[00:00:00] Speaker 02: Okay, you may begin. [00:00:01] Speaker 04: Thank you. [00:00:02] Speaker 04: May I please the court, Brian Coidy for Uniloc. [00:00:05] Speaker 04: The PTAF error because under Chevron Step 1, the AIA unambiguously precludes Section 101 challenges to IPR amendments. [00:00:14] Speaker 04: Well, there's no need to go beyond that point. [00:00:16] Speaker 04: I'll also address Chevron Step 2 should the court disagree and view the statute as ambiguous. [00:00:21] Speaker 04: Finally, I want to briefly address why this appeal is not moved in view of the district court's ineligibility rulings on the original claims. [00:00:30] Speaker 02: Council, on that last question, what exactly do you believe is the relief that you could be provided? [00:00:42] Speaker 04: It's the entry of our amended claim. [00:00:46] Speaker 04: I mean, the fact that we filed the motion to amend during the presidency of the IPR, [00:00:53] Speaker 04: as aqua, at least the plurality opinion in aqua products talks about, you know, being a right to file that motion. [00:00:59] Speaker 04: So we want the moat, we want, want it to be entered. [00:01:03] Speaker 04: I think we're in agreement with the patent office on the mootness issue and they lay out as long, as well as we do about how, you know, just because the original claims are canceled, there's still the possibility of substitute claims to be replaced. [00:01:16] Speaker 02: But let me ask you this, as we said in aqua products, all the motion does is enter [00:01:22] Speaker 02: the request to amend into the IPR. [00:01:26] Speaker 02: But under our decision in Fresenius, you have to look to the finality of the judgment. [00:01:34] Speaker 02: And the judgment in the IPR that would either allow or disallow the claim isn't final yet, because it can't be final until we say it's final, right? [00:01:49] Speaker 04: Right, Your Honor. [00:01:50] Speaker 04: You mean the judgment from the [00:01:52] Speaker 04: district court. [00:01:53] Speaker 02: No, a judgment from the PTAT can't be final until we say it's final. [00:01:57] Speaker 04: That's right, Your Honor, yes. [00:01:59] Speaker 02: Right. [00:01:59] Speaker 02: And your problem is you have an open IPR, but you already have a patent, all of whose claims have been declared invalid by a district court judgment that is final. [00:02:15] Speaker 02: So how do we allow an alternative claim [00:02:21] Speaker 02: to issue when there's no claim that could amend, that could be amended. [00:02:27] Speaker 04: I think, Your Honor, the key is the timing, again, that the motion to amend was filed during the pendency. [00:02:35] Speaker 04: I understand what Your Honor is saying. [00:02:37] Speaker 04: We couldn't find any authority. [00:02:39] Speaker 04: I don't think any of the other parties found any authority for this exact situation. [00:02:44] Speaker 04: But I don't view the case law precepts of being so rigid that [00:02:51] Speaker 04: the amended claims have to then be appended to a claim that's not a patent that doesn't have to be canceled claims. [00:02:59] Speaker 04: Again, we followed the procedure, we moved to amend, and it seems, you know, fundamentally unfair just to have the timing of the various cases [00:03:11] Speaker 04: result in, you know, being robbed of your right to move from amended and do that. [00:03:17] Speaker 02: Under Fresenius and E+, I'm sure those parties thought it was fundamentally unfair to have the timing of the respective proceedings deprive them of a substantial judgment and of a patent that had been deemed valid by the district court. [00:03:32] Speaker 02: I mean, I'm not sure why that would be persuasive. [00:03:36] Speaker 04: Yeah, I understand, Your Honor. [00:03:38] Speaker 04: Again, we haven't... I don't know what to really tell you. [00:03:40] Speaker 04: We haven't found any authority. [00:03:43] Speaker 04: You know, there is the concept that it's substituting for the claims, and it was substituting and replacing the claims when they existed, right? [00:03:52] Speaker 04: So that's about all I could say. [00:03:54] Speaker 04: Yes, Your Honor. [00:03:55] Speaker 03: This is Judge Wallach. [00:03:58] Speaker 03: The PTO says that Unilock made no argument to defend the substitute claims on the merits. [00:04:05] Speaker 03: Is that correct? [00:04:08] Speaker 04: That's right, Your Honor. [00:04:09] Speaker 04: I was not counseled there, but my colleagues were, and we did not make any arguments. [00:04:14] Speaker 04: Our point was that the PTO didn't have authority to rule on 101 in the amendments. [00:04:22] Speaker 04: And as Your Honor knows, it was then briefed up to the re-hearing, and that became a, they designated it a presidential. [00:04:29] Speaker 03: You've waived any argument here that the substitute claims [00:04:34] Speaker 03: are valid on the merits. [00:04:35] Speaker 03: Is that correct? [00:04:37] Speaker 04: No. [00:04:38] Speaker 