[00:00:04] Speaker 04:
I think we've got some usable chairs here for the first cases, but we'll do the best we can.

[00:00:09] Speaker 04:
The first case for argument is 17-1368, Vernetix versus Mangrove.

[00:00:17] Speaker 04:
Mr. Modi.

[00:00:23] Speaker 02:
Good morning, Your Honors.

[00:00:23] Speaker 02:
May it please the Court.

[00:00:25] Speaker 02:
This Court should set aside the Board's decisions for at least two independent reasons.

[00:00:30] Speaker 02:
First, regardless of how appellees construe kaiuchi

[00:00:34] Speaker 02:
It does not anticipate the claims.

[00:00:36] Speaker 02:
Second, the board erred by joining Time Barred Party Apple to these proceedings.

[00:00:42] Speaker 02:
If time permits, I would also like to address the real party in interest and discovery issues.

[00:00:47] Speaker 01:
If the board erred by joining Apple, you don't argue that mangrove was improper, right?

[00:00:54] Speaker 02:
Your Honor, that goes to our discovery argument.

[00:00:56] Speaker 02:
It is our belief.

[00:00:58] Speaker 01:
No, forget the real party in interest.

[00:00:59] Speaker 01:
Just assume Mangrove is its own entity and Apple is not the real party in interest behind Mangrove for purposes of my question.

[00:01:07] Speaker 01:
So Mangrove was therefore a properly filed petitioner, correct?

[00:01:12] Speaker 02:
Your Honor, respectfully, we disagree.

[00:01:15] Speaker 01:
I said assume the real party in interest.

[00:01:17] Speaker 02:
Your Honor, but I think the issue goes to that Mangrove, it's our belief that Mangrove was working with RPX here, and as Your Honor knows, that RPX filed petitions working with Apple.

[00:01:29] Speaker 01:
So we do believe... But that's the real party and interest argument, isn't it?

[00:01:33] Speaker 02:
It is, but Your Honor, they're connected.

[00:01:36] Speaker 01:
And before the board... Assume, for purposes of this question, if it is possible for you to do so, that Mangrove is a properly filed petitioner, and no one else is behind them,

[00:01:48] Speaker 01:
In that case, why couldn't they have proceeded?

[00:01:51] Speaker 01:
In this IPR, Apple introduced no new arguments in this IPR that weren't introduced by Mangrove.

[00:01:58] Speaker 01:
So even if Apple is improperly joined, I don't understand why the result is the whole IPR goes away, if I don't agree with you that there's anybody else behind Mangrove.

[00:02:11] Speaker 02:
I think the reason here is simple, Your Honor, because Apple's involvement was more than just taking the back seat here.

[00:02:17] Speaker 01:
but it doesn't matter because mangrove made the same arguments so they had a right

[00:02:23] Speaker 01:
to have their arguments resolved by the board.

[00:02:26] Speaker 02:
Your honor, they certainly had the right.

[00:02:28] Speaker 02:
But again, what happened here, if you look at the record, what happened here was after Apple was joined to these proceedings.

[00:02:35] Speaker 02:
And as this court may recall, we actually moved for mandamus right after the proceeding when Apple was joined to the mangrove proceedings.

[00:02:42] Speaker 02:
And this court asked us to come back after the final decisions.

[00:02:45] Speaker 02:
And I think what you're getting to is what prejudice is there to us.

[00:02:49] Speaker 02:
And we believe we were prejudice here.

[00:02:51] Speaker 01:
Because the problem is I don't see that prejudice.

[00:02:53] Speaker 01:
I don't see any prejudice because I think if mangrove had a right and there is no real party in interest issue If mangrove had a right to bring this they had a right to have it resolved and they aren't the ones who decided to join apple The pto is and so once apple is joined

[00:03:09] Speaker 01:
Why should it taint a legitimate petitioner's right to have his petition resolved?

[00:03:14] Speaker 02:
Your Honor, obviously, we're assuming this is a mangrove of the petition is legitimate, which we also disagree with.

[00:03:19] Speaker 02:
Yes, I've said so 100 times.

[00:03:21] Speaker 02:
That's the basis of this hypothetical question.

[00:03:22] Speaker 02:
Sorry, Your Honor.

[00:03:23] Speaker 02:
So I think the issue here is, again, vernetics was prejudiced when Apple was joined, because vernetics has a right not to have its patents challenged by a party such as Apple that's time-barred.

[00:03:34] Speaker 01:
But it doesn't have a right.

[00:03:36] Speaker 01:
to have its patents not challenged by mangrove necessarily.

[00:03:40] Speaker 04:
Is the only argument, is the only answer you have for prejudice that Apple was able to bring its resources to bear?

[00:03:49] Speaker 04:
I'm just trying to get an answer.

[00:03:51] Speaker 02:
Fair enough.

[00:03:52] Speaker 02:
I think we have a three-part argument.

[00:03:55] Speaker 02:
I think the first argument is vernetics is prejudice because

[00:03:58] Speaker 02:
It does not have, it has a right not to have its patents challenged by Apple, which is a time-barred party.

[00:04:04] Speaker 04:
Congress is enacting- That's kind of the, we're talking about what the harm was, what the prejudice was to you.

[00:04:09] Speaker 04:
Sure, and let me get- So that, whether you're, they had a right or not is, can you just tell me the concrete prejudice that you are arguing- Sure, Your Honor- With Apple's participation.

[00:04:18] Speaker 02:
I can.

[00:04:19] Speaker 02:
So here, if you look at the record, Apple took over the proceedings, including communications, expert declarations, depositions, and oral hearing.

[00:04:27] Speaker 02:
Apple is presenting the oral argument today, not Mangrove.

[00:04:31] Speaker 00:
So your argument is that it's Apple's resources.

[00:04:33] Speaker 00:
That's the only prejudice that you face.

[00:04:35] Speaker 02:
Your Honor, I think the other prejudice this court cannot ignore the whole purpose for enacting 315B.

[00:04:41] Speaker 02:
The whole purpose for it.

[00:04:42] Speaker 02:
Don't forget about that.

[00:04:43] Speaker 02:
We're talking about the prejudice.

[00:04:45] Speaker 00:
Sure, Your Honor.

[00:04:46] Speaker 00:
And I think what I'm- It's just the resources of Apple that you complain about.

[00:04:48] Speaker 02:
That's certainly one piece of it, Your Honor.

[00:04:51] Speaker 02:
And I think as the- What other piece?

[00:04:54] Speaker 00:
What other prejudice?

[00:04:55] Speaker 02:
So the other prejudice goes to the fact that under Section 315B, when Congress enacted Section 315B, it made sure it balanced the patent owner's right to quiet title with also not having panties like vernetics subject to multiple proceedings, serial petitioning, that also led to harassment here.

[00:05:15] Speaker 04:
But that's what, I mean, that's what Joinder is.

[00:05:17] Speaker 04:
It avoids multiple proceedings, right?

[00:05:19] Speaker 04:
I mean, one proceeding, same issues.

[00:05:23] Speaker 04:
I mean, that's what Joinder is, right?

[00:05:25] Speaker 04:
You're not having to go in and defend different proceedings with additional costs individually.

[00:05:31] Speaker 02:
Your Honor, that is the normal case when Joinder, but when you have a time-barred party apple, join the proceedings.

[00:05:39] Speaker 02:
We believe that the statute does not allow such a party to take over the proceedings

[00:05:44] Speaker 02:
and move forward, as Amica's bio and pharma point out, that having a party- What if they hadn't taken it over?

[00:05:51] Speaker 04:
What if they just sat there quietly?

[00:05:53] Speaker 04:
And they would not be sentenced, right?

