[00:00:00] Speaker 02: 161614 box-a-thon versus FCA [00:00:32] Speaker 02: Mr. Bennett. [00:00:35] Speaker 05: Good morning, Your Honors. [00:00:35] Speaker 05: David Bennett on behalf of the appellant and patent owner Voxathon. [00:00:40] Speaker 05: I reserve four minutes for rebuttal. [00:00:42] Speaker 05: Before addressing why the district court erred in validating the claim to the patent, as abstract under section 101, I will address the defendant's collateral estoppel argument that they raised in their responsive brief. [00:00:56] Speaker 05: Their argument in collateral estoppel is that the identical order [00:01:00] Speaker 05: which is being appealed here in the identical judgment, which is being appealed here in the lead case, collaterally stops itself from being appealed because it was also entered in one of the consolidated cases against FCA. [00:01:15] Speaker 05: The FCA case is listed in this appeal. [00:01:20] Speaker 05: FCA is listed in the caption of this appeal. [00:01:22] Speaker 05: So here, you're not dealing with any prior litigation. [00:01:26] Speaker 05: You're not dealing with a separate litigation or separate decision. [00:01:30] Speaker 05: So when you're talking about collateral estoppel, you're looking for something that's a prior determination of invalidity. [00:01:35] Speaker 05: That's not occurring here. [00:01:37] Speaker 05: And when you're looking specifically with respect to FCA, FCA never filed a motion for summary judgment. [00:01:45] Speaker 05: They never filed a motion to dismiss. [00:01:49] Speaker 05: They never joined a motion. [00:01:50] Speaker 05: They never attended the hearing. [00:01:52] Speaker 05: So there was never any argument between Voxathon and FCA [00:01:59] Speaker 05: where there was a chance to litigate this with respect to FCA. [00:02:03] Speaker 02: Okay. [00:02:03] Speaker 02: Well, speaking only for myself, obviously, but why don't you move on? [00:02:06] Speaker 02: I prefer you move on to the 101 issue. [00:02:09] Speaker 05: Thank you, Your Honor. [00:02:11] Speaker 05: In 101, with the first step, with respect to the patent, the error with the district court was not looking at the claims and what they were directed to. [00:02:22] Speaker 05: What they were directed to is an attendant telephone set with call appearance buttons. [00:02:27] Speaker 05: And those call appearance buttons do something [00:02:29] Speaker 05: that did not occur previously in the prior art. [00:02:33] Speaker 05: So this is a new telephone device to do something new. [00:02:38] Speaker 05: The court said that the abstract idea was responding to a sender of a message. [00:02:43] Speaker 05: But that doesn't tell you anything about what the claims are about. [00:02:47] Speaker 05: The court actually referred to the fact that this could be just responding to a letter. [00:02:52] Speaker 05: Somebody gets a letter, writes a response, and mails it back. [00:02:57] Speaker 05: The court implied that these claims [00:03:00] Speaker 05: would somehow prohibit that from being performed. [00:03:04] Speaker 05: When you look at the claims, it's a preemption matter? [00:03:09] Speaker 05: Yeah, that would be potentially an infringing action. [00:03:14] Speaker 05: So what the court did, if you read the opinion, the court set up what the abstract idea was and then analyzed the abstract idea to determine what would possibly be infringing and why it's abstract. [00:03:28] Speaker 05: as opposed to looking at the claims, seeing what the claims are directed to, as opposed to what the purpose is, or what they're supposed to result in, what the performance is. [00:03:39] Speaker 05: Here, there is a particular device that's being claimed, even in the method claim. [00:03:46] Speaker 05: Foxathon's brief focused on claim four, which is a system claim. [00:03:51] Speaker 05: Claim one is a method claim. [00:03:53] Speaker 05: But the method is performed using a device, which is [00:03:58] Speaker 05: the attendant telephone set with call appearance buttons, and then it walks through what's special about the particular call appearance buttons in the case. [00:04:07] Speaker 05: So what has happened, and there's actually five different abstract ideas that have been alleged, but all of them fail to address the claim itself. [00:04:20] Speaker 05: What is the claim directed to here? [00:04:23] Speaker 05: Attendant telephone set with call appearance buttons. [00:04:26] Speaker 05: So this is like in Endfish. [00:04:29] Speaker 04: But that's not really the contribution to the telephone arts that the inventor came up with, right? [00:04:37] Speaker 04: I mean, you recite a telephone set. [00:04:42] Speaker 04: You recite a telephone set with call buttons. [00:04:45] Speaker 04: A telephone set with call buttons, a processor. [00:04:49] Speaker 04: and a memory. [00:04:52] Speaker 04: But all of that was established conventional technology in the phone art by the time this person filed his patent application. [00:05:04] Speaker 04: So in terms of trying to boil down