[00:00:02] Speaker 02:
Granetics versus Cisco, 2019-16-71.

[00:00:05] Speaker 02:
Mr. Timofey, if you can.

[00:00:10] Speaker 02:
Pitching both ends of a double-header today.

[00:00:17] Speaker 00:
Ioanna, and may it please the court.

[00:00:20] Speaker 00:
As we said in our Rule 28J letter, our views as a result of this court recent mangrove decision, the issues in this case are now narrowed to whether the board was correct to find Claim 18 of the 135 patent to be obvious under the combination of Solana and Kiyuchi.

[00:00:38] Speaker 00:
And to submit that decision was erroneous.

[00:00:41] Speaker 04:
Before you go any further, I just want to make sure we know what's at stake.

[00:00:47] Speaker 04:
Until you filed your 28-J letter, you thought you were challenging what remained of the 135 patent, that is, claim two under QG?

[00:01:01] Speaker 04:
I'm just trying to figure out which claims would the Kyuuchi-related claims and which claims are the Kyuuchi-Solana-related claims that were on appeal in your eyes before the 28-J letter.

[00:01:18] Speaker 00:
Yeah, no, there was an overlap.

[00:01:23] Speaker 00:
Because claims, for instance, claims one through four were anticipated by Kiuchi, claims also one through five were found out based on the Kiuchi and Solana.

[00:01:33] Speaker 00:
Our view is that subsequent to the Mangrove decision, we think that there were some claims like five, eight, and nine that were based on the different combinations of Kiuchi.

[00:01:43] Speaker 00:
So we think that after Mangrove decision, really our view is that this is now limited to claim 18.

[00:01:49] Speaker 00:
There was some question about claim two, but we think that

[00:01:52] Speaker 00:
you know, the fair reading just based on that claim is, this appeal is now just about claim 18.

[00:01:57] Speaker 00:
OK.

[00:01:58] Speaker 04:
And so it's just claim 18 and just Q2 Solana as the grounds for possibly rejecting claim 18.

[00:02:06] Speaker 00:
That is correct, Judge.

[00:02:07] Speaker 00:
And just one, you know, one may be nuances.

[00:02:11] Speaker 00:
You know, some of the arguments were made as to why the board was wrong with respect to, you know, the way it mapped, you know,

[00:02:17] Speaker 00:
the proxies onto the client computers, which were out of respect to the Kyuchi anticipation rejections.

[00:02:22] Speaker 00:
Within us, I think we made clear in our blue brief also, in fact, the board's analysis of the Solana Kyuchi.

[00:02:28] Speaker 00:
So there's some intersection of the arguments, but we're not

[00:02:31] Speaker 00:
Because Mangrove decided that the Kyuichi discloses the direct communication VPN, we no longer have those subsidiary points with respect to the investigation rejections on the Kyuichi, even though they may be relevant to whether the board was correct in finding out business on the Salama and Kyuichi.

[00:02:53] Speaker 00:
OK, thank you.

[00:02:54] Speaker 00:
So with respect to that Solano-Kiuchi combination, we submit that the first error was for the board to depart radically from the examiner's basis for rejection.

[00:03:05] Speaker 00:
Because both here, both Cisco and the examiner relied on Solano as the reference disclosing the generating limitation in step one of claim 18.

[00:03:14] Speaker 00:
They relied upon Kiuchi only as a modification of Solano for steps two and three, which are the determining and then requesting access limitation.

[00:03:23] Speaker 00:
After Renetix identified various problems with this reliance on Solana, the board switched the thrust of rejections.

[00:03:29] Speaker 00:
And at the point that even if Solana does not, open quote, disclose generating a DNS request, close quote, Kiuchi discloses that feature.

[00:03:39] Speaker 00:
This is at appendix 28.

[00:03:40] Speaker 04:
So then in your view, did the board convert the 103 into essentially a 102 Kiuchi-based rejection?

[00:03:50] Speaker 00:
We think the board still conducted

[00:03:53] Speaker 00:
an obviousness analysis, but a deficient obviousness analysis, which is our second argument.

[00:03:59] Speaker 04:
Because I thought for steps two and three, you said that the board was relying on QG.

[00:04:05] Speaker 00:
Yes, the board was relying on Kiuchi as modifying Solana.

