[00:00:02] Speaker 03:
We have five cases on the calendar this morning, three patent cases, two from district courts and one from the PTAB, a case from the Justice Department and a case from the Court of Federal Claims.

[00:00:18] Speaker 03:
And the last two are being submitted only in the briefs and therefore will not be argued.

[00:00:26] Speaker 03:
Our first case is Netflix versus Roe v. et al.

[00:00:32] Speaker 03:
2015-1917, Mr. Lampton.

[00:00:46] Speaker 00:
Good morning, and may it please the court.

[00:00:49] Speaker 00:
Section 101 law has developed substantially since the district court ruled, and indeed since we submitted our briefs.

[00:00:56] Speaker 00:
For the 906 patent in particular, two salient principles were made.

[00:01:02] Speaker 00:
Claims that resolve a technological problem in a technological industry are particularly likely to be patent eligible.

[00:01:09] Speaker 00:
Second, there's a common sense distinction between improvements to our existing tools on the one hand and the pursuit of abstract ideas like organizational practices, hedging methods, business methods that simply utilize our existing tools to effectuate a process that's involved in those processes.

[00:01:28] Speaker 03:
Look, claim one of the 906 patent

[00:01:32] Speaker 03:
claims delivering media, recording a bookmark, and delivering the media to a second client.

[00:01:39] Speaker 03:
That sounds pretty abstract.

[00:01:41] Speaker 00:
Your Honor, actually there's five specific limitations I'd like to go over to show that this is actually an ordered combination in an unconventional combination.

[00:01:51] Speaker 00:
First, we're taking the media and it's not on the local device anymore.

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You've put it on central storage.

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Second, it requires something called identified device properties.

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This ensures that your server, which now has the media, can send it in a way that is configured for the particular device.

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This is solving the problem of the fact that you have incompatible device types.

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Third, each of your devices has to be associated with a user.

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That's actually quite critical, because if I'm sitting down and watching Magnificent 7 in my living room on TV, and then I want to pick up on my iPad or my Android or my computer in the airport, this system isn't going to work.

[00:02:30] Speaker 00:
unless it knows that it was me watching on TV Magnificent 7 in the morning, and it knows that it's me again on that Kindle or iPad or Android in the airport.

[00:02:41] Speaker 00:
Fourth, the media has to be delivered in a format configured that is compatible with the device type.

[00:02:47] Speaker 00:
So the work of the configuration isn't being done in the device.

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It's not being done locally.

[00:02:52] Speaker 00:
That work is actually done at the server.

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And fifth and finally,

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Now we get to the universal, the cross-device pause and resume.

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You record an identifier that specifies the place in the media, and that allows you to pick up where you left off.

[00:03:09] Speaker 03:
Are all these advantages in the claim?

[00:03:12] Speaker 00:
Yes.

[00:03:12] Speaker 03:
These distinctions?

[00:03:13] Speaker 00:
Pardon?

[00:03:14] Speaker 00:
Yes, certainly.

[00:03:15] Speaker 00:
Are all these distinctions?

[00:03:16] Speaker 00:
Yeah, these are all in the claim.

[00:03:17] Speaker 00:
So for example, if you start with claim one, which is column 12, appendix page 69, when it says delivering media, this is about line 48,

[00:03:26] Speaker 00:
says delivering the media to a first client device through our first communications link.

[00:03:31] Speaker 00:
So we're in a client server setup.

[00:03:34] Speaker 00:
The media is being delivered across a link to a client device.

[00:03:37] Speaker 00:
So that's the first thing that I mentioned.

[00:03:40] Speaker 00:
Second, it says in a format compatible with identified device properties.

[00:03:45] Speaker 00:
That's again line 49.

[00:03:47] Speaker 00:
Identified device properties.

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Critical again to make sure that it is formatted in a way that is

[00:03:53] Speaker 04:
But didn't your own inventors concede that all of these are conventional elements?

[00:03:59] Speaker 00:
I think that individually, each of these elements is sufficiently well established that you didn't have to go into detail on how to do them, either in the claim or the spec.

[00:04:08] Speaker 00:
I think it's the ordered combination that makes the difference here.

[00:04:11] Speaker 00:
It's the unconventional combination of taking your media, moving it to another location, taking your configuration, doing it not at your set-top box, not on your laptop, not someplace else, but doing the configuration

[00:04:23] Speaker 00:
at the central location.

