[00:00:00] Speaker 02:
For argument today, 2017-1278 Eastman Kodak Company versus CTP Innovations.

[00:00:07] Speaker 02:
Mr. McEwen, please proceed.

[00:00:11] Speaker 05:
Thank you, Your Honors.

[00:00:12] Speaker 05:
Good morning, and may it please the Court.

[00:00:15] Speaker 05:
An agency's outright refusal to consider evidence bearing on an issue before it is the very definition of arbitrary and capricious.

[00:00:22] Speaker 05:
Here, the PTAB considered the same question across consolidated cases at the same time

[00:00:28] Speaker 05:
and on the same prior art record.

[00:00:29] Speaker 03:
Isn't the real problem for you that in the other cases, the PTAB found that you had at least specifically preserved this argument with regard to a dependent claim, not to independent claims.

[00:00:41] Speaker 03:
It gave you the benefit of the doubt there.

[00:00:43] Speaker 03:
But here, you didn't do that at all.

[00:00:46] Speaker 03:
I mean, it does seem to me somewhat strange that we're going to have one set of patents to be good and one set of patents not to be good.

[00:00:56] Speaker 03:
that are covered by the same combinations.

[00:00:58] Speaker 03:
But these IPRs, you all submit a lot of claims that are a lot of different combinations.

[00:01:03] Speaker 03:
And it doesn't seem to be an abuse of discretion for the PTAB to ask you to show your work.

[00:01:09] Speaker 03:
It's not their job to dig through these references and figure out what combination.

[00:01:14] Speaker 03:
So is there anything in this set of IPRs where you explicitly set forth this argument rather than just citing to apogee?

[00:01:23] Speaker 05:
Sure.

[00:01:24] Speaker 05:
The answer to that is yes.

[00:01:26] Speaker 05:
Aside from the exact language that was reproduced in the claim chart of the independent claims, for example, you might look at claim three.

[00:01:37] Speaker 03:
What page are you on?

[00:01:38] Speaker 04:
Let me give you the exact site and the joint appendix for that.

[00:01:41] Speaker 04:
JA276.

[00:01:43] Speaker 04:
What page was that?

[00:01:45] Speaker 04:
JA276.

[00:01:46] Speaker 04:
Thank you.

[00:01:49] Speaker 02:
And what is this document?

[00:01:52] Speaker 05:
This is the petition, Your Honor.

[00:01:55] Speaker 02:
Is that part of your problem that you made an argument potentially in your petition that you then didn't make in your briefing even though the patentee was disputing the presence of the elements?

[00:02:10] Speaker 05:
I think the problem here is the board accepted these claim charts, the board accepted these grounds to go forward with trial and found that there was a reasonable likelihood of prevailing.

[00:02:21] Speaker 05:
and accepted this evidence, accepted evidence that talked about a- When you say it accepted the evidence, precisely what do you mean?

[00:02:27] Speaker 05:
It instituted trial.

[00:02:29] Speaker 05:
It reviewed this evidence and determined there was a reasonable likelihood of prevailing.

[00:02:33] Speaker 02:
And then at the close of trial, said- It didn't cite this evidence and say, we agree with it, right?

[00:02:37] Speaker 02:
This was just your petition.

[00:02:41] Speaker 02:
And to be clear, is this evidence or is this an argument by an attorney about a claim charge?

[00:02:47] Speaker 05:
Well, this is-

[00:02:48] Speaker 05:
This is a statement in a claim chart that cites to documentary evidence about where the printing is done.

[00:02:53] Speaker 02:
Right.

[00:02:54] Speaker 02:
OK.

[00:02:54] Speaker 02:
So this is your petition.

[00:02:56] Speaker 02:
And by you saying they accepted it, you just mean you filed it, and then they instituted.

[00:03:02] Speaker 02:
But the institution decision doesn't say, we agree that this claim chart discloses these elements.

[00:03:09] Speaker 05:
The institution does not say that we agree.

[00:03:11] Speaker 05:
But it does say that we have reviewed the evidence, and we at least agree that the evidence that you have in your petition

[00:03:18] Speaker 05:
crosses that threshold of a reasonable likelihood of prevailing.

[00:03:21] Speaker 05:
Now, we would expect if the board were to change its mind on the back end to say, well, we've seen rebuttal evidence, we've seen an attack on the teachings of Apogee, we've seen a discussion of this Another Town language, and we give more weight to that evidence.

[00:03:35] Speaker 05:
And that's not what happened.

[00:03:36] Speaker 03:
Where in your briefing did you argue the Another Town language for Apogee?

