Veracode, Inc. v. Appthority, Inc. (137 F. Supp. 3d 17, 2015)

MEMORANDUM AND ORDER

DOUGLAS P. WOODLOCK, UNITED STATES DISTRICT JUDGE

I. BACKGROUND.. .32

A. Factual Background... 32

B. Procedural History.. .33

1. Initial Complaint and Pre-Trial Proceedings.. .33

2. Jury Verdict... 34

3. Post-Trial Motions... 34

C. Applicable Standards of Review.. .35

II. DEFENDANT’S INVALIDITY DEFENSES... 36

A Invalidity Defenses Submitted to the Jury...37

1. Background.. ,37

2. Obviousness of’924 Patent.. .37

3. Lack of Written Description.. .41

4. Conclusion.. .44

B. Invalidity Defenses Reserved for the Court.. .44 ,

1. Background.., 44 -

2. Unpatentable Subject Mattel; of ’609 Patent... 45 -,

3. Indefiniteness... 54

4. Conclusion... 59

III. WILLFUL INFRINGEMENT .. .59

A. Direct Infringement.. .60

1. Legal Standard... 60

2. ’609 Patent... 60

3. ’924 Patent,. .61

B.Willfulness.. .64

1. Subjective Willfulness... 64

2. Objective Willfulness... 69

IV. DAMAGES... 71

A. Appthority’s Motion for a New Trial Based on the Damages Award.. .71

1. Legal Standard... 72

2. Analysis... 72

B. Supplemental Damages... 83

C. Veracode’s Motion for Enhanced Damages... 84

1. Legal Standard... 84

2. Analysis... 85

D. Prejudgment Interest.. .87

V. INJUNCTIVE RELIEF.. .88

A. Background... 88

B. Legal Standard... 88

C. Findings of Fact and Conclusions of Law.. .89

1. Appropriateness of a Permanent Injunction. . .89

2. Scope of the Injunction.. .95

3. Appthority’s Request for a Stay of the Injunction.. .97

VI. MOTIONS FOR ATTORNEYS’ FEES... 99

A. Legal Standard... 99

B. Analysis... 100

1. Prevailing Party Status... 100

2. Exceptional Nature... 100

VII. CONCLUSION.. .103

Plaintiffs Veracode, Inc. and Rovi Solutions Corporation (collectively, “Vera-code,” except where otherwise noted) brought this action against Defendant Appthority, Inc., for infringing two patents, U.S. Patent No. 5,854,924 (the “’924 Patent”) and U.S. Patent No. 7,752,609, (the “’609 Patent”), relating to the analysis and manipulation of computer code. The jury found that Appthority willfully infringed two claims (1 and 5) of the ’924 Patent but did not infringe any claims of the ’609 Patent. The jury also found that all asserted claims of the patents-in-suit were valid. Following a separate presentation of evidence as to damages, the jury awarded $781,857 to Veracode. Before me now is an array of post-trial motions. For the reasons that follow, I. conclude that the jury’s findings and its damages award were supported by substantial evidence, that the claims of the patents-in-suit were valid, that Appthority’s infringement of claims 1 and 5 of the ’924 Patent was willful, that an award of enhanced damages or attorneys’ fees is unwarranted, and that a permanent injunction is appropriate to prevent further infringement of the ’924 Patent.

I. BACKGROUND

A. Factual Background

The underlying claims are described in greater detail in my order on claim construction, see Veracode, Inc. v. Appthority, Inc., 2013 WL 5587946 (D.Mass. Oct. 9, 2013), but a brief summary may be helpful here. Veracode is a computer security company founded in 2006 that provides a cloud-based platform for analyzing flaws and security risks in software applications, as well 'as providing remediation services to help developers fix the flaws in their code. Appthority, Veraeode’s competitor, provides a similar cloud-based platform for analyzing the enterprise risk—specifically through the identification of malware and risky behaviors—in mobile phone applications. Appthority first made its platform available to the public in 2012.

Veracode is the exclusive licensee of the ’924 Patent issued in 1998 and owned by Rovi. The ’924 Patent is a “static debugging tool ... to detect the presence of program errors and potential errors” in the machine-code version of a piece of software without actually running the analyzed software. Veracode also owns the ’609 Patent issued in 2010 but claiming priority to 2002. The ’609 Patent is a “software analysis framework” that consists of a method of decompiling machine code— which humans cannot interpret—into a form “that one of a certain skill can analyze.”

Both patents generate an intermediate file from a program’s binary code. Binary code is a machine-readable form of code that allows a computer to run a particular pieeé of software; it is originally written as source code by software developers and then compiled into binary form by a computer. Although binary code is not readable by humans, the intermediate file the patented technology generates is intelligible to persons of ordinary-skill in the art of software development A software developer can reverse engineer the intermediate code to reconstruct or approximate the program’s original source epde.

B. Procedural History

I. Initial Complaint and Pre-Trial Proceedings

Veracode filed its initial complaint on March 16, 2012, alleging willful infringement of the ’924 and ’609 Patents by Appthority. Appthority asserted affirmative defenses of non-infringement and invalidity with respect to both patents. Following the completion of fact discovery, I conducted a Markman hearing and construed relevant claim terms. See generally Veracode, 2013 WL 5587946. Although the parties initiated summary judgment practice, I’ chose to bring the matter to trial for jury fact-finding.

Prior to trial, the parties agreed on limited claims and defenses each could assert at trial. The trial accordingly concerned asserted infringement -by Appthority of claims 1, 5, and 17 of the ’924 Patent and claims 1, 13, and 14 of the ’609 Patent. Appthority’s defenses for the jury were limited to anticipation, obviousness, and invalidity for lack of written description as to each patent. Id. Appthority’s indefiniteness and- other invalidity defenses were reserved for the court. Id.

