[00:00:04] Speaker 04:
We have four cases this morning, and the first of them is Inray Affinity Labs of Texas, number 161092.

[00:00:14] Speaker 04:
Mr. Manske, is that correct?

[00:00:18] Speaker 04:
No.

[00:00:18] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:00:32] Speaker 00:
The subject patent in this case, the 833 patent, covers a specific method of delivering content between two devices, a portable media device or portable device and a different electronic device.

[00:00:46] Speaker 00:
Now the PTO's analysis in this case would suggest that the patent simply covers two devices and communication between those two devices when in fact the patent in this case, the 833 patent, requires specific functionality of the two devices respectively

[00:01:01] Speaker 00:
and specific functionality in the way in which the devices communicate with one another and a user shares and accesses content between those two devices.

[00:01:11] Speaker 00:
Now, there are two overarching issues in this appeal.

[00:01:14] Speaker 00:
The first is the scope to which the pre-AIA estoppel provision, section 317b, applies to the re-examination.

[00:01:24] Speaker 00:
And the second is the extent to which the examiner and ultimately the board

[00:01:28] Speaker 00:
aired in their assessment of the A33 patent claims and in their application of the asserted invalidity grounds against those claims.

[00:01:37] Speaker 00:
Turning to the first issue, and what we ultimately think is the dispositive issue in this proceeding, and that's the application of Section 317B.

[00:01:45] Speaker 01:
How can you think that that applies here when the statute specifically refers to a party and then talks about the estoppel applying to neither that party nor its privies?

[00:01:58] Speaker 01:
Why would it go beyond just for the one-party Volkswagen?

[00:02:03] Speaker 00:
Well, I would answer that in two parts.

[00:02:04] Speaker 00:
First, Your Honor, I don't think there's a dispute that 317B applies, at least to some extent.

[00:02:09] Speaker 00:
I think the dispute is the scope, as you suggested.

[00:02:12] Speaker 00:
Now, on that question, I think the key fact here is that the PTO itself merged the proceedings.

[00:02:18] Speaker 00:
So it merged the three reexaminations, Suis Ponte, and I'd refer the panel to- If it can Suis Ponte merge them, it could Suis Ponte separate them as well.

[00:02:28] Speaker 00:
That's correct.

[00:02:28] Speaker 00:
But when it merged the proceedings, what it did procedurally is effectively create one proceeding.

[00:02:34] Speaker 00:
And that had two effects.

[00:02:35] Speaker 00:
One that happened before this final decision came down.

[00:02:38] Speaker 00:
So when it merged proceedings, it effectively expanded the scope of the one singular proceeding.

[00:02:43] Speaker 00:
And procedurally, what's important there is when it merged the proceedings, and this is in the merger order, the PTO, in fact, invited the other requesters to comment on patent owner responses and

[00:02:57] Speaker 00:
office actions, thus expanding the scope of the grounds that were ultimately at issue.

[00:03:03] Speaker 00:
The ability of the other requesters then was expanded.

[00:03:08] Speaker 00:
They were able to comment on grounds that were not originally asserted in their re-exam requests.

[00:03:13] Speaker 01:
But how does that make the statute apply to them when it just is limited to that party or its privies?

[00:03:20] Speaker 00:
I would say that

[00:03:21] Speaker 00:
It applies to Volkswagen because effectively Volkswagen is the party in the district court and in the re-exam.

[00:03:29] Speaker 00:
Volkswagen's re-examination expanded effectively because in addition to the grounds that it originally requested re-examination on, Volkswagen was then able to comment on grounds, additional grounds, the full scope of the grounds across the three re-examinations.

[00:03:49] Speaker 01:
Well, wouldn't it just apply to just the claims that were at issue in the district court case?

[00:03:53] Speaker 01:
I think you argue otherwise.

[00:03:54] Speaker 01:
But again, the statute clearly says any such patent claim, it doesn't talk about the patent.

[00:04:01] Speaker 00:
Well, and I think that's the core dispute here that the two parties have in terms of statutory interpretation.

[00:04:06] Speaker 00:
And I think the statute is pretty clear.

[00:04:09] Speaker 00:
There's two different sections of the statute.

[00:04:11] Speaker 00:
There's a section that deals with pending reexaminations.

[00:04:15] Speaker 00:
And then there's a section of the statute that deals with

[00:04:17] Speaker 00:
as of yet or follow on reexaminations.

