time data the patents at issue in this case all claim subject matter that's patent eligible they claim improvements to computer functionality something that this court clearly holds is pat eligible in a clear line of cases from d d r to end fish to tallis to visual memory these are claims that are probably most similar to those in the visual memory case and that that case dictates the result here these are these are claims directed to improving computer functionality by improving the way that data compression is utilized by a computer computer system in order to make the computer functioning more efficient faster and better it was a new and novel manner of use of compression and how to configure compression systems and that is exactly the kind of claim that this court holds to be patent eligible think that this is this is something that should be decided at step one or step two i think your honor we think that under step one these claims are clearly not directed to an abstract idea and therefore it could easily be resolved at step one however even if the court were to disagree we think there is significant  inventive contribution in the ordered combination of the steps and the claim elements that would require reversal under step two as well and we also think that there are significant fact questions surrounding that that but what other than the ultimate conclusion did the district court say that you think is just wrong wrong statement of the law are wrong description of the patent claims so i think a couple of key elements your honor and thank you for the question we we think that the district court statement of the law and i'll start there is is fundamentally incorrect in that the district court really failed to analyze or explain or distinguish this court's line of cases about claims directed to improvements in computer functionality prior to the hearing on the this matter the district court had requested that each party identify the case from this court that it believed was was most a kitten to the claims that issue here we identified the visual memory case to the court because we believed and continue to believe that it presented the closest analogue in terms of the claims the district court provided no analysis or explanation of why it disagreed or even how it understood the visual memory case it never cited and it's in that discussion obviously the discussion is very limited since it's only that the transcript and there's no written order in terms of the factual matter of the disc or the description of the claims we think the district court fundamentally errored in suggesting that the claims are merely directed to analyzing and encoding data that's not accurate at all the claims are directed to changing the configuration or or configuring a computer system and each family has a slightly different variant on this but configuring a computer system in a new way that makes the computer system function better and more effectively through new ways to use data compression that were not known in the art and there's a whole lot in the specifications but explain that as well as the claims themselves of course can just rondo can i just ask you to address the following and and perhaps this reflects i don't know whether it's a fifty fo fifty five of the appendix or that secondary to the substance one way to view what the district court held or at least one way to view the analysis is there are two asserted contributions among these five patterns one choosing compression techniques i looking at what data is being compressed and the nd is deciding to compress only if you can actually save something namely the time that compression plus storage of the compressed data would that that has to be less than the time of simply storing the uncompressed data which seems and and the st point seems rather nonspecific since there is nothing about what you do with any indication of the content of the data in choosing a compression tool and the nd seems like a statement of our of a result  again without any indication of how you decide whether compression is actually going to save time the lack of specificity and results focus are two things that have been part of our abstract idea law why do these claims not fall under that combination sure and thank you so i think st of all both of those concepts that you mentioned are new concepts that respectfully are very different ways of approaching data compression that were not present in the prior art and that changed the way that the systems using these inventions would function and in an advantageous manner and that direction toward here's how you configure your computer system to make it work better is precisely where this court's line of cases have said those are not  ideas i would point for example to the claim that was discussed in the visual memory case which was claim one where the memory configuration was memory that's connectable to a processor and it has one or more  programmable operational characteristics and that then those determine the type of data stored by the different cache components it didn't say what those characteristics had to be or how they were utilized in the claim but this court recognized that that claim was directed to an improvement to computer functionality not an abstract idea of just processing data nor just to a result as as the district court tried to suggest here i think it's it's not so so as to be the level of specificity the court case law makes pretty clear including in visual memory that the claims aren't eligible or  because of their breadth and i think that that's i just it's just that i mean i think you've read these cases as well as i have starting at least with and fish i believe it to be the case that every single one of the computer and functionality improvement cases takes pains to use a term like specific and concrete or particular because you need some kind of dividing line no matter how how grey the line may be and so it's not enough to say anything directed at anything that aims to improve computer functionality isn't isn't that what we said is anything that is specific and improves functionality and the question i guess is why this is on the eligible side of that line with the focus being  i would say there are two key aspects to these claims that i think very clearly take them across that line that you're discussing i think st of all the claims don't merely say choose something that works they talk about choosing what how you how you choose the encoder and how you analyze the data based on a way that's different than the prior art and particularly looking at the actual content of the files and the data that's coming through rather than a file descriptor like dot p d f or dot d o c because and the specification explains in some detail why that that prior approach didn't work very well and it talks in the specification for example about some examples of these kinds of analyses i'll refer in this instance to the two hundred and three patent which is the earlier patent in the st family at issue