[00:00:46] Speaker 03:
Our next case is number 16-2001, Credit Acceptance Corporation versus Westlake Services.

[00:00:54] Speaker 03:
Mr. Nemec.

[00:00:56] Speaker 00:
Thank you, Your Honor.

[00:00:59] Speaker 00:
To please the Court, in my remarks this morning, I will direct the commentary to the two fundamental errors in the Board's analysis of the Patentable Subject Matter Decision in the case below.

[00:01:11] Speaker 00:
First, the Board's inappropriately and oversimplified

[00:01:16] Speaker 00:
definition of the abstract concept to which the claims are purportedly directed, the court holding, board, forgive me, the board holding that the claims at issue in this CBM proceeding were directed to the abstract concept of processing an application for financing.

[00:01:32] Speaker 00:
And in so holding, ignoring the limitations of the claims and essentially predestining the claims to fail step one of ALIS.

[00:01:40] Speaker 00:
The second defect in which I'd like to remark is the failure of the board

[00:01:45] Speaker 00:
to conduct a proper Step 2 Alice analysis by deliberately and explicitly failing to consider the ordered combination of the claims in analyzing Step 2.

[00:01:57] Speaker 00:
Are you giving up on the estoppel question then?

[00:02:01] Speaker 00:
No, Your Honor, and I'm happy to address questions and I will address that.

[00:02:05] Speaker 00:
I thought it would make sense to address the merits.

[00:02:07] Speaker 03:
Well, you sort of ignore the synopsis and Shaw decisions in your

[00:02:12] Speaker 03:
initial brief when you argue the estoppel issue.

[00:02:17] Speaker 03:
I understand that those decisions were under the IPR statute, but the IPR statute is identical to the post-grant review statute.

[00:02:27] Speaker 03:
And don't you lose under those decisions?

[00:02:30] Speaker 00:
No, Your Honor, we submit that we do not.

[00:02:33] Speaker 00:
Why not?

[00:02:34] Speaker 00:
While the language in the IPR provision, section 315, parallels the language in section 325,

[00:02:41] Speaker 00:
First, the language of Section 315 was not what was being construed in synopsis.

[00:02:49] Speaker 00:
So what?

[00:02:49] Speaker 00:
It's the same language.

[00:02:50] Speaker 00:
It was the language of Section 318, defining what constitutes a final written decision in that case.

[00:03:02] Speaker 00:
With regard to Shaw, the issue was addressed, I would submit, in dicta.

[00:03:08] Speaker 00:
as to how estoppel under section 315 again would apply, but was not an issue in that case.

[00:03:14] Speaker 00:
That was a question of whether redundant grounds should in fact have been considered and gone to the final written decision.

[00:03:22] Speaker 00:
So Shaw, I would submit, is not binding even as to the 315 issue.

[00:03:27] Speaker 03:
Synopsis decides the same issue under the same language of a different section.

[00:03:33] Speaker 03:
What's your basis for arguing that those two different sections should have a different

[00:03:39] Speaker 00:
So even if we were to assume that Section 315 definitively states the binding law on the application of estoppel under Section 315, I would submit that there are distinctions between IPR proceedings and CBM proceedings that would justify a different outcome.

[00:03:57] Speaker 00:
What are the differences?

[00:03:58] Speaker 00:
Distinctions being, first of all, the scope of the proceeding.

[00:04:03] Speaker 00:
You've got a rather narrow proceeding in IPR, and it's open to any member of the public

[00:04:09] Speaker 00:
who can make a petition and raise a case, just a handful of defenses that are available.

[00:04:14] Speaker 00:
CBM, and there is a one-year built-in limitation that times out IPRs in the event that litigation is pending, something that's not present in CBM, importantly.

[00:04:26] Speaker 00:
Secondly, you've got a defined class of people in the CBM category who can bring proceedings.

[00:04:33] Speaker 00:
You've got a more narrowly constrained group of patents that are subject.

[00:04:37] Speaker 00:
But most importantly, you've got a very broad set of defenses and the concept and the thinking of Congress as reflected in the federal register remarks cited in our briefs indicates this was meant to be... How would all that affect the application of estoppel though?

[00:04:52] Speaker 02:
Pardon your honor?

