[00:00:01] 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.

[00:00:14] Speaker 01:
Good morning, everyone.

[00:00:15] Speaker 01:
The first argued group of cases are the Consolidated Apple Incorporated Against Qualcomm Incorporated numbers 2016-83, 2017-63, and 2018-27.

[00:00:28] Speaker 01:
The arguments were consolidated to facilitate covering the common issues.

[00:00:39] Speaker 01:
And let's start with Ms.

[00:00:40] Speaker 01:
Degnan, are you ready to proceed?

[00:00:43] Speaker 05:
Yes, Your Honor.

[00:00:46] Speaker 05:
May I please the court?

[00:00:47] Speaker 05:
Oh, sorry.

[00:00:48] Speaker 01:
No, I was going to say please proceed.

[00:00:50] Speaker 01:
And the common issues, at least as we see it from the briefs, are the issues of standing.

[00:00:56] Speaker 01:
So I would suggest starting with those questions.

[00:01:01] Speaker 06:
Yes, Your Honor.

[00:01:01] Speaker 06:
Good morning.

[00:01:02] Speaker 06:
Lauren Degnan for Apple.

[00:01:04] Speaker 06:
So we're all aware of the court's previous decision on Apple's standing and the other IPRs.

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So unless the court would like to start with these questions, I thought I would focus on an issue that was not addressed in this earlier opinion.

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Apple's request vacate the PTAP decision in the 1827 appeal, and we make that request with respect to the other two appeals today.

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So starting with that issue, although the monzing ware type vacature arises where cases become moot while the case is on appeal,

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We'd asked this court to extend that approach to the facts of this case, which do include an element of muteness.

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Specifically, there was indisputably a case of controversy between the parties over the validity of the patents in each appeal.

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And according to this court's interpretation of men immune in the prior decision, that case of controversy went away by virtue of the settlement and the dismissal of the cases, the district court cases.

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In other words, the case of controversy was muted.

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And the Monsignor-type cases course vacate, essentially for public policy reasons.

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And we would say our case.

[00:02:11] Speaker 00:
Ms.

[00:02:11] Speaker 00:
Deckman, this is Judge Prost.

[00:02:13] Speaker 00:
Can I ask you about that?

[00:02:14] Speaker 00:
Because what about US Bancor?

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Which seems to limit, as I read it, to Monsignor.

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Monsignor is where the other side sort of ends the case.

[00:02:28] Speaker 00:
Isn't this more like Bancor, in which you agree to the settlement before the appeal?

[00:02:34] Speaker 00:
And therefore, isn't vacatur sort of the unlikely remedy versus the one in Monsinger?

[00:02:42] Speaker 06:
So Judge Press, we would say our case is more like a later Supreme Court case, Alvarez versus Smith, 558 US 87, with distinguished Bancorp.

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And granted vacatur, even where there was a settlement of different litigation that ultimately moved to the case that was on appeal.

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And for some context, in that case, there was a federal civil rights suit.

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where the plaintiffs argued they were deprived a timely hearing to contest forfeiture of their property.

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But there were separate state court forfeiture proceedings.

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And the Supreme Court ultimately found that the civil rights case that was being appealed was muted by the resolution of the underlying forfeiture proceedings, even though there was at least one of them that was resolved by settlement by one of the plaintiffs in the civil rights case.

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Nevertheless,

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the Supreme Court vacated the judgment below saying that that case, those circumstances, more loosely resemble muteness through happenstance rather than through settlement, at least the kind of settlement that the Supreme Court considered in Bancorp.

[00:03:46] Speaker 00:
Can I ask you just a process question?

[00:03:48] Speaker 00:
We've got a lot of paper in this case, as we do in the many cases we're hearing this week.

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Did you call that to the Court's attention in any of the filings we've had?

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post, you know, with regard to the dismissal, et cetera.

[00:04:03] Speaker 00:
I know you moved to vacate the argument, but did you cite this case and interview your filing?

[00:04:09] Speaker 06:
No, this Alvarez case we did not cite in our filings.

[00:04:13] Speaker 06:
We raise it now in response to Qualcomm's real 28-J letter.

[00:04:21] Speaker 03:
And, of course, in response to your question.

[00:04:24] Speaker 03:
I also, just following up on that, I, in looking at your briefs, I understand you to have raised the request to vacate in one of these appeals in your reply brief, but you didn't in the other appeals until today.

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Is that correct?

[00:04:40] Speaker 00:
That's correct.

[00:04:42] Speaker 00:
And do you agree that under our prior decision in Apple, you act standing?

[00:04:48] Speaker 06:
So Your Honor, I would say that the prior decision did address many of the arguments that are raised in these current appeals.

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There is one argument raised in these appeals that we believe the opinion does not specifically address.

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And I'll do it briefly because I don't want to, if you think it's retreading old ground, I don't want to do that.

[00:05:10] Speaker 06:
But the prior opinion did not explain why the threat of liability, if Apple ceases the ongoing payment,

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and the agreement is terminated is not a sufficient injury to support standing.

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The opinion in Section 2B goes on about what would happen at the time the agreement expires, five to seven years from now, and determines that injury at that time would be too speculative.

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But again, we also, we argue in these appeals, and candidly it was mentioned in the other ones too, that termination due to non-payment

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is another circumstance.

[00:05:44] Speaker 00:
But wait a minute, this all sounds very familiar, because wasn't this at the heart, or one of the issues at the heart of your petition for rehearing en banc, which was denied by the court?

[00:05:53] Speaker 06:
That's exactly right, Your Honor.

[00:05:55] Speaker 00:
So how does this differ?

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I mean, I thought you all were recognizing that the Apple Qualcomm case covered these cases, and that you were simply waiting to see if rehearing was denied.

