[00:00:00] Speaker 02: I'm going to turn it over to Judge O'Malley who has a motion. [00:00:04] Speaker 03: Yes, I would like to move the admission of Taylor King. [00:00:07] Speaker 03: He is a member of the bar and is in good standing with the highest court of the state of California. [00:00:13] Speaker 03: I have knowledge of his credentials and am satisfied that he possesses the necessary qualifications. [00:00:20] Speaker 03: In fact, I have pretty detailed knowledge of his credentials and qualifications because he has been serving as my law clerk for the last year. [00:00:29] Speaker 03: Taylor was brought to our attention and we were brought to his attention through one of my former law firms who was a good friend and classmate of Taylor's and we lobbied Taylor to leave his cushy high paying job at Gibson Dunn in California and to move his whole family across country in order to join us and we're very happy that we were able to convince them to do that. [00:00:52] Speaker 03: Taylor's a graduate of George Washington right here in DC, so he wasn't unfamiliar with the surroundings. [00:01:00] Speaker 03: But he has been a great addition to Chambers, and we loved having him, and we loved getting to know his family, including his three children. [00:01:08] Speaker 03: And after this, he's going to go back across country, because while DC was okay, apparently it wasn't that good. [00:01:15] Speaker 03: So he's going to go back to Gibson-Dunn and back to California, and we will miss him. [00:01:19] Speaker 03: Thank you. [00:01:22] Speaker 02: I concur. [00:01:26] Speaker 02: Well, we all appreciate and we all have the pleasure of getting to work with not just our clerks, but other clerks of this court. [00:01:33] Speaker 02: And we enthusiastically grant Judge O'Malley's motion. [00:01:38] Speaker ?: Thank you. [00:01:41] Speaker 06: Please raise your hand. [00:01:44] Speaker 06: Do you solve this well or not? [00:01:45] Speaker 06: As you can tell, this has been a time of catholicism already in college involved. [00:01:49] Speaker 06: the Constitution of the United States of America. [00:02:02] Speaker 02: The first case today is 16-2438, VideoShare versus Google. [00:02:10] Speaker 02: Mr. Dovel, please, whenever you're ready. [00:02:18] Speaker 05: Good afternoon, and may it please the Court. [00:02:22] Speaker 05: The fundamental error of the District Court below, at Mayo Step 1, was in failing to recognize that the recited claims are directed to improving a technological process. [00:02:36] Speaker 05: That is, they're not directed to an abstract idea, such as sharing video. [00:02:42] Speaker 05: They don't merely take sharing video and say, let's do it on the Internet, rather, [00:02:48] Speaker 05: The claims are directed at improving the existing technological processes for sharing video on the internet. [00:02:57] Speaker 02: Now, happily enough, time has passed so that I think our circuit has come up with quite a few data points, which I hope is helpful to the public in terms of deciding what is or is not patent eligible. [00:03:11] Speaker 02: So I assume, based on your comments, [00:03:14] Speaker 02: that you would think that a case such as Enfish is the one that most squarely fits these. [00:03:20] Speaker 02: Is that correct? [00:03:20] Speaker 02: Or are there other cases that you would point us to that are most like the claims here? [00:03:24] Speaker 05: The case that is most likely is in Bascom. [00:03:27] Speaker 05: But at that case, they passed on step one and went right to step two in terms of the actual facts. [00:03:34] Speaker 05: In terms of step one, it's closest to McRoe and Enfish. [00:03:38] Speaker 05: The cases where the court has found claims patent-eligible at step one are maybe [00:03:43] Speaker 05: Whether it's McGrow or Enfish, one of those two would be closest. [00:03:46] Speaker 03: But didn't Enfish have very specific algorithms and technological methodology that were involved in the claims? [00:03:55] Speaker 05: Your Honor, Enfish did not have specific technological algorithms. [00:03:59] Speaker 05: If by specific methods it did, and this claim does it well as well. [00:04:03] Speaker 05: The problem we're addressing here, Your Honor, is the problem of getting video from one computer over the internet to another computer. [00:04:13] Speaker 05: And there's a specific process that used to be used before we came along with our invention. [00:04:19] Speaker 05: And there's a specific process recited in our invention. [00:04:22] Speaker 05: And it contains numerous important steps. [00:04:25] Speaker 05: But the key, Your Honor, at step one is not about those specific elements, which will address the step two. [00:04:32] Speaker 05: But it's what does the claim purport to do? [00:04:35] Speaker 05: Are we merely saying, hey, let's share a video and do it on the internet, or are we purporting [00:04:40] Speaker 05: to improve the technological process, in the words of Alice. [00:04:44] Speaker 05: And here we very clearly are. [00:04:46] Speaker 05: In 1999. [00:04:46] Speaker 05: Well, we are. [00:04:48] Speaker 05: One honor should be more specific. [00:04:49] Speaker 05: How? [00:04:52] Speaker 05: In the claims runner, let's take a look at 608 claim. [00:04:58] Speaker 05: We take a look at claim one. [00:05:05] Speaker 05: The recited limitations of using a receiving computer [00:05:10] Speaker 05: to automatically convert the video file into a streaming video file, generate an identification tag comprising the video frame image, and then embedding the identification tag into a web page. [00:05:27] Speaker 05: Those limitations recited an unconventional approach that was absolutely contrary to the conventional wisdom at the time. [00:05:35] Speaker 05: The paradigm at the time was, Your