[00:00:08] Speaker 00:
Good morning.

[00:00:09] Speaker 00:
May it please the court?

[00:00:11] Speaker 00:
Claim 18 is invalid for two different reasons.

[00:00:15] Speaker 00:
One is issue preclusion or collateral estoppel based on the other IPR proceedings.

[00:00:21] Speaker 00:
There are no substantial differences between claim 18 and the other claims that were invalidated.

[00:00:26] Speaker 00:
And second, the board's finding that claim one for the same patent, the 816 patent, is unpatentable.

[00:00:34] Speaker 00:
Hammond has not appealed that.

[00:00:36] Speaker 00:
That's inconsistent with finding claim 18 to be patentable based on the very same prior art.

[00:00:43] Speaker 00:
Now, these three Hammond patents that we're looking at, they are directed to essentially the same invention.

[00:00:50] Speaker 00:
You can look at the claims.

[00:00:52] Speaker 00:
There really aren't any substantial differences between the ones that are at issue here, claims 14 and 19.

[00:00:58] Speaker 00:
and the other claims that the board invalidated.

[00:01:00] Speaker 05:
Can I ask you why is it that the difference between claim 14 and the claim that was found invalidated, meaning claim 18, excuse me, is distributed software applications.

[00:01:13] Speaker 05:
One claim has a plurality of servers, the other one has

[00:01:16] Speaker 05:
I think one or more servers but think different seems to be distributing software applications and what is your Reason for why it is that that is doesn't present a new patability determination The reason is the board already decided if you look at the appendix that page is 82 and 83 that exact issue was addressed by the board and

[00:01:42] Speaker 00:
And as the court knows, the claims do not have to be identical.

[00:01:46] Speaker 00:
What have to be the same are the issues.

[00:01:48] Speaker 00:
And so that issue of a plurality of servers with distributed applications, it was addressed.

[00:01:55] Speaker 00:
The board found from Gilmore and Creamer that it was known, obvious, desirable to, quote, host each of the applications on separate servers, each executing its own application.

[00:02:06] Speaker 05:
As I understand it, it's your position that, since that was not appealed, that that is an admission.

[00:02:15] Speaker 05:
Then it becomes an admission for our consideration that there's no material patentably distinct or, I forget what the exact issue is, whether it presents a new question of patentability.

[00:02:28] Speaker 05:
That we have to take that as something that's an admitted fact?

[00:02:31] Speaker 00:
It's a finding by the board.

[00:02:33] Speaker 00:
Yes, it is.

[00:02:34] Speaker 00:
And it has not been appealed.

[00:02:36] Speaker 04:
And well, a finding by the board, which hasn't been appealed and so therefore is an admission.

[00:02:42] Speaker 04:
I mean, that's the argument, right?

[00:02:44] Speaker 04:
They can't dispute it at this point.

[00:02:46] Speaker 00:
That's right.

[00:02:47] Speaker 00:
It can't be disputed.

[00:02:49] Speaker 00:
It would be law of the case.

[00:02:51] Speaker 00:
For our purposes it's a finding by the board that shows there is not a new issue of patentability raised by the plurality of servers because that issue has already been decided.

[00:03:02] Speaker 00:
As I said the identicality has to be with the issues and are there any new issues presented here and there has to be some explanation how this plurality of servers executing applications on two of them would change the invalidity analysis and

[00:03:19] Speaker 00:
That question has been answered by the board already.

[00:03:22] Speaker 00:
So there is no new issue.

[00:03:24] Speaker 00:
And based on collateral estoppel and the only argument that Hammond has raised, the claim 18 should be held invalid.

[00:03:33] Speaker 04:
Can I, just a step back question.

[00:03:35] Speaker 04:
I had a little trouble finding an answer to this.

[00:03:38] Speaker 04:
So exactly what, how do we express in our law, because it's a question of federal circuit law on this point, whether or not the issue is identical to the one decided in the first action?

[00:03:49] Speaker 04:
We have some materially distinct what happened.

[00:03:52] Speaker 04:
Tell me what you think that legal test is in particular.

[00:03:55] Speaker 00:
Well, there are several ways that this court has articulated it.

[00:03:58] Speaker 00:
If you go back to the Boren's case, which is one of the fundamental cases, I believe, from the Court of Claims, it says the differences between the adjudicated and unadjudicated claims relate only to things known in the art.

[00:04:13] Speaker 00:
That's clearly what we have.

[00:04:15] Speaker 00:
That would be one way to express it.

[00:04:17] Speaker 00:
Another way is in the sovereign in Ohio Willow Wood.

[00:04:23] Speaker 00:
They said the patent owner has to explain how this additional limitation would change the invalidity analysis.

[00:04:28] Speaker 00:
It doesn't change the analysis.

[00:04:30] Speaker 04:
OK, so let me ask you a different question, which is I generally think of collateral estoppel, and I think it is, a question of law.

[00:04:36] Speaker 04:
But is what we're talking about now potentially, and I'm not saying they raised fact issues in this case, but I just want to understand my own thinking about it.

[00:04:44] Speaker 04:
What I could not find anywhere in any Federal Circuit case was a clear articulation of whether these kinds of analyses are questions of law, questions of fact, mixed questions.

[00:04:54] Speaker 04:
They seem to me to be like mixed questions like claim construction or obviousness,

[00:04:58] Speaker 04:
It's a question of law, but there could be, and maybe there aren't in this case, but there could be facts that need evidence or expert testimony on just how different these things really are.

[00:05:11] Speaker 00:
And whether the differences were known in the prior article.

[00:05:13] Speaker 04:
Right.

[00:05:13] Speaker 04:
Does that sound like the right articulation?

[00:05:16] Speaker 00:
If that sounds right, collateral estoppel or issue preclusion should be decided as a question of law.

[00:05:21] Speaker 00:
If you have those types of factual questions, I don't think collateral estoppel is appropriate.

