[00:00:00] Speaker 01: case for argument is 20-1026 SK Heineck versus Yanku. [00:00:06] Speaker 02: Mr. Morris, whenever you're ready. [00:00:08] Speaker 02: Thank you, and may it please the Court. [00:00:11] Speaker 02: The Board instituted the underlying IPR by expressly finding that it would be more efficient to have it in parallel with the Ellsbury IPR, which challenged the same claims. [00:00:20] Speaker 02: But after putting the parties and board to the burden of the entire proceeding and trial, the board abruptly terminated the IPR on the eve of its deadline for the final review. [00:00:27] Speaker 04: Mr. Morris, I know we don't have a lot of time, but could you please speak to the question of reviewability first? [00:00:33] Speaker 04: Yes. [00:00:35] Speaker 04: This court has jurisdiction. [00:00:36] Speaker 04: And I'm trying to understand what would be your theory of reviewability. [00:00:42] Speaker 04: Is it any decision that the patent board ever renders that can be said to be [00:00:50] Speaker 04: not attached to the institution decision. [00:00:55] Speaker 04: That entire class of board decisions are reviewable under 1295A4A? [00:01:02] Speaker 02: Well, under 1295A4A, one has to be a decision with respect to the inter-parties review, which this one is. [00:01:10] Speaker 02: It needs to be adverse, which it is to FKHONIX. [00:01:13] Speaker 02: It needs to be final. [00:01:15] Speaker 02: Here you have all of those requirements are met. [00:01:18] Speaker 02: it terminated the proceeding adversely to SK Hynix, and it is with respect to an inter-parties review. [00:01:26] Speaker 02: So under 1294A4A, that falls within the ambit. [00:01:31] Speaker 04: And what's the adverse consequences to SK Hynix here? [00:01:37] Speaker 04: I mean, as I understand it, the PTO argues that, well, this is as if the IPR never existed, and it puts the parties back to where they [00:01:48] Speaker 04: where or would have been if no IPR had ever been filed in the first instance? [00:01:55] Speaker 02: Well, it's adverse in the sense that they had institution, they're put to the burden of proving up their claims and proving up the petition, and then they never receive a ruling on claims 40 and 41, which are being asserted against them elsewhere. [00:02:10] Speaker 02: There isn't a requirement of having some other collateral consequence [00:02:14] Speaker 02: I mean, typical with agency action, where you're before an agency, the agency is determining it, and your petition, your request is denied, which is precisely what happened here. [00:02:26] Speaker 02: This is unlike the institution decision, and it doesn't even touch upon that. [00:02:32] Speaker 02: It's not a going back and revisiting institution. [00:02:35] Speaker 02: This is the proceeding happened, the board determined [00:02:38] Speaker 02: on separate grounds and in footnote three at appendix 10 even acknowledges that it's making its determination on ground separate and apart from whether or not to institute. [00:02:49] Speaker 02: So this is in a situation where the board is going back and reevaluating it. [00:02:53] Speaker 02: This is a situation in which the board carried the proceeding forward, the parties carried the proceeding forward and then on the very eve it decided under a different standard to simply conclude the proceeding without addressing SK Honex's, the merits of SK Honex's argument. [00:03:08] Speaker 02: particularly with pain. [00:03:11] Speaker 04: What if the estoppel triggering event, and I know you dispute it, that in this case there was an estoppel triggering event, but assume for the moment the estoppel triggering event occurred after the petition was filed, but before an institution determination was issued. [00:03:35] Speaker 04: And then the board said, well, [00:03:38] Speaker 04: but petitioners are stopped, so certainly not instituting the IPR. [00:03:46] Speaker 04: Would that be reviewable? [00:03:48] Speaker 04: That decision, that estoppel decision, would that be reviewable under 1295A4A? [00:03:56] Speaker 02: The estoppel determination or the, sorry, just to clarify, the estoppel determination is part of the institution decision? [00:04:07] Speaker 02: I guess so, yeah. [00:04:11] Speaker 02: It seems in that context where you're looking at the legal basis for the finding of a stopple. [00:04:20] Speaker 02: So if there were a challenge to that legal basis, it seems that legal basis under the reasoning of Quozo and Thrive is not closely related to institution, whether or not there is a stopple. [00:04:37] Speaker 02: And that's clear in the credit acceptance case where the court concluded that it's not uniquely [00:04:42] Speaker 02: related to institution. [00:04:43] Speaker 02: In that hypothetical, it might be part of it, but it is a legal determination separate and apart. [00:04:48] Speaker 02: So that legal determination may be reviewable, even if the institution decision is not. [00:04:56] Speaker 04: What did we say in