Ask Sydney, LLC v. Microsoft Corporation, 6:23-cv-00113, No. 35 (W.D.Tex. Aug. 14, 2023) (2024)

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`Case 6:23-cv-00113-XR Document 35 Filed 08/14/23 Page 2 of 41
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`BACKGROUND
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`Plaintiff is the assignee of all rights, titles, and interests in U.S. Patent Nos. 9,323,786 and
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`10,474,705 which were issued on April 26, 2016 and November 12, 2019, respectively.5 ECF No.
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`108-1-1.6 Plaintiff alleges that Defendants directly infringed upon Claim 1 of the ’786 Patent and
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`’705 Patents.
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`I.
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`’786 Patent
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`A. Method & Description
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`The ’786 Patent is a computer-implemented method of analyzing tags associated with
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`images presented to users to “guide a user to a current interest.” ECF No. 108-1-1 at 14. When
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`“starting a session of the computer-implemented method or algorithm, images appear one at a
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`time.” Id. at 24. The computer-implemented method or algorithm selects the first image from a
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`pool of images and the image always reflects a physical object, such as a food dish. Id. 17–24.
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`Each image is associated with a plurality of tags that describe or characterize the physical object
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`represented in the image. Id. at 16.
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`Users interact with the image by entering a positive, negative, or neutral input by, for
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`example, clicking an “X” button for a negative response or a checkmark for a positive response.
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`Id. at 25. Based on the preference indicated, the method or algorithm processes the set of tags
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`5 The ’786 Patent is issued to applicant “Hungry-For-More Enterprises, LLC. See ECF No. 108-1-1. However, because
`Plaintiff claims it is “the exclusive owner by assignment of all rights, title, and interest in the ’786 Patent,” and none
`of the Defendants contest ownership of the ’786 Patent, the Court presumes that Plaintiff is the rightful owner of the
`’786 Patent.
`6 Defendants provided various documents produced during the ’786 and 705 Patents’ prosecution history, see ECF
`Nos. 108-2–8; 112-2–4; 113-2–5, although Amazon provided the most comprehensive set of documents, see ECF No.
`108-2–8. For ease of the reader, the Court will refer to the exhibits provided by Defendant Amazon when referencing
`the underlying prosecution history. ECF Nos. 108-11-2 (Notice of Non-Final Rejection, Prosecution History of U.S.
`Patent Application 14/827,205 (issued Dec. 1, 2015)); 108-11-3 (Applicant Response, Prosecution History of U.S.
`Patent Application 14/827,205 (submitted Jan. 25, 2016)); 108-11-5 (Notice of Allowance, Prosecution History of
`U.S. Patent Application 14/827,205 (issued March 2, 2016)); 108-11-6 (Notice of Non-Final Rejection, Prosecution
`History of U.S. Patent Application 16/162,024 (issued Jan. 11, 2019)); 108-11-6 (Applicant Response, Prosecution
`History of U.S. Patent Application 16/162,024 (filed April 9, 2019)); 108-11-8 (Notice of Allowance, Prosecution
`History of U.S. Patent Application 14/827,205 (issued July 12, 2019)).
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`2
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`Case 6:23-cv-00113-XR Document 35 Filed 08/14/23 Page 3 of 41
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`associated with the image to determine the next set of tags. Id. 21–22. Once the method or
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`algorithm identifies an image associated with the new tags, the image is presented to the user. Id.
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`This process is repeated until the user identifies their current interest. Id. at 22. Once the user finds
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`their current interest, they can select the image, and the method or algorithm provides information
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`on how to acquire the presented object. Id. at 16.
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`For example, upon initiating a session, the algorithm might display an image of a co*cktail.
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`See generally id. If the user inputs a negative reaction, the algorithm may then present an image
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`of an ice cream cone. Id. The process would repeat until the system presents a milkshake, the user’s
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`current interest. The user can click the image of a milkshake and the method would recommend
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`local restaurants serving milkshakes. Id.
