Exhibit A 

Case 2:23-cv-00473-JRG Document 12-1 Filed 01/16/24 Page 1 of 4 PageID #: 196
Fish & Richardson P.C. 

1717 Main Street 

Suite 5000 

Dallas, TX 75201 

214 747 5070 main

214 747 2091 fax

Rodeen Talebi 

Associate 

talebi@fr.com 

+1 214 760 6150 direct

January 16, 2024 

VIA CM/ECF 

The Honorable Rodney Gilstrap, U.S.D.J. 

Sam B. Hall, Jr. Federal Building and United States Courthouse 

100 East Houston Street 

Marshall, Texas 75670 

Re: Symbology Innovations, LLC v. Dexcom, Inc., No. 2:23-CV-00473-JRG; Parties’ Joint 

 Letter Regarding Necessity of Prior Claim Construction to Decide Patent Eligibility 

 Under 35 U.S.C. § 101

Dear Judge Gilstrap: 

Plaintiff Symbology Innovations Systems, LLC (“Symbology”) and Defendant Dexcom, 

Inc. (“Dexcom”) (collectively, the “Parties”) respectfully submit this joint letter pursuant to the 

Court’s Standing Order Regarding Motions Under 35 U.S.C. § 101. 

A table listing the Asserted Patents and the Asserted Claims appears below. 

Asserted Patent Asserted Claims Count No. in Complaint 

(Dkt. 1) 

U.S. Patent No. 8,424,752 

(“the ’752 Patent”) 

1, 5, 7, 16, 24 Count One 

U.S. Patent No. 8,651,369 

(“the ’369 Patent”) 

1, 5, 7, 16, 24 Count Two 

U.S. Patent No. 8,936,190 

(“the ’190 Patent”) 

1, 5, 7, 16, 20 Count Three 

Case 2:23-cv-00473-JRG Document 12-1 Filed 01/16/24 Page 2 of 4 PageID #: 197
The Honorable Rodney Gilstrap 

January 16, 2024 

Page 2 

I. Plaintiff Symbology’s Position 

 In addition to the claim construction issue noted herein, there are a plethora of factual 

disputes that preclude resolution of this matter at the pleading stage. See Berkheimer v. HP, 

Inc., 881 F.3d 1360, 1368 (Fed. Cir. Feb. 2018) (“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 that must be proven ‘by clear and convincing evidence.’”). 

Specifically, Symbology contends that at least the following term must be construed prior to the 

Court ruling on Dexcom’s motion to dismiss: 

Disputed Term/Phrase Claim(s) in Which Term Appears 

“one or more visual detection applications” Pat. No. 8,424,752 

1, 5, 24 

Pat. No. 8,651,369 

1, 5, 24 

Pat. No. 8,936,190 

1, 5, 20 

 The ’752 Patent, the ’369 Patent and the ’190 Patent are continuations of the same parent 

application, which issued on August 9, 2011, as U.S. Patent No. 7,992,773 (“The Parent” or “’773 

Patent”) and is entitled “System and Method for Presenting Information about an Object on a 

Portable Electronic Device.” During the prosecution of the ‘773 Patent, the applicant narrowed 

Claim 1 of the ‘773 patent via claim amendment in response to an Office Action issued by the 

USPTO (See Symbology production, Bates Nos. SYM000083 and SYM000088 – SYM000096). 

As a result of applicant’s amendment to Claim 1, every claim of the ’773 Patent includes the 

limitation in which the “one or more visual detection applications” are configured to “run in the 

background,” “automatically” decode “symbology” and send the decode string to another “visual 

detection application” residing on the portable device. 

 Importantly, during the prosecution of the Asserted Patents, applicant did not rescind the 

limitation requiring the visual detection to occur automatically and in the background. 

Additionally, the ’773 Patent, the ’752 Patent, the ‘369 Patent and the ’190 Patent all contain the 

same language in the specifications as it relates to the “visual detection applications.” Thus, 

Symbology’s position is that the limitation in the Parent Patent applies to the phrase “visual 

detection applications” in the Asserted Patents, and a proper construction of this phrase is required 

in order to properly evaluate the merits of Dexcom’s “abstract concept” arguments. 

Case 2:23-cv-00473-JRG Document 12-1 Filed 01/16/24 Page 3 of 4 PageID #: 198
The Honorable Rodney Gilstrap 

January 16, 2024 

Page 3 

II. Defendant Dexcom’s Position 

This case is a candidate for dismissal at the pleading stage because it is apparent from the 

face of the patent that the asserted claims are directed to ineligible subject matter. See 

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

Such a case should be dismissed even before claim construction when there is no plausible 

construction that could confer eligibility. See Content Extraction and Transmission LLC v. Wells 

Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1349 (Fed. Cir. 2014) (citing id. at 714–15; Bancorp 

Servs. L.L.C v. Sun Life Assur. Co., 687 F.3d 1266, 1273–74). Defendant’s motion establishes that 

the asserted claims of the Patents-in-Suit are ineligible on their face, and there exists no plausible 

claim construction for any claim that would render the asserted claims eligible. 

Defendant has made a prima facie case for patent ineligibility, and the burden now shifts 

to Symbology to demonstrate a genuine claim construction dispute that could affect the outcome. 

See Jedi Techs., Inc. v. Spark Networks, Inc., No. CV 1:16-1055-GMS, 2017 WL 3315279, at *6 

(D. Del. Aug. 3, 2017) (finding claim construction was not necessary where the plaintiff failed to 

identify any specific claims which, if scrutinized during claim construction, would impact the § 

101 analysis, and granting motion to dismiss); see also e.g., Voxathon LLC v. Alpine Elecs. of Am., 

Inc., No. 2:15-cv-562-JRG, 2016 WL 260350 at *4 (E.D. Tex. Jan. 21, 2016) (Gilstrap, C.J.) 

(“Since the proving of a negative is historically disfavored, once Defendants make a prima facie 

showing that an inventive concept is absent, it falls upon Voxathon to show that there is, in fact, 

an inventive concept actually present.”). Symbology cannot do so, and therefore, this motion is 

ripe for consideration and should be granted. 

Sincerely, 

Rodeen Talebi 

Counsel for Defendant Dexcom, Inc.

cc: Counsel of Record VIA CM/ECF 

Case 2:23-cv-00473-JRG Document 12-1 Filed 01/16/24 Page 4 of 4 PageID #: 199