[00:04:26] Speaker 02:
I guess here's my problem with the way you're explaining it is there are admissions in this record that each individual element is conventional, but you're saying the ordered combination is not conventional.

[00:04:43] Speaker 02:
So I don't know what to make of this because there are four different system models

[00:04:50] Speaker 02:
in this patent that are discussed, and each one involves a bookmark.

[00:04:53] Speaker 02:
But the bookmark is only on the user device.

[00:04:57] Speaker 02:
What I see no evidence anywhere in the record of is that it was conventional to store a bookmark on a server to be able to be downloaded to a different device.

[00:05:05] Speaker 02:
That's an element.

[00:05:06] Speaker 02:
That's not the whole claim.

[00:05:09] Speaker 02:
But you've conceded that each element is, in fact, conventional.

[00:05:11] Speaker 02:
But one element would be recording a bookmark specifying a position in the media.

[00:05:17] Speaker 02:
And in your media on demand system, which the district court has treated those words in the preamble as a limitation and actually construed them in a way I don't agree with, by the way, but you didn't object to.

[00:05:28] Speaker 02:
Nonetheless, this claim requires storing a bookmark on a server.

[00:05:35] Speaker 02:
I see no evidence anywhere that that is conventional.

[00:05:39] Speaker 02:
Yet that's not the way you've argued your case.

[00:05:41] Speaker 02:
So I don't know what to do about that.

[00:05:43] Speaker 00:
Your Honor, I don't think we argued that the bookmark itself was not conventional and a pause and resume that works across the devices is not conventional.

[00:05:51] Speaker 00:
And in fact, the spec does make clear that you have to store it on the server.

[00:05:54] Speaker 00:
And it says you can store it in memory on the server.

[00:05:57] Speaker 00:
In order to do it, that's on page, I think it's column 7, line 66 to 67.

[00:06:04] Speaker 00:
Figure 4 shows you that unconventional bookmark.

[00:06:07] Speaker 00:
I don't think, truthfully, while we have conceded individual things like having a pause and resume is conventional.

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The way pause and resume is done here across devices and holding it on the remote with the media is not.

[00:06:19] Speaker 04:
But it doesn't explain.

[00:06:21] Speaker 04:
You say compatible with identified device properties of said first client device.

[00:06:25] Speaker 04:
But there's nothing in the claim or even in the specification that explains how it's compatible.

[00:06:32] Speaker 00:
Right.

[00:06:33] Speaker 00:
I think the specification gives you the sorts of criteria that are necessary for it to be compatible in terms of formatting, bitrate, and things like that.

[00:06:41] Speaker 00:
That isn't explained in the claim itself, because that's the sort of thing unskilled artisan would know how to do.

[00:06:48] Speaker 00:
I think that Alice, step one in particular, is not designed to require you to put all the hows of each step when you have a multi-step process in the claim.

[00:06:57] Speaker 00:
I think that's actually particularly clear from here.

[00:06:59] Speaker 04:
But it has to be something beyond just things that are conventional and common, right?

[00:07:05] Speaker 00:
No, Your Honor, no.

[00:07:07] Speaker 00:
The order combination can be unconventional.

[00:07:10] Speaker 00:
And even if the specific, if you have all the individual limitations, are simply described in generic terms.

[00:07:16] Speaker 00:
And I think the proof of that is actually deer itself.

[00:07:19] Speaker 00:
If the court were to look at the claims in deer, and I'll give you a quick summary of some of them, deer itself had the steps of close the mold, didn't tell you how.

[00:07:29] Speaker 00:
Set an interval timer on closure, didn't tell you how.

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Constantly determine the temperature of the mold as close to the mold cavity as possible.

[00:07:37] Speaker 00:
Claim didn't tell you how.

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Feed the temperature to the computer,

[00:07:40] Speaker 00:
It didn't tell you how.

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Have the computer repetitively use the well-known Arrhenius equation to calculate the cure time.

[00:07:46] Speaker 00:
Didn't tell you how to program the computer.

[00:07:48] Speaker 00:
Open the mold when the equation, the solution to the equation, matches the lapse time.

[00:07:52] Speaker 03:
Well, we know that old case.

[00:07:54] Speaker 03:
Do you want to deal with the 709 patent?

[00:07:56] Speaker 00:
Certainly, Your Honor.

[00:07:57] Speaker 00:
I'm happy to deal with the 709 as well.

