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Intellectual Ventures I LLC v. T-Mobile USA, Inc.

United States District Court, D. Delaware

August 23, 2017

INTELLECTUAL VENTURES I LLC, Plaintiff,
v.
T-MOBILE USA, INC. and T-MOBILE US, INC., Defendants. INTELLECTUAL VENTURES II LLC, Plaintiff,
v.
T-MOBILE USA, INC. and T-MOBILE US, INC., Defendants. INTELLECTUAL VENTURES I LLC, Plaintiff,
v.
NEXTEL OPERATIONS, INC. and SPRINT SPECTRUM L.P., BOOST MOBILE, LLC, and VIRGIN MOBILE USA, L.P., Defendants INTELLECTUAL VENTURES II LLC, Plaintiff,
v.
NEXTEL OPERATIONS, INC. and SPRINT SPECTRUM L.P., BOOST MOBILE, LLC, and VIRGIN MOBILE USA, L.P., Defendants
v.
UNITED STATES CELLULAR CORPORATION, Defendant. INTELLECTUAL VENTURES II LLC, Plaintiff,
v.
UNITED STATES CELLULAR CORPORATION, Defendant. INTELLECTUAL VENTURES I LLC, Plaintiff,
v.
T-MOBILE USA, INC. and T-MOBILE US, INC., Defendants.

          Joseph J. Faman, III, Brian E. Faman, Michael J. Faman, FARNAN LLP, Wilmington, DE Martin J. Black, DECHERT LLP, Philadelphia, PA Jeffrey B. Plies, DECHERT LLP, Austin, TX Stephen J. Akerley, Justin F. Boyce, DECHERT LLP, Mountain View, CA Attorneys for Plaintiffs Intellectual Ventures I LLC and Intellectual Ventures II LLC.

          Jack B. Blumenfeld, Karen Jacobs, Jennifer Ying, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE Josh Krevitt, Benjamin Hershkowitz, GIBSON, DUNN & CRUTCHER LLP, New York, NY Mark N. Reiter, GIBSON, DUNN & CRUTCHER LLP, Dallas, TX Brian M. Buroker, GIBSON, DUNN & CRUTCHER LLP, Washington, DC Alison R. Watkins, GIBSON, DUNN & CRUTCHER LLP, Palo Alto, CA Eric T. Syu, Casey J. McCracken, GIBSON, DUNN & CRUTCHER LLP, Irvine, CA Matthew R. Harvey, GIBSON, DUNN & CRUTCHER LLP, Denver, CO Attorneys for Defendants T-Mobile USA, Inc. and T-Mobile US, Inc.

          Jack B. Blumenfeld, Karen Jacobs, Jennifer Ying, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE Brian C. Riopelle, David E. Finkelson, Kristen M. Calleja, Derek H. Swanson, Justin R. Lowery, George B. Davis, Lyle D. Kossis, MCGUIRE WOODS LLP, Richmond, VA Rachelle H. Thompson, MCGUIRE WOODS LLP, Raleigh, NC Mark Varboncouer, Amy L. Signagio, MCGUIRE WOODS LLP, Chicago, IL Justin W. Cook, MCGUIRE WOODS LLP, Dallas, TX Attorneys for Defendants Sprint Spectrum, L.P.; Nextel Operations, Inc.; Boost Mobile LLC; and Virgin Mobile USA, L.P.

          Steven J. Fineman, Katharine L. Mowery, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE Douglas I. Lewis, Savan N. Vaghani, John P. Wisse, Paul E. Veith, SIDLEY AUSTIN LLP, Chicago, IL John P. Wisse, SIDLEY AUSTIN LLP, Dallas, TX Ashish Nagdev, SIDLEY AUSTIN LLP, Palo Alto, CA Attorneys for Defendant United States Cellular Corporation.

