things that can be done in the human mind when you program a computer that just does the original steps of the program computer must be done by a human being but the mere instrument did they are programmed into computer in the computer executes those programs if the rule was that them but i don't actually think that that's quite the point the point is that the mental step noticing symptoms considering treatments that might be beneficial with risks for those symptoms and then saying these treatments seem preferable to another all of that can in fact and routinely does take place inside the heads of doctors so that is a mental process what does the computer do here the computer carries out that process and it doesn't do it in a way that there's nothing in the claims about how the computer is doing something  particularly snazzy in that process the simplest two possible treatment preference list would be covered respectively the claim is not covered that the claim focuses on both the method claims and the apparatus claims recycled computing device has three specific knowledge bases this claim does not preempt doctors from doing what they do this claim resized never heard of them number it's not that's not the question the question is not whether the claim covers the doctor's activities or the mental steps the point is that under cyber source for example that if this could be done by a doctor without the use of a computer than merely adding a computer doesn't make it  eligible understood but we're not merely adding a computer here and expert system is a computer system and you can no more have an expert computer system than you would have a radio without a transmitter and intent and a receiver this is by definition an expert system is a computer system and the claims re site that doesn't do but that's the moment cyber source says that you know if it's something that could be done in the doctor's mind it doesn't say that explicitly but takes is doing a list you cannot do what is claimed here and expert system goes beyond you need not be able to do it in all of its applications but some of the applications that are within the scope of clinton could easily be done by dr no no your honor they can't or not again the invention here the technology here is an expert system expert systems or specific type of technology recognized in the patent office there  information it organizes in a particular way and then on computation it provides provides an answer again we look at the way computers operate they do not do what brains do they do not do what minds do they operate in a particular way this is that this is like this is in the theory of medical science doesn't make it exactly what a doctor does no more so than an adding machine in the sense of adding machine does with computers there are many types of expert systems there is expert systems  that help like planes there are medical expert systems that control how elevators operate in code information and they execute programs but the rule is that if something can be done in the human mind an algorithm carried a step to be done the human mind structures the analysis is to say if you're a challenger you first identify what the abstract idea or in that case the laws of nature are natural correlations and then then you look and you say what else does the claim require else has to be in some sense significant my word not the courts agree court says enough says routine non obvious all that kind of stuff so it's just not true record we have that evidence we have an egg finding by the examiner that the claims here the system described here the methods cracker has a significant limitation a meaningful imitation in the three databases that was not obvious that was not suppose in the fire it was not conventional that's the meaningful limitation and that's why these claims do not preempt doctors they do not preempt other companies from having other types of medical systems that helped offers this does not try to preempt other types of expert systems so the do preemption if the doctor the question is that it preempt all practical applications of an abstract idea there's no evidence in this record that it does there's no testimony there's no expert opinion there's nothing what we do have what the record does show is a finding by the examiner that there were other medical expert systems would practice this abstract idea and yet did not have that limitation so it doesn't have that limitation that's which doesn't preempt the comes before doesn't infringe  comes after they would not preempt the question about practical applications or really a question about what goes on in the world so it's a question of the facts this case is a patent this is a thirteen year old ha what we have here is a specific approving of existing technology yes there is a lot of one to one water that is going to be there and this court has now focused on preemption as detached preemption of practical applications the real world effect and that's what we're talking about here what is the real world impact so this top doctors from practicing medicine does this no just stop them from researching treatments no does it stop other companies from having other computer systems that would implement ways of advising three counts of doctors no it doesn't this is a very specific claim on an exorcism that has three specific knowledge bases which are particularly poignant and it was the examiner who found that limitation to be the invented concept in gear the focus is whether the claims as a whole preempt the use of the arrhenius equation in promethea is the question whether they preempt the use of the correlation and this court itself has had as set forth or if the integrated knowing is the question of is the full scope of the plan in the real world the practical application of preemptive and other meaningful limitations so we look at the claim language we look at the medical procedures and surgery what difference does it make what plans for creation the patent office treated as for one with them because that informs us as to who the relevant audience is who is one of skilled minyard who what is direct relevant technology about is what doctors do he would have classified and surgery so we have evidence in the file history as to what the subject matter of the invention is at the examiner thought it was what doctors do he would have classified it differently this is evidence in the record so if we this method claim and all it did was take two things ip addresses and predict card numbers and you could put in a list and that was acknowledged this is unlike c l that's where what you had was this basic idea the fiction essentially of a shadow at the rule in summary judgment that the inference is have to be drawn in our favor the depression becomes does this plane actually read only human mind and does it preempt all practical applications on