[00:00:00] Speaker 01:
The next case for argument is 21-2112, wireless protocol versus ECT mobile.

[00:00:09] Speaker 01:
Council will read it in your favor.

[00:00:11] Speaker 01:
Mr. Naruzzi?

[00:00:12] Speaker 02:
Yes, Your Honor, thank you.

[00:00:16] Speaker 02:
and may it please the court.

[00:00:18] Speaker 02:
This case returns before the Federal Circuit for the second time.

[00:00:23] Speaker 02:
It has been pending since 2016, and it was remanded by this court after a prior erroneous decision by the PTAP on a narrow issue, which was the application of a corrected claim construction.

[00:00:37] Speaker 02:
Rather than confine its decision in the proceedings,

[00:00:41] Speaker 02:
to that narrow issue, the board expended 21 months on remand and addressed and allowed and ultimately relied upon an entirely new theory of patentability that was not only never presented in the original petition, but was never raised in any shape whatsoever in the original trial proceeding prior to the first appeal.

[00:01:05] Speaker 02:
All aspects of that conduct by the board are erroneous.

[00:01:10] Speaker 02:
First of all, Your Honors, the length of the proceeding on remand, 21 months, is far beyond a reasonable period.

[00:01:20] Speaker 00:
Would you mind getting to the second issue?

[00:01:22] Speaker 00:
That I find actually

[00:01:25] Speaker 00:
quite substantial, not so much the timing question.

[00:01:30] Speaker 00:
Yes, Your Honor.

[00:01:31] Speaker 00:
Would be happy.

[00:01:31] Speaker 04:
To me, it's the only issue that you've got going for you.

[00:01:34] Speaker 04:
So just spend all your time on that.

[00:01:36] Speaker 02:
OK.

[00:01:36] Speaker 02:
Well, thank you for your guidance.

[00:01:38] Speaker 02:
And I'm happy to focus on the second issue, which is whether the board's decision to allow

[00:01:44] Speaker 02:
a new theory for the first time on remand was proper.

[00:01:48] Speaker 02:
Of course, it was not, Your Honors.

[00:01:52] Speaker 02:
It was not proper under SAS Institute.

[00:01:55] Speaker 02:
It was not proper under congressional statute that enables inter-parties review.

[00:02:00] Speaker 00:
And it was not proper under the- When you say SAS Institute, you mean Supreme Court SAS Institute, not CAFC SAS Institute.

[00:02:08] Speaker 02:
Yes, Your Honor.

[00:02:08] Speaker 02:
That's correct.

[00:02:09] Speaker 00:
Maybe pushes in the other direction.

[00:02:11] Speaker 02:
And I'd be happy to address that as well.

[00:02:14] Speaker 02:
So of course, the Supreme Court's decision in SAS Institute tells us that it is the petition that controls.

[00:02:21] Speaker 02:
And this court has numerous precedents that are consistent with this delineation that arises as well in this case between

[00:02:30] Speaker 02:
what new sort of arguments or articulations fall within the zone of proper or appropriate once an inter-party's review has been instituted, and which ones fall within the zone of improper and outside of the scope of the board's ability to permit.

[00:02:49] Speaker 02:
And the delineation is simply between new theories post-institution

[00:02:55] Speaker 02:
versus elaborations of existing theories and evidence and argument.

[00:03:00] Speaker 02:
And the cases that define those delineations, for instance, Your Honors, are Henny Penny, 938 F3D at 1331.

[00:03:10] Speaker 02:
So let me organize this way.

[00:03:13] Speaker 02:
examples of cases that stand for the proposition that new theories post-institution are not allowed.

[00:03:20] Speaker 02:
Henny Penny, 938 F3 at 1331.

[00:03:23] Speaker 02:
In that case, the additional reliance by the petitioner on a teaching from one of the prior art references that was already relied on in the petition, that was not permitted because

[00:03:37] Speaker 04:
I think we're familiar with the case law.

[00:03:40] Speaker 04:
You've cited some cases.

[00:03:41] Speaker 04:
The other side cited some other cases.

[00:03:44] Speaker 04:
Can we talk about the meaning of SAS, the Federal Circuit opinion, where this court remanded that IPR back to the board for consideration of a claim construction that the petitioner had never advanced?

[00:04:04] Speaker 04:
Yes, Ron.

[00:04:06] Speaker 04:
Seemingly, inherently, in that remand order.

[00:04:10] Speaker 04:
was an expectation that the petitioner would be able to say something on remand that went outside the four corners of what the petitioner said in its petition.

[00:04:22] Speaker 04:
The petition was clearly directed at a specific conception of graphic representations of data flows.

[00:04:31] Speaker 04:
And then the board at the tail end of the IPR

[00:04:35] Speaker 04:
came up with a different, significantly different understanding of that claim term, a narrower claim term that the petition didn't contemplate.

[00:04:46] Speaker 04:
The petitioner did not foresee.

[00:04:48] Speaker 04:
And so the petitioner never directed any unpatentability challenge to that.

[00:04:54] Speaker 04:
a new different narrower claim construction.

[00:04:57] Speaker 04:
And yet in our opinion, we remanded that case to give the petitioner a shot at addressing the patentability, unpatentability of the claims in light of that narrower claim.

[00:05:11] Speaker 04:
So wouldn't you have to agree that in SAS there was an understanding that there was going to be some kind of

[00:05:20] Speaker 04:
unpatentability theory advanced by the petitioner on remand that would be different than the petitioner's theory presented originally in the petition.

[00:05:32] Speaker 02:
No, Your Honor, I wouldn't agree with that.

[00:05:34] Speaker 02:
And let me address SAS at two levels.

[00:05:36] Speaker 02:
First of all, SAS is, for all the reasons that you described, because of the factual circumstances that you described, inapplicable at all to this case.

[00:05:44] Speaker 02:
Because in fact, TCT conceded, and it is in the record that the construction.

[00:05:51] Speaker 02:
Well, just stay with me on SAS.

[00:05:52] Speaker 04:
I'm just trying to think through the meaning and consequence of SAS.

