[00:00:00] Speaker 01: This morning is 161756, in May, Affinity Labs of Texas. [00:00:05] Speaker 01: Mr. Schulz, whenever you're ready. [00:00:13] Speaker 00: Good morning, Your Honors. [00:00:17] Speaker 00: The issues that I'd like to discuss today related to this appeal are two issues. [00:00:21] Speaker 00: The first is whether 317B should have applied to the entire proceeding, and whether the issuance of a re-exam certificate was a priority issue [00:00:29] Speaker 00: was resolved required this inter-party's re-exam to be terminated. [00:00:34] Speaker 00: So turning to the first issue related to 317b. [00:00:36] Speaker 00: 317b statute, the issue before the court is simply whether the term such issues is limited to a claim by claim analysis. [00:00:49] Speaker 00: A review of the plain and unambiguous language of the statute demonstrates that it is not limited by claim by claim [00:00:56] Speaker 01: Well, the provision says in several portions talks about any patent claim in suit, right? [00:01:02] Speaker 01: It says any patent claim in suit, then it goes on to say of any such patent claim. [00:01:08] Speaker 01: So why shouldn't issues relate back to the patent claims themselves? [00:01:12] Speaker 00: Because while the statute does talk about any patent claim, the particular definition of issues is not limited to that. [00:01:20] Speaker 01: Well, how do we know that? [00:01:21] Speaker 01: What do you want to point me to? [00:01:22] Speaker 00: Sure. [00:01:22] Speaker 00: If you look at the statute where it says [00:01:26] Speaker 00: on the basis of issues which that party or its privities raised or could have raised in such civil action or interparties re-examination proceeding. [00:01:36] Speaker 00: That's the definition of issues. [00:01:40] Speaker 00: Now what the PTO is asking this court to do is take language that precedes that definition and somehow then incorporate that into the definition. [00:01:51] Speaker 00: There's no statutory interpretation authority [00:01:55] Speaker 00: for such a reading of the statute. [00:01:57] Speaker 03: Can you explain to me how your reading would make sense of the statute? [00:02:03] Speaker 03: I don't mean whether or not you have a plain meaning argument. [00:02:06] Speaker 03: I understand your argument. [00:02:07] Speaker 03: But how would it make sense to have a scenario in where you could not continue an issue [00:02:17] Speaker 03: But you could re-raise it, basically. [00:02:20] Speaker 03: You've created a real disparity in how this statute is going to apply, whether you're maintaining a re-exam or initiating a new one. [00:02:28] Speaker 03: Tell me how that makes sense. [00:02:29] Speaker 00: Yes, Your Honor. [00:02:30] Speaker 00: And that's exactly what Congress intended and did. [00:02:32] Speaker 00: There were two scenarios that this statute was meant to apply estoppel to. [00:02:36] Speaker 00: And the estoppel that applies in each scenario is different. [00:02:40] Speaker 00: In the one scenario, it says an accused infringer cannot initiate an inter-party re-exam proceeding [00:02:47] Speaker 00: based on any claim it lost at the district court on any issues it could have raised or did raise at the district court. [00:02:52] Speaker 00: A very narrow scope. [00:02:54] Speaker 00: But then it goes on to then have a second scenario where it says, you cannot maintain an inter-party's re-exam that was co-pending with the litigation on any issues that you raised or could have raised at the district court [00:03:10] Speaker 00: And you had lost them. [00:03:11] Speaker 03: So they could, just to be clear, dismiss or withdraw the pending re-examination because the scope of estoppel there would be broader if it's pending and then just refile a brand new re-examination on the different claims and be perfectly fine. [00:03:31] Speaker 00: Correct. [00:03:32] Speaker 00: How does that make sense? [00:03:34] Speaker 00: Why does that make sense? [00:03:34] Speaker 00: Because what Congress is attempting to do here is if you, as the accused infringer, decide to fight validity in both forms, at the district court and in interparties re-exam, Congress would incentivize the party to bring their best arguments forward in both forms. [00:03:50] Speaker 00: And then it is a race to who finishes first. [00:03:53] Speaker 00: And then if the district court finishes first, that interparties re-exam needed to be terminated in order to preserve the resources of the Patent Office because the issues [00:04:02] Speaker 00: that