[00:00:32] Speaker 00:
Next argued case is number 19, 1048, Fitbit, Incorporated, against Valencell, Incorporated.

[00:00:40] Speaker 00:
Mr. Johnson.

[00:00:43] Speaker 03:
Thank you, Your Honor.

[00:00:46] Speaker 03:
Good morning.

[00:00:47] Speaker 03:
May it please the court.

[00:00:48] Speaker 03:
This appeal of the board's final written decision is as to claims 3, 4, and 5 of the 9-4-1 patent rests on three issues.

[00:00:57] Speaker 03:
First, the board's denial of Fitbit's IPR challenge is based on an erroneous claim construction of application-specific interface, API.

[00:01:05] Speaker 03:
And that is reviewed de novo here.

[00:01:08] Speaker 03:
Second, upon correcting the construction of application-specific interface, or API, the court need not remand to the board for further proceedings.

[00:01:16] Speaker 03:
And that's because Vale and Sell never presented separate validity arguments for claims three, four, and five under any construction.

[00:01:23] Speaker 03:
Outright reversal, therefore, is warranted.

[00:01:26] Speaker 03:
And finally, Your Honors, Vail and Sell's waiver arguments have no merit.

[00:01:30] Speaker 03:
I want to start by turning to the claim construction issues with respect to claim three.

[00:01:34] Speaker 03:
The dispute is whether an application-specific interface, API, is specific to a particular application or rather to a set of software components more generally.

[00:01:45] Speaker 03:
And under Phillips, the claim language, the specification, the extrinsic evidence, all confirm that an application-specific interface, API,

[00:01:54] Speaker 03:
is, quote, an application interface that specifies how some software components should interact with each other.

[00:02:01] Speaker 03:
But here, the broadest reasonable interpretation standard applies.

[00:02:05] Speaker 03:
And if multiple constructions are reasonable, the broadest reasonable interpretation dictates that Fitbit's broader construction is the correct interpretation.

[00:02:15] Speaker 03:
And, Your Honor, this is the same construction that was presented in Apple's original petition

[00:02:22] Speaker 03:
And Fitbit relies on the same evidence that was relied upon in reference in the additional briefing that was requested by the board after the SAS decision.

[00:02:33] Speaker 03:
Also, the final written decision refers to the very same evidence, the same intrinsic evidence, the same site specifications in the claim language.

[00:02:41] Speaker 03:
So if we started with the claim language,

[00:02:44] Speaker 03:
And we look at the term.

[00:02:45] Speaker 03:
The claim language equates the term application-specific interface to an API by using parentheses in the claim language.

[00:02:53] Speaker 03:
And the claim language tells a person of ordinary skill in the art that this interface is specific to software components as opposed to hardware components like a USB interface.

[00:03:04] Speaker 03:
In contrast, if we limit interface to just a particular application, it gives no meaning to the term API, which is a term that appears in the claim language.

[00:03:14] Speaker 03:
And if we look at the end of claim three, the use of, quote, un-application, that refers to one or more applications.

[00:03:22] Speaker 03:
And it suggests that the data.

[00:03:22] Speaker 04:
Well, what do you think the construction should be assuming that we were to reject your claim construction?

[00:03:32] Speaker 03:
If you were to reject my claim construction?

[00:03:34] Speaker 03:
Yeah.

[00:03:35] Speaker 03:
What's the alternative claim construction?

[00:03:37] Speaker 03:
Well, that it's an application interface that

[00:03:43] Speaker 03:
works with the software components more general.

[00:03:47] Speaker 03:
I mean, the issue is that it's not directed to AC.

[00:03:50] Speaker 04:
No, but it has to be application specific is the idea, right?

[00:03:54] Speaker 04:
Well, applications... I'm just assuming that... I understand that you've got a strong argument that your claim construction is right.

[00:04:02] Speaker 04:
I'm just saying put that aside, assume that we were to reject that.

[00:04:07] Speaker 04:
Then what is the correct construction here?

[00:04:09] Speaker 04:
Because you make an alternative argument that even

[00:04:12] Speaker 04:
under an alternative construction, you still win.

[00:04:15] Speaker 04:
I'm trying to understand what that alternative construction is.

[00:04:19] Speaker 03:
Understood.

[00:04:20] Speaker 03:
What we argue is that the board also erred by failing to consider the evidence that we presented to the board that under the narrower construction.

[00:04:30] Speaker 03:
What is the narrower construction?

[00:04:32] Speaker 03:
That the application is specific to a particular application.

[00:04:36] Speaker 03:
That's Valencell's construction.

[00:04:39] Speaker 03:
As opposed to ours,

[00:04:40] Speaker 03:
which is broader words.

[00:04:41] Speaker 04:
I'm not sure that they've articulated an alternative construction.

[00:04:45] Speaker 04:
Where did they do that?

[00:04:46] Speaker 03:
I agree with you, Your Honor.

[00:04:48] Speaker 03:
This is us reading the language from what we read from the brief and from what happened below.

[00:04:54] Speaker 03:
I don't think that there's a specific articulation of the claim construction, but I do know that the main dispute focuses on whether it's specific to a particular application as opposed to software components more general.

[00:05:09] Speaker 03:
That's the crux of the dispute.