[00:06:11] Speaker 00:
So are you suggesting that this is an issue that really wasn't resolved, that this is something new and different that was never considered a part parcel of the original alpha qualcomm case?

[00:06:22] Speaker 06:
And so two responses to that, Your Honor.

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First is that this court's precedent, like Union Electric at 363 Feb.

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3, 1292, is clear that unless an earlier opinion explicitly addresses and decides an issue, then it's not binding on a future panel.

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And we would say this particular nuance was not specifically addressed.

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But the second thing I'll say is we do not disagree that the operative facts are the same, the agreement is the same, the settlement is the same.

[00:06:50] Speaker 00:
So you think that based on this particular nuance, this panel could achieve a result that's contrary to Apple I and we wouldn't be bumping it up against our precedent?

[00:07:02] Speaker 00:
You really think this panel has the ability to do that based on what you call the nuance?

[00:07:08] Speaker 06:
I would say our position is that this particular argument is not addressed by the panel in the prior decision, and therefore it would be something this court could consider.

[00:07:27] Speaker 06:
So if I could, again, I'm happy to answer your questions, but if I could go back to the vacatur issue.

[00:07:34] Speaker 01:
Yes, please do.

[00:07:36] Speaker 06:
I wanted to explain why our case involves important policy reasons why these decisions should be vacated if the court determines and follows, you know, in light of the previous decision that there is no standing.

[00:07:49] Speaker 06:
First, literature would take section 315E estoppel off the table, and that would allow Apple to fully challenge validity in any future infringement action.

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And there's a strong public policy in eliminating invalid patents.

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That policy is a longstanding one.

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Moreover, the parties agree that the IPRs would proceed through appeal, and after the ability to appeal, any estoppel from section 315E would be unfair.

[00:08:13] Speaker 06:
And finally, failure to vacate in these sorts of circumstances could discourage settlement in district court litigation whether... Can I ask you, Ms.

[00:08:21] Speaker 00:
Degman, this is Judge Prost again.

[00:08:23] Speaker 00:
We've had a series of cases where we've concluded, starting with Consumer Watchdog, I guess, that there's no standing to appeal.

[00:08:31] Speaker 00:
How would

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If we said vacatur is appropriate in this case because of the kind of policy questions you've raised, wouldn't that apply to just about every case in which we conclude that there's no standing?

[00:08:49] Speaker 06:
Actually, Your Honor, I think it would not because our circumstances are somewhat unique in that

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I think it's understood that there was a case of controversy that was mooted.

[00:09:01] Speaker 06:
So this would not apply to the run-of-the-mill, no standing, because there is never a case of controversy.

[00:09:07] Speaker 06:
But in our case, we were sued on these particular patents at issue.

[00:09:11] Speaker 06:
We had a case of controversy that this court determined was basically mooted.

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It was ended due to the settlement.

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and the settlement.

[00:09:23] Speaker 00:
OK, so you would have us adopt a rule that any time a case is mooted based on standing because of a settlement between the parties before it comes up on appeal, that the IPR should be vacated?

[00:09:39] Speaker 06:
Yes, I think that would be to the extent that other parties were in our shoes in those circumstances,

[00:09:50] Speaker 06:
we would agree that that should be vacated because that is the relief we're seeking in our case.

[00:09:56] Speaker 03:
Would this apply where the board also found the patents invalid or would this just apply where the board didn't find the patents invalid?

[00:10:06] Speaker 06:
So, Your Honor, I understand your question to be the board found the patents invalid and the patentee is taking the appeal as the appellant and then somehow the issue was the case of controversy was mooted.

[00:10:21] Speaker 03:
Right, well, so, okay.

[00:10:26] Speaker 06:
So just give me a minute to think that through.

[00:10:30] Speaker 03:
I mean, so I guess I'm... It's probably not an issue in some circumstances because the appellant, if the patent owner is the appellant, they're still going to have standing.

[00:10:39] Speaker 03:
So maybe my question doesn't matter, but it just seems to me that it could be nuances, for example, depending on how the decision is.

[00:10:48] Speaker 03:
I mean, what if there's circumstances in which there would be potentially a cross appeal?

[00:10:53] Speaker 03:
What do you do with a decision like that when you vacate?

[00:10:56] Speaker 03:
if there's an automatic vacatur whenever a case is mooted by settlement before appeal.

[00:11:04] Speaker 06:
I understand your question, Your Honor.

[00:11:05] Speaker 06:
So I think let's take the cross-appeal scenario.

[00:11:08] Speaker 06:
And again, we're not necessarily arguing for an automatic vacatur.

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It's still within the court's discretion.

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But the factors that would lead one to get to this result, again, is the live case of controversy that becomes mooted and an issue of a cross-appeal

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This court has in the past, I think, has the authority to vacate in parts.

[00:11:29] Speaker 06:
So this court would rule on the patentee's appeal on issues.

[00:11:35] Speaker 06:
And then the part that is mooted, I think, would be vacated across appeals.

[00:11:43] Speaker 00:
I'm a little confused.

[00:11:46] Speaker 00:
Because if the settlement is reached before the appeal is noticed,

[00:11:51] Speaker 00:
It seems to me that you act standing before you've invoked Article 3 jurisdiction.

[00:11:59] Speaker 06:
Right?

[00:12:00] Speaker 06:
I understand your question.

[00:12:01] Speaker 06:
I'd actually would point the court to DC Circuit case that is very similar where they did apply mungling ware in circumstances where you might have thought they called it mutinous, but it was actually the same kind of lack of standing that was found in the previous Apple opinion.

[00:12:15] Speaker 06:
That is AFLAC versus FCC, 129 said third, at 625.

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And briefly, the court found that it was an appeal from an FCC decision.

