[00:00:01] Speaker 01:
Next case for argument is 17.2556.

[00:00:06] Speaker 01:
Umba net versus Epsilon data management.

[00:01:16] Speaker 03:
Thank you, your honor.

[00:01:17] Speaker 03:
May it please the court.

[00:01:19] Speaker 03:
This case concerns two patents, two related patents, on email clients that structured data within an email in a novel way in order to create improved user functionalities that did not exist prior to the priority date of these patents in 1998.

[00:01:37] Speaker 03:
I hope to first discuss today how the earlier patent, the 730 patent,

[00:01:44] Speaker 03:
describes its novel algorithm for structuring non-text data within an email in the specification with sufficient clarity and with sufficient specificity to provide a corresponding algorithm to the encoding means term in the asserted claims of the patent.

[00:02:03] Speaker 03:
And then I hope to move on to the second patent, 374, and show how the claim language itself, the claim limitation requiring the role mode encoded in email,

[00:02:14] Speaker 03:
limits the claim to a novel way of structuring data and does not merely claim the result so that it falls on the patentable side at the ALICE Step 1 analysis.

[00:02:26] Speaker 03:
It's non-abstract idea like the patents upheld in ENFISH, FinGen, Core Wireless, and most recently ENCORA.

[00:02:34] Speaker 01:
What do we do about the fact that at oral argument you said to the trial court, I'm not really focusing on the 374?

[00:02:43] Speaker 03:
statement made in oral argument below certainly was inelegant.

[00:02:47] Speaker 03:
But in the context of the briefing and the way that the 101 motion was briefed, what counsel below meant was that because the 730 patent is generally broader than the 374 patent, if the 730 patent was a patentable non-abstract idea, then the 374 patent, which contains essentially the same claim limitations as the 730 patent,

[00:03:13] Speaker 03:
plus the role mode limitation should also be a patentable, non-abstract idea.

[00:03:18] Speaker 03:
The role mode limitation just makes it more patentable.

[00:03:21] Speaker 03:
And counsel below explained that the 374 patent adds the additional role mode limitation, requiring not merely selective display of email, but that the authoring component of the claimed email client is responsive to a role mode encoded in the email, and that that provides novel advantages over, for example,

[00:03:42] Speaker 03:
password, password method of implementing a selective display or using executable code within the email to do that.

[00:03:52] Speaker 03:
So, Counsel Below's statement about the 374 patent may not have been the best way of putting it, but he certainly didn't mean to say that the 374 patent is not important, merely that it should, if the 730 patent survived the 101 analysis, then the 374 patent certainly should have.

[00:04:10] Speaker 01:
But what do you do with the trial court's finding that even the concept of a role mode, even if that was adequately developed, that that's not new?

[00:04:21] Speaker 03:
Well, if the claim had been limited, if the claim language had been simply that the email message determines how much information in the email message will be displayed based on the role of the recipient, that would be claiming the result.

[00:04:41] Speaker 03:
That would be a problem if the claim limitation didn't have any language in the claim limitation that explained how the role mode functionality was implemented.

[00:04:53] Speaker 03:
But that's not the claim limitation in the 374 patent.

[00:04:57] Speaker 03:
The 374 patent claim limitation is at least one of said authoring or reading components is responsive to a role mode encoded in an email message.

[00:05:08] Speaker 03:
whereby said role mode determines how much information said message is displayed.

[00:05:12] Speaker 03:
So that first part of that claim limitation is the how.

[00:05:16] Speaker 03:
The second part is the result.

[00:05:19] Speaker 03:
And claiming the result alone, again, would be a problem under 101.

[00:05:22] Speaker 02:
So in your view, the key is the role mode, this being encoded in the email message.

[00:05:29] Speaker 02:
Isn't that right?

[00:05:30] Speaker 02:
That's the thing that you think makes it so it's not abstract.

[00:05:33] Speaker 02:
Is that correct?

[00:05:34] Speaker 03:
That's correct, and that in combination also with the authoring reading component being responsive to the role mode being encoded in the email.

[00:05:42] Speaker 03:
Because it's not just that the role mode is encoded in the email, that provides an advantage, but the fact that what implements selective display is that the component programmed into the email client is responsive to that role mode, that tag in the email,

[00:05:59] Speaker 03:
And that's by putting the code that implements selector display within the email client, rather than within the email message.

[00:06:07] Speaker 03:
It provides enhanced user functionality.

[00:06:10] Speaker 03:
It provides the security advantages that are discussed in the specification.

[00:06:13] Speaker 03:
That's the how it's done that makes this a case like Enfish or Enquora or Finjen.

[00:06:21] Speaker 02:
But did that technology pre-exist for other purposes, for purposes other than having a role mode?

[00:06:28] Speaker 02:
That technology that you say provides this added security, that pre-existed, right?

