[00:00:01] Speaker 04:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:05] Speaker 04:
God save the United States and this honorable court.

[00:00:10] Speaker 04:
The court will hear argument in number 20-15-58, Qualcomm against Apple.

[00:00:16] Speaker 04:
Ms.

[00:00:16] Speaker 04:
Sweezy, please begin when you're ready.

[00:00:19] Speaker 01:
Thank you, Your Honor.

[00:00:20] Speaker 01:
Good morning.

[00:00:21] Speaker 01:
May it please the court?

[00:00:23] Speaker 01:
The board still ground for finding the challenged claim unpatentable with statutorily improper

[00:00:30] Speaker 01:
This court should reverse.

[00:00:32] Speaker 01:
The issue here concerns the scope of inter-parties review and specifically the text of Section 311B of the AIA, which identifies specific categories of prior art that can be used as a ground in an IPR.

[00:00:47] Speaker 04:
You mean as a basis, right?

[00:00:50] Speaker 01:
Yes, Your Honor, technically as a basis.

[00:00:53] Speaker 01:
The grounds would be 102, 103, and then as a basis.

[00:00:56] Speaker 04:
Right, and I know the language in IPR practice uses ground for basis, but since we're talking about the statute, we might keep that language consistent with the statute.

[00:01:08] Speaker 01:
Yes, Your Honor, thank you.

[00:01:10] Speaker 01:
I will.

[00:01:11] Speaker 01:
The statute does limit the basis for an IPR to two specific categories.

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They would be first patents and second printed publications that are prior art to the challenged patents.

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The text at issue is on the basis of prior art consisting of patents or printed publications.

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That is a clear rule that limits what can be used as a basis in an IPR.

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Here, the board exceeded that scope.

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The board rested on a basis that combined statements in the 674 patent itself with the Majorsic reference.

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That is not permissible because it does not meet the categories under Section 311B.

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The 674 patent, the challenge patent, is not a prior art reference.

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It is not a prior art patent.

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It is not a prior art printed publication.

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And because the board exceeded a statutory scope in issuing a final written decision that rested on a basis that attempted to combine the patent itself with a reference, the court should reverse.

[00:02:13] Speaker 04:
What kind of uses of things that are not prior art patents or printed publications are permissible in deciding IPR questions, like admissions, like expert testimony about common knowledge?

[00:02:36] Speaker 04:
Surely some such uses are permissible, and so the question would be whether

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how to distinguish those uses from use as a basis?

[00:02:49] Speaker 01:
Yes, Your Honor.

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And this Court has recognized that distinction.

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The statute does itself.

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In other words, Section 311B is really directed to what can be the basis.

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And this Court has recognized that there are other uses of other types of evidence, whether that be statements in the challenge patent itself, in the background section or elsewhere, expert declarations,

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other prior art references or even non-prior art.

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And the types of uses that evidence can be made of would be what the court has characterized as supporting roles, limited supporting roles.

[00:03:24] Speaker 01:
So for instance, any of this other evidence could be used to understand what the asserted art means.

[00:03:32] Speaker 04:
Where does the phrase limited supporting role come from that you were just using?

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Supporting role and the actual quote is proper supporting roles.

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It's from the YETA decision where this court actually catalogs these various uses.

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It wasn't specifically addressing statements in the challenge patent itself, but it was recognizing that there is other evidence that can be used in an inter-parties review beyond specific asserted art.

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So for instance, informing what the level of ordinary skill in the art might be,

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understanding what the asserted references actually disclose.

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There might be other documents or evidence, expert testimony.

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What about something that might be at least getting close to what's going on here, whether it gets all the way there or not is another question, which is a reason to supply, a reason to modify a particular reference

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in a way that supplies a final claim element and arrives at the claimed invention.

[00:04:41] Speaker 01:
Right, Your Honor.

[00:04:41] Speaker 01:
That would also be a permissible use.

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In other words, in the sense of it could be evidence demonstrating that a person of ordinary skill in the art might modify one of the asserted references.

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And the Court has recognized that under Section 103, the artisan's general knowledge is part of that inquiry.

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Certainly Section 311B acknowledges that 103 has the role here.

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That's one of the statutory grounds.

[00:05:08] Speaker 01:
But the basis of the 103 would be a combination or a single reference that would be asserted, how that reference might be read by a person of ordinary skill in the art, how it might be modified, how it might be combined with another reference that is part of that basis.

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Those uses could be made of other evidence, whether it's

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expert testimony opining on what's in the general knowledge or other references.

[00:05:34] Speaker 03:
This is Judge Chen.

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What about supplying claim limitations?

[00:05:41] Speaker 01:
No, Your Honor.

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Section 311B, that would be precisely what 311B would prohibit using statements in the patent itself.

[00:05:49] Speaker 03:
Is that what we've seen yet of research that we, or Conan Cleet gave Phillips, that you can't rely on admissions or

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knowledge of a skilled artisan for matching up with certain claim limitations?

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In the sense, Your Honor, that the 103 inquiry does take into account how a person of ordinary skill in the art would read the asserted references.

[00:06:16] Speaker 01:
The threshold, though, needs to be what are the asserted references, and that's precisely what Section 311... I'm sorry.

[00:06:23] Speaker 03:
I'm a little confused.

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My understanding of our case law is that we've already endorsed or blessed

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accepted the reliance on things like knowledge of the skilled artist and or admitted prior art to supply at least one claim limitation or maybe more than one.

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I mean we can get into an argument about well then what does it mean to be the basis but as I understand the state of our case law we've already made a choice that is okay for things like

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established knowledge of a skilled artisan to support a finding that it was known in the prior art that certain claim limitations in the claim were known.

[00:07:16] Speaker 03:
Am I wrong about that?

[00:07:19] Speaker 01:
With one caveat, Judge Ten, if I can address where the question landed and then one comment you made.

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as part of the question.

