[00:00:00] Speaker 03:
Our next case for argument is 24-2218 to Pia Technology versus Fox.

[00:00:07] Speaker 03:
Mr. Boland, please proceed when you're ready.

[00:00:10] Speaker 01:
May it please the court.

[00:00:15] Speaker 01:
The final written decisions, the FWDs and the two IPRs that are on appeal, are fundamentally grounded in error.

[00:00:24] Speaker 01:
What we have is that the PTAB adopted a late raised claim construction.

[00:00:30] Speaker 01:
And then it improperly adopted it.

[00:00:34] Speaker 01:
It's overbroad.

[00:00:36] Speaker 01:
And it was one that was asserted to specifically sweep in the prior art.

[00:00:41] Speaker 01:
Then, after adopting it, the PTAB looks at the case and deciding it and says, oh, well, Utopia, your evidence falls under a rejected construction.

[00:00:53] Speaker 01:
So we're not going to consider it.

[00:00:56] Speaker 01:
Then it turns around and says, but even if we do consider it, you lose.

[00:01:01] Speaker 01:
And it still didn't consider the evidence.

[00:01:04] Speaker 01:
So we consider that there's fundamental error underlying the decisions in this case.

[00:01:11] Speaker 04:
Council, do we need to agree with your construction of the term automatically in order for you to win on this appeal?

[00:01:20] Speaker 01:
No, Your Honor.

[00:01:22] Speaker 01:
And here's why.

[00:01:22] Speaker 01:
The construction, I'll say in the obviousness analysis, putting construction aside for a moment.

[00:01:30] Speaker 01:
In the two grounds, there were principle of operation arguments, there were teaching away arguments, and there were

[00:01:40] Speaker 01:
looking at the combined teachings of the prior arguments.

[00:01:43] Speaker 01:
So under each ground, there was three fundamental arguments.

[00:01:47] Speaker 01:
Teaching away for each is not based on claim construction because it goes to other aspects of the references.

[00:01:55] Speaker 01:
And the first principle of operation argument, Sigurdsson and

[00:02:01] Speaker 01:
Chappelle is also not specifically tied to the claim construction dispute.

[00:02:07] Speaker 01:
So those are three issues that can be decided without implicating the claim construction.

[00:02:13] Speaker 01:
And in all three, I'll add that the PTAB simply did not consider Topia's evidence.

[00:02:22] Speaker 01:
We couldn't find one issue in the record where the PTAB considered our expert's testimony.

[00:02:29] Speaker 01:
other than to say we dismiss it because it's based on a rejected construction.

[00:02:34] Speaker 01:
With respect to the combined teachings of the prior art, Your Honor, in that

[00:02:39] Speaker 01:
situation for both rejections, our position is based on adoption of the construction.

[00:02:47] Speaker 01:
And our further position is that if our construction is adopted, we're not asking the court to reweigh the evidence today.

[00:02:55] Speaker 01:
We gave examples of situations where the PTAB

[00:03:01] Speaker 01:
looked at the record, repeatedly cited to the other side's expert and evidence, and never mentioned ours.

[00:03:10] Speaker 01:
So this is not a case.

[00:03:12] Speaker 01:
And so the case can be remanded on that ground, APA violations.

[00:03:17] Speaker 03:
Why do they have to mention your evidence?

[00:03:19] Speaker 03:
They expressly mentioned a bunch of the cited expert testimony for the other side.

[00:03:24] Speaker 03:
And we review, for example, motivation to combine or teaching away for

[00:03:28] Speaker 03:
Substantial evidence because it's a fact question So I don't think that there's some obligation on the board's part to mention your evidence when they're making a fact-binding So long as they provide their rationale, which was we are relying on this other evidence And in response to honor if I may add that like for example this court's decision in OS a farm OSI pharma at page 37 of our opening brief says that

[00:03:54] Speaker 01:
The substantial evidence review involves the examination of the record as a whole, taking into account evidence that both justifies and detracts from an agency's decision.

[00:04:08] Speaker 01:
So we're not saying that, okay, one exhibit or one paragraph of an expert's declaration were not considered.

[00:04:15] Speaker 01:
We're saying there was wholesale ignorance of Topia's record evidence on every issue that was raised below putting claim construction aside.

