[00:00:00] Speaker 04:
Cases number 21, 1759, Atlanta Gaslight Company against Bennett Regular Guards, Incorporated.

[00:00:10] Speaker 04:
Mr. Mitchell.

[00:00:12] Speaker 00:
Good morning.

[00:00:12] Speaker 00:
Thank you.

[00:00:13] Speaker 00:
It may please the court.

[00:00:14] Speaker 00:
I'm Josh Mitchell for the Appellant AGLC.

[00:00:16] Speaker 00:
After quite a lot of litigation, this court affirmed the board's finding that the 029 patent is unpatentable and it told the board to quantify a sanction.

[00:00:24] Speaker 00:
The board used that collateral sanctions issue to terminate the IPR and seek to nullify this court's judgment.

[00:00:29] Speaker 00:
We explained in our briefing why we think that no sanction is warranted, but this morning I'd like to focus on why termination, including vacate or the final written decision, can't be the correct sanction.

[00:00:39] Speaker 00:
There's two main reasons for that.

[00:00:40] Speaker 00:
Number one, it flouts the mandate rule.

[00:00:43] Speaker 00:
And number two, the board didn't justify it with regard to either the harm or the conduct at issue here.

[00:00:48] Speaker 00:
In fact, the board even rejected Bennett's requested monetary sanction as excessive before imposing the even harsher sanction of termination.

[00:00:57] Speaker 00:
So, Your Honors, the most obvious reason that termination can't be appropriate is that it flouts the mandate rule.

[00:01:03] Speaker 00:
The parties fully litigated this case to a final judgment in this court in Bennett 2, which affirmed the board's unpatentability finding.

[00:01:11] Speaker 00:
The remand order here was, we think, quite narrow.

[00:01:14] Speaker 00:
It was to quantify the sanction.

[00:01:17] Speaker 01:
Judge Stowell.

[00:01:18] Speaker 01:
I have a question for you on that.

[00:01:21] Speaker 01:
One thing I'm positive about is the Supreme Court was very clear and clicked a call that we lacked jurisdiction to review determinations relating to time bar, right?

[00:01:32] Speaker 01:
And the board did not make its determination solely to de-institute in this case.

[00:01:40] Speaker 01:
Did not make it solely based on a sanction.

[00:01:42] Speaker 01:
They said another thing they were considering is the change in policy

[00:01:48] Speaker 01:
with respect to the time bar.

[00:01:52] Speaker 01:
And it's very clear that we can't review determinations related to time bar.

[00:01:56] Speaker 01:
The Supreme Court sent this case back to us and we knew that we could not judge the time bar, so we assessed the validity of the claims, but we didn't say anything about the time bar because we can't, frankly.

[00:02:11] Speaker 01:
It's very clear that we like jurisdiction to do that.

[00:02:15] Speaker 01:
how can our mandate preclude reconsideration of an issue that we don't even have jurisdiction to consider?

[00:02:23] Speaker 00:
Well, Your Honor, I think it's important to remember that the board terminated here as a sanction.

[00:02:31] Speaker 00:
And so the statutory language appears to be pretty clear that this court has jurisdiction to review final decisions of the board, including sanctions decisions.

[00:02:42] Speaker 00:
I mean, this court in

[00:02:45] Speaker 01:
Gerson versus Shirai and Orange Team versus Citrix Systems has, you know... Council, are you taking the position that the board did not consider that it was terminating, I mean, that it was changing, I guess, terminating or de-instituting the after-party's review based on the change in policy

[00:03:10] Speaker 01:
in the PTO that it expressed in its briefing before the Supreme Court in Thrive.

[00:03:17] Speaker 01:
Are you saying that that's not even part of the board's decision?

[00:03:21] Speaker 01:
Instead, the board's decision is solely for a sanction?

[00:03:25] Speaker 00:
Yes, I think that's got to be correct, Your Honor.

[00:03:32] Speaker 00:
order was expressed as an order terminating the judgment as a sanction.

