IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

SYMBOLOGY INNOVATIONS, LLC, 

 Plaintiff, 

 v. 

MACY’S, INC., 

 Defendant. 

) 

) 

) 

) 

) 

) 

) 

) 

) 

Civil Action 

No. 2:23-cv-00583-JRG 

Judge Rodney Gilstrap 

Electronically Filed

DEFENDANT MACY’S INC.’S REWENED MOTION TO DISMISS FOR FAILURE TO 

STATE A CLAIM PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 12(b)(6) 

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TABLE OF CONTENTS 

TABLE OF CONTENTS .............................................................................................................. i

TABLE OF AUTHORITIES ....................................................................................................... ii

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

II. NATURE AND STATE OF THE PROCEEDINGS.......................................................... 1

III. STATEMENT OF THE ISSUE ........................................................................................ 2

IV. STATEMENT OF THE FACTS ...................................................................................... 2

V. LEGAL STANDARD ........................................................................................................... 4

A. Legal Standard for Dismissal Pursuant to Rule 12(b)(6) .............................................. 4

B. Patent Eligibility Under 35 U.S.C. § 101 ......................................................................... 5

VI. ARGUMENT ...................................................................................................................... 6

A. The Asserted Patents Are Invalid Under § 101 .............................................................. 6

1. Claim 1 of the ’752 Patent is representative ............................................................. 6

2. Alice Step 1: Claim 1 of the ’752 Patent is directed to the abstract idea of data 

recognition and retrieval ...................................................................................... 9

3. Alice Step 2: The claims of the Asserted Patents contains no inventive concept 

sufficient to transform the abstract idea into patent-eligible matter. ............ 14

B. There Are No Claim Construction or Factual Disputes Preventing the Court From 

Ruling on This Issue at the Rule 12 Stage .................................................................... 17

VII. CONCLUSION ................................................................................................................ 20

 

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TABLE OF AUTHORITIES 

CASES

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 

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

Ancora Techs., Inc. v. HTC America, Inc., 

 908 F.3d 1343 (Fed. Cir. 2018)................................................................................................. 13 

Appistry, Inc. v. Amazon.com, Inc., 

 195 F. Supp. 3d 1176 (W.D. Wash. 2016) ................................................................................ 18 

Appistry, LLC v. Amazon.com, Inc., 

 676 F. App’x 1008 (Fed. Cir. 2017) ......................................................................................... 18 

Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................................... 4 

Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 

 687 F.3d 1266 (Fed. Cir. 2012)............................................................................................. 4, 16 

Berkheimer v. HP Inc., 

 881 F.3d 1360 (Fed. Cir. 2018)................................................................................................. 17 

Bilski v. Kappos, 

 561 U.S. 593 (2010) ............................................................................................................ 4, 5, 9 

BSG Tech LLC v. Buyseasons, Inc., 

 899 F.3d 1281 (Fed. Cir. 2018)................................................................................................. 16 

buySAFE, Inc. v. Google, Inc., 

 765 F.3d 1350 (Fed. Cir. 2014)................................................................................................. 15 

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

 776 F.3d 1343 (Fed. Cir. 2014).......................................................................................... passim

Cuvillier v. Taylor, 

 503 F.3d 397 (5th Cir. 2007) ...................................................................................................... 4 

Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 

 558 F. App’x 988 (Fed. Cir. 2014) ........................................................................................... 12 

CyberSource Corp. v. Retail Decisions, Inc., 

 654 F.3d 1366 (Fed. Cir. 2011)................................................................................................... 5 

DDR Holdings, LLC v. Hotels.com, L.P., 

 773 F.3d 1245 (Fed. Cir. 2014)................................................................................................. 14 

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Diamond v. Chakrabarty, 

 447 U.S. 303 (1980) .................................................................................................................... 5 

Diamond v. Diehr, 

 450 U.S. 175 (1981) .................................................................................................................... 6 

Dropbox, Inc. v. Synchronoss Techs., Inc., 

 815 F. App’x 529 (Fed. Cir. 2020) ........................................................................................... 17 

Enfish, LLC v. Microsoft Corp., 

 822 F.3d 1327 (Fed. Cir. 2016)................................................................................................. 15 

First-Class Monitoring, LLC v. UPS of Am., Inc., 

 389 F. Supp. 3d 456 (E.D. Tex. 2019) ...................................................................................... 17

Fort Props., Inc. v. Am. Master Lease LLC, 

 671 F.3d 1317 (Fed. Cir. 2012)................................................................................................... 6 

Gottschalk v. Benson, 

 409 U.S. 63 (1972) ...................................................................................................................... 5 

In re TLI Commc’ns LLC Patent Litig., 

 823 F.3d 607 (Fed. Cir. 2016)................................................................................................... 15 

Intellectual Ventures I LL v. Capital One Bank (USA), 

 792 F.3d 1363 (Fed. Cir. 2015)................................................................................................. 16 

Intellectual Ventures I LLC v. Capital One Fin. Corp., 

 850 F.3d 1332 (Fed. Cir. 2017)........................................................................................... 11, 12 

Internet Patents Corp. v. Active Network, Inc., 

 790 F.3d 1343 (Fed. Cir. 2015)................................................................................................. 13 

