[00:00:00] Speaker 00:
May it please the court, Stephen Kinnaird for Renetics.

[00:00:04] Speaker 00:
I begin with four points regarding statutory estoppel against Apple.

[00:00:09] Speaker 00:
First, in Fairchild, this court held that estoppel arises from its final validity decision, even if there is a remand and no final judgment in the action as a whole.

[00:00:22] Speaker 00:
Without uttering the word, Apple effectively asked this court to overrule Fairchild

[00:00:28] Speaker 00:
because it did not explicitly consider the possibility of future Supreme Court review.

[00:00:34] Speaker 04:
Can I just interrupt you for a second?

[00:00:36] Speaker 04:
I'm sorry to interrupt you.

[00:00:38] Speaker 04:
What is the import of your argument in terms of the practical matters of this case?

[00:00:42] Speaker 04:
Because there's a Cisco re-exam too.

[00:00:44] Speaker 04:
So even if we were to agree with you on the finality issue, we're still, as my understanding is, we're still left with invalidity of the 211 path.

[00:00:57] Speaker 04:
claims in the 2011 patent, but it takes away the stuff in the 504 patent, the claims in the 504?

[00:01:04] Speaker 00:
The 504, and then it would take, it would affect, there are certain unasserted claims that would have to go back for a remand, but the estoppel in the 504 Cisco re-exam does not involve the 504.

[00:01:17] Speaker 04:
And then, depending on how this court resolves the... Cisco was just on the 2011, but the Cisco remains, even if we were to agree with you on the finale.

[00:01:27] Speaker 00:
So what I was about to say is that what Apple asked for is the province of an en banc court.

[00:01:35] Speaker 00:
And indeed, in Procopio, this court recently granted rehearing en banc to revisit a statutory interpretation based on arguments.

[00:01:43] Speaker 04:
You're saying Fairchild maps, and so we could only.

[00:01:47] Speaker 04:
Yes.

[00:01:47] Speaker 04:
We would have.

[00:01:49] Speaker 00:
Yes, that's right.

[00:01:50] Speaker 04:
Fairchild says.

[00:01:52] Speaker 04:
And then the other side, I think, as I recall, argues that this is a cousin to Fresenius, and therefore, Fresenius which preceded Fairchild ought to govern.

[00:02:01] Speaker 00:
Actually, I think they rely on more, they don't claim a conflict with Fresenius.

[00:02:08] Speaker 00:
They're just trying to adopt the rule of Fresenius.

[00:02:10] Speaker 00:
They're claiming a conflict with Betcher.

[00:02:14] Speaker 00:
And there is no conflict.

[00:02:15] Speaker 00:
And I would also point out, this court, my second point was, Fairchild states the correct rule.

[00:02:21] Speaker 00:
Uh, this, uh, an appeal to this court terminates when it issues the mandate because that is what, uh, returns jurisdiction to the district court.

[00:02:31] Speaker 00:
And indeed the PTO's regulation on PTAB appeals says an appeal to the U S court of appeals for the federal circuit, whether from the decision of the board or a judgment in the civil action is terminated when the mandate is issued by this court regulation 1.197.

[00:02:49] Speaker 00:
There is no conflict with Becher as to when an appeal terminates.

[00:02:54] Speaker 00:
So even though Becher did not address Supreme Court review, Becher held that a decision under 315 was final when an appeal terminates under 316.

[00:03:06] Speaker 00:
And at 661 F3, 645, it embraced the rule that an appeal terminates when the court issues its mandate.

[00:03:14] Speaker 00:
And there's a PTO regulation on place there, too.

[00:03:18] Speaker 00:
It's 1979.

[00:03:20] Speaker 00:
B, appeal terminates with the mandate.

[00:03:22] Speaker 00:
So no conflict with Betcher.

[00:03:24] Speaker 04:
And my final point was- Back to Fairchild, though.

[00:03:27] Speaker 04:
Even though I assume we've all researched it, we know Fairchild was the same circumstance where we upheld some of it and then sent it back to the district court.

[00:03:37] Speaker 04:
But the court itself never addressed the second opportunity for a cert petition.

[00:03:43] Speaker 00:
that's right but that that is what we do with that i think the other side and i'm not sure that uh... that argument was never made to the court so that court never had to address it i think they haven't gone back to the recent to see whether or not that's correct they didn't address the future possibility but that that requires on bond review as in pro copia you the rule is that you can have a final decision even with no final judgment apple asked for the contrary rule that there has to be a final judgment

[00:04:13] Speaker 00:
in order for there to be finality.

[00:04:15] Speaker 00:
So it doesn't matter whether all the arguments were made.

[00:04:17] Speaker 00:
That would upset stare decisis everywhere.

[00:04:20] Speaker 03:
But in Fairchild, the remand was not related to the patent.

[00:04:26] Speaker 03:
And here, we do have issues that are related to the patent.

[00:04:31] Speaker 00:
But that's not the question, Your Honor.

[00:04:33] Speaker 03:
The question is whether the reason why the court in Fairchild found finality is that all the patent issues had been resolved.

[00:04:40] Speaker 00:
Right.

