[00:00:00] Speaker 01:
We have three argued cases this morning.

[00:00:02] Speaker 01:
The first is number 22, 2220, Zael Communications Corp versus UNAM Reinforced Innovations.

[00:00:13] Speaker 01:
Mr. Petricks, is that how you pronounce it?

[00:00:17] Speaker 01:
Yes, sir.

[00:00:36] Speaker 03:
Good morning, Your Honors.

[00:00:37] Speaker 03:
I'm Jonathan Dietrich for Eisele Communications.

[00:00:40] Speaker 03:
May it please the Court?

[00:00:43] Speaker 03:
Much of the Board's analysis in its final written decision is well-reasoned and supported by the record.

[00:00:48] Speaker 03:
But there are two issues where the Board got it wrong.

[00:00:52] Speaker 03:
First, its determination regarding claim A that there was no motivation to combine.

[00:00:56] Speaker 03:
And second, its grant of UNM's motion to amend, which considered new argument on reply.

[00:01:01] Speaker 03:
I intend to spend the bulk of my main argument time on those two issues.

[00:01:08] Speaker 03:
I'll start with claim eight.

[00:01:10] Speaker 03:
And I'd first like to point out that claim eight has largely overlapping scope with claim one, which the board determined to be unpatentable.

[00:01:19] Speaker 03:
That is perhaps easiest to see by looking at the table on page 2035 of the joint appendix, which shows the language of claims one and eight side by side.

[00:01:28] Speaker 03:
Specifically, we see that the preamble and elements A, B, D, and E are the same.

[00:01:35] Speaker 03:
The board found that the primary reference talent bar discloses each of those elements, and UNM has not contested those.

[00:01:43] Speaker 04:
Can I ask a question?

[00:01:43] Speaker 04:
Let's assume, hypothetically, that we would agree with you on claim eight.

[00:01:48] Speaker 04:
Does that have any impact on the motion to amend?

[00:01:51] Speaker 04:
Because when I look at the amended claim, it seems to do nothing more than combine claim one and claim eight.

[00:02:01] Speaker 03:
Yes, Your Honor.

[00:02:03] Speaker 04:
There's no argument made that I could discern that you were saying that a reversal on claim eight would impact the analysis of the motion to amend.

[00:02:15] Speaker 03:
That's right.

[00:02:15] Speaker 03:
We haven't made that argument.

[00:02:17] Speaker 03:
In the motion to amend analysis, we applied the Lee secondary reference.

[00:02:22] Speaker 03:
instead of Nystrom, whereas the petition now has it.

[00:02:25] Speaker 04:
Is there a reason that you care to explain?

[00:02:28] Speaker 04:
I mean, is it your view that this pilot, the denser pilot symbols, which are claim eight, aren't they a significant portion of the amended claim?

[00:02:39] Speaker 03:
Yes, Your Honor, and we felt that was also disclosed in

[00:02:44] Speaker 03:
And given the board's prior determinations on Nystrom, we went in a different direction.

[00:02:48] Speaker 01:
I think the context of the question, if I understand it correctly, is let's assume that you lose on the amendment question, that they were either entitled in the reply or elsewhere.

[00:03:04] Speaker 01:
to address the original claim elements that they didn't address in the first motion of relief to amend, and that we say that the board was correct for one reason or another in allowing them to proceed with the amendment.

[00:03:23] Speaker 01:
I think the question is, under those circumstances, and then hypothetically that we agree with you on claim eight, where do we stand on the merits of claim 44?

[00:03:33] Speaker 03:
In that circumstance, we also believe the board got it wrong on the merits and neglecting the relevant disclosures of Lee that we relied on.

[00:03:50] Speaker 04:
But you never relied on Nystrom on the motion to amend.

[00:03:55] Speaker 04:
That's right.

[00:03:56] Speaker 04:
And while the motion to amend was pending, you didn't know how it claimed it was going to turn out at that point, right?

[00:04:02] Speaker 01:
That's right, Your Honor.

[00:04:04] Speaker 01:
What was the board's theory as to the patentability of Claim 44?

[00:04:11] Speaker 03:
You know, Your Honor, it's difficult to determine.

[00:04:19] Speaker 03:
In our view, the board clearly got it wrong when you look at Lee's disclosure of shorter symbol periods and

[00:04:32] Speaker 03:
in view of the showing that was made that that would lead to different densities.

[00:04:48] Speaker 04:
Yes.

[00:04:50] Speaker 03:
There's no dispute that Nystrom discloses different densities in time.

[00:04:54] Speaker 04:
OK.

[00:04:55] Speaker 04:
But you don't think Nystrom had an effect on the motion?

[00:04:58] Speaker 04:
We do.

[00:05:00] Speaker 03:
Your Honor, I also respectfully submit that the substitute claims are also obvious over Taladar and Nystrom.

[00:05:09] Speaker 03:
But did you ever argue that?

[00:05:10] Speaker 03:
No, we didn't.

[00:05:12] Speaker 03:
We haven't limited pages.

[00:05:13] Speaker 03:
That's a problem.

[00:05:14] Speaker 03:
Right.

[00:05:15] Speaker 03:
But if I may turn back to claim A,

[00:05:19] Speaker 04:
Well, why don't we turn to the motion to amend?

[00:05:24] Speaker 04:
The PTO, I mean, sometimes it intervenes and sometimes it doesn't in the claim in these cases.

[00:05:30] Speaker 04:
Early on, it was intervening when there was sort of a substantive rule or regulation or something was at stake.

[00:05:38] Speaker 04:
Was there any, is there any contact between the parties in terms of PTO intervening in these cases, which implicate their rules, a series of rules, a series of precedential and non-precedential previous opinions?

[00:05:51] Speaker 04:
Nice to get their view on all this regulatory stuff, right?

[00:05:54] Speaker 03:
Right.

[00:05:55] Speaker 03:
And I believe, Your Honor, the relevant precedent is the

[00:06:00] Speaker 03:
the board's presidential opinion in Electrosonics, which requires the written description support.

[00:06:05] Speaker 02:
But that predates the pilot program, doesn't it?

[00:06:08] Speaker 02:
It does.

