[00:00:03] Speaker 05: Our next case is Qualcomm versus Apple, 2023-1208-09. [00:00:12] Speaker 05: Ms. [00:00:12] Speaker 05: Tweezy, is it? [00:00:13] Speaker 03: Yes. [00:00:14] Speaker 03: Thank you, Judge Laurie. [00:00:15] Speaker 03: Good morning. [00:00:15] Speaker 03: May it please the court? [00:00:17] Speaker 03: I hope to cover three points this morning. [00:00:20] Speaker 03: First, what Section 311D means when it says, quote, the basis of an IPR ground. [00:00:27] Speaker 03: We know you have at least three different interpretations before you, but only Qualcomm's [00:00:32] Speaker 03: adheres to the statutory text. [00:00:34] Speaker 03: And mainly, in the context of a 103 combination theory, the basis are the references alleged to be in combination. [00:00:44] Speaker 01: But what about what else? [00:00:45] Speaker 01: But Qualcomm said not, as I read Qualcomm. [00:00:48] Speaker 01: It says the story doesn't end there. [00:00:51] Speaker 01: So I want to know where you think this case, they deviated from what our case allowed them to do before. [00:00:59] Speaker 01: In other words, you read Qualcomm as saying, do you not, that you can use. [00:01:04] Speaker 01: You can't use it as a basis. [00:01:06] Speaker 01: Right. [00:01:06] Speaker 01: But it can be used to describe general knowledge of one skilled in the art, background knowledge of one skilled in the art, whatever words you want to use. [00:01:14] Speaker 01: So you agree with that, right? [00:01:15] Speaker 03: We absolutely agree with that, Your Honor. [00:01:17] Speaker 03: And that was my second point, that our rule in reading fits with the Phillips, the Coninquica Phillips case, and the Qualcomm decision as well. [00:01:25] Speaker 01: So we think that the board and the petition here deviate. [00:01:29] Speaker 01: I guess I want to say, I mean, they deviated in forms, certainly. [00:01:34] Speaker 01: in terms of using basis or using reference. [00:01:37] Speaker 01: And it deviated in form. [00:01:39] Speaker 01: But in substance, where did it deviate from what we said in Qualcomm's policy? [00:01:44] Speaker 03: Yes, Your Honor. [00:01:44] Speaker 03: And I can point you to the final written decision on remand at appendix 30 to 57. [00:01:49] Speaker 03: And I'll point you specifically to appendix 29, where the board in the written decision on remand says it is basically adopting everything it did in the first original decision when the board and Apple [00:02:04] Speaker 03: everybody basically, but Qualcomm thought that a statement in the challenge patent itself could be a prior art patent. [00:02:11] Speaker 03: So the board just re-adopted its analysis. [00:02:14] Speaker 01: I'm sorry, what page did you say in the board decision? [00:02:17] Speaker 03: That's in Appendix 29, Your Honor. [00:02:21] Speaker 03: And there's a footnote where they say the only thing they change from their original decision are typographical errors. [00:02:28] Speaker 03: But they say at the top, starting on the second line, the indeed sentence, indeed, [00:02:32] Speaker 03: There has been no change during the remand as our application of the prior art patents and AAAPA to the claims is substantially identical. [00:02:41] Speaker 03: And what you'll see in that analysis when you flip to the next page, page 30 of the final written decision through 57, which is claim one, the board there is, we're not just resting on the way [00:02:54] Speaker 03: the ground was defined as the basis, although certainly I think that is telling. [00:02:58] Speaker 03: But we are also, and the court and the board also can readily police this by looking at the analysis. [00:03:04] Speaker 03: And the way the AAPA was used was as though it was a prior art patent. [00:03:10] Speaker 03: But why do you say that? [00:03:11] Speaker 01: Maybe I'm misreading. [00:03:12] Speaker 01: I obviously read that page. [00:03:15] Speaker 01: But indeed, there has been no change during the remand as our application of the prior art patents. [00:03:23] Speaker 01: and AAAP. [00:03:25] Speaker 01: So aren't they differentiating between the prior art patents and AAAPA? [00:03:32] Speaker 03: Based on the board's erroneous statutory interpretation of Section 311B. [00:03:37] Speaker 03: So the board, the PTO, and the guidance would have you read the statute as though it said, as long as you've got one legitimate prior art patent or one legitimate prior art printed publication, you're through the door. [00:03:52] Speaker 03: And then you can use anything else. [00:03:54] Speaker 03: The statute does not say at least one or as long as you have one. [00:03:58] Speaker 03: The statute says the basis. [00:04:00] Speaker 01: But what if it has one? [00:04:01] Speaker 01: What if you've got a claim and it's got 10 limitations and nine of them are general knowledge, background knowledge? [00:04:08] Speaker 01: And so you've got only one limitation that is not, I don't know, word I'm allowed to use, novel or whatever. [00:04:17] Speaker 01: It's not a question of quantity, is it? [00:04:20] Speaker 01: It's quality. [00:04:20] Speaker 01: In that circumstance, wouldn't you use the basis to cover the novel claim and then whatever you're allowed to use in terms of general background knowledge to cover the other limitations by necessity? [00:04:35] Speaker 03: You could. [00:04:36] Speaker 03: That is one theory, but it is not what happened here. [00:04:40] Speaker 03: And Phillips, the Phillips decision draws this distinction between using evidence as part of the