[00:04:09] Speaker 00:
But then, for respect to step one, the board essentially, when we raised the issues and showed in our view that that step was not obvious under Solana, even in the view of Kiuchi, the board essentially

[00:04:23] Speaker 00:
pivoted to Kiuchi as the principal reference disclosing that claim.

[00:04:28] Speaker 00:
And that was an entire shift from how Cisco advocated from Cisco's request.

[00:04:36] Speaker 00:
And it was also a shift from the examiners' ram.

[00:04:40] Speaker 00:
So we believe that it was a materially new rejection.

[00:04:43] Speaker 00:
And the board, we had no opportunity to respond to it.

[00:04:48] Speaker 00:
We think what is proper here is a Baker-Chin remand to the board, in particular so the board can analyze that Consolana-Kiyuchi combination in light of the intervening guidance from this court in its first mangrove decision and also from the board itself in its mangrove decision on remand.

[00:05:06] Speaker 00:
Because those decisions make clear that Kiuchi's proxies cannot be mapped onto the claimed client computer and the target computer.

[00:05:16] Speaker 00:
Yet here, the board relied on these Kiuchi proxies of disclosing the claimed client computer and the target computer as associated with the DNS request in claim one.

[00:05:25] Speaker 04:
What is left of the Kiuchi Solana for claim 18?

[00:05:30] Speaker 04:
Oh, I guess you still have that final limitation in claim 18.

[00:05:35] Speaker 00:
Yes, your honor.

[00:05:36] Speaker 00:
Yes.

[00:05:36] Speaker 04:
What would happen?

[00:05:37] Speaker 04:
What would happen theoretically if we affirm your prior appeal on claim 18?

[00:05:42] Speaker 04:
Then what would happen to this appeal?

[00:05:44] Speaker 00:
I think this appeal then becomes moot because again, our view is only claim 18 is an issue here.

[00:05:50] Speaker 00:
So this appeal is moot.

[00:05:51] Speaker 00:
I mean, aside

[00:05:52] Speaker 00:
In my answer to Judge Bryson, in the prior appeal, again, I think then the proper courses is to dismiss the appeal or to remand it to the PTO with instructions to vacate the decision as moot, whereas that to claim 18.

[00:06:08] Speaker 00:
But we do acknowledge that this appeal would become moot if the prior appeal 1523 is affirmed.

[00:06:18] Speaker 04:
I believe the other side said that you somehow, is this the appeal, I'm sorry, where the other side is arguing that you've waived slash forfeited your right to make this specific argument in defending your claim because it wasn't part of your request for reconsideration to the board?

[00:06:41] Speaker 00:
Yes, sir.

[00:06:42] Speaker 00:
Is that this appeal?

[00:06:46] Speaker 00:
This is this appeal.

[00:06:47] Speaker 00:
There were several.

[00:06:48] Speaker 04:
And then there was a non-precedential opinion that they cited as support for that proposition, that when you choose to invoke the request for reconsideration procedure at the patent board, you must include any and all arguments that you would ultimately want to pursue on appeal to the Federal Circuit.

[00:07:08] Speaker 04:
Otherwise, you would waive such arguments.

[00:07:11] Speaker 00:
Yes, you are.

[00:07:12] Speaker 00:
And we have three responses.

[00:07:14] Speaker 00:
So one, which is, I think, the easiest, is that even though we only challenged, I believe, claim four in the rehearing request, we actually challenged everything, including claimanteen and the arguments.

[00:07:25] Speaker 00:
The issues were presented in our blue brief in our subsequent request to the director for rehearing.

[00:07:32] Speaker 00:
So when the director issued the final decision for the agency, that request to him presented all the grounds.

[00:07:38] Speaker 00:
So we think there is

[00:07:40] Speaker 00:
You know, even under Polycom, there is no considerable waiver.

[00:07:44] Speaker 00:
We also, Polycom is a non-precedential decision.

[00:07:46] Speaker 00:
We think there is a significant question whether, respectfully, whether that is correct in these circumstances where- The question is, Polycom, I mean, maybe get in there.

[00:07:57] Speaker 03:
Isn't it a very different case?

[00:07:59] Speaker 03:
Because in that case, as I understand it, somewhat complicated factual setting.

