[00:00:00] Speaker 03:
2105 everyday MD versus Facebook.

[00:00:06] Speaker 03:
It is an appeal from the District Court in the Central District of California.

[00:00:28] Speaker 03:
All right, Mr. Weier?

[00:00:30] Speaker 02:
Weier, yes.

[00:00:30] Speaker 03:
Weier.

[00:00:31] Speaker 03:
Five minutes for rebuttal.

[00:00:33] Speaker 02:
Yes, please.

[00:00:35] Speaker 02:
Good morning.

[00:00:35] Speaker 02:
May it please the court?

[00:00:37] Speaker 02:
I'd like to start off just by responding to some arguments made by Facebook in their Hilly brief.

[00:00:45] Speaker 02:
In particular, on page 29, where Facebook said, every MD does not assert, for example, that the off-the-shelf technologies recited in the claims are combined in a nonstandard or inventive way

[00:00:57] Speaker 02:
or that the ordered combination otherwise provides some kind of technological advancement.

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And so I'd like to point first to, and this was decided on a motion for judgment on the pleadings, so the record before the court was just the intrinsic record.

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So first I'd like to point to the specification of the two patents themselves.

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They share the same specification.

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And I'd like to start off with page 41 of the appendix.

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which contains the background of invention and summary of invention sections for the 192 patent.

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And under the background of the invention, the specification points out that problems that existed in the internet, that were particular to the internet in November 1999 at the time that this application was filed.

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And those problems included that it was difficult for

[00:01:52] Speaker 02:
people who wanted to communicate.

[00:01:55] Speaker 01:
In this case, it was... You point to figure two of 192 as evidence that the patent teaches a specific structure for the invention.

[00:02:07] Speaker 01:
Figure two shows a home page.

[00:02:10] Speaker 01:
Yes.

[00:02:11] Speaker 01:
Can you point to any language from the claims that limits the invention to that particular structure?

[00:02:17] Speaker 02:
Yes.

[00:02:18] Speaker 02:
And that is in particular where it talks about

[00:02:22] Speaker 01:
Give me a sign.

[00:02:28] Speaker 02:
So claim one of the 192 pattern is set forth in column 14 on appendix 47.

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And in particular, it's in the lines 23 to 29 where it sets forth the structure of the homepages that are allotted by the interface server.

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And there it says, set individual home page comprising information from said database associated with said individual member, a first control for submitting a comment about said individual member, and a second control separate from that first control for sending a message other than that comment to that individual member.

[00:03:11] Speaker 02:
And those are going back to figure two.

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It's actually Figure 9.

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It's not Figure 2.

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And I don't know where Figure 2 was asserted.

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But Figure 9 is the example of the web page that is created under the 192 patent.

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And there, 910 is the information about the member.

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Item 920.

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is actually the second control for sending a message to a member.

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And item 925 is the first control for submitting a comment about a member.

[00:04:02] Speaker 03:
But Facebook argues that all of these individual things existed even in the computer environment before this point in time, including sending a computer message over a telephone line.

[00:04:17] Speaker 03:
So what

[00:04:19] Speaker 03:
about putting these components together makes this a novel and unconventional invention.

[00:04:28] Speaker 02:
I just would like to point out that the sending the message over the telephone, that's the 631 patent.

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It's not cited in the 192 patent.

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And absolutely, all of the individual components that are set forth in the claims

[00:04:47] Speaker 02:
were known in 1999.

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And this is the combination of those elements that, for both inventions, made them both non-conventional and non-obvious.

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And in terms of, just like to point out specifically, an allegation made in the complaint with respect to the 192 patent, because admittedly,

[00:05:16] Speaker 02:
situation is less clear with respect to the 631 patent.

[00:05:22] Speaker 01:
In 1999, the concept of fields existed.

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And one of those fields that exist in 1999 was a field in which an individual could enter data.

[00:05:36] Speaker 01:
Absolutely.

[00:05:39] Speaker 02:
But what did not exist, and this is again, was topic of the

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prosecution history is combining these elements.

[00:05:51] Speaker 02:
OK, there's two aspects.

