IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

(WACO DIVISON)

AERITAS, LLC,

Plaintiff,

v.

SUBWAY SANDWICH SHOPS INC.,

SUBWAY SUBS, INC., FRANCHISE

WORLD HEADQUARTERS, LLC

d/b/a SUBWAY RESTAURANTS

d/b/a SUBWAY, and DOCTOR’S

ASSOCIATES, INC.,

Defendants.

Case No. 6:20-cv-00102-ADA

PATENT CASE

JURY TRIAL DEMANDED

DEFENDANTS’ MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM

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TABLE OF CONTENTS

Page

I. STATEMENT OF THE FACTS ...................................................................................... 2

II. ARGUMENT.................................................................................................................... 4

A. Legal Standard ...................................................................................................... 4

1. This case should be disposed of at the pleading stage through Rule 12(b)(6).

4

2. The law of 35 U.S.C. § 101............................................................................ 5

B. The Asserted Patents are Invalid under 35 U.S.C. § 101...................................... 6

1. The independent claims of the asserted patents are patent-ineligible. ........... 6

2. The dependent claims are not patent eligible. .............................................. 15

C. There are no claim construction or factual disputes preventing the Court from 

ruling on this issue at the Rule 12 stage.............................................................. 17

III. CONCLUSION............................................................................................................... 18

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TABLE OF AUTHORITIES

Page(s)

Cases

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

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

Alice, Parker v. Flook,

437 U.S. 584 (1978).................................................................................................................12

Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,

841 F.3d 1288 (Fed. Cir. 2016)..................................................................................................9

Ancora Technologies, Inc. v. HTC America, Inc.,

908 F.3d 1343 (Fed. Cir. 2018)................................................................................................12

Ashcroft v. Iqbal,

556 U.S. 662 (2009)...................................................................................................................4

Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),

687 F.3d 1266 (Fed. Cir. 2012)................................................................................................14

Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007)...................................................................................................................4

Berkheimer v. HP Inc.,

881 F.3d 1360 (Fed. Cir. 2018)................................................................................................17

Bilski v. Kappos,

561 U.S. 593 (2010)...............................................................................................................5, 7

BSG Tech LLC v. Buyseasons, Inc.,

899 F.3d 1281 (Fed. Cir. 2018)........................................................................................2, 7, 16

buySAFE, Inc. v. Google, Inc.,

765 F.3d 1350 (Fed. Cir. 2014)..........................................................................................12, 14

Cellspin Soft, Inc. v. Fitbit, Inc.,

927 F.3d 1306 (Fed. Cir. 2019)..........................................................................................17, 18

Chamberlain Grp., Inc. v. Techtronic Indus. Co.,

935 F.3d 1341 (Fed. Cir. 2019)................................................................................................10

Clear with Computers, LLC v. Dick’s Sporting Goods, Inc.,

21 F. Supp. 3d 758 (E.D. Tex. 2014).......................................................................................16

Case 6:20-cv-00102-ADA Document 9 Filed 03/10/20 Page 3 of 24
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Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,

776 F.3d 1343 (Fed. Cir. 2014)............................................................................................7, 14

Core Wireless Licensing S.A.R.L. v. LG Elec., Inc.,

880 F.3d 1356 (Fed. Cir. 2018)................................................................................................11

Cuvillier v. Sullivan,

503 F.3d 397 (5th Cir. 2007) .....................................................................................................4

Data Engine Techs. LLC v. Google LLC,

906 F.3d 999 (Fed. Cir. 2018)..................................................................................................11

Diamond v. Chakrabarty,

447 U.S. 303 (1980)...................................................................................................................5

DietGoal Innovations LLC v. Bravo Media LLC,

33 F.Supp.3d 271 (S.D.N.Y.2014) ..........................................................................................10

Elec. Power Grp, LLC v. Alstom S.A.,

830 F.3d 1350 (Fed. Cir. 2016)................................................................................1, 11, 12, 15

Enfish, LLC v. Microsoft Corp.,

822 F.3d 1327 (Fed. Cir. 2016)..................................................................................................7

