[00:00:10] Speaker ?: Get done with your housekeeping, Judge Wallach. [00:00:14] Speaker 00: When you get done with your housekeeping, you'll want to move. [00:00:17] Speaker 00: I'll pull your back instead. [00:00:20] Speaker 00: Thank you. [00:00:21] Speaker 00: No, this is good. [00:00:23] Speaker 00: Yeah, I know. [00:00:25] Speaker 00: I got some stuff in here. [00:00:38] Speaker 00: I think we're ready to go. [00:00:39] Speaker 00: Please proceed. [00:00:40] Speaker 05: Your Honor, Bill Gaty for 23 and me. [00:00:42] Speaker 04: Before you get going, I just have a question of both counsel for all of us. [00:00:45] Speaker 04: Do you do dogs, too? [00:00:51] Speaker 00: You do, don't you? [00:00:52] Speaker 00: But don't dogs get testing? [00:00:55] Speaker 02: We invalidated the patent on that a couple months ago. [00:01:00] Speaker 02: I'm joking, but we actually did. [00:01:02] Speaker 05: Well, we're talking about human relatives here, Your Honor. [00:01:07] Speaker 05: 23andMe invented a new and useful process for finding relatives of a predicted degree in a database. [00:01:14] Speaker 05: The patent's title states it. [00:01:16] Speaker 05: finding relatives in a database. [00:01:19] Speaker 05: That's what the claims are directed to. [00:01:21] Speaker 05: That's at APX 41 on the cover of the patent. [00:01:24] Speaker 00: Can I just ask you a house – I don't – I'm sorry. [00:01:26] Speaker 00: Absolutely. [00:01:26] Speaker 00: This is just housekeeping. [00:01:28] Speaker 00: Absolutely. [00:01:29] Speaker 00: Just in your briefing, you refer to some of the asserted claims – 7, 12, 14, 22, 31, and 38. [00:01:38] Speaker 00: And you call them the IBD claims. [00:01:40] Speaker 00: And you argued these are patent eligible. [00:01:43] Speaker 00: That list doesn't include some of the other claims that are involved here, 5, 17, 32 through 34, and 37 in the same art. [00:01:52] Speaker 00: So is your appeal only with regard to these IBD claims? [00:01:59] Speaker 05: No, Your Honor, first two things there. [00:02:00] Speaker 05: There's a slight error in our brief where we identified 38 as an IBD claim. [00:02:04] Speaker 05: It's actually 37. [00:02:06] Speaker 05: I don't think that changes anything, but it's there. [00:02:08] Speaker 05: But secondly, as to the other claims, they're addressed at the back of our brief for the separate reasons as to why those are patentable subject matter as well in our blue brief. [00:02:18] Speaker 04: So are these the claims asserted are illustrative or representative? [00:02:25] Speaker 05: They're just illustrative, right? [00:02:28] Speaker 05: The claims, I think there's really two classes in the IBD claims that you can look at. [00:02:34] Speaker 05: Claim seven. [00:02:35] Speaker 05: and then claim 12, which the district court didn't even address. [00:02:38] Speaker 05: And they are not the same, and they are separately pled in the complaint. [00:02:43] Speaker 05: And there are separate factors that distinguish those claims that the district court never reached for the IBD claims. [00:02:49] Speaker 05: I think you can look at those two, 7 and 12. [00:02:52] Speaker 05: They are distinct, though. [00:02:54] Speaker 05: And we never said that those were representative – that 12 was representative of 7. [00:02:57] Speaker 05: In fact, we very clearly call out the differences in the claim. [00:03:01] Speaker 04: In the red brief, Ancestry contends you make new assertions in the blue brief regarding your argument about whether the district court ignored the claim steps that the IBD region information is artificially manipulated. [00:03:17] Speaker 04: Are those new assertions? [00:03:18] Speaker 04: It's in the red brief of 37-39. [00:03:21] Speaker 05: No, not at all, Your Honor. [00:03:22] Speaker 05: We very specifically argued the limitation in Claim 7 of identifying and locating the IBD and then [00:03:32] Speaker 05: throughout the genome, which varies from individual to individual, and then, two, the addition step that is in there that is the next step in the claim seven. [00:03:41] Speaker 05: So we very clearly argue that in multiple different ways at the district court level. [00:03:46] Speaker 04: I'm going to ask Ancestry the same question, so take note of that. [00:03:52] Speaker 04: But I want to hear your answer. [00:03:53] Speaker 04: In the red brief at 49, Ancestry argues that nothing in the claim requires varying degrees of relatedness between [00:04:01] Speaker 04: separate sets of individuals, and instead is limited to language about a greater amount of DNA indicates a closer relationship. [00:04:11] Speaker 04: Is there claim language that supports the varying degree of relatedness? [00:04:19] Speaker 05: No, I think that that's actually incorrect. [00:04:22] Speaker 05: To the contrary, the claims specify that a greater amount of DNA sequence information of the IBD regions [00:04:30] Speaker 05: indicates a closer predicted degree of relationship. [00:04:38] Speaker 05: And if I could focus in. [00:04:40] Speaker 04: Yes, please. [00:04:41] Speaker 05: Yeah, I think the important part is stepping back. [00:04:45] Speaker 