[00:00:00] Speaker 00:
The next event is 20-1831, Grecia versus Samsung Electronics.

[00:00:05] Speaker 00:
Mr. Warson, whenever you're ready.

[00:00:10] Speaker 03:
Thank you.

[00:00:11] Speaker 03:
Good morning, Your Honors.

[00:00:12] Speaker 03:
Matt Warson for William Grecia.

[00:00:16] Speaker 03:
Claim 1 of the 308 patent is eligible for patent because... Mr. Warson?

[00:00:24] Speaker 03:
Yes.

[00:00:25] Speaker 01:
This is Judge Wallach.

[00:00:26] Speaker 01:
I have a couple of little questions about Claim 1.

[00:00:30] Speaker 01:
Samsung says that claim one doesn't require anything other than a conventional computer and network components operating according to their ordinary functions such as apparatus, a CPU, a data store, a memory, storage, a database, and the internet.

[00:00:49] Speaker 01:
Are any of those components not well known in the prior arc?

[00:00:53] Speaker 01:
That's a yes or no.

[00:00:55] Speaker 01:
They are not well known, Your Honor.

[00:00:59] Speaker 01:
Which of those components is not well known?

[00:01:02] Speaker 03:
I would point to two aspects that are inventive.

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The first one would be the separation of the verification token database and the database apparatus.

[00:01:14] Speaker 01:
Orson, did you hear my question?

[00:01:17] Speaker 01:
I've listed apparatus, CPU, a data store, a memory, a storage, a database, and the internet.

[00:01:29] Speaker 01:
Are any of those components not well known in the prior art?

[00:01:35] Speaker 03:
Your Honor, the architecture and the configuration of the two databases that I was referring to is novel and inventive.

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And so the other aspect would be the issuance of API keys to the apparatus of A.

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In claim one, this is claimed as the credential.

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Those two aspects are inventive in our novel and do go directly to the solution that claim one is directed to.

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The prior art, and the 308 patent goes into this, the prior art suffered from the problem of tying access to digital content to a device.

[00:02:22] Speaker 02:
This is Judge Chen.

[00:02:23] Speaker 02:
This is Judge Chen.

[00:02:25] Speaker 02:
I mean, we understand that you have an argument, and the argument is that there's something about the combination of all these claim elements that, in your view, is amounts to an event of concept.

[00:02:38] Speaker 02:
But I don't understand that to be Judge Wallach's question.

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Judge Wallach's question is there are certain components, individual components, recited throughout this lengthy claim.

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Examples like the apparatus, element A,

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CPU and a database and API communication, each of those elements that I just decided that are from the claim, all of those are conventional.

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Would you agree with that?

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In the sense that, if I could analogize to the Enfish case, Your Honors, in that case,

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the claim was directed to a self-referential database.

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Everyone would agree that a database in and of itself was not inventive.

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And I would concede that Mr. Grisha did not invent API keys.

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He did not, of course, invent databases.

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But much the same way as in ENFISH,

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the claim was directed to the solution, that being a new kind of database.

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What Mr. Grecia did here in claim one is teach specifically how to organize, teaching the artisan how to organize these various components, which may have been invented already, but had never been used in this way.

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And so,

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the claim itself is directed specifically at the solution to the problem that I was highlighting.

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And that is your digital content had been tied to the device itself.

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The solution, which every limitation in this claim is geared towards, is how do you associate a permission to the digital content with a trustworthy

[00:04:44] Speaker 03:
data point identifying someone's identification.

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And if you walk through the claim there, as we highlight in the brief, there are at least nine limitations, which were ignored, which teach precisely what you have to do to achieve this result.

[00:05:02] Speaker 02:
And if I could focus on two of them.

[00:05:05] Speaker 02:
One question I had was, I understand that your theme of your argument is that this claim convention permits

[00:05:12] Speaker 02:
what you refer to as interoperability, the ability to access some digital media content from a lot of different devices and not just one device.

[00:05:23] Speaker 02:
And as I was reading through the claim, it wasn't so clear to me why that is so, given that all the limitations are really tethered to, quote unquote, the apparatus of A. That is, the apparatus resided in limitation A.

[00:05:40] Speaker 02:
And so if anything, the claim feels like it's rooted to that particular apparatus.

[00:05:48] Speaker 02:
And that is the means of accessing the digital media.

[00:05:54] Speaker 02:
And so could you just quickly explain what is it about this claim invention that permits, if there's something you can show me in the claim that provides this interoperability result that you're referring to.

[00:06:10] Speaker 03:
Yes, Your Honor, I would point to the claim language itself and the definition of... Right, where?

