[00:00:02] Speaker 06:
The United States Court of Appeals for the Federal Circuit is now open and in session.

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God save the United States and this honorable court.

[00:00:12] Speaker 03:
The first case for argument... The first case for argument this morning is 18-1456, Apple versus VotePALCOM.

[00:00:21] Speaker 03:
Mr. Perry, whenever you're ready to proceed.

[00:00:24] Speaker 02:
Thank you, Chief Judge Prost, and may it please the court.

[00:00:28] Speaker 02:
This appeal has been rendered moot by the court's decision in the Twitter appeal, which held that the representative claims of both patents are ineligible under Section 101.

[00:00:39] Speaker 02:
As a result, there is no longer a case or controversy between the private parties and the orders under review should be vacated.

[00:00:48] Speaker 03:
Voight-Powell.

[00:00:50] Speaker 03:
Let me interrupt you on that point.

[00:00:51] Speaker 03:
I'm sure you were going to get to this.

[00:00:53] Speaker 03:
In your argument in this regard, you make sort of separate arguments.

[00:00:57] Speaker 03:
Clearly, we understand the argument with respect to the overlapping claims.

[00:01:01] Speaker 03:
But even your presentation with regard to the non-overlapping claims, you use the word, and I think it's fair, which is it appears to be moot.

[00:01:12] Speaker 03:
So there's a little wiggle room there.

[00:01:14] Speaker 03:
It is a tougher, closer question, is it not, than the overlapping claim?

[00:01:19] Speaker 02:
Absolutely, Chief Judge Prost.

[00:01:20] Speaker 02:
The parties agree that the overlapping claims are moot.

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As to the non-overlapping claims, we submit that it's a question of claim preclusion or race judicata.

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These claims were included in the district court complaint.

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They were dropped by Voight Pal in response to an order from Judge Coe which required Voight Pal to pick its quote, take your best shot and pick your best ones.

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Voight-Powell did not appeal the claim narrowing order.

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Under this court's decision in the Katz case, which we decided in our suggestion, it is Voight-Powell's burden to show any patentable distinctness between the 20 narrowed claims and the 35 claims originally identified in the complaint.

[00:02:03] Speaker 02:
Voight-Powell has had three opportunities to make that showing.

[00:02:07] Speaker 02:
In the 101 appeal, it cited the acclaimed narrowing order in its notice of appeal, but it didn't pursue that argument on appeal, so we submit it's forfeited.

[00:02:16] Speaker 02:
In this appeal, Apple, in its opening brief, noted that the Twitter appeal would moot this appeal, and in its responsive brief, Voight-Powell made no response to that argument, rather than making the required showing, therefore forfeiting again.

[00:02:29] Speaker 02:
We then filed our suggestion of mootness, and we recognize, Your Honor, that it's a close question.

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We also recognize, by the way, that VoIPAL has changed counsel during these proceedings, and Mr. Hudnell had not addressed any of these issues.

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So we said in our suggestion of mootness, in so many words, it is VoIPAL's obligation to show patentable distinctness between the 20 claims and the 35.

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That is its burden under CAT, that is its burden under Simple Air, that is its burden under any claim preclusion doctrine, because our position

[00:02:58] Speaker 02:
is that the claims are essentially the same.

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We demonstrated that in the suggestion as to the illustrative and representative claims 1 and 74 of the 005 patent and VoIPal doesn't dispute it.

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VoIPal in its response to the suggestion ordered by this court does not argue that there is any patentable distinctness among these claims.

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And that's the third opportunity.

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And we would say three strikes in your app, Your Honor.

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It has had the opportunity and the obligation to show patentable distinctness, and it failed to do so.

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Therefore, the judgment in the first case encompasses all of the claims asserted in the complaint, including the 15 non-overlapping claims.

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And that's why the whole case is moved.

[00:03:41] Speaker 01:
Counsel, this is Judge Gerena.

[00:03:43] Speaker 01:
I'd like for you to explain exactly how CATS fits into this case.

[00:03:48] Speaker 02:
Yes, Your Honor.

[00:03:49] Speaker 02:
CATS sustained, of course, the general proposition that district courts can order patent holders to narrow their claims when they assert a large portfolio of multiple claims, and that when the challengers make an initial showing that there is duplication among the claims, the burden shifts to the patent owner to show that any non-asserted claims are patentably distinct from the asserted claims.

[00:04:14] Speaker 02:
That's the holding, a holding of CAHPS.

[00:04:16] Speaker 02:
There's lots in the CAHPS decision, of course.

[00:04:19] Speaker 02:
In this, and then additionally, the CAHPS case says that it's the patent holder's obligation if it believes that non-patentably distinct, excuse me, that patentably distinct claims have been excluded as a result of the narrowing order to challenge that on appeal.

[00:04:34] Speaker 02:
VoIPAL didn't challenge that in the 101 case, didn't challenge the exclusion order.

[00:04:38] Speaker 02:
In other words, acquiesced in the district court's ruling

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that all 20 claims, all 35 claims are essentially the same.

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Of course, that was borne out in the actual case.

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Only one representative claim from each patent was tested, and VoIPAL didn't even challenge the representativeness of that claim.

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There is no patentable distinction between the various claims in these patents.

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Again, the reason that CATS is important here, Judge Rana specifically,

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is Voight-Powell in response to our suggestion of mootness said two things.

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One, that it has no obligation to identify patentable distinctness, and two, that Apple had cited no authority for such an obligation.

[00:05:14] Speaker 02:
Both of those are wrong.

[00:05:15] Speaker 02:
Cass... Sorry.

[00:05:16] Speaker 01:
How can we know that there's claimed preclusion?

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We won't know that until a later point in time.

