that's all we need to do right either ground can independently be grounds for reversal you don't have to reach the on the ground that's correct so let me make sure i understand it in that sense your your appeal it is a little conditional in the sense that if we reverse on one in your mind we don't have to address the other that's right because we've won the case then either one would end the case and require entry of judgment in our favor because your sexual want to one invalid if you challenge was this court can address it and would result the case ok so in the end then the nd issue of course is the one to one issue that the side tran patent claims an abstract idea in a way very similar to this court's prior cases unless the court has a different preference i will propose to address the clay construction issue st and then the section want to one issue so the claim construction issue really turns on language of when we have a claim where the patent gives us a definition of the term said days i understand it the district court or end of markham and construed said data in a way that you would like to as in the comparison step would include  transaction amount being compared between the image of the check and data file created but then in summary judgment the lower court seemed to change its mind on that can you explain what happened there and why there was a migration between what i think i saw the district court say during going to argument construction and then what the district court of them if he said in that summary judgment memorandum your orders exactly right in the claim construction order we won the issue and the court said multiple times and i'm asking why why why was there a shift as shift the court that the only evidence we have about that is the court says that she was clarifying her order her prior order she does not the district or does not acknowledge that this was in fact a reversal of the prior order so it was a clarification both sides move for summary judgment we move for summary judgment thinking that we had one and the other side move for summary judgment arguing the claim construction that the judge ultimately adopted was in fact in the existing order but we don't think that's correct that the court clearly construed the comparison step to require the comparison of the amount in the original markman order that's right or other and that st order was in the right order course you have the noble review but the claim language requires that construction we have a definition in step  that the said data includes an amount of the transaction associated with nigger information and then said data has to mean the same thing in the comparing step so that at least the compare step passed to at least include that amount and that really ends the case that's the definition you're relying primarily on the plane claim which right we are we also to specification simply suggest that the best source for comparison or most often suggest what the comparison data is them like your data so so you are actually what the specification does over and over again is talk about comparing my career information and the i'm out both items would be compared in what's called  thing to compare would be the my career information but so you tran as the master of its claimed wrote a definition of said data to call for a comparison of them out associated with mike or information that's correct or but at the end the specification really does over and over talk about comparing the amount so it also supports our construction that we're advocating here so i want to turn to if i could the nd language really is clear enough by itself to require this definitional reading but the final history also requires reversal and that's because sawyer tran asked the patent office for a claim that said comparing said image files said data files to find matches and that claim was rejected but that's what the district court's order does the district court says specifically it's the data file which must be compared to the emmett digital images that was the rejected claim language that the patent office required said data to be the comparison and so reinforcing that even if anything the prosecution history of that really drove home the idea that what the examiner was hunting for and what with the idea that said didn't necessarily means we're talking about the transaction amount i didn't see anything suspicious if it is that bad it was more about we don't want you to say data file which is prefer you to say data because that minds of better and more cleanly with a claim like well but that that does answer the call you are right your honor that the patent prosecution history does not call out this exact issue we're debating now it didn't have to because that requirement of said data is narrower than anything  passing the want to one issue there the critical issue is we have an electronic check processing patent that claims really a narrow improvement where we're moving the checks from one place to another and then imaging them after crediting and that patent claim that's that's the concept of the invention that's what the claim is directed to that imaging after crediting that's what their expert said that patent question if you compare that to this court's decision in content extraction in data treasury and in inventors holdings versus bed bath and beyond we cite three cases that are very close it's financial transactions processing it's check process and and this case is can't be conceptually distinguished the district court emphasized the physical nature of the chakras and handing them over to a rd party and having them again are you i think things suggest in your brief that these other cases also have that kind of physical nature with respect to checks and i'm correct and remember you you're absolutely right certainly content extraction of a person is physically handling a check and a deposit slip and interacting with an a t m machine bed bath and beyond is even better because they're the person that's physically going to the store getting the code