[00:00:01] Speaker 05:
We have five cases before us for resolution this morning.

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One of them is a case that's been submitted on the briefs.

[00:00:08] Speaker 05:
We have four cases scheduled for oral argument this morning.

[00:00:13] Speaker 05:
Before we get started, the court has a little bit of business to handle.

[00:00:19] Speaker 05:
Mr. Weinberg, will you please stand?

[00:00:21] Speaker 05:
Don, you've been my law clerk for the past year, and it's

[00:00:29] Speaker 05:
I'm sure that you would say that it's gone by fast.

[00:00:32] Speaker 05:
That's because they say that when you work hard, time flies.

[00:00:38] Speaker 05:
You know, your excellent work product has been a testament to your work ethic.

[00:00:44] Speaker 05:
And you have done well in my chambers.

[00:00:47] Speaker 05:
You've brought honor to my chambers as well as to this honorable court.

[00:00:52] Speaker 05:
So I wish you the best in the future.

[00:00:54] Speaker 05:
I know that the man who stands in the well of this court

[00:00:58] Speaker 05:
will represent the profession well, will be an excellent lawyer and a leading light in the USIP profession.

[00:01:09] Speaker 05:
I move for admission of Jonathan Weinberg, who is a member of the bar and is in good standing with the highest court of California.

[00:01:16] Speaker 05:
I have knowledge of his credentials, and I am satisfied that he possesses the necessary qualifications.

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I now turn over the motion to Judge Chen

[00:01:27] Speaker 05:
And he will preside over the motion.

[00:01:29] Speaker 02:
Thank you, Judge Raina.

[00:01:33] Speaker 04:
The motion is granted.

[00:01:37] Speaker 04:
The motion has been granted.

[00:01:38] Speaker 04:
Congratulations.

[00:01:40] Speaker 08:
Please raise your right hand and repeat after me.

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You solemnly swear that you will comport yourself as an attorney and counsel of this court, up right and according to the law, and that you will support the Constitution of the United States of America.

[00:01:52] Speaker 08:
I do.

[00:01:52] Speaker 08:
Congratulations.

[00:01:52] Speaker 08:
You're welcome.

[00:01:56] Speaker 05:
First case this morning and they're combined cases is Apple Inc.

[00:02:00] Speaker 05:
versus Amaranth Inc.

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and Amaranth Inc.

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versus a Geosys or Geosystems Inc.

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We received from our clerk the times that the parties are chosen to argue.

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Let me make sure I got this right, okay?

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And you let me know if I don't have a right.

[00:02:24] Speaker 05:
Mr. Panikowski?

[00:02:26] Speaker 05:
You're going to argue first for 10 minutes.

[00:02:28] Speaker 07:
That is correct, Your Honor.

[00:02:29] Speaker 05:
Mr. Osborne, you're next for 17.

[00:02:32] Speaker 07:
Correct.

[00:02:33] Speaker 05:
Yes.

[00:02:34] Speaker 05:
Mr. Mattel, 10 minutes.

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Yes.

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10 minutes.

[00:02:39] Speaker 05:
Mr. Franklin, 15.

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Correct.

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And Mr. Osborne, 8.

[00:02:44] Speaker 05:
Correct.

[00:02:44] Speaker 05:
Is that correct?

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Do us a favor when you get up, just briefly tell us who you're representing again so that we want to make sure we got everybody in proper order.

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So with that, Mr. Penikowski, are you ready?

[00:03:01] Speaker 07:
Yes, Your Honor.

[00:03:02] Speaker 05:
You may proceed.

[00:03:05] Speaker 07:
Good morning, Your Honors.

[00:03:06] Speaker 07:
My name is Stanley Penikowski, and my colleague Jonathan Franklin and I will be arguing on behalf of all the petitioners in the three underlying CBM proceedings.

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Mr. Franklin plans to address all the claims that the board correctly ruled to be patent ineligible across all three patents.

[00:03:24] Speaker 07:
I plan to address the instituted claims that the board incorrectly declined to rule patent ineligible.

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These claims are dependent claims three, six to nine, 11, and 13 to 16 of the 733 patent, dealing with additional limitations directed to linking orders to specific customers at a table,

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handwriting, and voice.

[00:03:49] Speaker 07:
Your honors, these dependent claims are unpatentable as a matter of law under Section 101 because they fail to disclose any inventive concept that adds significantly more to the abstract idea that Amaranth has tried to monopolize.

[00:04:03] Speaker 07:
The Supreme Court's decision in ALICE and this court's decisions in cases like BuySafe, Cybersource, Intellectual Ventures, Internet Patents, OIP Technologies, Ultramershal, and Versata

[00:04:16] Speaker 07:
compel this result.

[00:04:18] Speaker 07:
The 733 patent itself confirms that none of the additional limitations of these dependent claims discloses an inventive concept, and the patent alone is enough.

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In fact, this court has affirmed Section 101 unpatentability rulings, emotions to dismiss, and motions for judgment on the pleadings in BuySafe, internet patents, OIP technologies, and Ultramershal.

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The patent supports a legal ruling of unpatentability in three ways.

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Any one of these three ways is enough by itself to reverse the board's decision on these claims.

[00:04:55] Speaker 07:
First, Your Honors, the absence of any disclosure of an inventive concept renders these claims unpatentable.

[00:05:03] Speaker 07:
Under step two of the Supreme Court's Alice test, after the board has found that the claims are drawn to an abstract concept, the board is required to conduct a quote,

[00:05:13] Speaker 07:
search for an inventive concept," end quote, that adds significantly more to the abstract idea itself and is not just token post solution activity.

[00:05:23] Speaker 02:
I guess you had the burden, right?

[00:05:26] Speaker 02:
The burden to show that these claims were unpatentable under Section 101.

[00:05:31] Speaker 02:
Yes, Your Honor.

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And the board said that you didn't meet your burden of proof.

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You didn't marshal the evidence.

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Your analysis on these particular dependent claims

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was a little too conclusory, a little bit too much hand-waving.

[00:05:48] Speaker 02:
And so therefore, at least with respect to these claims, unlike other claims, you didn't really marshal your case effectively enough.

[00:05:58] Speaker 02:
So what's wrong with what the board said there?

[00:06:01] Speaker 07:
Your Honor, the board's rolling on that point was incorrect for three reasons.

[00:06:05] Speaker 07:
First, petitioners did make their case and marshal their evidence on these claims.

[00:06:10] Speaker 02:
In the petition... Well, you were about to cite us to sections of the patent specification, right?

[00:06:15] Speaker 02:
But I don't believe you actually cited those certain passages of the patent spec to the patent board with respect to these particular claims.

[00:06:26] Speaker 02:
Is that correct?

[00:06:28] Speaker 07:
Your Honor, that is not correct because, for example, at pages A132 and 133 of the Joint Appendix, this is the petition for CBM review on the 733

[00:06:41] Speaker 07:
Petitioners are talking about the challenge claims, which are identified as claims 1 to 16, and are talking about those challenge claims together, each and every one of them.

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And in that argument, the petitioners cited to several portions of the patent specification, most notably to column 6, line 48, to column 7, line 3, where the specification says that the invention employs typical hardware

[00:07:11] Speaker 07:
that is configured by unspecified application software in order to implement the invention.

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Later on, and also cited at page A133, the patent says at column 12, line 62 to 65, that for the software, the programming steps are commonly known, such that programming details are not necessary.

[00:07:37] Speaker 00:
What about for the dependent claims, for example, the claims directed to voice-to-tax or directed to handwriting?

[00:07:44] Speaker 07:
Your Honor, this argument applies to the dependent claims because petitioners identified claims 1 to 16, and those two citations from the specification are part of the detailed description of the invention talking about the entire invention.

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The 733 patent is a continuation in part of the 850 patent.

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There was some material that the applicants added to the summary of the invention in columns three and four in the continuation and part application.

[00:08:17] Speaker 07:
However, they did not add anything directed to these dependent claims to the detailed description of the invention.

[00:08:25] Speaker 00:
Therefore- When the specification talks about those things being conventional or well known.

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Your Honor, the specification does talk about the hardware being typical.

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and the software programming steps being commonly known, and those statements apply to the entire invention and all its claims.

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Those statements are not limited to the independent claims or any claims in particular.

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And in the petition, at pages A132 and 133, the petitioners cited those portions of the specification for all of the challenge claims.

[00:09:00] Speaker 05:
To what extent is it required, would you say,

[00:09:05] Speaker 05:
to offer or to submit extrinsic evidence addressing whether these claims are well known in the art.

[00:09:17] Speaker 07:
Your Honor, in this case, it is not necessary to submit extrinsic evidence.

[00:09:22] Speaker 07:
And this Court has confirmed that in a whole host of cases, extrinsic evidence was not necessary.

[00:09:28] Speaker 07:
In fact, you can rule these claims.

[00:09:31] Speaker 05:
If you have a specification that says that the

[00:09:35] Speaker 05:
that elements of the claim were well-known or conventional.

[00:09:39] Speaker 05:
Is that enough?

[00:09:41] Speaker 05:
Shouldn't there be some sort of offering of evidence to show that?

[00:09:46] Speaker 07:
No, Your Honor.

[00:09:48] Speaker 07:
Statements in the specification that technologies are well-known, routine, typical, or conventional have been held to be sufficient by this court to render claims unpatentable under Section 101.

[00:10:02] Speaker 07:
For example, this court has done that in internet patents

[00:10:05] Speaker 07:
OIP technologies, and cyber phone.

[00:10:08] Speaker 07:
In fact, Your Honors, this court does not even require citations to particular passages of a specification.

[00:10:15] Speaker 05:
In Arioso, we found that the application steps were well known and conventional, but there was evidence in the record that indicated that, outside of just something that the Panty says in the specification.

[00:10:30] Speaker 07:
Your Honor, in some cases, there is extrinsic evidence.

[00:10:33] Speaker 07:
and a petitioner can submit extrinsic evidence.

[00:10:37] Speaker 07:
The petitioners here submitted some extrinsic evidence as to manual modification.

[00:10:42] Speaker 07:
However, Your Honor, that extrinsic evidence is not even necessary here.