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If a later case is followed, that's when it's determined whether there's claimed preclusion or not.

[00:05:30] Speaker 02:
Well, Your Honor, in two district court cases, that would be right.

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The claim's conclusion also applies across district court to administrative proceedings.

[00:05:39] Speaker 02:
We know the court can evaluate it here in the context of the jurisdictional question.

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The VoIPAL cannot raise these claims against Apple in the future.

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That is our submission.

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There is no case or controversy as to those claims because it is barred as a matter of law from asserting them.

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It has no answer to that, or we haven't heard one yet.

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And if that's correct and we submit that it is, then this whole administrative proceeding is by the by.

[00:06:06] Speaker 02:
It makes no matter to the parties because their legal dispute was fully and finally resolved in the district court litigation, which was affirmed on appeal.

[00:06:15] Speaker 03:
Let's assume this all went down while the case was still pending before the board.

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Is this something the board, would you have quoted you or would you or should you have filed a motion for muteness to the board?

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And what then would happen?

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Would the board have to do the board, which is not supposed to do 101, but only 102, 103, as we know, was the board supposed to make a determination as to whether or not they're patentably distinct?

[00:06:43] Speaker 02:
No, Chief Judge, pros for two reasons.

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I mean, one factually, that's not that's not the sequence of events, of course, but even in the hypothetical world,

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The board is not bound by Article 3, unlike this court, so that the board may have administrative powers to evaluate patents.

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But when the case gets to this court and Article 3 kicks in, if there is no longer a case or controversy, this court is not authorized by our Constitution to render advisory opinions.

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Yet that's all that would happen in the appeal if the court were to decide it.

[00:07:12] Speaker 02:
So that it's an implementation of Article 3 here.

[00:07:15] Speaker 02:
Now, to be clear, as a practical matter, if the mootness had arisen during the board proceedings, we would have notified the board.

[00:07:22] Speaker 02:
The board could have made a decision, but I just want to make clear that Article 3 doesn't apply of its own force to the board, whereas it, of course, does to this court.

[00:07:32] Speaker 03:
Now, you made a passing reference in your remarks to the representative claims that were identified.

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Those were identified only with respect to the remaining

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overlapping claims, right?

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That was done and considered after the other claims, right?

[00:07:50] Speaker 02:
That is correct, Your Honor.

[00:07:52] Speaker 02:
Judge Coe ordered Voight-Powell to pick it.

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Take your best shot and pick your best ones.

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That was her quote.

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Voight-Powell did that and then she picked a representative claim.

[00:08:02] Speaker 03:
So that was when only the 19 were still left and the others were gone?

[00:08:06] Speaker 02:
Correct.

[00:08:07] Speaker 03:
I think Judge Hughes had a question, if I'm not mistaken.

[00:08:10] Speaker 03:
I thought I heard his voice.

[00:08:11] Speaker 03:
Judge Hughes?

[00:08:12] Speaker 03:
No, I don't.

[00:08:14] Speaker 03:
I'm sorry.

[00:08:14] Speaker 03:
I'm sorry.

[00:08:16] Speaker 02:
One last point on mootness, Your Honor, and I'd move on.

[00:08:19] Speaker 02:
The board also selected illustrative claims, again, which Voipal didn't dispute, one for each patent, and treated them all the same.

[00:08:27] Speaker 02:
And as to the 815 patent, the representative claim chosen by the district court, claim one, is the same as the illustrative claim chosen by the

[00:08:37] Speaker 02:
board claim one and the only claim of course actually analyzed in the final written decision.

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So we would submit even if there is some doubt as to the non-overlapping claims, given the identicality and the overlappingness of claim one of the 815, the court would have to vacate the 815 final written decision.

[00:08:57] Speaker 02:
And then as to the 005 patent, we demonstrated in a claim chart in our suggestion that there is no difference of substance between claim one and claim 74.

[00:09:07] Speaker 02:
the illustrative claim and the representative claim respectively and therefore Mr. Pudnall's, Voightel's concession also requires vacator of the 005 final written decision because in both cases the court, the board evaluated claims that were declared ineligible.

[00:09:23] Speaker 03:
Can I, can I just ask you one final question on this unless my colleagues obviously have something else?

[00:09:29] Speaker 03:
This is such an odd set of circumstances.

[00:09:32] Speaker 03:
And I know we're not that far into the IPR regime and all of these questions of establishments.

[00:09:37] Speaker 03:
There's no other case that we've ever dealt with that was pretty similar to this, right?

[00:09:43] Speaker 02:
Not that we've found or that I'm aware of, Chief Judge Prost.

[00:09:48] Speaker 01:
This is Judge Raina.

[00:09:49] Speaker 01:
We have addressed an issue in some of our prior cases that we find in this one.

[00:09:55] Speaker 01:
Mortel here is arguing that the appeal is not good because

[00:09:59] Speaker 01:
It can still petition for cert before the Supreme Court on our decision in Twitter.

[00:10:06] Speaker 01:
Can you speak to that?

[00:10:08] Speaker 02:
Yes, Your Honor.

[00:10:09] Speaker 02:
The mandate of this court in Twitter issued in May, Voigtpal made no motion to stay the mandate or to recall it.

[00:10:16] Speaker 02:
Therefore, that judgment of this court is binding and preclusive on Voigtpal.

[00:10:21] Speaker 02:
Mr. Hudnell, in his submission, did not make any representation that Voigtpal intends to petition for cert.

[00:10:27] Speaker 02:
He merely noted that time hasn't run.

[00:10:29] Speaker 02:
Of course, that time will run in October.

[00:10:31] Speaker 02:
We'll know whether or not they have by then.

[00:10:34] Speaker 02:
But the pendency of a cert petition doesn't affect the race judicata effect of a judgment once the mandate issues.

