UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, D.C.

In the Matter of

CERTAIN NETWORKING DEVICES, Investigation No. 337-TA-____

COMPUTERS, AND COMPONENTS Docket No. 3593
THEREOF AND SYSTEMS
CONTAINING THE SAME

PROPOSED RESPONDENT NETAPP’S REQUEST FOR A 100-DAY INITIAL

DETERMINATION ON THE DISPOSITIVE ISSUE OF SUBJECT MATTER ELIGIBILITY OF
THE ASSERTED CLAIMS OF THE SOLE PATENT AT ISSUE
 Proposed Respondent NetApp, Inc. (“NetApp”) hereby requests that, in the event the Commission

institutes an investigation based on the above-captioned complaint, the Commission order an early initial

determination within 100 days of institution on the dispositive issue of § 101-ineligibility of claims 1-37

of U.S. Patent No. 8,687,573, pursuant to Commission Rules 210.10(b)(3) and 210.42(a)(3).

This case is a perfect fit for the Commission’s 100-day program. The § 101 issue here is fully

dispositive of Complainant’s 1 claims. The Federal Circuit has consistently endorsed resolution of § 101

issues at the pleading stage or on early summary judgment, and the Commission itself has ordered an early

ID on § 101 issues when—as here—it would dispose of all asserted claims in the sole patent at issue in a

Section 337 investigation. 2 Moreover, the claims here closely track claims that the Federal Circuit has in

the past ruled are § 101-ineligible, so this issue should be easily adjudicated within 100 days.

The Commission should therefore order an early ID on the patentability of the asserted claims

under 35 U.S.C. § 101. It would be a waste of Commission and party resources to proceed with a full

investigation on all issues when this discrete, threshold § 101 issue is dispositive of the complaint and can

easily be decided within 100 days.

I. The ’573 Patent Claims are Directed to Ineligible Subject Matter

A claim is patent-eligible if it recites a “new and useful process, machine, manufacture, or

composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. In Alice, the

Supreme Court reaffirmed the two-step framework used to “distinguish[] patents that claim laws of nature,

natural phenomena, and abstract ideas from those that claim patent-eligible applications of those

concepts.” Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). This framework requires

determining (1) if the claim is directed to ineligible subject matter such as an abstract idea, and, if so, (2)

whether the remainder of the claim recites sufficient inventive elements that amount to “significantly

1
Complainant Proven Networks, LLC (“Proven”) is a non-practicing entity (NPE), organized in 2019 as
“RAK Investments III, LLC” by Larry C. Russ, name partner at Proven Networks’ attorneys’ firm, Russ
August & Kabat.
2
Certain Portable Electronic Devices and Components Thereof, Inv. No. 337-TA-994, Notice of
Institution (May 5, 2016).

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more” than the abstract idea identified in Step 1. Id. The claims of the ’573 patent fail this two-step

framework because 1) they are directed to the abstract idea of allocating resources to users based on user

pricing levels, and 2) their remainder recites no inventive elements that amount to more than this ineligible

abstract idea.

Turning to Step 1, the claims asserted here are directed to the abstract idea of allocating resources

to users based on user pricing levels. The specification discloses that there is a “desire for both user

differentiation and service differentiation so that operators may offer different levels of subscriptions.”

’573 patent at 3:18-20. During prosecution, the applicant amended the claims to recite using subscriber

levels “measured by pricing levels” in order to overcome a prior art rejection, and argued that several

references cited by the examiner did not disclose prioritizing subscribers “based on pricing levels.”

Compl. Appendix A1, Sept. 25, 2013 Response to Office Action at 9-11. The claims recite using a matrix

(i.e., table) to define these price-driven service priorities. For example, independent claim 1 recites a two-

stage method: (1) receiving “a matrix of priorities” in which each “user subscriber level” is given priority

based on pricing levels; and (2) using that matrix to allocate resources:

1. A method comprising:

receiving a matrix of priorities, each priority in said matrix being assigned to one of a
plurality of services for one of a plurality of user subscriber levels, wherein said user subscriber
levels indicate subscriber value as measured by pricing levels associated therewith; and

allocating resources to a bearer for a station of the communication system based at least in part
upon the priority assigned to a service provided over the bearer at the user subscriber level
associated with a subscriber.
This idea of allocating resources to users based on user pricing levels is a well-known abstract

idea, employed in many different contexts before computers were used for that purpose. As but one

example, airlines commonly use multiple tiers of service, such as gold, silver, and bronze memberships,

to prioritize in-flight service benefits such as seat selections, upgrades, boarding priority, and checked

bags. Tiered pricing models have long been employed by insurance companies, internet service providers,

and a litany of subscription-based services. In short, the idea of “pay more to get more” has existed since

markets have existed.

