No UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT. TDE PETROLEUM DATA SOLUTIONS, INC., Plaintiff Appellant,

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1 Case: Document: 49 Page: 1 Filed: 09/13/2016 No UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT TDE PETROLEUM DATA SOLUTIONS, INC., Plaintiff Appellant, v. AKM ENTERPRISE, INC., dba Mobilize, Inc., Defendant Appellee. Appeal from a Judgment of the United States District Court for the Southern District of Texas, Houston Division District Court Case No. 4:15-CV Honorable Gray Miller, Presiding District Judge APPELLANT TDE PETROLEUM DATA SOLUTIONS, INC. S COMBINED PETITION FOR REHEARING AND REHEARING EN BANC Malcolm E. Whittaker LEAD ATTORNEY Whittaker Law Firm IPLitigate@aol.com Texas Bar No Glen Haven Boulevard Houston, Texas Tel. (832) Attorney for Plaintiff TDE Petroleum Data Solutions, Inc., a Texas Corporation

2 Case: Document: 49 Page: 2 Filed: 09/13/2016 CERTIFICATE OF INTEREST Counsel for Plaintiff-Appellant hereby certifies the following: 1. The full name of every party presented by me is: TDE Petroleum Data Solutions, Inc. 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is: The real parties in interest are named in the caption. 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are: TDE Thonhauser Data Engineering GmbH owns more than 10% of TDE. 4. The name of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court (and who have not or will not enter an appearance in this case) are: Whittaker Law Firm: Malcolm Edwin Whittaker Pillsbury Winthrop Shaw Pittman LLP: Callie McCarthy Bjurstrom, Matthew Robert Stephens, Nicole Sara Cunningham, Steven Arthur Moore i

3 Case: Document: 49 Page: 3 Filed: 09/13/2016 TABLE OF CONTENTS Page CERTIFICATE OF INTEREST... i TABLE OF AUTHORITIES... iii STATEMENT OF COUNSEL REQUIRED BY RULE 35(B)... 1 ARGUMENT... 4 Introduction... 4 I. The Supreme Court s Diehr decision mandates a finding that the 812 patent s claims are subject matter eligible... 4 II. III. IV. The CCPA s decisions In re Abele and In re Taner Confirm That There is No Requirement That the Interpreted Data Must Be Used to Control the Process... 9 The District Court Ignored Uncontradicted Evidence That the Steps of Claim 1 of the 812 Patent Are Unconventional And Not Generic The District Court Dismissed Plaintiff-Appellant TDE s Complaint under Fed. R.Civ.P. 12(b)(6), the District Court Did Not Find Claims of the 812 Patent Subject-Matter Ineligible CONCLUSION ADDENDUM CERTIFICATE OF FILING AND SERVICE ii

4 Case: Document: 49 Page: 4 Filed: 09/13/2016 TABLE OF AUTHORITIES Page(s) CASES Alice Corp. v. CLS Bank, Int l, 134 S. Ct (2014)... 1, 4, 9, 13 Diamond v. Diehr, 450 U.S. 175 (1981)...passim In re Abele, 684 F.2d 902 (CCPA 1982)... 2, 9, 10, 13 In re ICON Health & Fitness, 496 F.3d 1374 (Fed. Cir. 2007) In re Taner, 681 F.2d 787 (CCPA 1982)... 2, 9, 10 South Corp. v. United States, 690 F.2d 1368 (Fed. Cir. 1982) STATUTE 35 U.S.C , 10 RULES Fed. R. Civ. P. 12(b)... 2, 12 Fed. R. Civ. P. 12(b)(6) iii

5 Case: Document: 49 Page: 5 Filed: 09/13/2016 STATEMENT OF COUNSEL REQUIRED BY RULE 35(B) Based on my professional judgment, I believe this appeal requires an answer to one or more precedent-setting questions of exceptional importance: The panel decision conflicts with a decision of the United States Supreme Court or of this Court: Diamond v. Diehr, 450 U.S. 175 (1981). Based on my professional judgment, I believe this appeal requires an answer to one or more precedent-setting questions of exceptional importance: I. The Supreme Court s decision in Diamond v. Diehr, 450 U.S. 175 (1981) found that an improvement to an industrial process that interpreting data and utilizing the interpreted data to control the improvement to the industrial process was patent-eligible. Since the Supreme Court s decision in Alice v. CLS Bank, 1 this Court and many district courts, have misinterpreted the Supreme Court s decision in Alice as holding that Diehr-type claims are patent-ineligible. Because a comparison of the claims of the 812 patent-in-suit and the Diehr claims found patent-eligible are substantially identical, the Supreme Court s Diehr decision mandates a finding that the 812 patent s claims are subject matter eligible and requires reversal of the panel s decision in Federal Circuit Appeal No , (August 15, 2016). 1 Alice Corp. v. CLS Bank, Int l, 134 S. Ct (2014) 1

