[00:00:00] Speaker 03:
Our last case this morning is HLFIP Holden versus Yorktown, Pennsylvania, et al, 2022, 1940.

[00:00:11] Speaker 03:
Mr. Weingartner?

[00:00:17] Speaker 02:
Good morning.

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

[00:00:20] Speaker 02:
The 617 patent at issue in this case is not about scanning the mail.

[00:00:25] Speaker 02:
It's not merely computerizing or automating an existing process, as defendants have argued below and as the district court found.

[00:00:35] Speaker 02:
But it's about detecting and eliminating contraband in the correctional setting, in which creating digitized copies of inmate correspondence is only one step in a method that also includes generating a record and a database of inmate mail access, which

[00:00:52] Speaker 02:
allows the benefit of real-time investigation and surveillance of unlawful activity, which is not something that was previously possible.

[00:01:01] Speaker 03:
Isn't this all software?

[00:01:04] Speaker 02:
Your Honor, I don't think it is.

[00:01:07] Speaker 03:
Passing information back and forth electronically?

[00:01:10] Speaker 02:
It is, but it's not something that had happened in that particular field before, in the field of corrections.

[00:01:16] Speaker 02:
And we believe that.

[00:01:17] Speaker 03:
Are novelty sufficient to satisfy 101?

[00:01:22] Speaker 02:
I think what's sufficient, Your Honor, is that there's a detailed solution about it with actual technical steps.

[00:01:33] Speaker 02:
They may look humble, taken individually, but together had not been used in that context and lead to a solution.

[00:01:42] Speaker 02:
And it's not merely claiming the solution of the desired result.

[00:01:45] Speaker 02:
It's sort of the particles that lead to that.

[00:01:48] Speaker 04:
But don't you agree that detail alone doesn't get you over the 101 hurdle?

[00:01:53] Speaker 02:
I don't disagree, Your Honor.

[00:01:56] Speaker 02:
I don't disagree.

[00:01:57] Speaker 00:
What part of your claim is directed towards an improvement of contraband detection as opposed to just efficiencies that you get from standard automation?

[00:02:09] Speaker 02:
Your Honor, we're not claiming the desired result.

[00:02:14] Speaker 02:
What leads to that is the ability to, first of all, to avoid human contact with

[00:02:21] Speaker 02:
for example, fentanyl-coated letters or whatever it might be, which are potentially lethal.

[00:02:26] Speaker 02:
There's no need for them to touch that.

[00:02:27] Speaker 02:
There's no need for that contraband to be handled because this is, again, for the first time.

[00:02:33] Speaker 02:
And I realize novelty is not the test.

[00:02:36] Speaker 02:
The postal mail would be scanned.

[00:02:40] Speaker 02:
The content would be captured.

[00:02:42] Speaker 02:
there would be association, these are all kind of paraphrasing, association with the recipient to be a unique identifier so that everything could be tracked and searched.

[00:02:51] Speaker 02:
And in addition, you know, and this is all, by the way, in material that was in the possession of the defendant that was appended to our complaint.

[00:03:02] Speaker 02:
So the capture of this information was not possible before.

[00:03:06] Speaker 02:
It wasn't manually done either.

[00:03:08] Speaker 02:
It was simply infeasible to do.

[00:03:10] Speaker 02:
And in terms of, for example,

[00:03:12] Speaker 02:
the monitoring of access by a recipient inmate, it would require a kind of a panopticon of perpetual observation by humans of someone in their prison cell or at a kiosk, which wasn't doable before.

[00:03:26] Speaker 02:
So we acknowledge that each piece looked at individually could look like simply applying things that were known.

[00:03:34] Speaker 02:
But we urge that here, this hadn't been done before in this field, and that together they provide

[00:03:41] Speaker 02:
They provide a system that allows those benefits.

[00:03:44] Speaker 04:
Do you dispute that this is really computerizing an existing process?

[00:03:51] Speaker 02:
With respect, Your Honor, no, we don't.

[00:03:54] Speaker 02:
The existing process did not permit the capture of content.

[00:03:57] Speaker 02:
It did not permit the monitoring of recipient-inmate access or the association

[00:04:04] Speaker 02:
I mean, there's lots of potential additional benefits with AI and so forth that aren't within the patent, but that are permitted by the system that the patent discloses and claimed.

[00:04:15] Speaker 04:
Let me just clarify, because I'm not sure if I understood your answer.

