[00:00:48] Speaker 02:
Yeah, our next case this morning is number 162163, Integrated Claim Systems LLC versus Travelers Lloyds of Texas, Mr. Ward.

[00:01:17] Speaker 00:
I have three points that I'd like to make this morning.

[00:01:20] Speaker 00:
The first is that the board's decision was fundamentally flawed because they refused to interpret the term field.

[00:01:32] Speaker 00:
The term field has a very specific and defined use and to not accord it that definition tainted the rest of the board's decision.

[00:01:42] Speaker 00:
The second point I'd like to make has to do with the board's finding

[00:01:47] Speaker 00:
that all of the hardware and software components used in the claim systems were generic.

[00:01:56] Speaker 00:
To reach that conclusion, the board had to ignore the express disclosure in these patents that the claim systems use specialized AIC software that is installed on all of the hardware components

[00:02:17] Speaker 00:
And when that's accomplished, you have a specialized system.

[00:02:21] Speaker 00:
It's not a generic system.

[00:02:24] Speaker 00:
And finally, from the very first, we've asserted that these are not covered business method patents.

[00:02:34] Speaker 00:
And we believe that the court's recent decisions in unwired and secured access strongly support our positions.

[00:02:45] Speaker 00:
If I could go back to the first point, fields.

[00:02:49] Speaker 00:
Again, the board decided that there was no reason that it had to interpret that term.

[00:02:55] Speaker 00:
We suggest that that was an error.

[00:02:57] Speaker 00:
I would point the court's attention to the specification.

[00:03:05] Speaker 00:
And the term fields is used a number of times.

[00:03:08] Speaker 00:
But I think probably the clearest definition is provided at column 13, starting at line 40.

[00:03:16] Speaker 00:
And that's the appendix 0125.

[00:03:21] Speaker 00:
And I'll just read a short section.

[00:03:24] Speaker 00:
It will be appreciated that the pack form, which displayed on the computer screen, 212, contains boxes, such as those depicted in figures 5A and 5B, in which alpha numeric characters can be entered so that when the characters are entered in these boxes, they are entered so as to fill a quote field, end quote.

[00:03:51] Speaker 00:
a delimited alphanumeric character string.

[00:03:56] Speaker 00:
Being a quote field unquote, the information denoted by the characters can be transferred to and used in completing other fields in related documents.

[00:04:10] Speaker 00:
This is a clear disclosure that the applicant was defining field directly as a delimited alphanumeric character string

[00:04:22] Speaker 00:
and not the way the board seemed to use it in its decision as just the boxes that you see on the screen or on a paper form.

[00:04:32] Speaker 03:
So the board says boxes, and you say boxes, which you can enter numbers and letters.

[00:04:38] Speaker 00:
Yes, Your Honor.

[00:04:40] Speaker 00:
On the screen, a box that you would perceive as a human is not perceived that way by a computer.

[00:04:48] Speaker 00:
So there is a delimiter.

[00:04:51] Speaker 00:
And that's essentially a label.

[00:04:54] Speaker 00:
And that identifies what the expected information is going to be.

[00:04:59] Speaker 00:
And then entering an alphanumeric character string.

[00:05:01] Speaker 00:
You mean like the box that says name next to it?

[00:05:03] Speaker 00:
Well, it would have an identifier within the software that would correspond to name.

[00:05:08] Speaker 00:
It may not actually say name, but it would identify that what was expected to be coming next is name.

[00:05:16] Speaker 02:
Well, you didn't invent fields, even under your definition, right?

[00:05:19] Speaker 00:
I'm sorry, what was that again?

[00:05:20] Speaker 02:
You didn't invent fields even under your definition.

[00:05:25] Speaker 00:
Well, we didn't invent fields in the term of fields on a paper form, certainly not.

[00:05:31] Speaker 00:
But we did invent fields as they're used in this application.

[00:05:34] Speaker 02:
You were the first one to invent computer fields?

[00:05:40] Speaker 00:
In applications where

[00:05:43] Speaker 00:
uh... attachment information of the answer to my question is you know it's just a general you mean you did not invent computer fields certainly your honor there were computer fields before part-time what's the disinventive did you invent the attaching correct yeah wait wait did you invent the attaching documents to a message that was not a problem in the prior art the problem was that uh... large uh...

[00:06:11] Speaker 00:
entities such as insurance companies, law enforcement agencies, universities had legacy mainframe computers.

