[00:00:01] Speaker 03:
Our next case on the docket today is CloudFlare Inc.

[00:00:06] Speaker 03:
versus Sable Networks Inc.

[00:00:09] Speaker 03:
Appeal Number 23-1612.

[00:00:51] Speaker 03:
Mr. Farrison, whenever you're ready, you can proceed.

[00:01:12] Speaker 02:
May it please the court.

[00:01:15] Speaker 02:
The board should have granted CloudFlare's request to correct the IPR petition.

[00:01:21] Speaker 02:
The court's reversed for two reasons.

[00:01:24] Speaker 02:
First, the board improperly conditions its power to correct IPR petitions on the category of error.

[00:01:33] Speaker 02:
Here, typographical errors.

[00:01:35] Speaker 02:
In other cases, clerical or non-substantive errors.

[00:01:40] Speaker 02:
This is not the correct legal standard.

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The board can exercise discretion to correct any type of error if it leads to just results.

[00:01:50] Speaker 02:
The court should remand and allow the board to reconsider under the correct legal standard.

[00:01:56] Speaker 02:
Second, on this record, the board abused its discretion by failing to correct Claude Flair's petition.

[00:02:04] Speaker 02:
Sable had four months to respond after the board identified Claude Flair's error.

[00:02:09] Speaker 02:
But Sable's response identified no prejudice, and more importantly, did not identify any additional substantive arguments for the board-dependent claims at issue.

[00:02:20] Speaker 04:
Counsel, did Cloudflare ever ask the board to consider whether the alleged error in the petition was obvious, as opposed to typographical?

[00:02:31] Speaker 02:
Cloudflare did not make that request in the briefing.

[00:02:34] Speaker 02:
However, because the court raised the error, sua sponte, in its order, that shows that the error is obvious.

[00:02:44] Speaker 02:
It's something the court figured out by reading the petition and through its analysis.

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So the best evidence that the error is obvious is that the court found it suespante.

[00:02:53] Speaker 00:
What does that mean that something is obvious?

[00:02:56] Speaker 02:
Well, I think the best standard we have for it is from the biotech case that we cited in our briefing.

[00:03:02] Speaker 02:
And that means that a lawyer reading through the analysis and analyzing it would understand that a mistake was made.

[00:03:10] Speaker 02:
And here, as we showed in our brief in the statement of facts, any lawyer that analyzes how the independent claims relate to the dependent claims

[00:03:20] Speaker 02:
would see that it's error to argue that the ground one, the young-only ground, would apply to the multiply dependent claim when all of the independent and dependent claims above it rely on Young and Copeland.

[00:03:35] Speaker 04:
Well, in your statements, if it's so obvious, why didn't Kyle Fair ask to correct it before the board pointed out the error?

[00:03:44] Speaker 02:
because we didn't notice it.

[00:03:46] Speaker 02:
Lawyers are human.

[00:03:47] Speaker 02:
We didn't notice the error until the court brought it up and noticed it for us.

[00:03:51] Speaker 02:
Once we noticed the error, we immediately owned up to it.

[00:03:55] Speaker 02:
We wrote an email.

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We said we made an error.

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And in the briefing, we asked to correct it.

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And we are challenging that decision, the decision not to correct the petition.

[00:04:06] Speaker 03:
You've got two arguments.

[00:04:08] Speaker 03:
One is you're arguing they should have corrected it even under the standard that they applied, that there was a typographical error in the petition, right?

[00:04:17] Speaker 03:
But you're also arguing that the board should have considered a different standard that it didn't consider.

[00:04:23] Speaker 03:
But it's a standard that you're mentioning for the first time in your briefing before this court.

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Is that right?

[00:04:30] Speaker 03:
I don't think that you asked the board to apply a different standard other than the typographical error standard.

[00:04:38] Speaker 02:
Well, we certainly asked the court to correct the petition.

[00:04:41] Speaker 02:
I don't think there's any argument about that.

[00:04:45] Speaker 03:
But under the typographical error standard?

[00:04:48] Speaker 02:
Well.

[00:04:48] Speaker 03:
I mean, I'm asking you a very easy question.

[00:04:50] Speaker 02:
Oh, I understand.

[00:04:50] Speaker 02:
And I want to make sure I get it.

[00:04:52] Speaker 03:
I really am.

[00:04:53] Speaker 03:
I want to know whether you asked the board to apply

[00:04:58] Speaker 03:
the standard that you're asking for this court to say is the proper standard, did you ask the board ever to apply that standard?