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`B. Proceedings before the United States Patent and Trademark Office
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`On August 14, 2015, Plaintiff filed Patent Application Number 14/827/205. Id. at 2. Three
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`months later, on December 1, 2015, the United States Patent and Trademark Office issued a claim
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`rejection notice. ECF No. 108-11-2. As relevant here, the Examiner rejected Claim 1 on two bases:
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`(1) the claim was “directed to non-statutory subject matter,” specifically the abstract idea of
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`“analyzing information associated with a sequence of images to determine a user’s current
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`interest,” in violation of 35 U.S.C. § 101; and (2) the claim was “anticipated by Bennett, US
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`2008/0147611,” in violation of 35 U.S.C. § 102(a)(1). Id. at 6–10.
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`Plaintiff responded to the Examiner’s findings and significantly modified Claim 1. See
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`ECF No. 108-11-3. The amended version of Claim 1 is reproduced below:7
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`A computer-implemented method of analyzing tags associated with a sequence of
`images presented to a user in response to human machine inputs made by the user
`to present a current interest of the user, the method comprising:
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`7 Words that are struck through were deleted, and words that are underlined were added.
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`3
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`Receiving, via a user interface of from the electronic device, an input from by the
`user indicating a preference for the physical object represented by the one electronic
`image;
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`[. . . ]
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`presenting, via a display of an electronic device, causing a presentation of only the
`one electronic image from among a the [sic] plurality of electronic images on a
`display of the electronic device, the one image representing a physical object and
`being associated with one set of tags from a plurality of tags, each tag of the one
`set of tags describing or characterizing attributes of the physical object represented
`by the one image;
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`receiving, via a user interface of from the electronic device, an input from by the
`user by indicating a preference for the physical object represented by the one
`electronic image;
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`processing, by the one or more computer devices, the plurality of tags specific to
`the user based on the preference and the one set of tags to determine a next set of
`tags from the plurality of tags specific to the user, the processing including:
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`in response to the preference for the physical object represented by the one
`electronic image being negative and the one electronic image being a first
`electronic image presented to the user during a session of directing the user to
`the current interest, removing the tags of the one set of tags from the plurality
`of tags specific to the user that are processed to determine the next set of tags,
`for a remainder of the session of directing the user to the current interest;
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`in response to the preference for the physical object represented by the one
`electronic image being negative and the one electronic image being not the first
`electronic image presented to the user during the session of directing the user
`to the current interest, removing tags of the one set of tags that are new relative
`to an immediately previous set of tags from the plurality of tags specific to the
`user that are processed to determine the next set of tags, for the remainder of
`the session of directing the user to the current interest; and
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`in response to the preference for the physical object represented by the one
`electronic image being positive, determining at least one additional tag from the
`plurality of tags specific to the user to add to the one set of tags, generating the
`next set of tags, the determining the at least one additional tag comprising:
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`determining weightings of the tags within the plurality of tags specific to
`the user based, at least in part, on (i) a number of times each tag of the
`plurality of tags specific to the user appears with at least one of the one or
`more tags of the one set of tags for the plurality of electronic images, and
`(ii) a number of times each tag of the plurality of tags specific to the user is
`associated with a positive and/or a negative preference by the user; and
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`determining the at least one additional tag based on the at least one
`additional tag having a highest weighting among the plurality of tags
`specific to the user;
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`Id. at 3–4. Plaintiff disputed that the Claim was directed towards an ineligible topic and argued
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`that, as modified, Claim 1 was “directed to a non-abstract process that involves the active and
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`dynamic manipulation of a plurality of tags” which “provides an objective basis for the user to
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`arrive at a subjective interest.” Id. at 12. Furthermore, Plaintiff clarified that the processing
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`involved in Claim 1 was not merely “adding and removing tags from an image,” but manipulating