Honor, [00:05:38] Speaker 05: We're trying to transfer a whole video file from one computer to another video. [00:05:43] Speaker 05: The paradigm made use of traditional file transfer technology, attaching an email or posting on a web page. [00:05:51] Speaker 05: This looked at it in an entirely different way. [00:05:53] Speaker 05: We're not going to be repeatedly, repeatedly transferring this video. [00:05:57] Speaker 04: Was it known to convert a video file into a video streaming file? [00:06:03] Speaker 04: That was known. [00:06:04] Speaker 04: Yes, it was. [00:06:05] Speaker 04: So if a particular user [00:06:09] Speaker 04: converted a video file on its computer to a video streaming file, I don't think you could say that's an inventive concept, could you? [00:06:21] Speaker 05: I would agree, Your Honor, and that's not what we point to. [00:06:24] Speaker 04: But because in your claim, your claim calls for the video file to be transmitted from the user computer to some, I don't know, receiving computer, [00:06:39] Speaker 04: And then the receiving computer does the conversion from the video file to a video streaming file. [00:06:44] Speaker 04: That makes all the difference. [00:06:46] Speaker 05: That's one of the things that makes a difference, Your Honor. [00:06:48] Speaker 04: The reason is... Okay. [00:06:49] Speaker 04: Well, let's focus on that one. [00:06:50] Speaker 04: I know you've got a couple different reasons for saying you have an inventive concept, but I just want to first understand that one and make sure we kind of drill down on each one, one at a time, because if we talk about them all [00:07:06] Speaker 04: in one big basket very quickly, then I lose focus on what I'm supposed to be thinking about. [00:07:11] Speaker 05: Yes, sir. [00:07:12] Speaker 05: I'm going to focus on the receiving computer, but I want to point out that the things I'm going to talk about, there's a synergy with other elements. [00:07:19] Speaker 05: So those other elements may come into the picture. [00:07:21] Speaker 04: OK. [00:07:21] Speaker 04: But for now, just presume that the way I look at the claim, I see the claim as saying, we have a video file at node A. The video file gets sent from node A to node B. [00:07:35] Speaker 04: at node B, the video files converted to a different format. [00:07:41] Speaker 04: What am I missing from my understanding of the claim? [00:07:45] Speaker 05: One of the important elements, Your Honor, is that in the transmitting from node A to node B, we are transmitting over the internet. [00:07:52] Speaker 05: We're transmitting over the same computer network that we're ultimately going to stream it from. [00:07:57] Speaker 05: That's required in both the 302 and the 608 claims. [00:08:01] Speaker 05: That is, it must be the same network for both, [00:08:04] Speaker 05: And because the streaming must be done from a web page, it must be on the internet. [00:08:09] Speaker 05: And that means, Your Honor, conventionally it was understood that if you're going to translate or transform your video, convert it to some other format that's better suitable for transmission, you do it before you start transmission. [00:08:24] Speaker 05: You don't transmit the video over the internet, and then on the receiving end, convert it to streaming video. [00:08:31] Speaker 05: That was a completely new way to look at things. [00:08:33] Speaker 05: It had never been done before. [00:08:35] Speaker 04: That sounds like you're actually creating a problem, right? [00:08:41] Speaker 04: By claiming an arrangement where you send the video file from node A to node B to allow node B to do the conversion, you're actually creating [00:08:53] Speaker 04: an unnecessary step point. [00:08:55] Speaker 04: At node A, you could have just simply done the conversion to a new format. [00:08:58] Speaker 05: Which is one of the reasons this was viewed as unconventional. [00:09:02] Speaker 05: This was inventive. [00:09:03] Speaker 05: It was not the way that conventional wisdom said to do it. [00:09:07] Speaker 05: Why is it inventive? [00:09:09] Speaker 05: Because, Your Honor, it was unconventional and contrary to the conventional wisdom. [00:09:13] Speaker 05: In other words, we know something's inventive. [00:09:15] Speaker 05: It was not really not done before, which is the case here. [00:09:20] Speaker 05: But it defied and turned upside down what was ordinarily done. [00:09:24] Speaker 05: Ordinarily. [00:09:26] Speaker 03: So what problem does it solve? [00:09:28] Speaker 05: The problem, it solves three sort of sets of problems, Your Honor. [00:09:32] Speaker 05: Under the conventional processes, when we're dealing with file transfer, at the receiving end, the entire file has to be downloaded before it can be used at all, before the access can be started. [00:09:46] Speaker 05: By using streaming format, we eliminate that. [00:09:49] Speaker 04: Secondly, Your Honor, under conventional... But that was the prior art. [00:09:52] Speaker 04: That was already known. [00:09:54] Speaker 04: To convert something to a streaming format. [00:09:56] Speaker 00: Yes, it was. [00:09:57] Speaker 04: So, I mean, the advantage of being able to access a video through streaming format isn't something you invented. [00:10:04] Speaker 05: No, Your Honor, but remember, the prior art process of transferring a video file from one computer to another over the internet consisted of either using email or using web posting. [00:10:16] Speaker 05: And it was not done in the prior art to put streaming video on, use it as web posting. [00:10:22] Speaker 05: That was not something that was known and used in the prior art. [00:10:27] Speaker 04: I'm sorry. [00:10:27] Speaker 04: I'm confused. [00:10:28] Speaker 04: Your claim, as I understand it, you have a