Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 1 of 7
`
`Joint Pretrial Order
`EXHIBIT 21
`
`Detfendant’s Memorandum of Law
`on the Submission of Subject Matter
`Inteligibility to Court and Jury
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 2 of 7
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`CARBYNE BIOMETRICS, LLC,
`Plaintiff,
`Vvs.
`APPLE INC,,
`
`Defendant.
`
`AUSTIN DIVISION
`
`Civil Action No. 1:23-cv-00324
`
`JURY TRIAL
`
`DEFENDANT APPLE INC.”S MEMORANDUM OF LAW ON THE SUBMISSION OF
`
`SUBJECT MATTER INELIGIBILITY TO COURT AND JURY
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 3 of 7
`
`As explained in Apple’s summary judgment motion, ECF No. 183, the Court may
`determine as a matter of law that the Asserted Patents are not directed to patent-eligible subject
`matter, obviating the need for trial. In the event any Asserted Claim survives Apple’s motion,
`Apple proposes the following procedure for addressing § 101 at trial. First, the Court should
`determine the abstract idea and identify the abstract idea to the jury. Second, the jury should
`decide whether any inventive concept remaining in the claims is well-understood, routine, and
`conventional. Third, the Court should determine post-trial whether the claims are invalid under
`§ 101.
`
`First, the Court should identify for the jury the abstract idea to which each patent claim
`is directed. The jury has no role in identifying the abstract idea in the claims. That question is
`solely for the Court. For Step 2, under current Federal Circuit precedent, the jury may assess
`whether the claims containing anything beyond the abstract idea that was not “well-understood,
`routine, and conventional.” Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 217, 221-24
`(2014). The jury must be instructed as to what the abstract idea is so that it separates the abstract
`idea from the purported inventive concept. Without identifying the abstract idea, the jury may
`improperly assess whether the abstract idea itself contributes to an inventive concept at step two,
`which is improper. BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“a
`claimed invention’s use of the ineligible concept to which it is directed cannot supply the
`inventive concept” sought in step two). At Alice step two, courts remove the abstract idea from
`the claim and search the remainder—i.e. look beyond the abstract idea—for an “inventive
`concept sufficient to transform” the abstract idea into a patent-eligible application. Alice, 573
`U.S. at 221 (citation omitted). To focus the jury on the legally correct question, the jury should
`
`therefore be instructed on the specific abstract idea to which the claims are directed, and
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 4 of 7
`
`instructed to assess whether the elements beyond the abstract idea were “well-understood,
`routine [and] conventional” at the relevant time. Alice, 573 U.S. at 221. Any instruction that
`omits this information would be wrong as a matter of law under Supreme Court precedent and
`would erroneously invite the jury to find inventive the implementation of an abstract idea. Alice,
`573 U.S. at 221.
`
`Apple respectfully requests that the Court determine the abstract idea (if any) to which
`the claims are directed before the jury is seated. There is no dispute as to the Court’s role in
`Alice step one: the Court determines the abstract idea (if any) to which the claims are directed.
`Nor is there any dispute that the Court can and should make that determination based on the
`patents themselves. See ECF No. 183 at 3-7, 10-13; ECF No. 257 at 6-10, 12-14. The Court’s
`identification of the abstract idea would prevent the presentation of unnecessary and confusing
`evidence/argument at trial. For example, without the Court’s direction, the parties would need to
`present competing presentations of the abstract ideas and the step two fact presentation. In this
`case, those presentations would be especially likely to confuse the jury because Carbyne’s expert
`Mr. Cole identifies the same concepts at step two as at step one. [CITE]
`
`Second, for each claim, the Court should identify the specific allegedly inventive
`concept, separate from the abstract idea and identified by Carbyne, that the jury should
`examine. This approach both ensures that the jury will not erroneously examine the abstract idea
`itself and, by presenting only Carbyne’s asserted concepts, comports with the basic principle that
`only the parties’ actual disputes should be submitted to the jury.
