[00:00:12] Speaker 00: Mr. Henrath, please proceed. [00:00:37] Speaker 03: Thank you, Your Honor. [00:00:38] Speaker 03: May it please the court [00:00:40] Speaker 03: The error committed below is twofold. [00:00:43] Speaker 03: First, the district court conducted its Alice analysis of Berkheimer's method claims in an oversimplistic manner untethered to the claim language as informed by the 713 specification. [00:00:58] Speaker 03: By doing so, it ignored how the claims improved computer functionality and database systems [00:01:06] Speaker 03: by claiming a specific manner, how? [00:01:08] Speaker 01: Would it be fair for me to characterize one of your arguments, the one that you're going to now, as in the following way. [00:01:18] Speaker 01: Whether something meets Alice step two, and in particular whether it's well-known, conventional, and routine, the language from Mayo, is a question of fact. [00:01:28] Speaker 01: And on summary judgment, that question of fact can only go against you if there's no genuine dispute of fact. [00:01:35] Speaker 01: And your specification itself, in particular in column two, when it says known asset management systems didn't do this, didn't have this, couldn't do this, that that is evidence that created at least a question of fact that should have precluded summary judgment? [00:01:49] Speaker 03: Yes. [00:01:50] Speaker 03: That and in addition, all the facts stated in Berkheimer's Rule 56.1 statement. [00:01:59] Speaker 03: Hewlett-Packard advanced its motion as a pure matter of law. [00:02:03] Speaker 03: saying, just look at the claims and apply Alice. [00:02:07] Speaker 03: They did not have any counter facts. [00:02:09] Speaker 03: There was no prior art before the court. [00:02:12] Speaker 01: Well, they introduced expert testimony, right? [00:02:15] Speaker 03: Well, no, that was not in their local rule, 56.1 statement of fact. [00:02:20] Speaker 03: It was in violation of that Merrillville versus Westenburg case that summarized 15 years of Northern District of Illinois rule 56 jurisprudence. [00:02:32] Speaker 03: In other words, they cited to the record and didn't rely upon anything in the statement of facts as you're supposed to do under summary judgment procedure. [00:02:41] Speaker 04: Did the district court address either to rely on or to reject as procedurally improper? [00:02:52] Speaker 04: Was it Schoenfeld? [00:02:53] Speaker 04: No. [00:02:53] Speaker 04: Is it Schoenfeld declaration? [00:02:55] Speaker 03: On the 112 issue, it did have a footnote saying that his naked conclusion [00:03:01] Speaker 03: was a quote factual finding. [00:03:03] Speaker 03: I think that's counter to cases in this circuit. [00:03:07] Speaker 03: But it remains silent on the 101 issue facts. [00:03:16] Speaker 03: And concerning the 101 issue. [00:03:19] Speaker 01: But even if they did have an expert declaration on 101, wouldn't that at best just create a question of fact in light of your specifications [00:03:29] Speaker 05: assertion yes we had counter-experts i guess i want to know what are the issue are your specifications statements in your specification even if you didn't have a counter-expert with a statement in the specification how something is different news and advantage of the invention could that be something that could create a genuine issue of fact if there's also uh... [00:03:59] Speaker 05: evidence from an accused infringer suggesting that the invention is conventional? [00:04:05] Speaker 03: Exactly. [00:04:06] Speaker 03: Most certainly. [00:04:08] Speaker 03: Because, in fact, the patent should have been viewed in its best light and taken as true if the court was going to say, oh, it's just a pure matter of law. [00:04:24] Speaker 03: I think that what's important is that the claim one method steps [00:04:28] Speaker 03: does not occur in off-the-shelf, out-of-the-box generic computers of October 2000, the priority date of the application. [00:04:40] Speaker 03: Rather, Claim 1 structurally defines a specific programming and specific manner of digital archiving to improve computer functionality. [00:04:51] Speaker 03: What is important is the first two steps, whereas construed by the district court, [00:04:56] Speaker 03: A human readable source code item is presented to a parser that parses the item into something distinctly different. [00:05:06] Speaker 03: A plurality of multi-part machine readable object structures wherein portions of the structures have searchable information tags. [00:05:15] Speaker 03: Now the multi-part object structure is the key phrase of Claim 1. [00:05:21] Speaker 03: It was not construed below. [00:05:23] Speaker 03: What they are and what is done with them [00:05:26] Speaker 03: is the crux of this appeal. [00:05:29] Speaker 03: We think the