04: Our view is that because the determination to try to even include something like that was arbitrary and capricious, and also because there was no rulemaking in place, that we should be entitled, should the court say, okay, they are entitled to that the PTAB can address 101, we should be entitled to remand and address the issue. [00:05:02] Speaker 04: That's what we're arguing, Your Honor. [00:05:05] Speaker 05: This is Judge Toronto. [00:05:06] Speaker 05: Can I ask you this question? [00:05:10] Speaker 05: Putting aside the present IPR, is it now impossible or possible for Unilock to go to the PTO to try to obtain claims 26 to 28, whether through reissue or re-exam or any other mechanism, or is this your one shot at trying to get the patent [00:05:32] Speaker 05: issued with these three new claims. [00:05:37] Speaker 04: I don't know the answer to that, Your Honor. [00:05:44] Speaker 04: I would have to kind of analyze it in more detail. [00:05:47] Speaker 04: I'm not aware of any sitting here today. [00:05:48] Speaker 04: I don't want to foreclose anything. [00:05:51] Speaker 05: If there is no possibility of your securing these claims outside this proceeding, then [00:06:03] Speaker 05: Wouldn't it be right to say that there's no practical difference for Uniloc between, on the one hand, affirming the 101 invalidity ruling, and on the other hand, an order that would remand for dismissal of the IPR. [00:06:26] Speaker 05: In both cases, you can never get these claims issued. [00:06:35] Speaker 04: You're talking about the original claims, not the... No, 26 to 28. [00:06:38] Speaker 04: Right, okay. [00:06:42] Speaker 04: No, I mean, again, I think for the substitute claims, again, I think we still have a valid basis given the timing of when we filed the motion to amend. [00:06:52] Speaker 05: Let me try to put my question in a way that will be clear. [00:06:58] Speaker 05: Sure. [00:06:59] Speaker 05: An affirmance here of the 101 invalidity ruling would be a conclusive end to any possibility of your getting these claims because they would have been conclusively determined to be invalid. [00:07:14] Speaker 05: On the other hand, if we said the board simply had no authority any longer to address proposed substitute claims on any ground, [00:07:28] Speaker 05: the results presumably would be remand for dismissal of the IPR. [00:07:35] Speaker 05: And then the question is if that's what happened and if reissue or re-exam were unavailable, that too would leave you without any possibility of getting 26 through 28 issued out of the PTO. [00:07:51] Speaker 05: And so the practical difference between an affirmance and dismissing the IPR proceeding in your case [00:07:57] Speaker 05: would be none. [00:07:59] Speaker 05: That's what I'm trying to understand if what I just said is right. [00:08:03] Speaker 04: I think, yeah, I understand now, your honor. [00:08:04] Speaker 04: I apologize for not picking up on that. [00:08:06] Speaker 04: I do agree with that. [00:08:07] Speaker 04: But again, we would, the remedy we seek is not be, we would want not to be to this because we want to, we want to still pursue the amended claims. [00:08:17] Speaker 04: Right. [00:08:17] Speaker 04: I understand you. [00:08:18] Speaker 05: I understand you want, you want an outright reversal saying the board rejected all [00:08:24] Speaker 05: invalidity grounds except 101 and it had no authority to rely on 101 and therefore we are entitled to issuance of claims 26 to 28. [00:08:34] Speaker 04: Yes and it also, I think Your Honor is aware, it also found that the substitute claims weren't indefinite. [00:08:40] Speaker 04: It found that we met all the procedural requirements. [00:08:42] Speaker 04: The only basis it found was the 101. [00:08:44] Speaker 05: Right and is there any other, this is now on the kind of the merits of the 101 question rather than [00:08:52] Speaker 05: Sure. [00:08:53] Speaker 05: Can an amendment be considered at this point at all? [00:08:59] Speaker 05: Is there any other circumstance, whether reissued or re-exam or initial exam, in which the patent office issues a claim for the first time without possibility of considering an invalidity ground? [00:09:20] Speaker 05: namely 101 or any other statutory and validity ground? [00:09:26] Speaker 05: Or are you suggesting that in the IPR proceeding, that's what can happen? [00:09:31] Speaker 05: Indeed, that's what's required to happen, even if it never happens in any other portion of PTO practice? [00:09:41] Speaker 04: Well, Your Honor, I mean, I guess I would push back a little bit. [00:09:44] Speaker 04: I'm not aware of anything, but I push back a little bit in that, you know, these are untested claims. [00:09:49] Speaker 04: They're closely related to the claims, the original claims, and, you know, you've seen the amendments. [00:09:58] Speaker 04: The Pellies and the government have come up with an argument saying, you know, that