[00:10:39] Speaker 02:
That's one of the purposes of the appellate mandate is to make clear that when the preclusive effect of an appellate judgment kicks in and the mandate has issues and therefore... But there is no finality.

[00:10:49] Speaker 01:
There is no finality in Twitter if the window is still open for an appeal.

[00:10:55] Speaker 02:
There's no finality for certain purposes, but there is definitely finality for race judicata purposes because the mandate has issued, Judge Raina.

[00:11:03] Speaker 05:
Mr. Perry, this is Judge Hughes.

[00:11:06] Speaker 05:
I just have one question.

[00:11:09] Speaker 05:
For race judicata to apply, somebody has to determine that these non-overlapping claims are, whatever the right term is, basically the same as the ones found ineligible, correct?

[00:11:24] Speaker 02:
Correct.

[00:11:26] Speaker 05:
Who does that in this circumstance?

[00:11:29] Speaker 02:
This court, Your Honor.

[00:11:31] Speaker 02:
So let me answer that in steps, if I may.

[00:11:34] Speaker 02:
The question is whether the non-overlapping claims are the same, is quote unquote, essentially the same, or patentably distinct.

[00:11:42] Speaker 02:
That's the simple error decision, which describes the race judicata consequences of separate patent claims.

[00:11:48] Speaker 02:
Who makes that determination is, in general, the second court.

[00:11:52] Speaker 02:
Race judicata is always determined by the second court, not the first court.

[00:11:56] Speaker 02:
In this circumstance, this panel is, in effect, the second court.

[00:12:02] Speaker 02:
Ordinarily, there may be some dispute, right, about whether or not there is patentable distinctness.

[00:12:09] Speaker 02:
This is the importance of the Katz case, showing that it is Voigtpal's burden to show patentable distinctness.

[00:12:15] Speaker 02:
and the point of my recitation earlier that it has now had three clear and open opportunities to make that showing in this court, the 101 brief, the merits brief in this case, and the response to the suggestion of mootness.

[00:12:29] Speaker 02:
And each time, Voight-Powell has declined to make that showing.

[00:12:31] Speaker 02:
It hasn't even tried.

[00:12:33] Speaker 05:
Therefore... So let me... Can I just interrupt you?

[00:12:36] Speaker 05:
Sorry.

[00:12:37] Speaker 05:
Because I'm a little curious as to what

[00:12:40] Speaker 05:
your implication of their pointing out that they haven't tried to make that because it's, are you arguing that they waived the right to make that patentable distinctiveness argument now?

[00:12:54] Speaker 02:
Your honor, we do think they waived it in the 101 appeal when they noticed an appeal from the claim narrowing order, but then didn't pursue it in his brief.

[00:13:03] Speaker 02:
we recognized that this is sort of uncharted waters.

[00:13:06] Speaker 02:
And so we sort of spotted them two additional opportunities.

[00:13:10] Speaker 02:
We raised this issue in our opening brief, and they didn't respond.

[00:13:14] Speaker 05:
OK.

[00:13:14] Speaker 05:
You're almost out of time, but can I just wrap this up real quickly?

[00:13:19] Speaker 05:
So you think we have the authority in the first instance in an IPR appeal where 101 issues can't be considered to determine whether these are patently distinct for 101 purposes.

[00:13:34] Speaker 02:
For race judicata claim preclusion purposes, correct your honor, I don't think that the nature of the judgment makes any difference.

[00:13:42] Speaker 02:
The question is whether as a matter of claim scope, there is any patentable distinctness between them which would matter for, you know, obviousness or anticipation or anything else.

[00:13:51] Speaker 02:
I mean, yes, it was a 101 determination, but the point is they asserted, VoIPAL asserted all of these claims in its complaint.

[00:13:59] Speaker 02:
A subset was expressly adjudicated, but the judgment we submit encompasses all of them and they are therefore barred by race judicata from asserting them.

[00:14:07] Speaker 05:
But I think you said earlier, and I'm sorry to take you too much over, but I think you agree that the board could not have found race judicata on 101 grounds if it was at the board, right?

[00:14:20] Speaker 02:
I don't agree with that, Your Honor.

[00:14:22] Speaker 02:
I think the Board would not have determined the 101 ground, and the Board does not have procedures for determining race judicata because that's a judicial construct.

[00:14:31] Speaker 02:
However, I think the Board could have done so, and we would have raised it to the Board had it come up at that time.

[00:14:36] Speaker 02:
The way the facts here turned out, it came up after the Board proceedings had concluded.

[00:14:42] Speaker 03:
And I'm sorry to belabor this, but I can't resist.

[00:14:45] Speaker 03:
You just said in passing

[00:14:48] Speaker 03:
that they have the burden to show that the claims are patently distinct.

[00:14:52] Speaker 03:
Where is that coming from?

[00:14:53] Speaker 03:
Is that coming from the fact that they should have challenged the district court's initial determination that they should only pick these and not the others?

[00:15:03] Speaker 03:
Where is that burden coming from?

[00:15:05] Speaker 02:
Well, it's ultimately from Katz, Your Honor, and it is the point that the parties in the 101 case made the showing that the claims are all essentially the same.

[00:15:14] Speaker 02:
Judge Koh agreed with that.

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ordered VoIPal to pick its 20 best and it did.

[00:15:20] Speaker 02:
There was never any dispute in the record in that case as to whether there was distinction among the claims.

[00:15:25] Speaker 02:
Then Kat says, in so many words, if the patent holder thinks that one of the excluded claims, the non-asserted claims, is patentably distinct, it is its obligation to raise that on appeal.