[00:10:46] Speaker 07:
All that's necessary here, Your Honor, even before we get to the specification, is the simple absence of the disclosure of an inventive concept.

[00:10:56] Speaker 07:
Under Alice, once the petitioners raise the Section 101 argument and identify the challenge claims,

[00:11:02] Speaker 07:
The board has a duty to search for and find an inventive concept if it's going to uphold the claims as patent eligible.

[00:11:10] Speaker 02:
Well, to be fair to the board, to the decision maker, it's your duty to explain why there's no inventive concept.

[00:11:24] Speaker 02:
You're the one with the burden.

[00:11:26] Speaker 02:
And then if you don't meet your burden, then

[00:11:30] Speaker 02:
then the claims survive under Section 101.

[00:11:34] Speaker 07:
Correct, Your Honor.

[00:11:35] Speaker 07:
And the petitioners met their burden here in multiple ways.

[00:11:38] Speaker 07:
And even if you were to limit petitioners on appeal to the precise argument, the precise words that we uttered at Joint Appendix Pages 132 and 133, referring to all of the challenge claims, including the dependent claims, and citing various portions of the specification, like Column 6, Line 48,

[00:11:59] Speaker 07:
to 7.3, lying 62 to 65 of column 12, Your Honor, that is sufficient, because in those portions of the specification, the applicant said you only need typical hardware to implement the invention.

[00:12:13] Speaker 07:
The software steps are so commonly known, and nowhere else in the patent, Your Honor, was any even putatively inventive concept disclosed.

[00:12:23] Speaker 07:
There was nothing disclosed that would, for example, improve the functioning of any of the technologies recited

[00:12:29] Speaker 07:
in these dependent limitations.

[00:12:31] Speaker 07:
All you have are claims that are saying, take this business process and apply it with a technology.

[00:12:39] Speaker 02:
So I guess your point is that when you read the specification, it's eminently clear that every single hardware component that it's discussing or referring to is something that was known in the art.

[00:12:53] Speaker 02:
And so now these claims are using these known components

[00:12:59] Speaker 02:
for a particular business process?

[00:13:02] Speaker 07:
Yes, Your Honor.

[00:13:02] Speaker 07:
That is clear from those passages in Columns 6, 7, and 12.

[00:13:07] Speaker 07:
It is also clear from Columns 3 and 4.

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But even if the court were to disregard Columns 3 and 4, Columns 6 and 12 are sufficient.

[00:13:16] Speaker 07:
And even if the court were to accept the board's incorrect refusal to recognize petitioners' argument based on Columns 6 and 12, the Supreme Court in Alice

[00:13:28] Speaker 07:
as well as this court in intellectual ventures, internet patents, cybersource, simply relied on the absence of any disclosure of an inventive concept for finding that certain things were not inventive.

[00:13:42] Speaker 07:
For example, Your Honors, and then I would like to reserve the rest of our time for Mr. Franklin's argument, in intellectual ventures, this court stated, nowhere does intellectual ventures assert that it invented an interactive interface that manages website content.

[00:13:57] Speaker 07:
In internet patents, Your Honor, the court said the mechanism for maintaining the state is not described, although this is stated to be the essential innovation.

[00:14:08] Speaker 07:
In this case, Your Honor, the petitioners did cite to various portions of the specification that amply show affirmatively that there's no inventive concept for these dependent limitations.

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However, even under the board's view,

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The Supreme Court in ALICE has said, once you find that the claims are drawn to an abstract idea, you must search for an inventive concept.

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And if you do not search for and find an inventive concept, then these dependent claims, like all the other claims that the board correctly ruled to be patent ineligible, should be held unpatentable under Section 101.

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And the judgment should be reversed with respect to those dependent claims.

[00:14:48] Speaker 07:
Thank you, Your Honors.

[00:14:54] Speaker 03:
Mr. Osborne.

[00:14:59] Speaker 06:
Please, the court.

[00:15:01] Speaker 06:
Yes, I'm John Osborne for Amaranth, Appellee and Cross Appellant, Appellee on the issues Mr. Panikowski just discussed.

[00:15:13] Speaker 06:
So I'll start off with that case.

[00:15:18] Speaker 02:
Will you be not only defending the patentability of the claims the board concluded were patentable, but in these opening remarks, you'll also be seeking reversal of the patent board on all the claims it did find unpatentable?

[00:15:33] Speaker 06:
Correct.

[00:15:34] Speaker 06:
I'll address the issues being addressed, and then I'll go directly to the other issues we appealed.

[00:15:42] Speaker 06:
If it please the court, in rebuttal to my friend Mr. Panachowski,

[00:15:47] Speaker 06:
He's relying on a general statement that known programming techniques makes everything disclosed as a function conventional.

[00:15:58] Speaker 06:
He's saying if someone just uses programming language that has been available to write their inventive software, that's conventional.

[00:16:09] Speaker 06:
But the inventors did not have to invent a new language in order for their new application software to be an invention.

[00:16:18] Speaker 06:
That's his basic argument.

[00:16:19] Speaker 02:
Let me ask you a question about the claims that the board concluded survived under Section 101.

[00:16:26] Speaker 02:
Amaranth isn't standing here arguing that it invented voice capture technology.

[00:16:33] Speaker 02:
Absolutely not.

[00:16:35] Speaker 02:
And it's also not standing here arguing that it invented handwriting capture technology, right?

[00:16:42] Speaker 02:
Absolutely not.

[00:16:43] Speaker 02:
And it was known to use those technologies

[00:16:47] Speaker 02:
as ways of entering data into a computer system.

[00:16:52] Speaker 02:
Correct.

[00:16:52] Speaker 02:
So what you're arguing is the inventive concept is using that known established technology of entering data into a computer system, handwriting capture, voice recognition capture, for purposes of ordering food over

[00:17:15] Speaker 02:
you know, computer network system.

[00:17:18] Speaker 06:
No, I would disagree with that characterization.

[00:17:20] Speaker 06:
What we're saying is that the manual modification was to a menu that had been generated from a first menu, a back office menu, if you will, for a specialized display device, a handheld device or a web page.

[00:17:35] Speaker 06:
It was generated for that, it was transmitted to that, and then it was modified by manual modification.

[00:17:43] Speaker 06:
Thus, all of the couplings between the multi-levels of the menus had to be addressed in the manual modification.

[00:17:55] Speaker 06:
So it's not simply putting some data into a form or recognizing a character or a voice input and doing something.

[00:18:04] Speaker 06:
It's doing to that specific menu.

[00:18:06] Speaker 02:
All those other elements about generating

[00:18:09] Speaker 02:
a second menu from said first menu at the back office server.

[00:18:15] Speaker 02:
And everything else that comes with that, those were all recited in claims that the patent board found there to be lacking in inventive concept.

[00:18:27] Speaker 02:
So for the particular dependent claims where the patent board went the other way and said these claims are OK under 101, the unique aspect about those claims

[00:18:39] Speaker 02:
was the fact that there was this voice recognition capture or this handwriting capture technology that would be used to enter in these custom orders.

[00:18:54] Speaker 02:
And that was necessarily what must have been the inventive concept.

[00:18:59] Speaker 02:
I'm just trying to draw a straight line through the patent board's thinking.

[00:19:03] Speaker 02:
They found all the other elements to lack an inventive concept.

[00:19:08] Speaker 02:
But for these dependent claims, the inventive concept necessarily must have rested on the usage of voice capture technology or handwriting technology to capture the order.

[00:19:21] Speaker 06:
That's correct.

[00:19:23] Speaker 06:
But even given what the board decided as the other elements of the claims, the board still characterized the claim subject matter as menus having handwriting capture or voice capture functionality.

[00:19:36] Speaker 06:
The board did not hold that mere use of voice capture or handwriting technology was the inventive feature.

[00:19:43] Speaker 06:
The board said menus having that capability.

[00:19:47] Speaker 06:
So the board drew a distinction.

[00:19:49] Speaker 06:
It has a basis for making its decision independent of their characterization that it was just handwriting or voice recognition.

[00:19:59] Speaker 06:
That's not what it was.

[00:20:00] Speaker 00:
Was there something about the menus that made it so that this voice to text or handwriting had to be modified in some way to work with these menus?

[00:20:08] Speaker 06:
Something about the menus in the sense that the menu may not have had something that a customer wanted.

[00:20:14] Speaker 06:
So the menu is modified in the sense that the waiter or a customer out at a remote using a remote iPhone or whatever could enter in something.

[00:20:28] Speaker 06:
that is not in the menu that was transmitted to them in the first place and it would go back for fulfillment.

[00:20:33] Speaker 00:
Is there something about the menus themselves that made it so technically the user, there had to be some sort of modification to the voice to data or the handwriting software?

[00:20:44] Speaker 06:
It was the fact that the menus were complicated structures.

[00:20:49] Speaker 06:
They were structures that included multiple levels of

[00:20:54] Speaker 06:
categories items, modifiers and sub-modifiers, and to provide for manual modification functionality in that context required functionality that was specific to the menus that have been generated.

[00:21:11] Speaker 00:
Functionality that was different?

[00:21:12] Speaker 00:
I mean, where is that disclosed in your pet?

[00:21:16] Speaker 06:
It's discussed as, I mean, that specific statement, I'm characterizing what the specification overall

[00:21:23] Speaker 06:
describes.

[00:21:24] Speaker 05:
What's the functionality in that situation?

[00:21:26] Speaker 06:
The handwriting?

[00:21:29] Speaker 06:
The functionality is computer software system that recognizes handwriting, converts it into an input that is effectively a menu item or modifier or sub modifier.

[00:21:47] Speaker 02:
Right, but you know I see in your 733 patent you have a figure 8 where

[00:21:53] Speaker 02:
I guess there's a little screen here on the handheld device where someone can just write in with lemon when someone orders iced tea but they want a lemon.

[00:22:03] Speaker 02:
So I guess the waiter or waitress would then sprawl in on the screen with lemon.

[00:22:10] Speaker 02:
But that concept, I don't want to call it inventive concept yet, but that concept of entering data in on a screen

[00:22:23] Speaker 02:
through handwriting, that's something that was already known and established.

[00:22:30] Speaker 06:
Yes, but that's not the plain concept.

[00:22:32] Speaker 06:
The concept is doing it in the context of these very complicated, multi-level menus that are structured.

