[00:00:00] Speaker 04:
Our next case is for Medics v. Apple, 2022-1523.

[00:00:05] Speaker 04:
Mr. Timofey, I've run you already.

[00:00:10] Speaker 04:
More on the 135 pattern.

[00:00:13] Speaker 03:
Yes, the 135 pattern, Your Honor.

[00:00:16] Speaker 03:
Your Honor, and may it please the Court.

[00:00:19] Speaker 03:
This appeal presents both a procedural and a substantive challenge to the PTO's decision below.

[00:00:25] Speaker 03:
As to the procedural challenge, which is a threshold issue, the board did not provide Vernetics with proper hearing.

[00:00:32] Speaker 03:
Prior to the Supreme Court's decision in Arfrax, Vernetics filed a petition for panel rehearing.

[00:00:37] Speaker 03:
In that request, Vernetics also preemptively and prospectively requested any relief that the Supreme Court will provide in its forthcoming decision.

[00:00:46] Speaker 03:
Relying on internal agency guidance, which was promulgated after Vernetix requested the hearing, the board construed Vernetix's request as waiving panel rehearing in favor of direct review.

[00:00:58] Speaker 03:
That was improper.

[00:00:59] Speaker 03:
The PTO's guidance, which the board invoked, did not even address inter-budget re-exams, and so could not have deprived Vernetix of its right to panel rehearing under existing regulations.

[00:01:11] Speaker 03:
More importantly, there is a question whether Commissioner Hirschfeld even reviewed the merits of Vernetix's request.

[00:01:17] Speaker 03:
We say so because in opposing Vernetix's request, Apple argued, invoking the PTO's interim guidance, that Vernetix was not entitled to request direct review because our friends did not apply to re-exams.

[00:01:31] Speaker 03:
The PTO itself identified that as a lead issue in Vernetix's request.

[00:01:37] Speaker 03:
And Commissioner Hirschfeld's Unreasoned Order does not indicate the specific basis for denial.

[00:01:42] Speaker 03:
And whether he agreed with it.

[00:01:43] Speaker 01:
Is there something about the character of Commissioner Hirschfeld's denial of director review that somehow signaled that he felt precluded from even considering the merits of your request?

[00:02:00] Speaker 01:
compared to other Commissioner Hirschfeld denials of other requests for director review or is the character essentially the same they all uniformly say just denied without really any further explanation

[00:02:15] Speaker 03:
Ioanna, they're the same.

[00:02:17] Speaker 03:
So the order was just, I believe, you know, it's like a two-sentence order.

[00:02:22] Speaker 03:
That review was denied.

[00:02:24] Speaker 03:
The board's decision is the final decision for the agency.

[00:02:27] Speaker 03:
They have analogous, if not the same, similar denials that he should be in.

[00:02:34] Speaker 01:
So what I'm wondering is, if he felt like he was precluded from engaging in any form of direct review for an inter-parties re-examination,

[00:02:45] Speaker 01:
wouldn't he have indicated that in his denial?

[00:02:49] Speaker 01:
Instead of a denial, perhaps a dismissal of the request for review.

[00:02:54] Speaker 03:
Your Honor, I think we fundamentally don't know that.

[00:02:57] Speaker 03:
The only piece of evidence suggesting that, in fact, he may have felt he was precluded was the fact that the PTO on its own identified the question whether Arfrax had been applied to interpret his re-exams as the lead issue in our request for a hearing.

[00:03:12] Speaker 03:
We certainly did not raise that issue and did not argue that in our request for a hearing.

[00:03:18] Speaker 03:
So even though the form is, we do agree, the form of the order was the same as the denials that he issued in requests dealing with IPRs and PGRs, still the fact that there was no reasoning provided and that that issue was identified by the PTO

[00:03:36] Speaker 03:
suggested that Commissioner Herschfeld may have felt, because he already had the Sue Sponda authority to review decisions in inter-party re-exams, that the Burnettics did not have a right to petition for direct review for my re-exam.

[00:03:50] Speaker 05:
The board, the PTO, or the decision-making on this, read your re-hearing petition as, in effect, asking for

[00:04:01] Speaker 05:
Director of view as I as I understand their argument that was their interpretation of what you were doing based on the last sentence of your hearing petition before the conclusion Is that a fair characterization as you view it?

[00:04:13] Speaker 05:
This is what happened before the PTO you want to that is a fair characterization me The question which is if that's right then Have you not had that sentence in your petition presumably you would have gotten board review

[00:04:30] Speaker 05:
At least that's what I understand.

[00:04:33] Speaker 05:
Take away from what the PTO did.

[00:04:36] Speaker 05:
So why isn't it at least reasonable for them to assume from that sentence that you're asking for something which presumably would result in some form of director review if the Supreme Court held that director review under certain circumstances was mandatory?

[00:04:55] Speaker 03:
Your Honor, we think that we actually do agree that it was reasonable for the board to construe us as also asking for whatever Supreme Court would provide, which ended up being director review.

[00:05:06] Speaker 03:
The board also relied not just on the request and not petition, but also on its internal guidance, which said if you submit a petition for panel rehearing and a request for director review, you cannot receive both.

[00:05:17] Speaker 03:
You can only receive director review.

[00:05:19] Speaker 03:
So it effectively construed a request for perspective relief for whatever Supreme Court may order in this decision, assuading our right to a panel rehearing.

[00:05:29] Speaker 03:
But we do think that, as I mentioned, we think our stronger basis is that it is

[00:05:34] Speaker 03:
It is impossible to determine, in our view, from the content of the order, whether or not we actually received re-hearing by the director on the merits, as opposed just to denial, because Commissioner Hirschfeld took a position that requests for a direct review may not be submitted in re-exams.

[00:05:52] Speaker 03:
Turning to the substance, we have several arguments.

[00:05:57] Speaker 03:
First, we think that claiming confusion over the wording of the authorization limitation in Claim 18, the board analyzed the claim not as it was written, but in the way that it raised various requirements from that limitation.

