[00:00:51] Speaker 03:
Okay, our third case this morning is number 15, 1769, Intellectual Ventures versus Symantec.

[00:00:59] Speaker 03:
Mr. Citron, is that how you pronounce it?

[00:01:03] Speaker 00:
Yeah.

[00:01:03] Speaker 00:
May it please the court.

[00:01:04] Speaker 00:
What we take from the Supreme Court's decision in Alice, along with both the majority and dissenting opinions in DDR, is that when an inventor describes a specific way to overcome a recognized problem in existing computer technology, their invention is patent-eligible under Section 101.

[00:01:20] Speaker 00:
And to be clear, when I say the patent overcomes a problem in the conventional design of computer technology, I mean it makes the technology better from the standpoint of its technological goals, not that it fills a hole in a tech company's business model.

[00:01:33] Speaker 00:
And I want to start by explaining precisely how the 050 patent does just that.

[00:01:38] Speaker 03:
So the 050 patent, if I understand it, is basically a way of dealing with spam.

[00:01:43] Speaker 03:
You identify an email.

[00:01:46] Speaker 03:
by some characteristic you compare it to a database and you can find out that's spam, right?

[00:01:52] Speaker 00:
It's not by some characteristic.

[00:01:54] Speaker 00:
It's a pretty specific construct designed to overcome very specific technological problems.

[00:02:00] Speaker 00:
But I think the basic answer to your question is yes.

[00:02:03] Speaker 00:
It's mostly about identifying spam and also viruses which are recited in the patent specification.

[00:02:07] Speaker 03:
Why isn't that like some of these hypotheticals or examples

[00:02:15] Speaker 03:
maybe a little bit far-fetched, but why isn't this like someone receiving mail, looking at it and seeing whether it's from some company that you don't want to have anything to do with and discarding it?

[00:02:33] Speaker 03:
And why isn't that sort of similar to, in the non-internet world, to what's going on here?

[00:02:41] Speaker 03:
And this is just taking that example and

[00:02:44] Speaker 03:
and transferring it into this new context?

[00:02:48] Speaker 00:
Well, I think the answer is because that ignores all the very specific claim limitations that structure both the invention in light of the technological problems it was trying to solve.

[00:02:59] Speaker 03:
The point is we actually don't- Well, that would be the step two of Alice, right?

[00:03:02] Speaker 00:
Well, I think it's not critical to us whether you conceive of that as step one or step two.

[00:03:07] Speaker 00:
I think DDR is a little unclear about whether it's a step one or step two problem.

[00:03:10] Speaker 00:
You can think of it as step two.

[00:03:12] Speaker 00:
I'm not saying just that the structures are specific.

[00:03:14] Speaker 00:
I'm saying that they're designed to solve a technological problem.

[00:03:17] Speaker 00:
In the example you just gave, the person has to read the email or look at it and determine whether it's from someone they don't want to receive mail from.

[00:03:25] Speaker 00:
The patent is trying to avoid just that problem.

[00:03:29] Speaker 00:
You don't want to open the email or download its content because it could be spam or it could be virus.

[00:03:33] Speaker 03:
No, but that's exactly the same thing that I was describing.

[00:03:36] Speaker 03:
You don't open the letter because it's not one that you want to read.

[00:03:40] Speaker 03:
You simply discard it.

[00:03:41] Speaker 03:
That has been going on for

[00:03:43] Speaker 03:
decades or longer.

[00:03:45] Speaker 00:
Right, but there are other technological problems described in the patent that it's trying to solve.

[00:03:50] Speaker 00:
For example, it talks about how, and this is at, this is at column one around line 57, about how senders of spam have become sophisticated in terms of masking who the sender is or using complicated subject lines in order to make it difficult to determine that it's spam.

[00:04:12] Speaker 00:
And what they're doing is they're going to use a hashing algorithm to reduce that spam into a very unique form of file content identifier that can't just be an excision.

[00:04:21] Speaker 00:
So it can't just be the sender.

[00:04:22] Speaker 00:
It can't just be the subject line.

[00:04:24] Speaker 00:
It has to be a very unique form of file content identifier.

[00:04:27] Speaker 00:
And then we're going to send that to the network to overcome a different technological problem, which is using up too much bandwidth by sending email back and forth to the server.

[00:04:36] Speaker 00:
And once we solve those two technological problems, what we've built is a better spam track.

[00:04:42] Speaker 00:
OK?

[00:04:43] Speaker 03:
And so I thought the district court found that that was routine.

[00:04:48] Speaker 00:
I mean, I think you could describe any individual step of the patent as routine or known completely on its own.

[00:04:55] Speaker 00:
The invention, as this court said in DDR and as the Supreme Court said in KSR, most if not all inventions come from combining otherwise known or routine steps into something unknown and not routine.

[00:05:08] Speaker 00:
And I think that there's no dispute

[00:05:09] Speaker 00:
that this was a breakthrough approach to the identification problem at the time.

[00:05:15] Speaker 00:
If you remember.

[00:05:15] Speaker 03:
Wait, wait, wait.

[00:05:16] Speaker 03:
How do we know that?

