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

[00:00:07] Speaker 00:
God save the United States and the federal court.

[00:00:11] Speaker 05:
The case for argument this morning is 18-1364, SIPCO versus Emerson Electric.

[00:00:20] Speaker 05:
Mr. Gonzalez, whenever you're ready.

[00:00:25] Speaker 00:
May I please the court?

[00:00:27] Speaker 00:
The board erred when it denied SIPCO's request

[00:00:32] Speaker 00:
to correct a priority claim error during the IPR proceeding.

[00:00:38] Speaker 00:
This error, in turn, caused the board to err in ruling that claims 3, 5, and 11 of the 780 patent were unpatentable over another CIPCO patent, the 732 patent, which is not prior art under the corrected priority claim.

[00:00:57] Speaker 04:
Mr. Gonzales, this is Judge Moore.

[00:00:59] Speaker 04:
As simply a housekeeping matter, given that

[00:01:02] Speaker 04:
that there was earlier briefing filed in this case and we retained jurisdiction.

[00:01:07] Speaker 04:
I just want to ask you, I understand especially from your reply brief that you've withdrawn and are not challenging on the merits the final decision.

[00:01:19] Speaker 04:
You are challenging the failure to give leave to file a distributive correction to correct the priority problem but that you no longer raise and there are not before us

[00:01:32] Speaker 04:
any merits-based challenges to the final decision.

[00:01:36] Speaker 04:
Is that correct?

[00:01:38] Speaker 00:
Yes, you have it correct, Your Honor.

[00:01:40] Speaker 04:
Okay.

[00:01:40] Speaker 04:
Please proceed.

[00:01:44] Speaker 00:
The board made two significant errors.

[00:01:47] Speaker 00:
First, the board denied CIPCO's request for the certificate of correction based solely on its determination that CIPCO's mistakes were deliberate.

[00:01:59] Speaker 00:
And this is at page 527 of the Joint Appendix.

[00:02:03] Speaker 00:
The board's determination is wrong for two reasons.

[00:02:06] Speaker 00:
First, as explained by this court in Honeywell versus Acoma, which I cited in my briefs, the board's denial violated the Administrative Procedure Act because the director, not the board, should determine whether the mistakes occurred in good faith that they were not deliberate.

[00:02:29] Speaker 00:
As explained by this court in Honeywell,

[00:02:32] Speaker 00:
Section 255 does not grant the board authority to determine whether a mistake in an issued patent is of minor character or occurred in good faith.

[00:02:45] Speaker 00:
That authority is instead expressly granted to the director.

[00:02:52] Speaker 00:
Here the board made the same mistakes that it did in the Honeywell IPR.

[00:02:57] Speaker 00:
It concluded that the priority errors were made with deliberate indifference.

[00:03:01] Speaker 00:
and not in good faith when that determination should have been made by the director.

[00:03:12] Speaker 00:
In Section 255, the Patent Office's own regulations indicate that the board has a limited role in assessing a party's request for a certificate of correction.

[00:03:27] Speaker 00:
I statute the PTO director as the authority to evaluate and decide the ultimate merits of a requested certificate of correction.

[00:03:37] Speaker 00:
The director has not delegated that authority to the board.

[00:03:44] Speaker 00:
In addition, the board's action are arbitrary... Excuse me.

[00:03:48] Speaker 05:
Can you hear me?

[00:03:49] Speaker 05:
I'm sorry.

[00:03:50] Speaker 05:
I'm interrupting you.

[00:03:50] Speaker 05:
I apologize, but we're short in time.

[00:03:52] Speaker 05:
This is Judge Crouse.

[00:03:54] Speaker 05:
There's another issue here, I think, with respect to jurisdiction.

[00:03:59] Speaker 05:
Am I correct?

[00:04:00] Speaker 05:
Are you still pressing the point that you should be able to have review over the board's ultimate decision on the remand that we provided?

[00:04:08] Speaker 00:
Yes, that's correct.

[00:04:13] Speaker 05:
Okay, and I'm just wondering about, I mean, the argument you've pressed so far isn't one that implicates jurisdiction, right?

[00:04:22] Speaker 05:
It's deciding whether the board in the initial stage was correct in not entertaining your motion, right?

[00:04:29] Speaker 00:
Yes, that's correct.

[00:04:31] Speaker 00:
We believe the board incorrectly denied the patent owner to write the correct priority claim during the IPR.

[00:04:41] Speaker 05:
Yes, so that issue is, I don't think it's disputed that that question is before us.

[00:04:46] Speaker 05:
The question is whether or not you were required to appeal the second board decision on remand.

[00:04:53] Speaker 05:
Are you continuing to protest whether or not it was required to file a motion to appeal?

[00:05:00] Speaker 05:
A notice of appeal, I'm sorry.

[00:05:05] Speaker 00:
Yes, that was explained on page, starting at page 16 of my reply brief.

[00:05:10] Speaker 00:
that I did file a notice of appeal.

[00:05:14] Speaker 00:
This court retained jurisdiction.

