IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

)

DISPLAY TECHNOLOGIES, LLC )

)

Plaintiff, )

)

v. ) C.A. No. 2:23-cv-00591

)

SIRIUS XM RADIO INC., ) JURY TRIAL DEMANDED

)

Defendant. )

)

SIRIUS XM RADIO INC.’s MEMORANDUM OF LAW IN SUPPORT OF ITS 

FED. R. CIV. P. 12(b)(6) MOTION TO DISMISS AS THE ASSERTED PATENTS 

CLAIM UNPATENTABLE SUBJECT MATTER UNDER 35 U.S.C. § 101

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TABLE OF CONTENTS

I. INTRODUCTION .............................................................................................................. 1

II. STATEMENT OF THE ISSUE.......................................................................................... 4

III. STATEMENT OF FACTS ................................................................................................. 4

A. Background Of The Patents-in-Suit........................................................................ 4

1. The ’195 Patent........................................................................................... 4

2. The ’723 Patent........................................................................................... 6

B. The Asserted Claims............................................................................................... 6

1. The ’723 Patent........................................................................................... 6

2. The ’195 Patent........................................................................................... 8

C. The Claimed Subject Matter Uses Only Routine and Conventional 

Computing Devices and Network Technologies .................................................. 10

D. DT Alleges Infringement by SXM’s Streaming Audio Players Seeking To 

Obtain A Quick Nuisance-Value Payment ........................................................... 13

IV. LEGAL STANDARDS .................................................................................................... 13

A. Motions To Dismiss Under Rule 12(b)(6)............................................................ 13

B. This Court Routinely Dismisses Cases For Patent Ineligibility At The 

Pleading Stage....................................................................................................... 14

C. Claim Construction is Not Required to Conduct the Section 101 Analysis......... 16

V. THE PATENTS-IN-SUIT ARE PATENT-INELIGIBLE UNDER THE TWOSTEP ALICE ANALYSIS ................................................................................................ 16

A. Alice Step One: The Asserted Claims Are Directed To An Abstract Idea ........... 16

1. The Patents-in-Suit Are Directed To The Abstract Idea Of 

Transferring A Digital Media File ............................................................ 17

2. The Patents-in-Suit Fail To Disclose Any New Improvement In 

Computer Or Network Technology .......................................................... 19

B. Alice Step Two: The Claims Lack An Inventive Concept To Transform 

The Abstract Idea Into Patent-Eligible Subject Matter......................................... 21

1. The Patents-in-Suit Describe Only Generic Computing And 

Networking Technologies......................................................................... 21

2. The Result-Oriented Claim Language Cannot Make The Claims 

Patent-Eligible........................................................................................... 23

3. The Dependent Claims Fail To Add Any Inventive Concept................... 24

4. The Claims Are Patent-Ineligible Even When The Elements Are 

Considered As An Ordered Combination................................................. 25

VI. DT’S AMENDED COMPLAINT DOES NOT SAVE THE PATENTS-IN-SUIT 

FROM AN INVALIDITY FINDING UNDER SECTION 101....................................... 27

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VII. CONCLUSION................................................................................................................. 28

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TABLE OF AUTHORITIES

Page(s)

Cases

Aatrix Software v. Green Shades Software,

890 F.3d 1354 (Fed. Cir. 2018) (Moore, J., concurring) .........................................................22

Affinity Labs of Texas, v. Amazon.com,

838 F.3d 1266 (Fed. Cir. 2016)..................................................................................................2

Affinity Labs of Texas v. DIRECTV,

838 F.3d 1253 (Fed. Cir. 2016)................................................................................................17

Alice v. CLS Bank,

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

Ashcroft v. Iqbal,

556 U.S. 662 (2009).................................................................................................................13

Ass’n for Molecular Pathology v. Myriad Genetics,

569 U.S. 576 (2013).................................................................................................................14

Bascom Glob. Internet Servs. v. AT&T Mobility,

827 F.3d 1341 (Fed. Cir. 2016)................................................................................................26

Berkheimer v. HP,

881 F.3d 1360 (Fed. Cir. 2018)................................................................................................15

Bluebonnet Internet Media Servs., v. Pandora Media,

2024 WL 1338940 (Fed. Cir. Mar. 29, 2024)......................................................................1, 28

Bridge and Post v. Verizon Commn’s,

778 F. App’x 882 (Fed. Cir. 2019) ..........................................................................................17

BSG Tech v. Buyseasons,

899 F.3d 1281 (Fed. Cir. 2018)....................................................................................23, 24, 25

Cave Consulting Grp. v. Health Care Serv.,

2017 WL 8809636, at *9 (E.D. Tex. Dec. 22, 2017), report and 

recommendation adopted, 2018 WL 703247 (E.D. Tex. Feb. 5, 2018), aff'd, 

756 F. App'x 997 (Fed. Cir. 2019)...........................................................................................15

ChargePoint v. SemaConnect,

920 F.3d 759 (Fed. Cir. 2019)..................................................................................................23

Clear with Computers v. Dick’s Sporting Goods,

21 F. Supp. 3d 758 (E.D. Tex. 2014)...................................................................................4, 16

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Content Extraction & Transmission v. Wells Fargo Bank, Nat’l Ass’n,

776 F.3d 1343 (Fed. Cir. 2014)..............................................................................................6, 8

Cyberfone Systems v. CNN Interactive Grp.,

558 F. App’x 988 (Fed. Cir. 2014) ..........................................................................................16

Diamond v. Diehr,

450 U.S. 175 (1981).................................................................................................................17

Display Technologies v. Sony Corporation Of America,

Case No. 1-22-cv-00488 (S.D.N.Y.), Dkt. Nos. 18 (motion to dismiss filed 

April 11, 2022).........................................................................................................................13

Elec. Power Grp. v. Alstom,

830 F.3d 1350 (Fed. Cir. 2016)................................................................................................21

Enfish v. Microsoft,

822 F.3d 1327 (Fed. Cir. 2016)................................................................................................19

Free Stream Media v. Alphonso,

996 F.3d 1355 (Fed. Cir. 2021)..............................................................................17, 18, 19, 21

Genetic Techs. Ltd. v. Merial,

818 F.3d 1369 (Fed. Cir. 2016)................................................................................................15

Intell. Ventures II v. Sprint Spectrum,

No. 2:17-CV-00661-JRG, 2018 WL 6804804 (E.D. Tex. Sept. 24, 2018) .............................14

Internet Patents v. Active Network,

790 F.3d 1343 (Fed. Cir. 2015)..........................................................................................14, 17

Interval Licensing v. AOL,

896 F.3d 1335 (Fed. Cir. 2018)....................................................................................17, 20, 24

Mayo Collaborative Servs. v. Prometheus Labs.,

566 U.S. 66 (2012).......................................................................................................14, 15, 21

McRO v. Bandai Namco Games Am.,

837 F.3d 1299 (Fed. Cir. 2016)................................................................................................17

NexusCard v. Kroger,

Case No. 2:15-cv-968-JRG-RSP, 173 F. Supp. 3d 462 (E.D. Tex. 2016), aff’d, 

688 F. App’x 916 (Fed. Cir. 2017) ..........................................................................................15

RecogniCorp v. Nintendo,

855 F.3d 1322 (Fed. Cir. 2017)................................................................................................21

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Repifi Vendor Logistics v. IntelliCentrics,

No. 4:20-CV-448-SDJ, 2021 WL 1196271 (E.D. Tex. Mar. 30, 2021), aff’d, 

2022 WL 794981 (Fed. Cir. Mar. 15, 2022)........................................................................3, 15

SAP Am. v. InvestPic,

898 F.3d 1161 (Fed. Cir. 2018)..........................................................................................14, 15

Semantic Search Techs. v. Aldo U.S.,

425 F. Supp. 3d 758 (E.D. Tex. 2019).....................................................................................19

Simio v. FlexSim Software Prods.,

983 F.3d 1353 (Fed. Cir. 2020)................................................................................................13

