[00:00:00] Speaker 05:
1731, Carusel Investments LP versus Fadal.

[00:00:04] Speaker 05:
Mr. Baer.

[00:00:06] Speaker 00:
Good morning, Your Honors.

[00:00:08] Speaker 00:
I have spoken with opposing counsel.

[00:00:10] Speaker 00:
I think you'll find the first two arguments to be largely duplicative of each other.

[00:00:14] Speaker 00:
So if the court would prefer to combine the arguments, we would be open with that.

[00:00:19] Speaker 00:
We are also fine proceeding with them in separate appeals.

[00:00:25] Speaker 05:
It probably makes sense to combine them.

[00:00:27] Speaker 05:
Hopefully you don't need half an hour aside.

[00:00:37] Speaker 00:
I hope not.

[00:00:37] Speaker 00:
If it takes me that long to make my point, I'm in trouble.

[00:00:43] Speaker 00:
Good morning.

[00:00:43] Speaker 00:
My name is Brian Bear.

[00:00:44] Speaker 00:
I represent the appellant, Carousel Investments.

[00:00:48] Speaker 00:
In the briefing for both of these appeals, Carousel presents basically two major buckets of arguments for the court.

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One is pertaining to issues of claim construction, the basic substantive disputes that we have with the final written decisions.

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And then the other bucket is with the APA and the implementation of the Arthrex director review decisions.

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Because the substantive points of patent law would

[00:01:18] Speaker 00:
obviate the need for addressing the APA.

[00:01:20] Speaker 00:
I'll start first with that, but of course we'll address any of the issues as the panel would require.

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The largest and most pervasive issue that we have with the final written decisions below in both proceedings is an issue of claim construction with the construction that was given to mobile unit and mobile device.

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That is a limitation that is throughout each of the challenge claims.

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Below in the final written decisions, it was a plain and ordinary construction.

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But if you look at the substance of the decisions, it really adopted in the final written decisions the construction that was proposed by the petitioners, which was a movable device capable of receiving and transmitting radio signals, a very open-ended construction that would embrace almost any type of wireless device.

[00:02:20] Speaker 00:
Carousel urged, and we think the proper construction in light of the specification,

[00:02:26] Speaker 00:
is more narrow than that, specifically a device that must register with and be directly able to communicate with a cellular network.

[00:02:37] Speaker 00:
Ben, let me ask you.

[00:02:38] Speaker 04:
I think this provision in the spec is at, I guess, 748 of the Joint Appendix.

[00:02:45] Speaker 04:
Correct.

[00:02:45] Speaker 04:
I had just one question.

[00:02:47] Speaker 04:
And my question may make sense, and it may not.

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It may be of no importance.

[00:02:51] Speaker 04:
But it says, when the mobile unit

[00:02:55] Speaker 04:
set is first powered up or first enters a service area.

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The mobile unit must register in the manner described earlier.

[00:03:04] Speaker 04:
Focusing on that, in the manner described earlier, where earlier in the spec is that registration requirement required?

[00:03:14] Speaker 04:
Because I could very well have missed it, but I looked back and I couldn't find that.

[00:03:19] Speaker 00:
I believe that it's within the very first portion when

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It's describing the problem in the prior art and what the patentee was trying to address.

[00:03:30] Speaker 00:
What's extensively described as the handoff problem, which occurs with cellular devices.

[00:03:36] Speaker 00:
And in that first part of the background and the specification, the patentee explains that when a cellular device goes from one cell to another communication cell, there is a handoff issue, a speeds increase, as

[00:03:52] Speaker 04:
uh... there's distances and it describes that that issue is because a cell phone device so you're saying she's really jumping in for sure saying the handoff discussion and i do recall that yet you're saying that is what's being referred to here when the specification talks about must register in the manner described above that is my understanding is that so there's no word to say must register

[00:04:18] Speaker 04:
This is referring back to the handoff discussion.

[00:04:21] Speaker 00:
Exactly.

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And Your Honor, I think that that's a very key point about this.

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On the other side, the assertion is we're importing limitations from spec, the classic issues with that.

[00:04:35] Speaker 00:
But if you look at the handoff issue and the registration issue, it's central to the problem

[00:04:42] Speaker 00:
that the patentee was trying to address.

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It's the novelty of the invention.

[00:04:46] Speaker 00:
The idea was, you know, current mobile units have this issue.

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It becomes pronounced as speeds start to increase in traffic.

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And so the novel way of addressing this problem is by creating these moving base stations interspersed between it.

[00:05:08] Speaker 00:
If you take out the registration component of a mobile unit, you lose the problem that's being addressed.

[00:05:14] Speaker 00:
You lose the novelty of the invention.

[00:05:19] Speaker 04:
You're saying the registration has to be directly with the cell.

[00:05:24] Speaker 04:
Correct.

[00:05:25] Speaker 04:
The cell operation.

[00:05:27] Speaker 04:
Yes, your honor.

[00:05:29] Speaker 04:
The claims, though, seem to describe all the communications going through the moving base stations.

[00:05:37] Speaker 04:
I guess they're items 30 and 40 in the drawings.

[00:05:43] Speaker 00:
The vast majority of the spec is devoted to that, but there are portions of the spec where it does talk about the communication with the fixed base stations.

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For instance, if you look at

[00:05:57] Speaker 00:
Columns 10 starting at 37 to the end of the patent in column 11, one of the things that's being described there is the mobile unit preferentially connecting to either fixed base stations or the moving base station based on signal strength and error rate.

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And so that is describing the registration focus

[00:06:24] Speaker 00:
of how this mobile device will preferentially choose one of the base stations, either the novel moving base station or the fixed base station.

