IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a BRAZOS 

LICENSING AND DEVELOPMENT,

Plaintiff,

v.

DELL TECHNOLOGIES INC., DELL INC., 

AND EMC CORPORATION,

Defendants.

Case No. 6:20-cv-00475-ADA

JURY TRIAL DEMANDED

DEFENDANTS’ RULE 12(c) MOTION FOR JUDGMENT ON THE BASIS OF 

INELIGIBILITY UNDER 35 U.S.C. 101 OF U.S. PATENT NO. 7,453,888

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 1 of 23
TABLE OF CONTENTS

Page

i

I. INTRODUCTION ............................................................................................................1

II. BACKGROUND ..............................................................................................................1

A. Admitted Prior Art: Core Networks and Spanning Tree Protocols ....................... 1

B. Admitted Prior Art: The Riverstone Solution: Stackable VLANs......................... 2

C. The Asserted Patent ................................................................................................ 3

D. Procedural Background........................................................................................... 6

E. Claim Construction ................................................................................................. 6

III. LEGAL STANDARD.......................................................................................................7

IV. ARGUMENT....................................................................................................................9

V. CONCLUSION...............................................................................................................16

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 2 of 23
TABLE OF AUTHORITIES

Page(s)

ii

Cases

Aatrix Software, Inc. v. Green Shades Software, Inc.,

890 F.3d 1354 (Fed. Cir. 2018)................................................................................................16

Affinity Labs of Texas, LLC v. DIRECTV, LLC,

838 F.3d 1253 (Fed. Cir. 2016)................................................................................9, 11, 13, 15

Alice Corp. v. CLS Bank Int’l,

573 U.S. 208 (2014).................................................................................................9, 12, 13, 14

Berkheimer v. HP Inc.,

890 F.3d 1369 (Fed. Cir. 2018)..........................................................................................13, 14

In re Bilski,

545 F.3d 943 (2008), aff’d sub nom. Bilski v. Kappos, 561 U.S. 593 (2010)............................8

buySAFE, Inc. v. Google, Inc.,

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

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

927 F.3d 1306 (Fed. Cir. 2019)................................................................................................15

ChargePoint, Inc. v. SemaConnect, Inc.,

920 F.3d 759 (Fed. Cir. 2019)..............................................................................................8, 12

Cisco Sys., Inc. v. Uniloc 2017 LLC,

813 F. App’x 495 (Fed. Cir. 2020) ............................................................................................8

Cleveland Clinic Found. v. True Health Diagnostics LLC,

859 F.3d 1352 (Fed. Cir. 2017)..................................................................................................8

Credit Acceptance Corp. v. Westlake Servs.,

859 F.3d 1044 (Fed. Cir. 2017)..........................................................................................10, 12

Doe v. MySpace, Inc.,

528 F.3d 413 (5th Cir. 2008) .....................................................................................................7

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

830 F.3d 1350 (Fed. Cir. 2016)................................................................................................12

Health Discovery Corp. v. Intel Corp.,

No. 6:20-cv-666, 2021 WL 6116891 (W.D. Tex. Dec. 27, 2021).........................................5, 8

Intellectual Ventures I LLC v. Capital One Fin. Corp.,

850 F.3d 1332 (Fed. Cir. 2017)................................................................................................15

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 3 of 23
TABLE OF AUTHORITIES 

(continued)

Page(s)

iii

Intellectual Ventures I LLC v. Symantec Corp.,

838 F.3d 1307 (Fed. Cir. 2016)................................................................................................10

Kumar v. Ovonic Battery Co.,

351 F.3d 1364 (Fed. Cir. 2003)..................................................................................................8

Mortgage Grader Inc. v. First Choice Loan Servs. Inc.,

811 F.3d 1314 (Fed. Cir. 2016)................................................................................................10

OIP Techs., Inc. v. Amazon.com, Inc.,

788 F.3d 1359 (Fed. Cir. 2015)................................................................................................10

PersonalWeb Techs. LLC v. Google LLC,

8 F.4th 1310 (Fed. Cir. 2021) ..................................................................................................10

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

898 F.3d 1161 (Fed. Cir. 2018)..................................................................................................8

Secured Mail Sols. LLC v. Universal Wilde, Inc.,

873 F.3d 905 (Fed. Cir. 2017)..................................................................................8, 10, 11, 14