thumbnail, a little picture of the video on a website. [00:10:37] Speaker 04: And then someone can, I guess, start streaming the video from that website. [00:10:43] Speaker 04: Yes, Your Honor. [00:10:44] Speaker 04: And then I thought I heard you say that [00:10:46] Speaker 04: It was conventional to stream from a website. [00:10:49] Speaker 04: No, Your Honor. [00:10:50] Speaker 04: I did not say that. [00:10:52] Speaker 05: Streaming technology was known, but it was used by content providers, like real networks. [00:10:56] Speaker 05: They might stream a baseball game to users. [00:10:58] Speaker 05: But it was not conventional to stream from websites. [00:11:02] Speaker 05: It was not conventional to post. [00:11:05] Speaker 05: That's what our image is about. [00:11:07] Speaker 05: It was not conventional to post streaming video on websites, or to use thumbnails, or any part of that. [00:11:13] Speaker 05: It was never known before. [00:11:13] Speaker 05: It was not conventional. [00:11:16] Speaker 05: You will not find anything in the pleaded facts or the specification that says any part of that was convention. [00:11:21] Speaker 05: Google doesn't point to anything. [00:11:23] Speaker 03: Didn't we say in Amdocs that just moving a computerized activity from one location to another is not inventive? [00:11:35] Speaker 05: But that's not what was done here, Your Honor. [00:11:37] Speaker 05: We took the prior processes that were done on user computers [00:11:42] Speaker 05: and replace them with a different process. [00:11:44] Speaker 05: We didn't centralize, hey, everybody's doing this on user computers. [00:11:47] Speaker 05: Let's just move it over here. [00:11:49] Speaker 05: It's a completely new process. [00:11:51] Speaker 05: There was no conversion to streaming video and then generating an identification tag at this and then posting on a web page. [00:12:01] Speaker 05: That wasn't done by users before. [00:12:02] Speaker 05: There's nothing in the record or the prior art that suggests that. [00:12:07] Speaker 05: Moreover, Your Honor, it would have been counterintuitive here. [00:12:10] Speaker 05: It depends on what you're dealing with. [00:12:13] Speaker 05: If it's counterintuitive to move it from one location to another, that becomes inventive. [00:12:18] Speaker 05: That's what makes something inventive. [00:12:20] Speaker 05: In this context, Your Honor, it was conventional for users that they're willing to do any kind of conversion, any kind of processing, to do it before you start transmission over the internet. [00:12:32] Speaker 05: You don't do it and then have the receiving computer do it. [00:12:36] Speaker 05: In addition, let me spend just a few minutes talking about the thumbnail identifier. [00:12:42] Speaker 05: Again, the conventional approach was that our identifier is found inside of the file name. [00:12:49] Speaker 05: It's limited to the parameters of a file name. [00:12:51] Speaker 05: Why? [00:12:52] Speaker 05: Because that's what transfers with the file. [00:12:54] Speaker 05: Under conventional thinking, our identifier could consist of nothing more than alphanumeric characters and only a few of them, something that would fit in the file name. [00:13:05] Speaker 05: It was completely inconceivable that we could have an identifier that would be a still image, because it wouldn't fit inside of the file name. [00:13:13] Speaker 05: That was our limitation. [00:13:16] Speaker 05: The minister thought outside the box and said, Listen, we don't have to be limited to just the file name. [00:13:21] Speaker 05: We can create an entirely separate file, a still image file, link the two, and because we've got this central location now where we're just parking the video once, [00:13:33] Speaker 05: we can use that as our identifier. [00:13:34] Speaker 04: Just curious, why wouldn't that be regarded as the mere computerization of an old concept, which would be associating an image of a product with a product? [00:13:48] Speaker 05: Two reasons, Your Honor. [00:13:49] Speaker 05: Let's talk specifically about video. [00:13:51] Speaker 05: That's the closest comparison. [00:13:53] Speaker 05: That is, there was the practice of having DVD videos sold before. [00:13:58] Speaker 05: That's a film product, a video product. [00:14:02] Speaker 05: And in that practice, there was no limitation on your identifier field. [00:14:07] Speaker 05: Your identifier field is the front of the box. [00:14:09] Speaker 05: There's no limitation. [00:14:10] Speaker 05: You can put still images right on the box, black and white, along with alphanumeric codes. [00:14:16] Speaker 05: In addition, Your Honor, even for videos, it was not perceived as the best way to approach it, to put an image from the video. [00:14:27] Speaker 05: In fact, that was perceived as inferior, as second rate. [00:14:31] Speaker 05: The vast majority of videos then and today, you can check that you go to the Best Buy website today, do not make use of an image from the video. [00:14:39] Speaker 05: Instead, they have graphic artists create a composite image that really... But can we just accept that it was known? [00:14:46] Speaker 04: It was known to do it. [00:14:48] Speaker 04: Okay. [00:14:50] Speaker 04: So now we're moving over to a website environment, the internet environment. [00:14:56] Speaker 04: file, a data file. [00:14:57] Speaker 04: The data file is being associated with some kind of identifier, i.e. [00:15:01] Speaker 04: a label. [00:15:02] Speaker 04: Labels can be alphanumeric. [00:15:04] Speaker 04: They can be also perhaps an icon or some kind of image. [00:15:09] Speaker 04: And you're saying, well, that would be very difficult to do because perhaps it requires a lot of memory or something like that. [00:15:18] Speaker 04: At the same