[00:04:21] Speaker 00:
And the language that you just referred to, the Any Such Patent Claims language, is not in the last part of the statute.

[00:04:27] Speaker 00:
It's the last part of the statute that discusses what is concerned with parallel litigation, where you have a reexamination that's already ongoing.

[00:04:40] Speaker 00:
What that says

[00:04:41] Speaker 00:
is that a re-examination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the office.

[00:04:50] Speaker 00:
So that section of the statute doesn't have that preparatory any such patent claim language that's located earlier in the statute with respect to follow on re-examination.

[00:05:01] Speaker 04:
I'll assume for purposes of this question that one would need to read in a kind of implicit may not be maintained on

[00:05:11] Speaker 04:
the claim that was the subject, that's the predicate for this.

[00:05:15] Speaker 04:
What kind of policy, common sense explanation is there for, would there be for having a broader provision that says the whole thing goes if any claim?

[00:05:27] Speaker 04:
It makes sense of that for me.

[00:05:30] Speaker 00:
Yeah.

[00:05:30] Speaker 00:
I think I'd like to answer that in a couple of parts.

[00:05:32] Speaker 00:
I think I'd start by saying not just the language we've talked about this morning, Your Honors, but also the way the statute is set up, the fact that there is two different

[00:05:41] Speaker 00:
scenarios.

[00:05:42] Speaker 00:
And we started some of the congressional history and some of the legislative history in our briefing.

[00:05:47] Speaker 00:
And there, it's pretty clear that the underlying intent with the statute was to curb or prevent patent-owner harassment.

[00:05:53] Speaker 00:
And this court said as well in function media that the purpose of the statute is to prevent duplicative or harassing action.

[00:06:01] Speaker 00:
So the way we read the statute, I think, is consistent with that in that the

[00:06:09] Speaker 00:
the congressional intent behind it was a recognition that there's a greater chance when you have this parallel litigation for the type of patent owner abuse or duplicative action that we think occurred, in this case factually, that is not present or is not as much at risk when you have a potential follow-on re-examination.

[00:06:35] Speaker 00:
Ultimately, we hit on the two core issues.

[00:06:38] Speaker 00:
One is the threshold parties issue, and the second is the any such patent language issue.

[00:06:43] Speaker 00:
And I would submit that under just a plain reading of the statute, you cannot read in and should not read in any such patent claim language into that last part of the statute.

[00:06:57] Speaker 00:
And ultimately here, I think it's also important to note one last thing on this point that

[00:07:02] Speaker 00:
There was overlap in the litigation and the re-examination.

[00:07:06] Speaker 00:
So if you look at what Volkswagen asserted, the counterclaims, it's asserted in its answer.

[00:07:12] Speaker 00:
And I will refer the panel to 16808.

[00:07:17] Speaker 00:
That's the key page of the answer.

[00:07:20] Speaker 00:
All of the references, all the key references that were eventually asserted across the scope of the re-examination,

[00:07:26] Speaker 00:
were asserted first in the district court, or were asserted in the district court.

[00:07:32] Speaker 00:
So there is complete overlap with the core issues between the two.

[00:07:39] Speaker 03:
I believe the PTO argues that you needed to file some kind of request for reconsideration on the petition to terminate.

[00:07:48] Speaker 00:
Yeah.

[00:07:49] Speaker 00:
My understanding of the PTO's argument here is specific to their interpretation of their regulations, that we

[00:07:56] Speaker 00:
even though we petitioned twice to dismiss the proceeding under the grounds under 317B under the interpretation that we've argued this morning, that we needed to petition a third time because the result of the first two petitions was a quote unquote dismissal.

[00:08:11] Speaker 00:
Now legally the case here that's relevant is Bennett v. Speer and that's case cited by both the parties, both the parties agree that applies.

[00:08:19] Speaker 00:
And the question on this issue

[00:08:21] Speaker 00:
is one, whether legal rights were determined, and two, whether it was the culmination of the agency's decision-making process.

[00:08:27] Speaker 00:
And here, our argument is effectively, it was.

[00:08:31] Speaker 00:
It's a statutory interpretation issue.

[00:08:33] Speaker 00:
We petitioned twice, and the PTO set out its view of 317B.

[00:08:39] Speaker 01:
You said that their position is that you needed to petition a third time.

[00:08:42] Speaker 01:
Wasn't it that they just thought that you should seek reconsideration to get a final decision?

