[00:00:00] Speaker ?: Uh-huh. [00:00:34] Speaker 00: Next case is secure access versus PNC Bank et al. [00:00:41] Speaker 00: 2016-13-53. [00:00:42] Speaker 00: We'll hear from Mr. Wright. [00:00:55] Speaker 05: Good morning. [00:00:56] Speaker 05: May it please the court? [00:00:58] Speaker 05: The Patent Trial and Appeal Board committed to [00:01:02] Speaker 05: errors that are critical to its decision, one procedural and one substantive. [00:01:08] Speaker 05: I'd like to discuss both of those. [00:01:10] Speaker 05: Procedurally, the PTAB failed to consider the claim language in determining that the 191 patent claimed a method or corresponding apparatus for performing data processing or other operations using the practice administration or management of financial product or service. [00:01:27] Speaker 00: Well, the claim language refers to receiving data [00:01:32] Speaker 00: and creating data. [00:01:33] Speaker 00: And the statute certainly refers to performing data processing used in the practice, administration, or management of a financial product. [00:01:51] Speaker 00: And the specification indicates in quite detail that this invention was used in the management of a financial product. [00:02:02] Speaker 00: Why, and this is your point, why wasn't it properly a CBM? [00:02:09] Speaker 05: Well, I think there's an important distinction here. [00:02:12] Speaker 05: And that is whether something is used, for instance, in a procedure to access a financial product or service versus something that's actually used in the management or financial product or service. [00:02:32] Speaker 01: What was the standard that the PTAB applied in deciding whether there is a CBM patent? [00:02:43] Speaker 05: I don't know that the PTAB really applied a standard here. [00:02:46] Speaker 05: The PTAB considered three what we view as extraneous factors. [00:02:50] Speaker 05: They looked at some language in the specification that refers to potential applicability for this security technology. [00:02:59] Speaker 05: This is not any sort of financial technology. [00:03:02] Speaker 05: It's a security system. [00:03:03] Speaker 05: It's a security technology that, according to the patent, does not care about what sort of web page it is protecting, for instance. [00:03:12] Speaker 05: The patent describes placing the security seal on any sort of web page and that it's the general utility type patent in that sense. [00:03:24] Speaker 00: But the use in banking is certainly [00:03:28] Speaker 00: fully set out there, and the statute talks about use in a financial product. [00:03:35] Speaker 05: Well, I don't think that the use even in the accused products, for instance, in this case, I don't think it's used in the practice or administration of the financial products or services. [00:03:47] Speaker 05: This is a security system, and it's a security system on the website that when you access the bank website and you log in, [00:03:55] Speaker 05: It's an authentication security system. [00:03:57] Speaker 05: That's not part of the financial product or service. [00:04:00] Speaker 05: And part of our evidence of that and our argument on that, as we pointed out in the brief, is that many of the banks that were defendants in the underlying lawsuits bought the security aspect of this from RSA, who's the petitioner in the IPR we'll be talking about later, which is not a financial institution. [00:04:20] Speaker 05: It's a security company. [00:04:22] Speaker 05: These are separate modules within the systems. [00:04:24] Speaker 05: There's the security system to gain access, and then there's the financial product or service aspect of the online system. [00:04:33] Speaker 05: I think an important thing to think about here is the overall question of who can perform a financial product or service and who can perform things that are not financial products or services. [00:04:50] Speaker 05: What I mean by that is that this court held in Versada [00:04:55] Speaker 05: and also applied in sight sound, the question, do only financial institutions provide financial products or services? [00:05:03] Speaker 05: And the court said no. [00:05:04] Speaker 05: Clearly, other institutions besides financial institutions can provide financial products or services. [00:05:10] Speaker 05: We're looking at the flip side of that coin today. [00:05:12] Speaker 05: And that is, does everything that a financial institution does qualify as a financial product or service or as part of the administration or management of financial product or service? [00:05:23] Speaker 05: I think the answer to that question has to be no. [00:05:26] Speaker 05: I walked into my bank last week to go deposit a check, which is part of a financial product or service. [00:05:32] Speaker 05: And when I was walking to the front desk, someone offered me a cup of coffee. [00:05:37] Speaker 05: The bank was brewing coffee. [00:05:38] Speaker 05: