[00:00:00] Speaker 01:
In the next case, same counsel.

[00:00:02] Speaker 01:
Mr. Selwyn, are you ready?

[00:00:03] Speaker 03:
I am, your honor.

[00:00:06] Speaker 01:
You know the drill.

[00:00:06] Speaker 01:
You're reserving three.

[00:00:08] Speaker 01:
So go ahead.

[00:00:08] Speaker 01:
I am.

[00:00:11] Speaker 03:
Thank you.

[00:00:12] Speaker 03:
May it please the court, Mark Selwyn, presenting for Apple and Visa.

[00:00:16] Speaker 03:
In its final written decision, the board found mostly for Apple and Visa, determining that all independent claims and seven dependent claims of USR's 826 patent are unpalatable in light of prior art.

[00:00:29] Speaker 03:
As to the remaining five dependent claims, the board made two discrete errors.

[00:00:34] Speaker 03:
First, for dependent claims seven, 14, 26, and 34, an error based on claim construction and a failure to account for disclosures in the cited Maritzen Jacobson references showing the disabling left limitation met even under the board's improperly narrow construction.

[00:00:51] Speaker 03:
And second, for dependent claim eight,

[00:00:53] Speaker 03:
an error based on a failure to consider the explanation of Apple's expert for why El Pasita would have understood the Goldman reference to teach the, quote, second plurality of users' limitations.

[00:01:05] Speaker 03:
And as to substitute claim 50, the board ignored the court's law in failing to recognize that substitute claim 50 is directed to an unpatentable abstract idea, authentication of a user's identity, and does not state inventive concept because it is implemented through generic computer components

[00:01:23] Speaker 03:
operating in wholly conventional ways.

[00:01:26] Speaker 03:
This court has seen that kind of patent claim repeatedly before in cases like Prism against T-Mobile, Ascari versus USAA, and most recently, this January, in Boom against Stripe, and found it patent ineligible each time.

[00:01:40] Speaker 03:
There's no reason for this court to deviate from its prior Section 101 rulings in this case.

[00:01:46] Speaker 03:
Indeed, the specification itself makes clear that substitute claim 50 uses entirely generic components

[00:01:53] Speaker 03:
such as, quote, a general purpose computer system, a commercially available microprocessor, and any commercially available operating system.

[00:02:02] Speaker 03:
And looking at the plain language of the claims, the steps are arranged in their natural conventional order for verifying an account holder's identity before allowing access to the account to enable a transaction.

[00:02:14] Speaker 03:
Turning first to the disabling limitation, for dependent claims 7, 14, 26, and 34,

[00:02:21] Speaker 03:
the board interpreted the term disabled to require, quote, an affirmative act to make the device ineffective or inoperable.

[00:02:30] Speaker 03:
And on that basis, found that the prior combinations did not disclose the long and well-known and common sense idea of disabling a device in response to a sales authentication attempt.

[00:02:41] Speaker 04:
Mr. Sellen, this is Judge Toronto.

[00:02:45] Speaker 04:
Suppose I understood

[00:02:47] Speaker 04:
what the board meant by affirmative act was that there has to be a change of state.

[00:02:54] Speaker 04:
That is, you can't enable something if it's already enabled.

[00:02:57] Speaker 04:
You can't disable something if it's already disabled.

[00:03:00] Speaker 04:
You have to change the state.

[00:03:03] Speaker 04:
Why isn't the board right then on that understanding?

[00:03:08] Speaker 03:
Because even in that situation, the references disclose that.

[00:03:12] Speaker 03:
That is, that in response to a failed authentication attempt,

[00:03:17] Speaker 03:
a decision is made either to enable or to disable.

[00:03:22] Speaker 03:
So if the comparison fails, then the device continues to be made ineffective and disabled.

[00:03:35] Speaker 04:
In other words, disabling.

[00:03:37] Speaker 04:
I guess that my understanding, what I was trying to suggest was precisely that is not a change of state.

[00:03:46] Speaker 04:
To determine not to change is not to change the state.

[00:03:50] Speaker 04:
So if disable or enable as active verbs require a change of state that what you just described is not, then it does not meet the limitation.

[00:04:07] Speaker 03:
Oh, but it does because even in that circumstance, a decision is being made by the device.

[00:04:14] Speaker 03:
either to enable it or to disable it in response to an attempt to authenticate.