[00:08:47] Speaker 00:
Well, I would argue that that's form over substance.

[00:08:51] Speaker 00:
I think that they were asking us to once again present our 317B argument when it was clear after two petitions what their position on that statute was.

[00:09:04] Speaker 00:
On the merits of this case, I think, again, that the key issue here is 317B.

[00:09:13] Speaker 00:
And on the merits, I think the theme, without going into detail on everything, unless the court has specific questions on any of the grounds, which I'm happy to answer, I think the overarching theme is, as I discussed in my intro, the claims require specific functionality.

[00:09:29] Speaker 00:
And as you review the various grounds, what you're going to see is that in each of the grounds, some of that functionality is missing.

[00:09:37] Speaker 00:
And ultimately, we think that that

[00:09:40] Speaker 00:
that analysis, that level of what we would deem a superficial analysis is insufficient to meet the PTO's burden and is certainly insufficient to find the patent invalid here.

[00:09:50] Speaker 00:
So with that, unless there's any questions, I'll yield the balance of my time.

[00:09:52] Speaker 03:
What would you identify as being the core functionality that represents an inventive contribution to the useful arts?

[00:10:03] Speaker 00:
Well, I think certainly it's the specificity of the invention.

[00:10:08] Speaker 00:
It's, for instance,

[00:10:09] Speaker 00:
the claims require not only just two displays, which is an issue that has been argued in this case, but two displays that can share specific graphical interface items, a graphical interface item comprising a name, and that's an issue with the Dwyer reference.

[00:10:25] Speaker 00:
So the ability to share that specific graphical user interface item from one device to another in the year 2000, which is the priority date here,

[00:10:36] Speaker 00:
we believe is novel, and I know today it might seem like that's not, but in the year 2000, we submit it certainly was.

[00:10:45] Speaker 00:
And I'll yield the balance of my time.

[00:10:46] Speaker 02:
Thank you.

[00:10:49] Speaker 02:
Good morning.

[00:10:51] Speaker 02:
May it please the court?

[00:10:53] Speaker 02:
I think there's three issues in this case, the termination issue, the prior art rejections,

[00:10:58] Speaker 02:
and the board's consideration of the secondary considerations evidence.

[00:11:02] Speaker 02:
I'm going to focus on the termination issue, because that's what the appellant focused on, unless you have any other questions.

[00:11:08] Speaker 02:
The first issue is the director's position that under MPEP 1002, there was no final agency action on the petition to terminate because it was only dismissed.

[00:11:18] Speaker 02:
And the MPEP says, if you want to obtain a final agency action of a denial of a petition, you should request reconsideration

[00:11:26] Speaker 02:
Affinity has done that in other cases.

[00:11:28] Speaker 03:
That paragraph from the MPEP wasn't cited in the petition decisions, right?

[00:11:35] Speaker 02:
No, it was not.

[00:11:36] Speaker 03:
And also in those petition decisions there wasn't any indication that in order for the patent owner to be able to have a true final decision on its petition that it would need to petition again after not getting the relief from the first petition.

[00:11:56] Speaker 02:
That's true.

[00:11:57] Speaker 02:
That's true.

[00:11:58] Speaker 03:
I guess what I'm wondering is when I see a rather full, complete, thorough analysis that does seem to represent the culmination of the agency's thinking on an issue, just merely following what another chapter of the NPEP says, without any warning to the petitioner that it needed to file yet another petition

[00:12:26] Speaker 03:
Why couldn't they have believed correctly that this was, in fact, on the merits a final decision?

[00:12:36] Speaker 02:
Well, I think they are aware of the rule, because there have been other cases where affinity has been a party.

[00:12:41] Speaker 02:
They filed a petition to terminate.

[00:12:43] Speaker 02:
They received a dismissal, and they subsequently moved for reconsideration.

[00:12:47] Speaker 03:
I guess what I'm saying is we review agency decisions all the time, and whenever there is

[00:12:55] Speaker 03:
an action by the agency, which the agency doesn't believe, where it believes the petitioner has a right to further administrative review, it includes that on the last page of its agency action.

[00:13:11] Speaker 03:
And here we don't have anything like that.

[00:13:12] Speaker 02:
That's true.

[00:13:14] Speaker 02:
And I think that's a fair point.

[00:13:15] Speaker 02:
I think it would have been helpful if that was in the dismissal, if they said they could have petitioned for reconsideration, so it would have been escalated to a higher level at the PTO.