[00:22:38] Speaker 05:
But at the end of the day, aren't you just left with a modified menu?

[00:22:42] Speaker 05:
You've changed one menu to another?

[00:22:43] Speaker 06:
Yes.

[00:22:46] Speaker 06:
Yes, but still the court found menus having manual modification functionality

[00:22:52] Speaker 06:
to be an inventive feature, which was not, no evidence was provided otherwise by them.

[00:23:00] Speaker 06:
I'll make a brief mention about the 496 patent that they disclose.

[00:23:04] Speaker 06:
That was just a, or that they rely on.

[00:23:07] Speaker 06:
That was just a medical record form.

[00:23:10] Speaker 06:
It wasn't making any change to a menu.

[00:23:12] Speaker 06:
It wasn't making any change to a second menu that had been generated from a first menu.

[00:23:16] Speaker 02:
We're now talking about the dependent claim about linking a customer

[00:23:22] Speaker 02:
to a customer's own order.

[00:23:23] Speaker 06:
Now I'm talking about handwriting and voice recognition.

[00:23:26] Speaker 06:
I think what the board said on linking was correct.

[00:23:34] Speaker 02:
But, I mean, you're in Amaranth that's not standing here contending that it was the first one to link a customer in a restaurant to that customer's order to make sure that the right customer got the order of food.

[00:23:52] Speaker 06:
Right?

[00:23:53] Speaker 06:
In the context of these generated menus, yes.

[00:23:57] Speaker 06:
In the context of the particular menu.

[00:23:59] Speaker 06:
As a general matter, though, that had been done a long, long time.

[00:24:02] Speaker 02:
As a general matter, no.

[00:24:03] Speaker 06:
Somebody had kept track with a customer's order, yes.

[00:24:06] Speaker 06:
Right.

[00:24:06] Speaker 06:
But these are computerized menus.

[00:24:08] Speaker 06:
These are not claims directed to a method of keeping track of orders in a restaurant.

[00:24:14] Speaker 06:
It's a computerized system.

[00:24:15] Speaker 06:
And there's a lot in there, and this is on top of it.

[00:24:17] Speaker 06:
Here's what I'm wrestling with.

[00:24:19] Speaker 02:
If, hypothetically,

[00:24:23] Speaker 02:
I agree with the patent board that for the independent claims and all of the elements beside the independent claims are really nothing more than a business concept being run on a computer network and therefore it's essentially an ineligible abstract idea.

[00:24:44] Speaker 02:
I don't see at the moment how a dependent claim that adds the additional limitation of linking

[00:24:52] Speaker 02:
you know, on the network, the customer's order to a particular customer at a location in the restaurant as being now something that's a sufficient inventive concept above and beyond the ineligible concept running on a computer network from the independent player.

[00:25:11] Speaker 06:
Well, I understand that, but we disagree with the board's primary decisions in any event.

[00:25:19] Speaker 06:
But even if

[00:25:20] Speaker 06:
those are right, the board has decided based on the evidence it reviewed that these did add additional functionality that distinguished over its decisions, and we think the boards do deference for that decision based on what we said in the briefs.

[00:25:34] Speaker 02:
Are you saying that you would agree that the claims really should stand or fall together?

[00:25:40] Speaker 02:
No.

[00:25:40] Speaker 06:
Like, if you're right on... No, I said the opposite of that, I think.

[00:25:43] Speaker 06:
Okay.

[00:25:43] Speaker 06:
I meant to.

[00:25:44] Speaker 06:
Yeah.

[00:25:45] Speaker 06:
I said the opposite.

[00:25:45] Speaker 06:
No.

[00:25:45] Speaker 06:
They should not stand or fall together.

[00:25:47] Speaker 06:
The board considered the arguments

[00:25:50] Speaker 06:
and the lack of evidence that the appellant submitted as petitioner and decided that there was insufficient evidence to find conventionality of all of the claims that it confirmed.

[00:26:04] Speaker 05:
Do you argue that the lack of evidence that the board found is a factual finding, correct?

[00:26:12] Speaker 05:
That's true.

[00:26:13] Speaker 05:
And why are you making that argument?

[00:26:16] Speaker 05:
Because you're saying that changes are standard to review with respect to that finding?

[00:26:21] Speaker 06:
Well, they're due difference because no evidence was presented.

[00:26:25] Speaker 06:
But independently, we explained in our briefs how they did not, how Mr. Panikowski did not make any, or below at the PTAB, did not make proper arguments to support rejection of those claims.

[00:26:41] Speaker 06:
There's nothing on the record to support it, as the board said.

[00:26:44] Speaker 05:
Well, if it's apparent on the intrinsic record, then there's no need for any additional evidence.

[00:26:53] Speaker 06:
Well, they argue it's intrinsic.

[00:26:56] Speaker 06:
And they also argue, they didn't say it today, but they pointed to this extrinsic evidence, which they didn't properly state below.

[00:27:04] Speaker 06:
But they tried to argue it on appeal.

[00:27:06] Speaker 06:
And we explained in our brief how they failed on that argument.

[00:27:10] Speaker 02:
They did cite two portions.

[00:27:12] Speaker 02:
And Mr. Panacosti pointed those out to us in the record where they were pointing to portions of the specification, which made it pretty clear that

[00:27:22] Speaker 02:
that the invention was conducting this process of generating menus and transmitting menus and then getting orders, but using all pre-existing known technologies, right?

[00:27:38] Speaker 02:
I disagree.

[00:27:38] Speaker 02:
Okay, then what would say be the hardware components?

[00:27:43] Speaker 06:
We're not claiming we invented hardware components that were novel.

[00:27:47] Speaker 06:
We claim we invented application software

[00:27:50] Speaker 06:
that is reflected in Element G of A50 Claim 1, which reflects that four level menus, multiple level menus, are generated from the first menu for a display device and transmitted to that device for display.

[00:28:09] Speaker 06:
These menus use parameters, including modifiers and submodifiers.

[00:28:15] Speaker 06:
It's a complicated structure.

[00:28:17] Speaker 06:
It's transformed

[00:28:19] Speaker 06:
into a menu suitable for, for instance, a small screen handheld display.

[00:28:24] Speaker 06:
That's one of the recited target devices.

[00:28:29] Speaker 06:
Prior to the invention, a menu on a handheld device was entirely separate from a menu in a back office.

[00:28:37] Speaker 06:
The screens were different sizes, like a PC versus a handheld device.

[00:28:41] Speaker 06:
All of the linkages between the various levels

[00:28:43] Speaker 06:
had to be maintained even though the screen was very much smaller.

[00:28:49] Speaker 06:
It wasn't a matter of just reducing the size, just making a 1 to 3 reduction or whatever.

[00:28:57] Speaker 06:
You had to keep all the linkages straight when you changed where things appeared in sequence.

[00:29:01] Speaker 02:
So I know you argued that one of the core, maybe the core moment of your claimed invention is being able to take

[00:29:12] Speaker 02:
lot of information about what could be on a menu and reducing it down to something that can be seen and operated with on a small handheld device.

[00:29:21] Speaker 02:
That's right.

[00:29:22] Speaker 02:
Where in the claim does it really actually say that?

[00:29:27] Speaker 02:
That now what my invention is is somehow now being able to do this on a handheld device that otherwise could not be done.

[00:29:37] Speaker 06:
The claim recites four

[00:29:39] Speaker 06:
levels, categories, items, modifiers and sub-modifiers.

[00:29:43] Speaker 06:
Modifiers and sub-modifiers are selected from a parameters list at the end of the wearing clause.

[00:29:51] Speaker 02:
Right.

[00:29:52] Speaker 02:
The claim says this second menu is going to be generated from selecting things from the first menu, from the modifier menu and the sub-modifier menu, but the claim doesn't go further and then describe how this is actually

[00:30:08] Speaker 02:
hard to do and what we do now that's so interesting to manipulate all that data so that it can be easily seen and worked with on a small handheld device.

[00:30:18] Speaker 06:
As we have detailed in our briefing, the specification supports reading that claim terminology as transforming to something for a specialized display.

[00:30:28] Speaker 06:
The board actually agreed with us on this.

[00:30:30] Speaker 06:
The board said that a web page is displayable in a browser.

[00:30:35] Speaker 06:
Menu has to be turned into a web page as well.

[00:30:38] Speaker 06:
and that a menu is displayable on a computer display.

[00:30:45] Speaker 06:
So that means there's a display requirement in these claims.

[00:30:49] Speaker 06:
Plus, the preamble resides a synchronous communication system.

[00:30:54] Speaker 06:
That has to be interpreted as a bi-directional system.

[00:31:01] Speaker 06:
Synchronous is me talking to you.

[00:31:04] Speaker 06:
If you ask a question,

[00:31:06] Speaker 06:
you expect a response.

[00:31:07] Speaker 06:
This is a synchronous communication system.

[00:31:09] Speaker 06:
That's what the claims are referring to.

[00:31:11] Speaker 06:
The full disclosure in the summary of the invention and specification describes the present invention and in the summary of the invention.

[00:31:21] Speaker 02:
But just to confirm, you know, the practice of data syncing by the time this patent application was filed was something that was already

[00:31:32] Speaker 02:
known and established on computer networks, right?

[00:31:34] Speaker 02:
You didn't invent the ability for updating data on one device and then that data getting automatically developed or updated at other devices.

[00:31:46] Speaker 06:
No, but we invented transforming a back office menu into a specialized menu for a different non-standard display device.

[00:31:55] Speaker 06:
That's why we think they have proposed the wrong construction for CPU.

[00:32:00] Speaker 06:
The board got that wrong.

[00:32:01] Speaker 06:
The board got the preamble construction wrong.

[00:32:04] Speaker 06:
The board got the interpretation of menu wrong.

[00:32:07] Speaker 06:
All those together missed the entire inventive concept.

[00:32:15] Speaker 06:
If I could move on, I used most of my time here for this one.

[00:32:19] Speaker 06:
But with regard to standing, there's a huge standing problem here.

[00:32:32] Speaker 06:
because the board defined the abstract idea as generating a menu.

[00:32:37] Speaker 06:
And then the board changed the definition of abstract idea to generating a menu, generating a second menu from the first menu and sending it to another location.