[00:05:56] Speaker 02:
Certainly, that would be a different case.

[00:05:57] Speaker 02:
But that's not what happened here, Your Honor.

[00:05:59] Speaker 02:
Here, we had Apple take over the proceedings.

[00:06:02] Speaker 02:
And to be clear, Your Honor, we don't believe there is a requirement for prejudice.

[00:06:07] Speaker 02:
We believe when Apple joined these proceedings,

[00:06:11] Speaker 02:
It was barred, and the statute, for example, the SAS case.

[00:06:15] Speaker 04:
And you're not advocating a do-over.

[00:06:17] Speaker 04:
I mean, even if we were to agree with you that Apple was improper, and we can't let this to stay.

[00:06:24] Speaker 04:
decision stand.

[00:06:25] Speaker 04:
So you automatically win on everything because of this error?

[00:06:30] Speaker 02:
Your honor, the way we look at it is we think these proceedings should be set aside at a minimum.

[00:06:35] Speaker 02:
What this court should do is it should send it to the board so it can unwind the proceedings and untangle the proceedings because Apple's improper involvement has tainted the proceedings in ways that cannot be undone.

[00:06:46] Speaker 02:
Okay, can we move to the merits of the proceedings here?

[00:06:50] Speaker 02:
We can, your honor, sure.

[00:06:52] Speaker 04:
Are there four issues here?

[00:06:56] Speaker 02:
There are four issues here, Your Honor.

[00:06:58] Speaker 04:
And just to get my head straight, we're only dealing with the 151 and the 135 here.

[00:07:02] Speaker 04:
That's right, Your Honor.

[00:07:05] Speaker 02:
Sure.

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

[00:07:07] Speaker 02:
So with respect to the 151 patent, and that deals with the 1047 proceeding, there, even if you set aside the board's reliance on a new theory in its final decision, Kaiuchi simply does not disclose the claim.

[00:07:21] Speaker 04:
How do you pronounce it again?

[00:07:22] Speaker 02:
Kaiuchi.

[00:07:23] Speaker 02:
Kaiuchi.

[00:07:24] Speaker 02:
It simply does not disclose the claimed DNS proxy module.

[00:07:29] Speaker 02:
For example, if you look at the 151 claim one, it recites a data processing device

[00:07:34] Speaker 02:
comprising in memory, storing a DNS proxy module.

[00:07:38] Speaker 02:
It is the DNS proxy module and only the DNS proxy module that performs all those cited functions.

[00:07:45] Speaker 02:
Again, regardless of how appellees read Kaiuchi, we simply do not believe it discloses a DNS proxy module.

[00:07:53] Speaker 02:
I think it's undisputed at this point.

[00:07:55] Speaker 04:
How much of your argument is based on this combination that you didn't think the board considered it in combination versus individually?

[00:08:03] Speaker 02:
So Your Honor, I think I was going to go there next, which is that even if you look at the combination which Appellee's argue on appeal,

[00:08:10] Speaker 02:
We don't believe Apple or the appellees win here.

[00:08:15] Speaker 02:
And the reason is simple.

[00:08:16] Speaker 02:
The claims require a DNS proxy module that intercepts requests sent by a client.

[00:08:22] Speaker 02:
So, and as Your Honor is also aware, the board also pointed to the client, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the

[00:08:40] Speaker 02:
We just think there is no reading of Kaiuchi that is supported.

[00:08:44] Speaker 02:
And then also, Kaiuchi touts the separateness between its client and the client-side proxy.

[00:08:50] Speaker 02:
So for all of these reasons, we believe the board... Appellee's argument, even if this court were to accept it, we don't believe the board actually applied a combination mapping in its final decision.

[00:08:59] Speaker 02:
The board actually only relied on the name server, which I believe is undisputed at this point, that that does not satisfy

[00:09:05] Speaker 02:
the DNS proxy module.

[00:09:07] Speaker 01:
If I were to agree with you on the technical argument that the DNS proxy module, for example, doesn't perform the function of forwarding the DNS request to a DNS function that returns an IP address, a non-secure computer, if I agreed with you that there's no anticipation, am I correct in understanding that there were separate obviousness-related arguments that were presented or made

[00:09:30] Speaker 01:
to the board originally on Kaiichi and that they were not addressed by the board.

[00:09:34] Speaker 01:
So under SAS, this would go back as a vacate and remand for the board to address the separate obviousness arguments.

[00:09:41] Speaker 02:
Your Honor, the board's obviousness ruling, if you look at it, we believe it was tied to the anticipation findings.

[00:09:47] Speaker 01:
The board's obviousness argument is incomprehensible.

[00:09:50] Speaker 02:
I agree, Your Honor, and I think that... So we would send it back to have them actually make an obvious misdetermination, because I can't make any sense of their... At a minimum, I think this Court should remand, but I think the Court should reverse for another reason, which is if you go to secure server limitation of the claim, Judge Crose, that's the second issue with respect to the 151 patent.

[00:10:09] Speaker 02:
The Board, again, the issue that we have here is with the Board's decision, it's internally inconsistent.

[00:10:15] Speaker 01:
So if you look at... You mean because they refer to the origin server and the server-side proxy each in different places as performing functions that the secure server is required to perform by the claims?

[00:10:24] Speaker 02:
That's right, Your Honor.

[00:10:25] Speaker 01:
But how do I know that one of those doesn't actually possibly perform all of them?

[00:10:29] Speaker 01:
I agree with you that the board has made a mistake on that.

[00:10:32] Speaker 01:
I don't see how anyone could conclude otherwise, but I don't see how I can reverse and say therefore there's no anticipation.

[00:10:40] Speaker 01:
Simply because the board points out that various things do things doesn't mean there isn't something in there that does all of them.

[00:10:46] Speaker 02:
Your Honor, again, at a minimum, this court should remand, and we believe we're entitled to a reversal here.

[00:10:51] Speaker 02:
Again, we were faced by three petitioners.

[00:10:53] Speaker 01:
But you didn't explain why you should get a reversal in light of my question.

[00:10:57] Speaker 02:
So I'll tell you, Your Honor, again, this court reviews the board's final decision.

[00:11:01] Speaker 02:
In the board's final decision, it mapped

[00:11:04] Speaker 02:
The server side proxy to one limitation and the origin server to the other limitation.

[00:11:08] Speaker 02:
We think the board in this situation when the decision is internally inconsistent.

[00:11:12] Speaker 01:
Those weren't the arguments that were made by the parties.

[00:11:15] Speaker 01:
The board made that mistake on its own.

[00:11:17] Speaker 01:
So why wouldn't we send it back for the board to address the arguments made by the parties?

[00:11:21] Speaker 02:
So to the extent we believe the petitioners here led the board to that error, and they should live with those consequences.

[00:11:28] Speaker 02:
Again, at a minimum, you should remand, but we think reversal is warranted.

[00:11:32] Speaker 02:
And there's another reason why reversal is warranted, and that deals with the term client.

[00:11:35] Speaker 02:
And Judge Prose, this gets to the 151 patent, the third issue.

[00:11:39] Speaker 02:
Here, the board erred in construing the term client.

[00:11:43] Speaker 02:
It actually never provided the construction, especially when both parties were disputing the construction.

[00:11:49] Speaker 04:
And second, no reasonable reason... It seems to me, in the opinion, they just misunderstood the argument Brunetix was making.

[00:12:01] Speaker 04:
So again, even if we agree with you that their conclusion was misplaced, doesn't that warrant a remand, right?

[00:12:09] Speaker 02:
Again, Your Honor, certainly we think at a minimum a remand is wanted, but if you look at the arguments that we presented on why Cauchi's client-side proxy does not meet the limitations of the claim, we think if you look, starting with the 151 patent, it distinguishes between a client and a proxy.