[00:03:37] Speaker 01:
Terminating the... What about this language it says where it says it's an evaluation of multiple considerations?

[00:03:43] Speaker 01:
This is on page seven, appendix page seven.

[00:03:45] Speaker 01:
These considerations include assessment of where this case stands in light of the RPI and time bar issues, the development of both the law and office policy on those issues over the course of the proceeding, and our appraisal of patent owner-specific monetary request as a quantification of the sanction.

[00:04:02] Speaker 01:
So I don't understand at all, to be honest with you, how you can say that the board's decision wasn't based, at least in part, on its determination that the case was time barred.

[00:04:17] Speaker 00:
Well, Your Honor, I believe that that is a correct view of the way that the court or that the board assessed the sanctions decision.

[00:04:25] Speaker 00:
But on page 10 of the order,

[00:04:31] Speaker 00:
The board expressly imposes a vacator of the institution decision and final decision and termination of the proceeding as a sanction.

[00:04:38] Speaker 00:
It appears, at least to me, to be quite clear that it's saying that it, quote, operates as a sufficient sanction.

[00:04:46] Speaker 01:
Also confirming this decision to current office policy.

[00:04:52] Speaker 01:
You've cross-coded there.

[00:04:56] Speaker 01:
current office policy isn't referring to a sanction, it's referring to time bar.

[00:05:01] Speaker 01:
I think it would be unfair to read it differently.

[00:05:05] Speaker 00:
Well, Your Honor, I agree that one of the considerations that the Board took into account when it crafted the sanction here is the belated change in policy on the time bar question.

[00:05:19] Speaker 01:
Do you agree that the time bar is on and off switch on institution?

[00:05:23] Speaker 01:
You know, you can't

[00:05:24] Speaker 01:
You can't kind of institute or not institute based on the time bar.

[00:05:29] Speaker 01:
It's either you institute or you don't.

[00:05:31] Speaker 01:
There's either a time bar or there's not, right?

[00:05:35] Speaker 00:
I believe that's correct, Your Honor.

[00:05:37] Speaker 00:
But, you know, even taking into account that there's less than clear guidance from the Supreme Court on what falls on the 314-D bar,

[00:05:44] Speaker 00:
The judicial economy considerations that led Congress to take institutions off of the table for appellate review are completely reversed here, where we have a completed litigation before the board.

[00:05:56] Speaker 00:
The Supreme Court reiterated those policy concerns in Click the Call itself.

[00:06:01] Speaker 00:
It said that the AIA's focus is on efficient resolution of patentability above compliance concerns, and so courts and the board shouldn't be in the business of wasting resources spent resolving patentability and leaving bad patents enforceable.

[00:06:15] Speaker 00:
What the board did here were allowed to stand because it sort of pretextually used a collateral sanctions decision to gut this board's decision, you would be completely contravening those concerns.

[00:06:33] Speaker 01:
I could see, now let's talk, it sounds like you're talking shenanigans now.

[00:06:37] Speaker 01:
Yes.

[00:06:38] Speaker 01:
And I can see where shenanigans, if shenanigans had occurred, that could be something that could prompt our ability to review.

[00:06:47] Speaker 01:
So, but do you think shenanigans, that shenanigans consideration is limited to a petition for writ of mandamus?

[00:06:54] Speaker 01:
Because I believe we have a case that says it is.

[00:06:56] Speaker 00:
Your Honor, I don't believe it is.

[00:06:58] Speaker 00:
The Cuoso opinion specifically says that shenanigans, quote unquote shenanigans, would be reviewable under 319 or the APA.

[00:07:08] Speaker 00:
Certainly we believe that mandamus would be appropriate here to the extent that the court doesn't believe it has jurisdiction to review this decision, but we think that it's unnecessary to reach mandamus because

[00:07:21] Speaker 00:
At least to us, it appears that the court has pretty clear jurisdiction to review this as a sanctions decision.

