[00:00:00] Speaker 05: Our next case is Soft U versus Apple and Motorola Mobility, 2023, 10-05, and 10-07. [00:00:10] Speaker 05: Good morning, Mr. Bowman. [00:00:13] Speaker 05: Good morning. [00:00:14] Speaker 04: Alan Burnett for Appellant Soft U LLC. [00:00:22] Speaker 04: After a decade of prosecution, [00:00:28] Speaker 04: The board came to the conclusion that all claims on appeal were patentable over the art of record under 103. [00:00:35] Speaker 04: But the board issued a new ground of rejection under what they call Claim Cancel Stopple to CFR 42.73d3i. [00:00:44] Speaker 05: The examiner had found the claims unpatentable, right? [00:00:50] Speaker 04: No, the examiner was reversed on all the claims. [00:00:53] Speaker 05: Yes, but the examiner's finding was obvious. [00:00:58] Speaker 04: Some of the claims the examiner found were patentable. [00:01:04] Speaker 04: And the board reversed those claims. [00:01:07] Speaker 04: The word reversed those, too. [00:01:08] Speaker 04: On the estoppel. [00:01:09] Speaker 04: On the estoppel, yes. [00:01:12] Speaker 04: And so this has never been applied in an inter-party re-exam. [00:01:17] Speaker 04: And we argue it shouldn't be applied to issued claims as well. [00:01:23] Speaker 04: But rather than, in addition to the fact [00:01:26] Speaker 04: to that, rather than apply common law collateral estoppel, which that knowledge, the board acknowledges, is not present, they did a redo of the claim construction and did not use the claim construction in the IPRs, but came up with the correct construction. [00:01:44] Speaker 04: And they used that as the baseline for comparing whether the claims were patently distinct or not patently distinct from the cancel claims. [00:01:53] Speaker 04: In addition to that, [00:01:55] Speaker 04: They applied an obviousness type double patenting standard for what was patently distinct as opposed to what was described in the rule during the promulgation. [00:02:05] Speaker 04: And what is in the definitions under Section 42, that same or substantially the same is patently distinct, or patently indistinct, excuse me. [00:02:19] Speaker 04: So I'd like to go to the literal language of the rule. [00:02:22] Speaker 04: So moving down to Part D, estoppel, patent owner, applicant or owner, [00:02:30] Speaker 04: is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent a claim that's patently distinct from a finally refused or canceled claim. [00:02:42] Speaker 04: Now, as I mentioned, how do you obtain a claim that's already been issued? [00:02:50] Speaker 04: Well, the board argued that in distinguishing [00:02:56] Speaker 04: So Softview pointed to two IPRs where the board said, the claims are issued, so this does not apply. [00:03:03] Speaker 04: And the board distinguished that by saying, and this is in green brief at page 18, quoting what the board stated is, unlike any part of the reviews of the issued claims, [00:03:17] Speaker 04: where a patentee is merely defending a claim against a charge of unpatentability. [00:03:22] Speaker 04: The board found that because re-examination is based on an examinational and not a juricure model, it's conducted according to rules of examination, then confirming claim in a re-examination is the same as obtaining a claim. [00:03:36] Speaker 04: And it's actually an examination for the purposes of rule. [00:03:40] Speaker 05: Now, the board said obtaining includes maintaining [00:03:47] Speaker 05: patent already granted and the regulation includes an owner. [00:03:55] Speaker 05: An owner, so there already is a patent. [00:03:58] Speaker 04: Yes. [00:04:00] Speaker 04: So now the board tries to distinguish that an inter-party re-examination is fundamentally different than an inter-party review. [00:04:12] Speaker 04: That's not what the court in Cuso, which is cited in the brief for the director, in support of promulgation of this rule, having authorization to do so. [00:04:26] Speaker 02: Could I follow up on Judge Lurie's question, because I had the same [00:04:30] Speaker 02: question that I wanted to get your view on. [00:04:33] Speaker 02: What significance do you think should be attached to the fact that regulation uses the term owner, vis-a-vis your argument that the regulation only applies to the obtaining of a patent, which would not apply to an owner of the patent. [00:04:53] Speaker 04: That was to apply to, I believe, for reissues. [00:04:58] Speaker 04: and continuations. [00:05:01] Speaker 04: So a reissue, you have the same owner. [00:05:04] Speaker 04: And the discuss during the promulgation specifically identified this would apply to continuations and reissues. [00:05:15] Speaker 04: So just briefly, the first paragraph of CUSO states, the Lee-Smith American Events Act creates a process called Interparties Review. [00:05:29] Speaker 04: That review process allows a third party to ask the USPTO to re-examine the claims in an already issued patent. [00:05:38] Speaker 04: and canceling claims the agency finds are unpalatable in the light of priority. [00:05:43] Speaker 04: And then at page 16 of Crusoe, the court says, the name and accompanying procedures suggest the proceeding offers a second look at an earlier administrative grant. [00:05:56] Speaker 04: Although Congress changed the name from re-examination to review, nothing convinces us that in doing so, Congress wanted to change its basic purposes. [00:06:07] Speaker 04: namely to re-examine the earlier agency decision. [00:06:12] Speaker 04: And I'd also like to point out in rule 304, rule 304 