[00:00:38] Speaker 04:
We will hear argument next in 182289, intellectual ventures one versus EMC.

[00:00:51] Speaker 04:
Mr. Milken.

[00:00:59] Speaker 05:
Good morning, your honors.

[00:01:00] Speaker 05:
May it please the court.

[00:01:02] Speaker 05:
I'd like to begin today with our argument concerning the allocating limitation of claim 13, and then move on to claim construction and the other issues addressed in our brief.

[00:01:14] Speaker 05:
It's settled law that an IPR petitioner

[00:01:16] Speaker 05:
must make its case in the IPR petition.

[00:01:19] Speaker 05:
The petition must identify where specifically in the prior arts.

[00:01:24] Speaker 04:
So both petitions say something about allocating the Ocean's Store one a little bit more.

[00:01:31] Speaker 04:
The Carter one is maybe a sentence.

[00:01:34] Speaker 04:
And what they do is I'm just going to call it incorporate by reference.

[00:01:38] Speaker 04:
material that both petitions set out in discussing one of the other limitations.

[00:01:44] Speaker 04:
Why is that not enough if the substance of that material does the trick?

[00:01:51] Speaker 05:
It's not enough because the allocating limitation of claim 13 is not

[00:01:56] Speaker 05:
contained in claim one, which is the claim that the petition is discussing.

[00:02:00] Speaker 04:
No, but don't both of them say, and let's just talk about the Ocean Store one.

[00:02:03] Speaker 04:
I think maybe there's an extra two sentences or something.

[00:02:06] Speaker 04:
It says, for the reasons we described when talking about the, what's the other limitation?

[00:02:12] Speaker 05:
The assessing and the representing limitations.

[00:02:15] Speaker 04:
It refers to both of them.

[00:02:15] Speaker 04:
This is also allocating because why in the world would you decide what's available without reserving it?

[00:02:23] Speaker 05:
I think that if you're going to incorporate by reference in that fashion, then I think you must explain why this separate limitation that again is not included in claim one is either inherent in or perhaps rendered obvious by the assessing limitation or the representing limitation.

[00:02:44] Speaker 05:
And that's what the petitions didn't do.

[00:02:46] Speaker 05:
They didn't establish a link between what claim one says about assessing and representing, and then what claim 13 says about allocating.

[00:02:56] Speaker 05:
Because claim 13 also talks about assessing and representing.

[00:03:00] Speaker 05:
And so the natural inference would be that allocating is supposed to mean something different, something beyond assessing and representing.

[00:03:09] Speaker 05:
And if that's not true, if EMC's position is that's not the case, they need to explain why that's not the case and explain why, oh, allocating is sort of necessarily encompassed in this idea of assessing.

[00:03:23] Speaker 03:
Are we reviewing the strength of the petition?

[00:03:27] Speaker 03:
Are we reviewing the fact findings and the final written decision?

[00:03:33] Speaker 05:
What we're asking this court to review is the board's decision to find Claim 13 unpatentable based on petitions that have no substantive discussion of the limitation at all.

[00:03:46] Speaker 05:
The board did cite things for its discussion of the allocating limitation and the final written decisions.

[00:03:52] Speaker 05:
But the things it cited were arguments and evidence that EMC had presented for the first time in reply.

[00:03:59] Speaker 05:
And our point is,

[00:04:01] Speaker 05:
That's improper under the statute.

[00:04:03] Speaker 05:
Section 312A3 requires that the arguments and the evidence be in the petition.

[00:04:09] Speaker 05:
And then the PTO's implementing regulation says with even more specificity that the petitions have to specifically identify where in each prior art reference the disclosure is found.

[00:04:21] Speaker 05:
And that's what was lacking here.

[00:04:23] Speaker 05:
And so I'm not sure if this was encompassed in your honor's question,

[00:04:28] Speaker 05:
Our quarrel is not with the institution decision with the finding that EMC had shown that at least one claim was a reasonable probability that it was unpatentable.

[00:04:40] Speaker 05:
Our quarrel is with, in the final written decision, finding claim 13 unpatentable based on this ground that simply wasn't explained in the petition.

[00:04:55] Speaker 05:
to touch a little more on what was exactly said in the petitions.

[00:05:00] Speaker 05:
In the Carter petition, this is at appendix 828.

[00:05:03] Speaker 05:
They simply refer back to their discussion of claim one, which again, does not contain the allocating limitation.

[00:05:10] Speaker 05:
In the Ocean Store petition, this is at appendix 249.

[00:05:14] Speaker 05:
This is the discussion of their anticipation ground.

[00:05:23] Speaker 05:
There's no analysis other than referring back to claim one and then citing their expert's testimony.

[00:05:30] Speaker 04:
Right.

[00:05:30] Speaker 04:
And the expert testimony is, what, 1370 to 72 that they're citing?

[00:05:39] Speaker 05:
I believe that it's at appendix 1386.

[00:05:43] Speaker 04:
OK, paragraph 138?

[00:05:45] Speaker 05:
Yes, Your Honor.

[00:05:47] Speaker 03:
And that refers back to paragraphs 102 to 104.

[00:05:52] Speaker 05:
Which is a discussion, I believe, of the assessing limitation.

[00:05:56] Speaker 05:
But the expert's declaration, this paragraph 138, is essentially a copy, almost verbatim, of what is said in the petition itself.

[00:06:07] Speaker 05:
And just like in the petition, the expert does not explain the connection between the assessing and representing limitations of claim one and the allocating limitation

[00:06:18] Speaker 03:
How would you understand the substantive distinction between the allocating limitation and then the assessing and representing limitations?

[00:06:33] Speaker 03:
These are all a little bit vague, these terms, and I don't think they're precisely defined in the specification.

[00:06:41] Speaker 05:
I think we would agree with the definition of allocating that petitioners expert gave below, which was essentially you lock down a certain amount of storage resources so you know that those aren't going to be taken over by the local node and you know that you can offer these resources to the system.

[00:07:00] Speaker 05:
Whereas assessing is sort of a more passive activity of simply seeing what's available.

[00:07:06] Speaker 05:
It doesn't mean that just because you've assessed to see what's available that you necessarily have allocated something to make sure that it's going to be available.

[00:07:14] Speaker 04:
That means it's something like the car rental place says, we have seven cars available.

[00:07:18] Speaker 04:
You hang up.

[00:07:20] Speaker 04:
Right.

[00:07:20] Speaker 05:
You're not necessarily going to have one when you get there, precisely, Your Honor.

[00:07:25] Speaker 05:
And the representing limitation

[00:07:28] Speaker 05:
would, to use your honor's hypothetical, the representing limitation would be the car rental agent telling you, I can represent that I have seven cars available, and that's separate from the rental car agent's assessment of how many cars he or she has available, and also separate from the further act of, okay, you want this one car, I will allocate this car for you, and so you know it's gonna be there when you show up.

[00:07:54] Speaker 03:
Well, I was going to just ask, how do you think Ocean Store operates?

[00:08:01] Speaker 03:
I mean, doesn't it operate by managing and making available unused storage space in all these different pool devices, these nodes?

[00:08:15] Speaker 05:
The description of the OceanStore system in the reference itself is very high level, and so there are not a lot of details provided about how it operates.

[00:08:26] Speaker 03:
The reference does say that... I guess what I'm wondering is how...

[00:08:30] Speaker 03:
Would it work if it didn't lock down unused space to make it available to be a pooled device where its unused data storage space can be used by other devices?

[00:08:48] Speaker 05:
Because again, it wouldn't necessarily be.

[00:08:51] Speaker 05:
If you take Petitioner's Expert's definition of allocating as

[00:08:56] Speaker 05:
walking down storage resources so they're not available for the local node to use.

[00:09:02] Speaker 05:
OceanStore could make resources available without doing that because it could simply find, oh, we have these resources on nodes X, Y, and Z that just happen to not be in use even though they haven't been necessarily allocated for that purpose.

[00:09:19] Speaker 05:
And we can store the system's information on those nodes.

[00:09:24] Speaker 04:
Is there anything in OceanStore that deals with the possibility that in the interval of time between I've got space available and the user sending the information, the available space disappears, and then what to do?

[00:09:44] Speaker 05:
There's no discussion in the reference of how that process works, and that's sort of our point.

[00:09:50] Speaker 05:
Given how high level the description of the OceanStore system is, we know that the goal is to make

[00:09:57] Speaker 05:
storage resources of these various nodes available.

[00:10:01] Speaker 05:
But we don't know how the system does that.

[00:10:03] Speaker 05:
We don't know how they decide.

[00:10:06] Speaker 04:
The goal is to be available and actually usable.

[00:10:11] Speaker 04:
Doesn't that suggest an immediate obviousness of locking down when you're advertising something?

[00:10:23] Speaker 05:
Perhaps, but even if it does, I would dispute the premise, but even if your view is that it does suggest this allocating function where you're locking down resources,

[00:10:36] Speaker 05:
The point is, EMC needed to explain that in its petition.

[00:10:40] Speaker 05:
And because it didn't, IV was left to essentially shoot in the dark in response because we had these.