[00:06:33] Speaker 02:
That technology within MIME messaging, that all, all of that pre-existed.

[00:06:44] Speaker 02:
Your idea of using that technology in order to have a role mode.

[00:06:48] Speaker 03:
So the MIME standard certainly pre-existed.

[00:06:51] Speaker 03:
But the idea of using the MIME standard to implement this functionality, that was novel.

[00:06:57] Speaker 03:
That's what never existed before.

[00:06:58] Speaker 03:
It's the exploitation, it's the novel exploitation of those email standards that is the patentable improvement to computer functionality here.

[00:07:10] Speaker 03:
In the same way that claims in ANCORA stored data to memory in different ways, even though those memory structures existed before, even though the information being stored to those, to the bios or to the

[00:07:27] Speaker 03:
hardware devices had existed before, it was the novel way of storing that data in Ancora that this court found was a not abstract idea.

[00:07:36] Speaker 03:
That's what's happening here with the 374 patent.

[00:07:39] Speaker 03:
The novel way of structuring data within the email standard, within the model structure, is what allowed this new functionality.

[00:07:49] Speaker 03:
That novel way of structuring data

[00:07:51] Speaker 03:
to provide an improvement to computer functionality.

[00:07:53] Speaker 02:
Do I understand that that novel way of structuring the data that was in claim in the 730 patent?

[00:08:00] Speaker 03:
So the novel way of structuring data to implement the role mode functionality is in the 374 patent.

[00:08:06] Speaker 03:
The novel way of encoding non-text data into an email is what's claimed in the 730 patent.

[00:08:14] Speaker 03:
The 730 patent discusses, so prior to the 730 patent,

[00:08:20] Speaker 03:
What you had to do to send say a spreadsheet in an email you created the spreadsheet with a separate program I'm probably not Excel if you're going back to 1997 I'm not sure what it was back then But you create the spreadsheet in a separate file and you attach it to the email.

[00:08:35] Speaker 03:
You've got to find it in your computer folders You've got to attach it the recipient has to find it and find the right make sure they have the right program to read it That was a problem that created user functionality issues What the 730 patent does?

[00:08:50] Speaker 03:
is it says within the MIME standard, you can put the spreadsheet functionality, or whatever non-text data functionality you want, within a component of the email client, both on the authoring component to write the spreadsheet within the body of the email, and a reading component to read the spreadsheet within the body of the email.

[00:09:12] Speaker 03:
And what you then do to encode that into the MIME structure, you use a tag within

[00:09:19] Speaker 03:
the MIME structure to tell the recipient computer what authoring component created the data and what reading component should read and display the data.

[00:09:31] Speaker 03:
That was a novel use of those MIME tags that hadn't been done before.

[00:09:37] Speaker 01:
Where in the 374 and the specification does it describe this process of encoding in the email message the role code information?

[00:10:04] Speaker 01:
because the claim itself is very general.

[00:10:31] Speaker 03:
Sorry, I believe that

[00:11:05] Speaker 03:
There it is.

[00:11:06] Speaker 03:
So it's in, it's appendix 423, column 14.

[00:11:11] Speaker 03:
And the paragraph, column 14, lines 41 to 52, describes the prior art JavaScript method that we've mentioned in our brief.

[00:11:29] Speaker 03:
And then at the end it explains, according to the preferred embodiment of the invention,

[00:11:33] Speaker 03:
No executable code is contained in a message, only tags which are read by the authoring reading component.

[00:11:39] Speaker 03:
So that's part of the specification, certainly at least one part of the specification, that describes how the role mode is implemented through tags in the email message.

[00:11:49] Speaker 03:
And that matches the language in the claim limitation of the 374 patent claim 11.

[00:12:00] Speaker 03:
But if the court is concerned

[00:12:02] Speaker 03:
that that claim limitation might not automatically, that the claim language read alone might not be sufficient to be a non-abstract idea at step one of Alice.

[00:12:13] Speaker 03:
Certainly, there are factual allegations in the complaint.

[00:12:16] Speaker 03:
There is an inventor declaration submitted along with the complaint explaining how these claim limitations separate the idea from the abstract idea of selective display.

[00:12:27] Speaker 03:
And under Atrix and Berkheimer,

[00:12:31] Speaker 03:
Those factual allegations certainly should have precluded the dismissal at the Rule 12b6 stage that the district court made below.

[00:12:38] Speaker 03:
At a minimum, we believe that the claim language itself is enough to make this a non-abstract idea.

[00:12:44] Speaker 03:
But at a minimum, the 101 decision should be vacated and remanded because the court improperly ignored the factual allegations of the complaint at the 12b6 stage.

[00:12:59] Speaker 01:
You're almost there.

