[00:00:01] Speaker 03:
This morning we have four argued cases and one submitted case.

[00:00:09] Speaker 03:
One case Lewis versus Wilkie will be submitted on the briefs.

[00:00:13] Speaker 03:
Our first oral argument this morning is 18-1680, Surf Waves Limited versus Pacific Surf Designs Incorporated.

[00:00:25] Speaker 03:
Is it Tash?

[00:00:26] Speaker 03:
Tashay.

[00:00:27] Speaker 03:
Tashay.

[00:00:28] Speaker 03:
Please begin when you're ready.

[00:00:31] Speaker 03:
You've reserved eight minutes, is that right?

[00:00:34] Speaker 05:
Possibly less, Your Honor.

[00:00:36] Speaker 03:
OK.

[00:00:37] Speaker 05:
Or possibly more, sorry.

[00:00:39] Speaker 05:
Possibly more, not less time.

[00:00:42] Speaker 05:
I don't anticipate saying much this morning.

[00:00:43] Speaker 02:
15 minutes.

[00:00:45] Speaker 02:
Go ahead and begin.

[00:00:49] Speaker 05:
Good morning.

[00:00:50] Speaker 05:
May it please the court, I'm Rick Tashay with the law firm of Buckhalter on behalf of the Appellant Surf Waves Limited.

[00:00:57] Speaker 05:
I'd like to begin this morning by expressing our appreciation

[00:01:00] Speaker 05:
on behalf of the client to the court for raising the jurisdictional issue, as we believe it is dispositive of this case.

[00:01:08] Speaker 01:
Why didn't you raise it?

[00:01:09] Speaker 01:
That decision came out right around the time you filed your blue brief.

[00:01:13] Speaker 01:
And you had almost a year.

[00:01:14] Speaker 01:
You had a reply brief.

[00:01:16] Speaker 01:
And then time after that to notify us of the case.

[00:01:19] Speaker 01:
And you didn't.

[00:01:21] Speaker 05:
It's a fair point, Your Honor.

[00:01:22] Speaker 05:
And it's something that, in hindsight, we wish that we would have done.

[00:01:25] Speaker 05:
But the Supreme Court has made clear in the United States versus Cotton that subject matter jurisdiction can't be forfeited or waived.

[00:01:35] Speaker 05:
And it also instructs.

[00:01:37] Speaker 01:
Do you think this is a jurisdictional bar?

[00:01:40] Speaker 05:
I do, Your Honor.

[00:01:41] Speaker 05:
Why?

[00:01:41] Speaker 05:
It's subject matter jurisdiction that whether or not the PTAB have the authority to institute the IPR proceeding based on a time bar.

[00:01:50] Speaker 01:
What support do you have for the notion that time bars are jurisdictional?

[00:01:54] Speaker 05:
I believe this court decided that issue in the Click to Call case as well.

[00:01:57] Speaker 01:
I don't think that we decided that at all because it wasn't implicated on whether it was a jurisdictional bar or not because it was directly raised there.

[00:02:07] Speaker 01:
There wasn't a waiver question.

[00:02:10] Speaker 00:
Does that make sense?

[00:02:11] Speaker 00:
Even though the word jurisdiction was used in Click to Call, it doesn't necessarily mean that this court considered and grappled with the idea of whether that statute of limitations is, in fact, a jurisdictional limit that could not be waivable.

[00:02:29] Speaker 00:
And there's a number of Supreme Court decisions that talk about whether statutes that talk about time bars are jurisdictional or not.

[00:02:39] Speaker 00:
And so it's not a clear cut determination.

[00:02:43] Speaker 00:
It's not clear cut already or determined by this court that it's jurisdictional.

[00:02:48] Speaker 00:
So the question is whether you have any additional arguments or thoughts for us today on whether it's jurisdictional or not or whether it's a time bar that could be limited, that could be waived.

[00:03:02] Speaker 05:
It's a great question.

[00:03:03] Speaker 05:
Thank you, Your Honor.

[00:03:04] Speaker 05:
We believe that it is a jurisdictional issue.

