[00:00:09] Speaker 01:
The next argument is wireless media innovations versus mayor terminals, LLC.

[00:00:31] Speaker 01:
This is appeal number 15-1634.

[00:01:03] Speaker 01:
Mr. Swenson?

[00:01:06] Speaker 01:
Yes, Your Honor.

[00:01:06] Speaker 01:
You've reserved five minutes for rebuttal, right?

[00:01:08] Speaker 01:
That's correct.

[00:01:09] Speaker 01:
Thank you.

[00:01:10] Speaker 01:
Whenever you're ready.

[00:01:12] Speaker 04:
May it please the Court, the District Court's invalidation of WMI's patent claims represents the point in the evolution of Section 101 jurisprudence where Graham v. Deere has been thrown out the window and Alice Step 2 has basically subsumed 103 to the detriment of our patent system.

[00:01:29] Speaker 04:
Section 103 in the 1952 Patent Code struck an important balance in the law.

[00:01:34] Speaker 04:
And the four-part Graham v. Deer test created a framework to apply it that has worked for 60 years as of this month.

[00:01:40] Speaker 04:
That includes the clear and convincing burden of proof and recognizing the importance of key underlying factual inquiries into the prior art and differences from the patent claims and done so at the time of the invention.

[00:01:53] Speaker 04:
All while forbidding the use of hindsight in this analysis.

[00:01:56] Speaker 04:
In contrast, the decision before this court under the rubric of section 101 on appeal today is for all practical purposes a decision on obviousness, but solely based on the pleadings with no submission and consideration of any factual evidence at all, using only the disclosures of the specification as the evidence against the claims and refusing to apply the clear and convincing evidence burden of proof.

[00:02:19] Speaker 01:
So did the district court

[00:02:24] Speaker 01:
incorrectly characterized the abstract idea underlying these claims?

[00:02:28] Speaker 04:
Absolutely.

[00:02:30] Speaker 01:
So what is your proposed redefinition?

[00:02:35] Speaker 04:
Well, I take issue with the phrasing of the question.

[00:02:38] Speaker 04:
I don't redefine the abstract idea because I don't think that it does claim an abstract idea.

[00:02:43] Speaker 04:
I would point to specifically starting with the 789 patents and claim one

[00:02:51] Speaker 04:
And there, it's a system claim to a container monitoring system.

[00:02:55] Speaker 04:
This is JA-91, of course, column 9.

[00:02:59] Speaker 04:
And it consists of four absolutely concrete elements in combination.

[00:03:06] Speaker 04:
It is a system that includes a receiving area, a container entry point, a switching vehicle, and means for recording information.

[00:03:14] Speaker 04:
So there's nothing abstract about that.

[00:03:17] Speaker 04:
This couldn't be more concrete of a combination of physical elements that work together.

[00:03:23] Speaker 01:
Alice's claim had components, or at least some of the claims had very specific components, right?

[00:03:30] Speaker 04:
Well, Alice takes us into an area where you're talking about financial transactions, but they're implemented on a computer.

[00:03:36] Speaker 04:
And they also talk about, in the case law, what we call Beauregard claims, where something is put into a medium because to

[00:03:45] Speaker 04:
execute an algorithm, for example, in the financial area on a computer, it has to be put into computer code and it has to be run on a computer, which is why the law takes us into the idea of a general purpose computer.

[00:03:56] Speaker 04:
So we add that to what is otherwise a method or a process because unless you're actually physically sitting with a paper and pencil to do a financial transaction, you have to do it on a computer.

[00:04:08] Speaker 04:
So the law takes that into account and we have this whole added aspect of a general purpose computer.

[00:04:15] Speaker 04:
That is nothing like this claim.

[00:04:17] Speaker 04:
This is a container system that includes, like I said, a receiving area, a container entry point, a switching vehicle, which is a giant vehicle that moves containers that are carried on ships and rail cars and trucks.

[00:04:33] Speaker 01:
Do you have other claims that are directed more to the monitoring of various actions and then recording it and then generating reports?

[00:04:44] Speaker 04:
Absolutely.

