Facebook, Inc. v. Phoenix Media/Communications Group, Inc. et al

Filing 79

SUR-REPLY to Motion re 58 MOTION for Summary Judgment filed by Facebook, Inc.. (Chen, Reuben)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
FACEBOOK, INC,
Plaintiff,

C.A. No. 1:10-cv-11917-DPW

v.
PHOENIX MEDIA/COMMUNICATIONS
GROUP, INC., PEOPLE2PEOPLE GROUP,
INC., TELE-PUBLISHING, INC., AND FNX
BROADCASTING LLC,
Defendants.

FACEBOOK, INC.’S SUR-REPLY IN RESPONSE TO PHOENIX
MEDIA/COMMUNICATIONS GROUP, INC.’S AND PEOPLE2PEOPLE GROUP,
INC.’S “REPLY” IN SUPPORT OF THEIR
MOTION FOR PARTIAL SUMMARY JUDGMENT

I.

INTRODUCTION
Having failed to demonstrate that any prior art reference discloses each element of any

claim of the ’157 patent, PMC has now filed a “reply” that walks away from its original motion
and alleges invalidity based on an entirely different statute, 35 U.S.C. § 101. Moreover, PMC’s
arguments in its “reply” brief, even if considered on their merits, should be rejected.
II.

ARGUMENT
A.

PMC’s “Reply” Confirms The Lack of Merit in PMC’s Original Motion

As explained in more detail in Facebook’s motion to strike (D.I. 77), PMC’s “reply” brief
should be stricken because it is not a reply brief at all, but rather, an entirely new motion for
summary judgment on grounds that were not addressed, raised or even suggested in PMC’s
opening brief. The sole question addressed by PMC’s opening brief was whether the ’157 patent
was anticipated by prior art under 35 U.S.C. § 102. Facebook opposed the motion by pointing
out that PMC failed to show that any prior art reference anticipated any claim of the ’157 patent.
PMC’s “reply” brief responded by walking away from its original motion and raising the entirely
separate question of patent eligibility under § 101. See Diamond v. Diehr, 450 U.S. 175, 190
(1981) (“The question [] of whether a particular invention is novel [under § 102] is wholly apart
from whether the invention falls into a category of statutory subject matter [under § 101].”).
PMC’s decision to radically change its position and walk away from the theory on which its
opening brief was based is not only improper, but confirms the lack of merit of its original
motion. Because PMC has apparently abandoned its original motion for summary judgment, and
for the reasons stated in Facebook’s opposition to that motion, it should be denied.
B.

The ’157 Patent Is Patent Eligible Under § 101.

In Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011), the Federal Circuit
held that “[i]n line with the broadly permissive nature of § 101’s subject matter eligibility

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principles, judicial case law has created only three categories of subject matter outside the
eligibility bounds of § 101—laws of nature, physical phenomena, and abstract ideas.” Id. at
1326.

PMC has not suggested that the ’157 patent claims a law of nature or a physical

phenomenon, making two of those three categories entirely inapplicable. Nor has PMC shown
that the ’157 patent encompasses an abstract idea, as explained below.
PMC relies on the Federal Circuit’s decision in CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366 (Fed. Cir. 2011), which invalidated claims directed at a method of verifying
the validity of a credit card transaction. The court found the claims invalid under § 101 because
they covered a mental process that included claim steps that “can be performed in the human
mind, or by a human using a pen and paper.” Id. at 1372.
The Federal Circuit subsequently underscored the narrowness of CyberSource by noting
that “[t]he eligibility exclusion for purely mental steps is particularly narrow.” Ultramercial,
657 F.3d at 1329-30 (emphasis in original). “Although abstract principles are not eligible for
patent protection, an application of an abstract idea may well be deserving of patent protection.”
Id. at 1327. The court in Ultramercial upheld claims covering a method for distribution of
products over the Internet because “the claimed invention purports to improve existing
technology in the marketplace. By its terms, the claimed invention invokes computers and
applications of computer technology.” Id. at 1328. The court noted that many of the claim steps
“are likely to require intricate and complex computer programming,” and that certain steps
“clearly require specific application to the Internet and a cyber-market environment.” Id.
The claims of the ’157 patent are not directed at “purely mental steps” or “abstract ideas,”
and are much closer to the claims in Ultramercial than the ones in CyberSource. PMC tellingly
fails to analyze a single claim of the ’157 patent, or even recite the claim language, resorting

