[00:00:00] Speaker 01: The next case for argument is 16150 to return mail versus USPS. [00:01:21] Speaker 01: Mr. Rainey, good morning. [00:01:22] Speaker 01: I think we're ready to proceed. [00:01:24] Speaker 04: Good morning, your honors, and may it please the court. [00:01:26] Speaker 04: Richard Rainey on behalf of Return Mail. [00:01:29] Speaker 04: We submit that the board committed two fundamental errors in this case requiring reversal. [00:01:35] Speaker 04: First, the board erred in finding that the Postal Service had standing under Section 18A1B to petition for CBM review. [00:01:43] Speaker 04: The Postal Service cannot be sued for infringement or charged with infringement as required by that section of the statute. [00:01:50] Speaker 04: A long line of unbroken authority from this court and from the Supreme Court has held that Section 1498 actions sound in eminent domain and not in the tort of patent infringement. [00:02:00] Speaker 00: So do you think they deliberately excluded government agencies, or you think it was just a necessary interpretation of the statute? [00:02:11] Speaker 04: So it is at a minimum a necessary interpretation of the statute, Judge Newman. [00:02:15] Speaker 04: I would argue in addition to hold otherwise would create an anomaly in the CBM statute where the government would be the only party that could file for a CBM petition but not be stopped from an adverse result in the CBM proceeding because the stopper provision is completely silent as to 1498. [00:02:34] Speaker 00: Maybe no one in the Congress knew, maybe no one told them that [00:02:39] Speaker 00: infringement actions can be brought in this court. [00:02:43] Speaker 04: And if that is the case, Your Honor, then the Beecham case from the Supreme Court instructs us to apply, not to assume what Congress would have done had they been informed about 1498 actions, but to apply the clear text of the statute. [00:02:56] Speaker 04: And I would argue that given this long line of cases going all the way back to Crozier, it's been very clear. [00:03:03] Speaker 03: So since you're devoted to the clear text of the statute, you'd agree that we shouldn't add limitations [00:03:09] Speaker 03: to the applicability of a statute that don't appear in its text. [00:03:16] Speaker 04: I think in general that's right, yes. [00:03:18] Speaker 03: And specifically it's right here then. [00:03:22] Speaker 03: I believe that's... Your principal argument asks this court to construe 18A1B as limited to civil suits, alleging infringement pursuant to 35 USC 271A, but... [00:03:37] Speaker 03: 18A1B doesn't specifically, facially contain any such limitation. [00:03:42] Speaker 03: And you've already agreed with me that we shouldn't limit beyond the languages and text. [00:03:47] Speaker 04: Two responses to that. [00:03:48] Speaker 04: This court in Suprema held that when Congress uses the term infringement in a statute, it is referring to the definition of infringement in 35 U.S.C. [00:03:55] Speaker 04: 271. [00:03:57] Speaker 04: But regardless, I would argue when Congress uses the term infringement, it does so in the context of what has been 100 years of clear precedent that a suit against the government under 1498 is not an action for infringement. [00:04:10] Speaker 00: Yes, it is. [00:04:12] Speaker 00: You have to establish infringement in order to obtain the remedy under which would be some sort of payment, some sort of royalty. [00:04:21] Speaker 00: But you have to prove infringement. [00:04:23] Speaker 04: So there is no question that there are relevant concepts in the Motorola case from this court made that point very clear. [00:04:30] Speaker 04: There are relevant concepts from Title 35 that are used. [00:04:33] Speaker 03: Tell me where in Motorola we specifically address whether a 1490AA suit is akin to a suit for patent infringement. [00:04:44] Speaker 04: So I would argue Motorola says it's not. [00:04:46] Speaker 04: What Motorola says is [00:04:48] Speaker 04: In Motorola, the court was addressing 287, limitation on damages. [00:04:52] Speaker 04: That section of Title 35 says it applies to any action for infringement. [00:04:58] Speaker 04: What the court in Motorola said is a suit under 1498 is not an action for patent infringement. [00:05:04] Speaker 04: It is an eminent domain action where the government is not the punitive infringer. [00:05:10] Speaker 04: Rather, the government is deemed a licensee. [00:05:12] Speaker 04: So therefore, there's a distinction between a proceeding [00:05:16] Speaker 01: Morola says a lot of stuff. [00:05:20] Speaker 01: So I'm not suggesting that you're misciting it. [00:05:24] Speaker 01: But my read of Morola is saying is that the government isn't what they say, the position of an ordinary infringer. [00:05:32] Speaker 01: But it doesn't say the government can't infringe. [00:05:35] Speaker 01: And indeed, what it says is the government can only be sued for any direct infringement of a patent and not for inducing [00:05:43] Speaker 01: All I'm suggesting is Motorola is at best