[00:00:00] Speaker 01: 1907, transition versus Lenovo, United States. [00:00:36] Speaker ?: Thank you. [00:01:06] Speaker 04: We have police support. [00:01:08] Speaker 04: Should we wait a bit? [00:01:09] Speaker 01: Let's wait a couple minutes. [00:01:40] Speaker 01: Okay, Mr. Beeman, you're ready? [00:01:42] Speaker 01: Both sides are ready? [00:01:43] Speaker 01: Why don't you begin. [00:01:44] Speaker 04: Thank you, Your Honor. [00:01:46] Speaker 04: I am Arthur Beeman. [00:01:48] Speaker 04: I'm here on behalf of the appellant transition, and I would like to reserve five minutes for rebuttal. [00:01:55] Speaker 04: Your Honors, the issue here is threshold. [00:01:59] Speaker 04: Of course, it goes to subject matter eligibility. [00:02:03] Speaker 04: And the decision, the guidance we look to is from Alice itself, the Supreme Court's decision in Alice, which mandates that we look to what the patent claims are directed to. [00:02:20] Speaker 04: What the patent claims are directed to. [00:02:21] Speaker 04: The transition patents are directed to an improvement in the technological arts, specifically the patents [00:02:31] Speaker 04: are directed to a dynamic transitioning of computer personality from a source computer to a target computer. [00:02:40] Speaker 04: Now, the district court found, held that the patents were instead directed to an abstract idea. [00:02:52] Speaker 04: That holding by the U.S. [00:02:54] Speaker 04: district court was in violation of Alex itself in that [00:03:01] Speaker 04: The court held that the patents were directed to an abstract idea of manual migration where there is no record whatsoever tethering as is required. [00:03:16] Speaker 00: So let's look at that and just setting aside what the district court found. [00:03:22] Speaker 00: When we look at the claim 1 of the 877 patent, [00:03:26] Speaker 00: We're dealing with a method in the computer system for preparing configuration settings for transfer from a source computing system to a target computing system. [00:03:37] Speaker 00: This is what we're dealing with. [00:03:42] Speaker 00: So it's taking configuration, taking settings from one computer and transferring them to another computer. [00:03:53] Speaker 00: Correct? [00:03:54] Speaker 04: Transitioning them. [00:03:55] Speaker 00: Transitioning them? [00:03:56] Speaker 04: Yes, Your Honor. [00:03:57] Speaker 00: And you want to say transitioning because you want to say something is done with that data. [00:04:02] Speaker 04: Absolutely, Your Honor. [00:04:03] Speaker 04: The word transitioning... What? [00:04:06] Speaker 00: What's done with the data? [00:04:07] Speaker 00: Show me that in the claim. [00:04:09] Speaker 04: Yes, Your Honor. [00:04:09] Speaker 04: The claims set forth, if I may refer you back to claim one of the 877 patent, the claim is a set of [00:04:22] Speaker 04: It's a genus of rules, a set of rules where step-by-step you are identifying the configuration settings, you are providing an extraction plan, you're generating then transition rules, and I'm just obviously highlighting the elements here. [00:04:41] Speaker 04: And then most importantly, within that claim itself, there's a reference to the final element transitioning one or more of the [00:04:50] Speaker 04: configuration settings than from the source to the target computer. [00:04:55] Speaker 04: The technology provided in the patents represents an improvement because what we have today, of course, as is acknowledged in the patents, is a very heterogeneous environment of computers. [00:05:09] Speaker 04: When someone has the original computer, the source computer, they purchased a new computer, they have configuration... I understand all that. [00:05:16] Speaker 01: I'm having trouble. [00:05:17] Speaker 01: By now, you know, we're ahead of where you were at the brief writing because we've had a lot of cases come out on 101. [00:05:23] Speaker 04: Yes. [00:05:23] Speaker 01: But this claim, in my view, is very broad. [00:05:27] Speaker 01: The district court kept on referring to it as dense, but it's broad. [00:05:32] Speaker 01: And what he said is it's devoid of any detail describing how. [00:05:37] Speaker 01: And he described it. [00:05:38] Speaker 01: So tell me what's wrong with his assessment. [00:05:40] Speaker 01: He says it performs the abstract idea [00:05:43] Speaker 01: of migrating settings between computers. [00:05:46] Speaker 01: It does various steps, identify where the configurations are stored, build the list of settings to transfer, fetch the settings from the old computer, and then manipulate the settings to match the format of the new computer. [00:05:59] Speaker 01: I think that's a correct recitation of what this claim does, devoid of any specifics about how any of these steps are accomplished. [00:06:07] Speaker 01: Am I right? [00:06:07] Speaker 04: Yes, Your Honor. [00:06:09] Speaker 01: Well, if that's so, then why is this not an abstract idea that fails under step one? [00:06:14] Speaker 04: Well, that's not all it does for one. [00:06:17] Speaker 04: That's not the totality. [00:06:18] Speaker 04: But most importantly, when we're looking at computer migration being identified as the manual migration, excuse me, manual migration being identified as the abstract idea, that abstract idea can't simply float out there as two words referred to in the specification as to the problem solved. [00:06:39] Speaker 04: There needs to be an identification, a