Trials@uspto.gov
`571-272-7822
`
`Paper 62
`Entered: September 19, 2013
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CRS ADVANCED TECHNOLOGIES, INC.
`Petitioner
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`v.
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`FRONTLINE TECHNOLOGIES, INC.
`Patent Owner
`
`
`Case CMB2012-00005
`Patent 6,675,151C1
`
`
`Oral Hearing Held: August 13, 2013
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`APPEARANCES:
`
`ON BEHALF OF THE PATENT OWNER:
`
`JOHN P. DONOHUE, JR., ESQUIRE
`Woodcock Washburn, L.L.P.
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, Pennsylvania 19104-2891
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`571-272-7822
`
`Paper 62
`Entered: September 19, 2013
`
`
`
`
`
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`CRS ADVANCED TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`FRONTLINE TECHNOLOGIES, INC.
`Patent Owner
`
`
`Case CMB2012-00005
`Patent 6,675,151C1
`
`
`Oral Hearing Held: August 13, 2013
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`APPEARANCES:
`
`ON BEHALF OF THE PATENT OWNER:
`
`JOHN P. DONOHUE, JR., ESQUIRE
`Woodcock Washburn, L.L.P.
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, Pennsylvania 19104-2891
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 62
`Entered: September 19, 2013
`
`
`
`ON BEHALF OF THE PETITIONER:
`
`E. ROBERT YOCHES, ESQUIRE
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`
`
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`
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`The above-entitled matter came on for hearing on Tuesday,
`August 13, 2013, at 10:00 a.m., at the United States Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`P R O C E E D I N G S
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`JUDGE MEDLEY: Please be seated. Good morning.
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`Are we on the record?
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`COURT REPORTER: Yes, ma'am.
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`JUDGE MEDLEY: Okay, thank you.
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`This is the trial hearing for CBM2012-00005 between Petitioner CRS
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`Advanced Technologies, Incorporated, and the Owner of U.S. Patent
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`6,675,151, Frontline Placement Technologies. As you know per our order,
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`each party has one hour to present their argument. Petitioner will proceed
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`first, followed by Patent Owner, and each party may reserve rebuttal time,
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`and just let us know if you'd like to do that before we begin.
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`At this time, we'd like counsel to introduce yourselves and who you
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`have with you, beginning with Petitioner, please.
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`MR. KARL: Yes, Darrel Karl for Petitioner, CRS, and I have with
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`me my legal assistant, Jacob Mersing.
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`JUDGE MEDLEY: Okay, so do you have with you Mr. Yoches or
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`Mr. Capron?
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`MR. KARL: No, I don't. Mr. Yoches is at trial and Mr. Capron is in
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`California.
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`JUDGE MEDLEY: Okay. And is your legal assistant a registered
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`practitioner?
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`MR. KARL: No.
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`JUDGE MEDLEY: So you're admitted pro hoc?
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`MR. KARL: Vice, yes.
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`JUDGE MEDLEY: Yes. We told you that if you were ever going to
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`present or be in front of us you need to have a registered practitioner with
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`you at all times. That was made per order.
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`MR. KARL: Well, there's no one currently here. I could arrange to
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`have someone come from the office, but that would require a delay.
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`JUDGE MEDLEY: Okay. Let's proceed, and then we will break.
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`MR. DONOHUE: John Donohue, Your Honor, for Patent Owner, and
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`with me is John McGlynn. Also from our office, Sarah Dukmen is with us
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`today, and I believe that we've also identified previously Mr. Scott Tewes
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`who is the outside counsel for Frontline. We also have with us from
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`Frontline itself Mr. Thompson and Mr. Blackstone who also happen to be
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`the Inventors of the Patent at issue here.
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`JUDGE MEDLEY: Okay. So do you have issue with Mr. Karl
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`proceeding today without a registered practitioner?
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`MR. DONOHUE: No, Your Honor, we don't.
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`JUDGE MEDLEY: Okay. So we would like to confer on that, so
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`we're going to leave and we'll come right back.
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`(Off the record at 10:02 a.m.)
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`(On the record at 10:08 a.m.)
