[00:00:00] Speaker 02: Before we start our proceedings this morning, I'd like to turn to Judge O'Malley for a motion. [00:00:07] Speaker 03: I have the pleasure today of moving the admission of Ryan Iwahashi, who is a member of the bar and is in good standing with the highest court of the state of California. [00:00:17] Speaker 03: I have knowledge of his credentials. [00:00:20] Speaker 03: In fact, I have intimate knowledge of his credentials because he is my current law clerk and has been for the last 18 months. [00:00:27] Speaker 03: Ryan was a graduate of Berkeley Law School. [00:00:31] Speaker 03: and also has both a bachelor's and a master's in computer science, so he is really just one of the smartest people that I've known in this area, and I've been very happy to work with him. [00:00:46] Speaker 03: Brian's also a wonderful guy, even if he's desperate to get back to California and out of the heat here in DC. [00:00:54] Speaker 03: We have a lot to congratulate Ryan for not just joining our bar today, but moving on back to California, back to Gibson Dunn, and he is here with his wife. [00:01:07] Speaker 03: Where is she? [00:01:08] Speaker 03: Where's Mabel? [00:01:09] Speaker 03: And Mabel is going to have a baby girl. [00:01:12] Speaker 03: Well, they're both going to have a baby girl. [00:01:16] Speaker 03: So a lot of congratulations to Ryan. [00:01:18] Speaker 03: So I move his admission and the honorary admission of their baby girl to the bar. [00:01:25] Speaker 00: Do I take a vote? [00:01:28] Speaker 02: If Judge Newman doesn't mind my speaking on her behalf, we enthusiastically grant the motion. [00:01:37] Speaker 02: And this is a first on allowing babies into the Finals. [00:01:40] Speaker 02: We're particularly enthusiastic about that. [00:01:43] Speaker 01: Congratulations. [00:01:54] Speaker 03: Welcome. [00:01:58] Speaker 02: We now turn to our first case this morning, 14-1602, Personal Web Technologies versus EMC. [00:02:09] Speaker 02: Mr. Zalander? [00:02:24] Speaker 05: May it please the court? [00:02:26] Speaker 05: Those six IPR proceedings are consolidated here. [00:02:28] Speaker 05: I would like to focus my argument today on the legal issues raised by one, the IPR on the 791 patent. [00:02:35] Speaker 05: And if I have time, I'll also briefly address the 096 patent. [00:02:39] Speaker 05: Now, the new IPR proceedings are generating a substantial number of appeals, but a written decision here provides an opportunity to lessen the burden on the court going forward and to increase the accuracy and dependability of the decisions being appealed. [00:02:51] Speaker 05: by clarifying the legal rules that must govern these PTAP proceedings, including in particular the proper construction of means plus function terms under the BRI and the proper application of the rules of anticipation. [00:03:03] Speaker 05: Now regarding claim construction, [00:03:05] Speaker 05: Claim 1 recites two means plus function elements, and the PTAB misconstrued both with mirror image errors. [00:03:12] Speaker 05: Now for the first, the PTAB assumed that under the BRI, it could adopt the broadest possible structure that could perform the claim function, rather than the corresponding structure actually described in the specification. [00:03:25] Speaker 05: Now for the second, the PTAB assumed that under the BRI, it could adopt the broadest possible function that could be performed by the structure in the specification. [00:03:33] Speaker 05: rather than the function expressly recited in the claim. [00:03:36] Speaker 02: Can we start with identity means, which is where you started right? [00:03:39] Speaker 05: Yes. [00:03:40] Speaker 02: Just to pull back a minute, even if we were to agree with you on the claim construction issue here, [00:03:48] Speaker 02: Isn't it the case that even if we adopt your claim construction, the one that you were advocating, it comes out the same way because then we're into the alternative obviousness conclusions of the district, of the PTAP board. [00:04:03] Speaker 02: So if I'm right about that, why don't you tell me under an obviousness analysis using even your claim construction, which the PTAB did as an alternative, you should prevail under substantial evidence, I guess, right? [00:04:17] Speaker 02: That's where we can end up in the identity means, not withstanding your argument that this is a legal issue and this has to do with global questions about the AIA, right? [00:04:27] Speaker 05: I don't believe that's right, Your Honor, because what the PTAP found, now the obviousness analysis for the 791 essentially consists of the finding that there are no holes to fill, and there was a brief discussion about whether it would be obvious to add an MD5. [00:04:44] Speaker 05: So that's the point EMC says, well, there's nothing more to see here. [00:04:50] Speaker 05: Well, the MD5 was in the prior arc, right? [00:04:53] Speaker 05: That's absolutely right. [00:04:54] Speaker 05: And the MD5 is one part of what is disclosed in the specification. [00:04:59] Speaker 05: Now EMC agreed, this was EMC's proposal, and we agreed that the corresponding structure is, quote, the mechanism for calculating a true name disclosed in figures 10a and 