[00:00:00] Speaker 04:
3-2-3, perhaps licensing versus I-Wings.

[00:00:24] Speaker 03:
Believe me I'm nervous.

[00:00:52] Speaker 04:
You're all set.

[00:00:55] Speaker 00:
Please proceed.

[00:00:56] Speaker 00:
The asserted claims here are directed to a technological solution to a technological problem.

[00:01:02] Speaker 00:
The asserted claims are limited to a particular way of solving that problem that's distinct from the conventional process and that is described for purposes of eligibility with sufficient specificity.

[00:01:17] Speaker 00:
And the elements of the asserted claims include inventive concepts.

[00:01:21] Speaker 00:
That's why the district court's decision should be reversed.

[00:01:24] Speaker 00:
The asserted claims here recite patent-eligible subject matter.

[00:01:28] Speaker 00:
I want to jump straight into why the claims are sufficiently specific.

[00:01:33] Speaker 00:
The district court's erroneous characterization of what the claims here are directed to is what led it to erroneously conclude that the claims lack sufficient specificity for patent eligibility.

[00:01:46] Speaker 01:
And not all the claim limitations abstract.

[00:01:50] Speaker 00:
The claim limitations here are not abstract.

[00:01:52] Speaker 01:
Developing a set of operations and that sounds mental, passing them through a simulator and then outputting them, that sounds all abstract.

[00:02:07] Speaker 00:
It's our position that the claims here are not abstract.

[00:02:10] Speaker 00:
They are directed to a particular solution

[00:02:14] Speaker 00:
that is distinct from the conventional process.

[00:02:16] Speaker 00:
And in that sense, this would fall under big row.

[00:02:20] Speaker 04:
OK, but can I just say, at least on the first part of it, it's my understanding the district court said this is just about using a simulator instead of the actual memory device, and not withstanding words like technological and everything else.

[00:02:36] Speaker 04:
Why is that incorrect?

[00:02:37] Speaker 04:
What more is there to this portion of the claim, leaving aside the packet stuff?

[00:02:42] Speaker 04:
than just using the simulator.

[00:02:45] Speaker 00:
The claims here are directed to the ability to generate what is an actually verified test rather than just a presumed good test.

[00:02:54] Speaker 04:
Am I wrong?

[00:02:57] Speaker 04:
The description of how to do it boils down to using the simulation

[00:03:01] Speaker 04:
instead of the actual memory device, right?

[00:03:04] Speaker 00:
It includes using a simulation instead of the actual memory device, but I don't think it's just using a simulator.

[00:03:13] Speaker 04:
I mean, we're not talking about the packet stuff now.

[00:03:16] Speaker 04:
We're talking about the simulation stuff.

[00:03:18] Speaker 00:
So tell me... Relating to just the claims without the packer limitation.

[00:03:22] Speaker 00:
The claim set forth that first the test operations are developed.

[00:03:27] Speaker 00:
Those tests operations are then input into a simulator.

[00:03:32] Speaker 00:
The simulator also accepts the parameter file that defines the memory device operating constraints.

[00:03:40] Speaker 00:
And it then runs the test operations against the memory device operating constraints.

[00:03:46] Speaker 04:
Yes, so you use a simulator instead of the actual memory device and then you compare it.

[00:03:52] Speaker 04:
You do some sort of comparison.

[00:03:54] Speaker 04:
Is that what you're saying?

[00:03:55] Speaker 00:
It does run the operations against them and compares it.

[00:03:58] Speaker 00:
And if it determines that there's a violation, then it outputs particular error messages.

[00:04:03] Speaker 04:
In other words, it tells you what the error is.

[00:04:06] Speaker 00:
Yes.

[00:04:07] Speaker 04:
Okay.

[00:04:07] Speaker 04:
And so I'm having a hard time really understanding why that's not an abstract idea.

[00:04:14] Speaker 00:
Even, it's our position that it's not an abstract idea because as in micro, this is taking a particular solution that describes a process that's distinct from the conventional solution and tells you how to arrive at the verified test.

[00:04:29] Speaker 00:
But even if it's a close call, the elements here include inventive concepts.

[00:04:36] Speaker 00:
There's no evidence in the record that it was conventional to use a simulator

[00:04:42] Speaker 00:
in order to generate a verified test.

