[00:00:00] Speaker 04:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:07] Speaker 04:
God save the United States and this honorable court.

[00:00:12] Speaker 02:
Good morning, ladies and gentlemen.

[00:00:14] Speaker 02:
We have five cases on the calendar this morning.

[00:00:18] Speaker 02:
Three are not being argued and are submitted in the briefs.

[00:00:22] Speaker 02:
Two are being argued.

[00:00:24] Speaker 02:
And on this day, when we have snow flurries in Washington,

[00:00:28] Speaker 02:
Two cases being argued are Windy City and Rain Computing.

[00:00:32] Speaker 02:
All coincidental, of course.

[00:00:35] Speaker 02:
In any event, our first case is Windy City Innovations versus Facebook, 2020, 1153.

[00:00:43] Speaker 02:
Mr. McCarty, please proceed.

[00:00:48] Speaker 00:
Good morning and thank you.

[00:00:49] Speaker 00:
This is Warren McCarty on behalf of the appellant, Windy City.

[00:00:53] Speaker 00:
May it please the court.

[00:00:55] Speaker 00:
The patent claims at issue in this case claims subject matter that is patent eligible.

[00:01:00] Speaker 00:
Professor Daniel Marks, the inventor, solved a uniquely technical problem with a technical solution in 1996.

[00:01:07] Speaker 00:
The problem explained in the specification is as follows.

[00:01:12] Speaker 00:
Real-time messaging was not yet developed for the open internet because the internet, to that point, was structured for one-way message delivery like email.

[00:01:24] Speaker 00:
The solution was to develop client and server software capable of running inside of a web browser to open up access to real-time messaging outside of the walls of a particular internet service provider like America.

[00:01:39] Speaker 02:
Mr. McCarty, this sounds like a 103 argument.

[00:01:43] Speaker 02:
The claims, which are closed as an apparatus claim, simply recite the idea, abstract idea of communicating a message

[00:01:53] Speaker 02:
from a sender to a recipient via a computer network where the recipient obtains the means to display the message.

[00:02:00] Speaker 02:
Why wasn't the district court correct?

[00:02:05] Speaker 00:
Thank you, Your Honor.

[00:02:06] Speaker 00:
The district court offered that as the allegedly abstract idea, communicating a message from the sender to a recipient via computer network and the recipient obtaining the means to display the message.

[00:02:19] Speaker 00:
This oversimplifies

[00:02:20] Speaker 00:
Claim 19 of the 245 patent in a number of ways.

[00:02:24] Speaker 00:
The first is this abstraction entirely excises from the claim, the controller computer, which establishes a communicative connection that's at line 11 of the claim and connects to the participator computer's responsive to login.

[00:02:41] Speaker 00:
Figure four, the algorithm discloses in figure four the patent, explains exactly how to create this connection.

[00:02:48] Speaker 00:
by running a controller loop on the controller computer and allowing the participator computers to connect in real time.

[00:02:56] Speaker 02:
In other words, you're putting multiple computers in.

[00:03:01] Speaker 02:
And why does that change the fact that information is being passed and that's abstract?

[00:03:09] Speaker 00:
That changes the entire complexity of the claim because up until that point on the open internet,

[00:03:17] Speaker 00:
it was structured for one-way communication analogous to email where a user would send a message to a server and store it, where another user could log in and download that message by introducing the controller computer to arbitrary messages and communicatively connect participator computers in real time.

[00:03:35] Speaker 00:
This unlocked the ability for participator computers to send and receive messages in real time.

[00:03:41] Speaker 00:
This abstract idea allegedly brought by the district court is also

[00:03:47] Speaker 00:
Entirely excising from the claim, the inventive aspect of multiplexing and demultiplexing media.

[00:03:53] Speaker 00:
This is the manner in which the 245 patent overcomes the challenges of the prior art by... But counsel, the problem is the claim doesn't cover multiplexing, doesn't mention it at all.

[00:04:07] Speaker 00:
That's correct.

[00:04:08] Speaker 00:
The claim does not use the word multiplexing, but in the recent Uniloc case in 2020,

[00:04:14] Speaker 00:
This court said that the claim doesn't need to say this is the benefit of the invention in the claim.

[00:04:20] Speaker 03:
That's not the benefit.

[00:04:21] Speaker 03:
Multiplexing is the method of achieving the real-time transfer.

[00:04:27] Speaker 00:
So the way in which the Claim 19 does claim multiplexing is as follows.

[00:04:32] Speaker 00:
In line 32 and 33 of Claim 19 in column 23, the claim is describing or reciting the communication which originates from the first participator computer

[00:04:44] Speaker 00:
This communication, as defined in Claim 20, includes pre-stored data.