[00:10:48] Speaker 04:
So doesn't, forgive me if I'm confusing cases, doesn't EMC say, well, we didn't have to say any more than your own patent had to say in its specification for written description support.

[00:11:03] Speaker 04:
It doesn't say anything about.

[00:11:05] Speaker 04:
allocating because it's perfectly evident in a system whose function is the function of this system that you really want the storage that's advertised to be available when somebody tries to put something in it.

[00:11:22] Speaker 05:
I think that's incorrect that the petitioner's burden is somehow lessened by the fact that according to them the specification doesn't say

[00:11:34] Speaker 05:
very much about allocating.

[00:11:37] Speaker 05:
What they are trying to do, in effect, is shift the burden to us and say, oh, your specification doesn't say much about allocating.

[00:11:46] Speaker 05:
So therefore, you have to explain why allocating wouldn't.

[00:11:49] Speaker 04:
I guess, I mean, partly maybe as a matter of precedent, I tend to think of it in the sometimes this comes up in enabled anticipation.

[00:11:59] Speaker 04:
where it's, I think, a reasonably familiar point to be made that it's a little hard for the patent owner to say that this anticipatory reference is not enabled if the amount of enabling is at least as much as you find in the patent itself.

[00:12:17] Speaker 04:
Why is that not a sound, logical point about whether

[00:12:23] Speaker 04:
There's enough in the petition here to support the allocating once you have a description of the assessing for this purpose.

[00:12:32] Speaker 05:
Well, I think, Your Honor, I'd go back to the point that if that was their argument that allocating was so well known that it didn't need to be described in the specification and so it also didn't need to be described in particular much detail in their petition, they needed to say that in the petition, but they didn't.

[00:12:52] Speaker 05:
These arguments about how the specification doesn't say much about allocating and therefore we didn't say much either.

[00:12:59] Speaker 05:
Those were arguments that came up in reply.

[00:13:02] Speaker 02:
Didn't you challenge the reply as containing new arguments?

[00:13:08] Speaker 02:
And the board's response to that was that, no, these are proper rebuttal arguments.

[00:13:14] Speaker 02:
This is OK.

[00:13:15] Speaker 02:
So doesn't that undercut your argument that there had to be more in the petition?

[00:13:22] Speaker 05:
I don't think so, Your Honor, because what the board said was these arguments are fine because they are responsive to what was said in the patent owner response.

[00:13:34] Speaker 05:
They were responsive in the sense that we said

[00:13:38] Speaker 05:
The petitions don't have any explanation for why the allocating limitation is satisfied.

[00:13:42] Speaker 05:
It's not satisfied for all of these reasons.

[00:13:46] Speaker 05:
And then they came back and they said, no, you're wrong.

[00:13:49] Speaker 05:
The references do disclose allocating.

[00:13:51] Speaker 05:
And they cited new disclosures and made new arguments.

[00:13:54] Speaker 05:
That's responsive in a sense.

[00:13:56] Speaker 05:
But it's not responsive in a sense that makes a reply proper.

[00:13:59] Speaker 05:
Because if that were permitted, then a petition could simply say, Ocean Store anticipates claims 1 through 10.

[00:14:06] Speaker 05:
The patent owner could come back and say, no, it doesn't, and here's why.

[00:14:10] Speaker 05:
And then the petitioner could just introduce all of their evidence in reply.

[00:14:15] Speaker 05:
So responsiveness is necessary.

[00:14:17] Speaker 05:
It's not sufficient.

[00:14:18] Speaker 02:
That's a more extreme example, though, that you've given, right?

[00:14:20] Speaker 02:
It's a much more extreme example than what we have here.

[00:14:24] Speaker 05:
It's perhaps a little more extreme, but the fact remains that

[00:14:29] Speaker 05:
there is a limitation that was essentially ignored.

[00:14:32] Speaker 05:
They incorporated by reference an argument from a claim that does not contain that limitation.

[00:14:37] Speaker 02:
And so for this- Or relying on the same evidence.

[00:14:41] Speaker 05:
Relying on the same evidence, but I'd say, again, there needs to be a link.

[00:14:45] Speaker 05:
I'm not saying it necessarily has to be an extensive link, but there has to be some connection articulated between

[00:14:53] Speaker 05:
the assessing and representing actions.

[00:14:55] Speaker 02:
What standard of review do we apply?

[00:14:58] Speaker 02:
I mean, we've got a decision from the board saying, no, no, this is proper reply argument.

[00:15:03] Speaker 02:
Is that reviewed for an abuse of discretion?

[00:15:07] Speaker 05:
I think I would answer that in two parts.

[00:15:09] Speaker 05:
My first answer would be, this should be de novo because our contention is that the board violated Section 312A3 and its implementing regulation by relying on arguments not in the petition to find claims unpatentable in the final written decision.

[00:15:26] Speaker 05:
However, even if you were to look at it through an abuse of discretion prism, then an error of law, which here, finding claims unpatentable based on arguments outside of the petition,

[00:15:37] Speaker 05:
That is, by definition, an abuse of discretion.

[00:15:40] Speaker 05:
So I think whichever way you approach it, you kind of end up at the point where there's been a legal error committed here, and reversal is appropriate.

[00:15:48] Speaker 03:
When it comes to allocating, and Dr. Kay's paragraph 138 refers back to paragraphs 102 and 104.

[00:15:57] Speaker 03:
And his paragraph 104 says, towards the bottom, in short, the OceanStore software makes the distributed devices in the pools.

[00:16:07] Speaker 03:
and forming the ocean appear to be or mimic NAS devices and then it does so, by making available and providing those excess data storage resources to other network connected devices.

[00:16:22] Speaker 03:
So why isn't that basically the same thing as allocating?

[00:16:27] Speaker 03:
When it says, when he says that OceanStore teaches making available and providing those excess data storage resources to other network connected devices.

[00:16:39] Speaker 05:
Your Honor, the statement that you're referring to making available and providing excess data storage resources to the devices, that's simply what it means to mimic a NAS device, which is already recited in the claim.

[00:16:53] Speaker 05:
The idea of having a device that actually is used for some other purpose, but it mimics a NAS device by making it.

[00:17:00] Speaker 03:
But what I'm wondering is, why isn't it?

[00:17:03] Speaker 03:
when the reference is alleged to make unused space available as a NAS storage, why isn't that fit within the allocating limitation?

[00:17:16] Speaker 03:
Why doesn't that track the allocating limitation?

[00:17:20] Speaker 05:
Our position would be it doesn't necessarily track the allocating limitation, because there's no indication here that those resources have been locked down in the words of petitioners expert.

[00:17:33] Speaker 05:
so they don't get taken over by local node use.

[00:17:37] Speaker 05:
But again, I'd come back to the point, it wasn't our burden to explain why OceanStore doesn't disclose allocating.

[00:17:45] Speaker 05:
It was their burden to explain why it does disclose allocating.

[00:17:48] Speaker 05:
And this, our point is, is not enough.

[00:17:51] Speaker 05:
This cross-reference back to a paragraph discussing another limitation.

[00:17:57] Speaker 05:
And to expect us to just sort of infer, oh, this must be talking about allocating.

[00:18:02] Speaker 05:
And that's what the argument is.

[00:18:04] Speaker 05:
That's what we're saying is not sufficient.

[00:18:07] Speaker 04:
I realize you've already run out of your time.

[00:18:09] Speaker 04:
But by a long shot, the most challenging issue is one you haven't even talked about, which is the combination of the representing limit.

[00:18:22] Speaker 05:
Yes, Your Honor.

[00:18:23] Speaker 04:
So let me ask you, I guess,

[00:18:26] Speaker 04:
two questions that are currently in my mind.

[00:18:29] Speaker 04:
One of them is, assuming you're quite right about the individual clients with their associated NAS devices having themselves separately, individually to represent, hey, I'm a NAS device, is right.

[00:18:51] Speaker 04:
How do you get to a claim construction, which is your claim construction, under which that representation has to be made by the NAS device to the user?

[00:19:07] Speaker 04:
Then I'm going to also ask you the question, even assuming you're right, why

[00:19:14] Speaker 04:
why was the board not correct in its quite conclusory assertion as to both Ocean Store and as to Carter, and I must say I find Carter more challenging, but we have to face it because of claim 17, that both of them show that even under your construction.

[00:19:34] Speaker 04:
So let's start with the first, to the user device.

[00:19:38] Speaker 05:
I think I can actually answer both of your honors

[00:19:41] Speaker 05:
questions and sort of the same theme.

[00:19:44] Speaker 05:
The claim recites representing, and so that raises the question, representing to what or to whom?

[00:19:53] Speaker 05:
The specification provides a clear answer.

[00:19:55] Speaker 05:
This is at appendix 180, column 42, around line 57.

[00:20:00] Speaker 05:
It says the devices can provide storage capabilities that allow these devices to appear to users as dedicated NAS devices.

[00:20:11] Speaker 05:
And so the appearance is to the user or to the user device.

[00:20:15] Speaker 04:
And you equate representing with appearing?

