IBM v. ZILLOW GROUP, INC.
Oral Argument — 06/07/2022 · Case 21-2350 · 39:53
0:00
Judge Reyna
That's 23-50.
0:05
Mr. Petnik?
0:07
Yes, sir.
0:08
Did I pronounce that correctly?
0:09
You did, Your Honor.
0:11
Okay.
0:12
And Ms. Peasley?
0:15
And I understand, let's see, you have said, I don't have an indication here of how much time.
0:24
Let me see that.
0:25
Appellant Attorney (Goutam Patnaik)
It was 11 minutes, Your Honor.
0:26
Judge Reyna
You have 11 minutes for rebuttal?
0:29
So you're saving four minutes for rebuttal?
0:32
Yes, that's correct.
0:33
Okay.
0:34
Mr. Petnik, we're ready.
0:37
You are.
0:38
Appellant Attorney (Goutam Patnaik)
Thank you.
0:39
May it please the Court, Gotham Petnik with John Damaris on behalf of IBM.
0:44
To find the 789 patent invalid under 101, the District Court violated the protections of Rule 12 jurisprudence,
0:51
warranting reversal of remand.
0:53
Specifically, the Court used extrinsic evidence sui sponte for derivative claim construction
0:58
and resolved a claim construction dispute highlighted in that evidence,
1:03
against IBM, instead of drawing all inferences in favor of IBM.
1:08
Although nominally accepting IBM's proposed claim construction for the term synchronizing,
1:12
the Court further construed the construction's use of automatically sui sponte using a Webster's dictionary
1:18
to find that automatically it could be met with updates made by someone other than the user
1:23
without exercising independent judgment.
1:26
The Court acknowledged that even the dictionary it used provided multiple meanings,
1:30
but it chose to use the meaning that did not draw all reasonableness,
1:33
reasonable inferences in favor of IBM, as it should have at this Rule 12 stage.
1:39
This can be seen at footnote 14 of the order, which is at appendix 30,
1:44
where the Court understands that IBM's proffered construction of synchronize would entail no human involvement,
1:50
but nonetheless focuses on Webster's use of without thought or conscious intention.
1:54
Judge Stoll
Mr. Petnik, I'm wondering, you're talking about the 789 patent right now, right?
2:00
Appellant Attorney (Goutam Patnaik)
Yes, Your Honor.
2:00
Judge Stoll
One of the concerns I have,
2:03
is that these claims, the specification, the expert declaration,
2:07
they talk about how it's important to update the list and the map,
2:11
synchronize them, have them update automatically at the same time.
2:15
But the patent specification does not talk about, for example,
2:19
why this was a difficult thing to do,
2:21
what the technological solution is in obtaining this,
2:24
why, you know, there's nothing about it.
2:26
Oh, this is why it was so difficult before.
2:27
This is what we had to jump through in order to make this happen.
2:30
Instead, it sounds more like a wish list.
2:32
Okay?
2:33
We want them to update at the same time.
2:35
Now we're going to claim updating them at the same time,
2:37
without any explanation of what, you know, was the improvement.
2:42
So it sounds, for that reason, like an abstract idea.
2:46
How do you respond to that?
2:48
Appellant Attorney (Goutam Patnaik)
Respectfully, Your Honor, if you turn to column two of the patent,
2:51
of the 789 patent, at line 55.
2:55
Well, the inventors specified that conventional systems,
2:59
I'm sorry, it's 58.
3:02
Conventional systems do not concur,
3:03
concurrently update the list display and map display.
3:06
Judge Reyna
Is that the page number you're giving us?
3:08
Appellant Attorney (Goutam Patnaik)
I'm sorry, it's appendix 55, Your Honor.
3:10
Judge Stoll
And it's column two, lines, say, 57-ish?
3:14
50, yeah, to 60.
3:17
But all that says is that conventional systems
3:20
do not concurrently update the display and map display.
3:24
And so now you're saying, if they don't do that, I want them to do it.
3:27
And there's no explanation of how it does it,
3:31
or, you know, the hurdles.
3:33
I mean, updating things at the same time was generally known, right?
3:41
Appellant Attorney (Goutam Patnaik)
Sure, Your Honor, but if you look at column six as well,
3:45
and I'm looking at appendix 57 at line 40,
3:49
the benefit of the concurrent updating,
3:52
it shows that it allows the users to view changes
3:55
made in either display concurrently across both displays,
3:58
which provides greater interactivity and selection capabilities.
4:01
Judge Reyna
You're not saying that's the claimed advantage,
4:03
Appellant Attorney (Goutam Patnaik)
It is in the claim, Your Honor.
4:05
Judge Reyna
It isn't, or the claim advance?
4:08
What's the claimed advance here?
4:10
Appellant Attorney (Goutam Patnaik)
I'm sorry, Your Honor.
4:11
Judge Reyna
What advance are you arguing has been achieved by the patent?
4:17
Appellant Attorney (Goutam Patnaik)
The focus is twofold.
4:20
It is the user selection of the area,
4:22
coupled with the concurrent updating to modify what synchronize means.
4:27
If you look at the claim, synchronize is described with some particularity,
4:30
and it refers to the concurrently,
4:33
concurrent updating of both the selections.