Synopsys v. Mentor Graphics,

839 F.3d 1138 (Fed. Cir. 2015)................................................................................................14

In re TLI Commn’s LLC Patent Litig.,

823 F.3d 607 (Fed. Cir. 2016).......................................................................................... passim

Trading Techs. Int’l v. IBG,

921 F.3d 1378 (Fed. Cir. 2019)................................................................................................17

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

874 F.3d 1329 (Fed. Cir. 2017)..........................................................................................17, 25

Ubisoft Entm't, S.A. v. Yousician Oy,

814 Fed. App’x 588 (Fed. Cir. 2020).......................................................................................23

Uniloc USA v. ADP,

772 F. App’x 890 (Fed. Cir. 2019) ..........................................................................................22

Uniloc USA v. Amazon.com,

243 F. Supp. 3d 797 (E.D. Tex. 2017), aff’d, 733 F. App'x 1026 (Fed. Cir. 

2018) ........................................................................................................................................15

W. View Research v. Audi AG,

685 F. App’x 923 (Fed. Cir. 2017) ..........................................................................................24

Statutes

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

Other Authorities

’732 Patent ...............................................................................................................................20, 22

Rule 12(b)(6)....................................................................................................................3, 13, 15, 1

U.S. Patent No. 8,671,195...................................................................................................... passim

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U.S. Patent No. 9,300,723...................................................................................................... passim

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I. INTRODUCTION

The instant action brought by Display Technologies, LLC (“DT”) is the latest example of 

a “nuisance-value” case among the nearly 100 litigations it has filed. As one Court has explained,

DT’s “goal” is to pursue a “‘nuisance-value’ settlement” because its “business model does not 

involve actual litigation.” See Aug. 5, 2021 Order in Case No. 1:20-cv-00258-RGA (D. Del.) at 2. 

This is apparent from DT’s habit of voluntarily dismissing litigations soon after (sometimes, mere 

days after) substantive motions, such as those like the instant motion, are filed. DT’s actions in 

this regard are indicative of the weakness of its asserted patents. But DT has now encountered a 

Defendant in Sirius XM Radio Inc. (“SXM”) seeking its day in Court rather than pay DT’s ransom. 

Highlighting its unwillingness to litigate the substantive issues in this case is Plaintiff's 

filing of an Amended Complaint in response to SXM's Motion to Dismiss (Dkt. No. 13) that fails 

to address the key substantive reasons for why the Patents-in-Suit are patent ineligible. Indeed, 

the Amended Complaint asserts conclusory allegations that the Patents-in-Suit are not abstract and 

have an inventive concept without any substantive explanation as to why. See Dkt. 18, ¶¶ 15-16.

As the Federal Circuit has repeatedly stated, and just recently in Bluebonnet Internet Media 

Services v. Pandora Media, such “conclusory allegations” in a pleading cannot avoid a finding of 

patent ineligibility on a motion to dismiss. Bluebonnet, 2024 WL 1338940, at *2 (Fed. Cir. Mar. 

29, 2024) (explaining that the district court need not “accept as true allegations in the complaint 

that are conclusory, state legal conclusions, or contradict the patent itself” and that “the sheer 

number of conventional computer components employed, without more, does not constitute an 

inventive concept”).

DT alleges that SXM infringes two patents, U.S. Patent No. 8,671,195 (the “’195 Patent”) 

and U.S. Patent No. 9,300,723 (the “’723 Patent”) (collectively, the “Patents-in-Suit”), which 

broadly claim methods for transferring digital media files using nothing more than routine and 

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conventional computing and networking technologies. See Dkt. No. 18 (“Amended Complaint”), 

¶ 4. These patents are classic examples of patents that courts in this and other districts, as well as 

the Federal Circuit, routinely hold invalid under 35 U.S.C. § 101 as being directed to an abstract 

idea without the requisite “inventive concept” to transform the claims into patent-eligible subject 

matter. The Patents-in-Suit are directed to a result—transferring a digital media file via a 

communication link that is structured to bypass a security measure on the receiving device—

without describing how to achieve that result. See, e.g., ’723 Patent, Claim 1; ’195 Patent, Claims 

1, 17, 23. 

More specifically, the Patents-in-Suit require a “communication link... structured to 

bypass at least one media terminal security measure.” Id. But, critically, the Asserted Claims do 

not require, and the specifications of the Patents-in-Suit do not describe, any specific software, 

circuitry, control logic, parameters or other technical mechanism for how to implement the claimed 

result of “bypassing” a “security measure.” See, e.g., ’723 Patent, Claim 1; id. at 1:53-63. Instead, 

the Patents-in-Suit describe only the aspirational nature of the claims, such as that it would be 

“advantageous” and “beneficial” if the claimed transfer “protocol includes a communication link 

structured to bypass at least one or more security measures.” Id. at 1:53-63. The Patents-in-Suit 

therefore leave it entirely to the reader to fill this gap on how to implement the claimed invention. 

But the Federal Circuit has explained that patent claims, like the Asserted Claims, that are directed 

only to a “desired function or outcome” without regard to how to implement it are directed to an 

unpatentable “abstract idea.” Affinity Labs of Texas, v. Amazon.com, 838 F.3d 1266, 1268-69 (Fed. 

Cir. 2016). Thus, they are patent-ineligible. 

While claims directed to an abstract idea, such as transferring a data file between two 

devices, could be patent-eligible if they contain an “inventive concept” that transforms the claims 

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into a patent-eligible application of that idea, that is not the case here. Alice v. CLS Bank, 573 U.S. 

208, 217-18 (2014). Here, the Patents-in-Suit fail this test because they describe and claim only 

generic and conventional computing and networking technologies, behaving exactly as one would 

expect them to within computer systems. Even the order of the claim elements is not inventive as 

they do not describe any surprising result or behavior, or any improvement or unexpected feature 

arising from the purported inventions. 

For example, the claims describe generic “media systems” and “communication protocols” 

in which a generic “media terminal” connects to a generic “media node” via a generic “computer 

network” to transfer a generic “media file.” ’723 Patent, Claim 1; ’195 Patent, Claims 1, 17, 23. 

The specifications likewise confirm the generic, routine, and commonplace nature of the claims—

“The present disclosure is generally related to a digital media communication protocol structured 

to facilitate transferring and/or transmitting one or more digital media files to and/or from a media 

terminal and a media node via at least one interactive computer network.” ’723 Patent, 1:15-20; 

see also ’195 Patent, 1:6-11. The aspirational nature of the claimed result, combined with the 

generic and conventional components recited in the claims (both individually and as an ordered 

combination), fail the two-part test for eligibility under Alice. 573 U.S. at 217-18, 221-24 (finding 

claims that “merely require generic computer implementation... fail to transform that abstract idea 

into a patent-eligible invention”). At most, the Patents-in-Suit describe performing an idea on a 

computer rather than describing how to improve that computer’s operation.

Federal courts, including courts in this District, regularly hold these kinds of broad patents 

invalid under Section 101 at the motion to dismiss stage. See, e.g., Repifi Vendor Logistics v. 

IntelliCentrics, No. 4:20-CV-448-SDJ, 2021 WL 1196271, at *9 (E.D. Tex. Mar. 30, 2021), aff’d, 

2022 WL 794981 (Fed. Cir. Mar. 15, 2022) (granting Rule 12(b)(6) motion to dismiss where the 

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asserted patent is directed to an abstract idea and is invalid under 35 U.S.C. § 101). While DT has 

generically indicated that claim construction may be needed to resolve this motion, this Court can 

review the Patents-in-Suit for subject matter eligibility now and find the Patents-in-Suit invalid as 

being directed to abstract ideas without the requisite inventive concept to transform the claims into 

patent-eligible ones. Indeed, it is “not strictly necessary” to construe the claims to evaluate them 

for subject matter eligibility at this stage. Clear with Computers v. Dick’s Sporting Goods, 21 F. 

Supp. 3d 758, 764 (E.D. Tex. 2014). 

