throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 32
`Entered: June 11, 2014
`
`
`
` 1 RECORD OF ORAL HEARING
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` 2 UNITED STATES PATENT AND TRADEMARK OFFICE
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` 3
`
` 4 BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` 5
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` 6
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` 7 U.S. BANCORP
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` 8 Petitioner
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` 9 vs.
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` 10 RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
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` 11 Patent Owner
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` 12
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` 13
`
` 14 Case CBM2013-00014
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` 15 Patent 6,625,582
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` 16
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` 17
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` 18
`
` 19 Oral Hearing Held: April 1, 2014
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` 20
`
` 21 Before: THOMAS L. GIANNETTI, GLENN PERRY, TRENTON
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` 22 WARD, Administrative Patent Judges.
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` 23 The above-entitled matter came on for hearing on
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` 24 Tuesday, April 1, 2014 at the U.S. Patent and Trademark
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` 25 Office, 600 Dulany Street, Alexandria, Virginia.
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` 1
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`

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`Case CBM2013-00014
`Patent 6,625,582
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`
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` 1 APPEARANCES:
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` 2 ON BEHALF OF THE PETITIONER:
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` 3 ANTHONY H. SON, ESQ.
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` 4 MATTHEW J. DOWD, ESQ.
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` 5 BRIAN H. PANDYA, ESQ.
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` 6 RYAN M. CORBETT, ESQ.
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` 7 Wiley Rein LLP
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` 8 1776 K Street, N.W.
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` 9 Washington, D.C. 20006
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` 10 202-719-7492
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` 11
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` 12 ON BEHALF OF THE PATENT OWNER:
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` 13 CASEY L. GRIFFITH, ESQ.
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` 14 Klemchuk Kubasta LLP
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` 15 8150 N Central Expressway, 10th Floor
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` 16 Dallas, Texas 75206
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` 17 214-367-6000
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` 18
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` 19
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` 20
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` 21
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` 22
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` 23
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` 24
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` 25
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` 2
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`

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`Case CBM2013-00014
`Patent 6,625,582
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` 1 P R O C E E D I N G S
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` 2 (1:00 p.m.)
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` 3 JUDGE GIANNETTI: So we have the final hearing
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` 4 today in Case CBM 2013-00014. Let's start by getting
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` 5 appearances of counsel. Let's start with the Petitioner.
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` 6 Who is appearing today for the Petitioner?
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` 7 MR. SON: Thank you, Your Honor. Anthony Son
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` 8 on behalf of U.S. Bancorp, as lead counsel, joined here today
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` 9 with Matthew Dowd, with backup counsel.
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` 10 JUDGE GIANNETTI: Okay.
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` 11 MR. SON: Mr. Dowd will be presenting the
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` 12 argument for U.S. Bancorp.
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` 13 JUDGE GIANNETTI: Okay. Fine. Welcome, Mr.
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` 14 Son. Welcome, Mr. Dowd.
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` 15 And for the Patent Owner?
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` 16 MR. GRIFFITH: Casey Griffith, Your Honor.
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` 17 JUDGE GIANNETTI: Anyone else?
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` 18 MR. GRIFFITH: No one else will be arguing.
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` 19 And I have no other attorneys here, Your Honor.
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` 20 JUDGE GIANNETTI: Okay. So welcome, Mr.
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` 21 Griffith.
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` 22 So you have one hour per side. The Petitioner
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` 23 may reserve time for rebuttal.
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` 24 And are you ready to proceed, Petitioner?
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` 25 MR. DOWD: Yes, Your Honor.
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` 3
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`Case CBM2013-00014
`Patent 6,625,582
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` 1 JUDGE GIANNETTI: Okay. Mr. Dowd, proceed when
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` 2 you are ready. We're starting a few minutes before 1:00.
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` 3 Are you going to reserve any time for rebuttal?
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` 4 MR. DOWD: Yes, Your Honor.
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` 5 JUDGE GIANNETTI: How much time?