[00:05:56] Speaker 04:
So why is my summary of SAS wrong?

[00:06:00] Speaker 04:
That's what I need to hear from you.

[00:06:01] Speaker 02:
I wouldn't say that your summary of SAS is wrong, Your Honor.

[00:06:05] Speaker 02:
I would say that the conclusion that you asked me whether I would concede should be drawn as to what happens permissively on remand from SAS is not consistent with the board's own views in its standard operating procedure 9, and also not consistent with the- Well, we forget about it.

[00:06:24] Speaker 04:
something called standard operating procedure nine at the P tab.

[00:06:29] Speaker 04:
We're looking at the Federal Circuit opinion in SAS, where we said, this is the claim construction.

[00:06:38] Speaker 04:
Now go back and determine patentability, unpatentability under this claim construction, which is a different claim construction than the one the petitioner proposed in his petition.

[00:06:49] Speaker 04:
Why isn't that opening the door and commanding the board to consider a theory of unpatentability that's different from the unpatentability theory advanced in the petition?

[00:07:03] Speaker 02:
Because, Your Honor, the petitioner

[00:07:06] Speaker 02:
can address the new construction based on the evidence and theories that were in its petition.

[00:07:15] Speaker 02:
And the burden lies with the petitioner to correctly identify the constructions on which its theory relies from the outset in the petition.

[00:07:23] Speaker 02:
That's in the regulation.

[00:07:24] Speaker 02:
So the petitioner with its petition, just as it chooses the prior art that it wants to rely on, just as it chooses the theories of combination and motivation and such that it relies on.

[00:07:36] Speaker 01:
So your answer is that in your petition you have to

[00:07:42] Speaker 01:
conceive of what the likely possibilities are for the claim construction here, and then put forth a theory with respect to different claim constructions and anticipate this?

[00:07:54] Speaker 01:
And if that's what you're saying, then why would we allow, maybe that's true, but why would we allow Judge Chen's question, a remand in SAS when there was a new construction?

[00:08:06] Speaker 01:
What was the purpose of the remand?

[00:08:08] Speaker 01:
Could you just repeat what you already said in your petition?

[00:08:11] Speaker 02:
No, Your Honor, SAS arises out of a particular circumstance where the construction at issue was a new one created by the board in its final decision, as to which neither party had notice or an opportunity to address.

[00:08:24] Speaker 02:
And therefore, it was completely unbeknownst to the parties.

[00:08:27] Speaker 02:
And in that circumstance, there should be a right, and there is a right, for both parties

[00:08:33] Speaker 02:
to the extent it implicates them, to say, well, now in light of this construction, let me respond, board.

[00:08:38] Speaker 02:
Let me tell you why I think we can still prevail on the record in light of your new construction.

[00:08:45] Speaker 02:
That is very consistent with this court's cases.

[00:08:48] Speaker 01:
But in that circumstance, so now I think I'm

[00:08:51] Speaker 01:
hearing a little bit of a change in your position.

[00:08:53] Speaker 01:
In that circumstance, if the original assertion is obvious, but it doesn't detail whether it's obvious to modify, that in that circumstance, at least, the petitioner would be allowed to present an alternative theory for the first time of obvious to modify?

[00:09:12] Speaker 01:
No, Your Honor.

[00:09:13] Speaker 01:
Well, what could he do then that he

[00:09:15] Speaker 01:
What could he do they hadn't already done before he saw the new claim constructed?

[00:09:21] Speaker 02:
So Your Honor, there are plenty of circumstances where a claim construction, as stated, does not necessarily resolve the party's dispute against one party on its face.

[00:09:35] Speaker 02:
And so in those circumstances, for example, in this posture, the petitioner could say, well, notwithstanding that construction,

[00:09:44] Speaker 02:
that has now been issued by the board or the Federal Circuit.

[00:09:47] Speaker 02:
Here are my original arguments and evidence that I presented at the trial below, and we still prevail.

[00:09:52] Speaker 04:
So early, you had said the phrase, on this record.

[00:09:57] Speaker 04:
And so your understanding of SAS is that any permissible remand in SAS would have been relegated to just the evidence in the record

[00:10:12] Speaker 04:
to remake its case for unpatentability under the new claim construction.

[00:10:17] Speaker 04:
Is that your argument?

[00:10:20] Speaker 02:
I'd like to make clear that SAS does not address this issue.

[00:10:24] Speaker 04:
I know.

[00:10:26] Speaker 04:
But what we're trying to tease out together right now is

[00:10:30] Speaker 04:
What is the meaning and consequence of SAS?

[00:10:34] Speaker 04:
So what is your understanding of what could have happened in SAS?

[00:10:38] Speaker 04:
And why is that your understanding of what could have happened in SAS?

[00:10:43] Speaker 02:
I think our understanding of what could have happened in SAS is exactly the subject of what we detail in our briefing.

[00:10:50] Speaker 02:
And that is that the board on remand is allowed and probably should.

[00:10:58] Speaker 02:
receive briefing from both parties as to the impact of the construction on the proceedings and whether a party prevails or not in light of the new construction based on the arguments and evidence that exist and elaborations on the argument and evidence without venturing into the realm of new theories.

[00:11:21] Speaker 02:
And new theory certainly includes modifications to the obviousness combination or the prior art that were never proposed before.

[00:11:31] Speaker 02:
And so that is our understanding of the circumstances implicated by SAS.

[00:11:36] Speaker 04:
OK.

[00:11:36] Speaker 04:
And then the question is, if in SAS there was necessarily an adjustment to the original prima facie case of unpackability,

[00:11:50] Speaker 04:
Because the original prima facie case of unpatentability rested on believing that the claim meant X. And now the claim means Y. So now, obviously, there's something that's got to change in the petitioner's prima facie case of unpatentability in order to redirect its attack away from X and towards Y.

[00:12:16] Speaker 02:
Your Honor, I don't agree with that.

[00:12:18] Speaker 02:
So if we look to the context, for example, of district court proceedings, which are much more open-ended, right?

