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This morning, one of which was submitted on the briefs.

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The other three are scheduled for argument this morning.

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The first case is case number 172456, Google LLC versus Conversant Wireless Licensing.

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The court issued an order at the end of last week because

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we spotted a possible standing issue.

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We don't know if there's a standing issue or not, but we wanted to make sure we addressed it.

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If you agree that there's no standing problem, then we can move on very quickly.

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To the extent we need to debate the standing issue, we've allotted five minutes per side.

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But if the standing issue disappears, then you go back to your normal time frame.

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So don't think you've just won four more minutes just in case.

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So let me begin with

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with Google in terms of the issue of standing unless you've reached an agreement on it.

[00:01:01] Speaker 00:
Your Honor, we have not.

[00:01:03] Speaker 00:
We haven't had a chance to discuss it.

[00:01:04] Speaker 02:
OK.

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Do you think that both parties to this appeal have standing to appeal from this IPR?

[00:01:11] Speaker 03:
No, Your Honor.

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I think it's worth the court hearing about it.

[00:01:14] Speaker 02:
OK.

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All right.

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And I think the parties are separately situated, perhaps, or it appears they may be.

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That's right, Your Honor.

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OK.

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You can proceed.

[00:01:33] Speaker 00:
Good morning, Your Honours.

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May it please the Court.

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Before I address the merits, I would like to address the standing issue, as we just discussed.

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While only one appellant needs to have standing for this Court to retain jurisdiction, we believe both Petitioner LG and Petitioner Google have standing here.

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Let me explain why.

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With respect to Petitioner LG, it is undisputed that Petitioner LG was sued for infringement of the 667 patent.

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Also, if you look at

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the infringement contentions, which are not part of the appendix here, but they were certainly part of the administrative record.

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It's exhibit 1,013.

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And you can see that, at least exhibit list at A249.

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You'll see those were submitted to the board below.

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So they're part of the administrative record.

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They show that in its contentions, CONVERSENT pointed to the LG Maps-enabled devices and Google functionality for infringement.

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So the products that were the allegedly infringing devices in the original lawsuit, are those still products that LG is marketing?

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I believe so, Your Honor.

[00:02:42] Speaker 02:
OK, you don't know?

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As far as from what I understand, they are being marketed.

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And if you actually look at the contentions here, going back to exhibit 1013, they were very broad in terms of the contentions that Converse and asserted against LG in the litigation.

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Did you say page 1013?

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No, Your Honor.

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It's exhibit 1013, and it's appendix A249.

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It's an exhibit list that shows you that exhibit 1013 were the contentions that were submitted to the board.

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So what's the status of that litigation?

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So as conversant points out in its red brief, that litigation, at least with respect to the 667 patent,

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was dismissed without prejudice.

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And in fact, that was over LG's objection.

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LG wanted the case to be dismissed with prejudice.

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And we think that squarely puts this case, this case is not like consumer watchdog or phygenics, where the appellant was not engaged in any activity that could give rise to an infringement suit.

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So we believe here, looking at conversant's contentions,

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And given that they actually fought LG to, when they were trying to take the patent out in the district court, LG wanted a covenant not to sue, and Conversant did not give a covenant not to sue.

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So we think, if you look at these facts collectively, we think they show that there is, there's activity here that could give rise to an infringement suit, and the fact that they did not give us a covenant not to sue further shows that they will sue again.

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What about these infringement contentions?

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They're not in the record before us.

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So how should we get a copy of those?

[00:04:22] Speaker 00:
Your Honor, we're happy to provide those to you.

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But like I said, they are part of the illustrative record, which I understand the court does have access to before the board.

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They're certainly available publicly.

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There's not any appendix today?

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That's right, Your Honor.

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OK.

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What Federal Circuit opinion do you think is closest to the facts of your case that would establish that LG has standing here for this appeal?

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Your Honor, I believe Altair is a case that supports us here.

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And I think so does DuPont.

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I think if you look at both of those cases, they're unlike consumer Watchdog and Phigenics, where there was, the appellant was some third party.

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They didn't have any activity that could possibly rise to the level of an infringement suit.

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But we think this case is like Altair and DuPont.

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And I think there's more here.

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Altair was a very fact-specific decision, though.

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I mean, it's kind of hard to broadly

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extrapolate from that?

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Sure, Your Honor.

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But I think there are two or three key facts here that are pretty similar to Altair.

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One is this threat of infringement.

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Like I said, we asked them for a covenant not to sue.

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They refused.

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And also, I think what's more here is you have to look at the bar under 315B and estoppel under 315E.

