[00:00:00] Speaker 01:
Okay, the next argued case is number 16-12-10, Farstone Technology Incorporated against Apple Incorporated.

[00:00:09] Speaker 01:
Mr. Stein.

[00:00:15] Speaker 03:
May it please the court.

[00:00:17] Speaker 03:
I'd like to start with claim nine.

[00:00:19] Speaker 03:
The crux of the issue there is whether or not the preamble phrase said processing system creating at least one recovery unit should be construed as a means plus function limitation.

[00:00:31] Speaker 03:
We gave two reasons why it should not be construed that way.

[00:00:35] Speaker 03:
First, the creating term in the preamble is not a limitation at all.

[00:00:39] Speaker 03:
And second, even if it is construed as a limitation, it should be construed as an additional step in the method, not as a means plus function limitation.

[00:00:49] Speaker 03:
Apple essentially ignores both these arguments.

[00:00:52] Speaker 03:
As to the first, that the creating step, that the creating term in the preamble is not a limitation, I think it's important first to step back

[00:01:02] Speaker 03:
and take a look at the preamble language as a whole.

[00:01:05] Speaker 03:
When you do that, you see that the preamble uses the same type of language signaling intended use that this court has found to be non-limiting in other cases.

[00:01:18] Speaker 03:
As Apple acknowledges, claim 9 is a recovery method, not a backup method.

[00:01:22] Speaker 03:
It presumes the existence of something to recover, in this case, a recovery unit.

[00:01:29] Speaker 03:
The preamble continues, stating that the recovery method is suitable for a computer system that includes a processing system and a displaying system.

[00:01:38] Speaker 03:
This court has recognized that this type of language in the preamble, suitable for a computer system here, specifies an intended use.

[00:01:47] Speaker 03:
That is not a limitation.

[00:01:49] Speaker 00:
Isn't it true that you relied on the preamble during the prosecution to overcome Shen?

[00:01:59] Speaker 00:
Why should we assume that the preamble's not meaningful or limiting now?

[00:02:04] Speaker 03:
We did not rely on the preamble to overcome Shen.

[00:02:10] Speaker 03:
The limitation that overcame Shen was the last limitation in the body of the claim that was added.

[00:02:17] Speaker 03:
And the arguments regarding Shen concern the fact that Shen only backed up files and didn't back up configuration, hardware configuration, along with file data.

[00:02:28] Speaker 00:
But you amended the claim to add the word creating, right?

[00:02:32] Speaker 03:
Well, the claim was amended along with numerous amendments throughout the specification and the claims at the suggestion of the examiner to clean up certain grammatical errors that were in the claim and the specification.

[00:02:52] Speaker 03:
And in the course of that, throughout the specification and in the claim,

[00:02:58] Speaker 03:
The term establishing a creating unit was changed to creating a recovery unit, which seems like a more precise term for what is going on here.

[00:03:08] Speaker 03:
But the priority was never distinguished on the basis of that amendment.

[00:03:14] Speaker 03:
Far Stone never even mentioned that particular change from establishing to creating in its arguments to overcome Shannon.

[00:03:27] Speaker 03:
There was another point there.

[00:03:35] Speaker 03:
Anyway, so that argument, that amendment was not, in fact, was not relied upon to overcome the prior art, despite Apple's assertion to the contrary.

[00:03:48] Speaker 03:
In fact, Apple never explains how changing the word establishing to creating could come over the art, could overcome the prior art.

[00:03:57] Speaker 03:
you know, the same word creating is just a bit more precise in the context of the claim and the patent than establishment.

[00:04:14] Speaker 03:
In terms of this kind of preamble language establishing intended use, for example, in the C.R.

[00:04:21] Speaker 03:
Bard v. M3 systems case, which was cited in one of the cases that Apple relies upon in its brief, Eaton v. Rockwell, the court found that the preamble phrase, a biopsy needle for use with a tissue sampling device, did not mean that a tissue sampling device or its particular structure was a limitation.

[00:04:45] Speaker 03:
Likewise, here the preamble phrase, reciting a method suitable for a computer system, does not mean that the claim is limited to the specific computer system or processing system recited in the preamble.

[00:04:58] Speaker 00:
But the only way to understand what creating a recovery unit is, is to understand the preamble.

