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Broadband iTV, Inc. v. Oceanic Time Warner Cable, LLC

United States District Court, D. Hawaii

September 29, 2015

Broadband iTV, Inc., Plaintiff,
Oceanic Time Warner Cable, LLC, and Time Warner Cable, Inc., Defendants

Page 1176

          For Broadband iTV, Inc., Plaintiff: Frederick A. Tecce, John D. Simmons, Keith A. Jones, LEAD ATTORNEYS, PRO HAC VICE, Panitch Schwarze Belisario & Nadel, Philadelphia, PA; John S. Rhee, Paul Alston, LEAD ATTORNEYS, Alston Hunt Floyd & Ing, Honolulu, HI.

         For Hawaiian Telcom, Inc., Defendant: Brandon H. Stroy, Sasha G. Rao, LEAD ATTORNEYS, PRO HAC VICE, Maynard Cooper & Gale LLP, San Francisco, CA; Randall Y. Yamamoto, LEAD ATTORNEY, Yamamoto Kim LLP, Honolulu, HI.

         For Oceanic Time Warner Cable, LLC, Defendant: Aaron Stiefel, David S. Benyacar, LEAD ATTORNEYS, PRO HAC VICE, Daniel L. Reisner, LEAD ATTORNEY, Kaye Scholer LLP, New York, NY; Brett R. Tobin, Lisa W. Munger, LEAD ATTORNEYS, Goodsill Anderson Quinn & Stifel LLLP, Honolulu, HI.

         For Time Warner Cable, Inc., Defendant: Aaron Stiefel, David S. Benyacar, LEAD ATTORNEYS, PRO HAC VICE, Kaye Scholer LLP, New York, NY; Daniel L. Reisner, Nathan Brown, LEAD ATTORNEYS, Kaye Scholer LLP, New York, NY; Brett R. Tobin, Lisa W. Munger, LEAD ATTORNEYS, Goodsill Anderson Quinn & Stifel LLLP, Honolulu, HI.

Page 1177


         Alan C. Kay, Senior United States District Judge.

         For the reasons set forth below, the Court GRANTS IN PART and DENIES IN PART Defendants Oceanic Time Warner Cable, LLC and Time Warner Cable, Inc.'s Motion for Summary Judgment regarding Invalidity of U.S. Patent No. 7,631,336, ECF No. 474.


         On December 8, 2009, the United States Patent and Trademark Office (" USPTO" ) issued Patent No. 7,631,336 (the " '336 Patent" ), entitled " Method for Converting, Navigating and Displaying Video Content Uploaded from the Internet to a Digital TV Video-on-Demand Platform." Am. Compl. ¶ 19, Ex. A, ECF Nos. 100, 100-1. The patent was issued in the name of Milton Diaz Perez (" Diaz Perez" )[1] and based on United States Patent Application No. 11/685,188 (the " '188 Application" ),

Page 1178

which was assigned to Broadband iTV, Inc. (" Plaintiff" ). Am. Compl. ¶ 18, ECF No. 100.

         The '336 Patent discloses and claims various features related to the delivery of video-on-demand (" VOD" )[2] content to a VOD server. Id. ¶ 21. According to the patent itself, the invention is intended to facilitate " the provision of video content to viewers through digital TV infrastructure." '336 Patent at Col. 1, ln. 17-18.[3] Specifically, it relates to a method for " converting, navigating and displaying video content uploaded from the Internet on a digital TV video-on-demand platform." Id. at Col. 1, ln. 19-21. The patent includes eleven claims, out of which Claim 1 is independent and Claims 2-10 are dependent. See id. at Col. 21-22.

         On April 9, 2014, Plaintiff filed a Complaint against Defendants Oceanic Time Warner Cable, LLC, Time Warner Cable, Inc., Time Warner Entertainment Company, LP[4] (collectively, " TWC" ), and Hawaiian Telcom, Inc. (" HTI" ) (collectively, " Defendants" ). Compl., ECF No. 1. The Complaint was amended on December 5, 2014. Am. Compl., ECF No. 100. The Amended Complaint accuses Defendants of infringing the '336 Patent by " making, using, offering for sale and selling the '336 patent's claimed method for converting, navigating and displaying video content in connection with their providing, selling and offering for sale digital television services." Id. ¶ 22. Defendants deny that they infringe the '336 Patent. Def. HTI's Answer and Affirmative Defenses to Plf. BBiTV's Am. Compl. ¶ 22, ECF No. 104; Def. TWC's Answer to Am. Compl. ¶ 22, ECF No. 106.