says that the director finds a substantial new question of patentability affecting any claim of the patent is raised. [00:06:26] Speaker 04: The determination will include an order for re-examination of the patent for the resolution of the question. [00:06:35] Speaker 05: So Council, why are these claims patentably distinct? [00:06:38] Speaker 04: OK. [00:06:40] Speaker 04: So we have two claim constructions. [00:06:44] Speaker 04: In the IPR, the claim construction was that only the translated portion of the HTML content needed to be preserved, which means you could skip however much of that content you have. [00:07:00] Speaker 04: Under the correct construction, [00:07:04] Speaker 04: which is the construction that Safi argues would apply to physics. [00:07:09] Speaker 04: Phillips would apply here because it claims the pants are expired. [00:07:15] Speaker 04: But the p-tab identified it was you have x, a, b, and c, and a is preserving the layout functionality and design. [00:07:31] Speaker 04: And X is HTML code that doesn't apply to that. [00:07:35] Speaker 04: So I'll give you an example of what the differences look like. [00:07:41] Speaker 04: If you look at Blue Brief page 60. [00:07:45] Speaker 04: 60? [00:07:46] Speaker 04: 60. [00:07:47] Speaker 04: 60. [00:07:52] Speaker 04: Okay, so this is a comparison of what you get with pad++ on these pairwise on the left, and what those webpages look like when rendered using Netscape, which had the Mozilla rendering engine, which was the rendering engine that was disclosed in the patent in the basis and in part for enablement in patents. [00:08:19] Speaker 04: So you can see there's just a dramatic difference. [00:08:25] Speaker 04: I mean, it's hard to have any demonstrator that's more different than what you get there. [00:08:36] Speaker 04: Also, I'd like to move on, if I could, to focita. [00:08:41] Speaker 04: I'm not using that term if you want to pose our focita. [00:08:45] Speaker 04: Because it's- You're talking about a person with a skill in the art. [00:08:48] Speaker 04: A person having an ordinary skill in the art. [00:08:50] Speaker 04: So the person having an ordinary skill in the art is very important here. [00:08:56] Speaker 04: And in the patent, there is a section that identifies. [00:09:05] Speaker 04: And it is on column. [00:09:15] Speaker 04: OK. [00:09:17] Speaker 04: It's on Column 17, Lines 31 through 41 of the Patent, 353 Patent, which is the Joint Appendix Blue Brief 250. [00:09:25] Speaker 04: It's also discussed. [00:09:26] Speaker 04: This is on the Blue Brief, page 34. [00:09:28] Speaker 04: And it quotes a section of the paragraph that says, as will be recognized by those skilled in the art, [00:09:35] Speaker 04: The functions performed in blocks 150, 152, and 154 are commonly performed by conventional browsers during a pre-rendering process. [00:09:45] Speaker 04: In some browsers, these functions are performed by the Mozilla rendering engine, which comprises open source software as readily available. [00:09:56] Speaker 04: What was claimed in the original claims, one in all the claims in the 353 patent, is how [00:10:05] Speaker 04: operates and how that would be construed by someone, a person of ordinary skill in the art. [00:10:15] Speaker 04: This is demonstrated on a blue brief page 49 and it shows that you have a web page, you have an HTML version of the information [00:10:28] Speaker 04: And then you have a head. [00:10:30] Speaker 04: And then you have a body. [00:10:33] Speaker 04: And the HTML version information, the head, does not define. [00:10:37] Speaker 04: It is part of the HTML content. [00:10:39] Speaker 04: It doesn't define the original page layout functionality and design of the web page. [00:10:44] Speaker 04: So that is parsed, but it's not translated. [00:10:48] Speaker 04: The body which defines the original page job functionality design on the web page is processed and translated under the claims. [00:10:59] Speaker 04: And the original claims, including claims 1 and 36, which were canceled in the IPRs, use the terminology at least a portion [00:11:12] Speaker 04: But the reason that's in there is so someone can say, well, we don't translate the HTML version or the head information. [00:11:21] Speaker 04: So therefore, we don't infringe. [00:11:23] Speaker 04: So that's where that language, at least a portion, comes from. [00:11:26] Speaker 04: Now, for something like Claim87, it doesn't use at least a portion language at all. [00:11:32] Speaker 04: It just explicitly says that the original page functionality [00:11:38] Speaker 04: and design of the web page is preserved. [00:11:42] Speaker 04: So that was the reason for why that language was included, and that was the reason for why that paragraph was included for enablement purposes that discussed Mozilla. [00:11:57] Speaker 04: And as elsewhere, we've identified by our declarant, expert Wolf, who was formerly named Paul Collins. [00:12:08] Speaker 04: Scott Collins, excuse me. [00:12:10] Speaker 03: Counselor, you would agree with me, wouldn't you, that Congress gave authority to the PTO to promulgate its own regulations to handle its process and procedures? [00:12:26] Speaker 04: I would agree to the point of, yes, of the proceedings. [00:12:36] Speaker 03: Basically, we're looking at a proceeding and estoppel is a rule of procedure Is is So maybe you can help clarify why this is okay, so so they're saying that are the 316 D This this is where they get the authority to do this. [00:13:01] Speaker 04: It's it's it's found