[00:05:26] Speaker 00:
And if you go back to cases like- Well, you say you don't think it's appropriate.

[00:05:30] Speaker 04:
Wait.

[00:05:31] Speaker 04:
You don't think it's appropriate for us to do an appeal if there were these disputed facts.

[00:05:34] Speaker 04:
It could still be appropriate.

[00:05:35] Speaker 04:
It's just that a fact finder would first resolve the facts.

[00:05:38] Speaker 00:
That would be correct.

[00:05:38] Speaker 00:
Yes, Your Honor.

[00:05:39] Speaker 04:
OK.

[00:05:40] Speaker 00:
But if you go back to cases like Bourns and Westwood, one of the ways they express it is to go back, in an obviousness inquiry, look at the Graham inquiries.

[00:05:49] Speaker 00:
Are there any new Graham factual issues that would be raised by the claims that are being challenged?

[00:05:55] Speaker 00:
And here, that's clearly not the case.

[00:05:57] Speaker 03:
So you're saying if you have to do a gram factor analysis, then you're outside the world of collateral estoppel.

[00:06:04] Speaker 03:
You cannot apply collateral estoppel because you no longer have identity of issues?

[00:06:08] Speaker 00:
I would agree with that, Your Honor.

[00:06:09] Speaker 00:
I think that's a fair reading of those older cases as to whether the issues are identical.

[00:06:15] Speaker 00:
But you're saying here,

[00:06:18] Speaker 03:
For claim 18, everything is essentially fully baked.

[00:06:22] Speaker 00:
It is.

[00:06:22] Speaker 03:
In the sense that the claims are, I don't know, let's just say 90% identical.

[00:06:29] Speaker 03:
And then the final 10%, we only need to go back and look at the board decision for the answer to that 10%.

[00:06:36] Speaker 03:
If you do, yes.

[00:06:37] Speaker 04:
Well, we don't have to go back and look at the board decision for the answer.

[00:06:40] Speaker 04:
We only have to look at their failure to appeal to the board decision, which is an admission

[00:06:45] Speaker 04:
that that was, in fact, well known, which is what the board expressly said.

[00:06:48] Speaker 00:
That's exactly right.

[00:06:49] Speaker 00:
And the board actually says that on those.

[00:06:52] Speaker 04:
But you wouldn't even have to agree it was well known.

[00:06:54] Speaker 04:
And it's not up to us to go through that analysis again.

[00:06:57] Speaker 00:
That's true.

[00:06:59] Speaker 04:
Is that accurate?

[00:06:59] Speaker 00:
Yes.

[00:07:00] Speaker 00:
And if you read what the board says about that as well, at appendix 83, the board said that Hammond did not contest that distributing software applications across multiple servers was well known.

[00:07:12] Speaker 03:
What about the other claims in this case?

[00:07:15] Speaker 03:
You're not relying on a collateral estoppel theory to go after claims 14, 15 through 17, and 19.

[00:07:24] Speaker 03:
Is that right?

[00:07:24] Speaker 00:
That's right.

[00:07:25] Speaker 00:
We think there's an easier path there, at least with claim 14, because claim 18 depends on claim 14.

[00:07:34] Speaker 03:
And then I guess the question is, are you allowed to,

[00:07:39] Speaker 03:
at this stage of the game, use collateral estoppel as the claim 18, assuming you're right about the claim 18, to use that as a springboard to go migrating into other claims and enjoy the benefits of collateral estoppel as to the claim scope of claim 18 to then apply other doctrines

[00:07:59] Speaker 03:
in addition to collateral estoppel, to try to knock out all these other claims.

[00:08:05] Speaker 03:
And we are living under SAS.

[00:08:10] Speaker 03:
And SAS talks about certain restrictions as to all of us as players in this game, whether it's the courts or the parties, as to what they can do going beyond the strictures of the petition

[00:08:27] Speaker 03:
So I guess the question is, given that you didn't even respond to any SAS-like argument made in the red brief, in your gray brief, what is your response now today about strictures of SAS that we must be sensitive to?

[00:08:47] Speaker 00:
Well, fundamentally, our position is based on collateral estoppel with respect to claim 18.

[00:08:52] Speaker 00:
And once that's determined, whether you say it's collateral estoppel as to claim 14.

[00:08:56] Speaker 04:
You didn't, though.

[00:08:57] Speaker 04:
That's the problem.

[00:08:58] Speaker 04:
You didn't make the collateral estoppel as a waivable argument.

[00:09:02] Speaker 04:
You did not argue before either the director or us.

[00:09:05] Speaker 04:
that claim 14 should be held invalid for collateral estoppel?

[00:09:09] Speaker 00:
No, we rely on collateral estoppel with respect to claim 18 and then the established legal principle that an independent claim that relies on an invalid claim for obviousness is invalid.

[00:09:21] Speaker 05:
Are you aware of any cases in the IPR context where that doctrine has been applied, even post-SAS or pre-SAS?

[00:09:32] Speaker 00:
I'm not.

[00:09:34] Speaker 00:
Callaway Golf is the case we cited.

[00:09:36] Speaker 00:
And if you go back to Wormco in those cases, I believe they come out of the district court.

[00:09:40] Speaker 00:
And so I don't know if that has been applied in the IPR context, precisely the way it is.

[00:09:45] Speaker 03:
I guess it would be unreasonable, you would agree, that if you had never challenged claim 14 in your IPR petition for you to now ask us to invalidate claim 14 in view of

[00:10:01] Speaker 03:
if we would agree with you as to the unpatentability of claim 18.

[00:10:05] Speaker 03:
I would agree that's unreasonable.

[00:10:06] Speaker 03:
I think that's very reasonable.

[00:10:08] Speaker 03:
OK.

[00:10:08] Speaker 03:
But I guess, so your argument must be because claim 14, in your view, was put into play, even if it was for a completely different basis in theory, it doesn't matter.

