[00:00:00] Speaker 05:
This is Mobile Telecommunications Technologies versus United Parcel Service 2017-1254.

[00:00:06] Speaker 05:
Councillor Puckett, you reserve five minutes of your time for rebuttal, is that correct?

[00:00:14] Speaker 00:
That is correct, Your Honor.

[00:00:16] Speaker 05:
Okay, you may proceed when you're ready.

[00:00:43] Speaker 00:
Good morning, and may it please the court.

[00:00:45] Speaker 00:
While it is common post-ALIS for patent eligibility under section 101 to be determined at the pleading stage of a case, doing so is permitted only where the requirements of the federal rules of civil procedure 12 are met.

[00:00:57] Speaker 00:
In connection with section 101 eligibility, a court may take judicial notice of facts only as permitted by federal rule of evidence 201.

[00:01:03] Speaker 05:
Alice?

[00:01:04] Speaker 05:
Is it your argument, just to kind of lay a couple of opening parameters, is it your argument that you can

[00:01:12] Speaker 05:
bringing a 101 challenge only at the pleading stage?

[00:01:17] Speaker 00:
Oh, quite the contrary.

[00:01:19] Speaker 05:
Our argument is that in some cases... Then is it your argument you can bring it at any point in a proceeding?

[00:01:27] Speaker 00:
So as long as the rules of civil procedure and evidence in constitutional review process are met, I do believe that a Section 101 challenge can be brought at any stage of the proceedings.

[00:01:36] Speaker 00:
There are many cases from the support post, Alice, in which Section 101 eligibility has been determined at

[00:01:42] Speaker 00:
the pleading stage, either 12b6 or a 12c motion for judgment on the pleadings.

[00:01:47] Speaker 00:
But where there are disputed factual issues that require the taking of evidence, then our argument is that determination of Section 101 eligibility on the pleadings is inappropriate and requires the taking of evidence, the use of summary judgment procedures, and resolution of factual issues, which did not happen here.

[00:02:06] Speaker 05:
So in our 101 cases, we pretty generally state

[00:02:11] Speaker 05:
that were directed under ALICE to look at whether the claims are directed to an abstract idea, let's say.

[00:02:20] Speaker 05:
If that's the case, and we're looking only at the claims, then why do we need a factual determination?

[00:02:28] Speaker 00:
Well, so for two related reasons.

[00:02:32] Speaker 00:
One is to conduct a claim construction where one is needed, and we argue that one is here.

[00:02:36] Speaker 00:
And then second, to determine in appropriate circumstances whether there is

[00:02:39] Speaker 00:
an inventive concept at step two of the Alice determination as a result of some of those claim limitations.

[00:02:45] Speaker 00:
So, for example, and we believe that the most appropriate precedent here from a procedural standpoint is the Bascom case.

[00:02:54] Speaker 00:
As Your Honor Judge Raina noted in a footnote in your dissent of the Amdocs decision, footnote four, Bascom is largely a procedural case, which holds that at the pleading stage 12B6 or 12C.

[00:03:06] Speaker 00:
if there are allegations, whether they be of a particular claim construction or of a particular inventive concept that is claimed in a patent at that stage, unless there is evidence in the pleadings, which includes, of course, the patented specification, unless there is evidence that can rebut that.

[00:03:23] Speaker 00:
Or I should note also, based upon the taking of judicial notice, if you don't have evidence that can rebut the allegations of a claim construction or an inventive concept,

[00:03:33] Speaker 00:
then a determination of Section 101 eligibility at the pleading stage is inappropriate.

[00:03:39] Speaker 02:
What are the facts that you think are relevant, whether facts underlying the claim construction, facts as to conventionality?

[00:03:50] Speaker 02:
I use that as a shorthand for that little trio in Mayo.

[00:03:53] Speaker 02:
What are the specific facts that you think?

[00:03:56] Speaker 00:
Let me answer that with specificity by pointing to the portions of the court's opinion below.

[00:04:00] Speaker 00:
And these are most

[00:04:02] Speaker 00:
clearly stated in the court's reconsideration order.

[00:04:05] Speaker 00:
First, the court holds on page 4 through 5, appendix page 33 and 34.

[00:04:11] Speaker 00:
This is appendix page 33 through 34.

[00:04:13] Speaker 00:
It's page 4 through 5 of the reconsideration order.

[00:04:20] Speaker 00:
First, the court stated, summarized its holding from the original grant of the motion on the pleadings, that the claim elements were the rough equivalent of merely genetic

[00:04:31] Speaker 00:
generic computers performing routine computer functions.