[00:04:45] Speaker 04:
Judge Chen, your question raises a very important point, which is that, as we point out, particularly in our reply brief, they have tried to characterize all of our claims with one table on page 10 and 11 of their brief without discussing any of these different claims.

[00:04:59] Speaker 04:
They've summarized them in their own self-serving attorney-generated language in a table of six rows.

[00:05:05] Speaker 01:
Right.

[00:05:06] Speaker 01:
No, but I understand you're taking us to this claim because this is the claim that has something that, or this is your best claim for

[00:05:15] Speaker 01:
identifying physical components.

[00:05:16] Speaker 04:
Well, so I think it is probably the best claim.

[00:05:20] Speaker 01:
There's other claims that are really more devoted to monitoring actions taking place.

[00:05:27] Speaker 00:
Claim nine, for example, of the 789.

[00:05:29] Speaker 04:
The method claim, which is, I agree with Judge Bryson.

[00:05:32] Speaker 01:
And so this one, this particular claim, I guess goes beyond that in the sense that it's actually calling for the actions to take place and then monitoring those actions and

[00:05:45] Speaker 01:
and recording data.

[00:05:47] Speaker 04:
I'm not sure.

[00:05:47] Speaker 04:
You're saying claim one calls for those actions to take place or claim nine?

[00:05:50] Speaker 04:
I lost you.

[00:05:51] Speaker 01:
Sorry.

[00:05:51] Speaker 01:
Claim nine is more a method claim.

[00:05:53] Speaker 01:
I guess what I would call the observational method, where you're observing something, you're recording data, and maybe you're generating reports in this one.

[00:06:02] Speaker 01:
I'm not sure.

[00:06:03] Speaker 01:
But then this claim, claim one, is different in the sense that now it's actually describing the playing field, the playing arena, where the events take place.

[00:06:15] Speaker 04:
The physical, the whole physical system.

[00:06:17] Speaker 01:
And then the final step is, or the limitation is, means for recording information about what all the activities are that are going to happen in the arena.

[00:06:31] Speaker 01:
So I guess what I was wondering is, I mean, if I go to a baseball game and I'm in the audience and I have a little chart with me and I'm

[00:06:41] Speaker 01:
monitoring the actions on the baseball field and on recording every strike and ball and hit and out, is that an abstract idea?

[00:06:51] Speaker 04:
I'm monitoring the baseball game.

[00:06:56] Speaker 04:
The monitoring action may be.

[00:06:58] Speaker 04:
I understand where you're going and I do see the distinction.

[00:07:01] Speaker 04:
Which comes back to, I think, the way you started your question, is that there are different aspects to these claims.

[00:07:05] Speaker 04:
And as Judge Bryson pointed out, Claim 9 is a method claim.

[00:07:08] Speaker 01:
OK, so we agree that that's an abstract idea, what I basically described.

[00:07:12] Speaker 04:
I think simply monitoring something is an abstract idea.

[00:07:17] Speaker 01:
OK, so what if I'm instead watching the ballgame on TV at home, and now I'm sitting in my comfy chair, and I've got my chart again, and I've got my pen, and I'm recording

[00:07:30] Speaker 01:
every strike and ball and hit and out and run scored.

[00:07:35] Speaker 01:
Is that an abstract idea, too?

[00:07:36] Speaker 04:
Well, I think, Your Honor, the question goes to what you're claiming.

[00:07:40] Speaker 04:
If I claim a score book and a pencil and a television set for remote monitoring of a baseball game that's taking place in a stadium, then maybe I can claim the stadium.

[00:07:50] Speaker 04:
I'm extrapolating.

[00:07:52] Speaker 04:
That's a physical system that involves the ability, not the action, the ability to monitor a baseball game.

[00:08:01] Speaker 04:
If I have a method claim that says monitoring a baseball game by watching the game and recording the score, there's a point where it crosses over into an abstract idea.

[00:08:13] Speaker 04:
But that's the whole point about our claim one of the 789 patent, and by the way, also claim one of the 291 patent, which is all

[00:08:21] Speaker 04:
physical means plus function elements, and continuing our point that we've made in our briefs that these claims are distinct, in the 789 patent, claim three adds a communication link, not an active communicating or monitoring, but a communication link.