4:35
Judge Reyna
You're not claiming synchronization as a method, are you?
4:39
Appellant Attorney (Goutam Patnaik)
Well, Your Honor, if you look at appendix in the prosecution history,
4:43
2240 and 2241,
4:46
this is the invention disclosure that was provided with this application.
4:51
And if you look at the main idea of disclosure on 2240,
4:55
the inventors acknowledge that quite a bit of art surrounds selecting a polygon on a map,
5:01
but none of it deselects the area outside.
5:04
This is all trying to get more relevant information presented to the user.
5:08
The deselection was not done before, as shown in the prosecution history.
5:13
Judge Stoll
I thought there was an omission somewhere that the selecting of an area on a display itself
5:19
was not the point of the claims, or maybe it was conventional.
5:25
Am I wrong about that?
5:27
Appellant Attorney (Goutam Patnaik)
I think it's this language we're pointing to, Your Honor, right now,
5:30
where it says quite a bit of art around selecting a polygon on a map.
5:34
It's the same selection.
5:36
But I would argue that Berkheimer counsels that even if it was known in the art,
5:41
it doesn't mean it's not inventive when it's combined with the rest of the claim.
5:45
And so does BASCOM.
5:49
Judge Hughes
So I'm still a little confused as to what you're saying is non-abstract in these claims.
5:56
Because it still sounds to me like what you're saying is
5:59
having the user determine parameters to generate data and to display the data in a certain way.
6:06
And I think,
6:07
almost all of our cases that have addressed selecting, characterizing, and displaying data
6:14
have not found any of those to be directed to eligible ideas.
6:18
We found them abstract.
6:21
So what's non-abstract in synchronizing the data when you display it?
6:26
Appellant Attorney (Goutam Patnaik)
I would focus on the concurrently updating for the selection and deselection
6:30
because that is something that's not done in any context other than the computer context,
6:34
which is what these claims are directed to.
6:37
Because you can't do that simultaneously in the real world.
6:41
And I think the courts, the lower courts' use of a map and scissors and paper shows
6:47
that's more consecutive than concurrent, updating the map and the elements.
6:52
Judge Reyna
Go ahead.
6:53
Why is it you say you can't do that in real life?
6:56
If you ask me, Lincoln, Nebraska, I'll pull out a map of Nebraska,
7:04
then I'll pull out a map of a particular county,
7:06
then I'll pull out a map.
7:08
I'll pull out a map of the city of Nebraska.
7:10
I've synchronized my search.
7:15
Appellant Attorney (Goutam Patnaik)
Your Honor, the inventions here are directed to having two displays up simultaneously,
7:19
the list and the map, and updating both based on changes in either.
7:23
And that can only be done, the synchronized map method claimed here is done in real time.
7:30
That's the use of the word concurrent.
7:31
I think the use of any maps that do it sequentially read out the word concurrent,
7:36
which would be improper for the claim.
7:39
And I think that's what the court did with its use of a paper map, and I think that's what...
7:43
Judge Reyna
So you're saying this does it faster?
7:45
Appellant Attorney (Goutam Patnaik)
No, Your Honor, it's not just faster, because this is a problem unique to the computer.
7:50
It's a technique that only is available in the computer context.
7:54
Judge Reyna
How does that improve computer technology?
7:57
Appellant Attorney (Goutam Patnaik)
Well, it's improving a GUI, much like data engine and core wireless.
8:02
Judge Stoll
When you say GUI, you mean a graphical user interface?
8:05
Appellant Attorney (Goutam Patnaik)
Yes, Your Honor.
8:05
Judge Stoll
And you think that that's required by your claim,
8:07
because it says presenting a map of Nebraska, and then you say,
8:09
a map display on a display device?
8:11
Appellant Attorney (Goutam Patnaik)
Yes, a display device.
8:13
And the lower court acknowledged or thought that it meant a computer monitor as a display device.
8:21
So that's why we focus on the improvement to the GUI,
8:23
which in turn improves the interaction between the human and the computer device.
8:29
Judge Stoll
Can I direct you to the 389 patent for a little while?
8:33
Judge Reyna
Sure.
8:36
Judge Stoll
Some of those claims, let me ask you, I'm curious about claims one through six.
8:41
I have some concerns.
8:41
I have some concerns about them as compared to the other claims.
8:44
Claims one through six, I don't see how they're limited to a computer.
8:48
Do you think they're limited to a computer?
8:51
Appellant Attorney (Goutam Patnaik)
Your Honor, I would direct you to, in the abstract of the patent itself on Appendix 62,
8:58
it specifies that the objects at issue in this patent are attributes that are stored in Datastore,
9:03
such as a relational database.
9:05
Judge Stoll
I understand, but if you look at the claim itself, it just says, you know, it's a method.
9:10
But the other claims,
9:11
claim eight, for example, clearly have some computer hardware in there.
9:16
But those other, these claims, like claim one, very broad,
9:21
a method of displaying layered data, said method including selecting one or more objects.
9:27
I mean, it sounds like it doesn't have to be done on a computer.
9:30
So I want to know, first of all, did you advocate a claim construction below
9:35
that limited the claim to a computer?
9:37
And second, I guess I do want to know,
9:42
you say it's limited to a computer, but I guess, really, did you make this argument?