[00:04:40] Speaker 00:
But the question is,

[00:04:42] Speaker 00:
is the question of patent validity file it doesn't matter what what the other issues on remand with it there infringement of the same patent or they concern a different patent that's just difference in fact but the rule is is the question uh... the determination of patent validity final and that's true in both cases so really fair child is on all four and patentability

[00:05:09] Speaker 05:
So the one thing that caused me pause is as I think about collateral estoppel, race judicata, a million different issues, whether there's finality usually ends after mandatory appeals review.

[00:05:22] Speaker 05:
I guess while maybe I agree with you that Fairchild is on all fours because Fairchild expressly says any unresolved issues of remand would have nothing to do, no effect on the now final 972 patent validity determination and that's true here too.

[00:05:39] Speaker 05:
I guess I'm not 100% certain that time for certiorari has to be resolved in any instance.

[00:05:45] Speaker 05:
I mean, not just under the very speculative Mercer rule, but at all.

[00:05:48] Speaker 05:
Because when I think about similar doctrines, whether it's collateral estoppel, race judicata, any kind of doctrine, finality is achieved when the time for mandatory appeals, meaning non-discretionary appeals, are resolved.

[00:06:02] Speaker 05:
So Fairchild may have gone further than even the law requires by saying the time for certiorari in that one instance has required.

[00:06:08] Speaker 05:
I guess I'm not, maybe I don't have the authority to change Fairchild, you know, at all, and the time for certiorari expired just like it has here, but I'm not sure that's even exactly the right rule on a clean slate because when I think of analogies to all kinds of other areas of the law, finality is achieved after the appellate court resolution.

[00:06:30] Speaker 00:
and you don't have to wait for a very speculative sir she are a time period is that right absolutely right and i think the conclusion is a rule of practical finality it does not require finality in the action as a whole so even on that ground a fair child except their child says you have to you know that it was relevant whether or not the petition for cert i don't even know that that's

[00:06:53] Speaker 00:
necessarily has to be part of this case is on all fours with fairchild but fairchild may have even gone for you know i needed to but we sure don't need to move it all the way to the mercer absolutely and congress did not intend but the congress knew that patent validity decision they almost invariably their facts specific the patent specific almost never worthy of supreme court review

[00:07:14] Speaker 00:
and they did not want to you know they did not want to encourage parties like apple to clutter the supreme court docket for those petitions just to run out the stop o'clock uh... i'm not sure that they wouldn't take these cases uh... unpatentability i'd begin uh... with the cisco epr and i'd like to address to quick procedural points before turning to the substance first at a minimum it's not it's amazing

[00:07:41] Speaker 00:
uh... i'm sorry i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i i

[00:08:11] Speaker 00:
The DNS equivalent in Lendenman, which is the CDS, does not use RPC.

[00:08:18] Speaker 00:
And the board did not have to resolve that in the independent claims, but it cannot declare 47, which is one of the underlying claims in the district judgment, unpatentable unless it resolves that point.

[00:08:31] Speaker 04:
Did the below, did Vernetics argue the claim 47 separately?

[00:08:35] Speaker 00:
Yes, it did.

[00:08:36] Speaker 00:
And when separately means you put it in a separate section, the regulation is quite clear in that.

[00:08:41] Speaker 00:
and it's just goes flat wrong that there's no separate if that's separate uh... section of our appeal brief is ineffective simply because there's overlap with other arguments well the board ended up i think on this and it's eighty eight the book it says that it does not provide additional arguments in support of claim forty seven was that really wrong uh... well there there was a commonality of arguments but they didn't address all the arguments and any one of those arguments would have

[00:09:10] Speaker 00:
preserved 47.

[00:09:11] Speaker 00:
So they had to address claim 47.

[00:09:14] Speaker 00:
So what you do in the board, even if you have overlapping arguments, you can't group the claims together and then say, well, you've got to address 47.

[00:09:22] Speaker 00:
But if you isolate 47, they have to address the arguments.

[00:09:26] Speaker 00:
And that's what they didn't do.

[00:09:28] Speaker 00:
The second is that Cisco's argument that vernetics waived all of its Lindenman claims because it did not appeal claim 48 is contrived.

[00:09:40] Speaker 00:
uh... the examiner never relied on that portion of lendman which is page twenty eight appendix nine five seven four for any of the other claims indeed cisco and one one six one one side i thought the board did respond to the verdicts arguments about a c l's by explaining lenderman teaches cd essence security services are integrated uh... and when the firm on that alternative finding i don't see why they needed to address our pcs after that no no right now that this is a different issue that they have a waiver argument in their brief

[00:10:09] Speaker 00:
We didn't appeal 48, which is an unasserted claim.

[00:10:12] Speaker 00:
And that has a different kind of indication.

[00:10:14] Speaker 00:
It's actually an indication performed by the client software module, not the DNSS, that they couldn't have raised it.

[00:10:20] Speaker 00:
My only point is, because it was never set forth as a ground of rejection for the independent claims, the fact that we didn't appeal it doesn't prevent us from getting to the merits.

[00:10:31] Speaker 00:
So I'd like to turn now to the fact that Lendenman does not disclose the claimed indication.

[00:10:39] Speaker 00:
So the essence of the invention here is that the DNS system automates secure communications links in processing network address queries.

[00:10:51] Speaker 05:
And so the key limitation... Just to be clear, are you now... I mean, there's so many issues here.

[00:10:56] Speaker 00:
Yeah.

