[00:00:00] Speaker 02:
calendar this morning.

[00:00:02] Speaker 02:
Four patent cases, two from district courts and two from the PTAB.

[00:00:08] Speaker 02:
One of each is being submitted on the briefs and not being argued.

[00:00:13] Speaker 02:
And so we have three argued cases.

[00:00:17] Speaker 02:
The first being intellectual adventures versus T-Mobile et al.

[00:00:26] Speaker 02:
2017,

[00:00:27] Speaker 02:
Twenty-six, so one, four, eight, ten, twenty-eighteen, ten, twenty-seven, twenty-nine, and thirty-three.

[00:00:38] Speaker 02:
Mr. Black.

[00:00:38] Speaker 04:
Thank you, Your Honor.

[00:00:50] Speaker 04:
May it please the Court.

[00:00:53] Speaker 04:
When we wrote the briefs in this case,

[00:00:55] Speaker 04:
almost a year ago, we asked the Court to do two things.

[00:00:59] Speaker 04:
One is to clarify that the ALIS Step 1 analysis requires a close fit between the analysis of the abstract idea and what the claim is directed to.

[00:01:13] Speaker 04:
And the second was to confirm that there are fact issues that can arise at the Step 2 process, which should be dealt with in the same way

[00:01:23] Speaker 04:
as all other fact issues in federal litigation.

[00:01:28] Speaker 04:
My opponent accused us of the crime of arguing policy to this Court, to which we plead guilty.

[00:01:33] Speaker 04:
We did argue policy questions.

[00:01:35] Speaker 02:
We don't have criminal cases.

[00:01:38] Speaker 04:
But the upshot, of course, is that since then the law has changed and been clarified, and that in Berkheimer, Atrix, and in the en banc decision, which I know we have all three strands of the decision there,

[00:01:52] Speaker 04:
here present today, it is now clearly the law of the court that fact issues that arise at Step 2 Alice have to be resolved in the same way as other fact issues in federal litigation.

[00:02:03] Speaker 01:
Now, the district court here... So the Supreme Court has asked for the solicitor's views on Berkheimer, so who knows where that's going to stay.

[00:02:11] Speaker 04:
That is true, Your Honor, and I know that my opponents have been active as amici in that brief, in that case, and perhaps

[00:02:19] Speaker 04:
Win or lose, either side here may be looking at this case for en banc review, and we'll see what the Supreme Court does.

[00:02:26] Speaker 04:
But as it stands now, and there's certainly nothing in Alice which would be contrary to the position, there can be fact issues that arise that step too.

[00:02:35] Speaker 00:
So the claims here were reviewed under Alice both at the pleading stage and also at the summary judgment stage, correct?

[00:02:46] Speaker 04:
Two of the patents were reviewed and dismissed on a 12C motion and two at summary judgment.

[00:02:54] Speaker 04:
It happened that the way the case progressed that there were expert reports that were filed and which were available further on in the case and that were available to the court.

[00:03:06] Speaker 04:
Judge Stark refused to consider the expert reports on the 12C cases.

[00:03:13] Speaker 01:
But didn't he actually say

[00:03:16] Speaker 01:
I'm not supposed to consider expert reports for 12C, but even if I were to consider them, all the experts are doing is basically contradicting the face of the specification, and that he felt that you can't raise a factual issue by contradicting the face of the specification.

[00:03:34] Speaker 04:
He did say that in one case.

[00:03:35] Speaker 04:
I don't think the point was correct.

[00:03:38] Speaker 04:
The specifications in these cases, and I'll go through each one.

[00:03:42] Speaker 04:
Each one is a little bit different, obviously.

[00:03:44] Speaker 04:
But it does create a bit of a conundrum.

[00:03:46] Speaker 04:
What are we doing on a 12C motion?

[00:03:48] Speaker 04:
It's supposed to be a basic motion to test the sufficiency of the pleading.

[00:03:52] Speaker 04:
Can the plaintiff, given the opportunity to develop discovery and try the case, produce sufficient facts to prevail?

[00:03:59] Speaker 04:
That's all.

[00:04:00] Speaker 04:
It's notice pleading under Rule 8 and Rule 12.

[00:04:03] Speaker 04:
What's happened is, since the patent becomes part of the record, the court can look at the patent.

[00:04:09] Speaker 04:
And then we get beyond that, and we look at the official record, which includes the prosecution history.

[00:04:14] Speaker 04:
But the purpose of Rule 12 motion is just to test whether there's a possibility that under the most favorable reading to the plaintiff that they could someday prove out the case.

[00:04:24] Speaker 04:
So it should be relatively rare unless the claim itself is so abstract as in Alice, which basically said, disintermediated settlement, do it on a computer.

