[00:00:00] Speaker ?:
Thanks for watching.

[00:00:29] Speaker 02:
Our final case this morning is number 18-1802 Smarten LLC versus Samson Electronics.

[00:00:44] Speaker 04:
Good morning, Your Honor.

[00:00:52] Speaker 04:
Robert Vanderheide for the Plaintiff Appellant Smarten.

[00:00:56] Speaker 04:
This case, as you know, relates to the abstract

[00:00:59] Speaker 04:
idea aspect of the patent law.

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And I submit that the district court's opinion was more like Alice in Wonderland than it was like Alice applying this idea.

[00:01:09] Speaker 03:
In the red brief at 25, Samson says, Smarton has waived any reliance on its purported 32 machine elements by not presenting them to the district court.

[00:01:22] Speaker 03:
Smarton never presented to the district court table 1 appearing on pages 8 through 17 of its opening brief.

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and never broke a claim into machine elements.

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And it never used machine elements to argue that the claims contain improvements to the underlying device.

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And then they say, it's waived.

[00:01:42] Speaker 03:
Where in the record below did Smarton break a claim into machine elements?

[00:01:47] Speaker 04:
Well, we argued all of the machine elements in the brief that we filed.

[00:01:51] Speaker 04:
We referenced the portions of the claims that related specifically to them in the oral argument.

[00:01:57] Speaker 03:
Where did you use the word machine elements below?

[00:01:59] Speaker 04:
I'm sorry, Your Honor, it's in our reply brief.

[00:02:02] Speaker 04:
I don't remember exactly what page it's on in the reply brief, but we put specifically in there where it was.

[00:02:07] Speaker 04:
And also in the oral argument, we said that there are more than 30 elements in the claims that must be considered, both hardware and software.

[00:02:17] Speaker 04:
And under the Pfizer v. Lee case, which we cited, which in fact then cites ye, it says that if the issue is considered below, then it doesn't make any difference whether you use exactly the same terminology or not.

[00:02:29] Speaker 04:
And the issue, only issue, considered below was Section 101.

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Therefore, we don't believe that there's any waiver with respect to anything.

[00:02:37] Speaker 02:
You mean as long as 101 is the issue, you can make any new points on appeal that you want to without calling into the attention of the district court?

[00:02:47] Speaker 04:
Well, that's what the Pfizer v. Lee case said with respect to Section 132.

[00:02:53] Speaker 04:
And they, again, cited Lee's case from the Supreme Court.

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which says that specifically in the quotation.

[00:02:58] Speaker 01:
What was Pfizer v. Lee about?

[00:03:00] Speaker 04:
Pfizer v. Lee was simply the only relevance to this particular case because it was a chemical case.

[00:03:06] Speaker 04:
The only relevance to this case was whether or not an issue considered below, you can use different language and bring up different points on appeal if that issue was considered.

[00:03:16] Speaker 04:
And in the Pfizer v. Lee case, it was section 132.

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Here it's section 101.

[00:03:21] Speaker 04:
the difference is inconsequential.

[00:03:23] Speaker 02:
As long as it's the same section, you can say anything you want, even though you didn't tell the district court about it?

[00:03:28] Speaker 04:
Well, I'm not sure, Your Honor, that you could say anything that you want.

[00:03:32] Speaker 04:
But certainly, in the context that this case became, we argued all sorts of aspects with respect to abstract idea below.

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And we used some of exactly the same terminology.

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And the fact that there, we restricted the number of pages that we could use.

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And here, we have a more reasonable amount that we can use.

[00:03:51] Speaker 03:
The fact that we didn't actually... You had pages, essentially nine, ten pages of your opening brief devoting to listing the so-called machine elements.

[00:04:03] Speaker 04:
Yes.

[00:04:03] Speaker 03:
Your references below are that you said at appendix 920, you reference more than 30 specific elements.

[00:04:16] Speaker 03:
That's it.

[00:04:17] Speaker 03:
Yes.

[00:04:17] Speaker 03:
Okay.

[00:04:18] Speaker 03:
You don't list for the court below

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this 10 pages of supposed machine elements, and that you said at one point at 877 in passing the numerous machine elements of the advantageous combinations.

[00:04:36] Speaker 03:
How do you get to that list that you've given us?

[00:04:40] Speaker 04:
Well, because when we said the machine elements there, that was in the context of discussing all of the things that were in the claims.

[00:04:48] Speaker 04:
that relate to no abstract idea.

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And we had discussed all of the features of the claims that are the same as they are in the table one that we have now, prior to that.