[00:05:16] Speaker 00:
And so there was no need to file a second notice of appeal.

[00:05:20] Speaker 00:
That explains pages 16 through, I guess, 19 or 20 on the reply brief.

[00:05:29] Speaker 05:
Well, certainly we retained jurisdiction over something.

[00:05:33] Speaker 05:
I guess the question is what?

[00:05:35] Speaker 05:
How could we have retained jurisdiction

[00:05:38] Speaker 05:
or had jurisdiction over this question about the impact of the certificate of correction when we sent it back to the board.

[00:05:47] Speaker 05:
We couldn't have both had jurisdiction at the same time, right?

[00:05:53] Speaker 00:
Yes, but from the order that was issued, it indicates that the courts, the Federal Circuit, retained the jurisdiction over the matter, and that they were just asking for the Patent Office's sort of an indicative opinion

[00:06:08] Speaker 00:
on what it felt on a particular issue.

[00:06:12] Speaker 05:
So you understood it to just be sort of an advisory opinion that we were asking them for, even though we used the word remand.

[00:06:20] Speaker 05:
I mean, remand suggests something more concrete, does it not?

[00:06:27] Speaker 00:
When the court said in the order that it was retaining jurisdiction over the appeal, then I interpreted that to mean that I did not need to file a second notice of appeal

[00:06:38] Speaker 00:
because this court has continuously had jurisdiction since CIPCO timely filed its notice of appeal on December the 21st, 2017.

[00:06:48] Speaker 05:
Well, let me just ask you one other sort of alternative argument on that.

[00:06:54] Speaker 05:
And that is, what if when we sent it back on remand for the question of the impact of the subsequent certificate of correction, what if Emerson had lost?

[00:07:06] Speaker 05:
What if the board had ruled in your favor?

[00:07:09] Speaker 05:
Would you say, well, that was just an advisory opinion?

[00:07:14] Speaker 05:
Would you say that it was conclusive and therefore Emerson didn't have to file a notice of appeal on the board ruling?

[00:07:24] Speaker 05:
How would that have worked if you had prevailed?

[00:07:30] Speaker 00:
I think this was specified.

[00:07:32] Speaker 00:
In fact, I know it was specified in the court's order

[00:07:36] Speaker 00:
when it said that within seven days from the date of the board's decision, the parties are directed to inform this court how they believe this appeal should proceed.

[00:07:46] Speaker 00:
So as long as Emerson was in accordance with the court's order, then... Yes, but read further.

[00:07:54] Speaker 05:
I'm sorry to interrupt.

[00:07:55] Speaker 05:
I apologize.

[00:07:56] Speaker 05:
But read further.

[00:07:58] Speaker 05:
Write the sentence following the one you just read,

[00:08:01] Speaker 05:
says any appeal from the board's decision on this issue will be consolidated with this appeal.

[00:08:08] Speaker 05:
So do you think Emerson would not have had to file a notice of appeal if it had lost before the board?

[00:08:18] Speaker 00:
Well, I can understand there's some ambiguity in the order, but my answer would be yes, as long as Emerson complied with the court's direction

[00:08:30] Speaker 00:
that within seven days from the date of the board's decision, it informed your court how they believe the appeal should proceed.

[00:08:50] Speaker 05:
Okay, please proceed.

[00:08:55] Speaker 00:
In addition, the board's decision to prevent the patent owner from

[00:09:01] Speaker 00:
Correcting the priority claim during the IPR was arbitrary and capricious because the board failed to consider an important aspect of the problem.

[00:09:13] Speaker 00:
And this is the Miccosukee tribe case that I cited in my brief.

[00:09:20] Speaker 00:
Mr. Weeks, CIPCO's patent prosecution attorney and a member in good standing of the Georgia bar and the patent bar,

[00:09:29] Speaker 00:
declared that the entire delay between the issuance of the 780 patent and the date of the priority claim was unintentional and due to a clerical error.

[00:09:44] Speaker 00:
So if you could please turn to his declaration.

[00:09:49] Speaker 05:
This is Judge Proctor again.

[00:09:50] Speaker 05:
I'm sorry again to interrupt but the time is short so I just got to get my questions out in a timely way if I can.

[00:09:56] Speaker 05:
If you had prevailed, if the board had actually sent it over and you had gotten your certificate of correction at the time, what would be the impact of that?

[00:10:12] Speaker 05:
There would have been no final decision on the IPR in your view that the board would have had to drop the IPR because the certificate of correction had been issued?

[00:10:25] Speaker 00:
My view is the board would have issued a final decision saying that these particular claims were patentable because the reference that was asserted, the 732 patents, it was not in fact prior odds.

[00:10:43] Speaker 00:
And in fact, this is what's occurred.

[00:10:46] Speaker 00:
If you take a look at page seven of my reply brief, I referred to prior PTAB proceedings.

[00:10:55] Speaker 00:
For instance, in a CIO agricultural chemical, which is IPR 2016-0076, the board ordered that the patent auto was authorized to file a request for a certificate of correction to correct a typographical error in claim nine.

