[00:00:00] Speaker 03:
Good morning, everyone.

[00:00:01] Speaker 03:
The first argued case this morning is number 21-1635, American Patents LLC against Unified Patents LLC.

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

[00:00:27] Speaker 00:
Good morning, Judge Newman.

[00:00:28] Speaker 00:
And may it please the court.

[00:00:30] Speaker 00:
My argument will focus first on the reviewability of the board's post-institution procedural decisions to expunge two rebuttal exhibits and to strike those exhibits and the associated arguments.

[00:00:43] Speaker 00:
After that, I will discuss why.

[00:00:44] Speaker 02:
Mr. Thompson, I'm wondering why this isn't almost a frivolous appeal.

[00:00:52] Speaker 02:
You're talking about institution, which of course is non-appealable.

[00:00:59] Speaker 02:
non-admissibility of exhibits, which is a matter of discretion, and sealing of the identity of one of the United members, which seemingly has become moot because it's public.

[00:01:16] Speaker 02:
So what is this appeal designed to accomplish?

[00:01:23] Speaker 00:
Your Honor, the appeal was designed to help us get our patent back.

[00:01:27] Speaker 00:
The patent wasn't validated.

[00:01:29] Speaker 00:
The strategy that we took in front of the board was to focus on the RPI issues, because we thought under this court's... We're not arguing the merits here.

[00:01:39] Speaker 00:
We're arguing the merits in the sense that we believe unifies failure to name Samsung as an RPI in the petition.

[00:01:46] Speaker 00:
And this decision to keep maintain that position despite evidence to the contrary produced during discovery was something

[00:01:53] Speaker 00:
that was a flaw under 312A2 and that warrants the board terminating the IPR.

[00:02:02] Speaker 04:
Is termination of the IPR the only relief that you could get from the board that would help you?

[00:02:12] Speaker 00:
Termination of the IPR, at the very least,

[00:02:16] Speaker 00:
is the primary release.

[00:02:17] Speaker 00:
I mean, I think it's possible that, I think the board discussed this below, that if the board were to find that Samsung were an unnamed RPI and then give Unified the opportunity to amend the petition to name Samsung, that might still have a beneficial effect on my client.

[00:02:36] Speaker 00:
I think that's less likely to benefit the client given the settlement with Samsung, but it's possible.

[00:02:42] Speaker 04:
Even though you haven't raised any challenge to the

[00:02:46] Speaker 04:
the patentability merits ruling and which would not change according to whether there is a, it would not change if Samsung was now named as a co-petitioner.

[00:03:01] Speaker 00:
The merits wouldn't change, Your Honor, but the board's ability under statute to consider the petition would.

[00:03:07] Speaker 00:
312A2 makes very clear that a petition shall not be considered if it fails to name all real party members.

[00:03:15] Speaker 04:
I'm just trying to focus.

[00:03:16] Speaker 04:
I think I'm hearing your answer to be that, in fact, de-institution is the only thing that you could get from the board that could actually benefit you.

[00:03:30] Speaker 04:
You are here arguing.

[00:03:32] Speaker 04:
Let's put aside expungement.

[00:03:33] Speaker 04:
And obviously, Samsung is now nameable.

[00:03:36] Speaker 04:
So that's not an issue anymore.

[00:03:39] Speaker 04:
Is there any more work to be done on de-sealing?

[00:03:42] Speaker 04:
Wasn't there a joint motion filed to the board or a joint email or something saying, please unseal the references to Samsung?

[00:03:50] Speaker 04:
Do you know has that been acted on?

[00:03:52] Speaker 00:
Or do we have to order the board to do that?

[00:03:54] Speaker 00:
To my knowledge, it has not been acted on.

[00:03:56] Speaker 00:
And I think this court will have to order the board to do that.

[00:03:58] Speaker 04:
Um, and, and then the expungement, um, expungement seems to me quite independent of institution.

[00:04:07] Speaker 04:
Um, and I don't really, do we have to reverse the expungement?

[00:04:12] Speaker 04:
I'm not, I'll ask obviously the other side.

[00:04:15] Speaker 04:
I'm not even clear that, um, that they're even pressing any argument about the validity of expungement, but is that something that, that we need to do and what benefit would it give you?

[00:04:28] Speaker 00:
Our concern on the expungement issue, especially in light of the board's own cases discussing their expungement precedent, is that the fact that the exhibits were expunged would limit this court's ability to review them on appeal.

[00:04:41] Speaker 04:
But it didn't, right?

[00:04:42] Speaker 04:
Because somehow or other, they became the last couple of pages of the joint appendix.

[00:04:47] Speaker 04:
And I don't see the other side objecting to our consideration of them to the extent we're considering the striking

[00:04:56] Speaker 04:
of the evidence, we obviously have to, and I'm not really sure what basis there is for expungement once it's conceded that obviously they get to, those documents get to come before us as part of the evidentiary argument.

[00:05:09] Speaker 00:
Your honor, our concern was under the, I think the sharing case in particular, uh, where it appeared that the excluded material was before this court in the joint appendix.

