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. 

ZTE CORPORATION,

 Defendant.

§

§

§

§

§

§

§

§

§

§

§

§

§

C.A. No. 6:20-cv-00497-ADA

ZTE CORPORATION’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY 

FOR LACK OF SUBJECT MATTER ELIGIBILITY UNDER 35 U.S.C. § 101

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TABLE OF CONTENTS

I. WSOU HAS ASSERTED A PLAINLY ABSTRACT PATENT AGAINST ZTE ........... 1

II. BACKGROUND: SUMMARY JUDGMENT ON § 101 IS APPROPRIATE 

BECAUSE THE ’505 PATENT IS DIRECTED TO GATHERING, 

REFORMATTING, AND SENDING INFORMATION................................................... 2

III. LEGAL STANDARD: THE ALICE TWO-STEP FRAMEWORK FOR 

ANALYZING ABSTRACT IDEAS .................................................................................. 3

A. Alice Step One: Gathering, Reformatting, and Sending Information is 

Unpatentable ........................................................................................................... 3

B. Alice Step Two: Implementing an Idea with Generic Computer 

Components Lacks “Inventive Concept”................................................................ 4

IV. EVERY CLAIM OF THE ’505 PATENT IS INVALID UNDER 35 U.S.C. § 101.......... 5

A. Alice Step 1: The Independent Claims Of The ’505 Patent Are Directed To 

The Abstract Idea Of Gathering, Reformatting, And Sending Information ........... 5

B. Alice Step 2: The Independent Claims of the ‘505 Patent do not Contain an 

Inventive Concept that Transforms the Abstract Idea into Patent-eligible 

Subject Matter....................................................................................................... 13

1. The independent claims’ recitation of generic network and 

computing components does not include an “inventive concept.” ........... 13

2. All dependent claims also lack an “inventive concept.”........................... 16

V. CONCLUSION................................................................................................................. 19

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TABLE OF AUTHORITIES

Page(s)

Cases

Adaptive Streaming Inc. v. Netflix, Inc.,

836 Fed.Appx. 900 (Fed. Cir. 2020)..................................................................................6, 7, 9

Alice Corp. Pty. Ltd. v. CLS Bank International,

573 U.S. 208 (2014)......................................................................................................... passim

Berkheimer v. HP Inc.,

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

buySAFE, Inc. v. Google, Inc.,

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

DDR Holdings, LLC v. Hotels.com, L.P.,

773 F.3d 1245 (Fed. Cir. 2014)................................................................................................12

Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,

758 F.3d 1344 (Fed. Cir. 2014)..................................................................................................6

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

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

Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc.,

No. 05-CV-359-LY, 2008 WL 7328271 (W.D. Tex. Sept. 30, 2008) (Yeakel, 

J.), aff’d sub nom. Encyclopaedia Britannica, Inc. v. Alpine Elec., Inc., 355 F. 

App’x 389 (Fed. Cir. 2009)........................................................................................................3

Enfish LLC v. Microsoft Corp.,

822 F.3d 1327 (Fed. Cir. 2016)..............................................................................................4, 9

Genetic Techs. v. Merial LLC,

818 F.3d 1369 (Fed. Cir. 2016)................................................................................................13

Gottschalk v. Benson,

409 U.S. 63 (1972).....................................................................................................................8

iLife Techs., Inc. v. Nintendo of Am., Inc.,

839 Fed. App'x 534 (Fed. Cir. 2021).........................................................................................6

Intell. Ventures I LLC v. Symantec Corp.,

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

Internet Patents Corp. v. Active Network, Inc.,

790 F.3d 1343 (Fed. Cir. 2015)..................................................................................................4

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 3 of 24
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Mayo Collaborative Servs. v. Prometheus Labs, Inc.,

566 U.S. 66 (2012)...........................................................................................................4, 5, 13

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

837 F.3d 1299 (Fed. Cir. 2016)..............................................................................................4, 9

Messaging Gateway Sols., LLC v. Amdocs, Inc.,

2015 WL 1744343 (D. Del. Apr. 15, 2015).............................................................................16

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

811 F.3d 1314 (Fed. Cir. 2016)..................................................................................................8

MyMail, Ltd. v. ooVoo, LLC,

2021 U.S. App. LEXIS 24764 (Fed. Cir. Aug. 19, 2021)........................................................15

MyMail, Ltd. v. ooVoo, LLC,

934 F.3d 1373 (Fed. Cir. 2019)..................................................................................................2

Orbcomm Inc. v. Calamp Corp.,

215 F. Supp. 3d 499 (E.D. Va. 2016) ......................................................................................15

PersonalWeb Techs. LLC v. Google LLC,

8 F.4th 1310 (Fed. Cir. 2021) ..............................................................................................9, 12

