it please the court where we wrote the briefs and its case almost a year ago we asked the court to do two things one is to clarify that the alice step one analysis requires a close fit between the analysis of the abstract idea that what the claim is directed and the second was to confirm that there are fact issues that can arise at the step to process which should be dealt with in the same way as all other fact issues and federal litigation the my opponent accused us of the crime of arguing policy to this court to which we plead guilty we did argue policy question strands of the decision there here present today it is now clearly the law of court that fact issues that arise that step to alice have to be resolved in the same way as other fact issues in federal litigation now the district court here  here maybe look if it's case for our bach review and we'll see what the supreme court does but as it stands now and there's certainly nothing in alice which would be contrary to the position there can be fact issues that arise that st in one case i don't think the point was was correct the specifications in these cases and i'll go through each one each one is a little bit different obviously but it does create a bit of a kid under what are we doing on a twelve c motion it's supposed to be a basic motion to test the sufficiency of the pleading can you can the plaintiff given the opportunity to develop discovery and try the case produce sufficient facts to prevail that's all it's noticed fleeting under rule eight and rule twelve what's happened is since the patent becomes part of the record the court can look at the patent and then we get beyond that there look at the official record which includes the prosecution history but the purpose of rule twelve motion is just to test whether there's a possibility that under the most favorable reading for the plaintiff they could someday prove up the case so there should should be relatively rare unless the claim itself is so abstract as an analysis which basically said dissenter mediated settlement do it on a computer gets both pleadings in place right right it does but the trouble is that there's no other area of the law where the defendant asserts an affirmative defense in this case one on one we're entitled under section two eighty two to a presumption of the litani and we then end up in an analysis of factual analysis about whether something was routine conventional my only point is that if a less the face of the claim is so clear that all we really have is festively of this math or that is fin being done on a computer it's difficult to deal with these on a rule twelve motion with respect to the expert evidence if expert evidence can be produced that would be evidence to show that in fact the plaintiff's original pleading was acceptable it's i agree it's a bit backwards from the normal litigation but that's because this one hundred one and alice s has evolved in a very strange way as with the way we used rule twelve motions the eight the issue before the court here though is that we have four patent specification six patents which were tested under the law as it stood before  some other developments in the court and the district court's analysis cannot stand up to the current state of the law the first patent at issue is the seven three because the three five to pass and that ree seven pattern the district court said was directed to the abstract idea of account management not so if you look at figure two of the patent you'll see a network which is define which includes several very specific pieces of equipment a web server a c c s and i g which the district court defined to be a web server and a gateway specifically to interface with at least an integrated service control point that is part of a telephone networks which for purposes of want to whine we have real structures here now there is a question about whether the they all conventional the elements may have been conventional but the combination of those elements has to be tested under one of three not under want to one and that's why the patent was issued by the patent office surely the patent examiner was aware that web servers were now of a network that that the inventor invented it's an existing network though i think with all due respect i disagree the the i c p it was a known piece of equipment that's in the networks which the web server was a known piece of equipment but putting them together to create a i c c s and i g gateway that we connected to and allow users for the first time to for instance change their cellphone service on the fly hundred six let's be clear it's one thousand nine hundred six we're talking about that was found to be invented our position is twofold one is there's nothing abstract here this is a network it can be tested under section one hundred three but not under  one it's not an abstract idea and second even if we don't get over step one there's a question about whether the combination of these two elements was routine and conventional and that's something which we do you need to be  pages was was was unusual at the time and it says in claiming the patent office agree that as of one thousand nine hundred six that combining these two types of networks together building a gateway to connect them was invented off we may have a debate i'm sure we will a trial about whether it's sufficiently inventive to get over one hundred three but our question here is how do we not get over what all while there's nothing abstract here this isn't just center mediated settlement or a business method there is a method pla and comprising no one accessing the network you don't describe the network including requests displaying the request a sept in the going to be a customer contact this just sounds like a message well we have we have i guess this interesting question i haven't thought about before if you have a method claiming it says do a b c d and e how do we treat that on the want to want i would suggest that since to practice the claim you have to and again that would be a one twelve issue but there are specific components here there's a slight contact services no internet gateway it's a c c s and it's something described in the patent as a control point for other parts of the  network the claim construction here which was based on the intrinsic record was that it has to be specifically configured to connect these to me together