[00:00:00] Speaker 03:
The next case is Roku versus the ITC, 2023-13-17.

[00:00:09] Speaker 03:
And when Mr. Richards is settled, we'll hear from Mr. Baker.

[00:00:13] Speaker 03:
This is basically claim 10, isn't it?

[00:00:20] Speaker 04:
That's part of it, Your Honor.

[00:00:22] Speaker 04:
But as we'll discuss, it also involves the issue of consideration of events occurring after the day of the complaint.

[00:00:29] Speaker 04:
So may it please the court?

[00:00:31] Speaker 04:
Good morning again, your honors.

[00:00:34] Speaker 04:
The key issue in this appeal is whether Roku can rely on additional events that occurred after the filing of the complaint to show that Roku satisfied the requirements for a domestic industry in the process of being established.

[00:00:48] Speaker 03:
What about the resolution of the first case, if we find against you on the Radio Shack as a reference,

[00:00:58] Speaker 03:
What does that do to this case?

[00:01:00] Speaker 04:
Well, I think there's two hurdles to overcome, Your Honor, before we would render this case moot.

[00:01:04] Speaker 04:
So the first issue is... For whom to overcome?

[00:01:07] Speaker 04:
for the other side, if we can prevail on either that RadioShack is not a prior art reference because it was not publicly accessible, or if we prevail on our arguments about Clean 10 that we did not talk about in the prior argument, namely that Clean 10 requires the steps of the iterating to be performed by a processor.

[00:01:31] Speaker 04:
If we prevail on either of those, then that would not render this case moot.

[00:01:36] Speaker 05:
But can you answer his precise question on if we find against you on the first appeal that was just argued in terms of the success of the RadioShack reference?

[00:01:45] Speaker 05:
Do we need to decide anything in this appeal with respect to claim 10?

[00:01:52] Speaker 04:
Yes, I think so, because just because RadioShack was a prior art reference does not resolve our arguments in the IPR about the validity of Claim 10.

[00:02:05] Speaker 04:
And the RadioShack reference was not at issue in the ITC procedure.

[00:02:08] Speaker 02:
You lose the first appeal.

[00:02:10] Speaker 02:
I'm sorry?

[00:02:11] Speaker 02:
You lose the first appeal.

[00:02:12] Speaker 02:
There's nothing left here, right?

[00:02:14] Speaker 04:
No, if we lose, we had additional arguments we did not talk about in the prior argument.

[00:02:19] Speaker 04:
about why claim 10 is, even if Radio Shack is prior art, it still does not satisfy claim 10.

[00:02:26] Speaker 02:
I don't understand.

[00:02:27] Speaker 02:
If we sustain the board's decision that claim 10 is unpatentable, this case is moot.

[00:02:33] Speaker 04:
That is true, that is true, yes.

[00:02:35] Speaker 04:
If you find that Radio Shack is prior art and you affirm their decision on claim 10, then that would render this appeal moot.

[00:02:42] Speaker 04:
I agree with that.

[00:02:44] Speaker 04:
I'm just saying that it's not just about RadioShack being prior art.

[00:02:48] Speaker 04:
There's also a substantive argument about why it doesn't need Claim 10 that we argued in our briefing for the IPR proceeding.

[00:02:55] Speaker 04:
Did that answer your question, Your Honor?

[00:02:57] Speaker ?:
Yes.

[00:02:57] Speaker ?:
OK.

[00:02:57] Speaker 04:
All right.

[00:02:59] Speaker 04:
So then I'd like to continue then to explain why the Commission's interpretation of the statute

[00:03:07] Speaker 04:
is improper.

[00:03:09] Speaker 04:
And they have interpreted this court's prior case law to hold that they are precluded from considering events occurring after the date of the complaint in determining whether there's a domestic industry in the process of being established.

[00:03:25] Speaker 04:
But that's based on a mistaken interpretation of this court's precedence.

[00:03:29] Speaker 04:
This court's decisions in Bali, Motiva, and Philip Morris did not set forth any type of general rule that precludes consideration of post-complaint evidence.

[00:03:40] Speaker 04:
Rather, each of those cases either limited their holdings to the particular facts of that case, or the statement regarding evaluating the evidence as of the date of the complaint were not necessary to the decision, and therefore were dicta.

[00:03:59] Speaker 04:
So I'd like to start with the text of the statute, because that is what- Maybe just in the interest of time, though.

