Certusview Technologies, LLC v. S & N Locating Services, LLC et al

Filing 545

OPINION AND ORDER Denying 533 Motion for Reconsideration. Plaintiff's Motion for Partial Reconsideration of the Court's Judgment of Patent Ineligibility under 35 U.S.C. § 101, ECF No. 533, is DENIED. As no pertinent issues remain f or resolution on Plaintiff's First Amended Complaint, ECF No. 55, and as the Court has previously entered judgment on Defendants' declaratory judgment counterclaim for inequitable conduct, see ECF No. 542, the Clerk is REQUESTED to enter final judgment in Defendants' favor on Plaintiff's First Amended Complaint pursuant to Rule 58 of the Federal Rules of Civil Procedure. IT IS SO ORDERED. Signed by District Judge Mark S. Davis and filed on 8/10/16. Copies distributed to all parties 8/10/16. (ldab, )

UNITED

STATES DISTRICT COURT

EASTERN DISTRICT OF VIRGINIA
Norfolk Division

CERTUSVIEW TECHNOLOGIES,

LLC,

Plaintiff,
Civil No.

v.

2:13cv346

S&N LOCATING SERVICES, LLC, and
S&N COMMUNICATIONS,

INC.,

Defendants.

OPINION AND ORDER

On January 21,
ECF

No.

250,

Defendants
Inc.'s

197,

S&N

{"S&N")

and

2015, the Court issued an Opinion and Order,

in

this

Locating
Motion

finding

subject

("Section 101
Technologies,

for

LLC

and

on

the

Judgment

each

of

the

case

S&N

matter

Pleadings,

asserted

pursuant

and

to

Order").

("CertusView")

now

1

of

United

States

Patent

was patent ineligible.

Mot.

Ineligibility

under

U.S.C.

asserts

reconsideration

that

appropriate
Circuit's

because:
recent

35

(1)

the

decision

and
Court
of

reversal
of

No.

finding

533.

of

LLC

such
for
v.

and

that

Patent")

of J. of

Appeals

Enfish,

§ 101

CertusView

(w,359

for Partial Recons.

ECF

the

reconsideration

8,340,359

§ 101,

of

U.S.C.

Plaintiff

No.

No.

claim patent-

reversal of the portion of such Opinion and Order
Claim

ECF

claims

35

seeks

granting

Communications,

invalid because they did not

Opinion
LLC

infringement

Services,

that

Patents-in-Suit were
eligible

patent

Patent

CertusView

finding
the

is

Federal

Microsoft

Corporation,

822

controlling
produced

F.3d

test

during

for
the

addressing

S&N's

inequitable

available

oral

is

at

argument

is

bench

time

judgment

the

Hearing,

record,

unnecessary

the

evidence

this

matter,

counterclaim

decided

Motion,

Mot.

(2)

in

CertusView has

for

alters

different

Court

this

the

and

trial

on

Request

2016),

substantially

the

examining the briefs and
oral

Cir.

eligibility;

Pleadings.

argument

CertusView's

patent

declaratory

for Judgment on the
for

(Fed.

subsequent

conduct,

evidence

1327

from

S&N's

the

Motion

filed

a request

S&N

opposes.

which
ECF

for

No.

228.

After

the Court determines

because

the

facts

and

that
legal

contentions are adequately presented and oral argument would not
aid in the decisional process.
Loc.

Civ.

R.

7 (J).

Fed. R.

For the reasons

Civ.

set

P.

78(b);

forth below,

E.D. Va.
the Court

DENIES CertusView's Motion.

I. FACTUAL AND PROCEDURAL BACKGROUND1
CertusView
technology

holds

for

the

five

prevention

related

of

damage

infrastructure,

at issue in this matter:

States

No.

Patent

Patent
No.

8,290,204

8,265,344
("x204

("'344

Patent"),

patents,

the

to

underground

'359 Patent,

Patent"),
United

involving

United

States

United
States

Patent

No.

1 The Court recites here only those facts which are pertinent to the
pending Motion.
For a more detailed factual and procedural history,
see the Court's August 2, 2016 Opinion and Order, ECF No. 542, May 22,
2015 Opinion and Order, ECF No. 325, and Section 101 Opinion and
Order,

ECF No.

250.

8,532,341

("'341

8,407,001

Patent"),

{W1001 Patent")

and

United

(collectively,

Court's

seminal

2014

2437

No.

542.

The Patents-in-

prior to the United States Supreme

patent-ineligibility

Corporation Priority Limited v.
Ct.

Patent

the "Patents-in-Suit").

August 2, 2016 Op. & Order, 17-18, ECF No.
Suit issued in 2012 and 2013,

States

CLS

Bank

decision

in

International,

Alice
134 S.

(2014).

CertusView's products were developed as a means to improve

record-keeping and documentation of "locate operations," id.
23,

that

marking

is,

object

underground
No.

"the

application

or

material

facility,"

101-2.

to

Joint

Specifically,

of

paint,
indicate

Claim

the

flags,
the

24.

Patents-in-Suit

Stated broadly,

locators to document
create

a

the

an

2,

ECF

claim inventions

technology allows

electronic

record

that

includes

to

such

regarding the locate

Id.

'359

Underground
Patent,

Chart,

of

August 2, 2016 Op.

e-Sketch

documentation and additional specific data

The

other

a locate operation more accurately and

searchable

operation.

some

presence

Construction

related to CertusView's e-Sketch technology.
& Order at

or

at

ECF

patent

Facility
No.

55-2

is

Locate

entitled

Marks."

[hereinafter

"Electronic

Am.
M,359

Manifest

Compl.

Ex.

Patent"].

of

C,

'359

The

'359

Patent claims methods and apparatus for generating a searchable

electronic

record

of

a

locate

operation.

The

only

asserted

claim from the
method claim,

'359 Patent is Claim 1.