[00:04:26] Speaker 04:
Just following up on Chief Judge Moore's question, do you at least agree that we have case law that says that the board doesn't have to talk about every piece of evidence in the final written decision?

[00:04:39] Speaker 04:
And that doesn't mean it wasn't considered, but it doesn't have to explicitly discuss every piece of evidence.

[00:04:45] Speaker 01:
I do agree that there's law to that effect, Your Honor.

[00:04:48] Speaker 01:
But I believe that the prevailing vein of authority holds that the PTAB has to meaningfully engage

[00:04:56] Speaker 01:
in our evidence as well as the other side.

[00:05:00] Speaker 01:
And silence about our evidence throughout the entire decision on every issue we don't think is meaningful engagement.

[00:05:08] Speaker 01:
We think it's an APA violation on every single obviousness issue that was raised in the case.

[00:05:15] Speaker 01:
As a matter of fact, this court at page 41 of our opening brief

[00:05:21] Speaker 01:
remanded cases where the PTAB failed to consider a single argument about what a reference teaches.

[00:05:29] Speaker 01:
And here, as one example, in ground one, we argued that the combination attempt to combine Sigurdsson with Chappelle would violate the principle of operation line of cases.

[00:05:48] Speaker 01:
And we gave arguments and we gave evidence.

[00:05:51] Speaker 01:
And so did the other side.

[00:05:54] Speaker 01:
The PTAB didn't even mention our arguments or evidence.

[00:05:58] Speaker 01:
And that should clearly fall under the Quectel and Provisor cases we cited at page 41.

[00:06:06] Speaker 04:
Do you agree that the PTAB considered both your construction, in addition to the construction that was actually determined there, and decided that under either one,

[00:06:23] Speaker 04:
These claims would be found obvious.

[00:06:27] Speaker 01:
I believe that they did in most instances, Your Honor.

[00:06:30] Speaker 01:
And for example, when you look at the combined teachings of the references, our position is that none of the four references in total, two grounds, two references each, none of them disclose step 1D or element 1D of claim one of the 561 patent.

[00:06:51] Speaker 01:
because none of them disclose an embodiment or has any disclosure of a push-based transfer of the file from a first electronic device to the third electronic device.

[00:07:07] Speaker 01:
And the claim language says very clearly that it's the first application, which is software on the first device, is configured to automatically transfer

[00:07:19] Speaker 01:
the modified first electronic file copy to the third electronic device.

[00:07:25] Speaker 01:
And getting into claim construction for a moment here, that literal language read in context, it eliminates any human.

[00:07:37] Speaker 01:
It's one piece of software transferring a file to another device.

[00:07:41] Speaker 01:
There's no human involved.

[00:07:43] Speaker 04:
In terms of the limitations, is the only dispute between the parties with respect to claim limitation 1D

[00:07:50] Speaker 01:
Yes, that's what we've briefed.

[00:07:54] Speaker 01:
Yes, Your Honor.

[00:07:55] Speaker 04:
And also, with respect to representiveness, do you contend that Claim 1 of the 561 patent is representative of all challenge claims for both patents?

[00:08:08] Speaker 01:
Yes, Your Honor, and I don't think that was disputed by the appellees in their red brief.

[00:08:14] Speaker 03:
A minute ago suggest that you think that there's an APA violation in the PTO in the PTO's failure to address your evidence I Just have my clerk search I don't see that argument in your brief the only mention I see to the APA is on page 22 and that has to do with late shifting claim construction positions I'm missing a place where you made that this APA argument that you just made here today I think we did your honor and

[00:08:43] Speaker 01:
I think it's throughout our opening brief in particular, and we repeatedly cited to Aqua Products, and we cited this court's decision in Cary Group Services.

[00:08:56] Speaker 03:
Can you show me any place where you did?

[00:08:59] Speaker 03:
Just point me to one place.

[00:09:30] Speaker 03:
I think maybe page 38, where you cite aqua products, you do.

[00:09:34] Speaker 01:
That's what I'm trying to get.

[00:09:36] Speaker 03:
I think you did there.

[00:09:38] Speaker 01:
Yes.

[00:09:39] Speaker 01:
That's one place, Your Honor, and I don't have at the tip of my fingertips other places, but I do believe there are other places.