[00:07:59] Speaker 00:
And I'll be candid about the 709, in fact, Your Honor.

[00:08:03] Speaker 00:
I think at least for purposes of step one, the intervening case law has made step one of Alice more difficult for us on the 709.

[00:08:11] Speaker 00:
this court's treatment in particular of patents that deal with data, analysis of data, and outputting results has made it harder.

[00:08:19] Speaker 00:
But this is, at least for Mayo Step 2, a technological advance in the art of interactive program guides.

[00:08:26] Speaker 00:
We take the interactive program guide, which is formally just a way of you navigating, and it passively allows you to find the things you want.

[00:08:34] Speaker 00:
And it converts the guide from a passive navigator into an active

[00:08:38] Speaker 00:
entity that tells you things you might like.

[00:08:41] Speaker 00:
It does something that previously required the exercise of human judgment.

[00:08:45] Speaker 00:
And it allows it to do it through an objective program that's set forth in the claim.

[00:08:51] Speaker 00:
It has to use particularized databases.

[00:08:54] Speaker 00:
It has a viewing history database, which the user watched, and associated program criteria.

[00:08:59] Speaker 00:
Very specific in that sense.

[00:09:01] Speaker 00:
What you watched, associated program criteria.

[00:09:04] Speaker 00:
There's a user preference profile.

[00:09:07] Speaker 00:
information about your preferences.

[00:09:09] Speaker 00:
There's a database of programs not watched, and then it has to go through a specific process using those particularized databases in order to generate the viewing recommendation.

[00:09:18] Speaker 00:
You start with the viewing history, you look at the associated program criteria that are there in that same database, and you identify criteria from the viewing history, and you find something that matches the user preference profile.

[00:09:33] Speaker 00:
Then you use that, and you find something that has been watched, and you recommend that to the viewer.

[00:09:38] Speaker 04:
So what is the technological solution for doing any of these things?

[00:09:44] Speaker 00:
In terms of the technology involved, the use of databases and things like that, we can't claim that suddenly databases, we've invented them.

[00:09:52] Speaker 00:
But the particular format and process you go through in using the databases is an unconventional combination that produces a result.

[00:09:59] Speaker 04:
But there's no technical solution

[00:10:02] Speaker 04:
defining the program criteria.

[00:10:07] Speaker 04:
I mean, I don't see anything in here that does anything other than say that there's going to be criteria.

[00:10:14] Speaker 00:
Your Honor, it is correct that in some sense, this is less specific.

[00:10:17] Speaker 00:
If it went through and said, well, the program criteria will consist of the following six factors, that would be more specific.

[00:10:24] Speaker 00:
That would be better for us.

[00:10:25] Speaker 00:
But the actual process in the database of having a database with the viewing history and associated program criteria there,

[00:10:32] Speaker 00:
And people would generally know that means, you know, Western, 1960s director, cast, that's all set forth in the specification.

[00:10:39] Speaker 00:
That is something that's novel, and that's something that's just not the traditional way of doing it.

[00:10:43] Speaker 00:
And in fact, there was no traditional way of doing this when this patent came out.

[00:10:47] Speaker 00:
Remember, this patent comes from 18 years ago, 1998.

[00:10:50] Speaker 00:
It were almost nine years away from the first iPhone.

[00:10:55] Speaker 00:
The model for sending people, for people having media is for Netflix to federal express you a disc

[00:11:01] Speaker 04:
Right, but just because something might be a good idea doesn't mean that it falls under criteria, under 101.

[00:11:08] Speaker 04:
There's nothing that tells us how any of these things are accomplished, other than through the use of a database.

[00:11:15] Speaker 00:
Well, I think that actually overgeneralizes a little bit, because it specifies the types of databases you need and what needs to be in them.

[00:11:22] Speaker 00:
Three specific databases, an ordered process by which you actually go through those.

[00:11:27] Speaker 00:
And it tells you what needs to be in each.

[00:11:29] Speaker 00:
You have to have the viewing history,

[00:11:30] Speaker 00:
and the associated program criteria, so things that describe what was watched along with the person has watched.

[00:11:36] Speaker 00:
You also have to have your user preferences, a separate database.

[00:11:40] Speaker 00:
You start with the first one and you match to the user preference profile.

[00:11:45] Speaker 00:
Then you go from that one and you try and match the criteria to something that has been watched.

