[00:00:02] Speaker 00:
We have two argued cases this morning.

[00:00:04] Speaker 00:
The first is number 18-1777, PAPS licensing versus Samson.

[00:00:14] Speaker 00:
Mr. Donahue.

[00:00:27] Speaker 04:
Thank you for having us here today.

[00:00:30] Speaker 04:
So the inventive concept of the 437 patent at its core really relates to the interplay between two limitations, the automatic file transfer process limitation and the automatic recognition process limitation.

[00:00:43] Speaker 04:
And what the 437 basically says is when an interface device is attached to a host computer, the interface device, though it isn't a hard drive, represents itself through an identifier to the host

[00:00:59] Speaker 04:
and says that it's a hard drive even though it is not and then the host treats it as if it was a hard drive even though it isn't for purposes of file transfer and other communications using the customary driver associated with the hard drive.

[00:01:13] Speaker 04:
Now the very key important point here that I need to make is that the 437 patent for both the automatic recognition process and for the file transfer process prohibits

[00:01:26] Speaker 04:
end-user software from being loaded onto the host device to assist in either identification or in file transfer.

[00:01:34] Speaker 04:
That's correct and that's the claim construction issue that is before the court today or at least potentially if we can take that up and if you'd like I'd take that up now.

[00:01:48] Speaker 00:
We have this issue of collateral estoppel here and if I

[00:01:54] Speaker 00:
I've read the parties briefs, obviously, but it seems to me the two of you are directing yourself to different issues.

[00:02:02] Speaker 00:
You're directing yourself to the issue of whether the claims are patentably indistinct from a claim which was invalidated or held unpatentable in the other IPRs, whereas the petitioner here is not really making that argument.

[00:02:21] Speaker 00:
Instead, they're saying they're sort of sub-arguments

[00:02:24] Speaker 00:
that are collateral estoppel from the other IPRs.

[00:02:27] Speaker 00:
And of course, we can have collateral estoppel at both levels, both at the overall level of patent unpatentability and also with respect to specific issues in the case.

[00:02:40] Speaker 00:
And what they're saying, I understand, is that the claim construction issue, with respect to without requiring, was resolved in the earlier IPRs, and that the question of whether

[00:02:53] Speaker 00:
or whatever it is, satisfies that limitation was also resolved against you in the earlier IPRs.

[00:03:02] Speaker 00:
So could you address that?

[00:03:04] Speaker 00:
Sure.

[00:03:05] Speaker 04:
Well, as an initial matter, I don't think collateral estoppel applies on any level here.

[00:03:10] Speaker 04:
Why is that?

[00:03:11] Speaker 04:
Because there's a line of cases from the Federal Circuit, for example, the Cygnus case that we cited in our brief, that says that when it doesn't make sense from a

[00:03:23] Speaker 04:
It doesn't further the goals of a collateral estoppel, and it doesn't result in judicial economy.

[00:03:28] Speaker 04:
You wouldn't apply collateral.

[00:03:31] Speaker 01:
They're not that broad.

[00:03:31] Speaker 01:
Siegnus was a case about actual formal consolidation.

[00:03:36] Speaker 01:
And that didn't happen here.

[00:03:37] Speaker 01:
In fact, they were largely on the same timing track.

[00:03:41] Speaker 01:
Not quite.

[00:03:43] Speaker 01:
And they were not formally consolidated.

[00:03:45] Speaker 04:
Yes, Your Honor.

[00:03:46] Speaker 04:
That's correct.

[00:03:46] Speaker 04:
That involved a multi-district litigation.

[00:03:49] Speaker 04:
And of course, there was an adverse invalidity finding.

[00:03:52] Speaker 04:
the defendants attempted to apply collateral estoppel to the settled out, using the settled out defendants decision.

[00:04:04] Speaker 01:
But here.

[00:04:04] Speaker 01:
And it's long standing law that you need an actual separate case for collateral estoppel.

[00:04:09] Speaker 01:
So intra case stuff doesn't count.

[00:04:11] Speaker 04:
Correct.

[00:04:11] Speaker 04:
And what's happened here is obviously these were all consolidated for purposes of oral argument, all of these IPRs.

[00:04:18] Speaker 04:
So we were now running on the same time frame.

[00:04:20] Speaker 00:
And so why is that sufficient to preclude collateral supplement?

[00:04:26] Speaker 00:
That's happened in some of our other cases, hasn't it?

[00:04:31] Speaker 04:
Well, it has.

[00:04:32] Speaker 04:
And in fact, there's a World's case that came out very recently that appears to be mindful of that fact that in the IPR setting, this is becoming more of an issue because you typically have multiple IPRs and multiple patents and a patent family that are running along the same time frame.

[00:04:50] Speaker 04:
And oftentimes, the patent owner, for the sake of streamlining issues for the court and for the sake of judicial economy, elects not to appeal certain decisions while it appeals other ones.

[00:05:03] Speaker 04:
And what happened in the World's case was that

[00:05:05] Speaker 01:
There were We did not decide the question in the world so we remanded Stating two things one that It wasn't entirely clear that it was actually the same issue there because it had to do with certain Contract relations that might change whether there was a real party in interest and then we said

[00:05:27] Speaker 01:
partly for that reason we're going to remand and on the remand the board should consider that and should also consider any other reason that might fall into restatement of judgments 28 or sickness type considerations why there might not be.

[00:05:42] Speaker 01:
So I mean that's not really an answer to the question, just an identification of the question.

[00:05:48] Speaker 04:
That's correct your honor, it hasn't been finally decided by this.

[00:05:50] Speaker 00:
What's the difference between this case and Max Linear?

[00:05:56] Speaker 04:
Well in this case

[00:05:57] Speaker 04:
Again, because the decision, because collateral estoppel is an equitable doctrine, what we're saying here is that... But I'm asking you to distinguish max linear.

[00:06:08] Speaker 00:
There were contending cases there which we held would be collateral estoppel.

[00:06:16] Speaker 00:
But I think if I believe... Some of them were resolved adversely.