05: So we have three fundamental points. [00:04:46] Speaker 05: First, on claim 12. [00:04:48] Speaker 05: The very specific way in Claim 12 of identifying the IBD regions that are expressly claimed in there and the rules are set out in Claim 12, nowhere did the district court address those issues. [00:05:02] Speaker 05: And those are as an unconventional new technique used and identified in the specification to identify specifically IBD as part of this overall process, which is, of course, what the claim is directed to. [00:05:18] Speaker 05: So the district court. [00:05:19] Speaker 00: I guess I'm quite unclear on your argument about the IBD. [00:05:23] Speaker 00: Sure. [00:05:23] Speaker 00: IBD regions aren't man-made, right? [00:05:25] Speaker 00: They're naturally occurring. [00:05:28] Speaker 05: No. [00:05:29] Speaker 05: I can't agree with that, Your Honor. [00:05:31] Speaker 05: Two points. [00:05:32] Speaker 05: First, IBD regions are defined using man-defined rules to identify them. [00:05:40] Speaker 05: Where they are exists throughout the chromosomes, and they vary from individual to individual. [00:05:44] Speaker 05: It's not a static concept like the gene is, for example, in BRCA1, where it's always in the same place at the same location in all the chromosomes. [00:05:53] Speaker 05: It varies depending upon the individual using the rules. [00:05:56] Speaker 05: Point number two is [00:05:58] Speaker 05: Even if you say IBD is naturally occurring, the claim here is not directed to IBD. [00:06:08] Speaker 05: The claim here is directed to a new and novel process for relatives to find each other through the database and through the specific steps that are identified. [00:06:19] Speaker 00: Okay, so why don't you, when we look at Claim 7, I've got Claim 7 here, what is it? [00:06:24] Speaker 00: that's new and novel. [00:06:25] Speaker 00: You talk about manipulation a great deal, and I'm not sure what the claims actually deal with in terms of manipulation. [00:06:34] Speaker 05: Sure. [00:06:34] Speaker 05: Two things. [00:06:35] Speaker 05: Well, first, you asked what is new and novel. [00:06:38] Speaker 05: The overall process is new and novel, and there's nothing that indicates in this record that any of the steps of, first of all, determining the predicted degree relationship between two users by IBD is [00:06:54] Speaker 05: routine. [00:06:56] Speaker 05: That's the first step. [00:06:57] Speaker 00: Secondly... I thought we were dealing with step one. [00:06:58] Speaker 00: So now you're talking about step two, that these steps are not routine and conventional, so that's your issue? [00:07:05] Speaker 00: That even if this is a law of nature, these steps are more than routine? [00:07:12] Speaker 05: Even if there's a law of nature underlying it, as is clear from the cell's direct case, a new and novel method that is useful for individual relatives to find each other is patentable subject matter. [00:07:24] Speaker 00: Okay, so show me what you've claimed in terms of that new and novel method. [00:07:30] Speaker 00: One of the things I know you argue is that you tell them about it. [00:07:33] Speaker 00: Oh, that's in claim one, that you notify them. [00:07:36] Speaker 05: Absolutely. [00:07:37] Speaker 05: Well, two things. [00:07:40] Speaker 05: Go ahead. [00:07:41] Speaker 05: Sorry. [00:07:41] Speaker 05: It's the whole process that is identified in Claim 1 and 7 as a whole, all of the steps. [00:07:47] Speaker 05: So what are those steps? [00:07:49] Speaker 05: First of all, the individual has to deposit their DNA information in the database. [00:07:54] Speaker 00: No one's ever done that? [00:07:55] Speaker 00: That's not routine and conventional that for doing testing, you deposit your DNA in a database? [00:08:01] Speaker 05: DNA going into the database can be, sure, that was done before. [00:08:07] Speaker 05: But it's a combination here. [00:08:10] Speaker 05: going through and using the IBD information to predict the precise degree of relationship. [00:08:19] Speaker 05: There's nothing in the record that indicates that that step [00:08:23] Speaker 05: is new was routine and conventional. [00:08:26] Speaker 02: What is that step? [00:08:28] Speaker 02: I mean, you keep talking about it and just asserting that it's not routine and conventional, but who cares if it's not routine and conventional if that step itself is using a law of nature or an abstract idea? [00:08:43] Speaker 05: Well, simply because a claim may use a law of nature or an abstract idea doesn't doom the claim to patent and eligibility. [00:08:53] Speaker 05: For example, in the South. [00:08:54] Speaker 02: Sure. [00:08:54] Speaker 02: Alice says if your claim is directed to an abstract idea, if you can show something more than just the abstract idea, then it might be patent eligible. [00:09:04] Speaker 02: But that doesn't mean you can rely on the abstract idea for the something more. [00:09:09] Speaker 02: You have to show the something more outside of that abstract idea or the natural law. [00:09:13] Speaker 04: Isn't your point that nobody had taken that information and manipulated