court in the short time i have available i'd like to deal with three issues the unable man issue to direct infringement issue and in the time available the trade secret issue sonny first deal with non enablement the district court found that the claims of the sixty five patent were not enabled due to the inventor's failure to practice on the wrong seats in a distraught eyes that existed for years after the sixty five application was is the claims cover destro your honor that is true but the amgen versus herc's case makes it clear that the enablement issue is not dependent on whether or not the accused difficult it may have he was not able to practice long six on that particular destroyed and he was not able to do it until later and my answer to you is your honor i don't quite know what exact evidence was but even if the evidence was that it took him a while to be able to practice that under the case so i decided it doesn't matter it was an after development concept it was commercial and it was insignificant in terms of the  exist but it's new technology in the sense that what could be enabled till later but the idea that's exactly what they were but they could enable they did have a commercial environment for short six in one hundred eighty two in the appendix company had a device which they were touting on short six with this trial so it wasn't as though you couldn't use disk drives in fact one of the witnesses said that it was possible to implement a patent on many  in any form i think it made is the word many but you're right it was a qualified statement that's exactly right so let me talk about non infringement district court found on infringement based on the data satisfy indiscriminately reducing all frequencies and on that basis even though there were enormous conflicting statements of experts he found that there was no infringement based on some testimony which appears on page twenty three of the blue grave in which a witness was asked and when you detected that two point six kilohertz resonance did you do anything as a result and his answer was a very ambiguous fancher he said let's he said we're both those surprises there would be so much sound power focused in a narrow frequency band so kind of between the two of us we said let's get try it let's try to get rid of expert testimony said that it would make no sense to treat that as a single frequency since no engineer would target one frequency when each peak spans a range of frequencies and moreover there is evidence that the frequency and in fact ideas but he unequivocally said in other places that he meant just that when your honor is not clear the sygate realize i a subsequent statement in which there that case i do it your question is do i lose on that issue i do not because there is testimony that the source code shows are not filtered targeted van from two thousand to thirty five hundred hertz so there is conflicting filter covers the other frequencies indicate that he was selecting other frequencies how do you it selects a range of frequencies if if he selected that to  two thousand to thirty five hundred megahertz by targeting the middle isn't the selecting more th just confirming you're not in any way disputing that the claim construction not healed the plane has that right that's exactly right ok the crane construction is at least the chosen unwanted frequencies to very broad claim construction we think it's totally consistent tory compatible with our point that meaning you have to choose the frequencies right well yes but i'm not sure what you mean by choose the the answer is for example on the next one s c s i which i understand they pronounce causing a low pass filter is and they reduce unwanted frequencies above a certain level so they choose discard frequencies above that level they choose to keep the frequencies below that level i suggest that if that's what you mean by choose frequencies that's exactly what they do in other words the just by choosing the not  or the low pass filter on the fact that the use filters cover radio frequencies is itself sufficient as well you argue that that's exactly right isn't this an instance where the claim construction was really implied beyond the words  beyond the the words of the construction you know we don't have any problems with deciding to reduce frequencies above a certain range that is selecting frequencies that are on wanted we don't have any problem with selecting specific frequencies if you want to select space it is the in the crane construction is broad enough to cover all those things in fact the district court in th district court claim construction presupposes that the selection process included a determination that they are on one you know their words not simply that that's getting a whole bunch of frequencies but we know neither particular ones are wanted because they cause problems yes and exactly that's exactly right and that's exactly what happened in this custody but where does the claim construction require your first to select an unwanted frequency and then work to get frequency was chosen since it gave the best performance regarding exhibiting excitation of audio frequencies so he decided what gives the best performance and they say well that's an ad hoc technique and you can't do that is nothing in the claim construction that tells you how you have to decide what you don't want in each of these cases they decide what they don't want they decide that certain frequencies are not wanted because they're not good frequencies and they exclude others in one case for me as best performance and so they exclude in the case of the low pass filter where they have a need that above which they exclude and below which they are reduced and below which they don't they have decided that those above the level are unwanted which they don't give the best performance so i don't need to if your question is is this sort of like pin the tail on a donkey and they just go blindly and decide they're going to put a cut  off at x without any reason for cutting off facts i don't need to go that far with i don't think that's our case our case is one in which they have a reason for picking what they don't want and the reason is that they have evidence that in perform quantitative