[00:15:37] Speaker 02:
It didn't do it in that appeal and it didn't do it in this appeal even though we sort of threw down the gauntlet and challenged them twice.

[00:15:43] Speaker 02:
to do so, and that, you know, at some point it has to be somebody's burden, somebody has the obligation.

[00:15:48] Speaker 02:
We say they're all essentially the same.

[00:15:49] Speaker 02:
Judge Coe agreed, the board agreed.

[00:15:52] Speaker 02:
VoIPAL has to show some difference in order to avoid mootness we submit.

[00:15:58] Speaker 03:
Okay.

[00:15:59] Speaker 03:
Well, we obviously have all of the arguments on the underlying merits in the briefs, so we can easily rely on that.

[00:16:05] Speaker 03:
So, sorry we've taken all your time just on this one question, but I think it's important.

[00:16:12] Speaker 03:
Thank you.

[00:16:19] Speaker 03:
So Mr. Phan and Mr. Hudnell, you've divided up your time.

[00:16:23] Speaker 03:
You want to preface your remarks by telling us what you're going to talk about.

[00:16:27] Speaker 03:
Hi.

[00:16:29] Speaker 00:
This is Dennis Phan.

[00:16:32] Speaker 00:
I believe we're dividing our time seven minutes for me first on behalf of the PTO and then eight minutes on behalf of Mr. Hudnell.

[00:16:42] Speaker 00:
And if the court is all right, I'm happy to just start.

[00:16:49] Speaker 03:
No, we didn't.

[00:16:49] Speaker 03:
With Mr. Perry, we obviously never reached anything about the underlying merits of the IPR.

[00:16:56] Speaker 03:
Our entire argument was exclusively based on this mootness question.

[00:17:02] Speaker 03:
So do you have anything on that?

[00:17:04] Speaker 03:
Did the PTO... You want to talk about that?

[00:17:08] Speaker 00:
We... Your Honor, we don't.

[00:17:11] Speaker 00:
We have intervened only on the sanctions issue, and we think the sanctions are within the board's broad discretion, and so...

[00:17:17] Speaker 00:
Of course, if this court doesn't have questions for the government on the sanctions issue, we're more than happy, and the thing I was going to say was we're more than happy to cede our time to Mr. Hudnell from Voigtel to address the numerous questions.

[00:17:34] Speaker 03:
Okay.

[00:17:34] Speaker 03:
Well, unless my colleagues disagree, we didn't raise it in the first appeal, and I don't have any questions on that, therefore.

[00:17:44] Speaker 03:
I turn to my colleagues.

[00:17:46] Speaker 03:
Are they comfortable?

[00:17:47] Speaker 03:
No questions.

[00:17:49] Speaker 03:
Yeah.

[00:17:49] Speaker 03:
I don't have any questions.

[00:17:52] Speaker 03:
OK.

[00:17:52] Speaker 03:
All right.

[00:17:52] Speaker 03:
So let's hear from Mr. Hudnell.

[00:17:57] Speaker 06:
Good morning, Your Honors.

[00:17:58] Speaker 06:
May it please the Court, this appeal has not moved as to the non-overlapping claims.

[00:18:05] Speaker 06:
In fact, Your Honor, I believe that you pointed out one of the threshold problems with

[00:18:12] Speaker 06:
Apple's argument is that they say they, in their suggestion of mootness, they said that the case appears to be moot.

[00:18:20] Speaker 03:
Okay, but before we get to that, let me just question you about the overlapping claims.

[00:18:24] Speaker 03:
So there's no dispute, correct, that the overlapping claims are moot?

[00:18:31] Speaker 03:
You're not disputing that, right?

[00:18:33] Speaker 06:
That is correct, Your Honor.

[00:18:34] Speaker 06:
To the extent that our ability to petition for cert to the Supreme Court should not defeat mootness,

[00:18:42] Speaker 03:
we would agree that the appeal at the overlapping claims is the... So your view is that we would vacate a portion of the opinion, dismiss a portion of the opinion, or how would we proceed to deal with that?

[00:18:58] Speaker 03:
With respect to, again, let's just cover the overlapping claims first, and then we'll hear your argument on the not overlapping.

[00:19:04] Speaker 06:
Yes, correct.

[00:19:05] Speaker 06:
On the overlapping claims, they would...

[00:19:09] Speaker 06:
you are able to dismiss the case as to those claims.

[00:19:15] Speaker 01:
OK.

[00:19:17] Speaker 01:
This is Greg Rana.

[00:19:18] Speaker 01:
Wouldn't we have to vacate just that portion and with instructions that the board would dismiss?

[00:19:28] Speaker 06:
Yes, Your Honor.

[00:19:29] Speaker 06:
I mean, I think I wasn't sort of specifying a particular procedural mechanism.

[00:19:35] Speaker 06:
The only thing I was saying was that

[00:19:37] Speaker 06:
the appeal could be dismissed as to the overlapping claims.

[00:19:41] Speaker 06:
And if that requires vacating and remand to the board with instructions to dismiss procedurally how it happens, I didn't have a preference.

[00:19:50] Speaker 06:
All right.

[00:19:50] Speaker 06:
Thank you.

[00:19:54] Speaker 03:
Yeah.

[00:19:54] Speaker 03:
OK.

[00:19:54] Speaker 03:
Please proceed on the non-overlapping claims.

[00:19:58] Speaker 06:
Yes, Your Honor.

[00:20:00] Speaker 06:
So Your Honor, this court has announced a test for mootness.

[00:20:04] Speaker 06:
And the test is whether or least sought

[00:20:06] Speaker 06:
would, if granted, make a difference to legal interests of the parties.

[00:20:10] Speaker 06:
We cited the Nastasca case, 58 S3D, 1578 at 1580, for this proposition in our response to Apple's suggestion of mootness.

