[00:00:02] Speaker 02: Good morning. [00:00:03] Speaker 02: Our first case for today is 2015-1863 IP Learn Focus versus Microsoft. [00:00:12] Speaker 02: Mr. Powers, please proceed. [00:00:20] Speaker 00: Thank you, Your Honor. [00:00:21] Speaker 00: May it please the Court? [00:00:23] Speaker 00: The claims at issue in this case are patent eligible under both Steps 1 and 2 of the Mayo test. [00:00:31] Speaker 00: based on this court's recent decision in Enfish for step one, and based on this court's recent decision in Bascom for step two. [00:00:38] Speaker 00: Turning to step one, what Enfish teaches is that the relevant inquiry, at least relevant to this case, is whether the claims are directed to an improvement in computer functionality, or are instead merely using a generic computer to implement an otherwise abstract idea. [00:01:00] Speaker 05: of the claims themselves, claims improvement on computer functionality? [00:01:07] Speaker 00: The combination of elements in the claims changes the way that humans interact with computers. [00:01:12] Speaker 00: The prior art was usually a mouse. [00:01:14] Speaker 00: This is 1996. [00:01:16] Speaker 00: We would interact with a computer using a mouse and a keyboard. [00:01:19] Speaker 00: That was conventional at that time. [00:01:22] Speaker 00: Under the claims, the way you interact with the computer is having an optical scanner, typically a camera, [00:01:29] Speaker 00: For example, recognize your face. [00:01:31] Speaker 05: So an example would be... But weren't those things known in 1996? [00:01:36] Speaker 05: What about putting them together in this system is new? [00:01:40] Speaker 00: Individually they were all known. [00:01:42] Speaker 00: There is not a dispute about that. [00:01:44] Speaker 00: Individually cameras were known. [00:01:46] Speaker 00: Individually microphones were known. [00:01:48] Speaker 02: But how does putting them together improve the computer technology? [00:01:51] Speaker 02: I'm really not seeing this new argument. [00:01:53] Speaker 00: Because what had not happened in computers before [00:01:57] Speaker 00: was, for example, logging into a computer. [00:01:59] Speaker 00: Logging into a computer, typically in 96, you would enter a username and a password. [00:02:03] Speaker 00: Logging into a computer using this, you can just show your face. [00:02:06] Speaker 00: The computer recognizes your face and logs you in. [00:02:09] Speaker 02: But that's not what this claims. [00:02:11] Speaker 02: This claim doesn't cover that. [00:02:12] Speaker 02: This claim covers the use of an optical... It doesn't cover... It says nothing about logging in anywhere in the claim. [00:02:17] Speaker 00: No. [00:02:18] Speaker 00: It doesn't need to. [00:02:18] Speaker 00: What it's claiming is the components of the computer that permit that. [00:02:23] Speaker 00: That's how you control the computer. [00:02:25] Speaker 02: I think one of those components had existed previously. [00:02:29] Speaker 02: I don't see how this improves the computer's functionality. [00:02:34] Speaker 00: Individually, they were not. [00:02:36] Speaker 00: Under Baskin, that is not enough. [00:02:38] Speaker 00: Baskin makes quite clear. [00:02:40] Speaker 02: But the combination that you allege is novel involves the imaging sensor, the analyzing, and the determining. [00:02:50] Speaker 02: I don't see any combination in your hardware [00:02:53] Speaker 02: which is novel. [00:02:55] Speaker 02: So it's certainly not analyzing the first set of measurements that improves computer technology, right? [00:03:01] Speaker 02: That's not improving computer technology. [00:03:03] Speaker 00: I disagree. [00:03:04] Speaker 00: What this claim is saying is you have an optical scanner like a camera, and you take measurements from that and use it to control what is displayed. [00:03:14] Speaker 00: And you also have some of the claims. [00:03:16] Speaker 00: The claims are all different in terms of the number of types of scanners and what they're detecting. [00:03:21] Speaker 00: One of the, let's take claim one for example, 320, you have an optical scanner, a camera, and that camera is being used to control and what that camera detects and how that detects and what it detects and how it's being analyzed is used to control the computer. [00:03:38] Speaker 03: But the claim doesn't tell us what analysis is going on or how the inputs from the different sensors may result in some sort of a change. [00:03:51] Speaker 00: The claim doesn't recite, that's true your honor, the claim does not recite a specific form of analysis and a specific result to occur from that. [00:04:00] Speaker 00: Respectfully, I don't think it needs to. [00:04:02] Speaker 00: That's the flexibility of any computer software system. [00:04:05] Speaker 00: But an example is you're detecting the head and particularly facial orientations and in particular maybe the eyes. [00:04:12] Speaker 00: There's various examples shown in various of the claims and specification about that. [00:04:17] Speaker 00: And it's very clear [00:04:19] Speaker 00: that what you're using, what you're detecting, and then how you analyze that is used to control the computer. [00:04:25] Speaker 03: But there's nothing in the claim that specifies or recites an analytical process that might be unique. [00:04:36] Speaker 00: I believe that's true. [00:04:38] Speaker 00: The claim is saying you're using the output of that to control the computer. [00:04:42] Speaker 00: It doesn't recite the particular analytic process. [00:04:45] Speaker 03: And isn't that what? [00:04:46] Speaker 03: Computers conventionally do. [00:04:49] Speaker 00: Computers conventionally do that. [00:04:50] Speaker 00: As I say, there's not a dispute that cameras were known or that even facial recognition was known. [00:04:56] Speaker 00: What is disputed is whether it was conventional to combine, for example, two sensors to decide what that computer was going to show you. [00:05:07] Speaker 00: As you recall, there was an IPR proceeding where that was the issue. [00:05:11] Speaker 00: Microsoft presented its best prior art. [00:05:14] Speaker 00: The IPR proceeding [00:05:16] Speaker 00: determined that not only did the prior art not anticipate, it didn't render obvious. [00:05:20] Speaker 00: And those are lower tests than conventionality. [00:05:23] Speaker 00: The test for 101 is not just that it might be obvious or anticipated from a scrap of paper sitting in an archive somewhere or a patent. [00:05:32] Speaker 00: It has