[00:00:00] Speaker 04:
Number 21, 2191, tooltvnetwork.com, Incorporated, against Blackboard, Incorporated.

[00:00:09] Speaker 04:
Ms.

[00:00:09] Speaker 04:
Addy.

[00:00:11] Speaker 04:
I thought I recognized you, Ms.

[00:00:12] Speaker 04:
Addy.

[00:00:13] Speaker 04:
Proceed.

[00:00:14] Speaker 01:
Thank you.

[00:00:14] Speaker 01:
Good morning, Your Honors.

[00:00:16] Speaker 01:
This is a claim construction case involving indefiniteness of two limitations.

[00:00:22] Speaker 01:
And I'd like to focus on those limitations, but of course, I'm happy to answer any other questions you may have.

[00:00:28] Speaker 01:
The district court aired

[00:00:29] Speaker 01:
in holding that the specification failed to disclose an algorithm.

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This case presents an opportunity for the court to provide some guidance on the difference between identifying algorithmic support in the specification under 112.6 and performing a separate enablement analysis under 112.2.

[00:00:49] Speaker 01:
112.6 software cases, algorithms need only disclose adequate defining structure to render the balance of the claims understandable.

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Whether that disclosure would enable one of skill in the art to use the invention is not an issue.

[00:01:07] Speaker 01:
Here, your honor, both parties point to the same structure or steps in the specification, but the dispute is really about whether that structure includes an algorithm.

[00:01:22] Speaker 01:
Turning to means for performing, the district court found that the function

[00:01:28] Speaker 01:
of this limitation was performing at least one of a plurality of predetermined functions executed with the selection of each particular hotspot.

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However, the district court then erred because the court found that nothing in the specification discloses an algorithm for how to perform the function.

[00:01:51] Speaker 01:
That's not the proper question.

[00:01:53] Speaker 01:
The question should be whether the patent discloses structure

[00:01:57] Speaker 01:
that is used to perform the claimed function.

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The structure that satisfies this function of performing at least one of a plurality of predetermined functions can be found in the embodiments described in the spec and exemplified in figures 1C and 2B.

[00:02:18] Speaker 01:
So looking at the specification, and first, at appendix 25, column 6, 4 through 17, the system

[00:02:28] Speaker 01:
The system first reads a hotspot data file and the patent defines that a hotspot data file is a file that provides specific tags that identify a predetermined function and other information like timestamps on the video.

[00:02:45] Speaker 01:
Once it reads the hotspot data file, then the system opens information relevant to the hotspot referenced item.

[00:02:54] Speaker 03:
Can that function be performed by

[00:02:58] Speaker 03:
a number of different algorithms?

[00:03:05] Speaker 01:
The means for performing function.

[00:03:08] Speaker 03:
Yes.

[00:03:10] Speaker 01:
Yes, Your Honor, I believe the claim says the means for performing at least one of, and there are in one of the

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Figures, figure 2B, there are four different ways to do it.

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And in figure 1C, there are four different ways.

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And they are a little bit different.

[00:03:29] Speaker 01:
So yes, Your Honor, there are several ways to perform at least one predetermined function.

[00:03:34] Speaker 03:
But if we just pick one, because the claim was construed as requiring only one, if we just pick one, I assume that there are any number of different ways in which to do that.

[00:03:47] Speaker 01:
Yes, Your Honor.

[00:03:47] Speaker 01:
And one example might be to look at, for example, shop mode.

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And the shop mode says that once you're in the shop mode, the predetermined function is to add an item to the shopping cart.

[00:04:03] Speaker 03:
Well, let's just focus on that, to add an item to a shopping cart.

[00:04:08] Speaker 03:
I assume that

[00:04:10] Speaker 03:
that there are dozens of different pieces of software that would perform that function.

[00:04:18] Speaker 01:
Am I correct?

[00:04:20] Speaker 01:
That's correct.

[00:04:20] Speaker 03:
And also... Isn't the specification then lacking in identifying even one?

[00:04:29] Speaker 01:
The specification identifies the... Let me back up.

[00:04:34] Speaker 01:
The means plus function limitation is a means for performing

[00:04:40] Speaker 01:
one of a predetermined function.