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`JUDGE MEDLEY: -- We conferred and discussed whether or not
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`Mr. Karl may proceed , without a registered practitioner here with them, and
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`the answer's going to be yes. But we do want to clarify for the record -- for
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`today, this is acceptable. We want to clarify for the record, however, that –
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`we expected lead or backup registered practitioners to be here, but we
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`understand the lead could not be here today but we were expecting that
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`back-up counsel would be here. And we also expect that a registered
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`practitioner would be present with a person who is admitted pro hoc vice.
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`So we will go ahead and begin. Petitioner, you may begin first.
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`MR. KARL: Thank you, Your Honor. We have bound copies of the
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`demonstratives. We also have slides to hand up to the Court.
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`JUDGE MEDLEY: Yes, you may approach the bench.
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`And would you like to reserve rebuttal time?
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`MR. KARL: Yes, please, 20 minutes, although I'm hoping not to take
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`as much as that on my opening.
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`JUDGE MEDLEY: Okay. Thank you. Please proceed.
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`MR. KARL: May it please the Board, at issue in today's proceeding is
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`the patentability under Section 101, the five claims of Frontline's Patent
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`6,675,151. And I'd like to start by referring to one of the two dependent
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`claims, method claim, Claim 3, which is on page 6 of the demonstratives.
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`That's CX 1022, Slide 6.
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`JUDGE BISK: Excuse me. I think it's six claims, is that right? Five
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`claims or --
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`MR. KARL: So it's six claims, you are, correct, Your Honor.
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`On the left-hand side, Claim 3 has been produced in full. Did I say
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`right side or left side? To the left-hand side, the claim's produced in full.
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`On the right-hand side are summaries of the four basic steps that the claims
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`recite in a high-level form. Obviously, there's more detail that's set forth in
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`the claim; it's there on the page. But the four basic steps are receiving
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`absentee information, generating and posting vacancy information, receiving
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`acceptance of the position from the substitute, and securing the position for
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`the substitute.
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`Now, when you look at the detailed steps in the claim, the only
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`aspects that are concrete as opposed to the general abstract idea of substitute
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`fulfillment are the recitation of at least one communication link in the first
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`step; the reference to one or more computers in the second and fourth steps;
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`the reference to a Web site in the second and third steps; and the reference to
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`an Internet communication link in the third and fourth steps.
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`Before going further, it's probably useful to discuss what the claimed
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`Invention does not cover, does not involve. It is not a technical solution to a
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`technical computer problem in the Internet field. That's important because
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`the cases seem to make a distinction between technical solutions and mere
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`presence of -- maintenance -- definitely involve the recitation for computer
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`or software.
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`The Board decision instituting this proceeding found that the claim
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`did not describe a technological invention at page 9 of its decision. No
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`computer, no communication link, no Web site innovation was either cited
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`or disclosed in the Patent before you; that it is simply a method of doing
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`business. The computers, the Internet communication links, the Web sites
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`that were recited in the claim, they are not integral to the process; they
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`merely facilitate information gathering and distribution.
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`Moreover, they facilitate the gathering and distribution of information
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`in routine and conventional ways. Computers have traditionally been used
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`as a means of generating and translating data, and the computers involved in
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`this claim do precisely that in a conventional, routine sort of way. They may
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`well make the process more efficient, and indeed that's an objective that's set
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`forth in the Patent specification at Column 4, Line 47. And the Board
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`indicated that they found that that was an object to make the claims more
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`efficient. But they do not provide meaningful limitations on this abstract
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`idea.
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`We're not dealing with technical ideas like data compression or linear
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`programming or digital super manipulation. We are simply dealing with the
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`receipt, transfer -- storage of information done in a conventional way, using
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`conventional equipment.
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`What I have done here is draft this claim so that it's limited to a
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`particular field of use, in this case the field of use being substitute fulfillment
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`via the Internet. But cases such as Bilski make clear that limiting the
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`Invention to a particular field of use does not make an abstract concept
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`patentable. Subsequent processes that have no substantial practical
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`application except for an individual computer have likewise been held
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`unpatentable in Benson, Bancorp, CyberSource, and other similar cases.
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`Data gathering steps over the Internet did not confer patentability in
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`the CyberSource federal circuit case. Computer-aided transmission did not
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`confer patentability in the Dealertrack case. Ultimately, the focus for this
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`panel should be the analysis set forth in Bilski. Is there a specific way of
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`doing something with a computer or a specific computer for doing
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`something? Neither is present in these claims.
