[00:00:00] Speaker 02:
The case for argument is 20-1760, you versus Apple.

[00:00:04] Speaker 02:
Mr. Litz, whenever you're ready.

[00:00:09] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:00:11] Speaker 00:
Robert Litz on behalf of Appellant GM Ben Yu and Zhang Xuan Zhang.

[00:00:16] Speaker 00:
The application for the 289th Patent was filed on January 15, 1999, more than 22 years ago.

[00:00:24] Speaker 02:
At that time, digital cameras were in their infancy.

[00:00:28] Speaker 02:
And the patent expired in 2019, is that correct?

[00:00:32] Speaker 02:
Yes.

[00:00:32] Speaker 02:
Okay, thank you.

[00:00:33] Speaker 02:
Sorry to interrupt.

[00:00:35] Speaker 00:
At that time, digital cameras were in their infancy and they simply produced low quality images compared with traditional film cameras.

[00:00:42] Speaker 00:
And this was because of the technical limitations of image sensors that existed at that time.

[00:00:49] Speaker 00:
One possible solution was to simply use larger image sensors, but this would have simply introduced a whole host of additional problems.

[00:00:57] Speaker 00:
So simply using larger image sensors was not an optimal solution.

[00:01:02] Speaker 00:
The inventors of the 289 patent, both of whom have doctorates in electrical engineering or related fields, realize all of this.

[00:01:10] Speaker 00:
And therefore, they set out on a more creative approach to solve these problems by developing entirely new digital camera architecture and a new use of that architecture

[00:01:18] Speaker 00:
to produce digital images.

[00:01:21] Speaker 00:
And those efforts led to the development of the claimed invention of the 289 patent.

[00:01:26] Speaker 00:
The 289 patent discloses and claims an improved digital camera that includes a specific and unconventional digital camera architecture and a specific and unconventional use of that digital camera architecture to produce a resultant digital image.

[00:01:41] Speaker 01:
This is just Toronto.

[00:01:43] Speaker 01:
Can I just ask this question?

[00:01:44] Speaker 01:
Is it a matter of dispute whether in the prior art there was a configuration or understood to be a possible configuration of two black and white sensors coplanar?

[00:02:04] Speaker 00:
I don't believe that issue has been raised.

[00:02:07] Speaker 00:
There is nothing, there are no

[00:02:10] Speaker 00:
references in the record that disclose such configuration?

[00:02:19] Speaker 00:
So that's all I can really speak to that.

[00:02:22] Speaker 01:
I guess part of what I was interested in, and I think this is in the red brief to some extent, quite a lot of the spec here is about a particular embodiment of three

[00:02:39] Speaker 01:
single color sensors plus one black and white sensor.

[00:02:44] Speaker 01:
And it's possible that all the language about the key invention here is kind of about that.

[00:02:54] Speaker 01:
The claim language that did you agree is broad enough to cover the arrangement I described, two sensors, both of them black and white, which I guess everybody agrees is the same as full color, oddly enough.

[00:03:08] Speaker 01:
but, you know, coplanar and they're used, you know, one of them is used to enhance in some undefined way the image from the other.

[00:03:20] Speaker 00:
That's actually a disclosed embodiment in the invention.

[00:03:23] Speaker 00:
Where's that?

[00:03:24] Speaker 00:
There is a two sensor embodiment that is exactly like you described and let me give you the location of that.

[00:03:34] Speaker 00:
That is at appendix 27.

[00:03:36] Speaker 00:
What's the column and line number?

[00:03:38] Speaker 00:
At column seven, lines 36 to 46.

[00:03:41] Speaker 00:
OK, thanks.

[00:03:45] Speaker 00:
OK, so proceeding.

[00:03:48] Speaker 00:
The architecture itself includes first and second image sensors, where the second image sensor is sensitive to a full region of visible color spectrum.

[00:03:56] Speaker 00:
And the first and second image sensors are closely positioned with respect to a common plane.

