[00:00:04] Speaker 03:
We have four cases on our calendar this morning.

[00:00:13] Speaker 03:
Well, three patent cases, two from district courts, one from the PTAB, which will not be argued, and then a veteran's case.

[00:00:24] Speaker 03:
First case is a patent case, Icahn Health and Fitness versus Polar.

[00:00:31] Speaker 03:
Electro, 2017, 1886.

[00:00:32] Speaker 03:
Mr. Hottinger.

[00:00:38] Speaker 01:
Good morning, Your Honors.

[00:00:52] Speaker 01:
May it please the Court, the 271 patent has been through two re-examination proceedings.

[00:00:59] Speaker 01:
When the Patent Office allowed claims to issue from those re-examination proceedings, it found that the inventive concept found in the 271 patent was the provision of options.

[00:01:11] Speaker 01:
These options are provided to specific users based on an evaluation of multiple users' data.

[00:01:19] Speaker 04:
When you say the inventive concept, they weren't considering 101, though, were they?

[00:01:22] Speaker 01:
They weren't considering 101.

[00:01:24] Speaker 01:
They were considering 102 and 103.

[00:01:27] Speaker 01:
But it does reflect the important part of the claims, the inventive concept that was found in the claims.

[00:01:34] Speaker 04:
But what they said was it was a concept that wasn't anywhere present in the prior art.

[00:01:39] Speaker 04:
That doesn't necessarily mean it's an inventive concept, other than the meaning of 101, does it?

[00:01:47] Speaker 01:
Well, under the court's recent holding in Berkheimer, even if something's not disclosed in the prior art,

[00:01:56] Speaker 01:
Um, doesn't mean that it's not necessarily well understood, routine or conventional.

[00:02:01] Speaker 02:
So when the district court... Right, but there are two different kinds of, um, possible distinctions, it seems to me, at least two, between inventive concept in 101 world and whatever is in, um, 102, 103.

[00:02:17] Speaker 02:
One is the level of, um, of

[00:02:21] Speaker 02:
public recognition of it so that something can, and that's the point that was made in either Burkheim or her atrix, I'm not sure which one, maybe both.

[00:02:31] Speaker 02:
But there's a different notion which is that it might not be, even though it's innovative to use a non-statutory word, I guess like inventive actually, it might not be the right kind of innovation.

[00:02:46] Speaker 02:
So the fact, excuse me, the fact that

[00:02:50] Speaker 02:
something is in or not described in prior art may yet not make it, may ultimately be immaterial to whether it is the kind of inventive concept that counts, which is on the right side of the line separating the abstract, the law of nature, et cetera, from whatever it is that 101 covers.

[00:03:16] Speaker 02:
Why is this idea of providing options

[00:03:20] Speaker 02:
simply not the right kind of thing to constitute an inventive concept, even if it was in fact written into a thousand pieces of prior art on the wall of everybody in the industry.

[00:03:34] Speaker 01:
Well, this particular concept was a problem that existed in the prior art systems and the 271 patent through the use of the

[00:03:48] Speaker 01:
the options came up with an inventive combination of elements to provide those options and the reason I mentioned the These are just informational elements Well, it's it's an improvement in the in the technology the combination of the bio options for me that you're focusing on so the options can be anything that would

[00:04:14] Speaker 01:
assist a user to accomplish a goal or a performance that's been set under the system and the methods of the 271 patent.

[00:04:24] Speaker 04:
So you say anything?

[00:04:25] Speaker 04:
I mean, this is the problem.

[00:04:27] Speaker 01:
Well, it can be anything that's related to physical characteristic data.

[00:04:32] Speaker 03:
That's the point, data.

[00:04:33] Speaker 03:
It's passing data back and forth, and that's abstract.

[00:04:38] Speaker 01:
Well, it's doing more than passing

[00:04:40] Speaker 01:
data back and forth.

[00:04:42] Speaker 01:
It's a new way of managing the data, collecting the data, and managing the data so that these options can be provided at the end of the day.

[00:04:52] Speaker 01:
It's through the use of the associative databases.

[00:04:55] Speaker 04:
How does the option work?

