[00:00:00] Speaker 01:
The next case is High Bear Incorporated versus VM Software Corporation, 2022, 14, 43, and 44.

[00:00:11] Speaker 01:
Mr. Ostrall.

[00:00:14] Speaker 03:
May it please the court.

[00:00:15] Speaker 03:
Good morning, Your Honors.

[00:00:17] Speaker 03:
Thank you.

[00:00:17] Speaker 03:
Yes, my name is Seth Ostrall.

[00:00:19] Speaker 03:
I represent Hiber Inc., the patent owner and appellant here.

[00:00:24] Speaker 03:
This appeal is a consolidated appeal of two IPR rulings by the PTAB,

[00:00:29] Speaker 03:
invalidating all the claims of my client's patents.

[00:00:32] Speaker 03:
The IPRs are 2020, 1039, and 1040.

[00:00:38] Speaker 03:
We're asking your honors to take a second look, a fresh look, at a key claim term that we believe was misconstrued by the PTAB, which has propagated effects throughout the 103 finding by the board, which is the word inventory as used in this patent.

[00:00:58] Speaker 03:
In our view, the way the board found the word inventory to mean an itemized list, as suggested by petitioner, is so vague and broad as to essentially read whole sections of the claims out of the claims.

[00:01:13] Speaker 03:
So if we were to go through the exercise, which I'm happy to do, but we did some of this in our briefing,

[00:01:18] Speaker 03:
of essentially substituting the board.

[00:01:20] Speaker 02:
How can a broad reading of one term read other claim limitations out of the claim?

[00:01:27] Speaker 02:
Because the other claim limitations, as long as they're not inconsistent with the broad reading, just further specify what's needed.

[00:01:35] Speaker 03:
What I meant, not necessarily limitations of being read out, but clauses.

[00:01:39] Speaker 03:
Clauses of clarifying language in the claim that distinguish between the claimed inventory and a list.

[00:01:46] Speaker 02:
Well, why isn't it just

[00:01:48] Speaker 02:
an inventory, which is a very broad term.

[00:01:51] Speaker 02:
And now I'm going to tell you something else that further narrows the requirement of the particular inventory that's in the claim.

[00:01:59] Speaker 03:
When that happens, that's fine.

[00:02:02] Speaker 03:
To the extent that, for example, claim one of the 545 patent indicates that the inventory reflects the current state of the first remote storage medium, that language is still fine.

[00:02:16] Speaker 03:
What I'm suggesting is that

[00:02:18] Speaker 03:
The way the claims use the word inventory and list, those two words, they're clearly intending them to mean something different.

[00:02:25] Speaker 03:
So maybe it's worth to answer your Honor's question if I could just take a little excerpt.

[00:02:29] Speaker 03:
Now I'm going to go to the 146 patent.

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I don't know if some of your Honors have the patents themselves handy, or I can give you the appendix if you need a citation.

[00:02:38] Speaker 02:
And this is claim one of the 146?

[00:02:40] Speaker 03:
That's how much it is.

[00:02:41] Speaker 02:
It's inside your cover.

[00:02:42] Speaker 02:
Yeah.

[00:02:42] Speaker 03:
Correct.

[00:02:42] Speaker 03:
Yes.

[00:02:43] Speaker 03:
Thank you, Your Honor.

[00:02:45] Speaker 01:
Just for starters, does inventory have to have the same meaning for both patents?

[00:02:50] Speaker 03:
Yes.

[00:02:52] Speaker 03:
OK.

[00:02:52] Speaker 03:
Yes, inventory has the same meaning.

[00:02:54] Speaker 03:
So I draw your honor's attention to the second element of claim one, which says comparing at the backup server the at least one descriptor of the first inventory to a list of descriptors associated with a second inventory of electronic data stored on a backup storage medium.

[00:03:14] Speaker 03:
There's more than this, but if we just take that in isolation, the claim is clearly using the word inventory and the word list to mean something different from one another.

[00:03:23] Speaker 03:
There is a first inventory, which according to this claim,

[00:03:27] Speaker 03:
has at least one descriptor.

[00:03:29] Speaker 03:
As you may recall, a descriptor is the mathematical hash or cryptographic signature that this backup system uses to identify a chunk of data.

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It could be a file or just a chunk.

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It generates a hash and it comes out with a number.

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So that descriptor is a number.