[00:05:18] Speaker 00:
This court decided to not consider it because it had been excluded below and had never been considered by the district court.

[00:05:23] Speaker 04:
Okay.

[00:05:24] Speaker 04:
We can find out from the other side, but on the striking and the reviewability, um, why is this not a matter in which, um,

[00:05:36] Speaker 04:
The unreviewability of the RPI conclusion should mean unreviewability of the particular evidentiary objection that you're making.

[00:05:50] Speaker 04:
That is, the objection to the striking of two documents.

[00:05:54] Speaker 04:
Are those documents public now, or are those still sealed?

[00:05:57] Speaker 00:
They are still sealed, Your Honor.

[00:05:58] Speaker 04:
They're still sealed.

[00:05:59] Speaker 04:
So two documents.

[00:06:02] Speaker 04:
Why does one not follow from the other?

[00:06:05] Speaker 00:
Thank you, Your Honor.

[00:06:06] Speaker 00:
One does not fall from the other because of the tests that the Supreme Court and this Court have used to decide the issue, and in light of the strong presumption in favor of judicial review.

[00:06:17] Speaker 00:
The test laid out in CUSO is not an effects-based test.

[00:06:22] Speaker 00:
It is an issue-based or grounds-based test.

[00:06:26] Speaker 00:
The Court in SAS made very clear that a decision was not barred from review simply because it had some bearing on or some effect

[00:06:35] Speaker 00:
on institution.

[00:06:37] Speaker 00:
I mean, that was the director's position in SAS, and that's essentially unified position here.

[00:06:42] Speaker 00:
But the court in SAS said that that reading of the statute overreads the statute and their precedent.

[00:06:51] Speaker 00:
And here, when we look at the QOZO test, the QOZO test asks whether the grounds for the challenge are based in a statute that is closely tied to institution-related statutes, right?

[00:07:05] Speaker 00:
you have to look and see what is the actual ruling, which statutes are being applied.

[00:07:10] Speaker 00:
And so in Thrive, you had

[00:07:12] Speaker 00:
a time bar that the court decided was solely based on institution.

[00:07:16] Speaker 04:
In Quozo, you had... Just to confirm that there would not be a time bar here because the lawsuit against Samsung was only three months old when this petition was filed, right?

[00:07:26] Speaker 00:
Yes, Your Honor.

[00:07:28] Speaker 00:
In both those cases, what you had was situations in which the relevant statute being applied was something that actually only had meaning really during institution.

[00:07:40] Speaker 04:
Can I ask you about this?

[00:07:44] Speaker 04:
So Quozo has a discussion, relatively early in the Meritsy discussion, in which it distinguishes the Lindahl case.

[00:07:56] Speaker 04:
Now, the Lindahl case said

[00:08:00] Speaker 04:
borrowing from and approving this court's long-standing, or the Court of Claims, our predecessor court's long-standing Scroggins doctrine, which said even when there is a statute that says the following decision shall not be reviewable, that some set of sufficiently important process errors can be reviewed.

[00:08:28] Speaker 04:
Is this such a case?

[00:08:30] Speaker 00:
I think it is, Your Honor, and I think that's one reason why this case is different than PsyWii.

[00:08:35] Speaker 00:
So in PsyWii, for example, you had a decision that was about allowing additional discovery, which is a highly discretionary, limited right under the board's rules.

[00:08:45] Speaker 00:
This, in contrast, involves the APA right to submit rebuttal evidence.

[00:08:49] Speaker 00:
It's a fundamental statutory right that is not discretionary in the way the PsyWii question was.

[00:08:55] Speaker 00:
And putting aside the fact that PsyWii also involved the merit challenge to RPI issues,

[00:08:59] Speaker 00:
and that Tsai We didn't make an argument that sort of analytically applied the Kuzo test differently to the discovery issue.

[00:09:08] Speaker 04:
I think Tsai We is easily distinguished, if only because the argument was not made.

[00:09:16] Speaker 04:
I guess I'm focusing more on whether you really have done enough to put this argument into the Lindahl-Skroggins category.

[00:09:28] Speaker 00:
Your honor, to answer your original question, I think this would be...

[00:09:32] Speaker 00:
an important procedural right under Lindahl, I did not think that we needed to establish that to prevail because of SAS and Thrive making clear that the bar does not extend to issues about how an instituted IPR proceeds.

[00:09:49] Speaker 00:
And that makes sense because if you're dealing with something that's later than institution and is a separate issue from institution, then that's gonna be an issue that's based on rules or statutes that are not

[00:10:01] Speaker 00:
you know, closely tied to institution.

[00:10:04] Speaker 00:
And so I think that is a line of cases that really most tells us here what the right outcome should be.

[00:10:09] Speaker 00:
I think this court's decisions in Windy City and in Unalak 2017 both confirm

[00:10:14] Speaker 00:
that the particular timing of this issue and the analytical separateness of the issue from the RPI marriage decision.

