[00:00:00] Speaker 04:
Next case for argument is 23-1359, CROI IP holdings versus 25.

[00:00:08] Speaker 04:
Mr. Richter, whenever you're ready.

[00:00:10] Speaker 03:
Thank you, Your Honors.

[00:00:11] Speaker 03:
My name is Paul Richter.

[00:00:13] Speaker 03:
Excuse me.

[00:00:19] Speaker 03:
I'm here from Devon Law Firm representing the appellant CROI IP holdings.

[00:00:25] Speaker 03:
This is a case with a rather long procedural history, which is why

[00:00:29] Speaker 03:
We are here today, given the district court's entry of a motion to dismiss all claims for collateral estoppel.

[00:00:40] Speaker 04:
Are you familiar with the case by our court, a recent decision in Parker Vision versus Qualcomm?

[00:00:46] Speaker 03:
I don't believe I'm familiar with that case.

[00:00:49] Speaker 01:
If you read it, you might read it the same way, at least until I'm told otherwise I read it, which is, you win.

[00:01:00] Speaker 04:
OK.

[00:01:02] Speaker 04:
Yes, you're sorry you missed it.

[00:01:04] Speaker 03:
Thank you, Your Honor.

[00:01:05] Speaker 03:
I'm also sorry that I missed the opportunity to have you create a new precedent, which is what we're asking for.

[00:01:12] Speaker 01:
Well, your name personally wouldn't go on it.

[00:01:16] Speaker 01:
Anyway, Parker Vision says one set of claims from, there's one patent, okay, one set of claims gets held unpatentable by the board.

[00:01:29] Speaker 01:
We affirm another set of claims in district court.

[00:01:33] Speaker 01:
The question is, even if they are materially identical or materially indistinguishable under the Ohio Willow,

[00:01:41] Speaker 01:
Does collateral estoppel apply?

[00:01:43] Speaker 01:
The court said, no, it doesn't because the premise, namely that even the board adjudicated unpatentable claims were not adjudicated under a clear convincing evidence standard.

[00:01:58] Speaker 01:
So you don't have the jumping off point for collateral estoppel in district court where it's a clear and convincing evidence standard.

[00:02:07] Speaker 01:
That's your argument here, right?

[00:02:08] Speaker 03:
That's precisely our argument, that there are two lines of cases.

[00:02:11] Speaker 04:
Of course, the district court and the magistrate judge did not have the benefit of Parker Vision.

[00:02:16] Speaker 04:
So it put together inferences drawn from other precedent, but precedent that did not involve this situation, correct?

[00:02:23] Speaker 04:
It's just a month old.

[00:02:26] Speaker 03:
I miss it.

[00:02:28] Speaker 03:
surviving hurricanes in St.

[00:02:30] Speaker 03:
Petersburg.

[00:02:31] Speaker 04:
Can I ask you a complete aside question, which is how did you come to add 115 additional claims and re-exam?

[00:02:39] Speaker 03:
I was not the re-examination lawyer and that was in 2015.

[00:02:41] Speaker 03:
I do not know exactly, but certainly re-exam, as you well know, you're permitted to present additional claims.

[00:02:50] Speaker 04:
Is there a 101 validity or ineligibility challenge pending counterclaim in this case?

[00:02:57] Speaker 03:
I was not the trial attorney down below.

[00:03:02] Speaker 03:
I believe that issue was discussed.

[00:03:05] Speaker 03:
Yes, I think it is.

[00:03:06] Speaker 03:
I don't know if there's a motion pending, but it certainly was raised.

[00:03:15] Speaker 03:
So I'm not sure what I should do in this instance.

[00:03:18] Speaker 04:
If your friend uses Toronto and others of the notion that it's counterproductive.

[00:03:27] Speaker 03:
Okay, well then I will take the victory and sit down, notwithstanding that I was excited to discuss and hope that you would... Provisional victory.

[00:03:35] Speaker 03:
Provisional victory, yes.

[00:03:37] Speaker 03:
Okay.