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

874 F.3d 1329 (Fed. Cir. 2017)..........................................................................................12, 13

Ultramercial, Inc. v. Hulu, LLC,

772 F.3d 709 (Fed. Cir. 2014)..................................................................................................12

USC IP Partnership, L.P. v. Facebook, Inc., 6:20-cv-555 (Dec. 20, 2021)..................................16

V-Formation, Inc. v. Benetton Grp. SpA,

401 F.3d 1307 (Fed. Cir. 2005)..................................................................................................8

Versata Dev. Grp., Inc. v. SAP Am., Inc.,

793 F.3d 1306 (Fed. Cir. 2015), abrogated on other grounds by Thryv, Inc. v. 

Click-to-Call Techs, LP, 140 S. Ct. 1367 (2020).....................................................................14

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 4 of 23
TABLE OF ABBREVIATIONS

iv

Abbreviation Term

’888 patent U.S. Patent No. 7,453,888

Asserted Claims Claims 1, 2, 11, 12, 13, 15, 19, 20 of the ’888 Patent

Defendants Dell Technologies Inc., Dell Inc., and EMC Corporation

IEEE Institute of Electrical and Electronics Engineers

VLAN Virtual Local Area Network

WSOU or Plaintiff WSOU Investments, LLC d/b/a Brazos Licensing and 

Development

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 5 of 23
1

WSOU filed its Amended Complaint alleging that Defendants infringe the ’888 patent. 

D.I. 34. Pursuant to Rule 12(c) of the Federal Rules of Civil Procedure, Defendants respectfully 

move this Court to enter judgment against WSOU on its Amended Complaint because the Asserted 

Claims are directed to ineligible subject matter.

I. INTRODUCTION

The Asserted Claims in this case are directed to an abstract idea: associating traffic with a 

resource. Specifically, the claims recite assigning traffic for different virtual networks (VLANs) 

to network links (trunk ports). But the association of traffic with resources is an abstract idea that 

humans have done throughout history in non-technological contexts, such as when specific flight 

numbers are assigned to gates in an airport terminal.

The claims contain nothing inventive beyond merely reciting making such an assignment 

in the context of a well-known, conventional technological environment. The Asserted Claims do 

not purport to claim a new type of network system or any novel components. They instead recite 

generic, well-known network components—VLANs, trunks, and ports—to associate VLAN traffic 

with the network links. WSOU has not alleged otherwise. Nor could it; the patent explicitly and 

repeatedly states that the environment that is recited in the claims is conventional and prior art. 

Indeed, during claim construction, WSOU fervently argued that each disputed limitation was 

subject to its “plain and ordinary meaning.” 

Consistent with Supreme Court precedent, patent protection does not extend to claims like 

this, which take an abstract idea and simply “apply it” on a well-known computer network.

Judgment on the pleadings should thus be granted. 

II. BACKGROUND

A. Admitted Prior Art: Core Networks and Spanning Tree Protocols

The ’888 patent generally relates to the routing of VLAN traffic within the core network 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 6 of 23
2

of an internet service provider. See ’888 patent, 6:10–12. The patent itself acknowledges that 

routing VLAN traffic through core networks was already well-known in the art. See Fig. 3, 

reproduced in Section C, infra. According to the Background in the patent, network traffic for a 

VLAN is routed through the core network over links called backbone VLAN “trunks,” which 

connect routers in the core network. See id., 3:46-56. Because there is redundancy in the core 

network in case of failures, core networks use “spanning-tree protocols” or “STPs” to avoid loops 

within the network. The STP could place some of the trunks into an “in-use” state and others into 

a “stand-by” state to avoid these loops. See id., 3:57-67. Administrators would provision, or set 

up, VLANs to use only the in-use trunks. See id., 4:41-49. According to the patent, the STP needs

to be recalculated whenever there is a failure in the network, resulting in different “in-use” and 

“stand-by” assignments to the trunks. The patent explains that, whenever an STP is recalculated, 

administrators would need to manually reassign VLANs to new “in-use” links, which can be very 

time consuming. See id., 4:41-49. All of this background is explicitly recited as prior art to the 

patent, and labeled as such in the figures. See id., 3:9-6:6, Figs. 1, 2.

