[00:00:01] Speaker 04: We will hear argument. [00:00:03] Speaker 04: Just one case this afternoon. [00:00:06] Speaker 04: Number 162502, interval licensing versus AOL. [00:00:14] Speaker 04: Mr. Heine. [00:00:17] Speaker 02: Good afternoon, Your Honors, and may it please the Court. [00:00:20] Speaker 02: The 652 patent identifies the starting point for the invention. [00:00:25] Speaker 02: It's at the bottom of column one of the patent. [00:00:27] Speaker 02: It says the starting point are screen saver and wallpaper [00:00:32] Speaker 02: applications that were previously used for burnout and for aesthetic and functional purposes. [00:00:39] Speaker 03: If we take ourselves back over 20 years ago to March of 1996... The claims, they don't really talk about the wallpaper background in the claim or screen saver, right? [00:00:52] Speaker 02: What the claims require, Your Honor, is an attention manager. [00:00:55] Speaker 02: That is what is specified, and as this Court construed in the prior case, [00:00:59] Speaker 03: It essentially captures some of the... But the claim construction doesn't actually say wallpaper or screen saver, right? [00:01:07] Speaker 02: It does not, Your Honor. [00:01:08] Speaker 03: It basically says, I can't remember now, displaying data in a way that doesn't interfere with the primary use of the display. [00:01:20] Speaker 02: Is that right? [00:01:21] Speaker 02: That's in the ballpark, Your Honor. [00:01:22] Speaker 03: That's in the ballpark. [00:01:25] Speaker 03: And then display [00:01:28] Speaker 03: of this secondary content can be any kind of content virtually, right? [00:01:35] Speaker 02: Well, it cannot be any kind of content. [00:01:38] Speaker 02: It has to be content that the user specifies. [00:01:40] Speaker 02: But other than that, yes, the user could specify it. [00:01:43] Speaker 03: It can be either visual or audio. [00:01:47] Speaker 02: I don't think in the context of this claim it could be audio. [00:01:49] Speaker 02: I think it has to be visual. [00:01:50] Speaker 03: Why couldn't it be audio given that your patent says image means audio or visual? [00:01:58] Speaker 03: stimulus. [00:02:01] Speaker 02: Your Honor, I don't think it can be audio, one, because of the Court's claim construction with respect to displaying images either when the user is not engaged in a primary interaction or in an area of the display screen that is not used by the user's primary activity. [00:02:15] Speaker 02: But more critically, there is a requirement in the claim of display instructions, for example, display instructions for enabling display of the image. [00:02:23] Speaker 03: Right. [00:02:24] Speaker 03: But then image is defined in the patent case. [00:02:27] Speaker 03: any sensory stimulus, visual or audio. [00:02:31] Speaker 03: That is correct. [00:02:32] Speaker 03: And then there's an example of you can listen to a radio talk show. [00:02:36] Speaker 02: That's correct. [00:02:36] Speaker 03: So that's why I was thinking in my head, well, maybe I'm working on an opinion. [00:02:42] Speaker 03: I've got a window opened up and, hey, now I want to listen to my Bon Jovi while I'm working on my opinion. [00:02:51] Speaker 03: That's kind of the same thing, right? [00:02:53] Speaker 03: I've got my primary activity. [00:02:55] Speaker 03: which is tap, tap, tap, tap, tap, you know, affirmed. [00:02:59] Speaker 03: And then there's the background secondary content, which is music. [00:03:07] Speaker 02: I don't think it's the same thing for three different reasons, Your Honor. [00:03:09] Speaker 02: First, I do think the claims are limited to display, display instructions. [00:03:13] Speaker 02: And I think that and the other language in the claim limits us to a display and not to some sort of sound sort of image. [00:03:19] Speaker 02: That's one. [00:03:21] Speaker 02: It's different than the example because the user has to specify the content and the source of the content, and then the acquisition instructions go to that source, which can be a remote source, and acquire the content. [00:03:33] Speaker 02: And so it's a little different than doing something that is self-contained on your computer, let's say, where you're just turning on the music and listening to the music. [00:03:41] Speaker 02: And that's really the point that is made in paragraph in the first column, last paragraph in column one is, [00:03:49] Speaker 02: This invention is different than those screensaver and wallpaper programs because the images that they could provide were very limited. [00:03:56] Speaker 02: Why were they limited? [00:03:57] Speaker 02: The patent tells us they were limited because they were simple, self-contained programs that were not integrated with other computer resources. [00:04:05] Speaker 03: So before getting, I know you want to focus on these specific ideas of a screensaver or the wallpaper background of a display screen. [00:04:19] Speaker 03: But just getting more to the idea of a user who wants to request certain kinds of data from various data sources, say, on the internet, and then having that data scheduled in some way and then displayed in some way. [00:04:42] Speaker 03: I mean, that in and of itself is pretty basic, right? [00:04:48] Speaker 03: The key for you is that all of that is coupled to this attention manager and then what you think an intention manager is. [00:05:00] Speaker 03: Is that a fair way to understand what's going on here? [00:05:03] Speaker 02: I think absolutely you have to look at the combination here. [00:05:06] Speaker 02: You have to look at the attention manager. [00:05:08] Speaker 03: I guess in other words, if your claim didn't say, did not