basis [00:04:47] Speaker 03: those key references, but we say over and over again, obviousness in view of reference A and reference B, the asserted references. [00:04:57] Speaker 03: And there is room for additional evidence. [00:05:00] Speaker 03: to how a person of ordinary skill in the art would view those references, the lens, the perspective they would take on those references. [00:05:08] Speaker 03: But you have to have a legitimate basis to even satisfy Section 311B. [00:05:13] Speaker 01: Well, in your view, is there no way that this claim could have been, the petition could have been written appropriately so it would satisfy 311? [00:05:21] Speaker 01: I mean, if it used Majuric or whatever, however you pronounce it, is the basis and the only basis for this claim, because this teaches the one novel thing and the limitations. [00:05:31] Speaker 01: The rest of it, the other limitations, rely on general knowledge of the art in the art, blah, blah, blah. [00:05:39] Speaker 01: Is there a way that you could have characterized this, not using basis, not using reference to describe the AAPA, that would have been satisfactory in your view? [00:05:48] Speaker 03: It's possible, but that is a hypothetical because that's not what Apple did and it's not what the board did. [00:05:52] Speaker 03: You will not see a single reference, a single mention to common knowledge, general knowledge, background knowledge that would be, might be using AAPA evidence that doesn't qualify as part of the basis in a permissible way. [00:06:08] Speaker 03: You're not gonna see that anywhere in Apple's petition or in the board's decision. [00:06:12] Speaker 03: So this is about the clearest. [00:06:13] Speaker 01: Well, they talk about it as conventional, do they not? [00:06:15] Speaker 01: I mean, in the petition, there are a few things where they talk about [00:06:18] Speaker 01: We've got too much paper here. [00:06:21] Speaker 03: I'm not even sure that the petition uses conventional, but we're not disputing that the 674 patent itself refers to something as conventional. [00:06:28] Speaker 03: But pretty much anything in an obviousness case is something that was conventional or known. [00:06:34] Speaker 03: What Phillips teaches us in Qualcomm 1, the first decision in this appeal, teaches us that it is the way the petitioner crafts their petition and their grounds. [00:06:44] Speaker 03: And that goes back to SAS Institute. [00:06:46] Speaker 04: Is it a matter of lexicon? [00:06:48] Speaker 04: of what you call different things that you use in your petition, whether it's a pen or publication. [00:06:55] Speaker 04: If you're going to use a declaration and you say, this does not form the basis of the decision, but it's important as general knowledge. [00:07:05] Speaker 03: I think that is one example of how that piece of evidence could be used. [00:07:11] Speaker 03: If you actually bring to the board a request, you want the board to make findings on what is in the general knowledge. [00:07:16] Speaker 03: how that person of ordinary skill in the art would view the reference. [00:07:21] Speaker 03: So there might be a way to bring a ground that uses Majorsic as the reference, but you would actually as a petitioner. [00:07:28] Speaker 01: But is there a way that we could use the AAP as this background general knowledge? [00:07:33] Speaker 01: I mean, I think if you read the specification, [00:07:36] Speaker 01: One could construe it and present it as if this was conventional general knowledge, one skilled in the art. [00:07:45] Speaker 01: That's what the specification kind of says, right? [00:07:47] Speaker 03: And we're not disputing that somebody could, Judge Prost. [00:07:51] Speaker 03: It is what the petitioner did here. [00:07:53] Speaker 03: And the reason I pointed to the board's final written decision is because the board, of course, has to follow what the petition did. [00:07:59] Speaker 01: So you would agree that the number of limitations, even if that AAP, the language in the AAP, if they had presented it appropriately in accord with Qualcomm, that it could cover up [00:08:10] Speaker 01: nine out of 10 limitations, if that's the way the claim is drafted. [00:08:14] Speaker 01: If the claim has 10 limitations and nine of them are found in conventional uses. [00:08:21] Speaker 03: Right. [00:08:22] Speaker 03: And yes. [00:08:23] Speaker 03: And that, again, that's a hypothetical. [00:08:24] Speaker 03: That's not our case. [00:08:26] Speaker 03: And we're not asking you to count limitations. [00:08:29] Speaker 03: I think the other side is really mischaracterizing our position. [00:08:32] Speaker 05: And it would depend upon what the references show. [00:08:34] Speaker 03: Absolutely, Your Honor, absolutely. [00:08:36] Speaker 03: And that's why the test is really simple. [00:08:39] Speaker 03: It's something the board can easily police. [00:08:41] Speaker 03: It already does when it includes these handy charts in its final written decisions as to what the basis is and what the references are. [00:08:49] Speaker 03: And you'll see in Appendix 10 through 11, the board did just that here. [00:08:53] Speaker 03: It has a chart where it is labeled [00:08:56] Speaker 03: basis, references, plural, and it lists the AAPA and Majorsk. [00:09:02] Speaker 03: It's treating AAPA as though it is a prior art patent in combination with Majorsk. [00:09:08] Speaker 03: And that is exactly what this court in the prior decision. [00:09:13] Speaker 01: Whether you're right or wrong, that's more