Claim 1,

an

independent

recites:

A method for generating a searchable electronic record
of
a
locate
operation
performed
by
a
locate
technician,
the
locate
operation
comprising
identifying, using at least one physical locate mark,
a presence or an absence of at least one underground
facility within a dig area, wherein at least a portion
of the dig area may be excavated or disturbed during
excavation activities, the method comprising:
A) electronically receiving an aerial image of a
geographic area comprising the dig area, at least
a portion of the received aerial
image being
displayed on a display device;
B) adding to the displayed aerial image at least
one digital representation of the at least one
physical locate mark, applied to ground, pavement
or other surface by the locate technician during
the locate operation, so as to generate a markedup digital
image including the at
least one
digital
representation
of
the
at
least
one
physical locate mark; and
C)
electronically
transmitting
and/or
electronically storing the searchable electronic
record of
the
locate
operation,
wherein
the
searchable
electronic
record
comprises
the
marked-up digital
image and a
data
set,
and
wherein the data set comprises:
a set of geographic points along a marking
path
of
the
at
least
one
underground

facility,
the
set
of
geographic
points
including
geographical
coordinates
corresponding to the at least one physical
locate mark;

a

property

address

associated

with

least one physical locate mark;
a timestamp indicative of when
operation occurred;

the

the

at

locate

a name of the locate technician;
a
name
of
a
company
responsible

for

performing the locate operation; and
a

ticket

number

operation.
'359 Patent,

Col.

17:53-18:21.

associated

with

the

locate

On

May

29,

action against

2013,

S&N.

Compl.

CertusView filed an
the

five

23,

CertusView,

filed

infringement

seeking

invalidity

Answer,

S&N

See

and

Am.
an

Affirmative

On

infringement

December

6,

2013,

alleging infringement of
Compl.,

Answer

judgments

all

Defenses,

patent

ECF

No.

denying

55.

On

CertusView's

asserting counterclaims against

declaratory

regarding

a

1.

amended complaint,

2013,

allegations of

filed

ECF No.

Patents-in-Suit.

December

and

CertusView

five

of

non-infringement

Patents-in-Suit.

and Countercls.,

S&N's

ECF

No.

61.2

After the Supreme Court issued its June 2014 Alice decision,
October
claim

28,

2014,

following

construction

asserted patent

Pleadings,

order,

claims,

pursuant

to

S&N

a

and

Markman
a

hearing,

limitation

filed a Motion

Federal

Rule

of

on

issuance
the

Civil

of

number

for Judgment

on

Procedure

on
a
of

the

12(c),

contending that the Patents-in-Suit were invalid as they did not
claim patentable subject matter under 35 U.S.C.

197.

On January 21,

Judgment
claims

of

on

the

the

2015,

Pleadings

the Court
and

found

Patents-in-Suit were

§ 101.

ECF No.

granted S&N's Motion
that

all

of

for

the

asserted

invalid for failure

to claim

patentable subject matter under 35 U.S.C. § 101, including Claim
1 of the '359 Patent.

Sect. 101 Op. & Order, ECF No. 250.

" S&N's Answer was amended two additional times after the Court issued

its

Section

101 Opinion

and

Order.

See

S&N's

First Am.

Affirmative Defenses, and Countercls., ECF No. 253; S&N's
Answer, Affirmative Defenses, and Countercls., ECF No. 336.

Answer,

Second Am.

On March 8,
trial

on

2016,

S&N's

the matter proceeded to a five-day bench

declaratory

judgment

CertusView for inequitable conduct.
conclusion

Partial

of

35

filed

its

Partial

U.S.C.

trial,

of

§ 101.

Response

in

for

CertusView's

CertusView

No.

ECF
its

Reconsideration.

Motion

for

Partial

30,

Finally,

ECF

in

No.

after the
for

Ineligibility

June

Brief

against

Motion

2016,

S&N

Motion

CertusView's

536.

Rebuttal

its

Patent
On

to

No.

filed

of

533.

Opposition

filed

Partial

On June 15, 2016,

Judgment

ECF

Reconsideration.

CertusView

Motion

bench

Reconsideration

under

2016,

the

counterclaim

for

on

July

15,

of

its

Support
540.

Therefore,

Reconsideration

is

ripe

for

review.

II.

A.

Federal Rule of Civil Procedure 54(b)

CertusView

Civil

STANDARD OF REVIEW

moves

Procedure

for

54(b),

reconsideration

which

governs

interlocutory orders or decisions.3
court

"'retains

interlocutory
judgment.'"

3 The

the

power

to

orders ... at
TomTom,

Court's

under

101

reconsideration

reconsider

any

Opinion

Rule

of

of

Under Rule 54(b), a district

time

Inc. v. APT Sys. GmbH,

Section

Federal

and

and

modify

prior
17 F.

Order

is

to

its

final

Supp. 3d 54 5,

considered

an

interlocutory order in this matter because it did not address S&N's
declaratory judgment counterclaim for inequitable conduct and was not

a "final decision."
See CertusView Techs., LLC v. S&N Locating
Servs., LLC, Order, No. 15-1404, Doc. No. 15 (Fed. Cir. July 9, 2015)
(citing
2003)) .

Nystrom

v.

TREX

Co.,

Inc.,

339*

F.3d

1347,

1350

(Fed.

Cir.

546

(E.D. Va.

2014)

(quoting Am.

Canoe Ass'n

Inc., 326 F.3d 505, 514-15 (4th Cir. 2003) ).'1
relief

under Rule

district court."

H.

Cone

Mem.

(1983)).

54(b)

"is

committed

Am. Canoe Ass'n,

Hosp.

However

v.

Mercury

the

law of

to

Murphy

the

discretion

326 F.3d at 515

Const.

Corp.,

the case

Court

of Appeals

applying the law of the case doctrine,

has

substantially

authority has
the

different

460

U.S.

among

or

(3)

the

and would work manifest

Co.,

845

F.2d

Longshoremen's

Am.

Canoe

69);
(E.D.

66,

Va.

326

623

F.3d

F.2d

at

Trinity Indus.,

2015)

decision

(4th Cir.

(listing

1054

was

found that,

when

(2)

(5th

cases

v.

Cir.

in

law applicable
erroneous

Warner-Lambert

EEOC

v.

1980));

Sejman,

148 F.

controlling

clearly

(quoting

(citing

Inc.,

others,

a subsequent trial

Sejman

1988)

515

12

The

evidence,

injustice.'"

Assoc.,

Ass'n,

Evans v.

69

prior

1,

Id.

since made a contrary decision of

issue,

the

a court generally may not

depart from its previous ruling unless "'(1)
produces

of

(citing Moses

doctrine,

for the Fourth Circuit

Farms,

The power to grant

"evolved as a means of guiding that discretion."

has

to

v.

Supp.

845

Int'1
accord

F.3d

3d 542,

support).

at

544

"Absent

a

A On procedural issues not unique to the Federal Circuit's exclusive
jurisdiction,

the Federal

regional circuit,

which in

Valley Floral Grp.,
(Fed.

Cir.

2010)

Inc.

("We

Circuit will
this case is

apply the precedent of
the

v. Shaw Rose Nets,

review

a

district

Fourth Circuit.