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`tags so that the method or algorithm “learns the preferences of the user for that particular session
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`. . . and translates the learned preferences to a current interest.” Id. This methodology involved
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`“weighting of tags” for “determining at least an additional tag to add to the one set of tags.” Id. at
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`13. As such, Plaintiff argued the Claim did “significantly more” than the abstract idea of
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`“processing tags.” Id. Finally, Plaintiff argued that Claim 1 differed from the Bennett patent
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`because Claim 1 relied on the presentation of a single image to users and disclosed a specific
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`methodology for weighting and removing tags. Id. at 15.8
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`The USPTO agreed with Plaintiff and allowed Claim 1 as modified. In approving the
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`Claim, the Examiner first found that the amended limitations “add[ed] significantly more to the
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`claim as a whole” for the “reasons noted” in Plaintiff’s remarks. ECF No. 108-11-5 at 9. In
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`particular, the Examiner found that “determining weightings and applying weightings as claimed
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`move the claim as a whole beyond the abstract idea by solving a technical problem rooted in
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`technology.” Id. The USPTO further stated that “[Plaintiff’s] arguments . . . with respect to [the]
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`8 ECF No. 108-11-3 at 15 (“Bennett does not disclose, ‘causing a presentation of only the one electronic image from
`among the plurality of electronic images on a display of the electronic device. Nor does Bennett disclose the specifics
`of the removing of tags from a plurality of tags specific to a user, or determining at least one additional tag from the
`plurality of tags specific to the user, in response to negative and positive preferences.”) (emphasis added)).
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`5
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`Case 6:23-cv-00113-XR Document 35 Filed 08/14/23 Page 6 of 41
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`102 . . . rejection[] have been fully considered and are persuasive” and withdrew its rejection of
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`Claim 1 with these modifications. Id. at 10.
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`Patent Application Number 14/827/205 was issued as Patent No. 9,323,786 (“the ’786
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`Patent”) on April 26, 2016. ECF No. 108-1-1.
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`II.
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`’705 Patent
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`A. Method, Description, and Proceedings before the United States Patent and
`Trademark Office
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`The ’705 Patent is a continuation of the ’786 Patent. Id. at 43. On October 16, 2018,
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`Plaintiff filed Patent Application 16/162,024, which would eventually become the ’705 Patent. See
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`id. at 34; ECF No. 108-11-6. As originally filed, Claim 25 read:9
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`Claim 25. A computer-implemented image search method filtered by multiple
`human-machine inputs on images presented to a user of the image search method,
`the method comprising the steps of:
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`determining a plurality of different digital images to present on the video display
`device to generate a sequence of digital images, each of the digital images being
`associated with a plurality of tags indicating one or more attributes of an image
`featured in the corresponding digital image;
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`receiving via a user input device one of at least two input options, the at least two
`input options including a favorable indication of a preference for the image
`featured in one of the digital images and an unfavorable indication of a
`disinclination for the image featured in the one of the digital images;
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`<in response to receiving the unfavorable indication for the image featured in
`the one of the digital images:
`analyzing at least some of the tags to determine a next set of lags associated
`with a subsequent digital image;
`adjusting weights of at least some of the tags based on an association relative
`to tags within the same category of tags to which the subsequent digital
`image belongs;
`transitioning the one of the digital images with the subsequent digital image
`on the video display device to replace the one of the digital images with the
`subsequent digital image on the video display device; and
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`9 Because Plaintiff struck Claims 1-24 during prosecution, Claim 25 became Claim 1, the operative Claim in this case.
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`6
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`Case 6:23-cv-00113-XR Document 35 Filed 08/14/23 Page 7 of 41
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`receiving via the user input device a further input corresponding to one of
`the at least two input options including a favorable indication for the
`subsequent digital image and an unfavorable indication for the subsequent
`digital image.>
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`ECF No. 108-11-6 at 8–10.