[00:04:02] Speaker 00:
The architecture is used to produce a resultant digital image by capturing a first digital image using the first image sensor, capturing a second digital image using the second image sensor, which again is sensitive to a full region of visible color spectrum, and enhancing the first digital image with the second digital image.

[00:04:21] Speaker 00:
With this clean combination of limitations, the improved digital camera, the 289 patent, was able to produce high quality and film-like true color digital images.

[00:04:29] Speaker 00:
And this was something that

[00:04:30] Speaker 00:
Prior digital cameras simply could not do at that time.

[00:04:35] Speaker 00:
This presented an improvement over prior multi-sensor cameras because prior multi-sensor cameras used prisms to split light into distinct bands so that the image sensors do not have to be close to one another, whereas the invention of the 289 patent uses image sensors that are closely positioned with respect to a common plane.

[00:04:55] Speaker 00:
Also, prior multi-sensor cameras captured images representing only a distinct region

[00:05:00] Speaker 00:
of the visible light spectrum, such as a red image, a green image, and a blue image separately, and merely combine those images to form a color image.

[00:05:08] Speaker 00:
Whereas the 289 patent captures at least one image representing a full region in the visible light spectrum and uses that image to enhance another captured image.

[00:05:16] Speaker 00:
This was not done with prior multi-sensor digital cameras.

[00:05:23] Speaker 00:
And the architecture is important to the claimed invention because using image sensors that are closely positioned with respect to a common plane

[00:05:29] Speaker 00:
allows separate images of the same target to be captured without using prisms.

[00:05:35] Speaker 00:
And using an image sensor that sets it to a full regional visible color spectrum is important because it allows information that may have been missed by the first image sensor to be captured by the second image sensor and used to improve the quality of the image captured by the first image sensor.

[00:05:52] Speaker 00:
Returning to the Alice Mayo test for patent eligibility, the district court erroneously found under

[00:06:00] Speaker 00:
step one that the claims of the 289 patent are merely directed to the abstract idea of taking two pictures and using those pictures to enhance each other in some way.

[00:06:14] Speaker 00:
This is an egregious oversimplification of the claim and it runs afoul of this court's admonition that we must therefore ensure at step one that we articulate what the claims are directed to

[00:06:28] Speaker 00:
with enough specificity to ensure that the step one inquiry is meaningful.

[00:06:33] Speaker 00:
The district court's characterization completely ignores all the structural limitations of the claims, and it doesn't consider the structural limitations of the claims in combination with the image enhancement limitation.

[00:06:47] Speaker 00:
It would even cover single sensor digital cameras, in fact, that performed image enhancement.

[00:06:55] Speaker 00:
This was clearly an over-broad and erroneous characterization of the claims.

[00:06:59] Speaker 00:
The claims are not really directed to using one picture to enhance another, but rather they're directed to the specific and unconventional digital camera architecture recited in the claims and the specific and unconventional use of that architecture to produce a resultant digital image.

[00:07:15] Speaker 01:
One of the problems, at least speaking for myself, that we often have in these 101 cases is that

[00:07:23] Speaker 01:
in in the old pre-Mayo world, the patent bar thought that it was enough to simply say the complete combination of all the claim elements and Mayo says stop doing that, talk in specifics about what's going on in the claim and it you know the traditional way of, so can you do that here instead of just referring to

[00:07:50] Speaker 01:
the complete arrangement of the configuration and the claims indicate what is it about this configuration that is a departure from previous ways from the prior art?

[00:08:09] Speaker 00:
Sure.

[00:08:09] Speaker 00:
Well, the most conventional way at that time, back in 1999, was to simply use a single image sensor.

[00:08:17] Speaker 00:
So multi-sensor cameras themselves

[00:08:20] Speaker 00:
I don't think could be truly called conventional at that time.

[00:08:24] Speaker 00:
But even with regards to multi-sensor cameras, they did not use image sensors that are closely positioned with respect to a common plane, and they did not use image sensors that are... And just to be clear, does that mean that they are roughly speaking coplanar, or does it mean something else?

[00:08:43] Speaker 01:
I didn't see in the brief anybody saying, here's what it means to be closely positioned with respect to a common plane.

