Opinion

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

B.E. TECHNOLOGY, L.L.C.,

Plaintiff,

Civil Action No. 20-622-GBW

Vv.

GOOGLE LLC,

Defendant.

Stephen B. Brauerman, Ronald P. Golden IJ, BAYARD, P.A., Wilmington, Delaware; Paul J.

Skiermont, Jaime K. Olin, Kevin P. Potere, Alexander E. Gasser, Todd A. Martin, SKIERMONT

DERBY LLP, Dallas, Texas; Mieke K. Malmberg, SKIERMONT DERBY LLP, Los Angeles,

California.

Counsel for Plaintiff

Brian P. Egan, Cameron P. Clark, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington,

Delaware; Robert A. Van Nest, Eugene M. Paige, Ryan K. Wong, David J. Rosen, Ryan M. Kent,

Kristin Hucek, Vishesh Narayen, Taylor Reeves, Michael K. Deamer, KEKER, VAN NEST &

PETERS LLP, San Francisco, California; Matthias A. Kamber, Robert Laurenzi, Kelsey

McQuilkin, PAUL HASTINGS, LLP, San Francisco, California; Andrea Pallios Roberts, Joshua

Yin, PAUL HASTINGS, LLP, Palo Alto, California.

Counsel for Defendant

MEMORANDUM OPINION

April 16, 2026

Wilmington, Delaware

AE va

a *

GREGORY B. WILLIAMS

UNITED STATES DISTRICT JUDGE

Plaintiff B.E. Technology, L.L.C. (“B.E.” or “Plaintiff’) initially brought this patent

infringement action asserting infringement by Defendant Google LLC (“Google” or “Defendant’’)

of three patents: United States Patent Nos. 8,549,410 (the “410 Patent”), 8,549,411 (the □□□□

Patent”), and 8,769,440 (the “’440 Patent”). The only claim currently asserted is Claim 25 of the

°440 Patent (the “Asserted Claim”).

Now pending before the Court are the following motions:

(1) Plaintiff's Motion for Summary Judgment of No Invalidity Pursuant to “Step One”

of 35 U.S.C. § 101 (“Plaintiffs First Motion for Summary Judgment”) (D.I. 259),

which has been fully briefed (D.I. 261; D.I. 288; D.I. 315);

(2) Plaintiff's Motion for Summary Judgment of No Invalidity in View of the Infoseek

System (“Plaintiff's Second Motion for Summary Judgment”) (D.I. 263), which

has been fully briefed (D.I. 264; D.I. 291; D.L. 317);

(3) Defendant’s Motion for Summary Judgment Based on Patent Ineligibility Under 35

U.S.C. § 101 (“Defendant’s First Motion for Summary Judgment”) (D.I. 246),

which has been fully briefed (D.I. 247; D.I. 293; D.I. 312);

(4) Defendant’s Motion for Summary Judgment No. 2: Non-Infringement Based on

Prosecution Disclaimer (“Defendant’s Second Motion for Summary Judgment”)

(D.1. 250), which has been fully briefed (D.I. 251; D.I. 297; D.I. 314); and

(5) Defendant’s Motion for Leave to File a Sur-Reply in Support of its Opposition to

Plaintiff's First Motion for Summary Judgment (“Defendant’s Motion for Leave’)

(D.I. 330), which has been fully briefed (D.I. 330; D.I. 334; D.I. 335).

For the reasons set forth below, the Court DENIES Plaintiffs First and Second Motions

for Summary Judgment (D.I. 259; D.I. 263) and GRANTS Defendant’s First Motion for Summary

Judgment (D.I. 246). Defendant’s Second Motion for Summary Judgment (D.I. 250) and Motion

for Leave (D.I. 330) are DENIED-AS-MOOT.

I. BACKGROUND

A. The °440 Patent

The °440 Patent is titled “Method of Reactive Targeted Advertising.” The ’440 Patent is

generally directed to “a method of reactive targeted advertising [that] provides for display of

advertising, via the internet, to computers of users.” °440 Patent at Abstract. The Asserted Claim,

Claim 25, depends from Claim 1. The relevant claim language is as follows:

1. A method comprising:

permitting a computer user to access one or more servers via a

network;

transferring a copy of software to a computer associated with the

computer user, the software being configured to run on the computer

to display advertising content and record computer usage

information associated with utilization of the computer, wherein the

computer usage information includes data regarding one or more

programs run on the computer;

determining a unique identifier associated with the computer,

wherein the identifier uniquely identifies information sent from the

computer to the one or more servers;

selecting an advertisement to be displayed on the computer, the

selection based at least on information associated with the unique

identifier identifying the computer;

receiving a request for an advertisement from the computer; and

providing the selected advertisement for display on the computer in

response to the request.

25. The method of claim 1, further comprising the step of providing

reactive targeting of advertising to the user in real time by selecting

and presenting an advertisement.

Patent at Claims 1, 25. The Court has construed the following terms of the ’440 Patent:

os) She Court’s Constraction

“an apparatus having a processing device that is capable of

executing instructions, including devices such as personal

Claim 1, computer computers, laptop computers, and personal digital assistants,

Claim 25 P as well as set top television boxes, televisions, radios,

portable telephones, and other such devices having a

processing capability”

“data concerning a person’s use of a computer, including such

Claim 1 Computer usage | things as what programs they run, what information resources

information | they access, what time of day or days of the week they use the

computer, and so forth”

“a system having at least two computers in communicable

. connection, including intranets, personal networks, virtual

Claim 1 Network private networks, and global public networks such as the

Internet”

. “a computer on a network that stores information and that

Claim 1 Server . gs

answers requests for information

Claim 25 Real time Not indefinite; plain and ordinary meaning which is at the

time of user interaction or immediately following:

D.I. 104 at 2; D.I. 103 (accompanying Memorandum Opinion). During claim construction, only

the “real time” term was disputed. D.I. 103 at 3-4. Neither party has requested further claim

construction by the Court prior to the Court’s resolution of the pending motions.

B. Procedural History

On May 7, 2020, Plaintiff filed its Original Complaint in this action, alleging infringement

of the ’410 Patent, the ’411 Patent, and the °440 Patent. D.I. 1. Plaintiff's Original Complaint □

alleged that the claims of all three patents were “expressly directed to providing real-time targeted

advertising based on keywords contained on web pages visited by a user.” D.I. 1 924. Defendant

moved to dismiss Plaintiff's Original Complaint on the basis that the asserted claims of the □□□□

Patent, the °411 Patent, and the °440 Patent claimed ineligible subject matter under 35 U.S.C.

§ 101. D.I. 8; D.I. 9. Plaintiff did not dispute, “[f]or purposes of th{at] motion,” that Claim 1 of

the ’410 Patent was representative of all claims asserted. D.I. 20 at 1.

On December 4, 2020, Judge Leonard Stark! heard oral argument on Defendant’s motion

to dismiss. D.I. 24 (transcript of oral argument). Defendant’s motion to dismiss briefing was

joined by Twitter, Inc., a defendant in a related case involving the same patents, B.E. Technology,

LLC. v. Twitter, Inc., Civil Action No. 20-621-GBW (D. Del.). Judge Stark held that the

representative claim, Claim 1 of the °410 Patent, was directed to an abstract idea at Alice Step One.