As explained more fully below, SXM respectfully requests that this Court dispose of this 

case now, pre-Markman, because the Patents-in-Suit are invalid, and dismiss DT’s “nuisancevalue” claims with prejudice.

II. STATEMENT OF THE ISSUE

Whether the claims of DT’s ’195 and ’723 Patents are invalid under 35 U.S.C. § 101 for 

lack of patent-eligible subject matter because they are directed to the abstract idea of transferring 

a digital file using only routine, generic, and conventional computing and networking technologies 

that work as expected according to their normal use and add nothing inventive?

III. STATEMENT OF FACTS

A. Background Of The Patents-in-Suit

DT alleges that SXM infringes the Patents-in-Suit based on two products identified in the 

Amended Complaint. See Amended Complaint, ¶ 4. The Patents-in-Suit are summarized below. 

1. The ’195 Patent

The ’195 Patent issued on March 11, 2014 from U.S. Patent App. No. 11/999,570, filed 

December 7, 2007, and is entitled “Digital Media Communication Protocol.”

The ’195 Patent discloses that portable devices (e.g., smartphones, MP3 players, or PDA) 

are capable of storing digital media files (such as photo, video, or music files) in memory on the 

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device. ’195 Patent, 1:13-25. The patent states that many of those devices “include relatively small 

display screens” and, as a result, users “may desire to share the digital media files and/or transfer, 

display, or play the files on a computer or other media device . . . [with a] better quality screen, or 

having higher quality speakers . . . .” Id., 1:26-36. 

The ’195 Patent asserts that it would be “advantageous” and “beneficial” if a media system 

were “structured to facilitate transferring or transmitting one or more digital media files between 

two or more media devices” in order “to display, save, edit, manipulate, and/or transfer the one or 

more digital media files” on the receiving device. Id., 1:40-56. But the ’195 Patent does not

describe how the components of the media system are “structured to facilitate” the desired result 

of transferring a digital media file for display other than by using well-known generic components

or broad all-encompassing language with no concrete mechanism for doing so. Id.

For example, the ’195 Patent states that the “media terminal” required by the claims “may 

include a desktop computer, however any device structured to facilitate the practice of the present 

system in the intended fashion may be utilized, including but in no way limited to a laptop or 

notebook computer, PDA, video game console, mobile telephone, etc.” Id., 2:64-3:2 (emphasis 

added). Similarly, the “media node” required by the claims can be “a portable device such as a 

cellular or mobile telephone, PDA, portable mp3 player, laptop or notebook computer, or any 

other digital media device structured to facilitate the practice of the present invention...” Id., 3:3-

11 (emphasis added). The “computer network” required by the claims likewise can be any of “a 

Local Area Network (“LAN”), Wide Area Network (“WAN”), Private Area Network (“PAN”), 

peer-to-peer network, Bluetooth network, etc.,” or one that “includes access to the World Wide 

Web, for example via the Internet.” Id., 3:20-30. Notably, the patent does not claim to have 

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invented any of these well-known components but instead simply discloses that the claims may be 

performed using these components or on such components. 

2. The ’723 Patent

The ’723 Patent issued March 29, 2016 from U.S. Patent App. No. 13/494,097, filed June 

12, 2012, and is entitled, “Enabling Social Interactive Wireless Communications.” The ’723 Patent 

is a continuation-in-part of the ’195 Patent, and describes and claims essentially the same subject 

matter performed using many of the same generic computing and networking components.

The ’723 Patent specification is virtually identical to the ’195 Patent specification and does 

not add any new disclosure other than that the purported inventions are applicable to “mobile 

telephones,” a “media system of a vehicle (e.g., an automobile),” or other “wireless mobile 

device.” ’723 Patent, 1:25-26, 2:47-48, 7:1-3; see also Ex. A (redline comparison of the 

specifications of the Patents-in-Suit).

B. The Asserted Claims

DT alleges that two SXM streaming audio players, GDI-SXBR2 and GDI-SXBR3, infringe

claims 1, 3, 5, 6, 8, and 9 of the ’723 Patent and claims 1, 2, 3, 13, 17, 18, 19, and 23 of the ’195 

Patent (the “Asserted Claims”). See Amended Complaint at ¶ 4. 

1. The ’723 Patent 

Claim 1 of the ’723 Patent, recited below, is the only independent claim asserted from the 

’723 Patent and is representative:

1

1. A media system, comprising:

[a] at least one media terminal disposed in an accessible relation to at least one interactive 

computer network,

1 For the purposes of this motion, Claim 1 of the ’723 Patent is representative of the other Asserted 

Claims from the ’723 Patent, all of which are dependent claims and are “substantially similar and 

linked to the same abstract idea.” Content Extraction & Transmission v. Wells Fargo Bank, Nat’l 

Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). 

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[b] a wireless range structured to permit authorized access to said at least one interactive 

computer network,

[c] at least one media node disposable within said wireless range, wherein said at least one 

media node is detectable by said at least one media terminal,

[d] at least one digital media file initially disposed on at least one of said at least one media 

terminal or said at least one media node, said at least one media terminal being structured 

to detect said at least one media node disposed within said wireless range,

[e] a communication link structured to dispose said at least one media terminal and said at 

least one media node in a communicative relation with one another via said at least one 

interactive computer network,

[f] said communication link being initiated by said at least one media terminal,

[g] said at least one media node and said at least one media terminal being structured to 

transmit said at least one digital media file therebetween via said communication link, and

[h] said communication link is structured to bypass at least one media terminal security 

measure for a limited permissible use of the communication link by the media node to only 

transferring the at least one digital media file to, and displaying the at least one digital 

media file on, the at least one media terminal.

Claim 1 recites a “media system,” but not any specific technology or device. Rather, all 

the components and methods recited in Claim 1 are to generic computing and networking 

technologies, as the specification confirms. See, e.g., ’723 Patent, 2:49-57 (listing components of 

“media node”); 2:36-48, 4:3-16 (listing components of “media terminal”); 2:58-3:15 (listing 

components of “communication link”); 3:47-50 (listing components of “digital media file”). 

The only remaining element of Claim 1 is the final element [h], which claims the abstract 

idea of a “communication link” that is “structured” in some undisclosed way “to bypass at least 

one media terminal security measure for a limited permissible use of . . . transferring . . . and 

displaying” the conventional “digital media file” on the conventional “media terminal.” Id., 7:65-

8:3. Critically, the ’723 Patent does not disclose or describe how to achieve the claimed result of 

bypassing the conventional security measures, and the patent itself is devoid of any specific 

mechanism, technology, or advance for achieving the abstract idea. See generally id. For example, 

the “at least one media terminal security measure” to be bypassed can include any “networking 

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device security measure,” such as “a firewall, and/or passwords/keys such as, . . . Wi-Fi Protected 

Access keys, and/or Wireless Application Protocol keys.” Id., 3:27-38. There is no disclosure 

about how to bypass any of the firewalls, passwords, keys, Wi-Fi Protected Access keys, or 

Wireless Application Protocol keys. Id. All the ’723 Patent provides is that “it would be 

beneficial” to bypass a security measure. Id., 1:58-64, 5:17-44. 

DT also asserts dependent Claims 3, 5, 6, 8, and 9, but these claims similarly recite only 

broad, generic, and conventional computing technologies and features. Specifically, that the 

“media terminal completely bypasses the security measure” (claim 3), that the media terminal is 

“an audio system” (claim 5), that the communication is a “peer-to-peer connection, bluetooth 

connection, and a WiFi connection” (claim 6), that the digital media file is “present[ed] . . . on a 

display” (claim 8), and that the digital media file is “provided by the . . . media node” (claim 9) all 

encompass generic well-known components. Absent in the ’723 Patent claims is any specific 

mechanism for how to achieve the claimed result or any unconventional improvement in 

computing technology.