B. Admitted Prior Art: The Riverstone Solution: Stackable VLANs

As further explained in the Background of the patent, VLAN traffic is assigned to in-use

VLAN trunks by assigning the VLAN ID with each VLAN to a specific VLAN trunk. A VLAN 

trunk is a physical link between two components in the network. See id., 3:53-56. The network 

traffic for a VLAN with a specific VLAN ID is then routed over the VLAN trunk associated with 

the corresponding VLAN ID. See id., 4:15-37. These VLAN IDs are defined by the IEEE 802.1Q 

VLAN standard. Id., 5:11-17. According to the patent, however, due to the popularity in VLANs,

the same VLAN ID may be used by different networks, resulting in the use of the same VLAN 

trunk for different private networks, which could cause inadvertent sharing between those private 

networks. See id., 5:40-48. 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 7 of 23
3

The Background describes one well-known prior art technique to prevent the inadvertent 

sharing of VLAN IDs; using “stackable VLANs,” which is an extension to the IEEE VLAN 

standard proposed by Riverstone Networks. Id., 5:49-62. As depicted in Figure 2 which the patent 

labels as “PRIOR ART,” the Riverstone solution called “stackable VLANs” extends the standard 

VLAN header (in yellow below) by adding additional bits (Extended VLAN Header (in pink 

below)) to further identify the VLAN. These added bits prevent sharing of the same VLAN ID as 

there are more unique VLAN IDs due to the presence of the added bits.

These “extended VLAN identifiers are known as backbone VLAN identifiers defining 

corresponding backbone VLANs.” Id., 8:22-24. And, the “trunk ports supporting the Riverstone 

solution are known as stackable trunk ports and the data transport trunk links associated therewith 

are known as backbone trunks.” Id., 8:24-27. Again, all of this is prior art, and not part of the 

alleged invention.

C. The Asserted Patent

The ’888 patent describes and claims simply assigning these well-known backbone VLAN 

identifiers to corresponding backbone VLANs in a network that uses the prior art Riverstone 

solution. The claimed backbone VLAN depicted in Figure 3 contains these conventional 

components described in the Background of the patent (annotations added):

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 8 of 23
4

The claimed provisioning methods involve the association of backbone VLAN ID with stackable 

trunk ports (302) corresponding to backbone VLAN trunks (308) on core routers (306). See id., 

8:61–9:3, 10:18–24. 

The only allegedly novel feature of the claims is the “wherein” clause at the end, which 

requires require that the association of backbone VLAN IDs with stackable trunk ports is done 

“irrespective of one of an in-use and a stand-by designation” of the backbone VLAN trunks and 

stackable trunk ports. Id., cl. 1; see also id. cl. 15. That is it. Every other feature of the claims is 

admitted to be prior art. According to the patent, the provisioning method assigns backbone 

VLAN IDs to “all backbone trunk links 308 in the service provider’s data transport network 100—

including stand-by designated backbone trunk links 308-dashed.” Id., 8:62-65. This effectively 

pre-assigns VLANs to specific backup links in case there is a failure. The supposed advantage of 

this is “the backbone trunk links 308 dashed [are] ready to carry VLAN traffic should the spanningCase 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 9 of 23
5

tree reconfigure” in the event of a failure. Id., 9:17-19. 

Claim 1 is representative of the asserted claims. As discussed above, the highlighted 

portions of the claims are admitted to be prior art, leaving only the “wherein” clause as the 

allegedly novel feature.

Limitation Disclosure in Background

A method of provisioning a backbone Virtual Local 

Area Network (VLAN) comprising:

’888 Patent, 4:41-49

a. obtaining at least one backbone VLAN Identifier 

(ID); 

’888 Patent, 4:15-37, 5:11-17

b. selecting a plurality of backbone VLAN trunks; and ’888 Patent, 3:46-56

c. associating each of the backbone VLAN ID with 

each one of the plurality of backbone VLAN trunks 

by: 

’888 Patent, 4:41-49

c1. determining a plurality of stackable trunk ports 

corresponding to the plurality of backbone VLAN 

trunks; and

’888 Patent, 5:49-62, Fig. 2

c2. associating the backbone VLAN ID with each one 

of the plurality of stackable trunk ports;

’888 Patent, 4:41-49, 5:49-62, Fig. 2

wherein the selection and association of the at least 

one backbone VLAN ID with each one of the 

corresponding plurality of backbone VLAN trunks is 

undertaken irrespective of one of an in-use and a 

stand-by designation of each one of the plurality of 

backbone VLAN trunks and each one of the plurality 

of stackable trunk ports.