[00:08:50] Speaker 00:
Well, the specification does give guidance as to what that means.

[00:08:54] Speaker 00:
So most particularly with regards to figures 4A and 4B, where it shows sort of example configurations.

[00:09:04] Speaker 00:
And the specification also states that the close positioning of the image sensors allows the images to be registered without excessive computational requirements.

[00:09:19] Speaker 00:
So another party has alleged that claim construction has bearing on the outcome of the proceeding.

[00:09:26] Speaker 01:
No, but if we're trying actually to generate in our minds a picture of what's going on, a little understand explanation would be helpful.

[00:09:36] Speaker 00:
Sure.

[00:09:38] Speaker 00:
The best way, I think, to understand the closely positioned limitation is that they are close to one another.

[00:09:48] Speaker 00:
as opposed to not necessarily being close to a common plane, but close to one another.

[00:09:55] Speaker 00:
And as the specification explains, so that they can capture images of the same target, and so that the images can be registered with one another.

[00:10:08] Speaker 00:
To visualize it, I would say looking at the sensors from a front-on perspective, from the standpoint of the image target, they have to be close enough, and close enough so that the same target can be captured with the multiple sensors.

[00:10:24] Speaker 00:
Okay.

[00:10:25] Speaker 00:
And are close enough so that the registration process can be not computationally, to a extent, I guess, require too many resources, computational resources.

[00:10:38] Speaker 00:
Now, I feel into my rebuttal time, so I'll just proceed quickly through a couple issues relating to problem one.

[00:10:45] Speaker 00:
Now, the claimed invention clearly improves the functionality and capabilities of digital cameras.

[00:10:50] Speaker 00:
It enables them to produce digital images better than prior digital cameras, and producing digital images is the main function of a digital camera.

[00:10:59] Speaker 00:
So this is a clear case where the invention improves the functionality of the claimed system.

[00:11:05] Speaker 00:
Also, the problems described in the 289 patent specifications being solved by the invention are clearly technical problems relating to the limitations of then existing image sensors.

[00:11:16] Speaker 00:
So those problems include things like limited resolution, due to low pixel counts, inability to show vivid colors by limited pixel depth, and inability to show details of a large image.

[00:11:26] Speaker 01:
This is Judge Ranto.

[00:11:27] Speaker 01:
I'm sorry to eat up more time.

[00:11:32] Speaker 01:
The word enhance, or then the limitation of which it is a part, have any meaning in the claim, or are you saying that if you create the configuration, the structural, if you have something that satisfies the structural elements of the claim, it will automatically meet that enhanced limitation, or does enhance actually mean something additional?

[00:11:56] Speaker 00:
Enhanced means using information from the second image to improve the first image.

[00:12:02] Speaker 00:
So the first image is going to be changed or modified in some way using information from the second image.

[00:12:10] Speaker 00:
Okay.

[00:12:10] Speaker 00:
With the idea that the image from the second sensor might capture information that was missed by the first sensor.

[00:12:19] Speaker 00:
It might be useful in improving the image from the first sensor.

[00:12:26] Speaker 00:
Okay, thank you.

[00:12:28] Speaker 00:
And briefly under step two,

[00:12:31] Speaker 00:
I believe that where the district court ran most afoul of this court's admonitions is failing to consider the claimed combination.

[00:12:41] Speaker 00:
This court has held that the claimed combination of or that an inventive concept can be found not only in the individual limitations but in the claimed combination of limitations.

[00:12:53] Speaker 00:
The district court not only ignored the claimed combination of structural limitations but failed to consider that combination along with

[00:13:00] Speaker 00:
the enhanced lift limitation.

[00:13:02] Speaker 00:
And this court or the Supreme Court made clear in Diamond v. Deere that any abstract idea or mathematical formula that can be identified in the claim must be considered in determining the patent eligibility question.

[00:13:17] Speaker 00:
And that simply didn't happen at the district court.

[00:13:23] Speaker 00:
On the issue of preemption, there is clearly no danger of preemption here.

[00:13:30] Speaker 00:
because there are forms of image enhancement using multiple captured digital images that would not infringe the claims.

