thank you for having us here today so the inventive concept of the four three seven hatten at its core really relates to to the interplay between two limitations to the automatic file transfer process limitation and the automatic recognition process limitations and what they basically the forty seven basically says is when a host excuse you want to interface devices attached to a host computer the interface device though it isn't the hard drive represents itself through an identifier to the host and and says that it's a hard drive even though it is not and then the host treats it as if it was a hard drive even though it isn't for purposes of file transfer and other communications using the customary driver associated with the hard drive now the very key point here that i need to make is that the four three seven pattern for both the automatic recognition process and for the file transfer process prohibit end user software from being loaded onto the device to have it on to the host device to assist in either identification or in file transfer it is without doesn't seem that's correct and that's the claim construction issue that is before the court today obviously but it seems to me you need to be aware of directly yourself different issues your directly yourself to the issue of whether the claims are patently indistinct from a claim which of understood it is that the claim construction issue with respect without requiring was resolved in the earlier you are in the question of whether a check or whatever it is satisfied that limitation was also resolved against you in the earlier i p r's so could you address the house or well as an initial matter i don't think collateral estoppel applies on any level here that because there's a line of cases from the federal circuit for example to say this case that we said cited in our brief that says that when it doesn't make sense from a  well it hasn't in fact there is a world case that came out very recently that appears to be mindful of that fact that in the i p r setting this is becoming more of an issue because you typically have multiple multiple patents in a patent family that are running along the same timeframe and often times the patent owner for sake of streamlining issues for the court and for say for the sake of judicial economy aleck's not to appeal certain decisions it appeals other ones and what happened in the world's case was that there were we did not decide the question of worlds we re mandated stating two things one that it wasn't entirely clear that it was actually the same issue there because of have to do certain contract relations that might change whether there was a real party in interest and then we said partly for that reason and we're going to  board consider that and should also consider any other reason that might fall into a restatement of its twenty eight or sickness type and considerations why there might not be so i mean that's not really an answer for the ok so the max linear case and involved a situation in which the dependent claims of it was the same patent and there were independent claims that were invalidated and then they depended claims the issue was whether those were also it's true that just because they're called pending it's an equitable doctrine you can consider whether or not under the facts of any particular case whether or not it makes sense i mean this really familiar doesn't say that and i don't know what other cases that you consider to not give the had known of the first bite of the apple to begin with when they streamline a case and so you don't want to encourage encourage judicial inefficiencies by forcing all you have to do was to you in the claim language that we did break and be because it's an equitable doctrine and it seems to me that it would be at only unfair to apply collateral estoppel in this it's hard to say nobody believed i mean it took about four seconds for the others of the transfer enabling software to be loaded on the user's computer yes the without requiring language appears but the rest of the claim language to which it refers is in is different but i don't understand how that would make a difference in the context of should whether the issues were rejected so let me try to give an example the one for patent does not it loses the concept of misidentification it just says you send an identification parameter to identify the a d it doesn't say use you identify it as a hard drive instead of as an a t g p d and so in that instance it is possible that you would send the hard drive identifier without requiring and user software because after all v g p d is just properly identifying as the device class for which it belongs to the hard drive class and it wouldn't need to end user software to be loaded onto the helps so that's why the difference in the claim language matters here because in one instance or not that is as you know that term is used in the claim in terms of the same term that's used in both patents sure it is used in both patents but the claim construction that is applied over in the one four four patent it wasn't necessarily the decision because in that particular patent you didn't need to misidentify the device so it is possible that you could use the customary driver and not have to resort to the use of end user software because it could identify itself as what it actually is a hard drive whereas over here it is different there is this concept of misidentification and so now you have to determine whether or not the the file input output command is actually issued by the specialized cast cats and driver and as it relates to the four three seven at issue here that's actually outcome determinative because there is no but the point being we were going to cite all the issues we're going to argue all the issues on the same day here and so i think it does put us more in line with the simplest case i did want to reserve and running up against my time and i did