[00:10:21] Speaker 04:
What about this court's decision in power integrations?

[00:10:25] Speaker 04:
It's not a case that the red brief cited.

[00:10:28] Speaker 04:
You do mention it in passing.

[00:10:30] Speaker 04:
I don't know about in passing.

[00:10:30] Speaker 04:
You mentioned it in your gray brief.

[00:10:33] Speaker 04:
That case, I think, if I remember, it came up on mandamus.

[00:10:38] Speaker 04:
But the discussion, I thought, indicated that the

[00:10:47] Speaker 04:
evidentiary, not something like evidentiary, challenges, because they were challenges to a decision that itself was non-reviewable, a non-institution decision, could not be recognized as outside the 314-D non-reviewability bar without

[00:11:09] Speaker 04:
It couldn't be recognized as exceptions to that.

[00:11:14] Speaker 04:
Why is that not applicable here?

[00:11:20] Speaker 00:
Your Honor, apologies if I haven't focused on power integrations on that particular issue, but I do think the evidentiary issue is an important difference that sort of also goes to the harmlessness issues in this case.

[00:11:31] Speaker 00:
An evidentiary issue oftentimes involves an implicit merits evaluation.

[00:11:37] Speaker 00:
So essentially, you might be saying whether something is relevant or whether it's cumulative.

[00:11:42] Speaker 00:
But you still have to have a mindset about what the actual factors are that are being applied.

[00:11:48] Speaker 00:
This is not that kind of issue.

[00:11:49] Speaker 00:
This is a procedural issue.

[00:11:51] Speaker 00:
I think it's before evidentiary.

[00:11:52] Speaker 00:
And we're literally trying to decide.

[00:11:55] Speaker 04:
In the following sense, and again, I don't remember

[00:12:00] Speaker 04:
Is any part of the board decision confidential or not?

[00:12:04] Speaker 00:
There are some, I think, discussions of licensing terms and things like that.

[00:12:07] Speaker 04:
OK, but this doesn't have anything to do with that.

[00:12:11] Speaker 04:
So the board actually cited the exhibit 1026 to which your two 2035 and 2036 exhibits were responsive.

[00:12:22] Speaker 04:
And it cited them, page 43 and I think page 47.

[00:12:27] Speaker 04:
But then when the board says,

[00:12:29] Speaker 04:
Here's why, even considering your argument about those exhibits, it said, we don't think that Samsung is a real party in interest because Unified, though it has, let's call them customers, is making its own independent decisions.

[00:12:50] Speaker 04:
Why doesn't that make the two 2035 and 2036 exhibits

[00:12:58] Speaker 04:
well within the range of either harmlessness or discretionary in the sense that they could not meaningfully undermine the basis on which the board concluded that Samsung was not a real party in interest.

[00:13:20] Speaker 00:
Your honor, I think an important difference is

[00:13:25] Speaker 00:
And the arguments we were making, I think, were heavily reliant on the evidentiary value of those exhibits.

[00:13:32] Speaker 00:
Criticizing Unified's 1026 exhibit for not

[00:13:36] Speaker 00:
discussing certain things is one thing.

[00:13:38] Speaker 00:
But actually having an exhibit that shows why you can take a different inference, why you can infer that Unified lost interest in this IPR as soon as Samsung settled, why you can infer that Unified, even if they don't file every IPR on Samsung's behalf, they file IPRs on some member's behalf in every case, or almost every case.

[00:14:00] Speaker 00:
And in this case, the only member who was implicated was Samsung.

[00:14:05] Speaker 00:
those things, and I think Newvasive talks about this, just having some opportunity to address an issue does not mean the 556D right has been honored, because I think we're entitled to the best way to do that, and here I think the best way was to have the court consider this particular evidence.

[00:14:27] Speaker 03:
Okay, that was a helpful exchange, and thank you.

[00:14:31] Speaker 03:
We'll save your full rebuttal time.

[00:14:33] Speaker 03:
Let's hear from the other side.

[00:14:47] Speaker 01:
I'm hoping by the time I achieve that I won't need it anymore.

[00:15:03] Speaker 01:
Good morning and may it please the court.

[00:15:08] Speaker 01:
I'm going to jump straight and respond to some of the questions that Judge Toronto asked.

[00:15:14] Speaker 01:
American patents, so we can get to the heart of it quickly.

[00:15:17] Speaker 01:
I believe you heard from opposing counsel, termination of the IPR is the relief we're seeking here.

[00:15:27] Speaker 01:
And termination of the institution based on a real party and interest question.

[00:15:32] Speaker 04:
We cannot escape that.

[00:15:35] Speaker 04:
What are we supposed to do about the now public information that this mystery party was Samson, which you now agree is public information?

[00:15:46] Speaker 04:
Is there anything for us to do about that?

[00:15:50] Speaker 04:
First of all, has the board responded to your joint request to proceed with some sort of unsealing?

[00:15:56] Speaker 01:
I didn't check before I came today, but they haven't ruled on it yet, as far as the fact that I lived.