credit acceptance? [00:04:59] Speaker 04: I thought we said something different. [00:05:00] Speaker 04: I thought we said, well, timing matters. [00:05:04] Speaker 04: If the estoppel triggering event occurs before institution, then the denial of the petition [00:05:11] Speaker 04: Based on the estoppel, the estoppel is bound up in that and that's not reviewable because it's closely tied to the determination the board made to not institute. [00:05:24] Speaker 02: Well, in that case, the court didn't get into that particular issue of timing. [00:05:29] Speaker 02: What it did say was that estoppel, there they're talking about section 325 in CMB, [00:05:36] Speaker 02: But what they said is it is not uniquely related to institution and therefore does not fall within the non-reviewability of institution decisions. [00:05:46] Speaker 02: That was what the court said in credit acceptance. [00:05:49] Speaker 02: And that applies equally here. [00:05:51] Speaker 02: It is not uniquely part of. [00:05:53] Speaker 02: Now, as the hypothetical points out, it maybe factors into a certain point and may arise at various stages throughout the proceeding. [00:06:04] Speaker 02: But that's something separate and apart. [00:06:06] Speaker 02: It is not a uniquely institution-driven issue, like say the timing requirements of 315, which the court addressed in Thrive, which only apply at institution. [00:06:19] Speaker 02: A stop-all can apply at a variety of different stages, and so depending on when that is and how it's wrapped up, it may be reviewable. [00:06:26] Speaker 02: Here it's clearly the case that you have it at the end, and it demarks the end termination of a proceeding that carried on for nearly a year. [00:06:35] Speaker 02: by virtue of the fact that the PTO took up the petition, instituted the case, carried it through, had the party sue it, and then used it as a basis to terminate the proceeding without giving S.K. [00:06:48] Speaker 02: Hynix a ruling on the merits, at least as to claims 40 and 41. [00:06:52] Speaker 04: I don't want to eat up all your time. [00:06:55] Speaker 04: Why don't you go ahead and go back to what you wanted to argue? [00:07:01] Speaker 02: Sure. [00:07:02] Speaker 02: With respect to returning back to the [00:07:05] Speaker 03: to Estoppel. [00:07:09] Speaker 03: I just have a little housekeeping question for you before you get going. [00:07:14] Speaker 03: On page 32 of the blue brief, to Krista J. Lazer of CR Estoppel, Florida Law Review, support the assertion that, quote, it is simply not feasible in many cases to raise multiple grounds in a single petition. [00:07:34] Speaker 03: Who wrote that? [00:07:35] Speaker 03: I mean, there's a name on it, but who wrote that and why should we accord it any weight? [00:07:40] Speaker 03: Are they someone recognized in the field? [00:07:45] Speaker 02: I believe it is a scholar who is looking into this and researching the particular issue. [00:07:56] Speaker 02: And really it's going and catalogs a variety of the different procedural requirements [00:08:02] Speaker 02: what is necessary under the board's regulations. [00:08:06] Speaker 02: So I don't know if the person is entitled to a unique set of weight other than a good collection of the material for the court to consider put into one place. [00:08:17] Speaker ?: Okay. [00:08:18] Speaker 03: So it's just a collection. [00:08:19] Speaker 03: Thank you. [00:08:20] Speaker 04: Yes. [00:08:22] Speaker 04: Is there a reason why you didn't file a motion to consolidate all of these proceedings? [00:08:30] Speaker 02: Well, when they were instituted, the board had already considered the two and set them on a similar path. [00:08:37] Speaker 04: I'm talking about all of them so that you wouldn't have been exposed to the possibility of what actually happened here. [00:08:44] Speaker 04: The first set of IPRs going to final written decision before the final written decision could come out for the second set. [00:08:56] Speaker 04: So why not you, the petitioner, [00:09:00] Speaker 04: why wouldn't you try to consolidate? [00:09:03] Speaker 04: I mean, there were examples of other times where situations just like this occurred. [00:09:08] Speaker 04: Like, for example, in the IBM versus Intellectual Ventures PTAG IPR case. [00:09:15] Speaker 02: Well, the SK HONIX referenced the other petitions and the board was clearly aware of them in terms of... Right, but is it the board's obligation to organize and coordinate everything so that it, [00:09:29] Speaker 04: benefits you in terms of avoiding estoppel? [00:09:35] Speaker 04: I mean, do they have an obligation to unilaterally do that for you? [00:09:40] Speaker 04: No. [00:09:40] Speaker 04: Or is it your obligation to try to, you know, make clear that problems like what happened here won't happen for you by making a motion to consolidate? [00:09:53] Speaker 02: Well, FKHONICS did make it clear that there was another petition out there. [00:09:57] Speaker 02: Whether