[00:11:15] Speaker 00:
And the board further ordered that the parties would proceed with the corrected claim nine, unless the contrary decision on the request

[00:11:25] Speaker 05:
So in your view, if the board had sent it over and a certificate of correction is issued at the time an IPR is pending, your view is that the IPR that was instituted is automatically converted to reflect the corrected patent as opposed to the original patent?

[00:11:47] Speaker 00:
I guess because that's what's happened in IPRs and CBMs.

[00:11:53] Speaker 00:
At the PTAB in the cases that I cited,

[00:11:56] Speaker 00:
in the reply.

[00:11:57] Speaker 00:
There's also another case where they did the same thing, United Services Automobile Association.

[00:12:03] Speaker 05:
Well, what is your view of the impact of the prior version of the patent that was corrected?

[00:12:10] Speaker 05:
Is it gone?

[00:12:12] Speaker 05:
Can you ever assert it to get retroactive damages for the time it was in effect?

[00:12:20] Speaker 05:
What is your view of the patent, not the corrected patent, but the pre-corrected patent?

[00:12:26] Speaker 00:
Well, my view is that the patent office should have proceeded the same way it proceeded in the IPRs and CBMs where this same issue came up before, which is that they make a ruling on the corrected patent.

[00:12:47] Speaker 05:
But that's not my question.

[00:12:49] Speaker 05:
I'm sorry if I misspoke.

[00:12:51] Speaker 05:
My question is, what is the impact, if any,

[00:12:55] Speaker 05:
of the previously uncorrected patent.

[00:12:59] Speaker 05:
Can that be asserted in any way, shape, or form, at least retroactively for damages, for example?

[00:13:08] Speaker 05:
It doesn't have any life at all once it's corrected, the uncorrected version of the claims.

[00:13:20] Speaker 00:
Yes, I'm trying to answer your question.

[00:13:21] Speaker 00:
I think that during the IPRs they're supposed to review the corrected version of the claims.

[00:13:26] Speaker 04:
That's not what she's asked.

[00:13:28] Speaker 04:
Answer her question.

[00:13:29] Speaker 04:
What we want to know is are you able to assert the uncorrected patent?

[00:13:38] Speaker 00:
Yeah, I'm not sure.

[00:13:44] Speaker 04:
Well, maybe the government will be able to clarify.

[00:13:48] Speaker 05:
Um, thank you.

[00:13:51] Speaker 05:
Uh, why don't we hear from, uh, Emerson's council?

[00:13:54] Speaker 05:
Thank you.

[00:13:55] Speaker 05:
Mr. Davis.

[00:13:59] Speaker 02:
Yes, your honors may please the court.

[00:14:01] Speaker 02:
The board's findings here that the claims of the 780 patent should be affirmed for at least three reasons.

[00:14:07] Speaker 02:
First, SIPCO waived its appeal as to the decision on remand by failing to file a notice of appeal.

[00:14:13] Speaker 02:
Second, the text and statutory scheme of Section 255 confirmed that the certificate is not retroactive and cannot impact this IPR, particularly where the certificate issued both after the petition was filed but also after the final written decision issued.

[00:14:28] Speaker 02:
And third, even if the certificate of correction could have had an impact on the IPR, the Board properly exercised its discretion to stage CIPCO's request for leave to seek a certificate of correction

[00:14:39] Speaker 02:
after CIPCO had repeatedly failed to exercise a requisite diligence to properly seek a certificate on three separate occasions.

[00:14:48] Speaker 05:
Mr. Davis, let me bring you up to where we ended with your friend, which is why?

[00:14:55] Speaker 05:
Why do we need to be here unless it's your view that the original claims before they were corrected can still be asserted retroactively?

[00:15:08] Speaker 05:
Otherwise, it doesn't matter, does it?

[00:15:10] Speaker 05:
I mean, if the certificate acted to wipe out those claims, then there's no reason to be here caring about this final written decision.

[00:15:18] Speaker 05:
So is it your view that in the absence of this final written decision, the other side would have the ability to assert the uncorrected claims in an action?

[00:15:34] Speaker 05:
Do you understand my question?

[00:15:36] Speaker 02:
Yes, Your Honor.

[00:15:37] Speaker 02:
I believe the answer to your question is that CIPCO should not have the ability to assert the uncorrected claims in this context where it is conceded those uncorrected claims are unpatentable without the certificate of correction.

[00:15:54] Speaker 05:
So why are we here?

[00:15:59] Speaker 02:
I don't think that CIPCO has that same view and it is

[00:16:07] Speaker 02:
It was the board's determination that the claims as they had issued before, before the certificate of correction, are unpatentable and thus by statute under 318B should be canceled confirming that unpatentability determination.

[00:16:25] Speaker 04:
So your argument is this case is not moot because CIPCO has not conceded that it can't assert the uncorrected claims.

[00:16:38] Speaker 02:
That's correct, Your Honor.

[00:16:40] Speaker 02:
A trial certificate should issue confirming the unpatentability because CIPCO's arguments persist here in an attempting to assert those claims.

