Hyper Search LLC v. Facebook, Inc.

Filing 21

REPORT AND RECOMMENDATIONS- re 9 MOTION to Dismiss. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no longer 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 1/2/2019. Signed by Judge Sherry R. Fallon on 12/17/2018. (lih)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
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HYPER SEARCH, LLC,
Plaintiff,
V.

F ACEBOOK, INC.,
Defendant.

Civil Action No. 17-1387-CFC-SRF

REPORT AND RECOMMENDATION

I.

INTRODUCTION
Presently before the court in this patent infringement action is defendant Facebook, Inc.'s

("Facebook") motion to dismiss for failure to state a claim upon which relief can be granted
pursuant to Federal Rule of Civil Procedure 12(b)(6). (D.I. 9) For the reasons that follow, I
recommend that the court grant Facebook's motion to dismiss.

II.

BACKGROUND

A. Parties
Plaintiff Hyper Search LLC ("Hyper Search") is a Texas limited liability company with
its principal place of business in Plano, Texas. (D.I. 1 at, 1) Facebook is a Delaware
corporation with its principal place of business in Menlo Park, California. (Id. at , 2)

B. Facts
Hyper Search asserts claims for infringement regarding U.S. Patent Nos. 6,085,219 ("the
'219 patent"), 6,271,840 ("the '840 patent"), and 6,792,412 ("the '412 patent") (collectively, the
"patents-in-suit"). (D.I. 1)
Hyper Search asserts claims 5, 6, and 12 of the '219 patent against Facebook. (D.I. 1 at,
39) The '219 patent is titled "Home Page Creating Systems Apparatuses and Program Recording

Mediums, and Home Page Displaying Systems and Program Recording Mediums," and is
directed to a system that permits a user to create a home page automatically based on answer
data, without having to have any special knowledge. ('219 patent, abstract) Representative
claim 5 recites:
5. A server providing a home page for plurality of clients connected via a network,
compnsmg:
Template storage means for storing a plurality of templates for creating home pages
corresponding to respective types of the plurality of clients;
Home page creating means for reading a template corresponding to a type of a requesting
client from said template storage means based on type information received from the
requesting client, and for creating a home page based on the template and without
requiring that said user have any special knowledge of the template creation process; and
Home page storage means for storing the home page created by said home page creating
means so as to be freely accessible by the plurality of clients via the network.
('219 patent, col. 13:4-19) Claim 6 depends from claim 5: "the server according to claim 5,
wherein said home page creating means creates a home page whose display format is dependent
on the type of the requesting client." (Id., col. 13:20-22)
Hyper Search asserts claims 1 and 13 of the '840 patent against Facebook. (D.I. 1 at ,r
61) The '840 patent is entitled "Graphical Search Engine Visual Index," and is directed to "[a]
visual index method [which] provides graphical output from search engine results or other URL
lists." (' 840 patent, abstract) Representative claim 1 recites:
1. A browser interface for rendering summary graphic information regarding at least
one Uniform/Universal Resource Locator (URL), comprising:
A web crawler, said web crawler receiving a first URL from a source ofURLs, said
web crawler retrieving data associated with said first URL and transmitting said data
as output; and
A web page renderer, said web page renderer receiving as input said retrieved data
associated with said first URL transmitted as output by said web crawler, said web
page renderer also receiving as input image scale and format information, said web

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page renderer transmitting as output a reduced image of said data associated with said
first URL, said web page renderer transmitting said reduced image with an embedded
hyperlink embedded in said data and referring to a second URL separate from said
first URL with which said data is associated; whereby
The browser interface delivers to a viewer said reduced image as a graphical
summary of said data, allowing said viewer to more easily determine content
presented at said URL without having said data occupy an entire computer screen.
('840 patent, col. 11:17-39)
Hyper Search asserts claim 1 of the '412 patent against Facebook. (D.I. 1 at ,r 85) The
'412 patent is entitled "Neutral Network System and Method for Controlling Information Output
Based on User Feedback," and claims "[a] system and method for controlling information output
based on user feedback about the information that includes a plurality of information sources."
('412 patent, abstract) Claim 1 recites:
1. A system for controlling information output based on user feedback about the
information comprising:
A plurality of information sources providing information;
At least one neural network module that selects one or more of a plurality of objects to
receive information from the plurality of information sources based at least in part on a
plurality of inputs and a plurality of weight values;
At least one server, associated with the neural network module, that provides one or more
of the objects to one or more recipients;
The recipients enabling for one or more users to generate feedback about the information;
and
Wherein the neural network module generates a rating value for a plurality of the objects
at the end of an epoch, redetermines the weight values using the rating values, and selects
which objects to receive information during a subsequent epoch using the redetermined
weight values and the inputs for that subsequent epoch.
('412 patent, col. 19:49-67)

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C. Procedural History
Hyper Search initiated this action on October 3, 2017. (D.I. 1) On January 10, 2018,
Facebook filed the pending motion to dismiss the complaint for lack of patent-eligible subject
matter pursuant to 35 U.S.C. § 101. (D.I. 9) The court heard oral argument on June 11, 2018.