[00:13:41] Speaker 00:
For example, using multiple images captured from the same image sensor would not infringe the claim.

[00:13:48] Speaker 00:
For example, if the images were captured in burst mode from the same sensor and then one was used to enhance the others, that would not be encompassed within the claims.

[00:13:58] Speaker 00:
Also, any enhancement using multiple image sensors where none of the image sensors are responsive to a full region of visible color spectrum would be encompassed by the claims, or where the image sensors are not closely positioned with respect to a common plane, that likewise would not be encompassed by the claims.

[00:14:14] Speaker 00:
So the danger of preemption is vastly overstated by both the district court and by the appellees.

[00:14:21] Speaker 00:
And finally, the pleadings include numerous plausible factual allegations regarding

[00:14:27] Speaker 00:
the inventiveness of the claimed invention, improvements to digital camera functionality provided by the invention, the technical nature of the problems solved by the invention, unconventional aspects of the invention, and the lack of preemption.

[00:14:41] Speaker 00:
All of these allegations were improperly ignored and discounted by the district court as being merely conclusory.

[00:14:48] Speaker 00:
And this is not the case.

[00:14:49] Speaker 00:
They were all supported by extensive citations to and quotations from

[00:14:54] Speaker 00:
the intrinsic record, particularly the specifications.

[00:14:57] Speaker 00:
So, failing to take into account those allegations was improper, and those allegations preclude dismissal at the stage of the proceedings.

[00:15:07] Speaker 02:
Thank you.

[00:15:08] Speaker 02:
We'll restore a couple minutes of rebuttal.

[00:15:10] Speaker 02:
Let's hear from the other side.

[00:15:12] Speaker 02:
Ms.

[00:15:12] Speaker 02:
Keefe?

[00:15:14] Speaker 03:
Thank you, Your Honors.

[00:15:15] Speaker 03:
May it please the Court?

[00:15:16] Speaker 03:
Heidi Keefe for Appellees.

[00:15:19] Speaker 03:
I think what's really critical here, Your Honors, is what we actually just heard during

[00:15:24] Speaker 03:
the opening oral argument, we were told for the first time, it was admitted, that there is no enhancement simply by using the structure that is claimed in the claim.

[00:15:39] Speaker 03:
Instead, you need something more.

[00:15:40] Speaker 03:
And that's absolutely foundational to our allegation about 101.

[00:15:46] Speaker 03:
For example, I think one of the best ways to see this is

[00:15:49] Speaker 03:
Every time that enhancement is discussed in the specification, it refers to a whole other step.

[00:15:57] Speaker 03:
For example, if we look to Appendix 28, Column 10, starting at Line 6, going through Line 16, it describes Figure 8, which says that in order to do the enhancement, you have to first have just normal pictures that come in from the two different sensors.

[00:16:14] Speaker 03:
And then you have to do a separate step

[00:16:17] Speaker 03:
of digital signal processing and then enhancement.

[00:16:20] Speaker 03:
Figure 8 has a separate box.

[00:16:23] Speaker 03:
After you receive the images from these conventional sensors that are just, you know, use the ones that are cheap, don't go create a new sensor.

[00:16:32] Speaker 03:
We also heard that during the opening argument.

[00:16:34] Speaker 03:
We're not going to build new sensors.

[00:16:36] Speaker 03:
We're just going to use the ones that already exist and try to do it in some inexpensive way.

[00:16:41] Speaker 03:
And that's replete at columns 1 and 2.

[00:16:43] Speaker 03:
Once we get those images,

[00:16:46] Speaker 03:
We then have to perform digital image processing, but we're never told how.

[00:16:52] Speaker 03:
And then we have to enhance the image, and that's at step 820 in Figure 8.

[00:16:56] Speaker 03:
But again, we're never told how.

[00:16:58] Speaker 01:
Ms.

[00:16:58] Speaker 01:
Keefe, this is just Toronto.

[00:16:59] Speaker 01:
So this is not a, this is, I guess, a little different from some of the other 101 cases we have.