[00:06:19] Speaker 03:
Excuse me?

[00:06:20] Speaker 03:
Where?

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Appendix 55, column 14, starting at line 34, and down to line 44, the apparatus of A is defined, and you'll see the

[00:06:40] Speaker 03:
detail provided to an apparatus of A, and the claim itself does not limit the apparatus of A to, for example, a client device, which I think, Judge Chen, I think your question was getting at.

[00:06:59] Speaker 03:
Apparatus of A is not limited to the client device, but rather it is, the apparatus of A receives

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the access request, which is a write request to a data store, which, as the claim teaches, is a memory, a storage, or a database, quote, connected to the at least one CPU through the internet.

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And so the way the specification teaches the apparatus of A, in some embodiments, the apparatus of A is the content provider.

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And so the content provider is receiving, in the form of a write request, the verification token, which is a permission.

[00:07:51] Speaker 02:
Let me ask a different question.

[00:07:54] Speaker 02:
We're losing time here.

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In the end, there's some data object that's created in this claim.

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Is that right?

[00:08:04] Speaker 02:
Correct, Your Honor.

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And then there's a where-in clause at the very end of the claim?

[00:08:12] Speaker 02:
Correct.

[00:08:15] Speaker 02:
Does somebody, in order to infringe this claim, do you have to perform the where-in clause, all the things that are recited in the where-in clause?

[00:08:25] Speaker 02:
Yes, Your Honor.

[00:08:27] Speaker 02:
OK, so the claim is not just for creating a data object.

[00:08:34] Speaker 02:
The claim also requires that you use

[00:08:38] Speaker 02:
data object in the ways that are recited in the wear-in clause?

[00:08:44] Speaker 03:
That's correct, Your Honor.

[00:08:45] Speaker 02:
And a key element of this claim is that the claim seeks to... Why is that so when wear-in clauses are... I'm sure you're a patent lawyer, so you must know.

[00:08:59] Speaker 02:
They can be a rather mischievous thing in terms of understanding whether they get patentable weight or not, because oftentimes they're just

[00:09:08] Speaker 02:
descriptions of the context of what the claims thing might actually be used for, but it's not actually an active limitation that gets any weight.

[00:09:22] Speaker 02:
And why is that so here?

[00:09:25] Speaker 03:
If you read the claim in full, the preamble says that this is a process covering the transformation of the access request

[00:09:35] Speaker 03:
to this computer readable authorization object, then the claim itself.

[00:09:39] Speaker 02:
Right, so you would think, therefore, that the end of the process, the claim process, is the creation of that data object itself, not the further application of that object in some other process.

[00:09:54] Speaker 03:
Well, if you go to the description, the definition of what that computer readable authorization object is,

[00:10:03] Speaker 03:
and this is column 15, line seven, I'm sorry, eight, but it defines the attributes of this computer readable authorization object, which grants subsequent access to the cloud digital content.

[00:10:26] Speaker 03:
And so a key point here is that the claim, the process,

[00:10:31] Speaker 03:
the computer readable authorization object is one of authorization of access.

[00:10:38] Speaker 03:
Access is not granted, but this object can be used in the future to grant authorization, to grant, I'm sorry, grant access to the cloud digital content in the future.

[00:10:54] Speaker 02:
And so- Just looking at limitation F, what needs to be stored in this data object?

[00:11:00] Speaker 02:
both the verification data and the received query data?

[00:11:08] Speaker 02:
Well, I ask because the claim just says at least one of, which means to me this claim encompasses storing either verification data or query data or both types of data, but it doesn't require both.

[00:11:29] Speaker 02:
Does it require both?

[00:11:34] Speaker 03:
The language itself would support either or or both.

[00:11:44] Speaker 02:
OK.

[00:11:45] Speaker 02:
So if you've just stored nothing more than the received verification data, that's encompassed by this client.

[00:11:58] Speaker 03:
I think that you could support that reading, Your Honor, with the claim language.

[00:12:08] Speaker 02:
Isn't that the prior art?

[00:12:12] Speaker 03:
No, that is not the prior art, Your Honor.

[00:12:14] Speaker 03:
And the reason we believe it's not the prior art and the Patent Office believes it's not the prior art is because of the separation

[00:12:26] Speaker 03:
of the two databases, the verification token database and the verified web service, as well as the trustworthy communication that the claim teaches in order to obtain the identification information.

[00:12:42] Speaker 03:
And so what would be prior, Your Honor, is the first two steps, if there were nothing else, that is receiving a request for permission to the content and authenticating it.