D.I. 26 at 1; see also id. at 11 (“I further agree that this articulation of what the claims are directed

to is an abstract idea. That is, providing real-time targeted advertising based on keywords on

webpages visited by a user is an abstract idea.” (cleaned up)). Judge Stark permitted Plaintiff to

file a motion for leave to amend its Original Complaint to add allegations describing inventiveness

under Alice Step Two. Id. at 16.

On January 4, 2021, Plaintiff filed a motion for leave to amend its pleading in both related

actions. D.J. 28; see also Twitter, Inc., Civil Action No. 20-621-GBW (D. Del. Jan. 4, 2021) (D.I.

28). After hearing oral argument from the parties on Plaintiff's motions for leave to amend, Judge

' The Honorable Leonard Stark has since been elevated and is serving as a United States

Circuit Judge of the United States Court of Appeals for the Federal Circuit.

Stark concluded that, “at [Alice Step One], the defendants have met their burden, but at [Alice Step

Two], defendants have not.” D.I. 35 at 51:20-21. On February 11, 2021, Plaintiff filed its First

Amended Complaint, the operative pleading in this action. D.I. 34.

On September 20, 2021, the parties filed a joint stipulation to stay this action pending the

resolution of inter partes review proceedings (“IPR”) challenging the validity of the °410 Patent,

the ’411 Patent, and the ’440 Patent. D.I. 60. On October 13, 2022, the parties filed a joint status

report, which explained that the United States Patent and Trademark Office (“USPTO”) had issued

final written decisions in the IPRs, wherein claims 1-19 of the °410 Patent, claims 1-24 and 26-37

of the °440 Patent, and claims 1-19 of the °411 Patent were deemed to be unpatentable. D.I. 63 at

1. The Federal Circuit affirmed the USPTO without issuing a separate written decision. □□□□□

Tech., L.L.C. v. Twitter, Inc., C.A. Nos. 2023-1126, 2023-1127, 2023-1128, 2023-1130, 2023-

1131, 2023-1132, 2024 WL 3764472, at *1 (Fed. Cir. Aug. 13, 2024).

On October 16, 2025, the parties each filed two motions for summary judgment (D.I. 246;

D.I. 250; D.I. 259; D.I. 263). The parties’ summary judgment motions are now fully briefed.

Il. LEGAL STANDARD

A. Summary Judgment

“The 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.” Fed. R.

Civ. P. 56(a). “A genuine issue of material fact is one that could lead a reasonable jury to find in

favor of the nonmoving party.” Bletz v. Corrie, 974 F.3d 306, 308 (3d Cir. 2020) (citing Willis v.

UPMC Children’s Hosp. of Pittsburgh, 808 F.3d 638, 643 (3d Cir. 2015)). “The court must review

the record as a whole, draw all reasonable inferences in favor of the nonmoving party, and must

not ‘weigh the evidence or make credibility determinations.’” Jd. at 308 (quoting Parkell v.

Danberg, 833 F.3d 313, 323 (3d Cir. 2016)).

“On an issue as to which the moving party bears the burden of proof at trial, . . . the party

seeking summary judgment must ‘establish the absence of a genuine factual issue.’” Brit.

Telecommunications PLC v. IAC/InterActiveCorp, Civil Action No. 18-366-WCB, 2025 WL

2240699, at *2 (D. Del. Aug. 5, 2025) (Bryson, J., sitting by designation) (quoting Resol. Tr. Corp.

v. Gill, 960 F.2d 336, 340 (3d Cir. 1992)). “If the motion does not persuasively establish that no

factual issue exists, summary judgment should be denied ‘even if no opposing evidentiary matter

is presented.”” Jd. (quoting Resol. Tr. Corp, 960 F.2d at 340). “Once the moving party with the

burden of proof makes a showing that there is no genuine factual issue, that party is entitled to

summary judgment ‘unless the non-moving party comes forward with probative evidence that

would demonstrate the existence of a triable issue of fact.’” Id. (quoting Jn re Bressman, 327 F.3d

229, 238 (3d Cir. 2003)).

B. Patent Eligibility

Section 101 of the Patent Act provides that, “[wJhoever 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.” 35 U.S.C. § 101. “Patent eligibility under 35 U.S.C. § 101 is a question of law that

may contain underlying factual issues.” US Pat. No. 7,679,637 LLC v. Google LLC, 164 F.4th

1373, 1377 (Fed. Cir. 2026) (citing Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342

(Fed. Cir. 2018)). Patent eligibility is evaluated using a two-part test. Alice Corp. v. CLS Bank

573 U.S. 208, 217-18 (2014); Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566

U.S. 66, 78 (2012).

Under “step one” of the Alice framework, the Court first determines “whether the claims

at issue are directed to . . . patent-ineligible concepts,” such as an abstract idea. Alice, 573 U.S. at

217. Under “step two” of the Alice framework, the Court must “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.” Jd. (quoting Mayo,

566 U.S. at 78). “An ineligibility analysis depends on ‘the language of the claims themselves.’”

GoTV Streaming, LLC v. Netflix, Inc., No. 2024-1669, 2026 WL 346200, at *5 (Fed. Cir. Feb. 9,

2026) (cleaned up). “Although the specification’s (and prosecution history’s) recitation of the

problem faced and the asserted inventive solution informs the inquiry into what the combination

of claimed features is directed to, only features that are claimed, not unclaimed details that appear

in the specification, can supply something beyond ineligible matter—here, something beyond an

abstract idea and sufficient to render the claim eligible.” Jd (cleaned up).

“In deciding questions of patent eligibility and, specifically, in navigating the parameters

of an abstract idea, it is proper for courts to compare the claims at issue to those previously

analyzed in other judicial decisions.” Jnt’l Bus. Machines Corp. v. Zynga Inc., C.A. No. 22-590-

GBW, 2024 WL 3967402, at *3 (D. Del. Aug. 28, 2024) (citations omitted). “While prior cases

can be helpful in analyzing eligibility, whether particular claim limitations are abstract ... must

be decided on a case-by-case basis in light of the particular claim limitations, patent specification,

and invention at issue.” CosmoKey Sols. GmbH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091, 1099

(Fed. Cir. 2021).

I. DISCUSSION

The Court divides its discussion into four parts: (A) The Court Denies Plaintiff's First

Motion for Summary Judgment; (B) The Court Denies Plaintiff's Second Motion for Summary

Judgment; (C) The Court Grants Defendant’s First Motion for Summary Judgment; and (D) The

Court Denies-as-Moot Defendant’s Second Motion for Summary Judgment.

A. The Court Denies Plaintiff’s First Motion for Summary Judgment

Plaintiff moves for summary judgment that the Asserted Claim is not directed to ineligible

subject matter under Alice Step One. Plaintiff asserts that: (1) this Court should not continue to

treat the now-invalidated Claim 1 of the °410 Patent as representative of Asserted Claim; and (2)

the Asserted Claim, when assessed on its own merits, is not directed to an abstract idea under 35

U.S.C. § 101. D.I. 261 at 12-20. The Court addresses each in turn.