it in the way that you're describing? [00:09:22] Speaker 05: Well, exactly. [00:09:23] Speaker 05: The point is that you take it. [00:09:25] Speaker 05: What do you mean by manipulation? [00:09:27] Speaker 05: Sure. [00:09:27] Speaker 00: Let's look at the claims. [00:09:28] Speaker 00: Tell us what the claims say about manipulation. [00:09:33] Speaker 05: First of all, let me start with claim 12. [00:09:36] Speaker 02: Why don't you start with manipulation, which is what we just asked you. [00:09:40] Speaker 05: Well, I'm going to identify for you steps of manipulation. [00:09:44] Speaker 00: Well, I mean, I would appreciate it. [00:09:45] Speaker 00: Can we do claims one and seven, or are those different than – the claim 12 can't be the only thing you say there's manipulation on, right? [00:09:53] Speaker 00: Well, why don't we look at the – I happen to have these claims right in front of me. [00:09:56] Speaker 00: So one and seven. [00:09:57] Speaker 00: So can you – Sure. [00:09:58] Speaker 00: So – You are claiming manipulation – this novel or whatever manipulation. [00:10:02] Speaker 05: Sure. [00:10:03] Speaker 05: So what you're doing is you have to go search the DNA information between two individuals using the defined parameters. [00:10:10] Speaker 05: to identify the IBD regions. [00:10:14] Speaker 05: And of course, it varies. [00:10:15] Speaker 05: I may have an IBD region that is common with, Your Honor, but it'd be different for someone else. [00:10:21] Speaker 05: They're not static like a gene, because what you're doing is identifying. [00:10:26] Speaker 00: OK, but they're not man-made, so they exist in nature. [00:10:29] Speaker 05: The DNA exists in nature, but the manipulation of the information. [00:10:35] Speaker 00: OK, tell me, what does, show me, it doesn't use the word manipulation, right? [00:10:40] Speaker 00: That word isn't in the claims. [00:10:42] Speaker 00: I'm looking at seven. [00:10:44] Speaker 05: Your Honor, right in claim seven, it says the predicted degree includes identifying one or more inheritance by descent regions. [00:10:51] Speaker 00: I'm looking at claim seven. [00:10:52] Speaker 00: So where are you? [00:10:54] Speaker 05: In where the first step where it says determining? [00:10:56] Speaker 00: Between the predicted relationship between the first user and the second user, yeah. [00:10:59] Speaker 05: That's right. [00:11:00] Speaker 00: You identify one or more IBD regions. [00:11:04] Speaker 05: So in a portion of the DNA, so that requires two things. [00:11:08] Speaker 05: First, you have to identify the IBD region, which has to be of a specific length, and also similarity. [00:11:18] Speaker 05: The further manipulation in claim 12 comes in that step. [00:11:24] Speaker 00: Are you conceding that there's no manipulation in claims 1 and 7? [00:11:28] Speaker 00: There's only manipulation in claim 12? [00:11:30] Speaker 05: No, no, no. [00:11:31] Speaker 00: So why do you keep going back to 12 when I'm asking you to focus on 7? [00:11:33] Speaker 00: I'm sorry. [00:11:34] Speaker 05: I just wanted to bring that into that step in claim 12. [00:11:36] Speaker 00: OK. [00:11:36] Speaker 00: Is the word manipulation in claim 7? [00:11:38] Speaker 00: No, right? [00:11:40] Speaker 05: The express word is not, but then in the third step, where it says the amount of DNA sequence information of the IBD regions includes a sum of the lengths. [00:11:51] Speaker 05: So a number of IBDs. [00:11:52] Speaker 02: Is that what you mean by manipulation, that you add stuff together? [00:11:56] Speaker 05: Absolutely, Your Honor, because we're putting the data in a form that it doesn't exist in nature. [00:12:03] Speaker 05: But my point is, fundamentally, even if that is [00:12:07] Speaker 05: Even if there is a law of nature that is involved here, application in a new process, a useful process for two relatives to find each other, that is patentable subject matter. [00:12:21] Speaker 00: Well, it seems to me, maybe I want to understand, your definition of manipulation seems to be comparing the DNA information. [00:12:32] Speaker 00: between two individuals. [00:12:33] Speaker 05: No, it's not just a simple comparison, because you take the DNA information that exists that's in common with the common ancestor, so you go through the 23 chromosomes, you locate all of that, you identify that, and then you further add it up [00:12:50] Speaker 05: and find a percentage, and then from that you can now make an amame construct a prediction as to the relative relatedness. [00:12:58] Speaker 00: Well, isn't this what we're calling summing? [00:13:00] Speaker 00: Isn't that pretty conventional and routine? [00:13:04] Speaker 05: In this context, no. [00:13:05] Speaker 05: The concept of summing, of course, exists. [00:13:08] Speaker 00: There's no evidence. [00:13:08] Speaker 00: Well, isn't that what step two is about? [00:13:10] Speaker 00: I mean, as Judge Hughes pointed out, you can't go back to the abstract idea or the natural phenomenon and say nobody's ever done this before. [00:13:18] Speaker 00: If you have an arbitration procedure and you've never