[00:04:22] Speaker 04:
Okay, I don't think I'm making any progress.

[00:04:25] Speaker 04:
I was trying to suggest that a decision is not a change of state.

[00:04:31] Speaker 04:
It might be an affirmative act, but it's not a change of state, and that's what I'm trying to distinguish.

[00:04:39] Speaker 03:
Well, disabling and enabling are simply opposite sides of the same coin.

[00:04:44] Speaker 03:
When the device is not enabled in response to an authentication attempt, it remains disabled.

[00:04:51] Speaker 03:
And the 826 patent doesn't view disablement as a narrow concept.

[00:04:57] Speaker 03:
To the contrary, the specification states that the claims invention can use, quote, any one of a number of known disabled assets.

[00:05:06] Speaker 03:
And causing a device to remain locked or not enabled

[00:05:09] Speaker 03:
following a failed authentication was certainly one of those known methods.

[00:05:14] Speaker 03:
As Apple expert Dr. Shoup explained, a posita would recognize that denying access to a device or causing the device to remain locked based on a failed authentication attempt is a method of disabling.

[00:05:30] Speaker 03:
But what the board appears to have done is limited disabled to a narrow embodiment disclosed in the patent in which the device

[00:05:39] Speaker 03:
shuts down and or automatically deletes any portion of data or all the data stored in memory.

[00:05:49] Speaker 03:
The description of that embodiment.

[00:05:51] Speaker 01:
This is Judge Wallach.

[00:05:53] Speaker 01:
I'd like you to explain Judge Toronto's question using Schrodinger's cat as your example.

[00:06:06] Speaker 03:
I may need a little more context with that, Your Honor.

[00:06:10] Speaker 04:
Or a graduate degree, yeah.

[00:06:15] Speaker 04:
Can I, since I know time is short, can I just ask you about this plurality of users element?

[00:06:23] Speaker 04:
Is there a dispute here either about what the board meant or about what, on the general subject?

[00:06:32] Speaker 04:
When the board said discrete groups,

[00:06:35] Speaker 04:
not distinct groups of users, does it understand, does everybody understand that those two groups have to be non-overlapping so that if you had a set of ABC, that AB as one group and BC as another group would not be what the board had in mind because B is common?

[00:07:00] Speaker 03:
that appears to be right that the board has read in an additional limitation to claim eight.

[00:07:07] Speaker 03:
But in fact, claim eight requires only storing respective biometric information for a second plurality of users.

[00:07:15] Speaker 03:
It doesn't require that the different groups, the first plurality and the second plurality be enrolled or have their information stored in different ways.

[00:07:25] Speaker 03:
So, subdividing Goldman's multiple users into two groups

[00:07:29] Speaker 03:
a first plurality and a second plurality would have been obvious.

[00:07:34] Speaker 03:
The board's finding that Apple didn't explain how the combination of Jacobson and Goldman would disclose storing information for a first plurality of users and a second plurality of users wasn't supported by substantial evidence because first, it ignored Dr. Shoup's declaration, which he explained that, quote, multiple templates for multiple users are stored

[00:07:57] Speaker 03:
teaches a device where there are multiple groups of users.

[00:08:00] Speaker 03:
And a second plurality of users simply corresponds to a second group of users.

[00:08:06] Speaker 03:
And it failed to account for the fact that simply sorting stored biometric information into multiple groups requires no more than the application of ordinary skill.

[00:08:17] Speaker 03:
In the petition, Apple argued that although Jacobson doesn't expressly disclose the first device is configured to store biometric information for a second plurality of users, Goldman discloses that limitation.

[00:08:32] Speaker 03:
And the board acknowledged that Goldman teaches storing multiple templates for multiple users, but then held that, quote, at best, this discloses storing information for a single group or a plurality of users.

[00:08:46] Speaker 03:
That ignores that sorting those plurality of users into a first group of people and a second group of people, just dividing them into two, would be well within Apacito's ability and Dr. Shoup's testimony that the plain meaning of the phrase biometric information for a second plurality of users merely requires biometric information for a second group of people.

[00:09:14] Speaker 03:
And last, Your Honor, is to turn to substitute claim 50.

[00:09:18] Speaker 03:
Substitute claim 50 is directed to the abstract idea of verifying an account holder's identity before allowing a financial transaction.

[00:09:28] Speaker 03:
That's an age-old problem, certainly as old as banking itself.