[00:08:05] Speaker 03:
ground of rejection number one, which was an issue, was never raised to the board.

[00:08:11] Speaker 03:
I mean, that seems to me very different from saying, in that setting, yeah, you have to raise it if you want to litigate it in this court at some point.

[00:08:20] Speaker 03:
And that would have suggested raising it in the petition for the hearing at the latest.

[00:08:26] Speaker 03:
But that's very different from this case and from the great run of the cases in which a party may select one or more of the issues to focus on

[00:08:35] Speaker 03:
the question of the hearing, but not waive all the rest of the issues.

[00:08:40] Speaker 00:
So Judge Bryson, you actually just pushed me towards my third point, which is exactly that we, and we argue this in our gray brief, that Polycom is distinguishable on precisely that basis.

[00:08:49] Speaker 00:
Two different anticipation of business rejections were in avoid play.

[00:08:53] Speaker 00:
And I think this court in Polycom was concerned with a particular issue where the board didn't have an opportunity to opine on a particular issue.

[00:09:02] Speaker 03:
So yeah.

[00:09:05] Speaker 03:
I was unable to find any case in any jurisdiction that stood for the proposition directly that if you don't include a particular issue in your petition for rehearing, in the category of cases where that isn't required by statute or regulation, that you've waived it.

[00:09:25] Speaker 03:
So I haven't found any.

[00:09:27] Speaker 03:
Did you find any authority for that proposition?

[00:09:29] Speaker 00:
We have not.

[00:09:31] Speaker 03:
Darby kind of speaks generally to this issue, but not specifically to this.

[00:09:36] Speaker 00:
Yeah, we think Darby does speak to the issue.

[00:09:39] Speaker 00:
The Supreme Court's there.

[00:09:40] Speaker 00:
But again, in rejecting this kind of waiver basis, because we do think that it's a feature of the Administrative Procedure Act that

[00:09:49] Speaker 00:
As you said, Judge Brashin, if a statute requires you to seek rehearing as a condition for obtaining the final agency decision, you have to do it.

[00:09:57] Speaker 00:
Otherwise, there is waiver of forfeiture.

[00:09:59] Speaker 00:
If a statute does not, you do not have to.

[00:10:02] Speaker 00:
And I think from a policy perspective, it's just not

[00:10:06] Speaker 00:
It would lead to a waste of agency resources, not to mention the party's resources, if every time you have to secret hearing, you have to include every single point you want to bring up.

[00:10:16] Speaker 00:
And the standard is different.

[00:10:18] Speaker 00:
I mean, the standard for agency reconsideration, they certainly vary.

[00:10:22] Speaker 00:
But in this case, you have to show a specific point that the panel misapprehended or misunderstood.

[00:10:28] Speaker 00:
It's not the general appellate standard, where the court will look at the question of law, question of fact, and the other standards.

[00:10:35] Speaker 00:
So we just think that we have doubts about Polycom, but this court doesn't even need to consider whether Polycom, the presidential decision, is binding here because it is distinguishable.

[00:10:48] Speaker 00:
So that is our response, Judge Chen, on the waiver point.

[00:10:53] Speaker 00:
I would also mention the second argument as to why the board's analysis of the Solana-Kiuchi combination needs to be vacated is because the board failed to adequately analyze the motivation to combine Solana and Kiuchi with respect to the specific features that are at issue.

[00:11:12] Speaker 00:
The board obliquely addressed the motivation to combine with respect to step three, which is determining the DNS request in step two is requesting access to a secure target website.

[00:11:23] Speaker 00:
It did so on page 27.

[00:11:25] Speaker 00:
But there, as we argue in our blue briefs, that analysis was faulty because Solana system provides an end-to-end confidentiality, so all communications within it are secure.

[00:11:35] Speaker 00:
And you can set this on Appendix 2043, I believe, in the examiners' findings.

[00:11:41] Speaker 00:
So there would have been no reason for someone skilled in the art to modify Solana where all transmissions are secured to determine whether DNS is requesting access to a secure website.

[00:11:52] Speaker 04:
I'm sorry, was claim 18 for the Kiuchi-Sulana ground argued separately by you, or was there one representative claim for the Kiuchi-Sulana ground that was being debated between the parties and the board?