[00:06:11] Speaker 03:
The board said that they would decide whether, as a general matter, the priority of the W is determining whether a client has permission to access a website, and if not, returning the error message.

[00:06:20] Speaker 03:
This is Appendix 31.

[00:06:22] Speaker 03:
In our blue brief on pages 23, 24, we gave several examples where I've actually raised the certain specific limitations from the authorization limitation of claim 18.

[00:06:33] Speaker 03:
But I'd like to give just one example here.

[00:06:36] Speaker 03:
And that relates to the board's analysis of Bloom, which is one of the best of can-Bloom combinations on which the board relied for obviousness.

[00:06:44] Speaker 03:
The board found that Bloom discloses use of protocol filters, and that, I quote, a narrow message may be returned to the client, close quote,

[00:06:52] Speaker 03:
open quote, when services are not available to a client computer.

[00:06:55] Speaker 03:
This is appendix 32.

[00:06:57] Speaker 03:
But Bloom only discloses returning an error message when available DNS services cannot resolve the host name.

[00:07:04] Speaker 03:
It does not disclose returning an error message when the client lacks authorization to access as a website, which is what is claimed in claim 18.

[00:07:12] Speaker 03:
So given the board's reliance on Bloom for the client authorization recitation, we think that this requires vacature of the board's rejection of claim 18 on the basis of the Beza, Kent, and Bloom combination.

[00:07:24] Speaker 03:
And we think more generally, the board's rephrasing of claim 18 also requires vacature of the parallel rejections based on the bingo references.

[00:07:34] Speaker 03:
The other issue I'd like to address is the board's reliance on collateral estoppel.

[00:07:38] Speaker 05:
Why do you think that the board's passing characterization at page 30 of the appendix 31 affects their analysis of bingo?

[00:07:51] Speaker 05:
And why do you think their analysis of bingo is incorrect?

[00:07:56] Speaker 05:
Your Honor, we think that it's... Under your construction of Plane 18, let's say.

[00:08:01] Speaker 03:
I think under construction, it's just that we think there are several specific limitations in claim 18 that the board just did not look at.

[00:08:08] Speaker 03:
For instance, it read out the requirement that termination be performed prior to automatically initiating the VPN before the client and the target computer.

[00:08:17] Speaker 03:
It also then re-characterized the limitation which said determining whether the client computer is authorized to resolve addresses of non-secure target computers is simply determining whether a computer has permission to access a website.

[00:08:30] Speaker 03:
And it changed, as I mentioned, returning an error from the DNS request to simply returning an error message.

[00:08:35] Speaker 03:
So we think this was just a significant reframing and rephrasing of claim 18 that would also affect the bingo references.

[00:08:44] Speaker 03:
And we have an additional argument with respect to bingo.

[00:08:47] Speaker 03:
I can turn to them.

[00:08:49] Speaker 03:
One is that the board, for instance, it expressly said, and this is on page appendix 45, it expressly stated that the bingo does not expressly disclose returning a narrow message should authentication fail.

[00:09:02] Speaker 03:
But then it nevertheless found authentication because it said it didn't think credible that a skilled artisan would not have immediately understood.

[00:09:09] Speaker 05:
This is the Genentech-Nidek argument?

[00:09:11] Speaker 03:
Exactly.

[00:09:12] Speaker 05:
OK, then suppose that we were to conclude that what the board was saying was more like Genentech in that it was saying that the limitation is there.

[00:09:24] Speaker 05:
It's just not expressly stated, as opposed to that a person of ordinary skill would

[00:09:32] Speaker 05:
Imagine that the extra limitation could be met by the disclosure.

[00:09:39] Speaker 05:
A nice distinction, but one that Genentech recognizes as being different in that the first category would say that can be anticipation.

[00:09:50] Speaker 05:
Why isn't this case on the Genentech side of the line as opposed to the Nidex side of the line?

[00:09:55] Speaker 03:
Ioanna, that is certainly one reading of Genentech, that distinction.

[00:10:02] Speaker 03:
We think this is different from Genentech because in Genentech there was a disclosure that all the steps will be performed within a particular range, and then the question was,

[00:10:13] Speaker 03:
Can one of these steps, what is the temperature range at which one of these steps will be performed?

[00:10:17] Speaker 03:
So we think it is different from this case where the board said that the reference does not disclose a particular feature.

[00:10:27] Speaker 03:
And we think also that this court can look at KenaMetal, another case which was discussed in NIDAC.

[00:10:33] Speaker 03:
And there, as the court in NIDAC explained, there the prior disclosed 15 specific combinations.

[00:10:40] Speaker 03:
And then one of those anticipated, and there was no question that the limitation would fall within one of these 15 disclosed combinations.

[00:10:49] Speaker 03:
So we think that we are, we do think that we are on the nidic motor side, and not on the kinematal and the genomec side in this divide.

[00:10:57] Speaker 01:
You can have inherent anticipation though, right?

[00:11:01] Speaker 01:
I mean, you can make findings that even though a certain claim limitation is not expressly disclosed in the prior art, there could be a legitimate finding that it inherently exists in that reference.

[00:11:17] Speaker 03:
Yes, Your Honor.

[00:11:18] Speaker 01:
Yes, certainly you can have... So I guess that's what... Just further developing your colloquy with Judge Bryson, that's one way to understand what the board is doing here.

[00:11:32] Speaker 01:
And then if so, then it would be permissible as a legal matter.

[00:11:39] Speaker 01:
And it wouldn't necessarily be a NIDAC situation where the fact finder here would just be imagining that you could add on an error message to a prior art reference that lacks an error message.

[00:11:53] Speaker 03:
Joanne, I think if this court reads the board's decision as basically finding a limitation to be inherent, then I would agree with the court.

[00:12:02] Speaker 03:
We do think that here the board really performed exactly what Nidak Motors said it should not, where it said once a person's skilled, the limitation is not present, but the person's skilled at the art would immediately envisage it.