[00:06:19] Speaker 00:
The problem with legacy mainframe computers is they're great for storing information, but they had shortcomings.

[00:06:25] Speaker 00:
You could not display an attachment such as an x-ray or fingerprints or photographs on a mainframe.

[00:06:35] Speaker 00:
It does not work.

[00:06:36] Speaker 03:
I appreciate the importance of this issue.

[00:06:40] Speaker 03:
I'd like for you to address the bigger issue, and that's the 101 issue.

[00:06:51] Speaker 00:
Well, we think, Your Honor, that they are tied together.

[00:06:55] Speaker 00:
Because by failing to interpret fields as being a separate, unique component to this invention,

[00:07:05] Speaker 03:
I get that, but apart from the claim construction, let's go right to 101.

[00:07:13] Speaker 03:
And why are these claims directed to or not directed to an abstract idea?

[00:07:20] Speaker 00:
No, we don't think they're directed to an abstract idea, Your Honor.

[00:07:23] Speaker 00:
And the abstract idea that

[00:07:36] Speaker 00:
The board focused on an abstract idea of effectively moving data.

[00:07:44] Speaker 00:
But that really wasn't the point, because data was already being moved.

[00:07:47] Speaker 00:
We acknowledge in the background that insurance companies had already developed systems where standardized forms, including just the information like name, address, could be submitted directly to the mainframe.

[00:08:02] Speaker 02:
The real question here seems to be whether there's an innovative concept at step two of Alice.

[00:08:07] Speaker 02:
You rely on this ACI software, which you mentioned earlier.

[00:08:12] Speaker 00:
And arguably that might apply to step one of Alice as well.

[00:08:16] Speaker 02:
Let's consider it at step two.

[00:08:18] Speaker 02:
Fair enough.

[00:08:19] Speaker 02:
The problem is that you mention ACI software, you mention a function that it performs, but you never describe

[00:08:26] Speaker 02:
what it is or how to create it.

[00:08:29] Speaker 00:
Well, we do describe what its function is going to be.

[00:08:34] Speaker 02:
But there's no description of it except in terms of the function it's going to perform.

[00:08:38] Speaker 00:
That is correct, Your Honor.

[00:08:39] Speaker 00:
There is limited description.

[00:08:41] Speaker 00:
And that would be an issue for a programmer.

[00:08:45] Speaker 00:
But once you're provided with a detailed explanation of what needs to be done, that's a relatively routine matter.

[00:08:55] Speaker 03:
The claims don't provide that direction.

[00:08:58] Speaker 00:
The claims do not provide that direction.

[00:09:00] Speaker 00:
They directly claim the systems and methods.

[00:09:07] Speaker 00:
In terms of functionality, not exactly.

[00:09:11] Speaker 03:
The claims are directed to the functions.

[00:09:14] Speaker 00:
Correct.

[00:09:15] Speaker 03:
That's abstract.

[00:09:18] Speaker 00:
I guess it's a...

[00:09:21] Speaker 00:
Trying to figure out what's abstract and what isn't is a little difficult these days.

[00:09:24] Speaker 00:
It's not that difficult.

[00:09:27] Speaker 03:
If your claims are directed to a function and you don't explain how you're going to get there, then your claims are directed to an abstract idea, such as filling in the blanks.

[00:09:45] Speaker 00:
Right.

[00:09:45] Speaker 00:
Well, the abstract idea that the board found was that this was just portioning data.

[00:09:51] Speaker 00:
yeah that's that was there that's what the claim seemed to be directed to I would suggest your honor that there's a whole lot more because the problem this is what I'm asking what whole lot more the problem with existing mainframe systems your honor was that you could not pull up the attachment data so for example a insurance dentist receives

[00:10:19] Speaker 00:
can receive the form that has the actual information about the patient, the procedure, etc.

[00:10:24] Speaker 00:
from the mainframe.

[00:10:26] Speaker 00:
It's already been submitted by the dentist.

[00:10:29] Speaker 00:
But he cannot pull up the supporting documentation such as an x-ray.

[00:10:35] Speaker 00:
The mainframe can't provide that to him.

[00:10:37] Speaker 02:
Yeah, but what your patent does, it says allow him to pull up the x-ray, but it never tells him how to do it.

[00:10:45] Speaker 00:
No, it does, Your Honor.

[00:10:46] Speaker 00:
It does because what it suggests is an improvement to the existing computer network by adding a buffer computer that would have the capability of pulling up the attachments.

