IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

IN RE: TAASERA LICENSING LLC,

PATENT LITIGATION

THIS DOCUMENT RELATES TO

CASE NO. 2:23-cv-00113-JRG

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Case No. 2:22-md-03042-JRG

JURY TRIAL DEMANDED

TAASERA LICENSING LLC, 

Plaintiff,

v.

PALO ALTO NETWORKS, INC., 

Defendants. 

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Case No. 2:23-cv-00113-JRG 

JURY TRIAL DEMANDED

PLAINTIFF TAASERA LICENSING LLC’S SUR-REPLY IN

FURTHER OPPOSITION TO DEFENDANT PALO ALTO NETWORKS, INC.’S

PARTIAL MOTION TO DISMISS

UNDER FEDERAL RULE OF CIVIL PROCEDURE 12(b)(6) (DKT. 15) 

Case 2:23-cv-00113-JRG Document 29 Filed 05/04/23 Page 1 of 8 PageID #: 491
INTRODUCTION

Palo Alto Networks, Inc.’s (“PAN”) Reply Brief (Dkt. 25, “Reply”) confirms that material 

issues of fact remain regarding whether the claims are directed to abstract ideas and, if so, whether 

the claims are directed to routine, well-known, and conventional ideas. Although it is also clear 

that claim construction is required to resolve this dispute, PAN’s Motion can be denied at the Rule 

12 stage based on the multitude issues of material fact. PAN’s Reply continuously and repeatedly 

inserts attorney argument in place of expert testimony, never states the level of skill in the art that 

should be applied to the POSITA1 for each patent in determining the inventive concepts, ignores 

claim elements entirely, fails to treat the claims as an ordered combination, and improperly states 

that the specification is to be ignored in interpreting the claims. Therefore, PAN’s Motion should 

be denied. PAN must show by clear and convincing evidence that a skilled artisan would have 

found the claims abstract, and that the claims contain no more than routine, well-known, and 

conventional components. PAN has not done so.

ARGUMENT

That the patents at issue in this Motion are directed to software-based improvements is not 

itself determinative of the Section 101 inquiry. Software can make patent-eligible improvements 

to computer technology, as it does here. Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 

1309 (Fed. Cir. 2020).

A. The ’796 Patent

There is a dispute regarding whether the ’796 Patent is directed to “identifying and 

extracting information by matching a pattern” as argued by PAN (Reply at 1), or whether the claim 

1 “The 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.” Berkheimer v. HP Inc., 881 F.3d 

1360, 1368 (Fed. Cir. 2018).

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element requiring that the expression “represents a pattern that is matchable in accordance with a 

programming language” removes these claims from the construct of Alice Step 1 (Alice Corp. Pty. 

Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014)). Whether this is a “generic computer-implemented 

step” that can or cannot impart eligibility is a question of fact, and the scope of the “programming 

language” claim element will be a matter of claim construction. This is not an instance of reciting 

“computer program code” to perform a known function, but rather limits the claim to regular 

expressions that are known within the programming language.

Regarding Step 2, PAN errs in arguing that the specification must be ignored when making 

this determination. Under both Step 1 and Step 2, the specification must be considered. Mentone 

Sols. LLC v. DIGI Int’l Inc., No. 2021-1202, 2021 WL 5291802, at *4 (Fed. Cir. Nov. 15, 2021); 

CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1368 (Fed. Cir. 2020) (“We also consider the 

patent’s written description, as it informs our understanding of the claims.”); ChargePoint, Inc. v. 

SemaConnect, Inc., 920 F.3d 759, 774 (Fed. Cir. 2019) (relying on specification to determine 

inventive concept). Prior to claim construction and in the absence of expert testimony regarding 

the scope and content of the prior art, the level of skill in the art, or any other question of fact, the 

specification is the only guide. Because the specification indicates that the claims of the ’796 Patent 

are not routine, well-known, and conventional, PAN’s Rule 12 Motion on Step 2 fails.

B. The ’356 Patent

The claims of the ’356 Patent relate to screening packets of information, which cannot be

performed by humans. This claim is on point with Commc’n Interface Techs., LLC v. Albertson’s 

LLC, No. 4:20-CV-550-SDJ, 2021 WL 4453580 (E.D. Tex. Sept. 29, 2021), in which computer 

functionality was improved by eliminating certain authentication procedures when virtual sessions 

were disconnected and then reconnected. The ’356 Patent similarly improves computer 

functionality by automatically determining if a packet is a new exploit candidate and eliminating 

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prior “honeypot-” type intrusion detection systems. Dkt. 1-3, ’356 Patent at 2:38-3:5. Eliminating 

the honeypot-type systems improves functionality of the system, as explained by the ’356 Patent, 

because the honeypot “is not serving any useful function to the enterprise or network.” Id. at 2:47-

48. The patent also explains that “the shear number of packets received by the honeypot delays the 

detection of new computer attacks, viruses, computer worms and exploitation code.” Id.at 3:2-5. 

Because eliminating the honeypot is a concrete improvement to the functionality of the intrusion 

detection system, the claims are not directed to an abstract idea.

Regarding Step 2, other than continue to misrepresent the scope of the claims, PAN 

provides no additional evidence or expert testimony that could possibly meet its burden to show 

that the claims are directed to routine, well-known, and conventional ideas.

C. The ’517 Patent

There is a dispute regarding whether the ’517 Patent is directed to “assigning a score based 

on risk,” as argued by PAN, or whether structural claim elements, such as the “runtime monitor 

including a processing device,” are concrete improvements ’Dkt. 1-5, 517 Patent, Claim 1, 10:9-

10 (Reply at 4). The claims additionally require “a rules database” and “a policy database.” These 

additional structural limitations, which are not generic computers, are not addressed by PAN at all. 