2. The ’195 Patent

DT also asserts three independent claims from the ’195 Patent, Claims 1, 17, and 23. Claim 

1 is representative and is reproduced below.2

1. A digital media communication protocol, comprising:

[a] at least one media terminal disposed in an accessible relation to at least one interactive 

computer network,

[b] a wireless range structured to permit authorized access to said at least one interactive 

computer network,

2 For the purposes of this motion, Claim 1 of the ’195 Patent is representative of the other Asserted 

Claims from the ’195 Patent, which are “substantially similar and linked to the same abstract idea.” 

Content Extraction, 776 F.3d at 1348. 

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[c] at least one media node disposable within said wireless range, wherein said at least one 

media node is detectable by said at least one media terminal,

[d] at least one digital media file initially disposed on at least one of said at least one media 

terminal or said at least one media node, said at least one media terminal being structured 

to detect said at least one media node disposed within said wireless range,

[e] a communication link structured to dispose said at least one media terminal and said at 

least one media node in a communicative relation with one another via said at least one 

interactive computer network,

[f] said communication link being initiated by said at least one media terminal,

[g] said at least one media node and said at least one media terminal being structured to 

transmit said at least one digital media file therebetween via said communication link, and

[h] said communication link is structured to bypass at least one media terminal security 

measure.

Claim 1 of the ’195 Patent recites a “digital media communication protocol,” but, like the 

claims of the ’723 Patent, does not describe any specific protocol. Indeed, every component in 

Claim 1 is generic, conventional and ubiquitous. See ’195 Patent, 3:3-11 (listing components of 

“media node”); 2:54-65 (listing components of “media terminal”); 3:12-35 (listing components of 

“communication link”); 3:65-43 (listing types of “digital media file”). 

Claim 1 also contains the element that “said communication link is structured to bypass at 

least one media terminal security measure,” the same as element [h] above. Id., 8:10-14. Like the 

’723 Patent, however, the ’195 Patent does not explain, disclose, or describe how the 

communication link is “structured” to “bypass at least one media terminal security measure.” Id.

The ’195 Patent, like the ’723 Patent, merely provides the aspirational description that “it would 

be advantageous if the digital media communication protocol of the present specification is 

structured to facilitate transferring or transmitting one or more digital media files between two or 

more media devices.” Id., 1:40-45. The ’195 Patent leaves it to the reader to determine how to 

achieve this result, and lacks any specific mechanism, technology, or advance for achieving this 

abstract idea—the same as the ‘723 Patent. According to the specification, the “media terminal 

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security measure” to be bypassed in the ’195 Patent is exactly the same as the commonplace 

“security measures” described in the ’723. Id., 3:47-57 (describing routine and conventional 

security measures such as “a firewall, and/or passwords/keys such as, . . . Wi-Fi Protected Access 

keys, and/or Wireless Application Protocol keys”).

DT also asserts dependent Claims 2, 3, 13, 18, and 19. But like the dependent claims from 

the ’723 Patent, these claims also recite broad, generic, and conventional computing technologies 

and features. Specifically, that the “digital media file is initially disposed on said at least one 

media node,” (claim 2), that the media terminal is structured to display the digital media file (claim 

3), that the “communication link” is structured to bypass a “networking device security measure” 

(claim 13), that the “wireless range [is] structured to permit authorized access” to an interactive 

computer network (claim 18), and that the “media node” is “detectable by ... one media terminal” 

(claim 19). These are all generic, conventional, and well-known. Like the ’723 Patent, the ’195 

Patent claims fail to teach any specific mechanism for achieving the claimed abstract idea.

C. The Claimed Subject Matter Uses Only Routine and Conventional 

Computing Devices and Network Technologies

The Patents-in-Suit describe commonplace features that are implemented using broad, 

generic, and conventional computing devices and technology. Nothing in the Asserted Claims or 

in the specifications limits the claims to any specific advance or improvement. And nothing in 

the claims or specifications limits the Asserted Claims to any specific technology for transmitting 

video or audio data (the “digital media file”) from one device (the “media node”) to another (the 

“media terminal”), over Bluetooth or WiFi data channels (the “communication link”) of a network 

(the “interactive communication network”) that is “structured to bypass” at least one password or 

key (the “media terminal security measure”). See, e.g., ’723 Patent, 7:42-8:3.

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Figure 4 in the ’723 Patent (shown below) is reproduced in both patents and is 

representative of all the generic and conventional components of the purported inventions claimed 

in the Patents-in-Suit.

’723 Patent, 2:20-22, 2:31-33, 6:52-54, Fig. 4; ’195 Patent, 2:46-48, 2:54-56, 

7:4-7, Fig. 4.

As the specification explains with respect to Figure 4, “media node 30” at step 102 (’723 

Patent, 7:12-13) can be “any . . . digital media device structured to facilitate the practice of the 

present system,” including “a portable device such as a cellular or mobile telephone, PDA, portable 

mp3 player, laptop or notebook computer,” or “a more stationary device or structure such as, for 

example, a desktop computer.” As the specifications concede, the described “media node” are all 

commonplace devices routinely and regularly used in the field. Id., 2:49-57.

The “media terminal 20” at step 104 (Id., 7:16-18) can be “any device structured to

facilitate the practice of the present system . . . including but in no way limited to a desktop 

computer, laptop or notebook computer, PDA, video game console, mobile telephone, media 

system of a vehicle (e.g., an automobile), etc.,” that is “structured to detect and/or identify the 

media node 30” using parameters such as “a device name, model/serial number, Media Access 

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Control (‘MAC’) address, or Internet Protocol (‘IP’) address.” Id. at 2:36-48, 4:3-16. The 

specifications concede that these “media terminal” options described are commonplace and 

generic. Id., 1:60-2:3; see also ’195 Patent, 2:63-3:2.

The “communication link 70” via an “interactive computer network 40” established by the 

conventional “media terminal 20” at steps 106 and 108 (’723 Patent, 7:18-25) can be “one or more 

home, office, private, limited, or closed interactive computer networks 40 at least partially defined 

by one or more networking devices 42,” including any “Local Area Network (‘LAN’), Wide Area 

Network (‘WAN’), Private Area Network (‘PAN’), peer-to-peer network, near field 

communication (‘NFC’), Bluetooth network, etc.” communicating via conventional and

ubiquitous networking protocols. Id., 2:58-3:15. All of these components are commonplace and 

generic as the patents confirm. Id.; see also ’195 Patent, 3:19-35.

The “digital media file 60” transmitted from the conventional “media node 30” to the 

conventional “media terminal 20” via the conventional “communication link 70” at step 110 (’723 

Patent, 7:25-34) “may include virtually any electronic file or data such as a digital photograph, 

video, audio, animation, text, or any other electronic document or object.” Id., 3:47-50. The 

specifications concede that all of these components are commonplace and generic. Id., 3:47-50; 

see also ’195 Patent, 3:65-4:3.

The only remaining non-conventional feature in the claims is the abstract idea of a 

“communication link” that is “structured,” in some way not disclosed by the Patents-in-Suit, “to 

bypass at least one media terminal security measure” for transferring and displaying a generic 

“digital media file” on a conventional “media terminal.” See ’723 Patent, 7:65-8:3; see also ’195 

Patent, 8:14-15. But the specifications fail to disclose or describe how to generate a 

“communication link” that can be “structured” to “bypass at least one media terminal security 

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measure.” ’723 Patent, 7:65-8:3; see also ’195 Patent, 8:14-15; see generally Patents-in-Suit. This 

element is not based on any specific technological advance or invention, but instead is merely an 

abstract idea attempting to claim any mechanism of performing this result that someone might be 

able to figure out.

D. DT Alleges Infringement by SXM’s Streaming Audio Players Seeking To 

Obtain A Quick Nuisance-Value Payment

DT has filed nearly 100 different lawsuits in various district courts, with the goal of 

extracting settlement for less than it would cost defendants to prove that the Patents-in-Suit are 

invalid or not infringed. See Ex. B (DT Litigations); see also Aug. 5, 2021 Order in Case No. 1:20-

cv-00258-RGA (D. Del.) at 2-3. None of DT’s litigations asserting the Patents-in-Suit appear to 

have progressed beyond the initial stages of fact discovery. See Ex. B.

