[00:00:19] Speaker 05: Good morning, your honor. [00:00:21] Speaker 05: May it please the court. [00:00:23] Speaker 05: I want to bring two specific errors to the attention of this court in this appeal. [00:00:31] Speaker 05: The board erred in allowing time barred joined party, LGE, to participate in this unprecedented manner and extent that it did. [00:00:43] Speaker 05: And second, the board erred by improperly denying [00:00:48] Speaker 00: request for a motion to amend. [00:00:53] Speaker 01: On the first point you raised, so you're confined to whether or not their participation should have been allowed in the motion to amend situation? [00:01:02] Speaker 01: or in the case in its entirety? [00:01:05] Speaker 05: Basically, it should have been limited to what a joined time-barred party has been typically been allowed to do, which is that they can participate. [00:01:17] Speaker 05: And ZT was the original petitioner. [00:01:19] Speaker 05: LG is the time-barred petitioner that voluntarily agreed to take on a understudy passive role. [00:01:32] Speaker 05: And they were admitted on that basis. [00:01:33] Speaker 00: Would you refer to the party as a time barred party? [00:01:36] Speaker 00: They're not time barred with respect to Joinder, right? [00:01:40] Speaker 05: They were time barred. [00:01:42] Speaker 00: I mean, doesn't 315 specifically say that the time bar does not apply to a Joinder under 315C? [00:01:53] Speaker 05: It actually says that the time does not apply. [00:01:56] Speaker 05: 315B says the time bar does apply only for a request. [00:02:02] Speaker 05: It has never been said to therefore allow substantial participation for a time-barred party to equal to the original petition. [00:02:14] Speaker 05: That has never been the position of this court. [00:02:16] Speaker 05: It's never been the case in previous decisions of the board as well. [00:02:25] Speaker 01: So you're not talking about whether, I think, following up on what you still said. [00:02:30] Speaker 01: I mean, it says the statute explicitly in B says you can request Joinder, and C is Joinder under 3. [00:02:37] Speaker 01: So assuming if Congress contemplated a request, they obviously contemplated the possibility that someone would grant the request, right? [00:02:45] Speaker 01: Yes, you're right. [00:02:46] Speaker 01: So you're not talking about Joinder necessarily. [00:02:49] Speaker 01: You're talking about once having been joined, [00:02:55] Speaker 01: how much the joint party is allowed to do in the proceedings. [00:02:59] Speaker 01: Exactly. [00:02:59] Speaker 01: And where do we look for the answer to that question? [00:03:01] Speaker 01: In the board regulations, in Huntington Titan, or? [00:03:05] Speaker 01: Basically, several things, Your Honor. [00:03:08] Speaker 05: First, [00:03:11] Speaker 05: It's always been part of this compromise. [00:03:14] Speaker 05: And so we can't have the exception swallow the rule and simply say, hey, the time bar is now gone for joint parties. [00:03:21] Speaker 05: That simply would be not right, because it's part of the compromise in the AIA. [00:03:27] Speaker 02: What compromise are you talking about? [00:03:29] Speaker 02: And where is that in the statute? [00:03:33] Speaker 05: Your Honor, where it is in the statute is that it says it's only for a request. [00:03:39] Speaker 02: And that has been interpreted by- I don't understand that argument. [00:03:42] Speaker 02: If they're allowed to request Joinder, we just went over this. [00:03:45] Speaker 02: That assumes that Joinder is going to be granted. [00:03:47] Speaker 02: Yes, Your Honor. [00:03:48] Speaker 02: And if there's no time bar for that request, then that contemplates time bar parties from being joined. [00:03:56] Speaker 02: And you agree that that's possible? [00:03:58] Speaker 02: Yes. [00:03:59] Speaker 02: We're asking you about where do the limitations on their participation come from, and you're not giving us a very clear answer. [00:04:06] Speaker 02: Are they in? [00:04:07] Speaker 02: I don't think they're in the statute. [00:04:08] Speaker 02: Are they in the regulations? [00:04:11] Speaker 05: Basically, the board has always said, and that has been their practice, [00:04:16] Speaker 02: said where, in their regulations? [00:04:19] Speaker 05: In their previous decisions. [00:04:20] Speaker 05: OK. [00:04:21] Speaker 02: In what decisions? [00:04:23] Speaker 02: I'm sorry. [00:04:23] Speaker 02: In what decisions and what did they say? [00:04:25] Speaker 05: And we have listed every one of these decisions in our opening brief. [00:04:29] Speaker 05: And every time, they've been allowed to participate if the original petitioner goes away. [00:04:36] Speaker 05: But in this case, number one, ZTE is still adverse. [00:04:40] Speaker 05: ZTE is still challenging the original claims and the amended claims. [00:04:43] Speaker 01: And in addition. [00:04:44] Speaker 01: No, they're