[00:05:07] Speaker 00:
In other words, that's the only antecedent basis for the language that you ultimately chose, right?

[00:05:14] Speaker 03:
The body of the claim does not rely on the step of or the function of creating a recovery unit.

[00:05:24] Speaker 03:
It presumes that a recovery unit had already been created, because this is a recovery method.

[00:05:30] Speaker 03:
So you have to have a recovery unit there in the first place.

[00:05:36] Speaker 03:
And further, to the extent that the creation of a recovery unit is an essential

[00:05:44] Speaker 03:
is considered an essential part in the method, then that just supports, in my view, Farastone's argument that that should be an additional step in the method.

[00:05:54] Speaker 00:
Well, it has to include a processing system.

[00:05:58] Speaker 00:
So how are we to understand processing system separate and apart from the premium?

[00:06:03] Speaker 03:
Well, the body of the claim refers to,

[00:06:09] Speaker 03:
the processing system in purely structural terms.

[00:06:13] Speaker 00:
Yeah, I didn't really understand that statement in your brief.

[00:06:15] Speaker 00:
Can you explain what you mean by that?

[00:06:16] Speaker 03:
Well, what I meant was that it's not relying on any of the functionality of the processing system.

[00:06:23] Speaker 03:
It is basically relying on the processing system as an object.

[00:06:29] Speaker 03:
It doesn't matter what it does, actually.

[00:06:31] Speaker 03:
So you have a step of loading the recovery unit into the processing system.

[00:06:36] Speaker 03:
That doesn't have anything to do with what

[00:06:39] Speaker 03:
system did previously.

[00:06:40] Speaker 03:
It has to do with putting something inside the processing system.

[00:06:44] Speaker 00:
Well, it says that it has to create a recovery unit.

[00:06:47] Speaker 00:
Isn't that functional?

[00:06:50] Speaker 03:
I'm talking about the body of the claim doesn't rely on the fact that the preamble says that the processing system creates the recovery unit.

[00:07:02] Speaker 03:
The body of the claim just only refers to the structure

[00:07:06] Speaker 03:
of the processing system.

[00:07:08] Speaker 03:
So loading, you're loading it into something.

[00:07:11] Speaker 03:
It had nothing to do with creating the recovery unit previously.

[00:07:15] Speaker 03:
There's also references to the status of the processing system at a point in time.

[00:07:22] Speaker 03:
Those references refer to the data, the file data, hardware configuration data in the processing system.

[00:07:30] Speaker 03:
It doesn't have anything to do

[00:07:32] Speaker 03:
with the processing system and action by the processing system to create a recovery unit.

[00:07:39] Speaker 03:
So that's the distinction.

[00:07:42] Speaker 03:
I mean, you have in the preamble a processing system doing something, but in the body, it's just referring to the processing system as an object, either that gets something loaded into it or has a particular state.

[00:07:55] Speaker 00:
But there's a processing system referred to and a recovery unit referred to.

[00:07:59] Speaker 00:
So we're supposed to assume that the body of the claim

[00:08:03] Speaker 00:
has nothing to do with how the recovery unit's created?

[00:08:06] Speaker 03:
Right.

[00:08:11] Speaker 03:
For the purpose of the method, it doesn't matter how the recovery unit was created.

[00:08:17] Speaker 03:
It just matters that it exists.

[00:08:20] Speaker 03:
Because what the claim is claiming is a method for recovering as a recovery method.

[00:08:32] Speaker 03:
Once you have a recovery unit, again, it's not dependent on... So it doesn't matter that the processing system created the recovery unit, you think?

[00:08:43] Speaker 03:
Well, again, I guess that goes to the point where it goes to an intended use.

[00:08:48] Speaker 03:
This method is intended for use

[00:08:51] Speaker 03:
based on a preamble language, with a system that it may create a recovery unit.

[00:08:59] Speaker 03:
In preamble, this process system does create it, but it's not limited to a processing system that creates it.

[00:09:06] Speaker 03:
The body only refers to the structure of the processing system, not how the recovery unit is created.

[00:09:21] Speaker 00:
Is it correct, as the other side argues, that you actually relied on the preamble language and the fact that the preamble language was meaningful in a different IPR, in an IPR?

[00:09:38] Speaker 03:
Well, there's an IPR pending in this case.

[00:09:41] Speaker 00:
Right.

