[00:00:00] Speaker 05: This appeal we argued is appeal number 15-1072, Harmonic Incorporated versus AVID Technology Incorporated. [00:00:13] Speaker 05: Mr. Feldman, you've reserved seven minutes for rebuttal, is that right? [00:00:19] Speaker 05: Yes, Your Honor. [00:00:19] Speaker 05: Okay, please go ahead whenever you're ready. [00:00:21] Speaker 06: Good morning and may it please the Court. [00:00:25] Speaker 06: This is not a technical appeal. [00:00:28] Speaker 06: The board's errors go to the heart of the defect with respect to claim 11 of the 291 patent. [00:00:36] Speaker 06: Haskell, along with extensive other prior art, disclosed the quote, predefined period of time, close quote, limitation claim 11. [00:00:48] Speaker 06: We raised many issues in our briefs. [00:00:49] Speaker 06: I'd like to, subject to your questions, focus on two areas during my time. [00:00:56] Speaker 06: The board's conclusion that harmonics reliance on the Haskell disclosures violated the reply regulation. [00:01:04] Speaker 06: And second, that the board could ignore extensive admitted prior art by invoking redundancy. [00:01:13] Speaker 02: Can you address the second issue first? [00:01:15] Speaker 06: Yes. [00:01:18] Speaker 06: I will address it first. [00:01:19] Speaker 06: There were a few undisputed facts that I wanted to get through if it would be okay with your honor and then I'll get to that. [00:01:26] Speaker 06: Just three undisputed facts that I think then will bear on the redundancy. [00:01:31] Speaker 06: During the prosecution, the applicant responded to requests from the examiner for more detail on various elements by conceding that every component was known in the prior art so that no additional detail was required. [00:01:49] Speaker 06: The only novelty was the arrangement of those known components in a parallel configuration. [00:01:56] Speaker 06: That's in the record at A205, which is the prosecution history. [00:02:01] Speaker 06: And it's in the Zager Declaration, paragraphs 21 through 29, at A111 to 13. [00:02:10] Speaker 06: Two, both the 291 patent and Haskell are designed to enable video decompression with no gaps between the different streams. [00:02:20] Speaker 06: Claim 11 uses the phrase, quote, predefined period of time, close quote. [00:02:25] Speaker 06: Haskell uses the phrase, quote, predetermined system timing, close quote. [00:02:31] Speaker 06: There is no substantive difference between the two. [00:02:34] Speaker 06: And my best authority for that is my friends on the other side of the aisle. [00:02:38] Speaker 06: Even AVID uses the terms interchangeably. [00:02:42] Speaker 06: For example, in counterstatement of issues number two, AVID referred to, quote, the missing limitation of claim 11, providing a second set of video data, [00:02:55] Speaker 06: at a second rate, quote, a predetermined period of time, close quote, after the first set of video data starts to be received, close quote. [00:03:04] Speaker 06: Also in the record at A527, in the AVID brief at 4, you see those two terms being used interchangeably. [00:03:14] Speaker 06: Finally, and then I'll turn to redundancy, the only evidence that was before the board, as opposed to argument by lawyers, was the Zager Declaration, [00:03:23] Speaker 06: Abbott didn't submit any counter-evidence or depose with Dr. Zager, and the board repeatedly relied on Dr. Zager in invalidating claims one through 10. [00:03:33] Speaker 06: I just wanted to flag for you the key paragraphs in which Zager addressed the disclosures related to predefined time, both in the Haskell patent and in the admitted prior art. [00:03:43] Speaker 06: Those are paragraphs 27, 29, 71, 73, [00:03:50] Speaker 06: 129, 276, and 282. [00:03:54] Speaker 06: And with that, thank you for your patience. [00:03:56] Speaker 06: I'm going to skip over the scope of reply and go first to the redundancy. [00:04:02] Speaker 02: I think I misspoke. [00:04:03] Speaker 02: What I want to hear about is why it is that you think that Haskell teaches the predetermined system timing as required by the claim or predetermined time as required by the claim. [00:04:14] Speaker 02: And as I understand it, you have two different [00:04:19] Speaker 02: theories or arguments for why it is that