formal. [00:09:15] Speaker 01: It's form rather than substance, right? [00:09:18] Speaker 03: In this case, I don't think so, Your Honor. [00:09:21] Speaker 03: We let petitioners craft their petitions as they want. [00:09:25] Speaker 03: And I don't think we're elevating form over substance. [00:09:27] Speaker 03: We're following the statute. [00:09:29] Speaker 03: And it is certainly, I think, relevant that the petitioner themselves called it the basis. [00:09:33] Speaker 03: They called it in the prior appeal. [00:09:36] Speaker 01: They told this court that if that were true, we wouldn't have remanded it. [00:09:39] Speaker 01: I mean, if that in and of itself were sufficient, then there wouldn't have been a remand. [00:09:43] Speaker 01: You would have just won full steam in the first case, right? [00:09:46] Speaker 03: That's true. [00:09:46] Speaker 03: I think everybody's using that in their favor. [00:09:49] Speaker 03: I take that. [00:09:51] Speaker 03: We understand that. [00:09:51] Speaker 03: But the PTOs [00:09:54] Speaker 03: interpretation of the statute just does not work. [00:09:57] Speaker 03: It's not what the statute says. [00:09:59] Speaker 03: It would really open the door to IPRs that have, you have a whiff of something. [00:10:03] Speaker 03: You have a microprocessor limitation in a claim. [00:10:07] Speaker 03: You're going to be able to find a patent or printed publication to cover that limitation. [00:10:11] Speaker 03: And you could bring in anything else. [00:10:12] Speaker 03: And that's not what Congress allowed. [00:10:14] Speaker 01: Can I ask you one more quick question? [00:10:15] Speaker 01: Yes. [00:10:15] Speaker 01: Because I don't want to. [00:10:16] Speaker 01: Is that the case in it cited for Ravalma? [00:10:21] Speaker 01: You familiar with that? [00:10:22] Speaker 01: Ravalma. [00:10:22] Speaker 01: That's the one that kind of [00:10:24] Speaker 01: at least clarified our earlier case. [00:10:28] Speaker 01: And I have a pretty strong statement. [00:10:31] Speaker 01: It says, in terms of what the board's authority is, in terms of how it construes and applies to what's said in the petition, right? [00:10:38] Speaker 01: And they say there that relying on argument, nothing precludes the board from relying on arguments made by a party and doing its job as adjudicator and drawing its own inferences and conclusions from those arguments [00:10:51] Speaker 01: even when the result is use of the party submissions against the subject, of course, to the provision of adequate notice. [00:10:58] Speaker 01: So that kind of suggests that the board does have some authority to get rid of the terminology that the petitioner used and just use the stuff, right? [00:11:10] Speaker 03: With a very hard line drawn by Section 311B as to what can validly be used as a basis in an IPR. [00:11:18] Speaker 03: And keep in mind, IPRs [00:11:20] Speaker 03: This is just one type of proceeding in which a party can challenge a patent. [00:11:24] Speaker 03: You've got district court actions, ITC actions, PGRs, initial reexaminations by the examiner, where you can use AAPA in a different way. [00:11:32] Speaker 03: But what Phillips teaches us, and I think directly to your point, Your Honor, Phillips says there is a distinction between reference A and reference B. In that case, smile one plus the wall reference. [00:11:44] Speaker 03: and a ground that actually asserts reference A in light of general knowledge, where you're using other evidence to actually prove up a case where you're relying on general knowledge. [00:11:54] Speaker 03: And we do not have the latter here. [00:11:56] Speaker 03: The way the board defined it, the way Apple defined it, and the way you'll see at appendix 30 to 57, it is repeatedly using the AAPA, again, under the mindset that the board had in its original decision, that the AAPA was some freestanding standalone prior art document. [00:12:13] Speaker 03: And it's not, as Qualcomm one held, that the remand should have been really straightforward. [00:12:17] Speaker 03: It went really off course because the PTO, after this court issued its decision, came up with a new definition of the basis. [00:12:26] Speaker 03: And so that's why we're here back on an erroneous interpretation. [00:12:29] Speaker 03: But it should have been very straightforward. [00:12:30] Speaker 03: This should be the easiest case because there is not a whiff of general knowledge as an assertion by the petitioner and the statutory [00:12:38] Speaker 03: limit of IPRs in Section 311B happens that, as does, of course, longstanding law under the Supreme Court in this court that it's the petitioner that drives the red light. [00:12:48] Speaker 04: I think Judge Ritter has a question. [00:12:50] Speaker 04: Yes. [00:12:52] Speaker 04: I'm wondering what effect the issuance of the guidance by the PTO has on this continuing question about the jurisdiction of this court. [00:13:04] Speaker 04: in questions regarding institution of IPRs. [00:13:10] Speaker 04: Can you address that real quickly and also whether, now that we're looking at this post issuance of the guidance, does this impact the question of whether we have jurisdiction under 314? [00:13:24] Speaker 03: No, Your Honor. [00:13:25] Speaker 03: I think as the Supreme Court this term made very clear, it is the court's job to interpret statutes. [00:13:31] Speaker 03: The agency, there's no deference owed to the agency, whether it's in the [00:13:34] Speaker 03: board's decision or in the guidance. [00:13:37] Speaker 03: So this