[00:00:30] Speaker 05: Okay, the next argued case is number, let's see, 161082, Broadband ITV Incorporated against Hawaii Telecom and others. [00:00:44] Speaker 05: Okay, when you're ready, Mr. Tenshi? [00:00:46] Speaker 00: Yes, I am, Your Honor. [00:00:47] Speaker 00: Good morning. [00:00:47] Speaker 00: Proceed. [00:00:56] Speaker 00: May it please the court, counsel, my name is Fred Tisci. [00:01:00] Speaker 00: and I represent the patent owner Broadband ITV. [00:01:03] Speaker 00: The claims in this case, like those in Bascom, provide a technological solution to enable the switching of control of how the electronic programming guide gets populated from the cable operator to the content provider or publisher, yet leaving the EPG function or the electronic programming guide function [00:01:22] Speaker 00: at the operator's video on demand platform. [00:01:25] Speaker 04: Let me see if I can understand. [00:01:26] Speaker 04: You're not claiming that the uploading of the metadata together with the video is the invention. [00:01:33] Speaker 04: If I understand correctly, your invention that you're claiming here is the idea that you're automatically [00:01:41] Speaker 04: uploading the metadata and populating the EPG with the data that's there, right? [00:01:49] Speaker 00: Well, I think if I understand your honest question, what we claim the stated objective or the end sought is the ability for the content provider to upload their content onto the video publishers system. [00:02:02] Speaker 00: That's right in the first two lines of the claim. [00:02:05] Speaker 04: And to integrate it with the EPG. [00:02:07] Speaker 04: I'm sorry? [00:02:07] Speaker 00: And to integrate it with the EPG. [00:02:09] Speaker 00: And to have it integrated into the EPG, whereas in the prior art system the EPG was updated or done by the cable operators themselves. [00:02:17] Speaker 04: Okay, so it's done automatically. [00:02:19] Speaker 04: The problem is, is there anything here more than an idea of automating it? [00:02:26] Speaker 04: using a generic computer. [00:02:29] Speaker 04: The patent doesn't tell you how to do it. [00:02:34] Speaker 00: Oh, but it does, Your Honor. [00:02:35] Speaker 00: It gives a detailed recitation. [00:02:37] Speaker 00: If we turn to page 15 and 16 of our reply brief, it goes through, it provides a detailed how with detailed means, which [00:02:46] Speaker 00: of how to achieve the stated objective, or the end sought, which the end sought was the ability for the content provider to upload video onto the operator system. [00:02:59] Speaker 00: This element about uploading along with the metadata, the reason why that element, or that section of it, and we'll talk about that in a second, is important and it goes to the inventiveness. [00:03:10] Speaker 04: Take me to 15 of the replicas. [00:03:12] Speaker 04: Show me where it tells you how to automate this, as opposed to just saying it can be automated using a computer. [00:03:20] Speaker 00: Well, the claim tells you how to achieve the ultimate objective, which is the system that I've described. [00:03:25] Speaker 00: Starting on the first step, step A, element A, how the uploading of the VOD content is limited and how it's done. [00:03:33] Speaker 00: It's done in a digital format, via an online network. [00:03:37] Speaker 00: That's not... [00:03:39] Speaker 00: But yes, Your Honor, I'm asking you. [00:03:41] Speaker 04: It's not telling you how to do it. [00:03:42] Speaker 04: What I'm asking is where does it tell you how to do it as opposed to doing it as a good idea. [00:03:48] Speaker 00: It tells you that how to do it right in the next step. [00:03:51] Speaker 00: Well, first of all, you have to do it along with the metadata. [00:03:54] Speaker 00: B tells you how to do it. [00:03:55] Speaker 00: B is the technological solution. [00:03:57] Speaker 00: Tell them where the video is converted. [00:03:59] Speaker 00: It tells you it has to be converted and that the title has to be linked. [00:04:03] Speaker 00: And then these converting and linking steps tell a person of ordinary skill in the art [00:04:08] Speaker 00: how to go from step A to step B. I mean, from step A to step C. Well, basically, it tells you to do it, and that someone with an ordinary skill in the art would know how to do it. [00:04:18] Speaker 04: I'm sorry? [00:04:18] Speaker 04: It tells you that you want to automate it, and that someone of skill in the art would know how to do it. [00:04:24] Speaker 00: Well, no, Your Honor. [00:04:27] Speaker 00: I'm saying no, Your Honor. [00:04:28] Speaker 00: But what the claim tells you, ultimately, with a long, detailed recitation of steps of how, all of which, under Bascom, are a non-conventional arrangement [00:04:38] Speaker 00: of elements, one of which is arguably not the priority. [00:04:42] Speaker 04: Let's just back up a moment. [00:04:43] Speaker 04: Suppose all that the PET specification said is automate what used to be done manually and someone's skill in the art would know how to do that using a computer. [00:04:54] Speaker 04: Let's just assume that's what we had. [00:04:57] Speaker 04: Would that satisfy Alice? [00:05:01] Speaker 00: Well, I'm not sure if I understand your question. [00:05:02] Speaker 00: Is your question, Your Honor, if the abstract idea is automated, [00:05:08] Speaker 00: then under the first step of Alice, that would arguably be an abstract idea. [00:05:12] Speaker 00: Then from there, we have to go to the claims to determine whether or not there's something. [00:05:17] Speaker 04: And in my hypothetical, the claims and the specifications don't tell you how to do the automation. [00:05:23] Speaker 04: It just tells you to automate something that was done manually before. [00:05:29] Speaker 04: That's my hypothetical. [00:05:30] Speaker 