That's not a financial product or service, but it's something the bank does. [00:05:42] Speaker 05: There are security cameras in the corner of the bank looking at people coming in and locks on the doors. [00:05:48] Speaker 05: If the bank installs a new security system on the doors, [00:05:52] Speaker 05: I would argue that's not a financial product or service. [00:05:56] Speaker 05: And I think the same holds true with the invention that's claimed in the 191 patent. [00:06:02] Speaker 03: Indeed, I would think that your argument would be perhaps even broader, that once we have, as we have, interpreted the claim language, not to be limited to financial institutions, but to anything involving sales, [00:06:21] Speaker 03: than the statutory construction being urged here and relied on by the board is one that would cover any operation used in a selling activity by anybody, including the gas station, including the 7-Eleven. [00:06:44] Speaker 03: So electricity and glass and concrete and [00:06:49] Speaker 03: HVAC systems and pencils, which seems a little over-broad. [00:06:55] Speaker 05: I think that is over-broad, and that is sort of the point we're making. [00:06:59] Speaker 05: We mentioned the analogies in our briefs about where do you draw the line if you're driving to the bank. [00:07:05] Speaker 05: Is that part of the financial product or service? [00:07:08] Speaker 05: If you're walking through the door, if the bank is using Microsoft Word to send you a letter that's perhaps unrelated to banking, for instance. [00:07:15] Speaker 00: How many defendants do you have [00:07:18] Speaker 00: in various lawsuits? [00:07:20] Speaker 05: Currently pending. [00:07:24] Speaker 05: I think it's about 17. [00:07:26] Speaker 00: How many of them are financial institutions? [00:07:29] Speaker 05: They're all financial institutions. [00:07:31] Speaker 05: We were sued for declaratory judgment by a non-financial institution, which happened to provide this service to most of the financial institution defendants, which I think further supports our idea that this is not a financial [00:07:47] Speaker 05: invention. [00:07:47] Speaker 05: This is a security invention. [00:07:48] Speaker 00: Do you want to address the merits? [00:07:51] Speaker 05: Yes. [00:07:52] Speaker 00: Your second point? [00:07:53] Speaker 05: Yes. [00:07:56] Speaker 05: So just to wrap that up, the two points on the CBM eligibility were there's a procedural defect. [00:08:05] Speaker 05: The board did not even consider the claim language at all. [00:08:08] Speaker 05: As I mentioned, it relied on Senator Schumer's statements, the statements about potential applicability and the specification, and the fact that we had sued banks. [00:08:16] Speaker 05: And substantively, as we've been talking just now, this is not actually a financial product or service. [00:08:22] Speaker 05: It's something that can access other services, including financial products or services. [00:08:30] Speaker 05: That, however, makes it more of a general utility patent. [00:08:35] Speaker 05: And the Patent Trial and Appeal Board in the AT&T decision, which we cited in our reply brief, came to a different conclusion. [00:08:44] Speaker 05: They said, first of all, [00:08:46] Speaker 05: He said that you have to look at the claim language. [00:08:49] Speaker 03: Well, one reason for getting to the merits, I guess, would be this. [00:08:52] Speaker 03: If you're right about CBM and wrong about the merits, you have one claim left, claim 24. [00:08:57] Speaker 03: Is that right? [00:08:58] Speaker 03: Right. [00:08:59] Speaker 03: I mean, is that a happy place for you? [00:09:02] Speaker 05: No. [00:09:02] Speaker 05: I mean, I'm going to address that in just a moment. [00:09:06] Speaker 05: OK. [00:09:06] Speaker 05: So turning then to the claim construction argument, the issue here surrounds the security of the preferences file. [00:09:14] Speaker 05: And that's the file that houses the user's authenticity stamp, the secret stamp that appears on the screen so that they know that they have authenticated to a valid site. [00:09:26] Speaker 05: And the primary problem with the board's decision here was that it relied almost exclusively on extrinsic evidence, dictionary definitions, rather than the specification and how that word is used in the claims. [00:09:42] Speaker 05: If you read the specification of [00:09:44] Speaker 05: the 191 patent, the word locate or location, some variation thereof, is used eight times in the patent. [00:09:54] Speaker 05: And we can separate those eight uses of the word into three buckets. [00:09:58] Speaker 05: The first of those is the use as to describe a URL, which is a uniform resource locator. [00:10:06] Speaker 05: That's a web address. [00:10:08] Speaker 05: And I'm in the CBM appendix. [00:10:10] Speaker 05: I'm on pages 88 and 89 of the patent. [00:10:13] Speaker 05: uses that acronym, column