court has jurisdiction. [00:13:39] Speaker 03: Of course, this court in the prior decision addressing the exact same statutory provision satisfied itself of jurisdiction. [00:13:46] Speaker 03: And we are here properly asking the court to review this. [00:13:49] Speaker 03: I'll give you two specific reasons. [00:13:51] Speaker 03: The first is we're not challenging institution. [00:13:53] Speaker 03: We are challenging the cancellation of our claims. [00:13:56] Speaker 03: This was the only ground on which the board found the claims cancelable. [00:14:00] Speaker 03: It rejected Apple's other arguments [00:14:02] Speaker 03: we're challenging that ultimate merits decision. [00:14:05] Speaker 03: And second, the Supreme Court has made clear multiple times that judicial review is retained for when the board exceeds its statutory authority, both in the Closer decision and in SESS Institute reiterated in Thrive. [00:14:20] Speaker 03: And in some of those decisions, the court specifically called out this same limitation, the 311B limitation, [00:14:28] Speaker 03: For instance, you can't bring Section 112 arguments. [00:14:30] Speaker 03: It's the same limitation. [00:14:31] Speaker 03: That's an issue. [00:14:31] Speaker 04: So in your view, in the future, we would be able to review determinations by the PTO involving AATA? [00:14:43] Speaker 03: Yes, Your Honor. [00:14:44] Speaker 03: I guess the way I would think about it is if it's an issue just like here that's bound up with the statutory interpretation, it's de novo review. [00:14:53] Speaker 03: The only question here, because we're not disputing, we embraced what the board did. [00:14:56] Speaker 03: It used the AAPA as though it was a prior art patent. [00:15:00] Speaker 03: That doesn't qualify as part of the basis. [00:15:02] Speaker 03: It used a two reference combination, but that two reference combination can't be brought in an IPR, maybe in another type of proceeding, but not in an IPR. [00:15:12] Speaker 05: Councilor, your time is just about up. [00:15:14] Speaker 05: We've asked a lot of questions, so we'll give you three minutes for rebuttal. [00:15:18] Speaker 03: Thank you, your honor. [00:15:18] Speaker 03: I appreciate it. [00:15:20] Speaker 05: Ms. [00:15:20] Speaker 05: Degnan, you have 12 minutes. [00:15:27] Speaker 02: They please the court, Lauren Degman for Apple. [00:15:30] Speaker 02: This court should dismiss the appeal because Section 314 deprives this court of jurisdiction. [00:15:39] Speaker 02: Contrary to Qualcomm's assertion, they are challenging the institution's decision here. [00:15:44] Speaker 02: The board looked at- Was it different in the first case? [00:15:48] Speaker 01: We did the first case. [00:15:49] Speaker 01: What's the difference between this and what we're doing here and what we did in the first case? [00:15:52] Speaker 02: So candidly, at a high level, it's probably not different in the first case. [00:15:58] Speaker 02: But here, the issue on remand required the board to look at the petition and make a determination as to what the basis was. [00:16:07] Speaker 02: And that is really not materially different from what happens in the case. [00:16:11] Speaker 01: OK, so if you acknowledge if we do it here, we should have done it in the first case, then we wouldn't be here at all. [00:16:16] Speaker 01: I don't know how I unravel that ball. [00:16:20] Speaker 02: So I would unravel that ball, Your Honor, by saying, look, mandate issued in that case, and mandate is final. [00:16:25] Speaker 02: And there's a lot of reasons that there would be nothing to do with the previous case. [00:16:28] Speaker 02: But here, in QOZO, we learned that determining whether a ground is stated with sufficient particularity is a non-reviewable decision. [00:16:38] Speaker 02: And that is really not materially different than determining whether a ground, the basis of that ground, [00:16:45] Speaker 02: is prior patents or printed publications. [00:16:47] Speaker 02: There's no daylight between those two. [00:16:48] Speaker 02: And we know those are not reviewable. [00:16:51] Speaker 02: And counsel referred to what the Supreme Court has called the shenanigans exception. [00:16:56] Speaker 02: The shenanigans exception is not about whether you exceed your statutory authority. [00:17:01] Speaker 02: We know that because Thrive, the time bar, was once considered to be the time bar, was beyond the statutory authority. [00:17:08] Speaker 02: And the dissent in Thrive talks very clearly about how this is a bad ruling because [00:17:14] Speaker 02: this time bar is a statutory authority. [00:17:17] Speaker 01: Well, if my colleagues don't have any further questions on that, I don't. [00:17:20] Speaker 01: So can we move on to the rest of the questions? [00:17:23] Speaker 04: I have one lingering question, Judge Gross. [00:17:26] Speaker 04: Does it matter that in this case we're looking at this issue [00:17:31] Speaker 04: with the guidance, the PTO guidance that is issued during this time, which purports to address this very question that we're talking about, and not only that, but to address it in the context of a prior appeal to us. [00:17:46] Speaker 02: So I would say it does not matter that there's now guidance. [00:17:50] Speaker 02: I think the guidance sort of highlights the point I'm making in that it is an issue closely tied to the institution decision that guidance is used [00:18:00] Speaker 02: at the institution stage exclusively. [00:18:02] Speaker 02: It's not about what happens at the end of