[00:32:47] Speaker 06:
We didn't hear about the revised definition until the final decision.

[00:32:53] Speaker 06:
We were not given notice.

[00:32:54] Speaker 06:
It was a clear violation of the APA.

[00:32:57] Speaker 06:
There was no technological invention.

[00:32:59] Speaker 06:
The only evidence put forth

[00:33:02] Speaker 06:
by the other side for no technological invention was citing to an examiner's statement that had to do with claims that were abandoned and never allowed, not the claims on appeal entirely irrelevant.

[00:33:13] Speaker 06:
There was no evidence of technological invention.

[00:33:16] Speaker 06:
But this standing issue is a predicate disqualifier for everything on all of these appeals because we did not have an opportunity to address the

[00:33:30] Speaker 06:
abstract idea definition that they put forth.

[00:33:32] Speaker 06:
They actually agreed with us that generating menus was not the abstract idea.

[00:33:39] Speaker 06:
And by incorporating what we said, part of what we said was significantly more, the inventive concept, into their abstract idea definition and sprung that on us in the final decision.

[00:33:50] Speaker 06:
After the oral argument, after every opportunity for us to address that issue.

[00:33:55] Speaker 02:
So the institution decision said the abstract idea was generating and transmitting menus?

[00:34:00] Speaker 02:
Is that right?

[00:34:01] Speaker 06:
No.

[00:34:01] Speaker 06:
The institution decision said generating menus.

[00:34:04] Speaker 06:
That's what Mr. Panachowski's side, Mr. Franklin's side argued, that it was generating menus.

[00:34:10] Speaker 06:
The board agreed with us.

[00:34:11] Speaker 06:
You're right, patent owner.

[00:34:13] Speaker 02:
Or maybe one institution decision on one of the patents said generating and transmitting menus and then an institution decision on a couple of the other patents.

[00:34:21] Speaker 06:
Well, it was a little bit different.

[00:34:22] Speaker 06:
I'm talking about the 850 and 325.

[00:34:24] Speaker 06:
It was a little bit different for 733, but the effect was the same.

[00:34:30] Speaker 06:
And I don't have a lot of time to get into all those differences.

[00:34:32] Speaker 06:
But they changed the definition.

[00:34:35] Speaker 06:
They changed the grounds.

[00:34:38] Speaker 06:
We are entitled to notice of the grounds we have to respond to.

[00:34:42] Speaker 06:
And it's the same as the case, I think it was the Genzyme case yesterday, that you heard Judge Raina.

[00:34:49] Speaker 06:
It was an obviousness context.

[00:34:50] Speaker 06:
But this is even worse, because there the argument was whether references or interpretation of references had been disclosed in the grounds here.

[00:34:59] Speaker 06:
unless you allow the board to say the grounds is 101, they can do anything they want.

[00:35:06] Speaker 06:
If they are not required.

[00:35:07] Speaker 05:
I think Judge Stoll has a question.

[00:35:11] Speaker 05:
I think I'm over here, so I'll reserve... You have three minutes of your time, but we let you go over your time, so that's okay.

[00:35:19] Speaker 05:
We'll add some more time to some of the other... Okay, I appreciate it.

[00:35:22] Speaker 06:
I'll address my other points on rebuttal.

[00:35:26] Speaker 05:
Mr. Matal?

[00:35:28] Speaker 08:
I'd like to begin by addressing the claims that the board found unpatentable and in particular respond to Amaranth's arguments on those points.

[00:35:44] Speaker 08:
Amaranth essentially argues in its

[00:35:47] Speaker 08:
in its brief and its oral argument before this Court that its claims have an inherent displayability argument, that that's implicit in the claims.

[00:35:55] Speaker 08:
All that the claims require, though, is synchronization between the devices, and the specification also limits itself to discussing synchronization.

[00:36:06] Speaker 08:
The prior art in this case, the Windows CE operating system

[00:36:10] Speaker 08:
also in Amaranth's own characterization and its specification provides synchronization.

[00:36:16] Speaker 02:
When we're talking about synchronization right now, which claims are we talking about?

[00:36:20] Speaker 02:
My understanding was the patent board found the synchronous element to not really be part of the claim because it was in the preamble.

[00:36:29] Speaker 02:
At least that's true for

[00:36:31] Speaker 02:
say, claim one of the 733, Pat.

[00:36:33] Speaker 08:
The board found that it's unnecessary to look to the preamble, that the preamble doesn't read in because synchronization is stated in the body of the claims as well.

[00:36:41] Speaker 02:
So there's no need to look to... Claim one of the 733?

[00:36:43] Speaker 02:
I thought that was other claims.

[00:36:45] Speaker 02:
There are claims which talk about data syncing in the body, but then there are other claims that don't, but then refer to it in the preamble.

[00:36:54] Speaker 02:
And I thought that was what the patent owner was contesting, that for those claims,

[00:37:00] Speaker 02:
where the notion of data syncing was only in the preamble.

[00:37:05] Speaker 02:
The patent board incorrectly excluded from consideration of the claim the element of data syncing.

[00:37:13] Speaker 08:
The board's conclusion was that synchronization is required for all the claims to the extent that it didn't rely on the preamble in some of the cases.

[00:37:20] Speaker 08:
It made clear that it didn't rely on that preamble because the body of the claim states the complete invention and the preamble simply wouldn't add anything.

[00:37:28] Speaker 08:
But the board did agree that synchronization is required in all of the claims.

[00:37:34] Speaker 08:
The challenged distinction that Amaranth seeks to draw is this additional requirement of displayability.

[00:37:41] Speaker 08:
That synchronization also requires the ability to actually review this menu on a device.

[00:37:46] Speaker 08:
None of its claims, though, actually expressly state a displayability argument.

[00:37:51] Speaker 08:
Amaranth instead argues that displayability is implied in the synchronization.

[00:37:55] Speaker 08:
The difficulty with this argument is, again, not only is displayability not separately stated, but to the extent that displayability is implied through the claims requirement of synchronization, it's also inherent in the prior arts disclosure of synchronization.

[00:38:11] Speaker 08:
When the claims and the specification require synchronization,

[00:38:14] Speaker 08:
And the prior art also discloses synchronization.

[00:38:16] Speaker 08:
There's a match.

[00:38:17] Speaker 08:
And to the extent that displayability is a proper characterization of what's required by synchronization, it's also attached to the prior art.

[00:38:25] Speaker 08:
In the bottom line is there's no getting away for prior art that describes the exact same thing in the exact same terms.

[00:38:31] Speaker 02:
I thought their displayability argument was more than just the question of data syncing, but it was also the achievement of

[00:38:41] Speaker 02:
being able to display all this information on a very small handheld device, and then that is what was so interesting about the invention.

[00:38:50] Speaker 02:
So what do you have to say about that?

[00:38:52] Speaker 08:
They do contend that the invention effectively requires the information to be reviewable, which makes sense.

[00:39:00] Speaker 08:
Obviously, the invention couldn't function if the waiter or whoever is in the kitchen couldn't see the information.

[00:39:06] Speaker 08:
But again, the question is how you get to the displayability requirement

[00:39:10] Speaker 08:
Nothing in the claims expressly states the displayability argument.

[00:39:15] Speaker 08:
Before the board, Amaranth simply argued that it's implicit in synchronization.

[00:39:19] Speaker 08:
But again, if it's implicit in the claim statement of synchronization, it's also inherent in the prior art's disclosure of synchronization.

[00:39:27] Speaker 08:
If you think about it, the Windows CE operating system, if it's promising to... The specifications characterization of Windows CE is that it provides, I'm quoting, built-in synchronization between handheld devices, the internet,

[00:39:40] Speaker 08:
and desktop infrastructure.

[00:39:42] Speaker 08:
For that system to operate, for it to really provide this synchronization to the handheld device, the information also must be viewable on a handheld device.

[00:39:51] Speaker 08:
The same specification discloses that Windows CE provides on these handheld devices a graphical user interface that allows data to be manipulated like physical objects, that allows files to be created, deleted, modified in a drag and drop fashion.

[00:40:09] Speaker 08:
Windows CE provides all of the functionality that's recited in the claims and that's asserted to provide an inventive concept that would survive step two of the ALICE test.

[00:40:20] Speaker 02:
The specification talks about all kinds of different technologies that it is using in order to achieve its desired results, including the usage of handwriting capture technology and voice capture technology.

[00:40:37] Speaker 02:
Do you agree that those were

[00:40:39] Speaker 02:
known conventional things just based on the plain reading of the patent specification?

[00:40:45] Speaker 08:
Not in light of the patent specification, but I'll concede that this issue has evolved considerably over the course of this morning.

[00:40:55] Speaker 08:
The board's only basis for determining that the petitioner's burden hadn't been met with respect to those dependent claims was only those additional limitations added by the dependent claims.

[00:41:06] Speaker 08:
The board's underlying finding was that

[00:41:08] Speaker 08:
The synchronization and hierarchical menus, all of that was conventional in view of the prior art, in view of the patent statements.

[00:41:16] Speaker 08:
What the board found is that petitioner had simply failed to meet its burden of presenting evidence that those additional limitations, the voice conversion to text, for example, had been shown to be conventional.

[00:41:30] Speaker 08:
In the course of this morning, though, it's been conceded by the patent owner that

[00:41:33] Speaker 08:
that technology was pre-existing, that it was conventional.

[00:41:38] Speaker 08:
On review, on IPR, this court's review is created by Section 319 of the Patent Act.

[00:41:45] Speaker 08:
This court sits as an appellate panel.

[00:41:46] Speaker 08:
It's charged with reviewing the correctness of the board's decision in light of the evidence that was before the board.

[00:41:52] Speaker 08:
It's the office's position that the board's decision was correct in light of the evidence before it because

[00:41:59] Speaker 08:
The petitioners simply hadn't presented any evidence, no analysis, no argument, nothing, that technology such as voice conversion to text was well known and conventional at the time.

[00:42:10] Speaker 02:
You don't think a plain reading of the patent spec, just reading the four corners is sufficient evidence to support the conclusion that what these inventors were doing were just taking off the shelf voice to text conversion technology and using it for its purposes for amending orders in a restaurant?