[00:12:59] Speaker 01:
You rebutted.

[00:13:01] Speaker 03:
And then I guess just the last point I'd like to make is on the 112 issue.

[00:13:09] Speaker 03:
My colleague's primary argument in the briefs was that the specification didn't provide enough detail.

[00:13:15] Speaker 03:
It didn't go into enough detail on the code as to how the non-text data is exactly encoded in the email.

[00:13:25] Speaker 03:
That's not the standard this court set in typhoon touch, and that would be a very dangerous standard for this court to set.

[00:13:31] Speaker 01:
You don't really dispute that these are means plus function claims, do you?

[00:13:35] Speaker 03:
We do.

[00:13:37] Speaker 03:
Certainly, it's an uphill battle on the encoding means term for which there's presumption.

[00:13:42] Speaker 03:
The document encoding component term is presumed not to be a means plus function term.

[00:13:48] Speaker 03:
And for the reasons set forth in our brief, the term component has independent mean within software, also explained in the

[00:13:55] Speaker 03:
specification, but certainly if they are means plus function terms, there's a corresponding structure algorithm.

[00:14:02] Speaker 03:
If they're not means plus function terms, then the district court should be reversed on that alone.

[00:14:07] Speaker 02:
What is the part of the specification that you think is best disclosing the corresponding structure for the encoding means and the decoding?

[00:14:15] Speaker 03:
That would be the description of the algorithm at columns three and four of the 730 patent.

[00:14:21] Speaker 02:
And specifically encoding and decoding, not the whole process.

[00:14:25] Speaker 03:
Encoding and decoding the non-text data, that is non-text representation.

[00:14:31] Speaker 03:
And with that, I'd like to reserve the remainder of my time for review.

[00:14:33] Speaker 03:
Thank you.

[00:14:50] Speaker 00:
Good morning.

[00:14:51] Speaker 00:
May it please the court, Pratik Shah for Appellee Epsilon Data Management.

[00:14:55] Speaker 00:
With the court's permission, I'd like to start with the 374 patent.

[00:14:58] Speaker 00:
Now, appellant seeks to avoid the section 101 determination by contending, and this is for the first time on appeal, that the patent covers the following improvement on computer functionality, not just selective display of a single email based on a role mode, as it really argued, albeit in passing below, but rather,

[00:15:19] Speaker 00:
by encoding a role mode in a manner that avoids security problems.

[00:15:24] Speaker 00:
Not only is that latter argument plainly waived, it just was not made below in any shape or form, but the representative claims themselves.

[00:15:33] Speaker 01:
There is a statement in the complaint that says, prior to the 374, there was absolutely no way for a sender of a message to control and select the amount of the message that's read by a recipient or displayed over the course of a sequence of communications.

[00:15:47] Speaker 01:
And we have the same.

[00:15:48] Speaker 00:
statement in the inventor declaration right your honor I completely agree that that is how that is how it was teed up below the line that you exactly read there was absolutely no way for a sender of a message to control and select the amount of message that is read by this recipient or displayed over the course of the sequence of communications so as they argued it below the key innovation was now you can send a single email and based on the role mode it would be selectively displayed to the recipient

[00:16:16] Speaker 00:
That is no longer their argument on appeal, as you just heard today.

[00:16:20] Speaker 00:
Now their argument is, it's not just that.

[00:16:23] Speaker 00:
Prior art allowed you to do that, or that would be too abstract.

[00:16:27] Speaker 01:
It allowed it to happen in a way that wasn't secure.

[00:16:29] Speaker 00:
Exactly.

[00:16:30] Speaker 00:
They now emphasize it's a role mode encoded in an email in a way that avoids security problems.

[00:16:38] Speaker 00:
That argument, while it's well developed in their brief, was never mentioned below.

[00:16:44] Speaker 00:
So how could the district court have addressed

[00:16:46] Speaker 00:
that argument that this is the improvement on computer functionality.

[00:16:51] Speaker 00:
Their whole argument on appeal is based on ENFISH, that you have an improvement in computer functionality.

[00:16:57] Speaker 00:
But that improvement was not articulated below.

[00:17:00] Speaker 00:
And so the district court could not have addressed it.

[00:17:03] Speaker 00:
And page 18 of their blue brief makes clear that the prior art did allow for the portion that you read, paragraph 17 of the complaint, selective display of a single email based on a role mode.

[00:17:14] Speaker 00:
The innovation, they say,

[00:17:15] Speaker 00:
to make it non-abstract.

[00:17:17] Speaker 01:
I mean, the specification calls out JavaScript.

[00:17:20] Speaker 00:
Exactly.

[00:17:21] Speaker 00:
And that portion of the specification, which he pointed to and which you're just mentioning, was never cited in the district court.