want to reserve at least a minute here for for  yes so i think again that the main issue here is the interplay between the two limitations the automatic recognition process and the automatic signalling limitations and the atac catbox devices about a specialized of devices you can imagine it requires all kinds of drivers to be thought about the yes but it may not matter and so i'd rather have time with the client to claim construction determine that without requiring mention not necessary as opposed to prohibited and in my eyes the way i read these claims i believe that the whole point of the forty seven path invention is allow automatic file transfer and automatic recognition and if you allow any type of software to be a lot of load it on the host whether it's required or not you destroy the automatic principle of the invention because after all if someone does something whether they needed to or not the process is no longer automatic that's not well i mean construct i mean there's there's case computer networking context as opposed to what was done in the celsus case case which was cited by the board and they found that the without requiring language meant that you don't take some action meaning if you do take some action you have not met the claim language and so they found that it was prohibited in the sense that their claim construction said that without requiring that you don't do something and so that is the legal position that we're taking is that that is the  create definition for without requiring but to be clear under any definition of without requiring the file input output command is being done by the cats and driver and atack affords no other possibility it cats and driver wasn't necessary is they said well if you removed it or weren't using it you could default to using the aspi driver for the file and put out a command which is the customary driver but that it's there is never that's never mentioned in in the atack reference it never says that you can remove it and in fact if you do remove the cats and driver you no longer have an interface device that's awful because you lose all of the synchronization coordination between the host computer and the processors of the catwalks and so they really there was no evidence presented at all on that point because the question is is there a distinction between what is the software doing the function of reading and writing so i called the court's attention to the apac disclosure and the pendants for a one through four and two and it's lines ten sixty three through eleven five and it actually says right there that the caps ink is directly involved in every file transfer and it says the cats think hopes the file input alpha calls from the p c operating system and replaces it with the pseudo code and what the pseudo code says in addition to performing synchronization functionality and cache functionality step four  make the intended file input output call so the cat sync driver this pseudo code of the cats and driver is the driver that actually makes the file input output call so it is clearly file transfer enabling software doesn't get more file transfer enabling th making the file and right now but if we were to the boards claim construction and then what that would mean is the claim to be understood that there can be software loaded on the user device but nevertheless the system in the prior art can still perform the function of transferring a file without software that has been that's rationalized software that reliable as reliable as if he attacked had it cats in software but it could still be done it would have to be done under successfully probably under certain circumstances nothing in the way would a person of skill in the art be motivated to not to remove the cap saying and destroy the functionality of the cap arts completely i understand that's going to three argument here we are looking at a different creature and that's due to perhaps the way you drafted the claim but without requiring language and then once you construe that language what that forces us to think about and in so it's not quite a motivation to this is there substantial evidence to support the board's fact finding that a tactic could work could transfer a file to its p c without using can't sing and i think the only way that that could work is if it was actually a hard drive and that's all it was so if you were doing standard scuzzy signaling in which you ask a hard drive not an interface vice but but if all the functionality of the cap box goes away and we're saying we don't care about it it's an operable and you only say do an inquiry and say what are you and it actually is a hard drive and then it signals back and says it is a hard drive then the host obviously could treat it as patent because they've basically reduced the interface device to a hard drive and said if you send a signal and it just identifies what it is and you can use the standard driver that's that's not the clean  estoppel effect and we spelled it out in great detail in our brief but of course you received a supplemental brief from paps on tuesday and with your permission i wanted to focus more on respond to their particular arguments that they that they have made so they've argued that in the seven four six the patent the automatic recognition process does not have the without requiring any software limitation therefore the thought the factual findings were with regard to that would not have been necessary to the judgment that's incorrect for a few reasons they're concentrating on the independent claims of the seven thirty six if you go to claim seventeen dependent claim seventeen of the seven thirty six there you do get a limitation of without requiring any software that's more a connection with without requiring any software for final system information but of course you would need that file system information to be able to later on read files from the system and there's a