development, a record, an understanding of what constitutes that manual migration, much as in McRoe. [00:06:51] Speaker 03: There was no record as to what constituted the... What's hard to understand about the phrase manual migration is it's pretty self-evident after looking at column two of your path, which talks about how once upon a time, or even today, when you're moving from one computer system to another, you want to take your configuration settings that you've customized, not your old system, and you want to [00:07:16] Speaker 03: update your new system with those same configuration settings and you would have to do that often times by hand and now that's the basic idea here that your claim convention [00:07:31] Speaker 03: says, well, let's have that automated. [00:07:34] Speaker 03: Let's have some computer software that just automatically does that kind of transfer of go and dig out the configuration settings and then install them in the new system. [00:07:47] Speaker 04: Respectfully, Your Honor. [00:07:48] Speaker 04: That is not, or what is set forth in claim one and the other claims to these patents, is not the only way that a transfer or a transition can be accomplished. [00:07:59] Speaker 04: And more importantly, if indeed we're looking at manual migration as the abstract idea, the Federal Circuit decisions in McRoe and Enfish and Bascom all required that that abstract idea be sufficiently developed in the record so it can be determined that what is being claimed [00:08:24] Speaker 04: is nothing other than a generic application of whatever that abstract idea is. [00:08:30] Speaker 04: Here, manual migration floats in the record as nothing more than two words in the specification. [00:08:36] Speaker 03: I can tell you my conception of what I think that means. [00:08:39] Speaker 03: What is wrong with my conception? [00:08:41] Speaker 04: Well, Your Honor, first, I think, respectfully, in terms of an individual's, whether it's yours or a judge's, whatever that conception may be, there needs to be, in order to establish that [00:08:52] Speaker 04: there is an invalidating abstract idea which the claims are directed to, that needs to be developed in terms of it being conventional and something that was well known. [00:09:02] Speaker 01: I don't understand. [00:09:03] Speaker 01: Are we at step two now? [00:09:04] Speaker 01: Have we moved away from identifying an abstract idea and we're talking about whether it's, how it's applied in the event of concept? [00:09:11] Speaker 03: No, I was not intending to move to that. [00:09:15] Speaker 03: look at the patent under review and specifically the background of the invention section of the patent to determine what is the state of play and what was known and conventional. [00:09:27] Speaker 03: And we have your inventors telling us what was known, old, and conventional. [00:09:33] Speaker 03: The idea that there was a common practice of having to transfer your configuration settings to a new computer system. [00:09:40] Speaker 03: That's the idea. [00:09:42] Speaker 03: Now we have an invention. [00:09:43] Speaker 03: The invention, apparently, from these claims is to have a computer, some computer, magically do that automatically. [00:09:52] Speaker 04: Your Honor, respectfully, I think it goes well beyond that. [00:09:55] Speaker 03: What's the inventive concept here? [00:09:57] Speaker 03: What is the technical, inventive contribution to the useful arts that these claims express beyond the idea of [00:10:10] Speaker 03: Using the old configuration settings to update your new system. [00:10:14] Speaker 04: It is the dynamic transitioning of those configuration settings from the source to the target. [00:10:22] Speaker 04: And by dynamic, what is referred to and what is meant is the configuration settings by way of example could be operating on the source computer in a particular format. [00:10:37] Speaker 01: Can we talk about the claims? [00:10:39] Speaker 01: Look at the claim language. [00:10:40] Speaker 01: I mean, tell me, read me from the claim language what your answer to Judge Ten's question. [00:10:44] Speaker 04: Well, from the claim language, I would direct, Your Honors, to in claim one, the last element, which refers to the transitioning, the transitioning one or more of the retrieved configuration settings. [00:10:59] Speaker 04: And here, I believe, Your Honor, the key words from a format [00:11:02] Speaker 04: used on the source computing system to a format used on the target computing system. [00:11:09] Speaker 04: It's not just simply transferring, going from one point to another, especially as is identified and as is pointed out in the specifications when we're dealing with such an abundance of heterogeneous environments and computer systems. [00:11:24] Speaker 00: My focus on that element is on the word transitioning. [00:11:28] Speaker 00: And I don't see how the claim tells us [00:11:31] Speaker 00: or claims any limitations as to how that transitioning occurs. [00:11:37] Speaker 00: So it seems to me that really what you're claiming is moving data from one computer to another and that's an awful lot, that's a really big broad claim. [00:11:51] Speaker 00: That would almost claim all wireless technology, any type of transfer from one computer to another. [00:11:57] Speaker 00: What is your limitation? [00:11:58] Speaker 00: Where do you show us how this transitioning is done? [00:12:02] Speaker 04: The limitations for purposes of what