[00:08:37] Speaker 04:
And then you go to claim eight in the 789 patent, and it makes that a mobile telecommunications link, which again is a physical thing.

[00:08:45] Speaker 04:
And this is 1995.

[00:08:47] Speaker 04:
We're not talking about sitting here in 2015 when the New Jersey court made its decision.

[00:08:51] Speaker 04:
We're supposed to be in 1995 saying, hey, we've got these giant switching vehicles in a gate, in a yard, and we're adding a mobile telecommunications link to the switching vehicle.

[00:09:01] Speaker 01:
Fine, but if under Alice, we conclude that there is some kind of abstract idea here, and we can quibble about what's the right precise articulation formulation.

[00:09:13] Speaker 01:
But then, according to Alice, we now have to go on the hunt for the inventive concept.

[00:09:21] Speaker 01:
I didn't quite see you make the case in your briefing that yes, the communications link and dependent claim XYZ is an inventive concept for implementing the abstract idea, which you would dispute there's an abstract idea.

[00:09:36] Speaker 01:
But given that you have to agree there is one for purposes of argument, the dependent claim XYZ's communication link recitation is an inventive concept.

[00:09:47] Speaker 01:
I didn't quite see that kind of an argument.

[00:09:49] Speaker 04:
Well, we did, Your Honor, because what we argued in our brief is that what's patentable here, and this is why I refer to Section 103 and how this subsumes the obviousness analysis, again, on a 12b6 motion with no evidence and no scope and content of the prior art, the question isn't the communication link in Claim 3 or mobile communication link in Claim 8.

[00:10:12] Speaker 04:
The question is the combination.

[00:10:13] Speaker 04:
That's what we patented.

[00:10:14] Speaker 04:
We patented everything in Claim 1 plus what's in Claim 3.

[00:10:18] Speaker 04:
And the point is what's innovative and what's not obvious is that combination.

[00:10:24] Speaker 04:
And we get to the district court.

[00:10:25] Speaker 04:
The district court gets bogged down.

[00:10:27] Speaker 04:
And in thinking that they're applying step two of Alice, starts talking about there's nothing novel here.

[00:10:34] Speaker 04:
The court says that twice.

[00:10:35] Speaker 04:
I think it's JA 19 and 20.

[00:10:37] Speaker 00:
Step two of Alice and novelty, innovation for obviousness purposes are pretty close cousins, at least it seems to me.

[00:10:47] Speaker 00:
I understand the frustration.

[00:10:49] Speaker 00:
the patent bar with the step two of Alice for that reason, but it's what the Supreme Court said.

[00:10:56] Speaker 04:
Well, Your Honor, I certainly understand that, but I would stress, and we put this in our reply brief, the whole point of section 103 was that we had gotten bogged down in this problem once before with the flash of genius test back in the 40s, which Judge Rich was involved in writing the patent code with section 103, which attempted to resolve that.

[00:11:15] Speaker 04:
That led to Graham versus Deere and a framework for analyzing that in four steps.

[00:11:20] Speaker 04:
And now we've elevated 101.

[00:11:22] Speaker 04:
And as you say, I absolutely agree.

[00:11:25] Speaker 04:
Right now, I have a hard time finding the difference between 101, you know, Alice Step 2.

[00:11:30] Speaker 00:
But we have to try.

[00:11:33] Speaker 00:
So what is it here that satisfies the inventive concept?

[00:11:39] Speaker 00:
It is.

[00:11:39] Speaker 00:
What component of your invention

[00:11:41] Speaker 04:
It is going back to 1995, not using hindsight in the present and saying something is conventional today.

[00:11:49] Speaker 04:
It's going back and looking at the combination of these elements of a receiving area, a container entry point.

[00:11:56] Speaker 04:
And those things mean, for example, the physical area with the gates and entry points, RFID tags.

[00:12:02] Speaker 04:
And then if we extend to claim three and claim eight, a communication link, and then a mobile communication link,

[00:12:08] Speaker 04:
It is the combination.