time here, what we have is just in the claim, the concept [00:15:23] Speaker 04: of including a thumbnail image without explaining how you've managed to, I don't know, deal with any kind of memory restrictions or something like that in order to include such a thumbnail. [00:15:37] Speaker 04: So I'm at a little bit of a loss right now why the association of some kind of label, whether it be an image label or an alphanumeric label, all of a sudden creates an event of concept. [00:15:53] Speaker 05: computer files at the time, the identifier was always limited to the parameters of the file name. [00:15:59] Speaker 05: That was the only identifier you could use for a file. [00:16:02] Speaker 05: This is about file identification. [00:16:04] Speaker 05: And that was the conventionalism. [00:16:06] Speaker 05: That was the perception. [00:16:07] Speaker 05: We can have whatever file identifier we want as long as we can cram it into an alphanumeric set of bytes that fit within a file name. [00:16:17] Speaker 05: It took stepping outside the box, Your Honor, different thinking to say, wait a minute. [00:16:22] Speaker 05: We can do something different. [00:16:24] Speaker 05: We'll use an entirely separate file as our identifier. [00:16:28] Speaker 05: This is not really just we're going to associate products. [00:16:30] Speaker 05: It's about using this as the identifier for this video file. [00:16:33] Speaker 04: Nobody did thumbnails before on the internet before you? [00:16:37] Speaker 05: Not for video, Your Honor. [00:16:38] Speaker 05: In fact, for the below, this is for the 608 patent, they did not identify a single bit of prior art where there was a video thumbnail image on a webpage. [00:16:46] Speaker 04: But you can see thumbnails were running all over the place on the internet. [00:16:50] Speaker 04: or your invention, it just so happened, in your view, there's no evidence of it associated with a video file. [00:16:58] Speaker 05: That's right. [00:16:58] Speaker 05: Thumbnails were solely used for still images. [00:17:00] Speaker 05: And the reason, Your Honor, is it was understood that if you got a tiny picture of a still image, it could be really representative of that still image. [00:17:09] Speaker 05: It was not believed useful to use a still image of a selection from the video, particularly one selected by [00:17:17] Speaker 05: third-party computer, that that would be at all useful in understanding what was on that video. [00:17:22] Speaker 05: That was not the conception at the time. [00:17:24] Speaker 05: That's why it was never done. [00:17:26] Speaker 05: In fact, Your Honor, Your Honor, you're not going to find that in the records, and you're not going to take judicial notice of it. [00:17:31] Speaker 05: In fact, their expert even admitted on cross-examination that it would have been non-obvious to put a thumbnail image on a web page. [00:17:41] Speaker 02: I'll reserve the balance on the thumbnail. [00:17:43] Speaker 02: But that's OK. [00:17:44] Speaker 02: We'll restore it to you in a minute. [00:17:55] Speaker ?: at least in court. [00:17:56] Speaker ?: The district court lived with these claims for more than three years, held a market hearing, and issued a claim of obstruction order. [00:18:02] Speaker 04: And after all that, the court understood... Did your experts acknowledge and admit that it'd be non-obvious to associate a thumbnail image from a video with the video streaming file posted on the website? [00:18:15] Speaker 01: Your Honor, I have to confess I don't know what our experts said about that. [00:18:19] Speaker 01: This was decided on the pleading, so I haven't dug into the expert testimony on that subject. [00:18:24] Speaker 01: I think it's acknowledged that the general idea of using a thumbnail, a still video frame image to represent the video, was well known as a conventional pre-internet practice. [00:18:37] Speaker 01: We'll give the example and I'll brief the image of Jimmy Stewart and Donna Lee from It's a Wonderful Life, that's 1946, and I don't think the idea was revolutionary even then. [00:18:46] Speaker 01: So this is just quintessential Alice taking an old, well-known idea and moving it into the environment [00:18:54] Speaker 01: without any technical detail about how it implemented in that environment or solving any problem. [00:19:00] Speaker 01: In fact, VideoShare says in its brief that this actually created technical problems related to the bandwidth that was needed to transmit thumbnails. [00:19:09] Speaker 01: They didn't overcome any of those problems. [00:19:10] Speaker 01: So it's really a classic Alice situation. [00:19:13] Speaker 04: And you're actually... But is there saying that perhaps they created inventive concept by thinking outside the box to create [00:19:21] Speaker 04: a second file, i.e. [00:19:22] Speaker 04: the thumbnail, to associate with the first file, the video streaming file that no one had thought of before because everybody else was just reliant on the alphanumeric file name that was always associated with a given video file. [00:19:36] Speaker 01: Well, I take it what they're saying is no one had used this particular pre-internet abstract idea on the internet or in the context of video streaming specifically. [00:19:45] Speaker 01: And I suppose in any one-on-one case model analysis you could make that claim. [00:19:49] Speaker 01: You could say, [00:19:51] Speaker 01: no one had thought of doing intermediate settlement in the environment of the internet, and so we were thinking outside the box when we brought that idea into this environment. [00:19:59] Speaker 01: I think Alice tells us that's not enough. [00:20:01] Speaker 03: I think his point is that it's not so much saying no one thought of doing intermediate settlement on the internet, but