[00:42:28] Speaker 08:
No, I don't, Your Honor, for several reasons.

[00:42:33] Speaker 08:
When the patent describes, for example, voice-to-text conversion technology or handwriting capture, it doesn't describe it as something that Windows CE provides, for example.

[00:42:45] Speaker 08:
It simply describes it as something that the invention does, and it's simply silent as to where that technology comes from, whether it's conventional or whether it's something that's been invented.

[00:42:55] Speaker 02:
More fundamentally, to the extent that the petitioner... I guess you're saying the board, when it was reading column four, it could not tell whether perhaps Amaranth was the first one to invent voice-to-text conversion.

[00:43:08] Speaker 08:
And more fundamentally, Your Honor, the board's attention was never directed... The answer is yes to my question?

[00:43:14] Speaker 08:
The answer is the board simply didn't answer the question because that question was never posed to the board.

[00:43:20] Speaker 08:
That particular column, that type of evidence,

[00:43:23] Speaker 08:
The other patents now cited on appeal were never cited to the board in the proceeding below.

[00:43:28] Speaker 08:
The entirety of petitioners' argument with respect to these dependent claims is presented on the very last page of their brief, and it consists of two sentences, a conclusory statement that it's post-solution token technology without any analysis of the actual technology or matching it to the claim limitations, and then a statement that the technology could all be done in your head, that it could be done by hand without a computer.

[00:43:52] Speaker 08:
That goes to whether the invention is abstract, and we agree with petitioners that the invention is abstract, but Alice involves two steps.

[00:43:59] Speaker 08:
After you show it's abstract, you also have to demonstrate that that technology is conventional.

[00:44:04] Speaker 08:
Now, in some cases, I'll concede that this court and the Supreme Court has

[00:44:10] Speaker 08:
taken judicial notice of the fact that certain computer technology is conventional.

[00:44:13] Speaker 08:
And Alice, even the US Supreme Court, was willing to say the computer is conventional.

[00:44:18] Speaker 08:
In other cases, this court has gone a little farther in the intellectual ventures case.

[00:44:22] Speaker 08:
It said that a web browser is conventional technology.

[00:44:26] Speaker 08:
The additional limitations here, though, involve things such as voice conversion to text, speaking into a device, and that device automatically and electronically converting that voice into electronic text.

[00:44:36] Speaker 08:
That technology was new at some point during my lifetime.

[00:44:42] Speaker 08:
If this court is completely confident that the priority date of these patents is 1999, if this court is convinced that the conventionality of that technology was perfectly apparent at that date, just as much as a computer was, it could reach the issues of Espante.

[00:44:55] Speaker 08:
But obviously, the more you get into the technology, the more difficult these questions get.

[00:45:00] Speaker 08:
And the more that the petitioner has a burden of providing some basis to show that

[00:45:04] Speaker 08:
It's not just a computer, it's not just the browser or the internet.

[00:45:07] Speaker 08:
There are additional elements here.

[00:45:08] Speaker 08:
And at what point in time did that technology become commercially available and conventional?

[00:45:13] Speaker 08:
And again, the fundamental issue, though, is Section 326E of the Patent Act.

[00:45:19] Speaker 08:
That places the burden on the petitioner to show this case.

[00:45:21] Speaker 02:
What about the evidence that the patent owner was relying on about all the great praise it was receiving for its technology of being able to do these kinds of orders?

[00:45:33] Speaker 02:
Using some... Does that... Is that relevant?

[00:45:38] Speaker 02:
It's not clear to me the patent board was really using it or relying on it.

[00:45:46] Speaker 08:
That type of evidence was presented in the patent owner's response with respect to some of these dependent claims.

[00:45:50] Speaker 08:
The argument about secondary considerations about praise is reprised in this court only with respect to the board's institution decision.

[00:45:59] Speaker 08:
And that institution decision

[00:46:01] Speaker 08:
It's the office's position is unreviewable under the Hinniker doctrine in this case.

[00:46:06] Speaker 08:
In Inrei Hinniker, in the context of re-examination, this court held that when a particular argument is presented... No, we know Hinniker.

[00:46:12] Speaker 02:
The question is, what is, you know, you, the agency, the decision-maker, supposed to do with this kind of evidence in trying to determine whether or not there's an inventive concept or whether this invention is inherently technological?

[00:46:27] Speaker 02:
What are you supposed to do with it?

[00:46:29] Speaker 08:
You know, if that evidence had been presented with respect to the Alice Step 2 determination, and it could have been, it's the office's position that for that evidence to carry weight, a nexus has to be identified with elements of the claimed invention.

[00:46:44] Speaker 08:
Nexus to what, though?

[00:46:46] Speaker 08:
And the commercial appeal or the praise or the unexpected success.

[00:46:51] Speaker 02:
In this particular case, the argument is only, again, presented with respect to an issue that's unreviewable, and on top of that, the argument is... What I'm wondering is, is it a nexus to something that could be regarded as a technological advance, or is it merits to, say, the novelty of a business process that happens to be running on the Internet?

[00:47:11] Speaker 08:
In this case, I can't tell you, Your Honor, because when the argument is presented by Amaranth, they don't cite any aspect of the invention.

[00:47:18] Speaker 08:
They don't make clear whether it's the abstract idea that's novel or whether it's the computer implementation that earned all of this praise, because no element of the

[00:47:27] Speaker 08:
invention is identified, there can't be a nexus to nothing.

[00:47:31] Speaker 08:
If no particular element of the invention is cited as generating that praise, then there's no basis for finding secondary considerations.

[00:47:40] Speaker 05:
Tell us again why we can't review this issue.

[00:47:43] Speaker 08:
Amaranth challenges the Board's 101 Step 2 of Alice Determination on four separate grounds on the basis of

[00:47:52] Speaker 08:
synchronization, manual modification, hierarchical menus, and one other ground.

[00:47:59] Speaker 08:
And then it reprises the same four arguments and tries to repackage them as part of the challenge to institution.

[00:48:04] Speaker 08:
This it cannot do under this court's decision in Inrei Hinniker.

[00:48:08] Speaker 00:
Inrei Hinniker... What if we don't agree with your Hinniker argument?

[00:48:12] Speaker 00:
I mean, we do have the jurisdiction under Rosada.

[00:48:16] Speaker 00:
We are able to look and see whether the board had jurisdiction over whether this was in fact a CBN, right?

[00:48:22] Speaker 08:
Yes, Section 324E of the Patent Act, which otherwise bars some review of institution decisions of PGR proceedings, was construed by this court in Versailles not to stand as a barrier to review.

[00:48:35] Speaker 08:
Inray-Hinnocker, though, is a doctrine that provides an independent barrier to review of some decisions when those decisions are reviewed again on the court's final decision.

[00:48:43] Speaker 02:
But if the decision is whether or not this is a technological invention, and then they're coming forward with

[00:48:50] Speaker 02:
you know, if you want to call it secondary consideration of non-obvious fine, but nevertheless, they're coming forward with some kind of extrinsic evidence to try to point out that this is, in fact, a technological invention.

[00:49:01] Speaker 02:
Then don't we need to review that issue under Versada?

[00:49:06] Speaker 08:
The 324E isn't a barrier to this court's review, but Hinniker should be.

[00:49:12] Speaker 08:
Hinniker tells you when it's the same.

[00:49:14] Speaker 02:
Well, do you agree that under Versada,

[00:49:18] Speaker 02:
we have jurisdiction to review whether the patent board was correct in concluding that these claims are not directed to a technological invention.

[00:49:29] Speaker 08:
Versada forms no barrier, but Versada, again, was directed solely to the proper construction of Section 324E.

[00:49:36] Speaker 08:
Henneker derives from the re-exam context.

[00:49:38] Speaker 02:
In the re-exam context, it's clear, for example, that there was no independent... This is like Versada and Blue Calypso hold, that we are supposed to

[00:49:47] Speaker 02:
determine whether or not it was correct for the patent board in an institution decision to conclude that an invention was not technological for purposes of instituting a covered business method patent.

[00:49:59] Speaker 02:
You agree with me, right?

[00:50:01] Speaker 02:
Yes, Your Honor.

[00:50:03] Speaker 08:
These are all CBNs.

[00:50:04] Speaker 08:
All the patents are.

[00:50:06] Speaker 08:
Yes, yeah.

[00:50:08] Speaker 08:
Again, I'd simply emphasize that Hennicker was a prudential doctrine that isn't based on a particular review bar in the re-exam statute.

[00:50:15] Speaker 08:
It's instead implied from the structure of the proceeding.

[00:50:18] Speaker 08:
And it appears to be a prudential doctrine created by this court to insulate itself on the burden of essentially relitigating the same question twice.

[00:50:26] Speaker 00:
Well, if we don't agree with you on Hinniker, my question is, what is your response then to the argument that the board erred by failing to consider secondary considerations?

[00:50:35] Speaker 00:
Do you have a response beyond Hinniker?

[00:50:37] Speaker 08:
The secondary considerations were just

[00:50:43] Speaker 08:
On the merits, because no particular element of the invention is cited in relation to the secondary considerations, there's no nexus shown.

[00:50:52] Speaker 08:
And under this court's case law, there always has to be some nexus shown to some specific feature of the invention.

[00:50:57] Speaker 08:
For all we know, the praise could have derived from the abstract idea that's embodied in the claims and not from the technology.

[00:51:04] Speaker 00:
As I read, the board's institution decision appears to have looked at two different prongs.

[00:51:10] Speaker 00:
Did both of them?

[00:51:11] Speaker 00:
rely on obviousness?

[00:51:12] Speaker 00:
Or does just one of them rely on obviousness?

[00:51:15] Speaker 08:
I'm sorry, Your Honor.

[00:51:17] Speaker 00:
In the board's institution decision, where it defined what a CBM, based on the PTO's regulations, it relied on two prongs.

[00:51:25] Speaker 00:
It said there were two prongs.

[00:51:27] Speaker 00:
One was, I think, whether there was a technological innovation that was novel and non-obvious.

[00:51:32] Speaker 00:
And one of them was whether there was a technical solution to a technical problem.

[00:51:37] Speaker 00:
So my question is kind of a softball, which is that,

[00:51:40] Speaker 00:
Did both of those prongs rely on obviousness when you look at the board's decision?