to be conventional technology. [00:05:34] Speaker 00: And the conventional technology is not the individual components. [00:05:37] Speaker 02: So what you're asking us to do in terms of this legal test [00:05:42] Speaker 02: I don't even understand your distinction with conventionality or how it jives with what the Supreme Court's done, but let's put that aside for now. [00:05:49] Speaker 02: What you're asking us to do is to reach the legal conclusion that any time 102 or 103 has been rejected, whether it be by the patent office or by a jury, that there cannot stand a 101 rejection. [00:06:03] Speaker 00: I'm not asking that. [00:06:04] Speaker 00: I think in most cases that would be true. [00:06:05] Speaker 00: What I'm saying is that the legal test under 101 is a higher burden than 102 or 103. [00:06:12] Speaker 00: It's conventional, generic. [00:06:14] Speaker 00: And more importantly, it's not just the individual components, it's the combination. [00:06:19] Speaker 00: And third, and... For obviousness and anticipation, it's always the combination. [00:06:23] Speaker 02: It's not just the individual components. [00:06:25] Speaker 02: There is nothing... For obviousness, sure. [00:06:27] Speaker 00: Not anticipation, but yes. [00:06:29] Speaker 02: No, for anticipation, every single one of the components together as combined have to be present in the prior art. [00:06:36] Speaker 02: True. [00:06:36] Speaker 02: I don't see a difference. [00:06:39] Speaker 02: And where do you get this idea that conventionality under the Supreme Court precedent? [00:06:44] Speaker 02: I want you to show me something in the Supreme Court precedent that would justify the distinction you're drawing. [00:06:52] Speaker 02: You've got to give me a cite from Bilsky or Prometheus or something. [00:06:56] Speaker 02: A cite, because they talk about novelty. [00:06:58] Speaker 02: They don't talk about this conventionality the way you are. [00:07:02] Speaker 02: So I need to see something in the Supreme Court [00:07:06] Speaker 02: jurisprudence that justifies this very novel distinction that you're drawing between conventionality on the one hand and novelty or non-obviousness on the other. [00:07:17] Speaker 00: So Mayo at 1292 says simply appending conventional steps to the abstract idea is not enough. [00:07:26] Speaker 00: So that's a 1292 of Mayo. [00:07:28] Speaker 00: This court's decision in Bascom is quite clear about the distinction that I'm making, that you can have anticipation by [00:07:34] Speaker 00: a single patent that was never built and never done anything about that was published 20 years ago that no one's ever used. [00:07:41] Speaker 00: I don't think it's a stretch to say that that's not conventional. [00:07:45] Speaker 00: It may be anticipated, but it's not conventional. [00:07:48] Speaker 00: And certainly if something's not obvious from what's present in the prior art individually, it's not conventional. [00:07:55] Speaker 00: The whole point of this 101 is it's not to duplicate 102 and 103, but to be a higher bar [00:08:02] Speaker 00: for the second step of mail. [00:08:04] Speaker 00: And what we're talking about now is the second step of mail, not step one. [00:08:08] Speaker 00: So I think that answers your question about Supreme Court precedent and certainly about this court's precedent. [00:08:14] Speaker 02: I guess it gives the best answer you can give me. [00:08:16] Speaker 05: In BASCOM, there was actually a description of how the operation of the computer was improved. [00:08:28] Speaker 05: And I guess what I'm not understanding is, I get your argument if the claims were different than they are. [00:08:35] Speaker 05: And so that's part of my problem, is that the claim doesn't say, OK, here's the special algorithm that's going to allow this to operate together, or here's the special programming that we're going to use to allow this to operate together. [00:08:47] Speaker 05: It's just all you claim is doing this and doing this, and poof, it's going to work. [00:08:55] Speaker 05: I guess I'm missing what [00:08:57] Speaker 05: It's in the claim. [00:08:58] Speaker 00: I see your honest point. [00:08:59] Speaker 00: And I think that goes... The first question, whether that needs to be in the claim or the specification, I don't think the special algorithm or the special combination needs to be in the claim. [00:09:10] Speaker 00: Many, many computer claims don't claim that. [00:09:14] Speaker 00: That comes down then to a question of enablement. [00:09:17] Speaker 00: And enablement, with respect, is a separate question from 101, first. [00:09:22] Speaker 00: But also, second, enablement here is quite much simpler because [00:09:26] Speaker 00: We are dealing with topics that were known individually. [00:09:31] Speaker 00: It was known how to do facial recognition. [00:09:33] Speaker 00: So you don't need an extensive disclosure in the specification to teach those skilled in the art how to do facial recognition. [00:09:39] Speaker 00: You don't need extensive disclosure in the art to teach someone how to sense a gesture in a field of view of a camera. [00:09:47] Speaker 00: That's not needed for anticipation, for rather enablement. [00:09:50] Speaker 00: And the claim, very few computer claims, particularly software claims, [00:09:57] Speaker 00: claim explicitly every variation of how that software might work. [00:10:03] Speaker 03: But we're in the specification. [00:10:05] Speaker 03: Is there any discussion of the algorithms that might make this operate the way you say it operates? [00:10:14] Speaker 00: It's at a general and high level for certain. [00:10:17] Speaker 00: We don't dispute that. [00:10:17] Speaker 00: But that, again, A, goes to enablement. [00:10:20] Speaker 00: And that's not the issue here. [00:10:22] Speaker 00: But B, for the reasons I just discussed with Judge O'Malley, [00:10:26] Speaker 00: The level of disclosure that you need is proportionate in some degree to how well known that is in the art. [00:10:34] Speaker 00: And if it's well known how to do facial recognition, for example, you don't need to say, here's how you do facial recognition. [00:10:40] Speaker 03: Now you're talking about the individual components. [00:10:42] Speaker 03: I am. [00:10:42] Speaker 03: And I agree with you. [00:10:43] Speaker 03: All the components are well known, and it's well known how they operate. [00:10:48] Speaker 03: But you're putting a lot of weight on the combination. [00:10:53] Speaker 00: I am, Your Honor. [00:10:53] Speaker 