[00:00:00] Speaker 01:
2102, alarm.com against Hirschfeld.

[00:00:05] Speaker 01:
Ms.

[00:00:05] Speaker 01:
Goswami, please begin whenever you're ready.

[00:00:09] Speaker 04:
Thank you, Your Honor.

[00:00:10] Speaker 04:
Good afternoon, Your Honors, and may it please the court.

[00:00:13] Speaker 04:
My name is Sharon Woyngoswami, and I represent the appellant, alarm.com.

[00:00:17] Speaker 04:
I have reserved three minutes of my time for rebuttal.

[00:00:20] Speaker 04:
I'll focus my argument on three points.

[00:00:22] Speaker 04:
First, judicial review is strongly presumed to be available unless the statute says otherwise.

[00:00:28] Speaker 04:
Here there are two sections that address judicial review with respect to ex parte reexamination, 306 and 303C.

[00:00:35] Speaker 04:
306 allows patent owners to seek judicial review of final ex parte reexamination decisions adverse to patentability, while 303C spars any party from seeking judicial review of PTO decisions, finding no substantial new question of patentability.

[00:00:55] Speaker 04:
303C would make no sense unless third parties had the right to judicial review in some circumstances.

[00:01:02] Speaker 04:
Second, several precedents of this court and the Supreme Court, including Ethicon, Vivint, and SAS, show that judicial review is available in cases like this one where the Patent Office has exceeded its statutory authority.

[00:01:16] Speaker 04:
Finally, third, the ability of any person to request ex parte re-examination is an important substantive right that must be protected.

[00:01:25] Speaker 04:
And the availability of judicial... This goes one in.

[00:01:28] Speaker 02:
This is Judge Chen.

[00:01:30] Speaker 02:
Could you, just so I understand your theory of the scope of judicial review, what are the things in your view that an ex parte re-exam requester has the right to seek judicial review on?

[00:01:47] Speaker 02:
I understand that you think 303C bars review on the merits-based question of whether there's a substantial question of possibility, and ex parte re-examine requesters can't go to the APA on that.

[00:02:05] Speaker 02:
But what types of things, in your view, aside from this estoppel finding in front of us, can an ex parte re-examine requester go to court?

[00:02:18] Speaker 04:
Yes, thank you.

[00:02:19] Speaker 04:
So, determinations that are made in contravention of the requirements of other sections, for example, Section 305, which was decided in Ethicon, but that would not fall under the bar in 303C or under the final decision bar under 306 and syntax.

[00:02:39] Speaker 04:
That's the scope of what would be available here.

[00:02:43] Speaker 02:
And just looking at the... I guess what I'm trying to understand is, according to the statute,

[00:02:48] Speaker 02:
The one thing that an ex parte re-exam requester arguably has the legal right to is to file a request and then have that request considered for whether there's a substantial question of fattenability.

[00:03:05] Speaker 02:
But then if that request is granted, I don't see anything in the statute that contemplates the re-exam requester having

[00:03:18] Speaker 02:
any legal right to that they could claim it was harmed based on some PTO action?

[00:03:27] Speaker 02:
Just putting epic on to the side.

[00:03:31] Speaker 02:
What other legal right does an ex parte re-exam requester have other than the filing of a request?

[00:03:40] Speaker 04:
So the other rights that could be considered, for example, would be review under 325D.

[00:03:48] Speaker 04:
And that's the case that this court considered in revivend.

[00:03:52] Speaker 04:
So in revivend,

[00:03:54] Speaker 04:
This court decided that it had jurisdiction under the APA to consider the challenge of whether, Vivint's challenge of whether the Patent Office's 325 determination when considering an ex parte re-examination request.

[00:04:09] Speaker 04:
And it concluded that it did, and it also concluded that the statute did not expressly bar judicial review of Vivint's challenge.

[00:04:16] Speaker 04:
So this comes back to the role of the third-party requester in reexamination proceedings.

[00:04:22] Speaker 04:
So the only place where the third party has an active role is in the request stage.

