[00:00:05] Speaker 04:
Be seated, please.

[00:00:20] Speaker 04:
We have four argued cases this morning.

[00:00:23] Speaker 04:
The first of these is number 15-1372, TLI Communications versus AV Automotive.

[00:00:31] Speaker 04:
Mr. Whitman.

[00:00:38] Speaker 04:
You may start.

[00:00:46] Speaker 03:
May it please the court.

[00:00:48] Speaker 03:
All of the 295 patent claims satisfy the Alice Mayo two-step test for patent eligibility under Section 101.

[00:00:56] Speaker 03:
At step one, every independent claim

[00:00:59] Speaker 03:
recites a communication system that requires a telephone having an integrated image recording device and a component for allocating classification information to those digital images.

[00:01:11] Speaker 04:
Your client doesn't claim to have invented the camera phone, right?

[00:01:18] Speaker 03:
That's not what the claim is directed to.

[00:01:20] Speaker 03:
The claim is not directed to a camera phone per se, but it is directed to a phone with an integrated camera

[00:01:28] Speaker 03:
having memory to store images and having a way to classify information to those images.

[00:01:34] Speaker 04:
Would a digital camera attached to a phone qualify as an integrated phone within the media client?

[00:01:46] Speaker 03:
I think perhaps, but it would still not, there's no evidence that any such device existed or had classification information.

[00:01:53] Speaker 04:
Well, except that you just said, I thought that your client didn't claim to have invented that.

[00:02:01] Speaker 03:
Well, we back up to 1996 when the patent was filed and the original signing... But your client does not claim to have invented the camera phone.

[00:02:12] Speaker 03:
uh... no i don't think so but technically the first camera phone hit the market in two thousand four years after this patent was filed.

[00:02:20] Speaker 01:
But that's, I mean, your blue roof does a really good job of trying to convince us that this is patentable because the camera phone is so novel.

[00:02:28] Speaker 01:
Your claims and your specifications don't claim a camera phone or even one with data storage.

[00:02:35] Speaker 01:
Your claims are about a system and apparatus for taking

[00:02:40] Speaker 03:
sending and storing classified isn't that right uh... i think the claims that are more narrow than that in fact uh... about half of the limitations of every independent claims directed to telephone features and the telephone features do require integrated camera unit but that's not all they do require a way to classify either sorry when you start talking about the telephone and the telephone features it sounds to me like you're saying you invented the telephone camera but i don't see anywhere in this patent that says you did and if

[00:03:08] Speaker 01:
If you're trying to say it did, I don't see how it would remotely even be enabled.

[00:03:13] Speaker 03:
There's no claim directed to a simple camera phone.

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So it's a combination of a camera phone with the way to integrate to bring in classification information to classify those images.

[00:03:24] Speaker 03:
Nothing like that was conventional.

[00:03:26] Speaker 01:
So the camera phone doesn't add any patentable weight?

[00:03:31] Speaker 03:
It works in combination.

[00:03:33] Speaker 03:
I don't think that it could.

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I'm not sure that it could simply be thrown into the curve.

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It's a system that includes all of these elements that work together along with the server on the back end.

[00:03:44] Speaker 03:
So the server is in every independent claim as well.

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So you need a phone that communicates with the server in such a way.

[00:03:50] Speaker 01:
I know, but I mean, I struggle with this too because you have all, it's very hard for me when you read your claims with all these very concrete, tangible things to say that it's directed to an abstract idea.

[00:04:04] Speaker 01:
except for the way that Alice has told us to look at it, and the way we've looked at it in other cases, which is to look for, is at the heart of this an abstract idea, and is there anything that adds tangible weight?

[00:04:14] Speaker 01:
And a server, which I think is a computer, right?

[00:04:17] Speaker 01:
I mean, it's some kind of computer.

[00:04:19] Speaker 01:
We've never found, since Alice, to be a patentable weight.

[00:04:25] Speaker 03:
OK.

[00:04:25] Speaker 03:
There's two parts to this, to answer this question.

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The first is that Alice does say, in step two,

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is there a technology improvement?

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Is this a technical patent?

[00:04:36] Speaker 04:
OK, so what's the improvement?

[00:04:37] Speaker 03:
Well, there's at least a few here.

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The first was discussed during the original prosecution when Prior Art came up with a digital camera.

[00:04:45] Speaker 03:
And the patent he was explaining back then in 1996 that memory was very expensive and very limited.

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Even the digital cameras at the time could only take a couple images.

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And that was a problem that this invention solved.

