TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.
Oral Argument — 01/05/2026 · Case 24-1243 · 56:19
0:00
Judge Timothy Dyk
University v. General Digital.
0:02
Mr. Luhmann.
0:03
Appellant Attorney
Good morning, Your Honor.
0:06
May it please the Court.
0:09
GenDigital, formerly Symantec and Norton,
0:11
appealed four errors from below that culminated in a $600 million final judgment
0:17
that we ask you to set aside.
0:19
Subject to Your Honor's questions,
0:20
I'd like to focus this morning first on the 101 and infringement issues
0:23
and the liability issues,
0:25
and then if I have time remaining to turn to the foreign sales issue
0:30
that was raised on appeal.
0:33
The 101 issue, I think, is a particularly apt place to start in this case
0:37
because after seeing the red brief,
0:42
Columbia does nothing or little to defend the district court's error.
0:47
The district court in this case plainly found the so-called technological improvements
0:54
that she relied upon to find that the claims were not abstract from the specification
1:00
and not from the law.
1:01
This court's decisions in American Axel tell us the recitations and the specification
1:07
that are not of the claims are irrelevant.
1:10
Judge Sharon Prost
Okay, let's say that I'm not buying that argument.
1:12
I think there's enough groundwork left that starts the claim language to bring you to the spec,
1:18
and I think we've got cases that allow use of the spec.
1:21
So let's take that argument off the table for purposes of argument.
1:24
What do you have left?
1:25
I mean, Columbia argues that creating a model from two different computer models,
1:30
not only in terms of the claim language, but also in terms of the claim language,
1:31
increases efficiency but improves reliability or security
1:34
because the combined models make it harder for an attacker.
1:39
Maybe I missed it, but I didn't see where in your briefing you addressed that point.
1:44
And in any event, isn't that sufficient to improvement in computer functionality besides step one?
1:51
Appellant Attorney
It's not, Your Honor.
1:52
So if we're turning to the specification, the specification on the models,
1:56
and we do address this in our brief, but Appendix Page 287 tells,
2:01
and this is column 8, line 15 through 27 of the 322 patent.
2:04
We always use the 322 as the exemplar.
2:06
It says that the person building the claimed inventions can use, quote,
2:12
any of a variety of suitable means for combining these models.
2:16
That tells us not only is the notion of combining models known, but how to do it is known.
2:22
There's no specific method for it.
2:24
The claims don't tell you what the model is, how to build it, how to combine it.
2:29
You're essentially taking a blackboard.
2:31
You're using a black box model, combining it with another black box model,
2:34
or an abstraction combined with an abstraction.
2:36
And so the specification on the models in particular, we think, is fatal to their cause.
2:42
Then, if you look at the specification more broadly,
2:46
it goes out of its way to tell you that everything in the claims is conventional,
2:51
that it's using things that were known in the art.
2:53
At Appendix 285, column 3.
2:57
Judge Timothy Dyk
That seems to be the heart of the issue, is what's conventional here,
3:00
and why that's so important.
3:01
I don't know if there is anything in particular claims here which are not conventional.
3:07
Appellant Attorney
Yes, Your Honor, I agree.
3:09
And our view is strongly held that there's nothing in the claims that's nonconventional.
3:13
The models, I think, is their champion argument on that.
3:17
I just pointed you to specification language that tells you that you can use any suitable means
3:22
for combining those models.
3:24
If you go to the file history in the IPRs, the board expressed,
3:31
we found that a prior art reference called Agrawal taught combined models
3:34
that were made at different times.
3:36
The dispute and the breakdown came whether there was a combined model
3:40
made from different computers.
3:42
I think you'll hear different views on that issue,
3:45
but when you look at the evidence from the final written decisions...
3:49
Judge Timothy Dyk
Some of the claims seem to talk about combined models,
3:53
which are nonstandard models.
3:55
But those claims are not asserted here.
3:59
They're not asserted.
4:01
In the 115 patent claim, 9, and the 322 claims, 17 and 25.
4:09
Appellant Attorney
Yeah, those were invalidated, I think, in the...
4:11
Judge Timothy Dyk
But whether they are 101 eligible or not is not the issue here.
4:18
But what I get from those claims is that when they wanted to claim a non-standard model,
4:26
they knew how to do it, and they didn't do it in these particular claims that we have here.
4:31
Appellant Attorney
That's exactly our view, Your Honor, and the specification for other supports,
4:35
that they are telling the world, they're telling the public,
4:38
that this notion of combining models is a conventional one that can be done by, quote, any suitable means.
4:45
And they use that language throughout the specification to point out that they're not using new techniques,
4:51
no new improved model, no new improved...
4:53
Judge Sharon Prost
Well, what about in the combination?
4:54
I mean, these...
4:56
This claim survived the IPR, right, on failure.
5:00
I haven't gone through the entire record of the IPR, but because there was no motivation to combine.
5:05
Exactly.
5:07
Suggesting there's some novelty in what went on, and this is not exclusively conventional, right?
5:14
Appellant Attorney
So, two points on that, Your Honor.
5:16
The board found that there was no motivation to combine, as Your Honor put it,
5:22
to preempt what my friend is going to say.
5:25
They said there was no...
5:26
There was no motivation to combine that would teach the combined model made from two different computers.
5:32
So, they did say that language, but they also refer, they acknowledge the argument from Norton at the time,
5:39
and its expert that Agrawal taught combined models from multiple computers.
5:43
They say there's just no motivation to combine the systems together to get the combined model together with the other.
5:49
So, from our perspective, that shows at least that it's conventional there.
5:53
The specification tells us it's conventional.
5:56
The law is clear that the SAP case and the Symantec case, for example, that we've cited in our briefs...
6:03
Judge Timothy Dyk
But what specification teaches it's conventional?
6:06
What's the if here?
6:07
Using two computers to create a single model?
6:11
Appellant Attorney
Just combining models in any way, Your Honor.
6:13
The specification, again, it said...
6:18
Judge Timothy Dyk
There's an argument in the red brief, as I understand it, that the heart of this is efficiency.
6:24
You can create a...
6:26
Combined model more efficiently by the use of two computers or multiple computers rather than one computer, correct?
6:34
Appellant Attorney
The district court said that, too.
6:35
Yes, that's the argument.
6:36
That is completely contradicted by the specification.
6:40
So, the judge...
6:41
Judge Timothy Dyk
Wait a minute.
6:42
What's contradicted about it?
6:43
Appellant Attorney
Let me point it out.
6:45
So, the judge said the improved efficiency, this is at Appendix Page 21,
6:49
was due to the use of distributed sensors, not models, sensors,
6:53
that those sensors could be used to collect...