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` 6 MR. DOWD: I would like to reserve 15 minutes.
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` 7 JUDGE GIANNETTI: Okay. I will try to give you
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` 8 five minutes warning when your time is expiring, your initial
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` 9 time.
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` 10 MR. DOWD: Thank you, Judge Giannetti.
`
` 11 Your Honors, we're here today for, as you said,
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` 12 the final hearing for the CBM review of the '582 patent. And
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` 13 as the Panel is well aware we have raised one issue with
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` 14 respect to the challenged claims.
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` 15 We have asserted that all of the challenged
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` 16 claims are invalid under Section 35 U.S.C. 101 because none
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` 17 of the claims claim patentable subject matter.
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` 18 There are a few issues that had been raised,
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` 19 one of which is the threshold issue that the Patent Owner has
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` 20 raised and that goes to whether the Board has the authority
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` 21 to rule on Section 101 subject matter patent eligibility in
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` 22 the context of a CBM review.
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` 23 We have addressed that in our brief. We have
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` 24 -- we understand as well that the Board itself has ruled or
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` 25 granted review in a number of separate CBM reviews based on
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`Case CBM2013-00014
`Patent 6,625,582
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` 1 Section 101.
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` 2 So it is our understanding that it is a settled
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` 3 issue at this point with respect to whether the Board has
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` 4 authority to review Section 101 arguments in the CBM review.
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` 5 I will add -- I won't address anything further
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` 6 beyond what is in the brief, unless the Board has questions,
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` 7 but I will add two -- well, one additional item, and that's
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` 8 the fact that both the Director of the PTO, the former
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` 9 Director of the PTO, Director Kappos, and the Solicitor
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` 10 General in their amicus brief in the CLS Bank case, which was
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` 11 argued yesterday, have both taken the view that the Board has
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` 12 authority to review subject matter of patent eligibility
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` 13 questions under Section 101 in the context of a CBM review.
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` 14 So if there are no questions about that, I will
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` 15 focus on the merits of our argument and I will feel free to
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` 16 address any points that my opponent raises during his time
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` 17 during my rebuttal.
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` 18 As to whether the challenged claims are patent
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` 19 eligible, as we have said in our brief, it is in our view
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` 20 clear that these claims must fall under Section 101 because
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` 21 they are directed to nothing more than business method
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` 22 claims, abstract ideas, that in some instances may attach as
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` 23 a post-solution activity, the use of a generalized computer.
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` 24 We certainly acknowledge, and I think if anyone
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` 25 has listened or reviewed the transcript of the CLS argument
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`Case CBM2013-00014
`Patent 6,625,582
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` 1 before the Supreme Court yesterday, there is a fair amount of
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` 2 --
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` 3 JUDGE GIANNETTI: We had two Judges from this panel that were
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` 4 there.
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` 5 MR. DOWD: Unfortunately I couldn't make it,
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` 6 but I had some reports. And I have read the transcript. And
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` 7 I think probably everyone in this room will agree that there
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` 8 is a fair amount of uncertainty with respect to what types of
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` 9 inventions fall within Section 101 and what types fall
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` 10 without, particularly when it comes to software-related
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` 11 patents.
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` 12 But what we also think is relatively certain is
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` 13 that when it comes to patenting a business method, so
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` 14 something that is nothing more than human activity, that
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` 15 claim is not patent eligible. That's Bilski, for example.
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` 16 And the next extension from that is when you
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` 17 attach the use of a general computer with no specific
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` 18 technical programming, no specific software, no specific
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` 19 code, to implement that human interaction, then that also is
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` 20 subject matter ineligible.
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` 21 Now, most recently we have had a number of
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` 22 Federal Circuit decisions that have made this clear. And
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` 23 what you see -- and I'm sure what the Board has done is
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` 24 reviewed those cases, not only in this case but in other
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` 25 cases before the Board, and before some of these members --
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`Case CBM2013-00014
`Patent 6,625,582
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` 1 is when you read the context of those cases, and I can go
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` 2 through them this afternoon, you see a distinction as to what
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` 3 types of computer-implemented claims might be patent eligible
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` 4 and what types certainly are not.
