[00:00:01] Speaker 02: The next case for argument is 161474, IPCOM versus HTC. [00:00:55] Speaker 02: Mr. Stockwell, whenever you're ready. [00:00:59] Speaker 00: May it please the court. [00:01:00] Speaker 00: I'm Mitch Stockwell. [00:01:01] Speaker 00: I represent IPCOM. [00:01:04] Speaker 00: I want to start with the arrangement claim element and focus particularly on the board's decision at page A18. [00:01:13] Speaker 00: That was after the board had talked about the claims that had that arrangement element. [00:01:18] Speaker 00: 1, 18, 30, and 34 have them, although the board focused on claim 1 and some of its dependents. [00:01:25] Speaker 00: After summarizing the algorithm we have proposed, the three-step algorithm, the board said, we're not persuaded by patent owner that any of the purported method steps must be imported into Claim 1. [00:01:36] Speaker 00: Therefore, we need not consider whether or not the combination of Anderson and McDonald discloses or suggests those steps. [00:01:43] Speaker 00: And it then held that the examiner erred in refusing to adopt the rejection. [00:01:50] Speaker 00: several errors here. [00:01:51] Speaker 00: The first is this court had already held in the HDC IPCOM district court appeal that this was a means plus function element. [00:01:59] Speaker 00: It did require a structural algorithm. [00:02:01] Speaker 00: There is no such algorithm set forth in the board's decision. [00:02:04] Speaker 00: And there's no comparison of that algorithm to Anderson and McDonald. [00:02:08] Speaker 00: There's not even a comparison, if you look closely at the decision, to citing where in Anderson and McDonald this reactivating is occurring, at least in this section talking about claims one through eight. [00:02:20] Speaker 00: So we submit that at least a remand is required here. [00:02:25] Speaker 00: The board didn't construe a means plus function term. [00:02:29] Speaker 00: It needs to do so. [00:02:30] Speaker 00: It needs to apply that construed term to the prior art. [00:02:33] Speaker 00: But we would contend that an outright reversal is actually appropriate. [00:02:38] Speaker 00: First, because we think our claim construction is right, we identified three steps to the algorithm. [00:02:45] Speaker 00: The first of which was that if you look at figure five, [00:02:49] Speaker 03: But just to stay on your point about wanting an outright reversal, we don't have, under your understanding of the board's decision, any actual comparison of the structures or so-called structures in the prior art references up against your claim construction and corresponding algorithm from your spec. [00:03:12] Speaker 03: So that would be a fact finding. [00:03:14] Speaker 03: How could you ask us to do a fact finding at this point? [00:03:16] Speaker 00: Well, Your Honor, [00:03:18] Speaker 00: If you look at our opening brief at pages 37 through 42, we pointed out that if the court adopted our construction, the three-step algorithm, we explained here's why none of the disclosures in Anderson and McDonald disclose those algorithmic steps. [00:03:42] Speaker 00: And we argued that extensively. [00:03:43] Speaker 00: HTC, in their response brief, did not point to any evidence [00:03:48] Speaker 00: that would suggest that Anderson or McDonald actually disclosed all three of those algorithmic steps. [00:03:55] Speaker 03: But let's say the point they're making is, if we assume that a comparison has to be made, [00:04:03] Speaker 03: they are recommending that it be made by the board in the first instance. [00:04:06] Speaker 03: And it wouldn't be proper for us, as an appellate court, to go make that fact finding in the first instance. [00:04:12] Speaker 00: Well, Your Honor, I do know that there are several decisions this court has made in which when it finds a plain error in claim construction, it looks at the record. [00:04:23] Speaker 00: It will reverse outright. [00:04:25] Speaker 00: Pride mobility versus per mobile, there the claim required a mounting plate that was, I think it was [00:04:32] Speaker 00: perpendicular of the board so that could reach parallel. [00:04:35] Speaker 00: The record was such that you corrected the claim construction. [00:04:38] Speaker 00: You looked at the record and said, we're just going to reverse. [00:04:40] Speaker 00: