[00:00:00] Speaker 03:
Our final case this morning is number 22, 2055, Hydro Inc.

[00:00:04] Speaker 03:
versus VM Software Corporation.

[00:00:09] Speaker 03:
Okay, Mr. Ostrom.

[00:00:11] Speaker 01:
Good morning.

[00:00:11] Speaker 01:
May it please the court?

[00:00:16] Speaker 01:
Your Honor, we sent a letter to the clerk at the direction of the clerk's office last week to clarify the stance on the claims in these appeals.

[00:00:26] Speaker 01:
As the

[00:00:27] Speaker 01:
Your honors may be, I'm sure you're aware, and certainly Your Honor Judge Clevinger may remember as having been on the panel, there were two previous appeals of related patents.

[00:00:38] Speaker 01:
This one got delayed because of a rehearing, but now, so.

[00:00:43] Speaker 03:
OK, but we affirmed in 1443 and 1444.

[00:00:49] Speaker 03:
And looking at the IPR decisions there, they seem to address the same issues as the inventory and motivation to combine that's involved here and are preclusive on those issues.

[00:01:05] Speaker 03:
So what's left of the claims, and why is anything left?

[00:01:10] Speaker 01:
There is one argument left with respect to the claims that we called out for retention on appeal.

[00:01:17] Speaker 01:
which is independent claims 30 and 35 and some dependence off of those or other dependents which have the same limitations.

[00:01:23] Speaker 01:
All of those claims are specific to a restore operation.

[00:01:27] Speaker 01:
None of the claims in the earlier patents were claiming restoring.

[00:01:31] Speaker 01:
Had anything to do with only the backup portion of the system.

[00:01:34] Speaker 01:
These claims are specifically on restore.

[00:01:37] Speaker 01:
So which part of your blue brief

[00:01:41] Speaker 04:
This restore feature that you want us to now focus on for purposes of leave remains in your appeal.

[00:01:52] Speaker 01:
The issue, of course, is there was a procedural issue that the court's ruling on the prior appeals came after we filed our brief.

[00:02:00] Speaker 01:
But in fact, on page 49 of our brief, we specifically make an argument that field, which is the reference that was being used with respect to the restore claims,

[00:02:10] Speaker 01:
So we specifically address independent claims 30 and 35 on page 49 of our opening brief.

[00:02:16] Speaker 01:
And we include the fact that Field does not disclose the use of a backup inventory for a restore process, and that Field teaches away from using and transmitting signatures from a backup data storage medium to a remote storage medium.

[00:02:34] Speaker 03:
But the teaching away argument was addressed in the earlier IPR.

[00:02:39] Speaker 03:
and necessarily rejected when we affirmed.

[00:02:42] Speaker 03:
So if you look at, for example, at page A72 in the earlier case, which sets forth the IPR decision, it addresses the teaching away argument.

[00:02:55] Speaker 03:
And so we necessarily rejected that in affirming.

[00:02:58] Speaker 01:
OK.

[00:03:01] Speaker 01:
The one limited additional argument that was not previously addressed

[00:03:05] Speaker 01:
and was not actually addressed by the board in the final written decisions in this case, has to do with field not teaching using signatures during a restore process.

[00:03:19] Speaker 01:
There was no restore process in the prior two appeals.

[00:03:22] Speaker 01:
That was the backup portion right there.

[00:03:24] Speaker 01:
So we acknowledge that field does teach a file by file use of a signature to help decide whether to back up a file.

[00:03:33] Speaker 01:
But Field does not describe or disclose, and this was never argued in the previous, because there were no claims on restore.

[00:03:39] Speaker 01:
Field does not disclose using a descriptor or signature, those are the terms from the claims, for purposes of restore.

[00:03:48] Speaker 01:
And in fact, the board never actually addressed this argument.

[00:03:51] Speaker 01:
So in the final written decision, if I could jump to that, having to do with this set of claims specifically, or claim 30, which is representative of this set,

[00:04:04] Speaker 01:
The board cites the fact that we're arguing that field is not disclosed and teaches away 30 of the 043 Yes So on page 199 of the appendix which is one of the pages in the final written decision and

[00:04:34] Speaker 02:
Which page?

[00:04:36] Speaker 01:
199 of the appendix.

[00:04:37] Speaker 01:
I don't have the native page of the final reading.

[00:04:43] Speaker 01:
There's a discussion.