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Again, 315E certainly played a role in both the Dupont case and in the Altair case.

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And we think it should play a role here as well.

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What about Google?

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So with respect to Google, Your Honor, I believe our arguments are similar.

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So if you look at Google again, while the court does not need to find that Google has standing to retain jurisdiction on this appeal, we think Google does have standing.

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And there are a couple of reasons.

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One is, if you look at, again, the infringement allegations, going back to exhibit 1013, which unfortunately is not part of the appendix, but it is part of the administrative record, if you look at the contentions

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you'll see they point to consistently Google functionality.

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The Google Maps apps was pointed to in the contentions.

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And when you couple that with the fact that there would be a bar under 315E, this case is just like Altair, just like DuPont.

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And we believe Google independently has taken it.

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But you've repeatedly said that 315E standing alone is not enough.

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Sure, Your Honor.

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And I think here you don't need to go that far and we're not asking the court to go this far.

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I think we're saying collectively if you look at the facts here, 315E and the threat of an infringement lawsuit.

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But Google wasn't sued, right?

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Google was not sued, but... Did they seek to intervene in the action?

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So Google here actually stepped in and was defending LG in the litigation with respect to the patent and the infringement allegations.

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Was there an indemnity agreement?

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Your Honor, I'm not sure I can go that far in terms of the agreement, but I can certainly tell the court that there was, Google agreed to defend LG with respect

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to the patent and the allegations with respect to Google functionality.

[00:07:20] Speaker 04:
When I go look at the infringement contentions in the administrative record and you are telling me that there's a reference to Google functionality, do the contentions actually allege that Google Maps or whatever it is you're referring to infringes the patent claims of the 667?

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What does it say precisely?

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I am happy to have them here.

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I know you don't have them, but I think if you look at it, it's a claim chart that maps the claims to the Google Maps app and goes through limitation by limitation and attempts to allege infringement by Google Maps.

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So it takes just Google Maps and then explains how Google Maps satisfies each and every limitation of one of the claims of the 667?

[00:08:08] Speaker 00:
Your honor, it does.

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It certainly points to Google Maps, and it also points to the LG, what it calls the... The answer is yes.

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Yes, your honor.

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Google Maps, just Google Maps alone, nothing else.

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It satisfies every single limitation.

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So, your honor, just I want to make sure I give you a complete answer.

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So it certainly points to the Google Map.

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The only other functionality as far as we can see in the claim charts that they pointed toward the action devices that LG makes, right?

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So the LG devices, it said, when they are configured to run Google Maps,

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infringe the patent as we understand their contentions.

[00:08:40] Speaker 01:
Just to clarify, it actually uses the language, Google Maps.

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We're not going to look at it and have to figure out what they're referring to.

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No, Your Honor.

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Are there particular pages that might be helpful for you to refer to?

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Or is it just general, the entire document?

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Sure, Your Honor.

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I think you can refer to the entire document.

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But I think you don't need to go any further than page one.

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And I'll just read a couple of the passages for the court's convenience.

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So they say, for example, LG maps enable devices

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infringed this claim and then they go on and explain using Google Maps as a non-limiting example, LG Maps enabled devices having hardware and the Google Maps application performed the claim method.

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So would it be a joint infringement type of theory with Google, or would it be a induced infringement, or a 271C infringement?

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What do you think?

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Your Honor, I think if you look at their infringement allegations, I think they relied on all of them.

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But as I indicated, the patent was dismissed without prejudice, and they left open.

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In fact, when they took it out of the case,

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They said, and I'll quote, they said C, core wireless was, it was known at that time, CW, will only reduce patents if it cannot be done without losing rights.

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And I'm reading that from DI 326.

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Now that's part of the district court record, which again, is certainly available on PACER.

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That's exhibit A at two.

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So we think there's, collectively, if you look at it, and Judge Amali, going back to your question on the estoppel issue, while this court has been reluctant to rely solely on estoppel,

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And while we're not relying solely on estoppel, we believe the Supreme Court has held that the risk of a collateral estoppel alone provides standing.

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And that's in the electrical fittings case at 307 US 241.

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And the Supreme Court elaborated on that principle in deposit guarantee.

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And that's 445 US 337.

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So again, I think if you look at it collectively, that this estoppel here is even broader than collateral estoppel, because you also have 315B.

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As this court recently held in the click to call case,

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A dismissal without prejudice can bar a party or does bar a party, and that's what happened here.

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We have a dismissal without prejudice of the district court litigation.

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So we have every reason to believe that Converse and Will sue Google and or LG with respect to this path.