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The claim talks about creating a set of consistent web pages for members of a group.

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So it's a plurality.

[00:06:00] Speaker 02:
So what it is is for each member of this group, which is part of the claim, the web page that is created has these features, these particular combination features.

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And that combination of features did not exist anywhere else.

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The individual features did.

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Tags obviously existed.

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That's how it was made.

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But putting them together in this form and particularly creating a consistent set of those for a group of members was something that didn't exist.

[00:06:25] Speaker 03:
Well, web pages existed.

[00:06:26] Speaker 03:
Oh, certainly web pages existed.

[00:06:27] Speaker 03:
And so what about the fact that you put addresses or phone numbers or background information regarding the person in a particular order makes this a new and novel invention.

[00:06:44] Speaker 02:
It's not the order of the invention.

[00:06:48] Speaker 02:
It's combining the data.

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Plus, actually, it's the combining of both the first control for posting a comment and the second control for sending a message.

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Combining those things had not been done before because there was no belief that it served any intended purpose.

[00:07:05] Speaker 02:
But in this context, and this was 1999, before there was any social networking and any of that, we were setting this up to make it easier

[00:07:12] Speaker 02:
for people to communicate with and to talk about members of group, in this case, doctors.

[00:07:22] Speaker 02:
And so combining those two components on a web page, both a post-comment control and a send a message control, provided, opened up means of communication that didn't exist before via these web pages.

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And doing it consistently for doing it as a set

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I'm sorry, consistently for all the members of the group, enhance the communications ability with that particular group and between members of the group.

[00:07:49] Speaker 01:
How did that conceptually differ from the special interest group SIG chat rooms that exist in the 1980s in America online?

[00:08:01] Speaker 02:
Conceptually or in particular?

[00:08:03] Speaker 01:
Conceptually.

[00:08:04] Speaker 02:
Well, conceptually, the chat groups, and that was

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Especially for SIG, the people who used those were people who were adept and knowledgeable about the technology.

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They were some experts in that field.

[00:08:24] Speaker 02:
The whole purpose of this invention was to make it possible for people who had no idea about the internet at that time.

[00:08:31] Speaker 01:
There were SIGs for poets and beer drinkers and beer makers.

[00:08:35] Speaker 02:
But just to be able to be online, there were those of those who were technologically savvy.

[00:08:42] Speaker 02:
to be able to do that.

[00:08:43] Speaker 02:
And conceptually, and again, this goes back to idea versus implementation of an idea.

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The implementation used there was different than the implementation used here.

[00:08:58] Speaker 02:
And going back, again, not everybody is trying to figure out where this distinction is between an idea and an implementation of an idea.

[00:09:09] Speaker 02:
For example, in a non-computer context, an idea

[00:09:13] Speaker 02:
I have a method for preventing a chair from tipping over when I lean backwards.

[00:09:17] Speaker 02:
That is an idea.

[00:09:19] Speaker 02:
It's too broad.

[00:09:21] Speaker 02:
It's not patentable.

[00:09:22] Speaker 02:
But then I say a method for preventing a chair from tipping over backwards by attaching two extra legs to the back of the chair.

[00:09:29] Speaker 02:
Now that, all of a sudden, becomes an implementation of an idea.

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It has a specific structure.

[00:09:35] Speaker 02:
It doesn't prevent all ways of preventing a chair from leaning over.

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It's just one particular way.

[00:09:41] Speaker 02:
Same thing here with 192 patent, the district court held, it's just talking about creating web pages for members.

[00:09:48] Speaker 02:
That is definitely its purpose, but it is not claiming all aspects of that.

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It is a particular type of web page that's created for all.

[00:09:57] Speaker 03:
The preemption component is not a substantial one.

[00:10:01] Speaker 03:
And when you're looking at the Mayo and the step two, what you're talking about is that, is it novel, unconventional?

[00:10:08] Speaker 03:
Was it known at the time?

[00:10:11] Speaker 03:
And so what is it about your mechanism for communicating among members by using web pages that wasn't known?

[00:10:20] Speaker 02:
Well, first of all, I don't believe that it's necessary to go step two.