[00:51:45] Speaker 08:
No, it's really that first prong from the regulations that basically tracks the obviousness inquiry and also basically tracks the step two of the ALIS inquiry.

[00:51:55] Speaker 08:
Obviously, there's a bit of overlap between step two of ALIS and an obviousness analysis.

[00:52:01] Speaker 08:
The director's position is simply, in a 103-101 case, you're already going to be forced to review substantially the same question twice.

[00:52:09] Speaker 08:
and Hinnaker should shield this court from the burden of reviewing the same question a third time under a deferential review standard.

[00:52:15] Speaker 08:
And ultimately, to the extent this court concludes that Hinnaker isn't a bar and that decisions should be reviewed, all of the reasons why this isn't a technological, I mean, all of the reasons why step two of ALIS hasn't been met with respect to these claims also applies to the technological invention inquiry, which is reviewed under a deferential review standard.

[00:52:37] Speaker 08:
I think we have that, Mr. Mitchell.

[00:52:39] Speaker 05:
Mr. Franklin.

[00:52:48] Speaker 01:
Thank you, Your Honors, and may it please the Court, Jonathan Franklin, also representing all the parties that were petitioners in the proceedings below.

[00:52:58] Speaker 01:
I'd like to be primarily responsive here on both points, responding on both the dependent claims that the board erroneously left in, as well as all of the other claims that in our opinion the board correctly invalidated.

[00:53:13] Speaker 01:
As to the first, I think the brief response to that is that we did hear from the council an argument that they did not invent the things that the board said

[00:53:24] Speaker 01:
ultimately were the innovative concepts that sustained these patents.

[00:53:28] Speaker 01:
And I'm sure the court is aware, but in its decision, which I believe was authored by Judge Tannen, content extraction, the court specifically relied on a concession and oral argument about

[00:53:39] Speaker 01:
scanning technology, and in that case, text recognition technology being conventional.

[00:53:45] Speaker 01:
We don't think that the court needs to do that, but if the court has any concern about that, I think that concession has now removed that issue.

[00:53:52] Speaker 01:
Where is the concession?

[00:53:53] Speaker 01:
I'm sorry?

[00:53:54] Speaker 01:
Where is it?

[00:53:55] Speaker 01:
I'm saying the concession that I heard in oral argument from my colleague over here.

[00:53:59] Speaker 01:
But I don't think that we need to.

[00:54:00] Speaker 01:
I think that fundamentally, we did present the argument to the board that all of the claims were invalid

[00:54:06] Speaker 01:
and they were all invalid because they only utilized, had an abstract idea, it was implemented through conventional technology.

[00:54:15] Speaker 01:
At that point, we presented the issue and the board had the obligation to find an inventive concept.

[00:54:20] Speaker 01:
But moving beyond that, I think I've heard a lot from Amaranth's council about how, I think they used the term complicated structures many different times.

[00:54:33] Speaker 01:
These structures are not complicated and the board

[00:54:36] Speaker 01:
found them not to be complicated because the patent itself says they're not.

[00:54:40] Speaker 01:
And the patent says that hierarchical menus were well-known in the art.

[00:54:46] Speaker 01:
It also says that every other of the features that Amaranth now claims is its inventive concept were, in fact, well-known in the art.

[00:54:55] Speaker 01:
That would include not only the hierarchical menus, but the synchronicity

[00:55:02] Speaker 01:
component, which is in a couple of the claims, Judge Chen, of the 733 patent, but otherwise it's just in the preamble.

[00:55:09] Speaker 01:
But in any event, the board looked at that and said that synchronization, as the patent itself says, and I think as Mr. Matal said as well, synchronization is a built-in component of Windows CE.

[00:55:22] Speaker 01:
Windows CE applies specifically to mobile devices.

[00:55:27] Speaker 01:
So they did not invent that either.

[00:55:30] Speaker 01:
Nor did they invent the displayability on non-standard devices, which is not again an element of the claims, but in any event, that's also an element of Windows CE.

[00:55:43] Speaker 01:
I also heard from Amarant's counsel that this was inventive because they had some sort of novel software that they claim now, but that's not claimed in the patent.

[00:55:55] Speaker 01:
In fact, the patent claims the opposite.

[00:55:57] Speaker 01:
All of them say,

[00:55:58] Speaker 01:
Not only is the computer language known, but the discrete programming steps are commonly known and therefore did not need to be specified in the written description.

[00:56:09] Speaker 01:
So again, we have no innovative concept in the software.

[00:56:12] Speaker 01:
What we're left with, as the board properly found, is an abstract idea, simply the generation and transmission of computer menus, even in hierarchical state, combined with the implementation of that method using

[00:56:28] Speaker 00:
routine, ordinary, conventional computer technology.

[00:56:46] Speaker 01:
more of a clarification than a change.

[00:56:48] Speaker 01:
In the original they talked about generating the menus and then they talked about generating and transmitting them because they are generated on two different devices.

[00:56:57] Speaker 01:
But even putting that to one side, there was no prejudice to Amaranth.

[00:57:01] Speaker 01:
The court reviews the final decision and it reviews it de novo.

[00:57:05] Speaker 01:
So this court reviews all of the determinations de novo.

[00:57:09] Speaker 01:
Amaranth's apparent

[00:57:11] Speaker 01:
complaint is that they didn't have the opportunity to present some sort of an innovative concept in response to the board's characterization of the abstract idea.

[00:57:19] Speaker 01:
But they did.

[00:57:20] Speaker 01:
They presented all of the components that they claimed to be innovative, including the communication, the downloading, the synchronization, the transmitting from one device to the other that the board included in the abstract idea.

[00:57:36] Speaker 01:
So Amarath said, we think this is our inventive concept, and the board

[00:57:41] Speaker 01:
rejected that.

[00:57:41] Speaker 01:
And you can find that at pages 21 to 22 of the appendix.

[00:57:47] Speaker 01:
I believe that's in the 733 case.

[00:57:50] Speaker 01:
And what the board said in that passage is they said that this idea of transmitting to another device is simply routine conventional activity.

[00:58:05] Speaker 01:
So it didn't add anything to the

[00:58:10] Speaker 01:
abstract idea and the board found that and I think that so I'm looking at page 21 to 22 of the 850 appendix excuse me and that would be 28 to 29 of the 733 and what they say is that the specification discloses that the menu is transmitted to the wireless hand cell device and web page by downloading

[00:58:29] Speaker 01:
Such downloading is merely a conventional post-solution activity.

[00:58:32] Speaker 01:
Conventional post-solution activity is not sufficient to transform the abstract idea into patent-eligible subject matter.

[00:58:38] Speaker 01:
So the board didn't say, just because we had defined it as part of our abstract idea, we're not going to consider the Amaranth's arguments on that.

[00:58:45] Speaker 01:
They did consider Amaranth's arguments, and they rejected them on the ground, that it is simply insignificant conventional post-solution activity.

[00:58:54] Speaker 01:
I'd like to briefly address, if I might,

[00:58:59] Speaker 01:
the colloquy that occurred on the secondary considerations evidence.

[00:59:04] Speaker 01:
And I think I want to follow up on some things that Judge Stoll said.

[00:59:07] Speaker 01:
Yes, you're correct, Your Honor, that the board's regulations dealing with the technological invention prong have multiple parts to them.

[00:59:18] Speaker 01:
And in Versada, the court found the part that dealt with novel and non-obvious

[00:59:23] Speaker 01:
technology that that was essentially useless.

[00:59:26] Speaker 01:
I don't think the court might have used some word to that effect in Versada saying that it's essentially an issue that might occur on the merits were those to be in the case.

[00:59:36] Speaker 01:
The technological invention inquiry does not depend on an obviousness analysis with secondary considerations.

[00:59:44] Speaker 01:
What it depends on as the court found in Versada is whether there's a technical solution to a technical problem

[00:59:51] Speaker 01:
And that requires more than just a computer.

[00:59:54] Speaker 01:
Mind you, almost every, if not every, CBM eligible patent is going to have a computer in it.

[01:00:02] Speaker 01:
These are covered business methods.

[01:00:04] Speaker 01:
They have computers.

[01:00:05] Speaker 01:
Versata says that's not enough.

[01:00:07] Speaker 01:
If the computer's in it, it has to be a computer using non-conventional computer technology that would take it out of the CBM review.

[01:00:18] Speaker 01:
So if it only uses conventional technology,

[01:00:21] Speaker 01:
that is not a technical solution to a technical problem.

[01:00:25] Speaker 01:
That was held in Versada and that's what the board held in this case.

[01:00:29] Speaker 01:
The board correctly determined that this was not a technical solution to a technical problem.

[01:00:34] Speaker 01:
What would be examples of non-conventional computer technology?

[01:00:39] Speaker 01:
If you invented some sort of, you know, as your colloquy I think with the council, you know, if you invented the voice recognition technology and that was viewed as your

[01:00:49] Speaker 01:
inventive concept, that would be non-conventional.

[01:00:52] Speaker 02:
I think that... So that's the standard now for section 101 for computer related inventions?

[01:00:59] Speaker 01:
You have to invent computer technology?

[01:01:02] Speaker 01:
It's not that... The standard is that if you're simply implementing the abstract idea on a computer using conventional computer technology, that isn't enough.

[01:01:11] Speaker 01:
And that is Alice, that's Ultramershal, that's content extraction, that's OIP, that's... I mean, there's a... I think your honor is well aware of all the press at

[01:01:19] Speaker 01:
I mean, certainly there could be exceptions where what you invented, what was truly your invented concept might not necessarily involve technology, and we don't have that case before us.

[01:01:33] Speaker 01:
But we're talking about right now the technological invention component of the

[01:01:40] Speaker 01:
the instituting order threshold issue, which I do agree, frankly, that it is reviewable under Versada, that issue.

[01:01:48] Speaker 01:
But that issue really depends on whether there's a technological invention.

[01:01:53] Speaker 01:
So whether or not their method itself was novel or not obvious, that's not relevant.

[01:01:59] Speaker 01:
And the PTO's regulations make that absolutely clear.