[00:17:06] Speaker 01:
But help me see how your focus on the,

[00:17:16] Speaker 01:
unexplained but nevertheless meaningful term enhancement plays into the 101 analysis as opposed to saying either it hasn't been enabled or it's indefinite.

[00:17:31] Speaker 01:
Fit it into 101 analysis for me.

[00:17:34] Speaker 03:
Absolutely.

[00:17:35] Speaker 03:
Thank you, Your Honor, for the question.

[00:17:37] Speaker 03:
What we have to do in 101 is we have to look to what is the claim directed to.

[00:17:43] Speaker 03:
What is the whole, essentially, gist of the claim?

[00:17:46] Speaker 03:
What's the purpose of the claim?

[00:17:47] Speaker 03:
And what we know here from the claim itself, as well as from the specification, is that the entire purpose, the entire invention, is to produce an enhanced image.

[00:17:58] Speaker 01:
We see that first in the abstract.

[00:18:01] Speaker 01:
And maybe I'm confused about this.

[00:18:04] Speaker 01:
I thought I heard your friend on the other side say,

[00:18:10] Speaker 01:
No, it cannot be said that if you take out the enhancement limitation, that the rest of the structure, including just the simple fact of two lenses, one of which is responsive to a full range of color, that that structural arrangement with whatever it means to say close to whatever the relationship to the plane is,

[00:18:40] Speaker 01:
That that itself is not conventional.

[00:18:48] Speaker 01:
And if that's right, then that's part of the gist of this claim, no?

[00:18:58] Speaker 03:
So Your Honor, what we heard was them trying to add something to the claim that doesn't exist there.

[00:19:04] Speaker 03:
Your Honor asked the question, could the claim cover two standard black and white censors?

[00:19:09] Speaker 03:
And the answer is not only could it, it must.

[00:19:13] Speaker 03:
The claim as written simply says that there are two sensors, one of which is sensitive to the full range of color, and it's silent to the other.

[00:19:22] Speaker 01:
Which everybody understands to mean black and white.

[00:19:25] Speaker 03:
That's correct, Your Honor, black and white.

[00:19:27] Speaker 03:
It's easier if I just say it that way.

[00:19:28] Speaker 03:
So that the claim one requires using one black and white sensor and it's silent to the other.

[00:19:35] Speaker 03:
Claim two says wherein the other sensor

[00:19:38] Speaker 03:
is also black and white.

[00:19:40] Speaker 03:
So we know that the independent claim has to cover a situation with two black and white sensors.

[00:19:46] Speaker 01:
We also know from the gray brief that the... So why isn't that an asserted advance as long as those two sensors are properly aligned?

[00:19:55] Speaker 03:
Because, Your Honor, we know from the intrinsic record that in fact closely aligning sensors is old.

[00:20:05] Speaker 03:
It's never been

[00:20:06] Speaker 03:
disputed that it was conventional in order to place things on a common plane.

[00:20:11] Speaker 03:
It's no different, for example, than your eyes being on a common plane and receiving two images.

[00:20:16] Speaker 03:
And that's something we discussed in the briefing down below.

[00:20:20] Speaker 03:
And the notion that the gray brief actually admits that each of the component parts is in fact conventional.

[00:20:29] Speaker 03:
And so what we know then, and that by the way is in the gray brief at page 12,

[00:20:34] Speaker 03:
We know, therefore, that each of the component parts is just being used in its normal, ordinary, conventional fashion to simply produce an image.

[00:20:43] Speaker 03:
There is nothing here that takes it out of the realm of the abstract, and it doesn't do anything new or different.

[00:20:51] Speaker 03:
And I don't mean those words, I apologize to use the word new, I don't mean those words in a novelty sense, I mean them in

[00:20:57] Speaker 03:
the take it out of the realm of the abstract.

[00:20:59] Speaker 03:
Here, the gist of the patent, the things that the claim is directed to, is not anything new about how you place the sensors.

[00:21:09] Speaker 03:
In fact, again, if we look to the specification itself, and this is replete through columns one and two in appendix 24, we hear that we don't want to use new sensors.