[00:06:34] Speaker 00:
As pointed out in the green brief and the red brief, there isn't a lot of discussion about the registration with the fixed ports.

[00:06:44] Speaker 00:
It is there in the spec, but part of that is because that's what the prior art was doing.

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The prior art

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was dealing with fixed base stations with cell phones, registering with them.

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And so you would expect the patentee to not devote a lot of the specification describing how that occurs.

[00:07:03] Speaker 00:
Where you would expect a lot of discussion in the specification is that choosing, for lack of a better term, algorithm, that choosing process of whether I go for the moving base station or the fixed base station.

[00:07:17] Speaker 00:
And that is described in that portion of the spec.

[00:07:20] Speaker 05:
So what about the fact that your client chose to describe it as a mobile device rather than as a cellular telephone?

[00:07:33] Speaker 05:
That really seems to me to suggest an effort to broaden it beyond cellular devices.

[00:07:42] Speaker 00:
I think that when we look back at the spec, when it does describe the mobile unit, there

[00:07:50] Speaker 00:
is no discussion of.

[00:07:53] Speaker 00:
any portion of the mobile operating outside a cellular device.

[00:07:57] Speaker 05:
Okay, but you're not really addressing my question.

[00:08:00] Speaker 05:
My question is, it would seem natural if you wanted to claim a system that was limited to cellular telephones to use that terminology, which is used in the specification and the applicant here selected a different

[00:08:21] Speaker 05:
nomenclature to describe it, which seems to be broader than cellular telephone.

[00:08:26] Speaker 05:
How do you deal with that?

[00:08:28] Speaker 00:
So I think that there is a middle ground of where the patentee was trying to go with it.

[00:08:34] Speaker 00:
I think Your Honor's example of using a cellular telephone would probably be too narrow because it would just be the cell phone itself.

[00:08:44] Speaker 00:
There were cellular device.

[00:08:47] Speaker 00:
Cellular device would probably be, would embrace these other devices that were starting to come online that are described.

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But they're all tethered to the idea of a cellular network.

[00:09:02] Speaker 00:
I agree with you, Your Honor, that it is trying to broaden beyond just a traditional cell phone at that point.

[00:09:09] Speaker 00:
But there's nothing in the spec that would suggest

[00:09:13] Speaker 00:
that there is anything being dealt with outside of a cellular network.

[00:09:18] Speaker 00:
And what the patentee was trying to claim are devices that may operate on a cell phone network that, at the time of the invention, were on the horizon.

[00:09:29] Speaker 00:
And they were trying to embrace that.

[00:09:31] Speaker 00:
But I do agree that there are ways that the claims could have been drafted even tighter to make it absolutely explicit.

[00:09:41] Speaker 00:
But this is one instance where the claim construction and the spec are at least clear enough on this point of what the novelty is and what's being addressed that I don't think that the patentee was required to make that narrow of claim language when the spec is explicit.

[00:09:57] Speaker 05:
That's not a question of being required.

[00:09:59] Speaker 05:
It's a question of trying to understand what was intended here.

[00:10:03] Speaker 05:
And if you have a broad term

[00:10:07] Speaker 05:
like mobile device selected over a narrower term like cellular device that would seem to be intentional and designed to make the claim broader than cellular device.

[00:10:21] Speaker 00:
That's the problem.

[00:10:22] Speaker 00:
I think that your honor

[00:10:27] Speaker 00:
It probably, if cellular was put in there, it would be more explicit and narrow, but I do think from how the patentee used it throughout the spec, I do think it restricts it to that basis.

[00:10:39] Speaker 03:
The other point- According from the perspective of want of skill in the art, which the law compels us to do, why isn't the logical conclusion that

[00:10:49] Speaker 03:
when the spec talks mostly about cellular embodiments, but then you get to the claims, it looks like you've broadened it out to something much broader than a cellular system, and that that must have been intentional.

[00:11:03] Speaker 03:
Why wouldn't that common sense be how one of ordinary skill in the art would read this?

[00:11:09] Speaker 00:
I think with the other limitations, the interaction with the base stations being described within the claims, that that would narrow it too.

[00:11:19] Speaker 00:
It does.

[00:11:20] Speaker 00:
And then you take that, of course, with the specification, which you always read the claims in light of.

[00:11:25] Speaker 00:
When the specification talks in mandatory languages that this is a functionality that must occur with that device, which is the portion that we cite, I don't think the patent team needs to continue.

[00:11:41] Speaker 03:
Is that the registration requirement?

[00:11:43] Speaker 00:
The registration requirement, yes.

[00:11:46] Speaker 00:
And Your Honor, the other portion I would point out is a lot of the briefs are devoted to the portion of the spec dealing with portable telephones, where it's mentioned.

[00:11:58] Speaker 00:
The other thing that I think provides some guide that the patentee was narrowing it with that is when the patentee is describing the goal of how mobile units or cell phones would operate, they would operate as a portable phone in the house.

[00:12:15] Speaker 00:
in the same manner with the same full functionality of it.

[00:12:18] Speaker 00:
And when it's describing a way of improving a cell phone or a mobile unit to operate in that manner, it is inherently stating that this is something different than a portable terrestrial phone or other aspect with it.

[00:12:36] Speaker 00:
Does the specification use the term mobile device?

[00:12:39] Speaker 00:
It does not use mobile device.

[00:12:41] Speaker 00:
It uses mobile unit.

[00:12:43] Speaker 00:
The terms were treated as synonymous below, and we would agree that that was consistent with it.

[00:12:49] Speaker 00:
A mobile device versus a mobile unit would mean the same thing.

[00:12:53] Speaker 00:
But I don't believe it uses mobile device specifically within the specification for the patent that does use that term.