’888 Patent, 3:46-56, 3:57-67

Claim 15, the only other asserted independent claim, recites the same basic steps. See 

Appendix A; Health Discovery Corp. v. Intel Corp., No. 6:20-cv-666, 2021 WL 6116891, at *4

(W.D. Tex. Dec. 27, 2021) (holding a claim to be representative because “it, like the other asserted 

claims, encapsulates [the abstract idea] and recites little, if anything, more than that”).

In other words, the claims require merely making an association between traffic (i.e. the 

well-known VLAN identifier) and a resource (i.e., a trunk port), wherein the assignment is made 

both for in-use and standby trunks. By way of analogy, this is like assigning an incoming flight to 

a gate of a terminal, as well as one or more backup gates, in the event the desired gate is 

unavailable. There is nothing more to the claims. For instance, there is no requirement of how the 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 10 of 23
6

associations are made or whether or how the associations are even used for any purpose. Instead,

the claims merely describe making an association between two things. 

D. Procedural Background

WSOU filed its Original Complaint on June 2, 2020 and its First Amended Complaint on 

October 19, 2020, each asserting infringement of at least claim 1 of the ’888 patent. D.I. 1; D.I. 

34 ¶ 18. In both complaints, WSOU made no allegations concerning the patent eligibility of the 

’888 patent claims or any alleged non-conventionality of the claim limitations. 

Defendants moved to dismiss WSOU’s First Amended Complaint on the basis that WSOU 

failed to state a claim for direct and indirect infringement. D.I. 37. At the December 21, 2020 

hearing on the motion to dismiss, the Court granted without prejudice Defendants’ motion to 

dismiss WSOU’s indirect infringement and willful infringement claims. D.I. 74 at 76:16-17. The 

motion with respect to WSOU’s direct infringement claims remains pending.

E. Claim Construction

The Court subsequently held a claim construction hearing and, on May 27, 2021, the Court 

issued its claim construction order. D.I. 108. During claim construction, the Court addressed three 

terms in the asserted claims.

“stackable trunk port” – The Court found that “stackable trunk port” referred to a “trunk 

port supporting the Riverstone solution (i.e., the additional extension 802.1Q packet header).” 

This additional extension in an 802.1Q packet header is detailed in Figure 2, which the patent

labels prior art.

“backbone VLAN trunk” – Defendants argued that “backbone VLAN trunk” should be 

construed to mean “data transport trunk links defined between stackable trunk ports on core 

routers.” D.I. 88 at 15-17. WSOU argued that this term is not limited to a link between stackable 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 11 of 23
7

trunk ports or core routers. D.I. 90 at 7-8. The Court rejected Defendants’ proposed construction, 

adopting the plain and ordinary meaning. D.I. 108 at 6. 

“wherein the selection and association of at least one backbone VLAN ID with each one 

of the corresponding plurality of backbone VLAN trunks is undertaken irrespective of one of 

an in-use and a stand-by designation of each one of the plurality of backbone VLAN trunks and 

each one of the plurality of stackable trunk ports” (claim 1) / “wherein the association of the 

plurality of backbone VLAN IDs with the backbone VLAN trunk is undertaken irrespective of 

one of an in-use and a stand-by designation of the backbone VLAN trunk and the at least one 

stackable trunk port” (claim 15) – Defendants argued that this limitation requires that the system 

ignores the designation of a VLAN trunk as in-use or stand-by when provisioning backbone VLAN 

IDs to backbone VLAN trunks, based on statements made during prosecution history. Defendants 

argued that, during prosecution, the applicant distinguished a system that explicitly designates one 

port as active and others as backup and the claims therefore cannot read on that type of system. 

WSOU argued that this limitation simply requires associating stackable trunk ports (whether inuse or stand-by) with a VLAN ID, and that the prosecution history does not further limit the claims. 

D.I. 85 at 12. The Court rejected Defendants’ proposed construction, adopting the plain and 

ordinary meaning. D.I. 108 at 7.

III. LEGAL STANDARD

Judgment on the Pleadings. As with dismissal under Rule 12(b)(6) of the Federal Rules 

of Civil Procedure, judgment on the pleadings should be granted under Rule 12(c) if a complaint 

fails to “plead ‘enough facts to state a claim to relief that is plausible on its face.’” Doe v. MySpace, 

Inc., 528 F.3d 413, 418 (5th Cir. 2008) (citation omitted). Judgment on the pleadings should be 

granted where “‘there are no factual allegations that, taken as true, prevent resolving the [patent] 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 12 of 23
8

eligibility question as a matter of law.’” ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 

765 (Fed. Cir. 2019) (citation omitted).