he's saying that people were already doing video streaming on the internet, but there was a [00:20:16] Speaker 03: clear conventional way to do it that turned out not to be as good as what they came up with. [00:20:21] Speaker 03: Why isn't that Bascom? [00:20:24] Speaker 01: So I'll tell you why it's not Bascom and then I'll mention a few other cases that I think it's more like. [00:20:29] Speaker 01: So in Bascom, there was actually a technical improvement in the way the computer or the network functioned. [00:20:37] Speaker 01: So the Bascom claims took the pre-existing practice of content filtering [00:20:43] Speaker 01: didn't just move it to remote location, which the court said would not have been patent eligible. [00:20:47] Speaker 01: They added an additional feature that hadn't existed before, which was individual customizability. [00:20:52] Speaker 01: They used specific features, technical capabilities of certain networks to achieve that. [00:20:58] Speaker 01: And the court said that made the whole network more efficient and made it run better. [00:21:02] Speaker 01: And this wasn't taking some pre-existing internet idea and just bringing it over into the context of the internet. [00:21:09] Speaker 01: It was actually improving the process with a new idea. [00:21:12] Speaker 01: I guess I'd point to something like the court's decision in eerie indemnity, I think is a good example of what this is more like. [00:21:21] Speaker 01: There, the claims are directed to using an index to improve computer databases. [00:21:27] Speaker 01: And this was analogous to the kinds of indices that have been used in libraries to organize books and magazines. [00:21:34] Speaker 01: And so you could have said there, yes, this was an old preemptive idea of an index, but [00:21:39] Speaker 01: It wasn't being used in this particular environment to organize these kinds of databases, and so we actually improved it. [00:21:45] Speaker 01: The court didn't have any trouble with that. [00:21:46] Speaker 01: It said, you're just taking an old idea of an index, bringing it into this new technological environment. [00:21:52] Speaker 01: Same thing is going on here. [00:21:53] Speaker 01: You're taking an old idea of a thumbnail, bringing it into a new technological environment. [00:21:57] Speaker 03: But I understand that there's an overlap between 101 and 102 and 103. [00:22:03] Speaker 03: But at some point, you seem to be shifting way into 103 analyses. [00:22:09] Speaker 03: I mean, you know, I get the notion that what is an abstract idea might be what you could do in your head or even maybe what you could do on paper. [00:22:18] Speaker 03: But when we get to the point of saying, well, you know, we're taking things that have been done on computers and then we say that what's being done on the computers at x point in time itself is abstract, not just putting it on a computer, not just a processor, [00:22:33] Speaker 03: I mean, then are we having a moving target with respect to what's abstract? [00:22:37] Speaker 03: Is something five years from now going to be abstract that wasn't abstract today? [00:22:44] Speaker 01: I don't know where the case law is going, but I think this court has done a pretty good job so far of drawing this line. [00:22:52] Speaker 01: It's true that there are sometimes overlap between the 101 analysis and the 102, 103, and I think it's not always easy to draw that boundary. [00:23:01] Speaker 01: I don't think this is one of the [00:23:02] Speaker 01: hard one-on-one cases this court sometimes sees. [00:23:05] Speaker 01: I think you've got a very clear pre-internet practice, and all the claims do is bring it into the internet. [00:23:11] Speaker 01: You can imagine cases where somebody does more than that. [00:23:14] Speaker 01: They have actual technical, inventive innovation about how to bring that old idea into this new environment. [00:23:21] Speaker 03: But this thumbnail, the use of the thumbnail, thumbnails wasn't a pre-internet practice. [00:23:27] Speaker 01: Oh, sure it was, Your Honor. [00:23:28] Speaker 01: All the thumbnail is [00:23:30] Speaker 01: is taking a still image from the video and using it to represent the content of the video. [00:23:35] Speaker 01: That's exactly what was done with It's a Wonderful Life in a brief. [00:23:38] Speaker 01: Any time, I mean, going back to basically as long as we've had video, movie studios, people selling these videos have pulled out a still image, put it on the box or the movie poster or what have you to represent the content of the video. [00:23:52] Speaker 01: This is, you know, so if you walk through a video store, you know, my friend says, [00:23:57] Speaker 01: Sometimes it's doctored a little bit. [00:23:58] Speaker 01: It's not the exact image. [00:24:00] Speaker 01: I don't know if that's true, but I think it's conceded that if you walk through a video store many years ago, back when they used to exist, you'd see a whole bunch of still images that were more or less taken from the video. [00:24:11] Speaker 01: So that's the same concept. [00:24:12] Speaker 01: It's absolutely a pre-eminent concept. [00:24:15] Speaker 01: And this was said in Apple the Amaranth, just pointing to the degree of difficulty in implementing the abstract idea on the computer doesn't give rise to a benefit concept. [00:24:24] Speaker 01: You have to actually overcome the difficulty. [00:24:27] Speaker 01: So when they say, oh, this created technical challenges, that's not an upper invented concept. [00:24:32] Speaker 01: In fact, what that holds to is that this patent is preempting anyone who actually solved those technical problems to the extent they existed. [00:24:43] Speaker 04: What about the transition of the format conversion from, I guess, the user's computer to this