is claimed in these patents as to what's being transitioned is set forth from the first element all the way to the second element, or excuse me, the last element that I just identified wherein the word transitioning is used. [00:12:20] Speaker 04: It's a genus of rules. [00:12:21] Speaker 04: It's not the only way that this can be done. [00:12:25] Speaker 04: any number of ways in terms of the simple movement, if you will, of configuration settings from a source to a target computer. [00:12:32] Speaker 04: This does not set forth the only way to do it. [00:12:35] Speaker 03: Hypothetically, the development of our court's case law and trying to figure out whether something like this is patent eligible is you, the patent owner, [00:12:48] Speaker 03: need to have an argument that shows us what here in these claim limitations represents a technical improvement over a computer system, computer network, rather than just [00:13:03] Speaker 03: running some established concept on a computer. [00:13:09] Speaker 03: I think we articulated what the latter inception of these claims is, the idea of updating a new system with old configuration settings and having a computer magically do it. [00:13:21] Speaker 03: What is the technical advance represented in these claims, these claim limitations? [00:13:27] Speaker 03: Tell us that there is something. [00:13:32] Speaker 03: I'm sorry, go ahead. [00:13:33] Speaker 04: Okay, thank you. [00:13:34] Speaker 04: The technical advance is to or what is set forth here in the way of rules with these genus of rules and when done in this fashion and then when done through software, it provides, as is pointed out, a certain and in some instances significant measure of reliability. [00:13:58] Speaker 03: I'm sorry, let me say there's rules here. [00:14:00] Speaker 04: Yes. [00:14:00] Speaker 03: A genus of rules? [00:14:02] Speaker 03: Can you drill down on that? [00:14:03] Speaker 03: Because right now, when I look at, although there's a lot of words on this page, [00:14:08] Speaker 03: When I look at the language here, to me it ultimately represents what any person would need to do if they were going to do an automated version of transparent configuration settings from one system to another. [00:14:21] Speaker 03: They would have to do these steps. [00:14:23] Speaker 03: These are kind of elemental steps for achieving that desired objective. [00:14:27] Speaker 03: So where in these coin limitations can you say, ah, this is the interesting twist, this is our specific [00:14:37] Speaker 03: interesting contribution? [00:14:38] Speaker 04: Well, certainly, as I referenced earlier, the transitioning, that element. [00:14:43] Speaker 03: Let's say that last element is really the ultimate objective of what you're trying to accomplish. [00:14:48] Speaker 03: Although it is an element. [00:14:49] Speaker 03: It's not an actual technical step on the pathway to implementing an invention to achieve the objective. [00:14:57] Speaker 04: Well, respectfully, Your Honor, and I want to also identify other elements, but I do want to stay with transitioning for the moment. [00:15:02] Speaker 04: It is an important element, and it does represent very much [00:15:06] Speaker 04: the dynamic, the innovation here, and what's being achieved by these patents that goes well beyond just simply the transfer of configuration settings from one computer to another. [00:15:19] Speaker 01: By way of example, what's... Well, that's all it says, right? [00:15:22] Speaker 01: Where does it claim any more specificity as to how it's done? [00:15:27] Speaker 01: Transitioning one or more of the retrieved configuration settings from a format used in the source computing system to a format used on the target computing system. [00:15:35] Speaker 01: What is the limitation of that other than? [00:15:38] Speaker 04: The limitation of that is spelled out in the elements before, Your Honor. [00:15:41] Speaker 04: Because in the instance, for instance, of an extraction plan, and then from there a transition plan, and what the elements spell out before the transitioning, that is not the only way that one goes about transferring configuration settings from a source computer to a target computer. [00:16:05] Speaker 01: the step of identifying and then extracting and then identify the ones to be transferred and then retrieving them. [00:16:12] Speaker 01: Those seem pretty elementary, right? [00:16:17] Speaker 04: Well, whether they seem elementary or not, we are looking and dealing with, respectfully, Your Honor, a 101 issue. [00:16:25] Speaker 04: And whether there is an abstract idea in the face of however these claims set forth the elements or not is really the issue before the court. [00:16:36] Speaker 04: The record here, Your Honor, is that the simple words of manual migration, a judge coming along as the district court did here, respectfully to that court, but just looking at manual migration, whatever that means in all due respect to this court, it goes beyond the Section 101 litigation. [00:16:57] Speaker 04: It goes beyond a judge simply [00:16:59] Speaker 04: looking at two words, manual migration, and saying, I think I understand this. [00:17:04] Speaker 04: I think I understand the word manual, and I think I understand the word migration. [00:17:08] Speaker 04: And it seems to me that these elements are all about manual migration, that being the abstract idea. [00:17:14] Speaker 04: There's no evidence of that. [00:17:16] Speaker 