[00:04:44] Speaker 01:
This is the board's analysis of this issue.

[00:04:47] Speaker 01:
In the middle of the page, there's a paragraph that says, as mentioned, Pat and owner contends that field does not teach the use of a backup inventory for a restore.

[00:04:58] Speaker 01:
To support this contention, Pat and owner argues that field teaches away from using

[00:05:03] Speaker 01:
and transmitting signatures from a backup storage medium.

[00:05:07] Speaker 01:
I'm obviously paraphrasing.

[00:05:08] Speaker 01:
I see your honors are looking at the page.

[00:05:13] Speaker 01:
During a restore process.

[00:05:15] Speaker 01:
Correct.

[00:05:15] Speaker 01:
Then the board says, Claim 30, however, does not require transmitting signatures.

[00:05:21] Speaker 01:
So the board addressed half of that argument, the portion that has to do with transmitting.

[00:05:26] Speaker 01:
The board never addressed the fact that we also were arguing that Field does not disclose using signatures

[00:05:32] Speaker 01:
This has nothing to do with the definition of backup inventory.

[00:05:36] Speaker 01:
Even under the board's construction, which this court has affirmed, that backup inventory just means an itemized list of data, even under that construction, we were still arguing that field does not disclose use, the use of a descriptor or signature during a restore.

[00:05:53] Speaker 01:
That was not something that was decided in the prior appeals because there were no claims on restore.

[00:05:58] Speaker 01:
Only this patent has claims.

[00:05:59] Speaker 02:
Can you use without transmitting?

[00:06:02] Speaker 01:
Correct.

[00:06:02] Speaker 01:
There are two arguments.

[00:06:03] Speaker 01:
We made use and transmitting.

[00:06:05] Speaker 01:
What's the difference between using and transmitting?

[00:06:07] Speaker 01:
The claim itself talks about using descriptors to decide which files to be restored.

[00:06:14] Speaker 01:
It checks its descriptors.

[00:06:15] Speaker 02:
That would be during a restore process.

[00:06:16] Speaker 01:
During a restore process.

[00:06:18] Speaker 01:
That is the subject of these claims only.

[00:06:23] Speaker 02:
Can I ask one question?

[00:06:24] Speaker 02:
In your letter that you sent us in which you waved off a lot of the issues that are in appeal on the basis of the previous thing,

[00:06:32] Speaker 02:
I think you say that you want to maintain the appeal as to claims 11-13-2022.

[00:06:37] Speaker 02:
I think that's wrong, because as you pointed out in your blue brief, your only argument is with respect to 30 and 35.

[00:06:50] Speaker 01:
Yes.

[00:06:51] Speaker 02:
Well, we went back and looked, and we didn't see any argument you made in your brief as to this argument that you're now making.

[00:06:57] Speaker 02:
that it related to claims 11, 13, 22, 24.

[00:07:00] Speaker 02:
I just want to be clear that you're only trying to preserve this argument as to claims 30 and 35.

[00:07:07] Speaker 01:
Yes.

[00:07:08] Speaker 01:
You're correct, Your Honor.

[00:07:09] Speaker 01:
Thank you.

[00:07:09] Speaker 01:
We included those claims because they're essentially identical in subject matter.

[00:07:13] Speaker 02:
I'm going to strike them out.

[00:07:14] Speaker 01:
OK.

[00:07:14] Speaker 01:
But 30 and 35 are the independent ones, and then the remaining ones that are in that set depend on?

[00:07:20] Speaker 02:
Well, 30, 32, 37, 39, et cetera.

[00:07:22] Speaker 01:
So all of those are dependent on 30 and 35.

[00:07:26] Speaker 01:
What we're asking the court, and again, this could not have been briefed in this document because we didn't have this court's ruling until the day before we filed this.

[00:07:35] Speaker 03:
Wait, wait, wait.

[00:07:36] Speaker 03:
That's not true.

[00:07:36] Speaker 03:
You could have briefed this issue even if some other parts of your brief became irrelevant once we affirmed.

[00:07:45] Speaker 03:
I mean, you're obligated to address this issue in your opening brief.

[00:07:50] Speaker 03:
And if you didn't, you had a waiver or a forfeiture problem.

[00:07:53] Speaker 01:
Well, we did address the issue.

[00:07:54] Speaker 01:
I just pointed out to your honors on page 49 of our brief where we did argue.

