[00:00:02] Speaker 01:
Our second case this morning is number 18-1987, PAPS Licensing versus APA.

[00:00:10] Speaker 01:
May I please report it?

[00:00:28] Speaker 01:
Hold on one minute until everybody gets settled.

[00:00:31] Speaker 01:
Oh, my apologies.

[00:00:37] Speaker 00:
May it please the court.

[00:00:40] Speaker 00:
I'm going to use my time today to make two points.

[00:00:42] Speaker 00:
The first point is that the board's findings that the recognition limitations for the 399 patent are obvious lacks substantial evidence under the court's recent ruling in personal web 2.

[00:00:53] Speaker 00:
The second point I'm going to make today is that the board's findings that the communication limitations for the 399 patent are obvious lack substantial evidence because those findings are directly contrary to express teachings of the references themselves

[00:01:07] Speaker 00:
which were not addressed by the board.

[00:01:09] Speaker 01:
With regard to the requirement... Is it fair to say you don't challenge the board's claim construction of customary driver?

[00:01:18] Speaker 00:
Claim construction of customary driver?

[00:01:20] Speaker 00:
Yeah.

[00:01:22] Speaker 00:
We do not challenge the board's claim construction of... In which proceeding?

[00:01:27] Speaker 00:
The proceeding we have here.

[00:01:31] Speaker 00:
The IPR we have here.

[00:01:33] Speaker 00:
In the proceeding of ITAC,

[00:01:37] Speaker 00:
With the claim construction, we challenge in the Kawaguchi proceeding where the input-output device and the definition of and.

[00:01:44] Speaker 00:
We don't challenge the other claim constructions in the other proceedings.

[00:01:49] Speaker 00:
Regarding the recognition limitations, under personal web, this court recently ruled when making an obviousness analysis, the mere fact that a certain thing may result from a given set of circumstances is not sufficient.

[00:02:04] Speaker 00:
And in that case, what they said is

[00:02:06] Speaker 00:
If an equally plausible or if more plausible result or understanding exists, then the reference, and it shows that the reference or the limitation is not disclosed, then that reference is not invalidating.

[00:02:20] Speaker 00:
In this case, the board and the petitioners below agree that Kawaguchi, Pucci, and ITAC do not disclose ATAC limitations.

[00:02:28] Speaker 00:
Instead, they rely on the SCSI specification to infer that each of the interface devices

[00:02:34] Speaker 00:
identifies to the host device with the hard disk code 00H in response to an inquiry from the host computer.

[00:02:42] Speaker 00:
Even assuming that the interface devices do receive an inquiry, the more plausible result under the SCSI specification is that they identify themselves as unknown devices.

[00:02:53] Speaker 00:
And then they use software installed on the host device to communicate.

[00:02:58] Speaker 04:
The reason for this is that

[00:03:00] Speaker 04:
I'm concerned, as I was concerned in the previous appeal, that this particular issue wasn't actually raised by you in front of the patent board, your patent owner response.

[00:03:12] Speaker 04:
The other side explains in their red brief why, at least when it comes to this automatic recognition inquiry type limitation, that wasn't really up for debate, at least by your side in the patent owner response.

[00:03:30] Speaker 00:
Well, we believe it was.

[00:03:31] Speaker 00:
With respect to Kawaguchi, the argument was made below in the patent owner response with... About the ATAC IPR.

[00:03:36] Speaker 00:
About the ATAC IPR, I'll address that specifically.

[00:03:39] Speaker 00:
We do believe it was also made there, Your Honor.

[00:03:42] Speaker 00:
It was made below at Appendix 10066.

[00:03:45] Speaker 00:
That's cited ATAC at Column 1028-35.

[00:03:49] Speaker 00:
That's at Appendix 8033.

[00:03:53] Speaker 00:
It was also made at Appendix 10060-61.

[00:03:57] Speaker 04:
Okay, I'm sorry, could you start over again?

[00:04:00] Speaker 00:
10066.

[00:04:05] Speaker 00:
Which volume?