[00:16:54] Speaker 02:
And to be clear, CIPCO's appeal as it initially was launched

[00:17:03] Speaker 02:
address all 15 of those claims in its reply brief, it narrowed that down and is no longer contesting the unpatentability of 12 of the 15 claims.

[00:17:15] Speaker 02:
And as to the three remaining claims, it's Emerson's view that those claims should also be canceled by statute under 318B with the trial certificate.

[00:17:26] Speaker 04:
Well, CIPCO's not, they made clear, I mean, that was the correction I asked for at the beginning of his argument, that they're no longer appealing anything on the merits with regard to those three claims either.

[00:17:35] Speaker 04:
They're only appealing that the PTO erred or abused its discretion procedurally by refusing to allow them to correct during the IPR.

[00:17:48] Speaker 02:
Right.

[00:17:50] Speaker 02:
Yes, Ron, I believe that CIPCO isn't disputing that without the certificate,

[00:17:57] Speaker 02:
the claims would be unpatentable and thus wouldn't be enforceable.

[00:18:03] Speaker 02:
And at this point as well, the 780 patent expired three months after the certificate of correction had issued and there would be a very limited window in which anything could be enforced if that were even proper.

[00:18:17] Speaker 02:
And I guess the question here is whether the certificate

[00:18:23] Speaker 02:
could even cure those unpatentability problems.

[00:18:27] Speaker 02:
But that would be an issue for a separate court as the United States recognizes in their amicus brief if CIPCO did ever attempt to assert the 780 patent, these three claims of the 780 patent again.

[00:18:41] Speaker 05:
I should know this, but I'm sorry.

[00:18:44] Speaker 05:
A lot of time has passed in this appeal.

[00:18:47] Speaker 05:
Is there pending district court litigation concerning the uncorrected claim?

[00:18:54] Speaker 02:
No, there is not, Your Honor.

[00:18:55] Speaker 02:
The CIPCO, during the pendency, I believe, of the IPR, dropped the 780 patent from the copending district court litigation, which has been stayed pending several different IPRs.

[00:19:10] Speaker 04:
So I guess, again, why are we here?

[00:19:13] Speaker 04:
You've got an expired patent with no pending litigation that has a certificate of correction, but

[00:19:21] Speaker 04:
We're supposed to dive in and decide whether the final written decision correctly invalidated the pre-corrected patent.

[00:19:30] Speaker 04:
I've got to be honest.

[00:19:32] Speaker 04:
It just seems like a colossal waste of everyone's time.

[00:19:35] Speaker 04:
I don't understand why your client is paying you to do this.

[00:19:38] Speaker 04:
I don't understand why we're being asked to set aside time to do this.

[00:19:42] Speaker 04:
I don't understand why CIPCO is paying its attorney to do this.

[00:19:46] Speaker 04:
It seems like a colossal waste of time.

[00:19:50] Speaker 02:
Well, should CIPCO ever decide to assert these claims of the patents again, which it appears to intend to do because it has appealed that file written decision, it should be stopped from doing so, particularly in the uncorrected form because those claims were found unpatentable by the board and that finding should be affirmed.

[00:20:14] Speaker 05:
So just to go back to where we started, I think Judge Moore made the point

[00:20:18] Speaker 05:
that it's just because they're, you know, kind of not acknowledging or not agreeing that they can't ever assert the earlier version of these claims.

[00:20:30] Speaker 05:
Is that it?

[00:20:32] Speaker 02:
That's it, Your Honor, yes.

[00:20:34] Speaker 02:
The only thing that the Board could have addressed was the 780 patent as it had issued prior to the certificate of correction.

[00:20:44] Speaker 02:
That's what it did address here, found all the claims unpatentable.

[00:20:48] Speaker 02:
CIPCO has appealed that finding and has been maintaining apparently that its ability to, that it still should have the ability to assert those claims.

[00:20:59] Speaker 02:
It had initially asserted claims of the 780 patent against Emerson and it's Emerson's view that CIPCO shouldn't be able to assert those claims against anyone because they're unpatentable.

[00:21:12] Speaker 05:
On the question of jurisdiction, this is Judge Crost again, would you say that the order was at least confusing in terms of the requirements that they would now have to file a new notice of appeal?

[00:21:29] Speaker 02:
No, Your Honor.

[00:21:32] Speaker 02:
I think the order says that the court had retained jurisdiction over the initial appeal.

[00:21:38] Speaker 02:
But as Your Honor pointed, Mr. Gonzales, to the last sentence of that order is key.

[00:21:44] Speaker 02:
It says any appeal from the board's decision on this issue will be consolidated with this appeal.

[00:21:50] Speaker 02:
Thus, there needed to be a separate appeal or separate notice of appeal that CIPCO needed to file.

[00:21:56] Speaker 02:
That guidance and instruction was reiterated in the board's decision on remand, again requiring CIPCOA to comply with the notice and service requirements of 37 CFR

[00:22:07] Speaker 04:
This is Judge Moore.

[00:22:10] Speaker 04:
The order says the motion is granted to the extent the case is remanded for the board to issue an order addressing what, if any, impact the certificate of correction has on the final written decision in this case.

