[00:00:04] Speaker 00:
The first case for argument this morning is 18-233A, Network One Technologies versus Hewlett-Packard.

[00:00:12] Speaker 00:
Mr. Duvelle?

[00:00:14] Speaker 01:
Duvelle, yes, Your Honor.

[00:00:17] Speaker 01:
May it please the Court, the District Court construed two claim phrases erroneously.

[00:00:27] Speaker 01:
The phrase low level current includes the relative term low.

[00:00:32] Speaker 01:
Low means below a standard or reference point.

[00:00:37] Speaker 01:
Construction of that phrase consists of identifying the benchmark below which the current must be.

[00:00:45] Speaker 01:
It must be lower than or below a benchmark.

[00:00:50] Speaker 01:
The court and the parties agreed on what that benchmark is.

[00:00:55] Speaker 01:
In the red brief, HB says, quote, the parties agree the reference point for determining whether a current is sufficiently low is below the level needed to sustain startup.

[00:01:10] Speaker 01:
That was what was required for construing low level current.

[00:01:14] Speaker 01:
But the court went on to add a second concept, a lower bound.

[00:01:22] Speaker 00:
Given the limitation of time, let me kind of cut to the chase and sort of certain questions.

[00:01:27] Speaker 00:
Let's assume, hypothetically, we were to agree with you on at least one of your claim construction points.

[00:01:34] Speaker 00:
Why does that necessitate going up?

[00:01:37] Speaker 00:
You're seeking a new trial, obviously.

[00:01:40] Speaker 00:
Even if we agree with one but don't agree with you on the other, where does that leave us in terms of infringement that was a general verdict form?

[00:01:47] Speaker 01:
Yes, Your Honor.

[00:01:49] Speaker 01:
We presented evidence that would meet both of the court's claim constructions.

[00:01:53] Speaker 01:
That is, if the court reversed on low level current, we submitted evidence from which the jury could find that it met the court's construction of main power source as a DC power source.

[00:02:05] Speaker 01:
Therefore, under this court's precedence, we would be entitled to a new trial.

[00:02:11] Speaker 01:
We're not entitled to a new trial only if there is a claim limitation for which we didn't present sufficient evidence.

[00:02:17] Speaker 01:
We can't get past Jamal on an element.

[00:02:21] Speaker 01:
And that's true for both low-level current and main power source.

[00:02:25] Speaker 01:
We submitted evidence that would meet the court's claim construction of low-level current.

[00:02:30] Speaker 01:
Now, the jury didn't agree with us, but the court agreed that Jamal was inappropriate, and we cited and quoted that evidence extensively in our brief.

[00:02:40] Speaker 03:
Now, you say with respect to low-level current that it's essentially a one-way vector, that it's just from x down to, well, you say it's not exactly zero, but from x down to some minimal level.

[00:03:01] Speaker 03:
But it seems to me that in context, can't low level mean something other than that?

[00:03:07] Speaker 03:
As in, if you were talking about a low heart rate, for example, a physician would say, well, perhaps anything between, say, 60 and 25.

[00:03:18] Speaker 03:
Because anything below 25, and you're either dead or you're a hibernating bear.

[00:03:23] Speaker 03:
I mean, that would be the range that one would talk about

[00:03:29] Speaker 03:
realistically speaking, of a low-level heart rate, isn't it?

[00:03:33] Speaker 01:
Well, Your Honor, I would agree that there are contexts where you can have other words that can impose a lower bound and part of a context.

[00:03:41] Speaker 03:
Well, in this case, the only part of the context would be the addition of the words heart rate, which is... But your contention is that when the words low-level show up, that necessarily means there is no lower bound except non-zero.

[00:03:55] Speaker 01:
That's right, Your Honor, exactly.

[00:03:57] Speaker 03:
But that wouldn't apply to my example.

[00:03:58] Speaker 03:
Well, Your Honor, I'm not actually familiar with heart rates and whether or not... Take it that anything below 25 is not going to be found in a living human being.

[00:04:09] Speaker 01:
All right.

[00:04:09] Speaker 01:
All right.

[00:04:09] Speaker 01:
Then I would agree that we're not going to have an actual heart rate below 25, but one would say that the heart rate is too low to be a low heart rate.

[00:04:18] Speaker 01:
Now, in the context of currents, we could design a system with a very minuscule current level that would still function.

[00:04:29] Speaker 01:
As long as we can measure it, and essentially if any current can be generated, it can be measured, there's nothing in the claim that imposes a lower bound.

[00:04:37] Speaker 01:
As a practical matter, depending on the system you're designing, you're going to have certain limitations that you want to include.

[00:04:43] Speaker 01:
There's a preselected condition you're looking for, and you're going to design your current level to establish that.

[00:04:50] Speaker 01:
But the question for the court is, does the claim language impose a lower bound?

[00:04:57] Speaker 01:
Does it say,

[00:04:58] Speaker 01:
There's a current level that it must be higher than.

[00:05:01] Speaker 01:
It must be sufficient to accomplish.

[00:05:04] Speaker 01:
The claim language, the claim phrase low level current doesn't include that.

[00:05:08] Speaker 01:
It includes the concepts of the current level, and then it must be low or below a boundary.

[00:05:16] Speaker 01:
Let me briefly address the issue of estoppel, which the court found was the reason that

[00:05:24] Speaker 01:
The validity finding, the invalidity finding must be over.

[00:05:26] Speaker 00:
Well, that goes to the cross appeal, but I'm fine if you want to start talking about it now.

[00:05:31] Speaker 01:
All right.

