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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

USC IP PARTNERSHIP, L.P.,

 Plaintiff

-vsFACEBOOK, INC.,

 Defendant

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6:20-CV-00555-ADA

MEMORANDUM OPINION AND ORDER 

Before the Court is Defendant Facebook, Inc.’s (“Facebook”) Motion for Summary 

Judgement of Invalidity under 35 U.S.C. § 101. Dkt. 73. The Court heard the parties’ arguments 

during the final pretrial conference held on December 6, 2021, and orally granted Facebook’s 

Motion during the hearing and canceled the jury trial for this action originally scheduled to begin 

on December 13, 2021. Consistent with the Court’s earlier oral ruling, the Court GRANTS

Facebook’s Motion for the reasons set forth below. 

I. BACKGROUND

Plaintiff USC IP Partnership, L.P. (“USC”) initiated this action on June 22, 2020 against 

Facebook, alleging infringement of only one patent: U.S. Patent No. 8,645,300 (the “’300 patent”). 

The Court held a Markman hearing on March 5, 2021. Dkts. 44 and 48. USC alleges that Facebook 

infringes claims 1–17 of the ’300 patent (asserted claims) through the use of its Facebook News 

Feed. Dkt. 1 7–12; Dkt. 119 at 3. On October 5, 2021, Facebook filed the instant motion, which 

was subsequently fully briefed by the parties (Dkt. 83, Opposition; Dkt. 95, Reply). The Court 

heard arguments regarding the motion on December 6, 2021 during the final pretrial conference, 

during which the Court orally granted Facebook’s motion. Dkt. 143 (Hearing Transcript). 

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II. LEGAL STANDARD 

A. Motion for Summary Judgement 

“Summary judgment must be granted when, drawing all reasonable inferences in favor of 

the non-movant, there is no genuine issue as to any material fact.” Billups-Rothenberg, Inc. v. 

Associated Reg'l & Univ. Pathologists, Inc., 642 F.3d 1031, 1036 (Fed. Cir. 2011); Fed. R. Civ. P. 

56(a). “Under 35 U.S.C. § 282, a patent is presumed valid and one challenging its validity bears 

the burden of proving invalidity by clear and convincing evidence.” Innovative Scuba Concepts, 

Inc. v. Feder Indus., Inc., 26 F.3d 1112, 1115 (Fed. Cir. 1994). When “‘clear and convincing’

evidence requirement applies, the trial judge’s summary judgment inquiry as to whether a genuine 

issue exists will be whether the evidence presented is such that a jury applying that evidentiary 

standard could reasonably find for either the plaintiff or the defendant.” Anderson v. Liberty Lobby, 

Inc., 477 U.S. 242, 255, 106 S. Ct. 2505, 2514, 91 L. Ed. 2d 202 (1986); see also Eli Lilly & Co. 

v. Barr Lab’ys, Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) (“[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.”). In determining whether a genuine issue of material 

fact exists, the court views the evidence in the light most favorable to the nonmoving party and 

resolves all doubts in its favor. Eli Lilly & Co., 251 F.3d at 962. 

B. Patent Eligibility under 35 U.S.C. § 101

Section 101 of the Patent Act defines the subject matter eligible for patent protection: “any 

new and useful process, machine, manufacture, or composition of matter, or any new and useful 

improvement thereof.” 35 U.S.C. § 101. However, courts have long recognized that laws of nature, 

natural phenomena, and abstract ideas are not patentable under § 101 because they are “the basic 

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tools of scientific and technological work.” Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 

(2014) (citations omitted). 

In Alice, the Supreme Court articulated a two-step framework for distinguishing patents 

that claim laws of nature, natural phenomena, and abstract ideas from those that claim patenteligible applications of those concepts. Id. at 217. In Alice step one, the court must “determine 

whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. In doing so, 

the court must be careful not to over generalize the invention because “all inventions at some level 

embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id. 

(quoting Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66, 71 (2012)). Instead, 

“the claims are considered in their entirety to ascertain whether their character as a whole is 

directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 

1299, 1312 (Fed. Cir. 2016) (citation omitted). If the claims are not directed to one of those patentineligible concepts, the inquiry ends. If the claims are directed to one of those patent-ineligible 

concepts, then the inquiry proceeds to step two of the Alice framework.