[00:10:19] Speaker 03:
You should be able to

[00:10:23] Speaker 03:
at this point in time, apply other doctrines in combination with collateral stock laws to claim 18 in order to make claim 14 go away?

[00:10:32] Speaker 00:
That's correct.

[00:10:32] Speaker 00:
I think that legal principle on.

[00:10:35] Speaker 03:
But what about SAS?

[00:10:36] Speaker 03:
I mean, in the end, we can only go so far, can't we, as to what we can allow you to do in terms of trying to knock out claims?

[00:10:49] Speaker 00:
Yes.

[00:10:51] Speaker 00:
collateral estoppel wasn't available to us in the petition.

[00:10:54] Speaker 00:
It's only available at this point because... And that's okay.

[00:10:59] Speaker 04:
B&B hardware says you can raise collateral estoppel.

[00:11:02] Speaker 04:
So the 483 was decided in April of 2021.

[00:11:06] Speaker 04:
60 days later, it wasn't appealed.

[00:11:08] Speaker 04:
It became collateral estoppel effect June 21st, 2021.

[00:11:12] Speaker 04:
So you couldn't raise it in the petition.

[00:11:14] Speaker 04:
And that's why you are allowed under B&B hardware, the Supreme Court decision, to raise it now in front of us.

[00:11:20] Speaker 04:
And why we're open to it with regard to claim 18, but you didn't make the argument with regard to claim 14.

[00:11:26] Speaker 04:
And that's the problem.

[00:11:27] Speaker 04:
You didn't make a collateral estoppel argument with regard to 14, 15, 16, 17, or 19.

[00:11:33] Speaker 04:
You could have in your brief.

[00:11:35] Speaker 03:
That's right.

[00:11:35] Speaker 04:
You didn't.

[00:11:36] Speaker 04:
We didn't, because I don't know what to do with that.

[00:11:38] Speaker 03:
Yeah.

[00:11:39] Speaker 03:
Why should we let you do Petition 2.0 at this point?

[00:11:43] Speaker 03:
I'm sorry.

[00:11:43] Speaker 04:
My clerk just said June 14th of 2021.

[00:11:45] Speaker 04:
Don't want to get my dates wrong since I was so brazen as to put them out there.

[00:11:49] Speaker 04:
Go ahead.

[00:11:49] Speaker 03:
So getting back to my question, why don't we allow you to do Petition 2.0 now at the appellate stage?

[00:11:57] Speaker 00:
I'd say because we're allowed to raise collateral estoppel now as to claim 18, which we could not before.

[00:12:02] Speaker 00:
But you did.

[00:12:03] Speaker 00:
We did.

[00:12:03] Speaker 04:
And you could win on claim 18, but still lose on 14, because you waived collateral estoppel as to 14.

[00:12:09] Speaker 04:
Can I ask you a hypothetical?

[00:12:10] Speaker 05:
OK, let's assume collateral estoppel.

[00:12:12] Speaker 05:
Can you please answer my question?

[00:12:13] Speaker 04:
Oh, wait.

[00:12:13] Speaker 04:
Answer her question.

[00:12:14] Speaker 05:
Because he didn't.

[00:12:15] Speaker 05:
Sorry.

[00:12:16] Speaker 00:
Well, I don't think there's any violation of SAS, because we could not put this argument as to claim 14 in our petition.

[00:12:23] Speaker 04:
But why didn't you waive it on appeal?

[00:12:26] Speaker 04:
You didn't raise it.

[00:12:26] Speaker 04:
You didn't write the collateral estoppel argument on appeal.

[00:12:28] Speaker 00:
No.

[00:12:29] Speaker 00:
We raised the Callaway Gulf principle that an independent claim that relies on an invalid dependent claim is also invalid.

[00:12:37] Speaker 04:
And you could have raised that in your petition.

[00:12:43] Speaker 04:
That's been elsewhere.

[00:12:44] Speaker 00:
Not based on the fact that claim 18 was invalid for collateral estoppel.

[00:12:48] Speaker 00:
That would have been a prior argument.

[00:12:52] Speaker 00:
We went the other direction.

[00:12:53] Speaker 05:
I'm sorry.

[00:12:54] Speaker 05:
I want to interrupt.

[00:12:55] Speaker 05:
I was just going to ask you, setting the collateral stop loop argument aside, let's say we had a case where there was different prior art that rendered a dependent claim invalid.

[00:13:06] Speaker 05:
But the independent claim, because of the way it's presented in the petition, is not invalid.

[00:13:12] Speaker 05:
Just setting the whole collateral stop loop issue aside.

[00:13:15] Speaker 05:
Right.

[00:13:15] Speaker 05:
Does SAS prevent us from relying on the Callaway Gulf principle?

[00:13:22] Speaker 05:
to go ahead and say, well, because the petitioner proved that the dependent claim is invalid, we're going to say that's good enough and also hold the independent claim invalid?

[00:13:36] Speaker 00:
That's a close question.

[00:13:37] Speaker 00:
I think that there might be some SAS issues there.

[00:13:44] Speaker 00:
Since we couldn't raise collateral estoppel earlier, I think it doesn't take it into a different place on that.

[00:13:51] Speaker 00:
I'd also say that if you read the red brief, they haven't challenged our position on claims 14 and the other dependent claims.

[00:13:59] Speaker 00:
They are silent as to that, and only re-raise the plurality of application servers issue.

[00:14:06] Speaker 00:
They haven't made this argument that we cannot adopt.

[00:14:10] Speaker 03:
Red brief 23, they rebut your Calaway thoughts.

[00:14:15] Speaker 03:
reliance by saying you have it backwards in terms of trying to knock out claim 18 and then through claim 18 go backwards to knock out claim 14.

[00:14:24] Speaker 00:
Yes, but ultimately their position rests on the difference in the claim, which is the plurality of application servers.

[00:14:31] Speaker 00:
And I think once that issue was resolved.

[00:14:32] Speaker 04:
Well, when you say ultimately arise the difference, no, they cite Soroka Dental.

