IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

WIRELESSWERX IP LLC,

Plaintiff,

 vs. 

DHL EXPRESS (USA), INC., 

 Defendant.

Case No. 2:24-cv-00074 

 

JURY TRIAL DEMANDED

DEFENDANT DHL EXPRESS (USA), INC.’S RULE 12(B)(5) AND 12(B)(6) MOTION TO 

DISMISS FIRST AMENDED COMPLAINT

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TABLE OF CONTENTS

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

II. BACKGROUND ................................................................................................................ 1

III. LEGAL STANDARDS ...................................................................................................... 2

Dismissal is appropriate when there is insufficient service of process. .................. 2

Dismissal is appropriate when the complaint fails to state a plausible claim for 

relief. ....................................................................................................................... 2

Direct infringement must occur within the United States. ...................................... 3

Patent eligibility is regularly addressed at the Rule 12 stage.................................. 3

Alice two-step test determines whether a claim is directed to ineligible subject 

matter. ..................................................................................................................... 3

1. Alice Step One. ........................................................................................... 4

2. Alice Step Two. .......................................................................................... 4

IV. ARGUMENT ...................................................................................................................... 5

The Court Should Dismiss the First Amended Complaint Due to Plaintiff’s 

Untimely Service. ................................................................................................... 5

Plaintiff’s First Amended Complaint Fails to Adequately Plead Direct 

Infringement. ........................................................................................................... 6

The ’927 Patent Is Not Patentable Under Section 101. .......................................... 8

1. Claim 1 is representative. ............................................................................ 8

2. The claims are directed to the abstract idea of collecting and storing 

data and generating messages based on that data. ...................................... 9

3. The claim lacks an inventive concept. ...................................................... 17

V. CONCLUSION ................................................................................................................. 18

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TABLE OF AUTHORITIES

 Page(s) 

Cases

Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 

728 F.3d 1336 (Fed. Cir. 2013)..................................................................................................8

Affinity Labs of Tex., LLC v. Amazon.com, Inc., 

838 F.3d 1266 (Fed. Cir. 2016)............................................................................................4, 14

Alice Corp. Pty. v. CLS Bank Int'l, 

573 U.S. 208, S. Ct. 2347, 189 L. Ed. 2d 296 (2014) ..................................................3, 4, 5, 17

Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 

841 F.3d 1288 (Fed. Cir. 2016)..................................................................................................4

Apex Beam Techs. LLC v. TCT Mobile Int'l Ltd. .........................................................................6, 7

Apple, Inc. v. Ameranth, Inc., 

842 F.3d 1229 (Fed. Cir. 2016)....................................................................................14, 16, 18

Ashcroft v. Iqbal, 

556 U.S. 662 (2009) ...................................................................................................................2

Audatex N. Am., Inc. v. Mitchell Int’l, Inc., 

703 F. App’x 986 (Fed. Cir. 2017) ..........................................................................................10

Bell Atl. Corp. v. Twombly, 

550 U.S. 544 (2007) ...................................................................................................................2

Berkheimer v. HP Inc., 

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

Bilski v. Kappos, 

561 U.S. 593 (2010) ...................................................................................................................8

Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 

778 F. App’x 882 (Fed. Cir. 2019) ..........................................................................................11

BSG Tech LLC v. Buyseasons, Inc., 

899 F.3d 1281 (Fed. Cir. 2018)..................................................................................................5

CardioNet, LLC v. InfoBionic, Inc., 

955 F.3d 1358 (Fed. Cir. 2020)..................................................................................................4

Carimi v. Royal Caribbean Cruise Line, Inc., 

959 F.2d 1344 (5th Cir. 1992) ...................................................................................................2

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Cleveland Clinic Found. v. True Health Diagnostics LLC,

859 F.3d 1352 (Fed. Cir. 2017)..................................................................................................9

Commil USA, LLC v. Cisco Sys., Inc.,

575 U.S. 632 (2015)...................................................................................................................8

Content Extraction and Transmission LLC v. Wells Fargo Bank, NA,

776 F.3d 1343 (Fed. Cir. 2014)..........................................................................................3, 8, 9

Elec. Power Grp., LLC v. Alstom S.A.,

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

Enfish, LLC v. Microsoft Corp.,

822 F.3d 1327 (Fed. Cir. 2016)................................................................................................14

Ericsson Inc. v. TCL Commc'n Tech. Holdings Ltd.,

955 F.3d 1317 (Fed. Cir. 2020)................................................................................................15

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

671 F.3d 1317 (Fed. Cir. 2012)................................................................................................17

Hardy v. Carthage Indep. Sch. Dist.,

No. 2:19-CV-00277-JRG-RSP, 2022 WL 21747451 (E.D. Tex. Feb. 3, 2022)........................5

Intell. Ventures I LLC v. Cap. One Bank (USA),

792 F.3d 1363 (Fed. Cir. 2015)................................................................................................11

Intell. Ventures I LLC v. Symantec Corp.,

838 F.3d 1307 (Fed. Cir. 2016)................................................................................................17

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

790 F.3d 1343 (Fed. Cir. 2015)................................................................................................16