[00:09:41] Speaker 00:
And did you rely on the preamble as being

[00:09:46] Speaker 00:
meaningful with respect to the structure of the claims and how to interpret the claims in that IPR?

[00:09:53] Speaker 03:
That's pretty much a yes or no, right?

[00:09:58] Speaker 03:
Well, the answer is yes, but it has a little bit of an explanation to it.

[00:10:01] Speaker 00:
So start with the yes and then explain.

[00:10:04] Speaker 03:
So the IPR concerns different claim limitations and different language in the preamble.

[00:10:10] Speaker 03:
And so in claim nine,

[00:10:13] Speaker 03:
The preamble says that this is a method for determining an outcome of recovery operation beforehand.

[00:10:20] Speaker 03:
And so in the IPR, there's an issue as to whether or not that language provides context for other language in the claim relating to displaying the recovery unit.

[00:10:38] Speaker 03:
And our position is that based on the claim language and the specification,

[00:10:42] Speaker 03:
that displaying involves being able to provide the outcome beforehand, which involves displaying the contents of certain files that have been backed up.

[00:10:54] Speaker 03:
So you can look at those files before they are restored.

[00:10:58] Speaker 03:
It's a separate issue.

[00:11:01] Speaker 03:
And I think there is no general rule that

[00:11:08] Speaker 03:
the preamble basically rises or falls as a unit.

[00:11:12] Speaker 03:
It wouldn't make sense for that to happen.

[00:11:15] Speaker 00:
So you're saying it's limiting for some purposes, but not for others.

[00:11:22] Speaker 03:
That may be fair.

[00:11:24] Speaker 03:
The language in the IPR is completely different.

[00:11:30] Speaker 03:
The issues are completely different than the language that's at issue here.

[00:11:35] Speaker 03:
And I should just stress that if you are inclined to give way to the preamble and the creating language in the preamble, the only thing that makes sense in my view is to interpret that as an additional step in a method, not as a means plus function limitation.

[00:11:57] Speaker 03:
The language actually is in a format that's commonly used for steps in a method.

[00:12:05] Speaker 03:
This is a method claim.

[00:12:06] Speaker 03:
They're saying that creating the recovery unit is a, I guess they're saying that's an essential step in this method.

[00:12:14] Speaker 03:
So it would be consistent to interpret that language as a step in the method.

[00:12:21] Speaker 03:
It's very common method claims to say, to identify what component is actually performing that step.

[00:12:29] Speaker 03:
Here it says a processing system performing that step.

[00:12:35] Speaker 03:
That type of format has been used in many different cases.

[00:12:40] Speaker 03:
We've cited it in our brief.

[00:12:42] Speaker 03:
It's almost always the case that some component is going to be performing the step that is recited in the body of the claim.

[00:12:55] Speaker 01:
Let's hear from the other side, and we'll save you the rebuttal time, Mrs. Stein.

[00:13:07] Speaker 01:
Mr. Palmore?

[00:13:09] Speaker 02:
Thank you, Your Honor.

[00:13:10] Speaker 02:
Thank you, Your Honors, and may it please the court.

[00:13:12] Speaker 00:
Can you start with, I know you've got your own plan in mind, but can you start with the statement here in the end there that a preamble can be limiting for some purposes relating to what's recited in the body of the claim, but not for others?

[00:13:25] Speaker 00:
Would you agree with that proposition?

[00:13:27] Speaker 02:
I don't dispute that as a general proposition.

[00:13:29] Speaker 02:
For instance, the first sentence of a preamble is a general statement of purpose.

[00:13:33] Speaker 02:
but then the rest of the preamble for a method claim, for instance, outlines structure in which the claimed method is to be practiced, then part would be limiting and part would not be limiting.

[00:13:46] Speaker 02:
But here, I think it's important to understand exactly what Farstone is arguing.

[00:13:50] Speaker 02:
Farstone concedes that processing system in the preamble is limiting because it gives antecedent basis to the body of the claim.

[00:13:59] Speaker 02:
it concedes that recovery unit is limiting, because again, the claim, the body of the claim refers to said recovery unit.

[00:14:07] Speaker 02:
What it wants to do is pull out a blue pen and excise the word creating that links these two conceivably limiting structural elements of the preamble.

[00:14:18] Speaker 02:
And I think that's impermissible as a matter of simple grammar.

