NICE Systems Ltd. et al v. ClickFox Inc..
MEMORANDUM OPINION regarding the Motions to Dismiss (D.I. 17 and D.I. 20 ). Signed by Judge Richard G. Andrews on 9/15/2016. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELA WARE
NICE SYSTEMS LTD. and NICE
Civil Action No. 15-743-RGA
Jack B. Blumenfeld, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE;
Guy Yonay, Esq., Clyde A. Shuman, Esq., PEARL COHEN ZEDEK LATZER BARATZ LLP,
New York, NY.
Attorneys for Plaintiffs Nice Systems Ltd. and Nice Systems, Inc.
Mary W. Bourke, Esq., Daniel M. Attaway, Esq., WOMBLE CARLYLE SANDRIDGE & RICE,
LLP, Wilmington, DE; Douglas D. Salyers, Esq., James E. Schutz, Esq., Puja Patel Lea, Esq.,
Dustin B. Weeks, Esq., TROUTMAN SANDERS LLP, Atlanta, GA; Anup M. Shah, Esq.
TROUTMAN SANDERS LLP, Charlotte, NC.
Attorneys for Defendant Clickfox, Inc.
Presently before the Court are Defendant's two motions to dismiss for failure to state a
claim. (D.I.17,20). Theissueshavebeenfullybriefed. (D.I.18,21,23,25,27,28). TheCourt
held oral argument on April 22, 2016. (D.I. 30). For the reasons that follow, the Court will grant
Defendant's motion as to patentable subject matter and dismiss as moot Defendant's motion for
· failure to state a claim of induced infringement.
Plaintiffs filed this patent infringement lawsuit against Defendant on August 27, 2015.
(D.I. 1). Plaintiffs originally asserted that Defendant infringed "at least claim 12" of U.S. Patent.
No. 8,976,955 ("the '955 patent"). (Id. at 5, if 23). Thereafter, Defendant filed a motion to
dismiss alleging that claim 12 of the '955 patent was directed to patent-ineligible subject matter
and that the complaint failed to state a claim of induced infringement. (D .I. 9, 10). Plaintiffs
then filed an Amended Complaint on November 16, 2015. (D.I. 14). Defendant subsequently
filed the two instant motions to dismiss the Amended Complaint. (D.I. 17, 20).
The '955 patent is directed to a system and method of tracking user web interactions and
using that information to generate real-time recommendations when a contact center agent is
later contacted by that user. (See, e.g., '955 patent abstract; id. claim 1). The summary of the
invention section of the specification describes the invention as follows:
A device, system, and method is provided for monitoring a user's interactions with
Internet-based programs or documents. Content may be extracted from Internet
server traffic according to predefined rules. Extracted content may be associated
with a user's Internet interaction. The user's Internet interaction may be stored and
The user's Internet interaction may be analyzed to generate a
recommendation provided to a contact center agent while the contact center agent
is communicating with said user, e.g., in real-time, for guiding the user's Internet
interaction. Traffic other than Internet server traffic may also be used.
('955 patent, col. 1, II. 45-57).
Section 101 of the Patent Act defines patent-eligible subject matter. It provides:
"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. The Supreme Court
has recognized an implicit exception for three categories of subject matter not eligible for
patentability-laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS
Bank Int'/, 134 S. Ct. 2347, 2354 (2014). The purpose of these carve outs is to protect the "basic
tools of scientific and technological work." Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012). "[A] process is not unpatentable simply because it contains a
law of nature or a mathematical algorithm," as "an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent protection." Id. at
1293-94 (internal quotation marks and emphasis omitted). In order "to transform an
unpatentable law of nature into a patent-eligible application of such a law, one must do more
than simply state the law of nature while adding the words 'apply it."' Id. at 1294 (emphasis
The Supreme Court recently reaffirmed the framework laid out in Mayo "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 whether the claims are drawn to a patent-ineligible concept. Id. If the
answer is yes, the court must look to "the elements of the claim both individually and as an
'ordered combination"' to see ifthere is 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. (alteration in original).