[00:13:01] Speaker 00:
Mobile unit, I believe, is used most throughout the patents.

[00:13:06] Speaker 00:
Where's an example of that?

[00:13:19] Speaker 00:
in the 904 patent, in the claims for the 904 patent they use the mobile unit and then the mobile device appears in the 023 patent

[00:13:44] Speaker 00:
Claim one, for instance, uses a mobile device.

[00:13:51] Speaker 05:
I was thinking of the spec.

[00:13:53] Speaker 00:
Oh, the spec.

[00:13:54] Speaker 00:
I apologize, Your Honor.

[00:14:13] Speaker 05:
Okay.

[00:14:16] Speaker 05:
Seeing where my time is going, I do want to... Because we've combined the cases, we'll do a half an hour aside so you have some more time.

[00:14:25] Speaker 05:
Okay.

[00:14:25] Speaker 05:
Yeah, if you could reset it so that he has 15 minutes left and give the other side 30 minutes.

[00:14:33] Speaker 00:
Thank you, Your Honor.

[00:14:36] Speaker 00:
Turning to the adapted to limitation, Your Honor.

[00:14:40] Speaker 00:
That was another claim construction issue that we urged should have the construction to move with the traffic at a rate of speed, which is comparable to the speed of the traffic, which is consistent with automotive speeds.

[00:14:56] Speaker 00:
We didn't pull that out of the air.

[00:14:58] Speaker 00:
There was a prior construction given by a district court.

[00:15:03] Speaker 00:
It did come up to this court.

[00:15:04] Speaker 00:
It was affirmed without a written opinion.

[00:15:06] Speaker 00:
So we were simply urging.

[00:15:08] Speaker 00:
construction that was given by a prior court.

[00:15:12] Speaker 00:
Putting aside whether there's collateral stopple issues on it, it does make sense why that limitation was construed with those speed limit constraints.

[00:15:22] Speaker 00:
Again, if you go through the specification, it is discussing this in the context of

[00:15:29] Speaker 00:
speeds of 0 to 30, 30 to 60.

[00:15:32] Speaker 00:
It talks about the problem being specific within automotive speeds.

[00:15:39] Speaker 00:
There was a lot below where there were discussions of whether a Cessna airplane would fall within the speed limits that were being contemplated by this limitation.

[00:15:52] Speaker 00:
Ultimately, the board did not deal with it and said we don't have to because there is really

[00:15:58] Speaker 00:
the adapted to and the speed of traffic, notwithstanding that construction from the district court, really wouldn't make a difference.

[00:16:08] Speaker 00:
Given if there was a proper construction, remand back to the panel for a discussion on that point would force them to look at the prior art and the substantive aspects of that type of analysis.

[00:16:25] Speaker 00:
So that would be an independent basis to send this back.

[00:16:28] Speaker 00:
In either case with the claim construction issues, we would urge that a remand back to the panel for decision consistent for analysis of the prior art would be warranted under the facts.

[00:16:43] Speaker 00:
We do have an issue though that is substantial evidence, but does touch into the APA issues of the description and making an adequate finding.

[00:16:58] Speaker 00:
with respect to the combination of TDMA and CDMA art and a very high level as explained in the brief.

[00:17:08] Speaker 00:
CDMA was the code division multiple cell phone protocol, which at the time of the invention in the mid-90s was new.

[00:17:20] Speaker 00:
It is now something that is far more commonplace.

[00:17:23] Speaker 00:
with certain types of prior art, most notably the Ido reference, which was TDMA, which is time divisional art.

[00:17:33] Speaker 00:
And the issue that we have with the board's finding on that is we presented very extensive expert testimony that these two types of cell phone protocols on both a operational aspect and also as a matter of the components that would be used

[00:17:53] Speaker 00:
were completely incompatible with one another.

[00:17:56] Speaker 00:
The citation to the record that we provided is that our experts stated that in order to move one or the other protocol, it's what is called a forklift upgrade, where all the components have to be replaced.

[00:18:11] Speaker 00:
And so we're scratching our head when we get the final written decision, because we point out all of these

[00:18:17] Speaker 00:
practical reasons why, as a matter of just not being able to combine them, but also as a motivation to combine teaching away or just providing a lack of a motivation to combine, why would a posita be able to combine these two areas of the prior art that

[00:18:40] Speaker 00:
largely had not been combined.

[00:18:42] Speaker 00:
In fact, none of the references talk about combining CDMA or TDMA.

[00:18:48] Speaker 00:
How do we get there?

[00:18:49] Speaker 00:
And if you look at the board's decision, it's pretty stark with how it actually presents that type of analysis.

[00:18:59] Speaker 00:
It says, well, the expert says that the posita would be very able and would find a way to basically combine these two areas of prior art.

[00:19:11] Speaker 00:
Under alacritec and with the panel's decision in Sisvel versus Sierra from earlier this month, which certainly was a different procedural posture,

[00:19:23] Speaker 00:
That sort of analysis, that sort of Ipsodixit analysis from their expert just being adopted by the board, is not an APA compliant finding of fact.

[00:19:33] Speaker 00:
There's really no analysis from the board explaining exactly how you would overcome this massive barrier with TDMA and CDMA.

[00:19:43] Speaker 00:
And so specifically with the EDO reference, which is in both of these proceedings, that would be an independent basis to send this back to the board or at least reverse the obviousness determinations where EDO was combined with it.

[00:19:58] Speaker 03:
Are you saying there's not even substantial evidence in the record to support what the board credited or just that they didn't explain why they found substantial evidence?

[00:20:10] Speaker 00:
I think it's both.

