[00:00:00] Speaker 04:
Our second case is number 23, 1367 in Genico.

[00:01:16] Speaker 00:
Thank you, Your Honor.

[00:01:16] Speaker 00:
May it please the Court, Noah Liebowitz from Deckard LLP on behalf of Appellant I.O.

[00:01:21] Speaker 00:
Engine.

[00:01:24] Speaker 00:
Your Honors, as the briefing reflects, there are a number of errors in the Court's analysis below in denying I.O.

[00:01:31] Speaker 00:
Engines post-trial motions.

[00:01:33] Speaker 00:
I'd start with the pre-installed firmware upgrade issue, which really permeates the entirety of the District Court's decisions below.

[00:01:44] Speaker 00:
That theory that there was a pre-installed former upgrader is not something that was tried in this case.

[00:01:51] Speaker 00:
All of the trial evidence was about a downloadable former upgrader.

[00:01:56] Speaker 00:
It was mentioned dozens of times that this was something that was downloadable.

[00:02:01] Speaker 00:
The README document, which is what Ingenico read against the claim language,

[00:02:09] Speaker 00:
was referred to a downloadable firmware upgrade.

[00:02:12] Speaker 00:
And that's important because certain of the claim elements in this case refer specifically to code that's stored and executed on the terminal, on the host computer, and executed by the terminal processor, the processor of the host computer.

[00:02:27] Speaker 00:
And that's what they showed by saying you download it to your computer, and you're running it on your computer.

[00:02:33] Speaker 00:
They didn't have a theory at trial that there was this pre-installed firmware upgrade for good reason.

[00:02:41] Speaker 00:
It's something that only came up after trial.

[00:02:44] Speaker 04:
Okay, so that I can understand your argument.

[00:02:47] Speaker 04:
There's a document at 10931, which is this disk-on-key technology, right?

[00:02:53] Speaker 04:
Yes, Your Honor.

[00:02:54] Speaker 04:
And my understanding is the district court relied on that document.

[00:02:58] Speaker 04:
as showing that this was an installed option that was available on disk-on-key technology.

[00:03:08] Speaker 04:
And you argue that that was not argued to the jury, that the document wasn't read to the jury.

[00:03:14] Speaker 04:
I understand that argument.

[00:03:15] Speaker 04:
But just put that to one side for a moment.

[00:03:18] Speaker 04:
Let's assume that this was argued to the jury.

[00:03:21] Speaker 04:
Would this document provide substantial evidence to support the on-sale bar finding?

[00:03:27] Speaker 00:
So we don't believe so, Your Honor, because even if putting aside the issue, as Your Honor's hypothetical puts forward, that the document was not argued to the jury in that way, even if this document showed there was some kind of former up grader,

[00:03:44] Speaker 00:
that was pre-installed on the devices, there was no evidence in this case as to how that firmware upgrade worked.

[00:03:51] Speaker 00:
And that very document talks about the application being run directly from the disk-on-key device, not from your computer.

[00:04:00] Speaker 00:
It says it right there in the document.

[00:04:02] Speaker 04:
Well, that was true of the device before this upgrade, right?

[00:04:07] Speaker 04:
It ran applications independently of the computer, right?

[00:04:11] Speaker 00:
the disability had the capability of doing so.

[00:04:15] Speaker 04:
Yeah, and so my question is, as I understand it, the upgrade, what you refer to the upgrade, is that it enables the thumb drive or whatever it is to have an application that permits it to get automatic upgrades, correct?

[00:04:33] Speaker 00:
Well, that's the downloadable one.

[00:04:36] Speaker 00:
That was the purpose of the downloadable one.

[00:04:38] Speaker 04:
Yeah, okay.

[00:04:39] Speaker 04:
So why doesn't this show that that option was available?

[00:04:45] Speaker 04:
Why doesn't this document show it?

[00:04:47] Speaker 04:
Assuming it was argued properly.

[00:04:49] Speaker 00:
Right, so assuming that if it was argued properly as a pre-installed upgrader, the question is how did that pre-installed upgrader work?

[00:04:58] Speaker 00:
and there is no evidence that the pre-installed upgrade, if there were a pre-installed upgrade, that it would work the same way as the downloadable one, which require, again, because the claims require certain code to be on the computer and certain code on the... This talks about having an application that upgrades their firmware using the upgrade program.