[00:09:32] Speaker 04:
Can I just ask, this is Judge Toronto, that's an extremely high-level formulation of what the claim is directed to that disregards

[00:09:44] Speaker 04:
you know, obvious details in the claim.

[00:09:52] Speaker 04:
Do you, and then, you know, we've had a number of cases including the TechSec case that say when formulating what the, that the step one directed to proposition, you really can't ignore

[00:10:13] Speaker 04:
important aspects of the claim.

[00:10:16] Speaker 04:
How do we deal with that idea here?

[00:10:20] Speaker 03:
That distinction here?

[00:10:23] Speaker 03:
Nothing is being ignored.

[00:10:25] Speaker 03:
The claim here and in the next case springs from the basic concept of verifying an account holder's identity before allowing access to their account to enable a transaction.

[00:10:39] Speaker 03:
And this court has held that the test for step one

[00:10:43] Speaker 03:
of Alice is what the claims are directed to or looking at the focus of the claims.

[00:10:50] Speaker 03:
And this court in Erickson instructed that where the bulk of the claim provides an abstract idea and the remaining limitations provide only necessary antecedent and subsequent components, the claims character as a whole is directed to the abstract idea.

[00:11:06] Speaker 03:
That is the case here, that the claim is directed...

[00:11:10] Speaker 00:
This is Judge Stoltz.

[00:11:12] Speaker 00:
Could you get just a little bit more specific?

[00:11:14] Speaker 00:
I feel like you're talking at a kind of a high level.

[00:11:17] Speaker 00:
So I hear everything you're saying, and I agree, we're supposed to be looking at the claim and the specification to determine, you know, what is asserted to be the focus of the claimed advance over the prior.

[00:11:30] Speaker 00:
But there's a lot of things in this claim, including a first handheld device, second handheld device,

[00:11:36] Speaker 00:
There's the first biometric information, generating a one-time code, generating a digital signature, encrypting.

[00:11:43] Speaker 00:
Could you get into that level of detail and really talk about the specifics in this claim?

[00:11:52] Speaker 03:
Sure.

[00:11:52] Speaker 03:
The claim doesn't involve any new technology for performing the abstract idea.

[00:11:59] Speaker 03:
And as this court wrote in the BSG technology case,

[00:12:03] Speaker 03:
Claims aren't saved from abstraction merely because they recite components more specific than generic computers.

[00:12:12] Speaker 03:
Here, the claim offers no new technology for generating, analyzing, storing, retrieving, decrypting, verifying, or authenticating information.

[00:12:22] Speaker 03:
Those are all steps simply to implement the abstract idea, and they all use generic computer components to do so.

[00:12:31] Speaker 01:
You're into your rebuttal time, Mr. Stillman.

[00:12:34] Speaker 03:
And I will conclude here and save the balance of my time for rebuttal.

[00:12:39] Speaker 03:
OK.

[00:12:39] Speaker 01:
Mr. Matthews, are you ready to proceed?

[00:12:43] Speaker 02:
Thank you, Your Honor.

[00:12:44] Speaker 02:
May it please the court?

[00:12:46] Speaker 02:
I'd like to focus right at the second on the enable-disable and specifically on the notion that what I believe is most important here, which is that

[00:12:59] Speaker 02:
This is Apple's construction of disabled that was propped to the board to make ineffective or inoperative.

[00:13:07] Speaker 02:
And in the course of determining whether the prior or disclosed devices that upon a failed authentication are made ineffective or inoperative, the board considered both the construction, the teachings of the 826 patent,

[00:13:26] Speaker 02:
And Dr. Jacobson's testimony, and specifically Dr. Jacobson had explained that Appendix 3554 to 3558, paragraphs 46 to 53, that enable and disable, there are verbs that connote action that changes the state of the device.

[00:13:45] Speaker 02:
And he explained that that was consistent with the teachings of the 826 patent where there were embodiments that showed where a failed user authentication results

[00:13:54] Speaker 02:
in shutting down the device or deleting some or all of the data from the device.

[00:13:58] Speaker 02:
That's shown at appendix 100, column 30, line 7 through 13 in connection with steps 204 and 206 of figure 22.

[00:14:06] Speaker 02:
And Dr. Jacobson also explains why the priority devices don't disable use.

[00:14:13] Speaker 02:
And specifically with respect to Maritzen.

[00:14:16] Speaker 01:
Mr. Matthew.