There's no need for a remand here. [00:04:42] Speaker 00: And we contend the record is such here because HTC has not identified any evidence in Anderson or McDonald. [00:04:48] Speaker 00: And we have pointed to evidence, recall, that the examiner had twice allowed these claims and been reversed by the board. [00:04:55] Speaker 00: And I would commend the court to look at A14755 through 60. [00:05:01] Speaker 00: In five pages of analysis, the examiner goes through, explains why he's adopting the algorithm, and then analyzes the references and combinations, and particularly the McDonald combination, and rejects the notion that the algorithmic steps are there. [00:05:17] Speaker 00: And it's a very detailed analysis. [00:05:19] Speaker 00: That is uncontested in the record. [00:05:21] Speaker 00: So we have record support for the notion that these references simply do not teach the algorithm. [00:05:27] Speaker 03: I don't know what you mean by it's uncontested. [00:05:30] Speaker 03: HTC make an argument to the board that, in fact, this algorithm is, in fact, taught by prior references? [00:05:39] Speaker 03: At least McDonald's. [00:05:40] Speaker 03: Or maybe not specifically taught, but at least rendered obvious in light of the teachings of McDonald's. [00:05:46] Speaker 00: HTC argued to the board there was a two-step algorithm. [00:05:51] Speaker 03: HTC's two-step algorithm was... But are you saying that they waived any argument that McDonald's teaches [00:06:00] Speaker 03: your three-step? [00:06:04] Speaker 00: They waived it? [00:06:05] Speaker 00: They didn't ever argue it? [00:06:06] Speaker 00: I don't know that I would go that far, Your Honor, because I believe their principal argument was there was a two-step algorithm. [00:06:13] Speaker 00: They had backup factual arguments about whether McDonald and Anderson taught all three of the steps we had identified in the algorithm. [00:06:22] Speaker 00: What I'm saying is if you look at the examiner's analysis, going through that record and analyzing what HTC argued [00:06:29] Speaker 00: There is a very clear, very detailed analysis by the examiner indicating why that's simply wrong. [00:06:35] Speaker 00: And on this record, it's sufficient for reversal. [00:06:38] Speaker 00: That's why we contend reversal suffices here. [00:06:42] Speaker 01: Well, how do we know what the correct algorithm in the spec is for this move on the pension? [00:06:50] Speaker 00: I think that comes down, Your Honor, to, in particular, the linking issue. [00:06:55] Speaker 00: You look at our claim. [00:06:57] Speaker 01: Your argument is that the board rejected your three-step algorithm, that they didn't implicitly accept a two-step algorithm that was argued by your colleague, so that the board didn't say what algorithm it was looking to. [00:07:15] Speaker 01: Nonetheless, the board said, in essence, there's a mystery algorithm out there, and the mystery algorithm is the prior art reads on it. [00:07:24] Speaker 01: So you said, well, we can't review that. [00:07:27] Speaker 01: So why should this court decide exactly what the mystery algorithm is? [00:07:35] Speaker 00: Well, Your Honor, I would agree with everything you said, except I'm not quite sure they agreed there was an algorithm there. [00:07:42] Speaker 00: But for purposes of your question, assuming that. [00:07:44] Speaker 01: Well, they said there was. [00:07:46] Speaker 01: You said that there was a three-step algorithm, and there was an algorithm that required the first step. [00:07:52] Speaker 01: And they said in the board, no, no, no. [00:07:54] Speaker 01: There's another algorithm that doesn't require the first step. [00:07:57] Speaker 01: So they're pointing to an algorithm, OK? [00:08:00] Speaker 00: Accepting your question, again. [00:08:02] Speaker 01: And then the second, they said, your second step, guess what? [00:08:05] Speaker 01: Even if you're right that there is a disclosure of the second step of the three-step algorithm, guess what? [00:08:11] Speaker 01: There's another disclosure of another algorithm that doesn't require the second step. [00:08:14] Speaker 01: And then they said, guess what? [00:08:16] Speaker 01: Your third step. [00:08:18] Speaker 01: Yeah. [00:08:19] Speaker 01: It's disclosed in the spec, but guess what? [00:08:22] Speaker 01: There's another algorithm that doesn't disclose it. [00:08:24] Speaker 01: But they never tied up the three algorithms that we're talking about, right? [00:08:31] Speaker 01: And maybe you think you know what those three steps are, but I sure don't. [00:08:36] Speaker 01: And how do I know whether the prior art reads on what I call the mystery algorithm? [00:08:40] Speaker 00: So I think your original question is, why not remand to let the board [00:08:45] Speaker 00: find the algorithm in the first instance. [00:08:47] Speaker 00: First, that is purely a legal issue of claim construction. [00:08:49] Speaker 00: Second, this proceeding has been going on for seven years. [00:08:52] Speaker 00: We have not been getting special dispatch. [00:08:55] Speaker 00: This court will routinely decide those sorts of claim constructions on appeal. [00:08:59] Speaker 00: Third, when we argued for our algorithm, we submitted the testimony of an expert, Dr. Vijay Mattase. [00:09:06] Speaker 00: That was uncontested. [00:09:09] Speaker 00: No one contested his testimony. [00:09:13] Speaker 00: about how the three steps of the algorithm linked up to the claim elements. [00:09:18] Speaker 00: HTC's expert accepted, arguendo, Dr. Mattisetti's testimony on that. [00:09:24] Speaker 00: So I think you have a very clear record here in which you can adopt our three-step algorithm. [00:09:29] Speaker 03: But the other side said, well, then there's another algorithm running around in the spec. [00:09:35] Speaker 03: So the debate isn't so much whether you're correct that there's three steps [00:09:41] Speaker 03: in somewhere in the spec that corresponds to the three steps you're proposing, the real debate is whether there's an alternative also disclosed in the spec. [00:09:52] Speaker 00: I would agree with that, Your Honor, and there's two aspects to that debate. [00:09:55] Speaker 00: First, there's the aspect you just raised, the two-step algorithm that HTC proposes, and second, there's the point that you made, Your Honor, where the boards seem to go through each one of our steps and say, oh, but there's something else in the spec here, and maybe that implies there's another embodiment or another algorithm. [00:10:10] Speaker 00: With respect to the first point, that HTC raised the two-step algorithm, I want to refer the court back to the HTC IPCOM decision. [00:10:19] Speaker 00: In that decision, at page 1278, you were reciting the district court's construction of this term, where the district court found the arrangement was a processor and transceiver, quote, program to formulate and send messages to reactivate the link, comma, if the handover is unsuccessful. [00:10:38] Speaker 00: And then at page 1280, because in that appeal, HTC had tried at the last minute to argue that there was no support for an algorithm. [00:10:49] Speaker 00: You characterized that dispute. [00:10:51] Speaker 00: You said, while IPCON maintained the 830 patent contains such a qualifying algorithm, the district court never analyzed whether the claim was true. [00:11:00] Speaker 00: There's thus no finding in the record specifically addressing whether the structure actually needed for the type of functional claim at issue can be found. [00:11:08] Speaker 00: Now, I raise that because the algorithm that the district court stated, program to formulate and send messages to reactivate the link if the handover is unsuccessful, is substantively very similar to what HTC identifies at page 32 of their brief. [00:11:26] Speaker 00: The cell phone determines that a handover attempt is unsuccessful. [00:11:29] Speaker 00: That correlates to the district courts if the handover is unsuccessful. [00:11:33] Speaker 00: And then two, it sends a simple message to the base station to which it was originally linked to reactivate the link. [00:11:40] Speaker 00: That correlates to program to formulate and send messages to reactivate the link. [00:11:45] Speaker 00: So this court has already looked at the essence of that which HTC was proposing and saying that doesn't look like an algorithm to us in the context of the HTC IPCOM decision. [00:11:57] Speaker 00: That then leaves the three points that the patent office made. [00:12:01] Speaker 00: with respect to our algorithm. [00:12:03] Speaker 00: We had identified as the first