Reese v. Sprint Nextel Corp.,

774 Fed. Appx. 656 (Fed. Cir. 2019).................................................................................14, 15

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

898 F.3d 1161 (Fed. Cir. 2018)........................................................................................4, 9, 17

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

874 F.3d 1329 (Fed. Cir. 2017)............................................................................................6, 13

Ultramercial, Inc. v. Hulu, LLC,

772 F.3d 709 (Fed. Cir. 2014)....................................................................................................5

Federal Statutes

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

Rules

Fed. R. Civ. P. 56(c) ........................................................................................................................3

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I. WSOU HAS ASSERTED A PLAINLY ABSTRACT PATENT AGAINST ZTE

U.S. Patent No. 7,203,505 (the “505 patent”) is entitled “Message transfer from a source 

device via a mobile terminal device to a third device.” Consistent with the title that describes 

“message transfer” from one device to another, the ’505 patent claims the idea of reformatting 

information—one of the most rudimentary functions of a computer. Elec. Power Grp., LLC v. 

Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (describing “storage and retrieval of data” as 

“basic functions” of computers). But the framework set out in Alice Corp. Pty. Ltd. v. CLS Bank 

International makes clear that abstract ideas that can be implemented on conventional

computers—like reformatting information—are unpatentable under 35 U.S.C. § 101. 573 U.S. 

208, 225 (2014). Accordingly, the ’ 505 patent is invalid under § 101. 

First, the claims are directed to the abstract idea of reformatting information. Exemplary 

claim 1 of the ’505 patent generally describes “obtaining...data,” “transmitting the data,” 

“formatting the data,” and “transmitting” a message. ’505 patent, Claim 1. But the “obtaining,”

“formatting,” and “transmitting” steps simply describe the unpatentable mental processes of 

reformatting information that any human can perform. Second, the ’505 patent does not claim any 

“inventive concept” necessary to “transform the claimed abstract idea into a patent-eligible 

application” because the patent only claims generic network technology to implement the alleged 

invention. See Alice, 573 U.S. at 221 (internal citations omitted). In fact, the ’505 patent itself 

admits that the data formatting protocols of the claimed methods can be performed within 

conventional and routine technology, explicitly touting that “the SMS protocol, SyncML protocol, 

WBXML, and MIME protocol” used in the invention are “industrywide protocols” that “are 

readily available.” ’505 Patent, 4:46-51 (emphases added). The ‘505 patent further boasts that

“[s]ince modern-day mobile terminals already include SMS capability and since SMS centers are 

already in place and operating, no new technology or equipment is needed to send SyncML 

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messages via the SMS network.” Id., 3:49-52 (emphases added). Therefore, because the ’505

patent claims an unpatentable abstract idea and does not claim any “new and useful process, 

machine, manufacture, or composition of matter, or any new and useful improvement thereof,” 

ZTE respectfully moves for summary judgment of invalidity under § 101.

II. BACKGROUND: SUMMARY JUDGMENT ON § 101 IS APPROPRIATE 

BECAUSE THE ’505 PATENT IS DIRECTED TO GATHERING, 

REFORMATTING, AND SENDING INFORMATION

On June 3, 2020, WSOU Investments, LLC d/b/a Brazos Licensing and Development’s 

(“WSOU”) sued ZTE Corporation (“ZTE”) for alleged infringement of claims 1-48 of the ’505

patent. Dkt. No. 1. Claim construction briefing is complete and a Claim Construction Order issued 

on March 3, 2022. Dkt. No. 164. Discovery is scheduled to close on November 1, 2022, and trial 

will be set on October 11, 2023 (as proposed by the parties).

1 Accordingly, the Court has the “full 

understanding of the basic character of the claimed subject matter” necessary for determining 

patent eligibility. See MyMail, Ltd. v. ooVoo, LLC, 934 F.3d 1373, 1379 (Fed. Cir. 2019) (citations 

omitted).

While claim 1 is exemplary, the ’505 patent includes five independent claims–1, 14, 23,

36, and 41–which respectively describe methods and devices for “data synchronization” that is 

performed by “terminal device[s]” in a “network.” ’505 Patent, 4:55-8:24. Not a single

independent or dependent claim is patent eligible because they all claim reformatting information 

using conventional computing devices, such as a “terminal device” and a “network.” Indeed, the 

’505 patent itself indicates that the data formatting protocols of the claimed methods can be 

performed within conventional and routine technology, explicitly touting that “the SMS protocol, 

SyncML protocol, WBXML, and MIME protocol” used in the invention are “industrywide 

1 The Amended Scheduling Order sets out three dates, including October 11, 2023, for the three 

consolidated trials, but the date of this specific case has not yet been established. Dkt. No. 227.