6:56
to effectively build models more efficiently.
6:58
The specification, where I say it contradicts it, is Appendix 289.
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It's Column 12, beginning at Line 44.
7:06
It says you can use any suitable sensors.
7:09
It doesn't say you're using special sensors,
7:11
and the claims certainly don't say use distributed sensors in order to achieve more efficiency in combined models.
7:19
So, the claims don't say distributed sensors.
7:21
Judge Timothy Dyk
My understanding of efficiency is that you can do it more quickly by using multiple...
7:26
rather than one computer.
7:28
Appellant Attorney
Okay.
7:28
A couple of responses to that.
7:30
So, SAP tells us even if it's novel, even if it's groundbreaking, even if it's revolutionary,
7:35
that doesn't get you to eligibility.
7:37
Symantec tells you even if it's not obvious, it doesn't get you to eligibility.
7:40
The EOLA's case from this court...
7:42
Judge Sharon Prost
We're not on the same page.
7:43
Appellant Attorney
The EOLA's case, I think...
7:45
Judge Sharon Prost
I think Judge Dyke is trying to help you on understanding correctly
7:48
that if it's just efficiency, it's not enough.
7:51
You use two things rather than one, and that grants you efficiency, and that's abstract.
7:56
Appellant Attorney
If I'm arguing with you and you're trying to help me on that, I apologize.
7:59
I think the court's decision in the EOLA says that same thing,
8:02
which is distributing computing in order to make it faster, more efficient,
8:06
is not also something that's going to take you out of being abstract.
8:10
Judge Jimmie Reyna
How do you distinguish this case from Finjin, number one?
8:13
And then, number two, why am I wrong in looking at this case
8:18
as not a case representing a technological solution to a technological problem?
8:26
This has only happened in the computer space area.
8:30
It seems to me that a problem has been identified.
8:33
The claims speak as to addressing that particular problem,
8:38
and they're directed to a specific solution.
8:42
Appellant Attorney
So in reverse order, Your Honor.
8:44
Even Alice said that it was limited only to computers.
8:48
The claims recited computers.
8:50
It was going to be something that while a human might be able to do it, it would take too long.
8:54
So that it recites computers is a way to...
8:56
to make things more efficient, back to the efficiency point,
8:59
is exactly what Alice and then many decisions in this court have said is abstract.
9:04
Judge Jimmie Reyna
In the computer world, there's a particular problem, right?
9:07
And this has to do with cybersecurity.
9:09
Appellant Attorney
It does.
9:10
So a fair warning, sort of personal level, so that it's mandatory.
9:13
Judge Jimmie Reyna
All computers are conventional.
9:18
There's still problems that arise in the computer space that pertain to that particular space.
9:26
And...
9:26
And...
9:27
And I see this as one of those problems.
9:30
Am I wrong on that?
9:31
Appellant Attorney
I think you are wrong, Your Honor.
9:33
I think all you have here is the abstract concept of taking data from a program,
9:38
comparing it to a model, and seeing if it's anomalous compared to that model.
9:42
That's the organization or the classification of data.
9:45
Judge Jimmie Reyna
But it combines both models.
9:46
There's a combination of both models.
9:48
So there's actually a step that you missed there.
9:50
Appellant Attorney
Well, on the combined models...
9:52
So a fair warning is maybe my best case on this, Your Honor.
9:55
If you go to the fair warning case,
9:56
which we rely on heavily in our papers,
9:58
they never mention by name.
9:59
There's no response to fair warning, personal web, or Symantec in their papers.
10:05
They don't even refer to the cases.
10:06
Fair warning has a combination, too.
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It takes data.
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There are these audit logs that are being investigated.
10:13
And the data going into those audit logs is combined from multiple sources,
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which the specification and the opponent, the patent owner, excuse me,
10:23
argued, showed it made it more robust.
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Made the data better.
10:27
Made it so you could learn more about your user and your patient
10:30
to improve the quality of the computing.
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That was not enough.
10:34
Because all you're doing is combining abstractions at that point.
10:37
Judge Jimmie Reyna
You were going to address Finjin, weren't you?
10:39
Appellant Attorney
Yes, thank you.
10:40
So Finjin's, I think, very supportive of our position.
10:43
In Finjin, what the court found was a new kind.
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That was the quote.
10:47
New kind of file that didn't exist before.
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It was a file that included something called a downloadable and a security profile.
10:56
And not only did it not exist before,
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but the court found that it did things that weren't done before.
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That this new file that never existed before could identify suspicious code
11:09
and detect dangerous or unwanted operations in a way that was unconventional.
11:14
Conventionally, what it was saying was done was essentially what the claims in this patent do,
11:18
which is compare to a model or a database and say,
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is this green light or red light?
11:23
Is this a good or a bad action or operation?
11:26
Is this access allowed or denied?
11:29
That was conventional.
11:31
What Finjin said was this is a whole new behavioral approach.
11:34
We just don't have that fact pattern here.
11:36
There's no new kind of file.
11:37
The combined models are conventional.
11:39
It's not doing something new that couldn't have been done before.
11:43
And I don't think there's been any evidence to the contrary on any of those things.
11:48
Judge Sharon Prost
If you've finished answering, Judge Raynard,
11:50
Appellant Attorney
what do we do on step two, even if we were to agree with you on step one?
11:54
I think Your Honor can address step two yourselves.
11:56
As a matter of law, it's certainly in your purview.
11:59
Judge Sharon Prost
Well, we were talking a lot in the other case about due process and sufficient notice.
12:08
There was nothing that went down here.
12:10
I mean, this case went down on a motion to dismiss,
12:13
and then it just went away at trial.
12:15
So how are we satisfied if the parties had an opportunity to make their arguments
12:20
and someone had an opportunity to review those arguments?
12:24
Appellant Attorney
So I think where we stand,
12:26
what we did on that is the, you're right, it went down on a motion, Rule 12 motion.
12:30
Judge Timothy Dyk
Did the motion to dismiss cover both steps one and two?
12:34
Appellant Attorney
The motion did.
12:35
The opposition did.
12:37
The judge found that it was abstract for the reasons I said,
12:42
and so never reached step two.
12:45
In a clarification order, the judge then said,
12:48
I'm throwing this out as a matter of law, the whole thing.
12:50
And so I think the parties addressed step two.
12:53
The court didn't.
12:54
Your Honor's in.
12:57
At least Free Stream Media and, I think it was CardioNet,
13:01
have addressed step two even when the district court didn't get to it,
13:04
when the district court did what this one did, decided on step one.
13:08
So you could, if you choose to, and we would certainly urge you to,
13:11
because we don't think there's anything new that needs to happen down in the district court,
13:14
to assess the intrinsic evidence here.