[00:05:31] Speaker 01:
If there are no more questions about low level current or main power source, I'm going to just say a few words about the estoppel issue.

[00:05:40] Speaker 01:
HP asserts that it was not able to erase any other grounds other than the one that was already asserted in the Avaya appeal.

[00:05:52] Speaker 01:
But Your Honors, if we look at the

[00:05:54] Speaker 01:
The PTAB's ruling, it did not rule that HP could not submit any other grounds.

[00:06:02] Speaker 01:
The PTAB's practice is to allow joiner of additional grounds, if appropriate.

[00:06:09] Speaker 01:
And what the PTAB actually ruled, if we turn to appendix 5462, when the PTAB turned down HP's first petition,

[00:06:23] Speaker 01:
They said, quote, notably petitioners in their motion do not propose a modified schedule if joiners granted or explain how the current schedule can be reconciled with the due dates for this proceeding.

[00:06:39] Speaker 01:
The basis for turning down HP's first petition was HP hadn't shown how they could consolidate and perform what was needed in a single proceeding, but the PTAB never ruled

[00:06:52] Speaker 01:
You can't add any additional grounds.

[00:06:56] Speaker 00:
I'm getting a little confused.

[00:06:57] Speaker 00:
So you want to review here what happened.

[00:06:59] Speaker 00:
They clearly were time barred for their own petitions.

[00:07:02] Speaker 00:
Yes.

[00:07:02] Speaker 00:
So they wanted to join another petition.

[00:07:05] Speaker 00:
Is it your view that under the law, if the board allows one to join a pending petition, that the joined of a party who otherwise would have been time barred, that they can bring in all of their new issues?

[00:07:21] Speaker 01:
Yes, Your Honor, that is the PTAP's procedure.

[00:07:24] Speaker 01:
That's their stated practice, and they've done that.

[00:07:29] Speaker 01:
And we cite the cases to that effect, Your Honor.

[00:07:31] Speaker 01:
What's required is that if you're going to add another issue, you have to then submit a schedule and explain how everything can be done.

[00:07:40] Speaker 01:
What HP did with their first petition was they included a different expert's declaration

[00:07:46] Speaker 01:
And the PDAP pointed out, now we've got two experts we've got to deal with.

[00:07:50] Speaker 01:
How are we going to deal with this?

[00:07:52] Speaker 01:
You haven't told us how we can accomplish all of this.

[00:07:55] Speaker 01:
Therefore, they denied that first petition.

[00:07:58] Speaker 01:
HP then filed a second petition.

[00:08:00] Speaker 00:
I don't understand.

[00:08:01] Speaker 00:
If they said, we've already got one expert, what excuses could they have had?

[00:08:06] Speaker 00:
I mean, if they're going to introduce additional pieces of prior art,

[00:08:11] Speaker 00:
are not included in the petition they're joining, they're going to have to be doing a whole lot more legwork and introducing a whole lot of stuff into evidence.

[00:08:20] Speaker 00:
So you think the board would allow that?

[00:08:23] Speaker 00:
What are the criteria the board uses if they can come up with a schedule?

[00:08:27] Speaker 01:
Yes, Your Honor, exactly.

[00:08:28] Speaker 01:
And they've done that in other cases.

[00:08:30] Speaker 01:
You can join additional issues.

[00:08:32] Speaker 01:
What HP should have done was either, if they're going to use a different expert,

[00:08:37] Speaker 01:
then explain how all this can be accomplished.

[00:08:40] Speaker 01:
Here's the schedule that can be followed.

[00:08:42] Speaker 01:
Or use the same expert and explain how it can all be accomplished.

[00:08:46] Speaker 00:
Can you tell me then how stepping back this whole estoppel inquiry would work?

[00:08:52] Speaker 00:
Yes.

[00:08:53] Speaker 00:
How broad is your theory going to take us?

[00:08:56] Speaker 00:
If I'm a party and I'm time barred or whatever and I don't file an IPR,

[00:09:01] Speaker 00:
Can the defendant or the patent owner in the case I'm litigating in district court say, you were stopped from challenging validity because you could have filed an IPR and you didn't?

[00:09:11] Speaker 01:
No, Your Honor.

[00:09:13] Speaker 01:
What you have to do is file a petition and have it go all the way to final judgment.

[00:09:18] Speaker 01:
And that's what HP did.

[00:09:20] Speaker 01:
HP filed its own IPR petition.

[00:09:23] Speaker 01:
It sought joiner in order to avoid the time bar.

[00:09:26] Speaker 01:
But it was joined as a party.

[00:09:28] Speaker 00:
Its petition wasn't joined in this.

[00:09:30] Speaker 01:
Yes, Your Honor, its petition was joined.

[00:09:31] Speaker 01:
It filed its own petition and that petition was joined.

[00:09:34] Speaker 01:
They were consolidated.

[00:09:35] Speaker 01:
It wasn't just added as a party.

[00:09:37] Speaker 01:
It had to file its own petition.

[00:09:40] Speaker 01:
And what it did in its second petition was file a petition that then duplicated Avaya's ground.

[00:09:46] Speaker 01:
In its first petition, it hadn't duplicated Avaya's ground.

[00:09:49] Speaker 01:
It had modified it slightly and had a different expert.

[00:09:52] Speaker 01:
Right.

[00:09:53] Speaker 01:
And they weren't allowed to do that.

[00:09:55] Speaker 01:
No, they would be permitted to do that if they had explained to the PTAB how we can consolidate this.

[00:10:01] Speaker 01:
How can we get all this done?