3

Now, it is SXM’s turn. But SXM is unwilling to fall in line with the stream of defendants 

paying “nuisance-value” amounts and instead respectfully seeks to have this Court find the 

Patents-in-Suit invalid under 35 U.S.C. § 101.

IV. LEGAL STANDARDS

A. Motions To Dismiss Under Rule 12(b)(6)

To survive a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), “a 

complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is 

plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The Court accepts wellpleaded factual allegations but disregards “conclusory statements” and legal conclusions. Simio v. 

3 For example, in Display Technologies v. Sony Corporation Of America, the case was dismissed 

just two days after the defendant filed its motion to dismiss for unpatentable subject matter. See 

Case No. 1-22-cv-00488 (S.D.N.Y.), Dkt. Nos. 18 (motion to dismiss filed April 11, 2022), 21 

(notice of dismissal filed April 13, 2022). See also Display Technologies v. Canon USA, Case No. 

2-17-cv-00192 (E.D. Tex.), Dkt. Nos. 18 (motion to dismiss filed July 14, 2017), 26 (notice of 

voluntary dismissal filed Aug. 4, 2017).

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FlexSim Software Prods., 983 F.3d 1353, 1365 (Fed. Cir. 2020); see also Intell. Ventures II v. 

Sprint Spectrum, No. 2:17-CV-00661-JRG, 2018 WL 6804804, at *1 (E.D. Tex. Sept. 24, 2018) 

(“[T]he Court need not accept as true legal conclusions couched as factual allegations.”). 

B. This Court Routinely Dismisses Cases For Patent Ineligibility At The 

Pleading Stage

35 U.S.C. § 101 prescribes that “[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 therefor . . . .” In Alice v. CLS Bank, the Supreme Court explained 

that Section 101 “contains an important implicit exception: Laws of nature, natural phenomena, 

and abstract ideas are not patentable.” 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular 

Pathology v. Myriad Genetics, 569 U.S. 576, 589 (2013)). These “basic tools of scientific and 

technological work” are subject matter that is “free to all men and reserved exclusively to none.” 

Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66, 71 (2012). Even if patent claims 

directed to laws of nature, natural phenomena, or abstract ideas meet all the other requirements for 

patentability, and are “new” and “inventive,” they are still ineligible for patenting. SAP Am. v. 

InvestPic, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (citing Synopsys v. Mentor Graphics, 839 F.3d 

1138, 1151 (Fed. Cir. 2015) (“[A] claim for a new abstract idea is still an abstract idea.”).

The Supreme Court outlined a two-part test to distinguish patents that “claim laws of 

nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of 

those concepts.” Alice, 573 U.S. at 217. At Step One, “the claims are considered in their entirety 

to ascertain whether their character as a whole is directed to excluded subject matter.” Internet 

Patents v. Active Network, 790 F.3d 1343, 1346-48 (Fed. Cir. 2015). If the claims pass Step One, 

courts then proceed to Step Two to “consider the elements of each claim both individually and ‘as 

an ordered combination’ to determine whether the additional elements ‘transform the nature of the 

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claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-

79)). Step Two is a “search for an ‘inventive concept’—i.e., en 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. 

This analysis “may be, and frequently has been, resolved on a Rule 12(b)(6) or (c) 

motion....” SAP, 898 F.3d at 1166. The Federal Circuit has “repeatedly recognized that in many 

cases it is possible and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 

12(b)(6) motion.” Genetic Techs. Ltd. v. Merial, 818 F.3d 1369, 1373-74 (Fed. Cir. 2016) (citing 

cases); see also Berkheimer v. HP, 881 F.3d 1360, 1368 (Fed. Cir. 2018) (explaining that patent 

eligibility can be resolved on a motion to dismiss).

Consistent with the Federal Circuit’s guidance, Courts in this district routinely grant 

12(b)(6) motions to dismiss where, as here, the patent asserted is invalid under § 101 as being 

directed to patent-ineligible subject matter as evaluated under Alice. See, e.g., Repifi Vendor 

Logistics v. IntelliCentrics, 2021 WL 1196271 at *9 (E.D. Tex. Mar. 30, 2021), aff’d, 2022 WL 

794981 (Fed. Cir. Mar. 15, 2022) (granting defendants’ Rule 12(b)(6) motion where claims are 

invalid under 35 U.S.C. § 101). See also NexusCard v. Kroger, Case No. 2:15-cv-968-JRG-RSP, 

173 F. Supp. 3d 462, 469 (E.D. Tex. 2016), aff’d, 688 F. App’x 916 (Fed. Cir. 2017) (affirming 

motion to dismiss where patent was directed at an abstract idea and did not add an inventive step); 

Uniloc USA v. Amazon.com, 243 F. Supp. 3d 797, 811 (E.D. Tex. 2017), aff’d, 733 F. App'x 1026 

(Fed. Cir. 2018) (granting motion to dismiss where asserted patent was directed to ineligible 

subject matter); Cave Consulting Grp. v. Health Care Serv., 2017 WL 8809636, at *9 (E.D. Tex. 

Dec. 22, 2017), report and recommendation adopted, 2018 WL 703247 (E.D. Tex. Feb. 5, 2018), 

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aff’d, 756 F. App’x 997 (Fed. Cir. 2019) (granting motion to dismiss where asserted patent was 

invalid for failure to recite patent-eligible subject matter under Section 101).

C. Claim Construction is Not Required to Conduct the Section 101 Analysis

Claim construction is “not strictly necessary” to evaluate claims under Section 101 at the 

12(b)(6) stage. Clear with Computers v. Dick’s Sporting Goods, 21 F. Supp. 3d 758, 764 (E.D. 

Tex. 2014); see also Alice, 573 U.S. at 216 (resolving section 101 analysis without performing 

claim construction). DT has generically indicated that it opposes arguing subject matter eligibility 

before claim construction, but “[t]here is no requirement that the district court engage in claim 

construction before deciding § 101 eligibility.” Cyberfone Systems v. CNN Interactive Grp., 558 

F. App’x 988, 991 n.1 (Fed. Cir. 2014). And indeed, as explained below, the claims require only 

commonplace, routine, and generic computing and networking technologies behaving precisely as 

expected in the course of normal, everyday usage. Accordingly, SXM asks this Court to dispose 

of this case at the pleading stage.

V. THE PATENTS-IN-SUIT ARE PATENT-INELIGIBLE UNDER THE TWO-STEP 

ALICE ANALYSIS

The Patents-in-Suit are invalid under § 101 as a matter of law. Under the two-part test 

outlined in Alice, the Asserted Claims are directed to abstract ideas for transferring digital media 

files for display. The claims, when considered element-by-element and as an ordered combination, 

fail to provide the requisite “inventive concept” that transforms the abstract idea into a patenteligible one. Accordingly, the claims are not patent-eligible, and SXM requests that DT’s case be 

dismissed with prejudice.

A. Alice Step One: The Asserted Claims Are Directed To An Abstract Idea 

The first step of the Alice inquiry requires that the court consider the claims “in their 

entirety to ascertain whether their character as a whole is directed to excluded subject matter.” 

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Internet Patents, 790 F.3d at 1346. Courts examine the “focus of the claimed advance over the 

prior art” to determine what purported invention the claims are “directed to.” Trading Techs. Int’l 

v. IBG, 921 F.3d 1378, 1384 (Fed. Cir. 2019); Bridge and Post v. Verizon Commn’s, 778 F. App’x 

882, 887 (Fed. Cir. 2019) (analyzing the specification’s “description of ‘the problem facing the 

inventor’” to determine what claims were directed to). Where the claimed advance is a desired 

“result or effect,” as opposed to a “specific means” of achieving the result, the claims are directed 

to an unpatentable abstract idea. Two-Way Media Ltd. v. Comcast Cable Commc'ns, 874 F.3d 1329, 

1337 (Fed. Cir. 2017); Interval Licensing v. AOL, 896 F.3d 1335, 1344-46 (Fed. Cir. 2018) (claims 

that include “broad, result-oriented” language, “without any limitation on how to produce that 

result,” are directed to a “patent-ineligible concept”).

