[00:00:00] Speaker 01:
Our next case is Weisner v. Google, LLC, case number 21-2228.

[00:00:05] Speaker 01:
Mr. DePriester, you've reserved three minutes of your time for rebuttal, is that correct?

[00:00:14] Speaker 01:
That's correct, Your Honor.

[00:00:15] Speaker 01:
Okay, you may proceed, sir.

[00:00:17] Speaker 02:
May it please the Court, Matthew DePriester, on behalf of Appellant Sholem Weisner.

[00:00:23] Speaker 02:
We're here today because the district court improperly shifted the burden to the inventor to prove that his patent was not abstract.

[00:00:34] Speaker 02:
You look at the district court's opinion below, one of the things that the court specifically stated was that in the amended complaint, he was ordering Mr. Weisner to specifically show why the patent was not abstract.

[00:00:52] Speaker 02:
And by doing that, the board was coming in, or excuse me,

[00:00:56] Speaker 02:
the district court was coming in with the attitude that the patent already was abstract and that through the second amended complaint, the inventor had to actually affirmatively prove that it was not, thereby proving a negative, which was an improper procedure for a 12b6 motion, which is what Google had filed, alleging that the patent was invalid.

[00:01:22] Speaker 02:
And due to that procedural mistake,

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the district court ultimately ended up focusing on the second amended complaint in its entirety during the decision that the district court handed down.

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And you can see that in the opinion where throughout the entire analysis of the opinion, it focuses on what is pleaded in the second amended complaint.

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And we got to the second amended complaint because of issues with the first amended complaint.

[00:01:51] Speaker 04:
Even if all of that is incorrect, if the district court is still right that the claims are directed to abstract ideas, then isn't all that harmless?

[00:02:02] Speaker 02:
Well, I think that the district court didn't actually look at the claim, which is what ended up resulting in it.

[00:02:06] Speaker 04:
I know, but at least at step one, it's a legal question, which we get to look at to know about.

[00:02:15] Speaker 04:
If we think this patent is directed to an abstract idea and there's nothing at step two that makes it ineligible, all this procedural stuff doesn't matter, does it?

[00:02:27] Speaker 04:
I mean, you have to show to us that this patent claims subject matter eligible ideas.

[00:02:36] Speaker 04:
It's eligible.

[00:02:38] Speaker 04:
I just don't understand why we're talking about

[00:02:40] Speaker 04:
not that I disagree with you, it did seem a little odd about just looking at the complaint rather than the patent itself, which is what we normally look to determine eligibility, but I mean that's what

[00:02:54] Speaker 04:
Why aren't you talking about why this patent is eligible or not?

[00:02:57] Speaker 02:
We will get to that point, Your Honor.

[00:02:59] Speaker 02:
And the reason that we started off with the procedural part is because I think that it then skips the analysis that we would have had the benefit of below with the court actually going through claim by claim and showing what its analysis was.

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Because when you look at the district court's opinion, it summarizes all the patents in a single sentence saying, well, it's just a travel log.

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And then it proceeds on.

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And by not going through the analysis that it was supposed to go through, just claim by claim for each of these passes.

[00:03:27] Speaker 01:
On this last point that you just made, Counselor, do you have any legal authority that it's air for District Court to consider all the pens, all the assertive pens at once in the manner that you're claiming they did?

[00:03:42] Speaker 02:
Well, I think you look at what is the proper 101 analysis.

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And the 101 analysis, according to Alice, says that you have to look at what does the claim say.

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And so look at what the claim says for a particular patent.

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And it's not that you can't look at all patents together, but you have to at least acknowledge what the claims of the patents say.

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And rather than look at what the claims were in this particular instance, the district court said,

[00:04:10] Speaker 02:
Well, the patents just generally are travel walk.

[00:04:15] Speaker 05:
And you agree, though, that you have to argue those claims separately if you want the court to consider them separately, right?

[00:04:23] Speaker 05:
Yes.

[00:04:23] Speaker 05:
And I think you did argue them separately here.

[00:04:26] Speaker 02:
Yes, I think you absolutely do.

[00:04:28] Speaker 02:
You have to say, well, these are the claims that are at issue, and these are the claims that we'd like to go through and proceed to discuss.

[00:04:34] Speaker 05:
We understand that.

[00:04:35] Speaker 05:
But I'm going to agree with Judge Hughes right now and say, I think that you ought to address right now

[00:04:41] Speaker 05:
why certain claims, I think you've got some claims that are directed to obtaining location information and then creating a travel log and then you have some where you have, you know, tracking physical location.

[00:04:54] Speaker 05:
and then having an improved search technique.

[00:04:58] Speaker 05:
So maybe you should address those claims specifically.

[00:05:01] Speaker 02:
Let's do that.

[00:05:01] Speaker 02:
Let's go into the 905 patent.

[00:05:05] Speaker 02:
One of the big things, like I said, the district court's saying, well, this is just a travel log.

[00:05:08] Speaker 02:
Google's big point throughout this proceeding has been, it's just a travel log.