Congress probably assumed you raised the issues in both proceedings, and then once a determination had been made in order to conserve resources and to effectuate the purpose of this provision in the estoppel, which is shown in the legislative history, to prevent harassment of the patent owner. [00:04:20] Speaker 03: The patent owner is one. [00:04:21] Speaker 03: But your view is the patent owner would be allowed to be harassed because they could file a new re-exam. [00:04:27] Speaker 03: And how does that serve the efficiency that you're talking about? [00:04:30] Speaker 03: It's more efficient. [00:04:32] Speaker 03: to kick a pending suit out and have the patentee file it brand new than it is to just continue the pending suit? [00:04:38] Speaker 03: I don't understand. [00:04:40] Speaker 00: So I guess I'm not sure why the patent owner would dismiss a suit or not. [00:04:43] Speaker 00: What's happening here is the accused infringer who has lost at district court, there was a race. [00:04:54] Speaker 00: They lost. [00:04:55] Speaker 00: You save resources by then terminating that inner party's re-exam proceeding [00:05:01] Speaker 00: And then if the accused infringer for some reason needed to challenge other claims that had not been determined, there still is an option. [00:05:11] Speaker 00: But that current pending re-exam should be terminated because this purpose of the estoppel is to prevent harassment of the patent owner. [00:05:19] Speaker 00: The patent owner was fighting the fight in two forms, in one. [00:05:22] Speaker 03: Yeah, and as to the claims which it was resolved in, it makes total sense that that would constitute harassment of the patentee, as you're suggesting, and it shouldn't go forward. [00:05:31] Speaker 03: But as to other claims which have not been adjudicated in the district court, your argument, I can't reconcile the difference in approach that you think the statute mandates between suits that are maintained and suits that are initiated. [00:05:48] Speaker 03: Because under your logic, you have to accept the fact that the infringer who lost in the district court under your reading of the statute is perfectly free to then bring the claims that weren't decided, even on the same issues, in a new reading. [00:06:06] Speaker 00: Right. [00:06:06] Speaker 00: Well, the problem with the analysis, if you're going to go on a claim by claim analysis, is demonstrated in this case here. [00:06:12] Speaker 00: And I'll point you to it. [00:06:14] Speaker 00: Claim three was adjudicated at district court. [00:06:16] Speaker 00: No dispute there. [00:06:17] Speaker 00: Claim three is a dependent claim from claim one. [00:06:21] Speaker 00: Claim three simply adds a limitation to claim one. [00:06:24] Speaker 00: It doesn't change or alter the limitations that are at issue for the priority issue here. [00:06:29] Speaker 00: But now what we have is a situation where there are inconsistent results. [00:06:32] Speaker 00: We've got claim one, where the patent officer said is not entitled to the March 2000 priority date. [00:06:37] Speaker 00: And we've got claim three, a dependent claim of that very claim that incorporates all of those limitations [00:06:43] Speaker 00: now has a priority date of March 2000. [00:06:46] Speaker 00: That type of inconsistency is caused by doing a claim-by-claim analysis. [00:06:50] Speaker 00: Had the patent office done its job correctly under the statute and terminated that inter-party re-exam that was being co-pending at the time, we would not have this inconsistency. [00:07:02] Speaker 03: Yeah, we could, because they could just bring a new re-exam with that claim. [00:07:05] Speaker 00: And then they could challenge. [00:07:06] Speaker 00: But I'm not sure they could do that, because under claim one, the issue would be the same. [00:07:12] Speaker 03: No, but it says here, you told me I should read the statute that initiating a re-exam, the estoppel only applies to such patent claims as were adjudicated. [00:07:24] Speaker 03: So you've told me the statute expressly addresses this. [00:07:26] Speaker 03: When it uses that such claim language, it limits. [00:07:30] Speaker 03: You were only stopped from bringing a new re-exam on the exact same claims that were litigated, not just on the issues, but on the same claims and the same issues. [00:07:38] Speaker 00: And so perhaps this 317B wouldn't necessarily [00:07:41] Speaker 00: terminate or preclude that that re-exam petition. [00:07:44] Speaker 00: But I would submit to the court