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`On January 11, 2019, the USPTO rejected Claim 25. See generally id. The Examiner
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`rejected Claim 25 on three bases, finding: (1) Claim 25 was unpatentable as a “nonstatutory double
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`patenting” of the ’786 Patent and U.S. Patent No. 9,779,160, id. at 4–6; (2) Claim 25 was directed
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`towards the “the abstract idea of generating and presenting an image to a user in order to determine
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`the user’s interest” in that it “create[d] a second list from a first list that are [sic] received at a
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`remote computer," id. at 10–11; and (3) Claim 25 was anticipated by a prior art, Bennett, US
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`2008/0147611, in violation of 25 U.S.C. § 102(a)(1), id. at 16.
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`In making this determination, the Examiner explicitly did not consider the portion of the
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`method beginning with “in response to receiving the unfavorable indication” through “for the
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`subsequent digital image.”10 Id. at 9 (35 U.S.C. § 101 analysis); id. at 20 (35 U.S.C. § 102(a)(1)
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`analysis).11 In doing so, the Examiner relied on the U.S. Patent Trial and Appeal Board decision
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`in Ex parte Schulhauster et al., which held that when a method claim is essentially two methods,
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`each triggered by a different condition precedent, the Examiner need not consider both methods if
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`one is invalid or preempted by a prior art.12
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`As applied, the Examiner implicitly found that Claim 25 encompassed two methods
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`because the requisite steps depended on “receiving via a user input device one of at least two input
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`10 See ECF No. 108-11-6 at 9, 20 (stating “Please note: The following steps are executed if the indication is
`unfavorable. Given this contingent path is mutually exclusive to the above examined claim step based on favorable
`indication, no weight is given to this contingent path for examination purposes, re: Precedential Decision, Ex parte
`SCHULHAUSER et al., Appeal 2013-007847- Application 12/184,020; https://www.uspto.gov/sites/default/files/
`documents/ Ex°/O20parte/O20Schulhauser°/O202016_04_28.pdf”).
`11 For ease of the reader, this portion of the claim is indicated by angled brackets.
`12 See Ex parte Schulhauser, 2013-007847 (Apr. 28, 2016),
`https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20Schulhauser%202016_04_28.pdf.
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`Case 6:23-cv-00113-XR Document 35 Filed 08/14/23 Page 8 of 41
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`options:” a favorable preference and an unfavorable preference. Id. at 9, 20. If a favorable
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`preference was received (the “favorable method”), then the steps triggered by an unfavorable
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`preference (the “unfavorable method”) would not be executed, and vice versa. Because the
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`Examiner found that the favorable method was directed towards an abstract idea and preempted
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`by a prior art, Claim 25 was rejected in its entirety without evaluating the unfavorable method. See
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`generally id.
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`Plaintiff responded to these findings on April 9, 2019. ECF No. 108-11-7. In its response,
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`Plaintiff canceled Claims 1-24 and modified Claim 25 as follows:13
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`A computer-implemented image search method filtered by multiple human-
`machine inputs on images presented to a user of the image search method, the
`method comprising the steps of:
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`determining a plurality of different digital images to present on the video
`display device to generate a sequence of digital images, each of the digital
`images being associated with a plurality of tags indicating one or more
`attributes of an image featured in the corresponding digital image;
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`receiving, via a user input device, an unfavorable indication of a disinclination
`for the image features in the one of the digital images, the unfavorable
`indication being one of at least two input options, the at least two input options
`including, among the unfavorable indication, a favorable indication of a
`preference for the image featured in one of the digital images and an
`unfavorable indication of a disinclination for the image featured in the one of
`the digital images;
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`in response to receiving the unfavorable indication of the image featured in the
`one of the digital images:
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`analyzing at least some of the tags to determine a next set of tags associated
`with a subsequent digital image;
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`adjusting weights of at least some of the tags based on an association relative
`to tags within the same category of tags to which the subsequent digital image
`belongs;
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`13 Words that are struck through were deleted, and words that are underlined were added.