[00:03:37] Speaker 04:
Thank you.

[00:03:38] Speaker 04:
Let's hear from the other side.

[00:03:51] Speaker 02:
Good morning, Your Honors.

[00:03:51] Speaker 02:
Thomas Dustin on behalf of the Appellee Group Run.

[00:03:55] Speaker 02:
I started in a hole, apparently.

[00:03:56] Speaker 04:
Well, were you aware of Harker Vision?

[00:04:00] Speaker 04:
I mean, I presume it would be the other side.

[00:04:02] Speaker 02:
You recently brought to my attention.

[00:04:03] Speaker 02:
I have a couple of comments to make about that.

[00:04:05] Speaker 02:
Let me start, though, with, I think, a more fundamental problem here.

[00:04:10] Speaker 02:
And that is the arguments advanced with respect to this burden of proof issue were never presented below.

[00:04:19] Speaker 02:
They were never preserved for appeal.

[00:04:21] Speaker 02:
to this body, in fact, more than not preserved.

[00:04:25] Speaker 02:
These very arguments that are presented to Your Honors by Croy were disavowed during the district court proceeding.

[00:04:32] Speaker 04:
Were not preserved.

[00:04:33] Speaker 04:
Were disavowed.

[00:04:34] Speaker 04:
I mean, the law is what the law is.

[00:04:37] Speaker 04:
And the board has a certain standard.

[00:04:40] Speaker 04:
And the district courts have another standard.

[00:04:42] Speaker 04:
So what more do we need than that?

[00:04:46] Speaker 02:
Well, Your Honor, it was clearly the case that there were cases out there

[00:04:50] Speaker 02:
commenting on whether or not collateral estoppel applied in circumstances where the burdens of proof were different.

[00:04:56] Speaker 02:
It was clearly possible for Croy to have mounted that defense in the district court.

[00:05:01] Speaker 02:
But in response to Judge Burke's specific question to counsel for Croy, and this is on page nine of the memorandum of opinion from Judge Burke at footnote six, Judge Burke said to counsel for Croy,

[00:05:17] Speaker 02:
You are not making the argument, are you, that I cannot apply collateral estoppel to different claims than were addressed in the IPR.

[00:05:29] Speaker 02:
And the response of counsel at that time was, no, Your Honor, we're not making that argument.

[00:05:34] Speaker 02:
In fact, the argument they articulated to Judge Burke was not that the burdens of proof prevented the application of collateral estoppel,

[00:05:43] Speaker 02:
But instead, that collateral estoppel could be properly applied to claims not addressed in the IPR, provided Croy could show those claims to be materially different.

[00:05:56] Speaker 02:
That's what they told Judge Burke.

[00:05:59] Speaker 02:
And it wasn't until they arrived at this court that they made this argument about the difference in burdens and the fact that collateral estoppel cannot arise from a PTAB proceeding and be applied in a district court proceeding.

[00:06:13] Speaker 02:
That argument was first advanced in this court.

[00:06:16] Speaker 02:
And it wasn't just the fact that they didn't make it.

[00:06:19] Speaker 02:
They affirmatively said they were not making that argument below.

[00:06:23] Speaker 02:
So I think this is an inappropriate vehicle, this particular case, to double down on the Parker Vision decision, which, by the way, Your Honor, let me also address Parker Vision.

[00:06:36] Speaker 01:
remembering, I hope correctly, that the rule of what an appellate court can address quite readily is an issue that was either argued or decided below.

[00:06:53] Speaker 01:
And Judge Burke, Judge Burke, Mr. Judge Burke, clearly said, put together these two cases and said, yes, we can actually do the materially indistinguishable

[00:07:06] Speaker 01:
analysis, even when the first decision on which issue preclusion is resting came from the board and we're in district court.

[00:07:16] Speaker 01:
So it seems to me he decided the question, even if he was not asked to.

[00:07:25] Speaker 02:
You're saying as a subsidiary, an unspoken... No, it's not unspoken.

[00:07:30] Speaker 01:
He said, I infer from these two lines of cases that the rule should be his.