Epic IP LLC v. Backblaze, Inc.,

351 F. Supp. 3d 733 (D. Del. 2018)...........................................................................................2

Finjan, Inc. v. Blue Coat System, Inc.,

879 F.3d 1299 (Fed. Cir. 2018)..................................................................................................7

Genetic Techs. Ltd. v. Merial L.L.C.,

818 F.3d 1369 (Fed. Cir. 2016)..................................................................................................5

Gottschalk v. Benson,

409 U.S. 63 (1972).....................................................................................................................5

Intellectual Ventures I LLC v. Capital One Bank (USA),

792 F.3d 1363 (Fed. Cir. 2015)..................................................................................1, 9, 10, 13

Intellectual Ventures I LLC v. Symantec Corp.,

838 F.3d 1307 (Fed. Cir. 2016)................................................................................................13

Kroy IP Holdings, LLC v. Safeway, Inc.,

107 F. Supp. 3d 677 (E.D. Tex. 2015) (Bryson, J.), aff’d, 639 F. App'x 637 (Fed. Cir. 2016)9, 

10

Lovelace v. Software Spectrum,

78 F.3d 1015 (5th Cir. 1996) .....................................................................................................4

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Mayo Collaborative Servs. v. Prometheus Labs., Inc.,

132 S. Ct. 1289 (2012)...............................................................................................................6

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

837 F.3d 1299 (Fed. Cir. 2016)..................................................................................................8

Phoenix Licensing, L.L.C. v. Consumer Cellular, Inc.,

No. 2:16-cv-152-JRG-RSP, 2017 WL 1065938 (E.D. Tex. Mar. 8, 2017)...............................7

RecogniCorp, LLC v. Nintendo Co., Ltd.,

855 F.3d 1322 (Fed. Cir. 2017)............................................................................................8, 11

SAP Am., Inc. v. InvestPic, LLC,

898 F.3d 1161 (Fed. Cir. 2018)............................................................................................7, 11

Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,

874 F.3d 1329 (Fed. Cir. 2017)............................................................................................7, 11

Ultramercial, Inc. v. Hulu,

LLC, 772 F.3d 709 (Fed. Cir. 2014) (Mayer, J., concurring)....................................................5

Statutes

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

Other Authorities

Decisions, Inc...................................................................................................................................6

Federal Rules of Civil Procedure Rule 12(b)(6)......................................................................2, 4, 6

Rule 12...........................................................................................................................................17

U.S. Patent Nos. 8,055,285.................................................................................................... passim

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Providing information based on a consumer’s interests and location is an abstract concept 

ineligible for patent protection. The claims of the asserted patents1in this action against Subway 

are directed to this abstract concept and do not claim any inventive concept sufficient to confer 

patent eligibility on the claimed abstract idea. The Federal Circuit has addressed patents directed 

to similar concepts and found their claims to be directed to patent-ineligible subject matter. See, 

e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 

2015) (“This sort of information tailoring is a ‘fundamental. . . practice long prevalent in our 

system . . . .’”; “An advertisement taking into account the time of day and tailoring the 

information presented to the user based on that information is another ‘fundamental . . . practice 

long prevalent in our system . . . .’”); Elec. Power Grp, LLC v. Alstom S.A., 830 F.3d 1350, 1353 

(Fed. Cir. 2016) (finding ineligible claims directed to collecting information, analyzing it, and 

displaying certain results of the collection and analysis).

Using existing technologies to collect data and provide tailored information to users is not 

a technological improvement or an inventive way of applying conventional technology; it was not

even new as of July 13, 2000. Moreover, none of the claims recites any specific hardware or 

software; instead, the specification discloses only that the alleged invention uses generic computer 

components and software to perform conventional activities. Abstract ideas like this, when 

implemented using conventional computer components, are not eligible for patent protection 

under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2357 (2014). 

This is especially true if, as is the case here, the abstract idea is not directed to any improvement 

in technology and any purported “inventive concept” is limited to improving the abstract idea 

 

1 Aeritas asserts U.S. Patent Nos. 8,055,285; 9,390,435; 9,888,107; and 10,362,160. The asserted 

patents share a common specification. Unless stated otherwise, all specification citations in this 

motion are to the ’285 Patent.