[00:04:07] Speaker 00:
I believe 10066 is in... I'm sorry, I don't have the volume references.

[00:04:13] Speaker 00:
I believe that's in volume three.

[00:04:16] Speaker 00:
I would have to check.

[00:04:21] Speaker 03:
10066 is wrong.

[00:04:22] Speaker 03:
That would be the last.

[00:04:27] Speaker 00:
Volume four One zero zero six four six six where we site itac and then also at six oh six one

[00:04:58] Speaker 04:
Oh.

[00:05:01] Speaker 00:
I'm sorry, 10061?

[00:05:04] Speaker 00:
10060 through 61.

[00:05:05] Speaker 00:
Oh.

[00:05:08] Speaker 00:
And then it was also in Mr. Gafford's attached declaration of 10009.

[00:05:14] Speaker 00:
And to explain the sole passage from ITAC cited by a petitioner in response for its conclusion that the cat box identifies as a hard drive to the PC is, quote, the cat box looks like a hard drive to the PC.

[00:05:28] Speaker 00:
Well, the patent owner below directly challenged that factual predicate.

[00:05:32] Speaker 00:
They said that's not right.

[00:05:34] Speaker 00:
They said ATAC actually or ITAC actually discloses that ITAC's cap box not only appears as a disk, but it also appears as a remote modem or a modem, a print server, or a remote fact.

[00:05:47] Speaker 00:
And Mr. Gafford, remote facts.

[00:05:48] Speaker 00:
And so Mr. Gafford said the same thing in his declaration.

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The patent owner further challenged the petitioner's obviousness conclusion in a section because it relied solely on what it called conclusory testimony unsupported by concrete evidence.

[00:06:05] Speaker 00:
And in that section, the patent owner referred expressly to the communication limitations, or not the communication, the recognition limitations of the, or the allegations regarding the recognition limitations of the 399 patent.

[00:06:23] Speaker 00:
It referred to paragraphs 52 and 53 of the petition which discussed the understanding with regard to claim command interpreters that do the signaling.

[00:06:32] Speaker 00:
It referred to the petition at 55 where it expressly discussed the signaling and the conclusion that the recognition limitations are met.

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Also at 67 to 68 and in those areas where it identified the application of the SCSI specification to conclude that

[00:06:51] Speaker 00:
Opposito would have understood that ITAC sends a hard disk identifier.

[00:06:55] Speaker 00:
So in each of these cases what we found is that the petitioners admitted that the prior ART devices are not SCSI hard drives, but under the SCSI spec in response to an inquiry, the spec says you can only identify as one of 12 different device categories, including 00H

[00:07:19] Speaker 00:
and 1FH for unknown device.

[00:07:23] Speaker 00:
Under the SCSI specification, a peripheral cannot misidentify.

[00:07:26] Speaker 00:
And this is unchallenged by the board and unchallenged by the petitioners.

[00:07:29] Speaker 04:
Under SCSI, if- So what did ATAC mean when it said over and over again that the cat box or the cat disk is going to look like a SCSI hard disk to the PC?

[00:07:43] Speaker 00:
That means we believe, from reading of ATAC, the only conclusion you come to is that it's emulating a hard disk

[00:07:49] Speaker 00:
through the use of installed software.

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And that installed software solely is doing the communication.

[00:07:55] Speaker 00:
And that installed software is solely doing the identification of ITAC to the host computer.

[00:08:00] Speaker 04:
What is the PAPS disclosure doing when it says it's interface devices simulating a hard disk?

[00:08:11] Speaker 04:
I don't see any explanation in the PAPS specification for

[00:08:15] Speaker 04:
how that is being accomplished and what that means.

[00:08:18] Speaker 04:
That could be different than what ATAC is contemplating when ATAC says that its cat disk looks like a hard disk to the PC.

[00:08:30] Speaker 00:
The 399 addresses that issue specifically.

[00:08:33] Speaker 00:
Unlike ITAC, which basically says it just looks like a hard disk, which should be emulation of any type, installed software, 399 addresses it specifically and says,

[00:08:44] Speaker 00:
The interface.