"A claim that recites an abstract idea must include 'additional features' to ensure 'that the
[claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. at 2357
(alterations in original) (quoting Mayo, 132 S. Ct. at 1297). "[S]imply appending conventional
steps, specified at a high level of generality, to ... abstract ideas cannot make those ... ideas
patentable." Mayo, 132 S. Ct. at 1300. Further, "the prohibition against patenting abstract ideas
cannot be circumvented by attempting to limit the use of [the idea] to a particular technological
environment." Alice, 134 S. Ct. at 2358 (quoting Bilski v. Kappas, 561 U.S. 593, 610-11
(2010)). Thus, "the mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention." Id. For this second step, the machine-ortransformation test can be a ''useful clue," although it is not determinative. Ultramercial, Inc. v.
Hutu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 2907 (2015).
Patent eligibility under § 101 is a question oflaw suitable for resolution on a motion to
dismiss. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015);
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1346
(Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015). The Federal Circuit follows regional circuit
law for motions to dismiss. Content Extraction, 776 F.3d at 1346. When reviewing a motion to
dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), this Court must accept the
complaint's factual allegations as true. See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555-56
The Federal Circuit has held that the district court is not required to individually address
claims not asserted or identified by the non-moving party, so long as the court identifies a
representative claim and "all the claims are substantially similar and linked to the same abstract
idea." Content Extraction, 776 F.3d at 1348 (internal quotation marks omitted).
The '955 patent contains three independent claims: claim 1, claim 12, and claim 29. At
oral argument, Plaintiffs agreed that claim 1 or claim 12 would be representative. (D.I. 30 at 2829). Claims 1 and 12 are nearly identical, aside from claim 1 being directed toward a "method"
and claim 12 being directed toward a "system":
12. A system for monitoring a user's
interactions with Internet-based programs or
documents, the system comprising:
1. A method for monitoring a user's
interactions with Internet-based programs or
documents, the method comprising:
extracting content from Internet server
traffic according to predefined rules;
a processor to extract content from
Internet server traffic according to
predefined rules, associate the extracted
content with one or more of a user's
Internet interaction sessions, index the
user's Internet interaction sessions,
automatically compare one or more of the
user's Internet interaction sessions to one
or more modeled sessions by executing a
web analyzer to generate a
recommendation of one or more future
session paths from the modeled sessions
for guiding the user's Internet
interactions and to provide the
recommendation of the future session
paths from the modeled sessions on
screen to a contact center agent while the
contact center agent is communicating
with said user during a telephone call
initiated by the user between the agent
and the user; and
associating the extracted content with one
or more of a user's Internet "interaction
storing and indexing the user's Internet
automatically comparing, by a web
analyzer using a processor, one or more of
the user's Internet interaction sessions to
one or more modeled sessions to generate
a recommendation of one or more future
session paths from the modeled sessions
for guiding the user's Internet interactions;
providing the recommendation of the
future session paths from the modeled
sessions on screen to a contact center
agent while the contact center agent is
communicating with said user during a
telephone call initiated by the user
between the agent and the user.
a storage device to store the one or more
of the user's Internet interaction sessions.
Claim 29 is nearly identical to claim 1, aside from not requiring that the user's Internet
interaction sessions be compared to one or more "modeled sessions." (Id. claim 29). Instead,
claim 29 more generally requires that the web analyzer analyzes the Internet interaction sessions
to generate a recommendation. (Id.).
A. Mayo/Alice Step One: Abstract Idea
"First, we determine whether the claims at issue are directed to [an abstract idea]." Alice,
134 S. Ct. at 2355. "The 'abstract ideas' category embodies 'the longstanding rule that an idea
of itself is not patentable."' Id. (internal quotation marks omitted) (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)). "The Supreme Court has not established a definitive rule to
determine what constitutes an 'abstract idea' sufficient to satisfy the first step of the Mayo/Alice
inquiry." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). The Supreme
Court has recognized, however, that "fundamental economic practice[s]," Bilski, 561 U.S. at 611,
"method[s] of organizing human activity," Alice, 134 S. Ct. at 2356, and mathematical
algorithms, Benson, 409 U.S. at 64, are abstract ideas. In navigating the parameters of such
categories, courts have generally sought to "compare claims at issue to those claims already
found to be directed to an abstract idea in previous cases." Enfish, 822 F.3d at 1334. "But in
determining whether the claims are directed to an abstract idea, we must be careful to avoid
oversimplifying the claims because ' [a]t some level, all inventions ... embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas."' In re TLI Commc 'ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (alterations in original) (quoting Alice, 134 S.
Ct. at 2354).