[00:10:56] Speaker 05:
Are you now turning to the 504 patent claims 136.60 and 211.136.60, the indication limitations contained therein?

[00:11:04] Speaker 05:
Is that what you're talking about?

[00:11:05] Speaker 00:
No, it's the 211 and it's the London in reference.

[00:11:09] Speaker 00:
And so it's the two basis for an indication is return of a network address and then the ACL issue.

[00:11:19] Speaker 00:
And so I wanted to address both of those.

[00:11:21] Speaker 00:
So you can see from the specification, for example, an appendix 248, which is figure 34, step 3410, that describes an indication.

[00:11:33] Speaker 00:
So you see the secure server accesses the gatekeeper, gets the parameter,

[00:11:39] Speaker 00:
for the secure communications link and then communicates it to the client software module for use in establishing a link.

[00:11:48] Speaker 00:
And what you have in Lendenman is just purely conventional DNS.

[00:11:53] Speaker 00:
So in Lendenman, they say that just returning a network address for a server that might in the subsequently

[00:12:05] Speaker 05:
be this uh... part of a secure remote procedure i thought i understood cisco to argue in this appeal that you are not challenging the board separate finding that linderman's domain names with security specific names disclosed the claimed indication and i thought i understood this to be a sufficient reason to affirm and i thought that was the point that that's claim forty eight that's not a problem it's based on a part of lindenman page twenty eight that was never asserted uh... i know it's very confusing but

[00:12:33] Speaker 00:
was never asserted for any of the other claims.

[00:12:36] Speaker 00:
And it wasn't even raised by Cisco for the other claims.

[00:12:39] Speaker 00:
So it's not a bar to considering.

[00:12:41] Speaker 00:
So this is page 21 of Lendenman.

[00:12:44] Speaker 00:
It's just the basic return of a network address that could be part in the future of the subsequent communication.

[00:12:51] Speaker 00:
We think those kind of conventional DNS functions are disclaimed.

[00:12:54] Speaker 00:
But even if you don't find disclaimer, one skilled in the art would not find that to be the kind of indication.

[00:13:00] Speaker 00:
It's not an indication.

[00:13:01] Speaker 00:
that the DNSS itself supports establishing the secure link.

[00:13:07] Speaker 00:
And now I turn to the ACL, which is even more, I think, fragile of a holding.

[00:13:14] Speaker 00:
And the ACL is in Lendenman, it's on page 34, 9580, and it's worth looking at that, because all the ACL does is determine whether a particular user is authorized to receive the name

[00:13:29] Speaker 00:
uh... there are the address for the name of the queries and then to perform some cds functions just being authorized to receive a name says nothing about whether the that there is indeed secure communications much less that the dns s itself supports establishing the link uh... so i think that that that the board has to uh... reverse that i'm proving out that the two glaring errors and i'm getting

[00:13:57] Speaker 00:
for the two glaring errors in Proveno is that the authentication claims require the DNSS actually to authenticate the query.

[00:14:06] Speaker 00:
It's not enough to have an authorization somewhere in the sequence of events that includes queries.

[00:14:12] Speaker 00:
And the board also made no findings that required.

[00:14:17] Speaker 00:
It's the de novo finder of fact here, even though it's an established record.

[00:14:22] Speaker 00:
Make no findings as to what constitutes the DNSS

[00:14:26] Speaker 00:
What's the basis for it?

[00:14:27] Speaker 00:
Which of the four alternative indications are supported by the record?

[00:14:31] Speaker 00:
It's just not there.

[00:14:32] Speaker 04:
Is that authentication issue dealing with exclusively Apple's case, Apple's re-exam, and not Cisco's?

[00:14:41] Speaker 00:
The authentication of the query is a Proveno issue for Apple.

[00:14:45] Speaker 00:
In 47, they didn't even reach.

[00:14:47] Speaker 00:
The only authentication claim there is the one that I mentioned at the outset where they didn't even reach it, and there needs to be a remand.

[00:14:54] Speaker 00:
But the authentication of the query issue is an Apple issue.

[00:14:57] Speaker 00:
So I'll reserve more time for rebuttal.

[00:14:59] Speaker 04:
You've used your rebuttal time, but we'll restore some of it.

[00:15:03] Speaker 04:
Now, there's a division of time here.

[00:15:06] Speaker 02:
There is, Your Honor.

[00:15:07] Speaker 02:
13 minutes for me and Mr. Foster, who do the Cisco re-exams.

[00:15:11] Speaker 02:
It's going to take two minutes of our time.

[00:15:14] Speaker 02:
OK.

[00:15:14] Speaker 02:
And I'll stay closely to that.

[00:15:16] Speaker 02:
I may please record.

[00:15:17] Speaker 02:
My name is Bill Layen.

[00:15:18] Speaker 02:
Together with my colleague, Brittany Amati, I represent Apple.

[00:15:22] Speaker 02:
Let me turn immediately to the Fairchild issue and part of the colloquy between my colleague and Judge Moore because, respectfully, traditional claim preclusion and issue preclusion principles are different than what was described to you.

[00:15:36] Speaker 02:
Tradition claim preclusion and issue preclusion principles, the common law principles, attach at the time of a final judgment.

[00:15:45] Speaker 02:
So in a district court, if it reaches a decision,

[00:15:48] Speaker 02:
traditional issue preclusion and claim preclusion would attach at that time, even with appeals, possible, whether to a court of appeals or beyond.