[00:04:28] Speaker 04:
So determinations for a stop-all, like this case, 315E, and determinations under 325D, those are really just before the actual request is substantively considered.

[00:04:41] Speaker 04:
And that's where the third party has the active role.

[00:04:43] Speaker 04:
And this comes to actually one of my points, which is that the right to ex parte re-examination is important.

[00:04:51] Speaker 04:
So the Congress didn't want

[00:04:53] Speaker 04:
district courts to challenge or second guess the Patent Office's substantive determinations of patentability on the merits in APA challenges.

[00:05:02] Speaker 04:
And then that goes along with the 303C bar here.

[00:05:06] Speaker 04:
But Congress contemplated that each challenger would get a fair shake at the PTO, which means that the PTO would need to correctly apply the statutory procedures, which were not correct.

[00:05:17] Speaker 02:
What if hypothetically after your side filed the request

[00:05:22] Speaker 02:
The PTO granted it and initiated a reexamination proceeding.

[00:05:28] Speaker 02:
And then after that, an estoppel-triggering event occurred through a final written decision in an IPR that you had petitioned for.

[00:05:39] Speaker 02:
And then at that point in time, the PTO concluded that the reexam couldn't be maintained any longer.

[00:05:48] Speaker 02:
So I think in that case, that would be governed by... Would you be able to file an APA action in district court for that, as an ex parte re-exempt requester who really has no rights beyond filing a request?

[00:06:03] Speaker 04:
Yes, in that scenario, the third party could file for APA review because there would be no final decision here.

[00:06:11] Speaker 04:
And I think that would be exactly analogous to the situation in Uniloc and credit acceptance.

[00:06:18] Speaker 04:
So if there's no final decision, so the 306 says that patent owners have the right to review for final decisions that are adverse to patentability.

[00:06:30] Speaker 02:
But Uniloc is an inter-party

[00:06:33] Speaker 02:
proceeding and your re-exam that you want is an ex parte proceeding.

[00:06:41] Speaker 02:
And so, I mean, as soon as the ex parte re-exam is granted and initiated, I don't see why the third party requester is in any different shoes than any other third party member of the public.

[00:07:00] Speaker 04:
Your Honor, that's right, but when you look at the statute, there's only two instances where review is not eligible.

[00:07:08] Speaker 04:
So it's either 303C, where it's explicitly barred, where there's no substantial new question of pendability.

[00:07:14] Speaker 04:
That's not an estoppel determination.

[00:07:17] Speaker 04:
And then there's 306, which is interpreted by syntax.

[00:07:20] Speaker 04:
which only applies to final decisions.

[00:07:23] Speaker 04:
And the estoppel decision, especially if there's no final decision that comes out of it, is not judged under either 303C or 306.

[00:07:33] Speaker 04:
And the presumption here is in favor of finding judicial review.

[00:07:38] Speaker 04:
So as I think the Patent Office concedes,

[00:07:42] Speaker 04:
The APA provides the default cause of action for judicial review of agency action.

[00:07:48] Speaker 04:
And Congress legislates with the knowledge that judicial review is presumed to be available.

[00:07:53] Speaker 04:
And so it's undisputed here that there's no express bar to judicial review.

[00:07:58] Speaker 04:
And the interaction of 306 and 303C, I mean, remember here that the Patent Office has conceded that the bar in 303C isn't limited to appeals by patent owners.

[00:08:09] Speaker 04:
So Congress is contemplating in 303C that there are at least some instances where third parties can get judicial review.

[00:08:17] Speaker 04:
And since there are at least those circumstances, you have to look at, well, what are those circumstances?

[00:08:23] Speaker 04:
And I think the estoppel determination here, and then in vivid, the 325D determination, those are instances where the Congress has been silent in the statute about judicial review, and that's when it's available under the APA.

[00:08:37] Speaker 04:
And then just coming back to Ethicon, I think Ethicon is, again, exactly the fact pattern.