[00:08:46] Speaker 04:
All of the PAPS specifications should be the same, right?

[00:08:51] Speaker 00:
I think it does, in this case.

[00:08:53] Speaker 04:
OK, so when you say 399 addresses this specifically, I'm just asking about the written description.

[00:08:59] Speaker 00:
The written description.

[00:09:00] Speaker 04:
The written description explains what your invention does to simulate a hard disk.

[00:09:12] Speaker 00:
It says expressly that it simulates both in terms of hardware and in terms of software.

[00:09:17] Speaker 00:
And it says that is on the interface device.

[00:09:19] Speaker 00:
That's a disclosure that is absent from ITAC, absent from Pucci, and absent from Kawaguchi.

[00:09:24] Speaker 04:
It's that explanation that distinguishes the two, because... But where in the PACS specification does it explain all this?

[00:09:32] Speaker 04:
Because it just seemed... I didn't really see much of an explanation.

[00:09:39] Speaker 00:
It is in...

[00:09:42] Speaker 00:
The specification of 399, and I do not have the citation handy right now.

[00:09:46] Speaker 00:
I provide it to you in reply.

[00:09:50] Speaker 00:
Under the SCSI spec, the peripheral must identify as what it is.

[00:09:53] Speaker 00:
It can't misidentify.

[00:09:54] Speaker 00:
And the petitioners admit that these interface devices are not hard disks.

[00:09:59] Speaker 00:
Therefore, under the SCSI spec, they cannot identify as hard disks.

[00:10:04] Speaker 00:
We think the more plausible result is that they identify as what they are, which is an unknown device.

[00:10:10] Speaker 00:
and then use installed software to communicate.

[00:10:13] Speaker 00:
And this is supported by the references themselves.

[00:10:15] Speaker 00:
If you look at Kawaguchi, Kawaguchi discusses modification required to be connected to the OSC computer and the STC.

[00:10:25] Speaker 00:
Pucci also discusses the use of specialized software on the, quote, ion system, which Pucci identifies as both the ion node and the software on the workstations.

[00:10:37] Speaker 00:
And the board agrees with that.

[00:10:38] Speaker 00:
The board agrees that the

[00:10:40] Speaker 00:
software on the quote ion system does the emulation and it's also supported by ITAC itself which says that for each file transfer installed software is needed so in conclusion if you understand that each alleged interface device is not a hard drive and SCSI does not allow it to identify as a hard drive the only plausible conclusion is that it identifies as an unknown device under the SCSI spec

[00:11:09] Speaker 00:
I'm going to move quickly on the communications limitations, but essentially, because I'd like to reserve some more time, essentially, neither Pucci nor ITAC or the conclusions by the board under Pucci and ITAC are contrary to the express statements in those references themselves.

[00:11:27] Speaker 00:
Pucci does not state that it uses the SCSI disk driver.

[00:11:30] Speaker 00:
They just infer that the SCSI disk driver is used.

[00:11:32] Speaker 00:
But if you look at what Pucci actually discloses, it discloses application software installed on the workstation.

[00:11:39] Speaker 00:
The board agrees with that.

[00:11:41] Speaker 00:
The board's position was only that it uses the application software to transfer the data, but it also uses the SCSI driver to transfer the data.

[00:11:48] Speaker 00:
But if you look at disclosure, that's directly contrary to the disclosure, because the application contains three tasks.

[00:11:55] Speaker 00:
The third task, quote, defines a SCSI action function, and it says that the third task is what, quote, interfaces to the SCSI bus and returns data to the workstation when request

[00:12:08] Speaker 00:
Pucci expressly discloses that the installed software does the data transfer, not the SCSI driver.

[00:12:14] Speaker 00:
We have an express disclosure on the patent owner's side from Pucci.

[00:12:17] Speaker 00:
On the petitioner's side, we have an inference made solely from the fact that the ION node looks like a hard drive.

[00:12:23] Speaker 00:
Same issue with respect to ITAC.