[00:04:35] Speaker 00:
The Court says that was the Court's holding.

[00:04:37] Speaker 00:
Okay?

[00:04:38] Speaker 00:
So that's the first.

[00:04:40] Speaker 00:
Is that?

[00:04:40] Speaker 02:
I'm sorry.

[00:04:41] Speaker 02:
I'm not sure I'm at the same page.

[00:04:42] Speaker 02:
I'm looking at Appendix 33.

[00:04:44] Speaker 02:
Where on that page do you want me to look at?

[00:04:47] Speaker 00:
So this is where the Court states at the end of a paragraph, the holding that the claim elements were the rough equivalent of merely generic computers performing routine computer functions was the Court's holding.

[00:04:56] Speaker 00:
So there's an equivalency.

[00:04:58] Speaker 00:
The claim elements we're talking about here

[00:05:00] Speaker 00:
our wireless page message and paging operations center, the court says, well, that's just the equivalent of a generic computer.

[00:05:07] Speaker 00:
Mind you, and this is important, you can't understand this appeal.

[00:05:09] Speaker 00:
You cannot understand anything about this case or this patent or this appeal unless you understand one important fact.

[00:05:15] Speaker 00:
In September of 1995, there was a tectonic shift in the telecommunications world when MTEL launched its Skytel network.

[00:05:24] Speaker 00:
That is considered that it was a revolutionary network that sets

[00:05:29] Speaker 00:
the foundational framework, the connectionless framework for modern day wireless delivery of connectionless data, email and short message SMS and others.

[00:05:42] Speaker 00:
That occurred just six months prior to the filing of the provisional application in this case.

[00:05:47] Speaker 00:
The court held right here.

[00:05:48] Speaker 04:
Are we supposed to read that in the claim?

[00:05:52] Speaker 04:
The breakthrough Skytel

[00:05:55] Speaker 00:
We are not asking you to read it into the claim, but in making a factual determination that certain claim elements are the equivalent of a generic computer, then yes, that is factual information.

[00:06:10] Speaker 05:
When we interpret under step one of ALIS and we're looking at the claims, are we making a legal determination in your view or just factual?

[00:06:21] Speaker 00:
At step one,

[00:06:22] Speaker 00:
And as Your Honor knows, step one and step two can be a little bit blurry at times.

[00:06:26] Speaker 00:
The determination of whether the claims are directed to an abstract idea, I think maybe in most situations would be closer akin to a legal determination.

[00:06:36] Speaker 00:
There may be specific cases where it requires assessment of facts.

[00:06:40] Speaker 00:
So if we're limited to step one, then perhaps that's a legal conclusion.

[00:06:46] Speaker 00:
But at step two, oftentimes that that will be a factual conclusion, and the fact this court

[00:06:51] Speaker 00:
has specifically held, in Bascom and in other cases, that in order to reach the determination that there is an inventive concept or not, you have to look at facts.

[00:07:00] Speaker 00:
You either have to take judicial notice of things like computers were generally available at a certain time, or a barcode scanner was available at a certain time, or that certain technology was ubiquitous, or those sorts of things.

[00:07:11] Speaker 00:
So at step two, in particular, that is a factual determination that often can be made on the basis of the pleadings, including the patent specification,

[00:07:20] Speaker 00:
But oftentimes cannot.

[00:07:21] Speaker 00:
And the Bascom case in particular is an example where there were allegations of a particular inventive concept at step two.

[00:07:28] Speaker 00:
And the court's holding there was that at the pleading stage, there is no evidence in the record that would allow the court to conclude otherwise through judicial notice or otherwise, or something in the face of the patent specification.

[00:07:41] Speaker 00:
So I want to get back to identifying the specific points from the district court's holding for where the court inappropriately took judicial notice.

[00:07:50] Speaker 00:
In footnote five, I'm sorry, on footnote two, on page five, so we're looking at appendix 34, there's a litany here of factual findings that are based upon nothing but judicial notice.

[00:08:02] Speaker 00:
First, the court construes wireless page message as simply data sent wirelessly rather than data sent over a connection-oriented framework.

[00:08:10] Speaker 00:
But the court's support there is nothing more than judicial notice, as the court expressly holds in the very next sentence.

[00:08:15] Speaker 00:
So we have a claim construction that is based upon judicial notice.