[00:14:35] Speaker 04:
And they specifically cite the portion quoting Sass saying, and they expressly say in the text of page 23 of the red brief, that you didn't raise this in your petition.

[00:14:47] Speaker 00:
And no, we did not.

[00:14:49] Speaker 00:
You're right.

[00:14:50] Speaker 00:
But since the collateral estoppel issue as to claim 18 only arose afterwards, that's when we made this argument.

[00:14:57] Speaker 04:
So can I just ask about consequences?

[00:15:00] Speaker 04:
So I mean, it seems to me that if we were to invalidate claim 18 for all the reasons you've argued,

[00:15:08] Speaker 04:
I mean, claim 14 is effectively dead at that point anyway, even if we can't render it so.

[00:15:13] Speaker 04:
I mean, it seems like it would be an antitrust violation to assert it at that point in time.

[00:15:18] Speaker 00:
I agree that it would be for practical purposes.

[00:15:20] Speaker 00:
Is there a parallel litigation here?

[00:15:22] Speaker 00:
There is a district court case that is still.

[00:15:25] Speaker 03:
So hypothetically, what would happen to that district court litigation if we would reverse on claim 18 but no other claim?

[00:15:32] Speaker 03:
Would it go forward on 14, 15, 16, 17, and 19?

[00:15:37] Speaker 00:
If I were in the plaintiff's position, I would not.

[00:15:40] Speaker 00:
But that's not for us to decide.

[00:15:41] Speaker 04:
Well, you wouldn't on 14.

[00:15:43] Speaker 04:
You wouldn't go forward on 14.

[00:15:44] Speaker 04:
But 15, 16, 17, and 19, I mean, the Patent Office never addressed whether the dependent limitations in those claims did or did not create some distinction, right?

[00:15:57] Speaker 00:
Not those specific claims.

[00:15:59] Speaker 00:
The limitations in those claims were addressed by the board as well.

[00:16:02] Speaker 00:
I think we put that in our parallel dependent claim.

[00:16:05] Speaker 00:
And showed all the other parallel dependent claims had also been effectively addressed.

[00:16:12] Speaker 04:
OK, well, we used all of your time.

[00:16:14] Speaker 04:
How about we hear from the other side and we'll restore your rebuttal time.

[00:16:21] Speaker 04:
Please tell me how to say your name.

[00:16:23] Speaker 01:
Groucho Szynski.

[00:16:24] Speaker 04:
Because I've been calling you grunk in my chambers.

[00:16:26] Speaker 01:
Grunk?

[00:16:26] Speaker 04:
You know, you've been giving the benefit of a really good tight end.

[00:16:29] Speaker 01:
This has happened before to me, Your Honor.

[00:16:32] Speaker 04:
OK, go ahead.

[00:16:32] Speaker 04:
I'll try to say it again so I get it.

[00:16:34] Speaker 01:
May it please the court, Tim Groucho Szynski on behalf of Hammond Development International.

[00:16:40] Speaker 01:
Your honors, as you're aware, Google doesn't dispute the failed to me is burden at the PTED with respect to claim 14 and it doesn't dispute the PTED's finding with respect to that claim on the grounds presented in the petition.

[00:16:53] Speaker 01:
They were the master of their own petition.

[00:16:55] Speaker 01:
They chose what they wanted to go with for all of these claims, and they should be stuck with that.

[00:17:00] Speaker 01:
What they're effectively asking this court to do is give them a redo, or a do-over, and rewrite, although indirectly, the grounds that they actually sought.

[00:17:08] Speaker 04:
Well, why don't we just jump to claim 18?

[00:17:10] Speaker 01:
Yes, Your Honor.

[00:17:10] Speaker 04:
Because to me, it seems like it's the hardest case for you.

[00:17:13] Speaker 04:
So why don't you start there?

[00:17:15] Speaker 01:
So, Your Honor, they have an obligation with respect to Claim 18 to, as the Court is aware, meet the collateral estoppel elements.

[00:17:22] Speaker 01:
There's two points I want to make with respect to that.

[00:17:24] Speaker 01:
The first one is they failed to even articulate what their burden is, let alone show how they've met it.

[00:17:30] Speaker 01:
And part of that stems from the fact that they applied the wrong framework, the domino approach that this Court has said you cannot do, by focusing only on the leftover elements, so to speak, as opposed to going through all of the elements.

[00:17:41] Speaker 03:
Let's assume that they did go through all the elements in their claim chart and everything else that they They did do a claim as a whole approach and yes So go ahead and get to this real substance then sure the problem

[00:17:57] Speaker 01:
So the substance of the problem, and the first point I want to make, is one, they don't even say what their burden is.

[00:18:03] Speaker 01:
Your Honor Judge Moore, you brought up B&B hardware.

[00:18:06] Speaker 01:
Well, B&B hardware says that when you have different burdens, so you have a burden of persuasion, I'm sorry, preponderance, rather, at the P tab, and then you have a clear convincing evidence standard at district court, you can't use a lower burden to apply collateral stopple in a higher burden environment.

[00:18:20] Speaker 01:
Well, so here,

[00:18:22] Speaker 01:
We have Google trying to invalidate claims for the first time, raising collateral estoppel.

[00:18:26] Speaker 01:
And they're not even explaining to this court what their evidentiary burden is.

[00:18:30] Speaker 04:
But it was the same.

[00:18:31] Speaker 04:
They're using a prior IPR decision than an IPR decision.

[00:18:35] Speaker 04:
There's no difference in burdens.

[00:18:36] Speaker 01:
But they're applying collateral estoppel.

[00:18:38] Speaker 01:
So had they applied collateral estoppel at the IPR context, which obviously they couldn't have since it didn't exist, it would have been a preponderance standard.

[00:18:45] Speaker 01:
But if this goes back, let's say, to the district court, and they were to argue collateral estoppel, there would be a different standard that would be applicable at the district court for that collateral estoppel analysis.