LLC,

court's

597

the

See

Del.

F.3d 1374,

1379

decision

to

exclude

evidence and to deny a motion for reconsideration under the law of the
pertinent regional circuit."
(citing Minton v.
Nat'l Ass'n Sec.
Dealers, Inc., 336 F.3d 1373, 1378 (Fed. Cir. 2003); Micro Chem., Inc.
v. Lextron, Inc., 317 F.3d 1387, 1390-91 (Fed. Cir. 2003))).

significant

change

submission

in the

to the

court,

law or
granting

is only appropriate where,
misunderstood

a

the

party,

facts

a motion

for example,

or

has

since the
for

reconsideration

the court

made

a

original

'has patently

decision

outside

the

adversarial issues presented to the Court by the parties,

or has

made

Evans,

148

an

'rarely
rare.'"

not

Supp.

F.

error

3d

arise

and

TomTom,

Belt,

Inc.

(E.D.

v.

Va.

wrongly'

Belt,

544

the

Inc.,

Mel

motion
17 F.

to

of

omitted).

Inc.,

had

not

granted."

99 F.R.D.

be

already

be

F.R.D.

asking

thought
Id.

problems

equally

(quoting Above the
99

reconsider

[c]ourt

"Such

should

3d at 546

Roofing,

to

apprehension.'"

reconsider

Supp.

Motions

the

but

(citation

Bohannan

should

Inc.,

reasoning

at

1983)).

"'rethink what
or

of

a

99,

101

court

to

through-rightly

(quoting

Above

the

at 101).

B. Patent Eligibility under 35 U.S.C. § 101

Congress has defined the subject matter eligible for patent

protection by providing that "[w]hoever 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

this title."
stated

in

Alice

International,
contains

35 U.S.C.

an

to the conditions

§ 101.

Corporation

"'[w]e
implicit

have

However,

and requirements

as the Supreme Court

Proprietary

Limited

long

held

that

this

(l]aws

of

nature,

exception:
8

of

v.

CLS

Bank

provision
natural

phenomena,
2347,

and abstract ideas are not patentable.'"

2354

(2014)

Myriad Genetics,

invention

(quoting

133 S. Ct.

claims

and does

2107,

for

2116

patent-eligible

directed to a "process,
matter"

Ass'n

not

machine,

constitute

Molecular

v.
an

matter

manufacture,
an

Pathology

Accordingly,

(2013)).

subject

134 S. Ct.

attempt

if

it

is

or composition of

to

patent

a

law of

nature, natural phenomenon, or abstract idea.
In
other

determining

asserted

that

claims

Claim

of

the

patent-eligible subject matter,

1

of

the

'359

Patents-in-Suit,

this Court

framework that the Supreme Court set

Patent,
did

and

not

applied the

forth in Alice.

claim

two-step
See Sect.

101 Op. & Order at 34-37.
First, the Court must "determine whether the claims at
issue are directed to one of [the] patent-ineligible
concepts," that is, laws of nature, natural phenomena,
and abstract ideas.
Alice, 134 S. Ct. at 2355 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132
S.
Ct.
1289,
1296-97
(2012)).
To determine

whether

a

claim

abstract idea,

is

directed

to

a

patent-ineligible

"a court must evaluate the claims

their face' to determine to which

'concept'

'[o]n

the claims

are
'drawn.'"
[Amdocs
(Israel)
Ltd.
V.
Openet
Telecom, Inc., 56 F. Supp. 3d 813, 817 (E.D. Va. 2014)
(quoting Alice, 134 S. Ct. at 2356) (citing Bilski v.
Kappos, 561 U.S. 593, 609 (2010))].
In other words, a
court "must identify the purpose of the claim . . .
what the claimed invention is trying to achieve . . .
and ask whether the purpose is abstract."
[Cal. Inst,

of Tech. v.

Hughes Commc'ns Inc.,

991 (CD. Cal. 2014)
2359; Mayo, 132 S. Ct.

59 F.

(citing Alice,
at 1296)].

Supp. 3d 974,
134

S.

all

Ct.

at

Importantly,
though
the
Supreme
Court
has
not
the precise contours of the
'abstract
"delimit[ed]
ideas' category" of patent ineligible subject matter,

Alice,

134

S.

Ct.

at

2357,

the

Court

has

indicated

that
such
category
is
not
limited
simply
to
"preexisting,
fundamental
truth[s]
that
exist
in
principle apart from any human action," id. at 2356
(alteration
in
original)
(citation
and
internal
quotation marks omitted).
Indeed, the Supreme Court
has suggested that a "method of organizing human
activity" or "fundamental economic practice" can fall
within
the
patent-ineligible
category
of
abstract
ideas. See id.
Furthermore, the Federal Circuit has
rejected the notion that "the addition of merely novel

or
non-routine
components
to
the
claimed
idea
necessarily
turns
an
abstraction
into
something
concrete."

709,

715

[Ultramercial,

(Fed.

Cir.

Inc.

2014)].

plays no role

in a court's

Enfish,

Microsoft

LLC v.

v.

At

Hulu,

LLC,

step one,

analysis.151

Corp.,

56

F.

772 F.3d

prior

[See,

Supp.

art

e.g.,

3d

1167,

1173-74 (CD. Cal. 2014), aff'd in part, vacated in
part, rev'd in part, 822 F.3d 1327 (Fed. Cir. 2016).
But see McRO, Inc. v. Valve Corp., No. 13-1874, 2014
WL
4772200,
at
*9
(CD.
Cal.
Sept.
22,
2014)
(unpublished)].

If an invention is directed toward a patent-ineligible
abstract

idea,

elements

of

ordered

second,

each

claim

combination'

additional

elements

the

both
to

Court

must

"consider

individually
determine

'transform

the

and

whether

nature

the

'as
of

an
the

the

claim' into a patent eligible application."
Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 129798).