[00:08:43] Speaker 04:
So while this court did not explicitly address the jurisdictional issue in Ethicon, it reached the merits of the appeal and agreed with the third party chapter that the PTO had not conducted the reexamination in accordance with the statute.

[00:08:57] Speaker 04:
And that would be the same as what you raise in your hypothetical

[00:09:01] Speaker 04:
In Ethicon, nothing in the statute addressed judicial review of the type of issue raised by the plaintiff, and so this court was required to fill in a statutory gap.

[00:09:13] Speaker 04:
Alarm.com is in the same position as the Ethicon plaintiff.

[00:09:16] Speaker 04:
Its statutory rights have been violated.

[00:09:19] Speaker 04:
The statute is silent, and Alarm.com is presumed to have rights to judicial review under the APA.

[00:09:26] Speaker 03:
You mentioned about getting a fair shake, but didn't alarm.com already get that by pursuing the IPRs and receiving final written decisions?

[00:09:36] Speaker 04:
So here, Judge Kenningham, that's exactly the substantive issue that's being decided here.

[00:09:43] Speaker 04:
So it may well be the case that if the district court, this goes back to district court, and the district court says that, oh, it turns out that you are a stop, alarm.com, and you did get a fair shake, then that will be the end of it.

[00:09:56] Speaker 04:
But the issue of what happened here is alarm.com didn't get a fair shake in deciding that estoppel decision.

[00:10:02] Speaker 04:
So if that estoppel decision is wrongly decided,

[00:10:06] Speaker 04:
That means the merits of Alarm.com's substantial new question of patentability has never been considered.

[00:10:13] Speaker 04:
So, you know, I mean, if there's an instance where the patent office has, you know, I've gotten it completely wrong about when the establish, you know, applies, I mean, you could take an extreme situation

[00:10:24] Speaker 04:
where, you know, maybe the third party requester, in fact, had never brought any other IPR.

[00:10:30] Speaker 04:
And that's really analogous to what's happening here, where, you know, if there are new grounds that are being raised in ex parte re-examination proceedings, you know, it doesn't matter that there's been some IPR proceeding that has taken place.

[00:10:44] Speaker 04:
If those grounds could not have been raised and so a sample doesn't apply, then the third party is entitled to at least have the request considered.

[00:10:54] Speaker 04:
And the Supreme Court has recognized that the public has an important interest in resolving issues of pen validity and has noted that, quote, the danger of granting monopoly privileges to the holders of invalid patents.

[00:11:07] Speaker 04:
That's in Cardinal chemistry.

[00:11:09] Speaker 04:
And so absent a clear message from Congress, which is missing here,

[00:11:13] Speaker 04:
A re-examination request with respect to the affable decision should be subject to digital review.

[00:11:20] Speaker 04:
As the Supreme Court observed in Mack Mining, Congress knows that legal lapses and violations occur, and especially so when they have no consequence.

[00:11:29] Speaker 04:
That is why this Court has so long applied.

[00:11:32] Speaker 01:
Ms.

[00:11:32] Speaker 01:
Goswami, this is Jess Truendo.

[00:11:34] Speaker 01:
Can I ask you this question?

[00:11:35] Speaker 01:
Suppose for purposes of this question that we agree with you that there is judicial review

[00:11:44] Speaker 01:
of the three individual request vacator decisions.

[00:11:51] Speaker 01:
There seems to be something else in this case kicking around about some more general attack on the statement of policy.

[00:12:03] Speaker 01:
Is there something for us to decide in this appeal if we agree with you that you're entitled to judicial review

[00:12:12] Speaker 01:
on the, I guess, the three counts of your complaint, one for each of the vacators.

[00:12:22] Speaker 04:
So just for a moment, so with respect to your question, I think the only issue to be decided with respect to that is in the event that this is remanded back to the district court and the district court finds that estoppel doesn't apply here, obviously what would happen is that those decisions would be vacated and because the original ex parte re-examination requests were removed, alarm.com would be obligated to find new ones, file new ones.