[00:05:11] Speaker 02:
And the claims for the 905 specifically are not just a, quote, travel log.

[00:05:18] Speaker 02:
A travel log is, I came to the Federal Circuit on the 7th,

[00:05:24] Speaker 02:
Here I am in DC.

[00:05:26] Speaker 02:
That's my travel.

[00:05:27] Speaker 02:
Here I'm one recording it.

[00:05:30] Speaker 02:
I can write that on a piece of paper.

[00:05:32] Speaker 02:
That's not what the claims are directed to.

[00:05:34] Speaker 02:
The claims are directed to a specific

[00:05:36] Speaker 02:
way of improving internet search functionality.

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You have to think about these claims were filed in 2007, so that's the time set that we're looking at.

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And in 2007, there's no dispute that when you performed an internet search, the search results were based on the number of clicks that a certain website would get.

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So if I search for shoes, it's going to show me what website was clicked on the most

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when a search for shoes had previously been run.

[00:06:06] Speaker 04:
So ranking based upon popularity.

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Is that an abstract idea?

[00:06:11] Speaker 02:
I think that ranking based on popularity, yes.

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So the problem with that is

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If you had a popular website, you were on the front page of a search and so people clicked on it and it just kept being more and more popular.

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And what the inventors said was, how do we get the little guy that isn't getting a lot of clicks, that isn't getting a lot of views up into the ranking where that person can then be clicked on, where he will be seen?

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And the way in which the inventors determined that they could do that was by actually combining physical interactions that people would have location histories, but with, but it was not just my physical going someplace.

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Other people's location histories to theirs and mine and vendors.

[00:07:00] Speaker 04:
So you had your new system is ranking based upon

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location histories of the user and other users rather than popularity.

[00:07:11] Speaker 02:
Well, commonality among members of a group having proven that they have actually physically gone to a location.

[00:07:19] Speaker 02:
So there's a redundancy there.

[00:07:21] Speaker 04:
Why isn't that just a different abstract idea on how to rank search results?

[00:07:28] Speaker 02:
Because in the context of an internet search result, you're looking at a

[00:07:33] Speaker 02:
computerized system that is just massive amounts of data.

[00:07:38] Speaker 04:
I mean you're not going to help yourself with me when you talk about using computers to process massive amounts of data because we've held in intellectual ventures, we've held in a bunch of cases that just because a computer makes computing massive amounts of data possible when it wasn't done in the physical realm doesn't make it eligible if all you're doing is implementing an abstract idea.

[00:08:00] Speaker 04:
So the idea of using

[00:08:02] Speaker 04:
user location data and other people's location data and the intersection between the two.

[00:08:08] Speaker 04:
What's non-abstract about that?

[00:08:12] Speaker 02:
It's the way in which the methods are accomplished in these particular patents, which is you have to set up a system that is able to gather that individual's location history

[00:08:26] Speaker 02:
and other people's location history and have the vendors part of the membership group so that when the search is run, you ultimately do end up achieving the prioritized ranking for a search that eyes the individual.

[00:08:43] Speaker 04:
So what in what you just told me is not either not abstract or not using routine conventional equipment?

[00:08:55] Speaker 02:
It's not abstract because it is a technological improvement of internet searching.

[00:09:02] Speaker 02:
And that's why I go back to... Let me ask you this.

[00:09:04] Speaker 04:
If you have an internet search engine, and whether or not it's patentable or not, if all you're doing is saying, instead of the search engine we have now, we are going to use this abstract idea to reorder the data in the way the search engine used to do it, is that making it patent eligible?

[00:09:26] Speaker 04:
Can an abstract idea applied to a pre-existing search engine make it patent-eligible, in your view?

[00:09:33] Speaker 02:
Can an abstract idea be applied to an internet search engine and therefore be patent-eligible?

[00:09:40] Speaker 04:
Isn't there something more that has to be added at step two, something that isn't an abstract idea?

[00:09:47] Speaker 02:
And I think there is something more.

[00:09:49] Speaker 04:
Well, that's what I asked you, though, and you didn't seem to answer it.

[00:09:55] Speaker 04:
buzzwords that you pulled out of our case law without explaining the specifics of, I mean, as I understand it, you're not claiming that you have created the method for location tagging, right?

[00:10:09] Speaker 04:
That's correct.

[00:10:09] Speaker 04:
Right.

[00:10:10] Speaker 04:
You're using phones and you're using, you know, addresses, whatever.

[00:10:14] Speaker 04:
That's all conventional.

[00:10:16] Speaker 04:
And the computer is conventional.

[00:10:18] Speaker 04:
All the hardware is conventional.

[00:10:19] Speaker 04:
Is there any non-conventional hardware?

[00:10:22] Speaker 04:
No, there's no hard non-conventional hardware, but I don't think that that precludes patentability in the same way... No, but the problem I'm having is if all you're doing is using conventional hardware to implement an abstract idea, that's prototypical Alice that says using computers to implement an abstract idea is not eligible.