[00:07:26] Speaker 01:
Do you think you've reserved the issue of mandamus?

[00:07:31] Speaker 01:
Because I'm looking here, I think you raised this in footnote two on page 28 at the end of your reply brief.

[00:07:39] Speaker 01:
I think that might be too late.

[00:07:41] Speaker 00:
Your honor, this court of course has discretion to reject our attempt to preserve that.

[00:07:49] Speaker 00:
We raised it in response to a jurisdictional argument that Bennett presented for the first time in its opposition brief.

[00:08:02] Speaker 00:
We certainly think that the court would be justified and even to respond to a

[00:08:07] Speaker 00:
entertaining mandamus in the circumstance to protect its mandate.

[00:08:13] Speaker 01:
So is it your view that any time the board... Let's set aside the time bar for a minute.

[00:08:23] Speaker 01:
Is it your view that any time the board would issue de-institution, make a de-institution decision based on conduct that led it to think Sankson should be awarded that

[00:08:36] Speaker 01:
that that is automatically shenanigans or just that we have the jurisdiction to review such a deinstitution decision for other reasons?

[00:08:44] Speaker 00:
No, I think the point here is that the board's deinstitution decision in this case is plainly, again, to us it appears to be plainly a sanctions award.

[00:08:57] Speaker 00:
It was done in the

[00:09:01] Speaker 00:
in the context of a remand solely to quantify sanctions or to reconsider the sanctions decision entirely.

[00:09:07] Speaker 00:
So the board had that very narrow scope.

[00:09:11] Speaker 00:
And in its termination order, it appears at least to us to have done this as a sanction.

[00:09:20] Speaker 00:
And because it is a sanction under 1295A4A, it's a final decision of the board and this court has jurisdiction to review at full stop.

[00:09:29] Speaker 01:
What if I disagree with you?

[00:09:30] Speaker 01:
Let's assume hypothetically.

[00:09:32] Speaker 01:
I disagree with you and I actually think that this decision is based on additionally a time bomb.

[00:09:41] Speaker 01:
Then do I have jurisdiction to consider it?

[00:09:48] Speaker 00:
I believe, I mean, yes, in that circumstance, I think it would be a shenanigan.

[00:09:53] Speaker 00:
And so, I think that would be reviewable either under the APA or under 319, as Qoso talked about, or under a writ of mandamus, whether, you know, as part of our request or as a response.

[00:10:09] Speaker 01:
Why do I have jurisdiction, given the Supreme Court's very clear guidance and click to call?

[00:10:18] Speaker 00:
because it's a situation where this court has already affirmed the board's final written decision and so what the board is doing is in effect

[00:10:31] Speaker 00:
completely flooding this court's mandate.

[00:10:34] Speaker 00:
I mean, so imagine that the board had, instead of doing what it did, if you'd sent this back and the board had said, we disagree with the Federal Circuit's ruling on patentability here, and therefore we're going to vacate this final written decision and de-institute the proceeding.

[00:10:50] Speaker 00:
Obviously that would not be allowable.

[00:10:52] Speaker 01:
Clearly that is shenanigans.

[00:10:54] Speaker 00:
Right.

[00:10:55] Speaker 01:
Right.

[00:10:55] Speaker 01:
That's not what happened here.

[00:10:57] Speaker 00:
But this is the same result, Your Honor.

[00:11:01] Speaker 00:
What you end up with is a patent that is in this sort of suspended state of Schrodinger's cat patentability, where maybe it's patentable, maybe it's not.

[00:11:12] Speaker 00:
And what we also have is a judgment of this court that no longer has any force or effect.

[00:11:20] Speaker 01:
I understand what you're saying, but that happens sometimes.