III.

LEGAL STANDARD
A. Motion to Dismiss under Rule 12(b)(6)
Rule 12(b)(6) permits a party to move to dismiss a complaint for failure to state a claim

upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). When considering a Rule 12(b)(6)
motion to dismiss, the court must accept as true all factual allegations in the complaint and view
them in the light most favorable to the plaintiff. Umland v. PLANCO Fin. Servs., 542 F.3d 59,
64 (3d Cir. 2008).
To state a claim upon which relief can be granted pursuant to Rule 12(b)(6), a complaint
must contain a "short and plain statement of the claim showing that the pleader is entitled to
relief." Fed. R. Civ. P. 8(a)(2). Although detailed factual allegations are not required, the
complaint must set forth sufficient factual matter, accepted as true, to "state a claim to relief that
is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007); see also Ashcroft

v. Iqbal, 556 U.S. 662, 663 (2009). A claim is facially plausible when the factual allegations
allow the court to draw the reasonable inference that the defendant is liable for the misconduct
alleged. Iqbal, 556 U.S. at 663; Twombly, 550 U.S. at 555-56.
When determining whether dismissal is appropriate, the court must take three steps. 1 See

1

Although Iqbal describes the analysis as a "two-pronged approach," the Supreme Court
observed that it is often necessary to "begin by taking note of the elements a plaintiff must plead
to state a claim." 556 U.S. at 675, 679. For this reason, the Third Circuit has adopted a threepronged approach. See Santiago v. Warminster Twp., 629 F.3d 121, 130 n.7 (3d Cir. 2010);
Malleus v. George, 641 F.3d 560, 563 (3d Cir. 2011).
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Santiago v. Warminster Twp., 629 F.3d 121, 130 (3d Cir. 2010). First, the court must identify

the elements of the claim. Iqbal, 556 U.S. at 675. Second, the court must identify and reject
conclusory allegations. Id. at 678. Third, the court should assume the veracity of the wellpleaded factual allegations identified under the first prong of the analysis, and determine whether
they are sufficiently alleged to state a claim for relief. Id.; see also Malleus v. George, 641 F.3d
560, 563 (3d Cir. 2011). The third prong presents a context-specific inquiry that "draw[s] on
[the court's] experience and common sense." Iqbal, 556 U.S. at 663-64; see also Fowler v.
UPMC Shadyside, 578 F.3d 203,210 (3d Cir. 2009). As the Supreme Court instructed in Iqbal,

"where the well-pleaded facts do not permit the court to infer more than the mere possibility of
misconduct, the complaint has alleged - but it has not 'show[n]' - 'that the pleader is entitled to
relief."' Iqbal, 556 U.S. at 679 (quoting Fed. R. Civ. P. 8(a)(2)).
B. Patent-Eligible Subject Matter under 35 U.S.C. § 101

Section 101 provides that patentable subject matter extends to four broad categories,
including "new and useful process[es], machine[s], manufacture, or composition[s] of matter."
35 U.S.C. § 101; see also Bilski v. Kappas, 561 U.S. 593, 601 (2010) ("Bilski IF'); Diamond v.
Chakrabarty, 447 U.S. 303,308 (1980). The Supreme Court recognizes three exceptions to the

statutory subject matter eligibility requirements: "laws of nature, physical phenomena, and
abstract ideas." Bilski II, 561 U.S. at 601 (internal quotations omitted). In this regard, the
Supreme Court has held that "[t]he concepts covered by these exceptions are 'part of the
storehouse of knowledge of all men ... free to all men and reserved exclusively to none."' Id. at
602 (quoting Funk Bros. Seed Co. v. Kala lnoculant Co., 333 U.S. 127, 130 (1948)). At issue in
the present case is the third category pertaining to abstract ideas, which "embodies the