say during the operation of an intention manager, [00:05:16] Speaker 03: then we wouldn't be here. [00:05:17] Speaker 03: Is that right? [00:05:18] Speaker 02: I think there's a good chance if it didn't say attention manager or if that wasn't the invention, they wouldn't have even filed for the patent application. [00:05:25] Speaker 02: If it was just using the internet to get content, I don't know that there's an invention here at all. [00:05:30] Speaker 02: And that's really the problem, is the district court here characterized the claim in a way that ignored that, completely ignored that. [00:05:38] Speaker 01: Let's look at what the district court did, because among other things, he [00:05:44] Speaker 01: gave you, or rather, he gave them on the pleadings a decision based on the pleadings. [00:05:53] Speaker 01: So he never took any evidence, didn't do any of that. [00:05:56] Speaker 01: Or she, I'm sorry. [00:05:57] Speaker 01: It was a she, if I remember. [00:05:58] Speaker 01: Yes, sir. [00:06:00] Speaker 01: Here's what she said. [00:06:01] Speaker 01: She said, one of the things that puzzles me a little bit is exactly what is an abstract idea, because that's what the judge said was wrong. [00:06:12] Speaker 01: with your patent, it's an abstract idea, with your claims, those particular three claims. [00:06:19] Speaker 01: The court finds that the assertive claims are directed to the abstract idea of providing information to a person without interfering with the person's primary activity. [00:06:28] Speaker 01: I'm reading now from Appendix 4. [00:06:32] Speaker 01: And then the court goes on to say, this basic and long-standing practice [00:06:41] Speaker 01: Does something that's basic and long-standing necessarily be abstract? [00:06:47] Speaker 01: No, Your Honor. [00:06:48] Speaker 01: No. [00:06:49] Speaker 01: All right. [00:06:49] Speaker 01: We'll come back to that. [00:06:51] Speaker 01: Can be found in, for example, a television station's use of a breaking news ticker across the bottom of the screen, the text only, et cetera. [00:06:59] Speaker 01: This is the one I like. [00:07:01] Speaker 01: Similarly, a lawyer's legal assistant may provide her with messages or mail [00:07:07] Speaker 01: in a manner that does not interfere with her primary activity, participating in a conference call. [00:07:14] Speaker 01: This could be accomplished at any time. [00:07:17] Speaker 01: My law clerk, Noah, came into my chambers this afternoon while I was working on something and interrupted me to tell me about something else. [00:07:26] Speaker 01: And I told him he had to get out because he was an abstract idea. [00:07:30] Speaker 01: Do you think that's really an abstract idea? [00:07:35] Speaker 02: It's very difficult to draw the line between what is and is not an abstract idea. [00:07:39] Speaker 02: Traditionally, I think of an abstract idea as something that is performed mentally. [00:07:44] Speaker 02: It's performed by people. [00:07:45] Speaker 02: That's what an abstract idea traditionally is. [00:07:50] Speaker 02: OK, performed by people. [00:07:52] Speaker 02: Performed by a person, yes. [00:07:53] Speaker 03: OK. [00:07:54] Speaker 03: So then if someone is in a meeting and then another person writes a note on [00:08:04] Speaker 03: on a piece of paper and slides it next to me and says, OK, the Lakers are now losing by 20 points. [00:08:11] Speaker 03: That entire interaction was something that's done by people. [00:08:18] Speaker 02: Yes, Your Honor, and that would not have been patentable, obviously. [00:08:20] Speaker 02: Somebody delivering a message like that would not have been patentable. [00:08:23] Speaker 03: So in the law of 101, we would regard that as an abstract idea, regardless of how we might [00:08:32] Speaker 03: think of the term abstract idea in a different context. [00:08:35] Speaker 03: For section 101 purposes, we would think of that as an abstract idea. [00:08:41] Speaker 02: I think in that context, limited to that situation, yes. [00:08:44] Speaker 03: And then if someone instead sent me that same piece of information to, I don't know, my beeper, that would also be an abstract idea. [00:08:58] Speaker 03: limited to a particular technical context, which wouldn't make any difference. [00:09:05] Speaker 02: I think at that point we have to start asking ourselves, what is the claim? [00:09:08] Speaker 02: What is the claimed invention as you start involving technological devices? [00:09:16] Speaker 03: But if it's like on a phone, by a fax, through a beeper, through a text, now [00:09:25] Speaker 03: the actual fact that there's technology involved, it actually kind of falls into the background of what is really the exercise. [00:09:35] Speaker 03: Because the real exercise is to transmit information to me in a way that doesn't completely overwhelm what I'm trying to get done in the first place. [00:09:49] Speaker 02: If I could just change the focus a bit. [00:09:51] Speaker 02: I think what has to be done in step one [00:09:53] Speaker 02: is to determine what the purported innovation is. [00:09:57] Speaker 02: What is the improvement that is in the claims? [00:10:00] Speaker 02: And if you characterize the claims in a way that ignores the improvement, then you've done something wrong. [00:10:10] Speaker 02: As the judge did here, the characterization here ignores the improvements. [00:10:15] Speaker 02: It literally encompasses the prior art screensaver and wallpaper programs. [00:10:21] Speaker 02: Yet our focus ought to be in section 101, whether or not there is an improvement. [00:10:28] Speaker 02: And if so, what is the improvement and is that abstract? [00:10:31] Speaker 