[00:16:04] Speaker 04:
stance on this expungement issue, which is exceedingly odd.

[00:16:10] Speaker 01:
OK.

[00:16:11] Speaker 01:
First, on the ceiling, just one quick note.

[00:16:13] Speaker 01:
I think we let the board do its job.

[00:16:14] Speaker 01:
I mean, that's the process, to have something lifted, and they may be slow about it.

[00:16:18] Speaker 01:
But we should expect them to do their job.

[00:16:20] Speaker 01:
I think it would be difficult for this court to issue some type of decision

[00:16:25] Speaker 01:
solely on a moot question that's really no longer before the court, when the procedures have been taken place in the board to make that happen, even if they're slow.

[00:16:35] Speaker 01:
Expungement.

[00:16:36] Speaker 01:
OK, on expunction.

[00:16:38] Speaker 01:
Expunction, is that the?

[00:16:39] Speaker 01:
Well, maybe you're right, actually.

[00:16:44] Speaker 01:
There, I think the issue for this court is,

[00:16:48] Speaker 01:
The way American patents argued, they argued the issue of expungement with respect to pleadings at the end or evidence at the end of the case after final written decision.

[00:16:59] Speaker 01:
That's not what we have here.

[00:17:00] Speaker 01:
These two exhibits were expunged as part of the striking ruling.

[00:17:06] Speaker 01:
And that's done under a separate regulation.

[00:17:08] Speaker 01:
So it's basically, this is not part of what's properly before me.

[00:17:12] Speaker 01:
I'm going to strike it and expunge it.

[00:17:15] Speaker 01:
And that's how that regulation operates.

[00:17:17] Speaker 01:
So I think you can't reach the expunction question in that instance without also reaching the striking issue, which we've decided is not really reviewable.

[00:17:26] Speaker 04:
Well, I guess this is what confuses me.

[00:17:30] Speaker 04:
It's one thing to say I strike the evidence

[00:17:33] Speaker 04:
Um, in the sense that it's not going to be considered.

[00:17:36] Speaker 04:
It's another thing to, I don't, not even sure what this expungement or expunction thing is.

[00:17:41] Speaker 04:
You agree it had to come into the joint appendix.

[00:17:46] Speaker 04:
It's something that in order to review the striking ruling we have to have in front of us.

[00:17:53] Speaker 04:
So what, what's, what is, what's going on with expungement?

[00:17:57] Speaker 01:
I treated it as kind of an offer of proof.

[00:18:00] Speaker 01:
That's how I understood it, kind of similar to what happens in district court with an offer of proof.

[00:18:05] Speaker 01:
It's in the record for purposes of what you would review, but for purposes, it's my understanding under that regulation, what they're saying is it's not part of my record that I as the board reviewed.

[00:18:17] Speaker 01:
So that's the distinction to me.

[00:18:19] Speaker 01:
And I think that's different than, I'm sorry, I'm interrupting you.

[00:18:22] Speaker 04:
No, no, no.

[00:18:22] Speaker 04:
How does that differ from striking?

[00:18:25] Speaker 04:
They did review it until they struck it.

[00:18:27] Speaker 04:
And then they struck it and said, we're not going to consider it on the merits.

[00:18:31] Speaker 04:
So what else is there?

[00:18:34] Speaker 01:
Right.

[00:18:34] Speaker 01:
I think under that regulation, that's exactly what's happening.

[00:18:37] Speaker 01:
That's different than the regulation that American patents briefed here, which is at the end of the case when it's confidential material.

[00:18:46] Speaker 01:
I expunge it for all purposes.

[00:18:48] Speaker 01:
Same word, different effect under the two regulations.

[00:18:52] Speaker 01:
That regulation allows for striking and expunge, expunction.

[00:18:56] Speaker 01:
I think that's right under that circumstance.

[00:19:00] Speaker 01:
But that's just different.

[00:19:03] Speaker 01:
And it's not that this board can't review it.

[00:19:05] Speaker 01:
I think that is a distinction that probably does distinguish it from the sharing case, which is a post

[00:19:11] Speaker 01:
final written decision expungement for all purposes.

[00:19:15] Speaker 01:
So this very confidential information is as if it never existed.

[00:19:19] Speaker 01:
Okay.

[00:19:20] Speaker 00:
So I think I'm done with that.

[00:19:23] Speaker 04:
Okay.

[00:19:24] Speaker 04:
So it seems to me that the heart of the merits dispute here.

[00:19:28] Speaker 04:
is about the refusal to consider 2035 and 2036 and whether that refusal is reviewable by us and so on.

[00:19:39] Speaker 01:
Obviously, we think it's not reviewable.

[00:19:42] Speaker 01:
I do want to go to one point on the merits if the court gets there.

[00:19:47] Speaker 01:
Well, and it is relevant to whether or not this fits Lindahl's Grogons.

[00:19:52] Speaker 01:
It's not just American patents tries to cast its appeal as a due process challenge.

[00:19:57] Speaker 01:
It's really just their failure to follow the rules.