[00:12:15] Speaker 03:
So we think just the language.

[00:12:17] Speaker 05:
I don't think we understood the language that the board used, as opposed to,

[00:12:20] Speaker 05:
immediately envisage, which is the language.

[00:12:23] Speaker 05:
It's, again, a fine distinction, but envisage suggests to me that it's not there, but you can imagine it.

[00:12:30] Speaker 05:
Understand suggests to me that the board is saying that a personal spell in the art would understand the limitation to be present in the disclosed prior art reference.

[00:12:43] Speaker 05:
So that distinction, it seems to me, it's

[00:12:47] Speaker 05:
It's not saying invasion in the way we usually would use that word.

[00:12:53] Speaker 03:
I understand the distinction.

[00:12:54] Speaker 03:
We think that the passage, kind of read in context, suggests that understood man, that the board, by using the word understood, really was conveying that the skill of activism would recognize, would

[00:13:06] Speaker 03:
would derive from this.

[00:13:07] Speaker 03:
It's closer to envision.

[00:13:10] Speaker 03:
And as we said, this is in our blue brief, we presented that we had expert testimony from our expert that, in fact, someone skilled in the art would not understand the claim that way.

[00:13:21] Speaker 05:
So we do think that the court here- That's really a substantial evidence issue if you get past the question of whether this is a Genentech-type finding.

[00:13:30] Speaker 03:
Yes, Your Honor.

[00:13:31] Speaker 03:
If this court believes that this falls within what Genentech said is permissible, then yes, that becomes a substantial evidence, which is a much harder hurdle for us.

[00:13:40] Speaker 03:
We do think that this is really more firmly within the NIDAC mortar type of immediately in this issue.

[00:13:49] Speaker 03:
I see that I'm in my rebuttal time.

[00:13:51] Speaker 01:
Could I just ask you another thing about your request for reconsideration and on bingo?

[00:13:58] Speaker 01:
If we were to conclude that,

[00:14:01] Speaker 01:
your claim 18 bingo-centric part of your recon request was limited to this legal argument about Genentech versus NIDAC.

[00:14:13] Speaker 01:
And then we concluded as a court that what happened here in the board was on the Genentech side of things.

[00:14:26] Speaker 01:
Then that would raise the question of what harm was there, even if it was inappropriate to convert your reconsideration request to a request for a direct review on the bingo question.

[00:14:44] Speaker 01:
Because the bingo question has been resolved as a legal matter by us at the Federal Circuit.

[00:14:52] Speaker 03:
We think, Juana, we think that if this court resolves this appeal solely as a legal matter under the consideration of an either congenital attack, then yes, that's a legal question that the court can make, just as well as the agency.

[00:15:10] Speaker 03:
We also presented the argument that the board should not have analyzed the references and combination when relying on bingo.

[00:15:18] Speaker 03:
That, we think, involves factual determinations.

[00:15:21] Speaker 03:
And also the question whether the board correctly re-characterized the claim 18 and then correctly performed the analysis, the impendability analysis on the debit characterization will also be test actual elements.

[00:15:34] Speaker 03:
So in that sense, this court needs to know what this or what would have been the proper final decision by the agency.

[00:15:43] Speaker 04:
Counsel, as you can see, your time has expired.

[00:15:47] Speaker 04:
But we'll give you three minutes for a bubble.

[00:15:49] Speaker 03:
Thank you, Anna.

[00:15:51] Speaker 05:
on a different ministerial question.

[00:15:55] Speaker 05:
Pages 31 through 37 of the third party requesters' comments are not in the appendix.

[00:16:05] Speaker 05:
They're cited at various points in the record.

[00:16:07] Speaker 05:
Could you provide those to us?

[00:16:09] Speaker 05:
One of the parties provided those to us.

[00:16:11] Speaker 03:
Yes, absolutely.

[00:16:22] Speaker 05:
request for the R.A.N.

[00:16:28] Speaker 05:
right appeal notice.

[00:16:30] Speaker 05:
Could you provide us with that?

[00:16:33] Speaker 05:
I wasn't able to find the first online.

[00:16:35] Speaker 05:
For some reason, the patent office didn't seem to have it in the docket.

[00:16:40] Speaker 05:
But if you'd provide us with those two documents.

[00:16:41] Speaker 03:
We absolutely will provide full copies of both.

[00:16:44] Speaker 03:
That's right.

[00:16:44] Speaker 03:
And I apologize if you've cited pages or not.

[00:16:46] Speaker 05:
You just missed me pages of the comments, but that would be fine.

[00:16:49] Speaker 03:
Of course.

[00:16:50] Speaker 03:
I apologize if they were not the major and demand explained in the documents.

[00:16:51] Speaker 05:
You didn't siphon yourself, and the other side didn't siphon, so under our rules,

[00:16:56] Speaker 05:
What you did was fine, but it's just nice to have them there because they were cited elsewhere in the record.

[00:17:02] Speaker 03:
We will, yes.

[00:17:03] Speaker 03:
We will submit those to the court.

[00:17:07] Speaker 04:
Ms.

[00:17:07] Speaker 04:
Craven for the Patent Office.

[00:17:11] Speaker 04:
You have two minutes.

[00:17:15] Speaker 00:
Thank you, Your Honor.

[00:17:16] Speaker 04:
You can let it slip a little bit if you need to.

[00:17:18] Speaker 00:
Thank you, Your Honor.

[00:17:19] Speaker 00:
May it please the court.

[00:17:21] Speaker 00:
Fernetix's reply brief makes clear that the crux of its complaint about its director review, the director review, is specific to the facts of this case and that it didn't understand the board would interpret whatever remedy was provided by Arthrex as a request for director review.

[00:17:38] Speaker 00:
But a request for director review is the exact Arthrex remedy that Fernetix itself sought

[00:17:43] Speaker 00:
in another appeal before this court.