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longstanding rule that an idea of itself is not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'!,
134 S. Ct. 2347, 2355 (2014) (internal quotations and citation omitted).
In Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), the
Supreme Court articulated a two-step "framework 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. In accordance with the first step of the Alice test,
the court must determine whether the claims at issue are directed to a patent-ineligible concept.
See id. If so, the court must tum to the second step, under which the court must identify 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 citation omitted). The two steps are "plainly related" and "involve
overlapping scrutiny of the content of the claims." Elec. Power Grp., LLC v. Alstom SA., 830
F.3d 1350, 1353 (Fed. Cir. 2016).
At step 1, "the claims are considered in their entirety to ascertain whether their character
as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see also Affinity Labs of Texas, LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) ("The 'abstract idea' step of the inquiry calls upon us

to look at the 'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter."). However, "courts must be
careful to avoid oversimplifying the claims by looking at them generally and failing to account
for the specific requirements of the claims." McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1313 (Fed. Cir. 2016) (internal quotations and citations omitted).

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At step 2, the Federal Circuit has instructed courts to "look to both the claim as a whole
and the individual claim elements to determine whether the claims contain 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." McRO, 83 7 F .3d at 1312
(internal brackets and quotation marks omitted). Under the step 2 inquiry, the court must
consider whether claim elements "simply recite 'well-understood, routine, conventional
activit[ies]."' Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2359) (alteration in original). "Simply appending
conventional steps, specified at a high level of generality, [is] not enough to supply an inventive
concept." Alice, 134 S. Ct. at 2357 (internal quotation marks omitted). "Whether at step one or
step two of the Alice test, in determining the patentability of a method, a court must look to the
claims as an ordered combination, without ignoring the requirements of the individual steps."
Enfish, LLC v. Microsoft, 822 F.3d 1327, 1338 (Fed. Cir. 2016).

The Federal Circuit has looked to the claims as well as the specification in performing the
"inventive concept" inquiry. See Affinity Labs., 838 F.3d at 1271 ("[N]either the claim nor the
specification reveals any concrete way of employing a customized user interface."). "The
inventive concept inquiry requires more than recognizing that each claim element, by itself, was
known in the art." Bascom, 827 F.3d at 1350. In Bascom, the Federal Circuit held that "the
limitations of the claims, taken individually, recite generic computer, network and Internet
components, none of which is inventive by itself," but nonetheless determined that an ordered
combination of these limitations was adequately alleged to be patent-eligible under step 2 at the
pleading stage. Id. at 1349.

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The "mere recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention" under step two. Alice, 134 S. Ct. at 2358. "Given the
ubiquity of computers ... wholly generic computer implementation is not generally the sort of
additional feature that provides any practical assurance that the process is more than a drafting
effort designed to monopolize the abstract idea itself." Id. (internal quotations and citations
omitted). For the second step of the Alice framework, the machine-or-transformation test may
provide a "useful clue," although it is not determinative. Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716 (Fed. Cir. 2014) (citing Bilski II, 561 U.S. at 604 and Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)). A claimed

process can be patent-eligible under § 101 consistent with the machine-or-transformation test if it
"uses a particular machine or apparatus" and does not "pre-empt2 uses of the principle that do not
also use the specified machine or apparatus in the manner claimed." In re Bilski, 545 F.3d 943,
954 (Fed. Cir. 2008), ajf'd sub nom., Bilski II, 561 U.S. 593 (2010).
Patent eligibility under § 101 is a question of law suitable for resolution on a motion to
dismiss for failure to state a claim under Rule 12(b)(6). See In re TL! Commc 'ns LLC Patent
Litig., 823 F.3d 607,610 (Fed. Cir. 2016) (applying regional circuit law to the de novo review of