[00:17:29] Speaker 00:
That's the only part of the specification that talks about how the preferred embodiment overcomes some security problems with JavaScript.

[00:17:38] Speaker 01:
But is that a, okay, so maybe it's a waiver problem, but if they had pointed to that.

[00:17:45] Speaker 01:
So putting aside waiver.

[00:17:46] Speaker 01:
Would that be a 101 problem or an enablement problem?

[00:17:50] Speaker 00:
Well, what it would be, I don't think it would, if in fact the claim limitation did just that, if it did overcome that computer security problem, the claim limitation itself, and not the preferred embodiment, that might get you past 101 had it not been waived.

[00:18:05] Speaker 00:
But here's the disconnect.

[00:18:07] Speaker 00:
As that portion of the specification makes clear, and just so you have it,

[00:18:12] Speaker 00:
in front of you as I read it, it's the portion that he read.

[00:18:15] Speaker 00:
So it's at JA 423, it's column 14, lines 50 to 52.

[00:18:21] Speaker 00:
And this is the paragraph talking about the JavaScript problem.

[00:18:24] Speaker 00:
It says, quote, according to the preferred embodiment of the invention, no executable code is contained in a message, only tags which are read by the authoring reading component.

[00:18:35] Speaker 00:
So it is true that this paragraph describes a preferred embodiment which would

[00:18:40] Speaker 00:
solve that computer security problem.

[00:18:43] Speaker 00:
The problem they have is that the claim limitation itself doesn't solve that problem.

[00:18:48] Speaker 00:
And as we know from Symantec and other decisions, the improvement in computer functionality has to be in the claim limitations itself.

[00:18:56] Speaker 00:
And all the claim limitation says is a role mode in an email, encoded in an email.

[00:19:01] Speaker 00:
And as this paragraph makes clear,

[00:19:03] Speaker 00:
JavaScript was also encoded in the email.

[00:19:05] Speaker 01:
Are you saying this is a step two issue rather than a step one issue?

[00:19:09] Speaker 00:
It's certainly at best a step two issue.

[00:19:11] Speaker 00:
But even if you got to that step two issue, what they're claiming is the improvement that this could overcome that security problem.

[00:19:18] Speaker 00:
That is nowhere in the claim limitation.

[00:19:21] Speaker 00:
So it's just like Symantec, where the patentee in that case said, look, this is not just a general method of filtering email and detecting for viruses.

[00:19:29] Speaker 00:
we are now solving this problem of reducing the protection gap, making it work faster.

[00:19:34] Speaker 00:
And what this court said is, well, that would, in fact, be an improvement on computer functionality, either under step one or step two.

[00:19:41] Speaker 00:
The problem is that's just in the specification in the preferred embodiment.

[00:19:46] Speaker 00:
It's not in the claim limitation itself.

[00:19:48] Speaker 00:
And they have the same problem here.

[00:19:51] Speaker 00:
As that specification excerpt makes clear, the preferred embodiment solves a problem, but not the limitation.

[00:19:57] Speaker 00:
And here's why.

[00:19:58] Speaker 00:
The limitation says,

[00:19:59] Speaker 00:
the part that they're now emphasizing on appeal, but that they did not mention a single time in the district court.

[00:20:05] Speaker 00:
What that portion does is it says the role most has to be encoded in an email.

[00:20:09] Speaker 00:
That's the key phrasing.

[00:20:10] Speaker 00:
Encoded in an email that they're now emphasizing.

[00:20:13] Speaker 00:
But the JavaScript is also encoded in an email.

[00:20:16] Speaker 01:
So what that section says- That's mere fact though does differentiate the cases upon which you rely upon because in those cases there was nothing in the claim that contained the limitation here.

[00:20:28] Speaker 01:
The limitation

[00:20:29] Speaker 01:
is in the claim, it's just a question of how you define it.

[00:20:31] Speaker 00:
Well, Your Honor, I guess we would find no difference there because the claim limitation itself here does not offer any improvement in computer functionality.

[00:20:40] Speaker 00:
It's just as they said in Blue Brief on 18, the prior art allowed you to do selective display and email.

[00:20:47] Speaker 00:
It did it through JavaScript, which is also encoded in an email.

[00:20:50] Speaker 00:
So there's nothing in the claim term itself that gets you past this problem.

[00:20:54] Speaker 00:
Again, none of this was fleshed out.

[00:20:56] Speaker 00:
We didn't have a chance to argue this in the district court.

[00:20:59] Speaker 00:
The district court didn't have a chance to pass on this in the district court because they never argued any of these points about how encoded and enroll role mode improves security.

[00:21:11] Speaker 00:
Neither that claim term, nor JavaScript, nor security appears anywhere in the district court proceedings.

[00:21:20] Speaker 00:
And it's not hard to figure that out, because if you go back and look at about the 40 pages of briefing on section 101 in the district court, there are four sentences in which they address this claim limitation.