[00:12:23] Speaker 02:
I mean, inter-party's review is a much more tightly bounded process that is meant to be expeditious, that is meant to be limited in its scope, that has a lot of prerequisites on the petitioner.

[00:12:33] Speaker 02:
But even in the context of district court proceedings, constructions that are reached in the case can be fatal and dispositive.

[00:12:42] Speaker 02:
And it is not the case that a party- And that didn't happen in SAS, though.

[00:12:49] Speaker 02:
SAS Federal Circuit opinion.

[00:12:50] Speaker 04:
The claim construction, which was different from everything the petitioner premised its theory on,

[00:12:58] Speaker 04:
was changed, and the petitioners still got to fight another day.

[00:13:02] Speaker 02:
But it did not get to present a new theory.

[00:13:04] Speaker 02:
That never happened in SAS.

[00:13:07] Speaker 02:
And secondly, the reason that it went back on remand rather than this court disposing of it right here on appeal was that this court does not take upon itself to decide what the consequence of a new construction is on the evidence of record.

[00:13:20] Speaker 02:
It sends it back to the board.

[00:13:22] Speaker 02:
But that does not necessarily mean, and it certainly should not mean in our view,

[00:13:26] Speaker 02:
that then the proceeding opens up a new to essentially a new petition.

[00:13:30] Speaker 02:
This court doesn't reach the factual determination of the impact of the construction on the existing record.

[00:13:36] Speaker 02:
But that is not the same as saying that a new construction allows for the creation of an entirely new record with new theories.

[00:13:43] Speaker 02:
That's not consistent with the structure of the inner party's review in our view, Your Honor.

[00:13:48] Speaker 00:
Do you happen to know what happened when SAS finally returned to the board?

[00:13:54] Speaker 02:
Yes, Your Honor.

[00:13:55] Speaker 02:
I believe, to the best of my recollection, what happened is that they presented their arguments, SAS did, on the existing record.

[00:14:03] Speaker 02:
And both sides argued about the construction.

[00:14:07] Speaker 02:
No one even put in a new declaration from an expert.

[00:14:10] Speaker 02:
I don't think they even asked for that.

[00:14:12] Speaker 02:
And so that case was resolved even with far less exchange of new argument and evidence than what we say is permissible.

[00:14:23] Speaker 00:
I have a note to myself or a note to me that says that SAS did submit a supplemental declaration when it finally got before the board.

[00:14:34] Speaker 00:
I believe that I'm not a new theory and whatever the term theory means, which is a big problem, the uncertainty of what that term might mean, but that there was some kind of new submission, not just lawyer argument.

[00:14:49] Speaker 02:
It may be the case that they submitted some very limited evidence on the existing theory that they had very tightly cabined to what they said before.

[00:14:58] Speaker 02:
But to the extent I misspoke, I apologize.

[00:15:01] Speaker 02:
So I'm happy to clarify.

[00:15:03] Speaker 00:
But can I gather the case settled before a ruling?

[00:15:06] Speaker 02:
Yes.

[00:15:07] Speaker 01:
Can I just?

[00:15:08] Speaker 01:
To summarize in my mind, when you started, the heft of your argument is based on the Supreme Court's decision in SAS and the language about how the petitioner controls the petition.

[00:15:20] Speaker 01:
And the petition is what we're doing here, right?

[00:15:24] Speaker 02:
I wouldn't say that's the heft of our case.

[00:15:27] Speaker 02:
I would say that is one of several pillars of the overall proposition, which is that there is a bounded scope to Interparties Review proceedings as to the theories.

[00:15:37] Speaker 02:
And on the one hand, you can elaborate later on as to the theories that you presented.

[00:15:42] Speaker 02:
But on the other hand, you cannot present new theories.

[00:15:45] Speaker 02:
New grounds of unpatentability or new motivations.

[00:15:48] Speaker 01:
You're right.

[00:15:49] Speaker 01:
There are a lot of cases, and we have impressions about what they're saying.

[00:15:52] Speaker 01:
And they all arise under weird, different circumstances, like new here, new in reply, et cetera.

[00:15:57] Speaker 01:
But in Ariosa, which is one of the cases cited by one of you, we remanded.

[00:16:03] Speaker 01:
It was a different circumstance.

[00:16:04] Speaker 01:
It was about the reply brief.

[00:16:06] Speaker 01:
And we said, we do not direct the board to take new evidence or even to accept new briefing.

[00:16:12] Speaker 01:
the board may control its own proceedings consistent with its governing statutes, regulations, and practice.

[00:16:18] Speaker 01:
And then it cites 42.5A, which says only the board can determine the proper course of conduct in a proceeding.

[00:16:27] Speaker 01:
So notwithstanding what some of our cases have said under certain circumstances, why

[00:16:33] Speaker 01:
Can we not conclude that the board has enormous discretion here?

[00:16:40] Speaker 01:
We're not talking about new pieces of prior art that never showed up before.

[00:16:43] Speaker 01:
We're talking about changes, some shape modification of what may have been an earlier construction.

[00:16:50] Speaker 01:
Why isn't the real answer to this?

[00:16:52] Speaker 01:
The board gets to decide.

[00:16:54] Speaker 01:
That's left to the board.

[00:16:55] Speaker 01:
For heaven's sakes, the board decides whether to institute, and we can't even review that.

[00:16:59] Speaker 01:
So why isn't this more appropriately viewed as something that we leave to the board?

[00:17:04] Speaker 02:
Well, Your Honor, you can certainly review this.

[00:17:06] Speaker 02:
So the institution decision.

[00:17:09] Speaker 01:
No, I didn't mean to suggest it's not reviewable.

[00:17:11] Speaker 02:
I understand.

[00:17:12] Speaker 02:
My point is that institution circumstance is a very specific exception.

[00:17:15] Speaker 02:
I wouldn't take that to extend as some general rule.

[00:17:18] Speaker 01:
Yeah, but the board controls the trial.

[00:17:20] Speaker 01:
The board is a controller of that.

[00:17:22] Speaker 01:
And we give enormous deference to jury trials.

[00:17:25] Speaker 01:
We give some deference in many circumstances to district courts.