[00:11:24] Speaker 01:
uh... week that go back to where we were before you had it the p t o saying that patent was invalid and then you had a saying they'd they shouldn't have been instituted because there was a time bomb right i understand it's a little different because you've got a pellet review now but there's times when you know if there's a time bar and it was wrongly decided initially you can end up with a scenario with a schrodinger's cat patented your referring to

[00:11:52] Speaker 00:
Yes, but the issue here is that you have an appellate mandate that has to trump the decision of the Patent Trial and Appeal Board.

[00:12:02] Speaker 01:
That's my question, counsel, which is how can our mandate preclude reconsideration of the time bar when we don't have jurisdiction to consider that issue?

[00:12:12] Speaker 01:
We don't.

[00:12:13] Speaker 01:
The case went from the Supreme Court to us and then to the PTO.

[00:12:17] Speaker 01:
The PTO was the first ones to be able to consider that issue.

[00:12:20] Speaker 01:
following the Supreme Court's decision because we can't consider it.

[00:12:28] Speaker 04:
Please respond if there is a response.

[00:12:32] Speaker 00:
Yeah, Your Honor, we believe that the court had a very, imposed a very narrow scope on its remand mandate.

[00:12:41] Speaker 00:
It decided the patentability question finally and then

[00:12:46] Speaker 04:
Remanded of solely for sanctions and the board then purported to use that sanctions decision to reconsider issues that were that were simply outside the scope of Of any remand Would you take another minute or two to discuss this point I am extremely troubled by the the pizza by the board deciding that they're going to vacate and ignore and

[00:13:14] Speaker 04:
a final decision of the federal circuit.

[00:13:17] Speaker 04:
And I appreciate that that's your point.

[00:13:21] Speaker 04:
Is there anything that you might say to elaborate?

[00:13:26] Speaker 00:
Sure, Your Honor.

[00:13:27] Speaker 00:
The reading that the board advances that essentially takes this brief phrase that

[00:13:36] Speaker 00:
you know, that they were allowed to reconsider the sanctions question in its entirety, that essentially converts the Benettu decision entirely into an advisory opinion, and obviously that can't be the case.

[00:13:49] Speaker 00:
This court doesn't need to say when it issues a remand to a lower tribunal, by the way, this is not an advisory opinion.

[00:13:55] Speaker 00:
And, you know, as a result, you know, the board is limited in what it can do on remand, and it doesn't get to re-

[00:14:06] Speaker 00:
re-decide its institution decision once this Court has affirmed the final written decision.

[00:14:12] Speaker 04:
Yes, I must say that's what I always thought was the law.

[00:14:17] Speaker 04:
We'll see where this takes us.

[00:14:19] Speaker 04:
Let's hear from the other side.

[00:14:21] Speaker 00:
Thank you, Your Honor.

[00:14:22] Speaker 04:
Mr. Porter.

[00:14:25] Speaker 02:
Thank you, Your Honor.

[00:14:26] Speaker 02:
May it please the Court, this is Wayne Porter on behalf of defendant regulator Garbs.

[00:14:31] Speaker 04:
Okay, well you see the thing that's troubling me

[00:14:34] Speaker 04:
So what authorizes an administrative agency faced with a final decision of the federal court assigned review of that agency to say, never mind, we don't like what you said, we're going to ignore it, we're going to vacate it?

[00:14:53] Speaker 02:
Well, certainly that's the normal case, but this is not the normal case.

[00:14:58] Speaker 02:
In this situation, the Court of Appeals expressly authorized the board

[00:15:04] Speaker 02:
to reconsider both termination and monetary sanctions as a remedy.

[00:15:11] Speaker 04:
No, we authorized review of sanctions.

[00:15:14] Speaker 04:
We didn't say, by the way, you can ignore our decision.

[00:15:18] Speaker 02:
Well, I think it's implicit to say if you can reconsider termination as a remedy, that that is what that means, especially.

[00:15:27] Speaker 04:
We didn't say that.

[00:15:28] Speaker 04:
We said you can reconsider sanctions.

[00:15:35] Speaker 02:
Well, isn't that right?

[00:15:37] Speaker 02:
Well, it's not so limited.