[00:05:11] Speaker 03:
And we believe that the board erred, first of all, with respect to the claim construction itself, and then second, by failing to consider the evidence that we proffered that even under the narrower construction, the claims were obvious.

[00:05:26] Speaker 03:
And so if we go back and we look at claim three, the use of an application at the end of claim three supports Fitbit's construction because it tells the person of ordinary skill that one or more applications

[00:05:39] Speaker 03:
are viewed and suggest that the data can be used by more than one particular application.

[00:05:45] Speaker 03:
That's right out of the claim language.

[00:05:47] Speaker 03:
And when you compare the claim language to then the specification, again, the specification confirms Fitbit's broader construction because column 26, lines 19 to 21, uses applications, plural, and it tells the person of ordinary skill in the art that other applications can use the same interface.

[00:06:09] Speaker 03:
Now, even Valencell agreed in its response brief that, in reading the sentences and the specification together, that the passage discloses application-specific interface can use different pieces of data for different particular applications plural.

[00:06:26] Speaker 03:
And that's in their response brief at page 30.

[00:06:29] Speaker 03:
The reference to a particular application in the specification

[00:06:33] Speaker 03:
means the data can be utilized or used for a particular application, as opposed to the data directed to a particular application, which is what Valencell argues.

[00:06:43] Speaker 03:
And after the intrinsic evidence, when we turn to the extrinsic evidence, that also confirms Fitbit's construction.

[00:06:50] Speaker 03:
Valencell's own expert testified in the deposition that application-specific interspace essentially refers to an API, and both are basically the same.

[00:07:00] Speaker 03:
And because, Your Honor, the experts agree and there's no factual dispute as to here to resolve, the board's entire claim construction determination should be reviewed de novo and reversed.

[00:07:13] Speaker 03:
And if the court agrees that the broader construction applies, then outright reversal of the board's final written decision is warranted.

[00:07:22] Speaker 03:
And that's because Valence-Hill didn't present any arguments that claim three is valid under Fitbit's interpretation, other than because it depends from invalid independent claim one.

[00:07:33] Speaker 03:
Now, there's no dispute here.

[00:07:36] Speaker 03:
The board held claim one is invalid, and Valence-Hill didn't appeal that ruling.

[00:07:40] Speaker 03:
That decision is final, and collateral estoppel applies under the Accenture case.

[00:07:46] Speaker 03:
Because they've presented no distinct validity arguments with respect to claim three, just as in the Belden case, this court's decision in Belden, the record is one-sided and reversal is appropriate.

[00:07:58] Speaker 03:
And again, as I alluded to, under Erickson versus Intellectual Ventures, the board also erred by failing to consider Fitbit's prior evidence that claim three is invalid under the narrower interpretation of application-specific interface.

[00:08:16] Speaker 03:
So Fitbit and Apple specifically requested the board review the evidence in the additional briefing that was requested by the board after the SAS decision.

[00:08:27] Speaker 03:
And the additional briefing cited Apple's request for rehearing, which then explained how the prior art discloses an application-specific interface, even under the narrower interpretation.

[00:08:38] Speaker 01:
So what's your argument?

[00:08:39] Speaker 01:
I thought I understood it in your brief, in that you argued that this was a typographical error.

[00:08:47] Speaker 03:
Apple argued in the original petition that there was a typographical error.

[00:08:53] Speaker 03:
And in the original petition, Apple also argued and submitted the same claim construction that Fitbit relies upon here.

[00:09:01] Speaker 03:
After the SAS decision came out, the board then requested additional briefing with respect to claims 3, 4, and 5, which are the claims at issue here.

[00:09:13] Speaker 03:
And Apple, again, identified the same construction in its petition.

[00:09:18] Speaker 03:
And it relied upon the same intrinsic evidence in that additional briefing that we rely upon here.

[00:09:23] Speaker 03:
And it presented the same specification language, the same claim language, referred to the same extrinsic evidence as well.

[00:09:31] Speaker 03:
In its patent-owner response, Valencell then argued that the intrinsic evidence didn't support Fitbit's response.

[00:09:39] Speaker 03:
And in the final written decision,

[00:09:42] Speaker 03:
The board refers to that in same intrinsic evidence.

[00:09:45] Speaker 03:
Now, Apple did argue originally that there was a typographical error in the original petition.

[00:09:50] Speaker 03:
But its construction was exactly the same as what Fitbit argues here.

[00:09:55] Speaker 03:
And again, this is reviewed de novo.

[00:09:58] Speaker 03:
And in light of the intrinsic evidence and the extrinsic evidence,

[00:10:02] Speaker 03:
the claim construction that the board adopted was incorrect.

[00:10:06] Speaker 01:
If the board's construction is supported by substantial evidence, then your argument as to the extrinsic evidence outweighing that becomes immaterial, right?

[00:10:17] Speaker 03:
If the board, first of all, I would argue, Your Honor, that the claim construction that the board ultimately adopted is reviewed de novo here.

[00:10:26] Speaker 04:
Well, they didn't adopt a claim construction.

[00:10:28] Speaker 04:
That's the problem, right?

[00:10:30] Speaker 03:
Well, I believe that they did.

[00:10:33] Speaker 03:
I mean, I believe that they ultimately, they rejected fitments.