[00:17:29] Speaker 01:
So why isn't this in a slightly different context?

[00:17:33] Speaker 01:
But why isn't this Ariosa language sufficient?

[00:17:36] Speaker 01:
And we said something in our earlier opinion in this case, too, which seemingly left arguably some discretion to the board to make these determinations about what to do on remand.

[00:17:51] Speaker 01:
What it considers to be new and different, what it considers to be permissible given the change in circumstances,

[00:17:58] Speaker 01:
Why isn't that just a matter?

[00:18:01] Speaker 01:
And the standard review is abuse of discretion, right?

[00:18:04] Speaker 02:
Yes, Your Honor.

[00:18:05] Speaker 02:
And so I believe the answer to your question is that the regulations that govern the board's discretion and the scope of its authority for the context of inter-party's review require that the petition state with particularity the bases for its invalidity theories, siding to specific portions of the evidence and explaining with evidence

[00:18:27] Speaker 02:
how it is that the claims are rendered unpatentable.

[00:18:30] Speaker 02:
And that doesn't mean that post-institution, the petitioner cannot say one word other than what's in their petition.

[00:18:38] Speaker 02:
We're not saying that.

[00:18:39] Speaker 02:
But it certainly does mean that when you present a petition and the petition says, here's how the claim limitation is met, there's a packet standby state, and that meets the claim limitation.

[00:18:50] Speaker 02:
And you don't say anything about a modification.

[00:18:52] Speaker 02:
And then we demonstrate that, well, your theory is premised on a wrong claim construction.

[00:18:57] Speaker 02:
And the other side comes back and says, no problem.

[00:18:59] Speaker 02:
Let's just change the prior art to now match the claim construction.

[00:19:03] Speaker 02:
That's outside the scope of the level of particularity that's required by the petition.

[00:19:07] Speaker 02:
And therefore, the board does not have the discretion to allow this kind of supplementation to the petition with new arguments and theories of that nature that go beyond anything the petition disclosed at the outset.

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

[00:19:20] Speaker 01:
Well, we still have some ability from the other side.

[00:19:23] Speaker 03:
Thank you, Your Honors.

[00:19:25] Speaker 03:
May it please the court?

[00:19:26] Speaker 03:
My name is Jacob Snodgrass with PV Law on behalf of Al-Pewleys.

[00:19:30] Speaker 03:
This court in SAS versus complements off stated, what concerns us is not that the board adopted a construction in its final written decision, as the board is free to do, but that the board changed theories in midstream.

[00:19:44] Speaker 03:
That this court remanded that case to the board is indicative that this court countenances the board considering new theories.

[00:19:53] Speaker 04:
Do you think in SAS,

[00:19:55] Speaker 04:
what you just quoted, that it would have been permissible for the petitioner on remand to completely scrap the references it had been relying on all along and find new references in light of the new claim construction and build a new unpatentability ground from ground up.

[00:20:16] Speaker 03:
Your honor, I don't believe that's what the petitioner attempted to do in SAS.

[00:20:20] Speaker 03:
That's not what we're attempting to do.

[00:20:22] Speaker 03:
So your honor, sure.

[00:20:23] Speaker 04:
You could answer the question.

[00:20:24] Speaker 04:
That'd be great.

[00:20:25] Speaker 03:
Your honor, if the patent owner was provided notice and an opportunity to be heard, the patent owner had notice and an opportunity to be heard.

[00:20:35] Speaker 03:
If that was a new set of references,

[00:20:38] Speaker 03:
then the patent owner would not have been able to complain as to lack of a notice and opportunity to be heard.

[00:20:43] Speaker 04:
So in your mind, the petitioner could be completely divorced from the original petition, essentially filing a completely brand new petition on your name?

[00:20:53] Speaker 03:
Your Honor.

[00:20:54] Speaker 03:
It depends on where that shift occurs in the proceedings.

[00:20:58] Speaker 03:
So long as it occurs before a patent owner is provided notice and an opportunity to be heard, then the patent owner is not able to complain that they lacked notice and an opportunity to be heard.

[00:21:09] Speaker 03:
If there's some other structure in a statute or regulation.

[00:21:13] Speaker 00:
Let me just try to separate things.

[00:21:15] Speaker 00:
The Rovalma opinion is an indication of this, right?

[00:21:19] Speaker 00:
Yes, Your Honor.

[00:21:19] Speaker 00:
That has two separate sections that address two separate

[00:21:23] Speaker 00:
constraints on the board.

[00:21:26] Speaker 00:
One is the APA notice and opportunity to be heard.

[00:21:32] Speaker 00:
Separate section is a set of constraints

[00:21:35] Speaker 00:
the Supreme Court, SAS Institute, 312 of the statute, regulations 42.104, 42.3, are not notice and opportunity constraints.

[00:21:46] Speaker 00:
They are constraints of the IPR process.

[00:21:50] Speaker 00:
SAS did the notice and opportunity one, and that's all you're talking about here.

[00:21:55] Speaker 00:
I think what we've been exploring here

[00:21:57] Speaker 00:
is, what are the boundaries of the other set of constraints?

[00:22:03] Speaker 00:
Not the APA notice and opportunity ones, but the boundaries on the IPR proceeding, which, as a starting point, require the petition to do everything, not to change later.

[00:22:16] Speaker 00:
And I think, Judge, what we've been exploring a lot here, but what Judge Chen, in particular, was asking was,

[00:22:25] Speaker 00:
That first set of constraints, not the APA notice and opportunity constraints, the boundary constraints, would that allow the board to say, go ahead with new references, a completely new theory that says, OK, we're not talking about disclosure anymore.

[00:22:45] Speaker 00:
We're now talking about combinations.

[00:22:48] Speaker 00:
How broad does that go?

[00:22:49] Speaker 00:
Where is the line?

[00:22:51] Speaker 00:
Again, put aside notice and opportunity, which is a separate set of constraints.

[00:22:57] Speaker 00:
That's what this case is, what's hard about this case, figuring out that.