[00:12:27] Speaker 06:
And so there was a policy and it was being challenged about broadcast, you know, political ads and broadcast rights.

[00:12:34] Speaker 06:
And by the time the court said it was, the mutinous had occurred before the case had reached the DC circuit because the FCC had withdrawn its policy.

[00:12:43] Speaker 06:
So it strikes that because the company asking to buy the policy had sold and went out of business.

[00:12:50] Speaker 06:
And so there's the same sort of scenario where you might think it was lack of standing.

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It was called mutinous and the mungingware approach was applied.

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So I'd say that there's one instance where this sort of scenario happened.

[00:13:01] Speaker 06:
But more importantly, in many of these mungingware type cases, by the time the court is ruling, it doesn't have jurisdiction, right?

[00:13:10] Speaker 06:
The case of controversy is resolved.

[00:13:11] Speaker 06:
There's no jurisdiction, but it still can act.

[00:13:14] Speaker 06:
And that is because the court always has jurisdiction

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to determine its own jurisdiction and then to take appropriate action.

[00:13:21] Speaker 06:
So I appreciate that.

[00:13:22] Speaker 00:
This is Judge Crost again.

[00:13:23] Speaker 00:
I guess I'm a little taken aback and a little troubled by the fact that, I mean, you're making arguments.

[00:13:33] Speaker 00:
You're citing a Supreme Court case and a DC Circuit case.

[00:13:37] Speaker 00:
You're talking about nuanced differences between this case and the earlier case.

[00:13:42] Speaker 00:
And unless I've missed a filing in this case, which is not impossible,

[00:13:47] Speaker 00:
This is all being heard for the first time by this panel.

[00:13:53] Speaker 00:
And the other side filed a 28-J letter on April 16th that asked that this appeal be dismissed based on the earlier Apple Qualcomm case.

[00:14:05] Speaker 00:
And you all, as far as I can tell, never responded to that.

[00:14:10] Speaker 00:
Wouldn't that have been the vehicle to put before the court

[00:14:14] Speaker 00:
the arguments you're making today.

[00:14:16] Speaker 00:
And I guess let me just ask the second part of my question is, it's kind of weird to me because you all asked us last week to vacate the argument.

[00:14:27] Speaker 00:
In other words, we would have taken the case at your request

[00:14:30] Speaker 00:
just on the papers that existed before this case.

[00:14:35] Speaker 00:
And now we're having an oral argument that's making really, I think as you acknowledge, new arguments, different arguments, new cases which you think are really relevant, important, and supportive of your position that were never cited to us before.

[00:14:48] Speaker 00:
So it's just something that strikes me as very odd.

[00:14:53] Speaker 00:
I'm not comfortable with this process here.

[00:14:56] Speaker 00:
And I guess I, why did you, if you said you, if you agreed that we should vacate, you were the ones that urging we vacate argument.

[00:15:04] Speaker 00:
So nothing you're saying today would have been before the panel.

[00:15:07] Speaker 00:
Is that correct?

[00:15:10] Speaker 06:
All right.

[00:15:10] Speaker 06:
Okay, so I'm going to respond to those questions, Your Honor.

[00:15:12] Speaker 06:
And first I'll say.

[00:15:13] Speaker 01:
Respond.

[00:15:15] Speaker 06:
So first I'll say, certainly, I mean, I'm trying to respond to the questions that are being asked.

[00:15:19] Speaker 06:
And that is implicating to give intelligent,

[00:15:23] Speaker 06:
responsive answers, it's new arguments.

[00:15:25] Speaker 06:
And I think that's fair when I'm asked a specific question.

[00:15:30] Speaker 06:
So that's first.

[00:15:31] Speaker 06:
Second, why did we not put in a Rule 28J letter in response to Qualcomm's letter?

[00:15:36] Speaker 06:
I mean, because Rule 28J letters are not supposed to be used to argue substance.

[00:15:41] Speaker 06:
They're supposed to talk about precedent.

[00:15:43] Speaker 06:
So I don't think a Rule 28J letter would have been appropriate.

[00:15:46] Speaker 06:
And then the question in terms of, well, why did we agree that we didn't have to have oral argument?

[00:15:52] Speaker 06:
And I would say on this vacatur issue, it's an issue that the court has the power, and some say the duty, to go ahead and rule on without a request.

[00:16:02] Speaker 06:
And we felt that given the amount of briefing on these issues already, that if the court did not have questions and did not want to talk to us, it was more than capable of resolving these issues, especially the vacatur one, which is well within the court's purview, even without a request.

[00:16:19] Speaker 05:
So I apologize.

[00:16:21] Speaker 00:
No, I appreciate that.

[00:16:22] Speaker 00:
And I wasn't trying to attack or be combative, but I just really am a little kind of perplexed by why we're here and what's going on.

[00:16:31] Speaker 00:
But let me just ask you, what about the Alvarez case that you cited on Monsignor?

[00:16:36] Speaker 00:
I mean, that wouldn't have been before the court.

[00:16:38] Speaker 00:
At least it would not have been raised before the court.

[00:16:41] Speaker 00:
So we would have been left with Bancor and Monsignor, correct?

[00:16:45] Speaker 06:
Um, Alvarez had not been cited until I talked about it today.

[00:16:50] Speaker 06:
That is, that is fair, your honor, but of course it's out there.

[00:16:54] Speaker 00:
Okay.

[00:16:54] Speaker 00:
Thank you.

[00:16:55] Speaker 00:
Sorry to take the court's time.

[00:16:59] Speaker 01:
You have, you have your rebuttal time.

[00:17:05] Speaker 01:
Let's hear from the other side.

[00:17:07] Speaker 01:
Mr. Franklin, are you unmuted?