[00:04:35] Speaker 04:
That kind of a claim can still be dealt with at Rule 12.

[00:04:40] Speaker 01:
We've said in the past that even in Article 6, the court has the right to find that the patent is ineligible.

[00:04:48] Speaker 01:
So 12C at least gets both pleadings in play, right?

[00:04:54] Speaker 04:
Right, it does.

[00:04:54] Speaker 04:
But the trouble is that there's no other area of the law where the defendant asserts an affirmative defense, in this case, 101.

[00:05:03] Speaker 04:
We're entitled

[00:05:04] Speaker 04:
under Section 282 to a presumption of validity.

[00:05:08] Speaker 04:
And we then end up in an analysis, a factual analysis about whether something was routine or conventional.

[00:05:15] Speaker 04:
My only point is that if, unless the face of the claim is so clear that all we really have is effectively a business method that has been being done on a computer, it's difficult to deal with these on a Rule 12 motion.

[00:05:30] Speaker 04:
With respect to the expert evidence, if

[00:05:33] Speaker 04:
expert evidence can be produced, that would be evidence to show that, in fact, the plaintiff's original pleading was acceptable.

[00:05:41] Speaker 04:
I agree, it's a bit backwards from the normal litigation, but that's because this 101 analysis has evolved in a very strange way as the way we use Rule 12 motions.

[00:05:51] Speaker 04:
The issue before the Court here, though, is that we have four patent specifications, six patents, which were tested under the law as it stood.

[00:06:02] Speaker 04:
before Berkheimer and Atrix and some other developments in the Court.

[00:06:07] Speaker 04:
And the district court's analysis cannot stand up to the current state of the law.

[00:06:12] Speaker 04:
The first patent at issue is the 7-3 is the 352 patent.

[00:06:19] Speaker 04:
And that patent relates to the provision of directory assistance services to wireless customers.

[00:06:26] Speaker 02:
You don't have time to go through all six patents.

[00:06:28] Speaker 04:
I do not.

[00:06:28] Speaker 02:
Why don't you give us the strongest

[00:06:31] Speaker 02:
Why don't you start with 737?

[00:06:33] Speaker 04:
737.

[00:06:33] Speaker 04:
Yes, Your Honor.

[00:06:36] Speaker 04:
The 737 patent, the district court said, was directed to the abstract idea of account management.

[00:06:42] Speaker 04:
Not so.

[00:06:43] Speaker 04:
If you look at figure two of the patent, you'll see a network, which is defined, which includes several very specific pieces of equipment, a web server, a CCSN IG, which the district court defined to be a

[00:07:01] Speaker 04:
web server and a gateway specifically designed to interface with at least an integrated service control point that is part of a telephone network switch.

[00:07:10] Speaker 04:
For purposes of 101, we have real structures here.

[00:07:14] Speaker 04:
Now, there's a question about whether the... Aren't they all conventional?

[00:07:19] Speaker 04:
The elements may have been conventional, but the combination of those elements has to be tested under 103, not under 101.

[00:07:27] Speaker 04:
And that's why the patent was issued by the Patent Office.

[00:07:30] Speaker 04:
Surely the patent examiner was aware that web servers were known.

[00:07:34] Speaker 02:
Well, these are all old patents, pre-Alice.

[00:07:37] Speaker 04:
Yes.

[00:07:38] Speaker 02:
That's your problem.

[00:07:40] Speaker 04:
It is a problem, but, Your Honor, it's also 1996 from Verizon.

[00:07:43] Speaker 04:
And this is the first statement of a patent which involved the use of the web to change the telecommunication service.

[00:07:52] Speaker 04:
What this patent actually describes is a network, a structured network with multiple real physical embodiments to it, which are combined together in a new way.

[00:08:00] Speaker 00:
It describes accessing a network.

[00:08:03] Speaker 00:
It describes accessing a network.

[00:08:05] Speaker 00:
It's not a network that the inventor invented.

[00:08:09] Speaker 00:
It's an existing network.

[00:08:12] Speaker 04:
With all due respect, I disagree.

[00:08:13] Speaker 04:
The ISCP was a known piece of equipment.

[00:08:17] Speaker 04:
That's in the network switch.

[00:08:19] Speaker 04:
The web server was a known piece of equipment.

[00:08:22] Speaker 04:
but putting them together to create a CCSN IG gateway that would connect the two and allow users for the first time to, for instance, change their cell phone service on the fly.

[00:08:34] Speaker 04:
In 1996, let's be clear, it's 1996 we're talking about, that was found to be invented.

[00:08:40] Speaker 04:
And our position is twofold.