In Alice step two, the court considers whether the claims contain an “inventive concept” 

sufficient to “transform the nature of the claim into a patent-eligible application.” Alice, 573 U.S. 

at 217–18 (quotation omitted). In doing so, the court considers “the elements of each claim both 

individually and ‘as an ordered combination’” to determine whether they are “‘sufficient to ensure 

that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] 

itself.’” Id. (quoting Mayo, 566 U.S. at 72–73). Alice step two is satisfied when the claim 

limitations “involve more than performance of ‘well-understood, routine, [and] conventional 

activities previously known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. 

Cir. 2018) (quoting Alice, 573 U.S. at 225 and Content Extraction & Transmission LLC v. Wells 

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Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014)). However, to recite an 

inventive concept, a patent must do more than recite an abstract idea “while adding the words 

‘apply it.’” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72). “[S]imply 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, 566 U.S. at 

82. Likewise, “the mere recitation of a generic computer cannot transform a patent-ineligible 

abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. 

“While the ultimate determination of eligibility under § 101 is a question of law, like many 

legal questions, there can be subsidiary fact questions which must be resolved en route to the 

ultimate legal determination.” Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 

1128 (Fed. Cir. 2018). As such, “[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” that must be “proven by clear and convincing evidence.” Berkheimer, 881 F.3d 

at 1368. Additionally, specific improvements described in a patent specification, “to the extent 

they are captured in the claims, [may] create a factual dispute regarding whether the invention 

describes well-understood, routine, and conventional activities.” Id. at 1369. However, “[w]hen 

there is no genuine issue of material fact regarding whether the claim element or claimed 

combination is well-understood, routine, conventional to a skilled artisan in the relevant field, 

[patent eligibility] can be decided on summary judgment as a matter of law.” Id. at 1368.

III. DISCUSSION 

A. The Asserted ’300 Patent 

The ’300 patent, titled “System and Method for Intent Data Processing,” was filed in July 

2011 and issued on February 4, 2014. The ’300 patent recognizes that “[w]ebsites have become 

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valuable resources for companies to engage consumers and customers” and “[p]aramount to the 

success of a website is that visitors to the website can readily identify and navigate to the pages 

within the website that contain the information or perform the functions that correspond to the 

visitor’s intent.” The ’300 patent at 1:11–17 (Background of the Invention). Therefore, the ’300 

patent recognizes the need for “improved systems and methods for determining a visitor’s intent 

and for using the visitor’s intent to predict and suggest webpages for the visitor.” Id. at 1:18–20. 

Accordingly, the ’300 patent provides a solution where “[w]ebsite navigation may be enhanced by 

recording a visitor’s intent and recording page rankings that indicate how well the pages of a 

website match the visitor’s intent.” Id. at Abstract. 

The ’300 patent discloses “[a] system for collecting, analyzing and using intent data” as 

illustrated in Figure 1 (reproduced below), which “includes a web server 12 that provides web 

pages 13 to a user at a web browser 14,” and “an intent engine 20 that collects and analyzes intent 

data from visitors as they browse webpages within a namespace.” Id. at 2:42–46. An “intent tool 

22” provides information collected from a user interface to the “intent engine 20,” which 

“process[es] the intent and success information and learns to predict intent and intent-based 

destination pages.” Id. at 2:50–3:2. 

Figure 1

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The ’300 patent also discloses a method for “predicting the intent of a visitor to a webpage 

of a defined namespace” as illustrated in Figure 2 and a method for “predicting a navigation 

destination for the visitor” as illustrated in Figure 3 (both reproduced below). To predict the intent 

of a visitor, “[a]t step 101, the intent engine 20 receives input parameters, such as a URL or similar 

webpage identity from the web browser of a visitor,” “[t]he intent engine processes the input 

parameters (step 102), for example by referencing historical intent data, to infer one or more intents 

of the visitor,” and “[a]t step 103, the inferred intents are provided to the web browser for display 

to the visitor.” Id. at 3:37–45. 

 

To predict a navigation destination for the visitor, “[a]t step 201, the visitor is prompted to 

indicate an intent,” “[t]he indicated intent is received into the intent engine (step 202) and 

processed to determine one or more web page recommendations (step 203),” where “[t]he intent 

engine may use the indicated intent to reference to historical intent data provided by previous 

visitors to the webpages of the namespace,” and “[t]he web page recommendations may be 

provided to the visitor web browser (step 204) for display to the visitor, e.g., as hyperlinks to the 

recommended web pages.” Id. at 3:46–56. 