[00:10:59] Speaker 02:
But it doesn't tell you how to program the buffer computer to do that, right?

[00:11:03] Speaker 00:
It does say that the specialized AIC software is going to be installed on the dentist's computer, on the buffer computer, and the mainframe.

[00:11:13] Speaker 02:
described in the pattern other than by its function?

[00:11:19] Speaker 02:
By its function, yes, Your Honor.

[00:11:26] Speaker 02:
You want to save your rebuttal time?

[00:11:28] Speaker 00:
Yeah, thank you, Your Honor.

[00:11:30] Speaker 00:
I do want to save my rebuttal.

[00:11:32] Speaker 02:
Mr. Burns?

[00:11:39] Speaker 01:
Good morning, Your Honor.

[00:11:41] Speaker 01:
May it please the Court

[00:11:47] Speaker 01:
I believe the Your Honor has put your finger on the particular issue involving the Alice issue, both Your Honors.

[00:11:57] Speaker 01:
The patents at issue here do not describe any detail of the AIC specialized software beyond actually stating in the patents that existing commercial software could be used such as Lotus Notes, Java Applets, and also recognizing

[00:12:17] Speaker 01:
that graphical software of the day could be used as well.

[00:12:24] Speaker 04:
The determination of whether or not a particular claim makes a CBM patent has been held to be a question of fact.

[00:12:32] Speaker 04:
Is that right?

[00:12:37] Speaker 01:
Understand that the review is a de novo review.

[00:12:40] Speaker 01:
No, it's arbitrary and capricious of whether or not a CVM has been authorized.

[00:12:45] Speaker 04:
Yes, it's not a de novo review.

[00:12:46] Speaker 04:
It's arbitrary and capricious.

[00:12:47] Speaker 04:
It's like the opposite of a de novo review.

[00:12:49] Speaker 01:
I was thinking ballast is de novo.

[00:12:52] Speaker 04:
So is there a legal issue you're familiar with that we review for arbitrary and capriciousness?

[00:12:56] Speaker 04:
No.

[00:12:57] Speaker 04:
Whether or not.

[00:12:58] Speaker 04:
No.

[00:12:58] Speaker 04:
No is the answer.

[00:12:59] Speaker 04:
So do you think it's a fact question whether or not a particular claim in a patent is a CBM review that we need to give deference to arbitrary and capricious deference?

[00:13:07] Speaker 01:
I believe deference should be given.

[00:13:08] Speaker 04:
Do you believe it's a fact question?

[00:13:10] Speaker 01:
I believe it involves factual issues.

[00:13:13] Speaker 04:
Can you name any legal question in any field of law?

[00:13:17] Speaker 04:
I'm not going to limit you here.

[00:13:20] Speaker 04:
the court reviews for arbitrary and capriciousness?

[00:13:27] Speaker 01:
Well, I'm pausing here at this time.

[00:13:30] Speaker 04:
I'll let you pause.

[00:13:33] Speaker 01:
You might have me splutter around.

[00:13:34] Speaker 01:
I apologize.

[00:13:36] Speaker 04:
Is that a fact question or a legal question?

[00:13:38] Speaker 04:
This is one of the things we have to review.

[00:13:41] Speaker 04:
Shouldn't you know whether it's a fact question or a legal question?

[00:13:44] Speaker 01:
I believe that in reviewing whether or not the patent office, patent trial pills board,

[00:13:51] Speaker 01:
correctly identified whether or not it's a CBM is a legal issue.

[00:13:56] Speaker 04:
That we review for arbitrary and capriciousness?

[00:13:58] Speaker 04:
Yes.

[00:13:59] Speaker 04:
And yet you can point me to no case in any field of law where any court reviews such a legal determination for arbitrary and capriciousness.

[00:14:05] Speaker 01:
Well, I believe that underwired, unwired basically said that it should be reviewed.

[00:14:10] Speaker 04:
No, unwired said the statutory question of how you interpret the statute

[00:14:16] Speaker 04:
is a legal question, but whether a CBM is a factual, whether a particular patent is a CBM patent is a factual question.

[00:14:22] Speaker 01:
Then I may not be able to answer that question.

[00:14:25] Speaker 04:
Okay.

[00:14:26] Speaker 04:
Alright.

[00:14:26] Speaker 04:
Well, do you believe

[00:14:28] Speaker 04:
in this case that the Patent Office decided that this patent presented a claim that was directed to the financial industry in a manner that is consistent with unwired planet and secure access to two most recent cases that have come out of our court.