[00:09:48] Speaker 01:
And I believe that, for example, page 46, my colleague points out,

[00:10:07] Speaker 03:
That just says the Federal Circuit never cited to, or the PTAB never cited to, or weighed Dr. Chinoy's testimony and ignored all of Tapia's teaching away evidence.

[00:10:22] Speaker 01:
True, but in context, Your Honor, I would take that sentence in light of our first citation to aqua products where we had pointed out that was an APA violation and if on our

[00:10:34] Speaker 01:
Listening to my friend's argument, we can find other spots.

[00:10:38] Speaker 01:
We'll point them out.

[00:10:40] Speaker 01:
But I'm also looking at the middle paragraph on page 48, which, again, cites aqua product.

[00:10:51] Speaker 01:
It indicates that the PTAB's decision violated the APA.

[00:10:56] Speaker 02:
On the claim construction, do you point to any intrinsic evidence that the invention is limited to just what you call pull transactions?

[00:11:08] Speaker 01:
Yes.

[00:11:09] Speaker 01:
It's actually limited to push transactions, and the alternative embodiment is pull.

[00:11:17] Speaker 01:
But yes, as a matter of fact, Your Honor, so the claim language itself,

[00:11:23] Speaker 02:
Element 1D specifically says that the first application... Are there any embodiments in the specification that are limited to the push embodiments?

[00:11:34] Speaker 01:
Yes, your honor.

[00:11:34] Speaker 01:
So beginning at column 7, line 47, it begins a discussion of figure 3, a preferred embodiment.

[00:11:43] Speaker 01:
And it says automatic synchronization.

[00:11:47] Speaker 01:
And then in column 8,

[00:11:49] Speaker 01:
There's discussions of a transfer of the file in both the upload step to the first electronic device and then from the first electronic device to the third electronic device.

[00:12:01] Speaker 01:
And both of those are automatic.

[00:12:04] Speaker 01:
They're clearly push.

[00:12:05] Speaker 01:
It says that the software pushes the file down to the next device, your honor.

[00:12:11] Speaker 01:
Those are the spots and I'll reserve the rest of my time for rebuttal unless court has a further question.

[00:12:16] Speaker 03:
Thanks.

[00:12:33] Speaker 00:
I think Your Honors are hitting on some of the key issues and controlling case law here that show why the Board's decision should be affirmed.

[00:12:43] Speaker 00:
On the question of whether the Board did consider the arguments raised by Topia, absolutely the Board did.

[00:12:51] Speaker 00:
We've seen the decisions, happy to cite those.

[00:12:54] Speaker 00:
The core arguments were considered.

[00:12:56] Speaker 03:
I mean, the two companion decisions... Where does the board discuss any of their, for example, teaching away evidence or argument?

[00:13:03] Speaker 00:
Sure.

[00:13:03] Speaker 03:
So that's... Motivation combined.

[00:13:05] Speaker 03:
Where can we see it in the board's decision?

[00:13:07] Speaker 00:
Sure.

[00:13:08] Speaker 00:
I'll pull up those slides for you, Your Honor.

[00:13:14] Speaker 00:
So in the... So for example, the two companion decisions here, so on the 942 patent, so Appendix 149 through 151,

[00:13:33] Speaker 00:
And I'll note, we heard from our friend that there's no reference to the expert testimony that was proffered by Topia.

[00:13:42] Speaker 00:
That's simply not the case.

[00:13:44] Speaker 00:
I think we counted nine or 10 references to Dr. Chinoy, specifically citing, addressing, discussing over these pages, both the expert testimony and the arguments.

[00:13:57] Speaker 00:
And this is only for the Sigurdsson and Chappell grant.

[00:13:59] Speaker 00:
As your honors know, there are two independent grounds here.

[00:14:02] Speaker 00:
both of which the board found under both constructions that all challenge claims were obvious.

[00:14:10] Speaker 00:
So this is one example I'm happy to go through.

[00:14:12] Speaker 02:
There's many other examples where... Is there that same discussion for the 561?

[00:14:17] Speaker 02:
Because there I just saw a lot of saying because their expert applied the wrong claim construction, we don't find him convincing.