[00:10:03] Speaker 01:
There's no rule prohibiting it.

[00:10:05] Speaker 01:
Now, Your Honor, in terms of-

[00:10:07] Speaker 03:
Well, go ahead.

[00:10:08] Speaker 01:
Well, in terms of breadth, think of the perverse rule that we would have if HP was right.

[00:10:14] Speaker 01:
Avaya met the timing deadline.

[00:10:16] Speaker 01:
It timely filed a petition.

[00:10:19] Speaker 01:
Avaya was fully stopped when it lost.

[00:10:23] Speaker 01:
Under HP's rule, HP misses the deadline.

[00:10:26] Speaker 01:
HP gets to take advantage of the IPR procedure.

[00:10:30] Speaker 01:
And if it loses the IPR, there's no estoppel.

[00:10:33] Speaker 01:
That creates a perverse incentive for parties

[00:10:37] Speaker 01:
that are part of a, if there are multiple defendants being sued, for a defendant to hold back, miss the deadline, and then file a duplicate petition and join so that it's not a stop.

[00:10:48] Speaker 03:
Suppose that in this case, HP had filed a motion for join during a petition and had included not only the

[00:11:02] Speaker 03:
reference that Avaya had included, but also had included the Fisher patents.

[00:11:07] Speaker 03:
Would you say then, if the board then denied with respect to either all of them or with respect to the Fisher patents in the pre-SES period, would you say that there's no estoppel as to the Fisher patents in that case?

[00:11:26] Speaker 01:
under this court's Shaw case, that's correct.

[00:11:29] Speaker 01:
There's a ruling at that point that it can't bring it.

[00:11:32] Speaker 01:
There's a statutory rule.

[00:11:34] Speaker 03:
So the problem, the critical failure here in your view, was that they did not list the Fisher patents in their first or second motions for Joinder.

[00:11:48] Speaker 01:
Yes, Your Honor.

[00:11:49] Speaker 01:
If they would have included those patents and tried to get that ground

[00:11:54] Speaker 01:
Raised before the board they did what they should have done The board would have had the opportunity then to deny the petition altogether in which case there's no estoppel Or to deny one ground and grant on the other in which case there would be no stop when they denied ground But HP didn't do that they intentionally held it back Didn't want to present it wanted to have this this very narrow petition and as a result We went through a final

[00:12:23] Speaker 01:
Final proceeding, we've got a final order.

[00:12:25] Speaker 01:
The statutory estoppel applies.

[00:12:28] Speaker 01:
Unless there are any further questions, we'll reserve the balance check time.

[00:12:43] Speaker ?:
Thank you.

[00:12:43] Speaker 03:
Good morning.

[00:12:44] Speaker 02:
Morning, Chief Judge Prost.

[00:12:45] Speaker 02:
May I please the court?

[00:12:47] Speaker 02:
On the main appeal from Network One, three quick points.

[00:12:52] Speaker 02:
On low-level current, Network One agrees that the specification must be examined to establish the objective standard for a subjective term.

[00:13:02] Speaker 02:
And they agree what that standard is.

[00:13:05] Speaker 02:
It's sufficient to sustain the startup.

[00:13:07] Speaker 02:
Something can't be sustained unless it's been started up in the first place.

[00:13:11] Speaker 02:
And that same sentence of the specification says that it must be begun and not sufficient to sustain.

[00:13:18] Speaker 02:
Network 1 even cited the Exxon case from this court, which says, 265 at Fed 3rd at 1381, when a word of degree is used, the court must determine whether the specification provides a standard for measurement.

[00:13:33] Speaker 02:
That's what the district court did here, absolutely unimpeachable claim construction rationale.

[00:13:40] Speaker 02:
Second, on main power source,

[00:13:44] Speaker 02:
There's a different thing going on here.

[00:13:45] Speaker 02:
My friend makes it sound in the briefs as if this is importing a limitation from the specification.

[00:13:50] Speaker 02:
That's not our position.

[00:13:52] Speaker 02:
Our position is that our expert, Dr. Nykerk, presented a declaration explaining what a person of skill in the art would understand at the time of the application.

[00:14:02] Speaker 02:
The district court credited that explanation.

[00:14:04] Speaker 02:
It was unrebutted by the patentees expert.

[00:14:08] Speaker 02:
And under TEVA, that's entitled to clear error review by this court.

[00:14:12] Speaker 02:
This is a simple person of skill in the art analysis supported by expert declarations and credited by the district court.

[00:14:21] Speaker 02:
It's also, Chief Judge Prost, to answer one of your questions, irrelevant to the verdict.

[00:14:25] Speaker 02:
This main power source limitation, whichever way it goes, it doesn't affect the verdict.

[00:14:30] Speaker 02:
Third and finally on our non-infringement arguments,

[00:14:34] Speaker 02:
The HP switches generate the low-level current within a different component called the PoE plus chip.

[00:14:41] Speaker 02:
This was undisputed at trial.

[00:14:43] Speaker 02:
So that regardless of either of the two... This is the delivering from limitation.

[00:14:49] Speaker 02:
So that if either or both of these other constructions were changed, there was still evidence in the record that required the jury to find

[00:14:59] Speaker 02:
that the delivering from limitation.

[00:15:00] Speaker 00:
You haven't appealed claim construction on that delivery unit.

[00:15:04] Speaker 02:
No, we agree with the claim construction, Your Honor.

[00:15:06] Speaker 02:
We're simply pointing out that the record evidence, if the court were to

[00:15:11] Speaker 02:
reverse either of the claim constructions, this is an alternative ground for affirming the jury's verdict of non-infringement.

