in the united states district court for the ......2015/08/21 · checkster llc, defendant. civil...

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA

SKILLSURVEY, INC., Plaintiff, v. CHECKSTER LLC, Defendant.

Civil Action No.: 2:15-cv-01766-CDJ

JURY DEMANDED

[PROPOSED] ORDER

Having considered Defendant Checkster LLC’s MOTION TO DISMISS PURSUANT

TO FEDERAL RULE OF CIVIL PROCEDURE 12(b)(6) and all related briefing,

IT IS HEREBY ORDERED this _____ day of ___________, 2015 that the motion is

GRANTED, and Plaintiff SkillSurvey’s first amended complaint is dismissed with prejudice.

By the Court:

Dated: _______________________________________ Hon. C. Darnell Jones II

United States District Court Judge

Case 2:15-cv-01766-CDJ Document 16 Filed 08/21/15 of 32


SKLILLSURVEY, INC.,

Plaintiff,

v.

CHECKSTER LLC,

Defendant.


JURY DEMANDED

DEFENDANT CHECKSTER LLC’S MOTION TO DISMISS PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 12(b)(6)

Pursuant to Federal Rule of Civil Procedure 12(b)(6), defendant Checkster LLC

(“Checkster”) respectfully moves this Court to dismiss the first amended complaint filed by

plaintiff SkillSurvey, Inc. (“SkillSurvey”) on the ground that U.S. Patent No. 8,894,416 is invalid

under 35 U.S.C. § 101 for failure to recite patentable subject matter. The first amended

complaint should be dismissed because its only cause of action is for infringement of an invalid

patent. Checkster’s points and authorities in support of its motion are set forth in the

accompanying brief. Checkster hereby requests oral argument on its motion.

Dated: August 21, 2015

HANGLEY ARONCHICK SEGAL PUDLIN & SCHILLER

By: /s/ Michele D. Hangley Michele D. Hangley (I.D. No. 82779) Jessica R. O’Neill (I.D. No. 205934) One Logan Square, 27th Floor Philadelphia, PA 19103 Telephone: (215) 568-6200

Of counsel: FENWICK & WEST LLP Laurence F. Pulgram (Pro Hac Vice pending) Adam Lewin (Pro Hac Vice pending) 555 California St., 12th Floor San Francisco, CA 94104 Telephone: (415) 875-2300 Attorneys for Defendant Checkster LLC



SKLILLSURVEY, INC.,

Plaintiff,

v.

CHECKSTER LLC,

Defendant.


JURY DEMANDED

DEFENDANT CHECKSTER LLC’S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO DISMISS

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

HANGLEY ARONCHICK SEGAL PUDLIN & SCHILLER Michele D. Hangley (I.D. No. 82779) Jessica R. O’Neill (I.D. No. 205934) One Logan Square, 27th Floor Philadelphia, PA 19103 Telephone: (215) 568-6200 Of counsel:

FENWICK & WEST LLP Laurence F. Pulgram (Pro Hac Vice pending) Adam Lewin (Pro Hac Vice pending) 555 California St., 12th Floor San Francisco, CA 94104 Telephone: (415) 875-2300 Attorneys for Defendant Checkster LLC



i

TABLE OF CONTENTS

Page

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

II. STATEMENT OF FACTS ..................................................................................................2

A. The Parties ...............................................................................................................2

B. The ’416 Patent ........................................................................................................3

1. The Written Description ..............................................................................3

2. The Claims ...................................................................................................6

III. ARGUMENT .....................................................................................................................10

A. The ’416 Patent Claims Merely the Abstract Idea of Soliciting Job Applicant References Before Interviewing Candidates, Which Is Not Eligible for Patent Protection as a Matter of Law..................................................10

1. Abstract Ideas Are and Have Long Been Ineligible Subject Matter .........................................................................................................10

2. Alice Step 1: The ’416 Patent Is Drawn to an Abstract Idea .....................12

3. Alice Step 2: The ’416 Claim Elements Have No “Inventive Concept” ....................................................................................................15

4. The Dependent Claims Add Nothing Inventive .........................................19

B. The Court May and Should Assess the Eligibility of the ’416 Patent on a Motion to Dismiss ...............................................................................................21

IV. CONCLUSION ..................................................................................................................23


TABLE OF AUTHORITIES

Page(s)

ii

CASES

Accenture Global Servs., GMBH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013)..................................................................................................6

Affinity Labs of Tex., LLC .v. Amazon.com, Inc., No. 6:15-cv-00029-WS-JCM, 2015 U.S. Dist. LEXIS 77411 (W.D. Tex. June 12, 2015) .................................................................................................17, 20

Alice Corp. Pty Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) ..................................................................................................... passim

Appistry, Inc. v. Amazon.com Inc., No. C15-311 MJP, 2015 U.S. Dist. LEXIS 90004 (W.D. Wash. July 9, 2015) ......................................................................................................19

Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013) .............................................................................................................10

Becton, Dickinson & Co. v. Baxter Int’l, No. 14-cv-00222-LY, Dkt. No. 65 (W.D. Tex. Aug. 3, 2015) ................................................15

Bilski v. Kappos, 561 U.S. 593 (2010) ......................................................................................................... passim

Boar’s Head Corp. v. DirectApps, Inc., No. 2:14-cv-01927-KJM-KJN, 2015 U.S. Dist. LEXIS 98502 (E.D. Cal. July 28, 2015) .........................................................................................................12

buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)..........................................................................................16, 21

Clear with Computers LLC v. Altec Indus., Inc., No. 6:14-cv-00089, 2015 U.S. Dist. LEXIS 28816 (E.D. Tex. Mar. 3, 2015) ..........................................................................................................19

Cloud Satchel, LLC v. Amazon.com, Inc., No. 13-941-SLR, 2014 U.S. Dist. LEXIS 174715 (D. Del. Dec. 18, 2014) ............................................................................................................15

Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014)..............................................................................13, 19, 21, 23


TABLE OF AUTHORITIES (Continued)

Page(s)

iii

CyberFone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014) ..........................................................................................23

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)..........................................................................................11, 13

DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)................................................................................................17

Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)................................................................................................17

Enfish, LLC v. Microsoft Corp., 56 F. Supp. 3d 1167, 1170-1172 (C.D. Cal. 2014) ................................................11, 12, 13, 20

Essociate Inc. v. Clickbooth.com LLC, No. SACV 13-01886-JVS, 2015 U.S. Dist. LEXIS 26757 (C.D. Cal. Feb. 11, 2015) ...................................................................................................18, 20

Fed. Home Loan Mortg. Corp. v. Graff/Ross Holdings, LLP, 604 F. App’x 930 (Fed. Cir. 2015) ..........................................................................................21

Gametek LLC v. Zynga, Inc., 597 F. App’x 644 (Fed. Cir. 2015) ..........................................................................................21

Gottschalk v. Benson, 409 U.S. 63 (1972) ...................................................................................................................13

Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147 (1950) ...................................................................................................................6

Intellectual Ventures I LLC v. Capital One Bank (USA), No. 2014-1506, 2015 U.S. App. LEXIS 11537 (Fed. Cir. July 6, 2015) ......................................................................................................18, 21