that element is met by Haskell. [00:04:24] Speaker 02: Is that correct? [00:04:27] Speaker 06: I wouldn't have characterized it as two different ones. [00:04:29] Speaker 06: I think that Haskell repeatedly, both by its use of the term and in its operation, satisfies that element. [00:04:38] Speaker 01: How is it that the multiplexer satisfies that element? [00:04:42] Speaker 06: The multiplexer doesn't. [00:04:43] Speaker 06: It's the encoder. [00:04:45] Speaker 06: And as the board found repeatedly on all the prior [00:04:49] Speaker 06: claims, claims one through 10, the encoder qualified as the switch. [00:04:54] Speaker 06: So Abbott's argument was all of that, and it was their first argument on claim 11, all of that is irrelevant because that all happens at the encoder level, but the board had already found that the encoder satisfied the requirement of a switch. [00:05:11] Speaker 05: So, you know, I've looked at Haskell, and right now I don't understand how Haskell [00:05:18] Speaker 05: anything in Haskell, everything in Haskell, how any of it discloses sending a video data stream to a second decoder at a predefined period of time after a first decoder has received its video data stream. [00:05:41] Speaker 06: So the two specific references in Haskell, Your Honor? [00:05:45] Speaker 05: I mean, the way I look at Haskell is it's [00:05:47] Speaker 05: GARN variety multiplexer, demultiplexer system. [00:05:51] Speaker 05: And I don't see anything in Haskell's encoder system as having any kind of intelligence where it is designing by a certain time, ensuring that a second decoder on the backend is receiving a video data stream at a predefined period of time after [00:06:14] Speaker 05: A video stream has already been sent to a first decoder. [00:06:19] Speaker 06: Let me try to show you that. [00:06:21] Speaker 06: If you look at column two, lines 41 through 44 of Haskell, it states, quote, the encoder bitrate for each encoder is controlled to prevent its associated encoder and decoder buffers from overflowing and underflowing, close quote. [00:06:39] Speaker 06: If you then turn to column 13, [00:06:42] Speaker 06: Lines 35 to 54 states, quote, as in the system of figure one, each decoder waits exactly LP seconds after arrival of the first bit of information before starting to decode, close quote. [00:06:59] Speaker 06: The system knows when the decoder will begin decoding. [00:07:03] Speaker 06: It knows how fast it decodes. [00:07:06] Speaker 06: The encoder knows the size of the buffers. [00:07:10] Speaker 06: It knows the bit rate. [00:07:11] Speaker 06: It knows the amount of time it takes to decompress the data and the switch over from stream one to stream two. [00:07:20] Speaker 06: This is all laid out in Zager paragraph 282 at A168, which is where he addresses Haskell on claim 11. [00:07:29] Speaker 05: I didn't see anything in Haskell that's talking about some kind of predetermined timing relationship between two [00:07:40] Speaker 05: video bit streams being received by two different decoders. [00:07:44] Speaker 05: I understand there's an encoder bit rate controller that's setting up different bit rates for encoding on the front end and transmitting those, and then they arrive at a certain time through the channel after everything gets multiplexed together. [00:08:04] Speaker 05: But I'm talking about this particular [00:08:07] Speaker 05: limitation that's talking about this particular relationship of a predetermined time between the receipt of two different video streams, the two different decoders. [00:08:21] Speaker 06: I believe, Your Honor, if I understand you, that at column 13, line 7, which Avedit pointed out below, [00:08:30] Speaker 06: It begins periodically according to predetermined system timing to be described. [00:08:36] Speaker 06: So to the extent you're looking for that reference to predetermined system timing, it's there. [00:08:42] Speaker 06: And with respect to multiple streams, we're relying below not just on Haskell, but also on Rosmere and the other [00:08:58] Speaker 06: admitted prior art referred to the parallel configuration. [00:09:04] Speaker 05: Mr. Feldman, you're into your rebuttal. [00:09:05] Speaker 05: Did you want to talk more about the redundancy issue, or do