Petition for Writ of Certiorari — Real Estate Alliance Ltd., Petitioner v. Move, Inc., et al.

Supreme Court briefAug 24, 2018

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No. 18In the

Supreme Court of the United States

real estate alliance ltd.,

Petitioner,

move, inc., et al.,

Respondents.

On Petition for a Writ of Certiorari to the United

States Court of A ppeals for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

Lawrence A. Husick

Counsel of Record

Laurence A. Weinberger

Lipton, Weinberger & Husick

P.O. Box 587

Southeastern, PA 19399

(610) 296-8259

lawrence@lawhusick.com

Counsel for Petitioner

282912

(800) 274-3321 • (800) 359-6859

QUESTION PRESENTED

In Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S.

Ct. 2347 (2014), this Court reaffirmed its two-part test

for determining whether an invention is patent-eligible

under 35 U.S.C. § 101: (1) whether the patent claims are

directed to a patent ineligible concept, such as laws of

nature, natural phenomena, or abstract ideas, and (2), if

so, whether the elements of the claim contain an “inventive

concept” that transforms the ineligible concept into an

invention that is patent-eligible; that is, whether the

claims present “something more” than that which was,

at the time of the invention, well-understood, routine and

conventional.

The proper role of fact-finding with respect to the

second part of the Alice test is the subject of a split among

the judges of the Federal Circuit, and having a clear

standard is of vital importance to all lower courts hearing

patent cases, as well as to patent examiners of the United

States Patent and Trademark Office, and all applicants

for letters patent.

The question presented is:

Is whether an ordered combination of elements

in a patent claim is “well-understood, routine and

conventional” to a skilled artisan in the relevant field

under Alice step two a question of fact?

PARTIES TO THE PROCEEDING

The Petitioner herein is Real Estate Alliance Ltd.

The Respondents herein are Move, Inc., National

Association of Realtors, National Association of Home

Builders, RE/MAX International, Inc., Advanced Access,

Norcal Gold, Inc., DBA RE/MAX Gold, Inc., Brad Korb,

ENeighborhoods, LLC, Christy Morrison, Orange County

Multiple Listing Service, Inc., DBA Southern California

MLS, Metropolitan Multi-List, Inc., DBA Georgia

Mls, Inc., Metrolist Services, Inc., Delaware Valley

Real Estate Information Network, Inc., DBA Trend,

Rapattoni Corporation, Birdview.com, Inc., DBA Birdview

Technologies, Delta Media Group, Inc., Pulte Homes, Inc.,

The Ryland Group, Inc., Shea Homes, Taylor Morrison,

Inc., FKA Taylor Woodrow, Inc., Keller Williams Realty,

Inc., Frank Howard Allen Realtors, Alain Pinel Realtors,

Inc., Paymon Ghafouri, National Association of New Home

Builders, Avalonbay Communities, Inc., Essex Property

Trust Inc., BRE Properties, Inc., Riverstone Residential

Group, LLC, First American Corporation, Fidelity

National Real Estate Solutions, LLC, IHomefinder, Inc.,

CIS Data Systems, Inc., Diverse Solutions, LLC and

Wanisoft Corporation.

iii

Rule 29.6 Statement

Real Estate Alliance, Ltd. is a private company. It

has no parent corporation and no publicly held corporation

owns 10% or more of its stock.

TABlE OF CONTENTS

Page

QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . . . . . . i

PARTIES TO THE PROCEEDING . . . . . . . . . . . . . . . . ii

Rule 29.6 Statement . . . . . . . . . . . . . . . . . . . . . . . iii

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . iv

TABLE OF APPENDICES . . . . . . . . . . . . . . . . . . . . . . . vi

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . viii

OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

STATUTE INVOLVED . . . . . . . . . . . . . . . . . . . . . . . . . . 2

INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

THE INVENTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

THE PATENTS IN SUIT . . . . . . . . . . . . . . . . . . . . . . . . 3

PROCEDURAL HISTORY . . . . . . . . . . . . . . . . . . . . . . . 7

REA S ONS T O GR A N T A W RI T OF

CERTIORARI . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Step Two of the Alice Test Involves Questions of

Fact . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Table of Contents

Page

Both Courts Below Disregarded the Factual

Record in Their Alice Analysis . . . . . . . . . . . . . 19

T he Pat ent s -i n- Su it Cl a i m Pat ent able

Improvements to Computer User Interface

Technology . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

The District Court Found Most Material

Questions of Fact in Dispute, But Still

Managed to Find the Claimed Invention WellUnderstood, Routine And Conventional . . . . . . 22

The District Court Failed to Render a Separate

Judgment in the Phase 2 Consolidated

Action . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

The Record Lacks Any Findings Sufficient

to Invalidate the ’576 Patent . . . . . . . . . . . . . . . . 24

The District Court’s Invalidation of the

’576 Patent Contradicted its Opinion

and Improperly Terminated REAL’s

Pe n d i n g C l a i m s o f I n f r i n g e m e n t

by the Secondary Defendants . . . . . . . . . . . . . . . 25

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

TABlE OF APPENDICES

Page

A ppendix A — A P PL ICAT ION F OR

EXTENSION OF TIME TO the SUPREME

C OU RT OF T H E U N I T ED S TAT E S ,

Dated June 15, 2018 . . . . . . . . . . . . . . . . . . . . . . . 1a

Appendix b — ON PETITION FOR PANEL

REHEARING AND REHEARING EN BANC

TO the United States Court of

Appeals for the Federal Circuit,

filed march 30, 2018 . . . . . . . . . . . . . . . . . . . . . . 6a

A ppendix c — opinion of the

UNITED STATES COURT OF APPEALS

F OR T H E F EDER A L C I R C U I T,

dated February 1, 2018 . . . . . . . . . . . . . . . . . . . 9a

Appendix D — JUDGMENT of the united

states DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA,

FILED DECEMBER 16, 2016 . . . . . . . . . . . . . . . . . 29a

Appendix E — joint status report

IN the united states district

court, central district of

california , western division,

filed december 15, 2016 . . . . . . . . . . . . . . . . 31a

A ppendix F — C I V I L M I N U T E S –

GENERAL of the UNITED STATES

DISTRICT COURT CENTRAL DISTRICT OF

CALIFORNIA, FILED DECEMBER 1, 2016 . . . 42a

vii

Table of Appendices

Page

A ppendix G — declaration of

mark tornetta in the united

states district court for

the central district of

california , western division,

filed july 15, 2016 . . . . . . . . . . . . . . . . . . . . . . . 90a

Appendix H — declaration of dennis

e. shasha in the united states

district court for the central

district of california, western

division, filed july 15, 2016 . . . . . . . . . . . . .93a

Appendix I — JOINT STATUS REPORT

in the united states DISTRICT

C O U R T, C E N T R A L DI S T R IC T O F

CA LIFORNI A , W ESTERN DI V ISION,

FILED MAY 05, 2016 . . . . . . . . . . . . . . . . . . . . . . . . 99a

Appendix J — opinion of the united

states district court . . . . . . . . . . . . . . . . 109a

viii

TABlE OF CITED AUTHORITIES

Page

CASES

Aatrix Software, Inc. v.

Green Shades Software, Inc.,

882 F.3d 1121 (Fed. Cir. 2018) . . . . . . . . . 13, 14, 15, 16

Accenture Global Services, GmbH v.

Guidewire Software, Inc.,

728 F.3d 1336 (Fed. Cir. 2013) . . . . . . . . . . . . . . . . . . 14

Akamai Techs., Inc. v. Limelight Networks, Inc.,

797 F.3d 1020 (Fed. Cir. 2015) (en banc) . . . . . . . . . . . 9

Alice Corp. Pty. Ltd. v. CLS Bank Int’l.,

134 S. Ct. 2347 (2014) . . . . . . . . . . . . . . . . . . . . . passim

Ariosa Diagnostics, Inc. v. Sequenom, Inc.,

809 F.3d 1282 (Fed. Cir. 2015) . . . . . . . . . . . . . . . . . . 12

BASCOM Global Internet Servs., Inc. v.

AT&T Mobility LLC,

827 F.3d 1341 (Fed. Cir. 2016) . . . . . . . . . . . . . . . . . . 12

Berkheimer v. HP Inc.,

881 F.3d 1360 (Fed. Cir. 2018), reh’g den.

http://www.cafc.uscourts.gov/sites/default/

files/opinions-orders/17-1437.Order.

5-25-2018.1.pdf . . . . . . . . . . . . . . . . . . . . . . . . . . passim

CBS, Inc. v. Merrick,

716 F.2d 1292 (9th Cir. 1983) . . . . . . . . . . . . . . . . 26-27

Cited Authorities

Page

Exergen Corp. v. Kaz USA, Inc.,

2018 WL 1193529 (Fed. Cir. Mar. 8, 2018) . . . . . . . . 15

Hall v. Hall,

584 U.S. ____ (2018) . . . . . . . . . . . . . . . . . . . . . . . . . . 24

Invue Sec. Prods. Inc. v. Mobile Tech, Inc.,

No. 3:15-cv-00610-MOC-DSC,

2016 WL 1465263 (W.D.N.C Apr. 14, 2016) . . . . . . . 18

Kaavo Inc. v. Amazon.com, Inc.,

Nos. 15-638-LPS-CJB, 15-640-LPS-CJB,

2016 WL 6562038 (D. Del. Nov. 3, 2016) . . . . . . . . 17-18

McRO, Inc. v. Bandai Namco Games Am. Inc.,

837 F.3d 1299 (Fed. Cir. 2016) . . . . . . . . . . . . . . . . . . . 5

Mayo Collaborative Services, dba Mayo

Medical Laboratories, et al. v.

Prometheus Laboratories, Inc.,

566 U.S. 66 (2012) . . . . . . . . . . . . . . . . . . . . . . . . . 11, 14

Move, Inc., et al. v. Real Estate Alliance, Ltd.,

__ Fed. Appx. __; 2018 WL 656377

(Fed Cir. 2018) Federal Circuit Appeal

No. 2017-1463, dated February 1, 2018,

reh’g den., March 30, 2018 . . . . . . . . . . . . . . . . . . . . . 1

Move, Inc. v. Real Estate Alliance Ltd.,

221 F. Supp. 3d 1149 (C.D. Cal. 2016) . . . . . . . . . . . 1, 9

Cited Authorities

Page

Move, Inc. v. Real Estate Alliance Ltd.,

413 F. App’x 280 (Fed. Cir. 2011) . . . . . . . . . . . . . . . . . 9

Move, Inc. v. Real Estate Alliance Ltd.,

No. CV 07-2185, 2016 WL 9080238

(C.D. Cal. Apr. 25, 2016) . . . . . . . . . . . . . . . . . . . . . . . . 9

Sound View Innovations, LLC v. Hulu, LLC,

CV17-04146 JAK (C.D. Cal. Apr. 11, 2018) . . . . . . . . 18

United States v. Olano,

507 U.S. 725 (1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Verint Systems Inc. v. Red Box Recorders Ltd.,

226 F. Supp. 3d 190 (S.D.N.Y. 2016) . . . . . . . . . . . . . 17

PAPERS

Paul R. Gugliuzza, The Procedure of Patent

Eligibility, Paper Presented at the Chicago

IP Colloquium at the Chicago-Kent College

of Law (Jan. 23, 2018), available at http://

chicagoip.com/files/2018/01/Gugliuzza.pdf . . . . . . . . 12

STATUTES

28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

28 U.S.C. § 1331 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7, 8

Cited Authorities

Page

28 U.S.C. § 1338 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7, 8

28 U.S.C. § 2201 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

35 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim

35 U.S.C. § 102 . . . . . . . . . . . . . . . . . . . . . . . . 11, 14, 21, 23

35 U.S.C. § 103 . . . . . . . . . . . . . . . . . . . . . . . . . . . 11, 21, 23

35 U.S.C. § 112 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

RULES

Fed. R. Civ. P. 54(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

This petition asks the Court to resolve an acknowledged

intra-circuit split on an important issue of patent law: What

is the proper role of fact-finding in the determination of

whether a claimed invention is well-understood, routine

and conventional? Several of the judges of the Federal

Circuit hold that this is a pure question of law, while others

hold that it is a question of law that requires findings

of fact. Judge Lourie has written that this question,

“requires higher intervention…” Real Estate Alliance

Ltd. (“REAL”) petitions for a writ of certiorari to the

United States Court of Appeals for the Federal Circuit.

This Court should grant REAL’s certiorari petition to

create uniformity among panels of the Federal Circuit and

to provide much-needed guidance to the District Courts

and to the United States Patent and Trademark Office

regarding the role fact-finding in eligibility analysis under

35 U.S.C. § 101.

OPINIONS BELOW

The Federal Circuit’s decision in Move, Inc., et al. v.

Real Estate Alliance, Ltd. is reported at __ Fed. Appx. __;

2018 WL 656377 (Fed Cir. 2018) Federal Circuit Appeal No.

2017-1463, dated February 1, 2018, reh’g. den., March 30,

2018 and reproduced at Pet.App. 9-28. The District Court’s

opinion granting summary judgment for respondent is

reported at Move, Inc. v. Real Estate Alliance Ltd., 221

F. Supp. 3d 1149 (C.D. Cal. 2016) and reproduced at Pet.

App. 42-89.

JURISDICTION

The Federal Circuit entered judgment on February

1, 2018. Pet.App. 29-30. On March 30, 2018, the Federal

Circuit denied REAL’s petition for panel rehearing and

rehearing en banc. Id. at 6-8. On June 25, 2018, the Chief

Justice granted REAL an extension of time to file this

petition until August 27, 2018. This Court has jurisdiction

under 28 U.S.C. § 1254(1).

STATUTE INVOLVED

35 U.S.C. § 101 provides, “Whoever 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.”

INTRODUCTION

THE INVENTION

Shortly after Inventor Mark Tornetta’s 1982 graduation

from the University of Pennsylvania with a Bachelor of

Science degree in System Science and Engineering, he

purchased a very early IBM Personal Computer equipped

with two floppy disk drives, a green phosphor monitor,

and a 1200 baud telephone modem. Because of his family

associations, he was familiar with real estate industry

practices in the use of “multiple listing services” which

were computerized databases of real estate available for

lease or sale that were used to print weekly hard copy

listing books that were delivered to brokers and agents,

and in some cases, could be used remotely over telephone

lines with portable text-based (non-graphical) computer

terminal devices. In 1982, the multiple listing system

existed as a database on a mainframe computer, and real

estate professionals were able to search the database

by an index number (“MLS Number”) or by property

characteristics such as ZIP code, township, number of

bedrooms, bathrooms, or type of property. The results

were printed out in text form as a list. The systems did

not contain geographic location information for properties

including “geocoding” or neighborhood information (such

as the locations of schools, shopping centers, roadways,

or public transportation). Each county’s properties were

stored in a separate system. As a result, finding properties

in adjacent counties required a user to access multiple

systems and to perform separate searches.

Inventor Tornetta recognized that the information

in the multiple listing systems could be combined with

the power of his personal computer to create a new and

useful way to locate available properties in the databases,

by using maps to show areas of interest to potential

buyers, rather than arcane codes representing townships

and neighborhoods. In 1983, he set out to develop a

computer system that would permit a map to be used to

locate available properties. By 1985, he was drawing his

own computerized maps, and plotting his own location

information on those maps.

THE PATENTS IN SUIT

On March 19, 1986, Inventor Tornetta filed his first

patent application. He continued to develop his invention,

and on April 24, 1989, he filed a “continuation-in-part”

patent application based on his earlier application, which

had been approved for issue by the United States Patent

and Trademark Office as United States Patent 4,870,576.

Pet.Supp.App. 1-22. In this second application, he added

textual description of the use of a mouse or similar device

for performing certain operations, and further qualified

the meaning of “available real estate” to further claim

the types of properties that could be located. He also

specifically disclosed that properties appeared on his

maps as dots on the computer screen. On July 16, 1991,

the Patent Office issued United States Patent 5,032,989.

Pet.Supp.App. 23-44.

The patents-in-suit relate to methods for geographic,

interactive graphical user interfaces used for locating

available real estate properties stored in a computer

database, employing zoomable maps.

These figures from the ’989 patent illustrate the user

interface invention. U.S. Patent 5,032,989, p. 3.

The invention pre-dates the commercial Internet,

and it was a precursor to every one of today’s ubiquitous

mapping applications, which have come to be an essential

part of the lives of all smartphone users.

The patents-in-suit claim important and pioneering

improvements to computer functionality that are patent

eligible because they derive their meaning as user

interface improvements in computing in the mid-1980s,

resist transfer to other technical contexts, and cannot

be implemented within the human mind (because human

minds lack essential components, such as the computer

display screen that the Federal Circuit required when it

construed the claims of the ’989 Patent.) See McRO, Inc. v.

Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed.

Cir. 2016). Properly viewed from the context of computing

in the mid-1980s, (1) there were no digital mapping

services or pre-existing mapping datasets that could

be zoomed to display a higher level of detail. (2) There

were no databases of available properties containing the

mathematical representation of the geographic locations.

(3) There was no geographic graphical user interface to

enable a user to interact with such databases. (4) There was

only primitive software that could manipulate graphical

and geographic information. In short, one of ordinary

skill in the art would (and the United States Patent and

Trademark Office did) conclude that the invention went

far beyond that which was, at the time, well-understood,

routine and conventional. For these reasons, the United

States Patent and Trademark Office issued the patents.

According to the ’989 patent, the user interface begins

by identifying a geographic region of interest and then

selecting an inner area within this geographic region by

“designat[ing] boundaries on a map displayed on [the]

screen.” ’989 patent, Abstract. The selected area is then

“zoomed in on and a second area is selected within the

zoomed region.” Id. The zoom feature permits users

to “change the world coordinate display” such that the

“display now appears to have zoomed down closer to

earth.” Id. at col. 2 ll. 1–4, col. 9 ll. 52–57. The resulting

map is, “displayed with greater detail,” i.e., not just as

a magnified view of the original map, but containing

details not present on the original map at all. Id. at col.2

ll.4–10. The selected area “is then cross-referenced with

the database of available properties whose approximate

locations are then pictorially displayed on screen.” Id.,

Abstract.