[00:07:57] Speaker 01:
And the board acknowledged we argued it.

[00:08:00] Speaker 02:
That's a pretty skinny presentation of an argument, page 49.

[00:08:04] Speaker 02:
I didn't see this point raised anyplace else in your brief.

[00:08:14] Speaker 02:
I mean, just to be frank, we're now limited to your direct appeal is related to 3035 and the dependent claims and page 49.

[00:08:23] Speaker 01:
That's what I'm citing to you today, Your Honor.

[00:08:26] Speaker 02:
I have to go back.

[00:08:27] Speaker 02:
Well, I'm grateful for your candor with your letter pointing out to us the parts of the appeal that it would have been wasted your time and ours for talk about it.

[00:08:38] Speaker 03:
So did you argue this point in your yellow brief and your reply brief?

[00:08:45] Speaker 01:
Not specifically.

[00:08:47] Speaker 01:
We did not argue it specifically.

[00:08:48] Speaker 03:
So you're asking us, based on a single sentence in the opening brief, to say that the argument was preserved.

[00:08:54] Speaker 01:
And the board's written decision, which was prior to our brief, which showed that we argued it to the board in detail, and the board did not consider this issue.

[00:09:03] Speaker 03:
But in terms of you raising the issue before us, you didn't address it in the yellow brief, and your argument was based on a single sentence in the blue brief.

[00:09:14] Speaker 01:
I believe we did at least reiterate the arguments as to the claims 30 and 35 in the yellow brief.

[00:09:21] Speaker 01:
Right.

[00:09:21] Speaker 02:
But just in all fairness, the argument you're making now is that there's a radical difference between using and transmitting in this context.

[00:09:29] Speaker 02:
And the board slipped it up when they combined the two.

[00:09:32] Speaker 02:
And for us to sort of tease that out of page 49 is a reach.

[00:09:38] Speaker 02:
Right?

[00:09:39] Speaker 01:
I don't agree.

[00:09:39] Speaker 02:
I understand your point.

[00:09:41] Speaker 02:
I'm trying to get all of this over there.

[00:09:43] Speaker 01:
All we're really at this point all I would be asking on this for the relief is to send this back to the board can actually consider whether field discloses using signatures during music During restoration only just that one narrow issue the board should take another look.

[00:10:00] Speaker 04:
I'm not asking What's the key claim language in claim 30?

[00:10:07] Speaker 01:
Claim 30 It's if I have to pick key language it would be the third element

[00:10:13] Speaker 04:
The retrieving selected electronic data from the backup data storage.

[00:10:22] Speaker 01:
Having a descriptor that matches descriptors in the list of descriptors associated with the remote.

[00:10:28] Speaker 01:
So that's how using the descriptors finds matching ones to use as part of the restore.

[00:10:34] Speaker 01:
Field doesn't disclose that.

[00:10:37] Speaker 03:
OK, unless my colleagues have further questions, you want to save the rest of your time?

[00:10:42] Speaker 01:
Yes, I would like to.

[00:10:43] Speaker 01:
Thank you.

[00:10:48] Speaker 03:
OK, Mr. Pathis.

[00:10:57] Speaker 00:
Good morning, Your Honors.

[00:10:58] Speaker 00:
May it please the Court.

[00:11:00] Speaker 00:
I'd like to spend most of my time talking about the cross appeal, but I would like to address the argument that my colleague just brought up

[00:11:07] Speaker 00:
He pointed to this one argument.

[00:11:09] Speaker 00:
And I agree, if there's anything left, this would be the only argument remaining.

[00:11:14] Speaker 00:
We don't think it is still a valid argument.

[00:11:18] Speaker 00:
And as Your Honors pointed out, we didn't see where they carried this through to their yellow brief.

[00:11:25] Speaker 00:
We did address this in the red brief.

[00:11:26] Speaker 04:
Where in the red brief did you talk about this?

[00:11:29] Speaker 00:
Page 49 of the red brief.

[00:11:34] Speaker 00:
We have addressed the general argument.

[00:11:38] Speaker 00:
And this is section D directed to claims 30 and 35 about teaches away from using and transmitting signatures.

[00:11:48] Speaker 02:
On the restore process.

[00:11:50] Speaker 00:
I'm sorry, Your Honor?

[00:11:50] Speaker 02:
Yeah, on the restore process.