step. [00:12:06] Speaker 03: I was wondering, do you think it's possible that the patent board wrote such a funny decision because it doesn't really think there's an algorithm disclosed in the specification? [00:12:16] Speaker 03: That these sort of functional steps of, you know, this component sends a message to that component, that component sends a message to this component. [00:12:26] Speaker 03: That those sorts of circulating messages [00:12:29] Speaker 03: don't represent really an algorithm as this court has conceived of the term algorithm when it comes to these computer implemented means plus function limitations, and you go back and look at the spec for corresponding structure, i.e. [00:12:42] Speaker 03: an algorithm. [00:12:44] Speaker 00: Your Honor, I would say no. [00:12:45] Speaker 00: First off, such 112 issues were never raised below, either by any party or the board. [00:12:52] Speaker 00: And secondly, when I look at the board's decision, [00:12:56] Speaker 00: It seems to be skeptical about the notion that the arrangement is even a means plus function term. [00:13:04] Speaker 00: Or it could be skeptical that there's even an algorithm. [00:13:09] Speaker 00: I don't read that, because what I see is they say even if the so-called algorithm is responding to what we suggest. [00:13:21] Speaker 00: But when I talk about the 112.6 issue, whether it's a means plus function, they say even if this is a means plus function term. [00:13:27] Speaker 00: So I see some skepticism over that aspect, not the sufficiency of the algorithm. [00:13:33] Speaker 00: But with respect to their critique of our messages, it's our contention that all of the critiques as to what our algorithm is, it boils down to they're looking at portions of the specification and saying, well, that's another embodiment, and this is another embodiment, and that's another embodiment. [00:13:50] Speaker 00: When you read it in context, those are not embodiments. [00:13:52] Speaker 00: The algorithm is plainly set out with respect to figure five. [00:13:55] Speaker 00: That's the only figure that's disclosed where, in fact, the handover is unsuccessful and a link is successfully reactivated. [00:14:02] Speaker 00: And that requires the three steps of the algorithm we proposed. [00:14:06] Speaker 02: I know we've given you a lot of questions, but you want to reserve the remainder of your rebuttal. [00:14:11] Speaker 00: Thank you, Your Honor. [00:14:13] Speaker 00: I would like to just rest on our brief with respect to [00:14:18] Speaker 00: The issue of claims 31 through 37, if that comes up, I would like a little rebuttal. [00:14:23] Speaker 00: Thank you. [00:14:30] Speaker 04: Good morning, Your Honors. [00:14:31] Speaker 04: My name is Michael Elbaugh on behalf of HTC. [00:14:34] Speaker 04: Your Honors, the board did construe the means plus function limitation. [00:14:39] Speaker 04: And we said it did it implicitly because it didn't say here is the algorithm. [00:14:43] Speaker 04: But when you review the board's decision, it did provide all that's needed for construction. [00:14:48] Speaker 04: All that's needed in a means plus function limitation is to construe what the function is, and then find the corresponding structure in the specification. [00:14:56] Speaker 01: Why don't you walk us through the opinion and show us where they picked out algorithmic structure from the spec. [00:15:08] Speaker 01: They said that's what it is, and then told us that's probably what it reads on it. [00:15:12] Speaker 04: Absolutely, Your Honor. [00:15:14] Speaker 04: The way that the board did this is by critiquing [00:15:17] Speaker 04: the algorithmic structure that IPCOM pointed out. [00:15:20] Speaker 04: And then it responded and said, well, wait. [00:15:24] Speaker 04: There's other algorithmic structure that says the opposite or that provides another example. [00:15:29] Speaker 04: And it did that twice. [00:15:30] Speaker 04: And by doing that, it provided the carton structure. [00:15:32] Speaker 01: I thought they did it on all three ones. [00:15:34] Speaker 04: Well, for all three, it said it wasn't required. [00:15:38] Speaker 04: But it gave two sites that I'm going to read out at appendix page 16 and 17. [00:15:43] Speaker 04: The first one. [00:15:46] Speaker 04: was in connection with the rejection message