AMERANTH, INC. v. PAPA JOHN'S USA, INC.
Oral Argument — 09/08/2023 · Case 22-1655 · 21:10
0:00
Appellee Attorney
Our third case is number 22, 1655, Amaranth, Inc. v. Papa John's, USA.
0:06
Mr. Weinglatt?
0:08
A lot of volumes here.
0:10
Pardon me?
0:11
There's a lot of volumes here.
0:12
Good morning, Your Honors.
0:17
Appellant Attorney (Richard Charles Weinblatt)
May it please the Court.
0:19
Despite Amaranth's repeated request to save these cases until resolution of the appeal of the District Court's 285 order,
0:26
the District Court sought to have Amaranth agree to invalidity without a record.
0:31
On the same day Amaranth did not agree, the District Court issued a show-cause order
0:36
forcing Amaranth to litigate its claims in an atmosphere where the District Court, in its own words,
0:42
telegraphed its opinion of invalidity.
0:44
In the face of this reality, Amaranth still showed that claims 4 and 5,
0:49
which claim applications running on a network architecture that reduce the load on a network server,
0:55
making overall processing more efficient, optimizing response time,
0:59
and avoiding unevenly overloading computers and servers,
1:02
are patent-eligible subject matter under ALICE Step 2 through their inventive concepts
1:07
of the order combination of a single point of entry, equilibrium, and reflective routing technology,
1:14
as confirmed and supported by the claims, the specification, and the expert declaration of Dr. Valerdi.
1:22
Yet, the District Court presumed the claims were invalid,
1:25
which denied the claims their presumption of validity,
1:27
and led the Court to make, in fact,
1:29
Judge Prost
Can I just interrupt to make sure I understand?
1:33
This is, so this was set back, and you had to deal with claims 4 and 5,
1:37
which depend on 1, right, for ineligibility?
1:41
Appellant Attorney (Richard Charles Weinblatt)
At the end of the day, yes.
1:44
Amaranth submitted a status report at ADPX 6906,
1:48
saying that it intended to assert claims that either had already been asserted,
1:52
or to add that were not subject to the...
1:55
Judge Prost
Okay, so, but what it's, before the District Court,
1:59
then, again, is simply to adjudicate the claims 4 and 5, though, right?
2:05
Appellant Attorney (Richard Charles Weinblatt)
At the end of the day, yes.
2:08
Well, this case.
2:10
No, not, no.
2:12
So, what happened was, there was a status report that was submitted on November 29, 2021, at ADPX 6906.
2:21
Amaranth requested that the case continue to be stayed,
2:23
and said that it wants to assert claims that, according to this Court's dominoes opinion,
2:29
because Amaranth...
2:30
...had not formally withdrawn them, and there were defendants that had counterclaims.
2:33
In fact, 26 of the 29 cases had counterclaims.
2:38
The District Court was entitled to invalidate.
2:42
So, Amaranth sought to assert some of those claims.
2:48
For example, claims 4 was asserted against...
2:53
Judge Hughes
I'm really confused about what you're trying to tell us.
2:56
We remanded to look at 4 and 5, right?
3:01
And you wanted to...
3:03
To bring in other ones?
3:04
Is that what you're trying to tell us?
3:06
Yes.
3:06
Can we deal with these separately?
3:08
Judge Prost
But you spend a portion of your brief discussing, arguing about the merits of 4 and 5.
3:13
So, that's what I was just going to get to, because I thought that was a major part of this case.
3:17
Appellant Attorney (Richard Charles Weinblatt)
So, the only...
3:18
Well, I'd like to raise about 2 and...
3:20
Judge Hughes
No, I don't want to talk about 2 and 12 yet.
3:22
I want to talk about 4 and 5.
3:23
Okay.
3:24
Because the District Court didn't let you have in 2 and 12,
3:26
and that's going to be an abuse of discretion standard.
3:28
4 and 5 is what we sent back.
3:30
And you got up and gave this big pay-in to why...
3:33
It's whatever, eligible for all these reasons.
3:35
Tell me why, when we've already found Claim 1 ineligible,
3:40
and all 4 and 5 add is field limitations,
3:43
that they are somehow eligible when Claim 1 is not.
3:48
Appellant Attorney (Richard Charles Weinblatt)
So, with all due respect, they're not just field abuse limitations.
3:51
You have to look at the claims from 1 of Ordinary Skill in the article.
3:54
Judge Hughes
Okay, but everything in Claim 4 is the information management
4:00
and real-time synchronous communication system in accordance with...