what was the contribution here by the inventor, it seems to be identifying the incoming call phone numbers [00:05:19] Speaker 04: and then assigning those phone numbers to the speed dial buttons on the phone set. [00:05:27] Speaker 04: And so that seems like, if there's a focus of the claim, it's that action. [00:05:34] Speaker 04: It's that activity. [00:05:38] Speaker 05: Yes, that would be the focus. [00:05:41] Speaker 04: There's nothing else claimed in here about a new way of manufacturing a phone or a new way [00:05:49] Speaker 04: manufacturing a different processor or a new way of buttons on a phone. [00:05:56] Speaker 04: It's more about the thing that's different or the purported contribution is assigning phone call number data to buttons. [00:06:12] Speaker 04: It was already known in New York to assign phone call numbers to buttons. [00:06:17] Speaker 04: So the real gist here is the nature of the phone call numbers. [00:06:22] Speaker 04: It's not just my top five friends and family members. [00:06:26] Speaker 04: It is the particular most recent five phone call numbers that have called my phone set. [00:06:35] Speaker 05: I would say that what you're addressing here is the prior art telephones that were out there, we're talking 1999, did not have a button on that phone. [00:06:46] Speaker 05: that could perform what's being claimed. [00:06:49] Speaker 03: Are you saying there were no speed dial buttons before 1999? [00:06:53] Speaker 05: No, Your Honor, there were speed dial buttons. [00:06:56] Speaker 05: But a speed dial button would have to be manually programmed with a number which may or may not have been called in. [00:07:02] Speaker 02: I don't understand. [00:07:03] Speaker 02: I thought that the disclosure was that this wasn't the priority, but what you came up with, there was a new function for these buttons, right? [00:07:10] Speaker 02: Is that what you're saying? [00:07:11] Speaker 05: Well, if you had a telephone, [00:07:15] Speaker 05: the prior telephone, you could not, as far as I'm aware, take that. [00:07:21] Speaker 05: Maybe you would have to take it apart, rewire it, reprogram it in order to get it to store the information in that way. [00:07:29] Speaker 05: So it wasn't like you could just take a telephone set and say, now I want the incoming phone call to just go to this button. [00:07:38] Speaker 05: It didn't occur that way. [00:07:39] Speaker 01: The caller ID existed. [00:07:41] Speaker 05: Yes, caller ID existed, correct. [00:07:43] Speaker 04: And call logs, where you could scroll up and down a call log on the display of the phone and see who were the most recent callers to your phone. [00:07:54] Speaker 04: That was also known. [00:07:56] Speaker 05: Yes, Your Honor, and that's described in the specification also. [00:07:58] Speaker 04: Right. [00:07:59] Speaker 04: And it was also known to assign the five most recent phone numbers that you personally called out to [00:08:07] Speaker 04: to certain speed dial buttons. [00:08:10] Speaker 04: That's Marotiak, right? [00:08:12] Speaker 04: The prior art reference? [00:08:13] Speaker 04: Yes. [00:08:14] Speaker 04: Okay. [00:08:15] Speaker 04: So I guess the point I'm getting at is what I think this case boils down to, or the nature of the contribution of this inventor, is the character of the phone call numbers that have been assigned to the buttons. [00:08:33] Speaker 04: It was already known to assign phone call numbers to buttons. [00:08:37] Speaker 04: It was also known already to dynamically assign those phone numbers based on some preferred choice. [00:08:45] Speaker 04: According to the prior art, it was the most recent outgoing phone call numbers. [00:08:51] Speaker 04: This inventor says, well, let's change the phone call numbers. [00:08:56] Speaker 04: Instead of those phone call numbers, we're going to have the most recent calling in phone numbers assigned to those buttons. [00:09:03] Speaker 04: And so I guess the question is, [00:09:06] Speaker 04: Is that an inventive concept? [00:09:08] Speaker 04: The idea of choosing one set of phone call numbers over a known pre-existing set of phone call numbers to be assigned to those speed dial buttons? [00:09:23] Speaker 05: From the perspective of Section 101, yes, it would be an inventive concept. [00:09:28] Speaker 05: From a perspective of 102 and 103, that would be something that would be determined as to whether [00:09:34] Speaker 05: All they're doing is, is it obvious or is it anticipated by our law enforcement? [00:09:38] Speaker 04: The concern I have is we have decisions now from the court the past couple of years that say if the inventive concept has something to do with storing information, displaying information, transmitting information, organizing information, those are abstract ideas. [00:10:01] Speaker 04: And the fact that the information [00:10:04] Speaker 04: the nature of information is something different than what was actually in the prior art by itself isn't good enough to be an inventive concept. [00:10:14] Speaker 04: And so now we've been discussing the nature of this invention and we're talking about phone call number data being assigned to buttons that was already known and conventional. [00:10:26] Speaker 04: Now we're [00:10:27] Speaker 04: debating or quibbling over the nature of what type of phone call number data we're going to assign to those buttons, it seems to be, I guess I'm troubled with how we're going to find that this is inventive concept when we've found other types of inventions about the nature of data not being good enough to be an inventive concept. [00:10:48] Speaker 05: In those other cases, there was use of, say, a generic computer, which could be technically programmed to do anything, and there was just a reference to a generic computer. [00:10:57] Speaker 05: When you look at the claims themselves, they weren't specifically limited to a particular type of device. [00:11:03] Speaker 05: So here, you have to have an attendant telephone set with a button in which, when a number comes in, it is assigned to that button. [00:11:11] Speaker 05: And when that button is selected, it goes and calls that number. [00:11:15] Speaker 02: Well, couldn't the same be said about a number of our cases where we said just a generic computer isn't enough? [00:11:20] Speaker 02: But in those cases, didn't the claims take this generic computer and at least do something with it? [00:11:29] Speaker 05: In those cases, I guess the argument here could be, is there a new button or is there not a new button? [00:11:36] Speaker 05: In our argument, and the way we propose that the claim should be construed, there has to be a button that performs this. [00:11:44] Speaker 01: But isn't there an invented button? [00:11:48] Speaker 05: It was different from what the prior ARC buttons would work. [00:11:51] Speaker 01: But isn't it sufficiently different to be invented? [00:11:54] Speaker 05: Well, if it's not. [00:11:55] Speaker 01: Isn't that what DDR is asking? [00:11:58] Speaker 01: That's what Enfish is asking. [00:12:00] Speaker 01: And I think in those. [00:12:02] Speaker 01: Isn't it true that some of our cases are using step two ALICE analysis to inform the step one inquiry? [00:12:11] Speaker 05: I would say, at some point, you have to come back to the Supreme Court's language of what is an abstract idea. [00:12:17] Speaker 01: But I mean, if I were interpreting Alice in the first case that came here after Alice, I might agree with you. [00:12:27] Speaker 01: But we've got case law that seems to me that says it's OK in the analytic process to use step two thinking to ask yourself whether or not there's an abstraction here. [00:12:41] Speaker 01: Among other things, Judge Gilstrap was saying that claim one-year patent recites the steps of selecting, storing, and retrieving phone information. [00:12:52] Speaker 01: That sounds abstract. [00:12:55] Speaker 05: That's right. [00:12:56] Speaker 05: And if the claim only broadly claimed that, that would be correct. [00:13:00] Speaker 05: If this could be performed with a standard telephone, there would be a problem. [00:13:06] Speaker 05: And by standard telephone, I'm talking about any telephone that existed in 1990. [00:13:11] Speaker 01: That's right. [00:13:11] Speaker 01: But the question is, has something happened to the telephone that you're using that's in VETI? [00:13:17] Speaker 01: Isn't that what DDR was saying? [00:13:19] Speaker 01: DDR was saying, well, what the claims were doing, step two, is they were teaching a computer to do something it didn't want to do. [00:13:28] Speaker 05: And in this case, they're teaching a button to do what has not been previously programmed to do. [00:13:35] Speaker 05: a new button, a new physical button. [00:13:39] Speaker 05: So if there's a new physical button on a device to say that it is abstract, sort of takes away, then what meaning does abstract have? [00:13:50] Speaker 01: If there is a concrete... Is that how you'd argue this case, sort of under DDR? [00:13:55] Speaker 01: Say for example, we lied between step one questions. [00:13:59] Speaker 01: And we say, well, like in DDRY, I don't need to decide necessarily whether it is or is not abstract, because if it is, it's saved under step two. [00:14:08] Speaker 05: Yes, I would agree that under step two, it's also saved. [00:14:10] Speaker 01: Do you think this is really a DDR type case, where if assuming arguing there is an abstraction, nonetheless, it's saved under step two, because something unusual is happening with the telephone? [00:14:23] Speaker 05: Yes. [00:14:23] Speaker 05: If your honors were to find that it was an abstract idea under the second step, we would also say that [00:14:30] Speaker 05: the patent is patent-eligible subject matter because there are new buttons. [00:14:37] Speaker 05: You may think that the buttons are not particularly difficult to do. [00:14:41] Speaker 05: It was easy to do. [00:14:43] Speaker 05: But that's a separate issue. [00:14:45] Speaker 05: That would be an obviousness issue. [00:14:47] Speaker 05: Would