thank you your honor may it please the court this case concerns two patents to related patents on email clients that structured data within an email in a novel way in order to create improved user functionality use that did not exist prior to the priority date of these patents and nine hundred ninety eight i hope the first discuss today how the earlier patent seven thirty patent describes its novel algorithm for structuring non tax data within the email in the specification sufficient with sufficient clarity and with sufficient specificity to provide a corresponding algorithm to the encoding means term and the a patent and then i hope to move on to the second patent three seven four and show how the plain language itself the claim limitation requiring the romo to encode it in email limits the claim elegant but in the context of the briefing in the way that the one to one motion was briefed what counsel below meant was that because the seven thirty patent is generally broader than the three seven four if the seven thirty patent was a patentable not abstract idea than the three seven four patents which contains all essentially the same commit same limitations at the seven thirty patent plus the romo limitation selective display of email but that the offering component of the claimed e mail client is responsive to a role mode in coded in the e mail and that that provides novel advantages over a for example password password method of implementing a selective display or act using executable code within the sought within the email to so counsel below statement about three seven four patent may not have been the best way of putting it but he certainly didn't mean to concept of a role mode even if that was adequately developed that that that's not new well the cot if the claim had been limited if the claim language had been simply  that the e mail message determines how much information the e mail message would be displayed based on the role of the recipient that would be claiming the result that a net lucknow would be a problem if the cla have any explanation or didn't have any language in the claim limitation that explain how the roll mode functionality was implement but that's not the claim limitation in the three seven four at the serif three seven four pat is that right that's the thing that makes it so it's not abstract is that correct that's correct and that that in combination also with the offering reading component be responsive to the role mode been incurred in the e mail because it's not just that the isn't coded in the e mail that provides an advantage but the but the fact that what implements like to display is that the component programmed into the e mail client is responsive to that role mode that tag in the email the how it's done that makes this a case like and fishery for fincham but did that technology preexist for other purposes for purposes other than having  your idea you using that technology in order to have well not so the mom standard certainly practiced it but the idea of using the mime standard to implement this functionality that was novel that's what never existed it's the exploitation it's the novel exploitation of those e mail standards that is the pattern the whole improvement the computer functionality here in the same way that  claims and poor us stored data to memory in different ways even though those number structures existed before even the information being stored to those to the bios or the hardware devices had existed before it was the novel way of storing that data and then kora that this court found was a not abstract idea that's what's happening here with the three seventh or perhaps the novel way of structuring data within the e mail standard within the month structure is what allowed this new functionality that novel way of structuring data to provide an improvement computer functionality point or stand that that novel structuring the data the seven thirty seven thirty patent discusses so the prior to the seven thirty patent what you had to do to send say a spreadsheet and e mail you created the spreadsheet with a separate program probably not excel if you're going back to one thousand nine hundred seven i'm not sure what it was back then but you've read the spreadsheet in a separate file and you attach it to the e mail you've got to find it in your computer folders you got to attach it the recipient has to find it and find the right make sure they have the right program to read it that was a problem that created user functionality issues what seven thirty patent does is it says within the mime standard you can put the  can put the spreadsheet functionality or whatever non text data functionality you want within a component of the email client both on the an offering component to write a spreadsheet within the body of the email and a reading component to read the spreadsheet within the body and what you then do to encode that into the mime structure you use a tag within the mime structure to tell the to tell the recipient computer what offering component created the data in the email most and that matches the language in the claim limitation of the three seven  four but if the court is concerned that that claim limitation might not automatically that then language read write alone might not be sufficient to be an abstract idea at step one  alice certainly there are factual allegations in the complaint there is an inventor decorations made on with a complaint explaining how these claim limitations set forth and separate the idea from the abstract idea of selective display and on touch and that would be a very dangerous standard for the sports that you don't you don't really disputed that these are knees function from here we do well certainly certainly it's an uphill battle on the encoding means term for which there is a presumption the t appeal that the patent covers the following improvement on computer functionality not just selective display of a single e mail based on a woman as it really argued of it in passing below but rather by including the rule mode in a manner that avoids security problems not only is that latter argument plainly waived it just was not made below in any shape or form but the representative claims themselves there is a statement  complaint that's of prior to the three seven four there was absolutely no way for some of our methods to control and select the amount of the message that's read by a recipient or displayed over the course of a sequence of communications and we have the same statement inventor decoration right your honor i completely agree that that is how that is how it was teed up below the line that you exactly rhett there was absolutely no way for a sender of a message to control and select the amount of message that is read by the isp recipient were displayed over the course of the sequence of communications so as they argued at a below the key innovation was now you can send a single email and based on the role mode it would be selectively displayed to the recipient that is no longer their argument on appeal as you just an email in a way that of weight security problems that argument while it's well developed in their brief was never mentioned below so how could the district court of addressed that argument that this