Interval Licensing LLC v. AOL, Inc.,

896 F.3d 1335 (Fed. Cir. 2018)................................................................................................15

King/Morocco v. Sterling McCall Lexus,

776 F. App'x 235 (5th Cir. 2019)...............................................................................................6

Kreimerman v. Casa Veerkamp,

22 F.3d 634 (5th Cir. 1994) .......................................................................................................2

Marcinkowska v. IMG Worldwide, Inc.,

342 F. App'x 632 (Fed. Cir. 2009).........................................................................................3, 6

Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc.,

566 U.S. 66 (2012)...................................................................................................................17

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McRO, Inc. v. Bandai Namco Games Am. Inc.,

837 F.3d 1299 (Fed Cir. 2016).................................................................................................14

MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp.,

420 F.3d 1369 (Fed. Cir. 2005)..................................................................................................3

Mortg. Application Techs., LLC v. MeridianLink, Inc.,

839 F. App'x 520 (Fed. Cir. 2021)...........................................................................................10

Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,

811 F.3d 1314 (Fed. Cir. 2016)............................................................................................3, 11

Quantum Stream Inc. v. Charter Commc'ns, Inc.,

309 F. Supp. 3d 171 (S.D.N.Y. 2018)......................................................................................10

Sanderling Mgmt. Ltd. v. Snap Inc.,

65 F.4th 698 (Fed. Cir. 2023) ................................................................................11, 12, 13, 14

SAP Am., Inc. v. InvestPic,

898 F.3d 1161 (Fed. Cir. 2018)..............................................................................................3, 5

SmartGene, Inc. v. Advanced Biological Lab’ys, SA,

555 F. App’x 950 (Fed. Cir. 2014) ..........................................................................................15

Synopsys, Inc. v. Mentor Graphics Corp.,

839 F.3d 1138 (Fed. Cir. 2016)..................................................................................................3

Trading Techs. Int’l, Inc. v. IBG, LLC,

921 F.3d 1378 (Fed. Cir. 2019)..................................................................................................4

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

874 F.3d 1329 (Fed. Cir. 2017)..............................................................................10, 15, 16, 18

Ultramercial, Inc. v. Hulu, LLC,

772 F.3d 709 (Fed. Cir. 2014)............................................................................................10, 18

Statutes

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

35 U.S.C. § 271(a) ...........................................................................................................................3

Other Authorities

Fed. R. Civ. P. 4...........................................................................................................................5, 6

Fed. R. Civ. P. 4(m).........................................................................................................................5

Fed. R. Civ. P. 12.........................................................................................................................1, 3

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Fed. R. Civ. P. 12(b)(5)................................................................................................................1, 2

Fed. R. Civ. P. 12(b)(6)............................................................................................................1, 2, 3

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I. INTRODUCTION

Pursuant to Federal Rule of Civil Procedure 12(b)(5) and 12(b)(6), DHL Express (USA), 

Inc. (“DHL”) respectfully moves this Court to dismiss WirelessWerx IP LLC’s (“Plaintiff”) first 

amended complaint (Dkt. No. 11.) in favor of DHL because there is no evidence of direct 

infringement in the United States and U.S. Patent No. 8,862,927 (“the ’927 patent”) is invalid 

under 35 U.S.C. § 101. Alternatively, the Court should dismiss the first amended complaint for 

improper service.1

II. BACKGROUND

Based on its averments, Plaintiff is the owner by assignment of the ’927 patent, entitled 

“Methods and Systems to Monitor Persons Utilizing Wireless Media.” Dkt. 11. Plaintiff asserts 

that single patent against DHL. Id. 

The ’927 patent is directed to the abstract idea of providing information – in this case, a 

processing function – based on meeting a condition, e.g., matching a GPS location indication with 

a geographic location. As further explained below, claim 1, which is the only independent claim, 

is representative of the ’927 patent claims. The text of the claim 1 is reproduced below.

1. A method of selectively communicating with a first portable device within predefined geographical zones, comprising:

defining a geographical zone utilizing latitude and longitude attributes;

loading data representative of the geographical zone to the first portable device, 

wherein the data representative of the geographical zone includes the latitude and 

longitude attributes mapped to corresponding pixels in a pixilated computer image 

of the geographical zone stored in the first portable device;

1

DHL does not believe it necessary to file this motion to dismiss because the Court has not granted 

Plaintiff’s motion to enlarge time to serve and Plaintiff has not shown good cause in that motion. 

DHL has opposed that motion to enlarge time and asked that the Court dismiss the case on that 

ground. However, DHL files this motion out of an abundance of caution in accordance with Rule 

12 statutory time limits. 

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providing the first portable device with a ground positioning unit receiver, the 

ground positioning unit receiver permitting the first portable device to obtain 

geographical coordinates of the position of the first portable device;

configuring the first portable device to determine the location of the first portable 

device in relation to the pixilated computer image of the geographical zone by 

determining a relative position of the geographical coordinates and the pixel data 

representative of the geographical zone;

programming a microprocessor in the first portable device to determine the 

occurrence of an event related to a status of the portable device in relation to the 

geographical zone; and

permitting the microprocessor in the first portable device to transmit an event 

message indicating the occurrence of the event to a second portable device.