03: And emphasizing the fact that [00:10:56] Speaker 03: From your point of view, the district court didn't appreciate that there is a combination here. [00:11:01] Speaker 03: I think it's plain. [00:11:02] Speaker 03: That's true. [00:11:02] Speaker 03: An ordered combination that provides a new and useful result. [00:11:06] Speaker 03: Exactly. [00:11:07] Speaker 00: Just exactly what Mayo requires and what Bascom requires. [00:11:11] Speaker 03: And I agree. [00:11:11] Speaker 03: But the question is, where in the claim is that ordered combination? [00:11:19] Speaker 03: Well, the claim is clear. [00:11:23] Speaker 03: noted that the claim itself does not need to be specific. [00:11:27] Speaker 03: It can be broad. [00:11:28] Speaker 03: I agree with you on that. [00:11:29] Speaker 03: But you've got to find some hook, some place in the specification or in the claim that describes this ordered combination that makes this an inventive concept. [00:11:42] Speaker 00: The claim makes clear that what is happening is you're having, for example, in 320, claim one. [00:11:49] Speaker 00: two sensors, two inputs, and that the output of both of those is used to control the computer. [00:11:55] Speaker 03: So that in and of itself is enough? [00:11:58] Speaker 00: That is enough, because that is what, that's for example what the PTAB has been relying upon to reject obviousness and anticipation in the IPRs. [00:12:06] Speaker 00: That combination, it teaches quite clearly, there's the combination of the two results that you use to control the computer. [00:12:14] Speaker 00: So then your honor's question is, is the specification sufficiently detailed [00:12:19] Speaker 00: about how that combination is achieved, that with respect is an enablement question, highly factual question, on which there is extensive evidence in the record below on that issue, because that enablement was a defense, and experts have opined on that question. [00:12:37] Speaker 00: But that is an enablement question. [00:12:41] Speaker 00: That is not a question of whether the claim claims an ordered combination of the two inputs to control the computer, which it does. [00:12:47] Speaker 03: Let's assume there is enablement. [00:12:50] Speaker 03: Is just the fact that there are two sensors combined together enough? [00:12:57] Speaker 00: It's certainly enough to make it non-conventional, which is what's required for step two. [00:13:01] Speaker 00: There is no evidence, and it is Microsoft's burden. [00:13:03] Speaker 00: Let's be clear about that. [00:13:04] Speaker 00: Whether it's clear convincing evidence under Accenture or not, and I acknowledge that's an open question. [00:13:11] Speaker 00: It is Microsoft's burden to show that it was, quote, conventional, close quote. [00:13:16] Speaker 00: It has not met that burden. [00:13:17] Speaker 00: There is zero evidence in the record on that question from Microsoft. [00:13:21] Speaker 02: Your volunteer rebuttal time. [00:13:22] Speaker 02: Would you like to save the remainder? [00:13:24] Speaker 00: I would. [00:13:24] Speaker 00: Thank you, Your Honor. [00:13:26] Speaker 02: Mr. Lamberson. [00:13:48] Speaker 01: Good morning. [00:13:50] Speaker 01: The combination that IP Learn just referred to is part of the abstract idea. [00:13:55] Speaker 01: Alice step two says that you have to add something substantially more to the abstract idea. [00:14:01] Speaker 01: We can't rely on the abstract idea. [00:14:03] Speaker 02: What precisely do you think the abstract idea is? [00:14:05] Speaker 02: Because the lower court decision said it's teaching. [00:14:08] Speaker 02: I don't think the abstract idea is teaching. [00:14:10] Speaker 02: And I didn't read your brief as fully embracing the idea it was teaching. [00:14:14] Speaker 02: Is that right? [00:14:15] Speaker 02: I mean, what would you please [00:14:16] Speaker 02: articulate for me the abstract idea? [00:14:19] Speaker 01: Right. [00:14:20] Speaker 01: We've articulated as observing the user, analyzing what they're doing, and then reacting to it. [00:14:27] Speaker 01: And the district court similarly, he did use the word teaching, but he went on, and I believe A8 and A8 through A10, he talks about the idea of monitored interaction. [00:14:40] Speaker 01: He's not talking about teaching in the sense of [00:14:43] Speaker 01: taking a test or going out to recess. [00:14:45] Speaker 01: He's talking about this idea of monitoring the students and reacting to what they're doing. [00:14:51] Speaker 05: Even if there is some kind of an abstraction that you can pull out, what we're talking about here is a use of a computer and by putting two different sensory mechanisms together. [00:15:07] Speaker 05: So couldn't the idea be [00:15:10] Speaker 05: using two separate methods through a computer system to then measure the reactions of the user? [00:15:22] Speaker 01: So to be clear, I think some claims have one sensor and some have two. [00:15:28] Speaker 01: But the claims that have two sensors, whether a teacher is looking at your, whether the students are looking away or whether their eyes are closed or whether they're speaking, [00:15:39] Speaker 01: That is the abstract idea. [00:15:40] Speaker 01: A good teacher can look at one thing, just their head, or two things, whether they're passing a note with their hands. [00:15:50] Speaker 01: So it is the abstract idea. [00:15:51] Speaker 01: Whether it's one sensor or two, they are only using those sensors to sense, which is what sensors do. [00:15:57] Speaker 01: They're saying, in some claims, I want to look at their head. [00:16:00] Speaker 01: In other claims, I want to look at their eyes. [00:16:01] Speaker 01: In other claims, I want to look at their head and their eyes, or their head and their hands, or their head and their voice. [00:16:07] Speaker 01: But in no claim are they using those sensors to do anything other than that abstract idea. [00:16:13] Speaker 05: But at what point do we have an issue with respect to what constitutes just conventional computer systems, or a generic computer system, and move into a system where we are talking about a far more sophisticated combination of elements? [00:16:36] Speaker 01: If you're combining elements to do something other than the abstract idea, so Bascom is a good example of that. [00:16:44] Speaker 01: The abstract idea, I believe, was the idea of filtering content. [00:16:49] Speaker 01: That abstract idea doesn't require that you do that filtering at any one location. [00:16:54] Speaker 01: When we're