[00:04:53] Speaker 02:
You've given us kind of like structural differences between the two types of procedures, but with respect to estoppel, I mean, what difference do those differences, distinctions that you're pointing out, what difference does that make to the application of estoppel?

[00:05:07] Speaker 00:
The difference, Your Honor, is that the regime that exists now based on the board's interpretation of the 325 estoppel in this case would essentially allow for perpetual petitions one after another, picking one claim, perhaps relying on a new intervening case, a new piece of art that's found, and there's never any end to it.

[00:05:29] Speaker 00:
And the point has been made that 325D estoppel could be invoked upon the discretion of the Patent Office.

[00:05:36] Speaker 03:
That didn't happen in this case, and the fact of the matter is this was supposed to be an estoppel as a matter of right, not something... How do the differences that you're talking about support a different interpretation of identical language in the two sections?

[00:05:51] Speaker 00:
In the context of a patent owner who is seeking to enforce their patent rights against a competitor, just as is the case in this overall set of litigations,

[00:06:04] Speaker 00:
The IPR provision will time out the patent opponent's right to bring challenges to the patents within one year.

[00:06:12] Speaker 00:
In this case, there is no such protection under CBM, and that's what allows one after another petition to be filed.

[00:06:19] Speaker 00:
In this case, it's two.

[00:06:20] Speaker 00:
Hypothetically, it could be one for every claim in the patent.

[00:06:23] Speaker 00:
It could go on for many, many, many years.

[00:06:26] Speaker 00:
That protection doesn't exist.

[00:06:28] Speaker 00:
In the meantime, the underlying district court action might remain stayed.

[00:06:32] Speaker 00:
and the patent owner's rights to assert and defend their issued patent rights is tied up, even if not all the claims are necessarily at issue in the proceedings.

[00:06:41] Speaker 00:
So there is a meaningful distinction in our view between the two sets of proceedings.

[00:06:48] Speaker 03:
There is a difference between the two sets of proceedings, but that doesn't answer why the same language turns a different construction in the two types of proceedings.

[00:06:58] Speaker 00:
In essence, the basis that we advocate here

[00:07:02] Speaker 00:
assuming that you apply the same construction to the terms.

[00:07:06] Speaker 00:
It's just as in claim construction.

[00:07:07] Speaker 00:
If the same word appears in multiple places in the claim, it's presumed to have the same meaning.

[00:07:12] Speaker 00:
But that can be rebutted based on evidence that something else was meant to occur, something else.

[00:07:18] Speaker 03:
In what case involving statutory construction has the Supreme Court, for example, given different meanings to identical language in the same statute?

[00:07:32] Speaker 00:
I can't cite a case that fits the description you just gave, Your Honor, and I would suggest these are, in fact, different statutes.

[00:07:39] Speaker 00:
So these are different statutory provisions.

[00:07:41] Speaker 00:
Again, if we accept that Shaw is the definitive law in section 315, we're advocating a construction of parallel language that would lead to a different result.

[00:07:53] Speaker 02:
What's the application of cuozo in this case for you, in your view?

[00:07:59] Speaker 00:
In terms of appealability of the issues, Your Honor?

[00:08:01] Speaker 00:
This case, in our view, would fall within one of the recited exceptions to Cuozzo.

[00:08:07] Speaker 02:
First and foremost... Why wouldn't a stop will be an ordinary dispute concerning a decision to institute?

[00:08:16] Speaker 02:
Just run of the mill, ordinary dispute.

[00:08:21] Speaker 00:
First and foremost, Your Honor, there is no challenge

[00:08:24] Speaker 00:
in this appeal to the decision to institute CBM review.

[00:08:28] Speaker 00:
The facts that present the basis for our argument under 325E1 for estoppel came into existence after the institution decision.

[00:08:38] Speaker 00:
It was triggered by the issuance of the final decision in the first CBM proceeding.

[00:08:44] Speaker 00:
So we don't challenge the fact that estoppel wasn't affected at the institution stage.

[00:08:51] Speaker 00:
This is an appeal of the final written decision in the CBM.

[00:08:53] Speaker 00:
This is an appeal of the board's denial of our motion to terminate the proceeding.