[00:12:56] Speaker 03:
But where the novelty is, and where the solution is directed, is obtaining the identification information through this trustworthy communication.

[00:13:07] Speaker 03:
That is, with a credential being assigned to the apparatus of A, or the content provider as it's taught, so that the content provider, the apparatus of A, can request and receive

[00:13:23] Speaker 03:
someone's membership account information or the verified web service account identifier.

[00:13:29] Speaker 03:
I think I'm into my rebuttal time.

[00:13:35] Speaker 03:
Thank you.

[00:13:36] Speaker 04:
Thank you, Your Honor.

[00:13:42] Speaker 04:
Michael Hawes for the appellee, Samsung Electronics America.

[00:13:46] Speaker 04:
I'd like to start with a few of the points made in the questions in the back and forth

[00:13:51] Speaker 04:
For example, there was the question about whether a database is a routine item, a known conventional item.

[00:13:59] Speaker 04:
And the response was that this was somehow a special database.

[00:14:04] Speaker 04:
And I'd like to point the court to the appendix, specifically at appendix page 52, which in column 8 from lines 53 to 56, discusses the databases and refers to a database

[00:14:21] Speaker 04:
with another database.

[00:14:23] Speaker 04:
So about as generic as you can get with respect to describing the databases.

[00:14:27] Speaker 04:
And that's consistent with the figures.

[00:14:30] Speaker 04:
So figure three through figure five in the appendix from pages 44 to 46.

[00:14:36] Speaker 04:
Also, just generic black box databases.

[00:14:40] Speaker 04:
And finally, in column nine, so now we're in appendix page 53, it says, according to an embodiment of the present invention,

[00:14:51] Speaker 04:
The tokens are stored in a relational database, such as MySQL or Oracle.

[00:14:57] Speaker 04:
So even in a particular embodiment, all we really have is a relational database, very conventional, very generic.

[00:15:07] Speaker 04:
There is no reference to a special database.

[00:15:11] Speaker 04:
These are standard computer components defined generically and very broadly.

[00:15:18] Speaker 04:
Judge Wallach, following up on your question about whether this

[00:15:21] Speaker 04:
claim is multi-device, certainly the preamble, as you pointed out, shows that the claim merely is discussing taking some data and processing it to create other data.

[00:15:36] Speaker 04:
And in fact, in the blue brief on page 30 in the summary of the argument, the appellant describes it in the same way.

[00:15:44] Speaker 04:
Claim one of the 308 patent transforms an access request for cloud digital content

[00:15:51] Speaker 04:
into a computer readable authorization object.

[00:15:54] Speaker 04:
Start with data, create data.

[00:15:58] Speaker 04:
And what are the middle steps?

[00:16:00] Speaker 04:
The middle steps here are a number of conventional lookups and queries to databases.

[00:16:07] Speaker 04:
Now, we heard a lot in the briefing and a little bit here in argument about how step C of the claim has six different steps for how you access API communication.

[00:16:19] Speaker 04:
But I would point the panel again to page 53 of the appendix in the patent.

[00:16:25] Speaker 04:
And in column 10, you'll see there's the discussion of what you have to do with regard to an API.

[00:16:32] Speaker 04:
Starting at line 12, an API is a set of routines, data structures, object classes, in order to support the building of applications.

[00:16:44] Speaker 04:
Importantly, it is very clear from the discussion here

[00:16:48] Speaker 04:
that the APIs are pre-existing.

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They're meant for communication.

[00:16:53] Speaker 04:
They're meant to have the type of password protection, username, the credentials that the appellant puts so much store in.

[00:17:02] Speaker 04:
And in fact, they're so conventional that even for an internet type of conventional communication, the patent itself points at line 24 through 20.

[00:17:15] Speaker 04:
It looks like 28.

[00:17:18] Speaker 04:
to a book from several years previous that, according to the patent, can give you more details about how to do an API communication.

[00:17:27] Speaker 02:
Mr. Hawes, this is Judge Chen.

[00:17:29] Speaker 02:
I think we can all agree that the various individual recited elements, CPU, a database, APIs, they're all basic.

[00:17:43] Speaker 02:
That's fine.

[00:17:44] Speaker 02:
But as I'm hearing what the other side is arguing,

[00:17:49] Speaker 02:
It's how those elements are used and arranged to create some kind of access mechanism that is the interesting thing here.

[00:17:58] Speaker 02:
And now we've created in this claim invention an improved access mechanism by combining different sources of data from different databases to create a trusted access mechanism.