[00:15:19] Speaker 03:
But Dr. Knox had testimony in which he explained why it was that the delivering didn't have to come just from the POE check, but could come from further back.

[00:15:34] Speaker 03:
Why isn't that enough at least to create an issue, given the claim construction that you had?

[00:15:40] Speaker 02:
Judge Bryson, Dr. Knox explained that the power could come from the main power source.

[00:15:45] Speaker 02:
The current.

[00:15:45] Speaker 02:
No, he said power.

[00:15:47] Speaker 02:
Current is different than power.

[00:15:48] Speaker 02:
Power is current times voltage, amperage times voltage.

[00:15:52] Speaker 02:
The power in that diagram is coming out at 50 volts.

[00:15:56] Speaker 02:
No amperage is disclosed.

[00:15:58] Speaker 02:
He never dealt with the fact that David Dwelley, our fact expert, testified that once the power, the electrons, is inside the PoE chip, the current is actually generated from within the PoE chip.

[00:16:09] Speaker 02:
And current is not power.

[00:16:11] Speaker 02:
And if we go to the specification.

[00:16:12] Speaker 03:
I thought he had testified in terms of current, which caught my eye.

[00:16:15] Speaker 02:
He testified in terms of, quote unquote, our detection current when he was talking about a hypothetical.

[00:16:21] Speaker 02:
He never testified that as to the HP chips in particular.

[00:16:24] Speaker 03:
Well, he said, now in HP switches, did you determine whether or not their detection current is delivered from the main power supply that you identified?

[00:16:33] Speaker 03:
And he says, yes.

[00:16:34] Speaker 03:
And he goes on.

[00:16:35] Speaker 03:
He's talking about current there, right?

[00:16:37] Speaker 02:
Well, no, Your Honor.

[00:16:37] Speaker 02:
He's talking about the detection current, which

[00:16:40] Speaker 02:
Respectfully, if you read that whole passage from 1790 to 1793 in the appendix, it is talking about the power coming out.

[00:16:49] Speaker 02:
Because in the diagram which he made up, which is not our switches, by the way, he's put in a main power source that does not have any disclosure as to the current.

[00:16:57] Speaker 02:
And there's nothing in his testimony about a current, let alone the amperage of that current, coming out of the PoE chip.

[00:17:04] Speaker 02:
Chief Judge Prost.

[00:17:05] Speaker 00:
I'm going to go back to the main power source.

[00:17:08] Speaker 00:
Your view was quite definitively, as I understood it, that even if we were to disagree with the claim construction, that would not affect the infringement.

[00:17:18] Speaker 02:
Correct, Your Honor.

[00:17:18] Speaker 02:
The debate is between DC and AC, right?

[00:17:23] Speaker 02:
There's no AC component or AC power source in the accused devices.

[00:17:27] Speaker 02:
It's not clear to me what the import of the changed construction would be.

[00:17:31] Speaker 02:
If it were AC, as my friend says,

[00:17:34] Speaker 02:
That might read on some other devices, but our devices, the accused devices at trial, are DC all the way from the transformer through the end of the circuit.

[00:17:40] Speaker 02:
So the DC versus AC issue doesn't affect the jury's verdict of non-infringement.

[00:17:47] Speaker 02:
It's an academic question as far as the accused devices are concerned.

[00:17:51] Speaker 02:
I mean, their theory, and since I won't get up again, probably I'll tell you what my friend is going to say, is that it's a theory of indirect infringement that whenever the consumer plugs something into the wall,

[00:18:01] Speaker 02:
that has AC power, that somehow completes the claim limitation.

[00:18:05] Speaker 02:
But the main power source, which is the component described in the claim, has to do two things.

[00:18:11] Speaker 02:
It has to supply power to the data node, the switch, and it has to deliver the low-level current to the remote access device.

[00:18:18] Speaker 02:
And Dr. Nykerk testified that the only thing that could do those two things simultaneously is a DC power supply.

[00:18:25] Speaker 02:
So of course it's going to be plugged into the wall at some point.

[00:18:28] Speaker 02:
That's not the question.

[00:18:29] Speaker 02:
The question is whether inside the

[00:18:30] Speaker 02:
claimed circuit, there is an AC power and there's not.

[00:18:36] Speaker 00:
Okay.

[00:18:36] Speaker 00:
Can we move on to estoppel?

[00:18:38] Speaker 02:
Thank you, Your Honor.

[00:18:40] Speaker 02:
You know, our estoppel point, I think, has become more important in light of the SAS Institute case, where, you know, the PTAB now has to institute an original petition.

[00:18:51] Speaker 02:
If it institutes it all, it has to institute on all claims and all grounds.

[00:18:55] Speaker 02:
It will often be the case that there will be jointer parties after the one-year bar because of the nature of this industry.

[00:19:03] Speaker 02:
It is often the case that these patents are asserted simultaneously or nearly so against multiple defendants, often in different jurisdictions.

[00:19:11] Speaker 02:
And of course, they all keep an eye on things.

[00:19:13] Speaker 02:
And our position is very simple.

[00:19:15] Speaker 02:
An original petitioner and a jointer party should be governed by slightly different standards with respect to the estoppel provision because of the realities of PTAP procedure.

[00:19:25] Speaker 02:
that once an original petition has been instituted, the world knows the grounds on which the PTAP is going to rule.

[00:19:33] Speaker 02:
A jointer party, after the one-year bar, is generally limited to those grounds.

[00:19:38] Speaker 02:
The precedential opinion panel of the PTAP said that, told us all that, in the propant decision that we cited while this appeal was pending.