[00:04:57] Speaker 04:
Give me an explanation of how it works in a way that's separate apart from just the transmission of data.

[00:05:04] Speaker 01:
So once the

[00:05:07] Speaker 01:
Granular level data is received at the associative databases from the sensors.

[00:05:11] Speaker 01:
It's then put through three separate associative databases.

[00:05:16] Speaker 01:
One is a sensor database.

[00:05:18] Speaker 01:
There, when the information arrives at that database, it's specifically correlated with a sensor.

[00:05:27] Speaker 01:
That sensor is given a unique identifier.

[00:05:30] Speaker 01:
The sensor is then described.

[00:05:32] Speaker 01:
And the type of data that's coming from that sensor is also described.

[00:05:36] Speaker 04:
So what's the output?

[00:05:37] Speaker 04:
Give me an output on the option.

[00:05:39] Speaker 01:
The output is you are, an example would be you're in 10th place in this competitive race amongst your peers.

[00:05:48] Speaker 01:
If you do, if you run faster or you lengthen your stride, then you can move from 10th place to say 5th place.

[00:05:57] Speaker 04:
What's the deficiency that you claim that the patent was addressing in the prior art

[00:06:02] Speaker 01:
So that's found in Appendix 30.

[00:06:05] Speaker 01:
It's column one of the patent lines 30 through 44.

[00:06:08] Speaker 01:
And that talks about the prior art systems were only capable of gathering information from one user and providing information to one user.

[00:06:20] Speaker 01:
And the specification of the patent says that there was no way prior to the 271 patent to gather objective measurements from multiple individuals

[00:06:33] Speaker 01:
compare that, and then provide a specific option to a user in the system.

[00:06:41] Speaker 03:
Your problem is this patent is almost 20 years old in terms of application date, and the law changed.

[00:06:53] Speaker 03:
We're now dealing with Supreme Court precedent that finds that abstract ideas

[00:07:03] Speaker 03:
are not patent eligible, even when you add computers and sensors and other well-known physical objects for dealing with them.

[00:07:15] Speaker 01:
Well, at the time of the application of the patent, using an associative database in this context, fitness tracking context, certainly was not well-known or conventional at the time.

[00:07:29] Speaker 01:
Is the word fitness in the patent

[00:07:32] Speaker 01:
The word fitness is not in the patent, but physical characteristic data is throughout the patent.

[00:07:38] Speaker 01:
And it talks about sensors that are commonly associated with exercise, such as heart rates.

[00:07:44] Speaker 04:
But it doesn't even say sensors that are commonly associated with exercise.

[00:07:48] Speaker 04:
It says sensors.

[00:07:50] Speaker 04:
And then it talks about using those sensors in the context of sensing whether or not your audience is bored or sensing whether or not your audience is paying attention or sitting up straight.

[00:08:00] Speaker 04:
It doesn't say anything about exercise.

[00:08:02] Speaker 01:
It does talk about characteristics that are associated with exercise, like overexertion.

[00:08:09] Speaker 01:
But not in those words.

[00:08:10] Speaker 01:
No, not in those words.

[00:08:11] Speaker 01:
But the patent was understood by those of ordinary skill in the art, and certainly the patent office is one that arises in the fitness industry.

[00:08:20] Speaker 01:
In the re-examination proceedings, the prior art references that were used and traversed by Iconber all fitness.

[00:08:27] Speaker 04:
Why should that be enough for us to say this is

[00:08:30] Speaker 04:
that a patent that certainly never mentions fitness tracking is directed to a fitness tracking device just because later, much later, in a re-exam, someone cites to a fitness tracking prior art as something that would disclose some of the principles.

[00:08:49] Speaker 04:
That doesn't mean that it is one and the same.

[00:08:53] Speaker 01:
That certainly does not exclude the fitness tracking industry.

[00:08:58] Speaker 04:
If we find it's not directed to fitness tracking, does that mean that you lose, that your patent's abstract?

[00:09:06] Speaker 01:
No, I don't believe so.

[00:09:07] Speaker 01:
I don't know in what other industry that this has a practical application other than fitness, because it's related to physical characteristic data of individuals.