done it on a computer, but it's a general purpose computer, you can't win on step two because it's a general purpose computer, but it's never been applied to this natural law or this abstract idea. [00:13:32] Speaker 00: Do we agree on what the law is here? [00:13:35] Speaker 00: Do you agree with what I just said? [00:13:37] Speaker 05: I agree that if there's a prior process that you just put on a computer, that that is likely not patentable subject matter, but that's not the case here. [00:13:47] Speaker 02: What we have here is similar to, for example... What about combining two different [00:13:54] Speaker 02: Let me back up. [00:13:56] Speaker 02: Combining a conventional method, let me just ask you, Ariosa, right? [00:14:03] Speaker 02: Completely novel procedure, but contained of elements, one of which is detecting DNA, which [00:14:11] Speaker 02: is we found I think was a law of nature and then use conventional laboratory techniques to identify all of that. [00:14:19] Speaker 02: So it combined two separate things that were either routine and conventional [00:14:24] Speaker 02: or directed to an eligible idea in a way that nobody had ever done it before. [00:14:29] Speaker 02: But that combination of those two things was not sufficient to establish eligibility. [00:14:35] Speaker 02: Isn't that what we have here? [00:14:36] Speaker 02: We have several different, you can describe them as a law of nature or some of them may be on the border between law of nature or abstract idea, depending on how you consider math. [00:14:52] Speaker 02: You're combining two or more [00:14:55] Speaker 02: ineligible ideas and saying, well, it results in a new procedure. [00:14:59] Speaker 02: But how is that eligible under Ariosa and Alice and our prior president? [00:15:05] Speaker 05: So first of all, there's more steps in the process that are new and unconventional that are defined in the claims, such as how to identify the IBD region, which, of course, is in claim 12. [00:15:19] Speaker 05: That's a very specific process that is nowhere in the prior art and nowhere [00:15:24] Speaker 05: has that been deemed to be routine and conventional? [00:15:27] Speaker 02: But is it not just directed to the natural idea of looking at a certain segment of the DNA and then using that natural law of DNA to make a comparison? [00:15:41] Speaker 02: How is that different? [00:15:43] Speaker 02: So look, I'm going to make the same comparison. [00:15:47] Speaker 02: You're looking at DNA. [00:15:49] Speaker 02: You're looking at a specific portion of DNA, and it may be different parts and different things for different people, but you're ultimately looking at DNA. [00:15:56] Speaker 02: Isn't that exactly what they did in Arioso, which was nobody ever understood that there was sufficient DNA from the fetus circulating in the maternal blood to pull it out and do genetic testing for [00:16:10] Speaker 02: or other conditions. [00:16:13] Speaker 02: But all it was really directed to was that DNA. [00:16:17] Speaker 02: Isn't yours just directed to a specific type of identifying a certain segment of DNA? [00:16:23] Speaker 04: No, Your Honor. [00:16:24] Speaker 04: Take Arios and modify it and say that instead of conventional and routine testing, they had developed something that was unconventional and totally novel, and apply that hypothetical. [00:16:37] Speaker 05: So in that hypothetical, and I think you see that in, for example, in the recent en banc decisions, that the case law holds that what that is evidence of. [00:16:49] Speaker 02: What recent en banc decisions? [00:16:50] Speaker 05: I'm sorry, in the en banc denial of Athena? [00:16:52] Speaker 02: Well, none of those are binding. [00:16:54] Speaker 05: No, I understand. [00:16:54] Speaker 05: I just want to make the point, though, that first, what that [00:17:00] Speaker 05: What that is an indication of something is whether the claim is directed to unpatentable subject matter. [00:17:06] Speaker 05: If you have a new and unconventional technique in the claim, that doesn't mean that the claim then is directed to unpatentable subject matter. [00:17:15] Speaker 05: And so, for example, in the cells direct case, you have the cells that are frozen and unfrozen, and then you just have the additional step of siro-preserving those cells. [00:17:26] Speaker 05: So that's an example where there is a new technique [00:17:29] Speaker 05: It was not conventional. [00:17:30] Speaker 05: It was part of being directed. [00:17:32] Speaker 05: But secondly, even if we go to the second step of ALICE, which, of course, is what the complaint has alleged, and there's no evidence to the contrary that these techniques that are identified here were not that they are not new, that that then under the inventive concept, so what is the inventive concept? [00:17:50] Speaker 05: It's not IBD. [00:17:52] Speaker 05: I'm sorry, what? [00:17:53] Speaker 04: I think you have one too many negatives in that statement. [00:17:55] Speaker 05: I may have, Your Honor. [00:17:56] Speaker 05: I apologize for that. [00:17:58] Speaker 05: My point being that in step two, there are separate concepts