[00:00:00] Speaker 02:
22-2090 you're gonna help to help me with your name Mr. Niedersen

[00:00:25] Speaker 01:
Thank you, your honor.

[00:00:26] Speaker 01:
May it please the court.

[00:00:27] Speaker 01:
My name is Mark Needison, representing the Appellant Cost Corporation and my colleague, Brian Botso.

[00:00:33] Speaker 01:
This is an appeal from a final written decision in IPR by the PTEP.

[00:00:37] Speaker 01:
And this is a case where a petitioner distorted what the primary reference, Rizvani, says on the critical claim element.

[00:00:44] Speaker 01:
And the petition did not explain in its opening papers why it made this distortion.

[00:00:49] Speaker 01:
But at least its expert knew when he quoted the key paragraph of Rizvani

[00:00:55] Speaker 03:
Could you address the motion to dismiss for muteness?

[00:01:00] Speaker 01:
I'd be happy to address the motion to dismiss.

[00:01:02] Speaker 01:
So I go over the facts.

[00:01:06] Speaker 01:
There's three patents asserted against Bose, the 155 patent, which is this appeal.

[00:01:10] Speaker 01:
There's one of them, two other ones.

[00:01:12] Speaker 01:
And there were five asserted against Plantronics, including the three against Bose, including the 155 patent.

[00:01:20] Speaker 01:
And the judge granted a motion to dismiss

[00:01:25] Speaker 01:
for the complaint costs filed for the five patents.

[00:01:32] Speaker 01:
He dismissed the complaint because allegedly the claims were invalid under section 101.

[00:01:36] Speaker 01:
But he granted it without prejudice.

[00:01:38] Speaker 01:
He gave costs leave to amend to file an amended complaint, which cost it.

[00:01:43] Speaker 02:
But you didn't attempt to amend any of the claims involving the patents that issue, right?

[00:01:51] Speaker 02:
You amended.

[00:01:53] Speaker 02:
You filed an amended complaint that addressed other claims, but none of the claims that are at issue in this case.

[00:02:00] Speaker 01:
In this case, we did not assert the 155 patent.

[00:02:04] Speaker 01:
It would have been the second amended complaint, but the amended complaint after the granting of the motion is dismissed without prejudice.

[00:02:12] Speaker 02:
So you didn't attempt to make new factual allegations about why this patent was eligible.

[00:02:18] Speaker 01:
Correct.

[00:02:19] Speaker 01:
But in our view, that doesn't matter, because once we filed the amended complaint,

[00:02:23] Speaker 01:
The prior order was, it became a nullity according to the Ninth Circuit case law, which applies here.

[00:02:29] Speaker 01:
We couldn't have appealed at that time, once we filed the amended complaint.

[00:02:34] Speaker 01:
Costes for Bose's paper cite the Hartley case, which was a law of summary judgment.

[00:02:39] Speaker 01:
And there's a case following Hartley that promotes it.

[00:02:43] Speaker 02:
Well, it seems like you'd have an argument if you attempted to amend

[00:02:48] Speaker 02:
the complaint and raise new factual allegations in support of validity of these claims, but you didn't.

[00:02:55] Speaker 02:
You didn't attempt to do anything to address the district court's decision about why these patents were ineligible.

[00:03:04] Speaker 01:
Well, we did for all the other patents except for the 155.

[00:03:11] Speaker 01:
Like we charted claims in the complaint

[00:03:14] Speaker 01:
The third appeal today will be for the 025 and 934 patents there.

[00:03:18] Speaker 01:
We charted and asserted different claims in the original complaint for the latest.

[00:03:23] Speaker 01:
Right.

[00:03:23] Speaker 02:
But even for those, you didn't assert, reassert new factual allegations under the claims that were found invalid for eligibility.

[00:03:40] Speaker 02:
of this patent that you found ineligible should be eligible because of these new factual allegations.

[00:03:46] Speaker 01:
No, we did make a lot of factual allegations.

[00:03:51] Speaker 01:
for the 025934 patents.

[00:03:54] Speaker 01:
Now we didn't make any factual allegations for the 155 patent, which is for this computer.

[00:03:57] Speaker 04:
Do I misunderstand then?

[00:03:59] Speaker 04:
Because I had the same understanding as Judge Hughes is that in the amended complaint, you identified particular patent claims that you contended were not ineligible, along with some factual allegations that presumably relate to those patent claims.

[00:04:16] Speaker 01:
That's correct.