[00:08:59] Speaker 02:
Do we have jurisdiction to review that decision?

[00:09:02] Speaker 00:
I didn't hear the first part of it.

[00:09:03] Speaker 02:
Do we have jurisdiction to review that decision?

[00:09:06] Speaker 00:
You do, your honor.

[00:09:09] Speaker 00:
Just as you do other subsidiary rulings in CBM and IPR proceedings, whether it be motions to amend, motion to supplement the record, such as in the red line detection case,

[00:09:20] Speaker 00:
The fact that there is not explicit reference in the final written decision to this issue of estoppel does not preclude... In a situation like this, doesn't estoppel go to the decision whether or not to initiate?

[00:09:33] Speaker 00:
It would go to the decision of whether or not to initiate if in fact all the pieces were in place at the time of the institution decision.

[00:09:40] Speaker 00:
If the final written decision in the first CBM had been issued at that time,

[00:09:46] Speaker 00:
the argument would have been that the board was barred from instituting review.

[00:09:51] Speaker 00:
But this particular statute doesn't even mention institution.

[00:09:55] Speaker 00:
It prohibits the request or the maintenance of a proceeding in the event of the enumerated circumstances, in the event of the estoppel.

[00:10:05] Speaker 00:
So it is not linked to the institution decision.

[00:10:08] Speaker 00:
It fits the category of cases not barred on appeal, as articulated in Cooso, those, quote,

[00:10:16] Speaker 00:
less closely related to the institution decision.

[00:10:20] Speaker 00:
Or I would submit questions of jurisdiction, who are the proper parties to a proceeding of this nature.

[00:10:27] Speaker 00:
But as a factual matter, there is no appeal in this case of the institution decision, and therefore the holding in Coosa would not apply.

[00:10:40] Speaker 00:
If there are no further questions on the 325E issue, I'll return to the 101 analysis.

[00:10:46] Speaker 00:
Go ahead.

[00:10:47] Speaker 00:
Thank you, Your Honor.

[00:10:48] Speaker 00:
I was summarizing the two points that I would address and the second point being failure to conduct an analysis of the ordered combination of elements under step two of the ALICE test in contravention of the directives that this court gave most recently in the Bascom case.

[00:11:05] Speaker 00:
On the first point, the definition of the abstract concept to which the claims are directed, the board says it's the abstract concept of

[00:11:14] Speaker 00:
processing an application for financing a purchase.

[00:11:18] Speaker 00:
In so doing, acknowledge that there are multiple limitations in the claims.

[00:11:25] Speaker 00:
Acknowledge that there may be evidence that some of these are not routine, but explicitly held with respect to the enumerated elements, things like the servers on which processing is occurring, databases, user terminals,

[00:11:39] Speaker 00:
computer implemented elements like this with descriptions that are specific to the functionality those elements will have, they were set aside.

[00:11:48] Speaker 00:
And the point was made.

[00:11:49] Speaker 02:
So the steps that are set out in the claim culminate with the generation of a financial package.

[00:11:57] Speaker 02:
And I think that's probably the goal when you say to hear of the claim as a whole is to generate this financial package.

[00:12:08] Speaker 02:
Tell me, in the claims, how that financial package is generated.

[00:12:14] Speaker 00:
So, Your Honor, the financial package is generated by, if you look earlier in the claim, taking, say, claim 25 as an example, which you can find on page... Appendix 402.

[00:12:39] Speaker 00:
Claim 25 delineates for the reader the various computer components that are linked together so that the information from these sources can be compiled.

[00:12:50] Speaker 00:
First, the user terminal where information regarding the purchaser's capability to buy is input.

[00:12:58] Speaker 02:
Where are you at, Council?

[00:13:00] Speaker 00:
IMS.

[00:13:06] Speaker 00:
This is column 15.

[00:13:08] Speaker 00:
of the patent and appendix 4.02.

[00:13:16] Speaker 02:
Did you say claim 25?

[00:13:17] Speaker 00:
Correct, Your Honor.

[00:13:19] Speaker 00:
The user terminal where the customer, the purgative purchaser's information is input.

[00:13:27] Speaker 00:
That's just a generic item, isn't it?

[00:13:30] Speaker 00:
A user terminal full stop is a generic item.