intermediary server? [00:24:56] Speaker 04: that's going to be hosting a website. [00:24:59] Speaker 04: The other side's saying that was unconventional, that was something that people wouldn't think to do it, but people were thinking the opposite of doing that. [00:25:10] Speaker 04: So why isn't that an inventive concept? [00:25:16] Speaker 01: Sure, Your Honor. [00:25:16] Speaker 01: So all they're doing is offloading a particular generic computer function, video streaming, which we know is conventional. [00:25:24] Speaker 01: they're taking it and moving it from computer A to computer B. I think that's just routine, conventional computer activity. [00:25:30] Speaker 01: This court's case has made clear that just taking a known computer process and moving it... So maybe to echo Judge O'Malley here, why wouldn't that be a 103 notion? [00:25:41] Speaker 04: This would just be a routine thing to do, to do this file conversion from node A to node B. Isn't that a... [00:25:52] Speaker 04: a core 103 kind of an inquiry? [00:25:55] Speaker 04: Why is it also now a 101 inquiry? [00:25:59] Speaker 01: I think it might well be a 103 problem, too. [00:26:02] Speaker 01: Like I said, there's overlap here. [00:26:04] Speaker 01: But 101 is a coarser filter, and it's trying to get at, what did you really invent, as opposed to what's just the conventional, generic, technological environment in which your invention is operating? [00:26:15] Speaker 01: Well, is it abstract? [00:26:16] Speaker 04: Is it abstract? [00:26:18] Speaker 04: Is it an abstract idea to say that [00:26:21] Speaker 04: we're going to move this format conversion process from one location to another location. [00:26:29] Speaker 04: Is that an abstract idea? [00:26:31] Speaker 01: I'm not sure that's how I would put it. [00:26:32] Speaker 01: There's different ways to do this analysis in terms of what you do in step one and step two. [00:26:37] Speaker 01: I would say the abstract idea is the generic video streaming, or the way the district court put it, preparing the video for streaming. [00:26:43] Speaker 01: And this is routine conventional internet activity that's being packed onto that. [00:26:47] Speaker 01: And of course, this court has invalidated lots of claims under 101 [00:26:51] Speaker 01: that included this element of transmitting or receiving data over the internet as pre or post-solution activity. [00:26:56] Speaker 01: When you look at a case like TLI Communications, the patents there were directed at the abstract idea of organizing and classifying digital images. [00:27:04] Speaker 01: But if you actually go back and look at what was claimed, it was a server, or you could call it a receiving computer, that received digital images over the internet and then performed these steps of classifying and organizing. [00:27:16] Speaker 01: The court didn't have any trouble, didn't think that affected the analysis. [00:27:20] Speaker 01: Sending and receiving data are basic computer functions that don't affect patent eligibility under 101. [00:27:25] Speaker 01: You can also look at the Symantec case. [00:27:29] Speaker 01: There you had conventional virus screening, just like you have conventional video streaming here. [00:27:33] Speaker 01: The claims took that generic virus screening activity and they moved it from a local computer to what they call the intermediary computer, or you might call it a receiving computer, on the telephone network. [00:27:46] Speaker 01: And the court said, [00:27:48] Speaker 01: You didn't actually change how the screening works. [00:27:50] Speaker 01: You didn't make it work any better. [00:27:52] Speaker 01: All you did is relocate from A to B. On E38, F3, 1320 to 21, I'll read you the language. [00:28:00] Speaker 01: I think it applies directly here. [00:28:01] Speaker 01: It says that the claims didn't recite any improvement to conventional virus screening software or solve any problems associated with situating such virus screening on the network. [00:28:11] Speaker 01: Say the exact same thing here. [00:28:12] Speaker 01: They didn't recite any improvement to video streaming. [00:28:15] Speaker 01: They didn't solve any problem by their own admission. [00:28:17] Speaker 01: with situating an on receiving computer. [00:28:19] Speaker 01: In fact, they created problems that they didn't overcome. [00:28:22] Speaker 04: I guess the other side is arguing that there must be some kind of distinct advantage in having this intermediate server with the website that's taking all these video files, automatically converting them into video streaming files, and then everybody on the network can then access from this one centralized server. [00:28:42] Speaker 01: Well, a few points about that, Your Honor. [00:28:43] Speaker 01: First, I think you're describing sort of a [00:28:47] Speaker 01: a level of architecture that's not really in the claims. [00:28:51] Speaker 01: The claims just have two computers. [00:28:54] Speaker 01: The district court construed the phrase receiving computer at appendix 256 as one or more computers other than a second computer, at least one component of which receives a video file from a user on a second computer. [00:29:04] Speaker 01: So you've got computer A, computer B, and we're just offloading this generic function from one to the other. [00:29:09] Speaker 01: So we're not solving any of the problems related to the technical complexity of streaming. [00:29:14] Speaker 01: We're just relocating them. [00:29:16] Speaker 03: So we're supposed to, at 101, we're supposed to do an analysis of whether any restructuring that they're doing actually is advantageous? [00:29:25] Speaker 03: Is this sort of a point of novelty kind of inquiry? [00:29:29] Speaker 01: I think the question is, are they providing a technological solution