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itself. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).

The applicants did not claim an unconventional system, nor did they claim a particular 

mechanism for improving computing systems. As Judge Bryson, sitting by designation in the 

District of Delaware, has noted, claims that “recite the concept, but not the way to implement it,” 

are ineligible for patenting. Epic IP LLC v. Backblaze, Inc., 351 F. Supp. 3d 733, 740 (D. Del. 

2018). The asserted patents simply claim the abstract concept of providing information based on 

a consumer’s interests and location, not a specific implementation of that concept. Their claims

are therefore invalid for failure to claim patent-eligible subject matter.

Resolving these issues does not require more discovery or claim construction. Aeritas’

factual allegations, when presumed true, do not avoid dismissal. Therefore, to avoid waste of 

judicial and party resources further litigating invalid patents, Subway requests the Court dismiss 

the Complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to 

state a claim upon which relief can be granted.

I. STATEMENT OF THE FACTS

The asserted patents’ purported invention is directed to notifying the user of purchasing 

opportunities on their mobile devices. See, e.g., ’285 Pat., 2:10-21. The patents describe the 

advantage of the purported invention as allowing “merchants, suppliers and vendors [to] more 

effectively market distressed, time sensitive, location sensitive or general inventories of goods or 

services.” Id., 2:30-31. The applicants pointed out that “unlike computers which usually have 

fairly large display screens, mobile phones and other relatively small wireless devices do not 

provide access to the Internet that is as convenient as that provided by traditional computers.” 

Id., at 1:22-27. To overcome these limitations, the applicants wanted to “leverage the voice 

functionality available on many wireless devices, and the data capability associated with those 

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same devices.” Id., at 1:57-59. 

The claims, however, do not actually require any of these capabilities, nor do they 

improve these capabilities. For example, Claim 1 of the ’285 Patent recites the steps to 

accomplish the goal of the purported invention: (1) “receiving and storing an input in a user 

profile in a database, the input comprising consumer interest data;” (2) “obtaining data 

identifying a current location of the mobile communication device;” (3) “based on the input 

stored in the user profile and the current location of the mobile communication device, initiating 

a search to locate information pertinent to the input;” (4) “receiving results derived from the 

search;” (5) “and in response to the input and the search, delivering, by a notification server, 

information to the mobile communications device.”

But this purportedly improved technique consists of nothing more than the use of 

conventional components and processes. The applicant made this clear through their own 

language in the specification. For example, the specification makes the following statements

about the use of conventional components and processes, among others:

 “User devices [] preferably include mobile phones or other user devices capable of both 

voice and data communications.” Id., 6:7-9.

 “[T]he user may provide non-verbal input, such as depressing a ‘yes/no’ button or a 

designated sequence of keys, instead of providing spoken input.” Id., 9:12-15.

 “[The database] preferably includes user profiles database [] and inventory database []. 

Additional and/or different databases may be employed consistent with the objects of the 

present invention.” Id., 7:34-38.

 “[V]arious locating mechanisms, including the use of global positioning satellite 

coordinates, user supplied coordinates, and location information available from cellular 

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and PCS telephone systems, can be used without departing from the spirit and scope of 

the present invention.” Id., 8:12-16. 

 “[N]otifications can be delivered to user devices [] through speech services [] or directly 

from notification server [] using various non-voice protocols . . . .” Id., 5:61-65.

That is, the invention requires only a generic server and a generic mobile phone to be used for 

their conventional purposes.

II. ARGUMENT

A. Legal Standard

1. This case should be disposed of at the pleading stage through Rule 

12(b)(6).

Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a party may move to 

dismiss a complaint that fails to state a claim upon which relief can be granted. To survive a Rule 

12(b)(6) motion to dismiss, a complaint “must provide the plaintiff’s grounds for entitlement to 

relief—including factual allegations that when assumed to be true raise a right to relief above the 

speculative level.” Cuvillier v. Sullivan, 503 F.3d 397, 401 (5th Cir. 2007) (internal citations and 

quotations omitted). In deciding a Rule 12(b)(6) motion, courts consider documents attached to 

or incorporated into the complaint as well as facts alleged in the complaint. Lovelace v. Software 

Spectrum, 78 F.3d 1015, 1017 (5th Cir. 1996). Although factual allegations are taken as true, 

legal conclusions are given no deference—those matters are left for the court to decide. See 

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing tenet that allegations are taken as true on a 

motion to dismiss “is inapplicable to legal conclusions”). “[W]hen the allegations in a complaint, 

however true, could not raise a claim of entitlement to relief [as a matter of law], this basic 

deficiency should . . . be exposed at the point of minimum expenditure of time and money by the 

parties and the court.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 558 (2007) (internal citations 

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and quotations omitted). 

Patentability under 35 U.S.C. § 101 is a threshold legal issue. Bilski v. Kappos, 561 U.S. 

593, 602 (2010). Accordingly, the § 101 inquiry is properly raised at the pleadings stage if it is 

apparent from the face of the patent that the asserted claims are not directed to eligible subject 

matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 718-19 (Fed. Cir. 2014) (Mayer, J., 

concurring). In those situations, claim construction is not required to conduct a § 101 analysis. 

Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1374 (Fed. Cir. 2016) (“[C]laim 

construction is not an inviolable prerequisite to a validity determination under § 101.”) (brackets 

in original, internal citations and quotations omitted).

2. The law of 35 U.S.C. § 101

Section 101 of the Patent Act sets forth four categories of patentable subject matter: “any 

new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. 

Also, the law recognizes three exceptions to patent eligibility: “laws of nature, physical 

phenomena, and abstract ideas.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (emphasis 

added). Abstract ideas are ineligible for patent protection because a monopoly over these ideas 

would preempt their use in all fields. See Bilski, 561 U.S. at 611-12. In other words, “abstract 

intellectual concepts are not patentable, as they are the basic tools of scientific and technological 

work.” Id. at 653 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 

Determining whether a patent claim is impermissibly directed to an abstract idea involves 

two steps. First, the court determines “whether the claims at issue are directed to a patentineligible concept.” Alice, 134 S. Ct. at 2355. Second, if the claim contains an abstract idea, the 

court evaluates whether there is “an ‘inventive concept’—i.e., an element or combination of 

elements that is sufficient to ensure that the patent in practice amounts to significantly more than 

a patent upon the ineligible concept itself.” Id. (internal quotations and citations omitted).

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Transformation into a patent-eligible application requires “more than simply stating the 

abstract idea while adding the words ‘apply it.’” Id. at 2357 (quoting Mayo Collaborative Servs. 

v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). Indeed, if a claim could be performed 

in the human mind, or by a human using pen and paper, it is not patent-eligible. CyberSource 

Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). Also, a claim is not 

meaningfully limited if it includes only token or insignificant pre- or post-solution activity—such 

as identifying a relevant audience, category of use, field of use, or technological environment. 

Mayo, 132 S. Ct. at 1297-98, 1300-01. Finally, “simply appending conventional steps, specified 

at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot 

make those laws, phenomena, and ideas patentable.” Mayo, 132 S. Ct. at 1300.

B. The Asserted Patents are Invalid under 35 U.S.C. § 101.

Aeritas’ claims should be dismissed. The claims of the asserted patents are invalid under 

35 U.S.C. § 101 because they fail both steps of the Alice test. Each of the claims is directed to the 

abstract idea of providing information based on a consumer’s interests and location. Abstract 

ideas are not eligible for patenting. None of the claims contains an “‘inventive concept’ . . . 

sufficient to ensure that the patent in practice amounts to significantly more than a patent upon 

the ineligible concept itself.” See Alice, 134 S. Ct. at 2355 (emphasis added). Because Aeritas

has failed to state a claim upon which relief may be granted, Subway respectfully requests that 

the Court grant its motion and dismiss Aeritas’ claims with prejudice. FED. R. CIV. P. 12(b)(6).