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protocols” that “are readily available.” Id., 4:46-51 (emphases added). The ‘505 patent further 

boasts that “[s]ince modern-day mobile terminals already include SMS capability and since SMS 

centers are already in place and operating, no new technology or equipment is needed to send 

SyncML messages via the SMS network.” Id., 3:49-52 (emphases added).

III. LEGAL STANDARD: THE ALICE TWO-STEP FRAMEWORK FOR 

ANALYZING ABSTRACT IDEAS

Summary judgment should be granted if the record, taken as a whole, “together with the 

affidavits, if any, show that there is no genuine issue as to any material fact and that the moving 

party is entitled to a judgment as a matter of law.” Encyclopaedia Britannica, Inc. v. Alpine Elecs.

of Am., Inc., No. 05-CV-359-LY, 2008 WL 7328271, *3 (W.D. Tex. Sept. 30, 2008) (Yeakel, J.), 

aff’d sub nom. Encyclopaedia Britannica, Inc. v. Alpine Elec., Inc., 355 F. App’x 389 (Fed. Cir. 

2009) (citing Fed. R. Civ. P. 56(c)). “[W]hether a claim recites patent eligible subject matter is a 

question of law which may contain underlying facts.”

Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Accordingly, “[w]hen there is no 

genuine issue of material fact regarding whether the claim element or claimed combination is wellunderstood, routine, conventional to a skilled artisan in the relevant field, this issue can be decided 

on summary judgment as a matter of law.” Id.

Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process, 

machine, manufacture, or composition of matter, or any new and useful improvement thereof, may 

obtain a patent thereof.” Patents may not be obtained for “ laws of nature, natural phenomena, [or] 

abstract ideas.” Alice, 573 U.S. at 217. In Alice, the Supreme Court established a two-step test that 

district courts must apply in a patent eligibility analysis under § 101.

A. Alice Step One: Gathering, Reformatting, and Sending Information is 

Unpatentable

First, at step one, a court must “determine whether the claims at issue are directed to one 

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of those patent-ineligible concepts.” Alice, 573 U.S. at 217 (citing Mayo Collaborative Servs. v. 

Prometheus Labs, Inc., 566 U.S. 66, 77 (2012)). Courts “look to whether the claims . . . focus on 

a specific means or method that improves the relevant technology or are instead directed to a result 

or effect that itself is the abstract idea and merely invoke generic processes and machinery.” 

McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).

At step one, courts review the claims “in light of the specification, based on whether ‘their 

character as a whole is directed to excluded subject matter.’” Enfish LLC v. Microsoft Corp., 822 

F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 

1343, 1346 (Fed. Cir. 2015)). Because “[s]oftware can make non-abstract improvements to 

computer technology,” it is “relevant to ask whether [computer-related] claims are directed to an 

improvement to computer functionality versus being directed to an abstract idea.” Id.

However, “claims focused on ‘collecting information, analyzing it, and displaying certain 

results of the collection and analysis’ are directed to an abstract idea.” SAP Am., Inc. v. InvestPic, 

LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (citing Elec. Power Grp., 830 F.3d at 1353 (Fed. Cir. 

2016)). “Information as such is an intangible, hence abstract, and collecting information, including 

when limited to particular content (which does not change its character as information), is within 

the realm of abstract ideas. So, too, is analyzing information by mathematical algorithms, without 

more. And merely presenting the results of abstract processes of collecting and analyzing 

information, without more (such as identifying a particular tool for presentation), is abstract as an 

ancillary part of such collection and analysis.” Id. (citations and internal quotation marks omitted).

B. Alice Step Two: Implementing an Idea with Generic Computer Components 

Lacks “Inventive Concept”

If the court concludes under step one that the claim is directed to a patent-ineligible 

concept, at Alice step two, the court must then examine what else there is in the claim. Alice, 573 

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U.S. at 217 (citing Mayo, 566 U.S. at 76–77). Step two involves a “search for 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.

at 217–18 (citing Mayo, 566 U.S. at 72).

In considering what else there is in the claim, 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.” Id. (citing Mayo, 

566 U.S. at 78–79). This inquiry determines whether claims reciting an abstract idea “do 

significantly more than simply describe that abstract method” and instead “‘transform’ the claimed 

abstract idea into patent-eligible subject matter” with “additional features.” Ultramercial, Inc. v. 

Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). “Those ‘additional features’ must be more than 

‘well-understood, routine, conventional activity.’” Id. (citing Mayo, 566 U.S. at 79-80), see also

Alice, 573 U.S. at 224-5 (explaining that claim steps requiring “electronic recordkeeping” and “use 

of a computer to obtain data, adjust account balances, and issue automated instructions” do “no 

more than require a generic computer to perform generic computer functions”)). Claims that 

“merely require generic computer implementation, fail to transform that abstract idea into a patenteligible invention.” Alice, 573 U.S. 208, 209 (2014) (discussing method claims at issue).