[00:05:05] Speaker 02:
I want to be precise.

[00:05:06] Speaker 02:
Our request to correct did not mention typographical errors at all.

[00:05:12] Speaker 02:
And I can read it for you.

[00:05:14] Speaker 04:
But answer her direct question about, did you ask them about the obvious standard that you've been arguing to ask?

[00:05:20] Speaker 02:
No, our request just said, please allow us to amend, to correct the petition, to move these arguments to ground two.

[00:05:29] Speaker 02:
That was the request.

[00:05:30] Speaker 02:
It was very simple.

[00:05:31] Speaker 02:
It didn't say because it's a typographical error, because you have to do this because it's a typographical error.

[00:05:37] Speaker 02:
Our secondary request, and again, it was in the footnote of our reply brief, said, please move these arguments to the correct ground.

[00:05:46] Speaker 02:
So we did not say because it was an obvious error, but we did not only limit our requests to typographical errors.

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decision to institute said, we're not sure if this is an error in the typographical error standard.

[00:06:04] Speaker 02:
Is that correct?

[00:06:04] Speaker 02:
Yes.

[00:06:05] Speaker 02:
The board in its decision said, we believe this could be a typographical error.

[00:06:09] Speaker 02:
The board is the one that brought up typographical errors to begin with.

[00:06:13] Speaker 00:
Yes.

[00:06:13] Speaker 00:
OK.

[00:06:13] Speaker 00:
But you're saying it's not a typographical error.

[00:06:15] Speaker 00:
It's something else.

[00:06:17] Speaker 02:
Well, to be clear, during the middle of the administrative proceeding, we definitely argued it was a typographical error.

[00:06:26] Speaker 02:
For this court's purposes, no, we're not challenging that finding that it's not a typographical error.

[00:06:31] Speaker 00:
But qualitatively, if you could explain to me what the difference is between a typographical error and a substantive error.

[00:06:40] Speaker 02:
It's a good question.

[00:06:41] Speaker 02:
I don't think you can make a dichotomy like that.

[00:06:43] Speaker 02:
I think there are plenty of typographical errors out there that are substantive errors.

[00:06:47] Speaker 02:
I think there are plenty of clerical errors out there that also are substantive.

[00:06:51] Speaker 02:
I think an easy example we raised in our brief is when you file a PDF, and let's say you forget to put a page in there.

[00:06:57] Speaker 02:
It happens.

[00:06:59] Speaker 02:
That affects the substance of the petition.

[00:07:02] Speaker 02:
If you have a page missing, you can't interpret that error away.

[00:07:07] Speaker 02:
You can't guess at what the party meant to say.

[00:07:11] Speaker 02:
That said, it can be an error that you correct.

[00:07:14] Speaker 02:
I think that is a clerical type error that, even though it affects the substance of the petition,

[00:07:20] Speaker 02:
Any board or court could accept that this was obviously unintended and should be corrected.

[00:07:25] Speaker 00:
Is it unintended if it's in a summary, it's in the body, it's in a sort of formal conclusion, it runs through the papers?

[00:07:35] Speaker 00:
How is someone to determine that that was not intended to be that way?

[00:07:40] Speaker 02:
Well, to be clear, I don't think intentional is a bar we have to pass to get to the court's discretion.

[00:07:47] Speaker 02:
I do think the court's discretion may consider this.

[00:07:49] Speaker 00:
You're saying it was an obvious error, meaning that it shouldn't be the way it is.

[00:07:52] Speaker 02:
Correct.

[00:07:53] Speaker 00:
That you wanted it to be another way.

[00:07:55] Speaker 02:
Obviously.

[00:07:56] Speaker 00:
So how is someone to determine that?

[00:08:00] Speaker 00:
And if it's a continuum, how is the court supposed to respond to that?

[00:08:04] Speaker 02:
Well, I think the court does have the difficult position of exercising discretion to make this determination.

[00:08:10] Speaker 02:
I think there's a lot of things the court can and should consider when making this type of decision.

[00:08:16] Speaker 02:
diligence, reliance, prejudice, whether this is truly obvious to a patent lawyer that knows how to do their job.

[00:08:25] Speaker 00:
I believe your adversary said they looked at the papers and they thought that that's how you interpreted this issue.