[00:21:33] Speaker 00:
And they pick out the best three of them on page 15 of their reply brief to overcome the waiver argument.

[00:21:39] Speaker 00:
And it's right there on page 15 of their reply brief, three bullet points.

[00:21:43] Speaker 00:
And you can see that this is their best attempt to say that they preserved the argument.

[00:21:49] Speaker 00:
Defendants arguments are based on stripping the claims of most of the limitations in violation of well established principles that for section 101 determination, all claim elements must be considered alone in combination.

[00:22:00] Speaker 00:
That's just a statement of the law.

[00:22:03] Speaker 00:
Nothing to do with the specific argument here.

[00:22:07] Speaker 00:
Bullet two, the patents in suit improve upon what was done previously with emails and computers.

[00:22:12] Speaker 00:
They solve a problem that did not exist prior to the advent of the new email via the internet technology.

[00:22:18] Speaker 00:
no reference to what the problem was, not even differentiating between the two patents.

[00:22:23] Speaker 00:
And then the third bullet where they finally do, out of 40 pages of briefing, address the 374 patent.

[00:22:29] Speaker 00:
It's in these two sentences.

[00:22:31] Speaker 00:
The claims of the 374 patent include a feature that allows a single email to be sent to multiple recipients with different email material displayed to each recipient.

[00:22:40] Speaker 00:
They do not disclose a permission or passwords based system that restrict access to information.

[00:22:44] Speaker 00:
Well, that again, that is

[00:22:46] Speaker 00:
That is the basic invention that you started with in paragraph 17 of their complaint, Judge O'Malley, sending single email to multiple users based on role mode.

[00:22:56] Speaker 00:
That itself is abstract, as the district court found.

[00:23:00] Speaker 00:
And in fact, it was already implemented in the prior art, as they admit, on page 18 of their brief.

[00:23:05] Speaker 00:
And so now they need to import this new argument about how encoding in an email message for this.

[00:23:11] Speaker 02:
They're getting into details on the specific reason why

[00:23:15] Speaker 02:
As I understand it, they're now giving the details that they perhaps didn't give before.

[00:23:19] Speaker 02:
As you assert, they didn't give before on exactly why there was a problem that was solved, right?

[00:23:24] Speaker 00:
Well, I think it's much more than detail, Your Honor.

[00:23:26] Speaker 02:
I understand, but for just hypothetical.

[00:23:28] Speaker 00:
Oh, sure.

[00:23:28] Speaker 02:
I have heard your wiener argument.

[00:23:30] Speaker 00:
Yeah, then I would go back.

[00:23:31] Speaker 02:
What is your best argument on the merits?

[00:23:33] Speaker 00:
Best argument on the merits is the specification passage itself, which says that this improvement in computer security is part of the preferred embodiment, not within the claims itself.

[00:23:44] Speaker 02:
And so when you read that passage... Your best argument, you think, is just that the sheer breadth of claim 11 includes JavaScript.

[00:23:52] Speaker 00:
Exactly, because it says encoded in an email.

[00:23:55] Speaker 00:
JavaScript is also encoded in an email.

[00:23:58] Speaker 00:
And as Symantec and other cases make clear, if you want to say that your claim survives 101 based on an improvement in computer functionality, that improvement has to be in the claims.

[00:24:09] Speaker 00:
And it's not in the claims here.

[00:24:10] Speaker 02:
Were there, in the prior art, were there other types of tags that could be read in an email system?

[00:24:19] Speaker 00:
I do not know that.

[00:24:20] Speaker 00:
That hasn't been briefed.

[00:24:23] Speaker 00:
What we do know is what they say on page 18 of their brief, which is the prior art certainly allowed for selective display of an email based on a single email to different users.

[00:24:31] Speaker 02:
Just trying to figure out if there were, in the prior art, whether there were tags or something.

[00:24:35] Speaker 02:
Just a minute.

[00:24:36] Speaker 00:
Yeah, OK.

[00:24:37] Speaker 02:
Other than a role mode.

[00:24:40] Speaker 00:
Well, all of those are based on a role mode, your honor, because all of them, so how they define role mode, and we didn't get to claim construction.

[00:24:49] Speaker 02:
Just asking whether you know, whether the prior art included tags that would tell, that would indicate something other than a role mode.

[00:24:59] Speaker 02:
So my best understanding- And is this the first time anybody ever used tags in this way?

[00:25:04] Speaker 02:
I mean, other than a role mode, just using tags other than a JavaScript.

[00:25:09] Speaker 00:
To my knowledge, no, but I don't really even fully understand what they mean by tags, because it wasn't fleshed out below.