          MEMORANDUM OPINION

          STARK, U.S. District Judge

         Pending before the Court are:

         (i) Plaintiffs Intellectual Ventures I ("IV I") and Intellectual Ventures II's ("IV II, " and collectively with IV I, "Plaintiffs" or "IV") motion for partial reconsideration (C.A. No. 13-1632-LPS D.I. 752)[1] of the Court's December 30, 2016 Memorandum Opinion granting Defendants' motion for judgment on the pleadings that certain claims of U.S. Patent Nos. 6, 115, 737 (the '"737 patent"), 8, 078, 200 (the "'200 patent"), and 7, 450, 957 (the '"957 patent") are patent-ineligible under 35 U.S.C. § 101 (D.I. 748) ("IV Motion"); and

         (ii) Defendants T-Mobile USA, Inc. ("T-Mobile USA"); T-Mobile US, Inc. ("T-Mobile US, " and collectively with T-Mobile USA, "T-Mobile"); Nextel Operations, Inc. ("Nextel"); Sprint Spectrum L.P. ("Sprint Spectrum"); Boost Mobile LLC ("Boost Mobile"); Virgin Mobile USA, L.P. ("Virgin Mobile, " and collectively with Nextel, Sprint Spectrum, and Boost Mobile, "Sprint"); and United States Cellular Corporation ("U.S. Cellular, " and collectively with T-Mobile and Sprint, "Defendants") motion for summary judgment that certain claims of U.S. Patent Nos. 5, 960, 032 (the '"0032 patent"), RE41, 490 (the '"490 patent"), RE43, 306 (the '"306 patent"), and 5, 339, 352 (the '"352 patent") are patent-ineligible under 35 U.S.C. § 101 (D.I. 772 at 24-30, 49-54, 84-91) ("Summary Judgment Motion").[2]

         For the reasons set forth below, the Court will deny the IV Motion and will grant in part and deny in part Defendants' Summary Judgment Motion.

         I. BACKGROUND

         IV filed suit against T-Mobile and Sprint on February 16, 2012 and against U.S. Cellular on May 7, 2012, alleging infringement of 16 patents. (See, e.g., C.A. No. 12-193-LPS D.I. 1, 20) IV's infringement allegations have since been reduced to 16 claims across seven patents: U.S. Patent No. 6, 170, 073 (the '"073 patent"), [3] the '0032 patent, the '490 patent, the '306 patent, U.S. Patent No. 5, 790, 793 (the '"793 patent"), the '352 patent, and U.S. Patent No. 5, 557, 677 (the '"677 patent").[4] (See D.I. 772 at 1) IV asserts the '0032 patent, '793 patent, '490 patent, and '306 patent against T-Mobile; the '793 patent, '490 patent, '306 patent, and '352 patent against Sprint; and the '490 patent and the '352 patent against U.S. Cellular. (See D.I. 768 at 2)

         The '073 and '0032 patents broadly relate to air infrastructure technology. (See D.I. 288 at 3) The '490, '306, and '793 patents relate to multimedia message services ("MMS") technology. (See Id. at 2) The '352 patent discloses a solution related to directory assistance for wireless callers (see D.I. 772 at 84-85), while the '677 patent discloses a solution directed to data transmission in fragments over Wi-Fi technology (see D.I. 288 at 2-3).

         On April 14, 2015, Defendants filed a motion for judgment on the pleadings that certain claims of the '737 patent, '200 patent, and '957 patent are patent-ineligible under 35 U.S.C. § 101. (D.I. 305) The Court granted Defendants' motion on December 30, 2016. (D.I. 748) Subsequently, on January 18, 2017, IV filed a motion for partial reconsideration. (D.I. 752) In its Motion, IV seeks reconsideration of the Court's Memorandum Opinion granting Defendants' motion for judgment on the pleadings that claims 7 and 14 of the '737 patent are patent-ineligible under § 101. (See Id. at 1) The parties completed briefing on the IV Motion on February 8, 2017. (D.I. 752, 764) While the IV Motion was pending but not yet fully briefed, IV submitted additional letter briefing discussing subsequent authority it believed pertinent. (D.I. 753)

         Defendants filed their Summary Judgment Motion on March 2, 2017. (D.I. 772 at 24-30, 49-54, 84-91) The parties completed briefing - which collectively reached a grand total of 394 pages - on the Summary Judgment Motion on May 15, 2017. (D.I. 772, 809, 821) The Court heard four hours of oral argument on the pending motions on June 6, 2017. (D.I. 836 ("Tr."))