         Pursuant to the parties' stipulation, the Court ordered the severance of the cases against TWC and HTI on April 16, 2015. The severed cases were consolidated " for all pre-trial purposes, including claim construction." Stipulation and Order at 2, ECF No. 164. Following an off-the-record technology tutorial, held on June 3, 2015, and a Markman hearing, held on June 4, 2015, the Court issued its Claim Construction Order on June 24, 2015. ECF No. 290.

         Following correspondence from the parties, the Court issued a Minute Order on August 4, 2015 outlining the number of permissible summary judgment motions. ECF No. 432. In the interests of judicial economy and pursuant to Federal Rules of Civil Procedure 1 and 16, the Court permitted each party to file one summary judgment motion regarding patent validity. In addition, each Defendant was permitted to file one summary judgment motion regarding patent infringement, and Plaintiff was permitted to file one summary judgment motion regarding patent infringement with respect to each Defendant. Id. at 2.

         The instant motion relates to the validity of the '336 Patent. On August 10, 2015, TWC filed its Motion for Summary Judgment Regarding Invalidity of U.S. Patent No. 7,631,336, ECF No. 474 (" TWC's MSJ" ), and a Concise Statement of Facts attached thereto, ECF No. 475 (" TWC's CSF" ). TWC's motion challenges first that the '336 Patent is invalid as related to

Page 1179

ineligible subject matter under 35 U.S.C. § 101, and second, that the '336 Patent is invalid as " anticipated" or " obvious" over prior art, pursuant to 35 U.S.C. § § 102, 103.[5]

         On August 27, 2015, Plaintiff filed its Memorandum in Opposition to TWC's MSJ, ECF No. 561 (" Plf.'s Opp. to TWC's MSJ" ), and a Concise Statement of Facts attached thereto, ECF No. 562 (" Plf.'s CSF -- TWC's MSJ" ).[6]

         On September 4, 2015, TWC filed its Reply Memorandum in Further Support of its MSJ, ECF No. 620 (" TWC's Reply" ), and a Reply Concise Statement of Facts attached thereto, ECF No. 621 (" TWC's Reply CSF" ). Hearings were held on TWC's MSJ and HTI's MSJ on September 17, 2015.[7]


         I. Summary Judgment Standard

          A party is entitled to summary judgment on any claim or defense if it can be shown " that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.'" Maxwell v. Cnty. of San Diego, 697 F.3d 941, 947 (9th Cir. 2012) (quoting Fed.R.Civ.P. 56(a)). A party asserting that a fact cannot be or is genuinely disputed must support the assertion by either " citing to particular parts of materials in the record" or " 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).

Page 1180

          A genuine issue of material fact exists if " a reasonable jury could return a verdict for the nonmoving party." United States v. Arango, 670 F.3d 988, 992 (9th Cir. 2012) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). Conversely, " [w]here the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial." Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007).

          The movant has the burden of persuading the court as to the absence of a genuine issue of material fact. Avalos v. Baca, 596 F.3d 583, 587 (9th Cir. 2010). If the movant satisfies its burden, the nonmovant must present evidence of a " genuine issue for trial," Fed.R.Civ.P. 56(e), that is " significantly probative or more than merely colorable," [8] LVRC Holdings LLC v. Brekka, 581 F.3d 1127, 1137 (9th Cir. 2009) (citation omitted). When evaluating a motion for summary judgment, the court must " view the facts and draw reasonable inferences in the light most favorable to the party opposing the summary judgment motion." Scott, 550 U.S. at 378.