phrase is rich in meaning just like the programmable operational characteristics of visual memory or the self-referential database in ENFISH because this parsing is a data transformation into a new resultant particular level of object structure. [00:05:51] Speaker 03: Now, the specification informs [00:05:55] Speaker 03: that the multi-part object structures are document and graphical object oriented data, metadata, elements, properties, values, and their relationships. [00:06:08] Speaker 03: This is not a parsing of a source code item into its machine language composite. [00:06:16] Speaker 03: Rather, it's a parsing into the multi-part object structures that provides access to each [00:06:24] Speaker 03: of the input items, data, metadata, elements, properties, and values in a manner separated from and isolated from the composite form, not constrained by the composite form, segregated from each other, and in machine language for object level control and processing. [00:06:48] Speaker 03: Prior digital asset management systems saved thousands [00:06:53] Speaker 03: of documents and graphical items within an enterprise. [00:06:58] Speaker 05: Can I make sure I understand your argument? [00:07:00] Speaker 05: Is it your argument that the improvement here is from the ordered combination in the claim? [00:07:07] Speaker 05: You're not arguing that the individual claim elements are somehow novel or nonconventional? [00:07:14] Speaker 03: I do think [00:07:15] Speaker 03: It is not abstract under ALICE step one because of the improved computer functionality and we also argue inventive concept under ALICE step two. [00:07:25] Speaker 03: Okay, so we're referring to step two. [00:07:28] Speaker 05: Is it your position that there's a particular limitation in claim one that was never performed before? [00:07:36] Speaker 03: Well, on ALICE step two, the inventive concept in the claims is the establishment of a reconciled [00:07:43] Speaker 03: object structure archive in accordance with predetermined standards and rules at an object level to reduce redundancy. [00:07:53] Speaker 03: We say the multi-part object structures is novel, is a point of difference in very rich in meaning. [00:08:01] Speaker 03: And one reason for that is that... Where did you argue that in your brief? [00:08:06] Speaker 01: I must have missed that. [00:08:09] Speaker 03: Well, we argued that under ALICE Step 1, we have improved computer... No, well, we're not talking about ALICE Step 1. [00:08:15] Speaker 01: We're talking about ALICE Step 2, and where is the improvement? [00:08:17] Speaker 01: I mean, I understood the improvement to be predominantly the one-to-many functionality, which is repeatedly touted throughout your spec as not being known in the prior art and able to achieve enormous efficiency in the computer functioning. [00:08:35] Speaker 03: We also argued the reduced redundancy of the ARCA [00:08:39] Speaker 03: objects and relationships as stored in the archive, and the enterprise-wide multifaceted control of objects and their relationships and their integrity at a machine language object level to conform to design rules and production standards, to implement object control procedures such as access, security, workflow, and to distribute approved [00:09:08] Speaker 03: objects for enterprise-wide use and reuse in the outputting of items as well as other benefits and efficiencies, time savings, etc. [00:09:20] Speaker 03: And this comes from the fact that in the old use of storage of documents and graphical items, when they were machine readable, these items remained in their original composite state. [00:09:38] Speaker 03: To use any aspect of these items, you had to access the entire composite and then find what was needed to be worked upon within the item. [00:09:50] Speaker 03: It was a document-centric approach with multiple instances of common redundant elements throughout the archive. [00:10:00] Speaker 03: Claim 1 and the novelty in the inventive concept under ALICE Step 2 departs from this model. [00:10:08] Speaker 03: The parsing transforms the composite into unique multi-part object structures unconstrained by the composite. [00:10:17] Speaker 03: To use the multi-part object structures, you need only access the object level aspect or attribute you need. [00:10:27] Speaker 03: And then these multi-part object structures can be controlled and reconciled, pair, claim one, steps three and four. [00:10:35] Speaker 03: This is an entirely new and different efficient way of working with documents and graphical items. [00:10:43] Speaker 03: One unique object can be stored in an archive and shared via linkage to many others. [00:10:50] Speaker 03: Can I ask about something? [00:10:55] Speaker 04: There's some difference between the parsing the item