The Federal Circuit has recognized that patent eligibility “may be, and frequently has been, 

resolved on a Rule 12(b)(6) or (c) motion,” even “before claim construction or significant 

discovery has commenced” and “based on intrinsic evidence from the specification without need 

for ‘extraneous fact finding outside the record.’” See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 

1161, 1166 (Fed. Cir. 2018); Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 

1352, 1360 (Fed. Cir. 2017); Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 

(Fed. Cir. 2017). This Court has recognized that although “claim construction disputes may bar a 

patent-eligibility determination at the Rule 12(b)(6) stage,” there is no such “impediment” where 

claim construction has already occurred. Health Discovery Corp., 2021 WL 6116891, at *4.

In addition, the Federal Circuit has “established that ‘prior art cited in a patent or cited in 

the prosecution history of the patent constitutes intrinsic evidence.’” V-Formation, Inc. v. Benetton 

Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) (quoting Kumar v. Ovonic Battery Co., 351 F.3d 

1364, 1368 (Fed. Cir. 2003)). The court likewise has made clear that “conclusory statements 

regarding eligibility” need not be accepted as true and “d[o] not preclude dismissal.” See, e.g., 

Cisco Sys., Inc. v. Uniloc 2017 LLC, 813 F. App’x 495, 498–99 (Fed. Cir. 2020). Finally, the 

Federal Circuit has held that “a court need not ‘accept as true allegations that contradict matters 

properly subject to judicial notice or by exhibit,’ such as the claims and the patent specification.” 

Secured Mail Sols., 873 F.3d at 913 (citation omitted). 

Patent Eligibility. The legal question of patent eligibility involves a two-step “threshold 

inquiry.” In re Bilski, 545 F.3d 943, 950 (2008), aff’d sub nom. Bilski v. Kappos, 561 U.S. 593 

(2010). Step One asks whether the claims are directed to an ineligible “concept[],” such as an 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 13 of 23
9

“abstract idea.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). If so, Step Two asks 

whether the claims involve a specific “inventive concept” that “amounts to significantly more than 

a patent upon the [abstract idea] itself.” Id. at 218.

IV. ARGUMENT

The asserted claims are directed to the abstract idea of associating traffic with a resource. 

There is no inventive concept that would save them from ineligibility under Alice Step Two. 

Accordingly, the asserted claims are ineligible under Section 101 of the Patent Act, and the 

Complaint should be dismissed on the pleadings.

A. Alice Step One: The Asserted Claims are Directed to an Abstract Idea

The Asserted Claims are directed to the abstract idea of associating traffic with a resource, 

specifically VLAN traffic with physical backbone VLAN trunks. Associating traffic with 

resources is not a technological improvement; it is something humans have done throughout 

history, and continue to do to this day. As discussed above, flights with specific flight numbers 

are assigned to gates at an airport. Many other analogies abound.

To determine whether a claim is directed to an abstract idea, courts “look at the ‘focus of 

the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is 

directed to excluded subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 

1253, 1257 (Fed. Cir. 2016) (emphasis added). Here, the patent explains that all of the different 

terms and components—VLANs, backbone VLAN IDs, backbone VLAN trunks, stackable trunk 

ports, and in-use/stand-by designations—were well known in the prior art. Even the Riverstone 

solution for “stackable trunk ports” as construed by the Court was acknowledged to be part of the 

prior art by the patent in Figure 2, which is labeled “Prior Art.” The claims simply recite 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 14 of 23
10

associating VLAN traffic with different backbone VLAN trunks (resources) in a system using 

stackable trunk ports. This is precisely the abstract idea to which the claims are directed.

Nothing in the claims changes the focus. The claims simply recite, in functional language, 

that the association is made. There is nothing in the claims that limits how the associations are

made. As acknowledged by the patent, administrators already knew how to associate VLAN 

traffic with different backbone VLAN trunks. ’888 patent, 4:41-49. Automating a manual process 

is an abstract idea and does not change the focus of the claims. See Credit Acceptance Corp. v. 

Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that mere 

automation of manual processes using generic computers does not constitute a patentable 

improvement in computer technology.” (emphasis added)). As the Federal Circuit has consistently 

held, “relying on a computer to perform routine tasks more quickly or more accurately is 

insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 

1359, 1363 (Fed. Cir. 2015) (collecting cases).

The Federal Circuit has held other method claims with functional limitations that do not 

recite how to perform the function to be ineligible. For example, the Federal Circuit has held 

claims that associate different things, like the claims here, to be ineligible. See, e.g., PersonalWeb 

Techs. LLC v. Google LLC, 8 F.4th 1310 (Fed. Cir. 2021) (associating content-dependent names 

with authorization); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) 

(claims reciting associating files with characteristics); Mortgage Grader Inc. v. First Choice Loan 

Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016) (claims reciting associating borrowers with loan 

packages). As another example, in Secured Mail Solutions LLC v. Universal Wilde, Inc., the 

claims were directed to a method of encoding data into a mail object, but did not set forth how the 

encoding was to be performed. 873 F.3d 905, 910 (Fed. Cir. 2017). “No special rules or details 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 15 of 23
11

of the computers, databases, printers, or scanners are recited.” Id. The same is true here. The 

asserted claims are directed to a method of provisioning identifiers (backbone VLAN IDs) to 

different paths (backbone VLAN trunks), but the claims do not set forth how the provisioning is 

performed. See id. To the contrary, the claims simply recite doing the provisioning on “stackable 

trunk ports,” or networks using the Riverstone solution. But limiting the field of use to networks 

using the Riverstone solution, which the patent itself acknowledges as part of the prior art, does 

not change the direction of the claims. See Affinity Labs, 838 F.3d at 1259 (“[M]erely limiting the 

field of use of the abstract idea to a particular . . . environment does not render the claims any less 

abstract.”). As in Secured Mail, here, there are no special rules or details about the underlying 

network, consisting of all well-known, conventional components—e.g., VLANs, VLAN IDs, 

VLAN trunks, stackable trunk ports. 873 F.3d at 910.

The allegedly-novel “wherein” clause does not change the abstractness of the claim. 

Indeed, that clause merely requires (at WSOU’s urging) assigning VLAN IDs to both in-use and 

stand-by trunks. Assigning ID numbers to paths that are not used right away is no less abstract 

than assigning ID numbers to paths that are used immediately. As discussed above, this is like 

assigning a flight to a gate of an airport terminal, and also assigning it to a backup gate in case the 

desired gate is unavailable when the flight lands. There is nothing technological or non-abstract 

about this idea. 

The abstractness of this limitation was confirmed by WSOU in its arguments during claim 

construction. D.I. 85 at 12 (arguing that this limitation simply required associating all stackable 

trunk ports (whether in-use or stand-by) with a VLAN ID). For example, WSOU argued that 

Defendants’ proposed construction was wrong because it “appears to have an affirmative act 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 16 of 23
12

component of ‘designating,’ which does not appear in the claim language.” See id. WSOU 

reiterated that there was no disavowal in the prosecution history. D.I. 90 at 9; D.I. 101 at 41-42.

B. Alice Step Two: The Asserted Claims Do Not Include an Inventive Concept

At Step Two, the Court “must examine the limitations of the claims to determine whether 

the claims contain an ‘inventive concept’ to ‘transform’ the claimed abstract idea into patenteligible subject matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) 

(quoting Alice, 573 U.S. at 221). Because the Federal Circuit has “repeatedly held” that 

“invocations of computers and networks that are not even arguably inventive are ‘insufficient to 

pass the test of an inventive concept,’” Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1355

(Fed. Cir. 2016) (citation omitted), part of the inquiry at Step Two is to determine whether the 

claims “require[] anything other than conventional computer and network components operating 

according to their ordinary functions.” Two-Way Media Ltd. v. Comcast Cable Comm’ns, LLC, 

874 F.3d 1329, 1341 (Fed. Cir. 2017). But, as the Federal Circuit has made clear, even “adding 

novel or non-routine components is not necessarily enough to survive a § 101 challenge.” 

ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 773 (Fed. Cir. 2019) (citation omitted). 

“Instead, the inventive concept must be ‘sufficient to ensure that the patent in practice amounts to 

significantly more’ than a patent on the abstract idea.” Id. (citation omitted).