[00:10:36] Speaker 04:
They rejected your claim construction, but I don't see that they adopted a claim construction.

[00:10:42] Speaker 03:
And in and of itself, that was an error to not

[00:10:46] Speaker 03:
articulate what specific claim construction they were using.

[00:10:50] Speaker 03:
We do know they rejected Fitbits.

[00:10:52] Speaker 03:
We can conjecture that they were adopting valence cells under any scenario.

[00:10:57] Speaker 03:
It was error for them not to consider the evidence that we proffered with respect to the narrower construction.

[00:11:06] Speaker 03:
They simply rely upon the fact that because they rejected Fitbits construction, that was sufficient.

[00:11:13] Speaker 03:
And they refer to that in the final written decision.

[00:11:16] Speaker 03:
If we look at claims four and five, the board also erred by not construing claim four as dependent upon claim three.

[00:11:26] Speaker 03:
And there's no dispute that claim four should depend on claim three.

[00:11:30] Speaker 03:
Valencell admits that there was a typographical error here, and claim four depends from claim three.

[00:11:38] Speaker 03:
We know that the board has authority to construe the claims, and claim construction can be used to correct obvious errors in a patent.

[00:11:44] Speaker 03:
That's the Novo Industries case.

[00:11:46] Speaker 03:
The court also has the ability to correct obvious errors, including the ability to fix errors in dependency under the Hoffer versus Microsoft case.

[00:11:55] Speaker 03:
And once claim four is correctly construed to depend from claim three, there's no remaining dispute that claims four and five are invalid.

[00:12:04] Speaker 03:
Vail and Sell has never challenged Fitbit's assertion that the prior

[00:12:08] Speaker 03:
discloses the limitations in claims four and five.

[00:12:11] Speaker 03:
And because they don't have any remaining validity arguments for claims four and five, again, reversal is warranted.

[00:12:17] Speaker 03:
And I want to respond briefly, Your Honor, to the arguments that I anticipate Valenso will make with respect to the waiver.

[00:12:25] Speaker 03:
They argue that Fitbit has waived its ability to challenge the claims three, four, and five in this appeal.

[00:12:33] Speaker 03:
But Valencell does not contest that the board correctly added 3, 4, and 5 of those claims to the IPR after the Supreme Court's SAS decision.

[00:12:43] Speaker 03:
Valencell also does not argue that it lacked notice or that it didn't have the opportunity to respond to the invalidity arguments on those claims.

[00:12:50] Speaker 03:
Instead, Valencell

[00:12:52] Speaker 03:
complains that Fitbit's original petition didn't address claims three, four, and five.

[00:12:58] Speaker 03:
But Fitbit's own IPR did not control the scope of the IPR on appeal because the board terminated Fitbit's individual IPR when it granted Fitbit's request to join Apple's IPR.

[00:13:10] Speaker 03:
And Fitbit ultimately was added as a party to Apple's already instituted IPR.

[00:13:16] Speaker 03:
So Fitbit was not allowed to create a new and different IPR, and it only was allowed to join Apple's already instituted IPR as a party.

[00:13:26] Speaker 03:
At the time when Fitbit filed its... Is that what it means?

[00:13:29] Speaker 01:
I found curious the term as an understudy.

[00:13:32] Speaker 01:
Yes.

[00:13:32] Speaker 01:
Joined as an understudy.

[00:13:33] Speaker 01:
That's correct.

[00:13:34] Speaker 03:
What does that mean?

[00:13:35] Speaker 03:
It means that your, in this case, Fitbit's IPR was terminated and it was joined with

[00:13:43] Speaker 03:
into Apple's IPR for all purposes, and ultimately that it served an understudy role.

[00:13:50] Speaker 03:
Apple signed the briefs, Apple submitted the... Does that mean you're prohibited from offering your own arguments on Apple's evidence?

[00:13:58] Speaker 03:
I think there was a process where if Fitbit wanted to submit its own paper, before it could do so, it had to request permission from the board to do so.

[00:14:08] Speaker 01:
Was that request made?

[00:14:10] Speaker 03:
There was no that request was nominated because there was no need to make that request you kind of stuck as the understudy you're stuck with what happened Well, we were stuck, but that's the point we were stuck as to all issues right and so we stood in this in the shoes We stood in the trench with Apple in this IPR and and when Fitbit filed its petition Apple's IPR did not include claims three four and five so Fitbit didn't include those claims in its original IPR.

[00:14:37] Speaker 03:
We're we're in a

[00:14:39] Speaker 03:
Time situation here where this is before the SAS decision comes down claims three four and five were not instituted We filed our request knowing it would be futile to file on three four and five then the SAS decision comes down We were joined and our Fitbit our IPR was terminated in the same order and

[00:15:00] Speaker 03:
And so Fitbit remained a party to that IPR.

[00:15:03] Speaker 00:
The jointer was at Fitbit's request, was it not?

[00:15:07] Speaker 03:
Yes, Your Honor.

[00:15:09] Speaker 03:
And the jointer decision specifically says that all filings will be consolidated.

[00:15:15] Speaker 03:
And in fact, this appeal uses the Apple IPR number.

[00:15:20] Speaker 03:
We're not here on Fitbit's IPR number.