10b. [00:05:11] Speaker 05: Now that's in the specification columns 12 to 14, and if you look at 14 in particular, that's where it discloses this mechanism for calculating the true name. [00:05:23] Speaker 05: Now 10a is one step within 10b, and 10a involves the MD5. [00:05:29] Speaker 05: That's what we're calling the cryptographic hash. [00:05:33] Speaker 05: Now 10B discloses, and this is one embodiment, it starts at step 216, goes down to step 218 is 10A, and on the other side is the recursive MD5, essentially. [00:05:46] Speaker 05: And so our position is that the claim construction requires, just as the MC agreed, 10A and 10B. [00:05:54] Speaker 05: So there is no discussion anywhere in the obviousness analysis of that recursive functionality. [00:05:59] Speaker 05: That is clearly under the under the under and micro microchemical and Donaldson that is clearly in fact the specification makes clear column 1439. [00:06:10] Speaker 05: This is the preferred embodied 10a and 10b together. [00:06:17] Speaker 05: So there is no obviousness analysis that covers that. [00:06:22] Speaker 05: Now, even if that were true though, even if identity means were okay, you still have the existence means. [00:06:28] Speaker 05: That's the very next element. [00:06:30] Speaker 05: The existence means says, and in the institution decision, the PTAB said, this is, is that right? [00:06:36] Speaker 05: It said, for determining whether a particular data item is present in the system by examining the identifiers of a plurality of data items. [00:06:44] Speaker 05: Now, the PTAB acknowledged, at the hearing it said, it sounds like the dispute here is about what is the proper scope of the function under the BRI. [00:06:53] Speaker 05: That's it, A1069. [00:06:55] Speaker 05: Then in the final written decision, A53, it rejected our argument because it was, quote, based on an overly narrow claim construction, and then held, quote, the claimed function associated with the existence means simply encompasses determining whether a file exists in a registry or table. [00:07:13] Speaker 05: So it effectively read out the system and plurality of an identifier's elements from the function. [00:07:21] Speaker 02: Now, and what it did was, here, well, before it looked... Can I just see if I'm understanding your argument right? [00:07:29] Speaker 02: There are a lot of issues presented by this appeal, which my sympathies to you and also to us as well. [00:07:35] Speaker 02: The board, the PTAB, except for the one sentence that you've decided to ask, the PTAB used the word system consistently, right? [00:07:44] Speaker 02: Am I wrong about that? [00:07:46] Speaker 02: I mean, the PTAB was saying in the system, and then your argument is that at some point in the game, they have this quote that says, in a table, a registry. [00:07:55] Speaker 02: So they changed their claim construction. [00:07:57] Speaker 02: Is that what you're telling us? [00:07:58] Speaker 05: Well, the PTAB did talk about system. [00:08:01] Speaker 05: Now, in our position, it was saying two different things. [00:08:04] Speaker 05: It was basically, the evidence was that, is this object at a particular location in a file? [00:08:11] Speaker 05: And we have lots of testimony from their experts saying, well, it doesn't tell you what's in the system, it tells you what's in the file. [00:08:18] Speaker 05: Now, the PTAP did talk about system, but I would point the court to particularly examining a plurality of identifiers. [00:08:26] Speaker 03: That is nowhere. [00:08:27] Speaker 03: So your view is that more than one can't be encompassed within the phrase plurality? [00:08:33] Speaker 05: Oh, more than one is, but your honor, what the PTAB did, after construing the term this way, and what it did, it looked at the specifications and said, well, what we see a structure here is a true file registry, which is a registry of true names. [00:08:49] Speaker 05: And then it looked at Woodhill and it said, well, we've got here a database that has a lot of identifiers in it. [00:08:57] Speaker 05: So therefore, that's the same thing. [00:09:00] Speaker 05: But this declaim doesn't call for a registry with multiple identifiers, with more than one identifier. [00:09:06] Speaker 05: It calls for determining in the system by examining the identifiers of a plurality of data items. [00:09:17] Speaker 05: In other words, the function is [00:09:19] Speaker 05: is comparing more than one data item. [00:09:23] Speaker 05: And the PTAB found, this is at 54 in its written decision, it found that Woodhill satisfied this because it compared an identifier to its counterpart, which is how Woodhill works. [00:09:37] Speaker 05: Woodhill doesn't look at a whole bunch of identifiers. [00:09:39] Speaker 05: It wants to decide, has this particular part of this particular file changed? [00:09:44] Speaker 05: And it decides that by going to the file. [00:09:49] Speaker 05: going to the right offset location in the file, and then comparing the current identifier with the one that's found there. [00:09:59] Speaker 05: If they're different, it's a one-to-one comparison. [00:10:02] Speaker 05: It's not a plurality comparison. [00:10:04] Speaker 05: If they're different, it swaps