6 Case: Document: 49 Page: 6 Filed: 09/13/2016 II. The Court of Claims and Patent Appeals decisions in In re Taner, 681 F.2d 787 (CCPA 1982) and In re Abele, 684 F.2d 902 (1982) relied on Diamond v. Diehr, supra, to affirm the principle that patenteligibility did not turn on using the interpreted data to control the industrial process. III. The 812 patent claims an inventive concept that recites specific steps required to determine the state of the well operation. The Record evidence, ignored by the panel, teaches that the 812 patent s steps are expressly non-conventional and non-generic. In fact, the Record evidence teaches that data validation by checking against a limit is only one of more than 30 potential data validation techniques, and that this method should not be used because it causes too many false alarms. The panel decision ignored this uncontradicted evidence when it affirmed dismissal under Fed.R.Civ.P. 12(b) holding that TDE cannot argue that storing state values, receiving sensor data, validating sensor data, or determining a state based on the sensor data is individually inventive. Panel Opinion, , Id. at p. 5 (emphasis added) IV. The panel decision affirmed the district court s judgment finding claims patent-ineligible under 101. This is reversible error 2

7 Case: Document: 49 Page: 7 Filed: 09/13/2016 because the district court did not hold claims patent-ineligible. In fact, the district court granted AKM s motion to dismiss and dismissed TDE s patent infringement lawsuit, it did not hold that claims are patent-ineligible. Panel Opinion, supra, p. 6. /s/ Malcolm E. Whittaker Malcolm E. Whittaker LEAD ATTORNEY Whittaker Law Firm Texas Bar No Registered Patent Attorney No. 37,965 Attorney of Record for Plaintiff Appellant TDE Petroleum Data Solutions, Inc. 3

8 Case: Document: 49 Page: 8 Filed: 09/13/2016 ARGUMENT The panel decision in this matter incorrectly found that U.S. Patent No. 6,892,812 ( 812 patent) was patent-ineligible because it was the sort of data gathering and processing claim that is directed to an abstract idea. Panel Opinion, supra, , at p. 4. Introduction In fact, the 812 patent s claims are substantively identical to the improvement to an existing technological process claims found patent-eligible by the United States Supreme Court in Diamond v. Diehr, supra. Accord, Alice, supra, at I. The Supreme Court s Diehr decision mandates a finding that the 812 patent s claims are subject matter eligible The Supreme Court in Diamond v. Diehr, supra, held that a process for curing rubber using a computer was patent eligible subject matter. The Diehr Court found that this curing process was not abstract writing that: The respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. Obviously, one does not need a computer to cure 4

9 Case: Document: 49 Page: 9 Filed: 09/13/2016 natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of overcuring or undercuring, the process as a whole does not thereby become unpatentable subject matter. Id. at 187. A comparison of the claims of the Diehr patent application, held patenteligible by the Supreme Court, to the 812 patent s claims demonstrates that far from being abstract, both claim the same four parts of similar technological/industrial processes. Namely: (A) (B) (C) (D) storing a data base; collecting raw data representative of the machinery performing the process; transforming the raw data into interpreted data; and, interpreting the transformed data and, if necessary, controlling the industrial process. In Diehr, the industrial process that was improved was curing rubber. In the case of the 812 patent s claims, the industrial process that is improved is an automated process for determining that state of the well operation, (preamble, claim 1, 812 patent) and, if necessary, controlling the operation of an oil rig. 5