[00:14:25] Speaker 00:
So a great question, Your Honor.

[00:14:27] Speaker 00:
So on the 561, what patent owner pointed to as if it was an alleged dismissal of the expert, that's just simply not the case on appendix page 79.

[00:14:38] Speaker 00:
What the board said was, on the disclosures, so on the teachings of Sigurdsson and Chappell, the testimony of Dr. Shinoy, which is a patent owner's expert, was based on the rejected claim instruction of automatically.

[00:14:52] Speaker 00:
So what the board was saying was,

[00:14:54] Speaker 00:
where patent owners expert argued that the prior art does not teach or disclose the claim limitations, it was entirely based on this narrow construction of a push without a request.

[00:15:05] Speaker 00:
And even that was substantial evidence to the contrary, but that was what the board was saying there.

[00:15:10] Speaker 00:
But then when the board continued on at page 80, the board separately then went on to say,

[00:15:16] Speaker 00:
Let's address now the combination argument, the alleged teaching away argument relating to client server and peer to peer, cited as page range from the patent owner response, which in turn cited to the expert testimony.

[00:15:27] Speaker 00:
So here we see, just as in the companion decision, substantially exactly the same evidence and arguments being considered.

[00:15:35] Speaker 00:
I mean, it didn't say patent owner response at these page ranges, which also cite the expert testimony, but this is very clear under the kind of the APA

[00:15:46] Speaker 00:
law that the court has referred to, we can absolutely reasonably discern the board followed an appropriate path here.

[00:15:53] Speaker 00:
This is not a case, so the Kerry case for example that the patent owner cited, so that's the case where this court noted there were a multitude of arguments raised by the patent owner but for the board, including an explicit teaching away, that were completely ignored and not addressed by the board at all.

[00:16:10] Speaker 00:
So that would be a case where

[00:16:12] Speaker 00:
Like if we removed all these pages and the board had simply said it's obvious and didn't address all these, and we're not in that situation here.

[00:16:21] Speaker 02:
And how about at the oral hearing?

[00:16:22] Speaker 02:
Was there evidence discussed at the oral hearing?

[00:16:25] Speaker 02:
And would that count to our effort to reasonably discern if it was discussed?

[00:16:31] Speaker 00:
It would count as well.

[00:16:33] Speaker 00:
I know it was.

[00:16:34] Speaker 00:
So candidly, I don't have record sites for you on the hearing.

[00:16:38] Speaker 00:
I know the evidence was discussed.

[00:16:40] Speaker 00:
But I don't have appendix sites in terms

[00:16:42] Speaker 00:
But I think that would be gilding the lily additional gravy on top of what's already in substance here.

[00:16:48] Speaker 00:
Thoroughly discussed on both grounds.

[00:16:50] Speaker 00:
We just looked at Sigurdsson, happy to look also at the Brown and Hesselink.

[00:16:56] Speaker 04:
Just to follow up on what Judge Stark asked you, discussed in a sense that is more extensive than just saying would not credit or consider in light of that claim construction.

[00:17:08] Speaker 00:
At the oral hearing?

[00:17:09] Speaker 00:
Yes.

[00:17:09] Speaker 00:
It's, candidly, Ron, I don't have sites for you from the oral hearing.

[00:17:14] Speaker 00:
I would be happy to do a follow-up letter to provide that if necessary, but I think the four corners of the board's decisions, I think, are fully compliant with showing that the board did consider the arguments.

[00:17:28] Speaker 00:
We haven't actually heard, throughout the briefing and today, we haven't heard, here's a substantive argument that the board just simply whiffed on and did not consider at all.

[00:17:37] Speaker 00:
I mean, it's the teaching away, the client server,

[00:17:39] Speaker 00:
versus peer-to-peer, the push versus pull, all of that was squarely addressed by the board in both decisions.

[00:17:45] Speaker 00:
This is not a case where, you know, the board just completely ignored what the patent owner was presenting.

[00:17:51] Speaker 04:
And do you agree that we can look at claim one of the 561 patent as represented for all challenge claims across both patents here?

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

[00:18:01] Speaker 04:
Okay.

[00:18:02] Speaker 04:
And also that the only limitation dispute is limitation 1D?

[00:18:06] Speaker 00:
I believe so, yeah.