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So no, we completely agree that the case law has recognized that the general knowledge of the artisan can inform the 103 analysis.

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The distinction is that in IPRs, Congress has made the choice of what can be the basis for a 103 contention.

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And it has specified two particular types of prior art, and this court has

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consistently recognize that phrasing, albeit in the Section 301 context for reexaminations, but where that same language is used as understanding that the phrase, prior art consisting of patents or printed publications, means the natural reading that the references that can be used, the documents that can be used to challenge an issued patent consist of prior art patents or prior art printed publications.

[00:08:23] Speaker 01:
The caveat I wanted to note is

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This is Judge Bryson and I want to follow up on the questions of my two colleagues.

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I'm struggling to understand the distinction that you're drawing between basis and supporting evidence or other materials.

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Do you have a definition that would help us with that rather than our trying to

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cobbled together examples, is there something more definitional or are we really talking about something fairly formalistic as in this is obvious under x in light of y in which x and y would be the bases and everything else would be supporting?

[00:09:16] Speaker 01:
Your Honor, I think by force of statute, whether we want to call it formalistic or not, Congress has made the choice as to what can be used as a basis for... Right, I understand that.

[00:09:29] Speaker 02:
What I want to know is what you think, how you would define the term basis here.

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Is it just in the formalistic sense that as long as the PTO is not using the references in the formalistic sense,

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X in light of Y that everything else is open season?

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Or is it something more restrictive?

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I do think I agree with the phrasing that Congress has said that the contemplated scope of inter-parties review would be an asserted reference as a single reference obviousness or reference X in light of reference Y. That is the

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the scope of 311B and what informed the basis.

[00:10:18] Speaker 01:
This court has reconciled, however, that other evidence can be used.

[00:10:25] Speaker 04:
Please continue.

[00:10:26] Speaker 01:
Thank you.

[00:10:27] Speaker 01:
In terms of a definition, Your Honor, I think it really goes back to, we're talking specifically here about Section 103 and general knowledge.

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And in cases like Phillips versus Google, Pace versus Ford,

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Sanofi versus Mylan, this court has recognized that evidence can be used to inform once you have the threshold understanding of what is the asserted art by the petitioner.

[00:10:54] Speaker 01:
I don't think there's really a difficulty here in terms of line drawing.

[00:10:59] Speaker 01:
The court in Phillips, and I think Phillips teaches us a lot of lessons here, has already done that inquiry.

[00:11:05] Speaker 01:
So it's already first evaluated what is the ground asserted by the petitioner,

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and explained that it does matter how the petitioner articulates its grounds.

[00:11:15] Speaker 01:
This goes back to SAS Institute and the petitioner being the master of its complaint.

[00:11:20] Speaker 01:
And in Phillips, even where the petitioner said that the board had articulated a third ground using the same evidence and the same arguments as the petitioner, this court said that cannot be done.

[00:11:33] Speaker 01:
That's recasting a ground.

[00:11:35] Speaker 01:
It's the petitioner that needs to master its complaint.

[00:11:37] Speaker 01:
The rest of Phillips that I think also informs us and is very helpful says that a petitioner could assert a single reference and say that that reference could be modified in some sense based on what the ordinary artisan would know.

[00:11:52] Speaker 01:
And all kinds of evidence could inform that inquiry, whether it's statements in the Patent Challenge Patent itself, Effects for Declarations, other art.

[00:12:01] Speaker 01:
But that needs to be properly.

[00:12:03] Speaker 03:
Just so I follow up on this, on my question,

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In Phillips, the basis, I don't know, the ground of the challenge, whatever you want to call it, it was smell plus general knowledge of the skilled artisan.

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And it was the pipelining limitation in the claim that the challenger pointed to the knowledge of the skilled artisan for that limitation.

[00:12:35] Speaker 03:
Is that right?

[00:12:37] Speaker 03:
As part of that evidence, Judge Chen, so the court... Was there something in the actual prior art reference itself that taught the pipelining limitation?

[00:12:48] Speaker 01:
Yes, this court said, recognized that the law reference also taught that and that there was also expert declaration.

[00:12:54] Speaker 03:
This court, in cases like Ariosa, has been clear that... What if we read Phillips to say that it's okay to

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rely on the knowledge of a skilled artisan as supported by whatever evidence you want to use in combination with a prior art reference to be a basis of a 103 challenge and an IPR.

[00:13:24] Speaker 03:
And if we think that, if that's the way we read Phillips, then wouldn't it likewise be okay to,

[00:13:31] Speaker 03:
to make a basis of a 103 challenge in an IPR, a prior art reference in conjunction with admitted prior art, given that admitted prior art is really just another way of identifying what is already within the knowledge of the skilled artisan before the date of the patent.

[00:13:55] Speaker 01:
So I'd like to answer the first part that I read Phillips.

[00:13:59] Speaker 03:
Well, you have to accept the way I read Phillips in the hypothetical.

[00:14:03] Speaker 03:
It's just a hypothetical.

[00:14:05] Speaker 03:
But the hypothetical is you can use an IPR in which the challenge is based on a prior art reference in conjunction with the knowledge of a skilled artisan in which you are relying on the knowledge of the skilled artisan to supply

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a claim limitation that is missing from the actual prior art reference you are asserting in the challenge?

[00:14:35] Speaker 01:
Under that hypothetical, Judge Chen, if the only evidence that is being asserted as demonstrating general knowledge is, quote unquote, prior art from the patent itself, that does not meet Section 311B because it is not a prior art patent or a prior art printed publication.

[00:14:53] Speaker 01:
So that would either be an end run, an improper end run around Section 311B or simply directly contrary to it.

[00:15:01] Speaker 01:
The court has recognized that the board and this court can certainly police and I think a clear ruling from this court on the scope of 311B would dis-sensivize misuses of so-called applicant admitted prior art.