02: And so the question here I think is, is the improvement abstract? [00:10:36] Speaker 02: The characterization is clearly wrong because it's completely untethered from the claims and ignores the improvements that are in the claims. [00:10:43] Speaker 02: It differentiated the prior art screensavers and the wallpapers because of the ability to go beyond [00:10:50] Speaker 02: the mere screen saver and wallpaper program to get content from external sources that were identified by the user. [00:10:58] Speaker 02: That's the improvement. [00:11:00] Speaker 02: How do we know that's the improvement? [00:11:02] Speaker 03: Look at... But what's in the claim? [00:11:03] Speaker 03: The claim says during the operation of an attention manager. [00:11:06] Speaker 03: And then the attention manager was construed quite broadly, right, to just be the basic concept of displaying content [00:11:18] Speaker 03: in a way that doesn't interfere with the primary content. [00:11:23] Speaker 03: So, you know, I mean, when I look at my own computer right now, I have, you know, my window up with the opinion I'm working on, and then in the corner I see a clock. [00:11:35] Speaker 03: You know, that's content. [00:11:36] Speaker 03: That's the secondary form of content that is not interfering with my primary activity. [00:11:43] Speaker 03: I mean, arguably that can fit in the attention manager. [00:11:47] Speaker 02: If you look at attention manager alone and don't look back to March of 1996 and look to present day time, then there might be other things that appear on the display in addition to the primary interaction. [00:12:02] Speaker 02: Let's take ourselves back to March 1996. [00:12:04] Speaker 02: What was available at that time to do that? [00:12:07] Speaker 02: Screen savers and wallpapers. [00:12:08] Speaker 02: That's what was available. [00:12:10] Speaker 02: They were self-contained. [00:12:11] Speaker 02: They were simple. [00:12:12] Speaker 02: That's what the specification tells us. [00:12:14] Speaker 02: What did they not have? [00:12:15] Speaker 02: They did not have the capability [00:12:17] Speaker 02: of having the user identify that it wanted content from a specific source. [00:12:22] Speaker 03: In the wallpaper embodiment, so if I have my Word document up and I'm writing it on a document window, the secondary set of content, assuming we're just talking about visual content, not audio content, is going to pop up somewhere on my display screen that does not overlap with my Word document. [00:12:46] Speaker 03: Is that right? [00:12:46] Speaker 03: That's correct, Your Honor. [00:12:48] Speaker 03: So what if I dragged my window document over to that side of the screen where the secondary set of content is? [00:12:57] Speaker 03: What's going to happen? [00:12:58] Speaker 03: Are they going to be now overlapping each other? [00:13:01] Speaker 03: Is one going to be hidden from the other? [00:13:05] Speaker 03: Or does the secondary set of data migrate over to now the left-hand side of the screen? [00:13:10] Speaker 03: I was just wondering, how does this actually work? [00:13:15] Speaker 03: I'm sorry. [00:13:16] Speaker 03: Because I didn't see in the patent specification how you come up with the way of presenting a second set of data to ensure that it does not interfere with the primary set of data on the display screen. [00:13:32] Speaker 02: It's the specification says, and the court's construction says for attention manner, it is displayed in areas of the display screen that is not used by the user's primary activity. [00:13:43] Speaker 02: So that's our reference point here. [00:13:45] Speaker 02: There are examples that are provided, for example, in declarations that were submitted. [00:13:50] Speaker 02: The actual source code that was used in order to implement the invention, it was submitted as part of a swear behind. [00:13:56] Speaker 02: Let's assume we don't go. [00:13:57] Speaker 03: I'm just thinking, if my document window doesn't cover up the entire display screen, but then I click on that little square icon, and then it gets blown up to cover the entire display screen, what's going to happen to my secondary set of data that I've [00:14:15] Speaker 03: with user interface installation instructions requested to be displayed? [00:14:22] Speaker 02: If I understand your question, Your Honor, I think what would happen is that secondary information would go away in that instance, if I understand the hypothetical that you're posing. [00:14:31] Speaker 02: But there's other aspects of the claim that provide the improvement. [00:14:37] Speaker 02: And in particular, it's the user interface instructions, the acquisition instructions, [00:14:43] Speaker 02: and the scheduling instructions. [00:14:44] Speaker 02: And specifically, when we look at the user interface instructions, those along with the acquisition instructions were what was used to distinguish the prior art because the prior art back in 1996 did not have the capability to allow the user to specify the secondary content that was going to be displayed either in a screen saver or in addition. [00:15:06] Speaker 04: The user interface instruction instructs what to do what. [00:15:11] Speaker 02: The user interface instruction, your honor, requires enabling provision of a user interface that allows a person to request the set of content data from the specified information source. [00:15:25] Speaker 02: So sort of a menu or something, some kind of option providing screen. [00:15:32] Speaker 02: There has to be some sort of option provided screen. [00:15:34] Speaker 02: There has to be some sort of screen where the user can specify, I want this