Those

additional

'well-understood,

elements

routine,

"must

be

conventional

more

than

activity.'"

b The Enfish district court's statement that "[a]t step one, prior art
plays no role in the analysis," must be read in light of the following
sentences in the same paragraph of that opinion: "At step one, prior
art plays no role in the analysis. The court does not filter out claim

elements found in prior art and evaluate the remaining elements for
abstractness [(citations omitted)]. Using prior art to filter out
elements revives the point-of-novelty approach of Parker v. Flook, 437
U.S. 584 (1978), which was rejected by [Diamond v. Diehr, 450 U.S. 175
(1981)]."
Enfish, 56 F. Supp. 3d at 1173-74 (citing Diehr, 450 U.S.
at 189, for the proposition that "novelty 'is of no relevance' when
determining patentability").
Thus, the Court understands the Enfish

district court opinion to stand for the proposition that review of
prior art, and the distinctions between prior art and the claimed
inventions, is not necessary in determining whether a claim is
"directed to" patent-eligible subject matter.
10

Ultramercial, 772 F.3d at 715 (quoting Mayo, 132 S.
Ct. at 1298). This second step is "a search for an
'inventive concept'—i.e., an element or combination of
elements that is 'sufficient to ensure that the patent

in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.'"
Id.
(alteration and emphasis in original)
(quoting Mayo,
132

S.

Ct.

at

1294).

Yet,

"transformation

into

a

patent-eligible application requires 'more than simply
statfing] the [abstract idea] while adding the words
'apply it.'"
Alice, 134 S. Ct. at 2357 (alterations
in original)
(quoting Mayo, 132 S. Ct. at 1294).
Moreover, "the prohibition against patenting abstract
ideas 'cannot be circumvented by attempting to limit
the use of the formula to a particular technological
environment'
or
adding
'insignificant
postsolution
activity,"'
Bilski,
561 U.S. at 610-11
(quoting
Diamond
the

v.

Diehr,

narrowness

patentable

an

of

450

U.S.

an

175,

abstract

otherwise

191-92
idea

(1981)),

does

patent-ineligible

not

and

render

idea,

[see

buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350,
1353
(Fed. Cir. 2014) (citing Mayo, 132 S. Ct. at 1303)].
Nor does "the mere recitation of a generic computer
. . . transform a patent-ineligible abstract idea into

a patent-eligible invention."7 Alice,

134

S.

Ct.

at

2358.

Sect.

101 Op. & Order at 34-37 (internal footnotes omitted).
III.

CertusView

asserts

that

DISCUSSION

reconsideration

Court's patent ineligibility judgment,
Patent,

recently
step

of

is

issued
the

Corporation,

evidence

appropriate

new

test
822

because:

controlling

for

patent

F.3d 1327

produced

(1)

during

substantially different

the

eligibility,

the

Cir.

11

Federal

of

Circuit

regarding
Enfish

2016);

inequitable

than the

reversal

the

as to Claim 1 of the '359

authority

(Fed.

and

and

v.
(2)

conduct

the

has

first

Microsoft
subsequent

trial

was

evidence available at the time

the Court considered S&N's Motion for Judgment on the Pleadings.
CertusView's Br.

No.

534.

With

in Supp.

respect

of Mot.

to

the

for

Partial Recons.,

Enfish decision,

S&N

1-2,

ECF

argues

in

response that CertusView has not demonstrated that such decision
constitutes

a

"contrary

reconsideration

to

is

reconsider its

decision

warranted,

ruling

and

of

that,

law,"

even

if

regarding Claim 1 of

such

the

the

that

Court

'359

were

Patent,

Enfish does not compel the Court to reach a different resolution
of

S&N's

Motion

CertusView's

Further,
that

Mot.

with

such

for

Judgment

for

respect

evidence

Partial

to

is

on

the

the

Pleadings.

Recons.,

bench

irrelevant

8-12,

trial
to

See
ECF

evidence,

Resp.
No.

S&N

reconsideration

to
536.

argues

of

S&N's

prior Motion for Judgment on the Pleadings and that the evidence
presented
evidence

Id.

at

at

trial

available

20-22.

is
at

The

not

the

"substantially

time

Court

the

will

Court

different"

considered

consider

each

of

from

such

the

Motion.

CertusView's

arguments in favor of reconsideration in turn.
A. New Legal Authority

As

noted

above,

CertusView

argues

that

reconsideration

of

the Court's judgment of patent ineligibility for Claim 1 of the
'359

Patent

decision

that

in

is

warranted

Enfish.

reconsideration

authority has

[]

due

to

CertusView,

is

the

Federal

however,

warranted

has

because

Circuit's

recent

not

demonstrated

a

"controlling

made a contrary decision of law applicable
12

to

the issue."

Sejman,

845 F.2d at 69.

Further,

even if the Court

were to reconsider its patent ineligibility ruling on Claim 1 of
the

'359 Patent,

CertusView has not demonstrated that the Enfish

decision dictates a

different

result.

The Federal Circuit issued its

ruling in Enfish on May 12,

2016, finding that Enfish's patent claiming a "self-referential"
database,

a logical model database that can store and define the

relevant

information

patenting.

within

a

single

table,

Enfish, 822 F.3d at 1332, 1339.

was

eligible

In determining that

such patent claimed patent-eligible subject matter,
Circuit

applied

discussing

step

the

two-step

one,

Alice framework.

the

Federal

for

Circuit

the Federal
However,

clarifies

in
the

distinction between patent claims which are directed to patenteligible subject matter,

that

is, claims which are

"directed to

a specific improvement to the way computers operate," and patent
claims

which

are

directed

to

an

"abstract

computers are invoked merely as a tool.
With

respect

to

such

"directed

idea"

"for

which

Id. at 1336.
to"

inquiry,

the

Federal

Circuit stated:

The "directed to" inquiry, therefore, cannot simply
ask whether the claims involve a patent-ineligible
concept, because essentially every routinely patenteligible claim involving physical products and actions
involves a law of nature and/or natural phenomenonafter all, they take place in the physical world.
Rather, the "directed to" inquiry applies a stage-one
filter
to
claims,
considered
in
light
of
the
specification, based on whether "their character as a
13

whole
is
directed
to
excluded
subject
matter."
[(quoting Internet Patents Corp.
v. Active Network,
Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015)) (citing
Genetic Techs. Ltd. v. Merial L.L.C, 818 F.3d 1369,
1375 (Fed. Cir. 2016))].

The
Supreme
Court
has
suggested
that
claims
"purport[ing]
to
improve
the
functioning
of
the
computer
itself,"
or
"improv[ing]
an
existing
process"
might
not
succumb
to
the
technological
abstract idea exception, [citing (Alice, 134 S. Ct. at
2358-59)].

. . .