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This invention

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How did it solve that?

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It solved that by allowing that these images that you capture on a camera phone can now be offloaded to the server so that the memory limitation was obviated by the integrated camera and the classification information.

[00:05:14] Speaker 03:
So a user could input classification information, take the picture and send it to a server and then go get it later.

[00:05:20] Speaker 04:
Storing the images

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not in the phone itself, but in a separate server.

[00:05:27] Speaker 03:
This was discussed during the original prosecution, back and forth between the examiner, and it actually distinguished that reference.

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which was a digital camera.

[00:05:36] Speaker 04:
So what else was invented here?

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Another inventive step is if we look at dependent claims 10 and 11, and this does bring the server back in.

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So it's not just an ordinary server.

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Back in 1996, cellular transmissions were very slow and very costly.

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So actually, transmitting a digital image from a phone would take time and cost money.

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Claims 10 and 11 describe a system where the server receives these images

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analyzes the images and says, OK, you just sent one that's very big.

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It took a long time.

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It cost a lot of money.

[00:06:10] Speaker 03:
The server communicates back to the telephone and says, please send me an image of lesser resolution so that we can save time and expense.

[00:06:19] Speaker 03:
And again, that was not a conventional feature.

[00:06:21] Speaker 03:
OK, what else is there?

[00:06:27] Speaker 01:
Where does it say in 10 and 11 that it communicates back and says, send a smaller one?

[00:06:34] Speaker 01:
I mean, 10 includes an image analysis unit for determining.

[00:06:38] Speaker 01:
We're talking about the 295 pattern?

[00:06:40] Speaker 01:
Yes.

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It talks about determining quality.

[00:06:44] Speaker 03:
Yes, and in the spec, the quality.

[00:06:46] Speaker 01:
And then it says controlling unit for controlling resolution.

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Yes, on the phone.

[00:06:52] Speaker 03:
So 10 says we analyze the image itself.

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Quality would be a high resolution image is of high quality.

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It's a large image.

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So the server in 10 figures out the quality, the size of the image.

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In an 11, the server is saying, OK, there's a control unit.

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I can control the resolution, the digital images, in the telephone unit.

[00:07:14] Speaker 03:
So the server is communicating back to the telephone saying to send me a lower quality or a higher quality image.

[00:07:21] Speaker 03:
You can actually increase the size of the image at the time.

[00:07:25] Speaker 03:
And those were not conventional features.

[00:07:28] Speaker 03:
There's no evidence that they were conventional features.

[00:07:30] Speaker 04:
So what else do we have?

[00:07:32] Speaker 03:
storage off-site storage we have communication as to the resolution what else and I think it's the the way to classify the images on the recording device itself so as a patent explains that the user who is taking these images understands those images fast

[00:07:53] Speaker 03:
that person can allocate information to those images by typing something in through the keypad.

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You can say these images are from the beach or something like that.

[00:08:03] Speaker 03:
It's typed on the recording device, which is the phone, and then transmitted to the server.

[00:08:07] Speaker 04:
Classification information.

[00:08:09] Speaker 03:
Classification information on the recording device itself, also.

[00:08:13] Speaker 04:
OK.

[00:08:13] Speaker 04:
Do we have anything else?

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Are those the three things?

[00:08:15] Speaker 03:
I think those are the three most important things.

[00:08:18] Speaker 00:
So Mr. Williams, you're not saying that the camera was an inventive concept here.

[00:08:23] Speaker 03:
The camera itself is not an event of concept, but the combination in the claim using the camera on the telephone along with classification information.

[00:08:34] Speaker 00:
What was new about using the camera with the phone?

[00:08:38] Speaker 03:
It was the ability to now offload images.

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You can use the telephone system itself, the transmission system on the telephone, to offload images.

[00:08:48] Speaker 03:
And that circumvented the telephone's limited memory capacity.

[00:08:53] Speaker 04:
You didn't mention the camera phone as something that was invented.

[00:08:57] Speaker 04:
And I think you said repeatedly this morning that isn't what qualifies as step two of Alice.

[00:09:04] Speaker 04:
You mentioned three other things.

[00:09:05] Speaker 03:
Yes, I think it's one factor among the other claim elements.

[00:09:09] Speaker 04:
What do you mean one factor?

[00:09:11] Speaker 04:
I asked you for a list and you didn't say that the camera phone

[00:09:15] Speaker 04:
was something that was inventive that qualified at the second step of Alice.

[00:09:19] Speaker 03:
Well, I think that just incorporating a camera into a telephone itself would have meant that the telephone could only take a couple images before the memory was filled up.