[00:07:36] Speaker 01:
We put these things together, and you have an invalidated claimant before the board and a materially indistinguishable claim in district court.

[00:07:44] Speaker 01:
And so issue preclusion applies.

[00:07:46] Speaker 01:
He didn't say, I will just assume this.

[00:07:49] Speaker 01:
He said, I'm actually adopting this.

[00:07:52] Speaker 02:
I agree with Your Honor.

[00:07:54] Speaker 02:
But the point I'm making is that when questioned as to their position, Croix's counsel urged the court, advocated to the court, that the court was empowered to make

[00:08:05] Speaker 02:
these decisions that they're now arguing that were error to make by the court.

[00:08:10] Speaker 02:
My point is that they almost baited Judge Burke into this position.

[00:08:13] Speaker 02:
But let me address Parker Vision.

[00:08:15] Speaker 02:
That's what is the jumping off point for all of this.

[00:08:20] Speaker 02:
So Parker Vision did not deal with the circumstances that are present in this case.

[00:08:26] Speaker 02:
Parker Vision dealt with an issue where the IPR concluded, with certain claims being found unpatentable,

[00:08:34] Speaker 02:
and other claims being found patentable.

[00:08:37] Speaker 02:
And the effort by the petitioner in that case to apply collateral stopple was to apply collateral stopple from the claims on which they succeeded to the claims on which they lost.

[00:08:50] Speaker 02:
These were not unadjudicated claims in the context of Ohio Willow, for example, materially similar claims which weren't adjudicated below.

[00:09:03] Speaker 02:
These were adjudicated claims at Parker Vision.

[00:09:06] Speaker 02:
Those claims were claims that the petitioner lost on.

[00:09:10] Speaker 02:
They were unsuccessful in convincing the Patent Office that those claims were unpatentable.

[00:09:17] Speaker 02:
Unsuccessful in convincing the Patent Office that those claims were unpatentable based on the same prior out combinations that they had succeeded on with respect to other claims in which they argued gave rise to collateral stuff.

[00:09:31] Speaker 00:
And what was the standard that the PTO was applying that the board applied in making that decision?

[00:09:38] Speaker 02:
I'm not sure I follow, Your Honor.

[00:09:39] Speaker 00:
What was the standard, the evidentiary standard, that was applied below?

[00:09:44] Speaker 02:
It would be preponderance of the evidence, Your Honor.

[00:09:46] Speaker 02:
IPR proceeding, that is the standard.

[00:09:49] Speaker 00:
But my point- Isn't that the issue here, though?

[00:09:52] Speaker 00:
A difference in the standard that's applied?

[00:09:56] Speaker 02:
Well, I don't think that's entirely correct, Your Honor.

[00:09:58] Speaker 02:
If we're relying on park revision and determining what

[00:10:00] Speaker 02:
Park Revision actually found.

[00:10:02] Speaker 02:
Park Revision found that you were attempting to apply collateral stoppage to adjudicated claims, claims where the board had faced that same prior argument and concluded that those claims were indeed patentable over that combination.

[00:10:18] Speaker 02:
That's not the situation.

[00:10:20] Speaker 02:
By definition,

[00:10:21] Speaker 02:
The board necessarily found that those groups of claims were materially different from a patentability statement.

[00:10:27] Speaker 00:
You're saying that the claims in this instance were not adjudicated?

[00:10:29] Speaker 02:
That's correct, Your Honor.

[00:10:30] Speaker 02:
The board has not commented on the patentability of the claims that are being asserted now by CROI.

[00:10:36] Speaker 02:
It commented on claims that are virtually identical to those claims.

[00:10:42] Speaker 02:
The burden of proof, Your Honor, is not independent of the decisions of the Patent Office.

[00:10:48] Speaker 02:
The burden of proof is a consequence

[00:10:50] Speaker 02:
of those decisions.