[00:09:19] Speaker 04:
All of the examples in the patent relate to something else.

[00:09:22] Speaker 01:
You're saying you don't know what

[00:09:25] Speaker 04:
application would have, but you define in the patent an application that has nothing to do with fitness training.

[00:09:30] Speaker 01:
There's certainly examples in the specification that address the classroom setting.

[00:09:41] Speaker 01:
So the inventive elements here, the combination of inventive elements, are the use of the biometric sensors.

[00:09:48] Speaker 01:
So the patent teaches that you can sense

[00:09:53] Speaker 01:
diverse physical characteristics from people in remote locations.

[00:09:57] Speaker 01:
You could be sensing brainwave activities from somebody exercising in Europe while simultaneously measuring the respiratory rate of somebody in South America.

[00:10:08] Speaker 01:
The patent teaches that this data has to be maintained at a granular level so that when it reaches the associative databases, it can be reconciled, combined, and then put into a format where the associative databases can make

[00:10:23] Speaker 01:
a meaningful recommendation of options to the users.

[00:10:28] Speaker 03:
Sounds clever.

[00:10:30] Speaker 03:
Sounds clever, but that's not the point here.

[00:10:34] Speaker 03:
Just like Newton's laws, and Einstein's equation was clever, but if they're abstract, they don't pass muster.

[00:10:44] Speaker 01:
So addressing the record at the district court level,

[00:10:52] Speaker 01:
There were facts that this was not an abstract idea, that it did contain inventive concepts.

[00:11:00] Speaker 01:
So column one that we looked at earlier, that there was an inventive concept.

[00:11:04] Speaker 03:
How about looking at the claim, receiving data, determining an evaluation, very mental, providing a notification.

[00:11:17] Speaker 01:
That's what the claim said, right?

[00:11:20] Speaker 01:
Yes.

[00:11:21] Speaker 01:
There's more to those claims, which is at the end, which was the inventive concept from the reexaminations, which is the providing of multiple options for users to select from.

[00:11:33] Speaker 01:
That could not have been done at the time without the inventive combination of the biometric sensors and the associative database.

[00:11:44] Speaker 03:
You're into your bottle.

[00:11:45] Speaker 03:
You can continue or save it as you wish.

[00:11:49] Speaker 01:
I'll save it.

[00:11:50] Speaker 01:
Thank you.

[00:11:55] Speaker 03:
Mr. Fuga.

[00:12:04] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:12:07] Speaker 00:
The 271 patent discloses and claims the abstract idea of gathering data, analyzing that data, and providing a notification about that data.

[00:12:16] Speaker 00:
The asserted claims are indistinguishable in kind from electric power and that line of cases.

[00:12:24] Speaker 00:
as you noticed.

[00:12:27] Speaker 00:
I'd like to address a couple of what was just discussed.

[00:12:31] Speaker 00:
Your Honor asked about the output from options.

[00:12:34] Speaker 00:
The options are discussed in the patent specification.

[00:12:39] Speaker 00:
I believe it's at column 5, appendix 32.

[00:12:46] Speaker 00:
And it's one of the examples that it's given about how

[00:12:52] Speaker 00:
the abstract idea of collecting, analyzing, and then providing feedback.

[00:12:59] Speaker 00:
At appendix 32, column 5, starting around line 54, this is discussing the options, suppose five possible endings are available for the play, two of which are happy endings and three of which are sad endings.

[00:13:13] Speaker 00:
If the audience appears or is determined to want a happy ending, the audience may be provided with the two options having happy endings for the play and so on.

[00:13:21] Speaker 04:
Yes, there are different uses, but even if it's true that it doesn't say fitness tracking, I mean, if you're measuring blood pressure and exertion and heart rate and you have sensors that are doing that, why couldn't it have an application in the fitness tracking?

[00:13:37] Speaker 00:
I wouldn't dispute that it can have an application to fitness tracking.

[00:13:41] Speaker 00:
And I think the issue is that the fact that the claims could be read on fitness tracking only, I think, emphasizes how broad the claims are.

[00:13:50] Speaker 00:
and really underlines the preemption concern here.

[00:13:57] Speaker 00:
Someone asked if it were directed towards fitness tracking.