[00:10:45] Speaker 04:
So what in your method is either not abstract or not conventional equipment?

[00:10:52] Speaker 02:
I would say it's the total order combination of the pieces just like here.

[00:10:58] Speaker 02:
I mean, this is my problem.

[00:10:59] Speaker 04:
You're just using buzzwords drawn from the case law without explaining the specifics here.

[00:11:04] Speaker 04:
What do you mean total, the ordered combination?

[00:11:08] Speaker 04:
Do you mean the ordered combination of the specific abstract idea of using user and other people's location histories when they intersect with a computer?

[00:11:21] Speaker 04:
Is that all you have?

[00:11:23] Speaker 02:
No, because it's not just we're using other people's information.

[00:11:26] Speaker 02:
It's the specific way in which that is used to ultimately achieve the prioritized search result.

[00:11:32] Speaker 04:
And here it's... Isn't it just when they intersect and then you have a separate ranking system?

[00:11:39] Speaker 04:
Isn't it more just... To me, it sounds like it's data characterization all the way down.

[00:11:46] Speaker 04:
Isn't that intellectual ventures?

[00:11:49] Speaker 02:
No, because what we're doing here is ensuring that the information that's being used for the search engine actually does provide the prioritized search in a reliable way.

[00:12:06] Speaker 02:
How do you do that?

[00:12:07] Speaker 02:
Exactly.

[00:12:08] Speaker 02:
How do we do it is you have the telecommunication system in your mobile phone so that I can gather information that way and it guarantees that when I go to the location that the vendor who's also a member of the group can transmit data that the vendor decides it wants to transmit comes to me.

[00:12:29] Speaker 02:
That's part of the membership organization.

[00:12:32] Speaker 02:
The same thing happens when a secondary person goes and visits other vendor members.

[00:12:37] Speaker 02:
So we have guaranteed transmission of information that the vendors determine is going to be transmitted to each user, okay?

[00:12:46] Speaker 02:
That's the benefit of the membership group.

[00:12:49] Speaker 04:
Now, when I go and perform my search- Is it the membership group that you're saying is the non-abstract idea?

[00:12:56] Speaker 02:
It is part of the ordered combination that ultimately provides the innovation.

[00:13:01] Speaker 02:
So now that I have reliability of the data that's being transmitted to me because the vendor is the one that's choosing it and sending it to my phone and the reference user's phone when they travel and actually go to a physical location, when I run the search,

[00:13:20] Speaker 02:
It looks for other members of the network.

[00:13:24] Speaker 02:
It finds my reference person who has information that's been dictated by the vendor.

[00:13:30] Speaker 02:
It pairs the two of them, and then it searches for another location that that reference person has actually been to.

[00:13:37] Speaker 02:
And I'm guaranteed to know that he's been there because he has to go there in order to get the vendor's information downloaded into his phone and uploaded into his database.

[00:13:46] Speaker 01:
Are the claims directed to a specific method or algorithm?

[00:13:50] Speaker 02:
I think that is the method as I'm describing it here.

[00:13:54] Speaker 02:
And it's similar to, this is where I was going, it's similar to deer in which the formation of, you ended up with a better rubber at the end.

[00:14:03] Speaker 02:
And it was looking at what variables do I need?

[00:14:06] Speaker 02:
And it would sense the variables in the mold.

[00:14:08] Speaker 05:
Can I interrupt you for a minute?

[00:14:10] Speaker 05:
Your view, if I understand it, is that

[00:14:13] Speaker 05:
this is an improved technique for searching.

[00:14:15] Speaker 05:
And it's like deer, even though it's software.

[00:14:18] Speaker 05:
But it is resulting in a better, an improved search result.

[00:14:25] Speaker 05:
That is your view?

[00:14:26] Speaker 02:
That is my view.

[00:14:27] Speaker 05:
OK.

[00:14:28] Speaker 05:
And is that what, so there's kind of like a fundamental disagreement on whether improving search technology itself could be a, is that an abstract idea?

[00:14:39] Speaker 05:
Or is it,

[00:14:40] Speaker 05:
a technological improvement to a technological problem.

[00:14:43] Speaker 05:
And how would you characterize it?

[00:14:45] Speaker 02:
I think that it is the order combination that is the totality of our method, the way in which we do it, resulting in the better search result that is the invention.

[00:14:55] Speaker 05:
And so that satisfies step one in your view?

[00:14:58] Speaker 02:
Yes.

[00:14:59] Speaker 05:
And what evidence do you have to support that?

[00:15:01] Speaker 05:
I mean this is another case where on dismissal we have to accept the statements in the specification and in

[00:15:09] Speaker 05:
your complaint as true, what statements would you refer to for the support that this is improving search technology?

[00:15:22] Speaker 02:
Well, essentially that there's been no dispute over the entirety of the briefing that the search techniques in 2007 were these popularity-based ranking of search.

[00:15:37] Speaker 04:
But you said that was abstract.

[00:15:40] Speaker 02:
just the idea, the concept of popular search results.