2
 Indeed, the Federal Circuit has held unpatentable claims directed to prioritizing or conditioning

access to resources based on the amount of payment. For example, in Smartflash LLC v. Apple Inc., the

Federal Circuit held that claims reciting in part conditioning access “dependent upon the amount of

payment” were directed to the ineligible idea of “conditioning and controlling access to data based on

payment.” 680 F. App’x 977, 984 (Fed. Cir. 2017). Similarly, the Federal Circuit and lower courts have

repeatedly held that claims directed to controlling or restricting access to resources to be directed to

abstract ideas. Ericsson, Inc. v. TCL Commc’ns Tech. Holdings Ltd. 955 F.3d 1317, 1326 (Fed. Cir. 2020)

(abstract idea of controlling access to, or limiting permission to, resources); Prism Techs. LLC v. T-Mobile

USA, Inc., 696 F. App’x 1014, 1017 (Fed. Cir. 2017) (abstract idea of “providing restricted access to

resources”); Preservation Wellness Techs. LLC v. Allscripts Healthcare Sols., Inc., No. 2:15-cv-1559,

2016 WL 2742379 (E.D. Tex. May 10, 2016) (abstract idea of providing patients and physicians with

“tiered access” to patients’ medical records). Thus, the ’573 patent’s claimed method of allocating

resources is plainly directed to an abstract idea under the first prong of Alice.

Nor do the claims recite a technological solution to a technological problem. Cf., e.g., Mentone

Sols. LLC v. Digi Int’l Inc., No. 2021-1202, 2021 WL 5291802, at *4 (Fed. Cir. Nov. 15, 2021). The

claims do not recite any specific structure or arrangement of the claimed priority matrix, let alone how the

matrix is generated. Nor do the claims require a system to use the matrix in any specific way so long as

the matrix is used to “allocat[e] resources” based on information in the matrix. Indeed, the specification’s

preferred embodiment of a priority matrix depicts merely a simple table summarizing different benefits

granted to different user tiers of gold/silver/bronze—just like the types of tables commonly used to

describe benefits of different tiered frequent flier programs or other tiered membership programs:

3
’573, Fig. 2. The claims thus do not “overcome a problem specifically arising in the realm of computer

networks,” let alone recite a “particular method of” addressing such a problem. Cf. Mentone, 2021 WL

5291802, at *4 (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).

Turning to Step 2, when the abstract idea is teased out of the claims, the remainder does not recite

any purportedly inventive concept sufficient to transform the nature of the claims into patent-eligible

subject matter. Claim 1 is a method claim that does not recite any structural features beyond a “station”

and “the communication system.” Independent claim 20—an apparatus claim strikingly similar to claim

1—likewise recites only generic computer components—“processors” and “memories”—without any

arrangement that could be considered inventive. Such generic computer components cannot contribute

any purported inventive concept. See, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792

F.3d 1363, 1370 (Fed. Cir. 2015) (“Steps that do nothing more than spell out what it means to apply it on

a computer cannot confer patent-eligibility.”) (internal punctuation omitted); see also Content Extraction

& Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014), cert. denied,

577 U.S. 914 (2015) (claims recite abstract idea of data collection, recognition, and storage using a generic

computer and scanner).

Nor do the dependent claims recite anything purportedly inventive that amounts to significantly

more than this abstract idea. Instead, each dependent claim recites merely additional known or abstract

features, including requiring that the “station is a user equipment” (claim 3), the “communications system

is a cellular system” (claim 4), or reciting features that the specification acknowledges were already widely

implemented in known communications systems (e.g., claims 7-12).

The ’573 patent’s claims add nothing inventive to their recited abstract idea, and are ineligible.

II. Resolution of the ’573 Patent’s Ineligibility under § 101 Is Straightforward and Can
Be Easily Decided within the 100-Day Program

Proven has asserted only a single patent in this case. Given the broad nature of the claims, there

are no significant fact issues or claim construction issues that would require the full fact discovery period

to resolve. Indeed, in a prior investigation, even after the respondent raised a § 101 defense to the ’573

4
patent, 3 Proven contended that every disputed claim term could be given its “plain and ordinary

meaning”—underscoring that resolution of § 101 issues here is unlikely to turn on complicated questions

of claim construction and could easily be resolved within 100 days. 4

The ITC has previously adjudicated a strikingly similar complaint through the 100-day program.