[00:17:46] Speaker 00:
And it's the exact Arthrex remedy, the request for directory, that this court ordered in that case.

[00:17:51] Speaker 00:
And that order is incited at the blue brief at page 43, and that's the 1916-71 case.

[00:17:58] Speaker 00:
And that was all while its request for rehearing was pending in this case.

[00:18:03] Speaker 00:
So Vernetics had clearly noticed that the office was treating pre-Arthrex IP re-exam board decisions with requests for direct review, because that's the exact Arthrex remedy.

[00:18:15] Speaker 01:
Did it have notice that it was going to be limited to an either-or situation, that it wouldn't be able to have both a request for reconsideration, which it clearly asked for, and then in addition, the remedy provided by the Supreme Court?

[00:18:33] Speaker 00:
The guidance that the office put out a week after Arthrex made clear how the office was treating dual requests for director review and panel rehearing as just requests for director review.

[00:18:45] Speaker 05:
But that was after this petition was filed.

[00:18:47] Speaker 00:
It was two weeks after this petition was filed, but Vernettix is not saying that they didn't have notice of the guidance.

[00:18:54] Speaker 00:
They just said that they didn't request director review.

[00:18:59] Speaker 00:
So that they couldn't have been.

[00:19:01] Speaker 05:
They didn't have notice.

[00:19:02] Speaker 05:
They're saying it was unpublished at the time.

[00:19:04] Speaker 05:
And how did they know?

[00:19:06] Speaker 00:
Well, they knew during the course of their, while their hearing request was pending.

[00:19:13] Speaker 00:
Because it's true, when they filed their request for rehearing, we didn't know what the Arthurix remedy was going to be by the Supreme Court.

[00:19:22] Speaker 00:
So it presumes that they're asking for a remedy that's not known.

[00:19:26] Speaker 00:
But that became clear while the request for hearing was pending, that it was going to be, for pre-Arthur X board decisions, a request for direct review, and that the agency was treating dual requests as just a request for direct review.

[00:19:42] Speaker 05:
So you would propose that I take it from what you say, that what they should have done

[00:19:48] Speaker 05:
is after Arthrex came out and after you announced your policy of one to a customer that they should have come in and withdrawn

[00:19:59] Speaker 05:
their petition to the extent that it's understood to be directed to director review and said, by the way, we are asking only for board review, not for director review.

[00:20:11] Speaker 00:
That would have been a simple way to avoid this side litigation about which particular agency review they wanted.

[00:20:18] Speaker 00:
The Arthrox question and answers did make clear that if parties had

[00:20:23] Speaker 00:
case-specific questions about Arthrex's implication for their specific case, that they should reach out to the board.

[00:20:29] Speaker 05:
And Arthrex... So why didn't it have been reasonable for Vernetix in this case to assume that you would read the last sentence of their petition as indicating a request for a specific application of Arthrex to their case, i.e.

[00:20:46] Speaker 05:
not something that would trigger director review?

[00:20:51] Speaker 00:
Sorry, I'm not sure I quite understand.

[00:20:52] Speaker 05:
Well, in other words, you're saying, well, what they should have done is that after orthodoxy was decided and after the policy was announced, they should have come in and said, no, no, no, we're not asking for direct review.

[00:21:02] Speaker 05:
But my question is, why wasn't it reasonable for them to assume that nothing they said was actually invoking the right to direct review?

[00:21:10] Speaker 05:
But rather, why wasn't it reasonable to assume that all that their petition was saying is that we want board review.

[00:21:20] Speaker 05:
which the board can give, including that the board can give any remedy that the Supreme Court has announced in authorics.

[00:21:28] Speaker 00:
I mean, they said whatever remedy was provided by Arthrex, and the remedy provided by Arthrex couldn't be provided by the board, because as they argued to this court for their IP re-exam from a pre-Arthrex board decision, the remedy was a request to the head of the agency for a director review.

[00:21:48] Speaker 00:
So the board couldn't have provided that.

[00:21:49] Speaker 05:
Now I'm confused.

[00:21:51] Speaker 05:
Are you saying that

[00:21:53] Speaker 05:
If, OK, I have a petition for rehearing.

[00:21:56] Speaker 05:
What I want is I want the board to fix the problems that I think came up in the board's opinion.

[00:22:03] Speaker 05:
And for that, I want to go back to the board.

[00:22:05] Speaker 05:
I also want to take advantage of anything that happens in the Supreme Court.

[00:22:11] Speaker 05:
So I don't want to waive my rights under the decision in Arthur.

[00:22:16] Speaker 05:
So it would seem to me that unless you're saying that you are going to cut out your rights

[00:22:27] Speaker 05:
of the specific items that you think the board got wrong, and all the procedures that the board typically follows in the course of that kind of review, that they have to weigh those in favor of what may well be, and turned out to be, a much more limited director review with a much more limited discussion of the reasons.

[00:22:52] Speaker 05:
That seems odd.

[00:22:54] Speaker 05:
say they have to they have to pick one they cannot make a request for whatever remedy that for the board to say whatever remedy it is that they're entitled to and then if they're entitled to director review have director review

[00:23:09] Speaker 00:
That could be one way of reading it.

[00:23:11] Speaker 00:
The director review remedy was actually a broader review than the panel rehearing.

[00:23:16] Speaker 00:
The interim guidance provided that director review could be a review of any question of law or fact, and it was de novo review.

[00:23:27] Speaker 00:
So it was not actually a more limited review that they got.

[00:23:30] Speaker 00:
It was a broader agency review, whereas the panel rehearing would just be whether the panel misapprehended or overlooked anything.

[00:23:38] Speaker 00:
And their request for rehearing, the issues that they identified for the board would have been then the issues that were identified for the head of the agency at the time's review.

[00:23:50] Speaker 00:
So the denial of that may not have given them the reason for the denial, but it was a broader review that they got.