[00:06:09] Speaker 02:
And so how do we know what they think of the presidential Electrosonics in light of everything that's happened since then with the pilot program?

[00:06:18] Speaker 03:
Yes, Your Honor.

[00:06:19] Speaker 03:
So nothing in the pilot program notice suggests an intent to overrule Electrosonics.

[00:06:25] Speaker 03:
And

[00:06:26] Speaker 03:
The relevant rule here is rule 4223b, which prohibits the arguments on reply, stating that a reply may only respond to arguments in the corresponding opposition.

[00:06:39] Speaker 04:
Well, isn't 4223b dealing with IPRs and petitions?

[00:06:43] Speaker 04:
And to me, that's a kind of different regime, dealing with statutory provisions and requirements.

[00:06:48] Speaker 03:
It is applicable to IPR petitions.

[00:06:50] Speaker 03:
But on its face, it applies to motions

[00:06:55] Speaker 03:
a petition is a motion.

[00:06:57] Speaker 03:
So a motion, such as a motion to amend, falls under that rule.

[00:07:02] Speaker 03:
And we also see in the pilot program notice is consistent with that.

[00:07:06] Speaker 03:
Specifically, if the pilot program notice envisions a choice following the preliminary guidance, either the patent owner files a revised motion to amend.

[00:07:20] Speaker 01:
Why wasn't the board wrong in refusing to allow them to file a revised motion for leave to amend?

[00:07:27] Speaker 03:
Because patent owner directed its revised motion to amend to the identical proposed substitute claims, which is essentially a do-over.

[00:07:36] Speaker 03:
That's not what the pilot program notice permits.

[00:07:39] Speaker 01:
Well, I'm not sure that that's correct.

[00:07:44] Speaker 01:
They argue in the red brief that the pilot program does permit that.

[00:07:55] Speaker 03:
So reading the pilot program notice.

[00:08:08] Speaker 01:
Why does it make sense to require that the amendment present amended claim when it can be addressing other matters that are recognized to be relevant, that is deficiencies that the

[00:08:24] Speaker 01:
pilot program decision identified in the motion relating perhaps to claim elements that were present before.

[00:08:37] Speaker 03:
Yes, Your Honor.

[00:08:38] Speaker 03:
So on page 9, 499 of the notice, it's unmistakable that the revised, so I'll quote, a revised motion to amend includes one or more

[00:08:54] Speaker 03:
new proposed substitute claims in place of previously presented substitute claims.

[00:09:01] Speaker 01:
I don't think that leaves any... Because I said it must include.

[00:09:04] Speaker 01:
Well... Why does that make sense?

[00:09:10] Speaker 01:
Why would you require that the revised motion include a revised substitute claim?

[00:09:17] Speaker 03:
Well, the pilot program addresses that, Your Honor, in stating that

[00:09:24] Speaker 03:
The purpose of the revised motion to amend is to address the issues in the preliminary guidance or the petitioner's opposition.

[00:09:33] Speaker 03:
For example, if the claims were rendered obvious, the patent owner would have a chance to propose narrower claim scope to overcome the prior art.

[00:09:41] Speaker 03:
It's not intended as a complete do-over.

[00:09:44] Speaker 03:
for failing two times.

[00:09:46] Speaker 04:
Maybe I'm misunderstanding.

[00:09:48] Speaker 04:
I read the pilot program regulation, and tell me if you disagree, that it allows for either an amended motion or new evidence in a reply.

[00:10:03] Speaker 04:
Here, there was new evidence in the reply, and that is the issue.

[00:10:07] Speaker 04:
As I read the reg, it allows for that.

[00:10:12] Speaker 04:
Yes, Your Honor.

[00:10:13] Speaker 04:
So are you saying that the rig is invalid?

[00:10:15] Speaker 03:
No, Your Honor.

[00:10:16] Speaker 03:
I'm saying that new evidence, just as it is in the petition context, refers to rebuttal evidence.

[00:10:24] Speaker 03:
So it goes to the distinction between new argument, which the pilot program notice explicitly states is permitted in a revised motion to amend, versus new evidence.

[00:10:35] Speaker 03:
In other words, like a petitioner's reply declaration is new evidence, but it's limited to rebutting

[00:10:41] Speaker 03:
the patent owners' response in the same way.

[00:10:43] Speaker 04:
The new evidence... I mean, what we're talking about here is adding stuff covering written description of all the claim elements.

[00:10:51] Speaker 04:
And you're saying that the contours of the reply under the regs is not broad enough by allowing new evidence to include what you would call, I guess, arguments?

[00:11:04] Speaker 03:
That's right, Your Honor.

[00:11:05] Speaker 03:
The rules consistently distinguish between new argument and new evidence.

[00:11:11] Speaker 03:
New evidence simply refers to rebuttal evidence.

[00:11:14] Speaker 04:
Okay, well that's one side of it.

[00:11:16] Speaker 04:
The other argument, I don't even know if your friend makes it, is that even if you're right about that under cases like Nike, I mean the board here issued its preliminary guidance and essentially it did your job for you, or it did their job for them by talking about the written description of the claims.

[00:11:34] Speaker 04:
Is the board not free when something is obvious in the record and exists to come up with its own stuff, even assuming that you couldn't do it in reply?

[00:11:45] Speaker 03:
The problem, Your Honor, is that that guidance comes after the petitioner's opposition to the motion to amend.

[00:11:54] Speaker 03:
That's the only procedural point in which the petitioner

[00:11:59] Speaker 03:
is able to submit expert evidence.

[00:12:02] Speaker 04:
I get that point.

[00:12:04] Speaker 04:
I take your point.

[00:12:05] Speaker 04:
And that's a point that we've alluded to in a lot of our cases.

[00:12:10] Speaker 04:
It's kind of an APA, VLG respond.

[00:12:12] Speaker 04:
But I think we've also got cases like Belvin and Axomics, whatever it's called, that say, did you file a motion to be able to expand your surreply under the circumstances here?

[00:12:28] Speaker 03:
In the context of the briefing on the revised motion to amend, we made it clear to the board that we were being prejudiced by not having the ability to file expert evidence in support of our opposition.