[00:14:18] Speaker 02:
Yes.

[00:14:19] Speaker 01:
This is Judge Walling.

[00:14:20] Speaker 01:
What state is a device in if it is not enabled?

[00:14:28] Speaker 02:
It is, so we view it as a three, the priority here and the discussion here and the invention as well, as at least a three-state

[00:14:40] Speaker 02:
system.

[00:14:41] Speaker 02:
The state where it is locked and willing to accept input is called that state one.

[00:14:50] Speaker 02:
State two would be where it has accepted input and verified or authenticated the input and unlocked it.

[00:14:57] Speaker 02:
That would be state two.

[00:14:58] Speaker 02:
And state three would be where there has been attempts to authenticate and the devices determine that some security or protection from fraudulent authentication attempts is necessary because the authentication attempts are failing.

[00:15:16] Speaker 02:
And so we're going to disable the device as disclosed in the patent, either maybe shut it down or delete some of the

[00:15:25] Speaker 02:
valuable data that's on a device because you suspect something awry is going on.

[00:15:30] Speaker 02:
And that would be state three.

[00:15:32] Speaker 02:
So I would say that the state when it's not unlocked is simply that.

[00:15:38] Speaker 02:
It's not unlocked but willing to accept input.

[00:15:42] Speaker 02:
And what Dr. Jacobson had, and with respect to the devices that are disclosed in Maritzen, yes, I'm sorry, go ahead.

[00:15:50] Speaker 01:
If it's turned off, okay, just, you know, the batteries run out.

[00:15:55] Speaker 01:
Is it, it could, just clarify for me, it could still be disabled or enabled, right?

[00:16:06] Speaker 02:
Well, if it's off and it remains off, then it would not be enabled because it's not functioning.

[00:16:14] Speaker 01:
So if it was enabled, okay, and then the battery runs out, and then somebody recharges the battery, is it still enabled?

[00:16:24] Speaker 02:
It would depend on the device itself.

[00:16:27] Speaker 02:
It might actually be set up so that when the power runs out, it goes back to a locked status where it needs to be unlocked again.

[00:16:39] Speaker 02:
There may be a concern that a fraudulent actor has allowed the device to run out knowing that

[00:16:46] Speaker 02:
I'll pick up a device that the batteries run out, and then I'll have access to the device.

[00:16:52] Speaker 02:
And what the board had relied on was Dr. Jacobson's description with respect to Maritzen.

[00:16:59] Speaker 02:
As I said, there's no dispute about how these devices are disclosed to operate, either in paragraphs three, four, and five of Jacobson, which was cited for this proposition for these claims, or in paragraph 67 of Maritzen.

[00:17:15] Speaker 02:
And that's that the device is locked and remains locked open to as many authentication attempts as you would like until you have authenticated yourself properly.

[00:17:27] Speaker 02:
And Dr. Jacobson

[00:17:29] Speaker 02:
provided his expert view that a skilled artisan would not view remaining locked as disabling the device because it never changes the state of PTD100 in the case of Maritzen.

[00:17:42] Speaker 02:
It doesn't change the state in any way based on a failed authentication attempt.

[00:17:47] Speaker 02:
And in fact, if you think about it in terms of making a device ineffective or inoperable, the device

[00:17:57] Speaker 02:
is not made ineffective or inoperable pursuant to the construction because the PTD is no more ineffective or inoperable after a failed authentication attempt than it was before the failed authentication attempt.

[00:18:11] Speaker 02:
It's at the same... And so under the court's construction, under Apple's construction, it's just not disabled.

[00:18:17] Speaker 02:
And I heard this morning

[00:18:20] Speaker 02:
that disabling is just the opposite side of the same coin as enabling.

[00:18:25] Speaker 02:
So that's a different construction to argue that disabling then means just not to enable.

[00:18:35] Speaker 02:
Not only is that not the construction that was provided or adopted, but it creates an issue where if you construe to disable to mean to not enable or to not provide, I'm sorry?

[00:18:50] Speaker 02:
to not enable or not provide access to the device, then that effectively reads the phrase or disable out of the claim.

[00:18:58] Speaker 02:
If you looked at the claim element in claim seven, for example, it says that the first processor is configured to enable or disable use of the device, of the first handheld device based on the result of the comparison.