[00:15:39] Speaker 02:
No, it expressly said that the, you know, the court was, the sanctions order was a, you know, sort of an entire ruling that included both termination and monetary awards.

[00:15:58] Speaker 04:
Well, they were talking about attorneys fees that they cost to say as a sanction, you can vacate the decision of your appellate tribunal.

[00:16:10] Speaker 04:
Well, I think it's hard to say that that is the implied correct reading of that remand.

[00:16:20] Speaker 02:
I would let me put some gloss on this.

[00:16:24] Speaker 02:
You have to remember that this court dealt with this issue before.

[00:16:30] Speaker 02:
The court already knew that the statute of limitations had been violated and, in fact, remanded with instructions to dismiss the IPR.

[00:16:40] Speaker 02:
The only reason that the merits argument came up was because the Court of Appeals was forced to do it, not because the statute of limitations

[00:16:54] Speaker 02:
argument was wrong, but simply because of the subsequent decision and thrive regarding appeal ability.

[00:17:02] Speaker 02:
So the court knew.

[00:17:04] Speaker 03:
Your point is, this is Judge Laurie, your point is that we determined that the board should on remand consider in a single decision

[00:17:22] Speaker 03:
and address the entire motion for sanctions, which requested both termination and compensatory sanctions.

[00:17:31] Speaker 03:
And are you saying that that authorized the board to terminate if it so determined that was appropriate?

[00:17:42] Speaker 02:
Absolutely.

[00:17:45] Speaker 02:
The board did nothing but, in effect, institute an outcome

[00:17:52] Speaker 02:
that this court itself had previously done in Bennett 1.

[00:17:58] Speaker 02:
So there was no off the reservation kind of arguments or action here.

[00:18:05] Speaker 02:
I mean, the court had to know when it remanded.

[00:18:08] Speaker 04:
It has to be off the reservation.

[00:18:09] Speaker 04:
It's never happened.

[00:18:13] Speaker 04:
hundreds of appeals that we've taken from the board for them to say, never mind, we're not bound by what the federal circuit says.

[00:18:26] Speaker 04:
It doesn't matter that they took a particular action on particular patents that were properly taken to us on appeal.

[00:18:40] Speaker 04:
We're going to vacate that.

[00:18:43] Speaker 02:
of all those hundreds of cases that you reference, I'll bet there are none of them like this, where... That I agree with.

[00:18:52] Speaker 02:
Okay.

[00:18:53] Speaker 02:
Well, this is a clear exception to any particular rule, I would say.

[00:18:58] Speaker 02:
How many times has the Supreme Court... Excuse me, I'm sorry.

[00:19:02] Speaker 01:
That's all right.

[00:19:04] Speaker 01:
I just wanted to confirm, just so I remember correctly, in our decision on the merits and looking at the validity of the claim,

[00:19:13] Speaker 01:
We affirmed the board's decision, didn't we?

[00:19:16] Speaker 02:
Yes.

[00:19:17] Speaker 01:
OK.

[00:19:18] Speaker 01:
Thank you.

[00:19:24] Speaker 02:
OK.

[00:19:24] Speaker 02:
I would like to address the appeal from the sanctions role issue and the idea that Atlanta Gas is really appealing a sanctions issue and not a sort of a de-institution decision as such.

[00:19:42] Speaker 02:
What we have here is an analogous situation to Thrive.

[00:19:49] Speaker 02:
In the Thrive opinion, Look to Call argued that it was not really appealing an institution decision, but it was appealing a final written decision, which it was permitted to do.

[00:20:03] Speaker 02:
The Supreme Court shot that down and said,

[00:20:06] Speaker 02:
Click to cause contention remains essentially that the agency should have refused to institute inter-parties review and, as explained, Section 314D makes that contention unreviewable.

[00:20:22] Speaker 02:
So, we have a very analogous situation here where Atlanta Gas is saying, oh, we're not appealing an institution decision, we're appealing a sanctions order.