[00:12:12] Speaker 00:
I believe that in both our appeal brief to the board and also in the examiner's findings, Claim 18 was analyzed as Claim 18 on the combination of KiwiChain and Salon.

[00:12:27] Speaker 00:
Some discussion may have been

[00:12:29] Speaker 00:
done to get with analysis of the other claims.

[00:12:32] Speaker 00:
Because I think, as you want to remark, the initial three limitations are common also to claim one, which is not an independent claim.

[00:12:41] Speaker 00:
I don't believe that there was a separate.

[00:12:43] Speaker 00:
I don't believe Cisco presented any arguments.

[00:12:47] Speaker 00:
I don't think the examiner addressed the separate limitation in claim 18.

[00:12:52] Speaker 00:
This is your question, Judge Chan.

[00:12:55] Speaker 00:
But the examiner and the board looked at claim 18

[00:12:59] Speaker 02:
You can continue or save it.

[00:13:05] Speaker 00:
I will I will save it my rebuttal bank

[00:13:15] Speaker 01:
Thank you, Your Honors.

[00:13:16] Speaker 01:
Theo Foster for Cisco Systems.

[00:13:18] Speaker 01:
Your Honors, the March mangrove decision provides an alternative basis for this court to address this appeal.

[00:13:25] Speaker 01:
And we believe the proper course is to dismiss the appeal in its entirety.

[00:13:30] Speaker 01:
The reasoning for that, I think,

[00:13:32] Speaker 01:
Council for Fernetics has acknowledged that the mangrove decision disposed of Claim 1 and the dependent claims, and those are no longer at issue in this case.

[00:13:42] Speaker 01:
Claim 18 merely recites the same limitations as the combined Claim 1, Claim 2, and Claim 5.

[00:13:49] Speaker 01:
that the board had found either anticipated by Kiuchi or obvious over Kiuchi in view of Dalton.

[00:13:55] Speaker 04:
But claim five does not depend from claim two.

[00:13:57] Speaker 04:
It depends from claim one.

[00:13:59] Speaker 04:
So technically, the invalidation of claims one, two, and five don't get you there to necessarily conclude that a combination of all three claims is also invalid.

[00:14:17] Speaker 01:
Judge Chen, you're correct.

[00:14:19] Speaker 01:
Claim five does not depend from claim two, but the claim two was found anticipated by Kiuchi.

[00:14:27] Speaker 01:
Claim two also depends from claim one.

[00:14:29] Speaker 01:
And so we believe that the collective findings there of the teachings of Kiuchi plus Dalton.

[00:14:35] Speaker 01:
Did you send a 28-chain letter?

[00:14:38] Speaker 01:
We did not say.

[00:14:39] Speaker 04:
When did you learn about the mangrove decision for March, 2023?

[00:14:44] Speaker 01:
We learned about the mangrove decision not long after it issued.

[00:14:47] Speaker 04:
We only learned that would have been an opportunity to file a 28 J letter and then spell out this theory of collateral sample for claim 18.

[00:14:57] Speaker 01:
Yes, Your Honor, the reason we did not is because we have taken a slightly different position than the patent owner in this case regarding when the decision from the Federal Circuit is considered to be final after all appeals.

[00:15:13] Speaker 01:
And Patent Owner had indicated to us that they planned to seek a cert review of that mangrove decision.

[00:15:20] Speaker 01:
And they only just filed and provided their briefing on that cert petition to us last week.

[00:15:25] Speaker 01:
And so we didn't have an opportunity to see that they had abandoned any challenge to the merits of the Kiuchi rejections that were affirmed in mangrove.

[00:15:34] Speaker 01:
And so there was not time.

[00:15:37] Speaker 01:
Around the same time that we received the Rule 28-J letter last week, I was realizing that with their filing and the issues they had attempted or had put into their cert petition that they were waiving their invalidity merits with respect to Kiuchi.

[00:15:59] Speaker 04:
So you're saying the position you're taking this morning

[00:16:03] Speaker 04:
springs from their 28-J letter, which was just filed last week.

[00:16:09] Speaker 01:
Yes, Your Honor, in combination with their petition for cert to the Supreme Court, which I believe was just filed the week before, but was not docketed at the court and made available to us until last week.