analysis to identify particular seek acoustic frequencies free duction supported by seagate docs and documents and testimony at flu twenty seven in twenty eight they actually know what they don't want and they exclude what testimony there are hundreds of pages of seagate and compaq testimony we have a classic case of dueling experts on almost every trade secrets the district court resolved a district  they found that it was respect to many of these that your experts really did not testify that the trades for example were covered by this law if you read the n b a s require written disclosure of your honor i can go slide by slide i have them here and i can point to testimony of the experts in which they pointed to what portion of the slide of the october ninety eight meeting and if you look at the toll road ninety eight later you will see some very general statements which don't go into the kind of detail that seagate would urge us and the urge we had to go into in fact if you look at the nondisclosure agreement and paragraph two it says description of confidential information and then it says be specific and yet when you look at the description it's a very general description is that the basic difference here is that the district court saw the description have to be specific and you think it doesn't have to be specific your honor it says be specific market what would be beneficial to customers are you defending those trade secrets yeah i can understand customer lists i can understand pricing techniques things that nature  marketing field being highly sensitive trade secrets but general assessments that our customers are going to like this feature is not a trade secret your honor that is in six b by way of example if he is not just that it's beneficial i know that's their argument the key is that this trade secret permitted the parties seagate in contact to leverage their position into a market leadership position and their way it was more than that it's just beneficial it was that you can build your entire program around these trees trade secrets the quick and quiet trade secrets and you can really end up separating yourself from your competitors and the testimony was that they copied dr singer's plan to a t right down from beginning to end with the last element so it's more than just beneficial in just a court selfie did not have to go into a conflict of law analysis because the law of new york and the law of texas which applied to come back with a sane and we pointed out he describes what is disclosed and he describes the characteristics of what is disclosed on this on this this and the other slide and when you look at the definition of one b in the at c definitions and you look at his testimony at eight by two or three nine and then you look at all of all of those four slides you will see that his testimony corresponds to that particular trade secret and the same is true for two eight to see into ease in each of these cases there is expert testimony tying the specific statements in the slides to those particular trade secrets in the district court require a level of specificity which i submit is not required by the parties actions and my last point i will note and i will sit down is that while i feel that we did comply with the n our position is also that under under california law the gaiman case and the california kutta of california uniform trade secret act these trade secrets are you need to use that time you have  recent decision which is a maxell corporation versus a touchy global which contrary mr daughter who says that if it's a very sweeping and broad set of claims that we're dealing with that that long seeks aren't even necessary for an operative drive hardly a they weren't even very prevalent at the time well they're quite prevalent at the time actually the short sticks in them particularly the the particular embodiment that he's describing there is a very obsolete sort of see so as long since gone out of existence  this drive as they existed then and then certainly as they have come to be involved enormous numbers of tracks which require it obviously movement of these arms back and forth with a speed that's frankly for at least for a lawyer  and what we have here is an invention that was designed to deal with cranes huge cranes and deal with vibrations and then an effort to take that in apply it in a completely different system but it has the sort of claim to say this applies  got my math i'm going to apply it to this specific system what's going to happen he says at the time we didn't know why it wouldn't work this is in one thousand nine hundred two and that's the core of our trade six basically later on one thousand nine hundred seven we took up the disk drive again and we figured all we knew and so we were doing that approach it was an interesting experiment it didn't work how many of the three hundred experiments fail all but the two hundred ninety eight right but we're talking about a hundred but we're also talking about oh yeah one failed experiment year where is that evidence of a new experimentation  because one is i would say that waiting nine years to come back to it is in fact should be regarded as onto an army base working on everything else in the world he doesn't this isn't his line well nobody else was able to come up with it in the interim my body was looking at it either and important element to keep in mind here which is what is the notice function of one twelve supposed to accomplish it is supposed to let anyone in the art say this is what i'm giving you and then you can go and do it and i don't what he could do it until he has a exactly so it sees me this completely defeats the fundamental purpose of enablement requirement when you when you sit there you don't allow anybody who's in the art to know how to make it work in this particular system with this extraordinarily broad sweep you wait nine years later and you put in the way to actually make it work in a trade secret which you hide from the public that cannot be what the patent system is designed to get at and that's why the district court was right to say there's not adequate enablement under the circumstances this patent is not forcible and h obsolete products in there that work sequentially