Internet Patents Corp. v. Active Network, Inc., No. 2014-1048, 2015 U.S. App. LEXIS 10536 (Fed. Cir. June 23, 2015) .......................................................................................17, 18, 21, 23

Jericho Sys. Corp. v. Axiomatics, Inc., No. 3:14-cv-2281-K, 2015 U.S. Dist. LEXIS 60421 (N.D. Tex. May 7, 2015)..........................................................................................................12



Page(s)

iv

Kroy IP Holdings, LLC, v. Safeway, Inc., No. 2:12-CV-800-WCB, 2015 U.S. Dist. LEXIS 69363 (E.D. Tex. May 29, 2015) ........................................................................................................14

Le Roy v. Tatham, 55 U.S. 156 (1852) ...................................................................................................................10

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) ..................................................................................................... passim

Mortg. Grader Inc. v. Costco Wholesale Corp., No. SACV 13-00043 AG (Anx), 2015 U.S. Dist. LEXIS 26769 (C.D. Cal. Jan. 12, 2015) .........................................................................................................18

O’Reilly v. Morse, 56 U.S. 62 (1853) .....................................................................................................................10

OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015)..............................................................................16, 19, 21, 22

Open Text S.A. v. Alfresco Software Ltd., No. 3:13-cv-04843, 2014 U.S. Dist. LEXIS 132080 (N.D. Cal. Sept. 19, 2014) .......................................................................................................21

OpenTV, Inc. v. Apple, Inc., No. 14-cv-01622-HSG, 2015 U.S. Dist. LEXIS 44856 (N.D. Cal. Apr. 6, 2015) ..........................................................................................................18

Planet Bingo, LLC v. VKGS, LLC, 576 F. App’x 1005 (Fed. Cir. 2014) ..................................................................................11, 13

Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498 (1874) ...................................................................................................................10

Shortridge v. Foundation Construction Payroll Serv., LLC, No. 14-cv-04850-JCS, 2015 U.S. Dist. LEXIS 49126 (N.D. Cal. Apr. 14, 2015) ..................................................................................................14, 20

SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. 2014) ..........................................................................................18

Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).......................................................................................... passim



Page(s)

v

Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA LLC, No. 13 C 4417, 2015 U.S. Dist. LEXIS 10168 (N.D. Ill. Jan. 29, 2015) ..........................16, 18

Versata Dev. Grp. v. SAP Am., Inc., No. 2014-1194, 2015 U.S. App. LEXIS 11802 (Fed. Cir. July 9, 2015).................................13

Walker Digital, LLC v. Google, Inc., 66 F. Supp. 3d 501, 508-509 (D. Del. 2014) ...............................................................15, 18, 20

Wolf v. Capstone Photography, Inc., No. 2:13-CV-09573, 2014 U.S. Dist. LEXIS 156527 (C.D. Cal. Oct. 28, 2014) .............................................................................................14, 16, 21

STATUTES

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

RULES

Fed. R. Civ. P. 12 .................................................................................................................2, 11, 21


1

I. INTRODUCTION

In this patent case, plaintiff SkillSurvey, Inc. (“SkillSurvey”) wrongly charges defendant

Checkster LLC (“Checkster”) with infringement of U.S. Patent No. 8,894,416 (the “’416 patent,”

Dkt. Nos. 8-1 & 8-2). The ’416 patent is entitled “System and Method for Evaluating Job

Candidates.” It relates to the longstanding process of contacting references of a job applicant,

only it performs that process by using computers and the internet. Because the patent, on its

face, fails the Supreme Court’s requirement that a patent must involve more than the use of a

basic computer to perform basic ideas, SkillSurvey’s claim is untenable as a matter of law. The

First Amended Complaint (the “Complaint”) should be dismissed without leave to amend.

While the scope of patent protection in the United States, as defined in 35 U.S.C. § 101,

covers a wide range of subject matter, it definitively excludes inventions directed to abstract

ideas, laws of nature, and natural phenomena. These “building blocks of human ingenuity,”

which include “fundamental economic practice[s] long prevalent in our system of commerce,”

belong to the public domain alone. Alice Corp. Pty Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347,

2354-2356 (2014). Excluding these basic practices from monopolization through patents ensures

that patents will promote innovation by contributing to the store of public knowledge without

burdening future innovation by others.

To clarify these principles, the Supreme Court granted review of four cases addressing

Section 101 within a recent five-year period. The latest of these brought a sea change. In Alice,

after years of uncertainty within the lower courts and at the Federal Circuit, the Supreme Court

articulated a two-part test to determine whether patents fall outside the scope of eligible subject

matter under Section 101: First, determine whether a patent claim implicates an abstract idea,

law of nature, or natural phenomenon. Second, search for an “inventive concept” sufficient to

“transform” the nature of the claim from one to an ineligible concept to only a specific

application of that concept. Significantly, the Court confirmed that implementing an abstract

idea on generic computing equipment does nothing to confer patent eligibility on otherwise

invalid claims. 134 S. Ct. at 2358.


2

The ’416 patent fails the Alice test as a matter of law. It adds nothing to the advancement

of science or technology and is a text-book example of an attempt to lay an ownership claim to

basic aspects of American commerce. The ’416 patent is directed only to a disembodied idea—

soliciting job applicant references before interviewing candidates. This is an idea alone, is

regularly performed by humans, and has been since there have been job interviews. The claims

are long in words but simple in concept, and they do no more than computerize and automate a

process that humans do already.

The exclusions in Section 101 are designed to prevent patents exactly like this one from

being used to hold innovative competitors like Checkster for ransom. Indeed, that is why, after

Alice, dozens of courts nationwide are routinely granting Rule 12(b)(6) motions on precisely the

grounds raised here. Checkster therefore respectfully requests that the Court grant its motion to

dismiss SkillSurvey’s Complaint on the basis that the ’416 patent is invalid for claiming only

patent-ineligible subject matter.

II. STATEMENT OF FACTS

A. The Parties

Plaintiff SkillSurvey is a private equity-backed company that provides software and

services for collecting evaluations for job candidates. Founded in 2006, Checkster1 is a leading

competitor in the market for web-based talent decision tools. Checkster’s recent growth and

success has now apparently attracted the attention, and anti-competitive wrath, of SkillSurvey.

As reflected on the face of the patent, in 2014, SkillSurvey launched an expedited procedure to

obtain, in less than three months, the issuance of the patent-in-suit with minimal Patent Office

examination. SkillSurvey has here accused Checkster’s award-winning Automated Reference

1 The named defendant, Checkster LLC, was formed in 2006 but has, in fact, been dissolved, no longer exists, and does not conduct business of any kind. As plaintiff was advised (though it has not amended its pleading), the proper entity to be sued in this action would be Checkster, Inc., a Delaware Corporation formed when Checkster received outside financing earlier this year. By entering its appearance and filing this Motion, defendant Checkster LLC does not waive any right to challenge its status in this case as a proper defendant in this case.


3

Checkup tool of infringing the ’416 patent.