[00:21:20] Speaker 03:
We want to use

[00:21:22] Speaker 03:
the old sensors so that we can get a better image without costing more money.

[00:21:27] Speaker 03:
And that's at column two, for example, line five, it's also at column two, lines 20 through 21, lines 32 through 33, et cetera.

[00:21:39] Speaker 03:
So the claim is not directed to a new placement or a new combination of how these things are used.

[00:21:47] Speaker 03:
The claim itself just says, make sure you've got two sensors,

[00:21:51] Speaker 03:
they can both be black and white, that receive data to create an image.

[00:21:56] Speaker 03:
And then the magic happens when you combine or enhance those images by using one image with another image.

[00:22:04] Speaker 03:
And so what we heard during the opening argument was that the real thrust of the specification was if you use three sensors that are different from the fourth, you will be able to provide the missing data

[00:22:21] Speaker 03:
and therefore come up with an enhancement.

[00:22:23] Speaker 03:
But that's not how it was claimed.

[00:22:25] Speaker 03:
It wasn't claimed as one or three sensors that are completely different from the fourth, and therefore there will be a benefit because of providing missing data.

[00:22:37] Speaker 03:
That simply isn't how it's claimed.

[00:22:39] Speaker 03:
And in Alice, we have to look to how things are claimed.

[00:22:43] Speaker 03:
In that sense, this case is exactly like two-way media, where two-way media

[00:22:49] Speaker 03:
tried to get information from one place to another in multicasting sense.

[00:22:54] Speaker 03:
And it said, and I'm going to stick another computer in the middle so that that helps get the information from the source out to the recipient.

[00:23:03] Speaker 03:
And the thing in the middle is going to do the one, the thing that figures it all out here.

[00:23:09] Speaker 03:
And in two immediate, I'm sorry, nowhere was it ever described how that happened or how that intervening computer or server was used in an unconventional way.

[00:23:19] Speaker 03:
exactly the same thing here.

[00:23:22] Speaker 03:
Even though there is recitation of using black and white sensors, there is absolutely nothing that explains how that enhances an image until you use one image to enhance another, and that is nowhere described.

[00:23:39] Speaker 03:
Instead, that is... Go ahead, Your Honor.

[00:23:45] Speaker 03:
I'm sorry, did I hear a question?

[00:23:47] Speaker 02:
No, I don't think so.

[00:23:48] Speaker 02:
Please just keep going.

[00:23:49] Speaker 03:
I apologize, Your Honor.

[00:23:51] Speaker 03:
I'm trying so hard to make sure I don't talk over you that I probably heard something else.

[00:23:55] Speaker 02:
Yeah, thank you.

[00:23:57] Speaker 03:
And so here, as in 2-way media, we are never told how to effectuate the abstraction.

[00:24:06] Speaker 03:
Instead, we have only the black box of the digital signal processor in Figure 3, of the digital signal processing in Figure 8, and the enhanced image of 830.

[00:24:18] Speaker 03:
in figure eight.

[00:24:20] Speaker 03:
Therefore, the case law tells us that this is just an abstract claim claiming the functional benefit of an enhanced image.

[00:24:32] Speaker 03:
Nothing else.

[00:24:35] Speaker 03:
Nothing else.

[00:24:39] Speaker 01:
If your honors didn't have any other questions, the only other thing... Can I just, I think, return to a subject that we were discussing before.

[00:24:49] Speaker 01:
Can you point with some specificity to, I think you referred to the prosecution history, but the material that you rely on to say that putting aside the enhancement feature of the claim, the rest, not just the components, but their arrangement,

[00:25:08] Speaker 01:
is not plausibly asserted to be an advance?

[00:25:17] Speaker 03:
Yes, Your Honor.

[00:25:17] Speaker 03:
For example, we cite to the appendix file history where Magano was recognized by the examiner as having multiple sensors that are placed closely

[00:25:36] Speaker 03:
with respect to a common plain.

[00:25:38] Speaker 03:
And that can be seen, for example, at Appendix 123.