[00:10:58] Speaker 02:
Okay.

[00:10:58] Speaker 02:
We went way over the time.

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We're going to go back and just restore the whole merits argument at 15 minutes.

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when we get back to it, but I want to hear from the other side first.

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And we clearly are not going to be able to decide this issue until we see the infringement contentions and the relevant portions of the district court docket.

[00:11:15] Speaker 02:
So if you could at least submit to us the citations that you gave us so that we can make sure we've got all the things that you think are relevant from those two dockets.

[00:11:27] Speaker 00:
Sure, Your Honor.

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We're happy to do that.

[00:11:35] Speaker 02:
So tell us why it was clear that they were sued and they were sued with LG with respect to particular products, right?

[00:11:46] Speaker 03:
Yes, Your Honor, and may it please the court.

[00:11:47] Speaker 03:
The part that you didn't hear from the appellants is that the claims they were sued on have already been canceled by the Patent Office.

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So those claims have gone from the patent.

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And the only claims that are left are claims that were not alleged to be infringed.

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And so they haven't been able to show the concrete and particularized injury, in fact, that would be required for standing.

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Could you identify the claims that were canceled versus the claims that are not canceled?

[00:12:13] Speaker 03:
Yes, Your Honor.

[00:12:14] Speaker 03:
And the other IPRs regarding this patent claims 12 through 15 were found unpatentable.

[00:12:20] Speaker 03:
So it's only claims 1 through 11 that are left.

[00:12:22] Speaker 01:
And claims 12 through 15 were the only claims that were asserted in the district court litigation?

[00:12:27] Speaker 03:
I think it was only 12 and 13, Your Honor.

[00:12:29] Speaker 03:
So it didn't even go to the full extent.

[00:12:31] Speaker 03:
Yes.

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Do you happen to know how claims 12 through 15 are different in substance from claims 1 through 12?

[00:12:40] Speaker 03:
Yes, Your Honor.

[00:12:41] Speaker 03:
We can look at those claims.

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They're in the court's appendix.

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And this is pages 30 and 31.

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So claim one, for example, requires certain network functions, including

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sending the request through the network and retrieving data from a data store, and then again sending the data through the network.

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Claim 12, which is a device claim, is directed to operating the mobile station, i.e.

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a handset, and does not, for example, include the retrieving data step, nor is that present in Claim 13.

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So the claims have different scope.

[00:13:31] Speaker 02:
Were 12 and 13 canceled in a re-exam?

[00:13:34] Speaker 03:
No, in companion IPRs, Your Honor.

[00:13:37] Speaker 03:
So this is the third IPR involving the same patent.

[00:13:42] Speaker 02:
And that was from, and that IPR petition was LG or Google, or who?

[00:13:50] Speaker 03:
In one case was LG and Google, and in the other case was Apple.

[00:13:56] Speaker 02:
Okay, so were claims 1 through 12 challenged in those IPRs?

[00:14:01] Speaker 03:
No, it was limited to claims 12 through 15.

[00:14:06] Speaker 01:
What happened first?

[00:14:07] Speaker 01:
Were the claims cancelled in the patents and then the district court litigation was dismissed or what was the timing of that?

[00:14:19] Speaker 03:
I honestly don't remember the exact timing, Your Honor, but I think

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The dismissal may have come first.

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The papers withdrawing the claims from the litigation, I think, were filed in November of 2015.

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And that was prior to the decisions and the other IPRs.

[00:14:53] Speaker 02:
So have you threatened an action against LG or Google on the claims 1 through 12?

[00:15:00] Speaker 03:
No, Your Honor.

[00:15:02] Speaker 03:
It's my understanding that Google has never been noticed of alleged infringement, has never been sued.

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And since this patent was withdrawn from the LG litigation, there's been no further discussion about it between the parties.

[00:15:20] Speaker 04:
Why is it that you didn't bring up the standing argument until now?

[00:15:25] Speaker 03:
It didn't occur to me, Your Honor.

[00:15:27] Speaker 03:
And until the court issued its order, I hadn't really considered it.

[00:15:34] Speaker 02:
Okay.

[00:15:35] Speaker 02:
Anything else you want to add?

[00:15:36] Speaker 02:
No, Your Honor.

[00:15:37] Speaker 02:
Okay.

[00:15:38] Speaker 02:
We'll take that matter under advisement when at the same time we consider the merits.

[00:15:43] Speaker 02:
But as I said, we need any information that you think from the record that might not have already been provided to us that's relevant.

[00:15:50] Speaker 03:
Certainly.