[00:05:17] Speaker 03:
There's no dispute there's a breakthrough approach?

[00:05:19] Speaker 00:
I mean, the jury has found that it was novel and non-obvious.

[00:05:26] Speaker 00:
And in addition to that, I think if you think about the time.

[00:05:30] Speaker 03:
But you say there's no dispute that it was a breakthrough approach.

[00:05:32] Speaker 00:
I mean, that dispute is not presented here.

[00:05:35] Speaker 00:
I mean, I'm sure the other side will dispute it, actually.

[00:05:37] Speaker 00:
Let me explain what I mean.

[00:05:39] Speaker 00:
At the time, and the patent describes this, virus detection was predominantly done, spam detection was predominantly done on the local computer.

[00:05:47] Speaker 00:
You would buy a piece of software off the shelf.

[00:05:49] Speaker 00:
It would have a database on it.

[00:05:51] Speaker 00:
And that database would have to be updated remotely.

[00:05:53] Speaker 00:
You would have to send all the new virus signatures to the local computer.

[00:05:56] Speaker 00:
And the local computer would try to screen spam.

[00:05:59] Speaker 00:
And the patent specification itself describes the two technological problems that arose from that model.

[00:06:07] Speaker 00:
One was you didn't have up-to-date signatures.

[00:06:10] Speaker 00:
And the other was you were using up all the processing power of the local computer in order to do your virus and spam detection.

[00:06:18] Speaker 00:
And it teaches a different way of solving the problem.

[00:06:21] Speaker 00:
It involves using a mathematical algorithm to reduce the file into a unique file content identifier, sending only that teeny tiny file over to the server and using the server to do the processing.

[00:06:33] Speaker 00:
Those are solutions to technological problems.

[00:06:35] Speaker 00:
There isn't a business model issue.

[00:06:37] Speaker 00:
It's not teaching you how to make more money or sell more viruses, screening.

[00:06:41] Speaker 00:
It's telling you how to do better virus and state protection.

[00:06:44] Speaker 03:
But there are many of our 101 cases that in that sense involve technology.

[00:06:48] Speaker 03:
I mean, the intellectual ventures, the earlier intellectual ventures case, involve technology.

[00:06:57] Speaker 03:
I don't think that you get out from 101 just by saying there's technology involved.

[00:07:02] Speaker 00:
Let me make it clear in a much more specific way what I'm saying.

[00:07:07] Speaker 00:
The structures that are taught in the claim, the unique form of file content identifier that is not an excision from the middle of the file, and the two-tiered architecture using one computer and then sending only the tiny, very small bandwidth file to the server for processing, those are solutions to technological problems.

[00:07:25] Speaker 00:
In the IV case that you're describing before, the Capital One.

[00:07:28] Speaker 03:
The question is whether they're routine or non-routine.

[00:07:32] Speaker 00:
I mean, they're not routine in combination.

[00:07:34] Speaker 00:
There's never going to be a situation where you're going to be able to identify some totally unconventional step that is further novel from the invention itself.

[00:07:50] Speaker 00:
Like I said, the Supreme Court's been really clear about this.

[00:07:52] Speaker 00:
It says most, if not all, inventions are combinations of otherwise known or routine steps.

[00:07:57] Speaker 00:
So what I'm saying is the problem solved in IV

[00:08:01] Speaker 03:
So you think the steps taken alone is routine, but the combination is non-routine?

[00:08:06] Speaker 00:
I think that's right.

[00:08:07] Speaker 00:
And I think that's what we have to prove at the obviousness stage.

[00:08:12] Speaker 00:
We have to show that you would not have combined these in this way.

[00:08:15] Speaker 00:
But I think there isn't a suggestion that the combination of these steps in order to solve the virus problem was routine.

[00:08:22] Speaker 00:
And that's what invention looks like.

[00:08:24] Speaker 00:
You take steps from ideas from different fields, and you use it in order to overcome a problem in another field.

[00:08:30] Speaker 00:
But just so I can get back to your question about Capital One, so the claims in that case were written to tailoring content on websites.

[00:08:39] Speaker 00:
And the problem there is not in the technology for tailoring.

[00:08:44] Speaker 00:
It's in the business model.

[00:08:45] Speaker 00:
The suggestion is, look, this content would be more attractive to people if it was tailored.

[00:08:51] Speaker 00:
And the court was very clear.

[00:08:53] Speaker 00:
It doesn't actually teach some particular way of doing the tailoring.

[00:08:57] Speaker 00:
It doesn't tell you that the tailoring has to be done.

[00:09:00] Speaker 00:
this way or that way and overcome some problem in the existing software design, it just says, look, you're not tailoring content.

[00:09:07] Speaker 00:
The content would be better if it was tailored.

[00:09:09] Speaker 00:
That's not at all what the 050 is doing in the context of the patent at the time.

[00:09:14] Speaker 00:
And you can just read it off the face of the patent itself.

[00:09:18] Speaker 00:
In columns one and two, there's a description of the problems being solved in the background of the invention.

[00:09:22] Speaker 00:
The description of those problems, they're all described as technological problems.

