UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

SYMBOLOGY INNOVATIONS, 

LLC,

Plaintiff,

v.

DEXCOM, INC. 

Defendant.

Case No. 2:23-cv-473-JRG

Jury Trial Demanded 

PLAINTIFF’S SUR-REPLY IN OPPOSITION TO

RENEWED RULE 12(C) MOTION FOR JUDGMENT ON THE PLEADINGS

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SUR-REPLY IN OPPOSITION TO RENEWED 12(C) MOTION ii

TABLE OF CONTENTS

I. There Are Factual Disputes Preventing a Ruling at the Rule 12 Stage ....................................... 1

II. Claim Construction is Required...................................................................................................... 3

III. Conclusion ......................................................................................................................................... 4

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TABLE OF AUTHORITIES

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

882 F.3d 1121 (Fed. Cir. 2018) .............................................................................................................. 1

Ashcroft v. Iqbal, 

556 U.S. 662, 678 (2009)........................................................................................................................ 4

Bell Atlantic Corp. v. Twombly, 

550 U.S. 544, 547 (2007)........................................................................................................................ 4

Berkheimer v. HP Inc., 

881 F.3d 1360, 1368 (Fed. Cir. 2018) .................................................................................................... 1

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

927 F.3d 1306, 1319 (Fed. Cir. 2019) .................................................................................................... 2

GreatGigz Solutions, LLC v. East Texas Border Health Clinic d/b/a Genesis Primecare, 

Case No 2:21-cv-00370-JRG, Dkt. No. 29 (June 28, 2022 E.D. Tex.) .................................................. 4

M-I Drilling Fluids UK Ltd. v. Dynamic Air Ltda., 

890 F.3d 995, 999 (Fed. Cir. 2018) ........................................................................................................ 1

Microsoft Corp. v. i4i Ltd. P'ship, 

564 U.S. 91, 100, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011)................................................................... 2

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SUR-REPLY IN OPPOSITION TO RENEWED 12(C) MOTION 1

Plaintiff Symbology Innovations, LLC (“Plaintiff”) files this Sur-Reply to Defendant’s Reply In 

Support of Its Renewed Motion For Judgment on The Pleadings (Dkt. No. 30) (“Reply”).

I. There Are Factual Disputes Preventing a Ruling at the Rule 12 Stage

Defendant has failed to establish a lack of factual dispute with respect to the allegations of the 

First Amended Complaint (“FAC”) relating to the non-abstract nature of the Asserted Claims and the

existence of an inventive concept. For example, Defendant fails to meet its burden to deny the FAC’s

factual basis as to “whether a claim element or combination of elements is well-understood, routine and 

conventional to a skilled artisan in the relevant field,” which is a question of fact that must be “proven 

by clear and convincing evidence.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).

At the pleading stage, the Court is required by law not only to accept all factual allegations in the 

operative complaint as true, but also to draw all reasonable inferences in the patentee’s favor. For example, 

in Aatrix Software, Inc. v. Green Shades Software, Inc., the Federal Circuit acknowledged how factual 

issues undergird both Alice steps. 882 F.3d 1121 (Fed. Cir. 2018). “In the procedural posture of a motion 

to dismiss, a district court must accept the uncontroverted allegations in the Plaintiff’s complaint as true 

and resolve any factual conflicts in the affidavits in the Plaintiff’s favor.” M-I Drilling Fluids UK 

Ltd. v. Dynamic Air Ltda., 890 F.3d 995, 999 (Fed. Cir. 2018).

When the complaint contains concrete allegations regarding the “claimed combination’s

improvement to the functioning of the computer,” the asserted patents can survive a Rule 12(b)(6) 

motion at Alice step one. Aatrix, 882 F.3d at 1128. When the complaint or counterclaim contains concrete 

allegations that “individual elements and the claimed combination are not well-understood, routine, or 

conventional activity,” the asserted patent can survive a Rule 12(b)(6) motion at Alice step two. Id. This 

applies equally to a Rule 12(c) motion.

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Here, the FAC contains specific and plausible statements of fact establishing the non-abstract 

nature of and the inventive concepts contained in the Asserted Claims. More specifically, the FAC alleges 

that, as of the Date of Invention in September 2010:

The system(s) and methods of the Symbology Patents include software and 

hardware that do not operate in a conventional manner. For example, the 

software is tailored to provide functionality to perform recited steps and the 

hardware (e.g., portable electronic device) is configured (and/or 

programmed) to provide functionality recited throughout the claims of the 

Symbology Patents.

See Dkt. No. 18 at ¶ 23.

The features recited in the claims in the Symbology Patents provide 

improvements to conventional hardware and software systems and 

methods. The improvements render the claimed inventions of the 

Symbology Patents non-generic in view of conventional components.

Id. at ¶ 24.