[00:04:17] Speaker 04:
You do dispute that this is computerizing an existing process, or you do not dispute that?

[00:04:21] Speaker 02:
We do dispute that it is.

[00:04:23] Speaker 02:
In other words, there's maybe aspects

[00:04:26] Speaker 02:
I don't even know if there were any aspects that were computerized.

[00:04:29] Speaker 02:
This was all done manually.

[00:04:30] Speaker 02:
But the point is that there are aspects of what's claimed that could not have been done manually.

[00:04:36] Speaker 02:
In other words, there was a manual process that didn't lead to the elimination of contraband.

[00:04:40] Speaker 02:
This process does what could not have been done manually.

[00:04:44] Speaker 02:
And there's evidence in the record to that effect.

[00:04:47] Speaker 02:
So it's not near automation.

[00:04:50] Speaker 02:
I also would offer that, as a former automation engineer myself, it's something that can be difficult.

[00:04:56] Speaker 02:
And I think the problem with 101 claiming sometimes is that you see a claim that simply claims automation, but not getting down into the nuts and bolts of how it's done and not laying that out.

[00:05:06] Speaker 02:
So I don't think we run afoul of that.

[00:05:08] Speaker 04:
Do you agree that we can treat claim one as representative for the asserted claims?

[00:05:11] Speaker 02:
I think yes, Your Honor, we would agree.

[00:05:13] Speaker 04:
Thank you.

[00:05:19] Speaker 02:
So as I was noting, this has not been done before.

[00:05:23] Speaker 02:
It could not have been done manually.

[00:05:25] Speaker 02:
So it's not one of mere automation.

[00:05:28] Speaker 02:
And we believe the evidence of record supports that.

[00:05:31] Speaker 02:
We believe it's in the patent specification.

[00:05:33] Speaker 02:
But also, and this is a point of contention between the parties,

[00:05:36] Speaker 02:
The complaint in this case appended a document generated by a company called Text Behind, which is the vendor of the technology that is the subject of the infringement case.

[00:05:47] Speaker 02:
And it's quite interesting, commended to the court's attention, because it lays out almost exactly the facts that we're saying here.

[00:05:55] Speaker 02:
Appendix 121, for example, says that their solution, quote unquote, in the second column, simply eliminates the need for contraband inspection in physical mail.

[00:06:08] Speaker 02:
In other words, does what could not have been done manually.

[00:06:10] Speaker 02:
It's eliminating it fast.

[00:06:12] Speaker 02:
And in addition, in column four,

[00:06:15] Speaker 02:
It talks about the problem of valuable mail content not really being accessible.

[00:06:21] Speaker 02:
I suppose someone working in the prison could read a mail, but if their memory is as bad as mine, it wouldn't persist for very long.

[00:06:31] Speaker 02:
And so the solution provided here, which is what's disclosed in the patent and claimed, and the mechanism for achieving this claim in the patent,

[00:06:39] Speaker 02:
is that it has what they call advanced technology features to not only preserve the original mail content, but also facilitate investigative process.

[00:06:49] Speaker 02:
So what you have is the defendant's own, essentially, own document talking about the technological aspects of what's required.

[00:06:57] Speaker 02:
And we believe those are captured in our claims.

[00:07:01] Speaker 02:
Again, as humble and as simple as they may look in that context to get taken together, which we don't think the court adequately did.

[00:07:08] Speaker 02:
We think the court

[00:07:10] Speaker 02:
You know, burdened with cases like this as they are, used a bit of a shorthand, looked at the claims without the fullness of all the claim elements, looked at five of them.

[00:07:21] Speaker 02:
You have a chart which you don't need to burden the court with going through, but it was in our opening brief.

[00:07:27] Speaker 02:
And there's six elements that really weren't referred to by the court.

[00:07:31] Speaker 02:
We don't think the court adequately analyzed them.

[00:07:33] Speaker 00:
But I guess if we're talking about step two in an inventive concept, I mean, you take them separately.

[00:07:40] Speaker 00:
You put them all together.

[00:07:41] Speaker 00:
I'm not seeing what is beyond generic computers.

[00:07:45] Speaker 00:
doing all of this.

[00:07:47] Speaker 00:
And I didn't see where.

[00:07:49] Speaker 00:
I mean, we've got a text scanner, but that's not inventive either.