[00:13:25] Speaker 03:
Who would it have gone to if there was another petition?

[00:13:29] Speaker 03:
This already went to the Office of Patent Legal Administration.

[00:13:33] Speaker 02:
Yeah, I don't remember exactly who it would go to.

[00:13:35] Speaker 02:
It would go to a higher level agency director of some sort.

[00:13:39] Speaker 02:
I can't remember exactly who it would go to.

[00:13:42] Speaker 03:
The Commissioner of Patents would be writing a decision on this?

[00:13:46] Speaker 02:
It would go to a higher level.

[00:13:48] Speaker 02:
I can't remember exactly who would review it, but it would go to a different person.

[00:13:52] Speaker 02:
It would be escalated.

[00:13:53] Speaker 02:
And the whole point of this is just so the arguments they're making here could have been vetted, there could have been a record made, the PTO could have responded to those arguments and there would have been a full record.

[00:14:03] Speaker 02:
But I'm happy to address the denial of the petition on the merits.

[00:14:08] Speaker 04:
Can I just ask, what is the status of something written in the MPEP that's not embodied in a formally adopted regulation?

[00:14:21] Speaker 02:
Well, I think the PTO gets some deference for its regulations in here.

[00:14:26] Speaker 04:
This is not a regulation, is it?

[00:14:27] Speaker 02:
No, it's a rule.

[00:14:28] Speaker 02:
You're right.

[00:14:28] Speaker 02:
It's a rule.

[00:14:29] Speaker 02:
What do you mean a rule?

[00:14:30] Speaker 02:
It's in the MPEP.

[00:14:32] Speaker 04:
There's some words in the MPEP.

[00:14:34] Speaker 04:
Right.

[00:14:34] Speaker 04:
Not adopted as a rule that you can find in the CFR.

[00:14:38] Speaker 04:
Correct.

[00:14:39] Speaker 04:
And probably not ever published in the Federal Register?

[00:14:43] Speaker 04:
I assume the MPEP is

[00:14:45] Speaker 04:
changes are not generally published in the Federal Register?

[00:14:48] Speaker 02:
There is a regulation that speaks to the termination.

[00:14:51] Speaker 02:
It doesn't go into the detail of the four-factor test that the MPEP sets up.

[00:14:56] Speaker 04:
No, but I was focusing on, I think, what you were just discussing before you get to what you were about to do, namely, this business about they had to basically seek rehearing.

[00:15:08] Speaker 02:
There's nothing in the regulations about seeking rehearing.

[00:15:11] Speaker 02:
That's just something in the MPEP.

[00:15:12] Speaker 02:
But getting to the merits of the four-factor test, I think the PTO's test, it makes a lot of sense, because first of all, it only applies against the party, and it only applies when there's a final decision that can't be appealed, and it's consistent with the statute, which applies on a claim-by-claim basis, and that's how district courts... Isn't the crucial language of the statute, which I think Mr. Manske was focusing on,

[00:15:41] Speaker 04:
The phrase that does not have, is not written in a claim-specific way.

[00:15:49] Speaker 04:
And an inter-party's re-exam requested by that party or privies on the basis of such issues may not thereafter be maintained by the office.

[00:15:58] Speaker 02:
That's exact.

[00:15:58] Speaker 02:
That's the key point.

[00:15:59] Speaker 04:
So there's nothing claim-specific about that.

[00:16:02] Speaker 04:
If you take that language just on its face, it says, if the predicate for what

[00:16:10] Speaker 04:
came before, namely, as a shorthand, use a final judgment on some claim, and another court case occurs, then any interparties re-exam in which that issue was raised goes away, including without limitation as to what else is in that interparties re-exam.

[00:16:29] Speaker 02:
Right.

[00:16:30] Speaker 02:
And I think if you just use those words on such issues, that's one interpretation.

[00:16:37] Speaker 02:
But I think when you read the statute as a whole,

[00:16:39] Speaker 02:
and look at the purpose of the statute of whole, which is to prevent harassment by a requester who receives a final decision of invalidity with respect to certain claims.

[00:16:48] Speaker 02:
And that's what the statute talks about.

[00:16:50] Speaker 02:
I think when you read it in the context of the entire statute, it's clear that it's applying on a claim by claim basis.

[00:16:56] Speaker 01:
What do you think it means when it says on the basis of such issues?