[00:15:43] Speaker 04:
So is the concept of location-based results also abstract?

[00:15:47] Speaker 02:
If you go that broad, yes.

[00:15:49] Speaker 02:
And you say, well, a concept of location-based results, search results, would be abstract.

[00:15:54] Speaker 02:
But anyway, that's the problem with that.

[00:15:56] Speaker 04:
Is a concept of location-based results that uses the intersection between a user and other member users

[00:16:09] Speaker 04:
Location results not abstract.

[00:16:12] Speaker 04:
I think that you're getting closer to the non abstract because I just don't understand that that sounds like crowdsourcing to me Like if all I'm relying on is my list of places that the restaurants I want to go to I keep a list That's location-based results.

[00:16:28] Speaker 04:
I've been there.

[00:16:29] Speaker 04:
I keep a list I know when I go back to that city these are a place if I also call ten of my friends that travel and say give me your lists

[00:16:38] Speaker 04:
And of these different places.

[00:16:41] Speaker 04:
And I want to cross-reference them to see if they like them too.

[00:16:44] Speaker 04:
Isn't that just another abstract idea of getting crowdsource results versus individual results?

[00:16:52] Speaker 02:
I see in that situation, you're relying on your friends to actually tell you.

[00:16:57] Speaker 04:
That sounds like an abstract idea to me.

[00:17:00] Speaker 02:
So I understand your position and what I'm trying to say.

[00:17:06] Speaker 04:
Well, I think it's our case law's position too.

[00:17:08] Speaker 04:
I think you have to do more than just come up with the abstract idea to say this is better search results.

[00:17:16] Speaker 04:
Search results in and of itself is not necessarily patent eligible.

[00:17:21] Speaker 04:
You seem to concede that search results that just show based on popularity, if that's all they're claiming.

[00:17:28] Speaker 04:
If you're ranking them based upon some other abstract idea, I don't see how the fact that it may be a better result is the kind of technological improvement we found in cases like core wireless and Infish and the security profiles and FinGen.

[00:17:44] Speaker 04:
It sounds much more like intellectual ventures to me.

[00:17:48] Speaker 02:
And here, I think that you have to see or you have to look at how the search is improved through the membership in the group among the vendors and the people searching.

[00:18:00] Speaker 02:
And that's what ultimately leads to the prioritized better search result.

[00:18:04] Speaker 02:
Because in your example, you say, well, I call my friend.

[00:18:06] Speaker 04:
Is the searching improved in a non-abstract way?

[00:18:09] Speaker 04:
Or is it just crowdsourcing among a member group?

[00:18:14] Speaker 02:
I don't think it's crowdsourcing because it is dependent on being a member of the group and having the vendors dictate the information that's coming in.

[00:18:23] Speaker 01:
Okay.

[00:18:23] Speaker 01:
You've eaten up all your time to restore your three-minute rebuttal.

[00:18:28] Speaker 01:
Let's hear from the other side now.

[00:18:30] Speaker 01:
Mr. Grigorian.

[00:18:33] Speaker 03:
Thank you, Your Honors.

[00:18:34] Speaker 03:
Todd Grigorian on behalf of Appellee Google LLC.

[00:18:38] Speaker 03:
May it please the court?

[00:18:39] Speaker 03:
I'd like to start.

[00:18:41] Speaker 03:
where opposing counsel left off, he's argued essentially one limitation of one of the four patents, which is the comparison of one person's location history against another.

[00:18:52] Speaker 03:
That is only in the 905 patent.

[00:18:55] Speaker 03:
And that is undoubtedly an abstract concept.

[00:19:01] Speaker 05:
What do we do about

[00:19:03] Speaker 05:
The fact that the specification talks about that one environment, which is a more specific use of these physical encounters in order to have an improved search result or improved search technology.

[00:19:21] Speaker 05:
What about the fact that the specification says things like, this is an improved method of searching the World Wide Web.

[00:19:28] Speaker 05:
Am I supposed to take it that all

[00:19:31] Speaker 05:
ways of searching for the World Wide Web, or just now we're going to say all of those are abstract from now on?

[00:19:36] Speaker 03:
No, Your Honor.

[00:19:37] Speaker 03:
And there are certainly technical solutions in search, as you can imagine.

[00:19:41] Speaker 03:
My client would take the position.

[00:19:43] Speaker 03:
I think so.

[00:19:45] Speaker 03:
It's just that this is also an abstraction.

[00:19:48] Speaker 03:
As the court said in Apple v. Amarath, there are different levels of generality at which you can describe an abstraction.

[00:19:58] Speaker 03:
And that is all that's going on here.

[00:20:00] Speaker 05:
I mean, I can see your point.

[00:20:02] Speaker 05:
For the one, the 9-11 patent, which is just maybe prioritizing based on return visit, or maybe for the 9-202 patent, which is just collecting data.

[00:20:14] Speaker 05:
of your physical places that you've visited.

[00:20:19] Speaker 05:
But what about that 905?

