[00:00:01] Speaker 02:
All right, we shall proceed with the agenda of the arguments for this morning.

[00:00:06] Speaker 02:
The first argued case is number 20, 1695, CG Technology Development, LLC, against Van Duyl, Incorporated.

[00:00:19] Speaker 02:
Mr. Rommel, you have the choice whether to speak through your mask or to remove it for this back and forth.

[00:00:28] Speaker 00:
Thank you, Your Honor.

[00:00:30] Speaker 00:
May it please the court, my name is Jason Romerill and I represent Pellant Interactive.

[00:00:36] Speaker 00:
The district court here erred in determining the claim six of the 058 patent is invalid under section one under ALICE step one and step two.

[00:00:45] Speaker 00:
First, at ALICE step one, claim six is not directed to an abstract idea.

[00:00:50] Speaker 00:
Instead,

[00:00:51] Speaker 00:
The combination of elements, Acclaim6 focuses on a specific technical and beneficial advancement or improvement.

[00:00:59] Speaker 00:
It's a specific data structure that correlates jurisdictionally permissible gaming opportunities with a determined location to actually improve and modify the configuration of the mobile gaming device in a non-digital way.

[00:01:12] Speaker 01:
Is the data structure new?

[00:01:15] Speaker 01:
I thought lookup tables were ancient parts of computers.

[00:01:19] Speaker 01:
And the only thing that's new is what you're putting in the left-hand column and the right-hand column so that location California says you can do this game.

[00:01:29] Speaker 01:
Nevada said, well, you can do any game.

[00:01:32] Speaker 01:
Whatever.

[00:01:34] Speaker 00:
You're correct, Your Honor, that a lookup table by itself was

[00:01:39] Speaker 00:
disclosed in technical references in the art.

[00:01:42] Speaker 00:
But in considering the patentability of this claim, the patent trial in the billboard made specific factual findings that show that a lookup table in the context of claim six as a whole was indeed an inventive and a non-abstract idea, an improvement.

[00:02:00] Speaker 03:
Is it your argument that

[00:02:05] Speaker 03:
it's not an abstract idea or that the real reason you would satisfy step one is that it's directed to an improvement on the functionality with respect to analyzing what would otherwise maybe be an abstract idea.

[00:02:21] Speaker 00:
It's a specific technical improvement.

[00:02:24] Speaker 00:
And the board made specific findings on that front.

[00:02:29] Speaker 00:
In fact, the board concluded that the prior did not disclose the lookup table that correlates location information with jurisdictionally permitted gaming opportunities.

[00:02:38] Speaker 01:
You said just before, your first reference to the board was that the board found that this was not abstract.

[00:02:45] Speaker 00:
I may have misspoke, Your Honor.

[00:02:47] Speaker 01:
What the board found is that this particular lookup table in this context... That was just an IPR proceeding, so abstraction wouldn't be an issue, right?

[00:02:55] Speaker 00:
That's correct.

[00:02:57] Speaker 00:
But there were factual findings, I think, that go to both Alice Step 1 and Alice Step 2 here.

[00:03:03] Speaker 00:
And in fact, this court recognized in affirming the PTAB's decision that the PTAB reasonably identified a gap between the concept of a lookup table being well known and the beneficial application of that concept to the prior gaming system.

[00:03:18] Speaker 01:
And why do you think that bears on the 101 question when the gap

[00:03:24] Speaker 01:
if the gap itself is just about the abstract idea that is choosing what content to put into a off-the-shelf computer memory tool.

[00:03:37] Speaker 01:
Why?

[00:03:38] Speaker 01:
That, you know, we've said, obviously, you can have highly non-novel, highly non-obvious, but still abstract

[00:03:48] Speaker 01:
improvements, they don't count.

[00:03:50] Speaker 01:
The improvement has to be over on the non-abstract side.

[00:03:53] Speaker 01:
So why does the existence of a gap, which would matter and did matter for obviousness, answer the 101 question?

[00:04:01] Speaker 00:
Well, it shows that these elements taken apart and separately while they may exist in the prior art, or some of them may exist in the prior art, the claim combination is something more.

[00:04:11] Speaker 00:
It's directed to an actual improvement with a beneficial application.

[00:04:15] Speaker 01:
So if you had a little memory device, once upon a time there was an electronic Rolodex.

[00:04:23] Speaker 01:
If nobody had used that before, the combination would be?

[00:04:28] Speaker 01:
eligible for patent, just because this electronic memory lookup table, even though old, you're now putting names and addresses in, or you're putting in the rules of 51 jurisdictions about whether you need two-party consent for taping a, for recording a telephone call.

[00:04:52] Speaker 01:
And you're in California and you look up and you say, you don't need it.

[00:04:55] Speaker 01:
And in whatever other state you do need it.

[00:04:58] Speaker 01:
Each one of those is a combination that becomes eligible when the only difference is the content that you've put into the old device.

[00:05:08] Speaker 01:
I'll stop there.

[00:05:09] Speaker 00:
No.