[00:06:23] Speaker 04:
So I need to...

[00:06:25] Speaker 04:
I need to grab the max linear case, I'm sorry.

[00:06:40] Speaker 04:
Okay, so the max linear case involved a situation in which the dependent claims of, it was the same patent and there were independent claims that were invalidated and then the dependent claims

[00:06:53] Speaker 04:
The issue was whether those were also collaterally stopped.

[00:06:56] Speaker 00:
And that issue... Why is that a distinction?

[00:07:00] Speaker 00:
There were copending cases.

[00:07:05] Speaker 00:
Some of them were decided, and they were held to be collateral estoppel on the remaining cases.

[00:07:11] Speaker 00:
And when we specifically said it, it doesn't make any difference that they were copending.

[00:07:17] Speaker 04:
So my understanding of the Max Lanier case was that

[00:07:21] Speaker 04:
Because the issues of patentability were, the overlap in the claim language was such that it was so substantially identical that there were no material differences.

[00:07:32] Speaker 00:
You're talking about the merits of the thing.

[00:07:34] Speaker 00:
I'm talking about whether the doctrine of collateral stock applies.

[00:07:37] Speaker 00:
And we said that it did.

[00:07:39] Speaker 04:
But nobody brought up, I believe, the issue of the Cygnus case in that particular proceeding.

[00:07:46] Speaker 00:
Well, we addressed the question.

[00:07:48] Speaker 00:
We said the fact that they're copending doesn't mean that there's

[00:07:51] Speaker 00:
I think that's true.

[00:07:55] Speaker 04:
It's not necessarily the case.

[00:07:56] Speaker 04:
It's true that just because they're copending, it's an equitable doctrine.

[00:08:01] Speaker 04:
You can consider whether or not under the facts of any particular case, whether or not it makes sense.

[00:08:06] Speaker 00:
And in this particular... Max Linnear doesn't say that.

[00:08:08] Speaker 00:
And I don't know what other case says that you'd consider on the facts of the individual case, whether the policy... Well, I believe that's what Cygnus is talking about is that

[00:08:20] Speaker 04:
It doesn't further the goals of collateral estoppel to not give the patent owner the first bite of the apple to begin with.

[00:08:32] Speaker 00:
When they streamline a case, you don't want to encourage judicial inefficiencies by forcing a... All you had to do was to get a stipulation from the other side that the dismissal wouldn't have collateral estoppel effect.

[00:08:45] Speaker 00:
You didn't ask for that.

[00:08:46] Speaker 00:
You didn't get it.

[00:08:48] Speaker 04:
Yes, Your Honor, but I believe that the issue was that nobody believed collateral estoppel would apply here, A, because of the differences in the claim language that we did brief, and B, because it's an equitable doctrine.

[00:09:00] Speaker 04:
And it seems to me that it would be patently unfair to apply collateral estoppel in this instance.

[00:09:05] Speaker 01:
It's hard to say nobody believed.

[00:09:07] Speaker 01:
I mean, it took about four seconds for the other side to raise the issue.

[00:09:13] Speaker 04:
Well, they did raise the issue, and I believe they did it to complicate this case, whereas we were trying to streamline it.

[00:09:18] Speaker 04:
I think they were trying to inject those.

[00:09:20] Speaker 00:
To complicate the case?

[00:09:21] Speaker 00:
I think they did it to win the case.

[00:09:23] Speaker 00:
They're entitled to do that.

[00:09:24] Speaker 00:
But going back, let's assume that collateral estoppel does apply.

[00:09:29] Speaker 00:
Sure.

[00:09:29] Speaker 00:
Do you have any argument as to why there is no collateral estoppel with respect to the cone construction?

[00:09:35] Speaker 00:
Sure.

[00:09:35] Speaker 00:
And whether the friar are satisfied with that requiring cone construction?

[00:09:40] Speaker 04:
Yes, I think in our brief we talk about the differences between the 437 patent and the 144 patent.

[00:09:48] Speaker 02:
Isn't the phrase, though, identical in both the 437 and the 144, the without requiring file transfer enabling software to be loaded onto the user's computer?

[00:10:04] Speaker 04:
Yes, the without requiring language appears, but the rest of the claim language to which it refers is different.

[00:10:10] Speaker 02:
But I don't understand how that would make a difference in the context of whether the issues were really identical.

[00:10:18] Speaker 04:
So let me try to give an example.

[00:10:20] Speaker 04:
The 144 patent loses the concept of misidentification.

[00:10:24] Speaker 04:
It just says you send an identification parameter to identify the ADGPD.

[00:10:30] Speaker 04:
It doesn't say you identify it as a hard drive instead of as an ADGPD.

[00:10:35] Speaker 04:
And so in that instance, it is possible that you would send

[00:10:39] Speaker 04:
the hard drive identifier without requiring end user software because after all then the ADGPD is just properly identifying as the device class for which it belongs, the hard drive class, and it wouldn't need end user software to be loaded onto the host.

[00:10:54] Speaker 02:
So that's why the difference in the claim language matters here because in one instance you may be able to get away with... I thought the whole argument in both the Canon IPR and the Samsung IPR is

[00:11:07] Speaker 02:
What is the role of CatSync?

[00:11:09] Speaker 02:
And is CatSync file transfer enabling software or not?

[00:11:14] Speaker 02:
As, you know, that term is used in the claim, and that term is the same term that's used in both patents.

[00:11:22] Speaker 04:
Sure, it is used in both patents, but the claim construction that is applied over in the 144 patent, it wasn't necessarily the decision because in that particular patent, you didn't need

[00:11:37] Speaker 04:
to misidentify the device so it is possible that you could use the customary driver and not have to resort to the use of end user software because it could identify itself as what it actually is, a hard drive.

[00:11:50] Speaker 04:
Whereas over here, it is different, there is this concept of misidentification and so now you have to determine whether or not the CatSync driver can transfer files without requiring end user, excuse me, whether the host device can

[00:12:06] Speaker 04:
obtained files from the cat sync, from the cat box without using the cat sync.

