[00:00:00] Speaker 03:
Good morning again, ladies and gentlemen.

[00:00:03] Speaker 03:
Our next case is publishing technologies versus RPX Corporation 2020, 1420, and 1421.

[00:00:10] Speaker 03:
Mr. Pitcock.

[00:00:15] Speaker 05:
Yes, Your Honor.

[00:00:19] Speaker 03:
Please proceed.

[00:00:21] Speaker 05:
May it please the court.

[00:00:23] Speaker 05:
This case involves two procedural

[00:00:28] Speaker 05:
and one substantive issue on appeal.

[00:00:32] Speaker 05:
The procedural issues are can, does it violate the APA when a panel does not construe the vast majority of the claims of a patent and instead adopts the plain and ordinary meaning until the hearing date

[00:00:57] Speaker 05:
and thus deprives the patent owner of any meaningful ability to argue that the claims are still patentable over the prior art under the proper construction.

[00:01:14] Speaker 03:
The second... Wasn't this related to the decision to institute, and in any event,

[00:01:23] Speaker 03:
Didn't the board decide you had plenty of opportunity to comment on the meaning of the claims?

[00:01:33] Speaker 05:
Well, Your Honor, so we're not challenging.

[00:01:36] Speaker 05:
I understand under Thriv that the institution over the lack of claims construction on RPX's part is not appealable.

[00:01:49] Speaker 05:
The question is whether the failure to construe the claims during, after institution was a violation of the Administrative Procedures Act.

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So in that sense, we're not challenging the institution decision.

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And although the board claims that we had the ability to do so, this is from a patent that had been previously litigated.

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And under the district court's previous construction, various parties had been able to successfully argue that their various websites and mobile websites did not infringe the claims of the patent.

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And those constructions were not put in front of the board in any way by RPX, but instead were put in front and

[00:02:45] Speaker 05:
We suggested them as the proper construction of the claim terms, but in any event, we needed to know whether that narrow construction was the proper construction that the board was going to adopt, or whether or not the board was going to adopt a broader construction, because this was at a time when BRI was the applicable standard for the claims during the

[00:03:14] Speaker 05:
inter partes proceedings and not the Phillips claims construction, which is what the court had, of course, used in the previous litigation.

[00:03:29] Speaker 05:
Instead, the board simply adopt the, quote unquote, plain and ordinary meaning of all of the terms and phrases in the patent

[00:03:39] Speaker 05:
And although they claim that we had the ability to then address what they had specifically said was the wrong construction of the claim terms, I mean, I suppose that, you know, under their theory, we should have, even after they told us that, no, your claims construction is not going to be adopted, that we should have tried to develop evidence from experts and other third parties

[00:04:09] Speaker 05:
and put that forward and been able to depose their expert.

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None of that was able to be done because we did not have the construction of the claims at all.

[00:04:21] Speaker 05:
It's not even a matter of changing it, that the plain and ordinary meaning of the terms.

[00:04:26] Speaker 04:
Mr. Pitcock, can I interrupt just a minute?

[00:04:30] Speaker 04:
This is Judge Hughes.

[00:04:31] Speaker 04:
When you say you didn't have those constructions, I'm a little confused.

[00:04:36] Speaker 04:
Aren't these the constructions you proposed?

[00:04:38] Speaker 04:
This isn't a case where the board came up with new constructions that the parties weren't aware of for the first time in its final decision.

[00:04:48] Speaker 04:
These were the constructions you proposed to the board.

[00:04:52] Speaker 04:
Is that correct?

[00:04:54] Speaker 04:
Yes, Your Honor, that is correct.

[00:04:56] Speaker 04:
Well, how is it an APA violation for the board to adopt your constructions when you were on notice that they could potentially be used and have the ability to argue them to the board?

[00:05:10] Speaker 05:
Well, they had told us, Your Honor, that they weren't going to use them, that they were not adopting them, that they were adopting something.

[00:05:19] Speaker 04:
Did they exclude you from arguing anything in your briefs or your argument on trial to them about those constructions?

[00:05:29] Speaker 05:
Well, they did not issue, Your Honor, any orders that would have excluded argument on those topics.

[00:05:38] Speaker 05:
But functionally, I mean, you have limited space and limited time in an IPR proceeding.

[00:05:46] Speaker 05:
You have to pick and choose.

[00:05:48] Speaker 05:
I mean, the amount of prior art in both of these, this is really a consolidated two hearing case that you have to address in all of your papers.