[00:18:19] Speaker 02:
Really, I think it feels like that's where the issue may lie here as to whether what has been created here is an improved access mechanism through combining data from different sources of data.

[00:18:39] Speaker 02:
So could you please speak to that?

[00:18:41] Speaker 04:
Happy to, Your Honor.

[00:18:42] Speaker 04:
I think we addressed in the brief this idea that you can get out of abstraction

[00:18:48] Speaker 04:
by collecting and storing data.

[00:18:52] Speaker 04:
And I think the district court judge actually did an excellent job in looking to data engines on this point.

[00:18:59] Speaker 04:
In the district court opinion, the district court looked at the data engine's opinion and said, this opinion has both claims that the court, the federal circuit found eligible and claims that it found ineligible.

[00:19:12] Speaker 04:
And frankly, that makes data engines a very useful case.

[00:19:16] Speaker 04:
for 101 analysis, because it's one of the few cases that has that line drawn between the claims that are eligible and the claims that are ineligible.

[00:19:25] Speaker 04:
And in the data engines case, the claim that was found ineligible, which your honor, actually there were several, but the first one that's discussed, which is claim one of the 551 patents found in that case on pages 1011 and 1012,

[00:19:44] Speaker 04:
That claim has the same type of collecting multiple pieces of information and storing them in a particular way that according to the specification is useful.

[00:19:56] Speaker 04:
But that's the very claim that data engines found was ineligible because merely collecting data and storing it does not get you outside of abstractness when it's done using generic computer components.

[00:20:13] Speaker 04:
And not only is that, you know, the analysis that the district court went through saying, I'm looking at these different claims in data engines and finding that your one claim is closer to the ineligible ones, it's the analysis that's completely unrebutted in the briefing on appeal.

[00:20:31] Speaker 04:
The appellant never or certainly doesn't rebut any of the analysis of the district court with respect to the claims found ineligible in data engines.

[00:20:42] Speaker 04:
And there are other cases such as the intellectual ventures case that we cited as well as I believe the TCL case where the same idea of just collecting data and putting it, storing a collection of data, that does not get you out of abstractness.

[00:21:00] Speaker 04:
And especially where here, you know, the district court correctly said, look, this is just using computers to do something very similar to what's been done in the past.

[00:21:11] Speaker 04:
As was pointed out in the questioning, the at least one limitation in that claim one is such that this claim could even cover storing just the information that was provided in the request.

[00:21:26] Speaker 04:
And there's really no requirement that this claim go beyond that.

[00:21:29] Speaker 04:
Now, the district court, you know, because this is a dismissal, the district court did its analysis assuming that both pieces,

[00:21:37] Speaker 04:
of data were being stored as part of this object.

[00:21:42] Speaker 04:
But the reality is that this claim using its at least language doesn't require that.

[00:21:47] Speaker 04:
And while the appellant had asserted that it did, it sounds like now during the oral argument, the appellant is now basically acknowledging that the claim doesn't even require that.

[00:22:01] Speaker 04:
I'd like next to hit that mischievous limitation that was discussed.

[00:22:06] Speaker 04:
which is that where in clause at the end of the claim.

[00:22:10] Speaker 04:
So first of all, it's important to note that as we just heard in the blue brief as well as in the preamble, this last limitation is not described as what is claimed in claim one.

[00:22:25] Speaker 04:
Claim one describes that it's just transforming a request into an object.

[00:22:30] Speaker 04:
And the blue brief at page 30 mimics that.

[00:22:33] Speaker 04:
And I note that the Simeo case, which was decided last week, and that case is, I'll give you the number for that, since it was last week, I don't have a citation with respect to the federal reporter yet.

[00:22:49] Speaker 04:
But it's case number 20-1171.

[00:22:51] Speaker 04:
The Simeo case actually had a similar kind of final limitation that,

[00:23:00] Speaker 04:
was kind of left out when it came to the preamble and when it came to the plainest description of what the importance of the claim was.

[00:23:09] Speaker 04:
And this final mischievous where-in clause is similar.

[00:23:13] Speaker 04:
If you read that where-in clause, first of all, it has no reference to multiple devices.

[00:23:19] Speaker 04:
It's referring back to the same generic apparatus with the CPU that we see in clause A.

[00:23:27] Speaker 04:
And all it says is that the computer readable authorization object is processed in the apparatus using a cross-referencing action during subsequent user access requests to determine one or more of a user access permission for the cloud digital content.

[00:23:51] Speaker 04:
We never access the cloud digital content.

[00:23:55] Speaker 04:
We never do anything but determine a permission.