and getting documents or getting products shipped to them away from an abstract idea these types of cases of no technology no improvement in computers and by just saying oh we're going to just write a clever patent and have a physical step there are many many cases to that effect that's just not good paper checked is literally being moved from the location of where but it's towards received by at the point of purchase terminal by the courts playing construction it would cover the movement receiving at a different location in the back office it could potentially cover that it is that's already was the conventional step of taking it projects and then running them back into a back office somewhere and then doing the checks scanning their literally every step and then claim it's conventional at the only advance that they claim is this delaying the imaging step everything is conventional and this imaging and moving checks from one spot to another gets there's a central banking p steps but not exactly in this setting but that's a conventional bank pressure there isn't an argument about that that that's anything other than a conventional bad practice of reconciling two items something it was known to verify the content of a check like the physical check against a data file created at the point of purchase that's collects all this data from the so this is conventional but acts of reckon suggest if there's anything different here it's the idea of instead of using the physical object to do that comparison and verification you're using a scanned image of that paper check yeah i do that same comparison exercise that's right you're doing a comparison with a computer of a file is there any argument from the gotten or below that that's an inventive concept they do argue that the order combination is to meet step two they're relying merchants account before doing the check scanning exercise and that's what is there a kernel of inventive contribution but i saw them also argue that well in the vendors have formulated two different paths of this overall processing method where one path is occurring one place another path is occurring in another place and so therefore there's advantages to that so this is just exactly the core of the issue the st pass the data file and the crediting of the merchant is the prior art  conventional it's in every check processing the only quote inventive concept they claim is the exact abstract idea itself and it's actually the delaying of the imaging until after the crediting they don't speed up the crediting your that everybody understood happened in a certain way and broke it apart into two different pieces that happened at two different places two different times by two different machines the character of the  so so part of what this court's cases look at of course is is the thing that's being offered as an inventive concept something that was well understood routine or conventional it would do great violence to the words understood and routine and conventional to use them to describe something that never existed so can you just articulate in a sentence what's the inventive concept here the inventive concept is the order combination of taking what used to happen in a single place at a single time by a single machine and break it into two different parts to different paths such that part of the process happens early at the merchant's facility that the checks are then physically moved to a different location and another part of the process happens then at a different place different time different machine and then tran has done that because sally train has approached that question completely differently than anyone else had it then has to bring those things back together instead be by doing the comparing and matching process the ordered combination as i understand your background section and your background section talking about how it was already known and established and that in processing checks and merchants stores to create data files at the point of purchase that has all the check the at and that you could also scan those a for checks right there at the point of purchase or option only you could do that check scanning in a back room or a back office of the merchants it depends on what process you're trying to use there's this back office conversion process that's that's  margins can keep an image of the check and then alternative method ready of handling the checks it's been proposed by which merge and scan their checks in a back office typically at the end of the day so to me that reads like a check scanning you know it can is is discussing two different ways to different prior systems so the pop system point of purchase system that wal mart happens to use that's the that's a system where they're scanning that happens at the point of purchase  context that we're in the context that these inventors were dealing with was not the pop system it was the back office conversion rules that were getting ready to come out and what was understood about those rules and and this is what is stated in the specification it comes to an spills over three is that in that process if anybody wanted to do back office conversion they took the checks into the back office and they're in the back office went through the steps that the that the block rules required so if your honour's question is was it known in the art generally that you could scan a check at the point of purchase yes i agree pop did that as to practicing back office conversion which is the the problem that these inventors were facing problems these inventors were trying to come up with a solution for that was not the case in fact this was a point of sears saying that back office conversion was not conventional at the time applications filed so  back office conversion rules had come out and people were thinking about how they could apply those back office conversion rules so that when they became effective a block process b o c process could be used understood that you could do back office conversion before cell you transparent came along was