[00:14:22] Speaker 02:
And I think it's also impermissible as a matter of claim construction, because it's some of the colloquy between the court

[00:14:27] Speaker 02:
and Farstone's counsel revealed, the body of the claim takes antecedent meaning from the creation function.

[00:14:35] Speaker 02:
So the last sentence of claim nine says that the recovery unit reflects a status of at least one hardware resource of said processing system at the time of creation of the recovery unit.

[00:14:51] Speaker 02:
And then it goes on to say that it allows

[00:14:53] Speaker 02:
the hardware resource to be restored to its status at the time of creation.

[00:14:59] Speaker 02:
Where is this creation referenced?

[00:15:01] Speaker 02:
In the preamble.

[00:15:02] Speaker 02:
And what does the creation?

[00:15:04] Speaker 02:
The processing system.

[00:15:05] Speaker 02:
In fact, the preamble is the only place in this patent that says that, in the body of claim nine, that says that it is the processing system that performs the creation.

[00:15:17] Speaker 02:
And that was important, as explained in the prosecution history, because

[00:15:22] Speaker 02:
The idea of this invention was to be able to restore hardware resources and the configuration status of hardware resources to their status at the time that the recovery unit was created.

[00:15:36] Speaker 02:
That's an A479 in the prosecution history.

[00:15:39] Speaker 00:
And getting back to the arguments made at the IPR, the fact that we're talking about the displaying aspect, the displaying

[00:15:47] Speaker 00:
is related to the processing system, which is in turn related to the recovery unit, correct?

[00:15:53] Speaker 02:
That's correct, Your Honor.

[00:15:54] Speaker 02:
These are all structural elements, as this Court has discussed in microprocessor and Eden Corporation.

[00:16:00] Speaker 02:
It's a method claim, but the drafter used the preamble to outline structural elements of a system in which the claimed method was to be practiced.

[00:16:11] Speaker 02:
And then those claimed structures and the creating function then gives antecedent meaning to the body of the claim.

[00:16:20] Speaker 02:
Farstone's counsel says, well, even if it's limiting, we should read it as a step.

[00:16:26] Speaker 02:
And I would suggest that, first of all, that's not a correct reading of it.

[00:16:30] Speaker 02:
As I mentioned under microprocessor and Eaton, these are structural components in which the method is to be practiced.

[00:16:38] Speaker 02:
But even putting that aside, if it's a step, it's still a step that has to be performed by a processing system.

[00:16:44] Speaker 02:
So the exact same indefiniteness argument that we are talking about would still apply and would still invalidate the claim.

[00:16:52] Speaker 02:
Because the patent would still have to provide a person of ordinary skill in the art with a reasonable certainty as to the scope of this processing system

[00:17:01] Speaker 02:
and how it creates this recovery unit.

[00:17:06] Speaker 02:
That's true whether it's a processing system performing the function of creating, or if it's the step of creating performed by a processing system.

[00:17:15] Speaker 02:
I would suggest that the exact same indefinite analysis would apply.

[00:17:19] Speaker 00:
But we don't necessarily need to get to the means plus function analysis if you're correct with respect to the preempt, correct?

[00:17:26] Speaker 02:
Well, Your Honor, you're right.

[00:17:28] Speaker 02:
We make two independent arguments.

[00:17:30] Speaker 02:
So one is, as the district court found, that this phrase, processing system creating at least one recovery unit, is indefinite under a straightforward reasonable certainty analysis.

[00:17:41] Speaker 02:
That's what the district court found.

[00:17:43] Speaker 02:
The second argument is our alternative argument that we made in the district court, but the district court found unnecessary to reach, which is that this is a means plus function limitation that doesn't adequately disclose structure.

[00:17:56] Speaker 02:
As to the first

[00:17:58] Speaker 02:
indefiniteness basis, which was the district court's conclusion.

[00:18:01] Speaker 02:
The district court looked at this phrase as a whole, and it noted that the claim itself doesn't define the processing system or provide guidance into how it performs this creating step or function.

[00:18:16] Speaker 02:
It was far so never argued that it was a term of art or had a common or ordinary meaning.

[00:18:23] Speaker 02:
So then what the district court did was look to the specification to see if any meaning could be ascribed to the term.