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 

 132 S. Ct. 1289 (2012) ............................................................................................................ 5, 6 

Parker v. Flook, 

 437 U.S. 584 (1978) .................................................................................................................... 6 

Phoenix Licensing, L.L.C. v. Consumer Cellular, Inc., 2:16-CV-0152-JRG-RSP, 

 2017 WL 1065938 (E.D. Tex. Mar. 8, 2017) ............................................................................. 8 

PPS Data, LLC v. Jack Henry & Assocs., Inc., No. 2:18-CV-00007-JRG, 

 2019 WL 1317286 (E.D. Tex. Mar. 21, 2019) ........................................................................... 8 

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RecogniCorp, LLC v. Nintendo Co., Ltd., 

 855 F.3d 1322 (Fed. Cir. 2017)..................................................................................... 11, 12, 15

SAP Am., Inc. v. InvestPic, LLC, 

 898 F.3d 1161 (Fed. Cir. 2018)................................................................................................... 9 

Secured Mail Solutions LLC v. Universal Wilde, Inc., 

 873 F.3d 905 (Fed. Cir. 2017)................................................................................... 1, 12, 13, 15

Simio, LLC v. FlexSim Software Prods., Inc., 

 983 F.3d 1353 (Fed. Cir. 2020)................................................................................................. 18 

Two Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 

 874 F.3d 1329 (Fed. Cir. 2017)................................................................................................. 18 

Ultramercial, Inc. v. Hulu, LLC, 

 772 F.3d 709 (Fed. Cir. 2014)................................................................................... 4, 10, 13, 14

STATUTES 

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

RULES 

Red. R. Civ. P. 12(b)(6) ......................................................................................................... passim

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I. INTRODUCTION 

Macy’s, Inc. (“Macy’s”) requests that the Court dismiss this case because all of the claims 

of U.S. Patent Nos. 8,424,752 (the “’752 Patent”), 8,651,369 (the “’369 Patent”), and 8,936,190 

(the “’190 Patent”) (the “Asserted Patents”) are directed to the abstract idea of data recognition 

and retrieval, and none of the claims recites any specific non-conventional hardware or software 

or other inventive concept that would make them eligible for patent protection. In Secured Mail 

Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017), the Federal Circuit 

held claims directed to decoding a QR code—like the claims at issue in this case—invalid under 

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) and affirmed the district court’s grant 

of a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. The 

claims of the Asserted Patents cannot be meaningfully distinguished from the Secured Mail claims 

and are thus invalid for the same reasons. 

II. NATURE AND STATE OF THE PROCEEDINGS 

On April 29, 2024, Plaintiff, Symbology Innovations, LLC (“Symbology”), filed its First 

Amended Complaint (Dkt. 22) for patent infringement, accusing Macy’s of infringing the Asserted 

Patents. In the First Amended Complaint, Symbology accuses Macy’s of infringing at least Claim 

1 of the ’752 Patent, Claim 1 of the ’369 Patent, and Claim 1 of the ’190 Patent. See Dkt. 22, ¶¶ 

51, 68, 77. The First Amended Complaint, ostensibly filed in response to Macy’s Motion to 

Dismiss (Dkt. 15) the original Complaint (Dkt. 1), is substantively identical to the original 

Complaint with the exception of the addition of the section titled “Subject Matter Eligibility” that 

covers paragraphs 46 and 47. 

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III. STATEMENT OF THE ISSUE 

Should the Court dismiss Symbology’s claims pursuant to Rule 12(b)(6) when the claims 

of the Asserted Patents are directed to the abstract idea of data recognition and retrieval and do not 

include an inventive concept beyond that abstract idea. 

IV. STATEMENT OF THE FACTS 

The Asserted Patents are directed to “enabling a portable electronic device to retrieve 

information about an object when the object’s symbology, e.g., a barcode, is detected.” ’752 Patent 

and ’369 Patent, at Abstract. Claim 1 of the ’752 Patent, set forth below, is representative of the 

claims of the Asserted Patents: 

1. A method comprising: 

capturing a digital image using a digital image capturing device that is part 

of a portable electronic device; 

detecting symbology associated with an object within the digital image 

using a portable electronic device; 

decoding the symbology to obtain a decode string using one or more 

visual detection applications residing on the portable electronic device; 

sending the decode string to a remote server for processing; 

receiving information about the object from the remote server wherein the 

information is based on the decode string of the object; 

displaying the information on a display device associated with the portable 

electronic device. 

’752 Patent, Cl. 1. 

Under Symbology’s characterization of the Asserted Patents, this claim can be broken 

down into six main steps: (1) capturing an image with a camera or a scanner on a “portable 

electronic device” (e.g., taking a photograph or scanning an image with a smartphone); (2) 

detecting a symbology (e.g., recognizing a barcode in the captured image); (3) decoding the 

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symbology to obtain a “decode string” (e.g., reading information from the barcode); (4) sending 

the “decode string” to a “server” for processing (e.g., requesting a webpage based on the 

information obtained from the barcode); (5) receiving information from the “server” in response 

(e.g., receiving the contents of the webpage ); and (6) displaying the information received on the 

portable electronic device (e.g., displaying a webpage). Put simply, these steps are directed to 

recognizing and retrieving information associated with a pattern. 