1. The Patents-in-Suit Are Directed To The Abstract Idea Of 

Transferring A Digital Media File 

As explained below, the Patents-in-Suit are directed to abstract ideas themselves without 

identifying how to implement or produce the claimed result. See McRO v. Bandai Namco Games 

Am., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“A patent may issue for the means or method of 

producing a certain result, or effect, and not for the result or effect produced.”) (quoting Diamond 

v. Diehr, 450 U.S. 175, 182 n.7 (1981)). 

In particular, federal courts look to the treatment of similar claims to determine if the claims 

are directed to an abstract idea. See Affinity Labs of Texas v. DIRECTV, 838 F.3d 1253, 1260 (Fed. 

Cir. 2016) (comparing asserted claims to claims in “several of this court’s recent cases”). The 

Federal Circuit has consistently held that patents (like those here) broadly claiming, in functional 

terms, transmission of digital media from one device to another over a computer network to be 

directed to an abstract idea where the patent fails to identify how the result is achieved. See Free 

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Stream Media v. Alphonso, 996 F.3d 1355, 1358-59, 1366 (Fed. Cir. 2021) (finding “nothing 

inventive disclosed in the claims that permits communications that were previously not possible”).

Free Stream Media v. Alphonso is illustrative. There, the Federal Circuit found claims to 

be “abstract” where they were directed to “bypassing” a client device’s sandbox security features 

because “the asserted claims do not at all describe how that result is achieved.” Free Stream, 996 

F.3d at 1363-64 (emphasis added). The Federal Circuit explained that the Alice Step One inquiry 

turns on 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.” Id. Claims that fail “to recite a practical way of applying 

an underlying idea” cannot avoid ineligibility. Id.

Like the claims in Free Stream Media, the Asserted Claims fail to include any limitation 

“relating to overcoming the supposed communication barriers between” the mobile devices during 

the file transfer. Id.; see also ’723 Patent, 7:65-8:3; ’195 Patent, 8:14-15. While all of the Asserted 

Claims require a “communication link ... structured to bypass at least one media terminal security 

measure,” the Asserted Claims “do not at all describe how that result is achieved.” Free Stream, 

996 F.3d at 1363-64. Nor do they recite “an improvement in computer functionality.” Id. Indeed, 

the Federal Circuit explained that, “[a]ll that is required at the eligibility phase is that the claim 

itself must identify how that functional result is achieved by limiting the claim scope to structures 

specified at some level of concreteness, in the case of a product claim, or to concrete action, in 

the case of a method claim.” Id. (emphasis added). But the Asserted Claims cannot meet even that 

threshold for eligibility. The claims here are even less specific than those found in Free Stream

where the specification actually provided mechanisms to bypass security controls, and the claims 

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were still found invalid as patent-ineligible. Here, the specifications of the Patents-in-Suit do not 

even do that much by failing entirely to describe how to achieve the claimed result. 

Even if DT’s “claimed advance” is in the “ability” to bypass at least one media terminal 

security measure in the file transfer, that is simply nothing more “than a mere use of a computer 

as a tool” on which to perform the recited function, not an advancement. Free Stream, 996 F.3d at 

1364-65. Claims, like the Asserted Claims here, “regarding computer applications must be 

directed to an improvement in the capabilities of computer technology as opposed to simply 

providing for the use of a computer to perform ... tasks for which a computer is used in its ordinary 

capacity.” Semantic Search Techs. v. Aldo U.S., 425 F. Supp. 3d 758, 775 (E.D. Tex. 2019); see 

also Enfish v. Microsoft, 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) (“[T]he first step in the Alice

inquiry in this case asks whether the focus of the claims is on the specific asserted improvement 

in computer capabilities ... or, instead, on a process that qualifies as an ‘abstract idea’ for which 

computers are invoked merely as a tool.”). Like the claims in Free Stream, “the alleged 

technological improvement does nothing more than implement a computer to achieve the abstract 

idea” of bypassing at least one media terminal security measure and do not “explain how that result 

improves the operability of these devices.” Free Stream, 996 F.3d at 1365 (emphasis added).4

2. The Patents-in-Suit Fail To Disclose Any New Improvement In 

Computer Or Network Technology

While the foregoing is sufficient to show the abstract nature of the Patents-in-Suit, there is 

more. Neither the Asserted Claims nor the specifications of the Patents-in-Suit disclose any new 

4 The Patents-in-Suit only recite that “it would be beneficial if the digital media communication 

protocol includes a communication link structured to bypass at least one or more security 

measures,” and list various generic “security measures” (e.g., “a password and/or firewall, 

employed by the interactive computer network, the corresponding networking devices, and/or the 

particular media devices themselves”). But, as noted above, the Patents-in-Suit do not disclose or 

describe (and the claims do not require) any specific way to achieve this result “beyond ... using 

generic processes and machinery.” Free Stream, 996 F.3d at 1365.

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computer, any new computer network or “a new physical combination of the two.” In re TLI 

Commn’s LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (emphasis added). In TLI 

Communications, the Federal Circuit found patent claims ineligible under § 101 where the 

specification failed to disclose “a new telephone, a new server, or a new physical combination of 

the two,” and instead acknowledged that “existing telephone systems could transmit pictures, 

audio, and motion pictures’” to a “server . . . performing generic computer functions such as 

storing, receiving, and extracting data.” Id. In its Step One analysis, the Federal Circuit explained 

that this confirmed that the patentee’s focus was not on an improvement in existing telephone units 

or servers to provide “a solution to a technological problem,” but rather the focus was on “the 

abstract idea of classifying and storing digital images in an organized manner” being performed 

on a conventional computer. Id. at 612-13 (“[The claims] are directed to the use of conventional 

or generic technology in a nascent but well-known environment, without any claim that the 

invention reflects an inventive solution to any problem presented by combining the two.”). That is 

the case here.

The Asserted Claims do not recite, nor do the specifications of the Patents-in-Suit describe, 

any new “solution to a technological problem.” Id. The Patents-in-Suit leverage only conventional 

and commonplace computing devices and networking technologies, and are focused on the abstract 

idea of transmitting a generic digital file via a “communication link [that] is structured to bypass 

at least one media terminal security measure.” See, e.g., ’732 Patent, Claim 1; See Interval 

Licensing, 896 F.3d at 1343 (finding claims abstract because they were “drafted in such a resultoriented way that they amounted to encompassing the principle in the abstract, no matter how 

implemented”). The Patents-in-Suit do not create (or describe) any new communication system, 

do not create (or describe) any new component of a communication system, and do not create (or 

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describe) any new way to transfer data or digital files in a communication system. Just like the 

claims in Free Stream and TLI that were found to be patent-ineligible, the Asserted Claims in this 

case also run afoul of § 101 for being directed to an abstract idea. 

B. Alice Step Two: The Claims Lack An Inventive Concept To Transform The 

Abstract Idea Into Patent-Eligible Subject Matter

While the Patents-in-Suit represent classic examples of unpatentable abstract ideas at Step 

One, the Federal Circuit has explained that the inquiry should continue to Step Two of the Alice 

test. Under Step Two, the Court must “consider the elements of each claim both individually and 

as an ordered combination” to determine whether they provide an “inventive concept” sufficient 

to ensure that the patent in practice “amounts to significantly more than a patent upon the [abstract 

idea] itself.” Alice, 573 U.S. at 217-18 (quoting Mayo Collaborative Servs. v. Prometheus Lab’ys, 

566 U.S. 66, 72-73, 79); TLI Commc’ns, 823 F.3d at 613 (analyzing claims both individually and 

as an ordered combination). The Federal Circuit has explained that the “inventive concept” “must 

be evident in the claims,” not imported from the specification. RecogniCorp v. Nintendo, 855 F.3d 

1322, 1327 (Fed. Cir. 2017) (emphasis added). “[L]imiting the claims to the particular 

technological environment... is, without more, insufficient to transform them into patent-eligible 

applications of the abstract idea at their core.” Elec. Power Grp. v. Alstom, 830 F.3d 1350, 1354 

(Fed. Cir. 2016). Here too, the claims of the Patents-in-Suit fail the Alice Step Two inquiry because 

the well-known, generic and conventional devices and technologies, behaving precisely as 

expected according to their normal use, do not provide the necessary “inventive concept” to 

transform the claims, whether evaluated individually or as an ordered combination.