that are alleged as to how to go through the process of identifying those IBD regions that vary from individual to individual, and they're not static in the individual. [00:18:15] Speaker 05: So unlike the BRCA1 gene, [00:18:17] Speaker 05: which is static. [00:18:19] Speaker 05: It's in a certain location. [00:18:20] Speaker 05: When you go through the IBD in this process, you're trying to identify these regions that have a common ancestor with each other. [00:18:29] Speaker 05: You then manipulate that in a new way to add that up. [00:18:32] Speaker 05: And from that, you can now predict the relative degree of relatedness. [00:18:39] Speaker 05: And so that's a new step and a new method. [00:18:42] Speaker 00: Thank you. [00:18:43] Speaker 00: Will, restore some rebuttal. [00:18:44] Speaker 00: You have exceeded your time. [00:18:44] Speaker 00: Thank you. [00:18:45] Speaker 00: Thank you. [00:18:48] Speaker 01: Good morning. [00:18:49] Speaker 01: May it please the Court, Mark Selwyn for Ancestry. [00:18:52] Speaker 01: The 554 patent is not based on any new technique or device for genetic testing or genetic sequencing or any new device or technique for DNA. [00:19:01] Speaker 02: I'm not sure I understand your friend's argument, but it seems to be [00:19:05] Speaker 02: that at least the non-routine, non-conventional part is they've come up with a new way of identifying this IDV region, setting the rules for what it is, and that identifying it in each individual person is something that they're the only person that came up with it, and it came up with different ways. [00:19:23] Speaker 02: I mean, to me, it all just sounds like finding a portion of a DNA that may be different for each people, but is still directed to looking at DNA. [00:19:30] Speaker 02: But do you have, I mean, [00:19:34] Speaker 02: is in their language, you know, are they actually doing with this IDB stuff? [00:19:40] Speaker 01: So, most generously read, they are pointing to the summing step as the inventive concept. [00:19:46] Speaker 02: Summing... Is that what they keep calling manipulation? [00:19:48] Speaker 02: Yes. [00:19:49] Speaker 01: Now, manipulation is a new word on this appeal. [00:19:51] Speaker 01: It was not used at all before the district court. [00:19:54] Speaker 01: And it's not in the claims. [00:19:55] Speaker 01: And it's not in the claims. [00:19:56] Speaker 01: And it was not only not used that word, but in substance it wasn't used either. [00:20:01] Speaker 01: And there's a reason for that. [00:20:02] Speaker 01: And that's because summing is not a form of manipulation of DNA. [00:20:06] Speaker 01: Summing does not change or manipulate the DNA or any genetic information. [00:20:12] Speaker 01: Rather, it just aggregates the length of the IBD regions [00:20:15] Speaker 01: or the percentage of DNA shared. [00:20:18] Speaker 01: And that's why the district court correctly found that summing, quote, simply reflects the basic and conventional principle that the more DNA that is shared, the closer the relationship. [00:20:30] Speaker 01: And if we look at the spec... And that's basic science. [00:20:33] Speaker 01: Well, not only is it basic science, Your Honor, but it's a computational method that can be done in the human mind. [00:20:39] Speaker 01: And as this Court held in the cyber-source case, computational methods like something that can be performed entirely in the human mind are the basic tools of scientific discovery and technological work that are free for all to use. [00:20:53] Speaker 01: And if we look at the specification itself to try to understand what this summing is all about, there's a single paragraph in the specification that refers to it. [00:21:02] Speaker 01: It's column 7, lines 33 through 56. [00:21:07] Speaker 01: And it merely says with reference to figure 5 that in some embodiments, the amount of DNA shared includes the sum of the lengths of the IBD regions [00:21:16] Speaker 01: and or a percentage of DNA shared, which essentially just recites the claim language itself. [00:21:23] Speaker 01: Then the rest of that paragraph describes boxes 508 and 510 of Figure 5. [00:21:30] Speaker 01: And Figure 5 is just a series of boxes that say determining a predicted relationship [00:21:37] Speaker 01: and or range of relationships based on the number of shared segments and amount of DNA of the users. [00:21:44] Speaker 01: That is fundamentally a law of nature. [00:21:47] Speaker 01: And that paragraph actually concludes by summarizing the applicable natural phenomena. [00:21:53] Speaker 01: It says, in each subsequent degree of relationship, the number of shared segments is approximately half of the previous number. [00:21:59] Speaker 01: That is not a discovery by 23andMe, and even if it were, it would be an unpalatable law of nature. [00:22:07] Speaker 01: Now, the other thing that has been suggested in 23andMe's brief, although it wasn't suggested below, is that the notification step has some novelty to it. [00:22:18] Speaker 04: Well, before you get there, I'm going to ask you what I said I'd ask you in relation to your Red Bridge 49 argument. [00:22:27] Speaker 