         II. LEGAL STANDARDS

         A. Reconsideration

         Pursuant to Local Rule 7.1.5, motions for reconsideration should be granted only "sparingly." The decision to grant such a motion lies squarely within the discretion of the district court. See Dentsply Int'l, Inc. v. Kerr Mfg. Co., 42 F.Supp.2d 385, 419 (D. Del. 1999); Brambles USA, Inc. v. Blocker, 735 F.Supp. 1239, 1241 (D. Del. 1990). These types of motions are granted only if the Court has patently misunderstood a party, made a decision outside the adversarial issues presented by the parties, or made an error not of reasoning but of apprehension. See Shering Corp. v. Amgen, Inc., 25 F.Supp.2d 293, 295 (D. Del. 1998); Brambles, 735 F.Supp. at 1241. "A motion for reconsideration is not properly grounded on a request that a court rethink a decision already made." Smith v. Meyers, 2009 WL 5195928, at *1 (D. Del. Dec. 30, 2009); see also Glendon Energy Co. v. Borough of Glendon, 836 F.Supp. 1109, 1122 (E.D. Pa. 1993). It is not an opportunity to "accomplish repetition of arguments that were or should have been presented to the court previously." Karr v. Castle, 768 F.Supp. 1087, 1093 (D. Del. 1991).

         A motion for reconsideration may generally be granted only if the movant can show at least one of the following: (i) there has been an intervening change in controlling law; (ii) the availability of new evidence not available when the court made its decision; or (iii) there is a need to correct a clear error of law or fact to prevent manifest injustice. See Max's Seafood Cafe by Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). However, in no instance should reconsideration be granted if it would not result in amendment of an order. See Schering Corp., 25 F.Supp.2d at 295.

         B. Summary Judgment

         Under Rule 56(a) of the Federal Rules of Civil Procedure, "[t]he court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-86 (1986). An assertion that a fact cannot be - or, alternatively, is - genuinely disputed must be supported either by "citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials, " or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The Court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).

         To defeat a motion for summary judgment, the nonmoving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586; see also Podobnik v. U.S. Postal Sen'., 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks omitted). The "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment;" a factual dispute is genuine only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477U.S. 242, 247-48 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477U.S. 317, 322 (1986) (stating entry of summary judgment is mandated "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial"). Thus, the "mere existence of a scintilla of evidence" in support of the nonmoving party's position is insufficient to defeat a motion for summary judgment; there must be "evidence on which the jury could reasonably find" for the nonmoving party. Anderson, 477U.S. at 252.

         C. Patent-Eligible Subject Matter

         Under 35 U.S.C. § 101, "[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 to the conditions and requirements of this title." There are three exceptions to § 101 's broad patent-eligibility principles: "laws of nature, physical phenomena, and abstract ideas." Diamond v. Chakrabarty, 447U.S. 303, 309 (1980). Pertinent here is the third category, "abstract ideas, " which "embodies the longstanding rule that an idea of itself is not patentable." Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.Ct. 2347, 2355 (2014) (internal quotation marks omitted). "As early as Le Roy v. Tatham, 55 U.S. 156, 175 (1852), the Supreme Court explained that '[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.' Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed." In re Comiskey, 554 F.3d 967, 977-78 (Fed. Cir. 2009).

         In Mayo Collaborative Servis. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), the Supreme Court set out 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. First, courts must determine if the claims at issue are directed to a patent-ineligible concept - in this case, an abstract idea ("step 1"). See Id. If so, the next step is to look 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 ("step 2"). Id. (certain quotation marks omitted). The two steps are "plainly related" and "involve overlapping scrutiny of the content of the claims." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).

         1. Mayo Step 1

         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) (emphasis added); 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.").

         The Federal Circuit has distinguished claims that are "directed to an improvement to computer functionality versus being directed to an abstract idea." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (emphasis added). Enfish, for example, found claims to be not abstract because the "plain focus of the claims is on an improvement to computer functionality itself, " distinguishing such patent claims from those involved in Alice, which involved "economic or other tasks for which a computer is used in its ordinary capacity." Id. at 1336. By contrast, in Alstom, the Federal Circuit determined that certain claims were directed to an abstract idea because "the focus of the claims is not on ... an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools." 830 F.3d at 1354. Enfish adds that a patent specification's disparagement of prior art or "conventional" implementations may bolster a conclusion that claims are directed to a non-abstract improvement of technology rather than an abstract idea. 822 F.3d at 1337, 1339.