[00:20:00] Speaker 01:
The whole issue here is they could have salt leave to go beyond what the normal sir replies.

[00:20:07] Speaker 01:
obligations or opportunities are, and they just didn't do it.

[00:20:11] Speaker 01:
And Belden tells us that's the process.

[00:20:13] Speaker 01:
They said they have options.

[00:20:14] Speaker 01:
There are things you can do.

[00:20:15] Speaker 01:
You just have to ask.

[00:20:16] Speaker 04:
So is there a, what was it that required them to seek leave to file with an authorized surreply evidence that by assumption in this question,

[00:20:36] Speaker 04:
is directly responsive to new evidence that you introduced with your reply.

[00:20:42] Speaker 04:
Yes.

[00:20:45] Speaker 04:
What required them to seek leave?

[00:20:48] Speaker 01:
The fact that they didn't have a right to surreply except that that was granted to them in the scheduling order.

[00:20:54] Speaker 04:
And did the scheduling order say your surreply on any surreply, even on this issue, may not

[00:21:07] Speaker 04:
include any evidence, even if that evidence is directly responsive to what the reply added?

[00:21:14] Speaker 01:
It did not, but the board in the institution decision specifically said, I expect everyone, we expect everyone to follow the trial practice guide.

[00:21:22] Speaker 01:
That is at Appendix 648 in Footnote 9.

[00:21:26] Speaker 01:
It says, we expect the parties to follow our rules in the guidance set forth in the trial practice guide.

[00:21:32] Speaker 01:
think American patents is hard pressed to suggest they really didn't understand that those were the rules they were following.

[00:21:39] Speaker 01:
And the trial practice guide is very clear that the surply is limited.

[00:21:44] Speaker 01:
And it only allows cross-examination evidence.

[00:21:47] Speaker 01:
And then the trial practice guide goes further.

[00:21:51] Speaker 01:
If you want something beyond that, there's a mechanism to do it.

[00:21:54] Speaker 01:
You just have to ask.

[00:21:56] Speaker 04:
And do those non-binding trial practice guide rules

[00:22:02] Speaker 04:
apply to the particular situation where the board has authorized the petitioner to introduce new evidence and reply, because this is this RPI issue that hadn't been discovered on.

[00:22:16] Speaker 04:
So you're kind of starting the process there.

[00:22:20] Speaker 04:
Do those trial practice guide principles apply even to a situation in which by universal practice,

[00:22:30] Speaker 04:
and the APA, was it 556 or something, or 554, says you do actually have a right to rebut.

[00:22:38] Speaker 01:
Right.

[00:22:40] Speaker 04:
To submit rebuttal evidence.

[00:22:42] Speaker 01:
Right, right, right.

[00:22:44] Speaker 01:
They had a chance to submit rebuttal evidence.

[00:22:46] Speaker 01:
They rebutted at multiple stages.

[00:22:48] Speaker 01:
There was a patent owner response

[00:22:51] Speaker 01:
preliminary response, they got a surreply there.

[00:22:54] Speaker 01:
They had a patent owner response.

[00:22:56] Speaker 04:
Not in response to your exhibit 1026, which said, look at all of the IPRs we file without, I don't know, I forget exactly what it was, 25 instances to show just how separate you are from your clients.

[00:23:11] Speaker 01:
Actually, now you're buying what they're selling.

[00:23:13] Speaker 01:
The chart that they claim to be rebutting is a rebuttal to their 2023 exhibit, which was all of that information just not in a pretty chart form.

[00:23:27] Speaker 01:
So this is surrebuttal evidence.

[00:23:29] Speaker 01:
They are trying to go one step further and have a surrebuttal.

[00:23:33] Speaker 01:
And what this court said in Belden,

[00:23:35] Speaker 01:
is we want everybody to have a word.

[00:23:38] Speaker 01:
We want to have a last word on evidence, but it's got to stop somewhere.

[00:23:42] Speaker 01:
And by the time you get to a surreply, which we will allow in certain instances, there has to be a justification for it.

[00:23:51] Speaker 01:
It is not unreasonable, arbitrary, in any way impractical for an expectation that if you want to go beyond what the rules are that are set,

[00:24:02] Speaker 01:
that you have to ask permission.

[00:24:04] Speaker 01:
And that's what's going to happen here.

[00:24:05] Speaker 03:
So what I hear you say, to summarize, is that the principles of due process that would apply in the courts don't apply if the administrative agency doesn't feel like following them.

[00:24:19] Speaker 03:
No, not at all.

[00:24:20] Speaker 03:
I'm saying due process.

[00:24:21] Speaker 03:
That's what you just said?

[00:24:22] Speaker 03:
No.

[00:24:22] Speaker 03:
There may be an issue which has been raised inadequately, not fully explored.

[00:24:29] Speaker 03:
Never mind.

[00:24:29] Speaker 03:
You had your shot.

[00:24:31] Speaker 03:
You weren't clairvoyant enough to foresee it, so you lose.