’927 patent at cl. 1.

III. LEGAL STANDARDS

Dismissal is appropriate when there is insufficient service of process.

Rule 12(b)(5) authorizes a party to file a motion to dismiss for insufficient service of 

process. Fed. R. Civ. P. 12(b)(5). Under Rule 12(b)(5), a district court has “broad discretion to 

dismiss an action for ineffective service of process.” Kreimerman v. Casa Veerkamp, 22 F.3d 634, 

645 (5th Cir. 1994). The burden of demonstrating the validity of service when an objection is made 

lies with the party making service. Carimi v. Royal Caribbean Cruise Line, Inc., 959 F.2d 1344, 

1346 (5th Cir. 1992).

Dismissal is appropriate when the complaint fails to state a plausible claim 

for relief.

Under Rule 12(b)(6), the Court should dismiss a claim when the complaint fails to state a 

claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). “To survive a motion to dismiss, 

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) (quoting Bell Atl. Corp. v. 

Twombly, 550 U.S. 544, 570 (2007)). Patent subject matter eligibility under section 101 is a 

question of law particularly suitable for resolution at the pleading stage of a patent litigation matter. 

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See Content Extraction and Transmission LLC v. Wells Fargo Bank, NA, 776 F.3d 1343 (Fed. Cir. 

2014).

Direct infringement must occur within the United States.

Direct infringement under § 271(a) “is limited to infringing activities that occur within the 

United States.” MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 

1375 (Fed. Cir. 2005). The Court should dismiss the complaint if the pleadings are “not tied to any 

infringing activities in the United States.” Marcinkowska v. IMG Worldwide, Inc., 342 F. App'x 

632, 636 (Fed. Cir. 2009) (affirming district court’s order dismissing direct infringement claims). 

Patent eligibility is regularly addressed at the Rule 12 stage.

“Patent eligibility under [§ 101] is ultimately an issue of law[.]” Berkheimer v. HP Inc., 

881 F.3d 1360, 1365 (Fed. Cir. 2018). Though “[t]he § 101 inquiry may contain underlying factual 

issues,” resolution of fact issues is not required to determine patent-eligibility. Mortg. Grader, Inc. 

v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (citations and quotation 

marks omitted) (emphasis in original). “The § 101 inquiry must focus on the language of the 

Asserted Claims themselves.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 

2016). Therefore, where claim construction is not necessary, courts may determine subject-matter 

eligibility at the pleading stage of a patent case. SAP Am., Inc. v. InvestPic, 898 F.3d 1161, 1166 

(Fed. Cir. 2018) (Eligibility under § 101 “may be, and frequently has been, resolved on a Rule 

12(b)(6) or (c) motion where the undisputed facts . . . require a holding of ineligibility under the 

substantive standards of law”).

Alice two-step test determines whether a claim is directed to ineligible 

subject matter.

The Supreme Court has explained that “[w]e have long held that ... [l]aws of nature, natural 

phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 

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208, 216 S. Ct. 2347, 189 L. Ed. 2d 296 (2014). In Alice, the Supreme Court set forth a two-step 

test for determining whether a claim is directed to such ineligible subject matter.

1. Alice Step One. 

The first step is to “determine whether the claims at issue are directed to one of those 

patent-ineligible concepts,” e.g., an abstract idea. Id. at 217. “Alice step one presents a legal 

question that can be answered based on the intrinsic evidence” and “does not require an evaluation 

of the prior art or facts outside of the intrinsic record.” CardioNet, LLC v. InfoBionic, Inc., 955 

F.3d 1358, 1372-74 (Fed. Cir. 2020).

The step one analysis typically begins “with an examination of eligible and ineligible 

claims of a similar nature from past cases.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 

1288, 1295 (Fed. Cir. 2016). “Under this inquiry, [courts] evaluate the focus of the claimed 

advance over the prior art to determine if the character of the claim as a whole, considered in light 

of the specification, is directed to excluded subject matter.” Trading Techs. Int’l, Inc. v. IBG, LLC, 

921 F.3d 1378, 1384 (Fed. Cir. 2019) (quotation omitted).

Where a claim recites “a desired function or outcome, without providing any limiting detail 

that confines the claim to a particular solution to an identified problem,” the “functional nature of 

the claim confirms that it is directed to an abstract idea.” Affinity Labs of Tex., LLC v. Amazon.com, 

Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The “essentially result-focused, functional character 

of claim language has been a frequent feature of claims held ineligible under § 101.” Elec. Power 

Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016).

2. Alice Step Two.

If a claim is directed to ineligible subject matter, the second step is to “determine whether 

[any] additional elements transform the nature of the claim into a patent-eligible application” by 

reciting “an inventive concept—i.e., an element or combination of elements that is sufficient to 

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ensure that the patent in practice amounts to significantly more than a patent upon the ineligible 

concept itself.” Alice, 573 U.S. at 217–18 (quotations omitted). Even if “the techniques claimed 

are groundbreaking, innovative, or even brilliant, ... that is not enough for eligibility” if “the

advance lies entirely in the realm of abstract ideas.” Invest Pic., 898 F.3d at 1163 (quotations 

omitted). “What is needed is an inventive concept in the non-abstract application realm.” Id. at 

1168.