[00:15:51] Speaker 02:
Okay.

[00:15:52] Speaker 02:
All right.

[00:15:53] Speaker 02:
Let's turn to the merits.

[00:15:58] Speaker 02:
And we'll give you three minutes for rebuttal, is that right?

[00:16:00] Speaker 00:
Yes, Your Honor.

[00:16:01] Speaker 00:
Thank you.

[00:16:02] Speaker 00:
Okay.

[00:16:05] Speaker 00:
And I guess, Your Honor, if I, before I turn to the merits argument, if I could just briefly respond on the claims issue with Your Honor's permission.

[00:16:14] Speaker 02:
Very briefly.

[00:16:15] Speaker 00:
So we believe from a claim perspective... Let's start the clock.

[00:16:20] Speaker 02:
He's going to have to eat up some of his clock to do that.

[00:16:22] Speaker 00:
That's fine, Your Honor.

[00:16:24] Speaker 00:
So I think just a couple of simple points.

[00:16:25] Speaker 00:
I think if you look at the claims, there are a lot of similarities here.

[00:16:30] Speaker 00:
In fact, if you look at the contentions of the document I pointed to and that we will submit, they never limited their contentions.

[00:16:36] Speaker 00:
They said this is what they're asserting now, but they reserve all rights.

[00:16:40] Speaker 00:
And given the patent was dismissed without prejudice, and you'll look at their contentions, they're pretty broad.

[00:16:46] Speaker 00:
And given the similarities in the claims, we believe we certainly, this is, again, not like consumer watchdog or phigenics, where the appellant was not engaged in activity that could give rise to an infringement suit.

[00:16:58] Speaker 00:
And when you couple that with the 315B bar and the 315E bar, we think collectively all of that provides standing here.

[00:17:05] Speaker 00:
So with that, if I could turn to the merits, we believe this court should set aside the board's decision for two independent reasons.

[00:17:13] Speaker 00:
First, the board violated the APA.

[00:17:15] Speaker 00:
in failing to fully and particularly set forth its basis for finding that the priority at issue, the stack reference, does not satisfy the without pre-registering claim limitation.

[00:17:26] Speaker 02:
Second- You're not arguing anymore that they violated the APA because they ignored your first argument.

[00:17:34] Speaker 02:
I mean, the board thinks it didn't ignore your first argument.

[00:17:37] Speaker 02:
It may not have explained itself as well as it should have, but it didn't.

[00:17:40] Speaker 02:
ignore it, at least it says it didn't ignore your argument.

[00:17:43] Speaker 00:
Right, Your Honor, that's what the Board did in its rehearing decision.

[00:17:46] Speaker 00:
It tried to recast its rehearing decision as saying what we pointed to as the optional feature.

[00:17:51] Speaker 00:
We relied on it for the main argument, which is the no requirement argument, as we've been referring to.

[00:17:57] Speaker 00:
In the briefing, I think the issue we have here with the Board's decision from an APA perspective boils down to this.

[00:18:03] Speaker 00:
If you look at the institution decision, the Board, we had made two arguments.

[00:18:08] Speaker 00:
One was the no requirement argument, where we

[00:18:10] Speaker 00:
based on expert testimony showed that stack discloses that its processes are performed without pre-registration.

[00:18:17] Speaker 00:
And second, we argued, we made an optional, what we've been calling the optional feature argument.

[00:18:22] Speaker 00:
We anticipated what Converse might argue, and we said, well, to the extent that's considered to be pre-registration, it's optional.

[00:18:29] Speaker 00:
So what the board did in its institution decision, and you can find this at A156, the board agreed with us

[00:18:36] Speaker 00:
with respect to the first argument.

[00:18:38] Speaker 02:
I think the board's not bound.

[00:18:39] Speaker 02:
You kept citing back to its institution decision.

[00:18:41] Speaker 02:
The board's not bound by its institution decisions.

[00:18:43] Speaker 02:
We've said that repeatedly.

[00:18:45] Speaker 02:
And let's consider the final written decision.

[00:18:48] Speaker 00:
Sure, Your Honor.

[00:18:48] Speaker 00:
And I think the point with respect to the final written decision is this.

[00:18:52] Speaker 00:
The board made preliminary findings in its institution decision, as you were saying.

[00:18:56] Speaker 00:
The problem that we have is the board never explained in its final decision so that this court could do the review that it needs to, to explain why it changed its position in its institution decision instead

[00:19:06] Speaker 00:
Without pre-registering limitation is a negative limitation.

[00:19:10] Speaker 00:
It could not have been clearer on that point.