[00:04:16] Speaker 04:
With the claims at issue in these IPRs, at least the ones that are

[00:04:20] Speaker 04:
any years in the first in the last you you you you you you you you you you you you you you you

[00:04:50] Speaker 02:
And tell me if I got this wrong.

[00:04:53] Speaker 02:
You originally asserted in the planetronics complaint all of the claims with the 025 patent.

[00:04:59] Speaker 02:
And in the second amended complaint, you asserted just claim four.

[00:05:04] Speaker 02:
Is that wrong?

[00:05:05] Speaker 01:
I think that's correct.

[00:05:06] Speaker 01:
But claim four.

[00:05:07] Speaker 02:
Well, the claims at issue here don't involve claim four.

[00:05:09] Speaker 04:
They're 56 and 57.

[00:05:10] Speaker 01:
Well, that's the 934 patent.

[00:05:13] Speaker 02:
That's the 025 patent.

[00:05:15] Speaker 01:
Right.

[00:05:15] Speaker 01:
56 and 57 is the 934 patent.

[00:05:18] Speaker 01:
And they do.

[00:05:18] Speaker 02:
The 924?

[00:05:20] Speaker 02:
I don't even see a 924 patent.

[00:05:21] Speaker 01:
934.

[00:05:23] Speaker 02:
OK, well, that's not.

[00:05:24] Speaker 02:
Are you sure that that's the right thing?

[00:05:26] Speaker 02:
Because my information says it's 56 and 738 to the 025.

[00:05:32] Speaker 02:
And then if we're talking about the 934, you originally asserted all of the claims.

[00:05:37] Speaker 02:
Correct.

[00:05:38] Speaker 02:
And then in the second amendment complaint, you asserted only claim four.

[00:05:43] Speaker 01:
Of the 025 patent.

[00:05:46] Speaker 01:
Well, no, on the 934 patent as well, because that was upheld.

[00:05:48] Speaker 01:
The PTAB won't.

[00:05:50] Speaker 02:
But the claims that issue in the IPR proceedings aren't claimed for.

[00:05:55] Speaker 02:
They're the claims that weren't reasserted.

[00:05:58] Speaker 01:
Well, they are.

[00:05:59] Speaker 01:
I mean, they're subject to Bose's cross-appeal.

[00:06:03] Speaker 02:
I don't understand what you're saying at all.

[00:06:05] Speaker 02:
Did, in your second amended complaint, you reassert

[00:06:10] Speaker 02:
claims are originally found ineligible that are still at issue in these IPR proceedings?

[00:06:15] Speaker 02:
And if so, what are they?

[00:06:17] Speaker 01:
So if you mean by at issue in these IPR proceedings, the answer is yes, because claim four, say the 93, all the signal strength claims on the 934 and 025 patents, we highlighted in the complaint, they're at issue in these IPRs.

[00:06:31] Speaker 01:
We prevailed at the PTAP in the IPRs, and they're subject of Bose's cross-appeal.

[00:06:37] Speaker 01:
You're not answering my question.

[00:06:38] Speaker 02:
In your second amended Plastronics complaint, did you reassert anything but claim four of either the 934 or the 025 passing?

[00:06:49] Speaker 01:
Well, I would say yes.

[00:06:50] Speaker 02:
We only have to show me in the appendix and the second amended complaint where you reasserted those.

[00:06:57] Speaker 01:
All right.

[00:06:58] Speaker 01:
Now, I believe we just have to, in a complaint, show that we allege one claim is infringed and preserve a right to preserve

[00:07:06] Speaker 01:
argue others later, re-charted.

[00:07:08] Speaker 02:
How is that possible when you've already raised a bunch of complaints that were found ineligible?

[00:07:14] Speaker 02:
You were given the opportunity to amend.

[00:07:16] Speaker 02:
If you specifically don't re-raise those, isn't the district court's decision binding?

[00:07:25] Speaker 01:
I don't think it's binding.

[00:07:26] Speaker 01:
I don't think the complaint is in the appendix.

[00:07:34] Speaker 01:
It's not binding, because once we file the amended complaint, the Ninth Circuit law is at a pinch.

[00:07:39] Speaker 02:
Tell me what happens if we disagree with you on that.

[00:07:43] Speaker 02:
If we find either your failure to reassert waived any argument as to eligibility for the claims not reasserted, or that because you didn't appeal, that that decision is binding, what happens to all those claims that were originally found ineligible and you didn't reassert in the second amended complaint?

[00:08:05] Speaker 01:
I mean, my view is that they are not in awe.

