[00:00:05] Speaker 06:
Cases for argument this morning are 15, 1944, 1945, and 1946.

[00:00:12] Speaker 06:
Wi-Fi 1 versus Broadcom Corporation.

[00:00:16] Speaker 06:
Mr. Collin, whenever you're ready.

[00:00:21] Speaker 09:
Thank you, Your Honor.

[00:00:24] Speaker 09:
May it please the Court.

[00:00:27] Speaker 09:
This en banc court should overrule Acadie's versus Apple for two reasons.

[00:00:34] Speaker 09:
First, that decision failed to honor the historical presumption of reviewability that has been the law under Supreme Court precedent for more than 50 years.

[00:00:48] Speaker 09:
Second, the court and the caddies failed to divine congressional intent to limit review.

[00:01:00] Speaker 09:
The cases are clear down through the decades.

[00:01:04] Speaker 09:
that it is necessary for the court in order to determine whether Congress intended to overcome the presumption that the court examine the text of the statute in question, examine the legislative history, and examine the structure, objective, and history of the statutory scheme.

[00:01:29] Speaker 09:
None of those things were done by the court in acadies

[00:01:33] Speaker 09:
And when we see that we go through that analysis, it will become clear that there is no congressional intent to limit review of the time bar in the America Invents Act.

[00:01:46] Speaker 06:
But your friends on the other side argue, looking at the entire goal and purpose of the AIA, that the principal purpose, and there's a lot of legislative history to support that,

[00:01:58] Speaker 06:
is to allow challenges, efficient challenges, to patents that should be arguably invalid.

[00:02:06] Speaker 06:
And that given that purpose, it should not be stifled or foreclosed or messed with in terms of allowing reviewability of these what they call technical questions.

[00:02:17] Speaker 06:
What's your response to that?

[00:02:19] Speaker 09:
Certainly there could be no question that one of the preeminent objectives of the Interparties Review provisions of the America Invents Act

[00:02:27] Speaker 09:
was to provide a inexpensive and quick means of determining patent validity.

[00:02:34] Speaker 09:
We must remember though that that was deemed to be beneficial not only to those accused of infringement but to patent holders who would have recourse to a rapid, efficient, and cost-effective means of quieting title to the patent.

[00:02:48] Speaker 09:
The prosecution history though is replete with rich

[00:02:55] Speaker 09:
evidence of the careful balance that Congress sought to achieve on the one hand between providing an efficient, cost-effective means of challenging bad patents, but on the other hand of protecting patent owners from unnecessary cost, delay, and harassment.

[00:03:19] Speaker 09:
And the chief tool for accomplishing that

[00:03:22] Speaker 09:
was the time bar that eventually became 315B.

[00:03:25] Speaker 03:
Well, you have here a decision by the Supreme Court, in quotes, saying that the presumption had been overcome and that Congress had, in fact, precluded judicial review.

[00:03:41] Speaker 03:
And it addressed itself to 312A3.

[00:03:48] Speaker 03:
What is the difference between 312A3

[00:03:53] Speaker 03:
and the provision that we're dealing with here.

[00:03:57] Speaker 09:
312A3, of course, deals with the requirement that the petition state the claims attacked with particularity.

[00:04:07] Speaker 09:
And the Supreme Court pointed out in Cuozzo that that is an exercise that really presents simply a legal question within the special expertise of the Patent Office.

[00:04:20] Speaker 09:
And the question obviously is, in that case,

[00:04:23] Speaker 03:
What is the relationship between... What's the difference between 312A3 and the provision we're dealing with here?

[00:04:31] Speaker 09:
The provision we're dealing with here does not present a purely legal issue.

[00:04:36] Speaker 09:
It's an intensely fact-bound issue of whether or not there is privity or party and interest relationship, in this case between Broadcom and the Texas defendants.

[00:04:47] Speaker 03:
What about the other provisions of 312?

[00:04:49] Speaker 03:
Are they also not subject to the appeal bar in your view?

[00:04:54] Speaker 03:
312, for example, the payment of the fee identifying real parties and interests, are those challengeable on appeal?

[00:05:05] Speaker 09:
I think that the Supreme Court was at some pains to caution us that its decision in Cuyozo was carefully limited just to the issue there.

[00:05:15] Speaker 03:
What's your view?

[00:05:16] Speaker 03:
What about these other things?

[00:05:17] Speaker 03:
My view is that... Suppose somebody allegedly fails to identify the real party and interests.

[00:05:23] Speaker 03:
Is that subject to the appeal bar or not?

[00:05:29] Speaker 09:
It would be subject to the appeal bar in connection with the director's institution.

[00:05:39] Speaker 09:
It would be subject to review for the shenanigans that the Supreme Court identified.

[00:05:46] Speaker 09:
So for example, if the court were to decide

[00:05:53] Speaker 09:
that failure to identify the real parties in interest rises to the level of the agency acting outside of its statutory authority, then it would be reviewable.

[00:06:08] Speaker 00:
So when would it be reviewed?

[00:06:10] Speaker 00:
Let's assume that there is privity and say that there is a violation.

[00:06:17] Speaker 00:
If institution is denied the fact

[00:06:21] Speaker 00:
it should not have been requested at all really is irrelevant.

[00:06:24] Speaker 00:
Is that right?

[00:06:25] Speaker 00:
Yes.

[00:06:25] Speaker 00:
So it arises only if institution is granted.

[00:06:29] Speaker 11:
Correct.

[00:06:29] Speaker 00:
Now at what stage then would this be raised by mandamus or would it wait for the entire trial and then after it's all over, depending on who wins or who loses, the question would be raised that it should never have been granted.

[00:06:44] Speaker 00:
How would that work in practice?

[00:06:46] Speaker 09:
In practice, under the statute,

[00:06:50] Speaker 09:
the director makes the decision about institution.

[00:06:55] Speaker 09:
Now, we know that that has been delegated by regulation, but the statute, of course, provides that it's the director that makes the decision.

[00:07:03] Speaker 09:
And under 314b, that decision is final and non-reviewable, subject to the shenanigans of Cuozzo.

[00:07:15] Speaker 09:
Then we proceed to the second stage

[00:07:18] Speaker 09:
of the Interparty's review, the trial by the PTAB.

[00:07:24] Speaker 09:
The issue of privity is still alive at that stage, is frequently addressed by the PTAB in practice.

[00:07:31] Speaker 09:
In fact, a quick research of PTAB decisions shows over 50 instances in which the PTAB has considered the issue of the time bar.

[00:07:41] Speaker 00:
So the PTAB then would consider the question of privity.

[00:07:46] Speaker 00:
Yes.

[00:07:47] Speaker 00:
Then it would receive judicial review after the PTAD's final decision?

[00:07:52] Speaker 00:
Correct.

[00:07:54] Speaker 06:
What if it's not addressed by the board in the trial?

[00:07:57] Speaker 06:
Or what if it's not addressed by the board in its final written decision?

[00:08:02] Speaker 09:
Then there certainly would be an argument that if it's not in the final written decision, it's not appealable.

[00:08:08] Speaker 09:
But I would point out that that is probably an unrealistic hypothetical because the

[00:08:17] Speaker 09:
party alleging the time bar has the ability to raise that issue during the trial stage and while it cannot force the board to make that a part of the final written determination, it would be reviewable error under the Administrative Procedure Act for the board to refuse to provide a written basis for its decision and indeed we've seen a case within the last two weeks where this court reversed the board for exactly that reason.

[00:08:45] Speaker 04:
Should we be concerned that, because it's only reviewable under your theory, but in connection with the final written decision, that if the PTO errs on the other side with respect to the time bar, in other words, improperly imposes the time bar, that there is no review?

[00:09:04] Speaker 04:
Isn't there some asymmetry there?

[00:09:07] Speaker 09:
That was addressed.

[00:09:10] Speaker 09:
Certainly, we could be concerned about that.

[00:09:12] Speaker 09:
But I think that it was in...

[00:09:15] Speaker 09:
where one of the justices pointed out that although that's a risk, and there is some loss there to the challenger who no longer has the advantage of the inter-party's procedure, who doesn't have the advantage of a favorable standard of proof by a preponderance of the evidence rather than clear and convincing evidence, they nevertheless do have recourse to going to district court.

[00:09:43] Speaker 09:
In contrast,

[00:09:44] Speaker 09:
the patent owner stands to lose their important property right.

[00:09:49] Speaker 03:
They can go in district court to do what?

[00:09:53] Speaker 03:
To challenge the PTO's action?

[00:09:56] Speaker 03:
No, to challenge the validity of the patent.