ambiguous in terms of what they meant. [00:05:48] Speaker 01: But I think a fair reading is that, as Judge Newman alluded to, the government can infringe. [00:05:54] Speaker 01: It's a question of what the remedies are. [00:05:56] Speaker 01: If we're in 1498, then clearly the remedies don't include an injunction. [00:06:01] Speaker 01: They don't include all of the things that 271A brings forward. [00:06:05] Speaker 01: That doesn't mean, though, necessarily, if you look at the statutory text, that the government can't be considered an infringer for purposes of CBF. [00:06:12] Speaker 01: So why am I wrong? [00:06:14] Speaker 04: So I would argue that if you would create an anomaly, if you say that sued for infringement, for example, in section 18 means the government can petition for CBM review, but an action for infringement under 287 doesn't apply, [00:06:29] Speaker 04: What is the principle distinction between those two? [00:06:34] Speaker 01: The principle distinction is that when Congress created the statutes, 271A also brings with it certain remedies that are available, including injunctions and damages. [00:06:44] Speaker 01: And 1498, the argument is, also deals with infringement. [00:06:48] Speaker 01: The words are the same in terms of the conduct of infringement in 271A and in 1498A. [00:06:55] Speaker 01: The difference is that 1498, there's no disagreement. [00:06:58] Speaker 01: that it's not tortious infringement, it deals with the government as a licensee. [00:07:03] Speaker 01: So the remedy, the relief is different, but why is the liability different? [00:07:08] Speaker 04: So the underlying liability, obviously as Motorola explains, the court does borrow the concepts from Title 35, but nowhere does 1498A use the term infringe or infringement. [00:07:19] Speaker 04: That statute is talking about an eminent domain taking by the government. [00:07:23] Speaker 01: But the cases that construe 1498A clearly talk about infringement. [00:07:27] Speaker 01: The suit in this case was called, was termed a suit for infringement. [00:07:32] Speaker 01: Clearly, that term is used to describe 1498A. [00:07:36] Speaker 01: And I would suggest to you it's because the liability portion of it is just as very similar, if not the same as 271A. [00:07:45] Speaker 01: The difference is the remedy. [00:07:47] Speaker 04: Well, and I would argue that what the government has done, it has taken the position that Title 35 is inapplicable to it in a number of instances, Crozier, Lisona, Calhoun, and they shouldn't be able to pick and choose what aspects of Title 35 are applicable to them and which portions are not applicable to them. [00:08:10] Speaker 04: I see no reason why, if the focus here is what did Congress intend by the word infringement, the goal there is to see are they talking about Title 371? [00:08:21] Speaker 04: When the government acts, it acts with authority. [00:08:24] Speaker 04: 271A talks about whoever without authority makes use of itself as a particular invention. [00:08:31] Speaker 04: The government is always acting with authority. [00:08:33] Speaker 04: So our argument is not, it doesn't satisfy even the threshold for 271. [00:08:39] Speaker 04: And as I said, we have this anomalous result here where the estoppel provision would not apply only to the government. [00:08:46] Speaker 01: Well, I mean, there could be several answers for that. [00:08:49] Speaker 01: One is Congress just forgot and they can fix it if they want to. [00:08:54] Speaker 01: The other question is raised is why wouldn't that same argument hold in certain circumstances under the IPR proceedings? [00:09:01] Speaker 01: And so far at least, the government has been using the IPR proceedings. [00:09:05] Speaker 04: So again, I think IPR and CBM are fundamentally different proceedings. [00:09:13] Speaker 04: The CBM is a limited proceeding, limited by the subject patent and limited by a standing requirement. [00:09:21] Speaker 04: Whereas IPR is available to anyone. [00:09:25] Speaker 04: other than the owner of the patent, including hedge funds and others who might not even have standing in court to proceed. [00:09:33] Speaker 01: But in those circumstances, there's no correspond. [00:09:36] Speaker 01: I understand the point you make about 1498 not having the estoppel provision. [00:09:39] Speaker 01: And I think it has some lags. [00:09:41] Speaker 01: But neither that same thing with a nerd to many cases under the IPR when it's brought by someone who is never going to be involved in infringement litigation with the patentee. [00:09:52] Speaker 01: So to put all of this emphasis on you need this corresponding estoppel of one side can bring it, the other side has to bring it, and we're trying to avoid district court litigation that just doesn't hold for the IPRs and to a certain extent doesn't hold for CBFs. [00:10:06] Speaker 04: I think what seems clear is that nowhere in the AIA did Congress contemplate 1498 actions. [00:10:13] Speaker 04: And the Beecham Supreme Court decision makes clear we have to apply the clear