[00:12:45] Speaker 04:
And did you ask to submit?

[00:12:48] Speaker 04:
Did you file a motion?

[00:12:49] Speaker 04:
I mean, there are plenty of motions flying around in these IPRs, including, if you want

[00:12:54] Speaker 04:
Transcend the rules or under the circumstances saying we need further we need to write further evidence.

[00:13:00] Speaker 04:
We've got cases where we say Yeah, the boy if you ask for it the board should have given it But you didn't officially ask an emotion or otherwise to be able to expand the contours of your certify Did you not in the form of a motion your honor and if you did ask?

[00:13:17] Speaker 04:
Did you say, hey, under these circumstances, we feel like we should permit some stuff?

[00:13:21] Speaker 04:
And the board said no?

[00:13:23] Speaker 03:
Well, we pointed out the prejudice we were suffering by not having a chance to view the written description argument and have a full opposition to respond to it.

[00:13:33] Speaker 04:
And did the board say anything?

[00:13:35] Speaker 04:
Did it say too bad?

[00:13:36] Speaker 03:
The board said, you get a certify.

[00:13:38] Speaker 03:
And under the rules for a certify, we're not able to submit any evidence.

[00:13:42] Speaker 04:
Do you have a record site for that?

[00:13:46] Speaker 04:
No, Your Honor.

[00:13:47] Speaker 04:
Well, maybe on reply you can give us a record site to that discussion.

[00:13:51] Speaker 02:
Did you or do you in front of us contend that there's not adequate written description for all of the elements of the amended claims?

[00:13:59] Speaker 03:
So first, I would contend that the procedural argument alone is sufficient.

[00:14:05] Speaker 03:
And we see that in intelligent biases.

[00:14:07] Speaker 02:
I understand that argument.

[00:14:08] Speaker 03:
But if we get past that.

[00:14:10] Speaker 03:
Right.

[00:14:11] Speaker 03:
So we relied only on the procedural argument in the record below.

[00:14:15] Speaker 03:
I would submit, though, that Letrosonics requires showing support for the claims as a whole.

[00:14:20] Speaker 03:
And I would submit that even though UNM submitted support for individual claim limitations, they did not meet their burden to show the claims as an integrated whole.

[00:14:39] Speaker 01:
If you're relying solely on your procedural argument and you're not saying that you had anything more to say of substance, how are you prejudiced?

[00:14:49] Speaker 01:
Well, because we didn't have a chance to submit.

[00:14:51] Speaker 01:
Yeah, but what is it that you'd want to say?

[00:14:54] Speaker 03:
I mean, the record below isn't sufficient to support that.

[00:15:05] Speaker 04:
Well, you could say, I mean, your surreply is limited.

[00:15:11] Speaker 04:
But how would, if you had been able to submit whatever you could in the surreply, did you have argument, declarations, or whatever to establish the insufficiency of the written description for the amended claim?

[00:15:25] Speaker 03:
We didn't even get that far, Your Honor.

[00:15:27] Speaker 04:
It's a yes and no question.

[00:15:33] Speaker 04:
I mean, we're in the midst of litigation.

[00:15:34] Speaker 04:
I know you didn't get that fire to do it, but you must have.

[00:15:37] Speaker 04:
You don't file motions, be like, wow, we want to do this and not know what it is you want to do.

[00:15:44] Speaker 04:
So what would you have done?

[00:15:51] Speaker 03:
That's a good question, Your Honor.

[00:15:53] Speaker 03:
I would just like to point out the final written decision criticized

[00:16:01] Speaker 03:
for making argument, attorney arguments that said, oh, you don't have an expert site for that.

[00:16:07] Speaker 03:
So we know that we can't make technical arguments, especially in a body subject matter as complex as these underlying patents without expert evidence.

[00:16:19] Speaker 01:
So help me understand the procedure here.

[00:16:24] Speaker 01:
They filed a revised motion for relief to amend, correct?

[00:16:29] Speaker 01:
Correct.

[00:16:29] Speaker 01:
And then did you file an opposition to that?

[00:16:33] Speaker 01:
We did.

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

[00:16:34] Speaker 01:
So there was an opportunity to make the points that you wanted to make about the other claim limitations.

[00:16:41] Speaker 01:
What did you say in the opposition?

[00:16:43] Speaker 03:
We pointed out that under the board's precedent, it was a deficient revised motion to amend, um, because it was directed to the same substance.

[00:16:53] Speaker 01:
What's the substance?

[00:16:54] Speaker 01:
There was an opportunity.

[00:16:56] Speaker 01:
We can look at the opposition to the revised motion for leave to amend to see what your arguments were as to why the amended claims were insufficient.

[00:17:07] Speaker 01:
What did you say in the opposition as a substantive matter as to what was wrong with the claims, and particularly with respect to the pre-existing claim limitations?

[00:17:18] Speaker 01:
We again relied on the procedural argument, Your Honor.

[00:17:22] Speaker 02:
You did not point out any substantive deficiencies in response to the revised motion to amend, correct?

[00:17:29] Speaker 03:
Correct.

[00:17:30] Speaker 02:
It was a non-compliant revised motion to amend, and so we... So you've had no point at the board or here pointed to any substantive deficiencies with the revised, with the substitute claims?

[00:17:43] Speaker 03:
In the paper that it was expunged, that's correct, Your Honor.

[00:17:50] Speaker 01:
Okay, let me take a minute.

[00:17:55] Speaker 01:
All right.

[00:17:56] Speaker 01:
We'll give you three minutes to address the cross appeal.

[00:18:01] Speaker 01:
Okay?

[00:18:01] Speaker 01:
Thank you.

[00:18:09] Speaker 00:
Okay, let's see.

[00:18:10] Speaker 00:
Mr. Kessin?

[00:18:12] Speaker 00:
Good morning, Your Honors.

[00:18:15] Speaker 00:
May it please the Court?

[00:18:17] Speaker 00:
Jake Asen for the appellee, University of New Mexico, Rainforest Innovations.

[00:18:25] Speaker 00:
I want to address the points made by the appellant.

[00:18:31] Speaker 01:
Can we start with, let's assume that either you should have been allowed to file a revised motion for leave to amend or that allowing the reply was proper, okay?