[00:03:06] Speaker 05:
We believe it's a gating event and that, as a result, it's not something that can be waived, especially at the time in question.

[00:03:16] Speaker 05:
We believe that

[00:03:17] Speaker 05:
this court and the PTAB was adopting an interpretation of the 315B rule that it was directed to cases that had not been dismissed without prejudice and when this court decided that issue back in 2018 it was a different interpretation of the rule and at the time neither the PTAB during its initiation of the

[00:03:42] Speaker 05:
Underlying IPR petition or its subsequent final written decision addressed the 315 issue Are you familiar with the Supreme Court opinion city of Arlington, Texas versus FCC?

[00:03:55] Speaker 03:
Came out about five years ago I'm not your honor.

[00:03:59] Speaker 03:
Okay.

[00:03:59] Speaker 00:
What about Hamilton Beach that that's a decision by our court where we held that There was no cross-appeal that had been filed and

[00:04:11] Speaker 00:
on the 315B issue, and that therefore the court didn't have to address it.

[00:04:18] Speaker 00:
Now if the 315B issue really presented a jurisdictional bar, I don't see how the cross-appeal would have mattered.

[00:04:27] Speaker 00:
So what's your response to this court's decision in Hamilton Beach?

[00:04:32] Speaker 05:
I think that the Hamilton Beach decision can be distinguished from our current case and that in the Hamilton Beach decision, the patent owner didn't challenge the court's IPR decision where it affirmed or upheld the validity of its patent.

[00:04:48] Speaker 05:
And so unlike the current situation where we have in fact appealed the IPR decision of the board, we believe that we have the appropriate standing to raise the 315B jurisdictional issue.

[00:05:02] Speaker 05:
and the supreme court.

[00:05:03] Speaker 00:
That's only because the PTAB ruled in favor of the patent owner in that case.

[00:05:07] Speaker 00:
And then the cross appeal was, even if you think there's something wrong with the board's decision, we think that this should not have been instituted, right?

[00:05:15] Speaker 05:
I believe that is the case, Your Honor.

[00:05:17] Speaker 00:
I don't understand the distinction then.

[00:05:22] Speaker 05:
Let me try this a little bit differently.

[00:05:23] Speaker 03:
When it comes to the courts and court jurisdiction, courts have always said, that's a threshold issue.

[00:05:31] Speaker 03:
And you have to address that before anything else.

[00:05:35] Speaker 03:
And so just playing with the logic of what happened in Mass Hamilton, I don't see how the court in Mass Hamilton could have

[00:05:45] Speaker 03:
just refuse to address what you call the jurisdictional question, the time bar rule, by simply saying, well, you needed to file a cross appeal for that.

[00:05:57] Speaker 03:
If it's truly a jurisdictional question, then that would have to be the very first issue addressed and confronted by the court rather than the court refusing to address it.

[00:06:09] Speaker 03:
Isn't that right?

[00:06:11] Speaker 05:
Again, I'm not familiar with that case, Your Honor, so I'm unable to specifically address the question.

[00:06:17] Speaker 05:
But with respect.

[00:06:18] Speaker 03:
This is the opinion the other side cited, too.

[00:06:21] Speaker 00:
The Hamilton Beach case.

[00:06:23] Speaker 00:
Oh, I'm sorry.

[00:06:25] Speaker 05:
Could I ask you to repeat your statement, please?

[00:06:28] Speaker 03:
Oh, yeah.

[00:06:30] Speaker 03:
If the time bar is truly a jurisdictional question, as you claim it is, then in Hamilton,

[00:06:39] Speaker 03:
this court would have needed to address that issue once it was raised by anybody, or it would have had to address it sui sponte as well.

[00:06:47] Speaker 03:
It certainly would have not been permitted to ignore the question under any circumstances, regardless of whether one could argue that it might be best to present it in a cross-appeal versus just keeping it in the red brief.

[00:07:04] Speaker 03:
If it's a truly, truly jurisdictional question,

[00:07:07] Speaker 03:
then there would be no way for the court to escape addressing it.

[00:07:11] Speaker 03:
Isn't that right?