i get the argument that well when you're talking about  ting a network or even talking about an actual computer that doesn't feel abstract that was always my view i still don't understand how it's abstract but the laws if things i would have sent multiple times where all you're doing is using conventional computer components to do something to accomplish something that's can be abstract so i understand the point your honor and my answer is  follows as clearly as i can state it if there are two components both of which are conventional or are put together and a new and inventive way that satisfies one hundred one that activity the combination is what would you would focus on which is what we have with the is to say in denying on von convert time or this court indicated its view that it didn't mark a change in the law that it simply stood for the proposition that it step two of the alice analysis there may be factual issues in particular cases here the district court judge found on the on the three twelve c patents that there were no factual issues that the matter could be decided based on the pleadings and the matters attached to the meetings in accordance with will twelve secret what about and the specification of the patent itself of the seven three seven patent makes clear that the c c s and i g is conventional equipment operating in a conventional way well what about a response to the present argument that even if each  abstract idea of account management we now have this new business opportunity of the internet and we're going to claim in a series of five functional steps performing that account management on the internet and with respect to the c c s and i g in particular where i differ with counsel is not only does the specification of the seven three seven patent say that the web server is conventional it says that the c c s and i g is conventional and it does that your honor by incorporating by reference the smith patent which is of record appendix two six one three five and was considered on the twelve c motion because it was incorporated by reference and a column seven lines ten to twenty four of the smith patent it indicates that the that the c c s an idea simply comprised of a conventional web server a conventional gateway interface and then later indicates a conventional i guess he all of the equipment is conventional and forming the abstract idea itself in the seven three seven account management nothing in the order of come change that what about the three fact it does seem to me that there is a lot of technological advancements going on here i mean how is the fact i mean obviously there was the ability to provide contact information directory assistance in the past but but this system for setting it up so that there could be a mechanism for making sure that that payment occurred seems to be something different i don't believe it is your honor although i agree with you there is various pieces of equipment recited i n claim one of the three five two as well as independent claim five each of those pieces of equipment are generic pieces of telephone equipment doing exactly what their generic pieces of telephone equipment typically do not unlike your i or alex did them before i think the record per the specification itself is that those pieces of equipment overseas did what they're described to do in the patent itself in other words the three pieces of equipment that are recited in the three five two patent are a telephone and there's certainly no  the three five two patent that that's doing anything different than it ever did before their switching equipment the m t s o and there's the o s s and the specification itself says that the switching equipment is off the shelf equipment it specifically says that the o s s is off the shelf equipment those cases share a common principle and that is as a whole the claims are directed to a problem that is unique to computers or to the internet or or to the technology in question here that's not the case this is the use of an intermediary only an age old practice whether it's a telephone operator or a matchmaker a private investigator applied in the context of a telephone network then with respect they're ignoring the whole billing aspect of it as yet to fall you're saying yes can you call up and get a phone and be put on the computer before i would suggest your honor that billing is itself an abstract idea and that the only step of the claims of the three five to patent that is directed to billing is the last step of claim one which is recording the identity of the wireless communication terminal and this court has held in the out of the supreme court held in alice that record keeping as a basic computer function so whether it's discussing billing or the other steps of the claims it's conventional equipment acting in a conventional way and to your question about d d r there's no how set forth in these claims there's no technical specificity be true you're looking at i guess is step two here but when we do this for vide this claims for by step one if if you're if if it's why isn't this closer to macro for example it's not closer to macro your honor because as in alice itself what it recites is generic telephone equipment performing generic well i'm not in forget about the ne let's stay on step one and is don't we have here are the criteria or the rules that are being apply that apply to the different steps of the application of the method i think you're on or were directed at step one to look at the claim as a whole and what it's directed to and much like in the claim it issue in alice where the court found it was directed to the use of an intermediary that's precisely what's claimed here when you look at the claim as a whole i don't disagree with you whatsoever that it's place in the telephone environment but this court has held time and again that that in and of itself is not sufficient at step one to take what is otherwise an abstract idea and make it not just as an alice you had three pieces of generic computer equipment performing the generic computer functions of data transmission and data storage so to disclaim one of the three five two patent contained three pieces of generic telephone equipment look at let's look at the most part of the claims receiving the information honor i don't believe it is in that in the context of the claim itself it's describing the process of retrieving