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cases number sixteen this twenty six seventy-two white pages inc.

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versus isaac's okay mr. badini good morning your honors uh... appellant in this case jeffrey isaac's

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invented a technological bridge that connected.

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What's technological about it?

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I mean, I've actually read some parts of the prosecution history which aren't in the appendix, which include a concession that the technology to do this existed before.

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I don't believe that's the case, Your Honor.

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First of all, what's technological about it is that it's software.

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And ENFISH has recognized that software alone may be invented.

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The background section of the patent does admit that this practice of retrieving a caller name by using their phone numbers, that that's a long-standing business practice.

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In the public switch telephone network world, correct.

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There are two worlds here that

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routinely did not speak to each other.

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The method itself, let's set the panel aside for a minute, but the method itself is a long established business practice.

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The method in the public switched telephone network world of retrieving a caller name from a CNAM database, a caller name database with a phone was an established practice, correct?

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That's the same database we're talking about here, right?

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It is a database, correct.

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It's the same database.

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Well, that's not clear, Your Honor, from the record.

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If Verizon gave... It's a database maintained by a carrier.

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That's correct.

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Under both situations.

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So it's the same database.

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Not clear to me, Your Honor.

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If you purchase call or name ID from Verizon, they give you a phone, they give you access to their proprietary database.

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It's unclear whether each carrier

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gave you access to all of the other databases maintained by the other carriers.

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They were proprietary.

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But that's access.

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The databases are carrier-based.

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They are carrier-based databases, that's correct.

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And the same databases are being accessed here as was accessed in the phone system?

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In the phone system, correct.

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Okay, so in the prosecution history here, Isaacs, the inventor, said the technology for the present invention was generally available no later than 2007.

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but the applicant's commercial implementation of the present invention is the first known viable implementation.

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In other words, that the technology to do this existed, but that the invention is thinking to do it, right?

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I would take a little bit of issue with that statement.

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The technology to access a phone number from the database with one device, if the carrier you had

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offered the service, which was not always the case, that existed.

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What did not exist was the ability to do it independent of device, independent of carrier.

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He says the technology did exist.

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Where in the record does it say the technology to do this didn't exist?

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People may not have chosen to do it, but the technology to do it existed.

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I don't believe that's the case, Your Honor.

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If you're referring to the ability to access multiple... Where does the record support the idea that there's new technology here?

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That's the problem I'm having.

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It seems to me that you conceded that point away in the prosecution history.

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Your Honor, we did not, respectfully.

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I believe the concessions... Show me where this says this is new technology, as opposed to a choice to use existing technology to access databases without going through the phone system.

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In fact, the appellee conceded at moral argument.

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Show me.

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Show me in the record where it says that this is new technology.

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I don't know where it says that in the record, Your Honor.

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How long have you been practicing law?

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Over 30 years, Your Honor.

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I'm probably a little bit older than you then.

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But as a litigator, I used to use something called a Hildonnelly directory, what you refer to as so-called

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reverse lookup directories for which the district court was not, about which the district court was not permitted to speculate.

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I don't know any lawyers who practiced in those days who didn't know about a Hildonnelly because it was standard, a standard tool for litigation.

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So I have a couple of comments on that, Your Honor.

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Go ahead.

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First of all, this was a 12C motion.

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The parties were not permitted to go beyond the pleadings and the patent specification.

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There is absolutely no reference to reverse directories in the pleadings or the specification.

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Second, counsel for Appalese disclaimed any reliance on reverse directories at oral argument below.

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They cited a Wikipedia article and when confronted with the question, can I look at Wikipedia on a 12C motion,

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They disclaimed any reliance on it.

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But beyond that, we looked at the Wikipedia article.

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I'm not talking about Wikipedia.

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I'm talking about standard knowledge of lawyers and judges and judicial notice.

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But the question is not whether some people, like judges or some police departments, which is what the Wikipedia article said, may have had access to these directories.

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The question is, is there evidence that it was a longstanding business practice?

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And with respect to Judge Dyck, I believe you're unfairly reversing the burden.

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They tried.

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There's a presumption.

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I asked you to show me where in the record this involved new technology.

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You tell me you can't show me in the record.

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I think the record is pretty clear this is not new technology.

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What they were electing to do is it's a business practice to access these directories through the internet rather than through the phone system.

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That seems on its face.

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to be an abstract idea.

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Well, I believe the record and the prior art of Franzok, the patent, shows that this was new technology.

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There was an initial rejection.

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You keep saying that.

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Let me see if I can maybe help you here.

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Your brief says that the claims are directed to a technological improvement over existing caller identification systems available at the time of the invention

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through a claimed SS7 interfacing node.

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That's correct.

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So the way I read your blue brief is that the technology, what's new here is this SS7 interfacing node.

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That's correct, Your Honor.

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But nothing in the claim or in the pen that I could find defines that or tells me what that is.

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How does it work?

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Yeah, where is it in there?

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Tell us how the SS7 works.

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Sure, Your Honor.

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First of all, we were asked that question at oral argument below.

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We said it is a bridge that connects these two networks that did not speak to each other.

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How does it work?

