[00:00:09] Speaker 02:
We have four cases before us today for oral argument.

[00:00:16] Speaker 02:
The first case is Zero Click versus Apple Inc.

[00:00:25] Speaker 02:
Mr. Ledol, how much time do we reserve for your four minutes?

[00:00:33] Speaker 02:
OK, you may proceed.

[00:00:35] Speaker 03:
Thank you, and good morning, and may it please the court.

[00:00:37] Speaker 03:
I'm Brian Liddell on behalf of the appellant ZeroClick.

[00:00:42] Speaker 03:
The district court opinion below in this case made a number of errors with respect to the application of this court's precedents under pre-AIA section 112, paragraph 6.

[00:00:54] Speaker 03:
There are some that are common to both of the two asserted patents, some that are unique to one or the other.

[00:01:00] Speaker 03:
With the court's permission, I'd like to start with the 691 patent that was asserted

[00:01:05] Speaker 03:
And their independent claims 2 and 52 both contain essentially the same claim language that the district court focused on in its decision, finding that that language invoked means plus function treatment under section 112.6.

[00:01:20] Speaker 03:
Respectfully, that was erroneous for, we submit, three basic reasons.

[00:01:25] Speaker 03:
The first is that the claim language at issue is not indeed an element of the invention itself.

[00:01:31] Speaker 03:
It's a recitation of the locus in which the invention is operating.

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It's an optional recitation of the essentially prior art systems that may be modified by the invention.

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The invention here is a novel form of graphical user interface for devices that allows for them to

[00:01:51] Speaker 03:
essentially be controlled by certain new techniques, including movement alone as opposed to clicking.

[00:01:57] Speaker 02:
So what's the utility of having an explanatory phase that characterizes the environment in which the invention operates and having that in a claim?

[00:02:08] Speaker 03:
Well, Your Honor, I think it's a fair question.

[00:02:12] Speaker 03:
And to be fair, these are claims that were prosecuted by the inventor, not counsel or a lawyer.

[00:02:17] Speaker 03:
But in any event,

[00:02:19] Speaker 03:
I think the inventor provided explanatory information about the environment of the invention for contextual purposes, because as a practical matter, it's an operating system or a graphical user interface for an operating system that creates a new mechanism for interacting with a device.

[00:02:36] Speaker 03:
And that is really best understood with reference to what it's modifying or what it could modify and what came before.

[00:02:43] Speaker 03:
And so in this case,

[00:02:45] Speaker 03:
The claim language refers to an existing program that, optionally, the claim recites may be updated with the novel interface of the claim.

[00:02:55] Speaker 03:
So for example, if we look at claim two, which is the independent apparatus claim, claim 52 is a very similarly drafted method claim.

[00:03:06] Speaker 03:
But it refers to an existing program that can operate the movement of the pointer over a screen

[00:03:13] Speaker 03:
and has one or more functions operated by one or more other methods apart from its said two-step method, which is really the core part of the invention, this method of utilizing movement alone and not clicks to control the interface and to control the operating system.

[00:03:31] Speaker 03:
And the claim goes on to describe that inventive context.

[00:03:35] Speaker 03:
But indeed, we see that in the preamble, the graphical interface of the claim

[00:03:41] Speaker 03:
may comprise an update of an existing program.

[00:03:44] Speaker 02:
So the existing program is obsolete.

[00:03:46] Speaker 02:
So what is the algorithm that supports the function of these claims?

[00:03:53] Speaker 03:
Well, Your Honor, respectfully, I think the claims themselves recite a new set of control functions and control steps for operating a operating system.

[00:04:07] Speaker 03:
The claim term at issue and the district court relied on is this existing program term, which refers to the prior art essentially system or prior art operating system that would be modified.

[00:04:19] Speaker 03:
Our view is that there is no need for a disclosure of an algorithm because this isn't the invention.

[00:04:25] Speaker 03:
It's not claiming this pre-existing program is the invention.

[00:04:29] Speaker 03:
It's claiming that the invention modifies or could be used to change.

[00:04:34] Speaker 03:
create a new operation instead of this pre-existing operating system.

[00:04:38] Speaker 01:
You rely on our Cox decision for this idea that somehow the analysis of 112.6 is different if the words at issue are not part of the invention but part of the environment?

[00:04:56] Speaker 03:
We do rely on the Cox decision, Your Honor.

[00:04:58] Speaker 03:
I think, to be clear,

[00:05:01] Speaker 01:
The key there is... It's not self-evident why that should be true if somebody would actually have to prove in an infringement case that even the environment is present.

[00:05:17] Speaker 03:
Well, I think two answers to that.

[00:05:18] Speaker 03:
First, we rely on the Cox case because ultimately what we're dealing with here is a finding of invalidity for indefiniteness, which is what the Cox case deals with as well.

[00:05:28] Speaker 01:
And did Cox say that

[00:05:30] Speaker 01:
If we removed the words at issue there from the claim, there wouldn't be any material difference.