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` 5 JUDGE GIANNETTI: Mr. Dowd, let me just stop
`
` 6 you. Is your view that Bilski said that under no
`
` 7 circumstances would this patent's methods of doing
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` 8 business be patentable? Is that your reading of the case?
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` 9 MR. DOWD: No, Judge Giannetti. When you read
`
` 10 the opinion, the majority opinion, it is clear that the
`
` 11 Supreme Court wasn't saying that in no instance is a business
`
` 12 method not patentable.
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` 13 But I think what comes through that opinion,
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` 14 and also what comes through further development of Bilski
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` 15 through either a Myriad, Mayo, and the Federal Circuit cases
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` 16 of more recent years, is that a general business proposition,
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` 17 a general business idea, for that to be patent eligible will
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` 18 be the exception.
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` 19 And there has to be more than just capturing an
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` 20 abstract or a basic business context. And I think turning to
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` 21 the claims --
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` 22 JUDGE PERRY: Counsel, isn't this process that
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` 23 is now claimed a bit more concrete in that you are moving
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` 24 funds into an account? You are disbursing from an account.
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` 25 It isn't just the raw abstract idea.
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`Case CBM2013-00014
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` 1 MR. DOWD: Judge Perry, I would have to --
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` 2 well, first, I disagree. And, second, I think I would direct
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` 3 your attention to the patent itself.
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` 4 And I have additional copies, and this is
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` 5 Exhibit 1003. But it is column 8, line, around line 35. And
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` 6 this is where the patentee or the two inventors themselves
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` 7 explained the essence of what they are claiming.
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` 8 And they write, and I quote: "In accordance
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` 9 with the foregoing, the present invention provides a system
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` 10 and method for enabling beneficiaries of retirement benefits
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` 11 to convert future benefits into current resources to meet
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` 12 current financial and other needs and objectives."
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` 13 That, I will submit, is nothing more than
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` 14 getting an advance on your future retirement benefits. And
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` 15 in the briefing that I have seen, the Patent Owner doesn't
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` 16 dispute that.
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` 17 Now, what the Patent Owner does try to do is
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` 18 they say, well, that might be an abstract idea but we're
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` 19 claiming something else and something more than that. And so
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` 20 we have narrowed it. So we have narrowed it, the field of
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` 21 that abstract idea.
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` 22 JUDGE WARD: Mr. Dowd, let me ask you, in Judge
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` 23 Lourie's opinion in CLS, he stated that you must
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` 24 unambiguously identify the abstract idea.
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` 25 Give us your terms and how do you unambiguously
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`Case CBM2013-00014
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` 1 identify this abstract idea?
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` 2 MR. DOWD: Well, we set it forth in our brief,
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` 3 but I think that that sentence that I just read captures it.
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` 4 That's one way to phrase what the abstract idea is. We're
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` 5 taking the inventor's own words.
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` 6 But, second, another way to put it essentially
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` 7 is that it is nothing more than getting an advance payment of
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` 8 your future retirement benefits, whether they are Social
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` 9 Security benefits or some other retirement benefit.
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` 10 And the amount that you get is calculated to
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` 11 some extent, as the patent itself says, to some extent on the
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` 12 net present value. And the net present value is a standard
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` 13 accounting term that no one will dispute is well-known.
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` 14 But going back to my point earlier in terms of
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` 15 what the Patent Owner says, how they have supposedly narrowed
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` 16 from claiming an abstract idea in their response, both in
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` 17 their preliminary response and their -- excuse me, in their
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` 18 main response, they have said that they have narrowed it by
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` 19 putting on this limitation -- and this is in the first claim
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` 20 -- "without encumbering said beneficiary's rights to said
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` 21 future retirement payments and without violating legislative
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` 22 prescriptions in the United States against alienation of
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` 23 future retirement benefits."