[00:15:58] Speaker 02:
That's why the legislative history of this statute and the interpretation of this statute in Vettcher is so important.

[00:16:06] Speaker 02:
And Fairchild actually recognizes what Vettcher's holding is.

[00:16:11] Speaker 05:
Well, so if that were true, then why

[00:16:14] Speaker 05:
shouldn't the statute be read consistent with that common law principle?

[00:16:18] Speaker 05:
You know, Mr. Lee, you know as well as I do, boy, this court gets itself in trouble whenever we create patent-specific rules that the statute does not demand of us.

[00:16:28] Speaker 05:
When there's an issue in our law that overlays nicely with issues in other areas of law and where we reach a different result from those, we tend to get in trouble with the Supreme Court.

[00:16:40] Speaker 05:
So if we're not consistent

[00:16:42] Speaker 05:
in our understanding of preclusion issues.

[00:16:46] Speaker 05:
If we're inconsistent with mainstream law and preclusion, isn't that a problem?

[00:16:51] Speaker 02:
Absolutely not, Your Honor, because just as Fresenius recognizes, Congress can mandate different preclusive principles.

[00:16:58] Speaker 05:
Correct, but what in Congress's Section 317B mandated something different.

[00:17:03] Speaker 05:
They just said once a final decision has been entered against a party in a civil action,

[00:17:10] Speaker 05:
What about that language suggests to you, or should suggest to me, that Congress intended this preclusion to require more process, namely full appellate vetting and, in your view, full Supreme Court certiari in every possible way

[00:17:31] Speaker 05:
to have been exhausted before it becomes a thus final decision.

[00:17:35] Speaker 02:
Your Honor, I haven't answered that question.

[00:17:36] Speaker 02:
And it actually has several different levels.

[00:17:39] Speaker 02:
But let me start with this.

[00:17:40] Speaker 05:
I'm sure it has three levels, if I know you well.

[00:17:41] Speaker 05:
Go ahead.

[00:17:42] Speaker 02:
I'm going to make it three levels for purposes of this morning.

[00:17:46] Speaker 02:
The first is this.

[00:17:47] Speaker 02:
There is a legislative history to this statute.

[00:17:50] Speaker 02:
And the legislative history explicitly says, as we cite to you in our brief, that the preclusion principles of Section 317B

[00:17:59] Speaker 02:
do not apply until all appeals have been terminated.

[00:18:02] Speaker 02:
That's a quote from the legislative history.

[00:18:05] Speaker 02:
Building upon that legislative history.

[00:18:07] Speaker 05:
What is that legislative history?

[00:18:08] Speaker 05:
Please enlighten me on the exact source of that statement.

[00:18:13] Speaker 02:
Let me see if I can give you actually the precise appendix that I can give to Your Honor.

[00:18:18] Speaker 05:
No, what is it?

[00:18:19] Speaker 05:
Is it a Senate report?

[00:18:21] Speaker 02:
I believe so, yes.

[00:18:22] Speaker 02:
And let me see if I can pull it up very quickly.

[00:18:35] Speaker 02:
Let me just get you the precise page.

[00:18:36] Speaker 02:
And let me finish the thought as I get the precise page.

[00:18:40] Speaker 04:
This is it from 32 of your brief?

[00:18:42] Speaker 02:
Yes.

[00:18:43] Speaker 02:
And Your Honor, what happened here is this.

[00:18:45] Speaker 02:
And I think this is the multiple levels to Judge Moore's question.

[00:18:48] Speaker 02:
The legislative history says this is a statutory preclusion regime.

[00:18:54] Speaker 02:
It only applies when all appeals have been terminated.

[00:18:57] Speaker 02:
The issue of what 317 means arises in Vettcher.

[00:19:01] Speaker 02:
Vettcher interprets 317B consistent

[00:19:04] Speaker 02:
with a legislative history to say that it's only after all appeals have been terminated.

[00:19:11] Speaker 05:
Appeals.

[00:19:11] Speaker 05:
And it says nothing about certiari.

[00:19:13] Speaker 02:
Well, Your Honor, search right is an appeal.

[00:19:15] Speaker 02:
Search right is an appeal.

[00:19:16] Speaker 02:
And then this is.

[00:19:17] Speaker 05:
It's not an appeal is of rights.

[00:19:18] Speaker 05:
So there's a basis for differentiating.

[00:19:20] Speaker 05:
Certainly the PTO thinks differently, right?

[00:19:23] Speaker 05:
I mean, we have Apple arguing to us, in some instances, the PTO should get deference.

[00:19:28] Speaker 05:
And here in the MPEP, they

[00:19:31] Speaker 05:
interpret this as limited to time for a Federal Circuit decision, and they expressly do not recognize certiorari.

[00:19:38] Speaker 05:
So does the PTO get deference in some instances, but not others?

[00:19:41] Speaker 02:
Actually, Your Honor, respectfully, it's the opposite.

[00:19:45] Speaker 02:
The PTO has a set of regulations that actually recognize specifically under 317b that certiorari or appeal from the Supreme Court is one of the things that could keep the decision from becoming final.

[00:19:58] Speaker 02:
That's MPP.

[00:19:58] Speaker 05:
No, the grant of certiorari or the time period?