[00:20:21] Speaker 05:
Yes, Your Honor.

[00:20:22] Speaker 05:
I think that's the most plausible way to read that, making a representation or having the appearance of a device.

[00:20:31] Speaker 04:
So a system in which one of 1,000 distributed computers represent to some

[00:20:40] Speaker 04:
clearing house.

[00:20:42] Speaker 04:
I've got space available and the clearing house is what the user checks with and then starts to use this device.

[00:20:53] Speaker 04:
You say that would not satisfy the claim except for what you say

[00:21:02] Speaker 04:
Think you assert that once the user sends material for storage to the client device and the client device Stores it that is automatically implicitly a representation I'm not sure I would characterize it exactly like that your honor but

[00:21:22] Speaker 04:
Our point is that the... I think you say at pages 24 and 25 of your blue brief, and then later in your gray brief as part of your claim construction argument, that when the user makes direct contact with the storage device, the storage device necessarily represents itself as a NAS device.

[00:21:46] Speaker 04:
And I think you do that in order to try to...

[00:21:49] Speaker 04:
Have your claim construction cover the fabric That's correct.

[00:21:55] Speaker 05:
It does The claim construction does cover both the NAS device fabric and the server assisted Embodiments and the reason that we know this the passage that I believe your honor was referring to the first is it column 44 lines 15 through 16 and

[00:22:12] Speaker 05:
The NAS devices storing the data location information would receive storage and access requests from user devices.

[00:22:19] Speaker 05:
and would direct the user devices to the distributed devices storing the requested data.

[00:22:25] Speaker 05:
In other words, the user device is directed to where physically on the system their data is located.

[00:22:31] Speaker 05:
They're not locating the data in an abstract shared memory space.

[00:22:36] Speaker 05:
That's how OceanStore and Carter work.

[00:22:39] Speaker 05:
And this goes to Judge Toronto, your second question.

[00:22:42] Speaker 04:
So they're on 192 and 193 or 193 and 194.

[00:22:47] Speaker 04:
There are two places.

[00:22:48] Speaker 04:
that have a description of a two-stage process,

[00:23:01] Speaker 05:
You're referring to Ocean Store, correct?

[00:23:03] Speaker 05:
Yes.

[00:23:04] Speaker 05:
That does not do that because what happens is the user communicates with node, it's denoted N1 in the reference.

[00:23:12] Speaker 05:
The user communicates with N1 and says, do you have my data?

[00:23:16] Speaker 05:
N1 doesn't, but it finds where the data is in the system.

[00:23:20] Speaker 05:
Then once the data is found on, let's call it Nx,

[00:23:25] Speaker 05:
Thereafter, messages are sent directly from N1 to NX, not from the user device directly to NX.

[00:23:34] Speaker 05:
And the reason that we know this is because Ocean Store says, and this is at appendix 1523,

[00:23:42] Speaker 05:
It says, if replicas move around, only the network, not the users of the data, needs to know.

[00:23:49] Speaker 05:
And so the point is, the user devices neither know nor care where physically their data is residing on the system.

[00:23:57] Speaker 03:
I'm sorry, where at 1523 are you speaking from?

[00:24:03] Speaker 05:
I believe it's on the right side of the page near the top.

[00:24:08] Speaker 04:
Which page are we talking about?

[00:24:11] Speaker 05:
This is appendix 1523.

[00:24:13] Speaker 05:
That's the 193 I was talking about.

[00:24:18] Speaker 05:
Correct.

[00:24:19] Speaker 05:
This is in the right column, the partial paragraph that begins the column.

[00:24:24] Speaker 05:
The last sentence is, if replicas move around, only the network, not the users of the data, needs to know.

[00:24:30] Speaker 05:
If replicas move around?

[00:24:34] Speaker 05:
A replica is simply a copy.

[00:24:36] Speaker 05:
of a persistent object, which is how information is stored on OceanStore.

[00:24:41] Speaker 03:
So that's just saying if replicas move around, the users don't need to know that.

[00:24:48] Speaker 03:
That doesn't necessarily answer the question of whether the users

[00:24:52] Speaker 03:
devices directly communicating to the node that has the desired data.

[00:25:00] Speaker 04:
And in particular, so the material at the bottom of the left column on 192 and in the top of the right column, I mean 193, and the right column, top of the right at 194, which is 1524.

[00:25:13] Speaker 04:
And let me focus on that latter one about eight lines down.

[00:25:16] Speaker 04:
When someone searches for information,

[00:25:19] Speaker 04:
They climb the tree until they run into a pointer after which they, that's the searcher, route directly to the object.

[00:25:27] Speaker 04:
And I took that to mean the same thing as the bottom of the left column on the previous page.

[00:25:34] Speaker 04:
Routing is thus a two-step phase process.

[00:25:37] Speaker 04:
Messages begin by routing from node to node along the distributed data structure until a destination is discovered.

[00:25:44] Speaker 04:
At that point, they route directly to the destination.

[00:25:48] Speaker 05:
And what is meant by that, I'd submit, is that they route directly to the destination from the initial node in one in figure two on page 193.

[00:25:59] Speaker 05:
And the reason we know that is because, to sort of go back to Judge Chen's question, the replicas are the data.

[00:26:07] Speaker 05:
The system duplicates data for security and recoverability purposes.

[00:26:12] Speaker 05:
But the replicas are what the user devices go to in order to access their data.

[00:26:17] Speaker 05:
And what the reference teaches is that when the replicas, i.e.

[00:26:22] Speaker 05:
the data moves around, the user devices don't need to know because they're interacting with a layer of abstraction that's atop

[00:26:31] Speaker 05:
the OceanStore system, and they don't see where the data is physically located on the system.

[00:26:36] Speaker 05:
Carter works the same way.

[00:26:38] Speaker 05:
As is clear from EMC's own petition describing the reference, the underlying details of the shared storage space are concealed behind a layer of abstraction, and what the user device sees

[00:26:52] Speaker 05:
is a virtual memory space that's divided into files that have no relation to the actual physical devices.

[00:26:59] Speaker 03:
When it comes to Carter, did you argue this argument about the abstract shared data storage space?

[00:27:07] Speaker 03:
I mean I thought you argued more about you need to represent to the user device and then secondly you need that they

[00:27:20] Speaker 03:
waved the idea, the other side waved the idea that each node has to act as a NAS device, where all the nodes can just comprise a single NAS device.

[00:27:33] Speaker 05:
Our point is that the Carter system, because of this layer of abstraction, the individual nodes on the system don't individually appear to the user device as a NAS device, which is required under our construction.

[00:27:47] Speaker 05:
and the layer of abstraction is why that representation doesn't happen.

[00:27:51] Speaker 03:
It wasn't clear to me in your blue brief that you made that argument.

[00:27:54] Speaker 03:
I thought the argument that you made was that the other side's theory was that all of the devices together act as a single NAS device rather than each node serving itself as a NAS device.

[00:28:11] Speaker 05:
I think that it's sort of a different way of saying the same thing because

[00:28:16] Speaker 05:
Our argument in the blue brief regarding Carter is at page 30 through 32.

[00:28:25] Speaker 05:
And we say after numeral two, Carter likewise does not disclose a plurality of distributed devices.

[00:28:32] Speaker 05:
each of which represents itself to the user device as its own separate NAS device.

[00:28:37] Speaker 05:
It describes only a shared memory that appears as a single large storage space.

[00:28:42] Speaker 05:
And then we cite certain admissions from EMC's petitions that describe Carter in precisely this way.

[00:28:51] Speaker 05:
And so our point is that the representation that Carter is making is

[00:28:55] Speaker 05:
I am one big NAS device rather than all these individual nodes on the system are individual NAS devices.

[00:29:21] Speaker 01:
Good morning.

[00:29:22] Speaker 01:
May it please the court?

[00:29:23] Speaker 01:
Cindy Freeland along with my colleague, Dana Burwell.

[00:29:26] Speaker 01:
I represent EMC.

[00:29:27] Speaker 01:
I'll be arguing this morning also on behalf of our co-appellees, Lenovo and NetApp.

[00:29:33] Speaker 01:
And I'd like to start where my opposing counsel started with the allocating limitation.

[00:29:41] Speaker 01:
And consistent with the court's questions, I think the 827 patent is a critical starting point for this issue.

[00:29:49] Speaker 01:
As IV's own expert agreed, and as the board emphasized in its final written decision, the 827 specification says nothing about how to allocate unused storage.

[00:30:03] Speaker 01:
And IV's expert, Dr. Chinoy, admitted that at Appendix 3166.

[00:30:09] Speaker 01:
Instead, the patent simply refers to making storage available to other devices.

[00:30:15] Speaker 01:
And we, accordingly, treated the limitation the same way.

[00:30:18] Speaker 04:
Does the patent either use the term allocate or some other word that means the same as reserve lockdown?

[00:30:29] Speaker 01:
Only in the claims, Your Honor.

[00:30:31] Speaker 01:
Only in the claims.