The patent claims a user interface invention that

depicts the geographic location of available properties on

a zoomable map displayed on a screen. Claim 1 of the ’989

patent recites this pioneering improvement in computer

database user interfaces:

1. A method using a computer for locating available

real estate properties comprising the steps of:

creating a database of the available real estate

properties;

displaying a map of a desired geographic area;

selecting a first area having boundaries within

the geographic area;

d) zooming in on the first area of the displayed map

to about the boundaries of the first area to display

a higher level of detail than the displayed map;

displaying the zoomed first area;

selecting a second area having boundaries within

the zoomed first area;

g) displaying the second area and a plurality

of points within the second area, each point

representing the appropriate geographic location

of an available real estate property; and

h) identifying available real estate properties within

the database which are located within the second

area.

Id. at col. 15 l. 33 – col. 16 l. 3.

PROCEDURAL HISTORY

This action commenced in 2007 when Move, Inc.

(“Move”) filed suit against Real Estate Alliance Ltd.

(“REAL”) in the U.S. District Court for the Central

District of California seeking a declaratory judgment

under 28 U.S.C. § 1331, 1338, and 2201, that United

States Patents 5,032,989 and 4,870,576 (the “’989 and

’576 patents”) were invalid and not infringed by Move’s

websites, including realtor.com and others.

REAL then sued the National Association of Realtors

(“NAR”), the National Association of Home Builders

(“NAHB”), and a number of real estate brokers, agents,

multiple listing services, home builders, and rental

property owners and managers under 28 U.S.C. § 1331,

1338 for infringing the ’989 and ’576 patents. REAL’s

complaint asserted infringement not only by use of the

Move websites, and but also separately by each defendant’s

individual website.

The District Court consolidated the two cases

and entered a case management order dividing the

litigation into two phases. Phase 1 would resolve REAL’s

infringement claims against Move, NAR, and NAHB

regarding Move’s websites, as well as issues relating to

the validity or enforceability of the ’989 and ’576 patents.

Phase 2 would address REAL’s infringement claims

against the remaining defendants (“the Secondary

Defendants”) based on their individual websites, i.e.,

non-Move websites, as well as liability issues if the Move

websites were found to infringe in Phase 1. All of REAL’s

claims against the Secondary Defendants were stayed

during Phase 1. No answers or motions were filed, and the

Secondary Defendants agreed to be bound by any validity,

enforceability, or claim construction determinations made

in Phase 1, as well as any finding that a Move website

infringed the ’989 or ’576 patents.

In Phase 1 of the litigation the District Court issued

a claim construction order addressing claim construction

disputes in both patents. Based on the District Court’s

constructions, REAL stipulated to noninfringement of

both patents by the Primary Defendants, and appealed

to the Court of Appeals for the Federal Circuit (“Federal

Circuit”). In its appeal, REAL chose to continue to assert

only the ’989 patent against the Primary Defendants.

The Federal Circuit determined that the District

Court had erred in construing the claims of the ’989

patent and it thus vacated and remanded. See Move, Inc.

v. Real Estate Alliance Ltd., 413 F. App’x 280, 282 (Fed.

Cir. 2011). On remand, Move sought summary judgment

of noninfringement of the ’989 patent. The District

Court granted Move’s motion in a 2012 opinion because

it concluded that Move was not liable for direct or joint

infringement of the ’989 patent. REAL again appealed,

and the case was remanded to the District Court in view

of ongoing changes in the law of divided infringement

resulting from the decision in Akamai Techs., Inc. v.

Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015)

(en banc).

On remand, Move sought summary judgment that

REAL had waived its divided infringement claims against

Move and public users of its websites. The District Court

granted Move’s motion, ruling that REAL had waived

its claims by implication. See Move, Inc. v. Real Estate

Alliance Ltd., No. CV 07-2185, 2016 WL 9080238, at *2–4

(C.D. Cal. Apr. 25, 2016).

In a subsequent motion, Move sought summary

judgment that the ’989 patent was invalid under 35 U.S.C.

§ 101. The District Court granted the motion. Move, Inc. v.

Real Estate Alliance Ltd., 221 F. Supp. 3d 1149 (C.D. Cal.

2016) (“Eligibility SJ Op.”) (citing Alice Corp. Pty. v. CLS

Bank Int’l., 134 S. Ct. 2347 (2014)). In the Eligibility SJ

Op, the District Court stated: “While the parties have not

squarely addressed the question whether the ’576 Patent

is invalid under 35 U.S.C. § 101, it appears—though we

do not decide—that our ruling with respect to the ’989

Patent may invalidate the ’576 Patent as well.” Id. at 1174.

(emphasis added)

Believing that it was preserving its ’576 patent

infringement claims against the Secondary Defendants

for their individual websites, and having received no notice

that the Phase 2 stay had been lifted (because the Court

never did so), REAL joined with the defendants in filing

a status report as required by the District Court. That

report stated, in pertinent part,

[T]he Parties are all in agreement that the

Court’s Order [invalidating the ’989 patent], in

addition to its Order of April 25, 2016 holding

that REAL has waived its right to proceed on

a theory of divided direct infringement under

§ 271(a), effectively resolves all issues to this

action, including all issues related to REAL’s

claims against the Secondary Defendants.

For its part, REAL, despite its belief that

the Court’s Orders are factually and legally

incorrect, agrees that in order for it to pursue

its fourth appeal to the Court of Appeals for

the Federal Circuit, it should join with the

other parties in this report. Accordingly, the

Parties jointly request that the Court enter

Judgment of Non-Infringement and Invalidity

in favor of Plaintiffs Move, Inc., National

Association of Realtors, National Association of

Homebuilders, and all Secondary Defendants.

Pet.App. 32 (emphases added).

Thereafter, the District Court entered a single

judgment, holding not only the ’989 patent invalid, but

also, without predicate argument or motion, or making

findings of fact, that the ’576 patent was invalid under 35

U.S.C. § 101 as well. REAL appealed.

No court has ever answered the question, “As of

what date was the Tornetta invention well-understood,

routine and conventional, and by what proof?” The

District Court denied motions seeking summary judgment

of invalidity under sections 102 and 103 of the Patent

Act because it could not determine, as a matter of law,

whether the ’989 patent was entitled to the priority date

of its parent application, the ’576 patent. In reaching its

holding invalidating the ’989 patent, the District Court

disregarded uncontroverted fact and expert testimony,

and ruled, as a matter of law, that the claimed invention

was well-understood, routine and conventional, a holding

that is belied both by logic and the uncontroverted record

in this case.

The Federal Circuit affirmed the judgment of the

District Court, finding the ’989 patent invalid under 35

U.S.C. § 101 as abstract, and finding that REAL had, by

nothing more than joining the status report, conceded

invalidity of the ’576 patent. Having pursued four appeals

to the Federal Circuit over more than eleven years, REAL

now petitions this Court for a writ of certiorari.

REASONS TO GRANT A WRIT OF CERTIORARI

Step Two of the Alice Test Involves Questions of Fact

In Alice Corp. Pty. v. CLS Bank Int’l., 134 S. Ct. 2347

(2014), this Court, citing Mayo Collaborative Services,

dba Mayo Medical Laboratories, et al. v. Prometheus

Laboratories, Inc., 566 U.S. 66 (2012), instructed that

each claim element and ordered combination of elements

should be reviewed to determine whether it was previously

known to the industry. This, of course, is a factual matter,

requiring knowledge of (1) what was known, (2) when it

became known, and (3) by whom it was known. The issue

of the proper role of fact-finding with respect to the second

part of the Alice test is of vital importance to all lower

courts hearing patent cases, to patent examiners, and to

applicants for letters patent. It is especially important

that this Court speak with a clear and unified voice on

this matter.

Commentators have noted that, “there exist deep

conflicts in the case law about whether eligibility is a

question of law, fact, or a little of both, and that these

conflicts continue to plague the lower courts.” 1 This

conflict is particularly notable as an intra-circuit split at

the Federal Circuit.

Federal Circuit Judges Moore, Taranto, Stoll, and

Newman have agreed with this Court that the eligibility

analysis is not a pure question of law because the issue

of whether an invention is sufficiently innovative must

be evaluated in light of the scientific and historic facts.

Berkheimer v. HP Inc., 881 F.3d 1360, 1364 (Fed.

Cir. 2018); see also BASCOM Global Internet Servs.,

Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1354 (Fed.

Cir. 2016) (Newman, J., concurring) (urging courts to

analyze patentability rather than eligibility when issues

raised by step two of the Alice test and the prior art are

coextensive); Ariosa Diagnostics, Inc. v. Sequenom,

Inc., 809 F.3d 1282, 1294 (Fed. Cir. 2015) (Newman, J.

dissenting) (criticizing decision finding patent ineligible

1. Paul R. Gugliuzza, The Procedure of Patent Eligibility, at

25, Paper Presented at the Chicago IP Colloquium at the ChicagoKent College of Law (Jan. 23, 2018), available at http://chicagoip.

com/files/2018/01/Gugliuzza.pdf.

on breakthrough invention that “is novel and unforeseen,

and is of profound public benefit.”).

On the other hand, Judges Reyna, Wallach and Lourie

have held that § 101 is a purely legal question, in which

factual considerations should play no part. Judge Reyna

dissented in Aatrix, “I respectfully disagree with the

majority’s broad statements on the role of factual evidence

in a §101 inquiry. Our precedent is clear that the §101

inquiry is a legal question.” Aatrix Software, Inc. v. Green

Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018). As

demonstrated infra, this position is not in accord with this

Court’s approach in Alice.

On February 8, 2018, one week after its decision in

this case, the Federal Circuit clarified the standard for

determination of whether an invention is well-understood,

routine and conventional. The Federal Circuit held in a

precedential decision that although eligibility under 35

U.S.C. §101 is a question of law, an essential component

part of that determination is a question of fact, to be

decided on the basis of a sufficient record establishing

clear and convincing evidence.

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. Any

fact, such as this one, that is pertinent to the

invalidity conclusion must be proven by clear

and convincing evidence. Like indefiniteness,

enablement, or obviousness, whether a claim

recites patent eligible subject matter is a

question of law which may contain underlying

facts (emphasis added).

Berkheimer at 1368. In support of this statement, the

Federal Circuit cited to similar language in Accenture

Global Services, GmbH v. Guidewire Software, Inc., 728

F.3d 1336 (Fed. Cir. 2013), as well as Justice Breyer’s

statement from Mayo Collaborative Services, dba Mayo

Medical Laboratories, et al. v. Prometheus Laboratories,

Inc., 566 U.S. 66 (2012) that the §101 inquiry may overlap

with fact-sensitive inquiries such as novelty under §102.

[T]he 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. Any

fact, such as this one, that is pertinent to the

invalidity conclusion must be proven by clear

and convincing evidence.

Berkheimer, 881 F.3d at 1368.

Whether something is well-understood, routine,

and conventional to a skilled artisan at the

time of the patent is a factual determination.

Whether a particular technology is wellunderstood, routine, and conventional goes

beyond what was simply known in the prior art.

The mere fact that something is disclosed in a

piece of prior art, for example, does not mean it

was well-understood, routine, and conventional.

Id.; accord, Aatrix at 1130 (“Whether the claim elements

or the claimed combination are well-understood, routine,

conventional is a question of fact.”)

The Federal Circuit’s decisions in Berkheimer and

Aatrix make it clear that this case was wrongly decided.

Before the District Court and the Federal Circuit,

Petitioner showed that many material facts about

the claimed invention, including that it was not wellunderstood, routine and conventional were in dispute.

After finding that most of the disputed material facts

precluded granting of numerous summary judgment

motions, REAL’s arguments regarding whether the

invention survived step two of Alice were dismissed out

of hand by a Federal Circuit panel comprised of Judges

Lourie, Wallach and Stoll – a panel having a majority that

holds, contrary to the holding in Alice, that step two of

Alice is a pure question of law. Berkheimer and Aatrix,

however, establish that summary judgment on § 101

grounds is improper if the patentee raises genuine issues

of material fact. Under Alice, Berkheimer and Aatrix,

the District Court’s decision should have been reversed.

The Federal Circuit has further clarified its position

in Exergen Corp. v. Kaz USA, Inc., 2018 WL 1193529, *4

(Fed. Cir. Mar. 8, 2018) (“Like indefiniteness, enablement,

or obviousness, whether a claim is directed to patentable

subject matter is a question of law based on underlying

facts.”; “Something is not well-understood, routine, and

conventional merely because it is disclosed in a prior

art reference. There are many obscure references that

nonetheless qualify as prior art.”)

Under Alice step one, the District Court wrongly held

that the claims of the ’989 patent were directed to the

abstract idea of, “collecting and organizing information

about available real estate properties and displaying this

information on a digital map that can be manipulated

by the user.” Id. at 1162. The District Court ignored the

user interface aspects of the invention, and then wrongly

determined under Alice step two that the claims lacked an

inventive concept because nothing in the claim limitations

or their ordered combination transformed the abstract

idea into a patent-eligible application. Id. at 1164–65. The

Federal Circuit affirmed. Both courts are wrong on the

facts, and, more importantly, wrong on the law.

In denying rehearing en banc in both Berkheimer and

Aatrix, a clear intra-circuit split among the judges of the

Federal Circuit was on display.

Whether a claim element or combination of

elements would have been well-understood,

routine, and conventional to a skilled artisan in

the relevant field at a particular point in time

may require “weigh[ing] evidence,” “mak[ing]

credibility judgments,” and addressing “narrow

facts that utterly resist generalization.” Id. at

967 (quoting Pierce v. Underwood, 487 U.S.

552, 561–62 (1988)). The Supreme Court in

Alice asked whether the claimed activities were

“previously known to the industry,” and in Mayo

asked whether they were “previously engaged

in by researchers in the field.” Alice Corp. Pty.

v. CLS Bank Int’l, 134 S. Ct. 2347, 2359 (2014);

Mayo Collaborative Servs. v. Prometheus

Labs., Inc., 566 U.S. 66, 73 (2012). Indeed,

the Court recognized that “in evaluating the

significance of additional steps, the §101 patenteligibility inquiry and, say, the § 102 novelty

inquiry might sometimes overlap.” Mayo, 566

U.S. at 90. “[C]ase law from the Supreme Court

and this court has stated for decades that

anticipation is a factual question.” Microsoft

Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed.

Cir. 2017). While the ultimate question of patent

eligibility is one of law, it is not surprising that

it may contain underlying issues of fact. Every

other type of validity challenge is either entirely

factual (e.g., anticipation, written description,

utility), a question of law with underlying facts

(e.g., obviousness, enablement), or a question

of law that may contain underlying facts (e.g.,

indefiniteness).

http://www.cafc.uscourts.gov/sites/default/files/opinionsorders/17-1437.Order.5-25-2018.1.pdf, p.6 (footnotes

omitted)

In his Berkheimer rehearing dissent, Judge Lourie

concluded, “Resolution of patent-eligibility issues requires

higher intervention, hopefully with ideas reflective of the

best thinking that can be brought to bear on the subject.”

Id. at 18. Petitioner respectfully requests that this Court

accept Judge Lourie’s challenge.

The need for a clear standard is evident in the writings

of many district courts that have expressed concern about

resolving eligibility issues on an undeveloped record. Verint

Systems Inc. v. Red Box Recorders Ltd., 226 F. Supp. 3d

190, 192-93 (S.D.N.Y. 2016) (explaining “the current fad

of ineligibility motions in patent cases has, in certain

respects, gotten ahead of itself” and noting that “courts

should make such determinations on a proper record”);

Kaavo Inc. v. Amazon.com, Inc., Nos. 15-638-LPS-CJB,

15-640- LPS-CJB, 2016 WL 6562038, at *11 (D. Del. Nov.

3, 2016) (asking “how, on this record, would the Court be

in a position to conclusively determine” whether, under

the second step of Alice that the claim involved merely

“conventional activities?”); Invue Sec. Prods. Inc. v.

Mobile Tech, Inc., No. 3:15-cv-00610-MOC- DSC, 2016

WL 1465263, at *2 (W.D.N.C Apr. 14, 2016) (noting that

numerous courts have declined to rule on eligibility

at the pleading stage, “finding claim construction and

additional factual development necessary to resolution of

the invalidity question”). Still other district courts have

taken their cue from Berkheimer and have denied motions

to dismiss, holding that matters of material fact must be

established before a ruling on eligibility may be made.

Sound View Innovations, LLC v. Hulu, LLC, CV17-04146

JAK (C.D. Cal. Apr. 11, 2018).

The United States Patent and Trademark Office,

recognizing that what is well-understood, routine and

conventional is a question of fact, has issued a memorandum

providing guidance to all patent examiners. (https://

w w w.uspto.gov/sites/default/files/documents/memoberkheimer-20180419.PDF) That memorandum directs

examiners to present facts during patent prosecution to

establish that a claim element or combination of elements

is well-understood, routine, and conventional. Still, doubt

remains, as contrary viewpoints on the Federal Circuit

continue to be expressed.

That such concerns exist in this case, after eleven

years of litigation, numerous motions for summary

judgment, and four appeals to the Federal Circuit serves

as an object lesson in the need for this Court to speak with

special clarity on the issue.

Both Courts Below Disregarded the Factual Record in

Their Alice Analysis

The claimed invention, disclosed and enabled in

the many logical flow charts contained in the figures

and the Appendix was neither well-known, routine, nor

conventional at the time of the invention, and the disclosed

method satisfies the “something more” of Alice step two.

REAL provided the District Court with the opinion

and fact testimony of its expert, Dr. Dennis Shasha of

New York University, which was uncontroverted, that at

the time of the patents, the claimed methods (particularly

the zoom to display a higher level of detail) were not wellunderstood, routine, or conventional. Although the District

Court said in its opinion that it accepted Dr. Shasha’s

sworn declaration as true, it then proceeded to ignore

the declaration, and without any counter argument of

record, inconsistently invalidated the ’989 Patent under

Alice step two.

Dr. Shasha testified by declaration, based on his

personal knowledge. (Pet.App. 93-98) The Federal Circuit

termed this testimony “conclusory”. In discounting the

testimony of REAL’s expert as conclusory, the Federal

Circuit effectively required REAL and its expert to have

proven a negative, namely: that there did not exist, at the

(undetermined) time of the invention, a well-understood,

routine, and conventional method of performing the

claimed steps. But such an inquiry was, in fact, conducted,

and we have the benefit of a full record: the United States

Patent Office searched for relevant prior art, and all that

was found is listed in the file histories of the patents-insuit. The Patent Office issued the patents-in-suit with

presumed full knowledge of what, at the relevant time,

was well-understood, routine and conventional to one of

ordinary skill in the art. Other prior art not of record in

the file history was presented to the District Court by

Move, was considered by that Court, and was determined

only to create genuine disputes of material fact, in the

denial of Move’s requested summary judgment. (Pet.