9:47
Appellant Attorney (Goutam Patnaik)
I believe we did, Your Honor, in the lower court, that this was a computer context,
9:51
and I think that came in the flow of...
9:53
Judge Stoll
Was that, like, as part of claim construction?
9:55
Because I couldn't find it in the record.
9:57
Appellant Attorney (Goutam Patnaik)
I don't know if it really specified that it was a computer context in the claim construction,
10:02
but we did look at claim 13 as it should have been thought of as a representative claim,
10:07
and I think the intent there was to show that there was a computer aspect
10:11
to these, or a computer context to these claims.
10:17
Judge Stoll
Thinking about Berkheimer and Atrix, which you mentioned earlier,
10:21
and dismissal on the pleadings,
10:24
does an expert declaration attached to a report, I mean, attached to a complaint,
10:30
is that something where we have to accept the statements in that expert declaration is true?
10:35
Appellant Attorney (Goutam Patnaik)
I think Atrix and both, Atrix and Celspin counseled that they should be considered,
10:39
the declarations, unless there's countervailing evidence,
10:42
whether it's an exhibit or a judicature.
10:44
Judge Stoll
Do you think we look at federal circuit law for that answer to that question,
10:49
or do we look at regional circuit law?
10:52
Appellant Attorney (Goutam Patnaik)
I think that's a regional circuit law in the sense of what is presumed for a Rule 12 analysis,
10:57
and I think all inferences are drawn in favor of the non-movement.
11:02
Judge Stoll
And do you think, I think it's the Ninth Circuit,
11:04
do you think the Ninth Circuit has held that an expert report attached to a complaint
11:09
should be considered in all the actual statements in there should be accepted as true?
11:14
Appellant Attorney (Goutam Patnaik)
I think all...
11:15
All pleadings should be accepted,
11:16
but I don't know that the Ninth Circuit has actually ruled that an expert report should be included.
11:21
Judge Reyna
So to follow up on this, so accepted how?
11:24
As evidence or as an inference that's in favor of the movement?
11:30
It's accepted as...
11:31
Sorry.
11:33
Appellant Attorney (Goutam Patnaik)
It's accepted as evidence, and all statements taken therein are assumed to be true.
11:39
Judge Hughes
So what assertion of the expert are you saying that is true that creates a genuine issue?
11:46
In fact, here.
11:47
Appellant Attorney (Goutam Patnaik)
There are multiple, Your Honor.
11:48
The experts that...
11:50
Give me your best one.
11:52
For which patent?
11:54
I think we're talking about the 389.
11:56
The 389?
12:01
So at Appendix 200 to 211,
12:04
the expert provided background on computer-based information visualization techniques,
12:11
and he flagged some of the techniques that were known and their shortcomings of them.
12:15
And then at 220, he explained how applying non-spatially distinguishable attributes,
12:20
which are the subject of the 389,
12:21
across items and layers are better visually identifying distinguished objects.
12:28
So he talked about the...
12:29
And then he explained specifically at Appendix 221 in paragraph...
12:33
Judge Hughes
So he's saying that this way of arranging things with emphasizing and highlighting
12:38
and things like that is a better way to look at it on a computer.
12:44
Appellant Attorney (Goutam Patnaik)
I would couple that with claim two.
12:47
And what I was going to was paragraphs 83 to 87 at Appendix 221,
12:51
where he explained how dependent claim two, nine, and 13,
12:55
allow users to dynamically manipulate the visualization of the objects
12:58
to better support the ability to scrutinize and review the data.
13:02
And that is something that's a unique solution in the computer context.
13:06
Judge Hughes
So it's not really the first one.
13:08
It's the second one.
13:09
Appellant Attorney (Goutam Patnaik)
I would focus on the second one.
13:11
Judge Hughes
The first thing you were telling me all sounded like an abstract idea.
13:14
Appellant Attorney (Goutam Patnaik)
I think you have to look...
13:16
Judge Hughes
So an abstract...
13:16
Even a new abstract idea over the prior art or whatever is still ineligible, right?
13:22
If it's an abstract idea, it's an abstract idea.
13:24
The expert can say this is unconventional and novel however much he wants.
13:29
It doesn't create a genuine issue of fact over eligibility.
13:33
Appellant Attorney (Goutam Patnaik)
I agree with that, Your Honor, but I would caveat that with you can still get to the inventive concept.
13:37
If you look at the underlying, what was proffered as part of the declaration,
13:41
the complaint, and the claims themselves in the spec,
13:44
you can still find the inventive concept to get over step one of Alice.
13:48
Judge Hughes
I don't understand what you just said.
13:51
Are you saying...
13:52
Are you saying the inventive concept can be an abstract idea?
13:55
Appellant Attorney (Goutam Patnaik)
I'm saying an inventive concept can take an ineligible...
13:59
I'm sorry.
14:00
I was focusing on both steps together.
14:01
So in step one, you're correct, Your Honor.
14:03
You couldn't make it eligible.
14:05
Judge Hughes
If the patent's directed to an abstract idea, it's ineligible at step one.
14:09
Correct.
14:10
And then you have to show something that's a non-abstract improvement
14:14
or something like that to make it eligible.