[00:12:12] Speaker 04:
And the answer is no, the file input output command is actually issued by the specialized cat sync driver.

[00:12:19] Speaker 04:
And as it relates to the 437 patnet issue here, that's actually outcome determinative because there's no way, there's nothing presented in ATAC for how the file input output command could be exercised without the cat sync driver.

[00:12:37] Speaker 02:
other argument against collateral sapal, what I'll call your fairness, equity, and justice argument.

[00:12:46] Speaker 02:
And I think about max linear.

[00:12:49] Speaker 02:
Perhaps one distinction is that here we have all these cases that are

[00:12:56] Speaker 02:
scheduled for oral argument on the same day.

[00:12:58] Speaker 02:
Whereas in max linear, yes, those were appeals from IPRs that were copending at the same time in front of the court.

[00:13:04] Speaker 02:
They were at different stages, though, and then one matured earlier than the other and got a decision.

[00:13:09] Speaker 02:
And I'm just trying to understand why would it make a legal difference why, in your case, given that all the oral arguments from the various IPRs were scheduled for the same day at this court, that that is

[00:13:26] Speaker 02:
an important distinction, a matter of applying lateral estoppel?

[00:13:31] Speaker 04:
Well, I think it is an important distinction, and perhaps I didn't articulate it well, but that was the point I was trying to make with the fact that this was consolidated for oral argument.

[00:13:40] Speaker 04:
That puts us more in line with the Cygnus case, in which it was a multi-defendant litigation, and the court found that that was one action.

[00:13:48] Speaker 00:
This wasn't consolidated for oral argument, was it?

[00:13:52] Speaker 00:
It was just scheduled on the same day.

[00:13:54] Speaker 04:
OK, but yes, that's fair.

[00:13:57] Speaker 04:
But the point being, we were going to decide all the issues.

[00:14:00] Speaker 04:
We were going to argue all the issues on the same day here.

[00:14:03] Speaker 04:
And so I think it does put us more in line with the sickness case.

[00:14:07] Speaker 04:
I did want to reserve, I'm running up against my time limit.

[00:14:10] Speaker 04:
I did want to reserve at least a minute here for rebuttal.

[00:14:14] Speaker 00:
Well, I'm going to give you a couple of minutes for rebuttal.

[00:14:16] Speaker 00:
Why don't you spend a couple of minutes discussing apart from collateral stock of what's wrong with the commission

[00:14:23] Speaker 00:
Thank you.

[00:14:33] Speaker 04:
Yes.

[00:14:33] Speaker 04:
So I think that, again, that the main issue here is the interplay between the two limitations, the automatic recognition process and the automatic signaling limitations.

[00:14:45] Speaker 04:
And the ATAC

[00:14:46] Speaker 04:
Catbox device is about as specialized of a device as you can imagine.

[00:14:50] Speaker 04:
It requires all kinds of drivers to be... What about the claim construction?

[00:14:53] Speaker 04:
Is the claim... Are you disputing the claim construction?

[00:14:57] Speaker 04:
Yes, but it may not matter, and so I'd rather... What's wrong with the claim construction?

[00:15:01] Speaker 04:
The claim construction determined that without requiring meant not necessary as opposed to prohibited.

[00:15:09] Speaker 04:
And in my... The way I read these claims, I believe that the whole point of the 437 patent invention

[00:15:16] Speaker 04:
is to allow automatic file transfer and automatic recognition.

[00:15:20] Speaker 04:
And if you allow any type of software to be loaded on the host, whether it's required or not, you destroy the automatic principle of the invention.

[00:15:32] Speaker 04:
Because after all, if someone does something, whether they need it to or not, the process is no longer automatic.

[00:15:37] Speaker 04:
That's it?

[00:15:39] Speaker 04:
Well, I mean, there's case law that we cited, the Segan case, in which the

[00:15:46] Speaker 04:
The court construed the without requiring language in a computer networking context as opposed to what was done in the Celsius case, which was cited by the board.

[00:16:03] Speaker 04:
And they found that the without requiring language meant that you don't take some action, meaning if you do take some action, you have not met the claim language.

[00:16:11] Speaker 04:
And so they found that it was prohibited.

[00:16:14] Speaker 04:
in the sense that their claim construction said that without requiring meant you don't do something.

[00:16:19] Speaker 04:
And so that is the legal position that we're taking, is that that is the appropriate definition for without requiring.

[00:16:29] Speaker 04:
But to be clear, under any definition of without requiring, the file input output command is being done by the CAT sync.

[00:16:38] Speaker 04:
driver, and ATAC affords no other possibility.

[00:16:41] Speaker 00:
It says that in the suit of... Why isn't that finding supported on substantial evidence?

[00:16:50] Speaker 04:
Because there was no evidence for that.

[00:16:51] Speaker 04:
The only thing that was said was an inference in the petition.

[00:16:56] Speaker 04:
They cited to a conclusory testimony from petitioner's expert and a conclusory assertion in the petition where the only reason why the

[00:17:08] Speaker 04:
they found that the cat sync driver wasn't necessary, as they said, well, if you removed it or weren't using it, you could default to using the ASPI driver for the file input output command, which is the customary driver.

[00:17:23] Speaker 04:
But that's never mentioned in the ATAC reference.

[00:17:28] Speaker 04:
It never says that you can remove it, and in fact, if you do remove the cat sync driver, you no longer have an interface device that's operable

[00:17:36] Speaker 04:
because you lose all of the synchronization and coordination between the host computer and the processors of the cat box.

[00:17:43] Speaker 04:
And so they really, there was no evidence presented at all on that point.

[00:17:47] Speaker 02:
I guess the question is, is there a distinction between what is the software that's doing the function of reading and writing from the disk versus what is the function of

[00:18:00] Speaker 02:
coordinating different processors needed to access a given disk and the function of clearing a cache.

[00:18:09] Speaker 02:
And so if you think perhaps more narrowly as to what is the function of the read-write, maybe that did come from the SCSI drivers that are already on the PC.