App. 68-86)

The inventor, Mr. Tornetta conf ir med by his

Declaration filed in the Patent Office, and Dr. Shasha also

testified that one of ordinary skill in the 1980s would have

understood that the claimed elements (zooming to display

a higher level of detail, displaying points on the zoomed

map on a computer screen, and identifying properties in

the database of available properties that are within the

second area, among others) were not well-understood,

routine, or conventional, and were, instead, an important,

non-abstract invention that represent an improved user

interface for a computer system.

The Federal Circuit concluded that this disclosed

method does not differ from “that which any programmer

would have used”, but based this conclusion on no factual

findings about what any programmer did use or could

have used at the relevant time. The Federal Circuit

stated, “REAL also has not pointed us to any portion of

the specification that fills this gap.” During oral argument,

REAL’s counsel directed the Court to the 218 page

Appendix in the File History, which discloses in full detail

how the inventor implemented his invention.

The Federal Circuit has, instead, used the inventor’s

enabling disclosure that the invention could be,

“implemented on an IBM or compatible personal computer

system” as a damning admission. This is a category error

akin to saying that because an inventor discloses that

a new rocket engine may be made from available steel

alloys, the engine’s structure is therefore well-understood,

routine and conventional.

The Patents-in-Suit Claim Patentable Improvements

to Computer User Interface Technology

None of the foregoing should be understood as an

attempt to conflate validity determinations under 35

U.S.C. §102 and §103, with those under §101, but rather,

as an illustration that there exists no factual record that

provides an adequate basis for summary judgment that

the patents-in-suit are invalid. In Berkheimer, the Federal

Circuit distinguished between whether a technology is

“known” in the sense of § 102 (e.g., publicly available) and

whether one of ordinary skill would find the technology

to be well-understood, routine, and conventional (e.g.,

something that this person of ordinary skill would consider

to be textbook knowledge or part of his or her ordinary

course of activities).

In the present case, there are no facts of record that

show that the claimed inventions were well-understood,

routine and conventional at the time they were made. The

record contains only conclusory inferences, improperly

drawn against REAL. The opinion and judgment of

the District Court contain no reasoning or evidence for

its position that the invention was well-known, routine

and conventional. Moreover, the intrinsic record itself

establishes sufficient facts regarding this issue in REAL’s

favor (i.e., statements regarding the prior art, the manner

in which the deficiencies of prior systems were overcome

in implementing the invention, and the particular logic

with which the computer was programmed to do so) to

have required a jury determination of the issue.

The District Court Found Most Material Questions

of Fact in Dispute, But Still Managed to Find the

Claimed Invention Well-Understood, Routine And

Conventional

The District Court was unable to determine whether

the ’989 patent was entitled to claim the priority date

of the ’576 patent, holding that a disagreement between

the expert witnesses created a dispute of material fact

on that issue. “As explained above, we find a genuine

dispute of material fact as to whether the ’989 Patent

is entitled to a priority date based on the effective filing

date of the ’576 Patent – March 19, 1986.” (Pet.App. 75)

Because the proper priority date of the ’989 patent could

not be determined as a matter of law, it is inescapable that

what was well-understood, routine and conventional as of

the (undetermined) priority date of the ’989 patent also

cannot be determined sufficiently to serve as a basis for

summary judgment.

Common sense dictates that the state of human

knowledge advances with time. Those phenomena once

ascribed to divine actions later become understood

through scientific experimentation. What was once

impossible later becomes ordinary, as humankind’s

development of new materials and methods is applied to

solve its challenges. An understanding of what is wellunderstood, routine and conventional to those of ordinary

skill in any art necessarily entails asking the question,

“As of what date?” With each publication of a technical

paper, patent application, and news article, the store of

well-understood, routine and conventional knowledge

advances, but unless a date may be fixed for the inquiry,

the question is vague, and the answer may be dangerously

incorrect. That is the reason that a bright line defining

the content of the “prior art” is employed in the context

of patentability determinations under §§ 102 and 103.

The District Court considered and denied summary

judgment motions regarding invalidity under 35 U.S.C. §§

102 and 103. It denied those motions, finding genuine issues

of material fact regarding the content and application of

the prior art. Again, although invalidity under §§ 102 and

103 are not identical to invalidity under § 101, the existence

of material questions of fact regarding the prior art should

inform the Court’s inquiry into the question of what was

well-understood, routine and conventional at the time of

invention for each of the patents in suit.

Although not identical in scope, the concepts of, “wellunderstood, routine and conventional” under Alice step

two, and sufficiency of disclosure in the context of a §112

challenge to validity are two sides of the same coin. If

something is well-understood, routine and conventional,

then it need not be completely disclosed in a patent

application, as one of ordinary skill in the art is presumed

to possess this knowledge. In the present case, Move

presented a summary judgment motion for a finding of

invalidity under §112. The District Court denied summary

judgment, finding that a genuine issue of material fact

existed. (Pet.App. 75) If the District Court could not

summarily rule on sufficiency of disclosure, it should not

have then ruled that the disclosed invention was wellunderstood, routine, and conventional. These two holdings

are mutually inconsistent.

The District Court Failed to Render a Separate

Judgment in the Phase 2 Consolidated Action

This Court has recently held that when actions are

consolidated, the cases retain their separate identities,

and trial courts must render separate judgments in each

consolidated action. Hall v. Hall, 584 U.S. ____ (2018).

Here, no such separate judgment was rendered, nor could

one have been, as the Phase 2 action was stayed after filing

of the complaint and entry of the case management order.

No answers, motions, discovery, hearings, or any other

proceedings are of record, and the stay imposed by the

District Court remained undisturbed throughout eleven

years of litigation in Phase 1. Only a bare and unexplained

judgment of invalidity was entered against REAL. This

defect, alone, is grounds for this Court to grant REAL’s

petition, vacate the judgment, and remand for a trial to

properly establish the facts.

The Record Lacks Any Findings Sufficient to Invalidate

the ’576 Patent

In its Eligibility SJ Op., the District Court provided

no reasoning or evidence, beyond a broad statement

of possibility that the ’576 Patent might be ineligible

under §101. (Pet.App. 88-89) The Claims of the ’576

Patent differ significantly from those of the ’989 Patent,

but have never been analyzed under Alice. Just as with

the ’989 patent, the intrinsic record itself establishes

sufficient facts regarding this issue in REAL’s favor

(i.e., statements regarding the prior art, the manner in

which the deficiencies of prior systems were overcome

in implementing the invention, and the particular logic

with which the computer was programmed to do so) to

have required a jury determination that the invention

was, at the time it was made, well-understood, routine,

and conventional.

The District Court’s Invalidation of the ’576 Patent

Contradicted its Opinion and Improperly Terminated

REAL’s Pending Claims of Infringement by the

Secondary Defendants

After refusing to find the ’576 patent invalid in

its Eligibility SJ Op., the District Court then entered

judgment invalidating the ’576 patent, stripping REAL

of its valuable patent rights and denying REAL all due

process. The judgment in Phase 1 that purported to

terminate the consolidated case was a complete surprise

to the parties, as the invalidation of the ’576 patent under

35 U.S.C. § 101 contradicted the District Court’s express

holding that the ’576 patent remained valid. No findings

of fact with respect to the ’576 patent are of record, nor

were there any conclusions of law. REAL placed the issues

squarely before the District Court in the joint status

report of May 5, 2016:

In response to the Court’s direction to identify

outstanding issues, REAL asserts that none of

its claims for relief has been adjudicated on the

merits, either as to the Phase 1 counterclaim

defendants or the Phase 2 counterclaim

defendants. Accordingly, except as to the issue

of waiver with respect to Claims I-III of REAL’s

Counterclaim (Dkt. 210), no issues, either of

liability or damages, have been decided in the

case. All issues remain outstanding as to Claims

IV-X of the REAL’s Counterclaim. All issues

except waiver remain outstanding with respect

to Claims I- III of REAL’s Counterclaim. All

of REAL’s defenses to each of Move’s claims

remains outstanding. This court did not reach

the merits of the issue of infringement on

remand from the Federal Circuit. By way of

example, there has been no ruling on whether

the Phase 2 counterclaim defendants infringe

when they operate in conjunction with the Phase

1 counterclaim defendants. REAL continues to

have the right to adjudicate that issue in Phase

2. ... If the Court does not enter a Rule 54(b)

judgment based on the waiver order, REAL

respectfully requests that the Court should

adjudicate all claims and all defenses as to all

parties.

(Pet.App. 99-108) The District Court never entered a

Rule 54(b) judgment, and failed to fully and properly

adjudicate REAL’s claims. Instead, the District Court

ignored REAL’s unequivocal statements of its pending

claims, swept those claims from its desk by finding the

’576 patent invalid, and retired from the federal judiciary.

The Federal Circuit determined that the Joint Status

Report evidenced REAL’s concession of invalidity of the

’576 patent. It strains credulity that REAL would, or

could have knowingly conceded invalidity, and waived

infringement claims that it had pursued for more than

eleven years, without addressing the many issues

attending summary invalidation of the earlier of its

patents. REAL and its counsel did not knowingly intend

to relinquish infringement claims against the secondary

defendants. CBS, Inc. v. Merrick, 716 F.2d 1292, 1295

(9th Cir. 1983); see also United States v. Olano, 507 U.S.

725, 733 (1993). REAL and its counsel did not know that

the statements in the Joint Status Report would be (or

could be) interpreted in this manner. REAL’s joinder in

the Status Report (which is not a pleading) should not be

taken to be indicative of a knowing waiver by REAL.

At the time REAL joined in submitting the Joint

Status Report, the ’576 Patent not been ruled invalid.

The Federal Circuit was factually incorrect when it

opined, “The district court’s directive also sought input

from the Secondary Defendants – parties who were not

litigating the issues in Phase 1 – which should have served

as another indicator that the parties needed to identify

any outstanding issues in either phase of the litigation.”

(Pet.App. 27) That the District Court sought input from

the secondary defendants was to be expected, as those

parties had agreed to be bound by the outcome of Phase 1

of the litigation, and many stand accused of infringement

by virtue of their use of the MOVE websites and systems.

To the extent that claims against the secondary

defendants arising from their use of the MOVE websites

were at an end, no reasonable person could have believed

that REAL’s claims of infringement of the ’576 Patent that

were not based on any of the secondary defendants’ use

of the MOVE system were being (or had already been)

decided. Those claims had long been stayed, and had

been explicitly identified as still-unresolved in the May

2016 status report, in which REAL explicitly requested

that the Court decide them. Only a defect of memory can

explain the District Court’s failure to address REAL’s

infringement claims against the Secondary Defendants,

and the Federal Circuit’s casting a blind eye to REAL’s

claims.

The Federal Circuit distorted the meaning of the

paragraph it quoted from the Joint Status Report by

intentionally omitting REAL’s statement regarding the

District Court’s errors of fact and law, and its intention

to appeal.(Pet.App. 26) Read as a complete quotation, the

Joint Status Report is not an unequivocal pleading which

the Court could have taken as an admission regarding

the ultimate issue of law – the validity of the ’576 patent.

CONCLUSION

For all of the foregoing reasons, Petitioner earnestly

solicits this Court to grant its petition for a writ of

certiorari to the Court of Appeals for the Federal Circuit,

to vacate the decision of the Federal Circuit, and to

remand for proceedings to establish sufficient facts upon

which to properly decide all issues.

August 24, 2018

Respectfully submitted,

Lawrence A. Husick

Counsel of Record

Laurence A. Weinberger

Lipton, Weinberger & Husick

P.O. Box 587

Southeastern, PA 19399

(610) 296-8259

lawrence@lawhusick.com

Counsel for Petitioner

APPENDIX

Appendix A FOR EXTENSION

APPENDIx A — APPlICATION

OF TImE TO tHE SUPREmE COURT OF THE

UNITED STATES, DatED JuNE 15, 2018

iN tHe sUPreme coUrt oF

tHe UNited states

No. 18-a__

real estate alliaNce ltd.,

Petitioner-Defendant/Counterclaimant,

move, iNc., NatioNal associatioN

oF realtors, NatioNal associatioN

oF Home BUilders,

Respondents-Plaintiffs/Counterclaim Defendants,

and

re/maX iNterNatioNal, iNc., advaNced

access, Norcal Gold, iNc., dBa re/maX

Gold, iNc., Brad KorB, eNeiGHBorHoods,

llc, cHristY morrisoN, oraNGe coUNtY

mUltiPle listiNG service, iNc., dBa

soUtHerN caliForNia mls, metroPolitaN

mUlti-list, iNc., dBa GeorGia mls, iNc.,

metrolist services, iNc., delaWare

valleY real estate iNFormatioN

NetWorK, iNc., dBa treNd, raPattoNi

corPoratioN, BirdvieW.com, iNc., dBa

Appendix A

BirdvieW tecHNoloGies, delta media

GroUP, iNc., PUlte Homes, iNc., tHe rYlaNd

GroUP, iNc., sHea Homes, taYlor morrisoN,

iNc., FKa taYlor WoodroW, iNc., Keller

Williams realtY, iNc., FraNK HoWard

alleN realtors, alaiN PiNel realtors,

iNc., PaYmoN GHaFoUri, NatioNal

associatioN oF NeW Home BUilders,

avaloNBaY commUNities, iNc., esseX

ProPertY trUst iNc., Bre ProPerties,

iNc., riverstoNe resideNtial GroUP, llc,

First americaN corPoratioN, FidelitY

NatioNal real estate solUtioNs, llc,

iHomeFiNder, iNc., cis data sYstems, iNc.,

diverse solUtioNs, llc,

WaNisoFt corPoratioN

Respondents-Defendants.

APPlICATION FOR EXTENSION OF TImE TO

FIlE A PETITION FOR A WRIT OF CERTIORARI

Laurence A. weInberger

Lawrence A. husIck

Counsel of Record

lIPTON, WEINBERGER & HUSICK

P.o. Box 587

southeastern, Pa 19399-0587

tel: (610) 296-8259

Counsel for Petitioner Real Estate Alliance Ltd.

Appendix A

RulE 29.6 StatEmENt

real estate alliance, ltd. is a private company. it has

no parent corporation and no publicly held corporation

owns 10% or more of the stock of real estate alliance,

ltd.

TO THE HONORABlE JOHN G. ROBERTS, JR.,

CHIEF JUSTICE OF THE SUPREmE COURT OF

THE UNITED STATES AND CIRCUIT JUSTICE FOR

THE FEDERAl CIRCUIT:

Pursuant to supreme court rules 13.5, and 22,

Petitioner respectfully requests a 60-day extension of

time, up to and including August 28, 2018, to file a petition

for a writ of certiorari to the United states court of

appeals for the Federal circuit to review that court’s

decision in Move, Inc., et al. v. Real Estate Alliance, Ltd.,

__ Fed. appx. __ (Fed cir. 2018) caFc appeal No. 20171463 (attached as exhibit a).

the jurisdiction of this court will be invoked under 28

U.S.C. § 1254(1), and the time to file a petition for a writ

of certiorari will expire without an extension on June 28,

2018. This application is timely because it has been filed

more than ten days prior to the date on which the time

for filing the petition is to expire.

this case presents a substantial and important

question of federal law: Whether patent eligibility under

35 U.S.C. § 101, and specifically the second step of the

Mayo/Alice framework, which requires determination

Appendix A

of whether something is well-understood, routine, and

conventional” is a factual determination.

the case law surrounding this issue is complex, and is

rapidly evolving. only one week after the judgment sought

to be reviewed here, the court of appeals for the Federal

circuit issued its judgment in Berkheimer v. HP Inc., __

Fed. appx. __ (Fed. cir. 2017-1437). on the basis of the

holding in Berkheimer, petitioner sought rehearing, or in

the alternative, rehearing en banc. the court of appeals

denied that motion without opinion.

on may 31, 2018, the court of appeals for the

Federal circuit denied rehearing in Berkheimer, stating,

“resolution of patent-eligibility issues requires higher

intervention, hopefully with ideas reflective of the best

thinking that can be brought to bear on the subject.”

Orders Denying Petition for Rehearing En Banc, Aatrix

Software, Inc. v. Green Shades Software, Inc., Fed. cir.

(may 31, 2018); Berkheimer v. HP Inc., Fed. cir. (may

31, 2018). lourie, J. concurring, p. 5. (http://www.cafc.

uscourts.gov/sites/default/files/opinions-orders/17-1437.

order.5-25-2018.1.pdf)

Petitioner respectfully suggests that this case presents

just such an opportunity for “higher intervention”. Further

cases continue to be decided on this issue on a near-weekly

basis, and numerous commentators have remarked that

case outcome is now entirely panel-dependent, marking

an intra-circuit split that requires resolution by this

court. counsel for petitioner requests this extension of

time to address such recent, numerous, and continuing

developments in the law.

Appendix A

accordingly, the petitioner respectfully requests that

an order be entered extending the time to file a petition

for a writ of certiorari for 60 days, up to and including

august 28, 2018.

dated: June 15, 2018

respectfully submitted,

/s laurence a. Weinberger

Laurence A. weInberger

Lawrence A. husIck

Counsel of Record

lIPTON, WEINBERGER & HUSICK

P.o. Box 587

southeastern, Pa 19399-0587

tel: (610) 296-8259

Counsel for Petitioner Real Estate Alliance Ltd.