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It works with software for sure, as shown in figure four.

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It shows it running on one computer and an interface running on a separate computer.

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And hardware may be used but is not necessarily required.

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Figure two shows hardware.

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Now, that was the argument made.

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How is that different than a black box?

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Respectfully, Your Honor, that is a 112 argument.

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There is no requirement that a software patent lay out the code in order to survive 101.

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I'm not asking you for the code.

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All you're saying is there's this, this, and this, with no explanation of what they are.

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That's no different, Your Honor, than the recent Talis decision, which said there's a sensor here and a sensor here, and you've

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create a code to enable them to do X. That's what this patent does.

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If TALIS survived the 101 challenge... Does the pen disclose an algorithm for using the node?

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And we believe we do.

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In figure three, it discloses the algorithm and walks through the steps.

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Again, that's no less detailed than the recent visual memory case, or the TALIS case, or the BASCOM case, for that matter.

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The court, in relying on this argument that there was a long-standing practice, ignored the benefits of the invention, which did something that was never done before.

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Number one, it was independent of the current... But it didn't invent any new technology.

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That's the problem.

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Pardon me.

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It did not invent any new technology that changed computer functionality.

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This whole notion of this bridge is

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Excel nothing more than an abstract idea if there's no description of technology of unconventional technology that does this.

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Your honor, no one could access these databases before from the internet.

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Your own inventor in the prosecution history said this was not new technology.

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I believe if you read that carefully he's referring to the SS7 dip

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in the PSTN world.

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Correct.

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That's not new technology.

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The bridge is new technology.

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What's the bridge?

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The bridge connects the internet to the public switch telephone.

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Where does the record show that that's new technology?

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The fact that the patent was granted, the fact that he overcame the rejections over prior art, including the Franszak rejection.

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There was one patent, Franszak, which made a connection.

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The fact that the patent was granted shows that it was new technology?

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There was an argument, Your Honor, that this was old technology because Franszak had made a connection between these two worlds.

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Franszak was distinguished successfully by the inventor saying, that's not real time, and it's limited to the carrier.

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And it's limited to the device.

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This is not limited to the carrier or the device.

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Well, Counsel, when you say you talk about the bridge, and I think we can all understand that, how a bridge from different aspects of software would work.

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But here, there's just no support for that.

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There's no algorithm that shows how the bridge works.

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There's no structure that underlines the bridge.

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And once you start getting away from that, once you start, there's no structure.

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There's no algorithm.

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There's no, no indication as to how the desired goal is, is achieved.

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The steps, the application steps.

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Once you don't have that, all you're left with is a bridge and that's abstract.

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And that's the problem that you have under section 101.

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It's the claims are directed to an abstract idea.

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I would say, Your Honor, even if we were to concede, which we don't, that all of the steps were generic and known, we believe that we would satisfy ALICE-2.

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They're put together in an unconventional manner.

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Conventionally, all of the CNAM queries took place in the PSTN network.

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In our invention, they take place in the IP network.

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There's a bridge to the PSTN, and then there's a bridge back.

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Conventionally, you could not communicate or access the CNM databases from the IP network.

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This invention enables that.

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You could not access them because the carriers didn't give you permission to access them, right?

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I suppose so, yes.

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Or the carriers didn't even have that functionality available, as the examiner said, in allowing the claim.

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And to further the point, I mean, you're not claiming the database itself.

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That's correct, we're not.

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That's outside of the invention, so that's correct.

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If I may, I'd like to reserve the rest of my time for a bottle.

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Thank you, Mr. Bedini.

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Mr. Combe?

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May I please the Court?

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As I believe the Court has identified, the SS7 query that is at issue here is really just a long-standing business practice and

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What do you understand the bridge to be?

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Your honor, that's a great question.

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I don't think, I don't know what the bridge is.

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So if I scoured the record, I scoured the patent for the SS7 interfacing out.

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And as the district court found, the only disclosure of what that could be is about that device, whatever it is that performs the longstanding business practice of conducting the GTT translation and the CNAM query.

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Other than that, there's no disclosure whatsoever of how these two networks are bridged.

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The only disclosure, other than the long-standing business practice, is the use of a web application.

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And it's very generic, there's no details, it just says there's a user interface that you can insert your phone number and that then somehow transmits it magically over to the PSTN network and then results are delivered back.

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But there is no disclosure anywhere that I can find

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that discusses what this bridge actually is.

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And with respect to counsel's argument that it is some generic hardware software, I don't think that satisfies the 101 requirements.

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The cases that he relies on all found that the patent disclosed a technological improvement to something.

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Merely saying you could use generic hardware and generic software.

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What is the SS7

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interfacing node is point-sheet to an industry standard, which I believe may be the case.

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Point-sheet to an industry standard.

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Then can't the argument be made that the claim has embracers directed to the algorithm that supports that industry standard?

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Well, first of all, there is no disclosure of that algorithm in the patent.

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No, but if it's an industry standard,

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Well, so make sure I understand this correctly.

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You're saying the SS7 node is an industry standard algorithm that's not disclosing the patent?

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It's an industry standard for connecting with carrier-based databases.