4:03
Claim 1.
4:04
That's ineligible.
4:05
Appellant Attorney (Richard Charles Weinblatt)
Claim 1 was found ineligible.
4:08
Judge Hughes
So, all that language in 4, that portion is ineligible.
4:12
So, in order for Claim 4 to be eligible,
4:15
the rest of the sentence has to add eligible subject matter.
4:18
Appellant Attorney (Richard Charles Weinblatt)
And it does.
4:19
You have to look at the claims from 1 of Ordinary Skill in the article.
4:22
And the moving defendants in Claim Construction
4:25
said that a ticketing application had functionality
4:30
that they do not have,
4:32
and their proposed construction,
4:34
according to them, was case-dispositive.
4:37
This court should not allow defendants to do
4:40
what patent owners have continuously told not to do.
4:44
You can't take one position for an employee...
4:47
Judge Hughes
Tell me why a hospitality application is eligible
4:50
when the overall system is not.
4:54
Appellant Attorney (Richard Charles Weinblatt)
So, it's not just a hospitality application.
4:59
Claim 4 is for reservation.
5:01
It's a reservation application.
5:02
And Claim 5 is for a ticketing application.
5:05
In the restaurant application context,
5:09
when a person seeks to reserve a table,
5:12
there are all of these elements that have to be considered by the system.
5:19
As Dr. Velarde discussed,
5:21
the technical problems at paragraphs 51 and 54 to 58 of his declaration.
5:26
And in order to be able to look for your reservation,
5:30
have it go to the back end,
5:32
have the back end figure out what's available,
5:34
and send the information back to the front,
5:36
and then, without overloading the system,
5:38
it used a single point of entry,
5:41
equilibrium of the databases,
5:44
and...
5:44
Judge Hughes
Are you telling me that a computerized reservation system is eligible?
5:49
Appellant Attorney (Richard Charles Weinblatt)
I am telling you that in 1999,
5:52
which is the date that you have to look at what existed at the time,
5:56
how these claims work,
5:58
and the functionality,
5:59
as we have the viewpoint of one of ordinary skill in the art,
6:02
yes, absolutely.
6:03
Think about it this way.
6:05
In 1999, if you were on...
6:07
Judge Hughes
I'm not sure why the time period matters.
6:08
This is a question of law under Alice and all of those decisions.
6:12
Whether Alice had issued or not,
6:15
in 1999, doesn't somehow transform ineligible subject matter
6:21
into eligible subject matter because of the time period.
6:24
You have to...
6:25
If it's ineligible, it's ineligible, no matter when you...
6:28
Appellant Attorney (Richard Charles Weinblatt)
Then you're throwing out step two for the event of concept,
6:30
whether there's something more to the claims than any abstract idea,
6:34
and you have to look at...
6:36
Judge Hughes
What's the something more?
6:37
Appellant Attorney (Richard Charles Weinblatt)
The something more is the combination of the single point of entry,
6:42
equilibrium, and reflective routing technology.
6:44
These claims...
6:45
Judge Hughes
What does that mean?
6:46
Appellant Attorney (Richard Charles Weinblatt)
I'm trying to explain to your honor.
6:48
Judge Hughes
Well, you've said those words a bunch of times.
6:50
Tell me what it means.
6:51
Appellant Attorney (Richard Charles Weinblatt)
So in 1999, if you had your handheld device,
6:54
and you wanted to synchronize it with a computer or the back end,
7:01
you had to physically plug it in, one-to-one,
7:04
and there could be no updating,
7:05
and the way that it would update,
7:07
when you plugged it in,
7:07
was it would move the entire...
7:08
Judge Hughes
Don't tell me how it works.
7:10
Tell me what the event of concept is.
7:13
I know how it works.
7:14
Appellant Attorney (Richard Charles Weinblatt)
By those elements being there,
7:17
with the reflective routing,
7:18
it decreases the load on the network server.
7:22
That allowed the server to run better.
7:24
It optimized it.
7:25
It would prevent servers and handheld devices
7:28
that were connected to the server from crashing.
7:33
So in the courts...
7:35
Well, first of all,
7:37
in the courts,
7:38
claims,
7:38
and charges,
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and construction order,
7:40
which is docket number 908 in case 311-CB-1810,
7:47
the defendants try to have the term reflected,
7:51
incorporated into the construction of synchronized and synchronous.
7:56
And the district court rejected that.
7:58
So we know, just from that claim construction order,
8:01
that reflective routing is not in claim one.