[00:08:42] Speaker 04:
One is there's nothing abstract here.

[00:08:43] Speaker 04:
This is a network.

[00:08:45] Speaker 04:
It can be tested under Section 103, but not under 101.

[00:08:49] Speaker 04:
It's not an abstract idea.

[00:08:51] Speaker 04:
And second,

[00:08:52] Speaker 04:
even if we don't get over step one, there's a question about whether the combination of these two elements was routine and conventional.

[00:09:00] Speaker 04:
And that's something which we believe needs to be tried.

[00:09:03] Speaker 01:
Well, you say that this CCSN IG is some highly specialized system, but the patent doesn't describe it as highly specialized.

[00:09:15] Speaker 01:
It says over and over, this is all just routine conventional stuff, right?

[00:09:19] Speaker 04:
It says that web surfing is conventional.

[00:09:23] Speaker 04:
The patent says that making modifications to a service rather than just getting information, looking at web pages, was unusual at the time.

[00:09:33] Speaker 04:
And it says and claimed, and the Patent Office agreed, that as of 1996, that combining these two types of networks together, building a gateway to connect them, was inventive.

[00:09:44] Speaker 04:
We may have a debate, I'm sure we will, a trial about whether it's sufficiently inventive to get over 103.

[00:09:50] Speaker 04:
But our question here is, how do we not get over 101?

[00:09:53] Speaker 04:
There's nothing abstract here.

[00:09:55] Speaker 04:
This isn't disintermediated settlement or a business method.

[00:09:59] Speaker 04:
There is a method, Your Honor.

[00:10:00] Speaker 04:
But in order to practice this method, you have to construct a network, including a CCSNIG, which had never been constructed before.

[00:10:07] Speaker 00:
No, you don't have to construct a network.

[00:10:09] Speaker 00:
You have to access a network.

[00:10:11] Speaker 00:
So we have a method, customer access to, and manipulation of services and payment.

[00:10:18] Speaker 00:
and comprising of one, accessing the network.

[00:10:22] Speaker 00:
You don't describe the network.

[00:10:25] Speaker 00:
Entering the request, displaying the request, accepting the request via customer contact.

[00:10:35] Speaker 00:
This just sounds like some form of messaging here.

[00:10:38] Speaker 04:
Well, I guess it's an interesting question I haven't thought about before.

[00:10:42] Speaker 04:
If you have a method claim and it says do A, B, C, D, and E, how do we treat that under 101?

[00:10:47] Speaker 04:
I would suggest that since to practice the claim, you have to build a network, the network should be part of the claim for purposes of thinking about it.

[00:10:55] Speaker 00:
Where the network has as defined in a specific- Or perhaps you're claiming a network you didn't build.

[00:11:01] Speaker 04:
Well, they described it in figure two of the patent and in the patent.

[00:11:04] Speaker 04:
And again, that would be a 112 issue.

[00:11:07] Speaker 04:
But there are specific components here.

[00:11:09] Speaker 04:
There's a contact services node, internet gateway.

[00:11:13] Speaker 04:
It's a CCSN.

[00:11:14] Speaker 04:
It's something described in the patent as a control point for other parts of the network.

[00:11:20] Speaker 04:
The client construction here, which was based on the intrinsic record, was that it has to be specifically configured to connect these two networks together.

[00:11:30] Speaker 01:
I get the argument that, well, when you're talking about a whole constructing a network,

[00:11:36] Speaker 01:
or even talking about an actual computer that doesn't feel abstract.

[00:11:42] Speaker 01:
That was always my view.

[00:11:44] Speaker 01:
I still don't understand how it's abstract.

[00:11:46] Speaker 01:
But the law is, and we have said multiple times, that where all you're doing is using conventional computer components to do something, to accomplish something, that that can be abstract.

[00:12:02] Speaker 04:
I understand the point, Your Honor, and my answer is as follows, as clearly as I can state it.

[00:12:06] Speaker 04:
If there are two components, both of which are conventional, but are put together in a new and inventive way, that satisfies 101.

[00:12:15] Speaker 04:
That activity, the combination is what you would focus on, which is what we have with the CCSNIG, and that combination is not conventional or well understood.

[00:12:24] Speaker 04:
That's how we do a 103 analysis.

[00:12:28] Speaker 04:
a more coarse gatekeeping function.

[00:12:31] Speaker 04:
So that's our position on that path.

[00:12:34] Speaker 04:
With respect to any questions on that path?

[00:12:39] Speaker 02:
You are approaching your rebuttal time.

[00:12:42] Speaker 02:
You can continue or save it as you wish.

[00:12:44] Speaker 04:
I think I will reserve the rest of my time for rebuttal.