[00:03:41] Speaker 03:
My understanding from the briefing was that you didn't rely on Apogee for that ground.

[00:03:46] Speaker 05:
Well, that's the board's position, Your Honor.

[00:03:48] Speaker 05:
What we said with respect to that feature is that you could implement it in either location on the premise that the board had already reviewed this.

[00:03:57] Speaker 05:
There's only two possible places for it to occur.

[00:04:01] Speaker 05:
And that was it.

[00:04:03] Speaker 00:
Didn't you actually say that Apogee doesn't limit that you could do it at a different location?

[00:04:09] Speaker 00:
And then you perhaps said it would have been obvious to then use it at another location.

[00:04:17] Speaker 00:
You didn't actually cite to the even in another town limitation and argue that it's expressly disclosed in the Apogee Prior Art.

[00:04:25] Speaker 05:
And that's basically what the board is saying, that you did not remind us of the evidence that... Answer my question.

[00:04:32] Speaker 00:
I think in your briefing, I understand your petition quoted the another town language in the reference with respect

[00:04:40] Speaker 00:
And I think it's on page JA 270.

[00:04:42] Speaker 00:
But I think I understood, and I want to know if you can contest this, I understood that in your later briefing after institution, you didn't refer back to this express disclosure.

[00:04:57] Speaker 00:
And instead, you said to the board that the Apogee reference doesn't, in effect, teach away from making this modification.

[00:05:07] Speaker 05:
What we said is that there's no limitation as to where it should be of those two possible points.

[00:05:14] Speaker 05:
Again, with the record.

[00:05:15] Speaker 00:
Why didn't you say, well, the reference Apogee says that you could put the printer in another town.

[00:05:22] Speaker 00:
Why didn't you say that?

[00:05:23] Speaker 05:
Well, again, because we looked at the record and what the board had done to date and accepting statements in the trial record about that another town and specific mapping, again, to claim three, which talks about

[00:05:36] Speaker 05:
where the printer is, that didn't seem to be in dispute.

[00:05:40] Speaker 05:
The dispute seemed to be some of the arguments that the patent owner made about where some of the boxes were, and it depended on claim constructions that were rejected.

[00:05:51] Speaker 05:
There were only two possible places for this, and we said, well, as between the two, and we had declaration evidence on this point, you could do it at either one.

[00:06:00] Speaker 05:
In hindsight, we could have said, and by the way, you already accepted that it would be

[00:06:06] Speaker 05:
in another town and in fact the combination, the secondary reference Apogee, that's the way Apogee does it.

[00:06:12] Speaker 00:
That was all in the record.

[00:06:14] Speaker 00:
You were well aware of this teaching in Apogee at the time.

[00:06:19] Speaker 05:
That's what I think the expert was referencing when he was discussing it could be in one of two places and there's no limitation on where it would be.

[00:06:27] Speaker 05:
That's simply up to the system you're implementing, where you want it to be.

[00:06:32] Speaker 05:
The focus of this briefing was not the location of the printing.

[00:06:35] Speaker 05:
The focus of this briefing had to do with the prior art status of Apogee and real-time communications, where something is printed.

[00:06:44] Speaker 00:
The patent owner, though, argued, as I understand, that the prior art didn't teach this particular, the idea of having the printer in a different location, at a remote location, and that's what you were responding to in your brief.

[00:06:58] Speaker 05:
The patent owner provided attorney argument about that point.

[00:07:03] Speaker 05:
And we had evidence in the record and in the claim charts explicitly refuting that.

[00:07:08] Speaker 05:
And so we were resting on that.

[00:07:09] Speaker 02:
Hey, time out.

[00:07:10] Speaker 02:
The patentee argued it didn't teach the remote location.

[00:07:15] Speaker 02:
You say that's attorney argument, but I don't know what evidence you can point to to prove the absence of a teaching.

[00:07:22] Speaker 02:
Patentee says that these references don't teach this claim element.

[00:07:27] Speaker 02:
You didn't respond to that argument, even though you had a petitioner response.

[00:07:32] Speaker 02:
You didn't respond to the patentee's claim it wasn't taught.

[00:07:36] Speaker 02:
But you think, nonetheless, because you had alleged it was taught in the petition earlier, that that somehow covers you?

[00:07:48] Speaker 05:
The trial grounds are based on Apogee print drive.

[00:07:53] Speaker 05:
Print drive is mentioned repeatedly, not only

[00:07:57] Speaker 05:
claim charts themselves, but in the very introductory description of these grounds, there's no reason to talk about the print drive if we're only relying on Apogee for creating of the plate ready file.