[00:18:42] Speaker 01:
Okay.

[00:18:42] Speaker 01:
And that there's no procedural problem here, hypothetically.

[00:18:46] Speaker 01:
Where do we stand on claim 44 if we hypothetically were to find that claim 8 was unpatentable?

[00:18:56] Speaker 01:
Does that require reopening the issue as to the patentability of claim 44?

[00:19:02] Speaker 00:
Your Honor, the board looked carefully at claim 44.

[00:19:08] Speaker 00:
and found that it was patentable over the combination of Talib Dar and Lee.

[00:19:18] Speaker 00:
the board pointed out carefully to figure seven of Lee, and said, look at the two frames, it shows the same number of pilot symbols.

[00:19:27] Speaker 00:
It shows seven pilot symbols in both, and it also shows for the time t, there's two pilot symbols.

[00:19:32] Speaker 00:
There is simply no denser pilot symbols at all in Lee.

[00:19:36] Speaker 04:
And figure seven.

[00:19:38] Speaker 04:
Let me ask you a hypothetical.

[00:19:40] Speaker 04:
What if the board had said claim eight is unpatentable under Nystrom?

[00:19:48] Speaker 04:
What then would relevance would that have?

[00:19:51] Speaker 04:
Don't you think it would have relevance to the amendment?

[00:19:54] Speaker 04:
Because it seems when you put together claim eight and claim one, that is amended claim 44, full stop.

[00:20:03] Speaker 04:
So don't you think there's a relationship between the board having found that eight is patent eligible as opposed to unpatentable?

[00:20:12] Speaker 04:
And didn't that necessarily affect

[00:20:15] Speaker 04:
their analysis of the motion to amend.

[00:20:19] Speaker 00:
Yes, your honor, and that is correct.

[00:20:22] Speaker 00:
And the board did find that claim eight in the institution decision itself looked at Nystrom paragraphs for, it looked at paragraphs 29, 37, 42, and 43, and those are the paragraphs that were relied on by the petitioner and appellant to try to argue that Nystrom teaches denser pilot symbols.

[00:20:47] Speaker 00:
But Nystrom does not teach.

[00:20:49] Speaker 04:
But let's just take my hypothetical that we disagree with what the board said and we think Nystrom does teach pilot symbols.

[00:20:58] Speaker 04:
In other words, claim eight is not, is unpacked.

[00:21:03] Speaker 04:
take that as a given.

[00:21:04] Speaker 04:
What does that do to the motion to amend?

[00:21:07] Speaker 00:
What it basically does is if we assume that claim eight is not patentable, we're still left with the issue of whether claim one by itself is

[00:21:19] Speaker 00:
not patentable over Talegdar and Lee, which is the original argument, which is the focus of our cross-appeal.

[00:21:24] Speaker 00:
Okay.

[00:21:25] Speaker 04:
Well, let's assume for purposes of my hypothetical that we don't accept the cross-appeal.

[00:21:31] Speaker 04:
So will we come out at the end of the day as claims one through eight are not eligible, are not patentable.

[00:21:38] Speaker 04:
Where does that leave the motion to amend?

[00:21:42] Speaker 00:
Your honor, the only way that you would, assuming in your hypothetical that claim eight is not patentable, the only way you would then be able to argue that claim 44 is not patentable is with the combination of Talib Darli and Nystrom.

[00:22:00] Speaker 00:
And that combination, that argument was never made.

[00:22:04] Speaker 01:
But I'm not sure that's entirely true, because if I recall our cases, we've held that if a similar claim

[00:22:13] Speaker 01:
is held unpatentable, and here the hypothetical that we're talking about, Claim 8, that that has a bearing on the patentability of a similar claim that has not been yet addressed.

[00:22:26] Speaker 01:
So in other words, it's a sort of a collateral estoppel argument, and wouldn't that be the case here that if Claim 8 failed that that would have implications for Claim 44 because of the similarity of the two?

[00:22:39] Speaker 01:
So Claim 44 has three key... What's the answer to that?

[00:22:45] Speaker 01:
If Claim 8 is unpatentable, doesn't that itself have implications for the patentability of Claim 44, given the similarities?

[00:22:54] Speaker 00:
It does have implications, your honor, but that is correct.

[00:22:59] Speaker 00:
The point, however, I want to bring to the attention of the court is that Claim 44 has three key limitations.

[00:23:06] Speaker 00:
It has high mobility section, meaning high mobility users, reduced symbol period, and denser pilot symbols.

[00:23:15] Speaker 00:
And in order to find all these three key limitations in Claim 44,

[00:23:20] Speaker 00:
you would have to combine Talibdar, Leah, and Nystrom under the hypothetical that was posed to me.

[00:23:26] Speaker 00:
And that combination was never analyzed and never asserted by the appellant.

[00:23:32] Speaker 01:
And there's good reasons why ... Well, that's true if you're addressing Claim 44 in isolation.

[00:23:38] Speaker 01:
But what I'm suggesting to you, and I thought you just agreed with me that if Claim 8 falls, that that has a bearing on the patentability of Claim 44.

[00:23:47] Speaker 01:
In other words, if we were to hold

[00:23:49] Speaker 01:
the claim eight falls as well as claim one, then we have to send this back to the board to have them consider that issue.

[00:23:58] Speaker 00:
If this court were to find that original claim eight is unpatentable,

[00:24:09] Speaker 00:
over Talegdar and Nystrom, that being the hypothetical, then yes, it would have implications for the patentability of claim 44 because of the denser pilot limitation.

[00:24:20] Speaker 00:
However, in this record, Your Honor, three times the board looked at Talegdar and Nystrom.

[00:24:26] Speaker 00:
We looked at the institution decision, looked in the preliminary guidance, and in the final written decision.

[00:24:31] Speaker 00:
All three times the

[00:24:33] Speaker 00:
The board found that claim eight was patentable.

[00:24:39] Speaker 02:
Where my colleagues are, if we were hypothetically to reach the issue of we have reversed on claim eight, so now one through eight are invalid, where does that leave us?