[00:19:11] Speaker 01:
Is another way of expressing what you're saying that just looking at the final decision and even the reconsideration decision, it's not clear how they considered your argument that from silence in the reference one should infer that the negative limitation is met.

[00:19:27] Speaker 00:
That's right.

[00:19:28] Speaker 00:
That's exactly right, Your Honor.

[00:19:29] Speaker 00:
And I think here, I think the board had a duty to explain when we went in with expert testimony from the perspective of one of skill in the art, we had testimony from Dr. Barton in the record who went through STAC painlessly, limitation by limitation, and explained why one of foreigners skill in the art understood STAC not to disclose the without pre-registering limitation.

[00:19:50] Speaker 02:
And the board... But there was also expert testimony on the other side saying that one of Skill in the Art would have understood that at least as it relates to the M1 that it stacked taught the without pre-registration limitation.

[00:20:09] Speaker 02:
And so you've got competing experts.

[00:20:11] Speaker 02:
I mean, the board is allowed to choose one expert over the other, right?

[00:20:16] Speaker 00:
Your Honor, it's certainly allowed to do that, but we are missing that analysis from the board, right?

[00:20:22] Speaker 02:
So what the board did... And that's... I get what you're saying, but I'm trying to figure out if, and I always... I hate this language in our cases, but we say it all the time, if we can reasonably discern the board's path.

[00:20:34] Speaker 02:
So as to M1, as far as I can see, the only argument they had before it was that the standard, the substandard, the specific standard,

[00:20:45] Speaker 02:
require pre-registration.

[00:20:48] Speaker 00:
That's right, Your Honor.

[00:20:49] Speaker 00:
And I think if you look at that particular argument, that the only thing that they had, the other side, pointed to was exactly what you're saying.

[00:20:57] Speaker 00:
But I think if you look at STAC, and that's specifically, let me point the court to page 531 of STAC, if you could just spend maybe a couple of minutes looking at it.

[00:21:09] Speaker 01:
did not consider this argument.

[00:21:12] Speaker 01:
I don't see where the board considered this argument.

[00:21:14] Speaker 01:
Do you agree with that?

[00:21:14] Speaker 01:
Because I look at the expert, is it Mr. Konchitsky's declaration and the argument that he makes, but do you agree that the board didn't consider that either?

[00:21:24] Speaker 00:
I absolutely agree, Your Honor.

[00:21:26] Speaker 00:
And I think that's our point.

[00:21:27] Speaker 00:
And I think going back to the burden of proof point before I get to 531, I think what the board did and what Convercent tries to do here is they try to hide behind the burden of proof.

[00:21:36] Speaker 00:
They said, well, Google and LG had the burden of proof.

[00:21:38] Speaker 00:
We agreed.

[00:21:38] Speaker 00:
We had the burden of proof.

[00:21:40] Speaker 00:
But here, for the board and Convercent to rely on the burden of proof, two things needed to happen, or one of two things needed to happen.

[00:21:49] Speaker 00:
The board needed to make a finding that there was contrary evidence from Stack that was either persuasive, that's one, or the board needed to say, well, the evidence was counterbalanced here.

[00:21:59] Speaker 00:
It didn't make any of those findings.

[00:22:01] Speaker 00:
So I totally agree with you, Jed Stolt.

[00:22:03] Speaker 02:
The board did lay out the fact that these alternative arguments, one had been made by you, one had been made by them.

[00:22:10] Speaker 02:
Did the board ever say,

[00:22:13] Speaker 02:
Do we agree with conversant on this argument or not?

[00:22:17] Speaker 02:
Did it just lay them out and then not meet them head on?

[00:22:21] Speaker 00:
So in its institution decision, and I know you don't want me to go there, but I think in its institution decision, the board agreed with us with respect to the first argument, the no requirement argument, that that was the basis for institution.

[00:22:32] Speaker 00:
And then it said, we don't agree with your optional feature argument, and we will not institute on that basis.

[00:22:38] Speaker 04:
And in fact, But to get to Judge Romali's question,

[00:22:43] Speaker 04:
the board did in fact address the patent owner's argument that came out of the patent owner's preliminary response about a theory that there was something about the storage of subscription data satisfying or being a form of pre-registration and therefore defeating an anticipation theory based on this one reference, right?

[00:23:08] Speaker 00:
So Your Honor, just to make sure I understand your question, I think what the board did here was

[00:23:13] Speaker 00:
They actually held the contrary.

[00:23:14] Speaker 00:
They said, if you look at the optional feature argument, they said, look, we're not so sure that this optional feature that you're pointing to is pre-registration.