[00:09:28] Speaker 03:
It really wouldn't have been, at the time, a viable device.

[00:09:32] Speaker 03:
It wasn't this invention.

[00:09:34] Speaker 01:
So the idea of transmitting these digital images wirelessly through the cell phone service or whatever is part of your claim.

[00:09:43] Speaker 01:
But that's part of the communications aspect.

[00:09:45] Speaker 03:
It's part of the communications aspect.

[00:09:47] Speaker 03:
It's not claiming the wireless network.

[00:09:48] Speaker 03:
No, no, no, not at all.

[00:09:51] Speaker 03:
It really, the claims are primarily directed to the improved telephone, the telephone that did not, was not conventional before this invention was filed.

[00:10:00] Speaker 01:
The telephone with the... I'm sorry, you can come back to the telephone.

[00:10:04] Speaker 01:
How did you improve the telephone?

[00:10:05] Speaker 01:
You didn't improve the telephone.

[00:10:07] Speaker 01:
You didn't give it bigger memory.

[00:10:08] Speaker 01:
You didn't give it the capacity to send things wirelessly.

[00:10:11] Speaker 01:
You didn't improve the camera.

[00:10:14] Speaker 01:
You created a system that could offload these images.

[00:10:17] Speaker 03:
Yes.

[00:10:18] Speaker 03:
Offload the images in a specific way using classification information that can be recorded on the telephone.

[00:10:24] Speaker 04:
And the problem is that sending the images to an offsite server was something that was conventional before this patent was filed, right?

[00:10:33] Speaker 03:
I don't think that there's any evidence that offloading images with classification information

[00:10:42] Speaker 03:
No, no.

[00:10:43] Speaker 04:
Leave out the classification information.

[00:10:45] Speaker 04:
That offloading images to a server was known and was common before the patent was filed.

[00:10:54] Speaker 03:
I'm not sure that that's correct.

[00:10:56] Speaker 03:
I do think that it was known to have to take a memory card from a camera, take that memory card, plug it into a computer, and then that would then... I thought it was undisputed that it was known to transmit images

[00:11:10] Speaker 04:
from a camera to an off-site server?

[00:11:16] Speaker 03:
I don't think it was well-known or generic.

[00:11:20] Speaker 03:
And there's a citation to that that is lacking at the moment.

[00:11:26] Speaker 03:
It doesn't come to mind that that wasn't generic at the time to transmit images to a server, and the server would then classify those images.

[00:11:33] Speaker 03:
No, no.

[00:11:34] Speaker 04:
Well, I think classification was not part of my question.

[00:11:37] Speaker 04:
Understood.

[00:11:37] Speaker 04:
And what I'm trying to understand, and what the patent itself says, is what you're claiming is inventive here is the classification step, or the classification aspect of it, right?

[00:11:50] Speaker 04:
That's one step, yes.

[00:11:52] Speaker 03:
But I don't, I'm unaware of a telephone or any transmission system that would just send images to a server.

[00:12:00] Speaker 01:
I think the common practice... So if your patent was just a device for transmitting digital images to a server,

[00:12:08] Speaker 01:
Do you think that's patent-eligible, assuming you're not claiming the device and you're not claiming the server?

[00:12:16] Speaker 03:
I honestly don't know the answer to that, because the invention is much more than that.

[00:12:23] Speaker 03:
But that is definitely one aspect of the claim.

[00:12:26] Speaker 03:
Claims are very detailed.

[00:12:28] Speaker 03:
That's one aspect.

[00:12:29] Speaker 03:
And I think it's one unconventional feature of the claims, among others.

[00:12:37] Speaker 04:
Could we turn to the indefiniteness issue?

[00:12:42] Speaker 04:
I'm not seeing where this structure is for means for allocating classification information.

[00:12:49] Speaker 03:
Sure.

[00:12:52] Speaker 03:
So here, I think the district court's error was that the court found that the phone's keypad was not linked to the means for allocating classification information.

[00:13:02] Speaker 03:
But if we look at column 6, line 45, the specification states

[00:13:06] Speaker 03:
with reference to an alternative embodiment that, quote, in terms of its function, the allocation means may be integrated into the keypad, for example, by using key combinations.

[00:13:18] Speaker 04:
That's not the structure for the means for allocating.

[00:13:24] Speaker 04:
It's just saying this is a way of entering the allocation information.