somebody skilled in the art, would it have been obvious for them to just do this simple step? [00:14:52] Speaker 05: But in this case, you have a new telephone device. [00:14:56] Speaker 05: You may think it's a simple idea. [00:15:00] Speaker 05: But that doesn't make it abstract. [00:15:03] Speaker 05: It makes it a concrete idea. [00:15:04] Speaker 05: Not only concrete in terms of a physical form, because you have a physical new telephone device, but it's concrete in terms of what the defined scope of the invention is. [00:15:15] Speaker 05: So if you want to think of abstract, is it a vague idea? [00:15:20] Speaker 05: you can look at it from, well, is it not tied to anything? [00:15:23] Speaker 05: So that's where you have the generic computer. [00:15:25] Speaker 01: But would it be unfair to look at this claim and say, what this claim is doing is it's basically organizing call data using this phone with the buttons on it? [00:15:38] Speaker 05: That's one of the steps, yes. [00:15:41] Speaker 05: Organizing the call data to it. [00:15:42] Speaker 01: It's organizing the call data in an organizing sense of bringing it in, holding it, sending it back out, organizing in a very broad sense. [00:15:50] Speaker 05: Not in a broad sense, because how it's doing it is with a new device. [00:15:56] Speaker 05: A new device with a new button. [00:15:57] Speaker 05: Now, as I said, this you may think is obvious, you may think it's a very simple idea. [00:16:03] Speaker 01: You would challenge the notion that the abstract idea is organizing call data. [00:16:09] Speaker 05: That's correct. [00:16:10] Speaker 02: It's organizing it in a certain way. [00:16:15] Speaker 01: Just to say, that's what this claim is really drawn to, it's drawn to organizing call data. [00:16:21] Speaker 05: No, it's, your honor, I would say respectfully that it's drawn to a new device that organizes call data in a particular way. [00:16:28] Speaker 02: It's meant that you've got method claims, right? [00:16:30] Speaker 05: Yes, and the method claim requires a particular use of a telephone attendant, attendant telephone set with call appearance buttons that have certain functionality which did not exist in the prior. [00:16:41] Speaker 05: So this is a [00:16:42] Speaker 05: The call appearance buttons, there's lots of different things that can occur with a call appearance button. [00:16:47] Speaker 02: OK. [00:16:47] Speaker 02: I'm sorry, but we're way over time. [00:16:49] Speaker 02: So why don't we hear from the other side, and we'll start two minutes of rebuttal. [00:16:53] Speaker 02: Thank you. [00:17:06] Speaker 00: Good afternoon, Your Honor. [00:17:07] Speaker 00: May it please the Court. [00:17:09] Speaker 00: I want to go back to the question that [00:17:12] Speaker 00: Judge Chen asked at the outset of my colleague's discussion, I believe, Your Honor, stated that one way to look at this case would be that it boils down to the inventiveness of assigning certain types of numbers to buttons. [00:17:30] Speaker 00: The case law is clear that substituting one well-known and generic implementation, for example, a display that is clearly described in the specification for another [00:17:41] Speaker 00: a series of buttons, which we submit is also conventional and well-known, does not transfer the abstract idea claimed in this patent into a patent-eligible application, especially whereas here we know that those two conventional implementations were not only well-known, but are in fact interchangeable. [00:18:04] Speaker 00: Turning briefly to the abstract idea, and then I think I'd like to spend the balance of my time discussing the prong to analysis. [00:18:10] Speaker 01: You've changed your view of the abstract idea from what you argued at the district court. [00:18:16] Speaker 01: You don't agree with Judge Gilstrap. [00:18:19] Speaker 01: But you instead propose it's the abstract idea of redialing a telephone when prompted by an attendant. [00:18:27] Speaker 00: Your Honor, we don't disagree with Judge Gilstrap. [00:18:30] Speaker 00: In fact, I think if we look to Judge Gilstrap's. [00:18:32] Speaker 01: Well, you don't embrace his. [00:18:34] Speaker 00: I think that there are multiple ways to express this abstract idea. [00:18:38] Speaker 00: It's of course civil law that this court reviews judgments not opinions and the case law on this issue is replete with the notion that [00:18:51] Speaker 00: The abstract idea can be expressed in many ways. [00:18:54] Speaker 00: It's not necessary that everybody agree on the exact verbiage of how to express that abstract idea. [00:18:59] Speaker 02: Well, I guess that's true. [00:19:00] Speaker 02: But there's kind of, you'd like to know that the other side, that what we're all, you know, the script we're all working off of, we know what the parameters of that are. [00:19:09] Speaker 02: But why don't you tell us then what your current articulation is of the abstract idea and explain to us how it differs from digital to abstract. [00:19:18] Speaker 00: That's fair, Your