[00:20:01] Speaker 02:
Yes.

[00:20:02] Speaker 02:
MPEP 2686.04, Roman normal 5A, refers to judicial decisions as being not final so long as any time for appeal remains from a district court or the Supreme Court or the Federal Court.

[00:20:16] Speaker 02:
I see.

[00:20:16] Speaker 02:
All right.

[00:20:16] Speaker 02:
Okay.

[00:20:16] Speaker 05:
I stand totally corrected.

[00:20:17] Speaker 05:
I stand completely corrected.

[00:20:18] Speaker 05:
And so.

[00:20:19] Speaker 05:
I get it.

[00:20:19] Speaker 05:
You're right.

[00:20:19] Speaker 05:
100 percent.

[00:20:20] Speaker 02:
So if, Your Honor, if I go back.

[00:20:22] Speaker 02:
PTO is consistent.

[00:20:23] Speaker 02:
The PTO has been consistent.

[00:20:24] Speaker 02:
And that actually would be the last of my three layers.

[00:20:26] Speaker 02:
But really,

[00:20:27] Speaker 02:
What we have here is we have the statute.

[00:20:29] Speaker 02:
We have the legislative history that basically... But you still didn't tell me what is this legislative history.

[00:20:34] Speaker 05:
I still don't have an answer for you on that.

[00:20:36] Speaker 02:
It's the congressional record, Your Honor.

[00:20:39] Speaker 05:
Yeah, there's a lot of stuff in the congressional record.

[00:20:41] Speaker 02:
There is and it's it's a portion at 20 29.

[00:20:45] Speaker 05:
That doesn't tell me what it is Doesn't look to me like a Senate report.

[00:20:48] Speaker 05:
Is it a hearing?

[00:20:49] Speaker 05:
It's just it's just you know, I don't have the precise But you know legislative history has various levels of credibility that ought to be attached to it right the Senate report or house report is one thing

[00:21:00] Speaker 05:
and a random statement like you could go testify before congress right and make a statement in it and it would be in the congressional record so is this bill lee on patents i mean what is the statement that you're telling me i should give isn't it senator kyle's statement i i believe it is your honor i just don't have it in the brain there was a hearing so a hearing statement by an individual senator would you agree with me that that is entitled to less weight for example even among those who might be attending

[00:21:23] Speaker 05:
to give credit to legislative history less weight than, say, a Senate report?

[00:21:27] Speaker 02:
Actually, Your Honor, what I would suggest to you is that... No, no.

[00:21:29] Speaker 05:
I asked you a simple question.

[00:21:30] Speaker 05:
Would you agree with me that a statement by a single senator in a hearing is entitled to less weight by a court than a Senate report, for example?

[00:21:36] Speaker 02:
The answer to Your Honor's question is yes.

[00:21:38] Speaker 02:
And then the additional answer is this.

[00:21:40] Speaker 02:
When you have Senator Kyl's statement that it's only applicable after all appeals have been terminated, when you have the panel of this Court in Becher say it's only after all appeals have been terminated,

[00:21:52] Speaker 02:
you have this Court in Function Media and Fairchild saying that the holding of Beshmer is that the finality only applies when all appeals have been terminated.

[00:22:04] Speaker 02:
You have a consistent, entirely consistent interpretation statute.

[00:22:09] Speaker 02:
And then you have, on top of that, the third layer is the NPEP, which specifically, as we talked about, refers to appeals from the Federal Circuit.

[00:22:18] Speaker 02:
and also motions for reconsideration to the Federal Circuit.

[00:22:21] Speaker 05:
But this MRSA rule that you would like to hang so much on would have applied equally in Fairchild, would it not?

[00:22:25] Speaker 02:
No, Your Honor, because in Fairchild, there are two important distinctions, one of which Judge Rainier mentioned, which is the question of what was on remand.

[00:22:33] Speaker 02:
But what happened in Fairchild is the parties explicitly represented to the motion panel that the time for search for RRI had run.

[00:22:41] Speaker 02:
There was a letter briefed.

[00:22:43] Speaker 02:
There was a letter filed with the court.

[00:22:45] Speaker 02:
in which the parties represented that.

[00:22:47] Speaker 04:
Yeah, but that representation had to do with the first appeal, not the remand.

[00:22:52] Speaker 04:
That's right.

[00:22:53] Speaker 04:
Yeah.

[00:22:53] Speaker 04:
But don't you assume that we understood that that's what they were talking about, just the period for certiorari on the first appeal?

[00:23:01] Speaker 02:
Yeah.

[00:23:01] Speaker 02:
I think, Your Honor, reading the letter fairly, that's what they were talking about, that no one raised the question of you still could obtain certiorari or a petition for certiorari after the second appeal.

[00:23:12] Speaker 02:
And that kept it from being final.

[00:23:13] Speaker 04:
Well, can we say no one?

[00:23:14] Speaker 04:
One of the parties would have then raised the argument.

[00:23:18] Speaker 04:
But can't we safely assume that we could have figured that out too?

[00:23:23] Speaker 02:
Well, Your Honor, you could have.

[00:23:25] Speaker 02:
But also, you know, this Court, in many cases, takes the issues that are presented to them, takes the representations that are made to them, and decides the issue.