[00:08:31] Speaker 00:
Even though they responded to it, and we'll get to that soon, even though they responded to this issue and the two sources that you're hoping that this actually references at this point, Young and Copeland,

[00:08:44] Speaker 00:
How is anyone supposed to respond to this and actually make a determination on it?

[00:08:49] Speaker 00:
Because again, it's running through the entirety of the document.

[00:08:53] Speaker 02:
I do understand it runs through the entirety of the document.

[00:08:56] Speaker 02:
And I understand that as a practicing attorney.

[00:08:59] Speaker 02:
Once you make the initial mistake, the original sin, and putting into the wrong section, whoever is writing the summaries looks at that and makes the same mistake.

[00:09:07] Speaker 02:
I can understand how that happens.

[00:09:10] Speaker 02:
But from the court's perspective, I think there were two decisions they had to make.

[00:09:16] Speaker 02:
One, is it fair to interpret the petition to read out this error?

[00:09:20] Speaker 02:
And they said, no, it's not.

[00:09:22] Speaker 02:
We're not challenging that determination.

[00:09:25] Speaker 02:
And we think under the Apple case, that's a reasonable conclusion that the court came to.

[00:09:29] Speaker 02:
We're looking at something a little different.

[00:09:32] Speaker 02:
It's clear there's an error here.

[00:09:33] Speaker 02:
To us, and I get that's something for the court to decide.

[00:09:36] Speaker 02:
But we think the standard is different when the court has to determine whether they should correct the petition.

[00:09:42] Speaker 02:
A correction does presuppose we're saying there's something wrong in there.

[00:09:45] Speaker 02:
that the court should look at it and correct it.

[00:09:48] Speaker 03:
You say the court, but you mean the board, right?

[00:09:50] Speaker 02:
I do need the board.

[00:09:51] Speaker 02:
It's not like we're going to correct the petition.

[00:09:52] Speaker 02:
Correct.

[00:09:53] Speaker 02:
Yeah, the board.

[00:09:54] Speaker 02:
I apologize.

[00:09:55] Speaker 04:
Let me ask you some other questions, because my understanding is this isn't the first sort of IPR petition on these claims.

[00:10:03] Speaker 04:
So didn't Palo Alto Networks have a petition as well?

[00:10:07] Speaker 05:
Yes.

[00:10:08] Speaker 04:
And wasn't this same alleged error in the Palo Alto Networks petition?

[00:10:13] Speaker 02:
Correct.

[00:10:13] Speaker 04:
So it's multiple parties putting the exact same error in, which I'm going to assume had different attorneys as well.

[00:10:21] Speaker 02:
Correct.

[00:10:21] Speaker 02:
And I do think this is an artifact of the joiner practice in IPRs at the board, where when you're looking to join a petition, you do copy a word for word to make sure that the joiner will be granted.

[00:10:35] Speaker 02:
In a perfect world, had we noticed this error, the proper procedure would have been to file the petition and immediately ask the court to correct it.

[00:10:42] Speaker 02:
We did not notice the error.

[00:10:44] Speaker 04:
Okay, I want to ask you some other questions before your time runs out.

[00:10:46] Speaker 04:
Do you agree that claims 17, 18, 37, and 38 are not asserted against any defendant active litigation?

[00:10:53] Speaker 02:
I agree.

[00:10:55] Speaker 04:
Okay.

[00:10:55] Speaker 04:
So maybe just give me a sense of

[00:10:57] Speaker 04:
Why do you care so much that we're here on this appeal about these four claims?

[00:11:01] Speaker 02:
Sure.

[00:11:02] Speaker 02:
This patent, from my calculation, expires in December 2027.

[00:11:06] Speaker 02:
So there's nothing stopping the defendant from asserting it against CloudFlare.

[00:11:13] Speaker 02:
Also, CloudFlare, as a company, has taken a very strong stance against patent litigation that it sees as

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that it sees as frivolous.

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I'm not trying to make any sort of judgment call here.

[00:11:26] Speaker 02:
But it is important for CloudFlare to take appeals and ensure that claims that we see as invalid are invalidated.

[00:11:33] Speaker 02:
That's why we brought this IPR petition.

[00:11:36] Speaker 04:
But currently, these particular claims are not asserted against CloudFlare.

[00:11:40] Speaker 02:
No.

[00:11:40] Speaker 02:
The district court litigation concluded in December.

[00:11:43] Speaker 02:
We did win the verdict.

[00:11:45] Speaker 02:
And right now, there are no claims currently asserted against CloudFlare.