text of the statute, [00:10:18] Speaker 04: assume what Congress would have done had they been aware of 1498 or had that in mind when they were passing it. [00:10:24] Speaker 04: So I think a fair reading is here. [00:10:27] Speaker 04: The government is not in the position of an infringer and sued for infringement and charged with infringement should not inure to the benefit of the government here. [00:10:36] Speaker 00: There's nothing to show it was excluded, right? [00:10:39] Speaker 00: It's just absent. [00:10:41] Speaker 00: It's not a person. [00:10:42] Speaker 00: Government is a person, technically. [00:10:45] Speaker 00: Yes. [00:10:47] Speaker 00: I would say it's much more likely than not that it was an oversight. [00:10:52] Speaker 00: The real question is whether it's within this court's authority to remedy the oversight or send it back to the legislature. [00:11:03] Speaker 04: And I would argue that it is not something this court should remedy. [00:11:07] Speaker 04: That's a legislative issue for Congress to resolve. [00:11:11] Speaker 01: That's not necessarily the case. [00:11:14] Speaker 01: If we think the only oversight is with respect to the estoppel, then would you agree that it's the kind of oversight that it's up to Congress to decide whether they think they need that symmetry there and they would add court of claim? [00:11:31] Speaker 04: The absence of 1498 actions in the estoppel helps us understand the scope of what sue for infringement or charge for infringement means. [00:11:38] Speaker 04: Going back to the point I made, I don't want to belabor that, but to me that's an interpretive tool. [00:11:43] Speaker 04: It's very clear when they were using those terms, at least to me, they were not talking about the government. [00:11:48] Speaker 04: liability has been for a long time not considered a suit for infringement. [00:11:54] Speaker 03: Mr. Rainey, I know you have to defend your position but I just want you to touch a little bit on the government's argument that we can't even review that determination. [00:12:05] Speaker 04: Two points on that, Your Honor. [00:12:06] Speaker 04: First, I would argue that standing to petition for a CBM review is very much within the realm of the Versada decision from this court, holding that the court clearly has authority to reach the invalidation authority of the PTAB. [00:12:21] Speaker 04: Why is this different than a KD? [00:12:23] Speaker 04: Katie's, as this court explained, is dealing with a timing, a mere timing issue, as I think this court described it. [00:12:32] Speaker 04: Standing is a much more fundamental and a defining characteristic. [00:12:35] Speaker 04: Just like the CBM character of the patent is a defining characteristic of CBM, so too is this standing requirement before the PTAB. [00:12:45] Speaker 04: And moreover, even under the Achades decision, we would argue we satisfy that as well. [00:12:52] Speaker 04: There's no other petition that could have been filed that could have raised the issues in this case. [00:12:58] Speaker 04: That is something uniquely within the control of return mail. [00:13:02] Speaker 04: This has never been asserted against anyone other than the government. [00:13:05] Speaker 04: And so therefore, there's nobody that falls within either the suit for infringement or charged with infringement language of the statute. [00:13:12] Speaker 04: The second point I would make on reviewability is just that QOZO, I would argue, has made very clear that issues like limitations on the power of the agency are always subject to judicial review. [00:13:26] Speaker 04: I would argue this is very clearly a limitation on the power of the PTAB. [00:13:30] Speaker 04: If I can turn to the 101 issue, the PTAB here found [00:13:37] Speaker 04: despite finding the claims were valid over the prior commercially deployed ECS system as reflected in publications, that the return mail claims, quote, simply ensnared the abstract business process of relaying mailing address data. [00:13:52] Speaker 04: The claims in this case are not, the claims that we are appealing are not directed to the mere abstract idea of relaying mailing address data. [00:14:00] Speaker 04: They may involve that, but they're not directed to that. [00:14:03] Speaker 04: And we think a unique feature of this case is the fact [00:14:07] Speaker 04: that there are numerous commercially deployed postal systems for dealing with mail, none of which are implicated by the claims of this pact. [00:14:18] Speaker 04: We have the NCOA process. [00:14:20] Speaker 01: We have the fact... That's your preemption argument, right? [00:14:23] Speaker 01: That is a preemption, yes. [00:14:25] Speaker 01: But no, I mean, Ariosa suggested at least that preemption, that [00:14:31] Speaker 01: absence of complete preemption. [00:14:33] Speaker 01: I mean all the signals we have a preemption is that it's important, but complete preemption is not necessary. [00:14:39] Speaker 01: So if we're asked to draw the line, why should the line be drawn on your side? [00:14:44] Speaker 