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`JUDGE GIANNETTI: Counsel, you mentioned the Bilski decision
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`and you mentioned Parker against Flook. How about Diamond against
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`Diehr? That's a case where claims were limited to a particular field of
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`endeavor. It was rubber molding, as I recall. How would you distinguish
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`that case from this situation?
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`MR. KARL: I wouldn't say so much linking to it a particular
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`endeavor as that was the problem that they were solving that was unique to
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`that particular industry, and that's a different scenario altogether. That's
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`again akin to saying SiRF or Research Corp. or Ultramercial, where the
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`invention itself creates a unique problem that the patent's trying to solve.
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`Substitute fulfillment existed before the age of the Internet.
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`JUDGE GIANNETTI: Well, in Diamond against Diehr, rubber
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`molding existed before that case, before the invention and that case was
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`made. And that was a situation where a general application was applied to a
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`specific field of endeavor. How does that differ from what goes on here?
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`MR. KARL: In that case, it is not an attempt to draft a patent claim to
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`cover an algorithm. That happens to be a patent claim to use an algorithm in
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`a particular process, and that's a category of -- subject matter which has
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`traditionally been considered patentable under Section 101. That's not the
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`scenario in Claim 3.
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`JUDGE GIANNETTI: Well, would you say that in order to be
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`patentable it has to be limited to a particular field of use? Is that a criteria
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`that you would find?
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`MR. KARL: No, but what I'm saying is that they have certain
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`inventions that in fact arise out of a particular unique problem in a field.
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`That's the Ultramercial case. There was a system for compensating
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`copyright owners for digital downloads of media, like music and movies,
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`and using advertising to pay for the downloading as opposed to the person
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`downloading music doing the actual payment for the downloading. Digital
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`downloading didn't really exist in a practical way prior to the rise of the
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`Internet. So there is no way to divorce the invention from the context of
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`Internet downloads.
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`And in that case there, they provided a complex, technical solution to
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`a unique problem to that field. There's nothing unique about substitute
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`fulfillment. The application happens to be limited to the Internet as a means
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`of -- the problem is universal, it's not confined to the Internet.
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`JUDGE GIANNETTI: Okay. You can continue.
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`MR. KARL: In the background summary section of the Patent
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`specification, Frontline admitted that substitute fulfillment is a routine
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`practice in its education system. They likewise acknowledged that computer
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`systems for supporting substitute fulfillment were known in the education
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`field. And indeed my client, CRS, is a pioneer in the -- the first to
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`commercialize and develop the telephone IVR system for performing
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`substitute fulfillment. That system involved computers and data bases and
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`communication links to achieve substitute fulfillment.
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`What's interesting -- I'm not trying to argue that somehow that bears
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`on -- it's a separate analyses. But it used those computers, those data bases,
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`those communication links in a routine, conventional way, the same routine,
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`conventional way that the Claim 3 process at issue happens to be using
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`computers and communication links as a means of receiving, gathering,
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`transmitting data. There's nothing particularly unusual about the methods
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`involved there. That's what computers are made mainly used for, to -- the
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`process for getting information from point A to point B.
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`The specification only discloses generic communication and
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`processing servers, generic organization school district computers, generic
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`home-based computers to the workers and substitutes.
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`JUDGE MEDLEY: Excuse me. Mr. Karl, can you make sure and
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`refer to the slide that you're on for the record so that when we go back to the
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`transcript we can -- just reference what slide you're on.
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`MR. KARL: I'm currently referring to Slide 3.
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`JUDGE MEDLEY: Thank you.
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`MR. KARL: Likewise, the specification only discloses generic
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`concepts of Web sites, communication link, Internet communication link,
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`and no specification or description of those elements was provided in this
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`patent specification.
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`JUDGE BISK: Now, can I ask you a question? Can we go back to
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`your discussion of Ultramercial, you're not able to divorce the invention
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`from a technology, but here you are. It seems like that just depends on the
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`way you describe the problem that you're solving, because if you describe
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`the problem you're solving as substitute fulfillment over the Internet, then
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`you can't divorce that from the technology. But substitute fulfillment you
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`can. On the other hand, in Ultramercial if you describe it as, you know,
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`having the provider pay for the advertising, then you can divorce the
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`problem from the technology. But if you describe it as the provider paying
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`for its downloaded technology, then you can't. Is there a trick or am I
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`missing something?