04: There's no record of that. [00:17:17] Speaker 04: That was incumbent on a party challenging the validity of a patent. [00:17:20] Speaker 00: We have caution that this supports not to oversimplify this question of whether something is abstract or not. [00:17:28] Speaker 00: moving beyond that and looking at your claims. [00:17:32] Speaker 00: And you're the one that narrowed us down to the word transitioning to that element. [00:17:37] Speaker 00: Show me the limitation on transitioning. [00:17:40] Speaker 00: How is that accomplished other than to say that that's the important point where you move data from one system to another? [00:17:49] Speaker 04: Yes. [00:17:49] Speaker 04: What's the rule? [00:17:50] Speaker 04: The transitioning, which of course was subject to claim construction, and... What's the rule? [00:17:58] Speaker 04: The rule of transitioning? [00:18:00] Speaker 00: You're claiming. [00:18:00] Speaker 04: Okay, the set of transition rules then, if that is the question, Your Honor, is set forth in claim 30. [00:18:09] Speaker 04: If we're asking specifically for the transition rules, those are spelled out in the data structure claimed in claim 30. [00:18:20] Speaker 04: And there we have a specific [00:18:23] Speaker 04: delineation. [00:18:24] Speaker 01: Will you defend whether or not claim one is abstract by looking at claim 30? [00:18:29] Speaker 01: What in claim one is the rule? [00:18:32] Speaker 01: You're saying claim one sets up some broad rule. [00:18:34] Speaker 01: So you're claiming a broad rule, broad universe. [00:18:37] Speaker 01: And then you're saying, but it shouldn't be considered abstract because we've got some data points in claim 30? [00:18:42] Speaker 04: No, no, no. [00:18:43] Speaker 04: I was answering the question which was posed as to transitioning. [00:18:48] Speaker 04: Our view as to the rules, the genus of rules for claim one, [00:18:52] Speaker 04: it needs to be looked at in its totality for the ordered combination. [00:18:56] Speaker 00: But the claim 30 does not go to a rule. [00:18:59] Speaker 00: It's just simply describing data structures. [00:19:04] Speaker 00: It's describing information for locating user preferences, information for locating visual elements, information. [00:19:10] Speaker 00: Now, if you want to argue that these are data structures that are being claimed here, that's one thing. [00:19:17] Speaker 00: But I don't see a rule here for transition. [00:19:21] Speaker 04: Well, to the extent that claim 30 informs the transition rules, what it sets forth are the structure of the transition rules, a genus of rules for the specific settings. [00:19:37] Speaker 04: And it is indeed a data structure. [00:19:39] Speaker 04: But in responding to Your Honor's question about the meaning of the term transition, this is what's being transitioned. [00:19:47] Speaker 04: It's the personality object, which is also [00:19:50] Speaker 04: identified I believe was in claim two. [00:19:52] Speaker 00: I don't challenge or to me the question is what's being transitioned? [00:19:57] Speaker 00: It's data. [00:19:59] Speaker 00: You have an invention and you're claiming that it's not abstract. [00:20:03] Speaker 00: The district court basically said you're getting data from one system, transferring it to another, making sure it fits. [00:20:11] Speaker 00: Okay? [00:20:11] Speaker 00: And you've narrowed this down to transition and I've asked where is a specific rule that you're citing that you have under MECRO? [00:20:20] Speaker 00: Where's the specific rule in this case under transitioning and instead you point us to claim 30 and that's not a rule. [00:20:28] Speaker 00: That's just, those are just data structures or information for locating service providers, information for locating accounts, information, it's just data. [00:20:39] Speaker 04: Right, for claim 30. [00:20:40] Speaker 00: So if we allow you to claim all of that, information for locating and all of these different elements, [00:20:49] Speaker 00: We're handing you the entire internet almost. [00:20:52] Speaker 00: That's what transfer from one computer system to another one consists of. [00:20:58] Speaker 04: No, Your Honor, and that's not what is being claimed. [00:21:00] Speaker 04: And again, getting back to what's involved in the dynamic transitioning, all of the elements of the claim, and we'll go back to claim one, all of those elements set forth [00:21:13] Speaker 04: the rules, in this case the genus of rules, for the transitioning of the configuration settings. [00:21:20] Speaker 04: I believe that what's claimed in Claim One is very similar to what was claimed in Macro. [00:21:26] Speaker 04: And where it set forth that there was an automatic, and I'm not quoting it verbatim, but there was an automatic application of what the animation artists were previously doing. [00:21:38] Speaker 03: And in that instance... [00:21:42] Speaker 03: It says the CPU can be either electrical or biological. [00:21:48] Speaker 03: What does that mean? [00:21:50] Speaker 03: Does that mean that this isn't necessarily a computer-implemented system and method, as the word computer is traditionally understood? [00:21:59] Speaker 03: That's maybe biological. [00:22:00] Speaker 03: This could be all human in a way. [00:22:02] Speaker 04: Well, Your Honor, in terms of the patentability issues set forth here in this matter, I would say there is no departure from [00:22:12] Speaker 04: the