[00:19:46] Speaker 02:
The only exception they identify is when the patent owner

[00:19:49] Speaker 02:
asserts different claims or different grounds in a trial that would make it unfair not to allow.

[00:19:54] Speaker 02:
So that as a general matter, the PTAB is not going to institute on additional grounds for the Joinder Party.

[00:20:00] Speaker 02:
My friend doesn't cite a single case in which the PTAB has ever done that.

[00:20:04] Speaker 00:
But you heard his comments, as I did, that when you initially proposed doing that, the board didn't reject it wholesale.

[00:20:12] Speaker 00:
It just said it needed some more information from you, which you failed to provide.

[00:20:17] Speaker 02:
I would submit, Chief Judge Crost, that's a bit incomplete.

[00:20:21] Speaker 02:
First, all of the references, Chang, Woodmas, and Fisher, had previously been presented by Sony in a different IPR petition, and the board denied on those.

[00:20:32] Speaker 02:
So it was not a mystery as to the Fisher patents ground what the board's view was.

[00:20:37] Speaker 02:
As to the additional grounds that HP added in its Joinder petition, the board said we had not proposed a different schedule, but it said more pointedly

[00:20:45] Speaker 02:
that new issues were presented in addition to those in the original petition and denied on that basis, and at about the same time granted the Dell petition, which specifically noted no new issues are presented.

[00:20:58] Speaker 02:
And then we presented a second petition in which no new issues were presented, and they granted it on that ground.

[00:21:03] Speaker 02:
We looked pretty hard, Your Honor, and I could only find one case in the history of the PTAB in which the PTAB has ever allowed a joiner party to add additional grounds after the one-year part.

[00:21:14] Speaker 02:
So it's not the case that they ordinarily do that.

[00:21:17] Speaker 02:
The case is they ordinarily don't do it.

[00:21:19] Speaker 02:
And the presidential opinion panel, the director, told us that's what they intend to do going forward.

[00:21:24] Speaker 02:
So as a practical matter, as a reasonable matter, to use the language of the statute, a Joinder party really can't add additional grounds.

[00:21:32] Speaker 02:
And Judge Bryson, you asked my colleague about, would it have been enough if HP had just put in the Fisher patent grounds?

[00:21:39] Speaker 02:
And of course it would have been.

[00:21:41] Speaker 02:
Dispute that.

[00:21:41] Speaker 02:
That, of course, is right.

[00:21:43] Speaker 02:
But it's not, as you all know, a matter of simply listing the grounds on a piece of paper.

[00:21:47] Speaker 02:
To put in a petition, you've got to put in your expert reports, your analysis.

[00:21:52] Speaker 02:
It's an expensive major undertaking to put together these petitions.

[00:21:57] Speaker 02:
And the rule being proposed on the other side of the district court of law here.

[00:22:01] Speaker 03:
Well, of course, if you were doing it with the full expectation that it wouldn't be instituted and you were just doing it in order to have a procedural device to protect yourself,

[00:22:10] Speaker 03:
for later under Shaw, then presumably you wouldn't have to put out that kind of an effort.

[00:22:16] Speaker 02:
I'd be nervous about that, Your Honor, because then the board would deny on the ground that it's an insufficient showing, and then you'd be stuck either way.

[00:22:23] Speaker 03:
Why would you be stuck in that case if they denied it?

[00:22:27] Speaker 03:
Well, you wouldn't be stopped, right?

[00:22:29] Speaker 02:
I mean, I guess you could attach your invalidity contentions to your petition, but that's certainly not the way PTAB practice has gone.

[00:22:35] Speaker 02:
The PTAB has expected a full petition and supported with the assumption that it would be granted.

[00:22:40] Speaker 02:
I'm not sure there's a good faith basis for doing that.

[00:22:42] Speaker 02:
I mean, I'm a courtroom lawyer, not a PTAB practitioner, but I know that's not the way anybody does a PTAB petition.

[00:22:49] Speaker 02:
And we know from prop-an that it is an exercise in futility.

[00:22:54] Speaker 02:
We know that unless there's some change in the district court, there is no basis to simply include those additional points.

[00:23:01] Speaker 02:
And the court respectfully has before it a choice of bright line rules, right?

[00:23:07] Speaker 02:
For joined or parties after the one-year bar, either the requirement is, as the district court applied here, anything you knew about has to be included.

[00:23:16] Speaker 02:
And look.

[00:23:17] Speaker 02:
Parties could deal with that if that were the rule, but I don't think that's what the statute says.

[00:23:21] Speaker 02:
Or joined her parties after the one-year bar, at least in cases where the PTAB has indicated that additional grounds won't be accepted, do not need to list every ground because it would be an exercise of futility.

[00:23:31] Speaker 02:
And the statute includes that word reasonable.

[00:23:33] Speaker 02:
It does not say grounds that were raised.

[00:23:36] Speaker 00:
So the regime you are advocating is that if you want to join, you join a party, but you're left with the grounds that have already been instituted in the property filed.

[00:23:47] Speaker 00:
petition that you as a party who was time-barred otherwise, the statute says you can join as a party, but that does not include your being able to raise additional new grounds that were not included in the original petition.

[00:24:04] Speaker 02:
Precisely, Your Honor.

[00:24:05] Speaker 00:
Does that make sense, you think, because it would kind of be unfair to patent owners in a way if people could

[00:24:11] Speaker 00:
keep piling in, even if they didn't really have the right to be there with their petition, because they were clearly time barred.