[00:30:32] Speaker 01:
And in fact, Dr. Chinoy admitted that in his deposition appendix 3166.

[00:30:39] Speaker 01:
And a good analogy to this might be a hotel room.

[00:30:44] Speaker 01:
When a hotel rents out a room and makes that room available to a customer, it's necessarily assessing that the room is unused and allocating the room.

[00:30:54] Speaker 01:
That's how the patent treats the allocating step.

[00:30:59] Speaker 01:
It just simply says that the distributed devices are making their storage available to others.

[00:31:05] Speaker 01:
And that's how our expert and

[00:31:08] Speaker 01:
And the petitioners treated it in our petition.

[00:31:12] Speaker 01:
And critically, Ivy isn't challenging the substance of the board's conclusion on allocating.

[00:31:20] Speaker 01:
And it couldn't, because the board ultimately found that Ocean Store and Carter both teach allocating in at least as much detail as the patent itself.

[00:31:30] Speaker 01:
Instead, they're focused on this purely procedural argument, and they're trying to use it to impose a higher burden of disclosure on the prior art than is provided in the patent.

[00:31:42] Speaker 01:
And as we've set out in our brief, this procedural argument is legally defective for a number of reasons, starting with the statutory bar on appellate review in section 314D.

[00:31:55] Speaker 01:
And I think this is really crystallized in IV's replied brief.

[00:32:00] Speaker 01:
They confirmed in that brief, just like confirmed in the argument, that the basis for their argument is solely whether the petitions

[00:32:11] Speaker 01:
set out a prima facie case for unpatentability.

[00:32:16] Speaker 01:
And as the Supreme Court confirmed in Cuso, this is plainly barred by section 314D.

[00:32:23] Speaker 01:
IB tries to avoid Cuso.

[00:32:25] Speaker 01:
It tries to avoid the statutory bar.

[00:32:28] Speaker 01:
by trying to characterize its argument as a challenge to the sufficiency of the petition under section 312.

[00:32:37] Speaker 01:
But the Supreme Court considered and rejected exactly that same argument in Cuso.

[00:32:42] Speaker 01:
In Cuso, like this case.

[00:32:44] Speaker 04:
Didn't the Supreme Court, and I'm going to, this might be unfair, reject exactly the argument you are now making about in SAS in saying,

[00:32:55] Speaker 04:
that this was an end run around the, quote-unquote, bar on review of some issues because it said, of course we get to decide whether what's in the petition and what the board gets to do when it's part of the final written decision.

[00:33:18] Speaker 04:
That's not barred by the institution review provision.

[00:33:24] Speaker 01:
Well, actually, CUSO addressed exactly the same issue as before the court now.

[00:33:31] Speaker 01:
CUSO involved a challenge to a petition under Section 312.

[00:33:35] Speaker 01:
In fact, CUSO based its challenge on exactly the same provision of Section 312, 312A3, that requires a petition to identify with particularity the basis for the challenge.

[00:33:49] Speaker 01:
And the Supreme Court found that that claim that Garman's petition was not pleaded with particularity under Section 312, that was, and I'll quote the Supreme Court here at page 2142, Quozo's claim that Garman's petition was not pleaded with particularity under Section 312, again, the same section that Ivy cites here,

[00:34:13] Speaker 01:
is little more than a challenge to the Patent Office's conclusion under Section 314A that the information presented in the petition warranted review.

[00:34:23] Speaker 01:
And the Supreme Court found that that was barred under 314D.

[00:34:28] Speaker 01:
So the argument that IV has brought to the court, it's not only substantively wrong.

[00:34:35] Speaker 01:
The petitions treated the allocating step just like the patent treats the allocating step.

[00:34:40] Speaker 01:
It's also barred directly by Cuso.

[00:34:43] Speaker 01:
They are challenging the petition under Section 312.

[00:34:47] Speaker 01:
That's exactly the same argument that was made in Cuso.

[00:34:50] Speaker 01:
And the Supreme Court said it was not reviewable.

[00:34:54] Speaker 04:
In your view, would it be true that

[00:34:59] Speaker 04:
to take the extreme hypothetical that was discussed before.

[00:35:04] Speaker 04:
A petition says, here's a piece of prior art.

[00:35:08] Speaker 04:
It covers all the claims, claim elements.

[00:35:11] Speaker 04:
Doesn't say anything more.

[00:35:13] Speaker 04:
Patent owner says, you've got to do better than that.

[00:35:16] Speaker 04:
And then you do it all on reply.

[00:35:18] Speaker 04:
And then they come up on appeal and say, that's not good enough.

[00:35:22] Speaker 04:
You would say, sorry, can't look at that.

[00:35:24] Speaker 04:
The only question is, what's the evidence in the record as a whole?

[00:35:28] Speaker 01:
Well, Cuso certainly realizes there could be due process exceptions or shenanigan type exceptions.

[00:35:34] Speaker 01:
But Ivy hasn't claimed that any of those apply here.

[00:35:37] Speaker 01:
In fact, they've not challenged the substance of the board's decision at all.

[00:35:41] Speaker 01:
But the court was very clear that if you are complaining about the sufficiency of a petition under 312A3, which is exactly the complaint here, it is not reviewable.

[00:35:52] Speaker 01:
So I'll turn then to the representing limitation, unless the court has any other questions on the allocating limitation.

[00:36:00] Speaker 01:
So on the representing limitation, I'd like to focus in particular on a critical concession by IV on appeal.

[00:36:11] Speaker 01:
Our primary argument to the board below on the representing limitation was that whatever it meant, it had to at least cover the second and third embodiments

[00:36:22] Speaker 04:
Because those were the only embodiments that included the location information that was critical to the claims allowance And I'm sorry and just just so my understanding is ivy's answer to that is Once there is a direct

[00:36:39] Speaker 04:
ultimate communication between the user and the source where the information is or the space is that that source is necessarily representing itself to the user that's described in the fabric limitation and therefore they're not reading out the fabric embodiment.

[00:37:04] Speaker 01:
I think that's there.

[00:37:05] Speaker 01:
I would call that their reconstruction of their original construction on appeal.

[00:37:08] Speaker 01:
I mean, they clearly are trying to walk away from the argument they advocated below on a separate appearance, and they're focused on the idea of a user device and a distributed device communicating directly.

[00:37:21] Speaker 01:
And if that's the case, I mean, if their new construction, their new argument is right, then the board was equally correct in concluding that under any construction, including IV's construction,

[00:37:33] Speaker 01:
The claims are met by Ocean Store and Carter because both do.

[00:37:38] Speaker 04:
Unless they're also right about the board being wrong in its reading of Ocean Store and Carter.

[00:37:45] Speaker 04:
They say in neither one of those, is it fairly taught that there is, at the end of the day, a direct connection between the requester and either space or information and the source of the space and the information?

[00:38:00] Speaker 01:
That's correct.

[00:38:01] Speaker 01:
They also challenge the board's conclusions that Ocean Store and Carter both disclosed the limitation, even under IVs construction below.

[00:38:11] Speaker 01:
But those are both supported by more than substantial evidence.

[00:38:15] Speaker 01:
And I'd like to take them one by one.

[00:38:18] Speaker 04:
I'm sorry.

[00:38:21] Speaker 04:
Go back to the claim construction.

[00:38:23] Speaker 01:
Certainly, Your Honor.

[00:38:24] Speaker 01:
I mean, I think that, again, the critical concession that they've made here is that the claims that it would be absurd to exclude the second and third embodiments.

[00:38:32] Speaker 01:
And that's what they tried to do below.

[00:38:34] Speaker 01:
And that's why the court rejected their construction.

[00:38:38] Speaker 01:
The court felt that you had to consider the claims in the context of the embodiments.

[00:38:44] Speaker 01:
And it rejected a construction that would have excluded those embodiments.

[00:38:48] Speaker 01:
And it also went on to conclude that even if it had accepted Ivey's claim construction arguments, then Ocean Store and Carter.

[00:38:57] Speaker 04:
So where is the best version of what I think maybe you say is a concession before the board from the other side that its construction would read out those embodiments?

[00:39:12] Speaker 01:
Well, we pointed out that our primary argument was you can't exclude the embodiments, and they never responded to that.

[00:39:21] Speaker 01:
And in fact, we tried to have their expert tell us his opinion on it, and he refused to even offer an opinion.

[00:39:29] Speaker 01:
He couldn't answer the question about whether they're

[00:39:32] Speaker 01:
whether their construction would exclude the embodiment.

[00:39:34] Speaker 04:
Did Ivy say anything remotely like, of course we're not excluding those embodiments, because the ultimate direct connection from the user to the resource meets this representation?

[00:39:51] Speaker 01:
That argument was never made below, Your Honor.

[00:39:53] Speaker 01:
That argument was made for the first time appeal, and they now agree that it would be absurd to exclude those embodiments.

[00:39:59] Speaker 03:
What about their observations on cross-examination?

[00:40:02] Speaker 01:
Well, I think the observations were simply refuting our expert's testimony on the first embodiment.

[00:40:22] Speaker 01:
And I'm sorry, I just wanted to make sure I had the right appendix page.