[01:02:03] Speaker 01:
It's 77 Fedreg, page 48764,

[01:02:08] Speaker 01:
The PTO regulations provide that reciting the use of known prior art technology to accomplish a process or method is not a technological invention even if that process or method is itself novel and not obvious.

[01:02:21] Speaker 01:
And that makes sense because we're talking about technological inventions here.

[01:02:24] Speaker 01:
We're not talking about an invention which is, for example, maybe a new abstract idea that you're recognizing.

[01:02:33] Speaker 01:
That's not going to

[01:02:35] Speaker 01:
be enough to take the patent out of CBM review.

[01:02:39] Speaker 01:
Once it's in the review, ultimately, in this case, I think, frankly, as in Versada, the technological invention inquiry essentially merges into the Section 101 inquiry, the second step of it, because you're looking for an inventive concept here.

[01:02:58] Speaker 01:
And again, nothing in the patent discloses an inventive concept on any of the claims, and I think

[01:03:04] Speaker 01:
I agree with most of what Mr. Matal said, defending the board's reasoning, and that is that there is nothing inventive here.

[01:03:11] Speaker 01:
It is simply an abstract idea that is implemented using what the patent itself describes as conventional computer technology.

[01:03:22] Speaker 02:
What about generating a second menu by transforming data that resides in multiple other hierarchical

[01:03:32] Speaker 02:
menu structures?

[01:03:33] Speaker 01:
Well, the transformation of data, and Ultramershal makes this clear as well as some other cases, that isn't itself, that does not allow for a finding of validity under Section 101 if all you're doing is merely transmitting data.

[01:03:46] Speaker 01:
But the board looked at all of that and said hierarchical menus are in fact routine, and they also said that altering

[01:03:55] Speaker 01:
the menus themselves is also something that was routine.

[01:03:59] Speaker 01:
Because the patent itself describes the technology for, says that the common operating systems are used to delete things from menus and add things to menus.

[01:04:08] Speaker 05:
Here we're looking at something more than just transferring data, correct?

[01:04:12] Speaker 05:
I mean, it's transferring data and that results in a new modified menu or a different menu.

[01:04:17] Speaker 01:
Well, you're transmitting the modified

[01:04:20] Speaker 01:
menu, I believe, Your Honor.

[01:04:22] Speaker 01:
So you've modified it by essentially, you're taking categories... That's the data, but it results in a different menu.

[01:04:30] Speaker 01:
Yes, but that's not the kind of transformation that would, for example, pass the machine or transformation test.

[01:04:38] Speaker 01:
Alice makes that clear.

[01:04:39] Speaker 01:
The court's precedents are clear that just simply transforming data from one form into another doesn't meet the transformation test.

[01:04:47] Speaker 01:
So what you're left with

[01:04:48] Speaker 01:
again is simply an abstract idea implemented through conventional technology.

[01:04:53] Speaker 01:
That's not enough.

[01:04:54] Speaker 01:
And the board was correct on this.

[01:04:55] Speaker 01:
The board found that that wasn't enough.

[01:04:58] Speaker 01:
And all we're saying here is take that and apply it to all the claims, because none of the claims involve anything other than conventional computer technology.

[01:05:08] Speaker 02:
So what's your definition of the abstract idea here?

[01:05:11] Speaker 01:
We'll accept the board's definition of generating and transmitting menus as the abstract idea.

[01:05:17] Speaker 02:
Well, what about what it rested on in the final written decision?

[01:05:21] Speaker 02:
Generating a second menu from a first menu and transmitting the second menu to a different location.

[01:05:27] Speaker 01:
Yeah, I believe that when it came to defining the abstract idea

[01:05:34] Speaker 01:
Yes, it's generating a second menu from a first menu and sending the second menu to another location.

[01:05:40] Speaker 01:
Excuse me, that's the precise... A little more elaborate than what... It is, and I apologize for that.

[01:05:45] Speaker 01:
I wouldn't know it, though.

[01:05:46] Speaker 01:
Actually, if you look at some of the court's opinions, you'll see the abstract idea defined at slightly different levels of generality, even in the same opinion.

[01:05:53] Speaker 01:
I was looking at the internet patents case, and it describes a couple of different ways in that opinion.

[01:05:59] Speaker 01:
But yes, we'll accept that specific

[01:06:03] Speaker 01:
abstract idea that the board identified and that there's nothing.

[01:06:07] Speaker 01:
Which one, the first one or the second one?

[01:06:08] Speaker 01:
Generating a second menu from a first menu and sending the second menu to another location.

[01:06:12] Speaker 01:
That's what was in the final decisions.

[01:06:15] Speaker 02:
Well, what if we think that

[01:06:17] Speaker 02:
that shoveled in too many details into the description of the abstract idea, then what do we do?

[01:06:22] Speaker 01:
Well, the court has de novo review here, and even in the CBM proceeding, and that was said in Versada, that the review of this court is de novo.

[01:06:30] Speaker 01:
And this is a question of law.

[01:06:32] Speaker 01:
So the court can review de novo, the question of law, and decide whether or not there is, in fact, an inventive concept here beyond an abstract idea.

[01:06:42] Speaker 01:
So I think the court, again, looking at the

[01:06:47] Speaker 01:
The Internet Patents case, the court described the abstract idea slightly differently in different... Page 1348 of that opinion, it talks about the abstract idea as retaining information in the navigation of online forms.

[01:07:03] Speaker 01:
And then later in the same page, the court describes the abstract idea as avoiding loss of data.

[01:07:07] Speaker 01:
So the fact that it's described at different levels of generality doesn't affect

[01:07:13] Speaker 01:
the legal question that the court needs to analyze, which is, in essence, have they added an inventive concept that goes beyond something that is an abstract idea?

[01:07:22] Speaker 02:
When the board or maybe even a district court determines that a particular claim element was well-known conventional technology and therefore the claim is just resting on performing an abstract process on known conventional technologies,

[01:07:40] Speaker 02:
Is that a fact-finding or is that a legal question, whether a particular claim element citing some form of technology is conventional, well-known, and established?

[01:07:51] Speaker 01:
I view it as a legal question, Your Honor, and I think that's how the courts have reviewed it.

[01:07:54] Speaker 01:
Otherwise, it could not have resolved, as Mr. Panachowski said, so many cases on motions to dismiss and motions for judgment on the pleadings.

[01:08:02] Speaker 01:
It's a legal question, and the question is, looking at the patent, which is not extrinsic, I mean, it's looking at the patent, is there an inventive concept disclosed here?

[01:08:11] Speaker 01:
And there is no inventive concept disclosed in this patent.

[01:08:14] Speaker 01:
They don't purport to have invented any of the things that they claim are their inventive concepts.

[01:08:20] Speaker 01:
Ultimately, what we're left with is the abstract idea implemented under routine technology.

[01:08:27] Speaker 01:
And that, we know from all of the precedents, is not enough under Section 101.

[01:08:32] Speaker 01:
So we would ask the court to reverse the allowance of the dependent claim that's at issue in the 15-17-03 appeal

[01:08:39] Speaker 01:
and affirm all of the other determinations of the board.

[01:08:43] Speaker 01:
Thank you.

[01:08:45] Speaker 05:
Thank you, Mr. Franklin.

[01:08:49] Speaker 05:
Hi, Mr. Osborne.

[01:08:50] Speaker 05:
Eight minutes, sir.

[01:08:52] Speaker 05:
If you can go over, you have some additional time.

[01:08:55] Speaker 05:
I'll grant you four more minutes if you need it.

[01:08:58] Speaker 06:
Okay, thank you.

[01:09:00] Speaker 06:
Appreciate that.

[01:09:02] Speaker 06:
First of all, nothing my friends have said takes away from the error in the first definition of abstract idea.

[01:09:09] Speaker 06:
I'm happy that they at least would agree to the second definition, but that second definition is wrong as well.

[01:09:19] Speaker 06:
All of the board's 101 determinations were based on incorrect claim constructions as I discussed previously and detailed very clearly in our brief.

[01:09:32] Speaker 06:
Contrary to what they've said, the specification does not say that the claim features were well-known.

[01:09:40] Speaker 06:
Windows CE didn't have synchronous menu generation and transmission, as claimed.

[01:09:48] Speaker 06:
And Bill Gates and Microsoft lauded Amrant's technology and invested in Amrant specifically for that reason.

[01:09:55] Speaker 06:
That's in our briefs.

[01:09:56] Speaker 06:
It was presented to the board.

[01:09:59] Speaker 06:
They refused to consider it without even a comment.

[01:10:01] Speaker 02:
Just to clarify, Windows CE had data syncing.

[01:10:06] Speaker 02:
But I guess your response is,

[01:10:10] Speaker 02:
It didn't have data syncing for this particular kind of data.

[01:10:13] Speaker 06:
It didn't have network generation and transmission and making sure there was and providing a synchronous communication between the menu structures.

[01:10:23] Speaker 06:
It was the operating system for the handheld device that Amaranth was using at the time.

[01:10:30] Speaker 06:
And Amaranth, I don't know if they sought out Microsoft or Microsoft found out about them because of a trade show.

[01:10:37] Speaker 06:
I think that's probably what happened.

[01:10:38] Speaker 06:
But Microsoft was very interested because this was such a good application for its handheld device.

[01:10:45] Speaker 06:
But they didn't do that.

[01:10:46] Speaker 06:
They provided the handheld operating system and the desktop operating system.

[01:10:50] Speaker 06:
Amaranth provides something that those could really be used for.

[01:10:53] Speaker 06:
But all Windows CE did was allow the

[01:10:58] Speaker 06:
handheld device to work.

[01:11:00] Speaker 06:
It didn't provide the software for doing what these guys say.

[01:11:02] Speaker 05:
Tell us again the difference between what AMRAP provided and Windows CE with respect to synchronization.

[01:11:08] Speaker 05:
But what's the difference?

[01:11:10] Speaker 06:
There's nothing about menus, restructuring, reconfiguring, or transforming menus from a back office menu and transmitting it for display on a handheld device or web page.

[01:11:22] Speaker 06:
There's nothing in Windows CE, even today,

[01:11:26] Speaker 06:
directed to that functionality.

[01:11:29] Speaker 05:
Under Windows CE, you could synchronize files from one device to another, correct?