Here, there is no inventive concept in the claims that renders them “significantly more” 

than a patent on the abstract idea of associating traffic with resources. The limitations simply 

recite admittedly well-known components used for their customary purpose.

“method of provisioning a backbone Virtual Local Area Network (VLAN)” – According 

to the Background section of the patent, administrators were capable of provisioning backbone 

VLANs prior to the ’888 patent, and automating a manual task to make it more efficient does not 

add inventive concept. ’888 patent, 4:41-49; see Credit Acceptance, 859 F.3d at 1055.

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 17 of 23
13

“obtaining at least one backbone VLAN Identifier (ID)” – Obtaining an existing 

number—the backbone VLAN ID defined by the IEEE 802.1Q standard in combination with the 

Riverstone extension, both of which the patent explicitly states to be part of the prior art in the 

Background and Figure 2—does not constitute inventive concept. ’888 patent, 4:15-30, 5:49-62, 

Fig. 2.

“selecting a plurality of backbone VLAN trunks” – Selecting existing network links (or 

existing resources)—backbone VLAN trunks, which are described in the Background—likewise 

does not constitute inventive concept. ’888 patent, 3:46-56, 5:49-62.

“associating each of the backbone VLAN ID with each one of the plurality of backbone 

VLAN trunks by: determining a plurality of stackable trunk ports corresponding to the plurality 

of backbone VLAN trunks and associating the backbone VLAN ID with each one of the plurality 

of stackable trunk ports” – This limitation is the abstract idea itself: associating traffic with 

resources (i.e., the network trunks). Abstract ideas cannot add inventive concept. See Berkheimer 

v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (denial of rehearing en banc) (“It is clear from 

Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer and Aatrix

leave untouched the numerous cases from this court which have held claims ineligible because the 

only alleged ‘inventive concept’ is the abstract idea.”). Limiting the concept of associating traffic 

with resources specifically to stackable trunk ports is just a field of use limitation that does not add 

inventive concept. See Alice, 573 U.S. at 223; Two-Way Media Ltd., 874 F.3d at 1341 (holding 

that claims reciting generic networking components do not add inventive concept); Affinity Labs, 

838 F.3d at 1259 (“[M]erely limiting the field of use of the abstract idea to a particular . . . 

environment does not render the claims any less abstract.”).

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 18 of 23
14

“wherein the selection and association of the at least one backbone VLAN ID with each 

one of the corresponding plurality of backbone VLAN trunks is undertaken irrespective of one 

of an in-use and a stand-by designation of each one of the plurality of backbone VLAN trunks 

and each one of the plurality of stackable trunk ports” – During claim construction, WSOU 

argued that the plain and ordinary meaning of this limitation simply required associating stackable 

trunk ports (whether in-use or stand-by) with a VLAN ID. D.I. 85 at 12. The Court rejected 

Defendants’ construction in favor of the plain and ordinary meaning. Under WSOU’s

construction, this limitation just recites that the traffic is associated with resources whether or not 

they are in-use or stand-by. This is part of the abstract idea itself and does not add inventive 

concept. Berkheimer, 890 F.3d at 1374. There is nothing less abstract about assigning ID numbers 

to links to be used later instead of being used right away.

Just as each individual limitation fails to provide an inventive concept, the steps considered 

collectively—as an ordered combination—still convey nothing inventive. The claimed collection 

of steps (which, at most, involves receiving and associating known information with standard 

network resources) is undisputedly well-known and, as discussed above, has been consistently 

held to be abstract. See, e.g., Secured Mail, 873 F.3d at 910; buySAFE, Inc. v. Google, Inc., 765 

F.3d 1350, 1355 (Fed. Cir. 2014). The combination of steps therefore recites nothing more than 

the abstract idea itself and “add[s] nothing that is not already present when the steps are considered 

separately.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015), 

abrogated on other grounds by Thryv, Inc. v. Click-to-Call Techs, LP, 140 S. Ct. 1367 (2020).

Claim 15, the only other independent claim, recites the same basic steps and does not 

contain an inventive concept for the same reasons. See Appendix A; Alice, 573 U.S. at 227 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 19 of 23
15

(“Because petitioner's system and media claims add nothing of substance to the underlying abstract 

idea, we hold that they too are patent ineligible under § 101.”). 

The dependent claims likewise fail to recite inventive concept.