1. The independent claims of the asserted patents are patent-ineligible.

In determining patent eligibility under § 101, the Court must first determine whether the 

claims are directed to an abstract idea. Alice, 134 S. Ct. at 2355. Under any plausible reading, the 

claims of the patent are directed to an unpatentable, abstract idea because they claim nothing 

more than the “longstanding,” “routine,” and “conventional” concept of providing information 

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based on a consumer’s interests and location. See Alice, 134 S. Ct. at 2356–59; Bilski, 561 U.S. 

at 611.

a) Alice Step One: The independent claims are directed to the abstract idea

of providing information based on a consumer’s interests and location.

Claim 1 of the ’285 Patent is representative of the independent claims.2See, e.g., Phoenix 

Licensing, L.L.C. v. Consumer Cellular, Inc., No. 2:16-cv-152-JRG-RSP, 2017 WL 1065938, at 

*8–9 (E.D. Tex. Mar. 8, 2017) (invalidating 974 claims after analyzing only a few 

“representative claims” where the other claims were “substantially similar” and “linked to the 

same abstract idea.”). The abstract idea inquiry begins by analyzing the “focus” of the claim, i.e., 

its “character as a whole,” in order to determine whether the claim is directed to an abstract idea. 

SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). For example, the Federal 

Circuit has explained that courts should examine the patent’s “‘claimed advance’ to determine 

whether the claims are directed to an abstract idea.” Finjan, Inc. v. Blue Coat System, Inc., 879 

F.3d 1299, 1303 (Fed. Cir. 2018). “In cases involving software innovations, this inquiry often 

turns on whether the claims focus 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.’” Id. (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. 

Cir. 2016)); see BSG Tech, 899 F.3d at 1285-86. 

Accordingly, at step one, the Federal Circuit has directed courts to “look to whether the 

claims focus on a specific means or method or are instead directed to a result or effect that itself 

is the abstract idea and merely invokes generic processes and machinery.” Two-Way Media Ltd. 

 

2 Where claims are “substantially similar and linked to the same abstract idea,” courts may look to 

representative claims in a § 101 analysis. Content Extraction and Transmission LLC v. Wells 

Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). 

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The Federal Circuit has held that instead of a specific definition of an abstract idea, “the 

decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel 

descriptive nature can be seen—what prior cases were about, and which way they were decided.” 

Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). Comparing Claim 1 

of the ’285 Patent to other claims held ineligible by the Federal Circuit indicates their 

ineligibility. Receiving and storing consumer information, finding the location of the consumer’s 

mobile device, searching for related information, and providing that information to the consumer 

are not meaningfully distinct from similar claims that have been found to be directed to abstract 

ideas. Cf. Capital One Bank (USA), 792 F.3d at 1369-70 (Fed. Cir. 2015) (“This sort of 

information tailoring is a ‘fundamental. . . practice long prevalent in our system . . . .’”; “An 

advertisement taking into account the time of day and tailoring the information presented to the 

user based on that information is another ‘fundamental . . . practice long prevalent in our system . 

. . .’”).

Additionally, the claims in Electric Power Group 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 at 1351–52. The Federal Circuit concluded that the focus of the claims 

at issue was the abstract idea of “collecting information, analyzing it, and displaying certain 

results of the collection and analysis.” Id. at 1353. Claim 1 of the ’285 Patent involves the same 

general steps of collecting and displaying information but without even including the additional 

step of performing an analysis on the collected information. Similarly, in Kroy IP Holdings, the 

claims recited a method and system for “incentive program participation and automated award 

fulfillment” that were “in communication with an inventory management system” and meant to 

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“provide a sponsor-selected geographic location for fulfillment.” Kroy IP Holdings, LLC v. 

Safeway, Inc., 107 F. Supp. 3d 677, 678 (E.D. Tex. 2015) (Bryson, J.) , aff’d, 639 F. App'x 637 

(Fed. Cir. 2016). Finding the claims to be directed to an abstract idea, the court concluded, “It is 

clear that each of the functions that the [] patent assigns to computers could be performed by a 

human being without the aid of a computer of any kind.” Id. at 692. Claim 1 of the ’285 Patent 

similarly collects and stores data about users (i.e., user interests and location) and performs 

information searches related to this data.