not. [00:04:45] Speaker 01: I thought there was the point of this. [00:04:48] Speaker 01: The board only allowed LG to participate because for the second amended complaint, amended claim, [00:04:55] Speaker 01: ZT indicated that they were not going to oppose. [00:04:59] Speaker 01: So there was no one left, other than the board itself. [00:05:02] Speaker 01: So it was Ponte or LJ. [00:05:05] Speaker 05: Yes, Your Honor. [00:05:06] Speaker 05: Only with respect to the revised amended claims. [00:05:09] Speaker 05: OK. [00:05:09] Speaker 05: On the record, ZT said, we're not going to challenge those claims that have been amended for the second time. [00:05:15] Speaker 05: That's correct. [00:05:16] Speaker 05: And so you? [00:05:18] Speaker 00: I was just going to say, so then the board took that as meaning that there was no party opposing [00:05:24] Speaker 00: the second amended claims, and that therefore, LGE could participate in that limited manner, right? [00:05:31] Speaker 05: Yes, Your Honor. [00:05:32] Speaker 05: Exactly in the limited manner, where basically, what was really permitted went far beyond the limited manner, where they could basically bring in new art. [00:05:44] Speaker 00: Do you think that if ZTE was opposing those amended claims, the second amended claims, [00:05:52] Speaker 00: Couldn't ZTE bring in new art? [00:05:58] Speaker 05: They could bring in new art for the amended claims. [00:06:00] Speaker 05: That's right. [00:06:01] Speaker 05: Yes. [00:06:02] Speaker 05: And they deliberately chose not to use the within also. [00:06:06] Speaker 00: Why can't LGE, who's stepping in the shoes of ZTE with the petition that ZTE provided, but also with the second amended claims, why couldn't they then raise part art when you agree that ZTE could have? [00:06:23] Speaker 05: Number one, ZTE, yes, they could bring in new art, but we only ask for, if they're gonna bring in new art for the revised amended claim, then we should at least get fair notice, and we should be given a chance to respond. [00:06:36] Speaker 01: That's the goal. [00:06:37] Speaker 01: But ironically, am I missing something about what happened in this case? [00:06:40] Speaker 01: You were the ones that brought in the new prior art, right? [00:06:42] Speaker 01: I mean, you listed the new prior, [00:06:45] Speaker 01: I can't pronounce the name, but it starts with a W. Yeah, with an awesome. [00:06:49] Speaker 01: You brought it in, so we're not even faced with the issue. [00:06:52] Speaker 01: Didn't you put it in as under your duty of candor? [00:06:56] Speaker 05: We mentioned it because it was part of the Google IPR, but it was never part of the record in this appeal. [00:07:05] Speaker 01: So you're saying that LG ZTE could have done that, but LG couldn't have done that. [00:07:13] Speaker 01: And if they did, then we would want a chance to respond. [00:07:16] Speaker 01: But more importantly. [00:07:17] Speaker 01: OK, so explain to me. [00:07:17] Speaker 01: That's the part I want to know more about. [00:07:19] Speaker 01: Because maybe I misread the record, but I understood that you did have an opportunity to respond. [00:07:25] Speaker 01: I mean, LG gives their opposition with a declaration. [00:07:30] Speaker 01: And you get to respond. [00:07:32] Speaker 01: And I think under whatever authority there is, the board's rules or whatever, you could put in new evidence. [00:07:40] Speaker 01: You could have put in a declaration, and you chose. [00:07:43] Speaker 01: not to be relied on attorney argument. [00:07:45] Speaker 01: Am I wrong in my recitation? [00:07:47] Speaker 05: We relied on the expert reports that already existed, but we were not given a chance to amend our claims, for example. [00:07:54] Speaker 01: Oh, wait. [00:07:55] Speaker 01: So you're not talking about being able to put in new evidence that's responsive to the opposition. [00:08:00] Speaker 01: Your complaint is this. [00:08:02] Speaker 01: you should have been able to then amend your claim a third time? [00:08:06] Speaker 01: Because we were... Did you seek to amend your claim a third time, and did that get rejected? [00:08:11] Speaker 01: We simply were never given the chance. [00:08:14] Speaker 01: Well, in order to get the chance in most of these proceedings, you need to ask for the chance. [00:08:18] Speaker 01: How can you say you were rejected when you never asked for it? [00:08:21] Speaker 01: How do we know if the board would have granted your [00:08:23] Speaker 05: Well, it's not part of the board's procedures, Your Honor. [00:08:27] Speaker 05: All that they give us is basically an amendment and a revised amendment. [00:08:30] Speaker 05: That's all they give us. [00:08:31] Speaker 05: But just along the same lines, Your Honor, the one thing that I want to point out is that for claim 22, which is a very critical claim, for that claim, we did not revise that claim. [00:08:47] Speaker 05: That claim was