[00:00:00] Speaker 03: Final case for argument is 161728, secured meal solutions versus universal. [00:00:54] Speaker 04: May it please the court, I'm William O'Brien, representing the plaintiff and appellate, Secured Mail Solutions. [00:01:01] Speaker 04: Among other things, the inventor Todd Fitzsimmons invented the creation and use of a specific barcode in a specific way to solve important problems in pre-existing mail verification technology. [00:01:14] Speaker 04: The trial court erroneously dismissed the case because it deemed the patent claims to be directed to a sweepingly broad abstract idea [00:01:22] Speaker 04: that it formulated contrary to this court's later decision in Enfish versus Microsoft. [00:01:28] Speaker 03: Can I just ask you, in your opening brief, unless I missed it, you didn't refer to any specific claims as being representative. [00:01:34] Speaker 03: We've got different categories here. [00:01:37] Speaker 04: We have not taken a position that a particular claim or claims are representative of all 234 claims, Your Honor. [00:01:44] Speaker 04: I think that would be very difficult. [00:01:46] Speaker 04: So we treat each individually. [00:01:48] Speaker 01: What does that mean? [00:01:50] Speaker 01: We have to adjudicate all 236 clients? [00:01:55] Speaker 03: Or you make statements about the claim. [00:01:57] Speaker 03: Should we assume that those statements apply with equal force and effect to every single one of the clients? [00:02:03] Speaker 04: No, Your Honor. [00:02:04] Speaker 04: But the burden of proof was on a universal while to show that every claim is individually [00:02:15] Speaker 04: invalid under Section 101. [00:02:19] Speaker 04: And we don't think it was our burden to organize the claims into packets that could be subjected to 101 analysis. [00:02:29] Speaker 04: We did... They all got invalidated. [00:02:33] Speaker 01: Excuse me? [00:02:33] Speaker 01: They all got invalidated. [00:02:35] Speaker 04: Yes, Your Honor. [00:02:36] Speaker 01: So isn't it your obligation here on appeal to point out which of the ones or how they're different? [00:02:42] Speaker 01: Well, I think we [00:02:44] Speaker 01: They're broken into three categories, right? [00:02:47] Speaker 04: Yes, Your Honor. [00:02:48] Speaker 04: And I think there's other discussion of differences in the claims. [00:02:52] Speaker 04: We didn't use our word limit quoting claims. [00:02:59] Speaker 04: To any great extent, there are 234. [00:03:02] Speaker 04: That would be a pretty difficult obstacle. [00:03:06] Speaker 04: But one separation between the claims is that, [00:03:15] Speaker 04: There are claims that are directed specifically to barcodes. [00:03:22] Speaker 04: Another is that there are claims that are directed specifically to identifiers, sometimes specifically barcodes, that have at least three specific values, or in many of the claims, four specific values, creating a concatenated [00:03:44] Speaker 04: a sender-generated unique identifier by concatenating a value assigned by the sender together with sender identification, recipient indication, and shooting method. [00:03:55] Speaker 01: Coming back to what the presiding judge put her finger on is that we've got this 234 claims that seem to have been treated as a unit by the district court. [00:04:07] Speaker 01: There's nothing in the district court opinion picking out particular differences. [00:04:12] Speaker 01: I didn't read your appellate brief to a sign as an article of legal error by the district court of having looked at them together. [00:04:23] Speaker 04: Well, I think we did, Your Honor, on the step one of Alice. [00:04:27] Speaker 01: I think we rather strenuously stated... You're saying that's for everyone. [00:04:32] Speaker 01: The error was to all the claims uniformly. [00:04:35] Speaker 04: Well, not as to all the claims, yes, but not uniformly, Your Honor, because, for example, [00:04:41] Speaker 04: The abstract idea, though it's far too sweeping to capture any of the claims appropriately under Enfish versus Microsoft, it is even more inappropriate where the claims recite specifically a barcode, for example. [00:05:01] Speaker 04: It's even more inappropriate where the claims recite, for example, a barcode that contains [00:05:11] Speaker 04: the four values I mentioned, concatenated into a unique sender-generated identifier. [00:05:18] Speaker 01: And another... Can we then take those claims and lift at least either those under a category and to take your argument as addressed to that category? [00:05:31] Speaker 01: Here are the claims that cite the bar code and you believe