[00:10:27] Speaker 02:
I think that the main argument is that the claim is not just directed to an idea in the abstract.

[00:10:36] Speaker 02:
It's directed to a specific elimination of an idea.

[00:10:38] Speaker 02:
So the non-conventional and

[00:10:42] Speaker 02:
inventiveness doesn't apply if it passes step one.

[00:10:46] Speaker 02:
Under step two, it's the entire combination.

[00:10:49] Speaker 02:
Combining all those elements is new and has provided capabilities that didn't exist before.

[00:10:55] Speaker 02:
And I did want to point out, and this is in the amended complaint itself, in appendix 69, paragraph 15,

[00:11:08] Speaker 02:
The claims of the 192 patent expressly include the limitations that distinguish over the prior art that the Federal Circuit held were missing from the claims of US patent, the 122 patent, which was a grandfather patent under the broadest reasonable interpretation standard applicable during patent officer's examination of the 122 patent.

[00:11:26] Speaker 02:
So here's a specific allegation that the 192 patent includes specifically the limitations that distinguish over the prior art.

[00:11:35] Speaker 02:
And then those, again,

[00:11:37] Speaker 02:
At the time this amendment complaint was filed, we haven't had any recent decisions of this court that sort of clarified what kind of allegations, or including allegations of non-conventional within the complaint.

[00:11:51] Speaker 03:
You're into your rebuttal.

[00:11:52] Speaker 03:
We'll ask them about Burkheimer and what we do about that.

[00:11:55] Speaker 03:
And then you can respond and reply.

[00:11:59] Speaker 03:
Yeah.

[00:12:02] Speaker 03:
Why don't you start there, Ms.

[00:12:03] Speaker 03:
Keepe?

[00:12:03] Speaker 03:
Now you've got Burkheimer to deal with.

[00:12:05] Speaker 00:
I'm happy to deal with it, Your Honor.

[00:12:07] Speaker 00:
I actually think that Berkheimer reiterates the ineligibility of these claims.

[00:12:13] Speaker 00:
As your honors are well aware, in Berkheimer, there are two sets of claims.

[00:12:16] Speaker 00:
There was one set of claims that was found to still be ineligible.

[00:12:20] Speaker 00:
And there was another set of claims that perhaps had eligibility because within the claims themselves, they called out the inventive step.

[00:12:29] Speaker 00:
One was storage and the idea that you weren't storing all this redundant information and the storage of the

[00:12:36] Speaker 00:
non-redundant information allowed the computer to move faster and so improved the technology itself.

[00:12:42] Speaker 00:
Similarly, with the second set of dependent claims, there was something about one-to-one editing, which again improved the computer itself potentially by allowing for this specific type of editing.

[00:12:54] Speaker 00:
Those were in the claims themselves, and what the court found there was because potentially the inventive step was in the claim language, it was then up to the court to figure out whether or not in fact that was conventional.

[00:13:06] Speaker 00:
Nothing like that happens here.

[00:13:08] Speaker 00:
None of the claims.

[00:13:09] Speaker 00:
For one thing, we've actually never understood from appellant what the inventive step is.

[00:13:15] Speaker 00:
We're simply told it's the combination.

[00:13:18] Speaker 00:
When asked by the district court, what is your inventive feature?

[00:13:22] Speaker 00:
What is the inventive bit?

[00:13:24] Speaker 00:
Mr. Weier read the entire claim into the record.

[00:13:26] Speaker 00:
There's never been an identification of something which is inventive.

[00:13:32] Speaker 00:
Instead,

[00:13:33] Speaker 00:
All of the elements are performed on generic computer components.

[00:13:38] Speaker 03:
Didn't he just say that the inventive aspect was the fact that it allows for this interactive communication?

[00:13:47] Speaker 00:
Well, interactive communication is not inventive.

[00:13:49] Speaker 00:
Interactive communication is simply the idea of having the ability to send a letter to someone or the ability to talk on the telephone.

[00:13:56] Speaker 00:
That's a problem that exists in humanity with humans.

[00:13:59] Speaker 00:
It's not a computer-related problem like DDR.