amended, and ZT opposed that claim. [00:08:53] Speaker 05: And the board, in the preliminary guidance, allowed that claim. [00:08:57] Speaker 05: So we did not revise it. [00:08:59] Speaker 05: And yet, LG used a new reference, which the board's own rules say you cannot use [00:09:08] Speaker 05: You cannot assert in your replies matter that has not been revised. [00:09:14] Speaker 05: And we did not revise that claim. [00:09:16] Speaker 05: Claim 22 was never revised. [00:09:19] Speaker 05: And yet LG produced a new piece of prior art against that claim. [00:09:24] Speaker 05: And then that claim was ultimately rejected when, by their own rules, by the board's own rules, the replies have to be limited to the revisions. [00:09:35] Speaker 02: Well, did you point that out in your response? [00:09:37] Speaker 01: Yes, we did, Your Honor. [00:09:40] Speaker 01: 22, you're saying that was different. [00:09:43] Speaker 05: Yes. [00:09:43] Speaker 02: What was the board's position on that? [00:09:46] Speaker 05: They just simply rejected claim 22, despite their own preliminary guidance saying it was allowable. [00:09:52] Speaker 01: Well, did they deal in their opinion with the argument that you're telling us you made to them? [00:09:59] Speaker 01: about how claim 22, they shouldn't have been allowed to. [00:10:02] Speaker 01: No, Your Honor. [00:10:04] Speaker 02: Let me make sure I'm following this. [00:10:05] Speaker 02: You have your first set of amended claims, you have claim 22. [00:10:08] Speaker 02: Yes, Your Honor. [00:10:09] Speaker 02: And then you have proposed revised claims. [00:10:13] Speaker 02: Other claims, but we didn't change 22. [00:10:15] Speaker 02: But 22 was included in that group of revised claims, you just hadn't changed it. [00:10:20] Speaker 05: We basically didn't change it. [00:10:22] Speaker 05: 22 was a replacement. [00:10:25] Speaker 05: Claim 14. [00:10:26] Speaker 05: And we just didn't touch it at all in the revision, because the board in the preliminary guidance said it was allowable. [00:10:31] Speaker 05: So there was no reason for us to do anything. [00:10:33] Speaker 01: So can you show us where you made that argument? [00:10:37] Speaker 01: Can you point us to the record? [00:10:38] Speaker 01: We've got a pretty heavy record here. [00:10:40] Speaker 01: Where you made that argument to the board? [00:10:43] Speaker 05: We will definitely do that, Your Honor. [00:10:45] Speaker 05: We will definitely do that, Your Honor. [00:10:49] Speaker 05: A couple other points. [00:10:51] Speaker 05: ZTE actually was adverse all the way through. [00:10:58] Speaker 05: And the rules of preclusion in cases like Taylor v. Sturgeon and the judicial estoppel doctrine are the kind of important [00:11:12] Speaker 05: president where LG voluntarily made these concessions and yet chose to take on a different role afterwards. [00:11:24] Speaker 05: One also in my limited amount of time, I want to talk about the revised motion to amend. [00:11:28] Speaker 05: There is written description support for a cellular phone. [00:11:33] Speaker 05: The cellular phone is shown. [00:11:35] Speaker 01: That's an alternative basis for affirming the board, right? [00:11:39] Speaker 05: It's only for claims 21 and 24. [00:11:41] Speaker 05: But the obviousness is for 20 to 24, all of them. [00:11:47] Speaker 05: But there is support. [00:11:49] Speaker 05: And importantly, a provisional application is, in fact, a US patent application publication, because it is available publicly at the time the patent issues. [00:12:01] Speaker 05: And for the rules of incorporation under section 1.57, what matters is whether, at the time [00:12:11] Speaker 05: that information is publicly available and and every provisional nobody disputes it is available it was properly incorporated by reference and there was really no reason for Finding that there's no cellular phone support. [00:12:27] Speaker 02: I know you're into your little time, but I want to go back to this [00:12:31] Speaker 02: 22 arguments that you didn't change it so they shouldn't have that. [00:12:36] Speaker 05: Where's that in your blue brief? [00:12:39] Speaker 05: I just look through it and I don't see it. [00:12:45] Speaker 05: We'll find it for you. [00:12:46] Speaker 02: I mean you wrote it you should know what's in your brief. [00:12:49] Speaker 00: Is it at pages 47 to 48? [00:12:51] Speaker 00: Yeah. [00:12:54] Speaker 05: We mentioned it repeatedly and also mentioned it in our reply brief but we'll give you the page citation just a minute [00:13:01] Speaker 02: But the problem is, when you do it on rebuttal, then it means they don't get to respond to the arguments you're making here today. [00:13:08] Speaker 05: Yes, Your Honor. [00:13:08] Speaker 05: We understand. [00:13:09] Speaker 05: We believe we mentioned it in our blue brief as well. [00:13:12] Speaker 05: But we'll give you the page site for sure when I come back. [00:13:20] Speaker 