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`8
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`Case 6:23-cv-00113-XR Document 35 Filed 08/14/23 Page 9 of 41
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`transitioning the one of the digital images with the subsequent digital image on
`the video display device to replace the one of the digital images with the
`subsequent digital image on the video display device; and
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`receiving via the user input device a further input corresponding to one of the
`at least two input options including a favorable indication for the subsequent
`digital image and an unfavorable indication for the subsequent digital image.
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`ECF No. 108-11-7 at 2–3.
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`Plaintiff first argued that the modified Claim 25 was patent eligible because it reflected an
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`improvement in computer functioning “by determining what the user’s implicit interests are
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`without the user cognitively knowing or being able to describe such interests.” Id. at 9–11. Then,
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`Plaintiff clarified that the changes “amended independent Claim 25 such that an unfavorable
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`indication must be received.” Id. at 10 (emphasis added). Plaintiff further distinguished Claim 25
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`from Bennett on the basis that Bennett did not “disclose the specific scheme of weighting and
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`adjusting as recited in independent claim 25.” Id. at 10.
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`On July 4, 2019, the Examiner agreed on both points, finding that the “adjusting weights
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`of tags . . . moves the claim as a whole beyond the abstract idea by solving a technical problem
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`rooted in technology” and that “Bennett alone or in combination with other cited prior art fails to
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`teach and suggest the methods as claimed.” ECF No. 108-11-8 at 3–5. Patent Application Number
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`16/162,024 was issued as Patent No. 10,474,705 (“the ’705 Patent”) on April 26, 2016. ECF No.
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`108-1-1 at 31.
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`III. Current Suits
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`On February 13, 2023, Plaintiff filed suit against Defendants Amazon, Meta, and
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`Microsoft. Plaintiff asserts all Defendants directly infringed upon Claim 1 of the ’786 and ’705
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`Patents. Generally, Plaintiff contends that the Defendants utilize “cookies” and other systems of
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`user engagement (for example, “like” or “dislike” buttons) as tags and input to determine user
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`preferences. See generally ECF Nos. 108-1-1; 112-1-1; 113-1-1. Plaintiff alleges Defendants
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`9
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`weigh or rank these tags and use the results to promote advertisem*nts based on the user’s
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`perceived interests. Id. Plaintiff argues that this method of collecting user preferences and
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`presenting advertising images based on those preferences infringes on Plaintiff’s patented
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`methods.
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`Defendants Amazon and Meta argue that the Patents are invalid under 35 U.S.C. § 101.
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`Furthermore, all Defendants argue that Plaintiff has failed to state a claim of patent infringement
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`by failing to plead sufficient facts regarding the Patents’ material limitations. See generally id.
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`Because the cases concern the same underlying patents, the Court considers these cases together.
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`LEGAL STANDARDS
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`I.
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`Patent Validity under 35 U.S.C. § 101
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`To be eligible for patent protection, a patent must comprise “any new and useful process,
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`machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35
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`U.S.C. § 101. However, “basic tools[s] of scientific and technological work,” such as those related
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`to laws of nature, natural phenomena, and abstract ideas, are not patentable. Ass’n for Molecular
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`Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013).
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`In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) and Alice
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`Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court laid out a two-part
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`framework to resolve patent eligibility disputes under § 101. First, courts must “determine whether
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`the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
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`If so, courts must then “consider the elements of each claim both individually and as an ordered
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`combination to determine whether the additional elements transform the nature of the claim into a
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`patent-eligible application.” Id. (internal quotations omitted). This second step is often described
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`as the search for an “inventive concept,” which ensures that the “patent in practice amounts to
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`significantly more than a patent upon the [ineligible concept] itself.” Mayo, 566 U.S. at 72–73.
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`Patentability under 35 U.S.C. § 101 is a threshold legal issue that may properly be resolved
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`at the motion to dismiss stage. Bilski v. Kappos, 561 U.S. 593, 602 (2010); Aatrix Software, Inc.