[00:14:02] Speaker 00:
It's not a technological improvement like Enfish or Bascom or anything of that nature.

[00:14:08] Speaker 00:
Instead, we're talking about a standard human problem of wanting to be able to communicate with people potentially in two ways.

[00:14:16] Speaker 00:
And that's nothing different from, for example, appearing at the front desk of a hotel and saying, I'd like to leave a message for Mr. Meade so that he joins me for breakfast at 7 a.m.

[00:14:27] Speaker 00:
That's the first interface.

[00:14:28] Speaker 03:
The receptionist then writes the message down and potentially sends it up to the room and also calls Mr. Mead and leaves a message that says... But if there was communication on the computer and it was done, as Judge Wallach points out, in earlier iterations, and this improves that mechanism for communication, couldn't that fall within our case law?

[00:14:55] Speaker 00:
No, Your Honor, the case law actually specifically calls out improving the technology itself, somehow improving the computer, not simply another way of doing something that was done off of the computer, now onto a computer.

[00:15:10] Speaker 00:
The very notion that I can walk down every single element of the claims using the hotel analogy shows that this is an abstract idea that is then implemented on a computer.

[00:15:20] Speaker 00:
And the specification at issue here, the same specification for both,

[00:15:25] Speaker 00:
especially in column 12 starting at line 21 and extending all the way into column 13 spells out that this is all to be done on a general purpose computer using general available materials and software.

[00:15:40] Speaker 00:
They specifically call out available Sun Microsystem processors, Motorola.

[00:15:46] Speaker 01:
What's the status of the related IPR?

[00:15:49] Speaker 00:
The status of the related IPR?

[00:15:50] Speaker 00:
There are two related IPRs.

[00:15:52] Speaker 00:
And for the first related IPR, the 192 has been instituted and we're into the next process.

[00:16:00] Speaker 00:
And for the 631, the institution decision is due, I think, in two weeks.

[00:16:05] Speaker 00:
So it's right on the heels of that as well.

[00:16:08] Speaker 03:
But I think, Your Honors, that... Can you respond to a point that your friend made near the end about specific allegations in the complaint that he said called out?

[00:16:21] Speaker 03:
a unique difference from the prior art.

[00:16:27] Speaker 00:
So what the complaint actually calls out, Your Honor, is simply the fact that it was allowed.

[00:16:32] Speaker 01:
Where are you in the appendix?

[00:16:34] Speaker 00:
The complaint is paragraph 15, which is in the appendix, I think, at 63, 69.

[00:16:40] Speaker 00:
Sorry, 69, Your Honor.

[00:16:41] Speaker 00:
It's in paragraph 15.

[00:16:44] Speaker 00:
All that paragraph says is the claims included limitations that distinguish over the prior

[00:16:51] Speaker 00:
That's 102 and 103.

[00:16:53] Speaker 00:
102 and 103 are not 101.

[00:16:58] Speaker 00:
So simply saying that my patent was issued because the Federal Circuit found that there were missing elements in another patent and mine now has those missing elements, that just means it's potentially novel or potentially non-obvious.

[00:17:12] Speaker 00:
That does not mean that it is eligible for patentability.

[00:17:16] Speaker 00:
And that's been squarely held by this court in a numerous number of decisions

[00:17:21] Speaker 00:
including the IV versus Symantec case at 838 F3rd 1307, which specifically called out that the 102 and 103 arguments made by the appellant saying over and over how novel his claims were, were in fact irrelevant.

[00:17:36] Speaker 00:
That was the word used by this court.

[00:17:38] Speaker 00:
And so that allegation in the complaint actually has no meaning here and therefore doesn't take it out either in the Atrix case, which most recently came down, or in Berkheimer to say,

[00:17:51] Speaker 00:
Now there's a question of fact and we need to go and deal with it.

[00:17:53] Speaker 00:
Instead, that's just an allegation regarding novelty or obviousness and has no place in this decision.

[00:18:00] Speaker 03:
So you're saying there was no actual allegation made anywhere before the district court that this was not routine or conventional?

[00:18:09] Speaker 00:
That's correct, Your Honor.