talking about the idea of a teacher or anybody else for that matter watching an audience, seeing what they're doing and reacting to it, that does involve looking at [00:17:04] Speaker 01: multiple inputs from eyes, ears, and any other sense. [00:17:08] Speaker 01: So there is a distinction there, I think, between the type of case like Bascom and the facts here. [00:17:15] Speaker 03: Well, maybe there's some teachings that could be derived from that in the sense of 103. [00:17:20] Speaker 03: But in terms of 101, what's conventional about hooking up two sensors to a processor to provide a display? [00:17:32] Speaker 03: Right. [00:17:33] Speaker 01: And so what the patent tells us is that the patent tells us that using any of these sensors, just a sense, is something that is well-known in the art. [00:17:47] Speaker 03: But my question is, what's conventional about using two of them? [00:17:53] Speaker 03: It could be conventional to use one at a time, but that's certainly true. [00:18:00] Speaker 03: But what's conventional about using two [00:18:02] Speaker 03: And the claim does require both inputs to provide an effect on the display. [00:18:10] Speaker 01: Some claims do, that's right. [00:18:11] Speaker 01: And I don't think we're saying that. [00:18:12] Speaker 01: So I don't believe there's evidence in the record that says that two sensors together is conventional in that sense. [00:18:22] Speaker 01: But if we go back to Alice's system claims, for example, they talked about also [00:18:29] Speaker 01: analyzing two pieces of data together. [00:18:32] Speaker 01: You had two accounts with two separate pieces of data. [00:18:35] Speaker 02: So if all you're using is... No, but computers routinely analyze two pieces of data. [00:18:40] Speaker 02: I mean, that happens all the time. [00:18:42] Speaker 02: But what Judge Lynn is saying is why would you take two pieces of hardware that are duplicative, two sensors, and put them together? [00:18:50] Speaker 02: Where is there any evidence that this combination was conventional? [00:18:57] Speaker 01: And actually, I think I misspoke earlier. [00:18:58] Speaker 01: So here's the answer. [00:19:01] Speaker 01: The only claim with two sensors is the one with a non-optical sensor. [00:19:04] Speaker 01: The non-optical sensor is a mouse. [00:19:06] Speaker 01: That's all it is. [00:19:08] Speaker 01: And we know from several cases that simply saying having a computer with a mouse is not adding an inventive concept. [00:19:16] Speaker 01: All of the other claims, I believe, and we can walk through them, have the optical sensor. [00:19:20] Speaker 01: Now, the optical sensor may sense multiple things, but it's only doing what an optical sensor does, sensing. [00:19:26] Speaker 01: whether it's the head or the hands, whatever you point it at doesn't make it patentable. [00:19:30] Speaker 01: And then the processor simply analyzes whatever was sensed. [00:19:35] Speaker 02: But what if the result of putting this equipment together and have it executing the steps that are sort of what is, I mean, I realize it's not a method claim, it's an apparatus claim, but the steps as articulated in the specification, [00:19:55] Speaker 02: If that's all new and different, why isn't that patent eligible? [00:20:02] Speaker 02: What if this was a method claim instead of an apparatus claim? [00:20:06] Speaker 02: And the method was using sensors to sense, this is the claim. [00:20:13] Speaker 02: This is the claim. [00:20:13] Speaker 02: Because this is what's disclosed in this back. [00:20:15] Speaker 02: This is the invention. [00:20:17] Speaker 02: So imagine that this is the claim, a method claim of, [00:20:23] Speaker 02: taking a picture and measuring the distance between your eyes and your nose, two different points of reference, so that I can tell how close you are to the screen for dimensional purposes. [00:20:35] Speaker 02: I can see your eyes and I know you're looking at me. [00:20:39] Speaker 02: Like it says in the spec at some place, flash look at me on the screen, right? [00:20:45] Speaker 02: Isn't that somewhere in there? [00:20:47] Speaker 02: And then they say, you know, it takes a picture of your face and it measures the distance between your eyes. [00:20:52] Speaker 02: and say the distance between your eyes and your mouth. [00:20:54] Speaker 02: And that second measurement will be for depth perception, right? [00:20:58] Speaker 02: So the dimensions, if they change, you'll know. [00:21:00] Speaker 02: And then it says periodically when this person is supposed to be working, because I've got four little kids. [00:21:06] Speaker 02: And sometimes I tell them to do Khan Academy. [00:21:08] Speaker 02: And I'm not positive they're sitting there for all 30 minutes and actually paying attention to the computer doing Khan Academy. [00:21:14] Speaker 02: So I actually thought this sounded like a pretty nifty invention to me. [00:21:17] Speaker 02: because it allows me to supervise whether they're really paying attention and looking at the screen. [00:21:21] Speaker 02: Because every two or five minutes, it says some predetermined interval, it'll take another snapshot of you. [00:21:27] Speaker 02: And you know what? [00:21:28] Speaker 02: If you're looking over here and not looking at the screen, it's looking to measure the distance between your eyes. [00:21:32] Speaker 02: The distance between your eyes is different. [00:21:34] Speaker 02: And it then interprets from that that you're not looking at the computer. [00:21:40] Speaker 02: That does not sound like just conventional computer pieces all strung together. [00:21:44] Speaker 02: That sounds like a really nifty invention to me. [00:21:47] Speaker 02: So why is that not patent eligible? [00:21:52] Speaker 01: I think what you just described would be, but that's not the claims here. [00:21:55] Speaker 01: It's not the claim. [00:21:56] Speaker 01: The claims here use broadly. [00:21:57] Speaker 02: But you do agree that that is the invention disclosed in the spec. [00:22:02] Speaker 02: I think I agree with you. [00:22:03] Speaker 02: It's not in the claims, by the way. [00:22:05] Speaker 02: Or the claims are something much broader and more abstract than that. [00:22:09] Speaker 02: But I guess part of what I sat around with my clerks doing the last couple days is drafting claims, because I see an invention in this spec. [00:22:17] Speaker 02: And so we sat around drafting claims to say what number of patent eligible claims could be drafted based on the invention