13:17
It's a de novo question anyway.
13:18
It's in front of your honors who can resolve this case for them.
13:21
So we would ask you to go ahead and do step two.
13:23
You certainly could send it back if you chose to.
13:30
Back to the specification, if I might, though,
13:32
I just wanted to point out that the specification tells us that everything here is conventional.
13:38
At Appendix 285, Column 3, Binion Line 16,
13:42
it says you can use any suitable algorithm for anomaly detection.
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You can use the STEM or the Valgrind emulators that were known, prior art emulators.
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You can use, quote, any other suitable technique.
13:53
And you see this for all of the different pieces and parts of the claims.
13:57
And I don't have time.
13:58
We'll go through each of them.
13:59
But I'd point out Appendix 287, Column 8, beginning at Line 15,
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Appendix 289, Column 11, beginning at Line 19,
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and Appendix 293, Column 19, beginning at Line 49.
14:13
I'm almost out of time.
14:14
I'm going to turn to the infringement issue unless your honors have questions for me further.
14:17
Judge Sharon Prost
I probably went to the enhancement issue.
14:19
Appellant Attorney
The enhancement issue?
14:21
So, your honors, we would ask you to reverse on the enhancement issue
14:27
because it's premised on the infringement issue.
14:28
It's on two pieces of analysis that we think are both faulty.
14:33
One is on willfulness.
14:35
The second is on the so-called litigation misconduct,
14:40
which I understand and I'll concede is a factual issue with a lot of…
14:45
Judge Sharon Prost
Well, you've got two pieces to your argument.
14:46
One goes to the case we're about to hear next, which is…
14:50
Yes, sir.
14:50
Assuming, hypothetically, we remove everything dealing with the dossier litigation in this case.
14:56
Okay.
14:56
We're still left with findings.
14:58
And a conclusion by the district court of the enhancement.
15:03
And she suggests, without really saying clearly,
15:06
that she's not considering the negative inference in reaching her conclusion.
15:12
Appellant Attorney
May I answer that?
15:13
Yeah.
15:13
She says that.
15:14
She also says that the so-called litigation of conduct
15:19
weighs as heavily towards enhancement as it possibly could.
15:22
So, she says both things.
15:24
And we think it clearly when you read the analysis.
15:26
You can see that that finding,
15:28
the litigation misconduct,
15:29
which we strenuously disagree with,
15:32
was very, very important to the way she bettered the decision.
15:35
What about the rest of it?
15:35
So, the rest of it was the willfulness.
15:37
Judge Sharon Prost
You'll get a remand if there's something left to it.
15:40
And the judge will get a do-over, right?
15:42
Even if the egregious misconduct…
15:43
Appellant Attorney
I think if you decide it's a matter of law, there's no willfulness,
15:46
then there's no need for a remand.
15:48
Okay. Let's assume you don't.
15:49
Then I think you're back to a remand.
15:52
Then I think that probably would go to a remand
15:54
if you found that there's willfulness,
15:56
but the litigation misconduct was waived.
15:59
Judge Sharon Prost
So, then there were other questions.
16:00
Was there anything left other than if you take away
16:03
the inference and the dossier
16:06
dealing with the other litigation and the other patent?
16:09
You challenged in your brief the closeness of the case,
16:12
her argument that it was not close,
16:15
and you challenged other pieces of her taking it apart.
16:18
Appellant Attorney
There's a number of brief factors
16:19
Judge Sharon Prost
that I think that the parties have addressed both over…
16:21
A closeness of the case,
16:22
I mean, it seems to be kind of a legal question.
16:24
Can you consider an enhancement
16:25
of all the other stuff that went on beforehand
16:28
and the…
16:29
All of the other stuff that you prevailed?
16:32
How…
16:32
There's no right or wrong answer to that, right?
16:35
Appellant Attorney
I think there's…
16:36
I think what…
16:37
What…
16:37
The way I would read the case law
16:38
is that you look at the totality of the circumstances
16:41
on the closeness of the case.
16:42
I think it's wrong, as Columbia says,
16:44
that you should disregard the things that happened pre-trial.
16:47
Judge Sharon Prost
Well, how does that jive with the point
16:49
you were making four minutes ago,
16:51
which is we should take away everything
16:52
that happened in the dossier stuff?
16:54
That stuff was part of this litigation initially.
16:57
So, you can't have it both ways.
16:59
No, no.
17:00
We're supposed to include everything
17:02
starting back five years ago, or we're not.
17:05
Appellant Attorney
I don't disagree.
17:05
I'm not asking to have it both ways.
17:07
But the dossier argument,
17:09
the dossier so-called misconduct,
17:11
went to an issue we won in front of the jury.
17:13
It went to the question of fraudulent concealment.
17:17
What they say dossier was going to do
17:19
was come to court and say,
17:21
I think this patent that Norton has
17:24
should have your name on it.
17:26
That was a fraudulent concealment claim
17:27
about Norton's patents,
17:28
not about the patents.
17:29
Fair enough.
17:30
Judge Sharon Prost
But if we're talking about the closeness of the case,
17:32
we're dealing with the infringement bindings
17:34
of the jury, which were narrow.
17:37
Why should other stuff that happened before
17:40
necessarily, as a matter of law,
17:42
be required to be considered by the district court
17:45
in this circumstance?
17:46
Appellant Attorney
I think when you look at closeness of the case,
17:48
you look at the case as a whole,
17:50
not just the last three weeks of the case.
17:52
And the case as a whole is one in which,
17:54
over and over again,
17:56
Norton had significant success
17:58
and claim construction went its way.
18:00
All six patents were found not to be infringed.
18:03
Most of the claims were invalidated in IPR.
18:06
Most of the claims even of the patents in suit
18:08
were out of the case.
18:10
And so if you're talking about closeness of the case,
18:12
which decisions of this court have done broadly,
18:16
then you have to look at everything,
18:17
not just the jury trial.
18:20
Judge Jimmie Reyna
Could you address the extraterritorial issues
18:24
and for itself?
18:26
Yes, Your Honor.
18:28
Appellant Attorney
So on the foreign sales point,
18:31
maybe what I'll do to try to be as brief as I can
18:33
is just go straight to Brumfield.
18:35
So this court's decision in Brumfield,
18:37
we think, is dispositive in establishing
18:40
that the foreign sales in this case
18:42
should not have been included in the calculation
18:44
of the reasonable royalty.
18:45
Judge Sharon Prost
Well, they didn't define what proximate causes.
18:47
I mean, Brumfield left some issues open.
18:50
Appellant Attorney
It did.
18:50
But there's a but for it.