[00:08:08] Speaker 05:
That was all over the record here.

[00:08:10] Speaker 05:
There was no attack on the print drive.

[00:08:12] Speaker 05:
There was no attack of pages six through seven of Apogee.

[00:08:16] Speaker 05:
All we got in response from the patent owner was attacking the references individually as opposed to the combination.

[00:08:22] Speaker 05:
So when we said,

[00:08:23] Speaker 05:
that the combination teaches you could do it either one, we were referencing again back to the trial grounds that were instituted.

[00:08:31] Speaker 05:
This is what we were arguing, not in the abstract.

[00:08:35] Speaker 05:
This is the ground the board accepted.

[00:08:42] Speaker 05:
And as we requested rehearing and had this language specifically in the claim charts,

[00:08:48] Speaker 05:
the board accepted it in one case and didn't accept it in the other.

[00:08:51] Speaker 02:
You said it in the claim charts, in the claim charts in the petition, but not in your substantive brief, which is what the board is looking at.

[00:09:01] Speaker 02:
Once the petition's been instituted, the board doesn't use the petition as the basis for then resolving the case.

[00:09:08] Speaker 02:
It uses the substantive briefs of the parties.

[00:09:11] Speaker 02:
And you didn't have any claim charts that had this language in it in those substantive briefs.

[00:09:15] Speaker 02:
I hate to tell you this, but this seems like

[00:09:17] Speaker 02:
large attorney error.

[00:09:19] Speaker 02:
That is the reason the board came out the way it did.

[00:09:21] Speaker 02:
And now you want me to say it was an abusive discretion for them not to forgive the attorney error.

[00:09:27] Speaker 05:
I would agree that it was attorney error, Your Honor.

[00:09:29] Speaker 05:
As I said, that specific mapping.

[00:09:32] Speaker 05:
In one case, they said, OK, we will side with you because you had the specific mapping.

[00:09:36] Speaker 02:
Because you still had it in the substantive briefs, in the dependent claims, but not the independent claims.

[00:09:42] Speaker 02:
So they said, well, at least you still raised it in the substantive briefs.

[00:09:45] Speaker 02:
You didn't raise it at all in these substantive briefs with regard to any claims.

[00:09:48] Speaker 05:
I think the board was focused more on what was in the claim charts.

[00:09:51] Speaker 05:
I don't think they rested that contrary decision on the briefs.

[00:09:56] Speaker 03:
What their view is... You mean in the separate case?

[00:09:59] Speaker 03:
They specifically called out the fact that you argued that for a dependent claim, and I think they somewhat chastised you for not arguing that to the dependent claim.

[00:10:08] Speaker 03:
So I think it's precisely because that language was in the briefs that they granted you rehearing.

[00:10:13] Speaker 05:
No?

[00:10:14] Speaker 05:
I think it was because it was in the claim chart.

[00:10:17] Speaker 05:
Maybe I need to go back.

[00:10:18] Speaker 03:
Well, can you point to that in the other decision?

[00:10:21] Speaker 03:
I know that's in the record where you say they relied on the claim chart rather than that specific language in the brief.

[00:10:28] Speaker 03:
I just read that IPR decision yesterday.

[00:10:30] Speaker 03:
It seems to me that you're not correctly remembering what they said.

[00:10:34] Speaker 05:
Well, I'm looking at pages 8 through 9 when they talk about independent claim 10.

[00:10:38] Speaker 05:
This is JA 2531 through 2532.

[00:10:57] Speaker 05:
And this is where the board has found that Apogee teaches the exact feature that it stated that it was missing from the other cases.

[00:11:05] Speaker 05:
This was not separately raised in the briefing.

[00:11:08] Speaker 05:
This was directly referencing the claim charts of the petition.

[00:11:13] Speaker 05:
The distinction that the board is making here is that they didn't like the fact that the description was in a cell that didn't discuss the remote printing and that the discussion of the print drive needed to actually be reviewed by looking at Apogee

[00:11:27] Speaker 05:
and you have a singular graphic spanning two pages.

[00:11:31] Speaker 05:
We're citing two pages of an eight-page brochure.

[00:11:34] Speaker 05:
This wasn't a requirement for the board to dig through the record.

[00:11:39] Speaker 05:
This decision that's contrary to the ones on appeal here was directly... Procedural question.

[00:11:45] Speaker 02:
Are the same board judges involved in the IPR decision at 2531 as well as yours?

[00:11:52] Speaker 05:
Yes, Your Honor.

[00:11:53] Speaker 02:
It's the same judges?