[00:23:23] Speaker 00:
Therefore, we will not institute on that basis.

[00:23:26] Speaker 04:
Let me try to divide this.

[00:23:27] Speaker 04:
There are three buckets in my head right now.

[00:23:30] Speaker 04:
One is, in the institution decision, the board found that there wasn't anything in this reference that disclosed pre-registration.

[00:23:40] Speaker 04:
Then the second thing bucket is,

[00:23:43] Speaker 04:
your, I guess, backed up argument that to the extent that this one theory is pre-registration, it's optional.

[00:23:54] Speaker 04:
And then the board said in the institution decision, well, we don't think that's pre-registration, because that's dealing with M2, not M1.

[00:24:02] Speaker 04:
So that's not pre-registration of the location finding service by M1.

[00:24:07] Speaker 04:
And then the third thing was in response to what the patent owner said in the preliminary response.

[00:24:13] Speaker 04:
where the patent owner said, there's this disclosure in STAC about storing subscription data.

[00:24:19] Speaker 04:
And that subscription data discussion is proof that there is something called pre-registration going on here in STAC.

[00:24:27] Speaker 04:
And in the institution decision, the board said, no, that's not pre-registration.

[00:24:31] Speaker 00:
Absolutely right.

[00:24:32] Speaker 04:
Then in the patent owner response, the patent owner further developed a theory about why the subscription data is, in fact, a pre-registration.

[00:24:41] Speaker 04:
and then it had an expert that submitted a declaration.

[00:24:45] Speaker 04:
As I read the board's decision in the final written decision, the board did not actually address the content of what

[00:24:53] Speaker 04:
the patent owner's expert set in support of the patent owner's response about the subscription data.

[00:24:58] Speaker 04:
Is this a fair understanding of what happened?

[00:25:01] Speaker 00:
It is, Your Honor.

[00:25:02] Speaker 00:
And I think that's the number of our APA argument, that the board should have done that.

[00:25:06] Speaker 00:
And I think what's telling here is, going back to Judge Amali, your question about the GSM standard that they pointed to, and their expert.

[00:25:14] Speaker 00:
If I could just have the court look at A531.

[00:25:18] Speaker 00:
At the bottom, we think this really resolves the argument in our favor.

[00:25:23] Speaker 00:
Let me know when you're there.

[00:25:25] Speaker 02:
Speaking of the APA, we can't do that.

[00:25:27] Speaker 04:
Yeah, you're not asking us to look at that DSM network discussion and in the first instance make a declaration of whether or not that's pre-registration, do you?

[00:25:36] Speaker 00:
Your Honor, I'm not, but I think this Court, certainly when the facts are pointing all in one direction, certainly this Court can reverse if it chooses.

[00:25:44] Speaker 00:
We understand if the Court just wants to remand, we're fine with that, but we think there's enough in the record here

[00:25:50] Speaker 00:
Especially if you look at the board's institution decision, the final decision, the evidence that they pointed to, which is what I'm going to address now.

[00:25:56] Speaker 02:
But it's a factual question as to what Stack taught, right?

[00:26:00] Speaker 00:
It is, Your Honor, but I think Stack could not be more clear on this point, which is why I want to make sure the court looks at this.

[00:26:06] Speaker 02:
I don't think you're going to convince us to make findings of fact in your favor.

[00:26:09] Speaker 02:
The only question is whether the board failed to make findings of fact against you.

[00:26:13] Speaker 02:
Sure.

[00:26:16] Speaker 02:
Back to my question, and I think your answer is going to be no, they didn't.

[00:26:21] Speaker 02:
But we very often have these situations where parties come up here, petitioners as well, and they'll say, look, the board laid out both sides' arguments and said, I agree with that.

[00:26:33] Speaker 02:
That means everything that it laid out should be considered part of the board's decision.

[00:26:38] Speaker 02:
In this case, the board did reference the GSM standard as part of Conversant's argument.

[00:26:44] Speaker 02:
My question is,

[00:26:46] Speaker 02:
And is there anything in the record where the board says we agree with conversant on that issue?

[00:26:52] Speaker 00:
There is nothing in the record, Your Honor, on that point.

[00:26:54] Speaker 02:
And did you put in expert testimony that says that GSM 03.71

[00:27:01] Speaker 02:
would not teach one of skill in the art.

[00:27:03] Speaker 00:
We did not, Your Honor, and I think there are two responses to that.

[00:27:06] Speaker 00:
One is kind of, as Judge Chen pointed out, their argument just built on the HLR argument, which the board relied on its institution decision.