IV. EVERY CLAIM OF THE ’505 PATENT IS INVALID UNDER 35 U.S.C. § 101

A. Alice Step 1: The Independent Claims Of The ’505 Patent Are Directed To The 

Abstract Idea Of Gathering, Reformatting, And Sending Information

Claim 1 of the ’505 patent generally claims four steps for “data synchronization” between 

two devices: (1) obtaining data; (2) transmitting the data; (3) formatting the data; and (4) 

transmitting the formatted data. These steps, as shown in the emphasized claim language below,

describe the abstract idea of gathering, reformatting, and sending information:

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A method for data synchronization between a first terminal device and a second, 

remotely located, terminal device via an intermediate terminal device, the 

method comprising:

obtaining, at the first terminal device, data to be synchronized with the second 

remotely located terminal device;

transmitting the data from the first terminal device to the intermediate terminal 

device through a short-range connection;

formatting the data to be synchronized into at least one SMS (Short Message 

Service) message in the intermediate terminal device; and

transmitting the at least one SMS message from the intermediate terminal device 

to the second remote located terminal device through cellular network 

connection.

Accordingly, claim 1 merely discloses “collecting information” by transmitting it between 

terminal devices, “formatting” it, and “transmitting” a “message” about that information—there is 

not even any analysis of information in the claim. See Elec. Power Grp., 830 F.3d at 1353

(describing the abstract idea of “collecting information, analyzing it, and displaying certain results 

of the collection and analysis”). However, obtaining, manipulating, and distributing information 

is fundamentally abstract. See Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 

1344, 1350 (Fed. Cir. 2014) (holding that claims directed to generating first and second data by 

taking existing information, manipulating the data using mathematical functions, and organizing 

this information into a new form were directed to an abstract idea because they described a process 

of organizing information through mathematical correlations). And courts have repeatedly held 

that gathering, reformatting, and sending information amounts to an abstract idea. See, e.g., iLife 

Techs., Inc. v. Nintendo of Am., Inc., 839 Fed. App'x 534, 536-7 (Fed. Cir. 2021) (“We have 

routinely held that claims directed to gathering and processing data are directed to an abstract 

idea.”); Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 

2017) (claims focused on sending and monitoring information are directed to an abstract idea); 

Adaptive Streaming Inc. v. Netflix, Inc., 836 Fed.Appx. 900, 903 (Fed. Cir. 2020) (nonprecedential) 

(holding that claims directed to format conversion from an incoming signal's format to a variety 

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of formats suited to different destination devices were directed to an abstract idea). 

In describing a method for “data synchronization,” claim 1 evokes the ineligible claims in 

Adaptive Streaming, which were directed towards to determining a “compression format more 

suitable for the at least one client device.” See 836 Fed.Appx. at 901-02. Like the similar claims 

in Adaptive Streaming, “the focus of the claimed advance is the abstract idea of format conversion, 

from an incoming signal’s format to a variety of formats suited to different destination devices,” 

and “not any specific advance in coding or other techniques for implementing that idea; no such 

specific technique is required.” See id. at 903. Thus, claim 1, like the abstract “format conversion” 

claims of Adaptive Streaming, is abstract. See id. The parallel contents of claim 1 of the ’505 patent 

here and unpatentable claim 39 from Adaptive Streaming are depicted below:

Claim 1 Adaptive Streaming, Claim 39

A method for data synchronization between a first 

terminal device and a second, remotely located, 

terminal device via an intermediate terminal 

device, the method comprising:

A system to broadcast to at least one client device, 

the system comprising:

obtaining, at the first terminal device, data to be 

synchronized with the second remotely located 

terminal device; 

an image retrieval portion to retrieve at least one 

incoming video signal having a first format;

transmitting the data from the first terminal device 

to the intermediate terminal device through a 

short-range connection; 

formatting the data to be synchronized into at 

least one SMS (Short Message Service) message 

in the intermediate terminal device; and

a data structure usable to determine parameters for 

second compression formats for the at least one 

incoming video signal; and

at least one transcoding module coupled to the 

image retrieval portion and which has access to 

the data structure, the transcoding module being 

capable to transcode the at least one incoming 

video signal from the first format into multiple 

compressed output video signals having 

respective second compression formats based at 

least in part on the parameters;

transmitting the at least one SMS message from 

the intermediate terminal device to the second 

remote located terminal device through cellular 

network connection.

wherein at least one of the second compression 

formats is more suitable for the at least one client 

device than the first format; and

wherein the multiple compressed output video 

signals having the at least one second 

compression format more suitable for the at least 

one client device can be provided by the 

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broadcasting server, wherein any one of the 

multiple compressed output video signals can be 

selected to be presented at the at least one client 

device.