[00:06:00] Speaker 05:
Functionally, we use you little time to develop

[00:06:04] Speaker 05:
cases under multiple claims constructions for the various terms.

[00:06:10] Speaker 04:
What question of the APA do you think this violates?

[00:06:16] Speaker 05:
Well, I would say 506 that, you know, the board has to give reasons for its determinations.

[00:06:29] Speaker 05:
It has to act in a

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in a rational and logical manner.

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And here you don't have, there's no real rationale.

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In fact, there's no real decision by the board on what the claims mean until they announce it at the hearing themselves.

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And that does not comply with, sorry, Your Honor.

[00:07:00] Speaker 05:
with at least the requirement that they have a rational or proper factual underpinning for their decisions.

[00:07:16] Speaker 04:
I'm still a little confused how the board's decision to adopt your proposed claim constructions, which you say are narrower, is any kind of harmful error here.

[00:07:29] Speaker 04:
It seems like

[00:07:30] Speaker 04:
by adopting your constructions that you had a better chance of proving these patents valid rather than using the broader plain and ordinary meaning constructions.

[00:07:43] Speaker 04:
Why isn't it at worst harmless there?

[00:07:48] Speaker 05:
Well, I completely agree with you, except that we didn't really have a chance to argue under our constructions.

[00:07:53] Speaker 05:
They only adopted them at the end

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after all of our time to develop arguments, write our briefs, and do everything else had passed.

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And, you know, that's what you're going to face again and again is petitions where despite the statutory requirement that you construe the claims so that the patent owner has advance notice

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of their, what they need to argue.

[00:08:22] Speaker 04:
Isn't that just litigation strategy?

[00:08:24] Speaker 04:
I mean, there's nothing that prevented you from saying, look, our patents are invalid under the plain and ordinary meaning, but we think you're incorrect.

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And you should have construed them under these narrower definitions as an alternative basis.

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I recognize that there are limitations on pages and stuff like that, but that's true in every court.

[00:08:44] Speaker 04:
Why wasn't that your choice of

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a litigation strategy and not a harmful procedural error on the board's part.

[00:08:53] Speaker 05:
Well, we did, Your Honor.

[00:08:54] Speaker 05:
We did do exactly that in our response to their petition.

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We said, no, you ought to adopt these narrow constructions.

[00:09:06] Speaker 05:
And then the board didn't say, yes, you're right.

[00:09:10] Speaker 05:
They didn't even say,

[00:09:13] Speaker 05:
Well, here's where we think BRI differs from the scope that you're proposing.

[00:09:19] Speaker 05:
They just adopted, and I'm sorry, I'm on a conference.

[00:09:23] Speaker 05:
I can't tell if you're trying to ask me a question in the middle.

[00:09:26] Speaker 05:
I'm sorry, Your Honor.

[00:09:28] Speaker 04:
No, keep quiet.

[00:09:29] Speaker 05:
It's not me.

[00:09:30] Speaker 05:
Okay.

[00:09:31] Speaker 05:
I apologize.

[00:09:33] Speaker 05:
So that's exactly what we did was they came in with their petitions.

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They said, you know, you should adopt this plain and ordinary meaning, whatever that means, for the vast majority of the claim terms.

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They had been construed before.

[00:09:49] Speaker 05:
We suggested that the court adopt the previous construction for all the terms.

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And the court didn't, you know, hold it in abeyance.

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They didn't ask for additional briefing.

[00:10:00] Speaker 05:
They didn't give us any guidance whatsoever.

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other than to say, no, we disagree and we're going to adopt the quote unquote plain and ordinary meaning.

[00:10:10] Speaker 05:
And that doesn't give you anything to go on at all.

[00:10:12] Speaker 05:
You don't know.

[00:10:13] Speaker 04:
I mean, but what happened after that?

[00:10:15] Speaker 04:
Did you not have the opportunity to submit another brief and argue to the board?

[00:10:21] Speaker 05:
Yes.

[00:10:22] Speaker 05:
And we did under and we did the best that we could.

[00:10:26] Speaker 05:
under the construction that we were given at the time.

[00:10:32] Speaker 04:
Your time just expired.

[00:10:34] Speaker 04:
But let me just ask one more question.

[00:10:35] Speaker 04:
In any of that subsequent briefing and argument to the board, did you re-raise your argument that the narrow construction should apply and why you were still valid under those constructions?

[00:10:52] Speaker 04:
Well, we didn't have a change.

[00:10:53] Speaker 04:
We didn't have a chance.

[00:10:54] Speaker 04:
We didn't have a chance.