Furthermore, storing data in a database and providing information based on searching the 

database were well understood, routine, and conventional functions at the time of the alleged 

invention. See, e.g., Capital One Bank (USA), 792 F.3d at 1368 (explaining that sending a 

notification through a communication medium is a generic computer task); Chamberlain 

Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1347 (Fed. Cir. 2019) (“[T]he broad concept 

of communicating information wirelessly, without more, is an abstract idea.”); Capital One Bank

(USA), 792 F.3d at 1367(finding claims directed to “communicat[ing] a notification to [a] user 

via a device” when a pre-set spending limit was reached to be ineligibly directed to an abstract 

idea); Affinity Labs, 838 F.3d at 1258 (finding patent claims directed to “the function of 

wirelessly communicating regional broadcast content to an out-of-region recipient” to be 

ineligible); DietGoal Innovations LLC v. Bravo Media LLC, 33 F.Supp.3d 271, 287 

(S.D.N.Y.2014) (describing “retrieving information from a stored database” as “one of the most 

basic functions of the generic computer”). 

The functional nature of Claim 1’s limitations further supports its abstractness. In 

determining whether a particular claim is directed to an abstract idea, courts have focused on 

whether the claim is purely functional in nature rather than containing the specificity necessary 

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to recite how the claimed function is achieved. For example, in SAP America, the court asked 

whether the claim had “the specificity required to transform [it] from one claiming only a result 

to one claiming a way of achieving it.” 898 F.3d at 1167. To answer that question, the Federal 

Circuit has directed courts to “look to whether the claims focus on a specific means or method, 

or are instead directed to a result or effect that itself is the abstract idea and merely invokes 

generic processes and machinery.” Two-Way Media, 874 F.3d at 1337. Therefore, the question in 

such cases is “whether the claims are directed to ‘a specific means or method’ for improving 

technology or whether they are simply directed to an abstract end-result.” RecogniCorp,, 855 

F.3d at 1326.

Claim 1 is directed to an abstract end-result. It lacks any of the specificity that the Federal 

Circuit has held is sufficient to confer patent eligibility. Cf. Data Engine Techs. LLC v. Google 

LLC, 906 F.3d 999 (Fed. Cir. 2018) (holding eligible claims with the required specificity, but 

ineligible those without it); Core Wireless Licensing S.A.R.L. v. LG Elec., Inc., 880 F.3d 1356, 

1361–63 (Fed. Cir. 2018) (holding claims eligible where they were “directed to a specific

improvement in the capabilities of computing devices”) (emphasis added); see also 

RecogniCorp, 855 F.3d at 1326 (claims were ineligible because they were not directed to “a 

specific means or method for improving technology”) (emphasis added). Claim 1 does not 

require a new or unconventional machine or process for providing information based on a 

consumer’s interest and location —it requires only generic a mobile phone, a generic server, and 

a generic database. “Inquiry therefore must turn to any requirements for how the desired result is 

achieved.” Elec. Power Grp., 830 F.3d at 1355. But Claim 1 does not describe how the desired 

result— providing information based on a consumer’s interests and location—is achieved. The 

mechanism to implement the idea is impermissibly unbounded in scope.

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Claim 1 thus differs from the claims that the Federal Circuit has held to be eligible 

because they claimed specific means for improving specific computer technology or solving 

specific computer problems. For example, the Federal Circuit addressed the eligibility of claims 

directed to improving computer security in Ancora Technologies, Inc. v. HTC America, Inc., 908 

F.3d 1343 (Fed. Cir. 2018). In that case, the Federal Circuit held the claims eligible and stated, 

“Improving security—here, against a computer’s unauthorized use of a program—can be a nonabstract computer-functionality improvement . . . done by a specific technique that departs from 

earlier approaches to solve a specific computer problem.” Id. at 1348 (emphasis added). The 

court was persuaded because “[t]he claimed method here specifically identifies how that 

functionality improvement is effectuated in an assertedly unexpected way.” Id. The same is not 

true of Claim 1 of the ’285 Patent. It does not require a specific and unconventional technique, 

and it does not identify any specific improvement to computer functionality, much less an 

unexpected way of effectuating such an improvement.