04: So I think Ariosa is easily distinguished in our case. [00:14:47] Speaker 04: Ariosa, the claims there were to all of the basically commercially practicable applications of that invention. [00:14:54] Speaker 04: We are totally on the other end of the spectrum there. [00:14:57] Speaker 04: These are very specific claims to an improved process for dealing with a major problem, which is returned mail. [00:15:06] Speaker 04: A very specific process requiring very specific data and very specific steps, as reflected in, for example, figure three in the claims of the pack. [00:15:15] Speaker 04: We are not in a situation where we have even close to complete or all practical preemption. [00:15:20] Speaker 04: So I think this is much more like Bascom, where the absence of preemption was very significant to the court. [00:15:26] Speaker 04: And there have been a number of other decisions where this court has so held. [00:15:30] Speaker 04: But in addition to preemption, I would argue we have claims that did [00:15:34] Speaker 04: improve the processes for dealing with mail. [00:15:38] Speaker 04: And the US Postal Service mail system, while it is a black box, perhaps to a lot of us, we put our mail into the mailbox and off it goes, is a massive logistical system. [00:15:52] Speaker 04: This is an invention that was designed to fit into that massive logistical environment and improved, it's unquestionable, it is an improvement on the process. [00:16:02] Speaker 04: by encoding specific data, very specific data, into a piece of mail. [00:16:07] Speaker 04: After that mail comes back returned, decoding that information and doing one of two things with that information. [00:16:13] Speaker 00: How can that decision stand if it can't be appealed? [00:16:19] Speaker 04: I'm sorry, Your Honor? [00:16:21] Speaker 00: You're talking about now the PTAB? [00:16:24] Speaker 04: We're talking about the 101 decision on the merits from the PTAB. [00:16:28] Speaker 04: If this court decides that it can reach the merits of this decision, which we would argue it should not, then we would ask that the court reverse the... Let's say we agree with you that we can't reach the merits. [00:16:40] Speaker 04: Then the decision below should be vacated. [00:16:41] Speaker 00: Then how could that have proceeded at all in the PTAB? [00:16:45] Speaker 04: It should never have proceeded in the PTAB, and the decision should be vacated, and we should be back into the Court of Federal Claims where our case is currently stated, where we can try this [00:16:53] Speaker 04: Try this case on the merits. [00:16:56] Speaker 00: OK. [00:16:56] Speaker 00: I thought you were arguing the PTAP decision. [00:17:00] Speaker 01: I am. [00:17:01] Speaker 01: But that's only an alternative if we reject your standing argument. [00:17:04] Speaker 04: That is correct, Your Honor. [00:17:06] Speaker 00: OK. [00:17:07] Speaker 04: So just to sum up on this, we believe we have a unique situation here. [00:17:15] Speaker 04: We have a very broad abstract idea adopted by the PTAP, advocated by the Postal Service. [00:17:22] Speaker 04: There is no question that our specific claims are a series of process steps which are not directed to that broad concept. [00:17:32] Speaker 04: They may involve it, but there are lots and lots of ways. [00:17:35] Speaker 04: In fact, I would argue that broad concept could apply to virtually every process the Postal Service is using. [00:17:41] Speaker 01: Thank you. [00:17:41] Speaker 01: Will we store a few minutes of rebuttal? [00:17:43] Speaker 01: Let's hear from the other side. [00:17:56] Speaker 02: Good morning, Your Honor. [00:17:57] Speaker 02: May it please the Court? [00:17:59] Speaker 02: The PTUG properly found that claims 42 to 44 of the 548 patent were not patentable under 35 U.S.C. [00:18:07] Speaker 02: Section 101. [00:18:08] Speaker 02: It applied the two-step analysis of Alice and Mayo, concluding that claims are directed to the abstract idea of relaying mailing address data. [00:18:16] Speaker 02: Claim 42 to 44. [00:18:17] Speaker 01: Confirm that this is... What about your friend's argument that there's a preemption argument here, a case here, because this is such a near... drawn to such a near-Eau Claire. [00:18:26] Speaker 02: Certainly, Your Honor, and a review of the claims made clear that there is still a preemption concern. [00:18:31] Speaker 02: The claims themselves are directed to receiving mail with a preference marked on it [00:18:35] Speaker 02: identifying as undeliverable mail after it's returned, reviewing the preference on the mail, generating data based on the mail, and then sending along the original mailer if they want corrected address information. [00:18:48] Speaker 02: There's nothing tied to the specific technology or to a particular way of doing it. [00:18:54] Speaker 02: Now, for the preemption concerns specifically, in the brief, RMI argued that because their claims were not invalidated under a particular 102 reference that was considered by the PTAB, that somehow signals that there