[00:18:30] Speaker 02:
And what it found repeatedly in the specification were repeated references to this backup recovery module.

[00:18:37] Speaker 02:
The specification repeatedly says that it's the backup recovery module

[00:18:41] Speaker 02:
That's the part of the processing system that performs the creating function, that creates the recovery unit.

[00:18:48] Speaker 02:
In the prosecution history, again, at A479, the applicant said that it was the backup recovery module in not only claim one, but also in claim nine that created the recovery unit.

[00:19:00] Speaker 02:
And indeed, Farstone's experts said that the processing system and the backup recovery module were, quote, the same thing.

[00:19:06] Speaker 02:
So the only guidance

[00:19:09] Speaker 02:
that the specification or the prosecution history provides for what this processing system is in the sense of creating the recovery unit is referenced to the backup recovery module.

[00:19:20] Speaker 02:
And that is no illumination at all.

[00:19:23] Speaker 02:
Because as the district court found in a conclusion that Farson doesn't challenge under existing precedent,

[00:19:30] Speaker 02:
backup recovery module provides no guidance, provides no structure, but it provides no reasonable certainty as to the scope of what is claimed.

[00:19:40] Speaker 00:
So what the district court did was... So let me ask you this, and this gets into the due process argument, whether it's even an issue here, because as I understand

[00:19:50] Speaker 00:
The part that Farstone is objecting to in the district court's order didn't really rely on the means plus function analysis.

[00:20:01] Speaker 00:
So yes, it's Williamson that caused the court to look at the issue again.

[00:20:05] Speaker 00:
But its indefiniteness analysis didn't depend upon its means plus function analysis.

[00:20:12] Speaker 02:
I think that's right, Your Honor.

[00:20:13] Speaker 02:
With respect to claim nine, what the district court did was a straightforward section two analysis.

[00:20:18] Speaker 02:
And it said, because in light of the specification and in light of the prosecution history, because the meaning of this entire phrase, processing system creating at least one recovery unit, was entirely dependent on this backup recovery module, that it was indefinite and provided no reasonable certainty.

[00:20:35] Speaker 02:
The court found it unnecessary to analyze whether

[00:20:38] Speaker 02:
this was also indefinite as a means plus function limitation, which we think it is as well.

[00:20:44] Speaker 02:
With respect to claim one, Farstone doesn't appeal the finding that this was indefinite as a means plus function limitation without adequate disclosure of structure under governing precedent under Williamson.

[00:20:58] Speaker 02:
They haven't appealed that.

[00:20:59] Speaker 02:
Instead, they've said that Williamson should be made prospective only.

[00:21:04] Speaker 02:
And that we think, for the reasons that we've outlined in our brief, we think there's nothing to that argument.

[00:21:11] Speaker 02:
It's a bedrock principle of American law that changes in law, including changes in statutory interpretation, apply to all pending cases.

[00:21:20] Speaker 02:
And that's what Harper v. Virginia Department of Taxation held and many other cases, including from this court, have held.

[00:21:27] Speaker 02:
And there's no unfairness involved in that.

[00:21:30] Speaker 02:
because parties have a right to the correct interpretation of the law in pending cases.

[00:21:36] Speaker 01:
So what in your view would have been necessary to have salvaged these claims?

[00:21:42] Speaker 01:
Specific algorithms or what?

[00:21:46] Speaker 02:
Yes, Your Honor.

[00:21:47] Speaker 02:
I think with respect to both our main argument and with respect to our alternative argument of means plus function, what was required was

[00:21:57] Speaker 02:
an algorithm, something that would have turned the general purpose hardware and software that's disclosed in the specification into a special purpose computer that could perform this specialized function of creating a recovery unit.

[00:22:11] Speaker 02:
There had to be some indication to a person of ordinary skill in the art as to the scope of how this was to be done.

[00:22:18] Speaker 02:
And instead, there's nothing other than the repeated references to the backup recovery module.

[00:22:25] Speaker 02:
But that gets to our alternative argument, which is the district court found it necessary to reach, which is that this is a means plus function limitation and is indefinite for that reason as well.

[00:22:35] Speaker 02:
The word system is a generic drop-in replacement for means.

[00:22:40] Speaker 02:
It's like device or module or other words that this court has identified and characterized in that way.

[00:22:46] Speaker 02:
Putting processing before it.