[00:05:19] Speaker 04:
So that's not the application that allows firmware upgrades.

[00:05:24] Speaker 00:
Well, it is, Your Honor, but that document says that application can be run directly from the Disk on Key device itself, rather than having an application where you have some of the code on the computer and some of the code on the Disk on Key, on the portable device.

[00:05:40] Speaker 00:
The claims require certain program codes, specific program code, certain program code that's running on the computer, on the terminal,

[00:05:48] Speaker 00:
and certain program code that's running on the portable device.

[00:05:51] Speaker 00:
They showed that with the downloadable one.

[00:05:53] Speaker 04:
Did you suggest that this is somehow different from the upgrade, from the downloadable upgrade?

[00:05:58] Speaker 00:
Well, there's no evidence, if there were a pre-installed version of an upgrader, there's no evidence as to how that one worked.

[00:06:06] Speaker 00:
There's no witness, no documents, nothing about how, if there were a pre-installed upgrader,

[00:06:11] Speaker 00:
That could have worked just by you plug in your Disconkey device, and it runs automatically.

[00:06:16] Speaker 00:
There's no indication that any kind of pre-installed upgrade, or if one had existed, worked exactly the same as the downloadable one.

[00:06:25] Speaker 00:
And it's important, again, because where is the code?

[00:06:28] Speaker 04:
I just don't understand.

[00:06:30] Speaker 04:
What this talks about is having an application that does automatic upgrades, right?

[00:06:37] Speaker 04:
Yes, Your Honor, and there is... So why doesn't that satisfy the claim limitation?

[00:06:42] Speaker 00:
So two reasons.

[00:06:43] Speaker 00:
First of all, there was testimony at the trial put in by Ingenico that there were different, there were potentially different ways of doing former upgrades.

[00:06:51] Speaker 00:
They had a witness, the witness from M-Systems, who talked about even before there was... What does the claim require?

[00:06:58] Speaker 00:
So that's my point, Your Honor.

[00:07:00] Speaker 00:
The claim requires specific program code, some of the code being run on the computer, the terminal, and some of the code being run on the portable device, which they analogize to the disk on key here.

[00:07:14] Speaker 00:
If you have an application that's on the disk on key itself,

[00:07:19] Speaker 00:
pre-installed, run from that disk on key, you haven't shown the elements of the claim that require code to be run on the computer.

[00:07:28] Speaker 00:
The reason why the downloadable one was the focus at trial is because you download it to your computer.

[00:07:34] Speaker 04:
I didn't see this argument in your brief.

[00:07:36] Speaker 00:
Oh, yeah.

[00:07:36] Speaker 00:
Your Honor, it's certainly in the brief.

[00:07:38] Speaker 00:
I'll find the citation for you.

[00:07:40] Speaker 00:
But yes, we certainly make the point in our brief that there is no evidence, if there were a pre-installed version, there is no evidence as to how that worked.

[00:07:48] Speaker 00:
and that the operation would have actually met the limitations of the claim.

[00:07:53] Speaker 04:
Do you agree that the upgrade version that was available that supports the public use finding did satisfy the claim limitation?

[00:08:04] Speaker 04:
Do you agree that the upgrade download that was available did satisfy the claim limitation?

[00:08:14] Speaker 00:
Well, that was that we haven't challenged on appeal, Your Honor, that the downloadable version met those limitations of the claim.

[00:08:21] Speaker 00:
Because it showed code running on the computer, because you downloaded it to your computer, you ran it on your computer, and that was the whole focus at the trial.

[00:08:30] Speaker 00:
And so that page, even if you accept, as you know, put aside our argument that it was not something that was argued to the jury, that the page

[00:08:38] Speaker 04:
Is talking about that on the public use finding the district court made why isn't there a public use here when the.

[00:08:50] Speaker 04:
Several hundred people.

[00:08:51] Speaker 04:
had the Discount Key technology, and why isn't there a proper inference that those people downloaded this available application that was offered to them and encouraged by the patentee.

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

[00:09:09] Speaker 00:
So on the public use, we look at the 3M case, Your Honor, which was, by the way, a reversal of a denial of J-MAL by this court.

[00:09:20] Speaker 04:
Stick with my question.

[00:09:21] Speaker 04:
My question is, there's evidence that several hundred people purchased the Discount Key technology.