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So that number, the first inventory from the previous element has at least one of those numbers.

[00:03:52] Speaker 03:
And that's compared to a list of descriptors which are associated with a second inventory.

[00:03:58] Speaker 03:
So there's a list that's associated with an inventory.

[00:04:01] Speaker 03:
According to the way the board and petitioner would have the court read this, that's a list of descriptors, which is unquestionably an itemized list, whatever that really means.

[00:04:12] Speaker 03:
Another issue was there's no evidence of that one.

[00:04:15] Speaker 02:
Of electronic data.

[00:04:16] Speaker 02:
Isn't that the full picture?

[00:04:16] Speaker 02:
Yes, of electronic data.

[00:04:18] Speaker 03:
So descriptors, electronic data.

[00:04:20] Speaker 03:
So a list of descriptors is an itemized list.

[00:04:23] Speaker 03:
the way any understanding in the record would indicate.

[00:04:26] Speaker 03:
That's an itemized list.

[00:04:27] Speaker 03:
So what the claim, if we substitute it in, is saying is that there's at least one descriptor of the first itemized list is being compared to an itemized list that's associated with a second itemized list.

[00:04:40] Speaker 03:
That's the result that you get by substituting the board and petitioner's interpretation of inventory, if that's all it means.

[00:04:47] Speaker 03:
And what's wrong with that?

[00:04:49] Speaker 03:
It sounds like nonsense.

[00:04:52] Speaker 03:
In other words, what I'm saying is that... To compare two lists.

[00:04:56] Speaker 03:
But that's not what the claim says.

[00:04:57] Speaker 03:
The claim says that... Well, you're comparing a descriptor.

[00:05:01] Speaker 03:
You're trying to find if that descriptor appears already on the backup device.

[00:05:05] Speaker 03:
That's what's happening in the real world.

[00:05:07] Speaker 03:
But the way the claim is written, there's a descriptor which is being compared to a list, and that list, whatever that is, that's associated with something else called a second inventory.

[00:05:18] Speaker 03:
If a second inventory is just a list, the phrase associated with a second inventory loses all meaning.

[00:05:26] Speaker 03:
It doesn't have any meaning saying a list is associated with itself.

[00:05:31] Speaker 03:
And there are other examples of that result.

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One, unless you always want to go more on that one, if we go to the 545 patent claim one, there's a similar result there, but it's perhaps more striking because there's a separate limitation.

[00:05:48] Speaker 03:
So in claim one of the 5-4-5 patent, there are two generating steps.

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So as a sub-process of the second element, there's a first step identifying the first set of files.

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And then the next step is generating at the client device a cryptographic signature value for each file in the first set of files.

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And there's some information about what that is.

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So that gives these descriptors.

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That gives a list of descriptors.

[00:06:18] Speaker 03:
The next step is generating at the client device a first inventory for the first set of files, where the first inventory reflects the current state of the first remote storage medium, and wherein the first inventory includes the cryptographic signature value generated for each file.

[00:06:34] Speaker 03:
The problem we're having is that if that first inventory is merely the itemized list of descriptors, or in this case, the cryptographic signature values, it's the same thing,

[00:06:47] Speaker 03:
then this element of generating that list is superfluous.

[00:06:51] Speaker 03:
It has no meaning because the previous step already did all of this.

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The previous step of generating a cryptographic signature value for each file already made the data.

[00:07:01] Speaker 03:
Nothing is happening in the next generating step if a first inventory is that list, is that set of data.

[00:07:09] Speaker 03:
So that element, I'll retract what I said earlier about not reading limitations out,

[00:07:14] Speaker 03:
This limitation disappears because it has no extra meaning beyond the previous limitation.

[00:07:20] Speaker 02:
That is the result in our view of the way... I'm not sure this is a coherent question, but the first generating just says, generate a hash for each item.

[00:07:33] Speaker 02:
It doesn't say put all the results into what you would call a list.

[00:07:36] Speaker 02:
So why doesn't the first inventory do that?

[00:07:40] Speaker 03:
that set of values is in any form, is a list.

[00:07:46] Speaker 03:
Within a computer, there's no, we're not talking about a shopping list here.

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So there's no list, when you go shopping, you might have bread, cheese, milk, one above the other.

[00:07:56] Speaker 03:
Within a computer, the set is the list.

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There's no special structure to the list.