[00:12:28] Speaker 02:
Kaichi itself confirms that no reasonable reading of- You're asking us to make a fact-finding on appeal.

[00:12:33] Speaker 01:
We don't do that.

[00:12:34] Speaker 01:
You don't get a reversal out of this.

[00:12:35] Speaker 01:
And I think it's really a reach to keep beating us over the head trying to ask for one.

[00:12:39] Speaker 01:
This is your weakest argument.

[00:12:41] Speaker 01:
To me, the best argument you have on client is that the board's opinion is confusing.

[00:12:45] Speaker 01:
It's not clear whether it was relying on Kaichi's user agent, client-side proxy, or both for the client.

[00:12:50] Speaker 01:
That's your best argument, that it's confusing, because it's not clear to me what they were doing.

[00:12:54] Speaker 01:
But that doesn't give you a reversal.

[00:12:56] Speaker 01:
So just stop asking for it.

[00:12:58] Speaker 02:
Fair enough, Your Honor.

[00:12:59] Speaker 02:
At a minimum, this court should remand with respect to that limitation.

[00:13:02] Speaker 02:
And then finally, if we go to the 135 patent and the 1046 proceeding, Judge Prost, and I think that's what you were thinking of the four issues, that's the fourth merits issue that we have here today.

[00:13:13] Speaker 02:
Again, there, we believe the board erred in construing the claimed term VPN, virtual private network.

[00:13:20] Speaker 02:
And there, the board's construction ignored a clear and unambiguous disclaimer that even Apple argued for itself in district court.

[00:13:28] Speaker 02:
And as Your Honor is aware from the Cisco 1 opinion, the previous district court appeal, that's what Apple argued for.

[00:13:34] Speaker 04:
And here... I think we understand that.

[00:13:37] Speaker 04:
You're into your rebuffals.

[00:13:39] Speaker 02:
Thank you.

[00:13:40] Speaker 02:
I'll save those.

[00:13:48] Speaker 03:
Good morning, and may it please the Court, Mark Fleming on behalf of Apple.

[00:13:51] Speaker 03:
I'll take my cue from the Court's questioning and focus on the merits.

[00:13:54] Speaker 03:
Of course, I'm happy to address anything the Court would like me to address.

[00:13:57] Speaker 04:
Yeah, there are problems in the board of the Moonlight.

[00:13:59] Speaker 04:
I mean, just getting through and trying to understand what they did was kind of challenging.

[00:14:03] Speaker 04:
But at the end of the day, you can start with any one of these terms.

[00:14:06] Speaker 04:
But obviously, your hearing, we have some concerns.

[00:14:08] Speaker 03:
I'm happy to address them, Your Honor, and I'll go limitation by limitation based on the arguments Mr. Modi made.

[00:14:15] Speaker 03:
The way to understand what the board was grappling with was that these claims as presented by vernetics are very broad and there were two possible mappings that we presented, either of which is sufficient for anticipation.

[00:14:28] Speaker 03:
The board went through those at the beginning of its opinion, said Chiucci discloses them, and then responded to the various arguments that vernetics was making, all of which are confusing, but when you lay out

[00:14:38] Speaker 03:
When you read the board's opinion, they all start with, patent owner argues this, patent owner argues that, and explain the responses.

[00:14:44] Speaker 03:
So let's start, for instance, with DNS proxy module.

[00:14:47] Speaker 03:
There, there was the combination which Mangrove and Apple put forward in the petition, which is that the chttp name server and the client-side proxy together perform all the functions of the DNS proxy module.

[00:14:59] Speaker 03:
And I don't think there was any argument either before the board or in the opening brief.

[00:15:04] Speaker 04:
that that's not the case, that if you look at the two of them together, they do all the things that DNS proxy does.

[00:15:14] Speaker 03:
Well, I think the only response that he had is this argument about interception, that somehow the client-side proxy can't intercept a message or a request that's been sent by the client-side proxy.

[00:15:25] Speaker 03:
That is doubly waived.

[00:15:26] Speaker 03:
That was not made to the board, and it's not in the blue brief.

[00:15:28] Speaker 03:
It comes up for the first time on page nine of the reply brief, and that was the only argument Mr. Modi offered this morning for the DNS proxy module under the correct mapping.

[00:15:36] Speaker 03:
And I think there's no question that the board considered and relied on the combination mapping that we put forward.

[00:15:42] Speaker 03:
And the idea, as presented in the briefs, though we didn't hear it this morning, that Fernetix didn't have an opportunity to respond to it is simply... I'm confused.

[00:15:49] Speaker 01:
Let's just start with secure server.

[00:15:50] Speaker 01:
Does the board not alternatively refer to the origin server and the server side proxy is performing the various functions of the secure server under the claim?

[00:15:59] Speaker 03:
It does judge more and that's because we argue that either one could satisfy that role.

[00:16:05] Speaker 03:
There are alternative possible mappings.

[00:16:06] Speaker 01:
Is it your view that when you have a claim that requires a single server to perform multiple functions that the other side can perform, that there can be anticipation

[00:16:17] Speaker 01:
by an embodiment where different devices perform those functions and not the same device?

[00:16:22] Speaker 01:
With respect to the secure server... Is it your view of anticipation, this is a question, is it your view of anticipation that when you have a claim that requires a single device to perform multiple functions that there can be anticipation when the reference has

[00:16:38] Speaker 01:
different devices performing those functions.

[00:16:41] Speaker 03:
Not if the claim actually requires that it be a single device, but that is not a construction that Vernetix urged on the board and it's not a finding the board made.

[00:16:53] Speaker 01:
The question is very important.

[00:16:54] Speaker 01:
Does the claim articulate, does it not, that the secure server does each of these things?

[00:16:59] Speaker 03:
No, Your Honor.

[00:17:00] Speaker 03:
The DNS proxy module

[00:17:02] Speaker 03:
as claimed, performs the four claimed steps.

[00:17:06] Speaker 03:
And one of them is setting up in claim 13, which is the only claim at issue in the litigation now, a secure channel between a client and a secure server.

[00:17:18] Speaker 03:
And we argued that the secure server could map either to the origin server in Kiuchi or to the server side proxy.

[00:17:26] Speaker 03:
And there is no dispute that either of those can do that.

[00:17:30] Speaker 03:
This is a form over substance argument as to the secure server.

[00:17:32] Speaker 01:
But that's not what the board found.

[00:17:33] Speaker 01:
The board found that sometimes it says the origin server does it, and other times they say the server side proxy does things.

[00:17:40] Speaker 01:
And they alternate in a confusing way in the opinion, which makes it unclear to me, at least,

[00:17:46] Speaker 01:
whether there is, in their view, a single server that's performing the functions required by the claim.

[00:17:51] Speaker 03:
So I don't think there are any claimed functions required to be performed by the secure server that are in dispute.

[00:17:58] Speaker 01:
To answer the question, I think the right mapping... Isn't the board required to map elements consistently for limitations?

[00:18:04] Speaker 01:
I hear they jump around.

[00:18:05] Speaker 01:
It's sloppy.

[00:18:07] Speaker 01:
It's not clear.

[00:18:08] Speaker 03:
It may well be that the board could have written a clear opinion.

[00:18:11] Speaker 03:
The question is, can we discern

[00:18:12] Speaker 03:
the reasoning of the board and with respect to secure server.

[00:18:15] Speaker 01:
These are fact findings and I'm uncomfortable replacing board fact findings with my view of the fact finding.