[00:11:54] Speaker 05:
The judge that authored all three rehearing decisions is the same judge.

[00:11:58] Speaker 05:
And we have the same specification, the same question of the prior art on the same claim term across related cases that were consolidated, briefed at the same time, and argued at the same time.

[00:12:10] Speaker 02:
I think the question I guess I have for you is the board chastised you in this IPR

[00:12:21] Speaker 02:
for not having more clearly raised this issue.

[00:12:24] Speaker 02:
That much is clear.

[00:12:28] Speaker 02:
But then went ahead and granted rehearing and resolved it.

[00:12:32] Speaker 02:
Can I really say it's an abuse of discretion for them not to be willing to grant rehearing in a second instance of the same problem?

[00:12:42] Speaker 02:
Can I say that's an abuse of discretion?

[00:12:45] Speaker 02:
I mean, we get cases all the time with fact findings that are completely at odds with each other.

[00:12:51] Speaker 02:
And we have to affirm them because of a very deferential standard of review.

[00:12:54] Speaker 02:
Substantial evidence or clear error.

[00:12:56] Speaker 02:
Even though the fact findings are the exact opposite on the same set of facts.

[00:13:01] Speaker 02:
Here, even if you have, which I'm not sure you do, but even if you have two identical golfs, mistakes, errors in not having identified something in your brief, the board forgave in one.

[00:13:15] Speaker 02:
Does that mean under an abusive discretion standard, I have to say they abuse their discretion when they don't forgive

[00:13:21] Speaker 02:
the second error.

[00:13:23] Speaker 05:
I wouldn't.

[00:13:24] Speaker 02:
Even if the facts are identical.

[00:13:26] Speaker 02:
Under an abusive discretion standard.

[00:13:29] Speaker 05:
It's not forgiving.

[00:13:31] Speaker 05:
It's the same citation in both cases.

[00:13:35] Speaker 05:
The same citation being in a claim chart relative to a remote printer and the board deciding in one that it can accept that evidence and review it and in the other that it doesn't have to because of a hypertechnicality.

[00:13:48] Speaker 05:
This

[00:13:48] Speaker 05:
argument was in the same claim chart in the same way.

[00:13:51] Speaker 02:
The hypertechnicality they cite in the second instance is your failure to have raised this in your briefing.

[00:13:59] Speaker 05:
Well, I would disagree with that.

[00:14:01] Speaker 05:
I think the hypertechnicality that they cite is that the cells don't match up with the out-of-town statement.

[00:14:07] Speaker 05:
That's what they're saying because that's why they accepted it in one and didn't accept it in the other.

[00:14:12] Speaker 05:
In the one that they granted, they said, okay, the out-of-town is actually

[00:14:16] Speaker 05:
specifically that what we call excerpt two is specifically mapped to this remote printing teaching.

[00:14:22] Speaker 05:
And in the other cases, it's there, but it's in a cell above the actual remote printing language.

[00:14:29] Speaker 05:
And we don't have to read that to understand that even though you only cite those two pages repeatedly and exclusively, and you talk only about the print drive.

[00:14:37] Speaker 00:
And in the claim chart, it's like maybe the fifth reference to Apogee.

[00:14:42] Speaker 00:
I mean, there's the element, the claim element,

[00:14:45] Speaker 00:
And then there's a whole bunch of other citations to things in Apogee.

[00:14:48] Speaker 00:
And then there's the out of town quote without an explanation of how it relates to any of the language and the limitation, right?

[00:14:55] Speaker 05:
Well, there are entire passages of Apogee that are reproduced.

[00:14:58] Speaker 05:
But we're talking about a two-page sales brochure.

[00:15:00] Speaker 05:
This isn't a burdensome reference to reading.

[00:15:03] Speaker 00:
I understand what you're saying.

[00:15:04] Speaker 00:
You're saying your view is that the PTAB should have read it, perhaps, even without you identifying it for them.

[00:15:11] Speaker 00:
And I understand what you're saying.

[00:15:14] Speaker 00:
I really do.

[00:15:15] Speaker 00:
But again, my problem with it is that it's an abuse of discretion standard.

[00:15:20] Speaker 00:
That's what I'm struggling with.

[00:15:23] Speaker 00:
And so how can we say that the PTAB abused its discretion here?

[00:15:28] Speaker 05:
The reason those citations are that way is because argument at the time these petitions were drafted was not allowed in the claim charts.

[00:15:35] Speaker 05:
So you have to read those claim charts together with the text that comes before them because we're prohibited from saying,

[00:15:41] Speaker 05:
modify this, this is obvious, it just has to be pin sites.