[00:10:01] Speaker 00:
If threatened.

[00:10:02] Speaker 00:
Sorry?

[00:10:02] Speaker 00:
If threatened.

[00:10:04] Speaker 09:
Well, if threatened, although we all know that under the current state of the law,

[00:10:10] Speaker 09:
That's a fairly low bar to get across these days, but that's true.

[00:10:14] Speaker 09:
They would have to satisfy the threshold requirements of the Declaratory Judgment Act.

[00:10:21] Speaker 07:
The time bar appears to be a threshold issue.

[00:10:24] Speaker 07:
It's got the characteristics of a threshold issue.

[00:10:27] Speaker 07:
Why would it be addressed at the outset, then again at trial?

[00:10:31] Speaker 07:
I mean, why get to trial if there's no basis, no legal basis by which to proceed?

[00:10:37] Speaker 09:
Well, the simple answer, Your Honor, is that's the structure that the statute created.

[00:10:41] Speaker 09:
314, in every section, directs us to the decisions of the director and provides that the director institutes and that that decision is final and non-appealable.

[00:10:56] Speaker 09:
Then we proceed to the second stage.

[00:10:59] Speaker 09:
And this court in Versailles made very clear that those are two distinct stages.

[00:11:05] Speaker 09:
They are distinct

[00:11:06] Speaker 09:
agency actions so that there is a threshold decision to initiate.

[00:11:11] Speaker 09:
Congress chose to make that non-reviewable, but then there is a trial in which discovery may be allowed, in which parties raise issues such as timeliness if they choose to raise it, which must be decided by the PTAB.

[00:11:26] Speaker 09:
So it's at that stage that the decision is made that Congress did not obviate review and that therefore is subject to appeal.

[00:11:36] Speaker 02:
Can you clarify for me then, if the board changes its mind on privity and in its final written decision says no privity so time bar applies, can the challenger, the petitioner, appeal to us and seek review of that decision?

[00:11:52] Speaker 09:
The final decision?

[00:11:54] Speaker 09:
Yes.

[00:11:55] Speaker 09:
And your honor, if I may elaborate slightly, the critical

[00:12:03] Speaker 09:
analytical danger that your honor's question poses is when you ask, can the board, which initially decides that the time bar does not apply, decide, makes that decision, and then the board changes its mind.

[00:12:22] Speaker 09:
Remember that under the statute, it's not the board that makes that initial decision.

[00:12:27] Speaker 09:
It's the director.

[00:12:29] Speaker 09:
And while we know that by regulation,

[00:12:32] Speaker 09:
that decision has been delegated by the director to the board.

[00:12:37] Speaker 09:
In our analysis of the text of the statute and the statutory scheme, it is critical that we keep in mind the fact that that initial decision is made by the director, not the board.

[00:12:52] Speaker 02:
So, just to be clear though, if after the trial the board rules

[00:12:58] Speaker 02:
The director got it wrong.

[00:12:59] Speaker 02:
The time bar here applies.

[00:13:01] Speaker 02:
You think the challenger can appeal that to us and we can reverse that and send it back down to the board and say, no, you're wrong.

[00:13:08] Speaker 02:
You should have a trial on this.

[00:13:11] Speaker 09:
I'm sorry.

[00:13:12] Speaker 09:
I got lost there.

[00:13:13] Speaker 09:
If the director... Let me try to clarify.

[00:13:16] Speaker 02:
It seems to me your position is whatever happened at the director's stage, if this issue of privity in the time bar is decided by the full board,

[00:13:27] Speaker 02:
that that's appealable to us.

[00:13:29] Speaker 02:
I'm just trying to figure out if you think that's appealable to us only by patentees or by petitioners who may lose that issue at the board.

[00:13:39] Speaker 09:
At least as the law stands now, well, to the extent that the PTAB is able to make law, it is the practice and regulation within the PTAB that the decision

[00:13:56] Speaker 09:
that the proceeding, the inter-party proceeding, is time barred is not appealable.

[00:14:05] Speaker 02:
That's not answering my question.

[00:14:07] Speaker 02:
Their position is it's not appealable for any of you.

[00:14:12] Speaker 02:
Right.

[00:14:12] Speaker 02:
I'm trying to figure out if you're trying to carve out a right only for patentees to appeal the final decision on time bar, or if you agree that given your logic that we can review anything in the board's decision about time bar,

[00:14:25] Speaker 02:
if the board rules for you and reverses the director's initial decision, whether the petitioner can appeal.

[00:14:33] Speaker 09:
Well, Your Honor raises a good point.

[00:14:36] Speaker 09:
319 provides that a party dissatisfied with the final written decision of the Patent Trial and Appeal Board may appeal.

[00:14:43] Speaker 02:
So is that a yes?

[00:14:45] Speaker 02:
I don't want to take up any more time.

[00:14:46] Speaker 02:
I'm sure my colleagues have questions, but it seems to me like that's a yes.

[00:14:49] Speaker 02:
I think so.

[00:14:50] Speaker 01:
Well, but that does not take into account 318A, which is the predicate for getting to 319, and that distinguishes between final written decisions and dismissals.

[00:15:03] Speaker 01:
And I just wonder if you have a dismissal.

[00:15:10] Speaker 01:
It sounds like that doesn't trigger the right to appeal under 319.

[00:15:15] Speaker 01:
as opposed to a final written decision.

[00:15:18] Speaker 01:
And a dismissal, presumably, would be the case that Judge Hughes put of a petitioner who gets kicked out on time on this basis.

[00:15:26] Speaker 01:
Findable.

[00:15:27] Speaker 09:
Also a good point, Your Honor.

[00:15:30] Speaker 09:
318 does say if an inter-parties review is instituted and not dismissed.

[00:15:35] Speaker 09:
And not dismissed.

[00:15:36] Speaker 09:
That's what it says.

[00:15:37] Speaker 01:
And not dismissed.

[00:15:37] Speaker 01:
So that would seem to keep the petitioner in Judge Hughes' hypothetical from being able to challenge.

[00:15:46] Speaker 09:
Again, the language of 319 is a party dissatisfied with the final written decision under Section 318A.

[00:15:55] Speaker 01:
Right, but that final written decision issues only if there's not a dismissal.

[00:16:02] Speaker 01:
If there's not a dismissal?

[00:16:03] Speaker 01:
Which means, it would seem to me, that that means that 319 isn't triggered by a dismissal.

[00:16:11] Speaker 09:
I have to concede that's a persuasive argument, Your Honor.

[00:16:15] Speaker 09:
And the consequence of that would be what I think, it's my understanding, that the PTAB has already concluded, which is that their decision that the time bar applies is not appealable.

[00:16:27] Speaker 09:
And therefore, we're back into the analysis that we discussed.

[00:16:30] Speaker 04:
But couldn't the dismissal reference in 318 be a reference back to 317, where the PTAB is left with the option

[00:16:39] Speaker 04:
to either choose to dismiss or to go forward in the absence of the ongoing presence of the petitioner.

[00:16:47] Speaker 04:
And so that that kind of dismissal is what they're contemplating in 318 versus a dismissal that might be on jurisdictional grounds.

[00:16:54] Speaker 04:
Because the jurisdictional discussion would be incorporated in some decision by the PTAP versus a non-action.

[00:17:03] Speaker 09:
That well may be, Your Honor.

[00:17:07] Speaker 09:
And if I may be permitted

[00:17:09] Speaker 03:
So where do you come out?

[00:17:11] Speaker 03:
Can the petitioner appeal if there's a dismissal on the basis of the time bar or not?

[00:17:16] Speaker 09:
I don't know, Your Honor, because that case has not arisen.

[00:17:21] Speaker 09:
And if I may be permitted, I would pose this question to this en banc court.

[00:17:27] Speaker 09:
Who is going to decide that issue?

[00:17:32] Speaker 09:
According to the government, it's individual panels of the PTAB

[00:17:40] Speaker 09:
with no board of appeals anymore, no one within the PTAB able to achieve consistent decisions on the questions exactly like these.

[00:17:51] Speaker 13:
No, no, no.

[00:17:53] Speaker 13:
According to the government, it's not individual panels.

[00:17:56] Speaker 13:
It's the director.

[00:17:58] Speaker 13:
Because on the list of shenanigans, the director, if the director doesn't like a decision and someone seeks an expanded panel, can appoint

[00:18:09] Speaker 13:
judges who take a different position, which is more in line with what the director wants.

[00:18:16] Speaker 13:
So in the long run, what you're really saying is it's the director who decides it, as opposed to this court.

[00:18:22] Speaker 09:
Well, the director, I'm now not talking about timeliness.