[00:14:45] Speaker 04:
Yes, I believe that... So walk me through how it did that because you no doubt know

[00:14:50] Speaker 04:
that it used the same language that we said was the wrong legal test.

[00:14:56] Speaker 04:
And that, no doubt, when we asked you to come to oral argument prepared to discuss these cases, you became alarmed, I'm sure.

[00:15:04] Speaker 01:
Well, what the PTAP did in reviewing these two patents, it identified the statute as well as the court's decision in

[00:15:19] Speaker 02:
Just to try to short-circuit this, in the general description, it articulated the wrong standard, because it articulated the incidental two standard.

[00:15:29] Speaker 02:
But in actually determining whether this was a financial product or service, I don't see that they used that incidental two language.

[00:15:39] Speaker 02:
They used the related two language, which had been approved in Versada and

[00:15:47] Speaker 02:
of the other cases in secure access.

[00:15:49] Speaker 01:
That's correct.

[00:15:50] Speaker 01:
Say for example involving the 768 patent at Appendix 17, the PTAB found both under the statute under Posada as well as the complementary and... Okay, so you want me to look at Appendix 17?

[00:16:04] Speaker 01:
Yes, ma'am.

[00:16:05] Speaker 04:
So Appendix 17, you think this is where they used the right standard, didn't use the wrong standard, because they used the wrong standard unequivocally at page, let's see,

[00:16:16] Speaker 04:
14, right?

[00:16:17] Speaker 04:
14 is where they said the incidental 2 or complementary 2 language.

[00:16:21] Speaker 01:
That's correct.

[00:16:22] Speaker 04:
That's the wrong standard.

[00:16:23] Speaker 04:
But at page 17, they used the right standard.

[00:16:25] Speaker 04:
What claim are they addressing at page 17?

[00:16:27] Speaker 01:
OK.

[00:16:28] Speaker 01:
So if we turn to it, they are addressing all the claims that were challenged.

[00:16:33] Speaker 04:
And they noted it.

[00:16:34] Speaker 04:
How do we know that?

[00:16:35] Speaker 01:
OK.

[00:16:35] Speaker 01:
So if we go to the middle of the paragraph on appendix 17, for the paragraph that says, accordingly, if you go down to the middle bottom where it says, we thus agree with petitioner,

[00:16:47] Speaker 01:
that the challenge claims, not just claims 11 and 30, claim a corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, citing 18D1.

[00:17:03] Speaker 04:
But then it also has the quoted language about incidental or complementary, too.

[00:17:07] Speaker 01:
Well, then it says, ma'am, it says, I apologize for interrupting you, financial related activities under prasada.

[00:17:13] Speaker 01:
And then it says, and the activities.

[00:17:16] Speaker 01:
that are financial and nature incidental to a financial activity or complementary to a financial activity.

[00:17:21] Speaker 01:
The preceding pages lay out a very detailed explanation from pages 14 to 17 of how the PTAB went through the analysis of the claims.

[00:17:32] Speaker 04:
In particular, for this... Now, since secure access has come out, do you understand secure access to stand for the proposition that

[00:17:42] Speaker 04:
The financial aspect must be present in the claim.

[00:17:46] Speaker 04:
It's not enough for a general claim that could be used in many different fields to be argued, well, this could be used in the financial industry, even if the claim on its face doesn't say that.

[00:17:57] Speaker 04:
Is that your understanding of secure access?

[00:17:59] Speaker 04:
I mean, that pretty much is what laid out between the majority of them said.

[00:18:02] Speaker 01:
What I see in secure access, secure access is telling me,

[00:18:07] Speaker 01:
I don't need talismanic language.

[00:18:08] Speaker 01:
I don't need any magic language.

[00:18:09] Speaker 04:
No, but you do need financial language in the claim.

[00:18:12] Speaker 01:
But what I do need is the statutory definition of a CBN patent requires that the patent have a claim that contains, however phrased, a financial activity element.

[00:18:22] Speaker 01:
So that financial activity.

[00:18:24] Speaker 04:
So where is the financial activity element in claim one, which is one of the claims the PTO says meets this wrong standard that they've adopted?

[00:18:33] Speaker 01:
All right.

[00:18:34] Speaker 01:
So in claim one, you would not see a specific identification of financial service or product.