was no preemption. [00:19:10] Speaker 02: But I would point the courts to the decision of the PTAB, Appendix 23, where they said that their decision on 102 was dealing specifically with the reference, what was explicitly in the reference, what was inherently required by the reference, [00:19:23] Speaker 02: not by what the Postal Service actually was doing. [00:19:26] Speaker 02: So a lot of the disputes between the two parties, between return mail and Postal Service at the PTAB over whether the claims should be invalidated under 102 dealt with what the Postal Service was actually doing within the equipment it was using. [00:19:39] Speaker 01: Just to refresh my recollection, the PTAB said that it was not [00:19:44] Speaker 01: invalid as anticipated? [00:19:46] Speaker 02: It was not invalid as anticipated under 102 because the particular reference itself did not explicitly or inherently disclose the feature of decoding. [00:19:57] Speaker 02: testimony put on as to what actually happened to the Postal Service system. [00:20:01] Speaker 02: But the PTAB said, that doesn't matter. [00:20:04] Speaker 02: What we're looking at is a particular 102 argument based on a single reference. [00:20:08] Speaker 02: We can't go out and look at what was actually being done by the Postal Service. [00:20:12] Speaker 02: We're limited by what's particularly in front of us in the document. [00:20:15] Speaker 01: OK. [00:20:15] Speaker 01: Can we, at least for my purposes, I'd like to go back to the standing argument. [00:20:20] Speaker 01: Certainly, Your Honor. [00:20:23] Speaker 01: Let's assume your viewability here. [00:20:26] Speaker 01: And why isn't your friend's argument compelling that we're trying to discern what Congress's intent was? [00:20:34] Speaker 01: There's no reference to word infringement in 1498A, and this, importantly, significantly no corresponding estoppel [00:20:42] Speaker 01: in the CBM that could ever be applied to the government in this case? [00:20:46] Speaker 01: Why aren't at least those two factors enough to suggest that there's no standing here? [00:20:51] Speaker 01: And if we get it wrong, the question is, whose role is it to clean it up? [00:20:57] Speaker 01: And that it's Congress's role to clean it up, even if that was their intent. [00:21:01] Speaker 02: Certainly are. [00:21:01] Speaker 02: And I think that the important thing is to go back and look at the specific language of Section 18. [00:21:06] Speaker 02: When they wanted to find who could file a petition, who a proper petitioner was, they used the word sued for infringement. [00:21:15] Speaker 02: So in 18A1A, they used the word sued for infringement. [00:21:18] Speaker 02: They didn't say sued for infringement under a particular cause of action. [00:21:22] Speaker 02: They didn't say sued for infringement in district court under 271. [00:21:26] Speaker 02: They used the word sued for infringement. [00:21:27] Speaker 02: If you look at other subparts of Section 18, when Congress wanted to specifically spell out a particular cause of action, this was with the estoppel provisions, with the venue provisions, they actually said what causative action they had in mind. [00:21:42] Speaker 02: They said 271, 281 for estoppel. [00:21:46] Speaker 00: That's easy. [00:21:46] Speaker 00: They also say any person. [00:21:49] Speaker 02: Yes, Your Honor. [00:21:51] Speaker 02: So the government is a full participant in the patent system. [00:21:54] Speaker 02: We obtain patents, we enforce patents, we filed [00:21:58] Speaker 02: declaratory judgment actions in district court about ownership of patents. [00:22:02] Speaker 00: But it's not a person. [00:22:03] Speaker 02: There's nothing to suggest that for the purpose of this particular statute, the government should not be interpreted as a person entitled to file a CBM petition. [00:22:12] Speaker 02: Now, neither of the parties have briefed the issue. [00:22:14] Speaker 02: So if your honor has particular concerns about whether the government is a person, we'd be happy to offer supplemental briefing on it. [00:22:22] Speaker 00: Well, if you look at the official definition, a person includes businesses, entities, incorporated or unincorporated partnerships, all sorts of entities. [00:22:36] Speaker 00: The government is listed nowhere in the standard definitions of a person, in the standard legal definitions of a person. [00:22:48] Speaker 02: So I understand, Your Honor. [00:22:50] Speaker 03: Unless, of course, you go to international personality. [00:22:54] Speaker 02: Yes, Your Honor. [00:22:54] Speaker 02: I would offer that we would have to go back and look at a particular statute and determine whether the government was intended to be incorporated within the definition of person by Congress. [00:23:04] Speaker 02: There's nothing to suggest in the... So I was starting to say there's nothing to suggest in the venue provisions or in the estoppel provisions that the Congress had any inclination or [00:23:17] Speaker 02: any suggestion that sued for infringement should be limited