B. The ’416 Patent

The ’416 patent bears the title “System and Method for Evaluating Job Candidates” and

claims a method and system implemented on a computer and over the Internet for “collecting

and analyzing information from references identified by job candidates.” ’416 patent at 1:17-19.

1. The Written Description

The ’416 patent is directed to the idea of soliciting job applicant references before

interviewing candidates. The patent is clear that this basic strategy is meant to be applied on a

standard computer, with surveys conducted over the Internet—indeed, the patent does not

disclose any algorithm or special programming, nor any specific technology for accomplishing

the claimed method. Instead, it recites only the use of generic computing technology defined

solely by its function: for employers to distribute surveys to references and collect information in

response.

Figure 2 of the ’416 patent, reproduced to the left, is a

graphical depiction of the claimed invention. As shown, the

claimed invention consists of the following steps, all of which can

be (and regularly are) performed by human beings: (1) purchasing

and setting up the computer software system; (2) identifying a job

candidate and his or her corresponding references; (3) conducting

surveys; (4) examining the results of those surveys; and (5)

updating the information that the employer has collected. See id. at

3:45-4:46. The patent is clear that its purpose is merely to automate

an employer’s reference-checking process:

[T]he present invention uses a computer network such as the Internet and the resources of the network including emails and webpages to set up initial survey questions, send out emails to references identified by job candidates, collect confidential competency-based survey information via webpages from the identified references, analyze the collected information and generate candidate reports for use by a hiring manager.


4

Id. at 2:63-3:3. The ’416 patent does not, however, suggest that its technique allows anything

beyond a more efficient way of using computers to do something humans have long done. As it

describes, “traditional reference checking methods such as telephone interviews are very costly

and time-consuming, require extensive training for interviewers and generally do not yield useful

information . . . .” Id. at 1:39-44. For example, the patent indicates that one way survey data

from a reference can become more useful is when it is “averaged and converted to [a] ‘very low’

to a ‘very high’ score.” Id. at 7:40-41. The patent, in other words, improves upon some of the

inefficiencies that employers encounter when contacting applicant references themselves, but

does not disclose a fundamentally different technique than those “traditional” methods.

Although the patent contemplates the use of computing equipment in automating these

steps, it does not offer any particularity in what the equipment must be. To the contrary, the

patent discloses that some of the computing components can be any kind of off-the-shelf

equipment: “The computer 10 can be any computer such as a WINDOWS-based or UNIX-based

personal computer, server, workstation or a mainframe, or a combination thereof.” Id. at 3:37-39

(emphasis added). There is nothing unusual or specialized about how the computer must be

configured; according to the patent, the computer includes a typical keyboard, memory,

processor, and storage that are interconnected. Id. at 3:22-26. And the patent describes the

networked components of the system in equally broad and conventional terms: “the computer 10

is connected to the Internet 2 through . . . a LAN, WAN, or fiber optic, wireless or cable link,

which receives information from and sends information to other computers 15.” Id. at 3:18-22.

The webpages themselves “are generated by a conventional database web page generating

engine . . . .” Id. at 4:51-52. At base, the patent is completely agnostic about the particular

technology that ought to be used to implement its basic idea.


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Figure 4, reproduced to the right,

is a “detailed process flow” of the

second component of figure 2 and

demonstrates how many of the patent’s

steps involve human action or decision-

making despite the process having been

computerized. Id. at 2:33. Figure 4

consists of (1) selecting a survey to be

sent; (2) identifying the job candidate to

which the survey will relate; and (3)

entering information as to who act as a

reference—either by the hiring manager

entering it directly or by emailing the

candidate who can enter it via a

webpage. The ’416 patent describes this step overall as “the hiring manager identif[ying] a job

candidate and receiv[ing] information about the references or reference providers that are

identified by the job candidate, which include an email address for each reference.” Id. at 3:57-

60. The hiring manager is also responsible for additional steps. “In step 106, the hiring

manager, after reviewing the report, determines whether to continue with the hiring process for

the candidate. . . . In step 110, the hiring manager, after having interviewed the candidate,

determines whether to hire the candidate.” Id. at 8:42-44; 8:59-60.

Meanwhile, the references themselves (i.e., the humans asked to provide information)

conduct other steps. “In step 84, the reference accesses the web page generated by the computer

10 by clicking on the link provided in the email” (id. at 6:39-41) and “enters via the web page

form answers to the questions in the survey.” Id. at 6:46-47. There is nothing technological

about the steps disclosed in the patent, even if some (undisclosed) technology may be ultimately

used to accomplish them. In the end, the specification describes nothing more than a pure


6

abstraction, which can largely be performed by humans, with generic computing equipment

automating some of their traditional mental tasks.

2. The Claims

The claims of the ’416 patent define the monopoly rights SkillSurvey now seeks to assert.

E.g., Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147 (1950) (“claims . . .

define the boundaries of a patent monopoly”). There are twenty claims in the ’416 patent.

Claims 1 and 11 are the only two independent claims (which, unlike the dependent claims, stand

alone and do not incorporate other claims).

Claim 1 of the ’416 patent is a “method” claim, meaning it covers a business method or

process rather than an apparatus. It is representative of the two independent claims2 and for that

reason is reproduced here in its entirety:

1. A computer-implemented method being implemented by an improved computer system programmed for reference checking in accordance with the computer-implemented method, comprising:

generating, by the improved computer system programmed for reference checking, a plurality of position specific surveys;

wherein each position specific survey comprises a plurality of survey questions specific to competency skills related to performance of at least one position;

wherein each response received, by the improved computer system programmed for reference checking, to each survey question corresponds to a number on a numerical extent scale;

wherein each position specific survey is configured for calculating an statistical score in each competency skills group of the competency skills based on statistical analysis of numbers on the numerical extent scale across responses received from the plurality of reference providers to the

2 Although claim 11, the second independent claim, is styled as a “system” claim (meaning it purports to describe an apparatus), in substance, it is nothing more than a method claim; indeed, its elements directly track those of claim 1. Id. at 10:28. See Alice, 134 S. Ct. at 2360 (“Put another way, the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components con-figured to implement the same idea.”); Accenture Global Servs., GMBH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) (“[S]ystem claims that closely track method claims and are grounded by the same meaningful limitations will generally rise and fall together.”).