[00:05:41] Speaker 03:
The Cox decision did indicate or suggest that the words that were at issue would not alter the scope of the claim materially if removed.

[00:05:50] Speaker 03:
I think Judge Newman took issue with that.

[00:05:53] Speaker 01:
One couldn't say that here, right?

[00:05:54] Speaker 01:
Because this is about changing something in existing programs.

[00:06:00] Speaker 03:
Actually, I think that that's not correct.

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I would say that the words could be removed here because the claims recite optionally modifying an existing system.

[00:06:11] Speaker 03:
The graphical user interface of the claim could either be a modification of an existing system or a standalone completely new operating system or a new user interface.

[00:06:22] Speaker 01:
If you put aside this Cox environment stuff, what's your argument for why

[00:06:27] Speaker 01:
the terms are not 112-6 terms.

[00:06:30] Speaker 03:
Well, I think there are a couple.

[00:06:32] Speaker 03:
So first, whether you look at it under Cox specifically or more generally under this court's broader precedence that you look to the claim as a whole and whether it informs one of skill in the art of the scope with reasonable certainty under Nautilus and other cases, I don't think that this language in any way is that I guess that I'm confused.

[00:06:54] Speaker 01:
I thought that you had an argument that

[00:06:57] Speaker 01:
Even aside from this environment versus invention claim, this is not a means plus function claim.

[00:07:05] Speaker 01:
Forget about 112.2 on its own, but this doesn't fall into 112.6 because the terminology used here has enough structure and in any event certainly more structure

[00:07:18] Speaker 01:
than the series of nonce words in the cases that we have equated with the word means.

[00:07:24] Speaker 03:
That's correct, Your Honor.

[00:07:26] Speaker 03:
So I apologize for taking you to the wrong direction.

[00:07:29] Speaker 03:
So there are a couple of issues with respect to that.

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The first is that under even this court's cases post-Williamson,

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The court's precedent is clear that there is a presumption, when the word means is not used, that the claim term does not invoke means plus function treatment and shouldn't be construed that way.

[00:07:47] Speaker 03:
It's no longer a strong presumption under Williamson, but it is nonetheless, under this court's clear unbound precedent, a presumption.

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Here, no evidence was submitted to overcome that presumption.

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And I do want to direct the court's attention to a case that I think, while referenced in some of the cases cited in the briefs, wasn't expressly discussed.

[00:08:07] Speaker 03:
but which I think does speak to this issue.

[00:08:09] Speaker 03:
It's Apex Inc versus Raritan Computer.

[00:08:13] Speaker 03:
That's at 325 F3rd 1364.

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And there, this court discussed in some detail the notion of how one overcomes this burden and how this presumption works in practice.

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And it speaks to it as one would expect any presumption, even a bare or not as strong presumption, that

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The party against whom the presumption lies, in this case, Apple, must come forward with evidence that, according to this court, has to meet by a preponderant standard the showing that the words at issue in the claim would not convey structure to a person of ordinary skill in the art.

[00:08:54] Speaker 01:
And would not convey some sufficient structure.

[00:08:59] Speaker 01:
And what we have here, I take it, is their favorite case on the other side is Williamson, which

[00:09:05] Speaker 01:
they characterized as, which I think is not really right, as referring specifically to software when the term module referred indiscriminately to software or hardware, things that in a common sense way are so different they're not meaningfully a single structure.

[00:09:28] Speaker 01:
And you want to say that if it had said software alone

[00:09:33] Speaker 01:
maybe even existing software that would be different.

[00:09:37] Speaker 03:
That's right, your honor.

[00:09:38] Speaker 03:
Basically, this court's cases that are relied on by Apple are all cases where words either means expressly or words that this court has expressly held to be nonce words like mechanism or module that don't convey even a distinction between hardware or software.

[00:09:56] Speaker 03:
Those might not convey any structure to a person of skill in the arts.

[00:10:00] Speaker 03:
The court has conversely, in the MIT case, held that the word circuit is different, that that conveys structure.

[00:10:07] Speaker 01:
And at least one district court has a very wide variety of possible structures, but nevertheless something quite different from a word like thing.

[00:10:19] Speaker 03:
That is correct, Your Honor.

[00:10:20] Speaker 03:
And this court's precedents are pretty clear.

[00:10:22] Speaker 03:
that a class of structures is what's required, not some very specific structure.

[00:10:27] Speaker 01:
Can I ask you, I guess, a question?

[00:10:30] Speaker 01:
I don't remember seeing anything in the briefs about this, and maybe you know or you don't know.

[00:10:37] Speaker 01:
For 60 or maybe even 70 years, there have been patent claims about software.

[00:10:45] Speaker 01:
The PTO, in order to decide whether prior art

[00:10:49] Speaker 01:
invalidates such claims needs to figure out whether terminology is 112.6 or not.