00: Right. [00:05:30] Speaker 00: That's your hypothetical. [00:05:31] Speaker 00: Right. [00:05:32] Speaker 04: Would that satisfy step two of Alice? [00:05:34] Speaker 00: OK. [00:05:34] Speaker 00: Under your hypothetical, Your Honor, whether it's an abstract idea, just automate it. [00:05:38] Speaker 00: and there's nothing in the claim that tells you how to automate it, then the answer is that would be invalid under Alice. [00:05:42] Speaker 00: Yes. [00:05:43] Speaker 00: But that's not the situation here. [00:05:44] Speaker 00: First of all, irrespective of whether or not this is an abstract idea, part of my argument is focusing on step two. [00:05:51] Speaker 00: The claims provide the technological solution to a problem. [00:05:55] Speaker 00: And the specification goes far beyond that. [00:05:58] Speaker 00: If you go to column 17 of the specification, it talks about what the solution and what the problem is. [00:06:04] Speaker 00: This automating is something that the invention involves. [00:06:08] Speaker 00: All right, it's not what the invention is directed to. [00:06:11] Speaker 00: What the invention is directed to, which is what this court has told us in basking we need to look at, is really set forth both in the claim and the first two lines of the claim, and the paragraph in column 17, which is page 360 of the appendix. [00:06:26] Speaker 04: Which paragraph? [00:06:27] Speaker 00: Beginning at line 23. [00:06:29] Speaker 00: By the method of the present invention, the title and hierarchical address assigned by the publisher [00:06:34] Speaker 00: of the program is automatically carried over into the TV electronic programming guide following the same hierarchical addressing indicated by the publisher of the content. [00:06:44] Speaker 00: Like Baskin, we're now changing the control of these hierarchical addresses from the cable operator to the content provider. [00:06:53] Speaker 00: The publisher selects categories and subcategories, again a shift in control, for categorizing the title of the video content from the EPG categorization proceeding [00:07:02] Speaker 00: presented by the digital television service provider for the listing of titles on one of the VOD channels. [00:07:08] Speaker 00: With this method, vast numbers of content publishers anywhere on the internet can upload their programs with a minimum of conversion and handling steps by the digital television service provider. [00:07:20] Speaker 00: So just like Baskin, which shifted the filtering of the internet system from the ISP to the end user, but left the filtering system on the ISP or vice versa, [00:07:32] Speaker 00: This system, this claimed method, shifts control of how the electronic programming guide gets uploaded to the content provider. [00:07:40] Speaker 00: It's their movies. [00:07:40] Speaker 00: They want to make sure, and this is talked about in spec, that people who watch this stuff can find their movies and their teas. [00:07:48] Speaker 04: Yeah, but this doesn't describe how it's automated. [00:07:51] Speaker 00: Well, but Judge, again, automating is just one step. [00:07:53] Speaker 00: It does tell you how to achieve. [00:07:54] Speaker 00: Remember in electric power, this court has said, it's not enough to just say, [00:08:02] Speaker 00: There's a distinction between whether the claims merely recite the end sought versus a specific means to achieve those ends. [00:08:10] Speaker 00: And in this claim, again, if we go back to page 15 and walk through these steps, the first of which the district court found was not in the prior art sufficient to deny the defendant's motion for summary judgment on invalidity under 102 and 103. [00:08:23] Speaker 00: The patent office found that step one wasn't in the prior art in refusing to institute an IPR filed by a third party [00:08:32] Speaker 00: in this case, and denied Hawaiian Telecom's CBM petition under 103 grounds. [00:08:38] Speaker 00: So this first element is not in the prior art. [00:08:41] Speaker 00: It tells you how, with specific details, sufficient to establish that this is a collection of non-conventional arrangement of elements in the prior art. [00:08:52] Speaker 00: You upload it. [00:08:53] Speaker 00: It has to be over an online network. [00:08:55] Speaker 00: It has to be over a web-based content management server. [00:08:57] Speaker 00: Now, the defendants and the petitioners argue that that's just any old server. [00:09:01] Speaker 00: because of the claim construction that we asked for. [00:09:03] Speaker 00: But given the district court's determination, denying 102 and 103, and the patent office's determination that uploading along with the metadata was novel in that it was not in the prior art, it is therefore unconventional. [00:09:15] Speaker 00: That's a non-conventional use of a server. [00:09:18] Speaker 00: That's the first part. [00:09:19] Speaker 00: It tells you it has to be along with the title of hierarchical address. [00:09:23] Speaker 00: It has to include the metadata. [00:09:26] Speaker 00: It has to be converted. [00:09:29] Speaker 03: Did your expert submit or did you argue that transmitting a file along with metadata was something new or is it more particular to transmitting this kind of file with this kind of metadata? [00:09:48] Speaker 00: What our expert opined and I believe the record below was is that what the district court found and what the PTED found was that uploading a video file in a VOD system, which is what we're talking about here, [00:09:59] Speaker 00: was not taught in the art. [00:10:01] Speaker 00: That was an element that was missing from the art. [00:10:03] Speaker 00: That was the grounds upon which Judge K denied. [00:10:08] Speaker 03: If you remember my question, can you answer? [00:10:10] Speaker 00: No, I