14:17
That's right.
14:18
And your view of what's non-abstract about this layering technique?
14:23
Appellant Attorney (Goutam Patnaik)
I would focus on claim two, the ability to relayer and rematch.
14:27
That's not found in the...
14:29
Judge Hughes
So the user can change the criteria for displaying the information.
14:33
Appellant Attorney (Goutam Patnaik)
I think we're reading the claims in conjunction, Your Honor.
14:37
So the relaying and rematching is a material part of the claims.
14:40
So they have to be given their meaning.
14:43
Judge Hughes
But it's just a different way for the user to manipulate the information.
14:46
Here's what I'm getting at.
14:47
All of these claims, both the 789 and the 389, to me,
14:52
sound like...
14:53
ways to use a computer to manipulate, categorize, and display information
14:58
in ways that we've found ineligible multiple times.
15:02
And I understand the core wireless case,
15:04
but it seems there is something more in the core wireless case
15:07
because it's not just, you know,
15:09
using a routine conventional computer to do all of this stuff,
15:12
which I think you've said you're using routine conventional computer equipment.
15:17
It's to specifically fit it onto a small screen
15:20
so it actually has to have that.
15:22
It has to have that technological advance for the way things are displayed.
15:26
This isn't designed...
15:27
This is designed to work on any kind of screen whatsoever, right?
15:31
Appellant Attorney (Goutam Patnaik)
I would respond to that, Your Honor,
15:33
with trading tech and data engine both show us that
15:36
if you have a computer improvement
15:39
or a technical solution in the computer context,
15:41
that is patent eligible.
15:42
And concurrent updating is something that's not done in the paper world.
15:47
And for the 389, the rematch...
15:50
Judge Hughes
Which trading tech case thinks...
15:52
I thought we held the GUIs in all of the trading tech cases ineligible.
15:57
Appellant Attorney (Goutam Patnaik)
There are two, I would say.
15:59
The one that I'm focusing on is trading tech versus CQG,
16:02
which preceded the other one.
16:05
Judge Hughes
Oh, the first one.
16:06
Correct.
16:07
Was that a decision?
16:09
Appellant Attorney (Goutam Patnaik)
That was not a precedential decision,
16:11
but it was cited in 8.
16:12
Judge Hughes
And after that, didn't we fairly dramatically distinguish that case
16:17
in a precedential decision?
16:19
Appellant Attorney (Goutam Patnaik)
I think it was...
16:20
Judge Hughes
Is that your case for trading tech?
16:23
Is there any other trading tech case?
16:25
Appellant Attorney (Goutam Patnaik)
No, that is my case.
16:27
But I would focus on data engine as well, Your Honor.
16:29
Judge Stoll
So your view is that this is a graphical user interface
16:32
and the technological improvement is displaying the data
16:37
in a particular way that's an improved graphical user interface.
16:40
Do I understand that?
16:41
It's improving the interaction...
16:42
Is it more than that?
16:43
Appellant Attorney (Goutam Patnaik)
It's improving the interaction in the computer context
16:45
of the graphical user interface.
16:47
And it's doing it with computer solutions,
16:50
technical solutions that are available only on the computer.
16:52
Judge Hughes
But not...
16:53
Not in the way Core Wireless found it eligible,
16:56
which is they found it dedicated to a specific way
16:59
of doing it on a small screen, right?
17:01
That was a benefit.
17:02
Setting aside that trading case,
17:03
what's the other case you were trying to talk about?
17:05
Appellant Attorney (Goutam Patnaik)
Data engine, Your Honor.
17:06
Judge Hughes
Is that a PREC case?
17:08
Appellant Attorney (Goutam Patnaik)
Yes, that is.
17:08
And what does it say?
17:10
Data engine...
17:15
That showed that methods that allow a computer device
17:17
to conveniently locate information of interest
17:22
and improves the accuracy,
17:23
they found that eligible.
17:25
Under step one.
17:26
Judge Stoll
Now, you have to look at that specific claim in that case, right?
17:29
Just like you'd have to look at the specific claim in this case,
17:32
look at all the evidence, the specification,
17:34
and see whether you think the claims are directed
17:37
to an abstract idea or a technological solution, right?
17:40
That's correct.
17:41
I think you're relying on data engine generally
17:43
for the idea that this court in the past has found
17:46
that a GUI can be a technological improvement.
17:51
That is by step one.
17:53
Appellant Attorney (Goutam Patnaik)
It also sheds light on the fact of what...
17:55
what is looked at
17:56
and what is found material for that analysis.
17:58
And in data engine,
18:00
it was held that the real-world analogy
18:02
that the court used wasn't appropriate
18:04
and we feel we're in the same place here.
18:06
The paper map doesn't capture the scope of the claim.
18:09
There's nothing in the record that shows
18:12
that the claim, as properly understood,
18:14
actually was done before.
18:16
Judge Stoll
And you think that this is a stronger argument for claim two
18:20
because not only is it categorizing the data
18:23
and displaying the layers,
18:25
with different ways so you can differentiate it
18:28
among the data,
18:29
but also it's allowing you to change
18:32
the way you've categorized the data.
18:35
Appellant Attorney (Goutam Patnaik)
That's correct.