2. Jury Verdict

I held a ten-day trial on liability followed by a two-day trial on damages. The, jury returned a split verdict. It found that Ver-acode established by a preponderance of the evidence that the Appthority Platform infringes claims 1 and 5 of the ’924 Patent but not claim 17 or any of the claims of the ’609 Patent. It further found that Vera-code established by clear and convincing evidence that Appthority’s infringement of the ’924 Patent was willful. The jury rejected all of the invalidity defenses submitted to it, finding that Appthority did not establish by clear and convincing evidence that any of the asserted claims of the'’924 or ’609 Patents were anticipated, obvious, or- invalid for lack of written description. After a separate presentation of evidence on damages, the jury found that Veracode had sustained damages in the amount of $781,857 as a result of Appthority’s infringement.

3. Post-Trial Motions

Following the verdict, the parties submitted a total of eleven post-trial motions. Both parties renewed (at least in part) their earlier Fed. R. Civ. P. 50(a) motions for. judgment as a matter of law, filed motions for judgment on partial findings pursuant to Fed. R. Civ. P. 52(c), and seek the award of attorneys’ fees under 35 U.S.C. § 285. Veracode also filed motions for, a permanent injunction, the award of enhanced damages under 35 U.S.C. § 284, and for entry of judgment. Appthority has filed a motion for a new trial and/or remit-titur, and seeks a stay of any injunction. After a hearing.on these motions, I invited the parties to submit further briefing. I address these motions as a basis for entering a final judgment in this case.

C. Applicable Standards of Review

In considering these motions, I am guided by several distinct standards of review, dictated by the standards applied in this circuit. See Jennings v. Jones, 587 F.3d 430, 435-36 (1st Cir.2009); see also i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 841 (Fed.Cir.2010), aff'd 564 U.S. 91, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011).

Most of the parties’ motions seek judgment as a matter of law. A motion for judgment as a matter of law on patent claims is reviewed according to First Circuit case law. See Abbott GmbH & Co., KG v. Centocor Ortho Biotech, Inc., 971 F.Supp.2d 171, 175 (D.Mass.2013); see also Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1261 (Fed.Cir.2013), cert. denied, — U.S. —, 134 S.Ct. 1013, 187 L.Ed.2d 851 (2014). Under Fed. R. Civ. P. 50(a)(1), a party may seek judgment, as a matter of law on an issue after it has been fully heard by the jury on the basis that “a reasonable jury would not have a legally sufficient evidentiary basis to find for the [other] party on that issue.” Where, as here, the court reserves the legal questions raised by the motion until after -the jury returns a verdict, a party may file a. renewed JMOL motion and may request- in the alternative a new trial under Fed. R. Civ. P. 59. See Fed. R. Civ. P. 50(b). A Rule 50(b) motion may be granted only on a .ground that was also raised in the pre-verdict motion. See Parker v. Gerrish, 547 F.3d 1, 12 (1st Cir.2008) (“a renewed motion for judgment as a matter of law under Fed. R. Civ. P. 50(b) is bounded by the movant’s earlier Rule 50(a) motion” (quoting Correa v. Hosp. S.F., 69 F.3d 1184, 1196 (1st Cir.1995)).

The burden for judgment as a matter of law, particularly after a jury verdict, is demanding. See Ortiz v. Jordan, 562 U.S. 180, 131 S.Ct. 884, 892, 178 L.Ed.2d 703 (2011); Monteagudo v. Asociación de Empleados del Estado Libre Asociado de Puerto Rico, 554 F.3d 164, 170 (1st Cir.2009). To prevail on a renewed motion for JMOL following a jury trial, the moving party must show that “the evidence points so strongly and overwhelmingly in favor of the moving party that no reasonable jury could have returned á verdict adverse to that party.” Id. (quoting Marcano Rivera v. Turabo Med. Ctr. P’ship, 415 F.3d 162, 167 (1st Cir.2005)); see Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed.Cir.1998) (citing Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)). In reviewing a JMOL motion, I view the evidence in the light most favorable to the non-moving party, and may not substitute my own view for that of the jury where the evidence is in conflict. See Osorio v. One World Techs., Inc., 659 F.3d 81, 84 (1st Cir.2011); see also Perkin-Elmer Corp., 732 F.2d at 893.

The standard for a new trial pursuant to Fed. R. Civ. P. 59 is slightly different, and my authority to grant a new trial is much broader than my authority to grant judgment as a matter of law. See Jennings, 587 F.3d at 436. A new trial is appropriate only where “the verdict is against the weight of the evidence, ... the damages are excessive, or ... for other reasons, the trial was not fair to the party moving.” Cigna Fire Underwriters Co. v. Macdonald & Johnson, Inc., 86 F.3d 1260, 1262-63 (1st Cir.1996). I will grant a new trial only where the verdict “amount[s] to a manifest miscarriage of justice.” Federico v. Order of Saint Benedict in R.I., 64 F.3d 1, 5 (1st Cir.1995); see Chedd-Angier Prod. Co. v. Omni Publ’ns Int’l, Ltd., 756 F.2d 930, 934 (1st Cir.1985) (“A party is not entitled to a new trial merely because the evidence introduced at trial would have supported an opposite verdict.”).

The parties also seek judgment on partial findings on several issues under Fed. R. Civ. P. 52(c). Rule 52(c) is designed to parallel Rule 50(a) and permit the court to enter a judgment when “it can appropriately make a dispositive finding of fact on the evidence.” Fed. R. Civ. P. 52, advisory committee note, 1991 amend. However, “[t]he standards that.govern.judgment as a matter of law in a jury case have no bearing on a decision, under Rule 52(c).” Fed. R. Civ. P. 52, advisory committee note, 2007 amend. In addressing a Rule 52(c) motion, the court is to weigh the evidence, assess the credibility of the witnesses, resolve evidentiary conflicts, and decide based on the preponderance of the evidence whether judgment should be granted in the moving party’s favor. See 9C Charles Allen Wright & Arthur R. Miller, Federal Practice and Procedure § 2573.1 (3d ed. 2008). A Rule 52(c) judgment “must be supported by findings of fact and conclusions of law.” Fed. R. Civ. P. 52(c); see Fed. R. Civ. P. 52(a). My findings and conclusions are set forth in this Memorandum and Order.