[00:18:21] Speaker 03:
I don't think the board is forbidden from making alternative findings as long as and that nor is this court forbidden from affirming one alternative finding as long as it's supported by substantial evidence.

[00:18:32] Speaker 03:
And if one looks at A61 the board says a secure server IE server side proxy.

[00:18:38] Speaker 03:
The vernetics does not deny that that finding, that the secure server is met by Kiuchi's server-side proxy, is supported by substantial evidence.

[00:18:46] Speaker 03:
Again, this is a form over substance argument.

[00:18:48] Speaker 03:
We argue both of them, that both the server-side proxy and the origin server can be the secure server.

[00:18:53] Speaker 01:
Okay, I'd like to move you to the jointer question.

[00:18:55] Speaker 03:
Of course, Your Honor.

[00:18:56] Speaker 01:
So, how is it that Apple is properly joined in this case?

[00:19:04] Speaker 01:
So aren't they time barred from filing their own petition under 315 B.

[00:19:09] Speaker 03:
If they had filed their own separate petition, yes.

[00:19:12] Speaker 01:
They did.

[00:19:12] Speaker 03:
They did file their own separate petition, correct?

[00:19:15] Speaker 03:
Yes, we did.

[00:19:16] Speaker 01:
And that petition is what was joined, correct?

[00:19:18] Speaker 03:
Correct.

[00:19:19] Speaker 01:
And the time... So if they filed their own separate petition and if you agree their own separate petition would have been barred by 315B, how is it that they're properly joined?

[00:19:27] Speaker 03:
The second sentence of 315B makes very clear that the one-year time bar does not apply to a request for joiner.

[00:19:33] Speaker 01:
A request for joiner, correct.

[00:19:34] Speaker 01:
Is a request for joiner the same thing as a petition under the statute?

[00:19:37] Speaker 03:
Well, I think at most the arguments that have been put before the court show there may be some ambiguity on that point.

[00:19:43] Speaker 03:
And if there's ambiguity on that point, the tiebreaker is Chevron deference.

[00:19:46] Speaker 03:
The PTO has a duly promulgated rule that makes it very... Really?

[00:19:50] Speaker 01:
Let me get this straight.

[00:19:51] Speaker 01:
You think that the PTO has the ability to

[00:19:56] Speaker 01:
make substantive legal determinations, and we give them Chevron deference for them?

[00:20:00] Speaker 03:
This isn't a substantive legal determination, Your Honor.

[00:20:02] Speaker 03:
The question of the timeliness of a joiner or a petition is a key procedural point.

[00:20:08] Speaker 03:
This doesn't go to the patentability of any claim.

[00:20:11] Speaker 01:
Just to be clear, you think statutes of limitations are not substantive?

[00:20:14] Speaker 01:
You think those are just procedural?

[00:20:16] Speaker 03:
No, Your Honor, but this isn't a statute of limitations.

[00:20:18] Speaker 03:
This is a question of the timeliness

[00:20:20] Speaker 03:
of a motion for joiner, which is something the statute expressly gives the PTO.

[00:20:24] Speaker 01:
Well, wait.

[00:20:24] Speaker 01:
If this is about the timeliness of a motion for joiner, then it's not about the timeliness of a petition.

[00:20:31] Speaker 01:
Because a motion for joiner is separate from a petition according to the statute.

[00:20:34] Speaker 01:
They separately talk about them throughout the statute.

[00:20:37] Speaker 03:
Well, they are discussed.

[00:20:39] Speaker 03:
But the last sentence of 315B specifically says that the first sentence, which has the time limitation only applicable to petitions,

[00:20:49] Speaker 03:
does not apply in the case of a request for joiner.

[00:20:51] Speaker 01:
No, it doesn't say it doesn't apply in the case.

[00:20:53] Speaker 01:
It says it doesn't apply to a request for joiner.

[00:20:56] Speaker 01:
So why isn't that properly interpreted as you may file a request to join two properly filed petitions beyond the one year period of time?

[00:21:06] Speaker 01:
The one year period of time is not meant to affect your ability to file a request for joiner.

[00:21:11] Speaker 01:
It's only meant to affect your ability to file a petition.

[00:21:14] Speaker 01:
Why isn't that the most

[00:21:16] Speaker 01:
reasonable plain language reading of the statute.

[00:21:18] Speaker 03:
Because that would make the second sentence a nullity, because the first sentence already makes clear that the one-year time limitation only applies to a petition.

[00:21:27] Speaker 00:
The first sentence applies to a petition, the second only to a petition, the second to a motion for joiner.

[00:21:33] Speaker 00:
Motion for joiner itself is not time barred, is it?

[00:21:35] Speaker 00:
There's nothing that bars the motion for time.

[00:21:39] Speaker 03:
No, the only timeliness limitation for the motion was the one that the PTO set in its

[00:21:45] Speaker 03:
regulations, which is that it be filed within a month after the decision on institution, which Apple plainly complied with.

[00:21:52] Speaker 03:
And the question whether there's a separate application of a one-year time bar in the case where Apple filed both of them within the time period required for Joinder, that's something we think is addressed by the second sentence of 315B, which is it doesn't apply to a request for Joinder, including the petition that's filed with it.

[00:22:11] Speaker 01:
And I think the most you get to.

[00:22:12] Speaker 01:
Perhaps you said earlier that perhaps there are two reasonable interpretations of Section 315B.

[00:22:20] Speaker 01:
And you said, and therefore, if there is, we should give Chevron deference to the PTO's interpretation.

[00:22:24] Speaker 01:
Is that right?

[00:22:25] Speaker 03:
I don't think their interpretation is reasonable.

[00:22:28] Speaker 03:
But if the court thinks it's reasonable, then the tiebreaker is Chevron deference.

[00:22:31] Speaker 01:
Do you think it's possible that you're just, do you really think you can stand there and say this other interpretation is not reasonable, you as a person,

[00:22:39] Speaker 01:
as divorced from you as the litigator for Apple at the moment, because it's really surprising to me that you could say their interpretation is not reasonable, because, you know, it's quite frankly my interpretation.

[00:22:51] Speaker 01:
So it's surprising to me that you would stand here and tell me that you personally do not believe that it's at all reasonable.

[00:22:55] Speaker 03:
I obviously don't mean to suggest, Your Honor, that you are being unreasonable if that is your view of things.

[00:23:00] Speaker 03:
I mean, I'd point out, I think, five judges of this Court in other decisions, which are not binding.

[00:23:05] Speaker 03:
recognized, but in the Akade's panel opinion.

[00:23:08] Speaker 04:
So how do we get to where you want to go if we're not buying into the Chevron deference?

[00:23:13] Speaker 03:
Well, I don't know.

[00:23:15] Speaker 03:
Well, OK, then I think ultimately it is the colloquy that Your Honors had with my colleague, which is that there is no harm here and no remedy that this court would impose that would be meaningful.

[00:23:26] Speaker 01:
See, and I think you might be onto something here.

[00:23:28] Speaker 01:
Let me spin it out for you, because I'm proposing an extraordinarily narrow way to resolve this case that allows you to win.

[00:23:34] Speaker 01:
All right.

[00:23:35] Speaker 01:
So I'm just going to put it out there so you don't assume that this is a hostile question because I've asked you some hostile questions.

[00:23:40] Speaker 01:
I want you to relax.

[00:23:41] Speaker 01:
It's not hostile.

[00:23:42] Speaker 01:
All right.

[00:23:43] Speaker 01:
So let me spin it out for you.

[00:23:44] Speaker 01:
What about this?

[00:23:45] Speaker 01:
What about there may well be cases in which there's prejudice?