[00:05:10] Speaker 00:
Judge Toronto, I take your hypothetical.

[00:05:12] Speaker 00:
I think that this situation is quite different because the specific data structure is used in a very specific way to actually modify and improve the mobile gaming device.

[00:05:22] Speaker 00:
It modifies and improves it in a way that overcomes a problem that was recognized in the industry.

[00:05:27] Speaker 00:
This problem that the gaming regulations vary by location and a system was needed that could efficiently deal with the number of people playing the game, the demands of the system in a scalable manner.

[00:05:44] Speaker 00:
And that's why this is different and goes to something a bit different.

[00:05:48] Speaker 03:
So we have said in the past that one of the best things you can do is look to our prior cases and see.

[00:05:55] Speaker 03:
I mean, it's really not the most intellectually useful way to do it.

[00:06:01] Speaker 03:
But we have said this is a helpful way, is to look at our prior cases.

[00:06:05] Speaker 03:
So we have some cases that say location information is an abstract idea and not patentable, like intellectual ventures.

[00:06:15] Speaker 03:
But then we have other cases, like

[00:06:17] Speaker 03:
DDR holdings, which are you closer to?

[00:06:21] Speaker 00:
We're closer to the DDR holdings.

[00:06:24] Speaker 00:
And in particular, we identify several cases like NFISH, SRI, and micro that we believe we're much closer to.

[00:06:31] Speaker 00:
For example, in NFISH, that case entailed a specific sort of improvement that allowed the device to function differently than the conventional system.

[00:06:42] Speaker 00:
And that's what's happening here.

[00:06:43] Speaker 00:
The specification details how functionality is enabled or disabled.

[00:06:48] Speaker 00:
using this specific data structure in a very unique way.

[00:06:53] Speaker 03:
Does it matter if the improvement to functionality is to hardware versus software?

[00:06:59] Speaker 00:
This court has found that that's not determinative.

[00:07:03] Speaker 00:
And here, it really is improving both.

[00:07:05] Speaker 00:
The software is improved because the configurations are loaded in an efficient way, in a scalable manner.

[00:07:11] Speaker 00:
But the claim's directed to when it focuses on an actual mobile device.

[00:07:15] Speaker 00:
The device itself is, in fact, improved.

[00:07:18] Speaker 00:
But if I could, even stepping away from the step one inquiry, there are two- Can I just ask you this?

[00:07:25] Speaker 01:
Yes.

[00:07:25] Speaker 01:
Do you agree that on the claims at issue here that the user of the handheld device

[00:07:33] Speaker 01:
Could put in the location information Himself or herself that is there's no requirement that the location information be gotten from GPS or some other Electronic source or not.

[00:07:46] Speaker 01:
I don't know that it matters, but I just want to know what your understanding is Your honor that the specification talks about using geolocation not the specification.

[00:07:54] Speaker 01:
I'm asking the claims itself.

[00:07:55] Speaker 00:
Yes

[00:07:57] Speaker 00:
It talks about determining the game configuration specifically.

[00:08:01] Speaker 00:
Now, I don't think the claim necessarily precludes some kind of user input in that determination expressly.

[00:08:10] Speaker 01:
But this is, I mean, the first step, determining a first location of a mobile gaming device.

[00:08:18] Speaker 01:
If I'm the one holding the iPhone or whatever it is, I can do that, right?

[00:08:26] Speaker 00:
A person could determine a location.

[00:08:28] Speaker 00:
That's correct, Your Honor.

[00:08:29] Speaker 00:
This claim is going to the actual method determining the first location and determining the game configuration associated with that.

[00:08:38] Speaker 00:
And then I think that in combination with claim six, the accessing the lookup table to determine that can get an ordered list of those locations, it's really directed and geared toward this occurring through software, through the computer.

[00:08:52] Speaker 03:
But once the location is determined,

[00:08:55] Speaker 03:
the information with respect to the laws of that location then dictate what can happen, correct?

[00:09:06] Speaker 00:
That's correct.

[00:09:07] Speaker 00:
And that's where the lookup table comes in, the specific data structure that's actually used to correlate that determined location with jurisdictionally permissible gaming opportunities.

[00:09:17] Speaker 02:
So the lookup table was in claim six.

[00:09:20] Speaker 02:
and Claim Six, the PTAB sustained Claim Six.

[00:09:25] Speaker 02:
Is that right?

[00:09:27] Speaker 02:
What is the significance of that action?

[00:09:30] Speaker 02:
Does it have any?

[00:09:31] Speaker 00:
It's quite significant, Your Honor.

[00:09:34] Speaker 00:
And this brings us directly to the step two inquiry, whether there's an inventive concept here.

[00:09:38] Speaker 00:
This Court has frequently recognized that the 101 step two inquiry and patentability under 102, 103 can sometimes overlap.

[00:09:50] Speaker 00:
And indeed, this Court has recognized that those

[00:09:54] Speaker 00:
those two inquiries can have meaning in one and another.