[00:18:29] Speaker 09:
I'm talking about the multiple issues that we've just heard inquired.

[00:18:34] Speaker 03:
Appealability is going to be decided by this court, right?

[00:18:38] Speaker 09:
That's not a matter of whether... Yes, appealability will be decided by this court.

[00:18:41] Speaker 09:
But my point, Your Honor, is does the legislative history and structure of this statute suggest clearly and convincingly that it was Congress's intention that this court should not have the ability

[00:19:01] Speaker 09:
to exercise review over the kind of issues we've just been discussing.

[00:19:05] Speaker 03:
Well, your problem is close-up, which says that some issues closely related to the institution decision, as well as the institution decision itself, are barred from appeal.

[00:19:19] Speaker 09:
It did say that, of course, Your Honor.

[00:19:21] Speaker 09:
But this is an issue that is different from the

[00:19:26] Speaker 09:
pleading with particularity issue in that case, as we've already discussed.

[00:19:29] Speaker 09:
It involves factual determinations.

[00:19:33] Speaker 09:
It exists throughout the pendency of the proceeding.

[00:19:36] Speaker 15:
Mr. Colley, how should we look at the interaction between the Quozo majority and dissenting opinions?

[00:19:43] Speaker 15:
As I read the dissenting opinion, it seemed clear that the dissent took pains to go through the three-tiered structure of IPRs, CBMs,

[00:19:55] Speaker 15:
PGRs and the timing limits involved with IPRs and PGRs and explained how, in its view, the majority decision precludes review of these time bars in 315.

[00:20:09] Speaker 15:
And then the majority didn't speak to that question.

[00:20:13] Speaker 15:
It did speak to the dissent's question about whether indefiniteness can be invoked in an IPR, but it remained silent about the dissent's lengthy commentary on the majority's

[00:20:26] Speaker 15:
an arguable ban on review of the time bar issue.

[00:20:31] Speaker 15:
So how do you think we should be reading these two opinions together?

[00:20:36] Speaker 09:
Well, the dissent in Cuozzo proposed that the purpose of 314D was to prohibit interlocutory appeals of the director's institution decision, but that that decision by the director could be appealed once the proceeding was final.

[00:20:56] Speaker 09:
That was rejected.

[00:20:58] Speaker 09:
That's not what we are urging.

[00:21:00] Speaker 09:
It is our contention that absent shenanigans, that the decision to institute by the director under 314D is final and non-appealable.

[00:21:13] Speaker 09:
But then the timeliness and time bar issue goes to the entire board, and that decision is appealable.

[00:21:26] Speaker 09:
So that's not an interlocutory review of the director's decision.

[00:21:32] Speaker 09:
It's not a review of the director's decision at all.

[00:21:34] Speaker 09:
It's a review of the PTAB decision.

[00:21:36] Speaker 03:
The point is the dissent said the majority's decision would bar appeal of the time bar.

[00:21:42] Speaker 03:
The question is what to make of that.

[00:21:45] Speaker 09:
Well, I think the best we can make of it here is I'll revert back to the majority's repeated cautioning

[00:21:53] Speaker 09:
that they were deciding only the narrow issue of the appealability of the particularity requirement and not any other issues.

[00:22:02] Speaker 09:
That suggestion that the time bar might be barred, I think, does not stand up under analysis because it's a separate proceeding than the institution decision.

[00:22:18] Speaker 06:
You are into your rebuttal.

[00:22:19] Speaker 09:
Thank you, Your Honor.

[00:22:28] Speaker 10:
Chief Judge Prost, and may it please the Court, I'd like to start right where we ended there with addressing Judge Chen's question and questions of Judge Dyke.

[00:22:41] Speaker 10:
How do we view the colloquy between Justice Alito and the majority?

[00:22:47] Speaker 10:
And I think the majority answers it and answers it quite clearly.

[00:22:51] Speaker 10:
The majority enclosos says, nevertheless, in the light

[00:22:56] Speaker 10:
of 314D's own text and the presumption favoring review, on the other hand, we emphasize that our interpretation applies where the grounds for attacking the decision to institute consist of questions closely related to the application and interpretation of statutes related to the patent office decision to institute IPR.

[00:23:22] Speaker 10:
The majority clearly addresses

[00:23:24] Speaker 10:
Justice Alito's concern.

[00:23:27] Speaker 15:
Why do you think in that passage it then quotes Section 314d and then italicizes the phrase under this section?

[00:23:37] Speaker 15:
And I guess that's really the concern for me is what to make of the Congress's usage of the phrase under this section.

[00:23:45] Speaker 10:
Certainly.

[00:23:46] Speaker 10:
So to address the under this section, the Supreme Court, that's in the parenthetical.

[00:23:54] Speaker 10:
They didn't establish whether that's the standard.

[00:23:57] Speaker 10:
They didn't say that the standard is whether it's under this section or not.

[00:24:00] Speaker 15:
But why did they choose to make that phrase pop by italicizing it?

[00:24:06] Speaker 10:
I can't answer why they chose to italicize it, however.

[00:24:09] Speaker 10:
But that isn't parenthetical.

[00:24:10] Speaker 10:
What they did is they stressed and they emphasized what the test is.

[00:24:14] Speaker 06:
But the under this section language isn't stuff that the Supreme Court made up.

[00:24:18] Speaker 06:
That's the statutory language of 314D.

[00:24:22] Speaker 06:
So whether or not you think they emphasized it enough, that is the language of the statute.

[00:24:28] Speaker 10:
It is the language of the statute.

[00:24:30] Speaker 10:
But the Supreme Court's guidance is not limited to issues under 312.

[00:24:35] Speaker 10:
It says it applies.

[00:24:37] Speaker 10:
They emphasize that it applies to other statutes that are closely related to the decision to institute.

[00:24:44] Speaker 10:
The 315 language that we're looking at is directed to whether the Patent Office

[00:24:52] Speaker 10:
may or may not institute, it is even more directly related to the institution decision than 312.

[00:24:58] Speaker 10:
312, the phrase in 312 is the Patent Office may not consider the petition if it's not pled with particularity.

[00:25:07] Speaker 10:
315 says in verbatim that the Patent Office may not institute.

[00:25:12] Speaker 10:
It is more closely related to the decision to institute than even the 312A3 provision that Quozo was dealing with.

[00:25:21] Speaker 00:
But we're not concerned with situations where institution is denied.

[00:25:27] Speaker 00:
There, it's clear you just go back to the district court or wherever you might be.

[00:25:35] Speaker 00:
But we have a situation where institution is granted.

[00:25:38] Speaker 00:
Why doesn't it meet the definition of shenanigan if, in fact, institution is requested by an entity plainly in privity?

[00:25:51] Speaker 00:
with some other entity.

[00:25:53] Speaker 00:
That is a facial violation of the statute.

[00:25:58] Speaker 10:
So the Supreme Court and the kettys left open the possibility for review by this court of shenanigans of situations which facially, on its face, could be determined.

[00:26:12] Speaker 10:
And review could be available through mandamus.

[00:26:16] Speaker 10:
There are options for which this court can review those decisions that are clearly

[00:26:21] Speaker 10:
outside of the statutory authority of the agency.

[00:26:23] Speaker 10:
But the sort of day in, day out decisions, the fact-based decisions about do these sets of facts rise to the level of privity or not, that's Congress directed that to the discretion of the PTAC.

[00:26:37] Speaker 13:
The situation I described to your esteemed colleague where in effect the director puts his or her thumb on the outcome, shenanigan or not,

[00:26:51] Speaker 13:
It's within the written procedures.

[00:26:57] Speaker 10:
So your hypothetical is the director stacks the board?

[00:27:01] Speaker 13:
Yeah, more than a hypothetical.

[00:27:02] Speaker 13:
It happens all the time.

[00:27:03] Speaker 13:
It's a request for reconsideration with a larger panel.

[00:27:08] Speaker 10:
That's within the director's authority.

[00:27:11] Speaker 10:
The makeup of the board to review the petition is within director's authority, whether that rises to the level of shenanigans or not.

[00:27:20] Speaker 13:
Aren't there fundamental rule of law questions there?

[00:27:24] Speaker 13:
The basic things like predictability and uniformity and transparency of judgments and neutrality of decision makers?

[00:27:32] Speaker 13:
And don't we review that kind of thing?

[00:27:34] Speaker 10:
Some of those decisions are reviewable, some are not.

[00:27:36] Speaker 10:
Certainly if it rises to the level of a constitutional due process violation, the petition, the patent owner would have arguments available to it and

[00:27:45] Speaker 10:
avenues available to it to raise that.