[00:18:27] Speaker 04:
So I'd call the Court's attention to the ATAC disclosure at the appendix 401 through 402, and its lines 1063 through 11.5.

[00:18:36] Speaker 04:
And it actually says right there that the CAT sync is directly involved in every file transfer.

[00:18:43] Speaker 04:
And it says that the CAT sync hooks the file input-output calls from the PC operating system and replaces it with the pseudocode.

[00:18:50] Speaker 04:
And what the pseudocode says, in addition to performing synchronization functionality and cache functionality, step four says,

[00:18:57] Speaker 04:
make the intended file input output call.

[00:19:00] Speaker 04:
So the CatSync driver, this pseudo code of the CatSync driver is the driver that actually makes the file input output call.

[00:19:07] Speaker 04:
So it is clearly file transfer enabling software.

[00:19:10] Speaker 04:
It doesn't get more file transfer enabling than making the file input output call.

[00:19:13] Speaker 02:
But if we were to affirm the board's claim construction, then what that would mean is the claim should be understood as

[00:19:24] Speaker 02:
There can be software loaded on the user device, but nevertheless the system in the prior art

[00:19:33] Speaker 02:
can still perform the function of transferring a file without that software that has been, that specialized software that's been loaded onto the PC.

[00:19:43] Speaker 02:
So now we're living in this hypothetical world of looking at ATAC and trying to figure out, okay, could the ATAC PC make a read-write call to the CAT disk without relying on the specialized software of CAT sync?

[00:20:02] Speaker 02:
And the board appeared to make the call that yes, it could.

[00:20:09] Speaker 02:
It wouldn't be as reliable as if ATAC had its cat sync software, but it could still be done.

[00:20:20] Speaker 02:
It would have to be done successfully probably under certain

[00:20:24] Speaker 02:
circumstances, nothing in the cache, no cat box isn't also trying to access the cat disk at the same time, that sort of thing.

[00:20:33] Speaker 02:
But if you remove those circumstances, then you would have, in the board's view, a clean opportunity for the SCSI driver to go get the file from the cat disk.

[00:20:44] Speaker 04:
So two things.

[00:20:47] Speaker 04:
The ATEC reference never says anything about being able to remove CAT sync.

[00:20:52] Speaker 04:
It says that CAT sync does make the file input-output call, and there's reasons for it like we discussed because of the synchronization.

[00:20:59] Speaker 04:
And so I don't think that under any claim construction, and also the other issue is, and this is something that I don't think the board addressed in any meaningful way, would a person of skill in the art be motivated to not

[00:21:17] Speaker 04:
to remove the cat sink and destroy the functionality of the cat box completely.

[00:21:21] Speaker 02:
I understand that's a 103 argument.

[00:21:23] Speaker 02:
Here we are looking at a different creature and that's due to perhaps the way you drafted the claim with the without requiring language and then once you construe that language what that forces us to think about.

[00:21:38] Speaker 02:
And so it's not quite a motivation to modify the ATAC reference to yank out the cat sink, and then why would anybody do that?

[00:21:46] Speaker 02:
I think you've got a great argument that no one would want to do that.

[00:21:49] Speaker 02:
But that's not the exact precise question we're confronted with right now.

[00:21:55] Speaker 02:
What we're confronted with is, is there substantial evidence to support the board's fact finding that ATAC could work, could transfer a file to its PC

[00:22:08] Speaker 02:
without using cat sync?

[00:22:11] Speaker 04:
And I think the only way that that could work is if it was actually a hard drive and that's all it was.

[00:22:16] Speaker 04:
So if you were doing standard SCSI signaling in which you ask a hard drive, not an interface device, but if all of the functionality of the cat box goes away and we're saying we don't care about it, it's inoperable.

[00:22:30] Speaker 04:
And you only say, do an inquiry and say,

[00:22:34] Speaker 04:
what are you, and it actually is a hard drive, and then it signals back and says it is a hard drive, then the host obviously could treat it as a hard drive and use the ASPE drivers to communicate with it.

[00:22:45] Speaker 04:
But then it's no longer an interface device.

[00:22:46] Speaker 04:
It doesn't meet any of the other limitations.

[00:22:49] Speaker 04:
And so what they've basically done is just say that scan, what they're really saying is standard SCSI signaling invalidates the patent because they've basically reduced the interface device to a hard drive and said if you send a signal and it just identifies as what it is,

[00:23:04] Speaker 04:
then you could use the standard driver.

[00:23:05] Speaker 04:
That's not the claim language.

[00:23:10] Speaker 00:
All right.

[00:23:10] Speaker 00:
I think we're out of time.

[00:23:11] Speaker 00:
We'll give you two minutes.

[00:23:13] Speaker 00:
Thank you.

[00:23:27] Speaker 03:
May it please the court?

[00:23:29] Speaker 03:
the court should affirm the decision of the board.

[00:23:32] Speaker 03:
You're not claiming collateral estoppel at the claim level.

[00:23:35] Speaker 00:
You heard the exchange earlier.

[00:23:36] Speaker 03:
We are not claiming collateral estoppel at the claim level, Your Honor.

[00:23:39] Speaker 03:
We are not saying that because claim one of the 114 patent is unpatentable, ipso facto claim one of the 437 is unpatentable.

[00:23:49] Speaker 03:
It's the subsidiary.

[00:23:50] Speaker 03:
Yes, perhaps really does misapprehend our argument.

[00:23:53] Speaker 03:
We are saying it's the subsidiary findings that are entitled to collateral estoppel.

[00:23:58] Speaker 03:
effect and we spelled it out in great detail in our brief but of course you received a supplemental brief from PAPST on Tuesday and with your permission I wanted to focus more on responding to their particular arguments that they have made.

[00:24:14] Speaker 03:
So they've argued that in the 746, the patent, the automatic recognition process

[00:24:25] Speaker 03:
does not have the without requiring any software limitation.