[00:04:50] Speaker 00:
At line 16, the first participator computer is programmed to send a private message to the controller, which includes a pointer in it, which is separate from the pre-stored data.

[00:05:01] Speaker 00:
In this way, this is exactly what's described in Figure 2 and supported in Figure 4, the algorithm in Figure 4, as separating the data

[00:05:10] Speaker 00:
itself, the content, the graphic, the sound file, what have you, from the message, the private message, by using a pointer.

[00:05:18] Speaker 00:
And this is something that unlocked the ability to send and receive information in real time.

[00:05:24] Speaker 00:
So the word multiplexing, indeed, is not in the claim.

[00:05:27] Speaker 00:
It's in none of the claims.

[00:05:28] Speaker 00:
Instead, what is taught or recited in the claims is the way in which the media is separated from the message with the pointer as a way to communicate in real time.

[00:05:38] Speaker 00:
And that's exactly what's disclosed and taught

[00:05:40] Speaker 00:
and recited in claim 19 and supported in the specification.

[00:05:47] Speaker 00:
The court's allegedly abstract idea of communicating a message from one to another also entirely removes or replaces the claims internet network with the generic concept of a computer network.

[00:06:00] Speaker 00:
The court introduced the word computer network.

[00:06:03] Speaker 00:
This is something that specifically is distinguished as the prior art in the patent specification.

[00:06:10] Speaker 00:
So this abstract idea is oversimplified and it excises most of the claim limitations from the claim itself.

[00:06:20] Speaker 00:
Another issue with the district court's opinion is it disregarded the specifications teaching in concluding that the claims were abstract.

[00:06:28] Speaker 00:
The court said specification cannot stand in for the details not stated in the claim itself.

[00:06:34] Speaker 00:
While the detailed specification does not make an abstract claim eligible,

[00:06:38] Speaker 00:
it must inform the step one inquiry.

[00:06:40] Speaker 00:
That's ENFISH.

[00:06:42] Speaker 00:
Again, that's the Unilot case from 2020.

[00:06:45] Speaker 00:
But at every turn, the district court sort of discredited the specifications teachings in a way that created an impossibly high bar for any patent to survive alice scrutiny.

[00:06:56] Speaker 00:
A prime example is at page 22 of the district court's order, where it concluded that unlike the specification, claim 19 does not state any multiplexing features.

[00:07:06] Speaker 00:
This, I think, appears to blend

[00:07:08] Speaker 00:
some version of section 112 with the 101 inquiry.

[00:07:12] Speaker 00:
The multiplexing described in the specification, figure two for example, is exactly that which is claimed in claim 19 with respect to the separation of the media, the sound file or the graphic file from the message in delivering a pointer in a private message that is distinct from the pre-stored media itself.

[00:07:31] Speaker 00:
Again, that's supported in figures two and figures four.

[00:07:39] Speaker 02:
Council, do you want to address the cross appeal with jumping ahead of things?

[00:07:44] Speaker 02:
But this gives you an opportunity to address the cross appeal.

[00:07:53] Speaker 00:
I'm sorry, I think I missed the question.

[00:08:03] Speaker 02:
As a matter of fact, I'm confusing

[00:08:09] Speaker 02:
through cases, and so I withdraw the question.

[00:08:12] Speaker 00:
OK.

[00:08:14] Speaker 00:
Thank you, Your Honor.

[00:08:15] Speaker 00:
I want to switch gears just a little bit in my time address one additional issue, which is the question at step two.

[00:08:26] Speaker 00:
One issue that I think this case illustrates is whether or not the inquiries at step two should or should not be distinct between 101 and 102 and 103.

[00:08:39] Speaker 00:
They either need to be distinct or not.

[00:08:42] Speaker 00:
In this case, the district court kind of did the worst of all worlds, which is treated 102 and 103 analysis as relevant to step two, but only accepted evidence from the defendant on 102 and 103 and did not accept evidence from the plaintiff.

[00:08:58] Speaker 03:
Which evidence are you talking about?

[00:09:01] Speaker 03:
When did you attempt to introduce evidence that the district court prevented you from introducing?

[00:09:07] Speaker 00:
So Facebook's experts submitted an expert report addressing 102 and 103.

[00:09:16] Speaker 00:
In response, Winni City's expert rebutted those 102 and 103 opinions.

[00:09:22] Speaker 00:
Those were submitted to the district court at the summary judgment stage.

[00:09:26] Speaker 00:
In its opinion, the district court, as part of its step two analysis, cited Facebook's experts' opinions

[00:09:35] Speaker 03:
on 102 and 103 as supportive of its Step 2 decision, but concluded that... Just to help me make sure I understand the facts, did Facebook's expert also give a Section 101 opinion?