05: Your Honor, it's there on page 47, the bottom of page 47 of our blue brief. [00:13:25] Speaker 05: Thanks to my co-counsel. [00:13:27] Speaker 05: This is most egregious for Claim 22. [00:13:29] Speaker 05: That's that language at the bottom on page 47 of the blue brief. [00:13:58] Speaker 01: So you're dividing your time up, but only two minutes for Mr. Foreman. [00:14:03] Speaker 04: Yes, Your Honor. [00:14:05] Speaker 04: Although, if you care to hear more from him, I'm happy to see more. [00:14:10] Speaker 04: William Peterson, on behalf of Apoly LG Electronics, may please the court. [00:14:17] Speaker 04: When ZTE withdrew its opposition to Tsai Wee's amended claims, the board acted within its discretion in allowing LG to oppose them. [00:14:26] Speaker 04: The board followed its reasoned policy preferences in favor of adversarial presentation and did not abuse its discretion on the merits substantially. [00:14:35] Speaker 01: So what is your understanding of the board's policy that you could not participate as long as ZTE was involved in the case? [00:14:44] Speaker 01: Is that your view, or is that just something that you gratuitously said you would do to make things a lot easier? [00:14:51] Speaker 04: I don't believe the board has adopted a policy and a presidential decision or by regulations. [00:14:56] Speaker 04: It is something that we offer to the board to serve in an understudy role as long as ZTE was an active party. [00:15:05] Speaker 04: And what we argued to the board is that ZTE seeks to be an active party when it stops opposing. [00:15:11] Speaker 01: Well, what about hypothetically? [00:15:13] Speaker 01: Let's leave aside the petition, because the petition is what it is. [00:15:16] Speaker 01: But let's assume in this amendment process that ZTE continues to participate, but you weren't satisfied with the job they were doing. [00:15:24] Speaker 01: And you thought their arguments were wholly insufficient. [00:15:27] Speaker 01: Although they were clearly participating, you weren't pleased with that. [00:15:32] Speaker 01: Would you then have the ability to come in or based on your agreement at least to the board would you be recruited. [00:15:39] Speaker 04: I'm going to say we would likely be precluded. [00:15:42] Speaker 04: I can come up with exceptions. [00:15:44] Speaker 04: For example imagine there was some type of agreement between Cy we and ZTE in which ZTE agreed to oppose but to do so using only [00:15:53] Speaker 04: weak prior art references. [00:15:55] Speaker 04: So you could imagine sort of nominally adversarial circumstances. [00:15:59] Speaker 04: But I think in general, as long as ZTE was actually opposing and fighting against them, we wouldn't be able to second-guess ZTE's strategic choices. [00:16:09] Speaker 01: Now, with regard to this piece of prior art that starts with a W and I can't pronounce, do you consider that new or do you consider that having already been submitted by the patent owner in this case? [00:16:20] Speaker 04: We certainly think the patent owner referred to it, and CTE appeared to have incorporated and directed the board to its briefing about Withano-Awesome. [00:16:31] Speaker 04: You'll see that in appendix pages 1060 to 1061. [00:16:35] Speaker 00: It was in connection with what? [00:16:36] Speaker 00: That they were talking about Withano-Awesome? [00:16:38] Speaker 04: Their duty of candor. [00:16:39] Speaker 04: They were disclosing related prior art to the board as part of the revised motion to amend. [00:16:44] Speaker 04: And recall, this was the same board panel that heard [00:16:48] Speaker 04: the Google versus Cy we IPR, which involved challenges to some of the same claims for the same patent and essentially indistinguishable amendments and found those proposed amendments in that IPR. [00:17:00] Speaker 00: Unpatentable as obvious over the combination of with on a wasp and Bachman so the same combination that makes with an awesome every say a Record in this particular IPR. [00:17:13] Speaker 04: I don't know if it makes it a record I think it makes it very close given sigh we attempt to incorporate its briefing certainly under the board's current regulations which are even more restrictive than under the hunting Titan standard and [00:17:24] Speaker 04: that it was operating at the time, the board would have been able to make it of record because it was readily identifiable in a related proceeding before the board. [00:17:33] Speaker 04: So this is one where we think even if LG had not presented these arguments, the board certainly would have been able to respond to identify this evidence. [00:17:41] Speaker 00: What about what's your response about claim twenty two. [00:17:44] Speaker 00: If claim twenty two between the first suggested proposed amendment and the second proposed amendment never changed. [00:17:52] Speaker 00: Why is it that LGE should be able to rely on new priority for that