[00:20:21] Speaker 05:
It's pretty specific about the particular technique that it purports to be improving the search technology.

[00:20:29] Speaker 03:
So it's two pieces.

[00:20:31] Speaker 03:
One is that that technique is an abstraction.

[00:20:34] Speaker 03:
about what data to collect and compare.

[00:20:37] Speaker 03:
And number two, there's no technical implementation in the claims or the specification for that technique.

[00:20:43] Speaker 04:
If there was a specific algorithm that says step one you do this, step two you do this, step three you do this, and so forth, would that be eligible?

[00:20:53] Speaker 03:
Potentially, if there's some unconventional element or ordering in that algorithm.

[00:20:58] Speaker 05:
Okay, why isn't this claim an algorithm in written form?

[00:21:03] Speaker 03:
Right, so because it is pure abstraction with no implementation.

[00:21:08] Speaker 05:
Why is there no, go ahead.

[00:21:10] Speaker 03:
Let me just take those in order, right?

[00:21:11] Speaker 03:
So Judge Raina asked, can you do it in real life?

[00:21:15] Speaker 03:
You certainly can, right?

[00:21:17] Speaker 03:
So a member group, here are the members of the Federal Circuit Bar.

[00:21:20] Speaker 03:
I say, I went to eat at Joe's Stone Crab.

[00:21:26] Speaker 03:
Has anyone else eaten at Joe's Stone Crab?

[00:21:29] Speaker 03:
And someone says, yes.

[00:21:30] Speaker 03:
And I've identified another member who has visited the same location.

[00:21:35] Speaker 03:
And I say, where else in DC?

[00:21:37] Speaker 05:
No, try Chicago.

[00:21:39] Speaker 05:
Hey, you and I have a common, if you'd like, of Joe's, so I'm going to Chicago next week.

[00:21:44] Speaker 05:
Where should I go?

[00:21:45] Speaker 03:
Right.

[00:21:47] Speaker 03:
And that's the abstraction, right?

[00:21:49] Speaker 05:
It's something that can be... It's hopefully easy to do in hindsight.

[00:21:52] Speaker 05:
Yes, but that's where we get to the second point, which is if there were some technological... Does it matter if that's been done before, or are we just going to say, I think I can imagine a scenario in which this could be done, therefore it's abstract?

[00:22:05] Speaker 03:
It doesn't.

[00:22:06] Speaker 03:
I mean, it certainly was done before, but we need to accept for purposes of this case that it was novel.

[00:22:13] Speaker 03:
But it's a novel abstraction.

[00:22:18] Speaker 05:
I mean, there was prior techniques, and there's a bunch of evidence about what was in existence in 2007 as far as search techniques, right?

[00:22:26] Speaker 03:
There are a bunch of allegations about what... Yeah, there are allegations.

[00:22:29] Speaker 05:
I agree, but I have to accept them as true.

[00:22:31] Speaker 05:
The discipline had to accept them.

[00:22:33] Speaker 03:
Understood.

[00:22:33] Speaker 03:
And all those go to show is the essential claim of the other side, which is that this is a novel idea, a novel abstraction.

[00:22:41] Speaker 03:
And where you get to ineligibility is that there's no technical implementation in search engines to carry out the steps.

[00:22:49] Speaker 03:
What would that look like?

[00:22:50] Speaker 05:
What would the technical implementation look like as opposed to first do this step, then do this step, then maintain this, then collect this, then analyze the data this way?

[00:23:00] Speaker 05:
What implementation?

[00:23:01] Speaker 05:
Tell me exactly how you would have to fix this claim to make it eligible.

[00:23:05] Speaker 03:
Right.

[00:23:05] Speaker 03:
It would have to tell you how you use a computer to get those results, rather than claiming just those results.

[00:23:12] Speaker 03:
Let me refer to Figure 9 of Appendix 27.

[00:23:16] Speaker 03:
That is supposed to spell out this supposed solution.

[00:23:20] Speaker 03:
And Figure 9 consists of two users pass visits compared side by side, and then a list of results.

[00:23:29] Speaker 03:
And the URL that comes from the useful member that appears in the results is listed at spot number three.

[00:23:39] Speaker 03:
And all the specification says about this is, well, that's higher than it would have been otherwise located in a normal search engine.

[00:23:46] Speaker 03:
There is no technical detail about how do you get to that result, why that result is third rather than first.

[00:23:55] Speaker 03:
So I think a technical solution that implements this idea would describe how you go about weighting geographic information against all the other considerations that go into a search engine and some

[00:24:08] Speaker 03:
description of how to carry that out in software other than just claiming the result itself.

[00:24:14] Speaker 04:
So if there was a specific algorithm or if this was a means plus function claim that confined it to a specific way of doing things, it might be a technological solution in the way Infish found, for instance.

[00:24:27] Speaker 03:
Yes, that's our essential point, is that here there's nothing approaching that.

[00:24:33] Speaker 04:
In 905, it doesn't really have any specific

[00:24:37] Speaker 04:
algorithm does.