in that regulation and in under [00:13:07] Speaker 03: So in the rule that you just signed at 316B, the statute. [00:13:15] Speaker 03: Oh, I'm sorry. [00:13:16] Speaker 04: 316A4. [00:13:17] Speaker 04: A4. [00:13:18] Speaker 02: A4. [00:13:19] Speaker 02: Yeah, that's the statute. [00:13:21] Speaker 04: So it says the relationship of such review to other proceedings. [00:13:26] Speaker 04: So that's the relationship to it, which is addressed in 315D. [00:13:32] Speaker 04: that discusses that when you have multiple proceedings during the pendency of the inter-party re-exam, you can provide for a state transfer, consolidation, or termination. [00:13:45] Speaker 04: Now, getting back to Judge Rainer, your question is Stoffe has no issue with respect to applying common law collateral estoppel. [00:13:58] Speaker 04: But that's not what is done here, in fact. [00:14:02] Speaker 04: Parties other than Sofew says, we don't need to apply the rule of common law, Clara Ostopo. [00:14:08] Speaker 04: And as the board identified during claim construction, it's not present. [00:14:12] Speaker 04: In fact, the board would not even let Sofew argue why it wasn't present. [00:14:17] Speaker 04: They've acknowledged that it wasn't present. [00:14:19] Speaker 04: This court in the Regents of University of Minnesota versus LSI in dictum, the judge has said that the rule would require using evaluating the common law collateral estoppel and res uticata. [00:14:42] Speaker 04: That's not what the court did here. [00:14:44] Speaker 04: And I want to get back to... Could I ask you a question just before you run out of time? [00:14:51] Speaker 02: If we agree with you that it was inappropriate for the board to apply the estoppel rule as they have designed it, would you agree that the proper disposition would just send us back for the [00:15:06] Speaker 02: board to decide whether to use an alternative method of reviewing the patentability of these pending claims? [00:15:15] Speaker 04: No. [00:15:15] Speaker 04: I wouldn't say that would be. [00:15:16] Speaker 02: Well, let me point you to footnote six in the board's opinion, JA-69, where they say, we exercise a discretion not to pursue that path, that is to say, an alternative basis for the ruling. [00:15:31] Speaker 02: at this time. [00:15:33] Speaker 02: Doesn't that suggest that they have decided for the present purposes to use the estoppel rule rather than a different way of addressing the patentability? [00:15:44] Speaker 04: Well, there are other issues raised. [00:15:45] Speaker 04: OK, so here's the fundamental problem that SOFU has with that. [00:15:50] Speaker 04: I mean, if it goes back to the board for review, that's going to run out the clock on these patents. [00:16:02] Speaker 04: These claims were found by Judge Start in 2015 in an earlier litigation that all these claims now that are in the inter-party re-exam were dismissed without prejudice. [00:16:21] Speaker 04: And this is going to preclude, if it gets sent back to the board, it's like they get yet another bite. [00:16:30] Speaker 04: By the time it gets back to this court, it's going to be six years past expiration or very close to that. [00:16:37] Speaker 05: Well, if that's proper, that's proper. [00:16:39] Speaker 05: I mean, that's not a reason not to. [00:16:43] Speaker 04: Well, I understand that. [00:16:48] Speaker 04: I just don't see them getting yet another bite of the apple. [00:16:54] Speaker 04: Why would they be allowed to pursue that? [00:16:58] Speaker 02: Well, it's not atypical at all that if a tribunal, whether it's a board or a district court decides, OK, I'm going to decide this on ground A. I'm not going to address ground B for present purposes, because ground A is a more straightforward [00:17:15] Speaker 02: basis for ruling, and then the Court of Appeals said, you're wrong about ground A. Typically, what we would do is to say, OK, now tell us whether you think ground B is correct. [00:17:25] Speaker 02: That sounds like from the footnote six and also the text where they say there is currently insufficient articulated reasoning, which would suggest that an option is to send it back to the examiner for further review. [00:17:39] Speaker 02: Those are all signals to us that [00:17:42] Speaker 02: The board is not done with this case, even if we reverse them on the issue in which they predicated their judgment. [00:17:49] Speaker 02: Doesn't that make sense? [00:17:51] Speaker 04: I don't think it does make sense. [00:17:53] Speaker 05: It doesn't make sense. [00:17:57] Speaker 05: Your argument is that that's piecemeal decision making. [00:18:01] Speaker 04: Yes. [00:18:03] Speaker 04: And they have already reversed the examiner on 103. [00:18:11] Speaker 04: issued a new ground of rejection. [00:18:14] Speaker 04: And now you're saying, OK, the new ground of rejection is wrong, so we go back to 103? [00:18:19] Speaker 04: I just don't think that's proper. [00:18:22] Speaker 05: Council, your time is well passed. [00:18:25] Speaker 05: So we'll give you three minutes for a bottle. [00:18:28] Speaker 05: Let's hear from the other side. [00:18:32] Speaker 05: And please set Ms. [00:18:34] Speaker 05: Maker's time for 11 minutes. [00:18:37] Speaker 05: And we'll give Ms. [00:18:39] Speaker 05: Rasheed six minutes. [00:18:42] Speaker 05: Please proceed. [00:18:42] Speaker 00: May it please the court, Sonal Mehta, on behalf of Appellee Motor Oil and Mobility, arguing for the appellees. [00:18:49] Speaker 00: Your Honor, I want to start by addressing Judge Raina's