[00:09:27] Speaker 04:
There's evidence that they were offered an upgrade, which you agree met the claim limitations.

[00:09:34] Speaker 04:
Why isn't the jury entitled to infer

[00:09:38] Speaker 04:
that given the amount of encouragement by the patentee to download this and to use this, that that was sufficient to create an inference that people did actually download and use it.

[00:09:51] Speaker 00:
Okay, and I think the answer is, Your Honor, because that type of inference

[00:09:55] Speaker 00:
is exactly the same type of inference that this court said would not satisfy clear and convincing evidence.

[00:10:01] Speaker 01:
Maybe I'm mixing up apples and oranges, but there's an exhaustive discussion of all of this by the district court.

[00:10:09] Speaker 01:
And on page A18, am I talking about something other than this, where he says that to begin the M-system sales spreadsheet,

[00:10:16] Speaker 01:
sheets identified hundreds of sales of disk-on-key devices with the firmware upgrade to customers in the United States as early as 2002.

[00:10:26] Speaker 00:
So that is what the district court said.

[00:10:28] Speaker 00:
However, those spreadsheets do not identify anything about a firmware upgrade.

[00:10:33] Speaker 00:
The district court only reached that conclusion.

[00:10:35] Speaker 00:
The spreadsheet just shows sales of disk-on-key devices.

[00:10:38] Speaker 00:
That's all it shows.

[00:10:39] Speaker 00:
It shows sales of the device itself.

[00:10:40] Speaker 04:
But there was other evidence that the patentee offered the upgrade, which you say was within the claim limitations, and encouraged people to upgrade it and use it, right?

[00:10:51] Speaker 00:
Correct.

[00:10:52] Speaker 00:
They sold the discount keys.

[00:10:53] Speaker 00:
They've made the upgrade available on their website.

[00:10:55] Speaker 04:
So why isn't that other evidence sufficient for a jury to conclude that people who purchased some of the hundreds of people who purchased the discount key technology downloaded the app and used it?

[00:11:07] Speaker 00:
Okay, so two reasons, Your Honor.

[00:11:08] Speaker 00:
Number one, this particular application, this upgrader, was not something that was incidental to the normal use of a dyscon key.

[00:11:16] Speaker 00:
it's something that's completely optional and tangential.

[00:11:19] Speaker 00:
You could use your disk-on-key just fine without ever downloading or using this upgrade.

[00:11:25] Speaker 00:
So the fact that people had purchased disk-on-keys, which, again, there were witnesses who testified all the way through that these were just blank devices with no applications on them at all, the witnesses they put in that said that they were just blank devices, having that and using it does not imply... Your client

[00:11:45] Speaker 04:
advise people that this upgrade was available, encourage them to do the upgrade and use it, which you've agreed.

[00:11:54] Speaker 04:
Why isn't that sufficient to have an inference that some people follow that advice?

[00:12:01] Speaker 00:
OK, so not my client, Your Honor, but the M-Systems certainly did put out there that there was this upgrade.

[00:12:06] Speaker 00:
They made an upgrade available on their website.

[00:12:09] Speaker 00:
And my answer to your inference question is that this court has required more than that with respect and said that those type of inferences are not clear and convincing evidence.

[00:12:20] Speaker 00:
Particularly in the 3M case, you had a situation where people actually sent

[00:12:26] Speaker 00:
The invention had two different parts to it.

[00:12:28] Speaker 00:
You had to mix them together.

[00:12:30] Speaker 00:
There was evidence that those were sent out to specific customers.

[00:12:34] Speaker 00:
And the question was, is that a reasonable inference that having received that, the person who got it actually used it by putting the two parts together and using it?

[00:12:44] Speaker 00:
And this court said, no.

[00:12:45] Speaker 00:
That's not a reasonable inference to make on a clear and convincing evidence burden.

[00:12:49] Speaker 00:
You need to actually show someone actually used it.

[00:12:52] Speaker 00:
And here it's a similar issue.

[00:12:54] Speaker 00:
You'd have people with a disk on key, a blank disk on key.

[00:12:57] Speaker 00:
They would have to download the application.

[00:12:58] Speaker 00:
There was no evidence that anyone downloaded it.

[00:13:01] Speaker 00:
There were no download logs.

[00:13:02] Speaker 00:
There was nothing like that.