[00:04:05] Speaker 05:
I thought there might be one part that we need to address here, and I thought that would be with respect to the 511 patent.

[00:04:12] Speaker 05:
So taking the hypothetical and of course assuming that the answer that you've already given to Judge Dyke in response to that is in effect, why don't you reorder your argument to start with anything you want to talk about with respect to the 511 patent?

[00:04:26] Speaker 04:
Well, Your Honor, the five-loving patent has expired, and the only issue is whether the court should vacate the decision.

[00:04:33] Speaker 04:
And so in our view, there's other issues that we think

[00:04:38] Speaker 04:
I'm happy to answer any questions about that.

[00:04:41] Speaker 04:
But we thought the briefing on that was pretty clear.

[00:04:42] Speaker 04:
We think the Federal Circuit's precedent is clear from the INVT case.

[00:04:47] Speaker 04:
And the ITC even agrees with us that it should be vacated.

[00:04:51] Speaker 04:
So I think the case was pretty clear.

[00:04:54] Speaker 04:
And so I was planning to focus on other issues.

[00:04:58] Speaker 04:
But if there's questions, I'm happy to answer them.

[00:05:01] Speaker 04:
But so I would like to focus on the two issues that we need to prevail on in order to be able to proceed in the ITC on the 875 patent, which is domestic industry and the validity of claim 10.

[00:05:15] Speaker 04:
And so with respect to domestic industry, I already explained that this court's prior cases on their facts did not reach this particular issue.

[00:05:25] Speaker 04:
It did not announce a general rule precluding consideration of post-complaint evidence.

[00:05:30] Speaker 04:
In particular, the statute, section 1337C, states that the commission shall determine whether or not there is a violation of this section.

[00:05:41] Speaker 04:
It doesn't say the commission should determine whether there was a violation of the section.

[00:05:46] Speaker 04:
And the use of the present tense there is significant because it indicates that in rendering a decision, the commission should consider all the evidence that's before it at the time it makes its decision.

[00:05:59] Speaker 04:
And in other words, it should consider all the evidence that's in the evidentiary record, even if that evidence concerns events after the date of the complaint.

[00:06:08] Speaker 04:
And it's also consistent with the legislative history, which makes clear that Congress's intent in enacting the statute was to make it easier

[00:06:16] Speaker 04:
for IP owners that are developing industry to be able to seek relief from the ITC.

[00:06:23] Speaker 04:
And precluding consideration of post-complaint evidence would make it harder for IP owners to protect their rights.

[00:06:30] Speaker 04:
And since domestic industry and the process of being established

[00:06:34] Speaker 04:
is an ongoing process, there's no indication that Congress intended to preclude consideration of post-complaint evidence.

[00:06:42] Speaker 03:
But there wasn't even a prototype of this remote control.

[00:06:48] Speaker 03:
So how could that satisfy even the development of the industry, much less the establishment of the industry?

[00:06:55] Speaker 04:
Well, the Commission has correctly held that an actual prototype or article, although that's required for a domestic industry,

[00:07:03] Speaker 04:
that's not required for a domestic industry in the process of being established.

[00:07:08] Speaker 04:
In other words, a complaint can show through other documents, specifications, and schematics, and computer code, and other things, how the product will operate.

[00:07:22] Speaker 04:
It doesn't require the existence of an actual article.

[00:07:25] Speaker 04:
And so that's the facts here.

[00:07:28] Speaker 04:
But fundamentally, it's a question of what the proper

[00:07:32] Speaker 04:
legal interpretation of the statute is and whether the statute precludes consideration of post-complaint evidence.

[00:07:40] Speaker 04:
If the court agrees with us that the statute does not preclude that, then the court should vacate and remand to the Commission to consider all the evidence in the record and to determine whether it met the standards that are required.

[00:07:56] Speaker 04:
So I'd also like to talk briefly about Claim 10.

[00:08:03] Speaker 04:
In this case, we have argued that the phrase, iterating via processor and the memory,

[00:08:11] Speaker 04:
through remote control code sets corresponding to a brand means that the remote automatically steps through the remote control code sets without the user having to repeatedly press a key to go through them.

[00:08:25] Speaker 04:
And that's based on how that term is used, how the phrase iterating is used throughout the specification.

[00:08:32] Speaker 04:
And in fact, it's used eight separate times in the spec

[00:08:36] Speaker 04:
to describe situations where the iterating is done by the remote.