Neither the preamble’s recitation of “a first terminal device,” “a second, remotely located, 

terminal device,” and “an intermediate terminal device,” nor the claimed “cellular network 

connection“ changes that claim 1 is directed to an abstract idea. As the patent itself indicates, a 

“[d]ata synchronization between terminal devices” is a known technique in the field. Ex. A, 

Declaration of Stephen Gray, ¶¶ 33-36; ’505 Patent, 1:14-18. Moreover, the ’505 patent indicates 

that the data formatting protocols of the claimed methods can be performed within conventional 

and routine technology because “the SMS protocol, SyncML protocol, WBXML, and MIME 

protocol” used in the invention are “industrywide protocols” that “are readily available.” ’505 

Patent, 4:46-51 (emphases added). Indeed, the specification admits that “[s]ince modern-day 

mobile terminals already include SMS capability and since SMS centers are already in place and 

operating, no new technology or equipment is needed to send SyncML messages via the SMS 

network.” Id., 3:49-52 (emphases added).

Addressing a similar concept in Gottschalk v. Benson, the Court reasoned that an algorithm 

for converting binary coded decimal to pure binary within a computer’s shift register was abstract 

as it could be performed purely mentally and the claimed procedures “can be carried out in existing 

computers long in use, no new machinery being necessary.” 409 U.S. 63, 67 (1972). See 

also Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) 

(concluding that concept of “anonymous loan shopping” recited in a computer system claim is an 

abstract idea because it could be “performed by humans without a computer”). Likewise, existing 

network devices perform the steps described in claim 1 and the claimed “network” and “terminal 

devices” do not require or include any specialized computer equipment. See McRO, 837 F.3d at

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1314. Nor is claim 1 directed to a non-abstract improvement to computing functionality, such as a 

new or improved computer, network, processor, or the like. See Enfish, 822 F.3d at 1335; SAP, 

898 F.3d at 1168. Indeed, as detailed above, the ’505 patent boasts that the data formatting 

protocols of the claimed methods can be performed within conventional and routine technology,

and that no new technology is requires. See ’505 Patent, 4:46-51; 3:49-52.

Unsurprisingly, and as the following table shows, each of the steps of claim 1 could be 

performed by a human being mentally or with a pencil and paper, a “telltale sign of abstraction.”

PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 1316 (Fed. Cir. 2021). Indeed, as in 

Adaptive Streaming, the focus of claim 1 is merely determining a “compression format more 

suitable for the at least one client device.” See 836 Fed.Appx. at 901. The specification is explicit 

that no special structure, hardware, or software beyond generic network technology need be used 

for detecting congestion and sending congestion messages. ’505 Patent, 3:49-52, 4:46-51. And 

consistent with the disclosure in the specification, not a single limitation of the claims requires any 

specialized or non-generic computing equipment. Thus, the claims are directed towards an 

unpatentable abstract idea.

For example, all of the elements of independent claim 1 can be conceptualized in the human 

mind and performed by a human using conventional computing hardware and software, as depicted 

below:

Abstract claim 

language

Corresponding mental process

A method for 

data 

synchronization 

between a first 

terminal device 

and a second, 

remotely located, 

terminal device 

A person wants to convert some data into a message. 

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via an 

intermediate 

terminal device, 

the method 

comprising:

obtaining, at the 

first terminal 

device, data to be 

synchronized 

with the second 

remotely located 

terminal device;

The person looks at data on a computer.

transmitting the 

data from the 

first terminal 

device to the 

intermediate 

terminal device 

through a shortrange connection;

The person send the data from the computer to a second person’s phone.

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formatting the 

data to be 

synchronized into 

at least one SMS 

(Short Message 

Service) message 

in the 

intermediate 

terminal device; 

and

The second person converts the data to a message on her phone.

transmitting the 

at least one SMS 

message from the 

intermediate 

terminal device 

to the second 

remote located 

terminal device 

through cellular 

network 

connection.

The second person send the message to a third person’s phone.

The other independent claims are likewise directed to the same abstract idea of gathering, 

reformatting, and sending information, do not require any specialized computer software or 

hardware, and can be performed by a human using conventional equipment:

• Independent claim 14 recites nearly identical steps of data transmission and 

formatting message. Claim 14 merely adds a “mobile terminal device” comprising 

a “data message receiver,” a “formatter,” and a “transmitter” to perform the data 

gathering, reformatting, and sending steps.

• Independent claim 23 recites identical steps of “obtaining,” “transmitting,” 

“formatting,” and “transmitting.” Claim 14 merely adds a “program storage device”

containing “a program of instructions” to perform the data gathering, reformatting, 

and sending steps. 

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• Independent claim 36 recites identical steps of “obtaining,” “transmitting,” 

“formatting,” and “transmitting.” Claim 36 merely adds another “transmitting” step.