[00:11:51] Speaker 00:
Those are specific steps.

[00:11:53] Speaker 00:
It might not be that we need to develop a brand new computer to do it.

[00:11:57] Speaker 00:
But that is the type of leap forward in your interactive program that we're now all used to.

[00:12:03] Speaker 00:
But in the day, it was quite a feat.

[00:12:05] Speaker 03:
Council, you wanted to save some rebuttal time.

[00:12:08] Speaker 03:
You're into it.

[00:12:09] Speaker 00:
Oh, thank you.

[00:12:09] Speaker 03:
You can continue or save it as you like.

[00:12:11] Speaker 00:
No, no.

[00:12:11] Speaker 00:
I'd like to save my rebuttal time for rebuttal.

[00:12:12] Speaker 00:
I appreciate the warning.

[00:12:13] Speaker 00:
Thank you.

[00:12:19] Speaker 03:
Mr. Kwon.

[00:12:33] Speaker 01:
May I please court?

[00:12:35] Speaker 01:
I want to address a few issues that have come up during the argument.

[00:12:40] Speaker 01:
First of all, to address Judge Moore's point about the bookmark and whether or not storing a bookmark on the server would be unconventional.

[00:12:49] Speaker 01:
The bookmark in the conventional use in an actual book, you put the bookmark in the book itself.

[00:12:56] Speaker 01:
You always store conventionally the bookmark where the media is.

[00:13:01] Speaker 01:
So what we have here.

[00:13:03] Speaker 01:
in the 906 is that the media is being streamed using conventional techniques, admittedly conventional techniques, which means the media is stored on the server.

[00:13:12] Speaker 01:
And therefore, the conventional approach would be to store the bookmark on the server.

[00:13:18] Speaker 01:
There is nothing unconventional about that approach here.

[00:13:21] Speaker 01:
What would be unconventional?

[00:13:22] Speaker 02:
No.

[00:13:23] Speaker 02:
The specification says at Column 7, Line 66 to 67, significantly, Mods 100 can store bookmarks within the local memory of the Mods 100.

[00:13:31] Speaker 02:
Mods 100, ISP 300, IMA 600, those are all, unless I'm mistaken, those are all servers, every one of them.

[00:13:41] Speaker 02:
And I don't think this patent ever discloses storing a bookmark in the media ever, anywhere.

[00:13:47] Speaker 02:
And every single embodiment, and there are many, discloses storing the bookmark on the server.

[00:13:53] Speaker 02:
It doesn't say storing the media in the server, and it happens to contain a bookmark in the media.

[00:13:58] Speaker 02:
It expressly says storing the bookmark on the server.

[00:14:02] Speaker 02:
every embodiment.

[00:14:03] Speaker 02:
In fact, there's no embodiment in this patent that discloses storing the bookmark in the media.

[00:14:08] Speaker 02:
None.

[00:14:09] Speaker 02:
So I would actually posit that there could be a written description problem if they tried to claim that this patent covered storing the bookmark in the media.

[00:14:19] Speaker 01:
Well, Your Honor, perhaps I've spoken precisely, and I apologize.

[00:14:23] Speaker 01:
The media is being streamed from the server.

[00:14:25] Speaker 01:
So you're correct.

[00:14:28] Speaker 01:
It does not require that the bookmark be stored literally in the same file.

[00:14:32] Speaker 01:
as the media, but it's stored in the same.

[00:14:34] Speaker 02:
So this isn't like your example where you stick a bookmark into a book, right?

[00:14:38] Speaker 02:
That example's in fact not at all disclosed in this patent or relevant to what is disclosed in the patent.

[00:14:44] Speaker 02:
So when you stood up and said, this is just like when you put a bookmark in a book, in fact, this is nothing like when you put a bookmark in a book.

[00:14:51] Speaker 02:
Putting a bookmark in a book is not at all even close to what's disclosed in this patent.

[00:14:57] Speaker 01:
Respectfully, Your Honor, I think putting the bookmark on the server side

[00:15:01] Speaker 01:
It's much closer to putting the bookmark in the book.

[00:15:04] Speaker 02:
No, what this is really like is I stopped reading at page 57, and since I didn't have a bookmark handy, I took my phone.

[00:15:11] Speaker 02:
And on my phone, I typed a note in for myself, resume at page 57.