[00:12:10] Speaker 04:
I don't know how else to say it.

[00:12:11] Speaker 04:
What's innovative is combining those things.

[00:12:14] Speaker 04:
And the point of this patent being issued is that they demonstrated at least to the patent office that hadn't been done, it was not obvious.

[00:12:22] Speaker 00:
And again, with the acknowledgement that this is going to sound a lot like an obviousness inquiry, but if I have a yard in which containers are coming in and out, and I have a guy who sits at the fence,

[00:12:38] Speaker 00:
with a notepad, and he notes the numbers of the containers as they come in and notes where they're going and so forth, that would sound like it falls within the scope of claim not.

[00:12:52] Speaker 04:
So first of all, let me point out, even if I were to agree with you on that, Your Honor.

[00:12:57] Speaker 00:
I first would like to know whether you do agree with me on that.

[00:13:00] Speaker 04:
Well, I think that it's not quite the same thing, because what the whole spec here talks about is real-time monitoring and being able to track things remotely in real time.

[00:13:10] Speaker 04:
And you cannot do that.

[00:13:11] Speaker 04:
I mean, you don't even have carrier pigeons fast enough that I can write it down.

[00:13:14] Speaker 00:
So he's got a computer next to him, and he enters the number that he just wrote down on his pad.

[00:13:20] Speaker 04:
So that is a computer, but it's part of a combination.

[00:13:23] Speaker 04:
It's not just a general-purpose computer.

[00:13:25] Speaker 04:
It's not putting an algorithm like Alice or Bilsky or something else.

[00:13:30] Speaker 04:
on a general purpose computer.

[00:13:31] Speaker 04:
It's a computer that's part of a combination that serves an overall purpose.

[00:13:36] Speaker 04:
So it's more than that.

[00:13:39] Speaker 04:
So to go one step back from that, I then will just, for the record, say that claim nine, even if you're correct on that, claim nine is a method claim that is totally distinct from claim one of each patent.

[00:13:50] Speaker 04:
That is purely physical combinations of things.

[00:13:54] Speaker 01:
OK, you're deep in your rebuttal.

[00:13:56] Speaker 04:
Understood, John.

[00:13:58] Speaker 01:
We'll give you four minutes of rebuttal.

[00:14:00] Speaker 01:
So let's hear from the other side.

[00:14:03] Speaker 01:
Mr. Donahue?

[00:14:04] Speaker 03:
Good morning, Your Honor.

[00:14:07] Speaker 03:
Please, as a court, I would like to start with the comment Judge Bryson made regarding claim nine and the guy at the gate.

[00:14:14] Speaker 03:
In fact, if we look at the 789 patent, column five, it describes the types of data input devices, conventional data input devices that can be used.

[00:14:26] Speaker 03:
And at about line 18,

[00:14:28] Speaker 03:
It says that one form of data identification and input is by a human operator at a terminal.

[00:14:34] Speaker 03:
So in fact, a person at the gate recording the numbers of the container would read on the claims.

[00:14:43] Speaker 03:
It's exactly, highlights that what the 789 and the 291 patents describe really are an abstract idea.

[00:14:52] Speaker 03:
The abstract idea of monitoring, recording and reporting

[00:14:56] Speaker 03:
on the locations of these containers in the yard.

[00:15:00] Speaker 03:
And all that the claims do at most is, later on top of that, a general purpose computer and conventional data gathering devices.

[00:15:10] Speaker 03:
For example, a person typing into a terminal.

[00:15:13] Speaker 03:
Another example in that column five is a person in a switching vehicle with a Motorola Model HT1000 handheld radio, which is like a little walkie talkie.

[00:15:24] Speaker 03:
relating information.

[00:15:26] Speaker 02:
If the 789 patent claim one were the only claim in front of the court, how would you describe the abstract idea in that claim?

[00:15:38] Speaker 02:
Your Honor, I would just claim one of the 789.

[00:15:41] Speaker 03:
I understand.