don't. [00:10:11] Speaker 00: Sorry. [00:10:12] Speaker 03: Did you contend, or do you contend, that transmitting a file, an electronic file, along with its metadata, [00:10:22] Speaker 03: was old or new, was unconventional, was something that this patent says to do for the first time. [00:10:31] Speaker 00: Never been done in any context. [00:10:33] Speaker 00: No, what we contend, Your Honor, is that this patent, as claimed, with countless elements, I've only read through three, there's additional ones, that no prior art reference achieved the stated objective [00:10:45] Speaker 00: using these detailed steps that are set forth in the claim. [00:10:49] Speaker 03: What I'm trying to do is separate the kinds of innovation that, no matter how spiffy, are not patent eligible from the kinds that are. [00:11:03] Speaker 03: Now, if transmitting a file with its metadata was old stuff, [00:11:11] Speaker 03: And what's allegedly new here, what the arguable advance is, having this particular arrangement of the content of the data, maybe that's the kind of arranging of content or selecting of content that simply is content selection, which doesn't matter how innovative it is, it's just within the informational realm. [00:11:39] Speaker 00: And Your Honor, and I'm trying to answer your question, and what I'm trying to do is because this is the way I have to look at these things. [00:11:44] Speaker 00: If we're talking about step A and we're trying to determine what this invention is directed to, what is the character of this invention? [00:11:51] Speaker 00: Under Enfish, that definition of what's the character of the invention, what is it directed to, not what it involves. [00:11:57] Speaker 00: It involves the step that Your Honor is asking me about, which we believe is one step of a number of steps. [00:12:03] Speaker 00: That one step happens to be novel. [00:12:05] Speaker 00: But that's not what the invention involves. [00:12:07] Speaker 00: I mean, that's what the invention involves. [00:12:09] Speaker 00: That's not what it's directed to. [00:12:10] Speaker 00: What it's directed to has to be tethered to the claims. [00:12:13] Speaker 00: And quite frankly, Your Honor, in his claim construction opinion, Judge Kaye, I thought, did an excellent job, albeit talking about novelty and saying that the claim is directed to, well, he said novelty. [00:12:25] Speaker 00: But really, under these facts and in this claim, this claim is directed to creating a method for uploading videos via the internet with accompanying metadata [00:12:36] Speaker 00: which allows the videos to be automatically listed in a cable company's EPG for viewer selection. [00:12:41] Speaker 00: That's at the appendix of page 20. [00:12:43] Speaker 00: That's what he indicated the invention was directed to. [00:12:46] Speaker 00: So if I understand your honest question, I'm trying to answer your honest question. [00:12:50] Speaker 00: If you're asking me if this is the abstract idea, uploading it along with the file, that's an abstract idea. [00:12:56] Speaker 00: And the invention does involve that, but it's not directed to that. [00:13:00] Speaker 00: And under ENFISH, [00:13:02] Speaker 00: That would not meet the step one test. [00:13:06] Speaker 00: We have to determine what it's directed to, to determine whether or not it's an abstract idea. [00:13:12] Speaker 00: But even if that was the abstract idea, Your Honor, the one that you say uploading along with the video, we then need to go to step two, which says, is there enough information in step two? [00:13:23] Speaker 00: Is this a technological advancement? [00:13:24] Speaker 00: We've already talked about that. [00:13:26] Speaker 00: Is there a detailed recitation of how you upload over the internet along with the metadata? [00:13:31] Speaker 00: Which, again, is not the stated means. [00:13:34] Speaker 00: And I go back to page 15, not to sound like a broken record. [00:13:38] Speaker 00: But in page 15, we set forth detailed steps. [00:13:42] Speaker 00: In A, in B, you have to convert. [00:13:45] Speaker 00: You have to link the title. [00:13:47] Speaker 00: And then in C, content is listed in the EPG. [00:13:52] Speaker 00: It has to use the same hierarchically arranged categories and subcategories [00:13:56] Speaker 00: as used in the uploaded metadata. [00:13:59] Speaker 00: The bottom line is that with this claim and with elements A through C, and D and E, I didn't get to D and E because they have to do with what the user does on the end, how it's displayed to the user. [00:14:11] Speaker 00: Again, a bunch of collection of elements in a non-conventional arrangement. [00:14:16] Speaker 00: The bottom line is that what A through C teach and what the invention is directed to is uploading the video along with the metadata, converting the video, [00:14:25] Speaker 00: and linking the title so that you're using the same metadata to populate the EPG. [00:14:30] Speaker 00: That's the detailed recitation in the claims. [00:14:33] Speaker 00: And under Baskin, we have to show that that's a non-conventional arrangement. [00:14:37] Speaker 00: And the district courts denial under 102 and 103 creates, at the very least, an issue of material fact that element A, uploading along with the metadata, which the patent office found was not in the prior art, is unconventional. [00:14:51] Speaker 00: And so the 101 decision, I'm not saying because the court denied on 102 and 103 that somehow we went on 101. [00:14:58] Speaker 00: The 101 decision is informed, the Bascom test is informed that this is a non-conventional arrangement because at least one of the elements is not in the prior part. [00:15:07] Speaker 03: Would I be remembering incorrectly or correctly that it's agreed here, maybe even described in the patent, but in any event agreed