[00:05:01] Speaker 04:
So the fact that we didn't use the term machine elements and didn't specifically identify them by number, giving a number to each one of them, is inconsequential.

[00:05:10] Speaker 04:
They were there.

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They were discussed.

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The district court considered them.

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The district court was aware of them.

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And just like in the Nelson v. Adams case,

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the Supreme Court.

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When the court is made aware of the situation, that's the significant thing.

[00:05:26] Speaker 03:
Let's turn to merits.

[00:05:28] Speaker 03:
In the red brief, OK, in the blue brief you argue, the district at page 34, the district court misinterpreted the specification to mean that a pedometer is conventional in a mobile computing device when in fact it states exactly the opposite.

[00:05:47] Speaker 03:
In the red brief at 3334, Samsung says, even on its own terms, however, Smarten's argument fails.

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Smarten contends that a statement in the specification that, quote, mobile computing devices may be modified to include a pedometer, close quote, indicates that pedometers were not conventional.

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Putting aside Smarten acknowledged in oral argument on the motion to dismiss that, quote, there's nothing new about a pedometer,

[00:06:18] Speaker 03:
Smarton's reliance on the sentence has taken out a context and ignores the rest of the specification.

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For instance, the next sentence discloses that the invention can be implemented using, quote, the commercially available iPod Nano with a built-in pedometer.

[00:06:36] Speaker 03:
How does your argument that the district court air is square with that language in the 640 pad?

[00:06:42] Speaker 04:
Because the Nano,

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iPod has nothing to do with a smartphone or laptop or any of the computer devices that were concerned with the invention.

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The only reason that was cited was because it's an example of the fact that a pedometer is a known product.

[00:07:00] Speaker 04:
Actually in our situation here we have exactly the same situation that you confronted in Thales.

[00:07:05] Speaker 04:
There there were two

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sensors that were known per se that were used to get an advantageous result with respect to measurement.

[00:07:12] Speaker 01:
The spec also talks about using a pedometer with an iPod or an iPhone in that same column, right?

[00:07:19] Speaker 04:
No.

[00:07:21] Speaker 04:
As far as we are concerned, there's never been the use of a pedometer before in a smartphone.

[00:07:27] Speaker 01:
See, for example, the commercially available pedometer used with an iPod or iPhone that receives pedometer transmissions from a shoe.

[00:07:35] Speaker 01:
I get it that the pedometer is attached to your shoe, and it's receiving a transmission with your iPhone, but it's virtually the equivalent of having the pedometer and iPhone together, isn't it?

[00:07:49] Speaker 04:
No, in fact, I don't believe that it is, Your Honor.

[00:07:51] Speaker 04:
And I think the situation here is, again, exactly what was confronted with in Thales, where you have two things that are normally

[00:08:01] Speaker 04:
that are known per se, and when you combine them, you get an advantageous measuring result.

[00:08:06] Speaker 04:
That's exactly the same thing we have here.

[00:08:09] Speaker 04:
When you add the pedometer with the GPS receiver in our invention, what that results in is an improved measurement.

[00:08:16] Speaker 04:
For example, before, if you had just the GPS receiver, which was known per se in smartphones, you would not be able to track someone walking up the stairs, someone running in place, perhaps not even in a treadmill.

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Whereas in our situation, you have that exactly, so that you can count the steps.

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And that's, in fact, what I do every day when I use a smartphone, the Samsung smartphone.

[00:08:43] Speaker 03:
At 43, Samsung says, Smarton did not argue before the district court that storing a user's favorite foods improved the storage subsystem.

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only that the favorite foods feature improved, quote, user friendliness by improving the computer device's data entry requirements, close quote.

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Thus, Samson says, your alleged database structure improvement analogy to EnVish is waived.

[00:09:19] Speaker 04:
Well, it says in the specification, including portions of the specification, specifically brought to the attention of the district court.

[00:09:26] Speaker 03:
Where?

[00:09:27] Speaker 03:
How was your favorite food database structure improvement argument preserved below?

[00:09:35] Speaker 04:
Your Honor, the claims, I mean, the specification here is over 100 columns long, and I cannot cite to you that right offhand.

[00:09:43] Speaker 02:
When I take the time for the... You're supposed to come to the argument with the knowledge of the record and your briefs.

[00:09:48] Speaker 04:
That's what you're supposed to do.

[00:09:50] Speaker 04:
I'm sorry.

[00:09:50] Speaker 04:
I'm just not smart enough to commit to memory the 100 columns of the patent.

[00:09:56] Speaker 04:
You're allowed to make notes.