[00:15:23] Speaker 03:
We're here on Apple's IPR number.

[00:15:26] Speaker 03:
And when the board added claims three, four, and five to the IPR, that addition applied to both Apple and to Fitbit.

[00:15:32] Speaker 03:
And the additional briefing was signed by Apple, was also similarly consolidated.

[00:15:37] Speaker 01:
In fact, I understand your arguments as to, I don't understand if you're making an argument that the board procedurally acted improper.

[00:15:49] Speaker 03:
What I expect is that Valencell, based on its briefing, Valencell has argued that we waived the right to challenge claims three, four, and five because it was not in the original petition that Fitbit filed.

[00:16:04] Speaker 03:
Even though you were added to Apple's proceeding and Apple did raise it.

[00:16:08] Speaker 03:
That's correct.

[00:16:08] Speaker 03:
And even though the fact that the final written decision

[00:16:12] Speaker 03:
The board explicitly held, quote, addressing the status of each challenge claim in this proceeding applies to all parties.

[00:16:21] Speaker 03:
All parties.

[00:16:22] Speaker 03:
That included Apple and Fitbit, obviously.

[00:16:25] Speaker 03:
So since Fitbit was joined as a party to the full IPR, it should now be permitted to appeal any facet of the board's written decision on that IPR.

[00:16:35] Speaker 03:
And let me just also say, and then I'll see the rest of my time, if the court believes there was a waiver here, then the court should use its discretion not to apply the waiver, since the record below is complete

[00:16:47] Speaker 03:
And there's no prejudice in deciding the validity of claims three, four, and five in this appeal.

[00:16:52] Speaker 00:
Thank you.

[00:16:53] Speaker 00:
Let's hear from the other side.

[00:16:54] Speaker 00:
We'll save you some rebuttal, Mr. Johnson.

[00:16:56] Speaker 00:
Mr. Bragg alone.

[00:17:06] Speaker 02:
Thank you, Judge Newman.

[00:17:07] Speaker 02:
May it please the court.

[00:17:09] Speaker 04:
So what is your construction of application-specific interface, API?

[00:17:14] Speaker 04:
You say Fitbit's construction is wrong.

[00:17:18] Speaker 02:
What's your construction?

[00:17:19] Speaker 02:
Your Honor, you're absolutely correct that Balancel did not actually offer its own individual construction.

[00:17:25] Speaker 04:
So you're saying it's indefinite?

[00:17:28] Speaker 02:
No, Your Honor.

[00:17:28] Speaker 04:
Well, then what's your construction?

[00:17:30] Speaker 02:
Well, we weren't required to provide a construction.

[00:17:33] Speaker 02:
I'm asking you, what's your construction?

[00:17:35] Speaker 02:
We accept the reasoning of the board below that the construction offered by Fitbit and Apple was incorrect because it read out application specifics.

[00:17:48] Speaker 02:
I understand, but what's your construction?

[00:17:49] Speaker 02:
Your Honor, for purposes of this appeal, we would accept the construction that was actually made by the board in a separate IPR, the 317.

[00:17:59] Speaker 02:
And that's actually referred to in the appeal.

[00:18:02] Speaker 02:
And what is that construction?

[00:18:04] Speaker 02:
That construction specifically was

[00:18:11] Speaker 02:
that the term application-specific interface is an interface which enables a particular application to utilize data obtained from hardware, such as the at least one motion sensor and the at least one PPG sensor.

[00:18:26] Speaker 02:
And that's in the appendix at 17.

[00:18:28] Speaker 02:
Now, we accept that only for purposes of this appeal.

[00:18:32] Speaker 02:
We did not take a position as to the proper construction.

[00:18:35] Speaker 04:
And at that point, we weren't required to, because you say in your brief that

[00:18:41] Speaker 04:
The Apple's obviousness assertions were based solely on incorrect interpretation of the claims.

[00:18:48] Speaker 04:
That's not correct because they did argue, and if you look at page A 1600 of the appendix, they did argue that even if they were wrong on the claim construction, they should still win on obviousness, right?

[00:19:02] Speaker 02:
Your Honor, and that argument was rejected by the board below.

[00:19:05] Speaker 04:
No, no, no, but your statement's incorrect.

[00:19:08] Speaker 04:
It wasn't based solely on incorrect interpretation.

[00:19:11] Speaker 02:
Well, we believe that it was because the only thing in their petition, and respectfully- It's on page 1600.

[00:19:18] Speaker 04:
They say that even if the board maintains that no typographical error existed, they should still consider the merits using the board's determined construction.

[00:19:31] Speaker 02:
And the way in which the board handled that is it said, this is a new argument.

[00:19:35] Speaker 02:
This was not in your petition.

[00:19:37] Speaker 02:
The board's request for supplemental briefing was not a broad invitation to change the petition.

[00:19:43] Speaker 04:
No, but it is not true that they didn't make the argument.

[00:19:47] Speaker 04:
They did make the argument.

[00:19:49] Speaker 04:
Your Honor, they did not make the argument in their petition.

[00:19:52] Speaker 04:
OK, where does the board say that they didn't make the argument in the petition?

[00:19:56] Speaker 02:
They make that on page 16 of the appendix in the final written decision, quote, petitioner did not raise this argument in its petition and fails to provide evidence to support this proposition in either the petition or its additional briefing.