to a technological problem? [00:29:35] Speaker 01: And to the extent that the technological problems they've identified, one is they say you had to [00:29:41] Speaker 01: You had to get the whole file before you could watch it. [00:29:43] Speaker 01: That was not solved by video share. [00:29:45] Speaker 01: That was solved by the inventors of streaming. [00:29:47] Speaker 01: And then they pointed to the general technical complexity of streaming. [00:29:51] Speaker 01: And again, that may be a technological problem, but they didn't provide just moving that from A to B. It's not a technological solution. [00:30:03] Speaker 01: So coming back to you, Judge Chen, your question about what if you're making it easier for lots of people to use this? [00:30:11] Speaker 01: I mean, I think that's exactly the argument this court just rejected in the easy web case, which if it were more presidential, I think it would be directly controlling. [00:30:18] Speaker 01: It's not, but it's still quite persuasive. [00:30:21] Speaker 01: There the claim described what they call a message publishing system. [00:30:24] Speaker 01: So the idea was you could send a message to the system by email or fax or phone. [00:30:30] Speaker 01: The system would receive it, automatically convert it, and publish it on the web for you. [00:30:35] Speaker 01: And it used conventional web publishing technology, but the claim was [00:30:39] Speaker 01: We've made this accessible to a broader range of people. [00:30:41] Speaker 01: The court had no problem with that. [00:30:43] Speaker 01: They said it's directed to the abstract idea of receiving and publishing content. [00:30:48] Speaker 01: The exact same thing is going on here, of course. [00:30:50] Speaker 03: If in fact that we were to assume that there actually was a benefit of recoding, relocating the video processing from one location to the other, then would you be in Enfish or Bascom? [00:31:06] Speaker 01: Well, I guess it would depend on what you thought the benefit was and whether it was a technological improvement to the functioning of the computer or the network. [00:31:15] Speaker 01: I don't know how you could get there here because I think it's acknowledged that the actual video streaming functions that are being performed on the receiving computer are the exact same functions that would have been performed on the first computer. [00:31:27] Speaker 01: So this is just like Symantec. [00:31:29] Speaker 01: It's a pure relocation without any improvement in functionality. [00:31:34] Speaker 01: I don't know what problem, and if the problem is being solved is this was hard to do at computer A, so we took it away from computer A, gave it to computer B, now it's hard to do at computer B. I don't think you've solved a problem you certainly haven't done it in a technological way. [00:31:48] Speaker 03: What about the user to user argument that you say that they waved? [00:31:53] Speaker 03: If they hadn't waved it, do you think that they would show some benefit or advantage from that? [00:32:00] Speaker 01: No, Your Honor. [00:32:01] Speaker 01: So again, [00:32:02] Speaker 01: I think that's very much like EasyWeb. [00:32:05] Speaker 01: It's this idea that there's this class of people they call users. [00:32:08] Speaker 01: I don't know exactly how you draw that line, but this class of people who weren't using the technology. [00:32:13] Speaker 01: Of course, the technology doesn't have to be universal to be conventional, but you've got some people who aren't using it, and we're essentially going to offer to do it for them. [00:32:21] Speaker 01: That's EasyWeb, and if you want to look beyond the computer context, it's a very old abstract idea. [00:32:28] Speaker 01: I mean, you could compare it to public access TV. [00:32:31] Speaker 01: I can't send out [00:32:32] Speaker 01: television broadcast from my home, so I'll send you a video tape, go convert it into a broadcast signal, send it out over the airwaves. [00:32:39] Speaker 01: You know, if that just offering to perform a technical function for someone were an invented concept, then you could have a follow-on patent for every new computer technology. [00:32:49] Speaker 01: You'd essentially say, there's a second patent for offering to do it for someone who can't do it themselves or find it too difficult. [00:32:55] Speaker 01: I don't think 101 permits that. [00:32:58] Speaker 01: Are there any more questions? [00:33:01] Speaker 01: Thank you. [00:33:07] Speaker 05: Your honors, my friends is mistaken. [00:33:09] Speaker 05: The patent specifications of the pleadings do not identify anywhere that at a user computer, our process was done or any portion of it. [00:33:19] Speaker 05: That is, the process of converting to streaming format, then getting an identifier and putting it on a website, that was not done at a user computer before. [00:33:30] Speaker 05: What was done before, if you're going to transfer a video, was to attach a file to an email, [00:33:36] Speaker 05: to post it on the web, or if you're a content provider, you might broadcast it through video. [00:33:41] Speaker 05: But our process was not done before. [00:33:44] Speaker 05: So this is not a matter of taking a prior process and moving it. [00:33:48] Speaker 03: But it does seem a lot like data architecture restructuring. [00:33:52] Speaker 03: I mean, you're not saying, arguing, that there is a huge advantage to having done this? [00:33:59] Speaker 05: Yes, Your Honor. [00:34:00] Speaker 05: The technological problems that we identified were solved because of this. [00:34:04] Speaker 05: Under the process before using email, for example, there was a tremendous problem of having to wait for downloads of video. [00:34:12] Speaker 05: Under the process before posting video, the same