[00:11:52] Speaker 00:
Yes.

[00:11:52] Speaker 02:
What about the distinction between using and transmitting?

[00:11:56] Speaker 00:
Yes, Your Honor.

[00:11:57] Speaker 00:
So the board where my colleague pointed at appendix 199, they do

[00:12:03] Speaker 00:
address it in in the sense that they say patent owner argues that field teaches away from using and transmitting signatures and then they disregard that saying it doesn't require transmitting signatures from the backup storage medium so I think they did consider this as a requirement

[00:12:20] Speaker 00:
But I think even more importantly, this isn't a requirement of the claims.

[00:12:25] Speaker 04:
When you say this is not a requirement of the claims, what do you mean by this?

[00:12:29] Speaker 00:
Using and transmitting the descriptors as part of the resource process.

[00:12:33] Speaker 04:
So the retrieving limitation of retrieving selected electronic media from the backup data storage medium, having a descriptor that matches descriptors in the list of descriptors associated with the remote storage medium.

[00:12:45] Speaker 04:
I guess when it says having a descriptor, you're thinking that just means that's an observational detail of the electronic data being retrieved.

[00:12:57] Speaker 04:
It's not requiring that there be an active step of comparing said descriptor to a list of descriptors.

[00:13:04] Speaker 00:
Yes, Your Honor.

[00:13:06] Speaker 00:
For the restore, that is accurate.

[00:13:08] Speaker 00:
It has to have that descriptor, and it does because in both the prior art and the patent, when you back up a file, you send that descriptor or that signature, and then that's stored on the backup server or generated on the backup server.

[00:13:21] Speaker 00:
And so it had, there is a link between the file

[00:13:23] Speaker 00:
And the descriptor but the claim itself doesn't actually require that you use it as part of the restore process you can But it's not a requirement of the claims if you were to address this on the merits, but I think more importantly I don't think this this argument was even carried through it wasn't explained as I recall from the patent owner response.

[00:13:41] Speaker 00:
It wasn't explained in

[00:13:43] Speaker 00:
in any more detail than this and it does hinge on a teaching away argument and the board addressed the teaching away argument in multiple places because that was used a lot throughout the briefs that field just discloses these alternative ways of doing things in one particular way and does discourage or criticize any particular way for doing the back of a restore.

[00:14:04] Speaker 00:
But I think if you do get on the merits, you'll see that these claims don't actually have a requirement to use, at least as I understand, hybrid to be raising that argument.

[00:14:15] Speaker 04:
And again, I'm... Does the field use a descriptor when it tries to restore files?

[00:14:21] Speaker 00:
It uses the descriptor in terms of generating one on the backup server, and it's used primarily for backup purposes.

[00:14:31] Speaker 00:
But what the board found

[00:14:35] Speaker 00:
is that the backup inventory and field comprised not only the descriptors, but also other information that's stored in the backup database, like permissions of files, the file path of files, and ways to restore it.

[00:14:50] Speaker 00:
So its field is not explicit about whether it actually needs to use the descriptor for retrieval purposes.

[00:14:59] Speaker 00:
But again, the claim doesn't require that.

[00:15:03] Speaker 03:
So Theron.

[00:15:04] Speaker 03:
Can I turn to the cross field?

[00:15:06] Speaker 00:
Yes, Your Honor.

[00:15:10] Speaker 00:
The issues on cross-appeal concern two distinct sets of claims.

[00:15:14] Speaker 00:
There's claims 3 and 16, and then there's claims 7 and 20.

[00:15:18] Speaker 00:
I'd like to start with claims 7 and 20, which essentially recite

[00:15:22] Speaker 00:
that access to electronic data stored in the backup data storage medium, such as a file, is restricted to devices that first provide a descriptor associated with that electronic data.

[00:15:33] Speaker 00:
There's no dispute about how field operates.

[00:15:36] Speaker 00:
In field system, the descriptor is provided when a computing device attempts to backup a file.

[00:15:41] Speaker 00:
A signature is generated, and then it's sent over to the backup server.

[00:15:46] Speaker 00:
The board's decision was largely premised on a finding that field system allows users to access files in its backup database that the user never had to begin with, that the user never attempted to back up.

[00:16:01] Speaker 00:
Not only is that finding lacking substantial evidence, but there's no evidence whatsoever to support that finding.