[00:17:00] Speaker 01:
Is that limited to just those claims, or is it the entire thing is gone if

[00:17:06] Speaker 01:
those claims are at issue.

[00:17:07] Speaker 02:
I think it's talking about on the basis of such issues pertaining to the claims that were subject to a final decision at the district court that could not be appealed.

[00:17:18] Speaker 02:
That's what the PTO believes it refers to.

[00:17:21] Speaker 02:
And that makes sense because it wouldn't make sense to treat re-exams filed before a final decision differently than re-exams filed after a final decision.

[00:17:31] Speaker 02:
And that's consistent with how district courts review

[00:17:34] Speaker 02:
the validity of particular claims.

[00:17:37] Speaker 02:
And it's consistent with the purpose of the statute, which is to prevent harassment to a patent owner from a requester that's received a final decision of invalidity with respect to particular claims.

[00:17:48] Speaker 02:
And it's also consistent with how district court litigation works.

[00:17:52] Speaker 02:
Even though there may have been an assertion that all the claims were invalid or at one point in their complaint they asserted that one or more of the claims were infringed, through litigation you focus the issues and here they were focused to just two claims.

[00:18:04] Speaker 02:
28 and 35.

[00:18:06] Speaker 02:
And so the PTO, Sue Vesponte, terminated their Volkswagen re-exam just with respect to claims 28 and 35 and the claims that depended from those claims.

[00:18:17] Speaker 02:
And those claims were terminated with respect to the Volkswagen re-examination and they were confirmed.

[00:18:24] Speaker 02:
So those are going to be patentable.

[00:18:26] Speaker 02:
So there's no harassment, even though Pellant made a point that the other requesters, in this case Apple, could have commented on those claims.

[00:18:34] Speaker 02:
those claims have gone through and will become patentable.

[00:18:44] Speaker 02:
And I think appellants' interpretation would lead to a strange result where an ex parte, the king, ex parte appeal would be terminated even though ex parte re-exams are not subject to termination under 317B or any other statutes.

[00:19:00] Speaker 02:
And they also would require that the Apple re-exam be terminated

[00:19:04] Speaker 02:
even though Apple wasn't a party and there was no evidence of a final decision adverse to Apple.

[00:19:12] Speaker 02:
I'd be happy to answer more questions about this topic or turn to some of the prior art rejections or the secondary considerations evidence if you have any questions.

[00:19:22] Speaker 04:
Can you address the question of the, I guess particularly

[00:19:31] Speaker 04:
Dwyer about the graphical interface item comprising a name.

[00:19:37] Speaker 02:
Yeah, I'd be happy to do that.

[00:19:45] Speaker 02:
So Dwyer shows, if you look at figure eight, this is at A18798.

[00:19:52] Speaker 02:
793, maybe?

[00:19:53] Speaker 02:
793.

[00:20:03] Speaker 04:
You said figure eight?

[00:20:05] Speaker 04:
Yes, sorry.

[00:20:09] Speaker 02:
Right, so Dwyer, you're right.

[00:20:11] Speaker 02:
A18793.

[00:20:13] Speaker 02:
It shows in figure eight an icon 220 that's in the display area 218 and it's under the heading of a name.

[00:20:21] Speaker 02:
And then 222 points to the name.

[00:20:24] Speaker 02:
And Dwyer also points to, contrary to Affinity's assertion, that that icon is selectable.

[00:20:32] Speaker 02:
If you look at

[00:20:34] Speaker 02:
At A 18798, column 9, starting at line 5 through 9, it says it's to be understood that the specific file requested may be selected, for example, by designating the corresponding icon in the field 218 of figure 8.

[00:20:57] Speaker 02:
Now the only icon in figure 8 is the icon 220.

[00:21:04] Speaker 02:
So I think that's a clear teaching that the icon is selectable and that's how you select a file for uploading or downloading.

[00:21:11] Speaker 01:
And you're relying on the fact that it says the type is voice?

[00:21:15] Speaker 02:
The type is voice?

[00:21:17] Speaker 01:
Unless figure 8, it says the type of file is voice?

[00:21:24] Speaker 02:
I see that in the middle of the page of the type.

[00:21:29] Speaker 02:
That's a voice file, yes.

[00:21:34] Speaker 04:
Did the board rely on that figure 8 passage, the 220 and 222, in discussing this particular element of the claim?