[00:22:48] Speaker 02:
doesn't change the analysis.

[00:22:49] Speaker 02:
That's a non-structural adjective that goes before it, just like putting distributed control before module.

[00:22:57] Speaker 02:
And Williamson didn't change the fact that module was a generic, structuralist term.

[00:23:02] Speaker 02:
And in fact, Apple's expert stated in unrebutted testimony that processing system is not a term of art, and it's not something that a person of ordinary skill in the art

[00:23:14] Speaker 02:
would understand as having the structure necessary to perform this creation function.

[00:23:19] Speaker 02:
Now of course that's not the end of the analysis because under section six you can then look into the specification and the structure can be claimed there.

[00:23:27] Speaker 02:
But there we run back into the very same problem we've been discussing, which is the specification doesn't provide an algorithm, it doesn't have a special purpose computer, it talks about general purpose hardware and software, and it talks about the backup recovery module.

[00:23:42] Speaker 02:
which doesn't provide any guidance, any algorithm about how this creation function is performed.

[00:23:49] Speaker 02:
So we think for that reason as well, the district court's judgment should be affirmed.

[00:23:57] Speaker 02:
Are there no further questions?

[00:23:59] Speaker 01:
Any more questions?

[00:24:00] Speaker 01:
Any questions?

[00:24:01] Speaker 01:
Thank you.

[00:24:02] Speaker 02:
Thank you.

[00:24:03] Speaker 01:
Thank you, Mr. Pelmer.

[00:24:11] Speaker 03:
Mr. Stein.

[00:24:12] Speaker 03:
Apple's counsel said that it doesn't matter whether or not the limitation is construed as a step or a means plus function limitation because the same rules will apply for definiteness.

[00:24:29] Speaker 03:
That is not the law.

[00:24:32] Speaker 03:
There's markedly different rules that apply depending on whether or not you construe it one way or another way.

[00:24:39] Speaker 03:
If it's a means plus function limitation,

[00:24:42] Speaker 03:
then the law, as it stands today, looks for an algorithm in the specification as the corresponding structure for that limitation.

[00:24:57] Speaker 03:
If it's construed as a method step, you don't need to find an algorithm in the specification.

[00:25:05] Speaker 00:
You need to find something that defines the term, correct?

[00:25:12] Speaker 03:
you can look outside the specification in the case of construing a method step under the current law.

[00:25:17] Speaker 03:
So here we have an expert saying that what's described in the specification provides reasonable certainty to one of ordinary school in the art as to how to construe this limitation.

[00:25:30] Speaker 03:
And that testimony is considered and given weight in the context of a standard

[00:25:37] Speaker 03:
112-2 analysis.

[00:25:38] Speaker 03:
You're not limited to the spec.

[00:25:40] Speaker 03:
You're not limited to an algorithm under Section 1-2 analysis for method claims.

[00:25:47] Speaker 03:
For means plus function claims, the law developed that you look for an algorithm as the corresponding structure.

[00:25:55] Speaker 03:
Now, there is an issue of whether the whole algorithm law should be revisited.

[00:26:03] Speaker 03:
In my view, it's based on in Ray Allopak, going back a number of years, where the court found that the corresponding, for patentability's purpose, a special patentability for software-based inventions, that a computer that is programmed with a particular algorithm creates a special purpose computer.

[00:26:28] Speaker 03:
And therefore, that is patentable subject matter.

[00:26:33] Speaker 03:
And then the court picked up that analysis for 112.6 and WMS Gaming.

[00:26:39] Speaker 03:
But now with Alice, the Supreme Court was no longer focused on algorithms as the essence of structure.

[00:26:47] Speaker 03:
And at least in my view, it's time to take a step back and see if the original focus on algorithms, as opposed to what one of skill in the art would understand with reasonable certainty as to what these claims mean, should be the standard.

[00:27:07] Speaker 03:
But in any event, here, Apple's counsel statement that you reach the same result whether or not you consider it a step.

[00:27:15] Speaker 03:
or a means plus function limitation is wrong as a matter of law.

[00:27:22] Speaker 03:
I see it in a matter of time.

[00:27:23] Speaker 01:
Thank you.

[00:27:24] Speaker 01:
Thank you, Mr. Stein.

[00:27:25] Speaker 01:
Mr. Palmore, the case is taken under submission.