[00:17:16] Speaker 04:
May it please the court, Jonathan Franklin, representing Pellee Qualcomm.

[00:17:23] Speaker 04:
Can the court hear me?

[00:17:25] Speaker 01:
I hear you.

[00:17:26] Speaker 04:
Yes.

[00:17:28] Speaker 04:
So I would like to, I believe we have an agreement here that there is no standing in the case.

[00:17:35] Speaker 04:
There was a statement made by counsel Grapple that the operative facts here are the same as the facts in the other case.

[00:17:44] Speaker 04:
I could go into why whatever the purported issue that she said wasn't decided was decided.

[00:17:50] Speaker 04:
I mean, the court looked at the declarations that were submitted in that case, and they concluded that those declarations were insufficient to carry Apple's burden of proof.

[00:18:01] Speaker 04:
The declarations in this case are not merely similar to the declarations that were filed in the other case.

[00:18:06] Speaker 04:
They are the exact same declarations that Apple made.

[00:18:10] Speaker 01:
These are different patents, is that right?

[00:18:14] Speaker 04:
There are different inventions, Your Honor, but I should point out that in the earlier case, there were two different cases involving two different patents.

[00:18:23] Speaker 04:
So the very mere fact that there were different patents wasn't a distinguishing feature in those cases, and it's not in this case either, because all the infringement cases were dismissed with prejudice pursuant to the same global settlement.

[00:18:38] Speaker 04:
And Apple has submitted the same declarations which the court before described as the, quote, sparsest of declarations that do not even mention the patents at issue.

[00:18:49] Speaker 04:
And Apple has the burden of proof here.

[00:18:51] Speaker 04:
And they failed to, the court, prior court, which is a binding presidential opinion, held that they failed to establish the burden of proof on the same declaration.

[00:19:02] Speaker 04:
And what Ms.

[00:19:02] Speaker 04:
Degnan has admitted in the earlier argument are the same operative facts.

[00:19:08] Speaker 01:
that there's no standing, other than that you don't object to vacature.

[00:19:14] Speaker 04:
We do certainly object to vacature, Your Honor, and we did in our Rule 28J letter in the 418 patent.

[00:19:21] Speaker 04:
And I will tell you, there are three different reasons why that... Well, if we don't have standing, how do we vacate?

[00:19:27] Speaker 04:
You can't.

[00:19:28] Speaker 04:
And that is the first... Well, the first reason, let me go through them in order.

[00:19:33] Speaker 04:
The first reason is that Apple has waived this argument.

[00:19:37] Speaker 04:
They did not make this argument in their opening brief in any of the three cases.

[00:19:42] Speaker 04:
The first time it appeared was in the reply brief in the 418 patent case.

[00:19:47] Speaker 04:
And as the court knows, it is too late to raise an argument in a reply brief.

[00:19:51] Speaker 04:
And I will point out that Monsignor Vacator is not a jurisdictional argument.

[00:19:56] Speaker 04:
It is an equitable one.

[00:19:57] Speaker 04:
And it can be waived.

[00:19:59] Speaker 04:
And interestingly, the support for that is Monsignor.

[00:20:03] Speaker 04:
i was surprised myself i went back and read my thing where i've always heard this referred to as my thing where they cater if one reads the opinion of my thing where the supreme court did not apply my thing where they cater in the monthly where because it held that the party in that case that was asking for it united states had waved the argument by not presenting it well and so on your theory with this also wave the automatic estoppel

[00:20:32] Speaker 04:
No, Your Honor.

[00:20:33] Speaker 04:
The automatic estoppel is something that applies in a future hypothetical case, which in the prior decision... In a future case.

[00:20:42] Speaker 01:
In a future case.

[00:20:45] Speaker 01:
It's not what the statute says.

[00:20:48] Speaker 04:
Yes, and there is no future case here.

[00:20:51] Speaker 04:
So that issue the court has held does not create standing in this case.

[00:20:56] Speaker 04:
Because there's been no factual, there's been no proof showing that any such future case is likely to occur.

[00:21:03] Speaker 01:
So is there a position that if a future case occurs, there's no estoppel?

[00:21:09] Speaker 04:
No.

[00:21:10] Speaker 04:
Our position is number one, the existence of a future case is entirely hypothetical as the court held before.

[00:21:16] Speaker 04:
And number two, that if that case were to arise, the statute does say that estoppel is mandated.

[00:21:26] Speaker 04:
For purposes of standing, it doesn't really matter because you have to show in the first place that there's going to be such a future case.

[00:21:35] Speaker 04:
And frankly, if there were, if they had shown that there's a future case, the installer doesn't really add anything to that.

[00:21:41] Speaker 01:
This is really their argument.

[00:21:43] Speaker 01:
They asked for an immunity for the life of the patent and it was denied.

[00:21:49] Speaker 04:
Their argument

[00:21:52] Speaker 04:
They say that, but what they haven't proved and what the prior panel said they did not prove with the same declarations that are issued in this case is that there would be a likelihood of that future suit being filed because they made no effort to even try to explain how the products, what products they would be making in 2025 or 2027 when they were made, when these settlement agreements expire.

[00:22:20] Speaker 04:
And they did not explain

[00:22:21] Speaker 04:
why those products would lead to an infringement argument.

[00:22:27] Speaker 04:
And that's the same as, again, Ms.

[00:22:29] Speaker 04:
Degman has admitted, and I think it's fair for her to do so, that the operative facts are the same here.

[00:22:34] Speaker 04:
If I might get to the second point on munching where, Your Honor, and that is simply, and I think Judge, I think it might have been Judge Prost who mentioned it, the court never had Article III standing jurisdiction here.