that they were pointing to, that IPCOM said there had to be a rejection message coming. [00:15:54] Speaker 04: And in response, the board said that that wasn't required. [00:16:00] Speaker 04: For example, the specification discloses an algorithm structure in which the mobile station was unable to register at another base station. [00:16:08] Speaker 04: In this case, due to a rejection. [00:16:10] Speaker 04: But in some cases, this is because no other base station is receiving. [00:16:14] Speaker 04: And it's citing to the patent specification [00:16:16] Speaker 04: at column 7, line 66 to column 8, line 1. [00:16:20] Speaker 04: That is specifically saying here is algorithm structure. [00:16:24] Speaker 04: And look at that, the structure itself. [00:16:26] Speaker 03: But by itself, that's not algorithm structure that corresponds to the function of reactivating a link to the first base station, right? [00:16:32] Speaker 03: That's just about step one, whether step one of the other side's proposed three-step algorithm is required. [00:16:40] Speaker 04: This relates to step one, not their step. [00:16:43] Speaker 04: Am I right or am I wrong? [00:16:44] Speaker 04: That's incorrect, your honor. [00:16:45] Speaker 04: The step one is not whether a rejection is necessary. [00:16:49] Speaker 04: The step one is not that it has to receive a rejection. [00:16:55] Speaker 04: The step one is that it has to make the determination that the handover was unsuccessful. [00:16:59] Speaker 04: And it doesn't matter how it makes that determination. [00:17:01] Speaker 04: That's the point of what the board is quoting from here. [00:17:04] Speaker 04: They're specifically saying the mobile station has to determine that the handover was unsuccessful. [00:17:09] Speaker 04: That's the first step. [00:17:11] Speaker 04: and due to rejection, but it can be for other reasons as well. [00:17:15] Speaker 04: So what the board is specifically saying is we agree that there's an algorithm. [00:17:18] Speaker 04: If there is an algorithm, and I think in response to your question before, I don't know if the board was saying we're not so sure there's an algorithm. [00:17:24] Speaker 04: I think the board was saying we're not so sure that an arrangement is a means plus function limitation. [00:17:29] Speaker 04: But nonetheless, our job is to entertain the arguments that IPCOM raised in its request to reopen prosecution, and we'll respond to them. [00:17:38] Speaker 04: And that's exactly what it was doing. [00:17:40] Speaker 01: They knock their arguments down. [00:17:42] Speaker 01: And in doing so? [00:17:43] Speaker 01: Fine. [00:17:43] Speaker 01: They knock their arguments down. [00:17:44] Speaker 01: And then they say, this particular means limitation is obvious. [00:17:51] Speaker 01: Yes. [00:17:52] Speaker 01: Now, they can't say it's obvious without identifying some structure as obvious. [00:17:59] Speaker 01: They've got to identify some structure. [00:18:01] Speaker 01: And then they've got to read prior art against that structure. [00:18:04] Speaker 01: Of course. [00:18:04] Speaker 01: I'm not very smart. [00:18:05] Speaker 01: I didn't see in here where the board was saying, ha ha, they picked the wrong structure. [00:18:12] Speaker 01: Here's the right structure. [00:18:14] Speaker 01: They picked the wrong structure. [00:18:16] Speaker 01: And so even if their structure isn't taught by the prior art, we don't care. [00:18:22] Speaker 01: So here's the structure, but they never said what the structure was, and they didn't say what prior art read on it. [00:18:28] Speaker 04: Your Honor, they did say what the structure was, and then they did show where it was read. [00:18:32] Speaker 04: And let me show you. [00:18:33] Speaker 04: And it was implicit. [00:18:34] Speaker 04: It's indirect. [00:18:35] Speaker 04: But they did it. [00:18:36] Speaker 04: And let me explain how. [00:18:37] Speaker 04: The first step is right there at appendix page 16. [00:18:40] Speaker 01: If we agree with you. [00:18:42] Speaker 01: Sorry? [00:18:42] Speaker 01: If we agree with you that they are, in the cases in which there's no receipt of a rejection, there is an algorithm. [00:18:52] Speaker 04: Because all they're saying is that what's shown at appendix page 16, referring to the specification, is