Claim 2 recites keeping track of previous backbone VLAN IDs. See Appendix A. Storing 

previous information is itself an abstract idea and does not add inventive concept. See Intellectual 

Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (“[The claims] 

merely restate their individual functions—i.e., organizing, mapping, identifying, defining, 

detecting, and modifying. That is to say, they merely describe the functions of the abstract idea 

itself, without particularity. This is simply not enough under step two.”). 

Claims 11 and 19 recite commanding the stackable trunk ports to enable support for 

backbone VLAN ID communications. See Appendix A. This functional limitation does not add 

inventive concept because it just confirms that the ports are configured to perform the recited task: 

supporting backbone VLAN ID communications. See Affinity Labs, 838 F.3d at 1265 (explaining 

the only limitations not directed to the abstract idea itself “describe purely conventional features 

of cellular telephones and the applications that enable them to perform particular functions. They 

therefore do not meaningfully limit the scope of the claims.”). 

Claims 12 and 20 recite checking the status of a backbone VLAN trunk or port. See

Appendix A. Checking the status of a method is itself an abstract idea and does not add inventive 

concept. See Capital One, 850 F.3d at 1341.

Claim 13 recites defining a switching rule by, for example, binding a VLAN access port to 

a stackable trunk port. See Appendix A. This does not add an inventive concept because creating 

an association between two well-known components is itself an abstract idea and cannot add 

inventive concept. See Capital One, 850 F.3d at 1341. Cf. Cellspin Soft, Inc. v. Fitbit, Inc., 927 

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 20 of 23
16

F.3d 1306, 1317-18 (Fed. Cir. 2019) (reinforcing that “what makes the claims inventive [must be] 

recited by the claims”).

C. There are No Possible Factual Disputes

A claim may be held ineligible on a motion to dismiss where, as here and in Mayo, the 

specification admits that the additional claim elements (beyond the abstract idea) are “wellunderstood, routine and conventional.” Aatrix Software, Inc. v. Green Shades Software, Inc., 890 

F.3d 1354, 1356 (Fed. Cir. 2018) (“Relying on the specification alone may be appropriate where, 

as in Mayo, the specification admits as much.”). Here, the claims are directed to the abstract idea 

of assigning VLAN ID numbers to network links. As detailed above, the patent and WSOU both 

admit that any claim limitations other than the abstract idea itself simply recite well-known, 

generic components used for their intended purpose. There are no factual disputes. See USC IP 

Partnership, L.P. v. Facebook, Inc., 6:20-cv-555 (Dec. 20, 2021), D.I. 145 at 13-14 (finding 

conclusory allegations not backed by any concrete facts from the specification or the prior art did 

not save the claims from patent eligibility).

V. CONCLUSION

For the foregoing reasons, Defendants respectfully ask the Court to hold that the Asserted 

Claims of the ’888 patent are not patent-eligible under 35 U.S.C. § 101, and therefore grant 

judgment on the pleadings in Defendants’ favor and dismiss the First Amended Complaint with 

prejudice.

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 21 of 23
17

Dated: March 23, 2022 By: /s/ Barry K. Shelton

Barry K. Shelton

Texas State Bar No. 24055029

bshelton@winston.com

WINSTON & STRAWN LLP

2121 North Pearl Street, Suite 900

Dallas, TX 75201

Telephone: 214.453.6407

Facsimile: 214.453.6400

Benjamin Hershkowitz

bhershkowitz@gibsondunn.com

Brian A. Rosenthal

brosenthal@gibsondunn.com 

Allen Kathir

akathir@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

200 Park Avenue

New York, NY 10166-0193 

Telephone: 212.351.4000

Facsimile: 212.351.4035 

Y. Ernest Hsin

ehsin@gibsondunn.com

Jaysen S. Chung

jschung@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

555 Mission Street, Suite 3000

San Francisco, CA 94105-0921

Telephone: 415.393.8200

Facsimile: 415.393.8306

Ryan K. Iwahashi

riwahashi@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

1881 Page Mill Road

Palo Alto, CA 94304-1211

Telephone: 650.849.5300

Facsimile: 650.849.5333

Attorneys for Defendants

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 22 of 23
18

CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on March 23, 2022, I caused the preceding document to be 

served on all counsel through the Court’s ECF system.

/s/ Barry K. Shelton

Barry K. Shelton

Case 6:20-cv-00475-ADA Document 175 Filed 03/23/22 Page 23 of 23