and column sixteen for example discusses some of these analyses of parameters that you would use to and the kinds of analysis that you would do of the data content in order to make these decisions that's it page one hundred and seventy two dollars of the appendix face cases in which there are in which there's considerable detail ways of doing something in a spec that claim doesn't require any of them and therefore  says something very very general and i think these claims do that namely use some something about the content no further specification to decide which compression tools to you why is that not insufficiently specific well your honor i guess what i would say is i would quote what this court said in visual memory configuring and this is obviously referring to the claim they're configuring the memory system based on the type of processor connected to the memory system is the improvement in computer technology and and i think that these claims are at that or a higher level of i have two quick questions one is that in the hearing when the judge said you know can i look at all these claims together and you said well we can start there or whoever was arguing at the hearing and but that there are a lot of dependent claims that we have to consider what the pending claims do you think should be viewed differently than just sort of a global big picture left without just the global big picture lens are there any dependent claims you want to focus on thank you your honor i think if we were looking at the two hundred and three patent for example claim nine is one of the dependent claims that we would suggest is has some further important distinctions i would suggest that in the five hundred and thirty patents claims two and you point in your brief or your great brief or in any of the joint appendix after excerpts of your oppositions to the motion to dismiss to any of those claims i don't remember seeing anything  tejon and at least in the excerpts that you included in the joint appendix there's not a single reference to any element of a claim that doesn't appear in the five so called representative claims in one of guess i would have to two suggestions in response to that the st is i believe that we discussed both in the blue brief and in the briefing to the district court the fact that there are a great many dependent claims and that this was a motion these were  motions brought at the pleading stage directed to essentially all claims in a patent and it's the defendant's burden under the under i for i and this section two hundred and eighty two to actually make a eligibility and so i do think there's a little bit of improper burden shifting in suggesting that all claims have to a defendant can basically come in and say well here's a claim and require the the pat owner to then defend all claims especially where briefing and and other constraints limit their ability to do so that said i do think we discussed the importance of looking at dependent claims in both the district court and in the blue brief my nd question i know your time's up and i'm sure just give you a little bit of time but the nd question is in the in the two decisions where judge young and judge straight are found the  same claims to be patent eligible what is the status of those cases thank you so i believe that basically my i apologize my  recollection is imperfect i think that at least one of those may have settled but i believe another is essentially stayed in light of the ruling of the district court in delaware that's being appealed here because obviously a finding that became rested a cot or collateral estoppel would would be relevant and so i believe that one of them is stated but i think one of them may have settled previously processors and encoders to compress or decompress different kinds of data using different kinds of compression or decompression techniques while claiming the use of processors however the patents don't claim and are not limited to any particular processor that's abundantly clear based on the claim language and specifications and the off the shelf computer for example will do likewise well can i ask you i have a threshold issue and that is a process one what troubles me the most is that we have virtually nothing no reasoning from the district court to go on mean in the district court essentially just reached a conclusion i  mean in a few pages where you just referred to some broad general issues even citing mccrone which went the other way and then support of what he was saying he gives us he gives us really nothing to review  is it really our job to assess these patents you know one hundred and fifty claims across five patents in the st instance should we read man and asked the court to explain it we don't think so and my thinking your honor would be as follows number one the district court here we had a gosh i think almost a two and a half hour long hearing which included a sounded just wrong like talking seeming to confuse one on one with enablement or talking about obviousness so i mean it would wouldn't it be better if if the district court explained that those apparent confusions did not creep into the decision making well look i i think the obviousness point as i read that portion of the transcript it was a choice of language which meant step to the the inventive hook that may be able to get you beyond abstract claims as to the remainder of your question i think there's no question that this court's job would be easier had the district court here done a more detailed and for example a written opinion fund to noble review however under both  circuit and federal circuit precedent we're not seeing any requirement that the decision be in written form and i'm not saying i'm not saying as a citizen had to be in written form i mean i you know i did plenty of rulings from the bench but but when i did they were very specific cited you know cite citing to cases citing to in a in a patent context citing to specific claim language i think you know when i've from the bench from judge stark that that actually looks almost like a full written opinion so i'm not saying you can't do it from the bench i'm saying that isn't there a need to at least  issue something that that looks like a written opinion for sounds like a written opinion we don't think so your honor if the way we read the transcript is that judge connelly here went through both step one and step two in alice and especially on the dyno of a review given the face of the patents and their specifications  honor may not be surprised to hear that it's very clear to us how he came to his reasoning on both step one and step two and for the i mean on the abstraction reason there there was a a repeat back and forth between the court and council about you know what exactly is being claimed where do we get away from the abstraction for example of using any processor on any kind of data under step one there's a failure there was i think and what portions of just love reporting recommendations do you disagree with other than the ultimate