Defendant argues that the '955 patent seeks "to cover the basic and well known business
concept of providing a customer recommendation by gathering customer data from one
communication channel and providing a customer recommendation via another communication
channel." (D .I. 18 at 13). Defendant contends that, like the concept of "intermediated
settlement" in Alice, the '955 patent seeks to claim '"a building block of the modem economy."'
(Id. (quoting Alice, 134 S. Ct. at 2356)). Plaintiffs respond by repeatedly arguing that the '955
patent is directed to a computer-rooted, Internet-specific problem. (D.1. 23 at 16-18).
"Under step one of Mayo/Alice, the claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter." Internet Patents, 790
F.3.d at 1346. Here, the claims are directed to the abstract idea of cross-channel customer
service, 1 i.e., gathering customer information from one communication channel and using it to
engage the customer via another communication channel. Indeed, cross-channel customer
service is certainly "a fundamental economic practice long prevalent in our system of
commerce," which more recently, with the proliferation of new communication channels such as
social media, has become firmly established as "a building block of the modem economy."
Alice, 134 S. Ct. at 2356. While claim 1 requires concrete, tangible components-such as
"Internet-based programs or documents," "a web analyzer using a processor," and "modeled
sessions"-much like in TL! Commc 'ns, "the specification makes clear that the recited physical
components merely provide a generic environment in which to carry out the abstract idea." TL!
Commc 'ns, 823 F.3d at 611. The specification repeatedly describes the problem presented and
solved by the invention of the '955 patent as maintaining a consistent customer experience across
different communications channels. ('955 patent, col. 1, 11. 36-41 ("Further variability may be
introduced when customers use multiple different channels of communication, such as the
Internet and call center for customer service.... [A]gents contacted via one channel may have
"Customer service," as the '955 patent itself confmns, can include "provid[ing] technical support, sell[ing]
products or schedul[ing] appointments." ('955 patent, col. 1, 11. 16-19).
no way to track a customer's history across another channel."); id. col. 4, 11. 43-45 ("Customer
interactions maybe tracked using 'cross-channel' analysis, e.g., across multiple channels of
communication."); id. at 5:66-6:2 ("The real-time guidance message may offer up-sell or crosssell options, for example, according to the analysis of the web interaction and business rules in a
recommendations database.")). Courts have routinely found that similar claims are directed to
abstract ideas. See, e.g., Elec. Power Grp., LLCv. Alstom S.A., -- F.3d--, 2016 WL 4073318, at
*3 (Fed. Cir. Aug. 1, 2016) (claims directed to "collecting information, analyzing it, and
displaying certain results of the collection and analysis" were abstract); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (customizing web page
content based on information known about the user, i.e., information tailoring, was an abstract
idea); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims
directed to "automat[ing] or otherwise mak[ing] more efficient traditional price-optimization
methods" were abstract); Content Extraction, 776 F.3d at 1347 (claims directed to collecting,
recognizing, and storing data were found abstract); Pragmatus Telecom, LLC v. Genesys
Telecommc 'ns Labs., Inc., 114 F. Supp. 3d 192, 200 (D. Del. 2015) (claims were "directed to the
abstract idea of communication between a customer and a business using a call center, automated
and obfuscated along the way using certain computer, telephonic and network services").
Relying on DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014), Plaintiffs
contend that "the '955 patent provides a concrete, specific solution to a problem necessarily
rooted in computer and internet technology," namely, "how to provide call center agents (who
only have access to customer service systems) with useful information about users' Internet
session information (which is not available in customer service systems)." (D.I. 23 at 16).
Plaintiffs argue that the claims of the '955 patent "like those inDDR, recite a specific computer
manipulation to solve a problem specifically arising the in the realm of computers and the
Internet." (Id. at 18). Plaintiffs misread DDR Holdings. There, the Federal Circuit stated that
"identifying the precise nature of the abstract idea [was] not as straightforward as in Alice" or
other cases. Id. Therefore, the court simply assumed that the patent-in-suit was directed to an
abstract idea, and then proceeded to Mayo/Alice step two. See id. ("[U]nder any of these
characterizations of the abstract idea, the '399 patent's claims satisfy Mayo/Alice step two.").