We
do
not
read Alice
to
broadly
hold
that
all
improvements
in
computer-related
technology
are
inherently abstract and, therefore, must be considered
at step two. Indeed, some improvements in computerrelated
technology
when
appropriately
claimed
are
undoubtedly not abstract, such as a chip architecture,
an LED display, and the like. Nor do we think that
claims directed to software, as opposed to hardware,
are inherently abstract and therefore only properly
analyzed at the second step of the Alice analysis.
Software
can
make
non-abstract
improvements
to
computer technology just as hardware improvements can,
and sometimes the improvements can be accomplished
through either
route.
We
thus
see
no
reason
to
conclude that all claims directed to improvements in
computer-related technology, including those directed
to software, are abstract and necessarily analyzed at
the second step of Alice/ nor do we believe that Alice
so

directs.

Therefore,

we

find

it

relevant

to

ask

whether the claims are directed to an improvement to
computer functionality versus being directed to an
abstract idea, even at the first step of the Alice
analysis.

For that reason,
in

this

case

the

asks

first

whether

step in the Alice
the

focus

of

on the specific asserted improvement
capabilities (i.e., the self-referential
computer

database)

qualifies
are

as

invoked

an

or,

instead,

"abstract

merely

as

idea"

a

tool.

on

for
As

a

the

inquiry

claims

is

in computer
table for a
process

which
noted

that

computers
infra,

in

Bilski and Alice and virtually all of the computerrelated § 101 cases we have issued in light of those
Supreme

Court

decisions,

it

14

was

clear

that

the

claims

were of the latter type-requiring that the analysis
proceed to the second step of the Alice inquiry, which
asks

in

if

nevertheless

the

application

there

of

is

the

some

inventive

abstract

concept

idea.

[(citing

Alice, 134 S. Ct. at 2355, 2357-59)]. In this case,
however,
the plain focus of the claims is on an
improvement to computer functionality itself, not on
economic or other tasks for which a computer is used
in its ordinary capacity.

Id.

at

Alice

Based on

1335-36.
framework,

the

this

Federal

application
Circuit

of

found

step one of
that

claims

did

not

present

computer

components

economic

practice

Instead,

the

were

or

Federal

a

"situation where

added

post-hoc

mathematical
Circuit

that

Enfish

because

general-purpose

to

a

fundamental

Id.

equation."

found

the

idea,

patent claims were not "directed to" an abstract
such

the

the

at

Enfish

1339.
patent

claimed patent-eligible subject matter because it was "directed

to a specific improvement to the way computers operate, embodied
in the self-referential table."6

6 CertusView argues

that

Id. at 1336.

such language creates

a new standard

for

determining whether a patent claim satisfies the first step of the
Alice framework.
That is, CertusView argues, a claim satisfies the
first step of the Alice framework if such claim "is 'directed to a
specific implementation of a solution to a problem in the [utility
industry]'" and "it 'improve[s] an existing technological process.'"
CertusView's Br. in Supp. of Mot. for Partial Recons. at 9 (quoting
Enfish, 822 F.3d at 1335, 1339).
CertusView's argument captures part
of the Enfish holding, but only goes so far.
First, as discussed
below, while Enfish clarifies how a court should consider prior art,
the Enfish decision does not support the proposition that "improv[ing]
an existing technological process" is always sufficient to satisfy
step

one

of

the

Alice

framework.

See

Enfish,

822

F.3d

at

1339

(explaining that "there may be close calls about how to characterize
what the claims are directed to," and "[i]n such cases, an analysis of
whether there are arguably concrete improvements
in the
recited
computer

technology could

language "improving]

take

place

under

step two").

Further,

the

an existing technological process" is drawn from
15

The

Enfish

decision,

Federal Circuit,

and

other

step

one

of

the

Alice

this Court determined in its
review of prior art

claim

is

prior art
at

1337

Alice

from

the

improvement to prior art,

framework.

As

described

above,

Section 101 Opinion and Order that

not necessary for a determination that a

to"

patent-eligible

subject

matter.

the Federal Circuit stated in Enfish that review of

may

"bolster"

("[0]ur

improvement

the

is

"directed

Nonetheless,

decisions

have also clarified how a court might consider

prior art, and a claimed invention's
during

recent

such conclusion.

conclusion

of

an

decision,

that

existing

134

S.

Ct.

the

See

claims

technology

at

2358,

Enfish,

are

822

directed

is

and

bolstered

the

Diehr

F.3d
to

by

an

the

decision,

450

U.S. at 178, both of which the Court considered in determining that
the asserted claims of the Patents-in-Suit were directed to patentineligible subject matter.
Sect. 101 Op. & Order at 34-37.
Second,
the Enfish decision specifically addresses improvements to computer
functionality and
such
opinion
cannot
be
stretched to
support
CertusView's suggestion that patent claims "directed to a specific
implementation of a solution to a problem in [any industry]" are
sufficient to satisfy step one of the Alice framework.
See Elec.

Power Grp., LLC v. Alstom S.A.,
F.3d
, No. 15-1778, 2016 WL
4073318, at *4 (Fed. Cir. Aug. 1, 2016) (explaining that the claims at
issue

in

Enfish

"focused

not

on

asserted

advances

existing computer capabilities could be put,
improvement-a particular database technique-in

in

uses

to

which

but on a specific
how computers could

carry out one of their basic functions of storage and retrieval of
data" (citing Enfish, 822 F.3d at 1335-36)); Visual Memory LLC v.
NVIDIA Corp., No. l:15-cv-789, 2016 WL 3041847, at *4 (D. Del. May 27,
2016) (unpublished) ("Enfish is thus best understood as a case which
cautions against oversimplification during step one of Mayo/Alice,
rather than a case which exempts from § 101 scrutiny all patents which
purport to improve the functioning of a computer." (citing In re TLI
Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016))).
As

discussed
limitations

below,
which

consideration
address

of

problems

prior
in

art,

prior

relevance during step one of the Alice framework.

16

and
art,

specific
are

of

claim

limited

specification's
other

teachings

benefits

that

the

conventional

faster

flexibility,

over

search

claimed

invention

databases,

times,

such

and

achieves

as

increased

smaller

memory

requirements.").

However, "'in other cases involving computer-

related

there

claims,

characterize

what

cases,

analysis

"'an

the

may

be

claims

of

close

are

calls

directed

whether

there

about

to,'"

are

how

and

in

arguably

to
such

concrete

improvements in the recited computer technology could take place
under step two.'"

Bascom Glob.

Mobility LLC,
(Fed.

Cir.

While

the

limitations

is

F.3d

June

into

be

claims

and

, No.