In Certain Portable Electronic Devices and Components Thereof, Inv. No. 377-TA-994, the Commission

granted the respondents’ request for early disposition where a non-practicing entity asserted a single patent

and relied on a single third party licensee for domestic industry. In that investigation, the Commission

granted the respondents’ request for early disposition of § 101 subject matter eligibility, and the ALJ

ultimately issued an early ID finding the asserted claims of the single asserted patent ineligible. Certain

Portable Electronic Devices, Inv. No. 337-TA-994, FID at 51 (Aug. 19, 2016). The Commission

determined not to review the ALJ’s finding and terminated the investigation. An early ID here would

likewise end any investigation, relieving the Commission, the parties, and potential third parties from the

time, expense, and discovery of a full-length proceeding. 5

Like it did in the -994 investigation, the Commission should designate any investigation here for

an early ID on the case-dispositive § 101 issue.

III. Conclusion

For the reasons set forth above and to conserve both public and private resources, the Commission

should designate any investigation for an early initial determination on the case-dispositive issue of patent

eligibility.

3
F5 Networks, Inc.’s Response To Proven’s Complaint, Certain Networking Devices, Computes, and
Components Thereof, Inv. No. 337-TA-1275, EDIS Doc. 751138 (Sept. 7, 2021).
4
Joint Proposed Claim Construction Chart, Certain Networking Devices, Computers, and Components
Thereof, Inv. No. 337-TA-1275, EDIS Doc. 755389 (Oct. 28, 2021).
5
A stay of discovery under 19 C.F.R. § 210.10(b)(3) pending an early ID is especially appropriate here,
where Proven is relying on a third party for domestic industry. ALJs routinely stay all discovery on
remaining issues not relevant to the 100-day proceedings. See, e.g., Certain Dissolving Microneedle
Patches for Cosmetic and Pharmaceutical Use, Inv. No. 337-TA-1189, Order 3 (Jan. 14, 2020); Certain
Taurine (2-Aminoethanesulfonic Acid), Methods of Production and Processes for Making the Same, and
Products Containing the Same, Inv. No. 337-TA-1146, Order 3 (Mar. 6, 2019).

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 Respectfully submitted,

Dated: January 27, 2022 /s/ Matthew J. Rizzolo

Matthew J. Rizzolo
ROPES & GRAY LLP
2099 Pennsylvania Ave NW
Washington, DC 20006-6807
Telephone: (202) 508-4600
Facsimile: (202) 508-4650

James R. Batchelder
Daniel W. Richards
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
Telephone: (650) 617-4000
Facsimile: (650) 617-4090

Josef B. Schenker
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036-8704
Telephone: (212) 596-9000
Facsimile: (212) 596-9090

Counsel for Proposed Respondent NetApp,

Inc.

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 CERTIFICATE OF SERVICE

I, Saron Harry, hereby certify that on January 27, 2022, true and correct copies of the foregoing
were served on the parties listed below:

Lisa R. Barton ☒Via EDIS

☐Via Hand Delivery
Secretary to the Commission
U.S. INTERNATIONAL TRADE COMMISSION
500 E Street S.W., Room 112 ☐Via Overnight Mail
Washington, D.C. 20436

Counsel for Complainant Proven Networks, LLC ☐Via Hand Delivery

Reza Mirzaie ☐Via Overnight Mail
☒Via Electronic Mail
Marc A. Fenster
Paul Kroeger
RUSS AUGUST & KABAT rmirzaie@raklaw.com
12424 Wilshire Boulevard, 12th Floor mfenster@raklaw.com
Los Angeles, CA 90025 pkroeger@raklaw.com
jlink@raklaw.com
Jonathan Link sudick@raklaw.com
RUSS AUGUST & KABAT
915 E Street NW, Suite 405
Washington, DC. 20004

Steven Udick
RUSS AUGUST & KABAT
5570 FM 423, Suite 250-2069
Frisco, TX 75034

/s/ Saron Harry

Saron Harry
Senior Litigation Paralegal
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199-3600
617-951-7381
Saron.Harry@ropesgray.com