[00:16:08] Speaker 00:
The first point I want to make on that is that the entire purpose of Field's backup system is to allow users to restore files that they originally backed up.

[00:16:18] Speaker 00:
It's nothing more.

[00:16:20] Speaker 00:
That is the only access mechanism that Field discloses.

[00:16:24] Speaker 00:
At appendix 523, for example, Field explains that the present invention is directed to a system for efficiently performing a backup of data in a networking environment.

[00:16:36] Speaker 00:
Then the data in the database may be recalled at a later time and re-stored onto the computing device.

[00:16:42] Speaker 03:
That's the definition of re-storing.

[00:16:44] Speaker 03:
The problem that I see is that the board's original decision here, to me, is somewhat confusing.

[00:16:52] Speaker 03:
But if you look to the decision on re-hearing, they're basically saying that your expert witness said

[00:17:04] Speaker 03:
that the prior art allows retrieval by other authorized persons and not the individual who first stored it, and that that's not sufficient to disclose that limitation.

[00:17:24] Speaker 03:
And I'm wondering why that's wrong.

[00:17:27] Speaker 00:
Your Honor, are you referring to a hybrid expert, Dr. Wiseman?

[00:17:33] Speaker 00:
I think they relied on it at appendix 144 and 145.

[00:17:36] Speaker 03:
OK.

[00:17:37] Speaker 03:
I'm sorry.

[00:17:38] Speaker 03:
They're expert.

[00:17:39] Speaker 00:
Yes, Your Honor.

[00:17:40] Speaker 03:
Yeah.

[00:17:40] Speaker 03:
And so they credited that testimony and said that it allows you to allow someone who didn't store the data initially to retrieve it, as long as that person is authorized.

[00:17:54] Speaker 03:
But that is something that doesn't disclose the claim limitation.

[00:17:59] Speaker 00:
Yes, Your Honor.

[00:18:00] Speaker 00:
So I'm glad you pointed it out.

[00:18:01] Speaker 00:
That is the exact testimony that the board relied on as a basis for its decision.

[00:18:06] Speaker 00:
And if you look at that testimony, which is repeated on Appendix 144,

[00:18:12] Speaker 00:
You'll see that there is not a single citation to the record.

[00:18:16] Speaker 00:
There's not a single citation to Field.

[00:18:17] Speaker 00:
There's not a single citation to any supporting evidence.

[00:18:20] Speaker 00:
This is conclusory testimony.

[00:18:22] Speaker 00:
And it's inconsistent with Field's disclosure.

[00:18:24] Speaker 00:
The board was not entitled to rely on that as a reason that Field provides some other form of access.

[00:18:33] Speaker 00:
Under this court's own precedent, that conclusory testimony can't provide substantial evidence.

[00:18:38] Speaker 00:
And if you look closely at Field,

[00:18:40] Speaker 00:
Because on appendix 145, the board attempts to sort of fill in the gaps of Hiber's expert's testimony and say, well, this testimony is supported by field's disclosure.

[00:18:53] Speaker 00:
If you look at those four paragraphs that they cite, which are paragraphs 8, 10, 24, and 40 of field, there's nothing in those paragraphs about allowing access to files outside of the normal backup and restore process.

[00:19:10] Speaker 04:
to try to establish that field necessarily teaches this feature of scripting access to people with special descriptors.

[00:19:19] Speaker 04:
Yes, sir.

[00:19:20] Speaker 04:
And I suppose one reading of field could be your reading, but because field doesn't talk in the terms that are actually designed to explain about limiting, restricting access just based on the

[00:19:36] Speaker 04:
descriptor alone, it makes it hard to say that the board was somehow unreasonable in its alternative reading of the overall field reference.

[00:19:47] Speaker 00:
Sure.

[00:19:47] Speaker 00:
So I think if you get to this, if I understand your honest question, if you get to this point.

[00:19:52] Speaker 04:
It's the financial evidence standard review problem that you're running up against.

[00:19:57] Speaker 00:
I think it is, Your Honor, for the other forms of access in field.

[00:20:03] Speaker 00:
Certainly that's a substantial evidence issue that's not supported.

[00:20:07] Speaker 00:
If you were to agree with Veeam on that issue and where we're left is that all field discloses is this backup and restore where that operation meets the language of the claims and it doesn't allow any other form of access, then I think we get to a legal question.

[00:20:27] Speaker 00:
Because all of the factual inquiries then would have been made.