[00:08:18] Speaker 00:
a claim construction that I would assert is wrong in light of evidence that was in the record on the summary judgment motions that was before the court at that time.

[00:08:27] Speaker 05:
In that footnote, the court also says that even if notwithstanding the claim construction, that you still failed.

[00:08:35] Speaker 00:
Well, the court, I don't know that that's correct.

[00:08:40] Speaker 00:
The court says not, the court says this is how I construe the claims and therefore you're incorrect.

[00:08:46] Speaker 00:
I don't believe the court holds there that if

[00:08:48] Speaker 00:
the claim construction that had essentially been offered.

[00:08:51] Speaker 00:
First of all, this claim has to be noted that neither party designated this term for claim construction.

[00:08:56] Speaker 00:
It was disputed for claim construction in the summary judgment briefs.

[00:09:00] Speaker 00:
The special master sort of expressly rejected UPS's claim construction for wireless page message, but did not adopt a formal construction of this.

[00:09:09] Speaker 00:
And then all of a sudden, the court didn't construe this in its order granting the judgment on the pleadings.

[00:09:15] Speaker 00:
And all of a sudden, you have this claim construction that drops out of the blue.

[00:09:18] Speaker 00:
in a footnote on page five that's based on nothing more than judicial notice and not based upon wireless page message.

[00:09:27] Speaker 00:
So wireless page message to a person of ordinary skill in the art in 1996 invokes a connectionless framework.

[00:09:33] Speaker 00:
That is key.

[00:09:34] Speaker 00:
That is part of the revolutionary aspect of the Skytel network that was launched just six months prior.

[00:09:42] Speaker 04:
messages before?

[00:09:43] Speaker 00:
There were wireless, there were certainly wireless messages, but not through a connectionless framework, which is the key aspect of a network that was launched in 1995, just six months before this patent was, the application was filed.

[00:09:58] Speaker 04:
I'm not sure I understand what your conception of connectionless framework actually means and how that's somehow distinct from prior art.

[00:10:08] Speaker 04:
Paging services sure it's there.

[00:10:10] Speaker 04:
So there's a paging operations center Right, right.

[00:10:15] Speaker 00:
So we're sending messages to an individual pager So got your mail your mail is at your house Okay prior to 1995 that the only available paging services were one-way direct paging services and

[00:10:30] Speaker 00:
But the connectionless framework is first made commercially available in September of 1995.

[00:10:36] Speaker 04:
Based on your preferred construction, excludes those pre-existing, well-established, one-way paging systems?

[00:10:45] Speaker 00:
Yes, that is certainly true.

[00:10:46] Speaker 00:
And there's evidence in the record to support that.

[00:10:49] Speaker 04:
In particular, there's the... What does patent specification tells me when it talks about paging operations center?

[00:10:56] Speaker 04:
I need to no longer think about the standard one-way paging service, but now I need to think about what Skytel or whoever did six months prior.

[00:11:11] Speaker 04:
So this particularized two-way paging system.

[00:11:15] Speaker 00:
So the reference is made in column one, line 42 through 47 or so.

[00:11:22] Speaker 00:
specifically to Skytel's, to the Skytel network that is provided by MTEL Technologies of Jackson, Mississippi.

[00:11:30] Speaker 00:
And it has to be noted, and this is in the record.

[00:11:32] Speaker 04:
It says such as, for example, Skytel, a global paging service provided by MTEL.

[00:11:39] Speaker 00:
Yes, and it has to be, this cannot be viewed from hindsight.

[00:11:42] Speaker 04:
In 1996... I know, I'm just, I'm trying to understand your, why

[00:11:49] Speaker 04:
You have some kind of reasonable construction to tailor down the paging operation center to be something very, very, very specific.

[00:12:01] Speaker 00:
It's based upon the understanding of the person of ordinary skill, based upon the evidence that's in the record.

[00:12:08] Speaker 00:
I'm happy to cite that to you.

[00:12:09] Speaker 00:
If you're looking for something more in the patent specification, I would agree with you.

[00:12:12] Speaker 00:
It's not there.

[00:12:14] Speaker 00:
But both through the reference to the Skytel network,

[00:12:17] Speaker 00:
and then through the general description of how the messages are handled.

[00:12:21] Speaker 00:
There is evidence in the record that any person of ordinary skill in the art at this time in 1996 would understand that this was a revolutionary network.

[00:12:28] Speaker 00:
Intel received a pioneer preference from the FCC for the development of the technologies that underlie this.