[00:13:28] Speaker 03:
Well, it ties into column three at line 27, where the specification also says,

[00:13:35] Speaker 03:
the individual who records the image probably best understands the information which describes the image and can easily allocate that description to the image style.

[00:13:44] Speaker 04:
So here again... So that's done by an individual?

[00:13:47] Speaker 03:
Through a keypad, for example.

[00:13:49] Speaker 04:
By using a keypad, but the individual is performing the allocation step?

[00:13:54] Speaker 03:
Via the keypad of the phone, as described in column 6, line 45.

[00:13:59] Speaker 03:
It's that the allocation means

[00:14:02] Speaker 03:
In terms of its function, the function of the allocation means maybe integrated into the keypad.

[00:14:07] Speaker 03:
So when the individual can classify his data, he's taking these images, he knows what the images are.

[00:14:15] Speaker 03:
He's typing in information through the keypad.

[00:14:17] Speaker 03:
So it's very similar, for example, if I'm at a laptop computer.

[00:14:22] Speaker 04:
What King says that a person is structure.

[00:14:24] Speaker 03:
No, it's a keypad.

[00:14:25] Speaker 03:
It's a keypad.

[00:14:26] Speaker 03:
So the person is the one who comes up with the allocation information, types it into the keypad.

[00:14:31] Speaker 03:
It could be anything.

[00:14:32] Speaker 04:
Well, the keypad doesn't do the allocation.

[00:14:34] Speaker 03:
Keypad, according to our expert declaration, it does.

[00:14:39] Speaker 03:
And it's, again, if I'm at a computer and I'm operating in Word, I'm typing in letters, my letters appear in the Word document.

[00:14:46] Speaker 03:
If I switch to a different mode, for example, an Excel spreadsheet, I type in those letters

[00:14:52] Speaker 03:
show up in my Excel spreadsheet.

[00:14:54] Speaker 03:
And it's no different on the telephone.

[00:14:56] Speaker 03:
So the telephone has two modes of operation.

[00:14:59] Speaker 03:
The specification says it can be in telephone mode or it can be in camera mode.

[00:15:03] Speaker 03:
So if I'm in telephone mode and I'm typing in, what I'm typing in is allocated to telephone, it's somebody's phone number.

[00:15:10] Speaker 03:
But if I'm in camera mode and I'm typing something in through the keypad, it's

[00:15:15] Speaker 03:
it's allocated to those images associated with the images.

[00:15:18] Speaker 04:
OK.

[00:15:19] Speaker 04:
You're into your rebuttal time here.

[00:15:21] Speaker 04:
We'll give you two minutes for rebuttal.

[00:15:22] Speaker 04:
Thank you.

[00:15:22] Speaker 04:
Thank you, Mr. Lew.

[00:15:38] Speaker 02:
Mr. Lamley?

[00:15:39] Speaker 02:
May I please the court?

[00:15:41] Speaker 02:
Your Honor, I was pleased, I think, to hear

[00:15:44] Speaker 02:
learning councils say that the claim here is not that they have invented a camera phone.

[00:15:49] Speaker 02:
That's something that they have danced around a little bit on this appeal.

[00:15:53] Speaker 02:
I understood council to say three or maybe four things that they thought were inventive.

[00:15:59] Speaker 02:
The invention here is directed to a classification system for photos.

[00:16:04] Speaker 02:
I suppose that idea is the idea of classifying photos on the server.

[00:16:08] Speaker 02:
That classification is selected by people, not by the computer itself, as the claim 17 makes clear.

[00:16:14] Speaker 02:
Notably, the claims aren't limited to any particular means of classification, any particular algorithm for classification.

[00:16:21] Speaker 02:
They encompass any possible classification scheme, date, order taken, subject matter tags, anything.

[00:16:27] Speaker 01:
Can I redirect you a little bit?

[00:16:28] Speaker 01:
I don't find the classification stuff particularly eligible either.

[00:16:35] Speaker 01:
But it does seem to me that if the idea of you have a camera phone and because it can't store

[00:16:43] Speaker 01:
a lot of stuff, and you can't run to your computer in between, you know, storing two or three pictures.

[00:16:49] Speaker 01:
The notion of being able to wirelessly transmit them without plugging it in, if you were the first person to think of it, may have been patent eligible.

[00:16:58] Speaker 02:
I think, Your Honor, I think that might well be true.

[00:17:01] Speaker 02:
We don't need to worry about it here because it's absolutely clear that that is not the invention.

[00:17:06] Speaker 02:
Okay, why is that clear?

[00:17:06] Speaker 02:
Well, so it's clear from column one of the patent in the background section of the invention.