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So just the mere creation of that set of,

[00:08:08] Speaker 03:
cryptographic signature values results in the same thing that is being generated according to the board's interpretation, the first inventory.

[00:08:18] Speaker 03:
What we are asking the court to look at is that the way the patent is using the term inventory, it is clearly intending to go beyond what's just these descriptors.

[00:08:30] Speaker 03:
And in our briefing, we cited at length

[00:08:33] Speaker 03:
various parts of the specification, which go into what this inventory has to have.

[00:08:37] Speaker 03:
And the reason we cited to those is not, and the reason we think that should be part of the construction is because all of those things are needed to accomplish the patent's objective of properly backing up data so that it can be restored.

[00:08:52] Speaker 03:
So for example, in your honor's computer, you don't just have a bunch of amorphous data.

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There's data arranged in files.

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The files have file names.

[00:09:02] Speaker 03:
Those file names are in your directories.

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If your computer were to fail and you needed to restore it to the same device or another device, your honors would want the data to be back in those directories with the same file names.

[00:09:18] Speaker 03:
Just restoring a blob of data to a machine is not useful.

[00:09:22] Speaker 03:
And the patent is clearly directed and goes at length, discusses that these inventories, this inventory,

[00:09:29] Speaker 03:
is the device, is the element that is used both during the backup process to determine whether things have already been stored on the backup server, which is the point of the invention, but also during the restore process, which is what's part of claimed in the 146 patent claim one that specifically claims the restore.

[00:09:48] Speaker 03:
But implicitly, whether it's claimed or not, the whole objective of the patent would be frustrated

[00:09:54] Speaker 03:
if it was merely an amorphous blob of an inventory and that's all one got back.

[00:09:59] Speaker 03:
The device would not be restored to its current state.

[00:10:02] Speaker 03:
So that's why when we went to the specification, we looked to the things that were required by this invention in order to accomplish that objective.

[00:10:12] Speaker 03:
And that resulted, for example, in a finding that the inventory must reflect the current state of the drive.

[00:10:19] Speaker 03:
The specification essentially says that.

[00:10:21] Speaker 03:
Claim one of the 545 says that.

[00:10:24] Speaker 03:
uh... and that current state of the drive has to be more and this goes to a second error that we think the board made it's not supported by substantial evidence that current state of the drive can't nearly be the descriptor because as the board is suggesting in finding that the field patent application already teaches that that can't be the descriptor because merely having descriptors again looking at the objective of here if you take a computer and you send these mathematical hashes out you can't reverse that

[00:10:54] Speaker 03:
to recreate the current state of your storage device.

[00:10:58] Speaker 03:
It's not the current state of the data.

[00:11:01] Speaker 03:
It's not the current state of the electronic data or the files.

[00:11:05] Speaker 03:
It's the current state of the storage device.

[00:11:07] Speaker 03:
The only way to restore a current state of your device is to have the information I mentioned earlier.

[00:11:14] Speaker 03:
You need to know the file names.

[00:11:15] Speaker 03:
You need to know what directories they go into.

[00:11:19] Speaker 03:
Only with that set of data can you restore the current state of the

[00:11:23] Speaker 03:
of the storage device.

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So we believe that that is the second portion of the error that the board in finding field teaches that, which it clearly doesn't.

[00:11:37] Speaker 03:
There was some issue, to be honest I have no questions about that, there was some issue about the way the specifications are worded.

[00:11:45] Speaker 03:
In terms of the

[00:11:47] Speaker 03:
There's this issue of the use of the word may in the patents, suggesting that everything that the patent says is may this, may be this, may be that is permissive, which I understand that there's case law citations on that.

[00:12:00] Speaker 03:
This patent, the way this particular patent is written, as we've shown in our briefs, practically everything is described as being made, that it may have this, even things which are undoubtedly required.

[00:12:11] Speaker 03:
So just, and we cited some of these in our brief, but just for the sake of, since I have another 30 seconds or so,

[00:12:18] Speaker 03:
In column seven, which is appendix 186 of the Joint Appendix, there are a number of citations in the beginning of each of the paragraphs about the various elements such as the communication device may include memory.

[00:12:34] Speaker 03:
The communication device has to include memory.

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It's a computerized device.

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It can't function without memory.

[00:12:40] Speaker 03:
The computer device, it says the communication device may include a processor.

[00:12:45] Speaker 03:
Well, it has to have a processor.