in which you could actually use it for that particular purpose what i would suggest to you is that's not enablement any more than the flipside is enablement which is it where you can in fact provide everything except for when you've got the contrary facts on the record don't you have to deal with them as facts and said to be sure resolving this matter instantly presuming you know this level of stealing the are presuming that the record somehow evidence of non enablement it is a violation of section why did well evidence that he couldn't do it at one point he did it another point on a single machine in a single setting when he was it's just not evidence of un do experiment language is somebody else killed in denmark i would say the same deal with the facts here you've got so many facts and you're telling us all the facts are our way when they don't know what i'm telling you is that the material facts are all our way which is that the inventor said he couldn't do it and no one else could do it nobody could do it for nine years and when he did do it he put it in a trade secret code rather nobody could do it for nine years because if it had been done in the nine year period there would be some evan how do you know anybody worked on it for nine years very clear claim destruction ruling which still the side doesn't challenge that says point blank that there's a two step process you first you identify the frequencies that are more than one frequency the sun want it and then and then you take that out and or take them out and here at least with respect to the to the first one of these products the testimony of said she was absolutely clear that he wanted to take out the one point two point six megahertz or killers whatever it is and then use the notch filter which went beyond that but it was not his intent to go beyond that he just wanted to take out the one frequency that was specifically it at issue and then with respect to all the other products all they did was the ordinary methods have been around forever long predated this particular pat n and looked for some levels of frequencies to take out and then they took them out but they didn't do it in a selective pressure method they did it across the board and the judge that if you were right about the way they've asked you to construe this this client the district court in arriving its claim construction was very influenced by the prosecution used in which this is selected language was added to distinguish the current what was the priority that was being distinguished there the  normal practice frankly of kind of continuously listening carefully as best you could to the amount of noise coming out in a in a fairly unscientific way and then responding by trying more broadly to use these kinds of  to the prior art if if that's what they had and they and that's what they abandoned then had to abandon in order to get to this that's why the district court was very explicit about saying you've got to you've got to you have to do do do it in two steps you have to make a selection you have to say these are on wanted and then you have to say this is the mechanism by which we eliminate those unwanted which only makes sense because this whole mathematical process was designed to get you identify particularized problems and then go after them and find ways to eliminate them by the way the trajectories wo all of that makes sense in this context it's only in those in the skewed effort on his part to try to save this that you end up with all the construction and candidly if he thought that was a problem you should have challenged the claim construction having not done that seems to me there's nothing left for these people  range couldn't you argue that the use of the not counter which was a conscious decision meant that even though you selected an on line frequency that your target was broader i don't think there's anything in the evidence that was support question of what was the what was targeted and you think he's think he doesn't know how that filters went and so i just think the technology is never going to be specific enough to deal with precisely a single frequency in the way that it that you're talking about specifically if you're trying to if you try an educated trial an area where that was yeah i actually think it's beyond just an educated i don't even think it's an educated trial and error i think it is designed to actually identify for you certain specific frequencies that you should be targeting and then to go after them through this found was the basis for the prior for the for the prosecution history and the movement away it was because there was that basic method that was out there that existed and so this was the advance it had to be this targeting in the first instance and then implementing the targets  at that pertain this point granted the patent over the prior art yes yes and then finally with respect to the to the trade secrets i'm not sure that there's much to be gained by trying to go through it other than it would take me another twenty five to thirty minutes the begin there i do think first of all the is absolutely you could not ask for a clearer nondisclosure agreement in terms of the obligations that impose on the other side it's uses the referee reference a specific three different times in the pay and the space of a single page and telling the other side what to do and to put it into context it only makes sense to me a lot of ways this is convolved is bringing coals to newcastle seagate is the expert in the area is coming in we have no idea what convolve regards as a trade secret in this context and therefore it is perfectly reasonable for us in the context of having them provide us with information to identify for us specifically what an accident that he goes to massachusetts law in order to get the statute is broader in massachusetts and it is in california and candidly only makes sense to think that if a trade secret is is designed as a method of what is what reasonable precautions are being taken to protect the information in a particular way that if you enter into a non disclosure agreement that imposes very precise requirements on you that those are exactly the reasonable requirements that are necessary in order to