[00:25:16] Speaker 00:
What I can answer is it's definitely not the first time based on a role mode, because that's just how they define role mode is the identity of a user or sender.

[00:25:27] Speaker 00:
And that was well established.

[00:25:29] Speaker 00:
And we know that it was done through JavaScript.

[00:25:30] Speaker 00:
I don't know if it was done in the way that they would define a tag.

[00:25:36] Speaker 01:
Now, on the 730 patent... Why is it... I mean, I understand the argument that you can't just incorporate prior art, but when you're talking about, for purposes of finding that there's enough disclosed, when you're talking about a standard setting organization, I mean, that's not just

[00:25:59] Speaker 01:
grabbing something that someone may or may not have come across, right?

[00:26:03] Speaker 00:
Yeah, no, I agree with you.

[00:26:04] Speaker 00:
And our primary argument on lack of structure on the 730 is not based on the incorporation by reference, although that is a point that we make.

[00:26:12] Speaker 00:
Our primary argument is simply referring to the RFCs doesn't tell a person about any skill in the art, doesn't give them a basis in which to perform the recited function.

[00:26:23] Speaker 00:
Those RFCs, the mime,

[00:26:25] Speaker 00:
language, the MIME language had been around since 1992 as they make the point.

[00:26:29] Speaker 00:
There's nothing innovative about the MIME language.

[00:26:32] Speaker 00:
It's as if they referred you to an 80 page manual on how to program in the C language.

[00:26:36] Speaker 00:
And they say, hey, use that manual to make this program work, to make this patent work.

[00:26:42] Speaker 00:
They can't just refer to the MIME standards.

[00:26:44] Speaker 00:
Those are formatting standards.

[00:26:46] Speaker 00:
One way in which it's been described to me is MIME, you can think of it like a FedEx box.

[00:26:52] Speaker 00:
If you put the things in the FedEx box, FedEx will deliver it.

[00:26:55] Speaker 00:
but it doesn't tell you what's in the box or how the stuff got into the box.

[00:26:59] Speaker 00:
And that's what we have here.

[00:27:01] Speaker 00:
They've simply referenced the MIME standards through the RFCs, so we know what the output has to look like.

[00:27:06] Speaker 00:
It has to be done consistent with that formatting standard.

[00:27:10] Speaker 00:
But it gives no, no algorithm for how you actually encode the non-text data, which is created by this authoring component,

[00:27:21] Speaker 00:
which might take the form of a spreadsheet, might take the form of a PowerPoint presentation, an audio file, any sort of non-text thing, and turn it into an internet-compatible email.

[00:27:32] Speaker 00:
All we know from their algorithm is you have to do it consistent with MIME standards.

[00:27:37] Speaker 00:
And the word that they use to substitute on page 58, where they try to translate that algorithm into prose, they substitute the word encode with the word package.

[00:27:47] Speaker 00:
But package, and Judge Soule, I think you

[00:27:50] Speaker 00:
We're asking about this at the end of the argument, the specific step of encoding the non-text data, where is that described?

[00:27:57] Speaker 00:
And the answer is nowhere.

[00:27:59] Speaker 00:
It's described nowhere other than in the word package.

[00:28:02] Speaker 00:
They say you can see it on page 58.

[00:28:06] Speaker 00:
And the claim, remember, the claim requires encoding the non-text data created by the authoring component.

[00:28:12] Speaker 00:
And the step that corresponds to that is packaging the data.

[00:28:16] Speaker 00:
And so it doesn't tell you.

[00:28:17] Speaker 00:
What we know from this algorithm and specification is that it has to be MIME compatible.

[00:28:22] Speaker 00:
So it has to be in a format that's consistent with MIME.

[00:28:25] Speaker 00:
But it doesn't tell you how to take, and this is the ball game of the invention, the purported advance of this invention is you can take all of these different sort of non-text files, PowerPoint, Excel, whatever, create it in the email and have it compatible.

[00:28:39] Speaker 00:
But it doesn't tell you how a programmer could go about encoding

[00:28:45] Speaker 00:
all of that message into MIME.

[00:28:46] Speaker 02:
Can you help me out for a minute?

[00:28:48] Speaker 02:
I understand what you're saying.

[00:28:50] Speaker 02:
But what kind of thing, what kind of an example of encoding and decoding, what kind of words do you think that this specification could have used?

[00:28:58] Speaker 00:
Sure.

[00:28:58] Speaker 00:
So it could have described, it could have given an example of, OK, how do you take an Excel spreadsheet and turn it into MIME compatible language?

[00:29:09] Speaker 00:
Or how do you take a PowerPoint presentation and convert it into MIME?

[00:29:12] Speaker 00:
It doesn't have to give a source code or anything like that.

[00:29:15] Speaker 00:
But just to describe to a person of ordinary skill in the art, how to use the MIME formatting standards, again, that just describes how it should look.