II. DEFENDANT’S INVALIDITY DEFENSES

Appthority bears the burden of establishing its invalidity defenses by clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011); see also Colorado v. New Mexico, 467 U.S. 310, 316, 104 S.Ct. 2433, 81 L.Ed.2d 247 (1984) (proof by clear and convincing evidence requires “plac[ing] in the ultimate factfinder an abiding conviction that the truth of its factual contentions are ‘highly probable’” (citation omitted)). I consider separately those defenses that were submitted to a jury—for which Appthority seeks judgment as a matter of law or a new trial under Fed. R. Civ. P. 50(b)—and those that were reserved for the court— for which Appthority seeks judgment on partial findings under Fed. R. Civ. P. 52(c).

A Invalidity Defenses Submitted to the Jury (Doc. 250)

I. Background

The jury considered whether the asserted claims of the ’924 Patent were anticipated, obvious, or invalid for lack of written description due to the inclusion pf the term “program error or potential program error.” It also considered whether the asserted claims of the ’609 Patent were anticipated or invalid for lack of written description due to the inclusion of'thp term “exhaustive.” The jury found that 'Appth-ority did not establish by clear and convincing evidence that any of the asserted claims of the patents-in-suit were invalid on the grounds presented to it. Appthority now seeks judgment as a matter of law or a new trial as to its' obviousness defense for the ’924 Patent and its writteiH description defenses for the ’924 Patent and the ’609 Patent.

2. Obviousness of ’924 Patent

a. Legal Standard

Under 35 U.S.C. § 103, a patent may not be obtained “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” Obviousness is a question of law, but it is predicated on factual underpinnings. i4i Ltd., 598 F.3d at 845. A party seeking to invalidate a patent on obviousness grounds must demonstrate “by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA Inc., 566 F.3d 989, 994 (Fed.Cir.2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.Cir.2007)). In other words, the fact finder must determine whether each of the elements of the claiméd ’ invention was independently known in the prior art, and whether a reason existed at the time of the invention that would have prompted a person of ordinary skill in the art to combine the known elements in- a way the claimed invention does. This entails consideration of “(1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, if any, of nonobviousness.” Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050 (Fed.Cir.1988); see Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

Secondary considerations suggesting that the claimed invention was not obvious include: commercial success of the products covered by the claim; a recognized need for a solution that was satisfied by the claimed invention; response to the invention, including industry acclaim and/or skepticism; superior results over closely related prior art; licensing of the patent due to the merits of the claimed invention; and attempts by the alleged pat-qnt infringer , to patent the same or a similar invention, See Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1305 (Fed.Cir.2010); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed.Cir.2004); B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582 (Fed.Cir.1996). This evidence of secondary considerations .“may often be .the most probative. and cogent evidence [of nQnobviousness] in the record.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed.Cir.1983).

In assessing the evidence, the fact finder cannot rely on the benefit of hindsight and instead must “return to the time the invention was made,” Uniroyal, 837 F.2d at 1050-51 (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed.Cir.1985)); to determine whether the obviousness of the claimed invention was highly probable. Procter & Gamble, 566 F.3d at 994. Although expert testimony is often critical to the question of obviousness, the Federal Circuit has consistently indicated that conclusory statements of obviousness by experts are inadequate to support a finding of obviousness. Inno-genetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed.Cir.2008); In re Kahn, 441 F.3d 977, 988 (Fed.Cir.2006). An expert testifying as to obviousness should “provide the glue to combine [prior art] references,” “explain what reason or motivation one of ordinary skill in' the art at the time of the invention would havé had to place these pieces together,” and incorporate any “objective evidence of nonobviousness into her obviousness analysis.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348-49 (Fed.Cir.2014).

b. Analysis

Appthority asserts that the claimed invention of the ’924 Patent simply combined known techniques of disassembling and decompiling for the purpose of debugging, which were articulated in an article published in 1995 by Australian computer scientists (the “Cifuentes arti-clé”), with known techniques of debugging assembly-level code, which were articulated in a patent filed in 1992 (the “Hansen pateht”). See Cristina Cifuentes & K. John Gough, Decompilation of Binary Programs, 25 Software—Practice & Experience 811-829 (July 1995); Assembly Language Programming Potential Error Detection Scheme Sensing Apparent Inconsistency with a Previous Operation, Ü.S. Patent No. 5,132,972 (filed July 21, .1992). These publications were introduced at trial by Dr. Paul Clark, Appthority’s expert,' who testified that all of the elements of the ’924 Patent existed in these publications, with the potential exception of the output arrangement.

Veracode does not dispute that aspects, if not all of the relevant elements, of the asserted claims of the ’924 Patent were present in the prior art; instead, they contend that Appthority did not present any evidence that a person of ordinary skill in the art would have found each claim of the patent obvious in light of the prior art of the 1995 Cifuentes article and the 1992 Hansen patent. The parties agreed for the purposes of the invalidity defenses to the ’924 Patent that the level of ordinary skill in the art is that of a person in the field of computer science with an undergraduate Bachelor of Science degree and/or about two years of practical programming experience or other software engineer experience, and an understanding of basic principles of analyzing computer programs in the 1996 time frame when the invention in the ’924 Patent was conceived.

The only evidence Appthority offered at trial regarding a motive to combine these references or some perception of this combination as desirable was through Dr. Clark, its expert. Although expert opinions can be valuable in this context, “an expert’s opinion on the legal conclusion of obviousness is neither necessary nor controlling.” Avia Grp. Int’l v. L.A. Gear. Cal., Inc., 853 F.2d 1557, 1564 (Fed.Cir.1988), abrogated on other grounds, Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed.Cir.2008). At trial,' defense counsel asked Dr. Clark:

We talked earlier in your testimony about when you combine references, if we’re using the Cifuentes ’95 and the Hans[e]n patent together, that there are some things you consider about whether you can combine that. I’d like you to tell us why you think it is obvious to combine these two references.

Dr. Clark stated that:

[T]his is assembly language, so it’s intermediate code which is clearly mentioned by the Cifuentes article. And, it talks about error detection, which it would include bugs. So there’s certainly somebody who wanted to display an error list, if that was somehow inventive, would be able to look to both these references.