That Claim 1 is limited to a mobile device does not alter this analysis. “Most obviously, 

limiting the claims to [a] particular technological environment . . . is, without more, insufficient 

to transform them into patent-eligible applications of the abstract idea at their core.” Elec. Power 

Grp., 830 F.3d at 1354. As the Supreme Court explained in Alice, Parker v. Flook, 437 U.S. 584 

(1978), stands for the proposition that the prohibition on patenting abstract ideas cannot be 

circumvented by attempting to limit the use of the idea to a particular technological 

environment. Alice, 134 S. Ct. at 2358; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 

1355 (Fed. Cir. 2014) (claims’ “narrowing to cover only online transactions was an attempt to 

limit the use of the abstract guarantee idea to a particular technological environment, which has 

long been held insufficient to save a claim in this context”) (internal quotations and citations 

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omitted). Claim 1 is directed to an abstract idea even if its limitations require practicing that idea 

on a mobile device.

The other independent claims of asserted patents fare no better under this analysis: they 

are directed to the same abstract idea. Claim 14 of the ’285 Patent is a system analogue to the 

method of Claim 1, and Claim 1 of the ’435 Patent, Claim 1 of the ’160 Patent, and claims 1 and 

5 of the ’107 Patent are system and apparatus claims that require a processor, memory, and 

program code to practice the same idea—providing information based on a consumer’s interests

and location. The Supreme Court has made clear that reciting a handful of generic computer 

components configured to implement the same idea does not convert an ineligible abstract idea 

into eligible subject matter. Alice, 134 S. Ct. at 2359. The claimed advance of the independent 

claims is supposedly the use of the voice and data capabilities of mobile devices to practice the 

abstract idea of delivering tailored information to a user, but the claims neither require the use of 

these capabilities nor improve upon them—they simply use them to reach the abstract concept. 

This concept is an abstract idea, not an invention, and accordingly, the independent claims fail 

the first step of the Alice analysis.

b) Alice Step Two: The independent claims do not contain an inventive 

concept sufficient to confer patent eligibility.

The claims of the asserted patents fail Alice’s second step because they are implemented 

on generic computer technology and therefore do not contain an inventive concept sufficient to 

confer eligibility. There is simply nothing “inventive” about using generic, well-known 

components (i.e., a mobile device, server, and database) to perform their well-understood and

conventional functions of receiving, storing, searching, and sending data. Similar to the 

invalidated claims in Intellectual Ventures I, nothing in Claim 1 “contains an ‘inventive concept’ 

sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Intellectual 

Case 6:20-cv-00102-ADA Document 9 Filed 03/10/20 Page 18 of 24
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Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016).

Courts have repeatedly held that the presence of generic hardware and software like the 

kind recited in Claim 1 of the ’285 Patent does not make an otherwise abstract idea patenteligible. See, e.g., buySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a 

computer receives and sends the information over a network—with no further specification—is 

not even arguably inventive.”); Content Extraction and Transmission LLC v. Wells Fargo Bank, 

Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (“At most, [the] claims attempt to limit the 

abstract idea of recognizing and storing information from hard copy documents using a scanner 

and a computer to a particular technological environment. Such a limitation has been held 

insufficient to save a claim in this context.”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of 

Canada (U.S.), 687 F.3d 1266, 1276–77 (Fed. Cir. 2012).

Each of the limitations recited in Claim 1 of the ’285 Patent is described only at a high level 

of generality as “receiving . . . consumer interest data,” “obtaining data identifying a current 

location,” “initiating a search,” “receiving results,” and “delivering . . . information.” To 

accomplish these high-level functions, the patent recites the need for only off-the-shelf, 

conventional computer technologies. For example, user device can be “mobile phones or other 

user devices capable of both voice and data communications.” ’285 Pat., 6:7-9. “[T]he user may 

provide non-verbal input, such as depressing a ‘yes/no’ button or a designated sequence of keys, 

instead of providing spoken input.” Id., 9:12-15. The database can be “user profiles database []

and inventory database [] . . . and/or different databases may be employed consistent with the 

objects of the present invention.” Id., 7:34-38. “[V]arious locating mechanisms, including the use 

of global positioning satellite coordinates, user supplied coordinates, and location information 

available from cellular and PCS telephone systems, can be used” to obtain the location of the 

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C. There are no claim construction or factual disputes preventing the Court 

from ruling on this issue at the Rule 12 stage.