[00:08:09] Speaker 01:
They're not mooted.

[00:08:10] Speaker 01:
They're not found.

[00:08:11] Speaker 01:
There's no final judgment that they're invalid yet.

[00:08:14] Speaker 04:
Do you agree that the determination of ineligibility is an ultimate question of law?

[00:08:24] Speaker 01:
Well, the first question, the first Alice factors a question of law.

[00:08:27] Speaker 01:
I know the second factor they sometimes give to the jury, but I would say overall it's a question of law.

[00:08:32] Speaker 04:
The district court in this case didn't give any issues to a jury, right?

[00:08:36] Speaker 04:
The district court in this case found that the claims were ineligible as a matter of law, right?

[00:08:44] Speaker 01:
Correct.

[00:08:45] Speaker 04:
And then no facts were pled with respect to most of the patent claims to explain why, even if they were pled, no appeal was taken.

[00:08:54] Speaker 04:
to try to overturn or change that legal determination by the district court.

[00:09:00] Speaker 01:
We put in a lot more allegations of fact in the Second Amendment complaint, which the judge never got to because the case settled before.

[00:09:07] Speaker 04:
Why didn't you preserve any right to appeal in the settlement agreement?

[00:09:11] Speaker 01:
No.

[00:09:13] Speaker 01:
That's true.

[00:09:15] Speaker 03:
And in the settlement, I assume you also didn't seek to vacate the order with respect to 101, right?

[00:09:24] Speaker 01:
The settlement owner does not vacate.

[00:09:26] Speaker 01:
There's no terms of the settlement owner that say that.

[00:09:28] Speaker 01:
But in our view, the case law of the Ninth Circuit would show that it's vacated.

[00:09:34] Speaker 04:
Is it the Lacey decision that you're relying on for the main student?

[00:09:37] Speaker 01:
I think the one of them was the Weston family partnership.

[00:09:44] Speaker 01:
I'll cite my brief.

[00:10:10] Speaker 01:
One is the Falk North California Corporation versus Scott Gilford.

[00:10:16] Speaker 01:
It's at page four of our brief.

[00:10:20] Speaker 04:
I'm having a hard time seeing how those cases come to you here where there's a combination of, you know, a waiver by not carrying the claims forward after the district court rules against you abandoning the claims and not instead carrying them forward in your second amendment complaint.

[00:10:41] Speaker 04:
or First Amendment complaint, or alternatively not appealing at any point, I don't see how we can remove the district court's decision of an eligibility by simply saying, OK, we'll take that out of our complaint.

[00:10:59] Speaker 01:
Our position is, when the judge granted the motion to dismiss with a rule of 12 motion, he said the complaint was ineffective and gave us an opportunity to re-amend or refile an amended complaint.

[00:11:09] Speaker 02:
But you didn't attempt to amend the factual allegations for most of the patent claims asserted.

[00:11:15] Speaker 02:
You only chose to reassert a select few patent claims.

[00:11:19] Speaker 01:
That's correct.

[00:11:20] Speaker 01:
We bolstered the facts for a select few.

[00:11:22] Speaker 01:
That's correct.

[00:11:22] Speaker 02:
But not the ones that are issued here.

[00:11:25] Speaker 01:
Not the ones that were invalidated by the PTOA.

[00:11:27] Speaker 01:
That's correct.

[00:11:28] Speaker 01:
Mostly, I think they were centered on the ones that were upheld by the PTOA.

[00:11:34] Speaker 02:
OK.

[00:11:35] Speaker 02:
You're into your rebuttal time.

[00:11:36] Speaker 02:
Do you want to save it?

[00:11:38] Speaker 01:
I guess I'd kind of like to save it.

[00:11:39] Speaker 01:
Thank you.

[00:11:55] Speaker 00:
Good morning, Your Honor.

[00:11:56] Speaker 00:
It's Nathan Speed on behalf of Bose.

[00:11:57] Speaker 00:
I'll just address the motion dismissed from the get-go.

[00:12:01] Speaker 00:
To clear up the confusion, all of the claims that are in cost as affirmative appeal, all of those claims, those were the ones that they did not reallege in the second amendment complaint.

[00:12:10] Speaker 00:
Claim 4, they identified as representative claim for the 025 patent.

[00:12:14] Speaker 00:
That's a signal strength claim.

[00:12:15] Speaker 00:
So they've reasserted the signal strength claims, which will be at issue in a third appeal today.

[00:12:19] Speaker 00:
But for their affirmative appeals, they did not replete any of those claims.