[00:22:25] Speaker 04:
That sounds to me like an order asking the PTO to clarify in light of the fact that the certificate of correction issued

[00:22:33] Speaker 04:
after the final written decision, does that moot the case?

[00:22:37] Speaker 04:
Does it eliminate need to resolve the case?

[00:22:41] Speaker 04:
It sounds like a request by our court for clarification regarding what impact that certificate has on the final written decision.

[00:22:50] Speaker 04:
Why is that not part and parcel of the same appeal since we're asking the PTO to address the impact of a certificate of correction on this final written decision which has been appealed?

[00:23:04] Speaker 02:
You're out of the reason it's not part and parcel of the original appeal is because the order or the decision on remand hadn't been handed down yet.

[00:23:13] Speaker 04:
Well, but that would suggest that you can never ask a court for clarification and have it be part of the original appeal.

[00:23:20] Speaker 04:
That would suggest that if we ask a court to clarify that an order of the issue clarifying would always require a second notice of appeal every time.

[00:23:30] Speaker 04:
That's not true.

[00:23:31] Speaker 04:
So that can't be right.

[00:23:34] Speaker 02:
And, Your Honor, paired with the language here, this court was specifically remanding as to specific claims.

[00:23:44] Speaker 02:
So a specific portion of the original appeal was being remanded back down to be reconsidered in light of the certificate of correction.

[00:23:55] Speaker 02:
It's read as a whole, each of those different components of the order indicates

[00:24:02] Speaker 02:
and should have indicated to CIPCO that it needed to follow the notice of appeal here.

[00:24:06] Speaker 04:
Well, in paragraph number three, it then says, proceedings are stayed pending the board's decision.

[00:24:11] Speaker 04:
And then it says, within seven days from the date of the board's decision, the parties are directed to inform this court how they believe this appeal should proceed.

[00:24:22] Speaker 04:
And you all did that, didn't you?

[00:24:24] Speaker 02:
That's correct, Your Honor.

[00:24:28] Speaker 02:
The parties met and conferred.

[00:24:31] Speaker 02:
I informed Mr. Gonzales that he needed to decide what he was going to appeal.

[00:24:36] Speaker 02:
He then read on the notice regarding scheduling, which he informed the court of.

[00:24:44] Speaker 02:
But never as part of that notice did he mention that he was appealing the decision on remand.

[00:24:53] Speaker 02:
And that last sentence there in paragraph three of the order says that

[00:24:58] Speaker 02:
any appeal from the decision on remand would be consolidated with this appeal, meaning there's two separate appeals, or there would be if the notice of appeal was filed, but it was not.

[00:25:11] Speaker 04:
I certainly see that last sentence, and that would be the implication of it, which would be you can't consolidate an appeal with a non-appeal.

[00:25:22] Speaker 04:
It's the consolidation of two appeals.

[00:25:25] Speaker 04:
I certainly understand why your argument is that that last sentence should have put Mr. Gonzalez on notice that he needed to file a notice of appeal, but it's the rest of the order that unfortunately sort of, for me at least, makes me question whether the order wasn't, as Mr. Gonzalez expressly stated earlier today, ambiguous at least.

[00:25:52] Speaker 04:
And when you have an ambiguous order,

[00:25:55] Speaker 04:
It seems kind of unfair to close the doors, doesn't it?

[00:26:03] Speaker 02:
Your Honor, in light of the last sentence, I hadn't read it as ambiguous.

[00:26:07] Speaker 02:
And I took it that the board hadn't either, in light of their decision on remand, began directing Mr. Gonzalez to file a notice of appeal if that was what he intended to do.

[00:26:21] Speaker 02:
That's Emerson's perspective on that language.

[00:26:25] Speaker 04:
Well, so when you all met and conferred and then you filed a joint document with the court or a document submitted by Mr. Gonzalez, articulating the new briefing schedule, he suggested that this was all agreed upon by the parties, is that right?

[00:26:41] Speaker 02:
That schedule was, Your Honor.

[00:26:44] Speaker 02:
There was not a discussion as to the issues that he'd be appealing, and there was never a mention that he would be appealing the decision on remand.

[00:26:54] Speaker 02:
And that's the purpose of under Rule 1582, CIPCO needed to specify if it wanted that notice regarding scheduling to substitute as a notice of appeal, it would have needed to specify that it was appealing that particular order such that this court as well as the director would have been on notice of CIPCO's intent to appeal that decision.

[00:27:24] Speaker 02:
If I might just turn to the issue regarding Honeywell that CIPCO had brought up in its arguments, the board's decision here was completely consistent with this court's decision in Honeywell.

[00:27:38] Speaker 02:
The board did not address the merits of CIPCO's request, but instead found that CIPCO, quote, did not provide sufficient justification for the failure to avoid making error after error, end quote.

[00:27:49] Speaker 02:
That's an appendix 555.

[00:27:51] Speaker 02:
The board further explained there that it did not overlook the patent owner's explanation for his previous errors, but rather did not find any of it compelling.