2

At both steps one and two of the Alice inquiry, the Federal Circuit considers the issue of
preemption to determine whether a patent is not directed to a specific invention and instead
would monopolize "the basic tools of scientific and technological work," thereby "imped[ing]
innovation more than it would tend to promote it" and "thwarting the primary object of the patent
laws." Alice, 134 S. Ct. at 2354; see also McRO, 837 F.3d at 1315 (applying the doctrine of
preemption and concluding that a claim was patent-eligible at step 1); Bascom, 827 F.3d at 1350
(applying the doctrine of preemption and concluding that a claim was patent-eligible at step 2).
"[T]he focus on preemption goes hand-in-hand with the inventive concept requirement." Jedi
Techs., Inc. v. Spark Networks, Inc., C.A. No. 16-1055-GMS, 2017 WL 3315279, at *8 n.2 (D.
Del. Aug. 3, 2017) (quoting Tenon & Groove, LLC v. Plusgrade S.E.C., C.A. No. 12-1118-GMS,
2015 WL 1133213, at *4 (D. Del. Mar. 11, 2015)). However, "the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
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a district court's patent eligibility determination under§ 101 on a Rule 12(b)(6) motion to
dismiss). However, the Federal Circuit recently emphasized that, "like many legal questions,
there can be subsidiary fact questions which must be resolved en route to the ultimate legal
determination." Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128 (Fed.
Cir. 2018). "The question of whether a claim element or combination of elements is wellunderstood, routine and conventional to a skilled artisan in the relevant field is a question of
fact[]" that goes beyond what was simply known in the prior art. Berkheimer v. HP Inc., 881
F.3d 1360, 1368 (Fed. Cir. 2018). On a motion to dismiss, this question of fact, like all questions
of fact, must be resolved in the plaintiffs favor. Aatrix Software, Inc., 882 F.3d at 1128.

IV.

DISCUSSION
First, as a preliminary matter, Hyper Search argues that the asserted claims must be

interpreted before they can be assessed under§ 101. (D.I. 12 at 9-10) However, "claim
construction is not an inviolable prerequisite to a validity determination under§ 101," even for
means-plus-function claims. Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'l Ass 'n, 776 F.3d 1343, 1349 (Fed. Cir. 2014) (affirming the district court's dismissal of the

patent claims as "patent-ineligible under§ 101 at the pleading stage"); see also DIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1360-62 (Fed. Cir. 2015) (affirming dismissal on the

pleadings); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 717 (Fed. Cir. 2014) (affirming Rule
12(b)(6) dismissal); Modern Telecom Sys. LLC v. Juno Online Servs., Inc., 2015 WL 1240182, at
*7 (C.D. Cal. Mar. 17, 2015) ("[A]fter Alice, courts have frequently decided patent-eligibility on
the pleadings.").
Here, Hyper Search does not identify any claim construction issues that need resolution
or any facts in dispute. (See D.I. 12) Nonetheless, it argues that a claim construction hearing is

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necessary for the asserted claims because they are means-plus-function claims under 35 U.S.C. §
112(f). 3 (D.I. 12 at 9-10) However, Hyper Search does not identify any claim construction
issues that need resolution or any facts in dispute that would affect the court's analysis. 4 (See
D.I. 12); Smart Software, Inc. v. PlanningEdge, LLC, 192 F. Supp. 3d 243,247 (D. Mass. 2016)
(deciding § 101 eligibility without claim construction where plaintiff failed to offer any specific
claim construction issues that would affect the analysis). Other courts have dismissed
infringement suits involving patents with means-plus-function claims on the pleadings based on
§ 101 eligibility. See, e.g., TDE Petroleum Data Sols., Inc. v. AKM Enter., Inc., 2015 WL
5311059, at *6, *9 (S.D. Tex. Sept. 11, 2015); In re TLI Commc 'ns LLC Patent Litig., 87 F.
Supp. 3d 773, 804-05 (E.D. Va. 2015). Therefore, claim construction is not necessary and
determining whether the patents-in-suit are patent-eligible under§ 101 is appropriate at this stage
of the proceedings.
A. Alice Step One
Applying the first step of the Alice framework to the asserted claims of the patents-insuit, the claims focus on a "result or effect that itself is [an] abstract idea and merely invoke[s]

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"Element in claim for a combination.-An element in a claim for a combination may be
expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. §
112(f).
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Hyper Search filed a notice of subsequent authority to highlight to Federal Circuit's recent
decision inAatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018),
in support of its assertion that claim construction should be conducted prior to granting a Rule
12(b)(6) motion. (D.I. 16) However, the Federal Circuit did not reach the issue of whether the
district court erred in granting the motion to dismiss without claim construction. Aatrix, 882
F.3d at 1125 ("We have some doubt about the propriety of [granting the motion to dismiss
without claim construction] in this case, but need not reach that issue because it did err when it
denied leave to amend without claim construction .... "). Aatrix does not alter the
recommendation.
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generic processes and machinery." Apple Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir.
2016). Hyper Search does not directly dispute that the ideas reflected in the asserted claims are
abstract, but rather argues that the patents-in-suit are patent-eligible because their specifications
provide "improvements in computer functionality." (D.1. 12 at 3-8)
1. The '219 patent