them. [00:10:06] Speaker 05: If they're the same, it does nothing. [00:10:07] Speaker 02: Okay, this is where, I mean, this is sort of squishing to issues. [00:10:11] Speaker 02: I mean, you made this very clearly, and I understand why, as a claim construction issue. [00:10:16] Speaker 02: I think now you're moving into an area which you really didn't press, which is whether or not there's substantial evidence to support the anticipation finding on this, right? [00:10:25] Speaker 02: I mean, am I parsing them the wrong way? [00:10:28] Speaker 02: Am I missing something? [00:10:29] Speaker 02: I mean, this isn't really a claim construction argument then with regard to what's in Woodhill. [00:10:33] Speaker 02: It seems more of just a substantial evidence question on anticipation. [00:10:37] Speaker 05: If the court wants to look at it as a substantial evidence question, it can, but I do think this is a claim construction issue because the point is that the court first said this is what the claim encompasses and then it found something that encompassed this [00:10:53] Speaker 05: this construction in the prior art. [00:10:56] Speaker 05: So the point about describing Woodhill is more to show you that it was harmful, that the claim construction was harmful. [00:11:03] Speaker 05: Because in fact, Woodhill never, the PTAP never asked, does Woodhill compare a plurality of identifiers? [00:11:12] Speaker 00: It never asked that question. [00:11:12] Speaker 00: We would then have to agree that BRI doesn't apply. [00:11:17] Speaker 00: Is that right, in order to accept your argument? [00:11:20] Speaker 05: Oh, not at all, Your Honor. [00:11:21] Speaker 05: The BRI does apply. [00:11:23] Speaker 05: And in fact, if you look at Donaldson, the court in Donaldson said, yes, the BRI applies to means plus function claims. [00:11:31] Speaker 05: And here's how it works. [00:11:32] Speaker 05: It said the broadest reasonable interpretation is the one mandated by the statute. [00:11:37] Speaker 05: And in NRA TELUS AG, this court held that the PTO, under the broadest reasonable interpretation, [00:11:44] Speaker 05: could not rewrite a function based on the structure and specification, which is what happened here, nor can it adopt a function different from that expressly recited in the claim. [00:11:52] Speaker 05: In other words, the BRI is governed by statute, and that's what this Court has clearly held, and the PTAB just simply got that wrong. [00:12:00] Speaker 05: It thought, well, we're doing the broadest reasonable here, so therefore I'm not bound by what's in the specification. [00:12:06] Speaker 05: In fact, that's explicitly what it held at A45 with respect to the identity means. [00:12:10] Speaker 05: You can read that. [00:12:11] Speaker 05: It gave as the reason for its construction that there was no requirement to construe the term to cover the structure disclosed in the specification. [00:12:20] Speaker 05: And that's just flat wrong under the law. [00:12:22] Speaker 03: But doesn't the patent itself describe the structure? [00:12:25] Speaker 03: Now we're talking about the existence means, but as your friend on the other side points out, the patent does describe [00:12:34] Speaker 03: looking for an entry for the true name and the true file registry. [00:12:39] Speaker 03: And that's as it's describing step F232. [00:12:44] Speaker 05: That's exactly right. [00:12:45] Speaker 05: And we agree with the construction of the structure. [00:12:52] Speaker 05: But the point is that the PTAB did what the court said couldn't be done until it's AG. [00:12:57] Speaker 05: It's the same thing. [00:12:57] Speaker 05: It looked at the structure and then said, well, based on the structure, what's the broadest possible claim, the broadest possible functional language that makes sense? [00:13:07] Speaker 05: But what you need to do is you need to have the structure and you need to have the function. [00:13:11] Speaker 05: So you need to have a structure. [00:13:12] Speaker 05: You need to have a file with a plurality of identifiers in it. [00:13:18] Speaker 05: And then you have to have the function being satisfied, whereas the reference is disclosing what's in the system based on an examination of a plurality of identifiers. [00:13:29] Speaker 05: So essentially the court, it correctly looked at the right structure, but it never found [00:13:35] Speaker 05: that that structure met up with the right function. [00:13:43] Speaker 05: If I could briefly turn to anticipation, there's a couple issues there. [00:13:46] Speaker 05: I don't know if I'll have time to get to both, but the first is misapplication of the rule of net money in. [00:13:52] Speaker 05: Now, this is for claim 41. [00:13:56] Speaker 05: Claim 41 requires accessing a data item using the identifier, whereby accessing further encompasses [00:14:04] Speaker 05: determining whether the data item is present and then fetching it if it's not present. [00:14:11] Speaker 05: Now, what the PTAB did was it said the audit procedure satisfies accessing, now that's described in column 18 of Woodhill, and the backup procedure satisfies determining and fetching. [00:14:24] Speaker 05: But the PTAB even recognized that the audit procedure, which