APPENDIx B — Appendix

ON PETITION

FOR PANEl

REHEARING AND REHEARING EN BANC TO

thE UNItED StatEs Court of APPEals for

thE FEDEral CIrcuIt, fIlED march 30, 2018

UNited states court oF APPeals

For tHe Federal circuit

2017-1463

mOvE, INc., NATIONAL AssOcIATION

OF REALTORs, NATIONAL AssOcIATION

OF HOmE BUILDERs,

Plaintiffs/Counterclaim Defendants-Appellees,

RE/mAX INTERNATIONAL, INc., ADvANcED

AccEss, NORcAL GOLD, INc., DBA RE/mAX

GOLD, INc., BRAD KORB, ENEIGHBORHOODs,

LLc, cHRIsTY mORRIsON, ORANGE cOUNTY

mULTIPLE LIsTING sERvIcE, INc., DBA

sOUTHERN cALIFORNIA mLs, mETROPOLITAN

mULTI-LIsT, INc., DBA GEORGIA mLs, INc.,

mETROLIsT sERvIcEs, INc., DELAWARE

vALLEY REAL EsTATE INFORmATION

NETWORK, INc., DBA TREND, RAPATTONI

cORPORATION, BIRDvIEW.cOm, INc., DBA

BIRDvIEW TEcHNOLOGIEs, DELTA mEDIA

GROUP, INc., PULTE HOmEs, INc., THE RYLAND

GROUP, INc., sHEA HOmEs, TAYLOR mORRIsON,

INc., FKA TAYLOR WOODROW, INc.,

Counterclaim Defendants-Appellees,

Appendix B

KELLER WILLIAms REALTY, INc., FRANK

HOWARD ALLEN REALTORs, ALAIN PINEL

REALTORs, INc., PAYmON GHAFOURI,

NATIONAL AssOcIATION OF NEW HOmE

BUILDERs, AvALONBAY cOmmUNITIEs,

INc., EssEX PROPERTY TRUsT INc.,

BRE PROPERTIEs, INc., RIvERsTONE

REsIDENTIAL GROUP, LLc, FIRsT AmERIcAN

cORPORATION, FIDELITY NATIONAL REAL

EsTATE sOLUTIONs, LLc, IHOmEFINDER, INc.,

cIs DATA sYsTEms, INc., DIvERsE sOLUTIONs,

LLc, WANIsOFT cORPORATION,

Counterclaim Defendants,

REAL EsTATE ALLIANcE LTD.,

Defendant/Counterclaimant-Appellant,

EQUIAs TEcHNOLOGY DEvELOPmENT LLc,

Defendant/Counterclaimant.

Appeal from the United states District court

for the central District of california in Nos.

2:07-cv-02185-GHK AJW, 2:08-cv-01657-GHK-AJW,

Judge George H. King.

Appendix B

ON PETITION FOR PANEl REHEARING

AND REHEARING EN BANC

Before prost, Chief Judge, newman, LourIe, Dyk,

Moore, O’M alley, Reyna, Wallach, Taranto,

Chen, Hughes, and Stoll, Circuit Judges.

per CurIam.

ORDER

Appellant Real Estate Alliance Ltd. filed a combined

petition for panel rehearing and rehearing en banc. The

petition was referred to the panel that heard the appeal,

and thereafter the petition for rehearing en banc was

referred to the circuit judges who are in regular active

service.

Upon consideration thereof,

It Is Ordered That:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

The mandate of the court will issue on April 6, 2018.

For the Court

march 30, 2018

/s/ Peter R. marksteiner

Date Peter R. marksteiner

clerk of court

Appendix COF THE UNITED

APPENDIx C — OPINION

STATES COURT OF APPEAlS FOR THE

FEDERAl CIRCUIT, DaTED FEBruarY 1, 2018

UNited states coUrt oF aPPeals

For tHe Federal circUit

2017-1463

move, iNc., NatioNal associatioN

oF realtors, NatioNal associatioN

oF Home BUilders,

Plaintiffs/Counterclaim Defendants-Appellees,

re/maX iNterNatioNal, iNc., advaNced

access, Norcal Gold, iNc., dBa re/maX

Gold, iNc., Brad KorB, eNeiGHBorHoods,

llc, cHristY morrisoN, oraNGe coUNtY

mUltiPle listiNG service, iNc., dBa

soUtHerN caliForNia mls, metroPolitaN

mUlti-list, iNc., dBa GeorGia mls, iNc.,

metrolist services, iNc., delaWare

valleY real estate iNFormatioN

NetWorK, iNc., dBa treNd, raPattoNi

corPoratioN, BirdvieW.com, iNc., dBa

BirdvieW tecHNoloGies, delta media

GroUP, iNc., PUlte Homes, iNc., tHe rYlaNd

GroUP, iNc., sHea Homes, taYlor morrisoN,

iNc., FKa taYlor WoodroW, iNc.,

Counterclaim Defendants-Appellees,

10a

Appendix C

Keller Williams realtY, iNc., FraNK

HoWard alleN realtors, alaiN PiNel

realtors, iNc., PaYmoN GHaFoUri,

NatioNal associatioN oF NeW Home

BUilders, avaloNBaY commUNities,

iNc., esseX ProPertY trUst iNc.,

Bre ProPerties, iNc., riverstoNe

resideNtial GroUP, llc, First americaN

corPoratioN, FidelitY NatioNal real

estate solUtioNs, llc, iHomeFiNder, iNc.,

cis data sYstems, iNc., diverse solUtioNs,

llc, WaNisoFt corPoratioN,

Counterclaim Defendants,

real estate alliaNce ltd.,

Defendant/Counterclaimant-Appellant,

eQUias tecHNoloGY develoPmeNt llc,

Defendant/Counterclaimant.

February 1, 2018, decided

appeal from the United states district court for the

central district of california in Nos. 2:07-cv-02185GHK-aJW, 2:08-cv-01657-GHK-aJW,

Judge George H. King.

11a

Appendix C

Before LourIe, wallach, and stoll, Circuit Judges.

stoll, Circuit Judge.

this appeal marks the fourth installment in a

decades-long litigation saga between the parties. real

estate alliance ltd. (“real”), owner of U.s. Patent

Nos. 5,032,989 and 4,870,576, appeals the district court’s

summary judgment holding the ’989 patent invalid

for claiming ineligible subject matter and summary

judgment holding that real waived its claims of divided

infringement for the ’989 patent. real also challenges

the district court’s judgment invalidating the ’576 patent

based on the district court’s analysis of the ’989 patent

and the parties’ representations in a Joint status report.

Because we agree that the ’989 patent claims ineligible

subject matter, we need not decide whether real waived

its claims of divided infringement. We also detect no

error in the district court’s invalidation of the ’576 patent.

Accordingly, we affirm.

BaCKGrOuND

the ’989 patent is a continuation-in-part of the ’576

patent1 and relates generally to a method of searching

for real estate properties geographically on a computer.

according to the ’989 patent, a user begins the search by

identifying a geographic region of interest for acquiring

property and then selecting an inner area within this

1. Both the ’989 and ’576 patents were filed in the 1980s and

have since expired.

12a

Appendix C

geographic region by “designat[ing] boundaries on a map

displayed on [the] screen.” ’989 patent, abstract. the

selected area is then “zoomed in on and a second area is

selected within the zoomed region.” Id. the zoom feature

permits users to “change the world coordinate display”

such that the “size of the viewport remains constant” and

the “display now appears to have zoomed down closer to

earth.” Id. at col. 2 ll. 1-4, col. 9 ll. 52-57. the resulting

“[m]ap boundary lines are displayed with greater detail,”

i.e., not just as a magnified view of the original map.

Id. at col. 2 ll. 4-10. the selected area “is then crossreferenced with the database of available properties whose

approximate locations are then pictorially displayed on

screen.” Id., abstract.

claim 1 of the ’989 patent recites this improvement:

1. a method using a computer for locating

available real estate properties comprising the

steps of:

a) creating a database of the available real

estate properties;

b) displaying a map of a desired geographic

area;

c) selecting a first area having boundaries

within the geographic area;

d) zooming in on the first area of the displayed

map to about the boundaries of the first area

13a

Appendix C

to display a higher level of detail than the

displayed map;

e) displaying the zoomed first area;

f) selecting a second area having boundaries

within the zoomed first area;

g) displaying the second area and a plurality

of points within the second area, each point

representing the appropriate geographic

location of an available real estate property; and

h) identifying available real estate properties

within the database which are located within

the second area.

Id. at col. 15 l. 33 - col. 16 l. 3.

Before we address the issues in the current appeal,

a brief overview of the litigation history is needed. this

action commenced in 2007 when Move, Inc. filed suit

against real in the U.s. district court for the central

district of california seeking a declaratory judgment that

the ’989 and ’576 patents were invalid and not infringed by

move’s websites. real subsequently sued the National

association of realtors (“Nar”), the National association

of Home Builders (“NaHB”), and a number of real

estate brokers, agents, multiple listing services, home

builders, and rental property owners and managers for

infringing the ’989 and ’576 patents. real’s complaint

asserted infringement by the move websites and by each

defendant’s own website.

14a

Appendix C

the district court entered a case management order

dividing the litigation into two phases. Phase 1 of the

litigation would resolve real’s infringement claims

against move, Nar, and NaHB regarding move’s

websites, as well as any issues relating to the validity

or enforceability of the ’989 and ’576 patents. Phase 2

would address real’s infringement claims against the

remaining defendants (“the secondary defendants”)

based on their individual websites, i.e., non-move websites,

and any liability issues if the move websites were found to

infringe in Phase 1. real’s claims against the secondary

defendants were stayed during Phase 1, and the

secondary defendants agreed to be bound by any validity,

enforceability, or claim construction determinations made

in Phase 1, as well as any finding that a Move website

infringed the ’989 or ’576 patents. the district court then

consolidated the two cases into a single docket.

Phase 1 of the litigation proceeded as contemplated

by the case management order. the district court

issued a claim construction order in 2009 addressing

claim construction disputes in both patents. Based on

the district court’s constructions, real stipulated to

noninfringement of both patents and appealed. its appeal,

however, only addressed the ’989 patent. Because the

district court erred in construing the claims of the ’989

patent, we vacated and remanded for further proceedings

consistent with our opinion. See Move, Inc. v. Real Estate

All. Ltd., 413 F. app’x 280, 282 (Fed. cir. 2011). on remand,

move sought summary judgment of noninfringement of

the ’989 patent. the district court granted move’s motion

in a 2012 opinion because it concluded that move was not

15a

Appendix C

liable for direct or joint infringement of the ’989 patent.

real appealed and the case was twice remanded to

the district court given changes in the law of divided

infringement.

this brings us to the subject of real’s current

appeal. on remand, move sought summary judgment that

real waived its divided infringement claims. Based

on real’s previous litigation positions in this case, the

district court granted move’s motion. See Move, Inc. v.

Real Estate All. Ltd., No. cv 07-2185, 2016 U.s. dist.

leXis 192672, 2016 Wl 9080238, at *2-4 (c.d. cal. apr.

25, 2016).

in a subsequent motion, move sought summary

judgment that the ’989 patent was invalid under 35 U.s.c.

§ 101. the district court granted this motion as well. Move,

Inc. v. Real Estate All. Ltd., 221 F. supp. 3d 1149 (c.d.

cal. 2016) (“Eligibility SJ Op.”) (citing Alice Corp. Pty. v.

CLS Bank Int’l, 134 s. ct. 2347, 82 l. ed. 2d 296, 189 l.

ed. 2d 296 (2014)). Under Alice step one, the court held

that the claims of the ’989 patent were directed to the

abstract idea of “collecting and organizing information

about available real estate properties and displaying this

information on a digital map that can be manipulated by

the user.” Id. at 1162. the district court determined under

Alice step two that the claims lacked an inventive concept

because nothing in the claim limitations or their ordered

combination transformed the abstract idea into a patenteligible application. Id. at 1164-65.

16a

Appendix C

real appeals. We have jurisdiction pursuant to 28

U.s.c. § 1295(a)(1).

DIsCussION

We apply the law of the regional circuit when

reviewing a district court’s grant of summary judgment.

See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d

1138, 1146 (Fed. cir. 2016). summary judgment in the

Ninth circuit is appropriate when, after drawing all

reasonable inferences in favor of the non-moving party,

there remains no genuine issue of material fact precluding

the grant of summary judgment. See Comite de Jornaleros

de Redondo Beach v. City of Redondo Beach, 657 F.3d

936, 942 (9th cir. 2011).

Patent eligibility under § 101 is a question of law

and may involve underlying questions of fact. See Mortg.

Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d

1314, 1325 (Fed. cir. 2016). We review the district court’s

ultimate conclusion on eligibility de novo. See Intellectual

Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,

1338 (Fed. cir. 2017). We look to the test articulated in

Alice to determine whether a claim is eligible for patenting

under § 101. See 134 s. ct. at 2355. Pursuant to Alice’s

two-part test, we decide first “whether the claims at issue

are directed to” a patent-ineligible concept, namely a law

of nature, natural phenomenon, or abstract idea. Id. at

2354-55. if the answer is yes, we then consider the claim

elements, both individually and as an ordered combination,

17a

Appendix C

to determine whether they contain an “inventive concept”

sufficient to “’transform the nature of the claim’ into a

patent-eligible application.” Id. at 2355 (quoting Mayo

Collaborative Servs. v. Prometheus Labs., Inc., 566 U.s.

66, 72-73, 78, 132 s. ct. 1289, 182 l. ed. 2d 321 (2012)).

Under Alice step one, we agree with the district court

that claim 1 of the ’989 patent 2 is directed to the abstract

idea of “a method for collecting and organizing information

about available real estate properties and displaying this

information on a digital map that can be manipulated by

the user.” Eligibility SJ Op., 221 F. supp. 3d at 1162. the

step-one analysis requires us to consider the claims “in

their entirety to ascertain whether their character as a

whole is directed to excluded subject matter.” Internet

Patents Corp. v. Active Network, Inc., 790 F.3d 1343,

1346 (Fed. cir. 2015). claim 1 is aspirational in nature

and devoid of any implementation details or technical

description that would permit us to conclude that the

claim as a whole is directed to something other than the

abstract idea identified by the district court.

While we do not suggest that every claim involving

the collection, organization, manipulation, or display of

data is necessarily directed to an abstract idea, claim 1 is

not meaningfully distinct from claims we have held were

directed to abstract ideas in previous cases. the claims in

2. real does not argue the patentability of the dependent

claims separately. accordingly, we treat claim 1, the only independent

claim, as representative for purposes of this appeal.

18a

Appendix C

Electric Power Group, LLC v. Alstom S.A., for example,

recited a method for detecting events on an interconnected

electric power grid by collecting information from various

sources, analyzing this information to detect events

in real time, and displaying the event analysis results

and diagnoses. 830 F.3d 1350, 1351-52 (Fed. cir. 2016).

We concluded that the focus of these claims was on the

abstract idea of “collecting information, analyzing it, and

displaying certain results of the collection and analysis.”

Id. at 1353. claim 1 of the ’989 patent involves the same

general steps of collecting, organizing, and presenting

information.

We reached a similar result in Intellectual Ventures

I LLC, where the claims recited systems and methods

for preserving compatibility between Xml documents

after they had been edited by different users. 850 F.3d at

1339-40. according to the claims at issue in that case, a

“dynamic document” containing data extracted from the

original Xml document would be created, users could

edit the data displayed in the dynamic document, and the

changes would then be “dynamically propagated” back into

the original Xml document. Id. at 1339. We concluded that

these claims were, “at their core, directed to the abstract

idea of collecting, displaying, and manipulating data.” Id.

at 1341; see also Content Extraction & Transmission LLC

v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345,

1347 (Fed. cir. 2014) (concluding that claims covering a

method for using a scanner to extract data from hard copy

documents, recognizing specific information within the

extracted data, and storing that information in memory

were “drawn to the abstract idea of 1) collecting data, 2)

19a

Appendix C

recognizing certain data within the collected data set,

and 3) storing that recognized data in a memory”). Based

on these binding precedents, we conclude that claim 1 is

directed to an abstract idea.

our conclusion on Alice step one is further supported

by the similarities between the ’989 patent claims and

other claims that “simply use computers to serve a

conventional business purpose.” Affinity Labs of Tex., LLC

v. DIRECTV, LLC, 838 F.3d 1253, 1261 (Fed. cir. 2016);

see Alice, 134 s. ct. at 2356 (concluding that concept of

intermediated settlement was “a fundamental economic

practice long prevalent in our system of commerce” and

thus an abstract idea). in Affinity Labs, for example, the

claims covered a system for streaming regional broadcast

signals to cell phones located outside the region. although

the claims required a network, storage medium, and the

transmission and receipt of signals, we concluded that the

claims were directed to the abstract idea of “providing

out-of-region access to regional broadcast content.” Id.

at 1258 (explaining that the claims were not “directed to

how to implement out-of-region broadcasting on a cellular

telephone” and claimed the function itself instead of a

particular way to perform the function).

claim 1 of the ’989 patent is no different. it broadly

recites the commercial practice of “using a computer for

locating available real estate properties.” ’989 patent

col. 15 ll. 33-34; see id., abstract (describing patent as

“a method for locating available real estate properties

for sale”). While the claim limitations provide steps for

using the computer to perform the search, they contain

20a

Appendix C

no technical details or explanation of how to implement

the claimed abstract idea using the computer. absent

such a disclosure, we cannot conclude that claim 1

covers anything more than the use of a computer for a

conventional business purpose. See Affinity Labs, 838

F.3d at 1261.

real attempts to distinguish its claims from those in

Alice and its progeny by contending that the district court

over-generalized the claim limitations. real focuses

on two particular limitations as reciting technological

advances: (1) creation of a database of the available

real estate properties; and (2) zooming in on a selected

geographic area. For support, real relies on testimony

from its expert that databases at the time of the invention

could not be queried graphically and that zooming on a

computer-displayed map to depict a higher level of detail

was neither routine nor conventional. See appellant Br.

11-12 (citing J.a. 233, ¶¶ 11-12).

setting aside the conclusory nature of real’s expert

declaration, the focus of claim 1 is not on any technological

advancement but rather on the performance of an abstract

idea “for which computers are invoked merely as a tool.”