[00:09:58] Speaker 00:
And here, the PTAB made expressed findings that this particular lookup table used in this way was not in the priority.

[00:10:06] Speaker 00:
It rejected the notion that this would have been merely a design choice, that it would have been something that was an obvious choice in limited circumstances.

[00:10:14] Speaker 00:
And this court affirmed that finding and specifically, again, identified this gap between the concept of a lookup table being

[00:10:23] Speaker 00:
well known by itself, and the beneficial application here.

[00:10:28] Speaker 00:
And this is really where these factual findings go to the heart of the step two inquiry and should have precluded judgment here.

[00:10:37] Speaker 00:
They really highlight an existing genuine dispute of material fact.

[00:10:41] Speaker 00:
For interactive to prevail, interactive does not need to establish that definitively that this was an inventive concept.

[00:10:49] Speaker 01:
I think I'm not even close to the first person to recognize this.

[00:10:57] Speaker 01:
The label inventive concept is badly misleading, right?

[00:11:01] Speaker 01:
It doesn't mean inventive in the 102, 103 sense.

[00:11:05] Speaker 01:
It was used to describe something that

[00:11:08] Speaker 01:
crosses the line into the realm of non-abstract, non-natural law things.

[00:11:14] Speaker 01:
And much of your argument, I think, is playing on the fact that inventive in our normal 901 world means passes 102 and 103 muster.

[00:11:28] Speaker 01:
That's not the point of that label that was borrowed by Mayo from one of the earlier cases.

[00:11:37] Speaker 01:
So I don't think there's any dispute here that it may well be that you all were the first to say, let's use a computer device with the simplest possible, you know, way of looking something up.

[00:11:53] Speaker 01:
Two columns, left column for the search term, right column for what you want to get out of it.

[00:11:57] Speaker 01:
And it has, you know, maybe it's even only two rows, right?

[00:12:01] Speaker 01:
Nevada and New Jersey.

[00:12:02] Speaker 01:
You need to know which games are allowed.

[00:12:04] Speaker 01:
and you just put in Nevada, and you get these games are allowed.

[00:12:07] Speaker 01:
You put in New Jersey, you get these games allowed.

[00:12:09] Speaker 01:
And you may have been the first ones ever to put those things together.

[00:12:14] Speaker 01:
But the only thing that's new is the content you put into the lookup table.

[00:12:20] Speaker 01:
What words you put in for the search term and the thing that you're going to get out.

[00:12:25] Speaker 00:
I understand.

[00:12:27] Speaker 01:
That mattered for the board, for the IPR proceeding.

[00:12:31] Speaker 01:
Why does it matter here?

[00:12:32] Speaker 00:
Again, this court, and I think the Internet Patents Court case is a great example of this, where this court recognized that courts have found guidance by drawing on the rules of patentability in this context.

[00:12:45] Speaker 00:
And the factual findings that were made here by the board and affirmed by this court, that even though a lookup table by itself may have been known in the art, it's that beneficial application of it in this context.

[00:12:57] Speaker 00:
And Berkheimer recognizes

[00:12:59] Speaker 00:
that an inventive concept can exist even though the elements by themselves might have been known in the art.

[00:13:05] Speaker 03:
Berkhaber, we described the inventive concept issue as well-known and conventional, right?

[00:13:12] Speaker 03:
Which is different from obvious because it doesn't matter based on the prior art.

[00:13:17] Speaker 03:
It just matters what everybody's doing at the time, right?

[00:13:22] Speaker 00:
That's correct, Your Honor.

[00:13:24] Speaker 00:
It's well-understood, routine, or conventional.

[00:13:26] Speaker 00:
And I think the important point here is that it's not the lookup table alone.

[00:13:30] Speaker 00:
One must look at the claim in its full context.

[00:13:33] Speaker 00:
And it's a lookup table that's used to correlate these jurisdictionally permitted gaming opportunities with determined locations to actually modify and improve a mobile gaming device.

[00:13:43] Speaker 02:
One thing that I just want to be clear about, going back to claim six in the PTAB, you're not arguing that any estoppel of any sort flowed from that decision and this court's action?

[00:14:00] Speaker 00:
Your Honor, we haven't made that argument about that.

[00:14:03] Speaker 02:
I know you haven't.

[00:14:04] Speaker 02:
You don't intend to make that argument.

[00:14:08] Speaker 00:
Your honor this court very well could conclude that that that could be an option here given what?

[00:14:15] Speaker 00:
That Fandel had a full and fair opportunity to litigate whether or not this is Indeed this particular structure is known in the prior art But at the very least it underscores an ongoing dispute of material fact that should have precluded judgment here I See that I'm into my thank you

[00:14:47] Speaker 04:
Good morning.

[00:14:57] Speaker 04:
May it please the court.

[00:15:00] Speaker 04:
I believe that the appeal here has three unanswered questions.

[00:15:05] Speaker 04:
The first question is what?

[00:15:07] Speaker 04:
What is this specific technological solution that InterActive believes

[00:15:13] Speaker 04:
They're forwarding.