[00:24:38] Speaker 04:
It just talks about comparing user and other member data and cross-referencing them in some way, but doesn't say what way.

[00:24:49] Speaker 03:
Exactly.

[00:24:50] Speaker 03:
There is no how.

[00:24:52] Speaker 05:
So when it says responding to the search inquiry by generating a computerized search result that increases the ranking of the first stationary member as follows, and it says, you know, I don't want to read the whole claim to you, but it does have

[00:25:06] Speaker 05:
about ten lines where it says how you do it.

[00:25:08] Speaker 05:
Your view is that's not good enough because increasing the rankings too broad?

[00:25:15] Speaker 03:
No, Your Honor.

[00:25:16] Speaker 03:
As an initial matter, I'd say electric power group holds though lengthy and numerous credit.

[00:25:24] Speaker 05:
I understand.

[00:25:25] Speaker 05:
I'm trying to really get down to, this is the one claim that really bothers me.

[00:25:30] Speaker 05:
And I'm trying to get down to

[00:25:32] Speaker 05:
understanding to me this one is more of a specific search technique and that I'm looking at it at a dismissal on the plea stage and the question is whether there's enough here and you're telling me there needs to be more and that this is not specific enough it doesn't have an algorithm but when I see that it says you're going to

[00:25:54] Speaker 05:
uh... doing determine a rating based on the reference individual members physical location history certain person's visit lation history reference numbers i don't want to read it all to you but i want to know why to me i could write that i was an algorithm

[00:26:10] Speaker 05:
it would be an algorithm.

[00:26:11] Speaker 05:
Maybe a pretty basic one, but it's an algorithm.

[00:26:14] Speaker 05:
So where do I draw the line?

[00:26:17] Speaker 03:
Right, and it's between, if there were some implementation of that in software, it might be eligible.

[00:26:28] Speaker 05:
But even under means plus function, when we have software, this is sufficient enough of an algorithm to satisfy the corresponding structure.

[00:26:38] Speaker 05:
in the claim.

[00:26:39] Speaker 05:
So where do we draw the line on how specific the algorithm has to be?

[00:26:46] Speaker 03:
I would concede that there is a need to draw the line and that this just falls on the abstract side of the line because it is just describing something that humans can do.

[00:26:57] Speaker 01:
Aren't these methods that are being described steps

[00:27:06] Speaker 03:
Yes, Your Honor, but there are steps to carry out the abstract idea of me comparing my restaurant visits to someone else in this... Like Alice, Intermediated Settlement.

[00:27:16] Speaker 04:
It had a bunch of steps to how to do the Intermediated Settlement in Alice, but it still was just implementing the abstract idea on a computer.

[00:27:26] Speaker 03:
That's correct, Your Honor.

[00:27:28] Speaker 03:
I would agree with that.

[00:27:31] Speaker 03:
I'd like to address the argument about membership groups.

[00:27:35] Speaker 03:
making this somehow non-abstract.

[00:27:39] Speaker 03:
That again is just dictated by the abstract idea itself.

[00:27:45] Speaker 03:
As Judge Hughes mentioned in the last case, every case that's just about deciding what data to select says that that's an abstract process.

[00:27:55] Speaker 03:
Here there's nothing in the specification that talks about the membership group yielding any of the benefits that

[00:28:05] Speaker 03:
Wiesner argued for on appeal in the briefing that of making the data more reliable or limited.

[00:28:12] Speaker 03:
It's just not in the record at all, not alleged in the second amended complaint.

[00:28:21] Speaker 04:
How do you think software can be made eligible generally under ALICE?

[00:28:26] Speaker 04:
I mean, this is not specifically tied to the case, but it's the problem here.

[00:28:30] Speaker 04:
These seem like good ideas.

[00:28:32] Speaker 04:
It seems like they might even have been new ideas.

[00:28:35] Speaker 04:
But I have a hard time finding distinguishing Alice in all our case law.

[00:28:40] Speaker 04:
But nonetheless, it seems like there should be some room for patentability here.

[00:28:46] Speaker 04:
Is it the way the claims are written?

[00:28:48] Speaker 04:
Or is it just that somebody besides us is going to have to change the law?

[00:28:56] Speaker 03:
Well, so I mean, this is probably the biggest challenge facing the court in the 101 area is where to draw the line between abstractness and concreteness and software.

[00:29:08] Speaker 03:
It's just, I don't think this falls very close to the line in that me comparing my past visits against someone else's past visits is just a real world activity.

[00:29:24] Speaker 03:
And the claim has just written

[00:29:26] Speaker 03:
a claim to that result without describing.

[00:29:32] Speaker 03:
There's nothing in the specification or claims about how search engine operates, how algorithms operate.

[00:29:39] Speaker 05:
For purposes of this case, you are agreeing, though, that the claim subject matter is novel, or that it's not conventional.

[00:29:49] Speaker 03:
Well, so it's tricky, Your Honor, because novel...