[00:07:14] Speaker 05:
I believe, and again, I may be misreading the case, but it was my understanding that the Pat donor did not file a cross-appeal and as a result did not have the standing to raise or to cause... That's a different question.

[00:07:30] Speaker 01:
If it was truly jurisdictional, they didn't need to file a cross appeal, because the court always has a responsibility to address its jurisdiction and the underlying tribunal jurisdiction.

[00:07:43] Speaker 01:
So whether there was a cross appeal or not, if it's a jurisdictional question, we've got to hear it.

[00:07:49] Speaker 01:
If it's not a jurisdictional question, then the failure to preserve it in a cross appeal does matter.

[00:07:55] Speaker 01:
So the clear implication of that case is it wasn't jurisdictional.

[00:08:00] Speaker 01:
Because it wasn't and there was no cross appeal, we didn't hear it.

[00:08:06] Speaker 01:
Why shouldn't we follow that reasoning here?

[00:08:16] Speaker 05:
From our perspective, Your Honor.

[00:08:19] Speaker 01:
Let me ask you this.

[00:08:21] Speaker 01:
The Supreme Court has made pretty clear in the last decade or two that claims, processing rules, timing rules for bringing any types of cases are generally not to be considered jurisdictional.

[00:08:37] Speaker 01:
The court has chastised a number of lower courts, including this court, for playing loose with the term jurisdictional when it describes timing of claims or statute of limitations and said,

[00:08:51] Speaker 01:
that in order for it to be considered a jurisdictional statute of limitation or time for filing, it has to be clear from Congress's intent.

[00:08:59] Speaker 01:
And they do that by including it in a jurisdiction statement or making some other kind of statement that it's to be considered jurisdictional and not just a time to file suit.

[00:09:11] Speaker 01:
Where in this statute does it make it clear that Congress intended for this time bar to be jurisdictional?

[00:09:20] Speaker 05:
I can't cite to a specific location in the statute that suggests that, Your Honor.

[00:09:26] Speaker 05:
We're operating under the assumption that it is a jurisdictional issue and it's one that can't be waived or forfeited, and especially in light of the facts of our case where

[00:09:35] Speaker 05:
The ruling in the Click to Call case came out at or about the same time we filed our brief.

[00:09:41] Speaker 05:
And we acknowledged that we were remiss in not filing supplemental briefings.

[00:09:45] Speaker 03:
Mr. Teshe, I'm sorry.

[00:09:46] Speaker 03:
You're into your rebuttal.

[00:09:47] Speaker 03:
Do you want to say something about the merits of this case?

[00:09:51] Speaker 05:
Certainly, Your Honor.

[00:09:53] Speaker 03:
Just to let you know, you are into your rebuttal.

[00:09:56] Speaker 03:
So you should probably be quick here.

[00:09:57] Speaker 05:
Yes, I will.

[00:10:02] Speaker 05:
With respect to the substantive issues of our appeal, Your Honor, we're not asking the court to either make any law or work in the fringes of pre-existing law.

[00:10:09] Speaker 05:
We believe that this was a clear error in a fundamental tenet of claim construction that was done by the board.

[00:10:15] Speaker 05:
They ignored the intrinsic evidence, both in terms of the ample disclosure within the specification that identified the ability to turn and maneuver on the upwardly extending sidewall,

[00:10:28] Speaker 05:
as a fundamental essence of the invention so that one could transition from one side wall

[00:10:33] Speaker 05:
of the activity section across the middle section and onto the second sidewall of the activity section.

[00:10:40] Speaker 05:
And we also believe that the board ignored clear prosecution history that was at odds with the construction that was adopted by the board where during the prosecution of the application, the applicant amended the claims to distinguish the 107 pound that was directed to a containerless ride

[00:11:01] Speaker 03:
Did you bring up the 107 patent and the whole prosecution question in your patent owner response here?

[00:11:08] Speaker 05:
I believe we did, Your Honor.

[00:11:09] Speaker 03:
Where would that be in the JA?

[00:11:25] Speaker 05:
May I address that answer?

[00:11:27] Speaker 05:
Sure.