[00:04:43] Speaker 01:
And the means for performing one of a predetermined function talks about identifying with the hotspot data file and then, for example, in the shop mode, which can have different functions, adding an item to the shopping cart.

[00:05:02] Speaker 01:
Now, the specification doesn't have to

[00:05:04] Speaker 01:
disclose all the ways you can add an item to the shopping cart.

[00:05:08] Speaker 01:
And in fact, that would be an enablement discussion about whether one of Ordinary Skill and the Art would know how to do that.

[00:05:13] Speaker 01:
But even more so, because the mode is shop mode and the predetermined function is adding an item to the shopping cart, you could also be in shop mode doing other functions as well.

[00:05:28] Speaker 01:
So it doesn't claim all of the functions

[00:05:32] Speaker 01:
that are the predetermined functions.

[00:05:34] Speaker 01:
There are many ways to be in shop mode and, as the claimant says, place an item in the shopping cart.

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And I believe, to answer your question, which is, do we have to specifically describe the code for adding an item to a shopping cart?

[00:05:49] Speaker 01:
No.

[00:05:51] Speaker 01:
We have to set forth an algorithm that one of skill would recognize corresponds to the claim.

[00:05:56] Speaker 01:
And here, the claim uses the same language, shop mode, and the claim

[00:06:01] Speaker 01:
And the algorithm, at least, is a two-step algorithm, or sometimes three, depending on what mode is the predetermined mode.

[00:06:11] Speaker 01:
So, for example, the specification is clear that it identifies the hotspot data file as one step, it accesses it, it performs specific tasks, that's another step, based on what the predetermined mode is.

[00:06:28] Speaker 01:
And then, once it does that, it moves to the predetermined

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it's able to perform the function, which is the predetermined function that's claimed.

[00:06:37] Speaker 02:
I guess the concern I have is we do have a body of case law that talks about how it's inappropriate to just point to, say, a black box in your disclosure and your specification and declare that as being your corresponding structure, i.e.

[00:06:56] Speaker 02:
your algorithm for performing a recited function.

[00:06:59] Speaker 02:
And that is because to do that would essentially permit purely functional claiming.

[00:07:07] Speaker 02:
And when it comes to means plus function limitations, you are required to provide some kind of structure to bound and give some definite boundaries to the structures that you are limiting yourself to.

[00:07:21] Speaker 02:
And when I do look at figure 2b,

[00:07:26] Speaker 02:
It seems like the structure that you have for performing any and all of these different modes, shop mode, entertainment mode, bid mode, link mode, it's the applet.

[00:07:38] Speaker 02:
The applet is adding an item to a shopping cart.

[00:07:43] Speaker 02:
The applet is opening up some entertainment media.

[00:07:49] Speaker 02:
The applet is running some bid.

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And in the reply below, it made it very clear that the applet is the mechanism for performing all these functions.

[00:08:05] Speaker 02:
And the problem with the word applet is it's so generic that it's essentially a stand-in word.

[00:08:13] Speaker 02:
This is the concern, that it's nothing more than a stand-in word for any and all software that can get you these desired functions.

[00:08:25] Speaker 02:
That's the concern with how I'm looking at this patent and how it might fit in with our case law.

[00:08:31] Speaker 02:
Can you tell me what's wrong with that thinking when it appears, as you said below to the district court, that the so-called quote unquote applet with nothing more is the mechanism for performing all of these recited functions?

[00:08:48] Speaker 01:
First, Your Honor.

[00:08:50] Speaker 01:
If you look at the disclosure, and I believe it's column six starting at line four, the disclosure says that you have to have a hotspot data file as part of the steps for performing this function.

[00:09:02] Speaker 01:
And the hotspot data file provides specific information.

[00:09:05] Speaker 01:
So you don't have a one-step black box algorithm here.

[00:09:09] Speaker 01:
You have at least a two-step and maybe a three-step depending on the function that's being performed.

[00:09:15] Speaker 01:
Now when you get into the black box line of cases, I think what's important to note here

[00:09:20] Speaker 01:
is that algorithms are different.

[00:09:25] Speaker 01:
Finding algorithms in a 1.12.6 analysis on software is different from determining whether the claim language is enabled.

[00:09:35] Speaker 01:
And finding algorithms, you look and see if there's an algorithm.