10 Case: Document: 49 Page: 10 Filed: 09/13/2016 Comparison of the Claims of Diehr & 812 Patent-In-Suit Demonstrating That Both Are Patent-Eligible Because Both Are An Improvement to An Existing Industrial Process PREAMBLE DIEHR PATENT APP. CLAIM 1 Claim 1 of Diehr Patent Application - (found at Diehr, supra, footnote 5) CLAIMS 1 & 30 OF U.S. PATENT NO. 6,892,812 Claims 1 and 30 of the 812 Patent EQUIVALENCE? Yes, both claim an improvement to an existing industrial process. (A) PROVIDING THE COMPUTER WITH A DATA BASE FOR THE PROCESS 1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer: providing said computer with a database for said press, including at least, 1. An automated method for determining the state of a well operation, comprising: storing a plurality of well states for the well operation; Yes, both claim providing a data base concerning the industrial process. natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound 6

11 Case: Document: 49 Page: 11 Filed: 09/13/2016 (B) COLLECTING RAW DATA (C)TRANSFORMING RAW DATA INTO INTERPETED DATA being molded, and a constant (x) dependent upon the geometry of the particular mold of the press, initiating an interval timer in said computer, upon the closure of the press for monitoring the elapsed time of said closure, constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding, constantly providing the computer with the temperature (Z), repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time receiving mechanical and hydraulic data reported for the well operation from a plurality of systems; and determining that at least some of the data is valid by comparing the at least some of the data to at least one limit, the at least one limit indicative of a threshold at Yes, both claim collecting raw data. Yes, both transform the raw data into interpreted data that can be used to control the industrial process. 7

12 Case: Document: 49 Page: 12 Filed: 09/13/2016 (D) CONTROLLING THE PROCESS BASED ON THE INTERPRETED DATA. during the cure, which is ln v = CZ + X where v is the total required cure time, repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and opening the press automatically when said comparison indicates equivalence. which at least some of the data do not accurately represent the mechanical or hydraulic condition purportedly represented by the at least some of the data, and when at least some of the data are valid, based on the mechanical and hydraulic data, automatically selecting one of the states as the state of the well operation. 30. The method of claim 1, further comprising using the state of the well operation to evaluate parameters and provide control for the well operation. Yes, both claim controlling the industrial process based on the interpreted data. As seen above, the 812 patent s claims and Diehr s claims demonstrate that they both recite the same type of patent-eligible subject matter; namely, an improvement to an existing industrial process with the steps of: (a) storing a data base, (b) collecting raw data, (c) transforming the raw data into interpreted data 8

13 Case: Document: 49 Page: 13 Filed: 09/13/2016 and, (d) controlling an industrial or technological process that have historically been eligible to receive patent law protection. Diehr, supra, p The Supreme Court s recent decision in Alice reinforced Diehr s holding that an improvement to a technological process remains patent-eligible. In relevant part, the Alice Court held that: the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer. Alice, supra, p (emphasis added) Far from an abstract concept, the 812 patent teaches and claims a closedloop oil rig that significantly improves the efficiency and safety of oil rigs and further claims using the state of the well to control the well operation. See claims 1 and 30 of 812 patent, above. In other words, the 812 patent improves the existing technological process, the industrial process of determining the state of well operation. See claim 1, element (c). ( automatically selecting one of the states as the state of the well operation ). As such, the Supreme Court s decisions in Diehr and Alice mandate that the 812 patent s claims are patent-eligible. II. The CCPA s decisions In re Abele and In re Taner Confirm That There is No Requirement That the Interpreted Data Must Be Used to Control the Process Shortly after the Supreme Court s Diehr decision, this Court s predecessor, the Court of Claims and Patent Appeals (CCPA) decided In re Abele, 684 F.2d 902 9

14 Case: Document: 49 Page: 14 Filed: 09/13/2016 (CCPA 1982) and In re Taner, 681 F.2d 787 (CCPA 1982). In doing so, the CCPA relied on Diehr to find claims that collected raw data representative of physical objects or substances were patent subject matter eligible under 35 U.S.C Thus, the panel decision in this matter also conflicts with decisions of the CCPA interpreting Diehr, supra. It is settled law that the Federal Circuit must sit en banc to reverse a decision of the Court of Claims and Patent Appeals (CCPA). See South Corp. v. United States, 690 F.2d 1368, 1370, fn. 2 (Fed. Cir. 1982). As such, the panel decision in this case cannot over-rule the CCPA s Taner and Abele decisions and must be reversed. The Abele court also held that even absent a post-solution control step, Abele and Taner s claims were subject matter eligible. See fn 9, Abele, supra. Phrased differently, there is no requirement that the interpreted data be used to control the well operation for the 812 patent to qualify as 101 subject matter eligible. III. The District Court Ignored Uncontradicted Evidence That the Steps of Claim 1 of the 812 Patent Are Unconventional And Not Generic The 812 patent claims an inventive concept that recites specific steps required to determine the state of the well operation. The Record evidence, ignored by the panel, teaches that the 812 patent s steps are expressly nonconventional and non-generic. In fact, the Record evidence teaches that data 10