         Courts should not "oversimplif[y]" key inventive concepts or "downplay[]" an invention's benefits in conducting a step-1 analysis. See Id. at 1338; see also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) ("[C]ourts must be careful to avoid oversimplifying the claims by looking at them generally and failing to account for the specific requirements of the claims.") (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." Id.

         2. Mayo Step 2

         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, 837 F.3d at 1312 (internal brackets and quotation marks omitted). The "standard" step-2 inquiry includes consideration of whether claim elements "simply recite 'well-understood, routine, conventional activities]."' 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). "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 (emphasis in original; internal quotation marks omitted).

         However, "[t]he 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. The Federal Circuit has looked to the claims as well as the specification in performing the "inventive concept" inquiry. See Affinity Labs of Texas v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) ("[N]either the claim nor the specification reveals any concrete way of employing a customized user interface.").

         The "mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention” under step 2. 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 citation and quotation marks omitted).

         3. Preemption

         The Supreme Court has instructed that, "in applying the § 101 exception, [courts] must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more, thereby transforming them into a patent-eligible invention." Alice, 134 S.Ct. at 2354 (internal citation and quotation marks omitted). The "concern that drives th[e] exclusionary principle [i]s one of pre-emption." Id. That is, where a patent would preempt use of "basic tools of scientific and technological work, " that is, "[l]aws of nature, natural phenomena, and abstract ideas, " the patent would "impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws." Id. (internal quotation marks omitted).

         The Federal Circuit has considered the issue of preemption at both steps 1 and 2. For example, in McRO, 837 F.3d at 1315, in support of its conclusion that a claim was patent-eligible under step 1, the Federal Circuit held that limitations of the claim "prevent[ed] preemption of all processes for achieving automated lip-synchronization of 3-D characters." In Bascom, 827 F.3d at 1350, in support of the Court's conclusion that claims reciting "a specific, discrete implementation of the abstract idea of filtering content" were not patent-ineligible under step 2 at the pleading stage, the Federal Circuit explained that the claims did not preempt "all ways of filtering content on the Internet."

         4. Machine-or-Transformation Test

         "[T]he machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101." Bilski v. Kappos, 561 U.S. 593, 604 (2010). However, it is "not the sole test for deciding whether an invention is a patent-eligible 'process.'" Id. Under the machine-or-transformation test, a patent claim that "uses a particular machine or apparatus" may be patent-eligible if it does not "pre-empt 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), affd sub nom. Bilski v. Kappos, 561 U.S. 593 (2010). In addition, "a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle" may be patent-eligible if it does not "pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article." Id.

         III. DISCUSSION

         A. IV's Motion for Partial Reconsideration

         IV seeks reconsideration of the Court's Memorandum Opinion granting Defendants' motion for judgment on the pleadings that claims 7 and 14 of the '737 patent are patent-ineligible under 35 U.S.C. § 101. (See D.I. 752 at 1) In IV's view, reconsideration is warranted based on an intervening change in controlling law, the availability of new evidence, and the need to correct a clear error of law or fact. The Court addresses each argument in turn.

         1. Intervening Change in Controlling Law

         IV first seeks reconsideration based on a purported intervening change in Federal Circuit case law.[5] In IVs view, reconsideration is warranted because "the Court's analysis [in its Memorandum Opinion] is in conflict with" Trading Technologies International, Inc. v. CQG, Inc., 2017 WL 192716 (Fed. Cir. Jan. 18, 2017) ("7T7"). (D.I. 753 at 1) However, as Defendants correctly observe, TTI is a non-precedential opinion and, as such, does not represent "an intervening change in controlling law." (D.I. 764 at 8 (emphasis added); see also Fed. Cir. R. 32.1(d) ("The court. . . will not give one of its own nonprecedential dispositions the effect of binding precedent.")) IV s reliance on TTI, therefore, is insufficient to support reconsideration.