[00:12:26] Speaker 00:
The board concluded that ITAC communicates because it has the presence of ASPE drivers on the PC.

[00:12:32] Speaker 00:
But the board did not consider the pseudo code or the functionality of the pseudo code

[00:12:38] Speaker 00:
that says the CatSync driver intercepts and, quote, replaces.

[00:12:43] Speaker 00:
That means the CatSync driver is the driver that is sending the communication over the SCSI bus.

[00:12:48] Speaker 00:
It even says it sends it over Loon 0, which is normally the Loon that is used for the ASPE driver.

[00:12:54] Speaker 00:
It precludes the ASPE driver from communicating with the peripheral device by intercepting the file call and replacing it with its own file call.

[00:13:03] Speaker 00:
And that is expressly disclosed.

[00:13:04] Speaker 00:
So again, we have

[00:13:06] Speaker 00:
On our side, an express disclosure that says the only thing that does the file transfer or the communication is the installed software, the CatSync driver.

[00:13:15] Speaker 00:
On the petitioner's side, we have an inference.

[00:13:18] Speaker 00:
You use a SCSI driver only because it appears as a disk.

[00:13:25] Speaker 00:
You want to save the rest of your time for a moment?

[00:13:27] Speaker 01:
I do, Your Honor.

[00:13:34] Speaker 01:
May it please the court.

[00:13:48] Speaker 02:
The board found across three IPRs the basis of three different priority references that every one of the challenge claims is unpatentable as obvious.

[00:13:57] Speaker 02:
Those findings are

[00:13:58] Speaker 02:
amply supported by substantial evidence.

[00:14:00] Speaker 02:
But the court need not reach that question, because every one of those findings has already been made in prior IPRs that are now final as a consequence of their dismissal of the appeals.

[00:14:11] Speaker 02:
It's as though they were never appealed.

[00:14:13] Speaker 02:
In December of 2017, those findings were made.

[00:14:17] Speaker 02:
Our final written decision was not issued until March of 2018.

[00:14:21] Speaker 02:
So those final written decisions, the findings of fact,

[00:14:25] Speaker 02:
in those actions preclude each and every one of the arguments that PAPS is making, especially with respect to the ATEC reference.

[00:14:34] Speaker 02:
And, Your Honor, Judge Dyke, you were right that their arguments and their supplemental just really miss the arguments that we're making.

[00:14:42] Speaker 02:
We're talking about the subsidiary factual findings about what does ATEC disclose, how does ATEC operate.

[00:14:49] Speaker 02:
Those findings of fact with respect to the disclosures in ATEC were necessary

[00:14:54] Speaker 02:
to the conclusions that the board reached in those final written decisions.

[00:14:58] Speaker 02:
And they are the precise assertions of findings of fact that were made here as well, and that Pabst is contesting in this appeal.

[00:15:07] Speaker 04:
So even though... So then under these circumstances, a patent owner like Pabst here basically just has to fight to the death across all of the patents.

[00:15:19] Speaker 04:
Because if it gives up on one, it ends up giving up on all.

[00:15:24] Speaker 02:
That's right, Your Honor.

[00:15:26] Speaker 02:
And they cite the service case.

[00:15:27] Speaker 01:
Well, no, that's actually not right.

[00:15:28] Speaker 01:
All they need to do is say, well, dismiss if you'll stipulate it's not correct.

[00:15:32] Speaker 02:
Exactly, Your Honor.

[00:15:33] Speaker 02:
And they made no outreach to us about that to negotiate what that would be.

[00:15:38] Speaker 02:
But the service case, the footnote one.

[00:15:40] Speaker 04:
Who would they stipulate with?

[00:15:40] Speaker 04:
Would they stipulate with the canon and everybody else over there, or would they be stipulating with you?

[00:15:45] Speaker 02:
Well, I think, Your Honor, that that question highlights one of the difficulties.

[00:15:49] Speaker 02:
Because the IPR final written decisions

[00:15:53] Speaker 02:
are binding against PAPS under the doctor of non-mutual collateral estoppel for the world.