To the extent claims include non-abstract elements, they are still ineligible if they recite 

“well understood, routine, conventional activities previously known to the industry.” Alice, 573 

U.S. at 225 (quotation omitted). The “inquiry is not whether the claimed invention as a whole is 

unconventional or non-routine,” but “whether the claim limitations other than the invention’s use 

of the ineligible concept to which it was directed were well-understood, routine and conventional.” 

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

IV. ARGUMENT

The Court Should Dismiss the First Amended Complaint Due to Plaintiff’s 

Untimely Service.

As outlined in DHL’s response in opposition to Plaintiff’s motion to enlarge time to serve, 

Plaintiff did not satisfy proper service until 172 days after filing the complaint. Dkt. 9. at 1. Rule 

4 of the Federal Rules of Civil Procedure governs the time limit for service, which states: 

If a defendant is not served within 90 days after the complaint is 

filed, the court--on motion or on its own after notice to the plaintiff-

-must dismiss the action without prejudice against that defendant or 

order that service be made within a specified time. But if the plaintiff 

shows good cause for the failure, the court must extend the time for 

service for an appropriate period.

Fed. R. Civ. P. 4(m). “Rule 4 permits a district court to dismiss an action without prejudice if a 

defendant is not served within 90 days after the complaint is filed, unless the plaintiff can show 

good cause for the failure.” Hardy v. Carthage Indep. Sch. Dist., No. 2:19-CV-00277-JRG-RSP, 

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2022 WL 21747451 (E.D. Tex. Feb. 3, 2022) (citing King/Morocco v. Sterling McCall Lexus, 776 

F. App’x 235, 235 (5th Cir. 2019)). 

For the reasons outlined in DHL’s response in opposition to Plaintiff’s motion to enlarge 

time, Plaintiff’s failed to show good cause. Filing an amended complaint has not cured Plaintiff of 

its insufficient service. Thus, the Court should deny Plaintiff’s motion to enlarge time to serve and 

dismiss the complaint for failing to comply with Rule 4. 

Plaintiff’s First Amended Complaint Fails to Adequately Plead Direct 

Infringement. 

Even accepting well-pled facts as true and viewing all facts in the light most favorable to 

the Plaintiff, the first amended complaint fails to adequately plead direct infringement inside the 

United States. Plaintiff has, of course, pled in a conclusory manner that Defendant directly 

infringes the ’927 patent “by making, using, testing, selling, offering for sale and/or importing into 

the United States Defendant’s Accused Products.” Dkt. 11 at 13 (emphasis added). Plaintiff 

attached a claim chart to its first amended complaint to “describe[] how the elements of an 

exemplary claim 1 from the ’927 Patent are infringed by the Accused Products.” Id. But Plaintiff’s 

claim chart is “not tied to any infringing activities in the United States.” Marcinkowska, 342 F. 

App'x at 636. In fact, the face of the claim chart shows it covers activities in Europe.

In Apex Beam Techs. LLC v. TCT Mobile Int’l Ltd., this Court denied the defendants motion 

to dismiss direct infringement. No. 2:21-CV-00438-JRG, 2024 WL 38279, at *2–3 (E.D. Tex. 

Jan. 3, 2024). This Court noted “that to survive this Motion to Dismiss Plaintiff need only place 

the Defendants on notice of what activity is being accused of infringement, not prove its case.” Id. 

at *3. This Court denied the defendant’s motion because “the referenced content on www.tcl.com

supports Plaintiff's allegation that Defendants directly infringe the Asserted Patents.” Id.

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Here, the facts are the opposite of that in Apex Beam. Plaintiff’s claim chart cites a slide 

deck for each element of claim 1. Dkt. 11, Ex. B. The cited URL in Plaintiff’s claim chart is 

“https://www.dhl.com/content/ dam/dhl/global/csi/documents/pdf/glo-csiinnovation-in-practiceeurope-presentation-deck.pdf.” Id. (emphasis added). In stark contrast to the URL in Apex Beam, 

the slide deck’s URL demonstrates that the alleged activity occurs in Europe, not the United States. 

Accepting these well-pled facts as true and viewing all facts in the light most favorable to the 

Plaintiff, a claim of direct infringement is not plausible on its face. There are simply no facts pled 

to show infringing activity in the United States in Plaintiff’s first amended complaint. Plaintiff has 

failed to 

“place the Defendants on notice of what activity is being accused of infringement” in the United 

States. Apex Beam, 2024 WL 38279, at *3. 

Plaintiff attempts to save its complaint by claiming a document that states “‘international 

express delivery are using smart glasses at its freight hubs ... at Los Angeles Airport, USA.,’ []

unequivocally proving that DHL ... uses ... any patented invention, within the United States.” 

Dkt. 11-2 at 4. That is not true. First, all this demonstrates is that DHL may use smart glasses in 

the United States. But Plaintiff has not cited any facts that using smart glasses alone infringe the 

’927 patent. And the relied on document only references smart glasses on one slide: 

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Dkt. 11-2 at 8. Additionally, the claim chart still exclusively cites a European website in its claim 

chart. Dkt. 11-2.