[00:09:26] Speaker 00:
They're about the efficiency and up-to-date-ness and bandwidth usage

[00:09:30] Speaker 00:
associated with existing spam and virus traps.

[00:09:33] Speaker 00:
And this is saying, here, I've got instructions for building you a better virus trap.

[00:09:36] Speaker 00:
It's not designed to take a business or entrepreneurial idea from outside of the virus detection world and just say, apply it to a computer.

[00:09:45] Speaker 03:
We're not exactly saying that combining these features that you're describing was non-routine.

[00:09:52] Speaker 00:
I mean, the patent actually has a very detailed recitation of some of the benefits associated with the new distributed architecture that it's describing.

[00:10:01] Speaker 00:
So like in column six, for example, it says in one embodiment where spam determination is the goal, the algorithm computes, for example, the frequency with which a message or in actuality the ID for the message is received within a particular time frame.

[00:10:15] Speaker 00:
If a particular ID indicating the same message is seen some number of times per hour, the system classifies the message as spam.

[00:10:22] Speaker 00:
All subsequent IDs matching the ID classified as spam will now cause the system to generate a reply that the email is spam.

[00:10:28] Speaker 00:
What it's describing is this new functionality unleashed by the two-tiered system.

[00:10:33] Speaker 03:
How do you read that into the patent?

[00:10:36] Speaker 03:
Where are those features in the patent claims?

[00:10:41] Speaker 00:
In terms of looking at the claims, the claims are themselves clearly a combination of these different elements.

[00:10:48] Speaker 00:
So in claim nine, for example, it starts with,

[00:10:51] Speaker 00:
receiving on a processing system file content identifiers for data files from a plurality of file content identifier generator agents.

[00:11:00] Speaker 00:
And the patent teaches both what a file content identifier is.

[00:11:03] Speaker 00:
It's a very specific structure.

[00:11:05] Speaker 00:
It can't be just an excision from the file, like the subject name or the sender's address.

[00:11:10] Speaker 00:
It has to be hashed from the full content of the file, and it has to be particular so that every single file of the same content will generate the same identifier.

[00:11:18] Speaker 00:
That's in the court's claim constructions.

[00:11:21] Speaker 00:
And then a file content identifier agent is also something taught in the patent.

[00:11:25] Speaker 00:
It's the piece of software you're going to put on the local computer that's going to generate the file content identifier.

[00:11:31] Speaker 00:
And then it talks about receiving it on the processing system.

[00:11:34] Speaker 01:
The file content identifier is made through the hashing algorithm.

[00:11:36] Speaker 01:
That's right.

[00:11:37] Speaker 01:
And that was known conventionally, alone.

[00:11:40] Speaker 01:
Yes.

[00:11:41] Speaker 01:
We don't give you invented hashing.

[00:11:43] Speaker 01:
What is the jury found the patent was not invalid?

[00:11:47] Speaker 01:
right in a trial after a trial is valid but not infringed the 050.

[00:11:53] Speaker 01:
Not invalid.

[00:11:54] Speaker 01:
Not invalid.

[00:11:54] Speaker 01:
102 103 can you tell me a little bit about that just briefly.

[00:11:59] Speaker 00:
Why they're not.

[00:12:01] Speaker 01:
What was the basis on which the jury was asked to what were the defenses that were presented for the jury on invalidity.

[00:12:08] Speaker 01:
Was it 102?

[00:12:09] Speaker 01:
Was it 103?

[00:12:09] Speaker 01:
Do you know what the arguments were?

[00:12:11] Speaker 00:
I'm not fully prepared to brief those just because they're not briefed in the case.

[00:12:15] Speaker 01:
My understanding is that the- I just heard you talk about it earlier.

[00:12:19] Speaker 00:
Right.

[00:12:19] Speaker 00:
My understanding is that the validity defenses are associated with combining prior art references that would have taught independently the ideas of hashing, the ideas of the distributed system.

[00:12:31] Speaker 00:
But the jury found that they hadn't been combined in this particular way.

[00:12:36] Speaker 00:
But they will have a chance to try to convince this court that we're wrong about that if they want to.

[00:12:43] Speaker 00:
But I think we should try to distinguish that question out of the present one to the extent possible.

[00:12:50] Speaker 03:
Do you want to save the rest of your rebuttal time?

[00:12:53] Speaker 00:
I would like to, yeah.

[00:13:03] Speaker 03:
Mr. Loonge?

[00:13:05] Speaker 04:
So Mr. Tchaikovsky, starting your honor.

[00:13:13] Speaker 04:
Good morning, your honors.

[00:13:14] Speaker 05:
Mr. Tchaikovsky, I represent Trend Micro.

[00:13:18] Speaker 05:
I will be primarily addressing the 050 patent for both Trend Micro and Symantec.

[00:13:25] Speaker 05:
We just heard a great deal about why the 050 should be patented.

[00:13:29] Speaker 03:
So Mr. Loomis is going to address the 610, all right?

[00:13:33] Speaker 05:
and the 142.

[00:13:37] Speaker 05:
So we heard a great deal about why the 050 patent should be found patent eligible.