[00:12:34] Speaker 00:
And this is recognized as being the modern building block for all current SMS and email wireless delivery in cellular networks today.

[00:12:43] Speaker 04:
Hypothetically,

[00:12:45] Speaker 04:
Let's say there was no such thing as a fax machine.

[00:12:49] Speaker 04:
And then you invent a fax machine.

[00:12:52] Speaker 04:
And then six months later, you say, I'm claiming a notification service for alerting you when you got your mail by sending you a fax reporting to this fax machine that I just invented six months ago.

[00:13:12] Speaker 04:
I guess you're saying that you get credit for that and therefore there's an inventive concept there of using the brand new fax machine as a basis for communicating the information about the mail having arrived.

[00:13:32] Speaker 00:
There's an important wrinkle.

[00:13:37] Speaker 00:
that your hypothetical misses.

[00:13:38] Speaker 00:
And that is that the development of the new communications mechanism, fax machine in your hypothetical, but here the connectionless framework, allows that communications framework to solve a specific technical problem that previous communication frameworks were not able to solve.

[00:13:51] Speaker 00:
And in particular, that is the technical problem that is outlined as being the deficiencies in the prior art in column one, starting at line 26.

[00:14:03] Speaker 00:
The previous communications mechanisms require affirmative action on the part of the notification recipient.

[00:14:11] Speaker 00:
You had to go check, you had to go make a phone call, you had to go check a website, you had to go do a dial-up connection to a bulletin board somewhere.

[00:14:18] Speaker 04:
I don't see how that has anything to do with your Skytel two-way paging system.

[00:14:22] Speaker 04:
You could have just called the person or sent an email to the person or sent a fax to the person or sent a page to the person

[00:14:33] Speaker 04:
Or sent a page using the brand new Skytel.

[00:14:39] Speaker 00:
So none of the communications means that you just described allow for delivery of that notification to a person who is mobile and without that person having to do anything.

[00:14:50] Speaker 05:
OK.

[00:14:51] Speaker 05:
OK.

[00:14:51] Speaker 05:
I think we got that.

[00:14:53] Speaker 05:
I'll restore a couple of minutes of time to rebuttal.

[00:14:56] Speaker 05:
OK.

[00:14:57] Speaker 05:
Thank you, sir.

[00:15:00] Speaker 05:
Thank you, Your Honor.

[00:15:00] Speaker 05:
Mr. Yankov.

[00:15:01] Speaker 05:
Did I pronounce your name right?

[00:15:02] Speaker 01:
Abhiyankar.

[00:15:03] Speaker 01:
Abhiyankar.

[00:15:04] Speaker 01:
Thank you.

[00:15:05] Speaker 01:
You may please the court.

[00:15:07] Speaker 01:
I think what we've just heard is an invention that doesn't exist, a patent that doesn't exist.

[00:15:12] Speaker 01:
The patent that we have before us is a highly generic set of functional claim limitations directed not to a specific architecture, directed not to the Skytel network itself.

[00:15:25] Speaker 01:
And I think we can take MTEL's own words as admissions of that fact.

[00:15:31] Speaker 01:
According to MTEL, the patent does not speak to the... What are you reading from?

[00:15:36] Speaker 01:
Oh, I'm sorry, the Appendix 560.

[00:15:39] Speaker 01:
According to MTEL on Appendix 560, the 748 patent does not speak... Hold on just a second.

[00:15:45] Speaker 01:
Sure.

[00:15:50] Speaker 02:
Has the yellow been erased?

[00:15:54] Speaker 01:
Has the yellow been erased in the appendix?

[00:15:57] Speaker 01:
Yeah.

[00:15:57] Speaker 01:
Confidential.

[00:15:59] Speaker 01:
Yes, we have no problem with.

[00:16:01] Speaker 01:
Is this yours?

[00:16:02] Speaker 01:
Is it your data?

[00:16:06] Speaker 01:
On the appendix 560?

[00:16:08] Speaker 02:
It's not even data, this is somebody's brief, why it was marked.

[00:16:13] Speaker 01:
The brief was filed under seal at the district court level, your honor.

[00:16:17] Speaker 05:
We'd like for counsel in these cases where this situation happens,

[00:16:23] Speaker 05:
Papers are sealed at the district court level, and you come up on appeal.

[00:16:27] Speaker 05:
Go through the record.

[00:16:30] Speaker 05:
And I mean, there's no reason why a breach had appeared before us, Marcus, confidential.

[00:16:36] Speaker 05:
And we've said this time and time again.