[00:15:14] Speaker 04:
Their briefing's mixed.

[00:15:16] Speaker 04:
Some of it relies on part of claim one.

[00:15:18] Speaker 04:
Some of it relies on part of claim six.

[00:15:21] Speaker 04:
So the question is what?

[00:15:22] Speaker 04:
What are we talking about?

[00:15:24] Speaker 04:
And it's important to understand exactly what that technological solution is.

[00:15:29] Speaker 04:
We know claim one is invalid.

[00:15:31] Speaker 04:
And so we have to really look to what's in claim six.

[00:15:34] Speaker 04:
We could obviously combine what's in six with what's in one, but they haven't clearly identified what in their briefing is a specific technological solution.

[00:15:45] Speaker 04:
Second, how?

[00:15:46] Speaker 04:
How is that solution improvement over existing technology?

[00:15:51] Speaker 04:
There's really nothing in their briefing to answer this question.

[00:15:55] Speaker 04:
And if we look exactly what they cited to you in the briefing,

[00:15:59] Speaker 04:
They cite to you a specification, and cites in that specification, that talks about broad disclosure of conventional, unimproved, common technology.

[00:16:11] Speaker 04:
For example, in their opening brief and other portions of their brief talk about APPX 40.

[00:16:18] Speaker 04:
It's the patent itself.

[00:16:20] Speaker 04:
And it's column 12, lines 15 through 33.

[00:16:23] Speaker 04:
This is where the specification talks about Claim 6, talks about how it functions.

[00:16:29] Speaker 04:
But the important part of that is if we look at lines 31 through 33, it says that it will be appreciated that the casino server may store rules for associating games with locations

[00:16:43] Speaker 04:
in any other fashion besides storing the rules in a lookup table.

[00:16:48] Speaker 04:
This is the whole point of the 05A patent.

[00:16:51] Speaker 04:
It goes on and on to describe all the alternate ways you can do this.

[00:16:56] Speaker 04:
They're not talking about an improvement.

[00:16:58] Speaker 04:
They're not saying this lookup table is better than this other technology.

[00:17:02] Speaker 04:
They're not saying this lookup table is different.

[00:17:05] Speaker 04:
They're saying you can use anything.

[00:17:08] Speaker 03:
What they're saying is the mobile device is better than the prior technology.

[00:17:13] Speaker 03:
Because we allow you not just to determine location, but once location is determined, to determine what all the gaming regulations are with respect to that location and to prohibit a player from playing in a

[00:17:30] Speaker 03:
in a jurisdiction where it's not authorized.

[00:17:33] Speaker 04:
Sure, absolutely.

[00:17:34] Speaker 04:
That's been their contention.

[00:17:36] Speaker 04:
But I guess my point is, is that lookup table, which they have just said an oral argument is their innovation, is one of a host of ways to do that.

[00:17:47] Speaker 04:
There's not one specific way that makes it new or different.

[00:17:50] Speaker 04:
And again, it has to be improvement, according to counsel's argument, over what the existing technology.

[00:17:56] Speaker 04:
It can't just be better than this solution versus this solution, which a specification never talks about.

[00:18:02] Speaker 04:
It talks about data structures broadly.

[00:18:05] Speaker 04:
And in fact, in the district court's opinion and relied on by council, it talks about column six, line seven through 10.

[00:18:15] Speaker 04:
A computer data structure may be used to keep a record of payout percentages or other game configurations in different locations, going to that exact concept.

[00:18:25] Speaker 04:
It goes on to say, for example, a lookup table.

[00:18:29] Speaker 04:
Again, this is not an improvement.

[00:18:30] Speaker 04:
This is an example of one of common known data structures at the time.

[00:18:35] Speaker 01:
Can I ask you this?

[00:18:36] Speaker 01:
Can you just clarify?

[00:18:38] Speaker 01:
Does something in claim one or claim six provide for prohibiting the holder of the device from using a game in a particular circumstance?

[00:18:51] Speaker 01:
And if so, where?

[00:18:52] Speaker 04:
It does, and the claim provides for using one game configuration, one location, and a different game configuration in a different location.

[00:19:02] Speaker 04:
I think that's the closest it gets to.

[00:19:05] Speaker 03:
So why isn't this like DDR as opposed to the cases that you rely upon?

[00:19:12] Speaker 04:
I think it's not like DDR because there's no improvement.

[00:19:15] Speaker 04:
There's nothing new here.

[00:19:16] Speaker 04:
And I think that we just heard about that.

[00:19:18] Speaker 03:
Well, in DDR, the improvement was that instead of

[00:19:22] Speaker 03:
you know, losing the customer, we redirect the customer.

[00:19:26] Speaker 03:
How is that different?

[00:19:28] Speaker 03:
I mean, it changes the functionality of the software.

[00:19:30] Speaker 03:
How does this not change the functionality of the software?

[00:19:33] Speaker 04:
I don't think it does change the functionality of the software.

[00:19:35] Speaker 04:
I think the software here, depending on which piece or puzzle piece you pick out of the specification, and specifically Claim6 uses that lookup table, they all work the same.