workings of a computer in the claims for... I would understand that to mean a computer technology related to some biological science or some biological issue. [00:22:30] Speaker 04: I don't know beyond that, Your Honor. [00:22:31] Speaker 04: It's certainly not set forth specifically in any of the claims. [00:22:47] Speaker 02: Good morning, Your Honors. [00:22:56] Speaker 02: May it please the Court? [00:22:58] Speaker 02: I'm Todd Landis, on behalf of Lenovo United States and Micro Focus, formerly Novell. [00:23:05] Speaker 02: I'd like to begin by answering Judge Raina's question very specifically. [00:23:09] Speaker 02: There are no transition rules in these claims. [00:23:12] Speaker 02: In fact, there are no rules in the specification at all. [00:23:16] Speaker 02: They simply do not tell you how this invention is done or performed. [00:23:22] Speaker 01: Isn't that an enablement or a written description problem rather than a 101 problem? [00:23:27] Speaker 02: Your Honor, I'm not sure it is an enablement problem in that the enablement problem would be addressing the elements of the claims and are those elements enabled? [00:23:38] Speaker 02: Certainly the patent talks about all the functions that are addressed in the claims. [00:23:43] Speaker 02: It talks about them in the same functional language that you find in the claims. [00:23:47] Speaker 02: I think the 101 analysis takes us a step further, which is, have you actually invented anything? [00:23:52] Speaker 02: Have you told us how to do these functions? [00:23:56] Speaker 02: And that's where the claims are lacking. [00:23:59] Speaker 02: There's no description as to how to do any of the functions in the claims themselves. [00:24:04] Speaker 02: They just tell you the result they want to achieve. [00:24:08] Speaker 02: We want to identify some configuration settings, but we don't tell you how. [00:24:12] Speaker 02: We want to generate an extraction plan, but we don't tell you how. [00:24:16] Speaker 02: And if you look at that element in particular, I think there's something that's important there. [00:24:20] Speaker 02: It says that part of that is identifying the configuration settings known to the computer. [00:24:26] Speaker 02: But it doesn't tell you how to figure out which ones are known to the computer, which ones are not known to the computer. [00:24:32] Speaker 01: Would it be your view that if the specification laid out in detail, the how part of it, then that would save the claims under 101 for abstracting? [00:24:41] Speaker 02: Your honor, I do not believe with stated claims. [00:24:43] Speaker 02: I think the claims themselves have to claim the how. [00:24:46] Speaker 02: They have to give us some specifics as to how it's actually achieved, what the invention is. [00:24:52] Speaker 02: Otherwise, you're allowing a broad claim that could be read in any way to go forward simply because the specification left some things unclaimed in the claim. [00:25:02] Speaker 02: And I think this court has addressed that issue on multiple occasions in its case law, that the unclaimed elements don't count. [00:25:10] Speaker 02: It has to be in the claims themselves. [00:25:13] Speaker 01: What about your friend's argument about our case in DNR, which said, you know, look, they've identified a unique problem with respect to computers. [00:25:21] Speaker 01: So it's really in this different field. [00:25:23] Speaker 01: And that takes it away from the abstractness. [00:25:26] Speaker 01: And that's certainly the case here, right? [00:25:29] Speaker 01: That this is all in the world of computers. [00:25:31] Speaker 01: This is a unique problem created in a different technological world. [00:25:35] Speaker 01: It's different than the manual world. [00:25:36] Speaker 01: We all lived it. [00:25:37] Speaker 02: Certainly, configuration settings in the context of this case and these patents are based in computers. [00:25:45] Speaker 02: I would agree with that. [00:25:47] Speaker 02: But I don't think this is DDR. [00:25:48] Speaker 02: In DDR, the difference there is that you had a technological environment where they were actually changing and using technology to change something that couldn't be done manually. [00:26:00] Speaker 02: They were using a [00:26:02] Speaker 02: a computer system in order to create a hybrid webpage, a new type of webpage. [00:26:08] Speaker 02: And it was something that advanced the technology of the internet beyond where it was. [00:26:14] Speaker 02: Here what we have is not an invention that improves computer technology at all. [00:26:21] Speaker 02: In fact, really what it's improving is not the computer itself. [00:26:25] Speaker 02: It's really improving the speed and efficiency of, for instance, an IT person at my law firm. [00:26:32] Speaker 02: or an individual's ability to move settings from his old computer to his new computer. [00:26:38] Speaker 02: In fact, if you look at claim one, and I think this is telling about the claim, it doesn't actually reference a computer doing anything. [00:26:46] Speaker 02: The only two computer systems that are referenced are the source computing system and the target computing system. [00:26:54] Speaker 02: They are both passive actors in the claim. [00:26:57] Speaker 02: The source is what has something taken from it, [00:27:00] Speaker 02: The target is what has something given to it. [00:27:03] Speaker 02: But nowhere in the claims that tell us how that is