limitation of claim element one [00:11:04] Speaker 04: a difference with respect to generality and some of the spec material that your brief points to that says the parsing can be into objects assigned by the parser. [00:11:21] Speaker 04: Claim one doesn't require that. [00:11:22] Speaker 03: Well, the parser, in addition to parsing into the multi-part object structures, can tag [00:11:30] Speaker 03: such structures. [00:11:31] Speaker 04: Yes, and tag. [00:11:33] Speaker 04: But claim one applies even to object structures that are, let's call it, inherent in the document and you just identify them and tag them. [00:11:48] Speaker 04: That is, it's broader than the claim covers something that seems a whole lot more familiar than the richer [00:11:59] Speaker 04: functionality described in the spec of a parser that says, I'm actually not just looking at the pieces of a check, for example, that are apparent on the face. [00:12:12] Speaker 04: I'm going to unify into an object things that I'm going to decide should be unified, as opposed to the document already giving that to me. [00:12:24] Speaker 04: So I wonder if the claim [00:12:26] Speaker 04: is over broad with respect to what I think your brief tries to identify is the improved aspect of claim one. [00:12:40] Speaker 03: We would disagree. [00:12:40] Speaker 03: And the reason for that is that you must focus on what is tagged, what is established for identification, linkage, and retrieval purposes. [00:12:53] Speaker 03: It is portions [00:12:55] Speaker 03: of the multi-part object structures that the tags are associated therewith. [00:13:00] Speaker 03: It's not with respect to a machine language composite of a source code item. [00:13:07] Speaker 03: Rather, it is portions of the multi-part object structures that are so tagged and then evaluated with respect to other object structures previously stored in the database for reconciliation with [00:13:24] Speaker 03: standards and rules. [00:13:26] Speaker 03: And this ultimately results in the reconciled database where one object can be stored as opposed to multiple instances of that object throughout a database. [00:13:40] Speaker 01: But that doesn't even come in until claim four. [00:13:43] Speaker 01: Claim one says nothing about storing a reconciled object. [00:13:45] Speaker 01: Yes, all claim one has to claim. [00:13:48] Speaker 01: I mean, I think Judge Toronto's point is a [00:13:52] Speaker 01: valid one that you need to figure out how to respond to, both in terms of the breadth of the parsing limitation as claimed, but you know, as well as the fact that none of this storage in the archive stuff is part of claim one either. [00:14:07] Speaker 01: Claim one is just vastly broad. [00:14:10] Speaker 01: So even if the archive storage somehow amounted to something new, which I don't see immediately how that's so in light of the record, but even if it did, that's not in claim one either. [00:14:20] Speaker 03: Well, claim one in its preamble defines the usage as a method of archival of an item in a computer processing system. [00:14:30] Speaker 03: And all claims need to do is claim. [00:14:33] Speaker 03: The specification teaches. [00:14:36] Speaker 03: The claim defines over the prior art, even at a stage before you say, now store it. [00:14:44] Speaker 03: We have the claim set up such that it is presented for reconciliation [00:14:50] Speaker 03: prior to storage. [00:14:51] Speaker 03: Sure, in a dependent claim, that storage does occur. [00:14:55] Speaker 03: But like I say, claim one only needed to define over the prior art. [00:15:01] Speaker 03: I know that's a 102, 103, there could be 112 questions, et cetera. [00:15:06] Speaker 03: But concerning patent eligibility, there is a valid basis for the claim to be brought as it is. [00:15:13] Speaker 04: Can you remind me what [00:15:16] Speaker 04: happened in the district court with regard, and I know I'm speaking generally here, with regard to claim construction of some of the terms in claim one, terms like your reconciliation claim, terms like the, I guess mostly reconciliation and predetermined variance. [00:15:41] Speaker 04: What if any claim constructions [00:15:47] Speaker 04: narrow and define the scope of some of that language? [00:15:53] Speaker 03: Well, the claim construction concerning the parser and the parsing is a program that dissects... Can you point me? [00:16:00] Speaker 03: What am I supposed to look at when I'm... There is in the brief, we have a table of all the claim constructions and... What page would you like us to look at? [00:16:09] Speaker 03: If I could come back and tell you the page, I don't have it readily memorized. [00:16:14] Speaker 03: But the parsing [00:16:17] Speaker 03: Presenting to a parser as a program that dissects