[00:23:04] Speaker 03:
Your Honor, I don't believe that any of the statutes or regulations that WPI has cited mean to freeze the petition at any particular point in time.

[00:23:15] Speaker 03:
I believe that they established certain thresholds that a petitioner must satisfy in order to institute IPR.

[00:23:22] Speaker 03:
But I believe that the board and this court has recognized that the evidence can change.

[00:23:28] Speaker 03:
References can be added.

[00:23:30] Speaker 03:
The board can rely on references cited in the final written decision that are not in the petition.

[00:23:35] Speaker 03:
This court has affirmed board decisions to that effect.

[00:23:38] Speaker 00:
Can you name a couple and put aside, was it Genzyme, which was talked about using something that was actually referenced as a piece of confirmatory evidence for a combination that was separately stated?

[00:23:54] Speaker 00:
What else?

[00:23:56] Speaker 00:
Did I get the name right, Genzyme?

[00:23:58] Speaker 03:
Yes, Your Honor.

[00:23:59] Speaker 03:
That would be one example.

[00:24:00] Speaker 03:
Onychorpharmaceuticals is another along the same line, Your Honor, 889 F3rd, 1372.

[00:24:06] Speaker 03:
Not a new ground, but evidence to buttress what a person of ordinary skill in the art wouldn't understand.

[00:24:14] Speaker 00:
Suppose we thought that our cases generally, based on certain foundations, a combination of SAS and the statute and the regulations and whatnot, require some sort of

[00:24:27] Speaker 00:
circum, some kind of limits.

[00:24:32] Speaker 00:
So it's not enough to say, well, of course, that doesn't forbid all evidence.

[00:24:38] Speaker 00:
That's just a red herring.

[00:24:39] Speaker 00:
What are the limits?

[00:24:41] Speaker 00:
Do they allow the kind of thing Judge Chen was asking about to say on reply, I've got some new references.

[00:24:51] Speaker 00:
I've got whole new combinations, references that never appeared in this proceeding.

[00:24:57] Speaker 00:
And if not, then let's start backing up to whatever the line is.

[00:25:02] Speaker 03:
Yes, Your Honor.

[00:25:03] Speaker 03:
And what we have here, and I welcome the opportunity to answer that, what we have here is a very modest modification from the original question.

[00:25:12] Speaker 03:
So that's why this has not been thoroughly briefed.

[00:25:14] Speaker 03:
What are the extents?

[00:25:16] Speaker 03:
What is the extent to which a

[00:25:18] Speaker 03:
a ground in the petition can be crystallized and can be clarified through the proceeding.

[00:25:23] Speaker 03:
And what we have here is a very modest modification.

[00:25:25] Speaker 00:
So what's the principle that makes this modest?

[00:25:28] Speaker 00:
One thing that I think is true of this case, which doesn't use the term modest, is the theory or the basis for invalidity has now gone from, Sen discloses this to,

[00:25:44] Speaker 00:
a change in Sen would have been obvious because a skilled artisan would be motivated to make it with reasonable chance of success, requiring, among other things, new evidence for the prima facie case.

[00:26:00] Speaker 03:
What makes it modest is that every positive limitation in the 991 patent claims is disclosed in sin for the reasons set forth in the petition.

[00:26:09] Speaker 03:
The only point of distinction that was raised late in this proceeding, in particular in the prior appeal, was a negative limitation regarding the term grant pending absence state.

[00:26:20] Speaker 03:
This court construed that term to prohibit.

[00:26:23] Speaker 00:
Why does it make a difference, whatever the difference between positive and negative limitations may be,

[00:26:29] Speaker 00:
Why should that make a difference in the scope of the ability to expand upon the words used in the petition?

[00:26:41] Speaker 03:
Your Honor, in this particular instance, the negative limitation is satisfied by turning off functionality and SIN that the petition never relied on.

[00:26:50] Speaker 03:
The petition relied on functionality in SIN going from a packet standby state 44 to a packet transfer state 42 via the sending of a control packet requesting more data.

[00:27:04] Speaker 03:
The board below found that SIN discloses an alternative embodiment in which user payload data can be sent to transition a mobile station.

[00:27:14] Speaker 04:
Is there an alternative embodiment?

[00:27:15] Speaker 04:
I thought that was your argument, that there were two alternative embodiments in SIN.

[00:27:18] Speaker 03:
You're right, Your Honor.

[00:27:20] Speaker 03:
The question was whether those are two distinct embodiments.

[00:27:22] Speaker 03:
The board found that that is a different way of getting from packet standby state 44 to packet transfer state 42.

[00:27:29] Speaker 03:
The board held, as WPI argued, in all instances WPI discloses both.

[00:27:36] Speaker 03:
WPI provides, excuse me, SIN provides both.

[00:27:39] Speaker 03:
The option to go, this is arrow F in figure four of SIN, travel along arrow F, either of those two options.

[00:27:47] Speaker 03:
We never relied on a mobile station making that transition by sending a user payload data packet.

[00:27:55] Speaker 03:
And so our proposed modification to satisfy the negative limitation is turning off functionality that was never relied on at any point during the proceeding.

[00:28:05] Speaker 00:
But that required you to submit, as you did submit, a new declaration from your expert about why a relevant skilled artisan would be motivated to do that.

[00:28:15] Speaker 00:
And it went on for a number of pages, material that was never in the proceeding until then.

[00:28:23] Speaker 00:
And then it generated a opposing declaration that, again, went on for many pages to say, here are the reasons that we think a relevant skilled artisan would not do that.

[00:28:35] Speaker 00:
Like, why would you sacrifice a functionality when you could dial down the data piece to a tiny piece that wouldn't then interfere with other people's uses, not, I don't mean interference in a frequency sense, wouldn't deprive others of bandwidth that they might be able to use.

[00:28:50] Speaker 00:
Why would you get rid of it to zero?

[00:28:52] Speaker 00:
And this was a completely new, you know, factual dispute about what skilled artisans would have been motivated to do or not do that was

[00:29:04] Speaker 00:
well, completely different from anything in the petition or the reply.

[00:29:09] Speaker 03:
Yes, Your Honor.