1. The Patents-in-Suit Describe Only Generic Computing And 

Networking Technologies

At the outset, the Patents-in-Suit describe the claim elements themselves as generic and 

conventional computing and networking technologies that were well-known and routinely used by 

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individuals in this field. See ’723 Patent at 2:31-47, 2:49-57, 2:58-3:15, 3:27-38, 3:39-50; see also

’195 Patent at 2:54-3:2, 3:3-11, 3:12-35, 3:47-58, 3:59-4:3. This confirms that there are no 

disputed issues of fact that would preclude resolving this case at Step Two. See Uniloc USA v. 

ADP, 772 F. App’x 890, 900 (Fed. Cir. 2019) (affirming district court’s analysis where the court 

supported its factual analysis with reference to the specification); see also Aatrix Software v. Green 

Shades Software, 890 F.3d 1354, 1356 (Fed. Cir. 2018) (Moore, J., concurring) (“In a situation 

where the specification admits the additional claim elements are well-understood, routine, and 

conventional, it will be difficult, if not impossible, for a patentee to show a genuine dispute [of 

fact under Step Two].”). 

Aside from the commonplace and well-known elements of the claims, the only remaining 

element is the limitation that the claimed “communication link” be “structured to bypass at least 

one media terminal security measure.” ’732 Patent, 7:65-8:4; ’195 Patent, 8:14-15. But, as noted 

above, the Patents-in-Suit fail to discuss, disclose, or describe how to structure the communication 

link to achieve the claimed result of bypassing a security measure to transfer and display the digital 

media file. ’723 Patent, 1:54-63, 5:17-21; ’195 Patent, 1:40-51, 5:36-40. The Patents-in-Suit 

merely provide aspirational language and instruct the reader to “apply” the abstract idea, without 

disclosing any unique or inventive hardware or software to do so. Claims, like the Asserted 

Claims, that “do nothing more than spell out what it means to apply it on a computer cannot confer 

patent-eligibility,” particularly at Step Two, where, as here, the “recited components behave 

exactly as expected according to their ordinary use.” TLI Commc'ns, 823 F.3d at 615 (emphasis 

added). 

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2. The Result-Oriented Claim Language Cannot Make The Claims 

Patent-Eligible

The functional and result-oriented claim language confirms the patent-ineligibility of the 

Asserted Claims. Such result-oriented language is “irrelevant” to whether there is an inventive 

concept at Step Two because it just “restates” the abstract idea. BSG Tech v. Buyseasons, 899 F.3d 

1281, 1291 (Fed. Cir. 2018) (“As a matter of law, narrowing or reformulating an abstract idea does 

not add ‘significantly more’ to it.”). Notably, the Federal Circuit has explained that the abstract 

idea itself “cannot supply the inventive concept.” ChargePoint v. SemaConnect, 920 F.3d 759, 775 

(Fed. Cir. 2019). Where the application of the abstract idea uses “conventional and wellunderstood techniques—e.g., a generic computer” (as in the Asserted Claims here), “the claim has

not been transformed into a patent-eligible application of an abstract idea.” Ubisoft Entm't, S.A. v. 

Yousician Oy, 814 Fed. App’x 588, 592 (Fed. Cir. 2020) (emphasis added).

Here, the recited elements “fall squarely within [Federal Circuit] precedent finding generic 

computer components insufficient to add an inventive concept to an otherwise abstract idea.” TLI 

Commn’s, 823 F.3d at 614. The potential elements that satisfy the claims include, for example, 

components listed in the specification (recited below), all of which have been in use and known

for decades, and all of which “behave exactly as expected according to their ordinary use” as the 

Patents-in-Suit admit. TLI Commn’s, 823 F.3d at 614-15. For example:

• a laptop or notebook computer, PDA, video game console, mobile telephone, media system 

of a vehicle (’723 Patent, 2:45-48);

• mobile telephones, cellular telephones, portable MP3 players, handheld or portable game 

consoles (id., 1:23-28);

• home, office, private, limited, or closed interactive computer networks (id., 2:60-61);

• devices with access to the World Wide Web, including via cable or DSL modem, or via one 

or more satellites and/or one or more towers or base stations (id., 3:8-14);

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• an interactive computer network including a Local Area Network (“LAN”), Wide Area 

Network (“WAN”), Private Area Network (“PAN”), peer-to-peer network, near field 

communication (“NFC”), Bluetooth network (id., 2:65-3:2);

• certain security measures, such as a firewall, and/or passwords/keys such as, for example, 

Wi-Fi Protected Access (“WPA”) keys, and/or Wireless Application Protocol (“WAP”) keys 

(id., 3:30-37); 

• vehicle media systems, which may be part of a vehicle navigation system (id., 7:6-11); and

• virtually any electronic file or data such as a digital photograph, video, audio, animation, 

text, or any other electronic document or object (id., 3:47-50).

3. The Dependent Claims Fail To Add Any Inventive Concept

The asserted dependent claims likewise do not make the abstract idea any less abstract or 

more inventive because, “[a]s a matter of law, narrowing or reformulating an abstract idea does 

not add ‘significantly more’ to it.” See BSG Tech, 899 F.3d at 1291. Claim limitations, such as 

those in the Patents-in-Suit, “recited at a high level of generality and conventional” do not “solve 

a technology-based problem” or provide an inventive concept. Interval Licensing v. AOL, 896 F.3d 

1335, 1347 (Fed. Cir. 2018). Indeed, the Federal Circuit routinely declines to find an inventive 

concept where the specification recites “many different arrangements for the disposition of various 

components within the system,” and the “components involved... are generic.” W. View Research 

v. Audi AG, 685 F. App’x 923, 926-27 (Fed. Cir. 2017). So too is the case here.

For example, the Patents-in-Suit recite broad (and seemingly disparate) computing and 

networking features at only the highest level of generality.5 See, e.g., ’723 Patent, 2:40-48 (noting 

that “a computer” may serve as a component of claimed embodiments, but so will “any device 

structured to facilitate the practice of the present system in the intended fashion may be utilized, 

including but in no way limited to a desktop computer, laptop or notebook computer, PDA, video 

5 The broad, all-encompassing nature of the claims is reflected in the seemingly disparate 

components that can constitute a system where the claimed invention can function both on a video 

game console, but also an automobile. See ’723 Patent, 2:40-48.

Case 2:23-cv-00591-JRG-RSP Document 20 Filed 04/03/24 Page 31 of 37 PageID #: 311
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game console, mobile telephone, media system of a vehicle (e.g. an automobile), etc.”); id., 2:60-

63 (listing “home, office, private, limited, or closed” computer networks “defined by one or more 

networking devices,” without specifying any particular networking device); id., 2:65-3:2 (listing 

“Local Area Network (“LAN”), Wide Area Network (“WAN”), Private Area Network (“PAN”), 

peer-to-peer network, near field communication (“NFC”), Bluetooth network, etc.” as potential 

options for the claimed interactive “computer network”); id., 3:10-11 (disclosing that access to the 

“World Wide Web” should be included, but “may be facilitated in any manner”); 3:47-50 (listing 

“virtually any electronic file or data such as a digital photograph, video, audio, animation, text, or 

any other electronic document or object” as potential “digital media files”). 

The asserted dependent claims recite these broad, generic limitations, making them 

incrementally narrower applications of the same abstract idea and are insufficient to provide an 

inventive concept. See supra Section III.B. “As a matter of law, narrowing or reformulating an 

abstract idea does not add ‘significantly more’ to it.” BSG Tech, 899 F.3d at 1291.