and converts source code into object code to dissect and convert page 10 of your brief I think It's that so be it if it if you have it there. [00:16:32] Speaker 03: Oh, you don't have it in front of you. [00:16:34] Speaker 03: No, I do not but That given the main term of [00:16:43] Speaker 03: is the multi-part object structures. [00:16:45] Speaker 03: That was not a term that was construed by the district court. [00:16:49] Speaker 03: The constructions also say at steps three and four that you must analyze and compare the multi-part object structures with object structures previously stored in the database to determine variance with user-defined rules or predetermined standards. [00:17:07] Speaker 03: So those are the constructions, but the main term, and that which we think is like programmable operational characteristics of visual memory, is the initial parsing into multi-part object structures. [00:17:20] Speaker 03: If I could for a moment just say one thing about the 112 issue, as I see time is so limited, and that is Berkheimer's system claims are not indefinite under the Noddle standard because the claim one phrase, [00:17:35] Speaker 03: We're in the archive, exhibits minimal redundancy, informs with reasonable certainty. [00:17:43] Speaker 03: It's uncontested. [00:17:44] Speaker 01: OK, well, we have your briefs on this point, and you've used all your time, your rebuttal time, and two minutes extra. [00:17:50] Speaker 01: So let's hear from the other side at this point. [00:17:53] Speaker 03: OK, thank you, Your Honor. [00:17:54] Speaker 01: Yeah. [00:17:54] Speaker 01: Mr. Peterson? [00:18:09] Speaker 01: Please proceed. [00:18:10] Speaker 02: May it please the court. [00:18:12] Speaker 02: William Peterson, on behalf of Apoly HP Inc. [00:18:16] Speaker 02: You'll find the district court's claim construction on page 47 of the index, a chart at the end, listing all of the construed terms. [00:18:24] Speaker 02: And Your Honor, let me begin with multi-part object structure, where my friend spent most of his argument. [00:18:32] Speaker 02: And I think what you heard is an argument that is based on a claim construction that was never urged to the district court. [00:18:39] Speaker 02: If Mr. Berkheimer had believed that multi-part object structure carried a very specific detailed meaning, that this phrase was somehow the heart of the invention, that it was an innovative new data structure, the time to make that argument was in claim construction in front of the district court, not on appeal before this court. [00:19:00] Speaker 02: That's not a limitation that he's pressed for. [00:19:03] Speaker 02: Also note there's been no previous argument that the preamble to claim one. [00:19:07] Speaker 01: This district court held that each of the independent and dependent claims describe only steps that are well-known, well-understood, routine, and conventional computer functions. [00:19:23] Speaker 01: Isn't that a fact finding, whether something is well-known, routine? [00:19:27] Speaker 01: And I mean, district courts can make fact findings on summary judgment when there's not a material dispute, obviously. [00:19:32] Speaker 01: But isn't that a fact finding? [00:19:34] Speaker 02: No, Your Honor, I don't believe so. [00:19:36] Speaker 01: What case law do you have to suggest that? [00:19:38] Speaker 02: Well, I'll point out that this court routinely resolves inquiries under Section 101 at the pleading step, at the summary judgment step. [00:19:46] Speaker 01: If this court were to conclude... Yes, but in all of those cases, it's every case I've ever read, it was undisputed whether or not something was well-known, you know, particular elements were well-known, routine and conventional. [00:20:01] Speaker 02: Well, I think that's true. [00:20:02] Speaker 02: My understanding, though, is that it's undisputed. [00:20:05] Speaker 02: that these elements were known and conventional. [00:20:07] Speaker 02: There's no dispute, for example, that parsing was well-known at the time of Mr. Burkheimer's invention. [00:20:12] Speaker 01: I'll point you to Mr. Burkheimer's testimony on that, which is, I believe... What about all the one-to-many functionality? [00:20:21] Speaker 01: When you say there's no dispute, that's well-known. [00:20:24] Speaker 01: The patent itself seems to dispute that on its face pretty strongly. [00:20:27] Speaker 02: Well, the one-to-many editing, which is what the patent and advantage of the patent purports to achieve, [00:20:33] Speaker 02: simply results in the way the patent stores documents. [00:20:36] Speaker 02: And this is simply an abstract method of storing documents on a computer. [00:20:41] Speaker 02: And computers routinely store documents. [00:20:44] Speaker 02: This court has routinely