particular claim. [00:17:56] Speaker 04: Well so we're operating under the board's pilot process related to amendments. [00:18:03] Speaker 04: So this is [00:18:04] Speaker 04: You'll find that 84 Federal Register 9497-01, it sets out the procedures. [00:18:10] Speaker 04: And it gives a patent owner a choice when it has requested preliminary guidance. [00:18:15] Speaker 04: So in response to preliminary guidance from the board, the patent owner can simply say, we are not going to file anything, at which point the petitioner then files a response to the preliminary guidance. [00:18:28] Speaker 04: But the petitioner cannot file new evidence at that point [00:18:32] Speaker 04: And then the patent donor gets to file a reply to the petitioner's response and doesn't get to file new evidence. [00:18:38] Speaker 04: But the patent donor has another choice, which is what CIWI took, and that is to file a revised motion to amend. [00:18:44] Speaker 04: And when they file that, the petitioner gets to come in and [00:18:49] Speaker 04: essentially restart the motion to amend based on responses to the preliminary guidance, what's already been said. [00:18:56] Speaker 04: And in response to that, the petitioner gets to respond to the revised motion to amend with evidence and arguments that it has available in response to that, in response to the preliminary guidance. [00:19:07] Speaker 04: So under this pilot program, the Patent Office explained that generally speaking, [00:19:15] Speaker 04: New evidence can be submitted with every paper in the motion to amend process. [00:19:20] Speaker 04: So that's 84 Federal Register 9,500. [00:19:23] Speaker 04: So this is one where when Tsai We filed a revised motion to amend, [00:19:29] Speaker 04: ZTE, LG, whoever was opposing that revised motion, was able to come forward with evidence. [00:19:34] Speaker 04: Now, the easier argument, Judge Stoll, probably on this record, is simply forfeiture. [00:19:38] Speaker 04: That although CyWhee complained generally about LG's participation in the process, CyWhee never complained about LG raising the Withana-Mawson reference in opposition to any of its claims in response to the revised motion to amend. [00:19:56] Speaker 04: I think the closest my friend came [00:19:59] Speaker 04: was in a motion to exclude LG's evidence attached in opposition to its revised motion to amend. [00:20:07] Speaker 04: You'll see that motion to exclude at appendix pages 1577 to 1583. [00:20:12] Speaker 04: But the board rejected that motion to exclude, both on the merits and because that motion to exclude was untimely. [00:20:21] Speaker 04: You see that on appendix pages 100 to 101. [00:20:24] Speaker 04: And what the board said was, reliance on generalized objections to LG's participation is insufficient. [00:20:32] Speaker 04: And that's exactly what they're trying to rely on now. [00:20:36] Speaker 04: Generalized objections to LG's participation are supporting this very specific argument about the use of Withana Wassim in particular, and particularly with respect to claim 22. [00:20:46] Speaker 01: So all of what we finally found in the blue brief on page 47, [00:20:51] Speaker 01: was not an argument that was made to the board? [00:20:55] Speaker 04: No, Judge Post, it was not. [00:20:56] Speaker 04: They objected to LG's participation. [00:20:59] Speaker 04: They objected to several arguments that they identified as new arguments. [00:21:03] Speaker 04: And you'll generally see those listed on Appendix Page 96 of the board's decision. [00:21:10] Speaker 04: There's a listing of issues, such as patent eligibility under Section 101. [00:21:17] Speaker 04: You'll see them listed as patent donor estoppel. [00:21:21] Speaker 04: But what you don't see is any specific objection that says you cannot raise new prior art in response to our revised motion to amend. [00:21:38] Speaker 01: Well, I thought that the argument we were talking about here on claim 22 was even more specific than that. [00:21:44] Speaker 04: And I'm sorry. [00:21:45] Speaker 04: And you certainly don't even see, and you especially can't raise new prior art with respect to claim 22. [00:21:54] Speaker 04: And so you can see, on Appendix Page 99, what the board said is it was not going to address the substance of LG's new arguments. [00:22:03] Speaker 04: So the new arguments were things like patent eligibility, patent donor estoppel. [00:22:10] Speaker 04: Unpatentability under Section 103 was the same argument supported by new evidence. [00:22:16] Speaker 04: And it rejected Tsai Wei's motion to exclude on Appendix Pages 100 to 101 as untimely. [00:22:22] Speaker 04: Thus we find PsyWii did not make a timely objection to the challenged exhibits. [00:22:27] Speaker 00: I have a more general question for you. [00:22:30] Speaker 00: In a circumstance like this where a party would not necessarily be able to participate and instead has to take a back seat as a joining