two, line 46, and column four, line 67. [00:10:20] Speaker 05: Those don't give us any guidance on how locate should be used with respect to the preferences file. [00:10:26] Speaker 05: The next three instances where it's used are on appendix 89, column three, line five. [00:10:33] Speaker 05: It says the user also specifies the location of the stamp. [00:10:36] Speaker 05: This is talking about where the user defined stamp appears on the screen. [00:10:40] Speaker 05: And I should mention the second bucket of uses [00:10:42] Speaker 05: is describing not anything about locating where something is, but about the position on the screen for the user-defined stamp. [00:10:49] Speaker 05: So that was at column 3, line 5. [00:10:52] Speaker 05: Also on appendix page 90, column 6, lines 57 to 58, refers to a non-authenticity stamp, which can be displayed in the location where the authenticity stamp would normally be displayed. [00:11:04] Speaker 05: Again, the position on the screen for the stamp. [00:11:07] Speaker 05: And then also column 9, lines 39 to 40, that's appendix 92. [00:11:11] Speaker 05: the appearance and location of the authenticity stamp. [00:11:13] Speaker 05: Again, referring to the position of the stamp. [00:11:16] Speaker 05: The other three uses of locate in the patent refer to something being hidden or its location being obscured. [00:11:22] Speaker 05: If you look at appendix 89, it says the location of the file, that's the preferences file that we're talking about here, is not readily known. [00:11:31] Speaker 05: I'm sorry, column four, line 37 on 89. [00:11:35] Speaker 05: So the location of the file is not readily known. [00:11:37] Speaker 05: Appendix 92, column 9, lines 31 to 33. [00:11:40] Speaker 05: This is referring to public keys. [00:11:43] Speaker 05: It says although the public key itself can be distributed, its storage location should remain as obscure as possible. [00:11:50] Speaker 05: Not in the context of the preferences file, but certainly another use of locate where something is hidden. [00:11:55] Speaker 05: And then finally on Appendix 92, column 9, lines 53 to 55, it says preferably the preferences file is placed in a random directory to help obscure the location of the preferences file [00:12:07] Speaker 05: and facilitate the creation of unique user configurations. [00:12:11] Speaker 03: Words like preferably are problematic, aren't they? [00:12:15] Speaker 05: It does say preferably. [00:12:17] Speaker 05: On column four, line 37, I believe it says the location of the file is not readily known. [00:12:23] Speaker 05: That may be preferably also. [00:12:25] Speaker 05: My point is these are the only uses of this term and specification with respect to the preferences file. [00:12:32] Speaker 03: Are we operating under a [00:12:34] Speaker 03: broadest reasonable interpretation standard here? [00:12:37] Speaker 05: We are, but our belief is that the only reasonable construction according to the specification and the need to secure the file is that the file has to be hidden. [00:12:48] Speaker 05: I see I'm into my rebuttal time, so if there are no other questions. [00:12:51] Speaker 01: Yeah, there's one more question, or actually two questions. [00:12:58] Speaker 01: Why does it matter to you whether this case is treated as a CBM or [00:13:04] Speaker 01: presumably in some other, the IPR category, if they're going to challenge it. [00:13:11] Speaker 01: What's the big issue here? [00:13:14] Speaker 05: So why does it matter that we were CBM as opposed to IPR? [00:13:19] Speaker 05: Since they're both filed there. [00:13:22] Speaker 05: I mean, certainly they could have filed an IPR in this case. [00:13:27] Speaker 05: They didn't. [00:13:28] Speaker 05: That was available to them. [00:13:29] Speaker 05: They filed the CBM here because they were challenging the patent on 101 and 112 grounds. [00:13:34] Speaker 05: those were denied. [00:13:35] Speaker 05: I think the CBM aspect is important because I think that we do need guidance as litigants and the PTAB needs guidance to get some uniformity in the decisions. [00:13:53] Speaker 01: My second question, and I hope our presiding judge will give you a little slack on this, I look at the [00:14:03] Speaker 01: patent. [00:14:05] Speaker 01: We're talking about the 191 patent at this point? [00:14:09] Speaker 05: Yes. [00:14:13] Speaker 01: Have I missed you? [00:14:14] Speaker 01: No, no, no. [00:14:15] Speaker 01: I'm sorry. [00:14:15] Speaker 01: I was grabbing the patent. [00:14:18] Speaker 01: And the 191 patent says that the field of the invention relates generally to computer security and more particularly to systems and methods for authenticating a web page. [00:14:33] Speaker 01: Yes. [00:14:35] Speaker 01: Nothing financial as such in that other than the implicit that. [00:14:39] Speaker 01: And when we get all this done, we want to make money. [00:14:41] Speaker 01: But that's in every patent. [00:14:43] Speaker 01: OK. [00:14:43] Speaker 01: So clearly, that can't make it a CBM. [00:14:46] Speaker 01: Then if you look at the summary of the invention and exemplary embodiments of the invention, a user requests a web page, et cetera, et cetera, et cetera, all that's right in it. [00:14:57] Speaker 01: You have to go all the way back to column 11. [00:15:02] Speaker 01: almost down to line, I guess it's line 50 or so, before you really get any discussion of something that sounds like financial activity. [00:15:19] Speaker 01: Any merchant computer and bank computer are interconnected by a second network referred to as a payment network. [00:15:28] Speaker 01: The payment network represents existing [00:15:31] Speaker 01: proprietary networks at present. [00:15:34] Speaker 01: That sounds like it's leftover from a prior patent that really has very little to do with the claims. [00:15:42] Speaker 01: This is a continuation patent, isn't it? [00:15:46] Speaker 05: It is a continuation, yes. [00:15:47] Speaker 01: So that sounds a little bit like it was leftover, which is OK. [00:15:52] Speaker 01: You can do that. [00:15:53] Speaker 01: But it doesn't sound like what's claimed here has anything to do with those paragraphs. [00:16:01] Speaker 01: And that's the only place in that whole written description where there's any real sense of a financial activity. [00:16:14] Speaker 05: Right. [00:16:14] Speaker 05: I think we'd agree with that. [00:16:16] Speaker 05: We would agree with that. [00:16:17] Speaker 00: We would agree with that. [00:16:18] Speaker 00: OK. [00:16:19] Speaker 00: Judge Plager has just spent time arguing for you, but we won't take that out of your time. [00:16:26] Speaker 00: I appreciate that. [00:16:27] Speaker 00: We'll give you about three minutes of rebuttal back. [00:16:35] Speaker 00: Mr. Land here. [00:16:37] Speaker 04: May it please the court? [00:16:39] Speaker 04: Let me begin by addressing your last question, Judge Clayton. [00:16:42] Speaker 00: Yeah. [00:16:43] Speaker 04: It's not the case that in this patent you need to travel all the way to column 11 before you find that this is an invention, that the claimed invention is particularly useful in a financial product or service. [00:16:55] Speaker 04: In the background of the invention section, the only website that's described is a hypothetical website called www.bigbank.com. [00:17:06] Speaker 04: When you get to column six of the patent, there is a reference to the particular usefulness of the claimed invention in conducting online commerce transactions. [00:17:18] Speaker 04: And then as you referred to, Your Honor, column 11 of the patent, there is a lengthy description of the use of the claimed invention specifically by banks and other financial institutions to engage in finance-related activity. [00:17:33] Speaker 04: In fact, the only real-world examples given of what the claimed invention is useful for in this patent are directly for the administration, practice, and management of financial products and services. [00:17:48] Speaker 04: What the PTAP has done to evaluate, there was a question earlier about what is the standard that the PTAP has applied and what did it apply in this case. [00:17:56] Speaker 04: The analysis is at appendix pages 7 to 12. [00:18:00] Speaker 04: The PTAB properly sets forth that it must analyze the claims and determine whether the claimed invention is to a method or corresponding apparatus for data processing or other operations used in the practice, administration, or management of a financial product or service. [00:18:17] Speaker 03: That's just the statute. [00:18:17] Speaker 04: That is the statute. [00:18:19] Speaker 04: It then goes on to make findings about what is disclosed and claimed in the patent, which are entitled to substantial evidence, standard of review, [00:18:27] Speaker 04: about the particular usefulness that the patent describes of the claimed invention in the context of financial services. [00:18:35] Speaker 03: Where does this question of particular usefulness come from? [00:18:40] Speaker 03: And it seems to me, again, goes back to something I asked about before. [00:18:48] Speaker 03: We have already taken the step of saying it doesn't matter whether you're a seller or a financial institution in the ordinary pedestrian sense. [00:18:59] Speaker 03: So we've already vastly expanded this statute. [00:19:03] Speaker 03: So now the question is, is this, whatever the patent is, [00:19:07] Speaker 03: the general question, is this a patent particularly useful in selling stuff? [00:19:12] Speaker 03: The answer must be yes, for 99% of all patents. [00:19:18] Speaker 03: Was that what Congress was bringing under the CBM regime? [00:19:21] Speaker 04: Your Honor, I think that the answer is no, it doesn't pertain to 99% of patents. [00:19:27] Speaker 04: Why not? [00:19:28] Speaker 04: Because the