or not there was a request for consolidation, that doesn't [00:10:00] Speaker 02: eliminate the possibility of stoppable because that's entirely up to the board whether or not it's going to consolidate and here it it essentially did what I'm just wondering why didn't why didn't Hynix file the motion to consolidate? [00:10:15] Speaker 04: Was there a reason to not do it? [00:10:19] Speaker 02: I'm not aware of a particular reason not to do it. [00:10:23] Speaker 02: SK Hynix did [00:10:25] Speaker 02: make that notation to the board that they were related, the board understood they're related, and in fact, scheduled arguments for the same day and put them on a similar path in terms of timing. [00:10:35] Speaker 02: So it's unclear that there was a formal request necessary in that circumstance in order to accomplish a similar thing, which is to put them on a similar path. [00:10:46] Speaker 01: Just to clarify, am I wrong? [00:10:48] Speaker 01: I may be misremembering, but there were consolidations that took place [00:10:53] Speaker 01: with respect to both IPRs, and those were done to respond to by the board, were they not, and not placed on request by you all? [00:11:01] Speaker 02: Right. [00:11:01] Speaker 02: So there are four different petitions, two in Ellsbury and two in Hallbury, yes. [00:11:07] Speaker 02: And those were consolidated within Hallbury and within Ellsbury, they were consolidated. [00:11:13] Speaker 01: This is Judge Crouse. [00:11:14] Speaker 01: The clock continues to run, so let me allide a few issues, because there's so many moving parts in this case. [00:11:19] Speaker 01: Let's assume jurisdiction and let's assume hypothetically that we reject statutory construction of 315. [00:11:29] Speaker 01: So where are the APA arguments? [00:11:36] Speaker 01: I'm not quite clear what your position is. [00:11:39] Speaker 01: is that let's assume we're talking exclusively that you're out as the petitioner under 315 under the board's instruction of that. [00:11:49] Speaker 01: Let's assume we... So what we're left with is the board's discretion as to whether it wants to proceed independently without the petitioner, correct? [00:12:00] Speaker 01: Are you following me? [00:12:01] Speaker 01: Yes. [00:12:02] Speaker 01: Okay. [00:12:03] Speaker 01: So are you all... [00:12:06] Speaker 01: i.e., even if we're wrong on 315, on our construction of 315, the board still should have exercised its discretion and proceeded with the IPR on its own. [00:12:21] Speaker 01: Is that your argument? [00:12:22] Speaker 01: Are you making that argument? [00:12:24] Speaker 02: Well, we are making the argument that the board's reasoning for declining to do so violated the APA. [00:12:34] Speaker 02: That is, we asked the board to continue on, even if SKHONIX is stopped. [00:12:38] Speaker 01: Did you ever ask the board to continue on on just claims 40 and 41? [00:12:46] Speaker 02: We didn't make it specific, but we asked them to go ahead and issue the final written decision, which was due the next day on our Halbert petition, our Halbert-based grounds. [00:12:57] Speaker 02: So we asked them to issue the decision. [00:12:59] Speaker 02: Even if SKHONIX were stopped, we asked them to go ahead and issue the decision. [00:13:05] Speaker 02: They chose not to, and our argument is the reasoning behind that violated the APA. [00:13:10] Speaker 02: It was arbitrary and capricious. [00:13:12] Speaker 02: And I realize my time is done, so I'll reserve the remainder unless there are further questions. [00:13:19] Speaker 01: Colleagues, any further questions at this point? [00:13:22] Speaker 01: Okay, let's hear from Ms. [00:13:23] Speaker 01: Craven. [00:13:26] Speaker 00: Good morning, Your Honors, and may I please ask the court [00:13:29] Speaker 00: Starting with the threshold issue, this court's jurisdiction, the board's termination decision here is not a final written decision under 318A, and it's not a decision adverse or otherwise on the merits of the patentability of the 907 patent claims, and it triggers no estoppel. [00:13:47] Speaker 00: The board's decision leaves the parties as if the IPR had never been instituted, and accordingly, this court should dismiss S.K. [00:13:54] Speaker 00: Hynek's appeal here to address [00:13:57] Speaker 00: Well, I guess Ms. [00:14:00] Speaker 04: Craven, I guess one concern I have with that broad statement is that, you know, what the termination decision effectively did was it made a ruling that barred SK Hynex from attacking these claims inside the agency. [00:14:20] Speaker 04: And, you know, they had an up and running proceeding to do just [00:14:25] Speaker 04: that very thing that the agency had granted and now the agency was banning them from being able to persist with that. [00:14:37] Speaker 04: So, I mean, in that sense, it's not like we can pretend in a make-believe world like this proceeding never happened. [00:14:46] Speaker 04: Something actually did happen to SKA INEX and what it