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` 24 I will submit that that's nothing more than
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` 25 saying that we're going to follow the law. All right? We're
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`Case CBM2013-00014
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` 1 going to have a contract where I'm going to give you money in
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` 2 advance, you are going to get it later from a retirement
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` 3 benefit, and then you are going to pay me back, but I won't
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` 4 encumber what you owe me or what you have if it is in
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` 5 violation of U.S. law.
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` 6 That addition doesn't add anything beyond the
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` 7 abstract idea. Now, we can also argue that if you follow
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` 8 some of the Supreme Court's language of how they address
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` 9 abstractness in Mayo, you could see how the Supreme Court
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` 10 incorporates concepts of novelty or obviousness into whether
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` 11 something is preempting a field.
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` 12 And just simply by adding an express limitation
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` 13 of saying that you will comply with whatever the law is out
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` 14 there, that doesn't narrow the field. So that's one thing.
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` 15 And, second of all, and this is repeated in the
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` 16 Mayo case, in the Mayo case, and also it goes back to Benson
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` 17 and Flook, is that simply narrowing an abstract idea to one
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` 18 particular field doesn't necessarily make it any more
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` 19 abstract in the context of 101.
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` 20 And that gets to the idea of what you are doing
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` 21 is you are sort of adding an arbitrary limitation to the
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` 22 claim. And adding an arbitrary limitation doesn't make it
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` 23 any less abstract for purposes of 101. And we see that in
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` 24 some of the Federal Circuit decisions in the past few years.
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` 25 JUDGE GIANNETTI: Counsel, does your argument
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` 10
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`Case CBM2013-00014
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` 1 distinguish between the system and the method aspects of this
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` 2 patent?
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` 3 MR. DOWD: It does, although I don't think it
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` 4 necessarily has to. If you look, for example, in the
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` 5 Accenture case and the Bancorp case from the Federal Circuit
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` 6 in the past couple of years, you can see language in those
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` 7 cases where the Court has said, if there really is no
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` 8 substantial difference between the system claim and the
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` 9 method claim being claimed, the claims can rise and fall
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` 10 together. All right?
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` 11 So that's one argument where we could say that,
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` 12 if you find the method claims here ineligible, simply
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` 13 reciting the use of a computer in the preamble of the claim
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` 14 doesn't make that method any less patent ineligible.
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` 15 Now, the second aspect of it goes to, well, if
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` 16 you want to look at how the Federal Circuit analyzed systems
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` 17 claims in both CLS Bank, in Ultramercial versus Hulu, and
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` 18 Sirf Technologies, what you look at is whether the computer
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` 19 actually adds something to the claim.
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` 20 And we will submit that, again, going back to
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` 21 the way the inventors described their own invention, they
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` 22 essentially -- and this is at column 5, the top of column
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` 23 5 -- the inventors say that desirably, and where appropriate,
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` 24 the system "utilizes existing computer capabilities, both
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` 25 hardware and software, and electronic communication links,
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`Case CBM2013-00014
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` 1 for example, to effect electronic funds transfer to and from
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` 2 the beneficiary's individual deposit account."
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` 3 So, again, what the Patent Owner is saying is
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` 4 that, okay, we have a method. Our method is essentially a
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` 5 way to advance money, and you will pay us back later on. But
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` 6 if you don't want to do it in person, you could do it through
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` 7 a computer. But, now, you don't need to have any special
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` 8 expertise about the computer.
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` 9 You don't have to have a special, you know,
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` 10 silicon graphics or whatever the advanced computer is these
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` 11 days, and you don't have to have any special code or
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` 12 algorithm here. And, in fact, the patent itself doesn't
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` 13 describe any particular code or algorithm with respect to the
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` 14 means limitations that are in the claims.
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` 15 So the understanding must be that all you do is
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` 16 you take that generic abstract idea of advancing monies and
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` 17 you put a computer in the preamble.