         II. Standards Related to Patent Eligibility Under 35 U.S.C. § 101

          Issues of patent-eligible subject matter under 35 U.S.C. § 101 (" Section 101" ) are questions of law. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011). To the extent that the Court must resolve underlying questions of fact related to eligibility, they must be proven by clear and convincing evidence. See, e.g., Affinity Labs. of Texas, LLC v. DirecTV, LLC, 109 F.Supp.3d 916, 2015 WL 3764356 * 16 (W.D. Tex. July 7, 2015); Kickstarter, Inc. v. Fan Funded, LLC, No. 11 Civ. 6909 (KPF), 2015 WL 3947178 * 5 n. 7 (S.D.N.Y. June 29, 2015). Defendants, as the moving parties, bear the burden of establishing that the claims are patent-ineligible under Section 101. See, e.g., Modern Telecom Sys. LLC v. Juno Online Servs., Inc., No. SA CV 14-0348-DOC (ANx), 2015 WL 1240182 * 7 (C.D. Cal. Mar. 17, 2015).

          Courts disagree regarding whether a presumption of eligibility should apply in Section 101 cases. A recent Federal Circuit concurrence stated that " no presumption of eligibility attends the section 101 inquiry." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 717 (Fed. Cir. 2014) (Mayer, J., concurring). District courts have taken different approaches. Compare, e.g., Tranxition, Inc. v. Lenovo (U.S.) Inc., No. 3:12-cv-01065-HZ, 2015 WL 4203469 * 4 (D. Or. July 9, 2015) (declining to apply presumption of eligibility in Section 101 challenge) with Exergen Corp. v. Brooklands Inc., Civil Action No. 12-12243-DPW, 125 F.Supp.3d 307, 2015 WL 5096464 * 2 (D. Mass. Aug. 28, 2015) (applying presumption of eligibility in Section 101 challenge but noting that it " has less significance in the context of a largely legal determination" ). Given the most recent available guidance from the Federal Circuit, the Court will assume that such a presumption does not apply.[9]


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         III. Standards Related to Patent Anticipation and Obviousness Under 35 U.S.C. § § 102, 103

          Determinations of " anticipation" and " obviousness" under 35 U.S.C. § § 102, 103 (" Section 102," " Section 103" ) are reviewed differently from subject matter eligibility determinations under Section 101. In Section 102 and Section 103 challenges, a patent is entitled to " a presumption of validity, and the burden of proof falls upon the party seeking to establish the invalidity of a patent claim." See, e.g., Nystrom v. Trex Co., 374 F.3d 1105, 1117 (Fed. Cir. 2004) (quotation omitted). However, where (as here) the prior art references offered by a defendant were not disclosed to the USPTO during the patent's prosecution, " the rationale underlying the presumption -- that the PTO, in its expertise, has approved the claim" -- is " much diminished." KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007).[10]

          A patent is " anticipated" under Section 102 where " every limitation is found either expressly or inherently in a single prior art reference." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010); see also, e.g., Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Anticipation is a question of fact, Schering, 339 F.3d at 1377, which must be proven by clear and convincing evidence, see, e.g., Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1259-61 (Fed. Cir. 2012) (citing Microsoft, 131 S.Ct. at 2250).

         In addition to the prior art references themselves, any expert testimony concerning anticipation " must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference." Schumer v. Lab. Comp. Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002).

          A patent is " obvious" under Section 103, meanwhile, where " the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art [" PHOSITA" ]." 35 U.S.C. § 103 (emphasis added).[11] Determinations of obviousness under Section 103 are questions of law, based on underlying " factual determinations" regarding the " scope and content of the prior art, differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and any objective indicia of non-obviousness." Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citations omitted).

Page 1182

          As with anticipation, TWC has the burden of proving invalidity by clear and convincing evidence. See Quad Envt'l Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 872 (Fed. Cir. 1991). All factual inferences must be drawn in favor of Plaintiff. When material facts are disputed, such that further " testimonial, documentary, and expert evidence [is] needed for resolution," summary adjudication is improper. Id.