[00:12:47] Speaker 04:
So the idea would be that we would want the remedy that when we went back to the patent office, that the patent office couldn't make the same estoppel decision and vacate the re-examination request, that they would have to apply the estoppel decision from the... But isn't the question of remedy rather premature?

[00:13:07] Speaker 04:
Yes, I think... I mean, you want us to... Sorry.

[00:13:13] Speaker 01:
You want us to or think that we have to say something about what the remedy would be if, um, upon conducting judicial review, the district court concludes that the estoppel conclusion of the director was incorrect.

[00:13:35] Speaker 04:
I think, sorry, go ahead.

[00:13:37] Speaker 04:
Yes, Your Honor, that's a fair point.

[00:13:39] Speaker 04:
I think you could decide the narrow question of just whether there is judicial review that's appropriate here, and then it would be remanded to the district court to make further findings.

[00:13:49] Speaker 01:
I'm sorry, a judicial review of the vacator decision with whatever, I'm sorry, yes, of the vacator decision with whatever reasoning lay behind that.

[00:14:01] Speaker 02:
Yes, that's right.

[00:14:04] Speaker 02:
Okay.

[00:14:04] Speaker 02:
So this is Judge Chen.

[00:14:06] Speaker 02:
You wouldn't need to make a facial challenge to the police anymore because you'd be making an as-applied challenge.

[00:14:16] Speaker 04:
Yes, that's right, Your Honor.

[00:14:22] Speaker 01:
Did I hear the buzzer go off or no?

[00:14:26] Speaker 04:
I did hear it go off.

[00:14:28] Speaker 01:
You did?

[00:14:29] Speaker 01:
Yes.

[00:14:30] Speaker 01:
OK.

[00:14:31] Speaker 01:
Why don't we hear from the government, and you'll have your rebuttal time of three minutes back.

[00:14:43] Speaker 00:
Thank you, Your Honor, and may it please the court, Kevin Soder from the Department of Justice for the government.

[00:14:48] Speaker 00:
This court has repeatedly recognized that it's fairly discernible from the text structure and purpose of the Patent Act that Congress intended to prevent a variety of collateral lawsuits

[00:14:57] Speaker 00:
seeking to challenge USPTO decisions for which the Patent Act provides no pathway to further review.

[00:15:03] Speaker 00:
This is one such case.

[00:15:05] Speaker 00:
Alarm.com is asking for a review of the USPTO's decision in an ex parte reexamination, but as some of the colloquy this morning has already observed, I think, Congress specified that only a patent owner could obtain judicial review of decisions made in the course of ex parte reexaminations, and even then Congress carefully circumscribed

[00:15:23] Speaker 00:
circumstances where review would be available.

[00:15:25] Speaker 02:
Those are merit-based issues, correct?

[00:15:29] Speaker 02:
In Section 306.

[00:15:30] Speaker 02:
That's the patentability merits question in which Congress has circumscribed who has the right to review that.

[00:15:40] Speaker 00:
It's correct, Your Honor, that the specific posture in which an appeal can be brought under Section 306 is after a final determination on patentability.

[00:15:51] Speaker 00:
But that just underscores that Congress has intended to limit review to situations in which that posture is present, and there are good reasons why Congress limited review in that way.

[00:16:04] Speaker 00:
There's a significant amount at stake when a patent owner's claims have been canceled through an ex parte re-examination, and the patent owner can bring an appeal directly to this court, unlike what Alarm.com sought to do here.

[00:16:19] Speaker 03:
And further, kind of this Court has already addressed in syntax that the scope of that... Counsel, why does the Patent Act's discussion of judicial review for final decisions apply to limit review of the initial determination?

[00:16:36] Speaker 00:
Sir, I think this Court's decisions in previous excella and syntax illustrate the comprehensiveness of the Patent Act.

[00:16:45] Speaker 00:
intent to limit review to specific situations.

[00:16:50] Speaker 00:
And there's a good reason why review should be available at the end of a process that has gone fully through the agency, which is that that's when something has been reached that's meaningful enough, as far as affecting patent rights or potentially in the case of an IPR affecting estoppel rights at the requester, has been reached at a final conclusion by the agency and therefore warrants potential further review in an Article III court.