that that petitioner had quite the uphill battle in establishing as a new question of patentability on priority when the issue on a dependent claim had already been decided. [00:07:56] Speaker 03: The PTO says, or there's an argument, I should say, made by the director, that they should be entitled to Chevron or our deference on this point. [00:08:09] Speaker 03: There's at least possibly, if there is ambiguity, or if there is a gap to be filled, that they have the authority to fill that gap. [00:08:17] Speaker 03: Is that right? [00:08:18] Speaker 03: Is that your view that they're entitled to Chevron and or our deference? [00:08:22] Speaker 00: In this case, I don't believe they're entitled to any deference. [00:08:24] Speaker 00: Our position is that the statute is clear on its face what Congress had intended. [00:08:28] Speaker 03: If the statute is not clear on its face, if I think there is ambiguity, is the PTO the adjudicative body authorized by Congress to fill the gaps? [00:08:38] Speaker 00: Under Chevron, then they would be owed some deference. [00:08:41] Speaker 00: But even under some deference, their reading of the statute really results in more inconsistent scenarios, as I've highlighted, than reading it the way that the statute is expressly written here, that there are two scenarios with two different scopes of estoppel. [00:08:56] Speaker 00: And I would just lastly point before I move on on this issue, if Congress had intended the scope of estoppel to be the same in both scenarios, it wouldn't have written the statute this way. [00:09:05] Speaker 00: You have to give credence to the format and the structure of the statute. [00:09:09] Speaker 00: This is a whole separate clause. [00:09:11] Speaker 00: There's a comma, and then and, and then describes this scenario. [00:09:15] Speaker 00: What the Patent Office is doing is saying it's the same estoppel provision in both scenarios. [00:09:20] Speaker 00: That's not the language of the statute. [00:09:23] Speaker 00: Congress specifically said, here's the estoppel for new petitions, and here's the ones for currently pending ones. [00:09:31] Speaker 00: The other issue I would like to discuss with the court [00:09:35] Speaker 00: relates to another reason why this proceeding should have been terminated. [00:09:40] Speaker 00: At the same time this inter-party re-exam proceeding was pending, there was a concurrent ex-party re-exam on the same patent, the 228 patent and the same claims. [00:09:49] Speaker 00: And in the 228, in the re-exam, the issue of priority as to all these claims was raised. [00:09:58] Speaker 00: And in that proceeding, the examiner found that all the claims were entitled to a March 2000 [00:10:04] Speaker 00: priority date and issued a re-exam certificate. [00:10:07] Speaker 03: Well, that examiner found they were entitled to it because he or she, if I remember right, thought they were bound by an earlier PTAB decision not involving VW. [00:10:17] Speaker 03: I don't remember who involved, but isn't that right? [00:10:20] Speaker 03: Like the examiner actually originally rejected in that re-exam the claim, but then interpreted a different PTAB decision to indicate that there was [00:10:32] Speaker 03: written description support. [00:10:35] Speaker 03: Is that right? [00:10:35] Speaker 03: That's correct. [00:10:36] Speaker 03: That is what happened. [00:10:37] Speaker 03: So here's my question to you, which is under what circumstance or is your argument that somehow under the APA, because you cite no authority for this estoppel, right? [00:10:48] Speaker 03: It's not judicial estoppel, a statement made by one person that they succeeded on. [00:10:53] Speaker 03: It's not prosecution history estoppel. [00:10:55] Speaker 03: It's not estoppel based on 317. [00:10:58] Speaker 03: You cite no legal support whatsoever for this notion of estoppel you have. [00:11:03] Speaker 03: And the estoppel almost seems to be an estoppel you intend to apply against the agency, not even an estoppel against the party. [00:11:10] Speaker 03: It's almost like you're arguing that the agency cannot reach two completely contrary [00:11:17] Speaker 03: results on the same set of facts, which, hey, by the way, I'm sympathetic, but it's a fact question. [00:11:24] Speaker 03: And so every once in a while, we do get fact findings by two different [00:11:29] Speaker 03: bodies, like two different juries, that look at the exact same facts and come out the opposite way. [00:11:34] Speaker 03: And we have to review those for