When asked whether this combination “would be intuitive or obvious to a programmer in the ’95 or ’96 time frame,” Dr. Clark testified, “Sure. You would have, as I said, assemblers and assembly language were known and available tools to a programmer before 1996, to be sure.” '

That one could combine the references and had the tools to do so, however, is not the same as having the motive or suggestion to do so. To succeed on an obviousness defense, not only must “each and every element of [the] claimed invention” be presented in the prior art,-Procter & Gamble, 566 F.3d at 994, but there must also be “some teaching or suggestion, in the prior art, to combine' the elements.” Innogenetics, 512 F.3d at 1374; see Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1565 (Fed.Cir.1987), I find Dr. Clark’s conclusory testimony inadequate to satisfy this requirement, absent any indication that one would have connected the dots between the Cifuentes article and the Hansen patent in this way. See InTouch, 751 F.3d at 1348-49; Innogenetics, 512 F.3d at 1374.

More importantly, the inferences Appth-ority asks to be drawn from Dr. Clark’s direct testimony are rebutted by his cross-examination and the testimony of other witnesses. On cross-examination, Dr. Clark acknowledged that in his. deposition he had testified that a person of-ordinary skill in the art would not “simply provide the output of Cifuentes ’95 into the Hansen debugging program and run the program.” This position regarding the prospect of combining the concepts was supported by testimony from Dr. Aviel Rubin, who testified on behalf of Veracode that “the Ci-fuentes article and the Hansen invention are completely incompatible” because the Hansen patent processed only a certain type of assembly code with which the de-compiler articulated in the Cifuentes article could not work. According to Dr. Rubin, because of this incompatibility, “Ci-fuentes actually teaches away from combining [with] something like Hansen,” rather than motivating such a combination. Dr. Rubin further testified that, because of this apparent incompatibility, modifying the Cifuentes, program to be compatible with the Hansen patent required skill far beyond that of a person of ordinary skill in the art, as the parties had defined it. The lack of motivation to combine the existing tools was also evidenced by the testimony of Mr. Christien Rioux, the inventor, who stated that, at the time, no one thought a practical decompiler was feasible. Cf. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed.Cir.1998) (no substantial evidence to support, obviousness defense because “some of the cited references cautioned against” combining the prior art elements as the patented concept did, and-the defendant’s “witnesses themselves expressed the view that such [an invention] would be undesirable, providing cogent evidence that one of ordinary skill would not'have deemed it obvious” to create such a product).

In short, Appthority failed to present evidence of a teaching or suggestion in the prior art to combine the references in the Hansen patent and the CifuenteS article, and that contention was affirmatively contested by Veracode. Where “the prior art gave either no indication of which parameters were critical or no direction -as to which of many possible choices is likely to be successful,” it is appropriate to reject “hindsight claims of obviousness,” which is a fair characterization of Dr. Clark’s initial statements regarding the obviousness of the combination. In re Kubin, 561 F.3d 1351, 1359 (Fed.Cir.2009) (citation omitted). , •

In addition to the absence of evidence of a motive or suggestion to combine the known concepts, several objective indicia of non-obviousness support- the jury’s finding. Commercial success is a kéy consideration—that occurs when “the product met an unsolved need and was quickly adopted' by the ... industry.” ATD Corp., 159 F.3d at 546; see Graham, 383 U.S. at 17, 86 S.Ct. 684. This consideration “is only significant if there is a nexus between the' claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed.Cir.2006). There is a presumption that the commercial success of a patentee’s product “is due to the patented invention” when “the successful product is the invention disclosed and claimed in the patent.” Id. at 1312 (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed.Cir.1997)). When this presumption applies, the defendant bears the burden of presenting evidence that the “commercial success ... was due to any factor other than its patented structure.” See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1394 (Fed.Cir.1988). If, however, “the commercial success is due to an unclaimed feature of the device” or “was known in the prior art,” the success is irrelevant. Id.

Appthority contends that there is an insufficient nexus between Veracode’s commercial success and the claimed invention of the ’924 Patent, because the patent did not bring any' commercial success to the initial assignee or to Rovi for seven years after its issuance, and because Vera-code paid only $2 million for the patent license but has invested over $65 million in research and development of its products. These arguments are not sufficiently specific to identify an alternative reason for or factor in Veracode’s success other than the patented technology, and therefore do not serve to rebut the presumption that the success, of Veracode’s products that incorporate the ’924 Patented technology is due to their inclusion of this technology. Indeed, Veracode presented evidence that it advertises the ’924 Patent as part of the innovative nature of its products, pointing specifically to marketing materials indicating that its products that scan mobile applications to detect the presence of program errors and potential program errors are patent-protected, and to its interactions with potential customers, in which it articulated the license to the ’924 Patent as a distinguishing feature of its products. There is no basis to believe that Vera-code’s investment in the license of the ’924 Patent, and its.investment in first deciding to obtain the license -and then undertaking to harness that technology most effectively in the .market, was not the basis for its commercial success.

Veracode also points to other indicia of non-obviousness that support the jury’s verdict. Ms. Samskriti King, Veracode’s Executive Vice President for Product Strategy & Corporate Development, testified that Veracode has received several awards for its technology, including one in 2008 specifically for software that tests for security risks in binary code, as well as being recognized in the industry from 2009 through 2014 for its work in applications security testing. These recognitions specifically contemplate the claimed technology as the defining and innovative component of Veracode’s products and therefore bear a sufficient nexus to the ’924 Patent. See Rambus Inc. v. Rea, 731 F.3d 1248, 1256-57 (Fed.Cir.2013); Vulcan Eng’g Co. v. Fata Aluminium, Inc., 278 F.3d 1366, 1373 (Fed.Cir.2002). In addition, Veracode offered evidence that Appthority had filed a provisional patent application seeking to patent very similar technology to the ’924 Patented technology. See Polaroid Corp. v. Eastman Kodak Co., 641 F.Supp. 828, 848 (D.Mass.1985) (considering defendant’s “own application concerning the patentability” of the underlying technology as “some evidence” that the patent’s claims “are valid against the prior art”), aff’d, 789 F.2d 1556 (Fed.Cir.1986).