and the spec. [00:22:25] Speaker 02: And then we also, of course, focused on these claims. [00:22:28] Speaker 03: Certainly. [00:22:29] Speaker 02: So are you sort of agreeing with me that what I just described to you, a method claim, because my clerks and I drafted one that looked like that, would have been patent eligible? [00:22:40] Speaker 01: I think whether it's method or system is irrelevant. [00:22:42] Speaker 01: In the field of facial recognition, that field is ripe even today for all sorts of innovation. [00:22:50] Speaker 01: If they came up with a new way to sense, as you said, how are you looking this direction or that direction, or where are your eyes, or where is a face? [00:22:59] Speaker 01: The specification only cites a paper from 1977. [00:23:03] Speaker 01: Between the 70s and the 90s, there were substantial advances. [00:23:07] Speaker 01: between the 90s and today, there have been substantial advances. [00:23:09] Speaker 01: So there are areas in there where they could have come up with a new. [00:23:13] Speaker 02: But not just the facial recognition, because computers could do facial recognition, but the idea of monitoring whether someone is paying attention to the computer screen. [00:23:22] Speaker 02: What about all these board judges that are working from home, or those paralegals at the PTO? [00:23:27] Speaker 02: It would be great to have this software to track them. [00:23:30] Speaker 02: Then we'd know for sure if they're doing their laundry versus doing their work. [00:23:34] Speaker 02: Because we could periodically check them. [00:23:37] Speaker 02: I'm joking, obviously. [00:23:40] Speaker 01: Whether they would say it's great, I can't answer. [00:23:41] Speaker 01: But I can say, I think you're absolutely right that it really does come down to what did IP Learn claim here? [00:23:47] Speaker 01: And they chose to write these broadly functional claims. [00:23:50] Speaker 05: But isn't the breadth of the claims, maybe that's a problem when it comes to enablement, or it's a problem when it comes to obviousness. [00:24:01] Speaker 05: But why does that matter with respect to 101? [00:24:06] Speaker 01: It matters with respect to 101 because we have to ask for step two, what did they add that is substantially more than just the abstract idea of watching somebody seeing what they're doing and reacting to it? [00:24:18] Speaker 05: Well, they've claimed a processor that allows the computer to react to it. [00:24:24] Speaker 01: Sure, but you could say similarly, Alice claimed a processor that allowed a computer to perform intermediate settlement or Milski [00:24:32] Speaker 02: And those are all business methods. [00:24:34] Speaker 02: And look, the Supreme Court's been really clear with these business methods. [00:24:37] Speaker 02: That doesn't mean that every piece of software falls into that hole. [00:24:42] Speaker 01: Well, another example would be content extraction. [00:24:45] Speaker 01: There you had a scanner. [00:24:46] Speaker 01: And you could say, well, they had a scanner looking at the checks. [00:24:49] Speaker 03: But there was just a scanner doing what scanners do. [00:24:52] Speaker 03: Right. [00:24:53] Speaker 03: There was no ordered combination of multiple sensors feeding inputs to a processor. [00:25:00] Speaker 01: Right. [00:25:01] Speaker 01: And again, here, the only... Is that a distinction? [00:25:04] Speaker 01: Potentially. [00:25:05] Speaker 01: Though I think if the claimant said two scanners, I don't know that the outcome would necessarily change. [00:25:10] Speaker 02: Though, remember... So in here, there's no two sensor claim. [00:25:13] Speaker 02: The only other sensor is a mouse. [00:25:15] Speaker 01: That is my guess. [00:25:16] Speaker 01: Just to make sure... To be clear, it's a non-optical sensor. [00:25:19] Speaker 01: It could be a mouse. [00:25:20] Speaker 01: It could be a keyboard. [00:25:21] Speaker 01: It could be a microphone. [00:25:22] Speaker 01: The mouse is a sensor, is it? [00:25:23] Speaker 01: Is it not? [00:25:24] Speaker 01: It can be. [00:25:25] Speaker 01: Yes. [00:25:25] Speaker 01: And in fact, the only non-optical sensor in the specification is a mouse and keyboard. [00:25:29] Speaker 01: There is no microphone recited in that. [00:25:31] Speaker 03: Mr. Lambert, let me approach this from a slightly different angle and ask you this. [00:25:39] Speaker 03: Since Judge Moore drafted a hypothetical claim, let me take a shot at it. [00:25:42] Speaker 03: Sure. [00:25:45] Speaker 03: Consider just a simple, straightforward claim that says a computer system comprising a display, a camera, a mouse, [00:25:56] Speaker 03: and a processor connected between the camera and mouse and the display. [00:26:01] Speaker 03: Period. [00:26:03] Speaker 03: That's all I said. [00:26:05] Speaker 03: Is there any question in your mind that that's patent eligible? [00:26:13] Speaker 01: You don't have them doing anything. [00:26:14] Speaker 01: It would be hard to find an abstract idea there. [00:26:16] Speaker 01: I mean, I think you recited all computer hardware. [00:26:20] Speaker 01: I would really struggle. [00:26:21] Speaker 01: I think that would be it. [00:26:22] Speaker 03: So why is it that? [00:26:24] Speaker 03: just adding some language describing functionality somehow removes it from patent eligibility. [00:26:33] Speaker 03: Right. [00:26:34] Speaker 03: Because that functionality is the abstract idea. [00:26:38] Speaker 03: Wait a second. [00:26:39] Speaker 03: The claim didn't drop out any of the structure. [00:26:45] Speaker 01: Yes, but all the structure, a display, a camera, a mouse is connected in a certain way. [00:26:52] Speaker 01: The claim, I don't believe, has the hardware connected in any certain way. [00:26:56] Speaker 01: All it says is that they're connected. [00:26:57] Speaker 01: Or it doesn't even say connected, but we assume that since the processor is analyzing what the sensor senses, presumably it is connected. [00:27:05] Speaker 01: But whether the claim recited, for example, a display, a sensor, and a processor, or a display, a processor, and a sensor, or a sensor, a processor, a display, there's nothing magical to that ordered combination. [00:27:18] Speaker 03: Well, you know, that claim may not survive a 102, 103 challenge. [00:27:23] Speaker 03: But I'm just talking about 101 patent eligibility, because it seems to me that claims are written like that all the time, a table consisting of four legs screwed to a top. [00:27:37] Speaker 03: And there's