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`MR. KARL: No, I think you're right, that one could, in the abstract,
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`Case No. CMB2012-00005
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`But ultimately, if you don't have a technological innovation being provided,
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`and that's not being provided by these claims, it's simply a method of doing
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`business, then the arena, being in this case here, the Internet, is not
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`particularly distinctive, imparting -- details to the claims to avoid -- to
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`preserve patentablity under Section 101.
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`In the Ultramercial case, the problem was unique to downloading. It
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`didn't exist outside of that context. Substitute fulfillment does exist outside
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`of the context, and you're not providing a solution to a complex or unusual
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`problem that exists. When you focus on the field of use being Internet
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`substitute fulfillment, there's no other way to otherwise make rational sense
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`of Supreme Court cases like Bilski and Flook, which say that you can't
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`preserve patentability by drawing upon nailing it to a particular field of use
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`if the -- how you define it in advance. That basically re-writes that language
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`out of those cases. So you have to focus on is there a specific indicator that's
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`being claimed -- that's not here -- or a specific way that's being solved using
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`the computer that creates some sort of technical innovation. That's not the
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`situation that's going on here.
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`What you have simply is a recitation of computers and software and
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`data storage and data transmission, and that's all we have here. They're
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`using computers in the routine, conventional ways that computers are used
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`for, to speed up and to transmit data.
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`JUDGE BISK: So what struck me about Ultramercial is that it relies
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`on Alappat while some of the other cases that came before it, didn't seem to
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`rely on Alappat. And I'm wondering, is Alappat still good law?
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`MR. KARL: Well, I have two responses. One of course is to the
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`extent that you somehow view -- and I don't view Ultramercial myself as
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`changing the law, but for any reason if you feel that somehow it is changing
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`the law, it is clear that the panel cannot (a) overrule the Supreme Court
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`cases, but (b) is bound by not overruling your prior panel decision in the
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`federal circuit, and the federal circuit has said that on numerous occasions.
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`For example, in the Abbott Labs, there's the Sandoz case, 544 F. 3rd, 1341 at
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`pages 1370 to 1371.
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`In the case of a conflict, it's the earlier case, not the later case, that
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`controls. So if you do feel it somehow it's changing explaining the law, it's
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`not a valid case. But ultimately, as I said, it is consistent with federal circuit
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`court cases. It simply falls in the line of cases like Research Corp and like
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`SiRF, where there was a technological innovation involving computers or
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`their technology or the Internet or there was a unique problem in that field
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`that it was designed to solve. It didn't exist outside of that area. Again,
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`that's not the scenario here.
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`Now, I described Ultramercial in a very high-level format as to how -
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`- what problem it was trying to solve. If the claim was that broad, I'm not
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`sure that would've survived muster. The actual claim is much more detailed,
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`sets forth a lot of detailed steps. It has various restrictions on who can
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`access it, who can download, regional restrictions on copyright, steps to
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`prevent the copyright owner from accessing the advertising and somehow
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`artificially inflating the number of downloads to promote his product. There
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`are a lot of restrictions placed in these claims. It's not just merely using
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`advertising over the Internet to pay for downloading. Reduced to its
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`essence, that's what's going on, but that's not the claim.
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`JUDGE BISK: But I'm curious because it seems like a lot of
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`interaction. At least the last part was about whether something was a
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`specially programmed computer. But it seems to me almost a question of
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`whether Alappat -- are they following it or not, because, you know, if --
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`federal circuit case, but then it does -- go away and then maybe it came back,
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`I'm quite sure. It just doesn't seem like the federal circuit was relying on it
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`for a long time and then it pops up in Ultramercial. So I was just
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`wondering, you know, if it's the law, how do we view CyberSource and all
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`those other cases?
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`MR. KARL: I believe in Bancorp, the federal circuit did discuss
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`Alappat and they did make the distinction that I made, saying that there are
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`cases on one side that involve technological innovations that are unique to
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`the computer Internet field and there are other cases that are purely business
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`method patent claims which only -- recitation of computer technology, and
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`that's the scenario that we fall into today.
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`Certainly, it could have been possible for them to write a detailed
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`claim which would've provided sufficient detail so that it would've been
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`limited to a particular programming method, to a particular data structure.
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`That was not done in this case.
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`JUDGE BISK: And that's what's required to make it a --
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`MR. KARL: To make this particular claim, yes. That part may
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`require a different answer, but for this -- yes.