[00:18:10] Speaker 00:
And in fact, the specification maintains over and over that these are conventional pieces of equipment used in conventional ways.

[00:18:19] Speaker 00:
distinguishable from Bascom, for example, wherein that ordered combination said, I'm going to stick the filter somewhere else.

[00:18:26] Speaker 00:
That's what makes this combination different from other combinations.

[00:18:30] Speaker 00:
That's not true here.

[00:18:31] Speaker 00:
In fact, the ordering of the steps has only to do with how the information comes in.

[00:18:36] Speaker 00:
For the second patent, the best analogy actually that I could come up with, and you can tell what's happening in my life right now, is for college students and how almost all college students have a chalkboard

[00:18:48] Speaker 00:
and a post-it notepad on their door.

[00:18:51] Speaker 00:
The door is essentially the home page that's recited in the claims.

[00:18:55] Speaker 00:
The front desk of the dormitory has a database, which is just a list of where all of the students live.

[00:19:01] Speaker 00:
For example, Ms.

[00:19:02] Speaker 00:
Keefe lives on the first floor in Freeman Hall at Wellesley.

[00:19:07] Speaker 00:
That's my URL.

[00:19:08] Speaker 00:
That's my address.

[00:19:10] Speaker 00:
And then the home page is the front door of my dorm room, which shows 101.

[00:19:15] Speaker 00:
It shows my roommate, Dina.

[00:19:16] Speaker 00:
It shows my name.

[00:19:17] Speaker 00:
It has the chalkboard for a comment, something everyone else can see.

[00:19:22] Speaker 00:
And it has a piece of paper, the second interface, for writing a note that can be slipped under the door.

[00:19:28] Speaker 00:
That's a message.

[00:19:29] Speaker 03:
And the way that is probably the most detailed analogy I've ever heard in this courtroom, but I get the point.

[00:19:35] Speaker 00:
Thank you.

[00:19:36] Speaker 00:
Well, but Your Honor, I always try very hard to never use an analogy that someone can say you missed an entire element or you missed a step.

[00:19:42] Speaker 00:
And this one actually tracks all the way down if you follow it.

[00:19:44] Speaker 00:
Again, reiterating that this is a human problem simply put onto a computer.

[00:19:51] Speaker 00:
My learner deposing counsel also constantly talks about preemption, but as Your Honor's well known- It's irrelevant.

[00:19:56] Speaker 00:
Come again, Your Honor?

[00:19:57] Speaker 01:
I said it's irrelevant.

[00:19:58] Speaker 00:
Exactly, Your Honor, and I simply wanted to point out that the Ariosa case- Ariosa, yeah.

[00:20:03] Speaker 00:
Thank you, Your Honor.

[00:20:05] Speaker 00:
I believe, Your Honors, that that's actually all I really had because there isn't, unlike almost all of the cases that have come down since November, so since these briefs were filed,

[00:20:14] Speaker 00:
All of those focus on an identified independent element of inventiveness and then looks to see, is it in the claims?

[00:20:24] Speaker 00:
And does it actually distinguish from a human problem that doesn't improve a computer?

[00:20:29] Speaker 00:
That doesn't exist here.

[00:20:30] Speaker 00:
We don't have any identified element.

[00:20:33] Speaker 00:
We simply have the argument over and over that it is this combination.

[00:20:36] Speaker 00:
But in no way does it tell us how.

[00:20:38] Speaker 00:
And similarly, using the two-way media case, we have to be told how in the claim itself, not simply

[00:20:45] Speaker 00:
that someone could figure out how to do it.

[00:20:48] Speaker 00:
Unless your honors have any other questions.

[00:20:51] Speaker 00:
No, thank you.

[00:20:52] Speaker 00:
I very much appreciate your time and interest.

[00:20:58] Speaker 02:
Thank you.

[00:21:01] Speaker 02:
First, I'd like to respond to my learned colleagues' assertion that the improvement that's required is a technological improvement.

[00:21:12] Speaker 02:
I think DDR Holdings

[00:21:14] Speaker 02:
firmly set forth that an improvement in a problem that is unique to the internet is sufficient.