The specification makes clear that the components and processes for carrying out the 

claimed method were conventional. For example, the claimed “portable electronic device” can be 

virtually any mobile device capable of taking a photograph or scanning an image, including 

admittedly known, commercially available products. See ’752 Patent, 1:58–61 (“Examples of the 

portable electronic devices that contain both applications and imaging systems include Apple 

Computer’s IPhone, Google’s Droid, and various mobile devices from Motorola”); id., 2:57–61 

(“Using any applicable visual detection device (e.g., a camera, scanner, or other device) on the 

portable electronic device, the user may select an object by scanning or capturing an image of 

symbology (e.g., barcodes) associated with the object.”). The applicant further acknowledged that 

various programs and applications operable on a portable electronic device to scan and decode a 

barcode were available in the prior art. Id., 3:29–33 (“Examples of applications that allow scanning 

include Neomedia’s Neo Reader, Microsoft’s Smart Tags, Android’s Shop Savvy, Red Laser, 

ScanBuy, etc.”). According to the ’752 Patent, once a barcode is decoded (using any of these 

existing applications), the “decode string” (i.e., the information obtained from the barcode) is then 

“sent” to a “remote server” to retrieve information (e.g., webpage content) that is then displayed 

on the portable electronic device. Id., 3:21–28. 

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V. LEGAL STANDARD 

A. Legal Standard for Dismissal Pursuant to Rule 12(b)(6) 

Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a party may move to dismiss 

a complaint that fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) 

motion, a complaint “must provide the plaintiff’s grounds for entitlement to relief—including 

factual allegations that when assumed to be true raise a right to relief above the speculative level.” 

Cuvillier v. Taylor, 503 F.3d 397, 401 (5th Cir. 2007) (internal citations and quotations omitted). 

Although factual allegations are taken as true, legal conclusions are given no deference—those 

matters are left for the court to decide. See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (tenet that 

allegations are taken as true on a motion to dismiss “is inapplicable to legal conclusions”). 

“[W]hen the allegations in a complaint, however true, could not raise a claim of entitlement 

to relief [as a matter of law], this basic deficiency should . . . be exposed at the point of minimum 

expenditure of time and money by the parties and the court.” Cuvillier, 503 F.3d at 401 (internal 

citations and quotations omitted). Patentability under 35 U.S.C. § 101 is a threshold legal issue. 

Bilski v. Kappos, 561 U.S. 593, 602 (2010). Accordingly, the § 101 inquiry is properly raised at 

the pleadings stage if it is apparent from the face of the patent that the asserted claims are not 

directed to eligible subject matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 718-19 (Fed. 

Cir. 2014) (Mayer, J., concurring). In those situations, claim construction is not required to 

conduct a § 101 analysis. Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 

1266, 1273 (Fed. Cir. 2012) (“[W]e perceive no flaw in the notion that claim construction is not 

an inviolable prerequisite to a validity determination under § 101.”). 

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B. Patent Eligibility Under 35 U.S.C. § 101 

Section 101 of the Patent Act sets forth four categories of patentable subject matter: “any 

new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The 

law also recognizes three exceptions to patent eligibility: “laws of nature, physical phenomena, 

and abstract ideas.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Abstract ideas are 

ineligible for patent protection because a monopoly over these ideas would preempt their use in 

all fields. See Bilski, 561 U.S. at 611–12. In other words, “abstract intellectual concepts are not 

patentable, as they are the basic tools of scientific and technological work.” Id. at 653 (quoting 

Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 

Determining whether a patent claim is impermissibly directed to an abstract idea involves 

two steps. First, the court determines “whether the claims at issue are directed to a patent-ineligible 

concept.” Alice, 573 U.S. at 218. Second, if the claim contains an abstract idea, the court evaluates 

whether there is “an ‘inventive concept’—i.e., an 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 (internal citations omitted). 

Transformation into a patent-eligible application requires “more than simply stat[ing] the 

[abstract idea] while adding the words ‘apply it.’” Id. at 221 (quoting Mayo Collaborative Servs. 

v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). Indeed, if a claim could be performed in 

the human mind, or by a human using pen and paper, it is not patent-eligible. CyberSource Corp. 

v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). Also, a claim is not meaningfully 

limited if it includes only token or insignificant pre- or post-solution activity—such as identifying 

a relevant audience, category of use, field of use, or technological environment. Mayo, 132 S. Ct. 

at 1297–98, 1300–01; Bilski, 561 U.S. at 610; Diamond v. Diehr, 450 U.S. 175, 191–92 & n.14 

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(1981); Parker v. Flook, 437 U.S. 584, 595, n.18 (1978). Finally, “simply appending conventional 

steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract 

ideas cannot make those laws, phenomena, and ideas patentable.” Mayo, 132 S. Ct. at 1300; see 

also Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1323 (Fed. Cir. 2012) (“Such a 

broad and general limitation does not impose meaningful limits on the claim’s scope.”) (internal 

citations and quotations omitted). 