[00:27:47] Speaker 10:
But short of a constitutional issue, an ultra-virus issue, an issue that would warrant mandamus, there's no direct appealability.

[00:27:56] Speaker 07:
Counsel, does the question whether the PTAB has authority to proceed with a particular case, statutory authority, does that rise to a constitutional question?

[00:28:08] Speaker 10:
No.

[00:28:11] Speaker 10:
If your question is, does the determination by the board on a particular set of facts

[00:28:15] Speaker 10:
whether there's privity or not, does that raise to a constitutional violation?

[00:28:19] Speaker 10:
The answer is no.

[00:28:20] Speaker 01:
What do you say to Mr. Colley's argument that it may be that the institution decision itself is immunized from review, but not the decision of the board later following, perhaps, discovery or the denial of discovery that, in fact, the time bar

[00:28:43] Speaker 01:
has been satisfied.

[00:28:45] Speaker 01:
Why is that not outside of the institution-related bar against appeals?

[00:28:53] Speaker 10:
I think the Medtronic versus Robert Bush case addresses that.

[00:28:59] Speaker 10:
The board can reconsider its institution decision during the course of the trial.

[00:29:06] Speaker 10:
It is certainly not required to.

[00:29:07] Speaker 10:
It's not required to do so, but if it does,

[00:29:11] Speaker 10:
That is nothing more than reconsidering its institution decision.

[00:29:15] Speaker 01:
And Bosch holds that that is- Even though, statutorily, I mean, I understand there's been a delegation.

[00:29:20] Speaker 01:
But statutorily, it's a different actor that's making the second decision from the first.

[00:29:25] Speaker 01:
The director, in theory, is making the first decision.

[00:29:29] Speaker 01:
The board is making the second.

[00:29:30] Speaker 01:
So in a sense, it's not statutorily a reconsideration.

[00:29:33] Speaker 01:
It's a new view of the same issue, right?

[00:29:37] Speaker 10:
It would be a new view of the same issue.

[00:29:41] Speaker 10:
I think there's a distinction without a difference.

[00:29:44] Speaker 10:
The director is a member of the board by statute, and so there really is no distinction there.

[00:29:50] Speaker 04:
But we have said repeatedly at the PTO's request that there is nothing binding about that initial decision, so that anything that's said in that initial decision is not later binding on the board that is actually considering the question.

[00:30:06] Speaker 04:
And PTO has argued that position over and over.

[00:30:08] Speaker 04:
And we've accepted that proposition, haven't we?

[00:30:13] Speaker 10:
I believe you have, Your Honor.

[00:30:14] Speaker 10:
And my colleague from the board can address, from PTO, can address that more specifically.

[00:30:19] Speaker 04:
What about the fact that in QOZO itself, there wasn't just a reference to shenanigans or constitutional issues.

[00:30:26] Speaker 04:
There was a reference to the director acting outside her statutory authority, her statutory limitations.

[00:30:34] Speaker 04:
In 315B,

[00:30:36] Speaker 04:
It doesn't say no petitioner can request a petition if, in fact, the time bar applies.

[00:30:42] Speaker 04:
It says no IPR may be instituted.

[00:30:46] Speaker 04:
So that is directed to the entity or the person doing the institution, right?

[00:30:52] Speaker 10:
Correct, Your Honor.

[00:30:52] Speaker 04:
So if you institute in violation of that time bar, then therefore the director is acting outside her statutory limits, is she not?

[00:31:01] Speaker 10:
That could not be squared with QOZO.

[00:31:04] Speaker 04:
QOZO says statutory limits.

[00:31:06] Speaker 10:
Yes, but the provision in 312 says that the board cannot, says the petition cannot be considered.

[00:31:16] Speaker 10:
It's equivalent language.

[00:31:18] Speaker 10:
Because QOZO said that 312 decisions could not be reviewed, the same argument applies for 315 decisions.

[00:31:26] Speaker 15:
I guess the court also said, though, that the 312A3 challenge, in its view, was little more than a challenge to the 314A reasonable likelihood determination.

[00:31:38] Speaker 15:
And of course, that takes me back to 314D, the phrase under this section.

[00:31:45] Speaker 15:
And I feel like I need to give it some meaning.

[00:31:47] Speaker 15:
And I'm concerned that your position gives it no meaning.

[00:31:51] Speaker 15:
It's almost like the phrase could not be there.

[00:31:55] Speaker 15:
under your version of the statute would have the exact same effect.

[00:32:00] Speaker 15:
And so now I'm trying to figure out why did Congress use the phrase under this chapter in 314B and then use under subsection A in 314C and then use under this section in 314D.

[00:32:17] Speaker 15:
It appears that Congress was quite sensitive to how it characterized that kind of phrase

[00:32:24] Speaker 15:
over and over again inside of Section 314.

[00:32:28] Speaker 15:
And so the other side, at least, has what appears to be a plausible theory of the meaning of under this section.

[00:32:35] Speaker 15:
It would be the reasonable likelihood determination under 314A.

[00:32:39] Speaker 15:
So why is it that the other side's view is not plausible as an understanding of under this section?

[00:32:47] Speaker 10:
Sure.

[00:32:48] Speaker 10:
Congress acted, and Congress acted specifically

[00:32:52] Speaker 10:
in dealing with a situation in which prior statutes said that the decision to basically the patentability decision was not reviewable.

[00:33:04] Speaker 10:
And we have to give meaning to Congress's actions here.

[00:33:07] Speaker 10:
When they crafted 314, they specifically took that out.

[00:33:13] Speaker 10:
In other words, it does not limit itself to the institution decision on the merits under 314A.

[00:33:21] Speaker 10:
other provisions that still exist in other regimes and the predecessor of inter-parties re-exam.

[00:33:30] Speaker 15:
But under this section, it doesn't mean under this chapter.

[00:33:33] Speaker 15:
You have to agree with me on that, right?

[00:33:36] Speaker 10:
Well, I think what the outer bounds are, I don't think we have a clear sense of how far it goes.

[00:33:47] Speaker 10:
But the Supreme Court was clear

[00:33:49] Speaker 10:
in dealing with Justice Alito.

[00:33:51] Speaker 10:
Justice Alito said, under the majority's view, 315 decisions are just the type of decisions that would be barred.

[00:34:00] Speaker 04:
And the majority agreed.

[00:34:01] Speaker 04:
The majority made clear that they weren't deciding that question.

[00:34:04] Speaker 04:
And in fact, they said, as Judge Ten pointed out, that 312A was akin to something that was under the 314.

[00:34:13] Speaker 04:
And they talked about the

[00:34:15] Speaker 04:
closeness and the mind-run type of issue and how it is integrally related to the institution decision.

[00:34:21] Speaker 04:
I mean, they made it a very careful effort to say that they were not deciding that question.

[00:34:29] Speaker 10:
I think they made a very careful effort to not limit it to just decisions on the question of patentability and on the merits.

[00:34:39] Speaker 10:
And they did that

[00:34:41] Speaker 10:
in the colloquy with Justice Alito.

[00:34:43] Speaker 10:
And they said they emphasized their own words.

[00:34:46] Speaker 10:
We emphasize that our interpretation applies to statutes that are related to the institution decision.

[00:34:54] Speaker 10:
That is their holding.

[00:34:56] Speaker 10:
That is what they wanted to emphasize.

[00:34:57] Speaker 10:
There is language about this seems a little more than a decision on whether to institute on the merits.

[00:35:06] Speaker 10:
But that was just in the discussion with Justice Alito in the colloquy.

[00:35:10] Speaker 10:
What they emphasized as they're holding was that the question this court has to ask itself is, is 315, is the time bar related to the decision to institute?

[00:35:22] Speaker 13:
And by its very language, it is.

[00:35:24] Speaker 13:
I think you're misreading, Quozo, when you say that what they emphasize.

[00:35:31] Speaker 13:
They said, they didn't say institution decisions.

[00:35:34] Speaker 13:
They said, we emphasize that our interpretation applies

[00:35:38] Speaker 13:
were the grounds for attacking the decision to institute, which is a different thing.

[00:35:45] Speaker 10:
And the exact phrase is longer in another place they do say closely related, but perhaps they set up a two-part test.

[00:35:53] Speaker 10:
First of all, is the question that's being raised closely tied to the application of a statute related to the decision to institute?

[00:36:01] Speaker 10:
Wi-Fi One's argument is that it's closely tied, it's intimately tied,

[00:36:06] Speaker 10:
to the question of whether the decision to institute was proper or not, or whether it was time barred under 315, which says that the patent office may not institute.