[00:23:34] Speaker 04:
So you think that we as a panel could fairly differentiate fear child

[00:23:40] Speaker 04:
because the second period for cert, which also existed potentially in Fairchild, precisely as it does here, has not run that we could get away with the panel with limiting Fairchild?

[00:23:53] Speaker 02:
Yeah, Your Honor, the answer to your question is yes.

[00:23:57] Speaker 02:
And the reason is it's the same thing you did in the national cable television case about 20 years ago, which is there is a distinction between the court having decided a legal principle that basically decides a broad set of issues

[00:24:10] Speaker 02:
at a court having decided this specific issue that's before the court today.

[00:24:15] Speaker 02:
You did not, you were not asked to decide that second issue.

[00:24:19] Speaker 02:
And in the discussion I've had with Judge Moore, the premise of 317B is when you have two competing proceedings, and Fresenius recognizes that you can have two competing proceedings, before one can trump the other, before one can be disposed of the other, it has to be over, and it's not over until it's over.

[00:24:40] Speaker 02:
And that's what 317B is talking about.

[00:24:42] Speaker 04:
So if this case goes back, it takes three years, which indeed it has, to come back up to us.

[00:24:48] Speaker 04:
Let's assume it settles in the interim.

[00:24:50] Speaker 04:
So does that mean that the 317B never kicks in because there's been a settlement of that case before the second cert petition could have been filed?

[00:24:59] Speaker 02:
Your Honor, the answer is yes.

[00:25:01] Speaker 02:
And in the same way that if the case were remanded, when the first case was remanded after the first opinion by this court in 2014,

[00:25:08] Speaker 02:
As it was in the district court getting ready, it was retried, and it was retried again.

[00:25:13] Speaker 02:
And if it's settled at that point in time, would the decision not have been final?

[00:25:16] Speaker 02:
The answer is yes.

[00:25:18] Speaker 02:
And the first principle behind all of this is it's not over till it's over, and we're not going to have for proceeding one forum basically be dispositive of another until it's over.

[00:25:30] Speaker 05:
Well, even though validity is largely over, entirely over.

[00:25:34] Speaker 02:
It's not entirely over, Your Honor, because we had the right

[00:25:37] Speaker 02:
petition for cert.

[00:25:38] Speaker 05:
We would have had that... And just to be clear, because I think that this particular case really magnifies the impact of the rule that you're requesting.

[00:25:48] Speaker 05:
So this litigation was filed in 2010, and the re-exam requests were filed in 2011.

[00:25:56] Speaker 05:
It's now 2019, unless I'm mistaken.

[00:25:59] Speaker 05:
You're asking me to remand, for example, on damages in the litigation, correct?

[00:26:04] Speaker 02:
Correct?

[00:26:04] Speaker 02:
In the next appeal, yes.

[00:26:05] Speaker 05:
In the litigation.

[00:26:06] Speaker 05:
You want me to remand on damages.

[00:26:08] Speaker 05:
So if I were to remand on damages and have a whole new trial, like you requested, probably that case with appeals and everything else would continue another four to five years.

[00:26:18] Speaker 05:
So we'd be looking at 2024.

[00:26:19] Speaker 05:
And I'm sure you would find a reason, if they jury awarded against you, that there should be yet another new trial, because this would be the third or fourth, having trouble keeping track.

[00:26:28] Speaker 05:
So in any event, so your proposal would result in no finality for, in this case, 14 years, 15 years?

[00:26:39] Speaker 05:
Even though validity has long since been decided and affirmed by our court 10 years ago.

[00:26:43] Speaker 02:
Your Honor, let me respond to that very directly and also tie it to Fairchild.

[00:26:49] Speaker 02:
The first thing, if it were back here in 2024, it would be someone else here, not me.

[00:26:52] Speaker 02:
I can promise you that.

[00:26:54] Speaker 02:
The second is this.

[00:26:57] Speaker 02:
If your Honor looks at the record, the seven years it took for these re-exams to reach you is not because of anything that Apple did during the re-exams.

[00:27:05] Speaker 05:
I didn't suggest it was.

[00:27:06] Speaker 02:
That's not the point, though.

[00:27:08] Speaker 02:
That's not the point.

[00:27:09] Speaker 02:
But here is the substantive answer to your question.

[00:27:12] Speaker 02:
In the Fairchild opinion, the predicate of the Fairchild opinion is that if certiorari is available, then it's not final.

[00:27:22] Speaker 02:
And what the Fairchild court said in this circumstance,

[00:27:26] Speaker 02:
In this circumstance, it's not available, so it's final.

[00:27:30] Speaker 02:
But the underlying principle, Judge Prost, to go to your question, of Fairchild is, if Sir Shrai is available, that means that all appeals have been terminated.

[00:27:39] Speaker 02:
Remember what Fairchild does is it cites Betcher as stating the principle.

[00:27:44] Speaker 02:
It then

[00:27:45] Speaker 04:
But Fairchild didn't say that.

[00:27:47] Speaker 04:
They did not grant it.

[00:27:49] Speaker 04:
Because we have the facts in Fairchild, which are just like this.

[00:27:52] Speaker 04:
So if your principal were to apply in Fairchild and the court agrees with you, then it would have not said that.

[00:27:59] Speaker 04:
It would have said, well, they're still going to have a second bite on the second cert.