the final written decision. [00:18:06] Speaker 02: So it's not significant from statutory construction perspective. [00:18:11] Speaker 02: We agree that there's no difference to the guidance. [00:18:14] Speaker 02: But it highlights how this is an institution decision or something that's closely tied. [00:18:18] Speaker 02: Just like this court said in Wi-Fi 1 that Section 311 through 313 is more closely tied than even the time bar, which we know is not subject to appellate review. [00:18:29] Speaker 02: Thank you. [00:18:31] Speaker 02: OK, so I will move on to the basis question, if the court doesn't have more questions about jurisdiction. [00:18:38] Speaker 02: And we would point out that Qualcomm's tests and complaints about the statutory interpretation are wrong. [00:18:45] Speaker 02: They elevate in every facet of the analysis, elevates form over substance. [00:18:51] Speaker 02: And the decision should be made based on the substance of our petition. [00:18:55] Speaker 02: And the substance of our petition uses [00:18:59] Speaker 02: applicant admitted prior art to demonstrate general knowledge of one of skill in the art. [00:19:05] Speaker 01: Does the petition say that? [00:19:07] Speaker 01: Or does the board, I guess I'll ask you two questions. [00:19:09] Speaker 01: Does the petition, where does the petition say that? [00:19:12] Speaker 01: And two, even if the position doesn't say that, where does the board say that that's the way they're construing the petition? [00:19:20] Speaker 02: Okay, so the petition doesn't use sort of the magic words, general knowledge, but the petition in substance, when you look at it, it says in many places it talks about a solution that was known at the time of filing. [00:19:34] Speaker 02: That's on Appendix 240. [00:19:36] Speaker 02: It defines something that was known at the time of filing as being depicted in Figure 1. [00:19:42] Speaker 02: It also says that there were no prior ought solutions, a standard POC system. [00:19:50] Speaker 02: That's on Appendix 249. [00:19:52] Speaker 02: So it's using the words and citing back to the 674 patent itself, where the patent is calling it conventional standard [00:20:01] Speaker 02: known, and so... But does it matter? [00:20:03] Speaker 01: I mean, it uses it as a reference. [00:20:05] Speaker 01: It clearly was operating under a different view of what the statute said, right? [00:20:11] Speaker 01: So certainly at the top... The question is, can it survive that based on the authority of what they said or how the board construed them? [00:20:20] Speaker 02: Absolutely, it survives. [00:20:21] Speaker 02: Because in substance, there's no meaningful difference than talking about general knowledge [00:20:27] Speaker 02: evidenced by the admissions here in this patent that were cited. [00:20:31] Speaker 02: And this court has said that there's nothing improper of supplying a limitation using general knowledge of one's skill in the art. [00:20:39] Speaker 02: And the idea that one couldn't combine the general knowledge that meets the limitations with something else is wrong. [00:20:48] Speaker 05: So to complain about it, it was using it as... Except you've got a statute that says you have to have references. [00:20:56] Speaker 05: And the case lawyer said, well, general knowledge is all right, but the petition didn't say, based on general knowledge. [00:21:06] Speaker 02: So the statute does? [00:21:07] Speaker 05: So it's not just semantics. [00:21:08] Speaker 05: Interpreting statutes, of course, is a matter of language. [00:21:13] Speaker 02: I agree that the statute itself does say it's only on the basis of prior art consisting of patents or printed publications. [00:21:22] Speaker 02: And this court held in the last case that that means the basis can be prior art patents or printed publications. [00:21:31] Speaker 02: And it's still OK to use general knowledge to fill in limitations. [00:21:36] Speaker 05: Well, that's your argument. [00:21:37] Speaker 05: But what's the basis? [00:21:39] Speaker 02: I think the previous decision sets forth the analysis for why that's so, I think, well and what it points to is general knowledge is always used, is always appropriate to be considered. [00:21:55] Speaker 02: in the analysis of obviousness. [00:21:57] Speaker 02: In fact, one would say you must start with it because you use general knowledge. [00:22:01] Speaker 01: But I understood Judge Lurie's question to be at least in part. [00:22:04] Speaker 01: The petition doesn't talk about the general knowledge. [00:22:08] Speaker 01: It uses it very much as a reference. [00:22:11] Speaker 02: So I would disagree. [00:22:12] Speaker 02: It doesn't use the words general knowledge. [00:22:15] Speaker 02: But in substance, you look at the substance of the position, [00:22:18] Speaker 02: It is using general knowledge as evidenced by applicant-emitted prior art in the subject patent. [00:22:25] Speaker 02: And so it is, since this court has held in Phillips and in the previous Qualcomm case here, you may supply limitations. [00:22:33] Speaker 02: So the main complaint that if it's quote, being treated like a prior art reference itself, [00:22:38] Speaker 02: There's simply nothing wrong with drawing a diagram or relying on a diagram that visually depicts for simplicity what is in the general knowledge of one skill than the art. [00:22:49] Speaker 02: And there's nothing wrong with combining what was in the general knowledge of one skill in the art with another reference. [00:22:56] Speaker 02: And doing