[00:20:24] Speaker 06:
The non-overlapping claims had not otherwise been declared invalid, so obviously it makes a difference to the interests of the parties.

[00:20:34] Speaker 06:
This makes a difference to the interests of the parties and therefore they're not moved.

[00:20:38] Speaker 03:
Well, maybe it makes a difference.

[00:20:40] Speaker 03:
What about Mr. Perry's argument that the claims are patentably indistinct and that it was your burden, and this has been going on up through the district court, it was your burden to show they are patentably distinct.

[00:20:58] Speaker 03:
And also your obligation to have appealed the district court's order, et cetera, all through the chain.

[00:21:04] Speaker 03:
You heard his argument this morning and in his briefs.

[00:21:07] Speaker 03:
What's your response to that?

[00:21:11] Speaker 06:
Yes, Your Honor.

[00:21:12] Speaker 06:
So first, first, claim conclusion is not at issue here.

[00:21:26] Speaker 06:
These claims were not before the district court.

[00:21:29] Speaker 06:
Claims are not before the board.

[00:21:30] Speaker 06:
Claims are not before this court in this matter.

[00:21:33] Speaker 06:
And so there's no, you know, Mr. Perry's argument, which I should point out is not contained in his, in Apple's suggestion of mootness, there's no, he cites no authority for that proposition.

[00:21:47] Speaker 06:
He cites the CAD case.

[00:21:49] Speaker 06:
When you look at their suggestion of mootness to see what authority they cited for placing the burden on us to establish that these claims were patentably

[00:21:59] Speaker 06:
in distinct, they cite no authority for that.

[00:22:01] Speaker 06:
In fact, what we did in our suggestion of mootness, Your Honor, is we pointed to the Simple Air case to show that one of the requirements to determine whether the claims are patently distinct is to have a claim construction.

[00:22:17] Speaker 06:
And there was no claim construction at the District Court.

[00:22:20] Speaker 06:
There's been no claim construction of these claims whatsoever.

[00:22:25] Speaker 03:
Wait a minute, wait a minute.

[00:22:27] Speaker 03:
I mean, this started with Judge Koh.

[00:22:29] Speaker 03:
The assumption, I mean, let's just apply a common sense here.

[00:22:33] Speaker 03:
Judge Koh wants to limit the number of claims, which is perfectly within her prerogative and something they do all the time.

[00:22:40] Speaker 03:
At that point, if these claims were patently distinct from the overlapping claims that we've talked about, wouldn't the obligation be on you to come forward and do something about that?

[00:22:58] Speaker 06:
if we wanted to keep them in the case, Your Honor.

[00:23:03] Speaker 06:
I mean, the reason Judge Cove narrowed the scope of the case in that case was because she indicated at a hearing that she was only going to consider 20 claims for the purposes of Apple's motion to dismiss under 35 U.S.C.

[00:23:24] Speaker 06:
Section 101.

[00:23:25] Speaker 06:
So at that point,

[00:23:27] Speaker 06:
at that point, Your Honor, and I think one significant point to the issue that's on the table here today is that we have no record, and I can't recall specifically how those claims were dismissed and what the paper was that dismissed them.

[00:23:43] Speaker 06:
It's not in the record here.

[00:23:45] Speaker 06:
I have to go back and check.

[00:23:48] Speaker 06:
But I'm assuming that we dismissed those claims without prejudice.

[00:23:52] Speaker 06:
So for Apple to come now and assert that we should have

[00:23:58] Speaker 06:
kept those claims in the case for some other purpose.

[00:24:02] Speaker 06:
There's no way based on the record here to determine how those claims were actually dismissed or the reasons that they were dismissed in the previous case.

[00:24:12] Speaker 03:
Are you suggesting that we don't have the authority here at the Article 3 level to make that assessment on our own?

[00:24:22] Speaker 03:
to look at the claims and say, okay, are they patently, leaving aside who's got the burden to show what.

[00:24:29] Speaker 03:
Do you say that we're without authority to make that determination here?

[00:24:33] Speaker 06:
No, Your Honor, I don't think that the court is without authority to do that, but as the court has said time and time again, it's not this court's obligation on the first instance and to construe these claims.

[00:24:49] Speaker 06:
This would have had to have been done

[00:24:51] Speaker 06:
at the district court level, and that wasn't done because those claims were dismissed.

[00:24:55] Speaker 06:
So if we're going to have a claim construction... Well, the question isn't really how to construe the claims.

[00:25:03] Speaker 03:
The claims are to look at one claim versus the other and say, are they patently distinct in the context of 101, right?

[00:25:11] Speaker 03:
So it's not technically a claim construction.

[00:25:13] Speaker 03:
It's a different kind of analysis, right?

[00:25:19] Speaker 06:
I don't completely agree with that, Your Honor, because as we cited from the simple air case in our suggestion of mootness, it says when different patents are asserted in a first and second suit, a judgment in the first suit will trigger claim preclusion only if the scope of the asserted claims in the two suits are essentially the same.

[00:25:38] Speaker 06:
And so there has to be a determination made as to whether the scope of the claims is essentially the same.

[00:25:44] Speaker 06:
And that determination inherently implicates claim construction.

[00:25:50] Speaker 01:
This is Judge Raina.

[00:25:51] Speaker 01:
Didn't Judge Coe make that determination when she ordered the parties to decide amongst the universal claims that were before her to pick out the 20 best claims and to give it their shot?

[00:26:11] Speaker 06:
No, Your Honor.

[00:26:13] Speaker 06:
Judge Coe, this was one of the main issues

[00:26:16] Speaker 06:
in the appeal, in the Twitter case, is the fact that Judge Coe did not conduct claim construction.