to a particular cause of action. [00:23:23] Speaker 00: I agree with that. [00:23:24] Speaker 00: But still, it's a clear distinction and I'm interested in your view as to how to get around it because I can't think of any reason why the government would be excluded. [00:23:37] Speaker 02: Your Honor, I don't believe there's any reason the government would be excluded from petitioning for CB&M. [00:23:42] Speaker 02: But they were excluded. [00:23:45] Speaker 02: I'm sorry, Your Honor. [00:23:46] Speaker 00: They were excluded because they're not a person. [00:23:49] Speaker 02: Your Honor, for purposes of the statute, I believe the government would be included as a person. [00:23:54] Speaker 02: The government is a full participant in the patent system. [00:23:58] Speaker 02: There are statutes that directly address the government obtaining patents. [00:24:05] Speaker 02: The government, for example, the Bayh-Dole Act, dealing with it when the government obtains patents. [00:24:10] Speaker 03: Did you understand what I said by international personality? [00:24:14] Speaker 03: Your Honor, I am not familiar with that particular case. [00:24:16] Speaker 03: For the purposes of international law, including the international patent system, the government is a person, states are persons. [00:24:24] Speaker 02: Thank you, Your Honor. [00:24:30] Speaker 02: Ultimately, the standing issue is [00:24:32] Speaker 02: a question of whether the Congress intended to exclude the government from a party that sued. [00:24:38] Speaker 01: Can I ask you, I know my colleagues may disagree, but I think that the absence, the omission of the estoppel provision is of some significance. [00:24:47] Speaker 01: I mean, a large point of the whole AIA was not to give people two bites at the apple, it was to do the opposite. [00:24:55] Speaker 01: It was to create a streamlined system so that the Patent Office would do the work that would otherwise be done by the courts and resolve these patent issues quickly and presumably with some expertise. [00:25:09] Speaker 01: That whole shtick is omitted from this CBM proceeding in terms of the government. [00:25:16] Speaker 01: So why isn't that, at least weigh heavily in our analysis, in construing the statute which does not use the word infringement, which is the word used in Title 18, I'm sorry, in the CBM provision, and go the other way, and construe Congress's intent as going the other way? [00:25:35] Speaker 02: Certainly, Your Honor, and I would point to the venue provisions, the estoppel provisions. [00:25:40] Speaker 02: In fact, the venue provisions apply only for 271 actions. [00:25:43] Speaker 02: That's not to suggest that the estoppel provisions wouldn't apply to 1337 actions. [00:25:48] Speaker 02: So there is a steady narrowing of what particular causes of action would be applicable for particular provisions in section 18. [00:25:57] Speaker 02: So venue only applied in 271 or 281 actions. [00:26:01] Speaker 02: For purposes of estoppel, it only applied in 1337 or 1338 actions. [00:26:06] Speaker 02: So, when they use the word sued for infringement, it certainly suggests when they want to use a particular cause of action, they do so. [00:26:15] Speaker 02: There is a long statutory history of 1498 being referred to. [00:26:19] Speaker 01: Well, wait, is that your friend's argument, not yours? [00:26:21] Speaker 01: If the suggestion is that when they want to use a specific term, they do so, that would suggest [00:26:27] Speaker 01: that suit for infringement doesn't appear in 1498A, and therefore it should not be included. [00:26:33] Speaker 01: I don't understand your argument. [00:26:35] Speaker 02: Certainly, Your Honor. [00:26:36] Speaker 02: The point I was making, if they wanted to limit the word suit for infringement to mean a suit under 271, which is what return mail seems to suggest, they would have said a suit under 271, not generally a suit for infringement. [00:26:51] Speaker 02: Now, there is a long line of history in which, as Your Honor pointed out during my [00:26:57] Speaker 02: during return mail's argument of where the words sued for infringement and suit for infringement are used to describe what is a 1498 cause of action. [00:27:06] Speaker 02: When it was originally enacted, they referred to it as allowing for suits of infringement to go against the United States. [00:27:12] Speaker 02: There's a long history of using the word sued for infringement, suit for infringement to describe 1498 actions. [00:27:20] Speaker 01: If Congress knows how to say it, we know they know how to say it because they said it directly. [00:27:25] Speaker 01: They used the word infringement in 1498 B and C, I guess, right, with respect to copyrights? [00:27:32] Speaker 02: Yes, Your Honor, they did use the word infringement dealing with copyrights. [00:27:37] Speaker 01: So what are we to make of that when Congress uses a particular term to describe in one particular subsection of a statutory provision and not in the other? [00:27:49] Speaker 01: Aren't we supposed to assume that