[00:00:00] Speaker 03:
Our next case is 3G licensing versus Honeywell et al.

[00:00:06] Speaker 03:
2023-1557.

[00:00:09] Speaker 03:
We're ready when you are, Mr. DiMarco.

[00:00:15] Speaker 02:
Good morning, Your Honors.

[00:00:16] Speaker 02:
My name is Andrew DiMarco, an associate at Devlin Law Firm here on behalf of Appellant 3G.

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

[00:00:23] Speaker 02:
The matter before the court today is straightforward.

[00:00:26] Speaker 02:
First, did the board err in determining that 3G waived its arguments regarding slide 8?

[00:00:32] Speaker 02:
And second, was that error harmless?

[00:00:35] Speaker 02:
The board did err.

[00:00:37] Speaker 02:
That error was not harmless.

[00:00:39] Speaker 02:
It was because the board precluded and failed to adequately consider this argument that the board failed to find written description support in the foreign application from which the 653 patent derived its priority date.

[00:00:52] Speaker 02:
As a result, the Samsung reference, the key reference to Honeywell's invalidity analysis, which post-dates the priority date of the 653 patent, was permitted to be considered as prior art and ultimately led to the invalidation of the challenge claims.

[00:01:09] Speaker 02:
So I want to turn first to this issue of waiver.

[00:01:12] Speaker 02:
And in finding that 3G waived its arguments regarding slide eight, the board erred in two ways.

[00:01:17] Speaker 02:
First, it misapplied and misinterpreted this court's ruling in reinvasive, a case which turns on intentional abandonment of an argument, a fact which is not present here.

[00:01:28] Speaker 02:
Second, its reliance on the consolidated trial practice guide is ineffective.

[00:01:33] Speaker 02:
Under this court's precedence, the guide is merely that, a guide, and it is to be

[00:01:39] Speaker 02:
It must yield as a system when it is at odds with statute, which it is here.

[00:01:45] Speaker 02:
And there's no real discussion.

[00:01:46] Speaker 04:
When it's at odds with the statute, the board is allowed to adopt its own procedures, right?

[00:01:50] Speaker 02:
The board is allowed to adopt its own procedures.

[00:01:52] Speaker 04:
They have a procedure that says if you raise something in the, whatever it's called, the first, the pre-response, and don't re-raise it in your final response, then it's waived.

[00:02:05] Speaker 04:
So the board is... Are you saying they're not allowed to adopt that rule?

[00:02:08] Speaker 02:
I'm saying we're not allowed to adopt that rule when that rule conflicts the statute.

[00:02:11] Speaker 02:
And our argument is it does conflict the statute, and therefore it must fall.

[00:02:14] Speaker 04:
Where does it conflict with the statute?

[00:02:16] Speaker 02:
It conflicts with the statute when we take a look at 35 U.S.C.

[00:02:18] Speaker 02:
313 and where it combines with 316A8.

[00:02:23] Speaker 02:
Specifically, 316A or 313.

[00:02:27] Speaker 04:
Where does the statute say the board can't adopt a waiver rule?

[00:02:31] Speaker 02:
The statute does not explicitly state that, Your Honor.

[00:02:33] Speaker 02:
No.

[00:02:34] Speaker 02:
But the implications are where we went into the problems.

[00:02:36] Speaker 02:
And that's our argument here today.

[00:02:38] Speaker 02:
So if we take a look, for example, at Section 313, which is what permits the preliminary response which Your Honor was referring to, it says that the patent owner is free to file that preliminary response prior to the institution decision.

[00:02:52] Speaker 02:
You don't have to.

[00:02:53] Speaker 02:
Correct.

[00:02:54] Speaker 02:
We do not have to.

[00:02:55] Speaker 02:
And then Section 316A8 states that the director shall prescribe regulations

[00:03:00] Speaker 02:
as your honor notes, which allow for the response to a petition under section 313 after an inter partes review has been instituted with said response including additional factual evidence and expert opinions on which the patent owner relies in support of their response.

[00:03:17] Speaker 02:
And then if we look to CFR section 42120, it states.

[00:03:21] Speaker 04:
Where in any of this does it say that the board can't require you to re-raise arguments in the response?

[00:03:27] Speaker 04:
that you have in the preliminary response?

[00:03:30] Speaker 02:
Well, Your Honor, if I were to pull to a specific area, I would say that it's where it says that the 316A8

[00:03:37] Speaker 02:
where the response to the petition filed after institution is filed under Section 313A as additional arguments.