question with respect to the authority to promulgate the rule. [00:18:55] Speaker 00: Then I can address the application of the rule. [00:18:56] Speaker 00: And then, of course, happy to talk about the patentable distinction questions that came up during the argument or that are raised in the briefing. [00:19:03] Speaker 00: First, with respect to the authority to promulgate the rule, 316A4 gives the Patent Office [00:19:12] Speaker 00: the ability to issue rules that govern the interaction between IPR proceedings and other proceedings under that title. [00:19:23] Speaker 00: And that's precisely what Rule 4273 does, is it governs the interaction between the IPR and the inter-party's re-exam that's pending before the Patent Office. [00:19:34] Speaker 00: So that's the authority under which [00:19:37] Speaker 00: the Patent Office promulgated the rule. [00:19:40] Speaker 00: With respect to the application of the rule, the application of the rule governs precisely a scenario like this one, which is a scenario in which a patent owner or a patent applicant, and the word owner there means something, it has to mean something, patent applicant or an owner cannot take action that's inconsistent with an adverse judgment. [00:20:01] Speaker 00: That is precisely what the board correctly found is happening here. [00:20:05] Speaker 00: This is a set of claims where there's a thicket of 322 claims that mix and match a tremendous number of limitations. [00:20:13] Speaker 03: So what about the language in section 4273D3, the including obtaining language? [00:20:22] Speaker 00: Yes, Your Honor. [00:20:22] Speaker 00: Two points on that. [00:20:23] Speaker 00: First is, of course, what it says is you cannot take action inconsistent with an adverse judgment including. [00:20:30] Speaker 00: So the obtaining is an example of taking action that's inconsistent with the adverse judgment. [00:20:34] Speaker 00: That's one. [00:20:35] Speaker 00: Second, in this particular case, as the board correctly found, obtaining a claim. [00:20:41] Speaker 03: You're looking for a really broad reading of this. [00:20:44] Speaker 00: Well, Your Honor, I'm looking at the language of that particular regulation. [00:20:50] Speaker 00: And that's what the regulation says. [00:20:52] Speaker 00: It says, can't take action inconsistent with an adverse judgment. [00:20:56] Speaker 00: Which makes sense, because the whole point of giving the patent office the ability to govern proceedings is that you're making sure that proceedings at the patent office is dealing with. [00:21:07] Speaker 05: You're saying including isn't exclusive. [00:21:11] Speaker 00: That's right, Your Honor. [00:21:11] Speaker 00: Including is not exclusive. [00:21:13] Speaker 00: But even if you were not to want to go that far, if we look at obtaining, we have to look at obtaining in the context of a re-examination proceeding. [00:21:22] Speaker 00: This is an examination proceeding that is to proceed like original examination, not an adjudicatory proceeding. [00:21:28] Speaker 00: So the board correctly found that obtaining in this particular instance means obtaining the claim through a re-examination as an examination proceeding that proceeds like an original examination. [00:21:41] Speaker 00: not simply confirming the claims. [00:21:43] Speaker 00: Or obtaining confirmation, in other words, is obtaining, because you're doing it in a re-exam context. [00:21:49] Speaker 02: If this were a case in which the, well, I guess it is a case in which we have to decide what the board means by the term obtaining. [00:21:58] Speaker 02: Normally, I would have expected to see a citation to Chevron, or Auer, or Kaiser, or a citation maybe to Cuozzo, other than for the [00:22:08] Speaker 02: the reasons that you cited it, which don't have anything to do with deference. [00:22:13] Speaker 02: But there is a whisper in your brief about deference to the agency. [00:22:20] Speaker 02: And I found that quite odd. [00:22:23] Speaker 02: Are you running away from Chevron and Aller? [00:22:26] Speaker 02: Why weren't those cases cited to us? [00:22:28] Speaker 00: No, Your Honor. [00:22:29] Speaker 00: So I think we did. [00:22:29] Speaker 00: I think we did. [00:22:31] Speaker 00: You have one word. [00:22:32] Speaker 00: I think we did. [00:22:33] Speaker 02: One sentence in which you talk fleetingly, and I think it's in the summative argument, [00:22:37] Speaker 02: And you use the word deference, but that is it. [00:22:41] Speaker 02: Are you pressing upon us deference in this case? [00:22:45] Speaker 00: Yes, Your Honor. [00:22:45] Speaker 00: Why isn't it in the brief? [00:22:47] Speaker 00: So Your Honor, you're correct that we do refer to it. [00:22:50] Speaker 00: We probably don't explain it in as much detail as we could have. [00:22:54] Speaker 00: No detail at all. [00:22:55] Speaker 00: The Patent Office, of course, has submitted its own brief and explaining its own. [00:23:01] Speaker 00: In which it doesn't cite any of those cases either. [00:23:03] Speaker 00: And Your Honor, absolutely. [00:23:05] Speaker 00: This sounds like a conspiracy of science. [00:23:07] Speaker 00: It is not, Your Honor. [00:23:09] Speaker 00: I will say, I think we are certainly pressing deference when it comes to the Patent Office's ability to issue its own rules. [00:23:17] Speaker 02: The question is what to make of the word obtaining. [00:23:20] Speaker 02: And that question, 10 years ago, this case would have been crawling with citations to our saying that the agency gets to tell