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plurality of survey questions so that the responses from the plurality of reference providers are confidential from employers and job candidates;

receiving, by the improved computer system programmed for reference checking, through at least one first computer programmed graphical user interface, from at least one first employer, at least the following information:

i) job information, wherein the job information is related to at least one first position,

ii) an identity of each job candidate applying to be interviewed, and

iii) a selection identifying, from the plurality of position specific surveys, at least one first position specific survey related to at least one first position;

wherein the at least one first employer requires references from a plurality of reference providers to be received for each job candidate before the at least one first employer decides whether or not to conduct a job interview;

wherein the improved computer system programmed for reference checking is independent from each job candidate and the at least one first employer;

receiving, by the improved computer system programmed for reference checking, through at least one second computer programmed graphical user interface, from a first job candidate from a plurality of job candidates applying to be interviewed, first contact information identifying the plurality of reference providers,

automatically transmitting, by the improved computer system programmed for reference checking, at least one first personalized request to complete the at least one first position specific survey to the first reference provider, wherein the at least one first personalized request comprises:

i) a first URL link to access the at least one first position specific survey, and

ii) information informing that responses obtained in response to the at least one first position specific survey are kept confidential from the at least one first employer and the first job candidate;

automatically transmitting, by the improved computer system programmed for reference checking, at least one second personalized request to complete the at least one first position specific survey to the second reference provider, wherein the at least one second personalized request comprises:

i) a second URL link to access the at least one first position specific survey, and

ii) the information informing that the responses obtained in response to the at least one first position specific survey are kept confidential from the at least one first employer and the first job candidate;

automatically transmitting, by the improved computer system programmed for reference checking, at least one third personalized request to complete the at least one first position specific survey to the third reference provider,


8

wherein the at least one third personalized request comprises:

i) a third URL link to access the at least one first position specific survey, and

ii) the information informing that the responses obtained in response to the at least one first position specific survey are kept confidential from the at least one first employer and the first job candidate;

causing to display, by the improved computer system programmed for reference checking, through at least one third computer graphical user interface, the at least one first position specific survey to the first, the second and the third reference providers respectively in response to the first, the second and the third URL links being respectively activated;

respectively receiving, by the improved computer system programmed for reference checking, from the first, the second and the third reference providers, the responses to the at least one first position specific survey;

calculating, by the improved computer system programmed for reference checking, each statistical score of the first job candidate in each competency skills group of the competency skills based on the responses, being respectively received from the first, the second and the third reference providers;

generating, by the improved computer system programmed for reference checking, for the at least one first employer, at least one reference report related to the first job candidate, wherein the at least one reference report comprises the statistical scores of the first job candidate in the competency skills groups of the at least one first position specific survey, being calculated based on the responses of the first, the second and the third reference providers so as to maintain the confidentiality of the responses of the plurality of reference providers from the at least one first employer and the first job candidate;

wherein the statistical scores of the first job candidate are benchmarked against statistical scores of other job candidates who applied to a specific position that is at least similar to the at least one first position; and

wherein the at least one reference report is configured to allow the at least one first employer to decide whether or not to conduct the job interview with the first job candidate who has applied to be interviewed. (emphases added)

Although lengthy and repetitive, claims 1 and 11 simply recite a computerized method of

soliciting job applicant references before interviewing candidates. These claims repeatedly use

terms (also known as “elements” or “limitations” of the patents) like “surveys,” “receiving . . .

the responses to the . . . survey,” and “allow[ing] the at least one first employer to decide whether

or not to conduct the job interview with the first job candidate.” They also involve comparing


9

candidates to one another based on scores received. As the patent itself discloses, employers

have always sought input from references during the hiring process and compared candidates to

one another, steps that humans can still perform themselves, even if less efficiently than a

computer. See id. at 1:34-44 (“One part of the background check, and more generally the hiring

process, is the gathering of information from references . . . traditional reference checking

methods such as telephone interviews are very costly and time-consuming . . . .”). The ’416

patent purports to streamline this process by using generic computers and the Internet. See id. at

2:21-23 (“The human resource system provides substantially automated collection and analysis

which is inexpensive and yet accurate and useful. . . . the present invention uses a computer

network such as the Internet and the resources of the network including emails and

webpages . . . .”). But the claims never recite any specific technology for implementing the

methodology that humans have long practiced manually or mentally. Its references to an

“improved” computer system, standard “graphical user interfaces,” and use of three different

computer terminals to send reference inquiries, respond to them, and display results, are nothing

more than techno-pablum. Effectively, the independent claims recite only an aspirational

purpose—for an employer to contact references before deciding whether to pursue a candidate—

together with the requirement that some unidentified software automate that purpose.

The patent also includes several dependent claims (which build upon independent claims

with additional limitations), but none of those of the ’416 patent meaningfully adds to or limits

the independent claims from which they depend. Claims 12-20 (dependent on claim 11) closely

parallel claims 2-10 (dependent on claim 1), respectively. The dependent claims are directed to,

for example, comparing survey scores on a company-wide basis (claims 2 and 12) or an industry-

wide basis (claims 4 and 14), using averages (claims 3, 5, 7, 13, 15, and 17), using email or an

“identifier” to send personalized survey requests to references (claims 6, 9, 16, and 19),

associating those identifiers with a URL link (claims 10 and 20), and recruiting for a job that

involves managing others (claims 8 and 18). Each of these recites only a different permutation

or incidental step in implementing the abstract concept of soliciting job applicant references


10

before interviewing candidates.

III. ARGUMENT

A. The ’416 Patent Claims Merely the Abstract Idea of Soliciting Job Applicant References Before Interviewing Candidates, Which Is Not Eligible for Patent Protection as a Matter of Law

1. Abstract Ideas Are and Have Long Been Ineligible Subject Matter

Under Section 101 of the Patent Act, “[w]hoever invents or discovers any new and useful

process, machine, manufacture, or composition of matter, or any new and useful improvement

thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

35 U.S.C. § 101 (emphasis added). The Supreme Court has “long held that this provision

contains an important implicit exception [for] [l]aws of nature, natural phenomena, and abstract

ideas.” Alice, 134 S. Ct. at 2354 (citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,

133 S. Ct. 2107, 2116 (2013)) (internal quotations omitted). It has been well established “for

more than 150 years” that a patent directed to a disembodied idea is outside the scope of patent

eligibility. Alice, 134 S. Ct. at 2354 (citing Bilski v. Kappos, 561 U.S. 593, 594 (2010); O’Reilly

v. Morse, 56 U.S. 62, 112-20 (1853); Le Roy v. Tatham, 55 U.S. 156, 174-75 (1852)); see also

Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 507 (1874) (“An idea of itself is not

patentable. . . .”). The concern underlying the abstract idea doctrine is that a patentee might

“pre-empt” all ways—including new ways invented by the public in the future—of achieving the

results claimed by the patent. Alice, 134 S. Ct. at 2354 (“We have described the concern that

drives this exclusionary principle as one of pre-emption”); Mayo Collaborative Servs. v.

Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (pre-emption would “tend to impede

innovation more than it would tend to promote it”). A patent claiming a naked idea “would risk

disproportionately tying up the use of the underlying’ idea[].” Alice, 134 S. Ct. at 2354-55

(citing Mayo, 132 S. Ct. at 1294).

Thus, courts following Alice apply a two-part test to evaluate patents under Section 101.

First, courts “determine whether the claims at issue are directed to a one of those patent-

ineligible concepts,” such as an abstract idea. Alice, 134 S. Ct. at 2355. The abstract ideas


11

category is open ended, but it includes a “fundamental economic practice long prevalent in our

system of commerce,” a “longstanding commercial practice,” and “a method of organizing

human activity.” Id. at 2356 (citing Bilski, 561 U.S. at 611, 619). Additionally, a claim is

directed to an abstract idea when it “can be performed in the human mind, or by a human using a

pen and paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.