[00:19:46] Speaker 04:
There's no improvement.

[00:19:47] Speaker 04:
There's no change.

[00:19:48] Speaker 04:
That's the goal of the specification, the 058, right?

[00:19:51] Speaker 04:
I mean, because claim one broadly discloses basically using any data structure, right?

[00:19:56] Speaker 04:
To do this, that was what was found invalid.

[00:19:59] Speaker 04:
And specifically, we're limited here to the lookup table.

[00:20:02] Speaker 04:
But that lookup table doesn't show any advancement or any improvement.

[00:20:07] Speaker 04:
It's just a different puzzle piece that you can put in these claims to make them work.

[00:20:12] Speaker 03:
So you're saying there's no advancement or no improvement along the lines of DDR from being able to say that the gaming system won't work in some locations and will work in other locations?

[00:20:23] Speaker 04:
No, because that's just a simple game design.

[00:20:25] Speaker 04:
I mean, that's what casinos have been doing for years, right?

[00:20:27] Speaker 04:
Casinos say, you can play Blackjack in this location, you can play Kino in this location, and in this location, our lobby, you can't game.

[00:20:36] Speaker 03:
This is not a new concept.

[00:20:38] Speaker 03:
Well, this is a concept that has to do with the laws and regulations in a particular state or jurisdiction.

[00:20:45] Speaker 04:
It could, right.

[00:20:46] Speaker 04:
So based on a location, but the patent's broader than that, right?

[00:20:49] Speaker 04:
The patent's broader because it talks about moving customers around a casino floor.

[00:20:53] Speaker 04:
So yes, I agree.

[00:20:55] Speaker 01:
I'm sorry, the claims don't talk about laws at all, do they?

[00:20:59] Speaker 04:
They do not talk about laws, right.

[00:21:01] Speaker 04:
They just talk about restricting certain gaming opportunities.

[00:21:04] Speaker 04:
So this is nothing more than walking around a casino floor.

[00:21:07] Speaker 03:
But have mobile phones done that for years?

[00:21:10] Speaker 04:
I believe the prior art did show that there was mobile gaming devices that restrict based on location, and that was with respect to claim one.

[00:21:18] Speaker 04:
I believe it was the Carter reference.

[00:21:21] Speaker 04:
And so if we look, and I know another concept that's been being talked about is geolocation.

[00:21:26] Speaker 04:
Now again, this patent is super broad.

[00:21:28] Speaker 04:
It talks about geolocation, which is satellite is one of the options, but also triangulation.

[00:21:34] Speaker 04:
It also talks about GPS or satellite, things like that.

[00:21:38] Speaker 01:
So what is your view about whether there has to be an electronic determination of location or whether the holder of the device can just say, oh, I'm in Los Angeles.

[00:21:50] Speaker 04:
I think the claim's broad enough to say, I'm in Los Angeles.

[00:21:54] Speaker 04:
I don't think there's anything in there that says that the device itself has to.

[00:21:56] Speaker 03:
But has any factual finding been made to that effect?

[00:22:00] Speaker 04:
I don't think there needs to be, because I think that's all in claim one, which was declared invalid.

[00:22:04] Speaker 04:
So it's things that are not necessarily.

[00:22:07] Speaker 01:
But was that the subject of any claim construction?

[00:22:10] Speaker 04:
I'm sorry?

[00:22:11] Speaker 01:
Was that the subject of any claim construction?

[00:22:13] Speaker 04:
It was not.

[00:22:14] Speaker 04:
That was subject to the IPR proceeding regarding claim one.

[00:22:18] Speaker 01:
Was it construed there?

[00:22:20] Speaker 04:
It was, to my knowledge, it was not constructive.

[00:22:24] Speaker 04:
And so here, the same questions pervade step two.

[00:22:26] Speaker 04:
I know we've been talking a lot about step two, but these same questions of a lack of any sort of how this is unconventional or how this is generic.

[00:22:39] Speaker 04:
All those same questions remain.

[00:22:40] Speaker 04:
And one issue that was brought up in the briefing on this point was that the judge improperly used dictionary and encyclopedia evidence as part of his 101 order.

[00:22:51] Speaker 04:
And I would tell the court, this is exactly what

[00:22:53] Speaker 04:
You have asked district judges to do.

[00:22:55] Speaker 04:
If there's a claim construction dispute, you handle the dispute, you say it in your order, and then you resolve the 101 issue if you can.

[00:23:04] Speaker 03:
But what was the claim construction that the dictionaries were used for?

[00:23:07] Speaker 04:
It was for lookup tables.

[00:23:09] Speaker 03:
Okay, but just to define what a lookup table is.

[00:23:12] Speaker 04:
Correct.

[00:23:12] Speaker 03:
Yeah, so all the district... But a lookup table in a dictionary doesn't necessarily satisfy the question or answer the question of what the lookup table in light of this particular written description and specification is.

[00:23:27] Speaker 04:
That's great.