[00:03:47] Speaker 02:
So then what we have is a statutory framework which allows for a preliminary response filed before and then additional arguments filed after.

[00:03:56] Speaker 04:
And what's going to happen to suggest that the board can adopt a policy of requiring you to re-raise things, particularly if in its institution decision it rejected

[00:04:06] Speaker 04:
the argument that you're relying on.

[00:04:07] Speaker 02:
I want to address that argument specifically about the board rejecting the preliminary response in a moment.

[00:04:15] Speaker 02:
But to that argument, the board is allowed to adopt these regulations insofar as it doesn't conflict

[00:04:20] Speaker 02:
with statute and so far as they are reasonable.

[00:04:22] Speaker 04:
The board statute as read and interpreted by the board right now... I assume that statute is not enough to prohibit the board's waiver rule.

[00:04:29] Speaker 04:
Sure.

[00:04:30] Speaker 04:
Why isn't it reasonable?

[00:04:31] Speaker 02:
The framework that has been set up by the board in this circumstance requires the patent owner to reproduce in hate verbiage the exact arguments from its preliminary response in whole to its patent owner's response.

[00:04:45] Speaker 01:
That creates an issue for two reasons.

[00:04:47] Speaker 01:
You were warned to raise that argument.

[00:04:51] Speaker 01:
I'm sorry, I missed the first one.

[00:04:52] Speaker 01:
You were warned to raise the argument at a later time.

[00:04:55] Speaker 02:
we were informed, by the court's scheduling order, that the argument may be waived.

[00:05:01] Speaker 02:
And I know that is distinct from the way in which they said it.

[00:05:03] Speaker 01:
Would that kind of alert you to the fact you've got to pay attention to the issue?

[00:05:08] Speaker 02:
Well, Your Honor, I would say that we did raise this argument.

[00:05:11] Speaker 02:
This argument is referred to in both the patent owner's response and in the SOAR reply.

[00:05:16] Speaker 02:
Now, admittedly, it is true that the argument is raised more fulsomely

[00:05:20] Speaker 02:
and fully developed in the pre-institution decision documents.

[00:05:24] Speaker 04:
Well, now you're waiting into whether you actually waived it or not, whether it's permissible for the board to adopt this rule.

[00:05:32] Speaker 04:
I want you to finish out your thought about why it's not reasonable for the board to require you

[00:05:37] Speaker 04:
to do this.

[00:05:39] Speaker 02:
Yes, you are.

[00:05:40] Speaker 02:
So there's two reasons strictly as to why it's illogical and thus can't be allowed for that reason.

[00:05:45] Speaker 02:
So as I was stating earlier, it's the reproduction of the exact words literally to copy and paste those arguments from the patent, from the preliminary response.

[00:05:51] Speaker 02:
I don't think they're requiring that.

[00:05:53] Speaker 02:
Well, Your Honor, it seems to me that that is, in fact, the case.

[00:05:56] Speaker 04:
If the argument is not... But the point is, if you file a preliminary response and then they issue the institution decision, you need to react to the institution decision.

[00:06:05] Speaker 04:
And if they've rejected an argument in the institution decision that you raise in the preliminary response, then you need to re-raise it and explain why they're wrong.

[00:06:14] Speaker 04:
That seems inherently reasonable.

[00:06:17] Speaker 03:
Council, even if you're correct that there was no waiver, don't you lose on the merits?

[00:06:23] Speaker 03:
Look at footnote six on appendix 40 of the board's opinion.

[00:06:31] Speaker 03:
They say even without waiver, you lose.

[00:06:35] Speaker 02:
So Your Honor, I can test that point on several grounds.

[00:06:41] Speaker 02:
So first, if you take a look at the board's

[00:06:44] Speaker 02:
Alleged address of this slide 8 argument.

[00:06:48] Speaker 02:
We note here that we have a single sentence without any indication to the record as to why this is in fact the case, which is contrary to Princeton Vanguard, as we discussed in the blue brief of 35.

[00:07:02] Speaker 02:
We don't need to touch on that in great detail.

[00:07:05] Speaker 02:
But indeed, nor does it provide a single legal citation for its decision not to consider slide eight for this purpose because it post-dates the Korean application.