[00:10:55] Speaker 04:
Well, they didn't.

[00:10:56] Speaker 04:
Again, the board did not ex... I'm sorry.

[00:10:58] Speaker 04:
This is... I withdraw my question.

[00:11:01] Speaker 04:
I'm done.

[00:11:03] Speaker 05:
I'd like to reserve the rest of my time for rebuttal.

[00:11:05] Speaker 02:
Thank you, Your Honor.

[00:11:07] Speaker 02:
Judge Clemson, can I just ask one question, because I was unsure about one thing you said, Mr. Pitcock?

[00:11:13] Speaker 02:
Yes, Your Honor.

[00:11:14] Speaker 02:
Clemson, I think you said earlier that the first time you learned that the board was not going to use plain and ordinary meaning, but instead was going to adopt

[00:11:23] Speaker 02:
The construction was at the hearing.

[00:11:26] Speaker 02:
Is that correct?

[00:11:28] Speaker 05:
Yes, your honor.

[00:11:29] Speaker 02:
So, so not in the final decision was the handed to you, but so at the beginning of the hearing, the board said, by the way, we're going to use your definitions.

[00:11:40] Speaker 02:
Is that what they said?

[00:11:41] Speaker 02:
Yes, your honor.

[00:11:44] Speaker 02:
Well, now when they said that to you, did you say, whoops, I've been prejudiced judge.

[00:11:50] Speaker 02:
You've prejudicing me and harming me by only telling me this now.

[00:11:56] Speaker 02:
Did you make that complaint?

[00:12:00] Speaker 05:
Uh, your honor, I tried to do the best job I could to, uh, to address the hearing.

[00:12:07] Speaker 02:
You know what I'm talking about.

[00:12:08] Speaker 02:
Did you say I object?

[00:12:11] Speaker 02:
I have been harmed.

[00:12:12] Speaker 02:
You can't do that.

[00:12:15] Speaker 05:
I did not.

[00:12:16] Speaker 05:
I do not recall raising an objection.

[00:12:19] Speaker 05:
to their, to their adopting claims constructions at the hearing, at the, at the hearing itself.

[00:12:25] Speaker 05:
No, your honor.

[00:12:27] Speaker 02:
And you have not yet made it showing that you in fact were harmed by the application of your preferred claim constructions.

[00:12:36] Speaker 05:
Well, I think I have your honor.

[00:12:38] Speaker 05:
I believe that under the proper claims constructions, we would win substantive LEPA.

[00:12:43] Speaker 02:
Where have you demonstrated that you were harmed by the board having used your claim constructions?

[00:12:51] Speaker 02:
other than the fact that you lost?

[00:12:54] Speaker 05:
Well, Your Honor, had the IPR panel adopted our argument, we could easily have raised technical arguments supported by expert declarations, et cetera, that the prior arc cited did not meet the claim terms.

[00:13:15] Speaker 05:
But I had no opportunity to do any of that because it was only at the hearing itself

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that was that the claims constructions were adopted.

[00:13:26] Speaker 05:
For example, you know, one of the main things is could under the proper constructions, are you allowed to have the user define the mobile website in order to have the mobile data potentially appear?

[00:13:43] Speaker 05:
Is the mobile data actually external to the website?

[00:13:48] Speaker 02:
None of those issues... You've answered my question, sir.

[00:13:51] Speaker 02:
I think you're over your time.

[00:13:53] Speaker 05:
Thank you.

[00:13:53] Speaker 05:
Yes, I am.

[00:13:54] Speaker 05:
I'd like to reserve the rest of my time for rebuttal.

[00:13:56] Speaker 05:
Thank you, Your Honor.

[00:13:57] Speaker 03:
We will save it for you, Mr. Pitcock.

[00:14:00] Speaker 03:
Mr. Sommer.

[00:14:02] Speaker 01:
Thank you, Your Honor.

[00:14:02] Speaker 01:
May it please the court, Andrew Sommer for Appellee RPX Corporation.

[00:14:07] Speaker 01:
I'd like to dive back into the APA issue that we've been discussing here this morning.

[00:14:12] Speaker 01:
and kind of point out the history of this.

[00:14:15] Speaker 01:
RPX proposed one construction in its petition, and that was for mobile website.

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And if you look at the board's institution decision and what it did, which is around appendix page 306, the board looked at that and rejected our construction.

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In fact, it said your construction's too narrow, RPX, we're going to adopt the one that the district court used.

[00:14:36] Speaker 01:
And the one that was advocated for by publishing.