Taking the pleadings as true, all Plaintiff has only possibly shown that DHL may use smart 

glasses with location identification in the United States. But “a plaintiff cannot assert a plausible 

claim for infringement ... by reciting the claim elements and merely concluding that the accused 

product has those elements. There must be some factual allegations that, when taken as true, 

articulate why it is plausible that the accused product infringes the patent claim.” Bot M8 LLC v. 

Sony Corp. of Am., 4 F.4th 1342, 1353 (Fed. Cir. 2021). And Plaintiff has not provided any factual 

allegations for the vast majority of claim elements that DHL performs these acts in the United 

States. Thus, the Court should dismiss Plaintiff’s claims of direct infringement for failing to plead 

facts supporting DHL’s infringement in the United States. 

The ’927 Patent Is Not Patentable Under Section 101.

This Court should declare the ’927 patent ineligible under 35 U.S.C. § 101 because—by 

its plain, undisputed language—it is directed to an abstract idea and does not otherwise identify an 

inventive concept. Ineligibility equates to invalidity, see Accenture Glob. Servs., GmbH v. 

Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013), which serves as a total defense 

to infringement because “there is no patent to be infringed.” Commil USA, LLC v. Cisco Sys., Inc., 

575 U.S. 632, 644 (2015). The validity of patent claims under section 101 is thus a “threshold” 

matter for courts to determine. Bilski v. Kappos, 561 U.S. 593, 602 (2010). Upon finding that the 

’927 Patent is invalid, the Court should dismiss Plaintiff’s first amended complaint with prejudice. 

1. Claim 1 is representative. 

When considering whether a patent’s claims are directed to an abstract idea, district courts 

need not analyze each claim individually. See Content Extraction, 776 F.3d at 1348. Rather, district 

courts may consider representative claims when they “are ‘substantially similar and linked to the 

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same abstract idea.’” See id. For this purpose, additional limitations based on “well-known, 

routine, and conventional functions” do not differentiate a claim from the representative claim, 

because simply making a claim narrower in scope is not a difference that “transforms the 

corresponding claim into a patent-eligible application of the otherwise ineligible abstract idea.” 

See id. at 1349.

As Plaintiff’s first amended complaint states, claim 1 is representative of the Asserted 

Claims. Dkt. 11 at 5. A court may analyze representative claims for patent eligibility where all the 

asserted and challenged claims are substantially similar and linked to the same purported abstract 

idea. Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 

2017). Here, claim 1 is the ’927 patent’s only independent claim. The dependent claims merely 

add conventional steps and additional outputs, and do not alter the “focus” of the Asserted Claims. 

Accordingly, claim 1 is representative of all Asserted Claims. For example, claim 2 is equally 

directed to tracking an event and executing an operation once the event occurs. 

2. The claims are directed to the abstract idea of collecting and storing 

data and generating messages based on that data.

The ’927 patent is directed to the abstract idea of providing information – in this case, a 

processing function – based on meeting a condition, e.g., matching a GPS location indication with 

a geographic location. The abstractness of the ’927 patent is demonstrated by (1) similar cases 

finding that claims directed to targeted advertising are not patent-eligible; (2) the ’927 patent’s 

mere recitation of result-based functional language; and (3) the failure of the claims to provide any

improvement to computer functionality or any solution to a problem in the software arts.

(a) The Federal Circuit has held similar claims invalid under 101.

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The claims are invalid because they are directed to nothing more than providing 

information based on meeting a condition—a concept that the Federal Circuit has held to be 

unpatentable abstract ideas. 

The Federal Circuit has repeatedly “held that a process that can be and has been performed 

by humans . . . is an abstract idea”—even if the claim involves an automated or computerized 

process. Mortg. Application Techs., LLC v. MeridianLink, Inc., 839 F. App’x 520, 526 (Fed. Cir. 

2021). Indeed, “[t]he mere automation of” a function “does not render the claims any less 

abstract.” Id. at 526; see also Audatex N. Am., Inc. v. Mitchell Int’l, Inc., 703 F. App’x 986, 989 

(Fed. Cir. 2017) (finding claims abstract that “merely use[] a computer and generic components as 

tools to collect . . . data and generate reports”). Even where “certain additional limitations . . . add 

a degree of particularity,” courts consider “the concept embodied by the majority of the 

limitations” to determine whether the asserted claim describes an abstract idea. Ultramercial, Inc. 

v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).

The ’927 patent is directed to an abstract idea because “the claims [] here disclose steps 

that could be performed by a human operator or in the human mind.” Quantum Stream Inc. v. 

Charter Commc’ns, Inc., 309 F. Supp. 3d 171, 187 (S.D.N.Y. 2018). The exemplary claim 

essentially proposes that, instead of “[a] human mind evaluat[ing] attributes or other criteria (e.g., 

the user's age), deriv[ing] from these tailored secondary advertising content, and implement[ing]

these selections by using a simple device that inserts digital advertising content into the stream of 

primary content[,] [the] tasks that are implemented by generic computer system.” See id. at 187–

88; see also Two-Way Media, 874 F.3d at 1337 (“Claims directed to generalized steps to be 

performed on a computer using conventional computer activity are not patent eligible.”). Viewed 

“as a whole,” see Elec. Power Grp., 830 F.3d at 1353, the claimed steps of the ’927 patent are 

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analogous to a hiker determining their location on a map, observing a fixed range around their 

location, and notifying a second person when something happens near the hiker. See Mortg. 