[00:11:48] Speaker 04:
And you also agree that claims 17, 18, 37, and 38 are not shown by Young alone?

[00:11:55] Speaker 02:
No.

[00:11:55] Speaker 02:
You do need Copeland to show the Patness Factor limitation.

[00:11:58] Speaker 03:
Because you agree.

[00:12:00] Speaker 03:
So the answer is yes, as opposed to no, right?

[00:12:02] Speaker 03:
Yes, correct.

[00:12:03] Speaker 03:
Go ahead.

[00:12:03] Speaker 03:
The district court litigation is concluded.

[00:12:06] Speaker 03:
So not only is there not currently any litigation in which they're asserting those claims against you, they cannot assert those claims against you.

[00:12:14] Speaker 02:
That's unclear.

[00:12:15] Speaker 02:
So those claims were withdrawn very early in the litigation.

[00:12:19] Speaker 02:
In the middle of the litigation, Sable attempted to add the claims back in.

[00:12:22] Speaker 02:
And the court denied, but not because they could never bring it against us ever, but because it was too late in the litigation to bring them.

[00:12:31] Speaker 02:
I think it's an open question when patent claims are dismissed very early in the litigation, with our agreement dismissed early in the litigation, whether collateral stable or race judicata could stop it.

[00:12:42] Speaker 02:
I think that's an open question for the district court if they chose to sue us again.

[00:12:48] Speaker 04:
I mean, aren't there some claim-splitting concerns there, though?

[00:12:50] Speaker 02:
Well, my understanding is, under a racial judicata, that each patent claim is its own clause of action.

[00:12:56] Speaker 02:
So the question is, can you bring a clause of action, let's say, on a conversion, if it's dismissed by agreement of the parties before discovery occurs?

[00:13:06] Speaker 02:
Could you bring it again?

[00:13:06] Speaker 02:
I think you can.

[00:13:08] Speaker 02:
But again, I think it depends very much on the facts, and I certainly am not comfortable enough with them to tell you how it would come out here.

[00:13:15] Speaker 04:
Can you tell us, just because you said the litigation's concluded, how did it end up concluding, was it?

[00:13:20] Speaker 04:
Verdict.

[00:13:21] Speaker 02:
Oh, verdict, OK.

[00:13:23] Speaker 02:
So there was one claim ultimately went to verdict, and the jury found it not infringed and invalid.

[00:13:30] Speaker 03:
Was it an independent claim?

[00:13:32] Speaker 02:
It was, but it was in a different patent.

[00:13:34] Speaker 03:
OK.

[00:13:38] Speaker 02:
Thank you, Your Honor.

[00:13:40] Speaker 03:
Thank you.

[00:13:53] Speaker 01:
Daniel Hipskin, on behalf of the appellee and patent owner, Sable Networks Inc.

[00:14:00] Speaker 01:
May it please the court.

[00:14:02] Speaker 01:
Cloudflare filed the IPR petition giving rise to this appeal only a month and a half into the one-year 315B window for the statutory bar.

[00:14:14] Speaker 01:
And approximately seven months in is when the institution decision came out flagging this potential issue.

[00:14:23] Speaker 01:
this is relevant because there were still four months of the window.

[00:14:27] Speaker 01:
And so I wanted to respond to one thing that Mr. Garza mentioned.

[00:14:32] Speaker 01:
He said that after the board flagged this potential mistake, we questioned whether it's a mistake or not, but

[00:14:39] Speaker 01:
Assuming it's a mistake, it was flagged, and Mr. Garza said that we had four months to respond to that, but 37 CFR 42.104C, that puts the burden for filing a motion to correct the petition on the party, the petitioner that filed the petition with the mistake in it.

[00:15:01] Speaker 01:
And so this is all to say that there were four months left in the statutory bar where not only could they have filed a petition, or sorry, a motion for correction,

[00:15:10] Speaker 01:
But if that was denied, they could file a new petition, a follow-on petition under 325D.

[00:15:16] Speaker 01:
So this is all to say that Cloudflare didn't do anything procedurally to help themselves out if this was a genuine good faith mistake.

[00:15:25] Speaker 00:
All right.

[00:15:25] Speaker 00:
So are you addressing, then, the issue of diligence there?

[00:15:27] Speaker 00:
Or is it more technical than that?

[00:15:31] Speaker 01:
If you were to adopt the standard that Cloudflare is advocating, that would certainly go to diligence.