[00:26:22] Speaker 01:
And so... Well, it's not claim construction.

[00:26:26] Speaker 01:
It's just a determination of whether the claims are apparently distinct or essentially the same.

[00:26:35] Speaker 01:
That's not a claim... I'm sorry.

[00:26:37] Speaker 06:
I didn't mean to talk over you, Your Honor.

[00:26:39] Speaker 01:
Go ahead.

[00:26:41] Speaker 06:
Right, Your Honor.

[00:26:41] Speaker 06:
So, my response to your question is that

[00:26:45] Speaker 06:
Her determination was simply, I'm only going to consider 20 claims for Apple's Rule 12 motion to dismiss on 101.

[00:26:56] Speaker 06:
That's it.

[00:26:57] Speaker 06:
There was nothing more and nothing less.

[00:26:59] Speaker 06:
She wasn't asking us to pick representative claims.

[00:27:03] Speaker 06:
She wasn't dividing up the set of claims.

[00:27:06] Speaker 06:
I mean, one of these patents, the 815 patent, has over 100 claims.

[00:27:09] Speaker 06:
She wasn't asking us to divide claims into categories and give her representative claims.

[00:27:14] Speaker 06:
She just said, pick 20.

[00:27:15] Speaker 06:
And that's all I'm doing.

[00:27:17] Speaker 06:
And how you pick those 20 is completely up to you.

[00:27:20] Speaker 06:
And so we picked 20 and we dismissed 20 and that was it.

[00:27:24] Speaker 03:
Well, in your original complaint in this case, when you cited all of these claims and I don't know, was this the full, was it just these 19 and 14 or were there other claims ever in the complaint?

[00:27:38] Speaker 06:
Again, Your Honor.

[00:27:39] Speaker 03:
When you initially filed the case, I guess my question is, then I can look back at the record before Judge Koh, myself, but was there any differentiation of the claims or were the assertions in the original complaint just grouping all of these claims together?

[00:28:00] Speaker 06:
Again, I'm suffering because, again, we don't have that record here, but my recollection, Your Honor, is that the complaint

[00:28:08] Speaker 06:
only identified one claim for the purposes of meeting the pleading standard at the complaint stage, and that the identification of asserted claims came later, either through preliminary transmit intention or something similar to that.

[00:28:27] Speaker 06:
And then at that point, the judge went at the hearing where the judge co-ordered that the claims be reduced,

[00:28:36] Speaker 06:
She said, pick 20.

[00:28:38] Speaker 06:
Those are the ones I'm going to consider for the motion to dismiss.

[00:28:42] Speaker 06:
And we dismissed them.

[00:28:44] Speaker 03:
So what do you see in the future?

[00:28:46] Speaker 03:
If you were to assert, let's assume this case went down and we agreed with you the non-asserted claims live.

[00:28:54] Speaker 03:
They were rejected in the IPR.

[00:28:56] Speaker 03:
Let's assume that that decision is affirmed.

[00:28:59] Speaker 03:
So your view is you're free to assert those, and if you assert them against Apple, presumably they would make the same argument on 101.

[00:29:09] Speaker 03:
It would be a new game entirely.

[00:29:12] Speaker 03:
There'd be no race due to Cardo's act, no reference, no relevance to Judge Coates' earlier determination that we've affirmed.

[00:29:21] Speaker 06:
I would fully, well, two things, Your Honor.

[00:29:23] Speaker 06:
First, I, we, before we pause positions, those claims are still alive.

[00:29:28] Speaker 06:
They're still valid.

[00:29:29] Speaker 06:
declared invalid by any court.

[00:29:32] Speaker 06:
If we were to assert them in another case against Apple, they would have full opportunity to make the same claim preclusion arguments that they're trying to make now.

[00:29:43] Speaker 06:
So I would expect there would be a battle over whether VoIPAP would be precluded from asserting those claims.

[00:29:49] Speaker 06:
But that, again, I think, needs to be decided at the district court level because it implicates issues that simply aren't present in this appeal.

[00:29:59] Speaker 06:
And for most of those reasons is the need for claim construction.

[00:30:06] Speaker 05:
This is Judge Hughes.

[00:30:08] Speaker 05:
I'm still a little confused.

[00:30:11] Speaker 05:
So if that hypothetical happens, if you assert them in district court, and if somebody says the prior decision is race judicata, I take it that the question would then be whether the

[00:30:27] Speaker 05:
the claims that haven't already been declared ineligible are patently distinct.

[00:30:32] Speaker 05:
Is the question of whether claims are patently distinct a legal question or a factual question?

[00:30:46] Speaker 06:
I would say, well, I believe to the extent, I believe that it would be a legal question, Your Honor.

[00:30:56] Speaker 06:
It would be a legal question, ultimately, with perhaps some underlying factual issues.

[00:31:04] Speaker 06:
But ultimately, it would come down to the legal question.

[00:31:08] Speaker 05:
So let's just assume there are no... I get that there may be underlying factual issues on claim construction.

[00:31:14] Speaker 05:
But let's just assume, for purposes of this case, there aren't.

[00:31:17] Speaker 05:
And it's a pure legal question.

[00:31:19] Speaker 05:
Why don't we have the authority to make that determination now in order to determine whether our earlier decision

[00:31:27] Speaker 05:
is race judicata as to the eligibility of these claims.

[00:31:35] Speaker 06:
Yeah, and again, Your Honor, I think the Court does have these.

[00:31:38] Speaker 06:
I'm not disputing that the Court has the authority to do this, but what I am saying is that in order to do that, there would need to be claim construction to assess the scope of the claims.

[00:31:51] Speaker 06:
not enough in Apple's suggestion of movement.