[00:36:17] Speaker 04:
Right.

[00:36:18] Speaker 04:
You said that our question is what does related mean.

[00:36:22] Speaker 04:
But the Supreme Court said closely tied to the institution decision, and then specifically differentiated that from other statutory provisions that are less closely related.

[00:36:35] Speaker 04:
The question is what, if we have to interpret anything, it would be what is closely tied, right?

[00:36:41] Speaker 04:
Not just generally related.

[00:36:43] Speaker 10:
So the Supreme Court says the issue is whether the questions are closely tied to statutes related to decision to institute.

[00:36:52] Speaker 10:
So you first have to decide, is 315D a statute related to the Patent Office decision to institute?

[00:36:59] Speaker 10:
By its very language, it is.

[00:37:00] Speaker 10:
It defines the bounds in which a decision may not be instituted.

[00:37:05] Speaker 10:
It couldn't be more clear.

[00:37:06] Speaker 10:
Then the question is whether the issues being raised on appeal are closely related to that statute.

[00:37:13] Speaker 10:
And the issue on appeal here is whether 315 was complied with or not.

[00:37:18] Speaker 05:
Doesn't the language actually say less closely related?

[00:37:22] Speaker 05:
It doesn't just say is it closely related.

[00:37:24] Speaker 05:
It says we're not going to decide whether 314D applies to statutes that are less closely related.

[00:37:33] Speaker 05:
Why wouldn't that include 315?

[00:37:35] Speaker 10:
It doesn't include 315 because 315 says... But wait, you agree though it does say less closely related, right?

[00:37:42] Speaker 10:
In a different section, Your Honor.

[00:37:43] Speaker 10:
So the section that I'm relying on... It's the next sentence.

[00:37:51] Speaker 10:
That is true.

[00:37:52] Speaker 10:
But it's not that... I mean, the paragraph starts off with we emphasize.

[00:37:56] Speaker 10:
And the Supreme Court is emphasizing that the question is, is it closely tied?

[00:38:01] Speaker 10:
Is it related?

[00:38:03] Speaker 10:
And my argument is that 315 is even more closely related to the decision to institute.

[00:38:08] Speaker 10:
By its very words, it says, the circumstance in which you may not institute it.

[00:38:13] Speaker 05:
It's less closely related to 314A, and that 314A talks about determining whether there's a reasonable expectation that a claim would be invalid.

[00:38:24] Speaker 05:
And 311 talks about the petition, which is trying to show that.

[00:38:30] Speaker 05:
315, on the other hand, is directed to a different question, right?

[00:38:34] Speaker 10:
And this raises the issue that Judge Chen also raised, which is how do we deal with the other statutes which say, by their very terms, that the question relates to the issue of patentability.

[00:38:47] Speaker 10:
The statute doesn't say that it's the decision of patentability.

[00:38:53] Speaker 10:
And the Supreme Court didn't either.

[00:38:54] Speaker 10:
It didn't say the question is whether it's related to 314A.

[00:38:58] Speaker 10:
It most clearly didn't say that.

[00:39:00] Speaker 10:
It said it's whether it's related to the decision to institute.

[00:39:03] Speaker 05:
How I read it, I see them saying, hey, in response to the dissent, please know that we are not answering the question of whether this 314 bar applies to less closely related statutes.

[00:39:18] Speaker 10:
I believe that that is what they said.

[00:39:20] Speaker 10:
But what they said to dissent, Justice Alito said, the majority decision covers time bar issues.

[00:39:29] Speaker 10:
and had some other questions about shenanigans, et cetera.

[00:39:32] Speaker 10:
And the majority in that colloquy addresses all of those other issues, except the majority never disputes Justice Alito's position that time bars are such statutes closely related and that time bars are not appealable.

[00:39:48] Speaker 10:
And they went on in this section to emphasize that point.

[00:39:51] Speaker 06:
Thank you.

[00:39:51] Speaker 10:
Thank you, Your Honor.

[00:40:04] Speaker 14:
Good morning, Your Honor.

[00:40:05] Speaker 14:
May it please the court, Mark Freeman, for the government.

[00:40:07] Speaker 14:
I'd like to start with just this question under this section in that key paragraph from QoSo.

[00:40:12] Speaker 14:
Let me tell you what I think the court was referring to there.

[00:40:14] Speaker 14:
And I think we can draw a lot from the two citations that the court gave following the sentences that Judge Chen and Judge Stoll were discussing.

[00:40:22] Speaker 14:
The court says, we don't need to decide today what effect 314-D has on constitutional questions or questions that go significantly beyond.

[00:40:32] Speaker 15:
Is this the CF side?

[00:40:34] Speaker 14:
Yes, this is the CF site, Your Honor, and I think that's quite telling.

[00:40:36] Speaker 14:
The first case is Johnson v. Robeson.

[00:40:39] Speaker 14:
That was a case concerning the Veterans Administration statutes that preclude review of the award of certain veterans' benefits.

[00:40:46] Speaker 14:
And the reasoning in that case is about what the word under means in contexts like this.

[00:40:54] Speaker 14:
And what the Supreme Court said was, and this is in the Johnson case,

[00:40:57] Speaker 14:
a decision under a statute concerning a recruiting review of veterans claims.

[00:41:02] Speaker 04:
The fact that it's a CF site means that they clearly don't believe it's on point.

[00:41:08] Speaker 14:
Your honor, we are all here this morning trying to figure out what the Supreme Court meant by a couple sentences in this one section.

[00:41:14] Speaker 14:
And I would be glad to address later why I don't think we read the Supreme Court decision the way one reads a statute and tries to pick out particular sentences with

[00:41:24] Speaker 14:
with the punctuation, there is a long discussion here.

[00:41:27] Speaker 14:
And the overwhelming impression from this Supreme Court decision is that the decision whether to institute is foreclosed from judicial review.

[00:41:35] Speaker 14:
But I do want to answer this question.

[00:41:37] Speaker 14:
The reason why Justice Breyer cited that case is because it discusses what the word under means, what meaning we give to that when Congress says determinations under a section are foreclosed from review.

[00:41:52] Speaker 14:
And what the court said there was,

[00:41:54] Speaker 14:
A decision under the Veterans Benefits Statutes is foreclosed from a review, but we don't normally interpret that to include a constitutional challenge to the structure as a whole.

[00:42:06] Speaker 14:
That is not a decision under that section.

[00:42:09] Speaker 14:
And then it went on, it also cited Treanor versus Turnage.

[00:42:12] Speaker 14:
Treanor versus Turnage, if you look at it, is another case concerning the same Veterans Benefits Statute.

[00:42:17] Speaker 14:
And in that case, there were two arguments.

[00:42:19] Speaker 14:
The first was that the benefits awards were

[00:42:21] Speaker 14:
the benefit claims were wrongly denied.

[00:42:23] Speaker 14:
And the Supreme Court said, no, that's foreclosed by that veteran statute.

[00:42:29] Speaker 14:
But the second argument was that the Veterans Administration had been systematically denying veterans benefits claims against disabled veterans.

[00:42:38] Speaker 14:
And the argument was that was a violation of the Rehabilitation Act.

[00:42:41] Speaker 14:
The government argued that that too was foreclosed under the statute barring review of the secretary's determinations.

[00:42:47] Speaker 14:
And the Supreme Court said in Treanor versus Turnage,

[00:42:50] Speaker 14:
No, that is a much less closely related statute.

[00:42:54] Speaker 14:
Section 504 of the Rehabilitation Act applies equally to all federal agencies.

[00:42:59] Speaker 14:
It's not a statute entrusted to the Veterans Administration to administer.

[00:43:04] Speaker 14:
And so we don't hold that that section, the under this section language of the Veterans Statute, precludes that less closely related claim.

[00:43:13] Speaker 14:
Now, I think that the fact that Justice Breyer pointed to those two cases gives us a pretty good clue

[00:43:19] Speaker 14:
of what the court meant in this paragraph.

[00:43:22] Speaker 14:
The court was saying, Section 314D precludes, as my friend emphasized, the application and interpretation of statutes related to the decision whether to institute.

[00:43:33] Speaker 12:
Now that would mean that if, for example... Suppose that in this case, there is no doubt that the party who filed the IPR was someone that was sued 18 months

[00:43:46] Speaker 12:
earlier.

[00:43:47] Speaker 11:
Yes.

[00:43:47] Speaker 12:
They clearly are outside the one year timing requirement.

[00:43:52] Speaker 11:
Yes.

[00:43:53] Speaker 12:
And suppose the office decided to nonetheless go forward.