[00:20:11] Speaker 02:
And that's where page 15.

[00:20:11] Speaker 04:
Wait, wait, wait, wait, wait.

[00:20:13] Speaker 04:
Page 16.

[00:20:14] Speaker 02:
Yes, in the final written decision.

[00:20:17] Speaker 02:
Page 16.

[00:20:19] Speaker 02:
Yes.

[00:20:20] Speaker 02:
They say, we find this new argument is not consistent with petitioners' earlier arguments, nor with the disclosure of the 9-4-1 patent.

[00:20:29] Speaker 02:
So they addressed it, and they addressed it by saying.

[00:20:31] Speaker 04:
No, but wait.

[00:20:35] Speaker 04:
That doesn't seem to me to be the argument that I was talking about.

[00:20:40] Speaker 02:
It is, Your Honor.

[00:20:41] Speaker 02:
And they note that they further argue that they addressed this additional argument.

[00:20:50] Speaker 02:
that Apple made for the first time in its supplemental briefing.

[00:20:55] Speaker 04:
And in response... I'm not seeing where they say that the argument made at 8, 1600 wasn't properly raised.

[00:21:04] Speaker 04:
I don't see where they address that argument at all.

[00:21:06] Speaker 04:
In fact, they say they don't argue that.

[00:21:10] Speaker 02:
So the argument that was made

[00:21:14] Speaker 02:
By Apple, they said, well, nevertheless, you should analyze this under your construction and still find that the... Where are they referring to that argument?

[00:21:24] Speaker 04:
I don't see that the board ever recognized that Apple made an argument under an alternative claim construction.

[00:21:33] Speaker 02:
Your Honor, I believe that this is where they, in fact, do that.

[00:21:36] Speaker 02:
And the indication is that they say that Petitioner did not raise this argument in its petition.

[00:21:41] Speaker 04:
What is this argument?

[00:21:42] Speaker 04:
This argument is not the argument that's made at A 1600.

[00:21:46] Speaker 04:
There's no reference to that argument.

[00:21:49] Speaker 02:
Respectfully,

[00:21:51] Speaker 02:
It's our position that in fact that's what they're doing here.

[00:21:54] Speaker 04:
They don't cite a 1600 do they?

[00:21:57] Speaker 04:
So what they say about this?

[00:21:59] Speaker 04:
Do they cite 1600?

[00:22:00] Speaker 02:
They don't cite specifically to that page.

[00:22:03] Speaker 02:
They refer to the additional briefing at four.

[00:22:06] Speaker 02:
So I believe that includes that argument.

[00:22:10] Speaker 02:
But the way in which they address it though is directly instructive of that same argument.

[00:22:15] Speaker 02:
It's undisputed and Fitbit cannot point to any place in Apple's petition where they made this alternative argument.

[00:22:23] Speaker 02:
This was a brand new argument that they raised for the first time in supplemental briefing.

[00:22:28] Speaker 02:
And the petition actually doesn't contain any expert declaration that says, OK, assuming we adopt the construction that includes application-specific, nevertheless, here's how the prior art invalidates that.

[00:22:43] Speaker 02:
They didn't.

[00:22:44] Speaker 02:
Nor can a petitioner merely say, well, if you look at everything that we provided to you, the argument would be in there somewhere.

[00:22:52] Speaker 02:
The requirement is that the petitioner must specifically point out in the original petition

[00:22:57] Speaker 02:
It's arguments, and it never made Judge Diagon alternative argument like this in its petition.

[00:23:04] Speaker 02:
That wasn't it.

[00:23:04] Speaker 02:
But it did in the supplemental briefing, right?

[00:23:07] Speaker 02:
Do you agree that they did in the supplemental briefing?

[00:23:10] Speaker 02:
I agree that they referenced that, but their petition doesn't actually make that argument.

[00:23:16] Speaker 02:
Why don't you address the correctness of their claim construct?

[00:23:20] Speaker 02:
Sure.

[00:23:22] Speaker 02:
The linchpin of their argument, as Judge Raina mentioned, was that there was this pervasive typographical error.

[00:23:28] Speaker 02:
That was the argument made below by Apple.

[00:23:31] Speaker 02:
Apple never strayed from that argument.

[00:23:33] Speaker 02:
They always maintained

[00:23:35] Speaker 02:
consistently that this was a pervasive typographical error.

[00:23:38] Speaker 04:
Now, the finding by the... Well, let's suppose that the argument is properly before us, that this means API, API has a well-known meaning in the art, and that that's what they meant here.

[00:23:54] Speaker 04:
Why is that wrong?

[00:23:56] Speaker 02:
It's wrong for two reasons.

[00:23:57] Speaker 02:
First of all, the board said there's no evidence in the intrinsic record of a typographical error.

[00:24:04] Speaker 02:
That's a factual finding.

[00:24:06] Speaker 02:
And that's subject to review under the substantial evidence standard, not de novo.

[00:24:11] Speaker 04:
Yeah, but I don't think you're addressing what I asked you to address.

[00:24:14] Speaker 04:
What I'm asking you to address is forget about the typographical error.