[00:20:11] Speaker 00:
And to unpackage that,

[00:20:13] Speaker 00:
What they really have is an Ipsa-Dixit statement from the expert that says, from the petitioner that says, somehow a posita would overcome and combine these together.

[00:20:26] Speaker 00:
Ipsa-Dixit statements from an expert really don't meet the standard for substantial evidence.

[00:20:33] Speaker 00:
But the error is compounded with something that goes into Alloprotech and Sysvol, where

[00:20:41] Speaker 00:
We really just don't have the type of analysis from the board where we understand why they went that way.

[00:20:48] Speaker 00:
And I think Alec Ritek and the other precedents from this court state that one of the things you can't do and be APA compliant is to say, petitioner says A,

[00:21:02] Speaker 00:
Pat and owner says B, we like A, and give no analysis beyond that.

[00:21:06] Speaker 00:
And that is essentially, at least with the TDMA CDMA reference combinations, where the board runs into issues.

[00:21:18] Speaker 00:
So that would be an independent basis as well.

[00:21:20] Speaker 00:
to send that back for those claims that utilize EDO in both proceedings.

[00:21:28] Speaker 00:
Additionally, beyond just EDO's one example of it, there are other references that are TDMA reference.

[00:21:35] Speaker 00:
The shorthand way to look at it, Your Honors, we do have it in the brief, but anything

[00:21:42] Speaker 00:
Prior to 94, any of the references from the 80s, those all predate CDMA.

[00:21:48] Speaker 00:
They're all going to be TDMA functions for the most part.

[00:21:53] Speaker 00:
So Finwick, Edo, those are all going to fall within that gamut of it.

[00:22:02] Speaker 00:
With that being said, unless there are other points, I'd move quickly to the APA points.

[00:22:08] Speaker 00:
Yeah, I don't think we want to hear argument on the issues that have already been decided and that are binding on this panel.

[00:22:17] Speaker 00:
As we said in the brief, the FVRA points, Supreme Court denied cert, we believe.

[00:22:24] Speaker 00:
Unless the court would like to have a non-bomb hearing, which I don't think will happen, we are not going to push the FVRA points.

[00:22:31] Speaker 00:
The rules points about whether the director was required to promulgate rules for

[00:22:38] Speaker 00:
The substantive basis for dealing with the evaluation of direct review under Arthrex, that is still an issue.

[00:22:48] Speaker 00:
In addition, the delegation of tasks for recommendations that are not provided to the parties, that would also be an independent basis under the APA.

[00:23:03] Speaker 00:
Those are still live and not decided by Arthrex, too.

[00:23:09] Speaker 00:
The regulation issue, the rules and regulation issue, is probably the most pointed APA violation that Carousel believes is at issue.

[00:23:29] Speaker 00:
As we described in brief, we were kind of dealing with a moving target when this was being briefed because the director, and I think

[00:23:38] Speaker 00:
Every practitioner who practices in this space was surprised by the Supreme Court's remedy in the Arthrex decision.

[00:23:47] Speaker 00:
I don't think anyone had that on their bingo card.

[00:23:50] Speaker 00:
And so it is understandable that the director would try to implement some sort of solution to deal with the director review aspect as soon as possible.

[00:24:03] Speaker 00:
And while we are sympathetic to that burden on the agency,

[00:24:08] Speaker 00:
The APA does make it clear that when you are going to set substantive rules, that needs to be through the rulemaking process.

[00:24:18] Speaker 00:
Certainly, the FAQ and the other guidance documents that the director provided, that would often change, even while we were briefing this.

[00:24:28] Speaker 00:
That's not compliant with the APA.

[00:24:31] Speaker 00:
Certainly the desire to move this forward expeditiously is understandable.

[00:24:36] Speaker 03:
Is there any prejudice to you from this failing, if we were to agree it was a failing?

[00:24:43] Speaker 00:
There is.

[00:24:44] Speaker 00:
Certainly they're bringing up the novel issue of

[00:24:50] Speaker 00:
waiver of points because they're saying if you didn't raise it in your direct review... What if we rejected that argument?

[00:24:56] Speaker 03:
Is there any other prejudice to you?

[00:24:57] Speaker 00:
It does create a due process issue.

[00:25:02] Speaker 00:
If we would have had a set in stone standard of review, for instance, there are things that

[00:25:10] Speaker 00:
If it's a de novo review, generally as a practitioner, I would bring that to the appellate court because of the standard of review.

[00:25:17] Speaker 00:
If it's something where the director is going to review the facts determinations, in other words, not be really bound by substantial evidence, as a practitioner, I would practically put a lot of my director review into issues of fact.

[00:25:33] Speaker 05:
Why isn't there a waiver because you select director review?

[00:25:37] Speaker 00:
We did put in our director review these complaints.

[00:25:40] Speaker 05:
We said... But you still pursued that course, and we've suggested that pursuing the course like that bars you from challenging the standards for reply in the proceeding that you sought to take it out.

[00:25:59] Speaker 00:
I don't believe we've waived it because we put these points in our substantive filing with the director when we did review.

[00:26:06] Speaker 00:
We did say we have issues with the delegation to un-name folks.

[00:26:10] Speaker 00:
We put that up front.

[00:26:12] Speaker 00:
And so I guess if what your honor is suggesting is that there was a separate filing or a motion to stay or something pending rulemaking,

[00:26:24] Speaker 00:
Certainly that would have been cleaner, but we did try to raise those points at what we perceive to be the time to do it, which is when we are granted leave by this court to file for a review with Arthrex.

[00:26:37] Speaker 00:
And we were on the clock with that.

[00:26:39] Speaker 00:
So we put in our substantive filing, the complaints that we had with the rules, with the delegation.

[00:26:47] Speaker 00:
At the time, the FVRA.