[00:15:59] Speaker 02:
Everyone in the world, not just those who were the petitioners in those proceedings, but everybody is entitled to rely on and not to have to re-litigate

[00:16:08] Speaker 02:
those questions that Pabst has already lost on.

[00:16:11] Speaker 01:
They wouldn't have to stipulate with the world that it was not going to be collateral estoppel.

[00:16:18] Speaker 01:
That would only have to be with respect to us.

[00:16:20] Speaker 02:
That's right, with respect to us in these appeals.

[00:16:23] Speaker 02:
But I think that it's important to note that collateral estoppel is something that applies once the decision has become final.

[00:16:33] Speaker 02:
And their dismissal of their appeals

[00:16:35] Speaker 02:
after they had put us through all of the burden of filing briefs on it, and Your Honor is starting to prepare for argument on it, renders it though as though they were never appealed.

[00:16:45] Speaker 02:
Those final written decisions are final.

[00:16:46] Speaker 03:
You've mentioned that a couple of times.

[00:16:48] Speaker 03:
Does it really matter that the final written decision here was in February 2018 and the 144 and 746 were in December 2017?

[00:16:58] Speaker 02:
I only note that because had they

[00:17:02] Speaker 02:
They're suggesting that they were trying to avoid unnecessary burdens.

[00:17:11] Speaker 02:
had they not appealed those, the board would have been entitled to rely on collateral estoppel once those final decisions had become flat.

[00:17:19] Speaker 03:
I'm trying to understand why that makes any difference or whether it's exactly the same if one says on March 29th or 20th or whatever it was that the appeal was dismissed, those decisions became final and once there's finality then the

[00:17:39] Speaker 03:
But the still pending cases at that point are subject to collateral estoppel.

[00:17:44] Speaker 02:
Your Honor is correct.

[00:17:46] Speaker 02:
As soon as the judgment becomes final for purposes of estoppel effect, that's the relevant time.

[00:17:53] Speaker 02:
And here, because they initially filed a notice of appeal, they would not have had estoppel effect.

[00:18:00] Speaker 02:
Once they dismissed the appeals and the mandate issued, they do have estoppel effect.

[00:18:05] Speaker 02:
My point was that

[00:18:07] Speaker 02:
Had they simply not appealed from the beginning, not put us to the burden of responding to the appeals, those IPRs would have become final even earlier.

[00:18:17] Speaker 02:
And in fact, the board would have been entitled to rely on them in the March 2018 final written decisions at issue here.

[00:18:24] Speaker 02:
So there is no argument that I see in justice that should relieve them of the consequences of their decision to dismiss the appeals.

[00:18:37] Speaker 02:
They had some reason to do that.

[00:18:39] Speaker 02:
They may have thought that those factual issues teed up worse in those earliest of the appeals that the court was going to address.

[00:18:48] Speaker 02:
First, whatever their reasons were doesn't matter.

[00:18:51] Speaker 02:
They made the decision to dismiss without entering into any agreement with us, and they live with the consequences of that.

[00:18:59] Speaker 03:
When you say yes, you mean the entire group that you are standing up and arguing for today.

[00:19:03] Speaker 03:
Apple wasn't part of those, right?

[00:19:05] Speaker 02:
Apple was not part of those.

[00:19:06] Speaker 02:
Samsung was.

[00:19:07] Speaker 02:
Samsung was.

[00:19:10] Speaker 02:
So your honor, they've argued in their supplemental brief or tried to argue that there were some of the findings of fact in those previous IPR final written decisions that were not necessary.

[00:19:22] Speaker 02:
And I would like to address that here because their arguments are misleading.

[00:19:27] Speaker 02:
And I think quite egregiously so.

[00:19:31] Speaker 02:
For example, with respect to the 746,

[00:19:35] Speaker 02:
They assert on page eight of the supplemental brief that whether ATAC discloses an identifier sent in response to an inquiry from the host device was not necessary to the board's decision in respect to 746 patents, independent claims.

[00:19:52] Speaker 02:
Now, that is a true statement with respect to the independent claim.