it said access, comes after the backup procedure, which it said determined and fetched. [00:14:32] Speaker 05: So, A, it doesn't make sense, but B, under Net Money In, you can't combine these distinct functions. [00:14:40] Speaker 05: Now, with the PTAB help, it considered this issue as a legal matter, and it said, no, we can, Net Money In is okay here because the specification says that these distinct functions, quote unquote, can operate with other functions to form one unitary computer program. [00:14:58] Speaker 03: But isn't there a distinction between that money and in that circumstance the protocols were mutually exclusive and that's not what we're talking about here. [00:15:08] Speaker 05: I think we are, in fact, what we're talking about here is even worse because the protocols not only are different, they come in the reverse order. [00:15:15] Speaker 05: But anyway, the point of Net Money In, the fundamental point, now the mutually exclusive, Net Money In did note that in a footnote, but that wasn't the basis of the holding. [00:15:24] Speaker 05: The basis of the holding is that the elements need to be arranged as in the claim. [00:15:29] Speaker 05: And here they're clearly not. [00:15:31] Speaker 05: And furthermore, the idea that what the PTAB said was the sort of critical question was whether one computer program could run these separate functions. [00:15:40] Speaker 03: But they need to be arranged as in the claim if, in fact, the arrangement makes a fundamental difference, right? [00:15:46] Speaker 03: That's right. [00:15:46] Speaker 03: I mean, if the arrangement really doesn't matter for how the patent operates, unlike Net Money In, that just taking that sort of general concept from one case and then importing it to another doesn't necessarily work if, in the second case, the arrangement isn't critical to the operation of the system. [00:16:09] Speaker 05: Well, I think the arrangement is critical here. [00:16:10] Speaker 05: How can you determine something, determine something as local if you haven't first accessed it? [00:16:17] Speaker 05: So, I mean, this is even, this to me is even stronger than net money in, because this is a case where it's like the ingredients, you know, where you have to do step one, step two, step three. [00:16:26] Speaker 05: And they're not disclosed that way. [00:16:29] Speaker 05: There's no question. [00:16:30] Speaker 05: And if the PTABS rule is right, that the point is you look for whether one computer program can do it, then you could combine procedures from a startup operation and a shutdown operation because they both are run by a Windows operating system. [00:16:44] Speaker 05: So that just can't be the right deal as well. [00:16:47] Speaker 05: If I can address one more issue very quickly, and that is what we're calling the Therasense error, the crediting a hypothetical embodiment. [00:16:54] Speaker 05: And this is with respect to the accessing a data item, which the PTAB assumed in the claim I just talked about. [00:17:00] Speaker 05: But Therasense requires either express or inherent. [00:17:04] Speaker 05: And I'm sorry, I didn't realize that. [00:17:08] Speaker 05: Why don't you finish your point? [00:17:10] Speaker 05: And there's neither express nor inherent. [00:17:14] Speaker 05: teaching of access using Identifier. [00:17:16] Speaker 05: And what the PTAB held was that there was no need to explain because it was old and well known. [00:17:21] Speaker 05: That's at 67 and 68. [00:17:24] Speaker 05: But that is not a proper anticipation analysis. [00:17:28] Speaker 02: Okay. [00:17:28] Speaker 02: Thank you. [00:17:28] Speaker 02: We'll restore three minutes of rebuttal and we'll add three minutes to Mr. Lee's time. [00:17:32] Speaker 02: Thank you very much. [00:17:33] Speaker 02: Thank you. [00:17:40] Speaker 04: Good morning. [00:17:42] Speaker 04: May it please the court. [00:17:43] Speaker 04: My name is Bill Leen. [00:17:45] Speaker 04: Together with my partner Cindy Breland, I represent EMC and VMware. [00:17:50] Speaker 04: There are actually no legal issues that the panel is required to address to resolve this appeal. [00:17:57] Speaker 04: All of the issues can be resolved on a substantial evidence basis. [00:18:00] Speaker 04: And what I'd like to do is very quickly run through why and then come back to identity means, existence means, and claim 41, if that's all right with the panel. [00:18:10] Speaker 04: The reason I say that there are no legal issues is the following. [00:18:13] Speaker 04: For identity means there is a factual finding that Woodhill plus MD5 renders the claims obvious. [00:18:21] Speaker 04: The only argument that has been made by personal web in response to that is, but board didn't find that Woodhill plus MD5 taught a hash of hashes. [00:18:33] Speaker 04: But for claim one, that's not required and we know for three reasons. [00:18:38] Speaker 04: One, the patent says it's not required. [00:18:40] Speaker 04: two, their experts said it was not required. [00:18:43] Speaker 04: And three, those are the two reasons based upon what is in the intrinsic evidence. [00:18:53] Speaker 04: Those two reasons by themselves demonstrate that the hash of hashes is not required. [00:19:00] Speaker 