[00:19:14] Speaker 02:
If disable just means to not provide access or to not

[00:19:18] Speaker 02:
not enable, that claim scope would essentially be the same as a claim that read the processor is configured to enable use of a device based on the result of the comparison.

[00:19:29] Speaker 02:
But you have to give the phrase or disable meaning in the claim.

[00:19:33] Speaker 02:
And the board did that by adopting the construction that you have to take an active step, an affirmative step to make the device ineffective or inoperable.

[00:19:43] Speaker 02:
In fact, while it doesn't come into play,

[00:19:47] Speaker 02:
because there's no dispute that upon a successful authentication the device is unlocked, that affirmative act takes place on the enablement side too.

[00:19:58] Speaker 02:
So if we were to walk up to a device that was already unlocked and the decision is made that, you know, when the device is picked up it's not going to be locked

[00:20:10] Speaker 02:
without a further authentication, again, there would be no affirmative act that made the device effective or operable.

[00:20:19] Speaker 02:
And so under the same reasoning that Dr. Jacobson provided in connection with disable or that the court adopted in trying to figure out how do I apply the construction to make ineffective or inoperable in either case you would need an affirmative act.

[00:20:36] Speaker 02:
And in fact, the usage of to make

[00:20:40] Speaker 02:
which is part of the construction, that's the common usage of that term, to cause to happen, to bring about, to change from one form or function to another.

[00:20:48] Speaker 02:
And by requiring that the device take an affirmative step to make the device ineffective or interoperative, the board's construction just gives meaning to the verb phrase to make.

[00:21:02] Speaker 02:
I do want to point out that with respect to Jacobson, there's some discussion about other

[00:21:10] Speaker 02:
portions of Jacobson other than paragraphs three, four, and five being relied on.

[00:21:16] Speaker 02:
The board found that those were the only paragraphs of Jacobson that relied on for this interpretation, for this claim limitation.

[00:21:25] Speaker 02:
The board did consider the disclosure there.

[00:21:30] Speaker 02:
They didn't disregard it.

[00:21:31] Speaker 02:
What they said was that

[00:21:34] Speaker 02:
Those paragraphs only generally discuss denying access to a system.

[00:21:38] Speaker 02:
That's in Appendix 24.

[00:21:40] Speaker 02:
But do not mention specifically enabling or disabling use of a device.

[00:21:47] Speaker 02:
With respect to Maritzin's, there was a citation in the paragraph 56 that came up on reply to the board.

[00:21:56] Speaker 02:
And then also again on appeal.

[00:21:58] Speaker 02:
That's in Appendix 1287.

[00:22:00] Speaker 02:
That's paragraph 56 of Maritzin.

[00:22:03] Speaker 02:
And in considering that disclosure, the board and the court really should take a look at the entire disclosure.

[00:22:12] Speaker 02:
The board did consider the entire disclosure within the context, say paragraphs 54 through 57, which describes the operation of the back end system in Maritzen.

[00:22:22] Speaker 02:
This is, if you were to step back for a second, the driver approaches the toll booth, authenticates themselves, successfully authenticates themselves,

[00:22:33] Speaker 02:
The biometric key is generated that then is sent to PTD 100, which then sends a transaction message to the back end to a clearinghouse 130.

[00:22:44] Speaker 02:
And now in paragraph 56, we're talking about what happens at the back end.

[00:22:48] Speaker 02:
And in that section, it's not describing anything having to do with disabling PTD 100 based on user authentication, which disclosed there

[00:22:57] Speaker 02:
is a possible disablement based on the backend clearinghouse having learned from the financial processor 140 that the transaction is not valid or perhaps an account not authorized for use.

[00:23:10] Speaker 02:
That's at paragraph 55.

[00:23:13] Speaker 02:
It's not based on a failed biometric authentication because this happens after a successful unlocking of the PTD.

[00:23:19] Speaker 02:
And with the board found looking at paragraph 56,

[00:23:24] Speaker 02:
is that that disclosure is distinct from unlocking or locking the PTD in response to an attempt to verify the biometric information and does not suggest that not unlocking PTD 100 is equivalent to disabling PTD 100.

[00:23:39] Speaker 02:
That's at appendix 25.

[00:23:42] Speaker 02:
And the board also held that any reliance, this is in a footnote on that same page, footnote seven, any reliance on paragraph 56 of Moritzin to now assert an obviousness

[00:23:52] Speaker 02:
of the modification to the PPD would be a new invalidity theory improperly raised on reply.