[00:24:17] Speaker 04:
Let's assume that they properly argued

[00:24:20] Speaker 04:
for the claim construction, the application specific interface, API, means API as that term is used in the ARC.

[00:24:29] Speaker 04:
What's wrong with that argument?

[00:24:31] Speaker 02:
As the board said, that reads out the word specific entirely.

[00:24:36] Speaker 02:
The word specific is in there multiple times, both in the abstract, in the specification, in the claim itself.

[00:24:42] Speaker 02:
It was referred to several times in the prosecution history, including an amendment to claim three.

[00:24:48] Speaker 02:
to read out application-specific, which is exactly what Apple was contending when it said it was a typographical error.

[00:24:55] Speaker 02:
Even leaving aside the typographical error argument, if you were to elevate the extrinsic evidence from the expert

[00:25:05] Speaker 02:
over the intrinsic evidence which specifically uses the word specific.

[00:25:10] Speaker 02:
It says application specific.

[00:25:13] Speaker 02:
And you have to give meaning to application specific.

[00:25:17] Speaker 02:
And as it was pointed out by the board, if there is a typographical error, who's to say that it isn't in the acronym?

[00:25:24] Speaker 02:
And nowhere in the specification does it say that API is intended to mean application programming interface.

[00:25:32] Speaker 02:
It could very well mean application-specific programming interface, or the typo could be ASI, as the board pointed out.

[00:25:42] Speaker 02:
But the canons of claim construction require that you look first to the intrinsic evidence, and you look to the words of the claim itself.

[00:25:51] Speaker 02:
And the legal problem with Apple's proposed construction is it eliminates specific from the claim and elevates this acronym API.

[00:26:04] Speaker 02:
And what the experts say it means over the actual language and the specification.

[00:26:10] Speaker 02:
So there was substantial evidence that there was no typographical error.

[00:26:15] Speaker 02:
So we believe that finding a fact is appropriate and reviewed under the substantial evidence test.

[00:26:20] Speaker 02:
But more than that, it was a legally incorrect construction.

[00:26:25] Speaker 02:
Now, I do want to turn briefly to the dependency issue.

[00:26:34] Speaker 02:
So there was no dispute.

[00:26:36] Speaker 02:
that there was an error in the prosecution of claims.

[00:26:40] Speaker 04:
So if there was no dispute, why can't the board correct the error?

[00:26:45] Speaker 04:
Why can't they do the same thing as in NOVO, which is to, by construction, by construction, determine what the claims mean by correcting the error?

[00:26:55] Speaker 02:
Well, there was a dispute among the parties as to how it should be corrected.

[00:26:59] Speaker 02:
Apple steadfastly maintained that you correct it by making it dependent on Claim 1.

[00:27:06] Speaker 02:
I want to be very clear here, and Fitbit doesn't shy away from this, Fitbit is making an argument before this court that was never made by Apple below.

[00:27:15] Speaker 04:
Do you disagree with that, that it should be dependent on Claim 1?

[00:27:18] Speaker 02:
We agree that the district court can, yes, I disagree with that.

[00:27:22] Speaker 02:
It should be dependent on claim three.

[00:27:24] Speaker 02:
That was the error.

[00:27:26] Speaker 01:
Why can't the board correct that error under the guise or under the purpose of construction as opposed to 112?

[00:27:34] Speaker 01:
And it seems to me that the purpose of an IPR, the very stated purpose and the purpose that has been argued before the Supreme Court, is that it exists to correct errors.

[00:27:45] Speaker 01:
clerical errors, another topic.

[00:27:47] Speaker 01:
Well, here's an error that all the parties agree upon.

[00:27:51] Speaker 02:
So I would say that no party asked for that correction to be made.

[00:27:54] Speaker 02:
Apple never asked for the claim to be corrected to depend, the claim for to depend from claim three.

[00:28:01] Speaker 04:
No, but they asked that it be construed that way, right?

[00:28:04] Speaker 02:
But they didn't ask for it to be construed that way, Judge Dye.

[00:28:07] Speaker 02:
And that's the critical difference here.

[00:28:09] Speaker 02:
Fitbit is actually making an argument.

[00:28:11] Speaker 02:
I don't understand.

[00:28:12] Speaker 02:
How did the issue come up if they didn't ask for it?

[00:28:15] Speaker 02:
Because the Apple agreed that there was an issue in claim dependency.

[00:28:21] Speaker 02:
But rather than fix that issue, because they wanted to create a section 112 problem in the district court, they asked that it depend from claim one.

[00:28:33] Speaker 02:
And they actually asked that it be construed that way.

[00:28:35] Speaker 00:
Because section 112 can't be considered in these.

[00:28:39] Speaker 02:
Proceed exactly exactly and so the board said look there's there's we cannot ascertain the correct meaning of this claim I don't really don't understand what you're saying that the the the claims are

[00:28:56] Speaker 04:
were meant to be dependent on Claim 3, and you agree with that, right?

[00:29:00] Speaker 04:
Yes.

[00:29:01] Speaker 04:
So why can't the board fix that?

[00:29:04] Speaker 02:
Well, respectfully, it can't be error for the board not to do something that no party asked.

[00:29:10] Speaker 02:
No party asked the board to fix this dependency to Claim 3.