recognized in its cases, content extraction, various intellectual ventures cases, the electric power group, that what computers do is collect information, store information, analyze information. [00:20:56] Speaker 02: And what's important here, I think it's part of the ALICE step two inquiry. [00:20:59] Speaker 01: Yes, but just like in ENFISH, when you can have a data table [00:21:03] Speaker 01: that improves functionality because it reduces your need for repetitive or redundant storage. [00:21:08] Speaker 01: Here, whether it's right or not at the end of the day, this patent alleges that the storage of redundant common graphical elements leads to inefficiencies and increased costs. [00:21:19] Speaker 01: Known asset management systems used in the graphic arts industry do not address this inefficiency in the storage of graphical documents or elements. [00:21:28] Speaker 01: They say this in two separate places. [00:21:30] Speaker 01: I read to you from column two. [00:21:31] Speaker 01: They also say it in column one. [00:21:33] Speaker 01: And then they expressly tie this in the patent to the one-to-many advantage, parsing out a graphical image that may be common across a number of documents and storing only it with a tag so that when new documents come in, you don't have to store that graphical image again. [00:21:51] Speaker 01: You can just tag it. [00:21:52] Speaker 01: And then if you want to make a change to it, it changes all of them at once. [00:21:56] Speaker 01: Whether it's true or not that known asset management systems didn't do this, the patent says it. [00:22:02] Speaker 01: And that's evidence. [00:22:03] Speaker 01: The intrinsic record is evidence. [00:22:06] Speaker 02: Well, yes, your honor. [00:22:06] Speaker 02: So two answers to that. [00:22:08] Speaker 02: First, let me explain why that is an abstract idea. [00:22:11] Speaker 02: The patent isn't, first factually, the patent isn't offering a specific solution to the problems of implementing that sort of abstract idea. [00:22:20] Speaker 02: There are two particular places in specification I'd like to draw you to. [00:22:24] Speaker 02: One is column six. [00:22:25] Speaker 02: And you'll see this, I believe it's line 21. [00:22:30] Speaker 02: It's appendix page 62. [00:22:31] Speaker 02: It will be understood that while a preferred data structure is disclosed and described, other data structures are usable without departing from the spirit and scope of the invention. [00:22:42] Speaker 04: I'm sorry, what were you just reading from? [00:22:45] Speaker 02: This is from column six of the patent. [00:22:47] Speaker 02: I believe it's lines 21 through 24. [00:22:49] Speaker 01: I guess I don't understand what you mean for us to take away from that. [00:22:57] Speaker 02: Well, what I'd like to take away is that the patent isn't claiming any particular data structure. [00:23:01] Speaker 02: used to store these objects that it breaks the items going into the archive into. [00:23:07] Speaker 02: It's simply claiming the idea of break items going into an archive up into different objects and store them in generic data structures. [00:23:17] Speaker 02: The data structures aren't defined by any specific advances in the software arts, as you had in Infish with these self-referential tables that are compared to previous technical computer science collections. [00:23:28] Speaker 02: The data structures are simply generic data structures [00:23:31] Speaker 02: that are defined in terms of what they store. [00:23:33] Speaker 02: The parser is simply a generic computer program that's defined in terms of the result that it accomplishes. [00:23:38] Speaker 02: So you're not really seeing anything other than take an abstract idea and apply it on a computer. [00:23:44] Speaker 05: So just to make sure I understand your position, I think what you're saying is you think the one-to-many feature is just a benefit that results from the abstract idea you find in claim one. [00:23:55] Speaker 02: Absolutely. [00:23:56] Speaker 02: And let me talk about this abstract idea. [00:23:58] Speaker 02: So imagine a company that hires new employees [00:24:01] Speaker 02: gives new employees documents when they show up at work. [00:24:04] Speaker 02: Think of a law firm. [00:24:05] Speaker 02: If you're a new partner to a law firm, you get a packet of documents. [00:24:08] Speaker 02: If you're an associate, you get a packet of different documents. [00:24:10] Speaker 02: If you're a new secretary, you get a packet of different documents. [00:24:14] Speaker 02: Now, you could imagine that there would be a law firm, even though there's some overlap between the documents that are given to these new employees, you could imagine a law firm that had one copy of here are the new partner documents, here