you want to reserve your rebuttal? [00:09:11] Speaker 06: I aired on the side of rebuttal time, so if you can stand me for a few more minutes. [00:09:16] Speaker 06: What I really want to talk about is the error on saying that we raised an issue in the reply inappropriately, unless you feel that you don't need me to address that. [00:09:27] Speaker 06: With respect to that, the relief we would request is a remand. [00:09:34] Speaker 06: As you recall, the board concluded that our argument is to Haskell 13.7, which I just read to you, which showed the language on timing. [00:09:52] Speaker 06: The board concluded that that was outside the scope of reply because it had not been raised in the avid opposition brief. [00:10:01] Speaker 06: And it's such an obvious error. [00:10:04] Speaker 06: I don't understand how they got it wrong. [00:10:06] Speaker 06: I say that with great respect for the office. [00:10:08] Speaker 06: But the avid reply asserted that Haskell did not account for or teach the predetermined period of time limitation. [00:10:18] Speaker 06: And they cited Haskell. [00:10:20] Speaker 06: And that's what we responded to in the reply brief. [00:10:24] Speaker 06: So it seems to me to be clear error. [00:10:27] Speaker 06: You don't even need to get to a substantial evidence standard. [00:10:30] Speaker 06: The board got it wrong that this was new in the reply, and they should have reached it. [00:10:35] Speaker 06: On redundancy, what I want to say is although there are interesting, nay potentially cert-worthy issues on the question, I don't think the panel needs to reach them at all. [00:10:47] Speaker 06: I think it's sufficient to say, [00:10:49] Speaker 06: that in these circumstances, where the board in its initiation decision had said, we're not going to reach any of the admitted priority, just Haskell, because the only issue is parallel configuration. [00:11:04] Speaker 06: And Haskell and Rosmere are enough on that. [00:11:08] Speaker 06: And that was the basis. [00:11:11] Speaker 06: In the final written decision, the board went off on predetermined system timing. [00:11:18] Speaker 06: And in light of that, the applied, the admitted prior art was no longer redundant. [00:11:24] Speaker 06: It went to the heart of the issue. [00:11:26] Speaker 06: And what the board properly should have done there said, well, since we're not persuaded on Haskell as to claim 11 and pre-determined system timing, we better take a look at the admitted prior art. [00:11:40] Speaker 06: And just then I'll sit down. [00:11:41] Speaker 05: Did it do that when it already denied those grounds? [00:11:45] Speaker 05: I mean, it didn't. [00:11:48] Speaker 05: park those other grounds, it formally denied institution of those grounds. [00:11:54] Speaker 05: Did it even have the power or jurisdiction to undeny those grounds? [00:12:02] Speaker 06: I don't think they denied those grounds in the sense that one would normally view a rejection on the merits. [00:12:09] Speaker 06: They'd said we're not considering them. [00:12:11] Speaker 06: And I agree that for due process purposes, they then would have had to say, [00:12:15] Speaker 06: Kind of as they did in Liberty Mutual at an earlier phase, they would have said, let's have you address this. [00:12:23] Speaker 05: Did you request or make a motion to have them request to consider these denied grounds? [00:12:30] Speaker 06: There was no need to until in the final written decision, the board changed its position on claim 11. [00:12:38] Speaker 06: And then did you after that? [00:12:39] Speaker 06: No, we didn't, your honor. [00:12:41] Speaker 06: We didn't after that. [00:12:42] Speaker 06: Lest you think that this redundancy issue is just another lawyer argument, I would address you to one particular component, and that's the stream scheduler 150, which is a big deal in the 291 patent in terms of timing. [00:12:59] Speaker 06: It was admitted prior art. [00:13:01] Speaker 06: It's in the Zager Declaration at paragraph 27, but let's just read what the applicant said when the examiner asked for more detail about it, quote, [00:13:11] Speaker 06: Stream scheduler 150 does supply certain instructions to microcontroller 110. [00:13:18] Speaker 06: However, these are of a routine