[00:18:55] Speaker 05:
But this isn't in district court.

[00:18:56] Speaker 05:
This is in an IPR.

[00:18:58] Speaker 01:
I understand that.

[00:18:59] Speaker 01:
But this is an appeal where the first time this is being raised, and it has never been raised before.

[00:19:03] Speaker 04:
It could have been raised before.

[00:19:04] Speaker 04:
I just went through the dates.

[00:19:06] Speaker 01:
I understand.

[00:19:07] Speaker 01:
The second point I want to make with respect to the burden, though, Your Honor, is the wrong framework.

[00:19:10] Speaker 01:
And so here what we do is we isolate that one, the crest for processing limitation.

[00:19:15] Speaker 01:
We pointed out in the claim charts, Judge Chen, that there are differences in these claims.

[00:19:20] Speaker 01:
Google, in their opening brief, in their blue brief, they devoted one paragraph to the differences.

[00:19:27] Speaker 01:
They never do an element by element analysis.

[00:19:30] Speaker 01:
They never account for even the fact that there are differences.

[00:19:32] Speaker 01:
It's decided to say that the only difference is a one or more servers polar alias servers.

[00:19:36] Speaker 01:
Respectfully, that's not the only difference between these claims.

[00:19:40] Speaker 05:
Which difference did you focus on or any in your red group?

[00:19:44] Speaker 01:
So in Claim 14, Your Honor, it is the first server, first application, second server, second application invitations.

[00:19:51] Speaker 05:
And that's Claims 14 and 18, right?

[00:19:53] Speaker 01:
Yes, Your Honor.

[00:19:53] Speaker 05:
Claim 18 is the only one we're considering for issue of preclusion, collateral stop.

[00:19:57] Speaker 01:
That is correct, Your Honor.

[00:19:59] Speaker 05:
OK, so what other difference did you focus on?

[00:20:01] Speaker 01:
That is the sole difference that we focused on.

[00:20:03] Speaker 05:
Well, then that's where you should be focusing.

[00:20:04] Speaker 01:
I understood, Your Honor.

[00:20:06] Speaker 01:
And so the point is Google did not meet its burden of explaining why that difference does not materially alter the question of patentability, a burden that lies squarely with them.

[00:20:17] Speaker 03:
OK, so you're making, I think, a procedural argument.

[00:20:20] Speaker 03:
And you're saying that their argument was too underdeveloped in their blue brief.

[00:20:26] Speaker 03:
But let's assume for the moment that we're not going to think about this case in terms of whether the blue brief was too short and concise and pithy versus having written 10 pages on this subject.

[00:20:45] Speaker 03:
Let's just get down to the actual

[00:20:49] Speaker 03:
We did go back and say, this board decision, underlying board decision, already made all the findings that are necessary as to this question about server one, server two at pages A81 to 83.

[00:21:05] Speaker 03:
And so assuming that's the case, then what is blocking us from applying collateral estoppel as to claim 18?

[00:21:19] Speaker 01:
So there are two points I want to make with respect to that, Your Honor.

[00:21:22] Speaker 01:
One is the legal framework doesn't just say that if it's known in the art, then you're done.

[00:21:28] Speaker 01:
The Westwood Chemical case and the other cases that are relied upon by Google say that known in the art isn't good enough.

[00:21:35] Speaker 01:
That doesn't get you across the finish line in terms of meeting your burden.

[00:21:38] Speaker 01:
You have to go past that, do a gram factor analysis, and Westwood Chemical explicitly says that if it's known in the art, in that scenario,

[00:21:46] Speaker 01:
Then you have to look to and analyze the importance of that element in the context of the combination and the invention.

[00:21:54] Speaker 03:
Right.

[00:21:54] Speaker 03:
And here at A82, the underlying board decision said, we agree with experts so-and-so that it would have been obvious to perform this claimed invention in the context of having two servers with each server executing its own application.

[00:22:14] Speaker 03:
And so in that sense, it doesn't take a rocket scientist to pluck that finding that you didn't appeal and see how it maps up to what is the missing limitation with respect to claim 14, claim 18 in this case, compared to the previously litigated and invalidated claims to see how there

[00:22:38] Speaker 01:
Is a conclusion that whatever minor difference here is it's it's not a material one Respectfully your honor I think that there is a difference between what the board found and what claim 14 actually requires and if you look at this board's finding was made in the context of claims seven and eight of the 816 pad which I think I Recognized what the board said, but I think it's informative to look at what they were targeting when they made this decision Okay

[00:23:04] Speaker 01:
And so if you look at claims seven and eight of the 816 patent, and this is at APPX 123, claim seven is the plurality of servers element, okay?

[00:23:16] Speaker 01:
But what I want to focus the board on, or I'm sorry, your honors on, is claim eight.

[00:23:21] Speaker 01:
So claim eight is talking about distributing voice processing software program across the plurality of servers.

[00:23:28] Speaker 01:
OK, so if you look at claim one, from which claim eight depends, there's two parts to claim one I want to bring to the court's attention.

[00:23:35] Speaker 01:
There's the voice processing software program, but there's also separately recited an application.

[00:23:41] Speaker 01:
So claim one requires an application, and it requires this program.

[00:23:45] Speaker 01:
Depending claim eight, which is what the board was relying upon this distributed architecture language about, is focusing on distributing the voice processing software program across the servers.

[00:23:57] Speaker 01:
I'm bringing that back to the context of claim 14.

[00:24:00] Speaker 01:
Claim 14 is not talking about taking a single program and distributing it across multiple servers.

[00:24:08] Speaker 01:
In fact, dependent claim 15 actually says that.

[00:24:13] Speaker 01:
Dependent claim 15 talks about how you're just going to distribute the voice processing software.

[00:24:20] Speaker 01:
Claim 14, though, is talking about something different.

[00:24:22] Speaker 01:
It's actually a different architecture.

[00:24:24] Speaker 01:
It's not talking about distributing a software application across multiple servers.