can do in the agency. [00:14:53] Speaker 04: It's been banned from the agency. [00:14:56] Speaker 00: That's correct, but that's not based on the Halbert termination decision. [00:15:01] Speaker 00: That's based on the Ellsbury final written decision. [00:15:04] Speaker 00: That's the final written decision that triggered the estoppel. [00:15:08] Speaker 00: And the Halbert termination decision itself doesn't create any additional estoppel for SK Hynix. [00:15:16] Speaker 00: Obviously, it is the board construing the estoppel statute as applying to the Halbert. [00:15:23] Speaker 04: So theoretically, if the agency incorrectly is reading and applying the estoppel statute, then what that means is that the agency theoretically incorrectly terminated and precluded SK Onyx from moving forward with this proceeding. [00:15:48] Speaker 00: That's, I mean, yes. [00:15:52] Speaker 00: That's true of any time that the board makes a, in the institution context, makes a decision and terminates and that party then cannot have that IPR. [00:16:04] Speaker 00: There's no right to an inner party's review even after it's instituted. [00:16:10] Speaker 00: The statute says if it's instituted and not dismissed, and the board has the discretion for how to run these procedures, even independently of the estoppel statute. [00:16:20] Speaker 00: And so the board has issued regulations on how that governs in a party's review. [00:16:27] Speaker 00: And one of those is being able to terminate a procedure where appropriate, here the appropriate, the board thought it was appropriate after applying a stopple, but that's not. [00:16:37] Speaker 04: What about SAS Institute, where the Supreme Court said, well, the petitioner has a particular right in the manner in how the IPR proceeds. [00:16:49] Speaker 04: And the courts get to review agency choices in regulating how those things proceed after they are instituted. [00:17:03] Speaker 04: And so that's kind of what's going on here too where the agency is trying to regulate how this particular proceeding can go forward after institution by shutting it down. [00:17:20] Speaker 00: Well, in SAS, there was a final written decision, and it was how the board proceeds to that final written decision. [00:17:27] Speaker 00: Here, there's no final written decision. [00:17:30] Speaker 00: It is the board terminating a proceeding, but it's not how this termination doesn't affect how the proceeding occurred up into the fact that there was an estoppel. [00:17:42] Speaker 00: There's nothing about the scope of the statute [00:17:45] Speaker 00: regulating what has to happen in the final written decision that's being reviewed here. [00:17:49] Speaker 00: This is just the termination decision. [00:17:53] Speaker 00: Unlike credit acceptance where this court reviewed the estoppel statute, it was where the board found that there was no estoppel, went on to a final written decision, and in that case the court found that it could review the board's application of estoppel. [00:18:09] Speaker 00: So this is just a different context in how the [00:18:13] Speaker 00: board is proceeding, it's not that there was anything wrong with the particular procedure and how they were going to come to a final written decision if they chose to, as in SAS, where there's a partial institution. [00:18:24] Speaker 00: Here it's just once they've construed the estoppel statute and found it applied to SK HINEX and exercising their discretion not to proceed to a final written decision. [00:18:34] Speaker 00: And that's different than your honors. [00:18:38] Speaker 00: Yes? [00:18:39] Speaker 01: Please finish your answer. [00:18:41] Speaker 01: I'm sorry. [00:18:42] Speaker 00: Well, so I was going to jump to Judge Chen, your hypothetical about whether for an institution decision, if the estoppel had arisen before institution, and that's really this court's Kingston case where it's about whether a petitioner can request an inter-party review after they've already had a final written decision on the same claims. [00:19:04] Speaker 00: And there the court, it was non-precedential to say, [00:19:07] Speaker 00: that that decision is closely related to the institution decision and is final and non-appealed and did not review the application of estoppel. [00:19:17] Speaker 00: This is obviously different. [00:19:18] Speaker 00: This is like credit acceptance where the court relied on the fact that it was to maintain the proceeding rather than to request the proceeding so it was after arising facts. [00:19:27] Speaker 00: But in that case, again, there was a final written decision. [00:19:30] Speaker 00: And this, I think, would be the first case where the court has not decided the merits of patentability, or the board isn't deciding the merits of patentability, and there's no adverse effect or determination on the claims. [00:19:41] Speaker 04: But what about Arthrex? [00:19:42] Speaker 04: Where Arthrex, there wasn't a final written decision, and our