These objective indicia suggest .that the invention was not obvious, in light of the prior art. See Stratoflex, 713 F.2d.at 1538. For these reasons, I find that substantial evidence supported the jury’s conclusion that the claims of the ’924 Patent were not obvious.

3. Lack of Written Description

a. Legal Standard

Under 35 U.S.C. § 112, a patent specification must “contain a .written description of the invention, and .of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same;” That description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed.Cir.1991). The lack of an adequate written description can be a basis for finding the patent invalid. “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (citing Vas-Cath, 935 F.2d at 1555).

As with the nonobviousness requirement, compliance with the written description requirement is a question of fact focused-on the time at which the patent process for the claimed invention began. Ariad Pharm., 598 F.3d at 1351. Determining whether the patentee “possessed” the claimed subject matter “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill, in the art” át the time to assess whether the specific articulation in the disclosure.demonstrates possession. Id. Articulated. examples or “an actual reduction to practice” are not necessary to satisfy the written description requirement; rather, “the specification itself ... must demonstrate possession.” Id. at 1352. A party challenging the validity of a patent based on lack of written description must demonstrate by clear and convincing evidence that the inventors did not possess the invention. See Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 996-97 (Fed.Cir.2000).

b. ’924 Patent

Appthority contends that no reasonable jury could find that the ’924 Patent is. supported by an adequate written description regarding the claim term “program error or potential program error.” Although Appthority’s argument on this point is somewhat convoluted, its direction seems , to be as follows: Appthority contends that Veracode interpreted my earlier construction of “program .errors”—as “the result of an invalid or impossible maneuver”—to include the subjective opinion of an end-user or enterprise regarding a wanted or unwanted behavior, and that it is the end user’s subjective preference that makes the behavior “invalid.” Veracode, 2013 WL 5587946, at *5-7. According to Appthority, the testimony of Dr. Clark, its expert, establishes that the specification in the ’924 Patent does not demonstrate to a person of ordinary skill in the art that the inventor of the ’924 Patent had possession of a method or mechanism to determine an end user’s opinion regarding specific behaviors, and consequently to determine whether such a behavior was in fact “invalid.’’ Veracode simply responds that the term “program error” was well known in the art at the time and therefore that the specification is adequate.

Appthority’s argument is unpersuásive. Appthority seeks to reinvigorate a definition of “program error” that was rejected during claim construction, and to attribute a “subjective opinion” element to Veracode that it has not asserted. Although Appth-ority is correct that Dr: Clark testifíéd that the ’924 Patent did not disclose a “user preference” or user privilege type of program error, or “things like access to a calendar or location tracking,” and that “the written description of the ’924 Patent would be insufficient “if you interpret the claims to include those types of errors” because they were not known to a person of ordinary skill in the art at the time, the term “program error” as it has been construed does not include such types of errors. In contrast, Dr. Rubin (Veracode’s expert) testified, and the actual language of the ’924 Patent demonstrates, that the ’924 Patent provides multiple examples of a program error or potential program error, including “uninitialized memory, array bounds violations, accesses outside of alocated memory,” and more. Dr. Clark acknowledged that the ’924 Patent written description provided such a list of recognizable program errors. That Dr. Rubin did not testify as to the inclusion of any end-user preference error in “program error” is inapposite, where the term was not construed to include such errors. Accordingly, there was substantial evidence to support the jury’s conclusion that the written description was adequate as to “program error” or “potential program error.”

c. ’609 Patent

As for the ’609 Patent, Appthority contends that no reasonable jury could find that the specification demonstrates possession of the claim term “exhaustive.” Here, again, the dispute centers on the definition of the term itself. During claim construction, I concluded that the term “exhaustive” did not require construction because it was used in the claims according to its plain meaning. See Veracode, 2013 WL 5587946, at *15-16. In making its post-trial arguments, Appthority- employs a definition of an “exhaustive” model as one that represents all necessary states and branches within the code—a definition that focuses on completeness of the representation—and contends that because such a model is impossible, as Dr. Clark testified, the patentee could not have possessed it. Vei’acode correctly observes that this construction of “exhaustive” was rejected during the claim construction process. See id. at *15. In turn, Veracode argues that an appropriate reading of the term “exhaustive”—that the model looks'at every single line or instruction in the binary program file when building the claimed data and control flow models—is clearly supported in the specification (even though it does not appear in the specification), is understandable to persons of ordinary skill in the art at the time, and allowed such persons to recognize that the patentee invented what is claimed.

There is substantial evidence in the record to support Veracode’s argument and the jury’s verdict. Dr. Rubin identified the relevant language in the ’609 Patent specification as: “What is also needed -is a complete decompiling process and. toolset that allows a full representation of the.control and data flows of a target program such that all instructions and internal processes are fully represented at the nánocode level.” He testified that it was clear from this language that the patent was aimed at creating a complete model “by looking at every single instruction in a program,” and that this satisfactorily defined the “optimized, exhaustive model” claimed in the ’609 Patent. The testimony of Dr. Steven Hanna, an expert for Appthority, is consistent with this understanding. Dr. Hanna testified that an optimized, exhaustive data and control flow model is one that “consider[s] all these instructions and how they are interrelated before pruning,” rather than throwing away instructions before calculating dependencies between them. In other words, what is exhaustive is the model rather than the outcome. This is consistent with the use..of the term “exhaustive” in the ’609 Patent itself as modifying the word, “model,” and is consistent with my own construction of the term “complete” as being used in the claims “only to describe the intermediate representation, ... but not to directly describe the optimized model itself.” Sea Veracode, 2013 WL 5587946, at *15.

Dr. Clark’s testimony is not inconsistent with this. Rather than employ the plain meaning of “exhaustive,” Dr. Clark testified that he understood “exhaustive” to mean “to model all of the executable code then using" current computer technology.” He stated that such a feat is' “computationally infeasible for a' program' of a certain size, depending upon the hardware.” In his opinion, using this definition, the written description in the ’609 Patent was inadequate, because “if we understand exhaustive not as it’s being asserted but as I understand it, there’s no. disclosure that I can see that would tell me how to implement it.” As the claim construction order makes clear, however, this definition of exhaustive is not the one relevant here.