[00:17:11] Speaker 02:
where the patentee tells us so-called cellular telephones may be used for image transmission as is known, for example, from U.S.

[00:17:21] Speaker 02:
Patent 989, entitled Method and System for Enhanced Data Transmission in a Cellular Telephone System.

[00:17:28] Speaker 02:
Digital image cameras, immediately before that, they say, are already known in the prior art.

[00:17:35] Speaker 02:
The invention here is not the idea of transmitting photos over the internet.

[00:17:41] Speaker 02:
Patent quite forthrightly admits that that's well known.

[00:17:44] Speaker 02:
If there is an invention here, and we do not think there is, it is in the classification system.

[00:17:50] Speaker 04:
The idea is... I think what Judge Hughes was asking about is whether it was known to transmit the images for storage to a server that was not part of the phone.

[00:18:07] Speaker 02:
Well, Your Honor, I think the answer is the images are being transmitted to somewhere.

[00:18:14] Speaker 02:
And in the background section of the invention, we know you can transmit images from a cellular phone.

[00:18:20] Speaker 02:
We know that digital image cameras are already available.

[00:18:25] Speaker 02:
Video conferencing systems are used to transmit spoken data.

[00:18:28] Speaker 02:
Television camera and a telephone, which provides for audio data and image data to be transmitted in common through a telephone line are known.

[00:18:36] Speaker 02:
compression is known.

[00:18:37] Speaker 02:
So the only thing that is not specifically listed there is a server.

[00:18:44] Speaker 02:
Now, I can imagine, again, that a patentee might have invented a specific server designed or optimized to achieve this.

[00:18:52] Speaker 02:
But this server is not that server.

[00:18:54] Speaker 02:
To the contrary, TLI before the PTAB proposed and got adopted a definition of server in this claim as, quote,

[00:19:03] Speaker 02:
a computer or system of computers that makes resources available to other computers, unquote.

[00:19:08] Speaker 02:
That is an utterly generic server.

[00:19:11] Speaker 02:
And the server functions defined in Claim 17 are precisely the functions that any server performs.

[00:19:18] Speaker 02:
We're receiving data.

[00:19:19] Speaker 02:
We're extracting it.

[00:19:20] Speaker 04:
I guess what you're saying is that it was known to store digital images on servers.

[00:19:26] Speaker 04:
Yes, Your Honor.

[00:19:28] Speaker 02:
And I think this Court has

[00:19:32] Speaker 02:
twice made clear that these performed functions of a server are well-known and not sufficient to overcome Alice.

[00:19:39] Speaker 02:
In the content extraction case, this court said that data collection, recognition, and storage is undisputedly well-known and abstract.

[00:19:46] Speaker 02:
And in the cyber phone case, admittedly unpublished, I think even more closely on point, this court said the well-known concept of categorical data storage, the idea of collecting information in classified form

[00:19:58] Speaker 02:
then separating and transmitting that information according to its classification is an abstract idea that is not patent eligible.

[00:20:05] Speaker 00:
Well, let me ask you that the Alice, step two of Alice Mayo requires that we look to see if there's an inventive concept, correct?

[00:20:15] Speaker 00:
And in the Deere case, the court said that novelty is not relevant in determining whether subject matter is patentable under 101.

[00:20:26] Speaker 00:
What is the line between, in other words, that seems to say that you can have an inventive concept for purposes of our 101 analysis without having something that is necessary, not anticipated, or non-obvious?

[00:20:42] Speaker 02:
What's the line there?

[00:20:44] Speaker 02:
It's an excellent question, and I think part of the problem is that the Supreme Court's cases since Deere have moved in a somewhat different direction.

[00:20:51] Speaker 02:
As this court said just last year, we need to read Deere through the lens of Alice and Mayo and Bilsky and all of these other cases.

[00:21:01] Speaker 02:
When you read what those cases say Deere was doing, those cases say Deere was actually limited to a circumstance in which there was actually a new physical hardware element attached here.

[00:21:12] Speaker 02:
When you go back and read Deere, I think one can reasonably question whether that's actually true.

[00:21:17] Speaker 02:
But it is certainly how the Supreme Court seems to view Deere today.

[00:21:21] Speaker 02:
And it's how this court says we need to read Deere.

[00:21:24] Speaker 00:
So you're saying, what you would be saying is you're saying where the law now is based on the Supreme Court post-Deere and our court is that if something that is in the patent is obvious or anticipated, it's not an inventive concept.