4. The Claims Are Patent-Ineligible Even When The Elements Are 

Considered As An Ordered Combination

Nothing in the ordered combination of the conventional elements in the claims changes the 

result at Step Two. The stepwise order of the claims is simple, routine, and conventional: first 

detect a wireless device, then initiate a communication link via a computer network, and then 

bypass a security measure in order to transfer and display a digital media file on the receiving 

device. ’723 Patent, 7:42-8:4; ’195 Patent, 7:57-8:15. There is no inventive concept where a patent 

simply applies an abstract idea in a routine and conventional way where the components “behave 

exactly as expected according to their ordinary use.” TLI Commn’s, 823 F.3d at 614-15; see also 

Two-Way Media v. Comcast Cable Commn’s, 874 F.3d 1329, 1341 (Fed. Cir. 2017) (“Nor do we 

see any inventive concept in the ordered combination of these steps. The steps are organized in a 

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completely conventional way—data are first processed, sent, and once sent, information about the 

transmission is recorded. The claims thus fail to describe a ‘specific, discrete implementation of 

the abstract idea’ sufficient to qualify for eligibility under § 101.”). 

The specifications and claims of the Patents-in-Suit similarly fail to disclose or describe 

“how its particular arrangement of elements is a technical improvement over prior art ways” of 

conducting a digital file transfer. Bascom Glob. Internet Servs. v. AT&T Mobility, 827 F.3d 1341, 

1350 (Fed. Cir. 2016). For example, in Bascom, the Federal Circuit explained that, while the 

claims in that case were directed to an abstract idea (filtering content on the internet), the claims 

did not “merely recite the abstract idea of filtering content along with the requirement to perform 

it on the Internet, or to perform it on a set of generic computer components,” because “[s]uch 

claims would not contain an inventive concept” at Step Two of the analysis. Id. Instead, the claims 

recited “a specific, discrete implementation of the abstract idea of filtering content,” which “was 

already a known concept, and the patent describe[d] how its particular arrangement of elements is 

a technical improvement over prior art ways of filtering such content.” Id. at 1350 (emphasis 

added). Here, unlike in Bascom, no such “technical improvement” is disclosed or described 

anywhere in the Patents-in-Suit—not in the specifications, not in the Asserted Claims, not in the 

claim elements themselves individually, and certainly not in the ordered combination of the 

conventional claim elements behaving exactly as expected according to their routine use. 

Accordingly, SXM respectfully asks this Court to find that the Asserted Claims, which are 

directed to an abstract idea at Step One, fail Step Two because they do not contain the requisite 

“inventive concept” to transform the claimed abstract idea into a patent-eligible application of it. 

Alice, 573 U.S. at 217-18.

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VI. DT’S AMENDED COMPLAINT DOES NOT SAVE THE PATENTS-IN-SUIT 

FROM AN INVALIDITY FINDING UNDER SECTION 101

Rather than oppose SXM's Motion to Dismiss (Dkt. No. 13) after SXM agreed to a twoweek extension for DT to do so, DT seeks to delay consideration of such a motion by filing an 

Amended Complaint. See Dkt. No. 18. While DT gained a few weeks through this procedural 

move, its Amended Complaint does nothing to avoid the inevitable fate of the Patents-in-Suit. 

They are patent ineligible.

The Amended Complaint presents new allegations that fall into three categories, all of 

which cannot avoid patent ineligibility. A redline of the Amended Complaint compared to the 

original Complaint accompanies this motion for the Court's consideration. See Ex. C. It is color 

coded to identify each of the categories described below. 

The first category of allegations (colored in red) comprises a description of the Patents-inSuit with reference to certain claim language and to the specification. However, none of those 

allegations provides any explanation as to (1) how the claims perform the limitation that “said 

communication link is structured to bypass at least one media terminal security measure” or (2) 

how the claimed invention of the Patents-in-Suit used computer technology in a new way rather 

than simply using conventional computer technology to perform the functions described in the 

claims. This failure is particularly striking here given that SXM's original motion to dismiss 

highlighted both of these fundamental deficiencies.

The second category of allegations (colored in blue) provide statements that the Patentsin-Suit do not comprise an abstract idea or concept. Yet, these allegations are simply conclusory 

and have no further explanation. For example, the Amended Complaint states, “15. The claims of 

the Display Tech Patents are not drawn to laws of nature, natural phenomena, or abstract ideas. 

The specific combinations of elements, as recited in the claims, was not conventional or routine at 

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28

the time of the invention.” Dkt. 18, ¶ 15. The Federal Circuit has been clear that such conclusory 

allegations cannot avoid a finding of invalidity. See Bluebonnet Internet Media Servs., v. Pandora 

Media, 2024 WL 1338940, at *2 (Fed. Cir. Mar. 29, 2024) (“[T]he district court was not required 

to accept as true allegations in the complaint that are conclusory, state legal conclusions, or 

contradict the patent itself. Even accepting Bluebonnet's assertion that four or five different 

components are required to practice the asserted claims ... the sheer number of conventional 

computer components employed, without more, does not constitute an inventive concept.”).

The third category of allegations (colored in green) likewise provide conclusory statements 

that the Patents-in-Suit present an inventive concept. But the totality of those allegations is as 

follows: “16. Further, the claims of the Display Tech Patents contain inventive concepts which

transform the underlying non-abstract aspects of the claims into patent-eligible subject matter.” 

Dkt. 18, ¶ 16. Similar to the conclusory allegations on the abstract idea, such allegations cannot 

avoid an invalidity ruling under section 101. See id.

For these reasons, DT's Amended Complaint (and its failure to address these critical issues) 

confirms that the Patents-in-Suit compromise abstract ideas without an inventive concept, 

rendering them invalid. 

VII. CONCLUSION

For at least the foregoing reasons, SXM respectfully requests that this Court dismiss DT’s 

Amended Complaint with prejudice because the Patents-in-Suit are invalid under 35 U.S.C. § 101. 

Case 2:23-cv-00591-JRG-RSP Document 20 Filed 04/03/24 Page 35 of 37 PageID #: 315
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Dated: April 3, 2024 Respectfully submitted,

By: s/ Mark A. Baghdassarian

 Mark A. Baghdassarian

 Shannon Hedvat

 Jeffrey Coleman

 mbaghdassarian@kramerlevin.com

 shedvat@kramerlevin.com

 jcoleman@kramerlevin.com

 Kramer Levin Naftalis & Frankel LLP

 1177 Avenue of the Americas

 New York, NY 10036

 Tel: (212) 715-9100

 Fax: (212) 715-8000

 Melissa R. Smith

 Texas Bar No. 24001351

 GILLAM & SMITH, LLP 

 303 South Washington Avenue

 Marshall, Texas 75670

 Telephone: (903) 934-8450

 Facsimile: (903) 934-9257

 Email: melissa@gillamsmithlaw.com

 Counsel for Defendant Sirius 

 XM Radio Inc.

Case 2:23-cv-00591-JRG-RSP Document 20 Filed 04/03/24 Page 36 of 37 PageID #: 316
30

CERTIFICATE OF SERVICE

I certify on April 3, 2024, the foregoing document was filed electronically with the Court, 

with notice of filing generated and sent electronically via the Court’s CM/ECF system to all 

counsel of record.

By: s/ Melissa R. Smith

 Melissa R. Smith 

CERTIFICATE OF COMPLIANCE WITH THE COURT’S 35 U.S.C. § 101 

MOTION PRACTICE ORDER

_____ The parties agree that prior claim construction is not needed to inform the Court’s 

analysis as to patentability. 

__x___ The parties disagree on whether prior claim construction is not needed to inform 

the Court’s analysis as to patentability. 

Dated: April 3, 2024 Respectfully submitted,

By: s/ Mark A. Baghdassarian

 Mark A. Baghdassarian

 Counsel for Defendant Sirius 

 XM Radio Inc.

Case 2:23-cv-00591-JRG-RSP Document 20 Filed 04/03/24 Page 37 of 37 PageID #: 317