[00:23:58] Speaker 00:
And to some degree now, the fact that they would like to go back for the narrower panel rehearing

[00:24:05] Speaker 00:
is sort of wrapped up in the director, the head of the agencies did not have a director of view at the time.

[00:24:13] Speaker 00:
It's true, the board could have said,

[00:24:17] Speaker 00:
could have maybe issued an order that you're going to get the remedy provided by Arthrex, its director review.

[00:24:22] Speaker 00:
But I think the board just- That would have been within the power of the board.

[00:24:26] Speaker 00:
Yes, it would have.

[00:24:28] Speaker 00:
But I don't think the board thought there was any question about what they wanted.

[00:24:32] Speaker 00:
They preserved a remedy provided by Arthrex.

[00:24:34] Speaker 00:
And that was the review by the head of the agency at the time.

[00:24:40] Speaker 00:
broader review than they would have done as a panel.

[00:24:44] Speaker 00:
So, if there are no other questions, well, they did, Fernetics Council did say their harder argument was whether Commissioner Hirschfeld actually denied it on the merits of the patentability argument.

[00:25:01] Speaker 00:
I would say one

[00:25:02] Speaker 00:
clear evidence that he did was that in a case where they gave an improper request for direct review, the panel then told them it was an improper request and decided the case on panel rehearing from a post-Arthrex case.

[00:25:16] Speaker 00:
So the agency doesn't deny direct review when there's an improper request.

[00:25:20] Speaker 04:
Thank you, Ms.

[00:25:21] Speaker 04:
Craven.

[00:25:37] Speaker 01:
You have, Judge Lauren.

[00:25:39] Speaker 01:
Thank you.

[00:25:39] Speaker 01:
Mr. Pujer, maybe I keep asking the wrong person, but is there pending litigation on this expired patent?

[00:25:47] Speaker 02:
You may be asking the wrong person.

[00:25:48] Speaker 02:
I don't think so, at least as far as Apple is concerned.

[00:25:53] Speaker 02:
Claim 18, which we think is the only claim still at issue here in light of Mangrove, that claim has never been asserted against Apple in litigation.

[00:26:05] Speaker 02:
I'd like to start, if I could, with the inherency point that both Judge Jen and Judge Bryson were talking about.

[00:26:13] Speaker 02:
And I just want to make clear, this was an inherency argument through and through, and the board understood it as such.

[00:26:21] Speaker 02:
On Appendix 44, where the board is laying out the arguments presented to it in the appeal by vernetics, the concluding sentence in the paragraph that carries over

[00:26:33] Speaker 02:
says, Fernetix also argues, dot, dot, dot, and the position that subs just stepped would be inherent in the bingo router is not sufficiently supported.

[00:26:43] Speaker 02:
Citing back to Fernetix's appeal brief.

[00:26:47] Speaker 02:
Then, on page 45, the board rejects that argument, citing Apple's request for comments, which is at Appendix 6299, which preceded the appeal brief argument.

[00:26:59] Speaker 02:
So at Appendix 6299, Apple said an error message necessarily would have been returned.

[00:27:06] Speaker 02:
That's the language of inherency.

[00:27:08] Speaker 02:
Vernetix comes back in its appeal brief and says, this isn't inherently disclosed.

[00:27:15] Speaker 02:
And the board rejects the argument.

[00:27:17] Speaker 02:
This is Genentech through and through.

[00:27:18] Speaker 02:
There is no missing limitation.

[00:27:20] Speaker 02:
It's inherency.

[00:27:22] Speaker 02:
And that's what the board understood it was doing.

[00:27:24] Speaker 02:
And that's what the board found against Vernetix.

[00:27:29] Speaker 02:
If I could, I'd also like to clean up a little bit what's at issue.

[00:27:33] Speaker 02:
I started by saying only claim 18 is at issue.

[00:27:36] Speaker 02:
And I think the 28-J letters in general.

[00:27:39] Speaker 05:
Claim 11 was raised in the 28-J.

[00:27:42] Speaker 05:
And in one paragraph in the original three.

[00:27:44] Speaker 02:
Exactly.

[00:27:45] Speaker 02:
And our position is that that argument was not sufficiently developed and therefore waived under cases like Smith-Kline versus Apotex, which is 439, F3rd, 1812.

[00:27:53] Speaker 01:
But doesn't the appellant's incorporation by reference argument

[00:27:58] Speaker 01:
with respect to bingo UG and bingo EFR necessarily touch on the bingo-related rejection of both claims 11 and 18?

[00:28:09] Speaker 02:
The arguments as they framed them on claim 11.

[00:28:13] Speaker 02:
So the statement of issues at PINCH.

[00:28:15] Speaker 01:
I'm just trying to make sure that I am following correctly all their arguments related to bingo.

[00:28:22] Speaker 01:
Inherency.

[00:28:23] Speaker 01:
or not inherently, incorporation by reference or not incorporation by reference.

[00:28:29] Speaker 01:
That aspect, your side needs bingo EFR to be part of bingo UG for the claim 11 rejection to work.

[00:28:40] Speaker 01:
Isn't that right?

[00:28:43] Speaker 02:
Yes, but under obviousness for claim 11.

[00:28:45] Speaker 02:
So claim 11 is an obvious misrejection, not an anticipation rejection.

[00:28:49] Speaker 01:
Right, but the pieces of bingo EFR

[00:28:52] Speaker 01:
go to setting up a VPN, configuring it, and all that.

[00:28:57] Speaker 01:
You need that in order to match up with the limitations of Chrome 11.

[00:29:01] Speaker 02:
Yes.

[00:29:02] Speaker 02:
And my point in saying that the argument wasn't sufficiently developed under obviousness is simply that all they have is a throwaway sentence in their blue brief saying,

[00:29:11] Speaker 02:
While obviousness permits the combination of multiple references, the board didn't make the requisite findings.

[00:29:18] Speaker 02:
I don't know what the requisite findings mean, because when one reference points to another under obviousness, that's perfectly acceptable.