Appthority misreads Mr. Rioux’s testimony as supporting its argument when in fact it bolsters Veracode’s appropriate reading of “exhaustive” as referring to the method used rather, than the completeness of the final product. Mr. Rioux testified that a data flow graph .could be “exhaustive just in how it’s generated. Again, this covers the modeling, not what you do with it after.” He further explained that “[y]ou can’t be searchably complete. You can be transformably complete,” and that the ’609 Patent claimed technology .did not aim to produce a data flow graph of a program that is one-hundred percent complete, because “it’s not part of the modeling process.” He emphasized that the modeling process in the claims is “structurally” complete, but not “searchably complete.”

Appthority argues in the alternative that it presented sufficient evidence at 'trial to establish that' Mr. Rioux, the inventor, did not have “possession of the claimed subject matter as of the filing date,” as required under § 112, because a commercial product using the patented technology was not prototyped until at least two years later, and not released until at least five years later. See Ariad, 598 F.3d at 1351. Section 112, however, does not require an affirmative showing of possession of the invention. Instead, “a pm'pose of the written description requirement” is “to ensure that the applicant had possession of the invention as of the desired filing date.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed.Cir.2002) (“A showing of ‘possession’ is ancillary to the statutory mandate that ‘[t]he specification shall contain á written description of the invention’ ”). The emphasis is on “the patentee’s disclosure of such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention;” Id. (internal quotation marks and citations omitted). Possession may be shown “by means of an affidavit dr a declaration during prosecution.” Id. Mr. Rioux’s statements at trial that at least some of the products he worked on did not contain the patented technology after 2002 thus do not serve to defeat the presumption of validity of the patent where the written description adequately describes the claimed invention.

In sum, Veracode’s asserted definition of the term “exhaustive”—understood by its plain meaning in the context of the ’609 Patent—as referring to the model, rather than the product, was supported by the testimony at trial. Further, there was substantial evidence to support the conclusion that the description in the ’609 Patent of the model adequately explained that it operates -in an exhaustive fashion in a way that a person of ordinary skill in the art could understand at the time. See Ariad; 598 F.3d at 1351. Although the term does not appear in the specification, the specification"'describes the invention adequately. As a result, there is substantial evidence to support the jury’s conclusion that the written description of the ’609 Patent was sufficient.

4. Conclusion

After reviewing the record, I am persuaded that the jury had a legally sufficient evidentiary basis to conclude that Appthority did not demonstrate by clear and convincing evidence that either the ’924 or ’609 Patents are invalid on the basis of obviousness or lack of written description. Accordingly, I will deny Appthority’s motion for judgment as a matter of law as to these invalidity defenses.

B. Invalidity Defenses Reserved for the Court (Doc. 229)

1. Background

The parties agreed that the invalidity defenses Appthority could assert during the jury trial would be limited to anticipation, obviousness, and invalidity due to lack of written description, as to both patents-in-suit. This agreement also permitted Appthority to present an invalidity defense of indefiniteness to the court, which it did following the close of evidence in the liability portion of the trial.

Appthority now asserts in addition that the ’609 Patent is invalid because it consists of unpatentable subject matter. Vera-code contends that this defense should not be considered because Appthority expressly waived it in the agreement with Vera-code, and because Appthority did not pui--sue a patentable subject matter defense until raising it in its Rule 50(a) motion after the close of evidence and before the jury verdict.- Instead of including this claim in its renewed Rule 50(b) motion after trial, Appthority raises it in -its separate motion for judgment, on partial findings pursuant to Rule 52(c). . .

Appthority has resurrected a defense that had indeed been effectively abandoned. However, this defense was not necessarily waived, as Veracode contends, by the agreement between the parties. That agreement appears ■ designed to limit the claims and invalidity defenses that would be presented at trial, and does not expressly preclude Appthority from raising this defense in a post-trial motion. Cf. Wood v. Milyard, — U.S. —, 132 S.Ct. 1826, 1832 & n. 4, 1833 n. 5, 182 L.Ed.2d 733 (2012) (courts may resurrect forfeited defenses that party failed to preserve, but may not resurrect waived defenses that “party has knowingly and intelligently relinquished”). There is a practical consequence of this belated assertion, however: Veracode did not present evidence related to this defense and must—in theory—resort to arguing on a potentially incomplete record against the defense.

At the hearing on these post-trial motions, I afforded Veracode an opportunity to offer additional evidencé regarding the patentability of the subject matter'under the ’609 Patent, which it did in the form of a declaration from Mr. Rioux. Appthority also submitted a declaration from Paul Clark in support of its position, and both parties offered additional argument on the issue by reference to the witnesses, and exhibits offered at trial. Because Veracode has had an adequate opportunity to respond to this defense, I will not invoke principles of equitable estoppel to prevent consideration of this belatedly reasserted defense.

2. Unpatentable Subject Matter of ’609 Patent

a. Legal Standard

As a threshold requirement for patent protection, the patented technology or subject matter of a patent must be patentable.' 35 U.S.C. § 101. If this requirement is not satisfied, the patent is invalid. The purpose of § 101 is to ensure “that patent protection promotes, rather than impedes, scientific progress and technological innovation.” I/P Engine, Inc. v. AOL Inc., 576 Fed.Appx. 982, 996 (Fed.Cir.2014) (nonprecedential) (Mayer, J,, concurring).

Section 101 defines patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has identified three categories of unpatentable subject matter (or :patent-ineligible concepts) because they fail to meet this definition: laws of nature» physical phenomena, and abstract ideas, including mental processes. In re Bilski, 545 F.3d 943, 952 (Fed.Cir.2008) (en banc) (citing Supreme Court decisions), aff'd sub nom. Bilski v. Kappos, 561 U.S. 593, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). These categories are not patentable because “they are the basic tools of scientific and technological work,” Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972), and must be available for future use by others. Inventions relying on such patent-ineligible concepts become patentable only when they apply the concept “to a new and useful end.” Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948).