[00:13:52] Speaker 05:
But the focus, as Your Honors directly pointed to, was in a 101 analysis, we focus on the claims, not the specification.

[00:14:01] Speaker 05:
to see whether the claims have a valid idea inside of them.

[00:14:05] Speaker 05:
And as we've seen from cases from both the Supreme Court and the federal circuit, this court, that one, we look to see whether there's an abstract idea, and then two, if there is one, an inventive concept.

[00:14:16] Speaker 05:
In doing so, we look to see, does the claim have sufficient specificity?

[00:14:21] Speaker 05:
Is it specific enough?

[00:14:22] Speaker 05:
Does it detail the how that the claim is performed and the way to achieve a different result?

[00:14:28] Speaker 05:
such as in DDR, where a claim was found to be patent eligible, where these claims do not have this.

[00:14:33] Speaker 05:
Instead, we see a rehash of the arguments that Intellectual Ventures made in its prior case in Capital One.

[00:14:40] Speaker 05:
These exact same arguments were made with respect to computer elements that were conventional in routine, somehow making the patents eligible.

[00:14:48] Speaker 05:
And they did not.

[00:14:49] Speaker 05:
The patents were found ineligible.

[00:14:51] Speaker 03:
So what they're saying here, as I understand it,

[00:14:54] Speaker 03:
While each individual element here at step two of Alice might be routine and conventional, that the combination is not routine and conventional.

[00:15:04] Speaker 03:
What's your response to that?

[00:15:06] Speaker 05:
Well, the overall combination is routine and conventional, just like in Alice, that the court found the combination to be routine and conventional.

[00:15:17] Speaker 05:
Moreover, this court, that is, excuse me, the district court, on pages JA, 26 through 28 of its order,

[00:15:24] Speaker 05:
stepped through, and over three pages, the detail of how the order combination, after stepping through all of the independent elements of the claim, were generic or conventional, had three pages of focusing on the claim as a whole.

[00:15:39] Speaker 05:
And in focusing on the claim as a whole, found nothing significantly more than the generic computer implementation of the human executable abstract idea previously found, which was comparable to ones in cyber source and content extraction.

[00:15:54] Speaker 05:
And that's on J826.

[00:15:56] Speaker 05:
The claims don't say the how.

[00:15:58] Speaker 05:
That is, Internet Patents Corp, or Dealer Track, or IV Capital One, that is required.

[00:16:05] Speaker 05:
And that's exactly why the ordered combination does not get you there, is because the how, the detail of how to get to the result is not fair.

[00:16:16] Speaker 05:
In fact, one of the best quotes from the court in using the abstract idea

[00:16:22] Speaker 05:
and then combining it to show you that the order of combination is nothing more than the sum of its parts, is receiving and sending information, including a file content identifier or a response.

[00:16:34] Speaker 05:
So we've got receiving it, the content identifier, or a response, describing content, or identifying a characteristic over a network is not arguably in the event of concept.

[00:16:43] Speaker 05:
That's on JA26, citing Alice.

[00:16:47] Speaker 05:
Court took that on.

[00:16:49] Speaker 05:
And court looked at the order of combination.

[00:16:52] Speaker 05:
A court looking at the order of combination even then compared this to similar processes held routine and conventional in other areas.

[00:17:02] Speaker 05:
And again, as I said, mostly from Cybersource and mostly from Bicid.

[00:17:08] Speaker 05:
But the court did it at length.

[00:17:10] Speaker 05:
And this isn't a question of novelty or non-obviousness.

[00:17:13] Speaker 05:
I mean, in Ultramershal, the claims are found to be not patent eligible.

[00:17:20] Speaker 05:
But the claim was not in the prior art.

[00:17:22] Speaker 05:
No one could establish that ultramarital claim with its 11 steps was in the prior art, but yet it was patent ineligible.

[00:17:29] Speaker 05:
Similarly, here, Your Honor asked a question about invalidity.

[00:17:33] Speaker 05:
Will all claims stand rejected at the Patent Office waiting on appeal based on more than six references that all disclose hashing and spam that occurred prior to the point of this?

[00:17:44] Speaker 05:
If we were focusing on invalidity based on prior art, we have a multitude of references that the Patent Office

[00:17:51] Speaker 01:
Is that a, what is that proceeding that's going on at the PTA?

[00:17:55] Speaker 05:
That's an inter-parties re-examination.

[00:17:58] Speaker 05:
It was actually filed right before.

[00:17:59] Speaker 05:
It's an inter-parties re-examination.

[00:18:00] Speaker 05:
It's been finally rejected at the Patent Office.

[00:18:03] Speaker 05:
And the claims, all asserted claims are up on appeal.

[00:18:07] Speaker 05:
So it's pending before the board?

[00:18:08] Speaker 05:
PTAB, yeah.

[00:18:09] Speaker 05:
That's correct for review.

[00:18:10] Speaker 05:
And that's where that currently sits.

[00:18:12] Speaker 05:
That's correct.

[00:18:14] Speaker 01:
Did the jury consider any validity

[00:18:16] Speaker 05:
The jury did consider, Your Honor, answering your questions.