03: So are you saying that for purposes of the obviousness analysis, the claim construction is irrelevant? [00:19:05] Speaker 04: Yes. [00:19:05] Speaker 04: For this reason, Your Honor, [00:19:07] Speaker 04: what the board said. [00:19:08] Speaker 02: We're talking about identity. [00:19:10] Speaker 02: Just to be clear, we're talking about identity means. [00:19:11] Speaker 04: Yes, correct. [00:19:12] Speaker 04: Just talking about identity means. [00:19:14] Speaker 04: So for identity means, there is an alternative finding or alternative holding, which was Woodhill plus MD5, which is undisputedly an identity means. [00:19:25] Speaker 04: It's preferred embodiment, renders the claim obvious. [00:19:28] Speaker 04: The only response, which is a page nine, the reply is that it doesn't disclose the hash of hashes. [00:19:34] Speaker 04: And I said there are three reasons that doesn't work. [00:19:36] Speaker 04: One is the patent. [00:19:37] Speaker 04: Two is what their expert conceives. [00:19:40] Speaker 04: And the third is the fact that claim 19, which is dependent from claim one, actually claims a hash of hashes. [00:19:49] Speaker 04: So the broader claim one, applying claim differentiation principles, would be broader than just a hash of hashes. [00:19:58] Speaker 02: I actually thought the answer to Joe Malley's question might just be, and maybe it's just my simplistic analysis, is that I thought the board, in reaching its alternative obviousness conclusions, relied on the claim construction of the other side in terms of the cryptographic stuff. [00:20:15] Speaker 02: So I think it's not a question of ignoring claim construction for obviousness. [00:20:19] Speaker 02: It's just saying they applied their claim construction and still reached the obviousness conclusion. [00:20:24] Speaker 04: Your Honor, you could certainly articulate it that way. [00:20:26] Speaker 04: I guess another way to say it is, [00:20:28] Speaker 04: MD5 is an identity means within their claim construction, indisputably. [00:20:33] Speaker 04: So that, Your Honor, if that was your question, the answer is their claim construction identity means includes MD5. [00:20:41] Speaker 04: MD5 is what's been combined with Woodhill to render it obvious. [00:20:44] Speaker 04: That's a substantial evidence question. [00:20:47] Speaker 04: For existence means there was no rewriting of the claim interpretation. [00:20:53] Speaker 04: At A-20 you will find the board's claim interpretation where they define the function and they define the structure. [00:21:01] Speaker 04: When you get to page A-55, they apply that claim interpretation to Woodhill. [00:21:08] Speaker 04: And what they do is not redefine the claim interpretation. [00:21:13] Speaker 04: They simply take what they did at page A-20 and say, the structure includes step S-232. [00:21:20] Speaker 04: None of us disagrees with that. [00:21:22] Speaker 04: Step S232 is looking in the true file registry. [00:21:28] Speaker 04: And then it says, Woodhill does just that. [00:21:31] Speaker 04: So they've taken the function they've defined [00:21:34] Speaker 04: they've taken the structure, which we actually both agreed upon. [00:21:37] Speaker 04: And they said, S232 is looking up in a true file registry, and Woodhill does that. [00:21:44] Speaker 03: But didn't it seem like they sort of went backwards here? [00:21:48] Speaker 03: They said, we're going to find a structure, and then we're going to say that the function is whatever that structure would get us to? [00:21:54] Speaker 04: Your Honor, I think that's the way to try to be frank. [00:21:56] Speaker 04: But I think if you actually follow their logic, which is start to page 820, where they're actually doing the claim interpretation, [00:22:03] Speaker 04: And then when they get to S55, what they're doing is taking that claim interpretation and trying to deal with the competing contentions of the two parties as to whether Woodhill satisfies or not. [00:22:14] Speaker 04: So they say, here's the function, here's the structure. [00:22:18] Speaker 04: And the structure, S232, is looking up the true file registry. [00:22:25] Speaker 04: But they actually made findings. [00:22:28] Speaker 04: that are completely inconsistent with what personal web represents to you. [00:22:32] Speaker 04: In terms of looking broadly through the system, if the court turns to column 8, line 63, and this is a portion of the board expressly arrived at the lidocon in Woodhill. [00:22:51] Speaker 04: This is at A2841 in the bottom right-hand column. [00:22:57] Speaker 04: Woodhill says, in this way, duplicate. [00:23:00] Speaker 02: I'm sorry. [00:23:00] Speaker 02: You're looking at 790. [00:23:01] Speaker 02: What are we looking at? [00:23:03] Speaker 02: 196 patent, Your Honor. [00:23:06] Speaker 04: Column 8. [00:23:10] Speaker 04: It's 828.41. [00:23:14] Speaker 04: And if you look at the two important parts that I'd like to draw the Court's attention to. [00:23:17] Speaker 04: In column 8, at line 63, you will see, in this way, duplicate binary objects. [00:23:27] Speaker 04: even if resident on different types of computers in a heterogeneous network can be recognized from their identical binary object