[00:24:28] Speaker 01:
It's talking about putting a first application on one server and a second application on a different server.

[00:24:36] Speaker 01:
I respectfully submit there is a difference there.

[00:24:38] Speaker 01:
The difference is taking a single program and putting instances of it across multiple servers.

[00:24:44] Speaker 05:
What about claim nine and other parts of this specification that say that the voice processing program is actually at least three applications?

[00:24:55] Speaker 01:
It can be, Your Honor, yes.

[00:24:56] Speaker 01:
And so in that instance, you would distribute that.

[00:24:59] Speaker 01:
I understand the distributed arguments mean you're going to take an instance of this, and you're going to distribute it across servers.

[00:25:03] Speaker 01:
So that way, if let's say one goes down, or there's a myriad of technical reasons.

[00:25:06] Speaker 05:
I'm just wondering whether it's just different words.

[00:25:09] Speaker 05:
One, you're referring to software program, but the specification says that that's multiple applications.

[00:25:15] Speaker 05:
So I'm just trying to understand.

[00:25:17] Speaker 05:
It sounds to me like.

[00:25:19] Speaker 05:
You're just saying because they're different words, they mean something different.

[00:25:22] Speaker 05:
And I'm not sure that's necessarily so in light of the specification.

[00:25:26] Speaker 01:
I was not trying to say that.

[00:25:27] Speaker 01:
What I was trying to get at, Your Honor, was that I think there's a difference between claiming an application and then in a dependent claim saying that application is going to be distributed versus claiming a specific application on one server and a different application on a different server.

[00:25:44] Speaker 01:
And that's the technical difference that I'm trying to point out to this panel in terms of why I don't believe, even if we take Google's other failures and we sweep them under a rug, I still think when you get to the heart of this issue, Judge Chen, there is a difference.

[00:26:00] Speaker 01:
And that difference was never addressed by the P-Tab because they didn't have to address it.

[00:26:06] Speaker 04:
OK, I'm going to ask a question I'm sure you can point me to the exact right place.

[00:26:11] Speaker 04:
I'm having a little trouble following your argument about this difference, and I'll certainly listen to the argument going after this.

[00:26:17] Speaker 04:
Where in your brief exactly can I find that argument so I can use it as a resource when I'm trying to understand?

[00:26:24] Speaker 01:
So, Your Honor, this was made to be here.

[00:26:28] Speaker 01:
In Google's opening brief,

[00:26:29] Speaker 01:
This was never raised.

[00:26:31] Speaker 01:
They never identified the difference.

[00:26:32] Speaker 01:
We point out the difference throughout our brief in terms of claim 14 has these different claim elements that were not decided.

[00:26:40] Speaker 01:
It kind of runs throughout the entirety of the brief, Your Honor.

[00:26:43] Speaker 01:
I feel like I'm slightly hamstrung given the fact that in their reply brief, for the first time now, they're pinpointing 8283 and hammering it home, when typically,

[00:26:53] Speaker 01:
When this issue is raised for the first time, I have an opportunity to respond.

[00:26:58] Speaker 01:
When it comes up for the first time in their reply or their grade brief, I'm deprived of that opportunity.

[00:27:03] Speaker 04:
Okay, well, but on page 14 of their brief, they explain that the board sign of clarity disclosed the plurality of application servers, a finding Hammond has not appealed, and they cite 81 to 84.

[00:27:17] Speaker 04:
Are you saying that that sentence, that whole paragraph actually, on page 14 of their brief didn't put you on notice that you should make this argument in your red brief?

[00:27:27] Speaker 01:
Correct, Your Honor.

[00:27:28] Speaker 01:
What about the plurality of servers?

[00:27:29] Speaker 01:
I'm sorry, Your Honor.

[00:27:30] Speaker 05:
It's the same thing, page 30.

[00:27:31] Speaker 05:
On page 30, where they have their issue of preclusion argument, they make it clear what the differences are that are in the claim language.

[00:27:38] Speaker 01:
The sole difference that they argue here, Your Honor, is the plurality versus singular.

[00:27:43] Speaker 05:
That is not my argument.

[00:27:45] Speaker 05:
Yeah, it's on page 30.

[00:27:45] Speaker 01:
Correct.

[00:27:46] Speaker 01:
I have it right here.

[00:27:46] Speaker 05:
But you said that they never identified.

[00:27:49] Speaker 01:
That's right.

[00:27:51] Speaker 01:
There's a difference between a plurality of servers, Your Honor.

[00:27:53] Speaker 01:
I am not disputing, and we're not challenging the board's finding about a plurality of servers.

[00:27:58] Speaker 01:
That is not the difference, though, that I'm pointing out.

[00:28:00] Speaker 01:
The difference that's being pointed out is that you are now taking not a distributed architecture, but you're specifically assigning a single application to server one and a different application to server two.

[00:28:11] Speaker 03:
What about towards the bottom of page 882?

[00:28:15] Speaker 03:
where the board says, we agree with petitioner and credit Mr. Lipov's testimony that an ordinarily skilled artisan, quote, would have found it obvious to host each of, end quote, Gilmore's applications, quote, on separate servers, each executing its own application.

[00:28:35] Speaker 03:
Yes, sir.

[00:28:38] Speaker 03:
Why isn't that particular finding directly applicable to the claim limitations we're talking about here for claim 14, claim 18?

[00:28:50] Speaker 01:
Because once again, Your Honor, what this is describing here, and in the context of the claims that this was being relied upon, what this is describing is that you're going to take Gilmore disclosed applications, you're going to take those and you're going to put instances of those on each server.

[00:29:05] Speaker 01:
as opposed to putting different applications on different servers, which serves a different purpose.

[00:29:10] Speaker 03:
Well, it says here separate servers, each executing its own application.

[00:29:15] Speaker 03:
Doesn't that sound to you like what we're finding here is that we've got multiple servers and with each server having its own application being executed on that server?