18:52
I'm sorry.
18:53
I didn't mean to interrupt you.
18:54
Go ahead.
18:55
We believe that the facts in this case
18:57
fail the Brumfield but for causation test,
19:00
not even if you agree with you
19:03
that proximate cause is not fully vetted yet
19:05
as far as what it means.
19:06
But it establishes a but for test that says,
19:09
did the domestic conduct,
19:14
was the value of that infringement
19:17
increased by the foreign sales?
19:20
And when you go through the facts,
19:22
so if you look at the facts of
19:24
Brumfield supplying Western Geco,
19:27
the master software in both cases was made,
19:31
developed, updated, tested in the United States.
19:35
The master software, there was a CRM claim
19:37
in both patents from Brumfield in this case.
19:41
Is that the CRM claim?
19:43
There is a CRM claim in both.
19:45
There's a CRM claim here, claim 11,
19:47
and there was a CRM claim in Brumfield as well.
19:49
Judge Jimmie Reyna
And both the master disks was made in the U.S.?
19:52
Appellant Attorney
Made in the U.S., developed, tested,
19:54
all of that.
19:54
And maybe most importantly is that master software
19:58
was made before the patents issued
19:59
in Brumfield and here.
20:01
And that's really important to the proximate cause,
20:03
excuse me, the but for cause question
20:06
because the overall software,
20:08
the instructions that go into what they say in fringe,
20:11
were done in Sonar Bash, the accused products,
20:14
two years before the patents started to issue at least.
20:18
And so the same thing was true in Brumfield.
20:21
And what that left was a question, well,
20:23
what happens two years later when the patents issue
20:27
that could not have happened overseas?
20:30
Brumfield says, let's assume, just for sake of argument,
20:33
that the manufacturer, the first initial development design,
20:36
all of that stuff had to happen in the U.S.
20:38
You can make the same assumption here.
20:40
Let's just say it had to happen.
20:42
The question then becomes, well,
20:44
what about two years later when the patents issue?
20:46
Why couldn't it have been replicated overseas at that point
20:48
in a way that would have been non-infringing?
20:51
And there's no evidence in this case.
20:53
There's no jury finding.
20:54
There's nothing from the judge that says either
20:57
the later enhancements to Sonar Bash,
21:00
when the patents came out,
21:01
were themselves adding to the infringement
21:04
or necessary, necessary to enable the foreign sales
21:07
because you could have replicated it overseas.
21:10
And there's nothing in the verdict,
21:13
the final judgment, the judge's analysis,
21:15
that says, back to the butt fork question,
21:19
that the value of that making of the software,
21:22
of the master, was somehow enhanced by the foreign sales.
21:25
So the making was excluded and affirmed
21:29
for being excluded in Brumfield.
21:31
It was allowed to happen and go to the jury in this case.
21:33
That was legal error.
21:35
There's a lot more I could say on Brumfield, Your Honor.
21:37
I recognize I'm way over my time, though.
21:40
Did you want me to address further?
21:42
Judge Timothy Dyk
I think we're out of time.
21:43
We'll give you two minutes for a moment.
21:44
Thank you, Your Honor.
21:47
Mr. Guzman.
21:54
Appellee Attorney
Judge Dyke, and may it please the Court.
21:56
I first wanted a point of clarification.
22:01
The four claims that were asserted
22:04
were claims to 11 and 27 of the 322
22:09
and claim two of the 115.
22:12
And all of those claims have the combined model limitation
22:16
that says wherein the model is a combined model
22:20
created from models created using different computers.
22:24
So all of the claims have that limitation.
22:26
Judge Timothy Dyk
Let's talk about whether these claims include things
22:31
which are not conventional.
22:33
It may be that the specification has things in it
22:36
which are not conventional,
22:37
but I'm not quite understanding what's not conventional
22:42
about the claims that are asserted here.
22:45
And, you know, to some extent you argue
22:47
that it features SEAL activity,
22:50
except that the claims don't require SEAL activity.
22:53
What is it that's in the claims here
22:56
that's not conventional?
22:57
I mean, you would agree, I assume,
22:59
that merely dividing the task
23:01
that might have been performed by one computer
23:05
among two or more computers is conventional.
23:08
That's not something that Reynolds did not abstract.
23:13
Appellee Attorney
I agree with Your Honor.
23:14
But if I may, there is a lot more to these patent claims
23:18
than just dividing a task among multiple computers.
23:22
And if I could just spend, like, two or three minutes
23:24
drilling down on the claimed invention,
23:28
I'd like to persuade you that there is a lot more here
23:31
than just the concept Your Honor mentioned.
23:35
If we think back to when the professors came up
23:39
with this invention, it's 22 years ago.
23:41
I was graduating high school.
23:42
And the Columbia professors gave computer systems
23:46
the ability to detect new malware.
23:49
Judge Timothy Dyk
Okay, but we can't talk about the claims.
23:53
Appellee Attorney
Yeah, and if we look at the claims,
23:54
the claim elements, there are really two parts to it,
23:58
Judge Dyck.
24:00
You know, first is the professors discovered
24:03
that normal programs tend to access
24:07
or call the operating systems...
24:10
Judge Timothy Dyk
But you keep talking about what the professors invented.
24:13
And it may be they invented something that's non-abstract.
24:19
I'm talking about the claim language here.
24:22
I mean, you have a claim language,
24:24
you have a complex specification,
24:26
which may well include things that are non-abstract.
24:30
The question is, do these claims here,
24:34
which claim two appears to be representative,
24:38
incorporate that?
24:39
Appellee Attorney
Yes, they do, Your Honor.
24:40
So when I'm talking about what the professors invented,
24:43
I'm going to tie everything to something
24:45
that's in the claim language.
24:47
So we can agree that the claim language
24:50
includes function calls.
24:52
In fact, the entire claim is built around function calls.
24:57
And what the professors discovered
25:00
is that the function calls made by normal programs
25:04
have recurrent patterns.
25:06
And to translate that into a technological solution,
25:11
the claims talk about a model of function calls.
25:14
And comparing a function call made by a program...
25:18
Judge Timothy Dyk
And modeling was conventional.
25:19
That was well-known, right?
25:21
Appellee Attorney
Not modeling function calls, Your Honor.
25:23
So nobody was modeling function calls at the time.
25:27
And the first half of the professors' invention here...
25:32
Judge Timothy Dyk
Where do I find that?
25:33
Where do I find the idea
25:37
that modeling function calls wasn't conventional?