See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336

(Fed. cir. 2016). instead of focusing on the technical

implementation details of the zooming functionality, for

example, claim 1 recites nothing more than the result

of the zoom. such claims are drawn to an abstract idea

because they “claim[] the function of [the abstract idea],

not a particular way of performing that function.” Affinity

Labs, 838 F.3d at 1258 (“there is nothing in claim 1 that is

21a

Appendix C

directed to how to implement [the abstract idea]. rather,

the claim is drawn to the idea itself.”).

claim 1 is also distinguishable from the patenteligible claims in cases such as Enfish and Visual Memory

LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. cir. 2017).

in those cases, the claims focused “on an improvement

to computer functionality itself, not on economic or

other tasks for which a computer is used in its ordinary

capacity.” Enfish, 822 F.3d at 1336 (concluding claims were

directed to a specific, improved type of self-referential

table for storing tabular data); see Visual Memory,

867 F.3d at 1259 (determining claims were directed to

improved computer memory system with programmable

operational characteristics). We also emphasized the

specifications’ disclosures regarding the improvements

in computer functionality brought about by the claimed

inventions. See Enfish, 822 F.3d 1333 (recognizing the

claimed invention’s enhanced flexibility in configuring

the database, streamlined indexing technique, and more

effective data storage); Visual Memory, 867 F.3d at

1259 (acknowledging that the claimed programmable

operational characteristic enabled a memory system to be

interoperable with multiple different processors and could

outperform prior art memory systems with larger caches).

the same cannot be said here. claim 1 focuses not

on a technological improvement, but rather on a method

of searching for real estate using a computer. See ’989

patent col. 15 l. 35 - col. 16 l. 3 (reciting steps of creating

a property database, displaying a geographic region on a

map, iterative zooming to focus on a desired geographic

22a

Appendix C

region, and identifying properties within the database that

fall within the selected geographic region). While the ideas

of storing available real estate properties in a database

and selecting and displaying a particular geographic area

may well be improvements in the identification of available

real estate properties, there is no evidence that these

ideas are technological improvements. indeed, real

has not cited any convincing evidence in the specification

that the claimed invention improves the functioning of the

computer itself.

Under the second step of the Alice analysis, we

examine the claim limitations “more microscopically,”

Electric Power, 830 F.3d at 1354, to determine whether

they contain “additional features” constituting an

“inventive concept,” Alice, 134 s. ct. at 2357. “this

requires more than simply stating an abstract idea while

adding the words ‘apply it’ or ‘apply it with a computer.’”

Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,

1332 (Fed. cir. 2015) (quoting Alice, 134 s. ct. at 2358).

our analysis uncovers no inventive concept in the

individual claim limitations or their ordered combination.

claim 1 recites only generic computer components and

features: a “computer” and the creation of a “database.”

’989 patent col. 15 ll. 33-37. But claims directed to an

abstract idea that “merely require generic computer

implementation[] fail to transform that abstract idea into

a patent-eligible invention.” Alice, 134 s. ct. at 2357. the

specification confirms this conclusion by explaining that

23a

Appendix C

“the present invention may be implemented on an iBm

or compatible personal computer system.” ’989 patent col.

15 ll. 12-14.

real’s counterargument that the claimed zoom

feature supplies the inventive concept is not persuasive

for reasons similar to those we articulated under Alice

step one. 3 For support, real again relies on its expert’s

conclusory declaration:

it wa s considered neit her rout i ne nor

conventional in the mid-1980s for a computerdisplayed map to be able to zoom to display a

higher level of detail in the sense of displaying

information that wasn’t present at the lower

level of detail at all, and this zooming step

cannot be performed by a human.

J.a. 233, ¶ 12. the declaration provides no citations to

support this assertion and contains no additional rationale.

this bald assertion does not satisfy the inventive

concept requirement. Where “[t]he claim language does

not provide any specific showing of what is inventive about

the [limitation in question] or about the technology used

3. real also contends that the “nature of the database” and

“display of appropriate property locations on the map” provide the

“something more,” but it never develops these arguments. appellant

Br. 17. real analogizes its claimed database to Enfish’s data tables

without any supporting analysis and fails to explain how the display

of appropriate property locations is an inventive concept. Neither

argument is compelling.

24a

Appendix C

to generate and process it,” we have concluded that the

claims do not satisfy Alice’s second step. Secured Mail

Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912

(Fed. cir. 2017); see also Affinity Labs, 838 F.3d at 1263

(concluding that claims were ineligible under Alice step

two where the allegedly inventive concept was not the

“essential advance,” was only described functionally, and

where there was “no further specification of a particular

technology for” accomplishing the allegedly inventive

concept). Further, the claim language does not explain

what is inventive about the zoom feature or explain how

it is accomplished. real also has not pointed us to any

portion of the specification that fills this gap. Indeed,

the specification’s teaching that the invention can be

performed using a generic “iBm or compatible personal

computer system,” ’989 patent col. 15 ll. 12-14, and the

failure to provide any implementation details for the

zoom feature suggests that the zoom feature utilizes only

existing computer capabilities. this leads us to conclude

that the claimed zoom feature is nothing more than an

instruction to apply an abstract idea using a computer.

See Versata, 793 F.3d at 1332; see also Alice, 134 s. ct. at

2358 (“[i]f a patent’s recitation of a computer amounts to a

mere instruction to ‘implemen[t]’ an abstract idea ‘on . . . a

computer,’ that addition cannot impart patent eligibility.”

(quoting Mayo, 566 U.s. at 84) (internal citations omitted)).

our conclusion regarding the ’989 patent’s eligibility

renders moot the issue of divided infringement because

a party cannot be liable for infringing an invalid patent.

See Commil USA, LLC v. Cisco Sys., Inc., 135 s. ct. 1920,

1929, 191 l. ed. 2d 883 (2015).

25a

Appendix C

II.

real also alleges that the district court erred by

invalidating the ’576 patent sua sponte without giving

the parties notice or a reasonable time to respond. our

review of the record reveals instead that real expressly

conceded the invalidity of the ’576 patent. We see no error

by the district court under these unique circumstances.

at the conclusion of its summary judgment opinion

invalidating the ’989 patent under § 101, the district court

issued an order, questioning the validity of the related ’576

patent and soliciting input from all parties in Phase 1 and

Phase 2 of the litigation:

While the parties have not squarely addressed

the question whether the ’576 Patent is invalid

under 35 U.s.c. § 101, it appears—though we do

not decide—that our ruling with respect to the

’989 Patent may invalidate the ’576 Patent as

well. accordingly, all parties—including those

identified as Secondary Defendants in our

september 25, 2015 case management order

(doc. 125)—SHAll file a joint status report

within fourteen days hereof, stating their views

on whether this order effectively resolves this

action as to all parties and whether judgment

should be entered accordingly.

Eligibility SJ Op., 221 F. supp. 3d at 1174 (italic emphases

added). the district court’s order placed the ’576 patent’s

validity at issue and required the parties to identify any

outstanding issues in the litigation.

26a

Appendix C

in response, all the parties to the litigation, including

the Secondary Defendants, filed a Joint Status Report.

the parties’ Joint status report indicated that the district

court’s eligibility and waiver opinions resolved all issues

in the case with respect to all parties:

[t]he Parties are all in agreement that the

court’s order [invalidating the ’989 patent], in

addition to its order of april 25, 2016 holding

that real has waived its right to proceed on

a theory of divided direct infringement under

§ 271(a), effectively resolves all issues to this

action, including all issues related to REAL’s

claims against the Secondary Defendants

. . . . accordingly, the Parties jointly request that

the court enter Judgment of Non-infringement

and invalidity in favor of Plaintiffs move, inc.,

National association of realtors, National

association of Homebuilders, and all Secondary

Defendants.

J.a. 930 (emphases added). relying on the parties’

representation that its orders had “resolve[d] all issues

in this case,” the district court “adjudged that Plaintiffs

and secondary defendants are entitled to judgment that

the ’576 Patent and the ’989 Patent are invalid and not

infringed.” J.a. 2.

the only fair reading of the Joint status report is

that no issues remained in the case. the district court

made its view clear: the ruling invalidating the ’989 patent

“appear[ed]” to invalidate the ’576 patent and might have

27a

Appendix C

resolved the litigation in its entirety. Eligibility SJ Op.,

221 F. supp. 3d at 1174. When asked to respond, real

not only declined to make any arguments to support

the validity of the ’576 patent, but went even further by

agreeing that the district court’s rulings had resolved

“all issues,” including those “relat[ing] to real’s claims

against the secondary defendants.” J.a. 930. thus, real

conceded the invalidity of the ’576 patent.

real’s attempt to rationalize its concession lacks

merit. according to real, the phrase “this action” in the

district court’s directive to identify “whether this order

effectively resolves this action as to all parties,” Eligibility

SJ Op., 221 F. supp. 3d at 1174, only referred to Phase 1

of the litigation, not Phase 2. therefore, real claims, its

allegations of infringement of the ’576 patent against the

secondary defendants in Phase 2 of the litigation were

not affected by the Joint status report.

We disagree. as an initial matter, the district court

consolidated the cases giving rise to Phase 1 and Phase

2 of the litigation, meaning both phases were part of the

same case or “action.” By referring to “this action,” the

district court was referring to both Phase 1 and Phase 2.

the district court’s directive also sought input from the

secondary defendants—parties who were not litigating

the issues in Phase 1—which should have served as

another indicator that the parties needed to identify any

outstanding issues in either phase of the litigation. the

validity of the ’576 patent was one potential issue that

remained in both phases, yet real never raised it. When

read in context, we do not agree with real that the

28a

Appendix C

district court’s directive seeking input from the parties in

both phases regarding a patent that was at issue in both

phases nonetheless referred only to Phase 1. therefore,

we conclude that real has conceded the invalidity of

the ’576 patent.

CONClusION

We have considered real’s remaining arguments

and find them unpersuasive. The district court did not err

in holding the claims of the ’989 patent ineligible under

§ 101. Because there can be no liability for infringing an

invalid patent, we do not reach the issue of waiver for

real’s divided infringement claims. We also detect no

error in the district court’s judgment invalidating the ’576

patent. We affirm.

AFFIRmED

29a

Appendix D OF tHE uNItED

APPENDIx D — JUDGmENT

StatES DISTRICT COURT FOR THE CENTRAl

DISTRICT OF CAlIFORNIA, FIlED

DECEmBER 16, 2016

UNited states district coUrt

For tHe ceNtral district oF caliForNia

case No. cv 07-cv-02185-GHK (aJWx)

move, iNc., et al.,

Plaintiffs,

real estate alliaNce, ltd., et al.,

Defendants.

JUDGmENT

on January 12, 2009, Plaintiffs move, inc., National

association of realtors, and National association of

Homebuilders (“move”) filed their second amended

complaint, seeking a declaratory judgment that U.s.

Patents No. 4,870,576 (the “’576 Patent”) and U.s.

Patent No. 5,032,989 (the “’989 Patent”) are invalid,

unenforceable, and not infringed. doc. 198. defendant

Real Estate Alliance, Ltd. (“REAL”) filed counterclaims

for patent infringment against move and a number of

other entities (“secondary defendants”).

30a

Appendix D

on January 26, 2012, we granted summary judgment

for move on the issue of direct infringement. doc. 493.

The Federal Circuit affirmed this ruling on June 20,

2013. doc. 511. on april 25, 2016, we held that real

had waived any allegation that move committed divided

direct infringement. doc. 563. on december 1, 2016, we

held that the ’989 Patent was invalid under 35 U.s.c. § 101.

doc. 563. the parties are in agreement that these there

orders resolve all issues in this case. doc. 579.

accordingly, it is hereby adjudged that Plaintiffs

and secondary defendants are entitled to judgment that

the ’576 Patent and the ’989 Patent are invalid and not

infringed.

IT IS SO ORDERED.

dated: december 16, 2016

GeorGe H. KiNG

United states district Judge

31a

Appendix

E REPORT IN THE

APPENDIx E — JOINT

STaTUS

UNITED STaTES DISTRICT COURT, CENTRal

DISTRICT OF CalIFORNIa, WESTERN

DIVISION, FIlED DECEmBER 15, 2016

UNited states district coUrt

ceNtral district oF caliForNia

WesterN divisioN

case No. 2:07-cv-02185-GHK-(aJWx)

move, iNc., et al.,

Plaintiffs,

real estate alliaNce ltd., et al.,

Defendants.

real estate alliaNce ltd.,

Counterclaim-Plaintiff,

move, iNc., et al.,

Counterclaim-Defendants.

JOINT STaTUS REPORT

Pursuant to this court’s december 1, 2016 order (the

“order”), all of the undersigned parties to this litigation,

including the undersigned secondary defendants 1

1. attempts were made to contact counsel of record for

Secondary Defendants Keller Williams Realty, Inc., iHomefinder,

32a

Appendix E

(the “Parties”), jointly submit this Joint status report

addressing (i) whether the court’s order effectively

resolves this action as to all parties and (ii) whether

judgment should be entered accordingly. after meeting

and conferring on the issue, the Parties are all in

agreement that the court’s order, in addition to its order

of april 25, 2016 holding that real has waived its right

to proceed on a theory of divided direct infringement

under § 271(a), effectively resolves all issues to this action,

including all issues related to real’s claims against the

secondary defendants. For its part, real, despite its

belief that the court’s orders are factually and legally

incorrect, agrees that in order for it to pursue its fourth

appeal to the court of appeals for the Federal circuit,

it should join with the other parties in this report.

accordingly, the Parties jointly request that the court

enter Judgment of Non-infringement and invalidity in

favor of Plaintiffs move, inc., National association of

realtors, National association of Homebuilders, and all

secondary defendants.

dated: december 15, 2016

Inc. and Trend Software, Inc. in connection with this filing but were

unsuccessful. counsel for cis data approved an earlier version

of this report that did not include the sentence beginning “For

its part, real….” although attempts were made to contact cis

Data’s Counsel with respect to the final version, those attempts

were unsuccessful. No counsel representing secondary defendants

Paymon Ghafouri or Wanisoft corp. could be located.

33a

Appendix E

respectfully submitted,

/s/ laura W. Brill

laura W. Brill

lbrill@kbkfirm.com

KeNdall Brill & KellY llP

10100 santa monica Blvd.

suite 1725

los angeles, ca 90067

telephone: (310) 556-2700

Facsimile: (310) 556-2705

Counsel for Defendant

Real Estate Alliance, Ltd.

/s/ lawrence a. Husick

lawrence a. Husick (pro hac vice)

lawrence@lawhusick.com

liPtoN, WeiNBerGer

& HUsicK

P.o. Box 587

southeastern, Pa 19399-0587

telephone: (610) 296-8259

Facsimile: (610) 296-5816

Counsel for Defendant

Real Estate Alliance, Ltd.

and Equias Technology

Development LLC

34a

Appendix E

/s/ Frank G. smith

Frank G. smith (pro hac vice)

frank.smith@alston.com

Wesley c. achey (pro hac vice)

wesley.achey@alston.com

alstoN & Bird llP

1201 West Peachtree street

atlanta, Ga 30309-3424

telephone: (404) 881-7000

Facsimile: (404) 881-7777

/s/ robin mcGrath

robin l. mcGrath (pro hac vice)

robinmcgrath@paulhastings.com

PaUl HastiNGs llP

1170 Peachtree street, Ne, suite 100

atlanta, Ga 30309

telephone: (404) 815-2220

Facsimile: (404) 685-5220

Counsel for Plaintiffs

Move, Inc., National

Association of Realtors, and

National Association of Home

Builders

35a

Appendix E

/s/ Henrik d. Parker

Henrik d. Parker (sBN 117119)

hparker@bakerlaw.com

steven J. rocci

srocci@bakerlaw.com

BaKer & Hostetler, llP

cira centre, 12th Floor

2929 arch street

Philadelphia, Pa 19104-2891

telephone: (215) 564-8911

Facsimile: (215) 568-3439

Counsel for Counterclaim

Defendants Brad Korb,

Christy Morrison, Orange

County Multiple Listing

Services, Inc. d/b/a Southern

California MLS, Advanced

Access, eNeighborhoods, and

RE/MAX International, Inc.

36a

Appendix E

/s/ Jeffrey B. Bove

Jeffrey B. Bove (pro hac vice)

jbove@ratnerprestia.com

ratnerPrestia

1007 orange street, suite 205

Wilmington, de 19801

telephone: (302) 778-2500

Facsimile: (302) 778-2600

Counsel for (Secondary)

Counterclaim Defendants Norcal

Gold, Inc., Georgia MLS, Inc.,

Delta Media Group, Inc.,

Metrolist Services, Inc., Delaware

Valley Real Estate Information

Network, Inc., Rapattoni Corp.,

and Birdview.com, Inc.

37a

Appendix E

/s/ Bruce G. chapman

Bruce G. chapman

(state Bar 164258)

bchapman@sheppardmullin.com

sHePPard mUlliN

ricHter & HamPtoN llP

333 s. Hope st., 43rd Floor

los angeles, ca 90071

telephone: (213) 620-1780

Facsimile: (213) 443-2816

Counsel for (Secondary)

Counterclaim Defendants Norcal

Gold, Inc., Georgia MLS, Inc.,

Delta Media Group, Inc.,

Metrolist Services, Inc., Delaware

Valley Real Estate Information

Network, Inc., Rapattoni Corp.,

and Birdview.com, Inc.

/s/ robert J. miller

robert J. muller

bob@cypressllp.com

cypress llP

11111 santa monica Blvd., suite 500

los angeles, ca 90025

telephone: 424-901-0150

Facsimile: 424-750-5100

Counsel for Counterclaim Defendant

Fidelity National Real Estate

Solutions, LLC

38a

Appendix E

/s/ Breton a. Bocchieri

Breton a. Bocchieri (sBN 119459)

BBocchieri@robinsKaplan.com

roBiNs KaPlaN llP

2049 century Park east, suite 3400

los angeles, ca 90067

telephone: 310-229-5461

Facsimile: 310-229-5800

Counsel for Counterclaim Defendant

Alain Pinel Realtors, Inc.

/s/ darius c. Gambino

darius c. Gambino (pro hac vice)

darius.gambino@dlapiper.com

dla PiPer llP (Us)

one liberty Place

1650 market street, suite 4900

Philadelphia, Pa 19103

P: (215) 656-3309

F: (215) 656-3301

Counsel for (Secondary)

Counterclaim-Defendants Pulte

Homes, Inc., The Ryland Group,

Inc. (now CalAtlantic Group,

Inc.), Shea Homes Limited

Partnership, and Taylor

Morrison, Inc. f/k/a Taylor

Woodrow, Inc.