[00:07:53] Speaker 00:
That's not.

[00:07:54] Speaker 00:
So where is it?

[00:07:55] Speaker 00:
I mean, you can say, and I know some of our courts have referred to the fact that you have to look at all of these together, but I'm not sure I see a difference between separate or together when it comes to an inventive concept.

[00:08:06] Speaker 02:
Well, we think the question, Your Honor, is one of what's conventional in the field.

[00:08:10] Speaker 02:
And we don't believe that there's any evidence.

[00:08:12] Speaker 02:
And we believe the burden is on the defendant to show that these were conventional in the field.

[00:08:16] Speaker 02:
And the evidence shows the opposite, the document that I just referred to you on.

[00:08:21] Speaker 00:
So it's not conventional, the using them together, or non-conventional?

[00:08:28] Speaker 02:
Well, I believe there's no evidence that they were used in the field at all.

[00:08:32] Speaker 02:
And they were hardly conventional, because what was done manually was not what's invented.

[00:08:37] Speaker 02:
But whatever was done was done manually.

[00:08:39] Speaker 02:
as far as I know.

[00:08:40] Speaker 02:
And these components were not done in this context before, as far as I know, alone or in combination, but certainly not in the combination that's claimed.

[00:08:50] Speaker 02:
And I think it goes to step one and step two.

[00:08:55] Speaker 02:
And I think that this piece of evidence, which the defendant would prefer the court not to pay much attention to, nails it.

[00:09:02] Speaker 02:
It's right on point and overlaps almost directly with what's in the claims and what our position is.

[00:09:09] Speaker 02:
Which also goes to the issue of whether a fact issue was properly decided by the court at the pleading stage, which we don't believe was appropriate.

[00:09:17] Speaker 04:
Are you arguing that the district court erred by addressing Section 101 before conducting claim construction?

[00:09:23] Speaker 02:
I'm glad you raised it, Your Honor.

[00:09:24] Speaker 02:
No, that's not really our position.

[00:09:26] Speaker 02:
I know it was raised in some of the briefing.

[00:09:28] Speaker 02:
I think the way we see it,

[00:09:31] Speaker 02:
The court had the briefing before the court and elected not to conduct the hearing and really did not fully apprise itself of really what the scope of the claim was, what the claim was really about.

[00:09:43] Speaker 02:
It might have done that, elected not to.

[00:09:45] Speaker 02:
And we thought that was relevant.

[00:09:47] Speaker 02:
We think that the way the court reaches its conclusion is not irrelevant.

[00:09:51] Speaker 02:
It's not determinative legally, but we believe it's context that's appropriate for the court to consider.

[00:09:59] Speaker 04:
Did you just allude to some type of factual dispute?

[00:10:01] Speaker 04:
Can you elaborate on what you were saying there?

[00:10:04] Speaker 02:
I apologize, Your Honor.

[00:10:05] Speaker 04:
I thought you just alluded before I asked the claim destruction question that you thought that there was some type of factual dispute that was resolved.

[00:10:10] Speaker 04:
Can you just tell us more?

[00:10:12] Speaker 02:
Well, I think there's more than one.

[00:10:13] Speaker 02:
I think at the step one phase, the court concluded that this is merely automating.

[00:10:20] Speaker 02:
It's merely computerizing the process.

[00:10:23] Speaker 02:
The parties had differing views.

[00:10:25] Speaker 02:
Whether they were teed up as here is a factual dispute or not we think is irrelevant, they were before the court and the court resolved.

[00:10:32] Speaker 02:
We believe the court tackled that as a factual issue when it shouldn't have and didn't get it right.

[00:10:38] Speaker 02:
And then we believe that there are other factual disputes with regard to the conventionality in step two of Alice.

[00:10:52] Speaker 03:
We can save the rest of your time if you like.

[00:10:55] Speaker 02:
Yeah, I'd prefer to do that, Your Honor.

[00:10:56] Speaker 02:
Thank you.

[00:10:59] Speaker 03:
Mr. Millican.

[00:11:01] Speaker 01:
Thank you, Your Honor.

[00:11:10] Speaker 01:
So may it please the court.

[00:11:12] Speaker 01:
The district court correctly held the 617 patent claims ineligible.

[00:11:16] Speaker 01:
The claims just implement a longstanding human practice, processing inmate postal mail,

[00:11:22] Speaker 01:
using technology that the specification admits is generic and conventional.