[00:23:59] Speaker 04:
And that's exactly what we did in step B. Step B, which is the authenticating step, says, of course, that we use a database to verify this verification data.

[00:24:12] Speaker 04:
And that was construed to mean a permission.

[00:24:15] Speaker 04:
So when you read the wherein clause closely, it's basically saying,

[00:24:19] Speaker 04:
We just went through these steps where we checked your request data.

[00:24:24] Speaker 04:
We went and did a database lookup, and we stored the results.

[00:24:30] Speaker 04:
Well, the next time you send us a request, we'll just use the stored results to process your request.

[00:24:37] Speaker 04:
That's it.

[00:24:38] Speaker 04:
It's really just a use what we stored so you don't have to go get it again.

[00:24:43] Speaker 04:
That is just as in Simeo, a final step that doesn't add

[00:24:48] Speaker 04:
to the abstract data processing detailed in the rest of the claim.

[00:24:55] Speaker 04:
So I want to obviously respond to any questions that the panel has.

[00:25:00] Speaker 04:
But I think the district court did a great job here.

[00:25:03] Speaker 04:
I think the district court looked at the right guidance.

[00:25:06] Speaker 04:
This is a data processing claim, as even the appellant has admitted in the blue brief.

[00:25:12] Speaker 04:
And it doesn't add anything, because every piece of equipment

[00:25:17] Speaker 04:
is generic and used for its normal purpose.

[00:25:21] Speaker 00:
Thank you.

[00:25:23] Speaker 00:
Let's turn back to Mr. Warzen.

[00:25:26] Speaker 00:
You have three minutes of rebuttal time.

[00:25:29] Speaker 03:
Thank you, Your Honor.

[00:25:30] Speaker 03:
I'd like to pick up where Mr. Hawes just left off.

[00:25:35] Speaker 03:
I don't know why he's calling the wherein clause mischievous.

[00:25:39] Speaker 03:
And I believe he's reading the claim incorrectly, and it goes to this issue

[00:25:44] Speaker 03:
I was trying to highlight at the start, which is that the claim seeks to create an object for authorization for access.

[00:25:55] Speaker 03:
We're not accessing the data.

[00:25:58] Speaker 03:
That is the prior art where verification tokens were submitted, authenticated, access was granted.

[00:26:06] Speaker 03:
What this is is a gatekeeping function, creating this authorization object.

[00:26:13] Speaker 03:
and with subsequent processing of the authorization object, continually granting access, gatekeeping function, to the digital content, which is behind the gatekeeper.

[00:26:29] Speaker 03:
Now, with respect to only either or, either the verification token or the account identifier being written to the object,

[00:26:41] Speaker 03:
To infringe, you need to complete all the steps.

[00:26:46] Speaker 03:
And so, it's not even if only the verification token is stored, an infringer or a prior art that would purport to invalidate would need to perform each of the six steps, which you have to have the request and the receipt through a trusted source, through the credential,

[00:27:09] Speaker 03:
which is assigned and which I would note, a PAL-E doesn't even use the word credential in their briefing and that mirrors the district court's analysis which just overlooks all of these many different limitations which are required to achieve the solution to obtain membership account identifying information from a trusted source

[00:27:37] Speaker 03:
so that it can be associated with the permission to access digital content.

[00:27:43] Speaker 03:
And so that your gatekeeper, this computer readable authorization object, can stand in the way between the user trying to subsequently access his or her digital content.

[00:28:00] Speaker 03:
without questions from the panel.

[00:28:03] Speaker 02:
Mr. Warson, last question.

[00:28:06] Speaker 02:
Did you reach a settlement agreement with the banks, or did you just elect not to identify them in your appeal from the district court decision?

[00:28:15] Speaker 03:
We were attempting to settle the matter, Your Honor.

[00:28:20] Speaker 03:
We ended up not settling it.

[00:28:22] Speaker 03:
However, the banks did file an IPR, which has subsequently been terminated.

[00:28:29] Speaker 03:
That did go into the calculus on which of these appeals to take or not to take.

[00:28:37] Speaker 03:
And so I hope that answers your Honor's question.

[00:28:42] Speaker 00:
Thanks.

[00:28:43] Speaker 00:
Thanks.

[00:28:44] Speaker 00:
Time's up.

[00:28:45] Speaker 00:
We thank both sides.

[00:28:46] Speaker 00:
And the case is submitted.

[00:28:47] Speaker 00:
That concludes our proceedings for this morning.

[00:28:50] Speaker 00:
Thank you.

[00:28:52] Speaker 00:
The Honorable Court is adjourned until tomorrow morning at 10 AM.