court said, well, there was a decision, and arguably it was with respect to an IPR, and so therefore it fits within the [00:19:59] Speaker 04: language of 1295A. [00:20:01] Speaker 04: So therefore, we've already said that 1295A4A is broader in scope than 318, 319, and 141C. [00:20:11] Speaker 00: That's correct. [00:20:12] Speaker 00: It's the merits of a decision, though, because the patent owner there disclaimed the claims, and the board read that as an adverse judgment against those claims. [00:20:22] Speaker 00: So it was, in effect, a merits decision, not the merits decision that the IPR [00:20:28] Speaker 00: statute contemplated, but it was in fact a merits decision on those claims and would then have estoppel effects on the patent owner for their continuing applications, which is a different scenario here where the claims, there's been no determination in this decision about the merits of the patentability of the 907 claims. [00:20:47] Speaker 00: So it's not an adverse decision as to patent claims, and it has no estoppel again, either on SK Hynix or on Netlist patent rights. [00:20:58] Speaker 01: Can I move you on in the interest of, and this is Judge Frost. [00:21:03] Speaker 01: Let's assume we agree with you on the, your statutory construction of 315. [00:21:10] Speaker 01: What I've troubled with in this case, just to put it out there, is this AP argument that assuming you're right and the board was create, correct, that the petitioner can no longer proceed. [00:21:23] Speaker 01: The board still has discretion to proceed on its own. [00:21:26] Speaker 01: either with the entire IPR or just with claims 40 and 41. [00:21:32] Speaker 01: And the board here said at least two things, which I think it seemed to rely on, which I think are incorrect. [00:21:41] Speaker 01: One is their analysis that if they could have filed it the same day, and if they had filed it the same day, they could have avoided estoppel. [00:21:50] Speaker 01: Well, you agree in your brief, that was incorrect. [00:21:53] Speaker 01: And the second was, as they said on A-12, the petitioner has obtained all the relief it requested in the incident petition, which is not correct because they didn't prevail on claims 40 and 41. [00:22:12] Speaker 01: So given those misstatements that were relied upon by the board, [00:22:17] Speaker 01: to reach its decision to not exercise its discretion to proceed on at least claims 40 and 41, why isn't that at least evict and remand under the APA? [00:22:29] Speaker 01: That's a lot of stuff there, but please, if you can respond to me, I'd appreciate it. [00:22:35] Speaker 00: Yes, so let's start with the statements about the same-day petitions. [00:22:38] Speaker 00: I think [00:22:39] Speaker 00: Clearly the board was wrong. [00:22:41] Speaker 00: They cited progressive and they were assuming incorrectly that same day petitions would result in same day decisions. [00:22:48] Speaker 00: And progressive, this court said, there's discretion when decisions result on the same day filed concurrently. [00:22:54] Speaker 00: I think the thing is, I'm not sure how this is an APA violation because it seems like it's still part of the board's statutory construction of 315E1 saying that the board doesn't have the discretion to [00:23:09] Speaker 00: apply a stopple if there isn't, they say same day petitions but incorrectly meaning same day decisions, they don't have the discretion to construe the statute to avoid the stopple just solely based on when the petitions are filed. [00:23:26] Speaker 00: So it's really a harmless error when the board says same day petitions because there's nothing, the SK Hynix APA challenge is really asking the board [00:23:38] Speaker 00: for a discretion to apply a stopple in a way that the statute can't be read? [00:23:44] Speaker 01: Well, here's my take on it so you can respond, which is it did make a difference. [00:23:50] Speaker 01: How do we know that the board, when it said that and it seemingly relied on that, I'm the board and I'm thinking, look, these guys had a chance. [00:24:00] Speaker 01: They could have filed it on the same day, but they filed it five days later. [00:24:04] Speaker 01: So they could have, they had complete, they had the authority to, to get this, to avoid a stoppile and they didn't take advantage of it because they didn't file it on the same day. [00:24:17] Speaker 01: If that's what the board said, and we all agree now the board was mistaken about that. [00:24:23] Speaker 01: Why could that not have affected how the board resolved the decision as to whether or not it was appropriate. [00:24:31] Speaker 01: Yeah. [00:24:32] Speaker 01: to exercise its discretion in this case to proceed? [00:24:37] Speaker 00: I think the board was only making those statements as part of its statutory construction. [00:24:42] Speaker 00: It's not part of its determination on terminating the proceeding. [00:24:47] Speaker 00: It's wrapped up in how it's responding to SK Heineck's