39a

Appendix E

/s/ douglas G. muehlhauser

douglas G. muehlhauser

doug.muehlhauser@knobbe.com

KNoBBe, marteNs, olsoN

& Bear llP

2040 main st., 14th Floor

irvine, ca 92614

telephone: (949) 760-0404

Facsimile: (949) 760-9502

Counsel for Counterclaim Defendant

The First American Corporation

/s/ ron m. cordova

ron m. cordova

attorney at law

roncordova@roncordovalaw.com

16520 Bake Parkway, suite 280

irvine, ca 92618

telephone: 949-748-3600

Facsimile: 949-759-0186

Counsel for Diverse Solutions, LLC

40a

Appendix E

/s/ darren m. Franklin

darren m. Franklin

dFranklin@sheppardmullin.com

sHePPard, mUlliN, ricHter

& HamPtoN llP

333 south Hope street

Forty-eighth Floor

los angeles, ca 90071

telephone: 213-617-5498

Facsimile: 213-620-1398

Counsel for Counterclaim

Defendants BRE Properties, Inc.,

Essex Property Trust, Inc., and

Riverstone Residential Group

LLC

/s/ albert e. cordova

albert e. cordova (sBN 74283)

albert@aec-law.com

1101 5th avenue, suite 200

san rafael, ca 94901

telephone: (415) 457-9656

Facsimile: (415) 453-6260

Counsel for Counterclaim Defendant

Frank Howard Allen Realtors,

Inc.

41a

Appendix E

/s/ Brent d. sokol

Brent d. sokol (sBN 167537)

bdsokol@jonesday.com

JoNes daY

555 south Flower street, 50th Floor

los angeles, ca 90071

telephone: (213) 243-2396

Facsimile: (213) 243-2539

Counsel for Counterclaim Defendant

Avalonbay Communities, Inc.

42a

Appendix

APPENDIx F — CIVIl

mINUTES

– GENERAl

Of tHE UNITED STATES DISTRICT COURT

CENTRAl DISTRICT OF CAlIFORNIA, FIlED

DECEmBER 1, 2016

UNited states district coUrt

ceNtral district oF caliForNia

case No. cv 07-cv-02185-GHK (aJWx)

move, inc., et al.,

real estate alliance ltd., et al.

date december 1, 2016

CIVIl mINUTES – GENERAl

Presiding: The Honorable GEORGE H. KING, U.S.

DISTRICT JUDGE

Paul songco

deputy clerk

N/a

court reporter/

tape No.

recorder

attorneys Present for

Plaintiffs:

defendants:

None

Proceedings: (In Chambers) Order re: Plaintiffs’

7/15/2016 motion for summary Judgment (doc. 572),

Plaintiffs’ 10/18/2011 motion for summary Judgment

43a

Appendix F

(doc. 475), and defendants’ 10/18/2011 motion for

summary Judgment (doc. 474)

in about four months, this case will be ten years old.

Because life is short and this case has already taken up too

much of it, we are doing our best to move this case forward.

on may 16, 2016, we agreed to resolve all outstanding

summary judgment issues, even though these issues will

be rendered moot if our april 25, 2016 order on divided

direct infringement is affirmed on appeal. Resolving these

issues now is the most expeditious manner of proceeding

because it will allow for a single appeal to the Federal

circuit. We have considered the parties’ joint brief on

Plaintiffs’ July 15, 2016 motion for summary Judgment

(doc. 572), the joint brief on the december 12, 2011

summary Judgment motions (doc. 476), and the portions

of the record cited by the parties. We deem this matter

appropriate for resolution without oral argument. l.r.

7-15. accordingly, we rule as follows:

Background

on July 16, 1991, defendant real estate alliance

ltd. (“real”) was awarded U.s. Patent No. 5,032,989

(the “‘989 Patent”) for an invention by mark a. tornetta

(“inventor tornetta” or “tornetta”). the ‘989 Patent is a

continuation-in-part patent of U.s. Patent No. 4,870,576

(the “‘576 Patent”), also invented by tornetta and also

assigned to REAL. The ‘576 Patent has an effective filing

date of march 19, 1986; the ‘989 Patent has an effective

filing date of April 24, 1989. Both patents have expired.

44a

Appendix F

according to its abstract, the ‘989 Patent describes

“a method for locating available real estate properties

for sale, lease or rental using a database of available

properties at a central location and remote stations which

use a graphic interface to select desired regions on a

map of the areas of interest.” doc. 575-1 at 2. the ‘989

Patent contains a single independent claim, and eleven

dependent claims. Id. at 23. the sole independent claim,

claim 1, recites:

a method using a computer for locating available real

estate properties comprising the steps of:

creating a database of the available real estate

properties;

displaying a map of a desired geographic area;

selecting a first area having boundaries within

the geographic area;

zooming in on the first area of the displayed

map to about the boundaries of the first area

to display a higher level of detail than the

displayed map;

displaying the zoomed first area;

selecting a second area having boundaries

within the zoomed first area;

displaying the second area and a plurality

45a

Appendix F

of points within the second area, each point

representing the appropriate geographic

location of an available real estate property; and

identifying available real estate properties

within the database which are located within

the second area.

Id. at 23.

on april 3, 2007, Plaintiffs move, inc., National

association of realtors, and National association of Home

Builders (collectively, “Move”) filed this action seeking a

declaratory judgment that the ‘576 Patent and the ‘989

Patent are invalid, unenforceable, and not infringed. doc.

1. On January 12, 2009, Move filed its second amended

complaint. Doc. 198. REAL filed an answer and asserted

a counterclaim for patent infringement. doc. 210. move

responded and asserted several affirmative defenses.

doc. 221.

on November 25, 2009, we entered our claim

construction order. Doc. 419. After stipulating to a finding

of non-infringement based on our construction (doc. 426),

real appealed to the Federal circuit, which reversed

on some points. doc. 450 (published at Move, Inc. v. Real

Estate All. Ltd., 413 F. app’x 280 (Fed. cir. 2011)).

On October 18, 2011, the parties filed cross-motions

for summary judgment. docs. 474, 475. move sought

summary judgment on all infringement claims, arguing

that “move did not perform all steps of the claimed method

46a

Appendix F

and exercised neither direction nor control over users who

may have performed those steps so as to render it liable

for joint infringement.” doc. 476 at 32. We agreed, and

granted summary judgment for move. doc. 493.

real appealed. doc. 501. the Federal circuit

affirmed our conclusion that Move could not be liable

for direct infringement, but remanded for us to consider

whether move might be liable for induced infringement.

doc. 511 (published at Move, Inc. v. Real Estate All. Ltd.,

709 F.3d 1117 (Fed. cir. 2013)). thereafter, the supreme

court decided Limelight Networks, Inc. v. Akamai Techs.,

Inc., 134 s. ct. 2111 (2014), holding that a party could not

be liable for inducing infringement if no party directly

infringed the patent. Id. at 2115. We concluded that this

decision totally undermined the Federal circuit’s prior

mandate, and reinstated our entry of summary judgment.

doc. 522. real appealed again. doc. 529. the Federal

Circuit summarily affirmed. Doc. 536. REAL petitioned

for rehearing, and the Federal circuit granted this

petition, vacated its prior affirmance, and remanded the

matter to us for further consideration in light of Akamai

Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020

(Fed. cir. 2015) (en banc). doc. 537 at 3. in doing so, the

Federal circuit expressed “no opinion on the question of

whether [real] has waived any allegations of divided

infringement.” Id.

on april 25, 2016, we held that real had waived the

divided direct infringement argument, and reinstated

our grant of summary judgment in favor of move. doc.

563. We asked the parties to submit a Joint status

47a

Appendix F

report, which they did. doc. 564. Based on this report,

we concluded that “resolution of the remaining summary

judgment issues would be the most expeditious manner

of proceeding.” doc. 565. We also agreed with move that

“resolution of any issues related to Alice Corp. Pty. Ltd.

v. CLS Bank International, 134 s. ct. 2347 (2014)” would

also be prudent. Id. We asked the parties to file a joint

brief on the Alice issues, and stated that we would resolve

the remaining summary judgment issues on the original

briefing. Id. On July 15, 2016, the parties filed their joint

brief on Alice, and move sought summary adjudication

that the ‘989 Patent is invalid under 35 U.s.c. § 101. docs.

572, 573.

II. legal Standard

We may grant summary judgment only “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). “only disputes over facts that

might affect the outcome of the suit under the governing

law w ill properly preclude the entry of summary

judgment.” Anderson v. Liberty Lobby, Inc., 477 U.s.

242, 248 (1986). on a motion for summary judgment, the

district court’s “function is not . . . to weigh the evidence

and determine the truth of the matter but to determine

whether there is a genuine issue for trial.” id. at 249. the

moving party bears the initial responsibility to point

to the absence of any genuine issue of material fact.

Celotex Corp. v. Catrett, 477 U.s. 317, 323 (1986). Where

the nonmoving party has the burden of proof at trial,

the moving party can carry its initial burden either by

48a

Appendix F

submitting affirmative evidence that there is not a triable,

factual dispute or by demonstrating that the nonmoving

party “fail[ed] to make a showing sufficient to establish

the existence of an element essential to that party’s case.”

Id. at 322. the burden then shifts to the nonmoving party

“to designate specific facts demonstrating the existence

of genuine issues for trial.” In re Oracle Corp. Sec. Litig.,

627 F.3d 376, 387 (9th cir. 2010) (citing Celotex Corp., 477

U.s. at 324). this means that the evidence is such that “a

jury could reasonably render a verdict in the non-moving

party’s favor.” Id. (citing Anderson, 477 U.s. at 252).

“the evidence of the non-movant is to be believed, and

all justifiable inferences are to be drawn in his favor.”

Anderson, 477 U.s. at 255. “When the party moving for

summary judgment would bear the burden of proof at trial,

it must come forward with evidence which would entitle it

to a directed verdict if the evidence went uncontroverted

at trial.” Miller v. Glenn Miller Prods., Inc., 454 F.3d 975,

987 (9th cir. 2006) (internal quotation marks omitted). if

the moving party meets its initial burden of demonstrating

that summary judgment is proper, “the nonmoving party

must come forward with specific facts showing there is

a genuine issue for trial.” Matsushita Elec. Indus. Co. v.

Zenith Radio Corp., 475 U.s. 574, 587 (1986) (emphasis

deleted; internal quotation marks omitted).

in ruling on a motion for summary judgment, we apply

the “substantive evidentiary standard of proof that would

apply at the trial on the merits.” Anderson, 477 U.s. at 252.

Patents are “presumed valid,” 35 U.s.c. § 282(a), and this

presumption can be overcome only by clear and convincing

evidence. Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955,

49a

Appendix F

962 (Fed. cir. 2001). “thus, a moving party seeking to

invalidate a patent at summary judgment must submit

such clear and convincing evidence of invalidity so that no

reasonable jury could find otherwise.” Id. “alternatively, a

moving party seeking to have a patent held not invalid at

summary judgment must show that the nonmoving party,

who bears the burden of proof at trial, failed to produce

clear and convincing evidence on an essential element of

a defense upon which a reasonable jury could invalidate

the patent.” Id.

III. Plaintiffs’ July 15, 2016 motion

Waiver

move seeks summary adjudication that the ‘989

Patent is invalid under 35 U.s.c. § 101 because it

impermissibly seeks to patent an abstract idea. doc.

572. as a preliminary matter, we must consider whether

move waived this argument. We set forth the standard

for waiver in our april 25, 2016 order:

Waiver is the intentional relinquishment of a

known right with knowledge of its existence and

the intent to relinquish it.” CBS, Inc. v. Merrick,

716 F.2d 1292, 1295 (9th cir. 1983); see also

United States v. Olano, 507 U.s. 725, 733 (1993)

(“[W]aiver is the ‘intentional relinquishment or

abandonment of a known right.’”). Waiver can

be express or implied. Mooney v. City of N.Y.,

219 F.3d 123, 131 (2d cir. 2000) (“[a] waiver

need not be express, but may be inferred

50a

Appendix F

from the conduct of the parties.”). “an implied

waiver of rights will be found where there is

‘clear, decisive and unequivocal’ conduct which

indicates a purpose to waive the legal rights

involved.” United States v. Amwest Sur. Ins. Co.,

54 F.3d 601, 602-03 (9th cir. 1995). the party

asserting waiver “bears [a] weighty burden of

establishing that a ‘clear and unmistakable’

waiver has occurred.” N.L.R.B. v. N.Y. Tel. Co.,

930 F.2d 1009, 1011 (2d cir. 1991).

doc. 563 at 3 (“april 25 order”).

real argues that waiver occurred here because

(1) move’s second amended complaint (“sac”) did not

plausibly allege invalidity under § 101; (2) Move did not file

a motion for summary judgment on the § 101 issue before

the January 18, 2010 deadline for dispositive motions

set forth in the court’s February 11, 2009 scheduling

order; (3) move did not raise the argument in response

to real’s motion for summary judgment; and (4) move

never raised the argument before the Federal circuit.

doc. 573 at 34–35.

We do not find these arguments persuasive. As to

REAL’s first argument, the SAC alleged that “the ‘989

patent (and each and every claim thereof) is invalid for

failure to comply with the provisions of one or more

sections of the Patent act, 35 U.s.c. §§ 1, et seq.” doc.

198, ¶ 79. this allegation encompasses the argument

that the ‘989 Patent is invalid under § 101. thus, real

was on notice that move might assert this argument. Cf.

51a

Appendix F

Pfizer Inc. v. Apotex Inc., 726 F. supp. 2d 921, 937–38

(N.d. ill. 2010) (allegation that counter-defendant’s

patents were “invalid for failure to comply with one or

more of the conditions of patentability set forth in title

35 of the United states code” was “sufficient to put

[counter-defendant] on notice of what [counterclaimant]

is claiming”). While move’s allegation might not satisfy

the heightened pleading standard set forth in Ashcroft

v. Iqbal, 556 U.s. 662 (2009), the sac predates Iqbal by

approximately four months. We cannot find waiver based

on move’s failure to comply with a pleading standard that

had not yet been announced.1

as to real’s second argument, we are aware of no

authority suggesting that move was required to move

for summary judgment on its § 101 argument in order to

preserve this argument. See Street v. Corr. Corp. of Am.,

102 F.3d 810, 816 (6th Cir. 1996) (finding “no authority”

for the proposition that “failure to move for summary

judgment” on an argument “amounts to a waiver” of that

argument). We are particularly loathe to embrace such

an argument here, given that move’s motion for summary

judgment was filed before the Supreme Court’s decision

in Alice, which undeniably clarified the law in this area.

to the extent real argues that move’s present motion is

untimely under the February 11, 2009 scheduling order,

1. as move notes, it was unclear prior to Iqbal whether the

pleading standard announced in Bell Atl. Corp. v. Twombly, 550

U.s. 544 (2007) was applicable outside of the antitrust context. the

court in Twombly indicated that it was addressing the “question

of what a plaintiff must plead in order to state a claim under § 1

of the sherman act.” Id. at 545–55.

52a

Appendix F

that order was superseded by our may 16, 2016 order

requiring the parties to file “a joint brief presenting the

merits of any Alice arguments.” doc. 565.

real’s remaining arguments are no more persuasive.

real sought summary judgment on three issues:

(1) whether the ‘989 Patent was anticipated by certain

references; (2) whether these references were prior art;

and (3) whether inventor tornetta engaged in inequitable

conduct before the U.S. Patent and Trademark Office

(“Pto”). doc. 474. in its appeals to the Federal circuit,

real challenged this court’s claim construction, our

ruling on direct infringement, and our ruling on induced

infringement. See docs. 450, 511, 537. None of the issues

previously raised by real implicates § 101. Nor is

there evidence that REAL affirmatively argued that the

‘989 Patent was valid under § 101, either in its summary

judgment motion or on appeal. Absent any affirmative

argument by real, move’s silence cannot be understood

as waiver of the argument that the ‘989 Patent is invalid

under § 101.

The fact that REAL never affirmatively asserted

that the ‘989 Patent was valid under § 101 distinguishes

our april 25 order. there, we found that real waived

its theory of divided direct infringement. doc. 563.

as we explained, even after move “placed the issue of

divided direct infringement squarely before this court”

by arguing in its motion for summary judgment that this

type of infringement could not have occurred, real

failed to assert that such infringement had occured.

Id. at 3 (emphasis added). later, move sought to delay

53a

Appendix F

proceedings pending the Federal circuit’s en banc

decision in Akamai, which was expected to clarify the

standard for divided direct infringement. Id. at 4 (citing

doc. 447). real vigorously opposed, arguing that the

decision would have “[no] relevance” because “real is

prepared to show that move directly performed every

step of the claim.” Id. at 5 (citing doc. 448 at 3–4). thus,

real explicitly disclaimed any intention to pursue a

theory of divided direct infringement. move did not make

a comparable disclaimer here; the § 101 issue simply was

not raised by either party. Because we find that Move did

not waive the § 101 argument, we proceed to consider the

merits of move’s argument.

B. The Alice Test

General Principles

section 101 prov ides that “[w]hoever invents

or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and

useful improvement thereof, may obtain a patent thereof,

subject to the conditions and requirements of this title.”

35 U.s.c. § 101. this provision “contains an important

implicit exception: laws of nature, natural phenomena,

and abstract ideas are not patentable.” Alice, 134 s. ct. at

2354 (citation and quotation marks omitted). the supreme

court has developed a two-part framework to determine

whether a claim is subject to this implicit exception. Under

this framework, we begin by asking whether the relevant

claims are directed to a patent-ineligible concept. Id. at

2355 (citing Mayo Collaborative Servs. v. Prometheus

54a

Appendix F

Labs., inc., 132 s. ct. 1289, 1296–97 (2012)). if so, we

proceed “to 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. (quoting

Mayo, 132 s. ct. at 1297–98; quotation marks omitted).

The first step of the Alice inquiry is intended to be

a meaningful one. even though “[a]ll inventions at some

level embody, use, reflect, rest upon, or apply laws of

nature, natural phenomena, or abstract ideas,” Mayo,

132 s. ct. at 1293, not every invention is directed to a

patent-ineligible concept. See Enfish, LLC v. Microsoft

Corp., 822 F.3d 1327, 1335 (Fed. cir. 2016). to distinguish

claims that are directed to abstract ideas from those that

merely involve abstract ideas, we look to “the ‘focus’ of

the claims” and “their ‘character as a whole.’” Elec. Power

Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1354 (2016)

(citations omitted). if the essential features of the claim

derive their meaning from a particular technical context

and resist transplantation to other contexts, the claim is

non-abstract. if, on the other hand, these features are

readily transferrable across technical contexts, the claim

is directed to an abstract idea. See McRO, Inc. v. Bandai

Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. cir.