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The ’300 patent provides an example in Figure 4 (reproduced below) explaining how the 

intent tool works. In the example, the “current intent 31” is a “D820 RAM upgrade.” Id. at 6:20–

21. “Based on the current intent, the [intent tool] displays a recommendation 32[, which is DELL 

Latitude D820 RAM Upgrades in the example,] that provides a hyperlink to a webpage within the 

namespace that is most likely to provide the information that the visitor is seeking, i.e., that 

matches the current intent.” Id. at 6:24–33. The user can change the current intent by selecting a 

different intent from a dropdown menu 35 or by typing in a new intent, view and select other 

recommendations from a dropdown menu 36, and rate the recommendations via a rating tool 33. 

Id. at 6:19–38. 

Figure 4 

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The ’300 patent includes 17 claims in total, of which claims 1, 5, and 11 are independent. 

USC asserts all 17 claims against Facebook. Facebook states that claim 1 is representative (Dkt. 

73 at 5–7), which USC does not contest. Claim 1 of the ’300 patent provides: 

1. A method for predicting an intent of a visitor to a webpage, the 

method comprising:

receiving into an intent engine at least one input parameter from 

a web browser displaying the webpage;

processing the at least one input parameter in the intent engine 

to determine at least one inferred intent;

providing the at least one inferred intent to the web browser to 

cause the at least one inferred intent to be displayed on the webpage;

prompting the visitor to confirm the visitor’s intent;

receiving a confirmed intent into the intent engine;

processing the confirmed intent in the intent engine to determine 

at least one recommended webpage that matches the confirmed intent, 

the at least one recommended webpage selected from a plurality of 

webpages within a defined namespace;

causing the webpage in the web browser to display at least one 

link to the at least one recommended webpage;

prompting the visitor to rank the webpage for the inferred intent;

receiving a rank from the web browser; and

storing a datapoint comprising an identity of the webpage, the 

inferred intent and the received rank.

B. Alice Step One 

Facebook contends that claims of the ’300 patent are directed to the abstract idea of 

“collecting, analyzing and using intent data” at a high level, and directed to the abstract idea of 

“providing recommended information to a visitor based on his or her current intent” on a more 

granular level. Dkt. 73 at 11. Facebook analogizes the asserted claims to claims in the Electric 

Power case, where the Federal Circuit found that claims directed to the abstract idea of “gathering 

and analyzing information of a specified content, then displaying the results” are patent ineligible. 

Id. at 10–11 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).

Facebook alleges that the asserted claims “purport to address the age-old —and entirely human —

problem of enabling the user to more easily locate ‘information or perform the functions that 

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correspond to the visitor’s intent.’” Id. at 11. And “[t]he ability to locate information corresponding 

to the person’s intent is an age-old problem not limited to computers, and has been addressed in 

the paper-based world through libraries, filing systems, and other forms of categorization and 

organization.” Id. at 12. Facebook constructs an example explaining how the concept behind claim 

1 can be analogized to a librarian identifying books for a student in a school library. Id. at 8–9. 

In response, USC analogizes the asserted claims to those in DDR Holdings, where the 

Federal Circuit found that a “claimed solution that is necessarily rooted in computer technology in 

order to overcome a problem specifically arising in the realm of computer networks” is patent 

eligible. Dkt. 83 at 8 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. 

Cir. Dec. 5, 2014)). USC contends that the ’300 patent “discusses a problem rooted in the advent 

of the internet and the prior art,” because the “prior art lacked ‘methods for determining a visitor’s 

intent and for using the visitor’s intent to predict and suggest webpages’” as disclosed in the ’300 

patent. Id. As such, USC contends, the ’300 patent “described and claimed a unique, nonconventional solution to this internet-specific issue—a solution that reshapes how the internet is 

used, much like DDR Holdings.” Id. USC further argues that the asserted claims do more than just 

“gathering and analyzing information of a specified content, then displaying the results” as in 

Electric Power, because claim 1 describes a “method for predicting an intent” by receiving “input 

parameters,” analyze the input parameters to determine an inferred intent that best matches the 

predicted intentions of the visitor, prompt the visitor to confirm its intent, and then display a link 

within a webpage to another webpage that mostly closely matches the confirmed intent. Id. at 8–

9. 