[00:26:49] Speaker 00:
OK.

[00:26:49] Speaker 00:
If you want to reserve time for rebuttal, you're running out of time.

[00:26:53] Speaker 00:
I would like to reserve time for rebuttal.

[00:26:54] Speaker 00:
Thank you, Your Honor.

[00:26:59] Speaker 05:
Mrs. McComas.

[00:27:02] Speaker 01:
Good morning.

[00:27:04] Speaker 01:
May it please the court, I'm Debbie McComas on behalf of Unified Patent.

[00:27:09] Speaker 01:
And I'm dividing my time today with Mr. Tyler, who's representing the Patent Office.

[00:27:14] Speaker 01:
And a lot of the claims

[00:27:16] Speaker 01:
he'll have to address because my patent is only one IPR with respect to the 023 patent, and that was the only issue that Unified Patents addressed.

[00:27:27] Speaker 01:
So I'll go there first.

[00:27:28] Speaker 01:
I'll reserve as much time as I can for you to talk to the government about the other issues.

[00:27:33] Speaker 01:
So importantly in the 023 patent, there is no issue with respect to Adapt2.

[00:27:41] Speaker 01:
And in the 023 patent, there's no discussion of the CDMA, TDMA issue with ETO.

[00:27:47] Speaker 01:
That's not a prior art reference.

[00:27:49] Speaker 01:
In fact, the prior art references that were focused on in unified 023 patent were MASA and THROWER, which were not addressed in the appeal brief at all.

[00:28:03] Speaker 01:
So I want to jump quickly to the claim construction issue that does go across the cases, which is mobile device.

[00:28:10] Speaker 01:
And the elephant in the room that wasn't addressed at all by my opponent is whether mobile device is even a claimed term in the patent.

[00:28:20] Speaker 01:
If you look at the patent claims, Judge Stark you alluded to this, the claims are very broad.

[00:28:26] Speaker 01:
These claims in the 023 patent actually don't even claim movable base station.

[00:28:32] Speaker 01:
They just claim an apparatus generally.

[00:28:34] Speaker 01:
And the apparatus comprises three things.

[00:28:38] Speaker 01:
It comprises antennas, it comprises a receiver, and it comprises a transmitter.

[00:28:54] Speaker 01:
In the receiver, the mobile device is only what the receiver communicates with, receives signals from.

[00:29:02] Speaker 01:
That's the only reference to the mobile device.

[00:29:08] Speaker 01:
And the board focused on this at the appendix 15, noting that Carousell admits, and Mr. Bayer repeated it today actually, that what we have here is a movable base station.

[00:29:22] Speaker 01:
What was claimed was a movable base station that significantly improved wireless communications by acting as an intermediary between cell towers and mobile devices.

[00:29:33] Speaker 01:
So the movable base station is what the mobile device is communicating with, not the cellular network.

[00:29:46] Speaker 01:
That's the whole point of the invention.

[00:29:51] Speaker 01:
So let's go to the claim construction quickly.

[00:29:56] Speaker 01:
And specifically Carousel, and I think Judge Dyke, you focused on this, what they're advocating for is the construction of mobile device as a device that must register with and be directly communicating with the cellular network.

[00:30:12] Speaker 01:
And that's just not what this claim says.

[00:30:15] Speaker 01:
Right?

[00:30:15] Speaker 01:
This claim describes a receiver attached to the apparatus.

[00:30:18] Speaker 01:
It receives the signals from the mobile device.

[00:30:21] Speaker 01:
That is the apparatus itself.

[00:30:23] Speaker 01:
That's what's claimed here.

[00:30:26] Speaker 01:
And it's also not what the specification says.

[00:30:29] Speaker 01:
The whole point of the invention, as we just talked about, is for the mobile device to communicate with the mobile base station.

[00:30:36] Speaker 01:
And if you look at Appendix 721, for example, at Column 5, Line 26, it talks about antennas on the base stations used to communicate with the mobile devices.

[00:30:48] Speaker 01:
And then there's a separate set to communicate with the cellular network.

[00:30:54] Speaker 03:
Are there any embodiments disclosed in the specification that would not be within the scope of these broad claims if we were to adopt the construction that the patentee wants?

[00:31:07] Speaker 01:
No, I think it works the other way around, right?

[00:31:09] Speaker 01:
Is that the claim is so broad, it certainly could include cellular communication.

[00:31:14] Speaker 03:
Right, but they want us to narrow the scope of the claims by adopting their construction.

[00:31:21] Speaker 03:
Isn't that right?

[00:31:22] Speaker 01:
Yeah, I think that's fair.

[00:31:24] Speaker 03:
So is there anything broadly in the specification that would kind of get lost and cut out of the scope of the claims if we were to narrow them in the way that they ask us?

[00:31:36] Speaker 03:
Or maybe the answer is no.

[00:31:39] Speaker 01:
I think the answer is no.

[00:31:41] Speaker 01:
OK.

[00:31:43] Speaker 01:
And that maybe begs the question, Your Honor, whether you agree with me that mobile device is actually not claimed either, right?

[00:31:50] Speaker 01:
That it's just kind of part of

[00:31:52] Speaker 01:
the functionality of how the apparatus works as opposed to what's actually being claimed as the invention.

[00:32:00] Speaker 01:
There are a few more that are worth pointing out to the extent it's helpful.

[00:32:04] Speaker 01:
Appendix 721, column 6 describes standard radio interface between the mobile units and the moving base stations.

[00:32:12] Speaker 01:
Consistently throughout the specification, that's what's being claimed here.

[00:32:17] Speaker 01:
It's the communication between the mobile base station

[00:32:22] Speaker 01:
It's taking the mobile device, which was having trouble communicating before, and it's improving that by creating a mobile base station that the mobile device communicates with.