2016) (“the abstract idea exception prevents patenting a

result where ‘it matters not by what process or machinery

the result is accomplished.’”) (quoting O’Reilly v. Morse,

56 U.s. 62, 113 (1854)). similarly, if the essential features

of the claim can be implemented within the human mind

or with pen and paper, the claim is directed to an abstract

idea. See CyberSource Corp. v. Retail Decisions, Inc., 654

F.3d 1366, 1372–73 (Fed. cir. 2011).

55a

Appendix F

if the relevant claims are directed to an abstract

idea, we proceed to the second step of the Alice inquiry.

Here, we look for an “inventive concept – i.e., an element

or combination of elements that is sufficient to ensure that

the patent in practice amounts to significantly more than

a patent upon the ineligible concept itself.” Alice, 134 s.

ct at 2355 (quoting Mayo, 132 s. ct. at 1294; quotation

marks omitted; alterations incorporated). An artificial

attempt by the drafter “to limit the use of the [abstract

idea] to a particular technological environment” is not

enough. Mayo, 132 s. ct. at 1297 (quotation marks and

citation omitted). Nor will it suffice to “append[] . . . wellunderstood, routine, conventional activities previously

engaged in by workers in the field.” Intellectual Ventures

I LLC v. Symantec Corp. (“Symantec Corp.”), 838 F.3d

1307, 1313 (Fed. cir. 2016) (quoting Alice, 134 s. ct at 2357,

2359; quotation marks omitted; alterations incorporated).

However, an inventive concept may exist where the claim

includes a “non-conventional and non-generic arrangement

of known, conventional pieces.” BASCOM Glob. Internet

Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350

(Fed. cir. 2016).

a comparison of two supreme court cases illustrates

the type of analysis we perform when confronted with an

abstractness challenge. 2 in Diamond v. Diehr, 450 U.s.

175 (1981), the relevant claims required a computer to

perform “a well-known mathematical equation” as part of

2. although both cases predate Alice, they employ the same

basic analytical framework, and are therefore instructive. See

McRO, 837 F.3d at 1312 (supreme court cases that preceded the

two-step framework may nonetheless provide guidance).

56a

Appendix F

a broader process for curing rubber. Id. at 187. the court

held that the claims were patent eligible, notwithstanding

their use of an abstract equation, because they “used the

equation in a process designed to solve a technological

problem in ‘conventional industry practice.’” Alice, 134 s.

ct. at 2358 (quoting Diehr, 450 U.s. at 178). the equation

was useful only insofar as it was employed in connection

with “all of the other steps in the[] claimed process” –

“installing rubber in a press, closing the mold, constantly

determining the temperature of the mold, constantly

recalculating the appropriate cure time through the use

of the formula and a digital computer, and automatically

opening the press at the proper time.” Diehr, 450 U.s.

at 178. Because the key improvements identified in

these claims were integrated into a particular technical

context, the claims were patent eligible. See Mayo, 132 s.

ct. at 1298 (process at issue in Diehr was patent eligible

“because . . . the additional steps of the process integrated

the equation into the process as a whole”).

in Bilski v. Kappos, 561 U.s. 593 (2010), by contrast, the

relevant claims set forth “a series of steps instructing how

to hedge risk,” and then offered “a simple mathematical

formula” for applying these steps. Id. at 599. the claims

went on to explain how buyers and sellers in the energy

market could apply these concepts. Id. the court found

that hedging – a well-known concept used across fields –

was an abstract idea, and that the relevant claims failed

to anchor this idea to any particular technical context.

See id. at 611–12 (claims added nothing to underlying

idea except “well-known random analysis techniques”).

accordingly, the court concluded that the claims were

not patentable. Id. at 612.

57a

Appendix F

Applying Alice to Computer-Related

Claims

When computer-related claims are at issue, step one

of the Alice inquiry “asks whether the focus of the claims

is on the specific asserted improvement in computer

capabilities . . . or, instead, on a process that qualifies

as an ‘abstract idea’ for which computers are invoked

merely as a tool.” Enfish, 822 F.3d at 1335–36. claims

that involve the improvement of computer functionality

are patent eligible. See, e.g., McRO, 837 F.3d at 1314

(claims “focused on a specific asserted improvement in

computer animation” were non-abstract); Enfish, 822

F.3d at 1339 (method for improving “the way a computer

stores and retrieves data in memory” was non-abstract);

DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,

1257 (Fed. cir. 2014) (method for website operation that

involved “generat[ing] and direct[ing] the visitor to [a]

hybrid web page that present[ed] product information

from the thirdparty and visual ‘look and feel’ elements

from the host website” was non-abstract). “software can

make non-abstract improvements to computer technology

just as hardware improvements can.” Enfish, 822 F.3d

at 1335. claims that involve improvements to computer

functionality are patent eligible because they derive

their meaning from the particular context of computing,

resist transfer to other technical contexts, and cannot be

implemented within the human mind.

on the other hand, claims that involve the use of

a computer to perform ordinary mental processes are

directed to an abstract idea. See, e.g., FairWarning IP,

58a

Appendix F

LLC v. Iatric Sys., Inc., No. 2015-1985, 2016 Wl 5899185,

at *4 (Fed. cir. oct. 11, 2016) (computerized method for

analyzing records of human activity to detect suspicious

behavior “merely implement[ed] an old practice in a

new environment,” and was therefore abstract). When

confronted with claims of this type, we must proceed to

step two of the Alice inquiry and “scrutinize” the technical

aspects of the claim “more microscopically.” Elec. Power

Grp., 830 F.3d at 1354. “steps that do nothing more than

spell out what it means to ‘apply it on a computer’ cannot

confer patent-eligibility.” Intellectual Ventures I, LLC v.

Capital One Bank (USA) (“Capital One”), 792 F.3d 1363,

1370–71 (Fed. cir. 2015) (quoting Alice, 134 s.ct. at 2359). 3

Nor does “claiming the improved speed or efficiency

inherent with applying the abstract idea on a computer

provide a sufficient inventive concept.” Id. at 1367. rather,

the claim must “reflect[] a specific implementation not

demonstrated as that which any [programmer] engaged in

the search for [a means of implementing the abstract idea]

would likely have utilized.” McRO, 837 F.3d at 1316 (quoting

Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,

133 s. ct. 2107, 2119–20 (2013)); see BASCOM, 827 F.3d

at 1350 (novel arrangement of software elements to filter

internet content, which provided “a technical improvement

3. See also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,

715–16 (Fed. cir. 2014) (instructions “to implement the abstract

idea with routine, conventional [computing] activity” do not provide

an inventive concept); Symantec Corp., 838 F.3d at 1315 (“claims

that amount to nothing significantly more than an instruction to

apply an abstract idea using some unspecified, generic computer

. . . do not make an abstract idea patent-eligible”) (quoting Alice,

134 s. ct. at 2359–60).

59a

Appendix F

over prior art ways of filtering such content,” provided

inventive concept).

Analysis

Alice Step One

turning to the merits, we begin by asking whether the

‘989 Patent is directed to an abstract idea. move argues

that it is directed to such an idea: specifically, the idea of

“locating available real estate that meets one’s geographic

and other criteri[a].” doc. 573 at 15. real accuses move of

overgeneralizing the invention. it argues that Patent ‘989

is directed to: “a method for transforming a database of

available real estate properties into a computer display of

a zoomed second area, where the information is displayed

at a higher level of detail than a previous display, and the

points displayed represent the locations of available real

estate properties.” Id. at 32.

as an initial matter, we must decide the appropriate

level of generality at which to view the ‘989 Patent.

some decisions of the Federal circuit have instructed

courts applying Alice step one to be “‘careful to avoid

oversimplifying the claims’ by looking at them generally

and failing to account for the specific requirements of

the claims.” McRO, 837 F.3d at 1313 (quoting In re TLI

Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. cir.

2016)); see also Enfish, 822 F.3d at 1327 (“[d]escribing the

claims at such a high level of abstraction and untethered

from the language of the claims all but ensures that

the exceptions to § 101 swallow the rule.”). However, a

60a

Appendix F

review of Alice itself, and recent Federal circuit decisions

applying it, indicate that courts routinely describe

claims at a high level of generality at Alice step one.4 We

therefore agree with a prior decision of this court that

Alice step one requires us to “recite a claim’s purpose at

a reasonably high level of generality.” Secure Mail Sols.

LLC v. Universal Wilde, Inc., 169 F. supp. 3d 1039, 1048

(c.d. cal. 2016) (citation and quotation marks omitted);

cf. BASCOM, 827 F.3d at 1349 (recognizing that analysis

of specific limitations can occur at either step).

in deciding what the ‘989 Patent is directed to,

we consider the abstract and the language of the sole

4. See Alice, 134 s. ct. at 2356 (“on their face, the claims

before us are drawn to the concept of intermediated settlement,

i.e., the use of a third party to mitigate settlement risk.”); see, e.g.,

FairWarning IP, 2016 Wl 5899185, at *2 (claims were directed to

“concept of analyzing records of human activity to detect suspicious

behavior”); Symantec Corp., 838 F.3d at 1313 (claim directed to

“receiving e-mail . . . identifiers, characterizing e-mail based on

the identifiers, and communicating the characterization”) Elec.

Power Grp., 830 F.3d at 1353 (“the focus of the asserted claims

. . . is on collecting information, analyzing it, and displaying

certain results of the collection and analysis.”); BASCOM, 827 F.3d

at 1348 (claims “directed to filtering content on the Internet”);

Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d

1314, 1324 (Fed. cir. 2016) (“asserted claims [were] directed to

the abstract idea of ‘anonymous loan shopping’”); Versata Dev.

Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed. cir. 2015)

(claims directed to “the abstract idea of determining a price,

using organizational and product group hierarchies”); Internet

Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed.

cir. 2015) (claim directed to “the idea of retaining information in

the navigation of online forms”).

61a

Appendix F

independent claim, claim 1. the abstract describes the

invention as “a method for locating available real estate

properties for sale, lease or rental using a database of

available properties at a central location and remote

stations which use a graphic interface to select desired

regions on a map of the areas of interest.” claim 1

discloses “[a] method using a computer for locating

available real estate properties” comprising steps for

“creating a database” of available properties, representing

this information on a digital map, and allowing the user to

“select a[n] . . . area” and “zoom[] in . . . to display a higher

level of detail.” We therefore conclude that the ‘989 Patent

is directed to a method for collecting and organizing

information about available real estate properties and

displaying this information on a digital map that can be

manipulated by the user.

Based on this understanding, we conclude that the

‘989 Patent is directed at an abstract idea. the Federal

circuit has explained that “collecting information,

including when limited to particular context,” is “within

the realm of abstract ideas.” Elec. Power Grp., 830 F.3d

at 1353. methods for “analyzing information” that rely on

“steps people go through in their minds” or “mathematical

algorithms” are also abstract. Id. at 1354; accord Amdocs

(Israel) Limited v. Openet Telecom, Inc., No. 20151180, 2016 Wl 6440387, at *9 (Fed. cir. Nov. 1, 2016)

(“claims involving the mere collection and manipulation

of information do not satisfy § 101”) (citations omitted). it

follows that the concept of collecting and organizing data

about available real estate properties is abstract.

62a

Appendix F

the requirement that the information be displayed

on a digital map is also abstract. the Federal circuit

has explained that “merely presenting the results of

abstract processes of collecting and analyzing information

. . . is abstract as an ancillary part of such collection

and analysis.” Elec. Power Grp., 830 F.3d at 1354.

Nothing about the display requirement renders claim

1 non-abstract. the concept of using a map to display

geographic information is ancient;5 it is certainly “part

of the storehouse of knowledge of all men” which is “free

to all men and reserved exclusively to none.” Funk Bros.

Seed Co. v. Kalo Inoculant Co., 333 U.s. 127, 130 (1948).

the fact that the map is digital, rather than physical, does

not change the analysis. the ‘989 Patent relies on generic

computing capabilities to render the map. See doc. 575-1

at 23 (“[t]he present invention may be implemented on an

iBm or compatible personal computer” using a variety of

existing softwares); see also id. at 41 (Patent examiner:

“it is well known in the prior art of computer to display

information textually or graphically.”). Generic computer

implementation of this sort does not defeat a finding of

abstractness. See, e.g., Symantec Corp., 838 F.3d at 1315.

Finally, the requirement that the user be able to

manipulate the map to obtain more detailed information

– i.e., that the user be able to “select a[n] . . . area” and

“zoom[] in . . . to display a higher level of detail” – is also

abstract. to begin, we note that the concept of using a

5. the oldest known map, the imago mundi, dates to the

6th century Bce. See http://www.britishmuseum.org/research/

collection_online/collection_object_details.aspx?assetid=404485

001&objectid=362000&partid=1.

63a

Appendix F

series of related maps that provide progressively greater

detail is an abstract idea. as the eastern district of

virginia noted in a similar case, “atlases have long

provided maps of large geographic areas along with

corresponding maps of smaller portions of these larger

areas in more detail.” Peschke Map Techs. LLC v. Rouse

Properties Inc., 168 F. supp. 3d 881, 888 (e.d. va. 2016).

organizing geographic data in this way is commonsensical

– it is the type of approach anyone attempting to organize

a large amount of geographic data would think to use.

allowing a user to orient herself using a larger map, and

then to select a smaller, more detailed map corresponding

to her geographic preference, is similarly commonsensical.

all of these steps could be approximated by a realtor with

an atlas.

of course, even if the process is abstract, the

claim may be directed to a patent-eligible subject if it

discloses “a specific asserted improvement in computer

[performance]” designed to implement the process.

McRO, 837 F.3d at 1314. But we see no evidence that

the ‘989 Patent discloses such an improvement. claim 1

does not teach any innovation in computer functionality;

instead, it speaks of performing generic functions such as

“creating a database,” “zooming in” on a selected area,

and “displaying a map.” real argues that steps such

as “zooming to display a higher level of detail” cannot

be performed without a computer (doc. 573 at 41–42)

and that the process as a whole requires a computer to

be “programmed to operate in a specific manner,” (id. at

38), but that is not enough: claims involving software are

often found to be abstract where they rely on “routine,

64a

Appendix F

conventional [computing] activity.” See, e.g., Ultramercial,

772 F.3d at 715–16. there is nothing to indicate that

the computer activity disclosed by the ‘989 Patent is

anything other than routine. although the ‘989 Patent

discloses pages of logical flow charts that explain how

the computer should be programmed to perform the

claimed method (doc. 571 at 3–15), real does not explain

how the disclosed program differs from that which any

programmer would have used to implement the claimed

method. Cf. McRO, 837 F.3d at 1316.6

comparing the ‘989 Patent to one of the patents

at issue in Enfish, where the Federal circuit upheld a

software patent against an abstractness challenges at

Alice step one, demonstrates what is lacking here. the

patents in Enfish were directed to the use of a selfreferential table to organize data. Enfish, 822 F.3d at 1336.

one of the claims recites:

a data storage and retrieval system for a

computer memory, comprising: means for

configuring said memory according to a logical

table, said logical table including: a plurality of

logical rows, each said logical row having an

object identification number (OID) to identify

each said logical row, each said logical row

corresponding to a record of information; a

6. Similar flow charts appear in many software patents that

have been invalidated on abstractness grounds. consider Figure 4

of U.s. Patent No. 6,460,050, which was held invalid in Symantec

Corp., 838 F.3d at 1313, or Figure 2 of U.s. Patent No. 8,578,500,

held invalid in FairWarning, 2016 Wl 5899185.

65a

Appendix F

plurality of logical columns intersecting said

plurality of logical rows to define a plurality of

logical cells, each said logical column having an

oid to identify each said logical column; and

wherein at least one of said logical rows has an

oid equal to the oid of a corresponding one

of said logical columns, and at least one of said

logical rows includes logical column information

defining each of said logical column.

claim 1 of U.s. Patent No. 6,151,604 (the “‘604 Patent”).

the ‘604 Patent goes on to identify several benefits

associated with the use of a self-referential table. First, the

claimed method is compatible with “an indexing technique

that allows for faster searching of data” than would be

possible using the conventional method of organizing

data in tabular form. Enfish, 822 F.3d at 1333 (citation

omitted). second, the claimed method “allows for more

effective storage of data other than structured text, such

as images and unstructured text.” Id. (citation omitted).

Finally, the claimed method “allows more flexibility in

configuring the database,” because the database can be

launched without first configuring a series of related

tables. Id. (citation omitted).

thus, the patent in Enfish speaks directly to a

particular method of organizing data on a computer. the

benefits it provides – faster searching, more effective

storage of images and unstructured text, and more

flexibility in table configuration – can only be realized,

and only make sense, in the computing context. the logical

structure is decidedly novel, with no precursor in the pre-

66a

Appendix F

computer world. and crucially, the method is not one that

any programmer seeking to perform the relevant function

would have known to design; to the contrary, the evidence

before the Federal circuit indicated that programmers

had traditionally relied on a different method to organize

data in tabular form. all of these features distinguish the

‘604 Patent from the ‘989 Patent.

Alice Step Two

We proceed to step two of the Alice inquiry. Here, we

“scrutinize” the technical aspects of the ‘989 Patent “more

microscopically,” Elec. Power Grp., 830 F.3d at 1354,

to determine whether the claim includes an inventive

concept “sufficient to ‘transform’ the claimed abstract

idea into a patenteligible application.” Alice, 134 s. ct. at

2357 (citing Mayo, 132 s. ct. at 1294, 1295).

real presents two arguments as to why the ‘989

Patent contains an inventive concept. First, real

argues that the ‘989 Patent discloses “a particular way

of improving the function of a computer to provide ease

and speed of search and retrieval of information from a

database of available real estate properties.” doc. 573 at

49. this argument is a non-starter. there is no evidence

that the ‘989 Patent improves computer functionality; to

the contrary, the specification teaches that the claimed

method relies on generic computing capabilities. See doc.