party, why do parties want to join other petitioners' IPRs? [00:22:46] Speaker 04: It's an interesting question, Judge Schultz, one that we have discussed. [00:22:49] Speaker 04: There are some advantages to doing so. [00:22:51] Speaker 04: One is that it may delay district court proceedings as a participant in an IPR. [00:22:57] Speaker 04: The other is to collaborate. [00:22:58] Speaker 04: The board directed LG and ZTE to file papers in the IPR jointly. [00:23:06] Speaker 04: It directed them to file them as consolidated proceedings. [00:23:08] Speaker 04: And it also protects LG against the risk of ZTE settling the IPR. [00:23:13] Speaker 04: So if ZTE had reached a settlement agreement [00:23:15] Speaker 04: with Tsai Wee and simply withdrawn, LG at that point would have been able to step forward and become the lead petitioner at that point after ZTE had settled. [00:23:27] Speaker 04: The board isn't required to proceed to a final decision if there's a settlement with the petitioner. [00:23:32] Speaker 04: And so having a joint petitioner in that case would allow LG to participate. [00:23:37] Speaker 04: But I do think this case and this non-opposition by ZTE [00:23:43] Speaker 04: illustrates some of the possible risks for a joint petitioner. [00:23:47] Speaker 04: And it may be, we'll be advising our clients in the future to be more careful with it. [00:23:53] Speaker 04: But I also think the board acted quite right, wisely, in following the principles of adversarial presentation and ensuring that there was a real testing of the proposed amended crimes. [00:24:04] Speaker 00: I correct in understanding that when you join, you also agree to be bound by any estoppel. [00:24:09] Speaker 04: That is certainly possible. [00:24:11] Speaker 04: I think we would have had arguments based on the unique facts of this case that we may not have been found in the same way. [00:24:19] Speaker 04: But that was certainly it looked like Siwi's intent was to use a stoppile against us and to argue that Invalidity was simply off the table for the amended claims in a district court proceeding where ZTE did not oppose the amendment and LG was [00:24:38] Speaker 04: The attempt, at least, was for LG not to be able to raise any opposition to the amendment at all. [00:24:43] Speaker 01: Can I just ask you a general question? [00:24:45] Speaker 01: Because I haven't had one of these cases in a while. [00:24:49] Speaker 01: So if you join, then have we decided yet whether or not, I mean, a stopper would apply in the district for proceedings correct if you joined as a party to this case. [00:24:59] Speaker 01: And in that circumstance, you would be bound in terms of a stopper and limited [00:25:05] Speaker 01: to what the petition said that the other side filed, right? [00:25:08] Speaker 04: So there's a risk for you going in. [00:25:09] Speaker 04: There certainly is. [00:25:11] Speaker 04: And we certainly accepted that risk with open eyes. [00:25:16] Speaker 04: Again, we were instructed to coordinate jointly with ZTE. [00:25:20] Speaker 04: We were very happy to do so. [00:25:22] Speaker 04: I think we accepted the risk that ZTE might choose strategically to oppose the revised amended claims in a way that was different than we might choose to oppose them. [00:25:31] Speaker 04: But I don't think we accepted the risk that ZTE would [00:25:35] Speaker 04: in its own words, withdraw all objections to the amended claims. [00:25:39] Speaker 01: But you would, I mean, in your understanding, I'm a little confused because it was a regulation that's in effect now, but it wasn't in effect when the board decided this case. [00:25:48] Speaker 01: Was there some change in the jurisprudence here? [00:25:53] Speaker 04: The regulation with respect to the prior art that the board [00:25:57] Speaker 04: Yes, so if you recall, the board issued the presidential decision in Hunting Titan, and that was in between the initial denial of LG's participation and the board's reconsideration. [00:26:08] Speaker 04: That presidential decision in Hunting Titan said that the board may always consider any new grounds of unpatentability that's consistent with the Nike decision, but should do so in certain rare circumstances. [00:26:23] Speaker 04: Now it suggested the board could consider new grounds of unpatentability [00:26:27] Speaker 04: when, for example, the petitioner didn't oppose a motion to amend. [00:26:31] Speaker 04: And also said, even if a petitioner opposes a motion to amend, there may be times when the board should step in and consider readily identifiable [00:26:42] Speaker 04: evidence of record. [00:26:43] Speaker 04: Following the Hunting Titan decision by the presidential panel, the board, the Patent Office issued regulations. [00:26:51] Speaker 04: What those regulations say is, and that's 37 CFR 1.21 D3, it suggests that that readily identifiable and persuasive limitation would apply even when a patent owner