[00:24:36] Speaker 01:
Quite the contrary, Your Honor.

[00:24:38] Speaker 01:
What I'm saying is they had a mechanism under due process that they could have asked for.

[00:24:45] Speaker 03:
Exactly.

[00:24:45] Speaker 03:
You're saying that the due process, which would clearly, in a district court, if there is an issue which is raised later in the proceedings, each side would have a fair opportunity to explore it

[00:25:01] Speaker 03:
Not before us.

[00:25:02] Speaker 03:
We're an administrative agency.

[00:25:04] Speaker 03:
We've got rules.

[00:25:05] Speaker 03:
You know the rules.

[00:25:07] Speaker 03:
That ends it.

[00:25:09] Speaker 01:
No, because if they had followed the rules and followed... Exactly.

[00:25:14] Speaker 01:
We follow the rules.

[00:25:15] Speaker 01:
It is exactly the same as if you're in district court and you fail to make disclosures at a certain time.

[00:25:22] Speaker 01:
The court, in that instance, has lots of discretion to say it's not fair for you to go forward with that.

[00:25:29] Speaker 01:
We have very specific procedures that were in play here.

[00:25:32] Speaker 01:
It's very difficult to look at this record and decide that American patents didn't know what those rules were because they followed them in every other instance and insisted on them.

[00:25:42] Speaker 01:
But then when it came time to putting in new evidence in a reply brief, in a surreply brief, which would be surrebuttal, that's basically taking the evidence they put in in their patent owner response and just twisting it in a new way,

[00:25:59] Speaker 01:
They didn't ask permission, and they had to.

[00:26:00] Speaker 01:
That's what I'm saying.

[00:26:02] Speaker 01:
Is that there was a procedure to follow, and they just didn't follow it.

[00:26:06] Speaker 01:
But let's talk about, I don't want to lose sight of the reviewability question.

[00:26:09] Speaker 01:
And make sure that I've answered your question on why this is not in the quoso exceptions.

[00:26:16] Speaker 01:
It is closely tied.

[00:26:18] Speaker 01:
And I think your honor raised power.

[00:26:20] Speaker 04:
Well, I'm not quite sure under quoso whether the closely tied principle, how that relates to

[00:26:26] Speaker 04:
the Lindahl-Skroggen's principle.

[00:26:29] Speaker 04:
Let's just assume for a moment that Lindahl-Skroggen's standard is part of what would come within the exceptions talked about two paragraphs later or something in Cosa, with due process, whatever.

[00:26:50] Speaker 01:
Right.

[00:26:51] Speaker 01:
OK, I'm not sure.

[00:26:52] Speaker 01:
I want to make sure I answer your question correctly.

[00:26:56] Speaker 04:
Lindahl approved Scroggins, which had long said we have a facially, seemingly absolute statutory non-reviewability provision for some sort of OPM-related decision.

[00:27:10] Speaker 04:
And Scroggins had long said, and Lindahl approved that over dissent, and then Cosa seems to maintain Lindahl.

[00:27:21] Speaker 04:
that the fact that the ultimate decision is not reviewable does not mean that important procedural decisions leading to that decision are themselves unreviewable.

[00:27:35] Speaker 04:
And the question I guess that I'm focusing on is why this isn't that.

[00:27:40] Speaker 01:
Right, right, right.

[00:27:41] Speaker 01:
Got it.

[00:27:43] Speaker 01:
Because

[00:27:44] Speaker 01:
One, as you noted, this is harmless error.

[00:27:47] Speaker 01:
This is a minor issue in the grand scheme of what the board did.

[00:27:52] Speaker 01:
But I think that the type of procedural due process issues that they're talking about in Lindahl, Scroggins, and then in Cuozzo is something much more extreme.

[00:28:04] Speaker 01:
than what we're looking at here.

[00:28:06] Speaker 01:
It's not simply a discretionary decision not to let a couple of pieces of additional surrebuttal evidence in.

[00:28:12] Speaker 01:
Perhaps an example, I tried to think through this yesterday, how to answer that question.

[00:28:18] Speaker 01:
If there was no permission to file a patent owner response, or they didn't allow rebuttal evidence in the context of the patent owner response,

[00:28:28] Speaker 01:
There wasn't the wealth of evidence you had here, and they shut them down early.

[00:28:31] Speaker 01:
They said, no, fifth time I've heard this, I'm not going to allow it.

[00:28:35] Speaker 01:
You would reach a threshold at one of those where you've so exceeded your authority as the board under the AIA that that should be reviewable.

[00:28:43] Speaker 04:
That's not this case.

[00:28:44] Speaker 04:
What were the bases on which the board struck this evidence?

[00:28:51] Speaker 04:
One, I think, was, tell me if I'm wrong, you didn't ask, you could have.

[00:28:55] Speaker 04:
What else did the board say?

[00:28:57] Speaker 01:
Right.

[00:28:57] Speaker 01:
There were two grounds.

[00:28:58] Speaker 01:
One was that you didn't ask.