that you do all of those steps in the back office you wouldn't infringe this patent because there wouldn't be the physical movement of the checks to another place to accomplish the digital image scanning and then the comparing and matching step that so it's there receiving said paper checks yet and that the right and the district court specifically construed that term to to to require that there be movement of the checks which is what the away from the point of purchase but that that would in compass down the hallway into a back room and get it but in the back office conversion process before signing trans invention this is a point we we specifically debated and it had been front of the peterhead before we came to this court the st time and in the pieta found in our favor on this question in the back office conversion context all of that happens in the same place all of that happens in the back office there's no movement of the check such that the nine hundred and forty five patent could be infringed thank you another question right i understand opposing counsel to be arguing that the inventive concept sure they do and but i don't think that that if that's what us bank is arguing i don't think that's as should be a successful argument here the so that the jumping off point on that of course is what is the claimed advance for looking at the claim as a whole we're trying to understand what the focus of the claimed advance was and it could be helpful in this case that the district court identified a claim to vance that both sides explicitly agree with so the district movement of paper checks that's what the district court said the claimed advance was us banks and the way i look at the claimed advance as described in the summary of the invention it's the crediting of the merchant's account provision of funds to move consist counsel at a much earlier point in time in the overall check processing exercise and if that's the case then the claim to advance is for emergency to be able to get their money faster and that sounds like an abstract idea and then when i look and try to figure out from your claimed invention to what extent has there been any improvement in the underlying check processing technology which is something that we are often the for if not all the time we look for when we find a pattern eligible claim i don't see anything that can necessarily be regarded as an improvement in the exercise of creating a data file that represents the check to or the exercise of scanning a check that technology and i don't see anything different than that and and the crediting of a bank account i don't think i see anything that's technically an improvement there so i could i'm getting a little bit worried about the claim that if i don't see any improvement in underlying technology and i see that part of the invention here is trying to get merchants accounts credited earlier in the purchase exercise so one of the things us bank argued vigorously was that our patent didn't get urch their money any quicker and if you look at the pop process it fall into the i guess that's what i was wondering crediting the emergence account and earlier point in time what does that mean so it just means a number is populated in the merchant bank account but the merchant can actually access those funds quite yet because there still has to be i assume some subsequent clearance that house down well they're different well the crediting of the account is where the merchant does have access to the money and that there is actually a lot of detail about that in conference but side of the case the i think the way that the way the patent puts it is that there's a combination of benefits that what's improved here is the check handling procedure itself so i that there's there's not a specific technical change in the way the data file is constructive or in the way the crediting answers and if you look at the pop process that we were talking about earlier judge channel in in paragraph t that provides for similarly prompt crediting of an account what this process did the reason cited tran was able to get this patent what it explained in its specification was that by changing the physical process for handling the checks in the way of describing it you could get a combination of benefits the patent starts out in the very beginning of the abstract by speaking of a method of processing paper checks that divides into two independent halves and wh r make anything better it makes it better because you get the combination of early crediting of the account which the merchants are very interested in and for example the summary of the invention speaks of the mer t calling three lines fifty eight through sixty five speaks of merchants are relieved of the task cost and risk of scanning and destroying the paper checks themselves the outsourcing of the checks scanning to a rd party processor right it would not necessarily have to be outsourcing you could do it all yourself as a merchant well that wouldn't be an advantage that your advantage is that you're relieving the merchant of the exercise of check scanning that you could do in the paper checks but you don't get the benefit right if you don't if the merchant has to do it you don't get the benefit you just mentioned fair enough and what the cited trampin with the nine hundred and forty five patent offers is it unlocks the benefits but where in one doesn't require that it be done by somebody other than the merchant writing one certainly allows that it be done by somebody other than the merchant and what the inventors were pointing out was that that's an advantage that the merchant can get from this invention right if the claim was scoped down to the fact that somebody other than the merchant was doing it then you're right and that advantage would be captured and and and the claim to be right sized and correspondence that i don't take that i think i get your honor's point i don't take u s banks critique of this to be that that there's a problem with the fact that you could outsource under this pressure that is too