[00:18:20] Speaker 05:
But given the time and given the three patents in suit, there were limited references put before the jury and not the numerosity of references and information put before the Patent Office.

[00:18:33] Speaker 05:
And so there is a distinct difference.

[00:18:36] Speaker 05:
In addition, I will tell you, the Patent Office actually didn't use the broadest reasonable interpretation.

[00:18:40] Speaker 05:
The Patent Office, as it's in the record,

[00:18:42] Speaker 05:
use the district court's, in addition to VRI, use the district court's claim construction in invalidating the claims.

[00:18:49] Speaker 05:
So we have this unique case procedural posture where, DDR being one of the only other ones, where we have a case that went over four and a half years.

[00:18:58] Speaker 05:
This district court looked at the claim construction, came up with the claim construction, heard the experts testify, had two weeks of trial with experts testifying.

[00:19:07] Speaker 05:
We had asked, I know sometimes it's sought to have early

[00:19:12] Speaker 05:
Alice motions.

[00:19:13] Speaker 05:
But Alice came out in June 2014.

[00:19:15] Speaker 05:
Trend Micro asked the court in approximately November of 2014 for an early Alice motion.

[00:19:21] Speaker 05:
Semantic's trial came in January of 2015.

[00:19:24] Speaker 05:
The court said, I'll hear it after trial.

[00:19:27] Speaker 05:
And that's exactly what happened.

[00:19:28] Speaker 05:
Our briefing went in right after trial.

[00:19:30] Speaker 05:
We had a hearing in April of 2015.

[00:19:31] Speaker 05:
And the court found the patents to be ineligible with that procedural posture.

[00:19:38] Speaker 05:
I see I'm eating into my six minutes now.

[00:19:41] Speaker 05:
If you have any more questions, I'll be happy to answer.

[00:19:44] Speaker 03:
I'm a little confused about the procedural posture of this.

[00:19:49] Speaker 03:
There was a trial involving Symantec, right, which resulted now in the entry of a final judgment with respect to the 610 pat, correct?

[00:20:01] Speaker 05:
With respect to all three patents at issue here, the 050, the 142, and the 610 patent, yes.

[00:20:08] Speaker 03:
But the 050 and the 142 had been found to be patent ineligible.

[00:20:14] Speaker 03:
So that didn't go before the jury, right?

[00:20:17] Speaker 05:
They were found ineligible after the trial for semantic.

[00:20:21] Speaker 05:
So the court addressed it.

[00:20:23] Speaker 05:
And we asked for it to be addressed prior to the trial.

[00:20:26] Speaker 05:
the district court decided to address the issue after the trial but just prior to Trent Micro's trial proceeding.

[00:20:39] Speaker 05:
Thank you, Your Honor.

[00:20:45] Speaker 03:
Mr. Loemmisch.

[00:20:47] Speaker 02:
Thank you, Your Honor.

[00:20:48] Speaker 02:
May it please the court, Doug Lumish for Symantec.

[00:20:51] Speaker 03:
Has there been an appeal from the final judgment that was entered in your case?

[00:20:58] Speaker 02:
Not yet, Your Honor.

[00:20:59] Speaker 02:
The final decision, final judgment was only just entered in the last, I'd say, 30 days or so.

[00:21:05] Speaker 03:
Are you appealing?

[00:21:06] Speaker 02:
We will be.

[00:21:07] Speaker 02:
It depends on the outcome of this at some level, whether it reaches, Your Honors, on the 050.

[00:21:13] Speaker 03:
But yes, we will be... There's a potential jurisdictional problem with respect to the 610 patent as to whether the court had the authority to enter a Rule 54B judgment with respect to that, which would be cured if the entire case went to final judgment and the final judgment were before us.

[00:21:41] Speaker 02:
Well, we do believe it's been cured and that there is now a final judgment, Your Honor, to the extent there ever was a defect.

[00:21:46] Speaker 02:
I'm not sure there was.

[00:21:48] Speaker 02:
There is now a final judgment.

[00:21:49] Speaker 02:
It will be appealed.

[00:21:50] Speaker 02:
They are not, obviously, before you together in a single appeal today.

[00:21:54] Speaker 02:
But the district court has entered that final judgment.

[00:21:57] Speaker 02:
I think so you will have jurisdiction over it.

[00:22:03] Speaker 02:
OK, go ahead.

[00:22:04] Speaker 02:
So the appeal, as we see it, Your Honor, centers on two fundamental

[00:22:08] Speaker 02:
issues of 101 law, and this is true for all three patents in suit, 050142 and the 610.

[00:22:15] Speaker 02:
The first critical and I think fundamental tenet is that eligibility for patents under Section 101 should not devolve or hinge on what the Supreme Court has called the draftsman's art.

[00:22:29] Speaker 02:
The recitation of computer-specific limitations in claims

[00:22:35] Speaker 02:
that otherwise claim abstract ideas.

[00:22:37] Speaker 03:
Let me tell you what I see as the problem with respect to the 610 patent.

[00:22:42] Speaker 03:
I see some of these analogies about how this was a well-understood concept to be a bit far-fetched.