no discussion of functionality, what could be on the table, how tall the table is, whether it will fall over or not. [00:27:47] Speaker 03: What I'm trying to get at here is why is it that when you claim certain structural combinations of components that otherwise would be considered certainly clearly patent eligible, that they magically become patent ineligible? [00:28:08] Speaker 03: Not 102, not 103, because they now describe what they can do. [00:28:16] Speaker 01: If the elements are conventional, and if what they can do is the abstract idea, then Alice answers the question. [00:28:25] Speaker 01: If you're trying to claim just hardware and not have it. [00:28:28] Speaker 03: It seems to me adding the functionality, if anything, makes the claim narrower. [00:28:34] Speaker 03: It certainly makes it narrower. [00:28:36] Speaker 03: That's right. [00:28:36] Speaker 03: But if it's not like it all of a sudden loses its structural character, [00:28:43] Speaker 03: Or, in my opinion, it's patent eligibility character simply because you've now talked about certain things you might be able to do with that structural combination. [00:28:55] Speaker 01: And I think my time has expired. [00:28:57] Speaker 01: Would you? [00:28:57] Speaker 01: Yeah, please. [00:28:57] Speaker 01: Please answer. [00:28:59] Speaker 01: Again, if all you had was hardware, I would agree with you. [00:29:03] Speaker 01: But when you have conventional hardware performing an abstract idea, and you're not adding substantially more to that abstract idea, [00:29:11] Speaker 01: That is not patentable, and that is the distinction on the one hand between... Let me continue with the hypothetical. [00:29:19] Speaker 05: What if you had, for instance, a computerized drone for delivering packages? [00:29:26] Speaker 05: Is the fact that it delivers packages, which is an abstract idea, somehow, would that render it ineligible? [00:29:35] Speaker 01: I don't believe. [00:29:36] Speaker 01: If you have the claim that's on the drone itself, you have a new drone, and it's not... [00:29:42] Speaker 01: I think that you could find patent-eligible inventions there, certainly. [00:29:45] Speaker 05: So enabled or not, couldn't you say that these claims are to a processor that does the facial recognition, not just recognition, but the sensing of the human behavior that was not conventional before? [00:30:05] Speaker 01: The claims here, though, don't say that the processor does anything. [00:30:09] Speaker 01: All they say is that it analyzes. [00:30:11] Speaker 01: That's the extent to which what the processor does. [00:30:13] Speaker 01: The sensor senses things. [00:30:15] Speaker 01: That's what those claims say. [00:30:17] Speaker 01: But all of that functionality is just the abstract idea. [00:30:20] Speaker 01: It's what a good teacher knows. [00:30:23] Speaker 01: I want to look at their head. [00:30:24] Speaker 01: I want to look at their hands. [00:30:25] Speaker 01: I want to listen to see if they're talking when they shouldn't be. [00:30:29] Speaker 01: So this idea of having multiple inputs [00:30:32] Speaker 01: It is exactly what teachers have been doing for at least centuries. [00:30:36] Speaker 01: And that is the abstract idea. [00:30:37] Speaker 01: And saying, I'm going to do that with a processor is not patent-eligible. [00:30:45] Speaker 02: Thank you. [00:30:46] Speaker 02: Thank you. [00:30:49] Speaker 02: We'll add two minutes of rebuttal time to the time that he has left. [00:30:53] Speaker 02: Two minutes. [00:30:54] Speaker 02: Add two minutes to what he has left, because he went. [00:30:57] Speaker 02: We let him go over. [00:30:58] Speaker 02: Keep the time balance. [00:31:01] Speaker 00: Thank you, Your Honor. [00:31:02] Speaker 00: I'd like to begin with the drone example, if I may, because I think that's a perfect way of thinking about this problem. [00:31:09] Speaker 00: And the answer that you received from Mr. Lamberson, I thought, was instructive. [00:31:15] Speaker 00: If it's a new drone, it's eligible even if it's delivering a package which is an old abstract idea. [00:31:21] Speaker 00: Putting aside abstract idea for a minute, because I don't agree there. [00:31:24] Speaker 00: I'm going to go there. [00:31:26] Speaker 00: Here, it's a new computer system. [00:31:27] Speaker 00: The claim is not to a method of teaching, [00:31:30] Speaker 00: It's to a computer system which is alleged to be new, as to which there's no evidence it's not new. [00:31:35] Speaker 00: And the computer system has different inputs and different portions of hardware attached to it. [00:31:41] Speaker 00: And that is the claim. [00:31:42] Speaker 05: What's your response to your friend's argument that the processor really isn't, that you don't claim the processor is really doing anything? [00:31:52] Speaker 00: In the claim, the processor is analyzing the results of the outputs of the sensor. [00:31:58] Speaker 00: and using the results of that to control the computer. [00:32:01] Speaker 00: That's in the claim. [00:32:02] Speaker 05: That's in claim one of the 3-2-0. [00:32:05] Speaker 05: Is that in the other claims as well? [00:32:08] Speaker 00: It is in some form of that. [00:32:10] Speaker 00: I believe every claim. [00:32:12] Speaker 00: There are different inputs that are coming, but the whole point is it's using the combination of that to control the computer. [00:32:17] Speaker 00: And what I thought was important was that council admitted that if there's a new drone, and this is a claim to not a teaching method, but to a new computer system, [00:32:28] Speaker 00: as to which there is no evidence that it is not, in fact, new. [00:32:33] Speaker 00: Of course, we concede that the individual constituent elements of it were known, but that's true of most claims. [00:32:41] Speaker 03: Mr. Lamerson responded to my hypothetical by saying that he thought the hypothetical just reciting the system, the display, the sensors, the processor, that that probably would be patent eligible. [00:32:54] Speaker 03: But once you add the functionality, then [00:32:58] Speaker 03: it becomes disqualified. [00:33:00] Speaker 03: What's your response to that? [00:33:03] Speaker 00: I think that there's two zones on that question. [00:33:07] Speaker 00: If the claim said you have a purely conventional computer system and what you're doing is doing hedging on that computer. [00:33:17] Speaker 00: Undeniably an abstract idea, been around for a long time. [00:33:20] Speaker 00: I think the Supreme Court cases would