`
`Third, because the “well-understood, routine and conventional” subtest is just one way
`for Apple to prove the absence of an inventive concept at Alice step two, post-trial the Court
`
`should make its own determination of whether Apple has shown the absence of an inventive
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 5 of 7
`
`concept at Alice step two, factoring in the jury’s factual determination of whether the concept
`proposed by Carbyne was “well-understood, routine and conventional.” The “well-understood
`routine, and conventional” subtest is just one way for Apple to prove there is no inventive
`concept in the claims sufficient to transform the abstract idea into something patent eligible.
`Alice, 573 U.S. at 221-224 (summarizing inventive concept jurisprudence). For example,
`separate from whether something is well-understood, routine or conventional, there is nothing
`inventive about limiting an abstract idea to a “particular technological environment.” Bilski v.
`Kappos, 561 U.S. 593, 610-11 (2010) (citation omitted). For another example, as explained
`above, if Carbyne’s contended inventive idea is a mere repackaging of a claim’s abstract idea,
`that contention would fail step 2 for reasons independent of the jury’s fact finding. Because of
`this, Apple submits initial proposed findings of fact and conclusions of law on this point
`contemporaneously with submission of this memorandum. Apple also respectfully requests the
`Court set a schedule for post-hearing filing of memoranda and final proposed findings of fact and
`
`conclusions of law on the subject matter eligibility of the patents.
`
`Respectfully Submitted,
`
`Dated: December 11, 2024 /s/ Andrew Radsch
`Brian C. Nash
`Regan J. Rundio
`MORRISON & FOERSTER LLP
`300 Colorado St., Suite 1800
`Austin, TX 78701
`Tel: (512) 617-0650
`Fax: (737) 910-0730
`Email: BNash@mofo.com
`Email: Rrundio@mofo.com
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 6 of 7
`
`James R. Batchelder (pro hac vice)
`Andrew Radsch
`
`James Mack
`
`ROPES & GRAY LLP
`
`1900 University Avenue
`
`East Palo Alto, CA 94303-2284
`
`Tel: (650) 617-4000
`
`Fax: (650) 617-4090
`
`Email: James.Batchelder@ropesgray.com
`Email: Andrew.Radsch@ropesgray.com
`Email: James.Mack@ropesgay.com
`
`Cassandra Roth (pro hac vice)
`
`Rachael Bacha (pro hac vice)
`
`ROPES & GRAY LLP
`
`1211 Avenue of the Americas
`
`New York, NY 10036-8704
`
`Tel: (212) 596-9000
`
`Fax: (212) 596-9090
`
`Email: Cassandra.Roth@ropesgray.com
`Email: Rachael.Bacha@ropesgray.com
`
`Allen S. Cross (pro hac vice)
`
`Nicole Pobre (pro hac vice)
`
`ROPES & GRAY LLP
`
`2099 Pennsylvania Avenue, N.W
`Washington, DC 20006
`
`Tel: (202) 508-4600
`
`Fax: (202) 508-4650
`
`Email: Allen.Cross@ropesgray.com
`Email: Nicole.Pobre@ropesgray.com
`
`S. Lara Ameri (pro hac vice)
`ROPES & GRAY LLP
`
`Prudential Tower
`
`800 Boylston Street
`
`Boston, Massachusetts 02199-3600
`Tel: (617) 951-7000
`
`Fax: (617) 951-7050
`
`Email: Lara. Ameri(@ropesgray.com
`
`Jeffrey T. Quilici
`
`TX State Bar No. 24083696
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 7 of 7
`
`200 W. 6th Street, Suite 2250
`Austin, TX 78701
`
`Tel: (512) 582-6950
`
`Fax: (512) 582-6949
`
`Email: jquilici@orrick.com
`
`Elizabeth R. Moulton (pro hac vice)
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`
`405 Howard Street
`
`San Francisco, CA 94105
`
`Tel: (415) 773-5700
`
`Fax: (415) 773-5759
`
`Email: emoulton@orrick.com
`
`Attorneys for Defendant Apple Inc.