[00:22:54] Speaker 03:
And on the other hand, what you have here is a well-known application of virus software at the user's computer

[00:23:03] Speaker 03:
And Patton here seems to be solely directed to the idea of moving that virus activity to the telephone network from the user's computer.

[00:23:14] Speaker 03:
The question is whether that's an abstract idea.

[00:23:17] Speaker 03:
I, for the moment, don't see that as being a pre-existing concept that is the movement from the user's computer to the telephone network.

[00:23:30] Speaker 03:
On the other hand, it does seem to be

[00:23:32] Speaker 03:
a very abstract and broad concept.

[00:23:36] Speaker 03:
And maybe under cases like O'Reilly and our own Brackett case, even a new idea can be an abstract idea.

[00:23:51] Speaker 03:
But I say that to help counsel understand at least what my concerns are, not speaking necessarily for my colleagues.

[00:24:00] Speaker 03:
Could you address that?

[00:24:02] Speaker 03:
Let's assume that the 610 patent that we conclude doesn't involve a pre-existing concept the way Alice did, the way Mayo did.

[00:24:12] Speaker 03:
Can it still be abstract?

[00:24:14] Speaker 02:
So taking that assumption, Your Honor, I'll start with O'Reilly.

[00:24:18] Speaker 02:
So even Professor Morse, as illustrious as he is and as celebrated as he's been for what he's contributed to American technology, was not permitted to claim

[00:24:29] Speaker 02:
the concept divorced from or separated from the implementation.

[00:24:34] Speaker 02:
Specification that told you how the telegraphy machine worked, told you how Morse code worked and he was entitled to claims that covered those things.

[00:24:42] Speaker 02:
When he gets to claim eight and he says I want all ways of communicating with galvanic forces or what he called the motive force of electromagnetism, the Supreme Court said he couldn't do it because he was claiming an outcome separate from

[00:24:58] Speaker 02:
the specific machine and the specific process.

[00:25:03] Speaker 03:
But how do we draw the line?

[00:25:04] Speaker 03:
I mean, where you're dealing with a pre-existing concept which is being taken from the paper world, the internet, or whatever.

[00:25:11] Speaker 03:
I mean, I think our cases indicate that we dealt with that.

[00:25:16] Speaker 03:
We understand that pretty well.

[00:25:17] Speaker 03:
But assuming that that is in this situation, how do we define what's an abstract concept?

[00:25:23] Speaker 03:
I mean, to say, well, the claim is too broad isn't all that helpful.

[00:25:29] Speaker 02:
So drawing on the Supreme Court and drawing on your honors, this court's precedent.

[00:25:33] Speaker 02:
I think there are two things you should do to draw the line.

[00:25:36] Speaker 02:
One is you should look and see under the words of Atlas whether the claim purports to improve the function of the computer itself.

[00:25:44] Speaker 02:
Is it actually saying this is a better machine or a better process, a better program that existed before?

[00:25:49] Speaker 02:
Or is it just saying use known computer technology?

[00:25:52] Speaker 01:
Does it improve the network?

[00:25:54] Speaker 01:
Or would it be does it improve the computer with respect to the 610 patent?

[00:25:58] Speaker 02:
I think either, Your Honor.

[00:25:59] Speaker 02:
If the network itself were something that was identifiable and actually improved in some specific way, I think that could be patentable under the ALICE 10 of improve the computer.

[00:26:10] Speaker 02:
I think it actually says improve the computer or technology, if I remember correctly.

[00:26:14] Speaker 02:
So I think either is the correct answer.

[00:26:17] Speaker 02:
But what we know is it shouldn't just use conventional computer technology and apply it to achieve a concept, even if, assuming your honor's assumption that it's not pre-known.

[00:26:30] Speaker 02:
The second thing I think you ought to look at is does the claim specify what that new machine or software is and how it works?

[00:26:39] Speaker 02:
Does it, in fact, lay out a specialized piece of hardware, a specialized piece of software,

[00:26:45] Speaker 02:
and not just some black box that says, now achieve some aspirational result.

[00:26:49] Speaker 02:
Get me to some magical outcome so I can lay ownership or claim ownership to things that semantic engineers have taken millions of people hours to develop.

[00:27:00] Speaker 02:
And so if you have an improved thing of the claim, now I'm not saying you have to prove novelty, but if the claim on its face is purporting to improve the functionality of the technology and is specific enough that you can identify

[00:27:14] Speaker 02:
what that new thing is, then I think you should be in a realm of patentability.

[00:27:19] Speaker 01:
So in a hypothetical, it would be your position that if that detecting within the telephone network step talked about some sort of different type of detection, that you would say that that could be eligible because the detection itself is something different

[00:27:35] Speaker 01:
for an improvement, a different kind of detecting, whereas what this claim is directed to, I guess generally, is the idea of improving the telephone network by changing the location of where the detection occurs.

[00:27:50] Speaker 02:
I wouldn't even go that far.

[00:27:51] Speaker 02:
I think when you look at the 610 and you look at all the evidence, it was solving a business problem.