         TWC's MSJ argues first that the '336 Patent is invalid as directed to unpatentable subject matter, and second, that the claims of the '336 Patent are invalid as anticipated or obvious over prior art. The Court analyzes these challenges sequentially below and finds (1) that the '336 Patent is invalid as directed to unpatentable subject matter under 35 U.S.C. § 101, and (2) Plaintiff has raised sufficient issues of material fact to preclude summary judgment that the '336 Patent is invalid as anticipated or obvious over prior art.

         I. The '336 Patent Is Invalid as Directed to Unpatentable Subject Matter Under 35 U.S.C. § 101

         TWC argues in the instant motion that the '336 Patent is invalid as directed to unpatentable subject matter under 35 U.S.C. § 101. For the reasons set forth below, the Court agrees. Accordingly, the '336 Patent is invalid and may not be enforced against TWC in this case.

          Under 35 U.S.C. § 101, an invention is eligible for patenting if it fits into one of four subject-matter categories: processes, machines, manufactures, and compositions. The Supreme Court has recognized three implicit exclusions from eligible subject matter: " laws of nature, natural phenomena, and abstract ideas." Alice, 134 S.Ct. at 2354 (citation omitted). The latter exclusion, " abstract ideas," is relevant here.

          To determine whether an invention impermissibly claims a law of nature, natural phenomenon, or abstract idea, courts undertake a two-step test. First, they must determine " whether the claims at issue are directed to one of those patent-ineligible concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1296-97, 182 L.Ed.2d 321 (2012)).[12]

         If so, courts next " consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (citation omitted). This second step was described in Alice as a " search for an 'inventive concept' -- i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.'" Id. (quoting Mayo, 132 S.Ct. at 1294, 1298).

          The Supreme Court explained that the second step of the Alice test is designed to ensure that a patent reflects " more than a drafting effort designed to monopolize the abstract idea." Id. at 2347 (citation and alteration omitted). Recognizing that all inventions depend, at some level, on abstract concepts, courts are nonetheless to invalidate patents that would " t[ie] up the future use of these building blocks of human ingenuity." The Supreme Court has cautioned that doing otherwise would threaten the " pre-emption" of further innovation through the operation of patent

Page 1183

monopolies on abstract ideas. Id. at 2354-55 (quotation omitted).[13]

         In the wake of Alice, the Federal Circuit has observed that " any given analysis in a § 101 'abstract idea' case is hardly a clear guidepost for future cases arising under § 101 -- each case stands on its own." Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1336 (Fed. Cir. 2015). Nonetheless, certain general principles are clear. For example, mathematical algorithms, even when executed on computers, are unpatentable abstract ideas. See Gottschalk v. Benson, 409 U.S. 63, 64, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). Certain fundamental economic and business practices are also unpatentable abstract ideas, even when computers are used to implement them. See Bilski v. Kappos, 561 U.S. 593, 611, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) (risk-hedging strategy reduced to mathematical formula was not patent eligible); Alice, 134 S.Ct. at 2356 (same for " computer-implemented scheme" for exchanging financial obligations to mitigate risk).

          In general, even if claims " recite[] various computer hardware elements," they are ineligible for patenting if they are directed simply to the " performance of an abstract business practice on the Internet or using a conventional computer." DDR Holdings, LLC v., LP, 773 F.3d 1245, 1256 (Fed. Cir. 2014). This is because " [t]he improved speed or efficiency inherent with applying an abstract idea on a computer does not provide an inventive concept." Personalized Media Commc'ns, 2015 WL 4730906 at * 9 (citation omitted). Conversely, a patent directed to an " inventive concept for resolving [a] particular Internet-centric problem" may not be unpatentable. See DDR Holdings, 773 F.3d at 1259.

         a. The '336 Patent Claims an Abstract Idea

         The Court begins by considering Step 1 of the Alice analysis: identifying " the concept" of the '336 Patent and whether it claims an abstract idea. See, e.g., Ultramercial, 772 F.3d at 715 (" Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content." ); Alice, 134 S.Ct. at 2355. For the reasons discussed below, the Court finds that the '336 Patent claims an abstract idea.