[00:23:48] Speaker 01:
For example, opposed to petitions were not limited to the same issues and that the board ultimately concluded that Apple issues are the ones that ought to prevail in the petition and they either don't address the mangrove issues or don't agree with them.

[00:24:03] Speaker 01:
then we would potentially have prejudice, right?

[00:24:06] Speaker 03:
I think you could well, yes.

[00:24:07] Speaker 01:
And so maybe the answer could be in a very narrow way that we don't have to reach whether Apple was properly joined in this case under the statute because we have two identical petitions and the board had an obligation to resolve Mangrove's petition either way.

[00:24:25] Speaker 01:
And so we just treated it as having done that, and thus there's no prejudice.

[00:24:29] Speaker 03:
I think the court could certainly rule that way.

[00:24:30] Speaker 03:
And in fact, that's why I tried to... Sorry.

[00:24:32] Speaker 04:
But then let's assume for sake of argument that we decide to remand this case.

[00:24:38] Speaker 04:
So does that foreclose Apple's participation on remand?

[00:24:43] Speaker 03:
Even if it did, I don't think a remand on this basis would serve any purpose.

[00:24:47] Speaker 03:
Because as Judge Moore's question or proposal suggested, the remand would simply be, even if you took Apple out of the proceeding entirely,

[00:24:54] Speaker 03:
Board, please decide this case based on Mangrove's petition and Mangrove's evidence and Mangrove's arguments that you have already determined as a board are sufficient to carry the burden.

[00:25:05] Speaker 01:
I'm sorry.

[00:25:05] Speaker 01:
I think you misunderstand.

[00:25:06] Speaker 01:
I believe that Judge Prost's question may have meant to suggest what if we don't agree with you on, for example, the secure server or the client or any one of those other issues.

[00:25:19] Speaker 01:
And if any of them require vacating and remanding on the merits,

[00:25:23] Speaker 01:
to what extent, if we don't reach this Joinder issue, to what extent does Apple participate below?

[00:25:28] Speaker 01:
Like, for example, would you be willing to agree not to participate and back out of the petition if it were vacated and remanded?

[00:25:36] Speaker 03:
Well, I mean, at this point, no, I do understand that.

[00:25:39] Speaker 01:
The point is, you're probably going to force us to decide the Joinder issue, because if we don't agree with you on the merits, it has to go back.

[00:25:47] Speaker 01:
And so we probably have to set parameters as to whether Apple is allowed to participate if it goes back.

[00:25:52] Speaker 03:
Do you see where I am?

[00:25:54] Speaker 03:
I do understand the import of the question.

[00:25:56] Speaker 03:
And I think if the parameters were to be the ones that Your Honor suggested, where we can't go beyond the issues that Mangrove has petitioned on and we can't go beyond the discovery and the arguments that Mangrove has made,

[00:26:07] Speaker 03:
Those limits were already in place.

[00:26:09] Speaker 03:
The board put them in place.

[00:26:10] Speaker 03:
It said that Apple could not raise any additional issues.

[00:26:13] Speaker 03:
It couldn't engage in any further discovery.

[00:26:15] Speaker 03:
It would be up to Mangrove to decide which attorneys presented at the hearing.

[00:26:19] Speaker 03:
And it wasn't just Apple's attorney.

[00:26:20] Speaker 03:
Mangrove's attorney presented as well.

[00:26:22] Speaker 01:
I know, but what if we think the board's opinion is at a minimum incomprehensible in certain places vis-a-vis anticipation?

[00:26:29] Speaker 01:
And what if we need to send it back and tell the board either clarify your opinion or go ahead and reach obviousness?

[00:26:36] Speaker 01:
See the problem for me is what happens with Apple if we do that if we're not going to reach the Joinder issue.

[00:26:42] Speaker 01:
If we don't reach Joinder then theoretically we're just punching kicking the can down the road so that because you guys would represent Apple you'd continue to participate in the IPR at that point if we don't bar you from doing so.

[00:26:55] Speaker 01:
and say the statute bars you from doing so, and then it comes back up and the next panel has to decide whether you're properly trying.

[00:27:00] Speaker 03:
I think we would continue to participate, but not in a way that is cognizable prejudice to vernetics.

[00:27:06] Speaker 03:
Vernetics has no right to a particular adversary or a particular lawyer representing the adversary.

[00:27:12] Speaker 03:
The question is, I think as your question indicated,

[00:27:16] Speaker 03:
Has there been some substantive change in the nature of the arguments or the evidence that the board relies on through the Joinder process?

[00:27:25] Speaker 03:
And the answer is clearly no.

[00:27:27] Speaker 03:
The board was very careful to manage this proceeding so that Apple's participation did not work any cognizable unfair prejudice to vernetics.

[00:27:34] Speaker 01:
But they don't do that all the time.

[00:27:36] Speaker 01:
The bio brief was excellent, pointing out lots of examples where the board has gone a lot further in other cases than they've gone in your case in terms of allowing

[00:27:46] Speaker 01:
people to be combined with themselves when they were untimely raising new arguments and then joining the new arguments the bio brief articulated and pointed us to a number of different cases that had a number of scenarios that went much further than yours in terms of would this create those scenarios would in fact create prejudice so the problem is if I have to decide the Joinder issue I'm not just deciding it for your case where the board actually limited you to mangroves issues

[00:28:15] Speaker 01:
I'm deciding it for all cases, including the ones where the board didn't limit Joinder of only identical issues, where it allowed new issues, new parties that are untimely to raise new issues, joined them in, and then forced the patentee to deal with all the issues, even the ones not raised by the only timely filed petition.

[00:28:34] Speaker 01:
So what do I do about that?

[00:28:36] Speaker 03:
I could envision, Your Honor, writing an opinion that says,

[00:28:39] Speaker 03:
We do not need to decide the merits of the Joinder challenge because even if frenetics were correct, there has been no harm because the board was careful to manage these proceedings so that Apple's participation did not work any unfair prejudice.

[00:28:54] Speaker 03:
And so we leave the Joinder question for another day.

[00:28:56] Speaker 01:
And in this case, I just want to make sure I understand the facts.

[00:28:59] Speaker 01:
Did, and I think I do, did Apple utilize its involvement in this petition

[00:29:05] Speaker 01:
to go in this IPR proceeding to go back and try to ask the district court, for example, for a stay.

[00:29:10] Speaker 01:
I know the answer is no, because I already looked at the docket.

[00:29:12] Speaker 01:
But I just want to discuss it with you to make sure I'm not overlooking any potential prejudice to a patentee if I do what you're suggesting, because it's creative, and I like creative.

[00:29:22] Speaker 01:
But I want to make sure, because for example, you do know, of course, that if IPR has been instituted and you're involved in it, you can ask the district court for a stay of a parallel litigation.

[00:29:32] Speaker 01:
That's not the kind of thing that's occurred here, because that kind of

[00:29:34] Speaker 01:
gamesmanship could be a basis on which they could say there's prejudice to allow Apple to be involved in this petition, because they're using it to thwart the district court case.

[00:29:44] Speaker 03:
I mean, there were requests for stay, but they didn't turn on Apple's participation in the proceeding.

[00:29:50] Speaker 03:
A request for a stay based on the fact that the board has invalidated claims at issue in litigation.

[00:29:55] Speaker 01:
But those stay requests weren't granted.

[00:29:57] Speaker 03:
No, no, they certainly were not.

[00:29:58] Speaker 01:
So as of now, there is no even arguable prejudice, because they tried to maybe

[00:30:02] Speaker 01:
Maybe Apple tried to use the petition as a basis, but it didn't result in a stay in the district court.

[00:30:07] Speaker 03:
All efforts to stay, either the trial that's on appeal in the third case this morning and the subsequent one.