[00:16:23] Speaker 04:
How does that cert petition influence your willingness or unwillingness to take the position you're taking today?

[00:16:30] Speaker 01:
Your Honor,

[00:16:32] Speaker 01:
In their cert petition, they contest only a few procedural matters, and they are no longer disputing that Kiuchi anticipates the claims on the merits.

[00:16:43] Speaker 01:
They're disputing whether or not they've received a proper direct review from the patent office.

[00:16:49] Speaker 01:
And so it's not terribly unlike the situation that arose between Bernetics and Apple several years ago.

[00:16:58] Speaker 01:
And there was a dispute as to whether or not the availability of a cert petition would preserve

[00:17:04] Speaker 01:
Apple's ability to argue invalidity in re-examination.

[00:17:10] Speaker 01:
And Apple had argued that because it still maintained a possibility of seeking cert review of the entirety of its trial case, that it was not subject to estoppel from the intrapartage re-examination that it was pursuing.

[00:17:28] Speaker 01:
And we had understood that substantially the same sort of position.

[00:17:33] Speaker 01:
And so it wasn't until we saw their cert petition abandoning those invalidity arguments on the merits that we saw Mangrove as.

[00:17:42] Speaker 03:
Could you address the question of whether you think that the decision in the March Mangrove case affects the validity of the board's conclusion with respect to the client computer construction issue?

[00:17:59] Speaker 01:
Sure.

[00:17:59] Speaker 01:
I would first answer that I think this court can affirm, although in view of the procedural setting it's not necessary, but this court could affirm the board's decision even though it did not adopt that construction of client computer as a user's computer.

[00:18:17] Speaker 01:
Because on the record here in the argument, the board did not.

[00:18:22] Speaker 01:
The board did not.

[00:18:22] Speaker 01:
The board did not have the benefit of either of the mangrove decisions, but certainly not the benefit of this march's mangrove decision.

[00:18:32] Speaker 03:
So really, why wouldn't the proper course be simply to send it back to the board to make the determination as to whether that question ends up resolving the case, as opposed to our struggling

[00:18:46] Speaker 03:
with a construction that is arguably incorrect now, in light of the March Magnet mangrove case, to decide nonetheless that the decision can be deferred.

[00:18:58] Speaker 01:
Your Honor, first, we would dispute that that construction is incorrect.

[00:19:02] Speaker 01:
But I would.

[00:19:03] Speaker 03:
Well, that's what I was hoping you would tell me.

[00:19:05] Speaker 03:
Why do you think, as I understand it, that a mangrove case essentially comes down with a construction and the board declines

[00:19:16] Speaker 03:
to construe the term.

[00:19:18] Speaker 03:
Why isn't that a distinction that is at least telling the board that it has to come take another shot at client computer?

[00:19:32] Speaker 01:
Remanding for the board to take another shot, in this instance, I think would essentially be moot, because it's a question of what is the board going to do except adopt the analysis of Kiuchi, the same reference that was issued in the mangrove decision.

[00:19:44] Speaker 03:
Which is different from the analysis that it used before.

[00:19:46] Speaker 01:
It would be a different analysis, but it's the same outcome, still leading to anticipation of claim one and various dependent claims by Kiuchi.

[00:19:54] Speaker 03:
That's the part that would require us to do.

[00:19:58] Speaker 03:
the work that arguably ought to be done by the board in light of the correction of the claim construction.

[00:20:04] Speaker 03:
But you were saying before, I think, that you didn't think that the board's claim construction is wrong.

[00:20:10] Speaker 01:
Yes, Your Honor.

[00:20:10] Speaker 01:
I was saying.

[00:20:11] Speaker 03:
The assumption of failing to construe is wrong in light of what we've held.

[00:20:15] Speaker 01:
Your Honor, we believe that the construction affirmed in the Mangrove decision in March is not correct.

[00:20:22] Speaker 01:
We would point to the specification.

[00:20:26] Speaker 03:
So you think that our decision in March was wrong with respect to the construction of client computer.

[00:20:35] Speaker 03:
And what should we do about that since we can't overturn the decision made in March?

[00:20:40] Speaker 01:
Yes, Your Honor.