Stripped of its generic computer components and limitation to a particular technological
environment, an analogy demonstrates how the claimed method is abstract. A customer walks
into a car dealership and encounters a car salesman. The customer tells the car salesman what
she is looking for, the salesman shows the customer various cars on the lot, and the customer
expresses enthusiasm for specific cars or features throughout the encounter, which the salesman
notes along with his other observations of the customer. The customer decides not to buy
anything that day. Later that day, the salesman thinks back to past customers who shared similar
personal characteristics, interests, and concerns with this particular customer and remembers that
they all purchased the same make and model of car, the 2014 WonderCar SLE. The salesman
creates a file for the particular customer and makes a note of this recommendation in the
customer's file. Several days later, the customer calls the dealership to ask a few questions and
reaches salesman B. During the conversation, Salesman B pulls the dealership's file for the
customer and sees the note suggesting that a 2014 WonderCar SLE would be perfect for this
customer. Salesman B proceeds to recommend that the customer swing by the dealership to look
at a red 2014 WonderCar SLE. Aside from the use of automation via generic computer
components to increase efficiency, the salesman has just practiced the claimed method.
Lastly, in Enfish, the Federal Circuit recently clarified that a relevant inquiry at Alice step
one is "to ask whether the claims are directed to an improvement to computer functionality
versus being directed to an abstract idea .... " Enfish, 822 F.3d at 1335. It explained that courts
should seek to distinguish between claims that are "directed to an improvement in the
functioning of a computer" versus "simply adding conventional computer components to wellknown business practices." Id. at 1338. The Federal Circuit found that the claims at issue in
Enfish were not directed to an abstract idea because the claims outlined a "specific asserted
improvement in computer capabilities ... , [rather than] a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Id. at 1336. The claims here do
precisely the opposite of the claims in Enfish.
Plaintiffs' efforts to summarize the invention of the '955 patent highlight the fact that the
'955 patent does not claim any "improvement in computer capabilities," but instead claims an
"abstract idea for which computers are invoked merely as a tool." Enfish, 822 F.3d at 1336.
More specifically, Plaintiffs essentially parrot the claim language, arguing that:
[T]he invention of the '955 patent involves a system and multi-step computerized
method, according to which  content is extracted from Internet server traffic
according to predefined rules,  the extracted content is associated with one or
more of a user's Internet interaction sessions,  the user's Internet interaction
sessions are indexed,  one or more of the user's Internet interaction sessions are
compared to one or more modeled sessions to generate a recommendation of one
or more future sessions paths, and  the recommendation is provided on a screen
to a contact center agent in real time, while the contact center agent is
communicating with the user during a user-initiated telephone call. As described
below, each one of the above stages or sub-systems is computerized, and cannot be
performed by a person.
(D.I. 23 at 8). Plaintiffs' brief then goes on for four pages outlining the steps of the claims and
· filling in details from the specification. (Id. at 8-11 ). However, Plaintiffs do not once point to
anything in the specification that could conceivably constitute an advance or improvement in
technology for performing this method. Instead, the portions of the specification Plaintiffs rely
upon merely describe a series of generic computer components that perform the claimed method
steps-"a data extractor or other web capture device," '_'an analysis server," "an interactions
database, which may include an index server," "a web analyzer," and "modeled sessions." (Id. at
8-11 ). Accordingly, the specification does not evidence any improvement in computer
technology itself, but "merely provide[s] a generic environment in which to carry out the abstract
idea." TL!, 823 F.3d at 611.
I therefore conclude that the claims are directed to the abstract idea of cross-channel
B. Mayo/Alice Step Two: Inventive Concept
The determination that a patent is directed to an abstract idea "does not render the subject
matter ineligible." Internet Patents, 790 F.3d at 1346. Having decided that the patent's claims
are directed to an abstract idea, the Court must next "determine whether the claims do
significantly more than simply describe the abstract method." Ultramercial, 772 F.3d at 715.
Since "a known idea, or one that is routine and conventional, is not inventive in patent terms,"
this analysis "favors inquiries analogous to those undertaken for determination of patentable
invention." Internet Patents, 790 F.3d at 1346. Indeed, the Federal Circuit has noted that the
two stages of the Alice two-step inquiry "are plainly related" and "involve overlapping scrutiny
of the content of the claims .... " Elec. Power Grp., 2016 WL 4073318, *3. Furthermore,
neither "[a] simple instruction to apply an abstract idea on a computer," nor "claiming the
improved speed or efficiency inherent with applying the abstract idea on a computer" satisfies
the requirement of an "inventive concept." Intellectual Ventures, 792 F.3d at 1367.