[00:09:57] Speaker 04:
OK.

[00:09:58] Speaker 04:
But when I sit down for rebuttal, I will find that for you.

[00:10:04] Speaker 04:
But in actuality, that is directly in the specification.

[00:10:09] Speaker 04:
And in all of these course cases, including that... Did you argue that?

[00:10:12] Speaker 03:
Language to the court below?

[00:10:13] Speaker 03:
Yes.

[00:10:15] Speaker 03:
Where was that in the record?

[00:10:17] Speaker 03:
That is what we'll find for you.

[00:10:20] Speaker 04:
It's in the appendix, but I can't tell you that also the appendix is hundreds of pages long.

[00:10:27] Speaker 03:
At red brief 48, Samson says that page 48 and 49 of your blue brief are the first time in this case that any argument regarding PACE feedback and its

[00:10:39] Speaker 03:
impact on patent eligibility has appeared.

[00:10:43] Speaker 03:
Where in the record was that?

[00:10:44] Speaker 04:
We specifically quoted to district court the sections including appendix page 69, where PACE was discussed.

[00:10:54] Speaker 04:
In other words, when we were talking about the advantages of the invention, we specifically referenced the columns that included... Where in the record... I see you're talking about the patent.

[00:11:05] Speaker 03:
Where in the record below

[00:11:07] Speaker 03:
Did you raise that to the district court?

[00:11:10] Speaker 04:
It was raised.

[00:11:12] Speaker 04:
Again, I can't cite to you exactly the appendix that it was raised in or the argument was raised.

[00:11:17] Speaker 04:
But we specifically brought to the district court's attention a certain section of the specification, which included present appendix page 91, which is column 69 of the patent.

[00:11:32] Speaker 04:
And that's where PACE is discussed.

[00:11:34] Speaker 04:
And we brought it up, and we specifically talked about the walk-run ladder there, which is what the PACE relates to.

[00:11:44] Speaker 01:
What would you say is the inventive concept here in this claim?

[00:11:48] Speaker 04:
The inventive concept in this claim is that we are able to have a handheld mobile computing device that allows you to, in a user-friendly, non-cumbersome manner, which is what was in the prior art,

[00:12:03] Speaker 04:
Enter food and exercise data so that you can get immediate feedback to tell you how you're doing with respect to that, something that was not done in the prior act before.

[00:12:15] Speaker 04:
As a matter of fact, I think that probably the most relevant part of all of the arguments and briefs about it is what the patent office said.

[00:12:25] Speaker 04:
In appendix page 439, when the patent office

[00:12:29] Speaker 04:
gave the reasons for allowance.

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They first of all discussed all sorts of other prior art devices and listed them.

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And then they said that the combination of references teaches a device which provides for monitoring and advising of food intake and exercise.

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In other words, that's in the prior art.

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That's something that anybody can do if they want to, but cannot meet all of the limitations present in the instant claim.

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What we've done here is advance the art with respect to that.

[00:12:59] Speaker 01:
What was the advance in the art over the concept of having some device that you can use as like a bookkeeping of information you're entering into it?

[00:13:11] Speaker 04:
Well, the device that we have is much more user-friendly.

[00:13:16] Speaker 04:
It has a number of things where it improves the functionality of the computer.

[00:13:21] Speaker 04:
And it has a number of things now.

[00:13:23] Speaker 04:
OK, the way that it improves the functionality are, first of all, it has the generation of the favorite foods.

[00:13:30] Speaker 04:
And what that does is it not only makes it easier to enter.

[00:13:33] Speaker 02:
Well, that's not computer functionality, is it?

[00:13:35] Speaker 02:
Yes, it is, because what you're doing.

[00:13:37] Speaker 02:
It's the choice as to which data to display.

[00:13:41] Speaker 04:
But what it does is it means that instead of having to enter something multiple times, in other words, if you have Cheerios with blueberries for breakfast every morning, and you want to keep track of that,

[00:13:51] Speaker 04:
Instead of having to enter that every time, you just put it in once.

[00:13:56] Speaker 04:
And then when you enter the system and you go to the screen that says that you're going to do food and I think you just push churias with blueberries, that automatically puts in there how many calories.

[00:14:09] Speaker 01:
Isn't that just like bookmarks that you have with the web browser?

[00:14:13] Speaker 01:
You have these little shortcut entries.

[00:14:15] Speaker 01:
And we said in Intellectual Ventures versus Erie that those kinds of bookmarks are

[00:14:20] Speaker 01:
Just abstract ideas.