[00:08:40] Speaker 04:
And that's the only examples in a specification.

[00:08:44] Speaker 04:
And so in our view, the specification has implicitly defined the phrase, the whole iterating phrase, to be referring to automatically progressing through the code sets and not to cover a user having to repeatedly press a button to proceed through them.

[00:09:00] Speaker 04:
And so that is a claim construction error that the board, sorry, the commission made.

[00:09:10] Speaker 04:
And in fact, in the on-bonds Phillips decision, this court held that claim terms should be construed in light of the specification and that the specification can define terms by implication.

[00:09:21] Speaker 04:
And that's exactly what we believe is going on here in the case of the 875 patent.

[00:09:28] Speaker 04:
With respect to obviousness, I'd like to touch on the issue of reasonable expectation of success.

[00:09:37] Speaker 04:
UEI never argued below that there was a reasonable expectation of success, even though that's one of the requirements for showing obviousness.

[00:09:45] Speaker 04:
Now, we acknowledge that there are federal circuit cases saying that a tribunal does not have to have an explicit finding in a decision or ruling from a tribunal explicitly saying that there was a reasonable expectation of success because there could be an implicit finding.

[00:10:05] Speaker 04:
But this case is different because UEI never made an argument about reasonable expectation of success.

[00:10:13] Speaker 04:
And therefore, the board, sorry, the commission, rather, could not have made an implicit finding when UEI did not even argue that.

[00:10:21] Speaker 04:
And moreover, the commission's rules provide that failing to make an argument waives that argument.

[00:10:28] Speaker 04:
So the commission could not have made a finding where UEI had not argued for reasonable expectation of success.

[00:10:43] Speaker 04:
Additionally, with respect to the motivation to combine, as we explained in our briefing, the board's finding lacked substantial evidence because it was based on conclusory expert opinion and was based on features that were not even claimed in the 875 patent.

[00:11:00] Speaker 04:
In particular, UEI's experts said that it would be easier to have the remote proceed through the codes automatically.

[00:11:10] Speaker 04:
But he provided no explanation for why it was allegedly easier.

[00:11:13] Speaker 04:
And he failed to discuss any considerations that would have actually made it harder.

[00:11:18] Speaker 04:
So in our view, that's a clear example of conclusory expert testimony that, based on this court's precedent, cannot constitute

[00:11:26] Speaker 04:
substantial evidence when it's purely conclusory.

[00:11:29] Speaker 04:
Additionally, he relied on the auto-scan feature, which is a feature where you test all of the codes in a remote across all the brands to argue that the large number of key presses would cause repetitive stress injury.

[00:11:43] Speaker 04:
But the claims here do not cover the auto-scan feature.

[00:11:47] Speaker 04:
It covers the brand search feature.

[00:11:49] Speaker 04:
And so his testimony about a motivation based on auto-scan is irrelevant to the claims that are at issue here.

[00:11:57] Speaker 04:
So unless the court has further questions for me, I'll save my remaining time for rebuttal.

[00:12:02] Speaker 03:
We will hold it for you.

[00:12:03] Speaker 04:
Thank you.

[00:12:06] Speaker 03:
Mr. Richards for the commission.

[00:12:18] Speaker 03:
And you're going to take nine minutes.

[00:12:20] Speaker 01:
Yes, Your Honor.

[00:12:25] Speaker 01:
May it please the court, I'd like to start out just by orienting where these cases stand together and make sure there's clarity on that.

[00:12:32] Speaker 01:
It is precisely as your honor suggested, if this court finds that the PTAP correctly found claim 10 invalid, all of the 875 patent issues that are in this appeal will become moot.

[00:12:46] Speaker 01:
At that point, all that would be left for the court is this 511 vacatur issue.

[00:12:50] Speaker 01:
The court would need to decide what to do with that.

[00:12:53] Speaker 01:
In the commission's view, the court's precedents in IMVT and Kyosung are squarely on point here.

[00:12:58] Speaker 01:
We're not aware of any reason to depart from them.

[00:13:01] Speaker 01:
Under IMVT and Kyosung, vacatur is the appropriate thing to do in an ITC investigation when a patent expires during the pendency of the appeal.

[00:13:10] Speaker 01:
I'll note, to the extent it's helpful for the court dealing with the arguments that are before it,

[00:13:14] Speaker 01:
It's actually INVT, and you can find it on page 1370 of the INVT opinion.