[00:31:54] Speaker 05:
I'm a little confused about that too because the 101 question often can proceed without claim construction.

[00:32:02] Speaker 05:
We affirm many cases where somebody's been granted a 12b6 on 101 ineligibility prior to claim construction.

[00:32:11] Speaker 05:
So let's assume as a court we think the claims are pretty clear and don't require any further claim construction.

[00:32:21] Speaker 05:
and looking at those claims and comparing them to the ones that are already found ineligible, we don't see any patentable distinction.

[00:32:30] Speaker 05:
Is it your view that we do or don't have the authority to do that?

[00:32:36] Speaker 06:
Again, Your Honor, I'm not disputing that the court has the authority to do that.

[00:32:40] Speaker 06:
I think the issue with the hypothetical that you've just presented is that the case law with respect to 101 and claim construction says that if there is a dispute

[00:32:51] Speaker 06:
over a particular term.

[00:32:53] Speaker 06:
And we raised this throughout the Twitter appeal, that there were disputes over a particular term.

[00:32:59] Speaker 06:
We even raised this in our petition for rehearing and rehearing on bond, that there were significant disputes with respect to claim construction that the district court didn't consider.

[00:33:10] Speaker 06:
So if there's a dispute, there have been... Well, can I just... You've got to choose.

[00:33:17] Speaker 05:
Oh, I just wanted to ask,

[00:33:20] Speaker 05:
You know, Apple suggested mootness here because these are patentably indistinct.

[00:33:25] Speaker 05:
Have you raised specific assertions of claim construction problems that would prevent them for us from finding them patentably indistinct?

[00:33:36] Speaker 05:
I didn't see any of that here.

[00:33:38] Speaker 06:
In our response to the suggestion of mootness, no, Your Honor, because all Apple did was put up a

[00:33:48] Speaker 06:
a chart that had the claim language of one claim that matched up against the claim language of another claim.

[00:33:54] Speaker 06:
They didn't articulate the argument for why these claims are patentably indistinct.

[00:34:03] Speaker 06:
And in the words of my friend, Mr. Perry, shifting the burden to us to actually articulate why they are patentably distinct.

[00:34:13] Speaker 05:
But isn't that the way the arguments work?

[00:34:15] Speaker 05:
If they make an allegation, an argument,

[00:34:17] Speaker 05:
that these claims should be subject to race judicata because they're patently indistinct.

[00:34:22] Speaker 05:
And they said the claim language is nearly the same or so similar that they're patently indistinct.

[00:34:28] Speaker 05:
Doesn't that shift the burden to you to claim why they are patently distinct?

[00:34:41] Speaker 06:
I don't think that's what happened here with their suggestion of mootness, because as I said before, they cited no authority for this proposition.

[00:34:50] Speaker 06:
This is something they're just raising right now in terms of this burden shifting framework.

[00:34:55] Speaker 06:
They didn't articulate and say, Katz tells you that you must do this, this, and this, this, and this, and then now the burden's on Voipow to present in response to our suggestion of mootness why these claims are patently indistinct.

[00:35:08] Speaker 06:
come back to where I started from, Your Honor, they said that this case appears to be moot.

[00:35:12] Speaker 06:
Well, it's either moot or it's not moot.

[00:35:14] Speaker 06:
They didn't cite any test for mootness.

[00:35:17] Speaker 06:
We did.

[00:35:18] Speaker 06:
We responded and explained why we don't think these claims are moot.

[00:35:22] Speaker 06:
And now we're hearing today, and counsel has devoted his entire time to this issue, that we should have done more.

[00:35:30] Speaker 06:
Well, that's not what the response to this suggestion of mootness required.

[00:35:35] Speaker 06:
And I wanted to point out earlier, Your Honor, we did raise these issues in our petition for rehearing in the Twitter case and rehearing on Bach.

[00:35:47] Speaker 06:
We went through and we pointed out specific claim construction issues that were, in fact, in dispute with respect to the patents that we're talking about here.

[00:35:56] Speaker 06:
So to say that we've never raised it before this court is not entirely accurate.

[00:36:06] Speaker 03:
I heard the... Anything else, colleagues?

[00:36:08] Speaker 03:
Yeah, the time is up.

[00:36:09] Speaker 03:
I was just wondering if Judge Rayner or Judge Eves had anything else.

[00:36:12] Speaker 03:
No, I don't.

[00:36:14] Speaker 05:
No, nothing for this.

[00:36:16] Speaker 05:
Thank you, Your Honor.

[00:36:16] Speaker 03:
Thank you.

[00:36:21] Speaker 03:
Okay, Mr. Perry, we'll hear you on the title.

[00:36:25] Speaker 02:
Very briefly, Your Honors.

[00:36:27] Speaker 02:
First, Chief Judge Prost, these claims, these 34 claims, were all asserted in the first amended complaint out of the hundreds in the patents.

[00:36:34] Speaker 02:
So these are not new claims.

[00:36:36] Speaker 02:
These were asserted in the complaint.

[00:36:38] Speaker 02:
Judge Coe recognized the near-identicalness of all of the claims and ordered Boyk-Powell to pick its best 20, and you've heard the rest of that.

[00:36:50] Speaker 02:
I'd like to address this question of claim construction.

[00:36:53] Speaker 02:
Judge Coe did not construe the claims before making her 101 decision.

[00:36:58] Speaker 02:
VoIPal did challenge that ruling in the one appeal and this court rejected it.

[00:37:02] Speaker 02:
So the court ruled.

[00:37:04] Speaker 05:
Mr. Perry, this is Judge Hughes.

[00:37:06] Speaker 05:
Sorry to interrupt you, but your time is short and I just want to ask this.