theoretically it could create some type of issue, but, you know, they're, I wouldn't call them untested. [00:10:11] Speaker 04: They have been reviewed through their original examination before the PTO. [00:10:16] Speaker 04: This is the variation of them. [00:10:18] Speaker 05: These claims have never been reviewed except by this board in the IPR. [00:10:25] Speaker 05: You didn't draft them until you got to the IPR. [00:10:29] Speaker 04: That's right, Your Honor. [00:10:30] Speaker 04: But my only point is, which I think you understand, is there's a relationship between obviously the original claims and the substitute claims. [00:10:41] Speaker 04: They're very close. [00:10:43] Speaker 04: You're right. [00:10:44] Speaker 04: The language of these substitute claims has not been reviewed. [00:10:48] Speaker 02: Council, the substitute language that you put in, you put in for purposes of overcoming a ground of unpatentability, which would be an obviousness rejection, right? [00:11:01] Speaker 02: Right? [00:11:05] Speaker 04: I'm not sure what the motivation for putting them in, Your Honor, was. [00:11:10] Speaker 04: That certainly was probably one of the factors. [00:11:13] Speaker 02: I think it was also... Well, in regulation, it has to respond to a ground of unpatentability, which has to be either an obviousness or an anticipation ground, right? [00:11:21] Speaker 04: That's right, Your Honor. [00:11:24] Speaker 02: So that was the purpose of offering this amended language. [00:11:30] Speaker 02: So what does it matter if you have a claim that's not obvious or not indefinite, but the district court has already declared [00:11:40] Speaker 02: everything in the patent to be unpatentable. [00:11:48] Speaker 04: Let me just think of your Honor's question, make sure I understand it. [00:11:51] Speaker 04: It matters because, again, we've moved during the pendency for the WIPR to, you know, amend, and I think the PTAP needs to resolve it. [00:12:07] Speaker 04: Maybe I'm not understanding your Honor's question, I apologize. [00:12:13] Speaker 02: Okay, go ahead. [00:12:16] Speaker 05: Okay. [00:12:17] Speaker 05: Can I ask one specific question? [00:12:21] Speaker 05: Do you read the 316B language to mean that a patent owner can seek an amendment or cannot seek an amendment solely to add a new claim without dropping or altering an existing claim? [00:12:43] Speaker 05: If you had a patent with one claim and it was in an IPR and the board institutes an inter-party review, can you file a motion to amend simply to add a new claim to while leaving claim one alone? [00:13:04] Speaker 05: A non-conditional motion to amend. [00:13:10] Speaker 04: No, that's not my understanding of the [00:13:12] Speaker 04: the way the PTAB has interpreted it. [00:13:16] Speaker 05: The word substitute. [00:13:17] Speaker 05: The word substitute suggests that you cannot do that, but I wanted to find out your view. [00:13:22] Speaker 04: Exactly. [00:13:22] Speaker 04: I think my view, and I think it's also the PTAB's view, that you can either cancel under A, D1A, or you can substitute. [00:13:30] Speaker 04: And substitute is inherently contingent. [00:13:33] Speaker 04: If the original claim is found to be unpatentable, then you substitute it. [00:13:37] Speaker 04: They come in part parcel with each other. [00:13:40] Speaker 05: OK. [00:13:40] Speaker 05: Thank you. [00:13:43] Speaker 04: I think at this point I would like to probably, I'm not sure, I'm seeing myself at like 13 minutes. [00:13:51] Speaker 04: So I'd like to reserve some time for rebuttal probably at this point. [00:13:54] Speaker 02: Okay. [00:13:56] Speaker 02: Mr. Kelly? [00:13:59] Speaker 07: May it please the court? [00:13:59] Speaker 07: Good morning, Your Honors. [00:14:01] Speaker 07: I think I'll start just real quickly with the patentability issue. [00:14:05] Speaker 07: I know that there was a lot of questions today about the mootness issue. [00:14:10] Speaker 07: because of how the questioning ended up on patentability. [00:14:13] Speaker 07: I just want to start with the amendment process. [00:14:15] Speaker 02: That's fine, but before you get to that, can I just do one thing? [00:14:19] Speaker 02: Can I combine the questions Judge Toronto was asking with the questions Judge Wallach started out with, which is that do you agree that your friend on the other side has to convince us that the case is not moved, number one, [00:14:37] Speaker 02: Number two, that the board does not have the authority to consider 101 in the amendment process. [00:14:47] Speaker 02: And number three, that he didn't waive any substantive arguments under 101 by the way he approached the issue before the board. [00:15:00] Speaker 07: Judge O'Malley, I would say yes as to the first two questions. [00:15:03] Speaker 07: So in other words, [00:15:05] Speaker 07: In order for Uniloc to win anything here, they have to convince you both that the board was not