[00:21:21] Speaker 02:
It doesn't have to change the way the computer itself works.

[00:21:24] Speaker 02:
It doesn't have to change the memory.

[00:21:25] Speaker 02:
It doesn't have to change the electrical machinery.

[00:21:28] Speaker 03:
Well, no.

[00:21:29] Speaker 03:
You're missing the point, I think, of Bascom and DDR.

[00:21:33] Speaker 03:
It's not just because you're doing this uniquely on the internet that differentiates you.

[00:21:42] Speaker 03:
The question is,

[00:21:43] Speaker 03:
You've seen that the way the internet works, it doesn't work as well as it could.

[00:21:48] Speaker 03:
And you change something about the technology to allow that communication to occur different.

[00:21:55] Speaker 02:
Well, I think in all respect to DDR holdings, the issue there was the claim was for a particular type of web page that was produced that had the same look and feel as a storefront.

[00:22:07] Speaker 02:
Yeah.

[00:22:08] Speaker 02:
And so the web page was produced with a particular look and feel.

[00:22:11] Speaker 02:
What was being produced is a type of web page.

[00:22:14] Speaker 01:
It was the method of doing it.

[00:22:15] Speaker 02:
Yes, and that's the same thing here.

[00:22:18] Speaker 03:
Allowing you to link over and then to be able to hold both open.

[00:22:23] Speaker 02:
Yes, and it did that by creating a web page that had the same look and feel.

[00:22:26] Speaker 02:
That was what was set for the claims.

[00:22:28] Speaker 01:
It was the technology for doing that.

[00:22:32] Speaker 02:
For keeping them both open on the screen.

[00:22:34] Speaker 02:
That technology was described in the specification.

[00:22:37] Speaker 02:
But it wasn't set forth in the claim, which is, again, what Malaria College talked here.

[00:22:42] Speaker 02:
Also, with respect to the comment that the inventive features are not set forth in the claims, they are, as I read for in the 192 patent, the specific combination of controls on the web page and creating a set of consistent web pages in that manner is expressly set forth in the claims.

[00:23:06] Speaker 02:
The other point was that my colleague said that there was no assertion made to the district court that there was inventiveness in the combination of elements in the claim.

[00:23:23] Speaker 01:
And so... What she said was that... Were you the counsel below?

[00:23:30] Speaker 01:
Yes.

[00:23:31] Speaker 01:
That you simply read the entire claim?

[00:23:35] Speaker 02:
And that was when the judge asked which part of the claim was inventive.

[00:23:40] Speaker 02:
And as I explained, and going through the whole prosecution history of that patent, it is, as is common in patent prosecution, that in order to distinguish the claim with a prior art, you have to keep adding limitations until it does that.

[00:23:55] Speaker 02:
And then once that happens, it's the entire combination that becomes different from the prior art, operates differently.

[00:24:02] Speaker 02:
What the difference in standard is between inventiveness and non-obviousness is I don't understand.

[00:24:09] Speaker 02:
But if something is inventive or something, the non-inventiveness, I think the opposite is conventional and well-known.

[00:24:19] Speaker 02:
Conventional means not that it's obvious.

[00:24:21] Speaker 02:
Conventional means this actually exists.

[00:24:23] Speaker 02:
Whereas obviousness says it doesn't exist, but it would still be obvious if somebody put together.

[00:24:28] Speaker 02:
If it's not obvious, it can't be non-inventive.

[00:24:32] Speaker 02:
Um, not logical.

[00:24:33] Speaker 02:
Say that again?

[00:24:35] Speaker 02:
If something is not obvious, that is, if the combination of elements is not obvious to put together, then that combination of elements must be inventive.

[00:24:46] Speaker 02:
Because otherwise, and it's certainly inventive if it didn't exist before.

[00:24:51] Speaker 02:
And it, so.

[00:24:54] Speaker 02:
Okay.

[00:24:55] Speaker 03:
Thank you.

[00:24:56] Speaker 03:
The cases will be submitted.

[00:24:59] Speaker 03:
This court is adjourned.

[00:25:00] Speaker 03:
All rise.