1. Previous Findings regarding Alice Step One

“Courts may treat a claim as representative in certain situations, such as if the patentee does

not present any meaningful argument for the distinctive significance of any claim limitations not

found in the representative claim or if the parties agree to treat a claim as representative.”

Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018) (emphasis added) (citations omitted).

As noted above, Plaintiff did not dispute, for the purpose of Google’s motion to dismiss, that Claim

1 of the °410 Patent was representative of the Asserted Claim. D.I. 20 at 1. In the context of a

representative claim analysis, the Asserted Claim has twice been deemed directed to an abstract

idea under Alice Step One. First, in December 2020, Judge Stark concluded that the

“representative claim . . . is directed to an abstract idea.” D.I. 26 at 11. Second, two months later,

Judge Stark recognized that, “coming to [Alice Step One], it poses a question of law that the Court

has already resolved.” D.I. 35 at 50:7-8. Again, Judge Stark came to the “same conclusion.” Jd.

at 50:9, 19-22 (“I continue to believe that the claims are directed to the abstract idea that [] they

were directed to in December: ‘providing real-time targeted advertising based on keywords

contained on web pages visited by a user.””).

Plaintiff nonetheless contends that the Asserted Claim must be analyzed on its own merits.

See D.I. 261 at 12-16. Plaintiff advances three overlapping rationales for this contention, which

the Court addresses in turn.

°

First, Plaintiff asserts that the subsequent invalidation of Claim 1 of the ’410 Patent means

that “the Court cannot consider the invalidated claim as representative of the only claim still

remaining in the case, [the Asserted Claim]” and that the Court has no Article III power with

respect to Claim 1 of the °410 Patent. D.I. 261 at 12-13. However, as the Federal Circuit has

explained, “eligibility findings with respect to representative claims only extend to claims for

which they are representative ....” Mobile Acuity, 110 F.4th at 1291 (emphasis added). Asa

result, Plaintiff's framing of the issue is misguided. Even though Claim 1 of the ’410 Patent is no

longer asserted, the holdings regarding Claim 1 of the Patent “extend[ed] to [the Asserted

Claim] for which [Claim 1 of the ’410 Patent] [was] representative ....” Jd.

The cases relied upon by Plaintiff are inapposite and reflect the well-settled principle that

a court may not determine the patent eligibility of claims not asserted in litigation. See Ameranth,

Inc. v. Domino’s Pizza, LLC, 792 F. App’x 780, 785 (Fed. Cir. 2019) (no case or controversy

existed in declaratory judgment action with respect to claims not accused of infringement in the

litigation, which party conceded at oral argument); Streck, Ine. v. Rsch. & Diagnostic Sys., Inc.,

665 F.3d 1269, 1281 (Fed. Cir. 2012) (no case or controversy existed in declaratory judgment

action with respect to unasserted claims); Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300, 1308 (Fed.

Cir. 2012) (similar, citing Streck); see also Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Lab’ys, Inc.,

933 F.3d 1367, 1374-75 (Fed. Cir. 2019) (no case or controversy existed in declaratory judgment

action as to claims disclaimed by the patentee prior to the time the district court entered judgment).

This issue, however, is not before the Court. Thus, the Court rejects Plaintiff's first rationale.

Second, Plaintiff asserts that the law of the case doctrine does not apply because

“circumstances have changed materially since the Court’s prior judgment — most importantly, the

representative claim that formed the basis of the Court’s decision is no longer part of the case.”

D.I. 261 at 15. The Court disagrees. “The law of the case doctrine states that ‘when a court decides

upon a rule of law, that decision should continue to govern the same issues in subsequent stages

in the same case.’” Am. Axle & Mfg. Inc. v. Neapco Holdings LLC, C.A. No. 15-1168-GBW, 2023

WL 12252464, at *2 (D. Del. July 28, 2023) (quoting Speeney v. Rutgers, The State Univ., 369 F.

App’x 357, 359 (3d Cir. 2010)). The purpose of the doctrine is to “to ensure judicial efficiency

and to prevent the possibility of endless litigation.” Kaneka Corporation v. Designs for Health,

Inc., Civil Action No. 21-209-WCB, 2025 WL 1684677, at *2 (D. Del. June 16, 2025) (Bryson,

J., sitting by designation) (quoting Toro Co. v. White Consolidated Indus., Inc., 383 F.3d 1326,

1335 (Fed. Cir. 2004)). “Its elementary logic is matched by elementary fairness — a litigant given

one good bite at the apple should not have a second.” Jd. (quoting Perkin-Elmer Corp. v.

Computervision Corp., 732 F.2d 888, 900 (Fed. Cir. 1984)). Plaintiff is correct that “there is an

exception to the law of the case doctrine when new evidence is presented.” Speeney, 369 F. App’x

at 359, “This exception to the law of the case doctrine makes sense because when the record

contains new evidence, ‘the question has not really been decided earlier and is posed for the first

time.’” Jd. (citation omitted). This exception does not apply here, as the purportedly “new

evidence” — the invalidation of Claim 1 of the ’410 Patent for lack of novelty — has no impact on

the previous Alice Step One rulings. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)

(“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance

in determining whether the subject matter of a claim falls within the § 101 categories of possibly

patentable subject matter.”). Thus, the Court rejects Plaintiff's second rationale.

Third, Plaintiff asserts that Claim 1 of the ’410 Patent “differs materially” from the

Asserted Claim, citing differences between the language of the Asserted Claim and Claim 1 of the

Patent. D.I. 261 at 15-16. This same contention has already been rejected. At oral argument

on Plaintiffs motion for leave to amend, Plaintiff made a similar suggestion. Judge Stark rejected

it, noting that “it is too late, far too late for [Plaintiff] to now argue that [C]laim 1 of the °410

[P]atent is not representative, fully representative on the 101 issues before me. They had numerous

opportunities prior to today to argue that it is not fully representative for purposes of Section 101,

and I do not believe that they, that they did so.” D.I. 35 at 49:20-50:2. For the same reason, the

Court rejects Plaintiffs third rationale.

For the reasons set forth above, the Court rejects each of the three rationales proffered by

Plaintiff. However, in the interest of providing a more fulsome analysis of the Asserted Claim,

the Court analyzes the Asserted Claim under Alice Step One. See also F45 Training Pty Ltd. v.

Body Fit Training USA Inc., C.A. No. 20-1194-WCB, 2022 WL 17177621, at *7 (D. Del. Nov.

17, 2022) (deciding to “revisit the patent-eligibility analysis” under both steps of the Alice

framework at the summary judgment stage, even though Alice Step One had been previously

decided against the patentee at the motion to dismiss stage).

2. Alice Step One”

Under Alice Step One, the Court must determine whether the claims are “directed to”

ineligible subject matter. Broadband iTV, Inc. v. Amazon.com, Inc., 113 F.4th 1359, 1367 (Fed.

Cir. 2024), cert. denied, 145 8. Ct. 1924 (2025). This inquiry requires that the Court look to “the

character of the claims as a whole.” /d. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,

1335 (Fed. Cir. 2016)). “In addition to the claim language itself, [the Court] may also examine

the patent’s specification to determine the meaning of the claims as a whole.” Jd. (citing Yu v.

Apple Inc., 1 F Ath 1040, 1043 (Fed. Cir. 2021)).