18:36
And it's done in a dynamic way.
18:38
Judge Reyna
Counselor, you're out of time.
18:40
In fact, you ate up most of your rebuttal time,
18:43
but I'll restore you three minutes of rebuttal time.
18:45
Thank you, Your Honor.
18:46
Let's hear from the other side.
18:49
Appellee Attorney (Katherine Marie Peaslee)
Good morning, Your Honors,
18:50
and may it please the Court.
18:51
Catherine Peasley, Sessman Godfrey,
18:53
on behalf of Zillow Group, Inc.,
18:55
and Zillow, Inc.
18:57
Your Honors are exactly right
19:00
that all the 789 patent claims
19:04
is concurrently updating a map and a list display.
19:09
It is exactly correct that the patent says nothing
19:12
about how that updating occurs.
19:14
It simply says that it does occur
19:16
in response to a user input.
19:19
The benefits that are claimed of updating a map and a list
19:22
at the same time are nothing more than,
19:25
the benefit of updating a map and a list
19:27
at the same time implemented on a computer.
19:31
There's nothing specific to the computing environment
19:34
about the benefits that have been claimed
19:36
either within the patent itself
19:39
or by the expert.
19:40
And I believe you just heard Counsel for IBM himself say
19:43
that the benefit here is presenting
19:45
more relevant information to the user.
19:48
That's the exact same benefit
19:50
that the user of the map depicted in our brief would get
19:53
from having a selected area,
19:55
an area of interest, and a coordinated map.
19:58
So, IBM has made a lot of this idea
20:01
that concurrent updating of a map and a list
20:04
could only possibly be done on a computer,
20:07
and that that itself is inventive.
20:09
And Judge Ray and I think you're exactly right
20:12
that there's nothing about concurrently updating
20:15
two displays that is specific to a computer.
20:18
If I am a map maker, I and my assistant
20:22
could concurrently update a map, a list, and a list.
20:25
And a corresponding list in response to a request
20:27
from someone who needs a new map.
20:30
But if you want to make this even more explicit
20:33
and match the claims even more specifically,
20:36
imagine I'm a fourth grade teacher
20:37
and I have a dry erase board map of Washington, D.C.
20:41
and it's magnetic.
20:42
And I have the way that all of the monuments
20:45
appear on the map, that's their deselected state.
20:48
I also have a bunch of little red flag magnets
20:51
and I have a bunch of magnets with facts on them.
20:54
One fact for each monument.
20:56
List the facts along the side, that's my list display.
20:58
Put little red flags on all the monuments, they're selected.
21:02
My fourth graders can only focus on so much information
21:04
at one time though.
21:05
So I have a student come up, he draws or she draws a shape,
21:09
any shape they wish, selecting an area of the map.
21:13
I use my left hand to remove flags from outside that area.
21:16
And simultaneously, I use my right hand
21:18
to remove the corresponding fact from list display.
21:21
And one by one, I simultaneously update them.
21:24
I put a map in the list so that all we're left with
21:26
are selected monuments inside that area
21:28
and their corresponding facts.
21:30
So now we can focus on that selected area of interest.
21:34
Erase that, new student draws a new section, I do it again.
21:37
I update, putting flags back with my left hand,
21:40
facts back with my right.
21:41
There is nothing about the idea
21:43
of concurrently updating two things
21:46
that cannot be performed by a human being.
21:48
Judge Reyna
Okay, can a pen that's directed to providing an accurate
21:54
display on a GUI, can it ever be not abstract?
22:01
Appellee Attorney (Katherine Marie Peaslee)
If all you are talking about is providing an accurate display,
22:06
that in and of itself I don't think would be patentable.
22:09
Judge Stoll
What if the specification said something like,
22:12
it is technically impossible at this time to update the list
22:17
at the same time as a map.
22:18
So we came up with this blah, blah, blah technique
22:20
that allows you to overcome that technological hurdle
22:23
of updating simultaneously.
22:26
I'm not saying the specification does that.
22:28
But if it did, would that present a different case to you?
22:31
Appellee Attorney (Katherine Marie Peaslee)
Sure, Your Honor, and that depends on what the claims say.
22:34
If the claims taught you how to overcome that hurdle,
22:38
then yes, but if the claims don't tell you
22:40
how to overcome that technological hurdle,
22:43
all they say is, we did it.
22:45
No, I don't think you have a patentable method.
22:48
And actually, opposing counsel talked quite a bit
22:51
about data engine and the idea that in that case,
22:54
that shows
22:56
that a GUI that allows for better navigating
23:00
through information is patentable.
23:02
And I think that case actually shows
23:04
exactly why the patent claims here fail.
23:08
In data engine,
23:09
Are you talking the 389?
23:12
I'm sorry, I'm talking about the 789 patent, Your Honor.
23:16
Judge Stoll
Personally, I think we have your argument on the 789,
23:18
but what about the 389?
23:20
Appellee Attorney (Katherine Marie Peaslee)
Sure.
23:22
With regard to the 389,
23:24
it is the exact same situation.
23:26
Yes.
23:26
You have a long-practiced mapping technique, which is putting information that corresponds to a certain type of object, for instance, rivers in one layer and roads in one layer, making them visually distinguishable from another by, say, assigning them a color.