[00:11:27] Speaker 05:
Oh, thank you.

[00:11:29] Speaker 05:
We believe that the board ignoring both the ample disclosure contained within the specification and the prosecution history where the applicant expressly distinguished containerless rides, which is what the 107 was, made clear that the 016 patent is a containered ride and required the ability to maneuver and turn on the side walls as the essence of the invention.

[00:11:57] Speaker 05:
And the construction that was adopted by the board read that out.

[00:12:01] Speaker 05:
And they expressly acknowledged that in their final written decision.

[00:12:04] Speaker 00:
And in so doing, they allowed... You're talking about whether the sidewalls have to be traversable by the rider?

[00:12:11] Speaker 05:
Exactly.

[00:12:11] Speaker 05:
Yes, exactly, Your Honor.

[00:12:13] Speaker 03:
And in so... The board found that the 530 patent, prior art patent, those curved sidewalls, they might be smallish.

[00:12:21] Speaker 03:
curved sidewalls, but they're sidewalls nevertheless that curve upward and therefore someone riding that could traverse those sidewalls.

[00:12:31] Speaker 05:
As we pointed out in our appeal brief, Your Honor, we put side-by-side images on page 27 of our appeal brief of the 107 patent and the 530 patent to show that they look almost identical.

[00:12:43] Speaker 05:
They're both containerless rides.

[00:12:44] Speaker 05:
They both have water spilling over the sides.

[00:12:48] Speaker 05:
It's clear that I believe it's element 180 or 160 is a foam pad that's not intended to be curved substantially upwardly from an edge so that... Do you agree that most of the issues that you're asking us to review on the merits are reviewed for substantial evidence?

[00:13:06] Speaker 00:
I understand you have a claim construction argument, but I really see your appeal as really talking about whether the prior art

[00:13:15] Speaker 00:
includes the claim limitations, and that it's a substantial evidence case.

[00:13:20] Speaker 00:
Do you agree with that?

[00:13:21] Speaker 05:
I don't, Your Honor.

[00:13:22] Speaker 05:
I actually think that this is a claim construction issue, not an interpretation of the claim once construed.

[00:13:30] Speaker 05:
We will readily concede that if the court finds that the board's construction is appropriate,

[00:13:38] Speaker 05:
the patent's invalid.

[00:13:40] Speaker 05:
But we believe that the board got it wrong and its claim construction is at odds with well-established law that you can't construe a claim to invalidate the claim.

[00:13:49] Speaker 05:
And the construction that the board adopted reads on the prior art.

[00:13:52] Speaker 05:
It reads right on the 107 as we show on page 21 of our appeal brief.

[00:13:57] Speaker 05:
We put a side-by-side image and show that it reads right on

[00:14:01] Speaker 05:
the 107 patent, which was distinguished during prosecution.

[00:14:05] Speaker 00:
I understand your point.

[00:14:07] Speaker 00:
I apologize.

[00:14:07] Speaker 00:
I got my cases confused for a minute.

[00:14:10] Speaker 00:
I think what I meant to ask you was your case relies solely on claim construction.

[00:14:15] Speaker 00:
Is that correct?

[00:14:16] Speaker 00:
Predominantly, yes, Your Honor.

[00:14:17] Speaker 00:
So if we agreed with the board's claim construction, you do not challenge the anticipation determinations that the board made.

[00:14:27] Speaker 00:
Is that correct?

[00:14:28] Speaker 00:
It is, Your Honor.

[00:14:29] Speaker 00:
Thank you.

[00:14:30] Speaker 00:
One of the questions I had is what is the impact of this appeal on the related district court case?

[00:14:37] Speaker 05:
It's significant in two respects.

[00:14:39] Speaker 05:
One is the

[00:14:41] Speaker 05:
Judge Benitez in the underlying district court case dismissed, and from our perspective prematurely, dismissed the 016 patent case.

[00:14:53] Speaker 05:
And we have an appeal pending.

[00:14:55] Speaker 05:
And so to the extent that the court were to reverse, which is what we believe should happen on the claim construction issue, that case would be reinstated.

