KENT E. BALDAUF, JR. 

Attorney at Law 

April 25, 2024 

VIA CM/ECF 

Honorable Rodney Gilstrap 

U.S. District Court for the 

 Eastern District of Texas 

Sam B. Hall, Jr. Federal Building & U.S. Courthouse 

100 East Houston Street 

Marshall, TX 75670 

Re: Symbology Innovations, LLC v. Macy’s, Inc., No. 2:23-cv-00583-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, LLC (“Symbology”) and Defendant Macy’s, Inc. 

(“Macy’s”) (collectively, the “Parties”) respectfully submit this joint letter pursuant to the Court’s 

Standing Order Regarding Motions Under 35 U.S.C. § 101. This joint letter sets forth the Parties’ 

positions regarding their disagreement as to whether claim construction is needed to inform the 

Court’s analysis as to patent eligibility. 

Plaintiff’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: 

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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. In addition, a 

proper 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. 

Defendant’s Position 

Macy’s submits that claim construction is not needed to rule upon patent eligibility 

and decide its Motion to Dismiss (Dkt. 15). Dismissal is appropriate before claim construction 

when, as here, 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). Macy’s Motion establishes that the claims of the patents-in-suit are ineligible on their face, 

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Honorable Rodney Gilstrap - 3 - April 25, 2024 

and there exists no plausible claim construction for any claim that would render the asserted claims 

eligible. 

Macy’s Motion sets forth a prima facie case of ineligibility and explains why claim 

construction is not needed. To rebut this prima facie showing of ineligibility, Symbology “must 

propose a specific claim construction or identify specific facts that need development and explain 

why those circumstances must be resolved before the scope of the claims can be understood for § 

101 purposes.” Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1361 (Fed. Cir. 2023) 

(emphasis added). Symbology cannot do so. 

Symbology has asserted that the claim term “one or more visual detection 

applications” must be construed in order to conduct a § 101 analysis. See Symbology Innovations, 

LLC v. Dexcom, Inc., No. 2:23-CV-00473-JRG, Dkt. 31. However, Symbology has not, and 

cannot, propose any construction for this term that would impact the § 101 analysis. Even 

assuming that this term is construed to require the “visual detection application” to run 

“automatically” and “in the background,” which is one position Symbology suggests it may adopt 

(see above Dexcom filing), this construction would not impact the eligibility analysis as it does not 

alter the abstract nature of the claim or constitute an inventive concept. This is apparent from the 

shared specification of the patents-in-suit where the patentee acknowledges that any one of a 

number of existing programs could be used as the “visual detection application.” Dkt. 1-1 (’752 

Patent) at 3:29-33. Indeed, the Complaint asserts that this limitation is met by a “camera 

application residing in the Smartphone.” Dkt. 1-4 at pg. 5. 

Because Symbology has not identified any plausible construction that would impact 

the eligibility analysis, Macy’s Motion is ripe for consideration before claim construction occurs. 

Very truly yours, 

s/ Kent E. Baldauf, Jr. 

Kent E. Baldauf, Jr. 

KEBjr:pmt 

cc: All Counsel of Record (Via CM/ECF) 

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