[00:24:20] Speaker 02:
Yes, and I'll take it one step further than that.

[00:24:24] Speaker 02:
If that's the rule, then you are going to have this piling on.

[00:24:27] Speaker 02:
And then any Joinder petition that does get instituted, we're going to have a SAS question about whether they have to institute all the grounds proposed in that, right?

[00:24:35] Speaker 02:
Because I think a Joinder petition is different than an original petition under the statute.

[00:24:40] Speaker 02:
And the board certainly has treated it that way.

[00:24:43] Speaker 02:
But SAS Institute certainly gives the board the incentive to enforce prop-ant, not to deviate from it.

[00:24:49] Speaker 02:
And therefore, it's clear.

[00:24:51] Speaker 02:
And to be clear.

[00:24:53] Speaker 02:
Once a petition has already been instituted, a party like HP may choose to join.

[00:24:58] Speaker 02:
Look, we're down in eastern Texas.

[00:25:00] Speaker 02:
We were ready, willing, and able to try this case.

[00:25:02] Speaker 02:
We did try this case.

[00:25:03] Speaker 02:
We got the claim constructions from multiple judges.

[00:25:06] Speaker 02:
We went to a jury.

[00:25:07] Speaker 02:
A jury found these claims not infringed and not invalid.

[00:25:10] Speaker 02:
And we're here to support that judgment on infringement.

[00:25:13] Speaker 00:
Wait, the jury found them invalid.

[00:25:14] Speaker 02:
Yeah, excuse me, not infringed and invalid.

[00:25:19] Speaker 02:
that the petitioning party may

[00:25:34] Speaker 02:
practice to join a pending petition.

[00:25:35] Speaker 02:
That doesn't open up everything else.

[00:25:37] Speaker 00:
Okay, if we were hypothetically to agree with you on some of the estoppel analysis, where does that leave us?

[00:25:44] Speaker 00:
You're advocating a reversal, but obviously the seems to me the most reasonable course would be vacate and remand and arguably a new trial.

[00:25:55] Speaker 02:
Well, certainly, there's three options for the court.

[00:25:59] Speaker 02:
You could reverse on the ground that there is sufficient evidence to support the verdict and just reinstate the verdict.

[00:26:04] Speaker 02:
You could remand for a new trial.

[00:26:05] Speaker 00:
But there was, I mean, this case was tried, and it was tried on the Fisher systems and on the Fisher patents, arguing that both of those established invalidity.

[00:26:16] Speaker 00:
So how are we to pick apart a jury verdict now

[00:26:21] Speaker 00:
not knowing whether or not they indeed relied on the Fisher patents, which maybe that evidence shouldn't have gotten in the first place because that was problematic, right?

[00:26:31] Speaker 02:
Network One argued at trial, Your Honor, in the appendix at page 2502, that the Fisher system was redundant.

[00:26:38] Speaker 02:
It was unnecessary.

[00:26:40] Speaker 02:
that the Fisher patent ground alone was enough.

[00:26:42] Speaker 02:
And Dr. Nykerk testified that everything taught in the Fisher system was taught in the Fisher patents.

[00:26:47] Speaker 02:
The Fisher system was a state-of-the-art evidence.

[00:26:49] Speaker 02:
It was there for the jury to understand how Dr. Fisher implemented his patent.

[00:26:52] Speaker 00:
But didn't you make arguments that, I mean, specifically not saying this is background noise or this is just to show you state-of-the-art, that this is a basis for concluding that there was

[00:27:04] Speaker 02:
We argued that it was prior art, the district court disagreed, but it was prior art as an implementation of the Fisher patents.

[00:27:11] Speaker 02:
The inventor got the patent and also developed a system implementing that patent.

[00:27:17] Speaker 02:
There's not a delta between the two.

[00:27:20] Speaker 02:
As far as the teachings, every element of the claim

[00:27:24] Speaker 02:
They were all disclosed.

[00:27:25] Speaker 02:
The third option.

[00:27:25] Speaker 03:
Why isn't this something as to which the district court is in a much better position than we are to make a judgment?

[00:27:31] Speaker 02:
So that was going to be the third option.

[00:27:32] Speaker 02:
I was going to propose, Judge Bryson has asked Judge Schrader, who did not reach this question, if the estoppel is taken away, as we submit it should be, whether or not a new trial is required, because he sat through the evidence and is more familiar with that point.

[00:27:47] Speaker 02:
Because he did not rule, as Network One points out, on the conditional new trial motion.

[00:27:50] Speaker 02:
So there's actually no ruling on a new trial for the court to review.

[00:27:54] Speaker 02:
So there's reversal, new trial, or the halfway, which is send it back to the consumer.

[00:28:02] Speaker 02:
Thank you.

[00:28:02] Speaker 02:
Thank you, Your Honor.

[00:28:09] Speaker 01:
I'd like to start with Your Honor's question about what happens if main power source is reversed.

[00:28:16] Speaker 01:
Yes, Your Honor.

[00:28:18] Speaker 01:
Contrary to HP's position, the patent claims do not require that the main power source reside as a component inside the switch.

[00:28:28] Speaker 01:
In fact, if we look at Figure 3 of the patent, the preferred embodiment has the main power source as a separate component.

[00:28:37] Speaker 01:
Wait a minute.

[00:28:37] Speaker 01:
You want to give me the page site?

[00:28:39] Speaker 01:
That's Appendix 329.

[00:28:41] Speaker 01:
Okay.

[00:28:45] Speaker 01:
If we look, the main power supply, 70, that's the main power source on the left.