[00:13:35] Speaker 00:
It's got a specific application here.

[00:13:37] Speaker 00:
And again, the point that I'm making in this appeal is not necessarily that every one of the enumerated items was in some way unconventional, but that the collection of them was... So throughout this Claim 25, there's mention of the financial package, a database for storing information.

[00:13:57] Speaker 02:
It goes on and says about receiving financial information, a server that has access to database,

[00:14:04] Speaker 02:
And then a server generating a financial package for each product.

[00:14:10] Speaker 02:
And this is a system for generating financial packages.

[00:14:15] Speaker 02:
And you have in the claim, 25, a server for generating.

[00:14:19] Speaker 02:
But how is that financial package generated?

[00:14:24] Speaker 00:
The computer system will compile all that information that the actual generation occurs on the server of the credit underwriter.

[00:14:34] Speaker 00:
The bank, for instance.

[00:14:34] Speaker 02:
You've got to have more than just, I'm going to put this into this slot.

[00:14:39] Speaker 02:
There's a box that says computer with a slot.

[00:14:42] Speaker 02:
I'm going to put this information there.

[00:14:45] Speaker 02:
And then on the other side comes out a financial package.

[00:14:49] Speaker 02:
And that's OK.

[00:14:51] Speaker 02:
But as long as you show me in the claims how that financial package is generated.

[00:14:57] Speaker 02:
And that's what I don't see.

[00:15:00] Speaker 00:
And your honor, I would respectfully disagree that that is required for purposes of satisfying the patent eligibility test.

[00:15:08] Speaker 00:
To me, that's more a question of enablement.

[00:15:10] Speaker 00:
Does this patent sufficiently inform a person skilled in the art how to actually implement it?

[00:15:16] Speaker 02:
I think that putting together financial information is an abstract idea.

[00:15:20] Speaker 02:
And I think that's where you start with.

[00:15:25] Speaker 02:
You gather information.

[00:15:26] Speaker 02:
You collect information.

[00:15:28] Speaker 02:
And you tell me that because you put it into a computer, outside comes a financial package.

[00:15:34] Speaker 02:
I think that's precisely step one of the 101 inquiry.

[00:15:40] Speaker 02:
Are the claims directed to, in this instance, an abstract idea?

[00:15:46] Speaker 02:
If you gave me more than what you pointed out, then I would say, well, yes, perhaps, or yes, it does.

[00:15:54] Speaker 02:
But I don't see how anything in the claim that tells me

[00:15:58] Speaker 02:
how the financial package is generated.

[00:16:00] Speaker 02:
And because of that, I see this claim as being aspirational.

[00:16:05] Speaker 00:
I understood, Your Honor.

[00:16:06] Speaker 00:
And in this discussion, we continue to focus on only one of the many claim limitations.

[00:16:13] Speaker 00:
We're focusing on the generation, whether we're focusing on the user terminal, what was overlooked by Ford.

[00:16:17] Speaker 02:
Well, I asked you to point me to the claim that showed how the financial package is generated.

[00:16:23] Speaker 02:
You've taken me to 25.

[00:16:26] Speaker 02:
That doesn't do it.

[00:16:27] Speaker 00:
I won't be able to point, Your Honor, to a claim in the patent that describes the precise manner in which the manipulation of data occurs.

[00:16:35] Speaker 02:
That's the problem.

[00:16:35] Speaker 02:
It doesn't exist.

[00:16:37] Speaker 00:
And again, I submit, Your Honor, that's not required to support patentability.

[00:16:43] Speaker 00:
What we have here is a method, as recited in the claims, whether it be claim 10, 25, or 14, the independent claims here, that is contrasted to methods used in the prior art that were different.

[00:16:57] Speaker 00:
On page A395, in the background, the prior art techniques for performing auto financing are described.

[00:17:05] Speaker 00:
It's an iterative method, information taken manually, sent to banks, compiled.

[00:17:10] Speaker 00:
You have to go back again if there's a change in data.

[00:17:12] Speaker 00:
You have to go back again if there's a change in the desired purchase.