[00:30:11] Speaker 01:
Do you understand what I'm saying?

[00:30:12] Speaker 01:
Because no district court's going to stay a district court litigation based on an IPR on a patent that the parties to the litigation are not necessarily involved in the IPR.

[00:30:21] Speaker 01:
Like, if Apple were to party to the mangrove IPR, district court wouldn't consider staying it.

[00:30:26] Speaker 01:
I'm not aware of any district courts that have stayed district court litigation simply because a patent ends up in an IPR if it's not

[00:30:32] Speaker 01:
one of, if it's not the party that's in the litigation, are you aware of that?

[00:30:36] Speaker 03:
I must confess I haven't researched that question, but I, you know, and there are also re-exams on these patents that have been staged with a number of different other proceedings going on.

[00:30:45] Speaker 01:
My concern about Joinder, as you can tell, is about prejudice, right?

[00:30:48] Speaker 01:
Of course, absolutely.

[00:30:49] Speaker 01:
If there's no prejudice in this case because the PTO is limited, I just want to make sure there's no ancillary or tangential prejudice.

[00:30:55] Speaker 03:
There is not, for the simple reason, as Your Honor said, that none of these litigations were ever staged.

[00:30:59] Speaker 03:
They went forward, they continued, they've gone to judgment,

[00:31:01] Speaker 03:
And that includes the follow-on litigation, which is in briefing before this Court now in the 855 case.

[00:31:05] Speaker 04:
Has the Board said anything about whether or not in the hypothetical joiner, which is not this case, whether or not the PTAB is permitted to allow a joining party to introduce issues beyond or other than were made in the original timely filed petition?

[00:31:25] Speaker 03:
I must confess, I don't know what the board has said in other cases.

[00:31:29] Speaker 03:
It's possible that it has said that.

[00:31:32] Speaker 03:
But if that is problematic, then those can be addressed in those cases, which are not before the court at this point.

[00:31:38] Speaker 04:
The regulation doesn't speak to that, right?

[00:31:40] Speaker 04:
It doesn't have any limitations.

[00:31:42] Speaker 03:
It doesn't speak to... No, the board's decision to join is, of course, discretionary.

[00:31:48] Speaker 04:
and the board could always deny that situation.

[00:31:55] Speaker 03:
Well, I can't say for sure that the board has never decided a case, as Your Honor describes, or isn't considering one.

[00:32:02] Speaker 03:
That may well happen, but if it does... Wait a minute, time out.

[00:32:04] Speaker 01:
Aren't you aware of the cases in the bio brief, pages 23 to 25?

[00:32:08] Speaker 01:
And in some of those cases, didn't they allow issues to be joined that weren't part of the timely filed petition?

[00:32:14] Speaker 03:
I think that's, that's probably correct.

[00:32:16] Speaker 03:
And if that is an error, if that is an error, your honor, then that will be presumably appealed to this court.

[00:32:22] Speaker 01:
But it's not an issue here.

[00:32:22] Speaker 01:
How would that be an error though?

[00:32:23] Speaker 01:
Time out.

[00:32:23] Speaker 01:
How would it be an error?

[00:32:24] Speaker 01:
If Joinder was proper in this case, the statute, the purpose behind Joinder is to prevent untimely people from getting to participate.

[00:32:35] Speaker 01:
It's not to prevent issues from being heard by the PTO because anyone else can bring the issues.

[00:32:39] Speaker 01:
That the purpose behind Joinder

[00:32:41] Speaker 01:
the one-year time bar, I should say, is to prevent people who had an interest, who had knowledge, but who chose not to come forward in a timely fashion, to prevent them from then getting the benefit of a second bite at the apple through IPR.

[00:32:57] Speaker 01:
But the purpose isn't issue preclusion, because any third party can bring an IPR with the same exact issues.

[00:33:03] Speaker 01:
It's a party-related bar in 315B.

[00:33:06] Speaker 01:
It's not an issue-related bar.

[00:33:09] Speaker 01:
So why

[00:33:10] Speaker 01:
What about this statute leads you to believe, I will tell you, I think there is nothing in this statute anywhere that gives me even the slightest concern that Congress thought joined or couldn't occur with different issues.

[00:33:24] Speaker 01:
I see nothing that prevents the PTO from joining two petitions that have totally different issues in them, if it so chooses.

[00:33:32] Speaker 01:
Do you see anything in the statute that gives congressional intent type

[00:33:38] Speaker 01:
idea anything in the statute anywhere that suggests Joinder can only occur when the issues are the same?

[00:33:44] Speaker 03:
So we've come a long way from this case but to answer your question no I don't think so.

[00:33:48] Speaker 03:
I think that the goal of or one of the goals of the statute at the very least was to allow the board to take a second look and revisit issued patents as the Supreme Court said in in Quozo and anything that allows the board to do that in the way that in its discretion it thinks is most effective through Joinder is appropriate.

[00:34:04] Speaker 03:
I think it's important to remember also on the on the other

[00:34:07] Speaker 03:
beginning of the question, which talked about the one-year time bar being to prevent certain parties from being able to file at all, that is not a goal that is pursued at all costs.

[00:34:16] Speaker 03:
And when the PTO filed its brief in the related mandamus docket before briefing in this appeal began, which is number 16-119, the PTO's brief at 12 to 13 says it's not a legislative judgment that Congress pursues at all costs.

[00:34:31] Speaker 03:
and the patent owner's interest in quiet title is substantially diminished.

[00:34:35] Speaker 03:
I'm reading from the PTO's brief in opposing a stay when Vernetics petitioned for mandamus in this case.

[00:34:41] Speaker 01:
And this is what kind of authority?

[00:34:43] Speaker 03:
Well, it's not authority.

[00:34:44] Speaker 03:
It's an argument that the PTO made for why, just to answer the question, as to whether the goal of the one-year time bar provision is to prevent parties like Apple from participating.

[00:34:54] Speaker 01:
So I should defer to an argument the PTO made in another case

[00:34:58] Speaker 01:
regarding congressional intent behind the statute.

[00:35:00] Speaker 03:
It's not another case, Your Honor.

[00:35:01] Speaker 03:
It is this very case when Vernettix was trying to get mandamus to the board's proceeding.

[00:35:09] Speaker 03:
And what this court pointed out, I'm not asking for deference.

[00:35:11] Speaker 03:
I'm just saying I think this is a correct understanding of what Congress was trying to do.

[00:35:15] Speaker 01:
Isn't the statute the correct understanding of what Congress was trying to do?

[00:35:18] Speaker 03:
Of course, but it's an, see the statute has two sentences.

[00:35:23] Speaker 03:
One says there's a time bar for one year that applies to petitions.

[00:35:26] Speaker 03:
The other says it does not apply to requests for joiner.

[00:35:28] Speaker 03:
And in terms of putting them together, what the PTO explains, which I think is correct, is that the policy of not allowing time barred parties to participate in these proceedings gives way when the patent in question is already the subject of an ongoing IPR.

[00:35:44] Speaker 03:
And that was the only thing I was trying to get to.

[00:35:46] Speaker 03:
That is what the PTO is talking about in its brief to this court in the Mandamus case.

[00:35:51] Speaker 03:
I think it's correct, and that's how you reconcile the two parts of 315b.

[00:35:55] Speaker 04:
But how does that sentence affect the issue?

[00:35:57] Speaker 04:
I mean, are we supposed to assume as a backdrop that the issues are the same and the arguments are the same?

[00:36:02] Speaker 04:
How does that statement play if we're dealing with a case in which the joined party brought in all this new stuff?