and well-known nature, ellipses. [00:13:23] Speaker 06: Also, as their generation and operation are well-known in the art, no detailed description of them is believed necessary, close quote. [00:13:31] Speaker 06: That's an A205. [00:13:33] Speaker 06: And that's the type of admitted prior art that the board never got to. [00:13:37] Speaker 06: Thank you for your patience. [00:13:42] Speaker 05: Mr. Kostanis, you have 10 minutes, right? [00:13:48] Speaker 05: Correct. [00:13:48] Speaker 05: Okay. [00:13:50] Speaker 03: Good morning, Your Honors, and may it please the court. [00:13:55] Speaker 03: The two issues I want to address today first are the failure to raise this issue in the petition and why the board was correct in not considering this argument. [00:14:04] Speaker 03: The second issue I want to address also is the related issue of the alternative holding of the board, which was that the other side [00:14:11] Speaker 03: had failed to meet its burden of proof, and that the evidence that it submitted in reply was not adequate. [00:14:18] Speaker 03: That wasn't even addressed in my friend's opening brief. [00:14:22] Speaker 03: That argument came in the reply brief. [00:14:24] Speaker 03: Once again, a case of the argument coming too late, and it's wrong for all the reasons, Judge Chen, that you asked my friend about with regard to the Haskell reference. [00:14:34] Speaker 03: But let me start with the reply regulation. [00:14:38] Speaker 03: My friend seizes on the language of section 42.23b that says a reply may only respond to arguments raised in the corresponding opposition. [00:14:49] Speaker 03: But what he ignores is the prior sentence, which says all arguments for the relief requested in a motion must be made in the motion. [00:14:58] Speaker 03: Here, that motion is the petition. [00:15:01] Speaker 03: The petition, at page A91, [00:15:03] Speaker 03: Does the word motion encompass the petition? [00:15:05] Speaker 03: I think under the board's practice, that is exactly what it's talking about because it is talking about the patent donor's reply in this subsection. [00:15:15] Speaker 05: Well, in any event, why didn't they preserve the issue in the petition when they clearly did reference Haskell? [00:15:21] Speaker 03: If you look at page A91, it's not just a reference to Haskell, but it's a reference to the predefined period of time limitation. [00:15:30] Speaker 03: What you don't see at page A91 where claim 11 is discussed in that one single paragraph, you see the first sentence is simply a recitation of the claim language in shorthand. [00:15:42] Speaker 03: And then what is offered after that is, for example, Haskell teaches the ability, by the way, that's capability language, that's not actually a teaching or a disclosure, but capability to individually control bitrate. [00:15:56] Speaker 03: Well, controlling bitrate doesn't have anything to do with the predefined period of time. [00:16:00] Speaker 03: It also talks about the ability to switch packets. [00:16:03] Speaker 03: Well, that's not the predefined period of time. [00:16:05] Speaker 03: And then it cites the DMUX switch of Haskell in figure three. [00:16:12] Speaker 03: Now that's on the decoder side of the channel, the DMUX switch is, and figure three describes the function of the DMUX switch. [00:16:19] Speaker 02: It's not as if they ignored the limitation entirely though, right? [00:16:22] Speaker 02: I mean, they do have up just a little bit further, they do refer to Haskell discloses dot dot dot, [00:16:30] Speaker 02: a predefined period of time, right? [00:16:34] Speaker 03: Well, Judge Stoll, that's exactly what it says, but all that is that first sentence that you just read to me is the claim language. [00:16:40] Speaker 03: That's just the claim language recited. [00:16:42] Speaker 03: If this case were in district court, for example, this would be conclusory expert testimony that couldn't support a verdict or could no return a verdict. [00:16:51] Speaker 02: Would it be in your view that a new [00:16:54] Speaker 02: portion of a prior reference or a separate portion, a different column and line number could never be relied on in a reply brief? [00:17:02] Speaker 03: I don't think I have to go that far, and certainly the