[00:00:00] Speaker 03:
There's 1680 in intercarrier communications.

[00:00:04] Speaker 03:
Mr. Greenspan.

[00:00:05] Speaker 04:
Thank you, Your Honors.

[00:00:06] Speaker 04:
And good morning, Your Honors.

[00:00:07] Speaker 04:
This appeal raises sequential points of error.

[00:00:12] Speaker 04:
It's the common situation where if you agree with the patentee on the first point of error, you don't need to reach the second, et cetera, and so on.

[00:00:19] Speaker 04:
And the first point being, then it does not anticipate.

[00:00:23] Speaker 04:
And that's supported by the original examiner's failure to use it to anticipate or prevent

[00:00:29] Speaker 04:
with full patentability.

[00:00:32] Speaker 04:
The original examiner considered Bennett.

[00:00:34] Speaker 03:
Well, apart from that, what argument do you have that it doesn't anticipate?

[00:00:39] Speaker 04:
Well, there are two, Your Honor.

[00:00:40] Speaker 04:
One is that the Bennett prior art, such as it is, if it is prior art, we'll get to that.

[00:00:46] Speaker 04:
The Bennett reference doesn't show a separate addressing in an embodiment that also, so a separate addressing from the payload of a message

[00:00:58] Speaker 04:
in an embodiment that matches all the other claim limitations.

[00:01:01] Speaker 03:
Well, I don't understand.

[00:01:02] Speaker 03:
The claim doesn't require that the address be separate from the text, does it?

[00:01:07] Speaker 04:
Well, Your Honor, in our reply brief, we cited the precedents of this court that say when you call out different limitations as separate things within a claim, then they must be construed separately.

[00:01:19] Speaker 03:
And in the briefing, we also... No, but I don't think you're answering my question.

[00:01:21] Speaker 03:
What is it in the specification or the claim that indicates that it has to be separate from the body of the message?

[00:01:29] Speaker 04:
I'll give you the claim first and then the specification.

[00:01:32] Speaker 04:
In the claim, we specifically call out a user payload.

[00:01:37] Speaker 04:
That's also known as a synonym for the body of the message.

[00:01:41] Speaker 04:
And then we separately say that the user payload is addressed with a phone number.

[00:01:46] Speaker 04:
And if you look in the specification, I would commend your honor's attention to column 11, lines 30 through 35.

[00:01:53] Speaker 04:
That's a location in the specification where

[00:01:57] Speaker 04:
the body of the message is described as separate from the phone number that has the syntax added.

[00:02:02] Speaker 04:
They're carried forth in the workflow of the idea of the software of the machine as separate things.

[00:02:11] Speaker 04:
So the specification certainly supports separate treatment in the claim.

[00:02:15] Speaker 04:
And if that answers your question, Your Honor, I'll move on to that.

[00:02:19] Speaker 04:
Even if we had issues with anticipation, the second point of appeal is that the Rule 131 declaration

[00:02:27] Speaker 04:
satisfied at least the minimum legal standards to annotate Bennett, which was a section 102E reference.

[00:02:35] Speaker 04:
These are all issues that are amply brief.

[00:02:36] Speaker 03:
The declaration didn't discuss reduction to practice, correct?

[00:02:41] Speaker 04:
The page that the inventor signed didn't have the words reduction to practice.

[00:02:45] Speaker 04:
That's correct, Your Honor.

[00:02:47] Speaker 04:
But the page the inventor signed did say, be attached to exhibit.

[00:02:51] Speaker 04:
I'm paraphrasing a little bit now.

[00:02:52] Speaker 04:
But be attached to exhibit showed that I invented the subject matter of the invention beforehand.

[00:02:57] Speaker 03:
And we know from the President's... And they're supposed to infer from that that he's talking about reduction to practice?

[00:03:03] Speaker 04:
Well, I agree that that is a weak point in our argument.

[00:03:06] Speaker 04:
I agree that this was not a declaration that was written in the way that I would write it, in the way that Your Honors would expect it.