         As a preliminary matter, the Court summarizes the claims of the '336 Patent (of which Claims 1-4 and 7 are asserted against TWC and HTI). Claim 1 is the only independent claim in the patent. In summary, Claim 1 discloses:

1. A method for " automatically enabling the converting, navigating and displaying" of videos from a publisher on an " open online network" to a TV service provider for inclusion in its electronic program guide (" EPG" ), by:
a. Enabling the online uploading of videos to a Web-based content management server (" WBCMS" )

Page 1184

connected to a TV service provider's " VOD platform," [14] along with metadata specifying certain hierarchical category information related to the videos;
b. Converting the uploaded videos into standard TV digital format and storing " local instances" of the videos at video ID (" VID" ) addresses in the service provider's VOD platform;
c. Listing the titles of the videos in the service provider's EPG using the same hierarchical category information that was uploaded as metadata;
d. Giving TV subscribers access to the service provider's EPG to choose from among the " hierarchically-arranged titles of video content; "
e. Enabling a chosen video to be retrieved and sent to a subscriber's set-top box (" STB" ) after the subscriber sends his video request to the VOD platform using his remote control.

See '336 Patent at Col. 21, ln. 15-Col. 22, ln. 7.

         Claims 2-4 and 7 are much shorter: Claims 2 and 3 disclose uploading videos from a user's computer and using a uniform resource locator (" URL" ), Claim 4 discloses using metadata expressed as a " string of category and subcategory terms and the title delimited by standard delimiters," and Claim 7 discloses using an EPG in which users can store " bookmarks" for TV programs. See id. at Col. 22, ln. 8-24, 37-41.[15]

         Following Alice, the Federal Circuit has examined Section 101 challenges to several patents that, like the '336 Patent, use computer and Internet technology to transmit and store various media. Although each Section 101 case " stands on its own," Versata Dev. Grp., 793 F.3d at 1336, a review of similar cases is instructive. For example, the Federal Circuit recently explained that " using categories to organize, store, and transmit information is well-established . . . the idea of collecting information in classified form, then separating and transmitting that information according to its classification, is an abstract idea that is not patent-eligible." Cyberfone Sys., LLC v. CNN Interactive Grp., 558 Fed.Appx. 988, 991-92 (Fed. Cir. 2014).

         Additionally, the broad concept of using organizational and product group hierarchies to determine prices for products and customers is an abstract idea, even where it is implemented using computers. Versata, 793 F.3d at 1333-34 (noting that patents directed to " collecting, recognizing, and storing data" claim abstract ideas). Similarly, a patent directed to collecting data from documents, recognizing information within that data, and storing it in memory claims an abstract idea, despite the use of scanning and processing technology. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1349 (Fed. Cir. 2014).

         District court decisions in this area are also persuasive. For example, a patent directed to the " idea of compiling, organizing, and transmitting information, using identification codes as shorthand for that information" was found to be directed to an abstract idea. OpenTV, Inc. v. Apple, Inc., 2015 WL 1535328 * 3 (N.D. Cal. Apr. 6, 2015). So too was a patent found to claim an abstract idea where it was directed to

Page 1185

" converting and forwarding messages, so that the messages are sent in a format and layout in which they can be received by a recipient." TriPlay, Inc. v. WhatsApp Inc., 2015 WL 1927696 * 13 (D. Del. Apr. 28, 2015). Additionally, patents premised on using combinations of categorical information to organize videos and creating user " bookmarks" saved through a " media-on-demand server" were found to claim abstract ideas. Netflix, Inc. v. Rovi Corp., Case No. 11-cv-6591 PJH, 114 F.Supp.3d 927, 2015 WL 4345069 * 9, 18 (N.D. Cal. July 15, 2015).

         TWC urges that the claims, " using generic computer elements," implement " the idea of using the same hierarchical ordering based on metadata to facilitate the display and locating of video content." Mem. in Support of TWC's MSJ at 9, ECF No. 474-1.