entitled to consider Section 101 for these newly proposed and never examined claims. [00:15:15] Speaker 07: And second, that there was no mootness here. [00:15:19] Speaker 07: The third point, though, that Your Honor raised, whether or not they waived Section 101 defense on the merits, that really would only be relevant in their theory that should this court [00:15:31] Speaker 07: affirm the board's decision not to reach 101, that they now get, I don't know if it's the second, third, fourth, or fifth bite of the apple, to go back to the board and for the very first time put on an in validity defense for section 101. [00:15:46] Speaker 07: That's where that third point comes up and we think that is completely off the table. [00:15:51] Speaker 07: They were given many opportunities to defend these claims on the merits. [00:15:56] Speaker 07: right up until the oral hearing when they were asked during the hearing, do you have any defense at all of your claims on the merits? [00:16:01] Speaker 07: And they said, no, no, our only defense is that you're not allowed to consider section 101. [00:16:06] Speaker 07: So that's a little bit different than the first two parts of this question. [00:16:10] Speaker 02: So then let's go back to where you wanted to start, which was the amendment process. [00:16:16] Speaker 07: So I just wanted to say that there was a little bit of disconnect, I think, between Judge Toronto's questions and the answers. [00:16:23] Speaker 07: So, the amendment process is purely a substitution process. [00:16:29] Speaker 07: And we know this from the language of 316B1B, where it mentions substituting claims. [00:16:38] Speaker 07: But that does not mean it's necessarily a contingent process, which is what opposing counsel said. [00:16:44] Speaker 07: The fact that it's a substitute claim doesn't mean you've got to wait until the end to substitute your claim. [00:16:50] Speaker 07: You could file a motion to substitute a claim in the middle of a proceeding. [00:16:54] Speaker 07: And at that point, that amendment would be considered in that proceeding. [00:16:58] Speaker 07: And the original claims would fall out of the proceeding in terms of what was disputed. [00:17:04] Speaker 05: But Mr. Kelly, this is, I guess, relating to an aspect of your supplemental filing. [00:17:12] Speaker 05: Why wouldn't it be right to say that your two separate grounds for trying to [00:17:18] Speaker 05: given affirmative answer to the mootness question, would effectively make amendments impossible. [00:17:25] Speaker 05: Because a non-contingent one would be an amendment that, because it's not contingent, as you just said, you're dropping the original claim, and then under your second theory, there would be nothing to tether it to. [00:17:42] Speaker 05: And a contingent one would be too late, in your view, in which case, there's no such thing as an amendment. [00:17:48] Speaker 05: Tell me what's wrong with what I just said. [00:17:51] Speaker 07: So I think the problem with that understanding, Your Honor, is that what we have here is we have the district court invalidity decision and this court's affirmance of that. [00:17:59] Speaker 07: So if we take that off the table, which I don't think you're hypothetical considered. [00:18:03] Speaker 05: Why would it matter if the original claim disappears because it's disclaimed or has been adjudicated finally invalid? [00:18:15] Speaker 05: There's still nothing to, as you say in your second ground, tether the amendment to. [00:18:23] Speaker 07: Well, Your Honor, my response to that would be that in the IPR proceeding itself, it has not ended yet. [00:18:29] Speaker 07: So even though there's a non-contingent motion to amend that pulls the original claim out of the proceeding and injects into it the substitute claim, that doesn't mean that at that moment in time, the patent was amended in that way. [00:18:43] Speaker 05: I'm sorry, it hasn't been amended. [00:18:46] Speaker 05: I assume that there's been no certificate issued or tell me if there has been canceling the original claims. [00:18:55] Speaker 07: There has not been, Your Honor. [00:18:56] Speaker 05: No, no, there can't be because the PTO thinks that the amendment is a live issue. [00:19:02] Speaker 07: Well, not just that, Your Honor, but that's how the statute is structured. [00:19:05] Speaker 07: It's structured just like the re-examination statute. [00:19:07] Speaker 07: In other words, all of the decisions, the back and forth between the examiner and re-examination, [00:19:12] Speaker 07: or the PTAB in the case of IPRs, all of that occurs sort of while the proceeding is alive. [00:19:17] Speaker 07: And then the actual operative event that changes the scope of the patent is the issuance of the certificate. [00:19:23] Speaker 05: When the final written decision was issued, the IPR was still alive, if only to seek rehearing, right? [00:19:36] Speaker 07: It's not that IPR is not