say that that's not patent eligible. [00:33:25] Speaker 00: But what we have here [00:33:27] Speaker 00: is A, a non-conventional combination of a new computer system, but that's step two. [00:33:31] Speaker 00: Go to step one. [00:33:33] Speaker 00: What it's saying that you do is not observe, analyze, react. [00:33:39] Speaker 00: It says you have an optical sensor which measures in, for example, claim one, the head. [00:33:46] Speaker 00: Well, the head is not an abstract idea. [00:33:50] Speaker 00: Measuring the head is not something that's [00:33:53] Speaker 00: that you can raise to a level of abstraction that says, that's just like being a teacher in ancient Greece. [00:34:00] Speaker 00: It is a sensor that measures the head. [00:34:02] Speaker 00: That's very specific. [00:34:04] Speaker 00: And I thought the council's argument with regard to Bascom was interesting because he focused on Bascom's discussion of the location of filtering. [00:34:12] Speaker 00: Well, measuring the head is not a given, just as the locations of filtering in Bascom was not a given. [00:34:22] Speaker 00: Measuring a hand. [00:34:24] Speaker 00: Having a non-optical sensor, such as a microphone, is not a given. [00:34:28] Speaker 00: Those are specific elements that are doing specific things. [00:34:33] Speaker 00: And whether you call that preemption or whether you call that non-abstraction, however you analyze step one, that is not an abstract process. [00:34:43] Speaker 00: And the analysis of the district court and Microsoft's position here is exactly what the district court did wrong in Enfish. [00:34:52] Speaker 00: which is essentially raising up the level of abstraction to the point where it was not recognizable to the claims. [00:34:59] Speaker 00: The claims have very specific limitations that are designed not to make it abstract. [00:35:05] Speaker 00: It's concrete. [00:35:06] Speaker 05: It's a particular... Let's look at, say, Ultramershal. [00:35:10] Speaker 05: Yes. [00:35:12] Speaker 05: Where, obviously, I was on the side that kept thinking it was patent eligible for a long time until the Supreme Court finally forced us out of that thought process. [00:35:20] Speaker 05: So there, there were a lot of things that the computer was doing, and it seemed to take it away from a generic computer. [00:35:29] Speaker 05: And I guess I'm going back to the question I asked before. [00:35:32] Speaker 05: Where do we pass the line between a generic computer and using a generic computer to do something that a human could do versus claiming steps that a computer is doing? [00:35:49] Speaker 00: Understood. [00:35:50] Speaker 00: The answer to that is the contrast between contract extraction and BASCM. [00:35:56] Speaker 00: So contract extraction was simply taking a scanner as scanners were doing and having a scanner does what a scanner does. [00:36:03] Speaker 00: That's it. [00:36:04] Speaker 00: BASCM says, well, each of these individual elements were known and they're doing what they were known to be doing in the past. [00:36:11] Speaker 00: But combined, that's not conventional. [00:36:15] Speaker 00: TLI, another good example. [00:36:17] Speaker 00: There it was just do it on a telephone network. [00:36:20] Speaker 00: The network wasn't changed. [00:36:21] Speaker 00: It was the old telephone network. [00:36:23] Speaker 00: It had a bunch of elements that were known. [00:36:25] Speaker 00: But that combination was old. [00:36:28] Speaker 00: That's not true here. [00:36:29] Speaker 02: I have a question. [00:36:30] Speaker 02: I'm a little confused by something. [00:36:32] Speaker 02: A few minutes ago, I thought I heard you say that each of the individual elements, there are only three elements in claim one of the 320. [00:36:40] Speaker 02: A display, a sensor, and a processor. [00:36:43] Speaker 02: That's it. [00:36:44] Speaker 02: There's no other elements. [00:36:45] Speaker 02: Those are the only pieces of hardware, correct? [00:36:47] Speaker 00: 320? [00:36:47] Speaker 00: There's two sensors. [00:36:49] Speaker 02: No, not in claim one, there's not. [00:36:51] Speaker 02: Where's the second sensor? [00:36:54] Speaker 02: There's two measurements, but there's not two sensors, not in claim one. [00:36:57] Speaker 00: Oh, claim one of 320. [00:36:59] Speaker 00: Yes, well, there's different variations of claims. [00:37:00] Speaker 00: Some have two sensors. [00:37:01] Speaker 02: Not claim one of the 320 patent. [00:37:03] Speaker 02: OK. [00:37:04] Speaker 00: Right? [00:37:05] Speaker 00: Yes. [00:37:05] Speaker 00: And it's using one sensor to do two sets of measurements. [00:37:08] Speaker 02: The only three pieces of hardware are a single sensor, a display, and a processor. [00:37:12] Speaker 02: And in your patent, you disclosed the optical sensor as being [00:37:16] Speaker 02: standard digital camera 180 that's the number so are you telling me that because you a minute ago I heard you say that while each of these individual elements might be conventional the combination is not are you telling me the combination of a digital camera made to be attached to a computer a display and a processor is not conventional [00:37:39] Speaker 02: that that combination of just those three elements standing alone, it's only three pieces of hardware in claim one. [00:37:45] Speaker 00: That's true. [00:37:46] Speaker 00: And what the first one is doing is two different things. [00:37:48] Speaker 00: That's what I said earlier. [00:37:49] Speaker 02: It has nothing to do with whether the combination of those three pieces of hardware is conventional or not. [00:37:57] Speaker 02: I'm not talking about what functions they perform. [00:38:01] Speaker 00: Okay, that's fine. [00:38:02] Speaker 00: And there's no evidence in the record that that combination is conventional. [00:38:04] Speaker 02: Well, your patent actually says it. [00:38:06] Speaker 02: You take a standard digital camera for attachment to a computer. [00:38:10] Speaker 02: So you've got a... I don't know of a computer without a processor. [00:38:13] Speaker 02: I don't know of a computer without a display. [00:38:15] Speaker 02: I mean, there used to be. [00:38:16] Speaker 02: Heck, I went to MIT. [00:38:17] Speaker 00: There were. [00:38:18] Speaker 02: But this patent is dated 2013. [00:38:19] Speaker 00: 96 is the date. [00:38:22] Speaker 02: The filing date for this one's 13. [00:38:23] Speaker 00: 96 is the date, so that's very different. [00:38:25] Speaker 02: I went to MIT a lot earlier than