25:40
Appellee Attorney
Well, so if the court looks at appendices A and B
25:45
to the provisional patent application,
25:47
for example, at Appendix 4189,
25:50
and then this is mentioned in the specification of the 322
25:54
at Column 1, 26 to 33,
25:58
at the time, computer defenses used rules
26:03
that were based on the attributes of known programs,
26:06
and those didn't work when it came to a new type of attack.
26:11
So what the professors did was...
26:14
Judge Sharon Prost
Can you...
26:15
I'm not going to dig through the appendices right now,
26:17
but since you mentioned Column 1 of 322,
26:20
can you tell us what you're talking about in Column 1?
26:22
Yes, Your Honor.
26:24
Appellee Attorney
So it's mentioned briefly here in Column 1 of the 322
26:29
at lines 26 to 33,
26:32
but it talks about the various types of computer attacks.
26:37
And it says that many computers are protected
26:39
by antivirus software and firewalls.
26:42
However, these preventative measures are not always adequate.
26:47
And what that means, Your Honor, to a person...
26:50
Judge Timothy Dyk
But where does it say modeling function calls was not conventional?
26:56
I mean, and, you know,
27:00
you talk about what the professors invented.
27:02
That's very interesting.
27:04
But I've got to find it in the claim
27:08
as construed in the latest specification.
27:11
Appellee Attorney
I agree, Your Honor.
27:12
But what I'm saying is the use of function calls specifically
27:17
to identify malware,
27:20
abnormal program executions,
27:22
which is what the claim language says,
27:25
nobody had done that before.
27:27
Judge Timothy Dyk
Is that, your view, is that the one thing
27:30
that's not conventional about Claim 2?
27:34
Appellee Attorney
No, Your Honor.
27:35
I think that as construed,
27:38
the selective emulation, because the claim...
27:42
Judge Timothy Dyk
Selectivity is not a claim requirement.
27:45
It is within the claim,
27:47
but it doesn't require selectivity.
27:50
Appellee Attorney
But the court assesses step one of the...
27:53
Judge Timothy Dyk
All right, let's put that aside for a moment.
27:55
Appellee Attorney
But the court includes in its assessment
27:58
the claim constructions,
27:59
because the constructions define the meets and bounds of the claim.
28:03
Judge Timothy Dyk
The construction is not that this is limited to selectivity.
28:07
The claim on its face is very clear
28:11
that it's not limited to selectivity.
28:13
Appellee Attorney
But the claim construction requires selective execution,
28:17
Your Honor,
28:18
and the claim talks about executing
28:20
at least part.
28:21
Judge Timothy Dyk
Where does the claim construction
28:22
require selectivity?
28:24
Appellee Attorney
The claim construction is soft...
28:26
Where?
28:27
Where?
28:28
At the end.
28:28
Where's the claim?
28:29
Judge Timothy Dyk
What page?
28:31
Appellee Attorney
The court's claim construction order,
28:33
Your Honor.
28:34
Judge Timothy Dyk
What page?
28:36
Appellee Attorney
Apologies.
28:49
Apologies, Your Honor.
28:50
I don't have the citation right at hand.
28:52
But the district court...
28:53
Judge Timothy Dyk
You're supposed to come here
28:54
and make arguments.
28:55
You're supposed to be able to point us
28:56
to where the stuff you're relying on appears.
28:58
Appellee Attorney
I apologize, Judge Dyke.
29:00
I have the construction memorized,
29:02
which is software alone
29:04
or in combination with hardware
29:06
that permits the monitoring
29:08
and selective execution
29:10
of parts or all of a program.
29:13
Judge Timothy Dyk
Parts or all?
29:14
It includes all.
29:15
Appellee Attorney
But it has to be selective execution.
29:18
Judge Timothy Dyk
Okay.
29:20
I don't want to argue with you about this,
29:21
but it seems to be on the face of it.
29:24
It clearly includes all.
29:25
Appellee Attorney
Well, no, but what was novel
29:29
and what was not conventional,
29:30
Judge Dyke,
29:31
and this is described in Appendix C
29:34
to the provisional
29:35
in a fair amount of detail,
29:36
what was not conventional
29:39
was using the emulator
29:42
to selectively execute
29:43
parts or all of the program.
29:44
It may be so,
29:45
Judge Timothy Dyk
but that's not a requirement of the claim.
29:47
That's the problem.
29:48
It says select or all.
29:52
Parts or all.
29:53
But it has to be selective.
29:54
Okay, but I don't want to argue with you about this.
29:55
Let's pass over this from there.
29:57
And is there any other feature of this
30:00
that's not conventional?
30:02
Appellee Attorney
I believe it's the combination,
30:04
Judge Dyke,
30:05
of selective emulation
30:08
together with the combined model
30:11
of function calls,
30:13
which when those things were put together,
30:16
they changed the way that a computer...
30:19
Judge Timothy Dyk
Did the district court rely on the modeling
30:24
of function calls as being not conventional?
30:26
Appellee Attorney
The district court relied
30:28
on the model of function calls itself
30:30
as being the key point.
30:34
Judge Timothy Dyk
Okay, could you show me
30:35
where it talks about that?
30:38
Appellee Attorney
Yes, Your Honor.
30:41
In the court's 101 analysis,
30:44
which is here at Appendix 19 to 21,
31:11
Your Honor,
31:12
which is the court's decision denying...
31:15
Judge Timothy Dyk
Okay, where's the specific language
31:17
about that?
31:17
The modeling of function calls
31:20
not being conventional.
31:27
Judge Jimmie Reyna
What was that page number again, counsel?
31:29
Appellee Attorney
I have Appendix 21 to 23, Judge Reyna.
31:38
And apologies,
31:40
the most specific language I would like
31:42
to rely on is Appendix 24.
31:45
And at the bottom of the page, Judge Dyke,
31:49
the court says,
31:51
similar to the patent claims in FinGen,
31:53
the 322 patent utilizes a new type of model
31:57
that improves the efficiency of computer virus screening.
32:00
Judge Timothy Dyk
Okay, but it doesn't refer to function calls.
32:02
Appellee Attorney
Well, but what the court's talking about
32:05
is the claims model of function calls,
32:07
Your Honor.
32:08
Judge Timothy Dyk
Where's this in your brief?
32:11
Appellee Attorney
What, in our brief?
32:13
Judge Timothy Dyk
Yeah, where does the brief talk about
32:15
what's not conventional here
32:16
is the modeling function call?
32:20
Appellee Attorney
Well, we address that,
32:21
we talk about the model of function calls
32:27
not being conventional at page 39
32:30
of the blue brief.
32:31
39?
32:32
39 of the red brief, Your Honor.
32:39
Judge Timothy Dyk
Where?
32:48
Appellee Attorney
We say,
32:49
as construed, the model must be created
32:51
using the function calls actually made
32:54
during program execution.