[00:29:22] Speaker 02:
So it's not an enablement problem.

[00:29:23] Speaker 02:
It's a problem that nobody knows whether they infringe or not, if that structure isn't disclosed.

[00:29:28] Speaker 00:
Exactly right.

[00:29:29] Speaker 00:
They keep coming back to enable, oh, a person of ordinary skill in the art could figure out how to do it.

[00:29:33] Speaker 00:
Again, even if that were true, which I don't think is true, based on our expert evidence that the district court relied on,

[00:29:40] Speaker 00:
Even if that were true, exactly right.

[00:29:42] Speaker 00:
This is a means plus function claim, and the big trade-off in means plus function is you don't get every software routine under the sun to implement the invention.

[00:29:51] Speaker 00:
You get the one that's actually disclosed in the structure, and they don't disclose anything in the structure that would allow a person of ordinary skill and the art to figure out which software routine they want to use to turn it into MIME compatible.

[00:30:05] Speaker 02:
Do you think there's different software routines available?

[00:30:08] Speaker 00:
There's certainly different ways to encode this non-text information, but that's the black box.

[00:30:17] Speaker 00:
And the district court relied on expert evidence here, and this is on page 31 of the joint appendix.

[00:30:24] Speaker 00:
When the district court went through this, he says, look, I've looked at all of this.

[00:30:27] Speaker 00:
I don't see sufficient structure here to recite the claim functions.

[00:30:31] Speaker 00:
And then he looks at the expert evidence on both sides and he says, look, the expert evidence

[00:30:36] Speaker 00:
on Umbanut's side, on plaintiff's side, doesn't adequately explain how this discloses.

[00:30:42] Speaker 00:
But the expert evidence submitted by Epsilon does make clear that this is an adequate structure in order to perform the recited functions by a person of ordinary skill in the art.

[00:30:52] Speaker 00:
And it cites, this is at appendix 31, it cites JA 185 to 186, paragraph 34, which is our expert's declaration that goes line by line through the portion of the specification that they cite

[00:31:05] Speaker 00:
to say that there's adequate structure here, discussing the application X and all of those things.

[00:31:11] Speaker 00:
And so under this court's standard review, it would have to be clear error to rely on that extrinsic evidence.

[00:31:19] Speaker 00:
We think we went under any standard review, but certainly there is no clear error in the district court.

[00:31:24] Speaker 01:
Did the test progress say more than just, I can't figure it out from this specification?

[00:31:30] Speaker 01:
Or did it actually come right out and say, as Judge Stoll asked,

[00:31:33] Speaker 01:
that there are alternative methods to do this.

[00:31:37] Speaker 01:
And I can't figure out which one is being chosen.

[00:31:41] Speaker 00:
I think it's more the former, that there just isn't enough structure here to guide someone, a person of ordinary skill in the art.

[00:31:49] Speaker 00:
But let me point you to the exact passage, which is at JA 185 to 186.

[00:31:59] Speaker 00:
And it's paragraph, it's a chart.

[00:32:01] Speaker 00:
And it's paragraph 34.

[00:32:03] Speaker 00:
of the chart, and it says this section, it's the 365 to 45 is the main specification excerpt that they rely on.

[00:32:12] Speaker 00:
And so it's right in the middle of JA 186.

[00:32:15] Speaker 00:
And it says, this section references the MIME standard but does not give an algorithm to automatically encode a representation created with authoring or authoring reading components.

[00:32:25] Speaker 00:
Stating that this encoding is accomplished is different than providing an algorithm showing how the encoding is accomplished

[00:32:31] Speaker 00:
This section also references an application X MIME type.

[00:32:35] Speaker 00:
This appears to be merely a placeholder for any of the standardized MIME types and is not an algorithm of how to automatically encode a representation.

[00:32:43] Speaker 00:
In my opinion, the cited section does not provide the corresponding structure.

[00:32:46] Speaker 00:
And what I would say, there was two defects that the district court pointed out to and that the expert declaration substantiated.

[00:32:53] Speaker 00:
One is the one that I've been talking about.

[00:32:55] Speaker 00:
It doesn't just show you how to actually encode

[00:32:58] Speaker 00:
The non-text data, it just talks about that it has to be compatible with MIME standard.

[00:33:03] Speaker 00:
The other defect is it doesn't teach how to do it automatically, which is what the claim limitation teaches.

[00:33:10] Speaker 00:
And that's where that expert declaration speaks to you.

[00:33:13] Speaker 02:
Can I ask you the expert declaration there that you just read?

[00:33:16] Speaker 02:
You said a placeholder for any of the standardized MIME types.

[00:33:21] Speaker 02:
What does that mean?