doesn't participate. [00:27:09] Speaker 04: Sorry, even when a petitioner doesn't participate. [00:27:13] Speaker 04: That was what your concurrence in Hunting Titan highlighted, Judge Prost. [00:27:17] Speaker 04: So we certainly share that concern. [00:27:18] Speaker 04: Those regulations don't apply in this case, but I would note even if they did apply, those regulations would still allow the board to consider the Luthorna Laws in reference. [00:27:27] Speaker 04: Unless the panel has further questions. [00:27:31] Speaker 04: Thank you. [00:27:45] Speaker 03: May it please the court? [00:27:46] Speaker 03: I'd just like to address two issues quickly. [00:27:49] Speaker 03: First is the issue about Claim 22. [00:27:52] Speaker 03: I agree with LG's counsel that that issue was forfeited because it wasn't raised before the board. [00:27:59] Speaker 03: Even if they can point to something in the blue brief about it, they did not raise it before the board. [00:28:06] Speaker 03: Second, with respect to Claim 22, [00:28:10] Speaker 03: Even if they had raised the issue, I think LG had the right to raise a new prior art. [00:28:19] Speaker 03: If you look at the Federal Register guidance on the revised, the Motion to Amend pilot program, it says that both the opposition and the reply may be accompanied by new evidence that responds to issues raised in the preliminary guidance or in the corresponding revised Motion to Amend or opposition. [00:28:39] Speaker 03: So LG was allowed to raise new evidence in response issues raised in the preliminary guidance so if the if the board looked at the first opposition to the motion of men with respect to claim 22 and said You know, we think that petition didn't meet its burden then petitioners allowed to [00:29:02] Speaker 03: offer new evidence that responds to that. [00:29:05] Speaker 03: So if they say, well, OK, well, the board rejected us here with credit. [00:29:09] Speaker 01: If we had just claimed 22 and no other claims at issue here, they get a second right? [00:29:15] Speaker 03: Well, no. [00:29:15] Speaker 03: I mean, if we had claimed 22 and the board said that the claim was patentable, then there wouldn't be a need for a revised motion to amend. [00:29:30] Speaker 03: But because there was a revised motion to amend, I don't see any problem with responding based on the board's preliminary guidance. [00:29:44] Speaker 03: I guess the other quick issue I want to raise is one quick question. [00:29:48] Speaker 00: Sure. [00:29:48] Speaker 00: It's my understanding that once a party is joined, there are no actual statutes or regulations that prohibit their participation in the IPR. [00:29:58] Speaker 00: And instead, there's prior board decisions. [00:30:00] Speaker 00: Do I have that correct, that any prohibitions are coming from not from regulations or statutes? [00:30:06] Speaker 03: That's correct. [00:30:07] Speaker 03: The only prohibition that I'm aware of is this court's precedent stating that a joint party cannot raise new grounds in their petition. [00:30:14] Speaker 03: Otherwise, there's no. [00:30:16] Speaker 00: I guess that comes from statute then, an understanding of what the petition, that the petition sets the stage. [00:30:21] Speaker 00: Correct. [00:30:21] Speaker 00: Correct. [00:30:21] Speaker 03: That's this court interpreting the statutes. [00:30:24] Speaker 03: I guess quickly the one other issue I just want to raise is with respect to this incorporation by reference issue. [00:30:32] Speaker 03: The regulation clearly states that essential material is only a US patent or US patent application publication. [00:30:43] Speaker 03: The PTO has explained why that is the case, because it wants the essential material easily found by the public. [00:30:54] Speaker 03: So it either needs to be in the specification or in a document that is easily retrieved by the public, and the PTO has made the [00:31:03] Speaker 03: the policy decision that US patents and published US patent applications are easily retrievable by the public and can be considered essential material. [00:31:15] Speaker 00: And as a practical matter, why isn't the other document provisional, why isn't that easily obtainable by the public? [00:31:22] Speaker 03: Because they're not necessarily published. [00:31:25] Speaker 03: There are certain circumstances where a provisional can become publicly available, but it's not, as a rule, they're not considered published applications. [00:31:35] Speaker 03: They're not always published. [00:31:38] Speaker 01: Thank you. [00:31:39] Speaker 01: OK, since we went over, sir, we'll restore four minutes of rebuttal if you need anything. [00:31:44] Speaker 01: Thank you, Your Honor. [00:31:48] Speaker 05: Your Honor, first, with respect to claim 22, [00:31:51] Speaker 05: That issue was absolutely not forfeited. [00:31:55] Speaker 05: Here's the sequence of events. [00:31:58] Speaker 00: Do you have the site for us? [00:31:59] Speaker 