[00:15:42] Speaker 03:
So if you look at just claim one of the 789, the abstract idea would be

[00:15:53] Speaker 03:
Accumulating, you could take it right from the preamble, accumulating and storing information on shipping containers.

[00:15:59] Speaker 03:
So it would be, again, the first parts of monitoring and recording the location of shipping containers within the yard.

[00:16:08] Speaker 02:
Where does the accumulating and storing information claim that that's in the means for recording?

[00:16:16] Speaker 03:
The means for recording, presumably.

[00:16:19] Speaker 02:
And what's the patenteach?

[00:16:21] Speaker 02:
in the means and the spec.

[00:16:24] Speaker 02:
What's the patent?

[00:16:24] Speaker 02:
Tell us about what those means for recording.

[00:16:27] Speaker 03:
So what the patent describes for recording would be, as I pointed to earlier at column five on JA89, beginning at about line 18, you've got a human operator at a terminal where you would input information.

[00:16:46] Speaker 03:
You've got a human operator with a handheld radio.

[00:16:50] Speaker 03:
where you would convey information and then input the data into the container management monitoring control system.

[00:16:59] Speaker 03:
And then you could have some conventional optical or RF scanners.

[00:17:03] Speaker 03:
And so those would be the ways that you would record the information.

[00:17:06] Speaker 02:
Accumulating and storing information.

[00:17:09] Speaker 02:
You think the abstract idea is accumulating and storing information.

[00:17:13] Speaker 02:
Yes, your honor.

[00:17:16] Speaker 03:
And that's all done into further down on column five beginning about line 45.

[00:17:21] Speaker 03:
a conventional management information system or a database.

[00:17:26] Speaker 01:
So then, are you saying that claim one, the way it's structured in terms of having all of these components and all of these actions taking place, they're all kind of like the warm-up act to the real moment of the claim, which is the recording of the information of all those actions that take place.

[00:17:49] Speaker 03:
That's correct.

[00:17:49] Speaker 01:
I would say it sounds almost like what happened in the Mayo versus Prometheus claim in the sense that you're administering some kind of drug to a patient and then the drug metabolizes in the person's bloodstream and then you measure the metabolite in the bloodstream so that you can appreciate whether that metabolite level is too high or too low and then

[00:18:17] Speaker 01:
fact is that final step was deemed to be a law of nature and all those other steps leading up to it were ultimately deemed to be insignificant.

[00:18:29] Speaker 01:
So is that kind of similar?

[00:18:32] Speaker 01:
I'm just thinking out loud here to this claim.

[00:18:35] Speaker 02:
Another way of looking at how is the structure in the comprising limitations in claim one

[00:18:43] Speaker 02:
any different, say, for example, than what goes into hedging.

[00:18:47] Speaker 02:
If you say method for hedging, Bilsky, and you have to have your hedging something.

[00:18:53] Speaker 02:
You're hedging one thing against another.

[00:18:58] Speaker 02:
You're hedging, for example, you say method for hedging, and you take one thing at one point in time that is discernible, and you're making a bet and hedging on the other side of it.

[00:19:10] Speaker 02:
So you've set up these two things

[00:19:13] Speaker 02:
they're hedging about.

[00:19:16] Speaker 02:
Why aren't they like the receiving area or the entry point or the switching vehicle?

[00:19:22] Speaker 03:
I think that's right, Your Honor.

[00:19:24] Speaker 03:
Judge Chen, I also think your baseball analogy earlier is a good one.

[00:19:28] Speaker 03:
My wife keeps score at every baseball game we go to.

[00:19:31] Speaker 03:
So I'm particularly fond of that one.

[00:19:33] Speaker 03:
It would be like claiming the baseball field and the players on the field, the manager and the dugout, all of which you need in order to score and understand the baseball game when you're really claiming a method or a system for scoring the baseball game.

[00:19:47] Speaker 01:
So if the abstract idea is recording the actions in a baseball game, all those other elements and steps are necessary in order

[00:20:00] Speaker 01:
for the abstract idea to be done, I guess is what you're saying.

[00:20:03] Speaker 03:
They're what the abstract idea is applied to, essentially.

[00:20:08] Speaker 02:
Right.