content from this source. [00:15:40] Speaker 02: And then the attention manager has the acquisition instructions that takes that information and then goes and acquires that data without any further user interaction. [00:15:51] Speaker 02: And it may update it. [00:15:52] Speaker 02: It may go once a day. [00:15:54] Speaker 02: Whatever the scheduling is, it will go and acquire the information. [00:15:57] Speaker 02: It will then be stored on the computer. [00:16:00] Speaker 02: And then it will be scheduled for display according to the scheduling instructions. [00:16:05] Speaker 04: You've used your full time. [00:16:07] Speaker 04: I will restore your time. [00:16:10] Speaker 04: Actually, five minutes for a rebuttal, please. [00:16:12] Speaker 04: Thank you, Your Honor. [00:16:13] Speaker 04: Thank you. [00:16:13] Speaker 04: Mr. Joseph Erger. [00:16:16] Speaker 01: Counsel, let's begin with my question to your colleague there. [00:16:24] Speaker 01: When my law clerk came in to interrupt me, was he an abstract idea? [00:16:30] Speaker 01: Do you think he was an abstract idea? [00:16:33] Speaker 00: Noah is not abstract. [00:16:35] Speaker 00: However, ideas about things that Noah could do are abstract. [00:16:40] Speaker 00: And in this context, the point is that for step one, we're talking to what are the claims corrected to? [00:16:45] Speaker 01: Well, if we look at what the trial court said, the trial court didn't say that the legal assistant was providing an abstract idea. [00:16:57] Speaker 01: The trial court said, the lawyer's legal assistant may provide her with messages or mail, no content discussed. [00:17:08] Speaker 01: in a manner that does not interfere with her primary activity participating in a conference call. [00:17:13] Speaker 01: This could be accomplished at a certain time or in a certain location. [00:17:18] Speaker 01: And that's an example along with the TV example of an abstract idea. [00:17:25] Speaker 01: Now, I'm having just a little bit of... I'm slow in this area because I have a little trouble trying to understand exactly [00:17:35] Speaker 01: What is abstract? [00:17:36] Speaker 01: There are ideas that are abstract. [00:17:39] Speaker 01: In fact, an idea itself is kind of an abstract idea, but an abstraction. [00:17:47] Speaker 01: But Noah coming into my office was not an abstraction. [00:17:52] Speaker 01: Let me test this a little bit differently. [00:17:55] Speaker 01: Claim 18. [00:17:57] Speaker 01: You're familiar with claim 18 of the 652 patent, right? [00:18:01] Speaker 01: Of course. [00:18:02] Speaker 01: OK. [00:18:04] Speaker 01: Let me rewrite it. [00:18:05] Speaker 01: a little bit for you. [00:18:07] Speaker 01: I claim a computer-readable medium encoded with one or more programs for presenting on an otherwise unoccupied display device instructions for baking a chocolate cake comprising [00:18:30] Speaker 01: Acquisition instructions for enabling acquisition of a set of content data, et cetera, user, and if you're using the stuff that follows in claim 18, would you be of the view that that too is an abstract claim? [00:18:49] Speaker 00: If I understood the hypothetical right, we've got the same claim except it's limited to... I'm sorry, speak up please. [00:18:54] Speaker 00: Sorry, I was gonna say, if I understood the hypothetical right, it's the same claim except that it's limited to instructions for baking a chocolate cake. [00:18:59] Speaker 01: For baking a chocolate cake. [00:19:01] Speaker 00: And the answer then is the idea, yeah, I mean, the chocolate cake would not be abstract, but the idea... The idea of baking a chocolate cake is an abstract idea. [00:19:12] Speaker 00: The idea, sure. [00:19:13] Speaker 00: the idea of doing it. [00:19:15] Speaker 01: And so then the question is... The idea of having you stand in front of me and tell me that is an abstract idea? [00:19:21] Speaker 00: For certain. [00:19:22] Speaker 00: These are ideas in our heads, right? [00:19:23] Speaker 00: They're abstract. [00:19:24] Speaker 00: Any idea. [00:19:25] Speaker 01: Any idea is an abstract idea. [00:19:28] Speaker 00: I agree. [00:19:28] Speaker 00: And what an abstract idea is in itself somewhat abstract. [00:19:31] Speaker 00: An abstract idea is sort of a redundancy. [00:19:35] Speaker 01: So we could say that we're not actually in this room [00:19:40] Speaker 01: because we have an idea we're in this room, and therefore, we're all abstract? [00:19:48] Speaker 01: There's a problem. [00:19:50] Speaker 01: Do you see the problem with this? [00:19:52] Speaker 00: I understand the linguistic issue with the abstract idea of formulation, but I mean, I do. [00:19:57] Speaker 00: But obviously, the way that the Supreme Court has laid out the law is this. [00:20:01] Speaker 00: If we have a method of organizing human behavior. [00:20:03] Speaker 01: Don't blame it on us, but go ahead. [00:20:06] Speaker 00: So if we have a method of organizing human behavior, [00:20:08] Speaker 00: as in this case, as in Symantec, as in Accenture, for example. [00:20:14] Speaker 04: The method of organizing... I'm sorry, what was Symantec? [00:20:17] Speaker 00: I don't remember that. [00:20:18] Speaker 00: Symantec was discarding unread email based on the source or characteristics of the email. [00:20:22] Speaker 04: Did we describe that as a method of organizing human behavior? [00:20:26] Speaker 00: Yes, done on a computer. [00:20:28] Speaker 04: And... I mean, that's a phrase... I didn't remember Symantec. [00:20:34] Speaker 04: That's a phrase that I had, I guess, always associated with [00:20:37] Speaker 04: the creation of obligations and authorities between people, which is what