[00:09:49] Speaker 00:
Yes.

[00:09:49] Speaker 00:
Facebook's expert also submitted three pages of a 101 opinion, which we contend is improper under the Atrix case and under... Did you object to it at the lower tribunal?

[00:10:05] Speaker 00:
We did, and the court overruled our objection.

[00:10:07] Speaker 03:
And so, but you began this line of inquiry by suggesting that the court considered Facebook's evidence but refused to consider your evidence.

[00:10:19] Speaker 03:
What evidence did you attempt to introduce precisely and where can I see that?

[00:10:28] Speaker 00:
Okay, so at page 20 at note 12 of the district court's opinion,

[00:10:34] Speaker 00:
The court relies on, this is in the step two analysis, paragraphs 163 through 182 of Facebook's Experts Invalidity Report.

[00:10:43] Speaker 00:
This is not section 101 opinion.

[00:10:46] Speaker 01:
This is obvious.

[00:10:47] Speaker 01:
The question was, what did you try to introduce under 101?

[00:10:53] Speaker 01:
My recollection is that you said you didn't have anything to introduce on 101.

[00:10:59] Speaker 00:
We did not submit specific expert testimony in rebuttal to the three pages of 101 expert testimony.

[00:11:08] Speaker 00:
What we did submit was the evidence and the specification, testimony from the inventors, and the prosecution history, including the Notice of Allowance, which allowed the Claim 19 specifically for the reasons that it was sending real-time communications,

[00:11:25] Speaker 00:
and doing the separation of pre-stored data with pointers.

[00:11:31] Speaker 00:
So we did submit evidence.

[00:11:33] Speaker 00:
As it relates to the specific 101 opinion that Facebook's experts submitted, the three pages, we believe and objected to that as a conclusory.

[00:11:43] Speaker 00:
It's essentially a number of paragraphs that go through each claim element in isolation.

[00:11:48] Speaker 00:
and say, well, this is well-known or this was generic.

[00:11:51] Speaker 01:
You were arguing that you were prevented from introducing evidence.

[00:11:56] Speaker 01:
I just don't see that.

[00:11:58] Speaker 00:
Sorry, if I move.

[00:12:00] Speaker 01:
You told the district court that you didn't have anything to submit.

[00:12:05] Speaker 00:
So a couple responses to that.

[00:12:07] Speaker 00:
We weren't refused or not allowed to submit evidence.

[00:12:13] Speaker 00:
What happened was two things.

[00:12:16] Speaker 00:
First is.

[00:12:18] Speaker 00:
we submitted an expert report in response to the 102 and 103 opinions.

[00:12:24] Speaker 00:
The court considered Facebook's 102 and 103 opinions as relevant to step two and said that our 102 and 103 opinions were not relevant to step two and said that we did not have evidence of any inventiveness.

[00:12:44] Speaker 00:
So there was a sort of a discord between the court

[00:12:48] Speaker 00:
allowing 102 and 103 evidence from Facebook's standpoint, but not considering our 102 and 103 evidence from our expert.

[00:12:58] Speaker 00:
Now, as it relates to the 101 opinion, the three pages from Facebook's expert, it's true that Dr. Jones, Winnie Citty's expert, did not rebut that.

[00:13:08] Speaker 00:
We did provide evidence.

[00:13:09] Speaker 03:
Well, Counsel, one of the problems is you keep saying we provided evidence, we provided evidence, we provided evidence.

[00:13:14] Speaker 03:
But if I remember when the documents that you prepared were submitted to the district court, you left entirely blank things related to number 30 and 31.

[00:13:28] Speaker 03:
I think this is on page 9793 of the appendix.

[00:13:32] Speaker 03:
And you left them completely blank indicating that you do not disagree with the factual assertions.

[00:13:40] Speaker 03:
And those were the factual assertions that

[00:13:42] Speaker 03:
that went right to the heart of these fact questions on step two.

[00:13:46] Speaker 03:
You neither objected to them, disagreed with them, nor listed any evidence.

[00:13:54] Speaker 03:
And then the bigger problem is this was brought to your attention by the other side in its briefing where all of that information emboldened in their filing with the lower court, and you still didn't seek to correct the evidence.

[00:14:08] Speaker 03:
And then you got to the hearing.

[00:14:10] Speaker 03:
that was pointed out again, again, that you didn't submit any evidence or even reject those assertions.

[00:14:19] Speaker 03:
And that was when for the first time somebody representing Windy City said, well, that must have been a typo.

[00:14:25] Speaker 03:
But even then, there was no request to submit evidence.

[00:14:30] Speaker 03:
The district court didn't issue its opinion for five months thereafter.

[00:14:34] Speaker 03:
At no point was there a request to submit evidence.