• Independent claim 41 recites identical steps of “obtaining,” “transmitting,” 

“formatting,” and “transmitting.” Claim 41 merely adds another “transmitting” step 

and a “program storage device” containing “a program of instructions” to perform 

the data gathering, reformatting, and sending steps. 

Neither adding another data transmission step (claims 36 and 41) nor adding generic computer or 

network components (claims 14, 23, and 41) take the claims outside the realm of unpatentable 

abstract ideas. For example, elements such as terminal devices, receivers, formatters, transmitters, 

and program storage devices are merely generic network and computing components configured 

to carry out conventional methods of gathering, reformatting, and sending data. Ex. A, ¶¶ 33-36. 

Moreover, “not all transformations or machine implementations infuse an otherwise ineligible 

claim with an inventive concept.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 

(Fed. Cir. 2014) (internal citations omitted). In PersonalWeb, the Federal Circuit held that using 

generic technology such as a “hash function, a server system, or a computer” failed to render the 

claims non-abstract because “merely adding computer functionality to increase the speed or 

efficiency of the process does not confer patent eligibility on an otherwise abstract idea.” 8 F.4th 

at 1319. Components of a network such as terminal devices, receivers, formatters, transmitters, 

and program storage devices are routinely and conventionally used to perform the functions of 

gathering, reformatting, and sending information. Ex. A, ¶¶ 33-36. Thus, merely adding such

elements to carry out abstract steps of gathering, reformatting, and sending information does not 

confer patent eligibility on the abstract steps. See, e.g., Elec. Power Grp., 830 F.3d at 1355 (“We 

have repeatedly held that such invocations of computers and networks that are not even arguably 

inventive are ‘insufficient to pass the test of an inventive concept in the application’ of an abstract 

idea.”) (quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014)). Therefore, 

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claims 14, 23, 36, and 41 are abstract and do not add anything significantly more than the abstract 

idea of gathering, reformatting, and sending information.

B. Alice Step 2: The Independent Claims of the ‘505 Patent do not Contain an 

Inventive Concept that Transforms the Abstract Idea into Patent-eligible 

Subject Matter

Step two of the Alice framework dictates that a patent directed towards an abstract idea is 

ineligible and therefore invalid if it lacks an “inventive concept”—i.e., something that ensures the 

patent “amounts to significantly more than” the ineligible concept itself. Alice, 573 U.S. at 217–

18 (citing Mayo, 566 U.S. at 72). Importantly, an inventive concept “cannot be furnished by the 

unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. v. 

Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016). 

1. The independent claims’ recitation of generic network and computing 

components does not include an “inventive concept.”

Independent claims 1, 14, 23, 36, and 41 do not contain “significantly more” beyond the 

abstract idea of gathering and sending information. Instead, claims 1, 14, 23, 36, and 41 merely 

recite “generic functional language to achieve the[] purported solutions.” See Two-Way Media, 

874 F.3d at 1339. The claims only include broad recitations of using routine and conventional 

computing functionality to “receive,” “format,” and “transmit” information. Indeed, like the claims 

in Electric Power Group, “[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.” 830 F.3d at 1355; see also Intell. 

Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016) (finding claims invalid

at step two of Alice inquiry for lack of “specific or limiting recitation of . . . improved computer 

technology.”) (citation omitted). Ex. A, ¶¶ 33-36. The ’505 patent itself indicates that the data 

formatting protocols of the claimed methods can be performed within conventional and routine 

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 17 of 24
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technology, explicitly touting that “the SMS protocol, SyncML protocol, WBXML, and MIME 

protocol” used in the invention are “industrywide protocols” that “are readily available.” ’505 

Patent, 4:46-51 (emphases added). The ‘505 patent further boasts that “[s]ince modern-day mobile 

terminals already include SMS capability and since SMS centers are already in place and 

operating, no new technology or equipment is needed to send SyncML messages via the SMS 

network.” Id., 3:49-52 (emphases added). Accordingly, the search for “something more” than the 

abstract idea of gathering and sending information in claims 1, 14, 23, 36, and 41 is limited to the 

only potentially non-abstract elements—the “terminal device[s],” “cellular network connection,”

“data message receiver,” “formatter,” “transmitter,” and “program storage device.”

The “terminal device[s]” communicating with a “cellular network connection” does not 

impart “significantly more” than the abstract idea—the ’505 patent merely claims a generic 

communication network that performs the routine and conventional functions of “obtaining,”

“formatting,” and “transmitting” information. Ex. A, ¶¶ 33-36. Indeed, the Federal Circuit 

confirmed in buySAFE that “receiv[ing] and send[ing] the information over a network” is 

generic. 765 F.3d at 1355. The Federal Circuit has also explained that, like how “reciting the use 

of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible 

invention,” “steps that generically recite the use of a telephone network cannot confer patent 

eligibility.” Reese v. Sprint Nextel Corp., 774 Fed. Appx. 656, 661 (Fed. Cir. 2019) (affirming a 

summary judgment that claims directed to an apparatus and method of providing call waiting and 

caller ID service through the central office of a telephone service provider were invalid under § 

101). Similarly here, the “obtaining,” “formatting,” and “transmitting” steps are performed by 

generic “terminal device[s]” requiring no specialized hardware or software, and thus the claimed 

“terminal device[s]” and “cellular network connection” cannot confer patent eligibility.