[00:37:11] Speaker 05:
Let's assume they haven't waived the argument that these claims are patentably distinct.

[00:37:17] Speaker 05:
I still am a little curious as to how you think we could determine the one-on-one eligibility issue for the first time

[00:37:26] Speaker 05:
on appeal even as a matter of race judicata.

[00:37:29] Speaker 05:
What, I mean, I think we've held in other cases that, or at least we've never in appeals from IPRs where you can't raise 101 decided to find the patents ineligible on 101 as an alternative ground.

[00:37:44] Speaker 05:
I don't think we've ever felt we could do that.

[00:37:46] Speaker 05:
Why could we do it in the context of race judicata?

[00:37:49] Speaker 02:
You're on a race to decadent terms only on a full and fair opportunity to litigate a final judgment from a court of jurisdiction on the same cause of action.

[00:37:59] Speaker 02:
Simple error makes clear in a patent case that the question whether the cause of action is identical

[00:38:04] Speaker 02:
is whether the scope of the patent claims is essentially the same.

[00:38:08] Speaker 02:
The underlying defect is immaterial.

[00:38:12] Speaker 02:
It doesn't matter if they had been ruled obvious, anticipated, double patenting, or anything else.

[00:38:19] Speaker 05:
Sure.

[00:38:19] Speaker 05:
Let me just interrupt you to refocus again, because I think that argument is absolutely right to the claims that were ultimately asserted, decided as ineligible, and affirmed by us.

[00:38:30] Speaker 05:
There's nothing left to decide there.

[00:38:32] Speaker 05:
But for the unasserted claims,

[00:38:35] Speaker 05:
we've held in other cases where ratio to colloidal apply, they have to be shown to be patently non-distinct.

[00:38:44] Speaker 05:
And that's the question I'm struggling with, how that has to be answered, right?

[00:38:49] Speaker 05:
That is not a ministerial thing, assuming there's no waiver.

[00:38:54] Speaker 05:
And how do we do that for the first time on appeal?

[00:38:58] Speaker 02:
Yes, Your Honor.

[00:38:59] Speaker 02:
Let me answer that in two steps, if I may.

[00:39:01] Speaker 02:
First, these are not unasserted claims.

[00:39:03] Speaker 02:
They are asserted claims that were not included in the 101 order.

[00:39:07] Speaker 02:
That's a distinction.

[00:39:08] Speaker 02:
They are asserted in the complaint.

[00:39:10] Speaker 02:
The Simple Air case, which is the lodestar here, involved different patents, different claims that were never asserted in the first case, so that we're already one step closer to the ordinary race judicata.

[00:39:21] Speaker 02:
It's the same patent and claims that were actually asserted in the complaint.

[00:39:25] Speaker 02:
Second, it is clear that the court has to make a... May I continue?

[00:39:32] Speaker 02:
Oh, please.

[00:39:32] Speaker 02:
Thank you, Your Honor.

[00:39:34] Speaker 02:
It is clear that the court has to make a determination of patentable distinctness.

[00:39:39] Speaker 02:
And I think that we are in uncharted waters.

[00:39:43] Speaker 02:
I've made no bones about that, which is why the word appears to be moot.

[00:39:47] Speaker 02:
I think the question of burden is critical.

[00:39:50] Speaker 02:
Apple has made the showing that these claims, we believe, are essentially the same.

[00:39:54] Speaker 02:
Judge Koh accepted that.

[00:39:56] Speaker 02:
The board, which did do claim construction, also accepted that.

[00:39:59] Speaker 02:
It adjudicated all 34 claims.

[00:40:01] Speaker 02:
as identical.

[00:40:02] Speaker 02:
There's no distinction among the claims made by the board or by Judge Coe.

[00:40:06] Speaker 02:
Therefore, we think the burden is on VoIPal.

[00:40:09] Speaker 02:
I've already said they had three opportunities.

[00:40:11] Speaker 02:
If the court wants to give them a fourth, fine.

[00:40:14] Speaker 02:
We don't think they could ever make the showing.

[00:40:15] Speaker 02:
So, you know, if that's the question is one of procedure, let's have full and fair opportunity.

[00:40:19] Speaker 02:
Let VoIPal come to this court and try to show that there is patentable distinctness.

[00:40:24] Speaker 02:
But the point, the reason Judge Hughes, to get to the nub of your question, why this court ought to do it in the first place,

[00:40:29] Speaker 02:
is because of the Article 3 limitations on its power.

[00:40:32] Speaker 02:
You have before you a board determination that has problems, we submit, that this court will need to adjudicate if the claim is not moot and does not need to adjudicate if the claim is moot.

[00:40:42] Speaker 02:
The case is moot.

[00:40:43] Speaker 02:
The appeal is moot.

[00:40:45] Speaker 02:
And that, we believe Article 3 puts an obligation on the court to determine its own jurisdiction.

[00:40:50] Speaker 02:
We believe we've made the showing that that jurisdiction is lacking as a result of Twitter.

[00:40:54] Speaker 02:
We've been raising this in every brief we've filed in this case.

[00:40:57] Speaker 02:
And that, you know, at some point, Voight-Powell either has to give up or try to make a showing.

[00:41:01] Speaker 02:
But, you know, we've made the showing that they're essentially the same.

[00:41:04] Speaker 02:
And if you want us to show more, we can, of course.

[00:41:07] Speaker 02:
You know, a claim chart, we can line them all up.

[00:41:08] Speaker 02:
But you can also read them.

[00:41:09] Speaker 02:
These claims are all variations on a theme.

[00:41:13] Speaker 02:
And we think that that is the end of the case.

[00:41:18] Speaker 03:
Thank you.

[00:41:19] Speaker 03:
We thank both sides, and the case is submitted.