32:56
And we point out it cannot be created
32:58
based on a program's static code.
33:00
We're talking about modeling function calls,
33:03
which is a specific action that occurs
33:06
in a computer system.
33:06
Judge Timothy Dyk
Okay, but where does it say that modeling
33:08
a function call is something that's new?
33:12
Appellee Attorney
Is something that's new?
33:14
Yeah.
33:15
I believe that's what we were intending
33:17
here on page 39, Judge Dyke.
33:20
Unknown
Okay.
33:21
Judge Timothy Dyk
All right, go ahead.
33:24
Appellee Attorney
But I want to emphasize
33:26
what we're talking about in these patent claims
33:29
is something that actually changed
33:32
the way that the computer system worked.
33:34
When you put this software on the computer,
33:38
it was able to detect malicious programs
33:41
that it could not detect before.
33:43
If we look at precedent,
33:45
from this court, the Finjin case
33:48
and the SRI case, for example,
33:50
and even Enfish,
33:52
the claims here have more detail.
33:55
They have more specificity
33:57
about how to protect a computer
33:59
than the eligible claims that we had
34:02
in Finjin, SRI, and Enfish.
34:05
And I think that what we have...
34:07
Judge Timothy Dyk
They're different.
34:08
I mean, each of these cases is different.
34:11
Finjin created a new computer file,
34:13
which was a downloadable,
34:15
which was attached.
34:16
We don't have that here.
34:17
It's different.
34:18
Appellee Attorney
Well, but in Finjin,
34:21
the security profile that was created
34:24
for the downloadable,
34:25
as construed by the court,
34:27
that was simply the identification of code
34:31
that may have a malicious operation.
34:34
And there was no description about how you do that.
34:38
And if it was enough in Finjin
34:40
to have the new security profile,
34:42
it should be enough here
34:43
to have a new model of function
34:46
that is just like the one
34:51
that we have in SRI,
34:53
Judge Jimmie Reyna
or the one that we have in Enfish.
35:02
Appellee Attorney
So, again,
35:03
and we have a lot of information
35:03
from the people
35:03
that are going to be using Finjin
35:04
to get the new version of the code.
35:07
So, it's interesting
35:08
that we've got these
35:08
two,
35:10
two different language
35:11
that are available here.
35:11
And I think that's the key
35:14
to the security profile
35:16
the static code, the claim specifically required an inspector,
35:20
and then as construed by the court, that inspector identified code
35:25
that may contain malicious operations and put it in what was called
35:29
a security profile that was attached to the program.
35:33
This is an advancement over FinGen, and the FinGen tech does not infringe
35:37
these claims because we're not using static code.
35:41
The program actually has to execute on the computer,
35:44
and that requires the emulator to protect the system.
35:49
What was happening in FinGen, the program didn't execute,
35:52
so it couldn't cause damage.
35:56
Judge Timothy Dyk
Emulator is not new, right?
35:58
Appellee Attorney
The professor's emulator was new, as described in Appendix C
36:04
to the provisional patent application.
36:06
Judge Timothy Dyk
But the use of emulators itself is not new, right?
36:11
That was common.
36:13
Appellee Attorney
I will give you, Judge Dyke,
36:15
that emulators were known.
36:17
The professor's selective emulator that could do all the program
36:22
or choose to do parts, nobody had ever done that before.
36:27
If I could touch on step two briefly.
36:31
Judge Jimmie Reyna
Before you go, so if you practice the claim at an issue,
36:39
are you in and of itself practicing conventionality?
36:43
Is it conventional just because computers are involved,
36:47
or is there something else we need to look at?
36:50
Appellee Attorney
Well, it's not conventional just because computers are involved.
36:55
You know, as this court...
36:57
Judge Jimmie Reyna
Well, I don't think so either.
36:59
Otherwise, you know, all code and all computer pans would be out the window.
37:05
But our jurisprudence is that if you're using a conventional computer
37:10
and practicing the claims renders that computer into a non-conventional computer
37:17
or a special.
37:19
Is that what we have here?
37:21
Appellee Attorney
That is, Judge Reyna.
37:22
So what we're talking about is software, just like in the McRoe case,
37:26
just like in Enfish, just like in FinGen, just like in SRI.
37:32
It's software.
37:33
But when you download that software onto a computer,
37:37
you change the way the system works.
37:40
It is not simply performing a process or automating a process with a conventional computer.
37:47
Because the process and the claims doesn't exist outside of a computer system.
37:53
Judge Jimmie Reyna
So you're saying the model of function calls, that's what's not conventional here.
38:00
Appellee Attorney
I believe it is the combination, Judge Reyna, of the model of function calls.
38:07
It was not conventional to screen for malware with function calls.
38:12
There was no computer code that reflected sequences
38:17
of function calls to detect malware before the professors came up with their invention.
38:22
And I believe that it is that in combination with the selective emulation of all or part of the program,
38:29
which Appendix C to the provisional says created enormous efficiency benefits
38:35
when compared to a virtual machine or another sandbox.
38:39
3000% system improvement, Appendix C says, at Appendix 42.22.
38:46
Judge Timothy Dyk
So if we take away from that, the same thing.
38:47
The selective feature, let's assume that we conclude as I was suggesting earlier
38:52
that the claim isn't limited to selectivity.
38:56
Let's say that's not part of the claim, is this still not abstract?
39:03
Appellee Attorney
Yes, absolutely, Judge Dye.
39:05
The use of function calls, on its own, to detect malware was entirely new.
39:14
And if the court looks at the professors,
39:17
testimony. For example, if you reach step two, and if the court looks at appendix 522-05-09
39:25
and 524-37-45, the professors explain why the use of function calls to detect malware was itself
39:36
unconventional. Nobody was doing it. And then modeling the function calls.
39:42
Judge Sharon Prost
Beyond the professors, anything in the spec? What's the best you have in the spec? You gave
39:49
us claim one. I'm sorry, column one a few minutes ago. But I'm not that good with relying on what
39:58
Appellee Attorney
the professor said. I'd rather see it in the spec. Understood, Judge Prost. To be candid with you,
40:06
the best intrinsic record citations I can give you are appendices,
40:11
A, B, and C to the provisional application, which unpack some of the points that are made
40:19
Judge Timothy Dyk
more briefly. It's not in the spec we're talking about here for the 322 or the 115.
40:25
Appellee Attorney
But for step 101, the court can look to the intrinsic record.
40:30
Judge Timothy Dyk
The answer. It's not in the spec for the 115 or the 322.
40:35
Appellee Attorney
Well, it is at column 126 to 33, saying that this invention was addressing an
40:41
application.