[00:16:38] Speaker 05:
And I think at some point, of course, we're going to be weary of making these comments and reminding counsel.

[00:16:46] Speaker 05:
And we're going to start sanctioning for more heavily, because we have already, for these type

[00:16:53] Speaker 05:
over looks.

[00:16:56] Speaker 02:
Understood.

[00:16:56] Speaker 02:
And this is the other side's brief, so you can't stand up there without their permission and start reading from it.

[00:17:04] Speaker 05:
Well, let's ask.

[00:17:04] Speaker 05:
Do they have permission to cite from your brief?

[00:17:09] Speaker 00:
Yes, Your Honor.

[00:17:10] Speaker 00:
It's marked confidential because of protect order issues in the district court based upon their confidential information.

[00:17:14] Speaker 00:
And so we have no problem with them discussing this, any aspects of this.

[00:17:18] Speaker 05:
So none of the parties have any problem discussing this

[00:17:23] Speaker 05:
from this brief, right?

[00:17:24] Speaker 01:
Yes, Your Honor.

[00:17:25] Speaker 01:
And to be clear, the statements that I'll be reading are not statements about any confidential type of information.

[00:17:30] Speaker 01:
They're statements about the patent itself.

[00:17:31] Speaker 01:
Well, we're aware of that.

[00:17:32] Speaker 05:
I mean, at least we think it is.

[00:17:33] Speaker 05:
That's why I think just Toronto brought up the issue.

[00:17:37] Speaker 05:
I mean, we look at this.

[00:17:38] Speaker 05:
I mean, you can't say that this header is confidential.

[00:17:42] Speaker 01:
I understand.

[00:17:44] Speaker 01:
My apologies, Your Honor.

[00:17:47] Speaker 01:
But on Appendix 560, MTEL states that the 748 patent

[00:17:52] Speaker 01:
does not speak to the mechanism of how notifications are analyzed and recognized.

[00:17:58] Speaker 01:
On Appendix 569, Emsl states that the 74A patent is, quote, entirely silent as to the precise mechanism of transmission.

[00:18:14] Speaker 01:
And if we turn to Appendix 1949,

[00:18:19] Speaker 05:
OK, so what the other side is saying is that this may be the case, but we should have had the opportunity to engage in discovery or at least more factual inquiry in order to fill in what they perceive to be blacks.

[00:18:33] Speaker 01:
Correct?

[00:18:34] Speaker 01:
That is the other side's position, Your Honor.

[00:18:35] Speaker 01:
But there are no facts that they could have until the end of time to develop facts.

[00:18:40] Speaker 01:
But the patent itself does not actually disclose.

[00:18:43] Speaker 05:
Well, we don't know what the court would

[00:18:48] Speaker 05:
would decide.

[00:18:48] Speaker 05:
I mean, that's your view.

[00:18:51] Speaker 05:
But why don't you address the procedural issue involved here?

[00:18:55] Speaker 05:
Does a court have to engage in a factual inquiry and a 101 inquiry at the mention that there's some sort of additional facts that need to be obtained?

[00:19:09] Speaker 01:
No, Your Honor.

[00:19:09] Speaker 01:
And this court has made that very clear, that it can actually address these issues

[00:19:14] Speaker 01:
at the pleading stage based only on the patent claims itself.

[00:19:18] Speaker 01:
And that's what the district court did here.

[00:19:19] Speaker 01:
The district court recognized that the patent does not disclose a particular mechanism for actual wireless paging.

[00:19:29] Speaker 01:
All it discloses is the general function.

[00:19:31] Speaker 05:
So the other side says the district court cannot do that unless it understands the context of the invention.

[00:19:38] Speaker 05:
What's your response?

[00:19:39] Speaker 01:
Well, the patent can supply

[00:19:42] Speaker 01:
the conventional nature of the technology that's at issue.

[00:19:45] Speaker 01:
In this case, the patent at column one, it states that the technology of express mail tracking networks, for example, was readily available.

[00:19:54] Speaker 01:
And in column one, starting on line 15, going to 30, it talks about the fact that even my client, Federal Space UPS and others, were actually had in place networks for tracking express mail deliveries, doing that on a real-time basis.

[00:20:09] Speaker 01:
So that technology is not something Intel invented.

[00:20:11] Speaker 01:
And they can't say otherwise.

[00:20:14] Speaker 01:
They also have never admitted or have never suggested throughout this appeal or during the litigation that they invented wireless paging, because that's what these claims cover.