[00:21:44] Speaker 02:
I think that's right, Your Honor, and the only... No, that can't be right.

[00:21:48] Speaker 04:
That's not...

[00:21:49] Speaker 04:
That's not what the Supreme Court is telling us, is it?

[00:21:51] Speaker 04:
I mean, it seems to me that what you're dealing with anticipation and obviousness, you may be dealing with a single reference or two references, whereas the theory of Alice is that something was well known, a well known concept, which isn't shown by finding a single reference.

[00:22:08] Speaker 02:
So I think that's a fair amendment, Your Honor.

[00:22:11] Speaker 02:
And I guess I would also say that there may be circumstances in which a particular combination of well-known technology could itself be an inventive concept.

[00:22:24] Speaker 00:
You said earlier, I think, that the concept of a digital camera was in the prior art that's referenced.

[00:22:33] Speaker 00:
Yes, Your Honor.

[00:22:34] Speaker 00:
And what is that?

[00:22:37] Speaker 00:
The 989 patent?

[00:22:42] Speaker 02:
Well, no, Your Honor.

[00:22:44] Speaker 02:
TLI's own patent says this quite clearly twice.

[00:22:48] Speaker 02:
First, on column 1, lines 27 to 28, digital image cameras are currently available on the market, as known, for example, from the publication of a particular discussion of a camera.

[00:23:00] Speaker 02:
And again, on column 6, lines 1 and 2,

[00:23:02] Speaker 02:
The digital image pickup unit, which is what they're claiming they've put into the telephone, operates as a digital photo camera of the type which is known.

[00:23:12] Speaker 00:
Now that's not just a statement.

[00:23:13] Speaker 00:
But where do we have a telephone with a camera in it?

[00:23:15] Speaker 02:
Well, Your Honor, we have an arrangement with a television camera and a telephone which provides for audio data and image data to be transmitted in common through a telephone line is known, says the patent again.

[00:23:27] Speaker 02:
This is column one, lines 35 to 42.

[00:23:30] Speaker 02:
And they cite a patent, the 587 patent, entitled Transmission System for Still Picture TV Telephone.

[00:23:37] Speaker 02:
Now, I think what's notable here is the patent doesn't claim that it is inventing a camera phone.

[00:23:44] Speaker 02:
When you begin with the summary of the invention, what the patent says is the present invention addresses the problem of communicating and administering digital images by providing for recording, administration, and archiving of digital images simply fast

[00:23:57] Speaker 02:
and in such a way that the information therefore may be easily tracked.

[00:24:00] Speaker 00:
But the camera phone, at least according to Mr. Whitman, does seem to be an important part of the way the alleged invention works.

[00:24:07] Speaker 02:
Well, Your Honor, I think... It's an important component of it.

[00:24:11] Speaker 02:
Maybe, although I think one of the difficulties that TLI has here is that TLI's argument in the district court was not, we invented a camera phone.

[00:24:20] Speaker 02:
Their argument in the district court was, we invented a classification system.

[00:24:23] Speaker 02:
They forthrightly say on page seven of their brief, we didn't invent a camera phone.

[00:24:27] Speaker 02:
Camera phones weren't invented until 2000.

[00:24:31] Speaker 02:
Their own inventor's declaration says, well, I came up with this idea.

[00:24:34] Speaker 02:
And then after I came up with this idea, Siemens launched on a project to try to develop a camera phone.

[00:24:40] Speaker 02:
None of that suggests that he invented the camera phone.

[00:24:43] Speaker 02:
And I think even if they were to try to make that argument now, it was waived in the district court where they took exactly the opposite tack.

[00:24:49] Speaker 02:
And even today at oral argument, I did not understand learned counsel to be saying that they invented a camera phone.

[00:24:56] Speaker 00:
Now, when it comes back to Alice, I think the... Well, let me ask you this.

[00:25:03] Speaker 00:
If the camera phone is an important part of the operation of the system and it wasn't

[00:25:10] Speaker 00:
in the priority at the time.

[00:25:12] Speaker 00:
Would it be, even if they're not claiming it, an inventive concept?

[00:25:16] Speaker 02:
Well, so the camera phone itself, I think, could not be the inventive concept under Alice for the simple reason that it is not the idea, it is not the thing they invented at all.

[00:25:26] Speaker 04:
They're also saying, are they not, that's what I thought I heard this morning, is that attaching a digital camera to a phone would come within the claims.

[00:25:37] Speaker 04:
Yes, Your Honor.

[00:25:39] Speaker 04:
asserted to be an invented step.