statute requires that to be a CBM patent, [00:19:33] Speaker 04: It needs to be a patent that covers a method or corresponding apparatus for data processing or other operations. [00:19:39] Speaker 03: Okay. [00:19:39] Speaker 03: A method or apparatus for any operations. [00:19:44] Speaker 03: Okay. [00:19:44] Speaker 03: That's pretty darn broad. [00:19:45] Speaker 04: Yeah. [00:19:46] Speaker 04: Used in the practice administration or management. [00:19:49] Speaker 03: And virtually everything invented is used in some selling. [00:19:55] Speaker 04: Your Honor, that might be the case in some sense, but that's not how the statute has been applied by [00:20:01] Speaker 04: the PTAB, and it's not what is necessary for the court to rule in this case. [00:20:05] Speaker 03: Tell me if my understanding of the following two things is right. [00:20:09] Speaker 03: My understanding is every single one of the cases where we have upheld CBM, the claim language refers to selling or some other commercial activity. [00:20:20] Speaker 03: The claim language. [00:20:21] Speaker 04: I don't believe that's right. [00:20:23] Speaker 03: What does it? [00:20:24] Speaker 04: In Blue Calypso, there were two patents. [00:20:27] Speaker 04: Some of the patents in Blue Calypso referred to a subsidy. [00:20:30] Speaker 04: and subsidy had been construed specifically. [00:20:33] Speaker 04: That was three of the patents at issue. [00:20:35] Speaker 04: Two of the patents at issue referred to an incentive, which was not specifically construed to require something particularly financial or not. [00:20:44] Speaker 04: And the specification or the written description in that patent gave examples of incentives that were non-financial. [00:20:50] Speaker 04: At footnote two of blue cooling soap, this court looked at those patents and said, in the final sentence of that footnote, [00:20:59] Speaker 04: that the written description confirmed that most, if not all, of the examples of an incentive given in the specification related to a financial service, and that was good enough in that case for those patents to fall within the scope of covered business method review. [00:21:17] Speaker 03: Okay, let me, um, and that's the only [00:21:22] Speaker 03: arguable example where we could argue about what incentive has and it must have some sort of value. [00:21:31] Speaker 03: But everything else, there's actual claim language specifically about a selling or some other kind of transfer of value. [00:21:42] Speaker 04: In the three cases that this court has had on the issue, [00:21:46] Speaker 04: Yes. [00:21:46] Speaker 03: And is my understanding also right that the set of PTAB decisions, none of them, I think, presidential, is kind of a mixed bag where some PTAB panels say, this can't possibly be covered. [00:22:03] Speaker 03: It's not really about commercial dealings. [00:22:07] Speaker 04: No, that's not correct either. [00:22:09] Speaker 03: I am remembering some cases somebody has described. [00:22:13] Speaker 03: What about those cases? [00:22:15] Speaker 04: The conclusions that the PTAB has reached as to a particular patent, some patents it has found to be eligible, other patents it has found not to be eligible. [00:22:24] Speaker 04: The methodology in all of the decisions that are cited by Appellant is consistent. [00:22:31] Speaker 04: And the PTAB has looked at a set of factors to determine whether the claimed invention [00:22:37] Speaker 04: is used in the administration practice or management of a financial product or service. [00:22:42] Speaker 02: Everything is used in the practice of selling. [00:22:48] Speaker 04: First, Your Honor, you don't need to find that extreme position to answer the question. [00:22:54] Speaker 03: I don't understand how your position makes sense if the natural logic is as absurd as that. [00:23:00] Speaker 03: That's my problem. [00:23:01] Speaker 04: And that's not the logic, and that's not how the PTEP has been applying it, Your Honor. [00:23:05] Speaker 04: And we'll take the AT&T case that was cited by Secured Access in its argument and its reply brief. [00:23:11] Speaker 04: In that case, the board applied the same methodology that the board applied in this case, but it reached a different conclusion. [00:23:18] Speaker 04: And the reason was that when it looked at the claims and it looked at the written description... What do you mean by the same methodology? [00:23:25] Speaker 04: The methodology is that you need to look at the claims. [00:23:27] Speaker 04: What is the claimed invention? [00:23:29] Speaker 04: This is not a word search for a particular word that limits the claims only to a financial product or service. [00:23:35] Speaker 04: That would be diametrically opposed to what Congress was intending to do with this statute. [00:23:40] Speaker 04: You look at the claims. [00:23:42] Speaker 04: What is the claimed invention? [00:23:43] Speaker 