[00:12:47] Speaker 03:
So what we're trying to say, there's many other examples.

[00:12:50] Speaker 03:
We cited some in our brief as well.

[00:12:52] Speaker 03:
One of ordinary skill in the arts, seeing, reading this patent in total, would understand that just because it says may, that doesn't mean it doesn't have to have that.

[00:13:00] Speaker 03:
There are some things it must have that are referenced with may.

[00:13:04] Speaker 01:
As you noticed, your time is running out.

[00:13:06] Speaker 01:
And you may have two minutes for a bottle.

[00:13:12] Speaker 03:
That's permissive, Your Honor, but I will take it only.

[00:13:16] Speaker 03:
Not yet.

[00:13:16] Speaker 03:
I will save my few minutes.

[00:13:17] Speaker 01:
Mr. Pickhart.

[00:13:20] Speaker 00:
Good morning, and may it please the Court.

[00:13:22] Speaker 00:
This Court should affirm the Board's final written decisions below.

[00:13:25] Speaker 00:
On the issue of claim construction, the Board correctly interpreted the inventory term as an itemized list of electronic data.

[00:13:33] Speaker 00:
That conclusion is fully consistent with the specification of the claims.

[00:13:37] Speaker 00:
And it is also supported by board fact findings as to the meaning of inventory as reflected in the dictionary definitions that both parties submitted.

[00:13:46] Speaker 00:
Those fact findings are particularly salient here in light of the fact that the parties agreed that the inventory term had a plain and ordinary meaning in the art, and that that meaning should apply to the term as it appeared in the claims.

[00:13:58] Speaker 00:
HYBO doesn't contend that the board lacked substantial evidence for these fact findings, but instead attempts to cram four separate requirements into the term.

[00:14:06] Speaker 00:
But the specification doesn't support that.

[00:14:08] Speaker 00:
It speaks permissively of what the inventory may or may not include and describes the invention through a series of non-limiting examples.

[00:14:18] Speaker 00:
There was no error in the board's claim construction, but even if there were, as we've shown in our brief, the board nevertheless found that the four requirements that they suggest are included in the inventory were taught by the prior art.

[00:14:30] Speaker 00:
My colleague only touched briefly on the substantial evidence issue, so I'll limit my remarks to what he raised.

[00:14:36] Speaker 00:
They don't seriously engage with the substantial evidence review standard.

[00:14:41] Speaker 00:
If you look at the briefing, what they do is cite their most favorite evidence, that is their own POR, their oral arguments to the PTAB, and the declaration of their own expert.

[00:14:50] Speaker 00:
They fail to show where the board lacked evidence for the fact findings that it made.

[00:14:54] Speaker 02:
I don't remember the board's discussion, which was quite extensive, but each of the four proposed

[00:15:04] Speaker 02:
additions to a or limitations to what inventory can be but I guess I'm interested in the one about I forget what the language is but reflecting the current state of the device or something like that I Think it's reflecting the current state of the medium of the medium.

[00:15:23] Speaker 02:
So do you agree that Some language in the claims

[00:15:33] Speaker 02:
though not the word inventory, end up requiring an inventory that does reflect a current state of the medium, but just not in the term inventory?

[00:15:51] Speaker 00:
That's right.

[00:15:51] Speaker 00:
So if you look at claim one in the 545 patent, there is that where in clause in the second generating step.

[00:15:58] Speaker 00:
It recites the first inventory, and then it goes on

[00:16:01] Speaker 00:
wherein the first inventory reflects a current state of the first remote storage medium.

[00:16:07] Speaker 00:
And so our point is the board is just construing inventory.

[00:16:09] Speaker 00:
And I think the Phillips decision, which dealt with the claim term steel baffles, it said, well, the fact that steel baffles are recited is a strong indication that all baffles are not necessarily made of steel.

[00:16:23] Speaker 00:
And I think that principle applies here.

[00:16:25] Speaker 02:
And in fact, I'm sorry.

[00:16:27] Speaker 02:
I just lost my head.

[00:16:28] Speaker 02:
So 545, claim one.

[00:16:29] Speaker 00:
545, claim one.

[00:16:31] Speaker 00:
If you look at the second generating step, that's where the first inventory is first recited.

[00:16:40] Speaker 00:
That claim explicitly includes that.

[00:16:43] Speaker 00:
Of course, we showed that in our grounds of unpatentability and the board agreed with us.