[00:09:38] Speaker 01:
And here there is a two or three step algorithm for that specific predetermined function.

[00:09:46] Speaker 01:
Patent shows several different steps once you do other functions, and it shows other steps getting into that function.

[00:09:52] Speaker 01:
But you do have a two or three step algorithm for that specific function.

[00:09:57] Speaker 01:
That should satisfy the means plus function requirement under aristocrat or all voice, because it's just identifying that there is an algorithm and that that algorithm is tied back to the claim.

[00:10:10] Speaker 01:
The concern here is the never ending

[00:10:14] Speaker 01:
How do you do this?

[00:10:15] Speaker 01:
How do you do this?

[00:10:16] Speaker 01:
How do you do this?

[00:10:17] Speaker 01:
And you could do that question forever.

[00:10:20] Speaker 03:
Well, for a piece of software, it seems to me you can describe the piece of software in terms of the function that it accomplishes or the mechanism by which it accomplishes that function.

[00:10:38] Speaker 03:
In other words, the steps, the specific

[00:10:42] Speaker 03:
software steps.

[00:10:45] Speaker 03:
And I think what the district court concluded was that when looking for structure in the specification, all the applicant or all the patentee has done is simply refer to the flow charts that describe the function without describing

[00:11:11] Speaker 03:
how it's done, in other words, without describing the structural steps.

[00:11:17] Speaker 03:
And it seems to me that that's missing.

[00:11:22] Speaker 01:
And the case law working with softwares and algorithms in 112.6 says that you identify the algorithm and its correspondence to the claim.

[00:11:34] Speaker 01:
But in addition to identifying

[00:11:37] Speaker 01:
figures 1C and figure 2B, which talk about different ways to perform these functions, the specification also describes performing these functions.

[00:11:50] Speaker 03:
Yes, but again, the claim is written as a description of the function and the specification recites that function.

[00:12:03] Speaker 03:
Where's the structure?

[00:12:04] Speaker 03:
Where is the algorithm that performs that function?

[00:12:08] Speaker 01:
The algorithm that performs that function is the algorithm set forth.

[00:12:13] Speaker 01:
And when you're doing this type of analysis.

[00:12:14] Speaker 03:
The algorithm that performs the function is the statement that an algorithm performs a function?

[00:12:21] Speaker 01:
No, Your Honor.

[00:12:22] Speaker 01:
The algorithm is accessing the specific hotspot data file.

[00:12:28] Speaker 01:
looking to see what specific information is related to this specific predetermined function, then making a decision based on that predetermined function.

[00:12:37] Speaker 03:
Yeah, but where is there a description of how that is done?

[00:12:40] Speaker 01:
There doesn't have to be a description in a means plus function analysis.

[00:12:45] Speaker 01:
Also, you're worried about the appellate.

[00:12:51] Speaker 01:
The appellate is one embodiment.

[00:12:52] Speaker 01:
I think they talk about another embodiment in 1C, but the

[00:12:58] Speaker 01:
District judge and the magistrate decided this case based on the intrinsic record alone.

[00:13:04] Speaker 01:
She did not consult what she says her, her decision is in accord with, um, appellee's expert.

[00:13:13] Speaker 01:
However, appellee's expert disclosed the same structure and she, they, he claimed it's not an algorithm, but she didn't analyze whether that was sufficient.

[00:13:24] Speaker 01:
She just said, I can base my decision on the intrinsic record.

[00:13:28] Speaker 01:
And the question here on a 112-6 is, does the intrinsic record disclose an algorithm that supports the claim?

[00:13:37] Speaker 01:
And it certainly does.

[00:13:38] Speaker 01:
An algorithm can be a simple one-step or two-step analysis.

[00:13:43] Speaker 01:
We're not avoiding a more detailed analysis here.

[00:13:46] Speaker 01:
A more detailed analysis comes under

[00:13:48] Speaker 01:
other sections of 112.

[00:13:50] Speaker 02:
As I understand it, part of the problem below in front of the magistrate judge was that she didn't feel like she was getting much help from the plaintiff's counsel in terms of identifying that structure.

[00:14:05] Speaker 02:
There was the claim chart, which cited in a massive string site to all kinds of parts of the disclosure.