[00:13:21] Speaker 01:
It deals expressly with the Microsoft and PowerTech opinions that are kind of the key subject of the intervener's argument against Bakoter.

[00:13:31] Speaker 01:
But again, we see no principled reason to depart from what the court did in selling an INVT here.

[00:13:36] Speaker 01:
If the court does need to get into the 875 patent issues, it's all right with the court.

[00:13:42] Speaker 01:
I'll go through them in the same order my friend did just now.

[00:13:45] Speaker 01:
So we'll start with the domestic industry.

[00:13:49] Speaker 01:
I guess I would disagree that there's a key point here, and it's just domestic industry.

[00:13:53] Speaker 01:
There are three independent bases to affirm the commission's no-violation finding here.

[00:13:59] Speaker 01:
Domestic industry is one of them, but then there are the two invalidity grounds for the 875 patent as well.

[00:14:06] Speaker 01:
If the court affirms any one of those three, it would be sufficient to dispose of all the 875 issues.

[00:14:12] Speaker 01:
It should affirm the determination on domestic industry

[00:14:15] Speaker 01:
because the commission did precisely what this court has told it to do in Motiva and in Phillips.

[00:14:22] Speaker 01:
I understand the assertion I heard from my friend is that those cases really aren't as on point as the commission has represented they are, but I thought it would be helpful to read what this court said just in 2023.

[00:14:34] Speaker 01:
From Philip Morris in footnote four, it said, the filing date of the complaint is the quote, relevant date at which to determine if the domestic industry requirement is satisfied.

[00:14:49] Speaker 01:
And it cites to Motiva for that proposition.

[00:14:51] Speaker 01:
To the extent there's any question about sort of is there wiggle room left, I'll note for the court, Motiva was also a case about a domestic industry in the process of being established.

[00:15:01] Speaker 02:
Is this relevant date issue coming up in other ITC proceedings, or is this unique?

[00:15:08] Speaker 01:
As far as I know, this is unique.

[00:15:10] Speaker 01:
As I stand here before you, I'm not aware of any other case where we're dealing with this right now.

[00:15:15] Speaker 01:
Obviously, it just came up in Philip Morris.

[00:15:17] Speaker 01:
I don't think it was the highlighting issue there.

[00:15:20] Speaker 01:
But this isn't an issue I can represent to you that I see in every appeal or anything like that.

[00:15:34] Speaker 01:
I'll note, I think there's also a disagreement here on the statutory language.

[00:15:39] Speaker 01:
I don't think it supports the interpretation that my friend is arguing for.

[00:15:43] Speaker 01:
I believe we noted in our brief, if you take just the present tense of the words in the statute, then the conclusion has to follow that even for domestic industries that exist, not just domestic industries in the process of being established, then those also should be judged at the close of the evidentiary record.

[00:16:01] Speaker 01:
But if we accept that as the right reading, then really Philip Morris and Motiva mean nothing at all then.

[00:16:07] Speaker 01:
It struggles to when they would ever be relevant under that kind of reading.

[00:16:12] Speaker 01:
So to the legislative history, we highlighted this in our brief.

[00:16:16] Speaker 01:
But the two things I wanted to note for the court specifically that I think are most helpful, and you'll see there are two reports.

[00:16:24] Speaker 01:
There's a House report and a Senate report.

[00:16:25] Speaker 01:
They are effectively identical in content here.

[00:16:28] Speaker 01:
So you can look to either one.

[00:16:30] Speaker 01:
But when the Congress was talking about this or in the process of being established language, it was talking about what someone has to do to, quote, bring an action under Section 337.

[00:16:42] Speaker 01:
That they're talking about what you have to do to bring the action I think is indicative that they were thinking about what has happened when you file your complaint.

[00:16:51] Speaker 01:
And then the other part I wanted to point out in the same report is Congress was expressed that they didn't want to see this in the process of being established language.

[00:17:00] Speaker 01:
used as a loophole to the industry requirement.

[00:17:04] Speaker 01:
And I think that's sort of what we're getting awfully close to here.

[00:17:07] Speaker 01:
The idea is that when you file your complaint, you don't actually need any kind of industry, not one that exists, not one that's in the process of being established.

[00:17:15] Speaker 01:
As long as you allege that there might be one at some time in the future, that's enough to get into a Section 337 investigation.

[00:17:22] Speaker 01:
And I think when Congress was talking about not wanting a loophole, that's pretty much what they were talking about.