takes place in commercial, in the commercial world. [00:20:45] Speaker 04: But the words themselves apply to, you know, what goes on in a chemistry lab, right? [00:20:52] Speaker 04: Add this, add that, add that, take out this, keep this. [00:20:56] Speaker 04: That's all human behavior. [00:20:57] Speaker 04: So it's got to be more limited than that. [00:21:01] Speaker 04: But the category of abstract ideas is not unitary. [00:21:06] Speaker 04: It's not just the commercial stuff. [00:21:09] Speaker 04: It's not just the stuff that goes on inside one's heads. [00:21:13] Speaker 04: It's not just intangibles. [00:21:15] Speaker 04: It's also generalities, as distinguished from concrete implementations, as I think we've come to stress. [00:21:24] Speaker 04: And every one of those distinctions, I just said, has much gray area around it. [00:21:31] Speaker 04: And it's all put under a label, abstract idea, that [00:21:36] Speaker 04: has itself lots of room for implementation. [00:21:40] Speaker 04: But here we have, I take it, this is deciding what information you want, getting it in a way that doesn't, and displaying it in a way that doesn't divert you from whatever else you may be doing. [00:21:54] Speaker 00: Right, so it's the age old practice with the assistant of, you know, please put a note on the corner of my desk to not distract me if certain things happen. [00:22:03] Speaker 00: on a certain, you know, every half an hour, let me know what my calls were. [00:22:06] Speaker 00: If a certain development happens, please pass me a note to let me know. [00:22:09] Speaker 00: That's the pre-computer analogy. [00:22:12] Speaker 04: Can I ask you just, I think I know the answer, but I'm not sure. [00:22:15] Speaker 04: So our claim construction, I guess last time, of Attention Manager, a system that displays images to a user, either when the user is not engaged in a primary interaction, [00:22:27] Speaker 04: or in an area of the display screen that is not used by the user's primary activity. [00:22:32] Speaker 04: Is it agreed between the parties that the primary activity has to be on the computer, or can it be don't send something to somebody's display while they're, you know, baking a cake? [00:22:47] Speaker 00: I was thinking the primary, the primary, well, on the second, there's two, I was first talking about primary interaction, the second about primary activity. [00:22:55] Speaker 00: The second, definitely. [00:22:56] Speaker 00: Every display screen is not used by the user's primary activity. [00:22:59] Speaker 00: That's unquestionable. [00:23:02] Speaker 04: What I wasn't sure is how much that tied to primary interaction. [00:23:05] Speaker 04: I guess I'd sort of taken it as an assumption among the parties that we were talking within the realm Judge Shen was talking about, about a primary activity on the computer and then a secondary delivery that doesn't... [00:23:22] Speaker 00: Right, the second half was absolutely, with what Judge Shannon was talking about, absolutely. [00:23:27] Speaker 00: I'm using a portion of the computer, the so-called wallpaper environment that this court said is not really a traditional wallpaper environment. [00:23:34] Speaker 00: That's the second one where I'm looking at the computer, it's a different part of the screen that I'm using. [00:23:38] Speaker 00: The first environment though, the first part which has been described as the screen saver embodiment, I think the idea is there my primary interaction might not be looking at the computer. [00:23:46] Speaker 00: which is why you could then put up information on the computer screen without distracting me from my primary interaction. [00:23:51] Speaker 04: Was there, in the debate about claim construction or in any of the proceedings, do you know was there, did this question arise whether the primary activity can itself have nothing to do with the computer? [00:24:04] Speaker 00: Sorry, if there was anything on there, I missed it. [00:24:08] Speaker 01: You were two for oh on this case earlier on an indefiniteness position, weren't you? [00:24:17] Speaker 00: And some of the other claims are held to be indefinite, yes. [00:24:21] Speaker 01: But you didn't think this claim could be attacked as indefinite? [00:24:25] Speaker 00: The other claims that were held to be indefinite used a claim term that's not in these claims. [00:24:28] Speaker 01: That's not in this. [00:24:29] Speaker 01: But that happens to be the language of the other claim. [00:24:34] Speaker 01: You didn't think this claim was sufficiently indefinite to raise that issue with a trial judge who liked that concept, I take it? [00:24:43] Speaker 00: Well, on remand, I mean, by the time this case got back on remand, [00:24:47] Speaker 00: Alice had been decided, and the parties agreed that teeing up 101 immediately made the most sense, which is why on remand, Alice was new, 101 was the first thing to do. [00:24:55] Speaker 00: So it was decided to shift ground. [00:24:57] Speaker 00: So everyone agreed it was logically the first thing to address there. [00:25:00] Speaker 00: And in terms of whether there's a technological improvement here, the arguments about screensavers and wallpaper, the important thing is the specification itself refutes that in two respects. [00:25:12] Speaker 00: The specification itself refutes the notion there's any technological advancement to either screensavers or wallpapers. [00:25:18] Speaker 00: And it does that in two ways. [00:25:20] Speaker 00: First, when it specifically discusses them, it discusses them as ways of using existing technology to just deliver this different content. [00:25:28] Speaker 00: So what does it say