[00:14:14] Speaker 02:
I mean, there was then the opening brief

[00:14:18] Speaker 02:
did a string site, but then didn't explain the contents of the string site.

[00:14:24] Speaker 02:
And then there was the reply section, which talked about the applet as the mechanism.

[00:14:29] Speaker 02:
Was there something before the magistrate that specifically identified these hotspot tags that you're talking about?

[00:14:38] Speaker 01:
Yes, Your Honor, there was.

[00:14:41] Speaker 01:
First, let me see, let me find it.

[00:14:46] Speaker 01:
Appellees specifically cited to these hotspot tags.

[00:14:49] Speaker 01:
They cited to these tags in their markman brief at 637.

[00:14:53] Speaker 01:
The opponent's expert cited it at 771.

[00:14:59] Speaker 02:
However- I guess I'm talking about whether your side cited to them as part of the corresponding structures for performing any or all of these modes.

[00:15:13] Speaker 01:
Your Honor, we did.

[00:15:14] Speaker 01:
I believe we cited to them.

[00:15:16] Speaker 01:
in that citation that you referenced at appendix 636.

[00:15:22] Speaker 01:
We didn't go into detail about them in our opening brief on claim construction, but that is the nature of these briefings, Your Honor.

[00:15:30] Speaker 01:
They have the burden to prove indefiniteness.

[00:15:33] Speaker 01:
And so once they set forth their indefinite case, which for the first time was in their response brief, then Cool TV attempted to address that.

[00:15:45] Speaker 01:
In their indefiniteness case, your honors, they go into great detail about this structure and the steps that are disclosed in the specification.

[00:15:56] Speaker 01:
So we were entitled to address that.

[00:16:00] Speaker 01:
And then when the magistrate made an R and R, she said there was no algorithm.

[00:16:08] Speaker 01:
So at that point, we are entitled to address

[00:16:13] Speaker 01:
defendants, appellees, arguments that have to do with all of the same structure.

[00:16:19] Speaker 01:
So the parties are citing the same structure.

[00:16:21] Speaker 01:
The question is whether your precedent says that that structure is an algorithm and whether under a 112.6 analysis, that algorithm has to take the separate step and continue to answer why.

[00:16:36] Speaker 01:
I'm sorry, I see I'm in my rebuttal time.

[00:16:44] Speaker 04:
Thank you.

[00:16:51] Speaker 00:
Thank you, your honor.

[00:16:58] Speaker 00:
Trying to figure out how to use that mask.

[00:17:00] Speaker 00:
I apologize.

[00:17:02] Speaker 00:
May it please the court.

[00:17:04] Speaker 00:
I think the larger problem here is that by stating that the algorithm is now access data file.

[00:17:14] Speaker 00:
and then do the steps in the flow chart, all we're doing is repeating the functionality.

[00:17:20] Speaker 00:
The function that was found by the court below for the means for performing step was to perform at least one of a plurality of predetermined functions executed with the selection of each hotspot.

[00:17:34] Speaker 00:
We know from Appellant's own briefing at page 15 of the blue brief that they call

[00:17:43] Speaker 00:
each of those predetermined functions, the things that are done within the different modes.

[00:17:49] Speaker 00:
On pages 17 and 18 of the same blue brief, when they list out what the function is that has to be performed in each mode, they list shop mode on the left, for example, and then they list what they claim to be the algorithm on the right.

[00:18:05] Speaker 00:
But the problem is shop mode has been defined in this case and is not appealed here.

[00:18:12] Speaker 00:
The definition of a shop mode is a mode that allows for something to be placed into a cart.

[00:18:19] Speaker 00:
They then say the algorithm is access a data file, but it doesn't tell you how to access that file or how to figure out what in that file you need to get.

[00:18:28] Speaker 04:
But they're not claiming novelty for their mechanism for performing that.

[00:18:34] Speaker 00:
I agree your honor, but the second part of their algorithm, I'm saying the first step is not an algorithm because even if the first step just says access some information, the second step then says perform the function.

[00:18:48] Speaker 00:
And so the function of the predetermined function in the claim for shop mode is put something in a cart.

[00:18:57] Speaker 00:
If you look at page 17, they claim their algorithm is access information

[00:19:03] Speaker 00:
and put something in a cart.