that is appropriate and it doesn't transform the basis of this particular ground into [00:23:05] Speaker 02: being general knowledge only or application prior art only. [00:23:09] Speaker 02: Because remember, we are looking at an alleged improvement patent. [00:23:13] Speaker 02: And under KSR, we have to look at whether the improvement is more than the predictable use of prior art elements according to their established function. [00:23:23] Speaker 01: But doesn't the board's opinion sort of say, and even the instructions, the guidance by the director, [00:23:31] Speaker 01: Nobody has to do the heavy lift of doing what you just said, of kind of reconstruing the petition so that fits within what we said in Qualcomm. [00:23:42] Speaker 01: The guidance sort of says, as long as you have one proper printed publication of prior art reference, [00:23:51] Speaker 01: Whatever else you do is fine. [00:23:53] Speaker 01: It doesn't matter. [00:23:54] Speaker 01: Is that how we should read the guidance or the board's opinion? [00:23:57] Speaker 02: That is not how we read the guidance or the board's opinion. [00:23:59] Speaker 02: We don't read the guidance. [00:24:01] Speaker 02: Under the guidance, we believe that the director is empowered to ferret out sham uses of prior art patents or printed publications. [00:24:11] Speaker 02: So if a ground is using prior art in a tokenistic or sham way, the director would then examine the substance of the ground to determine what role the prior art pattern plays in the petition's IPR challenge. [00:24:26] Speaker 02: And as part of that inquiry, ferreting out sham, it would look at exactly the kinds of things we say that we have present here, that the Masurak reference is used for the only thing the patent admits was not well-known, conventional, and standard in the art. [00:24:43] Speaker 02: And as part of the ferreting out sham uses of prior art, [00:24:47] Speaker 02: it would look at what kind of obvious theory do we have. [00:24:50] Speaker 02: Do we have an alleged improvement patent under which KSR tells us we're going to have to look at whether the improvement is a predictable use of prior art. [00:24:59] Speaker 02: And here, in our case, the alleged improvement is being met by [00:25:04] Speaker 02: a prior art printed publication measure act. [00:25:08] Speaker 02: So as a result, our case is an easy one. [00:25:12] Speaker 02: That what is doing all the heavy lifting is, in fact, the prior art printed publication measure act and the Parallel Patent Matthews. [00:25:20] Speaker 05: I'm glad you think the case is an easy one. [00:25:25] Speaker 02: Narrowly on our facts, it is. [00:25:27] Speaker 02: Um, and I do want to just respond to something council said to your hypothetical judge pros where you've got 10 limitations and neither of them are indisputably conventional known. [00:25:38] Speaker 02: Um, and one is said to be different. [00:25:41] Speaker 02: And she agreed that in that scenario, in that scenario with only one limitation is said to be novel and a prior patent or publication meets that one limitation. [00:25:50] Speaker 02: We're fine. [00:25:51] Speaker 02: The basis of [00:25:53] Speaker 02: The ground is the prior art patent or printed publication. [00:25:57] Speaker 02: That's exactly what we have here in Art Facts. [00:26:00] Speaker 02: And again, when you look at the substance of how we presented the ground, not the labels, not the labels, not the, you know, what came first. [00:26:08] Speaker 02: If you look at the substance, what we are relying on for that key limitation that the patent admits is important is in fact a printed publication or prior art patent. [00:26:19] Speaker 02: And in that scenario, [00:26:21] Speaker 02: This is an easy case, because she's admitted that under that scenario, the basis is not the applicant made of prior art. [00:26:28] Speaker 02: The basis is not general knowledge evidenced by applicant-made prior art. [00:26:33] Speaker 02: The basis is the patent and the printed publication of the National [00:26:39] Speaker 05: Thank you, Ms. [00:26:40] Speaker 05: Degna. [00:26:41] Speaker 05: We'll hear from Ms. [00:26:42] Speaker 05: Queller. [00:26:44] Speaker 05: And since we're going to give Ms. [00:26:46] Speaker 05: Swayze three more minutes, you can go up to six if you need it. [00:27:01] Speaker 00: Your Honors, and may it please the court. [00:27:03] Speaker 00: We believe the first Qualcomm decision answered the question at issue here. [00:27:08] Speaker 00: is that it is improper in IPR to rely solely on applicant admitted prior art. [00:27:13] Speaker 00: The board's decision and the updated guidance followed that and said. [00:27:17] Speaker 01: Can I ask you a threshold question that maybe you know the answer to, or presumably it's not on the record? [00:27:22] Speaker 01: Why hasn't this issue come up before? [00:27:24] Speaker 01: I mean, the AIA has been here for over a decade. [00:27:26] Speaker 01: I mean, it could be a number of things. [00:27:28] Speaker 01: It could be that petitioners all read the statute, as your friends do, and haven't done it, have dug up some prior art reference. [00:27:35] Speaker 01: substitute for the APA or it could be that the board just let it go and nobody sort of woke up and said until your friends here said hey read the statute guys this you can't be doing this do you have any do you have at least a gut instinct about what's been going on for 12 years my instinct is that [00:27:55] Speaker 00: Use of AAPA first as a category is