[00:04:44] Speaker 00:
There's no evidence in the record that it was conventional for a simulator to the extent that that was a generic component to be able to accept a parameter file of the operating constraints of a memory device and to compare the operating constraints of the memory device to the test operations.

[00:05:06] Speaker 00:
That is completely lacking from the record here.

[00:05:09] Speaker 00:
Xilinx makes the attorney argument that perhaps that could have been done, but there's no evidence in the record here that it was done, conventionally, or that it could have been done.

[00:05:19] Speaker 00:
And as a result, the idea of actually comparing the test operations to the memory device operating constraints in order to determine whether there was a violation, that was a new and distinct process.

[00:05:35] Speaker 01:
Sounds like a 103 argument.

[00:05:37] Speaker 00:
It may be, but the issue here is that it passes the threshold patent eligibility issue.

[00:05:44] Speaker 00:
If we also turn then to the packer claims, the packer is identified as accepting both the parameter file that contains the memory device operating constraints, as well as a verified test that goes through the process of being run through the simulator.

[00:06:03] Speaker 00:
It then packs the operations of the test as tightly together as possible, as permitted by the operating constraints.

[00:06:13] Speaker 00:
And there's no evidence in the record that it was conventional to use, to minimize the runtime of a test by packing the operations together as closely as possible.

[00:06:27] Speaker 00:
And there's no evidence in the record that it was conventional to use

[00:06:32] Speaker 00:
that functionality in conjunction with a simulator that operated in a non-routine way.

[00:06:39] Speaker 00:
That is, that the simulator actually compared the test operations to the memory device operating constraints.

[00:06:46] Speaker 02:
Can I ask you this question?

[00:06:47] Speaker 02:
Is there anything in these claims, which as you say in your brief, are all about ending up with a very good test that depends on

[00:07:02] Speaker 02:
the idea that the subject of the test is a memory device or any other computer device, as opposed to a refrigerator or a microwave oven.

[00:07:13] Speaker 02:
You want to develop a test for stuff coming off the assembly line.

[00:07:17] Speaker 02:
And you want therefore a test that makes sure that when you run it on the units coming off the assembly line,

[00:07:26] Speaker 02:
correctly diagnoses whether an individual unit meets the constraints of that unit, whatever it is, a microwave oven or anything else.

[00:07:36] Speaker 02:
And so you create a simulator in which you say, these are the constraints of a good unit coming off the assembly line.

[00:07:48] Speaker 02:
And make sure that the test tests for all of that.

[00:07:53] Speaker 00:
The claim language itself is directed to memory device.

[00:08:02] Speaker 00:
So while you could continue to back out to a level of abstraction that would take it to any test that attempts to compare thing A to thing B to see whether they match, that violates the case law's direction that you need to look at what the claim language is and what the specification

[00:08:24] Speaker 00:
And it's very clear here that what these claims are directed to, their character, as well as what the claims themselves embody, relate to the technological process of generating a test for a computer memory device.

[00:08:43] Speaker 00:
That process is computerized technology.

[00:08:46] Speaker 00:
The memory device is computer technology.

[00:08:49] Speaker 00:
The test is software.

[00:08:52] Speaker 00:
The simulator is software that operates in a non-routine way to reach an unconventional result.

[00:09:01] Speaker 01:
Sounds like if you have a new abstract idea and you put it onto a computer, that's eligible.

[00:09:09] Speaker 00:
This is not just taking though a pre-existing practice and sticking it on a computer and saying use the computer as a tool to perform that activity.

[00:09:18] Speaker 01:
But even a new idea

[00:09:20] Speaker 01:
It's still abstract, isn't it?

[00:09:23] Speaker 01:
It's an idea.

[00:09:25] Speaker 01:
And it's on a computer.

[00:09:28] Speaker 01:
And so how was that eligible?

[00:09:30] Speaker 00:
Well, if we're using the word invention synonymously with idea, then it doesn't mean that every invention is abstract.

[00:09:40] Speaker 00:
So here what you have is the idea of creating a verified test using a particular process

[00:09:51] Speaker 00:
that is done by software elements that do not behave in their routine fashion.

[00:09:58] Speaker 00:
And so it is not just you're taking an idea and doing it on a computer.

[00:10:04] Speaker 00:
And I think it would violate the case law to say that just because this is an improvement that occurs as a result of using software that operates in an unconventional and non-routine manner,

[00:10:19] Speaker 00:
then it is somehow abstract.