[00:19:04] Speaker 00:
So we are merely repeating the functional language of what the function is supposed to be doing.

[00:19:11] Speaker 03:
Let me ask you this.

[00:19:13] Speaker 03:
In the context of software and algorithms, every piece of software is nothing more than a collection of code.

[00:19:26] Speaker 03:
It's just arranged to perform a function.

[00:19:31] Speaker 00:
Understood.

[00:19:32] Speaker 03:
So in a way, it's not like a piece of, you know, a mechanism of some sort.

[00:19:37] Speaker 03:
That is, you know, a gear connected to a spindle connected to something.

[00:19:42] Speaker 03:
It's every piece of software is just an arrangement of codes.

[00:19:48] Speaker 03:
And there's certainly no requirement in any of our precedent that to support a means plus function recitation of a piece of software, you have to recite the code.

[00:20:00] Speaker 03:
And I assume you would agree with me that it would be enough to say, you know, means for doing this, that, and the other.

[00:20:09] Speaker 03:
And then in the specification, it shows different blocks.

[00:20:14] Speaker 03:
And each block is described as a first block containing a piece of software with codes arranged so that an input signal is processed and

[00:20:29] Speaker 03:
distributed as an output signal.

[00:20:31] Speaker 03:
I mean, that would be certainly a description of the structure represented by that piece of software.

[00:20:40] Speaker 03:
So why is it necessary to go through all of those words when you can basically say, in effect, just repeat the function and say the structure for supporting this means plus function clause

[00:20:56] Speaker 03:
is simply a piece of software which is programmed to perform this function.

[00:21:03] Speaker 00:
But that's exactly the problem, Your Honor.

[00:21:05] Speaker 00:
So 112.6 is supposed to be a shortcut and it's a shortcut that enables you to simply say means for performing the shop mode.

[00:21:14] Speaker 00:
Your quid pro quo for using means plus function is you don't get every way that the shop mode could be accomplished.

[00:21:21] Speaker 00:
You don't get every way that you can put something into a cart.

[00:21:24] Speaker 00:
You have to list the steps that you claim for putting something into a shopping cart.

[00:21:30] Speaker 00:
The specific way.

[00:21:32] Speaker 00:
It doesn't have to be the code itself.

[00:21:34] Speaker 00:
It doesn't have to be the ones and zeros.

[00:21:36] Speaker 00:
But you would have to say, for example, in order to put something into a cart, you first grab it using a pointer and you drag it over into the cart.

[00:21:44] Speaker 00:
Because there are so many different ways that information could be added into a cart.

[00:21:49] Speaker 00:
That was one of your honor's questions in the beginning.

[00:21:52] Speaker 00:
Because there are so many different ways that something could be put into a cart, simply claiming the function of putting something into a cart includes putting something into a cart, you're back in the land of, I get every way of doing it, even though I've never actually disposed anything.

[00:22:07] Speaker 00:
And that is the quid pro quo that's required for 112 paragraph 6 claiming.

[00:22:14] Speaker 00:
very close to the OGMI case in which there were means recited for, I believe it's processing, let me get the exact language.

[00:22:24] Speaker 00:
In OGMI, the means were for assembling readable code modules.

[00:22:32] Speaker 00:
Just like in this case, they pointed to figure five, a figure in their patent, and that figure simply had a box saying provide the response and assemble the code module.

[00:22:45] Speaker 00:
Just like here where it simply says, put an applet, sorry, put something in the cart using an applet.

[00:22:52] Speaker 00:
In other words, just do it.

[00:22:54] Speaker 00:
So this case is just like Odmi where it was found indefinite to have basically a black box that says, do what the functionality that is claimed is supposed to do.

[00:23:05] Speaker 00:
And that's all we have in figure 2C.

[00:23:08] Speaker 00:
You simply have, once you have the information, once you have the right information, although we don't still tell you how to do that,

[00:23:13] Speaker 00:
then you just perform the function, put something in the cart.

[00:23:18] Speaker 00:
Same thing is true for bid, same thing is true for all of the other modes because we have the definition that bid mode requires allowing something to be bid on, etc.

[00:23:29] Speaker 00:
and that's the exact same language that's in the specification

[00:23:33] Speaker 00:
and in the box at figure 2C.