[00:23:28] Speaker 04:
And the judge did that as well.

[00:23:29] Speaker 04:
The judge looked at the claim to see if this particular look to uptable did anything inventive.

[00:23:34] Speaker 04:
And he found it didn't.

[00:23:35] Speaker 04:
He also looked at the specification, including all of the portions cited by interactive here.

[00:23:41] Speaker 04:
And he found those two did not disclose anything inventive.

[00:23:46] Speaker 04:
So I think that when you rub it all away, there really was no factual dispute.

[00:23:50] Speaker 03:
But when he said that it wasn't inventive, he simply used an obviousness analysis, correct?

[00:23:56] Speaker 03:
I'm sorry, say that again.

[00:23:57] Speaker 03:
He used an obviousness analysis.

[00:23:59] Speaker 04:
He didn't.

[00:23:59] Speaker 04:
He actually looked to see.

[00:24:01] Speaker 04:
He said, OK, I'm going to construe lookup table, and then I'm going to tell you in my order how I did that.

[00:24:08] Speaker 04:
That was based on dictionary definitions provided by both parties.

[00:24:11] Speaker 04:
He rendered a claim construction with no objection by interactive using a common dictionary definition.

[00:24:17] Speaker 04:
And he just noted that in his order in deciding this issue, which we believe is completely proper.

[00:24:24] Speaker 04:
And so the final question we think is that we need to ask here is where.

[00:24:29] Speaker 04:
Where are these facts that the district court failed to consider?

[00:24:33] Speaker 04:
I know one of the facts that was addressed on opening argument was the PTAB decision.

[00:24:37] Speaker 04:
Why was that not determinative here?

[00:24:40] Speaker 04:
Why did the court not consider that?

[00:24:42] Speaker 04:
And I think it's for a very good reason.

[00:24:44] Speaker 04:
and that the PTAB order here was obviously claims were invalidated and claim six arrived and they did it because both the PTAB and this court found FanDuel failed to meet its burden of proof on a motivation to combine.

[00:25:01] Speaker 04:
That's it.

[00:25:01] Speaker 04:
That's all that we fail to do.

[00:25:05] Speaker 04:
And it's obviously the law of the case at this point.

[00:25:08] Speaker 04:
But I don't believe that because the 101 and the 103 are distinct analysis, and yes, they can overlap.

[00:25:15] Speaker 04:
But in this situation, I don't believe they should overlap or do overlap because it doesn't get into the realm of the inventive concept, which is what we're talking about here.

[00:25:26] Speaker 04:
Also, there was a mention of expert reports in the briefing that the court failed to consider expert reports.

[00:25:33] Speaker 04:
These expert reports were submitted after briefing.

[00:25:38] Speaker 04:
And I would submit to the court, these expert reports highlight the problem.

[00:25:43] Speaker 04:
They still don't identify what, what is that solution.

[00:25:47] Speaker 04:
They still don't identify how it is an improvement.

[00:25:49] Speaker 04:
They simply say it is an improvement.

[00:25:52] Speaker 04:
And saying one thing.

[00:25:54] Speaker 03:
I'm still stuck with why you think this isn't controlled by DDR or SRI.

[00:26:02] Speaker 03:
I mean, here, the mobile devices that were previously used to determine location did nothing to restrict the user.

[00:26:16] Speaker 03:
with respect to their geographic location.

[00:26:20] Speaker 03:
The new devices based on this or this invention will allow that to happen.

[00:26:26] Speaker 03:
How is that different from DDI?

[00:26:28] Speaker 04:
It's very different because that part of it that you have just mentioned is in claim one.

[00:26:33] Speaker 04:
And claim one is invalid.

[00:26:36] Speaker 04:
and therefore is really not helpful to interactive here trying to establish what's new and different.

[00:26:43] Speaker 04:
Because claim one is where that determination happens.

[00:26:46] Speaker 04:
Claim one is where the association with the game configurations happens.

[00:26:51] Speaker 04:
All of that happens in claim one.

[00:26:53] Speaker 04:
All of that was already found in the prior art.

[00:26:56] Speaker 04:
And so when you rub it away, what you're really left with is claim six.

[00:27:01] Speaker 04:
It's a data structure.

[00:27:02] Speaker 04:
So you can say it's the mobile gaming device, but the mobile gaming device with a location determination and with the game configurations has already been established to be in the prior art.

[00:27:13] Speaker 02:
Oh, you're saying that claim one is prior art against claim six?

[00:27:18] Speaker 02:
That's not how it works.

[00:27:19] Speaker 04:
No, I'm saying that those components of claim one, what they are pointing to in claim one

[00:27:24] Speaker 04:
is already have been found in the prior art.

[00:27:27] Speaker 04:
It's not something that's new or inventive or different.

[00:27:31] Speaker 04:
It's already existing in the prior art.

[00:27:32] Speaker 03:
Well, in DDR holdings, all the computer functionality that was being used were generic, but it was just being used in a different way.

[00:27:40] Speaker 03:
Right.