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 18 of 24
15

Similarly, the claimed “data message receiver,” “formatter,” and “transmitter” in claim 14 

and “program storage device” in claims 23 and 41 are also merely generic computer components 

that do not require any specialized functionality. ‘505 Patent, 3:49-52 (“[s]ince modern-day mobile 

terminals already include SMS capability and since SMS centers are already in place and 

operating, no new technology or equipment is needed to send SyncML messages via the SMS 

network.”), see also Ex. A, ¶¶ 33-36. Accordingly, like the claims in Reese, nothing in the 

independent claims of the ’505 patent “requires anything other than conventional [] network 

equipment to perform the generic functions of receiving and sending information” and, thus, none 

of claims 1, 14, 23, 36, and 41 contain an inventive concept. See 774 Fed. Appx. at 661. 

Additionally, “[e]ven when viewing the claim elements as an ordered combination,” there is no 

inventive concept in in claims 1, 14, 23, 36, and 41 because the elements merely describe the 

abstract steps of “obtaining,” “formatting”, and “transmitting” information in logical order. See 

MyMail, Ltd. v. ooVoo, LLC, 2021 U.S. App. LEXIS 24764, *17-18 (Fed. Cir. Aug. 19, 2021)

(“[e]ven when viewing the claim elements as an ordered combination, we discern no inventive 

concept in the process of sending information from a user device to a server, determining at the 

server whether the user device should receive toolbar update data, receiving at the user device the 

update data, updating the toolbar, and displaying the toolbar.”).

Additionally, the claimed invention does not overcome a problem specifically arising in 

the field of terminal devices or networks. Instead, “[t]he issue of incompatibility in communication 

has existed as long as language itself. Translation has always been the solution. . . . Reformatting 

information does not solve a problem arising in the realm of computer networks and is not an 

inventive concept.” Orbcomm Inc. v. Calamp Corp., 215 F. Supp. 3d 499, 507 (E.D. Va. 2016)

(emphasis added).

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 19 of 24
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Finally, the claims here are nothing like the patent-eligible claims in Messaging Gateway 

Solutions, LLC v. Amdocs, Inc., 2015 WL 1744343 (D. Del. Apr. 15, 2015). For example, the 

claims in Messaging Gateway “use[] technology that allows communication where it would 

otherwise be impossible.” Id. at *5. By contrast, the ’505 patent simply uses conventional 

equipment to facilitate the admittedly known technique of “[d]ata synchronization between 

terminal devices.” Ex. A, ¶¶ 33-36; ’505 Patent, 1:14-18. Indeed, unlike the Messaging Gateway 

claims which “specif[y] how an interaction between a mobile phone and a computer is manipulated 

in order to achieve a desired result which overrides conventional practice” (2015 WL 1744343 at 

*5), the ’505 patent emphasizes that its claimed methods can be performed within conventional 

and routine technology, using “readily available” “industrywide protocols.” ’505 Patent, 4:46-51. 

Far from overriding conventional practice, the ‘505 patent further boasts that its methods need “no 

new technology or equipment . . . .” Id., 3:49-52 (emphases added). Additionally, unlike the claims 

in Messaging Gateway, the claims here lack “meaningful limitations that prevent [them] from 

preempting the abstract idea of receiving, translating, and delivering a message.” 2015 WL 

1744343 at *5. Here, the claims are only nominally tied to the claimed steps of “obtaining,” 

“transmitting,” and “formatting,” since they include no meaningful limitations of how each 

structure actually effects these results.

2. All dependent claims also lack an “inventive concept.”

The dependent claims similarly add nothing “significantly more” than the abstract idea 

recited in the independent claims. 

The limitations of claims 2-13, 15-22, 24-35, 37-40, and 42-45 do not elevate the claims to 

significantly more than the abstract idea of gathering, reformatting, and sending information. As 

shown below, these claims are directed to similar steps of reformatting and sending information, 

with nothing beyond this abstract idea because narrow mathematical operations “add nothing 

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 20 of 24
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outside of the abstract realm.” See SAP, 898 F.3d at 1169.

Claims directed to the abstract idea of gathering, reformatting, and sending information.

Dependent 

Claim Element

Physical 

structure or 

specialized 

hardware or 

software 

required

Applicable 

law 

“Something 

more” than 

abstract 

idea?

2, 15, 24

“formatting the data message 

comprises formatting the data in a 

SyncML format” via “the 

formatter.”