about screensaver APIs? [00:25:31] Speaker 00: It says it's appendix page 35, column 9, starting at line 16. [00:25:36] Speaker 00: You can implement this through the screensaver API, which is then commonly found in current operating systems such as Windows. [00:25:42] Speaker 00: So it's not saying, what it's saying is no technological improvement, just that API is already there, already delivering content as a screensaver. [00:25:50] Speaker 00: You can just deliver this other content through the same technological channel, no advancement. [00:25:55] Speaker 01: Excuse me, but abstract idea concept applies to claims, not to specifications. [00:26:00] Speaker 01: Why are you reading this to specifications? [00:26:03] Speaker 01: Because, I mean, one of the fundamental questions... The written description, more accurately, the written description. [00:26:08] Speaker 00: Right. [00:26:08] Speaker 00: Well, sorry, just like as, say, Amdocs, you know, noted, one of the key things here is, is there a technological solution to a technological problem, and a good place to start in order to figure that out is what the specification itself says about the claimed invention. [00:26:22] Speaker 00: And then, with respect to the wallpaper environment, which embodiment, which agrees, I mean, the construction here is it's not really wallpaper so much. [00:26:31] Speaker 00: just using a part of the display screen that's not otherwise in use. [00:26:34] Speaker 00: So I have a window open. [00:26:35] Speaker 00: I'm using it. [00:26:36] Speaker 00: If there's any unused space, it could pop up in the other unused space, essentially just a second window popping open. [00:26:41] Speaker 00: The specification doesn't claim to have invented multitasking or Windows. [00:26:46] Speaker 00: Instead, elsewhere in the spec at appendix page 32, column 3, line 30, it's in a different context. [00:26:53] Speaker 00: But the spec specifically says, if multitasking is allowed by the computer's operating system, which again is just confirming [00:26:59] Speaker 00: repeatedly that all that's going on here is if the computer has this capability then you can use it to deliver different information. [00:27:07] Speaker 00: The specification also says in about eight different places that it's using conventional computer technology. [00:27:13] Speaker 00: You know, conventional digital computers. [00:27:15] Speaker 04: You've pointed to a few things that point to conventional technology [00:27:26] Speaker 04: I guess I want to ask the counterpart question about what's missing. [00:27:29] Speaker 04: Is there anything in the spec that says here is a new way of segregating a section of the display screen by a new display driver that does something that hadn't yet been done on computers and their displays? [00:27:50] Speaker 00: Well, only to the extent that the specification describes it says that [00:27:55] Speaker 00: computers have not yet been used before in the ways claimed here, which is to say, computers have not yet been used before to perform this task of providing information. [00:28:07] Speaker 04: But I was asking a question that, at least sometimes in my mind, I think there's a question about whether there's any new how in June. [00:28:15] Speaker 00: The answer's no. [00:28:16] Speaker 00: I was just trying to be clear that I wasn't overstating it. [00:28:19] Speaker 01: If there's no new how, what, as a good lawyer, would you [00:28:24] Speaker 01: How would you attack a claim in which there's nothing new? [00:28:31] Speaker 00: Well, obviously, in addition to 101, there's also 102 and 103, I assume is the point of the question. [00:28:37] Speaker 00: Obviously, there's 103. [00:28:40] Speaker 00: Obviously. [00:28:41] Speaker 00: And it's not a novelty that there's 102. [00:28:44] Speaker 00: But still, the question still remains. [00:28:46] Speaker 00: 101 is still there. [00:28:47] Speaker 00: And the question is, at the outset, if the claim's directed to an abstract idea, [00:28:52] Speaker 00: And here, before I get to the claim steps, it's directed to the idea of providing information without distracting from the person's primary activity. [00:28:59] Speaker 00: You then move to step two, is there anything inventive? [00:29:02] Speaker 00: Is there a technological development? [00:29:04] Speaker 00: And here you read the patent. [00:29:06] Speaker 00: It doesn't say that it's come up with new technology. [00:29:08] Speaker 00: It just says, here's something that hasn't been done on computers before. [00:29:11] Speaker 00: You can use existing computer technology to do this new thing on computers. [00:29:14] Speaker 00: And this court by now has countless cases holding that by itself. [00:29:18] Speaker 01: You know, the best answer to my chocolate cake puzzle [00:29:22] Speaker 01: is 103, isn't it? [00:29:26] Speaker 01: Anybody who gives instructions on how to bake a chocolate cake, what's the first thing you would do if somebody came up with a patent claiming a chocolate cake, or how to do a chocolate cake, and you had to decide the question of the validity of that claim? [00:29:43] Speaker 01: What would you say? [00:29:45] Speaker 01: Abstract? [00:29:46] Speaker 01: Or would you say, hey, 103. [00:29:47] Speaker 01: There's enough prior art out there to cook. [00:29:52] Speaker 01: this patent, wouldn't you? [00:29:55] Speaker 00: Well, in all seriousness, before doing a prior art search, if I read the claims and it was just at a high level of abstraction, bake a chocolate cake by doing things I wouldn't obviously do to bake any cake, then I wouldn't need to do a prior art search for 102 or 103 because it would be directed to an