conclusion between that decision and this case we respectfully believe that magistrate judge love misread or failed to account for certain portions of the patent specification  incorrect when compared to the specification if you look for example at appendix two hundred and fifty one column sixteen beginning that line thirty five the patent or the specification is pretty clear that the encoder can be any type  and even content dependent versus content independent coders can in fact be exact same code on acting on judge love you know deny the alice motion by citing disputes alice analysis and the rd point is not to beat a dead horse your honor but we found the exchange between the court and counsel in delaware to one of the two ideas that are talked about as is reflected in the five patents here the one about choosing a compression tool based on some you even even at that level of generality but if you don't have to analyze every bit in the data some something about a date up walk that gives you a parameter that you you choose your compression or decompression depending on the path technique based on an attribute or parameter of the data or the data block i think it's important to recognize at the outset  what attribute or parameter of the data should be or is being claimed will be considered is not clear at all and the specifications make clear that this patente was trying to claim any a all analysis of or attribute or parameter of any data by way of one example from seven to eight that column sixteen starting line twenty two the pattern discusses recognizing data types data structures data block formats file substructures file types and or any other parameters to be indicative of the data type or content of a given data block so would suggest one type of compression or another even if it were it's not tell you what kind of compression you should then apply and it's certainly not claiming that it has any method or mode of compression which vis so as we all have read the case law and in the last couple of days i was listening to some recent arguments on aus issues then i i know it's it's easy for the alice discussion to get into written description or enablement issues i don't think specifications for these patents that there are numerous examples that an ordinarily skilled artisan would be able to look at and say i could implement that for example in a couple of places there's a laundry list of known in the prior art or and coding techniques the the problem is if you look at the claimed language it uses these generic terms and i think quite cra the claim language is designed not to be limited so what we have is a disclosure of examples in the this particular instance of what kind of attribute or parameter of the data you might look to but the patent doesn't claim that and certainly isn't limited to that you can do the same thing with encoders the same the same exercise with the processor and the same with the kind of data but beyond observing that v the data parameter or attribute which is used to select the compression technique is not clear judge terrence you know i take your question to be what about this phrase which we see in a few of the limitations that whatever data attribute or parameter you're going to look at in order to choose your unspecified coding or encoding technique it should be something beyond only find certainly this is true at the twenty six stage because the record amounts to basically a complaint and the patterns often what we find is that something in the specification confirms that what appears to be in the claim a very general idea is is   assuming as appears to be the case that parameter and attribute of the data is anything about it that tells you something about the data with the one exception stated level of generality something under that broad class has been done before or is it really quite new to say in order to decide what compression or decompression tool to use we're not just going to be looking at what the data tells us by a descriptor we're going to have the least peek at the actual data i v the argued in this case nor is there supporting the specification that that concept is novel or or inventive to use alice step to language and i would further note your honor  i guess i'm trying to understand how for instance someone could have done these things in their head without a system like this equivalent of a compression i just heard my call to thank you there are mental equivalents outside of the computer context for example descriptor what it is you can you can still do that and i think as this very broad claim language was designed you could still be putatively infringing the limitation is a negative limitation that it can't be exclusively a descriptor the nd would be the idea that it that you could look at any and all other parts of the attributes for the parameters of the data is right there in the specification for example you could look at the data types the data structures the de vocht formats the file sub structures and i've already read portions of this quotation before so i won't do it again but the the suggestion that  e and an unspecified compression method for an unspecified type of data based on an unspecified attribute or parameter which attribute or parameter can be something beyond just anything in the specification that suggests that choosing compression based on the content of the data was something that was known in the art or conventional and the answer to that question is unequivocally no the specifications make clear that that was something new that wasn't how compression was used in the past and indeed if we look for example at the two hundred and three patent the specification talks about the prior art as either using a sensually a one size fits all approach where you use one in code or no matter what your you're looking at or using file descriptors the file extension as the means of choosing an encoder and that it criticizes both of those approaches and  explains why the approach the patent takes to compression is advantageous and will allow for these improvements in the computer functioning and i i think that so so that's discussed heavily in the background section of each of the patents suggested a number of times about specifying in the claims the nature of the parameter or the nature of what that had to be and i think that runs directly contrary to the analysis that this court performed and i know i keep coming back to the visual memory case but if we look at the claim that was considered there reciting had one or more programmable operational characteristics of a processor and th programmable operational characteristics determine the type of data stored in the cache it didn't recites what those characteristics had to be or how they were programmed in the claims and the court didn't suggest that it was reading somewhat more specificity than the claim of visual memory but they certainly meet the standard that the court articulated and applied in that case and and that continues to be the rule as far as we