VI. ARGUMENT 

The claims of the Asserted Patents are invalid under 35 U.S.C. § 101 because they fail both 

steps of the Alice test. Each of the claims is directed to the abstract idea of data recognition and 

retrieval and none of the claims contains “an ‘inventive concept’ . . . ‘sufficient to ensure that the 

patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” 

See Alice, 573 U.S. at 217-18. Thus, Symbology’s First Amended Complaint fails to raise a claim 

upon which relief can be granted, and the Court should dismiss this case with prejudice. 

A. The Asserted Patents Are Invalid Under § 101 

1. Claim 1 of the ’752 Patent is representative 

Claim 1 of the ’752 Patent is representative of the other claims of the Asserted Patents 

because the claims contain the same essential elements. Specifically, all the independent claims, 

Claims 1, 17, and 24 of the ’752 Patent, 1, 17, and 24 of the ’369 Patent, and 1, 17, and 20 of the 

’190 Patent include: (1) capturing an image with a camera or a scanner; (2) detecting a symbology; 

(3) decoding the symbology to obtain a “decode string”; (4) sending the “decode string” to a 

“server” for processing; (5) receiving information from the “server” in response; and (6) displaying 

the information received. In addition, Claim 17 of the ’752 Patent, Claim 17 of the ’369 Patent, 

and Claim 17 of the ’190 Patent relate to “[a] computer application stored on a computer-readable 

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medium and executable by a processing device incorporated in a portable electronic device” 

performing the same functions, and Claim 24 of the ’752 Patent, Claim 24 of the ’369 Patent, and 

Claim 20 of the ’190 Patent relate to a “symbology management application” performing the same 

functions. 

Some of the dependent claims recite limitations for: (1) running visual detection 

applications in the background (Claim 4); (2) configuring visual detection applications to 

automatically detect barcodes (Claim 5); and (3) analyzing the decode string and selecting 

appropriate application to decode (Claim 9). These claims also suffer from the same resultsoriented (and thus ineligible) claim language as Claim 1 of the ’752 Patent. 

Other dependent claims recite insignificant pre- or post-solution activity, such as allowing 

a user to select certain preferences or store data: 

Pre- or Post-Solution Activity Claims1

enabling users to select certain preferences 2, 3, 18 

detecting barcodes and symbology based on user request 7 

sending instructions to visual detection applications and remote servers 8 

enabling the user to store information 11 

providing e-commerce options to the user 12 

decoding barcodes and symbology using visual search technology 15, 23 

The remaining claims recite activity like alerting the user and asking to decode a barcode, 

analyzing a decode string and selecting the appropriate application to decode, allowing the user to 

select an application to decode the barcode, and displaying information and images. See, e.g., ’752 

1

 The dependent claims in the ’369 and ’190 Patents are virtually identical to those of the ’752 

Patent. 

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Patent and ’369 Patent, Claims 6, 10, 13, 14, 16, 19, 20, 21, and 22. None of the dependent claims 

recite more than insignificant pre- or post-solution activity and this does not change the analysis 

under § 101. See, e.g., ’752 Patent, Claims 2–16, 18–23, 25–28; ’369 Patent, Claims 2–16, 18–23, 

25–28; ’190 Patent, Claims 2–16, 18–19. 

Similar to the claim limitations in the representative Claim 1 of the ’752 Patent, the 

additional claim limitations consist of generic components used for their conventional purpose, 

and thus, they do not alter the § 101 analysis. Claim 1 is thus representative for the § 101 analysis. 

See PPS Data, LLC v. Jack Henry & Assocs., Inc., No. 2:18-CV-00007-JRG, 2019 WL 1317286, 

at *5 (E.D. Tex. Mar. 21, 2019) (articulating that defendants first bear the burden of demonstrating 

a claim is representative, which then shifts to the plaintiff to identify a difference material to the § 

101 analysis); see also Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l 

Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); Phoenix Licensing, L.L.C. v. Consumer Cellular, 

Inc., 2:16-CV-0152-JRG-RSP, 2017 WL 1065938, at *8–9 (E.D. Tex. Mar. 8, 2017). 

Any textual differences between the claims are minor and do not affect the eligibility 

analysis. For example, the only textual difference between claim 1 of the ’752 Patent and claim 1 

of the ’369 Patent is that claim 1 of the ’752 Patent refers to detecting symbology “associated with 

an object within the digital image” whereas claim 1 of the ’369 Patent refers to detecting 

symbology “associated with the digital image.” Compare ’752 Patent, Claim 1 with ’369 Patent, 

Claim 1. Claims 2-28 of the ’752 Patent are textually identical to claims 2-28 of the ’369 Patent, 

and the only difference between claims 1-19 and 24 of the ’369 Patent and claims 1-20 of the ’190 

Patent is that the ’190 Patent claims refer to an “electronic device” rather than a “portable 

electronic device.” 

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2. Alice Step 1: Claim 1 of the ’752 Patent is directed to the abstract idea 

of data recognition and retrieval 

Under any plausible reading, the claims of the Asserted Patents are directed to an 

unpatentable, abstract idea because they claim nothing more than the “longstanding,” “routine,” 

and “conventional” concept of data recognition and retrieval. See Alice, 573 U.S. at 219-25; Bilski, 

561 U.S. at 611. 

In assessing whether Claim 1 is directed to an abstract idea, the Court begins by analyzing 

the “focus” of the claim, i.e., its “character as a whole,” in order to determine whether the claim is 

directed to an abstract idea. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). 