Hyper Search alleges that the '219 patent describes and claims an improved home page
creating system, which overcomes at least three disadvantages of prior systems: (1) the '219
patent describes a home page display system that reduces the time required for sending a home
page; (2) it describes a system that does not require users to have any special knowledge of the
home page template creation process; and (3) it describes a system that creates a home page
easily. (D.I. 12 at 3) (citing '219 patent at col. 1:50-3:25)
The '219 patent claims are directed to the abstract idea of storing a template, creating a
document based on that template, and storing the document for access by the public. "With the
exception of generic computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with a pen and paper."
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Hyper

Search does not identify any concrete patent-eligible invention tied to the language of the claims.
(D.1. 12 at 3-5, 12-13) The patent specification describes the process of creating home pages as a
well-known activity that is performed by human beings, either by using application software or
hiring a "home page creating company." ('219 patent at col. 1:23-31)
Nor do the asserted claims improve the way a computer functions. The claims use a
wholly generic computer system to obtain functional results of storing a template, creating a
document based on that template, and storing the document, with no technical detail describing

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how to achieve those results. The '219 patent's specification makes clear that if a user does not
have any "special knowledge" of the home page template creation process of the claims, the user
can hire a company to prepare the home page for them. ('219 patent at col. 1:25-31) The claims
of the '219 patent "do[ ] not sufficiently describe how to achieve" the results of creating a home
page from a template "in a non-abstract way." Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017). Essentially, the claims state to "do it on

a computer." Apple Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (internal
citations omitted).
Representative claim 5 of the '219 patent is similar to the claim found abstract in Capital
One, which was directed to "customizing web page content as a function of navigation history

and information known about the user," such as the user's location or address. Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-71 (Fed. Cir. 2015) (claims

that "consist[ ] of nothing more tha[n] the entry of data into a computer database, the breakdown
and organization of that entered data according to some criteria, ... and the transmission of
information derived from that entered data to a computer user, all through the use of
conventional computer components, such as a database and processors, operating in a
conventional manner" do not confer patent eligibility). Here, the claims relate to creating a
"home page" based on information known about the user, including the type of client requesting
the "home page" and his or her "answer data." ('219 patent at col. 2: 15-20) The specification
describes the template being selected based on other information known about the user, including
the user's "age group" and the "user's preference data." ('219 patent at col. 5:48-56) Other
courts have held that patents directed to using templates to collect or generate documents, such
as web pages, are abstract ideas. See Tele-Publishing Inc. v. Face book, Inc., 252 F. Supp. 3d 17,

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23 (D. Mass. 2017) (claims directed to the creation of a personal page for a user that set out steps
to "collect and store personal information" were found to be abstract); CyberFone Sys., LLC v.
Lexmark Int'!, Inc., 137 F. Supp. 3d 648,659 (D. Del. 2015) (finding claims directed to "entering
and processing data in response to questions on forms or templates" to be an abstract idea).
Claim 12 is effectively identical to claim 5 and is therefore similarly abstract. (See '219
patent at col. 14:15-35) Dependent claim 6 claims that the display format of the home page
depends on the type of client requesting it. (See id. at col. 13 :20-22) Generically claiming that
the display format adapts based on information known about the user is insufficient to confer
patent eligibility. See Capital One, 792 F.3d at 1369.
Hyper Search also relies on McRO and Finjan to bolster its arguments for patent
eligibility for all of its patents, but both of these cases are distinguishable. The claimed invention
in McRO recited "specific rules" or algorithms for a computer to "achieve an improved
technological result" in computer animation, redirecting the animator's process from subjective
determinations to specific, limited mathematical rules. McRO, 83 7 F .3d at 1314-16. The
Federal Circuit concluded that the claimed invention went "beyond merely organizing existing
information into a new form or carrying out a fundamental economic practice," and instead used
specific rules to render information in a specific format used to create desired results. Id. at 1315
(internal quotation marks, brackets, and citations omitted). Here, the claims do not provide
technical details, rules, or algorithms as to how to store a template, create a document based on
that template, and store the document.
In Finjan, the court upheld that subject matter eligibility of claims directed to specific
computer based problems of behavior-based virus scanning- something which only occur on
computers - because they "employ[] a new kind of file that enables a computer security system

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to do things it could not do before," including "accumulat[ing] and utiliz[ing] newly available,
behavior-based information about potential threats." Finjan, Inc. v. Blue Coat Sys., Inc., 879
F.3d 1299, 1305 (Fed. Cir. 2018). The court emphasized that the Finjan claims described
specifically "how" to achieve the claimed result by "recit[ing] specific steps - generating a
security profile that identifies suspicious code and linking it to a downloadable - that accomplish
the desired result." Id. Again, the claims here are distinguishable because the method described
utilizes well-known technology and fails to provide details as to how that method is performed.
Therefore, the '219 patent is directed towards an abstract idea and must be analyzed
under Alice step two.