[00:17:15] Speaker 00:
What is not on this record is any evidence that a method that combines these three electronic data sources electronically automates the process of at one time

[00:17:25] Speaker 00:
calculating a finance package for every item in the inventory, taking the user's purchasing ability information, combining that with the lending ability of the creditor, and generating this comprehensive report such that the customers and the dealers can look and pick from this palette of choices that this computer system has generated to select the most attractive financing application.

[00:17:51] Speaker 00:
That is narrower

[00:17:52] Speaker 00:
decidedly narrower than the concept of processing an application, full stop.

[00:17:57] Speaker 00:
And it's not something that there's been any showing existed in the prior art.

[00:18:00] Speaker 00:
It is, in fact, a new method.

[00:18:02] Speaker 03:
I think you're well over your time.

[00:18:04] Speaker 03:
Unless Judge Raina has any further questions, we'll give you two minutes for rebuttal.

[00:18:09] Speaker 03:
Thank you, Your Honor.

[00:18:21] Speaker 03:
Mr. Sells, is that right?

[00:18:23] Speaker 01:
I'd like to start off with the questions that Your Honor asked at the start.

[00:18:37] Speaker 01:
First of all, we believe that there is no jurisdiction for this court to consider the estoppel decision of the court, because it did, as Your Honors pointed out, concern the institution's decision.

[00:18:53] Speaker 03:
I'm not sure that that's necessarily what we pointed out.

[00:18:57] Speaker 03:
I mean, the statute seems to say that you can't maintain something where there's an estoppel.

[00:19:05] Speaker 03:
And why isn't someone who's challenging a final decision and saying, well, they were stopped or they shouldn't have gotten the final decision that they did, why isn't that an appealable issue?

[00:19:18] Speaker 01:
Because I believe it more fairly is characterized as an attack on the institution decision because in this case, particularly, CAC challenged on estoppel grounds in their preliminary response the institution.

[00:19:35] Speaker 03:
Suppose they'd been clearer about it.

[00:19:37] Speaker 03:
Suppose they said you can't enter this final decision because it's an estoppel.

[00:19:43] Speaker 01:
Well, they couldn't in this case because the timing doesn't work because there was an overlap between the two CBMs that the

[00:19:48] Speaker 01:
final written decision from the first CBM hadn't yet issued, and so they couldn't make the 325E argument.

[00:19:56] Speaker 03:
But hypothetically, suppose that there's a decision and the argument is that there should have been an unstoppable.

[00:20:05] Speaker 03:
And you're saying that's not appealable?

[00:20:08] Speaker 01:
I believe it's not appealable because it essentially is an attack on the institution decision.

[00:20:14] Speaker 01:
It's not related to the substance.

[00:20:16] Speaker 01:
And so, no, I don't believe it is appealable.

[00:20:19] Speaker 01:
Even in this case, even if it were appealable, as Your Honor pointed out, the synopsis case would control here.

[00:20:27] Speaker 01:
There was no final written decision on the claims that are the subject of this CBM.

[00:20:35] Speaker 01:
So whether, hypothetically, the court can rule on the appeal of that estoppel decision, the PTAP got it right because the claims that are issued here, 10 to 12 and 14 to 33, were not the subject of a prior final written decision.

[00:20:49] Speaker 01:
There's no ground, there's no basis for this court to construe this estoppel statute any differently than it did the IPR statute.

[00:20:57] Speaker 01:
I think the court was quite right about that.

[00:20:59] Speaker 01:
So estoppel is not a reason for the CBM to have gone forward as it did.

[00:21:08] Speaker 01:
And then on the substance, CDC has left to argue that somehow the Enfish decision or the Bascom decision

[00:21:17] Speaker 01:
require a different result from what the PTAB did here and how they analyzed the claims that are at issue.

[00:21:24] Speaker 01:
And in our view, one thing that my opposing counsel neglected to mention was that the PTAB here wasn't starting from scratch when it was deciding what the abstract concept was here.

[00:21:40] Speaker 01:
In the first CBM, it analyzed claim one, and it found

[00:21:45] Speaker 01:
that it was directed toward an abstract concept and held that the abstract concept was processing an application for financing a purchase.

[00:21:58] Speaker 01:
That's Claim 1.

[00:22:00] Speaker 01:
That decision went final.