All Claim 1 of the ’752 Patent covers is a way to use a barcode to obtain information in 

order to access a webpage, consisting of nothing more than a set of basic ideas like capturing, 

detecting, decoding, sending, receiving, and displaying data: 

Claim Language (Claim 1 of ’752 Patent) Claimed Idea 

A method comprising: 

capturing a digital image using a digital image capturing device that is 

part of a portable electronic device; 

capturing data 

detecting symbology associated with an object within the digital 

image using a portable electronic device; 

detecting data 

decoding the symbology to obtain a decode string using one or more 

visual detection applications residing on the portable electronic 

device; 

decoding data 

sending the decode string to a remote server for processing; sending data 

receiving information about the object from the remote server wherein 

the information is based on the decode string of the object; 

receiving data 

displaying the information on a display device associated with the 

portable electronic device. 

displaying data 

At a high level, this claim describes the most generic functional steps of a standard 

computer (i.e., capturing, detecting, decoding, sending, receiving, and displaying data). Such a 

broad concept is not patent eligible because it “recites an abstraction—an idea, having no particular 

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concrete or tangible form.” Ultramercial, 772 F.3d at 715. That the claim purports to implement 

the steps with conventional components like a “portable electronic device,” a “remote server,” a 

“display device,” and generic “visual detection applications” does not make it any less abstract. 

The specification admits that barcode scanning and decoding programs were prevalent at 

the time of the invention. ’752 Patent, 3:29–36. Indeed, the claims implement this prior-art 

technology to carry out the steps of capturing, detecting, decoding, and retrieving information from 

a server. Claim 1 of the ’752 Patent does no more than use existing technology to recognize an 

image, decode the image, then retrieve information based upon the decoded information. It is thus 

directed to the abstract idea of data recognition and retrieval. 

Courts have found similar patent claims to be ineligible. In Content Extraction, the claims 

generally recited “a method of 1) extracting data from hard copy documents using an automated 

digitizing unit such as a scanner, 2) recognizing specific information from the extracted data, and 

3) storing that information in a memory.” Content Extraction, 776 F.3d at 1345. The claimed 

method “[could] be performed by software on an automated teller machine (ATM) that recognizes 

information written on a scanned check, such as the check’s amount, and populates certain data 

fields with that information in a computer’s memory.” Id. The Federal Circuit concluded in Alice’s 

first step that the claims were “drawn to the abstract idea of 1) collecting data, 2) recognizing 

certain data within the collected data set, and 3) storing that recognized data in a memory”; or, put 

simply: “data recognition and storage.” Id. at 1347. In rejecting the plaintiff’s argument that the 

claims were not abstract because they required the use of a scanner, the Federal Circuit likened the 

claims to those found abstract in Alice, which “also required a computer that processed streams of 

bits.” Id. Like the Content Extraction claims, Claim 1 of the ’752 Patent is abstract because it 

simply decodes an image to obtain information and then retrieves data from a server based on that 

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information. The claims in Content Extraction were directed to data recognition and storage, 

whereas the ’752 Patent is directed to data recognition and retrieval—the former claims stored the 

recognized data, while the latter claims retrieve additional data based on the recognized data. 

In RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322 (Fed. Cir. 2017), the Federal 

Circuit found the patent claim at issue to be directed toward the abstract idea of “encoding and 

decoding image data.” Id. at 1324. The claim at issue in RecogniCorp recited: 

1. A method for creating a composite image, comprising: 

displaying facial feature images on a first area of a first display via a first device 

associated with the first display, wherein the facial feature images are 

associated with facial feature element codes; 

selecting a facial feature image from the first area of the first display via a user 

interface associated with the first device, wherein the first device incorporates 

the selected facial feature image into a composite image on a second area of the 

first display, wherein the composite image is associated with a composite facial 

image code having at least a facial feature element code and wherein the 

composite facial image code is derived by performing at least one multiplication 

operation on a facial code using one or more code factors as input parameters 

to the multiplication operation; and 

reproducing the composite image on a second display based on the composite facial 

image code. 

Id. The Federal Circuit described the claim as a “method whereby a user displays images on a first 

display, assigns image codes to the images through an interface using a mathematical formula, and 

then reproduces the image based on the codes.” Id. at 1326. The Federal Circuit found that this 

method reflected “standard encoding and decoding.” Id. The Federal Circuit then explained that 

encoding and decoding data is “an abstract concept long utilized to transmit information.” Id. 

(citing Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340–41 (Fed. Cir. 

2017) (organizing, displaying, and manipulating data encoded for human- and machine-readability 

is directed to an abstract concept)). The court provided several examples of long-utilized methods 

of encoding and decoding of data to transmit information: “Morse code, ordering food at a fast 

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food restaurant via a numbering system, and Paul Revere’s ‘one if by land, two if by sea’ signaling 

system all exemplify encoding at one end and decoding at the other end.” Id. Claim 1 of the ’752 

Patent likewise simply decodes an image to obtain information, an abstract concept. 