2. The '840 patent
Facebook argues that the asserted claims of the '840 patent are directed to the abstract
idea of summarizing collected information using graphics or images. (D.I. 10 at 12) Hyper
Search argues that the '840 patent claims improvements in computer functionality- specifically,
claim 1 and claim 13 are directed to a system that improved browser technology by creating
thumbnail and other summary graphic information to accompany hyperlinks that result at the end
of a search engine search. (D.I. 12 at 7-9) (citing '840 patent at col. 11 :17-39, 14:31-48)
Claim 1 recites that the "graphical summary" "allow[s] said viewer to more easily
determine content presented at said URL." ('840 patent, col. 11 :35-40) Claim 13 similarly
states that the "graphical and visual summary of said data" "allow[ s] rapid and preliminary
review of said data by a viewer." (Id. at col. 14:45-48) Therefore, claims 1 and 13 of the '840
patent are directed to the abstract idea of retrieving data, manipulating data, and displaying data.
Collecting information and presenting it in a format that allows a "viewer to more easily
determine content" is something humans did before the invention of the Internet. (Id. at col.

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11 :35-40) See also Content Extraction, 776 F.3d at 1347 ("The concept of data collection,
recognition, and storage is undisputedly well-known. Indeed, humans have always performed
these functions."). This collection and presentation of data also differs from the more technical
method described by the purported invention in McRO, which utilized specific rules and
algorithms. McRO, 837 F.3d at 1314-16. In Capital One, the Federal Circuit held that claims
directed to "a system and method for editing XML documents" were invalid because they
claimed the abstract idea of "collecting, displaying, and manipulating data." Capital One, 850
F.3d at 1339-40. In Elec. Power Grp., the Federal Circuit held that claims related to the
"collection, analysis, and display of available information" are patent-ineligible abstract ideas.

Elec. Power Grp., 830 F.3d at 1351.
Hyper Search asserts that the '840 patent describes the alleged improvement of"making
and presenting 'Thumbnails'" on a computer. (D.I. 12 at 7) However, the word "thumbnail"
does not appear anywhere in the claims of the '840 patent, and the patent recognizes that prior art
software already existed to create them. ('840 patent at col. 5:61-6:24) Hyper Search also
argues that the '840 improves computer technology because it can "instantaneously transport the
viewer to a different location in cyber space" and is directed to a "system that improved browser
technology by creating thumbnail and other summary graphic information to accompany
hyperlinks that result at the end of a search engine search." (D.I. 12 at 8, 16) However, no such
language or features are established in the claim language. And although the independent claims
state that they "allow[] the viewer to more easily determine content ... without having [the] data
occupy an entire computer screen," presenting information in less space is a type of human
activity of collecting, analyzing and displaying information that courts have found patent-

15

ineligible. (D.I. 12 at 16) (internal quotations omitted) (citing '840 patent at col. 11:16-39) See
also Elec. Power Grp., 830 F.3d at 1351.

The asserted claims also recite conventional and generic computer-related limitations that
were well known in the prior art, such as receiving data, transmitting data, and embedding
hyperlinks - unlike the innovative technology used in Finjan. See Finjan, 879 F.3d at 1305
("[T]he method of claim 1 employs a new kind of file that enables a computer security system to
do things it could not do before."). This process could be performed by a human, albeit at a
slower rate, but expediting a process by using computer functionality does not render an abstract
concept patent eligible. Capital One, 792 F.3d at 1370 (noting that "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"). Even if the court were to conclude that
there was an improvement to computer functionality, such improvements would be "benefits that
flow from performing an abstract idea in conjunction with ... well-known [computer
functionalities]." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018). 5
Therefore, the '840 patent is directed towards an abstract idea and the court must tum to
step two of the Alice analysis.
3. The '412 patent

Facebook argues that claim 1 of the '412 patent is directed to the abstract idea of
providing information based on feedback from recipients. (D.I. 10 at 14) Hyper Search argues
that the system of claim 1 is an improvement in computer capability because the system controls
information output based on user feedback about the information itself. (D.I. 12 at 15) Then the
system selects one or more objects from which to receive information based upon certain