[00:12:51] Speaker 02:
Mr. Finkelson, you want to take 14 minutes and leave one for

[00:12:58] Speaker 05:
My fast-talking colleague, Your Honor.

[00:13:02] Speaker 05:
Mr. Baroker has agreed to cede his one minute to me unless the panel has questions with respect to the 073 patent exhaustion issues.

[00:13:12] Speaker 05:
May it please the Court, Dave Finkelson, for the appellees on the 101 issues here today.

[00:13:18] Speaker 05:
In the briefs and again in argument this morning, Ivy cloaks itself in this Court's recent decisions in Burgheimer and Attricks.

[00:13:25] Speaker 01:
But for those three... Well, it does change the landscape a little bit, doesn't it?

[00:13:29] Speaker 05:
Your Honor, I don't believe it changes the landscape in a way that's relevant to the patents at issue here.

[00:13:35] Speaker 05:
That is to say, in denying on Bonk and Burkheimer, this court indicated its view that it didn't mark a change in the law, that it simply stood for the proposition that it's step two.

[00:13:48] Speaker 05:
of the Alice analysis, there may be factual issues in particular cases.

[00:13:52] Speaker 05:
Here, the district court judge found on the 312C patents that there were no factual issues, that the matter could be decided based on the pleadings and the matters attached to the pleadings in accordance with rule 12C practice.

[00:14:05] Speaker 00:
But what about then if we take a look at the claim we're looking at, the 737 pen, the CCSN slash IG, that gateway

[00:14:16] Speaker 00:
Is that a factual issue, whether that's conventional or not?

[00:14:20] Speaker 05:
No, Your Honor, it's not a factual issue as to whether it's conventional or not.

[00:14:23] Speaker 05:
There was simply no evidence in the record on the 12C motion that would suggest otherwise.

[00:14:28] Speaker 05:
The complaint in this case was devoid of any allegations related to 101 whatsoever.

[00:14:33] Speaker 05:
Ivy did not file a motion to amend, and the specification of the patent itself, of the 737 patent,

[00:14:39] Speaker 05:
makes clear that the CCSNIG is conventional equipment operating in a conventional way.

[00:14:45] Speaker 01:
Well, what about your response to your friend's argument that even if each of those parts would be conventional, that the ordered combination of those parts is not?

[00:14:55] Speaker 05:
That is indeed the law with respect to Mayo Step 2.

[00:14:58] Speaker 05:
It's not the case, however, Your Honor, with respect to these patents.

[00:15:01] Speaker 05:
Everything in the specification says

[00:15:03] Speaker 05:
There's an existing abstract idea of account management.

[00:15:07] Speaker 05:
We now have this new business opportunity of the internet.

[00:15:10] Speaker 05:
And we're going to claim in a series of five functional steps performing that account management on the internet.

[00:15:15] Speaker 05:
And with respect to the CCSNIG in particular, where I differ with counsel is not only does the specification of the 737 patent say that the web server is conventional, it says that the CCSNIG is conventional.

[00:15:28] Speaker 05:
And it does that, Your Honor, by incorporating by reference the SMIC patent

[00:15:32] Speaker 05:
which is of record at appendix 26135 and was considered on the 12C motion because it was incorporated by reference.

[00:15:40] Speaker 05:
And at column seven, lines 10 to 24 of the SMIC patent, it indicates that the CCSN IG is simply comprised of a conventional web server, a conventional gateway interface, and then later indicates a conventional ISCP.

[00:15:56] Speaker 05:
All of the equipment is conventional, and it's performing the abstract idea itself in the 737 patent.

[00:16:01] Speaker 05:
of account management.

[00:16:02] Speaker 05:
Nothing in the ordered account management changes that.

[00:16:07] Speaker 01:
What about the 352 patent?

[00:16:12] Speaker 01:
It does seem to me that there is a lot of technological advancement going on here.

[00:16:19] Speaker 01:
I mean, how is the fact, I mean, obviously there was the ability to provide

[00:16:29] Speaker 01:
contact information, directory assistance in the past, but the system for setting it up so that there could be a mechanism for making sure that the payment occurred seems to be something different.

[00:16:43] Speaker 05:
I don't believe it is, Your Honor.

[00:16:44] Speaker 05:
Although I agree with you, there is various pieces of equipment recited in claim one of the 352 as well as independent claim five.

[00:16:53] Speaker 05:
Each of those pieces of equipment are generic pieces of telephone equipment

[00:16:57] Speaker 05:
doing exactly what those generic pieces of telephone equipment typically do, not unlike, Your Honor, Alice.

[00:17:03] Speaker 01:
But they never did them before.