[00:21:46] Speaker 02:
Did they rely on the passage I just told you about?

[00:21:49] Speaker 04:
You told

[00:21:50] Speaker 04:
me about two passages.

[00:21:51] Speaker 04:
One was in Figure 8 and one was something else.

[00:21:53] Speaker 04:
I'm asking about the Figure 8.

[00:21:55] Speaker 02:
Yeah, so the board looked to Figure 8, and then they relied on a couple other passages.

[00:22:02] Speaker 04:
Where, with respect to this particular claim element, did the board rely on Figure 8?

[00:22:12] Speaker 03:
Are you looking at page AA of the board decision?

[00:22:20] Speaker 03:
It was really page seven of the board decision.

[00:22:22] Speaker 03:
And here, what I see is that they cited to the right of appeal notice, pages seven to eight.

[00:22:32] Speaker 03:
Yep.

[00:22:33] Speaker 03:
That's right.

[00:22:34] Speaker 03:
Which is at 8, 10, 640 to 8, 10, 641.

[00:22:38] Speaker 03:
And then at 8, 10, 640, they show figure eight.

[00:22:45] Speaker 03:
They make a copy of figure eight.

[00:22:47] Speaker 02:
Yeah.

[00:22:47] Speaker 02:
And I think Affinity made a point when they were

[00:22:50] Speaker 02:
making their arguments about the wire.

[00:22:51] Speaker 02:
They actually referred to the passages relied upon.

[00:22:55] Speaker 02:
The examiner and the board don't expressly disclose selecting that icon.

[00:23:02] Speaker 02:
But if you look at the passage that I just read to you, I think that is a clear teaching that those icons are actually selectable.

[00:23:09] Speaker 01:
Do you know if that passage you read from column nine is in the ran at pages seven through eight?

[00:23:14] Speaker 01:
Do you know that?

[00:23:17] Speaker 04:
the rant or something?

[00:23:19] Speaker 01:
Yes.

[00:23:19] Speaker 04:
Joint appendix 10640.

[00:23:21] Speaker 04:
Is that what that document is?

[00:23:38] Speaker 02:
Okay.

[00:23:51] Speaker 04:
The table of contents of your volume lists that page as within a page range 10632 to 690 with the description right of appeal notice, and that's page seven and eight, and that has that figure out.

[00:24:08] Speaker 02:
Yeah, figure eight's definitely there.

[00:24:10] Speaker 02:
Yeah.

[00:24:11] Speaker 04:
And that's what on page eight of the board's decision is implicitly being

[00:24:19] Speaker 02:
Yeah, that's, I mean, they're definitely relying on the figures.

[00:24:21] Speaker 02:
That's what the examiner points to.

[00:24:22] Speaker 02:
They have the figure in the RAM.

[00:24:26] Speaker ?:
Okay.

[00:24:26] Speaker 02:
All right, there's no more questions.

[00:24:27] Speaker 02:
I'll take a seat.

[00:24:32] Speaker 04:
Thank you, Mr. McBride.

[00:24:35] Speaker 04:
And you have almost five minutes.

[00:24:40] Speaker 00:
So I'd just like to address a couple things first right off the bat on the waiver issue or the alleged waiver issue.

[00:24:48] Speaker 00:
This court need not defer to the MPEP even if it's inclined to do so.

[00:24:53] Speaker 00:
That's not legally binding on this court and I refer to the board to the Enzo decision cited at page 18 of our brief.

[00:25:01] Speaker 04:
Since you have little time, elaborate in some kind of concrete way your answer to the question I asked you earlier about what kind of sense it makes to say even though

[00:25:13] Speaker 04:
one claim was disposed of in the litigation, the whole IPR, wrong IPR, in party's re-examination goes away.

[00:25:22] Speaker 04:
What's the harassment scenario that this kind of otherwise hard to understand sweeping position would be protected?

[00:25:33] Speaker 04:
Right.

[00:25:33] Speaker 00:
And I think that this is kind of consistent with our focus on the word issues.

[00:25:39] Speaker 00:
And I think that the statute

[00:25:41] Speaker 00:
is framed in a way to be commiserate with the issues, especially in a scenario where you have parallel litigation like you had in this case.

[00:25:49] Speaker 00:
So in that scenario, there's more of a likelihood for something like what happened here to happen.

[00:25:54] Speaker 00:
The board merges proceedings and expands the scope of a proceeding.