are the new associate documents, here are the new secretary documents. [00:24:29] Speaker 02: The problem is that everyone gets a new copy of the parking policy, everyone gets a new copy of the information technology policy. [00:24:37] Speaker 02: So if you have to change your IT policy, you then have to change, here's the new IT policy, we're going to change it in the partner materials, change it in the associate materials, change it in the secretarial materials. [00:24:47] Speaker 02: Of course, that's not how companies actually store these materials. [00:24:51] Speaker 02: If everyone gets a copy of the new IT policy, if everyone gets a copy of the parking policy, they just have one copy of that parking policy in their files. [00:24:59] Speaker 02: And then when a new partner comes in, they take the partner-specific documents, photocopy those, and photocopy the partner, the parking policy, and hand it to them. [00:25:07] Speaker 02: If a new associate comes in, they photocopy the associate-specific documents, photocopy the parking policy, and hand it to them. [00:25:14] Speaker 02: So that when you change the parking policy, you change it in that one place in your file system, and then when you create the new packet, [00:25:21] Speaker 01: Ah, see that's the difference. [00:25:22] Speaker 01: When you create a new packet, here what this computer goes to is changing all the ones that were already distributed to people. [00:25:31] Speaker 01: I mean, that's the critical difference. [00:25:33] Speaker 01: Every document stored in this system that has a tag that relates to that graphical image will automatically be true. [00:25:41] Speaker 01: The difference, your hypothetical and what you want me to see is what this does [00:25:47] Speaker 01: is it actually changes the ones that are already in the hands of all the people you distributed it to. [00:25:52] Speaker 01: Because each of those people represents a file where that graphic image is tagged. [00:25:58] Speaker 01: So would that be remarkable? [00:25:59] Speaker 01: Wouldn't it be remarkable if in paper world you could make a change on your master copy, and it wouldn't just change the ones you give to new employees, but it changed the ones you gave to all the stored employees that are otherwise already in your register? [00:26:14] Speaker 02: You're on a respectfully... That would be... [00:26:15] Speaker 01: A shocking invention. [00:26:17] Speaker 02: I think that's simply an advantage that comes generically through the use of a generic computer. [00:26:23] Speaker 01: But it doesn't because a generic computer doesn't break things apart, recognize items that are likely to be high replicated graphical images, store them separately and tag them, then recognize when new documents come in that that same item is present and don't store it because they can just store the tag and thereby save a lot of [00:26:45] Speaker 01: memory. [00:26:46] Speaker 01: And then on top of all that, the advantage of, oh, and if I just make a change to the master file, it automatically will repopulate in every single one of those stored documents. [00:26:57] Speaker 01: I mean, I... Well, Your Honor, what I'd say is that... It just doesn't seem like generic use of computer. [00:27:02] Speaker 01: I'm not aware of generic computers that did that already. [00:27:06] Speaker 02: Well, I'd say it's actually extremely similar to what's routinely done in relational databases, which date back to the 70s. [00:27:11] Speaker 01: Except that's not in the record. [00:27:13] Speaker 01: Remember, I started this by saying what's in this patent may not be correct and it may not prevail at the end of the day. [00:27:20] Speaker 01: But for me, why doesn't it preserve a case beyond at least the summary judgment stage when the patent itself says known asset management systems didn't know how to do this. [00:27:32] Speaker 01: And as a result, they were inefficient. [00:27:33] Speaker 01: They used more memory. [00:27:35] Speaker 01: They took more time. [00:27:37] Speaker 01: This process saves computer memory, storage, processing time, et cetera, et cetera, et cetera. [00:27:43] Speaker 01: So regardless of whether all of that proves to be true at the end of the day, why isn't the patent's representations about that at least evidence that precludes a grant of summary judgment on that point? [00:27:54] Speaker 02: Your Honor, the problem is that the reason that abstract ideas are not patentable is not that they don't have advantages to them. [00:28:03] Speaker 02: Look at the Supreme Court's decision in Mayo. [00:28:05] Speaker 02: Applying natural laws, discovering natural laws, often covers a great many advantages. [00:28:10] Speaker 02: If, as the patent suggests, this is a truly new [00:28:12] Speaker 