[00:15:15] Speaker 02:
That's the kind of bookmark this is, because it's storing a location to resume playing in a separate part of memory on a server from the media itself.

[00:15:25] Speaker 02:
And every embodiment discloses that.

[00:15:28] Speaker 02:
So why doesn't that make this non-conventional?

[00:15:32] Speaker 02:
Because there is no evidence that Netflix has presented that demonstrates that storing bookmark locations on servers was conventional.

[00:15:44] Speaker 01:
Your Honor, the best I can do on that is to say that between the choice of storing it on the client or storing it on the server, the closer analogy to the conventional methods that have been used in physical media

[00:15:57] Speaker 01:
is to store it on the server rather than on the client.

[00:16:00] Speaker 01:
But you're correct that there is not a directly analogous point to storing the bookmark literally inside the book.

[00:16:08] Speaker 02:
But Your Honor, the- So did you just- I don't understand your answer.

[00:16:12] Speaker 02:
I think there's a non-conventional element here in this claim.

[00:16:17] Speaker 02:
I think the bookmark is required to be stored on the server.

[00:16:20] Speaker 02:
And if that's true, doesn't that end your case?

[00:16:24] Speaker 02:
What am I missing?

[00:16:25] Speaker 02:
Because under Alice,

[00:16:26] Speaker 02:
If there is a non-conventional aspect, an element of this claim, a new widget, a new steering wheel, a new motor or something that hasn't previously existed anywhere in the prior art or been demonstrated to be conventional, then we're outside the boundaries of Alice, as far as I can tell.

[00:16:43] Speaker 01:
Well, Your Honor, the other point is that while there may have been some passing references to the notion of the bookmarking invention here not being conventional, the argument that you have

[00:16:56] Speaker 01:
presented was not actually raised in the opening brief or in the reply brief.

[00:17:02] Speaker 01:
But Your Honor, the other thing here is that in order for an ordered combination to survive at step two, it has to have something significantly more than the abstract idea itself.

[00:17:13] Speaker 01:
And I would posit that it has nothing more than the abstract idea itself or, alternatively, that it certainly has nothing significantly more than the abstract idea itself.

[00:17:24] Speaker 04:
Are you relying

[00:17:25] Speaker 04:
primarily on the many concessions that come from the inventors themselves about the conventionality of all of these elements?

[00:17:35] Speaker 01:
I think that that is the strongest evidence.

[00:17:38] Speaker 01:
And then beyond that, I would add that at appendix page 67, in column 7 at approximately line 25, the specification, the written description makes clear

[00:17:50] Speaker 01:
that there are various methods that are well known in the art that can be used to authenticate and grant access to particular network services.

[00:17:56] Speaker 01:
And I believe that addresses the point raised regarding the fact that the bookmarks must be associated with a particular user.

[00:18:04] Speaker 01:
Those methods are going to involve authentication, which has been, as the specification notes, well known in the art.

[00:18:10] Speaker 04:
You're not really arguing that the specification's irrelevant to this 101 analysis, are you?

[00:18:16] Speaker 01:
I don't think the specification is irrelevant to this analysis, but I do think that the concessions that are made by the inventors themselves and submitted to the PTO are relevant to determining what is conventional.

[00:18:29] Speaker 04:
Right, but they're both relevant.

[00:18:30] Speaker 04:
I mean, in ENFISH, we specifically said that, yes, the claims, you have to look to see what is actually claimed.

[00:18:34] Speaker 04:
You can't just say, is there some invention in here that we can ferret out of the specification or the written description.

[00:18:41] Speaker 04:
But clearly, we look at both.

[00:18:44] Speaker 01:
Yes, Your Honor.

[00:18:44] Speaker 04:
To help define them.

[00:18:45] Speaker 01:
Yes, Your Honor, without a doubt.

[00:18:47] Speaker 01:
But if the specification were to attempt to contradict the points that the inventors themselves made in their own invention disclosure to their employer and subsequently submitted to the PTO, I think it would be hard to take that at face value.

[00:18:59] Speaker 01:
But here, there actually is nothing in the specification that contradicts the admissions that are made in the invention disclosure that was submitted to the PTO.

[00:19:09] Speaker 01:
So Your Honor, and the other note that I would raise is that,

[00:19:15] Speaker 01:
In the BuySafe case, this court noted that even groundbreaking, innovative, or brilliant ideas can still be abstract.