[00:17:05] Speaker 05:
I think the record, per the specification itself, is that those pieces of equipment always did what they're described to do in the patent itself.

[00:17:12] Speaker 05:
In other words, the three pieces of equipment that are recited in the 352 patent are a telephone, and there's certainly no assertion in the 352 patent that that's doing anything different than it ever did before.

[00:17:23] Speaker 05:
There's switching equipment, the MTSO, and there's the OSS.

[00:17:27] Speaker 05:
And the specification itself says that the switching equipment is off-the-shelf equipment.

[00:17:32] Speaker 05:
It specifically says that the OSS is off-the-shelf equipment.

[00:17:35] Speaker 05:
Those are the only three pieces of physical equipment recited in the claims.

[00:17:38] Speaker 01:
And, of course, this court... But why isn't this much like DDR Holdings and ENFISH in that what you're doing is you're taking this equipment and you are improving the operation of the equipment by allowing for a whole different billing

[00:17:57] Speaker 05:
It's different, Your Honor, because in DDR, whether at NFISH at step one or at DDR at step two, those cases share a common principle, and that is, as a whole, the claims are directed to a problem that is unique to computers or to the Internet or to the technology in question.

[00:18:14] Speaker 05:
Here, that's not the case.

[00:18:15] Speaker 05:
This is the use of an intermediary, an age-old practice, whether it's a telephone operator or a matchmaker or a private investigator, applied in the context of a telephone network.

[00:18:26] Speaker 01:
No, but you're ignoring the whole billing aspect of it.

[00:18:29] Speaker 01:
Yes, if all you're saying is, can you call up and get a phone number and be connected to that phone number, but this is different.

[00:18:37] Speaker 01:
The billing aspect of it is something that you seem to ignore in your brief and you're still ignoring here today.

[00:18:43] Speaker 01:
So why is that not an advancement to the system that was put on the computer before?

[00:18:51] Speaker 05:
I would suggest, Your Honor, that billing is itself an abstract idea and that the only step of the claims of the 352 patent that is directed to billing is the last step of claim one, which is recording the identity of the wireless communication terminal.

[00:19:05] Speaker 05:
And this court has held indeed, the Supreme Court held in Alice, that record keeping is a basic computer function.

[00:19:11] Speaker 05:
So whether it's discussing billing or the other steps of the claim, it's conventional equipment acting in a conventional way.

[00:19:18] Speaker 05:
And to your question about DDR, there's no how

[00:19:21] Speaker 05:
set forth in these claims.

[00:19:23] Speaker 05:
There's no technical specificity.

[00:19:24] Speaker 00:
That may be true.

[00:19:25] Speaker 00:
You're looking at, I guess, step two here.

[00:19:27] Speaker 00:
But why wouldn't this claim survive step one if it's providing limitations?

[00:19:36] Speaker 00:
So it's getting the abstract idea of messaging and requesting a particular number.

[00:19:42] Speaker 00:
And it actually is providing these steps by which that is done.

[00:19:46] Speaker 00:
And there's a significant amount of steps that's here.

[00:19:49] Speaker 00:
Why isn't this closer to Macro, for example?

[00:19:53] Speaker 05:
It's not closer to Macro, Your Honor, because as in Alice itself, what it recites is generic telephone equipment performing generic telephone functions.

[00:20:02] Speaker 00:
Forget about that.

[00:20:03] Speaker 00:
That's step two.

[00:20:04] Speaker 00:
Let's stay on step one.

[00:20:07] Speaker 00:
And don't we have here the criteria or the rules that are being applied that apply to the different steps of the application of the method?

[00:20:18] Speaker 05:
I think, Your Honor, we're directed at step one to look at the claim as a whole and what it's directed to.

[00:20:23] Speaker 05:
And much like in the claim at issue analysis where the court found it was directed to the use of an intermediary, that's precisely what's claimed here when you look at the claim as a whole.

[00:20:32] Speaker 05:
I don't disagree with you whatsoever that it's placed in the telephone environment, but this court has held time and again that that in and of itself is not sufficient at step one to take what is otherwise an abstract idea.

[00:20:44] Speaker 05:
and make it not so.

[00:20:45] Speaker 05:
Just as in Alice you had three pieces of generic computer equipment performing the generic computer functions of data transmission and data storage, so too does claim one of the 352 patent contain three pieces of generic telephone equipment.

[00:20:58] Speaker 00:
Let's look at this part of the claim.

[00:21:02] Speaker 00:
Receiving information from the wireless communication terminal, identifying a particular listing from a directory of listings.

[00:21:12] Speaker 00:
Would you say or can the argument be made that a particular list or a directory of listings is an algorithm?