[00:15:45] Speaker 05:
So when you read the introduction to the claim charts, which references the print drive right after it talks about creating the plate ready file, there's no reason to talk about the print drive unless you're talking about the printing operation and where it goes.

[00:15:58] Speaker 05:
That was page seven of Apogee, page six is how you create the file.

[00:16:03] Speaker 05:
So it is an abuse of discretion to read that with one hand over one eye and say, well,

[00:16:10] Speaker 05:
Okay, we see where the file is being created, but the print drive stuff, we won't consider that because it's not in the specific cell of the claim chart.

[00:16:19] Speaker 00:
Well, what about the fact that reading your claim chart, it seemed that you were relying on the primary reference for teaching the limitation of having a remote printer as opposed to the secondary reference of Apogee.

[00:16:34] Speaker 05:
Well, that was also a mistake that the board made.

[00:16:36] Speaker 05:
We relied on the primary reference for the architecture.

[00:16:39] Speaker 05:
There's three points.

[00:16:39] Speaker 05:
There's the user, there's the central point, and there's the printer.

[00:16:42] Speaker 05:
And what we said is if you modify that architecture, the only thing that was missing was the plate ready file.

[00:16:47] Speaker 05:
So if you take the plate ready file and you plug it into that primary reference, it would send it to the remote printer.

[00:16:54] Speaker 05:
So that was another issue we raised in the rehearing is that the board was wrong on how the ground was formulated in the first instance.

[00:17:02] Speaker 05:
We don't even need that teaching of excerpt two.

[00:17:06] Speaker 05:
What we needed is the architecture of Dorfman which sends the file to the printer.

[00:17:11] Speaker 05:
We take the format of Apogee and we plug it into that system and that's where you see in the rehearing decision at 2534 where they say we agree with you.

[00:17:21] Speaker 05:
Dorfman and Apogee don't even need to be modified.

[00:17:24] Speaker 05:
You just plug in the file format.

[00:17:28] Speaker 05:
So on top of the fact that they were just inconsistent with the citation.

[00:17:32] Speaker 02:
Well, we have used all your time and all your rebuttal time.

[00:17:34] Speaker 02:
Let's hear from Mr. Pia, and I'll give you two minutes of rebuttal time.

[00:17:37] Speaker 05:
Thank you.

[00:17:42] Speaker 01:
Thank you.

[00:17:43] Speaker 01:
May it please the court, my name is Joseph Pia, and I represent the police CTP innovations.

[00:17:48] Speaker 01:
We submit that this court should affirm the board's orders in IPR 2014 790 and 791,

[00:17:56] Speaker 01:
Because one, the board did not abuse its discretion in determining that there was not an argument made in the petition or the reply that would justify the rehearing.

[00:18:05] Speaker 01:
And second, if for whatever reason this court decides that the board did abuse its discretion, that it had substantial evidence in finding that the petitioner had not met its burden under a preponderance of the evidence standard in order to satisfy 35 USC section 103A in showing

[00:18:26] Speaker 01:
that Apogee should be combined with Jebbins or Dorfman in a way to teach.

[00:18:31] Speaker 01:
And here's a distinction that's important.

[00:18:34] Speaker 01:
Claims 1 through 3 of the 349 patent require a combination that shows that the generation of a plate ready file occurs at the central service facility, not just remote from the printer.

[00:18:47] Speaker 01:
That actually appears in claims 10 through 14.

[00:18:51] Speaker 01:
And the distinction there is that the petitioner in no way showed a motivation to combine the references to establish that the generation of the print ready file occurred at the central services facility.

[00:19:03] Speaker 01:
In the 788 petition, for example, that limitation doesn't appear at all.

[00:19:09] Speaker 01:
And what limitation does appear instead is the limitation that the generation of the plate ready file occurred at the printing facility.

[00:19:19] Speaker 01:
And with respect to claims 10 through 14 of the 349 patent, we'll note in the briefing that the petitioner never quoted Apogee Excerpt 2 at all, nowhere.

[00:19:31] Speaker 01:
So it did quote Apogee Excerpt 2 with respect to claims 1 through 3 of the 349 patent, but not for the proposition that the file would be generated at the central services facility.

[00:19:44] Speaker 01:
And then it didn't cite, didn't quote that at all.

[00:19:48] Speaker 01:
All that it did is cite to it.

[00:19:51] Speaker 01:
The reason why the board's decisions are consistent is, again, that the petitioner was the master of its IPRs.

[00:19:58] Speaker 01:
It decided to file four IPRs, and it combined the references in the manner that it decided, and it made the arguments that it decided to make.