15 Case: Document: 49 Page: 15 Filed: 09/13/2016 validation by checking against a limit, (claim element (C) in chart above), should not be used because it causes frequent false alarms. See Jardine, et al., An Improved Kick Detection System for Floating [oil] Rigs, SPE (A00246-A00253) ( Additional features of the flow monitoring system include automatic switch-off of the alarm system during periods of transient flow or rapid string movement. This prevents false alarms occurring when flow is unstable, for example during connections [i.e. tripping pipe also referred to as making a connection - a well state taught and disclosed in the 812 patent, see claims 13-21]. ) (emphasis added) Phrased differently, a person of ordinary skill in the art would have been discouraged from testing against a limit when using sensors during a well operation because of false alarms. This teaching away supports that the use of data validation by checking against a limit is not conventional during the process of determining the state of the well operation. In re ICON Health & Fitness, 496 F.3d 1374, 1381 (Fed. Cir. 2007). Further Record evidence, also ignored by the panel, is that data validation by checking against a limit, is not conventional. In fact, the Record teaches more than 30 alternative data validation methods. See (A00784-A00795; A00776-A00783; A00796-A00809; A00832-A00841; A00919-A00961; A A00980; A00998-A01008; A01019-A01022; A01035-A01044; A ; 11

16 Case: Document: 49 Page: 16 Filed: 09/13/2016 A ; A01300-A01394). For example, the Record specifically teaches that data validation by median weighted averaging is a potential alternative to checking against a limit during automatic well control[of an oil rig]. See IADC/SPE 19919: Practical Application of Real-Time Expert System for Automatic Well Control (A00784-A00795 teaches median weighted average to confirm data validity)(emphasis added). In other words, the Record evidence is that the 812 patent s claim elements are not conventional, or generic, is uncontroverted. The panel decision ignored this uncontradicted evidence when it affirmed dismissal under Fed.R.Civ.P. 12(b) holding that TDE cannot argue that storing state values, receiving sensor data, validating sensor data, or determining a state based on the sensor data is individually inventive. Id. at p. 5. Similarly, claims recite means-plus-function steps. Before claim construction, which has not occurred in this case, the district court could not determine if the means for validating the mechanical and hydraulic data is conventional or well known. See Enfish, LLC v. Microsoft Corp., CAFC Appeal No , page In fact, the Record is, at best, unclear if the data validation element of the claims of the 812 patent are conventional or known. This uncontroverted Record evidence alone requires reversal. 12

17 Case: Document: 49 Page: 17 Filed: 09/13/2016 IV. The District Court Dismissed Plaintiff-Appellant TDE s Complaint under Fed. R.Civ.P. 12(b)(6), the District Court Did Not Find Claims of the 812 Patent Subject-Matter Ineligible The panel committed error when it found that claims of the 812 patent were subject matter ineligible. The district court s judgment found that the claims were not patent-eligible and dismissed TDE s Compliant with prejudice. (A00016). Phrased differently, there was no need for this Court to find claims subject matter ineligible; the panel could have simply affirmed the district court s dismissal. CONCLUSION The 812 patent is not abstract and Supreme Court s decisions in Diamond v. Diehr, 450 U.S. 175 (1981), and re-affirmed by the Supreme Court in Alice, supra, and this Court s decision in In re Abele, 684 F.2d 902 (CCPA 1982) confirm the principle that the 812 patent s claims that collect raw data concerning an improved industrial process, interpret the raw data, and control the improved industrial process are patent-eligible and that patent-eligibility does not turn on using the interpreted data to control the industrial process. Far from being abstract, the 812 patent claims a specific improvement to the existing technological process of well state detection. 13

18 Case: Document: 49 Page: 18 Filed: 09/13/2016 As such, Plaintiff-Appellant TDE Petroleum Data Solutions, Inc. respectfully requests that this Court vacate the panel decision and grant panel rehearing or rehearing en banc. Respectfully submitted: By: /s/ Malcolm E. Whittaker Malcolm E. Whittaker LEAD ATTORNEY Whittaker Law Firm Texas Bar No Glen Haven Boulevard Houston, Texas Tel. (832) Attorneys for Plaintiff TDE Petroleum Data Solutions, Inc., a Texas Corporation 14