[00:29:27] Speaker 01:
Yes, but those applications, your honor, are the same.

[00:29:30] Speaker 01:
Let me give you an example.

[00:29:31] Speaker 01:
If claim 14 were to say, we would require a first server with a first application and a second server with the first application.

[00:29:39] Speaker 01:
Okay, I think that is what the board was getting at with this statement.

[00:29:44] Speaker 01:
And that's not what Claim 14 says.

[00:29:46] Speaker 01:
And there actually is discussion in the patent specification in column A that specifically talks about the load balancing and how it makes sense to have different applications be on different servers as opposed to having the same application running on concurrent servers.

[00:30:02] Speaker 01:
So I know, sorry.

[00:30:04] Speaker 03:
I was just thinking, before you go, because you're running out of time, what about claim 18?

[00:30:10] Speaker 03:
What if we were to reverse on claim 18?

[00:30:12] Speaker 03:
Then why wouldn't, by operation of law, claim 14 be invalid?

[00:30:19] Speaker 01:
Because I think that Google has a burden to me with respect to all of these claims.

[00:30:23] Speaker 01:
And they haven't even attempted to do that.

[00:30:24] Speaker 03:
I'm really more asking you in the abstract.

[00:30:28] Speaker 03:
If claim 18 is invalid, isn't claim 14

[00:30:33] Speaker 01:
unenforceable I would agree that's that's that's this panel's finding I think I would agree as a matter of law but I would disagree that that would have the same impact with respect to claims 15 16 17 or the other dependence that they didn't even attempt so are you suggesting that if we were to invalidate claim 18

[00:30:52] Speaker 03:
We should also invalidate claim 14.

[00:30:55] Speaker 01:
Well, I'm suggesting you shouldn't invalidate any of them.

[00:30:58] Speaker 03:
I understand that.

[00:30:58] Speaker 03:
But what if we're in a world where our hand is forced?

[00:31:03] Speaker 03:
We have no choice.

[00:31:04] Speaker 03:
Claim 18 has to be rendered unpatentable in view of collateral installable.

[00:31:10] Speaker 01:
So I do not believe that.

[00:31:13] Speaker 01:
They have done what they need to do, meaning Google, in terms of challenging claim 14 successfully.

[00:31:19] Speaker 01:
I think that they failed to even appeal the actual findings, which they should be stuck with.

[00:31:24] Speaker 01:
They made a decision.

[00:31:25] Speaker 03:
That's getting back to their theory for invalidity based on their petition to claim 14.

[00:31:33] Speaker 03:
But now I'm talking about a different question, which is the application of collateral estoppel to claim 18.

[00:31:40] Speaker 03:
which renders Claim 18 unpatentable.

[00:31:43] Speaker 03:
In the face of Claim 18's unpatentability, is there a reason why we should stop there?

[00:31:50] Speaker 03:
rather than also reaching a conclusion that independent claim 14 necessarily must also be unpatentable in view of claim 18's unpatentability.

[00:32:00] Speaker 03:
So this hypothetical is based on a premise that you lose on claim 18.

[00:32:06] Speaker 01:
As I understand the law of collateral estoppel, I think legally in order to find in their favor on claim 18, it would necessitate a finding that everything in claim 14 is also met.

[00:32:16] Speaker 01:
The problem I have with it, though, is that

[00:32:18] Speaker 01:
They're asking this panel to essentially sweep under the rug claim 14, not really focus on it, and instead do the domino approach of only focusing on the isolated element.

[00:32:28] Speaker 01:
That's why you have such short drift given in one paragraph to the differences.

[00:32:32] Speaker 04:
I guess I just really need a clean answer to Judge Chen's question.

[00:32:37] Speaker 04:
If we do hold claim 18 invalid,

[00:32:43] Speaker 04:
Is it your view that we should also hold claim 14 invalid, or is there some separate reason why we shouldn't hold claim 14 invalid?

[00:32:54] Speaker 01:
Aside from, listen, I've given reasons.

[00:32:56] Speaker 01:
I don't want to go over them.

[00:32:57] Speaker 01:
I think the answer is legally, if you find 18 under collateral stopple, 14 has to go with it.

[00:33:01] Speaker 01:
OK, that's how I understand the law.

[00:33:04] Speaker 01:
The only other point I wanted to make, I understand I ran past just here.

[00:33:06] Speaker 04:
No, I'm going to let you go on, so I'm going to restore his time.

[00:33:08] Speaker 04:
But just really clear.

[00:33:10] Speaker 04:
So if we find claim 18 valid under collateral stopple,

[00:33:12] Speaker 04:
You're OK with us deciding 14 is also valid for collateral estoppel.

[00:33:17] Speaker 04:
You don't have separate arguments right now that you want to make with regard to 14, when that theory.

[00:33:24] Speaker 04:
No, Your Honor.

[00:33:25] Speaker 04:
OK.

[00:33:25] Speaker 04:
But 15, I understand that you have very separate arguments for 15, 16, 17, and 19.

[00:33:30] Speaker 04:
Yes, Your Honor.

[00:33:31] Speaker 04:
Yes.

[00:33:32] Speaker 04:
And so you're not saying if we find 18 invalid for Claude Ousoppel and also impute that to 14, which you've exceeded, acceded in allowing us to do, you do not believe that that likewise applies 15, 16, 17, and 19.

[00:33:46] Speaker 01:
I agree with you.

[00:33:48] Speaker 02:
Can you just briefly explain why that is so for 15 through 17 and 19?

[00:33:53] Speaker 01:
I mean, they haven't even attempted to meet their burden with respect to those claims.

[00:33:57] Speaker 01:
So it would be, I mean, I can go back through it, but it would be the burden argument.

[00:34:00] Speaker 01:
It should fall squarely with them.

[00:34:01] Speaker 01:
They've not even raised it, a waiver.