here that a human being before this patent was doing all of these things [00:15:20] Speaker 03: Taking the title, and the title is in some two-decimal system hierarchy, and linking it so that when the user remarkably sees a list of titles, the user can select one. [00:15:34] Speaker 00: No. [00:15:34] Speaker 00: That's not agreed. [00:15:35] Speaker 00: That's this kind of false narrative that the defendants have spawned about this. [00:15:40] Speaker 00: The intervening prior art, the prior art of record in this case, Carney, Pegasus, which was a Time Warner cable system, and Thomas were all automated [00:15:50] Speaker 00: online computerized systems. [00:15:53] Speaker 03: I'm sorry. [00:15:53] Speaker 03: I guess I was sort of trying to get back to where Judge Dyke, I think, was starting. [00:16:02] Speaker 03: When a human being did this stuff, was the human being doing all of these steps? [00:16:08] Speaker 03: And then what this says is we can do it in an automatic way. [00:16:13] Speaker 00: No. [00:16:13] Speaker 00: No. [00:16:14] Speaker 00: No. [00:16:14] Speaker 00: That's what I was trying to answer your question. [00:16:15] Speaker 00: No. [00:16:17] Speaker 00: At the claim construction hearing, there was testimony from the inventor about how [00:16:20] Speaker 00: in ancient days, the tapes were uploaded manually. [00:16:24] Speaker 00: The defendant's expert, and this is at page 55 of the appendix, as cited by Judge Kay, the defendant's expert opined, and there's no dispute about that, that by 2003, all of these systems were automated. [00:16:36] Speaker 00: The prior art was automated. [00:16:38] Speaker 00: There was no human activity at this point. [00:16:40] Speaker 00: Well, there was limited human activity. [00:16:42] Speaker 00: But the intervening prior art systems of record in this case, again, Thomas, Carney, Pegasus were all [00:16:50] Speaker 00: online automated computerized systems. [00:16:53] Speaker 04: So the metadata then was associated with the video, right? [00:16:58] Speaker 00: It could have been. [00:16:59] Speaker 00: But again, it wasn't done by the content providers. [00:17:02] Speaker 00: It was done to the extent that there was metadata. [00:17:04] Speaker 04: The use of the metadata wasn't done by the content provider. [00:17:08] Speaker 04: But the content provider provided the video with the associated metadata, right? [00:17:13] Speaker 00: In some instances, yes, your honor. [00:17:14] Speaker 00: In some instances, no. [00:17:15] Speaker 00: What happened in the old prior instances? [00:17:17] Speaker 00: In some instances, yes. [00:17:19] Speaker 00: Well, I said that. [00:17:20] Speaker 00: But what happened in the old prior art... So that doesn't sound new. [00:17:23] Speaker 00: Well, but again, that's not... The inventive concept here is the technological solution of this invention was the way to... was an improvement over the prior art technical systems, just like in deer. [00:17:37] Speaker 00: This is an improvement over existing technical systems. [00:17:41] Speaker 00: Every one of these prior art systems was an online system. [00:17:43] Speaker 00: Some of it used metadata. [00:17:44] Speaker 00: Okay, that was another... Metadata was one of the elements [00:17:48] Speaker 00: that was known in the art. [00:17:49] Speaker 00: Now, under Baskin, just showing that this is a collection of elements that are old in the art isn't enough. [00:17:54] Speaker 00: The question is, are they arranged in a non-conventional manner? [00:17:59] Speaker 00: And in this instance, in this case, the improvement, the invention, the improvement, the reason why the PTAB denied the IPR, the reason why the PTAB denied the CBM, the reason why the patent office issued this patent in the first place, and the reason why the district court denied summary judgment, the improvement was the recognition [00:18:17] Speaker 00: that the control needs to be with the content providers. [00:18:20] Speaker 00: And that created a technological solution using a non- So the difference is who does it? [00:18:26] Speaker 00: That's the end result. [00:18:29] Speaker 00: How it's done and the detailed how it's done is what's in the claims. [00:18:33] Speaker 00: And there's a difference. [00:18:34] Speaker 05: OK. [00:18:34] Speaker 05: Let's hear from the other side. [00:18:36] Speaker 05: We'll save you some middle time. [00:18:46] Speaker 05: Thank you. [00:18:46] Speaker 05: Thank you. [00:18:46] Speaker 05: OK. [00:18:46] Speaker 05: Mr. Riddle, please. [00:18:47] Speaker 02: Morning, your honor. [00:18:48] Speaker 02: May it please the court, Charles Verhoeven on behalf of Appellee Time Warner Cable. [00:18:54] Speaker 02: Ms. [00:18:54] Speaker 02: Rao is here on behalf of HTI. [00:18:57] Speaker 02: We've agreed to split our time, and I'm going to go first. [00:19:02] Speaker 02: The district court section 101 order falls squarely within this court's precedence. [00:19:07] Speaker 02: And if I could allude to a point that Judge Toronto made, even in the opening brief, [00:19:17] Speaker 02: of the appellant at page 14, there's an admission that the steps and the concept that's contained in the 336 patent was done manually before the filing of this patent. [00:19:34] Speaker 02: So in their own brief, they admit that there were physical videotapes and that there was information which the appellant admits was metadata. [00:19:44] Speaker 02: that was transported physically together from the content providers to a distributor. [00:19:53] Speaker 02: And then the distributor would manually type in the metadata and upload the video. [00:20:00] Speaker 02: And this patent merely puts that process on the internet. [00:20:06] Speaker 02: And the only thing that I can glean that they're saying in the patent [00:20:11] Speaker 