Defendant argues, "At Alice step two, the asserted claims add nothing inventiv~they
just direct practitioners to implement the abstract idea using conventional computer components
performing generic computer functions." (D.I. 27 at 7). Thus, according to Defendant, the '955
patent is merely "directed to speeding up an age-old customer service process through the use of
computers-and not a scientific or technological advancement." (D.I. 18 at 16). Focusing on
the fact that the claims are directed to extracting content from a user's Internet sessions,
Plaintiffs argue that the '955 patent's claims contain an inventive concept because they are
limited to a specific technological solution such that they would not preempt every manner of
making cross-channel recommendations to customers. (D.I. 23 at 20). After repeating the
language of claim 1, Plaintiffs continue to argue that the claims describe a "complex, computertethered process" because, for example, "extracting content from Internet server traffic is a
complex task necessarily rooted in computer and Internet technology" and "a web analyzer is an
Internet-specific software module." (D.I. 23 at 20-21). Moreover, Plaintiffs argue that the
claimed "modeled sessions" provide an inventive concept because they are part of a "computerspecific process that reviews customer history and ideal session history to generate in real time a
recommendation." (Id. 23). Plaintiffs emphasize, "This is not human-performable, as these are
complex mathematical models based on an enormous amount of data." (Id.). Lastly, Plaintiffs
contend that DDR Holdings is controlling because the '955 patent provides a solution tethered to
the technology that created the problem.
I conclude that the independent claims of the '955 patent (1, 12, and 29) do not add any
inventive concept to the abstract idea of cross-channel customer service. First, Plaintiffs'
arguments-focusing on the fact that the claims require automatic, real-time analysis-confirm
that the claims are merely directed to using generic computer components to add efficiency and
speed to the abstract idea of cross-channel customer service. However, it is well-settled that
claims simply directed toward performing the abstract idea using generic computer components,
such as a processor, do not contain an inventive concept. See, e.g., Elec. Power Grp., 2016 WL
4073318, at *5 ("Nothing in the claims, understood in light of the specification, requires
anything other than off-the-shelf, conventional computer, network, and display technology ....
We have repeatedly held that such invocations of computers and networks that are not even
arguably inventive are insufficient to pass the test of an inventive concept in the application of an
abstract idea." (internal quotation marks omitted)); Intellectual Ventures, 792 F.3d at 1371
("Steps that do nothing more than spell out what it means to 'apply it on a computer' cannot
confer patent-eligibility."); Content Extraction, 776 F.3d at 1347--48 ("For the role of a computer
in a computer-implemented invention to be deemed meaningful in the context of this analysis, it
must involve more than performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' (alteration in original) (quoting Alice, 134 S. Ct. at 2359)).
For example, the claims describe a "web analyzer using a processor" that can
automatically compare one or more of the user's Internet interaction sessions to one or more
"modeled sessions" to generate a recommendation. ('955 patent, claims 1, 12, 29). This claim
language simply describes using a generic processor to speed up an analytical process. While the
use of computer processors and real-time predictive analytics can certainly make analyzing
information faster and more efficient, courts have repeatedly held that merely using a computer
to increase the efficiency of a fundamental business practice is insufficient to transform the
abstract idea into an inventive application. See, e.g., Intellectual Ventures, 792 F.3d at 1370
("[O]ur precedent is clear that merely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise abstract idea.");
MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1267 (Fed. Cir. 2012) ("While running a
particular process on a computer undeniably improves efficiency and accuracy, cloaking an
otherwise abstract idea in the guise of a computer-implemented claim is insufficient to bring it
within section 101.").
Second, unlike in DDR Holdings, the problem the '955 patent purportedly addresses is
not itself inherently limited to the specific technological environment claimed by the patentee, as
Plaintiffs suggest. The communications channels generally implicated by cross-channel
customer service and marketing are not so limited. Indeed, as the amounts of different customer
service channels have increased with new technology, cross-channel customer service could
implicate a number of different channels through which businesses communicate with customers.
For instance, one could replace the Internet interaction sessions and call center claimed by the
patent with a company's mobile application and a customer support representative
communicating with the consumer via text message. 2 Likewise, the challenges of cross-channel
customer service can arise between brick-and-mortar stores and a company's national,
centralized call center. Regardless of which two customer service channels are selected, the
abstract idea is the same, cross channel customer service, i.e., providing customers with an
integrated customer service experience across different communications channels.