[00:11:26] Speaker 00:
Okay, let me ask you.

[00:11:27] Speaker 00:
I think you're, I may have misunderstood.

[00:11:29] Speaker 00:
I think your friend made a reference to something you would prefer not to deal with or talk about, and I think that was in connection with the text behind marketing.

[00:11:37] Speaker 00:
I'm not sure.

[00:11:38] Speaker 00:
But I don't know what the backstory of that is, but can you address it please?

[00:11:44] Speaker 01:
Certainly, Your Honor.

[00:11:45] Speaker 01:
I believe my friend is referring to the document in appendix 121 that is a

[00:11:50] Speaker 01:
customer-facing marketing document that was put out by the supplier of the accused technology in this case.

[00:12:00] Speaker 01:
And our point is not that the court can't consider it.

[00:12:02] Speaker 01:
It's attached to the pleadings that the court surely can consider it.

[00:12:06] Speaker 01:
Our point is that the document is not relevant because it's not describing anything about smart patented invention.

[00:12:14] Speaker 01:
It's describing the technology of a competitor.

[00:12:18] Speaker 01:
And to the extent it's relevant at all, and I think the proposition that it's relevant at all is dubious, it does talk about how contraband detection can be a difficult problem because some contraband is difficult to detect using human senses.

[00:12:36] Speaker 01:
But the patent specification, which my friend did not discuss at any length in his argument, which I think is telling, admits that in the prior art, correctional facilities made photocopies

[00:12:48] Speaker 01:
of pieces of inmate mail and they distributed the photocopies instead of the originals to prevent the contraband from reaching the inmates.

[00:12:57] Speaker 01:
What this invention does is it replaces the photocopies with electronic copies and then it adds conventional data collection analysis and display steps.

[00:13:07] Speaker 01:
And doing that type of data analysis in a specific field of use here, correctional facilities, is contrary to my friend's argument,

[00:13:16] Speaker 01:
not sufficient to render something eligible for patenting.

[00:13:19] Speaker 01:
So there's no technological invention here.

[00:13:23] Speaker 01:
The technology described in the specification such as it is, is completely conventional and the specification admits that.

[00:13:31] Speaker 01:
To the extent there's anything new here, it's that the patentee had the idea

[00:13:36] Speaker 01:
to automate correctional facility mail processing to make record keeping easier and to mitigate the risk of contraband reaching inmates.

[00:13:45] Speaker 01:
But that idea is just that.

[00:13:47] Speaker 01:
It's an idea, and it's therefore ineligible.

[00:13:50] Speaker 01:
And I think this court has several cases that are very closely on point.

[00:13:54] Speaker 01:
I think intellectual adventures versus Symantec and fair warning IP are particularly instructive.

[00:14:00] Speaker 01:
Symantec held ineligible claims to

[00:14:03] Speaker 01:
receiving screening and distributing email because they were directed to a long-standing business practice that had conventionally been performed in brick and mortar post offices and it just invoked generic computer technology.

[00:14:16] Speaker 01:
Similar conclusions appropriate here and the fact that the 617 patent claims add some token post solution activity like assigning inmates identifiers or allowing Correctional facility staff to flag certain messages that's not sufficient to confer patent ability just like the use of file content identifiers and semantic wasn't sufficient I think fair warning

[00:14:39] Speaker 01:
is particularly relevant because it refutes Smart's repeated assertions that the logging step of its claims is somehow inventive.

[00:14:47] Speaker 01:
Fair warning affirmed a pleading stage and validation of claims to methods of detecting fraud and misuse by monitoring access to sensitive electronic records like health records.

[00:14:59] Speaker 01:
And so it confirms that the concept of monitoring access to electronic records is not a concept that's sufficient to confer patent eligibility.

[00:15:10] Speaker 01:
That is just what computers do.

[00:15:13] Speaker 01:
And so I think that the logging step, whether or not it was included in the district court's articulation of abstract idea, it doesn't change the focus of the claims, and it's not sufficient to confer eligibility in any event.

[00:15:27] Speaker 01:
Yes, Your Honor.

[00:15:29] Speaker 04:
I was going to ask you a question.

[00:15:29] Speaker 04:
I appreciate that.

[00:15:31] Speaker 04:
I assume you agree we can treat Claim 1 as representative for these sort of claims?

