United States District Court, E.D. Texas, Tyler Division
ORDER ADOPTING-IN-PART REPORT AND RECOMMENDATION OF
UNITED STATES MAGISTRATE JUDGE
D. KERNODLE UNITED STATES DISTRICT JUDGE
case was referred to United States Magistrate Judge K. Nicole
Mitchell pursuant to 28 U.S.C. § 636. Judge Mitchell has
presented for consideration a Report and Recommendation
(Docket No. 152, the “Report”), which contains
her findings, conclusions, and recommendations regarding the
invalidity portion of Defendants’ Motion for Summary
Judgment (Docket No. 130). The Report recommends
granting-in-part and denying-in-part the motion. Both
Plaintiff T-Rex and Defendants Clear Channel Outdoor
Holdings, Inc.; Clear TV Media USA, Inc.; and Monster Vision,
LLC filed written objections (Docket Nos. 154;
156). Having reviewed the briefing on the
motion, the Report, and the written objections, and for the
reasons explained below, the Court
ADOPTS-IN-PART the Magistrate Judge’s
Report and Recommendation (Docket No. 152),
GRANTS summary judgment of invalidity as to
claims 25 and 26 of U.S. Patent No. RE39, 470 (“the
’470 Patent”) and claim 22 of U.S. Patent No. 7,
382, 334 (“the ’334 Patent”), and
DENIES summary judgment of invalidity as to
claim 32 of the ’334 Patent and claims 13, 42, and 43
of U.S. Patent No. 6, 430, 603 (“the ’603
STANDARD OF REVIEW
Court reviews objected-to portions of the Magistrate
Judge’s Report and Recommendation de novo. Fed.R.Civ.P.
72 and 28 U.S.C. § 636(b)(1) (“A judge of the
court shall make a de novo determination of those portions of
the report or specified proposed findings or recommendations
to which objection is made.”). In conducting a de novo
review, the Court examines the entire record and makes an
independent assessment under the law. Douglass v. United
Servs. Auto. Ass’n, 79 F.3d 1415, 1430 (5th Cir.
1996) (en banc), superseded on other grounds by
statute, 28 U.S.C. § 636(b)(1) (extending the time
to file objections from ten to fourteen days).
Report recommends granting summary judgment of invalidity on
claim 25 of the ’470 Patent on § 101 grounds and
granting summary judgment of invalidity on claim 22 of the
’334 Patent for indefiniteness. The Report further
recommends denying summary judgment on claim 26 of the
’470 Patent and claim 32 of the ’334 Patent
because Defendant Clear Channel failed to show that claim 25
is representative of these claims and denying summary
judgment on the asserted claims of the ’603 Patent
because they are directed to patent-eligible subject matter.
Clear Channel objects to the Magistrate Judge’s
findings that: (1) it failed to show that claim 25 of the
’470 Patent is representative of claim 26 of the
’470 Patent and claim 32 of the ’334 Patent; and
(2) the asserted claims of the ’603 Patent are directed
to patent-eligible subject matter.
T-Rex objects to the Magistrate Judge’s recommendation
to grant summary judgment as to claim 25 of the ’470
Patent and claim 22 of the ’334 Patent. Specifically,
T-Rex contends that the Magistrate Judge’s analysis of
claim 25 was flawed in both steps of the two-step § 101
analysis. See Alice Corp. v. CLS Bank Int’l.,
573 U.S. 208 (2014). T-Rex also objects to the recommendation
to grant summary judgment that claim 22 is invalid due to
indefiniteness “solely in order to preserve error for
appeal.” Docket No. 154 at 6.
Magistrate Judge recommends denying summary judgment as to
claim 26 of the ’470 Patent and claim 32 of the
’334 Patent because Clear Channel failed to show that
claim 25 of the ’470 Patent is representative of the
other two claims. Relying on representativeness, Clear
Channel presented substantive arguments based only on claim
25 of the ’470 Patent, making no independent arguments
for invalidity of claim 26 of the ’470 Patent or claim
32 of the ’334 Patent.
that the Magistrate Judge did not have the benefit of Chief
Judge Gilstrap’s recent Memorandum Opinion and Order on
this issue, the Court finds PPS Data, LLC v. Jack Henry
& Associates, Inc., No. 2:18-cv-7-JRG, Docket No.
156, at 5-18 (E.D. Tex. Sept. 6, 2019) instructive here.
PPS Data notes “that the Federal Circuit has
never expressly addressed the legal framework for addressing
disputes about representative claims.” Id. at
5. Accordingly, Chief Judge Gilstrap proposes a
burden-shifting framework for analyzing representativeness.
the PPS Data framework, “[t]he party asserting
invalidity may overcome the presumption of independent
validity by offering a substantial rationale for treating a
claim as representative of other asserted claims.”
Id. at 7. Once the party challenging validity has
made “a prima facie case demonstrating
representativeness, ” the burden shifts to the patentee
to identify limitations in the asserted claims that are not
represented by the allegedly representative claim.
Id. at 9. “Unless a court finds the issue of
representativeness to be clear, it should conduct-and require
the parties to conduct-an individualized analysis of the
claims at issue.” Id. at 11.
Channel argues that claim 25 of the ’470 Patent is
representative of claim 26 of the ’470 Patent and claim
32 of the ’334 Patent because the claims “are
substantively similar and directed to the same abstract
idea.” Docket No. 130 at 24 n.2. Clear Channel explains
that in the ’470 Patent, claim 26 merely rewrites
method claim 25 as a system claim “by adding a handful
of generic computer components configured to implement the
same abstract idea recited in [c]laim 25.” Id.
On the ’334 Patent, Clear Channel argues that
unasserted claim 22 is a method claim that simply rearranges
the steps of claim 25 of the ’470 Patent and that
asserted claim 32 of the ’334 Patent rewrites claim
22’s method as an “arrangement for coordinating
and controlling electric displays.” Id. Clear
Channel contends that adding generic computer components or
rearranging the claimed steps does not change the fundamental
abstract nature of the claims. Id.