court wouldn't have to go that far. [00:17:06] Speaker 03: But what you do have here is a complete and utter failure to discuss that one particular limitation of claim 11, a complete and total failure of proof. [00:17:16] Speaker 03: It's a failure of an essential element of the case. [00:17:20] Speaker 03: And if you look at where being [00:17:23] Speaker 03: credited for having raised the issue that Harmonic then had to reply to. [00:17:28] Speaker 03: But if you, in truth, if you look at page A527 and look at where we did respond, we simply said they haven't addressed this. [00:17:37] Speaker 03: And what 4223 says is you're allowed to say, oh yes, we did address this. [00:17:44] Speaker 03: But they don't claim to have addressed it. [00:17:46] Speaker 03: They've made their own, and the only submission they even made at page A547 is an even shorter paragraph. [00:17:52] Speaker 03: where they say Haskell explicitly discloses the use of predetermined system timing with regard to providing video data to decode buffers. [00:18:00] Speaker 03: But again, as Judge Chen pointed out in his colloquy with my friend on the other side, that's not enough. [00:18:06] Speaker 03: It's not just picking out predetermined and predefined and saying well those sound like the same and the word time is in there also and system time means something that isn't in period of time, but it's really what is that time about? [00:18:19] Speaker 03: It's about when you start [00:18:21] Speaker 03: the second stream of programming. [00:18:23] Speaker 03: Haskell doesn't say anything about starting a second stream of programming or anything about that at all. [00:18:30] Speaker 03: And that's the entire limitation. [00:18:31] Speaker 03: It's not just predefined period of time. [00:18:34] Speaker 03: The limitation that was not proved was predefined period of time after the first video array begins receiving the video data at the first rate. [00:18:43] Speaker 02: I see here at A91, they also cited column 13, lines 35 through 54 with respect to this particular claim limitation. [00:18:50] Speaker 03: Yes, but they are citing it strictly with regard to, you'll see DMUX switch 203 of Haskell, exhibit 108, which is Haskell, and figure three, 1335 to 54, period. [00:19:03] Speaker 03: But, often claim limitations have been met. [00:19:06] Speaker 03: That's not enough. [00:19:07] Speaker 03: That's not enough. [00:19:08] Speaker 03: There's no showing whatsoever that the predefined period of time after the first video array begins receiving the video data limitation is met. [00:19:18] Speaker 03: So this court should affirm for either or both of two reasons. [00:19:23] Speaker 03: One, the issue wasn't properly raised. [00:19:26] Speaker 03: And two, the issue was correctly in the alternative decided by the board. [00:19:33] Speaker 03: And I will point out one last thing with regard to that last issue, which is that the board's alternative holding was not challenged at all in the opening brief in this court. [00:19:44] Speaker 03: It only was the reply brief when they first said, well, [00:19:47] Speaker 03: G, that wasn't enough to satisfy this course decision in Getter versus Davidson. [00:19:52] Speaker 03: It's not enough to permit meaningful appellate review. [00:19:55] Speaker 03: Well, a total absence of proof, it doesn't take more than a couple of sentences to be able to say that. [00:20:01] Speaker 03: And quite honestly, they gave more attention to this issue in the board decision than Harmonic ever did before the board. [00:20:10] Speaker 03: Lastly, even on the substance, Haskell doesn't teach what they say it teaches. [00:20:15] Speaker 03: Unless the court has further questions for me, give the rest of my time to Mr. Wiedenfeller. [00:20:21] Speaker 05: Okay. [00:20:33] Speaker 04: Mr. Wiedenfeller. [00:20:36] Speaker 04: Thank you, Judge Chen, and may it please the court. [00:20:38] Speaker 04: I'd like to start with Your Honor's point that Your Honor made earlier in the opening argument about how [00:20:45] Speaker 04: When the board instituted this trial, the jurisdiction of the board was limited to those grounds on which it instituted. [00:20:52] Speaker 04: The other grounds were not something that the board could revisit later