[00:22:01] Speaker 01:
They didn't appeal.

[00:22:03] Speaker 01:
And Claim 10, as the PTAB found in this case, is really just Claim 1 implemented on generic computer systems.

[00:22:12] Speaker 01:
And I think, Judge Raina, as you were pointing out,

[00:22:15] Speaker 01:
the generic computer components here don't do anything different or extra additional as this court's cases have discussed that would take this into patentable subject matter.

[00:22:28] Speaker 01:
Your Honor pointed out Claim 25 or we're discussing with counsel Claim 25 and how a finance package was generated and you're quite right that the patent doesn't discuss how that is done.

[00:22:44] Speaker 01:
And the reason why that's a problem under a 101 analysis is that really describes the preemption risk that you have here, because you have an abstract idea, and this claim is meant to capture or claim all types of financial package generation, no matter how you did it.

[00:23:03] Speaker 01:
And that is a problem.

[00:23:04] Speaker 01:
And so we believe, of course, that the PTAB did

[00:23:10] Speaker 01:
get it right, that they describe the abstract idea properly.

[00:23:15] Speaker 01:
We don't agree that the PTAB failed to conduct a proper prong-to analysis under ALICE as well.

[00:23:23] Speaker 01:
It's clear from the final written decision itself that they not only considered the individual elements that patent owner focused on, but all the elements as an ordered combination.

[00:23:35] Speaker 01:
And what doesn't appear in CSC's papers and in the argument here is

[00:23:41] Speaker 01:
Well, okay, so you're taking issue with how they resolve that ordered combination issue, but what is it?

[00:23:48] Speaker 01:
What is the extra that that ordered combination provides that would take it out, that would give you something more that's required to bring it patentable subject matter?

[00:23:58] Speaker 01:
And the answer is there really isn't anything, because the computer components that are in these claims are all just generic computer components.

[00:24:08] Speaker 01:
There's nothing special about them.

[00:24:10] Speaker 01:
And there's nothing in the specification that talks about how they would be special or different or used differently.

[00:24:15] Speaker 01:
And certainly there's not in the claims.

[00:24:17] Speaker 01:
And we believe that the PTAB resolved those issues properly, appropriately under prong one and prong two of Alice.

[00:24:27] Speaker 01:
We argued below that these claims are very similar to the claims that this court found in dealer track, mortgage grader,

[00:24:37] Speaker 01:
similar cases are just not patentable subject matter, and there doesn't seem to me to be a basis to come to a different result here.

[00:24:45] Speaker 01:
And with that, Your Honor, unless you have questions, I'll reserve the rest of my time for the Director.

[00:24:57] Speaker 03:
Thank you.

[00:25:02] Speaker ?:
Ms.

[00:25:02] Speaker 04:
Craven.

[00:25:02] Speaker 04:
Good morning, Your Honors, and may it please the Court.

[00:25:05] Speaker 04:
Under this Court's

[00:25:07] Speaker 04:
current case law, the board's motion to terminate decision is unreviewable.

[00:25:13] Speaker 04:
The petitioner's specific statute.

[00:25:15] Speaker 03:
Well, that may be, but the question is whether the final decision can be challenged on the grounds that there was an estoppel.

[00:25:23] Speaker 03:
And it seems to me to be a little difficult to argue that if the final decision were precluded by estoppel, that there's no way to challenge.

[00:25:34] Speaker 04:
I think the estoppel issue is closely related though to that decision to institute in the same way a signee estoppel is in Husky.

[00:25:43] Speaker 04:
It's related to whether the correct petitioner brought the petition or maintained the petition as opposed to the board's ultimate authority to invalidate this patent, the 807 patent in a CBM proceeding.

[00:25:57] Speaker 04:
So I think it's consistent with this court's case law that the estoppel issue

[00:26:01] Speaker 04:
under 325E1.

[00:26:02] Speaker 02:
Would the stop will apply more to the statutory limitations imposed on the PTO in handling these types of cases?

[00:26:12] Speaker 04:
So this court is taking Wi-Fi 1 en banc, which will rule on sort of the statutory limits of the board's ability to, or the court's ability to review decisions.

[00:26:26] Speaker 04:
And I think, I don't want to prejudice that case here, I think every statute

[00:26:31] Speaker 04:
imposes a statutory limit.