[00:15:15] Speaker 01:
AFL is attempting, attempted to use and the board used statements in the challenge patent itself under 311B.

[00:15:23] Speaker 04:
Why don't you wrap up and then you'll have your rebuttal time back.

[00:15:31] Speaker 01:
Thank you.

[00:15:32] Speaker 01:
And I just wanted to reinforce that the hypotheticals we're discussing here are not the situation here where Apple used a reference under 311b for one limitation but relied on the

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statements in the patent itself as most of the majority of limitations.

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That's not the contemplated scope of Section 311B.

[00:15:54] Speaker 01:
And APHA clearly brought its grounds, its basis on the major reference in view of, and the other way actually, starting with the so-called applicant admission priority, which is outside the scope of Section 311B.

[00:16:10] Speaker 01:
Thank you for the additional time and I'll,

[00:16:13] Speaker 01:
Hopefully I'll have some time for rebuttal.

[00:16:15] Speaker 04:
Thank you.

[00:16:16] Speaker 04:
Okay.

[00:16:17] Speaker 04:
Thank you.

[00:16:18] Speaker 04:
Ms.

[00:16:18] Speaker 04:
Queller?

[00:16:20] Speaker 00:
Yes, Your Honor.

[00:16:22] Speaker 00:
Your Honor, may it please the Court?

[00:16:24] Speaker 00:
The Director intervenes to request that this Court use its discretion to remand the proceedings back to the Agency

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in order to allow the board to reconsider the final written decision and apply the director's guidance on the use of applicant-ended care art.

[00:16:38] Speaker 04:
Should we decide anything at all before we remand or just remand?

[00:16:42] Speaker 04:
I mean, it seems to me that there's a sort of the main debate between the parties, which may actually have a very easy resolution that is a resolution in favor of Qualcomm.

[00:16:54] Speaker 04:
that the two printed publications and patents themselves have to be prior.

[00:17:02] Speaker 04:
The patent itself is not prior, so they can't be the basis.

[00:17:06] Speaker 04:
And that would then leave the question, well, is the admission in this patent a basis?

[00:17:14] Speaker 04:
Should we decide even that first question?

[00:17:17] Speaker 00:
Your Honor, it is within this Court's discretion, of course, to decide the statutory interpretation of 311 as a de novo issue.

[00:17:24] Speaker 00:
The Director just requested a remand just based on the legitimate concern that the Court's review be based on the current agency statutory interpretation, which differs from the analysis that the Board decision

[00:17:37] Speaker 00:
used it as currently before the court.

[00:17:40] Speaker 04:
So what do you think basis means?

[00:17:43] Speaker 04:
Is it a matter of the formality, and I don't mean to diminish the significance by using that term, in the statement of the ground as AAPA in view of matursic?

[00:17:57] Speaker 04:
Is it a matter of how much is being used?

[00:18:04] Speaker 04:
Is it a matter of whether in the heading the AAPA comes first or second?

[00:18:11] Speaker 04:
On the assumption that that's the remaining question, what should we think about that?

[00:18:20] Speaker 04:
I'm not sure actually that the director's guidance,

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It actually supplies very much guidance on that question.

[00:18:30] Speaker 00:
So with respect to the order of references, I'll take that portion first.

[00:18:35] Speaker 00:
The board did address that, and I agree with that decision on Appendix 22 that rarely does the order of reference and the positional of the references make any difference in analyzing the patentability of the claim.

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So I would not agree that that informs the decision of whether or not

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the admission is the basis.

[00:18:56] Speaker 04:
Just so that the statement AAPA plus misurgic you would treat as identical for these purposes to misurgic plus AAPA or misurgic in view of AAPA.

[00:19:11] Speaker 00:
That's correct, Your Honor.

[00:19:13] Speaker 04:
And do you think that in this case either Apple has argued for or that the petition supplies a basis for the Board to find unpatentability, viewing it that way consistent with the constraints on the Board

[00:19:39] Speaker 04:
having to follow the petition.

[00:19:45] Speaker 00:
I think that's a great example of one of the other reasons that the directors requested remand in order to address whether or not the admission here was used as evidence of general knowledge and not impermissibly overtaking the entire proceedings as your honor indicated as an improper basis.

[00:20:08] Speaker 00:
That is not a factual decision that the board made here so that is something that

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could be conducted an analysis that could be conducted on remand.

[00:20:18] Speaker 00:
And that would also allow, you know, if there are any disputed facts of whether Qualcomm disputes in fact that this is an admission or whether what they've stated in their patent is evidence of general knowledge, that is something else that could be conducted on remand.

[00:20:36] Speaker 00:
Otherwise, as the director put in the guidance,

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The decision of whether or not admissions are used as evidence of general knowledge can be simply guided by this court's precedent in Concrete Gay Phillips.

[00:20:52] Speaker 00:
We also have the B.E.

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aerospace decision and Arendi v. Apple that all address the use of evidence such as for general knowledge or common sense in addition to a prior art patent.

[00:21:05] Speaker 00:
So, the main idea is that the 311 analysis be based in the Director's Guidance at 4535.

[00:21:15] Speaker 00:
There's a definition of basis.

[00:21:17] Speaker 00:
Is this the starting point?

[00:21:19] Speaker 04:
This is the foundational or starting point.

[00:21:21] Speaker 04:
Correct, Your Honor.

[00:21:24] Speaker 04:
You've read Apple's petition.

[00:21:27] Speaker 04:
Is there any reasonable way to read that petition as treating Masurcik but not AAPA as foundational or a starting point?

[00:21:42] Speaker 00:
Your Honor, I would respectfully push that question to a question of fact within the Board of Providence to answer that question on remand.

[00:21:51] Speaker 00:
So if that is something that would be helpful and guide the courts, the Fennel's decision on the use in this case, I think that would be one reason to remand for the Board to make that decision in the first place.

[00:22:06] Speaker 03:
This is Judge Chen.