[00:24:30] Speaker 03:
Therefore, the factual findings with regard to that would not have been necessary to the judgment.

[00:24:36] Speaker 03:
That's incorrect for a few reasons.

[00:24:37] Speaker 03:
They're concentrating on the independent claims of the 746.

[00:24:42] Speaker 03:
If you go to claim 17, dependent claim 17 of the 746, there you do get a limitation of without requiring any software.

[00:24:51] Speaker 03:
And that's more in connection with without requiring any software profile system.

[00:24:55] Speaker 03:
information, but of course you would need that file system information to be able to later on read files from the system.

[00:25:03] Speaker 03:
Can I ask you this question?

[00:25:05] Speaker 01:
I guess I had taken it and I'm not sure I understood everything, but I had taken

[00:25:12] Speaker 01:
on this patent and sort of similar in the next case, that the principal distinction that Pat was trying to argue was even at the issue level there is an issue having to do with the automatic recognition here and the inquiry and response and the other one that wasn't decided in those other cases.

[00:25:36] Speaker 01:
Can you focus on that specifically and then just in particular

[00:25:42] Speaker 01:
Does your argument that that's not really an issue here depend on your argument about waiver as to automatic recognition?

[00:25:56] Speaker 03:
It doesn't depend solely on that, Your Honor.

[00:25:58] Speaker 03:
We certainly say they forfeited all their arguments with regard to automatic recognition by not raising it in front of the board.

[00:26:03] Speaker 03:
But I think, Your Honor, what you may be getting at is that in, to claim one of the 437 patents,

[00:26:09] Speaker 03:
There's a limitation of without requiring loading any software in the automatic recognition process, whereas the without requiring limitation in the file transfer process is with regard to without requiring the loading of any file transfer enabling software.

[00:26:23] Speaker 03:
And there were necessary factual findings with regard to loading without loading any software for the automatic recognition process.

[00:26:32] Speaker 03:
In the 746 IPR on page 33 of that final written decision with regard to claim 17,

[00:26:39] Speaker 03:
There's the finding cat box responds automatically to the inquiry command and enables file transfer without the user loading any software.

[00:26:50] Speaker 03:
So that's in response to the inquiry command.

[00:26:51] Speaker 03:
So that's actually part of the recognition process.

[00:26:55] Speaker 03:
Further in that IPR at page 29, there's a factual finding.

[00:27:01] Speaker 03:
There's no evidence in the record that the cat sync driver, which is what they've been pointing to as special software,

[00:27:07] Speaker 03:
is needed for the inquiry, read, or write commands.

[00:27:11] Speaker 03:
And that really addresses all of their arguments with regard to both the two limitations as to whether special software is required.

[00:27:18] Speaker 03:
And those findings were necessary to the IPR decisions, Your Honors.

[00:27:23] Speaker 03:
So if we look at Graham against John Deere, it says that obviousness is a legal finding that's based upon subsidiary factual findings.

[00:27:32] Speaker 03:
And so the board is faced with these multiple inter partes reviews

[00:27:36] Speaker 03:
And its task is to look at the prior art.

[00:27:40] Speaker 03:
What is the scope and content of ATAC plus the SCSI specification and the applicant admitted prior art?

[00:27:48] Speaker 03:
And their task is to figure out what does it do?

[00:27:51] Speaker 03:
And so they have issued a panoply of factual findings as to what ATAC really did.

[00:27:57] Speaker 03:
So they can then say that that is what was in the prior art.

[00:28:01] Speaker 03:
Now we're going to look at the smorgasbord of claims from all these patents.

[00:28:05] Speaker 03:
and see whether or not the limitations of those claims are taught or suggested.

[00:28:10] Speaker 03:
And so their task required them to make all of these factual findings as to how ATAC really works.

[00:28:17] Speaker 01:
And when you look at the argument... Right, but if they made some findings in, let's call it case number one, that turned out not to be necessary to the judgment under standard collateral estoppel principles, those particular findings would not have collateral estoppel effect, if only because if that was the only thing wrong, nobody would appeal.

[00:28:37] Speaker 03:
Right.

[00:28:37] Speaker 03:
In the circumstance you asked, yes, only things that are necessary to the judgment in that particular case.

[00:28:42] Speaker 03:
But when they're faced, for example, with a limitation saying,

[00:28:45] Speaker 03:
there should be, were without requiring software to be loaded to get file system information.

[00:28:51] Speaker 03:
And they go and look at ATAC and they say, actually, no software is required to be loaded at all for anything with regard to recognition, file system information, or file transfer.

[00:29:03] Speaker 03:
That was a factual finding with regard to how the prior art actually worked, what the scope and content of the prior art was.

[00:29:09] Speaker 03:
And under Graham, it was the task assigned to them so it was necessary.

[00:29:13] Speaker 03:
to the judgment.

[00:29:14] Speaker 03:
That's the argument that we are making.

[00:29:16] Speaker 01:
Does your argument depend on that?

[00:29:18] Speaker 01:
That all findings they made about the prior art, even if some of those findings were not actually necessary to finding the claim elements met, collateral estoppel, that seems a little strong.

[00:29:33] Speaker 03:
Even that's not necessary to argument, Your Honor, even if we were to say only if you can tie a particular limitation to the one particular patent

[00:29:43] Speaker 03:
and that limitation is not in another patent, we would still prevail because of the whole range of factual findings they have made that preclude the arguments that are being made in this particular case with regard to the 437 patent, which of course is very similar to the 144 in almost all of its elements.

[00:30:04] Speaker 03:
So Your Honor, not only have they ignored the fact that the dependent claims

[00:30:10] Speaker 03:
in some of these patents include the limitations they're saying were missing from the independent claims.

[00:30:16] Speaker 03:
They argue that, well, the 746 doesn't have a limitation without requiring any software.

[00:30:22] Speaker 03:
But if you look at the other patent, the 144, in the final written decision there, they did have to deal with it without requiring any software for the automatic recognition process.