The Supreme Court has recently focused its attention on the patentability requirement, particularly in the realm of abstract ideas and mathematical processes. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, — U.S. —, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., — U.S. —, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012). Under Alice and Mayo, a defendant asserting that a patent covers unpat-entable subject matter must satisfy a two-part test. Alice, 134 S.Ct. at 2354.

First, the defendant must show that the claims at issue are directed toward one of the patent-ineligible concepts. Id.) see Mayo, 132 S.Ct. at 1296-97. This step requires ascertaining the purpose of the claimed invention and analyzing whether that purpose is, for example, abstract. See Cal. Inst. of Tech. v. Hughes Commc’ns Inc,, 59 F. Supp. 3d 974, 980 (C.D.Cal.2014).

If the defendant satisfies this burden, it must then satisfy the second step by demonstrating that there-is no “inventive concept” in the claimed, matter or technology that would “transform the nature of the claim into a patent-eligible application.” Alice, 134 S.Ct. at 2354 (citing Mayo, 132 S.Ct. at 1294, 1297-98. (internal quotation marks omitted)). An “inventive concept” is one that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. (quoting Mayo, 132 S.Ct. at 1294 (alteration in original)). Looking for an inventive concept requires consideration of “the elements of each claim both individually and as an ordered combination.” Id. (citing Mayo, 132 S.Ct. at 1297-98 (internal quotation marks omitted)). “[R]ecitation of conventional, routine, or well-understood activity will not save an abstract claim. ... But a claim element is not conventional just because it appears in prior art.” Cal. Inst., 59 F.Supp.3d at 980. If the ordered combination of elements, considering all of the elements together, “constitutes conventional activity, the claim is not patentable.” Id. However, even if a claim element individually is abstract (standing alone), “a series of conventional elements may together form an unconventional, patentable combination.” Id.

b. Findings of Fact and Conclusions of Law

The ’609 Patent claims a software analysis framework that consists of methods and systems of analyzing executable software code using a computer. As explained above, when a programmer writes a computer program, he or she does so in source code. That source code is not readable by computers, and as a result must be compiled. into an intermediate file, which is then assembled into a binary that is readable by a computer; this final result is the executable file. Binary is. not readable by humans. When the original source code is not available, decompilers and similar tools are used to translate a binary into an intermediate representation that is then readable by a programmer and can be used to determine, at least to some degree of accuracy, what the original source code for the program was.

The claimed method in the ’609 Patent processes executable software code to generate “an optimized, exhaustive data flow model” and “an optimized, exhaustive control flow model.” In so doing, it decompiles the executable software code into an intermediate file form “that one of a certain skill can analyze.” This provides “a complete model of the executable software code based on the optimized data flow model and the optimized control flow mod- ' el,” which “facilitate^] analysis of the executable software code” by comparison to the intermediate file.

Appthority contends that the ’609 Patent claims are directed to a computerized, automated approach to software analysis that is based on longstanding technological approaches (data flow and control flow), which were previously done by hand using human mental processes, and are therefore unpatentable. Veracode apparently concedes that the concepts of control flow and data flow analysis are abstract ideas, but instead contends that the invention is directed at much more than these .concepts and contains inventive components, because the specific processes articulated in the ’609 Patent claims cannot be'" performed by humans and contain meaningful limitations on the abstract idea underlying the patent claims.

i. Directed to a Patent-Ineligible Concept

The focus in the first part of the Alice/Mayo test is on the purpose of the claimed invention, rather than its novelty. See Enfish, Inc. v. Microsoft Corp., 56 F.Supp.3d 1167, 1170-71 (C.D.Cal.2014). The claimed invention here involves a method of processing code to generate optimized, exhaustive data flow and control flow models. The specific features of these models—that they are optimized and exhaustive, for example—are relevant to the second part of the analysis, but not to the first, as Veracode contends.

Mathematical relationships and formulas, including algorithms, are considered abstract ideas. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.Cir.2014); see Parker v. Flook, 437 U.S. 584, 585 n. 1, 594-95, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk, 409 U.S. at 67, 93 S.Ct. 253. The basic concept of translating binary code into an equivalent, legible code is, in essence, an idea of mathematics implemented by a mental process. See Gottschalk, 409 U.S. at 67, 93 S.Ct. 253 (concluding that “conversion of [binary-coded decimal] numbers to pure binary numerals can be done mentally” through “ordinary arithmetic steps a human would use,” and that claim for computer to run conversion was patent-ineligible because these mathematical procedures require “no new machinery” to be carried out by computers); Cal. Inst., 59 F.Supp.3d at 993 (“concepts of encoding and decoding are longstanding steps in the process of error correction,” and therefore claims that “explicitly recite the fundamental concepts of encoding and decoding data” are directed to abstract ideas).

Appthority has presented substantial evidence that the primary functions of the invention at issue here—control flow and data flow analysis—are longstanding, recognized building blocks of computer science. See generally Alfred V. Aho et al., Compilers: Principles, Techniques, and Tools (reprint 1988). Consistent with the policy purposes of the patent system, these basic principles are not patent-eligible. See Enfish, 56 F.Supp.3d at 1174 (“Longstanding practices are often the building blocks of future research and development. Patents on these practices would significantly impede productive or inventive activity, to the detriment of society.”).

In addition, both parties recognize that it is possible to analyze binary code manually or mentally. “[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible .... because computational methods which can be performed entirely in the human mind are the types of methods that embody the ‘basic tools of scientific and technological work-that are free to all men and reserved exclusively to none.” See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed.Cir.2011) (citing Gottschalk, 409 U.S. at 67, 93 S.Ct. 253).