[00:36:12] Speaker 01:
I don't think it necessarily affects that situation, but it's not the situation we have here, and that just shows that there's no... Just to be clear, when you say it doesn't affect that situation, you mean under your interpretation of the statute, I want to be very clear, under your interpretation of the statute, the joined party could bring in totally separate prior art, totally separate arguments that were not raised in the timely filed petition, and that those arguments could, under the PTO's authority, be joined to the properly filed petition and could form the entire basis

[00:36:39] Speaker 01:
for the resolution of the IPR, if that's the way the PTO went under the statute.

[00:36:43] Speaker 01:
That is your view or interpretation of 315-B.

[00:36:45] Speaker 03:
I think if you ask me as an academic question, I think that probably is the right interpretation of the statute.

[00:36:50] Speaker 03:
And it's at the very least a reasonable interpretation that the PTO is entitled to adopt.

[00:36:54] Speaker 03:
You don't need to decide that here.

[00:36:55] Speaker 00:
What's the purpose of having the time bar to begin with if you're going to have a back door by which the same party that was barred can come back in at a later point just by a motion for a joiner and then present the same arguments?

[00:37:10] Speaker 03:
Well, the idea is to make sure there aren't any serial challenges.

[00:37:13] Speaker 03:
There's a challenge by a timely party and then a separate challenge by an untimely party that exposes the patentee to multiple different proceedings.

[00:37:21] Speaker 03:
But it gives the board the discretion.

[00:37:23] Speaker 03:
It's not mandatory.

[00:37:24] Speaker 03:
The board wasn't required to join Apple here.

[00:37:26] Speaker 03:
But it gives them the discretion to join in multiple proceedings into one, so it has the benefit of all the arguments.

[00:37:32] Speaker 00:
It seems to me that after a point in time, then parties at a time mark can find a way back into the proceedings.

[00:37:40] Speaker 00:
And that's what gives me a little bit of pause for your argument, especially the argument that you can come in and bring whole new issues.

[00:37:49] Speaker 03:
I think there are reasonable policy arguments on both sides, I would say.

[00:37:56] Speaker 03:
I don't think either one is rendered.

[00:37:59] Speaker 03:
I don't need to argue that Vernettix's argument or the policy argument your honor articulated is unreasonable.

[00:38:05] Speaker 03:
I think that's what an agency which is tasked with making regulations expressly by Congress under this provision is entitled to decide.

[00:38:13] Speaker 03:
And there is no argument on Vernettix's side under Chevron step two that the rule the PTO promulgated is somehow an unreasonable choice for an agency to make.

[00:38:23] Speaker 03:
It's certainly reasonable.

[00:38:24] Speaker 03:
It simply does what the PTO previously told this court, which is it balances the interests of the patent holder against the interests in making sure that these patents are

[00:38:33] Speaker 03:
fairly reviewed and that... Well, whether it's reasonable terms, doesn't it, on how we interpret 315B?

[00:38:38] Speaker 01:
Sure.

[00:38:39] Speaker 01:
Because if we interpret 315B as saying you can join outside of the one-year period, you can file a request for joiner, that a request for joiner is not limited to the one-year period the same way the filing of a petition is.

[00:38:53] Speaker 01:
then the PTO's regulation, if that is the interpretation of the statute, isn't reasonable, correct?

[00:38:58] Speaker 01:
Because it's directly in conflict with the statute.

[00:39:00] Speaker 03:
I think if that's how you conclude the statute is read, that it can only be read the way Vernettix is arguing, then that's right.

[00:39:06] Speaker 01:
Well, not that it can only be read, but that that is the plain language of the statute.

[00:39:10] Speaker 01:
If we conclude that's the plain language of the statute, then

[00:39:13] Speaker 01:
That's the end of it, right?

[00:39:14] Speaker 03:
Yes, but I think in so concluding, you would have to conclude that any other reading is unreasonable, that it can't be read that way.

[00:39:20] Speaker 01:
So the problem is, if we adopt your reading, though, it's the Pandora's box.

[00:39:24] Speaker 01:
I hate saying that out loud, because I hate even using those words.

[00:39:27] Speaker 01:
It's stupid.

[00:39:28] Speaker 01:
But it is because all of those other things that we just talked about, about Joinder or on the table, there are no limitations placed on the PTO regarding the issues that can be allowed to be joined together.

[00:39:39] Speaker 01:
So the problem becomes if your reading is the correct reading of the statute, then the PTO has discretion to join whole new issues that should be time barred by virtue of 315B but aren't because suddenly there's a request for jointer.

[00:39:58] Speaker 01:
And those new issues are the ones that could resolve the whole case.

[00:40:02] Speaker 01:
And I just don't understand what the point of 315B's first sentence is any longer.

[00:40:08] Speaker 01:
if that can occur.

[00:40:09] Speaker 03:
So I think that's why I was offering Your Honor the opportunity to not answer the question because of the way it was done in this case.

[00:40:17] Speaker 04:
There might be an easy reason why this is absolutely wrong, but just thinking out loud, is there a way to argue that the issue that is not present in this case about other issues being brought in by the untimely joint petitioner, that would be tested under the abuse of discretion and see

[00:40:37] Speaker 04:
I mean, all this jointer is is the ability of the director to, at his discretion, determine whether or not to join.

[00:40:46] Speaker 04:
Is it conceivable?

[00:40:48] Speaker 04:
This may be really awful, not correct.

[00:40:53] Speaker 04:
But is it conceivable to say that we could test if we found objectionable or really unfairly prejudicial to a patent owner to allow new issues to be joined by an untimely party?

[00:41:06] Speaker 04:
Could that issue be tested under an abuse of discretion under C?

[00:41:11] Speaker 03:
As I stand here, it could be.

[00:41:13] Speaker 03:
I think one might have to sort of figure out what the interplay is with the jurisdictional bar on preliminary review of preliminary procedural issues.

[00:41:21] Speaker 03:
But certainly, if it implicated a time bar under the court's decision in Wi-Fi 1, I think it probably would be reviewable.

[00:41:28] Speaker 03:
But again, that's not an argument they've made.

[00:41:31] Speaker 01:
But just to be clear,

[00:41:33] Speaker 01:
Based on everything you said to me before about your understanding of the statute, you wouldn't agree that it could be challenged that way, would you?

[00:41:38] Speaker 01:
Because you and I see this, I think, with the statute the same way.

[00:41:42] Speaker 01:
I see no indication that Congress intended to put a subject matter limitation on the PTO's ability to join petitions related to the same patent.

[00:41:52] Speaker 01:
Do you see anything in the statute anywhere that suggests?

[00:41:55] Speaker 01:
No.

[00:41:55] Speaker 03:
Answering the question academically, Judge Moore, no.

[00:41:57] Speaker 03:
I don't see anything.

[00:41:58] Speaker 03:
I was assuming the predicate of Judge Brewer's question.

[00:42:00] Speaker 01:
So if Congress intended no limit

[00:42:02] Speaker 01:
on the issues that could be brought, and there appear to be none in here, and there's lots of good reasons to think there should be none, the PTO's argument, policy-based argument you raised for me, and the idea that Congress intended IPR scared of bad patents.

[00:42:15] Speaker 01:
I can think of no policy things articulated by Congress in the adoption of the AIA, which would justify such a limit.

[00:42:22] Speaker 01:
So it's hard for me to imagine under what authority we could conclude that's an abusive discretion.

[00:42:27] Speaker 01:
Do you have any thoughts on how we could get there?

[00:42:29] Speaker 03:
Well, I assume that if there were to be the kind of review that Chief Judge Prost was hypothesizing, assuming there's jurisdiction to do it, there would be some kind of analysis as to what factors the board had considered, what the level of prejudice to the patentee actually was.