[00:22:09] Speaker 03:
Anything more or does the agency have anything more to offer other than the dictionary definition for the word basis to understand what the meaning of that word is in Section 311B?

[00:22:26] Speaker 00:
In addition to the meaning of that word, I think this court has addressed that already.

[00:22:31] Speaker 00:
So the addition that we would have would be this court's precedent, as I mentioned, for example, in Conclic A Phillips or B.E.

[00:22:37] Speaker 00:
aerospace, where the very similar questions were asked about the use of general knowledge.

[00:22:42] Speaker 00:
And really, you know, admissions do boil down as excellent, true admissions in a patent, excellent admissions or excellent evidence of.

[00:22:51] Speaker 03:
I guess what I'm trying to figure out for the context of an IPR is,

[00:22:56] Speaker 03:
Does it matter to the agency how many limitations that are being taught by the AAPA versus a cited prior art reference?

[00:23:10] Speaker 03:
Does it matter to the agency if the AAPA is doing nothing more than supplying what I'll call routine, conventional, well-known

[00:23:24] Speaker 03:
boring elements and that it's the cited prior art reference that's actually being used to supply the inventive contribution that the inventor provided.

[00:23:36] Speaker 03:
I mean, I'm just trying to get a feeling.

[00:23:39] Speaker 03:
I mean, you want us to send it back, but because you want the agency to use its own powers of interpretation and application of an interpretation, but I don't really,

[00:23:53] Speaker 03:
know at the moment what your understanding is of BASIS.

[00:23:58] Speaker 03:
Is there something you can give me a little bit more on what the PTO's thinking is on the term BASIS?

[00:24:05] Speaker 00:
Well, one source of understanding the proper role that this type of evidence would play in an IPR would come from the Arendi v. Apple decision where they discussed kind of the contours and the proper use of common sense and an obviousness analysis.

[00:24:20] Speaker 00:
So the first kind of

[00:24:23] Speaker 00:
The first inquiry was whether it's used to provide a motivation to combine.

[00:24:28] Speaker 00:
The second was when it's provided or invoked to supply a limitation that was missing, whether the limitations in question were simple, the technology was straightforward.

[00:24:39] Speaker 03:
What if it's a claim with 10 limitations and you're relying on the AAPA to match up with nine of the 10 limitations and then you're citing a prior art reference

[00:24:52] Speaker 03:
for the tenth limitation.

[00:24:55] Speaker 03:
But at the same time, when you look at the challenge patent, the challenge patent says the first nine limitations, those are all very well known.

[00:25:05] Speaker 03:
And so there's nothing interesting about those.

[00:25:10] Speaker 03:
But my contribution is modifying that old boring circuit diagram by adding a new element to it that will improve its performance.

[00:25:22] Speaker 03:
And the IPR challenger is now relying on a prior art reference for that tenth element.

[00:25:31] Speaker 03:
What's the basis of that challenge?

[00:25:35] Speaker 00:
So I think it depends highly on the factual nature of the invention in question and what the exact admission is, rather than the number of limitations, but whether the technology was simple,

[00:25:49] Speaker 00:
The modification was simple, following this court's guidance.

[00:25:55] Speaker 03:
Was my question not enough?

[00:25:57] Speaker 03:
Did my question not hypothetical give you enough information on the fact pattern?

[00:26:03] Speaker 00:
Well, respectfully, Your Honor, I would say that it depends on the technology.

[00:26:07] Speaker 00:
So whether the technology was particularly straightforward, the limitation in question or the limitations, you know, are there ten elements, but they're all together as one?

[00:26:19] Speaker 00:
I do think the technology is important to that inquiry.

[00:26:23] Speaker 00:
The other question is whether or not the admission is disputed, whether it's proper evidence of general knowledge.

[00:26:31] Speaker 00:
Does the patent owner dispute

[00:26:33] Speaker 00:
whether or not this is a true admission or whether or not... It's not disputed in my hypothetical.

[00:26:37] Speaker 03:
It's not disputed in my hypothetical, and the technology is straightforward.

[00:26:42] Speaker 00:
If the technology is very straightforward, I do not believe the number of limitations is a guidance of whether or not it is a basis.

[00:26:50] Speaker 00:
Without commenting on and knowing the full facts, and I understand, Your Honor, the hypothetical is very complete.

[00:27:01] Speaker 00:
But if a prior art reference is there, then we do believe that that satisfies the requirement of 311, that the basis be on a prior art patent, which the admission is not.

[00:27:12] Speaker 00:
We do agree that the admission is not a prior art patent.

[00:27:15] Speaker 00:
And then it does appear that that would fit within this court's precedent in Conclique and Arendy as just supplying the general knowledge.

[00:27:25] Speaker 00:
of the art.

[00:27:25] Speaker 00:
So I do think the guidance is there already, a re-array in this court's precedent on how to use evidence, or how to use evidence of general knowledge, evidence of common sense for missing claim limitations, and admission is just another type of that evidence.

[00:27:43] Speaker 00:
And it has been frequently used, as we mentioned, in re-exam the

[00:27:49] Speaker 04:
the history of this limitation of the 11th.

[00:27:54] Speaker 04:
You've pointed to Arendt, which is all about common sense.

[00:28:00] Speaker 04:
Is that the same concept as what's in the prior art, though in an undocumented way?

[00:28:08] Speaker 04:
I would think that the common sense law is addressing something

[00:28:19] Speaker 04:
different.

[00:28:21] Speaker 04:
That is something about being able to say, well, everybody knows a certain technique or something or is there really no difference so that the Orendi discussion about common sense you think should carry over to this concept of a proper non-basis use.

[00:28:43] Speaker 00:
So the connection between Arendi and the current case comes from the Concluque Phillips decision where they do discuss relying on general knowledge to supply a missing claim limitation.

[00:28:54] Speaker 00:
and discuss the use of common sense and common knowledge that was discussed in Orendi.