[00:34:06] Speaker 05:
What about the fact that the board said, we are not going to consider the arguments with respect to those dependent claims, instead, because claim 14 is

[00:34:17] Speaker 05:
Not proven invalid.

[00:34:20] Speaker 05:
We're not going to go into any more detail Should we at least remand for the board to consider those claims?

[00:34:27] Speaker 01:
Under the under the grounds presented in the petition yes So just so I understand the hypothetical we're gonna be killing some claims via collateral stoppable But then remanding for others that they failed to consider is that correct the board didn't consider?

[00:34:46] Speaker 01:
I suppose that's an option.

[00:34:48] Speaker 01:
I'm not going to tell this panel that that's not an option.

[00:34:50] Speaker 01:
I believe it probably is an option.

[00:34:52] Speaker 04:
Why wouldn't you tell this panel it's not an option?

[00:34:53] Speaker 04:
Did they ask for it in their blue brief?

[00:34:55] Speaker 01:
No, no, you're right.

[00:34:56] Speaker 04:
I apologize.

[00:34:57] Speaker 01:
No, no.

[00:34:58] Speaker 01:
The point I'm trying to make is, well, first of all, let me just say this, Judge Still.

[00:35:01] Speaker 01:
Both parties have agreed on one thing here, which is that remand is not necessary or appropriate in this case.

[00:35:06] Speaker 01:
So let me just start there.

[00:35:08] Speaker 01:
OK, and they haven't challenged those.

[00:35:10] Speaker 04:
Yeah, but lots of parties agree something's not ambiguous.

[00:35:12] Speaker 04:
You say it's this, he says it's that, which are the exact opposites.

[00:35:16] Speaker 04:
So sometimes the fact that you agree remand is not necessary doesn't mean it's not necessary.

[00:35:21] Speaker 01:
Understood.

[00:35:21] Speaker 01:
The second point that I wanted to make to this panel, I'll try and be brief with it.

[00:35:26] Speaker 01:
Google tries to say this case is so analogous to the sovereign software case, Westwood Chemical, Ohio Willow Wood, all these projects.

[00:35:34] Speaker 01:
Not a single one of those cases involved a situation where you had adjudicated claim versus adjudicated claim.

[00:35:40] Speaker 01:
Those cases involved an adjudicated claim and then trying to apply collateral estoppel to an unadjudicated claim.

[00:35:48] Speaker 01:
Google has had not one but two tries already to invalidate these claims.

[00:35:52] Speaker 01:
One of the district court, they argued indefinite, they were unsuccessful, and then the one we're here on today.

[00:35:57] Speaker 01:
And so they lost.

[00:35:59] Speaker 01:
They're not even challenging that finding before this panel.

[00:36:02] Speaker 01:
And so I would just submit that this is not the same situation as Sovereign, Westwood, Bourns, and all the other cases they rely upon, because they had their shot, and they failed.

[00:36:15] Speaker 01:
And they shouldn't be just given a do-over to try and redo it.

[00:36:18] Speaker 01:
And so for that reason, Your Honor, we respectfully request that this court should affirm the PTAS findings, and we should be allowed to proceed.

[00:36:27] Speaker 04:
OK.

[00:36:33] Speaker 00:
To counsel's last point, I think the max linear case did invalidate a claim for collateral estoppel.

[00:36:40] Speaker 04:
Precess.

[00:36:41] Speaker 04:
Max linear is decided three months before SAS.

[00:36:43] Speaker 00:
That's true.

[00:36:46] Speaker 00:
I think we have an answer, though, on claim 14 from counsel.

[00:36:49] Speaker 04:
Boy, wasn't that a gift.

[00:36:50] Speaker 00:
And if you look at, well, I think it's consistent with their position on page 23 of their red brief where the premise of their argument is that

[00:37:00] Speaker 00:
Not claim 14 stands or falls with claim 18.

[00:37:03] Speaker 00:
They say if claim 18.

[00:37:04] Speaker 00:
And I think that's consistent with their argument.

[00:37:07] Speaker 03:
Can you respond to their argument about what the board was really communicating at A82 about what the board there was finding to be obvious?

[00:37:17] Speaker 03:
And that the other side is telling us, well, in view of claims seven and eight, what really the expert and the board were all really talking about was the distribution of one application across multiple servers.

[00:37:31] Speaker 03:
as opposed to each server being devoted to its own unique application.

[00:37:39] Speaker 00:
That may have been ultimately the issue that was being addressed.

[00:37:42] Speaker 00:
That's not what the board said.

[00:37:43] Speaker 00:
I think Your Honor quoted the portion of it that says each application server running its application.

[00:37:51] Speaker 00:
I think that answers the question.

[00:37:52] Speaker 00:
They found that that was known and would have been obvious.

[00:37:56] Speaker 00:
So I think that answers it fully.

[00:37:59] Speaker 00:
Going back to the SAS question, I don't have another answer for you, but I will point you to Justice Alito's concurrence in the Closote case, where he said that the challenge to a dependent claim necessarily challenges the independent claim on the same grounds.

[00:38:17] Speaker 04:
And just returning to that Claim 14, really, no matter what we did with it at the Federal Circuit, it was like a dead man walking, right?

[00:38:26] Speaker 04:
I mean, you just can't.

[00:38:28] Speaker 04:
I don't know how any patentee could ever enforce it if Claim 18 were struck down.

[00:38:32] Speaker 00:
Yes, Your Honor, I agree with that.

[00:38:34] Speaker 00:
We're asking the court to finish the job.

[00:38:38] Speaker 04:
Wow, capital punishment at the Federal Circuit.

[00:38:40] Speaker 00:
The Claim 14 is based on everything that's in front of you.

[00:38:44] Speaker 00:
It has to be in balance.

[00:38:46] Speaker 04:
Thank you, Mr. James.

[00:38:47] Speaker 04:
I thank both counsels.

[00:38:48] Speaker 04:
This is a difficult case, and I appreciate your arguments.

[00:38:51] Speaker 04:
It's taken under submission.