[00:18:07] Speaker 00:
I mean, it's disputed in the sense that that's the one that was challenged by patent owner appeal.

[00:18:12] Speaker 00:
We believe there's ample supporting substantial evidence on both grounds on that limitation under both claim instructions, as the board explicitly found.

[00:18:23] Speaker 00:
I'm happy to address any other questions.

[00:18:28] Speaker 03:
Okay, thank you, counsel.

[00:18:29] Speaker 00:
Thank you, your honors.

[00:18:52] Speaker 01:
So to close the loop on the APA, our opening brief for, I mentioned, a couple spots at least in ground one and in ground two, pages 58, 59, and 60.

[00:19:04] Speaker 03:
How do you respond to Mr. Mead's pointing out the various places in the PTAB decision where the board articulated and discussed, for example, Dr. Chenoy's testimony?

[00:19:21] Speaker 01:
The briefing focused on the 561, and I couldn't find a single spot, Your Honor.

[00:19:29] Speaker 01:
I think he mentioned some spots where the PTAB in its FWED on 942 may have mentioned Dr. Shanoi.

[00:19:39] Speaker 01:
And sitting here, we couldn't find it in a few minutes.

[00:19:43] Speaker 03:
But let me turn to appendix page 75.

[00:20:06] Speaker 03:
I see a bunch of appendix stage 75.

[00:20:11] Speaker 03:
I see a bunch of references to Dr. Shnoy under the discussion with regard to claim one.

[00:20:16] Speaker 03:
Shnoy declaration, the patented response, Shnoy testimony on limitation 1D, why it's not convincing.

[00:20:36] Speaker 01:
Well, if you look on 76, Your Honor, right after where you pointed to, at the end of that, about the sixth line down, the court said, this analysis by Dr. Chinoy is contrary to our construction of automatically.

[00:20:52] Speaker 01:
And therefore, we do not credit it.

[00:20:54] Speaker 01:
And that's one of our main points, is that even under Topia's construction, if adopted, the evidence we submitted, and all the Chinoy evidence

[00:21:07] Speaker 01:
went to what we call the plain meaning construction here, because that's what was on the table at the time of our patent owner response.

[00:21:16] Speaker 01:
And this claim construction did not arise until the reply brief in the IPRs.

[00:21:23] Speaker 02:
What about the final written decision references to your filings, which themselves reference your expert?

[00:21:30] Speaker 02:
Doesn't that give us further indication that the board was actually engaging with your evidence?

[00:21:35] Speaker 01:
Well, again, that evidence, again, went to the plain meaning construction.

[00:21:41] Speaker 01:
I mean, I'm sorry.

[00:21:43] Speaker 01:
It went to our proposed construction.

[00:21:48] Speaker 01:
And when that was the case, the PTAB repeatedly, in both cases, said, we're not going to give it any weight.

[00:21:57] Speaker 01:
We're not going to credit it.

[00:21:58] Speaker 02:
But I guess I'm getting a little confused on your position.

[00:22:01] Speaker 02:
Is it that the board saw all your evidence?

[00:22:04] Speaker 02:
Sure, it thought about it.

[00:22:06] Speaker 02:
But it erred in some way for rejecting it based on a claim construction.

[00:22:10] Speaker 02:
Or are you asking us to say the board really either overlooked or just didn't even consider your evidence?

[00:22:16] Speaker 01:
We're asking the latter, Your Honor.

[00:22:18] Speaker 01:
It didn't consider it.

[00:22:19] Speaker 01:
It didn't grapple with it.

[00:22:20] Speaker 01:
It didn't meaningfully engage it.

[00:22:23] Speaker 01:
So we contend that saying it relates to a rejected construction is not consideration on the merits.

[00:22:29] Speaker 01:
This was not like they looked up Dr. Chinoy and he addressed an issue

[00:22:35] Speaker 01:
under the broad construction and and then they said oh, well, that's Conclusory or that doesn't address this or that okay?

[00:22:43] Speaker 01:
Or that doesn't take into account this thing that the other expert said there was no weighing at all of dr. Shenoy versus the other expert and that's our position by and large your honor Okay, I see that I'm out of time.

[00:22:56] Speaker 03:
Thank both counsels