[00:10:22] Speaker 00:
That would basically mean that any software invention would be unpatentable.

[00:10:29] Speaker 00:
And that is not where the case law is, and I don't think that's where the case law should go.

[00:10:36] Speaker 00:
I wanted to touch briefly on the fact that in addition to the patents containing sufficient specificity and also having sufficiently inventive concepts,

[00:10:49] Speaker 00:
that here the packer was found by the PTAB to be missing from the only prior art that's part of the record.

[00:10:59] Speaker 00:
That is, the prior art submitted by Xilinx to the PTAB and its IPR petition said that the way test writers previously attempted to runtime optimize a test was essentially by eliminating

[00:11:15] Speaker 00:
certain test operations or making them overlap so that they would not be clickative.

[00:11:21] Speaker 00:
And the PTAB found that that prior art did not recite the claimed packer.

[00:11:28] Speaker 00:
It did not recite or disclose packing the operations together as tightly as possible, which is further evidence that here the packer limitation and the process that employs the packer limitation is unconventional.

[00:11:44] Speaker 00:
It wasn't previously used.

[00:11:50] Speaker 00:
The claims here more closely align with the cases that this court has found sufficiently disclose either a technological improvement that is not itself an abstract idea, such as McGraw,

[00:12:08] Speaker 00:
or a technological improvement that, even if can be described as an abstract idea, is sufficiently concretely described with inventive concepts to keep it from being an unpatentable abstract idea.

[00:12:27] Speaker 04:
Why don't we give them the other side.

[00:12:34] Speaker 03:
Good morning.

[00:12:36] Speaker 03:
Good morning, guys.

[00:12:36] Speaker 03:
My name is Disney Corp.

[00:12:37] Speaker 03:
Matthew Solerica-Zilax.

[00:12:38] Speaker 03:
The patent claims described in the past briefing, and described right now by the President's Council, do not exist.

[00:12:46] Speaker 03:
Right on their own, if you look at the patents, they don't describe a detailed, specific, particular invention.

[00:12:52] Speaker 03:
Rather, the themes are directed at abstract ideas, and they lack any inventive concept that would make them patentable.

[00:12:59] Speaker 03:
Now, at base, all that the patents claim is, one, using a simulator capable of determining

[00:13:06] Speaker 03:
whether a set of operations, a test violates operating constraints.

[00:13:11] Speaker 03:
And then two, using a packer to minimize runtime of the test in relation to the operating constraints.

[00:13:19] Speaker 03:
Now, there's no disclosure at all of how the simulator does this comparison to determine whether there's violation.

[00:13:28] Speaker 02:
Do we have an issue before us about whether the term packer should have been construed?

[00:13:35] Speaker 03:
Well, frankly, Your Honor, PAPS did not seek construction of the term packer.

[00:13:39] Speaker 03:
They didn't offer construction of the term packer.

[00:13:42] Speaker 03:
At the very tail end of their brief, they said, look, if you're inclined to grant this motion, then it's pretty true.

[00:13:48] Speaker 03:
At the end of the brief, at the end of the brief, in the indiscriminate plaintiff's jail.

[00:13:52] Speaker 03:
But they didn't offer any instructions.

[00:13:54] Speaker 03:
So I just don't want to go back and forth with court right now.

[00:13:56] Speaker 03:
In any event, if you look at the specification, it defines a packer.

[00:14:02] Speaker 03:
just as broadly as the claim limitations do.

[00:14:05] Speaker 03:
And in fact, it defines it as a function.

[00:14:09] Speaker 03:
That's what we're dealing with here, is these broadly defined, unspecific functions.

[00:14:14] Speaker 03:
I think Jessica really got to the heart of the matter.

[00:14:18] Speaker 02:
What was it the board, do I understand right, that the board declined to institute an inter-parties review?

[00:14:28] Speaker 03:
As to Claim 14, the Packer, it did.

[00:14:31] Speaker 02:
Right, and I guess I was understanding what I heard before from Ms.

[00:14:37] Speaker 02:
Glauser to say that in the course of doing that, the board said, Packer here is different from at least the asserted prior arts.

[00:14:51] Speaker 02:
Shorten the amount of time something takes prior arts.

[00:14:54] Speaker 03:
Yeah, the specific prior reference that was put forward in that PHAB procedure.