[00:14:40] Speaker 01:
Then the board also went ahead and said, we don't see any need to construe any further terms at this time.

[00:14:50] Speaker 01:
With respect to publishing's claim that they had no opportunity to argue their position under the district court's construction, I'll point to their patent owner response.

[00:15:00] Speaker 01:
At page appendix page 374, the first paragraph of the argument, none of the prior art teaches a content management website.

[00:15:10] Speaker 01:
That first sentence says in accordance with the previous construction of the term adopted by the district court.

[00:15:16] Speaker 01:
They go on to attack our challenge based on the generating a mobile website configured to receive data automatically on page 375 of the appendix.

[00:15:26] Speaker 01:
And again, they argue under the district court's claim construction, we hadn't met our burden.

[00:15:30] Speaker 01:
There is no harmful error here.

[00:15:33] Speaker 01:
And I don't know what good a remand would serve if this court were to conclude that the board is obligated

[00:15:40] Speaker 01:
to announce a claim construction prior to the time of the hearing.

[00:15:44] Speaker 01:
But what's more, in this case, RPX did put publishing on notice that it had no issues with the constructions.

[00:15:52] Speaker 01:
And the reason that it did so is reflected in publishing's briefing.

[00:15:56] Speaker 01:
The district court applied the plain and ordinary meaning of the terms, which is consistent with what RPX said in its petition.

[00:16:03] Speaker 01:
If you look at appendix page

[00:16:08] Speaker 01:
Sorry, Your Honor.

[00:16:09] Speaker 01:
256, you see that publishing is arguing for the plain and ordinary meaning.

[00:16:14] Speaker 01:
It says that the district court under Phillips attempted to apply the plain and ordinary meaning of the language of the claims.

[00:16:21] Speaker 01:
Again, appendix page 452, they argued to the board that automatic should be given its plain and ordinary meaning, which is exactly what the district court applied.

[00:16:31] Speaker 01:
And we agree.

[00:16:33] Speaker 01:
And we believe that our prior art meets that.

[00:16:36] Speaker 01:
language under the district court's construction.

[00:16:38] Speaker 01:
We said this in our reply briefing before the board.

[00:16:42] Speaker 01:
Publishing had a surreply to respond to our arguments, and then we went to the oral hearing.

[00:16:47] Speaker 01:
And it didn't say that it was prejudiced, as Mr. Pickock agreed, by the board adopting its own constructions.

[00:16:55] Speaker 01:
With respect to the RPI issue, in our view, Your Honors, it's kind of more from one argument about

[00:17:04] Speaker 01:
Publishing never agreeing to accept the discovery that RPX agreed to give it during proceedings to, it did so only begrudgingly and at the insistence of the board, essentially raising a due process challenge to the board's procedures on discovery for the first time in reply.

[00:17:21] Speaker 01:
Your Honors, we submit that argument has been waived.

[00:17:25] Speaker 01:
But even so, the cases that publishing sites to support this relate to

[00:17:31] Speaker 01:
revocation of a security clearance based on confidential information submitted by a confidential informant that some individual was a communist, or revocation of welfare benefits without the ability to confront witnesses.

[00:17:48] Speaker 01:
And really what these cases say is that an agency or a government entity can't act to the prejudice, and certainly material prejudice in these cases, of those individuals

[00:17:59] Speaker 01:
without giving them the right to confront the evidence that's being used against them.

[00:18:03] Speaker 01:
Those are simply inapplicable here.

[00:18:05] Speaker 01:
The board's evidence is of record.

[00:18:07] Speaker 01:
The back findings are of record.

[00:18:09] Speaker 01:
They're unchallenged on appeal.

[00:18:11] Speaker 01:
So we believe that that aspect, even if it could be reached by this court, and we submit it cannot under thrive in ESIP Series 2, should be affirmed.

[00:18:21] Speaker 01:
Finally, with respect to the challenge based on Underwood and the board's findings, we submit that if this court

[00:18:27] Speaker 01:
agrees that the board's findings on Underwood are supported by substantial evidence.

[00:18:31] Speaker 01:
It doesn't need to go any further and touch the Austin grounds.

[00:18:36] Speaker 01:
And we submit that the board's decision is supported by substantial evidence.

[00:18:41] Speaker 01:
First, it's undisputed that Underwood teaches a content management website that it calls a definer, and that at this definer, a user trying to build a website is able to designate what they call definer external components, or DXCs.

[00:18:56] Speaker 01:
These DXCs are custom applications that live outside of the definer environment and are plugged into web pages.