[00:22:47] Speaker 04:
And we cited in our Rule 28 Joe letter

[00:22:50] Speaker 04:
a binding precedential opinion of this court called Gould versus Control Laser, and of course, Apple never responded to that.

[00:22:58] Speaker 04:
But I will quote you from that case at page 1394, and this was cited in our rural 28J letter responding to their belated invocation of Muntingware.

[00:23:12] Speaker 04:
The court said, quote, this case did not become moot on appeal, rather a consent judgment was entered pursuant to the settlement agreement of the parties.

[00:23:20] Speaker 04:
The agreed settlement and entry of consent judgment mooted any possibility of an appeal and foreclosed the court from obtaining jurisdiction in the operative language.

[00:23:30] Speaker 04:
The Munsingware requirement of vacating the judgment below when a case becomes moot on appeal therefore does not apply.

[00:23:37] Speaker 04:
So that's reason two.

[00:23:38] Speaker 04:
The court never had jurisdiction.

[00:23:40] Speaker 04:
Munsingware applies in a case where there was jurisdiction originally.

[00:23:45] Speaker 04:
And the case becomes moot through no fault or action of the party below.

[00:23:52] Speaker 04:
And that brings me to the third reason why Monsignor doesn't apply.

[00:23:56] Speaker 04:
And I believe it was Judge Prosman, I apologize if it was not Judge Prosman, noted that the Bancorp decision

[00:24:06] Speaker 00:
This is Judge Crost again, Mr. Franklin.

[00:24:09] Speaker 00:
Thank you for that.

[00:24:10] Speaker 00:
But do you have any response to the new case that your friend on the other side cited, the Supreme Court case, and I think Alvarez?

[00:24:18] Speaker 00:
Are you familiar with that case?

[00:24:21] Speaker 04:
I am not.

[00:24:22] Speaker 04:
I am not familiar with that case, Your Honor, because it was not cited.

[00:24:27] Speaker 04:
And again, it brings me back to, I guess, my first point, and that is

[00:24:31] Speaker 04:
If they wanted Munthing where they wanted to try to argue for Munthing where they cater, the first point, the first place when they should have done that was in their opening brief.

[00:24:42] Speaker 04:
The second place they tried to do it would be in their, uh, reply brief.

[00:24:48] Speaker 04:
This was not mentioned there and that would not have worked because they have to mention the reply.

[00:24:52] Speaker 04:
But again, as your honor, I think it was your honor pointed out, they had another opportunity to,

[00:24:58] Speaker 04:
We found a 28 day letter specifically saying that their Monsignor argument was foreclosed by Bancorp.

[00:25:05] Speaker 04:
We said that in our letter.

[00:25:07] Speaker 04:
They did not respond to it.

[00:25:09] Speaker 04:
It's been waived.

[00:25:10] Speaker 04:
So I don't have, I'm sorry, your honor, I do not have familiarity with that decision.

[00:25:15] Speaker 04:
But the reason I don't is because it was never cited.

[00:25:19] Speaker 04:
The DC circuit decision that they're now talking about was never cited.

[00:25:23] Speaker 04:
And I think your honor made an excellent point and that is the parties agreed

[00:25:27] Speaker 04:
that this argument was unnecessary.

[00:25:30] Speaker 04:
So now we have Apple coming in and citing new cases at oral argument, which the court has clearly held in numerous cases cannot be done.

[00:25:41] Speaker 04:
But this is, you know, this is the third reason why, why Muntingware doesn't apply.

[00:25:47] Speaker 04:
Your court doesn't even need to get there because Muntingware clearly applies where a case becomes moot on appeal.

[00:25:54] Speaker 04:
not where it was never Article 3 jurisdiction to begin with.

[00:25:58] Speaker 04:
I think it was Judge Prost again, I'm sorry with the voices, but I think it is Katie by the door if the court goes, first of all excuses the waiver and second of all vacates because it would mean that vacator would be applied anytime.

[00:26:16] Speaker 04:
The court has never

[00:26:18] Speaker 04:
to my knowledge, ever vacated when it has found a lack of Article III standing to appeal an IPR.

[00:26:26] Speaker 04:
That begins with Consumer Watchdog.

[00:26:28] Speaker 04:
It goes through Phigenics.

[00:26:29] Speaker 04:
It goes through the JTK case.

[00:26:33] Speaker 04:
It goes through the Apple versus Qualcomm case in April where there was no vacator.

[00:26:39] Speaker 04:
The court has never done that.

[00:26:41] Speaker 01:
Let me ask you this.

[00:26:43] Speaker 01:
This is Judge Newman.

[00:26:44] Speaker 01:
And this is the aspect that I find troubling, that this immunity, whatever it's called from suit, just has a few years to go, and that Qualcomm has refused to grant immunity or license for the life of the patents.

[00:27:05] Speaker 01:
And this is, as well as I recall, the other cases that we're talking about,

[00:27:10] Speaker 01:
a significant distinction, a distinction of kind, one which can very well call upon the court's discretion.

[00:27:20] Speaker 01:
Is there an answer to that?

[00:27:22] Speaker 04:
Yes, Your Honor.

[00:27:23] Speaker 04:
First of all, the question that Qualcomm did not give an advance immunity, that was addressed in the prior decision.

[00:27:31] Speaker 04:
I'm looking at page 1385.

[00:27:32] Speaker 04:
It says, Apple argues that Qualcomm's refusal to grant Apple an irrevocable license

[00:27:39] Speaker 04:
is somehow provides standing and the court said it did not.

[00:27:46] Speaker 04:
And the court has many on many occasions held that the mere fact that someone does not give in advance a covenant not to sue or something like that without knowing what products the other party might make in the future doesn't confer standing now.

[00:28:03] Speaker 04:
The fact remains, your honor, that the operative fact is the same.