Honor. [00:19:21] Speaker 00: My response to that is it does not differ, in fact, from Judge Gilstrap's. [00:19:24] Speaker 00: If you look to Judge Gilstrap's order on page six of his order, that's appendix page eight, this is where Judge Gilstrap addresses step one of the Alice Mayo analysis. [00:19:38] Speaker 00: At the first sentence there in the first foot complete paragraph, Judge Gilstrap explains that he reads the abstract idea as responding to a sender of a message. [00:19:48] Speaker 00: If you read down the page. [00:19:50] Speaker 01: How far down? [00:19:51] Speaker 00: In the middle of the next paragraph, there's a sentence that says, for example, claim one is really nothing more than the automation of responding to the sender of a message received on a telephone. [00:20:03] Speaker 00: Judge Gilstrap is not contradicting himself. [00:20:05] Speaker 01: How is that different from responding to blah, blah, blah, responding to the sender of a message? [00:20:09] Speaker 00: Yes, he's added in the discussion that it's responding particularly to the sender of a message received on a telephone. [00:20:16] Speaker 00: Our formulation in our response brief [00:20:21] Speaker 00: in this appeal of the abstract idea as redialing a telephone number is this. [00:20:26] Speaker 01: Let's look back over on page 7 of his opinion that A9 merely performs the abstract idea of responding to the sender of a message. [00:20:33] Speaker 01: So he's vacillating between you're just responding to any old message or a telephone message. [00:20:40] Speaker 00: I don't see. [00:20:40] Speaker 01: Or of a sloppy opinion. [00:20:41] Speaker 01: I mean, what's going on here? [00:20:43] Speaker 00: I think that Judge Gilstrap's opinion is internally consistent, Your Honor. [00:20:46] Speaker 00: We don't view it as vacillating. [00:20:48] Speaker 00: I think that the abstract idea, because of its very nature as an abstract idea, is open to various phrases. [00:20:54] Speaker 01: Would you agree that the abstract idea, whatever it is, is tied to a telephone? [00:20:58] Speaker 00: Yes. [00:20:58] Speaker 00: In these claims, there is a telephone recital. [00:21:01] Speaker 01: Tied to a telephone. [00:21:01] Speaker 00: Now, I think it's very important to point out that just as in the TLI case, which is exactly on all fours with this case, even though the claims require a physical telephone unit in this case, [00:21:13] Speaker 00: And I'm quoting from TLI here, the telephone unit itself is merely a conduit for that abstract idea. [00:21:20] Speaker 01: So it's responding to telephone calls? [00:21:24] Speaker 01: That's really what it boils down to. [00:21:27] Speaker 00: This abstract idea here is responding to telephone calls. [00:21:31] Speaker 01: Why do you have to say when prompted by an attendant? [00:21:34] Speaker 00: Well, I think that that's the most charitable reading of the abstract idea. [00:21:37] Speaker 00: This is a summary judgment rule 56 motion. [00:21:39] Speaker 00: So taking all of the inferences in patentees' favor, [00:21:43] Speaker 00: I think the most charitable... That's the attendant. [00:21:46] Speaker 01: The prompting is the button? [00:21:48] Speaker 00: I assume so. [00:21:49] Speaker 00: I thought you put it in there. [00:21:50] Speaker 00: Yeah, as much as I can. [00:21:51] Speaker 01: That's going to take care of the buttons? [00:21:52] Speaker 00: I don't think it takes care of the buttons. [00:21:54] Speaker 00: I think the buttons take care of themselves. [00:21:55] Speaker 00: This is reading the specification in the way most charitably to the, and taking every inference in the patentee's favor, Your Honor. [00:22:04] Speaker 01: So if the claim is responding to a telephone when prompted by an attendant, so somebody standing by the telephone [00:22:12] Speaker 01: When the call came in on caller ID that told you to respond, the call would be covered by that claim. [00:22:19] Speaker 00: I believe it would be. [00:22:19] Speaker 00: I think also the- Really? [00:22:21] Speaker 01: I mean, when you read a lot of the buttons? [00:22:23] Speaker 00: I think that the abstract idea here is that there is a prompting. [00:22:27] Speaker 01: Right, but in this pressing you on, you are prompted by an attendant. [00:22:29] Speaker 01: You've got Clevenger standing by the phone. [00:22:32] Speaker 01: It comes in. [00:22:33] Speaker 01: And I see the caller ID number. [00:22:35] Speaker 01: And it's my wife's son. [00:22:37] Speaker 01: And I say, honey, return that call. [00:22:40] Speaker 01: And your formulation of the claim would cover that. [00:22:45] Speaker 00: I think that's an infringement analysis. [00:22:47] Speaker 00: I'm talking here about the patentability. [00:22:49] Speaker 01: That's the scope of the claim. [00:22:51] Speaker 00: Yeah, and there are buttons recited in the claim, and we don't read those out. [00:22:55] Speaker 00: Our argument is that on a 101 analysis, in particular on step one, that the simple recitation of that generic conventional