8:04
We also know from the specification
8:06
that the only time reflective routing
8:09
is even mentioned
8:10
deals with the restaurant reservation embodiment.
8:14
So through claim differentiation,
8:16
that then also tells us that claim one
8:18
doesn't include the reflection.
8:21
So claim one works differently.
8:24
So in claim one,
8:26
when there is an update to be synchronized,
8:29
it would synchronize the entire database.
8:32
And then claims four and five realize
8:34
because of the complexity needed in reservations and ticketing,
8:37
the system could be overloaded.
8:39
You could have...
8:39
Duplicate tables or duplicate tickets being sold,
8:43
which you don't want.
8:44
There's even, in district court,
8:46
Amherst Council even mentioned
8:48
having to sit on the judge's lap
8:50
because they could order the same ticket,
8:51
and claim five prevents that from happening.
8:54
And by using the claimed applications in four and five,
9:00
the burden on the network is minimized.
9:03
That is patent-eligible subject matter.
9:06
Cooperative entertainment tells us
9:08
that...
9:10
When you improve the functioning of the network,
9:12
it's patent-eligible.
9:14
And Your Honor, you have to look at the time period.
9:17
Berkheimer says,
9:17
whether something is routine, conventional,
9:20
or well-understood to those of ordinary skill in the art
9:22
is a question of fact.
9:24
You can't use today's technology
9:26
to think about what improved technology...
9:29
Judge Prost
Just to help me follow your argument,
9:31
can you show me, tell me in the spec,
9:33
where the spec differentiates the reservation
9:38
and the ticketing applications,
9:39
and where it talks about them?
9:42
Appellant Attorney (Richard Charles Weinblatt)
So the spec specifically talks about the reservations
9:45
at column two, lines 42 to 43.
9:49
There's more detail at column five,
9:53
starting at, if you want,
9:55
specifically for the reflective technology,
9:58
it's column five, lines 34 to 40,
10:00
and column 12, lines 51 to 56.
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Now, to you and me looking at this,
10:05
this might not mean much.
10:06
Judge Prost
So everything you've just cited,
10:08
which is really quite a...
10:10
Not that...
10:11
Not that many lines to read.
10:13
That's what you're saying is the difference
10:15
that why this is...
10:16
This is your technological advance
10:18
that was associated with the ticketing application
10:21
and the reservation application
10:23
that didn't go beyond claim one?
10:26
Appellant Attorney (Richard Charles Weinblatt)
So for the combination of the three elements,
10:28
it starts at column five,
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about line 17,
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all the way to line 40.
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But again, like to you judges up there,
10:37
to me as an attorney,
10:38
to all the attorneys and people sitting in the room,
10:41
these claims don't look like much.
10:42
But you have to look at it
10:43
from one of ordinary skill in the art.
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And Dr. Valerity provided
10:47
what was one of ordinary skill in the art
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at paragraphs 17 to 19,
10:51
found at APPX 7648.
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Dr. Valerity's declaration is unrebutted.
10:58
There's been no challenge to it.
11:00
We have the defendant saying
11:01
that he didn't discuss the claims,
11:02
but then in their response,
11:04
in their answering brief at page 28,
11:06
they say Dr. Valerity has three categories of opinions.
11:10
One, how claims four and five differ from claim one,
11:14
how claims four and five solve technological problems,
11:17
and three,
11:18
the purported inventive concepts of claims four and five.
11:21
That alone right there
11:23
confirms the district court got it wrong.
11:26
The district court should have looked
11:28
at the expert declaration,
11:30
should have looked at the facts
11:31
in light of its favorable to Amaranth.
11:32
Judge Prost
It did look at the declaration.
11:35
Footnote one of the district court's opinion
11:38
rejects it because it says
11:39
it suffers from the same effect.
11:40
I.e., it's not based on the language of the claim.
11:44
Appellant Attorney (Richard Charles Weinblatt)
But that's wrong.
11:45
Even the defendants say that Dr. Valerity discussed it
11:48
in the three points I just mentioned
11:49
where they say that on page 28 of their answering brief.
11:54
So if you were to look at paragraphs 50 or 51 to 100,
11:58
that's all discussions of claims four and five.
12:01
More specifically,
12:02
how the claims solve technological problems
12:04
is at paragraphs 51 and 54 to 58.
12:07
The inventive concepts of claim four that I mentioned
12:10
are at paragraph 75,
12:10
72 to 82.