23:42
Judge Stoll
What evidence do you have that all of that's conventional? I mean, particularly given the dismissal stage that we're at right now and the complaint we have and the declaration of Mr. Cockburn that we have attached to the complaint, that we have to accept the facts asserted in there as true.
23:58
Appellee Attorney (Katherine Marie Peaslee)
Sure. You have to accept the facts with regard to the prior art and how that exists. We'll not argue with IBM, although I think IBM's counsel is correct that the Ninth Circuit has not expressly held that you have to.
24:12
Do you incorporate an expert's declaration? Well, let's say that you do. All that the expert has stated is that prior art computer systems didn't do this, but that doesn't mean that the technique's not known.
24:23
And a subway map that we included in our brief shows exactly this. It shows subway lines distinguished by a visual characteristic, which is their bright color and their thickness, distinguished from a road layer, which is shown by gray in another layer.
24:40
Judge Stoll
What about claims?
24:42
That was what I heard Mr. Petnaik to be emphasizing, and that's the one where there's, you know, choosing by the user to change the way that the objects are going to be layered.
24:56
Appellee Attorney (Katherine Marie Peaslee)
Absolutely, Your Honor. Two responses there. The first is that the simple answer is redrawing the map. Certainly, it is much faster to rematch layers and rearrange layers if you have a computer.
25:10
But this court has held...
25:12
It has held repeatedly that simply claiming the speed and efficiency of applying something on a computer is not itself inventive.
25:19
Judge Stoll
But what about... See, let me just try this. When I read that declaration, I get the sense that what they're saying is that in prior computer displays, it was difficult sometimes to see a bunch of data and distinguish the data.
25:37
And so this is providing a technique where a user can identify...
25:42
Certain data for the first layer, certain data for the second layer, certain data for the third, and so on, and then identify which layers are going to be displayed in which way, which one's going to be emphasized, how they're going to be emphasized.
25:53
And then separately, you can change which objects fall into which layer. That's claim two, and the other claims that depend, I guess, from eight and 13.
26:05
But... So why is that not a technological solution to a technological problem?
26:11
That might be...
26:12
Being it's on a computer. We're not talking about, I'm going to be, you know, back in the 1950s, and I'm writing, making a map, and then I'm going to decide I want to make a new map.
26:22
So what about computers?
26:24
Appellee Attorney (Katherine Marie Peaslee)
Well, Your Honor, that scenario that you've given me is exactly the same problem that you would have with any complex data set on a piece of paper.
26:34
And actually looking at the illustrations in the expert's declaration illustrates exactly this.
26:40
There's all this data, and what...
26:42
What the expert is saying is that previously, a computer screen didn't distinguish between things based on visual characteristics, so like color or shape.
26:50
Instead, it just put everything spatially relative to one another.
26:55
That would be the exact same thing as putting everything just spatially relative to one another on a piece of paper.
27:01
I think core wireless is a helpful case for distinguishing this, because in core wireless, the improvement to a small screen was specific to computers.
27:12
Small screens, the court there explained, are more likely to have multiple layers of data that you have to drill down through to get to a computer function.
27:19
And that's an issue that's specific to small screen computers.
27:22
Here, the problem you're talking about with having a lot of information in a small space is simply the problem of having a lot of information in a small space.
27:31
And that applies to things beyond simply...
27:34
Judge Reyna
Handling a lot of information in a small space is one of the benefits, technological benefits.
27:42
That's one of the benefits of a computer.
27:44
So isn't the improving of viewing that data, as expressed here, a technological solution to a technological problem?
27:54
Because this is all we do on computers, is we're viewing data.
27:59
So wouldn't it be the case that something that comes and improves my viewing the data, even uncluttering, you know, the clutter caused by a lot of information that I bring up,
28:12
isn't that a technological solution?
28:15
Appellee Attorney (Katherine Marie Peaslee)
No, Your Honor, because visualizing a lot of information is not specific to computers.
28:20
You're absolutely right that with computers you can visualize a lot of things.
28:25
But think about a map of the United States and all of the many, many things that you could...
28:30
That's a lot of information.
28:32
Roads and cities and parks and anything you want to put on a map, that's a lot of information.
28:38
And the way that we maximize the amount of information that a viewer can...
28:42
And glean is by putting things in layers that are visually distinct from one another.
28:48
We don't just put everything on a map in the same color, in the same shape, in one layer, because that would be impossible for us to read.
28:55
The idea of putting distinct sorts of objects in different layers so that a viewer can parse the information is certainly helpful in a computing context, but it's not unique to it.
29:06
Judge Stoll
I think conventionally people think of objects that way.
29:10
Anyway, let me ask...
29:12
Let me ask you a different question.
29:13
Claim two, let me ask you about that.
29:15
What is your evidence that shows that this claim was performed in real life?
29:22
I mean, I'm having a hard time with your analogy there to real life outside of the computer where you're talking about receiving requests from a user, rearranging the layers, rearranging the layers, rematching one or more objects to a different layer, displaying one or more rematched objects.
29:37
What is your evidence of that, especially considering we're at the dismissal stage?
29:42
Appellee Attorney (Katherine Marie Peaslee)
Sure, absolutely.