[00:29:10] Speaker 03:
And we did not see that argument until the prior repeal.

[00:29:13] Speaker 03:
If you look at what was argued below by WPI, this is appendix pages 2041 through 2042.

[00:29:19] Speaker 03:
This is the patent owner response.

[00:29:21] Speaker 03:
This is where they're making an argument regarding the penultimate limitation of claim one of the 991 patent.

[00:29:27] Speaker 03:
This is a transitioning step.

[00:29:29] Speaker 03:
transitioning the CPE customer premises equipment from the grant pending absence state to the grant pending state after the CPE receives a bandwidth grant.

[00:29:40] Speaker 03:
The argument there, 2041 through 2042, was all about the timing of that transition

[00:29:46] Speaker 03:
relative to the bandwidth grant.

[00:29:49] Speaker 03:
WPI conceded that SIN discloses a transition.

[00:29:51] Speaker 04:
But I read those pages as saying the problem here is there's no transition from one state to another state triggered by a bandwidth grant because before the bandwidth grant, data transmission is occurring in SIN.

[00:30:09] Speaker 04:
After the bandwidth grant, data transmission is going on instead.

[00:30:13] Speaker 04:
So how can we say there's any transition occurring at the bandwidth grant point when there's data transmission going on on both sides?

[00:30:22] Speaker 03:
Your Honor, I think the concluding sentence of that paragraph, which bridges 2041 through 2042, is helpful.

[00:30:30] Speaker 03:
Thus, petitioner fails to address, quote, after a subsequent bandwidth grant is received at the CPE.

[00:30:36] Speaker 03:
That was the focus of WPR's argument.

[00:30:38] Speaker 03:
It was all about the timing, the transition relative to the receipt of the bandwidth grant.

[00:30:44] Speaker 03:
Now, as petitioner, TCT has

[00:30:47] Speaker 03:
APA writes as well, a notice and an opportunity to be heard on its theories.

[00:30:53] Speaker 03:
When this new claim construction comes down after the original trial, TCT rightfully was provided an opportunity to show the unpatentability of the 991 patent claims in view of SIN.

[00:31:06] Speaker 03:
And the record should not have been frozen at any point.

[00:31:10] Speaker 03:
To accommodate shifts in theories from the patent owner

[00:31:14] Speaker 03:
claim constructions that come down from the board or are advanced by a patent owner late in the proceedings, there should be some flexibility built in.

[00:31:22] Speaker 03:
To answer your Honor's point, I don't know that there is a hard and fast line as to how much flexibility should be allowed relative to the original petition, but there should be some flexibility.

[00:31:33] Speaker 00:
And this case right here... Is there... Do you have any other case in which a shift was allowed from a

[00:31:43] Speaker 00:
To take one example, this example, from a, this art teaches this element to, it would be obvious to modify the teaching

[00:31:56] Speaker 00:
in the following way, supported by a new declaration.

[00:32:02] Speaker 00:
I couldn't find anything that fit that category.

[00:32:06] Speaker 03:
Your Honor, we're not aware of anything that fits those facts precisely as well.

[00:32:11] Speaker 04:
Well, there's one, but it goes against you.

[00:32:13] Speaker 04:
That's AMC, right?

[00:32:16] Speaker 04:
Well, Your Honor, I- Not presidential, but nevertheless,

[00:32:19] Speaker 03:
Your Honor, Your Honor, I'm not sure that really any of the authorities cited by WPI go against us.

[00:32:24] Speaker 03:
This court affirming a board's refusal to accept certain evidence is not delineating a line between acceptable and unacceptable.

[00:32:33] Speaker 03:
It is merely deferring to the board's discretion.

[00:32:36] Speaker 00:
Suppose it were the case, and as far as I can tell it is, but that the board, every time it sees something akin to this, that is something that requires to use

[00:32:48] Speaker 00:
the language of the Patent Trial Guide which was picked up in Intelligent Biosystems that says it's too big a change if what you have to do is add evidence to make out your prima facie case that you didn't need before.

[00:33:07] Speaker 00:
That's certainly this and

[00:33:11] Speaker 00:
Suppose it were the case that the board has consistently said, no, we won't let you do that.

[00:33:18] Speaker 00:
What would we make of that, even if the director could, by regulation, come up with a different rule?

[00:33:29] Speaker 03:
Your Honor, I don't believe much should be taken from that.

[00:33:32] Speaker 03:
In many of these instances, if not all, the board is finding that the petitioner has failed to put forward arguments that it could have put forward.

[00:33:43] Speaker 03:
The petitioner may, for example, put forward an argument regarding a motivation to combine.

[00:33:48] Speaker 03:
The patent owner comes back in a response and argues against that motivation.

[00:33:51] Speaker 03:
And then the petitioner then tries to backfill their petition.

[00:33:55] Speaker 03:
And those are instances where the petitioner should have seen the arguments coming from the patent owner.

[00:34:01] Speaker 03:
Here we have a negative limitation that does not appear from the terms of the patent claims.

[00:34:07] Speaker 03:
This is a negative limitation that's extracted from the specification.

[00:34:10] Speaker 03:
under the umbrella of grant pending absence state.

[00:34:14] Speaker 03:
This is not something that the petitioners could reasonably have been expected to anticipate at the petition stage.

[00:34:20] Speaker 04:
Your petition, though, points out that, in your view, the packet standby state of SEND doesn't transmit any data.

[00:34:31] Speaker 04:
Petition reads as if it contemplates an understanding that there is no data being transmitted during the grant pending absence date.

[00:34:39] Speaker 04:
Because look at this packet standby here of send, which is not transmitting any data.

[00:34:44] Speaker 03:
Yes, Your Honor.

[00:34:45] Speaker 03:
And all the way through until the second final written decision.

[00:34:48] Speaker 04:
So I guess that's my response to your point that this was some big surprise that grant pending absence date could not be permitted to send any data during that state.

[00:34:59] Speaker 03:
Yes, Your Honor, and it was our position all the way through the second final written decision that SIN discloses two mutually exclusive embodiments.