No.

See SAP, 

898 F.3d at 

1169.

No.

8, 18, 30

“the data formatted in a SyncML 

format comprises one of two MIME 

(Multipurpose Internet Mail 

Extensions) formats.”

No. Same. No.

9, 19, 31 “the two MIME formats comprise 

vcal and vcard formats.” No. Same. No.

3, 25

“the intermediate terminal device 

comprises a mobile terminal 

device.”

No.

Elec. 

Power 

Grp., 830 

F.3d at 

1354.

No.

4, 26, 37, 

42

“the at least one SMS message is 

transmitted via a mobile network 

including an SMS message center.”

No. Same. No.

5, 27

“the at least one SMS message is 

transmitted from the intermediate 

terminal device to the second, 

remotely located, terminal device 

via the mobile network and a 

gateway and the Internet.”

No. Same. No.

11, 33, 38, 

43

“the data message is transferred 

from the first terminal device to the 

intermediate terminal device via a 

short range communication link.”

No. Same. No.

12, 21, 34, 

39, 44

“the short range communication 

link comprises one of an IR 

(Infrared) or Bluetooth 

communication link.”

No. Same. No.

13, 22, 35, 

40, 45

“transmitting at least one other SMS 

message from the second terminal 

device to the first terminal device 

via the intermediate terminal 

device” via “a receiver to receive at 

No. Same. No.

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 21 of 24
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least one other SMS message from 

the another terminal device and a 

data message transmitter to transmit 

the at least one other SMS message 

to the first terminal device”

6, 16, 28

“the at least one SMS message 

comprises a compressed SMS 

message.”

No.

Elec. 

Power 

Grp., 830 

F.3d at 

1355.

No.

7, 17, 29

“the compressed SMS message 

comprises a WBXML (Wireless 

Application Protocol Binary 

Extensible Markup Language) 

encoded message.”

No. Same. No.

10, 20, 32

“the data message comprises one of 

a calendar, a to-do list, personal 

information, and contact 

information.”

No. Same. No.

Each of the data formatting steps simply specify how the abstract process of reformatting

information may be carried out. These additional abstract elements are not tied to any sort of 

physical structure (let alone a non-generic one). ‘505 Patent, 3:49-52 (“[s]ince modern-day mobile 

terminals already include SMS capability and since SMS centers are already in place and 

operating, no new technology or equipment is needed to send SyncML messages via the SMS 

network.”), see also Ex. A, ¶¶ 33-36. Therefore, claims 2-13, 15-22, 24-35, 37-40, and 42-45 are

abstract and do not add anything significantly more than the abstract idea of gathering, 

reformatting, and sending information. 

Finally, the Federal Circuit has held that “merely selecting information, by content or 

source, for collection, analysis, and display does nothing significant to differentiate a process from 

ordinary mental processes.” Elec. Power Grp., 830 F.3d at 1355. Thus, the “compressed SMS 

message” of claims 6, 16, and 28, “WBXML (Wireless Application Protocol Binary Extensible 

Markup Language) encoded message” of claims 7, 17, and 29, and “calendar, a to-do list, personal 

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 22 of 24
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information, and contact information” of claims 10, 20, 32 merely amount to selecting information 

by source—limiting the information to a type of message. Therefore, the limitations also “[do] 

nothing significant to differentiate a process from ordinary mental processes.” See id. Therefore, 

these are abstract and do not add anything significantly more than the abstract idea of data 

reformatting.

V. CONCLUSION

The independent claims of the ’505 patent are directed to the abstract idea of gathering, 

reformatting, and sending information. The dependent claims either merely limit these abstract 

steps without adding an inventive concept or add routine and known components for carrying out 

the abstract steps. Indeed, every step of the claimed methods and functions can be performed in 

the mind of a human being. Therefore, the ’505 patent is directed towards an abstract idea and 

ZTE requests summary judgment of invalidity under § 101.

DATED: November 18, 2022 Respectfully submitted,

/s/Lionel M. Lavenue

Lionel M. Lavenue 

Virginia Bar No. 49,005

lionel.lavenue@finnegan.com 

FINNEGAN, HENDERSON, FARABOW, 

GARRETT & DUNNER, LLP

1875 Explorer Street, Suite 800

Reston, VA 20190

Phone: (571) 203-2700

Fax: (202) 408-4400

Attorney for Defendant, 

ZTE Corporation

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 23 of 24
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CERTIFICATE OF SERVICE

The undersigned hereby certifies that all counsel of record who are deemed to have 

consented to electronic service are being served with a copy of this document via the Court’s 

CM/ECF system on November 18, 2022.

/s/Lionel M. Lavenue 

 Lionel M. Lavenue

Case 6:20-cv-00497-ADA-DTG Document 253 Filed 11/18/22 Page 24 of 24