions" in asserting that inclusion of this element does not make the claims
patent eligible. (D.I. 121 at 19-20; Defendant's Oral Argument Presentation, Slides 84-85
(asserting that "'video" and '"clickable icons"' are, respectively, "[f]unctional and
[c]onventional")) Plaintiff responds that "[i]t was not conventional to incorporate clickable icon
as part of a messaging conversion." (D .I. 122 at 19)
In support of its position, Plaintiff points to the fact that during the IPR, Defendant failed
to cite to any prior art "incorporating clickable icons into a messaging conversion" and that
Defendant was forced to rely "on combining three references to disclose most of [the] video
claim elements." (Id.; see also D.I. 123, ex. 3 at 27-34 (Defendant, arguing in the IPR
proceeding that a person of ordinary skill in the art would have found it obvious to combine three
references, known as Coulombe, Bellordre and Friedman, which in turn would have disclosed all
aspects of the video delivery/clickable icon element, but acknowledging that none of the
references alone disclose all such aspects); D.I. 136, ex.Bat 13-24 (PTAB decision discussing
Defendant's argument and finding it unpersuasive); Tr. at 75-76, 87) The Court agrees with

42

Plaintiff that this is evidence that the claim recites a sufficiently concrete way of converting a
message that include a video: delivering the message with an icon based on the video that is
clickable and that ultimately produces an adaptive version of the video. The specification
appears to explain (though it does so a bit vaguely) that solutions like this one are meant to
address challenging problems in the art regarding message conversion: those relating to
bandwidth limitations, or of a video being too large for successful downloading in normal
fashion. ('677 patent, cols. 14:1-16, 16:64-17:3; see also Tr. at 77-78, 85) Morever, while not
dispositive of patent-eligibility, the fact that the Examiner granted the '677 patent over the Kim
reference suggests that there are fact issues as to (1) whether the claim solves a problem of crossplatform messaging (involving transmission of a video) in a sufficiently particular, non-routine,
unconventional way, and (2) whether allowing representative claim 15 would significantly
preempt this field.
Construing these facts in the light most favorable to Plaintiff, the record does not permit
the Court to find representative claim 15 patent-ineligible.
b.

Representative Claim 9

Representative claim 9 depends from claim 8, which in tum depends from claim 6.
Claim 6 is recited above, and claims 8 and 9 recite as follows:
8. The system of claim 6, wherein the initial message is
characterized by the initial message layout based on a template, the
template being characterized by, at least, a unique template
identifier; and wherein the media block is further configured to
provide the adapted message layout in accordance with the unique
template identifier.
('677 patent, col. 24:37-42)
9. The system of claim 8 further comprising a data structure
43

associating at least the unique template identifier with one or more
predefined adapted message layouts, and wherein the media block
is further configured to select the adapted message layout from
among the predefined message layouts based, at least in part, on
the unique template identifier and the criterion related to the
destination communication device.

(Id., col. 24:43-49)
Because this representative claim includes all three key elements discussed in detail
above-the access block and media block components, the message template element, and the
video delivery/clickable icon element-the Court need not address it further. For the same
reasons as set out above, the record is premature at this stage for the Court to find the claim to be
patent-ineligible.

IV.

CONCLUSION

For the foregoing reasons, the Court recommends that Defendant's Motion be DENIED,
without prejudice to Defendant's ability to later renew a Section 101 challenge in the form of a
summary judgment motion.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(l)(B), Fed. R.
Civ. P. 72(b)(l), and D. Del. LR 72.1. The parties may serve and file specific written objections
within fourteen (14) days after being served with a copy of this Report and Recommendation.
Fed. R. Civ. P. 72(b). The failure of a party to object to legal conclusions may result in the loss
of the right to de novo review in the district court. See Henderson v. Carlson, 812 F.2d 874, 87879 (3d Cir. 1987); Sincavage v. Barnhart, 171 F. App'x 924, 925 n.1 (3d Cir. 2006).
The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R.
Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court's website,
located at http://www.ded.uscourts.gov.
44

Dated: November 20, 2017
Christopher J. Burke
UNITED STATES MAGISTRATE JUDGE

45