[00:07:14] Speaker 02:
Nor could it, as that's directly contrary to the sports ruling,

[00:07:17] Speaker 02:
which we again discuss on 35 engine increase Sanofi Which states that's permissible to use evidence that post-8s in order to illustrate what a procedure would understand relevant at the time which was the entire point of a holistic argument that happened when it was making and that ultimately comes down to

[00:07:33] Speaker 02:
to one of the key issues with this footnote.

[00:07:36] Speaker 02:
It's that if we see here on note six, what the board is saying is that we do not agree that slide eight of SAMHSA necessarily means that the RRI disclosed in the 6839 application, that is the application upon which the six-hour free patent relies for its priority date, indicates whether the mobile station has enough power and data to increase the data transmission rate.

[00:07:58] Speaker 02:
That is simply not what we argued below.

[00:08:01] Speaker 02:
Rather, what we argued below was the idea that a person having ordinary skill in the art, at the time we've been mentioned, would look at the Korean application and understand that the reverse rate indicator there was the only logical area where this information could come from and would thus understand that there's written description support in the Korean application when looked at holistically.

[00:08:22] Speaker 02:
That's what our expert testified to.

[00:08:24] Speaker 02:
That is what lies in the record and is addressed here only with attorney argument.

[00:08:30] Speaker 02:
So I disagree, Your Honor, with the concept that we would lose on the merits below.

[00:08:34] Speaker 02:
And indeed, this note, as I mentioned, has the second sentence, which was contradicted by this court's law, and then also notes that there's insufficient information in the record to conclude by a preponderance of the evidence that the RRI described in Samson's slide is the same RRI as disclosed in the first Korean application.

[00:08:56] Speaker 02:
We argue in our briefing that that is putting the burden on the patent owner

[00:09:00] Speaker 02:
to disprove invalidity, which is contrary to courts filling in dynamic drinkware.

[00:09:10] Speaker 03:
Well, the burden is to overcome a reference, which is your obligation, Mike?

[00:09:16] Speaker 02:
Well, the burden is, as I understand dynamic drinkware, the way that the burden moves is the

[00:09:26] Speaker 02:
The petitioner has to put on that prima facie case.

[00:09:29] Speaker 02:
The patent owner has a duty to produce evidence.

[00:09:32] Speaker 02:
To overcome the reference.

[00:09:34] Speaker 02:
Right, which we produce the evidence.

[00:09:36] Speaker 02:
But that's a burden of production as opposed to a burden of persuasion.

[00:09:40] Speaker 02:
And here, the burden of persuasion is what is put on the patent owner.

[00:09:43] Speaker 02:
And that is something we can test.

[00:09:45] Speaker 02:
And if that's not the case of what the board was saying, then they needed to be more clear in what they were doing in their footnote.

[00:09:50] Speaker 02:
Instead, we have barely two sentences, which is set to address this entire argument.

[00:09:57] Speaker 02:
So that alone would require remand to address.

[00:10:00] Speaker 01:
Didn't they address it in the prior institution decision?

[00:10:04] Speaker 02:
Well, Your Honor, if that is the case, so they did address this argument in the prior institution decision.

[00:10:08] Speaker 02:
But if the board was to be incorporating the decisions that's made in the institution decision, it does not do so here.

[00:10:15] Speaker 02:
They didn't have to, because you didn't respond to it.

[00:10:18] Speaker 02:
I disagree, then, Your Honor.

[00:10:19] Speaker 02:
We referenced it.

[00:10:20] Speaker 02:
Didn't there any response brief?

[00:10:22] Speaker 02:
i disagree on the reference that we've got to sit in both the batman response and in the sir apply and it goes to the service and i'm sorry i'm not the same way you did in your former response strode is not done in the same way that is that is correct but it was not that we have and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and

[00:10:52] Speaker 02:
So mRNA-invasive is what they rely on, though, for that

[00:10:58] Speaker 02:
as the case law for showing what is in reality what they say should be forfeiture, but they say is waiver, a distinction which is blurred by both the board and by Honeywell in this issue.

[00:11:10] Speaker 04:
Are you suggesting that the board can only find legal waiver labor under its rule, or what they really mean is forfeiture?

[00:11:19] Speaker 04:
Because the courts for years, including our courts, have blurred the line between that.

[00:11:24] Speaker 04:
And what the board means here is forfeiture.

[00:11:27] Speaker 02:
So what the board means here is forfeiture.