that the first step is determining that the handover failed. [00:19:03] Speaker 04: The next step [00:19:04] Speaker 04: which is much clearer, is at appendix page 17, at the end of the full paragraph in the middle. [00:19:11] Speaker 04: And it says, for example, this is getting to IPCOM's argument that you have to get a confirmation message. [00:19:18] Speaker 04: And they're saying the specification discloses algorithm structure in which, quote, if the search for a new base station is unsuccessful, the mobile station re-registers at its old base station and keeps its previous settings. [00:19:32] Speaker 04: That's the second step of the algorithm. [00:19:34] Speaker 01: In this algorithm structure, there's no disclosure of a step in which a link is reestablished by receiving a message. [00:19:41] Speaker 01: And what am I supposed to make of that sentence? [00:19:43] Speaker 04: What they're saying is, first they're showing what's not necessarily algorithm structure, and then they're saying what is. [00:19:50] Speaker 04: The sentence that you're reading says, even assuming the patent owner is correct, that it discloses an algorithm of reestablishing the link by getting a confirmation message, [00:19:59] Speaker 04: They're saying the specification also discloses algorithm structure where that's not required. [00:20:04] Speaker 04: And so right here is where the board is explaining this is what the arrangement for reactivating the link is. [00:20:11] Speaker 04: You figure out that your handover failed and you re-register back with the first base station. [00:20:17] Speaker 04: All that matters is this is a mobile station claim for all of them that are at issue in this appeal. [00:20:21] Speaker 03: Let's assume for the moment that you have a debate that the board cobbled together a second so-called algorithm structure. [00:20:29] Speaker 03: Let's also assume for the moment I'm a little skeptical that they actually did the A plus B plus C formulation to create that algorithm structure, and it was really much more piecemeal. [00:20:42] Speaker 03: But there's still the fundamental problem that Judge Clevenger pointed out, which is that there's no comparison between any form of any so-called algorithm structure from the spec [00:20:55] Speaker 03: to Anderson-McDonald or the tertiary references. [00:21:00] Speaker 03: So there's a problem here, just on that fundamental level. [00:21:04] Speaker 04: Your Honor, I agree that there was no comparison of the proper construction of the two-step algorithm to GSM and to PACS, but that's because the board decided it didn't need to go there. [00:21:18] Speaker 04: What the board did was we filed, if you turn to appendix page 20 at the decision, it says, [00:21:25] Speaker 04: right after decision. [00:21:27] Speaker 04: We reverse the examiner's non-adoption of the rejection of claims 1, 5-17, 19-22, and 24 under US-03, 35 U.S.C. [00:21:38] Speaker 04: 103, as unpatentable over Anderson and McDonald. [00:21:42] Speaker 04: That's the part that's relevant here. [00:21:43] Speaker 04: So what the Patent Office is doing, and keep in mind, this is a decision [00:21:48] Speaker 04: This is the second round at the board after first. [00:21:51] Speaker 03: OK, you need to do a heck of a lot of translating here. [00:21:54] Speaker 03: So go ahead and translate that. [00:21:56] Speaker 03: What did that sentence mean to you? [00:21:57] Speaker 04: Thank you, Your Honor. [00:21:58] Speaker 04: We filed a petition in whatever year it was. [00:22:01] Speaker 03: That it adopted all of your reasoning and rationale provided in your board brief with respect to why Anderson and or McDonald teaches the arrangement for reactivating the link? [00:22:11] Speaker 04: Your Honor, when we filed our petition for re-examination, we set forth in the petition [00:22:17] Speaker 04: And that's at appendix page 339 and 334. [00:22:22] Speaker 04: We explained where in McDonald it showed the arrangement for reactivating. [00:22:27] Speaker 04: The examiner had adopted that rejection. [00:22:31] Speaker 04: The examiner then recanted, not on the arrangement for reactivating, but with regard to other steps. [00:22:37] Speaker 04: And then that got appealed. [00:22:39] Speaker 04: The issue about the arrangement for reactivating and whether it was sufficient was