[00:17:30] Speaker 01:
If I can switch gears to the invalidity issues, unless the court has more questions on domestic industry.

[00:17:39] Speaker 01:
So I'll start with the claim construction issue.

[00:17:42] Speaker 01:
I understand the dispute to boil down here that Roku is essentially arguing for an implicit definition of iteration.

[00:17:49] Speaker 01:
I think it's effectively conceded that there is no plain language excluding user input.

[00:17:55] Speaker 01:
There is no express redefinition of that term in the specification anywhere.

[00:17:59] Speaker 01:
The argument is that everywhere in the specification

[00:18:02] Speaker 01:
user input is excluded, so the term must be construed that way.

[00:18:06] Speaker 01:
I would just point the court to figure five, which is the flowchart which describes how this process works.

[00:18:14] Speaker 01:
And specifically step six through 11 in that figure is the iteration loop.

[00:18:19] Speaker 01:
And in that, you will see in steps eight and 10 of the iteration loop, it expressly calls for user input.

[00:18:28] Speaker 01:
I think the fact that that example exists in the specification defeats this implicit redefinition idea.

[00:18:34] Speaker 01:
Because again, for an implicit redefinition of a term, you need to have it used consistently throughout the entire patent.

[00:18:41] Speaker 01:
And that didn't happen here.

[00:18:44] Speaker 01:
So if the court agrees with that, it can affirm the anticipation defining from the commission.

[00:18:49] Speaker 01:
And again, that would completely dispose of the 875.

[00:18:52] Speaker 01:
If the court, for whatever reason, was disinclined to address the claim construction dispute, it could take up the obviousness dispute, which I submit should also be affirmed.

[00:19:04] Speaker 01:
Here we're talking about an exceptionally simple modification.

[00:19:07] Speaker 01:
It is quite literally a matter of everyone admits doing this was in the prior art.

[00:19:13] Speaker 01:
Would it have been within an ordinary skilled artisan's abilities?

[00:19:17] Speaker 01:
And would they have been motivated to switch to pressing instead?

[00:19:21] Speaker 01:
There are factual findings on that, on both the motivation to combine and a reasonable expectation of success.

[00:19:29] Speaker 01:
You can find the motivation to modify at appendix 2699 through 10700.

[00:19:45] Speaker 01:
That's expert testimony from intervenors expert.

[00:19:48] Speaker 01:
You can find it from

[00:19:50] Speaker 01:
from the same expert on Appendix 10-755 as well.

[00:19:56] Speaker 01:
On the reasonable expectation of success, here you have both experts have acknowledged that this isn't a hard modification to make.

[00:20:02] Speaker 01:
Roku's own expert admitted that this isn't particularly complicated.

[00:20:07] Speaker 01:
I'd submit to the court what this is, is essentially a paradigmatic example of the KSR known technique motivation, where you have a technique of holding a button,

[00:20:19] Speaker 01:
and a technique of pressing a button, which are acknowledged in the patent itself as prior art, and testimony that it wouldn't have been hard to recode these remotes, and that doing so would have made them remote easier to use.

[00:20:32] Speaker 01:
That is enough to show obviousness.

[00:20:35] Speaker 01:
Your honors, those are the three independent bases to affirm the commission.

[00:20:38] Speaker 01:
Unless there are additional questions, I'll cede the rest of my time.

[00:20:42] Speaker 01:
Thank you very much.

[00:20:42] Speaker 03:
Thank you, counsel.

[00:20:44] Speaker 03:
Mr. Davison?

[00:20:56] Speaker 00:
May it please the court.

[00:20:58] Speaker 00:
And I would reemphasize what we heard from the commission.

[00:21:01] Speaker 00:
I agree completely that there's nothing to resolve in this appeal as it relates to the 875 patent.

[00:21:07] Speaker 00:
If you affirm the PTAB decision, the claim 10 is invalid.

[00:21:11] Speaker 02:
Why are you opposing Vecatur and mootness with respect to the 511?

[00:21:18] Speaker 00:
Yes, we are opposing.

[00:21:19] Speaker 00:
We do not believe that issue is moot.

[00:21:21] Speaker 00:
And I'm happy to go right into that, because that issue remains regardless of

[00:21:26] Speaker 00:
the outcome of the other case.

[00:21:29] Speaker 00:
The issue is not moot, because we have pending in the central district of California, Roku, who sued my client, UEI, on behalf of using claim five of the 511 patent.