can i ask you this question i guess i had taken it from not sure i understood everything but i had taken on this happen and sort of similar in the next case but the principle distinction that paris was trying to argue with us even at the issue level there is an issue having to do with the automatic recognition here and the and response and the other one that wasn't decided in those other cases can you focus on that specifically and then this particular does your argument that that's not really an issue here depend on your argument about waiver as to if i think you can it doesn't depend soley on that your honor we certainly say they forfeited all their arguments with regard to automatic recognition by not raising it to the board but i think your honor what you may be getting at is that in to claim one of the four three seven patent there's a limitation of without requiring loading any software in the automatic recognition process whereas the without requiring limitation in the file transfer process is with regard to without requiring the loading of any file transfer enabling software and there were necessary factual findings with regard to loading without loading any software for the automatic recognition process in the seven forty six i p r on page thirty three of that final written decision with regard to claim seventeen there's of the finding catbox response automatically to the in is a factual finding there is no evidence in the record that the cat sync driver which is what they've been pointing to as special software is needed for the inquiry read or write commands and that really addresses all of their arguments with regard to both t two limitations asked whether special software is required and that those findings were necessary to the i p r decisions your honour's so if we look at a gram against john deere it says that obviousness is a legal finding that's based that is what was in the prior art now we're going to look at the smorgasbord of claims from all these patents and see whether or not the limitations of those claims are caught or source or suggestive and so their task required them to make all of these factual findings as to how a tack really worked and when you look at the argument that if if they made some findings in let's call it case number one that turned out not to be necessary to judgment understanding collateral estoppel principles those particular findings would not have collateral estoppel effect if only because if that was the only thing wrong nobody could appeal in the circumstance you ask yes only things that are necessary to the judgment of that particular case but when when they're face for example with a limitation saying there should be no where without requiring software to be loaded to get file system information and they go and look at a tack and they say actually no software is required to be loaded at all for anything with regard to recognition system information or file transfer that was a factual finding with regard to how the prior art actually worked what the scope and content of the prior art was and under graham it was the task assigned to them so it was necessary to the judgment that's that's the argument that we're making is your argument penned on that that all findings they made about prior are even if some of those findings were not actually necessary to finding that claim elements m patent we would still prevail because of the whole range of factual findings they have made that preclude the arguments that are being made in this particular case with regard to the four three seven patent which of course is very similar to the one for four in almost all they argue that while the seven forty six doesn't have a limitation about it without requiring any software but if you look at the other patent the one for four in the final redness vision there they did have to deal with or without requiring any software for the automatic recognition process and there was that is specific trading that on page thirty eight of the one for for final written decision petitioner further explains that there is no need for the end user to load any software onto the computer because  attack various clans means one of us patent and it's all done in a coordinated fashion and so all these proceedings are going through the bore of it essentially the same time and they're all brought to this court same  of voluntarily dismissed without getting any kind of a stipulation from us they never even got to ask for it they forced us to go through briefing on everything they force for the briefs to be distributed to your honor's fairness as more on on our side they knew f well the consequences of what they were doing just three years ago the supreme court in b and b hardware said that it's one standing law that collateral stoppel applies to do the decisions of article one tribunals unless congress expressly says otherwise so that this is not a secret  so it's quite fair for them to live with the consequences that were well known for their actions statement is that misrepresenting is actually part of part of this invention this goes back to your honor's prior decision in two thousand and fifteen about the importance of mimicking in this and they did that to the board in the one fo of the seven four six make a finding of misidentification it did not your honor really and there's really not much of a launching pad about that degenerate to say that at the level of a finding there is an earlier finding to create four of the one four four it says that parameter is consistent with the eighty g p d being a mass storage device so there's the same kind of language they're calling out from the one for for  current proceeding i do not recall them arguing that in the four three seven i p r your honor so i think the answer would would be yes if my memory is correct and i thought you said they made the argument in their parliamentary response born of course when it institutes always