02: that's new in the prosecution history is to use the same metadata so that you can automate the process. [00:20:20] Speaker 04: By the way, I mean, automating a process which is done manually could sometimes be very inventive. [00:20:25] Speaker 04: There's no question about that. [00:20:29] Speaker 04: So the question is whether they have provided some new mechanism for automating this or whether this is just a patent on the idea of automating [00:20:41] Speaker 02: Yes, Your Honor, that's absolutely right. [00:20:43] Speaker 02: And if you look at the cases that have been decided by this court, those cases where the court has reversed a finding of ineligibility under 101, that was precisely the case where there was an idea that arguably was abstract, but there was something innovative about it and something that was a technical problem and a solution. [00:21:09] Speaker 02: So for example, Your Honors, [00:21:11] Speaker 02: If you just say automate it, perhaps somebody tried to do that and discovered you couldn't just automate it using the traditional means of automating that was well known in the art. [00:21:23] Speaker 02: And there was some trick you had to use. [00:21:25] Speaker 02: Or perhaps someone said that, for example, in, I think it was Bascom, there was a particular type of filter that was used in a particular way. [00:21:38] Speaker 02: that resulted in better technical functionality over the art. [00:21:45] Speaker 02: In DDR, it was something that was done differently from the way you would normally do things on a computer. [00:21:53] Speaker 02: And there's another case where you're talking about a different way of structuring a database. [00:21:59] Speaker 02: And then the court there found that that was inventive and rendered the abstract idea eligible. [00:22:05] Speaker 02: Here, we have none of that. [00:22:07] Speaker 02: You just look through the claims, and the steps of the claims are very similar to Alice, where you're just talking about functional claiming. [00:22:17] Speaker 02: So you're enabling the upload of the video content and metadata. [00:22:21] Speaker 02: You're not even uploading it. [00:22:22] Speaker 02: You're just enabling it. [00:22:24] Speaker 02: And you're enabling it to what? [00:22:26] Speaker 02: A server. [00:22:27] Speaker 02: You're converting it to what? [00:22:29] Speaker 02: A standard digital format. [00:22:31] Speaker 02: Well, that can't be invented. [00:22:33] Speaker 02: It's a standard digital format. [00:22:35] Speaker 02: You're listing a title. [00:22:37] Speaker 02: of the video content in a guide using hierarchically arranged categories. [00:22:42] Speaker 02: Well, that's not something that's new computer innovation. [00:22:47] Speaker 02: That's just a methodology, a function, and you can use regular computers to do that. [00:22:52] Speaker 02: You're providing a TV service subscriber access to it, and you're enabling retrieval of the video content selected by the TV subscriber. [00:23:00] Speaker 02: That's claim one. [00:23:02] Speaker 03: Is there, I don't remember, is there material in the specification that I'm focusing specifically on the, I guess, what is it, step C, listing the title of the video content, about how to get a hierarchical listing of metadata in what the content provider is sending the, [00:23:30] Speaker 03: cable company into the differently configured cable company system for producing its own electronic program guide so that I know what to choose. [00:23:43] Speaker 02: Not that I'm aware of, your honor. [00:23:44] Speaker 02: And I would just note that in Versada, the abstract idea was, quote, the claims simply recite the concept of price [00:23:57] Speaker 02: organizational and product group hierarchies is performed by a generic computer. [00:24:02] Speaker 02: Well, the hierarchical language in the claims here similarly doesn't create any sort of innovation in the product or in the patent. [00:24:13] Speaker 02: It's just merely saying what you do, what the function is. [00:24:16] Speaker 02: So just like Alice, this is a situation where the alleged innovation is this abstract idea [00:24:27] Speaker 02: of using the same metadata so that you can automate a process of uploading. [00:24:33] Speaker 02: So it goes right into the electronic program guide. [00:24:37] Speaker 02: But that's an idea. [00:24:38] Speaker 02: And that is not eligible unless there's something that's an inventive concept for how you do it. [00:24:48] Speaker 02: And here, there is no inventive concept for how you do it. [00:24:52] Speaker 02: Really briefly, in the papers, [00:24:57] Speaker 02: What we see is a shifting sands approach by the appellate on what's the inventive concept. [00:25:03] Speaker 02: So below, the district court judge specifically said, what do you claim under element two is the inventive concept? [00:25:13] Speaker 02: And the only thing that counsel identified was the web server. [00:25:18] Speaker 02: That's it. [00:25:19] Speaker 02: They don't even argue that really up here. [00:25:21] Speaker 02: And if you look at the claim language, it's a... [00:25:26] Speaker 02: Well, of course, the claim construction, but you don't even need to go there. [00:25:29] Speaker 02: I mean, the claim language just says that it is web-based and then manages content. [00:25:36] Speaker 02: Well, all servers manage content. [00:25:39] Speaker 02: And hooking the server to the web is not something that's new or unique in any sense. [00:25:43] Speaker 02: And then after we get beyond that, and I'm going to finish real quick here, in their brief on appeal, they sort of abandon that. [00:25:52] Speaker 02: They say it's along with and automated. [00:25:55] Speaker 02: But they've admitted that [00:25:56] Speaker 02: submitting metadata along with the video