over. [00:19:40] Speaker 07: The way the statute's written, the final written decision is the close of the IPR. [00:19:44] Speaker 07: I accept that you could request a reconsideration of that decision, but that is sort of the end of the proceeding. [00:19:50] Speaker 07: That's what the final written decision is. [00:19:54] Speaker 02: In the IPR, and we laid this out in aqua products, but the same thing you just said, which is it is after the final written decision that then, you know, there is a certificate that says what claims [00:20:10] Speaker 02: continue to exist and what claims don't, right? [00:20:15] Speaker 07: Right. [00:20:16] Speaker 02: And during the IPR... Right. [00:20:19] Speaker 02: So during the IPR and not until the final written decision does that certificate of patentability or unpatentability as to each of the individual claims or substitute claims get issued, right? [00:20:33] Speaker 02: Right. [00:20:34] Speaker 05: And, indeed, so typically a year or more later because you don't issue it. [00:20:39] Speaker 05: until appellate review is done and then you wait until, and there's nothing particularly urgent, right? [00:20:45] Speaker 05: It's not like, the certificate doesn't issue when the final written decision issues. [00:20:50] Speaker 07: That's right, Your Honor. [00:20:51] Speaker 07: And so to return back to Your Honor's question, the reason why the IPR itself doesn't trigger this mootness issue is because the act of filing what would be a non-contingent motion to amend, which I think was Your Honor's hypothetical, [00:21:08] Speaker 07: All that does is change what's involved in the proceeding. [00:21:11] Speaker 07: It doesn't mean at that point that the first claim is gone and so it's sort of in a weird way triggers a stoppile making all amendments essentially impossible. [00:21:21] Speaker 07: The reason why the amendment here became the motion to amend is not only that it was contingent but of course because of this court's affirmance of the collateral district court's invalidation of all of the claims in the past. [00:21:36] Speaker 07: That scenario would not occur intrinsically in the IPR itself. [00:21:44] Speaker 07: And the contingent nature of the motion to amend here is significant in this case. [00:21:49] Speaker 07: They didn't file a motion during the proceeding. [00:21:51] Speaker 07: They didn't, as SAS recognized, change what was involved in the proceeding. [00:21:57] Speaker 05: I'm sorry. [00:21:58] Speaker 05: What do you mean they didn't file a motion during the proceeding? [00:22:02] Speaker 05: They filed the motion under the rules. [00:22:04] Speaker 07: many many many months before the final written decision uh... your honor i i i think i would disagree with that what they follow what's the date of the motion and what's the date of the final written decision uh... did the date of the motion i believe should be thirty days after the institution decision that i think that's a little before the final written decision but your honor that date is but what they filed on that date with a contingent motion but it's not easily which said if the board [00:22:34] Speaker 05: the original claims invalid, then please consider the following change. [00:22:41] Speaker 05: You're reading find to mean something other than the three panel members concluding it along the way toward the process of writing a single decision that addresses both the original claims and the motion to amend. [00:23:00] Speaker 07: No, that's not the point I'm making. [00:23:02] Speaker 07: The point I'm making is that the contingent nature of the motion means that the motion itself did not, in essence, spring to life until that final written decision was being written. [00:23:15] Speaker 05: But that requires you to equate the word find, which is both in the opening sentence of the motion to amend and in the conclusion, 313 and 332, I think, of the appendix, to mean [00:23:30] Speaker 05: issues a final written decision, which is not ordinarily what I would think signed to me. [00:23:36] Speaker 05: The common sense is if you in the course of considering everything in front of you disagree with our primary contention, then please address our secondary contention. [00:23:49] Speaker 05: And isn't that the utterly normal way that alternative inconsistent pleading works in all civil litigation? [00:24:00] Speaker 05: I find this extremely peculiar, obviously. [00:24:10] Speaker 07: Well, you know, I don't think we can sort of, you know, pull back the curtain and sort of examine what is going on in the heads of the judges at the PTAB. [00:24:19] Speaker 07: I mean, the operative event... The question is what's in the pleading. [00:24:24] Speaker 05: The pleading says, [00:24:25] Speaker 05: If you disagree with our major contention that the original claims are valid, then please consider the alternative claims. [00:24:34] Speaker 05: Why isn't that garden variety alternative