[00:12:23] Speaker 00:
They dropped the 155 patent entirely, and they dropped all the claims for the other patents other than the signal strength claim.

[00:12:28] Speaker 00:
So it's just the signal strength claims that they took when they were granted the leave to replete.

[00:12:33] Speaker 00:
They took the opportunity to limit their case just to the signal strength claims.

[00:12:37] Speaker 00:
The reason being that the PTAB had invalidated all that

[00:12:39] Speaker 02:
So when you say they've re-asserted claim four as a representative claim, is that for the 934 and the 025?

[00:12:48] Speaker 02:
Yes.

[00:12:48] Speaker 02:
And representative what?

[00:12:52] Speaker 02:
Does it get involved from the other claims that were originally asserted?

[00:12:56] Speaker 00:
No, it was a representative stimulus claim.

[00:13:01] Speaker 00:
The way that the patent claims are written is that

[00:13:04] Speaker 00:
a handful of claims, defendant claims, that have this signal strength limitation.

[00:13:09] Speaker 00:
And they're scattered throughout the 63 claims for one of the pads.

[00:13:12] Speaker 00:
I think it's 56 or 57 for the other.

[00:13:15] Speaker 00:
But it's representative of a signal strength claim.

[00:13:17] Speaker 00:
So rather than charting all the signal strength claims, they charted claim four and said that's representative of the signal strength claims, not representative of the claims as a whole.

[00:13:26] Speaker 00:
They're contentious.

[00:13:29] Speaker 00:
Sorry, go ahead.

[00:13:29] Speaker 02:
So would those relate to, I'm just trying to sort this out actually, because I don't have them labeled

[00:13:34] Speaker 02:
I have the numbers and so this case the 20 90 are there any claims that could be related to that in this case no

[00:13:43] Speaker 00:
The third appeal will have the 025 and the 934 patents.

[00:13:51] Speaker 00:
That final written decision there, they had found one set of claims that the parties in the board called the signal strength claims.

[00:13:57] Speaker 00:
That set of claims, we are affirmatively appealing the board's finding that we did not prove those unpatentable.

[00:14:03] Speaker 00:
That's in the third appeal.

[00:14:04] Speaker 00:
It was only those claims that they've reasserted in their amended complaint.

[00:14:08] Speaker 00:
They picked one from each of the patents,

[00:14:10] Speaker 00:
I think Fairley did say that that was representative of all the single state claims.

[00:14:14] Speaker 04:
But it's your contention, I think, in your motion to dismiss that even those claims should not be before us today because of the decision by the district court in a Plaintronics case holding those claims ineligible, that it was either

[00:14:30] Speaker 04:
waived, or I guess because it was not appealed, so rescued of how that flies.

[00:14:35] Speaker 00:
Correct.

[00:14:36] Speaker 00:
Our position is that their affirmative appeal is moot.

[00:14:41] Speaker 00:
All the appeals are moot.

[00:14:42] Speaker 00:
Their affirmative appeal should be dismissed.

[00:14:45] Speaker 00:
Whereas our affirmative appeal, because we were not the cause of the mootness, we fall into the Bancor exception, to Munsingware.

[00:14:52] Speaker 00:
under Bancor, the part where the appellant is not the cause of the release.

[00:14:56] Speaker 04:
That's for your third.

[00:14:57] Speaker 00:
We're going to argue that.

[00:14:59] Speaker 00:
OK, yes.

[00:15:00] Speaker 00:
That would be the third case.

[00:15:01] Speaker 00:
In this case, it is, I think, fairly cut and dry.

[00:15:04] Speaker 00:
They asserted the 155 patent.

[00:15:06] Speaker 00:
All the claims were found to be unpatentable under 101.

[00:15:08] Speaker 00:
They were given leave to amend, and they did not include any claims for the 155 patent.

[00:15:13] Speaker 00:
And so that is a final.

[00:15:13] Speaker 03:
Just to follow up for completeness, I assume the settlement agreement had nothing about seeking to vacate that 101 order.

[00:15:20] Speaker 00:
I honestly have no idea what the settlement agreement says.

[00:15:22] Speaker 00:
I know there are pending IPRs where they are supposed to submit the settlement agreement to the PTAB.

[00:15:27] Speaker 00:
I don't believe that they have yet.

[00:15:29] Speaker 00:
And we wouldn't have access to that.

[00:15:30] Speaker 00:
So I don't know what it is.