never argued by IPCOM. [00:22:45] Speaker 04: And so the board's original 2013 decision found that the one issue that the examiner had recounted on, the examiner was wrong, the rest of it stands. [00:22:56] Speaker 04: And so it was based upon our proposed rejection that we provided in our original petition. [00:23:01] Speaker 04: What happened then is that IPCOM sought to reopen prosecution for new evidence. [00:23:08] Speaker 04: And then they said there's additional steps. [00:23:10] Speaker 03: Is there a case you can point us to for this? [00:23:13] Speaker 03: I'll just call it elaborate theory for why we can go ahead and read the conclusion sentence at the end of a board opinion to encapsulate everything that happened in the prior seven years of the re-exam. [00:23:27] Speaker 04: Well, I can't quote an opinion to you, Your Honor. [00:23:31] Speaker 03: So let's just assume that all we really want to go off of is the four corners of this board decision. [00:23:38] Speaker 03: And on the four corners of this board decision, we see a problem. [00:23:41] Speaker 03: We see a Donaldson problem. [00:23:43] Speaker 03: then in that sense, would you agree that we need to remand this section of the opinion back to the board so that it can actually do the Donaldson analysis? [00:23:53] Speaker 04: Well, Your Honor, I still believe that this opinion is... I'm asking a hypothetical. [00:24:04] Speaker 04: Well, if the court finds that the analysis wasn't done, then of course the court should remand. [00:24:10] Speaker 04: I certainly would agree with that. [00:24:12] Speaker 04: And the court shouldn't reverse. [00:24:13] Speaker 04: It should remand. [00:24:15] Speaker 04: But I don't think that a remand is necessary, because this opinion is a reconsideration. [00:24:21] Speaker 04: And it wasn't the duty of the board to set forth a complete opinion. [00:24:28] Speaker 04: They only needed to raise the issues that were brought in front of them from IPCOM in their request to reopen prosecution and see if those carried water. [00:24:37] Speaker 04: And they found that they did not. [00:24:39] Speaker 04: IPCOM argued that they never argued before that the arrangement for reactivating wasn't found in the combination of Anderson-McDonald. [00:24:47] Speaker 04: They agreed on that. [00:24:49] Speaker 04: That was never appealed the first time. [00:24:51] Speaker 04: And so now they're saying there's additional steps that weren't considered before. [00:24:56] Speaker 04: And the board said, no, all the additional steps that you're pointing to aren't required. [00:25:01] Speaker 03: It sounds a lot like the other side's argument about why you can't challenge claims 31 to 37, because you didn't challenge claims 31 to 37 in the first place. [00:25:10] Speaker 04: Your honor, first, we did challenge claims 31 through 37. [00:25:14] Speaker 04: Not on section 103. [00:25:17] Speaker 04: According to your notice of appeal. [00:25:19] Speaker 04: Our notice of appeal could have been better. [00:25:21] Speaker 04: But our notice of appeal satisfied the requirements under 4761C, which says that you have to point out the claims. [00:25:30] Speaker 04: Now, 4161D, which is what IPCOM points to, says that the board is required to take up [00:25:40] Speaker 04: whatever grounds we propose. [00:25:42] Speaker 03: I guess the point I'm trying to make is, as soon as the other side reopened prosecution and then amended the claims, it sort of hit the reset button on the debate. [00:25:56] Speaker 03: And so just as perhaps that would allow you to now address claims 31 through 37, it also allows them to make arguments about the arrangement for reactivating the link to the first base station. [00:26:09] Speaker 04: Your Honor, my position would be, HTC's position would be, that by reopening prosecution, it opens the door for each thing that they reopened. [00:26:19] Speaker 04: And that's why 31 through 37 come in, because they actually stated in their request to reopen prosecution that although the decision on appeal references up to claims 30, patent owner presumes that the board intended to reject all claims, namely, and then said 31 through 37, [00:26:38] Speaker 04: They said they presume that, and then they went ahead and amended the claims, claim 34. [00:26:44] Speaker 04: So of course, we had an