[00:15:03] Speaker 05:
And it would moot our second appeal.

[00:15:06] Speaker 05:
I'll reserve the remainder of my time.

[00:15:07] Speaker 03:
Right.

[00:15:08] Speaker 03:
We'll give you a couple of minutes for rebuttal.

[00:15:10] Speaker 03:
Thank you.

[00:15:13] Speaker 03:
Let's hear from the other side.

[00:15:14] Speaker 04:
Thank you, Your Honors, and may it please the Court.

[00:15:30] Speaker 04:
My name is Charan Brahma, and I'm representing the Appellee Pacific Service lines.

[00:15:34] Speaker 04:
I suppose we should start with the time bar jurisdictional issue.

[00:15:39] Speaker 04:
I think we're in complete agreement that

[00:15:43] Speaker 04:
The time bar should be interpreted as non-jurisdictional, or at least that analysis certainly was not done in click to call, as the court pointed out.

[00:15:51] Speaker 04:
And looking at the statute itself, there's nothing to suggest that

[00:15:55] Speaker 04:
The time bar in this particular instance rises above the high bar that would overcome the general rule that such time bars should be treated as non-jurisdictional.

[00:16:06] Speaker 03:
If an agency takes an action that is clearly outside of the statutory powers it was granted by Congress, then isn't it exercising powers outside of its jurisdiction?

[00:16:22] Speaker 04:
Well, there's a separate question of if the agency is acting in violation of constitutional due process or something of that sort.

[00:16:30] Speaker 03:
But that type of action is exactly what the statute for example, in an IPR, if the agency said in a final written decision, these claims are invalid under section 101.

[00:16:44] Speaker 03:
That would clearly be exceeding the statutory powers conferred by Congress in

[00:16:52] Speaker 03:
granting the agency the ability to undertake these IPR proceedings.

[00:16:56] Speaker 03:
Well, for example, Your Honor, if the board... That would be outside of its powers, i.e., outside its jurisdiction, to reach a 101 issue in an IPR.

[00:17:09] Speaker 04:
It would be outside of its powers.

[00:17:11] Speaker 04:
I wouldn't necessarily say that that would make that portion of the statute jurisdictional and to demonstrate that point I think one one wrinkle on the the situation that you described might be that if the p-tab had instituted the inner party's review on a 101 grounds for example But then did not rule on that grounds or did not carry that through to the final written decision then

[00:17:39] Speaker 04:
Theoretically or at least based on the language of the statute which seems clear That should be unappealable, and it wouldn't be a defect in the P tabs Institution decision that would then negate the final written decision and let me see if I understand if if in an IPR the patent board invalidates all the claims of a patent solely on section 101 and

[00:18:06] Speaker 03:
And then the patent owner appeals that adverse decision to us, but doesn't argue anything about this being ultraviaries or exceeding the powers granted by Congress for the board to do.

[00:18:23] Speaker 03:
You're saying that's a waived issue.

[00:18:26] Speaker 04:
I believe that's correct, Your Honor.

[00:18:28] Speaker 04:
That would be a waived issue.

[00:18:29] Speaker 04:
And that is perhaps a harsh result, but.

[00:18:31] Speaker 03:
That's something we could or would raise suespante as a court.

[00:18:36] Speaker 04:
No, and on that note I would point to this court's decision in Dixon So in Dixon this court considered a non-jurisdictional time bar.

[00:18:48] Speaker 04:
This is Dixon versus McDonald 815 f3rd 799 and address particularly that question for a non-jurisdictional time bar and

[00:18:57] Speaker 00:
Do you know what the subject matter was in that case?

[00:19:01] Speaker 00:
It doesn't sound like a patent case.

[00:19:02] Speaker 04:
It is not a patent case, Your Honor.

[00:19:05] Speaker 04:
I simply raise it because it also dealt with it.

[00:19:07] Speaker 04:
It's a Veterans Benefits case, right?

[00:19:08] Speaker 04:
Correct.

[00:19:09] Speaker 04:
But it dealt with a statute applying a time bar to claims raised in the Veterans Court.