[00:14:21] Speaker 04:
But in core wireless, it was exactly the opposite.

[00:14:25] Speaker 04:
We have the same situation as in core wireless, where we're here, what we do is, and especially for a small screen, we allow you to access the information much more quickly.

[00:14:36] Speaker 04:
And it limits how many screens you have to go through.

[00:14:39] Speaker 04:
For example, in core wireless, you had to go through three or four screens if you put in one entry.

[00:14:45] Speaker 04:
Whereas if you hit what is equivalent to our favorite foods, you only have to go to one screen.

[00:14:50] Speaker 02:
OK.

[00:14:52] Speaker 02:
You're well into your rebuttal time.

[00:14:54] Speaker 02:
Why don't we hear from Mr. Rainey.

[00:14:57] Speaker 02:
Thank you.

[00:15:04] Speaker 00:
Good morning, Your Honors, and may it please the Court of Richard Rainey here on behalf of Samsung.

[00:15:09] Speaker 00:
The district court, in a thorough and well-reasoned opinion, found the claims at issue invalid as directed to patent an eligible subject matter for two independent reasons.

[00:15:17] Speaker 01:
I don't think I've ever seen a claim this long.

[00:15:20] Speaker 01:
I've been in the game for a long time, but I've never seen a claim this long.

[00:15:24] Speaker 00:
Yes, and this court has addressed lengthy claims in the past and has said that the length of the claims is not dispositive.

[00:15:31] Speaker 00:
It's the content of the claim that matters.

[00:15:34] Speaker 00:
So this case falls squarely within the electric power group case and other cases where the court has confronted lengthy claims.

[00:15:39] Speaker 01:
We have electric power group.

[00:15:40] Speaker 01:
We also have core wireless.

[00:15:42] Speaker 01:
Can you help me think through why this can't possibly fit inside of core wireless?

[00:15:48] Speaker 01:
Sure, without mentioning electric power curve.

[00:15:51] Speaker 00:
Yes.

[00:15:52] Speaker 00:
Core Wireless is, in our opinion, completely distinguishable from the user interface, if you want to call it that, at issue here.

[00:16:01] Speaker 00:
In Core Wireless, you had a very specific specialized claim directed to an improved user interface that allowed you to peek into an unlaunched application behind the button you were looking at.

[00:16:13] Speaker 00:
So that, for example, if you had a window that said email, and you could

[00:16:19] Speaker 00:
activate that window, and it would give you menu items to the unactivated email program behind it, and let you go in there and perhaps select Compose without having to go through multiple screens to get there.

[00:16:32] Speaker 00:
By contrast here, if you look at the claims at issue, as lengthy as they are, when talking about the user interface, all that is mentioned are symbols.

[00:16:44] Speaker 00:
For example, food, exercise, and- Favorite foods.

[00:16:48] Speaker 00:
That's a shortcut.

[00:16:49] Speaker 01:
Now we're in favorite food land very quickly.

[00:16:53] Speaker 01:
We don't have to fight through multiple windows in order to get to the favorite food page.

[00:17:00] Speaker 00:
But the problem we have here is in the claims, there's nothing specific or special that's mentioned about those symbols other than that they have information on them.

[00:17:12] Speaker 03:
If I have a calendar, an old fashioned paper calendar, and I write in the upper corner

[00:17:19] Speaker 03:
CB to tell me that I had Cheerios with blueberries.

[00:17:25] Speaker 03:
Have I just invented a shortcut?

[00:17:27] Speaker 00:
You have.

[00:17:29] Speaker 00:
And in fact, there's nothing unconventional about shortcuts at all.

[00:17:34] Speaker 00:
This is a 2013 patent that has the iPhone 4S and 5 as conventional technology.

[00:17:41] Speaker 00:
Those devices had very sophisticated icons allowing you to shortcut your way all over the place through an iPhone.

[00:17:49] Speaker 00:
So the notion that a claim to something as basic as a symbol could be an improvement to the existing technologies, we think, not supported on this record.

[00:18:01] Speaker 00:
If I might just turn for a moment to the GPS and pedometer point.

[00:18:07] Speaker 00:
The specification in this case talks about two fairly unremarkable alternative embodiments.

[00:18:14] Speaker 00:
One has the pedometer outside the shoe.

[00:18:16] Speaker 00:
That's conventional.

[00:18:17] Speaker 00:
One has the pedometer inside the housing along with the GPS.

[00:18:20] Speaker 00:
That's also described as conventional.

[00:18:23] Speaker 00:
There's nothing to this invention as it relates to the pedometer that's anything unconventional.