[00:20:07] Speaker 01:
And it took this shotgun approach, and then it hopes later that one of the arguments that it was lucky enough that the court, the board,

[00:20:15] Speaker 01:
in its discretion, reviewed claim 12 again and said, wait a minute, maybe there is something that we missed under this bootstrapping argument that if claim 12 is invalid under obviousness, that in turn claim 10 is also obvious, it didn't find that argument or corollary made anywhere in the 790 or the 791, because that argument doesn't exist.

[00:20:37] Speaker 01:
There is no comparative claim 12.

[00:20:39] Speaker 01:
And there are distinctions between the claims in both sets.

[00:20:44] Speaker 01:
Issue preclusion, which is alluded to and expressly argued by the petitioner, doesn't apply where there is not an identity of the claims.

[00:20:54] Speaker 01:
And 103A is a different type of analysis where each limitation has to be proven to exist in the combination of the references.

[00:21:03] Speaker 01:
Petitioner only used Apogee Excerpt 2 to show that the ripping process was to occur.

[00:21:10] Speaker 01:
Actually, the creation of the plate

[00:21:12] Speaker 01:
ready file.

[00:21:13] Speaker 01:
It doesn't make the argument in either Petition 790 or 791 that Apogee should be used to show remote printing.

[00:21:22] Speaker 01:
That argument just simply doesn't exist.

[00:21:25] Speaker 01:
And with respect to the 788 IPR, it does actually make that argument within the claim chart itself that it included in the briefing.

[00:21:34] Speaker 01:
And it had every opportunity to make that same argument in 790 and 791, but it didn't do it.

[00:21:40] Speaker 00:
How do you respond to the argument that this was just a two-page reference and the PTAB should have seen in the reference itself, one page away from the part that was being cited, that in fact, Apogee taught this missing claim limitation?

[00:21:58] Speaker 01:
The response is several.

[00:22:00] Speaker 01:
First, it is the petitioner's obligation in the first instance to make the argument and to point out specifically the evidence that supports the argument that it's making.

[00:22:11] Speaker 01:
Second, in a request for a rehearing, it is the petitioner's obligation to point out the exact place where it had already made that argument in order for the court to or the board to take that up on rehearing.

[00:22:25] Speaker 01:
And then third is that it's not the board's obligation to comb through every reference.

[00:22:30] Speaker 01:
If we look through these petitions, there are extensive claim charts.

[00:22:33] Speaker 01:
There are extensive references cited.

[00:22:36] Speaker 01:
huge quotations, and a variety of combinations made for a variety of different arguments.

[00:22:41] Speaker 01:
Again, this burden comes back to the petitioner, who in the very first instance can select how to make those arguments, not the board, who's busy trying to field four separate IPRs on similar patents.

[00:22:54] Speaker 03:
But I should know this, but I don't.

[00:22:57] Speaker 03:
Weren't these all kind of briefed and argued at the same time?

[00:23:00] Speaker 01:
Yes, they were.

[00:23:01] Speaker 03:
And so the board recognized it made a mistake

[00:23:05] Speaker 03:
not looking at Apogee for two of them and said it didn't for the other two because they didn't specifically argue it.

[00:23:12] Speaker 03:
If the board had not made that initial mistake and had understood that Apogee was relevant to the remote facility, wouldn't it have made sense for them to apply Apogee to the other ones too?

[00:23:25] Speaker 03:
It's the same term, basically, and it teaches the same thing.

[00:23:29] Speaker 03:
I think you just made an argument about why it doesn't, but let's set that aside.

[00:23:34] Speaker 03:
It seems like

[00:23:35] Speaker 03:
you're getting to take advantage of a board mistake on top of attorney mistake on the other side, and then not looking at a reference, so it was actually made in at least two of the concurrently argued IPRs.

[00:23:49] Speaker 03:
Why isn't it arbitrary for the board not to look at this in the whole context?

[00:23:54] Speaker 01:
Because the board properly applied 37 CFR Section 42.71D

[00:24:00] Speaker 01:
where it identified that the party making the rehearing request.

[00:24:04] Speaker 03:
Sure, I get that.

[00:24:04] Speaker 03:
But they overlooked something, too.

[00:24:07] Speaker 03:
And so if at the oral argument, I know this didn't happen, but was there an argument on this?

[00:24:12] Speaker 01:
Yes, there was.

[00:24:12] Speaker 01:
And it was a combined argument.

[00:24:13] Speaker 03:
In the oral argument, they had asked the question about Apogee, about where the remote facility was taught.