5

Facebook has provided the court with this subsequent authority. (D.I. 18)
16

weights, and a server provides one or more objects to a recipient. (Id.) The system then
generates rating values for some of the objects at the end of a predetermined period and
redetermines the weight values using the rating values. (Id.) (citing '412 patent at col. 19:48-67)
Hyper Search contends that this is a specific process that is new, performed by a computer,
iterative, and adaptive. (Id.) (citing '412 patent at col. 19:49-67) Additionally, Hyper Search
describes how the claim language is "closely tethered to the technology that created the
problem." (Id.)
Hyper Search filed a notice of supplemental authority on August 22, 2018 to draw our
attention to Hypermedia Navigation LLC v. Facebook, Inc., 2018 WL 3932434 (N.D. Cal. Aug.
16, 2018), a recently decided case from the Northern District of California. (D.I. 19) The court
in Hypermedia determined that the claims at issue, though organizing information on the Internet
and assisting in selecting video media elements based on search criteria, were non-abstract and
patent eligible under§ 101. Hypermedia, 2018 WL 3932434, at *3-4. The court so concluded
because the plaintiff "adequately allege[ d] that the present invention improves a specific online
search mechanism ... in a new way: through 'linearly lined websites."' Id. at *4. Hyper
Search, on the other hand, has not provided this court with sufficient allegations that its
inventions solve problems in the prior art "in a new way." Hyper Search's claim relies on
technology that was well-known at the time and fails to explain how its claimed idea recites an
improvement in computer technology. ('412 patent, col. 7:45-8:5, 19:23-27)
Claims directed to providing information based on feedback have previously been held
patent-ineligible by this court. See Sound View Innovations, LLC v. Facebook, Inc., 204 F. Supp.
3d 655 (D. Del. 2016). In Sound View, the court held that claims "directed to the concept of
offering more meaningful information to an individual based on his own preferences and the

17

preferences of a group of people with whom he is in pre-defined relationships" were abstract. Id.
at 662. The patent specification itself states that it is a system of delivering information that
"selects information for delivery based on indications of what subject matter a recipient is likely
to find useful." ('412 patent at col. 2:10-14) Courts routinely find such concepts abstract,
because "the concept of gathering information about one's intended market and attempting to
customize the information then provided is as old as the saying, 'know your audience."'
OpenTV, Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014).

The asserted claims of the '412 patent implement a generic computer system to obtain
functional results of providing information based on feedback from recipients. Hyper Search
does not show how the system of claim 1 is an improvement in computer capability. (See D.I. 12
at 5-6) Hyper Search cites to "electronic mail filtering systems" and improving prior art "search
engines" described in the '412 patent's description of the prior art, but does not attempt to
correlate these alleged improvements to the claims. (D.I. 12 at 5-6) This lack of specificity sets
the asserted claims apart from the claim language deemed sufficient to establish patent eligibility
in the Federal Circuit's recent decisions, such as En.fish. The claims in En.fish reciting a selfreferential table for a computer database were deemed non-abstract and patent-eligible under§
101 because the focus of the claims was on an improvement to computer functionality itself.

En.fish, 822 F.3d at 1336-37 (observing that "the self-referential table functions differently than
conventional database structures" because it "does not require a programmer to preconfigure a
structure to which a user must adapt data entry," and offers "increased flexibility, faster search
times, and smaller memory requirements.").
Accordingly, because the asserted claims are directed to an abstract idea at step one, the
court must tum to step two of the Alice/Mayo analysis.

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B. Alice Step Two

Facebook argues that the asserted claims of the patents-in-suit add nothing of patentable
significance. (D.I. 10 at 17-20) Hyper Search counters that when considered as an ordered
combination, the asserted claims pass the second step of Alice. (D.I. 12 at 18-20) Applying the
second step of the Alice framework to the asserted claims, the court recommends that the
asserted claims lack an inventive concept.
The asserted claims of the '219 patent do not recite any inventive concept, but recite the
performance of the abstract idea on well-known computer components and processes, such as a
"server," "a plurality of clients," "a network," "template storage means," and "home page
creating means." ('219 patent, col. 13:4-19, 14:15-35) These are generic descriptions of
computer components and functions that do not rise to the level of inventive concept. Content