[00:24:54] Speaker 02:
Do we remand for the board to reevaluate the amended claims or do we not?

[00:25:01] Speaker 02:
And if we don't remand, why don't we remand?

[00:25:03] Speaker 00:
I would maintain that Claim 44, with the three key limitations that I pointed out earlier, would not be found in a... But that has not been analyzed, correct?

[00:25:17] Speaker 00:
That was not urged by the appellant, and that three reference combination was not on the record.

[00:25:26] Speaker 04:
On that point though, do you disagree that our case law, I think it's Nike, but I mean that we say even if a party didn't raise that particular combination, the board would still not be required necessarily.

[00:25:39] Speaker 04:
I don't think we're saying they're required, but they're allowed if stuff is evident on the record.

[00:25:45] Speaker 04:
These references were all in the record in front of the board, that the board is at least allowed

[00:25:51] Speaker 04:
to consider that suespante.

[00:25:54] Speaker 04:
So that's the question.

[00:25:57] Speaker 04:
Isn't that a basis for remanding, at least to determine whether or not the board, assuming things go as we've suggested, hypothetically they will, in claiming claims one through eight are not patentable?

[00:26:11] Speaker 04:
Shouldn't the board have an opportunity, at least, to exercise whatever discretion it may have to consider these references with regard to the amended claim, notwithstanding that your friend, for whatever reason, didn't present those?

[00:26:27] Speaker 00:
Yes, I agree that this court has recognized that the board can look at the totality of the record.

[00:26:35] Speaker 00:
can look at all the references and that is correct.

[00:26:39] Speaker 00:
I do want to mention here that even the one argument with respect to Kalugdar and Nystrom that a new argument was made by petitioner in their reply, by the appellant in their reply.

[00:26:52] Speaker 00:
They cited and made a new obviousness argument which the board initially said this is waived because you're raising it for the first time in their reply.

[00:27:01] Speaker 00:
But then they

[00:27:03] Speaker 04:
Are you talking about the amendment process?

[00:27:05] Speaker 00:
I'm just wondering.

[00:27:06] Speaker 00:
No, no.

[00:27:06] Speaker 00:
I'm only talking about claim A, a claim A, and they relied on a new paragraph three to make a new argument in their reply.

[00:27:17] Speaker 00:
And under Intelligent Biosis versus Illumina,

[00:27:21] Speaker 00:
decision of this court, the board said that obviousness argument has been made.

[00:27:26] Speaker 00:
Nevertheless, I just want to point out the care that the board gave in this case.

[00:27:31] Speaker 00:
Using a belt and suspenders type of approach, they said, nevertheless, we will look at Nice from paragraph three.

[00:27:37] Speaker 00:
And we don't find that it teaches claimant.

[00:27:42] Speaker 00:
In other words, the board, even though it recognized it was waiver, still went past that and nevertheless looked at Nystrom Paragraph 3.

[00:27:51] Speaker 00:
So I would urge that the board here was really quite careful.

[00:27:55] Speaker 04:
Can I ask you another question, just moving on to the motion to amend?

[00:27:59] Speaker 04:
Because we've got the regulations, we've got all these cases, some of which go different ways, and we don't have even the board here or the patent office here to try to give us some explication about what their position is.

[00:28:10] Speaker 04:
But do you need these regulations?

[00:28:15] Speaker 04:
The board does this preliminary, what is it called, preliminary guidance.

[00:28:19] Speaker 04:
What options did you have then?

[00:28:22] Speaker 04:
You're supposed to, probably the easiest and clearest option is to file a revised motion to amend.

[00:28:28] Speaker 04:
In the absence of a motion to amend, you're allowed to put on only new evidence.

[00:28:36] Speaker 04:
So no new arguments, but only new evidence.

[00:28:40] Speaker 04:
I mean, do the words in your view allow you to make this new written description argument in the reply under the rubric of new evidence, even though you didn't move to amend your motion?

[00:28:55] Speaker 00:
So here's one, actually.

[00:28:58] Speaker 00:
To first answer the regulation question, the motion to amend pilot program notice 9501 clearly states that in a reply you can respond to the board's preliminary guidance and you can respond to the petitioner's opposition.

[00:29:16] Speaker 00:
And the decision of AutoFixMed versus Pine Holdings is another PTAP decision that said the same thing.

[00:29:25] Speaker 04:
Well, kind of, except the problem I'm having, and as I said, I've mentioned the absence of the PTO here a few times, is that we've got OrthoFix and we've got a case that went exactly the other way.

[00:29:37] Speaker 04:
Lippert or Lippert?

[00:29:38] Speaker 04:
And in orthophics, it seems like part of the rationale is the petitioner never even objected to any of this stuff.

[00:29:44] Speaker 04:
So am I correct that we don't know really what the board thought in orthophics because the arguments were never made to it, right?

[00:29:52] Speaker 04:
So what are we supposed to do with that competing, contradictory precedent coming under the board?

[00:29:58] Speaker 00:
Your Honor, in this case, we were faced with the same predicament.

[00:30:01] Speaker 00:
So what we did in this case was we filed a revised motion to amend.

[00:30:07] Speaker 00:
Even though we did not revise the claim, we filed a revised motion to amend, and the board said, you are not presenting new claims?

[00:30:19] Speaker 00:
So we are going to expunge the revised motion to amend, and we simply want you to file the same thing as a reply.

[00:30:26] Speaker 01:
OK, so is that an error in rejecting the revised motion to amend?

[00:30:31] Speaker 00:
It's an interpretation of the rules, where they basically have a lot of discretion on these kind of procedural matters.

[00:30:38] Speaker 00:
That's what this court has ruled in cases like MediTox versus Galderma, which is decided now.

[00:30:44] Speaker 01:
to answer my question.

[00:30:45] Speaker 01:
Was it error to reject the revised motion or wasn't it?

[00:30:50] Speaker 00:
We understand the reasoning that since we did not amend the claim, we didn't produce a new claim.

[00:30:58] Speaker 00:
That was the line that the board was trying saying, you're not

[00:31:02] Speaker 00:
presenting new claims.

[00:31:04] Speaker 00:
So therefore, this properly belongs in a reply.