29:44
First thing I'd say is that I would argue that's exactly the process that someone goes through when they redraw a map to reemphasize a new feature.
29:51
Judge Stoll
I understand your attorney argument.
29:53
I'm asking what evidence you have.
29:56
Appellee Attorney (Katherine Marie Peaslee)
Well, the nature of maps, but I take your point, and I will...
30:01
Another example, if you look at Exhibits 17 and 18 to our Reply to Summary Judgment, and I can give you the appendix sites to those if you'd like, the military has actually used acetate overlays.
30:13
Over maps of battlefields to do precisely this sort of thing, each acetate overlay has different information, whether that's a potential battle formation or natural features or whatever it might be, and they have those acetate overlays that they can edit.
30:31
They can move things from one layer to another.
30:33
If they want to combine strategies, they can rearrange them, and we cited two military manuals that discuss exactly this.
30:41
And like I said, I can give you the appendix site.
30:43
If you would like it.
30:44
But that's exactly what this patent is claiming.
30:47
Judge Reyna
Those are advancements in new terrain maps, let's say, right?
30:53
I mean, you're describing a military use of an advancement in the use of computers.
31:00
Appellee Attorney (Katherine Marie Peaslee)
Well, no, these are...
31:01
I'm not talking about computers.
31:02
I'm talking about...
31:03
Or the display.
31:05
I'm sorry.
31:06
I don't think I understand your question, Your Honor.
31:08
Judge Reyna
When you're bringing up the military and the use of the different types...
31:13
That's the overlaying of maps, like geography, and then buildings, and streets, and that's the overlaying of the maps, correct?
31:25
And the military use that because that's an advancement in how to view masses of information on a small device.
31:34
Appellee Attorney (Katherine Marie Peaslee)
Or a small piece of paper, in the instance I'm referring to.
31:38
Judge Reyna
Really?
31:39
I mean, you don't think that the former...
31:44
The former is an advance over the latter?
31:47
Appellee Attorney (Katherine Marie Peaslee)
Just to be clear, the military example I'm using is a paper example.
31:51
It's not a computer example.
31:55
But if I understand your question, you're asking if whether taking that method of taking clear overlays and stacking them on top of a paper map applied to a computer is an advancement over prior computing?
32:10
And if that...
32:11
If I'm correctly understanding your question, the answer might be sure.
32:15
But that confuses, again, novelty with inventiveness.
32:19
There was a time when computers had never displayed a map before.
32:22
But that doesn't mean that the first time a computer displayed a map, that was inventive.
32:27
And in fact, if you put a computer on a map, you can potentially get a much, much higher resolution map than you could if you just drew it.
32:34
But again...
32:35
Judge Hughes
Using computers as a tool to make information better displayed or more specific generally have not been found to be patent eligible.
32:44
Appellee Attorney (Katherine Marie Peaslee)
That is correct, Your Honor.
32:46
Judge Hughes
Because it's just using computer as a tool to display information.
32:49
And so in your example, the first person to say, I'm going to use a computer to display a map doesn't...
32:56
If that's all they say, that's an abstract idea.
33:00
Appellee Attorney (Katherine Marie Peaslee)
Exactly, Your Honor.
33:01
Judge Hughes
What they need to do to make it patent eligible is explain that I'm the first one to actually figure out how to use a computer to do this and the underlying details, not just the idea.
33:13
Yeah.
33:14
Take it your view is that they don't have anything here beyond the idea of displaying things in levels and being able to reorder those levels.
33:25
Appellee Attorney (Katherine Marie Peaslee)
Absolutely.
33:26
That's exactly right, Your Honor.
33:28
Judge Hughes
Even though the expert has said nobody's ever reordered levels in this way on a computer, that's still an abstract idea that doesn't make it patent eligible.
33:39
Appellee Attorney (Katherine Marie Peaslee)
That's exactly right, Your Honor.
33:41
Judge Hughes
How do we know?
33:43
See, I'm just slightly...
33:45
I'm a little concerned about the Rule 12 stuff because how do we know that the expert hasn't suggested that they've solved the actual computing problem of how you change the display?
33:59
I mean, honestly, to me, it sounds like even they would admit they're just using conventional computer techniques, a conventional computer, conventional coding, whatever, to select and deselect.
34:12
I mean, that stuff doesn't seem particularly new.
34:15
They're not...
34:15
I'm not saying they've invented a new way to select and deselect, but is that appropriate for us to decide at a Rule 12 stage?
34:23
Appellee Attorney (Katherine Marie Peaslee)
Absolutely, Your Honor, because you can accept what the expert has said about prior art systems not being able to do this as true and still find there's no inventive concept for the exact same reason we just discussed, which is there's nothing in the patent and there's nothing in the expert's declaration that explains how this result was achieved.
34:42
Judge Reyna
Okay.
34:42
You're out of time.
34:43
Do you want to conclude?
34:44
Unknown
Yes.
34:46
Appellee Attorney (Katherine Marie Peaslee)
Unless the panel has further questions, I'll be done.
34:51
Thank you, Your Honor.
34:52
Judge Reyna
Thank you.
34:57
Mr. Pendick, you have three minutes.
35:01
Appellant Attorney (Goutam Patnaik)
Thank you, Your Honor.