they are somehow different from the ones that don't for purposes of step one analysis. [00:05:40] Speaker 04: They're certainly less abstract and more concrete. [00:05:44] Speaker 01: Yes, Your Honor, but we think that in both Step 1... I'm just trying to figure out how we write an opinion that deals with the 234 claims without citing each claim. [00:05:54] Speaker 01: I mean, I suppose we can have 234 sections of the opinion, and that'd be a lot of repetition probably in the rationale. [00:06:05] Speaker 04: This is outside my area of expertise, Your Honor, but I do not think Your Honors are required [00:06:10] Speaker 04: where the court below did lump everything together to disaggregate everything if, in fact, the lumped-together findings include irreminence. [00:06:22] Speaker 01: Well, that was the burden of the presiding judge's question to you, I think, was where do our eyeballs focus? [00:06:30] Speaker 01: Which claim was erroneously found to have embraced an abstract idea? [00:06:37] Speaker 04: Well, we contend, rather [00:06:40] Speaker 03: strongly that every claim was wrongly... Can I just get on to the... I mean, the abstract idea here, at least for some of the claims, right, is that the district court said they were directed towards, quote, communicating information about a piece of mail by use of a marking. [00:06:58] Speaker 03: Is that right? [00:06:59] Speaker 03: Yes, Your Honor, and... Okay, and your answer to that, you started to get to it a little earlier, is that you should be safe [00:07:07] Speaker 03: from the conclusion of an abstract idea because the communication of information is done through barcodes in your claims? [00:07:16] Speaker 03: I'm just trying to understand what your argument is as to why your claim is not abstract. [00:07:21] Speaker 04: Well, one reason is that, for example, if your honor wanted to look at claim 13 of the 032 patent, it's a concatenation of four [00:07:31] Speaker 04: specific values to create a unique identifier assigned by the center. [00:07:34] Speaker 03: Well, can we just look at claim one of the, I guess, I'm not sure. [00:07:38] Speaker 03: Is there an 093? [00:07:44] Speaker 03: Yeah, that is a- I mean, we can't at this juncture. [00:07:47] Speaker 03: We've got your briefs and we've got all the appendix. [00:07:49] Speaker 03: But I don't think for purposes of the 15 minute dialogue we have here, we're equipped to go through all of these claims. [00:07:55] Speaker 03: Am I wrong or am I right that the basis for at least the court concluding that there was an abstract idea [00:08:01] Speaker 03: in some of the claims, at least, was because they construe the claims as being directed to communicating information about a piece of mail by using a marking. [00:08:10] Speaker 04: Well, you're right, Your Honor. [00:08:11] Speaker 04: You could go further. [00:08:12] Speaker 04: That was the only abstract idea that the court found and the court treated as that every single claim was directed at. [00:08:21] Speaker 03: So let's look at the ones that are dealing with the barcode. [00:08:23] Speaker 03: Is it your position that because the communication of information is done through barcodes and the claims, [00:08:30] Speaker 03: That's what makes it non-abstract. [00:08:34] Speaker 04: That's only one factor, Your Honor. [00:08:35] Speaker 04: But the thing that received the most emphasis in obtaining these patents was that the use of the sender-generated, the creation and use of the sender-generated unique identifier, which solved a serious problem, or a variety of problems, including a very serious problem of how to authenticate [00:08:59] Speaker 04: mail and be comfortable with its contents including safety. [00:09:05] Speaker 02: In the technology, the sender attributes certain information to whatever they're going to send. [00:09:14] Speaker 02: Would you call that encoding? [00:09:16] Speaker 02: Are they coding? [00:09:19] Speaker 02: Is this technology about coding and encoding? [00:09:23] Speaker 04: I think it's common to call the creation of the barcode as a form of encoding. [00:09:28] Speaker 04: So certainly in that sense, I think prior to the creation of the barcode, that there would be a computerized formulation of a concatenated numerical value that's going to be encoded into the barcode. [00:09:45] Speaker 04: So you could also talk about that as another encoding process. [00:09:50] Speaker 02: So the basic technology here is the assignment of certain information [00:09:56] Speaker 02: a package or whatever it is that you're going to send. [00:10:04] Speaker 04: At a very high level, but