[00:35:08] Speaker 03:
One, where there is a bandwidth grant awarded after a mobile station sends a control packet requesting more data.

[00:35:16] Speaker 03:
Separately, the user payload data

[00:35:20] Speaker 03:
embodiment where mobile station transitions over AeroF.

[00:35:25] Speaker 04:
So is it your view here that if in your petition you said SEND discloses all of these claim limitations, it's section 102 anticipation, and then the patent owner response comes back and says, no, it's not a 102 because SEND, its packet standby state is actually transmitting data and so therefore it is not a grant pending absence state.

[00:35:48] Speaker 04:
as that term is understood by my lexicography and my specification.

[00:35:53] Speaker 04:
Are you saying that in your reply, you'd be allowed to say, oh, well then, under that understanding of grant pending absence state, let me adjust my SEND 102 to a SEND 103.

[00:36:08] Speaker 04:
And here are all the reasons my expert explains why the obvious demodifies SEND to render the claim obvious.

[00:36:17] Speaker 04:
Can you move from Assent 102 to Assent 103 on reply?

[00:36:23] Speaker 03:
Yes, Your Honor.

[00:36:24] Speaker 03:
And I believe Administrative Patent Judge Weatherly noted that he would have permitted TCT to make that change had WPI raised its claim construction argument during the first appeal.

[00:36:34] Speaker 03:
In that circumstance, Your Honor, it would have been just as modest of a modification from the petition.

[00:36:42] Speaker 03:
And what we have here is 103 in view of sin from the filing of the petition all the way till today.

[00:36:49] Speaker 04:
So if we were to write an opinion in your favor, it sounds like the principle we'd have to rely on is modest modifications, not any modifications.

[00:37:03] Speaker 04:
If it's a modification we think is not so radical, then it's OK to migrate away from the actual prima facie case of unpatentability of the petition.

[00:37:16] Speaker 04:
Is that the model you're urging?

[00:37:21] Speaker 03:
Your Honor, this court need not go further than so long as the grounds remain static.

[00:37:27] Speaker 03:
the board is entitled to administer its proceedings as its seats fit.

[00:37:31] Speaker 03:
Because again, we had 103 in view of sin, in addition to Ridnell and an applicant admitted prior art, which fell by the wayside throughout the proceeding, as the theory is crystallized.

[00:37:42] Speaker 03:
But 103 in view of sin has been the ground from day one.

[00:37:45] Speaker 03:
So this court need not go further in this case than same ground that that's permissible.

[00:37:54] Speaker 03:
There's nothing further?

[00:37:56] Speaker 03:
Thank you.

[00:37:59] Speaker 04:
Thank you, Your Honors.

[00:38:01] Speaker 04:
Has this patent expired?

[00:38:03] Speaker 02:
I believe it has, Your Honor, although I'm not 100% positive, but I believe it has.

[00:38:14] Speaker 04:
I guess you have pending litigation.

[00:38:17] Speaker 02:
The patent may not have expired.

[00:38:18] Speaker 02:
I think it may have a short amount of life.

[00:38:21] Speaker 02:
So a little bit of PTA.

[00:38:25] Speaker 02:
Your Honor, I'm sorry?

[00:38:27] Speaker 00:
A year and a half.

[00:38:31] Speaker 02:
The question of line drawing was raised a number of times during the Appellee's argument.

[00:38:38] Speaker 02:
And I'd like to address that line drawing question in the following way.

[00:38:43] Speaker 02:
In every legal proceeding, somebody has to get it right, or else they lose.

[00:38:50] Speaker 02:
One party.

[00:38:51] Speaker 02:
not both.

[00:38:52] Speaker 02:
That's what the meaning of the burden is.

[00:38:54] Speaker 02:
And so ultimately, in inter-parties review proceedings, the burden is on the petitioner.

[00:39:01] Speaker 02:
If they do not get it right,

[00:39:03] Speaker 02:
And the patent owner points that out.

[00:39:06] Speaker 02:
The petitioner doesn't get to go back over and over and say, whoops, sorry, you're right.

[00:39:10] Speaker 02:
I messed up.

[00:39:11] Speaker 02:
I didn't get it right.

[00:39:12] Speaker 02:
But I can fix it.

[00:39:13] Speaker 02:
How about this?

[00:39:14] Speaker 02:
No, that's still not right.

[00:39:15] Speaker 02:
OK, OK, sorry.

[00:39:17] Speaker 02:
I didn't get it right that time either.

[00:39:18] Speaker 02:
How about this?

[00:39:19] Speaker 02:
There is a burden.

[00:39:20] Speaker 02:
That burden rests with the petitioner.

[00:39:22] Speaker 02:
If they don't get it right, then their petition doesn't prevail.

[00:39:25] Speaker 02:
That's what happened here.

[00:39:27] Speaker 02:
And there's nothing unfair about drawing the line where Congress drew the line.

[00:39:32] Speaker 02:
where the burdens have been allocated.

[00:39:34] Speaker 02:
As to the question of what about, well, we draw the line at it was a 103 theory before, and it's still a 103 theory now, so that's good enough.

[00:39:44] Speaker 02:
Well, Your Honors, I don't think that's an accurate representation of what happened here.

[00:39:48] Speaker 02:
I think Judge Toronto, for example, summed up the vast difference between the 103 theory that was presented in the petition and the issues that were then discussed on remand.

[00:39:59] Speaker 02:
Simply calling the theory

[00:40:01] Speaker 02:
one of obviousness, can't be a magical incantation to allow any obviousness, combinations, and modifications that one can later conceive to be brought up at any point in the proceeding.

[00:40:12] Speaker 02:
That would not be consistent with the time limits of inter-parties review.

[00:40:15] Speaker 02:
It would not be consistent with the burden allocations of inter-parties review.

[00:40:18] Speaker 02:
And we see the consequences of that approach here, where we've had a remand

[00:40:23] Speaker 02:
of more than 21 months that exceeds the length of the trial, that seems, in Appellee's view, to have no limits whatsoever.