[00:17:14] Speaker 00:
But nothing like that has happened in this case.

[00:17:16] Speaker 00:
We're talking only about a threshold procedural determination that this particular pathway of the many different pathways that have been made available to third parties like Alarm.com, this particular pathway for resolving patent validity was determined not to be available on this procedural threshold ground.

[00:17:34] Speaker 00:
But there's nothing anywhere in the Patent Act that suggests Congress wanted that kind of determination to be subject to further review.

[00:17:43] Speaker 00:
And I think when we think about... Well, isn't that flipping the question on its head?

[00:17:47] Speaker 02:
Because I thought we were supposed to, from the starting date, assume that there's a strong presumption of judicial review.

[00:17:57] Speaker 02:
And so then the question is, what in the Patent Act makes it clear and fairly discernible that that presumption of judicial review has been displaced when it comes to a re-exam requester who

[00:18:12] Speaker 02:
just wants his request considered by the director.

[00:18:18] Speaker 00:
It's true that, of course, there is a presumption of judicial review, and we do think that it's fairly discernible from the scheme here that that presumption is rebutted for similar reasons that the presumption was rebutted in the syntax case where there was no provision speaking to review either way, and this court concluded that... I mean, I would agree with you.

[00:18:37] Speaker 02:
I would agree with you if 303C was written in the same way as 314D.

[00:18:42] Speaker 02:
for IPR, the appeal bar for IPR institution decisions, which is broader in scope and those kinds of things that are farther from judicial review than 303C.

[00:18:57] Speaker 02:
So then it would be much clearer that the presumption has been abutted.

[00:19:04] Speaker 02:
Here, it seems like you have to rely on some broad structural inference

[00:19:12] Speaker 02:
that's not altogether clear to me that it exists when it comes to this particular issue, and 306 is really talking about patentability and merit determination.

[00:19:26] Speaker 00:
So, Your Honor, I think the scheme does make this clear.

[00:19:29] Speaker 00:
I think it's true that it's not an express bar, but there are numerous cases from both the Supreme Court and this court in which there was no express bar, but the court still found review precluded.

[00:19:40] Speaker 00:
So that includes in the Patent Act context specifically,

[00:19:42] Speaker 00:
this court's decisions in Pregis and Excella in addition to the decision in Syntex and the Supreme Court's decisions in Block, Erika and Fausto.

[00:19:52] Speaker 00:
So to take one of those, for example, in the Supreme Court's decision in Block, there was no provision addressing either way the potential for judicial review at the behest of, in that case, it was a consumer seeking review of a milk market order.

[00:20:07] Speaker 00:
And although the statute was silent,

[00:20:09] Speaker 00:
The court did not fill that silence by assuming that there was a right to judicial review of potentially incorrect agency action, but rather recognized from the scheme as a whole that the provision of review for similar issues at the behest of other parties demonstrated congressional intent to preclude review at the behest of the consumers.

[00:20:31] Speaker 02:
It was the same issue by other, same issue, not similar issues, right?

[00:20:36] Speaker 00:
So that's true for the situation in Glock, but other cases have expanded upon that basic principle and addressed it in schemes that look even more similar to the situation here.

[00:20:48] Speaker 00:
So for example, in the Supreme Court's decision in Fausto, that one involved the potential rights for review at the behest of a particular class of federal employee.

[00:21:01] Speaker 00:
And the court reasoned that the attention that the scheme paid to that type of person seeking similar rights throughout meant that the intent to preclude review could be inferred from the silence to review at the behest of that person.

[00:21:16] Speaker 00:
And so similarly here, the attention that Congress has paid throughout to the various rights that are intended to be available to third parties who come to the PTO and ask for re-examination of a patent, ask for inter-parties review, ask for post-grant review.