accomplished. [00:27:08] Speaker 02: The claim is simply devoid of that detail as the district court point out. [00:27:11] Speaker 00: Would you say that this case is more aligned with Digitech? [00:27:15] Speaker 02: Absolutely, Your Honor. [00:27:16] Speaker 02: Digitech, in-rate TLI, content extraction, all of those cases. [00:27:20] Speaker 02: This case aligns a lot more with those claims. [00:27:23] Speaker 02: And I would say that these claims even lack [00:27:27] Speaker 02: a scintilla of detail that those claims at least had. [00:27:31] Speaker 02: I mean, if you look at content extraction, for example, the claims at least spoke to having a scanner, having a server. [00:27:38] Speaker 02: The problem was that they didn't give any detail as to how any of those technologies were improved. [00:27:43] Speaker 02: They were just using them in their normal, generic way. [00:27:46] Speaker 02: In these claims, we don't even have that type of tangible component. [00:27:51] Speaker 03: I do not agree with that point. [00:28:03] Speaker 02: I think the presumption of validity is a threshold inquiry. [00:28:08] Speaker 02: It's the one of whether you get [00:28:11] Speaker 02: to go beyond and figure out whether or not you're going to have that presumption of validity. [00:28:16] Speaker 03: Are you doing a statutory interpretation? [00:28:17] Speaker 03: I mean, right now, section 282 says all issued patents enjoy a presumption of validity. [00:28:25] Speaker 02: Yes, Your Honor. [00:28:26] Speaker 03: What's special about section 101 versus 102, 103, 112? [00:28:31] Speaker 02: Because section 101 is an eligibility standard. [00:28:34] Speaker 02: Are you entitled to even come forth and get a patent? [00:28:37] Speaker 02: It's different than when you're looking at once [00:28:40] Speaker 02: Once that has been determined, yes, you are entitled to go have your claims examined, have your claims issued. [00:28:48] Speaker 02: Now you can have the presumption of validity. [00:28:51] Speaker 02: Now we have the issue of one or two or three. [00:28:53] Speaker 01: Is there anything in Alice or anything that the Supreme Court has said or that we've said that point you in that direction? [00:29:00] Speaker 02: Your Honor, I think it's the lack of what's been said that has pointed me in that direction, which is none of the cases that I have seen [00:29:07] Speaker 02: says that that presumption of validity is still in place for Section 101 analysis. [00:29:13] Speaker 01: Well, the statute that Judge Chen just referred to is pretty clear, right? [00:29:19] Speaker 02: Yes, Your Honor. [00:29:20] Speaker 01: So you're creating an exception to the statutory language, and I think it'd be nice if you had something to hang your hat on. [00:29:28] Speaker 02: Your Honor, I think the only thing I have to hang my hat on is just the fact that other courts, and I think at least somewhere in some of this court's cases, [00:29:37] Speaker 02: have said that 101 is a threshold issue. [00:29:40] Speaker 01: Well, we all agree to that part of it. [00:29:43] Speaker 01: Let me ask you, do you need that to win? [00:29:45] Speaker 01: I mean, do you think we prevail here if there's no presumption of validity given to these claims? [00:29:52] Speaker 02: Your Honor, I think whatever standard this court wants to apply, whether it's a presumption of validity and clear and convincing evidence, whether it's just a de novo review of the lower courts, [00:30:05] Speaker 02: you know, findings, however you want to do it. [00:30:07] Speaker 02: These claims are so devoid of detail and so abstract that they don't pass muster under 101 under any standard. [00:30:16] Speaker 00: Let's go back just a little bit. [00:30:18] Speaker 00: Wouldn't you say that there's a difference between validity and enforceability? [00:30:23] Speaker 00: Yes, Your Honor. [00:30:24] Speaker 00: So you can have a valid patent, be it that patent is unenforceable. [00:30:29] Speaker 02: I would agree with that, Your Honor, yes. [00:30:30] Speaker 00: Okay. [00:30:30] Speaker 00: So if we're looking at section 101, [00:30:33] Speaker 00: In terms of questioning whether some presumption exists, are we to say that a presumption of validity exists or perhaps a presumption of eligibility? [00:30:45] Speaker 02: Well, Your Honor, certainly Your Honor is making a good point, which is the statute I don't believe talks about a presumption of eligibility. [00:30:51] Speaker 02: It's presumption of validity for the patent. [00:30:54] Speaker 02: And I don't think there's any law that I know of, at least, that says that maybe Section 282 encompasses the presumption of eligibility. [00:31:02] Speaker 02: I think that's the real point of section 101. [00:31:05] Speaker 02: Section 101 is designed to determine should we allow a patent to go forward. [00:31:11] Speaker 03: There's a presumption of novelty. [00:31:13] Speaker 03: There's a presumption of non-obviousness. [00:31:14] Speaker 03: There's a presumption that there's written description support. [00:31:17] Speaker 03: There's a presumption of enablement. [00:31:19] Speaker 03: There's a presumption that the claims are reasonably clear enough to be definite. [00:31:24] Speaker 03: Why wouldn't there also be a presumption of eligibility? [00:31:27] Speaker 02: Your Honor, I think all the ones that you just mentioned [00:31:31] Speaker 02: And again, the way I look at it is they are, after you have figured out is this eligible or not, once