[00:14:58] Speaker 02:
Did the board in that decision-denying institution say, we interpret HACR even under a BRI standard to have the following requirements that the board couldn't find in that framework?

[00:15:12] Speaker 03:
I don't recall that it did.

[00:15:13] Speaker 03:
But even if it did, that was a determination made by Judge Cohen in the case before us.

[00:15:19] Speaker 03:
You have a different standard before the PHAB and the district court in the first place.

[00:15:23] Speaker 03:
There was no request for any construction of the packer in the district court here.

[00:15:27] Speaker 03:
And even if you have a construction, what this court is focused on, in terms of inventive concept and whether it's unconventional or not, is the mechanism.

[00:15:36] Speaker 03:
If the essence of the invention is this packing.

[00:15:39] Speaker 02:
But the mechanism, I'm not quite sure where that term comes from, but we do look at the claims.

[00:15:45] Speaker 02:
And the claims can mean A or B, depending on construction.

[00:15:48] Speaker 02:
So sometimes, claim construction is necessary.

[00:15:51] Speaker 02:
Often, it's not.

[00:15:53] Speaker 02:
The range of possible claim constructions would not make any difference under the 101 standards, but sometimes it may.

[00:16:00] Speaker 03:
And as I said, they did not seek a claim construction and B, regardless of the claim construction here, I think it's still an abstract idea and there's still no inventive concept.

[00:16:10] Speaker 03:
The mechanism language, among other places, it was in the recent intellectual ventures versus your indemnity case written by your honor, in which it made clear that if you simply describe

[00:16:22] Speaker 03:
something, a function, without explaining how it's actually implemented, that's not going to get you past the inventive concept step.

[00:16:29] Speaker 03:
And that's what we're dealing with here.

[00:16:31] Speaker 03:
Because if you look at column five for the specification, to the extent that you need to look at the specification at step two of the analysis, all it says is that the packer is a function which calls the simulator to minimize the time between different operations.

[00:16:47] Speaker 03:
That tells you nothing about how it's done.

[00:16:49] Speaker 03:
This is really a complete black box in which you put in a couple of inputs.

[00:16:55] Speaker 03:
You put in a set of operations, your test.

[00:16:58] Speaker 03:
You put in the operating constraints of the device.

[00:17:01] Speaker 03:
The specification indicates that these are both easily understood.

[00:17:04] Speaker 03:
Here's a couple of files.

[00:17:06] Speaker 03:
And then the simulator does something.

[00:17:09] Speaker 03:
It compares, comparing is fundamentally an abstract idea.

[00:17:12] Speaker 03:
And then it determines if there's a violation.

[00:17:17] Speaker 03:
And then it lets you know if there's a violation.

[00:17:19] Speaker 03:
That's what we're talking about.

[00:17:22] Speaker 02:
Packing would intuitively be substantially more complicated than that.

[00:17:26] Speaker 02:
It's just not limited in the spec.

[00:17:27] Speaker 03:
It's just not limited in the spec in any way.

[00:17:30] Speaker 03:
And that's the fundamental problem here.

[00:17:32] Speaker 03:
And so even if you want to say that sure, when there's a solution to a technological problem, that's going to be patent eligible, we just don't have a solution to find in any way in these patents, which once again is the fundamental problem.

[00:17:48] Speaker 03:
Another problem we have here, frankly, because I think we spoke this a little bit with your question about whether this is limited to memory devices.

[00:17:57] Speaker 03:
Memory device is recited in the preamble, but when you look at the claim limitations, they would apply to anything, because any device is going to have operating constraints.

[00:18:07] Speaker 03:
And so all that recitation of memory device in the preamble does is it limits to a field of use.

[00:18:14] Speaker 03:
And it is clear in this court's case law over and over again

[00:18:17] Speaker 03:
They say simply limiting an abstract idea to a particular field of use is insufficient to get you past section 101.

[00:18:26] Speaker 03:
So that's all we have here with a memory device.

[00:18:29] Speaker 03:
This exact same invention, these exact same claim limitations could apply to any device.

[00:18:38] Speaker 03:
So at base, we are left with this falling into a long line of authority

[00:18:44] Speaker 03:
including the recent intellectual adventures cases, including Claire Logic, which was recently decided, including the electric power group case, where you have insufficient specification, you have common, familiar steps.