[00:25:59] Speaker 00:
And so effectively, affinity labs in this case had to deal with invalidity issues in district court.

[00:26:05] Speaker 00:
And it also had to deal with those exact same invalidity issues in the re-exam.

[00:26:11] Speaker 00:
And when the board, I'm sorry, when the PTO, Sue Esponte, merged the proceedings, it expanded the scope of that invalidity overall, the invalidity fight against the 833 patent without any sort of commiserate, at least based upon the PTO's interpretation of 317B, without any sort of commiserate protection for the patent owner.

[00:26:33] Speaker 00:
So I think the nature of your question is why would the estoppel provision be narrower for a follow-on re-examination?

[00:26:41] Speaker 00:
What Congress, in the intent of curbing patent-owner harassment, what Congress realizes is that the risk in that scenario of the sort of situation you have here where you have harassment is lower.

[00:26:53] Speaker 00:
Now, as a practical matter, most of the time when you have a litigation like that, the parties are going to settle out like they did here after there was an infringement finding.

[00:27:03] Speaker 00:
So the scenarios under which there's going to be a follow-on re-examination are practically few and far between.

[00:27:10] Speaker 00:
So there's no need to have a broad and essentially flexible estoppel provision here, the way we interpret it, if that answers your question, Your Honor.

[00:27:22] Speaker 00:
So I want to address one other issue on the waiver thing.

[00:27:27] Speaker 00:
PTO Mr. McBride suggested that the issue was, it could be fully vetted if we had petition again.

[00:27:35] Speaker 00:
But I would point the panel to the board's decision

[00:27:40] Speaker 00:
with respect to the petitions, and that's at 16897 of the appendix, and that's pretty fulsome with respect to their view of Section 317B.

[00:27:51] Speaker 00:
I'm sorry, what page were you at?

[00:27:53] Speaker 00:
It should be at 16897, beginning at 16897.

[00:27:58] Speaker 00:
This is the petition decision.

[00:28:00] Speaker 03:
Yeah.

[00:28:00] Speaker 00:
From OPLA.

[00:28:03] Speaker 00:
Correct.

[00:28:03] Speaker 00:
This isn't the board's decision.

[00:28:05] Speaker 00:
Sorry, I misspoke, Your Honor.

[00:28:06] Speaker 00:
It's the petition decision, and it sets out pretty expansively the PTO's view of 317B.

[00:28:22] Speaker 00:
And if I may, Your Honors, as just one last point, I'd like to quickly address the Dwyer issue, because I think we may have got our wires crossed.

[00:28:30] Speaker 00:
The element that I was talking about when asked about the novelty of the patent was the ability to display

[00:28:36] Speaker 00:
a graphical interface item of an icon comprising a name and that functionality on a portable device.

[00:28:42] Speaker 00:
What they're pointing to and what they're talking about is a different element and it's the soft button element and that is on the different electronic device.

[00:28:50] Speaker 00:
So what figure eight in Dwyer deals with is what's on the computer.

[00:28:54] Speaker 01:
So that's a... But that's the limitation for Dwyer that you asserted was missing in the claim, right?

[00:28:59] Speaker 00:
That's one of the issues that we have asserted.

[00:29:01] Speaker 00:
I think the main issue with Dwyer, if I may,

[00:29:05] Speaker 00:
is what it's missing with respect to the portable device.

[00:29:09] Speaker 00:
And the portable device, and this is the second limitation of claim one, it requires the ability to display a graphical interface item on a display.

[00:29:19] Speaker 00:
And that graphical interface item must be an icon comprising a name.

[00:29:23] Speaker 00:
And what the PTO is pointing to here are two things.

[00:29:27] Speaker 00:
One, Dwyer's general disclosure of a touch screen, and two,

[00:29:33] Speaker 00:
Dwyer's disclosure, figure five of Dwyer, which shows an example of header data that might be in the system.

[00:29:42] Speaker 00:
And the key error here is that the PTO never connects these two ideas.

[00:29:47] Speaker 00:
And one of the grounds is an anticipation ground.

[00:29:49] Speaker 00:
So there's nothing in the record to conclude that what's shown might be a perspective identifying information in the system for a file is what's replicated on the portable device touchscreen.

[00:30:03] Speaker 04:
Your time is up, but I think we're about to see you again.

[00:30:11] Speaker 04:
We will then proceed to Inray Affinity Labs of Texas, number 161173.