         Plaintiff's brief offers no suggestion of what the patent does claim, if not an abstract idea.[16] Plaintiff briefly complains that Defendants' descriptions of the patent claims are " oversimplifications," but it does not delineate what, if anything, Defendants leave out. See Plf.'s Opp. to TWC's MSJ at 5-6, ECF No. 561. Instead, most of Plaintiff's briefing simply concerns the second step of the Alice test, arguing that the Court need not decide whether the patent is directed to an abstract idea (under Alice step one) if Defendants fail to meet their burden to show a lack of " inventive concept" (under Alice step two). See id. at 6.

         Notwithstanding Plaintiff's limited response, the Court undertakes to evaluate whether the '336 Patent appears to claim an abstract idea. The Court previously identified the following as the " novel" underlying idea of the invention: " creating a method for uploading videos via Internet with accompanying metadata, which allows the videos to be automatically listed in a cable company's EPG for viewer selection." Claim Constr. Order at 32-33, ECF No. 290. This is essentially the abstract idea identified by TWC: " using the same hierarchical ordering based on metadata to facilitate the display and locating of video content."

         The same understanding of the patent's basic concept is consistent with the Patent Trial and Appeal Board (" PTAB" ) Decision Denying Covered Business Method Review of the '336 Patent, which noted:

[T]he problem in the prior art described and addressed by the '336 patent is the alleged lack of 'capability for Internet uploading and automatic listing in any VOD EPG' . . . [t]he problem is addressed through 'listing the title of the video content in the [EPG] using the same categories as those specified in the metadata uploaded along with the video content.

Decision Denying Covered Business Method Patent Review * 12 CBM 2014-00189 (Apr. 1, 2015) (alterations omitted and emphasis added) (citing '336 Patent at Col. 3, ln. 62-64 and Preliminary Response at 16).[17]

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          The PTAB concluded that the '336 Patent is a " covered business method patent" and not a " technological invention," as it is directed toward " primarily a content organization problem, not a technical problem." The PTAB was thus " not persuaded that [it] is a technical solution to a technical problem." Id. [18]

         The Court finds that the '336 Patent, consistent with the foregoing descriptions, claims an abstract idea. As TWC argues, the patent claims the concept of " using the same hierarchical ordering based on metadata to facilitate the display and locating of video content." To do so, the patent exploits matches between hierarchical identifiers -- uploaded at one end of the process as metadata, and read at the other end to display listed videos -- in order to facilitate the automatic EPG listing of videos sent to cable companies by outside publishers. This essentially translates hierarchical ordering information that allows videos to be efficiently uploaded, stored, and displayed.

         OpenTV is on point as persuasive authority. There, the court found that a patent claimed an " abstract idea of compiling, organizing, and transmitting information, using identification codes as shorthand for that information." 2015 WL 1535328 at * 3. One could apply almost an identical description to the aforesaid abstract idea behind the '336 Patent. Also similar is In re TLI Commc'ns LLC Patent Litig., MDL No. 1:14md2534, 87 F.Supp.3d 773, 2015 WL 627858 (E.D. Va. Feb. 6, 2015), wherein a patent for " recording, communicating and administering digital images" through a server claimed simply an " abstract idea of taking, organizing, classifying, and storing photographs."

         The OpenTV court noted that the problem of " how to transmit, receive, store, and organize [] information deriving from multiple sources is not a creature of the Internet age: solutions to this problem date back to the invention of smoke signals." Id. at * 4; see also, e.g., Content Extraction, 776 F.3d at 1347 (" The concept of data collection, recognition, and storage is undisputedly well-known." ); Cyberfone Sys., 558 Fed.Appx. at 992 (the " well-known concept" of " using categories to organize, store, and transmit information" is not patent-eligible); Market Track, LLC v. Efficient Collaborative Retail Marketing, LLC, No. 14 C 4957, 2015 WL 3637740 * 5 (N.D.Ill. June 12, 2015) (patent was directed toward abstract idea of " identifying, organizing, and presenting stored information," notwithstanding " degree of particularity" conferred by requirements for database queries, stand-alone file outputs with associated information, and file deliveries). The same principles favor a finding that the '336 Patent claims an abstract idea here.