[00:27:59] Speaker 02:
That's, again, Appendix 555.

[00:28:02] Speaker 02:
CIPCO's repeated errors here both during prosecution of this and related patents and in requesting leave and the certificate itself demonstrated a deliberate indifference to such that CIPCO couldn't continue to interrupt these proceedings

[00:28:19] Speaker 02:
And instead, the board properly determined that CIPCO needed to wait its turn after being given multiple other chances to seek that certificate.

[00:28:27] Speaker 04:
Can you please address, counsel, can you please address CIPCO's argument that the director is the only one with the authority to have done, made this deliberate misinterpretation or decision and that it had never delegated that to the PTAB and that thus the PTAB didn't have the ability to violate the APA by deciding that issue?

[00:28:49] Speaker 02:
Yes, Your Honor.

[00:28:52] Speaker 02:
The Board didn't address any of the merits regarding the Section 255 requests.

[00:28:56] Speaker 02:
What the Board was addressing was whether CIPCO in... May I just finish the answer, Your Honor?

[00:29:05] Speaker 02:
Of course.

[00:29:05] Speaker 03:
Please.

[00:29:07] Speaker 02:
What the Board was addressing was whether CIPCO could provide a sufficient justification for repeatedly making these errors.

[00:29:18] Speaker 02:
such that it, which didn't go to whether the initial error in the patents was intentional, but whether CIPCA was putting enough safeguards in place to avoid continuing making the errors as it repeatedly attempted to request a certificate of correction and yet each time was being rejected by the Petitions Branch having to interrupt the IPR proceedings again and again.

[00:29:41] Speaker 02:
And at some point the board had to say enough is enough.

[00:29:47] Speaker 02:
It has discretion here as to the order of how each of these proceedings is going to proceed, and it properly exercised that discretion to tell CIPCO that it needed to wait its turn until after the final written decision was issued.

[00:30:03] Speaker 05:
My colleagues have no other questions.

[00:30:05] Speaker 05:
Let's turn to Mr. Hickman.

[00:30:06] Speaker 05:
Thank you.

[00:30:09] Speaker 01:
Good morning, Your Honors.

[00:30:10] Speaker 01:
May it please the Court?

[00:30:12] Speaker 01:
As to the question about whether

[00:30:16] Speaker 01:
The court's question is whether there is anything left to decide this morning.

[00:30:20] Speaker 01:
I generally agree, I think, with the points that Emerson's counsel made.

[00:30:27] Speaker 01:
To put a finer point on our brief and the way that we address the issue, I think it was our understanding that even if collateral estoppel applied to most of the claims

[00:30:40] Speaker 01:
in this case, that there were still two or three claims that still might have been in play.

[00:30:45] Speaker 01:
And so our brief, I think, made an assumption that there still might be the merits of claims left to be adjudicated in this appeal.

[00:30:58] Speaker 05:
And so... Just to... I'm sorry, Mr. Hitman.

[00:31:02] Speaker 05:
This is Judge Pros.

[00:31:03] Speaker 05:
Just to get clarification, it's CIPCO...

[00:31:09] Speaker 05:
If somehow this IPR were dismissed, could CIPCO continue to assert the claim, any or all of the claims that were subject to the IPR, retroactive at least for damages purposes, et cetera, even though there's been a certificate of correction issued?

[00:31:34] Speaker 01:
The claims of the uncorrected patent, and if we put aside the effect of any collateral estoppel in this IPR, it is our position that the claims of the uncorrected patent could still be asserted in the trial of actions for causes that arose before the certificate of correction issued.

[00:31:59] Speaker 01:
If any causes that arose while those uncorrected patent claims were still operative, there still might be the potential that those could be asserted.

[00:32:11] Speaker 04:
So that was sort of a theoretical answer, which, yeah, I understand.

[00:32:15] Speaker 04:
The theoretical answer is pre-corrected claims could be asserted retroactively, that correction doesn't surrender a patent the way reissue does.

[00:32:25] Speaker 04:
So, I get that.

[00:32:27] Speaker 04:
But in this case, do you think that's true given CIPCO's admissions at least by the time of the oral argument a few minutes ago where he, Mr. Gonzales, made clear that CIPCO is not continuing to contest any of the merits-based arguments regarding the final written decision?

[00:32:49] Speaker 01:
I would agree with that statement, Your Honor.

[00:32:51] Speaker 01:
Given the apparent concession that on the merits, none of these claims are patentable for the uncorrected patent, I don't believe that they could be asserted at this point.

[00:33:05] Speaker 04:
And would that moot the appeal in your view?

[00:33:09] Speaker 04:
I mean, such that there's no longer a need to spend any more time on this?

[00:33:16] Speaker 01:
I think that might be a way to treat this.

[00:33:22] Speaker 01:
I think the appeal might be dismissed as moot.

[00:33:25] Speaker 01:
If there's no live controversy anymore, it does seem questionable as to whether there's really anything for the parties to debate or for the court to render a decision on at this point.