that's not what the claims are directed to, because the claims are directed to something much more specific that solves a problem with the technology that your Honor just referred to. [00:10:16] Speaker 03: So what was invented here? [00:10:18] Speaker 03: You said they're aimed at something very specific. [00:10:20] Speaker 03: What is it? [00:10:23] Speaker 04: Well, the single most important thing [00:10:26] Speaker 04: in my view, and most prominent in the prosecution history, is the creation of this sender-generated unique identifier, which is, in some of the claims and preferred embodiment, made by concatenating a value assigned by the sender with three other forms of information. [00:10:48] Speaker 02: But what does that mean, a genuine identifier? [00:10:51] Speaker 02: It's a sender. [00:10:52] Speaker 02: If I'm the sender, [00:10:53] Speaker 02: And I use a barcode technology. [00:10:57] Speaker 02: And I say, Jim. [00:11:00] Speaker 02: That's a genuine identifier, correct? [00:11:02] Speaker 02: And it goes off. [00:11:03] Speaker 02: And at the other end, you use another barcode. [00:11:07] Speaker 02: And you say, well, Jim sent me this. [00:11:10] Speaker 04: But you can add to it. [00:11:12] Speaker 02: It can be more complex than that and address the content of the package. [00:11:18] Speaker 04: Well, the point here is it permits authentication [00:11:22] Speaker 04: by contacting the sender electronically and finding out that, yes, there is a package that bears this unique identifier, and it is coming from this sender, and it is intended for me. [00:11:35] Speaker 02: OK. [00:11:35] Speaker 02: So what makes this all work is the fact that you've ascribed, I use the word attributed, you've ascribed certain information, which the identifier or all the other, the list of stuff, you ascribe that to a particular package, and it goes off. [00:11:52] Speaker 02: Somebody at the other end can get on the internet and look at that and say, well, Jim sent me a package. [00:11:59] Speaker 04: Well, but the person ascribing it is the sender, and that's of critical importance. [00:12:04] Speaker 04: Because the post office might genuinely believe that a certain person is sending me a package, and yet that package could be coming from someone else. [00:12:13] Speaker 02: At bottom, we have the sender is ascribing information to a package. [00:12:21] Speaker 02: has access to that information via the computer. [00:12:24] Speaker 02: So you're encoding or you're coding particular packages and giving that code to somebody else, they insert the code, and out pops some of that information. [00:12:35] Speaker 04: Well, yeah. [00:12:37] Speaker 04: To be more specific, in many of the claims, the recipient is then communicating with the sender electronically and verifying directly with the sender, this is a package that exists [00:12:50] Speaker 04: created by the sender, sent to me by the sender, and other information. [00:12:56] Speaker 02: What makes it all work here is the inscription of the information or the scribing of the information to a package. [00:13:03] Speaker 04: That is a necessary step in all of the claims, yes, Your Honor. [00:13:07] Speaker 02: Why is that not abstract? [00:13:10] Speaker 01: For example, it would be as if I get these little return [00:13:15] Speaker 01: My name and my home address, when I give money to the veterans of foreign wars, I get these little things put on. [00:13:20] Speaker 01: When I send a bill up in the upper left-hand corner of the envelope, I put on my return address. [00:13:27] Speaker 01: And that's sender-generated to tell whoever I'm sending it to, it came from me. [00:13:33] Speaker 01: And what the invention is to have a barcode that actually verifies what I said. [00:13:39] Speaker 04: But it's more specific than that, Your Honor. [00:13:42] Speaker 04: It's a barcode that just has, [00:13:45] Speaker 04: who the sender is. [00:13:46] Speaker 01: It could contain more information than that. [00:13:49] Speaker 01: But at the first level, instead of me putting my return address on, which I do for the benefit of the post office mainly, bring it back to me if the other guy didn't take it. [00:14:00] Speaker 01: But what the barcode simply does is to confirm to whoever received my mail that Clevenger sent it to. [00:14:07] Speaker 01: Now it could conclude other information, the barcode itself. [00:14:10] Speaker 04: Not only can, but must, in order to practice any of the claims of this [00:14:15] Speaker 04: of these patents. [00:14:16] Speaker 01: So it must take my hypothetical. [00:14:22] Speaker 01: What more must