2011); see Planet Bingo, LLC v. VKGS, LLC, 576 F. App’x 1005, 1007 (Fed. Cir. 2014) (method

of computerized bingo game administration that “consists solely of mental steps which can be

carried out by a human using pen and paper” is abstract). And an idea is impermissibly abstract

when it is “devoid of a concrete or tangible application.” Ultramercial, Inc. v. Hulu, LLC, 772

F.3d 709, 715 (Fed. Cir. 2014).

Second, a patent must contain an “‘inventive concept’ sufficient to ‘transform’ the

claimed abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357 (quoting

Mayo, 132 S. Ct. at 1294). As the Supreme Court held in Alice, “a generic computer cannot

transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358. Nor can

adding “well-understood, routine, conventional activities previously known to the industry”;

limiting an idea to a particular field of use or a particular technological environment; adding

data-gathering steps; or adding any other token post- or extra-solution activity (meaning steps

incidental to solving the core problem the claim addresses). Id. at 2357-59 (internal quotations

omitted).

Alice has led to a chorus of courts invalidating patents directed to software or business

methods, like the ’416 patent here. See, e.g., Enfish, LLC v. Microsoft Corp., 56 F. Supp. 3d

1167, 1170-1172 (C.D. Cal. 2014) (noting that the Supreme Court has recently “indicated that

patentability [under § 101] is a higher bar . . . Alice brought about a surge of decisions finding

software patents ineligible ”). Indeed, in barely over a year since Alice, courts in nearly 100

cases have found a patent invalid under Section 101, including some 50 on a Rule 12 posture—

and nearly all in cases involving patents on software or the use of generic computers to apply a


12

business method.3

2. Alice Step 1: The ’416 Patent Is Drawn to an Abstract Idea

To approach step 1, “the court must identify the purpose of the claim—in other words,

determine what the claimed invention is trying to achieve—and ask whether that purpose is

abstract.” Id. at 1173. On their face, the independent claims of the ’416 patent are directed to

the “longstanding commercial practice” and “method of organizing human activity” of soliciting

job applicant references before interviewing candidates. Alice, 134 S. Ct. at 2356. Claim 1, for

example, recites this purpose, including elements like “programmed for reference checking,”

“employer requires references . . . before [deciding] whether or not to conduct a job interview,”

and “configured to allow the at least one first employer to decide whether or not to conduct the

job interview.” To leave no doubt, the specification further clarifies that the purpose of the

invention is for an employer to survey job applicant references. E.g., ’416 patent at 1:66-2:1 (“A

system for collecting and analyzing survey data from reference providers identified by a job

candidate for use by an employer is provided.”).

The practice of contacting a job applicant’s references is a time-honored, “longstanding

commercial practice” and “method of organizing human activity” dating at least to the first time

an employer mistakenly placed too much faith in the veracity of an applicant’s resume. Alice,

134 S. Ct. at 2356; see, e.g., Boar’s Head Corp. v. DirectApps, Inc., No. 2:14-cv-01927-KJM-

KJN, 2015 U.S. Dist. LEXIS 98502, at *25 (E.D. Cal. July 28, 2015) (organizing emergency

phone call data “is a longstanding practice, one that can be performed by a human”). Indeed, the

’416 patent is directed only to a way to ultimately help a human make a decision. Jericho Sys.

Corp. v. Axiomatics, Inc., No. 3:14-cv-2281-K, 2015 U.S. Dist. LEXIS 60421, at *11 (N.D. Tex.

May 7, 2015) (in the context of permissions to access data, applying information to a rule to

make a decision is an abstract idea).

3 While Checkster is sparing the Court this string cite, it would be happy to provide a full list or appendix of all such decisions if requested. No decision has yet issued under Alice from a court in this District.


13

The idea of soliciting job applicant references before interviewing candidates can be

performed by humans mentally or using pen and paper (and of course traditionally has been).4

Planet Bingo, 576 F. App’x at 1007 (“The district court correctly concluded that managing the

game of bingo consists solely of mental steps which can be carried out by a human using pen and

paper”) (internal quotation omitted); CyberSource, 654 F.3d at 1373 (invalidating fraud-

detection patent because “a method that can be performed by human thought alone is merely an

abstract idea and is not patent-eligible under § 101”); Enfish, 56 F. Supp. 3d at 1179 n.10

(invalidating patent covering the use of tables to store, organize, and retrieve memory; “the

pencil-and-paper test is a stand-in for another concern: that humans engaged in the same activity

long before the invention of computers”) (internal citation omitted). The specification confirms

that several steps are performed by the hiring manager or reference provider. E.g., ’416 patent at

8:42-44; 8:59-60 (“In step 106, the hiring manager, after reviewing the report, determines

whether to continue with the hiring process for the candidate. . . . In step 110, the hiring

manager, after having interviewed the candidate, determines whether to hire the candidate.”); see

also Figs. 2, 4. And SkillSurvey itself suggests that “benchmarks” used to perform a comparison

of candidates during the hiring process infringe its claims. Dkt. No. 8 at ¶ 11, 17.

Moreover, whether or not the claim actually includes steps performed mentally, the

existence of steps that could be performed by humans indicates that the claims are directed to an

abstract idea. E.g., Versata Dev. Grp. v. SAP Am., Inc., No. 2014-1194, 2015 U.S. App. LEXIS

11802, at *71 (Fed. Cir. July 9, 2015) (computerized method of determining a product price

using hierarchies held invalid because “[c]ourts have examined claims that required the use of a

computer and still found that the underlying, patent-ineligible invention could be performed via

pen and paper or in a person’s mind.”) (citing Gottschalk v. Benson, 409 U.S. 63 (1972);

CyberSource, 654 F.3d at 1373); Content Extraction and Transmission LLC v. Wells Fargo 4 SkillSurvey all but admits that the ’416 patent merely automates a process that is normally performed by a human. See Dkt. No. 8 at ¶ 8 (“SkillSurvey’s pioneering invention . . . transform[s] what traditionally was an afterthought and the least relevant step in the hiring decision process . . . [using] a fully-automated configuration.”).


14

Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (method of scanning a document and

recognizing and ingesting data from that document invalid because “[t]he concept of data

collection, recognition, and storage is undisputedly well-known. Indeed, humans have always

performed these functions.”).

And a manually achievable purpose—like the ’416 patent’s purpose of making reference

checking more efficient—remains abstract even if it envisions that its purpose will be

accomplished using computer technology. E.g., Kroy IP Holdings, LLC, v. Safeway, Inc., No.

2:12-CV-800-WCB, 2015 U.S. Dist. LEXIS 69363, at *43 (E.D. Tex. May 29, 2015) (“Kroy

relies on the presumed volume of information and speed required [to administer a computer-

based incentive award program] . . . which a human armed with only a pencil and paper could

not keep up with. . . . [T]here is no room for doubt that if the incentive program were small,

humans could perform each of the tasks . . . .”). Courts since Alice have consistently held that an

abstract concept from pre-Internet times remains abstract when applied on a computer, even

though the computer surely performs it faster. E.g., Wolf v. Capstone Photography, Inc., No.