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` 18 Now, I think that a fair reading of both Bilski
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` 19 in combination with Mayo leads you to the conclusion that
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` 20 simply appending the language "a computerized method" doesn't
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` 21 make the method any less patent ineligible.
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` 22 JUDGE GIANNETTI: What about a system, where it
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` 23 talks about a system, just in the section that you were
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` 24 reading: System 10 may be arranged and constructed without a
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` 25 significant investment in system architecture, design, and
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`Case CBM2013-00014
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` 1 software. And this is referring back to the previous
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` 2 sentence which talked about hardware and software, electronic
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` 3 communications link.
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` 4 What is abstract about that?
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` 5 MR. DOWD: Your Honor, the question goes -- and
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` 6 this, I think, follows from the analysis that the split
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` 7 decision in CLS Bank followed. All right? You had half the
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` 8 Judges saying that the system claims failed there, they were
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` 9 patent ineligible, simply because they are exactly like what
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` 10 we have here.
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` 11 Now, a number of the other Judges say, well,
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` 12 the method claims will fail but the system claims are okay
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` 13 because they are tied to a computer. But there are key
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` 14 distinctions in that case.
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` 15 And this is in Judge Rader's concurring opinion
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` 16 where the Panel goes through in detail, or the plurality goes
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` 17 through in detail describing the claim, and this is Claim 26
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` 18 in the CLS Bank case, where -- and this is typical of the
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` 19 "Alice's systems claims" but the system is described as a
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` 20 data processing system.
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` 21 And it goes: "A communications controller, a
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` 22 first-party device, a data storage unit, a computer coupled
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` 23 to said data storage unit, generating an instruction." So it
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` 24 goes and it provides specific detail.
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` 25 And even in that method, that method by far is
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` 13
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`Case CBM2013-00014
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` 1 arguably more complex than the method that's described here.
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` 2 And I think that when you listened to Carter Phillips
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` 3 describe it yesterday, you could hear his explanation of what
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` 4 the method was there.
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` 5 And they have a much stronger argument than the
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` 6 Patent Owner does here that that method is something that
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` 7 might be a patent-eligible business method under Bilski,
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` 8 right, because that is something where, as I understand it,
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` 9 it is this multi-party process for dealing with multiple,
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` 10 multiple trades across different time zones done at
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` 11 lightning-fast speed. In fact, it sounds like something that
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` 12 could only be done by a computer.
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` 13 And that's another distinction that you get in
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` 14 a lot of the -- a number of the cases. I think if you look
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` 15 at Sirf Technologies, for example, and this was a --
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` 16 JUDGE WARD: Mr. Dowd, let me ask, before you
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` 17 leave that point. I want to ask you about the
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` 18 means-plus-function claims on 13 and Claim 30.
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` 19 MR. DOWD: Yes.
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` 20 JUDGE WARD: A number of means for limitations
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` 21 are recited in those claims and, of course, we need to look
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` 22 to the structure in the specification to provide support for
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` 23 those means for limitations.
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` 24 MR. DOWD: Yes.
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` 25 JUDGE WARD: Why is that structure not
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` 14
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`Case CBM2013-00014
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` 1 sufficient enough for 101 eligibility?
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` 2 MR. DOWD: Because, again, the analysis doesn't
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` 3 change just because it is a means-plus-function. I think
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` 4 there it gets into the question of, well, have you satisfied
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` 5 the specificity required of 112(6) or 112(f) as it is now.
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` 6 But in terms of a structure, simply because you
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` 7 -- and this goes back to Benson and Flook and it goes back to
`
` 8 Mayo -- simply because you carry out a process using some
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` 9 device, if you will, some general device, that doesn't make
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` 10 an otherwise patent-ineligible method now eligible for
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` 11 patentability.
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` 12 And that gets to the whole point of Mayo. This
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` 13 post-solution activity, post-solution appending of a
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` 14 computer.