[00:23:59] Speaker 02:
Opponents should not challenge this finding on appeal.

[00:24:01] Speaker 02:
And so any new argument of abuse of discretion raised in the reply brief, pages 12 and 13, should be rejected as waived.

[00:24:13] Speaker 02:
With respect to substitute claims 50.

[00:24:20] Speaker 04:
This is just Toronto.

[00:24:22] Speaker 04:
Can I just ask this question?

[00:24:23] Speaker 04:
I know we're about to talk about 101 at greater length.

[00:24:28] Speaker 04:
On the assumption, with which I know you disagree, but on the assumption that in the next case we were to affirm the determination of invalidity for 101 of all four of the exemplary claims, what, if anything, about this substitute claim 50 would be different?

[00:24:52] Speaker 02:
Well, an examination, first of all, well, I'll answer your question because that's a better idea.

[00:24:58] Speaker 02:
First of all, looking at appendix 4829 through 4831, there are a number of limitations that were added to both 45, let me step back again.

[00:25:14] Speaker 02:
Substitute claim 45 is a proposed substitute for claim 10.

[00:25:17] Speaker 02:
So there were limitations that were added to claim 10 of the 826, the issued claim.

[00:25:22] Speaker 02:
that posed that became substitute claim 45, substitute claim 50 depends on 45.

[00:25:31] Speaker 02:
So if you look at the underlying portions, there's a number of additional limitations.

[00:25:35] Speaker 02:
Now, it's bad enough.

[00:25:37] Speaker 02:
And so with respect to the next appeal, none of those limitations have been considered at all in the 2044 appeal.

[00:25:49] Speaker 04:
Well, a number of them are the biometric information.

[00:25:53] Speaker 04:
A few of them, there's one of the claims and the other, in the next case, has some encryption.

[00:25:59] Speaker 04:
I think maybe, and the one-time code is maybe a variant on the time-varying code.

[00:26:05] Speaker 04:
I guess the digital signature is in 50.

[00:26:08] Speaker 04:
I don't remember it as being in the others.

[00:26:15] Speaker 04:
So what about what's new or what's different here from those claims might produce a different result on the assumption that you disagree with about invalidity of all of the issued claims?

[00:26:31] Speaker 02:
So to the extent that one would pick and choose elements and say, well, if they're sort of disembodied from the claim as a whole, then it would certainly include, and I haven't done that analysis, but it would include the digital signature and the other aspects that are different from whatever is in any of the four exemplary claims in the 2044.

[00:26:56] Speaker 02:
But what this highlights is that

[00:27:02] Speaker 02:
None of these limitations were presented to the board.

[00:27:06] Speaker 02:
The only portion of the substitute claims that were presented to the board in connection with an argument that those claims were patented and eligible was the preamble of claims 36.

[00:27:18] Speaker 02:
And we feel strongly that something more than a skeletal presentation needs to be made to the board to preserve an argument for appeal.

[00:27:31] Speaker 02:
and that here, Apple had only provided the barest outline of a argument for Section 101 that wasn't sufficient to support a reversal of the board's conclusion that... This is Judge Stoll.

[00:27:47] Speaker 00:
This is Judge Stoll.

[00:27:48] Speaker 00:
So you're... Are you emphasizing your argument that there was no argument made for the invalidity

[00:27:57] Speaker 00:
claim 50 and that the board didn't actually find claim 50 ineligible?

[00:28:02] Speaker 00:
Is that what you're emphasizing?

[00:28:06] Speaker 02:
Yes, the board did not find claim patent, substitute claim 50 patent ineligible.

[00:28:11] Speaker 02:
In fact, it didn't find it in India that the substitute claims were patent ineligible.

[00:28:16] Speaker 02:
Based on an analysis of its own of the three independent substitute claims, they find, I'm sorry,

[00:28:24] Speaker 00:
I'm sorry.

[00:28:25] Speaker 00:
I messed up.

[00:28:26] Speaker 00:
I forgot.

[00:28:27] Speaker 00:
Please continue.

[00:28:28] Speaker 00:
Go ahead.

[00:28:29] Speaker 01:
Go ahead.

[00:28:33] Speaker 01:
I think expired, Mr. Menz.

[00:28:36] Speaker 02:
My time has expired.

[00:28:39] Speaker 01:
You go ahead and wrap up.