us what the word means. [00:23:31] Speaker 02: What the word means is not confining to getting from in the first instance the patent. [00:23:37] Speaker 02: But now, silence. [00:23:40] Speaker 02: Your Honor, I think, number one, I think you don't need to. [00:23:44] Speaker 02: Is it because you anticipate that any day now we'll get an opinion from the Supreme Court saying that Chevron is no longer viable, and you didn't want to put yourselves in the position of having to face that? [00:23:54] Speaker 00: That's not the reason, Your Honor. [00:23:56] Speaker 00: I mean, whether or not that happens or not, we will all wait and see what happens in the Supreme Court. [00:24:01] Speaker 00: In this particular case, the reason that we don't have to rely heavily on deference when it comes to interpretation of obtaining is because I don't think it matters to the outcome of the interpretation of 4273. [00:24:12] Speaker 00: Because, number one, obtaining has to mean obtaining, in the context of an examination, claims, which an interparties re-exam is, [00:24:23] Speaker 00: And two, it's part of the including clause. [00:24:26] Speaker 00: So we have the first part of that regulation, which is you can't take action. [00:24:30] Speaker 02: It's a very odd construction to say, including x, but also, inferentially, including things that are not x. In this context, that strikes me as it would be a very strange way to write the regulation. [00:24:50] Speaker 02: And maybe it's barely plausible, but it certainly isn't obvious. [00:24:54] Speaker 00: Your Honor, I respectfully disagree with that. [00:24:56] Speaker 00: And the reason is because including is meant to suggest that that's an example that's not limiting, that that's not limiting the scope. [00:25:03] Speaker 00: The primary thrust of this regulation, because we have to go back to what the purpose of 316 is, is to govern the interaction between proceedings before the board. [00:25:13] Speaker 00: And as the board said in its decision, consistent with the desire to [00:25:19] Speaker 00: process these proceedings as efficiently as possible and consistent with the public notice function from having an IPR result and having the public be able to rely on that, it makes sense that you would say a patent owner or an applicant cannot do something that's inconsistent with an adverse judgment in another proceeding before the board, which is what this rule says. [00:25:40] Speaker 00: And they give an example, and they say it includes the obtaining, which we think covers the circumstance. [00:25:46] Speaker 02: Let me ask you another question. [00:25:48] Speaker 02: As to the scope of the authority that Congress has given the agency to promulgate regulations, I agree with you that 316A4 is the appropriate statute. [00:26:00] Speaker 02: Question is, how much discretion have they given the agency? [00:26:05] Speaker 02: The agency presumably could not simply say that principles of obviousness don't apply to proceedings that follow an IPR decision. [00:26:17] Speaker 02: Or presumably, you would agree with me that they couldn't say, well, if there's an IPR decision with respect to one patent, then all related patents in any further proceedings before the agency will be governed by a rule requiring the patentee to meet a burden of proof of showing validity. [00:26:37] Speaker 02: You would agree that those wouldn't be valid applications of the authority that [00:26:42] Speaker 02: Agencies who get them right? [00:26:44] Speaker 00: Yes, your honor. [00:26:45] Speaker 02: I think I certainly am not suggesting that there's unfettered so why is the difference between why is the difference and we have to all agree there is a difference between patently distinct and Initially obvious There's a difference between the two why is that different something that the agency can bridge with a regulation? [00:27:09] Speaker 02: since it does change the circumstances in which patentability would be decided. [00:27:14] Speaker 00: So Your Honor, what it's doing is it's governing the interaction between the two proceedings. [00:27:18] Speaker 02: But that would be true of my example as well. [00:27:20] Speaker 02: I would be saying in the second proceeding, after an IPR in which you lose, then any further proceeding with related patents, you bear the burden of proof, Mr. Patent D. But you agree that they couldn't do that. [00:27:35] Speaker 00: Actually, now that you're saying it again, I'd want to think about whether they could do that or not. [00:27:38] Speaker 00: What I agree with is they certainly don't have unvetered access to just issue any rule they want that governs the proceeding. [00:27:43] Speaker 02: So why is this OK and my hypothetical rule not OK? [00:27:47] Speaker 00: The reason this is OK is what they are doing is they're saying, once you have had a procedural ability to deal with the challenge to your claim and your claims have been found unpatentable, once you've had an ability to deal with that in one proceeding, [00:28:02] Speaker 00: We're not going to let you come back and get a second bite at the apple in another proceeding. [00:28:07] Speaker 00: And that is governing. [00:28:08] Speaker 02: What is the bite at the apple? [00:28:10] Speaker 02: How big a bite are you prohibited from taking? [00:28:14] Speaker 00: The bite at the apple is the patentable indistinction between the claims, which is to say, if you have one claim, and it's been adjudicated, and you had your day before the board, you do not get to come back and say, on another