[00:10:58] Speaker 01:
Do we know anything about 60 years worth of practice or what the MPEP says or is what's being requested or what was decided by the district court here and being requested by Apple something that would dramatically change or fit with

[00:11:17] Speaker 01:
existing practices or what?

[00:11:19] Speaker 03:
I think your honor the I'm not aware of a specific precedent that speaks to that with possible exception there's and I'm gonna forget the entire site there's an older case Beauregard which has been relied on for many years that is endorsing of the form of claiming instructions on a recordable media as an apparatus claim and I think the Patent Office has recognized that as well as

[00:11:43] Speaker 01:
generally speaking, the notion... But specifically about when the examiner sees a term program or code for doing something, capable of doing something, whatever, do the examiners say, ah, we're now in 112.6 land, look at the spec to see what the specific structure is?

[00:12:03] Speaker 03:
I am not aware of any either rule or general practice in the patent office that would follow that doctrine.

[00:12:09] Speaker 03:
I think

[00:12:09] Speaker 03:
My understanding, at least, is that the Patent Office looks at those claims and says, OK, it's code for doing this.

[00:12:16] Speaker 03:
That's what we should look at.

[00:12:16] Speaker 03:
I'm in my rebuttal time.

[00:12:19] Speaker 03:
But if the court has other questions, I'm happy to respond now.

[00:12:22] Speaker 02:
OK.

[00:12:22] Speaker 02:
Thank you.

[00:12:23] Speaker 03:
Thank you.

[00:12:27] Speaker 02:
Mr. Palmore?

[00:12:29] Speaker 02:
Did I pronounce your name correctly?

[00:12:31] Speaker 04:
You did, Judge Raina.

[00:12:32] Speaker 04:
Thank you.

[00:12:33] Speaker 04:
Joseph Palmore here on behalf of Apple.

[00:12:36] Speaker 04:
The district court correctly concluded that all the claims at issue here are indefinite and thus invalid.

[00:12:42] Speaker 04:
Zero Click has claimed functions without disclosing adequate structure for performing those functions.

[00:12:49] Speaker 04:
It has the claims use only the generic terms program and user interface code.

[00:12:54] Speaker 01:
Can you answer the question about what's been going on in the PTO the last 60 years for terminology like this that I asked your opposite number?

[00:13:04] Speaker 04:
Yes, Judge Toronto, I don't know the answer to that question.

[00:13:06] Speaker 01:
I should say because this feels like you've got big game in your sights for something that feels like a dramatic change in existing practice.

[00:13:21] Speaker 01:
I can't myself think of a prior instance where the term program or the term code has been treated as invoking 112.6 and you would sort of

[00:13:35] Speaker 01:
transfer into 112.6, what feels like quite a large amount of software-related claiming.

[00:13:46] Speaker 01:
Am I mistaking what seems to be at stake and how big a change that is?

[00:13:50] Speaker 04:
I think you are overstating the ambition of our argument here.

[00:13:56] Speaker 04:
This is a patent-specific argument.

[00:13:58] Speaker 04:
We're not suggesting any kind of... But it would have consequences.

[00:14:01] Speaker 04:
It would have consequences, I would suggest, for the structure of this patent.

[00:14:06] Speaker 04:
So what this court's cases teach, especially post-Williamson, is that when looking for adequate structure in a claim term, one reads the claim term in light of the intrinsic record to see if there's adequate structure disclosed in that intrinsic record.

[00:14:23] Speaker 04:
And sometimes in a case like this, if the word program is used, perhaps there would be.

[00:14:28] Speaker 04:
The critical point here, though,

[00:14:30] Speaker 05:
When would that be if there wasn't a specific algorithm for that program?

[00:14:36] Speaker 04:
I mean, if there were something perhaps short of an algorithm, but something in the specification that suggested a structural.

[00:14:43] Speaker 05:
What short of an algorithm that's a structure?

[00:14:48] Speaker 04:
Well, this court's case is Post-Williamson.

[00:14:50] Speaker 04:
Every time that it's found 112.6 triggered, it hasn't found that adequate structure in the specification.

[00:14:57] Speaker 04:
So I can't point to an example.

[00:14:58] Speaker 04:
of what it would be, but what the court has said.

[00:15:01] Speaker 05:
I mean, this is what's troubling to me about it, because you're trying to say this isn't making it a 112.6 issue every time that you use the word program.

[00:15:13] Speaker 05:
But I'm not sure what you mean by that if we're looking at the specification to determine if there's structure and if that structure is an algorithm, even a very simplified one of, this is a program that does steps one, two, three, four.

[00:15:28] Speaker 05:
I mean, that's an algorithm.

[00:15:29] Speaker 05:
It may be not the specific code underlying the algorithm.

[00:15:33] Speaker 05:
But what short of that could be structure but not an algorithm?

[00:15:38] Speaker 04:
What this court's cases say is there must be some indication of how the specified function is to be performed.

[00:15:46] Speaker 04:
And what we have here is nothing like that.