[00:19:23] Speaker 01:
That, of course, comes from the Myriad case.

[00:19:25] Speaker 01:
I don't think we have anything here that's necessarily groundbreaking, innovative, or brilliant.

[00:19:29] Speaker 01:
But the key point is that there is little, if anything, in the claims that goes beyond the abstract idea itself of bookmarking across devices.

[00:19:36] Speaker 04:
Pretty cool, though.

[00:19:38] Speaker 01:
No.

[00:19:39] Speaker 01:
It might be cool, Your Honor.

[00:19:40] Speaker 01:
But I don't think that cool necessarily means that you're not an abstract idea.

[00:19:44] Speaker 02:
Is the media on demand system in the preamble a claim limitation?

[00:19:50] Speaker 01:
No party took the position that it was limiting.

[00:19:52] Speaker 01:
No party asked the district court to construe it as being limiting.

[00:19:56] Speaker 01:
And indeed, there was no claim construction suggesting that it was limiting.

[00:20:01] Speaker 01:
Your Honor, however, I would say that if you look at figure one in the patent, which is at the appendix at page 58,

[00:20:07] Speaker 01:
This is an illustrative hardware setup implementing the supposed invention.

[00:20:13] Speaker 01:
And what we can see here is that the media on demand server is illustrated as item 100.

[00:20:21] Speaker 01:
It's a generic looking server.

[00:20:24] Speaker 01:
And that the client devices are in 120 and 110.

[00:20:31] Speaker 01:
In both of those, one of the choices is a generic PC.

[00:20:34] Speaker 02:
Oh, I don't disagree with you that the components are generic at all.

[00:20:40] Speaker 02:
I'm still stuck on my point, which is while they are generic, they are collected in a way and utilized in a manner that is non-conventional with the bookmarking capability.

[00:20:53] Speaker 02:
So I'm still stuck on my original point.

[00:20:56] Speaker 02:
I mean, I know you've moved beyond it, and you're talking about lots of other things.

[00:20:59] Speaker 02:
But I'm still stuck there with the idea that the media on-demand server makes this clearly a server-side, server-required, and server-implemented device.

[00:21:10] Speaker 02:
And so I personally look at that claim limitation and think that it limits the claims to server-side storage, server-side transfers, and all of that.

[00:21:20] Speaker 02:
And that's why, to the extent that the patent talks about four embodiments,

[00:21:25] Speaker 02:
which have bookmarking capability in the prior art and things, it's always non-server related.

[00:21:32] Speaker 02:
So it's not that the server's not a conventional device.

[00:21:35] Speaker 02:
It's that the media transfer on the server is non-conventional.

[00:21:40] Speaker 01:
On that point, I would again note that the appellant needs to be limited to the arguments that they've made in their briefs.

[00:21:48] Speaker 01:
And neither in their opening brief nor their reply brief is their position taken that the inventive step

[00:21:55] Speaker 01:
is server-side bookmarking.

[00:21:57] Speaker 01:
And their expert who submitted a declaration, his position was not that server-side bookmarking was the point of innovation or the point of inventive concept.

[00:22:08] Speaker 02:
Well, no.

[00:22:09] Speaker 02:
It's the collection of things that are the inventive concept.

[00:22:12] Speaker 02:
But that could be a new aspect, a new element.

[00:22:16] Speaker 02:
It's the collection of the way that the system operates.

[00:22:20] Speaker 01:
Yes, Your Honor.

[00:22:20] Speaker 01:
But I don't think that there is anything in Professor Seamus's declaration

[00:22:25] Speaker 01:
that suggests that the ordered combination is an inventive concept because of the concept of server-side bookmarking.

[00:22:32] Speaker 01:
If I could turn to the 709 patent.

[00:22:36] Speaker 01:
The 709 patent, I think the key is that the ordered combination here includes some elements that arguably go beyond the abstract idea themselves, but they are themselves utterly conventional.

[00:22:50] Speaker 01:
It specifies that you must use a viewing history, and it specifies

[00:22:55] Speaker 01:
that you must use a user preference profile.

[00:22:58] Speaker 01:
Those, however, are precisely the types of information people have always used when making recommendations to their friends and family.

[00:23:06] Speaker 01:
They rely on what they know that the person that they're making a recommendation to has viewed in the past, what they have liked in the past.

[00:23:14] Speaker 01:
And they try to suggest something to them that they haven't already read or seen, which is to say they try to recommend something that has not yet been watched.