claim that is not patentably distinct, [00:28:28] Speaker 00: I want to do over. [00:28:29] Speaker 00: And that makes good sense because the purpose of these regulations is to allow for, again, as the board found, the process at the Patent Office to be efficient. [00:28:40] Speaker 00: They cannot be in a situation in which people can just come back over and over and over again on claims that are not patentably indistinct. [00:28:47] Speaker 00: and say, well, forget this IPR, which already found all of this, all of this to be unpatentable. [00:28:53] Speaker 00: I now have a claim that's not patently indistinct, but I'm going to go through the process again. [00:28:58] Speaker 00: The board found rightly. [00:29:00] Speaker 03: So the element of penalty indistinct does not exist in the common law principle of estoppel, right? [00:29:06] Speaker 00: So I think the language would be different in the common law collateral estoppel circumstance. [00:29:12] Speaker 03: So what you've done is you've taken [00:29:15] Speaker 03: the common law principle of estoppel and created a hybrid of sorts. [00:29:20] Speaker 00: I wouldn't agree with that characterization, Your Honor. [00:29:22] Speaker 00: What I would say is this. [00:29:24] Speaker 00: In common law collateral estoppel, you're- Well, you've changed it. [00:29:28] Speaker 03: You've added to it. [00:29:30] Speaker 00: Again, I wouldn't quite agree with that, and here's why. [00:29:33] Speaker 00: The reason I wouldn't agree with that is this. [00:29:34] Speaker 03: Well, the common law concept of estoppel doesn't have the patently [00:29:39] Speaker 03: distinct requirement. [00:29:42] Speaker 03: You've added it for these purposes. [00:29:45] Speaker 00: It does require that there be a material difference. [00:29:47] Speaker 03: Why isn't that a substantive rule? [00:29:50] Speaker 03: You're looking to knock out a claim, someone who has acquired a right and a patent, and you've given yourself the ability to deny that. [00:30:05] Speaker 03: Why shouldn't I look at that as being a substantive change or a substantive rule as opposed to a procedural rule that I think we all agree that you're entitled to do, but I don't think we've agreed that you're entitled to undertake substantive legal changes. [00:30:22] Speaker 00: Two responses to that, Your Honor. [00:30:23] Speaker 00: First is under common law collateral estoppel, you still have to look to see whether or not there's a materially different question of patentability that's come up. [00:30:31] Speaker 00: So the words patentably indistinct may not appear in exactly that form in common law collateral estoppel. [00:30:37] Speaker 00: But the fundamental question about whether or not you've considered [00:30:41] Speaker 00: the issue of invalidity, or you have to consider a new issue of invalidity, is at the core of common law collateral estoppel. [00:30:49] Speaker 00: Second, with respect to your question on whether or not this is procedural or substantive, I would say two things. [00:30:55] Speaker 00: One is, collateral estoppel, this court has found, is a procedural question, not a substantive question. [00:31:01] Speaker 00: But two, under 316A4, you don't need to reach that. [00:31:05] Speaker 00: Because we would agree with you that if you were looking at section two, [00:31:09] Speaker 00: and the authority under Section 2, there might be a question about whether this is procedural or substantive and whether that matters. [00:31:15] Speaker 00: But under 316A4, which we submit is more than sufficient authority for the board to have promulgated this rule, you don't need to worry about whether it's procedural or substantive, even though collateral estoppel under the common law would be procedural. [00:31:29] Speaker 00: And this is really fundamentally no different from that. [00:31:31] Speaker 02: But to follow up on Judge Raina's question, if I understood your first answer to Judge Raina, you were saying that this patently distinct is no different from the rule that would apply into collateral supplement of conventional common law sets. [00:31:46] Speaker 02: It's really no difference. [00:31:48] Speaker 00: What I said was that the core question is the same. [00:31:50] Speaker 00: I would agree that there are differences in the factors. [00:31:55] Speaker 02: You could get different results. [00:31:57] Speaker 02: You have to acknowledge that. [00:31:59] Speaker 00: There could be circumstances. [00:32:00] Speaker 00: Absolutely, there could be circumstances. [00:32:02] Speaker 00: So it's a different rule. [00:32:03] Speaker 00: It is a different. [00:32:05] Speaker 00: The factors that go into considering the rule and the outcome [00:32:09] Speaker 00: may be different. [00:32:10] Speaker 00: That's right. [00:32:11] Speaker 00: The underlying impetus is the same, which is to make sure that people can't have multiple bites at the apple. [00:32:18] Speaker 00: But we don't disagree that there are different rules with different factors. [00:32:21] Speaker 05: Thank you, counsel, for your argument. [00:32:23] Speaker 05: Thank you. [00:32:24] Speaker 05: Let's hear from the Patent Office. [00:32:35] Speaker 01: Good morning, and may it please the court? [00:32:37] Speaker 01: Judge Bryson, to start off with your question on deference. [00:32:41] Speaker 05: I think we're giving her six minutes. [00:32:45] Speaker 01: We believe that the board's decision is correct, and it is the best reading of the statute. [00:32:49] Speaker 01: But we are comfortable foregoing a request