substantial evidence. [00:11:36] Speaker 03: So I'm kind of wondering, where is the genesis of this estoppel that you're arguing that you are entitled to? [00:11:42] Speaker 03: And is it really true? [00:11:43] Speaker 03: I mean, do I have to hold the PTAB is never permitted to different groups of board judges to come to different conclusions? [00:11:51] Speaker 03: They are stopped. [00:11:53] Speaker 03: They are somehow a stop from doing that. [00:11:55] Speaker 03: See my problem? [00:11:56] Speaker 00: Yep. [00:11:56] Speaker 00: No, and again, I will do my best [00:11:58] Speaker 00: address the question. [00:11:59] Speaker 00: So the authority for it starts with NRA Swanson, where this court had said the second examination cannot decide issues that had already been decided in a preceding examination. [00:12:13] Speaker 00: The PTO makes no attempt to distinguish that ruling in NRA Swanson. [00:12:17] Speaker 00: And where this comes from is in Section 303A, there has to be a substantial question, new question of patentability. [00:12:24] Speaker 00: And that has to be maintained until the board makes a decision. [00:12:28] Speaker 00: Well, before the board had made its decision to enter party re-examine, the issue of priority had been decided by the examiner on these claims in this patent. [00:12:38] Speaker 00: And by having decided that these claims were entitled to a March 2000 priority date, it removed the references in the combination to no longer be prior art, such that those reference combinations could no longer establish a substantial new question of patentability. [00:12:55] Speaker 00: And so just as the legislative history says, the reason why we have substantial new question of patentability is to prevent the patent owner from having to participate in re-examinations that don't have a question of patentability in them. [00:13:12] Speaker 00: And so that is the basis by which when this examiner found out these claims, that they were entitled to a March 2000 party date, the issue had been decided by the office on this very issue. [00:13:25] Speaker 00: And so once that had done, it had removed the substantial new question of patentability in the enterprise re-exam, and the re-exam should have been terminated, because it lacked the substantial new question of patentability. [00:13:36] Speaker 01: You're into your rebut. [00:13:37] Speaker 01: Do you want to say that, and let's go from the other side? [00:13:39] Speaker 00: I will say the rest, unless there are further questions. [00:13:54] Speaker 02: Good morning, may I please support? [00:13:56] Speaker 02: Just starting with the termination provision 317B, I think Your Honor understands the point. [00:14:03] Speaker 02: Affinity's position on 317B just doesn't make any sense. [00:14:07] Speaker 02: It doesn't make sense to have a different rule for whether an intraparte re-exam is terminated based on whether it's filed before a final district court decision or after a final district court decision. [00:14:17] Speaker 02: And the purpose of the 317B is to prevent harassment of the patent owner. [00:14:21] Speaker 02: And in this case, there's been no harassment. [00:14:24] Speaker 02: The district court only made a final determination of patentability with regard to claims 3, 22, and 28. [00:14:33] Speaker 02: And so the PTO correctly terminated [00:14:36] Speaker 02: re-examination with respect to those claims and their dependent claims. [00:14:41] Speaker 01: To the extent that there's a fair distinction to be drawn by using terms like procedural rulemaking and substantive rulemaking, does the office view this as substantive rulemaking or is it procedural rulemaking? [00:14:52] Speaker 01: The rules that you're asking for deference on here. [00:14:56] Speaker 02: Well, they've got a regulation, 1.97B, [00:15:00] Speaker 02: So the office believes they should get some deference, some shotgun deference. [00:15:06] Speaker 02: And they also have an MPEP rule, which has been in effect since 2005. [00:15:10] Speaker 02: That's the four-factor test. [00:15:13] Speaker 02: That's the basis for getting some hour deference. [00:15:15] Speaker 03: Is the agency authorized to regulate in this space? [00:15:25] Speaker 03: I mean, in IPRs, for example, Congress gave the PTO broad substantive and procedural rulemaking authority. [00:15:33] Speaker 03: There's no question about that. [00:15:34] Speaker 03: It's really unprecedented. [00:15:35] Speaker 03: in terms of Congress's delegation to the PTO. [00:15:38] Speaker 