hardware button does not save the claim from unpatentability. [00:23:07] Speaker 00: It's different than either a 102 or 103 analysis, as well as an infringement analysis. [00:23:12] Speaker 01: Well, his argument is that, fine, you want to call an abstract idea of retiling a telephone, but it's retiling a telephone in a particular way. [00:23:20] Speaker 01: And then once you say in a particular way, you've tied in his telephone with the buttons on. [00:23:25] Speaker 00: Again, I think we need to, the abstract idea analysis, as this court has repeatedly recognized, is tricky. [00:23:30] Speaker 00: One of the best analytic tools we have [00:23:33] Speaker 00: as taught by this court, is to look at other cases with similar facts and see if the abstract idea there matches up. [00:23:40] Speaker 00: It's a particularly powerful analytic tool in this case because we have the TLI decision and, to be fair, the content extraction decision, both of which are strikingly similar to the facts we're faced with here. [00:23:52] Speaker 00: Again, in the TLI case, the court made clear that under Alice step one, Boxathon's claim that it invents a new telephone with new call appearance buttons [00:24:02] Speaker 00: does not rescue the claim from being directed to an abstract idea of redialing that telephone number when prompted. [00:24:10] Speaker 00: The 261 patent, as Your Honor's previously alluded, is one way to look at it as an example of organizing human activity. [00:24:20] Speaker 00: Returning missed calls is something we've all done. [00:24:22] Speaker 00: It was certainly being done long before 1999, the time of this patent. [00:24:26] Speaker 00: Receiving, organizing, and storing phone numbers from missed calls [00:24:30] Speaker 00: is very similar, if not effectively the same, as the well-known abstract concept of data collection, recognition, and storage that was found to be abstract and content extraction in several other similar cases. [00:24:44] Speaker 00: The patentee urges that there is unconventional hardware here, or perhaps that it's being used in an unconventional way. [00:24:54] Speaker 00: Because this is a Rule 56 appeal, we need to look at the record to see what record evidence we have of that. [00:25:00] Speaker 00: And when we examine the record, it turns out that there is no unconventional hardware here. [00:25:08] Speaker 00: And the conventional hardware is being used in a very conventional way to achieve a very conventional result. [00:25:15] Speaker 00: There's no dispute that telephones were known. [00:25:17] Speaker 00: I think it bears [00:25:18] Speaker 01: note that the only description of the particular- The question is rather not if there's a plausible argument that there's not an abstract idea here. [00:25:26] Speaker 00: That's very wrong. [00:25:27] Speaker 01: I'll go back to- There's a recent precedent that Judge Toronto, I can't remember the name of it, that says if there's a plausible argument that there is a non-abstract, the idea of non-abstract and you can't resolve the matter on summary judgment. [00:25:43] Speaker 00: I'm not sure if there's a plausible argument here, so I have a hard time answering that. [00:25:48] Speaker 00: in the abstract, I understand that if there is a dispute of material fact that would cause this court to reverse or to remand back to the district court for further consideration, here there is no dispute of material fact. [00:26:01] Speaker 00: And that's what I'm trying to get to. [00:26:02] Speaker 00: We can look at the record and see that viewing everything in Patney's favor, there is no dispute of material fact about the abstractness of this claim. [00:26:13] Speaker 01: But you have a genuine dispute between you and your adversary as to whether or not it's proper to reduce this patent to an abstraction. [00:26:26] Speaker 00: I recognize that that is a dispute that brings us before the court now. [00:26:30] Speaker 01: And that's in our analysis under 101's illegal question. [00:26:34] Speaker 01: That's correct. [00:26:35] Speaker 01: But I do believe we have a recent precedent that says, well, it's a plausible argument [00:26:40] Speaker 01: that the claim is not drawn to an abstraction, then there needs to be a trial. [00:26:46] Speaker 00: I don't dispute that. [00:26:47] Speaker 00: The precedent, I would say that this case is well outside that precedent. [00:26:50] Speaker 00: There is no plausible argument here, Your Honor, that these claims are not drawn to an abstract idea. [00:26:55] Speaker 00: The Court has taught over and over that fluke, going back quite a ways, stands for the proposition that the prohibition against it. [00:27:02] Speaker 01: You've agreed that it's responding to telephone calls. [00:27:05] Speaker 01: So the telephone is tied up. [00:27:07] Speaker 01: in whatever this abstraction is. [00:27:09] Speaker 01: So it isn't just a matter of responding to calls, which would be pretty broad. [00:27:14] Speaker 01: It's responding to calls coming in on a telephone. [00:27:18] Speaker 01: The