[00:21:41] Speaker 00:
The key distinction that we see from the case that's before you and the cases everyone has cited is the 511 patent was found indefinite as a matter of law during claim construction.

[00:21:53] Speaker 00:
That sets it apart from all of the other cases that every person has cited to you.

[00:21:58] Speaker 00:
We believe that matters of law, there's one answer.

[00:22:02] Speaker 00:
If this court affirms the commission's finding that the claim five of the 511 patent is invalid as indefinite, we believe that has collateral consequences on the case pending in the Central District of California.

[00:22:16] Speaker 00:
That's why we feel that the issue is not moot.

[00:22:19] Speaker 00:
The most analogous case that we've been able to locate is the Microsoft decision that we cited to you, where the Federal Circuit found that claim construction issues weren't moot in that case.

[00:22:29] Speaker 00:
But to be direct, no one has cited, not Roku, the Commission, or myself, a case directly on point that is dealing with a question of indefiniteness coming out of the ITC on an expired patent.

[00:22:46] Speaker 05:
I think I know your answer to this, but how do you distinguish the INBT case?

[00:22:51] Speaker 00:
The INBT case, the issues there were infringement and invalidity, not a question of law of indefiniteness coming out of claim construction where there's no factual dispute.

[00:23:02] Speaker 00:
In the underlying proceeding, the claim five of the 511 patent has two states, a connected and a disconnected state.

[00:23:10] Speaker 00:
Everybody agreed the claim was inoperable in the disconnected state.

[00:23:14] Speaker 00:
Doesn't work.

[00:23:16] Speaker 00:
That's why the ALJ and then the commission found it indefinite.

[00:23:21] Speaker 00:
If it's invalid as a matter of law, based on that, it's invalid as a matter of law everywhere.

[00:23:26] Speaker 00:
And we shouldn't have to go back and re-litigate these issues in California just to come back here for another appeal years from now.

[00:23:34] Speaker 00:
That's why we think the issue is not moved.

[00:23:37] Speaker 00:
But I understand it.

[00:23:39] Speaker 00:
This exact fact pattern has never been presented to the court.

[00:23:42] Speaker 00:
But it stands to reason.

[00:23:45] Speaker 00:
It's indefinite as a matter of law.

[00:23:46] Speaker 00:
That should apply everywhere.

[00:23:48] Speaker 00:
That means there's collateral consequences in the case the issue's not moved.

[00:23:55] Speaker 00:
Turning to the other issues, and I'm not going to retread over everything we heard from the commission, but just to hit a couple fine points on the head.

[00:24:04] Speaker 00:
If we decide to not agree with the PTAB, the claim ton is invalid, and we're looking at the anticipation question, I would start with anticipation here is a question of fact that we would be looking at for substantial evidence.

[00:24:20] Speaker 00:
And there is substantial evidence in the record that the Phillips prior art remotes that we presented in the ITC case anticipate.

[00:24:29] Speaker 00:
The only dispute between the parties is whether pushing channel up.

[00:24:33] Speaker 00:
Over and over is that scanning and iterating.

[00:24:36] Speaker 00:
And the record before you is filled with substantial evidence that that would still anticipate the claims.

[00:24:42] Speaker 00:
And so just to work clear, we look at substantial evidence on that finding, which is another reason to dispose of the 875 patent.

[00:24:52] Speaker 00:
Last but not least, if we agree with Roku's claim construction that's been rejected by the ALJ, the commission, and the PTEP, we then do have the obviousness determination in this case, where the commission determined that it would be obvious to modify that Phillips remote control to use the press and hold.

[00:25:12] Speaker 00:
And that's well within the skill set of a person of skill in the art.

[00:25:15] Speaker 00:
Dr. Balakrishnan, their expert, agreed the modification would be simple.

[00:25:19] Speaker 00:
So ultimately,

[00:25:22] Speaker 00:
The way I see this case, and what I would think should happen, is if the PTAB determination is affirmed, everything with 875 patent is moot.

[00:25:32] Speaker 00:
And we would ask you not vacate the commission's decision, because there are collateral consequences with respect to the 511 patent.

[00:25:40] Speaker 00:
And with that, unless there's further questions for me, I would rise.

[00:25:43] Speaker 03:
Thank you, counsel.

[00:25:47] Speaker 03:
Mr. Baker has some rebuttal time.

[00:25:49] Speaker 04:
Yes, thank you, Your Honor.