[00:29:57] Speaker 05:
I mean, for purposes of a dismissal.

[00:30:00] Speaker 03:
For purposes of the motion, we need to accept what's alleged, which is that in 2007, no one had search engines that used the data that this patent instructs to collect.

[00:30:13] Speaker 05:
That had this particular technique for determining search results.

[00:30:19] Speaker 05:
The claimed method.

[00:30:21] Speaker 03:
That's the allegation.

[00:30:23] Speaker 03:
But again, that is just the argument that the idea itself is not.

[00:30:30] Speaker 03:
That the idea of comparing member information to see what sort of visits you have in common and then relying on that person.

[00:30:37] Speaker 05:
But you are agreeing.

[00:30:38] Speaker 05:
I mean, your view is it's abstract, right?

[00:30:41] Speaker 05:
And it doesn't matter.

[00:30:42] Speaker 05:
whether it's conventional or not.

[00:30:43] Speaker 05:
That's what I understand.

[00:30:44] Speaker 05:
I just want to make sure I understand your view.

[00:30:46] Speaker 03:
Right.

[00:30:46] Speaker 03:
Where I'm tripping up is novel and conventional.

[00:30:50] Speaker 05:
I changed it to conventional.

[00:30:51] Speaker 05:
I withdraw my question and ask you, do you agree that it's not conventional?

[00:30:58] Speaker 03:
So I agree that the idea itself is novel.

[00:31:02] Speaker 03:
I don't agree that there are any unconventional steps at step two of the Alice test.

[00:31:10] Speaker 03:
I understand that.

[00:31:14] Speaker 03:
Finally, I guess I'd like to address the claim of procedural error.

[00:31:19] Speaker 03:
The record is a little bit unclear, but what happened was the district court considered... Does it really matter?

[00:31:26] Speaker 04:
I mean, haven't we just discussed the eligibility of this and don't we have to determine all this ourselves anyway?

[00:31:34] Speaker 03:
I would agree with that.

[00:31:34] Speaker 04:
I would only come in... I mean, you don't want us... I mean, it seems a peculiar way the district court did it.

[00:31:41] Speaker 04:
But I assume neither parties wants us to, well, maybe your friend does.

[00:31:46] Speaker 04:
But let's send it back for another try when most of this is on us anyway.

[00:31:51] Speaker 03:
I would agree with that, Your Honor.

[00:31:53] Speaker 03:
And Wiesner has not relied on any of the specific allegations in the second amended complaint as raising a fact issue.

[00:32:02] Speaker 03:
They're no different than what he claimed about the specification, namely that using this sort of conventionally collected data and search results was a novel idea.

[00:32:13] Speaker 03:
The court has no further questions.

[00:32:16] Speaker 01:
We thank you, Mr. Goodborne.

[00:32:18] Speaker 01:
Thank you.

[00:32:20] Speaker 01:
Mr. DePrentor, you have three minutes.

[00:32:23] Speaker 02:
Thank you, Your Honor.

[00:32:25] Speaker 02:
The first thing I'd like to address is the idea of whether there's specific code in the patents to implement all the steps that are set forth in the 905 patent.

[00:32:38] Speaker 02:
And the case law is fairly clear that

[00:32:40] Speaker 02:
You don't have to actually set forth the specific coding that you would need to implement a computerized application if you have a claim that utilizes computers.

[00:32:50] Speaker 02:
And that is the case of Robotics Visions v. View Engineering, where the Federal Circuit said when the disclosure of software is required.

[00:32:59] Speaker 04:
But there's a line, right?

[00:33:00] Speaker 04:
I mean, clearly you don't need to attach the code.

[00:33:03] Speaker 04:
But clearly just saying implement this abstract idea on a computer is not

[00:33:08] Speaker 04:
good enough, Alice, right?

[00:33:10] Speaker 04:
So we're trying to find a line in between.

[00:33:12] Speaker 02:
And I think that the 905 patent does that by going through and explaining exactly, number one, how you collect the data with the various structures that are required for individuals and vendors to exchange the data that's required to implement the overall method, and then going through the specific steps that will provide the ultimate result of the better search, which is

[00:33:35] Speaker 02:
you have to, once you've gone to the physical locations and collected the necessary data that's going to be used in the search, a person runs the search and then it looks at the other person.

[00:33:45] Speaker 04:
Let me ask you this hypothetical.

[00:33:46] Speaker 04:
Assume, and I know you don't want us to, but assume we find all of your other patents except the one we're talking about ineligible.

[00:33:52] Speaker 04:
So the notion of collecting geographic data and stuff like that is an abstract idea, which is a building block for this one.

[00:34:01] Speaker 04:
If all of that other stuff is abstract and not eligible,

[00:34:04] Speaker 04:
then what does this add to all of those abstract ideas and their use of conventional phones and computer equipments to make this eligible?

[00:34:13] Speaker 02:
And I think it's the technological improvement that is the ultimate result of the improved search that is... I'm struggling and I know you're struggling too.