2:13-CV-09573, 2014 U.S. Dist. LEXIS 156527, at *40-41 (C.D. Cal. Oct. 28, 2014) (“in the

pre-internet days, an event photographer could have identified race participants . . . . This would

be the analog equivalent of plaintiff’s claimed process, done painstakingly with pen, paper, and

similarly low-tech tools. And it would have been a patent-ineligible abstract idea.”). The ’416

patent does no more than computerize the details of the longstanding practice of soliciting job

applicant references, while preserving its overall purpose derived from the pre-digital age.

Not surprisingly, many courts following Alice have found claims involving “methods of

organizing human activity” to be directed to abstract ideas, particularly methods involving the

manipulation of employment relationships, like those claimed by the ’416 patent. Such claims

are typically directed to abstract ideas because employers long practiced the basic ideas without

the use of computers. For example, the court in Shortridge v. Foundation Construction Payroll

Serv., LLC, No. 14-cv-04850-JCS, 2015 U.S. Dist. LEXIS 49126, at *30-31 (N.D. Cal. Apr. 14,

2015), observed: “[a]s long as employees have been paid an hourly wage, employers have


15

utilized various methods of tracking the hours that their employees work. . . . That many

employers now use technological methods to track hours . . . does not make the practice any less

abstract.” Likewise, a Delaware court found that a patent involving a computerized, anonymized

employment search claimed only an abstract idea because it had historically been practiced by

matchmakers and headhunters. Walker Digital, LLC v. Google, Inc., 66 F. Supp. 3d 501, 508-

509 (D. Del. 2014). And another court found the idea of employee supervision abstract—even

though it was limited to the pharmacy context. Becton, Dickinson & Co. v. Baxter Int’l, No. 14-

cv-00222-LY, Dkt. No. 65, slip op. at 9 (W.D. Tex. Aug. 3, 2015). As in these cases, the ’416

patent manages the employer-employee relationship (in this case, at the recruiting phase). The

idea of soliciting job applicant references before interviewing candidates in service of this

“method of organizing human activity” and implicated by the ’416 patent’s independent claims

is abstract for Section 101 purposes.

Finally, that the claims may be lengthy makes no difference when they are stuffed with

empty, repetitive verbiage lacking in content. As a Delaware court has noted, “an abstract idea is

likewise not saved by the mere fact that the claim is lengthy and recites multiple steps.” Cloud

Satchel, LLC v. Amazon.com, Inc., No. 13-941-SLR, 2014 U.S. Dist. LEXIS 174715, at *19 (D.

Del. Dec. 18, 2014) (citing Ultramercial, 772 F.3d at 713 (finding claim with 11 steps was

directed to abstract idea of “cataloguing documents to facilitate their retrieval from storage” and

ultimately invalid)). The overall purpose of the ’416 patent’s claims is abstract, even if the

claims themselves may be long-winded.

3. Alice Step 2: The ’416 Claim Elements Have No “Inventive Concept”

If a claim is directed to an abstract idea, the Court must “determine whether it contains an

‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible

application.” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294). Categories of

elements that do not “transform” an abstract idea and steps that are not “inventive” include those

that are “well-understood, routine, conventional.” Id. at 2359 (quoting Mayo, 132 S. Ct. at

1294). As explained in Alice, “[s]tating an abstract idea while adding the words ‘apply it with a


16

computer’” fails to supply an inventive concept and satisfy Section 101. Id. at 2358. Indeed, the

claims invalidated in Alice “amount[ed] to ‘nothing significantly more’ than an instruction to

apply the abstract idea of intermediated settlement using some unspecified, generic computer.”

Id. at 2360 (quoting Mayo, 132 S. Ct. at 1298); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,

1355 (Fed. Cir. 2014) (invocation of generic computer functionality “adds no inventive

concept”).

The ’416 patent makes no attempt to hide the fact that its central advance is the use of a

computer and the Internet to automate the traditional technique of screening job applicants by

contacting their references. As the patent discloses, “[t]he human resource system provides

substantially automated collection and analysis . . . us[ing] a computer network such as the

Internet and the resources of the network including emails and webpages.” ’416 patent at 2:21-

22; 2:63-65. This computing equipment in the ’416 patent is unspecialized and generic. The

’416 patent describes “any computer such as a WINDOWS-based or UNIX-based personal

computer, server, workstation or a mainframe, or a combination thereof.” Id. at 3:37-39

(emphasis added). The webpages used by the claimed method “are generated by a conventional

database web page generating engine . . . .” Id. at 4:51-52 (emphasis added).

The cases since Alice have been clear that merely automating an abstract process or

improving its efficiency using generic and conventional computing equipment is not inventive.

The Federal Circuit recently held, in unambiguous terms: “[a]t best, the claims describe the

automation of the fundamental economic concept of offer-based price optimization through the

use of generic-computer functions. . . . relying on a computer to perform routine tasks more

quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v.

Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (emphases added); see, e.g., Vehicle

Intelligence & Safety LLC v. Mercedes-Benz USA LLC, No. 13 C 4417, 2015 U.S. Dist. LEXIS

10168, at *12 (N.D. Ill. Jan. 29, 2015) (“Generic computer automation of the conventional

‘screening’ step does not amount to an ‘inventive concept’”); Wolf, 2014 U.S. Dist. LEXIS

156527, at *41 (“That generic computer technology allows for a more efficient process does not


17

confer patent eligibility.”) (emphasis added).

Fundamentally, the problem the ’416 patent purports to solve is how to verify a job

applicant’s credentials—not how to program a computer to do it, not what specific hardware to

use or how to configure it, see Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012),

and not how to solve a problem that exists solely in computing or within the structure of the

Internet, cf. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).

Although the claims frequently repeat the phrase “improved computer system,” they do not

actually recite one, nor how it effectuates the other claim elements.5 See Internet Patents Corp.

v. Active Network, Inc., No. 2014-1048, 2015 U.S. App. LEXIS 10536, at *13 (Fed. Cir. June 23,

2015) (“[The claim] contains no restriction on how the result is accomplished. The mechanism

for maintaining the state is not described, although this is stated to be the essential innovation.”);

Affinity Labs of Tex., LLC .v. Amazon.com, Inc., No. 6:15-cv-00029-WS-JCM, 2015 U.S. Dist.

LEXIS 77411, at *36 (W.D. Tex. June 12, 2015) (“The claim is devoid of any specific

technology or instructions that explain how the device can do what it purports to do or direct the

practitioner how to carry out the claims.”). At best, claim 11 includes generic elements like a

“processor” and “memory.” The Alice Court rejected even “specific hardware” including “data

processing system,” a “communications controller,” and a “data storage unit” as “purely

functional and generic.” 134 S. Ct. at 2360.

Furthermore, the individual functions of the claims do not include any inventive concept.