[00:11:32] Speaker 02:
That is something that they are capable of finding, but that is still not what occurred here in this circumstance.

[00:11:38] Speaker 02:
As I mentioned, the argument is raised in the subsequent briefing.

[00:11:43] Speaker 02:
I see that I'm reading into my rebuttal time here.

[00:11:46] Speaker 02:
Unless Your Honors have further questions, I'd like to reserve this time for rebuttal.

[00:11:49] Speaker 03:
We will serve it for you.

[00:11:51] Speaker 02:
Yes, Your Honor.

[00:11:56] Speaker 03:
Mr. Keith.

[00:12:04] Speaker 00:
Good morning, and may it please the court, Daniel Kies, representing Sierra Wireless, arguing on behalf of the appellees, Sierra Wireless, Honeywell, Intellix, and Tarion.

[00:12:14] Speaker 00:
I think it's worth emphasizing at the outset the broader context of this case before diving into the specifics of the waiver and priority date issues here.

[00:12:22] Speaker 00:
The 653 patent and the relevant prior art here came out of proposals to a wireless networking standard setting process.

[00:12:31] Speaker 00:
LG Electronics, the original assignee, proposed one aspect of what is recited in the claims, that signal point mapping three possible commands from a base station to a mobile station, telling the mobile station to either increase, decrease, or maintain its data rate.

[00:12:49] Speaker 00:
That aspect was not new or non-obvious.

[00:12:53] Speaker 00:
LG's most important competitor, Samsung, was also participating in this standard setting process.

[00:12:59] Speaker 00:
Samsung proposed a separate technique that is sending a single IAB bit from the mobile station to the base station in the other direction whereby the mobile station could signal to the base station I have enough power and enough data such that I can accept an increased data rate on the reverse link Samsung's proposal was of a new concept

[00:13:22] Speaker 00:
That is, sending that IAB either by adding a bit to the RRI or by completely redefining the RRI scheme.

[00:13:30] Speaker 00:
It's worth emphasizing here that Samsung would have had no reason and would not have needed to propose this IAB to the standard setting organization if the RRI scheme already included that information in those messages.

[00:13:45] Speaker 00:
LG recognized that Samsung had come up with a good idea with this IAB.

[00:13:51] Speaker 00:
and specifically incorporated Samsung's IAB concept into its later standard setting proposals and explicitly credited Samsung with the idea.

[00:14:00] Speaker 00:
That's appendix 2029.

[00:14:01] Speaker 00:
Then LG added the IAB concept to a later provisional application and the subsequent non-provisional application that issued as the 653 patent.

[00:14:12] Speaker 00:
But, and this is key, LG failed to disclose the Samsung proposal or to credit Samsung

[00:14:20] Speaker 00:
before the PTO.

[00:14:21] Speaker 00:
After the examiner rejected LG's original idea or the claims that incorporated LG's original idea, LG amended its claims to recite the IAB concept and thus secured allowance.

[00:14:34] Speaker 00:
Against this backdrop, it's perhaps unsurprising that the current patent owner has attempted to argue that its earlier first provisional application before the Samsung proposal should be interpreted based upon that later Samsung proposal.

[00:14:47] Speaker 00:
But that argument was doomed to fail, because it was Samsung and not LG that came up with the IAB concept, so that concept simply is not in the earlier provisional applications.

[00:14:58] Speaker 00:
After appellant slide eight arguments rejected by the board at the institution stage, the appellant was expressly warned of the consequences of failing to restate those arguments in its post-institution response.

[00:15:13] Speaker 00:
Despite those warnings and the black letter law of this court, appellants did not include those arguments in their post-institution response.

[00:15:23] Speaker 00:
That's a clear waiver.

[00:15:25] Speaker 00:
In this case, in order to even garner a remand, an appellant has to show error by the board on two counts.

[00:15:31] Speaker 00:
First, that there was no waiver when, in fact, there was.

[00:15:35] Speaker 00:
And second, that there was a lack of substantial evidence supporting the board's ultimate priority date determination.

[00:15:41] Speaker 03:
You're saying there was waiver, not forfeiture?

[00:15:45] Speaker 00:
I think there was waiver here.

[00:15:48] Speaker 00:
So they make an argument about waiver versus forfeiture.

[00:15:52] Speaker 00:
I think, well, first of all, they never explain why that distinction has any result in this case.

[00:15:58] Speaker 03:
The result's the same.