broad because it allows for infringement by the merchant itself the inventors came to the patent office and said we've come up with this invention that allows for these benefits to be unlocked that allows for this particular combination of benefits for the merchant to for the merchant to get those and in order to get those the merchant can do it and that in various different ways but captures the data that point of purchase sends off the checks physically to someone who performs the four they have to be sent off to another to someone who receives them and step see and we know from the district courts construction that's not been challenge that that receiving it step see is in a different place right from frankly i guess what i'm saying is that we agreed already to that could include the back office no because under the back office conversion process that the initial scanning of the check to to check the maker data and get the transaction data is not occurring at the at the point of sale it's occurring in the back office right that's it that's the different location well but the different location that we're talking about here is the difference between where the data are captured that come into play and step away the data file that gets received and then where the checks are received in step see those things have to be different right in the back seat to the point of purchase you know step see is where the checks are received later after they've been initially scanned in the account has been credited step see is where they're received later for image scanning that has to occur someplace else so that can't be the back office in the back  have a question and i can see how the just trick or emphasize the physical nature of getting the checks and sending the checks and i can appreciate that back home in terms of understanding how that might connote that something's not abstract but how do you deal with our court's precedent he says like content extraction and fan or holding and i think there's one other that's mentioned in the blue brief data treasury how do you how do you deal with those cases that involve similar physical activity and yet this court said that they were directed to an abstract idea and eligible under one line so i think it goes back to what is the focus of the claim to advance in the like in that case for example it was in collecting data recognizing certain data within the collected data set and storing that recognized data in a memory the focus of of that claimed advance in that case was about data manipulation and as we point out in our brief there are lots of cases where the court has focused has realized that the claimed advance was in data manipulation that's not the case here that's why the claimed advance in this case and what the district court held and all parties agree on is so significant what's central to this claim what central to the nine hundred and five dollars and is the physical handling of the checks you see for example in the background of the invention section the very st heading speaks of the history of the history of physical let me get  speaks of how paper checks were physically processed historically so that the central nature of the claim of the claimed advance or the focus of the claimed advance was the physical handling of tangible objects they need to get those important physical documents across town and so they boys ask their employees to somehow get across town to deliver those very important physical documents in the same day but somebody invents bicycle messengers thank you get through traffic faster and now you can outsource the livery of these important physical documents across town in the same day to this bicycle messenger service that can navigate through traffic quickly and be able to get these physical documents across town with great alacrity and special dispatch is that's a physical handling of documents getting from point a to point b perhaps in a faster way than it been done before a more efficient way of relieving companies from having to deal with their own delivery of these ready important physical documents on their own would you say that that's a patent eligible method i don't know what i can say is that that's only that's a piece of what's going on here that's a that's perhaps a piece of the analysis here but it's not all of the analysis here because i think the claim that i just described is unlike any claim that we found palatable i guess i'd need to think more about that particular hypothetical i think that's a that's a one piece of many of the analysis that's involved here whether it's a three hours is closest to your facts where we found the claims well when should we look to for guidance and say aha that's that very close to this so i'll acknowledge this is a this is not a case where where we're claiming that where the patent where the argument is that we've improved that the tech for example as we talked about earlier the technical process of creating the data file but it is a case that in in the central respect similar to do your or fails vision x where there's a  professional process that's occurring that businesses are using and that physical process has been done in a certain way and the inventors come along and come up with a different way of doing that that that provides benefits that's help make the point that the concern that underlies all this of course is preemption it can sort of the concern is that there's something about using the abstract idea which we don't believe exists here but the one that's been offered said data is clearly from step a data that was captured at the point of purchase and contained in the data file we know that said data includes both the amounts and the maker information we know that one piece of that said data differently than all the other pieces of that said data we also have claim three that specifically says that the comparison is to be done based on mc or information which is exactly how us bank does its comparison and if that infringes claim three it of course has to infringe claim one ok thank