your description of what's happening and a little sheet of code description consistent with contrary to what mr music gaffer designs his name explained this hawking the code and doing something language being used even though there's this other software involved often as mr jaffer testified there is a circumstance that just chad was talking about where when you're merely using the catbox as a hard disk specifically says that the p c may not even have a hard disk it can use the cat disk as a hard disk so that's one of the intended purposes but they talk so there will be times when the cat box is just sitting there being used as a hard disk and other times when it's getting all kinds of x is coming only it is just sitting there being used as a hard disk does atack say that this cooking process is not occurring and i didn't think you did ever say that which is what left the document itself somewhat unclear right i believe that i believe that if that's what that there was the testimony of the two experts that that is what would occur in that situation where isn't expressly discussed in  following his conversation i understand him with both experts agreed that we can't sink software is being used every single time and so therefore you're going out hoping that file a call every single time you know maybe you don't need to do anything in terms of regulating other computing attempts that access the cactus because nothing else is trying to access  point he says that and then he also says that that cats inc is not required for this situation where it is only been used as a hard disk my understanding of dr reynolds testimony was the greed  it's being used every single it's involved in every single file transfer but in all functionality being supplied by cats thinking his view is not necessary to do a successful trial transfer you could do a successful file transfer in tact with out having cat sing loaded i believe that's what he was trying to you by as it is as disclosed in a tact yes cats inc is being used there you would get the same result because it would default to one equals zero which is exactly what step four in the pseudo code does doesn't it can't say that's why he said it's not necessary and why it's not well transfer enabling software all right so it looks like i only have a few minutes but let me let me just start with the issue of defending claim seventeen of the seven four six patent where opposing counsel asserts that it actually discloses and use your software being requiring after reciting the previously reciting multipurpose interface parameter being said so it actually refers to the end user software requirement that without requiring end user software refers to the processor being configured to cause acquired analog data file system honor i believe we did raise it and that's why there is no waiver i think if you look at the appendix pages two two one seven through two two two two i think and then there's two subsections one and two one of them says atack intended catbox to be a multitasking device to solve the problem of integrating operation of multiple devices with a p c and in that section we talk about how atack is actually more than just a hard they pled the automatic recognition limitation in their petition what they said in this is on page one sixty one of the appendix their petition they basically the only thing they said is for automatic recognition to occur atack doesn't say anything about the inquiry or the response but we're going to infer that the automatic recognition occurs because the cat box looks like a cat drive or a hard drive from the perspective of the host and in this section that i'm referring to we're saying back to them well wait a minute it actually looks like a lot of other devices to that inference that the cat box would identify as a hard drive doesn't make sense because the cat box isn't just a hard drive it's all of these other devices and so these these this argument in the sec is it's actually because of the interplay between the file transfer and the automatic recognition limitations is actually a political to both because in the file transfer limitation they say they make the same inference that because it looks like a hard drive that you both would recognize it a parameter be sent to recognize it and then the file would consequently be transferred using the customary driver and so i think and if you look at pendants page twenty two thirty seven it's pretty clear that there's t independent claims in this pattern your honor and the on a on the page twenty to thirty seven there's a reference to independent claim forty three which is also an issue here and if you look at on that page it explicitly recites that we're contending that the automatic recognition limitation is not obvious in conjunction with a file transfer limitation so it's pretty clear that for an opponent going forty three and it refers to the sections of the brief section three through six that both are claiming one and claim forty three we are making arguments related the automatic recognition process and the specific argument we're making is that your inference can't work it doesn't work you can't say that you infer that the catbox would send a hard drive identifier to the host simply because the host looks from the host perspective the cap it's looks like a hard drive because it also looks like all of these other devices so why wouldn't an identifier be sent that when identified as a printer or some other device and in fact what we're saying here is that wouldn't happen scuzzy actually has a one f a church command that can be sent for a quirky device like cat box an a hard drive identifier what does it send and the answer is it sends a want to fade but we don't need to find that here today that's not part of the claim limitation we just need to find they didn't meet their burden to show that it's sends a hard drive identifier and that's because their influence that