`
`
`
`
`
`
`
`
`
`
`Joint Pretrial Order
`EXHIBIT 21
`
`Detfendant’s Memorandum of Law
`on the Submission of Subject Matter
`Inteligibility to Court and Jury
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 2 of 7
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`CARBYNE BIOMETRICS, LLC,
`Plaintiff,
`Vvs.
`APPLE INC,,
`
`Defendant.
`
`AUSTIN DIVISION
`
`Civil Action No. 1:23-cv-00324
`
`JURY TRIAL
`
`DEFENDANT APPLE INC.”S MEMORANDUM OF LAW ON THE SUBMISSION OF
`
`SUBJECT MATTER INELIGIBILITY TO COURT AND JURY
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 3 of 7
`
`As explained in Apple’s summary judgment motion, ECF No. 183, the Court may
`determine as a matter of law that the Asserted Patents are not directed to patent-eligible subject
`matter, obviating the need for trial. In the event any Asserted Claim survives Apple’s motion,
`Apple proposes the following procedure for addressing § 101 at trial. First, the Court should
`determine the abstract idea and identify the abstract idea to the jury. Second, the jury should
`decide whether any inventive concept remaining in the claims is well-understood, routine, and
`conventional. Third, the Court should determine post-trial whether the claims are invalid under
`§ 101.
`
`First, the Court should identify for the jury the abstract idea to which each patent claim
`is directed. The jury has no role in identifying the abstract idea in the claims. That question is
`solely for the Court. For Step 2, under current Federal Circuit precedent, the jury may assess
`whether the claims containing anything beyond the abstract idea that was not “well-understood,
`routine, and conventional.” Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 217, 221-24
`(2014). The jury must be instructed as to what the abstract idea is so that it separates the abstract
`idea from the purported inventive concept. Without identifying the abstract idea, the jury may
`improperly assess whether the abstract idea itself contributes to an inventive concept at step two,
`which is improper. BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“a
`claimed invention’s use of the ineligible concept to which it is directed cannot supply the
`inventive concept” sought in step two). At Alice step two, courts remove the abstract idea from
`the claim and search the remainder—i.e. look beyond the abstract idea—for an “inventive
`concept sufficient to transform” the abstract idea into a patent-eligible application. Alice, 573
`U.S. at 221 (citation omitted). To focus the jury on the legally correct question, the jury should
`
`therefore be instructed on the specific abstract idea to which the claims are directed, and
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 4 of 7
`
`instructed to assess whether the elements beyond the abstract idea were “well-understood,
`routine [and] conventional” at the relevant time. Alice, 573 U.S. at 221. Any instruction that
`omits this information would be wrong as a matter of law under Supreme Court precedent and
`would erroneously invite the jury to find inventive the implementation of an abstract idea. Alice,
`573 U.S. at 221.
`
`Apple respectfully requests that the Court determine the abstract idea (if any) to which
`the claims are directed before the jury is seated. There is no dispute as to the Court’s role in
`Alice step one: the Court determines the abstract idea (if any) to which the claims are directed.
`Nor is there any dispute that the Court can and should make that determination based on the
`patents themselves. See ECF No. 183 at 3-7, 10-13; ECF No. 257 at 6-10, 12-14. The Court’s
`identification of the abstract idea would prevent the presentation of unnecessary and confusing
`evidence/argument at trial. For example, without the Court’s direction, the parties would need to
`present competing presentations of the abstract ideas and the step two fact presentation. In this
`case, those presentations would be especially likely to confuse the jury because Carbyne’s expert
`Mr. Cole identifies the same concepts at step two as at step one. [CITE]
`
`Second, for each claim, the Court should identify the specific allegedly inventive
`concept, separate from the abstract idea and identified by Carbyne, that the jury should
`examine. This approach both ensures that the jury will not erroneously examine the abstract idea
`itself and, by presenting only Carbyne’s asserted concepts, comports with the basic principle that
`only the parties’ actual disputes should be submitted to the jury.