[00:28:02] Speaker 04:
But they didn't say that.

[00:28:04] Speaker 02:
Well, there are two things.

[00:28:05] Speaker 02:
One is, and I can't, I mean, as I said before, the precise issue wasn't raised.

[00:28:10] Speaker 02:
The second is, to go to Judge Rainier's question,

[00:28:13] Speaker 02:
The Fairchild opinion said it was critical that the remand didn't involve any issues involving the patent or the patent claims.

[00:28:20] Speaker 04:
Yeah.

[00:28:21] Speaker 04:
It was like this case, though.

[00:28:23] Speaker 02:
Yeah.

[00:28:23] Speaker 02:
Ours, this remand did involve the patent claims on infringement.

[00:28:29] Speaker 02:
And that statement in Fairchild makes good sense.

[00:28:32] Speaker 02:
If you accept, and I'm not saying that you have to.

[00:28:33] Speaker 04:
And what were the facts in Fairchild?

[00:28:35] Speaker 04:
How were they different?

[00:28:36] Speaker 04:
What was remanded?

[00:28:37] Speaker 02:
What was remanded had nothing to do with the patents at all.

[00:28:39] Speaker 02:
And the opinion said it was critical.

[00:28:41] Speaker 02:
And Your Honor, if you go back,

[00:28:43] Speaker 05:
and just take my time out means that critically these proceedings are unrelated to the 972 patent and then it says and here power integration does not suggest nor is there any reason to believe that any unresolved issues on remand would have any effect on the now final 972 patent validity determinations and isn't the statute about final decision on validity that's what the statute says so shouldn't those words have meaning as opposed to

[00:29:08] Speaker 05:
final judgment on the case.

[00:29:09] Speaker 02:
Kagan.

[00:29:09] Speaker 02:
Your Honor, they do have a meeting, and that sentence actually makes perfectly good common sense for this reason.

[00:29:15] Speaker 02:
If you have, if a remand doesn't involve the patent claims at all, then the likelihood that anything that occurs on remand is going to be.

[00:29:21] Speaker 05:
But that's not what it says.

[00:29:22] Speaker 05:
It says actually it doesn't have any effect on the now final patent validity.

[00:29:26] Speaker 04:
There was no, what likelihood was that the validity fine conclusions by our court were going to be dislodged in any way, shape, or form?

[00:29:33] Speaker 02:
Well, Your Honor, actually, respectfully,

[00:29:36] Speaker 02:
The claims go back down to be retried, and there are new arguments being made in the infringement portion of the case that might deal with it.

[00:29:44] Speaker 02:
You could have a motion to set aside a validity determination even after your mandate issues.

[00:29:50] Speaker 02:
What Fairchild is saying and what the opinion says is, look, it's important that nothing's going back down on these patents.

[00:29:57] Speaker 02:
And all I was trying to say, Your Honor, is an answer to your question.

[00:30:02] Speaker 02:
There's a difference between Fairchild in this case, because in this case, something was going back down.

[00:30:07] Speaker 02:
I'm well beyond my time.

[00:30:09] Speaker 02:
Let me just say this on the merits, very quickly.

[00:30:14] Speaker 02:
The brief that was followed by Vernettix doesn't reach the merits until page 57.

[00:30:20] Speaker 02:
It's about a lot of other things other than the merits, and that's consistent with the argument you've heard today.

[00:30:27] Speaker 02:
The idea that the board was a day and hour of fact-finder is simply wrong.

[00:30:33] Speaker 02:
As the CFR says and this Court says in Cree, in this case, unlike the first appeal, there is an examiner.

[00:30:41] Speaker 02:
An examiner reached the decision.

[00:30:42] Speaker 02:
The board's job is to sit as a quasi-appellate body, take the arguments that are made, and then address those arguments, and that's precisely what it did.

[00:30:52] Speaker 04:
Thank you.

[00:31:06] Speaker 01:
Morning, Your Honors.

[00:31:07] Speaker 01:
Theodore Foster for Appellee Cisco Systems.

[00:31:10] Speaker 01:
May it please the Court.

[00:31:12] Speaker 01:
I'd like to address first the question about Claim 47 that Mr. Kinnaird raised.

[00:31:18] Speaker 01:
Vernetics, in its appeal brief to the Board, did not raise any separate arguments regarding Claim 47.

[00:31:23] Speaker 01:
All they did was refer back to their arguments about Claim 36 and recite the language of the claim itself.

[00:31:30] Speaker 01:
And as the Board's rules provide, merely reciting the claim language is not a separate argument.

[00:31:36] Speaker 01:
And so merely putting the claim language under a heading is insufficient.

[00:31:42] Speaker 01:
Regarding claim 48, claim 48 merely recites that the claimed indication, which is the same indication as claim 36, is more specifically found in a particular domain name.

[00:31:55] Speaker 01:
And so it's merely refining and specifying in more detail where the indication is found in the claim domain name service system.

[00:32:03] Speaker 01:
Since the domain names in claim 36 are stored in the domain name service system, finding it more specifically in claim 48 in the domain name itself provides the sufficient teaching of the claimed indication and supports affirmance.

[00:32:19] Speaker 01:
And then I'd also like to take up the question of the ACLs where I want to point out that Vernetics is throughout the re-examination

[00:32:32] Speaker 01:
highlighted that limiting access to naming services, which is what the ACLs do, that that is a distinguishing feature.