[00:20:25] Speaker 02:
These claims... Is there anything in these claims that requires a communication back from the recipient?

[00:20:31] Speaker 01:
No.

[00:20:31] Speaker 02:
And I was going to say that...

[00:20:33] Speaker 02:
I guess I take this, maybe I should have asked the other side.

[00:20:37] Speaker 02:
What does the two-way nature of this connectionless network have to do with these claims?

[00:20:42] Speaker 01:
That's a very good question, Your Honor.

[00:20:43] Speaker 01:
I don't think it has anything to do with these claims, because as you noted, this claim is a one-way notification method.

[00:20:50] Speaker 01:
It is not a two-way notification method.

[00:20:51] Speaker 01:
So MTEL's attempt on appeal to interject a two-way paging protocol, or connectionless framework as they would like to call it,

[00:21:00] Speaker 01:
is simply irrelevant because the claims don't actually require that.

[00:21:05] Speaker 01:
The claims require a very simple, generic, functional step where you're sending, receiving, and relaying information.

[00:21:12] Speaker 05:
All of those steps are... And that's because that central processing unit sends out a message that says, your meter has arrived.

[00:21:20] Speaker 05:
But there's nothing that requires or obligates the receiver to say, OK, or thanks.

[00:21:27] Speaker 01:
Right.

[00:21:28] Speaker 01:
Well, and there's nothing in the claims that even talk about how this information is even flowed through the system, how it's received, how it's processed, how it's analyzed, or how it's transmitted.

[00:21:43] Speaker 01:
And similarly, under step two, their argument is that, well, we were the first ones to come up with this.

[00:21:49] Speaker 01:
We were the first ones to implement this abstract idea of delivery notification in the wireless paging context.

[00:21:58] Speaker 01:
whether that's true or not is irrelevant, because that's not the inquiry.

[00:22:02] Speaker 01:
That's a novelty inquiry.

[00:22:03] Speaker 01:
The inquiry here is looking at the claims to determine whether they actually claim an inventive combination of steps.

[00:22:10] Speaker 01:
And in this case, every element is recited in its conventional and ordinary order, sending, receiving, relaying, transmitting.

[00:22:21] Speaker 01:
There's nothing inventive there.

[00:22:24] Speaker 01:
And EMTEL has said, and they say this in their briefing,

[00:22:27] Speaker 01:
They do have other patents in their portfolio that are directed to the, quote, fundamental technology of connectionless transfer.

[00:22:35] Speaker 01:
And that may be true, but those claims are not before us today.

[00:22:44] Speaker 01:
If the court has any other further questions on the patent eligibility question, I'm happy to answer them.

[00:22:50] Speaker 01:
Otherwise, I'll move on to waiver.

[00:22:52] Speaker 01:
The district court did not abuse its discretion here.

[00:22:55] Speaker 01:
The basis for its decision to consider UPS's motion was based on judicial efficiency and economy principles, which are precisely the principles that this Court in Mortgage Grader says are within the inherent power of the District Court to manage the cases.

[00:23:12] Speaker 05:
What took UPS so long in bringing the 101 challenge?

[00:23:16] Speaker 01:
Well, I think Alice, as this Court has said in Mortgage Grader and recently in Inventor Holdings, was a significant change.

[00:23:22] Speaker 01:
in the law.

[00:23:24] Speaker 02:
And what was this motion made?

[00:23:25] Speaker 01:
This motion was made in July of 2015.

[00:23:28] Speaker 02:
That's like slightly over a year after Alice, right?

[00:23:32] Speaker 01:
Yes.

[00:23:33] Speaker 01:
And Your Honor, the reason for the delay is because when Alice issued, we had already finished fact discovery.

[00:23:40] Speaker 01:
We were in the middle of expert discovery.

[00:23:42] Speaker 01:
And we were proceeding with an argument based on non-infringement that we thought was very strong.

[00:23:50] Speaker 01:
We filed a summary judgment motion shortly thereafter, which was kicked to the special master, and it took the special master nearly nine months to rule.

[00:23:59] Speaker 01:
And so we waited for that ruling before we filed our oust motion.

[00:24:06] Speaker 01:
And again, as we said before, the timing is not prejudicial because there's no facts that MTEL needed to develop in order to

[00:24:16] Speaker 01:
prepare its defense to the one-to-one point.

[00:24:18] Speaker 05:
Well, it seems to be not prejudicial, because the other side is arguing that he can pretty much bring analysis, challenge any time in the proceeding.