[00:13:03] Speaker 00:
There was not even any evidence that an update was available, that somebody would think, oh, I want to update my disk on a key.

[00:13:12] Speaker 00:
There was no evidence that an update was available during the relevant time period.

[00:13:16] Speaker 00:
There was no evidence that there was nothing showing that anyone actually downloaded it.

[00:13:20] Speaker 00:
or used it and the inference that someone may have simply because it was made available is actually less of evidence than was available in 3M where somebody actually

[00:13:32] Speaker 00:
specifically provided, and it was received, the different parts of the invention.

[00:13:35] Speaker 00:
Yet this court said that's not enough to show actual use.

[00:13:39] Speaker 01:
Can I ask you just a quick question on estoppel before you sit down?

[00:13:44] Speaker 01:
Yes.

[00:13:44] Speaker 01:
Which is your blue brief indicates that estoppel should apply if the device art is merely cumulative or not substantively different from the prior art that could have been raised in an IPR.

[00:13:59] Speaker 01:
I'm not clear what those terms mean.

[00:14:02] Speaker 01:
I mean, how can something by its nature, a physical device is substantively different from a printed publication, right?

[00:14:13] Speaker 00:
Well, so I think the answer is it may be, but not necessarily if the printed publication describes the operation of the physical device.

[00:14:20] Speaker 00:
That's what those cases say.

[00:14:22] Speaker 00:
And the non-substantively different, that's what the district court found on summary judgment, saying that they would have to show that it was a substantively different use and ground in order to stop them not to apply.

[00:14:34] Speaker 01:
But it's clearly a physical embodiment.

[00:14:37] Speaker 01:
that the jury can see and understand in a different way than when something written on a piece of paper, right?

[00:14:44] Speaker 00:
Well, I don't know that I agree, Your Honor.

[00:14:45] Speaker 00:
It certainly is a physical embodiment.

[00:14:47] Speaker 00:
But all they did in this case is hold it up and say, here it is.

[00:14:50] Speaker 00:
They didn't show anything different or show anything about that physical device that was not also already in the printed publications.

[00:14:59] Speaker 00:
The district court pointed to a processor.

[00:15:02] Speaker 00:
The device had a processor.

[00:15:03] Speaker 00:
They showed that through the publications.

[00:15:05] Speaker 00:
They didn't open up the device and show the jury a processor.

[00:15:08] Speaker 00:
All they did, they didn't even plug the device in at trial or use it with the firmware upgradeer.

[00:15:15] Speaker 00:
They had the firmware upgradeer.

[00:15:16] Speaker 00:
They had the device.

[00:15:17] Speaker 00:
They didn't even put them together at trial to show the jury how it operated.

[00:15:22] Speaker 00:
All they did with the physical device is say, here it is.

[00:15:25] Speaker 00:
And then they relied entirely on the publications, the printed publications, which they had and were available to them for the IPR.

[00:15:32] Speaker 00:
to make out their case about what the device does and what it has.

[00:15:37] Speaker 01:
No, they couldn't make out their case in the IPR.

[00:15:40] Speaker 01:
It's not an on-sale bar case under the IPR.

[00:15:43] Speaker 00:
Correct.

[00:15:43] Speaker 00:
It was not an on-sale bar case.

[00:15:45] Speaker 00:
It was just what the printed publication showed about how the device operates.

[00:15:49] Speaker 01:
Yeah, they didn't have to show that in the jury trial, they're proving that there was on-sale use through the manual and through the device.

[00:16:01] Speaker 00:
Well, through the manual, again, the device, they didn't actually do anything with the device in front of the jury other than show it to them.

[00:16:07] Speaker 04:
But it's a different question.

[00:16:09] Speaker 04:
I mean, the on-sale bar requires all sorts of things that the printed publication theory doesn't require.

[00:16:15] Speaker 04:
It requires ready for patenting, embodiment of the invention, commercial offer for sale.

[00:16:21] Speaker 04:
It's different proof, right?

[00:16:23] Speaker 00:
Well, certainly different proof is required, Your Honor, but our point is that all of the proof they put in, even on the on-sale bar issue, came from paper.

[00:16:31] Speaker 00:
printed publications.

[00:16:32] Speaker 00:
None of those things that Your Honor just mentioned were proved up by showing the jury a device, which in fact, the one they held up, they didn't even say this was one that was on sale prior.