19 Case: Document: 49 Page: 19 Filed: 09/13/2016 ADDENDUM

20 Case: Document: 49 Page: 20 Filed: 09/13/2016 TABLE OF CONTENTS Addendum Page Opinion and Judgment of The United States Court of Appeals for The Federal Circuit filed August 15, Add. 1 Add. i

21 Case: Document: Page: 211 Filed: 09/13/ /15/2016 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit TDE PETROLEUM DATA SOLUTIONS, INC., Plaintiff-Appellant v. AKM ENTERPRISE, INC., DBA MOBLIZE, INC., Defendant-Appellee Appeal from the United States District Court for the Southern District of Texas in No. 4:15-cv-01821, Judge Gray H. Miller. Decided: August 15, 2016 MALCOLM EDWIN WHITTAKER, Whittaker Law Firm, Houston, TX, argued for plaintiff-appellant. PETER E. MIMS, Vinson & Elkins LLP, Houston, TX, argued for defendant-appellee. Also represented by JEFFREY TA-HWA HAN, Austin, TX. Before LOURIE, WALLACH, and HUGHES, Circuit Judges. Add. 1

22 Case: Document: Page: 222 Filed: 09/13/ /15/ TDE PETROLEUM DATA SOLUTIONS v. AKM ENTERPRISE, INC. HUGHES, Circuit Judge. TDE sued Moblize for infringement of a patent directed to processing sensor data on an oil well drill. The district court dismissed the suit on the pleadings, finding that the asserted claims are patent-ineligible under 35 U.S.C We agree and affirm the district court s judgment. I TDE and Moblize are competitors that provide services to oil drilling companies. TDE filed suit against Moblize in the United States District Court for the Southern District of Texas, alleging that Moblize infringes U.S. Patent 6,892,812. The 812 patent describes various processes for determining the state of an oil well drill. The disclosed processes start by receiving data from sensors deployed on the oil well, such as an RPM sensor that detects the number of revolutions per minute of the drill string (on which the drill bit is affixed), or a fluid pressure sensor that detects the pressure of drilling fluid in the stand pipe. See 812 patent, col After receiving this sensor data, the processes then validate the data, i.e., accept data that is within an expected range and discard data that is expected to be erroneous. See id. at col. 6 ll Finally, based on the valid sensor data, the processes determine what the present state of the oil well drill is, e.g., drilling, sliding, or bore hole conditioning. See id. at col. 6 l. 48 col. 7 l. 24. The 812 patent discloses several specific flowcharts that may be used in this last step to determine the state of the oil well drill. See id. at Figs. 3, 4, 5A, and 5B. The parties agree that claim 1 of the 812 patent is representative: 1. An automated method for determining the state of a well operation, comprising: Add. 2

23 Case: Document: Page: 233 Filed: 09/13/ /15/2016 TDE PETROLEUM DATA SOLUTIONS v. AKM ENTERPRISE, INC. 3 storing a plurality of states for a well operation; receiving mechanical and hydraulic data reported for the well operation from a plurality of systems; and determining that at least some of the data is valid by comparing the at least some of the data to at least one limit, the at least one limit indicative of a threshold at which the at least some of the data do not accurately represent the mechanical or hydraulic condition purportedly represented by the at least some of the data; and when at least some of the data are valid, based on the mechanical and hydraulic data, automatically selecting one of the states as the state of the well operation. Moblize moved for dismissal of the suit under Federal Rule of Civil Procedure 12(b)(6), on the theory that the claims are patent-ineligible under 101. The district court granted the motion, finding that the claims are directed to the abstract idea of storing data, receiving data, and using mathematics or a computer to organize that data and generate additional information, J.A. 9, and that the claims fail to recite an inventive concept beyond that abstract idea. TDE appeals. We have jurisdiction under 28 U.S.C. 1295(a)(1). II This court reviews a district court s dismissal for failure to state a claim under the law of the regional circuit. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015). The Fifth Circuit reviews challenges to a dismissal for failure to state a claim under FRCP 12(b)(6) de novo, taking the allegations of the complaint to Add. 3