[00:15:31] Speaker 00:
But based on the four corners of the objective record, there's no evidence that they could have moved or that they

[00:15:37] Speaker 00:
could not have asked to jointly vacate with Plantronics or done something along those lines to try to preserve their rights.

[00:15:43] Speaker 00:
They didn't need to dismiss with prejudice.

[00:15:45] Speaker 00:
They could have tried to dismiss without prejudice.

[00:15:47] Speaker 00:
There's a lot of avenues that they could have pursued, but they chose none of them.

[00:15:50] Speaker 00:
And the consequence of that is that these appeals are now moot.

[00:15:53] Speaker 03:
Do you want to respond to their argument that once there was the ruling that they could

[00:16:02] Speaker 03:
basically amend the complaint, that somehow the original complaint becomes a nullity.

[00:16:07] Speaker 03:
But then, of course, I want you to also take into account the stipulated dismissal of prejudice as you respond.

[00:16:12] Speaker 00:
Right.

[00:16:12] Speaker 00:
So it's true that procedurally, an amended complaint does render an earlier complaint a nullity.

[00:16:18] Speaker 00:
But that's different than saying that an amended complaint will render an earlier judicial order a nullity.

[00:16:23] Speaker 00:
There was an order here.

[00:16:24] Speaker 00:
Had they moved to amend their complaint before the district court issued his original order, then maybe the facts would be somewhat different.

[00:16:31] Speaker 00:
Parties can't unilaterally vacate judicial orders just by amending the complaint.

[00:16:37] Speaker 00:
The amended complaint allowed them to, they could have reasserted all the same claims,

[00:16:41] Speaker 00:
And perhaps the district court judge would say, OK, now you've alleged inventiveness or some concept that allows me to allow these claims to pack muster.

[00:16:49] Speaker 00:
In which case, that subsequent order would supersede the earlier order.

[00:16:53] Speaker 00:
And if we were on appeal, that would be an order that someone would be focused on.

[00:16:58] Speaker 00:
But because the pending complaint was unable to obviate the earlier order, and then

[00:17:08] Speaker 00:
Even with the signal strength claims, and again, I know this would be in the third one, but even there, they didn't wait for the district court to actually grant it and rule on whether or not the additional facts would have given, made it so that the claims passed mustered under 101, at least at the 12th stage.

[00:17:26] Speaker 04:
And is the fact that this was a

[00:17:29] Speaker 04:
Motion dismissed granted under Rule 12b6 at a preliminary stage.

[00:17:35] Speaker 04:
What sort of impact does that have on the analysis?

[00:17:39] Speaker 00:
So when it issued and issued as a would leave granted to amend, it was interlocutory at that time.

[00:17:46] Speaker 00:
But then when they had in August of 2023, when they stipulated to dismissal with prejudice, that's the final order that they could have appealed.

[00:17:54] Speaker 00:
And had they appealed that, the interlocutory orders would have merged under the merger rule, which cost calls the Hail Mary, but it's just part of procedural practice at the appellate level.

[00:18:03] Speaker 00:
the earlier order would have merged with it and it could have been subject to appeal and they could have had an argument today on whether or not the district court got it right on the 101 issue.

[00:18:13] Speaker 00:
I'm happy to talk about the merits if you'd like but I'm also happy to give the court their time back.

[00:18:32] Speaker 01:
So thank you.

[00:18:32] Speaker 01:
I think my colleague admitted, like, we reasserted the so-called signal strength claims in the 025 and 934 patents in the amended complaint.

[00:18:42] Speaker 01:
We certainly didn't waive any finding that they are invalid.

[00:18:46] Speaker 01:
As I said before, I think once that we filed the amended complaint, the prior order became a nullity.

[00:18:54] Speaker 01:
And there was nothing to merge into the final judgment.

[00:18:57] Speaker 01:
And we couldn't have appealed it.

[00:18:59] Speaker 01:
like in the Harley case.

[00:19:00] Speaker 01:
I think the Harley case they cite in the brief is distinguishable.

[00:19:06] Speaker 01:
Is it all right if we turn to the merits?

[00:19:08] Speaker 02:
No, because he didn't get a chance to talk about the merits.

[00:19:10] Speaker 02:
So I think we asked the questions we were intending to ask.

[00:19:15] Speaker 02:
Do you have more on the lunis issue?

[00:19:19] Speaker 01:
No, I don't.

[00:19:20] Speaker 02:
OK.

[00:19:20] Speaker 02:
Thank you.

[00:19:20] Speaker 01:
Thank you.