[00:24:21] Speaker 03:
And Apogee was supplied as that reference.

[00:24:26] Speaker 03:
Even if it hadn't been argued in the briefing, it would have been error for them not to apply it to all of them if they were aware of it.

[00:24:35] Speaker 01:
Two responses to that.

[00:24:36] Speaker 01:
One is that making the argument at oral argument for the very first time is too late.

[00:24:42] Speaker 01:
The rule requires that it be made in the petition or the reply.

[00:24:45] Speaker 03:
Sure, but it wasn't made for the first time at oral argument in one set of the IPRs.

[00:24:49] Speaker 03:
It was in the briefs.

[00:24:51] Speaker 03:
And if they had known that this was in the briefs,

[00:24:55] Speaker 03:
wouldn't they have been compelled to apply that same reference to the other IPRs even if it wasn't specifically made in the brief.

[00:25:03] Speaker 03:
It certainly seems like at the very least they would have had to give you some more time to respond if they would have looked at this.

[00:25:09] Speaker 01:
Not under an obviousness analysis because the claims are different.

[00:25:15] Speaker 01:
There's no argument that was made by... Let's just assume that they're not.

[00:25:18] Speaker 03:
I don't find that argument very convincing.

[00:25:20] Speaker 03:
I think Apogee solves the problem for the other ones too.

[00:25:23] Speaker 03:
Why is it an error for the board not to have looked at this because they were aware of it?

[00:25:30] Speaker 03:
Just the fact that it happened on rehearing, is that the difference here?

[00:25:32] Speaker 03:
Because the problem seems to me in that argument is that the board acknowledged that maybe it didn't say it made an error, but it certainly overlooked something for one set of the IPRs.

[00:25:44] Speaker 01:
If this court finds that there is an abuse and discretion in not considering that argument, and the court finds that the board

[00:25:53] Speaker 01:
did not have substantial evidence in looking at the declarations of the petitioner and the respondent, which it did look at those declarations of the experts.

[00:26:05] Speaker 03:
And it came to the conclusion that the expert actually for the petitioner had argued that... What I'm trying to get at is, practically speaking, if I'm the board judge and I have all these IPRs being argued to me, and I'm aware that for one set,

[00:26:21] Speaker 03:
Apogee provides the remote printing thing.

[00:26:24] Speaker 03:
And even though you may not have specific, the other side may not have specifically argued it in its briefing, it's in the claim charts and the like.

[00:26:32] Speaker 03:
Assume all this is true.

[00:26:34] Speaker 03:
Why wouldn't it be an abuse of discretion not to apply Apogee to all of the claims when I was aware it should apply to them?

[00:26:44] Speaker 01:
The reason why is that in claims one through three of the 349 patent, it requires

[00:26:51] Speaker 01:
that the generation of the plate ready file occurred at a central service facility.

[00:26:55] Speaker 03:
You're arguing that there are different claims now.

[00:26:59] Speaker 03:
I'll ask you one more time to answer my hypothetical and if you can't, that's fine.

[00:27:03] Speaker 03:
Assume Apogee covers all of these, that there's no difference in the claims for purposes of this, that it does supply the remote part or whatever the central thing you're talking about is.

[00:27:16] Speaker 03:
And I'm a board judge and at oral argument,

[00:27:20] Speaker 03:
It's argued to me, Apogee discloses this.

[00:27:22] Speaker 03:
It's in the briefs in this one set.

[00:27:24] Speaker 03:
It may not be specifically in the briefs in the other set, but here it is in the claim charge and in like, why wouldn't, if that argument is made to me, why wouldn't it be an abuse of discretion for me to say, well, since you specifically mentioned it here, I'll take it.

[00:27:40] Speaker 03:
But even though it's all part of the same kind of case, basically consolidated set, I'm not going to apply it here because you didn't write it out word for word.

[00:27:49] Speaker 03:
Wouldn't that be an abuse of discretion?

[00:27:51] Speaker 01:
We would say no, that's not.

[00:27:53] Speaker 01:
And why?

[00:27:54] Speaker 01:
Because the petitioner has the obligation to make the argument in each instance.

[00:27:59] Speaker 02:
Because even though they're consolidated for oral argument, they're totally separate IPRs with separate decisions, even though it's the same judges.

[00:28:07] Speaker 02:
And it's the petitioner's obligation to make these arguments.

[00:28:10] Speaker 02:
The petition is the petition governs the scope of the whole proceeding, but it doesn't get incorporated into their brief.

[00:28:17] Speaker 02:
They still have an obligation in the brief, right?

[00:28:20] Speaker 02:
And in this case, the patentee expressly disputed the element in both instances.

