[00:00:00] Speaker 04:
We've got Tom versus Emma.

[00:00:39] Speaker 03:
Good morning, Your Honors.

[00:00:42] Speaker 03:
May it please the Court?

[00:00:45] Speaker 03:
Last week, when reading over the Supreme Court's opinion in Mayo, two words jumped out at me.

[00:00:54] Speaker 03:
Those two words were in context.

[00:00:57] Speaker 03:
The Supreme Court used these words in discussing the previous decision in Diamond v. Deer.

[00:01:04] Speaker 03:
Specifically, the Supreme Court said, and this is on page 12 of the slip opinion in

[00:01:10] Speaker 03:
it, namely the Supreme Court in Deer, nowhere suggested that all these steps, or at least the combination of these steps, were, in context, obvious, already in use, or purely conventional.

[00:01:25] Speaker 03:
The reason these words jumped out at me is because all of a sudden, step two of Alice seemed to make more sense to me.

[00:01:33] Speaker 03:
Step two of Alice, now I know why it was still understood, the question was not, are the steps set forth in the claim

[00:01:41] Speaker 03:
merely conventional in some context, but are those steps conventional?

[00:01:47] Speaker 02:
Are you conceding step one?

[00:01:50] Speaker 03:
Am I conceding step one?

[00:01:52] Speaker 03:
Yes.

[00:01:53] Speaker 03:
No.

[00:01:55] Speaker 03:
But I'll explain how it ties in.

[00:01:57] Speaker 02:
It's odd.

[00:01:58] Speaker 02:
You're starting with step two.

[00:01:59] Speaker 03:
Because this helped my understanding.

[00:02:01] Speaker 03:
To tell you the truth, Your Honor, I never understood the difference between step one and step two because the overall question is, does the claim

[00:02:08] Speaker 03:
Is it directed to a claim in the abstract, or I'm sorry, an idea in the abstract, or an implementation of the claim?

[00:02:15] Speaker 03:
And it seems to me step two is sort of a double check to make sure that the claim is directed to an implementation and not just the idea.

[00:02:23] Speaker 03:
And this in-context part helped me understand it because the question would be, if you find that there's an idea in step one that the claims are directed to under step two,

[00:02:36] Speaker 03:
is that, are the steps in the claim conventional in the context of implementing that idea?

[00:02:44] Speaker 03:
Or in our case, it is specifically implementing that idea on a computer.

[00:02:49] Speaker 03:
And this goes back to the concerns raised about claiming an idea on a computer, that you're not just saying, take this idea and implement it on a computer.

[00:03:00] Speaker 03:
It's just saying, like, claim this idea.

[00:03:02] Speaker 03:
So the question is, when implementing that idea,

[00:03:06] Speaker 03:
on the computer, in that context, are the steps set forth in the claim merely conventional.

[00:03:12] Speaker 03:
And here, that is something that the court did not look at.

[00:03:20] Speaker 03:
In our brief, we already talked about that.

[00:03:22] Speaker 03:
And I'll go back to the step one.

[00:03:26] Speaker 03:
The court merely looked at each of the steps in step two and said, each of these steps is just a conventional step, using computer programming somewhere.

[00:03:35] Speaker 03:
But the court did not look at the question, are these the steps that would be conventional in the context of taking this idea and implementing it on the computer?

[00:03:47] Speaker 03:
So it's just an additional reason why the court's step two analysis is incomplete and wrong.

[00:03:57] Speaker 02:
Well, the claim describes a method.

[00:03:59] Speaker 02:
And it seems to me that it goes on and simply says, implement this on a computer.

[00:04:04] Speaker 02:
What kind of computer are you claiming here?

[00:04:09] Speaker 03:
Your Honor, respectfully, the issue is not... Let's say what the idea is.

[00:04:15] Speaker 03:
The idea the court identified in step one is... Now let's stay with step two.

[00:04:20] Speaker 02:
You started with that.