[00:14:38] Speaker 03:
I mean, I guess I'm sort of thinking that you're demanding the district court be held to a ridiculously high standard, which is the district court met that you had evidence in the record that you wanted it to consider, and it should have understood despite the fact that you did not contest those fact findings that you nonetheless did.

[00:15:01] Speaker 03:
And that just doesn't feel to me like a standard I can hold a district court to on appeal.

[00:15:06] Speaker 03:
So why don't you tell me why that's not correct?

[00:15:08] Speaker 00:
So the two issues you've raised were fact 30 was undisputed.

[00:15:15] Speaker 00:
I think this got twisted a little bit.

[00:15:20] Speaker 00:
There was no actual listing of undisputed at fact 30, but there is no dispute that fact 30 was agreed to.

[00:15:29] Speaker 00:
The fact 30 that's at issue is the hardware in the re-description was routine and conventional.

[00:15:35] Speaker 00:
The patent actually makes clear that that's absolutely true.

[00:15:42] Speaker 00:
The invention is a software invention under cases like Uniloc and NSISH.

[00:15:47] Speaker 00:
Those make clear that software improvements are not defined by particular physical features.

[00:15:52] Speaker 00:
And so, what happened with SAC30 is that... I'll reserve my time.

[00:15:59] Speaker 02:
Well, you can finish your sentence to your thoughts.

[00:16:02] Speaker 00:
Yes, so fact 30 is an interesting one because it's not disputed, but we think it's inconsequential.

[00:16:13] Speaker 00:
And so the fact that we did not dispute it became sort of a hot issue at the district court.

[00:16:20] Speaker 03:
So you also didn't dispute fact 31, which is the fact that your invalidity expert didn't offer any opinions relevant to the 101 inquiry.

[00:16:30] Speaker 03:
And you didn't dispute that.

[00:16:32] Speaker 03:
So now your complaint to us is the district court should have considered your expert's opinions on 102 and 103 in the context of 101, but fact 31 was that your expert didn't actually provide any opinions relevant to the 101 inquiry.

[00:16:48] Speaker 03:
And you didn't dispute that.

[00:16:49] Speaker 03:
So how, when you take your expert off the table yourself, why is the district court erroneous for then not considering your expert?

[00:17:00] Speaker 00:
Fact 31 is specific to invalidity under 35 USC 101, and Dr. Jones, Windy City's expert, did not have a section in his report responding to the three pages from Facebook's expert specific to 101.

[00:17:15] Speaker 00:
One of the reasons why he did not do that is the prior art that Facebook's expert was listing in his 101 section, those three pages, was the prior art that the Patent Trial and Appeal Board had considered

[00:17:30] Speaker 00:
in the Facebook's IPR and determined did not render obvious the Claim 19 of the 245 patent.

[00:17:39] Speaker 02:
Council, you wanted to reserve some time, but it's all consumed.

[00:17:44] Speaker 02:
We'll give you two minutes for a bottle after we hear from Ms.

[00:17:47] Speaker 02:
Keefe.

[00:17:53] Speaker 04:
Thank you, Your Honor.

[00:17:55] Speaker 04:
Heidi Keefe on behalf of At the Leave Facebook.

[00:17:58] Speaker 04:
Your Honors have hit directly on, I think, what are the biggest problems with the arguments put forward by Windy City.

[00:18:08] Speaker 04:
They first try to argue that the claim is somehow not abstract because of elements that aren't within the claim itself.

[00:18:17] Speaker 04:
What we see in both the blue and the gray brief is that they point to the non-abstraction as being all related to the concept

[00:18:28] Speaker 04:
of the single channel and the out-of-band communications, and that's in the blue brief at three and the gray brief at two.

[00:18:36] Speaker 04:
We hear today that it's actually multiplexing, which itself is also not in the claim itself.

[00:18:43] Speaker 04:
Instead, in fact, with respect to the out-of-band communication that they claim takes it out of the realm of the abstraction, the out-of-band communication is separately claimed in Claim 30.

[00:18:54] Speaker 04:
a dependent claim that is not at issue in this case was never asserted.

[00:18:59] Speaker 04:
In fact, this puts this case directly on all fours with the Berkheimer decision, which finds that even if you may have a dependent claim that may give more detail, that may take it out of the realm of the abstract, but that leaves the independent claim clearly in the abstraction.

[00:19:16] Speaker 04:
And as Judge Lurie pointed out, the abstraction here is correct.

[00:19:20] Speaker 04:
It's simply the concept of having messages sent

[00:19:23] Speaker 04:
between two people and then figuring out whether or not you need something in order to display that message.

[00:19:30] Speaker 04:
And so, respectfully, the argument that this is not abstract does not hold water and, in fact, has to relate to things like figure two, figure four, and other non-claimed elements.