Extraction, 776 F.3d at 1347-48 (a computer in a computer implemented invention "must
involve more than performance of 'well-understood, routine, [and] conventional activities
previously known to the industry"' to be meaningful) (citing Alice, 134 S. Ct. at 2359).
Additionally, the means-plus-function limitations in the asserted claims do not render them
patent eligible because the specification describes generic, well-known computer hardware and
software components. ('219 patent, col. 3:65-5:46)
Similarly, the claims of the '840 patent describe providing a summary of information in a
graphical format without adding any inventive concept related to the system used to carry that
idea out. The claims recite conventional software components, such as a "browser interface,"
"URL," "web crawler," and "web page renderer," but do not provide any inventive step that

makes those components more useful to a user. ('840 patent, col. 11 :17-39) Moreover, the
specification states that the recited components have been known, and include browsers such as

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MOSAIC, search engines such as ALTAVISTA or YAHOO!, and the "web document rendering
engine[s]" licensed from Netscape Communications Corp. or Spyglass Corp. that save virtual
images ofwebpages with embedded hyperlinks intact. (Id. at col. 1:49-52, 4:25-31, 4:62-65,
5:61-6:20)
Claim 1 of the '412 patent recites generic computer functionality such as a "neural
network module" and a "server." ('412 patent, col. 19:49-67) Limiting the use of an abstract
idea "to a particular technological environment" does not transform an abstract idea into a
patent-eligible invention. Alice, 134 S. Ct. at 2358 (internal citations omitted). The specification
states that neural networks were well-known in the art, and the inventors stated that the alleged
invention is not limited to neural networks but rather to "any artificial intelligence agent." ('412
patent, col. 7:45-8:5, 19:23-27) Courts have previously found that claims reciting neural
networks to be unpatentable for failing to recite more than an abstract idea. See Neochloris, Inc.

v. Emerson Process Mgmt LLLP, 140 F. Supp. 3d 763, 773 (N.D. Ill. 2015) (finding patent
claims including "an artificial neural network module" invalid under § 101 because neural
network modules were described as no more than "a central processing unit - a basic computer's
brain").
Hyper Search relies on Bascom for the notion that so long as the patent specification
"describes how its particular arrangement of elements is a technical improvement over prior art,"
a known concept may still be patent eligible. (D.I. 12 at 18-19) (quoting Bascom, 827 F.3d at
1350) Here, Hyper Search does not identify any such example in the specifications in the
patents-in-suit, and does not show how any of the prior elements are particularly arranged in the
claimed inventions such that they improve the performance of the computer itself. (See D.I. 12
at 18-19) Hyper Search's reliance on Zak v. Facebook, Inc., 206 F. Supp. 3d 1262 (E.D. Mich.

20

2016) andART+COM Innovationpool GmbHv. Google Inc., 183 F. Supp. 3d 552 (D. Del. 2016)
is also inapposite. (DJ. 12 at 19-20) In Zak, the court found the claims to be patent eligible
because they offered a solution to a business challenge by allowing ordinary users to maintain
dynamic websites by managing the content of websites and controlling users' interactions with a
web page, as explained by the specification. Zak, 206 F. Supp. 3d at 1273. InART+COM, the
court held that an 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," and was therefore patent eligible
under the second step of Alice. ART+COM, 183 F. Supp. 3d at 555-56, 559-60 (D. Del. 2016).
However, Hyper Search does not identify any concrete improvements to specific computer
functionality or solutions rooted in problems that only existed on computers, but instead
generally asserts that "each of the asserted claims is directed to solving a computer-related
problem." (DJ. 12 at 20)
"Nothing in the claims, understood in light of the specification, requires anything other
than off-the-shelf, conventional computer, network, and display technology for gathering,
sending, and presenting the desired information." Elec. Power Grp., 830 F.3d at 1355 (internal
citations omitted). Therefore, I recommend finding that the patents-in-suit fail Alice step two
and consequently recommend granting Facebook's motion to dismiss.
V.

CONCLUSSION
For the foregoing reasons, I recommend that the court grant Facebook's motion to

dismiss the complaint pursuant to Rule 12(b)(6). (D.I. 9)
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

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within fourteen (14) days after being served with a copy of this Report and Recommendation.
Fed. R. Civ. P. 72(b)(2). The objections and responses to the objections are limited to ten (10)
pages each. 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 Sincavage v. Barnhart, 171 F. App'x 924, 925 n.1
(3d Cir. 2006); Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987).
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 court's website,
http://www.ded.uscourts.gov.

Dated: December _!1__, 2018

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