[00:14:00] Speaker 00:
If that were in the patent, I don't think that would change the analysis here.

[00:14:04] Speaker 00:
It would still be collecting data, analyzing that data, and then providing a notification, providing results of that data, just like electric power, whether that's collecting data from multiple power grids or

[00:14:20] Speaker 00:
multiple power grids around the country from geographically disparate locations, that's no different than collecting data from two individuals in a classroom or two individuals wearing a tracking device, a fitness tracking device.

[00:14:33] Speaker 04:
So you think fitness tracking devices are unpatentable generally?

[00:14:37] Speaker 00:
No.

[00:14:38] Speaker 00:
No, I would not have that opinion.

[00:14:41] Speaker 00:
If this were a device, and I'm clearly working in hypothetical here, but if this were a device that was a heart rate monitor

[00:14:49] Speaker 00:
And it was an advancement in the technology of a heartbeat monitor that potentially could be patentable and patentable subject matter under the current case law.

[00:15:03] Speaker 00:
That is not what we have here with the 271 patent, which clearly is directed to the abstract idea of collecting, analyzing, and distributing information, utilizing conventional components in their conventional manner.

[00:15:18] Speaker 04:
What about the sensors that are disclosed?

[00:15:20] Speaker 04:
Is that not a more technical aspect to this patent?

[00:15:26] Speaker 00:
The sensors that are disclosed are, again, conventional components.

[00:15:33] Speaker 00:
And for instance, on Appendix 34, this discusses the sensors.

[00:15:40] Speaker 00:
In Cal-09, the discussion really starts at about 42.

[00:15:44] Speaker 00:
But I'm going to jump down to 56.

[00:15:48] Speaker 00:
Because this lists the sensors here.

[00:15:51] Speaker 04:
I'm sorry, which column are you in?

[00:15:52] Speaker 00:
Oh, I apologize.

[00:15:53] Speaker 00:
Column nine.

[00:15:55] Speaker 00:
And I jump down to line 56.

[00:15:58] Speaker 00:
And this discusses the many kinds of sensors.

[00:16:00] Speaker 00:
For instance, there are many kinds of sensors that might be used.

[00:16:04] Speaker 00:
Potential sensors include heart rate monitors, blood pressure monitors, respiration rate, temperature or heat detectors, pressure sensors, load sensors, motion detectors, acceleration sensors, brain wave monitors, et cetera.

[00:16:16] Speaker 00:
There's really no limit to what kind of sensors may be used.

[00:16:21] Speaker 00:
And the patent does not address sensors as being an inventive concept.

[00:16:27] Speaker 04:
Well, but your friend on the other side argues that what was missing in the prior art was the ability to take this data from sensors on more than one person and then analyze that data.

[00:16:41] Speaker 00:
That may have been missing in the prior art.

[00:16:46] Speaker 00:
This patent did make its way out of re-exam.

[00:16:50] Speaker 00:
We don't dispute that.

[00:16:51] Speaker 00:
But I think as this court has noted in, I believe, a synopsis, a novel abstract idea is still an abstract idea.

[00:17:00] Speaker 03:
What if one had a claim to a method of determining physical fitness consisting of applying a blood pressure monitor, determining heart rate, determining temperature,

[00:17:16] Speaker 03:
Period.

[00:17:19] Speaker 03:
They're all physical steps.

[00:17:22] Speaker 03:
There are no mental steps involved.

[00:17:25] Speaker 03:
Aside from whether it's obvious or not, would it meet 101?

[00:17:35] Speaker 00:
Is this a method or is this a device?

[00:17:37] Speaker 00:
A method of you

[00:17:43] Speaker 00:
That's hard to say.

[00:17:44] Speaker 03:
I think there would be... Method consisting of several physical steps.

[00:17:48] Speaker 03:
Nothing mental.

[00:17:49] Speaker 00:
I think a method consisting of physical steps could be patent eligible.

[00:17:54] Speaker 00:
I have a hard time seeing that one as being patent eligible.

[00:17:57] Speaker 03:
Well, that's because of 103 or 102.

[00:18:01] Speaker 00:
Right, right.