[00:33:39] Speaker 05:
I guess I'm a little unclear on that.

[00:33:41] Speaker 05:
If we were to say this is all moot,

[00:33:45] Speaker 05:
then I don't know, would, are you clear that CIPCO could never assert any of the previously uncorrected, you know, the claims before their correction?

[00:34:02] Speaker 01:
Well, I think, I mean, as I understand it, CIPCO's counsel has agreed that

[00:34:09] Speaker 01:
None of the claims, claims 1 through 15, are patentable in light of the prior adjudication of the 732 patent.

[00:34:17] Speaker 01:
So to me, that would seem to be the answer.

[00:34:24] Speaker 01:
The certificate of sort of treating the certificate of, the fact that the certificate of correction doesn't apply to the,

[00:34:36] Speaker 01:
to the uncorrected patent claims doesn't really disrupt that concession of unpatentability at this point.

[00:34:45] Speaker 04:
So can I ask just out of curiosity, does the petition deciding body, i.e.

[00:34:51] Speaker 04:
the people who decide petitions and corrections, do they talk to the people on the PTAB at all?

[00:34:56] Speaker 04:
And the reason I say that is what a little bit of a mess this has created by having

[00:35:02] Speaker 04:
The PTAB deny the ability to correct, then issue a final written decision, and then the petitions people go ahead and issue a correction almost immediately thereafter.

[00:35:14] Speaker 04:
It seems like one hand might not be aware of what the other hand is doing to some extent, or is that just completely false and that this is normal course and this is what should happen?

[00:35:25] Speaker 04:
What is your view of that?

[00:35:28] Speaker 01:
If I may answer the question, Your Honor.

[00:35:31] Speaker 01:
Yes, you can.

[00:35:33] Speaker 01:
Of course.

[00:35:34] Speaker 01:
I heard the tone in the background.

[00:35:36] Speaker 01:
It's clearly, you know, I think we understand the importance of the public would like us to operate as a single agency and coordination is important.

[00:35:51] Speaker 01:
I think what I would say here is that

[00:35:52] Speaker 01:
First, let's not forget that this was a mistake by the patentee that the patentee came in to have sex.

[00:35:59] Speaker 01:
The Petitions Branch is the branch that has delegated authority from the Director to decide the merits of the Certificates of Correction.

[00:36:08] Speaker 01:
And they're the ones who have the expertise in deciding whether the correction would introduce new matter or whether re-examination would be required, which are some of the criteria under Section 255.

[00:36:21] Speaker 01:
So that really is their wheelhouse.

[00:36:25] Speaker 01:
In fact, in Honeywell, that's what this court said, was that the board shouldn't wade into the Petitions Branch's territory to decide the merits of those issues.

[00:36:37] Speaker 01:
I think the facts here and what led to the Certificate of Correction being issued so late, I think this was a pretty unique case where we had four attempts by CIPCO to obtain the certificate before it actually worked.

[00:36:54] Speaker 01:
So, you know, the board had to decide what to do.

[00:37:00] Speaker 01:
Motions can require time to decide and consume resources of the board.

[00:37:06] Speaker 01:
And so after the first two tries, I believe that the board was justified in telling SIPCO that it needed to wait until after the IPR was concluded.

[00:37:15] Speaker 04:
I know your time's up.

[00:37:19] Speaker 04:
Chief, can I ask one more question?

[00:37:20] Speaker 05:
Yes, because I have one after yours.

[00:37:22] Speaker 04:
Oh, OK.

[00:37:23] Speaker 04:
So my question to Mr. Hickman is, do you agree?

[00:37:31] Speaker 04:
I think Emerson did a nice job of explaining why the PTAB was not addressing the merits of the correction petition, but rather just addressing whether or not they would permit leave to file such a petition.

[00:37:46] Speaker 04:
And that when they were talking about

[00:37:48] Speaker 04:
Deliberate Indifference, you know, they were talking about Deliberate Indifference, not about the merits of the petition.

[00:37:56] Speaker 04:
Do you agree?

[00:37:57] Speaker 04:
Is there anything you'd like to add to that to defend, you know, the agency and the fact that there wasn't some sort of usurpation by the board of the Director's Authority?

[00:38:08] Speaker 01:
I agree with what Emerson's counsel said.

[00:38:12] Speaker 01:
The board did not address things as I said.

[00:38:16] Speaker 01:
They weren't addressing issues such as whether new matter would be introduced, whether re-examination would be required.

[00:38:23] Speaker 01:
The board was making a decision about efficiency and the best way to run the IPR and I think it was entirely legitimate for the board to say that after two tries and after what seemed to be pretty

[00:38:44] Speaker 01:
obvious errors that could have been avoided at the board.

[00:38:47] Speaker 01:
It was not, it would be inefficient for the board to continue to entertain these motions to go seek the, for repeated tries to seek the certificate of correction.

[00:38:58] Speaker 05:
Can I, this is Judge Proce, just one final quick question and this is really a hypothetical, which is if they had gotten the, if one gets

[00:39:11] Speaker 05:
the patent owner gets the patent corrected during the IPR proceeding but before a final written decision.