02: abstract idea. [00:28:13] Speaker 02: Mr. Burkheimer, who was in advertising and not in software development, came up with something clever and new to use a computer for. [00:28:20] Speaker 02: There's nothing that says this wouldn't have advantages associated with it. [00:28:23] Speaker 02: I could invent the abstract idea of make objects out of metal. [00:28:26] Speaker 01: But see, Mr. Burkheimer would disagree with your statement. [00:28:28] Speaker 01: He would say, I didn't just come up with something clever and new to use a computer for. [00:28:32] Speaker 01: He would say, I came up with a way to improve the computer. [00:28:37] Speaker 01: This is something that we need computers to do every day, but the computer itself isn't set up to do it in an efficient way. [00:28:44] Speaker 01: The computer itself isn't set up to do it in a way that reduces the amount of memory that needs to be stored. [00:28:50] Speaker 01: I think Mr. Berkheimer would respond to your point by saying, no, I'm like DDR. [00:28:55] Speaker 01: I'm an improvement in the technology of the computer. [00:28:58] Speaker 05: What if it's an improvement in the technology of the computer and the ability to make the one-to-many editing [00:29:07] Speaker 05: It's a more efficient way to edit on a computer. [00:29:12] Speaker 05: Why wouldn't that fit within DDR or NFISH as being a technical solution to a technical problem, even if the individual elements of the claim are conventional, but it's the ordered combination that wasn't done before? [00:29:30] Speaker 05: Or at least there's evidence of that. [00:29:32] Speaker 02: What the district court recognized here, and I don't think Mr. Burkheimer's ever responded to, is that the sorts of problems that he's trying to solve, the problems of a need, as you put it, for many to one editing, the need to minimize redundancy in an archive, are the sorts of problems that occur in both pencil and paper archives and on computers. [00:29:51] Speaker 02: And so even if he restricts his solution to solutions involving a generic computer, it doesn't [00:29:58] Speaker 02: That doesn't mean he's solving the problem in the software arts. [00:30:02] Speaker 02: And I'll note, when you look at what he said he was inventing in his invention and specification itself, he's not talking about, I'm going to make computers work better. [00:30:10] Speaker 02: I am going to give us faster computers. [00:30:13] Speaker 02: I'm going to generally improve computer software when it's used for all purposes. [00:30:16] Speaker 02: He tells us, and this is on page 60 of the appendix, column one, that the invention pertains to digital asset management systems. [00:30:23] Speaker 02: It's computers maintaining archives and archiving [00:30:27] Speaker 02: is a task for which a computer is used in its ordinary capacity. [00:30:32] Speaker 02: Now, Judge Moore, I think you're right that he might have come up with a new way of using a generic computer, that he might have come up with a generic computer doing things that haven't. [00:30:44] Speaker 01: I never suggested he came up with a new way of using a generic computer. [00:30:47] Speaker 01: I always like to be called right, but not when actually it has nothing to do with what I said. [00:30:51] Speaker 02: I'm sorry, Your Honor. [00:30:52] Speaker 01: What I said was I think he improved the functioning of the computer itself. [00:30:56] Speaker 02: Well, I was thinking of perhaps an earlier statement that you had made, which is that this is not something for which generic computers have been used before. [00:31:04] Speaker 02: And I'm sorry if I misunderstood your previous statement. [00:31:07] Speaker 02: But I do think that coupling a new abstract idea with routine and conventional use of a computer, that is, parsing, data manipulation, data storage, that doesn't lead to patent-eligible subject matter. [00:31:20] Speaker 02: I think really the key here should be on ALICE step two, which is [00:31:24] Speaker 02: did Mr. Berkheimer add some type of inventive concept to this abstract idea of breaking documents into pieces before you put them into an archive? [00:31:33] Speaker 01: And when you start looking at the inventive concept... Not just breaking documents into pieces, but also being able to then modify those pieces and have it proliferate out over lots of documents instead of having to change them in series. [00:31:46] Speaker 02: And that's not found in Claim 1, which the district court created as representative. [00:31:49] Speaker 02: No, it's not in Claim 5. [00:31:50] Speaker 02: Correct. [00:31:50] Speaker 02: And as the district court found, Mr. Berkheimer [00:31:54] Speaker 02: below treated claim one is representative and didn't develop arguments. [00:31:58] Speaker 01: Page 1280 of the appendix. [00:31:59] Speaker 01: Let's take a look at it. [00:32:11] Speaker 02: Yes, Your Honor, I believe that's Mr. Berkheimer's four sentences on the dependent claims. [00:32:15] Speaker 01: Correct. [00:32:17] Speaker 01: For example, claim five requires selectively editing an object structured [00:32:21] Speaker 01: linked to other structures to thereby effect a one-to-many change in the plurality of archived items. [00:32:26] Speaker 01: Such additional elements, yada, yada, yada, add inventive concepts, as per the testimony of Plaintiff Vexford Peter Nicholson. [00:32:35] Speaker 01: So he expressly argues in his briefing below that claim five, and he talks expressly about the one-to-many, adds an inventive concept. [00:32:47] Speaker 01: Seems clearly preserved to me. [00:32:49] Speaker 02: I would respectfully disagree and think district court was well within its discretion to conclude that this is not a sufficient argument about the defendant claims, simply to describe claim five rather than fully developing an argument about why the many-to-one change in the plurality constitutes an inventive concept at the abstract idea. [00:33:14] Speaker 02: And I believe you'll find that on page [00:33:18] Speaker 02: I'm sorry. [00:33:22] Speaker 02: Appendix 14, note 6, is where the district court notes that Mr. Barkheimer had treated claim one as representative. [00:33:31] Speaker 00: OK. [00:33:31] Speaker 00: Is there any last minute thought? [00:33:34] Speaker 00: Your time's up, but if you have a closing thought. [00:33:37] Speaker 02: No, Your Honor. [00:33:37] Speaker 02: I would just, if I may, point you to the claims in intellectual ventures versus Capital One. [00:33:42] Speaker 02: That's the 2017 case. [00:33:45] Speaker 02: I think they're remarkably similar here [00:33:47] Speaker 02: The very first component claimed in that device claim is, in fact, a parser that breaks a document up into data objects. [00:33:54] Speaker 02: Just like Mr. Bergheimer, the patent owner in that case coined new terms for generic data types. [00:34:00] Speaker 02: This court readily concluded that those claims were directed to an abstract. [00:34:04] Speaker 04: Which of the IP cases? [00:34:05] Speaker 04: Just give me like an F3rd. [00:34:08] Speaker 02: It's 850, F3rd, 1332. [00:34:10] Speaker 02: Thank you, Your Honor. [00:34:16] Speaker 01: Thank you very much. [00:34:18] Speaker 01: We have a little bit of rebuttal time left. [00:34:29] Speaker 03: Your Honor, just a few points. [00:34:31] Speaker 03: First, concerning whether or not the findings of what was well-known, routine, or conventional with respect to the claims or the claim steps is not just a factual [00:34:46] Speaker 03: issue, but it also is exacerbated by the fact that we should be looking at this matter through the lens of October 2000. [00:34:56] Speaker 03: We are here 17 years removed, and we should give credence to the specification. [00:35:02] Speaker 03: My other point is that Per Enfish, McRoe, visual memory fails in a bunch of other cases. [00:35:09] Speaker 03: The 101 patent inquiry must examine the benefits and advantages taught [00:35:15] Speaker 03: by the specification as being attributable to the claims. [00:35:20] Speaker 03: And that is one of the difficulties we have here is that the opinion below did not consult the specification as informing the patent claims or gave cursory review to the specification taught benefits and advantages. [00:35:40] Speaker 03: Concerning what was written [00:35:43] Speaker 03: are quoted out of the patent specification in column 6, that is referring to the patent specifications usage of postscript examples concerning input and output items. [00:35:58] Speaker 03: It has nothing to do with the claim language. [00:36:01] Speaker 03: And then finally, I would argue with respect to the intellectual ventures capital one finance case that that case concerned [00:36:12] Speaker 03: the editing of XML documents with generic data structures admitted to be generic by the patentee and it was doing data manipulation all within the XML schema or its variants. [00:36:32] Speaker 03: There wasn't the transformation, the change of state from source code to machine readable composite code [00:36:41] Speaker 03: Now all of a sudden, a new paradigm, we take the source code item and parse it into machine-readable plurality of multi-part object structures. [00:36:53] Speaker 03: So unless the court has further questions, I will submit the matter to the court and ask that this matter be reversed. [00:37:02] Speaker 01: I thank both counsel for their argument. [00:37:04] Speaker 01: The case is taken under submission. [00:37:07] Speaker 01: Our final case for argument today is 2 0 1 7 dash 1 4 4 5 in Ray Nord development.