[00:21:32] Speaker 00:
and are given a specific way in which their challenge can be channeled first through the agency, then up to this court in particular circumstances demonstrates that Congress did not intend that individual examinations of patent validity and the legal issues that are embedded within that would be diverted through a collateral attack through district court to assess kind of these preliminary threshold procedural issues that Congress

[00:22:02] Speaker 00:
would not have thought should get somehow significantly more detailed review than is available for determinations of patentability.

[00:22:11] Speaker 03:
Council, do you agree that the express language of the statute provides for a narrow bar?

[00:22:18] Speaker 00:
If we're talking about Section 303C, Your Honor?

[00:22:21] Speaker 00:
Yes.

[00:22:22] Speaker 00:
So we agree that the express language doesn't apply in the circumstances of this case, but it's one of the many in DISA, in our view, that the statute intends

[00:22:32] Speaker 00:
to preclude review in these circumstances because when Congress was contemplating review, at time and again throughout the Patent Act, it has specified how narrow it wants review to be.

[00:22:45] Speaker 00:
And so Section 303C from the outset of the Ex Parte re-examination statute made clear that this particular threshold determination on patentability has never been subject to an appeal right by anyone, whether that's the patent owner or the third party requester.

[00:23:02] Speaker 00:
And it's just, we do not think it's plausible that when Congress enacted the AIA in 2011, it intended to create new rights to judicial review in the ex parte re-examination context when it was carefully thinking about new rights for review of patent validity at the behest of third-party requesters in those other contexts, that it somehow, by creating a new basis on which a third-party

[00:23:31] Speaker 00:
ex parte re-examination request could be denied, but it intended to open the doors to district court litigation about how ex parte re-examination is conducted.

[00:23:40] Speaker 02:
What do we could take from the different language used in the appeal bars between 314D for IPR petitions and 303C for re-exam requests?

[00:23:55] Speaker 02:
Isn't there an inference there that for re-exam requests,

[00:24:00] Speaker 02:
that maybe there are things that can get judicial review, unlike judicial review for institution-related decisions by the patent board.

[00:24:17] Speaker 00:
So there is a difference in that scope.

[00:24:18] Speaker 00:
And I think, actually, this court's decision in NRA VIVINT, which was being discussed in the earlier colloquy with plaintiff's counsel, illustrates one of those differences.

[00:24:26] Speaker 00:
which is that Section 303C doesn't affect the scope of the review that this court would conduct upon a properly filed appeal by a patent owner under Section 306 from a final decision that addresses patentability.

[00:24:43] Speaker 00:
Whereas, of course, Section 314D does cabin the scope of that review as the Supreme Court held in close and prized.

[00:24:51] Speaker 00:
So that's a reason why this court's review in Vivint

[00:24:54] Speaker 00:
was not constrained by section 303C and that shows a difference in the effect of the language between 303C and 314D.

[00:25:03] Speaker 00:
But that doesn't at all support the inference that Alarm.com seeks to draw that Congress somehow by simply leaving 303C in place for all the many years that the ex-party re-examination statute has been around intended to expand opportunities for judicial review when it

[00:25:22] Speaker 00:
left 303C in its longstanding form.

[00:25:25] Speaker 00:
And I think it's important also to step back and think about the anomalous results that would obtain from recognizing a right to review in this case.

[00:25:36] Speaker 00:
One set of anomalies is that the third party requester would have significantly more rights for this sort of threshold procedural determination than the patent owner does in an ex parte reexamination to which the patent owner is of course actually a party.

[00:25:48] Speaker 00:
And that would subvert Congress's intent by elevating

[00:25:51] Speaker 00:
the rights of that third party requester over the rights of the patent owner, giving them more time to seek review, indeed up to six years under the APA, letting them go to any district court in the country, and letting them go without any further review at the agency beyond the determination that's made on the estoppel basis.

[00:26:14] Speaker 00:
Comparing that also to the other rights that are entirely unavailable to the third party requester, it just doesn't make sense to think

[00:26:20] Speaker 00:
that Congress would have wanted that even though the third-party requester can't get review of the final decision on patentability, can't get review of the threshold determination not to institute or not to order ex parte re-examination on the basis of the showing they made on patentability, would nevertheless be able to come into court on this procedural issue in which the only harm that accrues to someone like Alarm.com that lets them into court and gives them standing is their interest in invalidating the patent, which they have many, many

[00:26:49] Speaker 00:
avenues to obtain administrative and judicial review of other than ex parte reexamination.