[00:30:33] Speaker 03:
And there was a specific finding that on page 38 of the 144 final written decision,

[00:30:39] Speaker 03:
Petitioner further explains that there is no need for the end user to load any software onto the computer because the SCSI drivers that enable the host computer to access the simulated SCSI hard disk of the cat box would have been installed prior to the use of the computer.

[00:30:55] Speaker 03:
That factual finding answers their challenge to whether or not there should be a stopple with regard to this any software or without requiring any software limitation.

[00:31:07] Speaker 02:
What about their alternative argument against collateral estoppel, the fairness, equity, justice, and the American way theory?

[00:31:16] Speaker 02:
I think what they're trying to say is maybe we should all take a big step back and see what's going on here.

[00:31:24] Speaker 02:
And all of these patents have a common specification.

[00:31:29] Speaker 02:
So even though we have multiple patents staring at us,

[00:31:33] Speaker 02:
we should maybe think of it as just one big omnibus patent with a lot of different claims.

[00:31:39] Speaker 02:
And now there's a class of petitioners, you and the 40 people sitting behind you, that are petitioning to attack various claims in this one omnibus patent.

[00:31:50] Speaker 02:
And it's all done in a coordinated fashion.

[00:31:52] Speaker 02:
And so all these proceedings are going through the board at essentially the same time.

[00:31:58] Speaker 02:
And then they are all brought to this court at the same time.

[00:32:02] Speaker 02:
possible mourning of oral argument for all of them.

[00:32:06] Speaker 02:
And then somewhere along the line, the patent owner settles out with some of these classic petitioners.

[00:32:16] Speaker 02:
Would that be a circumstance where collateral estoppel ought to apply?

[00:32:20] Speaker 03:
Yes, Your Honor.

[00:32:21] Speaker 03:
And of course, settlement was not the reason for this particular collateral estoppel problem.

[00:32:26] Speaker 03:
They chose to appeal from eight judgments that they have now,

[00:32:32] Speaker 03:
voluntarily dismissed without getting any kind of stipulation from us.

[00:32:36] Speaker 03:
They never even thought to ask for it.

[00:32:38] Speaker 03:
They forced us to go through briefing on everything.

[00:32:40] Speaker 03:
They forced for the briefs to be distributed to your honors.

[00:32:44] Speaker 03:
Fairness is more on our side.

[00:32:46] Speaker 03:
They knew full well the consequences of what they were doing.

[00:32:49] Speaker 03:
Just three years ago, the Supreme Court and BNB hardware said that it's longstanding law that collateral estoppel applies to the decisions of Article One tribunals unless Congress expressly says otherwise.

[00:33:00] Speaker 03:
So this is not a secret.

[00:33:02] Speaker 03:
So it's quite fair for them to live with the consequences that were well known for their actions.

[00:33:14] Speaker 03:
Your Honor, I should address, I suppose, the misidentification limitation.

[00:33:19] Speaker 03:
They strangely have said it's not part of the 144 application, the 144 patent.

[00:33:26] Speaker 03:
Now, this is strange given that the opening statement is that

[00:33:30] Speaker 03:
Misrepresenting is actually part of this invention.

[00:33:32] Speaker 03:
This goes back to Your Honor's prior decision in 2015 about the importance of mimicking in this.

[00:33:40] Speaker 01:
Did the board in either the 144 or the 746 make a finding about misidentification?

[00:33:48] Speaker 03:
It did not, Your Honor.

[00:33:49] Speaker 03:
Really?

[00:33:50] Speaker 01:
Then there's really not much of a launching pad about that degenerate to say that at the level of a finding, there was an earlier finding that creates collateral and stuff.

[00:34:00] Speaker 03:
What's strange, Your Honor, is that they are arguing now that that is what is somehow missing from these limitations and therefore there ought not be collateral estoppel.

[00:34:09] Speaker 03:
With regard to the 144 patent, if we go down to claim 84 rather than claim 1, there we have this exact limitation similar to the 437 patent where the 437 patent where they're saying it requires misidentification is that it identifies as a digital storage device instead of as an ADGPD.

[00:34:27] Speaker 03:
Whereas in claim 84 of the 144,

[00:34:29] Speaker 03:
It says parameters consistent with the ADGPD being a mass storage device.

[00:34:37] Speaker 03:
So there's the same kind of language they're calling out from the 144 as evoking.

[00:34:44] Speaker 01:
But to go back to where I think I started with you, am I right in understanding that you contend that misidentification was an issue forfeited in this proceeding?

[00:34:57] Speaker 01:
In the current proceeding?

[00:34:59] Speaker 03:
I do not recall them arguing that in the 437 IPR, Your Honor.

[00:35:04] Speaker 03:
So I think the answer would be yes, if my memory is correct.

[00:35:07] Speaker 01:
I thought you said they made the argument in their preliminary response.

[00:35:10] Speaker 01:
The board, of course, when it institutes, always says, nothing you said previously matters unless you repeat it, roughly speaking.

[00:35:17] Speaker 01:
They didn't repeat it.

[00:35:18] Speaker 03:
At the trial.

[00:35:19] Speaker 03:
That's my memory, Your Honor.

[00:35:21] Speaker 02:
But it's also on the record.

[00:35:22] Speaker 02:
You're urging us to find waiver here, because you said that in the record.

[00:35:28] Speaker 03:
Yes, your honor, but now in their tan brief of the other day, they're raising this issue of misidentification.

[00:35:35] Speaker 03:
No, I understand.

[00:35:35] Speaker 03:
And I really wanted to point out, if you look at the actual findings of the board, they specifically find on multiple occasions that in the ATAC device, the cat box is simulating and emulating a SCSI hard disk when in fact it is not.

[00:35:50] Speaker 03:
So even if we were to give credence to this misidentification idea, the factual findings that there is collateral estoppel

[00:35:57] Speaker 03:
effect too, because the board had to identify what it is that ATAC identifies as to understand the prior art.

[00:36:05] Speaker 03:
The finding there is, in fact, it did in fact misidentify as being a SCSI hard disk rather than an ATA IDE hard disk, which is what it really is.