was already done manually in the prior art. [00:26:01] Speaker 02: Now council is saying it was done electronically as well in the prior art. [00:26:07] Speaker 02: And then finally they refer to the specific equipment as if that will somehow save the day. [00:26:12] Speaker 02: But all that's identified is a set-top box, a generic TV remote control, the web server, and something vague called TV equipment. [00:26:23] Speaker 02: So referring to tangible elements, [00:26:26] Speaker 02: and functional claiming combined that are common does not elevate this patent to have an inventive concept. [00:26:36] Speaker 02: And therefore, Your Honors, it is not eligible for being processed through the patent process under Section 101. [00:26:43] Speaker 02: Thank you very much. [00:26:44] Speaker 05: Thank you. [00:26:46] Speaker 05: Ms. [00:26:46] Speaker 05: Rao? [00:26:52] Speaker 01: Thank you, Your Honor. [00:26:54] Speaker 01: Sasha Rao, representing Hawaiian Telecom. [00:27:01] Speaker 01: I would like to begin by addressing some of the questions the court asked. [00:27:07] Speaker 01: One question was, is this claimed invention simply about the idea of automating or is it something specific? [00:27:16] Speaker 01: And we submit that the invention as claimed by the patentee is simply about the idea of automating. [00:27:25] Speaker 01: And this relates to a question that Judge Toronto asked, which is, is there any record evidence of this? [00:27:33] Speaker 01: And we have a few citations. [00:27:36] Speaker 01: One is at Appendix 8610, we asked, [00:27:45] Speaker 01: VBITV's expert what the invention is about and the question was, so the invention is automating steps that were conventionally performed but automating it using the internet. [00:27:58] Speaker 01: The response was automating it, yeah, automating it and transferring the content. [00:28:04] Speaker 01: I mean that's I guess where you would say the heart of the invention and the details or at least the claim elements. [00:28:12] Speaker 01: We submit that this is a case where it's simply the idea of automating something. [00:28:17] Speaker 01: And under Alice, that is not patent eligible. [00:28:23] Speaker 03: Now, again, with extremely heavy emphasis on the word simple. [00:28:29] Speaker 03: Because there are lots of automating like driving, for example, that we've seen indicate in a specific enough way how to do it would be in the heartland of eligibility. [00:28:48] Speaker 03: So the problem here is, if there's a problem, is the lack of specificity about how to do anything. [00:28:56] Speaker 01: That is correct, Your Honor. [00:28:57] Speaker 01: And to the extent that any specificity is provided, it is to do it the conventional way, use the routine way. [00:29:04] Speaker 01: And again, at Appendix 3701, at the technology tutorial, BBI-TV's inventor explained to the court [00:29:25] Speaker 01: the steps that were performed in the claimed invention. [00:29:29] Speaker 01: And at 3701, at lines 13 through 20, he describes how the first step, step A of claim one, is done online in his invention. [00:29:50] Speaker 01: And then as for the rest of the process, he says, [00:29:53] Speaker 01: It's the same as we saw before when he described the way the prior act did it. [00:29:59] Speaker 01: So all the other steps in the claim are exactly as before. [00:30:03] Speaker 01: So this is not like Baskin. [00:30:05] Speaker 01: It is exactly a conventional arrangement of the claim steps. [00:30:11] Speaker 01: As they were done before, only the idea was let's put it on the internet. [00:30:18] Speaker 01: Now, I'd like to specifically address counsel's argument that [00:30:23] Speaker 01: The inventive step is the requirement of uploading video content along with metadata, one of the first questions you asked. [00:30:34] Speaker 01: And first of all, there's nothing in the Supreme Court or this court's precedence that requires a finding of patent eligibility simply because there is some novelty in the process. [00:30:45] Speaker 01: In fact, a novel process [00:30:47] Speaker 01: can still fail the requirements of section 101 and here Fluke and Ultramershal are on point where patent claims directed to novel processes were found invalid because they were directed to abstract ideas. [00:31:04] Speaker 04: I thought he agreed that it wasn't novel to upload the metadata together in the video content. [00:31:11] Speaker 01: We don't believe it was novel because we believe actually... Your opposing counsel admitted that. [00:31:18] Speaker 01: Yes, your honor. [00:31:22] Speaker 03: So another point that is worth mentioning here is that... Can I pursue that a little bit, just to the extent that you remember what's in the record? [00:31:34] Speaker 03: I guess I'm remembering testimony or declaration or something from their expert about [00:31:43] Speaker 03: some kind of assertion of newness to get away from statutory language in uploading content along with something. [00:31:57] Speaker 03: What were they asserting? [00:31:58] Speaker 03: I was unclear whether they were saying nobody has ever, and by upload I don't know that that's any different from send, [00:32:07] Speaker 03: So electronically sending content along with metadata. [00:32:10] Speaker 03: I didn't take it that they were saying nobody had ever done that before. [00:32:14] Speaker 03: Sounds kind of implausible. [00:32:17] Speaker 03: But that the point was narrower that nobody in this context had ever sent a movie with this particular metadata structured in a particular way. [00:32:28] Speaker 03: Can you just clarify what the record indicates about their contention? [00:32:33] Speaker 01: Gerarna, as far as I'm aware, the record, especially at Joint Appendix 3697, lines 11 through 13, indicates that in the conventional video