[00:15:37] Speaker 01:
But we're not advocating that diligence is a factor under the typographical error standard that was the only standard that Cloudflare ever asked the board to apply and under the applicable 104C.

[00:15:52] Speaker 01:
So that's to say, I don't believe diligence is relevant.

[00:15:56] Speaker 01:
But this is to show you the factual background that was considered by the board.

[00:16:00] Speaker 01:
Because when you're considering whether they abused their discretion, I think it's important to note this factual background that this wasn't this obvious mistake that they're arguing now for the first time on appeal.

[00:16:13] Speaker 01:
This is something that, as Judge Cunningham was pointing out, this has been propagated by many parties.

[00:16:19] Speaker 01:
And I think even more relevant than the Palo Alto networks

[00:16:22] Speaker 01:
is the fact that Splunk Inc.

[00:16:25] Speaker 01:
filed a petition and a motion to join five days after the institution decision.

[00:16:31] Speaker 04:
And it has the same error in it, right?

[00:16:32] Speaker 01:
A last year.

[00:16:33] Speaker 04:
Let me put a last year.

[00:16:34] Speaker 01:
Exactly.

[00:16:35] Speaker 01:
So five days after, this large technology company represented by Morrison & Forster, very competent, skilled patent counsel,

[00:16:44] Speaker 01:
files with the exact same argument that these four claims at issue were invalid as obvious under Young alone.

[00:16:52] Speaker 01:
And so that really kind of calls into doubt whether this was an error as opposed to a strategic decision.

[00:16:58] Speaker 01:
As Mr. Garza pointed out, this was a patent portfolio, both in the litigation between the parties.

[00:17:03] Speaker 01:
There were four patents at the beginning.

[00:17:06] Speaker 01:
Sable's portfolio as a whole had even more patents.

[00:17:10] Speaker 04:
Do you have a position on whether or not these four claims would ever be asserted against Cloudflare?

[00:17:16] Speaker 04:
I have to admit, when I saw this, I was like, why are we here?

[00:17:20] Speaker 04:
Why are you guys arguing in front of us?

[00:17:23] Speaker 01:
Well, because we received the invitation, I suppose.

[00:17:27] Speaker 01:
They appealed.

[00:17:28] Speaker 01:
So yeah, in terms of the issue that you were raising.

[00:17:33] Speaker 04:
We appreciate the acceptance of the invitation.

[00:17:36] Speaker 01:
But in terms of the claim spilling and collateral estoppel issue, that's not before the court on this appeal.

[00:17:43] Speaker 01:
And I similarly agree with Mr. Garza that that's an open question.

[00:17:49] Speaker 01:
It was withdrawn under the claim narrowing process.

[00:17:53] Speaker 04:
You withdrew these four claims under the claim narrowing process.

[00:17:55] Speaker 01:
We did in September 2021.

[00:17:57] Speaker 01:
So as Mr. Garza pointed out, very early in the litigation.

[00:18:02] Speaker 01:
So I believe that there's case law that suggests that's tantamount to a

[00:18:06] Speaker 01:
dismissal without prejudice when they're voluntarily and by agreement withdrawn through the discovery process.

[00:18:14] Speaker 01:
So the truthful, direct answer is I don't know.

[00:18:17] Speaker 01:
And I agree that it's an open question.

[00:18:19] Speaker 01:
And we certainly reserve the right to explore that.

[00:18:22] Speaker 01:
But I don't know today.

[00:18:24] Speaker 04:
Do you know, and I apologize for not having the answer to this, but hopefully you will, because you should know your case well.

[00:18:30] Speaker 04:
Do you know whether or not judgment that was entered post verdict addresses these claims?

[00:18:35] Speaker 01:
It does not.

[00:18:36] Speaker 01:
The only patent that was, well, anyway, it does not.

[00:18:42] Speaker 01:
The entirety of the 593 patent that's at issue in this appeal was withdrawn very early in the litigation.

[00:18:49] Speaker 01:
The judgment there would be summary judgment as to one patent and the verdict on the patent that went to the jury trial.

[00:19:01] Speaker 00:
I just want to go back to this.

[00:19:03] Speaker 00:
this reported error showing up in so many different documents.

[00:19:07] Speaker 00:
What was your response when you saw that?

[00:19:09] Speaker 00:
What were you thinking?

[00:19:11] Speaker 00:
Were you thinking this is a strategic issue on their part, or how did you respond?