          Courts have also considered in the " abstract idea" analysis (even prior to Alice) whether the steps of a patent " can be performed in the human mind, or by a human using a pen and paper." CyberSource, 654 F.3d at 1372. Such a finding supports the conclusion that a patent claims " the types of methods that embody 'the basic tools of scientific and technological work' that are free to all men and reserved exclusively to none,' and therefore comprise a non-patent-eligible abstract idea." Id.

         As in OpenTV, the Court finds that this inquiry further supports a finding that the '336 Patent claims an abstract idea. Even though the '336 Patent anticipates that its steps will be performed through computer operation, it describes a process that a person could perform " [u]sing a pen, paper,

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and her own brain." OpenTV, 2015 WL 1535328 * 4; see also, e.g., Tranxition, 2015 WL 4203469 * 13 (finding that a human could perform steps of a patented method to transfer computer settings by locating the settings she wanted on the first computer, " extracting" those settings, locating where similar settings are stored on a new computer, and applying the new settings).

         It is possible, for example, that a person could write down a list of categorical identifiers for a video and send the video on tape, along with the list, to a cable company, whose employees could then manually upload the video to the company's VOD platforms and use the same list of categorical identifiers to designate where the video will be displayed in subscribers' EPGs. This was, in essence, the former state of affairs that the parties described to the Court at its Technology Tutorial of June 3, 2015. See also Transcript of Proceedings of June 4, 2015 (" Tr." ) at 13:9-15:17, 22:6-15, ECF No. 258.[19]

         For all of the foregoing reasons, the Court finds that the '336 Patent claims an abstract idea.

         b. The '336 Patent Lacks a Sufficient " Inventive Concept" to Be Patent-Eligible

         Having concluded that the '336 Patent claims an abstract idea, the Court considers whether it nonetheless adds a sufficient " inventive concept" to qualify as eligible subject matter under step two of the Alice test. 134 S.Ct. at 2355. The elements of the claims, either individually or in combination, must " ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself." If not, the patent must be invalidated. Id. (quotations omitted).

          " Conventional or obvious" implementing activity does not " transform an unpatentable principle into a patentable process." Bilski, 561 U.S. at 610; see also, e.g., OpenTV, 2015 WL 1535328 at * 6 (where an invention " does not go beyond the 'routine or conventional use' of existing electronic components . . . [t]he fact that a company may be the first to successfully apply an abstract idea within a new technological context does not transform the abstract idea into something tangible and patentable" ) (citation omitted).[20] It also is not enough for a patent to

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recite the use of computer hardware or software that would " limit the use of [the idea] to a particular technological environment," such as VOD. Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) (citations omitted). " 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." Alice, 134 S.Ct. at 2358 (alterations and citations omitted).

         Instead, to contain an inventive concept, computer system technology must do more than perform " well-understood, routine, and conventional activities previously known to the industry." Id. at 2359 (alteration omitted); see also Content Extraction, 776 F.3d at 1348. District courts examining inventions implemented through the use of computers and Internet technology, post-Alice, have found it useful to compare the Federal Circuit decisions of Ultramercial and DDR Holdings in this regard. See, e.g., Netflix, 2015 WL 4345069 at * 5. The Court does the same here.

         In the first case, Ultramercial, the Federal Circuit found invalid under Section 101 a patent for a method that allowed a user to view copyrighted media (such as a television show) online, free of charge, in exchange for viewing an advertisement online. 772 F.3d 709. As here, the patent purported to recite a detailed series of steps: (1) receiving the copyrighted media from a content provider, (2) selecting an ad, (3) offering the media on the Internet, (4) restricting public access to the media, (5) offering the media to the customer in exchange for watching the selected ad, (6) receiving a request to view the ad from a user, (7) facilitating display of the ad, (8) allowing the consumer to access the media, (9) allowing the consumer access to the media if the ad is interactive, (10) updating the activity log, and (11) receiving payment from the ad sponsor. Id. at 714-15.

         The Federal Circuit first concluded that the patent was drawn to the abstract idea of " showing an advertisement before delivering free content." Id. at 715. Second, in its search for an " inventive concept," the court concluded that some of the patent's steps were " not previously employed in this art." Nonetheless, they were " conventional steps, specified at a high level of generality, which is ...

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