[00:19:57] Speaker 02:
Is this the claim 84 point that you're calling?

[00:19:59] Speaker 02:
No, no, Your Honor.

[00:20:01] Speaker 02:
They omit to reference that 746, dependent claim 15 requires that the at least one parameter is consistent with the device being responsive to a SCSI inquiry command.

[00:20:14] Speaker 02:
So this precise issue that they say was not necessary to decide the independent claim, whether it's responsive to a SCSI inquiry demand, is essential to dependent claim 15 and at the 746,

[00:20:29] Speaker 02:
ATAC found a written decision at 32.

[00:20:31] Speaker 02:
It specifically addresses claim 15 and says that it is unpatentable because, quote, the SCSI protocol includes the inquiry command and response there, too.

[00:20:41] Speaker 02:
So that was clearly a necessary finding to that.

[00:20:45] Speaker 02:
With respect to their assertion, again, that the 399 patent expressly requires use of a customary driver

[00:20:57] Speaker 02:
for a customary device previously identified in response to an inquiry and that that's not necessary for the 746 independent claims.

[00:21:05] Speaker 02:
746 dependent claim 17 requires that after the at least one parameter has been sent without requiring any end user to load any software.

[00:21:18] Speaker 02:
With respect to that claim 17, 746 ATAC final written decision at 33 to 34.

[00:21:26] Speaker 02:
addresses specifically after the parameter has been sent limitation and says, ATEX Catbox responds automatically to the inquiry command and enables the file transfer without the user loading any software.

[00:21:41] Speaker 02:
And that's based on additional subsidiary factual findings on that page, including that the SCSI driver is a customary driver.

[00:21:48] Speaker 02:
Each one of these factual findings was essential to a determination made

[00:21:54] Speaker 02:
in those proceedings.

[00:21:58] Speaker 02:
Another, I thought, equally misleading contention was that the 144 did not require the board to find misidentification, and that that somehow distinguished it from the 399.

[00:22:15] Speaker 02:
Now, misidentification, of course, nowhere appears in the 399 claim limitations.

[00:22:23] Speaker 02:
Misidentification is the function of two different elements, the elements being that it signals that it's an IO device customary to a host device, and that it does so, quote, regardless of the type of the data transmit receive device attached.

[00:22:40] Speaker 02:
Well, no one's contesting that the SCSI driver hard disk command is a customary

[00:22:51] Speaker 02:
a device to the host device, the only question is, does ATAC signal that it is a SCSI hard disk device?

[00:22:59] Speaker 02:
And in connection with that, the 144 ATAC final written decision at 38 to 39 explicitly finds, as part of finding that the recognition process was disclosed, that Catbox of ATAC would respond to an inquiry command by sending identifying information about a simulated SCSI disk drive.

[00:23:21] Speaker 02:
In each of these instances, what they say was not essential to decide, was in fact decided, was essential to decide, those arguments fail.

[00:23:31] Speaker 02:
And so the court need not go beyond collateral estoppel in this case.

[00:23:36] Speaker 02:
But if it does go beyond collateral estoppel, the board's findings are adequately supported or amply supported by substantial evidence.

[00:23:45] Speaker 02:
I do want to specifically address, though, the question of whether the inquiry and response limitation was raised.

[00:23:51] Speaker 02:
by patent owner below.

[00:23:53] Speaker 02:
All of the arguments we heard today about where that was raised are new.

[00:23:57] Speaker 02:
I heard them for the first time today.

[00:23:59] Speaker 02:
The gray brief does not point to any place in the patent owner response where any argument was made about the inquiring response.

[00:24:09] Speaker 02:
I did a search.

[00:24:10] Speaker 02:
I did a search for misidentification.

[00:24:12] Speaker 02:
I did a search for unknown device.

[00:24:15] Speaker 02:
I did a search for 1FH.

[00:24:16] Speaker 02:
None of those terms appears.

[00:24:20] Speaker 02:
in the patent owner response.

[00:24:22] Speaker 02:
This argument was not made.