[00:20:41] Speaker 01:
I understand that as a panel decision.

[00:20:43] Speaker 03:
So let's assume for the purpose that we'll take the decision in March as being correct.

[00:20:50] Speaker 03:
OK?

[00:20:50] Speaker 01:
Yes, Your Honor.

[00:20:51] Speaker 03:
Now the question then is, that means that what the board did is wrong, correct?

[00:20:56] Speaker 03:
On that issue, on the client computer issue.

[00:21:00] Speaker 01:
That means that the board's analysis here, the board's decision not to formally construe client computer and to read the limitations from the specification into the claim about user's computer, that the board's analysis with respect to that is inconsistent, to use your term, I would say wrong, under the Mangrove decision.

[00:21:22] Speaker 03:
And then the next question, of course, is the one we started with, was why, under those circumstances, wouldn't the appropriate action be for us to send it back to the board and get the board to tell us what the board's construction and the board's understanding of the case is, the disposition of the case, rather than our trying to sort that out.

[00:21:40] Speaker 03:
That's normally an error of that sort.

[00:21:44] Speaker 03:
that leads to sending it back for the board to make a determination as to how it would come out.

[00:21:49] Speaker 03:
You say that's not necessary here.

[00:21:51] Speaker 03:
Explain to me why.

[00:21:53] Speaker 01:
Your Honor, we don't believe it's necessary because any further analysis by the board is essentially moot.

[00:21:59] Speaker 01:
As the patent owner acknowledges, claim one is already slated for cancellation.

[00:22:05] Speaker 01:
And the patent owner to this court has not raised any arguments with respect to the dependent claims from claim one.

[00:22:11] Speaker 03:
So your argument against remand is entirely based on

[00:22:14] Speaker 03:
the combination of 1, 2, and 5 as obviating any chance of 18 surviving.

[00:22:24] Speaker 03:
Right?

[00:22:24] Speaker 01:
Yes, Your Honor.

[00:22:25] Speaker 03:
OK.

[00:22:30] Speaker 04:
I'm sorry.

[00:22:31] Speaker 04:
Before you go, there's an argument that

[00:22:37] Speaker 04:
it was a new ground of rejection what the board did with the QG Solana by pivoting to relying on QG for the generating step.

[00:22:51] Speaker 04:
And is that true in your view that

[00:22:57] Speaker 04:
The examiner's rejection had to rely on Solano for that limitation, but then the court itself independently chose to rely on Chiuccio.

[00:23:09] Speaker 01:
With respect to the Solana in view of Kiuchi rejections, yes, the examiner's analysis had relied on Solana.

[00:23:20] Speaker 01:
And the board, in its decision, didn't say that that analysis was wrong, but it also didn't exactly put its stamp of approval on it.

[00:23:29] Speaker 04:
Right.

[00:23:29] Speaker 04:
And it went over and relied on Kiuchi for that limitation.

[00:23:35] Speaker 01:
Yes.

[00:23:35] Speaker 04:
So isn't that a new ground of rejection?

[00:23:38] Speaker 01:
I would argue it's not a new ground of rejection, because the rejection and the question of Kiyuchi's teaching of that same limitation had been part of this very same appeal with respect to the other rejections.

[00:23:49] Speaker 01:
And so there's not a new or different finding there.

[00:23:54] Speaker 01:
I think it's just a note.

[00:23:56] Speaker 04:
I don't remember that in a red roof.

[00:23:58] Speaker 04:
I recall your red roof sending to make an argument that

[00:24:02] Speaker 04:
They forfeited this argument that it's a new-branded objection because by regulation they were required to request reconsideration for a non-designated new-branded objection made in a board decision to have it designated as a new-brand and they didn't file that request and so therefore they're not permitted to make that argument on appeal.

[00:24:26] Speaker 04:
That was the argument I thought I saw you make.

[00:24:29] Speaker 01:
Yes, Your Honor, and Bernetics identified in its opposing brief, in the gray brief, that the regulation we had pointed to pertained to ex parte reexaminations.

[00:24:42] Speaker 01:
And this is an inter partes reexamination.

[00:24:45] Speaker 04:
Right.