04: Next, look to the written description. [00:23:46] Speaker 04: What embodiments are described? [00:23:48] Speaker 04: Is there something in the written description that describes this particular claimed invention as being useful in the financial services context? [00:23:56] Speaker 04: If the answer is yes, [00:23:57] Speaker 04: The board says that weighs in favor of finding that it's a financial product or service. [00:24:03] Speaker 04: Next, are there other things that weigh in favor of finding it to be either a financial product or service or not a financial product or service? [00:24:11] Speaker 04: One of those factors might be, have you sued 50 banks and nobody else for infringing these claims? [00:24:17] Speaker 04: If that's the case, that weighs in favor of finding that the patented claims are used in a financial product or service. [00:24:24] Speaker 01: Is it enough if it's incidental to a financial service? [00:24:28] Speaker 04: That's not what the board found was the case here. [00:24:31] Speaker 04: The board found that it was actually used. [00:24:33] Speaker 04: The claims were actually used. [00:24:34] Speaker 04: That's an appendix 10. [00:24:35] Speaker 04: But the PTO has expressed its view that incidental to a financial product or service would be sufficient. [00:24:42] Speaker 04: And the board, in the alternative, found that it was also incidental. [00:24:46] Speaker 04: But that issue doesn't need to be raised. [00:24:48] Speaker 04: It doesn't need to be decided here. [00:24:50] Speaker 04: Because here, the only practical uses of the invention, the only uses in real life described in the patent itself, [00:24:57] Speaker 04: are for online banking. [00:24:59] Speaker 04: And think about what this invention is useful for. [00:25:02] Speaker 04: The claims here are not useful for the vast, vast majority of websites. [00:25:07] Speaker 04: You don't use this because you're going to washingtonpost.com to read the news. [00:25:11] Speaker 04: Our law firm website wouldn't use this technology. [00:25:13] Speaker 01: But there's nothing in the patent that says that, is there? [00:25:18] Speaker 04: There is, because what the patent says, and this is what the board found at appendix pages seven through 10, [00:25:25] Speaker 04: The board found that the patent describes a particular need when somebody is going to be sharing sensitive information on a website for that person to feel comfortable. [00:25:36] Speaker 04: This is about the issue that if somebody is going to enter their login and password for the bank account, if they're going to enter their credit card information, [00:25:45] Speaker 04: they need to feel like they are giving that information to the correct website. [00:25:50] Speaker 01: How about if they're called upon to put in their social security number in order to buy something? [00:25:59] Speaker 04: I think if it's in the context of performing online commerce, if it is the sharing of that information for the purpose of moving money from one party to another party, [00:26:09] Speaker 04: That is very clearly a financial product or service. [00:26:13] Speaker 04: That is at the heart of what financial services is. [00:26:14] Speaker 01: How about if it's to put in a social security number in order to obtain a license? [00:26:20] Speaker 04: I think, again, if that had to do with the movement of money, it likely would be a financial service. [00:26:26] Speaker 04: However, it's important to remember. [00:26:29] Speaker 01: When would I go online other than talk to my friends? [00:26:32] Speaker 01: That does not involve moving money from one place to another. [00:26:38] Speaker 04: Your Honor, I think the majority of times that you go online does not involve that. [00:26:42] Speaker 04: If you're going to access information about a store, about a restaurant, if you're going to read the news, if you're going to go online to see what time movies are playing, all of that has nothing whatsoever to do with this invention. [00:26:55] Speaker 04: The claims here have particular use in the context of websites that require you to exchange very secure information. [00:27:04] Speaker 04: One key example of that. [00:27:06] Speaker 03: Interesting phrase, have particular use. [00:27:08] Speaker 03: What does that mean? [00:27:09] Speaker 03: That is one particular use? [00:27:11] Speaker 03: Yes, sir. [00:27:12] Speaker 03: You mean more than that, because that can't be enough. [00:27:14] Speaker 03: You mean predominant use, or what? [00:27:17] Speaker 04: In this case, we're in a category of patent where the only use described in the specification and the only accused use is specifically in financial services. [00:27:26] Speaker 04: So we don't need to get to that issue. [00:27:28] Speaker 03: Does filing a CBM require a lawsuit to have been brought or no? [00:27:32] Speaker 04: It does, Your Honor. [00:27:33] Speaker 03: It