[00:31:07] Speaker 01:
And in the reply, you're allowed... So what's the answer to my question?

[00:31:11] Speaker 01:
Is it fair or not?

[00:31:13] Speaker 00:
I don't believe it was an error because the rule says you can use the reply to respond to the preliminary guidance.

[00:31:21] Speaker 00:
And in the preliminary guidance, the board found the same sections that you're citing

[00:31:26] Speaker 00:
for the new amended language, that same section shows written description support for the original language.

[00:31:33] Speaker 00:
So we don't think there's any problem here.

[00:31:35] Speaker 00:
This is just a matter of form over substance.

[00:31:39] Speaker 00:
The substance of written description is solid, and the specific columns and lines you cite to support the whole thing.

[00:31:45] Speaker 02:
What about your friend's contention that he was prejudiced because

[00:31:49] Speaker 02:
He never had a chance to gather expert testimony to respond to the new written description support you pointed out in the reply.

[00:31:59] Speaker 00:
Well, in our original motion to amend, we point specifically to paragraphs in the patent in columns

[00:32:12] Speaker 00:
five, seven, and nine, which shows support for the whole claim.

[00:32:17] Speaker 00:
In their opposition to the motion to amend, they never raised any issue of written description in terms of the substance.

[00:32:25] Speaker 00:
The board looked at it in the preliminary guidance and also said that there was support right here.

[00:32:30] Speaker 01:
In addition, because... So are you arguing that they weren't prejudiced if there was an error?

[00:32:37] Speaker 00:
I don't believe there was any prejudice because the citations were the same.

[00:32:41] Speaker 00:
The citations were right there, the written description support was shown, and it was not challenged.

[00:32:47] Speaker 00:
In addition, Your Honor, the board expanded

[00:32:52] Speaker 00:
the number of pages for the syrup line in this case and said we're going to give you the full 25 pages instead of the 12 pages and we're going to give you the full 25 pages as though you're responding to a revised motion so that you're not in any way prejudiced.

[00:33:08] Speaker 00:
Where's that in the record?

[00:33:12] Speaker 00:
We will provide the site for you, Your Honor, but the sole reply was clearly expanded to 25 pages in this case by the board.

[00:33:24] Speaker 04:
Can I go back to this rule?

[00:33:26] Speaker 04:
I mean, arguably, we've called upon, in our opinion, to distill what the rule is, what you can put in your reply in response to the preliminary guidance.

[00:33:39] Speaker 04:
And you've confirmed, I think, that we've got one word decision that says no.

[00:33:46] Speaker 04:
And another that says, yes, you can, but it was never contested by the petitioner.

[00:33:52] Speaker 04:
And now we've got this case relying on the case that there was no contest.

[00:34:00] Speaker 04:
So the expectation is we're supposed to come up with a rule that the board's supposed to follow in the absence of any more guidance from what

[00:34:12] Speaker 04:
from the board on this?

[00:34:14] Speaker 00:
It seems to me, Your Honor, in this case, the board is trying to draw a bright line.

[00:34:19] Speaker 00:
The board is saying, here's the bright line.

[00:34:21] Speaker 00:
You file your motion to amend.

[00:34:24] Speaker 00:
And if you want to amend the claim again, then you file a revised motion to amend.

[00:34:30] Speaker 00:
Otherwise, you go down the reply path.

[00:34:33] Speaker 04:
Okay.

[00:34:34] Speaker 04:
Can I ask you just one question about what happened here?

[00:34:37] Speaker 04:
You got a little more from the board.

[00:34:39] Speaker 04:
In the preliminary guidance, they didn't just say, hey, you guys blew it and you didn't talk about all of the elements in the claim and written description.

[00:34:47] Speaker 04:
They kind of laid it out for you.

[00:34:50] Speaker 04:
Does that make a difference here in this case?

[00:34:53] Speaker 00:
I think it made a difference.

[00:34:55] Speaker 00:
It may have made a difference in this case in the sense that the board was, you only showed support for the new language, like you do in traditional prosecution.

[00:35:03] Speaker 00:
But you didn't show the support for the original language.

[00:35:07] Speaker 00:
But we see that where you pointed, it's right there.

[00:35:10] Speaker 00:
So go ahead and fix it.

[00:35:14] Speaker 00:
This is an oversight.

[00:35:15] Speaker 00:
We get it.

[00:35:17] Speaker 00:
That may have prompted them to go down the path of show this in the reply because it clearly was right there.

[00:35:25] Speaker 04:
Maybe there's no rule and it just depends.

[00:35:28] Speaker 04:
I mean, do you think we should discern, distill from the board's non-precedential precedent here that essentially the board can do what it wants?

[00:35:38] Speaker 04:
And we should allow them to do that.

[00:35:41] Speaker 04:
So here when they thought it was evident on its face, and they told you that in the preliminary guidance, you get more leeway in the reply that you might otherwise have?

[00:35:52] Speaker 04:
I mean, you say the board did a bright wide rule.

[00:35:54] Speaker 04:
I see anything but bright wide rules coming from all of this precedent here.

[00:35:59] Speaker 00:
Yeah, I was just talking about in this case, I understand, Your Honor, but in this case, because we didn't revise the claims, they said, hey, you can't file a revised motion to amend.

[00:36:08] Speaker 00:
This court has always held that the board has discretion over procedural matters such as this.

[00:36:18] Speaker 00:
It seems to me that there might be situations in the future where perhaps it might make sense to file a revised motion to amend even if you don't

[00:36:31] Speaker 00:
amend the claims, but we were not sure.

[00:36:33] Speaker 00:
So that's why, with an abundance of caution, we filed a revised motion to amend, because we weren't sure.

[00:36:39] Speaker 04:
And then the board told us, well, here... Yeah, but that's off the table, because the board rejected that, and you have failed that, and I don't think it would be an abuse of discretion for them to have rejected that.

[00:36:48] Speaker 04:
So that's gone.

[00:36:50] Speaker ?:
Right.

[00:36:50] Speaker 04:
Keep going.

[00:36:52] Speaker 00:
I mean, we have the same dilemma that you're, because we weren't sure about, hey, now this is, of course, two years ago, this was in early 2022, where the Motion to Amend program was even newer at that stage.