problem. [00:34:16] Speaker 05: It was very difficult to forward video. [00:34:19] Speaker 05: You would literally have to re-upload it and then have your other receiving computer, who you sent it to, Party C, re-download it. [00:34:27] Speaker 03: Your friend on the other side says all you've done is take the difficulty of the front end and move [00:34:33] Speaker 03: that same difficulty to the back end. [00:34:34] Speaker 03: Why is that not true? [00:34:36] Speaker 05: Because there were two or three different ways to do it before, but none of them combined what we did. [00:34:44] Speaker 05: And when you put all of ours together, you get synergistic benefits. [00:34:47] Speaker 05: Now, you can simply, instead of having to move video files all around the internet every time you want to pull or remove them, you only have to move a link to that web page. [00:34:57] Speaker 05: That's all you have to do. [00:35:00] Speaker 05: It saves tremendously in terms of bandwidth. [00:35:03] Speaker 05: In addition, Your Honor, the thumbnail identifier provides additional information that's useful and surprisingly useful and beneficial in identifying when you have a set of videos on the web page. [00:35:14] Speaker 05: Nobody expected that before. [00:35:15] Speaker 05: That was never done before. [00:35:17] Speaker 05: In addition, Your Honor, the problem of having users have to have both at the receiving end and the transmitting end, particular bits of software components, technical components, those are eliminated. [00:35:30] Speaker 03: There is a statement, and it's at JA55, where you say, it should be understood that any system, process, or capability that can be carried out on the user's computer can equally well be carried out on a host or receiving computer. [00:35:47] Speaker 03: Why doesn't that disclaim exactly what you were just saying, that locating to a receiving computer improves something? [00:35:55] Speaker 05: It says the opposite. [00:35:56] Speaker 05: Let's take a look at the patent. [00:35:59] Speaker 05: Let's start with appendix 48. [00:36:01] Speaker 05: That's where the summary of the invention is. [00:36:03] Speaker 05: I'm going to show you what precedes that statement, which is in column 50. [00:36:07] Speaker 05: I'm going to show that, but I want to give you just a little background. [00:36:10] Speaker 05: In the summary of the invention, it described the object of the invention on column 1, and it started in column 2 at line 10. [00:36:19] Speaker 05: It begins to identify embodiments of the invention. [00:36:22] Speaker 05: The first embodiment is [00:36:24] Speaker 05: a method of sharing a video segment over a computer network, and so on. [00:36:28] Speaker 05: The network includes a receiving computer. [00:36:30] Speaker 05: And then it describes the steps that it performs. [00:36:32] Speaker 05: Then in the rest of the summary of the invention, there are 15 variations on that. [00:36:36] Speaker 05: That is, every single variation in the summary of the invention uses this receiving computer or this host computer. [00:36:43] Speaker 05: And then when we go to the detailed description, which starts in line on column 7, 7 all the way through column 15, that entire [00:36:52] Speaker 05: first seven columns of detailed description is exclusively about doing this invention on the host computer, all steps on the host computer. [00:36:59] Speaker 05: Then we get to column 15 in the sentence that you're on our reference. [00:37:02] Speaker 05: That's at column 15, line 25, appendix 55. [00:37:07] Speaker 05: And what it says is any system, process, or capability that can be carried out on the user's computer in relation to the video share producer software could equally well be carried out on a host computer. [00:37:18] Speaker 05: And what it's saying is it's now going to talk about [00:37:21] Speaker 05: video share software where some of the steps are done on the user computer and some on a server. [00:37:27] Speaker 05: And it's saying that all those things can be done equally well on the receiving computer, the host computer, but it never says you can do everything equally well on the user computer. [00:37:38] Speaker 05: That would be disclaimed. [00:37:39] Speaker 03: So you're saying equally well means better? [00:37:42] Speaker 05: No, what it's saying is that the steps that we identified that are done on the user computer can be done equally well on the receiving computer [00:37:51] Speaker 05: But there were additional benefits from putting it all on the receiving computer. [00:37:55] Speaker 05: And that's what's talked about in columns 1 through 15 of the pattern, right up to this point. [00:38:00] Speaker 05: In particular, it explains in the background of the invention that one of the issues was that there were technological components that were required at the user end and the receiving end, and then in the rest of the serving dimension in the first 15 columns. [00:38:14] Speaker 05: It explains the host computer eliminates those technological components, which is an enormous technological benefit. [00:38:21] Speaker 05: eliminating technological opponents is by definition an improvement in a technological system. [00:38:27] Speaker 05: So as a result, when we get to column 15, what we have is simply the statement that, by the way, now we're going to give you some things that can be done on a user computer. [00:38:35] Speaker 05: But please know, our host computer can do all those things. [00:38:39] Speaker 05: We don't ever see in the specification the opposite. [00:38:43] Speaker 05: It never asserts that we can do everything equally well on the user's computer, never once. [00:38:49] Speaker 05: We won't find anywhere in the pleadings or the specification unless there are any further questions.