identifiers. [00:23:37] Speaker 04: So you're looking across the system in a heterogeneous network. [00:23:42] Speaker 04: And then if you turn back just to A2838, and the board specifically relied upon that in comparing the function to the function of Woodhill. [00:23:54] Speaker 04: If you turn back to [00:23:56] Speaker 04: 2838 to column 2 of Woodhill to line 33 and right after the parenthetical 4 parenthetical, it describes Woodhill as comparing the current value of the binary object identifier associated with a particular binary object to one or more previous values of the binary object identifier associated with a particular binary object. [00:24:27] Speaker 04: The board did ask, this is a substantial evidence question we submit. [00:24:31] Speaker 04: It defined the claim interpretation, function, structure. [00:24:35] Speaker 04: It then talked about, when you get 30 pages later, the performance of the function and referred specifically to Colony. [00:24:43] Speaker 04: And then it said, now let's look at the structure that performs this. [00:24:46] Speaker 04: It specifically disclosed in Woodhill. [00:24:49] Speaker 04: And all they did with the true name registry is to say, [00:24:52] Speaker 04: The disclosed structure is a true name registry. [00:24:55] Speaker 04: I can compare that structure to Woodhill. [00:24:59] Speaker 04: It's there. [00:25:00] Speaker 03: It's a substantial evidence finding, but it also is... Is there a substantial difference between looking at one location to see if something is there versus looking at a totality of a system to see if something's there? [00:25:13] Speaker 04: Well, two responses, Your Honor. [00:25:17] Speaker 04: I don't think either contends you have to look at the totality of the system. [00:25:20] Speaker 04: The patent itself suggests, and their experts have said, you wouldn't look to it without the system. [00:25:25] Speaker 04: But you might look at more than one location, and the board acknowledged that. [00:25:28] Speaker 04: And that's one of the reasons they referred to column A, line 63. [00:25:33] Speaker 04: So in turn, to accept that, you have to look at more than one location. [00:25:40] Speaker 04: Both column two and column eight tell you that you do. [00:25:43] Speaker 03: And then the fight... But it still seems that Woodhill is contemplating looking at a particular location. [00:25:50] Speaker 04: It's looking at a... Versus a broader search. [00:25:52] Speaker 04: It's looking at, actually in a specific embodiment, they look at a location on a file. [00:25:59] Speaker 04: But when you get to the summary of the invention at column two, they're looking at one or more previous values. [00:26:05] Speaker 04: And then you get a heterogeneous network economy. [00:26:09] Speaker 04: And even Dr. Dewar, their expert, concedes that in the preferred embodiment, when you go to the true file registry, you're looking at a subsection of the true file registry. [00:26:21] Speaker 04: You're not looking throughout the true file registry. [00:26:23] Speaker 04: It would make no sense to do that. [00:26:25] Speaker 04: That's what the board was addressing when it addressed existence means. [00:26:31] Speaker 04: As we say, I think [00:26:32] Speaker 04: Identity means Woodhill plus MD5. [00:26:35] Speaker 04: Existence means focusing on A20 to A55. [00:26:40] Speaker 04: Our substantial evidence questions, but the board, we also guess, got it correctly. [00:26:46] Speaker 04: If I turn to claim 41 and this question about backup, audit, restore, this is a substantial evidence question as well. [00:26:58] Speaker 04: And I think this is a place where [00:27:01] Speaker 04: If I could draw the panel's attention to A-79, which is the board's opinion, I think, Joshua Mallard, to go to your question about the order of events, you'll actually see that they didn't reverse the order of events. [00:27:18] Speaker 04: In Woodhill, there is, Woodhill itself is largely a backup procedure. [00:27:26] Speaker 04: But it has three different components. [00:27:27] Speaker 04: It has a backup initially, then it has an audit [00:27:31] Speaker 04: then it has a restore. [00:27:34] Speaker 04: And the idea that the board got it reversed is simply wrong. [00:27:38] Speaker 04: And if you start at 879, and I apologize for going through in detail, but if I take you to four different sentences, I think you'll see that they got it right. [00:27:50] Speaker 04: They got it in the right order. [00:27:51] Speaker 04: They got what Woodhill did correctly. [00:27:53] Speaker 04: So at 879, if you look at the last sentence of the first [00:27:58] Speaker 04: last partial paragraph. [00:28:00] Speaker 04: It begins in its reply. [00:28:03] Speaker 04: You will see at the end, it cites GMC's reply. [00:28:09] Speaker 04: That is actually the reply citing for the restore function. [00:28:14] Speaker 04: Backup, audit, restore. [00:28:17] Speaker 04: And then what the board does is the following. [00:28:20] Speaker 04: In the next paragraph that begins according to Woodhill, it describes the first backup procedure. [00:28:29] Speaker 04: But then if I turn you to page A80, and I look at the last sentence of the first paragraph, it begins, therefore, therefore