the barcode do than simply confirm my return address? [00:14:31] Speaker 01: If all it was doing was confirming my address, it would still infringe, right? [00:14:37] Speaker 01: Somebody that used the barcode for that? [00:14:39] Speaker 04: It would infringe sometimes only if it's done [00:14:42] Speaker 04: in the particular way that the claims claim in terms of how the identifier is created by who or what its contents or what specific contents are. [00:14:54] Speaker 01: I think that's what the presiding judge was asking when she asked the embedding step question. [00:15:00] Speaker 01: So what I'm trying to get at is what [00:15:02] Speaker 01: What are the claims doing through that barcode identifier, sender-created identifier, that is exceptional, unusual, different, whatever? [00:15:14] Speaker 04: Well, they're doing different things. [00:15:15] Speaker 04: But one is providing reliable confirmation directly from the sender instead of communicating with the post office and finding out they believe that a certain person sent you this package. [00:15:30] Speaker 04: having to check it before you're going to find out whether, in fact, it's disguised, it's from someone else, it's got anthrax in it, or whatever, you are confirming directly with the sender, this is a package that they sent you. [00:15:44] Speaker 04: And in other claims, you're getting contents of the sender. [00:15:49] Speaker 01: You're establishing... Is the computer doing anything different than I can do without the benefit of the computer? [00:15:56] Speaker 04: Yes, it is. [00:15:57] Speaker 04: And in some of the [00:16:00] Speaker 01: If the recipient called me up and asked me some questions, I could answer all this information that's going through the two-way barcode. [00:16:11] Speaker 01: Well, I'm not... So at the first level of generality, it seemed to me that my argument by you putting your return label on the mail is that is a sender-generated way of telling the recipient who sent it. [00:16:28] Speaker 04: Well, Your Honor, in Enfish, you could say, well, the first level of generality, you've got a database that's got data in it. [00:16:39] Speaker 04: And it's got columns. [00:16:43] Speaker 04: I'm sorry, it's got rows. [00:16:45] Speaker 04: But the court held that's not really what the invention is directed to. [00:16:49] Speaker 04: The claims are directed to a more specific self-referential table, one that's got [00:16:56] Speaker 04: you know, intersecting columns and rows. [00:16:58] Speaker 04: And here we're not talking about just any kind of identification. [00:17:03] Speaker 04: We're talking about an identification that is generated in a specific way by the sender, by assigning a number, the sender information, the recipient information, and the... Okay, I'm going to cut you off because you've exceeded your time and we'll store a couple minutes of read-bottom, but let's hear from the other side. [00:17:28] Speaker 00: May it please the court. [00:17:31] Speaker 00: The concept of communicating information about a mail piece by using a marking on the mail's packaging is abstract. [00:17:38] Speaker 00: And it's abstract whether the sender authors the communication or not. [00:17:42] Speaker 00: It's abstract whether the content of the communication itself is general or specific. [00:17:47] Speaker 00: And it's abstract whether the communication is made by use of a pen and written in English, or it's made by use of a barcode on the mail piece. [00:17:56] Speaker 00: Every one of secured mail's patents [00:17:59] Speaker 00: And every claim is directed to the same abstract concept. [00:18:03] Speaker 00: And the claims recite nothing beyond the abstract concept other than do it on a computer. [00:18:09] Speaker 00: Every claim implements the abstract concept using only conventional computer technology. [00:18:14] Speaker 01: And why is it an abstract concept? [00:18:16] Speaker 01: Communicating information about a mail piece by use of a marking. [00:18:21] Speaker 01: So I'm putting my return address sticker on a piece of mail. [00:18:24] Speaker 01: That's a marking, right? [00:18:26] Speaker 00: That's correct. [00:18:26] Speaker 01: That's communicating information. [00:18:29] Speaker 01: abstract about that. [00:18:30] Speaker 01: Pretty real, isn't it? [00:18:32] Speaker 01: I mean, I peel the sticker off and I put it on the envelope? [00:18:38] Speaker 00: Your Honor, it's an abstract concept under the court's line of cases that finds that fundamental economic practices or practices of agent lineage are abstract concepts. [00:18:48] Speaker 01: Why is it whether I