[00:19:16] Speaker 04:
And in that decision, this court recognized the general rule that, generally speaking, the court doesn't have suesponte authority to

[00:19:26] Speaker 04:
exercise for a party a timeliness defends.

[00:19:30] Speaker 04:
that it should have raised itself, where the time bar is non-jurisdictional.

[00:19:34] Speaker 00:
Are you familiar with the Supreme Court cases that we were asking your opposing counsel about during?

[00:19:40] Speaker 04:
In fairness, I haven't read City of Arlington.

[00:19:43] Speaker 04:
But I would point this court to its own decision in Ford Motor Company versus US, 811 F3rd 1371, which deals with basically the same principle.

[00:19:55] Speaker 04:
The general rule is that a time bar statute like the one here

[00:19:58] Speaker 04:
is not viewed as jurisdictional unless the statutory language is very clear about making it jurisdictional.

[00:20:05] Speaker 04:
And it doesn't matter how harshly the time bar is worded.

[00:20:11] Speaker 04:
There are other Supreme Court cases, for example, US versus Kwai Fun Wong, 135 SCT 1625, which is a 2015 case, where the statute of limitations was worded as shall forever be barred.

[00:20:28] Speaker 04:
But even that kind of definitive pronouncement wasn't there.

[00:20:33] Speaker 01:
I assume that's a statute of limitations for a court.

[00:20:37] Speaker 01:
Is it?

[00:20:38] Speaker 01:
Generally speaking.

[00:20:39] Speaker 01:
I mean, I struggle a little bit with this because also in addition to the line of authority from the Supreme Court that time bars for filing in court are generally to be considered non-jurisdictional, there's another line of cases that suggests

[00:20:54] Speaker 01:
that talking about an agency's authority in that traditional jurisdictional sense isn't quite the right way to go about this.

[00:21:02] Speaker 01:
Did you find any precedent that talks about how time bars are to be considered in an agency context?

[00:21:11] Speaker 01:
Because usually when we're talking about an agency exceeding its authority, whether it's ultra-virus or not, and certainly ultra-virus in the sense that the action is void av initio from the start.

[00:21:25] Speaker 04:
I will admit that I did not find one.

[00:21:27] Speaker 04:
That doesn't mean that there isn't one out there, given that this issue was raised relatively late in the appeal process.

[00:21:34] Speaker 04:
I would note that in other circumstances, for example, in Sikorsky versus US, that statutory time bar related to a government agency raising claims against a government contractor and the time in which it could do that.

[00:21:53] Speaker 04:
I think one wrinkle here is that while this is a bar on an agency action of instituting the inner party's review, the portion of the agency that is being dealt with is akin to a lower court in that it is conducting a

[00:22:11] Speaker 04:
and inter-parties judicial process.

[00:22:15] Speaker 01:
Do you find any relevance in the fact that the statute specifically, or maybe not the statute, I'm going to get this wrong, but either the statute or the PTAB's own regulations allow the PTAB to join a time-barred party

[00:22:31] Speaker 01:
to a proceeding that has been properly instituted by a party that's not time barred.

[00:22:37] Speaker 01:
It seems to me that if it were a jurisdictional rule, the PTAB wouldn't have the authority to exercise any arguments from that time bar party at all, but yet they have a rule that allows them to do so.

[00:22:53] Speaker 04:
I think statutory language directly accepts that type of situation from the normal time bar.

[00:23:00] Speaker 04:
Ordinarily, I would say, yes, if the time bar was cut and dry, then there would be nothing to join.

[00:23:07] Speaker 04:
But the statute in particular talks about a time barred party who seeks to join a non-time barred party.

[00:23:14] Speaker 04:
being accepted from the normal time bar.

[00:23:17] Speaker 01:
Well, doesn't that suggest Congress's intent that this isn't to be considered a jurisdictional rule?

[00:23:22] Speaker 04:
I think that's absolutely right.

[00:23:24] Speaker 04:
And it is a more nuanced decision than simply looking at what the date of filing or service of the complaint was and the date of filing of the IPR.

[00:23:36] Speaker 04:
So there is an actual determination to be made there.