[00:18:02] Speaker 00:
And that may be clouding... Isn't that Burkheimer?

[00:18:08] Speaker 04:
Effecting temperature?

[00:18:10] Speaker 00:
I believe Berkheimer was directed to improving a computer.

[00:18:14] Speaker 04:
Oh, excellent.

[00:18:15] Speaker 04:
I'm sorry, excellent.

[00:18:17] Speaker 00:
Yeah, but I think Berkheimer is instructive here.

[00:18:23] Speaker 00:
If we're going to discuss whether or not something is a factual issue, we don't have factual issues here, because in Berkheimer, we looked at this patent specification, and it described this inventive concept.

[00:18:35] Speaker 00:
And in that case, there was a description of this inventive concept, and then the claims

[00:18:40] Speaker 00:
recited, or at least in Berkheimer, some of the claims recited the inventive concept.

[00:18:47] Speaker 00:
Here we don't have that.

[00:18:50] Speaker 00:
ICON has argued that options are this inventive concept because options are what got the patent out of re-exam.

[00:18:59] Speaker 00:
But the patent does not describe options as an inventive concept.

[00:19:04] Speaker 00:
The patent describes options as options, as options to an end of a play.

[00:19:11] Speaker 00:
a potential limitation that could be attached to one of the embodiments.

[00:19:24] Speaker 00:
ICANN also discusses the granularity of data, using granularity to go to databases where data is controlled or parsed or whatever it may be at a database,

[00:19:40] Speaker 00:
Granular data or granularity is not in the claims and it's not taught in the specification.

[00:19:48] Speaker 00:
And to the extent that ICON is arguing that associative databases are an inventive concept, again, databases, whether they're associative or not, are again not in the claims.

[00:20:02] Speaker 00:
In databases, the patent teaches that databases or hardware, software,

[00:20:08] Speaker 00:
Pretty much anything can be used.

[00:20:13] Speaker 00:
It's not limited to specific hardware or specific software.

[00:20:17] Speaker 00:
In fact, the patent is explicit about there are many ways, a wide range of programming techniques, as well as general purpose hardware systems, dedicated controllers.

[00:20:27] Speaker 00:
And this is in column 14, appendix 36.

[00:20:32] Speaker 00:
But similar discussion is at column 12, column 10, about general purpose computers.

[00:20:38] Speaker 00:
really off-the-shelf technology.

[00:20:48] Speaker 00:
I think I would just end and say the asserted claims are no less abstract and no more inventive than the claims in electric power.

[00:20:57] Speaker 04:
But electric power didn't have the options disclosure.

[00:21:00] Speaker 04:
It had three steps, this has four.

[00:21:03] Speaker 00:
Well electric power had, at least the representative claim, had things beyond

[00:21:09] Speaker 00:
giving, I guess, results.

[00:21:12] Speaker 00:
It had updating the measurements and deriving an indicator of reliability.

[00:21:18] Speaker 00:
That was from the representative claim.

[00:21:21] Speaker 00:
But I don't think, right, if you're assessing a power grid and say the power grid is overheating or it's unstable and you get this, the option is to shut it down or not shut it down.

[00:21:37] Speaker 00:
While options were not claimed,

[00:21:39] Speaker 00:
I don't think the claims in electric power and here are identical word for word.

[00:21:47] Speaker 00:
But as abstract ideas go, they're almost indistinguishable in kind.

[00:21:57] Speaker 03:
Thank you, counsel.

[00:21:58] Speaker 03:
No one ever loses points by not using up all the time.

[00:22:02] Speaker 00:
Thank you for your time.

[00:22:04] Speaker 03:
Mr. Hutton sure has some more bottle time left.

[00:22:13] Speaker 01:
When the district court characterized the 271 inventions, it did so based on a canceled claim.

[00:22:21] Speaker 01:
It didn't focus on any of the claims that included the inventive aspect of the provision of options.

[00:22:28] Speaker 01:
That was a foundational error that was committed by the district court, which bled into its application of the ALICE framework and really caused it to overlook the inventive concept of the biometric sensors and the associative databases.

[00:22:42] Speaker 01:
in order to achieve the provision of options.