[00:15:59] Speaker 00:
The result's the same.

[00:16:00] Speaker 00:
They didn't raise the argument.

[00:16:01] Speaker 00:
They didn't preserve the argument.

[00:16:04] Speaker 04:
But I think the board's rules only go to intentional waiver, or that they really mean forfeiture, or both.

[00:16:11] Speaker 00:
I think the board's rules would apply to both.

[00:16:14] Speaker 00:
They use the term waiver.

[00:16:16] Speaker 04:
To this day, they still use the word waiver to encompass both the intentional waiver and forfeiture.

[00:16:24] Speaker 04:
We recently made that distinction to make it clear, but I'm sure you can go find dozens of decisions in the last two years that use waiver in the forfeiture sense.

[00:16:35] Speaker 04:
So I just am curious as to

[00:16:37] Speaker 04:
if you think the board intended only to apply the strict intentional waiver rule or not?

[00:16:42] Speaker 00:
No, I don't think that they intended to only apply the strict intentional waiver rule.

[00:16:48] Speaker 00:
But I do think the facts established an intentional relinquishment here.

[00:16:52] Speaker 00:
They made the argument in their preliminary response.

[00:16:55] Speaker 00:
They excised that argument from their post-institution response.

[00:16:58] Speaker 00:
They were expressly warned of the consequences, both in the trial practice guide and the board scheduling order, of making that decision.

[00:17:06] Speaker 03:
Why don't you get to the merits if you don't agree on waiver?

[00:17:11] Speaker 00:
Correct.

[00:17:11] Speaker 00:
And if there are any other questions on waiver, I'm happy to answer them.

[00:17:17] Speaker 00:
Your Honor has correctly asked the questions on waiver.

[00:17:19] Speaker 00:
So I'm happy to move on.

[00:17:21] Speaker 01:
Even on that point, and this is to Judge O'Rourke's earlier question with respect to footnote six, is it?

[00:17:30] Speaker 01:
That the board went ahead and said, even if we don't find waiver, we find, and that did reach a determination on that issue.

[00:17:37] Speaker 00:
Absolutely correct, Your Honor.

[00:17:41] Speaker 00:
found waiver and then said, even if we didn't find waiver on this specific point of these slide eight arguments from Samsung, even if we didn't find that there was waiver, we find that the preponderance of the evidence shows that the Samsung RRIs are not the same RRIs as the provisional application RRIs.

[00:18:02] Speaker 00:
So yes, they addressed the substance.

[00:18:05] Speaker 00:
Those slide eight arguments, I would note, in the pre-institution brief that they filed are only a page and a half.

[00:18:14] Speaker 00:
And then in the institution decision, the institution decision addresses those for four pages, fully analyzes them.

[00:18:20] Speaker 00:
And then they raise no additional arguments, as Judge Hughes, I believe, pointed out.

[00:18:25] Speaker 00:
And so they raise no additional arguments at the post-institution phase.

[00:18:29] Speaker 00:
And so there was nothing else for the board to really respond to.

[00:18:33] Speaker 00:
And so the board restated its earlier conclusions.

[00:18:39] Speaker 00:
And I would like to say on the issue of waiver versus forfeiture, this court has recently held in the NRA Google case, I believe that's 980 F3, 862 to 863 explicitly notes that

[00:18:55] Speaker 00:
You know, whether the court had referred to waiver or forfeiture in a case, the case law was good for forfeiture as well.

[00:19:02] Speaker 00:
So I think that would apply in either case here.

[00:19:05] Speaker 00:
Regarding the underlying priority date determination, they have a high burden to overcome.

[00:19:11] Speaker 00:
They have to show that there was no substantial evidence to support the board's decision.

[00:19:15] Speaker 00:
And here, there was substantial evidence, and the board was objectively correct in determining that the 6839 application fails to disclose the concept of an IAB

[00:19:25] Speaker 00:
a bit sent from the mobile base station to signal whether it has sufficient power and sufficient data in order to accept a data transmission rate increase.

[00:19:37] Speaker 00:
The board's final written decision spends 25 full pages at appendix 15 to 40 analyzing in detail the priority data issues and the arguments made by the appellees and appellants below and reaches the objectively correct conclusion

[00:19:53] Speaker 00:
that the 653 claims at issue cannot claim priority back to the earliest Korean application because that earliest Korean application simply has no disclosure of the IAB concept.