abstract idea. [00:30:11] Speaker 01: Yeah, you can't be faulted for throwing 101 abstract idea into the mix because everybody does it these days, so I'm glad to know you should know you're in a [00:30:22] Speaker 01: clear line. [00:30:22] Speaker 03: The chocolate cake itself, that's a composition of matter, right? [00:30:27] Speaker 00: Yes, the claim to a chocolate cake would presumably be eligible. [00:30:32] Speaker 00: It's unquestionably, I mean, it's a physical product. [00:30:37] Speaker 03: What if I only said chocolate cake and I didn't say a chocolate cake comprising 10 different ingredients? [00:30:45] Speaker 03: Then would I have claimed the idea of a chocolate cake at too high of a generality such that now I've claimed nothing more than an abstract idea? [00:30:55] Speaker 01: Maybe I wasn't clear. [00:30:57] Speaker 01: My hypothetical was instructions for how to bake a chocolate cake, not how to... [00:31:02] Speaker 00: Right, it was the idea of how to make... Not a chocolate cake. [00:31:04] Speaker 00: The idea of making a cake is supposed to pack itself. [00:31:06] Speaker 00: Yeah, the idea of making a cake. [00:31:07] Speaker 00: Which gets us back to Noah as a real person. [00:31:09] Speaker 00: Yeah. [00:31:09] Speaker 00: It's not abstract, but the idea of things that you could have Noah do for you may well be abstract ideas. [00:31:15] Speaker 03: I guess the idea of going to get information about how to make a chocolate cake, acquiring that information, and then displaying it on a screen, [00:31:31] Speaker 03: I guess you'd say that's the abstract idea. [00:31:35] Speaker 00: Yes. [00:31:35] Speaker 00: I mean, obviously, these claims are directed to this idea. [00:31:38] Speaker 03: Because now that's nothing. [00:31:39] Speaker 03: I mean, although we're talking specifically about how to make a chocolate cake and instructions for making a chocolate cake, it's really about information. [00:31:48] Speaker 03: We're trying to get information. [00:31:51] Speaker 03: We're trying to read information. [00:31:54] Speaker 03: In that entire exercise, we have concluded in different cases [00:32:00] Speaker 03: is more or less, without more, an abstract idea. [00:32:04] Speaker 00: Yeah. [00:32:04] Speaker 00: I mean, like cases like eerie indemnity, where remotely accessing user-specified information is an abstract idea. [00:32:10] Speaker 00: Infinity Labs, there are lots and lots and lots of these cases. [00:32:13] Speaker 00: And whether it's about whether you're pulling up singing lessons for a parrot, or whether you're singing, pulling up something to entertain dogs and cats, or whether you're pulling up chocolate cake, it's all content that in theory could be, not in theory, that could be [00:32:28] Speaker 00: within the claim scope, the point is that what the claims are directed to is this idea of providing information. [00:32:37] Speaker 03: Before you go, the other side was saying, OK, what's key here is we already have primary data. [00:32:45] Speaker 03: Now we're going to go get secondary data. [00:32:48] Speaker 03: And we are now allowing the user, him or herself, [00:32:55] Speaker 03: to be empowered to go out and select the secondary data. [00:33:03] Speaker 03: And that's the twist. [00:33:05] Speaker 03: And so now we've got a composite display of data, the primary data and the user selected data. [00:33:14] Speaker 03: So now we don't have, this is unlike situations like when you're watching the news and there's a news crawl at the bottom of the screen, which is not [00:33:25] Speaker 03: user-chosen, but network-chosen. [00:33:30] Speaker 03: So would you respond to that? [00:33:31] Speaker 00: Sure, two things. [00:33:32] Speaker 00: First, it's still analogous to the assistant hypo, where I ask someone to deliver, give me certain types of information at certain times. [00:33:40] Speaker 00: But also, the court has a ton of cases now. [00:33:42] Speaker 00: You know, eerie indemnity, accessing and retrieving user-specified information is an age-old practice. [00:33:48] Speaker 00: Affinity Labs, you know, customizing a user interface is an abstract idea. [00:33:53] Speaker 00: And the specification here just says that the user interface installation instructions are conventional and readily available. [00:33:59] Speaker 00: That's Appendix Page 38, Column 16, Line 14, and also any appropriate user interface, such as graphical buttons, Appendix Page 39, Column 18, Line 60. [00:34:09] Speaker 00: So again, there's no there there in the patent. [00:34:12] Speaker 00: And this court's also already been there several other times with similar patents. [00:34:19] Speaker 04: Thank you, Mr. Joseph. [00:34:20] Speaker 02: Thank you. [00:34:24] Speaker 02: Yes, Your Honor. [00:34:25] Speaker 02: Let me just start by responding to the question you asked earlier about primary interaction. [00:34:29] Speaker 02: There is a construction for primary interaction. [00:34:32] Speaker 02: It's on page 19 of our opening brief. [00:34:34] Speaker 02: It was actually agreed to during the Markman hearing in the case. [00:34:37] Speaker 03: Is it in the joint appendix? [00:34:39] Speaker 02: It's in page 19 of the brief. [00:34:41] Speaker 02: And you can also see it in column 8, lines 10 through 20 of the patent itself. [00:34:46] Speaker 02: But what it says is any operation of the computer [00:34:49] Speaker 02: that occurs to enable or to support the performance of the function or functions that provide the basis for the user's use of the computer. [00:34:56] Speaker 02: So it's what the user is working on. [00:34:59] Speaker 04: OK, so we're in the realm of one computer activity not being