[00:29:02] Speaker 00:
And so that is where the connection is being made.

[00:29:05] Speaker 00:
I think there may be differences in different cases between something that is common sense and what evidence that you use for common sense versus general knowledge.

[00:29:14] Speaker 00:
But I do believe that the Orendi decision on common sense does inform the inquiry here as laid out by the panel in Concluque, Philip.

[00:29:23] Speaker 04:
Okay, do my colleagues have any further questions of Ms.

[00:29:28] Speaker 04:
Queller?

[00:29:30] Speaker 04:
No.

[00:29:31] Speaker 04:
Okay, hearing none, I think we should hear from Ms.

[00:29:36] Speaker 04:
Degman.

[00:29:38] Speaker 01:
Thank you, Ash.

[00:29:38] Speaker 04:
Thank you.

[00:29:41] Speaker 01:
Good morning, Your Honor.

[00:29:42] Speaker 01:
May it please the Court, Lauren Degman, for Apple.

[00:29:44] Speaker 01:
And so I'd like to start with noting that both Qualcomm's and the Patent Office's argument must rely on rewriting what

[00:29:53] Speaker 01:
we see as the plain language of the statue, to eliminate the consisting of language, to transform prior art as a noun into prior-art as an adjective in order to arrive at an interpretation that they believe is a better policy than the one that is embodied in the language of the statue itself.

[00:30:15] Speaker 01:
We would submit that the plain language of the statue really broaches no such change.

[00:30:21] Speaker 01:
And if we were to get into policy arguments and the legislative history, both fall squarely on the side of allowing prior art that is found and is contained in a patent or printed publication is, in fact, fully consistent with the policy set forth in the IPR statute and, in fact, the policy set forth by many cases

[00:30:47] Speaker 01:
including, you know, the general notion to weed out bad patents.

[00:30:54] Speaker 04:
Can you talk to us about the issue we've been talking about for the last half hour?

[00:31:00] Speaker 04:
Suppose you're wrong about that.

[00:31:03] Speaker 04:
Help at least me understand what a proper but non-basis use of the statements of admission here are on the assumption that they are in fact

[00:31:23] Speaker 04:
They cannot be bases.

[00:31:27] Speaker 01:
So I mean, under your hypothetical, if they cannot be used as bases, and I think there's been some good questions about how we define the contours of the bases.

[00:31:37] Speaker 01:
I think that there's no question under Phillips, this court's case is Phillips, that they can be used to supply missing limitations.

[00:31:45] Speaker 01:
And I think the conversation about how many

[00:31:50] Speaker 01:
how many limitations, the quantity or the quality of limitations.

[00:31:55] Speaker 01:
I don't think we need to drill down to be cutting, you know, slicing hairs on that.

[00:32:03] Speaker 01:
So they can supply limitations and in terms of the hypothetical Judge Ken offered, I think there's no question, as it was before the board here, that

[00:32:15] Speaker 01:
applicant-admitted prior art should be able to supply all the limitations that were acknowledged to be, you know, common standard known in the art.

[00:32:25] Speaker 01:
And then, you know, should there be a qualitative, you know, if the limitation is particularly important, should we be able to fill that?

[00:32:32] Speaker 01:
I, frankly, would say it should be, because I think when we do the 103 analysis, this Court has said that all limitations do matter.

[00:32:40] Speaker 01:
We look at the sources of prior art

[00:32:45] Speaker 04:
Collectively, we don't necessarily give any... Doesn't there... Again, on the assumption, which I know you disagree with, but on the assumption that 311b reflects a limitation of the basis of an IPR challenge, then must not there be some basis

[00:33:15] Speaker 04:
some rule for cabining the use so that there isn't essentially a wholesale elimination of the restriction in 311B whereby evidence is introduced as part of the petition, none of it in the form of a prior art patent or a prior art patented

[00:33:42] Speaker 04:
printed publication, but saying, here are all of the things that practitioners in the field knew from some expert, for example, with nothing cited, just evidence.

[00:33:54] Speaker 04:
So it's not as good as an admission, but nevertheless, it's evidence.

[00:33:57] Speaker 04:
All of that could essentially supply the lion's share of the case for obviousness as long as there is one

[00:34:08] Speaker 04:
prior art patent or prior art printed publication that is cited for some of it?

[00:34:15] Speaker 01:
So, Your Honor, I will agree with you initially that under your hypothetical there has to be at least one prior art patent or prior art printed publication.

[00:34:25] Speaker 01:
But then I would say from there, you know, there really should not be a limit when it comes to an admission.

[00:34:33] Speaker 01:
Admissions are 100% reliable.

[00:34:36] Speaker 01:
They cannot be challenged.

[00:34:37] Speaker 01:
There's an estoppel associated with them.

[00:34:40] Speaker 01:
And if the admission is such that it takes up, you know, the majority of the limitations quantitatively or qualitatively, as long as it's not all of them, there's no reason, you know, certainly based on the plain and orderly meaning of basis in section 311 that there should be some further cabining of how

[00:35:01] Speaker 01:
the applicant admitted prior art could be used or to expand on your hypothetical, sir, or at least address it, general knowledge as defined in Phillips.

[00:35:12] Speaker 03:
So this is Judge Shen.

[00:35:14] Speaker 03:
As I understand it, it's starting to sound like for you and I guess Apple, the word basis in Section 311B, basis of prior art consisting of patents or printed publications, as long as you have,

[00:35:30] Speaker 03:
a prior reference that is being used to match up with one claim limitation, no matter how qualitatively insignificant that claim limitation is, that's good enough if you're relying on something else, whether it's AAPA or general knowledge of the skilled artisan to satisfy the rest of

[00:35:56] Speaker 03:
the claim limitations, whether that's 10, 20, or 30 limitations, as well as the general knowledge of the skilled artisan for supporting a motivation to combine that reference with the AAPA or knowledge.