[00:21:21] Speaker 00:
Excuse me, Your Honor, is a... Could it be argued, effectively, that this is describing an algorithm of sorts?

[00:21:28] Speaker 00:
It's a list of criteria, very specific, particular listings.

[00:21:34] Speaker 05:
I would suggest, Your Honor, that it merely says a number corresponding to the identified listing.

[00:21:40] Speaker 05:
There is no

[00:21:41] Speaker 05:
how recited in there.

[00:21:42] Speaker 05:
There's nothing with respect to that listing that takes it outside the realm of the conventional.

[00:21:47] Speaker 00:
And indeed, the specification... You didn't answer my question.

[00:21:51] Speaker 00:
Wouldn't this be a particular listing, taking the listing and then from a directory listing, isn't that described as an algorithm of sorts?

[00:22:01] Speaker 05:
Your Honor, I don't believe it is in the context of the claim itself.

[00:22:06] Speaker 05:
It's describing the process of retrieving a listing without any detail in the claim

[00:22:11] Speaker 05:
that suggests that's done in any way, then it has always been done, including in the way it was done for directory assistance call completion.

[00:22:18] Speaker 00:
How about receiving the destination number corresponding to the identified listing?

[00:22:23] Speaker 00:
In other words, this right here begins to sound to me a little bit like an algorithm.

[00:22:29] Speaker 00:
And if that's the case, then perhaps it survives step one.

[00:22:34] Speaker 00:
And we go to step two, and there we find this other information that we're talking about.

[00:22:39] Speaker 05:
And I understand your point, Your Honor.

[00:22:40] Speaker 05:
I would disagree, however, that it is such a description.

[00:22:44] Speaker 05:
It is instead just describing the generic functions that a directory assistance system does, and that this specification itself tells us it already did in the context of landline directory assistance call completion.

[00:22:59] Speaker 02:
In other words, your point is that the claim simply recites

[00:23:04] Speaker 02:
steps passing information back and forth and using old hardware.

[00:23:10] Speaker 05:
That's exactly right, Your Honor.

[00:23:11] Speaker 05:
And this Court has held both at step one and step two that the transmission of information in and of itself, the forwarding of data, is itself an abstract idea and is routine conventional activity.

[00:23:22] Speaker 05:
That's in the Affinity Labs direct TV case.

[00:23:25] Speaker 05:
In the briefing, it's also in the dealer track case.

[00:23:27] Speaker 05:
And that's exactly what is occurring here.

[00:23:29] Speaker 05:
There's no how given in the claims with respect to how that occurs.

[00:23:34] Speaker 05:
So both, whether you're discussing it as a step one issue or as a step two issue, the forwarding of data cannot impart eligibility to the... Sure.

[00:23:42] Speaker 00:
I think this may tell us how.

[00:23:44] Speaker 00:
It's very specific in the different steps.

[00:23:48] Speaker 00:
It goes from one step to the next.

[00:23:50] Speaker 00:
It's describing the method.

[00:23:52] Speaker 00:
This is very much unlike the first patent that we talked about that doesn't describe the how.

[00:24:00] Speaker 00:
And it can't be that just using computer services to retrieve information, that in and of itself is patent-ineligible.

[00:24:09] Speaker 00:
I mean, that's what all computers are doing, basically, right?

[00:24:14] Speaker 00:
Retrieving data and sending data.

[00:24:17] Speaker 05:
And this Court has told us time and again that if that's all the computer is doing in the claim, then it is ineligible.

[00:24:23] Speaker 05:
So we look to the claim to see whether the claim does anything unconventional with those computers, at least at step two.

[00:24:30] Speaker 05:
And again, each of these steps are the steps performed here by computers, computers in a telephone environment, a telephone, an operator service system, and a switch, doing what phones, operator service systems, and switches do according to the specification itself.

[00:24:47] Speaker 05:
The other point I would make, Your Honor, with respect to the 352 patent is IV points to expert testimony.

[00:24:52] Speaker 05:
This was one of the patents decided on summary judgment.

[00:24:54] Speaker 05:
It points to the testimony of its experts to argue that it

[00:24:59] Speaker 05:
supplies at least a fact issue with respect to inventive concept.

[00:25:02] Speaker 05:
But this court has held time and again that expert testimony that is contrary to admissions in the specification or that relates to unclaimed inventive concepts can't change the analysis under 101.

[00:25:15] Speaker 05:
That's the Smith and Nephew case, the Berkheimer case, the Mortgage Grader case, among others.

[00:25:20] Speaker 05:
Here, each of the alleged modifications that IV's expert points to don't actually find their way into the claims.

[00:25:27] Speaker 05:
Ivey's expert says this invention solves the call record problem because there are significant modifications to the switch and a software patch to the OSS.