[00:25:42] Speaker 02:
I think that's right, Your Honor, and the specification bears that out.

[00:25:45] Speaker 02:
So at the bottom of column 5, line 62, as an alternative to an integrated unit, they may be spatially separated from the digital image pickup unit, may be spatially separated from the telephone unit, but connected to one another via a connection such as a line connection, a plug-type connection, or a radio link.

[00:26:03] Speaker 02:
Nor was this patent directed to cell phones.

[00:26:05] Speaker 02:
In fact, the technology, the patent specifically talked about a telephone unit being operated via a telephone line or may alternatively be operated wirelessly as a mobile telephone.

[00:26:17] Speaker 02:
So anything, anything that communicates information connected in some way to an image processing unit that receives images is sufficient to fit within the scope of the claims.

[00:26:30] Speaker 02:
I think there was no, I think it was evident from the patent itself that that wasn't what the patentee, what the inventor thought they were inventing.

[00:26:37] Speaker 02:
They described those as all elements in the background prior work.

[00:26:41] Speaker 02:
What the inventor thought they were inventing was a classification system.

[00:26:44] Speaker 02:
But that classification system, as claimed, isn't a specific new algorithm, a specific new way of classifying images.

[00:26:51] Speaker 02:
It's any classification whatsoever.

[00:26:55] Speaker 01:
Can I tell you what troubles me about this case?

[00:26:58] Speaker 01:
I get your argument, but it seems to me you're asking us to take Alice in our line of cases one step further.

[00:27:05] Speaker 01:
And by that I mean a lot of those cases are you have some kind of abstract idea or a business method, and you say do it on a computer.

[00:27:15] Speaker 01:
And we routinely found those to be 101 and eligible.

[00:27:19] Speaker 01:
And so you have that in part here, but then you're adding in a phone.

[00:27:24] Speaker 01:
And that seems to make it

[00:27:25] Speaker 01:
different.

[00:27:27] Speaker 01:
And what worries me is that if a phone can be added in and still make it ineligible, can a car be added in?

[00:27:34] Speaker 01:
Can all kinds of very tangible products?

[00:27:37] Speaker 01:
And then how do we divide what's a system, which we have to look at as a whole, from an abstract idea?

[00:27:44] Speaker 02:
Understood.

[00:27:45] Speaker 02:
I think this is a significant problem this court confronts, Your Honor, but I honestly do not think it is a problem in this case.

[00:27:51] Speaker 02:
Because the technology here is, in fact, expressly designed to be generic.

[00:27:56] Speaker 02:
It is expressly listed as identified in the prior art as stuff we already knew.

[00:28:01] Speaker 02:
And because there is no discussion whatsoever in the patent of how one would design this.

[00:28:06] Speaker 02:
If we thought that this was a new idea, we've put a camera into a phone, no one's ever done this before, where's the technology that shows us how it's possible, which we've never done before?

[00:28:15] Speaker 02:
No discussion of that in the patent.

[00:28:17] Speaker 02:
So I believe, Your Honor, that it will be at some point that technology, either because it is itself new or because the combination is new, is something that can be an inventive concept added to an abstract idea.

[00:28:31] Speaker 04:
Isn't what you're saying is that if a generic computer doesn't count, a generic phone also doesn't count, or a generic anything?

[00:28:41] Speaker 02:
I think that's right, Your Honor.

[00:28:42] Speaker 02:
And this Court has made that clear.

[00:28:44] Speaker 02:
by applying this Alice rule not only to a generic computer, but to a patent that required a generic computer plus a scanner.

[00:28:54] Speaker 02:
Separate physical hardware technology that were integrated together.

[00:28:57] Speaker 02:
Nonetheless, the court said those scanner was well known, the computer was well known.

[00:29:02] Speaker 02:
That's not anything new.

[00:29:05] Speaker 02:
I'd like to briefly just say a bit about claims of 10 and 11 because they were raised in the oral argument.

[00:29:14] Speaker 02:
So the first thing to note here, I think, is that TLI has arguably waived the argument that they should be treated differently.

[00:29:18] Speaker 02:
They did not brief it at all in the district court.

[00:29:21] Speaker 02:
It came up for the first time at oral argument in the district court.

[00:29:24] Speaker 02:
The district court nonetheless considered the issue, but it was not raised or briefed below.

[00:29:30] Speaker 02:
But in any event, I don't think you need to worry about claims 10 and 11.

[00:29:34] Speaker 02:
It is true that they say things about controlling an image analysis unit for determining quality, a control unit for controlling resolution.