[00:04:21] Speaker 02:
How are you implementing this method under step two?

[00:04:25] Speaker 03:
Implementing it in an unconventional way.

[00:04:27] Speaker 03:
In a way that is unconventional... You're using a computer.

[00:04:30] Speaker 02:
I'm sorry?

[00:04:30] Speaker 02:
You're using a computer to implement it.

[00:04:33] Speaker 03:
But the steps that are taken by that computer are unconventional in the context of implementing the idea.

[00:04:39] Speaker 02:
The computer itself is not special.

[00:04:40] Speaker 02:
It's generic.

[00:04:41] Speaker 02:
It's just a regular computer.

[00:04:43] Speaker 02:
Of course it is.

[00:04:44] Speaker 03:
As Your Honor pointed out, the invention is not a different computer.

[00:04:51] Speaker 03:
It's not a different network.

[00:04:52] Speaker 02:
You're not claiming the computer.

[00:04:54] Speaker 03:
Absolutely not.

[00:04:56] Speaker 03:
No, the invention, it is, in a sense, a way of using computers

[00:05:01] Speaker 03:
It's a process patent.

[00:05:04] Speaker 02:
You're not arguing an improvement over the generic computer.

[00:05:09] Speaker 03:
No, not at all.

[00:05:11] Speaker 03:
As a matter of fact, the computer is only one of the pieces of hardware that are used in the claims.

[00:05:23] Speaker 03:
I mean, it's also involved in the network and communications received on the computer.

[00:05:26] Speaker 03:
It's implementing the method, but it's not

[00:05:30] Speaker 03:
The claim is not on making the computer run any faster or quicker or anything like that.

[00:05:34] Speaker 03:
It's a method of improving.

[00:05:41] Speaker 03:
For this invention, it was a method of providing communications using a computer.

[00:05:47] Speaker 02:
You argue that the improvement here is that it draws more viewers to your website.

[00:05:54] Speaker 02:
That's the improvement that you're claiming.

[00:05:56] Speaker 03:
That is the purpose that the claim is directed to.

[00:06:00] Speaker 03:
That is what it is seeking to achieve.

[00:06:05] Speaker 03:
Whether it's an improvement, but the way that it does that is unconventional.

[00:06:09] Speaker 03:
The steps implemented by the computer are implemented in an unconventional way.

[00:06:17] Speaker 03:
It's not the way that one of skill and the art would implement the idea of enabling communications between persons through an intermediary without revealing the home address, which is

[00:06:29] Speaker 03:
the idea that the court found under step one that the claims were directed to.

[00:06:35] Speaker 03:
And I think that going back to this issue of whether a claim has to improve the operation of a hardware in a computer-related

[00:06:56] Speaker 03:
And I think that that's something that defendants have always raised.

[00:07:00] Speaker 03:
But if that was the case, then an Alice's Supreme Court would simply have said software patents are not valid.

[00:07:11] Speaker 03:
Anything that uses a computer, the only kind of computer-related software patents that are valid are those that change the operation of the hardware themselves.

[00:07:20] Speaker 03:
And that was never the case.

[00:07:23] Speaker 03:
It's similar that process patents in other cases

[00:07:25] Speaker 03:
don't improve the operation of the machine that is doing the processing.

[00:07:29] Speaker 03:
I think in the cases we talked about before here, from what I understood, the medicine cases or the pharmaceutical cases, there's no improvement in any machinery there either.

[00:07:39] Speaker 03:
All of these cases use existing machinery in a new way to produce a new result.

[00:07:44] Speaker 03:
And that's in our context.

[00:07:46] Speaker 03:
We are using computers in a new way to produce a benefit.

[00:07:50] Speaker 03:
And that benefit, in our case,

[00:07:52] Speaker 01:
We've had a million cases like this post-ALICE and every one of them has been found ineligible.

[00:08:00] Speaker 01:
Name me one information flow case, which is what this is, that has been found eligible using a computer to pass information or parse data or send data from one person to another.