[00:15:49] Speaker 04:
To the contrary, if I could refer the court

[00:15:54] Speaker 01:
Well, think about it just in terms of, I guess, the first patent, the 691.

[00:16:01] Speaker 01:
The particular clause we're referring to is not a clause about the inventive contribution.

[00:16:06] Speaker 01:
This is a clause that refers to standard off-the-shelf existing programs that control the cursor.

[00:16:14] Speaker 01:
So there's a world of very specific things out there that this claim says, we want to modify those things.

[00:16:22] Speaker 04:
Well, Your Honor, there's nothing in the intrinsic record that suggests this is kind of a class of off-the-shelf software.

[00:16:29] Speaker 01:
It's talking about existing programs.

[00:16:31] Speaker 04:
It's talking about existing programs.

[00:16:32] Speaker 04:
They chose to limit their claim to... The control cursors, right?

[00:16:36] Speaker 01:
I mean, in the 691.

[00:16:37] Speaker 04:
Well, they claim much more than that.

[00:16:39] Speaker 04:
If you look at the complaint in this case, they're talking about the swipe movement on an iPad or iPhone.

[00:16:44] Speaker 01:
That's the contribution that they say they want to...

[00:16:49] Speaker 01:
add, that is they want to modify the existing mouse drivers, if to use that term, and by eliminating the click so that a movement affects the same, gives the same information.

[00:17:05] Speaker 01:
But the clause that we're talking about here is program, an existing program that can operate the movement of the pointer.

[00:17:14] Speaker 01:
That's an express reference to

[00:17:16] Speaker 01:
what already exists, why would you have to describe that in the specification?

[00:17:23] Speaker 04:
Because if an inventor chooses to define his invention in terms of its operation with some existing thing, then that existing thing must comply with paragraph two.

[00:17:34] Speaker 04:
So if my invention is a new kind of exhaust system that works with a certain kind of diesel engine, and that's how I lay out my claims, then I've got to identify that class of diesel engines with specificity.

[00:17:46] Speaker 04:
And that would matter for infringement, because if someone uses it.

[00:17:49] Speaker 05:
Why?

[00:17:49] Speaker 05:
I mean, if you say, I'm admitting this new exhaust system, it comprises these five things, it works with all existing diesel engines.

[00:17:57] Speaker 05:
Isn't that specific enough?

[00:18:00] Speaker 04:
That might be.

[00:18:01] Speaker 04:
The question here, though, is in the computer context.

[00:18:04] Speaker 04:
And this court's cases have special rules and special applications.

[00:18:08] Speaker 05:
Let me just be clear, because I think there's some fuzziness here about why you're asking us to put this under 112.6 instead of 112.2.

[00:18:15] Speaker 05:
In the engine case, clearly, we wouldn't be talking about 112-6.

[00:18:18] Speaker 05:
We would be talking about 112-2, right?

[00:18:21] Speaker 05:
Right.

[00:18:22] Speaker 05:
Because they're clearly both structures.

[00:18:24] Speaker 04:
Right.

[00:18:24] Speaker 04:
But so the two work together because when you're in the world of functional claiming, the structure that performs the function has to meet the 112-2 reasonable specificity requirement.

[00:18:36] Speaker 04:
And if we look at that's not your argument here.

[00:18:38] Speaker 04:
You're trying to say that there's no structure.

[00:18:40] Speaker 04:
And therefore, it's indefinite under paragraph 2.

[00:18:43] Speaker 04:
That's the consequence of functional claiming

[00:18:45] Speaker 04:
without disclosure of adequacy.

[00:18:47] Speaker 05:
But to get there, you have to convince us that using the word existing program is functional claiming versus itself a reference to a structure sufficient to satisfy, or at least get over, the mean plus function.

[00:19:03] Speaker 04:
Yes, we do bear that burden, Judge Hughes, and I think we carry it.

[00:19:06] Speaker 04:
Because if you look at the claim term, and I'm sure you have it in front of you, but this is the one.

[00:19:10] Speaker 04:
Let me ask you this.

[00:19:12] Speaker 05:
If instead of existing program, it had said,

[00:19:15] Speaker 05:
And clearly, they don't want to do this because they don't want to limit it.

[00:19:18] Speaker 05:
But they had given a list of defined existing programs, like Microsoft Word and Excel spreadsheet and a list of 10 other things.

[00:19:28] Speaker 04:
Would that still be indefinite?

[00:19:31] Speaker 04:
I think that would get them closer.

[00:19:33] Speaker 04:
I think you might be in the step two of the analysis.

[00:19:37] Speaker 04:
So if they listed those programs in the specification, it's possible.

[00:19:42] Speaker 04:
that then the claim would be limited to that disclosed structure.

[00:19:48] Speaker 05:
What if they put them in the claims?

[00:19:50] Speaker 04:
If they put them in the claims, I think that would be, again, a closer case.