[00:40:25] Speaker 03:
Oh, A579, carrying over to 80.

[00:40:33] Speaker 01:
I think on this page, Your Honor, they are, if you look at the bottom of the page, the bottom of 579 to 80, they're debating what Dr. Kubiutowicz said about the, they're complaining about his mischaracterization attempting to limit the claims to the standalone mass embodiment.

[00:40:56] Speaker 01:
But they never affirmatively agree that the claim should cover the second and third embodiment.

[00:41:03] Speaker 03:
Well, they're contesting any allegation that their construction is limited to the standalone embodiment.

[00:41:11] Speaker 03:
So, I mean, to me, that means that they're disagreeing with you that their construction limits everything to just the standalone embodiment.

[00:41:20] Speaker 01:
Well, I'm not sure that an observation on a expert deposition would be the same as making the argument before the board.

[00:41:28] Speaker 01:
I mean, they never affirmatively explain to the board how their

[00:41:32] Speaker 01:
construction would include the second and third embodiment.

[00:41:36] Speaker 01:
And at this point, I think we're all in agreement that it would be absurd to exclude the second and third embodiment.

[00:41:42] Speaker 03:
And once you agree that the claims include the second and third embodiment, well, again, this is- How does reading, respectively, under its ordinary way, I guess, a one-to-one correspondence necessarily

[00:42:02] Speaker 03:
exclude from the claim scope the embodiments related to the NAS fabric and the server implementation?

[00:42:10] Speaker 01:
Well because the NAS fabric, I mean in a NAS fabric you're not going to have every single, you're not going to have a one-to-one correspondence between the distributed devices and the appearance of the NAS devices.

[00:42:25] Speaker 01:
Instead every user is going to see some of the distributed devices as

[00:42:31] Speaker 01:
as it's communicating with different distributed devices across the fabric.

[00:42:37] Speaker 01:
So there is certainly going to be in the Ocean Store fabric, for example, you will have direct communications between user devices and particular distributed devices, but you're not going to have a situation of appearing as a dedicated NAS device as we think they meant by their separately appearing construction.

[00:43:01] Speaker 01:
But I think ultimately what the board concluded, and it's consistent with this court's accent packaging cases, that you can't look just at the word respectively in the abstract.

[00:43:11] Speaker 01:
You can't pull a definition out of a dictionary.

[00:43:14] Speaker 01:
You've got to look at what the word respectively means in the context of the claims and in the context of the specification.

[00:43:23] Speaker 01:
And in that context, the board below found that certainly there has to be a correspondence between the distributed devices and the NAS devices.

[00:43:34] Speaker 01:
But it doesn't have to be a strict one-to-one correspondence.

[00:43:39] Speaker 01:
And that's consistent with the case law.

[00:43:41] Speaker 04:
And you said correspondence between the what and the what?

[00:43:43] Speaker 01:
Between the distributed devices and their appearance as NAS devices.

[00:43:50] Speaker 04:
Right, the board said that and I must say it struck me as nonsense.

[00:43:55] Speaker 01:
that there did not have to be a one-to-one correspondence?

[00:43:59] Speaker 04:
Anything textual about it.

[00:44:00] Speaker 04:
I understand an argument that says, all right, the text absolutely won't do it.

[00:44:03] Speaker 04:
And aside from everything else, the word respectively is not an adjective, let alone an attributive adjective.

[00:44:11] Speaker 04:
And I tried for the life of me to try to find a way in which the first thing was something other than a reference to the individual devices.

[00:44:22] Speaker 04:
And I could not do it.

[00:44:24] Speaker 04:
So one could say, okay, in context, the text cannot govern.

[00:44:30] Speaker 04:
It will be overridden by the need to embrace the embodiments for which this language was added.

[00:44:39] Speaker 01:
And that's exactly what the court did in accent packaging.

[00:44:41] Speaker 01:
And I will say, Your Honor, I think that the board's construction.

[00:44:44] Speaker 04:
Unless when we look at the columns, it's quite clear that it's not overriding.

[00:44:51] Speaker 04:
Because aside from everything else, nothing in those two embodiments excludes, and at least one of them expressly recites, the ultimate direct connection between the user and the resource.

[00:45:07] Speaker 01:
And in that way, they're exactly like Ocean Store and Carter.

[00:45:10] Speaker 04:
I think once you agree that the... Their argument does require both their claim construction and the conclusion that Ocean Store and Carter don't need it.

[00:45:24] Speaker 04:
And that's a separate question.

[00:45:27] Speaker 04:
I guess let's start talking about that question, OK?

[00:45:31] Speaker 01:
I think once you agree that if there is a user device that's communicating directly with distributed devices that there is a representation, well then Ocean Store and Carter both do that.

[00:45:43] Speaker 01:
I mean they both opt their NAS fabrics.

[00:45:45] Speaker 01:
I mean we selected them because they're so close to the NAS fabrics in the patent.

[00:45:50] Speaker 01:
They operate in exactly the same way.

[00:45:52] Speaker 04:
Let me ask you a couple of questions.

[00:45:56] Speaker 04:
One is,

[00:46:00] Speaker 04:
It seems to me that there are different amounts of material in the two pieces of prior art to support that.

[00:46:08] Speaker 04:
That is, there are these couple of passages in Ocean Store that might support that.

[00:46:13] Speaker 04:
They say it doesn't.

[00:46:15] Speaker 04:
I'm not sure I find anything in Carter that tells me that at the end of the day, there is a user device to resource direct connection.

[00:46:24] Speaker 01:
OK, I'd like to come back to Ocean's Row because I think it has more than the patent on this.

[00:46:28] Speaker 01:
But I'll start with Carter.

[00:46:30] Speaker 01:
And what the board focused on in particular was Carter Figure 11.

[00:46:37] Speaker 01:
Carter Figure 11 shows, and I can give you the appendix of that.

[00:46:45] Speaker 01:
The Carter Figure 11 appears on appendix

[00:46:54] Speaker 01:
3452, and it is also described in Carter on Appendix 3416.

[00:47:08] Speaker 01:
And the board found, in its opinion, Appendix at 97, that Carter Figure 11 shows multiple commercially available PC nodes, each mimicking a NAS device,

[00:47:22] Speaker 01:
by making storage available.

[00:47:24] Speaker 01:
And you can see that in figure 11, where you have one note on the left, another on the right.

[00:47:32] Speaker 01:
And you can also see it in the description at appendix 3416.

[00:47:38] Speaker 01:
And I do think there's a confusion in Ivy's argument here, Your Honor, between what the user sees and what the user device sees.

[00:47:45] Speaker 01:
I mean, even under their construction, they're not saying that the user, the person on the computer, has to see multiple devices.

[00:47:52] Speaker 01:
They're saying that the underlying device has to see multiple other devices.

[00:47:57] Speaker 01:
And what these underlying nodes are doing is they're

[00:48:00] Speaker 01:
communicating directly with each other.

[00:48:02] Speaker 04:
So where is that in Carter?

[00:48:04] Speaker 04:
The directly part, which I take it to be the part of the argument.

[00:48:08] Speaker 01:
Well, you can see it both in the description.

[00:48:09] Speaker 04:
I mean, you can see the- What language specifically in the description?

[00:48:13] Speaker 01:
Let me start with figure 11.

[00:48:14] Speaker 01:
You can see them communicating directly over the network link 254 in the middle.

[00:48:23] Speaker 01:
And you can also see the description at appendix 3416.

[00:48:28] Speaker 01:
It talks about the, in particular, figure 11.

[00:48:35] Speaker 01:
I'm looking at line 12.

[00:48:37] Speaker 01:
It depicts a system that includes two nodes, a directory structures, pairs of memories.

[00:48:44] Speaker 01:
If you go down to line 17, the nodes are connected by the network.

[00:48:50] Speaker 01:
Line 19, they operate as discussed above.

[00:48:53] Speaker 01:
And then down to line 29, the specification discusses the directory pages being distributedly stored across the memories, saying that duplicates can exist.

[00:49:08] Speaker 01:
And it talks about data moving between the memories on the different nodes.

[00:49:14] Speaker 01:
So what you have a situation, I mean, Ivy's new argument is that if you have two devices that are

[00:49:21] Speaker 01:
communicating directly with each other, then you have the one device appearing to the other as one of these NAS devices.

[00:49:30] Speaker 01:
It's shown in Carter, the board found that figure 11 in this description shows multiple commercially available PC nodes, 406A and 406B, each mimicking NAS devices by making their storage available to each other.

[00:49:48] Speaker 01:
And the board found the same thing for Ocean Store.

[00:49:51] Speaker 01:
And I'll turn to Ocean Store unless there are further questions on Carter.

[00:49:57] Speaker 04:
So 97?

[00:49:58] Speaker 01:
Yes, 97 of the board's opinion.

[00:50:04] Speaker 04:
You said each mimicking NAS devices by making storage available to each other.

[00:50:10] Speaker 04:
Is that those your words?

[00:50:12] Speaker 01:
No, those are the board's words.