[00:29:14] Speaker 02:
What did they ask the board to do?

[00:29:16] Speaker 02:
They asked the board to construe it so it was dependent from Claim 1.

[00:29:21] Speaker 02:
which we believe is clearly incorrect.

[00:29:24] Speaker 02:
But the board correctly said, this gets into 112 issues.

[00:29:28] Speaker 02:
And the enabling statute says that the limitations.

[00:29:33] Speaker 04:
On the face, the claim four and five say they're dependent on claim one, right?

[00:29:38] Speaker 04:
Yes.

[00:29:39] Speaker 04:
And the correct interpretation is it's dependent on claim three.

[00:29:43] Speaker 02:
We agree with that, but that's not the argument that Apple made.

[00:29:46] Speaker 02:
Apple only made the argument.

[00:29:48] Speaker 02:
And this is not disputed.

[00:29:50] Speaker 02:
Fitbit can point to nowhere that Apple asked it to properly be corrected to claim three.

[00:29:56] Speaker 02:
So it cannot be error.

[00:29:58] Speaker 02:
And Fitbit cannot come before this court and ask for a remedy that Apple didn't.

[00:30:03] Speaker 02:
They're in an understudy role.

[00:30:05] Speaker 02:
And as an understudy, they are bound by the arguments that were made below, even if they were in

[00:30:11] Speaker 02:
The primary rule, they're still bound by the request that they made below.

[00:30:16] Speaker 02:
They can't change that request.

[00:30:18] Speaker 02:
Moreover, they can't ask this court to assign error because the board failed to do something that no party asked it to do.

[00:30:27] Speaker 02:
They are asking for a remedy that was never requested below.

[00:30:32] Speaker 02:
It was never briefed below.

[00:30:33] Speaker 02:
It was never presented below.

[00:30:36] Speaker 02:
The board did the correct thing.

[00:30:38] Speaker 02:
And it said that because it could not ascertain

[00:30:41] Speaker 02:
the scope of the claims because of this antecedent basis issue that it would decline to do so.

[00:30:46] Speaker 02:
Moreover, this is not a problem without a remedy.

[00:30:50] Speaker 02:
I suggest as a matter of policy, section 112 issue should be reserved to the district court.

[00:30:56] Speaker 02:
Other boards in similar situations have deferred.

[00:30:58] Speaker 04:
This isn't a 112 issue.

[00:30:59] Speaker 04:
It's a question of claim construction.

[00:31:01] Speaker 02:
Well, respectfully, it presents as a 112 issue, Judge Zeich, as the board found.

[00:31:06] Speaker 02:
The board found that this did present indefinite issues.

[00:31:11] Speaker 02:
indefiniteness issues.

[00:31:13] Speaker 02:
So the court should not extend the ability, because that's such a slippery slope.

[00:31:18] Speaker 02:
Where do you stop?

[00:31:19] Speaker 02:
Do you allow corrections only where the parties agree that there was an error?

[00:31:23] Speaker 04:
We have a standard.

[00:31:24] Speaker 04:
We have a case called NOFA.

[00:31:26] Speaker 04:
We have an established standard in which by construction certain clear errors can be corrected.

[00:31:32] Speaker 04:
And I don't understand

[00:31:34] Speaker 04:
You're a theory that the board lacks that authority which exists in the district court when the district court is construing claims.

[00:31:41] Speaker 02:
Actually, my argument is that the court should not extend this to the board, but more so, it can't be error for the board not to do something that it was never asked to do.

[00:31:51] Speaker 02:
How can Fitbit claim that the board erred by failing to do something that no party requested of it?

[00:31:58] Speaker 02:
That's an argument that was simply not made below.

[00:32:02] Speaker 02:
Now, Apple's not here.

[00:32:04] Speaker 02:
We can't ask why they chose to do that.

[00:32:05] Speaker 02:
I believe it's because they wanted to streamline the path to invalidity at the district court by getting what is essentially incorrect.

[00:32:14] Speaker 02:
construction of the claims.

[00:32:16] Speaker 02:
And the board properly declined to do that, which they have the discretion to do.

[00:32:22] Speaker 02:
It's not mandatory that the board correct errors.

[00:32:25] Speaker 02:
In fact, it's very limited.

[00:32:27] Speaker 02:
And in the context of IPRs, it has been held that that can be done through the motion to amend procedure, which has its own specific requirements.

[00:32:37] Speaker 02:
I see that I'm out of time.

[00:32:40] Speaker 02:
There are no other questions?

[00:32:42] Speaker 00:
Any more questions?

[00:32:43] Speaker 00:
No.

[00:32:44] Speaker 00:
Thank you, Your Honors.

[00:32:48] Speaker 00:
Thank you.

[00:32:49] Speaker 00:
Mr. Johnson.

[00:32:59] Speaker 04:
Thank you, Your Honor.

[00:33:00] Speaker 04:
We have two arguments here that you need to address.

[00:33:04] Speaker 04:
The first is the argument that there was no argument made in the petition

[00:33:11] Speaker 04:
for obviousness under an alternative construction.

[00:33:16] Speaker 04:
And the second one was just made, is that no one ever asked that the board issue a construction that these were dependent on claim three.

[00:33:26] Speaker 03:
So let me take the second one first, just because I have the papers open.