[00:23:36] Speaker 00:
Multiple ways of doing those things, but none are specifically pointed out in the specification.

[00:23:41] Speaker 00:
Therefore, the quid pro quo has not been met.

[00:23:45] Speaker 04:
Are you saying that the code needs to be included in the disclosure?

[00:23:52] Speaker 00:
No, your honor.

[00:23:54] Speaker 04:
If in fact, such as whatever it is, putting it in the shopping cart is just so standard

[00:24:03] Speaker 04:
throughout that can be performed in any of many different ways, none of which has anything to do with the overall sequence of steps, which is presumably the novelty of this description.

[00:24:23] Speaker 00:
Well, but again, your honor, it doesn't have to necessarily go specifically to the novelty.

[00:24:27] Speaker 00:
The whole point is you have to tell the reader of ordinary skill in the art how to do the thing that you're claiming is means plus function.

[00:24:36] Speaker 04:
The only way you can tell them how to do it is to provide an example of the code that does it.

[00:24:43] Speaker 00:
Again, no, you do not have to include the code.

[00:24:46] Speaker 00:
For example, if they had had a flow diagram that said in order to put something into a card,

[00:24:53] Speaker 00:
You first highlight it with a pointer and then you drag it into the cart.

[00:24:56] Speaker 00:
We would know that that was the way of putting something into a cart that they were claiming.

[00:25:02] Speaker 04:
You're saying you draw a box around the words and that would satisfy it?

[00:25:08] Speaker 00:
Potentially, Your Honor, yes.

[00:25:09] Speaker 00:
And that's exactly what they said in Ogmi.

[00:25:11] Speaker 00:
For example, the very notion that all Ogmi said was assemble the code module.

[00:25:17] Speaker 00:
That was what was in figure five.

[00:25:19] Speaker 00:
That's exact, that was the functional thing that had to happen, was assembling the code module.

[00:25:24] Speaker 04:
That's what they say in their specification.

[00:25:27] Speaker 04:
They just, again, didn't draw a box around it with arrows.

[00:25:31] Speaker 00:
But they didn't do anything, your honor.

[00:25:33] Speaker 00:
Everywhere in the specification, when shop mode is discussed, all it says is put an item in a cart.

[00:25:39] Speaker 00:
It never says anything more than that.

[00:25:42] Speaker 00:
But the function that has to be performed by this means plus function analysis is put something in a cart.

[00:25:49] Speaker 00:
So what we have is everything that the case law tells us, aristocrat, blackboard, that you cannot do.

[00:25:54] Speaker 00:
You cannot merely repeat the functionality and say, do it.

[00:25:58] Speaker 00:
Because you're not doing the quid pro quo of telling people what it is that you're carving out as your means for performing.

[00:26:08] Speaker 02:
If hypothetically, the function resided in the means plus function claim,

[00:26:13] Speaker 02:
is actually enough to be regarded as structure itself or a legitimate algorithm, then wouldn't that take the claim limitation out of 112f?

[00:26:25] Speaker 02:
It would no longer be a means plus function limitation.

[00:26:28] Speaker 00:
Theoretically, your honor, if there were adequate structure to do that, I could see a case in which that would happen.

[00:26:34] Speaker 00:
And then even though it said it was a means clause, it wouldn't be means plus function.

[00:26:38] Speaker 00:
But here, everyone agrees that these are means plus function terms subject to means plus function requiring an algorithm.

[00:26:45] Speaker 00:
And there is no structure in put something in a cart when the function is to put something into a cart.

[00:26:52] Speaker 00:
We also have an absolute dearth of evidence that there were simple

[00:26:57] Speaker 00:
ordinary well-known ways of doing such a thing.

[00:27:00] Speaker 00:
In fact, the only evidence in the record is the expert declaration from Appellees that said when he scoured the record, he couldn't understand how to perform all of the functions because it simply repeated the functional language itself.

[00:27:15] Speaker 00:
And so we're back in a tautology, which is

[00:27:18] Speaker 00:
Because I said perform a function, I didn't tell you what the function was.

[00:27:22] Speaker 00:
We have to then look, well, how do we know what that function is?

[00:27:26] Speaker 00:
We know because it's not just any function, it's the predetermined function.