[00:23:39] Speaker 04:
So I agree that that does suggest that it is not jurisdictional and That there are that there is a determination to be made by the board as part of the institution decision now that goes to the the underlying Wi-Fi one decision And the language the clarity of the language of that unappeal ability statutory language

[00:24:08] Speaker 04:
So given that the statute has not been found to be jurisdictional, and indeed, if the statutory language is analyzed, it should be found to be non-jurisdictional, the timeliness defense was waived by petitioner surf waves.

[00:24:25] Speaker 04:
So if those are the only questions on that issue, I'll move to the waiver and substantive issues.

[00:24:34] Speaker 04:
And I think the Court, hidden on the head, most of these issues are

[00:24:38] Speaker 04:
claim construction issues.

[00:24:39] Speaker 04:
And the most important thing to note is that no claim construction was asked for below by surf waves.

[00:24:47] Speaker 00:
That the board, though, interpreted the claims, even if nobody asked for an interpretation, doesn't that mean that the board's interpretation is subject to appellate review?

[00:24:59] Speaker 00:
It doesn't really matter whether it was raised or not, right?

[00:25:03] Speaker 04:
Certainly, the board did conduct claim construction two times at the decision stage and at the final written decision stage.

[00:25:10] Speaker 04:
There are two different claim constructions in those decisions.

[00:25:15] Speaker 04:
And the court certainly can review those claim constructions.

[00:25:19] Speaker 04:
However, where SurfWaves is asking for new constructions or new terms to be construed, those arguments are waived.

[00:25:27] Speaker 04:
And that's relatively clear from Interactive Gift Express, which even SurfWaves cites too.

[00:25:33] Speaker 03:
Well, SurfWaves just told us that they argued about the prosecution history here for this patent as informing a particular understanding of these claims.

[00:25:46] Speaker 03:
And he was talking about the difference between a containerless surf ride versus, I don't know, I guess a containered surf ride.

[00:25:57] Speaker 03:
Right.

[00:25:58] Speaker 03:
And so therefore, the board is mistakenly relying on prior art that, if you've lined it up against the prior art that was distinguished during the prosecution history, necessarily has to exclude the asserted prior art here.

[00:26:15] Speaker 04:
Two things about that, Your Honor.

[00:26:16] Speaker 04:
First, the argument that the board's construction was inconsistent with the prosecution history wasn't raised, at least as far as we can tell, until the reply brief in this appeal when we raised the waiver argument.

[00:26:31] Speaker 04:
But the second thing is, to the extent that that argument is raised in the reply brief,

[00:26:35] Speaker 04:
The side-by-side comparison they're doing is inaccurate.

[00:26:40] Speaker 04:
It is an inaccurate portrayal of what the argument was during the prosecution history.

[00:26:45] Speaker 04:
In the prosecution history, and I'll turn to the 107 patent, the portion of the 107 patent that was being considered by the examiner was figures 4A to 4C.

[00:27:01] Speaker 04:
Whereas the figure that they are relying on is figures 18 a to 18 B. I believe You have a J a site yeah, yes the J a site for the patent as a whole it starts on appendix 462 figures for a to 4c our appendix 468 and figures 18 a to 18 B our appendix 487

[00:27:31] Speaker 04:
The figures that the examiner was looking at show a containerless ride that has down sloping sidewalls and obviously the distinction of adding language that says that the claimed invention of the 016 patent has sidewalls that are curved substantially upward, well that would distinguish from downward sloping sidewalls.

[00:27:56] Speaker 04:
And that was the point that was being made in the prosecution history.

[00:28:01] Speaker 04:
Nothing about traversability.

[00:28:03] Speaker 04:
And in fact, if you look at figure 4C, for example, that shows a rider traversing the downward sloping sidewall.

[00:28:12] Speaker 04:
So traversability itself is not the distinction that was being made during prosecution.

[00:28:18] Speaker 04:
It was whether the sidewall was upward or downward.

[00:28:21] Speaker 00:
You're looking specifically for the prosecution history you're looking at page 424 director.