[00:20:08] Speaker 02:
OK.

[00:20:11] Speaker 02:
So what happened if you claimed an unconventional step in the method for scoring the game, including determining what the star structure would be in the sky that night?

[00:20:23] Speaker 02:
Something that's novel and unusual and unexpected?

[00:20:27] Speaker 03:
I think it's possible that that would work.

[00:20:30] Speaker 03:
That's not what we have in the WMI case.

[00:20:33] Speaker 02:
If there was some way to- What Mr. Swenson is saying is having this enormous switching vehicle in 1995 was unusual and novel and inventive and different.

[00:20:47] Speaker 03:
Well, I'm not sure that the switching vehicle itself is novel.

[00:20:52] Speaker 03:
Containers have always been moved within yards.

[00:20:56] Speaker 03:
And they have to be moved.

[00:20:58] Speaker 03:
If the container can't be moved.

[00:20:59] Speaker 02:
What I'm saying is nobody would have thought of replacing Judge Bryson's individual with the green eye shade who sits at the entry level up in a big tower would have replaced that with a huge machine of some sort that was automated.

[00:21:15] Speaker 03:
Well, the switching vehicle is moving the container.

[00:21:24] Speaker 03:
or reporting and recording on the location of the container is something else.

[00:21:30] Speaker 03:
It's either a human being that's watching, a human being in the switching vehicle with a radio, or a conventional RF or optical scanner.

[00:21:40] Speaker 03:
So it's not the switching vehicle that's recording.

[00:21:42] Speaker 02:
Or maybe in the prior ERT, the thing that's switching there was an individual who got in the truck and moved it.

[00:21:48] Speaker 02:
Now they have some device that doesn't.

[00:21:50] Speaker 03:
Oh, I'm sorry.

[00:21:51] Speaker 03:
You're saying that would be the unconventional

[00:21:53] Speaker 03:
That could be.

[00:21:54] Speaker 03:
That's not described in the WMI patents.

[00:21:58] Speaker 03:
Neither the 291 nor the 789.

[00:22:00] Speaker 03:
In fact, the 291 patent identifies that tracking containers is well known.

[00:22:06] Speaker 03:
It's contending that the invention is tracking them within the container yard.

[00:22:16] Speaker 03:
There's no specialized unconventional hardware here.

[00:22:23] Speaker 03:
Again, the switching vehicles are part of the container yard, just like the baseball bat is a part of the baseball field.

[00:22:32] Speaker 03:
And there's no specialized software described.

[00:22:34] Speaker 03:
There's really no software at all described, aside from mentioning conventional management information systems or databases.

[00:22:44] Speaker 03:
Because of that, from our perspective, the patent fails both prongs of the ALICE test.

[00:22:49] Speaker 03:
We had the abstract idea of monitoring, recording, and reporting.

[00:22:53] Speaker 03:
on the container location.

[00:22:55] Speaker 03:
And that can't be overcome with the conventional data gathering devices.

[00:23:00] Speaker 03:
This is much like content extraction with the scanner, which was considered a conventional data gathering device.

[00:23:11] Speaker 01:
So is every data gathering system that uses conventional data gathering devices

[00:23:22] Speaker 01:
ineligible under section 101?

[00:23:25] Speaker 03:
Not necessarily.

[00:23:26] Speaker 03:
Not if it's tied to something that's not an abstract idea.

[00:23:30] Speaker 03:
The issue is just that the conventional data gathering element, like a handheld radio or a conventional optical scanner, layered on top of an abstract idea isn't enough for the inventive concept under step two.

[00:23:52] Speaker 00:
So what you're saying, I guess, is that if your invention is a system of gathering information and recording it, then it doesn't matter for purposes of patentability, whether that occurs in a baseball field or a rail yard or a container yard or any other specific application of that general practice.

[00:24:22] Speaker 00:
the specific application under ALICE falls away because just because you have a specific context within which the abstract idea is being applied doesn't make it any the less abstract.

[00:24:33] Speaker 00:
Yes, Your Honor.