[00:27:41] Speaker 04:
And here, already established in the record, is that this old functionality was already being used in this old way based on claim one.

[00:27:51] Speaker 04:
The only thing that the PTAB board didn't say was that we failed to show a motivation to combine to use a lookup table to do that, to associate that.

[00:28:02] Speaker 03:
The claim 6 relates to the lookup table doing that.

[00:28:04] Speaker 03:
Right.

[00:28:06] Speaker 03:
I'm confused.

[00:28:07] Speaker 03:
Okay.

[00:28:08] Speaker 04:
So I think what my point is, is that in order for it to be invented or different, there has to be something, like in DDR, something in the specifications, something, some leak that was taking place here.

[00:28:20] Speaker 04:
There's nothing here tying that lookup table to any sort of leak.

[00:28:24] Speaker 04:
It was a common lookup table, and if you look how it's used in the claim, it's being used in a common manner in the claim.

[00:28:31] Speaker 02:
It's the claim as a whole.

[00:28:33] Speaker 02:
It's the invention as a whole.

[00:28:35] Speaker 02:
Claim six as a whole.

[00:28:36] Speaker 02:
what the fate of claim one has nothing to do with it.

[00:28:40] Speaker 02:
It's the prior art as against claim six that's before us.

[00:28:46] Speaker 04:
Well, claim one depends from, I'm sorry, claim six depends from claim one.

[00:28:52] Speaker 02:
So obviously, the limitation... Well, all of the elements of claim one are included in claim six.

[00:28:58] Speaker 02:
Correct.

[00:28:58] Speaker 02:
So claim six is a long, complicated claim with one additional element.

[00:29:03] Speaker 02:
Correct, Your Honor.

[00:29:04] Speaker 02:
That's all that claim one

[00:29:06] Speaker 02:
has to do with this question of patentability of claim six, or whatever it is, or one and one.

[00:29:14] Speaker 04:
Yes, Your Honor.

[00:29:15] Speaker 04:
I think claim one highlights that the elements of claim one can't give you that inventive improvement.

[00:29:21] Speaker 02:
Claim one has nothing to do with it, other than providing the elements when you read a dependent claim.

[00:29:27] Speaker 02:
It's the prior art, which is not claim one.

[00:29:31] Speaker 04:
I believe it is the PTAB's decision that was affirmed by this court, or I guess I should say the PTAB's decision that was not appealed by interactive establishing that those elements are invalid.

[00:29:42] Speaker 02:
Were the PTAB allowed to claim six?

[00:29:44] Speaker 04:
They did, Your Honor.

[00:29:46] Speaker 02:
And we affirmed?

[00:29:47] Speaker 02:
You did.

[00:29:48] Speaker 02:
Why isn't that an estoppel?

[00:29:50] Speaker 04:
It's not estoppel here because we're talking about a 101 analysis, which this court has said over and over is distinct.

[00:29:57] Speaker 04:
from a 103 analysis, which is what the PTAB decided.

[00:30:03] Speaker 02:
Thank you, Your Honor.

[00:30:15] Speaker 00:
Thank you, Your Honor.

[00:30:20] Speaker 00:
My friend's arguments in the discussion of the how and what and where I think really go to the point that there is an unresolved factual dispute here that should have precluded judgment.

[00:30:33] Speaker 00:
The district court here did more than just rely on its own claim construction when it considered these technical references.

[00:30:40] Speaker 00:
It relied on the mere fact that a lookup table by itself

[00:30:44] Speaker 00:
was defined in a technical dictionary to hold that the entire claim 6 itself was directed to something that was well understood, routine or conventional.

[00:30:55] Speaker 00:
And that's not the appropriate analysis.

[00:30:57] Speaker 00:
That was legal error.

[00:30:59] Speaker 00:
And also in relying on something outside the extrinsic evidence, or something in the extrinsic evidence, while ignoring expert reports that had been prepared,

[00:31:10] Speaker 00:
and other material evidence that, in their active, could have marshaled it, given the opportunity, that's a violation of Rule 12D.

[00:31:17] Speaker 00:
Rule 12D is very clear on this point.

[00:31:19] Speaker 00:
If the district court's going to go outside the pleadings, it needs to consider everything.

[00:31:24] Speaker 00:
And it was OK for the district court to look outside the pleadings, because at this point, the case had been going on for four years.

[00:31:32] Speaker 00:
When the district court ruled on this motion,

[00:31:35] Speaker 00:
close of expert discovery was only a few days away and the district court committed error in putting blinders on to these underlying factual disputes in the record and focusing solely on lookup table and isolation.

[00:31:52] Speaker 00:
Our expert explained and in fact my friend talked about how

[00:31:59] Speaker 00:
disagrees with our assertion that Claim Six is directed to a specific technical improvement.

[00:32:06] Speaker 01:
Can I ask you about your understanding of the breadth or narrowness of, let's just call it Claim One, understanding that what I mean by that is all of the elements that then become part of Claim Six when you add the new Claim Six elements.