04: Is there claim language that supports the varying degrees of relationship? [00:22:31] Speaker 01: There are two responses to that. [00:22:35] Speaker 01: The language on page 49 of our brief was referring to an example about Ashkenazi Jews that was pointed to by 23 in its brief. [00:22:43] Speaker 01: That was not raised at all below. [00:22:46] Speaker 01: And our point there was that there was nothing in the asserted claims that requires determining varying degrees of relatedness between separate sets of individuals based on their genetic background, which was what the example of Ashkenazi Jews [00:23:00] Speaker 01: was used for. [00:23:01] Speaker 01: The claims are rather simply directed to detecting the predicted degree of relationship between two individuals. [00:23:10] Speaker 01: And, in fact, if we look at the example of Figure 7 in the Ashkenazic community, it says and confirms the basic law of nature that the more recombinable DNA that is shared, the closer the relationship. [00:23:25] Speaker 01: Let me address the notification step because that was suggested to be some way novel here. [00:23:32] Speaker 01: First, 23andMe did not argue in the district court that the invention was directed in any way to notifying a person of a result under Mayo step one. [00:23:42] Speaker 01: or that the notification step provided an inventive concept under step two. [00:23:47] Speaker 01: And the patent doesn't claim any new way of notifying. [00:23:51] Speaker 01: To the contrary, if you look at the specification, it emphasizes, it goes out of its way to say that the notification step is routine. [00:23:59] Speaker 01: At column three, line 65 through column four, line two, for example, the specification gives us examples of notification, sending messages or alerts. [00:24:09] Speaker 01: there could hardly be a more routine way of notifying a user. [00:24:14] Speaker 01: And then immediately after that sentence about sending messages or alerts as a way to notify, the specification adds, other notification techniques are possible, which further reinforces that notifying is routine post-solution activity. [00:24:30] Speaker 04: Okay, overall. [00:24:32] Speaker 04: is failure to analyze all three independent claims by the district court, upon which the claims asserted depend in Alice, step two, reversible error. [00:24:46] Speaker 01: And no, the court did in fact look at all of the independent claims. [00:24:50] Speaker 01: The independent claims are not asserted, but under step two, the court looked to figure out what in the patent as a whole goes to the detecting that was identified as being the claimed invention. [00:25:06] Speaker 01: And what the court found was comparison. [00:25:08] Speaker 01: That is what is suggested in the claims to do the detection. [00:25:13] Speaker 01: And the court rightly said comparison, that can't be an inventive concept. [00:25:16] Speaker 01: That's simply comparing two things. [00:25:19] Speaker 01: So then the district court went a step further and said, okay, let me give the benefit of the doubt to 23andMe. [00:25:24] Speaker 01: Let's go to its proposed inventive concept as of summit, and it analyzed that as well. [00:25:30] Speaker 01: and correctly found that summing is just a restatement of the natural law. [00:25:35] Speaker 01: And then it went even one step further and said, well, what about these IBD regions? [00:25:38] Speaker 01: Can that be considered an inventive concept? [00:25:40] Speaker 01: And it correctly found, no, it can't. [00:25:43] Speaker 01: And if your honors look at the transcript of the argument below, it was conceded, and this is at 806 of the transcript, that IBD regions were out there. [00:25:51] Speaker 04: It's in the prior argument. [00:25:53] Speaker 04: In footnote 11, [00:25:57] Speaker 04: in the red grade, you argue that claims 5, 8, 17, 32, and 38 fail to pass the ALICE framework. [00:26:06] Speaker 04: Where did the district court conduct that analysis? [00:26:11] Speaker 01: Well, the district court first looked to what the claims were directed to, and it correctly found that they were directed to the law of nature, including those claims, that the more recombinable DNA. [00:26:22] Speaker 03: Where? [00:26:23] Speaker 01: I'm sorry? [00:26:24] Speaker 04: Where did the district court discuss 58, 17, 32, and 38? [00:26:39] Speaker 01: Your Honor, at pages four and five of the opinion, recited all of the claims. [00:26:48] Speaker 01: went through what the claims are directed to, and indeed that was what 23andMe suggested the court should do at Alice step one, which is to say, look at the gist of the claims to figure out what they are directed to. [00:27:01] Speaker 01: The court clearly looked at all of the claims and assessing what it was directed to, and also considered what 23andMe identified in that regard as well. [00:27:13] Speaker 01: On this question of IBD regions and whether they are naturally occurring or not, they certainly are. [00:27:20] Speaker 01: They're an inherent characteristic within naturally recombinable DNA of Your Honors, of everybody in this room. [00:27:29] Speaker 01: The