opportunity to respond to that, and it made sense that the board then addressed claims 31 through 37. [00:26:53] Speaker 04: But this other issue about the arrangement for reactivating, that was a done issue. [00:26:58] Speaker 04: That had been already adjudicated. [00:27:01] Speaker 04: The board didn't say that though. [00:27:03] Speaker 03: The board reached the issue here. [00:27:05] Speaker 03: It didn't say, why is anyone talking to me about this new interpretation of the arrangement for reactivating the link? [00:27:12] Speaker 03: I'm not going to address it, because the opportunity to have considered this was in the 2013 board decision. [00:27:19] Speaker 03: It wasn't raised then. [00:27:20] Speaker 03: I'm not going to allow it to be raised now. [00:27:22] Speaker 03: Instead, they reached the issue. [00:27:24] Speaker 03: It was argued to them. [00:27:25] Speaker 03: It was debated by both sides, and they reached the issue. [00:27:29] Speaker 03: Possibly defectively, but nevertheless, they reached it. [00:27:31] Speaker 04: Yes, certainly, Your Honor. [00:27:34] Speaker 04: They reached it. [00:27:35] Speaker 04: But the way they reached it was to look at all of the additional algorithmic steps that IDCOM was proposing and to see whether that would change the analysis, the analysis that already had not been challenged before that Anderson and view of McDonald adequately taught the arrangement for reactivating. [00:27:52] Speaker 03: Did you argue to the board in the 2015 decision that the board was barred from considering this arrangement for reactivating the [00:28:01] Speaker 03: I don't believe so, your honor. [00:28:05] Speaker 04: But just to clarify what IPCOM had argued, we certainly did argue to the board that even under their proposed construction Anderson and the view of McDonald sufficiently taught and that furthermore GSM and PACS were relevant as well. [00:28:36] Speaker 04: I believe those are the only issues that were raised in the opening argument. [00:28:41] Speaker 04: Thank you. [00:28:41] Speaker 04: OK, thank you. [00:28:48] Speaker 00: Listening carefully to the questions, I get the sense that the panel believes the four corners of the decision in accordance with administrative appeal case law does not contain the appropriate findings for this court to review, either in terms of the claim construction or application of the claim construction. [00:29:05] Speaker 00: And I acknowledge the weight of that case law says you should remand in those circumstances. [00:29:10] Speaker 00: We certainly acknowledge that. [00:29:12] Speaker 00: Your Honor educated me on that in the Nike Adidas appeal. [00:29:16] Speaker 00: But I would also submit, Your Honors, that the case has been pending seven years. [00:29:22] Speaker 00: There were, in our view, significant procedural irregularities. [00:29:26] Speaker 00: The record is fairly clear on this de novo legal issue about what the algorithm is. [00:29:33] Speaker 00: The court should it remand. [00:29:35] Speaker 00: should try to undertake to provide guidance to the parties in the patent office on that algorithm. [00:29:41] Speaker 00: It's a claim construction issue. [00:29:42] Speaker 00: And that could hopefully shorten the proceedings if that's where you go. [00:29:45] Speaker 03: In the 2013 board decision, it's true that you could have argued this three-step algorithm about the arrangement for reactivating the link at that point in time, but didn't. [00:29:58] Speaker 00: Your Honor, the very first decision that we took up, we took up on the issue of holding in reserve. [00:30:05] Speaker 00: At the time, neither the district court, I think neither the district court, but certainly this court, I don't think, had issued its decision in the HTC IPCOM case where we were fighting over whether the arrangement was a means plus function. [00:30:18] Speaker 03: That decision came out in 2012. [00:30:20] Speaker 00: Yeah, it was around that time. [00:30:22] Speaker 00: A year before. [00:30:23] Speaker 00: Yeah. [00:30:23] Speaker 00: But I think by the time we filed all the appeal notices and whatnot, so we took it up on that limited issue and just the first decision did not address the arrangement at all. [00:30:31] Speaker 00: It only focused on holding the reserve. [00:30:34] Speaker 02: Thank you.