[00:03:13] Speaker 04:
So the question is that it's satisfied by the minimum legal standards.

[00:03:17] Speaker 04:
And that also segues into the administrative due process issue, which is really where I'd like to focus my comments today.

[00:03:24] Speaker 00:
Can I ask why was this declaration even timely in the first instance?

[00:03:30] Speaker 00:
I mean, wouldn't it have been appropriate for the examiner to simply reject it because it wasn't filed in time?

[00:03:39] Speaker 04:
That is not correct.

[00:03:40] Speaker 04:
And the reason I can tell you that with confidence, Your Honor, is the Land O'Lakes decision.

[00:03:44] Speaker 04:
I understand that's not binding precedent on this court since it's a district court decision.

[00:03:49] Speaker 04:
But it's certainly a reasoned analysis of a very analogous situation.

[00:03:54] Speaker 04:
Perhaps it might even be collateral estoppel against the Patent Office because it involved an inter partes reexamination.

[00:04:01] Speaker 04:
It involved an action closing prosecution.

[00:04:04] Speaker 04:
It involved a declaration submitted where the first critique of the declaration occurred in, or let me rephrase, there was a first declaration submitted.

[00:04:17] Speaker 04:
The action closing prosecution criticized it.

[00:04:20] Speaker 04:
Then it was resubmitted.

[00:04:22] Speaker 04:
And then the right of appeal notice said that

[00:04:24] Speaker 04:
Whatever you tried to do to fix the problem didn't work.

[00:04:27] Speaker 04:
And let's go back to what actually happened in this case, procedurally.

[00:04:31] Speaker 04:
What actually happened was that there was a non-final rejection, as there always is when inter-parties re-exam is instituted.

[00:04:38] Speaker 04:
In response to the non-final rejection, the first incorrect or insufficient not-declaration was submitted, granted.

[00:04:48] Speaker 04:
In response to that, in the action-closing prosecution,

[00:04:52] Speaker 04:
The examiner said, I have a problem with that first not declaration.

[00:04:56] Speaker 04:
It is directed to the wrong patent.

[00:04:58] Speaker 04:
I need a declaration that is explicitly directed to these specific patent claims, not a related one in the family.

[00:05:06] Speaker 04:
That's the only flaw that the examiner ever identified at a time when there is a right, a procedural right, even if it was a discretionary procedural right like in Lando Lakes, to correct it.

[00:05:18] Speaker 04:
So with the procedural rights that we had, that we know we have because of the Land O'Lakes decision, where it would have been an abuse of discretion not to allow it, we submitted the new one.

[00:05:28] Speaker 04:
The new one fixed the only flaw ever identified by the examiner at a time when there was a right to fix the problem.

[00:05:34] Speaker 04:
And at that point, it was incumbent upon the examiner to either accept it, we're now at the second action closing prosecution,

[00:05:42] Speaker 04:
or to say that there's another problem with it and reopen prosecution.

[00:05:47] Speaker 00:
You don't see a difference between submitting one declaration directed to a particular patent and then the examiner saying there's a little bit of flaw in this and then trying to fix it later and saying we don't submit any declaration related to this patent but we want you to go back and look at a different declaration in a different patent.

[00:06:11] Speaker 00:
You don't see the difference between those two?

[00:06:13] Speaker 04:
Well, I think I get the thrust of your question, Your Honor.

[00:06:17] Speaker 04:
And the answer is that we fixed the flaw identified by the examiner when it was identified, when there was a right to fix it.

[00:06:26] Speaker 04:
When the examiner approached that second declaration that fixed the problem, like I said, he had two choices.

[00:06:32] Speaker 04:
He could either allow the case because it was effective as an anti-dating declaration, or he could, in another action closing prosecution,

[00:06:41] Speaker 04:
identify more flaws if that were going to be the case.

[00:06:45] Speaker 03:
You mean he was obligated when you submitted the second application to issue another action closing prosecution rather than a rance?

[00:06:53] Speaker 04:
That's what he did in fact in this case.