[00:18:28] Speaker 02:
But even if you were to accept for a moment.

[00:18:31] Speaker 02:
Well, they say that combining the pedometer with the GPS was unconventional.

[00:18:35] Speaker 00:
So we think the specification plainly says that figure one, which shows a pedometer either inside or outside, is described as conventional.

[00:18:43] Speaker 00:
But even if you accept the argument that there might have been something novel

[00:18:47] Speaker 00:
about placing a pedometer inside the housing along with the GPS.

[00:18:51] Speaker 00:
This court has made it clear that novelty and eligibility are two different standards.

[00:18:56] Speaker 00:
It's a different test.

[00:18:57] Speaker 00:
And in fact, if you want to know what this invention is directed to, step one under ALICE, the original claims in this case did not include any limitation to the location of the pedometer inside the housing.

[00:19:09] Speaker 00:
And in fact, the specification draws no distinction between the two in terms of anything.

[00:19:15] Speaker 00:
with respect to the invention.

[00:19:16] Speaker 00:
Either one can be used.

[00:19:18] Speaker 00:
What this invention is directed to, as the district court correctly found, is the collection of a whole bunch of data from a whole bunch of sensors, including a panometer and a GPS, and doing a bunch of things with that data, precisely as this court confronted an electric power.

[00:19:32] Speaker 00:
So even if there was something perhaps new about it, the specification lists no technical challenge to it, no technical superiority to it.

[00:19:42] Speaker 00:
an unremarkable alternative to approaching that claim.

[00:19:49] Speaker 00:
The court has no further questions.

[00:19:51] Speaker 01:
Are we supposed to just say everything in this claim is conventional?

[00:19:57] Speaker 01:
A food monitoring subsystem is conventional.

[00:20:00] Speaker 01:
An exercise monitoring subsystem is conventional.

[00:20:04] Speaker 01:
Every single noun in here is conventional.

[00:20:06] Speaker 01:
And so therefore, there's no inventive concept.

[00:20:09] Speaker 00:
So what I would say is if we follow

[00:20:12] Speaker 00:
approach that this court laid out in Electric Power Group, each one of those is nothing more than the collection, analysis, and display of data.

[00:20:20] Speaker 00:
And laying additional layers of data on top of additional layers of data and additional layers of analysis on top of additional layers of analysis doesn't change the result.

[00:20:29] Speaker 00:
This court's made that clear.

[00:20:31] Speaker 00:
Placing abstract concepts on top of abstract concepts doesn't change things.

[00:20:36] Speaker 00:
But even under fair warning,

[00:20:38] Speaker 00:
It's very clear, the spec admits, that people have been doing these very kinds of activities for a long time in various formats, computerized and otherwise.

[00:20:48] Speaker 00:
I think what this invention is fairly directed to, as it says in the abstract and elsewhere, is simply porting those over into a conventional technology environment.

[00:21:00] Speaker 00:
So the answer to your question is the addition of all of these layers of text don't change the result at all under Section 101.

[00:21:09] Speaker 02:
OK, thank you, Mr. Rainey.

[00:21:11] Speaker 02:
Thank you very much.

[00:21:13] Speaker 02:
Mr. Vander Heijn.

[00:21:18] Speaker 04:
I need to return to the whole idea behind the abstract idea concept set forth by the Supreme Court in 1853 and carried forward all the way through the 2014 Alice case.

[00:21:29] Speaker 04:
And that is, you don't want to have something so broad and so nonspecific that it retards the art.

[00:21:36] Speaker 04:
Here, this is the epitome of a particular specific invention, which is recited in the claims.

[00:21:43] Speaker 04:
And if they want to use the prior art devices, those that Pat Noff has talked about, that do the food intake and do the exercise, let them do it.

[00:21:56] Speaker 04:
But instead, what they do is put in over 100 million commercial products exactly what is set forth in these detailed claims.

[00:22:05] Speaker 04:
These claims are specific.

[00:22:07] Speaker 04:
They tell you how to do something.

[00:22:09] Speaker 04:
They set forth the advantages of doing it.

[00:22:12] Speaker 04:
And they're exactly the same as the situation in various parts thereof, as core wireless fails and then fish.

[00:22:20] Speaker 02:
Thank you.

[00:22:20] Speaker 02:
Thank you, Mr. Vinerheide.

[00:22:21] Speaker 02:
Thank both counsels.

[00:22:22] Speaker 02:
The case is submitted.

[00:22:24] Speaker 02:
That concludes our session for this morning.