[00:29:00] Speaker 01:
The other was that it's new evidence beyond the scope of what's allowed by a surreply.

[00:29:06] Speaker 01:
So under the trial practice guide, which I said applies here, which I've told you is going to be our guiding light, the surreply is limited to cross-examination evidence without leave, and you didn't seek leave.

[00:29:20] Speaker 01:
So I see those as two separate grounds.

[00:29:23] Speaker 01:
Notably, American patents didn't address the second one.

[00:29:25] Speaker 01:
They only addressed the first with respect to proper disguise.

[00:29:27] Speaker 04:
What was the basis in the board decision, the ultimate board decision, A60, A63, whatever, for saying, here's why we think Samsung was not a real party in interest?

[00:29:44] Speaker 01:
I have that.

[00:29:47] Speaker 01:
They waved.

[00:29:48] Speaker 01:
They went through the AIT process

[00:29:50] Speaker 01:
for the second time in their decisions because they had to do it at the institution decision too, and they weighed all of the evidence and said, when I weigh these facts, I take into account the fact that yes, members are from time to time benefited from what Unified Patents does, but they focused heavily on the evidence

[00:30:12] Speaker 01:
that Unified acted independently.

[00:30:15] Speaker 01:
And all of the facts that showed it didn't communicate with its members on specific strategies in advance and went through a litany.

[00:30:22] Speaker 01:
That's at final written decision that starts at page 47 and goes on for multiple pages as to that analysis.

[00:30:30] Speaker 04:
So do you think that the board's position is that a entity that is making decisions to

[00:30:42] Speaker 04:
benefit its customers, that that process does not make the customer a real party in interest as long as the entity seeking to benefit them is acting independently.

[00:31:03] Speaker 04:
Is that the principle?

[00:31:04] Speaker 04:
That's the only one that I'm getting out of what you just said or remembering from the board decision.

[00:31:09] Speaker 01:
Well, that's the emphasis from those pages.

[00:31:14] Speaker 01:
There's a 50-page long analysis of all of the AIT factors.

[00:31:19] Speaker 04:
But what's important is the one or two or maybe three, however many it was, that the board said, here's why we think this entity unified, which is in existence for the purpose of, among other things, serving its customers, its members.

[00:31:38] Speaker 04:
is clearly bringing petitions that have some correlation, which is the point of their evidence, with their customers' lawsuits.

[00:31:49] Speaker 04:
And I think the board acknowledges, obviously, there's some kind of benefit being conferred, and maybe even an eye on who's being benefited, namely its customers.

[00:32:01] Speaker 04:
But as long as they're acting independently,

[00:32:04] Speaker 04:
we don't think the customers are real parties and interests.

[00:32:08] Speaker 04:
If there's more to it than that, I guess I'd like to know what there is.

[00:32:13] Speaker 01:
There is more.

[00:32:13] Speaker 01:
To be fair,

[00:32:16] Speaker 01:
felt like this part was not reviewable, so I tried hard not to prep on all of the merits.

[00:32:22] Speaker 01:
But if you look at the analysis.

[00:32:26] Speaker 04:
If reviewability turns on some sense of the importance of this evidence, as Lindau and Scroggins suggest, one actually does have to get into understanding what the harmlessness is, as you say.

[00:32:43] Speaker 04:
When I think actually, at least I think one has to get into,

[00:32:46] Speaker 04:
into something about the basis of the decision to see whether this exclusion of two documents is a little thing or a big thing.

[00:32:55] Speaker 01:
Right.

[00:32:55] Speaker 01:
I would suggest to you, we know it's a little thing because the board addressed specifically

[00:33:04] Speaker 01:
the 2023 exhibit, 2023 and exhibit 1026 and the significance of those, and then weighed that against the other factors, including the most significant of which is the independence of, but what goes into that are the other facts of, you know, cases that didn't involve members and other issues that this was not the sole fact that the board relied upon.

[00:33:33] Speaker 01:
But with respect to these specific exhibits and the fact that this was sur-rebuttal on issues that were already there, it took into account both those exhibits, the facts that they yielded, which exhibit 2036 didn't add to that.

[00:33:54] Speaker 01:
It simply recast the argument about it.

[00:33:57] Speaker 01:
Those facts were already in the record.

[00:33:59] Speaker 01:
And the board took into account those facts, and it found in weighing the factors under AIT that it didn't tip the scale.

[00:34:08] Speaker 01:
Therefore, I think it's safe to find from the board's findings that it would not have been a turning point or a scale-tipping piece of evidence if it had come in.

[00:34:21] Speaker 01:
And it's the same thing with a random offer to settle, to reach a settlement or talk about settlement before the institution decision occurred.

[00:34:34] Speaker 01:
That that just wasn't something, if you look at the board's findings beginning at final written decision at appendix 47,

[00:34:42] Speaker 01:
it's very clear that those are not the things that are pushing the board, that they did take into account the fact that settlements occurred, that licensing's happened, that that was a benefit to the members.