Additionally, in Secured Mail, the Federal Circuit found claims directed to encoding and 

decoding a bar code invalid under both Alice steps. Secured Mail, 873 F.3d at 907. The Secured 

Mail claims “provide[d] a method whereby a barcode is generated, affixed to a mail object, and 

sent through the mail system [and t]hen, upon receipt, the barcode is scanned, and data 

corresponding to the sender is sent to the recipient over the network and displayed on the 

recipient’s device.” Id. at 910–11. The Federal Circuit found that “each step of the process is 

directed to the abstract process of communicating information about a mail object using a 

personalized marking.” Id. at 911. And because the claims were “non-specific and lack[ed] 

technical detail,” utilizing “well known” technologies and generic hardware, the Federal Circuit 

concluded that the claims lacked an inventive concept. Id. at 912. 

The idea underlying Claim 1 of the ’752 Patent is just as abstract as those of the Content 

Extraction, RecogniCorp, and Secured Mail claims. Claim 1 of the ’752 Patent does not include 

any specific limitations or steps regarding extracting data or decoding the data. Rather, all of the 

steps required to carry out the method are directed to the generic, conventional ideas of recognizing 

an image, decoding the image, and then doing something based upon the decoded information. 

Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014) (finding 

claim directed to “the well-known concept of categorical data storage, i.e., the idea of collecting 

information in classified form, then separating and transmitting that information according to its 

classification, is an abstract idea that is not patent-eligible”). That Claim 1 of the ’752 Patent sends 

and receives the decoded information over a network does not make it any less abstract. See, e.g., 

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Ultramercial, 772 F.3d at 716 (noting that “the use of the Internet is not sufficient to save otherwise 

abstract claims from ineligibility under § 101”). 

Claim 1 differs from claims that the Federal Circuit has held to be eligible because they 

claimed specific means for improving specific computer technology or solving specific computer 

problems. For example, the Federal Circuit addressed the eligibility of claims directed to 

improving computer security in Ancora Techs., Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. 

Cir. 2018). In that case, the Federal Circuit held the claims eligible and stated, “[i]mproving 

security—here, against a computer’s unauthorized use of a program—can be a non-abstract 

computer-functionality improvement [ ] done by a specific technique that departs from earlier 

approaches to solve a specific computer problem.” Id. at 1348. The court was persuaded because 

“[t]he claimed method here specifically identifies how that functionality improvement is 

effectuated in an assertedly unexpected way.” Id. The same is not true of Claim 1 of the ’752 

Patent. It does not require a specific and unconventional technique, and it does not identify any 

specific improvement to computer functionality, much less an unexpected way of effectuating such 

an improvement. 

By only claiming the desired result—recognizing and retrieving information associated 

with a pattern like a barcode—without describing any specific roadmap for doing so, Claim 1 of 

the ’752 Patent falls short of claiming eligible subject matter under § 101. See Internet Patents 

Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015); Secured Mail, 873 F.3d at 

910–11. 

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3. Alice Step 2: The claims of the Asserted Patents contains no inventive 

concept sufficient to transform the abstract idea into patent-eligible 

matter. 

Because the claims of the Asserted Patents are directed to an abstract idea, the Court must 

next determine whether it contains an “inventive concept sufficient to transform the claimed 

abstract idea into a patent eligible application.” Alice, 573 U.S. at 221 (internal quotations omitted). 

To pass this test, the claims “must include additional features” that “must be more than wellunderstood, routine, conventional activity.” Ultramercial, 772 F.3d at 715 (internal quotations 

omitted). Here, the claims are broad and generic, and do not contain meaningful limitations that 

would restrict it to a non-routine, specific application of the abstract idea. 

Each of the steps recited in Claim 1 of the ’752 Patent is described only at a high level of 

generality as “capturing a digital image,” “detecting” a barcode, “decoding [the barcode] . . . to 

obtain a decode string,” “sending the decode string to a remote server for processing,” “receiving 

information . . . from the remote server,” and “displaying the information.” To accomplish these 

steps, Claim 1 of the ’752 Patent recites the use of a “portable electronic device,” “visual detection 

applications,” and a “remote server.” But the claimed “portable electronic device” can be virtually 

any device capable of taking a photograph (’752 Patent, 1:58–61), the “visual detection 

applications” can be a variety of off-the-shelf applications that users have installed on their 

smartphones (id., 3:29–33), and the claimed “server” is implemented using generic hardware (id., 

9:65–10:1) to perform generic website functions (id., 5:33–42). 

The applicant’s own characterizations demonstrate that the claimed components do not 

“improve the functioning of the computer itself,” Alice, 573 U.S. at 225, for example by disclosing 

an “improved, particularized method of digital data compression,” DDR Holdings, LLC v. 

Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014), or improving “the way a computer stores 

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and retrieves data in memory,” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 

2016). For example, in Enfish, the Federal Circuit distinguished the claims from others that 

“simply add[ed] conventional computer components to well-known business practices,” id. at 

1338, holding instead that “they [we]re directed to a specific improvement to the way computers 

operate,” id. at 1336. In particular, the unconventional structure of the database resulted in 

“increased flexibility, faster search times, and smaller memory requirements.” Id. at 1337. Unlike 

Enfish, nothing in Claim 1 of the ’752 Patent shows any unconventional method that would amount 

to a “specific improvement to the way computers operate.” Therefore, the focus of the ’752 Patent 

is not “on [a] specific asserted improvement in computer capabilities” but instead “on a process 

that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1336. 

There is simply nothing “inventive” about using a known process (i.e., decoding a barcode) 

to access a website. See Secured Mail, 873 F.3d at 912. Moreover, the abstract functional 

descriptions in Claim 1 of the ’752 Patent are devoid of any technical explanation as to how to 

implement the purported invention in an inventive way. See In re TLI Commc’ns LLC Patent Litig., 

823 F.3d 607, 615 (Fed. Cir. 2016) (claims failed Alice’s step 2 where specification limited its 

discussion of “additional functionality” of conventional components “to abstract functional 

descriptions devoid of technical explanation as to how to implement the invention”). Similar to 

the invalidated claim in RecogniCorp, nothing in Claim 1 of the ’752 Patent “‘transforms’ the 

abstract idea of . . . decoding,” i.e., recognizing information, “into patent-eligible subject matter.” 

RecogniCorp, 855 F.3d at 1328 (citing Alice, 573 U.S. at 221). 

Courts have repeatedly held that the presence of generic hardware and software like the 

kind recited in Claim 1 of the ’752 Patent does not make an otherwise abstract idea patent-eligible. 

See, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer 

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receives and sends the information over a network—with no further specification—is not even 

arguably inventive.”); Content Extraction, 776 F.3d at 1348 (“At most, [the] claims attempt to 

limit the abstract idea of recognizing and storing information from hard copy documents using a 

scanner and a computer to a particular technological environment. Such a limitation has been held 

insufficient to save a claim in this context.”); Bancorp, 687 F.3d at 1276–77. In addition, an 

“abstract idea does not become nonabstract by limiting the invention to a particular field of use or 

technological environment, such as [mobile services].” Intellectual Ventures I LL v. Capital One 

Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015). 

The other claims of the Asserted Patents include similar limitations regarding the abstract 

idea, but they do not include the specificity necessary to claim patent-eligible subject matter. They 

also do not include anything other than generic components and processes such that they fail to 

contain an inventive concept. Accordingly, the other claims suffer from the same flaws as Claim 

1 of the ’752 Patent. These claims also do not contain any inventive concept amounting to 

“significantly more” than the abstract idea. They do not inject any unconventional computer 

components or techniques. The claims simply apply the same abstract concept of data recognition 

and retrieval, and the Federal Circuit has been clear that the abstract idea itself cannot confer an 

inventive concept. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) 

(“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it 

is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than 

that ineligible concept.”). 

Because the claims of the Asserted Patents are altogether devoid of any “inventive 

concept,” they are patent-ineligible under § 101. See Alice, 573 U.S. at 222. 

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B. There Are No Claim Construction or Factual Disputes Preventing the Court 

From Ruling on This Issue at the Rule 12 Stage 

The issue of the patent eligibility is ready for the Court’s consideration because there are 

no factual or claim construction issues. This case is markedly different from Berkheimer and the 

line of cases where factual issues have been found to exist in Alice Step 2. In Berkheimer, the 

Federal Circuit noted that the specification explicitly “describe[d] an inventive feature that store[d] 

parsed data in a purportedly unconventional manner.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 

(Fed. Cir. 2018). The court added that “[t]he improvements in the specification, to the extent they 

are captured in the claims, create a factual dispute regarding whether the invention describes wellunderstood, routine, and conventional activities . . . so we must analyze the asserted claims and 

determine whether they capture these improvements.” Id. After finding that some claims “contain 

limitations directed to the arguably unconventional inventive concept described in the 

specification,” the court held that there was a question of fact as to whether those claims perform 

“well-understood, routine, and conventional activities.” Id. at 1370. 

It should be noted, however, that “[t]he Berkheimer [] cases do not stand for the proposition 

that a plaintiff can avoid dismissal simply by reciting in the complaint that the invention at issue 

is novel and that the inventive concept resides in the abstract idea itself.” First-Class Monitoring, 

LLC v. UPS of Am., Inc., 389 F. Supp. 3d 456, 471 (E.D. Tex. 2019). Furthermore, “[a]ny 

allegation about inventiveness, wholly divorced from the claims or the specification[,] does not 

defeat a motion to dismiss; only plausible and specific factual allegations that aspects of the claims

are inventive are sufficient.” Dropbox, Inc. v. Synchronoss Techs., Inc., 815 F. App’x 529, 538 

(Fed. Cir. 2020) (internal quotations omitted). 