is the improvement on cunt computer from anality their whole argument on appeal is on based on and fish that you have an improvement in computer functionality but that improvement was not articulated below and so that this record cannot address that and page eighteen of their brief makes clear that the prior art did allow for the portion that you read paragraph seventeen of the complaint selective display of a single email based on a rule mode b innovation they say it to make it not abstract mean that such a case and calls out well what it would be i don't think it would if in fact the claim limitation did just that if it did overcome that computer security problem the claim limitation itself and not the preferred embodiment that might get you past one hundred one had it not been waive but here's the disconnect as that portion of the specification makes clear and just so you happen in front of you as i read it it's the portion that you read so it's at j f or twenty three it's column fourteen lines fifty to fifty two and this is the paragraph talking about the javascript problem it says quote according to the preferred embodiment of the invention no executable code is contained in a message only tags which are read by the author and reading component so it is true that this paragraph describes a preferred embodiment which would solve that computer security problem the problem they have is that the claim limitation itself doesn't solve that problem and as we know in other decisions the improvement in computer functionality has to be in the claim limitations itself and all the claim limitation says is a role mode in any email included in the email and as this paragraph makes clear javascript was also in a step two issue rather than a step one and it's certainly at best a step two issue but even if you got to that step two issue what they are claiming is the improvement that this could overcome that security problem that is nowhere in the claim limitation so it's just like symantec with the patentee in that case said look this is not just a general method of filtering the email and detecting for viruses we are now solving this problem of reducing the protection gap making it work faster and what this court said is well that would in fact be an improvement on computer functionality either under step one or step two the problem is that's just in the specification in the prefer an embodiment it's not in the claim limitation itself and they have the same excerpt makes clear the preferred embodiment solves a problem but not the limitation and here's why the limitation senna's the part that they're now emphasizing on appeal but that they did not mention a single time in the district court difference there because the claim limitation itself here does not offer any improvement in computer functionality it's just as they said and refined eighteen the prior allowed you to do selective display and email it did it through javascript which is also encoded in an email so there's nothing the claim term itself that gets you past this problem again none of this was fleshed out were and we didn't have a chance to argue this in the dish where the dish acquired didn't have a chance to pass on this in the district court because they never argued any of these points about how included in and roll roll mode improves security neither that claim term nor javascript nor security appears anywhere in the district court proceedings and it's not hard to figure that out because if you go back and look at the about the forty pages of briefing on section one hundred one in the district court there are four sentences in which they address this claim limitation and they pick out the best three of them on page fifteen of their required brief to overcome the waiver argument and it's right there on page fifteen of their reply brief three bullet points and you can see that this is this is their best attempt to say that they preserve the argument the first  defendants arguments are based on stripping the claims of most of the limitations in violation of well established principles that for section one a one determination all claim elements must be considered alone in combination that's just a statement of the law nothing to do with  the specific argument here bullet to the pants ensuite improve upon what was done previously with emails and computers they solve a problem that did not exist prior to the advent of the new email via the internet technology no reference to what the problem was not even differentiating between the two patterns and then the third bullet where they finally do out of forty pages of briefing address the three seventy four patent it's and these two sentences the claims of the three seventy four patent include a future that allows a single e mail to be sent to multiple recipients with different e mail material displayed to each recipient they do not disclose a permission or passwords based system that restrict access to information well that again that is that is the basic invention that you started with an page eighteen of their brief and so now they need to import this new argument about how in coding in an e mail message if they're getting into details and the specific reason why as i understand it they're not giving the details if they perhaps didn't g based on an improvement in computer functionality that proved it has to be in the claims and it's not in the claims here were there in the prior where there are other types of tags that could be read in an email system this way i mean other than or well not just using tags other than to javascript to my knowledge no but i don't really even fully understand what they mean by tags because it wasn't fleshed out below what what i can't answer is it's definitely not the first time based on a roll mode because that's just how they define roll mode is the identity of a user sender and that was well established and we know that it was done through javascript i don't know if it was done in the way that they would define attack now on on the seven thirty patent why is it i mean i understand the argument that that you can't just incorporate prior art but when you're talking about for purposes of finding that there's enough disclosed right when you're talking about a standard setting organization you mean that's not just grabbing something that someone may or may not have come across right yeah no i agree with you in our primary argument on lack of structure on the seven thirty is not based on the incorporation by reference although that is a point that we make our primary argument is simply referring to the  as if they referred you to an eighty page manual on how to program in the c language and they say hey use that manual to make this program work to make this patent work they can't just refer to the my standards or formatting standards one way in which it's been described to me is mine you can think of it like a fat x box if you put the things in that that x box products will deliver it but it doesn't tell you what's in the box or how the stuff got into the box and that's what we have here they've simply code the non tax data which is created by this author a component which might take the form of a spreadsheet might take the form of a powerpoint presentation an audio file any