00: Yes. [00:32:00] Speaker 00: I mean, that's going to be the best way to answer this question is to tell us exactly where we're going to find where you raised it in the appendix. [00:32:07] Speaker 05: Yes. [00:32:07] Speaker 05: Yes, Your Honor. [00:32:10] Speaker 05: The sequence with appendix sites is listed in pages 47 and 48 of the blue brief. [00:32:16] Speaker 05: But briefly, what we did was in the reply [00:32:21] Speaker 05: to LG's opposition to our revised motion to amend. [00:32:30] Speaker 05: We noted that claim 22 was not revised because it was deemed to be allowable by the board. [00:32:40] Speaker 05: The other four claims we revised because the board had problems [00:32:45] Speaker 05: its preliminary guidance with respect to those up for claims and so we revised only the claims where the board had a problem with it and we told the board that we're not revising the fifth claim because it's allowed and and so we we that's that's where on the record we we pointed that out what is your appendix site yeah we had asked you for an appendix site I didn't hear one oh [00:33:15] Speaker 05: but I mean if you want to give us the exact panic site that you think is best that would be helpful yeah we I believe the the appendix site relating to the board's preliminary guidance is one two five zero one two five one where basic [00:33:40] Speaker 00: That's where, what about where you actually raise this issue? [00:33:43] Speaker 00: What is the best site for that? [00:33:46] Speaker 05: I don't have that handy, Your Honor, but we'll make that available to you and we'll point out to you in a letter where we challenge that. [00:33:57] Speaker 05: Also, it is incorrect when they say that the board's rules [00:34:05] Speaker 05: It's a free for all once you file a revised motion to amend. [00:34:08] Speaker 05: That is not the board's rules. [00:34:10] Speaker 05: The board's rules do not allow an opposition to a revised motion to amend to rehash all issues and arguments. [00:34:20] Speaker 05: The RMTA itself is limited by its own rules to the preliminary guidance or to the petitioner's oppositions. [00:34:28] Speaker 05: And all other filings are limited in scope [00:34:31] Speaker 05: to the specific points raised in the revision. [00:34:35] Speaker 05: So their replies have to be limited to things that are in the revision. [00:34:40] Speaker 05: Where things are not revised, they don't get to bring in new art like they did to respond to things that we didn't even touch. [00:34:50] Speaker 01: Well, yeah, the question remains. [00:34:56] Speaker 05: We will definitely do that. [00:35:00] Speaker 05: In addition, Your Honors, the Witton Awesome reference was very much part of these IPRs. [00:35:07] Speaker 05: But ZTE never relied on Witton Awesome, even though they were aware of it. [00:35:11] Speaker 05: They were part of the Google IPR where Witton Awesome was mentioned. [00:35:14] Speaker 05: And ZTE never relied on it in their response to our motion to amend. [00:35:26] Speaker 05: LG and CT were around the reference and they knew it. [00:35:30] Speaker 05: So LG basically took on the risk because they could have filed their own IPR. [00:35:37] Speaker 05: They never filed it. [00:35:38] Speaker 01: I don't understand the point you're making. [00:35:42] Speaker 01: If CTE didn't raise it in the first amendment and then it disappears from the scene and isn't opposing the second, are you saying that LG [00:35:52] Speaker 01: couldn't make arguments that ZTE didn't make in the First Amendment? [00:35:57] Speaker 05: They could make arguments, but they couldn't bring new art. [00:36:01] Speaker 01: Well, it's not new art to the record. [00:36:05] Speaker 01: You mean it's art different than what ZTE had put forward in the First Amendment? [00:36:12] Speaker 01: Yes, Your Honor. [00:36:13] Speaker 01: What is your basis for that limitation? [00:36:16] Speaker 01: I mean, if ZTE had remained, [00:36:19] Speaker 01: and there were second amended claims, the CTE could have brought in that reference. [00:36:25] Speaker 01: But is that your position, or that they couldn't have done it either? [00:36:28] Speaker 05: Well, we have never been confronted with a situation where [00:36:36] Speaker 05: in the second round of amendments, new art is brought in. [00:36:40] Speaker 05: That has never been a situation. [00:36:42] Speaker 05: But the original petitioner is different. [00:36:44] Speaker 05: We understand the original petitioner is different. [00:36:46] Speaker 05: Here, we're dealing with a time bar joint petitioner. [00:36:49] Speaker 05: And so there's never been a case in front of the board where a time bar joint petitioner has brought in new prior art references and made new arguments [00:37:01] Speaker 05: which they were never allowed to make in the first place. [00:37:05] Speaker 05: This is entirely new territory, Your Honor. [00:37:09] Speaker 05: Okay, thank you.