[00:18:43] Speaker 01:
However, when you review that, and we'll talk about the dependent claims 11 and 30 that specifically call out insurance claim forms and insurance.

[00:18:53] Speaker 04:
But if you look at that particular claim and you interpret it according to the specification, this- Which word am I interpreting according to the specification that will draw in the financial nature of this invention?

[00:19:04] Speaker 04:
Because on its face, divorced from the specification, you can't disagree.

[00:19:09] Speaker 04:
This just says an electronic system with a bunch of fields.

[00:19:12] Speaker 04:
I mean, it's about as abstract as they come.

[00:19:15] Speaker 04:
But it doesn't have any specificity to it whatsoever, which helps you in your 101 case.

[00:19:19] Speaker 04:
But it kind of hurts you in whether this is a CVM.

[00:19:22] Speaker 04:
because it just says an electronic system with a bunch of fields.

[00:19:25] Speaker 04:
And so that clearly is not a financial product or related to the financial industry.

[00:19:30] Speaker 04:
It might be an electronic system capable of being used in those places.

[00:19:33] Speaker 04:
But on its face, that claim has no such limitations.

[00:19:35] Speaker 01:
I understand what you're saying here, Your Honor.

[00:19:39] Speaker 01:
So I understand your question.

[00:19:40] Speaker 01:
My response is when you look at a claim, a general claim, that is it's data processing that can be used

[00:19:49] Speaker 01:
in the management of a financial product or service.

[00:19:55] Speaker 01:
That's enough?

[00:19:57] Speaker 01:
You look to the specification to see what is this data processing for.

[00:20:02] Speaker 01:
This data processing is, if you look at these patents, they are 99.99% directed to submitting an insurance claim, which is a request for payment.

[00:20:14] Speaker 02:
And some of them specifically refer to that.

[00:20:16] Speaker 01:
That absolutely correct, Your Honor.

[00:20:17] Speaker 01:
So we do have dependent claims that are directed to, for this particular patent, both patents that are dependent claims.

[00:20:25] Speaker 01:
Here you have claims 11 and 30 for the 768 patent are directed to an insurance claim form or insurance.

[00:20:32] Speaker 01:
And what, as even the secure access says, you're looking for a single claim of the patent that then qualifies the patent for CBM analysis by the PTAC.

[00:20:46] Speaker 04:
I understand your point about claims 11 and 30.

[00:20:49] Speaker 04:
My problem with that is that in the specific analysis of 11 and 30, that's where the board really got the standard all wrong.

[00:20:55] Speaker 04:
It articulated the wrong standard.

[00:20:57] Speaker 04:
What I don't understand, though, is your defense of claim one after secure access.

[00:21:02] Speaker 04:
I am baffled.

[00:21:03] Speaker 04:
And I know you're absolutely right.

[00:21:04] Speaker 04:
You only need one claim, and then it's a CBM, the whole thing.

[00:21:07] Speaker 04:
And the PTO has the right to look at every claim in it.

[00:21:10] Speaker 04:
But I'm baffled at how you can defend claim one after secure access.

[00:21:14] Speaker 04:
And just so you know, I actually made my clerk pull every board decision that's been decided post on Wired Planet and Secure Access.

[00:21:20] Speaker 04:
And every one of them say these cases stand for the proposition that the claim itself must have language in it, tying it to a financial industry, which is great for you with claims 11 and 30.

[00:21:28] Speaker 04:
Don't get me wrong.

[00:21:30] Speaker 04:
But not for claim one.

[00:21:31] Speaker 04:
And I guess I just want to be clear about what your argument is on claim one.

[00:21:37] Speaker 01:
As we're being told, we're looking to interpret this claim.

[00:21:43] Speaker 02:
It doesn't have to use the word insurance as long as that's the primary object.

[00:21:48] Speaker 04:
How do we know it's the primary object based on claim one?

[00:21:50] Speaker 01:
So is it a data, is it a claim, is it a patent that claims a method for data processing that is used?

[00:21:59] Speaker 01:
We have a claim for a method of data processing that's claim one.

[00:22:04] Speaker 01:
And then we look to the specification for how that claim is being used or interpreting that claim in light of the specification.

[00:22:11] Speaker 01:
As we're being told, we do not need to have the magic talismanic language.

[00:22:15] Speaker 01:
And I understand that Secure Access says you need a financial activity element.

[00:22:20] Speaker 01:
In the claim.

[00:22:21] Speaker 01:
In the claim itself.