sort of non text thing and turn it into an internet the word package but but package and judge so i think you were asking about this at the end of the argument the specific step of encoding the non tax data where is that described and the answer is nowhere it's described nowhere other than in the word package they say you can see it on page fifty eight and the claim remember the claim requires encoding the non text data created by the offering component and the step that corresponds to that is packaging the  data and so it doesn't tell you what we know from this algorithm and specification is that it has to be mine compatible so it has to be in a format that's consistent with mine but it doesn't tell you how to take it and this is the ballgame of this great of the invention the purported this invention is you can take all of these different sort of non text files powerpoint excel whatever created in the email and have it compatible but it doesn't tell you how you could go about how a programmer could go about encoding it could have given an example of ok how do you take an x l spreadsheet and turn it into mine compatible language or how do you take a power point presentation and convert it into my it doesn't have to give a source code or anything like that but are could figure out how to do it again even if that were true which i don't think is true based on our expert evidence that the district court relied on even if that were true exactly right this is a means a function claim and a big trade off i mean it's function you don't get every software routine under the sun to implement the invention you have to get you've got the one that's actually disclosed in the structure and they don't disclose anyone in the street anything in the structure that would allow a person of order skill in the art to figure out which software routine they want to use to turn it into my md compatible if there's different software teams available there is different there's certainly different ways to encode this non text information but that's  that's the black box and and the district court relied on expert evidence here and this is on page thirty one of the joint appendix when the district court went through this is look i've looked at all of this i don't see sufficient structure here to recite the claim function and then he cites looks at the expert evidence on both sides and he says look the expert evidence on i'm going outside on on plaintiff side doesn't explain how this doesn't adequately explain how this discloses but the expert evidence submitted by epsilon does make that goes in line by line through the portion of the specification that they cite to say that there is adequate a structure here discussing the application x and all all of those things and so under this court standard review it would have to be clear a actually come right out and say at the last that there are alternative methods to do this and i can't figure out which one is being chosen i think it's more the former that there just isn't enough structure here to and someone a person of ordinary skill in the art but let me point you to the exact passage which is at j f k when eighty five to one eighty six and it's paragraph it's a chart and it's paragraph thirty four of the chart and it says this section it's the three sixty five to forty five is the main specification excerpt that they rely on and it's oh it's right in the middle of j one eighty six and it says this section references the mime standard but does not give an algorithm to automatically encode a representation created with offering or offering reading components stating that this encoding is accomplished is different than providing an algorithm showing how the including it corresponding structure and what i would say there is two defects that the district court pointed out to you and that the expert declaration substantiated what is the one that i've been talking about it doesn't just show you how to actually encode the non tax data and just talks about that it has to be compatible with mime standard the other defect is it doesn't teach how to do it automatically which is what the claim limitation teaches and that's where that expert declarations a say look you can point to something that's a format compatible in mine that might that might identify a particular application as you'll see in other parts this was alluded to in the briefing and oral argument they got into the fact of how there was no mind currently current available my name handler to allow this functionality to happen so you would have to create a custom line handler which is something else that they haven't sufficiently disclosed but that's that's i guess a third level and it does not need to go into detail how exactly the data is structured non tax data structure within the email all the algorithm is and all the algorithm needs to be is explained that you take the non tax data which a series of ones and zeroes in whatever term or whatever format the offering component in the reading component component used read and it's a fairly arbitrary when you're going to have a different set of ones and zeros in a different format for spreadsheets a different format for pictures  different format for powerpoint prefer presentations different format for auto cad files whatever you're sending you're going to have a different format the key to the encoding step is that you take the non text data in whatever format the components create it and you put a tag in the email that says what offering come home created and what reading component reads and that's the algorithm that's described in roads at columns three and four seven thirty pout that's the algorithm for how and coding means in codes the non tax representation into an internet compliant e mail that's all that the claim limitation is that's all that means plus that means a function name is and that's all that needs to be disclosed you don't need to go to another level and that's exactly what this court held in typhon touch where it held that a pro is algorithm set that sets forth how the mean how the structure how the program accomplishes the claim emphasizes that the security issue didn't come up below the offering the argument that the claim needed to be construed to include the role mode limitation that was absolutely argu at three seven four patten improve the e mail technology by the author of the email can make certain portions of the email not available to the recipient this is done through the offering component which is different than what was done before that's exactly what i've been arguing today that's exactly what useful but the focus of our argument focuses on the claim that structure and finally on the merits my colleague says that his strongest argument on the merits is saying that the description the embodiment is not important in the claims that the claims have a different meaning than we're saying that's effectively in mission that on the merits of this case there is a claim construction issue alice stepped to that needed to be decided not on a motion to dismiss but on full review on claim construction with full evidence take into account on the merits of this case the one hundred one decision should be vacated at a minimum and remanded for further consideration