2016)

Federal

directed,"

should

27,

deferred

their

to

specific

themselves to a step[
nonabstract idea."

the

of

the

the

822

limitations
that

(citing Enfish,

AT&T

*5

1339).

incorporates

claim

idea

two

do

F.3d

to

which

claim

analysis

not

a

claim

limitations
when

"the

readily

lend

they are directed to a
822

F.3d at

1339,

example of a case that did not present a "close call[]
to characterize what the claims are

v.

at

specific

Alice step

]one finding

Id.

Enfish,

of

Inc.

2016 WL 3514158,

"sometimes

articulation

consideration

Servs.,

15-1763,

(quoting

Circuit

its

Internet

directed to").

as an

about how

Thus,

while

Enfish and other recent cases explain how consideration of prior
art and specific claim limitations may be part of the Alice step
one

analysis,

finding

of

such consideration

patent-eligibility.
17

is not

always

Further,

necessary

both

the

for

a

Federal

Circuit

and

compare

claims

directed

the

to

Supreme

at

an

issue

Ct.

1359,

2357;
1362

PIP

(Fed.

Cir.

Inc.,

it

sufficient

claims

already

previous

in

Inc.

2015));

F.3d
1,

cases"

v.

Amazon.com,

accord Elec.

, No.

2016);

F. App'x

found
to

to

to

15-1778,

Grp.

Inc.,

788

Power Group,

Tree,

LLC

v.

134
F.3d

LLC v.

2016 WL 4073318,

Lending

be

determine

M-5

Zillow,

, No. 14-1435, 2016 WL 3974203,

Cir. July 25, 2016)
Litig.,

"found

Enfish, 822 F.3d at 1334 (citing Alice,

Cir.

Aug.

have

those

idea

Techs.,

Alstom S.A.,
(Fed.

to

abstract

patent eligibility.
S.

Court

*3 (Fed.

(unpublished); In re TLI Commc'ns LLC Patent

823 F.3d 607, 613 (Fed. Cir. 2016).

Thus,

the

Court

"contrary decision
Court's

Section

decision

merely

finds

of

101

that

law,"

Enfish

warranting

Opinion

applies

the

and

step

of

is

reconsideration

Order.

one

decision

Instead,

the

the

Alice

not

of

a

the

Enfish

framework

to

patent claims addressing computer functionality and explains the
difference

between

patent-eligible

claims

directed

to

technological improvements of computer functionality and patentineligible

claims

directed

to

"abstract

ideas"

which

employ

computers as only a tool.
However,

ruling

even

regarding

if

the

patent

Court

were

eligibility,

to

the

reconsider

Enfish

not suggest the Court should alter such ruling.

its

earlier

decision

does

Claim 1 of the

'359 Patent is directed to a method for generating a "searchable
18

electronic record of a locate operation," that is, "one or more

computer-readable

files

information regarding
Order

at

Patent,

58,

Col.

that

17:53-55.

simplest form,

some

a locate operation,"

"performed

Opinion and Order,

include

the

by
As

a

locate

detailed

or

all

the

Markman Opinion

technician."

in

of

the Court's

elements in Claim 1,

See

and
'359

Section

distilled

to

101

their

recite:

A) electronically receiving an aerial image of the dig
area, with such image displayed, at least in part on a
display device; B) adding to such image a digital
representation of a physical locate mark;
and C)
electronically transmitting and/or storing a computer
readable

file

that

includes

some

or

all

of

the

information regarding a locate operation, with such
computer readable file comprising the aerial image to
which
at
least
one
digital
representation
of
a
physical locate mark has been added and a data set
including a set of geographic points, along a marking
path, including geographical coordinates responding to
physical locate marks, the property address associated
with the physical locate marks, a timestamp of when
the locate operation occurred, the name of the locate
technician, the name of the company that performed the
locate operation, and a ticket number associated with
such operation.

Sect.

101 Op. & Order at 71-72

(citing

18:21).

Considering

carefully

elements,

Claim

the

1 of

receiving information,
additional

information

representation

of

the

the

'359 Patent,

specific

'359 Patent

details

Col.

language
the

it,

physical

19

in

the

locate

form

mark,

of

and

of

"process

in the form of the aerial image,
to

17:53the
of

adding

the

digital

then

storing

such combined information in a computer readable file with other

information related to the locate operation."
In contrast
were

to

"directed

the

to

patent

a

claims

specific

at

Id. at 72.

issue in

Enfish,

improvement

to

that

computer

functionality," Claim 1 of the '359 Patent is closer to the kind

of

patent-ineligible

computer

claims

components

to

that

merely

well-known

"add

business

conventional

practices,"

and

"recite[s] generalized steps to be performed on a computer using
conventional

computer

activity."

(citations omitted).

Generally,

Enfish,

822

claims that

F.3d

at

1338

recite generalized

steps to be performed on a computer using conventional computer
activity,

Enfish explains,

at 1337-38; accord Elec.

4

("Information as

information"

"merely

is

and

Power Grp.,

such

is

"within

the

presenting

collecting

are directed to abstract ideas.

the

an

2016 WL 4073318 at *3-

intangible,"

realm

results

analyzing

LLC,

of

thus,

abstract

of

ancillary

part

of

such

without

collection

citations and quotations omitted)).
eligible

claims

specific

implementation

software

Patent

is

arts,"

at

issue

Enfish,

directed

to

in

of

more

822

which

solution

F.3d

at

1339,

patent-ineligible
20

to

(such

of

as

is abstract as

analysis"

Further,

Enfish,
a

and

further

processes

identifying a particular tool for presentation),
an

"collecting

ideas";

abstract

information,

Id.

(internal

unlike the patentwere
a

problem

Claim

subject

"directed

1

of

matter

in
the

to
the
'359

because

the technological solution such claim purports to advance is the

process of gathering and saving information of a specified kind,
related

to

a

locate

operation,

and

"not

any

particular

assertedly inventive technology for performing those functions."
Elec.

Power

Grp.,

Commc'ns LLC

2016

WL

Patent Litig.,

4073318
823

at

F.3d

*4;

607,

accord

612

(Fed. Cir.

(finding patent claiming "a method for recording,
and

administering

[a]

digital

image"

to

In

be

re

TLI

2016)

communicating

directed

to

an

abstract concept because such claims are "directed to the use of
conventional

or

environment,

without

inventive

generic technology

solution

any

to

two" (citing Enfish,

claim

any

in a nascent

that

problem

the

invention

presented

822 F.3d at 1335)).

but

by

well-known
reflects

combining

Therefore,

an

the

the Court's

finding that Claim 1 of the '359 patent "is directed towards the
abstract

idea

information,
environment

of
as

of

creating

a

applied

in

conducting a

computer-readable
the

file

particular

locate operation,"

to

store

technological

Sect.