statutory construction arguments. [00:24:53] Speaker 00: And the board also says, again, this is in the background, but it also [00:24:58] Speaker 00: says that they didn't seek consolidation or coordination, which would have been another way for petitions, filed the same day or not, to be coordinated so that they wouldn't trigger a final written decision. [00:25:11] Speaker 00: So I think the board was cognizant of that there's other ways that SK Hynix could have avoided this, not just by filing them on the same day. [00:25:20] Speaker 01: But there's a difference between the two of those, right? [00:25:24] Speaker 01: because they could ask for consolidation, but the board has complete autonomy to refuse to consolidate. [00:25:30] Speaker 01: Whereas if the board was under the view that if they had just filed on the same day, they could have avoided this whole mess of estoppel. [00:25:38] Speaker 01: Those are kind of two different things, right? [00:25:43] Speaker 01: Well, if I can move you on to the next point I was making, if I might, just in the interest of time, which was what I think was an erroneous [00:25:52] Speaker 01: statement by the board, which it seemed to rely on, which is the statement they made that I cited just a few minutes ago. [00:26:00] Speaker 00: About the complete relief, yes. [00:26:02] Speaker 00: Well, I think they recognized that the SK Hynix hadn't received all the relief it's requested because it says [00:26:10] Speaker 00: Both of these requests have been granted by the board except as to claims 40 and 41. [00:26:16] Speaker 00: So earlier on in the decision, the board does erroneously say that they got all the reliefs they requested. [00:26:21] Speaker 00: But in their termination decision, they recognized that SK Hynex did not get the relief they requested on claims 40 and 41. [00:26:29] Speaker 00: However, the board still thought a just result had been reached and that considering the efficiency of the office and the other considerations in termination that it was going to terminate. [00:26:39] Speaker 00: I don't think the board... How do we know that? [00:26:42] Speaker 01: Sorry, excuse me. [00:26:43] Speaker 01: Let me just finish my question and then you can respond. [00:26:47] Speaker 01: How do we know that? [00:26:48] Speaker 01: The board made a very critical statement that the petitioner has obtained the relief requested in the instant petition. [00:26:57] Speaker 01: Let's assume they... So let's assume they met what they said and that they somehow missed [00:27:03] Speaker 01: erroneously believe they had gotten all that. [00:27:07] Speaker 01: Doesn't that go to whether or not they would exercise their discretion to proceed at least on 40 and 41, if not on the entire IPR? [00:27:18] Speaker 01: How do we know that that didn't affect their analysis of whether or not it was just for them to proceed? [00:27:27] Speaker 00: Two answers. [00:27:28] Speaker 00: I think they explicitly say in the termination section that they recognize that 40 and 41 [00:27:34] Speaker 00: were not found, not unpatentable, they recognize. [00:27:38] Speaker 01: Well, except the statement I've read to you repeatedly also appears in the termination portion. [00:27:45] Speaker 01: It's in A12. [00:27:48] Speaker 01: I'm not sure how far. [00:27:50] Speaker 00: At A12, I read that it's the second full paragraph, the second to last sentence, [00:27:58] Speaker 00: The board says both these requests have been granted by the board, except as to claim 40 and 41. [00:28:04] Speaker 00: There is an earlier statement, I agree. [00:28:06] Speaker 00: There's an earlier statement in the background part of the decision where the... Sorry, they say it in the same paragraph. [00:28:15] Speaker 01: I'm looking at A-12. [00:28:16] Speaker 01: The statement is, petitioner has obtained the relief it requested in the instant petition. [00:28:22] Speaker 00: Okay, so I think they say it... [00:28:26] Speaker 00: both things. [00:28:26] Speaker 00: I think they recognize that 40 and 41 were not found out, not an impenetrable, but either way, I think it's still, and if I may finish my thought, Your Honors, the board at this point is considering that it, that FK Heineck has gotten the relief for 63 out of the 65 claims. [00:28:44] Speaker 00: And I think that there was no discretion of the board to go on just to claims 40 and 41 without deciding the rest of the claims because SAS requires [00:28:54] Speaker 00: the board to write a final written decision as to all claims challenged by the petitioners, so they didn't have the discretion just to give them the relief on the remaining claims 40 and 41. [00:29:03] Speaker 00: And if there are no other questions, Your Honor, we would ask this. [00:29:07] Speaker 00: I'll hop on that, because that's an interesting point. [00:29:09] Speaker 01: I don't think I've seen it come up in terms of the board exercising its discretion to proceed, not withstanding a conclusion of a stop-all, and