[00:27:56] Speaker 02:
The inventors, it was a phone company, the inventors were marketing people and a lawyer.

[00:28:01] Speaker 02:
And this is in the record.

[00:28:02] Speaker 01:
And what they all said was- We shouldn't look at things like that to see what the claim means, right?

[00:28:07] Speaker 01:
So forget it.

[00:28:07] Speaker 02:
If you don't think that's relevant, let me still get to the point, which is what they were trying to do was solve a business issue for their customers.

[00:28:17] Speaker 02:
Instead of sending something that has a virus in it and having to extract it at the sending site, or receiving it and having to extract it at the recipient site, they said, well, it's coming through us as a pipeline.

[00:28:28] Speaker 02:
Why don't we as a service extract it here?

[00:28:31] Speaker 02:
Not improving the network.

[00:28:32] Speaker 02:
They didn't add new hardware or new software they don't claim to have.

[00:28:36] Speaker 02:
Added some new piece of programming or some new chip or some new anything.

[00:28:41] Speaker 02:
They just say, we're going to do it as a location here because it's good for our customers.

[00:28:45] Speaker 02:
That's a benefit.

[00:28:46] Speaker 02:
That's a result.

[00:28:48] Speaker 02:
But it's not anything new.

[00:28:49] Speaker 02:
So going back to your original question, if the 610 had said, here's a way to resolve and better screen viruses

[00:28:58] Speaker 02:
And a network then could be done otherwise or has been done before.

[00:29:01] Speaker 02:
And we've come up with a new program, and here's what it is, or a new machine or apparatus or computer or computing device.

[00:29:08] Speaker 02:
And here's what it is that might be eligible.

[00:29:11] Speaker 02:
All this claim says is do conventional virus screening in a conventional telephone network instead of at conventional end place.

[00:29:20] Speaker 02:
And that should not be eligible.

[00:29:24] Speaker 02:
I didn't get to address the 142 or the 050.

[00:29:26] Speaker 02:
I don't know if runners have questions about that.

[00:29:28] Speaker 02:
I see I'm almost out of my time.

[00:29:30] Speaker 03:
I think we don't have any further questions.

[00:29:33] Speaker 03:
We'll give you one minute for your server monitor.

[00:29:37] Speaker 02:
I had reserved three.

[00:29:39] Speaker 02:
Am I losing two of my three?

[00:29:41] Speaker 02:
You are.

[00:29:42] Speaker 02:
I am.

[00:29:42] Speaker 02:
Thank you.

[00:29:43] Speaker 02:
I'll keep that in mind when I take my notes.

[00:29:50] Speaker 00:
I think Mr. Loomis is actually very

[00:29:52] Speaker 00:
succinctly described why the 610 patent is patent eligible.

[00:29:56] Speaker 00:
It does improve.

[00:29:57] Speaker 03:
The 610 patent, it is true, is it not, that the only thing that's different about it is the location of the virus screen, which is in the telephone network instead of in the user's computer.

[00:30:07] Speaker 00:
Yeah, there's limitations also about that.

[00:30:10] Speaker 00:
Yes.

[00:30:11] Speaker 00:
The novelty of it, yes.

[00:30:12] Speaker 00:
That's right.

[00:30:13] Speaker 00:
What makes it different from the way that folks have been approaching the virus detection problem is that the virus detection will be done entirely within the network and limited to computers connected to the network and not the user's computers.

[00:30:26] Speaker 00:
And that solves a big problem.

[00:30:28] Speaker 00:
But the problem is a technological problem, not a business problem.

[00:30:31] Speaker 03:
But that seems to be a very broad claim.

[00:30:33] Speaker 03:
I mean, it... And that patent itself describes it as a, quote, concept, unquote.

[00:30:39] Speaker 00:
So they put on a strong

[00:30:42] Speaker 00:
case about non-infringing alternatives.

[00:30:44] Speaker 03:
And the virus screening is the same, isn't it, as it would be at the computer?

[00:30:48] Speaker 03:
The virus screening software, the patent says you can use any conventional virus screening software.

[00:30:55] Speaker 00:
That's right.

[00:30:55] Speaker 00:
I mean, I think what we're going to end up debating is whether it was obvious to take the idea of limiting it entirely to the network and add it to the way that folks had been

[00:31:09] Speaker 00:
approaching the virus screening problem before.

[00:31:11] Speaker 01:
But I don't think there's... I think the question more is whether it's so broad that it's an abstract idea that is just, this is the idea, now do it, as opposed to, this is the idea, here's some technological development on how you can do it.

[00:31:27] Speaker 00:
I mean, it's broad in the sense that we've identified the particular novelty that we all agree is involved in the 610 patent and then we did claim that novelty.

[00:31:36] Speaker 00:
But it's no broader than, you know, in the famous English case that's talked about in Morse, the person who designs the thing that warms the air that goes into the blast furnace.

[00:31:44] Speaker 00:
It's like he does claim, you know, the thing that warms the air that goes into the blast furnace, and it's one very small advancement, but he does get that advancement by explaining that it makes it better.