limited. [00:27:59] Speaker 00: People don't tend to rely on it. [00:28:01] Speaker 00: I think over time, practitioners know not to admit things in the patent. [00:28:04] Speaker 00: So as we go on, there's less and less admission. [00:28:07] Speaker 00: So the scope or the number that we're talking about is low. [00:28:10] Speaker 00: And then quite frankly, as this court knows, practitioners frequently come up with [00:28:15] Speaker 00: Creative arguments and I think it is just one of the more creative arguments challenging the language of the a statute and that's why we're here. [00:28:23] Speaker 00: I think there are other cases as we know from our own docket that are following on this that are now also making the same argument. [00:28:30] Speaker 00: It came up to the director in the first initial guidance when they realized there was a split in the panels on how they were addressing AIA when this case first came up, and that's why we issued... I don't want to use too much of your time, but I appreciate that. [00:28:45] Speaker 00: Of course. [00:28:46] Speaker 00: So we believe the director's guidance and the board's decision is the best interpretation of the language of 311. [00:28:54] Speaker 00: And that follows the language of 311, the role of the background knowledge of the skilled artisan, as this court has emphasized in both Conklee Gay Phillips and the Qualcomm decision. [00:29:04] Speaker 00: And it also is consistent with this court's precedent. [00:29:07] Speaker 01: But even so, didn't the board have to do more if it had the authority? [00:29:11] Speaker 01: And the question is, did they have the authority to do it? [00:29:13] Speaker 01: But didn't it have to do more in terms of reconstruing the petition [00:29:19] Speaker 01: which I think one has to do, because the words there, whether they're formalistic or not, it's not laid out in the way it should be laid out for purposes of 311. [00:29:28] Speaker 01: So didn't the board have to at least try to do more to rehabilitate it, if it could? [00:29:33] Speaker 01: So the question is, what authority do they have to rehabilitate it, and did they do enough? [00:29:38] Speaker 00: I think first, the initial question of form. [00:29:41] Speaker 00: The board did not look at form over substance. [00:29:43] Speaker 00: And they said in particular that the way that the petition phrased the grounds was not indicative of the question at issue, which was how AAPA was used. [00:29:55] Speaker 00: And that's the question that this court remanded to look at. [00:29:58] Speaker 00: And then I think this goes to the idea that the board had to somehow [00:30:03] Speaker 00: explain or resuscitate the petition and explain why AAPA was used as general knowledge. [00:30:09] Speaker 00: And I don't agree that that was necessary, because as this court said in Qualcomm, AAPA can be used because it is like general knowledge, because it is a factual foundation of what one of skill and the art knew at the time of the invention. [00:30:23] Speaker 00: It is not that you have to go above and beyond and say, oh, in addition, this shows what people knew. [00:30:30] Speaker 05: Well, I think it may be like prior art, like general knowledge or not. [00:30:37] Speaker 05: It isn't necessarily just because it's admitted. [00:30:42] Speaker 00: And as the director's guidance explains at appendix 5267 to 5268, it is certainly well within [00:30:49] Speaker 00: a patent owner's ability to challenge that it is truly an admission. [00:30:53] Speaker 00: But as this court has said in Pharmastem, and in Pharmastem they did challenge whether it was an admission, and this court came down strongly and said, [00:31:00] Speaker 00: It is really hard to get around the binding nature of what you admit is prior art. [00:31:06] Speaker 00: But the director has acknowledged that that is possible. [00:31:09] Speaker 00: You can say it wasn't well known or these statements are taken out of context and we were not admitting what is prior art. [00:31:15] Speaker 00: That is not the case here. [00:31:17] Speaker 00: There was never a challenge that this was truly an admission. [00:31:20] Speaker 00: So as an admission, it is binding on patentee. [00:31:23] Speaker 00: There was nothing more that the board had to do to resuscitate or show that the petition in some way [00:31:30] Speaker 00: use it as general knowledge. [00:31:32] Speaker 00: It used it as an admission, and that's not contested. [00:31:35] Speaker 01: Pharmacem was stated in Qualcomm, right? [00:31:37] Speaker 00: Yes, Your Honor. [00:31:40] Speaker 05: This problem is readily avoidable by stating what is otherwise admitted as actual prior art. [00:31:53] Speaker 05: I mean, truly, there is prior art for what is being admitted, and one could have avoided the problem. [00:32:00] Speaker 00: I agree that it is avoidable. [00:32:01] Speaker 00: That doesn't mean that applicant-admitted prior art is not also usable, as this court stated in Qualcomm, as evidence, and very strong evidence, of what was the background skill of the artist in prior art. [00:32:13] Speaker 00: And to find otherwise would be running up against this court's decision in Conclique Phillips, where they said it is allowable in an AIA proceeding under 311 to combine evidence of general knowledge, like AAPA, [00:32:29] Speaker 00: with the prior art teachings. [00:32:31] Speaker 00: Anything where you say form over substance, where you can't list it, for example, in a heading, doesn't make any sense. [00:32:38] Speaker 00: If you can combine