[00:19:42] Speaker 04:
So that doesn't change anything.

[00:19:43] Speaker 04:
And the district court properly appreciated that down below.

[00:19:47] Speaker 03:
Council, this is such more...

[00:19:50] Speaker 03:
Opposing counsel is pointing to Figure 2 and Figure 4 and the algorithms they're in, but the claim terms are not themselves 112.6, right?

[00:19:58] Speaker 03:
So it's not, this isn't a situation where we look to the spec and the structure in the spec is imported into the claim, isn't that right?

[00:20:06] Speaker 04:
That's exactly correct, Your Honor, and that's why ENFISH doesn't apply here at all, because in ENFISH, as Your Honor knows, there was a Means Plus Function claim, which did require you to look to the specification to draw in those features.

[00:20:17] Speaker 03:
So these real-time communications could be achieved through multiplexing or any other mechanism.

[00:20:25] Speaker 03:
We don't know, and the claim broadly covers all such mechanisms.

[00:20:28] Speaker 03:
So even though multiplexing is one way in which it could be achieved, disclosed in the spec, that isn't

[00:20:34] Speaker 03:
imported into the claim.

[00:20:36] Speaker 03:
Is that your argument?

[00:20:37] Speaker 04:
That is absolutely our argument, Your Honor.

[00:20:38] Speaker 04:
And in fact, the specification clearly indicates that real-time communication was actually common at the time.

[00:20:45] Speaker 04:
It actually cites to AOL with its instant messenger chat and indicates that that was something that did exist at the time.

[00:20:52] Speaker 04:
And so that, again, agrees with Your Honor.

[00:20:55] Speaker 04:
The next point that was raised by Windy City had all to do with whether or not their

[00:21:01] Speaker 04:
evidence, and I apologize, I'm using air quotes around the word evidence, was considered by the court.

[00:21:07] Speaker 04:
And the court very carefully indicated that there was no admissible evidence that had actually been presented.

[00:21:16] Speaker 04:
But despite that, the court, and I quote on Appendix 20, this is page 18 of the order, nevertheless considered whether counsel's arguments warrant denial of the motion.

[00:21:28] Speaker 04:
And the arguments that had happened during the oral argument all revolved around whether or not the court should be considering all of their 102 and 103 invalidity positions.

[00:21:41] Speaker 04:
And the court said very clearly, and again, this is at appendix 20, page 18, that there was a conflation here of the notions of novelty and eligibility that did not change this case.

[00:21:56] Speaker 04:
And that's at line 23.

[00:21:57] Speaker 04:
Windy City has confused novelty with inventiveness.

[00:22:00] Speaker 04:
And then the court cited to the Solutran and Synopsis cases indicating that that's actually not the appropriate test.

[00:22:08] Speaker 03:
And the last thing I'd point out, Your Honor... Counsel, Counsel, the one question I have about this is in the second factor, one of the things we're supposed to look to is the conventionality or routine-ness of particular claim elements, both individually and as an ordered combination.

[00:22:27] Speaker 03:
And I mean, if there were statements by one of the experts that, even though made in the context of Section 102, made it clear that one particular element was, for example, completely novel and existed in no other prior art, don't you think that that is something that could be or should be considered in the context of the 101 analysis under Step 2?

[00:22:55] Speaker 04:
Again, theoretically, Your Honor, that is true.

[00:22:57] Speaker 04:
And in fact, that's exactly what Dr. Storer did in his 101 analysis, which is actually in the record and cited by both the judge and by Facebook during its arguments.

[00:23:09] Speaker 04:
And he actually specifically pointed out that these are the claim elements, both individually and in combination, were in fact routine and conventional.

[00:23:19] Speaker 04:
And he even cites to the notion of real time being routine and conventional.

[00:23:24] Speaker 04:
And so what we, and that's in Storrs expert report at appendix 7856 through 57, paragraph 223.

[00:23:33] Speaker 04:
When Windy City argues that it submitted its expert report, it didn't, it never cited even one thing from its expert report.

[00:23:43] Speaker 04:
It simply lodged those expert reports with the court.

[00:23:45] Speaker 04:
You would, the court would have to scour every single piece of that expert report, not knowing anything about what it wanted it to say or do.

[00:23:53] Speaker 04:
And that simply was never put before the court.

[00:23:56] Speaker 04:
There was absolutely nothing.

[00:23:57] Speaker 04:
So if your honor is hypothetical, if there were a piece of evidence that was properly before the court where an expert said, but I find this particular element not to be routine and conventional, even if it's in a 102 or 103 report, I agree that that might be relevant.