[00:50:17] Speaker 01:
I'm sorry, appendix 98, excuse me.

[00:50:21] Speaker 01:
And it's the last sentence of the first complete paragraph.

[00:50:28] Speaker 01:
We find that Carter discloses a shared memory subsystem on each node that allows the node to mimic a dedicated NAS device by making its storage available to other nodes.

[00:50:42] Speaker 01:
And then also, Your Honor, our page.

[00:50:45] Speaker 01:
I think I missed the key other excerpt, Your Honor.

[00:50:48] Speaker 01:
I just wanted to show it to you quickly.

[00:50:49] Speaker 01:
Appendix 97, the very last paragraph on the page.

[00:50:55] Speaker 01:
Additionally, Carter's Figure 11 shows multiple commercially available PC nodes, each mimicking

[00:51:05] Speaker 01:
NAS devices by making their storage available.

[00:51:09] Speaker 04:
Right.

[00:51:10] Speaker 04:
That's the place that I was looking at when I was wondering where the to each other comes from.

[00:51:14] Speaker 04:
And even the second one on 98 doesn't say to each other, which I think if the issue is direct connection, this doesn't say that.

[00:51:29] Speaker 04:
These words would work.

[00:51:31] Speaker 04:
for one in which 1,000 computers make their storage available to anybody but all through a clearinghouse without any direct connection.

[00:51:44] Speaker 04:
And I don't see the board making a finding about that.

[00:51:47] Speaker 01:
Well, I mean, the directory.

[00:51:49] Speaker 01:
Well, I think the board is making a finding that each mimics a NAS device by making storage available.

[00:51:54] Speaker 01:
It's basing that finding.

[00:51:55] Speaker 04:
To the system as a whole with which a user might deal only through a clearinghouse.

[00:52:02] Speaker 01:
Well, actually, Your Honor, I think that there's a confusion on this issue in Ivy's briefing.

[00:52:07] Speaker 01:
In the Carter system, the user devices and the distributed devices are the same.

[00:52:13] Speaker 01:
Each PC is acting as a user device.

[00:52:15] Speaker 01:
Each PC is also acting as a distributed device.

[00:52:20] Speaker 01:
So when a user device and a distributed device,

[00:52:23] Speaker 01:
I should say when two of these Carter nodes are communicating back and forth with each other, you have the situation where the user device is seeing another node appearing as a distributed device.

[00:52:37] Speaker 01:
And I think that's why the board concluded what it did on Carter and why it focused on Figure 11, because when you have these

[00:52:46] Speaker 01:
nodes exchanging information with each other, you have the one node appearing as a NAS device mimicking a NAS device to the other.

[00:52:54] Speaker 04:
So in both of the final written decisions,

[00:52:59] Speaker 04:
the board at the end of its very similar claim construction sections says, and even if IV is right, the prior art teaches that.

[00:53:08] Speaker 04:
And then as far as I can tell, the board doesn't in either case actually do that application when it's later discussing the representing claim limitation in the particular piece of prior art.

[00:53:23] Speaker 01:
I believe it does, Your Honor, and I can point you to the relevant parts of the

[00:53:27] Speaker 01:
So starting with Ocean Store.

[00:53:31] Speaker 04:
There's a little summary description of how Ocean Store works, which is not part of the application of the representing claim limitation.

[00:53:40] Speaker 01:
Right.

[00:53:42] Speaker 01:
And I think importantly there, they focus on the two-phase process of Ocean Store.

[00:53:54] Speaker 04:
But they never use that in applying the representing limitation, as far as I can tell.

[00:53:59] Speaker 01:
I believe they do.

[00:54:02] Speaker 01:
Their discussion of how Ocean Store applies to representing begins at appendix 30.

[00:54:07] Speaker 01:
And it continues to appendix 33.

[00:54:12] Speaker 04:
So where in there does it say, notice the two-stage process, this would satisfy this limitation even under IV's construction?

[00:54:23] Speaker 01:
Well, I think they don't use those words because the argument that Ivy is making is a new argument on appeal.

[00:54:30] Speaker 01:
I mean, they've recast their entire construction on appeal.

[00:54:35] Speaker 01:
But I think what the board found, though, was that Ocean Store works exactly the way that Ivy now says on appeal it requires.

[00:54:44] Speaker 01:
on page 33.

[00:54:46] Speaker 01:
And again, Ivy's argument on appeal is if you have a user device and a distributed device talking to each other, then the distributed device is appearing as a NAS device.

[00:54:56] Speaker 01:
And I'd start at the beginning of appendix 33, first full sentence.

[00:55:01] Speaker 01:
In OceanStore, multiple storage resources are provided by an aggregation of pools, each of which can serve data to the user devices.

[00:55:11] Speaker 01:
Each pool device makes its storage available for use by others as depicted in figures two and three.

[00:55:18] Speaker 01:
And then they give specific examples.

[00:55:21] Speaker 01:
I mean, we've already talked about the language in Ocean Store on page appendix 1523, where Ocean Store describes its two-phase process.

[00:55:31] Speaker 04:
That's 192 cited here.

[00:55:33] Speaker 01:
Right.

[00:55:34] Speaker 01:
And then they go on to discuss Ocean Store at 199, where there are specific examples of these direct communications, the email example and the directory example, which is discussed on Appendix 33.

[00:55:52] Speaker 01:
And they're talking about the application discussion in Ocean Store at Appendix 1522.

[00:56:03] Speaker 01:
This part of Ocean Store is giving some particular examples of the communications between the devices.

[00:56:10] Speaker 01:
And in the email example, which the board cites, they cite, you can see it, the second paragraph from the bottom left column.

[00:56:21] Speaker 01:
They're talking about this.

[00:56:22] Speaker 01:
an email feature in something called introspection.

[00:56:26] Speaker 01:
Introspection permits a user's email to migrate closer to his client, reducing the round-trip time to fetch messages from a remote server.

[00:56:37] Speaker 01:
And this is just one example.

[00:56:39] Speaker 01:
I mean, Ocean Store tells us on page 1523 that it has a two-phase process.

[00:56:45] Speaker 01:
In the first phase of the process, the page 1523, yes,

[00:56:51] Speaker 01:
In the first phase of the process, messages route from node to node until they find their destination.

[00:56:58] Speaker 01:
And in that stage of the process, Ocean Store is doing exactly what fabrics do.

[00:57:02] Speaker 01:
I mean, that's exactly how the fabric and the patent, the 827 patent works.

[00:57:07] Speaker 01:
In the second phase of the process, the messages route directly to their destination.

[00:57:12] Speaker 04:
You've got that direct communication between the user device and the... So can you respond to Mr. Milton's point that

[00:57:21] Speaker 04:
The direct there is between, I think, N1 and NX.

[00:57:25] Speaker 04:
That is not the user, but rather the first.

[00:57:29] Speaker 04:
I keep calling it a clearinghouse.

[00:57:31] Speaker 04:
The first point of contact that the user says, I need storage.

[00:57:36] Speaker 04:
Tell me how to do that.

[00:57:37] Speaker 01:
And I think the quote that he's given you is about the first phase of the process, not the second phase of the process.

[00:57:45] Speaker 01:
He cited the language in the right column at 1523.

[00:57:50] Speaker 01:
talking about how the location is originally found.

[00:57:58] Speaker 01:
But the Ocean Store disclosure is clear that in the second phase of this process, that you have a direct connection between the user device and the distributed device.

[00:58:11] Speaker 01:
It says this in the left column.

[00:58:14] Speaker 01:
in describing its two-phase process in the left column of Appendix 1523, second to last paragraph.

[00:58:23] Speaker 01:
Beginning in the middle there, messages begin by routing from node to node along the distributed data structure until a destination is discovered.

[00:58:32] Speaker 01:
So that's how it begins.

[00:58:34] Speaker 01:
First phase of the process is just like the fabric and the patent.

[00:58:37] Speaker 01:
At that point, once the destination is discovered, they route directly to the destination.

[00:58:44] Speaker 01:
So Ocean Store tells us that there's a direct communications in this paragraph.

[00:58:51] Speaker 01:
They tell this in the next paragraph that there's direct communications, three lines from the bottom.

[00:58:58] Speaker 01:
Quote, second, messages route directly to their destination, avoiding the multiple round trips that a separate data location and routing process would incur.

[00:59:08] Speaker 01:
So it tells us that twice.

[00:59:09] Speaker 01:
And then it gives us examples.

[00:59:11] Speaker 01:
And the example that the board focused on was the email example, which is one page over on 1522.

[00:59:20] Speaker 01:
You can see under applications, the third paragraph, there's the email example.

[00:59:25] Speaker 01:
And if you go to the end of that paragraph, about six lines up, it says, quote,

[00:59:32] Speaker 01:
This introspection feature of email permits a user's email to migrate closer to his client, reducing the round-trip time to fetch messages from a remote server.

[00:59:45] Speaker 01:
And so what this is talking about, again, is this second phase of the process.

[00:59:50] Speaker 01:
Once the destination is identified, then there are these direct communications between the user device and the distributed device.