[00:10:52] Speaker 02:
When the board has indicated the subject matter of this scope is invalid, when the board has indicated the Patent Office has declared claims of this scope to be unpatentable, the presumption that Croy seeks to apply in the district court that is based on the views of the Patent

[00:11:18] Speaker 02:
that arises because the patent office has declared claims of this scope to be patentable gives rise to this presumption, that presumption disappears.

[00:11:26] Speaker 02:
The basis for that presumption evaporates.

[00:11:31] Speaker 02:
What ends up happening if we follow this logic is we will find ourselves in district courts with district court judges called upon to enforce claims

[00:11:44] Speaker 02:
of a scope that the Patent Office has declared are not worthy of patent protection.

[00:11:50] Speaker 02:
And not only to enforce those claims against the public, but to raise the bar to the public who might hope to defend against those claims.

[00:12:01] Speaker 02:
Now, this is all because the Patent Office, the presumption rises because the Patent Office has determined the scope to be patented.

[00:12:07] Speaker 02:
But that's not the case here.

[00:12:09] Speaker 02:
This scope was clearly presented to the Patent Office, and the Patent Office declared claims of that scope to be unpatentable.

[00:12:16] Speaker 02:
And those are the claims that are now being asserted, Your Honor, and said to be worthy of a presumption of validity and said to be worthy of a higher burden of proof.

[00:12:25] Speaker 02:
That was not the Parker Vision situation.

[00:12:29] Speaker 02:
Parker Vision clearly presented these claims to the board with the prior combination, and the board concluded that those claims were not worthy of patent protection.

[00:12:39] Speaker 02:
That's not the situation.

[00:12:41] Speaker 02:
The board has concluded these claims are not worthy of patent protection.

[00:12:45] Speaker 02:
And CROI should be stopped from asserting a presumption of validity for those claims and stopped from demanding a higher burden of proof for those claims when those claims are essentially no different than the claims that were invalidated by the Patent Office.

[00:13:09] Speaker 02:
I mean, that's the rub of it, Your Honor, is this presumption arises from the decisions of the Patent Office.

[00:13:19] Speaker 02:
And we don't have any mystery about the decisions of the Patent Office in this particular instance.

[00:13:23] Speaker 02:
The Patent Office has made clear its position that claims of this scope are not patentable.

[00:13:29] Speaker 02:
Parker Vision was a very different situation.

[00:13:32] Speaker 02:
Parker Vision, the claims were specifically addressed by the board, and the board concluded

[00:13:38] Speaker 02:
that those claims were patentable over the prior art combination.

[00:13:42] Speaker 02:
And the board necessarily concluded that those claims were different materially from a patentability standpoint from the claims that supposedly gave rise to collateral stop.

[00:13:52] Speaker 02:
That case law is clear.

[00:13:56] Speaker 02:
If the claims are different materially in patentability from those that were invalidated, collateral stop will doesn't arise.

[00:14:05] Speaker 02:
Now, in XY, this court ruled that collateral stopple arose from a PTAB decision.

[00:14:12] Speaker 02:
And it was faced with exactly this argument.

[00:14:15] Speaker 02:
Judge Newman argued in dissent that there could be no collateral stopple arising from a PTAB decision if the burdens of proof in the district court and in a PTAB were different.

[00:14:28] Speaker 02:
Judge Newman put that issue squarely before the majority of the XY decision.

[00:14:34] Speaker 02:
And the majority said, no, we believe that collateral stopple arises from the decision of the PTAB.

[00:14:41] Speaker 02:
Now, they could have premised that decision.

[00:14:42] Speaker 01:
I'm sorry, just to be clear, XY involved the same claims, right?

[00:14:48] Speaker 02:
That's true, Your Honor.

[00:14:50] Speaker 02:
It wasn't the basis of the decision that the claims were identified.

[00:14:54] Speaker 01:
It requires just understanding XY to be about the fact that once the board, after being affirmed, has held particular claims unpatentable, that as a ministerial matter, they then will be canceled.

[00:15:11] Speaker 01:
So we're just attributing the cancellation of those claims.

[00:15:14] Speaker 01:
And the cancellation certainly has collateral stop loss.