2 Both parties have moved for summary judgment with respect to Alice Step One. D.I. 246;

D.I. 259, However, only Defendant has moved for summary judgment with respect to Alice Step

Two. See infra § (IID(C).

In the background section of the specification, the ’440 Patent describes how the expansion

of the Internet led to the more widespread distribution of software to end users. °440 Patent at

1:30-35. In the context of Internet-based targeted advertising, the specification also explains that

to achieve demographically-targeted advertising, an advertiser or distributor must obtain some

demographic data on its end users. /d. at 2:40-42. A known method in the prior art for doing this

was through acquiring information from users via an online form. /d. at 2:42-60. The specification

further describes other known arrangements in the prior art for “obtaining and reporting

information about an end user over a computer network such as the Internet.” /d. at 2:61-64; see

also id. at 2:63-3:9, 3:9-22. These arrangements, however, suffered from the “disadvantage” that

they were “generally limited to gathering information concerning only certain limited uses of the

computer.” Id. at 3:25-27.

The Asserted Claim generally recites a method for (1) “permitting” a computer user to

access one or more servers on a network; (2) “transferring software” to a computer associated with

the user, wherein that transferred software is configured to, inter alia, “display advertising content

and record computer usage information associated with utilization of the computer”; (3)

“determining” a unique identifier associated with the computer; and (4) “selecting” a targeted

advertisement based upon the information associated with that unique identifier; (5) “receiving” a

request for an advertisement; (6) “providing” the selected advertisement; and (7) “providing

reactive targeting of advertising to the user in real time by selecting and presenting an

advertisement based at least in part on user interaction with the computer.” °440 Patent at Claims

1, 25.

In analyzing the Asserted Claim, the Court finds several Federal Circuit decisions applying

the Alice framework in analogous circumstances instructive. See Intell. Ventures I LLC v. Cap.

an

One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015); Bridge & Post, Inc. v. Verizon Commc'ns, Inc.,

778 F. App’x 882 (Fed. Cir. 2019); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d

1359 (Fed. Cir. 2020); Free Stream Media Corp. v. Alphonso Inc., 996 F.3d 1355 (Fed. Cir. 2021);

Broadband iTV, Inc. v. Amazon.Com, Inc., 113 F.4th 1359 (Fed. Cir. 2024).

In Intellectual Ventures, the Federal Circuit addressed a claim relating to “to customizing

information based on (1) information known about the user and (2) navigation data.” 792 F.3d at

1369. As for the first category (user information), the Federal Circuit stated that the practice of

“information tailoring” based on the viewer’s location or address was “a fundamental . . . practice

long prevalent in our system... .” Jd. (quoting Alice, 573 U.S. at 219). In so doing, the court

referenced the practice of tailoring newspaper inserts to the customer’s location. See id.

(“Providing this minimal tailoring — e.g., providing different newspaper inserts based upon the

location of the individual — is an abstract idea.”). As for the second category (navigation data), the

court explained:

There can be no doubt that television commercials for decades

tailored advertisements based on the time of day during which the

advertisement was viewed. For example, a television channel might

choose to present a commercial for children’s toys during early

morming cartoon programs but beer during an evening sporting

event. An advertisement taking into account the time of day and

tailoring the information presented to the user based on that

information is another “fundamental ... practice long prevalent in

our system... Alice, 134 S.Ct. at 2356.

Id. at 1370. Accordingly, the court held that the claim was directed to an abstract idea. Jd.

Subsequently, in Bridge & Post, the Federal Circuit considered a claim that required

“retrieving a persistent device identifier,’ ‘determining’ and ‘retrieving’ information associated

3 Earlier in the litigation, Judge Stark recognized that Intellectual Ventures and Customedia

were “highly similar” cases. See D.I. 26 at 11-12.

12

with the identifier, ‘analyzing’ the information, and ‘placing directed media.’” 778 F. App’x at

887. The court held that, “as a whole, the claim [was] directed to the use of persistent identifiers

to implement targeted marketing.” Jd; see also id. (“Targeted marketing is a form of ‘tailoring

information based on [provided] data,’ which we have previously held is an abstract idea.”

(alteration in original) (quoting Intell. Ventures, 792 F.3d at 1369)).

Next, in Customedia, the Federal Circuit addressed a claim reciting a “data delivery system

for providing automatic delivery of . . . specifically identified advertising data.” 951 F.3d at 1363

(citation omitted). On appeal, the patentee contended that, “by providing a reserved and dedicated

section of storage, the claimed invention improves the data delivery system’s ability to store

advertising data, transfer data at improved speeds and efficiencies, and prevent system

inoperability due to insufficient storage.” Jd. Distinguishing its prior decision in Enfish and

finding the claim directed to an abstract idea, the court concluded that any claimed improvements

were directed toward “generic speed and efficiency improvements inherent in applying the use of

a computer to any task,” as opposed to “an improvement in the functioning of the computer itself.”

Id. at 1365; see also id. (“Therefore, the claimed invention is at most an improvement to the

abstract concept of targeted advertising wherein a computer is merely used as a tool.”).

In Free Stream Media, the Federal Circuit analyzed two claims of a patent that related to

“a system providing a mobile phone user with targeted information (i.e., advertisements) that . . .

deemed relevant to the user based on data gathered from the user’s television.” 996 F.3d at 1358

(citation omitted). Similarly to the instant case, the patentee contended that the “claimed invention

is like those previously found eligible in Enfish [and its progeny].” Jd. at 1362. However, the

court disagreed, concluding that “the alleged technological improvement does nothing more than

1A

implement a computer to achieve the abstract idea of providing targeted advertising to the mobile

device user.” /d. at 1365.

Finally, in Broadband, the Federal Circuit addressed a patent that sought to “improve

existing program guides by adjusting the order of categories of listings within a guide based on a

user’s viewing history.” 113 F.4th at 1364. The court concluded that the representative claim was

“directed to the abstract idea of collecting and using viewing history data to recommend categories

of video content.” Jd. at 1371. In so doing, the court recognized that the representative claim of

the patent was “directed to a type of ‘targeted advertising,’ which [the Federal Circuit has]

repeatedly found abstract.” Jd. (collecting cases, including Intell. Ventures, Free Stream Media,

and Customedia); see also Chewy, Inc. v. Int'l Bus. Machines Corp., 94 F.4th 1354, 1365 (Fed.

Cir, 2024) (finding that claims which “merely recite[d] the concept of identifying advertisements

based on search results, without any specificity as to how this is accomplished” were “directed to

the abstract idea of identifying advertisements based on search results”).

Against this backdrop, Plaintiff asserts that “[t]he Asserted Claim discloses a specific

implementation of a network-based (e.g., utilizing the internet), two-tiered targeted advertising

method to provide reactive targeted advertisements in real time.” D.I. 261 at 16. According to

Plaintiff, the cases involving claims most similar to the Asserted Claim for the purpose of Alice

Step One are two cases that follow the Federal Circuit’s decision in Enfish. See D.I. 342 (first

citing Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018); and then citing

Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303 (Fed. Cir. 2020)). A common thread in

these cases is that they involve claims directed toward specific technological solutions that

improved the functionality of a computer or the network itself. See Data Engine, 906 F.3d at 1011

(finding as not directed to patent ineligible subject matter a claim that recited “a specific structure

(i.e., notebook tabs) within a particular spreadsheet display that performs a specific function (i.e.,

navigating within a three-dimensional spreadsheet)”); Uniloc USA, 957 F.3d at 1305-07 (finding

as not directed to patent ineligible subject matter a claim directed to “a primary station for use in

a communications system” because the claimed invention was directed to “the reduction of latency

experienced by parked secondary stations in communication systems”).