that they can't [00:29:22] Speaker 01: pick and choose, they either only... It's your position that they cannot pick and choose, that they can only... If they proceed, they have to only proceed on the entirety of the IPR that was instituted. [00:29:37] Speaker 00: I'm just trying to... I think that's right under SAS. [00:29:40] Speaker 00: I think there would have been a way, if they had consolidated all of these proceedings, and so they had all of them for one final written decision, the board then would have been able to say, we've already found these claims unpatentable on the Ellsbury grounds, and so we don't have to go on and find of the 63 claims again. [00:29:59] Speaker 00: unpatentable on Halbert grounds, then they could have gone, the only two claims we have left are 40 and 41, and we could go ahead and decide those on the Hellsburg grounds. [00:30:09] Speaker 00: But that's only if they've consolidated all the petitions into a single final written decision. [00:30:14] Speaker 00: I think under SAS, with the Halbert IPR proceeding, they would have had to go forward and decide all the grounds. [00:30:22] Speaker 01: Okay. [00:30:22] Speaker 01: Thank you. [00:30:24] Speaker 01: Colleagues, any further questions for Ms. [00:30:26] Speaker 01: Craven? [00:30:27] Speaker 04: No, thank you. [00:30:29] Speaker 01: OK. [00:30:31] Speaker 01: Mr. Morris, we turn back to you. [00:30:34] Speaker 01: We'll restore five minutes of rebuttal if you need it. [00:30:38] Speaker 02: So returning to Appendix 12 and the statement with regard to claims 40 and 41, the statement that the board recognized except as to 40 and 41 cannot cure the problem there. [00:30:53] Speaker 02: Because right after that, the board says, confusingly, even though the claims are canceled in a different IPR, [00:31:00] Speaker 02: It never says what are IPR, and I'm unaware that there has been any cancellation of claims 40 and 41. [00:31:08] Speaker 02: So it is just a blatantly wrong error in the board's analysis going. [00:31:13] Speaker 04: Why would the board's opinion say the request to invalidate these claims have been granted by the board except as the claims 40 and 41? [00:31:26] Speaker 04: Why would you call out claims 40 and 41 in that sentence? [00:31:30] Speaker 04: unless you were acknowledging that those claims have not been canceled and that when you go on and say that the claims were canceled in a different IPR, it's the other 63 claims that you're referring to or other 65 claims you're referring to. [00:31:51] Speaker 04: Why wouldn't that be the most reasonable understanding of that sentence given that it expressly calls out the claims that have [00:31:57] Speaker 04: that are still standing, that is, claims 40 and 41. [00:32:02] Speaker 02: Even though the claims were canceled in a different... It seems... Yeah, even though the claims that were canceled were canceled in a different IPR. [00:32:25] Speaker 02: I still don't see that in the sentence. [00:32:27] Speaker 04: So are you suggesting that the board here was trying to say that claims 40 and 41 were canceled in the different IPR? [00:32:36] Speaker 04: That's the way that... In the Ellsbury IPR? [00:32:38] Speaker 02: That's the way the sentence reads in terms of even though it's referring back to the claims 40 and 41. [00:32:44] Speaker 04: I thought at, you know, your blue brief, page 57, you say, quote, as the board itself acknowledged, SK Hynix had not received [00:32:55] Speaker 04: relief with respect to claims 40 and 41, which the board did not find unpatentable in the Ellsbury IPR. [00:33:02] Speaker 02: Yes. [00:33:03] Speaker 04: So, I mean, you're reading it in what I think is the most reasonable understanding of that sentence. [00:33:18] Speaker 04: That the board is, in fact, as you in your words acknowledged, [00:33:21] Speaker 04: SK Hynix had not received relief with respect to claims 40 and 41, which the board did not find unpatentable in the Ellsbury IPR. [00:33:31] Speaker 02: But the recognition that the board seems to be, and again, it's muddled in that whole discussion, seems to be suggesting that it's harmless with regard to SK Hynix because, you know, even though it didn't happen in Ellsbury, it happened elsewhere. [00:33:48] Speaker 02: But that's not correct. [00:33:49] Speaker 02: It hasn't happened elsewhere. [00:33:50] Speaker 02: 40 and 41 are still alive. [00:33:52] Speaker 02: They're still being asserted against my client. [00:33:58] Speaker 02: And so the entire discussion is just wrong. [00:34:01] Speaker 02: Yes, the board does offer some fig leaf in terms of acknowledging that 40 and 41 are out there. [00:34:08] Speaker 04: But the board is essentially saying, the board seems to be saying, look, of the 65 names of this patent, 63 of them are now gone. [00:34:18] Speaker 04: So basically, you've already been successful. [00:34:23] Speaker 04: You've got a 97% success rate here. [00:34:27] Speaker 04: So the next question is, for us as the