[00:19:55] Speaker 04:
But how could it be a close case at all?

[00:19:58] Speaker 05:
Because here, it would be identifying specific programs that we know have specific algorithms.

[00:20:04] Speaker 05:
They don't have to disclose those, do they?

[00:20:06] Speaker 05:
I mean, they may not even have control over what those programs

[00:20:10] Speaker 05:
the code in them is.

[00:20:11] Speaker 04:
Judge Hughes, the test would be, is it a name for structure?

[00:20:14] Speaker 04:
And is it a name for structure adequate to perform the function?

[00:20:18] Speaker 04:
OK, so we don't have any.

[00:20:20] Speaker 05:
This is what I don't get, because you're directing your argument at existing programs, not at the user interface, which is a different story.

[00:20:27] Speaker 05:
But existing programs refers to, unless you're disputing this, but it seems to refer to me to any kind of program that can operate on a computer using a pointer.

[00:20:40] Speaker 05:
And those things are out there and they exist.

[00:20:43] Speaker 05:
They have structure.

[00:20:44] Speaker 05:
They have code.

[00:20:45] Speaker 05:
They've been written.

[00:20:47] Speaker 05:
The fact that it's a broad category doesn't seem to me to render it functional claiming.

[00:20:51] Speaker 05:
It's referring to actual software code already in existence.

[00:20:57] Speaker 05:
Why isn't that the best way to look at this?

[00:20:59] Speaker 04:
Judge Hughes, I think that question is best answered by reference to the specification.

[00:21:02] Speaker 04:
So if you look at appendix 72, column 12,

[00:21:12] Speaker 04:
Line 6.

[00:21:22] Speaker 04:
The specification says, thus the zero-click methods may be applied comprehensively to all existing software and all future software development.

[00:21:32] Speaker 04:
And it goes on there to talk about that this applies to all software and is defined functionally.

[00:21:39] Speaker 04:
So when you look at the specification, you don't see a specific list of kind of brand name programs.

[00:21:45] Speaker 04:
What you see is further functional claiming.

[00:21:48] Speaker 04:
They are saying that this program works with all existing software that can perform these functions.

[00:21:55] Speaker 04:
That, again, is functional claiming.

[00:21:57] Speaker 04:
There's no structure.

[00:21:58] Speaker 04:
There's no specification as to how these existing programs perform this function.

[00:22:03] Speaker 04:
And that's critical, because this is not just ring addresses.

[00:22:05] Speaker 05:
Well, is that really true, because it has the further

[00:22:08] Speaker 05:
limitations in the claim itself about programs that operate the movement of pointers.

[00:22:14] Speaker 05:
So it's not any program that exists or can conceivably exist in the future.

[00:22:20] Speaker 05:
It's ones that use a pointer.

[00:22:22] Speaker 05:
And this is a way, a new way for controlling those programs without a mouse.

[00:22:27] Speaker 04:
It's programs that can use the pointer.

[00:22:29] Speaker 04:
So it's defined in purely functional terms, not in structural terms.

[00:22:33] Speaker 04:
It's talking about programs that have this functional capability.

[00:22:36] Speaker 04:
That is pure functional claiming because there's no indication in either the claim term or in the specification as to structure, as to how these programs do that.

[00:22:46] Speaker 04:
And that's critical because this is not just kind of an irrelevant backdrop.

[00:22:50] Speaker 04:
The whole point of the invention is to allow the selection of functions based on pointer movement.

[00:22:57] Speaker 04:
And what does the pointer movement?

[00:22:59] Speaker 04:
The existing program.

[00:23:00] Speaker 04:
So this existing program provides antecedent basis to... How would you write this claim?

[00:23:05] Speaker 05:
Because, I mean, I'm really confused about what... Because they're not... They don't care what these programs specifically do.

[00:23:12] Speaker 05:
They care that they use a mouse to operate a pointer.

[00:23:16] Speaker 05:
And they've invented a new way of doing that that doesn't require a mouse and doesn't require clicking.

[00:23:21] Speaker 05:
And so how would you write these claims to make them definite without saying exactly this or without making them

[00:23:29] Speaker 05:
recite a laundry list of existing programs.

[00:23:32] Speaker 04:
I don't think a laundry list would be required.

[00:23:34] Speaker 04:
There have to be some indication in either the claim elements or in the specification about how these existing programs operate the pointer.

[00:23:42] Speaker 04:
And I think that goes to the kind of core policy.

[00:23:44] Speaker 04:
Why?

[00:23:44] Speaker 05:
They don't care.

[00:23:45] Speaker 05:
They're inventing a new way to operate the pointer.

[00:23:47] Speaker 05:
They don't care how the existing programs do it.

[00:23:49] Speaker 05:
They've invented a way of doing it with movement alone rather than a click.