[00:24:33] Speaker 00:
It's not the usual sense of the word abstract, which is that it's other than specific.

[00:24:38] Speaker 00:
Yes, Your Honor.

[00:24:38] Speaker 00:
But specificity is not a defense to an ALICE-type argument.

[00:24:43] Speaker 03:
And there isn't specificity in the 789 or the 291 patents in terms of some

[00:24:49] Speaker 03:
unconventional combination or some particularized software or hardware.

[00:24:55] Speaker 00:
Well, there's some specificity.

[00:24:57] Speaker 00:
RFID is referenced as a means of doing the recording and reporting.

[00:25:04] Speaker 00:
So there's some specificity, but your argument is that's conventional.

[00:25:08] Speaker 03:
Yes, thank you for that distinction.

[00:25:10] Speaker 03:
The specificity is laying out exactly what the conventional components are, including by manufacturer name and model number.

[00:25:18] Speaker 03:
There's no specificity as to something new that would provide the inventive concept beyond the conventional devices.

[00:25:30] Speaker 03:
If your honors don't have other questions, I have covered our points.

[00:25:35] Speaker 03:
Thank you.

[00:25:45] Speaker 04:
With all respect, Your Honor, I think the baseball analogy, we've gotten a little far afield.

[00:25:49] Speaker 04:
I didn't mean that as a pun, but it turned out that way.

[00:25:53] Speaker 04:
There historically was, for example, a patent on arena football.

[00:25:57] Speaker 04:
And that was patentable.

[00:25:59] Speaker 04:
I learned this at an event at the Iowa Intellectual Property Association.

[00:26:02] Speaker 04:
The inventor received an award, and so he talked about it.

[00:26:05] Speaker 04:
And he patented a new thing where you had a different field size and the boards and different end zones and different widths of goal posts.

[00:26:14] Speaker 04:
kind of comparable to this in terms of you have this large area and you have these aspects to it, you have these physical components.

[00:26:21] Speaker 04:
Now the fact that you would have a method for scoring the game or rules to the game might also be part of that invention, but the way the patent system works, those can be separately patented under different types of claims, system claims, method claims, and they're non-contiguous in the sense that just because we can point to claim nine as you have Judge Bryson doesn't mean that that

[00:26:41] Speaker 04:
works backwards to invalidate claim one, which covers this area and the physical aspects of this.

[00:26:48] Speaker 04:
And so I feel we're getting away from what claim one is by talking about claim nine and working backwards.

[00:26:54] Speaker 04:
These are different claims for different purposes.

[00:26:57] Speaker 04:
And I also want to point out, and absent the question, this would be my last point, that there's a lot of talk in the brief about cases like Digitech and content extraction.

[00:27:06] Speaker 04:
The fact that there was a scanner and a computer together, these two pieces in Digitech

[00:27:11] Speaker 04:
It was actually a patent for a method of digitizing information, okay?

[00:27:16] Speaker 04:
And the fact that you used a conventional computer and scanner, which the patentee admitted before this court on the record in oral argument was conventional together, not just a generic computer, but that it had a scanning ability.

[00:27:29] Speaker 04:
That's why that was invalid under 101.

[00:27:32] Speaker 04:
This is a different case.

[00:27:34] Speaker 04:
I mean, as we've said in the briefs, we certainly don't admit that this is all conventional equipment.

[00:27:38] Speaker 04:
But more importantly, to conclude on the obviousness point,

[00:27:41] Speaker 04:
This is a combination.

[00:27:43] Speaker 04:
The key is that this is a combination.

[00:27:45] Speaker 04:
And as we've cited the cases in our brief, you can even have, obviously, old elements in a combination, as long as the combination is new and non-obvious.

[00:27:54] Speaker 04:
And we never got to that point in litigation, because this was a rule 12b6 motion on the pleadings, where nothing was considered but the patent itself.

[00:28:03] Speaker 04:
So that is what is inherently unfair about this, and we believe it should be reversed.

[00:28:09] Speaker 01:
OK.

[00:28:09] Speaker 01:
Thank you, Mr. Smilton.

[00:28:10] Speaker 01:
The case is submitted.