[00:25:42] Speaker 03:
The figure itself shows that.

[00:25:45] Speaker 03:
This wasn't refuted in any way, shape, or form by the applicant.

[00:25:52] Speaker 03:
And I understand that it was a first office action allowance.

[00:25:55] Speaker 03:
But they still, if they disbelieved that, could have submitted

[00:25:59] Speaker 03:
materials that said, and I do not believe that that's true, they did not do so.

[00:26:04] Speaker 03:
Similarly, they haven't disputed that below because Nagano actually says it, as do the other references that are cited in the file history.

[00:26:13] Speaker 03:
And that's, again, at appendix, for example, 118.

[00:26:17] Speaker 03:
That leads me also to, Your Honor, one other question, which I think consistently we... And what, in light of that, do you make of

[00:26:29] Speaker 01:
a few passages in the specification, and since we are at 12b6, that matters, that seem to say, I don't know, the key to the advance here is this structural arrangement.

[00:26:47] Speaker 03:
So, Your Honor, I think, for example, the specification does talk about if you had completely different sensors, for example, if you had

[00:26:59] Speaker 03:
a red, green, blue sensor in combination with a black and white sensor.

[00:27:05] Speaker 03:
The specification makes hay of the fact that then you would be using the black and white sensor to potentially fill in information that was missed by the red, green, or blue sensor.

[00:27:16] Speaker 03:
That's what the specification talks about.

[00:27:19] Speaker 03:
That's not claimed, Your Honor.

[00:27:21] Speaker 03:
Just the opposite.

[00:27:22] Speaker 03:
The claim simply says have

[00:27:26] Speaker 03:
one black and white sensor and claim two tells us, and make sure the other sensor is also black and white.

[00:27:31] Speaker 03:
Therefore, there is no other information that's being missed.

[00:27:36] Speaker 03:
There's no other information that you would necessarily come up with that could be even used to make the enhancement if you practice the claim as is.

[00:27:46] Speaker 03:
This is one of those cases where you have to look very carefully to exactly what is claimed, not to what the specification describes as an embodiment,

[00:27:55] Speaker 03:
that is not claimed.

[00:27:57] Speaker 03:
In that sense, Your Honor, this case is very similar to Berkheimer.

[00:28:00] Speaker 03:
In Berkheimer, as Your Honors well know, there was the independent claims and the dependent claims, and the independent claims simply claimed the memory and storing information.

[00:28:13] Speaker 03:
That was found to be ineligible, even though the specifications specifically also disclosed embodiments that were claimed in the dependent claims that said, don't store redundant data.

[00:28:25] Speaker 03:
Well, if you didn't store the redundant data, then it could speed up the system and somehow make that therefore eligible.

[00:28:33] Speaker 03:
That shows us that it's not just within the specification.

[00:28:37] Speaker 03:
It's what's claimed that matters.

[00:28:39] Speaker 03:
So even though the specification may have had something that if claimed, and we don't know if they could have or what it would have been, but it wasn't claimed.

[00:28:48] Speaker 03:
Therefore, it's still ineligible.

[00:28:51] Speaker 03:
Does that answer your honor's question?

[00:28:54] Speaker 01:
I said thank you for that, yes.

[00:28:56] Speaker 03:
Thank you very much, Your Honor.

[00:28:57] Speaker 03:
And in that sense, this case also is not like Thales, where the simple usage of the two sensors placed in different places inherently produced the benefit, nor is it like McRoe, where the claim gave the specificity of how to achieve the improved image.

[00:29:19] Speaker 03:
Here, we have no idea how to achieve the improved image.

[00:29:22] Speaker 03:
And in fact, we have no idea what the information even is that's going to be combined.

[00:29:28] Speaker 03:
And with that, Your Honors, unless you have other questions.

[00:29:32] Speaker 02:
Well, can I just ask you, Ms.

[00:29:33] Speaker 02:
Keefe, just another housekeeping question, which is there are two IPRs concerning this patent, am I correct?

[00:29:42] Speaker 02:
That's correct, Your Honor.