101

Op.

&

Order at 71, is unchanged by the Enfish decision.7

7 CertusView also argues that, as a result of the Enfish decision, the
Court should reconsider its patent-ineligibility ruling regarding
Claim 1 of the '359 Patent under step two of the Alice framework.
See
CertusView's Br. in Supp. of Mot. for Partial Recons. at 19-25.
However,

as

Enfish

did

not

discuss

step

two

of

the

Alice

framework,

and CertusView cites no "controlling authority [that] has since made a
contrary decision of
law" applicable to step two of the Alice
framework, the Court need not revisit its ruling that Claim 1 of the
'359 Patent does not claim patent-eligible subject matter under step
two of the Alice framework.
See Evans, 148 F. Supp. 3d at 544 ("(T]he
court should not reevaluate the basis upon which it made a prior
21

B.

Trial Evidence

CertusView also argues that reconsideration of the Court's
ineligibility regarding Claim 1 of the

judgment of patent
Patent

is warranted due to

trial

of

S&N's

CertusView

to

has

on

that

of

the

demonstrated

conduct

demonstrated

reconsideration

Judgment

new evidence heard during the bench

inequitable

not

the

Court's

such

ruling

Further,

reconsideration

that

the

subsequent

that

was

trial

is

"substantially different"

at

counterclaim.

that

Pleadings.

bench

'359

in

evidence

on

However,
is

S&N's

relevant

Motion

CertusView

warranted

this

case

from

the

on

has

the

not

grounds

produced evidence

evidence

available

the time the Court resolved S&N's Motion for Judgment on

Pleadings.
S&N
pursuant

for

the

Sejman, 845 F.2d at 69.
filed
to

its

Federal

Motion
Rule

for

of

Judgment

Civil

on

Procedure

the

Pleadings,

12(c),

seeking

a

finding of patent ineligibility as to the asserted claims of the
Patents-in-Suit.

"On

a

motion

made pursuant to Rule 12(c),

for

judgment

on

the

only the pleadings are considered,"

and the exhibits which are part of such pleadings.
Co.

v.

Bait.

Cir.

1964);

Ins.

Co.

ruling,

of

Typographical Union No.

accord
Am.,

Thomas
122

F.

pleadings

Daniels
Supp.

12,

338

Agency,
3d

448,

A. S. Abe 11

F.2d 190,

Inc.
451

v.

193

(4th

Nationwide

(D.S.C

2015)

if the moving party merely seeks to reargue a previous claim,

(citation omitted)).

22

(citations omitted);

Dobson v. Cent.

240 F.

Supp.

2d 516,

As

Court

explained

the

519

"[s]ection 101 [patent]

Carolina Bank & Trust Co.,

(M.D.N.C

in

2003)

its Section

(citations omitted).

101

Opinion

eligibility is a question of law" that

"hinges on the claims of the Patents-in-Suit."

Order

at 28

Inst.

(Edinburgh),

(citing Alice,
750

resolution in

134 S.

F.3d

such Opinion and Order,
patent-eligibility

1333,

Ct. at
1335

Sect. 101 Op. &

2355;

(Fed.

In re Roslin

Cir.

2014)).

In

the Court also recognized that certain

determinations

a motion

and Order

for

may

not

judgment on

be

the

when a motion for judgment on the pleadings

appropriate

pleadings,

for

such

as

is raised prior to

claim construction or when such motion relies on resolution of a

factual dispute.
Life

Assurance

2012);
F.

Id. at 27
Co.

of

(citing Bancorp Servs.,

Can.,

687

F.3d

Loyalty Conversion Sys. Corp.

Supp.

3d

829,

834

(E.D.

Tex.

v.

1266,

Am.

2014)).

LLC v.

1273

(Fed.

Airlines,
However,

Sun
Cir.

Inc.,
the

66

Court

found that because claim construction had already taken place in
this

case,

and because

"it

need not

rely on

any

factual matter

other than that presented in the specifications of the Patentsin-Suit,"

which

Complaint,

S&N's

appropriate

eligibility.

were

attached

Motion

vehicle

to

for

as

exhibits

Judgment

determine

on

the

to

the
legal

the

First

Pleadings
issue

Amended

was

of

the

patent

Id. at 29-30.

CertusView

has

not

demonstrated

23

that

the

bench

trial

produced
that

for

any

evidence,

would be relevant

Judgment

that

the

Motion.8

on

Court

regarding
to the

Court's

1

of

the

resolution

of

'359

Patent,

S&N's

Motion

the

Pleadings

regarding patent

eligibility and

did

not

at

considered

have

the

time

it

such

Instead, the trial evidence that CertusView relies upon

in support of

reconsideration addresses

CertusView's

e-Sketch

characterization

of

Court

Claim

specifically

the

the differences between

invention

prior

noted,

and

art--a

found

and

factual

to

be

CertusView's

dispute

irrelevant,

that

the

in

the

following discussion contained in its ruling on S&N's Motion for
Judgment on the Pleadings:

Importantly, the Court further concludes that there
are no factual disputes that could affect the Court's
analysis of the issue of section 101 validity.
The
only factual dispute that Plaintiff has brought to the
Court's attention in opposition to Defendants' motion
concerns

Defendants'

characterization

of

a

"conventional" locate operation, including Defendants'
chart comparing such an operation to Claim 1 of the
'204

Patent.

However,

the Court

need

not

resolve

the

factual dispute between the parties over how locate
technicians conduct "conventional" locate operations

As S&N notes in its Response to CertusView's Motion for Partial
Reconsideration, CertusView has not provided the Court with any case
where a court has granted a motion to reconsider a finding of patent
ineligibility due to the presentation of additional evidence at trial.
Resp. to CertusView's Mot. for Partial Recons. at 20-21.
Instead, the
primary case cited by CertusView recognizes merely, as the Court does
above, that claim construction can be helpful to understanding patent
claims prior to ruling on section 101 patent ineligibility.
See
Bancorp Servs.,

LLC,

687 F.3d at 1274.

However,

as the trial evidence

cited by CertusView was considered by the Court during resolution of
S&N's Motion for Judgment on the Pleadings, the Court need not address
whether any trial evidence may serve as the basis for reconsideration
of a determination of patent eligibility.