[00:26:32] Speaker 04:
I don't know if that answers the reviewability question.

[00:26:36] Speaker 04:
I think under the court's current case law, because it's a specific, it doesn't go to the board's ultimate authority, it's unreviewable now under this court's case law.

[00:26:48] Speaker 03:
Suppose you had a situation in which the board actually rendered a final written decision on a particular claim, claim 11, and then

[00:27:00] Speaker 03:
and found that it involved patentable subject matter.

[00:27:05] Speaker 03:
And then a challenger comes in and starts a new proceeding.

[00:27:09] Speaker 03:
The board goes through a new proceeding and reaches the opposite conclusion with respect to claim 11 and says that it's unpatentable subject matter.

[00:27:21] Speaker 03:
There's no way to challenge that as being a stop by the first decision?

[00:27:25] Speaker 04:
Well, I think in that case, if there were two different petitioners... Well, it's the same petition.

[00:27:30] Speaker 04:
Well, if they had a final decision on patentability on that claim, then Estoppel would apply at the time that decision came out.

[00:27:41] Speaker 03:
And there'd have to be a way to appeal that, right?

[00:27:43] Speaker 03:
You'd have to be able to challenge that on appeal, no?

[00:27:46] Speaker 04:
In the second decision, you could ask the board.

[00:27:48] Speaker 04:
I mean, it depends on the timing.

[00:27:51] Speaker 04:
It could be in front of the board.

[00:27:52] Speaker 04:
File, as it was done here, a motion to terminate because Estoppel now applies, because a final decision has come out

[00:27:59] Speaker 04:
with respect to claim 11 on a ground that wasn't in the first petition, and thus they are stopped.

[00:28:09] Speaker 04:
And so I think the board does its best to make sure that it's correctly applying the estoppel statute and not reaching inconsistent results on different claims or not.

[00:28:19] Speaker 03:
If they reach inconsistent results, there's no way to challenge that on appeal.

[00:28:23] Speaker 04:
Well, I think the inconsistent results on the patentability of the claim is challenged as to the final written decision with respect to patentability in the final written decision.

[00:28:33] Speaker 03:
Did you not raise the estoppel issue?

[00:28:34] Speaker 04:
Well, the estoppel issue would just go to whether the correct petitioner granted, you know, as they requested the petition, a correct proper petitioner could have been there, as in a husky with a signee estoppel.

[00:28:50] Speaker 04:
If a proper petitioner could have

[00:28:53] Speaker 04:
requested the IPR, then the fact that this petitioner is a stopped was not reviewable because it doesn't go to the board's ultimate authority to invalidate as in if the question was this is a CBM patent or they had invalidated under 112 in an IPR proceeding.

[00:29:13] Speaker 02:
The PTO took the extraordinary step to make this case a presidential case, correct?

[00:29:19] Speaker 02:
That's correct.

[00:29:22] Speaker 02:
In this case, we have the estoppel issue, and we have the Section 101.

[00:29:27] Speaker 02:
What is it that was presidential?

[00:29:29] Speaker 02:
The estoppel issue?

[00:29:30] Speaker 04:
Just the estoppel.

[00:29:31] Speaker 04:
So just the board's decision on the motion to terminate.

[00:29:34] Speaker 02:
So once you make a decision presidential, is it treated as a rule after that point in time?

[00:29:41] Speaker 04:
It is binding on all the board panels before the board, yes.

[00:29:46] Speaker 02:
So it's treated as much like a regulation would be that guides the PTO's actions?

[00:29:52] Speaker 02:
That's correct.

[00:29:53] Speaker 04:
You could think of it that way.

[00:29:54] Speaker 02:
OK.

[00:29:55] Speaker 02:
If that's the case, then why isn't that reviewable?

[00:29:59] Speaker 02:
I mean, you've given us a statutory interpretation by making this presidential.

[00:30:05] Speaker 04:
But I think the fact that it's presidential is just to help with the consistency at the board, just as when this court

[00:30:14] Speaker 04:
It goes on bonk to review those, right?

[00:30:16] Speaker 02:
That's not what you said.

[00:30:18] Speaker 02:
You said it turns it into a rule.