[00:29:44] Speaker 02:
And how does that proceeding correspond to this one?

[00:29:49] Speaker 03:
So the PTAB decisions, there have been final written decisions where most of the claims were held to be not patentable.

[00:29:59] Speaker 03:
Those are in a stage for getting ready to come up on appeal.

[00:30:04] Speaker 03:
So this case is ahead of those.

[00:30:06] Speaker 01:
But not all of the claims, right?

[00:30:08] Speaker 01:
I forget which is it.

[00:30:09] Speaker 01:
Claim to be defendant.

[00:30:11] Speaker 03:
That's correct.

[00:30:12] Speaker 03:
That's exactly correct, Your Honor.

[00:30:14] Speaker 02:
All right.

[00:30:14] Speaker 02:
Thank you very much.

[00:30:16] Speaker 03:
Thank you, Your Honors, for your attention and time.

[00:30:19] Speaker 03:
Mr. Lix?

[00:30:22] Speaker 00:
Okay, I will just briefly address some of Appellee's points.

[00:30:27] Speaker 00:
The Appellees are again improperly focusing on individual claim limitations and not the claimed combination of limitations.

[00:30:36] Speaker 00:
What is non-conventional in the claims is the claimed combination of the structural components and the claimed use of those components to produce a resultant digital image.

[00:30:49] Speaker 00:
That is not something that the appellees have addressed.

[00:30:55] Speaker 00:
Also, this is not a process claim.

[00:30:57] Speaker 00:
This is an apparatus claim that discloses details of a specific and unconventional digital camera architecture.

[00:31:03] Speaker 00:
Those details are themselves patent eligible.

[00:31:07] Speaker 00:
The appellees are suggesting that an apparatus claim is more susceptible to attack under Section 101 than a process claim because the apparatus claim is going to include the type of process steps that would be included in a process claim.

[00:31:19] Speaker 00:
But the structure itself is patent eligible.

[00:31:22] Speaker 00:
And certainly, the combination of the structure with the image enhancement is patent eligible.

[00:31:29] Speaker 00:
So the continued disregard for the combination of structural limitations in the claim is erroneous.

[00:31:38] Speaker 00:
Also, with regard to Berkheimer, that case is simply irrelevant.

[00:31:43] Speaker 00:
And also, a number of the other cases that appellees have relied on in their briefing

[00:31:49] Speaker 01:
uh... because there's no purportedly unconventional architecture component components in those cases uh... that's a common theme throughout those cases as opposed to uh... the present case where we have a specific uh... architecture this is just a reminder that you can't can you address uh... nagumo which was addressed by what was one basis for a for a rejection in the prosecution history at uh... one seventeen putting aside

[00:32:20] Speaker 01:
the enhancement limitation, does that not show at least one arrangement that falls within claim one?

[00:32:33] Speaker 00:
No, the examiner found that that reference did not disclose an image sensor that senses to a full reason of visible color spectrum.

[00:32:40] Speaker 00:
And actually, the reason why the claims were found allowable was for that reason.

[00:32:45] Speaker 00:
It wasn't because of image enhancement.

[00:32:47] Speaker 00:
It was because of the failure of any of the references to disclose an inhibited sensor that's sensitive to a full region of visible color spectrum.

[00:32:55] Speaker 00:
With regard to closely position with respect to a common plane, that reference shows schematics.

[00:33:02] Speaker 00:
And appellants believe that just showing schematics without any sort of description of sensor placement, anything more detailed than schematics is not sufficient.

[00:33:11] Speaker 00:
So we have not conceded anything with regards to that reference.

[00:33:17] Speaker 00:
As counsel for appellees pointed out, the claims were allowed on the first office action, so there's no need to respond to that finding.

[00:33:24] Speaker 00:
But that has not been completed.

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

[00:33:30] Speaker 02:
We thank both parties and the case is submitted.

[00:33:33] Speaker 02:
That concludes our proceeding for this morning.

[00:33:35] Speaker 02:
Thank you all.

[00:33:38] Speaker 02:
The honorable court is adjourned until tomorrow morning at 10 a.m.