in the proceeding. [00:20:57] Speaker 04: A decision denying a ground for review under section 42.108B of 37 CFR is a denial of institution. [00:21:06] Speaker 04: And a denial of institution is something that this court simply cannot review under the St. [00:21:11] Speaker 04: Jude decision. [00:21:12] Speaker 05: Just curious, are there other instances where the board [00:21:15] Speaker 05: it likes to grant all the grounds that it really does believe there's a reasonable likelihood that claims are more likely than not unpatentable. [00:21:24] Speaker 05: But then the board will, after granting all the grounds, elect to put on the shelf all but one and then go forward on a trial with one and then just leave the other three or four as a just in case backstop in case the one ground that they go forward on ultimately [00:21:45] Speaker 05: proves unconvincing? [00:21:47] Speaker 04: The board does not do follow that procedure in AIA trials. [00:21:51] Speaker 04: It does do that in its appeals in certain situations. [00:21:54] Speaker 04: And for example, in intraparties reexaminations that involve a lot of issues, the board may focus on a particular issue. [00:22:01] Speaker 04: But in an AIA trial, the scope of the trial is what is instituted in the institution decision. [00:22:07] Speaker 04: And why doesn't it do the way I just suggested? [00:22:12] Speaker 04: It's for efficiency purposes and for due process purposes as well. [00:22:15] Speaker 04: The efficiency is in the board crafting a scope of a proceeding that it knows it can handle and it knows it can satisfy and complete in the one year timeframe it's given under the statute. [00:22:29] Speaker 05: And doesn't it look more like a case management issue, like what Harmonic was suggesting in its briefs? [00:22:37] Speaker 04: It is in some ways a case management issue, but it is a determination not to institute on a particular ground, and that is something that isn't reviewable, whether it's a case management decision or a decision on whether it met the threshold for instituting an IPR. [00:22:51] Speaker 04: And the due process concern is that the parties need to be aware during the proceeding of what issues they need to raise. [00:22:57] Speaker 04: And I think one thing that's very clear from this record is that [00:23:00] Speaker 04: The parties were well aware that these issues could not have been raised during the proceeding. [00:23:06] Speaker 04: Just take one example is at page 8, 536, which is from the petitioner's reply here. [00:23:14] Speaker 04: It says, the following grounds were not instituted due to redundancy. [00:23:18] Speaker 04: One, admitted prior art, paren, quote, APA, close quote, close paren, and Allen. [00:23:24] Speaker 04: Two, APA and Hong. [00:23:25] Speaker 04: Three, Peck and Rosmere, and four, Peck, Rosmere, and Haspel. [00:23:28] Speaker 04: It was well aware that these grounds were not instituted and were not part of the proceeding, and it followed through with that approach. [00:23:37] Speaker 05: If there are no further questions, I'll be able to... Does the agency have the right to deny a petition for any reason? [00:23:47] Speaker 04: Yes, Your Honor. [00:23:48] Speaker 04: It has that much power and discretion. [00:23:50] Speaker 04: The statute provides when the director may not institute a proceeding. [00:23:56] Speaker 04: ever indicate when the director is required to institute a proceeding. [00:23:59] Speaker 04: And Congress was very clear that it was very concerned about the agency's ability to perform these new proceedings efficiently and to complete them in the one-year timeframe that's set forth. [00:24:10] Speaker 04: And it made very clear throughout the statute that the agency can consider its ability to complete the proceedings. [00:24:17] Speaker 04: It went so far as to say that the agency could just stop instituting proceedings at all for a particular year during the first four years of the AIA. [00:24:25] Speaker 04: if it thought it could not handle the proceedings. [00:24:27] Speaker 05: Given all the concerns about statutory estoppel and petitioners are required to bring to the table to the agency every single possible ground of unpatentability that it is aware of, aren't there estoppel