`
`Third, because the “well-understood, routine and conventional” subtest is just one way
`for Apple to prove the absence of an inventive concept at Alice step two, post-trial the Court
`
`should make its own determination of whether Apple has shown the absence of an inventive
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 5 of 7
`
`concept at Alice step two, factoring in the jury’s factual determination of whether the concept
`proposed by Carbyne was “well-understood, routine and conventional.” The “well-understood
`routine, and conventional” subtest is just one way for Apple to prove there is no inventive
`concept in the claims sufficient to transform the abstract idea into something patent eligible.
`Alice, 573 U.S. at 221-224 (summarizing inventive concept jurisprudence). For example,
`separate from whether something is well-understood, routine or conventional, there is nothing
`inventive about limiting an abstract idea to a “particular technological environment.” Bilski v.
`Kappos, 561 U.S. 593, 610-11 (2010) (citation omitted). For another example, as explained
`above, if Carbyne’s contended inventive idea is a mere repackaging of a claim’s abstract idea,
`that contention would fail step 2 for reasons independent of the jury’s fact finding. Because of
`this, Apple submits initial proposed findings of fact and conclusions of law on this point
`contemporaneously with submission of this memorandum. Apple also respectfully requests the
`Court set a schedule for post-hearing filing of memoranda and final proposed findings of fact and
`
`conclusions of law on the subject matter eligibility of the patents.
`
`Respectfully Submitted,
`
`Dated: December 11, 2024 /s/ Andrew Radsch
`Brian C. Nash
`Regan J. Rundio
`MORRISON & FOERSTER LLP
`300 Colorado St., Suite 1800
`Austin, TX 78701
`Tel: (512) 617-0650
`Fax: (737) 910-0730
`Email: BNash@mofo.com
`Email: Rrundio@mofo.com
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 6 of 7
`
`James R. Batchelder (pro hac vice)
`Andrew Radsch
`
`James Mack
`
`ROPES & GRAY LLP
`
`1900 University Avenue
`
`East Palo Alto, CA 94303-2284
`
`Tel: (650) 617-4000
`
`Fax: (650) 617-4090
`
`Email: James.Batchelder@ropesgray.com
`Email: Andrew.Radsch@ropesgray.com
`Email: James.Mack@ropesgay.com
`
`Cassandra Roth (pro hac vice)
`
`Rachael Bacha (pro hac vice)
`
`ROPES & GRAY LLP
`
`1211 Avenue of the Americas
`
`New York, NY 10036-8704
`
`Tel: (212) 596-9000
`
`Fax: (212) 596-9090
`
`Email: Cassandra.Roth@ropesgray.com
`Email: Rachael.Bacha@ropesgray.com
`
`Allen S. Cross (pro hac vice)
`
`Nicole Pobre (pro hac vice)
`
`ROPES & GRAY LLP
`
`2099 Pennsylvania Avenue, N.W
`Washington, DC 20006
`
`Tel: (202) 508-4600
`
`Fax: (202) 508-4650
`
`Email: Allen.Cross@ropesgray.com
`Email: Nicole.Pobre@ropesgray.com
`
`S. Lara Ameri (pro hac vice)
`ROPES & GRAY LLP
`
`Prudential Tower
`
`800 Boylston Street
`
`Boston, Massachusetts 02199-3600
`Tel: (617) 951-7000
`
`Fax: (617) 951-7050
`
`Email: Lara. Ameri(@ropesgray.com
`
`Jeffrey T. Quilici
`
`TX State Bar No. 24083696
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-11 Filed 12/18/24 Page 7 of 7
`
`200 W. 6th Street, Suite 2250
`Austin, TX 78701
`
`Tel: (512) 582-6950
`
`Fax: (512) 582-6949
`
`Email: jquilici@orrick.com
`
`Elizabeth R. Moulton (pro hac vice)
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`
`405 Howard Street
`
`San Francisco, CA 94105
`
`Tel: (415) 773-5700
`
`Fax: (415) 773-5759
`
`Email: emoulton@orrick.com
`
`Attorneys for Defendant Apple Inc.
`
`
`
`
`
`
`
`
`
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