a listing without any detail in the claim that suggest that's done in any way that it has always been done including in the way it perhaps the survivors step step by step one and we go step two and there we form this other part of and i understand your point your honor i would i would disagree however that it is such a description it is instead just describing the generic functions that a directory assistance system does and that this specification itself tells us it already did in the context of a landline directory assistance call completion well there was your point information in and of itself the forwarding of data is itself an abstract idea and is routine conventional activity that's in the affinity labs directive it's in the briefing it's also in the dealer track case and that's exactly what is occurring here there is no how given the claims with respect to how that occurs so both whether you're discussing it as a step one issue or as a step two issue the fording of data cannot impart eligibility to the shared i think this may tell us how it's and again each of these steps are the steps performed here by computers computers in a telephone environment a telephone an operator service system and a switch doing what phones operator service systems and switches do  according to the specification itself the other point i would make your honor with respect to the three five to cotton is i v points to expert testimony this was one of the patents decided on summary judgment it went to the testimony of its experts to argue that it supplies at least a fact issue with respect to inventive concepts but this court has held time and again that that expert testimony that is contrary to admissions in the specification or that relates to unclaimed inventive concepts can change the analysis under one one that's the smith and nephew case the bergheim or case the mortgage rate or case among others here each of the alleged modifications that i have these expert points to don't actually find their way into the claims ivy's expert says this says nothing about an eligibility determination much less a location based one so the expert testimony that is divorced from what's claimed cannot resubmit create a factual issue if i could speak for a minute with respect to the four ninety and three or six met that the claims as a whole are directed to overcoming incompatible communication types to the abstract idea itself through the use of a common format and not to a technological solution to the technological problem i b itself says the invention was not in the method for converting multimedia content from and the mass message into an email or vice versa be the admission that you are saying that for me i would argue your honor that that statement of the blue brief is one irreconcilable with the statement of the great brief and to more importantly irreconcilable with the claims of the four ninety and the three zero six itself which on their face were site know how whatsoever in terms of how there could be a technological solution claimed indeed all i v says was the aha moment was using email to transmit multimedia messages but i v's own expert in the summary judgment record admitted that it was already known to use e mail in exactly the way claim that's at appendix one zero four seventy four looking at porno and they do talk about what they view as the drawbacks and the and the difficulties in art was one of incompatible communications systems which of course is the age old problem of translation the age old problem of converting messages to and from a common format that this court is dealt with in cases like to a media and synopsis but i v by its own admission and it's consistent with the specification does not allege that there is any invention here in actually in the method of actually converting multimedia content from an m and s message into an email nor could it frankly given its own experts admission below that email was already known for that purpose i would draw the court's attention to the i v erie and vanity case the recorded one that was cited in the briefs where i ve made a very similar argument to this court it argued that the fact that the claims they're identified x m l tags as the preferred format choice to use for indexing should have significance at step one and also it's got to that that in and it's in another itself  seven three seven the question is does the combination of a c c s and i g which is a web server specifically connected and designed to connect with an i a c p is that not obvious over the prior art that's one of the three we intend to prove that we're entitled to preserve civility or is it as they say so buttin in conventional that combination has to make the patent knowledgeable that's a fact question there was evidence in the records my only point is that like in one of three if the issue comes down to how inventive is the thing putting two things together that's a fact issue there is evidence in the record submitted by i v it's the williams expert declaration at sixty eight seventy one to seventy eight where the expert explicitly said that the that combination was new and inventive and he did a d d r analysis he did a machine or transformation test analysis so the evidence was there on the three five two plan this is not even this is a claim that passes muster on or alice stuff one we've addressed that in our brief the changes that had to be made to the telecommunications networks in order to make this system work that's a very broad and incorrect characterization to claim there is a very specific problem presented to the inventors which is that m m s was coming on line people around the world were using very different implementation and someone came up with the idea of taking an m m s message dissecting it putting the text to an e mail and the other objects of the m m s into attachments and using email to do something they've never been done before and then reconstructing the m m s message at the other end and whatever way the receiving end if he wanted to do so so that it could transmit the m m s message to its customers it's inventive it's pretty neat and we think it's there maybe  to three argument a trial but again there's something certainly that's not routine or conventional here and finally on the two hundred ninety five seven little or nothing was said on that we believe that it's on all fours with bascomb and on that