For example, the claim recites: “wherein the statistical scores of the first job candidate are

benchmarked against statistical scores of other job candidates”—in other words, ranking job

applicants so that the employer can decide whom to interview. A computer system that ranked

5 In its Complaint, SkillSurvey contends that “the claims of the ’416 patent are inventive concepts” that “transform” traditional processes. Dkt. No. 8 ¶ 13. SkillSurvey does not substantiate this legal conclusion, but also misunderstands Alice’s second step, which is to search for an inventive concept that “transform[s] the nature of the claim into a patent-eligible application,” not one that transforms or upends typical industry practices. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297) (emphasis added).


18

options for a human decision-maker was, even before Alice, held invalid under Section 101.

SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 954-55 (Fed. Cir. 2014).

Likewise, decision-making itself cannot supply an inventive concept. See Vehicle Intelligence,

2015 U.S. Dist. LEXIS 10168, at *20-21.

The patent also claims preservation of the anonymity of the references by “calculat[ing]

based on the responses of the first, the second and the third reference providers so as to maintain

the confidentiality of the responses.” Indeed, SkillSurvey insists in its Complaint that the

putative result of greater efficiency accomplished by its patent claims “is achieved via

confidentiality assurances that are integral to and dependent upon the anonymity of the claimed

computer system.” Dkt. No. 8 at ¶ 13. Yet Walker Digital, as one example, is unambiguous that

the simple result of ensuring confidentiality is not inventive, at least without detail in the claim

as to exactly how it must be accomplished. 66 F. Supp. 3d at 511 (“improv[ing] the likelihood of

preserving [] anonymity” is not inventive); accord OpenTV, Inc. v. Apple, Inc., No. 14-cv-01622-

HSG, 2015 U.S. Dist. LEXIS 44856, at *15 (N.D. Cal. Apr. 6, 2015) (exchanging information

confidentially is not inventive); Mortg. Grader Inc. v. Costco Wholesale Corp., No. SACV 13-

00043 AG (Anx), 2015 U.S. Dist. LEXIS 26769, at *13-17 (C.D. Cal. Jan. 12, 2015) (loan

shopping anonymously is not inventive).

Neither does the claim’s recital of a URL link to distribute surveys to references supply

an inventive concept.6 Essociate Inc. v. Clickbooth.com LLC, No. SACV 13-01886-JVS

(DFMx), 2015 U.S. Dist. LEXIS 26757, at *20-21 (C.D. Cal. Feb. 11, 2015) (“The assigning of

unique identification codes, providing access to URLs, and generating URLs describe routine,

6 The use of URLs is a species of a broader principle recited in the claims, which is a “computer programmed graphical user interface.” User interfaces, too, have been held non-inventive by several courts—including twice by the Federal Circuit in recent months. E.g., Intellectual Ventures I LLC v. Capital One Bank (USA), No. 2014-1506, 2015 U.S. App. LEXIS 11537, at *16-17 (Fed. Cir. July 6, 2015) (“interactive interface” elements not inventive); Internet Patents, 2015 U.S. App. LEXIS 10536, at *13-14 (no inventive concept in patent directed to user interface improvement). Nor does the patent disclose or claim anything inventive about any interface that might be included in this (like any other) software.


19

conventional activity of how computers communicate with each other via the Internet.”); see

Ultramercial, 772 F.3d at 716 (“The claims’ invocation of the Internet also adds no inventive

concept.”).

Several elements recite only “data-gathering steps,” which cannot make the claims

patent-eligible. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294). For example, each

of the “receiving . . . at least the following information” series of steps as well as the

“receiving . . . the responses to the at least one first position specific survey” do nothing more

than collect data. E.g, OIP, 788 F.3d at 1363-64 (“‘present[ing] [offers] to potential customers’

and ‘gathering . . . statistics generated during said testing’ are well-understood, routine,

conventional data-gathering activities that do not make the claims patent eligible”).

In the end, no claim element recites an inventive concept sufficient to “transform” the

claim to an abstract idea into a patent eligible invention. Again, the fact that the claims may

have many elements does not matter because none of the elements includes anything inventive.

Appistry, Inc. v. Amazon.com Inc., No. C15-311 MJP, 2015 U.S. Dist. LEXIS 90004, at *14

(W.D. Wash. July 9, 2015) (“the patents’ ‘numerous limitations’ function only to limit the

abstract idea . . . to a particular technological environment, namely, networked computers”);

Clear with Computers LLC v. Altec Indus., Inc., No. 6:14-cv-00089, 2015 U.S. Dist. LEXIS

28816, at *15 (E.D. Tex. Mar. 3, 2015) (“Although verbose, the claims as a whole broadly recite

a simple process which, in this case, does not require the type of complex programming that

confers patent eligibility.”). Independent claims 1 and 11 of the ’416 thus fail to disclose an

inventive concept sufficient to transform the abstract idea of soliciting job applicant references

before interviewing candidates into a patent-eligible application. These claims are invalid under

Section 101.

4. The Dependent Claims Add Nothing Inventive

This Court need not consider every claim of the ’416 patent before concluding that all are

directed to ineligible subject matter under Section 101. Content Extraction, 776 F.3d at 1348

(finding no error in defendant or district court declining to address every challenged claim


20

individually because each recited “little more than the same abstract idea” and plaintiff had not

explained why any of the 242 claims differed from a representative claim for Section 101

purposes). Nonetheless, none of the dependent claims of the ’416 patent “offers a meaningful

limitation” over the abstract idea claimed by the independent claims. See Alice, 134 S. Ct. at

2360. At best, they attempt to “limit[] an abstract idea to one field of use or add[] token

postsolution components,” Bilski, 561 U.S. at 612, or they recite other “well-understood, routine,

conventional activity,” Mayo, 132 S. Ct. at 1299.

For instance, claims 2, 4, 12, and 14 recite benchmarking—in other words, comparing

candidate scores—on either a company-wide or industry-wide basis. This is classic, token

postsolution activity (or, at best, a limitation to a particular “field of use,” which is also not

inventive) because it is incidental to the claim’s central solution of automating reference

solicitation. Walker Digital, 66 F. Supp. 3d at 515 (dependent claim involving comparing people

adds nothing meaningful); see also Affinity, 2015 U.S. Dist. LEXIS 77411, at *42 (dependent

claim that recited step incidental to the claimed invention invalid). Likewise, claims 3, 5, 7, 13,

15, and 17 recite averaging survey scores, either for an individual candidate or across candidates,

a conventional technique known even to grade school students. See Enfish, 56 F. Supp. 3d at

1176 (“Tables continue to be elementary tools used by everyone from school children to

scientists and programmers.”). Claims 8 and 18 involve “managing others,” also a field of use

limitation and a concept that long predates the patent. Shortridge, 2015 U.S. Dist. LEXIS 49126,

at *41-42 (labor management context is a mere field of use limitation for an otherwise abstract

idea).

Finally, Claims 9 and 19 assign “identifiers” to reference providers and associate requests

to those providers, while claims 10 and 20 encode URL links with the identifiers and claims 6

and 16 recite the use of mail to distribute requests. These claims recite only the conventional use

of basic Internet functionalities. Indeed, the Essociate court found exactly these features to be

conventional and generic. 2015 U.S. Dist. LEXIS 26757, at *20-21 (“The assigning of unique

identification codes, providing access to URLs, and generating URLs describe routine,


21

conventional activity of how computers communicate with each other via the Internet.”). And

the use of email is “certainly not inventive.” Open Text S.A. v. Alfresco Software Ltd., No. 3:13-

cv-04843, 2014 U.S. Dist. LEXIS 132080, at *17 (N.D. Cal. Sept. 19, 2014).