[00:27:13] Speaker 00:
That said, and the board agreed with us at institution, and even it's in final decision, that such disclosures are not pre-registration.

[00:27:22] Speaker 02:
Forget the institution decision right now.

[00:27:25] Speaker 02:
The question is, did the board say,

[00:27:27] Speaker 02:
in its final decision that we agree now, having seen all this expert testimony, that GSM 0371 requires pre-registration?

[00:27:38] Speaker 00:
It did not, and that was error.

[00:27:40] Speaker 00:
And Judge Amelli, if I could just point very briefly to A531 and A532, I know this court may not want to make the fact findings, but I think on the GSM standard, this point is just positive.

[00:27:51] Speaker 00:
Because if you look at A531 and A532,

[00:27:54] Speaker 00:
It says, in connection with the signaling method, the location of the latter mobile station may be determined in accordance with the procedures described above or in another way and could be in accordance with GSM 3.71.

[00:28:06] Speaker 00:
We think that's just positive with respect to the GSM 3.71 argument because DAC itself says it's optional.

[00:28:12] Speaker 00:
And as soon as it's optional under this court's case law,

[00:28:15] Speaker 00:
the court has to find in our favor.

[00:28:17] Speaker 01:
Sir, your point is that there's expert testimony on this GSM 03.71 and you did not have to put in other expert testimony responding to it, but the problem is that there's an APA problem if the board didn't consider Conversance Experts Declaration.

[00:28:36] Speaker 00:
That's right, Your Honor, and even if it had, we think it would have ruled in our favor because of the point I just made.

[00:28:41] Speaker 02:
Okay, you're at well into your rebuttal time.

[00:28:43] Speaker 02:
Why don't you keep the rest of it.

[00:28:45] Speaker 00:
Thank you.

[00:29:02] Speaker 03:
Go ahead.

[00:29:02] Speaker 03:
Your Honor, it was a failure of proof, not an error on the part of the board that led to the petitioner's loss at the IPR.

[00:29:10] Speaker 03:
Both of Petitioner's arguments were considered.

[00:29:14] Speaker 03:
The evidence cited in support of those arguments was considered, laid out in both the final decision and the rehearing decision.

[00:29:23] Speaker 01:
I'm having a hard time seeing where both arguments were considered in the final decision.

[00:29:29] Speaker 01:
Can you point to me exactly where you're identifying that?

[00:29:32] Speaker 03:
Yes, Your Honor.

[00:29:33] Speaker 03:
We start on Appendix Page 9 at the very bottom.

[00:29:37] Speaker 03:
And this refers to, first, the so-called negative limitation argument.

[00:29:42] Speaker 03:
Petitioner argues that without pre-registering limitation in the claims is a negative limitation that recites something the claims lack.

[00:29:51] Speaker 03:
Over the page, Petitioner argues that as a consequence of being a negative limitation, the without pre-registering feature need not be expressly disclosed in the prior art reference, but rather may be described adequately if the reference does not require the presence of the feature.

[00:30:06] Speaker 03:
recitation of the negative limitation argument that the petitioner made.

[00:30:11] Speaker 03:
The board goes on and says, petitioner argues that the systems and method disclosed in STAC do not require pre-registering for the location finding service.

[00:30:21] Speaker 03:
And in support of its argument, petitioner relies on STAC's disclosure, et cetera.

[00:30:25] Speaker 01:
So that's moving on to the alternative argument now.

[00:30:28] Speaker 01:
But where do they, even if you're right and they identify the argument being made, the first argument,

[00:30:36] Speaker 01:
Where is it that the board addresses it?

[00:30:39] Speaker 03:
In the very next sentence, your honor, both of the petitioners' arguments relied upon the same evidence that the board labeled the stack check feature.

[00:30:48] Speaker 04:
What if we disagree with that?

[00:30:50] Speaker 04:
What if we think Google LG had two different arguments?

[00:30:57] Speaker 04:
One argument, number one, is that stack doesn't teach anything about pre-registration, period.

[00:31:06] Speaker 04:
Argument two, to the extent this optional feature with respect to MS2s choosing not to be found by MS1s, that is considered to be pre-registration, which they don't necessarily concede, well then that is not a required form of pre-registration, it's just optional.

[00:31:32] Speaker 04:
And so therefore, it's the board who mistakenly

[00:31:36] Speaker 04:
hooked up this optional feature for MS2s to stay unknown in terms of their location.

[00:31:46] Speaker 04:
The board mistakenly hooked that up to both arguments one and two.