that. [00:38:27] Speaker 02: But in any event, so you're trying to tell me that a display, i.e. [00:38:33] Speaker 02: a computer screen, a processor, [00:38:36] Speaker 02: And a single digital camera, which you disclose as made to be used for a computer, a standard digital camera that is attached to a computer. [00:38:43] Speaker 00: It was not a conventional combination to have a camera attached to a computer in 96. [00:38:46] Speaker 00: There's no evidence of that. [00:38:48] Speaker 00: And claim 35 is the one I was referring to, which has the optical sensor and the non-optical sensor. [00:38:54] Speaker 02: Which is a mouse, which is disclosed in your patent as either a mouse or a keyboard. [00:38:57] Speaker 02: Again, pretty standard come by. [00:38:59] Speaker 02: I don't know a lot of computers that don't have a mouse or a keyboard. [00:39:01] Speaker 00: Non-optical means non-optical. [00:39:04] Speaker 00: That could be a microphone. [00:39:05] Speaker 02: Not disclosed in your patent. [00:39:06] Speaker 02: There's no microphone disclosed in your patent. [00:39:08] Speaker 00: True, but it doesn't have to be. [00:39:09] Speaker 00: Non-optical includes a microphone. [00:39:10] Speaker 00: Those skilled in the art know that. [00:39:12] Speaker 02: You don't have to disclose every version of a non-optical in order to... No, but I'm trying to figure out whether there's any merit, which I don't think there is, to the comment you made about this combination of hardware elements not being conventional. [00:39:23] Speaker 00: I was referring to claim 35, not claim 1, because 35... So a mess. [00:39:27] Speaker 02: So claim 1 is the camera [00:39:29] Speaker 02: the processor and the display. [00:39:31] Speaker 02: That you're admitting is conventional, but when you add the mouse, bam, that's where we get not conventional. [00:39:35] Speaker 00: I did not admit that, because in 1996, there's no evidence that the combination of a camera with a computer was conventional. [00:39:41] Speaker 00: I don't think there is, and I don't think it was, because I was around in 96 too. [00:39:48] Speaker 05: Is your point, though, that what the camera is doing, which is sensing two different volitional movements and then [00:39:57] Speaker 05: the processor is analyzing those movements and reacting to those movements? [00:40:02] Speaker 00: Exactly. [00:40:02] Speaker 00: That's claim one. [00:40:03] Speaker 00: And that's not conventional either. [00:40:05] Speaker 00: That wasn't done to control computers in 96 or in 2006. [00:40:09] Speaker 02: So I have one last question before I sit down. [00:40:12] Speaker 02: I want to know what we do. [00:40:13] Speaker 02: I sense some disagreement between the briefs about whether or not we are to march through all of the claims or whether there was some acquiescence that claim one was representative. [00:40:27] Speaker 02: And the only claim you've referred to is claim one, except just now when you mentioned claim 35. [00:40:31] Speaker 02: And so I am trying to understand. [00:40:34] Speaker 02: I didn't notice below that you made any meaningful arguments to the district court like you can't use just claim one, because there are these other elements that make a difference. [00:40:44] Speaker 02: I guess what I'm wondering is, are we to focus on claim one, or are we to march through each claim individually? [00:40:51] Speaker 02: And did you actually preserve that idea below? [00:40:56] Speaker 00: The answer to the first question of whether the claims are meaningfully different, the answer is yes. [00:41:01] Speaker 00: We've made that point repeatedly about the different combinations of sensors and different things that they're sensing. [00:41:06] Speaker 00: We did that both here in the briefs, we laid it out, so it's not just now. [00:41:10] Speaker 00: We did it extensively in the briefs and we did it below. [00:41:13] Speaker 00: We made the point below that in fact the claims are all different and you have to look at the independent and dependent claims separately. [00:41:20] Speaker 02: I understand that you made that point. [00:41:21] Speaker 02: But did you call out for the district court individual elements and explain to him how adding a second censor, for example, would make a difference? [00:41:31] Speaker 02: That even if he were to believe that this claim was to an abstract idea and patent ineligible, that adding a second censor would make a difference, did you delineate for him the ways in which the elements of the dependent claims mattered to the outcome? [00:41:46] Speaker 02: Yes, we did. [00:41:47] Speaker 02: And where did you do that so I can find it? [00:41:49] Speaker 00: I don't have all of the sites for you here, but I'm happy to submit a list of A sites for you within the next two days. [00:41:56] Speaker 05: Can I ask one last question, which is, which claims are still at issue? [00:42:00] Speaker 05: Because there's disagreement, I think. [00:42:03] Speaker 05: Or at least confusion between the two parties on this point. [00:42:08] Speaker 00: There are asserted claims, and there are, in Microsoft's motion below and brief, encompassed additional claims than those that were asserted. [00:42:20] Speaker 00: So if you look at the claims that were asserted, I can give you the numbers of those if you'd like, starting with 320. [00:42:28] Speaker 00: Those asserted claims are 20, 21. [00:42:34] Speaker 04: Are some of the asserted claims going to fall out because of the IPR or not? [00:42:42] Speaker 00: They have already fallen out because we're basically at the point of trial. [00:42:45] Speaker 00: So I don't think they will fall out from here, [00:42:48] Speaker 05: can't make an explicit representation about that. [00:42:50] Speaker 00: Okay, so 21. [00:42:51] Speaker 00: 20, and the 320 pattern, 20, 21, 24, 30, 41, 44, 48, 73. [00:43:01] Speaker 00: In 321, 12, 26, 34, and 37. [00:43:13] Speaker 00: And in 174, it's 39 and 41. [00:43:20] Speaker 05: Can I ask if Microsoft agrees with that list? [00:43:24] Speaker 05: Are those the claims that were supposed to, that are at issue here? [00:43:28] Speaker 01: We don't believe you need to pass on claim 39 of the 174 or claim 34 of the 321. [00:43:34] Speaker 01: Those were both found unpatentable by the Patent Office, a decision neither party appealed. [00:43:39] Speaker 01: You agree with that? [00:43:39] Speaker 01: We do. [00:43:40] Speaker 01: Okay. [00:43:43] Speaker 02: All right, I thank both counsel. [00:43:44] Speaker 02: The case is taken under submission.