intruded upon by the secondary bit of information. [00:35:08] Speaker 02: That's exactly right, Your Honor. [00:35:10] Speaker 02: And then to respond to the point that Judge Plager made earlier about, well, you could just go after [00:35:15] Speaker 02: them on 103. [00:35:16] Speaker 02: Well, they tried that, Judge. [00:35:17] Speaker 02: They filed the re-examination early in this case, and the case was stayed. [00:35:21] Speaker 02: One of the reasons we're eight years into this case is it was delayed several years for a re-examination. [00:35:26] Speaker 02: And the reason I raise that is the re-examination very clearly identifies what was different over the prior art. [00:35:34] Speaker 02: And it wasn't the abstract idea. [00:35:36] Speaker 02: It was the user interface installation instructions, the ability of the user to specify [00:35:43] Speaker 02: what was going to be provided in that secondary content and being able to get that from a remote source. [00:35:49] Speaker 02: And you can take a look at the appendix page 1610, which is the examiner's reasons for allowance and the arguments that were made in the reexamination. [00:35:58] Speaker 03: But I guess in terms of trying to understand this claim and accepting that the claim is about displaying a second set of data next to a primary set of data and then [00:36:13] Speaker 03: Well, who chooses that second set of data? [00:36:20] Speaker 03: There's really two choices, either the user or somebody that's not the user. [00:36:26] Speaker 03: And so I guess the question is why does it make a big deal why it's one category rather than the other category in terms of being regarded as an inventive concept when it's [00:36:41] Speaker 03: pretty old and basic for a user to be able to select what kind of data he wants to look at. [00:36:48] Speaker 02: There are actually three different ways, I believe, in which the information could show up. [00:36:53] Speaker 02: One, your computer could put it up like it occurs in a screen saver. [00:36:57] Speaker 02: Two, it could come from some central source, like the TV ticker technology, where another source is identifying what's going to go in that information. [00:37:06] Speaker 02: Or it could be the user. [00:37:07] Speaker 02: What's inventive about that? [00:37:09] Speaker 02: Nobody had done that in this sort of program back in March of 1986. [00:37:13] Speaker 02: We've got to put ourselves back over 20 years ago when this invention was developed. [00:37:18] Speaker 03: What about picture in picture? [00:37:21] Speaker 03: In that instance, the user is controlling and choosing what is being displayed in both [00:37:29] Speaker 03: both little displays, right? [00:37:32] Speaker 02: And I don't remember if that was conventional back then or not. [00:37:34] Speaker 02: What I do know is the only evidence in this record about what was and was not conventional is the prosecution history. [00:37:41] Speaker 02: And it says it wasn't conventional. [00:37:44] Speaker 02: That's the evidence. [00:37:44] Speaker 02: We're at the stage of a judgment on the pleadings. [00:37:48] Speaker 02: There's clear and convincing evidence that is required in order for them to prove their case. [00:37:52] Speaker 02: And we have a situation where a judge with no evidence [00:37:57] Speaker 02: on her own decided that this entire claim was conventional. [00:38:01] Speaker 02: What is the evidence? [00:38:02] Speaker 02: The evidence is the intrinsic record. [00:38:06] Speaker 02: It's the specification. [00:38:07] Speaker 02: It's the prosecution history. [00:38:08] Speaker 02: The same stuff we look at for claim construction. [00:38:11] Speaker 02: The prosecution history here tells us that this was not conventional. [00:38:16] Speaker 02: What was not conventional? [00:38:17] Speaker 02: It was the ability of the user and the user interface to specify the content and the ability to go acquire that from remote sources. [00:38:25] Speaker 02: Those two things were argued over and over again in the prosecution history. [00:38:29] Speaker 02: And ultimately, that's why the claims were allowed. [00:38:32] Speaker 02: And the reason that's important is those are not abstract ideas. [00:38:35] Speaker 02: We have a situation, the Mayo situation, where there may be an overlap between the novelty question and the 101 inventive step question. [00:38:45] Speaker 02: This is the exact same fact question with the novelty question here. [00:38:51] Speaker 02: focus specifically, for example, on the user interface installation instruction. [00:38:56] Speaker 02: That is not part of the abstract idea. [00:38:59] Speaker 02: And so the Mayo foreshadowing is occurring here. [00:39:02] Speaker 02: We've got a situation where the evidence that we have right now at this stage of the proceedings tells us that this is not conventional. [00:39:10] Speaker 02: And then the other point that I wanted to make in just a few seconds left is the step one analysis has to look at improvements. [00:39:16] Speaker 02: It has to look at improvements. [00:39:18] Speaker 02: If what you're doing is coming up with an abstract concept underlying the invention that is not tied to your improvements, then what have you done? [00:39:25] Speaker 02: You haven't conducted a fair analysis. [00:39:29] Speaker 02: As this Court has said over and over again, every invention can be abstracted to a point where it would be ineligible. [00:39:38] Speaker 02: You've got to look at the claim to invention. [00:39:40] Speaker 02: Thank you, Your Honor. [00:39:40] Speaker 02: Thank you very much. [00:39:42] Speaker 04: Thanks to all counsel. [00:39:44] Speaker 04: The case is submitted.