you've figured out this is eligible and now you've issued it as a patent, the rest of those things apply. [00:31:46] Speaker 02: All those presumptions would apply. [00:31:48] Speaker 03: What about the clear and convincing evidence standard, right? [00:31:51] Speaker 03: That's a little bit related to the statutory presumption of validity. [00:31:57] Speaker 03: Yes, Your Honor. [00:31:58] Speaker 03: You know, I know of no case from our court that's ever said that the clear and convincing evidence burden that defendants have in attacking the validity of a patent doesn't apply to a validity question. [00:32:13] Speaker 02: I think your honor's correct. [00:32:14] Speaker 02: I don't know of a case from this court that has said one way or the other. [00:32:19] Speaker 01: But the district court concluded that there was no burden on you to establish by clearly convincing evidence that the patent was invalid, right? [00:32:27] Speaker 02: That's correct, Your Honor. [00:32:28] Speaker 01: Well, you've got to defend that, right? [00:32:31] Speaker 03: Yeah, you want us to be the first one ever from the history of our court to say that we don't have to worry about the clear convincing evidence standard. [00:32:38] Speaker 03: We can throw that away here. [00:32:44] Speaker 02: So to Your Honor's questions, the district court, following a lot of some other district courts, did an evaluation of how other courts have been handling this question and concluded that the presumption [00:32:57] Speaker 02: I mean, that clear and convincing evidence standard didn't apply. [00:33:00] Speaker 02: But the court also said something I think more important, which is there's no factual disputes in this case. [00:33:06] Speaker 02: There were no factual disputes. [00:33:07] Speaker 02: And his point is the clear and convincing evidence standard is a factual standard. [00:33:12] Speaker 03: If there are no factual disputes... To clarify your point, the other side would disagree with that. [00:33:15] Speaker 03: What you probably meant to say is there are no genuine issues of material fact. [00:33:20] Speaker 02: That's correct, Your Honor. [00:33:21] Speaker 02: There are no genuine issues of material fact, and since there are no genuine issues of material fact... [00:33:27] Speaker 00: When you're looking at whether there's a genuine issue of material fact in dispute, you're assuming that you have a universe of facts. [00:33:33] Speaker 00: And now you're looking, examining those facts. [00:33:37] Speaker 00: But really, was there any factual examinations or factual findings in this case? [00:33:41] Speaker 00: It seems to me that the court had a construction, and the entire decision is based on attorney argument and the court's interpretation of the claim, which we know to be legal. [00:33:54] Speaker 00: But what facts were involved in this case? [00:33:57] Speaker 02: I think what the court did was follow instructions that this court has set down in several of its cases, which is that you should look at the facts that are contained in the specification and the claims. [00:34:09] Speaker 00: But all of those are intrinsic findings. [00:34:12] Speaker 00: Yes, Your Honor. [00:34:13] Speaker 00: We've said that those are legal questions. [00:34:15] Speaker 00: What's a factual question, one that we would owe deference to, for example? [00:34:21] Speaker 02: Your Honor, I don't think there are any factual questions. [00:34:24] Speaker 02: If we're not going to consider the facts of the specification to be facts, as the district court did, if they're just legal determinations... Why would a presumption of validity even matter in this case if there's no factual... I don't believe it does, Your Honor. [00:34:37] Speaker 02: I don't believe it does. [00:34:38] Speaker 02: I don't believe the clear and convincing evidence standards should apply to this case, because there are no genuine factual disputes. [00:34:44] Speaker 01: But it's hard, right? [00:34:45] Speaker 01: I mean, they had an expert declaration for Dr. Mackin or something. [00:34:49] Speaker 01: And this is, I guess, on the step two question about whether or not this is an inventive concept. [00:34:55] Speaker 01: That is a question, right, that would often require outside expert advice or comment to establish that, right? [00:35:04] Speaker 01: I mean, one of our recent cases, I can't remember the name right now, but it talks about whether something is arguably an inventive concept. [00:35:13] Speaker 01: Doesn't the word arguably suggest that you want to hear the debate from the experts to weigh in on whether or not there's an inventive concept here? [00:35:22] Speaker 01: So why, at least on prong two, should the district court not have granted summary judgment but allowed more evidence and more testimony? [00:35:30] Speaker 02: I think there's two reasons why they shouldn't have done that. [00:35:33] Speaker 02: I think the district court did consider a Ms. [00:35:36] Speaker 02: Mackin's declaration. [00:35:37] Speaker 02: But I think what the district court found [00:35:40] Speaker 02: It didn't provide anything new over what the specifications said. [00:35:44] Speaker 02: And a lot of it was just more of her conclusory statements as to what this meant of unclaimed elements. [00:35:51] Speaker 02: It was the same argument that the court was hearing from counsel for transition, which was the claims were claiming things like dynamic transitioning, but you couldn't find