[00:24:45] Speaker 04:
So what that means is I don't see anything in your red brief that actually makes the second alternative argument in defense of this rejection as

[00:24:55] Speaker 04:
being, in your view, not a new ground on the merits.

[00:25:09] Speaker 01:
Yes, Your Honor.

[00:25:10] Speaker 01:
The board didn't say what the examiner did was wrong.

[00:25:17] Speaker 01:
But the board also didn't affirm or adopt the examiner's analysis.

[00:25:25] Speaker 01:
The board provided it.

[00:25:27] Speaker 04:
The other side has told us that all that is at stake in this appeal in light of what happened in the March 23 Mangrove opinion is Claim 18.

[00:25:39] Speaker 04:
And then if we were to affirm the other appeal, then that would move the decision here on climate 18.

[00:25:47] Speaker 04:
Do you agree with all of that?

[00:25:50] Speaker 01:
Yes.

[00:25:51] Speaker 01:
And with respect to the questions that have come up in an argument today regarding the proper next step, if the appeal is rendered moot because of invalidated findings from copending cases, I direct the court to cases such as Facebook versus Windy City, where there is a very similar situation.

[00:26:11] Speaker 01:
And the proper remedy was not vacatur.

[00:26:14] Speaker 01:
It was to dismiss the appellant's appeal

[00:26:16] Speaker 01:
with respect to those claims that were the questions of invalidity had been rendered moot.

[00:26:22] Speaker 01:
Substantially, the same thing the court did in intuitive surgical versus ethicon.

[00:26:27] Speaker 01:
That's 25 February 4, 1035.

[00:26:30] Speaker 01:
And then an older case that was not presidential secures versus global telling.

[00:26:35] Speaker 01:
That's 685, Fed Appendix at 979.

[00:26:38] Speaker 03:
What was the citation?

[00:26:41] Speaker 01:
For the last one.

[00:26:41] Speaker 01:
For the last one, Securus versus Global Tilling, 685.

[00:26:44] Speaker 01:
685, OK.

[00:26:45] Speaker 01:
Fed Appendix at 979.

[00:26:49] Speaker 01:
In all of those cases, the court dismissed the appeal when the claims at issue had been rendered invalid by copending cases or cases that were decided.

[00:27:01] Speaker 01:
during the dependency.

[00:27:03] Speaker 03:
I'm not sure all of our decisions have been time consistent in this regard.

[00:27:08] Speaker 01:
I was not able to find any cases where the court had vacated.

[00:27:14] Speaker 01:
Where the court had vacated?

[00:27:16] Speaker 01:
The decision below, where the claims had been found unpatentable.

[00:27:21] Speaker 01:
Well, I see.

[00:27:22] Speaker 03:
I'm limited to that set of cases.

[00:27:24] Speaker 02:
OK.

[00:27:27] Speaker 02:
Anything for other counsel?

[00:27:28] Speaker 01:
No.

[00:27:28] Speaker 01:
If there are no further questions,

[00:27:32] Speaker 01:
Thank you, Your Honor.

[00:27:34] Speaker 02:
Thank you.

[00:27:35] Speaker 02:
Mr. Timkheyev has two minutes plus.

[00:27:40] Speaker 00:
Thank you, Your Honor.

[00:27:41] Speaker 00:
Just to clarify on the cert petition, I mean, our position is not that the cert petition somehow deprives this court's decision of its collateral estoppel effect.

[00:27:51] Speaker 00:
I mean, there may be a question whether the board's decision is entitled to immediate collateral effect, but certainly on the next linear in the other cases, and just general jurisprudence this court says.

[00:28:01] Speaker 00:
Our third petition challenges, the main issue we challenge there is whether in Mangrove the board properly joined Apple as a party to Mangrove's early file petition.

[00:28:13] Speaker 00:
And we argue that if that joined was statutorily improper, then the entire proceeding has to be restarted anew, which would eradicate all of the board's findings in that case.

[00:28:25] Speaker 00:
I think, you know, on the impact of this court's first mangrove decision and then the board's decision in mangrove on remand, we think that the board's analysis here is just not reconcilable with those.

[00:28:38] Speaker 00:
I think, you know, both this court's decision but also then the board's finding on remand very clearly says that the client computer is not the same as the client side proxy.