realize that there's language that says abstract lineage, there are also cases that say it's not old lineage. [00:18:59] Speaker 01: So why is the fact that something is old, old lineage make a difference as to whether something is or is not abstract? [00:19:06] Speaker 00: Because I think the fundamental point of Alice was, and Bilsky really before it, was you can't take a practice that was done pre-computer age and then obtain patent claims. [00:19:20] Speaker 01: But why does that make it abstract? [00:19:21] Speaker 01: I understand why you can't do it. [00:19:23] Speaker 01: It's been around too long. [00:19:24] Speaker 01: Like, quote, it's obvious. [00:19:25] Speaker 01: But why does it make it abstract as an intellectual matter? [00:19:30] Speaker 01: Especially where we have cases that say, well, even though what you're doing isn't old, it's brand new, it's still abstract. [00:19:37] Speaker 00: I think, Your Honor, one authority that is instructive on this would be, for example, Judge Raina's dissent in the Amdoc's case, where he explains that there are sort of some different categories of things that have been found to be falling within the abstract. [00:19:57] Speaker 00: concept exception to Section 101. [00:20:01] Speaker 00: And one of those things is fundamental economic practices of ancient lineage. [00:20:07] Speaker 00: Buy safe versus Google would be a good example of a precedent here where the court used that exception. [00:20:15] Speaker 00: And I think it goes back to the idea that if it's something that, not to introduce additional jargon to answer your question, but if it's something that is sort of a mental process, it's something that [00:20:26] Speaker 00: people do in their heads they could do and did do using pencil and paper historically, it's problematic if now that we're in the computer age, parties are able to obtain a 20-year-long monopoly on using computers in their most conventional way to perform those things which are of ancient lineage. [00:20:48] Speaker 00: And the claims here do nothing more than use computer technology in its most conventional ways and in its most conventional arrangements. [00:20:57] Speaker 00: I think if the court refers to figures one and two of these patents, that would be very clear. [00:21:03] Speaker 00: The written description provides additional clarity as to how old this technology or routine it is. [00:21:09] Speaker 00: A barcode scanner scans barcodes in the invention. [00:21:13] Speaker 00: A computer is used to store information [00:21:16] Speaker 00: to computers communicate over the internet. [00:21:20] Speaker 00: Now, if the court has any questions about any particular claim of any of these patents, I would be happy to discuss a particular claim. [00:21:29] Speaker 02: Why was there not the identification of representative claims in this process? [00:21:36] Speaker 02: You know, it's just typical. [00:21:38] Speaker 00: Your Honor, there was, in fact, identification of representative claims by the district court. [00:21:44] Speaker 00: And so if you'll humor me for a moment, I'll explain what happened. [00:21:48] Speaker 00: We received the complaint. [00:21:50] Speaker 00: We filed our motion to dismiss under Rule 12P6. [00:21:54] Speaker 00: In our brief supporting the motion, we addressed every one of the 234 claims. [00:22:00] Speaker 00: Yes, we had to group some together, but we did address why each one didn't add an inventive concept at step two. [00:22:08] Speaker 00: That's not in the appendix because we haven't included our whole brief for this court's rules, but it's available on PACER. [00:22:15] Speaker 00: The district court then, after reading the briefing from both parties, at appendix page eight, examined all of the claims and found that four claims could be considered representative based on the arguments that were raised below. [00:22:32] Speaker 00: And those were based on those three categories that your honors discussed. [00:22:35] Speaker 00: Then what the district court did was evaluate those particular claims. [00:22:39] Speaker 00: And then at appendix pages 21 to 23, further addressed each of the other claims that the patent owner raised in its opposition to the motion to dismiss. [00:22:53] Speaker 00: And so I think what the district court here was really exemplary of the way district courts should handle this type of a case. [00:23:00] Speaker 00: The court looked at all the claims. [00:23:01] Speaker 00: That's at appendix page 8. [00:23:03] Speaker 00: identified some representative funds, made rulings based on that. [00:23:08] Speaker 00: And then, as your honors