[00:28:07] Speaker 04:
the declaration that Apple put in doesn't establish, doesn't remotely establish that they will in fact be sued in 2025 or 2027 or any point there.

[00:28:20] Speaker 01:
I don't think the cases go that far.

[00:28:23] Speaker 01:
They do certainly require a certain substance to the physician, but not an absolute guarantee.

[00:28:30] Speaker 01:
Isn't that a fair reading?

[00:28:32] Speaker 04:
It is absolutely a fair reading, but there is one case that we know goes that far.

[00:28:37] Speaker 04:
And that is Apple versus Qualcomm.

[00:28:40] Speaker 04:
That case involved the same operative facts here.

[00:28:44] Speaker 04:
There is no difference between the operative facts of this case and the operative facts of the case decided in April.

[00:28:54] Speaker 04:
And you're correct.

[00:28:55] Speaker 04:
Some cases, the party has been able to make out that showing.

[00:29:00] Speaker 04:
In this case, they didn't.

[00:29:01] Speaker 04:
And they didn't because they put in what the court described as the sparsest of declarations that did not even mention the patents at issue.

[00:29:11] Speaker 04:
And again, I want to be absolutely clear here for the panel.

[00:29:16] Speaker 04:
The declarations that are in all three of these cases here are not merely similar to the declarations that were deemed insufficient in Apple versus Qualcomm in April.

[00:29:29] Speaker 04:
They are the exact

[00:29:31] Speaker 04:
same declaration, by the same person, signed on the same day, in the same case, they are photocopies.

[00:29:40] Speaker 04:
So those cases were not sufficient to establish the threat, Your Honor, that you're speaking of, in Apple versus Qualcomm, and by operation of stare decisis, they are clearly insufficient to establish that threat here.

[00:29:55] Speaker 04:
And I will say, you are correct, Judge Newman,

[00:29:59] Speaker 04:
the court has on occasion found that there have been showings made.

[00:30:05] Speaker 04:
But what the court found in the prior case was that showing was not made by the same declarations under the same operative facts that apply here.

[00:30:16] Speaker 04:
If stare decisis means anything, it means that the identical case needs to be decided in the same way.

[00:30:23] Speaker 04:
And I do think that the fact that when we filed 28-J letters,

[00:30:29] Speaker 04:
Apple did not respond.

[00:30:31] Speaker 04:
They made no argument that the other case doesn't govern.

[00:30:35] Speaker 04:
They make really no argument here today.

[00:30:38] Speaker 04:
Ms.

[00:30:38] Speaker 04:
Deggans says the operative facts are the same.

[00:30:42] Speaker 04:
So the operational started devices in this case means that there is no standing.

[00:30:49] Speaker 04:
In another case, another party can come in and try to make an argument and say,

[00:30:55] Speaker 04:
There's going to be a settlement that expires five years from now, but for reasons X, Y, and Z, these patents are likely to be infringed, and the other side is likely to file an infringement case, and perhaps they could make that joint.

[00:31:13] Speaker 04:
But they didn't do that in this case.

[00:31:15] Speaker 01:
But here they're already a licensee, and aren't the cases and the principles different?

[00:31:24] Speaker 01:
The denial of licensee estoppel, for instance, as opposed to just coming in off the street without... Yeah, yeah.

[00:31:33] Speaker 04:
We're not talking about licensee estoppel as that theory is... That's a separate theory.

[00:31:39] Speaker 04:
But in terms of there being a licensee, that was their entire argument in Apple I, or the main argument in Apple I was that men immune, the decision in the Supreme Court of men immune and involving a licensee governed.

[00:31:51] Speaker 04:
And what the court held again in the binding presidential opinion issued in April was that MedImmune did not apply.

[00:32:01] Speaker 04:
And MedImmune did not apply because Apple made no showing that the continuing payments that it's making under the settlement agreement would be affected in any way by the validity of any of the claims of these patents.

[00:32:14] Speaker 04:
And I would just note one thing on that that applies in these cases.

[00:32:19] Speaker 04:
Apple actually won on some of the claims in these cases, and Qualcomm decided not to appeal.

[00:32:25] Speaker 04:
So Apple actually has findings of invalidity, yet it presented no evidence to the court that those invalidity findings, much less the invalidity findings that it wants this court to make, would have any effect on its payments going forward.

[00:32:42] Speaker 04:
I think it's quite telling.

[00:32:44] Speaker 04:
Apple made no attempt to make that showing.

[00:32:46] Speaker 04:
It makes no attempt to show that it would breach the licensing agreement, which is something that they didn't just pointed out in the oral argument.

[00:32:53] Speaker 04:
It makes no attempt to say that.

[00:32:55] Speaker 01:
But by contrast, the party in Metamuc... You're demanding something that really goes beyond precedent in this area, and this is really where

[00:33:06] Speaker 01:
where the lions are and the general lions and of course the question of estoppel and automatic estoppel while denying them the opportunity for appellate review is really contrary to the way the law is supposed to work.

[00:33:25] Speaker 04:
Well, Your Honor, let me just say this.

[00:33:28] Speaker 04:
We're not going beyond precedent here.

[00:33:31] Speaker 04:
We're asking the court to apply precedent.

[00:33:34] Speaker 04:
The precedent that we're asking the court to apply was a binding presidential opinion issued in April.

[00:33:40] Speaker 04:
It addressed all of these issues.

[00:33:43] Speaker 04:
It said quite clearly that this is not the MedImmune situation.

[00:33:49] Speaker 04:
And it said that that doesn't confer standing here because Apple, unlike the party in MedImmune, made no attempt to argue

[00:33:58] Speaker 04:
that the invalidity of any patent claims would have any effect on its royalties.