same is true for S&P markers. [00:27:31] Speaker 01: They describe an inherent relationship with a naturally occurring recombinable DNA. [00:27:36] Speaker 01: DNA, and the concept of consecutive opposite hemozygous cells, that too is an inherent characteristic within naturally occurring DNA. [00:27:45] Speaker 01: So this is a case like Ariyosa, where the location of the nucleic acid existed in nature before the inventors found it. [00:27:54] Speaker 01: And even the technique for identifying IBD regions is described in the patent at columns 16, lines 14 through 16 as being standard. [00:28:05] Speaker 01: Quote, the standard SNP-based genotyping technology results in genotype calls, each having two alleles. [00:28:13] Speaker 01: And then in paragraphs, I'm sorry, in columns six and seven, it reads a little bit like a biology or genetics primer on genetics, explaining how [00:28:24] Speaker 01: the, quote, standard S&P-based genotyping can be used to identify naturally occurring IBD regions to determine the relationship between two users. [00:28:36] Speaker 01: In Figure 6, which is an example of Alice and Bob, shows their naturally occurring S&P sequences and the relationship between both of them. [00:28:48] Speaker 01: So, Your Honor, [00:28:51] Speaker 01: In conclusion, the patent impermissibly claims naturally occurring characteristics of the human genome and naturally occurring relationships among those characteristics between relatives. [00:29:03] Speaker 01: In comparing segments of recombinable DNA-defined relatives relies fundamentally on relationships that exist in nature apart from any human intervention. [00:29:13] Speaker 01: Those are laws of nature. [00:29:15] Speaker 01: Those are basic tools of scientific and technical work that Mayo and this court's precedent makes clear must be free for all to use. [00:29:23] Speaker 04: If one had an insight about a law of nature, about an analysis of genes, and they realized that particular sections of genes that are not intuitively comparable, [00:29:43] Speaker 04: are indeed useful for scientific purposes. [00:29:48] Speaker 04: Clearly, that's law of nature stuff. [00:29:51] Speaker 04: But supposing they then say, hey, based on this insight, I come up with a new methodology that allows me to manipulate this in a fashion such that it's useful. [00:30:06] Speaker 04: And I understand, and the patent is useful for that. [00:30:13] Speaker 04: that I'm doing a hypothetical here. [00:30:16] Speaker 04: But if they did, aren't they moving along into step two? [00:30:21] Speaker 04: Well, first response is really that's not this case. [00:30:24] Speaker 01: I understand. [00:30:24] Speaker 01: That's why I referenced. [00:30:26] Speaker 01: But conceptually, you can claim a new application of natural law. [00:30:31] Speaker 01: That's what happened in the cells direct case. [00:30:34] Speaker 01: That's what happened in the deer case as well. [00:30:37] Speaker 04: So what we're really fighting over here is [00:30:43] Speaker 04: what's described in the patent as routine and conventional, and that's really the problem that your brethren face. [00:30:54] Speaker 01: Well, the problem is that each and every portion of the claim is a law of nature, except for notification, which is a routine post-solution step. [00:31:06] Speaker 01: Some of the claims also have language about a generic processor and generic memory, but that doesn't save the claim. [00:31:14] Speaker 02: I mean, I'm a little confused by your answer that says you can reclaim a new application of the law of nature, because that seems inconsistent with Ariosa, where there was a new discovery of significant presence of fetal DNA, and they claimed the new application of that for testing. [00:31:39] Speaker 01: I'll give you an example in the context of the CellsDirect case. [00:31:43] Speaker 02: Sure, but I know CellsDirect. [00:31:44] Speaker 02: That is new laboratory techniques. [00:31:48] Speaker 02: Correct. [00:31:49] Speaker 02: I said methodology. [00:31:51] Speaker 02: Well, that's what confuses me, though, because methodology can sometimes be laboratory techniques, but it sometimes can just be [00:31:59] Speaker 02: another law of nature itself or another abstract idea. [00:32:04] Speaker 02: If it's a new laboratory technique, I think cells direct is controlling, right? [00:32:08] Speaker 02: But if it's I found this new new or I found this, you know, law of nature, and I'm going to use a [00:32:17] Speaker 02: another law of nature or an abstract idea like summing to do it, even if that's a new application, does that render Patton eligible? [00:32:27] Speaker 01: It doesn't, because you can't in step two point to the same law of nature in step one, and this court's precedent has been very clear on this point. [00:32:37] Speaker 01: Similarly, as part of step two, requiring standard techniques, such as standard S&P genotyping in this case, to be applied in a standard way can't provide the inventive concept. [00:32:55] Speaker 01: Thank you. [00:33:00] Speaker 05: Your Honor, very briefly, the Court failed to look at each step. [00:33:05] Speaker 05: So let me