[00:23:54] Speaker 05:
So however those existing programs do it,

[00:23:57] Speaker 05:
I mean, there may be some other serious problems here with this patent, but I mean, there may be written description problems and all kinds of things, but they could care less whether the code in Microsoft Word operates on a mouse pointer in one way and the code in Excel does it another way, although they're Microsoft, so they probably do it the same way.

[00:24:16] Speaker 05:
They're doing it a new way, and they're, I assume, laying some kind of over-face over the existing programs.

[00:24:24] Speaker 04:
Right.

[00:24:24] Speaker 04:
They may not care.

[00:24:25] Speaker 04:
In fact, they're perfectly happy to have this kind of broad functional claim.

[00:24:28] Speaker 04:
But other inventors would care.

[00:24:31] Speaker 04:
And the reason for that, as explained by this court's decision in Arista, Kraus, and others, is that when you're talking about specialized functions on a computer, computers can do many different things in many different ways.

[00:24:43] Speaker 04:
And one can't claim the function.

[00:24:45] Speaker 05:
But they're not operating the functions in the same way the programs are.

[00:24:50] Speaker 05:
They've invented a new way to do it, and that's clear, isn't it?

[00:24:54] Speaker 05:
We're not talking about their graphical user interface being means plus function claiming, are we?

[00:25:02] Speaker 04:
No, but we're talking about what the graphical user interface uses to move the pointer.

[00:25:08] Speaker 02:
Don't we have a real serious preemption situation here?

[00:25:13] Speaker 02:
If you're allowed to claim all existing software,

[00:25:20] Speaker 02:
that does something like that moves a pointer.

[00:25:24] Speaker 02:
And then in your patent, you also claim or you also say that this is going to apply to all future software development.

[00:25:32] Speaker 02:
It seems to me that unless you have some sort of algorithm that tethers that claim to how you're going to perform this particular function, then in essence, you're claiming all future functions that relate to the movement of a mouse.

[00:25:47] Speaker 02:
And who knows what the future holds there.

[00:25:50] Speaker 02:
And how can this particular claim contemplate that it's going to apply to all future developments with respect to the use of a pointer?

[00:26:01] Speaker 02:
Perhaps in the future, we can do it with a glance of our eye.

[00:26:05] Speaker 04:
Just right, Judge Raina.

[00:26:06] Speaker 04:
So that's the point that Aristocrat makes, that because computer functions can be implemented in many different ways, one can't claim that the function

[00:26:16] Speaker 04:
And if I'm an inventor down the road who invents a new way of moving a pointer, perhaps with the movement of my eye under zero clicks view, then that would be covered by this invention.

[00:26:27] Speaker 04:
Even though it didn't identify that mechanism for moving a pointer in these claim terms or in this specification, it's simply broadly claimed the function itself.

[00:26:36] Speaker 01:
So you're not making an argument here that there is indefiniteness as to

[00:26:43] Speaker 01:
how to make movement serve the function of a click.

[00:26:47] Speaker 01:
That's not what the claim phrase here is about.

[00:26:52] Speaker 01:
You are entirely making an argument about the existing program that can operate the movement of the pointer.

[00:27:01] Speaker 01:
It's not an argument about insufficient definition of how to do the new thing.

[00:27:08] Speaker 04:
Yes, with the qualification, Judge Toronto, it's insufficient structure

[00:27:12] Speaker 04:
for how to do that.

[00:27:14] Speaker 01:
How to do what?

[00:27:15] Speaker 04:
How to move the pointer.

[00:27:16] Speaker 04:
How to move the pointer.

[00:27:17] Speaker 04:
If one claims function and there's no kind of operating environment.

[00:27:21] Speaker 01:
But that's not the new thing.

[00:27:25] Speaker 04:
The new thing interacts with the old thing.

[00:27:27] Speaker 04:
That's the core of the invention, is using that movement of the pointer to select functions.

[00:27:33] Speaker 04:
And that existing software, that existing program, provides antecedent basis to

[00:27:38] Speaker 04:
dependent claims 22 and 40, which are only about the existing program.

[00:27:43] Speaker 04:
The existing program isn't just window dressing.

[00:27:45] Speaker 05:
Now it sounds to me like you're saying that the user interface itself is indefinite.

[00:27:50] Speaker 05:
Well, we think there are other problems with this patent.

[00:27:52] Speaker 05:
But that's not the argument we have up here, and that's not what you convinced the district court to buy off on.

[00:27:56] Speaker 04:
No, we have other arguments that would be addressed by the district court in the event of a remand.

[00:28:01] Speaker 04:
But the argument here is that this is an acclaim.

[00:28:03] Speaker 05:
So we're up here assuming that we know how the graphical user interface

[00:28:08] Speaker 05:
operates that it replaces a mouse click with just sheer simple movement.

[00:28:15] Speaker 05:
It's a two-step process.

[00:28:17] Speaker 04:
No, we don't know how the movement operates.

[00:28:20] Speaker 04:
We know what follows from the movement.

[00:28:23] Speaker 04:
The patent assumes the movement.