[00:15:35] Speaker 01:
Yes, Your Honor.

[00:15:36] Speaker 04:
Can you also respond to his statements about there was some type of factual dispute that was being resolved by the court there?

[00:15:43] Speaker 01:
As an initial matter, that argument, I'd submit, was waived.

[00:15:46] Speaker 01:
Smart did not argue in its briefing below that there were factual disputes that made judgment on the pleadings inappropriate.

[00:15:53] Speaker 01:
The argument is also easily answered on the merits.

[00:15:55] Speaker 01:
The specification itself admits

[00:15:58] Speaker 01:
that every single piece of this claim was conventional, to the point where the computer components that are utilized in the claims, they're not even illustrated in the patent.

[00:16:07] Speaker 01:
The patent just leaves all of that to the knowledge of the skilled artisan, which is a pretty good clue that it was all conventional.

[00:16:13] Speaker 01:
And so I submit that they simply haven't identified any factual disputes.

[00:16:17] Speaker 01:
They concede, and this is pages 30 and 35 of their blue brief, they concede that this was all conventional.

[00:16:23] Speaker 01:
So I think it reduces to a question of law that was properly resolved on the pleadings.

[00:16:28] Speaker 01:
If the court has any questions, I'm pleased to answer them.

[00:16:30] Speaker 01:
Otherwise, I'll see the balance of my time.

[00:16:33] Speaker 03:
Thank you, counsel.

[00:16:34] Speaker 03:
Mr. Weingartner has some rebuttal time.

[00:16:38] Speaker 03:
Thank you, Your Honor.

[00:16:41] Speaker 02:
I think listening to my friend's discussion, the point is that this is not a longstanding human practice.

[00:16:51] Speaker 02:
defendant of Pelley's case is based upon that.

[00:16:55] Speaker 02:
It's simply fallacious here.

[00:16:57] Speaker 02:
The text behind article or brochure makes that clear.

[00:17:03] Speaker 02:
We didn't offer it as 112 support or some kind of support for the patent.

[00:17:08] Speaker 02:
It's evidence of the state of the art of what's conventional, which is relevant.

[00:17:13] Speaker 02:
I don't think it ordinarily comes in in one-on-one cases, but here it happened to be in the record, right there in the complaint, which the court was allowed to look at but elected not to.

[00:17:22] Speaker 02:
And I think that piece of evidence

[00:17:26] Speaker 02:
really eviscerates the defense here.

[00:17:29] Speaker 02:
The business about distributing photocopies doesn't really seem relevant.

[00:17:34] Speaker 02:
There's nothing about capturing content or anything to do with the ability to monitor anything.

[00:17:40] Speaker 02:
There's still heavily a manual element to that.

[00:17:44] Speaker 02:
Also, the term automate has been used a lot as a factual conclusion that simply hasn't been established.

[00:17:50] Speaker 02:
It assumes, in all the case law that's been cited, I think there are cases where a party admits, yes, we've been doing this.

[00:17:57] Speaker 02:
Now we've automated.

[00:17:58] Speaker 02:
And maybe they didn't claim all the great things that enabled it, but instead claimed broadly and were ineligible.

[00:18:05] Speaker 02:
But that's not the case here.

[00:18:07] Speaker 02:
It's something different in this instance.

[00:18:09] Speaker 02:
And again, we think that the text behind, in addition to our specification, which speaks for itself, makes clear.

[00:18:16] Speaker 02:
Also, counsel for defendant appellants referred to, this is just what computers do.

[00:18:21] Speaker 02:
Not sure what to do with that.

[00:18:23] Speaker 02:
Computers do a lot.

[00:18:25] Speaker 02:
If computers are kind of off limits in terms of the use for patentability, I think there'd be a lot of talk about that.

[00:18:33] Speaker 02:
So I don't give up that a whole lot of credit.

[00:18:36] Speaker 02:
And finally, the point about every single piece is conventional, quote unquote.

[00:18:40] Speaker 02:
That's the issue.

[00:18:41] Speaker 02:
The issue here isn't whether individual pieces are conventional.

[00:18:46] Speaker 02:
I think a lot of cases say that almost every invention is an assemblage in some form of steps or components that individually were known.

[00:18:55] Speaker 02:
But someone saw how they could be put together in a new way and achieve something that hadn't been done before, which is the case here.

[00:19:01] Speaker 02:
Thank you, Your Honor.