on demand workflow, metadata was provided along with the videotape in paper form. [00:32:55] Speaker 01: And that's what Mr. Verhoeven described as well. [00:33:00] Speaker 01: As far as the record is concerned, it agrees completely with what Mr. Verhoeven explained and what the patent shows, that these are simply conventional steps that are being automated. [00:33:15] Speaker 01: I'd like to just make one point on preemption, if I may. [00:33:26] Speaker 01: In BBRTV's summary judgment brief against Hawaiian telecom, BBRTV argued that Hawaiian telecom met the claimed step 1A of the patent by virtue of entering into a contractual agreement with a third party. [00:33:49] Speaker 01: And BBRTV argued that Hawaiian telecom did not have to actually perform any uploading [00:33:57] Speaker 01: And it was sufficient that Hawaiian Telecom had entered into a contractual agreement with a third party that might have considered using a web server or the internet somewhere in its video on demand workflow. [00:34:09] Speaker 01: And we submit that that is exactly the kind of invention that satisfies all of Alice's requirements and should be found ineligible. [00:34:27] Speaker 01: And if the court doesn't have any questions, I'm going to. [00:34:31] Speaker 05: Any more questions? [00:34:33] Speaker 05: Any questions? [00:34:33] Speaker 05: Thank you. [00:34:34] Speaker 05: Thank you, Ms. [00:34:34] Speaker 05: Rao. [00:34:36] Speaker 05: Let's show everybody the times. [00:34:41] Speaker 00: Judge, I want to make something clear. [00:34:43] Speaker 00: I did not say, and if I said I misspoke, there was no evidence whatsoever in the record that any prior art system uploaded metadata along with the video. [00:34:55] Speaker 00: And in fact, as counsel was talking to you about in the old prior art systems, which is the ancient history, when the videotapes were delivered, information about the movies were on a piece of paper. [00:35:07] Speaker 00: The intervening prior art was the prior art of record. [00:35:11] Speaker 00: After 18 months of litigation and two post-grant review proceedings, these defendants said three pieces of prior art. [00:35:19] Speaker 00: One was, the district court found, [00:35:23] Speaker 00: system and method for providing storage data on servers in an on-demand media delivery system. [00:35:31] Speaker 00: One was a system and method for constructing delivery and display of Internet TV content. [00:35:36] Speaker 00: And one of them was the Pegasus, which was the Time Warner legacy system, which was a set of specifications developed to facilitate VOD operations. [00:35:45] Speaker 00: Their expert testified, it's in page 55 of the [00:35:48] Speaker 00: district of the appendix that by 2003, all of these systems had already been automated. [00:35:55] Speaker 00: And the district court specifically found in denying their motion for summary judgment that uploading along with the metadata was not in the prior art. [00:36:04] Speaker 00: That's at pages 50 through 66. [00:36:07] Speaker 00: And so this [00:36:09] Speaker 00: What's troubling to me, Your Honor, is that Alice and this court give us a way to figure out whether or not something's patent eligible on the one on one. [00:36:15] Speaker 04: So what's inventive? [00:36:18] Speaker 04: Let's assume that it was new. [00:36:21] Speaker 04: What's inventive about sending the metadata along with the video? [00:36:25] Speaker 00: Judge, the answer to your question is that the search for inventive is step two. [00:36:29] Speaker 00: And that requires looking at every element of the claim. [00:36:31] Speaker 00: And not just elements, as I heard counsel for Time Warner Cable come up and say, [00:36:36] Speaker 00: This is old, and this is old. [00:36:37] Speaker 00: That's a direct violation of this court's teaching in Bascom that just pointing to the fact that elements are old in the art is not enough. [00:36:44] Speaker 00: The step two inventive test requires that there's a technological solution with a detailed how. [00:36:50] Speaker 00: And this claim goes from column 21, line 7, to the top of column 22. [00:36:54] Speaker 00: That's a detailed recitation of how the ends are met and irrespective. [00:37:00] Speaker 00: of whether or not every one of them were old in the art, they have to show that not only were they old in the art, but that they were arranged as they are arranged in the claim. [00:37:08] Speaker 00: The step two requires that we look. [00:37:12] Speaker 00: We just want to say we. [00:37:14] Speaker 00: It's not proper to just look and say, well, what was the inventive concept? [00:37:18] Speaker 00: The inventive concept is established, inventive is accomplished by step two, which is a recognition of the detailed how. [00:37:28] Speaker 00: There was no dispute. [00:37:29] Speaker 00: I mean, there was never any evidence below that prior arts were uploaded with the tapes. [00:37:34] Speaker 00: And Judge Torano, one of your questions, I think, that you were asking me about, there's the specification language actually in there that answers your question, Your Honor. [00:37:43] Speaker 00: It's at column 16, line 37 through column 17, line 21. [00:37:51] Speaker 00: The fact of the matter is that the first step is to determine whether or not this was an abstract idea. [00:37:57] Speaker 00: We don't believe it is. [00:37:58] Speaker 00: But if it is, then does the step two analysis provide sufficient technological information that detailed how the ends were met? [00:38:09] Speaker 00: And I won't walk back through step two with you. [00:38:15] Speaker 00: But the bottom line is that it's unfair to my client to allow these defenders to kind of come in here and just say, well, the idea was this uploading along with the metadata. [00:38:24] Speaker 00: That may