address the standard S&P genotyping argument. [00:33:10] Speaker 05: As it says, we're not claiming SNPs. [00:33:12] Speaker 05: That identification of SNPs is common, and that is what is identified in the specification. [00:33:20] Speaker 05: But using the SNP information, what is described in the specification, [00:33:27] Speaker 05: and also what is described and claimed in Claim 12 is a new way to go through using that SNP information to identify the IBD. [00:33:38] Speaker 05: So you're manipulating that SNP information to identify the regions that qualify as IBD. [00:33:47] Speaker 05: And then secondly, [00:33:49] Speaker 05: You go through and identify and you then go through and add it up. [00:33:54] Speaker 05: And only from that construct, when you have that information as part of this methodology, can you then make the prediction of the relationship and then notify the end users. [00:34:05] Speaker 05: This is a new and useful process for relatives to find each other. [00:34:12] Speaker 00: Now, you also were relying, your friend referenced the fact that that final step of notifying the user was also one of the inventive concepts, an inventive concept. [00:34:26] Speaker 00: Is that part of your argument to the district court and here too? [00:34:30] Speaker 05: The act of identifying the IBD, particularly through, for example, Claim 12, and the concepts of summing were inventive steps that the district court did not address. [00:34:44] Speaker 05: Secondly, as a whole, the claim, the concept of [00:34:50] Speaker 05: the notification further takes the claim out of just an abstract detection because we're not just detecting relationships. [00:34:58] Speaker 05: We are using a process here for two individuals to search through a database to find each other. [00:35:04] Speaker 05: That's new and useful just like it was in CellsDirect. [00:35:07] Speaker 05: That's new and useful just like it was in McCrow for the lip synchronization that would be done on the computer. [00:35:14] Speaker 04: So where do you identify in the patent? [00:35:16] Speaker 04: the new database search methodology that's different than prior? [00:35:23] Speaker 05: The entire specification, following the sentence, I think you have to look if you want to look at column six where they talk about the SNP genotyping. [00:35:31] Speaker 05: If you look at column six, line 15, it says, the standard SNP-based genotyping technology results in genotype calls, each having two alleles. [00:35:44] Speaker 05: one from each half of the chromosome here. [00:35:46] Speaker 05: Okay. [00:35:47] Speaker 05: That's all that the specification says. [00:35:50] Speaker 05: It then says, so referring again to a genotype call, refers to the identification of the pair of alleles at a particular location on the chromosome. [00:35:58] Speaker 04: So I asked about your new met... Right. [00:36:00] Speaker 05: So what follows... Wait, wait, wait. [00:36:02] Speaker 05: Oh, I'm sorry. [00:36:03] Speaker 05: I asked about your new notification methodology. [00:36:06] Speaker 05: Oh, yes. [00:36:07] Speaker 05: Sorry. [00:36:10] Speaker 04: Where is that in the pack? [00:36:13] Speaker 05: So for example, at column 3 at the bottom at line 65, up to the top of 4, also in the figures, for example, figure 4, it identifies, again, the notification step. [00:36:36] Speaker 04: It says Alice or Bob or both. [00:36:38] Speaker 05: Yes. [00:36:38] Speaker 05: It's notified. [00:36:40] Speaker 04: What's the new methodology? [00:36:42] Speaker 05: What is new is using this step, because we have to look at it as an ordered combination as a whole. [00:36:48] Speaker 05: What is new are the steps of searching, summing, and then notification. [00:36:55] Speaker 05: Those are all separate and apart from the actual, if there is a law of nature here. [00:37:01] Speaker 05: Those are all steps and concepts separate and apart, if you've pled or new. [00:37:06] Speaker 04: OK. [00:37:07] Speaker 04: Alice runs into someone at a cocktail party. [00:37:12] Speaker 04: And they say, you know, you look a lot like my friend Bob. [00:37:16] Speaker 04: I'm going to drop him a note, see if you guys are related. [00:37:21] Speaker 04: What's different? [00:37:23] Speaker 05: What's different is the way that you go through it and through all the steps of the claim. [00:37:28] Speaker 04: And then we're talking about the notification methodology. [00:37:32] Speaker 04: What's different? [00:37:33] Speaker 05: Notification in and of itself in the context of the claim, in and of itself providing notification. [00:37:39] Speaker 05: But what that does [00:37:42] Speaker 05: The specifics of a notification in the abstract is not new. [00:37:49] Speaker 05: In the context of this claim, for two individuals to find each other through a database using the precise procedures, it is new. [00:37:57] Speaker 05: And so there are separate and inventive concepts that exist separate and apart from the unpatentable subject matter. [00:38:05] Speaker 00: Thank you. [00:38:06] Speaker 00: Thank both sides and the case is submitted. [00:38:09] Speaker 00: Last case for argument is 19.