does. [00:27:33] Speaker 03: And so suppose there's one lawsuit brought in that defendant files a CBM. [00:27:39] Speaker 03: What does one does that? [00:27:42] Speaker 03: And that happens, say, to be against the party that filed the DJ action against them. [00:27:50] Speaker 03: Would that be a CBM when they go to the board? [00:27:56] Speaker 04: Standing alone, Your Honor, one single fact like that would not [00:27:59] Speaker 04: I do not believe would be found to be significant enough. [00:28:02] Speaker 04: And we have examples from the PTAB where the PTAB has said that particular fact was not significant enough in and of itself to cause this to be a CVM patent. [00:28:11] Speaker 04: That, in fact, is my client, PNC, in the PNC versus IB CVM petition that's cited by appellants in their brief. [00:28:19] Speaker 04: The board said that wasn't enough in that case. [00:28:21] Speaker 04: But here the board is engaged in a way of a number of factors [00:28:25] Speaker 04: This court is to review that way under an arbitrary and capricious standard, giving substantial evidence review to the facts found by the board. [00:28:34] Speaker 01: That's true if they use the right definition for what is a CBM, isn't it? [00:28:41] Speaker 04: That is true, Your Honor. [00:28:42] Speaker 04: And make no mistake, what is being argued by Secure Access is that the claims need to be limited to a particular financial product or service. [00:28:52] Speaker 04: They're saying there needs to be a claim limitation [00:28:55] Speaker 04: that ties it to a financial product or service. [00:28:59] Speaker 00: They're arguing that the claim has to say financial. [00:29:02] Speaker 04: That's what they're arguing, Your Honor, yes. [00:29:03] Speaker 04: That there needs to be some money word in the claim that you have to be able to spot and circle and say that specifically limits this to a financial transaction, whether that be sales or something else. [00:29:14] Speaker 00: Right. [00:29:14] Speaker 00: The statute talks about operations used in a financial product. [00:29:21] Speaker 04: That's correct. [00:29:22] Speaker 04: It's broader, Your Honor. [00:29:23] Speaker 04: Like electricity. [00:29:25] Speaker 04: Your honor, no, not like electricity. [00:29:27] Speaker 04: Why not? [00:29:28] Speaker 04: Well, first, because if there was some invention that covered electricity, it would likely be a technological invention that would be specifically parked up. [00:29:34] Speaker 03: We don't get to that yet. [00:29:37] Speaker 03: But you think that the threshold determination would actually cover electricity and glass and desks and HVAC systems and paper and pencils and everything in computers, which are used overwhelmingly in the world in businesses? [00:29:53] Speaker 03: No. [00:29:53] Speaker 03: This is all going to be in CBM. [00:29:55] Speaker 03: Unless they fall out under the technology exception. [00:30:01] Speaker 04: No, absolutely not, your honor. [00:30:02] Speaker 04: And again, that's not how the board applies the statute. [00:30:06] Speaker 04: And that's not how it was applied here. [00:30:08] Speaker 04: There are a number of factors to look to. [00:30:09] Speaker 04: In your electricity example, if the patent is about some improvement to electricity that has to do with data processing, it has no particular connection or utility specific to financial products or services, the board has on many occasions [00:30:25] Speaker 04: found that that does not meet the financial product or services. [00:30:29] Speaker 01: Well, let me ask you this question. [00:30:31] Speaker 01: Could your invention be used by me or by the company if I want to go online to my electric company and ask them what was my usage last April? [00:30:48] Speaker 01: And they say to me, you have to identify yourself with your social security numbers. [00:30:54] Speaker 01: which I'm concerned about security. [00:30:57] Speaker 01: So we use your system. [00:31:00] Speaker 01: Can it be used in that way? [00:31:03] Speaker 04: I think it could be used in that way. [00:31:06] Speaker 04: Would it have specific utility in that? [00:31:09] Speaker 04: Is the patent described as being useful for that particular application? [00:31:12] Speaker 04: No. [00:31:14] Speaker 01: There's no financial transaction involved in that, whatever. [00:31:19] Speaker 04: If you're not using it, I assume you're using the website because you want to determine whether you've built correctly or not. [00:31:26] Speaker 01: No, I want to find out how I'm doing turning off my lights at night. [00:31:32] Speaker 01: So I want to know what my usage is. [00:31:35] Speaker 04: And if the invention was used in that context, that would not bar it from being a CBN eligible patent just because it has uses outside. [00:31:42] Speaker 04: of the financial products and services. [00:31:44] Speaker 01: That really gets at the question I'm wondering