Grader, 811 F.3d at 1324 (asserted claims directed toward an abstract idea where “[t]he series of 

steps . . . could all be performed by humans without a computer”); see also Bridge & Post, Inc. v. 

Verizon Commc’ns, Inc., 778 F. App’x 882, 887 (Fed. Cir. 2019) (“The concept [of targeted 

advertising] is a ‘fundamental practice’ that dates back to newspaper advertisements.”) (quoting

Intell. Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)).

Here, the ’927 patent’s “claims are directed to the abstract idea of providing information –

in this case, a processing function – based on meeting a condition, e.g., matching a GPS location 

indication with a geographic location.” Sanderling Mgmt. Ltd. v. Snap Inc., 65 F.4th 698, 703 (Fed. 

Cir. 2023). The exemplary claim essentially proposes that common computer components to 

“determine the occurrence of an event related to a status of the portable device in relation to the 

geographical zone” and “transmit an event message indicating the occurrence of the event.” ’927 

patent at cl. 1. The Federal Circuit has repeatedly held that the “distribution of information is an 

abstract idea.” Sanderling, 65 F.4th at 703; see also Intell. Ventures I LLC v. Cap. One Bank, 792 

F.3d 1363, 1369 (Fed. Cir. 2015) (“Providing this minimal tailoring – e.g., providing different 

newspaper inserts based on the location of the individual – is an abstract idea.”).

The ’927 patent is directed to the exact same abstract idea that the Federal Circuit ruled 

was unpatentable in Sanderling. In Sanderling, the Federal Circuit found patents that were 

“directed to a method using distribution rules to load digital image branding functions to users 

when certain conditions are met” unpatentable. Sanderling, 65 F.4th at 701, 704. The Federal 

Circuit noted that “[t]he claims of the asserted patents are not directed to a specific improvement 

in computer functionality but, instead, to the use of computers as a tool; here, a tool to identify 

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when a condition is met and then to distribute information based on satisfaction of that condition.” 

Id. at 703. The Federal Circuit held that the claims were “directed to the abstract idea “of providing 

information – in this case, a processing function – based on meeting a condition, e.g., matching a 

GPS location indication with a geographic location.” Id. The Federal Circuit noted that “[e]ven 

though the information being distributed is of a particular variety – here, digital imaging processing 

based on a distribution rule that determines when a condition is met – distribution of information 

is an abstract idea.” Id.

The similarities between the representative claim and claim 1 of U.S. Patent No. 9,355,412

(“’412 patent”) from Sanderling is further evident from the following chart:

’927 Patent claim ’1 ’412 patent claim 1

[1.pre] A method of selectively communicating 

with a first portable device within pre-defined 

geographical zones, comprising:

[1.pre] A computerized method of 

distributing a digital image processing 

function, said computerized method 

comprising:

[1.a] using at least one server having at least 

one hardware processor and over a network 

to access a database storing at least one 

digital image processing function associated 

with at least one distribution rule defining a 

geographic location;

[1.b] receiving, over said network, a Global 

Positioning System (GPS) location indication 

from each of a plurality of mobile devices, 

each said location indication is determined 

according to a GPS module executed by one 

of said plurality of mobile devices;

[1.c] matching, using said at least one 

hardware processor, each said GPS location 

indication with said geographic location; and

[1.d] automatically forwarding, over said 

network and in response to receiving said 

Global Position System (GPS) location 

[1.a] defining a geographical zone utilizing 

latitude and longitude attributes;

[1.b] loading data representative of the 

geographical zone to the first portable device, 

wherein the data representative of the 

geographical zone includes the latitude and 

longitude attributes mapped to corresponding 

pixels in a pixilated computer image of the 

geographical zone stored in the first portable 

device;

[1.c] providing the first portable device with a 

ground positioning unit receiver, the ground 

positioning unit receiver permitting the first 

portable device to obtain geographical 

coordinates of the position of the first portable 

device;

[1.d] programming a microprocessor in the first 

portable device to determine the occurrence of 

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an event related to a status of the portable 

device in relation to the geographical zone; and

[1.e] permitting the microprocessor in the first 

portable device to transmit an event message 

indicating the occurrence of the event to a 

second portable device.

indication, said at least one digital image 

processing function to at least one mobile 

device of said plurality of mobile devices, 

said at least one mobile device having a 

respective said GPS location indication 

which matches said geographic location;

[1.e] wherein said at least one image 

processing function is set to be used by an 

application executed on said at least one 

mobile device to process a digital image 

designated at said at least one mobile device 

to create an output digital image.

As Plaintiff’s first amended complaint concedes, “[t]he Claims of the ’927 patent are 

directed to improvements in PDA event (exception) based information and reporting for wireless 

device tracking.” Dkt. 11 at 7. Just like the ’412 patent, the ’927 patent does nothing more than 

the abstract idea of distributing information (reporting for wireless device tracking) once a 

condition is met (PDA event). The ’927 patent simply “transmits an event message indicating the 

occurrence of the event.” ’927 patent at cl. 1. That “event [is] related to a status of the portable 

device in relation to the geographical zone.” Id. This event is almost identical to the condition in 

Sanderling, “matching a GPS location indication with a geographic location.” 65 F.4th at 703. 