[00:32:29] Speaker 01:
What is your understanding about whether those claim one elements cover a device that maybe it's not even connected to the internet.

[00:32:44] Speaker 01:
So it just has in it a memory store of a bunch of different games and a correlation of location to the games.

[00:32:59] Speaker 01:
Could, does the claim exclude a device like that in which the user can call up any of those games just by punching in the location?

[00:33:17] Speaker 01:
Or is there something that actually forbids the user to play certain games in certain locations?

[00:33:28] Speaker 00:
Your Honor, this goes to the configuration elements of claim one.

[00:33:33] Speaker 00:
Different configurations are loaded that could preclude certain types of gaming.

[00:33:40] Speaker 00:
And there's also an element in claim one that talks about instructing the display screen to display the outcome under.

[00:33:46] Speaker 01:
Right, but could all this be in a device that is, let's say, off the grid?

[00:33:56] Speaker 00:
If we're looking at claim one in particular, I'm not aware of a specific limitation in claim one that requires going outside of the device to determine the... So there are, just to simplify, there are two game configurations in the memory.

[00:34:13] Speaker 01:
One of them is lawful in New Jersey.

[00:34:15] Speaker 01:
One of them is lawful in California.

[00:34:18] Speaker 01:
And there's a little table that correlates the word

[00:34:22] Speaker 01:
New Jersey, the phrase New Jersey and the phrase California, one with each game.

[00:34:27] Speaker 01:
Does claim one cover an advice in which when I'm holding it, I can type in New Jersey and get the game or I can type in California and get that game?

[00:34:42] Speaker 00:
Looking at from what I'm aware, looking at the claim language itself, I'm not aware of a specific limitation

[00:34:47] Speaker 00:
that would prevent that.

[00:34:49] Speaker 00:
But again, that issue has not been, it wasn't addressed at claim construction.

[00:34:53] Speaker 00:
To the extent that that's something that needs to be determined, it shows that there's an ongoing dispute.

[00:35:01] Speaker 01:
But did you argue that for a claim coverage here that would

[00:35:07] Speaker 01:
The term that I think we've been talking about would restrict the ability of the user using that device to play certain games in certain locations.

[00:35:22] Speaker 01:
When the user happens to be in certain locations.

[00:35:26] Speaker 00:
It talks about loading different game configurations based on the determined location.

[00:35:31] Speaker 00:
And one of the parameters that could go into the game configuration is permitting or disallow based on location.

[00:35:37] Speaker 01:
So in one of our kind of location cases,

[00:35:41] Speaker 01:
I think maybe it's one of the, I forget which one, direct TV or something, says it's quite old for, say, a newspaper to put in different inserts depending on what neighborhood you're in.

[00:35:58] Speaker 01:
And so you live in one neighborhood, you can't get the inserts from the newspaper because they're not putting those in.

[00:36:11] Speaker 01:
And the court said, old abstract idea that's actually, and it's abstract because it's about choosing what information to give.

[00:36:20] Speaker 01:
Why is this different from that?

[00:36:22] Speaker 00:
I think it's very different, Your Honor, because this is using a specific data structure.

[00:36:28] Speaker 01:
I think we need to... But now you just shifted into the new part of claim six, the lookup table.

[00:36:35] Speaker 01:
I want you to forget about that, because I'm just going to assume the lookup tables are ancient.

[00:36:40] Speaker 01:
So now we're just talking about all the stuff that's found in the elements of claim one as imported into claim six.

[00:36:48] Speaker 01:
What, even if that is new, never been

[00:36:52] Speaker 01:
done before, why isn't it like the DirecTV and that kind of case that says, even if it's new and not obvious, it's abstract.

[00:37:04] Speaker 00:
Your Honor, I think it's still not abstract, because in our situation, even just limiting, taking your hypothetical and limiting this to claim one, it's using that determined location as a specific input to actually modify the game configuration in a way that proves the mobile device.

[00:37:19] Speaker 00:
And in fact, the Nevada District Court, before this case was transferred, considered claim 19, which is almost identical to claim one,

[00:37:26] Speaker 00:
and found that it was not directed to an abstract idea and we would for those same reasons you claim one would not be but but again claim six is claim one plus more right it's a specific data structure and specific ancient data structure and a data structure is by definition you need to put in search terms and get something out that's what it's designed for it's not changing the structure it's just changing

[00:37:54] Speaker 01:
what content you put in on the left column and the right column.

[00:37:58] Speaker 00:
But as this court held in affirming the PTAB, the PTAB reasonably found that there was a gap between the lookup table being a well-known structure and the beneficial application here for this specific purpose to improve the mobile gaming device.

[00:38:11] Speaker 00:
And again to my friend talked about This the expert testimony we have on this record the very fact that Fandel disagrees with the significance of that expert testimony and its role here Merely underscores that there is in fact a material dispute of fact that should have precluded judgment here.

[00:38:30] Speaker 02:
Thank you Thank you, thanks to both counsel the case is taken under submission

[00:39:16] Speaker 02:
Let's go.