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`v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018).14 Although patent eligibility is a
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`question of law, “there can be subsidiary fact questions which must be resolved en route to the
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`ultimate legal determination.” Aatrix, 882 F.3d at 1128. For example, at step two of Alice/Mayo,
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`the Court must examine whether the claims contain an “inventive concept.” Claims constitute
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`inventive concepts when they “involve more than performance of well-understood, routine, [and]
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`conventional activities previously known to the industry,” Aatrix, 882 F.3d at 1128, which itself
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`is a question of fact. Thus, relying only on the materials appropriate at the motion to dismiss stage,
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`“when the complaint contains concrete allegations that individual elements and the claimed
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`combination are not well-understood, routine, or conventional activity, the asserted patent can
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`survive a Rule 12(b)(6) motion at Alice step two.” Mirror Imaging, LLC v. PNC Bank, N.A., No.
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`W-21-CV-00518-ADA, 2022 WL 229363, at *4 (W.D. Tex. Jan. 26, 2022).
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`Once issued, a patent is presumed valid. 35 U.S.C. § 282(a). Parties challenging patent
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`validity bear the burden of proving invalidity by clear and convincing evidence. Microsoft Corp.
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`v. I4I Ltd. P’ship, 564 U.S. 91, 95 (2011). Patent validity can be determined at the Rule 12(b)(6)
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`stage only when “there are no factual allegations that, taken as true, prevent resolving the eligibility
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`question as a matter of law.” Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121,
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`1125 (Fed. Cir. 2018). However, “plausible factual allegations may preclude dismissing a case
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`14 “While issues affecting both infringement and validity of the claims are before us, the Supreme Court has directed
`that we generally rule on validity issues even if we hold that the patents were not infringed.” Mendenhall v.
`Cedarapids, Inc., 5 F.3d 1557, 1562 (Fed. Cir. 1993) (citing Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83
`(1993)).
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`under § 101 where, for example, ‘nothing on the record . . . refutes those allegations as a matter of
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`law or justifies dismissal under Rule 12(b)(6).’” Id. (citing FairWarning IP, LLC v. Iatric Sys.,
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`Inc., 839 F.3d 1089, 1097 (Fed. Cir. 2016)).
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`II. Motion to Dismiss: Direct Infringement
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`Federal Rule of Civil Procedure 12(b)(6) allows a party to move for the dismissal of a
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`complaint for “failure to state a claim upon which relief can be granted.” To survive a motion to
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`dismiss, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to
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`relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl.
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`Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial plausibility when the plaintiff
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`pleads factual content that allows the court to draw the reasonable inference that the defendant is
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`liable for the misconduct alleged.” Iqbal, 556 U.S. at 678.
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`In considering a motion to dismiss under Rule 12(b)(6), all factual allegations from the
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`complaint should be taken as true, and the facts are to be construed in the light most favorable to
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`the nonmoving party. Fernandez-Montes v. Allied Pilots Assoc., 987 F.2d 278, 284 (5th Cir. 1993).
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`Still, a complaint must contain “more than labels and conclusions, and a formulaic recitation of
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`the elements of a cause of action will not do.” Twombly, 550 U.S. at 555. “‘[N]aked assertions’
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`devoid of ‘further factual enhancement,’” and “threadbare recitals of the elements of a cause of
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`action, supported by mere conclusory statements,” are not entitled to the presumption of truth.
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`Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 557); see also R2 Invs. LDC v. Phillips, 401
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`F.3d 638, 642 (5th Cir. 2005) (stating that the Court should neither “strain to find inferences
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`favorable to plaintiffs” nor accept “conclusory allegations, unwarranted deductions, or legal
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`conclusions.”).