[00:19:03] Speaker 01:
There's also disclosure in Underwood, as the board found, of a user ensuring that their site displays properly on reduced capacity devices, and even having the website able to detect the capabilities of the device accessing the site so that it displays properly on those reduced capacity devices, such as cell phones.

[00:19:25] Speaker 01:
We submit that that is substantial evidence that supports the board's fact findings and conclusions that the challenge claims are unpatentable.

[00:19:33] Speaker 01:
And unless your honors have any additional questions.

[00:19:37] Speaker 03:
Council, do you think Underwood applies to all of the claims?

[00:19:42] Speaker 01:
Yes.

[00:19:43] Speaker 01:
So there's a variety of findings and grounds.

[00:19:47] Speaker 01:
But yes, Underwood does, your honor.

[00:19:49] Speaker 01:
And there's some helpful charts that the board prepared found at page appendix 77

[00:19:55] Speaker 01:
and appendix 106.

[00:19:57] Speaker 01:
And if you map through those, the chart, every one of the claims has been validated under the Underwood grounds.

[00:20:04] Speaker 01:
That isn't true of the Austin grounds because the board decided that once it is invalidated, certain dependent claims, it didn't need to reach the alternative arguments.

[00:20:19] Speaker 03:
I'm hearing no further.

[00:20:22] Speaker 02:
Thank you very much.

[00:20:24] Speaker 03:
So we will hear from Ms.

[00:20:26] Speaker 03:
Craven in the Patent Office briefly.

[00:20:30] Speaker 00:
Yes, may it please the court.

[00:20:31] Speaker 00:
The director intervened in this appeal solely to defend the unreviewability of the board's real party and interest decision.

[00:20:37] Speaker 00:
That decision is final and non-appealable under Section 314D as this court held in ESEP.

[00:20:44] Speaker 00:
Publishing Tech's counsel didn't raise this in their opening argument.

[00:20:48] Speaker 00:
So unless the court has any questions, I will yield the remainder of my time.

[00:20:55] Speaker 03:
Hearing none, we'll go back to Mr. Pitcock who has two minutes left for a bottle.

[00:21:04] Speaker 05:
Yes, Your Honor.

[00:21:05] Speaker 05:
So to address the issue on the IPR and whether or not the real party in interest can be appealed, Thriv did not come out.

[00:21:16] Speaker 05:
So none of the parties, including RPX, argued that it was, you know, that the appeal was somehow barred

[00:21:24] Speaker 05:
um, by the, uh, by the statute.

[00:21:27] Speaker 05:
So if anybody has waived that argument, it would be RPX, not us.

[00:21:32] Speaker 05:
But since there was a subsequent change in law, of course we addressed it.

[00:21:37] Speaker 05:
Um, this court essentially, you know, has a choice.

[00:21:40] Speaker 05:
Can, can the PTO, can a panel of the PTO essentially overturn

[00:21:47] Speaker 05:
all of the decision-making in applications in time with respect to RPX in that case on what constitutes a real party in interest simply by saying, well, that's not appealable and not, you know, taking any data even when they knew and have a presidential opinion that

[00:22:11] Speaker 05:
former members or current members of RPX are in fact real parties in interest and can be barred.

[00:22:18] Speaker 05:
And even though it's supposed to be RPX's burden under Worldwide to show that there are no real parties in interest, I would argue is exactly the due process procedural shenanigans that was carved out of Thriv as an exception to the non-appealability of those decisions.

[00:22:40] Speaker 05:
This isn't a case where anybody knows the facts and everybody knows the facts like RIV and similar cases.

[00:22:47] Speaker 05:
This is a case where because the board took no, you know, took no lead in requiring RPX to give any information about its customers, RPX even keeps some of those members a secret

[00:23:06] Speaker 05:
from everyone, so it's quite conceivable that there would be a real party in interest and you wouldn't know it until it's too late.

[00:23:14] Speaker 05:
And because they didn't require, I'm sorry, my time is up.

[00:23:20] Speaker 03:
You can finish your sentence.

[00:23:22] Speaker 05:
So, you know, there's no factual predicate for treating RPX differently in this case than applications and internet time.

[00:23:32] Speaker 05:
There was no factual basis to distinguish it by the board and this is exactly the exception that should have come up under threat.

[00:23:47] Speaker 03:
Thank you, counsel.

[00:23:48] Speaker 03:
We appreciate all the arguments and the case is submitted.

[00:23:53] Speaker 05:
Thank you, your honor.