Defendant responds that the Federal Circuit cases most similar to the present case for the

purpose of Alice Step One are Intellectual Ventures, Customedia, and Chewy, described above.

D.1I.340. According to Defendant, the Asserted Claim is directed to an abstract idea. See generally

D.I. 288. At Alice Step One, the Court agrees with Defendant.

Considered as a whole, and in view of the specification, the Asserted Claim is directed to

the abstract idea of providing real-time targeted advertising based on information known about a

user. Targeted advertising, a form of “tailoring information based on [provided] data,” is an

abstract idea. Bridge & Post, 778 F. App’x at 887 (alteration in original) (quoting Jntell. Ventures,

792 F.3d at 1369). The Asserted Claim is directed to a computer-implementation of the abstract

idea of providing a form of real-time targeted advertising based on information known about a

user, and the focus of the Asserted Claim is like many of the claims that the Federal Circuit has

repeatedly held are directed to ineligible subject matter. See id. (“The recited steps of ‘retrieving

a persistent device identifier,’ ‘determining’ and ‘retrieving’ information associated with the

identifier, ‘analyzing’ the information, and ‘placing directed media’ based on that analysis are

nothing more than a computer-implementation of targeted marketing over the Internet.”). Indeed,

providing real-time targeted advertising based on information known about a user is akin to a

salesperson tailoring a sales pitch to a particular customer or handing them a particular brochure

in real-time based upon their conversation, or “a television channel [] choos[ing] to present a

commercial for children’s toys during early morning cartoon programs but beer during an evening

sporting event.” Intell. Ventures, 792 F.3d at 1370; see also Alice, 573 U.S. at 219-20 (considering

whether the claims at issue extended to a “fundamental . . . practice long prevalent in our system

....”). That the Asserted Claim limits an abstract idea to a particular environment does not

materially impact the focus of the Alice Step One analysis. See, e.g., In re TLI Communications

LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016) (“[L]imit[ing] the abstract idea to a

particular environment ... does not make the claims any less abstract for the step 1 analysis.”

(citation omitted)). Thus, like the claims in Customedia and Chewy, the Asserted Claim is more

aptly described as being directed to “an improvement to the abstract concept of targeted

advertising,” as opposed to an improvement in computer functionality under Enfish and its

progeny. See Chewy, 94 F.4th at 1366 (quoting Customedia, 951 F.3d at 1365).

The Federal Circuit has also recognized that “[t]he ‘directed to’ inquiry may also involve

looking to the specification to understand ‘the problem facing the inventor’ and, ultimately, what

the patent describes as the invention.” ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 767

(Fed. Cir. 2019) (citations omitted). In the present action, the specification suggests that the

Asserted Claim is directed to the abstract idea of providing real-time targeted advertising based on

information known about a user. As the specification provides, the invention emerged from a

problem in the art that existing systems were “generally limited to gathering information

concerning only certain limited uses of the computer.” °440 Patent at 3:25-26. The summary of

the invention indicates that the °440 Patent answers this problem by providing “a method for

reactive targeted advertising via the internet for display on a user’s computer accessing a

webpage.” °440 Patent at 5:7-11; see also ChargePoint, 920 F.3d at 768 (considering the summary

of the invention in the context of Alice Step One). Although this is not “necessarily dispositive of

17

the ‘directed to inquiry, it strongly suggests that the abstract idea identified in [the Asserted Claim]

may indeed be the focus of that claim.” ChargePoint, 920 F.3d at 768.

For the foregoing reasons, the Court concludes at Alice Step One that the Asserted Claim

is directed to an abstract idea. Thus, the Court denies Plaintiff's First Motion for Summary

Judgment (D.I. 259). See Fed. R. Civ. P. 56(a) (“The 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 Court also denies-as-moot Defendant’s Motion for Leave

(D.I. 330).

B. The Court Denies Plaintifr’s Second Motion for Summary Judgment

Since the Court denies Plaintiff's First Motion for Summary Judgment, the Court denies

Plaintiff's Second Motion for Summary Judgment (D.I. 250) pursuant to the Court’s summary

judgment ranking procedures.

Cc, The Court Grants Defendant’s First Motion for Summary Judgment

Defendant moves for summary judgment that the Asserted Claim is “patent ineligible under

35 U.S.C. § 101.” D.I. 246. Having already addressed Alice Step One above, see supra § (III)(A),

the Court focuses its analysis on Alice Step Two. This second step of the Alice framework

“consider[s] 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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79). “The question of whether a

claim element or combination of elements is well-understood, routine and conventional to a skilled

artisan in the relevant field is a question of fact.” Berkheimer, 881 F.3d at 1368. “Any fact, such

as this one, that is pertinent to the invalidity conclusion must be proven by clear and convincing

evidence.” Jd. (citation omitted). “When there is no genuine issue of material fact regarding

whether the claim element or claimed combination is well-understood, routine, conventional to a

12

skilled artisan in the relevant field, this issue can be decided on summary judgment as a matter of

law.” Id.

With respect to Step Two of the Alice framework, Defendant contends that there is no

inventive concept to save the Asserted Claim. D.I. 247 at 9-19. Plaintiff disagrees. Plaintiff

asserts that questions of material fact preclude summary judgment, and that several steps of the

Asserted Claim, considered individually and, as an ordered combination, provide inventive

concepts. See D.I. 293 at 2, 13-28.

1. “Transferring” Limitation Fails to Provide an Inventive Concept

The Court begins with the “transferring” limitation, which recites: “transferring a copy of

software to a computer associated with the computer user, the software being configured to run on

the computer to display advertising content and record computer usage information associated with

utilization of the computer, wherein the computer usage information includes data regarding one

or more programs run on the computer....” °440 Patent at Claim 1.

With respect to the “transferring” limitation, Defendant focuses upon the intrinsic evidence

to support its claim that the requirements of this limitation were well-known, routine, and

conventional at the time of the invention. Defendant claims that the specification’s “admissions”

preclude any issues of material fact regarding this limitation. See D.I. 247 at 14. The Court agrees.

Defendant identifies instances in the specification where the “transferring” element was

disclosed by the prior art. DI. 247 at 14-15. For example, the specification of the ’440 Patent

discusses U.S. Patent No. 5,724,521 (the “Dedrick Patent”). °440 Patent at 2:61-3:09. The

specification of the °440 Patent describes the Dedrick Patent as disclosing “an electronic

advertising system,” that, among other functions, “can include client-side software which acquires

and compiles information concerning the user’s interaction with the advertising or other content,”

as well as “select advertisement titles that are sent to the end user.” Jd. at 2:64-65, 3:01-03, 3:07-

10

09. The Court finds that there is no meaningful distinction between software that selects

advertisements to send to users and “compiles information concerning the user’s interaction with

the advertising or other content,” as described by the Dedrick Patent, and software displaying

advertisements and collecting user information regarding programs run on a computer, as claimed

in the “transferring” limitation of the °440 Patent. Moreover, simply “transferring” the software

to the end user’s computer is not an inventive concept, as all software must be transferred to the

computer on which it is run. Cf 440 Patent at 1:32-36 (“The continuing expansion of the Internet

and other private and semi-private networks has led to the now widespread practice of electronic

distribution of software to end users”). Plaintiffs arguments to the contrary are unpersuasive.