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`Turning now to the expert that Judge Bisk had referenced, on Slide 4
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`of the demonstrative, Frontline put in an affidavit from an expert saying that
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`the claimed Invention had used a specially programmed computer. When
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`CRS deposed the expert, he admitted that what he meant by specially
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`programmed was that it had been specifically or deliberately or consciously
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`programmed as opposed to inadvertently or unintentionally or spontaneously
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`programmed.
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`He admitted that he did not require a particular programming
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`approach and was not limited to any particular type of computers. In fact --
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`at this point in time that the expert admitted that he had not read the Board's
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`decision instituting the proceeding, the claim instruction that the Board had
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`issued, nor was he -- felt he was qualified or did -- the claim. So I'm not
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`sure his technical testimony in this circumstance is particularly relevant.
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`JUDGE GIANNETTI: Counsel, is claim construction an issue here in
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`this proceeding?
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`MR. KARL: I believe it's a nonissue. There are some minor disputes
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`between the parties on the claim construction. We had put in the claim
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`construction and Frontline had put in claim construction. The Panel adopted
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`the majority of CRS's claim construction, but in two regards broadened the
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`construction further from beyond what CRS had advocated. We're not
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`challenging the Board's claim construction decision. Frontline appears to
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`nevertheless challenge -- still challenge the abandoned claim constructions
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`by CRS and arguably issues that are consistent with the Board's decision, but
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`I believe that regardless of what claim construction the Board adopts the
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`answer is the same on these claims. So we're really fighting -- wasting time
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`fighting over --
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`JUDGE GIANNETTI: So why is it so important from your
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`standpoint that the other side's expert have read the claim constructions if
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`you say that it's really not an issue?
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`MR. KARL: Well, he wasn't advocating either side's construction.
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`He wasn't conscious of any construction of the claim. I don't think you can
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`have a meaningful discussion about what these claims cover unless you have
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`some idea what the claims mean, whether it's their interpretation, our
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`interpretation, the Board's interpretation. He was not at all concerned about
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`construction at all. That is a legal error.
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`But ultimately, I don't believe the outcome of this case rides on the
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`adoption of one side's interpretation or the other. Obviously, we believe the
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`Board's interpretation was correct and the Briefs deal with -- definitions and
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`the like, but -- use the broadest reasonable interpretation. I believe the
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`Board has adopted the fair and correct broad, reasonable interpretation of the
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`claim disputes.
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`JUDGE GIANNETTI: And why is it important, from your
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`perspective, that the expert be aware of what the Board's ruling was and it's
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`decision, which obviously the Board decided to institute? But beyond that,
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`why is it important for an expert who's supposedly reaching an independent
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`conclusion to know exactly what the reasoning of the Board was?
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`MR. KARL: I don't believe one can properly testify as to whether or
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`not a computer is specially programmed or not unless you have an
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`understanding as to what computer means in this context.
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`JUDGE GIANNETTI: Did the expert and the expert's declaration set
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`forth any understanding of that issue?
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`MR. KARL: He didn't provide his definitions. In his deposition, he
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`admitted that he was not familiar with the claim. He wasn't employed for
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`that purpose. He discussed about it in pages 43 and 44 of his transcript, and
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`the fact that he had not read the Board's decision at page 5 and 6.
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`Ultimately, though, of course, the issue of patentability under
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`Section 101 is a question of law. And so whether or not there are expert
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`declarations, they may be in certain cases of use to the Board, but they're not
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`binding on the Board's analysis in any event.
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`JUDGE BISK: I actually have a question about that, which is were
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`there any actual factual disputes in this case on -- you implied that there's
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`more of a question of what specifically programmed means, not really what
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`the facts are?
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`MR. KARL: I believe that's a fair characterization. Other counsel
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`could disagree, but I believe it's hard to define specially programmed or not
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`in this context, that it's a legal dispute and not really a factual dispute. I
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`think the record is absolute. The spec is a spec, the claims are the claims,
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`and I don't think there's otherwise any true factual dispute in that regard.
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`Turning now to Slide 5, again the expert concedes that he does not
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`know the details of any special programming or configuration that was
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`required to allow the computers to interface with the communication links as
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`far as the language of the claims was concerned, that the claims were not
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`limited to a particular type of communication link, and that the expert
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`conceded there were different ways in which computers could be
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`programmed to communicate with a communication link.