concerns if the agency only elects to go forward on one? [00:24:47] Speaker 04: Well, we think the court need not reach the estoppel in this case because it's not presented in this case. [00:24:54] Speaker 04: Our view is that the estoppel does not apply to grounds that were not raised during the proceeding. [00:24:59] Speaker 04: And the clearest way to show that a petitioner could not reasonably have raised grounds in a proceeding is to try to raise them and have the board tell them they cannot raise them during the proceeding. [00:25:09] Speaker 04: The statutory estoppel is limited to what's in the final written decision and grounds that were raised during the proceeding and or reasonably could have been raised during the proceeding. [00:25:18] Speaker 04: And it's very clear from this record that [00:25:21] Speaker 04: The petitioner here, Harmonic, could not reasonably have raised the admitted prior art grounds or opaque grounds or any of the grounds on which the board did not institute. [00:25:29] Speaker 04: So we don't think the estoppel would apply to them in this situation in district court. [00:25:34] Speaker 05: Do you think the regulation here was applied correctly when the board said they're not going to consider the petitioner's reply on Haskell? [00:25:47] Speaker 05: familiar with a particular fact. [00:25:49] Speaker 05: Although they cited the very column of Haskell that they cited to again in the reply and admittedly a paragraph above the paragraph they cited earlier. [00:26:05] Speaker 05: But for whatever reason, the board said, well, that's a different paragraph. [00:26:09] Speaker 04: So we're not going to consider it. [00:26:10] Speaker 04: I think what the board was saying was that there was an additional argument being made. [00:26:14] Speaker 04: in that perhaps they cited to something in the initial petition, but being called out for not having made any argument about it does not allow you to make an argument about it. [00:26:25] Speaker 04: Instead, a fair reply to being called out for not having made an argument is to show that you did in fact make the argument, not to make the argument anew. [00:26:34] Speaker 04: And I think that's the board's approach, and I don't think that the use of discretion in declining to consider that aspect of the reply. [00:26:43] Speaker 05: Okay. [00:26:44] Speaker 05: One housekeeping question. [00:26:46] Speaker 05: There's another appeal in this courtroom after this appeal that's from the PTO. [00:26:52] Speaker 05: And there's nobody defending the board's decision in that case. [00:26:57] Speaker 05: Do you have any idea why? [00:26:59] Speaker 04: That's correct, Your Honor. [00:27:00] Speaker 04: It's an interference case. [00:27:02] Speaker 04: And we did, at the PTO, consider whether or not to intervene. [00:27:06] Speaker 04: And one of our considerations in whether or not to intervene in the case is [00:27:10] Speaker 04: protecting the public interest and we don't see that concern in interference cases where it's deciding which particular party gets a patent. [00:27:18] Speaker 04: There's no real public interest in who gets a patent. [00:27:21] Speaker 04: We have a public interest in defending decisions as to patentability that the agency makes, but we have less of an interest in defending the particulars of which patent owner is able to have a patent. [00:27:31] Speaker 04: More decisions you might disagree with. [00:27:33] Speaker 04: Well, I don't think that it should be taken as an indication or an admission that the agency disagrees with a position if it does not interfere. [00:27:47] Speaker 05: Thank you. [00:27:47] Speaker 05: Mr. Feldman, we'll give you one minute's time. [00:27:51] Speaker 06: Go ahead. [00:27:52] Speaker 06: Thank you, Your Honor. [00:27:53] Speaker 06: At the risk of being redundant, let me pick up on some of the counsel for the Patent Office that he said estoppel is not a factor here. [00:28:03] Speaker 06: We hope it's not a factor, but that's our concern on the redundancy ground. [00:28:08] Speaker 06: In the government's brief, it said there would be no estoppel here. [00:28:13] Speaker 06: But if you noticed, AVID didn't say that in its brief. [00:28:17] Speaker 06: And my partner, Mr. Yun, is going to go back