[00:24:26] Speaker 01:
That is their position.

[00:24:27] Speaker 01:
I've seen cases where this court has entertained one-to-one issues that were brought at the j-ball stage after trial.

[00:24:36] Speaker 01:
So I believe you can bring it, depending on the district court's rules and practices.

[00:24:42] Speaker 01:
In this case, we brought it when we thought we had the strongest case.

[00:24:46] Speaker 01:
And it ultimately prevailed.

[00:24:49] Speaker 03:
That one case with the JMAW, wasn't there first a summary judgment motion that got denied, and then they re-raised it on JMAW?

[00:24:58] Speaker 01:
Yes.

[00:24:59] Speaker 01:
Yes.

[00:24:59] Speaker 01:
But I don't think there's any rule that says you have to file your 101 at the pleading stage, or you must file your 101 at summary judgment.

[00:25:09] Speaker 04:
I guess my point is in the context of that case,

[00:25:12] Speaker 04:
The Federal Circuit didn't bless raising a 101 challenge all the way until the JMAW.

[00:25:20] Speaker 01:
That's right.

[00:25:20] Speaker 01:
I don't think the Federal Circuit affirmatively said that that was an appropriate mechanism.

[00:25:26] Speaker 05:
Correct.

[00:25:26] Speaker 05:
What about the gathering of factual evidence?

[00:25:28] Speaker 05:
Do you see any authority that requires that a district court to engage in some sort of discovery or additional fact-finding when an allegation is made that fact-finding needs to be made?

[00:25:42] Speaker 01:
No, I think that is an argument that is frequently made by patentees.

[00:25:46] Speaker 01:
But district courts can look to the patent and determine whether they need additional facts to evaluate the two-step inquiry.

[00:25:56] Speaker 01:
And so in this case, the district court

[00:26:00] Speaker 02:
What you just said is a different way of saying that in order for there to be a requirement that fact discovery go forward, the alleged facts have to be seen to be at least potentially material to the outcome.

[00:26:14] Speaker 02:
And here, if you look at the claim and you look at this two-column specification, it's perfectly clear that the facts that they're talking about just aren't material to the outcome.

[00:26:23] Speaker 02:
That is of necessity the argument you're making.

[00:26:27] Speaker 01:
That is correct, Your Honor.

[00:26:29] Speaker 02:
But in a different case, facts truly might be material if you can't tell what the claim means or whatever.

[00:26:37] Speaker 01:
Yes, precisely.

[00:26:39] Speaker 01:
Or if it's a patent about an improvement to technical functionality where you need to look at what the prior op was doing.

[00:26:45] Speaker 05:
Once you get into that, once you go down that path and you're alleging that facts or additional fact finding is required because those facts are material to resolving the 101 inquiry,

[00:26:58] Speaker 05:
then isn't that type of allegation easily made?

[00:27:01] Speaker 05:
I mean, isn't that going to require district courts to go down that path almost every time, if we authorize that?

[00:27:10] Speaker 01:
Well, I think the district court had to address that in this case.

[00:27:13] Speaker 01:
And the way the district court did it was to say, well, I'm looking at the patent, and I don't need additional facts.

[00:27:19] Speaker 01:
The facts are supplied to me by the patents themselves, as well as your admissions or your characterizations of the invention.

[00:27:26] Speaker 05:
I think the district would... Shouldn't that be the case in every 101 inquiry?

[00:27:31] Speaker 05:
I mean, shouldn't the 101 inquiry be based solely on the intrinsic record?

[00:27:38] Speaker 05:
And if it can't be resolved there, then you deny the 101 challenge?

[00:27:47] Speaker 01:
Well, I think that's how the procedure would operate.

[00:27:50] Speaker 01:
If you can address the 101

[00:27:52] Speaker 01:
based on the patent claims themselves without resort to extrinsic evidence, then yes, you can do that without having to engage in any factual discovery of any kind.

[00:28:02] Speaker 01:
I think there have been cases where some district courts have said, well, I don't know from the patent whether a prior art method actually did what you're saying it did.

[00:28:13] Speaker 01:
So I need to look to other facts.

[00:28:14] Speaker 05:
But why would the prior art matter?

[00:28:18] Speaker 05:
Where does the prior art fit in a 101 inquiry?

[00:28:21] Speaker 01:
Sorry, not prior art.

[00:28:23] Speaker 01:
What I meant was the prior ways of using technology to do something and whether this patent is actually an improvement to that method of whatever it is.