         In any event, even were TTI "controlling law, " it does not represent an "intervening change" in the law as it makes no material, relevant modification to the law applicable to whether the asserted claims of the '737 patent are patent-eligible. Rather, as Defendants explain, "[t]he claims in TTI relate to a different technology (commodity trading) and provide far more focus and technical detail than those of the '737 Patent, which relate to account management." (D.I. 764 at 9)

         2. Availability of New Evidence

         IV next contends that the Patent Trial and Appeal Board's ("PTAB") November 2016 decision (the "PTAB Decision"), denying the institution of Covered Business Method ("CBM") review for the '737 patent, is "new evidence" that "illustrates how the ['737] patent discloses more than a trivial abstraction." (D.I. 752 at 3, 8) The Court disagrees. Contrary to IVs assertions, the PTAB Decision is not "new evidence" as it was issued before the Court issued its Memorandum Opinion. (Compare D.I. 764-1 Ex. A at 2 (decision issued on November 23, 2016) with D.I. 748 (Memorandum Opinion issued on December 30, 2016)) Therefore, the PTAB Decision fails to provide an adequate basis for reconsideration.

         Even if the PTAB Decision had been issued after the Court issued its Memorandum Opinion, the Court agrees with Defendants that the PTAB Decision does not have any "bearing on the [§ 101] eligibility of the '737 [p]atent." (D.I. 764 at 6) The PTAB Decision does not discuss whether the invention claimed in the '737 patent is abstract for the purposes of the § 101 analysis; rather, its focus is on whether the '737 patent is eligible for CBM review and concludes that it is not.[6] See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1323, 1328 (Fed. Cir. 2015) (separately discussing CBM eligibility and § 101 eligibility). The Court rejects IVs contention that the PTAB Decision is new evidence based on which the Court should grant reconsideration.

         3. Clear Error of Law or Fact

         Finally, IV contends that reconsideration is warranted based on the Court's clear errors of law or fact.

         Specifically, IV argues that the Court erred in deciding questions of patent eligibility on a Rule 12(c) motion. (See D.I. 752 at 3) In IV's view, the Court's § 101 analysis "gives rise to questions of fact" because it "incorporates both claim construction and additional analysis of [the '737] patent's specification." (Id. at 4) The Court disagrees. Both patent eligibility and claim construction are questions of law. See Rapid Litig. Mgmt. Ltd. v. Cellz Direct, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) ("The issue of patent-eligibility under § 101 is a question of law."); Markman v. West view Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) ("[T]he interpretation and construction of patent claims ... is a matter of law."), aff'd, 517 U.S. 370 (1996). Therefore, "it is . . . proper to determine patent eligibility under 35 U.S.C. § 101" on a Rule 12(c) motion. Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1373 (Fed. Cir. 2016). Moreover, it is proper for the Court to rely on its claim construction opinion in deciding a Rule 12(c) motion.

         IV next contends that the Court erred in declining to resolve conflicting expert testimony while deciding Defendants' Rule 12(c) motion. (See D.I. 752 at 8; see also Id. at 6-7 (discussing three key disputes between experts)) As IV sees it, both sides' expert testimony gives rise to "material factual disputes" that must be resolved before deciding whether claims 7 and 14 are patent-eligible. (Id. at 8; see also Id. at 7 (stating that IVs expert's opinion could potentially "contradict the Court's . . . conclusion that the claim elements . . . lack[] an inventive concept")) Again, the Court disagrees. "In deciding a Rule 12(c) motion, the court does not consider matters outside the pleadings." Mele v. Fed. Reserve Bank of N. Y., 359 F.3d 251, 257 (3d Cir. 2004); see also Content Aggregation Sols. LLC v. Blu Prods., Inc., 2016 WL 6995490, at *7 (S.D. Cal. Nov. 29, 2016) (stating that inventor declaration "is inappropriate to consider on a motion to dismiss"). Hence, the Court correctly disregarded IV's expert declarations in deciding Defendants' motion for judgment on the pleadings. (See D.I. 748 at 28 n.7) ("In ruling on Defendants' [Rule 12(c) motion], the Court has not relied on any of the extrinsic evidence presented by the parties, but only on the pleadings and patents, which were attached as exhibits to the complaint.")

         Lastly, IV insists that the Court erred in not "credit[ing] the [Patent and Trademark Office's ("PTO")] determination of non-obviousness." (D.I. 752 at 6) However, as Defendants explain, "even patents found to be novel and non-obvious . . . can still be [patent-]ineligible." (D.I. 764 at 4; see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1311 (Fed. Cir. 2016) (concluding that asserted claims were patent-ineligible under § 101 even though "[t]he jury found that Symantec had not proven by clear and convincing evidence that any asserted claims were invalid under §§102 and 103")) Thus, IVs reliance on the PTO's determination is unavailing.

         4. Conclusion with respect ...


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