[00:20:06] Speaker 00:
What it has is a single sentence repeated three times throughout that provisional application that just mentions RRIs and says that the RRIs transmit

[00:20:19] Speaker 00:
the existing data rate that the mobile station is using back at the base station.

[00:20:26] Speaker 00:
That's all that it discloses.

[00:20:27] Speaker 00:
There's nothing in that application, nothing at all about the concept of the mobile station sending a dedicated bit back to the base station to signal whether it has sufficient power and sufficient data.

[00:20:40] Speaker 00:
The board's conclusion here was plainly supported by substantial evidence.

[00:20:46] Speaker 00:
My colleague on the other side

[00:20:48] Speaker 00:
complains about the brevity of the analysis of the board on the Samsung Slide 8 point.

[00:20:56] Speaker 00:
But in the context here, where the board was not addressing any additional argument made at the post-institution phase, the final written decision fully and adequately addresses the issues.

[00:21:10] Speaker 00:
One point that I'd like to make is there's a distinction here that I think that

[00:21:16] Speaker 00:
Appellant's briefs kind of blur the lines between regarding the prior written description disclosure of the earliest provisional application.

[00:21:25] Speaker 00:
Appellant repeatedly argues that a positive would note that an RRI, for example, could be used or was capable of being used or could be modified to include that IAB.

[00:21:37] Speaker 00:
But that's not enough.

[00:21:38] Speaker 00:
Under this court's precedent in Lockwood versus American Airlines, there has to be actual written description support.

[00:21:46] Speaker 00:
for what the claims recite, not just written description that would render those claims obvious.

[00:21:52] Speaker 00:
And here there's not even written description that would render those claims obvious.

[00:21:59] Speaker 00:
On the factual points, I think the record is very clear that there is no written description support for that IAB concept in the earlier priority application.

[00:22:12] Speaker 00:
LG itself explicitly credited Samsung

[00:22:15] Speaker 00:
with proposing this concept during the standard setting process.

[00:22:20] Speaker 00:
That's at Appendix 2029.

[00:22:22] Speaker 00:
And it's telling that LG didn't just rely on its earlier provisional application to file the subsequent provisional application and modified the disclosure in its non-provisional application to expressly recite this IAB concept.

[00:22:38] Speaker 00:
The fact that they added that disclosure demonstrates that it wasn't in their earlier application.

[00:22:49] Speaker 00:
My colleague on the other side also raised the concept of burden shifting.

[00:22:54] Speaker 00:
And I just want to note that nowhere in note six of the final written decision, that's appendix page 40, does the board say that the burden of proof is on the patent owner.

[00:23:04] Speaker 00:
The board is simply rejecting in a potentially awkwardly phrased footnote arguments that the patent owner had actually failed to make during the trial phase.

[00:23:15] Speaker 00:
Again here, in order to succeed in this appeal,

[00:23:19] Speaker 00:
The appellants have to both went on the issue of waiver, which is a threshold issue that they can't went on.

[00:23:24] Speaker 00:
They clearly waived these arguments.

[00:23:27] Speaker 00:
But even if they were able to overturn the board's waiver finding, on the merits they lose.

[00:23:32] Speaker 00:
There's simply no disclosure in that earlier 6839 application of the IAB concept.

[00:23:40] Speaker 00:
I heard my colleague mention this concept of these holistic arguments that the board failed to address, but they never made those arguments.

[00:23:47] Speaker 00:
They're not in their brief.

[00:23:49] Speaker 00:
This idea, this holistic slide aid of Samsung argument simply doesn't appear in their post-institution response.

[00:23:56] Speaker 00:
And Fairly Red is not actually in their preliminary response either.

[00:24:00] Speaker 00:
With that, if your honors have any more questions, I will answer them.

[00:24:03] Speaker 00:
Otherwise, I will yield.

[00:24:06] Speaker 03:
Thank you, Mr. Case.

[00:24:09] Speaker 03:
Mr. DiMarco has some more photos on.

[00:24:34] Speaker 02:
Yes, Your Honor.

[00:24:35] Speaker 02:
So I would like to begin by addressing actually the last point my friend Abar made up here regarding the language about a burden shift at the footnote on Apex 40.

[00:24:46] Speaker 02:
The language is very clear here from the board.

[00:24:49] Speaker 02:
We find insufficient information in the record to conclude by a preponderance of evidence that the RRI described in Samsung Slide 8 is the same RRI as disclosed in the first Korean application.