03: IPR's broad substantive and procedural rulemaking. [00:15:41] Speaker 03: So the agency was free to fill gaps in IPRs. [00:15:46] Speaker 03: Is there a provision that you can point me to that similarly applies in the reexamination context where the agency was expressly delegated gap filling authority? [00:15:56] Speaker 02: I believe the PTO is the advisor to the president on intellectual property and patent matters, so I don't know if there's a specific rule authorizing the PTO to create rules for inter parte re-exam. [00:16:17] Speaker 03: Do you not know anything about this issue? [00:16:19] Speaker 03: You might be better off just saying I'm completely unprepared on this issue, because what you just said made no sense. [00:16:23] Speaker 03: OK. [00:16:24] Speaker 03: I may not be able to answer that question. [00:16:26] Speaker 03: But one of the issues in this case that the director has argued that she is entitled to Chevron and our deference. [00:16:33] Speaker 03: And I'm trying to understand what are the contours of when Chevron and our deference are warranted. [00:16:41] Speaker 03: And in particular, you said, well, she gets Chevron and deference because she enacted this regulation. [00:16:45] Speaker 03: And I'm kind of wondering. [00:16:48] Speaker 03: Is that true if she has no authority to enact this regulation, if this regulation was enacted but she had no substantive rulemaking authority? [00:16:57] Speaker 03: I'm wondering, does an agency get Chevron deference if Congress hasn't authorized them to fill gaps? [00:17:10] Speaker 02: I don't think I'm prepared to answer that question and I'd rather not. [00:17:12] Speaker 02: But they have implemented these rules in MPEP. [00:17:18] Speaker 02: They have the regulation. [00:17:19] Speaker 02: It's a long-standing rule that dates back to 2005. [00:17:23] Speaker 02: And even without any deference at all, I think it's just kind of a common sense application. [00:17:28] Speaker 02: It just doesn't make any sense to have this rule where you treat earlier filed and later filed inter-party re-exams differently. [00:17:34] Speaker 02: It would be totally inefficient. [00:17:36] Speaker 02: And it just doesn't make any sense. [00:17:37] Speaker 03: Those are all the reasons why the rule shouldn't be that way. [00:17:40] Speaker 03: What response do you have, though, to the plain language argument that your opponent made? [00:17:46] Speaker 02: Yeah, sure. [00:17:46] Speaker 02: I think if you look at the plain language of 317b, it talks about applying termination when the party has not sustained its burden of proving the invalidity of any patent claim in suit [00:18:03] Speaker 02: for later filed reexaminations. [00:18:07] Speaker 02: And then for maintaining existing reexaminations, it talks about such issues. [00:18:13] Speaker 02: And I think the only fair interpretation of such issues is it's referring to the language any such patent claim on the basis of such issues. [00:18:22] Speaker 02: I think you have to interpret that such issues is referring back to the claim by claim analysis on the basis of such issues. [00:18:30] Speaker 03: Now, if there were a provision sandwiched in between that dealt with new re-exams, then that argument just may be much more compelling. [00:18:40] Speaker 03: But the provision in between, which deals with whether you can initiate re-exams, institute new re-exams, instead says such patent claims on the basis of such issues. [00:18:57] Speaker 03: Was that just total superfluousness by Congress there? [00:18:59] Speaker 03: Because if your view is the interpretation of when the basis of such issues should refer back to the earlier reference to any patent claim in suit in the triggering provision, then why in the world would Congress have felt the need to include the such patent claims language in the institution part of this provision? [00:19:23] Speaker 02: Yeah. [00:19:23] Speaker 02: I mean, I think they certainly could have [00:19:27] Speaker 03: So you think it's just superfluous? [00:19:29] Speaker 02: I think they could have used different words here. [00:19:30] Speaker 02: I think they used such issues. [00:19:32] Speaker 02: They could have actually just repeated the whole portion about any patent claim and just the same way they did in the first clause, repeated that in the second clause, and made it clear that it applies to... But the fact that they didn't repeat it in the second clause, different words in the same statute are presumed to have different