[00:43:58] Speaker 12:
Would that be the shenanigans that the Supreme Court was talking about?

[00:44:02] Speaker 12:
Or would you say that that related to the decision to institute is off limits?

[00:44:08] Speaker 14:
I would say that the review that is available for that claim is mandamus, if at all.

[00:44:12] Speaker 14:
And I think mandamus would be available.

[00:44:14] Speaker 14:
I want to make clear

[00:44:15] Speaker 14:
We are not here denying that if there is a clear and indisputable violation of the statutory command, that a party can seek relief from this court and that this court can grant it.

[00:44:24] Speaker 14:
That is on mandamus review.

[00:44:26] Speaker 01:
Why wouldn't it be within the scope of the notion of ultra-acting, ultra-virus, and therefore, appealable?

[00:44:32] Speaker 14:
Well, this is going to get a little Federal Court's wonky, Your Honor, but I think we're here today, yes.

[00:44:39] Speaker 14:
I think that the label under which that review would be available is Liedem versus Kine review for ultra virus non statutory review.

[00:44:47] Speaker 14:
The Supreme court said in the M corp case in the 1990s that Liedem versus Kine review is typically not available where a statute specifically precludes review of the question.

[00:44:57] Speaker 14:
So I think that that it may not ultimately matter because the the relevant standard is the same.

[00:45:04] Speaker 14:
It is for clear and indisputable violations of rights and furthermore

[00:45:08] Speaker 14:
As the panel explained in the Akadie's case correctly in our view, Liedem versus Kine review is not available for disputes over the applic of statutory interpretation questions.

[00:45:17] Speaker 14:
That would be, for example, here, whether this amounted to a claim of privity.

[00:45:21] Speaker 14:
But I'm not here disputing that Liedem versus Kine is a thing in the world or that particular types of violations may state that.

[00:45:28] Speaker 14:
Our point is that, and what I understand the en banc court today to be addressing, is whether in a routine case where the board has issued

[00:45:36] Speaker 14:
a 15-page single-space decision about the denial of discovery, an eight-page single-space decision about denying reconsideration of this question, and has reasoned that they failed to show privity, whether that routine, run-of-the-mill application of a statute related solely to the question of institution is precluded by Section 314D.

[00:45:55] Speaker 14:
Yes?

[00:45:55] Speaker 05:
I'd like to ask you about the PTO's expertise.

[00:45:59] Speaker 05:
The PTO clearly has longstanding expertise in questions under 102 and 103.

[00:46:05] Speaker 05:
But prior to the AIA passage, what experience or expertise did they have at all in questions of privity?

[00:46:13] Speaker 14:
I'm not aware that they had to decide that question before, Your Honor, but that's not the issue here.

[00:46:21] Speaker 05:
Well, it might not be a question.

[00:46:23] Speaker 05:
It certainly is something that one might consider when thinking about whether

[00:46:28] Speaker 05:
there was a determination that review should not be had of these questions, at least as a policy matter.

[00:46:36] Speaker 14:
Let me address that.

[00:46:36] Speaker 14:
So first of all, the policy of whether to have 314D in the statute is, of course, not for any of us in this courtroom to determine.

[00:46:43] Speaker 14:
The second question is, the argument that Congress has referred to a common law term, and that common law term has meaning that is not typically given to the agency's expertise to administer.

[00:46:55] Speaker 14:
The argument one sees in ordinary administrative law cases.

[00:46:57] Speaker 14:
That's an argument that goes to whether an agency is entitled to chevron deference.

[00:47:01] Speaker 14:
So that argument would be relevant, for example, if the PTO issued a regulation construing the term privity.

[00:47:07] Speaker 14:
That's not the issue that we have today.

[00:47:08] Speaker 14:
The issue we have today is everyone agrees that Congress has said, Section 315B, if they're in privity and it's more than a year later, then they cannot institute review.

[00:47:17] Speaker 14:
But if the agency makes, in a routine case, a judgment about that question, can we later overturn the correct patentability decision

[00:47:25] Speaker 14:
on the ground that the agency got that threshold question wrong.

[00:47:28] Speaker 14:
And I want to emphasize this point.

[00:47:30] Speaker 14:
The decision that we are all discussing this morning is only relevant.

[00:47:34] Speaker 14:
It only matters if the agency has correctly canceled a claim and an issued patent that should never have existed in the first place.

[00:47:42] Speaker 12:
Well, Justice Alito suggests in his dissent, and it isn't addressed by the majority,

[00:47:47] Speaker 12:
that the court could always look to prejudicial error and conclude that despite the fact that the petitioner may not have been the appropriate challenger, nonetheless, the public interest in the outcome prevails.

[00:47:59] Speaker 14:
Yes, and I think if Justice Alito's view had prevailed in the Supreme Court, we would be here making an argument along those lines.

[00:48:05] Speaker 14:
But of course, it was a 6 to 2 decision in which the majority emphasized that its holding precludes the application and interpretation of statutes related to the decision whether to institute.

[00:48:17] Speaker 12:
My question, or the important question, wouldn't a court be able to, even if we decide this is not out of bounds under quoso, wouldn't we be able to decide that in certain kinds of cases there is no prejudicial error to the patentee who had a full and fair hearing and ultimately lost on the merits of their claim?

[00:48:37] Speaker 14:
The court might be able to reach that conclusion, Your Honor, and I don't want to dispute that because we may be here, if the court goes that way, we may be here arguing that.

[00:48:45] Speaker 14:
I do want to emphasize, I would expect Wi-Fi One or whoever is in its position in that case to say, well, Section 315B is an entitlement not to have been in this proceeding, and so of course it's prejudice that our claims were invalidated.

[00:48:58] Speaker 08:
Mr. Cream, can I ask, could this question come up if on the merits the board ruled for the patent owner, the petitioner appealed to us saying that that was wrong and the patent owner as part of the defense on appeal says,

[00:49:13] Speaker 08:
This should never have been instituted.

[00:49:16] Speaker 08:
They were out of time.

[00:49:18] Speaker 08:
On our understanding of the statute, Your Honor, no, because the determination... You said earlier that this can only come up if the board has correctly found unpatentability.

[00:49:31] Speaker 08:
It seems to me that that's not quite right.

[00:49:33] Speaker 14:
Well, we could have that discussion at the right time.

[00:49:36] Speaker 14:
I would imagine there's a question about whether that's an alternative holding.

[00:49:40] Speaker 14:
Fair enough.

[00:49:42] Speaker 14:
You could have a discussion about whether that's an alternative ground that would lead to the same result and whether the judgment would be correct.

[00:49:48] Speaker 14:
There are doctrines that govern alternative arguments to be made on appeal.

[00:49:52] Speaker 14:
But let me concede the point for now.

[00:49:53] Speaker 14:
Let me just say for present purposes, in many circumstances, of course, you need Article III standing for a petitioner to appeal, for example, in many circumstances,

[00:50:01] Speaker 14:
This will not matter.

[00:50:02] Speaker 14:
And my only point with respect to this was that this explains why Congress struck the balance it did.

[00:50:08] Speaker 14:
My friend got up this morning and started by talking about the balance struck by the statute.

[00:50:13] Speaker 14:
Congress did strike a balance.

[00:50:14] Speaker 14:
It said two things.

[00:50:15] Speaker 14:
First, we do not want the board to be instituting review in circumstances where a person with whom they're in privity was sued more than a year earlier.

[00:50:24] Speaker 14:
But we also do not want correct patentability determinations to be set aside later on appeal

[00:50:31] Speaker 14:
on the ground that that threshold decision was wrong.

[00:50:34] Speaker 14:
And this case illustrates that point.

[00:50:35] Speaker 15:
Why doesn't the 315b bar, though, represent Congress's choice in allocating power between the agency and the courts for reviewing and resolving patent validity disputes?

[00:50:51] Speaker 15:
And in that sense, it's a statutory limit on the agency's authority to jump in and resolve these kinds of disputes.

[00:50:59] Speaker 15:
And if you come too late, then you as a defendant have to remain in the courts, according to Congress.

[00:51:07] Speaker 15:
But if you get in early, then you can go to the agency.

[00:51:11] Speaker 15:
And then ideally, there will be many times the courts choose to stay their actions, which has in fact been going on.

[00:51:20] Speaker 15:
So there's this either-or situation that Congress is trying to create.

[00:51:24] Speaker 15:
Why isn't that?

[00:51:26] Speaker 15:
what's going on here.

[00:51:26] Speaker 15:
And then, therefore, when the agency violates the 315b bar, it is, in fact, exercising power outside of its statutory limits.

[00:51:34] Speaker 14:
Let me address it this way.