[00:36:14] Speaker 03:
Is that your view of basis?

[00:36:17] Speaker 01:
So Your Honor, our view of BASIS is that it actually does not do the work that the director puts on it.

[00:36:25] Speaker 01:
So I'm answering the hypothetical assuming, I have to agree, that BASIS is actually limiting the grounds to a prior art patent or publications.

[00:36:34] Speaker 01:
But that caveat, to answer your question, I think we have to look at the, you always look at the collection of prior art together.

[00:36:42] Speaker 01:
And all limitations matter, right?

[00:36:44] Speaker 01:
And so I would say if you've got

[00:36:47] Speaker 01:
Whatever is qualifying as the prior art, whether it be applicant-admitted prior art or general knowledge, we shouldn't be ranking the limitations in some sort of quantitative or qualitative order and then deciding what can be filled in by a prior art patent or a prior art printed publication and what can be filled in by admissions

[00:37:15] Speaker 01:
for dermal knowledge.

[00:37:17] Speaker 01:
I think that's not really how a 103 analysis works.

[00:37:20] Speaker 01:
The traditional 103 analysis assumes all the prior art is before a pisita and then, you know, proceeds for the, to be a, you know, whether there's a motivation to combine.

[00:37:29] Speaker 01:
And I will say there is nothing in Phillips that suggests.

[00:37:33] Speaker 03:
Is your answer to my question yes?

[00:37:36] Speaker 03:
That that is how you can understand basis of prior art consisting of patents or printed publications so long as you have a prior art reference

[00:37:44] Speaker 03:
being asserted for one limitation of a claim no matter how insignificant that limitation is, then it's okay.

[00:37:56] Speaker 03:
Then that satisfies the requirements of 311B even though you may be using AAPA or knowledge of the skilled artisan for the remaining 20 claim limitations as well as the case for motivation to combine the knowledge of the skilled artisan with the asserted reference.

[00:38:14] Speaker 01:
So, Your Honor, yes, I think my answer is yes to the caveat that we don't view on the basis of as limiting 311B to prior patents and prior printed publications.

[00:38:25] Speaker 02:
Ms.

[00:38:25] Speaker 02:
Degnan, this is Judge Bryson.

[00:38:27] Speaker 02:
You touched on a point that has been troubling me a little earlier when you alluded to the scope of the estoppel.

[00:38:36] Speaker 02:
Are you suggesting that the estoppel in a case in which there is

[00:38:44] Speaker 02:
non-prior art that is used as support for finding 103 obviousness would extend to all of the kind of evidence that's being used in a supportive role.

[00:39:04] Speaker 01:
So, Your Honor, I am not, I was not suggesting in terms of, what is it, Section 315, estoppel after an IPR, I have come to file my decision.

[00:39:14] Speaker 01:
I am not suggesting anything of that sort.

[00:39:16] Speaker 01:
I was saying that an admission, I was describing the estoppel as why an admission is inherently reliable because it cannot be disputed.

[00:39:23] Speaker 01:
The patent owner who is the master of his own patent application can be held to what he says there.

[00:39:31] Speaker 01:
because he just stopped from saying otherwise.

[00:39:33] Speaker 02:
I was not... Oh, you're not talking about the kind of IPR estoppel.

[00:39:38] Speaker 02:
You're talking about estoppel just prohibiting a party from contradicting himself.

[00:39:45] Speaker 01:
That's exactly right, Your Honor.

[00:39:46] Speaker 02:
I'm sorry if I... But now, turning to the question of estoppel, if we were to agree with you

[00:39:53] Speaker 02:
that with your construction of the statute, I assume that that would mean that the estoppel would be broadened similarly.

[00:40:05] Speaker 01:
Right, so I understand your question, Your Honor, that should applicant-admitted prior art be allowed to be used as part of the grounds in NIPR, I would think that

[00:40:21] Speaker 04:
the fact that it was used and it was addressed, would the estoppel... Right, but just to put a point on it, as you know, the estoppel is not limited to what was used, but what reasonably could have been used.

[00:40:34] Speaker 04:
So why wouldn't it be true that under your view, which is not limited to AAPA, but to any kind of evidence of what people would know, including things on sale and things in public use, that the estoppel

[00:40:51] Speaker 04:
would extend to anything that the petitioner could have invoked in the proceeding.

[00:40:58] Speaker 04:
Could reasonably, I think, is that the language?

[00:41:01] Speaker 04:
I think that's the language of 315.

[00:41:04] Speaker 01:
So Your Honor, we are actually cabining it to applicant admitted prior art.

[00:41:08] Speaker 01:
I mean, that is our argument here.

[00:41:10] Speaker 04:
And I would agree with you that... I don't know, just to be clear, what in the world is the logical basis for that?

[00:41:17] Speaker 04:
Again, it's assuming it is not a prior art patent and a prior art patented publication.

[00:41:29] Speaker 04:
Your view is that anything else that establishes prior art is fair game as long as there is one of those two types in the proceeding, which would suggest

[00:41:42] Speaker 04:
that estoppel would extend to barring in a district court proceeding or other later PTO proceedings the invocation of that entire other world of prior art.

[00:41:58] Speaker 01:
So Your Honor, I don't think we're saying it can be literally saying anything else.

[00:42:01] Speaker 01:
We are saying that it can be applicant admitted prior art and it can be general knowledge under Phillips.

[00:42:07] Speaker 01:
And so I'm not sure we're extending it further than that.

[00:42:12] Speaker 01:
And the benefit of that.

[00:42:15] Speaker 04:
Forget for a minute about what you are asserting.

[00:42:17] Speaker 04:
Why would the consequence not be what I am asking about?

[00:42:30] Speaker 01:
So unfortunately, I think your hypothetical is in some ways so unbounded it's difficult to answer.

[00:42:36] Speaker 01:
I can answer it with respect to applicant admitted prior R's.