The issue of the patent eligibility of the asserted patents is ripe for the Court’s 

consideration. There are no claim construction issues affecting the Alice analysis, as Aeritas has 

not proposed any constructions of the asserted patent’s terms that would alter the ineligibility of 

the claims. Additionally, there are no factual disputes on this record. Neither the Complaint nor 

the asserted patents do not assert any unconventional mechanism of implementing the claimed 

idea of providing information based on a consumer’s interest and location. 

This case is thus unlike Berkheimer, where the Federal Circuit noted that the specification 

explicitly “describe[d] an inventive feature that store[d] parsed data in a purportedly

unconventional manner.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). The 

Federal Circuit then examined whether the improvements described in the specification were 

included in the claims. For those claims where the inventive feature in the specification was 

“captured in the claims,” the Federal Circuit found a “factual dispute regarding whether the 

invention describe[d] well-understood, routine, and conventional activities.” Id. But where the 

claims did not recite the purportedly inventive features described in the specification, the Federal 

Circuit concluded that they were directed to patent ineligible subject matter under § 101. Id.

Here, in contrast, neither the claims nor the specification describes any unconventional 

components or the use of generic components in some unconventional manner.

This case is also unlike Cellspin where Federal Circuit found that “plausible and specific 

factual allegations that aspects of the claims are inventive are sufficient” to defeat a motion to 

dismiss. Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1317 (Fed. Cir. 2019). While pleadings 

may properly be considered for a Rule 12 motion to dismiss (subject to the Twombly/Iqbal

pleading standards), the pleadings cannot be used to alter or rewrite the terms of a patent or to 

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confer eligibility on otherwise ineligible subject matter. Cf. Aatrix, 882 F.3d at 1125; see also 

Cellspin, 927 F.3d at 1317 (“While we do not read Aatrix to say that any allegation about 

inventiveness, wholly divorced from the claims or the specification, defeats a motion to dismiss, 

plausible and specific factual allegations that aspects of the claims are inventive are sufficient.”). 

Here, Aeritas has not alleged any facts to suggest the claims’ components were anything other 

than well-known, routine, and conventional. 

Accordingly, this issue is ripe for the Court’s consideration, and the asserted patents

should be found invalid for failing to claim patent-eligible subject matter.

III. CONCLUSION

For the foregoing reasons, Subway respectfully requests that the Court dismiss this case 

for failure to state a claim upon which relief can be granted. Because leave to amend would be 

futile, Subway respectfully requests dismissal with prejudice.

Case 6:20-cv-00102-ADA Document 9 Filed 03/10/20 Page 23 of 24
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Dated: March 10, 2020 Respectfully submitted,

By: /s/ Neil J. McNabnay

Neil J. McNabnay

Texas Bar No. 24002583

mcnabnay@fr.com

Ricardo J. Bonilla

Texas Bar No. 24082704

bonilla@fr.com

Rodeen Talebi

Texas Bar No. 24103958

talebi@fr.com

FISH & RICHARDSON P.C.

1717 Main Street, Suite 5000

Dallas, TX 75201

(214) 747-5070 – Telephone

(214) 747-2091 – Facsimile

COUNSEL FOR DEFENDANTS 

SUBWAY SANDWICH SHOPS LLC,

SUBWAY SUBS, LLC, FRANCHISE

WORLD HEADQUARTERS, LLC, AND DOCTOR’S 

ASSOCIATES, LLC

CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served on March 10, 2020, to all counsel of record who are deemed to have 

consented to electronic service via the Court’s CM/ECF system. 

/s/ Rodeen Talebi

Rodeen Talebi

Case 6:20-cv-00102-ADA Document 9 Filed 03/10/20 Page 24 of 24