[00:28:25] Speaker 04:
It assumes there's some structure there for making that movement happen without disclosing what that structure is.

[00:28:32] Speaker 05:
Well, that's not the argument you've made.

[00:28:34] Speaker 04:
That is the argument.

[00:28:34] Speaker 05:
I don't understand how that's argument you've made at all.

[00:28:37] Speaker 05:
That's an argument

[00:28:38] Speaker 05:
that the graphical user interface itself is indefinite.

[00:28:42] Speaker 04:
The claim as a whole is indefinite because this core term is indefinite, Your Honor.

[00:28:47] Speaker 04:
They've chosen to identify to limit the scope of their question.

[00:28:50] Speaker 04:
Let me ask it another way.

[00:28:52] Speaker 05:
Sure.

[00:28:52] Speaker 05:
If this said a graphical user interface wherein it operates all existing Microsoft products, so we now have a closed specific list, would you still say this is indefinite?

[00:29:08] Speaker 05:
Or in that case, would graphical user interface be definite?

[00:29:13] Speaker 04:
If all these Microsoft products that can operate the movement of a pointer, I think that would be a much closer case.

[00:29:20] Speaker 04:
It probably wouldn't be indefinite.

[00:29:22] Speaker 04:
And why not?

[00:29:23] Speaker 04:
Well, because they've identified particular

[00:29:25] Speaker 04:
structure a class, a specifically named class of programs, indeed an off the shelf.

[00:29:30] Speaker 04:
But it doesn't tell you any more about what their graphical user interface does.

[00:29:34] Speaker 04:
No, but it tells me as a future.

[00:29:35] Speaker 05:
So we know what their graphical user interface does from, sorry, I'm keeping you over, but it seems to me the problem is you're going back and forth between the graphical user interface itself being sufficient structure without the program or not.

[00:29:50] Speaker 04:
No, but the program is the foundation of the claimed invention.

[00:29:54] Speaker 04:
that existing program provides antecedent basis to the rest of the claim, provides antecedent basis to the dependent claims.

[00:30:01] Speaker 04:
They chose, they didn't necessarily have to do this, but they chose to limit their claim and in their reply brief page four they say, oh no, we're not saying you can read it out.

[00:30:10] Speaker 04:
They chose to limit their claim

[00:30:12] Speaker 04:
to a graphical user interface that could function with and take advantage of and leverage the operation of a group of existing programs.

[00:30:21] Speaker 04:
But they didn't define that group with specificity, and they defined it in functional terms, purely functional terms, and the intrinsic record provides no evidence that there is any structure.

[00:30:32] Speaker 04:
There's no claimed structure that renders it indefinite.

[00:30:34] Speaker 02:
All right, Mr. Powell, I think we got that.

[00:30:38] Speaker 02:
Thank you.

[00:30:41] Speaker 02:
Mr. Leto will restore you to four minutes of your time.

[00:30:44] Speaker 03:
Thank you, Your Honor.

[00:30:46] Speaker 03:
I want to start a little bit where I think some of the discussion with my friend ended relating to the relevant understanding of the claim itself.

[00:30:56] Speaker 03:
So Judge Raina, you asked a question about the claim essentially being claimed to cover all possible software that does anything.

[00:31:03] Speaker 03:
Respectfully, the part of the claim we're discussing, the existing program claim element,

[00:31:09] Speaker 03:
is really referring to what comes before and what could be modified.

[00:31:13] Speaker 03:
The remainder, the body of the claim, which is not really before the court, and none of those terms are at issue, is what actually defines the invention and sets forth the specific mechanisms of operation and, if you will, an algorithm for how to control a pointer using the new invention.

[00:31:29] Speaker 03:
That's not before the court.

[00:31:31] Speaker 03:
So we get to the elements about midway through the claim, wherein said GUI, graphical user interface,

[00:31:38] Speaker 03:
executes one or more functions by the completion of the following set two-step method and then it walks through the steps of the inventive method of controlling things through movement as opposed to clicks.

[00:31:50] Speaker 03:
That's clearly what the invention is about.

[00:31:52] Speaker 03:
The fact is that's an invention that has broad application potentially to lots of different programs or operating systems, if you will, that could be modified to be controlled in this different method.

[00:32:04] Speaker 03:
The specification actually

[00:32:06] Speaker 03:
it's quite lengthy, but the inventor actually describes himself modifying a tablet type device with a touchscreen to, he was a medical doctor and he wanted a better way to input patient charting information, and so he actually modified the interface of his own device.

[00:32:23] Speaker 02:
So are you saying that that's the structure that defines a program that can operate the movement of a pointer?

[00:32:29] Speaker 03:
No, I'm saying that that's the structure that defines the invention.

[00:32:34] Speaker 03:
program that can operate the movement is a reference to an existing essentially prior art program and the environment in which the inventive method.