[00:32:40] Speaker 01:
You can see the examiner summarizing Burnettics' arguments about that in the appendix at page 4223.

[00:32:45] Speaker 01:
There are no questions.

[00:32:51] Speaker 01:
Thank you.

[00:32:58] Speaker 04:
Thank you.

[00:32:58] Speaker 04:
We'll give you three minutes.

[00:33:02] Speaker 00:
Your Honor, very quickly, Fairchild did decide the rule that a final decision on patent validity creates estoppel even if there's no final judgment, even if it didn't address all the arguments.

[00:33:16] Speaker 00:
You cannot impeach precedent of this court by pointing to an unaddressed floor statement in the House.

[00:33:23] Speaker 00:
Furthermore, that floor statement said when all appeals have terminated,

[00:33:29] Speaker 00:
The appeals that are listed in 315B are the appeals to the PTAB and the Federal Circuit.

[00:33:34] Speaker 00:
Searcherary is not an appeal.

[00:33:36] Speaker 00:
It is a petition for discretionary review.

[00:33:39] Speaker 00:
Searcherary has always been different from appeal.

[00:33:42] Speaker 00:
And finally, he doesn't address, when he says conflict with Betcher, he doesn't address page 645.

[00:33:48] Speaker 00:
with the MPEP when they're talking about 315.

[00:33:51] Speaker 04:
So what is the basis for differentiating?

[00:33:55] Speaker 04:
Let's assume we're under Fairchild, and whether you agree or disagree with Fairchild went farther than it should have.

[00:34:01] Speaker 04:
It says the time for certiorari is wrong, the first instance.

[00:34:04] Speaker 04:
So what kind of policy or legal argument do you make that you only get one chance for certiorari, but not the second chance?

[00:34:14] Speaker 00:
Well, the policy argument, and the legislative history is clear on this, is that you don't want to have

[00:34:18] Speaker 00:
continual hack harassing litigation once you've gone to final decision in one of the forums and and that's the policy and this is kind of subject there's no dispute that apple would have had the ability to raise it on sir i mean for a lot of good reasons one doesn't go for sir piece me but so did power integrations in fairchild they have the exact same review rights uh... and i would point that you know nothing

[00:34:42] Speaker 00:
In the question, both of them were remanded on issues that could not possibly affect final patent validity.

[00:34:50] Speaker 00:
There is no daylight.

[00:34:51] Speaker 00:
Fairchild power integrations won, right?

[00:34:55] Speaker 00:
No, power integrations lost on the invalidity case.

[00:34:59] Speaker 00:
So Fairchild moves.

[00:35:00] Speaker 00:
So power integrations equivalent to Apple.

[00:35:03] Speaker 00:
And they're on all fours.

[00:35:04] Speaker 00:
And both of them had the same right after final judgment.

[00:35:07] Speaker 00:
One on infringement.

[00:35:12] Speaker 00:
They went on infringement, right?

[00:35:14] Speaker 00:
So it didn't go back on that patent.

[00:35:15] Speaker 00:
But that's... But they're not going to appeal.

[00:35:17] Speaker 03:
Power Integration is not going to appeal its want.

[00:35:19] Speaker 03:
It's winning.

[00:35:20] Speaker 00:
Well, Power Integration has had the same right to appeal the validity decision to the Supreme Court at Apple.

[00:35:26] Speaker 00:
That's the key.

[00:35:27] Speaker 00:
So it's the validity decision equally final in both cases.

[00:35:32] Speaker 00:
And I would point out that Becher makes clear on 645, when it's discussing 316, it relies on the MPEPS that says appeals terminate

[00:35:42] Speaker 00:
when the mandate is issued and says the same rule within 317.

[00:35:47] Speaker 00:
And you can't have deference, even in the ambiguous part of the MPEP that they refer to, can't trump the regulations that I referred to and that he doesn't even address.

[00:35:59] Speaker 00:
On the question that he makes about findings, it's absolutely true that the board, even though it is limited to the record and review of the examiner's decision, is the de novo finder effect

[00:36:12] Speaker 00:
PTO has said so, 94 USPQ 2nd, 1072.

[00:36:18] Speaker 00:
We decide anew the factual issues that are contested.

[00:36:22] Speaker 00:
And In Re Young, this court also talked about that.

[00:36:25] Speaker 00:
And that's why this court reviews the board's factual decisions for substantial evidence.

[00:36:30] Speaker 00:
You cannot find, in this stunningly opaque decision, factual findings on why these two alternatives constitute the DNSS.

[00:36:39] Speaker 00:
It didn't address claim differentiation.

[00:36:41] Speaker 00:
It didn't address our arguments that the examiner misunderstood the in the clear embodiment.

[00:36:47] Speaker 00:
There's nothing that says, here's what we find to be the claimed indication.

[00:36:52] Speaker 00:
So it has to go back.

[00:36:54] Speaker 00:
And we did address the merits where there was a finding on authentication.

[00:36:58] Speaker 00:
And there, they did not show authentication of the query.

[00:37:02] Speaker 00:
And I would just point to the court.

[00:37:04] Speaker 00:
It means, for example, in the

[00:37:07] Speaker 00:
504 appendix 199 200 which is a patent column 54 to 5110 talks about the security.