First, Defendant identifies that the specification acknowledges that the electronic distribution of

software was “widespread.” See DI. 247 at 14 (citing °440 Patent at 1:32-36). Plaintiff alleges

that such a statement is “overbroad” and that the claimed transfer of software “for the purposes of

displaying ads and recording computer usage” to the user’s computer was not well-known or

convention. D.I. 293 at 18. However, Plaintiff's differentiation misses the mark. Defendant is

not using the specification’s admission that the electronic distribution of software was widespread

to show that the entire claimed method was well-known or conventional, but only to show that the

“transferring” limitation was well-known or conventional. DJ. 247 at 14; see also Brit.

Telecommunications PLC v. IAC/InterActiveCorp, No. 18-366-WCB, 2025 WL 2240699, at *16

(D. Del. Aug. 5, 2025) (Bryson, J., sitting by designation) (“Thus, the appropriate question at Alice

step two ‘is not whether the entire claim as a whole was “well-understood, routine [and]

conventional,” but whether, apart from the abstract idea itself, the additional element individually

or in combination with others added anything inventive.” (alteration in original) (quoting

Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1348-49 (Fed. Cir. 2019))).

aon

Second, as Defendant observes, the specification provides several examples of related

software in the prior art. See °440 Patent at 1:47-54 (discussing the “Pointcast” prior art system),

2:61-3:22 (discussing the Dedrick Patent), 3:10-13 (discussing U.S. Patent No. 5,732,218 (the

“Bland Patent”)), 3:35-44 (discussing U.S. Patent No. 5,347,632 (the “Filepp Patent”)). For

example, the specification of the °440 Patent describes the Pointcast product as a “well-known”

example of a push technology product that provides software at no cost to the user and allows for

the advertiser to obtain advertising exposure. °440 Patent at 1:47-54. Similarly, the Bland Patent

describes “‘a system for gathering data concerning an end-user’s access to information resources

and reporting the data back to the servers that contain the information resources.” ’440 Patent at

3:10-13. Plaintiff attempts to assert that the “transferring” limitation contains an inventive concept

by alleging that prior art systems “‘are generally limited to gathering information concerning only

certain limited uses of the computer’... .” D.I. 293 at 18 (quoting ’440 Patent at 3:23-34); ef

Chewy, 94 F.4th at 1367 (“The concept of data collection, recognition, and storage is undisputedly

well-known. Indeed, humans have always performed these functions.” (citation omitted)).

Importantly, despite asserting that the disclosed prior art “depicts one of the problems the Asserted

Claim sought to solve,” Plaintiff does not explain how such problem is addressed by the language

of said claims. See D.I. 293 at 18; see also T-Jat Sys. 2006, Lid. v. Expedia, Inc. (DE), No. 16-

581-RGA, 2018 WL 1525496, at *6 (D. Del. Mar. 28, 2018) (“[T]he claims themselves must

provide the inventive concept.”). To the contrary, the “transferring” limitation provides for

collection of data “regarding one or more programs run on the computer,” and does not contain a

restriction regarding the breadth of information sought to be collected by the claimed method.

71

’440 Patent at Claim 1.4 Thus, “[t]he main problem that [Plaintiff] cannot overcome is that the

claim — as opposed to something purportedly described in the specification — is missing an

inventive concept.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1338

(Fed. Cir. 2017).

Plaintiff, in support of its argument that the Court should look to the specification at Alice

Step Two, relies on CosmoKey Sols. GmbH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091 (Fed. Cir.

2021). However, Plaintiff's reliance is misplaced. In CosmoKey, the Federal Circuit found that a

claimed authentication method provided an inventive concept and thus passed Alice Step Two. 15

F.4th at 1099. However, the Federal Circuit did not import an inventive concept from the

specification into the claims, as Plaintiff suggests, but merely cited to the specification to show

that the claimed steps were unconventional and an improvement over the prior art. Jd. at 1098-99.

Specifically, the Federal Circuit found that the claimed authentication method contained an

inventive concept where the specification explained that, “compared to the prior art and

conventional multifactor authentication systems, the [patent-in-suit] performs user authentication

with fewer resources, less user interaction, and simpler devices.” Jd. at 1099. The patent in

CosmoKey did not merely enable an improvement in authentication over the prior att, but

“ensur[ed] that the authentication function is normally inactive, activating only for a transaction,

communicat[ed] the activation within a certain time window, and thereafter ensur[ed] that the

authentication function is automatically deactivated.” Jd. Unlike CosmoKey, the Asserted Claim

in this action merely encompassed an improvement described in the specification, but similarly

4 With respect to the wide breadth of information subject to the claimed method, as set

forth above, “computer usage information” recited in the Asserted Claims has been construed

broadly to mean “data concerning a person’s use of a computer, including such things as what

programs they run, what information resources they access, what time of day or days of the week

they use the computer, and so forth.” D.I. 104 at 2.

22

encompassed unimproved, routine, and conventional methods of data collection and usage, a

scenario that the Federal Circuit has repeatedly found to be insufficient at Alice Step Two. See,

e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1326 (Fed. Cir. 2016)

(“Plainly, conflicts-of-interest and predatory lending are still possible when practicing the claims.”

(emphasis added)); Dropbox, Inc. v. Synchronoss Techs., Inc., 815 F. App’x 529, 537 (Fed. Cir.

2020) (“Dropbox argues that the combination of the two concepts is inventive because ‘[t]he □□□□

patent’s data structure allows the data to be formatted in a way that makes data transfer reliable

and efficient.’ But ‘[t]o save a patent at step two, an inventive concept must be evident in the

claims.” (alterations in original) (citations omitted)).

Third, Plaintiff asserts that its expert’s arguments are material to the Court’s § 101 analysis,

as Federal Circuit precedent requires that whether an inventive concept exists at Alice Step Two

“must be decided on a case-by-case basis in light of the particular claim limitations, patent

specification, and invention at issue.” D.I. 293 at 19 (quoting CosmoKey, 15 F.4th at 1099).