[00:26:55] Speaker 01:
Mr. Soder, this is Judge Toronto.

[00:26:57] Speaker 01:
Can I ask you a question about 303 or maybe the ex parte reexam regime altogether?

[00:27:03] Speaker 01:
Does the Director, upon seeing a request that does in fact present a substantial new question of patentability,

[00:27:16] Speaker 01:
have discretion to say, I'm not going to launch the proceeding because our resources are, you know, better spent on other tasks?

[00:27:29] Speaker 01:
That is, is there a discretion to simply not initiate a proceeding even if there's a determination of substantial new question of patentability?

[00:27:45] Speaker 00:
I'm not aware of a discretion that operates similarly to the discretion that exists for declining to institute inter-parties review.

[00:27:54] Speaker 00:
But, of course, that's not something that bears on this case where there is a statutory basis for refusing to or indeed being not empowered under the statute to allow a request to proceed where the requester is stopped under sections 315E1 or 325E1.

[00:28:09] Speaker 00:
Right.

[00:28:10] Speaker 01:
I guess part of the reason I'm asking the question is

[00:28:15] Speaker 01:
There is a statutory right to request reexamination and putting aside a stopple and I guess the 325 sort of provision.

[00:28:32] Speaker 01:
That third party requester does have a statutory right putting aside those things to get a determination by the director on the substantial new question of patentability determination.

[00:28:44] Speaker 01:
And then if there's no discretion of the director to say, well, even though I find such a substantial question, I'm not going to launch the proceeding, then the proceeding gets launched.

[00:28:54] Speaker 01:
Isn't that a real legal right on the part of a third party requester?

[00:29:00] Speaker 01:
It means there's going to be a decision on the merits of the patent, of the patent, I guess the unpatability question.

[00:29:12] Speaker 00:
No, Your Honor, I think that type of right is the type of procedural right in vacuo that would not confer standing on someone to sue if that was, if the only basis was that someone just thinks the agency isn't following the letter of the law.

[00:29:26] Speaker 01:
No, but that's not, that's not, that's not this.

[00:29:30] Speaker 01:
I mean, let's assume here as I think is clear that if there were an article three injury requirement, which there isn't alarm.com would have it.

[00:29:43] Speaker 01:
This is not just bystander, we have a legal right to make the agency do something that we think is in the public good.

[00:29:51] Speaker 01:
This is a legal right that Congress has given it to have the agency relieve it from harm that's real.

[00:30:00] Speaker 01:
Again, assuming that it's right on the merits of everything that it says.

[00:30:06] Speaker 00:
Your Honor, I see my time is expired.

[00:30:07] Speaker 00:
May I respond?

[00:30:08] Speaker 01:
Please do.

[00:30:10] Speaker 00:
I think the harm that is caused to someone in a position like Alarm.com is the harm from not being able to practice the patent that they think is invalid.

[00:30:20] Speaker 00:
And that is the harm for which the scheme has provided many opportunities for both administrative and judicial review, such as a defense to infringement action, which this court emphasized in pre-dismint syntax was an adequate alternative.

[00:30:34] Speaker 00:
And I think, and there's also, of course, inter-parties review.

[00:30:40] Speaker 00:
And I think it's clear from a number of cases that the mere sort of interest in having the agency follow the statute is not enough to support getting into court.

[00:30:52] Speaker 00:
And if it were any other way, then that could not explain the Supreme Court's decisions in close and thrive.

[00:31:01] Speaker 01:
If there are no further questions from the panel, we'll conclude your part of the argument.

[00:31:09] Speaker 01:
Ms.

[00:31:09] Speaker 01:
Goswani, you have, what was it, three minutes for rebuttal?

[00:31:16] Speaker 04:
Thank you, Your Honor.