The Court is not persuaded by USC’s arguments. First, USC’s analogy to DDR Holdings

fails because the claims in DDR Holdings are directed to a technological solution to a problem 

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unique to the Internet, i.e., instead of directing a user from a host website to a third-party website 

when the use clicks a hyperlink on the host website that points to the third-party website, the DDR

invention provides a solution to have the user stay on the host website and present the user with a 

specially-constructed “hybrid” webpage merging elements from both the host website and the

third-party website. Dkt. 95 at 2–3. Unlike the hyperlink problem addressed in DDR Holdings, 

which did not have a real-world, the problem the ’300 patent attempts to address – finding

information that matches the user’s intent – is a longstanding problem that existed long before the

advent of computers and is not unique to the Internet. The asserted claims do not solve an Internetspecific problem with an Internet-specific solution. Therefore, the ’300 patent’s claimed solution 

is not “necessarily rooted in computer technology in order to overcome a problem specifically 

arising in the realm of computer networks.” DDR Holdings, 773 F.3d. at 1257.

Second, the asserted claims of the ’300 patent are not “directed to an improvement to the 

functionality of the computer or network platform itself.” Customedia Techs., LLC v. Dish Network 

Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020). The asserted claims only recite high-level functional 

language without explaining how the claimed invention improve the functionality of the computer 

or the Internet. For example, the languages in claim 1 that USC points to recite functional result 

steps such as “processing the at least one input parameter ... to determine at least one inferred 

intent,” “processing the confirmed intent ... to determine at least one recommended webpage that 

matches the confirmed intent,” with no explanation of how “processing” steps are performed or 

how it causes the intent engine to determine an “inferred intent” or “at least one recommended 

webpage.” The specification similarly offers little explanation of how these claimed functions are 

carried out and how they improve the performance of the network platform. See, e.g., Figures 2 

and 3 above and corresponding descriptions. Therefore, the ’300 patent claims simply recite “mere 

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result[s]” without reciting specific steps that accomplish the results. Cf. Finjan, Inc. v. Blue Coat 

Sys., 879 F.3d 1299, 1305 (Fed. Cir. Jan. 10, 2018) (finding asserted claims not directed to abstract 

ideas because “the claims recite more than a mere result. Instead, they recite specific steps . . . that 

accomplish the desired result”). 

For the above reasons, the Court finds that claims of the ’300 patent, akin to those in 

Electric Power, are directed to the abstract idea of “collecting, analyzing and using intent data” 

under Alice step one. The Court therefore proceeds to Alice step two analysis. 

C. Alice Step Two 

In Alice step two analysis, courts examine whether the claim limitations “involve more 

than performance of ‘well-understood, routine, [and] conventional activities previously known to 

the industry.’” Berkheimer, 881 F.3d at 1367. When examining the issue of conventionality, courts 

must “consider the elements of each claim both individually and ‘as an ordered combination’ to 

determine whether the additional elements transform the nature of the claim into a patent eligible 

application.” SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019). 

Instead of focusing on explaining whether the asserted claims contain an inventive concept, 

USC focuses on “the incredibly high standard that [Facebook] must meet to prevail on summary 

judgment on invalidity” — that is, “the movant’s failure to wholly foreclose the existence of 

genuine disputes of material fact will preclude summary judgment.” Dkt. 83 at 1–2 and 11–12

(citing PPS Data, LLC v. Jack Henry & Assocs., 404 F. Supp. 3d 1021, 1037–39 (E.D. Tex. 2019)). 

USC contends that the specification of the ’300 patent itself creates a genuine issue of material 

fact whether there is an inventive concept because the patent discusses, in the background section,

that the solution to optimize delivery of information on websites required “improved systems and 

methods for determining a visitor’s intent and for using the visitor’s intent.” Dkt. 83 at 11. Further, 

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USC points out that its technical expert, Dr. Golbeck, opines that the ’300 patent claims a “unique 

and novel way of delivering webpages to consumers that was not previously demonstrated in the 

prior art.” Dkt. 11–12. This, according to USC, establishes a genuine issue of material fact 

regarding whether the ’300 patent claims “involve more than performance of well-understood, 

routine, and conventional activities previously known to the industry.” Id. at 12 (citing Berkheimer, 

881 F.3d at 1367). As for the inventive step, USC cursorily states that generic computer systems 

do not perform the steps described in the asserted claims, including “analyz[ing] web users’ 

activities in an attempt to infer the intent of a user visit,” “us[ing] that information to then 

determine the webpages to present to the user based on the inference drawn,” and “allow[ing] the 

user to confirm the inference to adjust the webpages being presented.” Id. 