[00:40:31] Speaker 02:
According to Appellee, apparently this remand could have gone on for another three years, and it would have been fine.

[00:40:36] Speaker 02:
That's the problem that I would ask this court to consider as the issue that it needs to be concerned with and resolve.

[00:40:45] Speaker 04:
Did you have an alternative theory that all of this was waived?

[00:40:49] Speaker 04:
because they were on notice, as of the time of your original patent owner response, do you have submitted any kinds of arguments about claim construction or possible adjustments to their original theory in light of your competing claim construction?

[00:41:06] Speaker 04:
And so therefore,

[00:41:08] Speaker 04:
There was no actual room to do anything because, essentially, it was waived and forfeited by not having been raised in the original reply.

[00:41:18] Speaker 02:
Yes, Your Honor.

[00:41:19] Speaker 02:
We made that point.

[00:41:19] Speaker 02:
And just to speak to that quickly, the entire foundational premise of Appleley's position and the board's position is that they were taken by surprise by this court's claim construction and our request for that claim construction during the first appeal.

[00:41:34] Speaker 02:
And that premise is incorrect.

[00:41:36] Speaker 02:
If you look at appendix 3083, Appellees admitted that we had raised the construction to the board in the original proceeding.

[00:41:43] Speaker 02:
And therefore, there was nothing new that required any of this additional theory modification that we saw on remand.

[00:41:51] Speaker 02:
So Judge Chen, yes, to your point, we raised that argument.

[00:41:55] Speaker 02:
And we certainly think that that's a reason why the remand got off on the wrong foot from the outset and should have never gone where it went.

[00:42:03] Speaker 01:
So maybe that's the narrow way to do it, rather than deciding what the global theories are and the line drawing for all of this stuff on what's in the petition.

[00:42:12] Speaker 01:
Your view is that the board abused its discretion, but the sole basis, as far as we know from this record, that it allowed all this new stuff to come in was that it determined, it said quite clearly, this was never raised at the trial.

[00:42:30] Speaker 01:
So a remand is an order in that circumstance or a reversal?

[00:42:34] Speaker 01:
I mean, if the board got that portion of it wrong, then if we tell them, theoretically, you were wrong about that, it was raised, what would you have done then with respect to the evidence?

[00:42:47] Speaker 02:
Well, and Your Honor, to that issue, the board already addressed that and they answered it.

[00:42:52] Speaker 02:
So they reached the question of whether the petition on its face, as originally presented, would meet the claims in light of this Court's construction, and they ruled in Patent Owner's favor on that.

[00:43:03] Speaker 02:
So that issue has been resolved.

[00:43:06] Speaker 02:
Then they said, but we're going to additionally consider this further question of what if we could modify the prior art, and they ruled against Patent Owner on that basis.

[00:43:14] Speaker 02:
To your original question, yes, the cleanest way to resolve this case is to say the board's basis for looking to the new theory was the finding that the claim construction issued by this court was entirely new and never raised before.

[00:43:27] Speaker 02:
That finding was incorrect.

[00:43:30] Speaker 02:
The board was therefore wrong to look to a modification on the basis.

[00:43:35] Speaker 00:
I'm not entirely sure you addressed what I thought I was hearing as the question, but regardless.

[00:43:45] Speaker 00:
Suppose one viewed the board decision that's now in front of us as deciding to allow the new modification of SEND basis

[00:44:00] Speaker 00:
because it viewed the claim construction as sufficiently new.

[00:44:06] Speaker 00:
Suppose we said, you're wrong about the premise.

[00:44:12] Speaker 00:
Why not remand so that the board could say, what would we allow now on the assumption which we've been told

[00:44:26] Speaker 00:
by assumption here, to accept that this claim construction was always in dispute.

[00:44:33] Speaker 00:
So this is just as if it were a kind of plain vanilla case where the petition says, I proceed on this theory, on this claim construction.

[00:44:42] Speaker 00:
The patent owner says, you're wrong about the claim construction.

[00:44:45] Speaker 00:
Do you, in reply, get to say, I've now changed the basis for my obviousness assertion?

[00:44:55] Speaker 00:
which I don't think the board in this second decision, the one right in front of us answered that question.

[00:45:04] Speaker 02:
OK, so I think the last part of your question, I think I'm understanding an aspect of what you're asking about.

[00:45:11] Speaker 02:
So let me address that question as a whole in two pieces.

[00:45:15] Speaker 02:
The first piece is that the board already contemplated the two scenarios where it's restricted to the original petition and it ruled on that scenario, and the scenario where it's allowed to allow a new theory and it ruled on that scenario.

[00:45:30] Speaker 02:
And so if this court were to find the board was wrong,

[00:45:33] Speaker 02:
in its basis for allowing the new theory and that it was restricted to the petition, there would be nothing to remand because that's been decided.

[00:45:41] Speaker 02:
If, however, you're asking, you know, is there a determination for the board as to whether it should still allow a new theory, if its basis for allowing that new theory on remand was incorrect,

[00:45:56] Speaker 02:
I don't think that this court needs to remand for that question, because there's no precedent at the board, and there's no statute.

[00:46:05] Speaker 02:
There's never even been an argument by the appellee that there's any basis for the board to allow a new theory of this kind.

[00:46:12] Speaker 00:
In the absence of a change.

[00:46:13] Speaker 02:
Correct.

[00:46:14] Speaker 01:
But did you tell me early a few minutes ago that the board actually said that?

[00:46:20] Speaker 01:
that if, in fact, this had been raised or whatever, we would not allow the new evidence?

[00:46:26] Speaker 02:
No, Your Honor.

[00:46:26] Speaker 01:
What I was saying is yes.

[00:46:28] Speaker 01:
So they didn't address that?

[00:46:29] Speaker 02:
They addressed the implication of the construction on the existing theory that was discussed in the initial trial.

[00:46:36] Speaker 02:
And then they addressed the scenario where a modification could be allowed.

[00:46:41] Speaker 01:
Thank you.

[00:46:41] Speaker 01:
We thank both sides for taking this submitted.

[00:46:43] Speaker 01:
That concludes our procedure.