[00:29:24] Speaker 02:
But even if considered on the merits, the point is simply wrong.

[00:29:27] Speaker 02:
The board made repeated findings that a skilled artisan would have combined both bingo and read.

[00:29:33] Speaker 02:
That's at appendix 46.

[00:29:34] Speaker 02:
and the bingo user guide and the EFR.

[00:29:38] Speaker 02:
At appendix 35, the board says directly that it's not persuaded that the documents wouldn't be combined for independent claim 10, from which claim 11 depends.

[00:29:48] Speaker 02:
So the board made the findings.

[00:29:50] Speaker 02:
Again, the only argument, it's hard to figure out there's a citation to Graham versus John Deere, and they simply say, we refer back to the anticipation points.

[00:29:58] Speaker 02:
My point is simply, it's an even looser standard under obviousness.

[00:30:02] Speaker 02:
And certainly, what the board did met that standard.

[00:30:05] Speaker 01:
Is the question of whether a reference incorporates by reference another reference, a question of law, a question of fact, or a question of law based on underlying findings of fact?

[00:30:16] Speaker 02:
I think it's more like the last one, law based on underlying findings of fact.

[00:30:20] Speaker 02:
This court has said it's a question of law.

[00:30:22] Speaker 02:
There's been some reference to the law of contracts and how you address it.

[00:30:29] Speaker 02:
But it's certainly in reading what the bingo user guide teaches and whether it says go here for a particular document, that sounds an awful lot like the regular old anticipation argument about what does a particular reference teach, which is of course a factual finding.

[00:30:45] Speaker 02:
But whether review does a question of fact or a question of law,

[00:30:48] Speaker 02:
This reference clearly meets the standard.

[00:30:52] Speaker 02:
We cited the Callaway case in which reference was made to another document that wasn't even by the same authors for a particular point.

[00:31:01] Speaker 02:
They don't cite Callaway at all in their reply brief.

[00:31:05] Speaker 02:
It was our lead case.

[00:31:06] Speaker 02:
I think that's quite telling.

[00:31:08] Speaker 02:
The citation, whether viewed, again, as law or fact, from the user guide to the EFR for very specific things, is sufficient to meet this court standard under Callaway and other cases.

[00:31:19] Speaker 05:
You cite a state in your brief that the two references, Bingo,

[00:31:29] Speaker 05:
U.J.

[00:31:30] Speaker 05:
and Bingo E.F.R.

[00:31:34] Speaker 05:
We're in the same box.

[00:31:41] Speaker 05:
record to support that?

[00:31:42] Speaker 02:
There is.

[00:31:43] Speaker 02:
The box specifically, I don't think the word box appears in the record, but at Appendix 35, the board cites the documentation for bingo, and that then points to Appendix 2376, which speaks of the bintec document.

[00:32:04] Speaker 05:
2376, did you say?

[00:32:05] Speaker 02:
Yeah, that's in the first volume of the appendix, Judge Bryson.

[00:32:09] Speaker 02:
somewhere roughly in the middle.

[00:32:12] Speaker 02:
And that bintech documentation says, together with bingo, you will have received documentation partially in printed form and completely in electronic form, including on the bintech companion CD, and that includes, of course, the extended

[00:32:27] Speaker 02:
reference document.

[00:32:28] Speaker 02:
So it doesn't say it's the same box explicitly, but this is the late 1990s, it's a router, so you may remember routers and computers would come in boxes, there'd be a bunch of leaflets in there, and then there'd be a CD that has everything.

[00:32:41] Speaker 02:
What this is saying is, here's what you're gonna get, it includes the user guide and the extended feature reference.

[00:32:51] Speaker 02:
So I think that is, again, sufficient under this court's case law, particularly when it's by the same author related to the same product.

[00:33:03] Speaker 05:
Now, there is an argument with respect to bingo that I think this is their expert justified or introduced to declaration saying that

[00:33:18] Speaker 05:
even accepting that bingo is a single applicable reference, it still doesn't get you there.

[00:33:26] Speaker 05:
I think that's, yes, what was his name, Dr. Karamaitis.

[00:33:36] Speaker 05:
And this is paragraphs 163 and 164 of his declaration.

[00:33:40] Speaker 05:
That's at 4122 and 4123.

[00:33:42] Speaker 05:
Could you address that argument?

[00:33:46] Speaker 02:
That argument,

[00:33:49] Speaker 02:
my recollection is, other than of course the board found to the contrary, and this is a substantial evidence review.

[00:33:57] Speaker 02:
That argument, I don't believe those particular paragraphs were even cited by vernetics to the board, and I think that points to an important aspect of this case that requires taking into account when

[00:34:11] Speaker 02:
analyzing and in some respects I'd say nitpicking what the board did.

[00:34:15] Speaker 02:
This is an interparties re-exam.

[00:34:16] Speaker 02:
The case as it comes to the board is how Vernetics presents it.

[00:34:20] Speaker 02:
There's an examiner who makes a bunch of findings and then the appeal is what dictates what the board sees.

[00:34:26] Speaker 02:
It's very different from an interparties review where the board is analyzing it for the first time.

[00:34:31] Speaker 02:
So when Vernetics comes in on appeal and says look we have this expert who pointed to particular paragraphs

[00:34:37] Speaker 02:
Showing why bingo doesn't in fact anticipate, but it never told the board to look at those paragraphs That's just we think that argument is plainly forfeited and shouldn't shouldn't be considered I'm just trying to find out here Well page 32 of their brief their blue brief is the one that talks about Dr. Carabinus.

[00:34:59] Speaker 05:
Yep, it does cite one of the paragraph actually I guess both

[00:35:04] Speaker 05:
And these quotes from those paragraphs, whether that's a developed argument on that is another question, I suppose.

[00:35:10] Speaker 02:
But my point is that they didn't cite them to the board.

[00:35:14] Speaker 05:
Well, I say it.