[00:06:55] Speaker 04:
He issued a second action closing prosecution.

[00:06:57] Speaker 04:
where there's a mistake in that second action of closing prosecution that even my brother is on the other side of it.

[00:07:04] Speaker 03:
He didn't discuss the declaration is what you're saying.

[00:07:06] Speaker 03:
He didn't discuss the declaration until the RAND.

[00:07:09] Speaker 03:
Correct your honor.

[00:07:10] Speaker 03:
So at that point when he discussed the declaration in the RAND, did you say that you wanted to submit additional information?

[00:07:17] Speaker 04:
At that point there is absolutely no procedural right to do so.

[00:07:20] Speaker 00:
What about the petition to the director?

[00:07:22] Speaker 00:
Isn't that exactly what Land O'Lakes was talking about?

[00:07:24] Speaker 04:
There is a petition

[00:07:26] Speaker 04:
process that you can go to the director, that's correct.

[00:07:29] Speaker 00:
Right, and you didn't do that.

[00:07:30] Speaker 04:
The Land O'Lakes folks took that route.

[00:07:32] Speaker 00:
Right, so when you're saying that the district court decided this question, the district court decided what the resolution of the petition should have been.

[00:07:39] Speaker 00:
It didn't consider your circumstance where you didn't file a petition.

[00:07:46] Speaker 04:
Almost correct, Your Honor.

[00:07:47] Speaker 04:
The district court was actually in the second round of proceedings and focusing on a second round of petitions.

[00:07:53] Speaker 04:
So the applicant in that case had already

[00:07:56] Speaker 04:
gotten permission through the patent office procedures to submit an otherwise untimely declaration.

[00:08:03] Speaker 04:
That was the first declaration.

[00:08:06] Speaker 04:
It was that post-petition number one declaration that was reviewed by the examiner.

[00:08:11] Speaker 00:
So we don't have a petition before us, and isn't that what the government is going to argue that you should have petitioned?

[00:08:18] Speaker 04:
I believe the government will argue, but I'll let them speak for themselves, of course.

[00:08:23] Speaker 04:
But the answer to that is, it's in our reply brief, that what we've brought to this court, insofar as the examiner's mistakes are concerned, is something that tradition and precedent allow this court to review, which is a rejection that's intimately intertwined with the merits.

[00:08:39] Speaker 00:
Even if you didn't have to petition, didn't you at least have to raise the issue with the board?

[00:08:46] Speaker 03:
Your Honor, we did raise the issues with the board.

[00:08:48] Speaker 03:
No, you didn't say we want an opportunity to submit something now.

[00:08:53] Speaker 03:
because our declaration has been rejected as insufficient.

[00:08:58] Speaker 04:
I disagree, Your Honor, because the record does show that at least at the oral hearing, we explained that there is a power of the board to remand to complete the file.

[00:09:08] Speaker 04:
That's been briefed by both sides in this.

[00:09:10] Speaker 04:
And we did make that request to the board.

[00:09:12] Speaker 01:
But that at least phrase is kind of important.

[00:09:16] Speaker 01:
I mean, the rules of the board are you make your requests and you're briefed.

[00:09:20] Speaker 01:
That's right.

[00:09:21] Speaker 01:
And you asked them to take a judicial notice or whatever the language is.

[00:09:26] Speaker 01:
And they said, no, we don't do that.

[00:09:29] Speaker 01:
But you didn't say in a timely fashion, that is before the oral argument to the board, we would like a remand for reopening to bring this other declaration into the proceeding.

[00:09:43] Speaker 04:
I actually agree with that, Your Honor.

[00:09:45] Speaker 04:
But what we did do is we put in a footnote, we put in the body of our briefing

[00:09:49] Speaker 04:
the unfair situation that led to our eventual request at the oral argument at the hearing to remand to complete the file.

[00:09:58] Speaker 04:
We explained that it was for the very first time in the right of appeal notice that we ever got the first critique of the declaration that actually was the operative declaration for this case.