[00:37:07] Speaker 00:
So we ourselves have that same question.

[00:37:12] Speaker 00:
I suspect that this is a situation where the

[00:37:19] Speaker 00:
In the board's eyes, this was merely an oversight because the support was so clear.

[00:37:27] Speaker 00:
The written description issue was really a non-issue.

[00:37:30] Speaker 01:
So it might have reached a different decision in another case where it wasn't so clear.

[00:37:36] Speaker 00:
Indeed.

[00:37:37] Speaker 00:
In fact, in other cases,

[00:37:38] Speaker 00:
such as Lippert versus Day, the court found that you provided these written description support, but these are unused string citations and we can't figure this out.

[00:37:52] Speaker 00:
In the preliminary guidance, they rejected written description.

[00:37:57] Speaker 00:
In our case, they did not.

[00:38:00] Speaker 01:
Unless my colleagues have further questions on the motion for leave to amend, we'll give you a couple of minutes to argue about claim eight in the cross-appeal, because we've occupied most of your time.

[00:38:12] Speaker 00:
Yeah.

[00:38:12] Speaker 00:
I just want to mention a couple of points in the cross-appeal.

[00:38:16] Speaker 00:
Should I wait until later or do it now?

[00:38:18] Speaker 00:
Well, go ahead.

[00:38:21] Speaker 00:
The original claims one through four, six and seven, which were found

[00:38:28] Speaker 00:
to be obvious over Talibdar and Lee, this is a clear example of using the 096 patent itself.

[00:38:39] Speaker 00:
to try and arrange pieces of the prior art.

[00:38:43] Speaker 00:
Because if Talibdar shows a two sub-frame, two communication system, a legacy and new, and it's a system approach, and Lee here talks, he looks at a legacy system, 802.16e system, with fast-moving and slow-moving users.

[00:39:00] Speaker 00:
So here's the system approach of Talibdar, here's the user approach of Lee, and if you put them together, then you simply do not get

[00:39:09] Speaker 00:
claim one of the 096PAP.

[00:39:12] Speaker 00:
When we've gone through in our briefing all the permutations and combinations, it's only when you look at claim one and you say, aha, now I'm going to, in the new communication piece, I'm going to take the high mobility users of Lee and I'm going to put it in there, and then I'm going to use the reduced symbol period that Lee teaches, but I'm not going to apply it anywhere else.

[00:39:34] Speaker 00:
So it's cherry picking.

[00:39:38] Speaker 00:
the pieces and arranging them after reading the 096 pattern is a perfect example of hindsight reconstruction that cases like Inrei Gorman, et cetera, have repeatedly cautioned against.

[00:39:49] Speaker 00:
It's the kind of obviousness analysis that the board did where basically, in normal circumstances,

[00:39:58] Speaker 00:
inventive processes, if you put Taladar and Lee together, first of all, we don't think you could even put those two together because the system and user approach that I mentioned, but even if you did, there's no way to arrive at these claims.

[00:40:11] Speaker 00:
I also want to mention one more point.

[00:40:15] Speaker 00:
Do you have a question?

[00:40:19] Speaker 00:
We're dealing with a very troubling situation here with respect to appellants expert, Dr. Roy.

[00:40:26] Speaker 00:
Dr. Roy

[00:40:28] Speaker 00:
misrepresented under oath that this was his report, and it was not.

[00:40:33] Speaker 00:
It was a word-for-word copy of Dr. Ackle.

[00:40:37] Speaker 00:
In fact, Your Honors, in 30 years of practice, I have never seen a situation like this, where literally the person had copied word-for-word.

[00:40:46] Speaker 00:
The only changes made was for C, that FOSA.

[00:40:49] Speaker 00:
And he misrepresented his role and what he did.

[00:40:53] Speaker 00:
And the next day after the deposition, we told the board that we're going to file a motion to the very next day.

[00:41:01] Speaker 00:
And then we filed it later, but the board basically said, when you

[00:41:08] Speaker 00:
told us about that.

[00:41:09] Speaker 00:
You didn't say that you're going to move to exclude.

[00:41:11] Speaker 00:
You simply said you're going to file a paper to oppose that testimony.

[00:41:16] Speaker 00:
And so they basically essentially said, even if we look at this, this is a matter that goes to weight and not admissibility.

[00:41:26] Speaker 00:
And we think it's so egregious that it's really a matter of a threshold issue of admissibility and not weight.

[00:41:35] Speaker 01:
Thank you.

[00:41:37] Speaker 01:
So let's see.

[00:41:39] Speaker 04:
A site.

[00:41:40] Speaker 01:
Yeah.

[00:41:41] Speaker 01:
You're going to have, we'll give you two minutes for your rebuttal on the cross appeals so you can provide us with a site when you do that.

[00:41:49] Speaker 01:
And okay, Mr. Dietrich, let's give you four minutes here, okay?

[00:41:55] Speaker 03:
Thank you, Your Honor.

[00:42:00] Speaker 03:
I'd like to first talk about claim A

[00:42:05] Speaker 03:
And if their honors were to find claim aid to be unpatentable, I would respectfully submit that at the very least, remand would be appropriate to allow the board to consider that full combination.

[00:42:18] Speaker 03:
All three of the references, Tallott, Darley, and Nystrom, they're all about OFDM systems.

[00:42:26] Speaker 03:
They're all about the 802.16 standards.

[00:42:28] Speaker 03:
They're all about movement.

[00:42:30] Speaker 03:
especially Lee and Nystrom in those standards, so there's no question that they're analogous art.

[00:42:38] Speaker 03:
I'd also respectfully submit that the reasons for combining Taladar with both Lee and Nystrom are already set forth in the present record.

[00:42:46] Speaker 03:
Specifically, the board determined that Taladar disclosed a hybrid frame structure

[00:42:52] Speaker 03:
comprising subframes that supported both slower moving 802.16e subframes and faster moving 802.16m subframes.

[00:43:06] Speaker 03:
and Lee and Nystrom both relate.

[00:43:09] Speaker 04:
Let me just be clear, though.