However, Plaintiffs argument regarding its expert is likewise flawed. Although Plaintiff's expert

states that “[t]he specification of the °440 Patent explains how embodiments of the invention

overcame” technical limitations present in the prior art, he fails to describe how said embodiments

are evident in the language of the “transferring” limitation of the Asserted Claim. D.I. 249, Ex. 3

4320. “Even if [] portions of the specification ... disclosed an inventive concept, this is not

enough to save the patent at step two of the analysis because the inventive concept must be found

in the claims themselves.” Validity, Inc. v. Project Bordeaux, Inc., No. 23-365-SRF, 2023 WL

6200287, at *10 (D. Del. Sept. 22, 2023) (citing Two-Way Media, 874 F.3d at 1338). The Court

accepts as true Plaintiff's expert’s declaration that the disclosed embodiments offer unconventional

methods that solve problems present in the prior art, but these purported improvements are not

92

evident in the “transferring” limitation of the Asserted Claim. Ficep Corp. v. Peddinghaus Corp.,

587 F. Supp. 3d 115, 125 (D. Del. 2022), aff'd, No. 2022-1590, 2023 WL 5346043 (Fed. Cir. Aug.

21, 2023) (“I accept Mr. Chipman’s declaration that a computer identifies the intersection

parameters differently than how a human would do so. But this limitation is not in the claims.”);

see also Mortg. Grader, 811 F.3d at 1326 (expert declaration that the claimed invention steered

borrowers away from predatory loans did not supply an inventive concept when “conflicts-of-

interest and predatory lending are still possible when practicing the claims”). Thus, Plaintiffs

expert’s declaration does not create a genuine issue of material fact regarding an inventive concept

provided by the “transferring” limitation.

Having drawn all inferences in favor of the non-movant, which the Court must at the

summary judgment stage, the Court concludes that the “transferring” limitation fails to provide

an inventive concept sufficient to save the Asserted Claim at Alice Step Two.

2. “Determining” and “Selecting” Limitations Fail to Provide an Inventive

Concept

Plaintiff also asserts that the “determining” and “selecting” limitations of the Asserted

Claim likewise supply an inventive concept. D.I. 293 at 19-21. The “determining” and “selecting”

limitations recite:

determining a unique identifier associated with the computer,

wherein the identifier uniquely identifies information sent from the

computer to the one or more servers;

selecting an advertisement to be displayed on the computer, the

selection based at least on information associated with the unique

identifier identifying the computer; ....

°440 Patent at Claim 1.

In Plaintiff's view, the two elements “overcame the problems associated with the lack of a

universal profile that was not limited to collecting web browser usage or finding and consulting an

individual application’s cookies, but could record any and all computer usage information via the

use of the transferred software.” D.I. 293 at 19. This, in turn, “enable[d] the pre-processing of ads

based on the universal profile containing all usage information of a particular computer,” which

Plaintiff contends is an inventive concept that saves the Asserted Claim at Alice Step Two. Id.

Defendant disagrees. In Defendant’s view, the “determining” and “selecting” limitations of the

Asserted Claim likewise fail to supply an inventive concept. D.I. 247 at 15-16. . Defendant asserts

that the “determining” and “selecting” limitations do not contain the inventive concept that

Plaintiff advocates for and, thus, the Asserted Claim cannot pass Alice Step Two based on these

limitations. D.I. 247 at 16.

The Court agrees with Defendant. Plaintiff asserts that the “determining” and “selecting”

limitations provide an inventive concept because they “enable[] the pre-processing of ads based

on the universal profile containing a// usage information of a particular computer.” D.I. 293 at 19.

However, this limitation is not present in the claim language. Importantly, the claim limits the

“computer usage information” collected by requiring said information to include “data regarding

one or more programs run on the computer... .” °440 Patent at Claim 1. Thus, the claim does

not require that the universal profile be based on a// computer usage information, but only that the

universal profile includes data from one or more programs. Jd.; see also supra n.4. Even if the

Court assumes that pre-processing of ads based on a universal profile containing all usage

information of a specific computer is a sufficiently inventive concept, such a concept is not present

in the claim language, and thus cannot save the Asserted Claim at Alice Step Two. Mortg. Grader,

811 F.3d at 1326 (expert declaration that the claimed invention steering borrowers away from

predatory loans did not supply an inventive concept when “conflicts-of-interest and predatory

lending are still possible when practicing the claims”). Just as with the “transferring” limitation,

95

Plaintiff emphasizes that the inventive concept inquiry involves looking at the specification. D.I.

293 at 20 (citing CosmoKey, 15 F.4th at 1099). However, for the reasons discussed supra

§ dI)(C)(1), Plaintiff's reliance on the specification is misplaced. Plaintiff does not assert that

the claims themselves require the inventive concept, but rather that the inventive concept disclosed

in the specification is encompassed within the scope of the Asserted Claim. D.I. 293 at 19 (“The

Asserted Claim’s unique identifier enables the pre-processing of ads based on the universal profile

containing all usage information of a particular computer.” (emphasis added)); id. at 20 (“Google

does not dispute that the specification’s embodiments of elements 1(c) and 1(d) teach pre-

processing and selection of ads to be cached on the user’s computer.” (emphases added)). Plaintiff

does assert “that implementation of the claimed method is needed to provide the claimed result

(building a universal profile, identifying all usage of a particular computer, and pre-processing of

ads), which in turn achieve the improved two-tiered targeted advertising.” Jd. at 20. However, as

discussed above, the Asserted Claim does not require (or claim) “identifying all usage of a

particular computer,” but merely some usage. Contrast D.I. 293 at 20 (“identifying all usage of a

particular computer”), with °440 Patent at Claim 1 (“record computer usage information associated

with utilization of the computer, wherein the computer usage information includes data regarding

one or more programs run on the computer”). Thus, Plaintiff's purported inventive concept is not

“evident in the claims,” and the “selecting” and “determining” limitations do not provide an

inventive concept sufficient to save Claim 25 of the ’440 Patent at Alice Step Two.

3. “Real Time” Limitation Fails to Provide an Inventive Concept

Plaintiff further asserts that the “real time” limitation in Claim 25 of the °440 Patent

provides an inventive concept. D.J. 293 at 21-22. The “real time” limitation recites, in part,

“providing reactive targeting of advertising to the user in real time by selecting and presenting an

advertisement based at least in part on user interaction with the computer.” °440 Patent at Claim

25. Pointing to the specification of the 440 Patent, Plaintiff alleges that the specification describes

internet advertising as “new” and that reactive targeting was “only available in ‘some instances.’”

D.I. 293 at 22 (citing D.J. 296 46). Moreover, Plaintiff asserts that targeting “reactively” is

“different than reactive targeting ‘in real time.’” Jd.

Defendant disagrees. Defendant asserts that the claims do not describe “how ads are

selected — much less how they are selected ‘in real time’... .” D.I. 312 at 8. Defendant also

identifies several instances where the Federal Circuit has found that performing claim steps “in

real time” was insufficient to provide an inventive concept at Alice Step Two. Jd. (citing

Intellectual Ventures I, 792 F.3d at 1370; Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205,

1215 (Fed. Cir. 2025); Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1366 (Fed. Cir.

2023)).