[00:16:42] Speaker 00:
I'm not even sure which version it was that they held up.

[00:16:45] Speaker 00:
None of that came in.

[00:16:46] Speaker 00:
There was no evidence of that at the trial.

[00:16:49] Speaker 00:
Everything at the trial was, all the capabilities of the device, all of that was on paper.

[00:16:54] Speaker 00:
from publications, which they had.

[00:16:57] Speaker 00:
And the judge, in fact, made a finding below in summary judgment that they had access to all of those publications and papers in time and with reasonable use in the IPR.

[00:17:12] Speaker 04:
OK.

[00:17:12] Speaker 04:
I think we're out of time.

[00:17:13] Speaker 04:
We'll give you two minutes to rebuttal.

[00:17:15] Speaker 04:
Thank you.

[00:17:23] Speaker 02:
May it please the court, Kerry Timbers for Ingenico.

[00:17:27] Speaker 02:
Your Honor, there was only evidence of one upgrader.

[00:17:33] Speaker 02:
It's the same upgrader, whether it's downloaded or whether it's provided on the disk on key.

[00:17:38] Speaker 02:
The disk on key is a storage device.

[00:17:40] Speaker 02:
And so the district court relied upon a one key.

[00:17:44] Speaker 04:
How do we know they're the same?

[00:17:46] Speaker 02:
Pardon?

[00:17:46] Speaker 02:
How do we know they're the same?

[00:17:47] Speaker 02:
There's no evidence they're not.

[00:17:49] Speaker 02:
The only evidence is that there is an upgrader program.

[00:17:53] Speaker 04:
The burden of proof was on your client.

[00:17:55] Speaker 02:
Yes, and there's evidence that there's an upgrader program.

[00:17:59] Speaker 02:
And we know that that was available for download.

[00:18:03] Speaker 02:
And we know that the upgrader program, it's called the same thing, is available on the disk on key, according to the document 10931 that your honor mentioned, and that the district court relied upon with respect to the sale.

[00:18:20] Speaker 02:
The download availability is not a sale, but providing it on the disk on key when it's sold is on sale.

[00:18:29] Speaker 02:
So we cover both 102A and 102B.

[00:18:36] Speaker 02:
We do believe that it is an appropriate inference that if you make the download available and you encourage all of your users to use it and you provide the README file, which is on the website that explains exactly how to use it, there is a reasonable inference that the jury could say, yeah, people did it.

[00:19:01] Speaker 02:
People downloaded it and people used it.

[00:19:04] Speaker 04:
they rely on 3M.

[00:19:05] Speaker 04:
Why is that different?

[00:19:07] Speaker 02:
So 3M is different because there were two different things that had to be put together and each one alone did not

[00:19:17] Speaker 02:
anticipate and so you had to put those two things together and there was no evidence those two things were provided in a way that would allow somebody to put them together and no evidence that people were encouraged to put them together.

[00:19:32] Speaker 02:
Whereas here this was provided, the upgrade was provided with the device in the case of the document that proves the sale.

[00:19:44] Speaker 02:
And it was provided by downloads specifically to users of the disk-on-key device.

[00:19:51] Speaker 02:
So they were saying, do it.

[00:19:54] Speaker 02:
This will make your disk-on-key better, because we'll upgrade the software on the disk-on-key.

[00:20:01] Speaker 02:
So they were tied together in a way that in 3M they weren't.

[00:20:09] Speaker 02:
With respect to the IPR, I think Your Honor's questions were right.

[00:20:18] Speaker 02:
The information about the upgrader was not available at the time, in any event, at the time of the IPR.

[00:20:27] Speaker 02:
This is stuff that was from 20 years before.

[00:20:30] Speaker 02:
In order for Ingenico to obtain it,

[00:20:33] Speaker 02:
We had to subpoena Sandisk, which was the successor to something like three different corporate acquisitions, to even obtain the documents.

[00:20:44] Speaker 02:
And in order to get the testimony that was used at trial, which was deposition testimony from Israeli witnesses, we had to go through the Hague Convention.

[00:20:55] Speaker 02:
So none of that evidence of sale or even abuse of the upgrader was available at the time of the IPR.

[00:21:02] Speaker 02:
So there was no reason for there to be any estoppel.

[00:21:10] Speaker 02:
I think those are the key aspects of my presentation.