[00:10:10] Speaker 04:
So if I may turn to, again, the point of appeal that I think I'd like to focus on, the Patent Office

[00:10:19] Speaker 04:
going in a different direction from the examiner, the board going in a different direction from the examiner in the substance of why, the rationale of why it was not going to give an anti-dating effect.

[00:10:32] Speaker 04:
And this, Your Honors, is the latest in a series of cases where the patent office has moved the goal post in the middle of the game and where this court has been asked to intervene.

[00:10:43] Speaker 04:
We have, most recently, Enrique Biederman and, Your Honor, Judge O'Malley,

[00:10:47] Speaker 04:
You sat on the panel, 733 F3rd 329 from the year 2013.

[00:10:53] Speaker 04:
We have NRA.

[00:10:55] Speaker 01:
What is the gist of the real substantive difference between the examiners finding the NOTS 131 declaration insufficient, including exhibits, and the boards finding it insufficient?

[00:11:11] Speaker 04:
You'll find the examiner's treatment at A 1247 through 1253.

[00:11:17] Speaker 04:
What the examiner comes down with is a critique of a couple of the claim limitations that he believed were missing from the exhibits.

[00:11:25] Speaker 04:
He believed that it was not right to give anti-dating effect because these claim limitations were missing.

[00:11:32] Speaker 04:
When we got to the board level, after there had been enormous briefing to point out that that was an error by the examiner because the exhibits did contain or did disclose the claim limitations, the board went in a different direction and said,

[00:11:47] Speaker 04:
You know, you have a declaration signed by the inventor.

[00:11:50] Speaker 04:
We think the inventor should be the one pointing us to the claim limitations in the exhibit, and we're not going to pay very much attention to your attorney argument.

[00:11:59] Speaker 04:
Your Honor, I see I'm in my rebuttal time.

[00:12:02] Speaker 03:
All right.

[00:12:02] Speaker 03:
You want to save your rebuttal?

[00:12:03] Speaker 04:
Yes.

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

[00:12:08] Speaker 03:
Mr. Foreman?

[00:12:18] Speaker 02:
I'm going to leave the court.

[00:12:20] Speaker 02:
Intercarrier received two opportunities to annotate Bennett.

[00:12:24] Speaker 02:
The first time, all they did was point the examiner to another declaration filed in another case.

[00:12:30] Speaker 02:
And the examiner correctly said, that's not good enough.

[00:12:33] Speaker 02:
Second time, they submitted a one-page conclusory declaration that doesn't say anything about reduction of practice.

[00:12:42] Speaker 02:
And both the examiner and the board explained why that wasn't good enough.

[00:12:47] Speaker 01:
Do I take it that you have not asserted here that the rejection can be sustained on the ground that the NOTS declaration and associated materials do not demonstrate conception?

[00:13:04] Speaker 02:
That's correct.

[00:13:04] Speaker 02:
We're not focusing on conception.

[00:13:07] Speaker 01:
The whole question is either actual reduction to practice or diligence to get to the ultimate written one.

[00:13:15] Speaker 02:
That's correct, Your Honor.

[00:13:16] Speaker 02:
And with regard to actual reduction to practice, the only evidence, alleged evidence, they rely on is the use of past or present tense verbs in the proposal document.

[00:13:27] Speaker 01:
Now, did the point that the board made about actual reduction to practice appear in the examiner's rejection of the ante-dating?

[00:13:40] Speaker 02:
No, because they never raised the issue of actual reduction to practice before the examiner.

[00:13:45] Speaker 02:
If you look at their arguments.

[00:13:46] Speaker 03:
They raised it for the first time before the board.

[00:13:48] Speaker 02:
Correct.

[00:13:49] Speaker 02:
So if you look at what they raised to the examiner, they only talk about conception and diligence.

[00:13:53] Speaker 02:
And that's all the examiner analyzed, conception and diligence.

[00:13:57] Speaker 02:
When they got to the board, they changed their argument and also argued actual reduction to practice.