and try what's left, claims 1720. [00:28:25] Speaker 06: wouldn't shock anybody if their avid took the position that were stopped from raising the admitted prior art because it had been presented to the patent office. [00:28:36] Speaker 06: As you said, well, maybe they rejected it. [00:28:38] Speaker 06: Did they put it aside or did they reject it? [00:28:40] Speaker 06: So if I got nothing else from the panel but a clear ruling that there's no estoppel on grounds presented to but not ruled upon by the PTAP, that would almost make the trip worthwhile. [00:28:53] Speaker 05: technically be an advisory opinion, right? [00:28:55] Speaker 05: We don't have those facts in front of us. [00:28:57] Speaker 05: I mean, I see your point that those alternate grounds, you could not raise them in this particular proceeding. [00:29:06] Speaker 05: They were, in fact, not raised because you were blocked from raising them. [00:29:11] Speaker 05: So I completely understand the point why there maybe shouldn't be a estoppel here, but I don't know if that means that we can actually opine on that. [00:29:20] Speaker 06: I prefer to call it teaching rather than an advisory opinion. [00:29:23] Speaker 06: And it would certainly be of use to the district court deciding the case, I think. [00:29:28] Speaker 06: On redundancy, I want to reiterate, one could, given what this court is doing with various procedures that the PTAB is adopting, one could imagine you ruling if the issue were squarely presented and unavoidable, that they can't just punt on an issue, that it isn't permitted by the statute. [00:29:49] Speaker 06: They can say we're too busy. [00:29:51] Speaker 06: They can say this is redundant of another proceeding, but that within a proceeding, they've got to reach them all. [00:29:58] Speaker 06: But you don't need to do that here. [00:30:00] Speaker 06: This is a much simpler case on redundancy grounds, which is having changed the board's view as to claim 11 and half full, you then needed to reach the admitted prior art because it's squarely in place. [00:30:18] Speaker 06: I want to talk briefly about AVID's comments on how they were sandbagged. [00:30:24] Speaker 06: And as Werner Wolf used to say, let's go to the videotape. [00:30:29] Speaker 06: This is AVID's response below, A52627. [00:30:34] Speaker 06: Quote, there is no providing video data to the remaining video decompression arrays, ellipses, a predefined period of time [00:30:46] Speaker 06: after the first video data rate begins receiving the video data at the first rate," close quote. [00:30:52] Speaker 06: And that's what we responded to. [00:30:54] Speaker 06: So whether or not the exact words were in the petition or not, it can't be we're all lawyers. [00:31:00] Speaker 06: It can't be that when you're doing a reply brief and the opposing party in their opposition brief says, x is not true, that you're not allowed to say, actually, x is true, which is what we did here. [00:31:13] Speaker 06: With respect to this not being in the petition, [00:31:16] Speaker 06: Again, and I'm now talking just about Haskell, not about the voluminous applied, admitted prior art. [00:31:23] Speaker 06: With respect to claim 11 in paragraph 129 of Zager, which was all tied up with the petition, Dr. Zager said, claim 11 describes usage of the aforementioned system of known components in a known arrangement as fully disclosed in admitted prior art, including Allen. [00:31:44] Speaker 06: For example, [00:31:45] Speaker 06: Operation of the first switch is merely operation of a prior art component in a known arrangement, so as to cause the video data decompression arrays to receive data at some controlled rate at some predefined period of time after the change in state. [00:32:04] Speaker 06: So the notion that we didn't address predefined period of time until the reply brief is not correct, the other portion [00:32:12] Speaker 06: But again, I would direct the court to his house. [00:32:14] Speaker 05: Mr. Feldman, can this be your last point? [00:32:15] Speaker 06: You're out of time. [00:32:17] Speaker 06: I appreciate your patience and generosity, and I'm happy to submit. [00:32:21] Speaker 06: Thank you. [00:32:21] Speaker 06: Thank you. [00:32:22] Speaker 06: Case is submitted.