[00:19:16] Speaker 01:
When it was flagged by the board, and then they sent the email that Mr. Garza referenced, I think we took it at face value that it was a mistake, and we assumed that they would deal with it.

[00:19:29] Speaker 01:
Like I mentioned, either the

[00:19:31] Speaker 01:
104c motion to correct or potentially a follow-on petition.

[00:19:35] Speaker 01:
And when they didn't, I would say sitting here today, there are serious reservations as to whether that was a strategic decision.

[00:19:42] Speaker 01:
But in either event, the arguments weren't there.

[00:19:46] Speaker 01:
Only Young was asserted, as you pointed out.

[00:19:49] Speaker 01:
Judge Checky?

[00:19:50] Speaker 01:
Checky, excellent.

[00:19:54] Speaker 01:
OK.

[00:19:55] Speaker 01:
you know, just kind of wanting consistency.

[00:19:57] Speaker 01:
This was in the expert declaration.

[00:19:59] Speaker 01:
This was in the summary table.

[00:20:00] Speaker 01:
This was discussed throughout the petition.

[00:20:03] Speaker 01:
So standing here today, I believe that strategic decisions were made along the way to not try to correct it.

[00:20:11] Speaker 00:
And I recognize that it refers to prior art and whether it's a reference to Young and Copeland together.

[00:20:18] Speaker 00:
And at some point in your briefing below, you did, in fact, treat it as if it were

[00:20:25] Speaker 00:
if it were corrected, because you referenced, I believe, claims 17 and 18 and 37 and 38 on your heading.

[00:20:33] Speaker 00:
And then you went into Copeland, which is the issue here as to the error.

[00:20:38] Speaker 00:
So what was the basis for doing that?

[00:20:41] Speaker 01:
The idea that the board might correct it.

[00:20:46] Speaker 01:
Basically, the board has wide discretion as to whether to correct or not.

[00:20:51] Speaker 01:
And so we certainly didn't want to be caught flat-footed if the board did correct what they needed to know.

[00:20:57] Speaker 00:
So you treated it as corrected to make sure you covered that argument.

[00:21:02] Speaker 01:
Only in the alternative.

[00:21:03] Speaker 01:
We certainly argued to the board that this is not a typographical error, that it should not be corrected.

[00:21:09] Speaker 01:
But yes, in the alternative, should we not have persuaded the board on those first few points, we certainly did advance the argument under Young and Copeland.

[00:21:20] Speaker 00:
And in terms of typographical errors versus obvious errors, how do you see the difference there?

[00:21:28] Speaker 01:
I don't see an applicable standard for an obvious error.

[00:21:33] Speaker 01:
There's the typographical error.

[00:21:35] Speaker 01:
There are late action errors that can be corrected.

[00:21:38] Speaker 01:
The other side has addressed this in their briefing.

[00:21:42] Speaker 03:
What's a late action error?

[00:21:44] Speaker 01:
That's the error that was at issue in the Maine Pharma versus Merck case discussed in their brief.

[00:21:50] Speaker 01:
And in that particular case, it was identifying a real party in interest.

[00:21:54] Speaker 01:
That basically, if the petitioner lost its filing date,

[00:21:59] Speaker 01:
due to the fact that they were late in identifying the real party in interest, then they would have been time barred.

[00:22:05] Speaker 01:
So that was the issue there.

[00:22:06] Speaker 01:
And that court said, this doesn't at all implicate 104C or typographical clerical errors.

[00:22:13] Speaker 01:
It's under 42.5, which addresses late action.

[00:22:17] Speaker 01:
So there are various regulations as to how to correct different errors.

[00:22:22] Speaker 01:
But there isn't an applicable CFR or IPR statutory provision

[00:22:28] Speaker 01:
that says that the board members have this broad discretion to correct anything that they need.

[00:22:36] Speaker 00:
So then to follow up on that, you're distinguishing Stoddard as well as the Bennett case?

[00:22:41] Speaker 01:
Yes.

[00:22:42] Speaker 00:
OK.

[00:22:42] Speaker 00:
With respect to signatures and inventorship, if you'd like to describe your point of reference there for distinguishing that.

[00:22:50] Speaker 01:
Sure.

[00:22:52] Speaker 01:
In Bennett and Stoddard, the court walks through the congressional history and says that there are correction statutes, but they were simply outside.

[00:23:02] Speaker 01:
The fact patterns were slightly outside.

[00:23:06] Speaker 01:
For example, in, I believe it's Bennett, there was a reissue application that needed to be filed within two years.