[00:34:25] Speaker 04:
This is frustrating for all of us.

[00:34:27] Speaker 04:
But you're answering in ways that don't actually say anything to me other than

[00:34:34] Speaker 04:
combining all of these abstract ideas together somehow yields a non-abstract result.

[00:34:41] Speaker 05:
Are you trying to say that even if those other claims are directed to an abstract idea, this is more than the abstract idea?

[00:34:48] Speaker 05:
There's an inventive concept of actually using physical location data in a specific way in order to obtain an improved search result?

[00:34:56] Speaker 02:
Yes.

[00:34:58] Speaker 02:
By the time you get to the bottom and you perform all of the steps of the method,

[00:35:02] Speaker 02:
that that ends up with the improved search result that combined results in something that is invented.

[00:35:09] Speaker 04:
Are all the steps involved abstract?

[00:35:12] Speaker 04:
I think this is a hard issue for the court and I don't know that we have actually resolved it.

[00:35:18] Speaker 04:
But if you have four different abstract ideas, and you say, I'm combining these four abstract ideas, and that yields a patent-eligible result, do you think that's possible?

[00:35:28] Speaker 04:
Or is that just patenting for abstract ideas in combination?

[00:35:31] Speaker 02:
No, I do think that that's possible because as you become more narrow, it becomes less abstract.

[00:35:38] Speaker 04:
Why is it less abstract?

[00:35:39] Speaker 04:
Isn't it just a more specific abstraction?

[00:35:43] Speaker 02:
I don't think so because of the order combination and because what Enfish says- Why?

[00:35:49] Speaker 02:
At a high level, if you look at any claim, you could say it's abstract by generalizing it.

[00:35:57] Speaker 04:
And that's the danger that the court in Mayo and Enfish- Yeah, but when we get beyond that, we see that there's something that's actually non-abstract, not just an accumulation of abstract ideas.

[00:36:11] Speaker 02:
And that comes from the specific order in which these steps are carried out.

[00:36:17] Speaker 02:
I think that end result, just like in deer, where there's nothing non-abstract about taking measurements, there's nothing non-abstract about ascertaining variables, or even putting them through this specific mathematical formulation that was in deer, or automatically opening a mold.

[00:36:36] Speaker 02:
Those are all just abstract concepts

[00:36:39] Speaker 02:
But when you put them all together in a specific order and do them in those steps, you end up with this improved rubber.

[00:36:45] Speaker 02:
And I think it's a very similar situation here, where as you perform each of the steps in the order combination.

[00:36:53] Speaker 04:
I guess my problem is, and I think it's everybody would, or most people would agree, maybe outside the Supreme Court, that there's some tension, though, between DR and Alice.

[00:37:03] Speaker 04:
Because isn't Alice

[00:37:05] Speaker 04:
a set of very specific steps about how to do intermediate settlements.

[00:37:09] Speaker 04:
And why isn't the argument you're telling me now based upon deer also applicable to Alice?

[00:37:16] Speaker 05:
Wasn't there evidence in Alice that those prior steps had been actually performed in the past, and this was just now doing it on the computer?

[00:37:26] Speaker 02:
I think there was- In Alice, yes, there was just a ledger.

[00:37:30] Speaker 05:
And all of that was conventional, and it was just do it on a computer.

[00:37:34] Speaker 05:
Is there any evidence that what is being done here in order to obtain an improved internet search result is conventional?

[00:37:45] Speaker 01:
No.

[00:37:47] Speaker 01:
Would you look at these method steps and say that that is the algorithm?

[00:37:51] Speaker 02:
I think that when you read it in totality, yes.

[00:37:55] Speaker 02:
It gives you the steps that you need to gather the variables that you are going to input, and then it tells you exactly how to input those variables.

[00:38:04] Speaker 01:
an ordered process, correct?

[00:38:06] Speaker 02:
Correct.

[00:38:07] Speaker 02:
And you have to follow them in order to ultimately satisfy the claim.

[00:38:13] Speaker 04:
So if those were conventional steps, then it wouldn't be patent eligible.

[00:38:18] Speaker 04:
If the idea of intersecting geographic data between the user and other people, if those were conventional, is that what your argument turns on, is that

[00:38:30] Speaker 04:
These are not conventional ways about getting information on locations and ranking people's preferences.

[00:38:41] Speaker 04:
Every time you say the word totality, you lose me.

[00:38:52] Speaker 04:
I'm not going to belabor the point, but what's the difference between putting together a bunch of conventional steps, putting together a bunch of unconventional steps, even though they're abstract?

[00:39:04] Speaker 04:
Aren't they the same thing?

[00:39:06] Speaker 04:
Just because you've come up with a new abstract idea and it may be unconventional doesn't mean it's eligible.

[00:39:12] Speaker 02:
I think when it yields unique results that have an improvement over the technology that's being addressed, it does.

[00:39:20] Speaker 01:
OK.

[00:39:20] Speaker 01:
Thank you.

[00:39:21] Speaker 02:
Thank you, Your Honor.