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Well, in that case, I think it's still just the notion of taking the internet and applying it to a longstanding business practice.

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If the SS7 node, as you're suggesting, is the industry standard to connect those two networks,

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then that's not a technological improvement either.

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I mean, that is something that is just enabling the internet to talk to these networks.

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It's not anything that was invented by GreenFlight.

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And it certainly is not anything that's going to provide a technological improvement besides the sheer notion of just being able to access the PSTN network over the internet.

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I want to ask you about the longstanding, the question I asked your opposing counsel about Bill Donnelly.

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Um, because he says, well, and the record shows there was a Wikipedia reference, but, um, I don't know.

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I mean, this goes back to the eighties, which I suppose is long standing enough, uh, depends, you know, um, uh, but I don't know any lawyers when, when, when I practiced from say 77 to 95.

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Everybody used to hill Donnelly.

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It was just known in the industry.

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Your Honor, I think your response to counsel, I think, was spot on.

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We did just point to a Wikipedia page, and we said that we weren't relying on it.

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We were doing it for informational purposes.

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But we did not waive general knowledge, as you point out.

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And I think that is fairly considered by the Court, and its general knowledge is well known.

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So that is, in and of itself, a very long business practice.

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But also, the business practice is that which was done by caller ID.

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And the caller ID system, and there's no questions, it's described in the background of invention, is itself a long-standing business practice.

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No, no.

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I can remember when they developed caller ID.

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So that's not long-standing.

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Both of them, though, are very long-standing and very commonplace, as the patent itself describes.

[00:17:07] Speaker 01:
OK.

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Anything further?

[00:17:09] Speaker 00:
If, Your Honors, I have no further questions, I'll end my time.

[00:17:12] Speaker 00:
Thank you, Mr. Cohn.

[00:17:15] Speaker 01:
Mr. Bedini?

[00:17:16] Speaker 02:
Your Honor, just a couple of points.

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First, on the requirement for detailed code or algorithm, there are a series of cases by this court that make clear that that is not required.

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The Bascom case did not disclose an algorithm, source code, or any technical detail as to how that filtering would be done.

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That was affirmed on 101.

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The claim in Andox recited, quote, a computer code, close quote.

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Did not say what the code was.

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And it was only after claim construction that the court found that there was some distributed architecture that would be required.

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DDR holdings.

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No detail whatsoever as to how the computer is programmed.

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Enfish.

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Enfish had no algorithm at all.

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One was supplied after a claim construction hearing, but not in the

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I think our case law is pretty well established that you don't need to have an algorithm in order for claims to be not directed to an abstract idea.

[00:18:22] Speaker 04:
So we got that.

[00:18:25] Speaker 02:
Thank you, Your Honor.

[00:18:26] Speaker 02:
And I would like to go back to the Hill-Rom directories.

[00:18:32] Speaker 02:
I'm sorry?

[00:18:33] Speaker 02:
Hill what?

[00:18:33] Speaker 02:
I'm sorry, did you call them Hill-Rom?

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Hill-Donnelly.

[00:18:38] Speaker 01:
Excuse me, Your Honor.

[00:18:40] Speaker 02:
There is discussion of

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limitations of phone books or what they had on the internet, the static phone books.

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And those same limitations apply to the paper phone books.

[00:18:54] Speaker 02:
Number one, they were not updated in real time.

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They're static.

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Whereas the CNM databases, if you drop off as a subscriber, the phone company would take you off the CNM database.

[00:19:07] Speaker 02:
Well, you didn't invent the database.

[00:19:09] Speaker 02:
Right.

[00:19:09] Speaker 02:
What's your point?

[00:19:10] Speaker 02:
The point is, of course we didn't invent the database, but we invented the access.

[00:19:15] Speaker 02:
You don't update the database either, do you?

[00:19:18] Speaker 02:
Did we update it?

[00:19:18] Speaker 02:
No, Your Honor.

[00:19:22] Speaker 02:
Our invention allows access to the most up-to-date source for caller ID.

[00:19:27] Speaker 02:
That's the point.

[00:19:28] Speaker 03:
So if I'm a lawyer and I want to go down to the county law library and look at the newest Hildonnelly, how is that different?

[00:19:36] Speaker 02:
Well, and another thing is they didn't have cell phone numbers, and there's no dispute they didn't have cell phone numbers.

[00:19:41] Speaker 02:
Counsel, they didn't have cell phone.

[00:19:43] Speaker 02:
Correct.

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So the point is, if this invention, which bridges two networks and the benefits are undisputed, didn't cause the subscriber, the user anything, you get real-time access, you're not dependent on a subscription, you can use whatever device, if this is abstract,

[00:20:04] Speaker 02:
I don't see how any software pack would know.

[00:20:05] Speaker 01:
So the invention is accessing these databases for free?

[00:20:09] Speaker 01:
No, but that's one of the benefits, Your Honor, of the invention.

[00:20:14] Speaker 01:
Okay.

[00:20:14] Speaker 01:
Thank you, Mr... Thank you.

[00:20:16] Speaker 01:
Mr. Bedini, sorry.