[00:23:13] Speaker 01:
And the applicant had the signature

[00:23:19] Speaker 01:
an officer of the assignee and not the inventor.

[00:23:22] Speaker 01:
And in order to correct that, the correction would have fallen outside the two years.

[00:23:28] Speaker 01:
And because the correction statute said you could do it on the actual issued patent but not the application, the office rejected it.

[00:23:37] Speaker 01:
And so there, the court walked through congressional history, which was

[00:23:41] Speaker 01:
Congress was concerned about overly rigid bureaucratic limitations on patent applicants.

[00:23:49] Speaker 01:
There is no such congressional history for the inner party's review.

[00:23:52] Speaker 01:
In fact, the IPR statute gives complete discretion to the director and the PTO as to whether to institute or not, and that's non-appealable.

[00:24:01] Speaker 00:
So you view it as a different statutory structure and a different factual scenario, certainly a different interest.

[00:24:08] Speaker 00:
I believe on one of them it was inventorship.

[00:24:11] Speaker 00:
and the other, as I indicated, was a signature that had to be changed.

[00:24:16] Speaker 00:
Yes.

[00:24:16] Speaker 00:
Is there any other issue that you would find as a distinguishing factor?

[00:24:20] Speaker 00:
Does it matter that these were decided before IPR was created?

[00:24:26] Speaker 01:
Before what?

[00:24:27] Speaker 00:
IPR, the Interpartis Review, was created.

[00:24:30] Speaker 01:
I don't think that that matters as a distinction, but I guess what I would say is here we have correction statutes.

[00:24:42] Speaker 01:
The deference as to whether to institute a petition or not has been delegated to the board and to these administrative patent judges by the director.

[00:24:53] Speaker 01:
that delegation is pursuant to the IPR regulatory set of rules.

[00:25:01] Speaker 01:
And so the PTAB judges, when they're instituting an IPR, they're doing it pursuant to the regulations that exist.

[00:25:10] Speaker 00:
OK.

[00:25:10] Speaker 00:
So in terms of the most significant point of reference from your perspective, what we should be guided by, what would that be to say this is not something that we can address an obvious error?

[00:25:25] Speaker 01:
I will say that there is no statute or regulation that permits the PTAB judges to correct errors other than what has been delegated to them by the director through a proper APA rulemaking procedure.

[00:25:40] Speaker 03:
And do you also rely a little bit on SAS in that respect, that you've got the Supreme Court saying it's really important what the petition says, and it sets the table for the whole proceeding?

[00:25:51] Speaker 01:
Exactly.

[00:25:52] Speaker 01:
Yes, Your Honor.

[00:25:53] Speaker 01:
We certainly rely on that.

[00:25:55] Speaker 01:
SAS says that while the PTO has broad discretion in whether to institute or not, once it's instituted, it's guided by the petition from start to finish, and that the PTO has very little control over how to conduct the proceeding once they've decided to institute.

[00:26:16] Speaker 04:
And I assume you're also

[00:26:18] Speaker 04:
still contending that there was either a forfeiture or waiver of this obvious theory, because it was never presented to the board in the first place?

[00:26:25] Speaker 01:
Yes, absolutely.

[00:26:27] Speaker 01:
At every step of the way, the cloud flare below at the board, again, before the first brief was filed here, in the petitioner's reply, which was not filed until seven months after this was first identified in the institution decision, they only argued typographical errors.

[00:26:49] Speaker 01:
And Mr. Gosler was pointing to the footnote on the very last page of that reply for the proposition that they don't call it a typographical error.

[00:26:56] Speaker 01:
But if you actually look at the text in the page above that it's dropping the footnote from, they use typographical error throughout that whole discussion.

[00:27:04] Speaker 01:
So from start to finish, and they- And you know what?

[00:27:07] Speaker 00:
In terms of that, why wouldn't this obvious argument be an extension of the typographical issue argument?

[00:27:16] Speaker 01:
I'm going to try to answer.

[00:27:17] Speaker 01:
I'm not sure I understand.

[00:27:19] Speaker 01:
So I'll just jump in.

[00:27:20] Speaker 00:
I'm basically referring to it as potentially being an evolving argument, starting with, this is a typographical error and an amplification.

[00:27:29] Speaker 00:
This is an obvious error.

[00:27:31] Speaker 00:
Do you think there's any validity to that?