have pointed out, in the opening brief on appeal, there's not a single claim that is listed or examined in detail. [00:23:17] Speaker 02: As I say, if there's a particular claim that any of your assets... So for us to write an opinion, then, we could go back to the district court's categories that they established and address those claims. [00:23:32] Speaker 02: and apply that to the whole? [00:23:36] Speaker 00: I think so, Your Honor, just to clarify, the district court did not establish the three categories. [00:23:41] Speaker 00: Those were in the complaint itself, split those categories out. [00:23:46] Speaker 00: But the district court did utilize those. [00:23:48] Speaker 00: And I think it's fair to say that given the way that the case has been briefed, that the appellant has sort of itself identified these three different categories and said, [00:24:01] Speaker 00: Here are the different categories of claims that you would need to look at. [00:24:05] Speaker 00: So as I said, if there's any claim or any other issue anyone of your honors would like to discuss, I would be happy to address it. [00:24:13] Speaker 00: Otherwise, universal law does thank the court for its consideration of the case. [00:24:17] Speaker 00: Thank you. [00:24:18] Speaker 00: Thank you. [00:24:25] Speaker 04: Your honor. [00:24:26] Speaker 04: Your honors. [00:24:31] Speaker 04: Council misstated that there's nothing in these claims except taking the abstract idea and doing it on a computer. [00:24:38] Speaker 04: There is far more than that, and we never would have gotten any patents if there had been merely this abstract idea. [00:24:46] Speaker 04: The specifics are not of ancient lineage. [00:24:49] Speaker 04: In fact, there's no evidence that the additional features beyond the abstract idea, the very broad abstract idea, are not inventive. [00:24:59] Speaker 03: You said the council misstated it. [00:25:01] Speaker 03: And what you're really saying is the district court embraced it, not what council was saying. [00:25:07] Speaker 03: So you're also saying the district court misstated what the claims are about. [00:25:13] Speaker 03: I mean, that's what this appeal is about, right? [00:25:15] Speaker 04: Well, that's right, Your Honor. [00:25:16] Speaker 04: And the district court created kind of a bit of a parts list of various things and different claims. [00:25:23] Speaker 04: felt allowed to fall through the cracks of the two steps, the whole basis on which the patents had been obtained, such as the sender-generated unique identifier. [00:25:34] Speaker 04: So Bascom says it's the burden of the defendant to show no inventive concept is a matter of law. [00:25:45] Speaker 04: They provide no evidence of that. [00:25:47] Speaker 04: micro says it's their burden to show no preemption. [00:25:52] Speaker 02: Is it your view that a unique identifier is not abstract? [00:26:02] Speaker 04: The term unique identifier out of context might be abstract. [00:26:07] Speaker 04: In your context. [00:26:09] Speaker 04: Our unique identifier is not abstract as, for example, [00:26:16] Speaker 04: uh... claim that uh... thirteen of zero that the concept of a unique identifier in in your view is that abstract uh... well there there might be an abstract concept of unique identifier i'm not sure that the concept abstract concept of a identifier like a airplane but when you have a [00:26:43] Speaker 04: a specific identifier that solves problems by being different. [00:26:50] Speaker 04: In Bascom, there was a problem solved by moving the location of the filtering software. [00:26:58] Speaker 04: Here, there's a problem solved by moving the location of where the identifier is created. [00:27:04] Speaker 04: In Bascom, that creates a problem. [00:27:06] Speaker 04: How do you filter people the way they want to be filtered? [00:27:09] Speaker 04: And the solution was, well, you put their customizable filtering criteria [00:27:14] Speaker 04: at the same remote location where you're doing the filtering, well, here we solved the problem of having a sender-generated unique identifier by concatenating information such that the sender can generate a unique identifier, whereas the prior art was the mail carrier was regarded as the only one able to do that. [00:27:37] Speaker 04: Thank you. [00:27:37] Speaker 03: Thank you. [00:27:38] Speaker 03: We thank both sides. [00:27:38] Speaker 03: The case is submitted. [00:27:39] Speaker 03: That concludes our proceedings for this morning. [00:27:42] Speaker 04: All rise. [00:27:45] Speaker 04: The hour of accord is adjourned until Monday morning at o'clock a.m.