[00:32:43] Speaker 02:
I understand that but so what you're saying is that there is no structure that defines a program that can operate the movement of a there's no additional structure or I think that well I have two responses that first I think that that is a sufficient recitation in and of itself of

[00:33:02] Speaker 03:
To the extent structure is required, given the context of the claim, I think that's a sufficient reference to structure.

[00:33:08] Speaker 03:
I think that also to argue that it's not is a burden that Apple bears and for which it came forward with no evidence, and that under this court's precedence that would mean that the burden has not been carried, that 112.6 applies.

[00:33:22] Speaker 03:
I would, however, suggest that there is elsewhere in the specification further discussion of such programs

[00:33:28] Speaker 03:
So at column three, unsurprisingly, it occurs in the background of the invention section because that's exactly what we're talking about.

[00:33:36] Speaker 03:
But much of column three is about such existing programs.

[00:33:40] Speaker 03:
We referenced in the brief the first portion of column three at lines one to about 11.

[00:33:45] Speaker 03:
There's more discussion of this starting around line 34, 35 that further discusses such existing programs.

[00:33:53] Speaker 03:
But again,

[00:33:54] Speaker 03:
This is in the context of what's in the art, what's changed by the invention, not what is the invention.

[00:34:03] Speaker 03:
And I do think, as I mentioned, that the burden issue is important to the question that I think was asked about the change to making program essentially a nonce word, to creating a new precedent, which is what Apple's asking, that the words program or program code

[00:34:21] Speaker 03:
are essentially nonce words.

[00:34:23] Speaker 02:
Well, so setting aside whether program is a nonce word or not, in aristocrat, we did say that if you claim a program, you have to show some sort of algorithm.

[00:34:33] Speaker 02:
You have to show how.

[00:34:35] Speaker 03:
I would actually disagree with that characterization of aristocrat.

[00:34:38] Speaker 03:
So in aristocrat, I think what this court said was, if you claim just a function,

[00:34:44] Speaker 03:
Unlimited, could be hardware, could be software.

[00:34:47] Speaker 03:
So if you said a mechanism for doing something, or a means for doing something.

[00:34:51] Speaker 02:
Or just a program.

[00:34:52] Speaker 03:
No, actually, that's not what aristocrat said.

[00:34:54] Speaker 02:
No, but I mean, to go along with what you're saying, I'm putting that into the list.

[00:34:59] Speaker 03:
Well, but I disagree.

[00:35:01] Speaker 03:
Because I think this court's MIT cases would say, if in aristocrat you had said a circuit for doing this, that wouldn't be means plus function.

[00:35:08] Speaker 03:
That's not under 112.6.

[00:35:10] Speaker 03:
And the same should be true of program.

[00:35:12] Speaker 03:
for the same basic reasons, because you no longer, if you say means, could be hardware, could be software, could be anything.

[00:35:19] Speaker 03:
But if you say circuit, it has to be a circuit.

[00:35:21] Speaker 03:
It has to be hardware.

[00:35:23] Speaker 01:
What was the language in aristocrat that was that on?

[00:35:25] Speaker 03:
Aristocrat, your honor, used means.

[00:35:27] Speaker 03:
It was actually recited as a means.

[00:35:31] Speaker 03:
And Apple similarly points to the media rights, excuse me, yes, the media rights technology case, which also was a claim.

[00:35:38] Speaker 02:
So after Williamson,

[00:35:40] Speaker 02:
The word means is not used.

[00:35:41] Speaker 02:
An aristocrat doesn't apply any time the word program is claimed.

[00:35:49] Speaker 03:
I think, Your Honor, there may be other interpretive questions about what the claim covers, but I think 112.6 is not the appropriate framework if you recite a program for doing something

[00:36:01] Speaker 03:
in the same way that you recite a structure.

[00:36:03] Speaker 02:
So aristocrat is still good law.

[00:36:05] Speaker 03:
Absolutely.

[00:36:06] Speaker 03:
But in aristocrat, the difference is when you say anything, in aristocrat, what that's addressing is cases where parties would say, well, our specification references a generic computer or a processor.

[00:36:19] Speaker 03:
And that's structure.

[00:36:20] Speaker 03:
So that's good enough.

[00:36:21] Speaker 03:
And the court in aristocrat said, no, you have to be talking about a specially programmed processor.

[00:36:27] Speaker 03:
And to say that that's your corresponding structure, you have to disclose what the programming is in some form, what that algorithm is.

[00:36:34] Speaker 03:
Here, we're not saying it's any computer, any processor that can perform these functions.

[00:36:39] Speaker 03:
It's got to be particular code.

[00:36:41] Speaker 03:
And the code is the structure.

[00:36:43] Speaker 03:
It's excluding the universe of hardware.

[00:36:45] Speaker 02:
Any questions?

[00:36:46] Speaker 02:
OK.

[00:36:47] Speaker 02:
We thank you very much.

[00:36:48] Speaker 02:
Thank you.

[00:36:48] Speaker 02:
We got the argument.