[00:22:22] Speaker 01:
My submission would be that.

[00:22:24] Speaker 03:
But the fact that you can use a program, a computer program, in banking, that's not enough.

[00:22:33] Speaker 03:
Because at the end of the day, almost every computer program can be said to be used in the financial services sector.

[00:22:40] Speaker 01:
Let me approach it this way.

[00:22:42] Speaker 02:
Well, I mean, that's right.

[00:22:43] Speaker 02:
I mean, the fact that some program could be used in the financial services industry is not enough.

[00:22:48] Speaker 02:
It has to be directed to, primarily directed to, the financial services industry.

[00:22:55] Speaker 01:
When I read secure access, I started thinking to myself, is the court attempting to articulate a sliding scale?

[00:23:00] Speaker 01:
If you have a claim, say you have a claim that

[00:23:03] Speaker 01:
You know, so far there's been about 140 decisions by the PTAB, and there's going to be another 2 to 3, 400 coming down the pipe on CVMs.

[00:23:12] Speaker 01:
If you have a claim that's directed to a general data processing claim, and it does not have any magic or specific language that says finance in the claim itself, but yet the patent overall

[00:23:27] Speaker 01:
is otherwise directed to a financial product or service.

[00:23:31] Speaker 01:
It's very clear.

[00:23:32] Speaker 01:
If you read these patents, it's all about submission of a claim, which is a request for payment.

[00:23:35] Speaker 03:
Well, I'm not sure you need to do that.

[00:23:37] Speaker 03:
I found various references to what I view as to be the financial services.

[00:23:43] Speaker 03:
And that's the insurance industry.

[00:23:45] Speaker 03:
And you get saved by those claims.

[00:23:48] Speaker 03:
I think claim 8 and claim 21 reference to insurance services.

[00:23:55] Speaker 03:
But claim 1 does not.

[00:23:58] Speaker 01:
I mean, I would still submit that in reviewing CBM, under the definition, you have a patent for a claim directed to a method for data processing.

[00:24:10] Speaker 01:
It's for data processing.

[00:24:12] Speaker 01:
And it's used in management of a financial product or service.

[00:24:17] Speaker 01:
I don't think the statute specifically requires that the data processing claim itself must have some sort of a claim directed

[00:24:27] Speaker 01:
to a financial system or product or service.

[00:24:31] Speaker 01:
I don't think it's required.

[00:24:32] Speaker 01:
I think all you need is data processing that is for use in the management.

[00:24:37] Speaker 03:
Well, then all data processing can be said to underlie a CVM.

[00:24:43] Speaker 01:
But if you look to the patent.

[00:24:46] Speaker 03:
It's not whether the functions that are being described can be used down the road in a financial services

[00:24:56] Speaker 03:
industry.

[00:25:00] Speaker 02:
I agree with that, but we're looking to see... It has to be something primarily used.

[00:25:05] Speaker 02:
Right?

[00:25:05] Speaker 02:
I mean, the fact that it could be used in this industry, financial services, in other industries in general, that doesn't cut it.

[00:25:14] Speaker 02:
That doesn't make it a CBN patent.

[00:25:16] Speaker 02:
It has to be primarily designed.

[00:25:19] Speaker 02:
And here in this specification, you have like hundreds of references to that's what this is about.

[00:25:24] Speaker 01:
The editors for West's, when working at Secure Access and trying to characterize it in one of their head notes, they used the language merely.

[00:25:32] Speaker 01:
The patent did it merely

[00:25:34] Speaker 01:
a financial service or product and trying to interpret secure access.

[00:25:40] Speaker 01:
And if you do have a patent that is predominantly and is primarily directed to a financial product or service, that's what I believe Congress is attempting to characterize.

[00:25:54] Speaker 04:
But then why the Congress?

[00:25:55] Speaker 04:
I mean, we answered this question in secure access.

[00:25:58] Speaker 04:
And you may be standing there as long as you want.

[00:26:01] Speaker 04:
and try to tell me what you think the statute means.

[00:26:04] Speaker 04:
But I'm bound by the precedent that came before my court.

[00:26:07] Speaker 04:
And my court has already determined that the words in the statute that include, quote, a patent that claims means, I mean, Judge Blager could not have laid this out any more clearly.

[00:26:18] Speaker 04:
He says, the question is, is it enough?

[00:26:23] Speaker 04:
And he goes through that it be in the specification, or must it explicitly be in the claims?