12:12
How claim five overcomes technical problems
12:14
is at paragraphs 53 to 56 and 84 to 85.
12:18
Claim five's inventive concepts
12:20
are at 53 to 56 and 84 to 85.
12:24
And Dr. Valerity discussed the technical requirements
12:26
and the pseudocode that he was able to create
12:28
from the claims and specification
12:31
for claims four at paragraphs 72 to 82
12:34
and claim five, 90 to 100.
12:36
He also discussed the problems
12:37
the prior art had with docketing handholds
12:40
at 81 to 84.
12:41
And your honors,
12:42
I'm in my rebuttal time right now,
12:43
so I'd like to sit
12:45
unless you have any additional questions for right now.
12:46
Okay.
12:48
Mr. Franklin.
12:57
Appellee Attorney
Thank you, your honors.
12:58
May it please the court,
12:59
Jonathan Franklin,
13:00
on behalf of all of the defendant appellees.
13:05
I'd like to refocus the court.
13:07
I think this is not a difficult appeal
13:09
and some of the, your honors, questions
13:11
make that clear, I think, Judge Hughes.
13:15
The answer is it's correct.
13:17
These are field of use limitations.
13:19
This is an unpatentable claim.
13:22
Claims four and five do nothing
13:24
as a district court found correctly
13:26
but add field of use limitations
13:28
to a claim one, which this court held
13:31
in the 2019 Domino's Appeal,
13:34
was unpatentable.
13:36
The language of the claims,
13:38
which is where the law says
13:40
one must look for the inventive concepts,
13:44
says that claims four and five
13:47
simply claim the method of claims
13:49
that are unpatentable.
13:49
Claim one, which we now know is unpatentable,
13:52
as applied to ticketing,
13:55
reservations and ticketing applications, respectively.
13:57
And Judge Dyke, you are correct.
13:59
The question then is,
14:01
is there anything inventive about those things
14:05
that would distinguish the independent claim
14:07
from which they depend?
14:09
And the answer is no as a matter of law
14:11
because they are just field of use restrictions.
14:14
They just narrow claim one
14:16
to certain applications.
14:18
And going all the way back to Bilski,
14:21
that does not allow you to find...
14:23
Judge Prost
What about the citations he gave to the specifications?
14:26
Appellee Attorney
That's what I was just going to get to, Judge Brust.
14:28
All of the citations to the specifications
14:30
actually support the district court's decisions
14:34
because they make clear that all of the...
14:37
the only two things that are actually in the specification
14:40
that he referred to are single point of entry
14:43
and equilibrium.
14:44
And if one looks at the specifications,
14:47
the specifications are actually
14:49
a single point of entry for all hospitality applications
14:53
covered by the invention,
14:54
not just reservations and ticketing.
14:57
And you can see that in column two, lines 31 to 41,
15:04
a single point of entry for all hospitality applications
15:07
to communicate with each other wirelessly
15:09
as when unavailable.
15:10
And then it says further down,
15:13
he mentions equilibrium.
15:14
And then it says, for example,
15:16
and it lists reservations as an example.
15:19
And the same thing you can see on column five, 29 to 36,
15:28
a single point of entry works to keep all wireless handheld devices
15:32
and linked webs in sync.
15:33
And then it says, for example.
15:36
So you end up with the answer to Judge Dyck's question,
15:42
which is, what is different about these than claim one?
15:45
And the answer is nothing.
15:47
The baton makes clear that,
15:49
all of the applications it covers involve
15:52
a single point of entry and equilibrium.
15:55
There is actually nothing in the specification
15:58
that says anything about reflective routing,
16:01
which is the third thing that he mentioned.
16:03
That is in their declaration,
16:05
but that is just like this court's decision in Domino's,
16:09
where the court held that the expert declaration
16:13
added nothing to the patentability analysis
16:16
because it went to underpinning
16:19
unclaimed features.
16:21
And there is nothing claimed about reflective routing
16:23
anywhere in the specification.
16:25
So at the end of the day,
16:26
we have a really quite simple case.
16:31
Claims four and five are field of use restrictions,
16:34
technological limitations on the claim one,
16:39
which the court, we already know, is unpatentable.
16:43
And I would also point the court to its own decision
16:46
in the 2019 Domino's claim,
16:48
excuse me, Domino's appeal,
16:50
where the court found every dependent claim
16:53
that it considered to be equally unpatentable
16:57
as all of the independent claims that it considered.
16:59
And many of those dependent claims
17:01
had much more in them than these ones.