recitation of the... The empty field is narrowed down to telephones. [00:27:21] Speaker 01: It's not responding to computer messages, right? [00:27:26] Speaker 01: Would this patent cover responding to messages over a computer, using a computer? [00:27:33] Speaker 00: If there's a phone on the other side and the computer, it is possible to send telephone calls. [00:27:37] Speaker 01: If it's just computer to computer. [00:27:39] Speaker 00: Computer to computer. [00:27:41] Speaker 01: Email messages. [00:27:42] Speaker 00: The claims do recite a telephone. [00:27:44] Speaker 01: OK. [00:27:45] Speaker 01: That's what I'm trying to get at, is that if you worry about preemption, the field is a little narrower than just returning all messages. [00:27:52] Speaker 00: And the court has held repeatedly that complete preemption, subject matter preemption, is not required. [00:27:56] Speaker 00: It is one clue as to the abstractness. [00:27:59] Speaker 00: But a failure to preempt every kind of communication does not necessarily lead to a finding of a lacking abstract idea. [00:28:05] Speaker 00: Again. [00:28:06] Speaker 01: And what is the proposition that even human can do it himself? [00:28:15] Speaker 01: Where does that take us in 101 analysis? [00:28:18] Speaker 00: Well, I think it takes us back quite a ways through the series of cases that hold that simply reciting generic hardware to overcome human error, to automate a human process or speed it up, is not sufficient to overcome the unpatentability analysis. [00:28:37] Speaker 01: The only fact is that means you've already established that there is an abstract idea. [00:28:43] Speaker 01: And so just doing it faster doesn't mean that does the fact that Gilstrup had in his opinions, or a human being, these are steps a human could do. [00:28:54] Speaker 01: Why does that have any relevance to step one of Alex? [00:28:58] Speaker 00: I agree with Your Honor that it- One. [00:29:00] Speaker 00: I'm sorry? [00:29:01] Speaker 01: Just step one. [00:29:02] Speaker 00: That's right. [00:29:03] Speaker 00: And I agree with Your Honor that that relevance is clearly established as to step two. [00:29:07] Speaker 00: Looking at step, and I believe that may have been what the court was addressing in the opinion there, although as some of the opinions moved in this court, the two steps sometimes get somewhat conflated. [00:29:17] Speaker 00: That said, looking at step one, I think it shows the very conventional nature of this technology. [00:29:22] Speaker 00: This is not, like many of the cases, a very particular narrow DDR, for example, technical issue that's being solved. [00:29:30] Speaker 00: This is responding to telephone messages. [00:29:33] Speaker 00: This is not a very specific, highly difficult problem that's being solved. [00:29:37] Speaker 00: And the way it's being solved is not unconventional either. [00:29:41] Speaker 00: So I think that when you take it and look at that, whether the idea is abstract itself, we have to be taught by, we should not be dissuaded, rather, by the mere recitation of certain hardware elements, especially generic conventional hardware elements here. [00:29:56] Speaker 00: Again, I do think it's important to note that Fluke states that ideas can't be certain. [00:30:03] Speaker 00: I'm sorry? [00:30:06] Speaker 01: I appreciate that. [00:30:10] Speaker 01: You've encapsulated the patentee's argument well, Your Honor, and we disagree with it. [00:30:25] Speaker 00: The mere insistence over and over of a new telephone and a new button or a new telephone system doesn't actually [00:30:33] Speaker 00: make it a new telephone button or new telephone system. [00:30:37] Speaker 00: The intrinsic evidence. [00:30:38] Speaker 01: It doesn't make it for 103. [00:30:41] Speaker 01: They may not satisfy 102 or 103. [00:30:44] Speaker 00: I agree with that as well. [00:30:46] Speaker 00: But you cannot overcome a 101 increase simply by saying, oh, but it's new. [00:30:51] Speaker 00: I've got hardware and it's new. [00:30:52] Speaker 00: The record must show that. [00:30:53] Speaker 00: And if we look at the claims, if we look at the patent, if we look at the expert declaration put forward by the patentee, we see that as [00:31:03] Speaker 00: As Judge Chang was alluding to early on, there's no dispute the telephone is known. [00:31:08] Speaker 00: The only description of this telephone is in Figure 2 of a processor next to a memory with no description of how that works beyond that. [00:31:16] Speaker 00: Caller identification at Column 4 and 5 in the patent is described. [00:31:21] Speaker 00: Call recovery features is in Column 1 as the prior art. [00:31:24] Speaker 00: Call logging and storing, again Column 1. [00:31:27] Speaker 00: The processor, Mr. McNally testifies, [00:31:30] Speaker 00: This is a joint appendix 334, paragraph 35. [00:31:32] Speaker 00: He says there are well-known processors available on the market that could process multiple incoming phone lines. [00:31:39] Speaker 00: He then says at paragraph 43 