inconsistent pleading? [00:24:39] Speaker 05: Recognized under Rule A to the civil rules and, you know, utterly common. [00:24:45] Speaker 07: Well, Your Honor, I guess I would just maintain that that finding when you have a three-judge panel does not become effective until they actually reach their decision. [00:24:55] Speaker 07: And the only statutory framework we have for trying to figure out when that happened is Section 318A. [00:25:01] Speaker 07: I can't point to any other part of the AIA that sort of triggers a date upon which the Board makes an internal finding about [00:25:11] Speaker 07: about the strength of the original claims and then moves on to a contingent motion, it's a statutory scheme and that's what Your Honor is suggesting just isn't in the statute. [00:25:22] Speaker 02: The board's determination of... Does it really matter whether it was a contingent or not? [00:25:29] Speaker 02: I mean, your contingency argument has more to do with whether the board has [00:25:35] Speaker 02: has found all the claims invalid, and I think that Judge Toronto has a good point. [00:25:40] Speaker 02: You can have alternative arguments that are made in a pleading, but in this case, whether it was contingent or not, it didn't become final before the district court decision became final. [00:25:57] Speaker 02: Right? [00:25:59] Speaker 07: Well, before the district court decision... May I continue? [00:26:03] Speaker 07: Yes. [00:26:05] Speaker 07: Okay. [00:26:05] Speaker 07: It became, I mean, when the final written decision came out, that was their decision. [00:26:10] Speaker 07: I guess the actual absolute finality of that decision still hasn't happened because we're here on a field right now. [00:26:15] Speaker 02: Right. [00:26:16] Speaker 07: That's what your honor is getting at. [00:26:19] Speaker 05: Yes. [00:26:20] Speaker 05: Okay. [00:26:21] Speaker 05: Just to double check on the timing, the district court's decision on 101 was months before the institution in this IPR, right? [00:26:31] Speaker 07: I don't know if it was months before institution, Your Honor, but I think March to August. [00:26:39] Speaker 07: It was, yes, and it was, I think, more significantly prior to the contingent motion. [00:26:45] Speaker 07: And I think that Mutilach points that out in their blue brief at page eight, that the reason that they filed their contingent motion was at least in part to overcome the 101 infirmities that the district court had identified. [00:26:58] Speaker 02: Right, but our decision didn't become final until after the final written decision in this case. [00:27:05] Speaker 07: About a week later, that's right. [00:27:07] Speaker 07: And because of that decision, the final written decision aspects that triggered the contingent motion, we would say became moot. [00:27:18] Speaker 07: And even if they didn't, we would say the board's decision on the merits about whether or not they can reach section 101 in an IPR are essentially unassailable. [00:27:27] Speaker 05: Mr. Connell, can I ask you just one final question, the same question I asked Council for Uniloc. [00:27:36] Speaker 05: In your understanding of reissue, reexam, other PTO mechanisms, is it too late now for Uniloc to seek issuance of 26 through 28 through some process outside this IPR, or is the IPR [00:27:54] Speaker 05: that is, is the IPR their one shot at these claims? [00:28:00] Speaker 07: I think now it is their one shot. [00:28:02] Speaker 07: They could have filed a reissue application prior to the invalidation of the claims of their original patent. [00:28:09] Speaker 07: And if they had done that, which they could have done, they could have sought a narrowing claim from a reissue. [00:28:15] Speaker 07: And incidentally, when that reissue patent opened, the window would have opened back up for a PGR challenge, and those claims could have been challenged under Section 101. [00:28:23] Speaker 07: But as of now, this is the only way for them to get this claim as far as I know. [00:28:29] Speaker 07: And if they got it, based on the reasons that they're arguing, they will be the first patentees in our system since the early part of the 18th century when we switched to an examination system that will have obtained new unexamined claims in U.S. [00:28:41] Speaker 07: patents not subject to scrutiny under the patentability provisions in effect. [00:28:46] Speaker 07: And with that, I'll yield. [00:28:48] Speaker 03: I'm sorry. [00:28:49] Speaker 03: Did you really mean the early part of the 18th century? [00:28:53] Speaker 07: I meant the 19th century. [00:28:56] Speaker 07: I was thinking 1800. [00:28:57] Speaker 07: Thank you, Judge Walsh. [00:28:59] Speaker 02: Thank you. [00:29:01] Speaker 02: Okay, let's hear from the PTO. [00:29:03] Speaker 02: Mr. Shead. [00:29:06] Speaker 00: Thank you, Your Honor. [00:29:07] Speaker 00: May it please the Court, Rainer Shead, on behalf of the USPTO. [00:29:10] Speaker 