40:41
It's not in the spec for the antivirus software and firewalls.
40:45
Judge Timothy Dyk
That's pretty general.
40:47
Appellee Attorney
Well, but if a person of skill in the art wanted to, a person of skill in the art would understand
40:51
what that meant. And they would look to the entirety of the intrinsic record. And appendices
40:56
A, B, and C to the provisional, which were the professor's groundbreaking research papers,
41:03
that provides a full unpacking of what it means for the invention to address
41:08
the inadequacies with existing antivirus.
41:10
Judge Sharon Prost
And we.
41:11
Where is that cited in red? Did you cite in your red brief, in connection with one-on-one,
41:16
do you cite these provisional appendices?
41:19
Appellee Attorney
Yes, we do. So, Judge Prost, when we, in the statement of the case, when we are describing
41:27
the invention, for example, on page seven of the red brief, the paragraph on selective
41:42
emulation, we specifically say, as described in appendix C, to their provisional, and we
41:48
cite appendix.
41:49
Judge Timothy Dyk
That's a different point.
41:50
Unknown
Hm?
41:51
Judge Timothy Dyk
That's a different point.
41:52
Appellee Attorney
Well, and we cite on page five, Judge Dyck, where we're talking about the detecting new
42:01
attack modes, which continues on to page six. We specifically say, as the professors described
42:08
in appendix A to their provisional patent application. And we cite to appendix 41, 88,
42:14
to 96.
42:15
Judge Sharon Prost
But then you have a whole section that deals with 101.
42:18
Yes.
42:18
Separately, right? In your argument section, page 33 to 41, almost 10 pages.
42:25
Yeah.
42:25
Is that referenced back?
42:27
Judge Timothy Dyk
It is. It is, Judge Prost. So…
42:29
Where does the one-on-one discussion refer to these appendices?
42:33
Appellee Attorney
Well, we refer, we, we supersite Judge Dyck back to our description of the invention,
42:40
just so that we didn't have to repeat everything that we had said about the invention.
42:44
It's not in the one-on-one discussion, then?
42:45
No, it is Judge Dyck.
42:47
Judge Timothy Dyk
Specific references to these appendices?
42:48
The appendices are not in the one-on-one discussion.
42:51
Appellee Attorney
Judge Dyck, I believe that some of the appendix page numbers are cited in the one-on-one discussion,
42:58
but we do supersite in one-on-one back to the description of the invention.
43:04
Judge Timothy Dyk
Where does the description of the invention talk about the function?
43:10
Appellee Attorney
Well, it, so the page number that I just gave the Court, which is page six, for example,
43:24
specifically talks about the benefits of modeling function calls made by executing programs in the ordinary course,
43:32
and then comparing a function call made by an unknown program to the model.
43:38
Judge Timothy Dyk
Okay, but again, it doesn't say that this is not conventional.
43:42
It doesn't tell us that this was something new.
43:46
Appellee Attorney
Well, Judge, Judge Dyck, if you get to step two, the professors have testified now that this was not conventional,
43:54
the appendices to the provisional patent application say it was not conventional,
44:00
and ultimately, after Berkheimer, if there is a fact fight about whether...
44:06
Judge Timothy Dyk
Could you give us an example from one of the appendices? Where do we find that?
44:10
Appellee Attorney
Yes, so page 4189 of the appendix, Judge Dyck.
44:14
Judge Timothy Dyk
Which volume?
44:17
Appellee Attorney
I think that is volume two, Judge Dyck.
44:30
Judge Timothy Dyk
4189?
44:32
Appellee Attorney
Yes.
44:34
Judge Timothy Dyk
Okay.
44:39
Appellee Attorney
Okay.
44:39
And appendix 4189 is the first...
44:43
Judge Timothy Dyk
We are on the page.
44:44
Appellee Attorney
So if you look at the introduction, Judge Dyck,
44:50
it says this talks about the deficiencies in existing computer defenses, and it says...
45:00
Judge Timothy Dyk
Where does it talk about modeling a function call being used?
45:05
Appellee Attorney
Well, this talks about modeling all anomalies from running programs being used.
45:11
Judge Timothy Dyk
Modeling function calls.
45:12
It's new.
45:14
Appellee Attorney
It says here...
45:19
Judge Jimmie Reyna
Where are you reading from, counsel?
45:21
Appellee Attorney
Reading from page 4189, which is the first page of appendix A to the provisional patent application,
45:31
and it talks about the fact that we describe a new approach.
45:38
Where?
45:38
Judge Timothy Dyk
Where are you reading from?
45:39
Appellee Attorney
I'm reading from the top of column two, Judge Dyck, on appendix 4189.
45:43
It says we describe a new approach based on anomaly detection using a method that trains on normal data
45:54
and looks for anomalous behavior that deviates from the normal mode.
45:59
This method can better identify unknown attacks.
46:03
And then the paper is talking about access to the Windows registry, which is...
46:07
Judge Timothy Dyk
What you read doesn't talk about function calls.
46:10
Appellee Attorney
Well, but Windows registry access is a function call.
46:15
This paper talks about why that was new, Judge Dyck.
46:19
Okay.
46:19
Judge Timothy Dyk
Why don't you take a couple of minutes to talk about the other issues that were addressed.
46:23
Judge Sharon Prost
Can I just make one comment, which is it's very challenging for us and sort of frustrating.
46:29
I mean, you led with efficiency, and then you seem to have given that up,
46:33
and now we're pivoting to modeling of function calls, which wasn't really an argument fully developed,
46:42
at least in the argument section of 101, was it?
46:44
Appellee Attorney
Well, just to...
46:46
And I apologize for the frustration, of course.
46:49
I'm not giving up efficiency.
46:52
I think that the...
46:54
Judge Sharon Prost
Okay, but let's turn to the function calls.
46:56
I mean, in fairness to you, I did find one sentence in red that says the invention accomplished something
47:01
that conventional methods could not, and it cites to back to 5 and 6.
47:06
Appellee Attorney
Correct.
47:06
Judge Sharon Prost
So in fairness to you, there is some incorporation of that in the argument section,
47:11
but it's hardly a fully developed argument.
47:14
Appellee Attorney
Well, but I guess, Judge Prost, we didn't want to repeat everything that we had said in the description of the invention.
47:22
Judge Timothy Dyk
But you're saying now this is the heart of your argument, and it's not developed in the brief.
47:27
Appellee Attorney
Well, no, Judge Dyke, I think that what makes the patent claims eligible,
47:31
all that I'm trying to say is it's more than efficiency.
47:35
It's the entirety of claims 211 and 27 of the 322, starting from the very first line of the claim line.
47:44
Which looks at a function call that is made by an executing program.