[00:15:17] Speaker 02:
Well, with all due respect, Your Honor, I don't believe that was the reasoning of XY.

[00:15:20] Speaker 01:
It wasn't the reasoning.

[00:15:22] Speaker 01:
I said that's how it has now come to be read, I think, fairly and almost necessarily.

[00:15:29] Speaker 02:
Well, I'm not sure that's necessarily a fair reading of XY, Your Honor, because the court in XY made their decision some years after the Fresenius decision.

[00:15:38] Speaker 02:
And the Fresenius decision, which was parroted by Judge Newman in her dissent when she talked about how she objected to the majority's efforts to what she called moot

[00:15:48] Speaker 02:
the district court proceedings, was based on the fact that claims that are found invalid by the PTAB are canceled or on their way to cancellation.

[00:15:59] Speaker 02:
And you cannot then premise an enforceable action on those claims.

[00:16:04] Speaker 02:
But the XY majority had that avenue available to it, but did not take it.

[00:16:09] Speaker 02:
They specifically premised their decision on collateral stopple, which is issue preclusion.

[00:16:15] Speaker 02:
It's not race judicata.

[00:16:16] Speaker 02:
It's not claim preclusion.

[00:16:17] Speaker 02:
It's issue preclusion.

[00:16:19] Speaker 02:
It basically says, if we arrived at certain determinations essential to the judgment of the invalidity of these claims, those determinations will have collateral estoppel effect in all pending and future proceedings.

[00:16:33] Speaker 02:
Not specific just to these claims.

[00:16:36] Speaker 02:
If they had meant specific to these claims,

[00:16:39] Speaker 02:
The majority could have said something other than collateral estoppel.

[00:16:41] Speaker 02:
And collateral estoppel XY has been read, as I've just articulated it, by the district courts since it was issued.

[00:16:51] Speaker 02:
It has been applied repeatedly to invalidate claims whose scope is not materially different from those that were adjudicated

[00:17:01] Speaker 02:
by the PTAB or adjudicated previously.

[00:17:03] Speaker 01:
And I will use the shorthand, in a board board situation, not a board court situation.

[00:17:08] Speaker 02:
Well, I'm speaking of district court decisions, Your Honor.

[00:17:11] Speaker 01:
Oh, two district court decisions, right.

[00:17:15] Speaker 01:
But our provision is actually presidential.

[00:17:20] Speaker 02:
I understand, Your Honor.

[00:17:21] Speaker 01:
Our provision didn't rest on the invalid date.

[00:17:26] Speaker 01:
No, I'm sorry.

[00:17:28] Speaker 01:
board's earlier determination to find that or earlier finding that Qualcomm in that situation had failed to meet a preponderance standard as to these claims.

[00:17:42] Speaker 01:
It said what it rejected was the proposition that Qualcomm doesn't get to challenge these claims because other claims were already held unpatentable by the board, right?

[00:17:59] Speaker 02:
I think the language is a little bit more specific than that, Gerard.

[00:18:04] Speaker 02:
Because at one point in the decision, Judge Stark makes clear that we are not here dealing with claims

[00:18:12] Speaker 02:
that have not been found unpatentable.

[00:18:17] Speaker 02:
In Parker vision, they had claims that were found not to be unpatentable.

[00:18:23] Speaker 02:
We don't have that situation in CROI.

[00:18:25] Speaker 02:
These claims have not been addressed by the board, other than in terms of the board having addressed claims that are essentially the same as the claims that are now being asserted.

[00:18:36] Speaker 02:
And in that instance, far from finding those claims not unpatentable,

[00:18:41] Speaker 02:
The board found these claims unpatentable.

[00:18:46] Speaker 02:
So this notion that we indulge a presumption of validity based upon the actions of the PTAB in allowing claims and the fact that we indulge that presumption because we believe the PTAB has made a determination that these claims are of patentable scope, that's exactly 180 degrees opposite to our current situation.