[00:25:36] Speaker 05:
The claims don't have those.

[00:25:38] Speaker 02:
This patent has expired, right?

[00:25:39] Speaker 02:
So you're talking about damages.

[00:25:41] Speaker 05:
This patent has expired, yes, Your Honor.

[00:25:44] Speaker 05:
And with respect to the alleged problem of call location, Ivey's expert says

[00:25:49] Speaker 05:
That was solved in claim five by making a required location-based eligibility determination.

[00:25:55] Speaker 05:
Well, claim five, like claim one, says nothing about an eligibility determination, much less a location-based one.

[00:26:02] Speaker 05:
So the expert testimony that is divorced from what's claimed cannot, we submit, create a factual issue.

[00:26:10] Speaker 05:
If I could speak for a minute with respect to the 490 and 306 patents, as we've indicated in the briefing, those are directed to the abstract idea of converting messages

[00:26:19] Speaker 05:
to and from a common format.

[00:26:22] Speaker 05:
I wanted to draw the court's attention to an admission in Ivy's gray brief at page 17, where they admit that the claims as a whole are directed to overcoming incompatible communication types, to the abstract idea itself through the use of a common format and not to a technological solution to the technological problem.

[00:26:42] Speaker 05:
Ivy itself says, the invention was not in the method for converting multimedia content

[00:26:48] Speaker 05:
from an MMS message into an email or vice versa.

[00:26:56] Speaker 05:
The claims as a whole are directed to the abstract idea.

[00:26:59] Speaker 05:
And IV itself admits that there's no how in the claims in terms of how to do it.

[00:27:04] Speaker 05:
Couple that with IV's expert's admission.

[00:27:06] Speaker 05:
This is with the 490 pen?

[00:27:08] Speaker 05:
Yes, Your Honor.

[00:27:10] Speaker 00:
IV claims in their blue brief.

[00:27:12] Speaker 00:
that says that these claims are directed to concrete steps performed by a particular equipment that affects specific, tangible solution to a technological problem in the narrow field of technology.

[00:27:24] Speaker 00:
That doesn't sound to be the admission that you're saying that they made.

[00:27:28] Speaker 05:
I would argue, Your Honor, that that statement in the blue brief is, one, irreconcilable with the statement in the gray brief, and two, more importantly, irreconcilable with the claims of the 490 and the 306 itself, which on their face recite know-how

[00:27:42] Speaker 05:
whatsoever in terms of how there could be a technological solution claimed.

[00:27:48] Speaker 05:
Indeed, all IV says was the aha moment was using email to transmit multimedia messages, but IV's own expert in the summary judgment record admitted that it was already known to use email in exactly the way claimed.

[00:28:02] Speaker 05:
That's at appendix 10474.

[00:28:05] Speaker 01:
Looking at 490, they do talk about what they

[00:28:08] Speaker 01:
view as the drawbacks and the difficulties in the prior art and say that they were attempting to overcome that.

[00:28:16] Speaker 01:
So are you saying that there was no advancement on the prior art?

[00:28:21] Speaker 05:
Your Honor, I think the fairest reading of the specification and of the gray brief statement is that the problem that existed in the prior art was one of incompatible communication systems, which of course is the age-old problem of translation, the age-old problem of converting messages

[00:28:36] Speaker 05:
to and from a common format that this court has dealt with in cases like two-way media and synopsis.

[00:28:42] Speaker 05:
But IV, by its own admission, and it's consistent with the specification, does not allege that there is any invention here in the method of actually converting multimedia content from an MMS message into an email, nor could it, frankly, given its own expert submission below, that email was already known for that purpose.

[00:29:03] Speaker 05:
I would draw the court's attention to the IV Erie indemnity case, the reported one that was cited in the briefs where IV made a very similar argument to this court.

[00:29:12] Speaker 05:
It argued that the fact that the claims there identified XML tags as the preferred format choice to use for indexing should have significance at step one and also at step two, that that in and of itself

[00:29:26] Speaker 05:
could render the claim non-abstract, or at least unconventional.

[00:29:31] Speaker 05:
And this court rejected that argument at both steps one and step two in that case.

[00:29:35] Speaker 05:
And the argument with respect to email on the 490 and the 306 patent is similar in kind.

[00:29:43] Speaker 02:
Thank you, counsel.

[00:29:44] Speaker 02:
And we'll hear from Mr. Deeroka for a minute.

[00:29:47] Speaker 03:
Thank you.

[00:29:49] Speaker 02:
Nothing to say?

[00:29:52] Speaker 03:
Your Honor, we only reserve the minute in case there were questions on the 073 patent since issues weren't raised and if the panel doesn't have any questions, we're happy to move along.