575-1 at 23 (“[t]he present invention may be implemented

on an iBm or compatible personal computer” using a

variety of existing softwares). the fact that this generic

computer implementation may increase the ease and

67a

Appendix F

speed of search and retrieval of information does not

provide an inventive concept. See Capital One, 792 F.3d

at 1370–71 (“the improved speed or efficiency inherent

with applying the abstract idea on a computer” is not an

inventive concept).

second, real argues that zooming to display a

higher level of detail is an inventive concept. it cites a

declaration from its expert, Professor dennis e. shasha,

stating that “[i]t was considered neither routine nor

conventional in the mid-1980s for a computer-displayed

map to be able to zoom to display a higher level of detail.”

doc. 573 at 44 ( doc. 575-3 at 4, ¶ 12). although we accept

that as true,7 we do not see it as evidence of an inventive

concept. as explained, the concept of using a series of

related maps that provide progressively greater detail is

an abstract idea, and a zoom feature on a digital map is a

commonsensical way to implement this abstract idea on

a computer. Accord Peschke Map, 168 F. supp. 3d at 888

(“[t]he use of multiple layers of maps that enables users to

zoom into and out of a geographic area is an unpatentable

7. there is evidence that zooming in general was known in

the art. See doc. 575-1 at 148 (Patent examiner: “as to the zoom

feature . . . that too is known. Waller, for example, teaches a means

for providing the operator with a large scale map. the operator

may specify a region within the large scale map by positioning a

window at the center of the desired region. the system will zoom

in on the designated region and provide a close-up map of the

region.”). real contends, and we see no evidence to the contrary,

that the ‘989 Patent was among the first to teach a dynamic zoom

– one providing more detail, not simply a larger display, as the

user zooms in. See doc. 573 at 45.

68a

Appendix F

abstract idea.”). Whether the ‘989 Patent was the first

attempt to implement this idea on a computer is of no

relevance. as the supreme court has explained, “the 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.” Bilski, 561 U.s. at 610–11.

real does not identify anything else that might

constitute an inventive concept. Nor do we see anything.

REAL has not identified any improvement to computer

functionality. Nor does it identify a “non-conventional and

non-generic arrangement of known, conventional pieces.”

BASCOM, 827 F.3d at 1350. it appears to us that the ‘989

Patent provides instructions to implement an abstract

idea “with routine, conventional [computing] activity.”

Ultramercial, 772 F.3d at 715–16. therefore, we hold

that the implicit exception against patenting abstract

ideas applies to the ‘989 Patent, and that move is entitled

to summary adjudication that the ‘989 Patent is invalid

under § 101.

III. Defendants’ October 18, 2011 motion

Anticipation

an invention is not patentable if it was anticipated

– that is, if it was “patented, described in a printed

publication, or in public use, on sale, or otherwise available

to the public” before the priority date of the claimed

invention. 35 U.s.c. § 102(a)(1). “anticipation requires

that all of the claim elements and their limitations are

69a

Appendix F

shown in a single prior art reference.” In re Skvorecz,

580 F.3d 1262, 1266 (Fed. cir. 2009). it is not necessary

that every element be explicitly disclosed; anticipation can

also occur by implication. See Standard Havens Prods.,

Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed.

cir. 1991). However, whether the disclosure is explicit or

implicit, it must be “sufficient to enable one with ordinary

skill in the art to practice the invention.” Minn. Mining

& Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed.

cir. 2002). “anticipation is a question of fact,” Glaverbel

Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45

F.3d 1550, 1554 (Fed. cir. 1995), and must be established

by clear and convincing evidence. Applied Med. Res. Corp.

v. U.S. Surgical Corp., 147 F.3d 1374, 1378 (Fed. cir. 1998).

real seeks summary adjudication that the ‘989

Patent is not anticipated. docs. 474. real argues that

move cannot demonstrate anticipation because (1) none

of the alleged anticipating references discloses all of the

steps of the claimed method and (2) none of the allegedly

anticipating references was publicly available before

the relevant priority date. doc. 476 at 15–19, 21–27. We

consider each argument in turn.

1. Disclosure

move argues that the ‘989 Patent is anticipated

by two sets of references, “midas/mapinfo” and

“Workplace.” the midas/mapinfo references were

developed by Navigation technologies, inc. (“Navigational

technologies”). doc. 482-22 at 407, ¶ 3. the Workplace

references were developed by inventor tornetta, pursuant

70a

Appendix F

to a license agreement between real and synermation,

inc. (“synermation”). doc. 482-11 at 95–121. real argues

that none of these references is anticipating because none

teaches step (a) of claim 1, “creating a database of the

available real estate properties.” doc. 476 at 17–19.

With respect to the midas/mapinfo references,

real argues that none of these references teaches

creating a database of available real estate properties

because none of them actually works. in support of this

argument, real cites testimony from move’s expert

Professor todd s. Bacastow stating that: (1) he had to

create his own database to operate midas version 1.2 8

because otherwise he “couldn’t get [it] to run;” (2) he was

not aware of anyone who performed all elements of claim

1 using MIDAS Version 1.2 before the effective filing date

of the ‘989 Patent; (3) he was “unable to run” any version of

mapinfo version 2.0 he received; and (4) he was “unaware

of any version of mapinfo version 2.0 that will run.” doc.

482-9 at 82–83, 91, 48–50. move does not meaningfully

respond to these arguments.

We agree with real that no reasonable jury could

find by clear and convincing evidence that MapInfo Version

2.0 anticipates the ‘989 Patent, given move’s failure to

produce any evidence that this program is functional.

real is therefore entitled to summary adjudication that

8. some but not all of the testimony distinguishes between

two versions of midas version 1.2 –midas v1.22s and midas

V1.22UM. As the testimony and briefing often fail to distinguish

between the two versions, we ignore the distinction for present

purposes.

71a

Appendix F

mapinfo version 2.0 does not anticipate the ‘989 Patent.

However, we think real mischaracterizes Professor

Bacastow’s testimony regarding midas version 1.2.

Professor Bacastow testified that he was able to create

a database using midas version 1.2 and to perform all

of the steps of claim 1 using this software. doc. 482-9

at 89–90. He further testified that this software was

“intended for and in fact probably used to look at available

real estate properties.” Id. at 90. Based on this testimony,

a reasonable jury could find by clear and convincing

evidence that midas version 1.2 teaches creating a

database of available real estate properties. real is not

entitled to summary adjudication on the question whether

midas version 1.2 anticipates the ‘989 Patent.

With respect to the Workplace references, real

argues that none of these references anticipates the ‘989

Patent because none includes routines or language for

creating a database of properties. real cites testimony

from move’s expert Professor Peter Guth, who stated

that the Workplace software he reviewed “would never

have created a database because the database would

have been created on the host. the Workplace software

. . . was designed for a person or the realtor to query the

properties that had been created with another program

in the database.” doc. 482-19 at 116. Professor Guth

acknowledged that he had no evidence that such a program

existed, but explained that “you could have created that

database as simply as going into a word processor or a

spreadsheet.” Id. at 116–17. real also cites testimony

from Professor Bacastow, who stated that the Workplace

software he examined could not plot a plurality of points

because it “was not provided with a database.” doc.

72a

Appendix F

482-9 at 57–58. move responds by accusing real of

mischaracterizing the testimony of Professors Guth and

Bacastow. doc. 476 at 20, n.3.

reading the cited testimony in context, we conclude

that a reasonable jury could find by clear and convincing

evidence that Workplace teaches creating a database. it

is undisputed that the Workplace software reviewed by

Professors Guth and Bacastow did not include a database

or code for creating a database. But both professors

testified that the software was designed to operate with

a database. For example, Professor Guth testified that

“[t]he source code has lines of code in it that would have

plotted the properties from [a] database” had one been

supplied; he went on to state that “it would have been

virtually impossible to write the program without having

a test database that would be plotting properties when

you did that.” doc. 482-19 at 118; accord doc. 482-19

at 10, n.12 (Professor Guth’s expert report). Professor

Bacastow testified similarly: “looking at the code we were

given in hard copy format, it was quite clear that in fact

it was intended to have a database.” doc. 482-9 at 58.

Based on this evidence, a reasonable jury could find by

clear and convincing evidence that creating a database is

necessarily implied by the Workplace references. real

is not entitled to summary adjudication on the question

whether Workplace anticipates the ‘989 Patent.

2. Public Availability

the second part of real’s motion argues that

real is entitled to summary adjudication on the § 102

issue because neither midas version 1.2 nor Workplace

73a

Appendix F

was publicly available before the priority date of the

‘989 Patent. First, real argues that the ‘989 Patent

is entitled to a priority date based on the effective filing

date of the ‘576 Patent – i.e. march 19, 1986. there is

no dispute that anticipation could not have occurred if

real is correct. second, real argues that it is entitled

to summary adjudication even if the ‘989 Patent has a

priority date based on the effective filing date of the ‘989

Patent (april 24, 1989), because move has not produced

evidence that the allegedly anticipating references were

publicly available at the relevant time.

a. Is the ‘989 Patent Entitled to the ‘576

Patent’s Priority Date?

the ‘989 Patent is a continuation-in-part (“ciP”) of the

‘576 Patent. a ciP application is entitled to the priority

date of the parent application if the parent disclosed every

element claimed by the ciP in the manner required by

section 112(a). 35 U.s.c. § 120. “subject matter that arises

for the first time in the CIP application does not receive

the benefit of the filing date of the parent application.”

Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d

1291, 1302 (Fed. cir. 1999). to determine whether a

ciP claim is entitled to the priority date of the parent

application, we ask whether the disclosure in the parent

“reasonably conveys to the artisan that the inventor

had possession at that time of the later claimed subject

matter.” Id. (citation omitted; alteration incorporated).

“this is a question of fact.” Id. at 1303.

74a

Appendix F

real argues that the ‘989 Patent is entitled to

the priority date of the ‘576 Patent because the patent

examiner specifically concluded as much. If the examiner

finds that the CIP application is entitled to the parent’s

priority date, we presume this finding is valid, absent clear

and convincing evidence that it is erroneous. See Bone

Care Int’l, LLC v. Pentech Pharm., Inc., 741 F. supp. 2d

865, 872–73 (N.d. ill. 2010). if the examiner did not make

such a determination, the burden is on the patent holder to

show that the ciP patent is entitled to the parent’s priority

date. Id. at 873 (citation omitted). “Whether the examiner

actually considered this issue can only be determined by

reviewing the prosecution history.” In re NTP, Inc., 654

F.3d 1268, 1278 (Fed. cir. 2011).

real argues that the examiner was required to

make a priority determination because the record included

two references created after the effective filing date of the

‘576 Patent but before the effective filing date of the ‘989

Patent. See doc. 482-4 at 115. real contends that the

examiner found that these references could be disregarded

because they post-dated the effective filing date of the ‘989

Patent. in support of this argument, real points to the

patent examiner’s statement that “[t]he newlycited art is

considered relevant to applicant’s disclosure, but does not

qualify as prior art.” Id. at 111 (emphasis added). We do

not think this vague, conclusory statement is sufficient to

establish that the patent examiner found the ‘989 Patent

entitled to the priority date of the ‘576 Patent. there is “no

evidence that the examiner actually considered whether

the claims of the [‘576 Patent] satisfy the requirements

of § 112;” the examiner certainly did not “make an

75a

Appendix F

affirmative statement that the claims of the [‘576 Patent]

satisfied § 112.” In re NTP, 654 F.3d at 1278–79. absent

such evidence, we cannot presume that the ‘989 Patent is

entitled to the priority date of the ‘576 Patent.9

real argues in the alternative that the ‘576 Patent

teaches every element of claim 1 of the ‘989 Patent. move

disagrees, arguing that the ‘576 Patent fails to disclose

element (g) of claim 1 –displaying a plurality of points.

doc. 476 at 42–45. move points to testimony from Professor

Bacastow, who opined that the method set forth in the

appendix of the ‘576 Patent would not display a plurality

of points because any point shown on a screen would be

cleared before the user could access a second listing.

doc. 482-26 at 182–86. real counters with testimony

from its expert, Professor shasha, who opined that the

‘576 Patent discloses step (g) because (1) the ‘576 Patent

allows a user to position a crosshair cursor to “create[] a

point representing the appropriate geographic location of

a real estate property,” and (2) “[r]epeated application of

this process would result in displaying a plurality of such

points because there is no erasure of such points and no

clear screen” in the program. doc. 482-12 at 111–12. We

think the disagreement between Professors Bacastow

and shasha creates a genuine dispute of material fact as

to whether ‘989 Patent is entitled to the priority date of

the ‘576 Patent.

9. even if we were to adopt this presumption, it would not

affect our ultimate conclusion. move has presented evidence from

which a reasonable jury could find by clear and convincing evidence

that the ‘576 Patent does not disclose every step of claim 1 of the

‘989 Patent. See doc. 482-26 at 182–86

76a

Appendix F

Were the Allegedly Anticipating

References Publicly Available At the

Relevant Time?

real argues that, even if move is correct regarding

the priority date for the ‘989 Patent, the ‘989 Patent was

not anticipated because neither midas version 1.2 nor

Workplace was publicly available before the relevant

priority date.10

mIDAS Version 1.2

With respect to midas version 1.2, real points

to Professor Bacastow’s testimony that he had “no

knowledge of invoices or actual sales” for midas version

1.2, nor any other “direct evidence” that the software

was delivered to a customer before april 24, 1989. doc.

482-9 at 35, 73–74, 80–81, 98–99. in addition, real cites

testimony from Barry indyke, a software engineer at

Navigation Technologies. Although Indyke testified that

he “know[s]” Navigational technologies had customers for

midas version 1.2 in 1987 and that it would “surprise

[him]” if the first sales were after that year, he conceded

that he does not have sales documentation to support his

recollection. doc. 482-6 at 79.

10. Because midas was developed by a third-party, the

priority date is the effective filing date of the ‘989 Patent, or April

24, 1989. 35 U.s.c. § 102(a)(1). Because Workplace was developed

by inventor tornetta, the priority date is one year earlier.

§ 102(b)(1) (disclosures made by the inventor up to a year before

the effective filing date are not considered prior art).

77a

Appendix F

move counters with a declaration from John Haller,

co-founder and former vice President for software

development of Navigational technologies. Haller avers

that the midas program was offered for sale “[a]t least

as early as July 1986,” and that “version 1.2 of the midas

program was offered for sale and sold beginning in march

1987.” doc. 482-22 at 407–09, ¶¶ 6, 11. Haller attaches

two documents to his declaration: (1) a sales presentation

on the midas software given to the albany Board of

realtors in July 1986, and (2) the user manual for midas

version 1.2, which states that it is for use “with the midas

version 1.2 software release of august 1987.” doc. 482-23

at 2–26, 40.

Based on the Haller declaration and the corroborating

evidence attached thereto, as well as the testimony of

Barry Indyke, a reasonable jury could find by clear and

convincing evidence that midas version 1.2 was publicly

available before april 24, 1989. We therefore deny real’s

motion for summary adjudication on the question whether

midas version 1.2 anticipates the ‘989 Patent.

ii. Workplace

real argues that Workplace was not publicly

available before the relevant priority date (here, april 24,

1988) because the software was maintained in confidence

in accordance with the terms of the license agreement

(“ag reement”) between rea l and synermation.

real relies on a provision of the agreement stating

that synermation will “hold all technical information . . .

furnished by [REAL] in confidence and will not disclose

78a

Appendix F

such technical information . . . to others without prior

written permission received from [real].” doc. 482-11

at 101, ¶ 2.8.

move disputes rea l’s understanding of this

provision. Move notes that the agreement defines the

term “technical information” to include “system overview,

flowcharts, and executable object code . . . relating to the

manufacture, use and testing of” Workplace, but not to

include Workplace itself. See id. at 97, ¶ 1.6. move also

points to provisions of the agreement that contemplate

public distribution of the software. See, e.g., id. at 102,

¶ 3.1 (granting synermation “the exclusive worldwide right

and license to use the technical information to operate,

reproduce, distribute, market, franchise, sublicense,

and support” Workplace). Finally, move cites inventor

tornetta’s testimony that he and synermation gave free

copies of the software to anyone who asked for it. doc. 48222 at 71, 116. reviewing all of this evidence, we conclude

that the agreement contemplates public distribution of

the Workplace software, and that such distribution may

have occurred. The confidentiality provision would not

preclude a reasonable jury from finding that Workplace

was publicly available before april 24, 1988.

real also argues that Workplace is not prior art

because it “was not completed and known to work for its

intended purpose” before the priority date of the ‘989

Patent. doc. 476 at 25. in support of this argument, real

presents testimony from inventor tornetta stating that

(1) synermation terminated the agreement by the end

of 1988 because the software failed certain tests, and

79a

Appendix F

(2) tornetta “did not have a functional working version”

of the software “until a month before the application of

the ‘989 Patent.” doc. 482-6 at 16–17, 31–32.

move points to other portions of inventor tornetta’s

testimony, where states that (1) the Workplace software

was written before 1988, and (2) the software was capable

of displaying a plurality of points and performing all of

the other limitations of claim 1 of the ‘989 Patent. doc.

482-22 at 113–14. in addition, move produces an april

22, 1988 article from the Times Herald of Norristown,

Pennsylvania, which states that Workplace is capable of

“superimpos[ing] on [a] map . . . a series of ‘points’, each of

which represents at least one property in the Workplace

database.” doc. 482-22 at 339 move cites testimony from

B. Jay Bagdis, the author of the Times Herald article,

who stated that tornetta had written “some software”

by the time the article was written and the software was

“probably” capable of accessing a database of real estate

properties as of this time. doc. 482-28 at 90.

Based on the evidence cited by move, a reasonable jury

could find by clear and convincing evidence that Workplace

was capable of performing all of the steps of claim 1 of

the ‘989 Patent before april 24, 1988. a reasonable jury

could also find that the software was publicly available

before this date. We therefore deny real’s motion for

summary adjudication on the question whether Workplace

anticipates the ‘989 Patent.

80a

Appendix F

Conclusion

real seeks summary adjudication that neither the

midas/mapinfo nor the Workplace references anticipate

the ‘989 Patent. real argues that these references fail

to anticipate the ‘989 Patent because (1) they do not teach

every element of claim 1 of the ‘989 Patent and (2) they do

not constitute prior art. As to REAL’s first argument, we

conclude that real is entitled to summary adjudication

that mapinfo version 2.0 does not anticipate the ‘989

Patent because move has not produced any evidence that

this software is capable of performing all of the steps

of claim 1. However, a genuine dispute of material fact

exists as to whether midas version 1.2 or Workplace is

capable o

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