Here, Symbology’s bare and implausible allegations in the First Amended Complaint 

cannot defeat this motion; otherwise, Rule 12(b)(6) would be rendered toothless against plaintiffs 

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who plead “magic words.” Patentee plaintiffs should not have the power to unilaterally declare 

that their claims are inventive. See Appistry, Inc. v. Amazon.com, Inc., 195 F. Supp. 3d 1176, 1183, 

n.6 (W.D. Wash. 2016) (aff’d sub nom. Appistry, LLC v. Amazon.com, Inc., 676 F. App’x 1008 

(Fed. Cir. 2017)) (“Plaintiff’s position is absurd. Requiring the Court to accept such facts or legal 

conclusions (even in the form of an early expert declaration) would permit any plaintiff to 

circumvent the § 101 inquiry on an early motion to dismiss or motion for judgment on the 

pleadings simply by including a few lines attesting to the novelty of the invention.”). What matters 

is what is claimed, and the Asserted Patents claim nothing more than the abstract idea of data 

recognition and retrieval. 

The Court’s ineligibility analysis should also disregard Symbology’s boilerplate legal 

conclusions about the inventive aspects of its asserted patent. See Simio, LLC v. FlexSim Software 

Prods., Inc., 983 F.3d 1353, 1365 (Fed. Cir. 2020) (“We disregard conclusory statements when 

evaluating a complaint under Rule 12(b)(6).”). For example, Symbology alleges that “[the 

Asserted Patents] provide improvements to conventional hardware and software systems and 

methods” and that the claimed features 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.” (Dkt. 22, ¶¶ 28-29.) 

These are not factual allegations—they are a legal conclusions by which Symbology attempts to 

unilaterally declare its patent is directed to eligible subject matter. See Simio, 983 F.3d at 1365 (“A 

statement that a feature ‘improves the functioning and operations of the computer’ is, by itself, 

conclusory.”). Additionally, what was or was not “well understood” is not pertinent to the § 101 

analysis. Two Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 

2017) (“Eligibility and novelty are separate inquiries”). 

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Symbology attempts to create a claim construction issue in its First Amended Complaint 

by suggesting that a narrowing claim amendment made during prosecution of a related, but not 

asserted, patent affects the eligibility analysis of the Asserted Patents. See Dkt. 22, ¶¶ 46-47. In 

particular, Symbology suggests that visual detection through “visual detection applications” may 

be subject to a limitation requiring that the detection “occur automatically and in the background.” 

See id. Even if true, this does not alter the patent-ineligibility of the Asserted Patents. First, 

Symbology has failed to propose any construction for the term “visual detection applications,” or 

even stated definitely that construction is needed. Id.; see, e.g., Jedi Tech., No. 1:16-cv-1055-

GMS, 2017 WL 3315279, at *6 (deciding § 101 eligibility without claim construction where 

plaintiff failed to offer any specific claim construction issues that would affect the analysis). 

Second, any proposed construction could not alter the patent-ineligibility analysis, and Symbology 

makes no effort to explain how it might. This is fatal to Symbology’s attempt to oppose a ruling 

on the pleadings. See Id. (“Here, [plaintiff] failed to identify any specific claims which, if 

scrutinized during claim construction, could impact the [§ 101] analysis. Thus, the court considers 

it appropriate to analyze patent eligibility at this stage in the present case.”) (citations omitted). 

The Asserted Patents are directed to the abstract idea of data recognition and retrieval. Whether 

the data recognition and retrieval occurs automatically or not does not change the fact that the 

Asserted Patents are directed to ineligible subject matter. Consequently, this motion is ripe for the 

Court’s consideration. 

Once Symbology’s conclusory legal allegations about the inventiveness of its asserted 

patent are properly disregarded, there is nothing left to preclude a determination of ineligibility at 

the motion to dismiss stage. Accordingly, Macy’s motion should be granted. 

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VII. CONCLUSION 

For the foregoing reasons, Macy’s respectfully requests that the Court dismiss 

Symbology’s claims in their entirety. Because Symbology has already amended its complaint 

once, and leave to further amend the complaint would be futile, Macy’s requests dismissal with 

prejudice. 

Respectfully submitted, 

THE WEBB LAW FIRM 

Dated: May 13, 2024 s/ Kent E. Baldauf, Jr. 

Kent E. Baldauf, Jr. 

Bryan P. Clark 

One Gateway Center 

420 Ft. Duquesne Blvd., Suite 1200 

Pittsburgh, PA 15222 

412.471.8815 

412.471.4094 (fax) 

kbaldaufjr@webblaw.com 

bclark@webblaw.com 

AND 

Michael C. Smith (TX ID No. 18650410) 

SCHEEF & STONE, LLP

113 East Austin Street 

Marshall, TX 75670 

903.938.8900 

michael.smith@solidcounsel.com

Attorneys for Defendant 

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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. 

THE WEBB LAW FIRM 

s/ Kent E. Baldauf, Jr. 

Kent E. Baldauf, Jr. 

CERTIFICATE OF SERVICE 

I hereby certify that on the 13th day of May, 2024, I electronically filed the foregoing 

DEFENDANT MACY’S INC.’S REWENED MOTION TO DISMISS FOR FAILURE TO 

STATE A CLAIM PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 12(b)(6) 

with the Clerk of Court using the CM/ECF system which sent notification to all counsel of record. 

THE WEBB LAW FIRM 

s/ Kent E. Baldauf, Jr. 

Kent E. Baldauf, Jr. 

Case 2:23-cv-00583-JRG Document 24 Filed 05/13/24 Page 26 of 26 PageID #: 375