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instead to cherry-picking single words and phrases from one of the patent’s 26 claims in an effort
to misrepresent its scope and obscure its particular limitations. (Reply at 4-5.) The plain
language of claim 1 makes clear that its process could not be performed entirely within the
human mind, but rather, cover a specific application of computer technology:
A computer-implemented method for configuring an item, wherein said item
comprises two or more optional components, comprising the steps of:
(1) creating two or more options, wherein said two or more options correspond to
said two or more optional components;
(2) associating attributes with each of said two or more options, wherein said
attributes relate to characteristics of said two or more components;
(3) creating, from said two or more options, a hierarchical option tree;
(4) selecting one or more options from said option tree;
(5) implementing, responsive to said step (4), at least one attribute corresponding
to said one or more selected options, and placing said at least one attribute into
an instance creation file; and
(6) accessing and utilizing said instance creation file during the operation of said
item.
Claim 1 recites a “computer-implemented” method that includes, among other things, the step of
implementing at least one attribute and placing it “into an instance creation file” and “accessing
and utilizing said instance creation file during the operation of said item.” (See, e.g., ’157 patent,
claims 1-11 (emphasis added).) The specification makes clear that the “instance creation file” is
a computer-readable collection of stored information representing one or more selected options.
(See id., col. 6:48-7:12; 8:25-34; Fig 4 (showing example instance creation file).)
Claim 1 further requires that the instance creation file be accessed and utilized during
operation of the item. (See id., claims 1-11.) The specification explains that the instance
creation file “is accessed so that the attributes stored therein can be accessed and executed during
operation of the configured machine. The attributes of the ICF [instance creation file] would

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themselves be used as inputs for this software.” (Id., col. 7:7-12.) There is no indication in the
specification or the language of the claim that the instance creation file, or its access and use,
could be performed in the human mind.

Claim 1 of the ’157 patent, like the claims in

Ultramercial, plainly involve “computers and applications of computer technology” that “are
likely to require intricate and complex computer programming.” 657 F.3d at 1328. Further
confirmation claim 1 is not directed to purely mental steps is found in other elements that recite
the creation of “options,” the association of options with “attributes,” and the creation of a
“hierarchical option tree” from which one or more options are selected. These steps facilitate a
specific computer-to-human interaction that inherently requires a computer to accomplish. (See
’157 patent, claim 1, steps (1)-(4).) See, e.g., VS Techs. v. Twitter, Inc., 2011 WL 4744911, at *5
(E.D. Va. Oct. 5, 2011) (upholding claims covering creation of virtual communities; claim steps
were “far removed from purely mental steps” because they were “combined with an interactive
element” that “cannot be accomplished without a computer.”).
PMC’s argument that the embodiment in the ’157 specification regarding customization
of an instruction manual could be performed “with scissors and tape” (Reply at 5) is irrelevant
and misleading.

The claims of the ’157 patent cover computer-implemented methods and

systems for configuring items, not the items themselves. The instruction manual example in the
specification merely illustrates that an “item” as recited in the claims is not necessarily limited to
a machine. (’157 patent, col. 5:40-59.) The actual steps of claim 1 require the application of
computer technology to configure an “item,” even if the underlying item does not.
PMC does not attempt to address any of the other claims of the ’157 patent
notwithstanding that the patent contains five independent claims (i.e., claims 1, 6, 12, 18, and
22), which must each, along with all their dependent claims, be considered for eligibility under §

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101. (D.I. 74-1 at 4-5.) Ten of those claims cover a “system” and not a “process” at all (claims
12-21), let alone a purely mental process.