[00:28:40] Speaker 02:
Thank you.

[00:28:41] Speaker 02:
I was just going to complete that thought where the board had decided on its own without any guidance

[00:28:47] Speaker 02:
from Apple to analyze the patent eligibility of the substitute independent claims had identified a number of the limitations that in the appendix 37 and 38 that were in its mind allowed those claims to not be directed to an abstract idea and in fact were directed to an improvement in computer functionality, a topic which I'm sure will be covered

[00:29:17] Speaker 02:
at some length in the next appeal.

[00:29:20] Speaker 02:
Thank you.

[00:29:21] Speaker 01:
Thank you, counsel.

[00:29:23] Speaker 01:
Mr. Selwyn, you have three minutes.

[00:29:26] Speaker 03:
Thank you, Your Honor.

[00:29:27] Speaker 03:
Three points.

[00:29:28] Speaker 03:
First, on disabling.

[00:29:30] Speaker 03:
USR never disputed that Ritzen and Jacobson both show enabling the device based on the result of a successful validation, yet they dispute that the same reference that shows the device is disabled as a result of a failed validation.

[00:29:44] Speaker 03:
To state it another way, USR acknowledges that Ripton discloses locking and unlocking a device based on a result of a comparison, but that the locking and unlocking is different from disabling or enabling use.

[00:29:57] Speaker 03:
That, at best, defies common sense.

[00:29:59] Speaker 03:
If the devices are not enabled based on the result of the failed biometric comparison, then necessarily they remain disabled.

[00:30:07] Speaker 03:
And Jacobson discloses a system that determines either to generate an authentication code

[00:30:12] Speaker 03:
and thereby enable the device or not to generate an authentication code and thereby disable the device in response to a local authentication.

[00:30:23] Speaker 03:
That's what paragraph 59 of Jacobson says.

[00:30:26] Speaker 03:
And as Dr. Shoup explains in his declaration, Jacobson in that paragraph recognizes that access to the user authentication device 120 can be limited or denied based on the authentication of a user using a PIN passcode

[00:30:41] Speaker 03:
for biometric information.

[00:30:43] Speaker 03:
The second point on claim eight, Goldman discloses multiple templates for multiple users are stored.

[00:30:56] Speaker 03:
That disclosure teaches a first plurality of users and a second plurality of users under the plain meaning of the claim language.

[00:31:04] Speaker 03:
The only way the board in USR concludes that Goldman does not disclose

[00:31:10] Speaker 03:
the first plurality and the second plurality is by reading in limitations to claim eight that the claim does not support.

[00:31:18] Speaker 03:
Third issue, turning to substitute claim 50 and we'll be talking, I'm sure, in a minute in greater detail in the district court appeal about the specific claim limitations.

[00:31:31] Speaker 03:
But in short, substitute claim 50 just has a very long list

[00:31:36] Speaker 03:
of generic computer components, the same components that are included in the representative claims.

[00:31:42] Speaker 04:
For example, it's directed to... Just to be clear, by components you include techniques using familiar hardware.

[00:31:53] Speaker 04:
You're not just... When you say components, you don't just mean hardware, right?

[00:31:58] Speaker 04:
Correct.

[00:31:58] Speaker 04:
I include components and... It's a very slippery term.

[00:32:03] Speaker 04:
which has gotten a lot of cases into trouble.

[00:32:07] Speaker 04:
You mean both utterly familiar processes on hardware and familiar hardware?

[00:32:16] Speaker 03:
Correct.

[00:32:17] Speaker 03:
That is that the components are generic computer components, and the processes that are used on those components are utterly generic.

[00:32:27] Speaker 03:
And the specification with respect to claim 50

[00:32:31] Speaker 03:
emphasizes that all of those components are generic goes out of its way to emphasize that point.

[00:32:37] Speaker 03:
And finally, to answer your honest question, if this court affirms the district court's appeal, its ruling should also apply to substitute claim 50, as this court recently explained in the Bloom case, where a claim is, quote, substantially similar and directed to the same abstract idea as claims that have already been invalidated.

[00:32:56] Speaker 03:
It would defy reason to allow a substantial identical claim by claim 50 here to be the subject of further litigation.

[00:33:04] Speaker 03:
Thank you, your honor.

[00:33:05] Speaker 01:
Thank you, counsel.

[00:33:06] Speaker 01:
The matter will stand.