[00:30:01] Speaker 02:
Okay.

[00:30:02] Speaker 02:
Mr. Black, you've got three minutes or so.

[00:30:06] Speaker 04:
Thank you, Your Honor.

[00:30:07] Speaker 04:
Let me just tick through the patents quickly because I've only got three minutes and we've got a lot of patents here.

[00:30:11] Speaker 04:
On the 737, the question is, does the combination of a CCSN IG, which is a web server,

[00:30:20] Speaker 04:
specifically connected and designed to connect with an ISCP, is that not obvious over the prior art?

[00:30:28] Speaker 04:
That's 103.

[00:30:29] Speaker 04:
We intend to prove that.

[00:30:30] Speaker 04:
We're entitled to presumption of validity.

[00:30:32] Speaker 04:
Or is it, as they say, so routine and conventional, that combination, as to make the patent ineligible?

[00:30:38] Speaker 04:
That's a fact question.

[00:30:39] Speaker 04:
There was evidence in the record.

[00:30:41] Speaker 04:
We have a declaration.

[00:30:43] Speaker 00:
You're not conflating 103 with 101 here.

[00:30:45] Speaker 04:
No, I'm saying that if we have a legitimate 103 issue, we really can't have a 101 issue.

[00:30:50] Speaker 00:
It sounds like you're trying to argue that there could be a legitimate 103 issue, and therefore we have a factual situation with respect to 101.

[00:30:59] Speaker 00:
You're not arguing that.

[00:31:00] Speaker 04:
I think that's correct, Your Honor.

[00:31:02] Speaker 01:
I don't think that...

[00:31:04] Speaker 01:
conceded that there is an overlap between these concepts.

[00:31:07] Speaker 01:
And that's a lot of what step two is about.

[00:31:11] Speaker 01:
I agree with that.

[00:31:11] Speaker 01:
If you're looking at routine, conventional, it's by definition a 103 inquiry.

[00:31:16] Speaker 04:
Right.

[00:31:16] Speaker 04:
Routine and conventional is a lower standard to get over for the patentee than non-obvious in light of all the prior art.

[00:31:24] Speaker 04:
That's what the case law says.

[00:31:26] Speaker 04:
And my only point is that, like in 103, if the issue comes down to how inventive is the thing, putting two things together,

[00:31:34] Speaker 04:
That's a fact issue.

[00:31:35] Speaker 04:
There is evidence in the record submitted by IV.

[00:31:37] Speaker 04:
It's the Williams expert declaration at 68-71 to 78 where the expert explicitly said that the, that combination was new and inventive.

[00:31:48] Speaker 04:
And he did a DDR analysis.

[00:31:50] Speaker 04:
He did a machine or transformation test analysis.

[00:31:52] Speaker 04:
So the evidence is there.

[00:31:55] Speaker 04:
On the 352, this is not even, this is a claim that passes muster under ALICE step one.

[00:32:02] Speaker 04:
We've addressed that.

[00:32:04] Speaker 04:
in our brief.

[00:32:05] Speaker 04:
The changes that had to be made to the telecommunications networks in order to make this system work were found to be inventive, and certainly we believe that given all the structure in that claim, that it passes muster under ALICE step one.

[00:32:20] Speaker 04:
The 490 and 306 have been reduced by appellees to translation.

[00:32:25] Speaker 04:
That's a very broad and incorrect characterization to claim.

[00:32:29] Speaker 04:
There was a very specific problem presented to the inventors, which is that

[00:32:33] Speaker 04:
MMS was coming online.

[00:32:37] Speaker 04:
People around the world were using very different implementations.

[00:32:40] Speaker 04:
And someone came up with the idea of taking an MMS message, dissecting it, putting the text into an email and the other objects of the MMS into attachments and using email to do something that had never been done before.

[00:32:56] Speaker 04:
And then reconstructing the MMS message at the other end in whatever way the receiving entity wanted to

[00:33:02] Speaker 04:
do so so that it could transmit the MMS message to its customers.

[00:33:07] Speaker 04:
It's inventive.

[00:33:08] Speaker 04:
It's pretty neat.

[00:33:08] Speaker 04:
And we think there may be a 103 argument at trial.

[00:33:12] Speaker 04:
But again, there's something certainly that's not routine or conventional here.

[00:33:16] Speaker 04:
And finally, on the 200-957, little or nothing was said on that.

[00:33:19] Speaker 04:
We believe that it's on all fours with Bascom.

[00:33:22] Speaker 04:
And on that, I rest.

[00:33:26] Speaker 02:
Thank you, counsel.

[00:33:27] Speaker 02:
We'll take the case on a revised one.