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`Although “patentees need not prove their case at the pleading stage,” In re Bill of Lading
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`Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012), and “the
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`patentees’ pleading obligations are not insurmountable, a patentee may subject its claims to early
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`dismissal by pleading facts that are inconsistent with the requirements of its claims.” Bot M8 LLC
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`v. Sony Corp. of Am., 4 F.4th 1342, 1342 (Fed. Cir. 2021). Ultimately, the “level of detail required
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`in any given case will vary depending upon a number of factors, including the complexity of the
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`technology, the materiality of any given element to practicing the asserted claim(s), and the nature
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`of the allegedly infringing device.” Bot M8, 4 F.4th at 1353.
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`Finally, in determining whether a plaintiff’s claims survive a Rule 12(b)(6) motion to
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`dismiss, the Court may properly review: (1) the facts set forth in the complaint; (2) documents
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`attached to the complaint; and (3) matters of which judicial notice may be taken under Federal
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`Rule of Evidence 201. Walker v. Beaumont Indep. Sch. Dist., 938 F.3d 724, 735 (5th Cir. 2019).
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`“Courts may take judicial notice of government records, like prosecution history available on the
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`U.S. Patent & Trademark Office’s Public PAIR site, even when resolving a Rule 12(b)(6) motion.”
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`Vervain, LLC v. Micron Tech., Inc., 6:21-cv-487-ADA, 2022 WL 23469, at *5 n.2 (W.D. Tex. Jan.
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`3, 2022); Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017) (“In
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`ruling on a 12(b)(6) motion, a court need not accept as true allegations that contradict matters
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`properly subject to judicial notice or by exhibit, such as the claims and the patent specification.”)
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`(internal quotation omitted); FED. R. EVID. 201(c). Thus, the Court takes judicial notice of the
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`prosecution history of the ’786 and ’705 Patents.
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`13
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`Case 6:23-cv-00113-XR Document 35 Filed 08/14/23 Page 14 of 41
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`I.
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`Patent Validity, 35 U.S.C. § 101
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`DISCUSSION
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`A. Alice Step 1: The asserted claims of the ’786 and ’705 Patents are directed to an abstract
`idea.
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`Defendants Amazon and Meta15 argue that the ’786 and ’705 Patents are invalid because
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`they are directed towards the abstract ideas of “generating and presenting an image to a user in
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`order to determine the user’s interest” and “methods of organizing human activity.” ECF No. 108-
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`11 at 17 (citing Broadband iTV, Inc. v. Amazon.com, Inc., 6:20-cv-921-ADA, 2022 WL 4703425,
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`at *11 (W.D. Tex. Sept. 30, 2022) for the proposition that “the Federal Circuit has held patents
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`directed to collecting information about a user’s past behavior and providing content based on that
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`information to be abstract and ineligible under § 101”); see also ECF No. 112-11 at 14–18 (arguing
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`Patents fall into the categories of “methods of organizing human activity” and “generating and
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`presenting an image to a user in order to determine the user’s interest”); id. at 15 (“This is nothing
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`more than using a computer as a tool to do what humans have long done—make recommendations
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`by analyzing a user’s preferences.”).
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`The U.S. Patent and Trademark Office previously determined that, even as amended, both
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`Patents were directed towards abstract ideas. See ECF No. 108-11-5 at 5 (finding Claim 1 of ’786
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`Patent was “directed to determining a user’s current interest by analyzing images of physical
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`objects which is considered to be an abstract idea”); ECF No. 108-11-6 at 6 (“Claims 25-35 are
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`rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject
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`matter.”). The Court finds these arguments persuasive and finds that Claim 1 of the ’786 and ’705
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`Patents are directed towards an ineligible subject matter.
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`15 Defendant Microsoft does not contest the Patents’ validity. See ECF No. 112-10.
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`14
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`Case 6:23-cv-00113-XR Document 35 Filed 08/14/23 Page 15 of 41
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`B. Alice Step 2: The asserted claims of the ’786 and ’705 Patents recite an inventive
`concept or technological improvement.
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`Amazon and Meta argue that the Patents provide no inventive concept that render the
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`claims patent eligible.
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`In particular,