[00:27:30] Speaker 00:
The claim tells us that the predetermined function is understood by virtue of which mode is selected.

[00:27:37] Speaker 00:
We have the definitions of the modes that tell us, therefore, what the predetermined function is.

[00:27:43] Speaker 00:
That's what is in the blue brief at pages 15, 17, and 18.

[00:27:47] Speaker 00:
So in order for the algorithm to be complete, there has to be structure for putting something into a cart when you're in shot mode.

[00:27:58] Speaker 00:
And that doesn't exist.

[00:27:59] Speaker 04:
What would that structure consist of?

[00:28:01] Speaker 00:
For example, there could have been a flow diagram that explained what one had to do in order to put something into a cart.

[00:28:10] Speaker 00:
Doesn't have to be the code.

[00:28:11] Speaker 00:
It can be a flow diagram, or it even could be prose.

[00:28:15] Speaker 00:
And the prose could have said something along the lines of,

[00:28:18] Speaker 00:
highlight the material and drag it to the cart.

[00:28:21] Speaker 03:
So instead of one box, two boxes would do it?

[00:28:24] Speaker 00:
Potentially.

[00:28:25] Speaker 00:
I don't know what they were going to put in the second box, but you definitely had to give some structure for accomplishing the function of adding something to a cart.

[00:28:35] Speaker 00:
Without that, we have no way of knowing how these claims are constrained and the quid pro quo has not been met.

[00:28:41] Speaker 00:
Instead, it just says, get some information,

[00:28:44] Speaker 00:
and do the function.

[00:28:46] Speaker 00:
And that then allows them to claim every way of doing it, which is exactly what means plus function is not supposed to do.

[00:28:52] Speaker 00:
You're not supposed to get every way of doing something.

[00:28:55] Speaker 00:
You're only supposed to get the ways of doing something that are specifically disclosed in the specification.

[00:29:01] Speaker 04:
And here- I'm looking at your, at the specification.

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

[00:29:05] Speaker 04:
Two A, two B, and so on.

[00:29:07] Speaker 04:
Yes.

[00:29:07] Speaker 04:
What is missing?

[00:29:13] Speaker 04:
from these diagrams.

[00:29:14] Speaker 00:
So for example, as Your Honor follows the flow diagram down in 2A, sorry, in 2B, what you see is solely that you have information.

[00:29:28] Speaker 00:
And if I'm looking, for example, at 238, did the user click in the hotspot?

[00:29:36] Speaker 00:
Is the applet in shop mode?

[00:29:38] Speaker 00:
So now we know we're in shop mode.

[00:29:40] Speaker 00:
The next box simply says the applet adds the item specified by the custom defined object to the shopping cart.

[00:29:48] Speaker 00:
The specification tells us that is the function of being in shop mode.

[00:29:54] Speaker 00:
So now to perform the predetermined function of shop mode, it says perform putting something into a cart.

[00:30:02] Speaker 00:
What they would have had to have done, Your Honor, is to have something either after or during this box that said,

[00:30:10] Speaker 00:
How do you put something into a cart?

[00:30:13] Speaker 00:
Not simply that something gets put in, because putting it in is the function that needs to be performed.

[00:30:20] Speaker 04:
You say how, but you say it doesn't need the algorithm.

[00:30:24] Speaker 00:
It doesn't have to have, it has to have an algorithm, your honor, but it doesn't have to have the code.

[00:30:29] Speaker 00:
It doesn't specifically have to have the JavaScript.

[00:30:31] Speaker 00:
It doesn't have to have the ones and zeros, but it does have to give you a recipe, the algorithm of how to do it.

[00:30:38] Speaker 03:
In other words, how detailed does that recipe need to be?

[00:30:42] Speaker 00:
It needs to be detailed enough that someone understands the steps to perform the function.

[00:30:47] Speaker 00:
So here, something as simple perhaps, and again, this is all completely hypothetical, but something perhaps as simple as highlight the item to be purchased, double click on it so that it goes into the cart, might have been enough.

[00:31:01] Speaker 00:
But they never did anything like that.

[00:31:03] Speaker 00:
They just said, the function is put it in a cart, and the structure is put it in a cart.

[00:31:10] Speaker 03:
There is no how.