reserve my time for bob we will save it for you mr court before you get to the arteries here i have a question about the capillaries and that relates to which of the claims are properly at issue in the c in judgment action as i understand it it's specified stipulated that only claims one in twenty three of each of these two patents were asserted for infringement purposes then you have the district the infringement of the claims of the two pac i believe it was just a generic pleading so that they claim to want to specify that they had gotten through the patent rules procedures yes it was dismissed i will twelve so i don't think it got to the point where the claims issue became clear what happened here in this case is that a b l serving only claims one and twenty three as the counter claim  infringement counter claim however smart gene never retracted its assertion that the entire path was invalid and so going forwards marching position was all the plans were invalid and it was argued that the district court that claimed one of the seventy six patent was representative of all the claims of that went to the differences between the method claims and the system claims in the seven eight six patent there were there significant differences between the method and system claim to nine a patent for the purposes of section one one what's your answer to the argument that preemption is the test and there was no preemption here well your honor as i understand the preemption here the claim is really nothing more than adding a computer to the mental steps that doctors can and do do at all times ab all content of the claims directed to an expert system i don't see the word expert system anywhere in this claim in fact the claims is broad enough to cover any mass that that employs a computing device that has a first knowledge base a second knowledge base and a third knowledge base and the knowledge bases were argued by a t l to be defined simply as data bases during the claim construction procedure that that issue was briefed to the district court the district court did make a formal finding but the issue was approved and the district court did have comments on what the claims might me a b l advanced the position that a knowledge base should mean a database so if that's the case then claim one includes three database three databases that have data in them this is not the definition of an expert system they could have written a claim differently they could have claimed the things that make an expert system an expert system could be right there in the claims but they were not elected to claim it differently so based on the way that claim one is drafted it presents many practical applications and that which is left over is is is merely the computer doing nothing more than what the human being can do in his or her own mind and this case is the idea here the basic idea here is providing information hundred one inquiry specifically that's that's correct but there was an inquiry into whether at least some of these elements of the claims were nontechnical term what is enough in the decision to withdraw and say well i guess my answer would be twofold to that question one it would certainly depend on the prior art that's before the patent office as to whether or not that prior that assisted the doctor in determining whether finding an appropriate there a few treatments edged out however what i what i would say about that is every if every time a litigant comes to the court they have words for assessment by you of potential exposure to claims other than one in twenty three there was never a there was ever discussion as to whether there was an exposure of direct particular claims but there is what came up during that will fifty nine briefing and i will take a moment to address that issue that that evidence whether that information should be processed before  evidence that a b a v l attempted to put before the district court certainly could have been put before the district court during the summary judgment proceedings of the bills the case makes that sort of evidence relevant smart james certainly argued that this was a mental steps case and as a we all thought that it was an idea i had evidence that the steps could not be performed mentally they could have brought it forward during the original summary judgment proceedings so all  if we don't agree with your argument we should all three types of claims be considered together all the things that came the common limitation of a computer device to specific bases so i would agree for the given that nugget they do all come together the court on the one twelve the court system claims those are made for them cation which were not construed in these clips and we do have to consider those specially the right to address the things one in twenty three the rest of the cases claims were no longer subject to the court system of the church action that's not the same thing as a covenant not to sue on the other claims and if in fact under a hypothetical if the texas action is asserted all the claims why wouldn't that create the case or controversy that would give rise to the clerk was another case that was no longer in the school but we've said we've had numerous declaratory judgment cases where the allegation of infringement was made in another forum and if there if there is an cartwright judgment action even if the subsequent infringement counterclaim was limited to particular client is not right but then again the case of controversy must continue in every state so i understand and i think that the only organ the only answer i can give doesn't have to say an expert system the claims are written to want to skilled in the art seconds asks of this question about knowledge bases and databases what was being construed there is the word not the entire claim limitation in knowledge base of the various elements but the word knowledge base itself that construction yes that can be a database but one must consider these the entire limitations which are a knowledge base of particular information so it's a knowledge base that some that comprises the treatment regimes the expert rules so and so forth so it's important to parse between the full element itself and that particular word what knowledge bases as to the one of the two and one of the three issues in this that's a general proposition in this case it went to the very elements of the very element the three knowledge bases that's what stitch is or could be other cases which the one to one of three determination of non theists went to some other element but it's the very element here that is the substantial that is the meaningful imitation that was the very one that the examiner found was not in prior systems that treated provided these types of valuations that's what makes it meaningful and that's why it doesn't preempt as to meet the us well i would like folks to move on