47:50
It is a specific action that occurs only in a computer system,
47:54
and this invention changed the way that a computer system responded to that action.
48:01
I am focusing on step one, and my only point, I'm not trying to deviate from the arguments we made,
48:09
is to say there is more than efficiency in the claim.
48:12
Unknown
Okay.
48:15
Appellee Attorney
I would propose to talk about the global revenue issue, unless the court –
48:21
I'm way over time, too, so please let me know if I need to stop.
48:24
It's our time. Go ahead.
48:26
So on the global revenue issue, I want to start with where my friend left off on this issue,
48:38
which is the idea that all of the infringement occurred before patent issuance.
48:44
The record in this case –
48:47
is that Norton made Bash, which is the infringing software.
48:53
They made Bash version 7.0 through 11.5 on servers in the United States,
49:01
entirely after patent issuance.
49:03
They had an early version, Bash 6.0, that they made before the patent issue.
49:09
But the facts here are different from Brumfield, because almost all of the acts of infringement occurred
49:15
after patent issuance.
49:18
And so we have from 2013 to 2023, Norton making and storing on servers in the United States
49:27
thousands of copies of its Bash software that had no purpose but enabling sales to customers abroad.
49:36
Norton admits at page 5 of its Blue Brief that it kept these copies in the United States,
49:42
and this included the foreign-only masters.
49:45
And critically – this is the critical fact in this case –
49:50
Norton continuously used these foreign-only copies on U.S. servers
49:55
to enable distribution of its software to customers abroad.
49:59
The jury heard unrebutted 30B6 testimony on these issues,
50:04
and the jury heard that that infringement – the making and using of the invention in the United States –
50:11
enabled $9.4 billion in revenue from customers abroad,
50:16
and for that infringement, the jury awarded only $94 million.
50:21
That was consistent with the running royalty that Norton offered to pay on global revenue
50:28
when Norton tried to license this invention from Columbia in 2005,
50:34
and that's Appendix Site 603-90-93.
50:39
Section 284 entitles Columbia to no less than a reasonable royalty
50:45
for all of Norton's infringement,
50:47
and the jury was allowed to take this revenue into account.
50:50
Judge Jimmie Reyna
What about the counsel on the other side that argues some sort of temporal aspect
50:58
should be considered here as the foreign sales?
51:03
Appellee Attorney
Well, we disagree with that, Judge Reyna.
51:06
What happened in Brumfield that my friend referred to,
51:10
the only U.S. copy of the infringing – of the would-be infringing software –
51:15
was made before patent issuance, and it was shipped abroad,
51:19
and all subsequent copying and use occurred only abroad,
51:24
and this court said that wasn't infringing.
51:29
You didn't have any active infringement after the patent issue.
51:32
What we have here is significant infringement –
51:37
thousands of instances on U.S. servers that were made and constantly used
51:42
all after the Columbia patents issued.
51:46
That makes the temporal point entirely irrelevant.
51:50
Judge Timothy Dyk
Yeah, but what's the nexus between that infringement and the foreign sales?
51:55
Appellee Attorney
Well, because whenever Norton created a new version of the BAF software, Judge Dyck,
52:02
they created what they called a geo-locked version,
52:06
and this is described at 655-66.
52:11
And the geo-locked version that was made and stored in the United States
52:15
was accessible by and openable by only customers in the intended foreign country,
52:22
and that copy was also translated into the relevant foreign language at 655-54.
52:30
And all of those foreign-only copies, Judge Dyck,
52:34
they were stored on servers in the United States,
52:38
and they enabled the distribution to customers abroad,
52:42
and they were locked only for a foreign country.
52:44
And so the nexus between the domestic making and use of the patented invention
52:49
and the revenue from the customer abroad could not have been more direct.
52:54
Judge Sharon Prost
And you think that Drumfell then covers you?
52:58
Appellee Attorney
Yes, because if proximate cause is satisfied by anything, Judge Prost,
53:04
it would be satisfied when the infringer specifically intends
53:08
for a domestic act of infringement to cause a foreign sale,
53:12
which is what we have here.
53:14
Judge Timothy Dyk
Okay, I think we're out of time. Thank you.
53:16
Thank you.
53:17
Mr. Loomis, you've got two minutes.
53:32
Appellant Attorney
Thank you.
53:33
On the argument that modeling function calls was new and non-conventional,
53:39
I do think that's a new argument, but it's easily dispatched.
53:43
Claim 1, for example, a host of claims were invalidated by the PTAB and the IPRs.
53:49
Claim 1 are good examples.
53:50
Both 115 and 322 have comparing function calls,
53:55
two models, just like the claims that went to Jerry Trump.
54:01
Judge Timothy Dyk
Okay, but we're not dealing here with obviousness.
54:04
We're dealing with 101.
54:07
Precisely.
54:08
And what's the evidence here that modeling function calls,
54:14
one, was the invention, which is the first time I've heard that today,
54:19
and second of all, what's the basis for saying that it's conventional?
54:25
Appellant Attorney
So my basis for saying it's conventional, I never heard it before either,
54:29
so I was scrambling to answer that question, Your Honor.
54:32
I think that we know it was in the prior art
54:34
because we know the IPRs found it to be invalidated in other claims,
54:40
articulated in the same exact way, shows us it's not new and it's conventional.
54:45
There's nothing in the claims that say new types of function calls
54:49
or new models of function calls.
54:50
It just says a model of function calls.
54:52
That's an abstraction.
54:53
Even if it were new, back to SAP and Symantec, that would go to 102, not 101.
55:00
You can have an abstract new concept, and so at best what they have, I'd suggest,
55:06
is that if the function calls were new.
55:08
We don't think they're new.
55:10
We do think they're conventional because of what the patent board found.
55:15
Same is true for the selective emulation.
55:18
I wanted to actually read from the claim, the specification itself,
55:24
so Council said that selective emulation by the emulator was new and non-conventional,
55:30
but if you go to Appendix 285, beginning at Column 3, Line 28,
55:36
it's referring to the prior art emulators, including STEM,
55:39
which there's no dispute predates these patents,
55:42
and it says that STEM, which is described below,
55:47
quote, and which permits the selective execution of certain parts
55:52
or all of a program inside an instruction level emulator using the Valgrind emulator.
56:00
So, I'm sorry, I think I tripped over into the next discussion of the Valgrind emulator.
56:04
It's describing STEM as doing exactly what he just told you was non-conventional and new
56:09
in the prior art, so it's contradicted by their own specification.
56:13
Judge Timothy Dyk
Okay, I think we're about out of time.
56:16
Thank you, Your Honor.
56:17
Thank both Councils for participating.