[00:18:57] Speaker 03:
And for those reasons, we believe that the district court correctly concluded that these are patent ineligible claims.

[00:19:05] Speaker 03:
Mr. Court, has any further questions?

[00:19:06] Speaker 03:
Thank you.

[00:19:11] Speaker 00:
The problem with Siding's position in the district court's argument, the district court's decision, is that it results in a cascading series of how questions.

[00:19:29] Speaker 00:
And let me put that into an illustration.

[00:19:32] Speaker 00:
In DDR, the court determines that the claims were directed to the problem of losing website visitors.

[00:19:38] Speaker 00:
It determined that although the claims were abstract, that they were nonetheless patentable because the claims described how to solve that problem and how there was interrupting typical internet traffic to direct a visitor to a composite webpage that displayed the third party product information from the hyperlink as well as the look and feel elements of the host webpage.

[00:20:07] Speaker 00:
And that was sufficient for patent eligibility purposes.

[00:20:11] Speaker 00:
This court did not require the patent to further describe how the composite page was generated, how the visitor was directed to the composite page, how the composite page displayed the look and feel elements.

[00:20:27] Speaker 00:
The district court, though, did that here.

[00:20:30] Speaker 00:
And that's what Xilinx is asking this court to do.

[00:20:33] Speaker 00:
See, here the claims are directed to generating an actually verified memory device test rather than a presumed good test, and generating a runtime optimized test that is also verified.

[00:20:47] Speaker 00:
And the claims describe how to do that with sufficient particularity.

[00:20:52] Speaker 00:
It is not a black box, as Eilings argues.

[00:20:56] Speaker 00:
The patent specifically describes that the packer packs the operations as tightly as possible, given the current set of memory device operating constraints.

[00:21:07] Speaker 00:
That the packer accepts the time ordered sequence of operations, that is the test that's been verified by the simulator, and the parameter file, that is the operating constraints of the memory device.

[00:21:20] Speaker 00:
And that the pattern then iteratively calls the simulator to produce a version of the test that is both minimized in time, that is runtime efficient, and that is verified.

[00:21:38] Speaker 00:
The conventional process could not do that.

[00:21:42] Speaker 00:
Likewise, the patent specifically describes that the simulator mimics the memory device

[00:21:49] Speaker 00:
that the simulator accepts files, the parameter file and the test operations, and that it runs the test operations against the memory device operating constraints.

[00:22:02] Speaker 00:
Now, Xilinx is asking for purposes of patent eligibility whether the patent further describes how it runs the test operations against the memory device operating constraints.

[00:22:15] Speaker 00:
But that's not the right question for purposes of the threshold eligibility issue.

[00:22:21] Speaker 00:
The claims are specific enough to make them a distinct process that is unconventional.

[00:22:29] Speaker 00:
What they're asking really goes more to an enablement issue.

[00:22:32] Speaker 00:
And in order to determine that, there would need to be the factual findings with what a person of skill and the art would have known based on the patent claims, the specification, and the other relevant intrinsic evidence.

[00:22:45] Speaker 00:
Finally, I wanted to briefly note that Xylase relies heavily on this court's recent cases in Ivy versus Erie and Ivy versus Capital One.

[00:22:57] Speaker 00:
But those cases cannot be analyzed here.

[00:23:01] Speaker 00:
Both of those cases dealt with analyzing or manipulating data.

[00:23:07] Speaker 00:
That is an area that this court has repeatedly said is an abstract concept.

[00:23:13] Speaker 00:
In addition, both of those cases failed the step two of Alice because they did not provide any description of how to, for instance, edit the XML documents in a way that allowed them to be format compatible or how to use the index to locate documents from a database with anything except generic conventional components.

[00:23:40] Speaker 00:
That is not this case.

[00:23:42] Speaker 00:
Likewise, in clear logic, the claims were cited using an algorithm engine.

[00:23:47] Speaker 00:
But it didn't include any identification or explanation of what that algorithm engine was, and in fact said that the algorithm engine could be anything supplied by a third party that established what rules might apply for purposes of certifying a borrower's financial records.

[00:24:08] Speaker 00:
For all those reasons, we would ask that the district court decision be reversed.

[00:24:11] Speaker 04:
Thank you.

[00:24:12] Speaker 04:
We thank both sides for cases submitted.

[00:24:14] Speaker 04:
That concludes our proceedings for this morning.