The features and recitations in the claims of the Symbology Patents are not 

those that would be well-understood, routine, or conventional to one of 

ordinary skill in the art at the time of the invention.

Id. at ¶ 25.

The facts as plead are plainly relevant to the non-abstract nature of the Asserted Claims and the

presence of inventive concepts captured in the Asserted Claims. These specific factual allegations in the 

FAC define the state of the art as of the Date of Invention and provide a basis in fact to conclude that the 

Asserted Claims are indeed patent-eligible.

Dexcom’s Reply invites judicial error as this case is similar to the vacated and remanded trial 

court in Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019). “[P]atents issued by 

presumptively valid. Id. (citing Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 100, 131 S.Ct. 2238, 180 

L.Ed.2d 131 (2011)). This presumption reflects the fact that the Patent and Trademark Office has already 

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examined whether the patent satisfies “the prerequisites for issuance of a patent,” including § 101. 

Microsoft Corp. at 95–96, 131 S.Ct. 2238. 

While an alleged infringer “may attempt to prove that the patent never should have issued in the 

first place,” i.e., challenge its validity, the alleged infringer must prove that the patent does not satisfy 

these prerequisites before the patent loses its presumption of validity. Id. at 96–97, 131 S.Ct. 2238. 

Thus, the Court should deny Defendant’s motion to dismiss at the pleading stage.

II. Claim Construction is Required

Defendant states, in its Reply, that “the claims are broadly generic and do not contain meaningful 

limitations that would restrict it to a non-routine, specific application of the abstract idea.” See Reply at 

7. However, in the Parties’ Joint Letter Regarding Necessity of Prior Claim Construction to Decide Patent 

Eligibility under 35 U.S.C. § 101 (Dkt. No. 12-1) (“Joint Letter”), Plaintiff asserted that the following 

term requires construction prior to the Court ruling on Defendant’s Motion: “one or more visual detection 

applications.” See Joint Letter at 2.

In the Joint Letter, Plaintiff indicated that 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. 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. See Joint Letter at 2.

A construction of this phrase is directly relevant to the issue of whether the claims “contain 

meaningful limitations that would restrict it to a non-routine, specific application of the abstract idea,” 

which is Defendant’s “no inventive concept” argument. A proper construction of this phrase is also

required to properly evaluate Defendant’s “abstract concept” arguments. Indeed, because Defendant’s

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motion is presented to the Court at the pleading stage, the Court is left with zero developed record from 

which it could possibly assess what was, and what was not, well-understood, routine, and conventional 

in the art as of September 2010, not to mention a lack of familiarity with the disclosures and the 

prosecution histories of the Asserted Patents. As discussed above, the prosecution history of the Asserted 

Patents is particular relevant to the proper construction of the phrase “one or more visual detection 

applications.”

Further, this Court has previously denied a Rule 12(b)(6) motion to dismiss prior to claim 

construction, even when the defendant offered to adopt plaintiff’s proposed claim constructions. See

GreatGigz Solutions, LLC v. East Texas Border Health Clinic d/b/a Genesis Primecare, Case No 2:21-

cv-00370-JRG, Dkt. No. 29 (June 28, 2022 E.D. Tex.) (“the briefing demonstrates that much of the record 

is left undeveloped, and it is clear that numerous disagreements between the parties concerning the Alice 

analysis impinge on the construction of the disputed terms” . . . “further inquiry into issues such as the 

knowledge of one of ordinary skill in the art as to the disputed terms may be resolved at claim 

construction” . . . “the Court is not inclined to hypothetically adopt either party’s purported claim 

constructions to push the case to an earlier resolution while such disputes remain”).

III. Conclusion

Plaintiff has plead enough facts “to state a claim to relief that is plausible on its face.” Ashcroft v. 

Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 547 (2007)).

Defendant’s Motion cannot overcome the factual assertions in the FAC and the factual assertions derived 

directly from the written specification of the Asserted Patents. Further, claim construction is required in 

order to properly evaluate Defendant’s “abstract concept” and “no inventive concept” arguments.

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SUR-REPLY IN OPPOSITION TO RENEWED 12(C) MOTION 5

Dated: April 9, 2024 Respectfully Submitted,

/s/ Randall Garteiser

Christopher A. Honea

 Texas Bar No. 24059967

 chonea@ghiplaw.com

Randall Garteiser

 Texas Bar No. 24038912

 rgarteiser@ghiplaw.com

M. Scott Fuller

 Texas Bar No. 24036607

 rgarteiser@ghiplaw.com

GARTEISER HONEA, PLLC

119 W. Ferguson Street

Tyler, Texas 75702

Telephone: (903) 705-7420

Facsimile: (903) 405-3999

COUNSEL FOR PLAINTIFF

CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the above and foregoing document 

has been served on all counsel of record via the Court’s ECF system. 

/s/ Randall T. Garteiser 

Randall T. Garteiser

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