[00:32:34] Speaker 01:
It's not requiring that the mobile device, it's not claiming an invention that requires the mobile device to communicate with the cellular system.

[00:32:45] Speaker 01:
And the board also recognized that there were concessions made by Carousel

[00:32:51] Speaker 01:
during the IPR process.

[00:32:53] Speaker 01:
You can see that at the final written decision 14, and specifically it's quoting from Appendix 5106, where Carousel describes its invention as a movable basement and apparatus configured to provide important benefits to mobile devices, such as smartphone, tablet, and laptop users.

[00:33:19] Speaker 01:
And I do want to address very quickly, Judge Shaw, your question.

[00:33:23] Speaker 01:
I had the same problem with looking back and trying to find any definition of registration earlier that would explain it.

[00:33:30] Speaker 01:
And the only things we found was a discussion of how you register the movable base station.

[00:33:39] Speaker 01:
to the cellular tower.

[00:33:40] Speaker 01:
We didn't find anything specific to register a mobile device.

[00:33:46] Speaker 01:
But we did, some of what I've already quoted you, we did find discussions of how the mobile base station communicates with the movable base station.

[00:33:55] Speaker 01:
Did I just say that wrong?

[00:33:56] Speaker 01:
How the mobile device communicates with the movable base station.

[00:34:03] Speaker 01:
In sum, every part

[00:34:05] Speaker 01:
of the typical claim construction analysis from the claims, the specification, and the prosecution history as well as Carousel's own statements made during the IPR proceeding support the board's

[00:34:17] Speaker 01:
application and treatment of mobile device and for that reason with respect to the 023 pattern the board's decision should be affirmed.

[00:34:28] Speaker 01:
I did want to go quickly to the question of director review and the question of waiver and just want to point out one of the points at least we were making in our briefing and hopefully it was clear is that with respect to the director review that was asserted in this case

[00:34:44] Speaker 01:
They're not making any of those arguments here.

[00:34:47] Speaker 01:
So to the extent you have to give some part of harm to raise an issue in front of this court and have something to complain about, those issues that they raised as far as substantively to the director are nothing that was important enough to them to raise it in the briefing before this court.

[00:35:03] Speaker 01:
And I'll yield the rest of my time.

[00:35:10] Speaker 05:
Okay.

[00:35:10] Speaker 05:
Mr. Tyler.

[00:35:20] Speaker 02:
Good morning, your honors.

[00:35:21] Speaker 02:
May it please the court.

[00:35:24] Speaker 02:
My name is Mike Tyler.

[00:35:25] Speaker 02:
I'm here from the Solicitor's Office at the United States PTO.

[00:35:29] Speaker 02:
I'd like to start with mobile device and to judge your question about would an embodiment be excluded under the proposed definition that Carousell is asking.

[00:35:39] Speaker 02:
And I think it's instructive that at appendix 748 in the discussion of the high power CDMA mode that there's at least contemplation in the patent of an embodiment where the device itself is being overpowered by the cell network such that it can only communicate to the mobile base station

[00:35:59] Speaker 02:
And it's taught in the specification that it registers there.

[00:36:03] Speaker 02:
The breadth of the claims I think really is at the core of this issue is if the patentee wanted to limit their claims to certain types of devices, they could.

[00:36:14] Speaker 02:
They could have added claim language that discusses the registration.

[00:36:19] Speaker 02:
But what they're asking this court to do is to look at a very broad claim

[00:36:24] Speaker 02:
and find in one embodiment where it says it must do X to then read that into the claims, which is not permissible.

[00:36:34] Speaker 05:
Well, let's look, for example, on the 543 patent at claim 10.

[00:36:41] Speaker 05:
Because there is some mention of cellular signals in some of these claims, and this is an example of that.

[00:36:48] Speaker 05:
It's just an apparatus, blah, blah, blah.

[00:36:54] Speaker 05:
configured to receive a plurality of cellular signals.

[00:37:00] Speaker 05:
Doesn't that suggest that the

[00:37:02] Speaker 05:
claim involves cellular systems?

[00:37:07] Speaker 02:
This claim, it would, Your Honor, but again, it is talking about data being extracted from cellular signals.

[00:37:16] Speaker 02:
This is some requirement on the information that's being provided to the mobile unit.

[00:37:21] Speaker 02:
The mobile unit itself doesn't necessarily have to be a cellular unit, and I think

[00:37:26] Speaker 02:
It's extrinsic evidence to the claim construction, of course.

[00:37:29] Speaker 02:
But I think a telling bit of information is that the infringement allegations that Carousel had made in district court involved Wi-Fi devices being the mobile unit, which clearly do not register with cellular networks.

[00:37:42] Speaker 02:
So in a lot of ways, we're in the classic position of broad for infringement and try to get very narrow to avoid prior arrest.

[00:37:51] Speaker 02:
I also think it's instructive to look at, since we're looking at the claims of the 543 patent, if we turn to... I'm sorry.

[00:37:58] Speaker 05:
I'm not sure that I understand what your response was to my question.

[00:38:03] Speaker 05:
How can it be that claim 10 here of the 543 isn't limited to cellular systems?

[00:38:14] Speaker 05:
Am I missing something?

[00:38:17] Speaker 02:
Your Honor, what I'm trying to describe is that the patent, if we look in Column 6, I believe, and this is the 904 patent, Column 6, Lines 43 through Column 7, Line 1, this is where the patent describes the two distinct interfaces from the mobile unit, the mobile base station.

[00:38:40] Speaker 02:
It has a generic radio interface to the mobile unit, and then it is a little more specific even in the specification about the cellular from the mobile base station to the cellular network.