if a binary object ever was lost or destroyed at an entire site, e.g. [00:28:46] Speaker 04: disk drive 19 on local computer or remote backup file server 12, Woodhill indicates that a copy of the binary object stored in another storage area may be copied to that site [00:28:59] Speaker 04: and it cites column nine lines from 39 to 45, that is the restore. [00:29:05] Speaker 04: You've backed up, you've now done an audit, you find out there's a problem, lost, destroyed, and you restore. [00:29:14] Speaker 04: And column nine, line 39 to 45, is the portion of Woodhill that talks about restore. [00:29:20] Speaker 04: In the next two paragraphs, you'll see that the board specifically refers to the data being lost [00:29:28] Speaker 04: destroyed or no longer present. [00:29:31] Speaker 04: Well, that only happens if you've backed up the first time. [00:29:34] Speaker 04: You've audited to find out, and then you restore. [00:29:37] Speaker 04: And both of the next two paragraphs are describing what Woodhills discloses about restoring data that was initially backed up. [00:29:44] Speaker 04: So the argument that the board got it absolutely in reverse is just inconsistent with what Woodhills said. [00:29:53] Speaker 04: Because Woodhills says, we [00:29:56] Speaker 04: back up the audit we restored if lost. [00:29:59] Speaker 04: The board specifically went through the same discipline and as a factual matter found that Woodhill discloses exactly what is claimed in Claim 41. [00:30:13] Speaker 04: Again, it's substantial evidence but it's correct as a matter of what Woodhill says [00:30:17] Speaker 04: And it's surely correct. [00:30:19] Speaker 02: I may have this confused. [00:30:20] Speaker 02: There were so many pieces to this case. [00:30:21] Speaker 02: But I recall that the board relied extensively on Dr. Clark's testimony in combination with what was disclosed in Woodhill to reach the result it did with regard to accessing. [00:30:31] Speaker 02: Am I getting this confused with another patent? [00:30:36] Speaker 04: They relied on Dr. Clark for accessing as well as other patents. [00:30:39] Speaker 04: But in this particular section, Your Honor, what you'll see is that what they relied on here is actually [00:30:45] Speaker 04: the disclosure of Woodhill. [00:30:47] Speaker 04: For the issue that was raised before the panel this morning, they did rely upon Dr. Clark. [00:30:53] Speaker 04: What they said consistently was we rely upon Dr. Clark because his testimony is more consistent with the disclosure of the prior art as we read the prior art. [00:31:03] Speaker 04: It wasn't just we believe A, but not B. It was looking at this issue on this piece of prior art, we find his testimony to be more consistent with that. [00:31:14] Speaker 04: But on the issue that [00:31:15] Speaker 04: where this Claim 41 issue, the pages A79 to 81 in Woodhill resolve them because it's in the prior art, it's what the board said, and the idea that they got it reversed is just inconsistent with what's said here. [00:31:32] Speaker 04: Very quickly, let me just address the fair sense and that money in issues. [00:31:39] Speaker 04: We don't dispute that those are holdings of the court, but the holdings don't apply. [00:31:44] Speaker 04: because the board found as a factual matter they didn't apply. [00:31:48] Speaker 04: They found consistently for Woodhill, for Cantor, for Langer, that they all disclosed unitary systems that were intended to work together. [00:32:00] Speaker 04: And in fact, the board noted that in the 791 patent, the system had two components, calculating a true name and then a true name file registry and what you would do with it. [00:32:11] Speaker 04: They were part of the same system. [00:32:14] Speaker 04: On the net money end issue, without a doubt the decision itself says in the footnote that the protocols were internally or mutually inconsistent. [00:32:26] Speaker 04: That would preclude combining them. [00:32:29] Speaker 04: What the board said here was that principle doesn't apply because these are all part of a single system. [00:32:36] Speaker 04: And the same is true for TheraSense. [00:32:39] Speaker 04: TheraSense, we don't dispute this as a legal proposition that you can't have a hypothetical [00:32:44] Speaker 04: a hypothetical embodiment of the prior art. [00:32:49] Speaker 04: What it doesn't say is that every embodiment of a particular piece of prior art is hypothetical. [00:32:54] Speaker 04: What the board found for Woodhill, what the board found for Cantor, and what the board found for Langer was they were actual embodiments that were actually disclosed to do precisely the same thing. [00:33:10] Speaker 04: Before my time, let's just address one more item that wasn't raised, and that's the question of the data item and of the 096 patent. [00:33:18] Speaker 04: And what I'd like to do is, while it's been argued as a legal issue, I'd like to disclose by saying why it also is a factual issue that is determined by substantial evidence. [00:33:31] Speaker 04: The board's determination of [00:33:34] Speaker 04: what a data item was, was the collection of inner files in Cantor. [00:33:39] Speaker 04: That's what they found as a matter of