[00:31:17] Speaker 04:
I just have three points.

[00:31:18] Speaker 01:
By the way, can you speak to the six-year special limitations issue, which is, yes, speak to that, please.

[00:31:26] Speaker 04:
Yes.

[00:31:27] Speaker 04:
So with respect to the six-year statute of limitations issue, the problem is it's just apples to oranges.

[00:31:32] Speaker 04:
So in one instance, the patent owner has 60 days to get review of the merits decision, so the final decision under 306.

[00:31:41] Speaker 04:
The six years is only to get review of the very circumscribed portion of the request or the proceeding in which the ex parte third party requester actually has the right to review.

[00:31:55] Speaker 04:
And so it's just a different determination.

[00:31:57] Speaker 04:
And I think that Congress often sets forth appeal lengths of different rights and different statutes of limitations for different provisions.

[00:32:07] Speaker 04:
And I think similarly, you know, to the extent that a patent owner wanted to challenge the estoppel determination, they would have six years if they were only challenging the estoppel determination, you know, provided that, you know, that one of the other provisions didn't apply in terms of the health decision provision.

[00:32:26] Speaker 04:
And then coming back to something that Mr. Soter raised, so he talked about, you know, Congress knows how to draft a bar to be narrow or broad.

[00:32:34] Speaker 04:
and they enacted all these other provisions.

[00:32:37] Speaker 04:
But when we look here, you can look at the difference between the bar in 303C and the bar in 314D.

[00:32:43] Speaker 04:
You know, Congress knew how to make the broader bar in 314D.

[00:32:48] Speaker 04:
When the AA was enacted, Congress, in fact, amended Section 315E1 to include the established provision that the PTO applied here.

[00:32:56] Speaker 04:
But Congress didn't amend the appeal bar in Section 303C.

[00:33:01] Speaker 02:
And they didn't admit... Ms.

[00:33:03] Speaker 02:
Guzmami, can you think of any good reason why Congress would allow Alarm.com to have judicial review for stop all determinations here, but at the same time bar Alarm.com if it were to file... Bar Alarm.com from judicial review if Alarm.com were to file yet another new IPR petition that then was deemed to be a stop.

[00:33:33] Speaker 04:
So the reason is that that's just how the statutory schemes are set up.

[00:33:40] Speaker 04:
So it just happened that Congress happened to make a determination that the bar for the ex parte re-examination and also the original inter-parties re-examination would be a narrower bar in terms of deciding the issue of no substantial new question of patentability versus the 314D bar, which is a much broader...

[00:34:00] Speaker 02:
I mean, I know there's an observation that they are different.

[00:34:04] Speaker 02:
The question is why would have Congress wanted to preserve a judicial review right for re-examining questions unlike IPR petitioners for this particular kind of issue?

[00:34:18] Speaker 04:
So I think one reason is that the ex parte re-examination, it's meant to be open to really anyone.

[00:34:25] Speaker 04:
It's a much broader right of the public to be able to challenge patents in the PTO proceedings.

[00:34:34] Speaker 04:
And I think that there's value to being able to show that the examination in the first instance was not conducted correctly.

[00:34:42] Speaker 04:
And I'd just like to come back to this course

[00:34:45] Speaker 04:
Sorry, not this court, but four members of this court in Wi-Fi 1, where Judge Hughes wrote that the statute specifically bars review of the narrow issue of whether the request raises a substantial new question of patentability.

[00:34:58] Speaker 04:
But the statute does not bar review of the entire decision to initiate re-examination.

[00:35:03] Speaker 04:
So it recognized that the statutory scheme here does not bar review of cases like this one, where there's been an incorrect, estoppel decision.

[00:35:13] Speaker 04:
Thank you, Your Honor.

[00:35:15] Speaker 01:
Thank you and thanks to all counsel.

[00:35:20] Speaker 01:
And the case is submitted and that concludes our arguments for the morning.

[00:35:27] Speaker 03:
The Honorable Court is adjourned until tomorrow morning at 10 a.m.