[00:39:19] Speaker 05:
Would the board not proceed with adjudicating the original claims in the IPR simply because they could be a base, they could be asserted at least with respect to, you know, retroactive damages

[00:39:38] Speaker 05:
in the future or based on a pending district court proceeding?

[00:39:46] Speaker 01:
If I understand, I just want to make sure I understand the court's question.

[00:39:49] Speaker 01:
So the question is would, in that situation, would the board continue with the IPR on the uncorrected patent?

[00:39:59] Speaker 01:
I think in many cases the board would do so because as in this case, for example, petitioners may have a very vested and important interest in having the

[00:40:17] Speaker 01:
patentability of the uncorrected patent claims adjudicated if they're faced with infringement claims of those claims in this record.

[00:40:26] Speaker 01:
So the board in many cases may have very important reasons to continue with adjudication of those uncorrected patent claims.

[00:40:36] Speaker 01:
As we suggested in our brief, there could be rooms for exercise of discretion to terminate if there are particular effect patterns where it wouldn't make sense to continue with an adjudication of the uncorrected patent.

[00:40:53] Speaker 01:
Thank you.

[00:40:54] Speaker 04:
I'm sorry, one more, if you don't mind.

[00:40:59] Speaker 04:
pivot and instead address the corrected patent claims?

[00:41:05] Speaker 04:
I mean, I'm a little nervous about SAS, for example, and whether or not corrected patent claims, especially depending on the nature of the correction, are within the scope of the original petition.

[00:41:19] Speaker 04:
My question to you is, can the PTO pivot and decide not to address the original claims, but instead use the petition as a vehicle for addressing the new claims?

[00:41:30] Speaker 01:
I don't think I have a precise answer for that today.

[00:41:36] Speaker 01:
In our brief, we suggested that perhaps if the parties agreed that that's how they wanted it to proceed, maybe the board could proceed in that fashion on the corrected patent.

[00:41:48] Speaker 01:
But SAS certainly is a factor on that issue, and it is the petition that guides the life of the litigation.

[00:42:00] Speaker 01:
And so, in our brief, I think we left open the possibility that we might rehedge.

[00:42:09] Speaker 01:
Yeah, I got it.

[00:42:10] Speaker 01:
But we haven't had to confront that yet.

[00:42:13] Speaker 05:
Okay.

[00:42:14] Speaker 05:
Thank you.

[00:42:15] Speaker 05:
Thank you.

[00:42:16] Speaker 05:
Mr. Gonzalez, I don't know how much time you have for rebuttal, but why don't you proceed?

[00:42:24] Speaker 00:
Okay, I'll be brief.

[00:42:26] Speaker 00:
First of all, I should say that

[00:42:28] Speaker 00:
In the IPRs and the CVMs where the situation has occurred, where a correction has been made during the IPR, the PTAB, as I indicated before, has proceeded only on the corrected version of the patent.

[00:42:47] Speaker 00:
This happened in the aceto-agricultural case that I cited on page 7 of my reply, and it also happened

[00:42:56] Speaker 00:
in the United Services Automobile Association case, which was CBM 2016-00063, which is also cited on that same page.

[00:43:08] Speaker 05:
Okay, Mr. Gonzalez, let me just ask you... This is Judge Prost.

[00:43:13] Speaker 05:
I'm just interrupting you because I think we need clarification on the point that Judge Moore raised at the outset, which is...

[00:43:22] Speaker 05:
Do you indeed concede that the uncorrected claims are all unpatentable and unenforceable?

[00:43:34] Speaker 00:
Well, this is what I've been trying to explain.

[00:43:37] Speaker 00:
If the PTAP would have permitted the correction to the priority claim, then the only reference asserted against these three claims would not, in fact, be prior art, so the claims would be patentable.

[00:44:00] Speaker 05:
Anything further?

[00:44:08] Speaker 00:
Sure.

[00:44:09] Speaker 00:
With respect to the board's decision that the mistakes were deliberate or deliberate indifference, that's inconsistent with Mr. Weeks, the gentleman, the patent prosecution attorney that corrected the priority claim.

[00:44:29] Speaker 00:
It's inconsistent with his declaration.

[00:44:31] Speaker 00:
He went in detail about why these errors had occurred.

[00:44:35] Speaker 00:
And after reading the declaration, it's clear that none of them were deliberate.

[00:44:41] Speaker 00:
Okay.

[00:44:45] Speaker 00:
So we feel that that decision was wrong and that our client should be put in the position that it would have been in had the PTAB made the correct decision at that point in time.

[00:44:58] Speaker 00:
Okay, thank you.

[00:45:00] Speaker 05:
Any further questions from the panel?

[00:45:04] Speaker 05:
Okay, thank you.

[00:45:05] Speaker 05:
We thank all sides and the case is submitted.

[00:45:08] Speaker 05:
That concludes our proceeding for this morning.

[00:45:10] Speaker 05:
Thank you.

[00:45:14] Speaker 01:
The Honorable Court is adjourned from day to day.