[00:08:12] Speaker 01:
Tell me one of them has been found eligible.

[00:08:15] Speaker 01:
I can probably name about 20 that have been found ineligible that are awfully similar.

[00:08:20] Speaker 03:
Well, OK, again, passing information, DDR Holdings.

[00:08:24] Speaker 01:
Because it specifically said that it was improving the computer.

[00:08:30] Speaker 01:
Oh, no.

[00:08:30] Speaker 03:
And I've set forth the claim in DDR Holdings in our brief.

[00:08:34] Speaker 03:
What, in DDR Holdings, it wasn't improving the computer.

[00:08:37] Speaker 03:
The benefit that it was conferring, or the problem that it was addressing, was retaining website visitors.

[00:08:43] Speaker 03:
That's specifically the quote it set forth in the brief.

[00:08:48] Speaker 03:
There was no improvement in the operation of the computer.

[00:08:53] Speaker 03:
What it simply did is it made a website look like it came from somewhere else.

[00:08:56] Speaker 03:
That is, in essence, transferring data to make it look like something.

[00:09:00] Speaker 03:
But it made it look like you were still in the, I think it was the merchant's website when, in fact, you were not.

[00:09:06] Speaker 03:
And therefore, it gave the impression, when you wanted to come back to that, that it helped promote visitors there because you kept being sent back to a place that you thought was one thing, but it was something else.

[00:09:19] Speaker 03:
transferring data from one web page to another.

[00:09:21] Speaker 03:
It had nothing to do with the operation of the internal operation of the computer.

[00:09:25] Speaker 03:
It didn't improve memory in any way.

[00:09:28] Speaker 03:
It was pure information flow, in that case, information from one website to another, or from memory to another web page, which was then broadcast out by the computer.

[00:09:38] Speaker 03:
And, Your Honor, you're actually right.

[00:09:39] Speaker 03:
I was looking for that as well.

[00:09:41] Speaker 02:
The other thing I was looking at is... How is that... How do you find a similar type benefit?

[00:09:48] Speaker 02:
You said that the benefit of this method is to attract... To retain website visitors.

[00:09:54] Speaker 03:
Okay.

[00:09:55] Speaker 03:
Or increase traffic to the website.

[00:09:56] Speaker 02:
So where in the claims does it say that?

[00:09:59] Speaker 03:
Okay.

[00:09:59] Speaker 03:
Now that's another thing.

[00:10:00] Speaker 03:
It's not that the claims have to say that.

[00:10:02] Speaker 03:
The claim is in DDR.

[00:10:03] Speaker 02:
The claims have to be directed to something other than... Right.

[00:10:07] Speaker 02:
The claims... I'm sorry.

[00:10:08] Speaker 02:
Where in the claims?

[00:10:08] Speaker 02:
Have you claimed that?

[00:10:10] Speaker 02:
Have you shown that this method is intended to attract

[00:10:16] Speaker 02:
viewers to the website?

[00:10:17] Speaker 03:
Yes, that is set forth explicitly in the specification.

[00:10:21] Speaker 02:
Where in the claims is this?

[00:10:24] Speaker 03:
It's not in the claims, but in the specification, it talks about the method.

[00:10:29] Speaker 03:
And then it says the purpose of this method is to retain website visitors.

[00:10:33] Speaker 03:
The question in DDR Holdings was the same thing.

[00:10:35] Speaker 03:
If you look at the claim in DDR Holdings, it doesn't say anywhere in the claim that this is retaining website visitors.

[00:10:42] Speaker 03:
It just talks about putting out a website which has a look and feel of another website.

[00:10:46] Speaker 03:
And there, it didn't even say it in the spec.

[00:10:49] Speaker 02:
In DVR, the claims are directed to building, to creating a new type of web page.

[00:10:59] Speaker 03:
Well, they were creating a web page.

[00:11:02] Speaker 03:
Okay.