[00:42:40] Speaker 01:
But then in terms of, you know, moving beyond that, because applicant-admitted prior art is a known concrete universe.

[00:42:47] Speaker 01:
It has to be in a patent or in a printed publication, and there's not going to be a lot of debate as to what the admission was.

[00:42:54] Speaker 01:
And so I would agree with you on that point with respect to applicant-admitted prior art.

[00:43:00] Speaker 01:
The establishments extend to wherever such admissions arise in a patent or a printed publication.

[00:43:09] Speaker 03:
What's going on in 311B is that it's restricting the types of section 102 prior art that can be the basis for an IPR.

[00:43:21] Speaker 03:
So therefore, assuming for the moment we're talking about 102A prior art patents and printed publications, those documents that predate the invention,

[00:43:39] Speaker 03:
This phrase, prior art consisting of patents or printed publications, is necessarily therefore excluding the other types of 102 prior art, like evidence of sales or evidence of public use.

[00:43:55] Speaker 03:
And as for knowledge of others, well, we've already said that the knowledge of a skilled artisan is always something that

[00:44:09] Speaker 03:
is relevant and usable in an IPR.

[00:44:17] Speaker 03:
And so therefore, of course, you can't rely even in part on commercial sales or public uses in an IPR because this phrase necessarily excludes that by limiting the universe to

[00:44:38] Speaker 03:
Patents are printed publications that predate the invention.

[00:44:46] Speaker 01:
So if I understand your question that you're saying, can we rely on interpretation of 311B as cabining in the later estoppel?

[00:44:56] Speaker 01:
And I think the way you articulated it is a good framework.

[00:45:00] Speaker 03:
Yeah, this is me thinking about Judge Toronto's question.

[00:45:08] Speaker 03:
with you as to whether your position is so broad that the consequence of it, the logical conclusion would be that you're basically allowing everything in that could be deemed prior art.

[00:45:24] Speaker 03:
And the answer is, well, maybe the text wouldn't allow that for things like evidence of sales and public use.

[00:45:34] Speaker 01:
Right, so if I could respond to that.

[00:45:35] Speaker 01:
Our position is not so broad that evidence of public use and public on-sale bar, the things that the legislative history specifically say should not be included because they are sort of a messy dispute that is difficult for the office to administer.

[00:45:51] Speaker 01:
We are not saying that.

[00:45:52] Speaker 01:
We're saying admissions.

[00:45:54] Speaker 01:
So in an, the admissions are easy to identify.

[00:45:57] Speaker 01:
They don't implicate any sort of messy disputes or investigation by the office.

[00:46:03] Speaker 01:
And so only admission in the scope, there's a well established body of law as to what an admission is.

[00:46:09] Speaker 01:
Only admissions applicant admitted prior art is what we're talking about.

[00:46:13] Speaker 01:
We are not expanding it to include things like public use or on sale bar.

[00:46:18] Speaker 04:
I'm sorry, what is it an admission of?

[00:46:22] Speaker 04:
Suppose it's just an admission that something was in public use.

[00:46:27] Speaker 01:
So I would say you're onto that question, that hypothetical.

[00:46:30] Speaker 01:
If the background of a patent,

[00:46:32] Speaker 01:
Says, you know, figure one depicts a circuit that was sold in 1990.

[00:46:40] Speaker 01:
That's an emission that can be used.

[00:46:46] Speaker 04:
And can I just ask, Rick, I just noticed the following, and I have no idea if it's significant.

[00:46:52] Speaker 04:
The estoppel provision uses the word ground, not basis.

[00:46:55] Speaker 04:
Is that of any significance?

[00:46:58] Speaker 01:
So, Euron, I would say that, you know, this sort of equating basis to ground is not necessarily appropriate.

[00:47:08] Speaker 01:
And so, you know, to the extent that there's a distinction there that would matter.

[00:47:12] Speaker 01:
Again, there's nothing in the ordinary meaning of basis or any sort of construction of basis that limits it necessarily to ground or, you know, allows the sort of rewriting the statute we see both the Patent Office and Qualcomm doing.

[00:47:28] Speaker 04:
Any further questions from the panel?

[00:47:34] Speaker 04:
Hearing none, I think we should move on and hear rebuttal from Ms.

[00:47:40] Speaker 04:
Sweezy.

[00:47:41] Speaker 04:
I think you reserved five minutes.

[00:47:43] Speaker 04:
Why don't you see if you need any more than that?

[00:47:47] Speaker 01:
Okay.

[00:47:48] Speaker 01:
Thank you, Judge Toronto.

[00:47:49] Speaker 01:
I appreciate it.

[00:47:50] Speaker 01:
Let me start off.

[00:47:51] Speaker 01:
I think I can address this in about four or five points that I'd like to make, the first two being hopefully quite simple.

[00:47:58] Speaker 01:
I heard the director's counsel suggest that the statute might depend on the technology.

[00:48:04] Speaker 01:
It does not.

[00:48:05] Speaker 01:
The statutory language is clear and Congress limited the types of prior art that can be used as specific categories.

[00:48:11] Speaker 01:
It doesn't depend on what technology might be at issue.

[00:48:14] Speaker 01:
Second, Apple is attempting with its reliance on purported admissions to graft on an additional category which is also contrary to the statute.

[00:48:25] Speaker 01:
We do need to understand

[00:48:26] Speaker 01:
that Apple is attempting to use this as a prior art patent, which it is not.

[00:48:31] Speaker 01:
We have to go back to the statute.

[00:48:32] Speaker 01:
And Judge Chen, with respect to contemplation about statements about prior art sales, this statement in the 674 patent and the figure is no different than other types of alleged admissions.

[00:48:46] Speaker 01:
If they are not the type of prior art that is contemplated by Section 311B, it cannot be part of the combinable art

[00:48:54] Speaker 01:
So, for instance, an admission about a prior art use or sale would not qualify for the same reasons that these statements do not.