[00:28:35] Speaker 01:
So in this case, right, there's no discussion of a technical problem that the claims are attempting to solve.

[00:28:43] Speaker 01:
It's a business problem, one of convenience.

[00:28:46] Speaker 01:
just delivering notifications a different way.

[00:28:49] Speaker 01:
In this case, they placed it in a particular technological context.

[00:28:53] Speaker 01:
But as Alice in this court's precedent has told us, that's not not.

[00:29:02] Speaker 01:
Unless your court has any further questions.

[00:29:04] Speaker 01:
Thank you.

[00:29:05] Speaker 01:
Thank you very much.

[00:29:11] Speaker 05:
We're going to show you back three, OK?

[00:29:15] Speaker 00:
Three minutes, Your Honor?

[00:29:16] Speaker 00:
Three minutes, yes.

[00:29:17] Speaker 00:
Thank you.

[00:29:19] Speaker 00:
Your Honor, in every prior case in which a Section 101 determination or patent has been found invalid at the pleading stage, there has been some finding that some concept there is either generic or ubiquitous or conventional based upon either something that is stated in the patent itself or based upon judicial notice of facts such as, you know, certain business practices are long known or that computers by the 1990s or 2000s

[00:29:44] Speaker 00:
are common and operate in a certain conventional way.

[00:29:47] Speaker 00:
In this case, there is no evidence at the pleading stage whatsoever from which this court or the district court below could determine, consistent with rule 202, that the wireless page message or the network operation centers are conventional, particularly given the evidence that is in the record that the launch of the Skytel network in just six months before this patent application was a revolutionary new telecommunications network.

[00:30:11] Speaker 00:
In a nutshell, the inventive concept behind the 748 patent is much like the Amdocs decision.

[00:30:17] Speaker 00:
The claims here take a known, but by no means conventional.

[00:30:20] Speaker 00:
That's the important part.

[00:30:22] Speaker 00:
Known systems, the connectionless framework.

[00:30:24] Speaker 00:
The two-way paging is not the important part.

[00:30:26] Speaker 00:
It's the connectionless framework here that allows for the solving of a new technical problem.

[00:30:30] Speaker 00:
So the claims here take a known, but by no means conventional process for connectionless wireless paging.

[00:30:36] Speaker 00:
and put those revolutionary processes to a new use in the realm of express mail tracking to solve a long-standing technical problem.

[00:30:44] Speaker 00:
This falls squarely within the definition of a patent-eligible process under the definition provided in 35 USC 100B.

[00:30:50] Speaker 04:
Can you quickly describe why this particular paging system does these claim steps better than the one-way paging system?

[00:31:02] Speaker 00:
Yes.

[00:31:03] Speaker 00:
And so the Connectionalist framework allows for

[00:31:06] Speaker 00:
the storage of messages or data during a time period when the recipient, the pager recipient is offline.

[00:31:15] Speaker 00:
And so that connectionless framework allows for messages to be delivered without any affirmative action by the recipient, such as connecting to a network, the connection step that is required.

[00:31:27] Speaker 00:
The connectionless framework allowed the solving of the specific technical problem, not just of delivery of notifications, but delivery without requiring any user intervention

[00:31:36] Speaker 00:
while that person is mobile.

[00:31:38] Speaker 00:
That's the technical problem that is solved by this new revolutionary technology that first became available in 1995, a technology for which Intel received a pioneer preference for the underlying technical concepts that allowed it to then put that known but relatively new and not conventional technique to a new use.

[00:31:59] Speaker 00:
I hope here in my last concluding seconds that the court will strictly adhere to the requirements of Rule of Evidence 202,

[00:32:05] Speaker 00:
And I hope that you will write an opinion in this case focused on the Bascom decision and the way in which at the pleading stage allegations of inventive concept or claims construction must be construed in favor of the patentee.

[00:32:17] Speaker 00:
And unless there is evidence at the pleading stage, be it in the intrinsic record of the patent specification or a fact that is

[00:32:23] Speaker 00:
actually proper for judicial notice, then Section 101 cannot be determined at the pleading stage, but instead should be left for summary judgment so that evidence can be considered and evidence can be reviewed by this court, not based upon the willy-nilly notions of judicial notice as the trial court below did here.

[00:32:42] Speaker 05:
Okay.

[00:32:42] Speaker 05:
Thank you very much.

[00:32:47] Speaker 05:
Our next case