Four of those claims are further directed at

configuring a “machine” (claims 18-21) and five other claims cover a method for “configuring
an item, wherein said item comprises two or more optional machine components” (claims 6-11).
Nor does PMC address any of the dependent claims, which include additional steps such as
“associating a designated option of said two or more options with an option class, wherein said
option class contains inheritable attributes, and wherein at least some attributes of said
designated option are thereby inherited from said option class” (claim 2), and “associating an
option constraint with a first option of said two or more options, wherein said option constraint
implements a relation between said first option and a second option” (claim 3). These additional
steps are likewise performed by computer hardware and software. (’157 patent, col. 2:36-46;
2:56-61, 5:16-6:17; 7:17-64; 8:40-9:7; 10:9-45.) These claims, like claim 1, require computer
technology and complex programming and cannot be performed in the human mind.
PMC cites certain non-controlling Board of Patent Appeals decisions that are
unpersuasive and distinguishable. PMC relies most heavily on Ex Parte Vilalta, 2011 WL
6012377, (B.P.A.I. Nov. 29, 2011), which invalidated claims directed at a method of partitioning
a set of data. Id. at *1. The court reasoned that because the specific steps of the data partitioning
method could be performed entirely in the human mind, the claim was ineligible for patent
protection under § 101. Id. at *2-3. The claims of the ’157 patent, on the other hand, include
specific steps, including the creation of a hierarchical option tree and the use of an instance
creation file, that tie the claimed invention to a specific application of computer technology.1

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The decision in Vilalta contains little analysis and relies almost entirely on CyberSource, but
does not cite, let alone attempt to apply, the Federal Circuit’s decision in Ultramercial.

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C.

The Claims of the ’157 Patent Meet the Machine-or-Transformation Test.

“Under the machine-or-transformation test, a claimed process is patent eligible if it (1) is
tied to a particular machine or apparatus, or (2) transforms a particular article into a different
state or thing.” Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347,
1352 (Fed. Cir. 2010). The Supreme Court has held that the machine-or-transformation test is a
“useful and important clue, an investigative tool, for determining whether some claimed
inventions are processes under § 101,” but not the exclusive test for deciding whether an
invention is patent-eligible. Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). The Federal Circuit
has held, however, that “[w]hile machine-or-transformation logic served well as a tool to
evaluate the subject matter of Industrial Age processes, that test has far less application to the
inventions of the Information Age.” Ultramercial, 657 F.3d at 1327. The claims of the ’157
patent nonetheless qualify under both prongs of the alternative machine-or-transformation test.
With respect to the machine portion of the machine-or-transformation test, as explained
above, the claims of the ’157 patent includes limitations that require “intricate and complex
computer programming.”

Id. at 1328.

These limitations, among various claims, include:

“creating, from said two or more options, a hierarchical option tree”; “placing said at least one
attribute into an instance creation file”; “accessing and utilizing said instance creation file during
the operation of said item”; “associating a designated option of said two or more options with an
option class, wherein said option class contains inheritable attributes, and wherein at least some
attributes of said designated option are thereby inherited from said option class” and “associating
an option constraint with a first option of said two or more options, wherein said option
constraint implements a relation between said first option and a second option.” (See, e.g., ’157
patent claims 1-3.) The claims therefore embody a “particular machine” as “programming
creates a new machine, because a general purpose computer in effect becomes a special purpose

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computer once it is programmed to perform particular functions pursuant to instructions from
program software.” Ultramercial, 657 F.3d at 1329 (internal quotation and citation omitted).
The ’157 claims also satisfy the alternative transformation prong of the machine-ortransformation test because the they are directed at a way to transform a particular article, i.e., an
item, into a different state or thing – a “configured” item.
III.

CONCLUSION
For the foregoing reasons and the reasons set forth in its original opposition brief,

Facebook respectfully requests that the Court deny PMC’s motion for partial summary judgment.
Dated: December 13, 2011

By:

/s/ Reuben H. Chen
Reuben H. Chen

Heidi L. Keefe (pro hac vice)
[e-mail]
Mark R. Weinstein (pro hac vice)
[e-mail]
Reuben H. Chen (pro hac vice)
[e-mail]
Daniel J. Knauss (pro hac vice)
[e-mail]
COOLEY LLP
3175 Hanover Street
Palo Alto, CA 94304-1130
Telephone: [phone]; Facsimile: [phone]
OF COUNSEL:
Donald K. Stern (BBO No. 479420)
[e-mail]
COOLEY LLP
500 Boylston Street
Boston, MA 02116
Telephone: [phone]; Facsimile: [phone]

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CERTIFICATE OF SERVICE
I, Reuben H. Chen, hereby certify that pursuant to Local Rule 5.4(C), this document has
been filed through the ECF system and will be sent electronically to the registered participants as
identified on the Notice of Electronic Filing (NEF). For those parties indicated as non-registered
participants, if any, a paper copy will be sent by facsimile and/or U.S. First Class Mail on
December 13, 2011.
/s/ Reuben H. Chen
Reuben H. Chen

992930 v6/HN

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