[00:19:09] Speaker 02:
We would be, if we follow Croy's logic, in a situation where we are calling upon the federal district courts to enforce patents that the patent office has declared are of unpatentable scope.

[00:19:23] Speaker 02:
And we are calling upon the federal district courts to enforce those claims in a supercharged environment, where the defendants who seek to defend against those claims

[00:19:35] Speaker 02:
have now an even higher burden of proof, notwithstanding the views of the Patent Office as to the patentability of that scope.

[00:19:42] Speaker 02:
And I'll say one other thing about part revision.

[00:19:44] Speaker 01:
And when you say patentability of that scope, you're folding in the particular claims that were adjudicated and things of indistinguishable scope.

[00:19:52] Speaker 02:
Unless the plaintiff can show, the patentee can show that the claims having different language or some other differences, which are not word for word identical.

[00:20:03] Speaker 02:
Unless the patentee can show that that

[00:20:06] Speaker 02:
absence of complete identity matters to patentability, they are effectively the same scope as what's been determined by the patent office to be unpatentable.

[00:20:15] Speaker 02:
Now, Parker Vision, I will also point out, this particular language in Parker Vision was with respect to an unappealed and unappealable order.

[00:20:29] Speaker 02:
This particular statement in Parker Vision concerns a motion

[00:20:35] Speaker 02:
to exclude expert testimony on a validity issue, which was nowhere part of the judgment that rose to this court.

[00:20:45] Speaker 02:
Moreover, a decision on a Daubert motion pre-trial is not appealable to begin with.

[00:20:51] Speaker 02:
Yet, Judge Stark, all due respect, offered more or less an advisory opinion.

[00:20:57] Speaker 01:
That's a proper thing to do when a matter is going back.

[00:21:08] Speaker 02:
My point, I think, Your Honor, is this issue has not been addressed, I think, in the full and complete circumstances that one would want to make such a significant decision.

[00:21:27] Speaker 02:
And I think it should be, Parker Vision should be restricted to its facts, which is that those specific claims, against which Collateral Sapo was asserted,

[00:21:38] Speaker 02:
were not absent from the IPR.

[00:21:40] Speaker 02:
They were found specifically by the board to be patentable over the prior art combination.

[00:21:48] Speaker 02:
And I think the fact is that this presumption and the follow-on burden of proof differences stem from whether or not the patent office has viewed this subject matter to be patentable, Your Honor.

[00:22:05] Speaker 04:
Thank you.

[00:22:14] Speaker 04:
Your honor, I think I had three minutes for rebuttal.

[00:22:17] Speaker 04:
Well, you've got 11 minutes remaining, because remember, you short-circuited.

[00:22:21] Speaker 04:
Thank you.

[00:22:21] Speaker 04:
I appreciate that.

[00:22:22] Speaker 03:
If you need it.

[00:22:23] Speaker 04:
Unfortunately, you continue to be at a disadvantage for not having recognized proclamation.

[00:22:28] Speaker 04:
So try to rebut if you have any rebuttal.

[00:22:31] Speaker 03:
Sure.

[00:22:31] Speaker 03:
What I'd like to rebut is just some of the factual contentions of counsel.

[00:22:35] Speaker 03:
I think this is quite clear from our briefs, but the newly asserted claims, which were collaterally stopped by the district court's decision, were never before the PTAB.

[00:22:47] Speaker 03:
So there was never an opportunity for the PTAB to say one way or the other, they're patentable, they're unpatentable.

[00:22:53] Speaker 03:
The problem was, and the mischief caused by the district court's test, is the melding of the two lines, the XY line and the Ohio Willowwood,

[00:23:03] Speaker 03:
enabled her to construct hypothetical claims from the claims that were at issue and were invalidated by the PTAB.

[00:23:11] Speaker 04:
What about the footnote that your friend calls out that says that you, before Judge Burke, said, no, there's no dispute about the different proceedings?

[00:23:22] Speaker 03:
About the?

[00:23:23] Speaker 04:
Different proceedings.