[00:20:35] Speaker 02:
But I would say for the same reason that the Supreme Court advanced in Thrive, and you can find this in part five of the opinion at page 140 of Supreme Court 1377, I would think the situation is analogous.

[00:20:53] Speaker 03:
But the problem is, if we go your way, we are essentially invalidating a decision

[00:21:06] Speaker 03:
that we have made.

[00:21:07] Speaker 02:
That's correct.

[00:21:11] Speaker 02:
And I think it's proper and just that that occur.

[00:21:15] Speaker 02:
This court recognized that the whole proceeding was in violation of the time bar.

[00:21:22] Speaker 02:
So by remanding it with the authority for the board to consider termination, it enabled the board to correct this injustice.

[00:21:35] Speaker 04:
Let me ask you a question of general law, my understanding of the system, the judicial system.

[00:21:44] Speaker 04:
was that when there is a final decision of a court based on what's brought to them to decide that and then the law later changes that nonetheless when there's a final decision and there's a mandate that that case is over that you can't start all over again because for one reason or another

[00:22:12] Speaker 04:
let's say some unrelated reason, the law has changed.

[00:22:17] Speaker 04:
Isn't that how the system works?

[00:22:22] Speaker 02:
Well, not exactly correct.

[00:22:26] Speaker 02:
There's precedent for if there are parts of a case outstanding, then it's not finally concluded.

[00:22:35] Speaker 02:
It's not entirely concluded.

[00:22:37] Speaker 02:
And I'd cite Marconi Wireless versus US, US1,

[00:22:42] Speaker 02:
at page 47, that's the Supreme Court case in 1947.

[00:22:48] Speaker 02:
Mendenhall versus Barber Green, 26, Fed 3rd, 1573 at pages 1581 and 82.

[00:22:57] Speaker 02:
That's a federal circuit case from 1994.

[00:23:01] Speaker 02:
And I should also add that section 318B,

[00:23:07] Speaker 02:
which requires the director to issue a certificate upon completion of the proceeding, that certificate has not been issued because the proceeding is not final.

[00:23:20] Speaker 04:
Well, all right, so to pursue this to this case, here we have a decision of the Federal Circuit.

[00:23:30] Speaker 04:
And what's happened here is that an administrative agency from whom that decision was in appeal says, never mind, things have changed.

[00:23:43] Speaker 04:
We're going to vacate your decision Federal Circuit because for whatever reason.

[00:23:51] Speaker 04:
That's what's happened here, is it not?

[00:23:56] Speaker 02:
Well, it's more than whatever reason.

[00:23:58] Speaker 02:
The reason is it was remanded by this court with the knowledge that the thing was time barred and that a proper remedy, as that had imposed itself earlier, was to

[00:24:11] Speaker 02:
de-institute the proceeding.

[00:24:13] Speaker 04:
It was remanded with instructions to reconsider sanctions, or not to reconsider because they hadn't been considered in the first place.

[00:24:23] Speaker 04:
That was an explicit remand, was it not?

[00:24:26] Speaker 02:
No, I think what the court said was, on remand, the board may, at its discretion, further consider its order given the outcome of this appeal.

[00:24:41] Speaker 02:
In a few sentences earlier in the opinion, the court acknowledged that the sanctions order addressed both termination and compensatory expenses, and it refused to separate them into separate parts.

[00:24:56] Speaker 04:
But we did say, given the outcome of this appeal, which was our final decision on the merits of the appeal.

[00:25:04] Speaker 02:
Yes.

[00:25:05] Speaker 02:
Well, it seems to me there's an explanation for that.

[00:25:09] Speaker 02:
It's very logical.

[00:25:11] Speaker 02:
Outcome of the appeal is to, because of the Supreme Court's decision in Thrive, not permit a time barred IPR to be deinstituted, which the court had previously ordered.