[00:35:15] Speaker 05:
You're not talking about not saying it.

[00:35:16] Speaker 02:
No, I'm saying, because this is an inter-party re-exam, the appellant to the board dictates the issues as presented to the board.

[00:35:24] Speaker 02:
And so to come in on appeal here and say, look, here are these paragraphs that show something that is contrary to what the board found, I think is just fundamentally improper.

[00:35:34] Speaker 02:
The board takes the case as the appellant presents it from the examiner.

[00:35:38] Speaker 02:
None of these paragraphs were cited to the board, which we pointed out in our red brief on page 37.

[00:35:44] Speaker 01:
The gray brief doesn't dispute that these passages were not presented before.

[00:35:51] Speaker 02:
I don't think so.

[00:35:52] Speaker 02:
And I think just to touch briefly on

[00:36:02] Speaker 02:
on the Bloom, Beeser, and Kent objections or rejections, which, again, the court doesn't have to reach if it finds that Bingo anticipates.

[00:36:12] Speaker 02:
The same point applies.

[00:36:13] Speaker 02:
The way that this case comes to the board,

[00:36:17] Speaker 02:
is as the appellant presents it.

[00:36:20] Speaker 02:
And that's what you see the board doing.

[00:36:21] Speaker 02:
The board says at the outset, look, I think this is kind of strange, and we've never heard an explanation for why the claim makes any sense as written.

[00:36:28] Speaker 02:
But I'm going to now tick through each of the arguments that Fernetix made to me, citing back to Fernetix's appeal brief at 6965 and saying, we think Fernetix is wrong.

[00:36:40] Speaker 02:
And therefore, we are going to affirm what the examiner found.

[00:36:43] Speaker 02:
And that setting is an important context in which to consider this case and this appeal.

[00:36:48] Speaker 02:
Because again, the board takes the case as it's presented.

[00:36:52] Speaker 02:
And what the board is doing here is starting off with an observation before them proceeding to say, these are the three arguments that Vernetics has presented to me, and I don't believe them.

[00:37:01] Speaker 02:
I don't buy them.

[00:37:02] Speaker 02:
And on appeal, vernetics has no substance behind its objections.

[00:37:06] Speaker 02:
All they say are, the board wrote different words than are in the claim.

[00:37:11] Speaker 02:
That's what you see at pages 26 to 27 of their appeal brief.

[00:37:14] Speaker 02:
But there's never any attempt to show why that matters, because it doesn't.

[00:37:17] Speaker 02:
The board understood fully what it was doing.

[00:37:20] Speaker 02:
It rejected the arguments vernetics made, siding with Apple, and as a result, affirmed the examiner's findings.

[00:37:26] Speaker 01:
Do you think the board erased the distinction between

[00:37:31] Speaker 01:
Secure computers non-secure computers no

[00:37:35] Speaker 02:
No, I think what the board was saying was simply, it doesn't make sense to determine first if you are talking about a secure computer and then later, before setting up a VPN, asking whether you're authorized to access a non-secure computer.

[00:37:50] Speaker 02:
But what the board was saying was, it doesn't matter because the art discloses both.

[00:37:54] Speaker 02:
And if the art discloses both, it discloses one and the other.

[00:37:59] Speaker 02:
So I don't think the board was erasing any distinction whatsoever.

[00:38:05] Speaker 02:
Just briefly, one last thing before I sit down, because it came up in the 28-J letter.

[00:38:12] Speaker 02:
For claims 10 and 12, just to clean that up, our position is that this is clear collateral estoppel.

[00:38:18] Speaker 02:
There's no reason as Judge Lurie, as you said in an earlier argument, to take the extraordinary step of vacater.

[00:38:26] Speaker 02:
That's what this court in Aranachalam, which is an unpublished opinion, but at 7-09, Fed Appendix 699,

[00:38:34] Speaker 02:
The court simply affirmed, based on an application of collateral estoppel, rather than going any further.

[00:38:40] Speaker 02:
The collateral estoppel effect of mangrove is immediate, and it means that claims 10 and 12 are out.

[00:38:47] Speaker 05:
Go ahead.

[00:38:48] Speaker 05:
This raises the question of a much broader application of what we do in situations in which something happens in the midst of the case that

[00:38:59] Speaker 05:
renders the significance of our action zero.

[00:39:03] Speaker 05:
And it calls to mind Bonner-Mall case, which you may be familiar with, where the Supreme Court backed away, at least in that context, from the notion under Monsignor that once the case no longer has

[00:39:18] Speaker 05:
a practical application.

[00:39:20] Speaker 05:
They have to vacate everything all the way back to the beginning.

[00:39:23] Speaker 05:
The Supreme Court said, no, it's a much more delicate inquiry than that.

[00:39:27] Speaker 02:
That's exactly right.

[00:39:27] Speaker 05:
In the facts of this case, what's the argument for or against vacating all the stuff that applies to the claims that have been invalidated under

[00:39:41] Speaker 05:
the Mango Partners case of March.

[00:39:44] Speaker 02:
Yeah.

[00:39:44] Speaker 02:
Yeah.

[00:39:45] Speaker 02:
Well, I think it's important to start, Judge Bryson, with the Bonhamall case.

[00:39:48] Speaker 02:
Because what that case says is, vacator is an extraordinary remedy on which the burden is for vernetics, to say that that applies.

[00:39:57] Speaker 02:
I don't think a single sentence in a 28-J letter that says nothing other than, this case is therefore vacate, meets that burden.

[00:40:05] Speaker 02:
But it also doesn't really fit with what Bonner Mall and Munzing Ware have come to say are the circumstances, and in the case they cite, falls par, in which Vakitor makes sense.

[00:40:15] Speaker 02:
That equitable doctrine takes into account an appellant's inability to challenge

[00:40:20] Speaker 02:
the case based on the vagaries of circumstance or the winning party doing something to effectively move the case.

[00:40:28] Speaker 02:
In Valspar, the winning party had granted a covenant not to sue.