meanings. [00:19:50] Speaker 03: They didn't repeat it. [00:19:51] Speaker 03: So what do I do with that? [00:19:52] Speaker 02: Well, I think they're using the word such issues. [00:19:55] Speaker 02: You just have to look back and [00:19:57] Speaker 02: interpret that as referring to a claim-by-claim basis on such issues. [00:20:01] Speaker 02: That's the only logical interpretation of the statute. [00:20:11] Speaker 03: What do you want me to refer back to? [00:20:15] Speaker 02: So in the second clause it refers to termination on the basis of such issues may not thereafter be maintained by the office. [00:20:23] Speaker 02: Such issues is going to refer back to [00:20:26] Speaker 02: where it's talking about that party may not thereafter request an inter-party re-examine on any such patent claim on the basis of issues which that party raised or could have raised. [00:20:38] Speaker 02: So I think you have to read such issues as referring back to that entire clause, and not just the issues, but also any such patent claim on the basis of issues which that party raised or could have raised. [00:20:52] Speaker 02: That's certainly a permissible interpretation to the extent there's any ambiguity in the statute. [00:21:00] Speaker 03: Well, I'm not sure you have to convince me it's permissible because you haven't convinced me yet that Chevron applies. [00:21:05] Speaker 03: So I think you have to convince me that it's the reasonable interpretation. [00:21:09] Speaker 02: Yeah, so I think it is the reasonable interpretation because affinity's interpretation, as you've already pointed out, just doesn't make a lot of sense. [00:21:17] Speaker 02: The idea is to prevent harassment here. [00:21:19] Speaker 02: But how are we preventing harassment if the same party could, if we terminate their entire re-examination that's existing, they could just subsequently file a new inter-party re-examination? [00:21:29] Speaker 02: That just doesn't make any sense. [00:21:31] Speaker 02: There's no efficiency there. [00:21:32] Speaker 02: It's just kind of illogical on its face. [00:21:36] Speaker 02: I don't see any basis for it. [00:21:38] Speaker 02: I don't see any intent by Congress to have a different rule for earlier and later filed inter-party re-exams. [00:21:44] Speaker 03: Do you want to turn to the second estoppel issue? [00:21:47] Speaker 02: Yeah, the 303 issue. [00:21:50] Speaker 02: So this was, I think as you pointed out, there's really no legal basis that they cite to in the law. [00:21:57] Speaker 02: They actually have it backwards. [00:21:59] Speaker 02: A decision by the PTO that a patent is invalid or unpatentable can actually trump a district court decision. [00:22:06] Speaker 02: So I think they have it a little bit backwards there. [00:22:09] Speaker 02: There's also a due process issue. [00:22:11] Speaker 02: Just because one party may have failed to meet their burden of proving infelidity, it doesn't prevent any [00:22:18] Speaker 02: any new party from challenging the validity of a patent. [00:22:20] Speaker 02: So I think their argument that somehow the subsequent decision by Examiner LaRose or a district court decision or a board decision in a different case, a different patent that may be similar, somehow conclusively determines that there's no new question of patentability. [00:22:37] Speaker 03: I think herein is the crux of what's tough to swallow about this. [00:22:43] Speaker 03: The board found there was, in fact, written description support [00:22:48] Speaker 03: in that paragraph on column, whatever, for the soft buttons in a different case. [00:22:54] Speaker 03: In a different case. [00:22:55] Speaker 03: With involving a different defendant, but involving, not defendant, but petitioner, whatever. [00:23:00] Speaker 03: Right. [00:23:00] Speaker 03: But involving, of course, the same patent [00:23:03] Speaker 02: Right. [00:23:03] Speaker 02: So it was a different party. [00:23:05] Speaker 02: It was also a different patent. [00:23:07] Speaker 02: And it actually had different claims. [00:23:08] Speaker 03: When you say it was a different patent, it is the exact same specification, identical word for word. [00:23:14] Speaker 03: And when you say it had different claims, nobody has argued that there was any meaningful difference between the claims that I'm aware of. [00:23:21] Speaker 03: Am I missing something? [00:23:22] Speaker 03: Did someone say there was some meaningful difference between the claim language that could have resulted in a different outcome? [00:23:30] Speaker 