for deference here, primarily because we don't think we can reasonably ask for that in light of the fact that this is a non-precedential board decision. [00:33:01] Speaker 03: You're foregoing our giving you deference? [00:33:06] Speaker 03: Can you say that again? [00:33:09] Speaker 03: What is it that you're foregoing? [00:33:11] Speaker 01: We are not asking for deference. [00:33:14] Speaker 01: This is an ordinary board decision. [00:33:17] Speaker 01: Under Kaiser versus Wilkie, he doesn't necessarily have the ability for deference. [00:33:22] Speaker 02: I understand. [00:33:22] Speaker 02: And none of these board decisions, I take it, that stand for the proposition that previous board decisions were precedential. [00:33:31] Speaker 02: I take it. [00:33:31] Speaker 01: That's correct. [00:33:32] Speaker 02: OK. [00:33:33] Speaker 02: And the office has not otherwise announced a construction of this regulation? [00:33:41] Speaker 01: Not yet. [00:33:42] Speaker 01: This regulation doesn't get applied very often. [00:33:44] Speaker 01: All right. [00:33:47] Speaker 01: Thank you. [00:33:47] Speaker 01: With regards to your other question about what the scope of the agency's authority is here, we think that's best determined by just looking at the 316A4 and the language in 316A4. [00:33:58] Speaker 01: To the extent that you have provided two hypos, whether it's changing the conditions of patentability, we don't think it's doing that. [00:34:06] Speaker 01: But to the extent that it is a little less procedural and a bit more substantive. [00:34:12] Speaker 02: But you would agree that it can result in a different outcome in a particular case than the traditional obviousness analysis, right? [00:34:24] Speaker 01: It's possible, yes. [00:34:25] Speaker 01: I think it's possible. [00:34:26] Speaker 02: So that sounds like a difference in patentability. [00:34:30] Speaker 01: I would disagree with that. [00:34:32] Speaker 01: I mean, it is still a 103 analysis, and IPR is instituted. [00:34:36] Speaker 02: Yeah, but a different form of it. [00:34:38] Speaker 02: It's 103 prime. [00:34:39] Speaker 02: And 103 prime, as you've just admitted, can result in different results from 103. [00:34:45] Speaker 02: If that's so, then it seems to me it's difficult to argue that it isn't [00:34:50] Speaker 02: a condition of patentability where you have an alternative version of the patentability rule. [00:34:57] Speaker 01: So I'd like to step back from that for just one step back. [00:35:00] Speaker 01: I think what we are saying is that, yes, the question that you had asked previously is whether it would result in a different outcome than common law collateral estoppel. [00:35:10] Speaker 01: I think, yes, there might be instances where it would come out differently under common law collateral estoppel. [00:35:16] Speaker 01: But it is still, I mean, 103 analysis. [00:35:19] Speaker 02: And it is still, you know, it- But 103 directed at a patent that was not part of the prior art, as opposed to 103 directed at something that isn't a prior art. [00:35:31] Speaker 01: But that's exactly what common law collateral stubble does. [00:35:33] Speaker 02: It compares to- But only under certain circumstances, some of which are not needed under the regulation to be applied. [00:35:40] Speaker 01: Well, those circumstances are already sort of the other factors that are almost already built in to our rule, right? [00:35:47] Speaker 01: Our rule only applies- Almost. [00:35:49] Speaker 01: It comes very close. [00:35:51] Speaker 02: Right. [00:35:51] Speaker 02: But you still acknowledge that it can produce different results. [00:35:57] Speaker 01: I think in very rare instances, it can result in a different outcome. [00:36:01] Speaker 01: But I don't think that's necessarily a substantive difference. [00:36:03] Speaker 02: Do you think common lateral stopper would be applicable here, in this case? [00:36:07] Speaker 01: Under the facts of this case? [00:36:09] Speaker 01: Under the facts of this case. [00:36:13] Speaker 01: Yes, I think so, because the patent owner didn't necessarily make some of the arguments with respect to common law collateral estoppel that it could have made. [00:36:26] Speaker 01: What the patent owner, this entire case, is built around a collateral attack on the claim construction in a prior proceeding. [00:36:33] Speaker 01: That is the patent owners. [00:36:35] Speaker 01: That is Sotheo's primary argument. [00:36:37] Speaker 01: We don't think that changes. [00:36:39] Speaker 01: whether it's common law collateral estoppel or we're doing it under our patently distinct standard. [00:36:45] Speaker 01: Perhaps if they had made certain arguments below about some of the elements of common law collateral estoppel, maybe we would have a different case. [00:36:53] Speaker 01: But they didn't necessarily raise those arguments below. [00:36:58] Speaker 01: We think this is a common sense rule. [00:37:00] Speaker 01: It simply prevents a patent owner from recapturing claims that they lost after a final adjudication. [00:37:07] Speaker 01: That makes a lot of sense. [00:37:09] Speaker 03: So Counselor, 316A4 gives the PTO authority to promulgate regulations, but when do you agree not substantive rules? [00:37:20] Speaker 01: I disagree with that, Your Honor. [00:37:21] Speaker 03: You disagree with that? [00:37:23] Speaker 01: Yes. [00:37:23] Speaker 01: I think close though is very clear. [00:37:25] Speaker 03: The agency has authority to promulgate. [00:37:28] Speaker 03: Can you change