be what it involves. [00:38:26] Speaker 00: That may be one step, but that's not the invention. [00:38:29] Speaker 00: That's not what the invention is directed at. [00:38:32] Speaker 03: Is there something different between, substantively different between the word uploading and sending electronically? [00:38:44] Speaker 00: No, I believe uploading is sending electronically. [00:38:48] Speaker 03: So well before, what's the priority date of this thing? [00:38:52] Speaker 03: Maybe 2000? [00:38:54] Speaker 00: Yeah, well before 2004. [00:38:57] Speaker 03: I'm pretty sure I was sending electronic documents around, like Word documents that had metadata in them. [00:39:05] Speaker 03: You were, George. [00:39:06] Speaker 03: Again. [00:39:07] Speaker 03: So it must be the context of the video world that you're saying there's something new and not found in prior art, at least for summary judgment purposes, about sending a particular kind of document, call it an electronic file, a movie, along with the metadata that belongs to that. [00:39:30] Speaker 03: Because that general concept of sending a file with its metadata was around. [00:39:35] Speaker 00: Correct, it was around, Judge. [00:39:36] Speaker 00: And remember, Bascom says there are a lot of pieces lying around. [00:39:40] Speaker 00: For 102 and 103, we go all the way back to Judge Markey's decision that only the Almighty creates with new pieces. [00:39:46] Speaker 00: Man uses things that were lying around. [00:39:48] Speaker 00: For 102 and 103, for 101, we have to determine whether or not something is conventional. [00:39:52] Speaker 04: What's the benefit of sending the metadata together with the video? [00:39:56] Speaker 04: I'm sorry, Your Honor? [00:39:57] Speaker 04: What is the benefit of sending the metadata together with the video as opposed to separately electronic [00:40:05] Speaker 00: It solves the technological problem of the prior automated systems where the content providers did not have the opportunity to play a role or dictate or control how the electronic programming guide got updated. [00:40:21] Speaker 00: That's the benefit of it. [00:40:22] Speaker 00: That was the desired sought. [00:40:23] Speaker 00: That's the way the cases like that. [00:40:25] Speaker 04: So it's not the idea of sending the metadata electronically together with the video as opposed to separately is not [00:40:33] Speaker 04: something that you claim is invented? [00:40:35] Speaker 00: We don't. [00:40:35] Speaker 00: In fact, if they're sent differently, and that's the fickle reference. [00:40:38] Speaker 00: It's in page 49 of the blue brief. [00:40:41] Speaker 00: In the fickle reference, the video actually went up over the satellite. [00:40:43] Speaker 00: The metadata went over the internet. [00:40:45] Speaker 00: They took separate paths. [00:40:46] Speaker 00: That's outside the scope of the claims of the patent. [00:40:51] Speaker 00: By denying the defendant's motion under 102 and 103, the district court found that this uploading the metadata in this instance, now the preamble was deemed to be limiting. [00:40:59] Speaker 00: The preamble talks about a method for enabling the navigating, controlling, uploading by the content provider. [00:41:06] Speaker 00: That's why. [00:41:07] Speaker 00: Your Honor, you look at me, and I understand where you're coming from. [00:41:10] Speaker 00: You look at me and you say, well, this element was old. [00:41:12] Speaker 00: I was doing this back when I was in college. [00:41:14] Speaker 00: But the patent office, first of all, issued the patent. [00:41:18] Speaker 00: The PTAB denied a third party. [00:41:20] Speaker 03: By the way, I was not doing this when I was in college. [00:41:25] Speaker 00: My TRS80 judge wouldn't let me send anything over the internet. [00:41:29] Speaker 00: But the fact is that the Patent Office allowed this patent, again in a post-grant review, at finding that uploading the video along with the internet, along with the metadata, over an open online system. [00:41:43] Speaker 00: Again, this is just one aspect. [00:41:45] Speaker 00: I mean, it boggles my mind. [00:41:47] Speaker 00: One of ordinary skill in the art, reading this patent, there are a lot of detailed how, a lot of instructions on how to do it, how to reach the claim that they aren't just [00:41:58] Speaker 00: a recitation of the means sought. [00:42:00] Speaker 00: They are a detailed how. [00:42:02] Speaker 00: And I don't want to throw them again, but I mean, linking the title, converting, all of those things. [00:42:06] Speaker 00: I mean, they may be old in the art, but there's no evidence in the record sufficient. [00:42:09] Speaker 00: This was a summary judgment motion. [00:42:11] Speaker 00: We were denied the opportunity to go to the jury on this issue after the judge had ruled against the 102 and 103. [00:42:19] Speaker 00: I will make one other comment about this. [00:42:21] Speaker 05: We're out of time. [00:42:22] Speaker 05: One sentence. [00:42:24] Speaker 05: We'll give you one more sentence. [00:42:27] Speaker 00: Can I use that? [00:42:29] Speaker 00: Yes. [00:42:30] Speaker 00: This thing about what I said about the web-based content management server, the question was what elements here were not found in the art? [00:42:37] Speaker 00: That was the question. [00:42:38] Speaker 00: After the judge denied their 102103 motion and found that uploading along was novel, the web-based content management server, even though it's an old server, it performed a novel function. [00:42:48] Speaker 05: Thank you. [00:42:48] Speaker 05: Thank you, Lester. [00:42:49] Speaker 05: We have that argument in mind. [00:42:50] Speaker 05: It's an important one. [00:42:52] Speaker 05: Thank you all. [00:42:52] Speaker 05: The case is taken under submission.