[00:14:05] Speaker 02:
So that's why you see that first analyzed by the board.

[00:14:09] Speaker 02:
And the board didn't, I mean, I guess the board didn't catch it as a newly raised argument.

[00:14:16] Speaker 02:
So, like I was saying, they only rely on the past or present tense usage.

[00:14:21] Speaker 00:
So you're saying for the board, it's like no good deed goes unpunished instead of saying we won't consider it because you didn't raise it before, they consider it and now they're saying it's a new ground of rejection.

[00:14:32] Speaker 01:
Essentially, that's correct.

[00:14:35] Speaker 01:
I mean, aside from, and I don't mean to diminish this, the no good deed goes unpunished, but why isn't that a new ground of rejection?

[00:14:43] Speaker 02:
It's not.

[00:14:43] Speaker 02:
I mean, just like the examiner found, the board found a lack of conception coupled with diligence.

[00:14:51] Speaker 02:
So even if you disregard the issue of reduction of practice, the board affirmed the findings of the examiner.

[00:14:59] Speaker 01:
But I guess I do want to be clear about this.

[00:15:02] Speaker 01:
You really, really do not make an argument in your brief that this can stand on the basis of no showing of conception.

[00:15:12] Speaker 01:
Correct.

[00:15:13] Speaker 01:
In fact, you disclaim it in what is a footnote nine on page 28.

[00:15:16] Speaker 02:
That's correct.

[00:15:17] Speaker 02:
But with conception, you have to show diligence as well.

[00:15:20] Speaker 02:
And there's clearly no evidence of diligence here.

[00:15:22] Speaker 02:
But the examiner found no evidence.

[00:15:24] Speaker 03:
Well, reduction to practice would be an alternative to conception and diligence.

[00:15:29] Speaker 03:
And it's hard to see how you can have a new ground of projection if they elect to bring something in and address it.

[00:15:41] Speaker 03:
he brought in for the first time before the board.

[00:15:44] Speaker 02:
I agree.

[00:15:45] Speaker 02:
I agree, Your Honor.

[00:15:47] Speaker 02:
But getting back to your questions, both the examiner clearly explained why there was a lack of diligence because that one page declaration from Mr. Knopf don't even have any evidence of what the attorney was doing.

[00:16:03] Speaker 02:
When he turned to receive the documents, what he was doing during that time before he filed.

[00:16:09] Speaker 01:
The other side doesn't.

[00:16:10] Speaker 01:
doesn't, I think, argue that the Knox declaration shows diligence.

[00:16:16] Speaker 01:
They say we should have been able to use the Bowling or something, the Bowman declaration from the other proceeding, and that would have shown it.

[00:16:26] Speaker 02:
Correct.

[00:16:27] Speaker 02:
Yeah, they dropped all reliance on the Knox declaration for purposes of diligence.

[00:16:33] Speaker 02:
And now they want, at the last minute, they first raised this Bowman declaration in a footnote in their

[00:16:39] Speaker 02:
appeal brief to the board, and that's simply under our rule that's just simply too late and the board has no duty to take notice of it.

[00:16:49] Speaker 00:
Well, they did offer that to the examiner in the first instance.

[00:16:53] Speaker 02:
No, they never offered the Bollman attorney declaration to the examiner.

[00:16:59] Speaker 02:
It was first raised to the PTO in a footnote in the appeal brief to the board.

[00:17:06] Speaker 02:
and the board correctly said that it's just too late in the process for us to look at this.

[00:17:12] Speaker 02:
So turning to the actual anticipation question, I don't think there's really much of an argument in this case.

[00:17:22] Speaker 02:
The only argument they raise is that the main has to be, or the main has to be separate, wholly separate and distinct from the body of the text message.

[00:17:36] Speaker 02:
There's really nothing in the claim language or nothing in the specification that supports that.

[00:17:42] Speaker 02:
They are separate things, but there's nothing that says that they can't be contained within the same data field that's being sent.

[00:17:51] Speaker 02:
And even if you were to make that claim construction finding, there is an example in the Bennett reference where the address is put in the to field instead of in the body of the message.