[00:24:14] Speaker 04:
But here, there is absolutely no such thing in the record.

[00:24:17] Speaker 04:
And the court properly acknowledged that.

[00:24:19] Speaker 04:
And even despite acknowledging that, said that it would consider the arguments

[00:24:24] Speaker 04:
and found them to be lacking.

[00:24:26] Speaker 04:
And so the court did its job.

[00:24:28] Speaker 04:
It went beyond its job to even considering the arguments that were presented and found that in this particular case, they did not change the decision.

[00:24:36] Speaker 03:
What about the notice of allowance?

[00:24:38] Speaker 03:
Did they explicitly reference that either in their opposition to the summary judgment or in the factual statements?

[00:24:46] Speaker 03:
Did they reference that anywhere?

[00:24:48] Speaker 04:
They did reference it in their argument.

[00:24:50] Speaker 04:
They referenced it as something that they said should be taken into consideration, but didn't point to anything specific within that that would change the analysis.

[00:25:00] Speaker 04:
And I know that, Your Honor, that there's nothing.

[00:25:03] Speaker 03:
Ms.

[00:25:03] Speaker 03:
Keith, notice allowance is a paragraph long.

[00:25:05] Speaker 03:
So, I mean, I'm not sure the district court would have really been, you know, out to sea with no paddles when they pointed to it, wondering what they meant.

[00:25:13] Speaker 03:
I mean, the notice allowance is like a single paragraph where

[00:25:17] Speaker 03:
I believe if I remember right, the real time limitation is what is expressly called out.

[00:25:23] Speaker 03:
Is that a fair characterization?

[00:25:25] Speaker 04:
I think that's an overly generalized characterization because it says real time within the context of all of these other things, which again goes to novelty here.

[00:25:36] Speaker 04:
That is not saying that real time itself is not

[00:25:39] Speaker 04:
potentially conventional or routine in other aspects, it's with respect to everything else, and that's a novelty analysis.

[00:25:46] Speaker 04:
That is not a routine or conventional for the notion of real-time itself.

[00:25:51] Speaker 03:
Well, but in the context of 101, they point to the notice of allowance that sort of indicates there's something allowable about the real-time inclusion in the clay as, you know, not appearing in the prior art or is somehow novel.

[00:26:09] Speaker 03:
And then I just don't remember seeing the district court ever address that in the opinion itself.

[00:26:16] Speaker 03:
Did he?

[00:26:17] Speaker 03:
Am I missing it?

[00:26:19] Speaker 04:
I don't, you know, your honor, I'd have to go back and scour.

[00:26:22] Speaker 04:
I'm looking at the section right here where the district court was discussing the arguments raised.

[00:26:28] Speaker 04:
And I'm not actually sure whether or not she specifically mentioned

[00:26:36] Speaker 04:
the file history, she did note that there was nothing that she saw that raised a tribal issue of fact other than attorney argument.

[00:26:46] Speaker 04:
And so, again, I don't believe that the notice of allowance... But that's not attorney argument, right?

[00:26:51] Speaker 04:
That would not be, Your Honor.

[00:26:52] Speaker 04:
You are absolutely correct there.

[00:26:53] Speaker 04:
But I don't... Your Honor, I don't think that the notice of allowance raises enough of a question because

[00:27:00] Speaker 04:
Again, it was never even argued that that was specifically the reason.

[00:27:03] Speaker 04:
If you look back to the arguments below, the issue or concept of real time was never even discussed.

[00:27:11] Speaker 04:
In fact, so much so that the court noted that real time didn't seem to be an issue.

[00:27:15] Speaker 04:
That's in the footnote 11.

[00:27:17] Speaker 04:
And so it didn't address the dispute between the parties.

[00:27:20] Speaker 04:
And rightfully so, since the dispute between the parties doesn't change

[00:27:24] Speaker 04:
anything about how real-time would be applied or not applied, both parties agreed that it was essentially immediate.

[00:27:32] Speaker 04:
The only distinction between the two parties' constructions was whether or not, in Facebook's example, it had to be not stored at a central computer in between.

[00:27:41] Speaker 04:
Nothing of that affects the abstraction itself.

[00:27:47] Speaker 04:
So in, in some, your honors, I don't think that there's anything in this record.

[00:27:51] Speaker 04:
This court did an unbelievably thorough job of looking to all of the evidence that had been put forward of, you know, and it didn't change the character of the claims themselves.

[00:28:02] Speaker 04:
And now we hear for the first time that in fact, uh, paragraph 30 of the separate statement was not disputed.

[00:28:09] Speaker 04:
And so we actually now know that at 9757 paragraph 30, that in fact, the hardware was all routine and conventional.