[00:11:03] Speaker 02:
But it didn't say that the benefit... In the new claims, there's no creation.

[00:11:08] Speaker 02:
There's nothing that's being built, other than the use of an intermediary.

[00:11:11] Speaker 02:
to pass messages back and forth.

[00:11:13] Speaker 03:
I disagree, Your Honor.

[00:11:14] Speaker 03:
What is being created is a different message.

[00:11:16] Speaker 03:
If you look at the claims, it specifically says that it's creating a modified email message.

[00:11:21] Speaker 03:
A modified email message is just like a modified web page.

[00:11:24] Speaker 03:
It is changing the content of that email message to add an address that has the server's name in it.

[00:11:31] Speaker 03:
That's what it's doing.

[00:11:33] Speaker 03:
It's creating that new kind of email message that didn't exist before.

[00:11:36] Speaker 03:
That's not the message that comes in.

[00:11:38] Speaker 03:
It's changing that.

[00:11:39] Speaker 03:
Just like in DDR holdings,

[00:11:41] Speaker 03:
There's a web page, and then when it's sent onto the screen of the user, information in that web page is changed.

[00:11:48] Speaker 03:
That same thing is happening here.

[00:11:49] Speaker 03:
And here, this benefit of that it's done to promote repeat visits to the service website, that language was put in when I wrote this claim in 1999.

[00:11:58] Speaker 03:
It's not a reaction to DDR holdings are trying to come back and say, oh, OK, actually our real intent was to do this.

[00:12:05] Speaker 03:
This is what happened at that time, and that's why we were doing it.

[00:12:09] Speaker 03:
And I've gone way over my.

[00:12:11] Speaker 04:
OK, well, we'll save the remainder.

[00:12:13] Speaker 03:
OK, thank you.

[00:12:19] Speaker 00:
Good morning, Your Honors.

[00:12:20] Speaker 00:
Heidi Keefe for Appellee.

[00:12:22] Speaker 00:
I think Your Honors have asked exactly the right question.

[00:12:25] Speaker 00:
Where is this in the claim itself?

[00:12:27] Speaker 00:
It's actually nowhere in the claim.

[00:12:29] Speaker 00:
The benefit is nowhere in the claim, nor is any recitation of the website that is to be promoted or visitors to that website.

[00:12:37] Speaker 00:
In fact, in the appendix at page 142,

[00:12:41] Speaker 00:
during the hearing down below in front of the district court, the district court specifically asked whether or not it was in the claim.

[00:12:48] Speaker 00:
Appendix 142, which is page 7 of the transcript, starting at line 16.

[00:12:55] Speaker 00:
OK, can I ask then, where in the claims describing the 461 patent does it state that the purpose of the claim is to do what you just described, the repeat visitors?

[00:13:05] Speaker 00:
When I'm reading it, it struck me the purpose was to allow this communication between doctor and whoever.

[00:13:10] Speaker 00:
You are saying that the real purpose is just so that everybody sees EveryMD.com over and over and over again, and that would form, from an advertising perspective, cause someone to want to go to that website.

[00:13:23] Speaker 00:
Continue on to appendix 143, Mr. Weier answers.

[00:13:26] Speaker 00:
Exactly.

[00:13:27] Speaker 00:
Now in terms of saying in the claim, it doesn't say it in the claim.

[00:13:31] Speaker 00:
And so we have a case very analogous to the Berkheimer decision where the supposed benefit

[00:13:38] Speaker 00:
of the claim is nowhere in the claim itself.

[00:13:40] Speaker 00:
And that was what was used in order to invalidate the independent claim.

[00:13:45] Speaker 00:
The only reason that a question was raised with respect to the dependent claims was that the inventive feature of lack of redundancy was specifically recited in dependent claim four, which does not exist here at all.

[00:13:58] Speaker 00:
In terms of DDR, I think also DDR doesn't apply here.