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`I'd like to go now to the system claim, Claim 6, the system claim on
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`page 7 of the demonstrative. Once again, on the left-hand side is the full text
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`for the claim. As you can see, there are really two basic elements to this
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`claim. There is a database and there is one or more computers comprising
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`the server. That server, in turn, is configured for performing the four steps
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`that are set forth in process Claim 3 verbatim.
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`As far as the database is concerned, it recites it comprises worker
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`records and substitute records, and there is some unspecified information
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`associated with each worker and substitute record. But again, using a
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`computer to store data is a conventional, routine use of data. It doesn't
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`impart material substantiality to this claim.
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`JUDGE BISK: And will you still have us analyze this claim as an
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`abstract idea?
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`MR. KARL: Yes. In Mayo and Bancorp and the like, it has been
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`clear that the former claim is not controlling but you can't escape
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`unpatentability in Section 101, the drafting formats. And in some substance,
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`Claims 3 and 6 are covering the same Invention.
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`JUDGE BISK: But has there ever been a Federal Circuit case that
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`found a system claim unpatentable as an abstract idea?
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`MR. KARL: When a system's claim unpatentable?
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`JUDGE BISK: And that's -- I think that CyberSource -- and actually,
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`I would be curious to hear what you think about --
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`MR. KARL: I can't recite another case at the moment that falls in that
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`particular pattern, unless you want to go cases involving, say, computer
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`storage medium claims, which are not processes but they're not necessarily
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`systems either. Certainly, Bancorp, there they found that the former claim is
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`irrelevant and both the process and the computer storage medium claims rise
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`and fall together. And that was the subject matter that was at issue also in
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`the CLS Bank case.
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`As far as precedent, I think CLS Bank is not precedent in the classic
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`sense. It obviously is binding on the parties with regard to the particular
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`claims at issue, so it does have precedential value in res judicata effect, if
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`you will, on the parties for that particular claim. But otherwise, precedential
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`effect, I believe because it was a -- opinion, it was in a number of different
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`opinions, you can't otherwise draw any precedence or value from that
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`decision, with one exception, and that is in CLS Bank eight of the judges for
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`the various opinions all agreed that the particular method claims, system
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`claims, and computer medium claims should rise and fall together.
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`Now, they may have differed as to the reasons why or may have had -
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`- that was derived, but they agreed that they should rise and fall together.
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`And again, not consistent with the other cases that we have.
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`JUDGE BISK: Is that precedential?
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`MR. KARL: I think if you have eight judges that is the majority of
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`the Court saying so. But that's the only point which I think you can
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`otherwise glean any confidence from. Even if not precedential, it still gives
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`strong indication that the majority of the federal circuit is of that viewpoint.
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`Case No. CMB2012-00005
`Patent No. 6,675,151C1
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`When another case comes up, I think the judges have already shown their
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`hand on that issue.
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`JUDGE GIANNETTI: Well, counsel, would you say that that ruling
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`applies to all claims in those categories or just the claims in that specific
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`case? When you said that the eight judges held that in that case the --
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`system and computer medium claims all fell together. I'm saying is that a
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`general rule or is that just limited to the specific claims in this case?
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`MR. KARL: No, I think it depends upon -- the claims have to be
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`sufficiently close together. Obviously, there could've been a Claim 6 that
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`didn't mirror the process claims, in which case there'd be no ipso facto rise
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`and fall together scenario. It may well be that in the end analysis you reach
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`the same conclusion but because of different facts that lead you to that same
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`conclusion. So it really depends on the nature of the claims. But here, we
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`do have what is essentially a mirror claim.
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`And likewise, if you look at Supreme Court cases like -- where they
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`didn't necessarily itemize the different statutory classes that we have -- rise
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`and fall together, there is throughout certain language about the form of the
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`claim and kind of -- the not salvaging patentability. They seemed to indicate
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`that's the generalized principle and not somehow unique case by case by
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`case, depending on the form which the claim -- they set -- exceptions for
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`qualifications in that language. So I think that's the guidance you have to go
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`by.
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`Turning now to Slide 8, once again the expert in his declaration said
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`that it required a specially formatted data base, but when he was examined at
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`his deposition he admitted by specially formatted he merely meant it was
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`Case No. CMB2012-00005
`Paten
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