generate a trade secret protection is no case law in california that supports that particular proposition and candidly it doesn't make sense the parties ought is worth about sophisticated parties here they ought to be allowed to decide for themselves under what circumstances they're going to exchange trade secrets and what obligations flow from that it was very clear what was imbedded in here and they didn't comply with it for the most part the last thing i would say judge david is you know i would ask you to do the same thing i think you've already done which is if you line up  those lives against these trade secrets there is no correspondence between them and having an expert read the sky is blue and i and i had a power point and come in here and testify that the sky is red or would be red it being that it's red is not a basis on which you submit a case to a jury that's not enough of a bridge to get you to that particular point and that's what they're arguing in this case it was an earlier question and i purchased a qu basis as opposed to going through this two step process in addition to adopting the arguments made by seagate in favor of affirming the judgement i want to buy may focus on a couple of the aspects of the judgement below that relate to contact in particular a compact is not a dis maker it's a computer maker and it purchases its disks from manufacturers such seagate and there's no dispute that every technology at issue here requires a disk convulse has never accused or offered opinion or evidence of infringement on misappropriation of any technology involving non seagate drives issue has been decided below involved in  the special masters ruling that said explicitly that they have not accused non si gate drives and that they have never identified none seagate drives that infringe they have still tried to keep an interim damages claim against contact involving compaq sale of systems that don't have seagate drives in and those should be out of the case for good what can fall does in their reply brief to say to an unrelated eviden to compaq so we know what the accused devices are we know that number and then the any notion that there could be damages for systems involving non secret drives should be out of the case and in fact the very order that they rely on for this evidence or presumption states there shall be no discovery of non seagate drives even if incorporated in compaq systems for that issue should be out of the case and that part of the district court's judgment should be a relatedly there's been no accusation on the no evidence of misappropriation of the input shaping trade secrets by compaq the district court found correctly that the trade secrets alleged against compaq or trade secrets s seagate and compaq acted in concert and that's enough that's not enough to overcome the very specific discovery requests that were issued the very specific discovery responses that were given and the district court's finding that only six and seven  the judgment against seagate but our contention is that what the other part of the language of his order that is supported is that we're all born and used to use and they were considered against you correct and the reason he specified to a and three is the final piece that i would like to talk on is something the district court did not reach and that is that there can be no infringement of any sort of claim of the four seventy three patent here as a matter of law because can volved cannot establish the required inverse relationship between noise and time that's required for every seat can vall has to show that for every seek as as time increases noise decreases and vice versa this wasn't something mr crow that is picciola when they when they make a representation as to what the claims mean to the p t o in the p t o relies on that they're they're bound by that so there's no dispute they don't contend that for every seek that inverse relationship holds in fact their experts conceded for short s it often doesn't hold their argument is that we're somehow in for parading an inherently requirement here just because that's what their experts use the word inherent and then we're saying against some tiger case that we're arguing that you have to infringe all of the time in by that that that inverse relationship must hold for every seek and there's no factual dispute that it that in fact the accused drives in the complex systems incorporate those drives they don't have it for a receipt if you slides specific trade secrets i think i may have said no but i think the answer is yes that the experts statements one of which is on a five four three nine and it's on five hundred pages a lot that particular trade secret so i twenty six isn't tied only goes on and he talks about specific slides and he talks about what they disclose the key is not to repeat the details of the slides but to have some confirm were given to seagate they were actually given to them and those slides constitute a written confirmation there's evidence in the record that they were used to corroborate the testimony so he is talking about specific some of the trade secrets the district court found that they were adequately disclosed in the slides and denied summary judgment with respect to rice on the ground  summary judge oh denied summary judgment i don't recall he may have i don't recall whether he did i thought that he found that with respect to some of the slides experts  specific about the tree secret being adequately disclosed in this law he did talk about the october nine hundred ninety eight letter which confirmed the presentation which took place earlier and he did say that it was adequate so to that extent he did but when he talked about the slides his focus was that the slides were not confirmatory because they were not a writing that trade secrets were disclosed in their entirety in the fly if he did he made a number of those statements and your honor the point is that it was asking for a level of specificity which went beyond what the n requires i pointed out at the n b a paragraph two has a very general description which makes it clear that the parties did not expect details in the confirmatory writing they merely expected some confirmatory general statement to