[00:43:10] Speaker 04:
On this record, you didn't ask for that in this appeal.

[00:43:14] Speaker 04:
And below, you never raised Nystrom as a relevant prior art for the amended claim.

[00:43:21] Speaker 04:
That's right.

[00:43:21] Speaker 04:
But you think that we can forego all of that arguable forfeiture on what basis?

[00:43:33] Speaker 03:
Just admitting, Your Honor, that it would be appropriate if Klamate was found unpatentable to remand for further determinations on the combination.

[00:43:44] Speaker 04:
But do you agree that on remand, it's up to the board as to whether or not they want to consider Nystrom, since it's part of the record, even though you didn't raise it?

[00:43:55] Speaker 04:
That may be the case, Your Honor.

[00:43:58] Speaker 03:
I respectfully am not sure.

[00:44:01] Speaker 01:
But they certainly have to consider the collateral estoppel effect of the invalidation of claim A. Yes, Your Honor.

[00:44:08] Speaker 02:
But again, on the forfeiture, it seems like you forfeited this argument both at the Board and here on appeal.

[00:44:14] Speaker 02:
So why should we look the other way?

[00:44:19] Speaker 03:
Well, I mean, the record does support, at least in the petition, the unpatentability in view of Nystrom.

[00:44:28] Speaker 03:
And the reasons for not making those arguments in the motion to amend were based on the board's erroneous conclusions.

[00:44:37] Speaker 03:
But point taken, Your Honor.

[00:44:39] Speaker 04:
Can I ask you, I don't think that's correct, right?

[00:44:42] Speaker 04:
I mean, I don't know what the time frame is.

[00:44:44] Speaker 04:
You know better than I. But by the time you were submitting your opposition to the motion to amend, the board hadn't ruled against you on claim eight.

[00:44:55] Speaker 04:
Or am I wrong about that?

[00:44:57] Speaker 04:
It had on the institution decision.

[00:44:59] Speaker 04:
OK.

[00:44:59] Speaker 03:
OK.

[00:45:05] Speaker 03:
And I'd also like to turn, address your honor's questions regarding the record.

[00:45:12] Speaker 03:
I believe there were some questions regarding petitioners' opposition to the revised motion to amend.

[00:45:18] Speaker 03:
I don't have a joint appendix, unfortunately.

[00:45:20] Speaker 03:
I just don't think that's in the record.

[00:45:24] Speaker 03:
There is the board's order.

[00:45:27] Speaker 03:
portions of the board's order expunging.

[00:45:30] Speaker 03:
That's appendix page 1080, which addresses the page limits of the server play, but not the evidentiary question of submitting expert evidence.

[00:45:43] Speaker 04:
So it's in the record.

[00:45:44] Speaker 04:
You just didn't put it in the appendix?

[00:45:47] Speaker 04:
Or you don't think it's in the record at all?

[00:45:50] Speaker 04:
Ah, the former.

[00:45:53] Speaker 03:
And just briefly on Dr. Roy.

[00:46:00] Speaker 03:
At his deposition, Dr. Roy testified that he based his declaration on Dr. Ackles and that his edits to the technical substance were minimal.

[00:46:10] Speaker 03:
That was upfront in the motion for joiner and the petition, which requires no new technical issues.

[00:46:18] Speaker 03:
I think the important point here is that Roy is eminently qualified.

[00:46:22] Speaker 03:
He fully defended all of the substance of his own opinions.

[00:46:27] Speaker 03:
And he simply agreed with the opinions of another expert.

[00:46:31] Speaker 03:
And nothing prohibits him from doing so.

[00:46:35] Speaker 03:
And if anything, the board is proper to consider that in the way accorded to his testimony.

[00:46:43] Speaker 03:
It's not an admissibility issue.

[00:46:46] Speaker 03:
OK.

[00:46:46] Speaker 03:
Thank you.

[00:46:47] Speaker 03:
I think we're out of time.

[00:46:48] Speaker 03:
Thank you.

[00:46:51] Speaker 01:
Mr. Kessin, do you have the site for us?

[00:46:54] Speaker 01:
Is it in the record?

[00:46:55] Speaker 00:
Yes, I do.

[00:46:58] Speaker 00:
The SOAR reply, the 25-page SOAR reply begins in APPX 1115.

[00:47:07] Speaker 00:
So we can see that the number of pages were expanded.

[00:47:12] Speaker 00:
Where is the SOAR reply?

[00:47:15] Speaker 01:
In addition... Where is the SOAR reply?

[00:47:17] Speaker 01:
I'm sorry.

[00:47:18] Speaker 01:
Where do you find the order giving them the 25 pages?

[00:47:21] Speaker 00:
The order expunging the revised motion to amend begins in APPX 1078, 1078, and in the phone, in the telephonic conference is where the

[00:47:39] Speaker 00:
the board said you can take more pages, and that's what they did.

[00:47:44] Speaker 01:
So what is that on the record?

[00:47:46] Speaker 00:
I am not sure if it was in the record or not, but the order expunging begins at 1078.

[00:47:53] Speaker 00:
I'm not sure about the 25 page.

[00:47:56] Speaker 00:
However, following that expunging, it's clear that something was said because instead of a normal 12 page surreply, a 25 page surreply was filed.

[00:48:07] Speaker 00:
by the appellant starting on APPS 1115.

[00:48:13] Speaker 00:
So they were given an opportunity to expand.

[00:48:16] Speaker 00:
A couple of related points, Your Honor.

[00:48:25] Speaker 00:
Dr. Roy,

[00:48:35] Speaker 00:
and provided excerpts in our briefing, did not say, as appellants are arguing now, that I read Dr. Ackle's report and I adopted it.

[00:48:47] Speaker 00:
That, of course, is not an unfamiliar situation.

[00:48:50] Speaker 00:
Instead of saying, well, I read his report and adopted it, instead, Dr. Ackle misrepresented what he did and his work and his contributions and tried to pass off the other report, which he didn't write,

[00:49:04] Speaker 00:
There was literally no changes, word for word, and tried to claim that it was his own.

[00:49:10] Speaker 00:
I think we're about out of time.

[00:49:12] Speaker 01:
Thank you, Your Honor.