[00:24:25] Speaker 02:
What they do argue in the gray brief, as they did in the blue brief, was the argument of attorney about what the SCSI specification means.

[00:24:35] Speaker 02:
And now, that is important.

[00:24:37] Speaker 02:
It's important to hold them to their waiver.

[00:24:39] Speaker 02:
Why?

[00:24:39] Speaker 02:
Because they never raised that in the ATEC proceeding.

[00:24:43] Speaker 02:
It was never elicited in Dr. Gafford's testimony and deposition.

[00:24:48] Speaker 02:
that, as your question indicated, Judge Shen, the 399 patent operates exactly the same way as ATT&CK or Pucci-Kawaguchi, that the interface device returns a signal that it is a hard disk, even though it is not a hard disk.

[00:25:07] Speaker 02:
The suggestion by counsel here today that that would render it inoperable was not made below an ATT&CK.

[00:25:14] Speaker 02:
It wasn't addressed.

[00:25:15] Speaker 02:
But had it been, we would have elicited

[00:25:18] Speaker 02:
this same testimony, and it's Dr. Gafford's testimony at A7086-7087.

[00:25:23] Speaker 02:
And he was asked, well, it doesn't specify in the 399 what that response is.

[00:25:32] Speaker 02:
He says, well, it says it appears as a hard disk.

[00:25:36] Speaker 02:
So we know from that that it would send the response of a hard disk.

[00:25:42] Speaker 02:
That is the same logic that

[00:25:45] Speaker 02:
Dr. Almaroth applied in the ATEC, or Dr. Zadok applied in Kamiguchi and Pucci.

[00:25:52] Speaker 02:
And to suggest that it's impossible for our experts to make that same induction as their own expert makes about how the 399 patent works is not a fair argument to make, but it's certainly not fair to make for the first time on appeal when you never raised it before the board below.

[00:26:11] Speaker 02:
With respect to the customary driver limitation,

[00:26:15] Speaker 02:
Again, the findings are ample, and most importantly, they are an area in which our expert and perhaps experts agreed.

[00:26:26] Speaker 02:
Dr. Gafford's acknowledgement, and this is at A10113, paragraph 59, was that Catbox would reliably transfer good data without using CatSync if the Catbox was being used as a remote hard disk.

[00:26:45] Speaker 02:
for the PC.

[00:26:46] Speaker 02:
What CatSync does is it helps to process.

[00:26:50] Speaker 02:
When there are these multiple types of activities that CatBox would allow, you have to have a synchronization.

[00:26:58] Speaker 02:
You have to have a processor that does that.

[00:27:01] Speaker 02:
But if it's only acting as an external hard drive, you don't need that.

[00:27:06] Speaker 02:
And so you don't use the CatSync.

[00:27:09] Speaker 02:
And without using CatSync, it reliably transfers the good data.

[00:27:13] Speaker 02:
Now their argument about

[00:27:14] Speaker 02:
having to be able to do multiple things.

[00:27:17] Speaker 02:
Interestingly, they made the opposite argument before this court in the prior appeal.

[00:27:22] Speaker 04:
And this court- Let's assume for the moment that the way ATAC works is every single time CatSync kicks in, every single time CatSync intercepts the file call from the PC, from the SCSI drivers.

[00:27:39] Speaker 04:
basically stops it in its tracks, throws it away, and replaces it with the new call, the cat sync call.

[00:27:48] Speaker 04:
And so therefore, is the file transfer really being done by means of the cat sync call?

[00:27:56] Speaker 02:
The 399 patent does not include the without requiring limitation.

[00:28:04] Speaker 02:
They try to import that.

[00:28:05] Speaker 02:
It simply says using or by means of the host driver or the customary driver.

[00:28:15] Speaker 02:
And what the testimony of Dr. Almiroth was, and it was again the concession of Dr. Gaffer, was that that transfer of data happens with the SCSI driver.

[00:28:29] Speaker 02:
And I don't agree with this, and it's not what the testimony of the experts was below.

[00:28:35] Speaker 02:
But even if you assumed that that was required, that paragraph that they cited in column 10, what it suggests is that it's acting basically as a tube.