Further, Plaintiff’s contention that the claims are eligible because the “specification further 

describes the prior art as containing PDA that continuously track” so “the focus is limited to event 

(exception) based information and reporting and does not relate in any manner to a traditional, 

continuous tracking” does not transform an abstract idea into patent eligible subject matter. Dkt. 

11 at 10. Nor does Plaintiff’s claim that the ’927 patent is “patent eligible for at least including the 

additional part beyond the Focus that a pixilated image is created upon the occurrence of an event 

and transmitted to another device.” Id. at 13. In Sanderling, the patent was held abstract “[e]ven 

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though the information being distributed is of a particular variety – [], digital imaging processing 

based on a distribution rule that determines when a condition is met.” Sanderling, 65 F.4th at 703. 

Thus, the fact that the ’927 patent distributes information “of a particular variety” does not make 

the subject matter patent eligible. Id. Instead, the ’927 patent simply distributes the vague and 

abstract idea of an “event.” 

Moreover, the ’927 patent claims are directed to an abstract idea because the Federal 

Circuit has held as ineligible patents in which “the focus of the claims is not on such an 

improvement in computers as tools, but on certain independently abstract ideas that use computers 

as tools.” Elec. Power Grp., 830 F.3d at 1353–54. For technology-based claims, courts consider 

“whether the claims ‘focus on a specific means or method that improves the relevant technology’ 

or are ‘directed to a result or effect that itself is the abstract idea and merely invoke generic 

processes and machinery.’” Apple, 842 at 1241 (quoting McRO, Inc. v. Bandai Namco Games Am. 

Inc., 837 F.3d 1299, 1314 (Fed Cir. 2016)). 

Nowhere in the claims of the ’927 patent is there any disclosure or recitation of “an 

improvement to computer functionality.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 

(Fed. Cir. 2016). For example, claim 1 recites generic computer and computer peripheral 

components—a “device,” “receiver,” and “microprocessor.” ’927 patent at cl. 1. In addition, the 

’927 patent also clearly envisions the use of non-specialized, personal computers, which are not 

improved, upgraded, or altered by the purported invention. See id. at 31:11–15 (“the PDA is any 

wireless or handheld device that can be equipped with enough computing power, memory and 

communications mechanisms as to be able to perform the operations described herein.”); id. at 

31:15–18 (“the PDA can be a cellular phone, a pager, a Blackberry device, personal data assistant, 

a laptop, a notebook, a digital music player, and any other portable device.”); id. at 9:51-55 (“The 

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data acquisition module 242 may include a global positioning system (GPS) receiver 215, a data 

system microprocessor 212, a memory module 280, and a communications link 244.”). 

The hardware devices and the software as described merely automate the manual process 

of data collection and distribution. The recited pieces of hardware are invoked merely as tools in 

these abstract processes. See SmartGene, Inc. v. Advanced Biological Lab’ys, SA, 555 F. App’x

950, 955 (Fed. Cir. 2014) (claim ineligible where it “does not purport to identify new computer 

hardware” and only “assumes the availability of physical components”); see also Ericsson Inc. v. 

TCL Commc'n Tech. Holdings Ltd., 955 F.3d 1317, 1328 (Fed. Cir. 2020) (“Merely claiming ‘those 

functions in general terms, without limiting them to technical means for performing the functions 

that are arguably an advance,’ does not make a claim eligible at step one.”) (citing Elec. Power 

Grp., 830 F.3d at 1351). Thus, the ’927 patent is directed to an abstract idea. 

(b) The claims recite only result-based functional language.

Next, the Federal Circuit has consistently held that claims that recite “result-based 

functional language” without sufficiently describing “how to achieve these results” are drawn to 

an abstract idea. See, e.g., Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 

1337 (Fed. Cir. 2017) (finding claim was directed to an abstract idea where “[t]he claim requires 

the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating 

records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”); 

Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018) (stating that “softwarebased claimed inventions . . . have failed to pass section 101 muster, because they did not recite 

any assertedly inventive technology for improving computers as tools and/or because the elements 

of the asserted invention were so result-based that they amounted to patenting the patent-ineligible 

concept itself”); Elec. Power Grp., 830 F.3d at 1353 (holding patent claims ineligible because they 

lacked “any requirements for how the desired result is achieved” and stating that “the essentially 

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result-focused, functional character of claim language has been a frequent feature of claims held 

ineligible under § 101”) (emphasis in original); Affinity Labs of Tex., LLC, 838 F.3d at 1269 (“At 

that level of generality, the claims do no more than describe a desired function or outcome, without 

providing any limiting detail that confines the claim to a particular solution to an identified 

problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, 

not to a concrete embodiment of that idea.”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244 

(Fed. Cir. 2016) (“[A] claim that merely describes an ‘effect or result dissociated from any method 

by which [it] is accomplished’ is not directed to patent-eligible subject matter.”) (quoting Internet 

Pats. Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)).