[00:25:29] Speaker 02:
So the outcome of the appeal is Bennett is going to have its patent invalidated in a proceeding that was unlawfully instituted.

[00:25:41] Speaker 02:
And the court was aware of that.

[00:25:43] Speaker 03:
Counsel, you're saying that we have to make a distinction between authorizing the Patent Office to invalidate a decision of its reviewing court and authorizing the PTO to de-institute the case which it believes should not have been instituted.

[00:26:05] Speaker 02:
If I understand you correctly, I think that's right.

[00:26:08] Speaker 02:
It's like a number of other cases that

[00:26:11] Speaker 02:
have been remanded to the board, and the board made a decision at that point to de-institute the whole proceeding.

[00:26:23] Speaker 03:
And you're saying we authorized it?

[00:26:26] Speaker 03:
Yes.

[00:26:29] Speaker 02:
I think it's an exact literal language of the remand instructions.

[00:26:38] Speaker 02:
Difficult case.

[00:26:40] Speaker 02:
Certainly an unusual case.

[00:26:44] Speaker 04:
So on your theory, the whole proceeding before the PTAB now as if it never occurred and therefore the issues of validity go back to the district court?

[00:27:00] Speaker 02:
In this particular situation, there is no pending district court action.

[00:27:05] Speaker 02:
But yes, let me just say this.

[00:27:10] Speaker 02:
Section 315B on which all of this is based was intended by Congress as a protection for patentees.

[00:27:20] Speaker 02:
So if there's no IPR because the petitioner decided to file too late, that doesn't, you know, their rights are really not effective because they can assert their defenses in a district court action if there is one.

[00:27:37] Speaker 02:
So it's not like

[00:27:40] Speaker 02:
Atlantic gas has lost the ability to contest the patent in the future if necessary.

[00:27:49] Speaker 04:
So I agree with that and that's certainly the idea.

[00:27:55] Speaker 04:
The difference here is that we have a final decision on appeal on the substantive merits of the issue, the patentability issue.

[00:28:13] Speaker 04:
And the Federal Circuit has not vacated its decision.

[00:28:18] Speaker 04:
The administrative agency has undertaken to do that.

[00:28:23] Speaker 04:
And that seems a bit unusual.

[00:28:27] Speaker 02:
Well, I guess so.

[00:28:29] Speaker 02:
But I would also say this.

[00:28:32] Speaker 02:
There are cases that say, in appropriate circumstances, an appellate court

[00:28:38] Speaker 02:
can withdraw its own mandate to prevent injustice.

[00:28:42] Speaker 04:
But that's not what happened.

[00:28:44] Speaker 02:
No, but it's certainly a possible resolution, and it's not unheard of.

[00:28:52] Speaker 04:
I don't recall that that was requested of the Federal Circuit to withdraw its mandate.

[00:28:59] Speaker 02:
No, because I argued in our brief that that's not necessary.

[00:29:06] Speaker 04:
Because the administrative agency

[00:29:08] Speaker 04:
said, never mind, we're not going to pay any attention to what you decided.

[00:29:13] Speaker 02:
No, not because of that.

[00:29:15] Speaker 02:
It's because this court authorized the administrative agency to do that.

[00:29:20] Speaker 01:
Council, this is Judge Stoll.

[00:29:21] Speaker 01:
I'm having a hard time understanding what the basis would be for us to vacate our own decision when we don't have jurisdiction to consider the time bar issue.

[00:29:32] Speaker 01:
I agree.

[00:29:34] Speaker 04:
OK.

[00:29:35] Speaker 02:
May I finish?

[00:29:36] Speaker 04:
No, please continue.

[00:29:37] Speaker 04:
Please finish your talk.

[00:29:38] Speaker 02:
Thank you.

[00:29:39] Speaker 02:
If I understand it correctly, the court at this point does not have jurisdiction to review the institution order.

[00:29:55] Speaker 02:
And therefore, under Section 314D, should dismiss the appeal.

[00:30:01] Speaker 01:
I understand that.