[00:20:33] Speaker 00:
And so I don't think it's substantial evidence to flip that.

[00:20:36] Speaker 00:
It's a legal question of, is that sufficient to establish obviousness?

[00:20:40] Speaker 00:
And I think some of the cases that we cited, AC Techs, for example, talk about how a reference doesn't need to state a feature's absence in order to disclose a negative limitation.

[00:20:52] Speaker 00:
And that's one way to frame this as a negative limitation in terms of,

[00:20:57] Speaker 00:
this restriction of access is not allowing other forms of access.

[00:21:03] Speaker 03:
And I think in this case... Your theory is that the prior reference discloses only retrieving by people who store it in the first place, right?

[00:21:12] Speaker 03:
That's right.

[00:21:13] Speaker 03:
And the question is whether...

[00:21:17] Speaker 03:
The board's finding the contrary, which is the basis in the rehearing decision, is supported by substantial evidence.

[00:21:24] Speaker 03:
They rely on Patentee's expert.

[00:21:27] Speaker 03:
You say that's too conclusory, but you didn't yourself put in an expert who said the opposite, right?

[00:21:32] Speaker 00:
We did.

[00:21:33] Speaker 00:
We did, Your Honor.

[00:21:34] Speaker 00:
You did?

[00:21:34] Speaker 00:
Where is that?

[00:21:35] Speaker 00:
And so I can point you to a couple of places.

[00:21:37] Speaker 00:
In Dr. Shanoi, who is Beam's expert, his declaration is Appendix 475 to 476.

[00:21:44] Speaker 00:
That was his original declaration.

[00:21:46] Speaker 00:
And there he talks about field teaches that a user can only restore, i.e.

[00:21:50] Speaker 00:
access a file that was previously backed up by the user,

[00:21:54] Speaker 00:
And he says, this is consistent with the general concept of backup in which a user is limited to restoring files that the user backed up, rather than allowing users to inappropriately access different files of other users.

[00:22:06] Speaker 00:
And I think that logic makes sense, not just from a technical perspective, but you don't want to have a backup system in which your data can just be accessed by any other user.

[00:22:17] Speaker 00:
That wouldn't make sense in field.

[00:22:18] Speaker 00:
And if you look at field as written,

[00:22:20] Speaker 00:
The only thing it discloses is backup and restore as you would expect it.

[00:22:25] Speaker 03:
Okay, but what am I to make a paragraph 157 on page 474 where he uses the language whether or not the user originally transmitted a file for storage?

[00:22:38] Speaker 00:
Oh, so to clarify that, that's not referring to whether or not they attempted to back up.

[00:22:45] Speaker 00:
That's referring to whether the user actually had to transmit the file.

[00:22:49] Speaker 00:
Because just like the patent, the purpose and field is when you attempt to back up, you send a signature of the file.

[00:22:55] Speaker 00:
If the backup server says, we don't have that file yet, then you would transmit the file.

[00:23:01] Speaker 00:
So that's what that's referring to is.

[00:23:03] Speaker 00:
the user would still be attempting to back up the file whether or not they actually have to transmit it to storage.

[00:23:11] Speaker 00:
And that's because the file may or may not already be in storage.

[00:23:14] Speaker 00:
So that's that deduplication.

[00:23:15] Speaker 00:
So that's a different point.

[00:23:18] Speaker 00:
And I think I'm related to this.

[00:23:21] Speaker 00:
But hopefully that clarifies that issue.

[00:23:25] Speaker 00:
And so where we're left on this issue is if the boards, I'm sorry,

[00:23:33] Speaker 03:
But where does your expert clearly state that the prior art is limited to retrieval by people who originally stored the file?

[00:23:46] Speaker 00:
That would be, I think, one place is appendix 475 in that paragraph, 159, where it says, field teaches that a user can only restore a file that was previously backed up by the user.

[00:23:59] Speaker 00:
And then later in,

[00:24:03] Speaker 00:
Beams expert's reply declaration, which is at appendix 1064 to 1065.

[00:24:10] Speaker 00:
He talks about Hiber's contentions that any user could restore any file.

[00:24:15] Speaker 00:
It's illogical in view of Field's disclosure.

[00:24:17] Speaker 00:
and that the entire purpose of the restoration is to restore files back onto a computing device with the same path, name, and permissions that were associated with it.