[00:28:50] Speaker 01:
That is a separate component from the four switches.

[00:28:54] Speaker 01:
There are four network switches, and the main power supply feeds all four of those, and each of those switches has eight separate ports.

[00:29:03] Speaker 01:
So in the preferred embodiment, the main power supply is outside the data node.

[00:29:09] Speaker 01:
This is also shown in figure one, just two pages back.

[00:29:13] Speaker 01:
Power source.

[00:29:14] Speaker 01:
data node, two separate components.

[00:29:17] Speaker 01:
As a result, we can point to an AC or DC power source that is outside of the switch, and we did exactly that.

[00:29:26] Speaker 01:
For example, if we look on page 65 of the blue brief, there's a photograph of an operating system that exactly matches figure three, a separate component, the AC power supply,

[00:29:44] Speaker 01:
is outside the switch feeds into the switch.

[00:29:48] Speaker 01:
So it's a very common configuration.

[00:29:51] Speaker 01:
It's one that we accused.

[00:29:53] Speaker 01:
We had evidence of it.

[00:29:55] Speaker 01:
If the claim construction were reversed, we could put that in front of the jury and say, here's an AC main power supply that exactly matches the preferred embodiment.

[00:30:05] Speaker 01:
We're entitled to do that, Your Honor.

[00:30:06] Speaker 01:
We need a new trial on that claim element.

[00:30:11] Speaker 01:
I want to briefly address, unless your honor has any questions about that, the question of estoppel.

[00:30:16] Speaker 01:
The rule for estoppel is not that if you're joining the petition, you can't add new issues.

[00:30:26] Speaker 01:
The PTAB rule is that you can do it.

[00:30:29] Speaker 01:
It's true that they rarely do it because most people don't take the time and effort to file it timely enough and to present the schedule that's going to allow it to all be accomplished.

[00:30:41] Speaker 01:
Most people simply duplicate another claim.

[00:30:44] Speaker 00:
So your view of the estoppel principle, which would apply, is every time any party is joined in an ongoing IPR, any question that they could have otherwise raised with respect to validity, 102 and 103, is foreclosed, therefore.

[00:31:05] Speaker 00:
In other words, there is stop from raising that at a trial.

[00:31:08] Speaker 01:
Yes, Your Honor, that's the statutory language.

[00:31:12] Speaker 01:
Reasonably could have raised.

[00:31:14] Speaker 01:
The factor that's considered is, it looks at from the point of view of the petitioner, could they have raised it?

[00:31:20] Speaker 01:
Not what would the reaction have been of the PTAB to it.

[00:31:23] Speaker 01:
Could they have raised it?

[00:31:25] Speaker 01:
And they could have raised it reasonably.

[00:31:27] Speaker 01:
They knew about it.

[00:31:29] Speaker 01:
Therefore, they are stopped.

[00:31:31] Speaker 01:
Again, Your Honor, if we don't have that rule, we have a perverse system.

[00:31:36] Speaker 01:
where somebody who misses a deadline gets to join an IPR.

[00:31:42] Speaker 01:
So we got HP and Avaya participating in the same IPR.

[00:31:46] Speaker 01:
Avaya did it right.

[00:31:47] Speaker 01:
HP didn't do it right yet.

[00:31:49] Speaker 01:
Under HP's rule, HP gets to take full advantage of the IPR process and possibly knock out our claims.

[00:31:56] Speaker 01:
And if they don't, there's no estoppel.

[00:31:59] Speaker 01:
That makes no sense.

[00:32:00] Speaker 00:
I think that's not a characterization I would give to HP's position.

[00:32:05] Speaker 00:
HP's position is that they can't join

[00:32:10] Speaker 00:
other stuff.

[00:32:12] Speaker 00:
So they don't derive any benefit other than what's already been established by a timely petition that's been filed.

[00:32:21] Speaker 00:
That doesn't seem to be a horrible policy choice to the extent we get to do policy.

[00:32:27] Speaker 00:
I mean, that seems fear to patent owners, too, so that the patent owner doesn't get double-whipped by not just having the party join whatever that means in terms of resources being brought to bear,

[00:32:38] Speaker 00:
but that otherwise petitioners who clearly file time barred allegations of unpatentability get to have all of those allegations asserted against a patent owner just by getting joined.

[00:32:52] Speaker 00:
That doesn't seem like a great policy choice either.

[00:32:54] Speaker 01:
The patent owner is double-whipped, Your Honor.

[00:32:57] Speaker 01:
The whole policy behind the IPR process in Estopolis, you can choose one or the other.

[00:33:03] Speaker 01:
under HP's approach, they get to go forward with an IPR and potentially knock out the claims.

[00:33:10] Speaker 01:
They could have filed a timely one as well and asserted other petitions.

[00:33:13] Speaker 00:
Well, then your position seems to be that no petitioner could ever raise an invalidity contention at trial because they always have the opportunity.

[00:33:24] Speaker 00:
You can't be saying

[00:33:26] Speaker 00:
that estoppel applies because any person in a district, any defendant in a district court proceeding could have filed the timely petition and didn't.

[00:33:36] Speaker 00:
So you're not saying that, right?

[00:33:37] Speaker 01:
No.

[00:33:38] Speaker 01:
No.

[00:33:38] Speaker 01:
It requires two things.

[00:33:39] Speaker 01:
You have to have filed a petition, had it instituted, gone to final decision.

[00:33:45] Speaker 00:
OK.

[00:33:46] Speaker 00:
Well, this person didn't file a petition.

[00:33:48] Speaker 00:
Their petition was rejected.