[00:28:25] Speaker 04:
I believe that is correct That's correct your honor and so the

[00:28:50] Speaker 04:
The crux of the argument there had nothing to do with traversability and to suggest that now there is some mapping of the claims onto the 107 patent.

[00:29:00] Speaker 04:
A, that there is no evidence to make that mapping.

[00:29:04] Speaker 04:
So for example, their expert declarant never suggested that under the board's claim construction or any other claim construction, the claims were now being read on to the 107 patent.

[00:29:18] Speaker 04:
So all of that is really now attorney argument.

[00:29:24] Speaker 04:
And again, it wasn't made before the PTAB.

[00:29:29] Speaker 04:
So they didn't get a chance to respond to it, nor did we during the IPR proceeding itself.

[00:29:34] Speaker 04:
So it shouldn't be considered by this court.

[00:29:41] Speaker 04:
I think those are the only arguments I have.

[00:29:44] Speaker 04:
If there are any other questions, I'm obviously here to answer them.

[00:29:50] Speaker 03:
Thank you, Your Honor.

[00:30:04] Speaker 03:
You have two minutes.

[00:30:06] Speaker 05:
Thank you, Your Honor.

[00:30:09] Speaker 05:
First, let me address the question I'm committed to get you an answer for.

[00:30:12] Speaker 05:
In our reply brief, we cited

[00:30:16] Speaker 05:
the Lemelson case that holds that the prosecution history is such a fundamental component of claim construction that even if there's a dispute as to whether a party has raised any claim construction arguments based upon the prosecution history, the court should consider such arguments in its appeal.

[00:30:31] Speaker 05:
We also identified the 107 not by name, but generally referring to the prosecution history in the claim construction briefing that was filed in the district court case.

[00:30:42] Speaker 03:
With respect.

[00:30:42] Speaker 03:
What about in your patent owner response in this IPR?

[00:30:47] Speaker 05:
we reference generally the prosecution history, but not specifically the 107.

[00:30:52] Speaker 03:
So this particular argument you're making now about what happened during the prosecution history of the patent in terms of distinguishing the 107 patent, and thereby that informing how we should understand the claims here, you're saying you didn't actually make that argument in your patent owner response in this IPR.

[00:31:15] Speaker 05:
I am saying... Is that fair to say?

[00:31:18] Speaker 05:
I don't think we specifically call out the 107 in our patent owner's response, Your Honor, but we do specifically reference the essence of the invention being traversability and the language of the prosecution history that included the addition to overcome and get the claim allowed.

[00:31:36] Speaker 05:
But I don't think we specifically call out the 107, no.

[00:31:40] Speaker 00:
Don't you talk about the language that was added in that prosecution history to get the claim allowed.

[00:31:45] Speaker 00:
You're talking about substantially upward, right?

[00:31:48] Speaker 00:
Correct.

[00:31:48] Speaker 00:
Nothing having to do with traversability, right?

[00:31:51] Speaker 05:
Correct.

[00:31:52] Speaker 05:
But we do, in the patent owner's response, specifically say that traversability is the essence of the invention that's contained within the disclosure.

[00:32:01] Speaker 00:
And in order for the... But how would the board know that you were referencing that when you talk about that?

[00:32:09] Speaker 00:
Well, anyway, it doesn't matter.

[00:32:10] Speaker 00:
But I just don't know how the board was going to know that you were relying on that prosecution history.

[00:32:14] Speaker 00:
And let alone the prosecution history,

[00:32:17] Speaker 00:
the claim language, and let alone a particular statement on the page of the prosecution history.

[00:32:26] Speaker 05:
The prosecution history was of record before the board, and they were on notice.

[00:32:31] Speaker 05:
We also made all of these arguments in the district court case, and those briefs were included by Pacific Surf Designs in its petition to institute the IPR.

[00:32:39] Speaker 05:
And so they were also of record.

[00:32:41] Speaker 03:
And you're out of time.

[00:32:42] Speaker 03:
Do you have a final thought quickly?

[00:32:44] Speaker 03:
That's it.

[00:32:44] Speaker 03:
Thank you.

[00:32:44] Speaker 03:
OK, thank you.