24

because

that

conclusion

dispute

that

does

the

not

affect

Patents-in-Suit

patent-eligible subject matter.
will

decline

to

exercise

its

the

do

Therefore,
discretion

Court's

not

claim

the Court

to

consider

matters outside the pleadings in resolving this Rule
12(c) motion.
The Court finds that such decision is
appropriate because the issue of section 101 validity
is adequately presented—and the Court can adequately
resolve
it—without
considering
the
disputed
facts
outside the pleadings.
To the extent that Defendants'
briefs
rely
on
factual
information
outside
the
pleadings,
including
the
chart
contained
in
Defendants' memorandum in support of its motion, the
Court will not consider such materials in resolving
this
motion.
Rather,
to
the
extent
the
Court
considers the matter at all, the Court will view the

facts regarding such "conventional" locate operations
in the light most favorable to the Plaintiff based on
the facts presented in Plaintiff's pleadings and the
specifications of the patents-in-suit that Plaintiff
has incorporated therein.
Sect.

101 Op.

& Order at

demonstrated that
new

evidence

bench

relevant

reconsideration,
Further,

the

29-30.

Therefore,

trial

to

in

the

this

even

Court's

if

the

Court

were

to

patenting.
adduced

at

presented

resolution,

consider

bench trial in this matter,

demonstrated that such trial "produce[d]
from

determined that

matter

or

any
its

of S&N's Motion for Judgment on the Pleadings.

presented at the

evidence"

CertusView has not

that

which

Claim 1 of

was

the

new

evidence

CertusView has

not

substantially different

available

'359 Patent

when

was

the

Court

ineligible

for

CertusView highlights two particular factual issues
trial

that

it

argues

are

"substantially different"

from the evidence that

the

Court previously considered.

CertusView argues

the

evidence

that

25

presented during

the

First,
bench

trial

demonstrated

that

locate operation did

a

not

conventional

paper

include geographical

manifest

of

coordinates,

a

and

thus, such information is not, as the Court found in its Section
101

Opinion

and

Order,

ordinarily would be

Op. & Order at 76.
the

Court

absence

same

sort

of

information

included in a paper manifest."

that

Sect.

101

However, contrary to CertusView's assertion,

considered

of

"the

in

its

geographical

Opinion

and Order

coordinates

in

the

presence

conventional

or

paper

manifests of a locate operation and found that such evidence did

not affect the Court's decision.
that

"some

of

the

Specifically,

information,

for

the Court noted

example

the

coordinates corresponding to physical locate marks,
element C

in the data

set

geographic
included in

stored in the computer-readable

file

contains greater detail than, or might otherwise be absent from,
paper

manifests

documenting a

(emphasis

locate

added).

information that
and save,

created

during

the

operation."

However,

Sect.

even

CertusView's

Op.

considering

& Order

this

of

at

76

additional
document

the Court found that "such additional information does

to

claim

the

abstract

technological
such

environment
information

of
is

[of the

idea

readable file to store information,

because

101

method

e-Sketch invention might

not transform the method of Claim 1

attempt

conventional

of

creating

26

a

from an

computer-

as applied in the particular

conducting

the

'359 Patent]

same

sort

a

locate
of

operation,

information

that

ordinarily would be included in a paper manifest."
Thus,

evidence

regarding

introduced at trial,

a

conventional

is not

paper

Id.

at 76.

manifest,

"substantially different"

as

from the

evidence that the Court considered in resolving S&N's Motion for
Judgment on the Pleadings.
Second,

during

CertusView

the bench

argues

trial

demonstrated

improved documentation and
Again,

CertusView

does

that

not

prove

different"

from

considered

resolving

S&N's

Pleadings.

In

its

that

evidence

Section

that

the

101

reviewed the state of conventional,

trial

evidence
for

Opinion

product

locate operations.

such

Motion

presented

the e-Sketch

record-keeping of

"substantially
in

the

and

prior art,

evidence

that

the

Judgment
Order,

is

Court
on

the

the
Court

locate operations

and the flaws of documenting and recording a conventional locate
operation,

as discussed in the specifications of the Patents-in-

Suit.

Sect.

101

during

the

locate

operation

Op.

bench

&

trial

Order

at

perhaps

procedures,

and

5-7.

The

elucidates

the

evidence

the

goals

adduced

conventional

of

the

e-Sketch

product in improving on such procedures,

but such evidence does

not

from

contradict

the Court
and Order.

nor differ

considered and discussed
Further,

Opinion and Order,

Suit

may

substantially

well

the

in its Section

that

101 Opinion

as the Court explained in a footnote of its

while the asserted claims of

have

evidence

value

as

an
27

improvement

the Patents-in-

to

the

locate

operation industry,
or

effect

of

invention

is

represents
problem

the

"this Court does not
claimed

invention

patent-eligible.

the

development

existing

in

the

at

a

art,

Id.

to

Even

of

eligible."

Amdocs,

new

the

evidence

to

the

CertusView

adduced

Court's

Patent is

at

the

prior

ineligible

reconsideration

of

does

demonstrated

bench

not

(emphasis

demonstrated

trial

in

determination

this

that

that

such

claimed

solves

not

render

such

ruling.

bench

that

bench

the

"substantially different"

were
trial

that

1

35 U.S.C.

Further,

trial

added)

matter

Claim

for patenting under

presented during the
not

has

n.ll

invention

process

alone

whether

a
it

56 F. Supp. 3d at 825).

Therefore,

50

determine

if

that,

patent

inquire into the value

even

relevant,
in

this

evidence such that

(citing

additional
is

relevant

of

the

'359

§ 101
if

or

to

evidence

CertusView has
matter

adduced

reconsideration of

the Court's § 101 ruling is warranted.
IV.

For

Partial

the

reasons

stated

Reconsideration

of

Ineligibility under 35 U.S.C.
As no pertinent
First

Amended

CONCLUSION

above,

the

Plaintiff's

Court's

§ 101,

Motion

Judgment

ECF No.

533,

of

for

Patent

is DENIED.

issues remain for resolution on Plaintiff's

Complaint,

ECF

No.

55,

and

previously entered judgment on Defendants'
counterclaim for inequitable conduct,
28

as

the

Court

has

declaratory judgment

see ECF No.

542,

the Clerk

is

REQUESTED

Plaintiff's
Federal

The

to
First

Rules

final

judgment

Amended Complaint

of Civil

in

Defendants'

pursuant

to Rule

favor
58 of

on
the

Procedure.

Clerk is REQUESTED to send a copy of this Opinion and

Order to all
IT

enter

IS

SO

counsel

of

record.

ORDERED.

fitif^

/s/i
Mark

S.

Davis

United States District Judge
Norfolk,

Virginia

August |Q , 2016

29