[00:34:54] Speaker 01:
But when you weighed that against the activity, the decisions, the fact that cases were pursued that didn't involve members or didn't directly benefit members, that the mission of Unified Patents

[00:35:10] Speaker 01:
was being seen was to knock out these types of patents that didn't have a lot of value.

[00:35:16] Speaker 01:
And that that was a tipping point that made this evidence not important.

[00:35:21] Speaker 01:
So from the harmless error standpoint, I think that's helpful.

[00:35:24] Speaker 01:
The other piece of harmless error, and I know I'm out of time, the other piece of harmless error is the separate point that it would not have made a difference here.

[00:35:34] Speaker 01:
Because there was no time bar issue, at most what we get is to go back down and change the petition so that it adds a new name to it.

[00:35:44] Speaker 01:
And that would be literally all that happens here.

[00:35:46] Speaker 01:
It does not make the institution go away.

[00:35:51] Speaker 01:
And I know I'm out of time, so I'd ask the court to affirm.

[00:35:54] Speaker 01:
Thank you.

[00:35:57] Speaker 03:
Any questions for counsel?

[00:35:59] Speaker 03:
OK.

[00:36:00] Speaker 01:
Thank you.

[00:36:01] Speaker 01:
Thank you, Your Honor.

[00:36:15] Speaker 03:
Thank you, Your Honor.

[00:36:24] Speaker 00:
I'd like to make three points in rebuttal.

[00:36:26] Speaker 00:
First,

[00:36:28] Speaker 00:
for just Toronto's point about Lindahl.

[00:36:30] Speaker 00:
I think Your Honor characterized Lindahl as being a case where the statutory language was very clear on barring review, and the court still recognized sort of an important procedural rights as being things that might be still reviewable.

[00:36:47] Speaker 00:
I think we are very far from that sort of situation here, because 314A, the actual language of that statute

[00:36:55] Speaker 00:
does not apply in any way to this particular decision.

[00:36:58] Speaker 00:
These decisions were not determinations about whether to institute and they were not determinations made by the director.

[00:37:05] Speaker 00:
Now obviously 314D would still cover board decisions that are implementing the director's authority to institute or essentially interpreting statutes that are purely institution related.

[00:37:18] Speaker 00:
But Congress would never have expected the director to be making decisions about procedural issues during the course of an instituted review.

[00:37:28] Speaker 00:
That's the board's responsibility under the AA, not the director's.

[00:37:32] Speaker 00:
And so I think there's no reason to think that Congress intended for these particular decisions to be barred from judicial review.

[00:37:39] Speaker 00:
And certainly not the clear and convincing indicators that you need under QOZO to rebut the presumption.

[00:37:47] Speaker 00:
Second, I think Council mentioned a couple points that I think were made for the first time about the institution decision somehow being an order on us to comply with the TPG.

[00:38:05] Speaker 00:
Again, that was not presented in the briefs, but I certainly don't think that language that she recited represents an order in any event

[00:38:16] Speaker 00:
the scheduling order was later than that.

[00:38:18] Speaker 00:
So I think the scheduling order would still trump that, and the scheduling order placed no restrictions whatsoever on what evidence could be included with the certify.

[00:38:26] Speaker 00:
And in fact, I think the analogy was made to district court disclosures.

[00:38:31] Speaker 00:
Well, district court disclosures are by rule.

[00:38:33] Speaker 00:
You actually know what the rules are.

[00:38:35] Speaker 00:
They're set forth in writing, and you comply with them.

[00:38:38] Speaker 00:
Or if you can't comply, you seek leave from the court to not comply.

[00:38:42] Speaker 00:
The TPG is not a rule.

[00:38:44] Speaker 00:
In fact,

[00:38:45] Speaker 00:
the provision that unifies relying on from the TPG was added to the rules after this decision was made.

[00:38:53] Speaker 00:
If the TPG can be enforced like a rule, then why are there rules at all?

[00:38:57] Speaker 00:
I mean, the TPG is something that board members can use and implement in their cases if they choose.

[00:39:03] Speaker 00:
The board could have issued a scheduling order that expressly limited our ability to provide

[00:39:10] Speaker 00:
rebuttal evidence, we then would have sought leave to submit the exhibits.

[00:39:15] Speaker 00:
And you still may have APA issues in terms of the rebuttal evidence right, but I think it's unfair to hold our failure to seek leave against us when no rule and no order require that we do so.

[00:39:29] Speaker 00:
And finally, I disagree that the only remedy below is termination.

[00:39:34] Speaker 00:
312A2 again says that no petition can be considered that doesn't comply with the RPI requirement.

[00:39:42] Speaker 00:
The board has terminated IPRs before, based on failure to comply with this requirement, especially in situations where the petitioner has insisted on a petition that the board ultimately rejects about a particular RPI.

[00:39:56] Speaker 00:
If there are any questions, Your Honor?

[00:40:03] Speaker 03:
Thank you.

[00:40:03] Speaker 03:
Thanks to both counsels.

[00:40:05] Speaker 03:
It is well presented.