[00:36:14] Speaker 03:
Quite apart from collateral stopover waiver, that's what ATAC says.

[00:36:19] Speaker 03:
Yes, Your Honor, in column six of ATAC, yes.

[00:36:22] Speaker 01:
What about the part of ATAC bottom of column 10 that was the subject of some discussion?

[00:36:28] Speaker 03:
This is the pseudo code issue, Your Honor?

[00:36:31] Speaker 01:
Yeah, about whether bottom of 10, line 63 up to the top of column 11 that says we're basically going to replace the SCSI code with our own code in order to get at the cap disc.

[00:36:46] Speaker 03:
That's not quite accurate, Your Honor.

[00:36:48] Speaker 03:
If you look to step four of that pseudo code,

[00:36:50] Speaker 03:
It says, make the intended file IO call, 1 equals 0.

[00:36:55] Speaker 03:
That's just the SCSI code being sent through.

[00:36:57] Speaker 03:
That's not anything that's been altered.

[00:36:59] Speaker 03:
And that's further corroborated by column 12, where it talks about the MassVSys driver, which includes the SCSI ISR routine.

[00:37:09] Speaker 01:
This is the software that's on- Is your description of what's happening in that little pseudocode description consistent with or contrary to what Mr. Gafford has said?

[00:37:20] Speaker 01:
His name explained that this hooking the code and doing something else with it.

[00:37:28] Speaker 01:
Do you say that you had contrary testimony or that what you're saying is actually consistent with his description of that?

[00:37:34] Speaker 03:
It's consistent, Your Honor, in the sense that I don't believe there's any testimony from Mr. Gafford that the code was changed.

[00:37:40] Speaker 03:
It is just the SCSI language being used, even though there's this other software involved.

[00:37:46] Speaker 03:
Often,

[00:37:47] Speaker 03:
as Mr. Gaffer testified, there is a circumstance that Judge Chen was talking about, where when you're merely using the Catbox as a hard disk drive, you don't need the CatSync software.

[00:38:00] Speaker 03:
You can make reliable file calls from the Catbox.

[00:38:02] Speaker 01:
Is this an argument about, I think Judge Chen was maybe getting at this too, is this an argument about how the ATAC

[00:38:12] Speaker 01:
patents discussion of the cat box teaches one that one can do something that the cat box actually never ever does or that sometimes the cat box does this namely use SCSI code and only SCSI code to get at the cactus.

[00:38:37] Speaker 03:
It's a situation where it can do that and in fact in column five

[00:38:41] Speaker 03:
of ATAC, it specifically says that the PC may not even have a hard disk.

[00:38:47] Speaker 03:
It can use the cat disk as a hard disk.

[00:38:49] Speaker 03:
So that's one of the intended purposes of ATAC.

[00:38:52] Speaker 03:
So there will be times when the cat box is just sitting there being used as a hard disk, and other times when it's getting all kinds of faxes coming in.

[00:39:00] Speaker 01:
And when it is just sitting there being used as a hard disk, does ATAC say that this hooking process is not occurring?

[00:39:09] Speaker 01:
I didn't think it did ever say that, which is what left the document itself somewhat unclear.

[00:39:16] Speaker 03:
Right.

[00:39:16] Speaker 03:
I believe that I believe you're on it.

[00:39:17] Speaker 03:
That's what the that was the testimony of the two experts that that is what would occur in that situation where isn't expressly discussed in the two experts.

[00:39:27] Speaker 03:
You mean that Dr. Reynolds on our side and Mr. Gafford on theirs.

[00:39:31] Speaker 01:
that paragraph that says you can't do it reliably without it, which maybe says that or maybe doesn't say that.

[00:39:38] Speaker 03:
Yes, it's circa 5960, I believe, of Mr. Gapper's declaration.

[00:39:41] Speaker 02:
Just so I'm following this conversation, my understanding was both experts agreed that the CatSync software is being used every single time.

[00:39:52] Speaker 02:
And so therefore, you're going to hook that file call every single time.

[00:39:57] Speaker 02:
You know, maybe you don't need to do anything in terms of regulating other competing attempts to access the cat disk because nothing else is trying to access that cat disk at that moment.

[00:40:13] Speaker 02:
But nevertheless, CatSync is involved in every file transfer.

[00:40:20] Speaker 02:
Am I misremembering the testimony?

[00:40:23] Speaker 03:
Your Honor, there was, I would say, contradictory testimony from Mr. Gafford on that point.

[00:40:27] Speaker 03:
He says that.

[00:40:28] Speaker 03:
And then he also says that CatSync is not required for the situation where it is only being used as a hard disk.

[00:40:36] Speaker 02:
My understanding of Dr. Reynolds' testimony was he agreed that CatSync is being used every single time.

[00:40:43] Speaker 02:
It's involved in every single file transfer.

[00:40:46] Speaker 02:
But the additional

[00:40:49] Speaker 02:
functionality being supplied by CatSync in his view is not necessary to do a successful file transfer.

[00:40:57] Speaker 02:
You could do a successful file transfer in ATAC without having CatSync loaded.

[00:41:04] Speaker 02:
I believe that's what he was trying to say.

[00:41:06] Speaker 02:
But as is, as disclosed in ATAC, yes, CatSync is being used every single time.

[00:41:12] Speaker 03:
The CatSync spec says so, Your Honor.

[00:41:14] Speaker 03:
As I said, I think there were some

[00:41:16] Speaker 03:
disagreement within Mr. Gafford's testimony.

[00:41:18] Speaker 02:
I'm talking about Dr. Reynolds.

[00:41:19] Speaker 03:
Yes, yes, yes.

[00:41:21] Speaker 03:
ATEX says that, and I believe Dr. Reynolds agrees with that.

[00:41:23] Speaker 03:
What he says is, hypothetically, if it weren't there, you would get the same result, because it would default to 1 equals 0, which is exactly what step four in the pseudocode does with CatSync.