Moreover, Plaintiffs' repeated incantations of "rooted in computer technology,"
"Internet-specific," and the like do not make this case similar to DDR, nor can they save claims
directed to an abstract idea. In DDR Holdings, the claims at issue addressed "the problem of
retaining website visitors that, if adhering to the routine, conventional functional of Internet
hyperlink protocol, would be instantly transported away from a host's website after 'clicking' on
I acknowledge that Plaintiffs may argue that the patent's claims are broad enough to encompass these alternative
channels. I think this raises a considerable concern that the '955 patent would preempt the field, as I discuss below.
an advertisement and activating a hyperlink." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014). Thus, the Federal Circuit emphasized that, unlike other cases
where it invalidated patents under§ 101, "these claims [stood] apart because they [did] not
merely recite the performance of some business practice kno'wn from the pre-Internet world
along with the requirement to perform it on the Internet." Id. Unlike DDR, the challenges of
maintaining a consistent, integrated customer service platform have existed as long as businesses
have operated using multiple communications channels. While the proliferation of Internet and
mobile technologies has no doubt provided new challenges for companies seeking to provide
quality cross channel customer service, this does not render the problem addressed by the '955
patent an "Internet-specific" problem or one "rooted in computer technology." Moreover, it
certainly does not give Plaintiffs a license to claim the abstract idea of engaging customers
across multiple communications channels by simply limiting one of the claimed channels to
being the Internet, especially where the Internet was a well-established medium in the world of
commerce well before the patentee filed for the '955 patent in 2011.
Here, the limitation to a specific technological environment is not inherent in the problem
faced in cross-channel customer service, but is provided in the claims by the patentee. More
specifically, the patentee made the deliberate choice to limit the claimed data gathering to being
from "Internet Server Traffic" and to limit the subsequent recommendation to occurring when
the consumer initiates contact with the contact center agent. (See, e.g., '955 patent, claim 1).
Limiting the claims to these communication channels in this order-(1) gathering information
from the Internet, then (2) communicating a recommendation via a contact center agent when the
user initiates a call-does not provide an inventive concept to rescue an otherwise abstract idea.
Indeed, the law is clear that a patentee cannot manufacture an inventive concept by claiming an
abstract idea but limiting it to a specific technological environment. See, e.g., Alice, 134 S. Ct. at
2358 ("[T]he prohibition against patenting abstract ideas cannot be circumvented by attempting
to limit the use of [the idea] to a particular technological environment." (quoting Bilski, 561 U.S.
at 610-11); Intellectual Ventures, 792 F.3d at 1366 ("An abstract idea does not become
nonabstract by limiting the invention to a particular field of use or technological environment,
such as the Internet."); Elec. Power Grp., 2016 WL 4073318, at *4. Here, that is all that the '955
patent does. It talces the abstract idea of cross-channel customer service, and limits it to a
specific context that is not all that limiting, where the customer browses the Internet and
subsequently calls a business's contact center.
Moreover, despite this purported limitation by the patentee, the broad claim terms
employed in the '955 patent raise a genuine concern that the claims of the patent would largely
preempt the integrated sales and customer service approaches of most modern businesses.
Language such as "Internet server traffic" and "internet interaction sessions" could broadly
sweep in any form of Internet-connected activity. Another example of the considerable breadth
of the claims is that the specification states that "calling" is not limited to a traditional telephone
call, but essentially includes any user-initiated contact with the contact center agent. ('955
patent, col. 3, 11. 54-59 (stating that "calling" can include ''using a traditional telephone or other
device such as a VOIP telephone, cellular telephone, or other device, to speak with another
person" and pointing out that "embodiments of the invention may allow for a user to contact an
agent via other methods, such as on-line chat")). Accordingly, the '955 patent would essentially
preempt an entire integrated customer service strategy, whenever a user uses any Internet-based
platform and subsequently initiates contact with anything that can be described as contact center.
Third, the claims and specification of the '955 patent do not provide any technical
explanations as to how any of the various computer components function or provide the desired
efficiency, but instead resort to vague, functional descriptions of the components. For instance,
the specification describes the "web analyzer" in terms of its basic functions, rather than
anything significant about the technology itself, stating that it "may retrieve data from capture
storage 414 and/or capture database 416 and may analyze the data, identify, filter, save or extract
interesting elements, such as, products and products prices .... " ('955 patent, col. 4, 11. 52-56).