[00:18:06] Speaker 02:
I think any way you come out on the claim construction issue, Bennett is still anticipated.

[00:18:11] Speaker 01:
And that piece, that last bit, the two field, was not discussed by the board?

[00:18:16] Speaker 02:
Is that right?

[00:18:16] Speaker 02:
No, it was discussed.

[00:18:17] Speaker 02:
It's been discussed throughout the entire case, from the re-examination request to the examiner's office actions to the board decision.

[00:18:26] Speaker 02:
Everything cites that passage from Bennett.

[00:18:30] Speaker 02:
So this is not a new argument, a new ground being raised for the board.

[00:18:36] Speaker 02:
Finally, I just want to talk briefly about these procedural arguments that they raise about, did the examiner do things correctly?

[00:18:47] Speaker 02:
Did the examiner cause them to be prejudiced?

[00:18:52] Speaker 02:
All of these arguments should have been raised in a petition to the director.

[00:18:56] Speaker 02:
This court has said that that's the appropriate way for these arguments to be addressed.

[00:19:02] Speaker 02:
They never raised them.

[00:19:04] Speaker 02:
So this court has no jurisdiction to decide them.

[00:19:09] Speaker 02:
Are there no further questions?

[00:19:11] Speaker 03:
OK.

[00:19:11] Speaker 02:
Thank you, Mr. Foreman.

[00:19:12] Speaker ?:
Thank you.

[00:19:14] Speaker 03:
Mr. Greenspan?

[00:19:17] Speaker 04:
Thank you, Judge.

[00:19:17] Speaker 04:
And Your Honor, Judge Dyke, this has been thoroughly briefed.

[00:19:20] Speaker 04:
But when you go to the two-field disclosure in the reference,

[00:19:25] Speaker 04:
if you follow through what that embodiment is, it's now missing different claim limitations.

[00:19:32] Speaker 04:
And we point that out in our briefs.

[00:19:33] Speaker 04:
You can't mix the embodiment to get an anticipation.

[00:19:36] Speaker 04:
And then we also point out in the brief that while my brother is correct as to I think the claims dependent from claim seven, that that section had been noted by the requester and then incorporated by the examiner and so forth through the board as to claims one through six and then everything

[00:19:54] Speaker 04:
from 15 on, that was definitely a new ground of rejection.

[00:19:58] Speaker 04:
There's absolutely no question in the record that that's the case.

[00:20:02] Speaker 04:
Looking very quickly at why was reduction of practice raised for the first time for the board?

[00:20:08] Speaker 04:
It's obvious.

[00:20:09] Speaker 04:
It's because a critique of the actual operative not declaration didn't exist for the first time from the patent office until the right of appeal notice.

[00:20:19] Speaker 04:
The appeal, short of an extraordinary

[00:20:22] Speaker 03:
I mean, you had to invent a new argument because you didn't know why the old argument was being rejected.

[00:20:27] Speaker 04:
Well, this is the Administrative Procedure Act, Your Honor.

[00:20:30] Speaker 04:
It's not our burden.

[00:20:31] Speaker 03:
I don't think the Administrative Procedure Act gives you the right to raise new issues on appeal within the agency that you didn't raise in the first instance.

[00:20:40] Speaker 04:
Agreed, except that it does require that the agency present the issue first to a litigant.

[00:20:47] Speaker 04:
And this court's statement of the law about new grounds of rejection is absolutely on point.

[00:20:52] Speaker 04:
It's that the applicant must be given a fair opportunity to react to the thrust of the rejection before the examiner.

[00:21:00] Speaker 04:
When you raise a new argument to the board?

[00:21:04] Speaker 04:
It was only in response to the unfairness of the absence of the administrative due process before the examiner.

[00:21:12] Speaker 04:
So unless there are further questions, Your Honor, I thank you.

[00:21:16] Speaker 04:
OK.

[00:21:16] Speaker 04:
Thank you, Mr. Rinsta.