[00:14:01] Speaker 00:
DDR was solving a problem unique to the internet

[00:14:06] Speaker 00:
going from one website by a visitor to a separate website, analogous to someone walking into Home Depot, and if you touched a Black & Decker saw, you'd be transported to a Black & Decker store, which doesn't happen in real life.

[00:14:19] Speaker 00:
The court in DDR said because it was an internet-specific problem with a specific solution, which the claims themselves called out, they talked about the visitor, they talked about maintaining the look and feel so that the visitor felt like they were on the same site.

[00:14:33] Speaker 00:
Nothing like that exists here.

[00:14:36] Speaker 00:
It's not like DDR.

[00:14:37] Speaker 00:
In fact, if anything, it's just like the secured mail case where mail was brought into a mail server.

[00:14:45] Speaker 00:
The mail was read.

[00:14:47] Speaker 00:
Rules were applied to the mail to see whether or not the address needed to be changed.

[00:14:52] Speaker 00:
If the rule was met, an address was changed to a distribution list, you had a new address, and you facilitated the communications that way.

[00:14:59] Speaker 00:
And finally, using the BSG case, very recently from your honors,

[00:15:05] Speaker 00:
In step two, we have to take out the idea, the abstraction of either intermediate communication or, even as Mr. Weier suggests, that it would be somehow this branding.

[00:15:17] Speaker 00:
You have to take that out and look to whether or not there's anything else in the claim that makes it inventive.

[00:15:22] Speaker 00:
But here, email and generic computers are all that are left.

[00:15:28] Speaker 04:
making an argument that that's not the standard.

[00:15:30] Speaker 04:
And as you know, he began with the words in context in the Mayo case to suggest that when you evaluate the inventive concept under step two, you do include a consideration of the context in which we find it, which includes the abstract idea.

[00:15:48] Speaker 00:
Well, and here, Your Honor, the context in which we would find it still has to be in the claim itself.

[00:15:53] Speaker 00:
And the claim simply talks about email,

[00:15:56] Speaker 00:
on a computer.

[00:15:56] Speaker 00:
And when we look to the specification, the only thing we learn is that email is old, and that's in the appendix at 38, column 1, lines 40 through 45, and that we're applying simply a generic computer, which is in the appendix at 39, column 3, lines 58 through 62, 43, column 12, lines 38 through 36, and appendix 44, column 14, lines 12 through 15.

[00:16:25] Speaker 00:
I think what he was trying to say is that you have to now insist on some other context about advertising or branding simply because of one line in the specification.

[00:16:34] Speaker 00:
But that doesn't exist in the claim and so isn't a context into which you draw this.

[00:16:39] Speaker 00:
The generic computer is still all that's being used.

[00:16:42] Speaker 00:
There's nothing inventive here, Your Honor.

[00:16:45] Speaker 00:
Unless you have any further questions?

[00:16:46] Speaker 00:
Thank you.

[00:16:47] Speaker 00:
I appreciate Your Honor's time.

[00:16:48] Speaker 00:
Thank you very much.

[00:16:55] Speaker 03:
Just quickly, I think again I want to respond to actually another issue that came up and that was the differences between the claims.

[00:17:11] Speaker 03:
And that the claims have different breadth and the court below only looked at claim one and said all the other claims are the same in essence.

[00:17:22] Speaker 03:
And specifically now, and

[00:17:25] Speaker 03:
in context of implementing the idea on a computer, there are steps... You didn't bring up this argument in your first opening.

[00:17:37] Speaker 02:
It may be unfair for you to address it now.

[00:17:39] Speaker 02:
Oh, okay.

[00:17:42] Speaker 03:
Good point taking.

[00:17:44] Speaker 03:
Then I actually... Thank you.

[00:17:46] Speaker 03:
Unless you have any further questions, I'll just stand on... Thank you.

[00:17:49] Speaker 04:
We thank both sides.

[00:17:50] Speaker 04:
The case is submitted.

[00:17:51] Speaker 04:
That concludes our proceedings.