the word dynamic in the claims. [00:36:04] Speaker 02: And so I think the court properly disregarded Ms. [00:36:07] Speaker 02: Mackin's declaration in this case, [00:36:10] Speaker 02: and relied on the facts of the specification itself, said, I have the specification. [00:36:15] Speaker 02: It tells me what was going on in the past. [00:36:18] Speaker 02: It's telling me what they claim to have invented. [00:36:20] Speaker 02: And then when I look at the claims, I don't find anything there. [00:36:24] Speaker 02: They are devoid of any detail. [00:36:26] Speaker 02: And I believe that's a proper analysis for the court to have done, is to disregard declarations that don't provide any material facts. [00:36:37] Speaker 02: I wanted to answer one other question about a case about the presumption of validity, and this is from Ultramershal, and I'm not exactly sure which Ultramershal because I know there's been a couple, but this is the quote, indeed applying a presumption of eligibility is particularly unwarranted [00:36:53] Speaker 02: given that the expansionist approach to Section 101 is predicated upon a misapprehension of the legal history of the 19th Amendment. [00:37:00] Speaker 01: Is that a concurrence? [00:37:01] Speaker 01: Huh? [00:37:01] Speaker 01: That's a concurrence you're reading from, I believe, not a majority opinion. [00:37:04] Speaker 01: I think it may be. [00:37:04] Speaker 01: Judge Mayer's concurrence. [00:37:05] Speaker 02: Yeah, Judge Mayer's concurrence. [00:37:06] Speaker 02: I just wanted to point out that at least some of the court has seen patent eligibility. [00:37:13] Speaker 02: Right, there's no binding authority. [00:37:14] Speaker 02: No binding, I agree, Your Honor. [00:37:16] Speaker 02: Part of one court. [00:37:17] Speaker 02: Part of one court, yes, Your Honor. [00:37:20] Speaker 02: The minority part. [00:37:21] Speaker 02: That's correct, Your Honor. [00:37:23] Speaker 02: So, in conclusion, Your Honors, this patent, I think, in comparing it to other patents that have been found ineligible, content extraction, in-rate to ALI, these claims are even more devoid of detail as to how anything occurs. [00:37:42] Speaker 02: They are purely functional in nature. [00:37:45] Speaker 02: And as this court just held in Affinity Labs versus Amazon, I think last week, [00:37:51] Speaker 02: When a claim is purely functional in nature, quote, that confirms that it is directed to an abstract idea, not a concrete embodiment of that idea. [00:38:01] Speaker 02: That is the case here, Your Honors. [00:38:03] Speaker 02: Thank you. [00:38:03] Speaker 02: Thank you. [00:38:10] Speaker 01: Mr. Beaman, will we still have two minutes of rebuttal? [00:38:13] Speaker 04: Two minutes? [00:38:13] Speaker 04: Yes. [00:38:14] Speaker 04: Thank you, Your Honor. [00:38:15] Speaker 04: To be clear, [00:38:17] Speaker 04: There is a factual issue and a factual issue was presented to the district court. [00:38:24] Speaker 04: And that factual issue was, what is manual migration? [00:38:30] Speaker 04: And we submitted in the record a declaration from one of the inventors, which remains unrebutted, where she averred that she was not aware of any manual migration [00:38:47] Speaker 04: anywhere in industry that was performed or accomplished with the steps spelled out [00:38:54] Speaker 03: in the independent... There's nothing at all wrong in using that as a reference. [00:39:21] Speaker 04: The issue though is that single reference [00:39:24] Speaker 04: to manual migration does not tell us that manual migration is accomplished with the specific steps spelled out in the claims here such that, in terms of one-on-one eligibility, all we're doing is a generic computer application of what's being done manually. [00:39:45] Speaker 04: The specific steps of manual migration and what is involved there, there's no record whatsoever [00:39:53] Speaker 04: that even intimates that what's being claimed here, element by element, which goes to the McRoe decision. [00:39:59] Speaker 03: There should be something to focus on in the claim. [00:40:01] Speaker 03: I still don't have something in the claim to focus on that you want to point to that convinces us that what the claims represent is something more than just the basic automation of migration of configuration settings by that. [00:40:19] Speaker 04: What's the element? [00:40:21] Speaker 04: Well, Your Honor, respectfully, it can't just be a single element. [00:40:25] Speaker 04: The charge here, in terms of patent eligibility under 101, is to look at the totality of the elements. [00:40:32] Speaker 03: Point me to something. [00:40:34] Speaker 03: I would refer, Your Honor. [00:40:35] Speaker 04: Is it the whole claim? [00:40:35] Speaker 04: I'm sorry? [00:40:36] Speaker 03: Is it the whole claim? [00:40:37] Speaker 04: It is absolutely the whole claim. [00:40:38] Speaker 01: That's your answer. [00:40:39] Speaker 04: Yes. [00:40:40] Speaker 04: Yes, Your Honor. [00:40:41] Speaker 01: And finally, one more sentence, if you have time. [00:40:44] Speaker 04: Oh, I'm sorry. [00:40:45] Speaker 04: And then finally, Your Honor, we're not aware of any precedent whatsoever, contrary to the US Supreme Court's decision [00:40:50] Speaker 04: in Microsoft versus IV-4, which says categorically, any invalidity defense must be proved by clear and convincing evidence. [00:40:58] Speaker 01: Thank you. [00:40:59] Speaker 01: We thank both sides and the case is submitted.