[00:21:15] Speaker 02:
I just wanted to point out that

[00:21:17] Speaker 02:
The document that the district court relied upon was a single page document.

[00:21:23] Speaker 02:
It was put in front of the jury, and there was testimony about it.

[00:21:28] Speaker 02:
And also that README file, which had screenshots that showed how the upgrader actually worked, was testified about by IO Engine's own expert

[00:21:47] Speaker 02:
And he specifically testified that those screens and the use of that would teach a person of ordinary skill in the art to make and use the invention.

[00:22:00] Speaker 02:
In fact, there are no further questions.

[00:22:01] Speaker 01:
I have a question.

[00:22:03] Speaker 01:
Yes.

[00:22:04] Speaker 01:
On the estoppel question, do you agree with what your friend said that the only discussion or use of the actual device that was on sale was holding it up?

[00:22:16] Speaker 01:
No discussion of what it did or whatever?

[00:22:19] Speaker 02:
There was an enormous amount of discussion about what it did.

[00:22:23] Speaker 02:
You're talking about the disk on key?

[00:22:24] Speaker 01:
Yeah.

[00:22:26] Speaker 02:
Yeah, so at trial, Mr. Geyer, who was in Genico's expert, went through exactly what it did, looked at all the documents that describe what it did.

[00:22:39] Speaker 01:
I'm talking about the use of the device itself, the import of showing the jury the device.

[00:22:46] Speaker 02:
Yes.

[00:22:47] Speaker 02:
We couldn't actually run the UpGrader program because there was no upgrade to be had.

[00:22:56] Speaker 01:
In other words, this was a- Did you have testimony that went along with the device to say what it did and how it behaved?

[00:23:03] Speaker 02:
Absolutely.

[00:23:04] Speaker 02:
We had three witnesses from the people.

[00:23:08] Speaker 02:
We had Mr. Harcabi, Mr. Elisar- Would you have some sort of record sites to go along with you?

[00:23:15] Speaker 01:
Yes, Your Honor.

[00:23:17] Speaker 02:
My colleague will help me with that.

[00:23:19] Speaker 02:
But in our, there we go.

[00:23:24] Speaker 02:
Yes.

[00:23:25] Speaker 02:
We have on our page six of our brief, we talk about the testimony of three former M Systems employees.

[00:23:34] Speaker 02:
And I can give you the appendix numbers if you wish.

[00:23:37] Speaker 02:
Well, if they're included on page six.

[00:23:38] Speaker 02:
They're all on page six.

[00:23:40] Speaker 02:
So the testimony from the three witnesses, also the documentary evidence from M Systems, which

[00:23:49] Speaker 02:
And Western Digital, which we got through Sandisk, is also there, as well as public documents that were available.

[00:23:56] Speaker 02:
The physical disk-on-key USB device that we obtained through this subpoena.

[00:24:03] Speaker 02:
And then expert testimony from Mr. Guy or going through all this.

[00:24:06] Speaker 01:
I have a recollection that the district court said that you did a firmware upgrade or demonstration at trial.

[00:24:13] Speaker 01:
Is that correct?

[00:24:16] Speaker 02:
Yes and no.

[00:24:17] Speaker 02:
No, we couldn't do a firmware upgrade or demonstration because there were no servers out there anymore to do that.

[00:24:25] Speaker 02:
But the README file contained screenshots.

[00:24:29] Speaker 02:
And there was testimony from the witnesses about this.

[00:24:33] Speaker 02:
And they showed what screens you would have at each point in using the actual firmware upgrade.

[00:24:39] Speaker 03:
Okay.

[00:24:40] Speaker 03:
So that was the demonstration.

[00:24:42] Speaker 02:
Yes.

[00:24:43] Speaker 02:
And Dr. Rubin, who was IOEngine's expert, was cross-examined by me and answered a lot of questions about how going through those screens would, in fact, teach a person of ordinary skill in the art how to make and use the invention.

[00:25:02] Speaker 02:
Okay.

[00:25:02] Speaker 04:
Thank you.

[00:25:04] Speaker 04:
Okay.

[00:25:04] Speaker 04:
Thank you.

[00:25:04] Speaker 02:
That's all.

[00:25:04] Speaker 02:
Thank you, Your Honor.

[00:25:06] Speaker 04:
Mr. Lieblitz, two minutes.

[00:25:14] Speaker 00:
Thank you, Your Honor.