The Court, however, does not find claims of the ’300 patent recite any elements, when 

considered individually or “as an ordered combination,” contain anything “significantly more” 

than the abstract idea itself. See Alice, 573 U.S. at 217–18. Here, “[n]othing in the claims, 

understood in light of the specification, requires anything other than off-the-shelf, conventional 

computer, network, and display technology for gathering, sending, and presenting the desired 

information.” See Elec. Power, 830 F.3d at 1355. The asserted claims recite generic and wellknown “web pages,” “web browsers” and “databases” that were well known in the prior art long 

before the filing of the ’300 patent in 2011. The “intent engine,” which the Court construed as “a

software component for collecting and analyzing intent data from visitors,” does not provide the

inventive concept, because it is a purely functional “black box” implemented using standard cloud

platforms from well-known vendors like Google, Microsoft and Amazon. In re TLI Commc’ns 

Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (claims failed step two where “[t]he specification 

fails to provide any technical details for the tangible components, but instead predominately 

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describes the system and methods in purely functional terms.”); Dropbox, Inc. v. Synchronoss 

Techs., Inc., 815 F. App’x 529, 532-33 (Fed. Cir. 2020) (Claimed advance over prior art was a 

“functional abstraction” where the specification treated an element of the claimed invention as a 

“black box”). Likewise, the “intent tool”, “ranking tool” or “widget” do not provide any inventive 

concept because it is a standard web browser functionality that “a person skilled in the art will 

recognize that multiple configurations are possible.” The ’300 patent at 6:19-7:13. In addition, the 

claims merely reflect a sequence performed in a logical order dictated by the abstract idea, and 

does not “transform the nature of the claim into a patent-eligible application” “as an ordered 

combination.” See Alice, 573 U.S. at 217–18; see also Two-Way Media Ltd. v. Comcast Cable 

Commc’ns, LLC, 874 F.3d 1329, 1338 (Fed. Cir. 2017) (“Merely reciting the use of a generic

computer or adding the words ‘apply it with a computer’ cannot convert a patent-ineligible abstract

idea into a patent-eligible invention.”). Accordingly, the Court finds that the asserted claims do 

not include an “inventive concept.” 

Further, the Court does not find “the existence of genuine disputes of material fact [that] 

will preclude summary judgment” in this case. See PPS Data, 404 F. Supp. 3d at 1037. The 

specification’s one-sentence statement of the patent’s purpose to provide “improved systems and 

methods for determining a visitor’s intent and for using the visitor’s intent” does not create a 

genuine issue of material fact, because it is a statement of the abstract idea itself. Similarly, Dr. 

Golbeck’s conclusory assertion that the claims present a “unique and novel way of delivering 

webpages to consumers that was not previously demonstrated in the prior art” does not create a 

genuine issue of material fact. First, Dr. Golbek’s assertion is not backed by any concrete facts

from the specification or the prior art. In addition, “a claim for a new abstract idea is still an abstract 

idea.” Intell. Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016); Simio, LLC 

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v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1364 (Fed. Cir. 2020). While “[p]atent eligibility 

is a question of law that may involve underlying questions of fact, . . . not every § 101 

determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” 

PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 1314 (Fed. Cir. 2021). The Court finds 

that this is one of the cases where there exists no “genuine disputes over the underlying facts 

material to the § 101 inquiry” and it is appropriate to grant the summary judgment of invalidity. 

IV. CONCLUSION

For the foregoing reasons, the Court finds that the asserted claims of the ’300 patent are 

invalid under 35 U.S.C. § 101. Accordingly, the Court GRANTS Facebook’s Motion for Summary 

Judgement of Invalidity (Dkt. 73). 

SIGNED this 19th day of December, 2021.

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

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