These trivial additions are insufficient to rescue a patent that is otherwise invalid under

Section 101. The dependent claims thus add no “inventive concept” sufficient to salvage the

’416 patent’s claim to the abstract idea of soliciting job applicant references before interviewing

candidates. They add limitations that are incidental to this concept, that restrict the claims only

to a general field of use, or that recite conventional activity. They are thus invalid under Section

101.

B. The Court May and Should Assess the Eligibility of the ’416 Patent on a Motion to Dismiss

Subject matter eligibility under Section 101 is a “threshold test” and a question of law.

Bilski, 561 U.S. at 601; Intellectual Ventures, 2015 U.S. App. LEXIS 11537, at *5. Accordingly,

it may be resolved on the pleadings when a patent recites ineligible subject matter on its face.

E.g., Wolf, 2014 U.S. Dist. LEXIS 156527, at *17 (patent invalid on Rule 12 because “the Court

finds that the basic character of the claimed subject matter is readily ascertainable from the face

of the patent”) (internal quotation omitted). With that in mind, since Alice, many courts have

invalidated patents on a Rule 12 posture, and the Federal Circuit has issued five opinions in the

past year alone affirming findings of invalidity under Section 101 at the pleading stage.

buySAFE, 765 F.3d 1350 (affirming grant of 12(c) motion); Ultramercial, 772 F.3d 709

(affirming grant of motion to dismiss); Content Extraction, 776 F.3d 1343 (same); OIP, 788 F.3d

1359 (same); Internet Patents, 2015 U.S. App. LEXIS 10536 (same).7 It has yet to reject a

Section 101 challenge on a Rule 12 posture since Alice.

At least one member of the Federal Circuit would go further: “subject matter eligibility is

the primal inquiry, one that must be addressed at the outset of litigation. . . . addressing section

7 The Federal Circuit has also recently affirmed two grants of Rule 12 motions per curiam. Gametek LLC v. Zynga, Inc., 597 F. App’x 644 (Fed. Cir. 2015); Fed. Home Loan Mortg. Corp. v. Graff/Ross Holdings, LLP, 604 F. App’x 930 (Fed. Cir. 2015).


22

101 at the outset of litigation will have a number of salutary effects.” Ultramercial, 772 F.3d at

718 (Mayer, J., concurring); see also Bilski, 561 U.S. at 602 (§ 101 is a “threshold test”).

Judge Mayer elaborated in another concurrence:

Addressing 35 U.S.C. § 101 at the outset not only conserves scarce judicial resources and spares litigants the staggering costs associated with discovery and protracted claim construction litigation, it also works to stem the tide of vexatious suits brought by the owners of vague and overbroad business method patents. Accordingly, where, as here, asserted claims are plainly directed to a patent ineligible abstract idea, we have repeatedly sanctioned a district court's decision to dispose of them on the pleadings.

OIP, 788 F.3d at 1364-65 (Mayer, J., concurring).

Judge Mayer’s concerns resonate in this case. Early resolution of the § 101 eligibility

question is particularly appropriate here. SkillSurvey, threatened for the first time by

competition in its core product line, initiated this lawsuit to interfere with Checkster’s efforts to

raise capital, attract customers, and grow its business. A cloud of litigation now threatens

innovation in this field, even though the business method patent upon which this lawsuit relies

does not claim eligible subject matter. This case should be resolved promptly, with minimal

expense of resources either by the Court or the parties.

Finally, the ’416 patent is not one whose eligibility turns on claim construction

proceedings, which would take place only after significant time and cost, and which would not

reveal some inventive concept that is nowhere on the face of the claims. Courts frequently make

eligibility determinations before that laborious and expert-intensive process. 8 Although Alice

was an appeal of a grant of summary judgment, the Supreme Court resolved the Section 101

8 Claim construction, of course, is merely a prelude to even more significant disputes over invalidity and non-infringement. In this case, in addition to relying on claims that are ineligible for patent protection under Section 101, there is, in fact, no colorable basis for SkillSurvey’s contention that Checkster’s product actually infringes the ’416 patent: Checkster does not practice the essential “benchmarking” step upon which the patent depends, and believes that approach to be inferior to Checkster’s actual method—a fact of which SkillSurvey has been made aware. But unlike questions of eligibility under Section 101, the non-infringing nature of Checkster’s method cannot be resolved on the face of the pleadings; that will be a subject of motion practice later if this motion is not granted.


23

question without the need for claim construction and based on little more than a view of the

claim language as a whole. 134 S. Ct. at 2356-60; see also Bilski, 561 U.S. at 611-612

(invalidating patent under Section 101 without requiring claim construction); CyberFone Sys.,

LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988, 991 n.1 (Fed. Cir. 2014) (“There is no

requirement that the district court engage in claim construction before deciding § 101

eligibility.”). As the Federal Circuit recently observed, in both Content Extraction and Internet

Patents, “claim construction is not an inviolable prerequisite to a validity determination under

§ 101.” Content Extraction, 776 F.3d at 1349; Internet Patents, 2015 U.S. App. LEXIS 10536,

at *11. Any anticipated claim construction thus provides no cause for delay. The Court should

follow the multitude of cases since Alice resolving § 101 questions early and relieve itself and

the parties of the expense and burden of proceeding through discovery and expert-loaded claim

construction. They will not change the conclusion that the ’416 patent is directed to ineligible

subject matter.

IV. CONCLUSION

For the foregoing reasons, Checkster respectfully requests that the Court grant its motion,

enter a judgment of invalidity under 35 U.S.C. § 101, and dismiss this case.


HANGLEY ARONCHICK SEGAL PUDLIN & SCHILLER

By: /s/ Michele D. Hangley Michele D. Hangley (I.D. No. 82779) Jessica R. O’Neill (I.D. No. 205934) One Logan Square, 27th Floor Philadelphia, PA 19103 Telephone: (215) 568-6200

Of Counsel: FENWICK & WEST LLP Laurence Pulgram (Pro Hac Vice pending) Adam Lewin (Pro Hac Vice pending) 555 California St., 12th Floor, San Francisco, CA 94104 Telephone: (415) 875-2300

Attorneys for Defendant Checkster LLC


CERTIFICATE OF SERVICE

I Jessica R. O’Neill, hereby certify that on August 21, 2015, the foregoing Defendant

Checkster LLC’s Motion to Dismiss Pursuant to Federal Rule of Civil Procedure 12(b)(6),

together with its brief in support and a proposed order, was filed with the Court via the

Electronic Case Filing System, where it is available for viewing and downloading by all counsel

of record.

/s/ Jessica R. O’Neill Jessica R. O’Neill Attorney for Defendant Checkster LLC


in the united states district court for the ......2015/08/21 · checkster llc, defendant. civil...

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