[00:40:32] Speaker 02:
And so the courts say, in that circumstance, it doesn't really make sense to hold the appellant

[00:40:37] Speaker 02:
or to keep on the books the decision in which the appellant lost.

[00:40:41] Speaker 02:
Nothing like that is going on here.

[00:40:43] Speaker 02:
This is, instead, a straightforward application of collateral estoppel and its immediate preclusive effect.

[00:40:49] Speaker 02:
The same way this court has applied it in XY, the same way, again, in Aranachalem, the court applied it.

[00:40:55] Speaker 02:
And it simply means that the court should affirm rather than vacate.

[00:41:00] Speaker 02:
Thank you.

[00:41:00] Speaker 04:
Thank you, counsel.

[00:41:14] Speaker 03:
Thank you, Your Honor.

[00:41:16] Speaker 03:
So with respect to the request for rehearing, so one point I would make is the policy, this policy of differentiating between the pre-RFREX and post-RFREQ request, that was never published or announced in any kind of public or even internal guidance.

[00:41:31] Speaker 03:
It really is something that the BTO said only in this case and in the paralegal that's pending before this court.

[00:41:37] Speaker 03:
And this case also somewhat differently situated from those instances where PTO accepted a remand, a limited remand from this court for decisions issued prior to RFRAX.

[00:41:47] Speaker 03:
In those cases, because the appeal was already before this court, there was no way for the PTO to then provide a directory hearing.

[00:41:54] Speaker 03:
kind of clear up what they call a constitutional cloud.

[00:41:58] Speaker 03:
Here the case was still before the agency, so Commissioner Hirschfeld may have again claimed the power to sue us upon to be here in the case and may have taken the view that he has that power.

[00:42:07] Speaker 05:
Let me see if I understand exactly what you're saying.

[00:42:10] Speaker 05:
Are you saying that the announcement of the policy that came after Arthrex and after the petition in this case was filed did not cover

[00:42:19] Speaker 05:
cases such as yours in which the petition, the request for the rehearing, was filed before the decision in Arthrex?

[00:42:27] Speaker 03:
No, Your Honor.

[00:42:28] Speaker 03:
I'm talking about two different policies.

[00:42:30] Speaker 03:
I apologize.

[00:42:30] Speaker 03:
The interim policy where the PTO said that you can either have one or the other, that, our understanding is, they took a position that covers everything.

[00:42:40] Speaker 03:
It was the different policy where they said we made an exception to that policy.

[00:42:45] Speaker 03:
for actually allowing director reviews.

[00:42:49] Speaker 03:
We made an exception to the policy of not allowing director reviews for decisions that we should pre-Arthrex.

[00:42:54] Speaker 03:
That policy was never announced in any kind of formal publication, Your Honor.

[00:42:57] Speaker 05:
OK.

[00:42:59] Speaker 05:
But you could have, presumably, after Arthrex, you could have gone in and said, we now are focused just on the board.

[00:43:09] Speaker 05:
Once the announcement was made,

[00:43:11] Speaker 05:
that you couldn't get sequential review from both the board and the director.

[00:43:17] Speaker 03:
Joanna, we could have.

[00:43:18] Speaker 03:
The PT also could have said, it is unclear to us what you are requesting, because you filed your request prior to RFRAX.

[00:43:24] Speaker 03:
Which one do you want?

[00:43:25] Speaker 03:
So I agree that NYVA site has done that.

[00:43:28] Speaker 03:
OK.

[00:43:28] Speaker 03:
Turning to incorporation, we actually made the argument with respect to why incorporation did not satisfy what the scores of demand extended.

[00:43:36] Speaker 03:
This is on pages 33 through 36 of our blue brief.

[00:43:39] Speaker 03:
We think there are several cases we'll cite, including Kyocera and others.

[00:43:43] Speaker 03:
On the question whether it was in the same box, we addressed that point on page 17 of our gray brief.

[00:43:50] Speaker 03:
Again, we don't think the record conclusively shows which versions of the extended feature reference were in fact included with the bingo user guide.

[00:43:59] Speaker 03:
On the bakership point, I would just point this court to, I acknowledge that the Bonham Hall and Bancroft clarified the stand amongst them, where I would point this court to what it did in appeal number 17-2594, companion appeal to the one that my colleague just argued immediately preceding.

[00:44:16] Speaker 03:
And there, this court basically concluded the appeal was entirely moot and vacate and remanded it to the PTO with instructions to vacate the PTO's underlying decision as moot.

[00:44:29] Speaker 03:
It is fair because where the PTO relied on issues and findings that we can no longer challenge because the overall claim is now unpatentable, it is fair, we think fair and equitable, to vacate that decision as moot.

[00:44:44] Speaker 05:
If I could just ask,

[00:44:47] Speaker 05:
practical effect would that have on any case that's out there?

[00:44:52] Speaker 05:
I mean, the difference between vacating and simply having the decision out there.

[00:45:00] Speaker 03:
Johanna, it may not, because again, I think the

[00:45:04] Speaker 03:
I'm not aware of the... There was a little bit of a cost issue still percolating the district court, but there is no active litigation on these patents.

[00:45:12] Speaker 03:
So that may not have practical effect.

[00:45:16] Speaker 03:
There may be some implications for the appeal we hear next, which also involves Claim 18.

[00:45:22] Speaker 03:
So in terms of practical applications, it may not matter.

[00:45:27] Speaker 03:
But we think that it's the

[00:45:29] Speaker 03:
It's an appropriate thing to do where a claim is unpatentable, and therefore issues underlying the board's rejection of a claim are now moot.

[00:45:38] Speaker 03:
It's not the kind of more traditional collateral estoppel where the exact same issue was considered in another proceeding.

[00:45:44] Speaker 03:
And we're now estoppel contesting that issue.

[00:45:47] Speaker 04:
Thank you, Council.

[00:45:47] Speaker 04:
The case is submitted.