[00:59:59] Speaker 01:
So as the board found in its opinion, Appendix 33, Ocean Store is doing exactly what Ivy says the claims require.

[01:00:11] Speaker 01:
After the distributed device with the information is identified, then there's direct communications between the user device

[01:00:23] Speaker 01:
and the distributive device.

[01:00:25] Speaker 01:
So we believe that the construction was correct.

[01:00:29] Speaker 01:
I mean, the board correctly found that it needed to consider not only the meaning of respectively in the abstract, it needed to consider the meaning in the context of the claims.

[01:00:41] Speaker 01:
The construction that the board ultimately adopted, where there had to be a correspondence but not necessarily a one-to-one correspondence,

[01:00:51] Speaker 01:
It's consistent with the accent packaging case.

[01:00:55] Speaker 01:
It's also consistent with Judge Bryson's decision in Trover, the Eastern District of Texas case.

[01:01:03] Speaker 01:
In both Trover and in accent packaging, the courts rejected the argument that there had to be a one-to-one correspondence.

[01:01:13] Speaker 01:
And in accent packaging, the court rejected that for the very reason that the board did here, that that would exclude an embodiment.

[01:01:25] Speaker 01:
And even in Judge Bryson's decision, his decision was based on the way the limitation read.

[01:01:32] Speaker 01:
The limitation introvert was a lot like the one here.

[01:01:35] Speaker 01:
You had to have a plurality of video cameras corresponding to a plurality of transaction machines.

[01:01:43] Speaker 01:
And Judge Bryson said that that required a correspondence, but it didn't require a one-to-one correspondence.

[01:01:52] Speaker 01:
Because as in Trover, the claims here don't require that Peter, Paul, and Mary respectively are 13, 15, and 16.

[01:02:03] Speaker 01:
You don't have the first, second, and third.

[01:02:06] Speaker 01:
You have a plurality corresponding to a plurality.

[01:02:09] Speaker 01:
And that just means that there has to be a correspondence between the items in each plurality.

[01:02:14] Speaker 01:
So we think that there are two reasons to affirm the board's decision here.

[01:02:19] Speaker 01:
The first being that the board's construction was correct.

[01:02:23] Speaker 01:
Ivy now agrees that it would be absurd to exclude the NAS fabric embodiment.

[01:02:30] Speaker 01:
And secondly, we think there is more than substantial evidence to support the board's findings that Ocean Store

[01:02:38] Speaker 01:
And Carter both disclosed the limitation even under the board's construction.

[01:02:43] Speaker 01:
And again, we've looked at the disclosures in Ocean Store and Carter, but the board also relied on the testimony of the experts in reaching that conclusion.

[01:02:56] Speaker 04:
Can I just ask one trivial question before you sit down?

[01:02:59] Speaker 04:
What is this word for word document that the board cited as a kind of dictionary?

[01:03:07] Speaker 01:
I just want to make sure I have in mind that I think they looked at their own dictionary, that may be what your honor is referring to.

[01:03:15] Speaker 01:
They looked at Ivy's dictionary, and they also looked at their own.

[01:03:26] Speaker 04:
So it's at page 4012.

[01:03:33] Speaker 04:
I guess it's the very last page of the appendix.

[01:03:35] Speaker 04:
What is that document?

[01:03:37] Speaker 01:
Oh, I think it was a, I asked myself the same question.

[01:03:42] Speaker 01:
I think they came up with their own dictionary.

[01:03:43] Speaker 04:
It has a surprising reference to a comparison to the usage in Swedish.

[01:03:49] Speaker 01:
It was, I think they were making this distinction between respectively as an adverb, respectively as an attributive adjective.

[01:03:56] Speaker 01:
And they concluded that in the context of these things.

[01:03:58] Speaker 04:
Right, I just want to know what this document is.

[01:04:01] Speaker 01:
It's a board.

[01:04:04] Speaker 01:
exhibit of their own.

[01:04:05] Speaker 01:
It was a board-supplied exhibit, so the board looked at its own dictionary.

[01:04:10] Speaker 04:
Thank you.

[01:04:31] Speaker 05:
Thank you, Your Honors.

[01:04:32] Speaker 05:
I'd like to make just a few quick points, kind of taking them in reverse order from opposing counsel's argument.

[01:04:39] Speaker 05:
EMC has not explained how their construction doesn't read the word, respectively, out of the claims.

[01:04:46] Speaker 05:
Instead, their argument has been, you can't let, respectively, have operative effect because it would read out the second and third embodiments disclosed in the specification.

[01:04:57] Speaker 04:
So where to the board did you say, and if you can provide joint appendix sites, it would be most welcome, no, our construction does not have that effect.

[01:05:09] Speaker 05:
At appendix 579 through 580, which is the passage referred to by Judge Chen, we said in a motion for observation on cross-examination that the petitioner's expert had mischaracterized our construction by saying that it was limited to the standalone embodiment.

[01:05:29] Speaker 05:
Our expert also said in his own declaration that

[01:05:33] Speaker 05:
construction of the report before you say what it says I want to be looking at it this is at appendix 36 56 paragraph 40

[01:05:55] Speaker 05:
Says regard this is at the very top of the page after a discussion of the three embodiments regardless of which architecture is employed the eight to seven patent describes the devices directly access the distributed devices storing requested data and as we've been discussing our position is that in order to have this direct access.

[01:06:14] Speaker 05:
there must be a representation that the individual distributed device is functioning as a NAS device.

[01:06:20] Speaker 04:
That last little bit about, you clearly do hear say that in any of the architectures, the patent describes user devices directly accessing the distributed devices storing the data.

[01:06:35] Speaker 04:
Where, if anywhere, do you say,

[01:06:37] Speaker 04:
And that is why our representation, our representing construction covers those.

[01:06:50] Speaker 05:
I don't think that that explicit argument is in the record.

[01:06:53] Speaker 05:
And one reason is because this issue as to whether our construction excluded those two embodiments, it didn't come up at all until EMC's reply.

[01:07:06] Speaker 05:
And even then, EMC's reply was quite vague.

[01:07:09] Speaker 05:
They said that our construction was wrong, quote, to the extent it would include

[01:07:14] Speaker 05:
the fabric and the server-assisted embodiments.

[01:07:18] Speaker 05:
This issue wasn't discussed at the hearing and the first time that it really came out in full relief that OIV's construction is wrong because it would exclude these two embodiments, that was in the final written decision.

[01:07:30] Speaker 05:
The argument had never been clearly made by EMC or suggested by the board that our construction would exclude those two embodiments until the final written decision.

[01:07:43] Speaker 05:
And also on the representing issue, I would note that EMC has not pressed what their experts said below, which was that, respectively, is a recognized synonym of consequently.

[01:07:55] Speaker 05:
Again, their construction reads the word out of the claims entirely.

[01:08:00] Speaker 05:
They've cited the accent packaging case.

[01:08:03] Speaker 05:
In that case, the court did not require a one-to-one correspondence precisely because it would exclude preferred embodiments.

[01:08:10] Speaker 05:
That's not the case here.

[01:08:11] Speaker 05:
In the Trover opinion, Judge Bryson's opinion, the court didn't adopt a construction requiring a one-to-one correspondence because the defendant didn't ask for that.

[01:08:21] Speaker 05:
They were fine with a many-to-one correspondence.

[01:08:24] Speaker 05:
And so the court declined to go further than the parties had asked it to.

[01:08:28] Speaker 05:
But the court did say that the word, respectively, connotes more than a loose association of two groups of things.

[01:08:35] Speaker 05:
And that's what we're saying here.

[01:08:36] Speaker 05:
Each distributed device respectively represents itself as a NAS device.

[01:08:42] Speaker 04:
And just to close the loop on, so at page 13 of the board's opinion where it has blocked an indented quote about how patent owner construction intentionally reads out the embodiments covering a fabric and the server assisted implementation.

[01:09:00] Speaker 04:
The quote is from page 454, which is your patent owner response, where what you are saying is that the claim doesn't cover the deal with it as a single NAS device.

[01:09:17] Speaker 04:
That doesn't or does it?

[01:09:19] Speaker 04:
You're saying the board has misinterpreted this quote?

[01:09:22] Speaker 05:
Correct.

[01:09:23] Speaker 05:
There's a little bit of confusion here, because there is a passing reference in the specification

[01:09:28] Speaker 05:
This is at the bottom of column 42, appendix 180.

[01:09:36] Speaker 05:
There's a passing reference in the specification to a NAS component that brings its resources to the network with the appearance of a dedicated NAS device or as part of an integrated system that appears as a single or dedicated NAS device.

[01:09:53] Speaker 05:
That description, to the extent you call that an embodiment, our position is that is excluded because of the word respectively.

[01:10:01] Speaker 05:
And we pointed out in our papers that giving the word respectively effect would exclude that description of an integrated system that appears as a single or dedicated NAS device.

[01:10:14] Speaker 03:
You think what's described here is a separate embodiment?

[01:10:19] Speaker 05:
This is not the NAS fabric.