35:02
I will direct the Court first to Figures 1 and Figure 2.
35:06
Judge Stoll
It's up to you, but you want to take your mask off.
35:08
Thank you.
35:10
Appellant Attorney (Goutam Patnaik)
Figures 1 and Figure 2 of the 389 patent, please.
35:13
That's Appendix 64 and 65.
35:15
Unknown
Thank you, Your Honor.
35:20
Appellant Attorney (Goutam Patnaik)
And I just wanted to show somewhat of the meat of Clayton.
35:24
Because this shows in diagram the benefits of the relayering and rematching that are available in this patent.
35:33
And we proffer that this is not available in the non-computer context, the dynamic nature of changing the layers to also maintain the relationships among them.
35:44
The transparency analogy that the Court used to find this abstract ignores that just moving the layers of the transparencies up and down, you would lose the relationships among them.
35:55
The transparency analogy that the Court used to find this abstract ignores that just moving the layers of the transparencies up and down, you would lose the relationships among them.
35:55
Because the lines wouldn't necessarily match up when you change things.
35:58
Because this is available only in the computer context, because it's using the software to do this in a dynamic nature.
36:05
And that, we would proffer, has not been, as you pointed out, there's nothing in the record evidence that shows that was available before.
36:12
And I think that was criticized in CardioNet.
36:16
Judge Hughes
I'm still confused as to why, even if this wasn't in the prior art, it's still not just an abstract idea of displaying things.
36:25
It's in different ways and different relationships and emphasizing those relationships rather than something the computer couldn't do before that you've invented.
36:33
You're just using the computer to do a display in a different way that hadn't been before.
36:39
Do you understand the difference there?
36:40
Appellant Attorney (Goutam Patnaik)
I think I do, Your Honor.
36:41
I think you're looking for an improvement to the computer itself.
36:44
And what we're saying, this case falls more in line with an improvement to the system overall based on the improved GUI, the graphical user interface.
36:51
Judge Hughes
Well, that's where I'm having problems.
36:53
Because, you know...
36:55
Apart from core wireless, which is still directed to a specific physical location and function of the computer,
37:02
I don't see where we've held improved GUIs to be patent eligible, generally.
37:08
Appellant Attorney (Goutam Patnaik)
I would point you again to data engine, Your Honor.
37:10
I think that's a GUI case.
37:12
And I think core, I mean, core wireless applies as well because that is a GUI case.
37:15
Judge Hughes
Well, yeah, but I mean, let's just assume I don't think core wireless helps you here because it's solving a specific problem that small screens are harder to navigate.
37:25
And you have to display information.
37:26
You're not solving any of those problems.
37:28
This is not limited to a particular kind of screen.
37:31
You can use this on a laptop.
37:32
You can use it on a phone.
37:33
You can use it on a tablet, right?
37:36
Correct.
37:37
So what you purport to be solving is a better way of displaying data.
37:42
Appellant Attorney (Goutam Patnaik)
It's an interaction that wasn't available before, Your Honor.
37:45
Judge Hughes
That's true for all these GUIs.
37:47
The trading technology GUIs that we found ineligible, apart from that non-precedential case, which I don't think we...
37:54
I don't think we...
37:55
can rely on, is different ways, in fact, very novel, inventive ways of showing data to help in the stock market.
38:04
And I think it's recognized that they're inventive, but just because they're inventive, abstract ideas doesn't mean that they're still not abstract.
38:11
Appellant Attorney (Goutam Patnaik)
I think in under Rule 12 context, Your Honor, you would have to look at the totality of the record, which includes the declaration and the complaint,
38:18
which shows that it wasn't done before and what the benefits are now.
38:22
Judge Reyna
Your opponent on the other side argues that...
38:25
that the claims here talk about, don't show you how to get to the result.
38:32
What's your reply to that?
38:34
Appellant Attorney (Goutam Patnaik)
There was a lot in the briefing about how it's all functional language, Your Honor.
38:37
I'll turn your attention to claim 8 of the 789, for instance.
38:43
Judge Hughes
Could you talk...
38:44
Do you have something on the other one?
38:46
That's the one we seem to be focused on.
38:49
Okay.
38:50
So going to the 380...
38:51
I mean, because that's the one you seem to think you have a novel idea about, about this dynamic...
38:56
reordering, how does it...
38:58
Where in the patent or the specification does it tell you how to do the dynamic reordering
39:03
in a way that's not just using a computer processor and computer software code in a conventional way?
39:10
Appellant Attorney (Goutam Patnaik)
So if you look at column 2 of the 389 patent, that appendix 70,
39:14
at line 50 and going to column 3, line 13,
39:24
it specifies how the relayering and rematching can be done
39:28
and some of the benefits that accompany that.
39:34
Any...
39:35
What's claimed in the patent.
39:39
Judge Reyna
This is your best response to that argument?
39:43
Appellant Attorney (Goutam Patnaik)
Yes, Your Honor.
39:44
Judge Reyna
Okay.
39:45
Is there anything else?
39:46
No, Your Honor.
39:48
My colleagues haven't?
39:49
Okay.
39:50
We thank you, Counsel, for your argument this evening.
39:52
Thank you.