[00:38:54] Speaker 02:
But a great example is your Wi-Fi hotspot.

[00:38:57] Speaker 02:
Those are connecting to a cellular network.

[00:39:00] Speaker 02:
in here in Claim 10, what we're talking about is receiving from the cellular network a signal and then passing on to a device something that includes data extracted from that cellular signal to a mobile unit, which doesn't necessarily have to be a cellular device.

[00:39:19] Speaker 02:
I think how I'm trying to respond to your question about Claim 10 is we have to look at the interfaces separately, and in fact, their infringement allegations did as well.

[00:39:29] Speaker 02:
a cellular hotspot connecting to Wi-Fi devices, we would say it's in the scope of this claim.

[00:39:36] Speaker 02:
It's broad enough to encompass it.

[00:39:38] Speaker 02:
They're looking for construction now which would exclude that very infringement allegation.

[00:39:46] Speaker 05:
What again was the prior art that was relied on and which they say would not be in the same field if their construction were adopted?

[00:39:58] Speaker 02:
So that really does pertain to the EDO reference specifically.

[00:40:03] Speaker 02:
I think that the board, so there are a lot of references in moving parts.

[00:40:08] Speaker 02:
So I think maybe taking a step back, there are four patents at issue.

[00:40:12] Speaker 02:
What I heard counsel argue here today is that any of the basis that involve EDO is what they're challenging.

[00:40:20] Speaker 02:
What I didn't hear is any of the Gilhausen 65 reference.

[00:40:25] Speaker 02:
That the board found that even under their construction, those references taught that limitation.

[00:40:32] Speaker 02:
So should the board find either construction, the Gilhausen 865 reference is the primary reference on three of the four patents at issue.

[00:40:43] Speaker 02:
So it would take care of all of the patents except the 543 patent.

[00:40:48] Speaker 05:
Where they need ETO.

[00:40:49] Speaker 02:
Where ETO is, yes.

[00:40:54] Speaker 05:
And remind me, what is Edo involved in?

[00:40:57] Speaker 02:
So Edo is the car and the problem it was solving was in a mobile telephone at the time in a car, there was still a cord from where you would have your phone set up and the handset that you were talking on.

[00:41:12] Speaker 02:
Edo removes the cord and sets up a device which communicates to the outside world and then radio interfaces to a handset which is in the car itself.

[00:41:23] Speaker 02:
And there's no dispute that that would not necessarily be able to communicate with the fixed base stations.

[00:41:38] Speaker 02:
And I think, again, just a quick point that hasn't come up yet.

[00:41:41] Speaker 02:
In the prosecution during an appeal to the board, the patentee again made a very specific comment about what a mobile unit can be.

[00:41:50] Speaker 02:
and that's at appendix 2920.

[00:41:53] Speaker 02:
And there they stated the moving mobile units such as telephones, radio modems, or other types of radios.

[00:42:00] Speaker 02:
So a very broad radio interface standing telecommunication device.

[00:42:06] Speaker 02:
I'd like to move on briefly to the adapted two.

[00:42:10] Speaker 02:
I think here we've got a situation where again we're trying to read a limitation

[00:42:17] Speaker 02:
into the claim, but it's even one step removed.

[00:42:20] Speaker 02:
We're trying to read a limitation into an agreed upon construction from a district court, and arguably one that they're collaterally stopped from challenging now.

[00:42:29] Speaker 02:
I think it's also telling if we look at other claims at, I think it's the 904 patent, at claim.

[00:42:50] Speaker 02:
13, you'll see that, which is not one of the claims at issue, but when the patentee wanted to make sure that a predetermined path was a claim limitation, even in a preamble, you can see that claim 13 here uses the phrase a predetermined path.

[00:43:05] Speaker 02:
That is absent in the dependent claims in the 904 patent, which contain adapted to.

[00:43:13] Speaker 02:
And just to make also to be clear for the court,

[00:43:16] Speaker 02:
The term adapted to only appears in the 904 patents.

[00:43:20] Speaker 02:
So the other three patents would not be affected by whether or not this court agrees with appellant's construction.

[00:43:31] Speaker 02:
Unless there's anything else on the claim construction, I'll move on briefly to the obviousness.

[00:43:37] Speaker 02:
I think as I mentioned, I didn't hear any challenges to the CDMA combined with CDMA references that the board relied on.

[00:43:45] Speaker 02:
And specifically, those would be the Gilhausen references combined with the other Gilhausen references that broadly discuss cell phone technology.

[00:43:53] Speaker 02:
I think broader, though, is the challenge seems to be that the board was somehow trying to combine TDMA and CDMA standards.

[00:44:03] Speaker 02:
And if you look at the combinations, that's not the case.

[00:44:06] Speaker 02:
In each of the grounds, you have a telecommunications system as the primary reference.

[00:44:13] Speaker 02:
And then you have a teaching of

[00:44:15] Speaker 02:
something about telecommunication, so spatially separated antennas or cell site diversity.

[00:44:22] Speaker 02:
These are concepts which are being employed and combined with the primary reference.

[00:44:27] Speaker 02:
And I think the board's opinion speaks for itself as far as the rationale they give and the reasonings they give, which I do think satisfy the APA.

[00:44:37] Speaker 02:
And unless there's any questions about the adequacy of how the board presented the obviousness arguments, I'm happy to address the

[00:44:46] Speaker 02:
the remaining director review questions.

[00:44:49] Speaker 03:
What is your response?

[00:44:50] Speaker 03:
Where do we look for the Sipsville or Lacroetech concern?

[00:44:56] Speaker 03:
Can you point to a page?

[00:44:58] Speaker 02:
So I think the green brief, I tried in both green briefs to give in the summary the areas and highlight where in the opinions, the final written decisions where the board addressed these.