[01:10:21] Speaker 05:
And I think that's what the board thought, that our statement that this was not covered by our construction.

[01:10:29] Speaker 05:
was an admission that the fabric embodiment was not covered by the instruction, but these two things are not equivalent.

[01:10:36] Speaker 05:
And so I think that might be the source of it.

[01:10:37] Speaker 03:
What would you say this is, then, at the bottom of COM42?

[01:10:41] Speaker 05:
I would say this is something like Carter or Ocean Store, where the user device sees a single shared memory, and then underlying the shared memory underneath a layer of abstraction, there are these individual distributed devices mimicking NAS devices.

[01:10:57] Speaker 05:
And I know that I'm out of time, but if I could say one thing about that point.

[01:11:04] Speaker 04:
I guess I have a question.

[01:11:06] Speaker 05:
Oh, of course.

[01:11:06] Speaker 04:
I'm sorry.

[01:11:07] Speaker 04:
Particularly Carter.

[01:11:09] Speaker 04:
Why in figure 11 is the 254 connection North East node

[01:11:22] Speaker 04:
Never mind how it's described.

[01:11:24] Speaker 04:
The description at the relevant page strikes me as not terribly informative.

[01:11:29] Speaker 04:
But why does that not show?

[01:11:31] Speaker 04:
And each node can be its own user, its own requester.

[01:11:37] Speaker 04:
Why does that not show what you ultimately rely on for your

[01:11:46] Speaker 05:
So what Carter's doing is the nodes are making their storage available to other nodes.

[01:11:53] Speaker 05:
That's true.

[01:11:54] Speaker 05:
They're mimicking NAS devices, and that's all the board found.

[01:11:58] Speaker 05:
But in order to satisfy the representing limitation, there's a further step that's required.

[01:12:03] Speaker 05:
The nodes have to also represent to the user devices, which in Carter might be to each other, that, hey, I am a NAS device with an available amount of storage.

[01:12:14] Speaker 05:
But that's not what the user devices see in Carter.

[01:12:17] Speaker 05:
If you turn to figure two of Carter, I think this is perhaps the best illustration.

[01:12:22] Speaker 05:
Page, please.

[01:12:24] Speaker 05:
This is at appendix 2931.

[01:12:26] Speaker 05:
I think Carter may be entered twice.

[01:12:30] Speaker 04:
It is.

[01:12:30] Speaker 04:
Can you do the later version?

[01:12:32] Speaker 04:
Of course.

[01:12:34] Speaker 05:
It's at appendix 3443 in the later version.

[01:12:40] Speaker 05:
If you see up at the top of the page, the user.

[01:12:43] Speaker 04:
3443?

[01:12:45] Speaker 05:
This is figure three.

[01:13:01] Speaker 05:
the user application is seeing these shared network drives, A, C, D, and F on the left side, and then A, C, and N. And then that's the virtual shared memory space.

[01:13:13] Speaker 05:
And then underlying that virtual shared space are all the individual nodes that together are contributing their resources to make up that abstract virtual space.

[01:13:28] Speaker 04:
I'm sorry, how does this relate to figure 11?

[01:13:32] Speaker 05:
Because it's showing that that's how, to the extent the nodes see each other in the context that we're talking about,

[01:13:42] Speaker 05:
That's what they're seeing.

[01:13:43] Speaker 05:
They're seeing this shared storage space.

[01:13:46] Speaker 05:
They're making storage available to each other.

[01:13:50] Speaker 04:
Well, that's why if you look at figure 11, and I could just be, I'm sure I'm not fully understanding it, look at the 254 connection.

[01:14:01] Speaker 04:
Up at the top of the right.

[01:14:05] Speaker 04:
Why is that not a direct connection between two nodes over which there can be a memory transaction?

[01:14:19] Speaker 05:
A storage transaction.

[01:14:21] Speaker 05:
I believe in figure 11, those two boxes on the top

[01:14:28] Speaker 05:
The top left and top right are the global address spaces.

[01:14:33] Speaker 02:
And so this isn't a in the 46 B. That's what you're referring to.

[01:14:38] Speaker 05:
Sorry, let me.

[01:14:42] Speaker 05:
That's where it's discussed.

[01:14:46] Speaker 04:
Those are the numbers that are correct.

[01:14:48] Speaker 05:
Those are the nodes.

[01:14:57] Speaker 05:
Sorry, I was looking at the 410A and 410B.

[01:15:02] Speaker 05:
Right, so those are the nodes.

[01:15:04] Speaker 05:
But I don't think that line 254 means that the nodes are directly accessing storage on each other.

[01:15:14] Speaker 05:
Instead, they're accessing when these nodes need

[01:15:19] Speaker 05:
storage, they look into the virtual address space, which appears as this single aggregate shared memory.

[01:15:28] Speaker 04:
Is that what's in the center here in 340?

[01:15:31] Speaker 05:
I believe so, because that's a directory structure.

[01:15:36] Speaker 04:
That's a directory structure.

[01:15:37] Speaker 05:
Well, that's how the nodes find.

[01:15:40] Speaker 04:
Right, but that's why it appears to be

[01:15:44] Speaker 04:
interesting that there's this 254 direct connection that doesn't run through the thing in the center.

[01:15:51] Speaker 05:
I don't think that's the... I understand what you're saying, but I don't believe that... And page 3416 just calls 254 the network.

[01:16:01] Speaker 05:
Right.

[01:16:03] Speaker 05:
I don't think that the best interpretation of this figure, as you said, the discussion in the reference itself is not particularly illuminating.

[01:16:11] Speaker 03:
And I don't think that interpreting it... But when it comes to the addressable shared memory space discussion in this reference, isn't that just an abstraction that's made up of the individual memories of the different nodes?

[01:16:25] Speaker 03:
That's correct, yes, Your Honor.

[01:16:26] Speaker 03:
And so you're not going to some separate physical location where there's some data warehouse.

[01:16:33] Speaker 03:
It's really more you're dipping into each respective node's own hard disk.

[01:16:38] Speaker 05:
That's right, but the user device isn't seeing what's going on.

[01:16:43] Speaker 05:
They're locating their information in, say, the A drive of the shared memory.

[01:16:48] Speaker 05:
And that doesn't necessarily.

[01:16:49] Speaker 03:
But you have to go.

[01:16:49] Speaker 03:
I mean, if node A, the data it wants, is in the hard disk of node B,

[01:16:57] Speaker 03:
It's going to go to node B to get that data.

[01:17:01] Speaker 05:
In Carter, though, there's no disclosure that node A goes directly to node B, as opposed to some internal workings of the system.

[01:17:10] Speaker 03:
I mean, I guess how else would it work?

[01:17:13] Speaker 02:
What about that element 254?

[01:17:26] Speaker 05:
254, this is from appendix 3416, 254 simply represents the network.

[01:17:34] Speaker 05:
And so I don't think that you can infer from the simple fact that, yes, the nodes are connected via a network.

[01:17:40] Speaker 05:
No one disputes that.

[01:17:42] Speaker 05:
But it doesn't follow from that that the nodes directly connect to each other and see each other as individual NAS devices.

[01:17:49] Speaker 04:
What I'm seeing is just Jen's question.

[01:17:50] Speaker 04:
How else would it work?

[01:17:53] Speaker 05:
Because the connection does not have to be direct.

[01:17:56] Speaker 05:
It could be routed through other nodes, sort of how it's described in Ocean Store, for example.

[01:18:04] Speaker 04:
So that if the resource you want is in a particular location, that resource could be moved to a different location and fetched there.

[01:18:13] Speaker 05:
That's correct.

[01:18:15] Speaker 05:
And the nodes in Carter would not know or care that the information has been physically moved to a different node on the system because they're locating it via its address in the virtual shared memory.

[01:18:31] Speaker 04:
And does that work not just for fetching information but for placing information?

[01:18:37] Speaker 05:
I think it does, Your Honor, because you can either read it or write it.

[01:18:42] Speaker 05:
And the connection can be indirect in either scenario.

[01:18:47] Speaker 05:
And I would note, again, that this is precisely how EMC described Carter in their petition at appendix 813 through 815.

[01:18:58] Speaker 05:
They said that the translation of global addresses into physical locations happens behind the scenes.

[01:19:04] Speaker 05:
The shared memory storage space appears to be a single large hard drive.

[01:19:08] Speaker 05:
That's their words.

[01:19:09] Speaker 05:
That's how the system works.

[01:19:11] Speaker 05:
And it's different from how the 827 patterns are.

[01:19:14] Speaker 04:
You need to wrap this up, but I did interrupt you.

[01:19:16] Speaker 04:
You said you had one little thing.

[01:19:18] Speaker 05:
I hope it's little.

[01:19:21] Speaker 05:
This discussion that we just had was essentially it, that the board didn't find that Carter and Ocean Store's nodes represent themselves to the user devices as NAS devices.

[01:19:34] Speaker 05:
It found that the nodes mimic NAS devices, which is not enough under our construction.

[01:19:40] Speaker 04:
Thanks to all counsel.

[01:19:43] Speaker 04:
The case is submitted.