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` 15 JUDGE PERRY: Why do you refer to it as
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` 16 post-solution when the computer itself is carrying out the
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` 17 steps of the method? It isn't as if the method happens and
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` 18 then something else happens.
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` 19 MR. DOWD: Well, I think in the Supreme Court's
`
` 20 use of the term, I think the idea gets to the point that
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` 21 what's the essence of the invention?
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` 22 The essence of this invention isn't some new
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` 23 computer system. We get that from the language of the patent
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` 24 itself.
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` 25 The essence of the invention is actually just
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` 15
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`Case CBM2013-00014
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` 1 the payday advance or the advance of funds and promise to pay
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` 2 back later on. And then once -- that's the solution. And
`
` 3 once you have that solution, anything that's added after that
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` 4 is the post-solution addition.
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` 5 JUDGE PERRY: Putting the computer aside for a
`
` 6 moment, can you imagine any level of complexity that this
`
` 7 invention might have talked about that would make it
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` 8 sufficiently concrete that it is no longer claiming an
`
` 9 abstract idea?
`
` 10 Let's say the disbursement could only occur on
`
` 11 a Tuesday if it is raining and the sky was pink. You know,
`
` 12 how concrete does a business method claim have to get before
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` 13 it is no longer abstract?
`
` 14 MR. DOWD: Judge Perry, that's a difficult
`
` 15 question, and I hate to answer that way, but I think that's
`
` 16 one of those areas right now that it is an unsettled area.
`
` 17 Right? How far do you have to go?
`
` 18 And I think the Solicitor General was pressed
`
` 19 to answer something similar to that yesterday. And he was --
`
` 20 I think his initial response was it's difficult for me to
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` 21 give an answer.
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` 22 So to the extent I'm following his footsteps,
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` 23 you know, I feel a little safe, but I think he did answer
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` 24 something to the effect that, well, if you are using some
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` 25 method to address complex credit card transactions, and you
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` 16
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`Case CBM2013-00014
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` 1 are implementing a complex encryption technology, right, then
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` 2 that might be a business method that satisfies it.
`
` 3 But underlying that -- and this is also what
`
` 4 underlines, I think, the decision or the outcome in
`
` 5 Ultramercial -- is the idea that for those business methods
`
` 6 it is almost as if you need the computer to accomplish what
`
` 7 the essence of the invention is, what the abstract idea is,
`
` 8 if you will.
`
` 9 And that also comes through in Sirf Technology,
`
` 10 which is an opinion written by or primarily authored by Judge
`
` 11 Dyk. And I think the Board will recognize that, at least at
`
` 12 the Federal Circuit, there is a split, you know, some Judges
`
` 13 are more willing to let a claim be patent eligible and other
`
` 14 Judges have different philosophical views on it.
`
` 15 Judge Dyk, as you see in some of the cases that
`
` 16 we have cited, he is generally on the view that business
`
` 17 methods shouldn't be patented generally. Right? I mean, he
`
` 18 might take the extreme view.
`
` 19 He was the author, for example, of In Re
`
` 20 Comiskey. In Re Comiskey is a similar case I think to ours,
`
` 21 right, because what was at issue in Comiskey? Comiskey dealt
`
` 22 with supposedly a method dealing with mandatory arbitration.
`
` 23 So that concept of just human interaction,
`
` 24 right, that's a general abstract idea that can't be patented.
`
` 25 Now, he made the distinction when he authored
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` 17
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`Case CBM2013-00014
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` 1 the decision in Sirf Technologies because that was an
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` 2 invention dealing with GPS technology. And towards the end
`
` 3 of his opinion he writes, well, it is essentially something
`
` 4 that could not be done with the -- without the GPS devices
`
` 5 and without this system.
`
` 6 And so the distinction, although I don't think
`
` 7 cases say this expressly, but the underlying assumption or
`
` 8 understanding is that if you want to -- if you want to patent
`
` 9 some general human interaction, business interaction, it has
`
` 10 to involve something that's so complex that it has to be done
`
` 11 with computer t

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