[00:34:04] Speaker 04:
In Medimmune, that was the opposite.

[00:34:06] Speaker 04:
The party was saying, if the patents are found invalid, we will not have to pay royalties under this agreement.

[00:34:14] Speaker 04:
Apple has never said that in a declaration.

[00:34:18] Speaker 04:
It's never even alleged it.

[00:34:19] Speaker 04:
It's never made a statement about it.

[00:34:21] Speaker 04:
It has won on certain patent claims, and it's never said that that has any effect on anything.

[00:34:27] Speaker 04:
And that was the reasoning in the prior opinion.

[00:34:29] Speaker 04:
So Your Honor, we are not trying to extend precedent here in any way.

[00:34:34] Speaker 04:
All we're asking the court to do is to apply the precedent.

[00:34:38] Speaker 04:
And I think by the fact that Apple doesn't have any answer to our 28-J letters or anything to say here at oral argument, other than a waived, month-in-wear argument that doesn't even apply to this situation, I think that shows quite clearly that Article III, standing lacking,

[00:34:57] Speaker 04:
I would like to just do one thing and that's just to correct a minor error in our brief if I could.

[00:35:04] Speaker 04:
It just relates to the expiration dates of the patents.

[00:35:07] Speaker 04:
The 861 patent expires in 2031, the 865 patent expires in 2032, and the 418 patent expires in 2033.

[00:35:17] Speaker 04:
I apologize for those dates not being in the brief prior.

[00:35:25] Speaker 04:
We're not asking the court to extend precedent.

[00:35:28] Speaker 04:
We're not asking the court to make new law.

[00:35:30] Speaker 04:
We're not asking the court to do anything, but simply apply the law that the court already established in the binding presidential opinion in Apple versus Qualcomm in April.

[00:35:40] Speaker 04:
I think the fact that Apple did not think this argument was necessary in light of that opinion is quite telling.

[00:35:49] Speaker 04:
The opinion governs here.

[00:35:52] Speaker 04:
clearly hold that there is no Article III jurisdiction.

[00:35:56] Speaker 04:
And Judge Newman, in a future case, if somebody makes a different showing on different facts, perhaps there would be jurisdiction in that case.

[00:36:04] Speaker 04:
But in this case, we know what the answer is.

[00:36:08] Speaker 04:
We know what the answer is because the court already decided.

[00:36:11] Speaker 04:
Let me just say one other thing on that before I close, and that is

[00:36:15] Speaker 04:
The court went out of its way to decide the case.

[00:36:18] Speaker 04:
It didn't need to, because there was a phigenics waiver.

[00:36:21] Speaker 04:
The party apple had not raised its standing in its opening brief.

[00:36:26] Speaker 04:
The court expressly reached the standing, notwithstanding the waiver.

[00:36:29] Speaker 04:
And one of the things it said in reaching the standing was, quote, the question of standing impacts these and other appeals.

[00:36:39] Speaker 04:
The court was aware of these cases when it issued that opinion.

[00:36:44] Speaker 04:
It knew that its opinion was going to govern other appeals.

[00:36:48] Speaker 04:
Apple knows that, too.

[00:36:50] Speaker 04:
That's why they didn't think this argument was even necessary.

[00:36:54] Speaker 04:
So in closing, Your Honor, we're asking only that the Court apply the binding precedent of Apple v. Qualcomm and hold that Article 3 of the Standing is lacking, just as it was in those cases, on the operative facts.

[00:37:15] Speaker 01:
Okay.

[00:37:16] Speaker 01:
Thank you, Mr. Franklin.

[00:37:18] Speaker 01:
Ms.

[00:37:18] Speaker 01:
Dechnan.

[00:37:19] Speaker 06:
Thank you, Your Honor.

[00:37:20] Speaker 06:
Let me start by being very clear.

[00:37:22] Speaker 06:
We do not agree that there is no standing in this case.

[00:37:27] Speaker 06:
We don't agree, first, that we disagree with the presidential opinion.

[00:37:30] Speaker 06:
We know it's binding with respect to this panel on issues that are specifically addressed.

[00:37:35] Speaker 06:
We do still have a pillarize with that opinion, and I've already identified one argument in these briefs that were not done.

[00:37:40] Speaker 06:
So I just need to make sure the record is clear.

[00:37:42] Speaker 06:
We don't agree.

[00:37:43] Speaker 06:
that there's no standing.

[00:37:44] Speaker 00:
However, I will just say that maybe I missed the catchphrase.

[00:37:47] Speaker 00:
Just what you said, I just don't understand.

[00:37:48] Speaker 00:
You said you don't agree we don't have appeal rights.

[00:37:51] Speaker 00:
You don't mean with respect to Apple I. You've exhausted your rights at least before this court, right?

[00:37:57] Speaker 06:
What I mean is we have appeal rights beyond this court.

[00:37:59] Speaker 06:
We have exhausted our rights before this court.

[00:38:01] Speaker 06:
That's correct.

[00:38:04] Speaker 00:
OK.

[00:38:04] Speaker 06:
But you agree we're bound by it.

[00:38:06] Speaker 06:
For the issues that were specifically decided, yes, of course.

[00:38:10] Speaker 06:
So, but I just, counselor said that we have agreed that there's no standing and I just can't let that stand.

[00:38:14] Speaker 06:
But I do want to address waiver.

[00:38:17] Speaker 03:
This is just so I was asking a question also.

[00:38:22] Speaker 03:
Counselor for Qualcomm said that Apple agrees the operative facts here are the same.

[00:38:27] Speaker 03:
And I understand you to be agreeing that the operative facts are the same based on the papers you've submitted to us.

[00:38:33] Speaker 03:
But you disagree with that?

