United States District Court, D. Delaware
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.
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.
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
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.
U.S. District Judge
before the Court are:
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) 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
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
reasons set forth below, the Court will deny the IV Motion
and will grant in part and deny in part Defendants'
Summary Judgment Motion.
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"),
'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"). (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)
'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
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)
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."))
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).
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.
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).
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.
Patent-Eligible Subject Matter
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).
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).
Mayo Step 1
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.").
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.
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.
Mayo Step 2
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).
"[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
"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).
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
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."
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."
IV's Motion for Partial Reconsideration
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
Intervening Change in Controlling Law
first seeks reconsideration based on a purported intervening
change in Federal Circuit case law. 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
(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.
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)
Availability of New Evidence
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.
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. 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
Clear Error of Law or Fact
IV contends that reconsideration is warranted based on the
Court's clear errors of law or fact.
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.
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.")
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.
Conclusion with respect ...