[00:28:24] Speaker 02:
In one, they found petitioners reply brief responded to it.

[00:28:27] Speaker 02:
In the other, they found it didn't.

[00:28:28] Speaker 01:
That's right.

[00:28:29] Speaker 01:
It's the petitioner trying to shift the burden.

[00:28:31] Speaker 02:
It's not equity necessarily, but it is just in light of the procedural requirements that the board is allowed to decide.

[00:28:40] Speaker 01:
Yes, that's our position.

[00:28:43] Speaker 02:
I think we kind of have your position unless there's anything else you need to cover.

[00:28:47] Speaker 02:
Let's give him his two minutes of rebuttal.

[00:28:52] Speaker 05:
Thank you, Your Honor.

[00:28:53] Speaker 05:
This was the same briefing across identical specifications at the same time before the same judge.

[00:29:00] Speaker 05:
The distinction that the Board is making here is hypertechnicality based solely on claim charts, a matching of cells to a specific quote

[00:29:08] Speaker 05:
that it found was done to its liking in one, and with respect to claim three at JA276, which is the more or less same exact showing, declined to review that same evidence.

[00:29:19] Speaker 03:
I know you think this is a hyper-technical rule, but you can call it hyper-technical, but isn't the board entitled to adopt these kind of rules?

[00:29:28] Speaker 05:
Not when you're looking at it in the context of the petition.

[00:29:31] Speaker 05:
These arguments were made outside of the claim.

[00:29:34] Speaker 03:
But the board had a rule that said,

[00:29:36] Speaker 03:
All of your arguments have to be specifically made in your briefing.

[00:29:41] Speaker 03:
And if you haven't made them specifically in your briefing, you waive them.

[00:29:45] Speaker 03:
They're allowed to do that, aren't they?

[00:29:47] Speaker 05:
That's correct, Your Honor.

[00:29:48] Speaker 03:
And isn't that really what they've done here?

[00:29:49] Speaker 03:
You haven't made that argument in your briefing specifically.

[00:29:53] Speaker 03:
I get it.

[00:29:54] Speaker 03:
I mean, it seems to me odd that one set of patents is valid and one set's not just because of attorney error, but if that's the way they're going to do this.

[00:30:03] Speaker 03:
I think you'll concede they're very, very busy and they get a lot of these.

[00:30:07] Speaker 03:
And it's your job to show your work.

[00:30:10] Speaker 03:
It's not their job to figure it out.

[00:30:12] Speaker 03:
That's what you're doing here.

[00:30:13] Speaker 03:
What's an abusive discussion about that?

[00:30:15] Speaker 05:
Well, but it's not our job to question work that was already accepted by the board.

[00:30:19] Speaker 05:
The trial is about the instituted grounds.

[00:30:22] Speaker 05:
When you start straying away from those grounds, you get in trouble.

[00:30:25] Speaker 00:
The thing is that sometimes we get cases where a particular argument is made in the petition.

[00:30:32] Speaker 00:
But then later on, a different tact is taken by the petitioner in the briefing that occurs after institution.

[00:30:41] Speaker 00:
So it sounds as if you're suggesting that the board is supposed to always go back to the petition and just make sure there isn't something that you forgot to address.

[00:30:49] Speaker 00:
And I don't think that can be the right rule.

[00:30:51] Speaker 05:
No, Your Honor.

[00:30:51] Speaker 05:
What I'm saying is that the trial grounds are the starting point.

[00:30:54] Speaker 05:
And to your point about petitioners coming in and trying to change the channel, you have to go back and again and look at what the starting point was.

[00:31:01] Speaker 05:
say reference A and B is obvious and then change it to A and C in the petition or reply because the trial is about A and B. And so when that evidence is accepted on the front end, the board is saying, well, you should have reminded us.

[00:31:17] Speaker 05:
And that is the hypertechnicality and that is the abuse of discretion.

[00:31:23] Speaker 05:
These were the same specification, the same prior art question.

[00:31:27] Speaker 05:
It did come up in the briefing.

[00:31:29] Speaker 05:
It did come up at oral argument.

[00:31:30] Speaker 05:
And there was additional briefing on this that the patent owner had.

[00:31:34] Speaker 05:
So there's a full and fair opportunity to address all of these issues.

[00:31:37] Speaker 02:
OK.

[00:31:37] Speaker 02:
I thank both counsel.

[00:31:38] Speaker 02:
The case is taken under submission.

[00:31:40] Speaker 05:
Thank you, Your Honor.

[00:31:42] Speaker ?:
All rise.