[00:28:47] Speaker 02:
And the ASPE read command is being sent through it.

[00:28:54] Speaker 02:
It's not doing anything.

[00:28:57] Speaker 02:
And therefore, it is the ASPE driver.

[00:29:00] Speaker 02:
It's the SCSI protocol that is being used to transfer the data.

[00:29:06] Speaker 02:
That's what the board found.

[00:29:07] Speaker 02:
They had two experts who had so testified that supported it.

[00:29:11] Speaker 02:
And that is ample.

[00:29:12] Speaker 02:
But again, the court need not reach that because it was the same finding that was made by the board and other proceedings that are now final.

[00:29:20] Speaker 02:
OK, thank you.

[00:29:25] Speaker 01:
Thank you.

[00:29:25] Speaker 01:
We have a little over two minutes here.

[00:29:41] Speaker 00:
First, I'd like to address the collateral estoppel argument.

[00:29:46] Speaker 00:
Under Ohio Willow and the other cases, the first step that's supposed to be performed is a comparison between the claim language, and then you determine whether the differences between the claim language mature.

[00:29:55] Speaker 01:
No.

[00:29:56] Speaker 01:
I mean, that's when you're trying to say that the claim is precluded by collateral estoppel.

[00:30:01] Speaker 01:
This is an argument that subsidiary issues are resolved by collateral estoppel.

[00:30:06] Speaker 00:
But even the argument that the subsidiary issues have been resolved in the previous proceeding

[00:30:11] Speaker 00:
or incorrect, Your Honor, with respect to the claim that the inquiry from the host was resolved by claim 15 of the 746.

[00:30:19] Speaker 00:
Claim 15 of the 746 merely says that the one parameter is consistent with being responsive to a SCSI inquiry command.

[00:30:28] Speaker 00:
Well, all that requires is that the one parameter is on the menu of the 12 different parameters that's in SCSI.

[00:30:36] Speaker 00:
It does not invoke the inquiry and response, and when you invoke

[00:30:40] Speaker 00:
the inquiry and response, which is in the 399 patent, that response to the inquiry necessarily invokes the rules of SCSI, which say you cannot respond as something you are not.

[00:30:52] Speaker 00:
This does not require a response.

[00:30:54] Speaker 00:
It just says that it has to be one of the devices out of the 12 categories.

[00:30:58] Speaker 00:
It's in table 12.1 of Schmidt.

[00:31:00] Speaker 00:
That's not a distinction.

[00:31:05] Speaker 00:
The other point I'd like to address is this claim that Mr. Gafford

[00:31:11] Speaker 00:
testified that the cat box would reliably transfer data by means of the SCSI driver.

[00:31:18] Speaker 00:
Mr. Gaffer's testimony went to the embodiment in which the cat box or the cat disk is used solely as a disk.

[00:31:24] Speaker 00:
That's not the embodiment that the petitioners relied upon.

[00:31:27] Speaker 00:
They relied on the embodiment that does the full analog digital conversion and everything else that is required by the 399 patent.

[00:31:35] Speaker 00:
If you rely solely on the embodiment where the PC connects

[00:31:40] Speaker 00:
merely to the disk, and that's the only functionality, well, then you lose all the other limitations of the 399.

[00:31:46] Speaker 00:
When you're relying on the embodiment that they relied on, it has to have those other characteristics.

[00:31:52] Speaker 00:
And in that situation, it cannot use the ASPE disk for the reason I explained earlier.

[00:31:57] Speaker 01:
OK.

[00:31:57] Speaker 01:
Thank you, Mr. Professor.

[00:31:58] Speaker 01:
Thank you, both counsels.

[00:31:59] Speaker 01:
The case is submitted.

[00:32:00] Speaker 01:
This concludes our session for this morning.

[00:32:06] Speaker 01:
All rise.

[00:32:06] Speaker 01:
The audit report is adjourned until tomorrow morning.

[00:32:08] Speaker 01:
It's in the spot, AM.