[00:23:24] Speaker 04:
He called out Judge Burke's footnote in Judge Burke's opinion, where he talked about footnote six in appendix nine.

[00:23:33] Speaker 03:
So I was not at the hearing.

[00:23:36] Speaker 03:
I didn't argue it.

[00:23:37] Speaker 03:
But I don't think that an inelegant response to the judge's question at the hearing

[00:23:43] Speaker 03:
waves a challenge to the judge's test, which we have challenged through our briefs.

[00:23:48] Speaker 03:
The judge still came up with a test of collateral estoppel that we think is inappropriate and contrary to the law.

[00:23:56] Speaker 03:
And so there's no waiver of that challenge to that test, no more than there is a waiver to the manner in which the judge applied it by the construction of the hypothetical claims.

[00:24:04] Speaker 03:
For example, claim 107 is one of the collaterally newly asserted claims.

[00:24:09] Speaker 03:
The judge was unable to find

[00:24:11] Speaker 03:
all of the elements are an equivalent element in claim 107, in claim 1, which she matched it up to.

[00:24:18] Speaker 03:
So she turned to claim 12, which was also invalidated for the electronic card limitation.

[00:24:23] Speaker 03:
And then she put that element into claim one and said, I'm going to combine that.

[00:24:28] Speaker 03:
And this is a claim that would have been invalidated had it been one that was in front of the PTAB.

[00:24:33] Speaker 03:
And then based on that hypothetical invalidation, she said that I'm collaterally stopping claim 107, notwithstanding that there is no claim that lines up with each of the elements of claim 107.

[00:24:45] Speaker 04:
So you're arguing that it is materially invalidated.

[00:24:49] Speaker 03:
Yes, 100%.

[00:24:51] Speaker 03:
So part of our brief is devoted to, even if we were wrong, even if there was no Parker Vision case, even if you rejected our arguments that collateral estoppel shouldn't apply, where the PTAB used the preponderance of the evidence standard to invalidate a certain set of claims, and then completely different claims in a district court

[00:25:10] Speaker 03:
which should be entitled to a clear and convincing standard, were never addressed by the PTAB and should not be held to collateral estoppel.

[00:25:17] Speaker 03:
But even if the judge was correct, and that should be the test, we argue that, particularly for claims 91 to 93, 103, 107, and 108 to 110, are materially different.

[00:25:33] Speaker 03:
Because with respect to those claims, in each instance,

[00:25:36] Speaker 03:
The judge was unable even to match up the elements of those claims with the elements of a complete claim that was invalidated by the PTAB.

[00:25:45] Speaker 03:
Instead, she took bits and pieces for various claims.

[00:25:49] Speaker 03:
For claim 91, she used parts of claim 7 and parts of claim 87 that were invalidated.

[00:25:54] Speaker 04:
I'm feeling a little awkward because the other side does not get a rebuttal to these arguments that were not made in the initial argument.

[00:26:01] Speaker 04:
which is not your fault.

[00:26:03] Speaker 04:
We take your argument.

[00:26:06] Speaker 01:
But on the fundamental point, I don't remember whether Red said this.

[00:26:14] Speaker 01:
It probably did.

[00:26:15] Speaker 01:
But isn't there an obvious concern, never mind what one would do with the concern, about forcing

[00:26:24] Speaker 01:
every defendant who files an IPR petition to include all of the claims in the patent?

[00:26:37] Speaker 01:
The problem here is that the defendant here, the petitioner in the IPR,

[00:26:49] Speaker 01:
was selective about the claims it was going to ask the board to consider.

[00:26:56] Speaker 01:
And that left, in your somewhat surprising situation, 100 other claims or something.

[00:27:03] Speaker 01:
A very large number of other claims, which might, in fact, just by assumption, be materially indistinguishable.

[00:27:13] Speaker 01:
Just a phrase I'm using for what the Ohio Willowwood standard is.

[00:27:19] Speaker 01:
So in your view, to generate the you had a full opportunity, you got it once you're all done, even though the burden of persuasion is different, the defendants have to include all the claims in the patent in an IPR petition?