[00:24:59] Speaker 02:
That's exactly what

[00:25:01] Speaker 02:
or not exactly that is what they believe patent owners will be arguing.

[00:25:04] Speaker 02:
They say that they don't find enough evidence by preponderance.

[00:25:07] Speaker 02:
That is a burden shift.

[00:25:08] Speaker 02:
The language is there.

[00:25:10] Speaker 02:
On the first issue regarding the fact that on this issue of waiver, I do want to address something that was left over from my first time up here, which was this argument about

[00:25:25] Speaker 02:
the system put in place by the PTO regarding the preliminary response and the patent owner's response.

[00:25:32] Speaker 02:
As I think Judge Hughes had mentioned while we were discussing this,

[00:25:36] Speaker 02:
The patent donor need not file a patent owner's response.

[00:25:39] Speaker 02:
It may file only a preliminary response.

[00:25:41] Speaker 02:
Under the system that is set up currently by the board, if a patent owner were to file a preliminary response and then not file a patent owner's response, which is within their right, under this schema, a patent owner would waive all arguments made in that preliminary response.

[00:25:57] Speaker 02:
That is what the board is holding in-range evasive stance for.

[00:26:00] Speaker 02:
And that can't be the case.

[00:26:02] Speaker 04:
I don't understand that at all.

[00:26:04] Speaker 04:
If they don't file a response, then they're relying on their preliminary response.

[00:26:09] Speaker 04:
All the board is saying is, if you file both, you have to tell us which arguments you're maintaining.

[00:26:15] Speaker 02:
Well, if that's the case, Your Honor, that's not what the board said at any rate.

[00:26:18] Speaker 02:
That's not what this court references at any rate.

[00:26:20] Speaker 02:
That's not what the board states in its regulations.

[00:26:23] Speaker 02:
And that's not what the board says here.

[00:26:25] Speaker 02:
The board says, if the argument's in the preliminary response, it must show up in the patent order's response, or it is waived.

[00:26:30] Speaker 02:
So, if that is the schema, that schema falls under a logical consideration.

[00:26:36] Speaker 04:
Even if you don't file a response at all?

[00:26:39] Speaker 04:
Have they ever said that, or have we ever said that?

[00:26:42] Speaker 02:
No, Your Honor.

[00:26:45] Speaker 04:
You're stating a hypothetical that nobody's found to have existed.

[00:26:50] Speaker 02:
It's the logical conclusion of a language.

[00:26:52] Speaker 04:
The logical conclusion is if you don't file two responses, then the one response you filed states your arguments.

[00:26:59] Speaker 04:
But if you file a second one, you need to preserve all your arguments.

[00:27:03] Speaker 04:
Until the board reaches your illogical conclusion, which we'll address, then that's not what happened here.

[00:27:11] Speaker 04:
What happened is you filed a preliminary response.

[00:27:14] Speaker 04:
They said one of your arguments is wrong.

[00:27:16] Speaker 04:
And you didn't re-raise it in a way they found sufficient to preserve it.

[00:27:20] Speaker 02:
Okay, Your Honor.

[00:27:23] Speaker 02:
On the issue, then, that my friend mentioned regarding the argument being excised from post-institution briefing, as you mentioned, based on our reading of the statute, there's no extension of the argument, but again, the argument appears on APICS 529 through 530.

[00:27:40] Speaker 02:
Waiver versus Forfeiture was mentioned before about how it's the same result.

[00:27:45] Speaker 02:
Regardless, however, as the score held in Enroy Google Tech, which was brought up by my friend,

[00:27:50] Speaker 02:
It specifically mentions that the difference there is important because it can have impacts on appeal and thus that distinction is specifically worth regarding.

[00:28:00] Speaker 02:
Then finally on this issue of the board mentioning or incorporating its arguments into its final written decision, if that is the case, if the board is permitted to bring in its conclusions from pre-institution decisions into its final written decision, that argues for the same statutory construction

[00:28:18] Speaker 02:
which the patent owner has been arguing in this case, where if it was in the preliminary response, it can certainly be considered by the end.

[00:28:25] Speaker 02:
I see that my time has concluded.

[00:28:26] Speaker 02:
So unless your honors have last questions, I'm happy to hear that.

[00:28:30] Speaker 03:
Thank you, both counsel.

[00:28:31] Speaker 03:
The case is submitted.