[00:51:36] Speaker 14:
There are many ways Congress could have written the Section 315 bar.

[00:51:39] Speaker 14:
I think we can all agree on that.

[00:51:42] Speaker 14:
It could have said, as it said in Section 317, for example, 317a, that a proceeding instituted under this chapter shall be terminated with respect to a petitioner if, and it could have said,

[00:51:53] Speaker 14:
if it turns out at any point that the party was in privity with someone sued more than a year earlier.

[00:51:58] Speaker 14:
It could have, to your point specifically, Your Honor, it could have said the Court of Appeals shall not have jurisdiction to review or shall set aside any decision if a person was sued in privity.

[00:52:11] Speaker 14:
But that's not what it said.

[00:52:12] Speaker 04:
Against the backdrop of a statute- It said it shall not be instituted.

[00:52:16] Speaker 14:
Exactly, Your Honor.

[00:52:16] Speaker 14:
It said it shall not be instituted and also said the determination whether to institute shall be final and non-appealable.

[00:52:23] Speaker 14:
Congress on the one hand said, we want the agency to comply with this.

[00:52:26] Speaker 14:
And no one here is arguing, and specifically the office is not arguing, that 315B does not bind the agency.

[00:52:32] Speaker 14:
Of course it does.

[00:52:34] Speaker 14:
That's the point of our representation concerning mandamus.

[00:52:38] Speaker 14:
But Congress also said that when as here, you've got a patent claim that the three judges of the board panel held was anticipated or obvious, and a panel of this court affirmed unanimously were anticipated or obvious,

[00:52:52] Speaker 14:
We don't want that decision to revive those patents and send them back out in the world because of a technical error in the institution decision.

[00:53:01] Speaker 00:
And I would... And would your position be exactly the same if in fact what the PTAB does is to sustain patentability?

[00:53:09] Speaker 14:
Yes.

[00:53:11] Speaker 14:
The determination whether to institute is final and non-appealable.

[00:53:15] Speaker 14:
And I would add that the statute says, there was some discussion with my friends earlier about the

[00:53:21] Speaker 14:
where that determination happens to be recorded in an earlier opinion or in the final written decision with respect to patentability.

[00:53:28] Speaker 14:
Nothing in the scheme turns on that question.

[00:53:31] Speaker 14:
Section 314D says the determination whether to institute, not a particular written opinion issued at a particular stage of the proceeding.

[00:53:42] Speaker 14:
If the board acting as the delegate of the director, still wearing the director's hat,

[00:53:47] Speaker 14:
entertains a motion for reconsideration because new evidence has come to light.

[00:53:51] Speaker 14:
That ought to be to the credit of the agency for hearing people out.

[00:53:55] Speaker 14:
But if they conclude that the determination whether to institute was correct, well, that is still the determination whether to institute, and it is still foreclosed from judicial review.

[00:54:05] Speaker 15:
Do you have a view why Congress chose to use the phrase under this section in 314D as opposed to, say, under this chapter like it used in 314B?

[00:54:15] Speaker 14:
Well, yes, Your Honor, I do have a view on that.

[00:54:17] Speaker 14:
Oh, good.

[00:54:18] Speaker 14:
What is it?

[00:54:20] Speaker 14:
So first, I think the Supreme Court, in quotes, will give us a reason.

[00:54:24] Speaker 14:
In the paragraph that it discussed, the Supreme Court was explaining that under this section has historical meaning and understood it has a particular residence in the law of judicial review.

[00:54:37] Speaker 14:
So that's one reason.

[00:54:38] Speaker 15:
I guess another way of asking it is, under your interpretation, does the phrase under this section do any work at all?

[00:54:45] Speaker 15:
I mean, as I understand your view, you could remove that phrase from 314D, and it would operate exactly the way, again, that you believe the current statute operates.

[00:54:57] Speaker 14:
Well, not quite, Your Honor.

[00:54:58] Speaker 14:
And I see that I'm running out of time.

[00:55:00] Speaker 14:
If I may continue to answer the question.

[00:55:04] Speaker 14:
The statute would not have the same meaning in part for the reasons that the Supreme Court explained in that paragraph in Quozo, because under this section has a historically resonant interpretation under

[00:55:13] Speaker 14:
Robinson v. the Robinson case and the Treanor case.

[00:55:17] Speaker 14:
But in addition, every determination whether to institute under what that under this section language emphasizes is that all institution decisions under this Act are made under Section 314.

[00:55:32] Speaker 14:
Institution decisions are not made under some other section of the Interparties Review Scheme.

[00:55:36] Speaker 14:
They are made under this section.

[00:55:38] Speaker 14:
And that is what gives effect

[00:55:40] Speaker 14:
to the congressional judgment to make all of the provisions that Congress chose to, didn't have to, but chose to frame in terms of limitations on the institution decision, unreviewable.

[00:55:50] Speaker 07:
Then why didn't Congress place the time bar within 314A?

[00:55:57] Speaker 14:
Well, because the time bar, Your Honor, is, as we've explained in our brief, it is part of the... If that section deals with everything that pertains to institutions, why was the time bar placed in a separate section?

[00:56:08] Speaker 14:
Because, Your Honor, Congress was, throughout these provisions, addressing things in a logical order.

[00:56:14] Speaker 14:
Section 315 is about the relationship of, is captioned, relationship to other proceedings.

[00:56:19] Speaker 14:
And it addresses the estoppel provisions and the multiple proceedings.

[00:56:23] Speaker 07:
Why didn't Congress say in this section and all other sections?

[00:56:26] Speaker 14:
So maybe it's helpful to look at a juxtaposition with another section of the same statute.

[00:56:32] Speaker 14:
And I would draw the Court's attention to the derivation section, section 135.

[00:56:37] Speaker 14:
In section 135, there's a similar but tellingly different structure.

[00:56:41] Speaker 14:
It says 135A1 says the director may institute derivations if she finds that the evidence that the invention may have been stolen and so on.

[00:56:51] Speaker 14:
That's section one.

[00:56:52] Speaker 14:
Section two says timing.

[00:56:54] Speaker 14:
And then I forget section three, but section four says the director's determination under paragraph one shall be final and non-appealable.

[00:57:03] Speaker 14:
Here we have a section, same statute, where Congress enacted in the AIA, called out specifically an initial paragraph to be finally non-appealable, and did not include the timing provision.

[00:57:15] Speaker 13:
Well, while you're giving us your opinions, if we overrule it, Jadies, other than 315B, what else in Title 35 is in fact?

[00:57:27] Speaker 14:
Well, 315A, I would think, is certain.

[00:57:29] Speaker 14:
And let me just answer the question this way.

[00:57:33] Speaker 14:
At a minimum, any provision that speaks to the institution decision.

[00:57:37] Speaker 14:
That's what Closoff says.

[00:57:39] Speaker 14:
Secondly, I think generally, because I don't underestimate the creativity of patent lawyers, I think the any time a person is coming to this Court and saying the patentability decision is correct or we're not appealing it, but we want the judgment of the Patent Office to be set aside because the threshold institution decision was wrong.

[00:58:01] Speaker 14:
We should never have had this question in the first place.

[00:58:03] Speaker 14:
That, I think, ought to give us a very strong clue that we are talking about an issue that is foreclosed from review by section 314.

[00:58:10] Speaker 14:
And the point at which I'd like to end, if I may, is that this case, I think, illustrates the reasons why Congress would have wanted to foreclose review of these questions, because, of course, the absent party here is the public interest.

[00:58:22] Speaker 14:
The patents at issue in this particular proceeding are asserted to cover the Wi-Fi wireless standard.

[00:58:30] Speaker 14:
All the judges of the court of the

[00:58:33] Speaker 14:
The Patent Trial and Appeal Board who addressed this question found them unpatentable.

[00:58:37] Speaker 14:
The panel of this court unanimously found them unpatentable.

[00:58:40] Speaker 14:
The public obviously has an interest in that question.

[00:58:43] Speaker 14:
And what Wi-Fi wants to do here is revive those patents on the ground unrelated to the patentability.

[00:58:50] Speaker 04:
So we should base our decision on what we think about this particular patent.

[00:58:55] Speaker 04:
So if it was a truck, we shouldn't

[00:58:56] Speaker 04:
make the same decision?

[00:58:58] Speaker 14:
No, Your Honor, and please don't misunderstand me.

[00:59:00] Speaker 14:
My point is, this case illustrates the reasons why Congress struck the balance that it did.

[00:59:04] Speaker 14:
It is because the public has an interest as well in the questions of patentability.