[00:24:27] Speaker 00:
And that's what Field really talks about is only restoring the files back onto a computing device.

[00:24:33] Speaker 00:
And so if you take Field as written and you don't try to read anything into it in terms of what modifications could you make, unmodified, Field actually has this restriction.

[00:24:44] Speaker 00:
So I'm happy to answer any questions on that, otherwise I can move to claims three and 16.

[00:24:55] Speaker 00:
So claims three and 16 recite removing the electronic data associated with the first descriptor from a list of electronic data that is to be transmitted to the backup data storage medium.

[00:25:07] Speaker 00:
And that first descriptor is referring back to claim one that matched a descriptor that's already present on the backup server.

[00:25:15] Speaker 00:
So the board erred here by construing the scope of the removing limitation too narrowly.

[00:25:20] Speaker 00:
In the context of the 043 patent, the removing limitation encompasses determining that the electronic data does not need to be transmitted and preventing that data from being transmitted.

[00:25:33] Speaker 00:
There's nothing more that is required.

[00:25:35] Speaker 00:
And if you

[00:25:37] Speaker 00:
If you look at this in the context of the specification, it makes sense.

[00:25:41] Speaker 00:
It may not be what you would normally think of as removing, where you might think of it as a delete operation executed on a list.

[00:25:50] Speaker 00:
In the case of the 043 patent, the only relevant disclosure is that appendix 275, column 13, starting around line 23.

[00:26:00] Speaker 00:
And that's figure six of the patent.

[00:26:02] Speaker 00:
And it talks about,

[00:26:05] Speaker 00:
It talks about making this determination based on the descriptors that a file is already stored and then determines not to transmit that file.

[00:26:15] Speaker 00:
By definition, when it makes that determination and acts not to transmit the file, that file is no longer part of the list of electronic data to be transmitted.

[00:26:25] Speaker 04:
I don't recall.

[00:26:25] Speaker 04:
Was there a claim construction about the term list, list of electronic data?

[00:26:33] Speaker 00:
There was no explicit claim construction.

[00:26:36] Speaker 00:
Nobody asked for a claim construction.

[00:26:38] Speaker 00:
Nobody asked for it, at least styled under the heading of claim construction.

[00:26:41] Speaker 00:
But this understanding interpretation was proposed in the petition.

[00:26:45] Speaker 00:
And it was clarified in the board's decision that this actually is a claim construction issue.

[00:26:51] Speaker 00:
And I say I'm over my time.

[00:26:52] Speaker 00:
I'm happy to answer questions about this.

[00:26:53] Speaker 00:
But otherwise, I can cede the rest of my time for rebuttal.

[00:26:57] Speaker 03:
Well, you don't have any time.

[00:27:00] Speaker 00:
But we'll give you a minute for rebuttal.

[00:27:01] Speaker 00:
OK, I appreciate it.

[00:27:18] Speaker 01:
Before I move on to the cross appeal, just a last word.

[00:27:23] Speaker 01:
The brief, including our sub-replies, is peppered with discussions of this issue.

[00:27:28] Speaker 01:
But I will admit, Your Honor, Judge Clevenger was correct, that we are relying on that page from the appeal brief about the argument about no use of descriptors for restore.

[00:27:43] Speaker 01:
So I could find other references.

[00:27:45] Speaker 01:
about the importance of using descriptors to restore, but we're going to rely on that page in the appeal brief.

[00:27:52] Speaker 01:
So I just want to clarify that, Your Honor.

[00:27:54] Speaker 01:
So just to discuss the issues, unless Your Honor has any questions, let's discuss the issue on the cross-appeal now.

[00:28:01] Speaker 01:
Go ahead.

[00:28:02] Speaker 01:
OK.

[00:28:03] Speaker 01:
The board was well within its rights to evaluate the evidence available, including the two experts, and make a decision.

[00:28:10] Speaker 01:
That's what the board is supposed to do.

[00:28:12] Speaker 01:
The fact is that you agree the two experts were in conflict as they often are yes, your honor Okay our expert did put in based on his expertise His support is his expertise That's one of the ordinary skill in the art would have an understanding that when you're dealing with operating system files and applications it may very well be that that the users who get it restored are

[00:28:40] Speaker 01:
never sent those files in the first place.

[00:28:42] Speaker 01:
So Field is a Microsoft patent.