The Court agrees with Defendant. The specification explains that, in the prior art,

advertisements could be targeted “reactively.” °440 Patent 1:60-63. The Court is unpersuaded

that the prior art’s description of “reactive” advertising being available “in some instances”

necessitates a finding that it was not well-known, routine, or conventional. See D.I. 293 at 22. To

the contrary, the ’440 Patent defines reactively as “[i]n response to some type of user input, such

as a mouse click on a particular user application or on a link to an information resource.” °440

Patent at 2:63-64. Not only does the Patent describe advertisements targeted “reactively” as

being known in the prior art, °440 Patent at 1:60-63, it describes prior art systems as providing

such advertisements. See, e.g., °440 Patent at 2:63-3:05 (discussing the Dedrick Patent, which

discloses a system that includes sending an advertisement “at the request of the end user.”). Thus,

for the “real time” limitation to provide an inventive concept, it must be because “real time” is the

inventive concept. Importantly, Plaintiff explicitly states that “the concept of ‘real time,’ standing

alone,” is not an asserted inventive concept. D.I. 293 at 14. Nor could it, as performing the claims

in “real time” is not significantly more than the abstract idea of providing real-time targeted

advertising based on information known about a user, which the Court found the claims directed

to at Alice Step One. See BASCOM, 827 F.3d at 1349 (“An inventive concept that transforms the

abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself

....” (citing Alice, 573 U.S. at 223-24)). Thus, the “real time” limitation cannot provide an

inventive concept at Alice Step Two.

Furthermore, the “real time” limitation is insufficient to provide an inventive concept

because it simply uses technology to perform ordinary mental processes quicker and in a computer

environment. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“More

particularly, a large portion of the lengthy claims is devoted to enumerating types of information

and information sources available within the power-grid environment. But merely selecting

information, by content or source, for collection, analysis, and display does nothing significant to

differentiate a process from ordinary mental processes, whose implicit exclusion from § 101

undergirds the information-based category of abstract ideas.”). As discussed supra § (III)(A)(2),

the Court found that the claimed method of performing targeting advertising was akin to the

analogy the Federal Circuit articulated in Intellectual Ventures, where said advertising is

comparable to “a television channel [] choos[ing] to present a commercial for children’s toys

during early morning cartoon programs but beer during an evening sporting event.” Jntell.

Ventures, 792 F.3d at 1370. The “real time” limitation uses conventional computers in a

conventional way to allow for these advertisements to be selected in real time. °440 Patent at 6:56

(“Computer 18 is a conventional personal computer”); id. at 11:01-03 (“URL field 74 is a

conventional drop-down input box that can be used for entering URLs or path and file names of

locally-stored web pages.”); id. at 12:55-59 (“A final region of window 24 is a conventional linked

icon $8, which can be used to direct the user’s default browser to the home page of the company

that provided client software application 10.”). Thus, using conventional computing components

to perform the claimed invention in real time is insufficient to supply an inventive concept at Alice

Step Two. Telesign Corp. v. Twilio, Inc., No. 18-cv-03279-VC, 2018 WL 10638619, at *2 (N.D.

Cal. Oct. 19, 2018), aff'd, 789 F. App’x 881 (Fed. Cir. 2020) (“[T]he fact that technology permits

a process to occur in real time does not, without more, supply an inventive concept.”); Customedia,

951 F.3d at 1365-66 (claims directed to a form of targeted advertising that recited “generic

computer components, including a programmable receiver unit, a storage device, a remote server

and a processor,” were “insufficient to render eligible claims directed to an abstract idea” at Alice

Step Two); see also Customedia, 951 F.3d at 1366 (“[T]he invocation of “already-available

computers that are not themselves plausibly asserted to be an advance . . . amounts to a recitation

of what is well-understood, routine, and conventional.” (citation omitted)).

4, The Ordered Combination of All Claim Elements Fails to Provide an

Inventive Concept

Plaintiff further asserts that the ordered combination of the elements in the Asserted Claims

provides an inventive concept. In Plaintiff's view, “the Asserted Claim requires the transfer of

software to the user’s computer and the use of a unique identifier to identify information sent from

that same computer to a server, then selecting an ad based on that information.” D.I. 293 at 23. In

Plaintiff's view, the combination of all elements “enables the recording of all computer usage

information (providing a universal profile),” and “also enables the display of ads from a cache of

the selected and preprocessed ads.” /d. at 24.

Defendant disagrees. Defendant asserts that “there is nothing special about the order of the

claim steps.” D.J. 247 at 17. Moreover, Defendant faults Plaintiff's expert for describing what

the claims “allow” rather than what they “require.” Jd Furthermore, Defendant alleges that

Plaintiff's argument regarding any inventive concept is merely restating the abstract idea itself,

which is insufficient to confer an inventive concept to save the Asserted Claim at Alice Step Two.

The Court agrees with Defendant.

First, Plaintiff did not sufficiently articulate an inventive concept provided by the ordered

combination of all claim elements. Cf Versata Software, Inc. v. NetBrain Techs., Inc., No. 13-

676-LPS-CJB, 2015 WL 5768938, at *19 (D. Del. Sept. 30, 2015) (“The Court concludes that

Versata had difficulty in articulating the inventive concept in the claim because there is none.”).

Plaintiff does articulate that “the transferred software enables the recording of all computer usage

information (providing a universal profile)” and that the software “enables the display of ads from

a cache of the selected and preprocessed ads,” which in combination with the computer’s unique

identifier, “tracks the recorded information sent from the user’s computer to the server, which in

turn identifies the information used to select the ad, which in turn allows the selected ad to be sent

to, and cached at, the specific computer associated with the unique identifier.” D.I. 293 at 24.

However, as discussed supra § (III)(C)(2), the claims do not require that the universal profile be

built from all computer usage information. Instead, all the claims require is that “the computer

usage information includes data regarding one or more programs run on the computer... .” °440

Patent at Claim 1. Thus, Plaintiffs purported inventive concept is “turtles all the way down.”

Rapanos v, United States, 547 U.S. 715, 753 (2006).

Moreover, to the extent Plaintiff attempts to assert an abstract idea from the ordered

combination of claim elements, any such inventive concept is merely a restatement of the abstract

idea. As discussed supra § (III)(A)(2), the Asserted Claim is directed to the abstract idea of

providing a form of real-time targeted advertising based on information known about a user.

30

Plaintiffs statements regarding an inventive concept by virtue of the ordered combination of claim

elements does nothing more than restate the abstract idea. See DI. 293 at 24. Importantly, Plaintiff

does not refute this, but merely argues that, if the Court adopts such an abstract idea, it would do

so in error. D.I. 293 at 28 (“[I]f the Court decides to accept Google’s third characterization of the

abstract idea as ‘(two-tiered) real-time, reactive targeting,’ then Google failed to provide any Step

1 analysis based on this characterization at all, and the Court should not reach Step 2.”). Thus, it

is clear from the claim language that any purported inventive concept that Plaintiff claims is

provided by the ordered combination of all claim elements is not sufficient to save Claim 25 of the

Patent at Alice Step Two.

* * *

For the foregoing reasons, the Court grants Defendant’s First Motion for Summary

Judgment (D.I. 246).

D. The Court Denies-as-Moot Defendant’s Second Motion for Summary

Judgment

Since the Court grants Defendant’s First Motion for Summary Judgment (D.1. 246), there

is no longer any valid asserted claim. Thus, Defendant’s Second Motion for Summary Judgment

(D.I. 250) is denied-as-moot.

IV. CONCLUSION

For the foregoing reasons, the Court DENIES Plaintiff's First and Second Motions for

Summary Judgment (D.J. 259; D.I. 263). The Court GRANTS Defendant’s First Motion for

Summary Judgment (D.I. 246), and DENIES-AS-MOOT Defendant’s Second Motion for

Summary Judgment and Motion for Leave (D.I. 250; D.I. 330).

3]