[00:49:01] Speaker 01:
And third, and I think I really want to address the court's questions about the role of so-called AAPA versus general knowledge.

[00:49:10] Speaker 01:
And it really is a distinction.

[00:49:12] Speaker 01:
And in terms of a definition for the basis of an IPR and how the court might think about it, I would suggest

[00:49:21] Speaker 01:
Looking at the Yetta case at page 1041 and the Randall versus Ray case at page 1362, the court there consistently recognizes that there is on the one hand evidence that can be used as a basis in an IPR, the asserted references, prior patents and prior printed publications.

[00:49:42] Speaker 01:
And on the other hand, evidence that can be used to understand a motivation to combine or modify those references.

[00:49:51] Speaker 01:
And the court in YETA, for instance, says other types of evidence cannot be applied independently but could inform in their proper supporting goals how a person of ordinary skill in the arts might understand those references or be motivated to combine or modify them.

[00:50:09] Speaker 03:
Ms.

[00:50:10] Speaker 03:
Sweezy, just a quick question.

[00:50:12] Speaker 03:
What is your side's position on the PTO's request that we remand this?

[00:50:19] Speaker 01:
Yes, Your Honor.

[00:50:20] Speaker 01:
One of my other points.

[00:50:22] Speaker 01:
There is no basis or need for a remand here.

[00:50:25] Speaker 01:
This is a statutory interpretation question.

[00:50:27] Speaker 01:
Apple asserted grounds that were outside the scope, and the board relied on those.

[00:50:33] Speaker 01:
And there is no open alternate ground for the board to reconsider on remand.

[00:50:38] Speaker 03:
Here's another question.

[00:50:40] Speaker 03:
I know you preserved some kind of Arthrex-related argument in your briefing.

[00:50:43] Speaker 03:
Hypothetically, what if

[00:50:47] Speaker 03:
three weeks from now the Supreme Court issues an opinion in Arthrex that does its own fix to the statute and repudiates the Federal Circuit's proposed fix to render the APJ's constitutionally appointed and chooses its own.

[00:51:14] Speaker 03:
Would you, and so therefore the conclusion would be that the board panel that decided your case was at that time not properly appointed under the Constitution.

[00:51:27] Speaker 03:
Would you want a remand under that situation or would you want us to keep going?

[00:51:34] Speaker 01:
Especially, Your Honor, we would have to evaluate that at the time, but the simplest course would be to reverse because the grounds did not fall within the basis articulated properly under Section 311B.

[00:51:48] Speaker 01:
And this relates to the remand question in the sense that I believe Apple or at least the board suggested that there's some sort of factual inquiry that the board, sorry, that the director suggested there's some sort of factual inquiry that the board could undertake.

[00:52:03] Speaker 01:
That is not correct.

[00:52:05] Speaker 01:
This court, for instance, in Phillips, is fully capable of evaluating whether Apple actually brought a ground on some other basis, and it did not.

[00:52:15] Speaker 01:
For instance, the petition never refers to general knowledge or common knowledge.

[00:52:20] Speaker 01:
Its expert declaration does not.

[00:52:22] Speaker 01:
In fact, there is no reference in the entire appendix other than in the director's guidance at the very back to anything about general knowledge.

[00:52:29] Speaker 01:
And this is the point I wanted to also make.

[00:52:32] Speaker 01:
in relation to this, what can be a proper non-basis use of evidence that does not fall under Section 311B.

[00:52:41] Speaker 01:
There is a distinction between statements and evidence and what those statements and evidence would mean to the person of ordinary skill and the art in the general knowledge.

[00:52:53] Speaker 01:
And that is because of the hindsight concerns.

[00:52:55] Speaker 01:
Yes, Your Honor.

[00:52:56] Speaker 02:
Yeah, I'm sorry.

[00:52:57] Speaker 02:
Were you done with that point?

[00:52:59] Speaker 01:
I just wanted to reiterate that this Court has made clear that is because of the hindsight concerns of Section 103, and it needs to be substantiated.

[00:53:07] Speaker 01:
Importantly here, Apple never brought that issue, but that, I think, is a principal distinction between the statements themselves and how they might be understood by a person of ordinary skill.

[00:53:18] Speaker 01:
And in Phillips, this Court understood that the Board there relied on multiple types of evidence to inform the general knowledge, not simply statements in the patent itself, which would be improper.

[00:53:28] Speaker 01:
for supplying a limitation for purposes of Section 311B.

[00:53:33] Speaker 02:
Ms.

[00:53:33] Speaker 02:
Sweecy, a while back you mentioned the special status of AAPA, and I just wonder what if you had a case in which there is

[00:53:46] Speaker 02:
an admission made in the patent itself.

[00:53:51] Speaker 02:
And the day after the patent issued, the applicant, now the patentee, gave a lecture in which he discussed the patent and described the prior art.

[00:54:03] Speaker 02:
Would that be admissible, whereas the AAPA in the patent would not?

[00:54:13] Speaker 01:
For purposes of Section 311B, no, I don't think so, Your Honor, because those statements would not themselves be a prior art patent or a prior art printed publication.

[00:54:26] Speaker 04:
Can I just ask one question which has I think nothing to do with the merits that we've been talking about?

[00:54:32] Speaker 04:
Do I understand correctly from the statement of related cases that there is no live private dispute between Com and Apple over this patent?

[00:54:44] Speaker 01:
That is correct.

[00:54:47] Speaker 01:
The cases were litigated to a point, and Apple did in the ITC bring in validity challenge of which this patent survived, but those cases have since been resolved.

[00:54:58] Speaker 01:
The only basis for the challenge claims being found unpatentable is the one ground on which the board relied, the one basis that was outside the scope of Section 311B.

[00:55:09] Speaker 04:
Okay.

[00:55:10] Speaker 04:
I think we should wrap this up then and I thank all counsel and say that the case is submitted.