[00:33:22] Speaker 00:
So the best I understand it,

[00:33:25] Speaker 00:
is there are standardized MIME types and custom MIME types.

[00:33:29] Speaker 00:
This is a placeholder to say, look, you can point to something that's a format compatible in MIME that might identify a particular application.

[00:33:39] Speaker 00:
As you'll see in other parts, this was alluded to in the briefing at oral argument, they got into the fact of how there was no MIME currently current available MIME handler to allow this functionality to happen.

[00:33:52] Speaker 00:
So you would have to create a custom MIME handler

[00:33:54] Speaker 00:
which is something else that they haven't sufficiently disclosed.

[00:33:58] Speaker 00:
But that's, I guess, a third level argument as to why it's not sufficient.

[00:34:03] Speaker 00:
But I think the encoding and the automatic encoding get us there, and certainly under clear error, although we don't think we need that standard.

[00:34:12] Speaker 01:
OK.

[00:34:12] Speaker 01:
We'll exceed at your time with questions.

[00:34:14] Speaker 01:
Thank you very much.

[00:34:15] Speaker 00:
Thank you, Your Honors.

[00:34:26] Speaker 03:
Thank you.

[00:34:27] Speaker 03:
I'd like to start by addressing the algorithm in the 7.3.0 patent that we just ended on.

[00:34:35] Speaker 03:
The algorithm for encoding the data only needs to describe how the encoding is done.

[00:34:42] Speaker 03:
And it does not need to go into the detail of how exactly the non-text data is structured within the email.

[00:34:50] Speaker 03:
All the algorithm is, and all the algorithm needs to be,

[00:34:54] Speaker 03:
is explaining that you take the non-text data, which is a series of ones and zeros in whatever pattern or whatever format the authoring component and the reading component used to read.

[00:35:05] Speaker 03:
And it's a fairly arbitrary one.

[00:35:06] Speaker 03:
You're going to have a different set of ones and zeros in a different format for spreadsheets, a different format for pictures, a different format for PowerPoint for presentations, a different format for AutoCAD files.

[00:35:17] Speaker 03:
Whatever you're sending, you're going to have a different format.

[00:35:20] Speaker 03:
The key to the encoding step

[00:35:22] Speaker 03:
is that you take the non-text data and whatever format the components create it, and you put a tag in the email that says what authoring component created it and what reading component reads it.

[00:35:34] Speaker 03:
That's the algorithm that's described in prose at columns three and four of the 730 pact.

[00:35:40] Speaker 03:
That's the algorithm for how the encoding means encodes the non-text representation into an internet compliant email.

[00:35:50] Speaker 03:
That's all that the claim limitation is.

[00:35:52] Speaker 03:
That's all that the means plus function claim is.

[00:35:54] Speaker 03:
And that's all that needs to be disclosed.

[00:35:56] Speaker 03:
You don't need to go to another level.

[00:35:58] Speaker 03:
And that's exactly what this court held in Typhoon Touch, where it held that a prose algorithm that sets forth how the structure, how the program accomplishes the claim function, as long as it does that, then you have sufficient corresponding structure to survive 112 indefiniteness.

[00:36:19] Speaker 03:
Now on the 101 issue, first on the waiver issue, my colleague emphasizes that the security issue didn't come up below, but the argument that the claim needed to be construed to include the role mode limitation, that was absolutely argued below.

[00:36:38] Speaker 03:
In the oral argument, counsel below said that the 374 patent improved the email technology by the author of the email can make certain portions of the email not available to the recipient

[00:36:48] Speaker 03:
This is done through the authoring component, which is different than what was done before.

[00:36:52] Speaker 03:
That's exactly what I've been arguing today.

[00:36:54] Speaker 03:
That's exactly what we argued in our brief.

[00:36:56] Speaker 03:
That's appendix 30-30.

[00:36:58] Speaker 03:
So we absolutely did not waive that argument.

[00:37:00] Speaker 03:
The security issue is just additional material in the specification, which on a motion to dismiss is part of the record that explains why that result is useful.

[00:37:10] Speaker 03:
But the focus of our argument focuses on the claim destruction.

[00:37:13] Speaker 03:
And finally, on the merits, my colleague says that his strongest argument on the merits

[00:37:18] Speaker 03:
is saying that the description of the embodiment is not imported into the claims, that the claims have a different meaning than we're saying.

[00:37:25] Speaker 03:
That's effectively an admission that on the merits of this case, there is a claim construction issue at ALICE step two that needed to be decided not on a motion to dismiss, but on full briefing on claim construction with full evidence taken into account.

[00:37:39] Speaker 03:
On the merits of this case, the 101 decision should be vacated at a minimum and remanded for further consideration on the claim construction issue.

[00:37:47] Speaker 01:
Thank you.

[00:37:48] Speaker 01:
We thank both sides and the cases.