fact. [00:33:43] Speaker 04: There is no doubt that that collection of inner files is a collection of non-overlapping parts, which is what the patent says, and a sequence of bits. [00:33:53] Speaker 04: That's what the board found. [00:33:55] Speaker 04: The only argument made to you is that the claim should be construed to not only require no overlapping parts, but also no intervening gaps [00:34:05] Speaker 04: That would be incorrect legally, but it doesn't matter. [00:34:07] Speaker 04: Because what the board found to be the data item, which is the collection of interfiles, has no intervening parts, no overlapping parts, no intervening parts, no overlapping gaps. [00:34:20] Speaker 04: So again, even if you accepted the claim interpretation argument, which we believe is incorrect, [00:34:28] Speaker 04: factually, the fact the findings of the board still result in the claims being invalid. [00:34:41] Speaker ?: Thank you. [00:34:50] Speaker 05: Thank you. [00:34:53] Speaker 05: I may quickly [00:34:54] Speaker 05: On that last issue that was just addressed, I would just say this. [00:34:58] Speaker 05: Here's the quote from 469. [00:35:01] Speaker 05: The parts or files make up the sequence, even with metadata included between the parts. [00:35:07] Speaker 05: So that was the court's finding. [00:35:09] Speaker 05: It wasn't that there was no parts between the parts. [00:35:13] Speaker 05: It was that it could ignore the parts. [00:35:14] Speaker 05: That is a legal issue. [00:35:16] Speaker 03: It said it could ignore the parts as long as it found that there was a sequence that was on either end, either side of the parts, right? [00:35:24] Speaker 05: Right. [00:35:25] Speaker 05: That's right. [00:35:25] Speaker 05: But I mean, and that's the legal question. [00:35:28] Speaker 05: Can you have a sequence with intervening non-sequenced parts? [00:35:32] Speaker 05: And that's what the court said. [00:35:34] Speaker 05: And I think the key there is the word consisting of. [00:35:37] Speaker 05: That's a term of art, the same in the PTO as anywhere else, and it excludes the intervening parts that the PTAB said could be included. [00:35:45] Speaker 05: Now, with respect to the issue of the net money in issue, [00:35:50] Speaker 05: And counsel says that it was really talking about the restore. [00:35:54] Speaker 05: I would just point the court to 79 in the appendix. [00:35:57] Speaker 05: And here's the title. [00:35:59] Speaker 05: Woodhill's backup procedure discloses the determining and fetching elements recited in claim 41. [00:36:06] Speaker 05: The court did not look to the restore. [00:36:09] Speaker 05: And figure 5j shows the restore and it shows step one, get the object, step two, restore, step three, calculate the identifier. [00:36:20] Speaker 05: So Woodhill does not teach using the identifier for that. [00:36:24] Speaker 05: One more, if I may very quickly address this column two line where it says one or more previous values suggesting that well maybe they're talking about a plurality of identifiers. [00:36:37] Speaker 05: That's not the case. [00:36:38] Speaker 05: It's loose language here, but if you read it, it's clear. [00:36:40] Speaker 05: It means for comparing the current value of the binary object identifier. [00:36:45] Speaker 02: What line are you on? [00:36:46] Speaker 05: I'm sorry, this is column 2 of Woodhill, line 11, 12. [00:36:52] Speaker 05: It means for comparing the current value of the binary object identifier associated with a particular binary object to one or more previous values of the binary object identifier. [00:37:03] Speaker 05: associated. [00:37:04] Speaker 05: So we're talking about one identifier, it's just talking about previous values. [00:37:09] Speaker 05: So you're comparing the current with the old values. [00:37:12] Speaker 05: Now really there's only going to be one, but the point is it might have changed more than once, but you're always comparing one identifier with another. [00:37:20] Speaker 05: That's the teaching of Woodhill. [00:37:23] Speaker 05: And the heterogeneous comment from [00:37:27] Speaker 05: from column 8 that he referenced, is just saying it doesn't matter whether you open up the file on a Mac or an HP computer. [00:37:35] Speaker 05: It's going to be able to make this determination. [00:37:41] Speaker 05: With respect to the claim construction issues and the obviousness finding, I think that's looking at it backwards, that there can be no proper obviousness finding that's not based on the right claim construction. [00:37:53] Speaker 05: And the court did not consider our claim construction. [00:37:56] Speaker 05: It just considered the MD5 issue. [00:37:58] Speaker 05: On top of that, the PTAB, sorry, the PTAB, it just said there's no holes to fill. [00:38:04] Speaker 05: But we've identified a number of holes here with the net money issue, the crediting, the hypothetical embodiments, and the claim constructions. [00:38:11] Speaker 05: So I think the key point is that- You want to wrap it up? [00:38:14] Speaker 05: We'll just wrap it up. [00:38:16] Speaker 05: Yes. [00:38:17] Speaker 05: I can be done. [00:38:19] Speaker 05: Thank you. [00:38:19] Speaker 02: I always thank both counsel and the cases.