[00:23:22] Speaker 01:
And I think that this distinguishes

[00:23:24] Speaker 01:
the additional limitations from, for example, the McRoe case.

[00:23:28] Speaker 01:
I think the distinctive point in McRoe was that when going from the human process of animating to the computerized method of animating, it was unobvious and unclear what human beings actually do.

[00:23:44] Speaker 01:
As you may recall from the case, it discusses that the key point was, how do you choose key frames in animation?

[00:23:51] Speaker 01:
And the key frames in the prior art in the human-based method

[00:23:55] Speaker 01:
involved human animators deciding what the key frames should be and what they should look like.

[00:24:01] Speaker 01:
And of course, the way a human being is going to do this is you're going to think about the word that you're trying to animate, and you're going to think about what your own face looks like when you are at a certain spot in that word.

[00:24:11] Speaker 01:
And you're going to choose that as a key frame.

[00:24:13] Speaker 01:
Human beings don't consciously make choices about morph weight sets and what phonemes they are between in a particular sequence.

[00:24:23] Speaker 01:
A computer cannot access

[00:24:25] Speaker 01:
its own personal experience in how it's going to form those phonemes.

[00:24:28] Speaker 01:
And that is why you need to come up with an inventive concept to figure out how to computerize that process.

[00:24:35] Speaker 01:
Here in the 709 patent, the precise information that is being relied upon is that which is known to anyone who has made recommendations to their friends or family.

[00:24:46] Speaker 01:
The other thing that I would suggest about both of these patents is in contrast to a case like ENFISH, for example.

[00:24:55] Speaker 01:
The innovative concept was something that improved the functioning of the computer itself.

[00:25:00] Speaker 01:
And that was, of course, the self-referential table.

[00:25:03] Speaker 01:
And that improved on the prior art, which required that you, ahead of time, decide what types of information you're going to try to capture so that you can create separate tables in a relational database that allows that information to be correlated.

[00:25:17] Speaker 01:
The invention in the Enfish case was that by using a self-referential table,

[00:25:23] Speaker 01:
that process was no longer required.

[00:25:25] Speaker 01:
And on the fly, one could add information that introduced new categories that you wanted to correlate.

[00:25:31] Speaker 04:
So could you have something that, like if you say this initial bookmarking would not be patent eligible, but an improvement to that bookmarking system could be?

[00:25:43] Speaker 01:
Well, potentially.

[00:25:44] Speaker 01:
Certainly under a case like M. Fitch, if they came up with a way that actually improved the functioning of the computer, as opposed to coming up with a

[00:25:52] Speaker 01:
way to implement the abstract idea itself.

[00:25:57] Speaker 01:
That might be something useful.

[00:25:58] Speaker 01:
There's nothing in the claims and nothing in the specification that talks about how to improve the function of the computer, as opposed to merely taking the abstract idea and placing it in the new technological realm of a client server-based system.

[00:26:15] Speaker 01:
And unless there's further questions, I'm prepared to submit.

[00:26:19] Speaker 03:
Thank you, Mr. Kwon.

[00:26:21] Speaker 03:
Mr. Lamkin has some other things.

[00:26:32] Speaker 04:
Mr. Lamkin, before you start on what you want to say, one of the things that I thought was kind of surprising, aside from the fact that you had so many concessions by your own inventors about everything being conventional, is that Dr. Shamos's report, if you look at it, it is sort of the classic

[00:26:49] Speaker 04:
Well, the reason this is patent eligible is because you need specially programmed computers.

[00:26:58] Speaker 04:
Alipat, that was a long time ago, and Alice has sort of morphed us away from that.

[00:27:03] Speaker 04:
So isn't that the exact kind of language that gets you nowhere?

[00:27:08] Speaker 00:
I think the problem is that 101 law has moved substantially since when we were litigating in the district court, since the district court ruled, and even since we litigated this case.

[00:27:18] Speaker 00:
Oftentimes, we're thinking in the old world of tying into a machine.

[00:27:22] Speaker 00:
The new world is very different.

[00:27:24] Speaker 00:
And the new world makes a difference when, for example, you have to look and find your individual steps, emphasize the individual steps, identify whether any are unconventional, identify whether the ordered combination is unconventional.

[00:27:35] Speaker 00:
That's a slightly different world than we had when we were back in the district court.