[00:31:12] Speaker 03:
I mean, this specification is directed to a person of skill in the art.

[00:31:16] Speaker 03:
And if a person of skill in the art would look at this box 242 where it says the applet adds the items specified by the custom defined object to the user's shopping cart, if a person of ordinary skill in the art would say, fine, I know exactly what that is, that one step is enough.

[00:31:38] Speaker 03:
That tells me I go and I look for the custom defined object and

[00:31:45] Speaker 00:
I put it in the shopping cart.

[00:32:01] Speaker 00:
you're not constraining yourself to what you've disclosed.

[00:32:04] Speaker 00:
You're saying, I can have any method that anyone skilled in the art could do.

[00:32:08] Speaker 00:
That's 1-12-2 enablement.

[00:32:10] Speaker 03:
I'm not talking about enablement.

[00:32:12] Speaker 03:
I'm talking about a disclosure.

[00:32:14] Speaker 03:
And I'm saying that if a person of skill in the art recognizes Box 242 as the piece of software that performs that function, isn't that enough?

[00:32:28] Speaker 00:
No, it's not, because again,

[00:32:30] Speaker 00:
It's not telling you how to do it.

[00:32:33] Speaker 00:
The function is to put something into the cart and all the specification and that box say is put something in the cart.

[00:32:42] Speaker 00:
They don't tell you how to do it.

[00:32:44] Speaker 00:
They don't carve out from all of the different ways of putting something into a cart.

[00:32:49] Speaker 00:
how that would happen.

[00:32:50] Speaker 00:
And that's true for all of the different modes.

[00:32:53] Speaker 00:
I don't think so, Your Honor, not here, because it's very clear that all they're doing is repeating the very functionality that is required by those predetermined functions, by those definitions in the modes.

[00:33:06] Speaker 00:
And if all you're saying is do what the mode says to do and you don't say anymore, that violates 112.6.

[00:33:13] Speaker 00:
And you cannot use, but someone would understand it,

[00:33:17] Speaker 00:
That's in the function media versus Google case.

[00:33:19] Speaker 00:
And again, in aristocrat at 1337, where those plaintiffs had tried to say, but people know how to craft something that would store something or that would do the processing.

[00:33:32] Speaker 00:
I see I'm out of time.

[00:33:33] Speaker 00:
I appreciate your honors very much.

[00:33:35] Speaker 04:
Any more questions?

[00:33:39] Speaker 04:
Okay.

[00:33:39] Speaker 04:
Good.

[00:33:39] Speaker 04:
Thank you.

[00:33:40] Speaker 00:
Thank you, your honor.

[00:33:48] Speaker 01:
Your honor, we're here asking how, how, how, and that is an enablement.

[00:33:54] Speaker 01:
That is another word for unending disclosure.

[00:33:57] Speaker 01:
That is the slippery slope that we're worried about.

[00:34:00] Speaker 01:
Counsel admitted that there are at least two steps in this algorithm.

[00:34:05] Speaker 01:
Read the data and put it in, example, a shopping cart or one of the other predetermined functions.

[00:34:12] Speaker 01:
Two steps are enough according to our case law and

[00:34:17] Speaker 01:
I want to return for a minute to Appalette because the Appalette is the software that performs the structure.

[00:34:25] Speaker 01:
It's not the structure itself, but it's the software that performs the structure.

[00:34:29] Speaker 01:
And that's important because your honor, the expert, their expert testified that Appalettes were known at 261 to 262 of the record.

[00:34:38] Speaker 01:
And in addition, our prosecution reflects an affidavit from a programmer where that programmer said,

[00:34:46] Speaker 01:
that based on this information, he would know how to program this invention.

[00:34:54] Speaker 01:
And that's at 498 of the record.

[00:34:57] Speaker 01:
So I believe this represents a good case because the court need only decide if there's an algorithm and hopefully resolve some of the areas where the lower courts may need guidance on when do you stop asking the unending question how.

[00:35:13] Speaker 01:
And I believe you shouldn't ask the question how on 112.6.

[00:35:18] Speaker 04:
Any questions for counsel?

[00:35:22] Speaker 04:
Thank you.

[00:35:22] Speaker 04:
Thanks to both counsel.

[00:35:24] Speaker 04:
The case is taken under submission.