00: With me is my colleague from the Department of Justice, Jeffrey Sandberg. [00:29:14] Speaker 00: We believe that the best reading of the statute permits the Board to consider the eligibility of amended claims to the extent that this Court has questions about [00:29:23] Speaker 00: I'm going to show her on step two. [00:29:24] Speaker 00: Jeff Sandberg is here to answer any of those questions. [00:29:27] Speaker 00: Since we left off discussing mootness, I can begin there, unless the court would like me to address the merits issues. [00:29:34] Speaker 02: No, that's fine. [00:29:36] Speaker 00: On the mootness issue, we believe that this case is not moot for the reasons given in our supplemental brief. [00:29:41] Speaker 00: In addition to that, I mean, I do agree that this is, as Jess trying to point out, this is their only one shot to get these claims. [00:29:49] Speaker 00: I don't think they have access to reissue or re-examination because the mandate is already issued in respect to the original claims. [00:29:56] Speaker 00: I don't know if they have a continuation application pending where they can try to insert these claims there. [00:30:02] Speaker 00: But I don't see any other avenue for them to seek these claims. [00:30:06] Speaker 00: But that avenue does require this court to reverse and to hold that the agency is not authorized to consider a 101 for invented claims. [00:30:19] Speaker 00: As the FLE council pointed out, that would be a real shift in the law when it comes to new and unexamined claims. [00:30:27] Speaker 00: Since the Patent Act of 1836, we have always provided for some type of examinational process for new and amended claims. [00:30:39] Speaker 00: On the merits, I'd like to just quickly say that, you know, we think patentability in Section 318 is relatively broad. [00:30:47] Speaker 00: And it means what it says, all the requirements for patentability. [00:30:52] Speaker 00: But as this court found in Samsung, 318A has to be understood in context. [00:30:58] Speaker 00: And that context for original claims is limited to patents and printed publications under 102 and 103 grounds. [00:31:06] Speaker 02: But that really is the only, can I continue? [00:31:10] Speaker 02: Yes, you can finish your sentence. [00:31:13] Speaker 00: That really is the outlier, though. [00:31:15] Speaker 00: That understanding of patentability for original claims is the outlier. [00:31:18] Speaker 00: It's the unusual meaning. [00:31:20] Speaker 00: The rest of the use of patentability, whether it's for amended claims in IPRs or amended and original claims in EGRs, means the same thing. [00:31:28] Speaker 00: It means every condition of patentability. [00:31:34] Speaker 00: The fact that 318 is so broad and grants us this broad authority, 316 tells us that it doesn't provide any limitations as to what we can consider on motions to amend. [00:31:45] Speaker 00: And the fact that this court in Nike v. Adidas said, you know, kind of provides a complete answer to Unilock's argument about why the observations in SAS about the adversarial process don't necessarily extend to amended claims. [00:32:02] Speaker 00: We think it makes sense for us to be able to perform a full, full patentability analysis that's consistent with our duty to issue valid claims. [00:32:12] Speaker 00: And we cannot perform that duty if we're foreclosed from engaging, of course, with appropriate notice, the full panoply of patentability issues that are brought before us. [00:32:23] Speaker 02: Okay. [00:32:24] Speaker 02: Thank you. [00:32:27] Speaker 02: Mr. Sandberg, we didn't really talk anything about or talk about the Chevron. [00:32:31] Speaker 02: issue, and I know that Mr. Kelly might have opinions on that, but if you want to just say something for 60 seconds, we'll allow it. [00:32:42] Speaker 06: That's okay. [00:32:43] Speaker 06: I'm just here to answer any questions that the court may have on the issue. [00:32:46] Speaker 06: As my colleague just explained, we think the only plausible way of reading the statute is the way that the board did here. [00:32:52] Speaker 06: If the court thought the statute was susceptible to other interpretations, we think the appropriate course would be to defer to the agency's view. [00:32:58] Speaker 06: If there are no questions from the court, then we're happy to stand in our brief. [00:33:03] Speaker 05: I just wanted to ask a question. [00:33:07] Speaker 05: Do you have a continuation application in which you either currently have or could add or by further continuation try to get 26 through 28 issued from the PTO? [00:33:27] Speaker 02: This is a rebuttal. [00:33:28] Speaker 02: This is Mr. Sandberg from the Department of Justice. [00:33:31] Speaker 05: Oh, I'm sorry. [00:33:32] Speaker 05: I'm sorry. [00:33:33] Speaker 05: Wrong person. [00:33:33] Speaker 05: Sorry about that. [00:33:34] Speaker 02: Okay. [00:33:34] Speaker 02: We'll save that question