[00:26:29] Speaker 04:
And then he goes through and says, and then he answers that question.

[00:26:31] Speaker 04:
The phrase, quote, a patent that claims requires that it must claim.

[00:26:36] Speaker 04:
So I just don't see any ambiguity in there for this notion that the specification can tell you what a generic claim that could be used in any industry is really meant to be used for by the patentee.

[00:26:52] Speaker 04:
I'm just really at a loss for how you can

[00:26:55] Speaker 04:
justify your argument in light of secure access.

[00:26:58] Speaker 04:
Your argument is the dissent in secure access.

[00:27:00] Speaker 04:
It's a well-written dissent.

[00:27:01] Speaker 04:
It makes compelling points.

[00:27:02] Speaker 04:
But it's as clear as the dissent, your argument.

[00:27:06] Speaker 04:
It is clearly on all fours with the dissent.

[00:27:08] Speaker 04:
And so I don't understand how you can suddenly, I mean, as much as you might wish to flip the majority and the dissent, I don't see how you can do that.

[00:27:14] Speaker 04:
And I'm bound by the majority.

[00:27:16] Speaker 01:
In my attempt to follow secure access, where it says, however phrased, a financial activity element,

[00:27:24] Speaker 01:
I took that to mean to look to the specification to see if I could import it.

[00:27:28] Speaker 02:
It doesn't say that the language has to be in the claim, right?

[00:27:31] Speaker 02:
Well, it actually does.

[00:27:32] Speaker 02:
Secure access says I must have a... Well, I think there may be a difference of opinion about how to interpret secure access.

[00:27:39] Speaker 01:
It says a claim that contains, however phrased, a financial activity element, which I then took to use claim one, the general function that is recited there,

[00:27:49] Speaker 01:
as is that a financial activity element?

[00:27:52] Speaker 01:
When I review it, the entire pattern is important.

[00:27:54] Speaker 04:
The general function, the PTO said that the words that indicated it was a financial industry related product were the words, an electronic system.

[00:28:05] Speaker 03:
Wow.

[00:28:06] Speaker 03:
And in Unwired, we said that it can be something that's just can be related to, like a light bulb, a claim for a light bulb

[00:28:14] Speaker 03:
And then later you say, well, these light bulbs work very well in bank bulbs, and therefore it's a CVM.

[00:28:20] Speaker 03:
It's related to it.

[00:28:21] Speaker 03:
If you set it on wired, that's not enough.

[00:28:23] Speaker 01:
But for a light bulb, I go back to the statute.

[00:28:27] Speaker 01:
We're looking at a data processing claim, not a light bulb.

[00:28:31] Speaker 01:
We've got a data processing claim that is used in a financial product or service.

[00:28:36] Speaker 01:
And I understand what we have said here in Secure Access is that, yes, please.

[00:28:43] Speaker 02:
OK, I think we're out of time.

[00:28:45] Speaker 02:
All right, thank you.

[00:28:46] Speaker 02:
Thank you, Mr. Burns.

[00:28:47] Speaker 02:
Mr. War.

[00:28:50] Speaker 00:
Thank you.

[00:28:54] Speaker 00:
I just want to go back to the final decision.

[00:28:57] Speaker 00:
And if you look at the appendix at 0053, at the bottom of the page, you'll see under the caption, canceling claim 36, that the board notes that in the institution decision,

[00:29:13] Speaker 00:
We determined that the O2O patent includes at least one claim directed toward activities that are incidental or complementary to a financial activity and highlighted claim 36 as such a claim.

[00:29:26] Speaker 00:
In response, we moved to cancel claim 36 and in the other patent claims 11 and 30, and that was granted.

[00:29:35] Speaker 04:
If we go to- But the board held, and I'm not sure this is wrong, you've got to prove why it's wrong, that you don't look at what the patentee is later saying the scope of his patent is.

[00:29:46] Speaker 04:
You look at what the scope of his patent was when the petition was filed and this whole proceeding was instituted.

[00:29:52] Speaker 04:
Because otherwise, it's like a constantly moving target.

[00:29:55] Speaker 04:
It makes a lot of sense, that holding.

[00:29:58] Speaker 04:
So why is that holding wrong?

[00:29:59] Speaker 04:
Why does it matter that you dismiss those claims?

[00:30:02] Speaker 00:
With all due respect, Your Honor.

[00:30:04] Speaker 04:
And you didn't file a statutory disclaimer, by the way.