It is clear, then, that the claimed invention of the ’609 Patent is directed at a building block of computer science and a fundamental practice in the industry, and therefore is directed at a patent-ineligible concept.

ii. Presence of an Inventive Concept

I ask next whether the patent consists exclusively of a building block concept, or whether it forms an inventive concept by offering “additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize [the abstract, ineligible concept] itself.” Mayo, 132 S.Ct. at 1297; see Alice, 134 S.Ct. at 2354. To survive this inquiry, the claims must do more than employ a generic computer to perform a task that has been-long-recognized. This was the thrust of Alice, in which the Supreme Court stated that a claim “directed to [an], abstract idea” does not “transform that abstract idea into a patent-eligible invention” by “merely requiring] generic computer implementation.’ ” Alice, 134 S.Ct. at 2357-58 (citing Flook, 437 U.S. at 594, 98 S.Ct. 2522); see Bilski v. Kappos, 561 U.S. at 610-11, 130 S.Ct. 3218 (2010) (“the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of [the idea] to a particular technological environment”).

Indeed, the case law makes clear that a process that simply automates a known transaction and requires nothing more than a generic computer to perform conventional computer functions and activities already known in the industry is not patent-eligible. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1327 (Fed.Cir.2015) (“the presence of a general purpose computer to facilitate operations through uninventive steps does not change the fundamental character of an invention”); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351, 1355 (Fed.Cir.2014) (claims not patent-eligible because they “are squarely about creating a contractual relationship ... that is beyond question of ancient lineage,” and their “invocation of computers adds no inventive concept” because “[t]he computer functionality is generic”); Digitech Image Techs., LLC v. Elecs, for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.Cir.2014) (claim employing “algorithms to manipulate existing information to generate additional information” not patent-eligible); Planet Bingo, LLC v. VKGS LLC, 576 Fed.Appx. 1005, 1006 (Fed.Cir.2014) (nonprecedential) (computerization of bingo game not patent-eligible because claim “consists solely of mental steps which can be carried out by a human using pen and paper”); see also Cyber-Source, 654 F.3d at 1370 (invocation of the Internet to perform the transaction, does not transform an ineligible claim into an eligible one). Even the addition of steps for implementing the abstract idea will' not render the claim patent-eligible if the additional steps are routine and conventional, and therefore “add nothing of practical significance to the underlying abstract idea” or serve to limit it in some meaningful fashion. See Versata Dev., 793 F.3d at 1334; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed.Cir.2014), cert. denied sub nom. Ultramercial, LLC v. Wild-Tangent, Inc., — U.S. —, 135 S.Ct. 2907, 192 L.Ed.2d 929 (2015); see also Mayo, 132 S.Ct. at 1299 (“[w]ell-understood, routine, conventional activity,” without more, is insufficient); Enfish, 56 F.Supp.3d at 1176-77 (additional limitations on claims must supply sufficiently inventive concepts).

Despite this, limitation on patent eligibility for claims involving computer implementation of abstract ideas or known mathematical algorithms, Alice left open the possibility that a method that “purport[s] to improve the functioning of the computer itself’ or “effect an improvement in any other technology or technical field” could be patent-eligible. Alice, 134 S.Ct. at 2359; see Enfish, 56 F.Supp.3d at 1172-73; Cal. Inst., 59 F.Supp.3d at 980. A claim for a computer-implemented process that solves a technological problem the industry faces, for example, is patentable under the Alice framework. Cf. Diamond v. Diehr, 450 U.S. 175, 177-78, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (computer-impleinent-ed process that employed widely used mathematical equation to solve technological problem was patentable); Versata Dev., 793 F.3d at 1327 (claim that “solve[s] a technical problem using a technical solution” may be patentable). DDR Holdings provides an example of such a process. In that case, the Federal Circuit upheld an Internet-based claim as a patent-eligible inventive concept where the claimed solution was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” because it “amounted] to an inventive concept for resolving this particular Internet-centric problem” and was narrowly defined. See DDR Holdings, 773 F.3d at 1257, 1259. Judge Pfaelzer similarly concluded that a claim for a particular computer-based process survived the Alice test because it presented “a unique computing solution that addresses a unique computing problem.” Cal. Inst., 59 F.Supp.3d at 1000.

With these principles in mind, I turn to the specific language of the claims of the ’609 Patent, focusing primarily on claim 1. Claim 1 consists of “[a] method for analyzing executable software code using a computer comprising a processor and á memory.” As stated above, the method includes the following elements; “processing the executable software code to generate an 'optimized, exhaustive data flow model including parsing the executable software code to facilitate identification of data flows for inclusion in the exhaustive data flow model,” “processing the executable software code to generate an optimized, exhaustive control flow model,” and “storing, in the memory, an intermediate representation of the executable software code that provides a complete model of the executable software code based on the optimized data flow model and the optimized control flow model, thereby facilitating analysis of the executable software code according to comparison of the intermediate representation to reference models.”

Standing alone, the method is an abstract idea. The translation of binary.code and storing of an intermediate representation that can be used to analyze the underlying executable software code—in • other words, decompilation—is not of ancient lineage like the. contract, bank transaction, and bingo games at issue in buySAFE, Digitech, and Planet Bingo, but it is sufficiently well-established that there must be some meaningful innovative concept to render it patent-eligible. See Gottschalk, 409 U.S. at 67, 93 S.Ct, 253; Cal. Inst., 59 F.Supp.3d at 993-94. This was illustrated by Mr. Rioux’s own testimony at trial that the process could, at least in some limited capacity, be performed manually. That this method is implemented “using a computer” is not enough to render it patentable. See Alice, 134 S.Ct. at 2358.

Appthority—seizing on Mr. Riou'x’s testimony that the claimed method could be performed manually—argues that the patent does not indicate any mechanism by which the computer-implemented method improves this longstanding process rather than simply automating it. To the contrary, however, the claimed method’s focus on the generation of an optimized, exhaustive model, as these descriptors have been defined in the claim construction process, renders the claimed invention more complex than what could be done by humans and transforms the claimed invention from an abstract idea simply automated by a computer into an inventive concept.

During claim construction, I found that “optimized” meant “refined by iteration until substantially all'data variables or control branches are modeled;” See Veracode, 2013 WL 5587946, at *13. An optimized miodel “models ‘substantially all data variables or control branches.’ ” Id. I found that “exhaustive” did not require construction because it was used in the ordinary sense of the word. See Veracode, 2013 WL 5587946, at *15-16.

The evidence presented a