[00:29:43] Speaker 02:
But that's all they say.

[00:29:45] Speaker 02:
And TLI's own expert admitted that these things were in the prior art.

[00:29:49] Speaker 02:
TLI's expert on A2509-10 admits that, quote, image analyzers and image processing were terms and devices well known to a person of ordinary skill in the art.

[00:29:59] Speaker 02:
Similarly, on A2505-06, it was well known in the art to compress, encrypt, or scale digital content.

[00:30:06] Speaker 02:
So the idea that somehow these claims have fit in

[00:30:11] Speaker 02:
the responding to memory limitations, things that are otherwise not mentioned in the claims, I think is belied by TLI's own expert who says, oh, that's well known.

[00:30:21] Speaker 02:
Finally, I would note that claims 10 and 11 are dependent on claim one, the server claim.

[00:30:26] Speaker 02:
So they are subject to the indefiniteness analysis.

[00:30:29] Speaker 02:
Even were this court not to find them invalid under Alice, they still run into the same problem.

[00:30:36] Speaker 02:
which is that it is software, not a physical keypad that is performing allocation in the computer system, and they never tell you what that software is.

[00:30:45] Speaker 04:
Okay.

[00:30:46] Speaker 04:
Thank you, Mr. Lamley.

[00:30:49] Speaker 04:
Mr. Whitman, you've got two minutes.

[00:30:52] Speaker 03:
Thank you, Your Honor.

[00:30:53] Speaker 03:
May I please report?

[00:30:55] Speaker 03:
First, I'd like to go back to the claim.

[00:30:56] Speaker 04:
Just one question related to what we were discussing with Mr. Lamley.

[00:31:02] Speaker 04:
A generic computer

[00:31:05] Speaker 04:
doesn't render it patent eligible.

[00:31:09] Speaker 04:
A lot of cases have said that.

[00:31:11] Speaker 04:
We've said a generic scanner doesn't render patent eligible.

[00:31:15] Speaker 04:
Why shouldn't the same thing be true of a generic phone or a generic digital camera?

[00:31:22] Speaker 03:
Because here it is not a generic phone.

[00:31:25] Speaker 04:
So in cyber phone and in contract... Let's assume we conclude that it is.

[00:31:29] Speaker 03:
Then I think you may be correct there.

[00:31:32] Speaker 03:
But we strenuously disagree with that because

[00:31:36] Speaker 03:
It's, the issue isn't whether we invented the camera phone here, really the issue is whether the camera phone was conventional.

[00:31:42] Speaker 03:
There is not a single reference anywhere in the record that a camera phone existed or was conventional in 1996.

[00:31:49] Speaker 03:
Every reference in the background of the patent of the 295 patent itself talks about telephones that could transmit data, video conferencing systems, but those are not camera phones.

[00:32:02] Speaker 03:
There's no reference to a camera phone.

[00:32:03] Speaker 03:
It was not conventional.

[00:32:06] Speaker 03:
was not.

[00:32:06] Speaker 03:
There's absolutely no citation anywhere that such a thing was conventional.

[00:32:11] Speaker 03:
And in fact, in the cyber phone case, there's a mention, and I think the appellant there tried to argue, but our phone is not conventional.

[00:32:18] Speaker 03:
It has these data obtaining parameters and things that make it not conventional.

[00:32:24] Speaker 03:
And this court mentioned that's not claimed.

[00:32:28] Speaker 03:
The elements of the phone claimed in cyber phone was just a traditional telephone.

[00:32:33] Speaker 03:
But that's not what's happening here.

[00:32:35] Speaker 03:
The telephone is far from conventional.

[00:32:40] Speaker 03:
I'd also like to correct the record a bit.

[00:32:42] Speaker 03:
All the claims do require that the telephone unit include an integrated digital pickup unit into it.

[00:32:49] Speaker 03:
So as Mr. Lumley stated that a spatially separated camera and phone might satisfy the claims, I would disagree with that.

[00:32:55] Speaker 03:
The claims are more narrow than that.

[00:32:59] Speaker 04:
under that part of the specification sounds as though integrated means not spatially separate.

[00:33:04] Speaker 03:
I think that that part of the specification says it can be integrated or it can be spatially separated and the claims refer to integration.

[00:33:10] Speaker 04:
Right, so integrated means not spatially separate.

[00:33:13] Speaker 04:
Yes.

[00:33:15] Speaker 04:
Okay, thank you Mr. Whitman.

[00:33:16] Speaker 04:
Thank you.