[00:27:39] Speaker 04:
So you wish you could go back and relitigate this?

[00:27:41] Speaker 00:
Well, certainly, Your Honor.

[00:27:42] Speaker 00:
I think it's a little unfair even to the district court, Your Honor, to review it under current law with things changing even the past six months.

[00:27:48] Speaker 00:
as opposed to what the law of the district court had at the time.

[00:27:51] Speaker 00:
And so one solution that could be proposed would be just to send this back to the district court to think again in light of the precedent has gone by.

[00:27:59] Speaker 00:
But I did want to sort of turn away from that one little piece of it and actually talk for a minute about one question, which was.

[00:28:05] Speaker 04:
But is there anything that Dr. Shamos said other than those things that I think get you nowhere that you would be relying on right now?

[00:28:13] Speaker 00:
I think Dr. Shamos talked about the fact that we were actually modifying the media in a way that wasn't done previously and making modifications in a way that wasn't done previously in terms of the bookmarks.

[00:28:25] Speaker 04:
But he said the reason it was is because you have to have specially programmed computers.

[00:28:29] Speaker 00:
Right, but it also wasn't done the old way.

[00:28:31] Speaker 00:
The old way was press a button and mechanical linkage lifts and you have paused.

[00:28:35] Speaker 00:
The needle lifts.

[00:28:36] Speaker 00:
This is a very different world where you have to have some sort of a counter, and we not only have that counter,

[00:28:41] Speaker 00:
But as Judge Moore pointed out helpfully, when you take that counter or the bookmark, and we have a diagram of what the bookmark looks like, and you move it to the remote location.

[00:28:52] Speaker 00:
And it's not just that it's on the server.

[00:28:54] Speaker 00:
But as Judge Moore pointed out, in column 8, you put it on an ISP.

[00:28:58] Speaker 00:
Column 10, you put it on what's called an internet media aggregator.

[00:29:01] Speaker 00:
You take it away from the device, along with the media.

[00:29:05] Speaker 00:
You're taking a lot of things away from the device.

[00:29:07] Speaker 00:
And this is a way of making the device work seamlessly

[00:29:10] Speaker 00:
as if you had the document on the device, but in fact, everything has been removed remotely.

[00:29:16] Speaker 00:
Judge Moore, I wanted to answer your question about whether the media on-demand server is a limitation.

[00:29:21] Speaker 00:
And I think the answer is claim one, it clearly is, because it actually says a client device.

[00:29:26] Speaker 00:
And unless you have a media on-demand system, you don't have a client device.

[00:29:30] Speaker 00:
If there were any question, it would be resolved by claim three, which actually says the method of claim one wherein the media is stored on a media on-demand server.

[00:29:42] Speaker 00:
Finally, I just wanted to go back to where I began, which is to say there's two things that really stand out.

[00:29:51] Speaker 00:
The Supreme Court and this court formerly had been invalidating numbers, calculations of numbers, business methods, and things like that.

[00:29:58] Speaker 00:
We've now moved a little bit beyond it.

[00:30:00] Speaker 00:
And the question here is, how far do you go?

[00:30:02] Speaker 03:
Well, the law hasn't changed.

[00:30:04] Speaker 03:
It's just that new cases have come up with new facts.

[00:30:08] Speaker 00:
That's correct.

[00:30:09] Speaker 00:
And oftentimes, this court has to operate by comparing one case to the prior cases.

[00:30:13] Speaker 00:
But the analysis has changed.

[00:30:14] Speaker 00:
We now in the past six months have seen analysis that says, hey, look, if this is a technological solution, or if this is a solution to a technological problem, you're probably going to get past Mayo and Alice step one.

[00:30:26] Speaker 00:
If this is something that rather than being an effort to use existing conventional machines to effectuate what is an abstract idea, effectuate a business method, but instead you're improving or changing how these machines operate to achieve a goal, that's going to be patent eligible.

[00:30:42] Speaker 00:
And here, we're changing the way your server operates, changing the way the client and the server interact, changing where things are stored in order to solve a problem, which was the incompatibility of devices and the inability for you to move, start on one device and then pick up seamlessly on another device that's potentially incompatible over an entirely different link.

[00:31:01] Speaker 00:
If there are no further questions, I thank the court.

[00:31:04] Speaker 03:
Thank you.

[00:31:05] Speaker 03:
Mr. Lamkin will take the case under advisement.