[00:30:06] Speaker 00:
We did not.

[00:30:08] Speaker 00:
Whether that has any real difference or not, I'm not sure.

[00:30:11] Speaker 04:
Well, there's one case that says if you would file the statutory disclaimer that actually those are viewed as if it never existed.

[00:30:17] Speaker 04:
So that case would actually have presented a good argument for you.

[00:30:22] Speaker 00:
Perhaps, Your Honor.

[00:30:26] Speaker 00:
I'm sorry.

[00:30:27] Speaker 00:
I've forgotten the question that you had asked.

[00:30:31] Speaker 04:
No, me too.

[00:30:32] Speaker 04:
Don't worry about it.

[00:30:33] Speaker 00:
Thank you.

[00:30:34] Speaker 00:
At the appendix at 0057, I just want to point out that at the last sentence of the next to last paragraph, it says, petitioner also states that patent owner has asserted the 020 patent against at least 15 insurance companies.

[00:30:56] Speaker 00:
And that is something that's secured access is inappropriate.

[00:31:02] Speaker 00:
And just so it's crystal clear, at 0059, middle paragraph, the board points to the legislative history of the AIA and Senator Schumer's comments to, again, cite to the incidental or complementary standard that's no longer usable.

[00:31:30] Speaker 02:
Suppose we were to reject your contention

[00:31:33] Speaker 02:
that we shouldn't consider these claims that you surrendered.

[00:31:38] Speaker 02:
Suppose we agree with the board that those claims were properly considered in making the CBM determination, OK?

[00:31:47] Speaker 02:
Yes, Your Honor.

[00:31:49] Speaker 02:
Do you agree that under those circumstances they properly determined it's a CBM patent?

[00:31:55] Speaker 02:
No, Your Honor.

[00:31:56] Speaker 00:
Why not?

[00:31:56] Speaker 00:
We moved to cancel just out of an overabundance of caution.

[00:32:01] Speaker 00:
We did not believe that those claims

[00:32:03] Speaker 00:
when properly viewed are related to a financial activity.

[00:32:09] Speaker 00:
Why not?

[00:32:09] Speaker 00:
Because the underlying invention doesn't change.

[00:32:13] Speaker 00:
So, Your Honor, the invention was described in terms of an insurance company.

[00:32:19] Speaker 00:
There's no way to get around that.

[00:32:22] Speaker 00:
But it was also noted that the invention was not confined to insurance companies because it wasn't really related to insurance.

[00:32:32] Speaker 00:
It was about

[00:32:33] Speaker 00:
transmitting and displaying data that couldn't be transmitted and displayed in this way previously.

[00:32:39] Speaker 02:
It sounds as though you're saying we don't look to the individual claims.

[00:32:43] Speaker 00:
Well, we have to look to what's behind the claim, and that's the invention itself.

[00:32:48] Speaker 00:
So Your Honor, one of the other alternative uses was in law enforcement.

[00:32:53] Speaker 00:
So I suggest to you.

[00:32:56] Speaker 04:
But none of this answers Judge Dyke's question.

[00:32:58] Speaker 04:
His question is, if 11 and 30 are in, which don't talk about law enforcement, they expressly talk about insurance claims.

[00:33:03] Speaker 04:
Those claims are limited to insurance claims.

[00:33:06] Speaker 04:
And his question to you is, if 11 and 30 are in and the claims expressly limit themselves to insurance claims, why isn't this within the financial industry?

[00:33:13] Speaker 04:
You can't talk about law enforcement.

[00:33:15] Speaker 04:
These claims are narrower than that.

[00:33:18] Speaker 00:
The claims are narrower because they define use.

[00:33:21] Speaker 00:
But what I meant to suggest in answer to your question

[00:33:25] Speaker 00:
was that if these claims had been directed to the use of law enforcement, I don't think we'd be here.

[00:33:30] Speaker 00:
But the invention itself is unchanged.

[00:33:33] Speaker 04:
But they're not.

[00:33:34] Speaker 04:
They're trying to play insurance.

[00:33:34] Speaker 04:
That's the problem.

[00:33:39] Speaker 02:
All right.

[00:33:39] Speaker 02:
I'm out of time.

[00:33:40] Speaker 02:
Thank you.

[00:33:41] Speaker 02:
Thank you, Mr. Ward.

[00:33:42] Speaker 02:
Thank you very much.

[00:33:43] Speaker 02:
Thank both counsel and cases to back.