17:05
I think the most pertinent one that the court looked at
17:08
would be claim five,
17:10
which simply claims the method of claim one,
17:13
wherein, excuse me, not five, claim six,
17:16
where the method of claim one
17:18
in which the computing device is a smartphone,
17:20
and the court held that was unpatentable
17:23
just by claim one.
17:26
So I didn't hear anything on the second issue.
17:30
I don't know if the court would like me to discuss
17:32
the not adding claims two and 12.
17:39
That's an abuse of discretion standard,
17:41
and we don't think that the district court
17:43
abuses discretion on that either.
17:45
So whatever, again, the court's views may be,
17:49
on the first appeal that we just heard,
17:50
I want to emphasize this appeal
17:52
is not a difficult one.
17:54
They persisted in arguing
17:57
that simple field use limitations
17:59
on an unpatentable claim
18:02
are themselves somehow rendering it an inventive concept.
18:06
The law is crystal clear that that is not true,
18:09
and the judge's decisions should be affirmed.
18:14
Okay, thank you.
18:15
Mr. Weinblatt, you have a few minutes.
18:21
Appellant Attorney (Richard Charles Weinblatt)
I want to start off by saying,
18:24
under Ninth Circuit law,
18:26
under Animal Legal Defense Fund
18:28
versus U.S. Food and Drug Administration,
18:30
where a district court has made factual determinations,
18:33
summary judgment is inappropriate.
18:34
That's the standard to be applied.
18:36
Appellee Attorney
What's the factual determination?
18:37
Appellant Attorney (Richard Charles Weinblatt)
The district court held that the differences
18:42
between food ordering and ticketing reservations
18:44
and, sorry, ticketing and reservations are illusory.
18:51
In order to make the statement
18:52
that it's illusory,
18:53
that's a fact-finding.
18:56
And if you're going to say that it's not a fact-finding,
18:58
then he's judging the credibility
19:00
of Dr. Velarde in his declaration,
19:03
and that goes against Supreme Court precedent
19:05
of Anderson v. Liberty Lobby,
19:07
which says a district court
19:08
can't make credibility determinations
19:10
when deciding summary judgment,
19:11
and it can't weigh evidence.
19:12
Those are jury functions.
19:14
Also for the standard for summary judgment,
19:17
would a reasonable jury
19:19
fine for the non-movement based on the record?
19:22
Here, you have Dr. Velarde,
19:24
his unrebutted declaration
19:25
that discusses what the claims mean
19:27
to one of ordinary skill in the art
19:29
and how it has an inventive concept.
19:33
A reasonable jury can believe that
19:35
and fine for amaranth.
19:36
That is sufficient to reverse
19:39
the district court's decision,
19:40
vacate it,
19:41
and remand the district court's opinion
19:44
in order for the district court
19:45
to apply the correct burden of proof and law.
19:48
And I want to...
19:49
Judge Prost
Something that should be easy,
19:50
and I should know this,
19:51
but is the attorney's fees case,
19:54
did that include fees
19:55
that related to this particular appeal
19:58
or that was all before that?
19:59
Appellant Attorney (Richard Charles Weinblatt)
No, it was...
20:00
As far as I know,
20:02
since that's not the appeal
20:03
that I'm dealing with,
20:03
that was Domino's.
20:04
Claims four and five
20:05
were never asserted against Domino's.
20:06
Okay.
20:07
So it's different.
20:08
Okay.
20:09
So an overarching question
20:10
in this appeal is,
20:11
who determines what the language
20:14
in a patent specification
20:15
and the claims mean?
20:17
You just heard my colleague say
20:19
that it just mentions routing,
20:21
but doesn't mention...
20:22
I'm sorry, mentions reflection,
20:23
but doesn't mention reflective routing.
20:25
Well, it doesn't matter
20:27
what we as attorneys think.
20:28
It matters what one of ordinary,
20:29
skill in the art would know
20:32
when reading the specification
20:33
and the claims.
20:35
And last, I'd like to end with,
20:38
in the appellee's briefs,
20:41
they consistently refer
20:42
to the claims as method claims.
20:44
These are not method claims.
20:46
These are system claims.
20:48
And the applications are part
20:51
of the architecture of the system.
20:54
And they improve the network
20:57
by reducing overloading of the system
21:01
and as such,
21:02
it's patent eligible subject matter.
21:04
Do your honors have any questions?
21:06
Okay.
21:06
I think we're out of time.
21:07
Thank you.
21:07
All right.
21:08
Thank you, your honor.