Here, the claim 1 recites the result-based functional language of, among other things, 

“defining a geographical zone,” “loading data representative of the geographical zone,” 

“providing the first portable device with a ground positioning unit receiver,” “configuring the first 

portable device to determine the location of the first portable device,” “programming a 

microprocessor in the first portable device to determine the occurrence of an event,” and 

“permitting the microprocessor in the first portable device to transmit an event message[.]” ’927

patent at cl. 1 (emphases added). The claim does not help explain how these results are to be 

achieved, except to say that they are carried out via various generic computer systems such as 

“device,” “receiver,” and “microprocessor.” Id. 

The ’927 patent’s hand-waving fails to explain how the invention communicates between 

computers, stores data, or determines when events occur, and thus fails to inform the claim’s 

unambiguous, result-based functional language. It is directed to an abstract idea for this reason. 

See, e.g., Two-Way Media, 874 F.3d at 1337.

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For all these reasons, the ’927 patent is directed to patent-ineligible subject matter under 

Alice step one.

3. The claim lacks an inventive concept.

The ’927 Patent’s claim also fails step two of the Alice test because it lacks an inventive 

concept sufficient to transform the claimed abstract ideas into patent-eligible subject matter. 

To pass Alice’s second step in the context of claims involving computers, a claim must 

include “additional features” ensuring that the claim does “more than simply stat[e] the abstract 

idea while adding the words ‘apply it with a computer.’” Alice, 573 U.S. at 223. A claim is not 

meaningfully limited if it includes only insignificant pre- or post-solution activity, such as storing 

or retrieving data, or identifying a relevant audience, category of use, field of use, or technological 

environment. Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66, 84 (2012). And 

“[s]imply appending conventional steps, specified at a high level of generality,” which are “well 

known in the art” and consist of “well-understood, routine, conventional activit[ies]” previously 

engaged in by workers in the field, cannot supply the inventive concept. Intell. Ventures I LLC v. 

Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016); 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.”).

As stated above in Section IV.C.2, the claims of the ’927 patent merely recite result-based 

functional language without explaining how to achieve the desired results beyond the use of 

conventional and well-known computers. The ’927 patent’s specification contemplates the use of 

generic, non-specialized, computers for its portable device, stating that the “PDA is any wireless 

or handheld device that can be equipped with enough computing power, memory and 

communications mechanisms as to be able to perform the operations described herein.” ’927 patent 

at 31:11–15. The ’927 lists a number of ordinary devices, stating “the PDA can be a cellular phone, 

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a pager, a Blackberry device, personal data assistant, a laptop, a notebook, a digital music player, 

and any other portable device.” Id. at 31:15–18. Further, the specification of the ’927 patent also 

admits that the remaining hardware utilized in the claims comprises can be practiced using any of 

a number of ordinary devices, stating that “[t]he data acquisition module 242 may include a global 

positioning system (GPS) receiver 215, a data system microprocessor 212, a memory module 280, 

and a communications link 244.” Id. at 9:51-55.

Because the asserted patent merely discloses using well-known and conventional 

technology or software modules to implement an abstract idea, it has no inventive concept that 

would transform the recited abstract idea into patent-eligible subject matter. See Apple, 842 F.3d 

at 1242–43 (“The patents can readily be understood as adding conventional computer components 

to well-known business practices. The Supreme Court and this court have repeatedly determined 

that such claims are invalid under § 101.”) (internal citations omitted); Ultramercial, Inc., 772 

F.3d at 715 (“We conclude that the limitations of the . . . claims do not transform the abstract idea 

that they recite into patent-eligible subject matter because the claims simply instruct the 

practitioner to implement the abstract idea with routine, conventional activity.”); Two-Way Media, 

874 F.3d at 1339 (“[M]erely reciting an abstract idea performed on a set of generic computer 

components . . . would ‘not contain an inventive concept.’”) (internal citations omitted). Thus, 

because the elements of the claim either individually or as an ordered combination do not provide 

any inventive concept to transform the abstract ideas claimed by the ’927 patent, the claims of the 

’927 patent should be found patent-ineligible.

V. CONCLUSION

For these reasons, DHL asks this Court to grant its motion to dismiss the first amended

complaint for failure to state a claim because the claims of the ’927 patent are invalid, and Plaintiff 

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did not plead facts to establish infringement in the United States. Alternatively, the Court should 

dismiss the first amended complaint for improper service.

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Dated: September 10, 2024 Respectfully submitted,

By: /s/ Rex A. Mann

 Rex. A Mann 

Texas Bar No. 24075509 

rmann@winston.com 

WINSTON & STRAWN LLP

2121 N. Pearl Street, Suite 900 

Dallas, TX 75201 

(214) 453-6500 (telephone) 

(214) 453-6400 (telecopy) 

Counsel for Defendant 

CERTIFICATE OF SERVICE

I certify that on September 10, 2024, I caused a true and correct copy of the foregoing to 

be sent to all parties via their counsel of record via e-file. 

/s/ Rex A. Mann

Rex A. Mann

CERTIFICATE OF SERVICE 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.

/s/ Rex A. Mann

Rex A. Mann

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