on appendix page 336 that allotting areas in memory for storing particular telephones were known. [00:31:47] Speaker 00: I think what it gets to, Your Honor, is that this is exactly the kind of lip service to hardware that does not negate [00:31:57] Speaker 00: or does not prevent the finding of an abstract idea. [00:32:00] Speaker 01: These claims, the only hardware, in other words, we see recited in these claims. [00:32:07] Speaker 00: I think we have to take it in order. [00:32:09] Speaker 00: I think we cannot get to this point. [00:32:10] Speaker 01: No, but I mean, isn't that really where it's coming to? [00:32:12] Speaker 01: I mean, you say we're going to get a hard case to decide on step one, so what you do is you go look and see what's step two answer, and step two's answer, that takes care of step one. [00:32:22] Speaker 00: No, Your Honor. [00:32:23] Speaker 00: I think we have to apply the analysis, step one, step two, and here there is an abstract idea. [00:32:28] Speaker 01: Of run-up binding once more. [00:32:31] Speaker 00: Certainly. [00:32:31] Speaker 00: Responding to a telephone call when prompted by an attendant. [00:32:35] Speaker 00: And that is consistent with the abstract idea discussed in Judge Gilstrap's order, and is also demonstrated by the fact that the only hardware that Patentee can rely on to take this out of the realm of abstractness is conventional, well-known, prior art hardware, with no additional disclosure of how any of this assignment would take place. [00:32:56] Speaker 02: We are out of time. [00:32:57] Speaker 00: We are. [00:32:57] Speaker 00: Thank you. [00:33:00] Speaker 02: We've restored two minutes. [00:33:08] Speaker 05: Mr. Bennett. [00:33:09] Speaker 05: Thank you, Your Honor. [00:33:10] Speaker 05: I just want to make three quick points. [00:33:14] Speaker 05: Counsel for the defendant was saying that this is not a highly difficult patent invention. [00:33:21] Speaker 05: But this court in rapid litigation management at 827 F3 1042 at 1052 said patent eligibility does not turn on ease of execution or obviousness of application. [00:33:34] Speaker 05: So whether this is a simple invention, [00:33:36] Speaker 05: really isn't relevant to whether it's an abstract idea under step one or fail step two. [00:33:42] Speaker 05: In terms of automation of just responding, what the defendants have said in terms of the abstract idea is that this is just simply responding, adding just a bit more detail to the district court's abstract idea of responding to a sender of a message. [00:34:04] Speaker 05: But this court has also found that McRoe [00:34:07] Speaker 05: that if the computer is used to perform a distinct process to automate a task previously performed by a human, that is still patent-eligible subject matter. [00:34:17] Speaker 05: So because there's a device here that may automate what was previously done by people, does not make it ineligible for patenting. [00:34:26] Speaker 05: And then with respect to TLI and the other cases that the defendants rely on, if you look at those cases TLI, the patent owner admitted there was no new telephone. [00:34:37] Speaker 05: It was using a standard telephone in a standard way. [00:34:40] Speaker 05: And if you look at the other cases cited by defendants, cyber source, cyber phone, planet bingo, content extraction, you are using a standard device in a standard way. [00:34:50] Speaker 05: Here, you're having to have a new telephone with a new call appearance button that did not previously exist. [00:34:57] Speaker 04: So here- The phone and the call buttons are the same. [00:35:01] Speaker 04: It's the nature of the phone numbers that are being allocated to those old buttons that's different. [00:35:08] Speaker 05: Well, I guess it would depend on, is that a new device? [00:35:12] Speaker 05: If you're saying that because telephones have buttons, there's no such thing as a new button on a telephone, I would disagree with that. [00:35:20] Speaker 05: There are new buttons on telephones. [00:35:22] Speaker 05: A call appearance button can have many functionality. [00:35:25] Speaker 05: In this case, the purpose of the button was to solve problems that could not be solved with the prior art telephones as they existed. [00:35:32] Speaker 05: So the invention came up with a new telephone device [00:35:36] Speaker 05: that could be used. [00:35:36] Speaker 05: You cannot infringe this using a standard telephone. [00:35:40] Speaker 05: You can't infringe this without a telephone. [00:35:43] Speaker 05: So in this case, it's not directed to an abstract idea. [00:35:47] Speaker 05: Even if you do find it's directed to an abstract idea, if you look at the second step of the analysis, there are elements that show that it is more than directed to preempting that abstract idea. [00:36:00] Speaker 02: Thank you. [00:36:01] Speaker 02: We thank both sides of the case to submit it. [00:36:02] Speaker 02: That concludes our proceedings for this morning. [00:36:05] Speaker 02: Thank you. [00:36:05] Speaker 02: All right.