about. [00:31:47] Speaker 01: If the invention can be used both in and out of financial services, does that make it a CBM or keep it from being a CBM or it has nothing to do with it? [00:32:00] Speaker 04: It has something to do with it, but it is not a binary issue. [00:32:04] Speaker 04: If the invention has general utility, that is a factor that should be weighed in determining whether [00:32:11] Speaker 04: It is a covered business method patent, and that's exactly what the board did in this case, and it has done in other cases. [00:32:17] Speaker 04: It is not a dispositive issue, and that has to be the answer, because when this, first of all, it's how the statute is written. [00:32:24] Speaker 04: It doesn't say solely used or exclusively used in a financial product or service. [00:32:30] Speaker 04: And second, it's very clear from the legislative history that that was the intent of Congress, that it not be the case that only uses by financial institutions or in that context [00:32:41] Speaker 04: would be permissible for covered business method review. [00:32:45] Speaker 00: Thank you, counsel. [00:32:46] Speaker 04: My time is up. [00:32:47] Speaker 04: Thank you. [00:32:47] Speaker 00: We have your argument. [00:32:49] Speaker 00: Mr. Wright has some rebuttal time. [00:32:51] Speaker 00: We'll give you three minutes. [00:32:57] Speaker 05: Thank you, your honor. [00:32:59] Speaker 05: I'd like to address just a few things. [00:33:00] Speaker 05: First of all, counsel, I want to dispute one issue. [00:33:03] Speaker 05: Counsel said that it was our position that the claim language had to state financial or some sort [00:33:10] Speaker 05: financial term within the claim language. [00:33:12] Speaker 05: That was in the response brief. [00:33:13] Speaker 05: We addressed that in our gray brief and said, no, that's not at all what we're claiming. [00:33:17] Speaker 05: Our primary point here, the procedural point, was that there does have to be some reference to the claim language, though. [00:33:24] Speaker 05: And the board here didn't even cite our claim language when it went through its analysis and determined that the 191 patent was a CBM patent. [00:33:34] Speaker 05: He said that all of the cases that we cite apply the same methodology. [00:33:39] Speaker 05: And they don't, as we also pointed out in our briefing, every one of those cases where we cited to the PTAB's decision on CVM, the PTAB cited specific language within the claim to determine that there was some link to a financial product or service. [00:33:59] Speaker 05: It wasn't necessarily a term that said sale or price or anything, but they at least went through and did the analysis and said there's a link in the claim [00:34:08] Speaker 05: that ties this to a financial product or service. [00:34:11] Speaker 05: We've still not heard any allegation of a term in our claim that links this to a financial product or service. [00:34:18] Speaker 05: The closest we've heard was, Judge Laurie, your questions at the beginning of my arguments before asking about data processing and things of that nature, which of course we respectfully suggest refer to the security aspect of this and not to the financial product or service. [00:34:37] Speaker 05: the AT&T board held that general utility patents were not CBM patents. [00:34:46] Speaker 05: There's a statement directly from that decision that said, lastly, statements in the specification that a claimed invention has particular utility in financial applications may weigh in favor of determining the patent is eligible for covered business method patent review. [00:35:02] Speaker 05: However, we do not find covered business method patent review available [00:35:05] Speaker 05: for patents that claim generally useful technologies that also happen to be useful to financial applications. [00:35:13] Speaker 05: You asked about other websites that might use this and the statement was made earlier that the only potential utility for this is in the financial industry. [00:35:27] Speaker 05: I would suggest that social media sites [00:35:30] Speaker 05: would be good candidates for this. [00:35:32] Speaker 03: Anyplace for you. [00:35:33] Speaker 03: A more particular statement that was made was that financial uses are the only, I think the language was, concrete ones called out in the spec. [00:35:43] Speaker 03: Is that true? [00:35:44] Speaker 05: They are the only concrete ones called out in the spec. [00:35:46] Speaker 05: But I still think that those are examples of how this might be used. [00:35:51] Speaker 05: And I think that this patent is still a general utility patent that [00:35:57] Speaker 05: is not tied necessarily to the financial services industry. [00:36:00] Speaker 05: I see my time's up. [00:36:01] Speaker 05: There are no other questions. [00:36:02] Speaker 00: Thank you, Mr. Wright. [00:36:04] Speaker 00: We'll take this case under advisement.