it with a prior art, being completely silent that you're relying on AAPA in your heading really makes no sense. [00:32:45] Speaker 00: In addition, saying in light of general knowledge, which Qualcomm says in their reply at page 16 was acceptable, [00:32:54] Speaker 00: They say that the use of general knowledge in Conclique Phillips was OK. [00:32:57] Speaker 00: There's really no daylight between that use and what was done here other than the phrasing. [00:33:03] Speaker 00: And there's no difference in the phrasing here. [00:33:06] Speaker 00: I see that I'm out of time. [00:33:07] Speaker 01: I'm happy to... Did you say no difference in the phrasing? [00:33:09] Speaker 00: Excuse me, there's no difference in the use. [00:33:11] Speaker 00: Oh, okay. [00:33:11] Speaker 00: Thank you. [00:33:12] Speaker 00: Yes, thank you. [00:33:13] Speaker 00: I'm happy to answer any other questions with respect to Qualcomm's tests. [00:33:19] Speaker 00: However, we ask that you affirm the director's interpretation as the best reading of the statute. [00:33:24] Speaker 05: Thank you, Council. [00:33:26] Speaker 05: Ms. [00:33:26] Speaker 05: Sweezy here is up to five, three minutes. [00:33:32] Speaker 03: Thank you, Your Honor. [00:33:35] Speaker 03: Facts are stubborn things. [00:33:37] Speaker 03: We heard reference to what is allowable, what may or might happen, what can happen. [00:33:42] Speaker 03: But as the Supreme Court told us and this court reiterated in Phillips, the AIA does not contemplate a petition that asks the director to initiate whatever kind of IPR he chooses. [00:33:56] Speaker 03: The petitioner chooses how they want to use their evidence and how they want to present their ground and on what basis. [00:34:03] Speaker 03: And specifically on the facts here, in this case, if you look at the petition, appendix 246 to 259, there is no reference to general knowledge. [00:34:13] Speaker 03: There is no invocation. [00:34:14] Speaker 03: There is no asking the board to use a APA in that way, as that function or role. [00:34:20] Speaker 03: It is using APA as a standalone system combined with Majorsic. [00:34:24] Speaker 03: That is contrary to the plain reading of what we understand the basis to mean in any 103 combination theory. [00:34:31] Speaker 03: And I would point the court to, [00:34:33] Speaker 03: The Qualcomm 1 decision, I counted at least 14 uses of the word use in relation to AAPA. [00:34:39] Speaker 03: It is how the petitioner uses the evidence. [00:34:42] Speaker 03: They don't get to just cite any evidence and then the board can use it however it wants. [00:34:47] Speaker 03: It's limited to how the petition crafts it. [00:34:50] Speaker 03: With respect to institution, just a couple of quick points there. [00:34:55] Speaker 03: Again, we are challenging the board's cancellation of our claims. [00:34:58] Speaker 03: And I would direct the court to the CLOSO decision that says Section 314D does not enable the agency to act outside its statutory limits. [00:35:08] Speaker 03: That's the question we have here. [00:35:09] Speaker 03: Judicial review remains available. [00:35:11] Speaker 03: It's much like this court's decision in Medtronic, where one issue was whether a reference actually qualified as statutory prior art, and that was [00:35:20] Speaker 03: part of the board's ultimate. [00:35:21] Speaker 03: I don't want to, I'm two seconds on this. [00:35:23] Speaker 01: Sure, sure. [00:35:24] Speaker 01: But I know it came up in the earlier qualifier. [00:35:26] Speaker 01: And would you say there's no estoppel that attaches? [00:35:30] Speaker 03: To ground two? [00:35:33] Speaker 03: So that's a question for another day. [00:35:34] Speaker 03: OK. [00:35:35] Speaker 03: Yes. [00:35:37] Speaker 03: But the court should be wary about estoppel if this very broad reading of the statute applies. [00:35:42] Speaker 03: Because if so, if all you need is one prior printed publication or patent, that's really going to expand the scope of estoppel [00:35:49] Speaker 03: for petitioners in district court litigation. [00:35:53] Speaker 03: I think I already covered it. [00:35:54] Speaker 03: I clearly was not admitting that Apple is fine here. [00:35:57] Speaker 03: That is our fundamental dispute. [00:35:59] Speaker 03: But this proceeding is not the way to bring this kind of ground, maybe elsewhere, but not here. [00:36:06] Speaker 03: And with respect to the argument that really, I think, is the crux of the guidance and the PTO's position on this word solely, that it's in a sentence at the end of the Qualcomm 1 decision, [00:36:18] Speaker 03: The way to think about that sentence, again, it comes at the end. [00:36:23] Speaker 03: It's not the holding of this court. [00:36:24] Speaker 03: This court held, concluded, determined that AAPA cannot form the basis. [00:36:31] Speaker 03: That's the holding of the court. [00:36:32] Speaker 03: What the court said there was taking perhaps the easiest example. [00:36:37] Speaker 03: If all you have is AAPA, you don't satisfy Section 311B. [00:36:41] Speaker 03: But it wasn't the holding of the court. [00:36:43] Speaker 03: And we have to respect the statute which limits the basis to particular types of evidence [00:36:48] Speaker 03: Apple and the board used AAPA as though it was a prior act patent that's using it as part of the basis and the ground cannot be a basis for canceling these claims. [00:36:58] Speaker 05: Thank you counsel. [00:36:59] Speaker 05: Both counsel the case is submitted. [00:37:03] Speaker ?: Thank you.