[00:28:45] Speaker 01:
And it's discussing the fact that everyone has the same operating system files.

[00:28:49] Speaker 01:
It's inefficient to store those 10 copies of those operating system files.

[00:28:54] Speaker 01:
Everyone's going to get them back if their system crashes anyway.

[00:28:57] Speaker 01:
So it is perfectly valid for our experts to set in his opinion, as an expert, that Field does not necessarily require that descriptors be sent in order to get a file back.

[00:29:10] Speaker 01:
And the board was well within its rights to countenance that evidence.

[00:29:14] Speaker 01:
Certainly, there is substantial evidence to support their opinion, and I believe the other side has satisfied their burden to show there wasn't.

[00:29:23] Speaker 01:
The other thing about that issue is they presented this argument about this restricting access being a negative limitation.

[00:29:32] Speaker 01:
This is an argument that I believe first appeared in their SIR reply, so I haven't really had a chance to address it.

[00:29:36] Speaker 01:
It's not a negative limitation.

[00:29:38] Speaker 01:
Negative limitation is say, don't use X. Restricting access, and the board found this specifically in multiple, both in the original decision and the rehearing decision, is an affirmative obligation.

[00:29:51] Speaker 01:
This affirmative step of restricting access.

[00:29:54] Speaker 01:
It's like locking the door, like an action that is taken to block access.

[00:29:59] Speaker 01:
That's what the current claim requires.

[00:30:00] Speaker 01:
Not merely that we don't do it otherwise.

[00:30:03] Speaker 01:
It's not a negative limitation.

[00:30:05] Speaker 01:
None of that law applies.

[00:30:09] Speaker 01:
Now moving on to, unless there's questions about the Claim 7, moving on to Claim 3 issue, counsel said that Claim 3 doesn't require anything other than not sending the data.

[00:30:20] Speaker 01:
But that's not true.

[00:30:21] Speaker 01:
Claim 3 does require, it explicitly says that the data is removed from, the data is removed

[00:30:36] Speaker 01:
It's removed from the list of electronic data that is to be transmitted.

[00:30:42] Speaker 01:
The board found, based on after considering all of petitioners' arguments and evidence in detail and analyzing it,

[00:30:51] Speaker 01:
page after page in both of its decisions that this claim requires that there has to be a list.

[00:30:57] Speaker 01:
It could be a new list, it could be a new version of the list, but there's a list of data that is to be transmitted, that merely not sending the file because it was already there is, it doesn't meet the limitation required in claim three that there be a list of things to be transmitted which is different than

[00:31:15] Speaker 01:
The original list of something was removed or not copied over or however that was done exactly so Unless there any further questions about any of those issues Nothing further on those Okay, thank you Mr.. Pappas you have a minute

[00:31:42] Speaker 00:
Thank you, Your Honors.

[00:31:44] Speaker 00:
Just two quick points to make.

[00:31:46] Speaker 00:
My colleague said that the expert was entitled to say that a user would have reason to access operating systems outside of a restore.

[00:31:54] Speaker 00:
But there's no basis for that.

[00:31:56] Speaker 00:
It's still a backup and restore system.

[00:32:00] Speaker 00:
And so the purpose of having one operating system instead of 10 on the database is just for storage purposes.

[00:32:05] Speaker 00:
You still wouldn't need it.

[00:32:07] Speaker 00:
unless you were restoring it back.

[00:32:09] Speaker 00:
And Field says nothing, and there's no reason why you would want to access it outside of that.

[00:32:14] Speaker 00:
It's not a data distribution system.

[00:32:16] Speaker 00:
This is a backup and restore system.

[00:32:19] Speaker 00:
The second point is my colleague was talking about some sort of proactive step to restrict access.

[00:32:26] Speaker 00:
And the claim says wherein access is restricted.

[00:32:29] Speaker 00:
It doesn't say any particular form of restriction.

[00:32:32] Speaker 00:
It just says access has to be restricted.

[00:32:34] Speaker 00:
And in Field, as I mentioned, as written,

[00:32:37] Speaker 00:
access is restricted because that's the only form of access.

[00:32:41] Speaker 00:
If there's nothing else, I thank you for your time.

[00:32:44] Speaker 03:
Okay.

[00:32:45] Speaker 03:
I thank both counsel.

[00:32:46] Speaker 03:
The case is submitted.

[00:32:48] Speaker 03:
That concludes our session for this morning.