[00:16:51] Speaker 00:
My point is simply that in construing inventory,

[00:16:54] Speaker 00:
the additional recitation of that element is a strong indication that inventory might sell.

[00:16:59] Speaker 02:
Does something similar appear in the 146 or not?

[00:17:03] Speaker 00:
I believe it does.

[00:17:09] Speaker 00:
With the 146 it does it for different requirements that the patent owner is urging here.

[00:17:15] Speaker 00:
So it talks about

[00:17:17] Speaker 00:
This is about midway through the receiving step, wherein the first inventory comprises at least one descriptor.

[00:17:22] Speaker 00:
And if your honor will recall, that's one of the four requirements they would ask this court to impose upon the inventory term.

[00:17:29] Speaker 00:
Again, our point is the inclusion of that expressly in claim one of the 146 patent is a strong indication that that's not necessarily part of an inventory by itself, which is the term the board was asked to construe.

[00:17:43] Speaker 00:
Anyway, I'm happy to answer any questions your honors may have.

[00:17:47] Speaker 00:
But barring that, we respectfully ask that this court confirm the board's final written decisions below.

[00:17:51] Speaker 01:
Thank you, Mr. Picard.

[00:17:52] Speaker 01:
Mr. Castro, we'll give you two minutes.

[00:17:57] Speaker 03:
Thank you, Your Honors.

[00:17:58] Speaker 03:
Let me just address that claim differentiation.

[00:18:01] Speaker 03:
Essentially, what was the claim differentiation argument that counsel just made?

[00:18:04] Speaker 03:
We addressed it in the brief, but it was raised.

[00:18:06] Speaker 03:
So let me just address it again.

[00:18:09] Speaker 03:
So in the 545 patent, this argument that the claim says generating at the client device

[00:18:16] Speaker 03:
a first inventory for the first set of files, and then it has the wherein the first inventory reflects the current state of the first remote storage medium, does not mean that not all inventories reflect the current state of the storage medium.

[00:18:30] Speaker 03:
What that is telling you is that this inventory, this first one, because the invention deals with multiple inventories, there's client inventories and backup inventories,

[00:18:40] Speaker 03:
So what the claim is telling you is that this inventory, the first one, reflects the current state of the first remote storage medium, which was established as the device that's being backed up.

[00:18:50] Speaker 03:
So it had to say that in order to establish that that's what this inventory is about.

[00:18:55] Speaker 03:
That's not to say that not all inventories reflect the current state of the first remote storage, of a remote, of a storage medium, because they do, in our opinion.

[00:19:05] Speaker 03:
And again, this was another issue that the claim specifically says that it's the state of the medium, not the files.

[00:19:13] Speaker 03:
And this is another mistake that the board made in applying the field reference by simply saying that the field reference has a descriptor.

[00:19:20] Speaker 03:
Therefore, it reflects the state.

[00:19:23] Speaker 03:
It doesn't.

[00:19:23] Speaker 03:
Descriptors don't reflect states of mediums.

[00:19:26] Speaker 03:
The same thing happens in the 146 patent.

[00:19:30] Speaker 03:
the claim one example counsel gave about descriptors, it's that descriptor.

[00:19:36] Speaker 03:
Let me see if I can find it in the time I have.

[00:19:38] Speaker 03:
At least one descriptor of the first inventory to a list of this, no, hang on, I'm sorry.

[00:19:42] Speaker 03:
Where in the first inventory comprises at least one descriptor and where in the at least one descriptor comprises a cryptographic signature and so forth.

[00:19:50] Speaker 03:
The claim has to set forth, has to explicitly state that it's established which descriptor it's talking about.

[00:19:58] Speaker 03:
This would be, for example, if you had a claim on a car, which we all know has an engine.

[00:20:04] Speaker 03:
But in the claiming, you'd have to say one car, at least one car, with at least one engine.

[00:20:09] Speaker 03:
That doesn't mean that all cars don't have engines.

[00:20:11] Speaker 03:
You're just trying to explain something about the engine.

[00:20:13] Speaker 03:
So you have to set up an antecedent basis.

[00:20:15] Speaker 03:
That's all that's happening here is setting up antecedent basis.

[00:20:19] Speaker 03:
So unless there's any further questions, I'll.

[00:20:22] Speaker 01:
Thank you, Tom.

[00:20:23] Speaker 01:
The case is submitted.