[00:38:35] Speaker 06:
So I think what I've said is that the agreement between Apple and Qualcomm is the same, the dismissal, the prior suit, I mean, it's similar in that these patents were asserted against us, there was a resolution of the district court litigation, so those facts are, and the declarations, I agree, are the same.

[00:38:53] Speaker 06:
So those facts are the same.

[00:38:55] Speaker 06:
There's no dispute there.

[00:38:58] Speaker 03:
Okay, thank you.

[00:38:59] Speaker 06:
Okay, with respect to waiver quickly, this argument,

[00:39:03] Speaker 06:
It should not be waived.

[00:39:05] Speaker 06:
And first of all, waiver is discretionary.

[00:39:07] Speaker 06:
And the courts excuse waiver when there's a pure question of law, particularly where the issue is narrow or legal, and especially when there's an intervening judicial interpretation of existing law pending appeal.

[00:39:19] Speaker 06:
And here, I think it's fair to say this court's precedential opinion in Apple versus Qualcomm marked a significant interpretation of existing law.

[00:39:27] Speaker 06:
So it's only fair for Apple to be able to respond to this change or clarification in the governing law by raising our arguments.

[00:39:33] Speaker 03:
Council, but you did raise this issue.

[00:39:36] Speaker 03:
I mean, this Monsignor issue, that's not a new issue.

[00:39:41] Speaker 03:
You knew there was a possibility the court was going to hold that you didn't have standing.

[00:39:45] Speaker 03:
And so you could have asked for vacatur in any of these cases.

[00:39:49] Speaker 03:
In fact, parties do.

[00:39:50] Speaker 03:
Isn't that right?

[00:39:51] Speaker 06:
So I agree, Your Honor, that we could have made the request earlier, but I'm saying- You did make it in the reply brief of one of these cases, right?

[00:39:59] Speaker 06:
We did raise it in the reply brief that was filed after the courts.

[00:40:03] Speaker 06:
Apple versus Qualcomm opinion.

[00:40:05] Speaker 06:
It was filed two days after the opinion came down.

[00:40:07] Speaker 06:
We did make the argument.

[00:40:09] Speaker 06:
And we would say, given that waiver is discretionary, those are reasons to address the issue.

[00:40:15] Speaker 06:
And I will say, to rebut something counsel said, this court has vacated PTAT decisions before.

[00:40:22] Speaker 06:
And I think if PPG did it to Esponte, it wasn't even asked for in a reply brief or an oral argument, or at least not in a briefing.

[00:40:29] Speaker 03:
It was asked for in briefing.

[00:40:31] Speaker 03:
It was.

[00:40:32] Speaker 03:
It was asked for in briefing after oral argument.

[00:40:36] Speaker 03:
You were right about that.

[00:40:37] Speaker 03:
Because the issue didn't come up, the case wasn't mooted until oral argument and that's why it wasn't requested until briefing following oral argument.

[00:40:47] Speaker 06:
Very good.

[00:40:48] Speaker 06:
Thank you, Your Honor.

[00:40:49] Speaker 00:
So in terms of the waiver... Are there any cases where we've mooted it, vacated it, where there was no standing by the time the notice... Arguably.

[00:41:02] Speaker 00:
I know you're disputing this, but if we conclude there was no standing before the appeal was filed,

[00:41:08] Speaker 06:
So two responses, Your Honor.

[00:41:10] Speaker 06:
So now, I do not have a case from this court.

[00:41:12] Speaker 06:
We do have that Aflac versus FCC case from the DC Circuit.

[00:41:16] Speaker 06:
And I will just point out that gold, gold or gould, how you might say it, it doesn't say that it would never be appropriate.

[00:41:24] Speaker 06:
It just indicated that under the four square facts of Monsinger, it wasn't appropriate.

[00:41:29] Speaker 06:
And I would note that that gould case from 1989 predates the Alvarez case, the Supreme Court case in 2009.

[00:41:36] Speaker 06:
We did not find a case from your court where it was vacated under those circumstances.

[00:41:44] Speaker 06:
But the PNC case, I would point out, the Supreme Court, there was no question that case was moot by the time it got to the Supreme Court.

[00:41:53] Speaker 06:
So the Supreme Court, nevertheless, took jurisdiction.

[00:41:56] Speaker 06:
It was moot before the cert petition was filed.

[00:41:59] Speaker 06:
But the Supreme Court did, in fact, vacate and order vacate of the board's decision as part of its jurisdiction.

[00:42:08] Speaker 06:
If I could say one last thing, please.

[00:42:10] Speaker 06:
Yes, please do.

[00:42:12] Speaker 06:
So gentlemen, I have to say I completely agree that the distinction you drew, that Qualcomm failed to give us permanent rights in these patents despite having asked for them.

[00:42:23] Speaker 06:
And it's assertion today that in a future suit, there's no question in its mind that 315E is stoppable, but definitely bar Apple from pursuing a full-throated invalidity challenge.

[00:42:38] Speaker 06:
It is totally inconsistent with its assertion that no one could possibly envision that there's going to be future litigation between the parties if Apple were to terminate the agreement for non-payment or expiration.

[00:42:48] Speaker 06:
And I would agree with you that this risk is a good reason for this court to exercise this discretion, hear the vacancy issue, and then also vacate these TTAB decisions.

[00:43:00] Speaker 01:
Thank you.

[00:43:02] Speaker 01:
Okay.

[00:43:02] Speaker 01:
Thank you.

[00:43:03] Speaker 01:
Any more questions from the panel?

[00:43:05] Speaker 00:
No, thank you.

[00:43:06] Speaker 00:
Thank you.

[00:43:08] Speaker 01:
All right, our thanks to both counsels.

[00:43:11] Speaker 01:
The three cases are taken under submission.