[00:33:30] Speaker 03:
And if I could, Your Honor, in Apples, in the briefing that was submitted, this is appendix page

[00:33:39] Speaker 03:
Let me start actually with Appendix 1601.

[00:33:46] Speaker 03:
This is the supplemental briefing.

[00:33:48] Speaker 03:
And in here, Apple specifically said, quote, the 941 file history indicates that claim four should depend on claim three, not on claim one.

[00:34:00] Speaker 03:
And then Appendix 16.02 goes on, and Apple says, again, this was additional briefing that was submitted at the request of the board because the SAS decision had come down.

[00:34:12] Speaker 03:
And here, Apple said, quote, these facts indicate that patent claims four's dependence on claim one is a typographical error, and that patent claim four should depend on patent claim three.

[00:34:28] Speaker 03:
We specifically raised that.

[00:34:29] Speaker 03:
And ultimately, in the final written decision at Appendix 18, the board addressed it.

[00:34:35] Speaker 03:
And the board said, quote, petitioners suggest the dependency of Claim 4 is incorrect.

[00:34:40] Speaker 03:
And that's because Claim 3 recites an application.

[00:34:43] Speaker 03:
Claim 4 should have depended on Claim 3.

[00:34:46] Speaker 03:
These arguments were presented.

[00:34:48] Speaker 03:
They were discussed to the board.

[00:34:50] Speaker 03:
And they were discussed at the hearing that Mr. Bregelon attended and argued at.

[00:34:55] Speaker 03:
to stand before the court and say that those arguments were not presented is incorrect.

[00:35:00] Speaker 03:
What about the other one?

[00:35:01] Speaker 03:
And the other one, Your Honor, you're exactly right.

[00:35:03] Speaker 03:
The portion that Mr. Bregelon pointed to was referring to a different argument entirely when it says the petitioners

[00:35:12] Speaker 03:
You know, didn't make that argument.

[00:35:13] Speaker 04:
What the... Okay, but what he's saying is, okay, this argument was made in the supplemental briefing, but it couldn't have been made because it wasn't made in the petition originally.

[00:35:28] Speaker 04:
That's what he's saying.

[00:35:29] Speaker 03:
Well, the...

[00:35:31] Speaker 03:
What happened in the original petition, and the facts remain, the original construction, the same construction that we are arguing for before this court in this appeal is the same?

[00:35:41] Speaker 03:
Sure.

[00:35:41] Speaker 03:
Yes, I understand that.

[00:35:42] Speaker 03:
That's not the issue.

[00:35:43] Speaker 04:
The question is whether the original petition argued alternatively that even if the construction's wrong, we still win because under an alternative construction, it's still obvious.

[00:35:55] Speaker 03:
So the petition did not, I believe, did not argue

[00:36:01] Speaker 03:
that under the narrower construction because we didn't even know that there was a narrow construction being built.

[00:36:07] Speaker 03:
promulgated when Apple did its petition.

[00:36:10] Speaker 03:
And by the way, the construction that I heard Mr. Bragglin said forth is the first time I really heard an affirmative construction from them.

[00:36:18] Speaker 03:
That was not in the petition.

[00:36:19] Speaker 03:
We didn't say in the original petition that claim three was also invalid in light of the narrower construction.

[00:36:27] Speaker 03:
That was raised in the additional briefing that was submitted, again, pursuant to the board's request in light of the SAS decision.

[00:36:36] Speaker 03:
And they've had every opportunity to address that argument.

[00:36:38] Speaker 03:
They could have addressed it in the patent owner's response.

[00:36:41] Speaker 03:
They could have addressed it during the IPR hearing, ultimately.

[00:36:45] Speaker 03:
But none of that was addressed.

[00:36:46] Speaker 03:
And what we have before you is the same situation.

[00:36:50] Speaker 03:
I mean, this is a situation where, as in Erickson, the court, the board erred by not considering the specific evidence, and whether the court

[00:36:59] Speaker 03:
decides it's a typographical error or not, I don't think the court actually needs to reach that decision.

[00:37:04] Speaker 03:
The claim construction that Fitbit has submitted is the correct construction based upon the intrinsic evidence that I cited, the claim language itself, the specification when read in connection to those two sentences, the use of plural of applications.

[00:37:21] Speaker 03:
And again, the extrinsic evidence all confirms it.

[00:37:24] Speaker 03:
So if we step aside and we look at what's the right claim construction, we get to the

[00:37:29] Speaker 03:
to Fitbit's construction, because at the end of the day, the intrinsic evidence and the extrinsic evidence supports it.

[00:37:35] Speaker 03:
And if you use Fitbit's construction, there is no question that the court should reverse the findings with respect to claims three, four, and five.

[00:37:43] Speaker 03:
Those claims are invalid.

[00:37:45] Speaker 03:
With that, I'll cede the rest of my time, unless Your Honor has any other questions.

[00:37:51] Speaker 00:
Any more questions?

[00:37:51] Speaker 00:
Any more questions?

[00:37:52] Speaker 00:
Thank you.

[00:37:52] Speaker 00:
Thank you both.

[00:37:53] Speaker 00:
The case is taken under submission.

[00:37:54] Speaker 00:
That concludes this morning's arguments.