[00:27:39] Speaker 03:
All that they can, I think.

[00:27:40] Speaker 03:
Yes, Your Honor.

[00:27:40] Speaker 04:
Well, they couldn't here.

[00:27:42] Speaker 04:
I mean, you filed an amended claim.

[00:27:45] Speaker 04:
You filed an amended complaint.

[00:27:47] Speaker 04:
past their due date, as I recall.

[00:27:49] Speaker 03:
That's correct.

[00:27:49] Speaker 03:
That's why I was saying all that they can.

[00:27:51] Speaker 03:
So I think some of these claims, at least, were not available to be IPR'd because the year had passed.

[00:27:58] Speaker 01:
Does the board have any procedure for either granting the extra pages or

[00:28:07] Speaker 01:
allowing the petitioner to say in extremely short hand fashion, these other hundred claims are materially the same, forcing the patent owner to say, oh, no, no, I will now identify which ones are different.

[00:28:24] Speaker 01:
Something like what happens in district court where there are a vast number of claims, I forget what the name of the

[00:28:31] Speaker 01:
the cases that said that district court has authority to say, we're just going to do these claims unless you, the plaintiff, tell me why that group leaves out something significantly different.

[00:28:43] Speaker 03:
I'm not aware of that at the board.

[00:28:45] Speaker 03:
Perhaps that would evolve if this law changes, as it apparently has.

[00:28:51] Speaker 04:
So what you're advocating, essentially, the only way to potentially protect itself from this collateral estoppel would be to get some sort of stipulation upfront

[00:29:00] Speaker 04:
that these are the only claims that are going to be asserted?

[00:29:03] Speaker 03:
I think that would be possible.

[00:29:05] Speaker 04:
I mean, your friend mentioned this is more policy than law, I guess, but how this distinction you're seeking that we draw comports with Congress's intent to streamline the procedure for validity in the IPR setting and motions for stay or whatever.

[00:29:23] Speaker 04:
Doesn't this throw our wrench into that, a decision that would go your way on this?

[00:29:28] Speaker 03:
I don't think it's necessarily a wrench, Your Honor.

[00:29:30] Speaker 03:
I think it's a logical result of the XY line of cases, for example, which were the same claims.

[00:29:37] Speaker 03:
So we don't dispute in our brief that if it's the same claims at the PTAB, you're collaterally stopped at the district court level from asserting them if they were invalidated.

[00:29:47] Speaker 03:
The mischief comes, and I think this is a great case for presenting that mischief, is when

[00:29:53] Speaker 03:
Posing counsel says that the patent office decided claims of the same scope, of the similar scope, were invalid.

[00:29:59] Speaker 04:
Let's assume for the sake of argument that these are materially indistinct claims.

[00:30:03] Speaker 04:
You recognize that at least some of them are.

[00:30:05] Speaker 04:
That's what the ruling you're seeking from us would cover, right?

[00:30:12] Speaker 03:
That if the claims are different, that yes, they should not be collaterally stopped.

[00:30:18] Speaker 03:
If they're not the same claims, if they're not the XY strain of claims, then they should be collaterally stopped.

[00:30:24] Speaker 04:
No, I'm talking about something a little different, which is they're not the same claims, but they're materially indistinct.

[00:30:32] Speaker 03:
Well, I think that if they're materially indistinct, I think that is an issue

[00:30:37] Speaker 03:
that can be litigated at the district court level separately for invalidity under the clear and convincing standard.

[00:30:43] Speaker 03:
And that's where the problem is, is that it was a different standard at the PTAB.

[00:30:48] Speaker 03:
So with the judge's blurred test between XY and Ohio-Williwood, I'm not even sure which standard is being applied to decide that material and distinctness.

[00:31:03] Speaker 03:
And so I think that's the issue.

[00:31:04] Speaker 03:
And I think that does have to be left to the district court to decide that.

[00:31:09] Speaker 04:
Thank you.

[00:31:11] Speaker 03:
Thank you, Your Honors.