[01:11:34] Speaker 06:
You can synchronize files, but you cannot synchronize menus, restaurant menus that are used... Wouldn't a menu ultimately be a file, a data file?

[01:11:46] Speaker 06:
A menu?

[01:11:47] Speaker 06:
No, a menu is not a simple file.

[01:11:50] Speaker 06:
It is data elements, but all those data elements are linked together

[01:11:55] Speaker 06:
by linkages, and that's why the hierarchical menu structure is very important.

[01:12:00] Speaker 06:
It's a specific hierarchical menu structure that gets transformed into another specific hierarchical menu structure.

[01:12:07] Speaker 06:
It's not just transforming data.

[01:12:09] Speaker 06:
It's changing one computerized structure into another computerized structure.

[01:12:16] Speaker 06:
Windows CE had and has today absolutely no capability to do anything of that nature.

[01:12:22] Speaker 02:
So let's assume for the moment

[01:12:25] Speaker 02:
My daughter sells Girl Scout cookies.

[01:12:28] Speaker 02:
And she's selling them out in front of the supermarket.

[01:12:31] Speaker 02:
And she's created a database somewhere that has an inventory of the number of different categories of Girl Scout cookie boxes that she sells.

[01:12:42] Speaker 02:
And then as people come up and buy her boxes of cookies, she enters it into her little PDA.

[01:12:50] Speaker 02:
And because it's data synced with the database back at

[01:12:54] Speaker 02:
the home office CPU, we know she can keep track of the inventory, that the number of boxes of each different kind of Girl Scout cookies is going down as she continues to sell more and more Girl Scout cookie boxes.

[01:13:13] Speaker 02:
Data syncing was known.

[01:13:15] Speaker 02:
She's using the known data syncing, but in your estimation, does she have an inventive

[01:13:22] Speaker 06:
I don't know if she does or not, but that's irrelevant to this question because that's not what she's doing is not this claim subject matter.

[01:13:29] Speaker 06:
This claim subject matter is hierarchical structures, computerized structures which are transformed into a different hierarchical structure for a specialized device and the board's own constructions support that view, that displayability require that view.

[01:13:45] Speaker 02:
You don't want to try to answer my question?

[01:13:47] Speaker 06:
I am trying to answer your question.

[01:13:50] Speaker 02:
The question is

[01:13:51] Speaker 02:
Is there an inventive concept there in using data syncing in that way for keeping track of inventory?

[01:13:59] Speaker 06:
Today, I would have to say no, but I'm not an expert in the field.

[01:14:03] Speaker 06:
I haven't looked at that prior art.

[01:14:05] Speaker 06:
But data syncing is not inventive now, and data syncing was not inventive then.

[01:14:11] Speaker 06:
But we don't claim data syncing.

[01:14:14] Speaker 06:
We claim particular menu structures that are more than data.

[01:14:18] Speaker 06:
They are in a database.

[01:14:21] Speaker 06:
But they are linked together via relationships that are defined by code.

[01:14:26] Speaker 06:
The data elements are linked together.

[01:14:28] Speaker 06:
And then all of that is transformed into some different structure that will work on a handheld device or a web page.

[01:14:37] Speaker 06:
That's not just data syncing.

[01:14:46] Speaker 06:
The board did not even consider our argument for inventive concept because

[01:14:51] Speaker 06:
They made their conclusions based on incorrect claim constructions, particularly of menu.

[01:14:55] Speaker 06:
That's detailed in our brief, and I don't have a lot of time to get into it, but I refute what they say.

[01:15:01] Speaker 06:
Bursada involved organizing data.

[01:15:04] Speaker 06:
These claims are directed to much more than organizing data.

[01:15:08] Speaker 06:
In Bursada, it was more like your daughter's Girl Scout example without even transmitting anything.

[01:15:16] Speaker 06:
That's what they were doing there.

[01:15:17] Speaker 06:
This is very different.

[01:15:23] Speaker 06:
The board was required to consider objective evidence in its institutions' decisions, but it did not.

[01:15:29] Speaker 06:
It did not even comment.

[01:15:31] Speaker 06:
The rule states that a technological invention requires an inquiry into obviousness and novelty.

[01:15:40] Speaker 06:
The no-nexus argument that my friends made on the other side... I'm sorry, could you repeat that?

[01:15:45] Speaker 02:
The inquiry into whether something as a technological invention requires

[01:15:52] Speaker 02:
An inquiry into novelty and non-obviousness?

[01:15:55] Speaker 06:
Correct.

[01:15:56] Speaker 06:
The technological invention definition includes whether the patent claims are directed something that is more than a non-novel and obvious invention.

[01:16:09] Speaker 06:
So how can one make that determination without considering obviousness?

[01:16:12] Speaker 02:
I guess non-obvious technical advance, right?

[01:16:15] Speaker 02:
I mean, if your advance is a particular way of selling cookies,

[01:16:22] Speaker 02:
you know, that's not going to be enough to establish a technological invention.

[01:16:27] Speaker 06:
Correct, but we're technical as we explained in our briefs and we explained to the board, but they did not consider that at all.

[01:16:34] Speaker 02:
They also made an inquiry on whether your invention was a technical solution that solved the technical problem.

[01:16:41] Speaker 06:
Yes, and then we explained why we think the reasoning

[01:16:45] Speaker 06:
I've stated today in the reasoning in our papers before the board explain why the technical feature prong is satisfied for some of the same reasons that the technological invention prong is satisfied.

[01:17:01] Speaker 06:
With regard to Nexus, that whole Nexus argument that you heard from the other side was and from the PTO was argued for the first time on appeal.

[01:17:12] Speaker 06:
There was nothing

[01:17:13] Speaker 06:
nothing before the PTAB concerning an absence of nexus.

[01:17:19] Speaker 06:
They didn't talk about it on the other side, secondary factors.

[01:17:24] Speaker 06:
The PTAB didn't talk about it at all.

[01:17:27] Speaker 06:
So the board never considered the proverred objective evidence and rebuttal evidence.

[01:17:33] Speaker 06:
Thus nothing could have been washed clean.

[01:17:37] Speaker 06:
There was nothing there to wash clean.

[01:17:38] Speaker 06:
They didn't even consider it later on.

[01:17:40] Speaker 06:
So this idea

[01:17:41] Speaker 06:
that the ultimate determination under 101 is the same or includes the determination for standing is wrong because it was never looked at.

[01:17:56] Speaker 06:
Nothing was ever addressed later on on the technological invention prong, technological invention exception.

[01:18:02] Speaker 06:
So there was nothing to wash clean.

[01:18:03] Speaker 06:
There was no washing, simply no washing, clean or otherwise.

[01:18:13] Speaker 06:
Mr. Franklin mischaracterized what I said before.

[01:18:16] Speaker 06:
I did not say that the manual modification subject matter was conventional, and I think the transcript will show that.

[01:18:22] Speaker 06:
I said that manual modification in the context of the generated hierarchical menus for particular displays was non-conventional, and that's what the board found, at least as regards menus.

[01:18:35] Speaker 06:
The board did disagree with some hierarchical menus, but that's been addressed separately.

[01:18:44] Speaker 06:
And the questioning from the court regarding Henry Hennicker we agree with.

[01:18:52] Speaker 06:
Hennicker allows this court to review the standing determination.

[01:18:59] Speaker 06:
I'd like to say a little bit about the problem solved by the invention.

[01:19:03] Speaker 06:
I've hit on some of these points already, but prior to the invention, wireless handheld devices were not synchronized with back office menu systems.

[01:19:11] Speaker 06:
menus were complex.

[01:19:12] Speaker 06:
They had linked levels.

[01:19:14] Speaker 06:
They had to be re-entered separately on each handheld device.

[01:19:17] Speaker 06:
If you had a handheld device, let's say in your restaurant, that you wanted the waiter to use.

[01:19:22] Speaker 06:
Handles were different because of their smaller screens.

[01:19:26] Speaker 06:
Separate entry took hours of time and had to be done separately for every handheld device.

[01:19:30] Speaker 06:
So you actually had to physically enter in everything on however many computers you had that

[01:19:40] Speaker 06:
that waiters were going to use.

[01:19:43] Speaker 06:
This was not done automatically, or even in a few minutes.

[01:19:45] Speaker 06:
It took hours and hours.

[01:19:48] Speaker 06:
And whenever something changed in the back office menu, all the hand-helds would be out of synchronization.

[01:19:54] Speaker 06:
Synchronization, meaning the menu was not the same on the hand-helds as it was in the back office.

[01:19:59] Speaker 06:
That's the problem with this invention.

[01:20:01] Speaker 06:
Solve-to-solve by taking that back office menu, changing it, porting it out to devices

[01:20:08] Speaker 06:
and displaying properly on them.

[01:20:11] Speaker 06:
The inventors recognized that problem, and the problem wasn't even recognized before, and then found the solution in what's claimed.

[01:20:21] Speaker 05:
What would you say is the objective or the desired result of the invention?

[01:20:28] Speaker 06:
The result is to provide menu displays on disparate devices, particularly claimed or handheld devices or webpages,

[01:20:39] Speaker 06:
which will be the same as the back office menu so that a manager of a restaurant or a manager of a pizza company that sells pizzas online can make a change in the menu in the back office and any consumer that wants to order a pizza will see the right menu at the time they pull up that menu.

[01:21:04] Speaker 06:
That's the objective and the result.

[01:21:07] Speaker 06:
And it was not known at all

[01:21:08] Speaker 06:
any time before.

[01:21:10] Speaker 06:
No evidence has been submitted that it was.

[01:21:13] Speaker 06:
Just some statements about Windows CE or any other things they rely on or the board relied on as evidence of conventionality just don't support a conventionality determination of those claims.

[01:21:28] Speaker 05:
Do you want to conclude?

[01:21:29] Speaker 06:
Thank you, Your Honor, for your time.

[01:21:32] Speaker 06:
We would ask that you reverse from the 1792 case.

[01:21:39] Speaker 06:
confirm the credibility of the claims in the 1703 case.

[01:21:43] Speaker 06:
Thank you.

[01:21:43] Speaker 05:
Thank you, sir.

[01:21:45] Speaker 05:
We thank all counsel for their arguments this morning.