[00:28:47] Speaker 00:
So in addition to, you know, the board here

[00:28:51] Speaker 00:
reconsidering his decision in light of this court's guidance we think it actually has to consider what another board panel did in mangrove on remand because the agency cannot come to two totally different conclusions with respect to the same you know the same path of

[00:29:07] Speaker 00:
With respect to the collateral estoppel effect from the combination of claims 1, 2, and 5, the board's finding here was that the board rejected our argument that there was a direct connection VPN because it found direct connection between the proxies, which we don't dispute.

[00:29:24] Speaker 00:
We think because Mangrove, Discord and Mangrove, affirm the finding of direct connection VPN disclosure on a different basis.

[00:29:33] Speaker 00:
That's why we think there's a collateral stop on the fundamental issue of direct connection VPN here.

[00:29:39] Speaker 00:
But it doesn't mean that the subsidiary issue, such as whether the client computer is a client proxy or whether it's a user agent, that there's any kind of a stubble for that.

[00:29:48] Speaker 00:
And then the last point, as I think my friend admitted, when the board does not adopt the examiner's rejection, does not put its own stamp on approval, that it seems to us, by definition, a new ground of rejection.

[00:30:05] Speaker 00:
And the appropriate course of action for that is to remand to the board so the board can analyze the combination properly in light of this court's diagnosis.

[00:30:14] Speaker 04:
Before you go, your second to last point that you just made on

[00:30:17] Speaker 04:
the Kyuuchi only rejections or Kyuuchi and some other reference that's not Solana.

[00:30:24] Speaker 04:
My understanding was that

[00:30:26] Speaker 04:
Any remaining claims like two five six others are are No longer live questions for purposes of this appeal in light of what happened in the March 23 mangrove decision and so far for your purposes the only live claim

[00:30:50] Speaker 04:
left on this appeal is claim 18 and then the QG Solana combination against claim 18.

[00:30:57] Speaker 04:
Is that correct?

[00:30:58] Speaker 04:
That's what I heard you say last time.

[00:31:00] Speaker 00:
Yes, Your Honor, that is correct.

[00:31:04] Speaker 00:
Because some of the claims have not been found unpatentable as a result of this court's latest performance in Mangrove.

[00:31:12] Speaker 00:
So then any questions as to the validity of those claims are moot.

[00:31:16] Speaker 00:
And then there are some other claims, like claims two and five, which depend on claims, but because this board

[00:31:23] Speaker 00:
invalidated those claims on the basis of finding a direct connection VPN disclosure, we think there is a collateral estateless to that fundamental issue, even though the basis for that finding, in our view, was incorrect.

[00:31:37] Speaker 00:
But nevertheless, that is the finding that also this court affirmed the mangrove.

[00:31:42] Speaker 04:
So could I just hear you one more time explain why

[00:31:49] Speaker 04:
If we were to affirm a rejection of claims 1, 2, and 5 under Kiuchi, why doesn't that necessarily render claim 18 unpatentable?

[00:31:59] Speaker 00:
Claim 18, it both has a different additional limitation, and also because the rejections of those claims, 1, 2, and 5, and the others were on the basis of Kiyuchi.

[00:32:10] Speaker 00:
So it's an anticipation rejection, at least for independent claim 1.

[00:32:16] Speaker 00:
The basis for the board's rejection of claim 18 here was an obviousness on the Kiyuchi-Solana.

[00:32:22] Speaker 00:
It's a different analysis, you honor, in our view.

[00:32:26] Speaker 04:
OK.

[00:32:26] Speaker 04:
The full consequence is a conclusion that Kyuuchi teaches everything in claim one, everything in claim two, everything in claim five, and then by logic, perhaps everything in claim 18, since they all share the same limitations.

[00:32:42] Speaker 04:
The rejection in front of us today is a Kyuuchi Solana, not a Kyuuchi.

[00:32:46] Speaker 04:
And so for that reason, we wouldn't be able to just straight up affirm on claim 18.

[00:32:52] Speaker 00:
That is our view, Your Honor, and certainly because Claim 18, which is an independent claim, also has that additional limitation, which is not present in Claim 1, which was held unpatentable.

[00:33:04] Speaker 02:
Thank you, Counsel.

[00:33:05] Speaker 02:
I think we have your arguments.