[00:28:18] Speaker 04:
So you have an abstraction, the notion of sending information between two parties, and then figuring out whether or not it needs to be displayed differently on routine and conventional hardware.

[00:28:29] Speaker 04:
There's absolutely nothing inventive here, Your Honor, and no mistake was made by the district court.

[00:28:34] Speaker 03:
So can I ask you, just following up on the point that I raised before, I just found where I remembered seeing it, and it's in 9794 in the appendix.

[00:28:43] Speaker 03:
That's where I recalled seeing

[00:28:46] Speaker 03:
their allegations regarding how the prosecution history notice of allowance provides factual support for their dispute.

[00:28:59] Speaker 03:
It starts on 97-93 and carries over to 97-94.

[00:29:04] Speaker 03:
So tell me again why it is that you think that isn't sufficient to potentially raise a question of fact about the real-time limitation?

[00:29:14] Speaker 04:
Again, Your Honor, I don't think that this is saying that it's just real-time or that it doesn't explain in any way how that takes it out of the realm of eligibility.

[00:29:25] Speaker 04:
It just says that in terms of novelty, the prior art failed to teach or suggest real-time communication system with a number of participator computers exchanging messages over the internet.

[00:29:36] Speaker 04:
And it uses all of essentially the other concepts that are within the claim itself.

[00:29:40] Speaker 04:
So I don't think this raises any question of fact.

[00:29:44] Speaker 04:
It absolutely was not argued.

[00:29:47] Speaker 04:
And again, that's to me.

[00:29:48] Speaker 03:
Well, you can't say it wasn't argued.

[00:29:50] Speaker 03:
It's right there.

[00:29:50] Speaker 03:
This is argued, actually.

[00:29:52] Speaker 03:
It's right here in this document that was submitted on the summary judgment, right?

[00:29:57] Speaker 04:
Yes.

[00:29:58] Speaker 04:
Yes, Your Honor.

[00:29:58] Speaker 03:
But I don't think it's fair for you to say it wasn't argued because I'm looking at it.

[00:30:02] Speaker 04:
But Your Honor, this is a novelty.

[00:30:04] Speaker 04:
This is a novelty type discussion.

[00:30:06] Speaker 04:
And so what the patent office here is saying is that all of these elements in combination are not there.

[00:30:12] Speaker 04:
That does not say that real time itself was not also.

[00:30:17] Speaker 03:
This is a novelty discussion.

[00:30:19] Speaker 03:
I just want to make sure I understand this record.

[00:30:22] Speaker 03:
Is this not what they pointed to for their 101 argument?

[00:30:26] Speaker 03:
I mean, am I not remembering this right?

[00:30:28] Speaker 03:
Do I have it confused?

[00:30:31] Speaker 04:
So, Your Honor, this is in response to our summary judgment regarding 101.

[00:30:35] Speaker 04:
Yes.

[00:30:36] Speaker 04:
But what I am saying

[00:30:37] Speaker 04:
is that they are conflating by using this piece of evidence, they are conflating novelty with eligibility.

[00:30:44] Speaker 04:
With all due respect, counsel, I think the Supreme Court already did that.

[00:30:50] Speaker 04:
I think, Your Honor, but Your Honor has been very clear.

[00:30:52] Speaker 04:
All of the subtle circuit decisions have been very clear that, in fact, novelty is novelty.

[00:30:56] Speaker 03:
Well, you know what?

[00:30:57] Speaker 03:
Wait a minute, wait a minute.

[00:30:57] Speaker 03:
I just want to make sure I take a moment to enjoy that.

[00:31:00] Speaker 03:
You think all federal circuit decision 101 are very clear?

[00:31:03] Speaker 03:
You've got to be the only person to hold that view.

[00:31:07] Speaker 03:
So go ahead.

[00:31:08] Speaker 04:
No, and Your Honor, I appreciate that there is confusion.

[00:31:11] Speaker 04:
What I was saying is that the one point that has been clear through all the decisions is that novelty is a separate consideration from eligibility.

[00:31:20] Speaker 04:
That absolutely is.

[00:31:21] Speaker 03:
But it can't be, because the Supreme Court expressly told us

[00:31:24] Speaker 03:
that that's one of the things you can work into the consideration of the second part of the Alice Mayo prong, right?

[00:31:31] Speaker 03:
I mean, isn't that what conventionality and routine and well-known actually goes to?

[00:31:35] Speaker 03:
Isn't that really exactly the same inquiry in a lot of ways?

[00:31:41] Speaker 04:
Your Honor, I respectfully disagree that it is the same inquiry.

[00:31:45] Speaker 04:
While it may have some facets that overlap each other, it is not the same inquiry.