our precedent? [00:37:32] Speaker 01: That precedent is specific to section 2B2. [00:37:36] Speaker 01: The Supreme Court in Cuozo was very clear that when you look at the four corners of the AIA. [00:37:42] Speaker 03: Can you rely on this statutory provision? [00:37:45] Speaker 03: Can you pass any regulation that challenges our precedent? [00:37:51] Speaker 01: That challenge? [00:37:51] Speaker 01: I'm sorry? [00:37:51] Speaker 03: That challenges our precedent? [00:37:56] Speaker 01: I think what Cuozo said was, regardless of what this court's precedent says about Section 2B2, [00:38:03] Speaker 01: 316A4 is different. [00:38:06] Speaker 01: The language in 316A4 is different. [00:38:09] Speaker 01: The authority there is very broad, and it encompasses something more than just procedural rules. [00:38:15] Speaker 01: And what Quozo said is, [00:38:17] Speaker 01: This framework of trying to figure out whether a rule is procedural or substantive in deciding whether or not the agency has a rule. [00:38:23] Speaker 03: If we were to find that your interpretation or reliance on collateral estoppel in this particular case is a substantive rule, you're saying that's still OK under the statutory provision. [00:38:40] Speaker 01: I'm saying that this rule is a procedural rule. [00:38:44] Speaker 01: We think it's a procedural rule, because all it does is it prevents an applicant from making inconsistent. [00:38:50] Speaker 03: I thought I heard you arguing all ago that it's a little bit substantial. [00:38:54] Speaker 01: I think so. [00:38:54] Speaker 01: I mean, I think to the extent. [00:38:57] Speaker 03: How much, 30%? [00:38:59] Speaker 01: I think to the extent that it requires the patent applicant to do a little bit more work. [00:39:07] Speaker 01: Maybe it's a little bit more substantive, but I don't think it makes it a substantive rule. [00:39:13] Speaker 01: That was my point. [00:39:17] Speaker 05: Do you have a closing thought? [00:39:20] Speaker 01: We think this rule is a common sense rule. [00:39:22] Speaker 01: It's consistent with the statute, and its application to inter-party re-examinations is consistent both with the rule and with the authorizing statute. [00:39:31] Speaker 01: The authorizing statute is not limited to examination proceedings. [00:39:34] Speaker 01: It says all other proceedings at the agency. [00:39:38] Speaker 01: And the regulation is also broadly worded. [00:39:41] Speaker 01: Even if you don't agree with us on the obtain language, the language is not limited to that because of the including language. [00:39:48] Speaker 05: Thank you, counsel. [00:39:49] Speaker 01: Thank you. [00:39:50] Speaker 05: Mr. Burnett has some rebuttal time. [00:39:56] Speaker 04: First, I'd like to begin with footnote six, which I was actually going to raise before you guys raised it. [00:40:04] Speaker 04: So this talks about supplementing the examiner's finding, has to lay out design limitations via a new ground of rejection based on findings asked to Zaurus. [00:40:16] Speaker 04: Zaurus isn't a patent Zaurus as it was a manual for a PDA from Japan. [00:40:22] Speaker 04: by way of issue of collusion. [00:40:25] Speaker 04: Now, they've already identified that issue of collusion or collateral estoppel does not apply. [00:40:30] Speaker 04: It's not present. [00:40:31] Speaker 04: But this would be bringing a new ground based on art that wasn't even soft. [00:40:37] Speaker 04: You had no chance to argue. [00:40:40] Speaker 04: There's rules in inter-party re-exams where the petitioner can [00:40:46] Speaker 04: add a new reference. [00:40:47] Speaker 04: They did not do this. [00:40:49] Speaker 04: And I want to also distinguish inter-party re-examination from ex-party re-examination and then from just plain ex-party examination. [00:41:03] Speaker 04: And this is a quote from SYNCOR. [00:41:06] Speaker 04: The participation of the requester to provide both argument and evidence distinguishes the examinational nature of the inter-parties re-exam [00:41:14] Speaker 04: from the initial examination process or ex parte re-examination. [00:41:19] Speaker 04: Even if this process is not formally adversarial in the manner of interim parties review, it provides adequate adversarial participation for both the patent owner and requester, facilitating a reasoned judgment on the issue before a neutral fact finder. [00:41:35] Speaker 04: I also would like to address the comment concerning the 322 claims. [00:41:42] Speaker 04: Let's say that this court finds that an application of this rule is OK, and they can use claims that are not badly distinct, even under the new claim construction. [00:41:54] Speaker 04: Sofew argued that there are many claims, including claims for real-time [00:42:00] Speaker 04: zooming, capped to zooming, billions of pages of preserves that are patently distinct over the claims that were canceled. [00:42:08] Speaker 04: And then finally, with respect to collateral estoppel, the director argues that this wasn't presented by soft view. [00:42:18] Speaker 04: We have 12 pages beginning on page 19 of the blue brief that explain why common lot of collateral estoppel doesn't apply. [00:42:28] Speaker 04: So we went in, Sofie went in great detail explaining why it's not present under Inray Freeman, all four prongs of Inray. [00:42:38] Speaker 04: None of those are present, as argued by Sofie. [00:42:42] Speaker 04: Is there any other questions you have? [00:42:45] Speaker 05: Thank you, counsel. [00:42:46] Speaker 05: We'll take the case to the submission.