[00:22:47] Speaker 01:
Just responding to my colleague saying that granularity is not taught by the 271 patent, it is taught by the 271 patent.

[00:22:58] Speaker 01:
Appendix 31, patent

[00:23:02] Speaker 01:
column four, lines 50 through 53, talks about the data being received from the sensors not being processed.

[00:23:09] Speaker 02:
Is that some notion of granularity in the claims by construction or words?

[00:23:18] Speaker 01:
Yes, I think so.

[00:23:19] Speaker 01:
If we were to look at, for example, claim 80, it talks about the remote server making a determination and within that remote server would be

[00:23:32] Speaker 01:
the associated database that would do this processing.

[00:23:35] Speaker 01:
So there could be some claim construction issue there that would address the granularity issue.

[00:23:40] Speaker 01:
Is that responsive to your question?

[00:23:44] Speaker ?:
It is.

[00:23:44] Speaker 01:
Thank you.

[00:23:44] Speaker 01:
And it also talks about and teaches these diverse sensors sensing different types of information in different formats.

[00:23:53] Speaker 01:
And that's why it has to be kept at a granular level until it reaches the associative database.

[00:24:01] Speaker 01:
My colleague also addressed that the specification talks about general purpose computers and components.

[00:24:08] Speaker 01:
ICON doesn't dispute that, but I would clarify for the court that when it discusses that, it's talking about the server that houses the associative database.

[00:24:19] Speaker 01:
ICON's not claiming that it has some sort of inventive server, but that it's the associative database and the way that that maintains the data structure

[00:24:29] Speaker 01:
so that it can then associate an option with a specific user.

[00:24:37] Speaker 01:
And then I would just also note that at the district court level, this was a motion for judgment on the pleadings.

[00:24:44] Speaker 01:
There were factual issues that the court overlooked that should have been construed in ICON's favor, would have prevented entry of judgment here.

[00:24:52] Speaker 01:
And that is the portion of the specification that talks about the improvement

[00:24:59] Speaker 01:
that the 271 patent provides to the prior art, a declaration from an expert talking about the inventive concepts that are found in the 271 patent.

[00:25:09] Speaker 02:
On a motion for judgment on the pleadings under 12C, do declarations count?

[00:25:17] Speaker 01:
They can.

[00:25:18] Speaker 01:
If the court considers the declaration, then certainly.

[00:25:22] Speaker 01:
And the court did address the declaration in the opinion.

[00:25:29] Speaker 01:
Certainly she should not have weighed that issue against ICON.

[00:25:34] Speaker 01:
Those facts that were in that declaration, the opinion that was in that declaration should have been construed in ICON's favor.

[00:25:41] Speaker 02:
As well as... And this is... Forgive me if I'm confusing cases.

[00:25:49] Speaker 02:
Is this the case in which the declaration has essentially one paragraph on this, like paragraph 12, maybe almost a page long?

[00:25:59] Speaker 02:
That kind of paragraph to which the word conclusory might apply?

[00:26:06] Speaker 01:
Well, there's certainly, yes, there is one paragraph.

[00:26:10] Speaker 01:
But I guess to the conclusory point is that that shouldn't be weighed against ICON at least that stage of the case on the 12C motion.

[00:26:20] Speaker 01:
That shouldn't be weighed in ICON's favor.

[00:26:23] Speaker 01:
And then also perhaps in inference, to the extent the second step of Alice

[00:26:29] Speaker 01:
overlaps with the 102-103 analysis.

[00:26:33] Speaker 01:
The patent had been through two re-examination proceedings.

[00:26:37] Speaker 01:
That was a fact.

[00:26:38] Speaker 01:
It's part of the intrinsic record at the district court level.

[00:26:42] Speaker 01:
And the fact that there is some overlap between the second step of ALIS, the 102-103 inquiry, that should also have been an inference that was in ICON's favor and prevented the entry of the motion.

[00:26:56] Speaker 01:
at the district court.

[00:26:57] Speaker 01:
Thank you counsel.

[00:26:58] Speaker 03:
We'll take the case on revising.

[00:26:59] Speaker 01:
Thank you your honor.