[00:59:09] Speaker 14:
And that public does not share that interest in the institution decisions.

[00:59:12] Speaker 14:
Congress wanted the agency to make decisions under 2015.

[00:59:15] Speaker 07:
But we can't forget the interest that the public has in the presumption of judicial review.

[00:59:20] Speaker 14:
And I agree with that, Your Honor.

[00:59:22] Speaker 14:
And the Supreme Court said, quoting mock mining,

[00:59:26] Speaker 14:
Block versus Community Nutrition Institute in the Cooso case, that standard is met here.

[00:59:32] Speaker 06:
Thank you.

[00:59:46] Speaker 09:
The course of the oral argument today has illustrated that the Supreme Court's Cooso decision presents

[00:59:55] Speaker 09:
a tempting but dangerous possibility of analytical error.

[01:00:05] Speaker 09:
What I mean by that is this.

[01:00:07] Speaker 09:
The temptation is to treat Kuozo as standing for the proposition that the particularity requirement is not reviewable and the Supreme Court has said that anything less closely related might be reviewable

[01:00:25] Speaker 09:
and shenanigans would be reviewable so that it becomes the analytical task of this court to try and answer the question, does the time bar of 315 fit into one of those exceptions that the Supreme Court told us about in Cuozzo?

[01:00:43] Speaker 09:
That is contrary to the analytical approach endorsed and followed by Cuozzo, by mock mining, by block

[01:00:53] Speaker 09:
And all the way back to Abbott Labs in 1967, the Supreme Court has been consistently clear down through the decades that the proper analytical approach is, first, a presumption of reviewability.

[01:01:11] Speaker 09:
Second, that that presumption is overcome only if there are clear and convincing indications

[01:01:22] Speaker 09:
of congressional intent to deny review.

[01:01:27] Speaker 02:
So is your position, even if there's a statute that bars judicial review, that Congress has specifically enacted, that we have to still weigh that statutory pronouncement against every specific detail of the statute with the presumption and say, this statute's in, this statute's out?

[01:01:47] Speaker 09:
Basically, yes.

[01:01:48] Speaker 02:
Why isn't the prosa found and said,

[01:01:52] Speaker 02:
generally no judicial review, or generally judicial review, sorry.

[01:01:56] Speaker 02:
But here we have a statute barring that.

[01:01:59] Speaker 02:
That meets the presumption.

[01:02:02] Speaker 02:
Now we just have to determine the scope of that bar, that the presumption is no longer in play.

[01:02:09] Speaker 09:
Respectfully, Your Honor.

[01:02:10] Speaker 09:
Cuozzo did far more than that.

[01:02:12] Speaker 09:
In addition to citing the requirement of finding congressional intent, it looked for congressional intent.

[01:02:19] Speaker 09:
That's the difference.

[01:02:20] Speaker 09:
You can't

[01:02:21] Speaker 09:
simply say, here's a statute.

[01:02:24] Speaker 02:
I don't understand that.

[01:02:25] Speaker 02:
They looked to it and then they saw this bar on judicial review and said the presumption has been rebutted here.

[01:02:32] Speaker 02:
And now that it has, what we're doing is determining the scope of that judicial bar, but not applying the presumption to weigh that scope on every single issue.

[01:02:44] Speaker 02:
Isn't that the right way to look at it?

[01:02:45] Speaker 09:
I agree with that, Your Honor.

[01:02:46] Speaker 09:
Maybe I misunderstood your initial question.

[01:02:49] Speaker 09:
My point is

[01:02:51] Speaker 09:
that the court did not simply pick up the text of the statute, read it, and conclude therefore that Congress intended to bar review.

[01:03:00] Speaker 12:
Why?

[01:03:01] Speaker 12:
I mean, you helped a little bit, but I was confused by your answer in response to Judge Hughes.

[01:03:06] Speaker 12:
I felt like you were swinging at the fences when it's the bottom of the ninth and you've got a man on third and no outs.

[01:03:11] Speaker 12:
And it didn't make sense to me.

[01:03:13] Speaker 12:
So I was kind of wondering why your answer wasn't along the lines of,

[01:03:16] Speaker 12:
judicial review is the rule unless there's a clear indication by Congress the contrary and here the under this section language is enough to dispel the clear indication.

[01:03:28] Speaker 09:
I think surely no reasonable spectator at this oral argument could conclude less than that language alone means that the question is not clearly and convincingly evident from the statute's text.

[01:03:46] Speaker 03:
In your view, what's left of the appeal bar after close-up?

[01:03:51] Speaker 03:
It applies to the reasonableness determination.

[01:03:54] Speaker 03:
It applies to 312A3.

[01:03:57] Speaker 03:
Does it apply to any other provision of the statute?

[01:04:00] Speaker 09:
It probably applies to some other provisions of 312.

[01:04:04] Speaker 09:
Which one?

[01:04:06] Speaker 09:
Well, again, I have to say, with honesty, I'm not sure that I have

[01:04:13] Speaker 09:
done the analysis necessary to decide those future cases.

[01:04:17] Speaker 03:
So apart from 312, the bar doesn't apply at all?

[01:04:26] Speaker 09:
There may well be provisions of 314 to which it would still apply.

[01:04:31] Speaker 15:
What about 312A2's requirement to identify real parties and interests?

[01:04:39] Speaker 15:
Does it apply to that?

[01:04:44] Speaker 09:
The honest answer is, I don't know.

[01:04:46] Speaker 09:
I have not.

[01:04:49] Speaker 09:
That's fairly easy text to analyze.

[01:04:54] Speaker 09:
I have not investigated the legislative history relating to that particular provision and analyzed how it fits into the statutory scheme well enough to be able to say that it has been overcome or not.

[01:05:11] Speaker 15:
If you're right about

[01:05:12] Speaker 15:
315b bar being reviewable, and you're right that it was violated here, thereby undoing the board's decision.

[01:05:21] Speaker 15:
Is there anything that would prevent the director from immediately instituting a re-examination of this patent?

[01:05:29] Speaker 09:
Director ordered re-examination?

[01:05:32] Speaker 09:
Not that I know of.

[01:05:37] Speaker 09:
We all know that that happens rarely, and presumably for good reasons.

[01:05:42] Speaker 09:
We all, I'm sure, would believe that the director would have no agenda to try and evade the effect of this court's decision that the time bar is reviewable through that means.

[01:05:55] Speaker 09:
But the answer to your honor's question is, I think, yes, the director could do that.

[01:06:01] Speaker 08:
I'm sorry, why would that be an evasion if what we're trying to do is to figure out

[01:06:07] Speaker 08:
whether there are certain boundaries on one particular program, one particular PTO program and enforce them.

[01:06:16] Speaker 08:
It's certainly relevant to consider the consequences of either defining or having review of the application of those boundaries that the sky is falling kind of consequences don't follow or do follow.

[01:06:33] Speaker 08:
And that would depend on whether there are other PTO

[01:06:36] Speaker 08:
remedies available.

[01:06:37] Speaker 08:
And for 102-103, ex parte re-exam would seem to be right there.

[01:06:42] Speaker 09:
Well, I agree.

[01:06:43] Speaker 09:
I've said it is right there, Your Honor.

[01:06:45] Speaker 09:
My only point is that for whatever reasons, the director very rarely exercises her ability to have a director instituted re-exam.

[01:06:59] Speaker 09:
And I, for one, have no reason to believe if this Court decided that the time bar issue is reviewable,

[01:07:05] Speaker 09:
that the director would have any reason or motivation to decide to undermine that reviewability by saying, well, I'll just institute review on my own.

[01:07:22] Speaker 09:
Your Honor, in the last few seconds of my time, I would just say this.

[01:07:25] Speaker 09:
Again, I think that any reasonable listener to this argument would conclude

[01:07:32] Speaker 09:
that there are legitimate issues here on both sides of this question.

[01:07:37] Speaker 09:
Certainly, it has divided the court.

[01:07:39] Speaker 09:
Many members of this court have already spoken on this issue in dissents or concurrences.

[01:07:45] Speaker 09:
My question to you is this.

[01:07:49] Speaker 09:
Under those circumstances, can it fairly be said that there is clear and convincing indication of congressional

[01:08:02] Speaker 09:
intent to bar review.

[01:08:05] Speaker 09:
And I would urge the Court to conclude that review is available and to exercise this Court's historical function of review of executive action.

[01:08:18] Speaker 06:
Thank you.

[01:08:19] Speaker 06:
We thank all sides that the case is submitted, and that concludes our proceedings for this morning.

[01:08:31] Speaker ?:
Yeah.

[01:08:33] Speaker 11:
Yeah.