[00:30:02] Speaker 01:
My problem is that you were having a colloquy with my colleague Judge Newman about how

[00:30:09] Speaker 01:
Um, we could vacate our own decision.

[00:30:12] Speaker 01:
And I was saying, I don't understand how we could do that given that we don't have jurisdiction to consider the time bar issue.

[00:30:23] Speaker 02:
Well, I guess it's unnecessary is the way I would put it.

[00:30:26] Speaker 02:
Once the, once the case is properly back to the board, I don't think the board has to act within the sanctions.

[00:30:34] Speaker 02:
And, but anyway, you know, there's.

[00:30:39] Speaker 02:
The Supreme Court has held that the board has the inherent authority to institute or de-institute a proceeding.

[00:30:48] Speaker 02:
There's no requirement that the court proceed with it in IPR.

[00:30:53] Speaker 02:
And any institution decisions that are made are simply just not available for, they're final, not available for review.

[00:31:03] Speaker 02:
I mean, you could argue that what happened here is the

[00:31:09] Speaker 02:
The board made a deinstitution decision, and under the reading of the statute, as it's been interpreted, that is a final and non-appealable order.

[00:31:24] Speaker 01:
OK, thank you, Mr. Porter.

[00:31:26] Speaker 04:
Thank you.

[00:31:27] Speaker 04:
Any more questions for Mr. Porter?

[00:31:29] Speaker 00:
No.

[00:31:31] Speaker 04:
All right, Mr. Mitchell, you have your rebuttal time.

[00:31:34] Speaker 00:
Thank you, Your Honor.

[00:31:35] Speaker 00:
First, Judge Newman, you're exactly right.

[00:31:37] Speaker 00:
The sanctions issue is completely collateral to the merits here, and the merits were fully decided.

[00:31:42] Speaker 00:
This court's decision, affirming a board decision, could never be final because the board could always award sanctions if the board's reading were correct here.

[00:31:50] Speaker 00:
And that just isn't the law.

[00:31:52] Speaker 00:
This court is a court of review, and it gets to review the board's decisions.

[00:31:57] Speaker 00:
It's not the other way around.

[00:31:58] Speaker 00:
Second, I think it's plain that Bennett has now conceded that what the board did is not consistent with this court's mandate.

[00:32:07] Speaker 00:
It's asking this court to withdraw its own mandate so that it can conform that mandate to the decision of the board.

[00:32:13] Speaker 00:
That, again, is getting the law precisely backwards.

[00:32:17] Speaker 00:
That turns the board into a court of review over this court.

[00:32:20] Speaker 00:
And third, you know, there are two possible readings of the remand letting the board reconsider sanctions.

[00:32:25] Speaker 00:
The first reading, which is the reading that AGLC advances, is that you can reconsider whether sanctions are appropriate at all.

[00:32:31] Speaker 00:
The outcome of the appeal, which the board was supposed to consider, vindicated AGLC's challenge to the 29 patent.

[00:32:38] Speaker 00:
It's an unpatentable patent.

[00:32:40] Speaker 00:
The reading that the board and Bennett advance is that

[00:32:44] Speaker 00:
that the board could reconsider whether it wants to follow this court's decision.

[00:32:48] Speaker 00:
That would render this court's decision advisory, as I said in our main argument, that just can't be a correct reading.

[00:32:57] Speaker 00:
Thank you, Your Honors.

[00:32:58] Speaker 00:
If there are no further questions, we'll ask the court to reverse.

[00:33:01] Speaker 04:
Any more questions for Mr. Mitchell?

[00:33:03] Speaker 00:
No.

[00:33:04] Speaker 00:
No.

[00:33:05] Speaker 04:
Okay.

[00:33:05] Speaker 04:
Thank you.

[00:33:06] Speaker 04:
Thanks to both counsel.

[00:33:07] Speaker 04:
The case is taken under submission.

[00:33:09] Speaker 03:
Thank you.