[00:42:45] Speaker 03:
And if it was truly of a level where this court thought there should be some kind of remedy, then it would find an abusive discretion.

[00:42:52] Speaker 03:
But, you know, again, we're a long way from this particular case where there isn't even an argument of that.

[00:42:57] Speaker 01:
Can't we all find a bit of discretion if we believe Congress meant for them to have some limit?

[00:43:02] Speaker 01:
Is there meant for there to be some limit on it?

[00:43:05] Speaker 03:
I'm sorry, I don't quite understand.

[00:43:08] Speaker 01:
Okay, forget it.

[00:43:09] Speaker 01:
You're way over your time.

[00:43:10] Speaker 01:
It's mostly my fault, so I'll stop.

[00:43:11] Speaker 03:
I'm happy to address any other questions the Court has.

[00:43:13] Speaker 03:
We didn't spend much time on the merits, and to the extent there's anything the Court would like me to address, I'm happy to do it.

[00:43:19] Speaker 04:
Thank you.

[00:43:20] Speaker 03:
Thank you very much, Your Honor.

[00:43:33] Speaker 02:
Thank you.

[00:43:35] Speaker 02:
Thank you, Your Honors.

[00:43:35] Speaker 02:
I'd actually like to start with the issue of prejudice.

[00:43:37] Speaker 02:
I think this court does need to address the 315B issue here, even if there's a remand.

[00:43:42] Speaker 02:
The reason is simple.

[00:43:43] Speaker 02:
Judge Moore, I think one of the things that is critical here is Apple actually submitted additional evidence and argument on top of mangroves.

[00:43:50] Speaker 02:
And you can find that at A1881284 for the 135 petition.

[00:43:58] Speaker 02:
Did Apple ever request a stay in the proceedings?

[00:44:02] Speaker 02:
And that was going to be my next point, Judge Reyna.

[00:44:05] Speaker 02:
Stay of the district court proceedings, you were saying?

[00:44:08] Speaker 00:
In the IPR, in the agency proceedings.

[00:44:12] Speaker 02:
Did they request a stay of the agency proceedings?

[00:44:15] Speaker 02:
Yes.

[00:44:15] Speaker 02:
No, not a stay of the agency proceedings.

[00:44:18] Speaker 02:
But Apple did rely on these very same IPRs that Apple took over and prosecuted before the board

[00:44:24] Speaker 02:
to ask for a stay before the district court.

[00:44:26] Speaker 02:
So Judge Moore, that goes back to your question on prejudice.

[00:44:28] Speaker 01:
But the fact that Apple submitted... It could have prejudiced you, but it didn't, because the district court didn't grant the stay.

[00:44:34] Speaker 04:
Sure, Your Honor, but again, I wouldn't be surprised if Apple... In fact, the stays... Well, we'll get to the third case later, but the stays, their repeated request for stays was not helpful.

[00:44:43] Speaker 02:
Absolutely, but I think the critical piece that I would like to reiterate is

[00:44:46] Speaker 02:
Apple did submit additional argument and evidence on top of mangroves, which is one of the reasons why there's prejudice here.

[00:44:53] Speaker 02:
And again, that's at 188.1 to 84 for the 135 petition.

[00:44:58] Speaker 00:
But there's no statutory provision that prevents that from happening, right?

[00:45:03] Speaker 02:
I think it is the 315B and 315C, Your Honor.

[00:45:06] Speaker 02:
We believe Apple, a time-barred party, cannot join new issues to the proceedings.

[00:45:11] Speaker 02:
And going to the NIDAC case that my colleague mentioned, the NIDAC case actually, I think, helps us.

[00:45:15] Speaker 02:
Not them.

[00:45:16] Speaker 00:
They are... The statute doesn't say that, what you just said.

[00:45:20] Speaker 00:
It doesn't say that you cannot add new issues to the proceedings.

[00:45:24] Speaker 02:
Absolutely, Your Honor.

[00:45:27] Speaker 02:
You certainly can join properly filed petitions with different issues.

[00:45:31] Speaker 02:
But here, I think the problem we have is, as the court pointed out in the NIDAC, this was a concurrence.

[00:45:36] Speaker 02:
The court said, where there are new issues raised, which was the case here, Joinder very well would be time barred.

[00:45:42] Speaker 02:
And we think it is time barred here for that very same reason.

[00:45:45] Speaker 02:
And just so the court has the site for the additional evidence for the 151 proceeding, it's at 837-54-59.

[00:45:52] Speaker 02:
So there was additional evidence and argument

[00:45:54] Speaker 02:
that was submitted by Apple on top of mangroves here.

[00:45:56] Speaker 01:
What is the additional evidence or argument?

[00:46:00] Speaker 02:
So Your Honor, it had to deal with it dealt with printed publication issues for some of the references.

[00:46:06] Speaker 01:
But that's not an issue that wasn't a basis at all of the board's conclusion.

[00:46:09] Speaker 01:
I mean there was no relevance of that to the conclusion the board reached on anticipation.

[00:46:15] Speaker 02:
Certainly not on anticipation, but the obviousness findings dealt with the issue of whether those references are printed publications or not.

[00:46:22] Speaker 02:
So with respect to the obvious findings, those references were very well in play.

[00:46:27] Speaker 02:
And as you know from the board's decision, they were in play.

[00:46:30] Speaker 02:
And I think the court doesn't need to go beyond these proceedings as to what Apple has been able to do.

[00:46:36] Speaker 02:
We have been battling with Apple for over seven or eight years.

[00:46:41] Speaker 02:
Apple filed inter-partisan examination.

[00:46:42] Speaker 02:
They filed IPR petitions that were denied.

[00:46:45] Speaker 02:
Then they had New Bay, then entity New Bay.

[00:46:48] Speaker 02:
Their petitions were dismissed.

[00:46:50] Speaker 02:
Then RPX had Apple file petitions.

[00:46:52] Speaker 02:
where Apple had RPX file petitions, and now we have mangrove.

[00:46:55] Speaker 02:
And I think my last point on this joiner issue is, under Apple's reading of the statute, you could have a time-barred petitioner, who petition has been rejected, can publicly advertise and say, here's a petition that you can file, and then Apple could try to join that proceeding and take over.

[00:47:13] Speaker 02:
A party like Apple could join and take over that proceeding.

[00:47:16] Speaker 02:
We think this court needs to stop that practice, and it needs to decide the 315B issue.

[00:47:21] Speaker 02:
And to the extent there is a remand, we would ask that the court allow for broad discovery based on our other issues, to the extent there is remand.

[00:47:29] Speaker 02:
And then just one final point on the DNS proxy.

[00:47:31] Speaker 04:
Meaning in discovery, you're back to the real party of interest.

[00:47:34] Speaker 02:
Right.

[00:47:34] Speaker 02:
My point is simple, that to the extent there's a remand, the court should let us investigate the mangrove and RPX connection.

[00:47:41] Speaker 02:
And then finally, on the DNS proxy module point that my colleague discussed,

[00:47:44] Speaker 02:
The board disclaimed any argument on the combination mapping.

[00:47:47] Speaker 02:
That was at 86, 87.

[00:47:48] Speaker 02:
The board relied on the name server, as we've discussed.

[00:47:54] Speaker 02:
And the combination argument we did discuss down before the board, and that's at 834, 67.

[00:47:58] Speaker 02:
So for all these reasons, we think the board's decisions should be set aside, unless the court has any other questions.

[00:48:04] Speaker 02:
Thank you.

[00:48:04] Speaker 02:
Thank both sides on the case.

[00:48:09] Speaker 04:
The next case for argument is 7.