[00:45:12] Speaker 02:
So for instance,

[00:45:16] Speaker 02:
If we want to look at the 701 patent, we have a discussion starting on Appendix 91 running through Appendix 98 where the board is going through and discussing

[00:45:45] Speaker 02:
the evidence before it, the arguments made about why these references can't be combined, and relying on the fact that, again, we're not talking about trying to mesh technologies together as opposed to incorporating spatially separated antennas taught by one reference into the telecommunication system described in the primary reference.

[00:46:06] Speaker 02:
This would be what the board is referring to as something that would be able to be done by one of skill and the art without much

[00:46:14] Speaker 02:
trouble and with an expectation of success.

[00:46:28] Speaker 02:
And with respect to the notice and comment rulemaking just real quick, we still are of the position that these are procedural issues.

[00:46:42] Speaker 02:
even if they are not, Carousel had actual and timely notice of the terms.

[00:46:49] Speaker 02:
And as Your Honors pointed out, they availed themselves of the director review process set forth in those rules.

[00:46:56] Speaker 02:
And I think most importantly, which was already raised, is they can't identify any prejudice even if these rules were promulgated and they should have been done by a notice in common rulemaking.

[00:47:07] Speaker 02:
But the government's position is that that was not required.

[00:47:11] Speaker 03:
But if we were to agree with an argument I think you made that they waived certain issues by not presenting them in the director review, would that not constitute prejudice?

[00:47:22] Speaker 02:
I think in that case, Your Honor, that would.

[00:47:25] Speaker 02:
But the waiver argument we're making is not under a rule promulgated by the director.

[00:47:31] Speaker 02:
That's under just general principles of equity and judicial economy, where they have asked this

[00:47:37] Speaker 02:
this court to go back to the board and then they didn't even raise issues which now they say are central and dispositive and I

[00:47:46] Speaker 02:
forgot the words we heard earlier, but very key issues.

[00:47:49] Speaker 02:
They didn't even give the director an opportunity to look at them.

[00:47:54] Speaker 05:
I think that's a tough one.

[00:47:55] Speaker 05:
I mean, the whole idea is they're supposed to be selective in seeking director review.

[00:48:01] Speaker 05:
And in fact, I don't think there are any cases which really support the notion that there's a waiver by failing to raise issues before the director.

[00:48:11] Speaker 02:
And Your Honor, the CF site to Polycom is the support that we have.

[00:48:16] Speaker 03:
And if we reject this argument, it makes it easier for you to say there's no prejudice.

[00:48:21] Speaker 02:
That is correct.

[00:48:23] Speaker 02:
Unless there's any other questions, I will yield the balance of my time.

[00:48:27] Speaker 02:
Thank you, Mr. Tucker.

[00:48:32] Speaker 05:
Mr. Berry's got a little over two minutes here.

[00:48:40] Speaker 00:
I will be very brief.

[00:48:42] Speaker 00:
If there are certain things you want me to address, I'd be more than happy to do them.

[00:48:46] Speaker 00:
Real quick, with the last issue addressed, I would say about Polycom, the reason there was waiver was that there was a rule for the inter-party's read-to-read, which tends to feed our argument that these sorts of things should be in a rule.

[00:49:01] Speaker 00:
Going back to the section that the opposing council just brought up about when you asked where in the final written decisions is there that type of APA compliant discussion, I would note that that comes from the 023 patent discussion.

[00:49:18] Speaker 00:
And I don't believe that that portion has the ETO reference being discussed.

[00:49:25] Speaker 00:
which is the primary one that we have issues with TDMA.

[00:49:31] Speaker 00:
I would point out in the blue brief, we provided a portion of our argument where we cited to, here's the citation to their expert testimony with a discussion from Ido, where we kind of pushed that through all the way down to the evidentiary underpinnings of it from the final written decision.

[00:49:50] Speaker 00:
And I do think following that portion of the brief,

[00:49:53] Speaker 00:
that we put out, I think you'll see that there isn't an APA compliant decision on the TDMA CDMA reference.

[00:50:02] Speaker 00:
Real quick with the prosecution history, that section does say what it does with that one intro sentence that the petitioner made.

[00:50:15] Speaker 00:
I would point out that if you read the rest of the prosecution history, which is cited in the blue brief,

[00:50:21] Speaker 00:
you come back to the cell phone issue and the registration requirement in describing the handoff problem.

[00:50:28] Speaker 00:
So that's really taking a very isolated portion of the prosecution history and pushing it beyond that.

[00:50:35] Speaker 00:
In addition, neither party has addressed one of the legal questions that we presented, which is, if you believe the specification reads like we believe it reads, can something during the prosecution expand out

[00:50:49] Speaker 00:
that issue.

[00:50:50] Speaker 00:
And if you look at the case law, I think it's pretty clear you can narrow your claims, prosecution, history, file, wrap, or estoppel, but the idea that you would somehow expand the claims beyond that, I don't think that that is really within the law and certainly not within the facts of the intrinsic record before the court.

[00:51:08] Speaker 00:
And then the last point I will make,

[00:51:13] Speaker 00:
Your Honor, I believe you pointed out that there are claims where we are looking at the mobile device, specifically in the mobile unit.

[00:51:21] Speaker 00:
So I do think the idea that the claims are completely agnostic is simply not there.

[00:51:27] Speaker 00:
With that, I see my time has expired.

[00:51:30] Speaker 00:
OK, thank you.

[00:51:30] Speaker 00:
Thank all council cases submitted.

[00:51:32] Speaker 00:
Thank you, Your Honor.

[00:51:34] Speaker 00:
Cases are submitted.