[00:33:49] Speaker 01:
That's not true, Your Honor.

[00:33:51] Speaker 00:
No.

[00:33:51] Speaker 01:
No.

[00:33:52] Speaker 01:
They did file a petition.

[00:33:53] Speaker 01:
And it was accepted.

[00:33:54] Speaker 01:
The petition was granted by the Patent Office.

[00:33:56] Speaker 01:
That's why they got to participate.

[00:33:58] Speaker 01:
It's one of the things they say in their brief that's misleading.

[00:34:01] Speaker 01:
They filed a petition.

[00:34:03] Speaker 01:
That petition was joined with a bias petition.

[00:34:07] Speaker 01:
Those two petitions proceed.

[00:34:08] Speaker 00:
Where is it?

[00:34:08] Speaker 00:
Does the statute talk about joining parties or joining petitions?

[00:34:12] Speaker 00:
Because there are two sections.

[00:34:13] Speaker 00:
In the statute, I know they talk about consolidation.

[00:34:16] Speaker 00:
Consolidation in my brain is you take two cases and you consolidate them.

[00:34:20] Speaker 00:
And then they talk about joiner of parties, not of petitions, but of parties, right?

[00:34:27] Speaker 01:
Your Honor, I don't recall what that statutory language is.

[00:34:30] Speaker 01:
I can tell you what happened here.

[00:34:32] Speaker 01:
which is that they filed a petition, the petition was instituted, and it proceeded to a final decision.

[00:34:40] Speaker 01:
A stop-all applies under those circumstances, Your Honor.

[00:34:44] Speaker 01:
That's what the statute requires.

[00:34:45] Speaker 01:
It says, if they raised or reasonably could have raised a ground, they're stopped.

[00:34:51] Speaker 01:
And the whole point is to say, let's get the 102 and 103 grounds that you best think that you know.

[00:34:57] Speaker 00:
I guess, can you just go back and clarify to me that their petition was instituted?

[00:35:01] Speaker 01:
Yes.

[00:35:02] Speaker 00:
I thought they were time barred in their petition that they were filed.

[00:35:05] Speaker 01:
No, Your Honor, what happened?

[00:35:06] Speaker 00:
And then they come in and they want to join.

[00:35:08] Speaker 01:
No, what happened was during the time period for which to file an initial petition, they missed it.

[00:35:16] Speaker 01:
They didn't file any petitions there.

[00:35:17] Speaker 01:
OK.

[00:35:18] Speaker 01:
Then they filed a petition and sought joiner with that petition.

[00:35:23] Speaker 01:
But they added additional grounds.

[00:35:26] Speaker 01:
They also added a different expert.

[00:35:27] Speaker 01:
They didn't explain how it could be done.

[00:35:30] Speaker 01:
The PTAB denied that petition, didn't institute it.

[00:35:33] Speaker 01:
Then they filed a second petition.

[00:35:36] Speaker 01:
In the second petition, they duplicated the Avaya ground, used the exact same expert declaration, and explained how this wouldn't delay anything if the PTAB were to join them.

[00:35:51] Speaker 01:
The PTAB then instituted trial on that petition and consolidated it.

[00:35:56] Speaker 01:
There were three separate petitions, in fact, that were consolidated for trial.

[00:36:00] Speaker 01:
So it was instituted, a final decision did enter, and as a result, under the statute, a stopple applies.

[00:36:10] Speaker 01:
They're trying to get away from a stopple, but a stopple applies.

[00:36:13] Speaker 01:
I see I've used my time.

[00:36:14] Speaker 01:
Thank you.

[00:36:15] Speaker 01:
Thank you.

[00:36:17] Speaker 00:
OK, we get response just on the cross-appeal issue.

[00:36:24] Speaker 02:
I'll be very brief, Your Honor.

[00:36:26] Speaker 02:
This issue that was just being discussed.

[00:36:28] Speaker 00:
Let me ask you about it, about the consolidation of petitions versus the question of joining parties, which is what the statute refers to.

[00:36:36] Speaker 02:
My understanding is, after the time bar, it's a joiner of parties.

[00:36:40] Speaker 02:
which does not permit a joiner of issues.

[00:36:42] Speaker 03:
Although it's done through the instrument of a petition and a motion for a joiner.

[00:36:47] Speaker 02:
But it's treated differently.

[00:36:48] Speaker 02:
We should probably talk about an original petition and a joiner petition.

[00:36:51] Speaker 02:
Before the one-year bar, the PTAB treats it as an original petition.

[00:36:55] Speaker 02:
There may be multiple ones, multiple parties.

[00:36:57] Speaker 03:
Calling it a petition when it's a joiner petition is some confusion here.

[00:37:02] Speaker 02:
But after the one-year bar, it is called a joiner petition, and it is considered only as a joiner petition.

[00:37:07] Speaker 02:
That is, it has to be attached to a pending one.

[00:37:09] Speaker 02:
This court, the concurring opinion in the NIDAC case from this court, addressed this whole point very clearly.

[00:37:15] Speaker 02:
It's cited in the prop-amp decision from the presidential opinion panel, and explained that after the one-year bar, the statute allows the director to join a party, but not to join additional issues.

[00:37:26] Speaker 02:
That's as a matter of statutory construction, because there's a distinction in the statutory language, as Chief Judge Prost pointed out.

[00:37:32] Speaker 02:
Unless there are other questions?

[00:37:35] Speaker 00:
Thank you.

[00:37:35] Speaker 02:
Thank you, counsel.

[00:37:36] Speaker 00:
We thank both sides, and the case is submitted.