[00:31:54] Speaker 03:
Yeah, but how do we draw the line?

[00:31:56] Speaker 03:
Because in O'Reilly, they said the broader claims here about

[00:31:59] Speaker 03:
using this for any form of communication is not patentable and that's been viewed in later cases as a 101 decision.

[00:32:07] Speaker 03:
So how do we draw the line where you've got a very broad patent and hypothetically you don't have a pre-existing concept, how do we know whether a patent like that is patent eligible or not?

[00:32:21] Speaker 03:
Where do we draw the line?

[00:32:23] Speaker 00:
I mean, I think the best way to do it is to look at the patent in the context of the problem being solved and ask if that problem is technological and the solution, there's a teaching there sufficient to overcome the problem.

[00:32:36] Speaker 00:
We all agree, or at least at trial, they're experts testified, that the problem that's solved by the 610 patent is technological.

[00:32:45] Speaker 03:
issue that was being addressed in the broadest point.

[00:32:48] Speaker 00:
That doesn't seem to me to be that helpful.

[00:32:51] Speaker 00:
So there was no teaching in the claim eight sufficient to overcome the technological problem.

[00:32:57] Speaker 00:
The claim eight doesn't even explain, in O'Reilly, didn't explain anything about how you would use the electric or galvanic force to communicate characters at a distance.

[00:33:06] Speaker 00:
That's what made that claim problematic.

[00:33:09] Speaker 00:
The 610 patent teaches something that no one's disputed, that it's insufficient to tell people how to do it.

[00:33:14] Speaker 00:
you know, it teaches you to put it on the network.

[00:33:17] Speaker 00:
And, you know, we could have a dispute about... Well, it just tells you to put it on the network.

[00:33:20] Speaker 00:
It doesn't tell you how to do it, right?

[00:33:22] Speaker 00:
It tells you to limit it to the network.

[00:33:25] Speaker 03:
It doesn't tell you how to put it on the network.

[00:33:27] Speaker 03:
I mean, again, we can have a dispute about whether that's a simple enough... No, no, it doesn't tell you how to put it on the network.

[00:33:36] Speaker 00:
The patent claims and specification do teach you how to put it on the network, yes.

[00:33:41] Speaker 00:
I mean, they don't limit it to one particular way of limiting it exclusively to the network, other than it has to be exclusive.

[00:33:48] Speaker 00:
And there was a huge dispute at trial, for example, about whether it was included, the gateway nodes associated with the two servers and the claim constructions resolved that dispute in order to show that the claims don't actually reach all ways of doing it

[00:34:06] Speaker 00:
involving the network or anything like that.

[00:34:08] Speaker 00:
It is limited.

[00:34:09] Speaker 00:
You can ask whether I think it's just too simple an innovation to be non-obvious, for example.

[00:34:16] Speaker 00:
But it's not abstract just because you've identified a small but important piece of progress over the existing art.

[00:34:25] Speaker 00:
And that's true of the 0502.

[00:34:26] Speaker 00:
I just want to return to this briefly because Mr. Loomish mentions it.

[00:34:29] Speaker 00:
The problem that is being solved by the 050 patent is clearly a technological problem.

[00:34:35] Speaker 00:
They're recited on the face of the patent.

[00:34:37] Speaker 03:
And I think you're over your time here, so I think that's all I think.

[00:34:44] Speaker 03:
Mr. Lumich has the last word here, the one in the back.

[00:34:52] Speaker 02:
Thank you, Your Honors.

[00:34:53] Speaker 02:
Very briefly, going back to some of the questions that were asked before, the BuySafe case says that something could be abstract, a claim can be abstract, even if it's groundbreaking.

[00:35:03] Speaker 02:
Flux as a claim can be abstract, even if it's novel.

[00:35:06] Speaker 02:
So I wanted to just rely on those authorities as well.

[00:35:10] Speaker 02:
I wanted to point out in addition that at column one, line 65 through 67 of the 610 patent, it defines what a virus is.

[00:35:19] Speaker 02:
And it is incredibly broad.

[00:35:20] Speaker 02:
It is unbounded to cover any, as it says, deleterious data.

[00:35:25] Speaker 02:
And so the breadth that is being sought for coverage, the preemption,

[00:35:30] Speaker 02:
potential for the 610 claim is huge.

[00:35:34] Speaker 02:
And then the last thing I want to say is we talked about it in light of your question, Your Honor, the assumption that doing virus detection on the telephone network was new and not done before.

[00:35:46] Speaker 02:
I wanted to make clear for the record and for the court that at JA2777, 2777, 2777, intellectual ventures expert Dr. McDaniel conceded, in fact, that a prior art reference called Schnurr

[00:36:00] Speaker 02:
quote, did detect for viruses within a telephone network.

[00:36:05] Speaker 02:
So the presupposition that this was groundbreaking or revolutionary or even new is just wrong.

[00:36:12] Speaker 03:
OK.

[00:36:12] Speaker 03:
Thank you, Mr. O'Neil.

[00:36:13] Speaker 03:
Thank you.

[00:36:13] Speaker 03:
Thank you, Mr. O'Neil, for the cases submitted.