that has some meaning? [00:27:53] Speaker 02: Certainly, Your Honor. [00:27:54] Speaker 02: So if my recollection serves, the reason sued for infringement or the word infringement appeared in 1498B was to deal with potential for criminal liability. [00:28:04] Speaker 02: There's concerns that the government employees [00:28:06] Speaker 02: such as intelligence gathering would somehow be liable. [00:28:10] Speaker 02: So when the DMCA was enacted, there was an issue with whether the word sued for infringement should appear. [00:28:18] Speaker 02: So I'm happy to provide some supplemental information on that. [00:28:24] Speaker 02: But the word infringement appeared later in 1498B. [00:28:29] Speaker 02: So for purposes of using the word suit for infringement, there's nothing to suggest in the statute that the suit for infringement doesn't include 1498, especially where Congress did use 271 in subsections of Section 18. [00:28:45] Speaker 02: When they wanted to say 271, they did so. [00:28:48] Speaker 03: I want you to address [00:28:50] Speaker 03: your argument that we don't have authority to review the PTAB's standing determination. [00:28:55] Speaker 03: Certainly, Your Honor. [00:28:57] Speaker 03: No, I'll tell you what I want you to do. [00:28:58] Speaker 03: Yes, Your Honor. [00:29:00] Speaker 03: You contend that the PTAB's statutory, separate statutory authority to render a final written decision in the absence of a petitioner supports the view that we have no authority to review the standing determination. [00:29:13] Speaker 03: If we accept that position, aren't we rendering meaningless every condition proceeding for PTAB action in 18A1? [00:29:22] Speaker 02: Your Honor, I understand that this Court is taking on Banca's question as to whether Acadies v. Apple is going to be reversed. [00:29:30] Speaker 02: I don't want to spend time [00:29:32] Speaker 02: on addressing a Katie's v. Apple, and I certainly don't want to somehow limit what the government is able to argue. [00:29:38] Speaker 01: What about Versada, then? [00:29:41] Speaker 01: Versada is good law. [00:29:42] Speaker 01: There's no suggestion that we're taking that on lock. [00:29:45] Speaker 01: Your brief, I forget the exact term you used, but it was something like, even if Versada is still good law after Quozo. [00:29:53] Speaker 01: Yes, Your Honor. [00:29:55] Speaker 01: Has the government challenged [00:29:56] Speaker 01: Anything about Versada during or after the Quozo opinion? [00:30:00] Speaker 01: Is there anything going on in our court that you're aware of that would question the validity of Versada post-Quozo? [00:30:07] Speaker 02: Your Honor, I'm not aware of anything currently pending before the court. [00:30:11] Speaker 01: So do you believe that we're supposed to follow Versada, that it's good law and good precedent, and we're compelled to follow it? [00:30:18] Speaker 02: For purposes of this appeal, we assumed that Versada remained to be good law [00:30:23] Speaker 02: in the post-quozo decision. [00:30:26] Speaker 02: So why is this distinguishable from Versada? [00:30:29] Speaker 02: In Versada, the question was being addressed whether the particular CBM petition was or a particular patent was a CBM patent. [00:30:37] Speaker 02: So in Versada, this court determined that whether a patent was or was not a CBM patent was a limitation on the authority of the Patent Office to invalidate a particular patent. [00:30:50] Speaker 02: Your honor, you referenced the 227A, I believe, which refers to the 327A, I apologize, which refers to whether or not the patent office can continue to invalidate a patent or cancel a patent after every petitioner is gone. [00:31:08] Speaker 02: Now, I would argue that the identity of a particular petitioner is not relevant for purposes of [00:31:14] Speaker 02: whether the Patent Office has authority to cancel a patent. [00:31:19] Speaker 02: So similar to or different from what was in Versada. [00:31:22] Speaker 02: Versada dealt with what this court interpreted was a limitation on the authority to invalidate a patent. [00:31:29] Speaker 01: And don't you think this case presents a question of whether the board is acting in excess of its statutory jurisdiction? [00:31:38] Speaker 02: Your Honor, I certainly do not want to take any positions that would be in [00:31:44] Speaker 02: in conflict with our arguments that will be offered. [00:31:57] Speaker 02: You can't have it both ways. [00:31:59] Speaker 02: No, no, no. [00:32:00] Speaker 02: I understand, Your Honor. [00:32:01] Speaker 02: We believe that if Acadies is confirmed, it offers a very strong argument why this court does not have authority to review the institution decision here. [00:32:10] Speaker 01: Now, to the extent... Now, please answer my question. [00:32:13] Speaker 01: Do not read this case as presenting an issue which directly implicates whether the board has the statutory effect operated in excess of its statutory jurisdiction. [00:32:25] Speaker 01: Is that not the issue presented in this case? [00:32:27] Speaker 02: It is not, Your Honor. [00:32:29] Speaker 02: The reason it is not is I would point to the 327 provision which permits the Board to invalidate a patent even if every single petitioner has left the case. [00:32:45] Speaker 02: So if everybody settles out, the Board still has authority to invalidate a particular patent. [00:32:50] Speaker 02: Is that under CBM 2 or is that under IPR? [00:32:53] Speaker 02: That's under CBM 2, Your Honor. [00:32:58] Speaker 01: So your reading of the statute is the reason the word has authority to review this is because even if there was nobody on either side of this, they would have authority to do it. [00:33:11] Speaker 01: I thought that had to do with when a case was appropriately before it and then the pardon settled. [00:33:16] Speaker 01: I didn't construe that provision as operating if we construe not being a proper pardon before it in the first instance. [00:33:24] Speaker 02: Your Honor, [00:33:27] Speaker 02: Again, for 327A, it shows that the identity of a particular petitioner is not relevant for the authority of the PTAB to invalidate a patent, versus in Versado, the question was whether a particular patent could be invalidated at all. [00:33:44] Speaker 00: But I think in all of those cases, there was an intervention by the director to continue the action. [00:33:52] Speaker 00: I don't think that there was any where it continued where the [00:33:57] Speaker 00: challenger just disappeared. [00:34:02] Speaker 02: Your Honor, I'm not familiar with the particular facts of those cases you're referring to. [00:34:06] Speaker 02: But to the extent that the statutory language is provided, it says that the PTAB can continue and validate a patent even if all petitioners have left. [00:34:16] Speaker 01: Yeah, but the issue here is whether or not the government in the first instance could have filed this. [00:34:23] Speaker 01: It's not a matter of whether they continue to be in a petitioner if they happen to settle out the case. [00:34:28] Speaker 01: Do you think that's the same issue? [00:34:30] Speaker 03: Keep in mind the question I asked you in the first place. [00:34:32] Speaker 03: Yes, Your Honor. [00:34:33] Speaker 03: If your argument is correct, you're throwing everything out. [00:34:38] Speaker 03: Every single pre-reference. [00:34:41] Speaker 02: No, Your Honor, I don't want to come across as throwing out everything. [00:34:46] Speaker 02: But what I'm saying is that when the identity of the petitioner is the issue that's being challenged, [00:34:52] Speaker 02: 327 suggests that the identity of the petitioner is not a limitation on the authority. [00:34:58] Speaker 02: But again, I would certainly defer to the government's brief that will be submitted in the... Can the government institute a CBN... No, I'm sorry. [00:35:09] Speaker 03: Can the PTAB institute a CBN Sue Sponte? [00:35:12] Speaker 02: I'm not aware of the PTAB being able to Sue Sponte institute a CBN petition. [00:35:15] Speaker 03: Well, then you've defeated your own argument. [00:35:20] Speaker 01: Thank you. [00:35:21] Speaker 01: Thank you very much. [00:35:27] Speaker 04: Just a few quick points, Your Honors. [00:35:29] Speaker 04: First on where the government's argument started on preemption. [00:35:36] Speaker 04: I think it's important to understand there was not only a CVM proceeding, there was a prior re-exam as well filed by the Postal Service, which ate up about four years of time and had a whole bunch of references considered and over which these claims were found patentable. [00:35:49] Speaker 04: Second, the reference that the government is talking about, for which there may be a later validity dispute, for example, based on testimony about actual system, still doesn't deal with the multiple other mail relaying systems that are out there, such as NCOA, Fast Forward, and PARS. [00:36:12] Speaker 04: There's no question those are not implicated by the claims in this patent. [00:36:15] Speaker 04: These are very specific claims to a very specific process affecting a technological improvement in the mail processing industry. [00:36:22] Speaker 04: This is not a computer software case. [00:36:24] Speaker 04: We're not arguing for improvement in the operation of a computer. [00:36:27] Speaker 04: That's not what's going on here. [00:36:28] Speaker 04: But we are arguing for improvement in mail processing. [00:36:31] Speaker 04: Finally, on the issue of the word infringement in section 18. [00:36:35] Speaker 04: The government made the argument that the fact that it says sued for infringement does not go on to say sued for infringement under 271 is significant. [00:36:44] Speaker 04: However, 1337 has the bare word infringement as well, and this court held on Bonk and Suprema that that term, when it's used by Congress, is implicating 35 USC 271, which is not a statute [00:36:58] Speaker 04: that the government can violate because it requires without authority. [00:37:04] Speaker 04: And that's all I have. [00:37:06] Speaker 04: Any other questions? [00:37:08] Speaker 04: Thank you.