[00:31:50] Speaker 04:
And in fact, the fact that something is novel,

[00:31:53] Speaker 04:
absolutely cannot confer eligibility, and that's clear even from Mayo that talks about E equals MC squared being something that's incredibly novel and not eligible.

[00:32:03] Speaker 03:
Of course, because the reason that's clear is because the novelty can't lie in the abstraction itself.

[00:32:10] Speaker 03:
But if there are, in fact, individual concrete claim elements that are themselves not conventional, not routine, and not well understood, couldn't that element be something else that takes the claim out of the realm of abstraction?

[00:32:23] Speaker 04:
Theoretically, Your Honor, it could be, but if we look to even the electric power case, we find that real time is not one of those such things.

[00:32:31] Speaker 04:
The simple notion of speeding something up so that it can be done faster, which is all that real time is, is not enough to add eligibility.

[00:32:40] Speaker 04:
It actually is the abstraction itself.

[00:32:42] Speaker 04:
It's sending the messages right now, just like you and I are talking in real time.

[00:32:46] Speaker 03:
So perhaps this would be different if instead of

[00:32:49] Speaker 03:
just mentioning real-time, suppose multiplexing were in fact a new concept and suppose it was achieving real-time through multiplexing.

[00:32:58] Speaker 03:
And if that's what they were pointing to in the notice of allowance that their claim expressly covers achieving real-time through multiplexing, which had never been done before, then we'd have a different case, arguably possible.

[00:33:10] Speaker 04:
Is that right?

[00:33:11] Speaker 04:
Yes, Your Honor, that's absolutely correct.

[00:33:13] Speaker 04:
Okay, thank you.

[00:33:14] Speaker 04:
And I note that my time is up.

[00:33:15] Speaker 04:
I appreciate Your Honor's attention.

[00:33:17] Speaker 04:
Thank you very much.

[00:33:19] Speaker 02:
Thank you, Ms.

[00:33:19] Speaker 02:
Keith.

[00:33:20] Speaker 02:
Mr. McCarty has two minutes for rebuttal.

[00:33:23] Speaker 00:
Thank you, Your Honor.

[00:33:24] Speaker 00:
I just want to pick up where it left off with the novelty discussion.

[00:33:31] Speaker 00:
And that is exactly the issue at step two in this case and where I think this Court could clarify the novelty versus 101 issue because the District Court relied upon and studied the obviousness and 102 analysis of Facebook's expert.

[00:33:49] Speaker 00:
And on the Windy City side said Windy City had no evidence of any eligibility, not withstanding the fact that Windy City submitted its expert report rebutting the 102 and 103 analysis of Facebook's expert.

[00:34:08] Speaker 00:
And second, peculiarly in this case, the 101 opinion, the three pages that Facebook's expert submitted

[00:34:18] Speaker 00:
relies upon as some sort of end run around IPR estoppel, the prior art pieces, the references that the PTAB has already considered and determined did not render obvious claim 19.

[00:34:33] Speaker 00:
So we have two pieces of evidence from Facebook.

[00:34:35] Speaker 00:
On the one hand, it's a 101 opinion, which is just the prior art that the PTAB has already said, not obvious.

[00:34:43] Speaker 00:
And on the second hand is 102 and 103 opinions, which Windy City's expert rebutted.

[00:34:48] Speaker 00:
On either side, it needs to be either 102 and 103 are distinct from 101 or not.

[00:34:55] Speaker 00:
And if it's not, you can't decide to consider one side's evidence of 102 and 103 and not the others.

[00:35:02] Speaker 00:
There has to be a two-way street.

[00:35:04] Speaker 00:
If the inquiries are distinct, they should be distinct.

[00:35:07] Speaker 00:
If they're not distinct, you have to consider both parties.

[00:35:10] Speaker 01:
When you tell the district court that you don't have any one-on-one evidence,

[00:35:14] Speaker 01:
It's hard to fault them for not considering.

[00:35:20] Speaker 00:
Your Honor, respectfully, we did not say we had no 101 evidence.

[00:35:24] Speaker 00:
We agreed that Windy City's expert, Dr. Jones, did not provide an opinion specific to 35 USC 101.

[00:35:31] Speaker 00:
He did not have a corresponding three pages, for example, in his expert report.

[00:35:35] Speaker 00:
But he did submit 102 and 103 evidence.

[00:35:38] Speaker 00:
And we also submitted additional evidence to create a genuine issue of material fact, including the notice of allowance,

[00:35:43] Speaker 00:
the inventor testimony, specification explanation, et cetera.

[00:35:48] Speaker 00:
Thank you.

[00:35:48] Speaker 00:
I think my time is up.

[00:35:50] Speaker 02:
Thank you, counsel.

[00:35:51] Speaker 02:
We appreciate the arguments from both counsel and the case is submitted.