[00:25:53] Speaker 03:
And you'll address the vacatur question?

[00:25:56] Speaker 04:
Certainly, Your Honor.

[00:25:59] Speaker 04:
It's OK if I get to that, or do you want to start with that?

[00:26:03] Speaker 03:
Well, you never know when you're going to get questions, and your time will run out.

[00:26:07] Speaker 04:
OK.

[00:26:07] Speaker 03:
I would answer the question.

[00:26:09] Speaker 04:
OK, all right.

[00:26:10] Speaker 04:
Let me start.

[00:26:11] Speaker 04:
Yes, thank you.

[00:26:11] Speaker 04:
Let me start with the vacatur question, and then I would like to turn to the other issues that were addressed by

[00:26:18] Speaker 04:
Council.

[00:26:20] Speaker 04:
So on the vacatur, we agree with the commission that this course of precedents are clear.

[00:26:25] Speaker 04:
Council for UEI is trying to draw some unique distinction for cases dealing with indefiniteness.

[00:26:31] Speaker 04:
But indefiniteness is just a matter of claim construction.

[00:26:35] Speaker 04:
And this court's other cases have dealt with claim construction, like the Hyosun case.

[00:26:42] Speaker 04:
And this court held that even though there were claim construction issues, and there was another district court case pending, that when the patent expired, it rendered the appeal moot.

[00:26:52] Speaker 04:
So even though this court has not specifically addressed whether vacatur is appropriate when there is an indefinite ruling,

[00:27:00] Speaker 04:
This court has addressed the issue when there's a claim construction ruling, which is also a question of law.

[00:27:05] Speaker 04:
So we think the court's case law is quite clear, and we agree with the commission that the invalidity ruling on the 511 patent should be vacated.

[00:27:16] Speaker 04:
Let me turn next to the issue about this court's Philip Morris case, which counsel for the ITC argued, by signing to a footnote, allegedly made clear that the filing date of the complaint is the date for determination, and you can't consider evidence after that date.

[00:27:35] Speaker 04:
And I don't think that's an appropriate reading of the case.

[00:27:40] Speaker 04:
In the case, the key issue that was decided was whether FDA approval is required in order for a product to qualify as a domestic industry product or a domestic industry in the process of being established.

[00:27:54] Speaker 04:
And this court held that no, that FDA approval is not required.

[00:27:58] Speaker 04:
And so that was the holding of the case.

[00:28:04] Speaker 04:
Now in a footnote, the court said that the date for determination is the date of the complaint incited to the Motiva case.

[00:28:15] Speaker 04:
But that footnote was not necessary to the court's decision.

[00:28:20] Speaker 04:
And so in our view, that constitutes dictum.

[00:28:22] Speaker 04:
And it is not a binding, presidential ruling on this question.

[00:28:28] Speaker 04:
Similarly, the other earlier cases, in the Bally case, the issue was that the complainant had a domestic industry at the time the complaint was filed, but lost it by the time of the... I'm going to take you back to the bigotry.

[00:28:43] Speaker 05:
I apologize.

[00:28:44] Speaker 05:
I'm taking you off of your kind of... No, I'm happy to answer whatever's on the court's mind.

[00:28:49] Speaker 05:
What is the effect on the other

[00:28:51] Speaker 05:
pending case if we vacate with respect to the 511 pet?

[00:28:56] Speaker 05:
Opposing counsel raised a concern about what the impact would be on other pending cases, and I wanted to know how you respond to that.

[00:29:04] Speaker 04:
I think it will help to make clear that the ITC's decision is not binding on the district court, and that district court should make an independent ruling and an independent decision on it.

[00:29:19] Speaker 04:
So we think that's already the law.

[00:29:22] Speaker 04:
But this court's standard practice, which makes sense, is to vacate decisions where a party could not appeal it because of the expiration of the patent.

[00:29:33] Speaker 04:
We didn't even have the opportunity to get a ruling on the substance of it.

[00:29:38] Speaker 04:
And so in that situation, this court has held, in all the cases that are cited in the briefs, that vacater is appropriate because appellate review was not possible.

[00:29:48] Speaker 04:
Thank you, Your Honor.

[00:29:49] Speaker 04:
I appreciate your time.

[00:29:50] Speaker 04:
Thank you.

[00:29:51] Speaker 03:
Thank you to both counsel, all counsel.

[00:29:53] Speaker 03:
The case is submitted.