02: Well, I'll just point out that the claims in the 926 patent, that's the other board decision we're talking about, it refers to a selectable representation, which could be present on a recipient device or a different device. [00:23:46] Speaker 02: As opposed to here, we have soft buttons. [00:23:48] Speaker 02: So soft buttons, I think, are something you can actually, like, it's a button you can touch where a selectable representation [00:23:54] Speaker 02: could be something different where you could use maybe remote control to hover over something. [00:23:59] Speaker 02: There could be some difference. [00:24:00] Speaker 02: I don't think the parties have actually gone into detail how that could be different, but I think there are differences. [00:24:05] Speaker 03: OK. [00:24:05] Speaker 03: Suppose, though, forget about the facts of this case. [00:24:09] Speaker 03: Suppose that it was the exact same limitation, exact same pattern. [00:24:15] Speaker 03: Because I don't think actually being a different patent matters if it's the same limitation, same family continuation. [00:24:20] Speaker 03: But suppose that it's exactly the same patent, the board looks at it and says, yes, there's written description support for this right here in this paragraph. [00:24:30] Speaker 03: Can a subsequent re-examination or IPR or whatever come along? [00:24:36] Speaker 03: And can a different composition of board judges [00:24:40] Speaker 03: reach the opposite conclusion. [00:24:42] Speaker 03: Would that be something the office is permitted to do? [00:24:45] Speaker 02: Yes, that can definitely happen. [00:24:46] Speaker 02: The board decision in this other patent, this 926 patent, is not a precedential decision. [00:24:52] Speaker 02: The panel, the board in this case, is certainly not bound by that decision. [00:24:56] Speaker 02: They can look at it, but they're not bound by it at all. [00:25:00] Speaker 02: They're not bound by the district court decision or examiner Larose's subsequent decision. [00:25:04] Speaker 02: They can look at the record and make a determination on their own. [00:25:09] Speaker 02: And it's not the best result, but it's not uncommon. [00:25:12] Speaker 03: Even if the record is identical, between the two, one panel of four judges can reach one conclusion, and a different panel of four judges can reach the exact opposite conclusion. [00:25:22] Speaker 02: Yes, that's true. [00:25:23] Speaker 02: The question is whether the interpretation is reasonable and whether it's supported by substantial evidence. [00:25:30] Speaker 02: And in this case, I'm happy to delve into the 228 patent spec to show you how it's [00:25:34] Speaker 02: a reasonable interpretation. [00:25:35] Speaker 02: It's supported by substantial evidence. [00:25:38] Speaker 03: You can do that, but he didn't do it in his opening. [00:25:40] Speaker 03: So I don't know why you'd want to open the door. [00:25:43] Speaker 03: But you're free to do whatever you want. [00:25:45] Speaker 02: I may leave that to the next panel. [00:25:47] Speaker 02: If you'd like me to, I'm more than happy to do that. [00:25:51] Speaker 02: To answer your question, the board here is not bound in any way by that other board decision or the district court or the examiner's decision. [00:25:58] Speaker 02: You just look at the record in this case and determine whether there's substantial evidence [00:26:02] Speaker 02: support the board's decision. [00:26:03] Speaker 02: And I think here there is. [00:26:06] Speaker 03: Does it matter that this is a question of fact? [00:26:09] Speaker 03: Meaning, if it had been a question of law that the board had decided in the other case, would that make a difference? [00:26:14] Speaker 03: Or is a different composition of board judges permitted to decide an identical question of law differently? [00:26:20] Speaker 02: Well, I think for a question of fact, it's just whether there's substantial evidence. [00:26:24] Speaker 02: If it was a question of law and it's a non-precedential decision like that board decision was, I think they could. [00:26:29] Speaker 02: They still could. [00:26:30] Speaker 02: They still could. [00:26:37] Speaker 02: So I don't want to open the door on the priority date issue, if you'd rather not have me talk about that, but I'm certainly happy to delve into the 228 patent. [00:26:49] Speaker 02: I'll do it just very briefly. [00:26:54] Speaker 02: I don't think it'll take very long. [00:26:56] Speaker 02: If you look at the 228 patent, the key passage