The Federal Circuit has recently clarified that such functional, result-oriented claims are a
hallmark of claims commonly found invalid under§ 101. See Elec. Power Grp., 2016 WL
4073318, at *6 ("Indeed, the essentially result-focused, functional character of claim language
has been a :frequent feature of claims held ineligible under§ 101, especially in the area of using
generic computer and network technology to carry out economic transactions."); TL! Commc 'ns,
823 F.3d at 615 ("While these units purport to add additional functionality to the server, the
specification limits its discussion of these components to abstract functional descriptions devoid
of technical explanation as to how to implement the invention. . . . Such vague, functional
descriptions of server components are insufficient to transform the abstract idea into a patenteligible invention."). Accordingly, I find that the claims of the '955 patent are "so resultfocused, so functional, as to effectively cover any solution to [the] identified problem." Elec.
Power G1p., 2016 WL4073318, at *6.
Fourth, the "modeled sessions" do not add any sort of inventive concept to transform the
claims so as to be patent-eligible. While the specification does not explicitly define "modeled
sessions," it seems to suggest that they are "one or more corresponding ideal session histories or
summaries for comparison, for example, to predict optimal future session paths to recommend to
the customer." ('955 patent, col. 5, 11. 10-13). At oral argument, Plaintiffs' counsel similarly
described "modeled sessions" as "computer constructs that associate certain web interactions
with particular outcomes," or model outcomes. (D.I. 30 at 13:3--4). Accepting Plaintiffs'
characterization for purposes of this motion, the "modeled sessions" appear to represent no more
than making a basic statistical inference, or prediction of future behavior based on available data.
The specification provides no guidance as to how modeled sessions are generated or what data
inputs they may be based on, instead describing a broad, vague concept. Generically claiming
the comparison of data to models, without explaining how those models are created or how those
comparisons work, certainly does not add an inventive concept to the claimed abstract idea.
Lastly, Plaintiffs made no specific arguments in their answering brief or at oral argument
that any of the dependent claims offer an inventive concept over and above those of the
independent claims. Indeed, Plaintiffs' counsel indicated at oral argument that claims 1 and 12
are representative. (D.I. 30 at 28-29). Defendant argues that the asserted dependent claimsclaims 3-5, 8-11, 14, 17, 19-20, 25, and 27-28-do not provide a sufficient inventive concept to
transform the abstract idea into a patent-eligible application of that idea. (D.I. 18 at 21).
Specifically, Defendant argues:
For example, Claims 3 and 25 add limitations related to gathering content about
common webpage actions like the title of a webpage and product details viewed.
Claims 4, 5, and 17 add limitations related to generating a summary of the user's
past or current Internet sessions, which simply describe the user's sessions,
products viewed, and prices offered. Claim 20 adds that the modeled sessions are
generated by real-life sessions with users. Claim 27 adds displaying 'a key-value
summary' of the content to the agent during the telephone call. Claim 28 adds the
concept ofletting a user determine the web elements to be extracted on a web page.
(D.I. 18 at 21). After reviewing these dependent claims, I find that Defendant's summary of
these claims' minimal additional contributions is accurate. The dependent claims not explicitly
addressed by Defendant, likewise add nothing even arguably inventive. ('955 patent, claim 9
(adding that "information analyzed in the user's Internet interaction sessions includes key words
the user used for searching"); id. claim 11 (adding that recommendation "is provided to the
contact center agent in real-time"); id. claims 22-24 (adding variations in the structure of the
"modeled sessions," such as modeled sessions with a "fixed linear path of webpages to browse"
or "a dynamic tree-structure of paths"). I thus conclude that none of the asserted dependent
claims provides an inventive concept rendering the abstract idea patent-eligible.
I conclude that the asserted claims of the '955 patent are directed to an abstract idea and
lack an inventive concept. The asserted claims of the '955 patent are therefore invalid. Plaintiffs
have failed to state a claim upon which relief can be granted. In light of this decision,
Defendant's Motion to Dismiss for Failure to State a Claim as to Induced Infringement (D.I. 20)
will be dismissed as moot.
For the reasons set forth above, the motion to dismiss for lack of patentable subject
matter (D .I. 17) will be granted. An appropriate order will be entered.
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