[00:25:15] Speaker 00:
So just working backwards, so all of what counsel was just talking about in terms of the estoppel issue, Judge, he said himself, it was the README file that they pointed to with particular screens.

[00:25:29] Speaker 00:
That README file, that was a document.

[00:25:31] Speaker 00:
That was a physical document.

[00:25:33] Speaker 00:
It was one of the documents that the court below on summary judgment found specifically

[00:25:39] Speaker 00:
that they had available to them at the time of the IPRs.

[00:25:43] Speaker 04:
I'm not understanding how it can be that an on sale bar could be an estoppel issue with respect to the on sale bar because some of the documents were used

[00:25:59] Speaker 04:
additional requirements with respect to the on-sale bar.

[00:26:03] Speaker 04:
It's just not, there are issues with respect to on-sale bar that just are not addressed or considered by the Commission, by the Patent Office.

[00:26:15] Speaker 00:
So I agree with that, Your Honor, but the issue here is that all of the evidence with respect to all of those points was something that was available to them at the time of the IPR.

[00:26:24] Speaker 00:
It was all documented evidence.

[00:26:25] Speaker 04:
If they couldn't have introduced it, it would have been irrelevant.

[00:26:29] Speaker 04:
The question of whether the thing was on sale was irrelevant to the IPR proceeding, right?

[00:26:34] Speaker 00:
No, I don't agree with that, Your Honor.

[00:26:38] Speaker 00:
They could have made that exact argument.

[00:26:41] Speaker 04:
How did you make the exact argument that it was embodied in something that was salt?

[00:26:46] Speaker 00:
By putting in the spreadsheets on the cells of the device, which is all they put in here.

[00:26:51] Speaker 01:
But why would that be germane?

[00:26:52] Speaker 01:
I mean, that's the point of the IPR, is that you can't do an on-sale bar.

[00:26:57] Speaker 00:
Well, you certainly can't do a physical device.

[00:26:59] Speaker 00:
You can put in a physical device.

[00:27:02] Speaker 00:
I agree with that.

[00:27:03] Speaker 00:
But they could have all of the documentation.

[00:27:06] Speaker 04:
Let's put it this way.

[00:27:07] Speaker 04:
There are elements that are necessary to establish an on-sale bar defense that are irrelevant to the IPR when you're dealing with a printed publication.

[00:27:17] Speaker 00:
I agree with that, Your Honor.

[00:27:18] Speaker 03:
But I think the point here is used for an entirely different purpose at the IPR, right?

[00:27:25] Speaker 03:
It's in there to show that this is prior art, that it's been disclosed before.

[00:27:31] Speaker 03:
It has nothing to do whether it's been sold or used.

[00:27:36] Speaker 00:
Certainly, that's correct.

[00:27:37] Speaker 00:
The evidence with respect to what's put in is to establish it as prior art.

[00:27:43] Speaker 00:
But that issue as to whether it is prior art or not is also the issue that was an issue in the district court proceeding, for which they relied entirely on documentary evidence, not anything other than that.

[00:27:56] Speaker 04:
Documentary evidence to show that it was a physical product that was sold.

[00:28:02] Speaker 00:
Well, and I will say, Your Honor, that this is something that, with respect to the subpoena that he mentioned, that they only got these documents by subpoena, that those exact documents, that's what the district court had below on summary judgment and said, and I'm quoting from the district court at appendix 115, Ingenico does not suggest any reason to believe that it could not have raised those documents in the IPR proceeding as well, referring to the documents that we're talking about here, the firmware upgrade document,

[00:28:30] Speaker 00:
All of the documents describing the disk on key, all of the documentary evidence that what they actually relied on at trial, the district court made a finding that they did not, that Ingenico did not suggest any reason to believe

[00:28:42] Speaker 00:
that I could not have raised those documents in the IPR proceeding.

[00:28:46] Speaker 00:
Once you cross that bridge, that they could have raised all of those documents in the IPR proceeding, then they should have been stopped on that now, unless they made a substantively different case by virtue of putting in a physical device.

[00:29:02] Speaker 04:
I think we're out of time.

[00:29:03] Speaker 04:
OK, thank you.

[00:29:04] Speaker 04:
Thank all counsel.

[00:29:05] Speaker 04:
The case is submitted.

[00:29:06] Speaker 00:
Thank you, Your Honor.