[00:41:35] Speaker 03:
That's why he says it's not necessary and why it's not file transfer enabling software.

[00:41:42] Speaker 00:
OK.

[00:41:42] Speaker 00:
All right.

[00:41:43] Speaker 00:
Thank you.

[00:41:43] Speaker 00:
Thank you, Dr. Mr. Gallagher.

[00:41:45] Speaker 00:
Mr. Donahue, you've got two minutes.

[00:42:00] Speaker 04:
So it looks like I only have a few minutes, but let me just start with the issue of dependent claim 17 of the 746 patent where opposing counsel asserts that

[00:42:12] Speaker 04:
it actually discloses end user software being used for identification.

[00:42:18] Speaker 04:
That claim actually says the analog data acquisition device of claim one wherein the processor is configured to cause acquired analog data file system information to be sent.

[00:42:28] Speaker 04:
And then it says without requiring after reciting the previously recited multipurpose interface parameter being sent.

[00:42:34] Speaker 04:
So it actually refers to the end user software requirement, the without requiring end user software refers to the processor being configured to cause

[00:42:42] Speaker 04:
acquired analog data file system information to be sent.

[00:42:45] Speaker 04:
That has nothing to do with the automatic recognition.

[00:42:50] Speaker 02:
The other issue, and I think that it's worth... Did you waive the automatic recognition argument by not raising it in your patent owner response?

[00:42:59] Speaker 04:
No, Your Honor.

[00:42:59] Speaker 04:
I believe we did raise it, and that's why there is no waiver.

[00:43:03] Speaker 04:
I think if you look at the appendix pages 2217 through 22

[00:43:12] Speaker 04:
22, I think.

[00:43:15] Speaker 04:
We talk about 2217 through actually 2223.

[00:43:22] Speaker 04:
There's a section entitled ATAC cannot support an obviousness conclusion for the 437 patent.

[00:43:28] Speaker 04:
And then there's two subsections, one and two.

[00:43:31] Speaker 04:
One of them says ATAC intended Catbox to be a multitasking device to solve the problem of integrating operation of multiple devices with a PC.

[00:43:39] Speaker 04:
And in that section, we talk about how ATAC is actually more than just a hard drive.

[00:43:44] Speaker 04:
It's all of these other devices with these other functionalities.

[00:43:48] Speaker 02:
And the purpose of... What about the automatic file transfer function?

[00:43:52] Speaker 02:
What about the automatic recognition?

[00:43:55] Speaker 04:
Yes.

[00:43:55] Speaker 04:
Well, so it's informative, I think, to look at how they pled the automatic recognition limitation in their petition.

[00:44:03] Speaker 04:
What they said, and this is on page 161 of the appendix, their petition, they basically, the only thing they said is for automatic recognition to occur.

[00:44:11] Speaker 04:
ATAC doesn't say anything about the inquiry or the response, but we're going to infer that the automatic recognition occurs because the cat box looks like a cat drive or a hard drive from the perspective of the host.

[00:44:24] Speaker 04:
And in this section that I'm referring to, we're saying back to them, well, wait a minute, it actually looks like a lot of other devices too.

[00:44:31] Speaker 04:
That inference that the cat box

[00:44:33] Speaker 04:
would identify as a hard drive doesn't make sense because the cat box isn't just a hard drive, it's all of these other devices.

[00:44:40] Speaker 04:
And so these, this argument in this section is it's actually because of the interplay between the file transfer and the automatic recognition limitations is actually applicable to both because in the file transfer limitation they say, they make the same inference that because it looks like a hard drive that you both would recognize it, a parameter would be sent to recognize it,

[00:45:01] Speaker 04:
and then the file would consequently be transferred using the customary driver.

[00:45:06] Speaker 04:
And so I think, and if you look at the appendix page 2237, it's pretty clear that there's two independent claims in this patent, your honor.

[00:45:19] Speaker 04:
On page 2237, there's a reference to independent claim 43, which is also an issue here.

[00:45:27] Speaker 04:
And if you look on that page, it explicitly recites

[00:45:30] Speaker 04:
that we're contending that the automatic recognition limitation is not obvious in conjunction with the file transfer limitation.

[00:45:37] Speaker 04:
So it's pretty clear that for independent claim 43, and it refers to the sections of the brief, sections three through six, that both for claim one and for claim 43, we are making arguments related to the automatic recognition process.

[00:45:52] Speaker 04:
And the specific argument we're making is that your inference can't work.

[00:45:57] Speaker 04:
It doesn't work.

[00:45:57] Speaker 04:
You can't say that you infer that the

[00:46:00] Speaker 04:
Catbox would send a hard drive identifier to the host simply because the host looks, from the host perspective, the Catbox looks like a hard drive because it also looks like all of these other devices.

[00:46:12] Speaker 04:
So why wouldn't an identifier be sent that would identify it as a printer or some other device?

[00:46:18] Speaker 04:
And in fact, what we're saying here is that wouldn't happen.

[00:46:21] Speaker 04:
SCSI actually has a 1FH command that can be sent for a quirky device like Catbox

[00:46:27] Speaker 04:
an unknown identifier that would allow it to identify and then use.

[00:46:31] Speaker 02:
Where did you say 1FH in your patent owner response?

[00:46:33] Speaker 04:
That is not in there, Your Honor.

[00:46:35] Speaker 04:
But to be clear, that's mainly for the court's edification, because you might be curious, well, if a device like Catbox does not send a hard drive identifier, what does it send?

[00:46:45] Speaker 04:
And the answer is it sends a 1FH.

[00:46:46] Speaker 04:
But we don't need to find that here today.

[00:46:48] Speaker 04:
That's not part of the claim limitation.

[00:46:50] Speaker 04:
We just need to find they didn't meet their burden to show that it sends a hard drive identifier.

[00:46:55] Speaker 04:
And that's because they're influenced that a hard drive identifier would be sent when you're dealing with a cat box device to identify a cat box device that looks like all of these other devices just doesn't make sense.

[00:47:06] Speaker 04:
In fact...