is, let's look at column nine. [00:27:07] Speaker 02: I'm sorry. [00:27:08] Speaker 02: Comm 11's lines 10 through 26 actually shows the embodiment where it has a portable electronic device that communicates to a car automobile system. [00:27:21] Speaker 02: And if you read this paragraph closely, it's clear that the only device that has the graphical user interface is the portable device. [00:27:30] Speaker 02: And that's supported if you look at the figures [00:27:37] Speaker 02: Figure 4 on A63, this shows the radio dial, which is the graphical user interface with the soft buttons. [00:27:48] Speaker 02: That's on the portable device. [00:27:49] Speaker 02: And then if you look at Figure 9, [00:27:52] Speaker 02: Figure nine, on A68, this is the figure that shows the automobile audio system, and you can see here it just has two buttons, it's tuned to 98.1, it has a CD player, there's no graphical user interface there. [00:28:07] Speaker 02: So I think based on that disclosure and the spec and these figures, it's clear that only the portable device has the GUI interface and [00:28:14] Speaker 03: But you don't have to prove there's no graphical user interface there, right? [00:28:19] Speaker 03: You just have to prove there's substantial evidence for the boys fact-finding to that extent. [00:28:22] Speaker 03: So even if I thought it was ambiguous, or even if I might have decided the other way, or even if a different composition of board judges would have, in fact, decided it the other way and did decide it the other way, arguably, none of that is relevant. [00:28:34] Speaker 03: You just have to prove to me that this particular decision is supported by substantial evidence. [00:28:37] Speaker 02: Exactly. [00:28:38] Speaker 02: Exactly. [00:28:39] Speaker 02: So if there's no further questions, I'm going to hand this out. [00:28:54] Speaker 00: Two very quick points, one on the 317B. [00:28:58] Speaker 00: It's clear that Congress intended to funnel any new IPR petitions back into the decision of if there's a substantial new question of patentability. [00:29:08] Speaker 00: So it's not a waste of resources to terminate a currently pending one. [00:29:13] Speaker 00: If the accused infringer wants to bring a new petition in, then they have to establish that there's a substantial new question of patentability as to those claims that were not adjudicated at trial. [00:29:22] Speaker 00: And so by doing that, that's the mechanism that would then potentially preclude continued harassment by the patent owner, because more than likely, that accuses him for whatever uphill battle to establish his suspension in question on related claims that he had already lost at the district court. [00:29:37] Speaker 00: On the 303 issue, it is troubling to me that the Patent Office is taking the position that it is totally fine [00:29:49] Speaker 00: for inconsistent decisions to be made related to the same family on issues that are common across all continuation applications. [00:29:57] Speaker 00: That cannot be the desired result that we want out of the agency. [00:30:03] Speaker 00: And in here, I just want to be clear. [00:30:04] Speaker 00: We're not relying on the district court decision as some sort of estoppel. [00:30:07] Speaker 00: Patent officer's reliance on Frenius is just not true. [00:30:11] Speaker 00: What we are relying on is in the ex parte re-exam on this patent, the issue was decided. [00:30:19] Speaker 00: And the basic principles of estoppel apply. [00:30:21] Speaker 00: Patent Office was a party to both proceedings. [00:30:23] Speaker 00: The issue was the same. [00:30:25] Speaker 00: They raised the issue, and their arguments were rejected, and a decision was made on priority that these are entitled to March 2000 priority. [00:30:31] Speaker 00: Therefore, even just under basic principles of estoppel, they were bound by a decision. [00:30:36] Speaker 00: And again, I did not hear counsel from the Patent Office make any attempt to distinguish this court's ruling in N. Ray Swanson, where this court specifically said a second examination cannot [00:30:48] Speaker 00: adjudicate issues that were done in the first examination. [00:30:51] Speaker 00: That's exactly what happened here in these claims. [00:30:54] Speaker 00: The issue on priority had been decided. [00:30:56] Speaker 00: This proceeding should have been terminated once the re-exam certificate had been issued. [00:31:00] Speaker 01: Thank you. [00:31:00] Speaker 01: We thank both sides and the case is submitted.