PAN’s final argument on Step 1 is that it cannot determine “how” the processing device identifies 

the behavior score. Reply at 4. This admission that the scope of the claim is unclear further 

evidences that claim construction is required. Further, claim 1 states that the runtime monitor 

identifies the behavior score “based on the identified runtime risk,” which is determined based on 

the assessment policy stored in the policy database. See Claim 1. This is a concrete improvement.

PAN argues on Step 2 that the only inventive concepts identified by Taasera are either in 

the specification, or restatements of the abstract idea. First, again PAN fails to identify the level of 

skill in the art that pertains to this patent and fails to present expert testimony regarding what would 

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have been routine, well-known, and conventional to that skilled artisan. Second, the runtime 

monitor disclosed and claimed in the ’517 Patent was allowed over the prior art of record because 

the “rules that identify action sequences of actions performed by users, applications, or systems 

are used in assessment policies, which identify a runtime risk for an application program that 

executes on a device, and the identified runtime risk indicates a risk or threat of the identified 

action sequence of the application.” Ex. 1, ’517 Patent File History, Nov. 12, 2013 Response to 

Office Action, at 12. These action sequences that are used to identify the runtime risk were not

routine, well-known, and conventional. 

D. The ’038 and ’918 Patents

There is a dispute regarding whether the ’038 and ’918 Patents describe and claim concrete 

solutions to the technical problems of controlling access to endpoint systems. For example, the 

’038 Patent describes that the prior art was lacking “the ability to define via configuration settings 

parameter values for different users and user groups” and also lacking are “useful, functional, 

management reports as well as dynamic, functional and user-friendly access control capabilities.” 

Dkt. 1-6, ’038 Patent at 3:20-29; Dkt. 1-9, ’918 Patent at 3: 29-36. The ’038 and ’918 Patents 

describe and claim one or more “software agents” that are configured on the endpoint that monitor 

operating conditions, and a computing system that is remote from the endpoint containing policies 

in a data store that receives information from these software agents and determines a compliance 

state of the endpoint. See, e.g., ’038 Patent, Claim 1. These software agents, distributed in nature, 

are not generic computers and are not abstract under Alice Step 1. PAN states, without explanation,

that Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and eCeipt LLC v. 

Homegoods, Inc., No. W-19-CV-00032-ADA, 2019 WL 10302271 (W.D. Tex. May 20, 2019)

“alleged specific improvements to computer functionality,” whereas Taasera’s counterclaims in 

this case are silent about any alleged improvement. Reply at 5. But here, the patents themselves 

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describe and claim specific improvements to computer functionality—“[h]eightened awareness 

and dynamic, autonomous adjustment to alert and enforcement thresholds based on condition data” 

. . . “use of quantitative analysis models in end point inspection, analysis and policy enforcement” 

. . . “[g]ranular and wide ranging policy enforcement capabilities, i.e. ability to influence a number 

of agents and conditions simultaneously,” etc. ’038 Patent, 59:44-60:26. These concrete 

technological improvements are not abstract under Alice Step 1.

Regarding Step 2, PAN again cannot state what is routine, well-known, and conventional 

to the skilled artisan (which is undefined), merely re-stating its position that the claim is the 

automation of human tasks, and therefore any novelty in the claims is in the realm of abstract ideas. 

But the “compliance analysis engine” that is described and claimed provides a multitude of 

tangible computing benefits, as described in the ’038 and ’918 Patents themselves. See, e.g., ’038 

Patent, 59:31-60:31. The intrinsic record of these patents is all that is currently before the Court 

regarding the scope of the prior art and the novelty claimed by these patents. Therefore, PAN 

cannot meet its burden to show that these patents are ineligible under 35 U.S.C. § 101.

Dated: May 4, 2023 Respectfully submitted,

/s/ Alfred R. Fabricant 

Alfred R. Fabricant

NY Bar No. 2219392

Email: ffabricant@fabricantllp.com

Peter Lambrianakos

NY Bar No. 2894392

Email: plambrianakos@fabricantllp.com

Vincent J. Rubino, III

NY Bar No. 4557435

Email: vrubino@fabricantllp.com

Joseph M. Mercadante

NY Bar No. 4784930

Email: jmercadante@fabricantllp.com

FABRICANT LLP

411 Theodore Fremd Avenue,

Suite 206 South

Case 2:23-cv-00113-JRG Document 29 Filed 05/04/23 Page 6 of 8 PageID #: 496
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Rye, New York 10580

Telephone: (212) 257-5797

Facsimile: (212) 257-5796 

Samuel F. Baxter

Texas State Bar No. 01938000

Email: sbaxter@mckoolsmith.com

Jennifer L. Truelove

Texas State Bar No. 24012906

Email: jtruelove@mckoolsmith.com

MCKOOL SMITH, P.C.

104 E. Houston Street, Suite 300

Marshall, Texas 75670

Telephone: (903) 923-9000

Facsimile: (903) 923-9099

ATTORNEYS FOR DEFENDANT

TAASERA LICENSING LLC

Case 2:23-cv-00113-JRG Document 29 Filed 05/04/23 Page 7 of 8 PageID #: 497
CERTIFICATE OF SERVICE

The undersigned hereby certifies that, on May 4, 2023, 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 per Local Rule CV-5(a)(3).

/s/ Alfred R. Fabricant

 Alfred R. Fabricant

Case 2:23-cv-00113-JRG Document 29 Filed 05/04/23 Page 8 of 8 PageID #: 498