board, are we going to go through a complete do-over of all 65 claims in this particular proceeding now that you've been stopped from further continuing on in this proceeding? [00:34:49] Speaker 02: That's putting essentially words in the board's mouth in terms of how to read that, where they are saying that we got the relief we requested, which we didn't. [00:35:01] Speaker 01: Well, Mr. Morris, this is Judge Proce. [00:35:03] Speaker 01: Can I just insert in that, I mean, no matter what the board said, the board had no guarantee. [00:35:11] Speaker 01: I mean, Netlist filed a cross-appeal in the case that we just heard about a half hour ago. [00:35:16] Speaker 01: Correct. [00:35:18] Speaker 01: uh, thought, obviously thought it was right with respect to 63 of the 65 claims. [00:35:24] Speaker 01: Well, as to all the claims, there's no, there was no certainty or certainly no guarantee that the, our court would not reverse their decision, which would have left you with no relief whatsoever on either prior art, right? [00:35:42] Speaker 01: Correct. [00:35:44] Speaker 01: Can I just [00:35:45] Speaker 01: Okay, I'm going to extend the time a little, because I just have a question about the APA questions I was raising with Ms. [00:35:52] Speaker 01: Craven. [00:35:53] Speaker 01: Firstly, do you agree with her final point, which is an interesting one that I frankly haven't thought through, as to whether or not, again, assuming that you're wrong on your interpretation of 315, whether the board would have discretion to proceed on its own with respect to just 40 and 41, or whether it would have been required under SAS to [00:36:15] Speaker 01: to do the whole thing, all the claims. [00:36:19] Speaker 01: Do you have a comment? [00:36:21] Speaker 02: Well, I don't know of a requirement that would force them to take that step, especially when they're dealing with a unique situation. [00:36:30] Speaker 04: What about Section 318A, the words of the statute itself? [00:36:36] Speaker 04: The board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner. [00:36:45] Speaker 04: That's correct. [00:36:46] Speaker 04: And the petition, as we all know from SAS Institute, is the driving force as to what the playing field is going to be for the entire proceeding. [00:36:57] Speaker 04: And the petition that was granted, when you combine them together, had specific articulated challenges as to all 65 clients. [00:37:08] Speaker 02: That's correct. [00:37:09] Speaker 02: And that does make sense. [00:37:11] Speaker 02: And that fits in also with the, [00:37:14] Speaker 02: what the board typically considers in these types of situations, which is the public interest in having these things determined and decided, which is a consideration they just did not make and completely ignored from its other cases. [00:37:29] Speaker 01: Mr. Morris, let me ask you just one final question on this APA thing. [00:37:33] Speaker 01: And that is, let's assume hypothetically that the board didn't make the misstatement about how if they had filed on the same day, it could have avoided a stop-off. [00:37:42] Speaker 01: And let's assume the board didn't kind of make this mumbo jumbo thing about whether or not you got all your relief or didn't get all your relief. [00:37:52] Speaker 01: In other words, the board rested virtually entirely, as far as we know, on the efficiency. [00:37:57] Speaker 01: This is a big deal. [00:37:58] Speaker 01: This is a lot of time. [00:38:00] Speaker 01: This is going through 63 or 65 claims again. [00:38:03] Speaker 01: Would there be any basis to argue that we could, that would not be [00:38:10] Speaker 01: something that we would have to defer to in terms of the board's judgment of the extending of resources which are considerable in this case. [00:38:21] Speaker 02: Well, in that, well, they do have to reconcile at least the finding with regard to efficiency that they made early on. [00:38:30] Speaker 01: I mean, one- Okay, let's take that off the table too then. [00:38:38] Speaker 01: Just to clean our- [00:38:40] Speaker 01: This is a lot of work. [00:38:42] Speaker 01: We've only got a month left. [00:38:43] Speaker 01: We've already decided that we're exercising our discretion on behalf of the office to not proceed on the 65 claims again and issue a written decision, which obviously would have taken considerable amount of time and effort. [00:38:59] Speaker 01: Would you have any basis for an APA challenge in that circumstance? [00:39:04] Speaker 02: I mean, one issue that they failed to grapple with or discuss, which would be [00:39:10] Speaker 02: you know, a failing on their part was the burden already incurred by the parties over the course of the last year and in terms of the balance there. [00:39:20] Speaker 01: Okay. [00:39:21] Speaker 01: Anything else from my colleagues? [00:39:25] Speaker 01: Not from me, thank you. [00:39:27] Speaker 01: Thank you. [00:39:27] Speaker 01: We thank both sides and the case is submitted.