[00:30:20] Speaker 02:
And my understanding is that the PTO looks at these type of rules almost like a regulation.

[00:30:26] Speaker 04:
Well, it's different from a regulation because it can be undone if the interpretation of the board somehow would become in conflict with this court's interpretation of estoppel.

[00:30:36] Speaker 02:
The precedential manner of that... On this particular case, it's your declaration

[00:30:42] Speaker 02:
that this is a rule that we now establish with respect to estoppel and the reviewability of these decisions.

[00:30:51] Speaker 02:
Why could we not review that?

[00:30:53] Speaker 04:
Well, it's not a rule in terms of the reviewability of it.

[00:30:56] Speaker 04:
It's a rule.

[00:30:57] Speaker 04:
It's a precedential opinion for the board.

[00:31:01] Speaker 02:
Would you say it's a declaration on the statutory limitation of the PTAB to conduct a review?

[00:31:09] Speaker 04:
It is how the board will interpret

[00:31:12] Speaker 04:
the estoppel statute of 325E1 going forward, unless it's undefined.

[00:31:18] Speaker 02:
Why couldn't we review that?

[00:31:20] Speaker 02:
Are you saying that from here on out, we cannot review that decision, even though you're going to adopt it as a rule, and it's going to apply to every case involving estoppel?

[00:31:30] Speaker 02:
We can't review that?

[00:31:31] Speaker 04:
That's correct, because it's, again, under this court's case law, it's closely related and tied to the institution decision.

[00:31:40] Speaker 04:
our position is that that is unreviewable, that this court really should be focusing its time on the patentability, patent eligibility of these claims.

[00:31:48] Speaker 04:
See I'm out of time if there's no more questions.

[00:31:51] Speaker 04:
OK, thank you.

[00:31:52] Speaker 04:
Thank you, Your Honors.

[00:32:04] Speaker 00:
In his remarks, Council for Westlake pointed out the fact that the

[00:32:09] Speaker 00:
the board in this case was not starting from a blank slate, that there had been a previous CBM decision.

[00:32:14] Speaker 00:
And counsel's correct in that regard.

[00:32:16] Speaker 00:
And that's noteworthy to appellant as well, because in that prior CBM, the court looked at the claims that are instituted in this CBM and concluded in their institution decision where they declined to review the claims under 101, that those claims did not preempt

[00:32:35] Speaker 00:
all applications of a method of processing an application for financing, and they stated that that was a matter of fact.

[00:32:41] Speaker 00:
That's at Appendix 853.

[00:32:43] Speaker 00:
That fact can't have changed between then and now.

[00:32:47] Speaker 00:
The board took a different view of the law in their second decision, but it underscores my point that the claims read as a collective whole in this case don't preempt the abstract concept that the board stated these claims are directed to.

[00:33:03] Speaker 00:
There is room

[00:33:05] Speaker 00:
for others to practice and for others perhaps even to patent in the face of these claims.

[00:33:11] Speaker 00:
They don't invoke the concern about preemption that Alice and Mayo and Bilsky and many of the decisions of this court as recently as McRoe have invoked.

[00:33:22] Speaker 00:
There are some other things in Westlake's presentation and actions in this proceeding that I think act as essentially collateral support for the points that I'm asking you to accept today.

[00:33:32] Speaker 00:
One, I've made the point that the court in the ELIS step two analysis did not consider the ordered combination.

[00:33:40] Speaker 00:
And Westlake's brief to this court on page 48 essentially admits as much when it states, in holding that each element was not an inventive concept, that PTAB held that the overall invention was not patent-eligible.

[00:33:58] Speaker 00:
There was never a consideration or a holding that the overall invention that this combination of steps in claims 10, 14, 25, and all the others at issue was not inventive.

[00:34:08] Speaker 00:
On the contrary, page 828 in the board's decision, they declined to consider the evidence that we put forward to show that these things were inventive or conventional or not routine.

[00:34:18] Speaker 00:
I see my time is up, Your Honor, and I will conclude at that point.

[00:34:20] Speaker 00:
OK.

[00:34:21] Speaker 00:
Thank you, Mr. Miller.

[00:34:22] Speaker 00:
Thank you.