24 Case: Document: Page: 244 Filed: 09/13/ /15/ TDE PETROLEUM DATA SOLUTIONS v. AKM ENTERPRISE, INC. be true. See Scanlan v. Texas A&M Univ., 343 F.3d 533, 536 (5th Cir. 2003). This court reviews the district court s determination of patent eligibility under 101 de novo. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). III A patent may be obtained for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, 35 U.S.C. 101, but [l]aws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. v. CLS Bank Int l, 134 S. Ct. 2347, 2354 (2014). The nowfamiliar Alice test instructs that a patent claim is ineligible under 101 if (1) the claim is directed to one of those patent-ineligible concepts (i.e., a law of nature, natural phenomena, or abstract idea) and (2) the claim elements, when considered both individually and as an ordered combination do not transform the nature of the claim into a patent-eligible application. Id. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, (2012)). Turning to the first step of the Alice inquiry, we conclude that claim 1 is directed to an abstract idea. The steps of claim 1 recite operations performed by any general-purpose computer. As we recently reiterated in Electric Power Group, LLC v. Alstom S.A., No , 2016 WL , at *3 (Fed. Cir. Aug. 1, 2016), claims generally reciting collecting information, analyzing it, and displaying certain results of the collection and analysis are a familiar class of claims directed to a patentineligible concept. Claim 1 of the 812 patent recites all but the displaying step. Therefore, it is evident from our precedent that claim 1 is the sort of data gathering and processing claim that is directed to an abstract idea under step one of the Alice analysis. See, e.g., id.; OIP Techs., 788 F.3d at 1363; Digitech Image Techs., LLC v. Add. 4

25 Case: Document: Page: 255 Filed: 09/13/ /15/2016 TDE PETROLEUM DATA SOLUTIONS v. AKM ENTERPRISE, INC. 5 Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Turning to the second step of the Alice inquiry, we find nothing in claim 1 that adds anything more to the abstract idea of storing, gathering, and analyzing data. TDE does not and cannot argue that storing state values, receiving sensor data, validating sensor data, or determining a state based on sensor data is individually inventive. And none of TDE s arguments show that some inventive concept arises from the ordered combination of these steps, which, even if true, would be unpersuasive given that they are the most ordinary of steps in data analysis and are recited in the ordinary order. While the specification arguably provides specific embodiments for the step of automatically selecting one of the states as the state of the well operation, claim 1 recites none of those details. Instead, claim 1 simply recites generic computer functions that amount to nothing more than the goal of determining the state of an oil well operation. As we discussed at greater length in Electric Power, the claims of the 812 patent recite the what of the invention, but none of the how that is necessary to turn the abstract idea into a patent-eligible application. See Electric Power, 2016 WL , at *4 5. Therefore, we find that claim 1 is patent-ineligible under Although TDE asserted the other 114 claims contained in the 812 patent, it made no attempt in either its briefs or at oral argument to distinguish those claims from representative claim 1, other than to state that the systems (reciting generic hardware) are different from the methods. See Oral Argument at 5:00 6:40 (July 5, 2016), available at default.aspx?fl= mp3. Those arguments are insufficient to demonstrate eligibility under 101. Add. 5

26 Case: Document: Page: 266 Filed: 09/13/ /15/ TDE PETROLEUM DATA SOLUTIONS v. AKM ENTERPRISE, INC. IV For these reasons, we affirm the district court s judgment finding claims patent-ineligible under 101. AFFIRMED Add. 6

27 Case: Document: 49 Page: 27 Filed: 09/13/2016 CERTIFICATE OF FILING AND SERVICE I hereby certify that on this 13th day of September, 2016, I caused this Petition for Rehearing and Rehearing En Banc to be filed electronically with the Clerk of the Court using the CM/ECF System, which will send notice of such filing to the following registered CM/ECF users: Peter E. Mims Jeffrey Ta-Hwa Han VINSON & ELKINS LLP VINSON & ELKINS LLP 1001 Fannin Street, Suite Via Fortuna Houston, Texas Austin, Texas (713) (512) pmims@velaw.com jhan@velaw.com Counsel for Defendant - Appellee Counsel for Defendant - Appellee I further certify that the required number of copies will be hand filed at the Office of the Clerk, United States Court of Appeals for the Federal Circuit in accordance with the Federal Circuit Rules. /s/ Malcolm E. Whittaker Counsel for Plaintiff - Appellant