[00:27:35] Speaker 01:
They call it an obvious typographical error throughout.

[00:27:37] Speaker 00:
In that, but it was raised initially.

[00:27:39] Speaker 00:
Could we view this as being raised initially as the same argument?

[00:27:46] Speaker 01:
I would argue no, but I guess I would argue in the alternative that if you do, then we're saying that they are applying the typographical clerical error standard that exists in the regulations, and that we would be viewing this with abuse of discretion.

[00:28:02] Speaker 01:
And if the board applied the standard that exists, this typographical error, and now we're just expanding on that, then this court should apply the abuse of discretion standard.

[00:28:14] Speaker 01:
And that gets back into the factual background that under that extremely deferential standard, this court should certainly uphold the board's decision.

[00:28:25] Speaker 00:
But nonetheless, you're considering them to be two separate, entirely different arguments, typographical error versus obvious error.

[00:28:34] Speaker 01:
Yes.

[00:28:35] Speaker 01:
Yeah, and I'm suggesting that those are two different standards, and I believe

[00:28:40] Speaker 01:
I'm sure Mr. Garza will correct me if I'm wrong, that they would agree.

[00:28:43] Speaker 01:
Because if this court applies the abuse of discretion standard, they have a very steep uphill climb.

[00:28:49] Speaker 01:
So what they want to do is say there's this new standard.

[00:28:52] Speaker 01:
And the PTO erred by not applying this separate standard.

[00:28:57] Speaker 01:
I'm suggesting they waive that argument.

[00:28:59] Speaker 01:
I see my time's up.

[00:29:01] Speaker 03:
Thank you for your argument.

[00:29:04] Speaker 03:
Mr. Garza?

[00:29:06] Speaker 03:
You have over two minutes.

[00:29:08] Speaker 02:
I'm going to try to make three points.

[00:29:11] Speaker 02:
First, I would like to point the court to the Maine Pharma case.

[00:29:15] Speaker 02:
In that case, the court did allow the correction of real parties and interests after the filing of the petition, despite having no regulatory explicit power to do so.

[00:29:26] Speaker 02:
They did not rely on 42104C, which is the only power explicitly given to correct petitions.

[00:29:33] Speaker 02:
But instead, they allow the correction to go through anyway.

[00:29:36] Speaker 02:
So that negates this idea that you need explicit regulatory power to correct the petition.

[00:29:43] Speaker 02:
Second, in an exercise of discretion, a proper exercise of discretion by the board in considering a motion to correct, they should consider the interest in SAS.

[00:29:54] Speaker 02:
The notice required by the APA is paramount in these cases.

[00:29:59] Speaker 02:
But there are situations where it still makes sense to allow correction of the petition.

[00:30:04] Speaker 02:
I'd like to point the court to the fact pattern in the Berrien case that we cited at page 32 of our brief.

[00:30:09] Speaker 02:
In that brief, the applicant, instead of filing a power of attorney and a petition, filed two powers of attorney.

[00:30:17] Speaker 02:
It's terrifying.

[00:30:18] Speaker 02:
Like, that is something that every attorney is just scared will happen to them.

[00:30:23] Speaker 02:
The court said too bad.

[00:30:24] Speaker 02:
42104C limits our ability to correct this mistake, and they refused to correct it.

[00:30:31] Speaker 02:
They said, you did not file a petition, and we cannot help you.

[00:30:35] Speaker 04:
Can I ask you, do you agree with the timeline that opposing counsel put forth in terms of there being four months between when I guess the board pointed out the error and when you had kind of that sort of one year time limit to file petitions?

[00:30:50] Speaker 04:
Is that, is his timeline accurate?

[00:30:54] Speaker 02:
Honestly, I'm not sure.

[00:30:55] Speaker 02:
I don't remember what his timeline was.

[00:30:57] Speaker 02:
But what I know happened is that the board put out its order in, I believe, November.

[00:31:03] Speaker 02:
And the Sable did have four months to file their first response addressing the error.

[00:31:08] Speaker 02:
We filed our reply, and then they filed us our reply.

[00:31:11] Speaker 02:
And there was questioning and oral argument.

[00:31:13] Speaker 02:
So there was ample time to argue about whether the error existed and how to address it.

[00:31:20] Speaker 02:
Those are my points.

[00:31:22] Speaker 02:
Thank you so much.

[00:31:22] Speaker 03:
Thank you.

[00:31:23] Speaker 03:
Thank you counsel The case will be submitted