for later. [00:33:35] Speaker 02: Judge Wallach, do you have anything for Mr. Sandberg? [00:33:38] Speaker 02: I don't. [00:33:39] Speaker 02: Thank you. [00:33:40] Speaker 02: Okay. [00:33:40] Speaker 02: Thank you, Mr. Sandberg. [00:33:43] Speaker 02: All right. [00:33:43] Speaker 02: Because we went over with Mr. Kelly, I'll restore two minutes to your rebuttal. [00:33:52] Speaker 07: Okay. [00:33:52] Speaker 07: Thank you, Your Honor. [00:33:53] Speaker 02: You might want to start with Judge Toronto's question. [00:33:57] Speaker 04: I don't know the answer to that, Your Honor. [00:33:59] Speaker 04: I could try to scramble for it, but I don't want to cut into my time too much. [00:34:02] Speaker 04: I'm sorry. [00:34:03] Speaker 04: I don't know. [00:34:03] Speaker 04: I don't believe there's any continuation pending, but I don't know offhand. [00:34:07] Speaker 04: I haven't looked into that. [00:34:08] Speaker 05: I would very much appreciate getting an answer after the argument, because it's rather important for me to understand what, if any, difference there is between an undesirable affirmance to you and a dismissal of the IPR proceeding. [00:34:28] Speaker 04: Your Honor, we're happy to provide some type of supplemental submission, maybe a supplemental authority where we can provide that and I can track that answer down for Your Honor. [00:34:38] Speaker 04: Thank you. [00:34:39] Speaker 04: Okay. [00:34:40] Speaker 04: I just want to briefly talk about the ambiguity which the PTO's counsel talked about. [00:34:46] Speaker 04: I just, I don't want to get into the details of it, but [00:34:51] Speaker 04: just really touch upon the friction points and the approaches. [00:34:56] Speaker 04: Both sides say that the language is unambiguous, but they reach opposite conclusions. [00:35:01] Speaker 04: And I think what Uniloc advocates is something very similar in off-quote products. [00:35:06] Speaker 04: It recognizes that the relationship between that the petition defines the scope of the IPR just like in traditional pleadings. [00:35:14] Speaker 04: And that really has a ripple effect [00:35:16] Speaker 04: through the proceedings. [00:35:19] Speaker 04: So 311, we would argue, affects the scope of the whole proceeding. [00:35:29] Speaker 04: It does talk about what's in the petition. [00:35:32] Speaker 04: It talks about what the petitioner could do, but it also talks about the grounds. [00:35:36] Speaker 04: And this court, in aqua products concurrence, talked about the proceedings being limited to 102 and 103. [00:35:44] Speaker 04: Now, they raised issues like the Nike Vietitas case. [00:35:47] Speaker 04: That's a case where, in the context of doing their 102 and 103 duties, they look at something that's for, you know, they look at [00:36:00] Speaker 04: whether the narrow claims are supported by the written description. [00:36:02] Speaker 04: That's very similar to the statutory requirement in the IPR statute. [00:36:07] Speaker 04: That's not saying, that's not sweeping in everything. [00:36:09] Speaker 04: And one point you raised in our brief, if they're going to say an amended claim brings in all forms of patentability, then the logical conclusion would be it would bring in things like non-printed publications, non patents, things like a, you know, public use or on sale bar. [00:36:30] Speaker 04: Clearly, that's not what Congress intended here. [00:36:33] Speaker 04: They seem to be thinking and choosing what they could get, but it's a real slippery slope, like let all of those in. [00:36:41] Speaker 04: The other thing that they do is they kind of start looking at with the definition of patentability in 318, which is kind of the end result. [00:36:49] Speaker 04: It's kind of an inverted analysis where they look at patentability and they come up with general definitions [00:36:55] Speaker 04: It's really more of a tail wagging the dog where they're saying, here's what it means to everything. [00:36:59] Speaker 04: I think the proper way to view the scope is to look at the statutes, similarly to an aqua product in the concurrence, kind of looking at the comprehensively, holistically how everything fits together. [00:37:10] Speaker 04: And with that understanding, you realize the reference to patentability is not this wide open, can I finish your honor? [00:37:19] Speaker 02: Yes. [00:37:20] Speaker 04: Yeah. [00:37:20] Speaker 04: It's not a wide open invitation to sweep in everything, including things like, [00:37:25] Speaker 04: you know, public use and 101. [00:37:29] Speaker 04: The term patentability in 318 is in the context of the proper scope, which is limited to 102 and 103 and patents and printed publications. [00:37:41] Speaker 02: Okay. [00:37:41] Speaker 02: Thank you, Council. [00:37:42] Speaker 02: The cases will be submitted. [00:37:46] Speaker 02: Court is adjourned. [00:37:48] Speaker 07: The Honorable Court is adjourned until tomorrow morning at 10 a.m.