[00:31:53] Speaker 04:
If that hypothetical is right, that the board misread argument number one, then doesn't this need to go back?

[00:32:01] Speaker 03:
No, it doesn't, Your Honor.

[00:32:03] Speaker 03:
Because the board has indicated they reviewed the party's arguments and evidence of record.

[00:32:08] Speaker 03:
And upon that review.

[00:32:08] Speaker 04:
But that's premised on hooking up the optional feature to both arguments one and two.

[00:32:15] Speaker 04:
I just said, what if that's a misreading of Google LG's argument number one?

[00:32:21] Speaker 03:
I disagree that it's improperly hooking up.

[00:32:24] Speaker 03:
There's nothing in that statement.

[00:32:26] Speaker 04:
It's a hypothetical.

[00:32:27] Speaker 04:
What if it is a mistake?

[00:32:29] Speaker 04:
What if it is a misreading?

[00:32:31] Speaker 04:
then wouldn't you agree this has to go back because the board's decision in rejecting the unpatentability theory with respect to argument number one is based on a mistaken premise?

[00:32:44] Speaker 03:
No, Your Honor.

[00:32:44] Speaker 03:
There's nothing that requires the board to agree with Google's argument.

[00:32:49] Speaker 04:
No, of course not.

[00:32:50] Speaker 04:
The question is, did it understand Google's argument?

[00:32:53] Speaker 04:
And I'm telling you what if they didn't understand correctly Google's argument.

[00:32:58] Speaker 04:
It's clear to me that an institution decision

[00:33:00] Speaker 04:
They had a pretty firm conception that argument one from Google was separate and independent from argument two.

[00:33:07] Speaker 04:
Then in the final written decision, I'm not sure why, they collapsed the two arguments to be premised on the single idea of this optional feature.

[00:33:18] Speaker 03:
Let me address that part in a moment, Your Honor, but to answer your question directly.

[00:33:22] Speaker 03:
Yes, if the board made a mistake in not considering an argument, remand is appropriate.

[00:33:29] Speaker 03:
They didn't make a mistake.

[00:33:31] Speaker 03:
And the reason they didn't make a mistake is because they followed the petition exactly the way it was laid out.

[00:33:37] Speaker 03:
Now, it was the same person who wrote the institution decision who wrote the final written decision.

[00:33:41] Speaker 03:
And she didn't make any errors.

[00:33:43] Speaker 04:
I'm sorry, but just to follow up, do you think the final written decision tracks the institution decision?

[00:33:51] Speaker 04:
Because I see a lot of daylight between those two decisions in terms of how the board understood Google's arguments.

[00:34:00] Speaker 03:
No, I think they understood it well.

[00:34:03] Speaker 04:
Do you think they're the exact same thing?

[00:34:05] Speaker 04:
The institution decision and the final written decision?

[00:34:09] Speaker 03:
They're not exactly the same, because the standards are different at trial than they were at institution.

[00:34:15] Speaker 03:
No, but in terms of understanding what Google's arguments were.

[00:34:18] Speaker 02:
As I understand it, what you're saying is that at the final written decision, they said

[00:34:25] Speaker 02:
Okay, Google, we listened to you.

[00:34:27] Speaker 02:
We listened to all of this.

[00:34:28] Speaker 02:
We had this hearing, and the only evidence you put in related to M2.

[00:34:34] Speaker 02:
Correct.

[00:34:34] Speaker 02:
You didn't put any evidence in as it relates to M1.

[00:34:37] Speaker 02:
Is that what you're saying?

[00:34:38] Speaker 03:
That's exactly right, Your Honor.

[00:34:39] Speaker 02:
But why didn't the Board come right out and say that?

[00:34:42] Speaker 03:
Well, I think they did.

[00:34:42] Speaker 03:
They clarified that in the rehearing decision, Your Honor.

[00:34:46] Speaker 03:
In the rehearing decision, and I'm looking now at page 16 of the record,

[00:34:54] Speaker 03:
The reason they disagreed with this same argument that's being made by the petitioner for rehearing is it because the stack check feature was relied upon by petitioner not just for the contingent argument, but also for the negative limitation argument.

[00:35:08] Speaker 03:
It was the same evidence that Google advanced with respect to both arguments.

[00:35:14] Speaker 03:
And we can see this clearly at pages 61 and 62 of the record.

[00:35:18] Speaker 03:
This is the part in the petition where Google lays out both arguments.

[00:35:24] Speaker 03:
They begin with the negative limitation argument, and they allege STAC nowhere discloses that pre-registration is required to access the location-based service.

[00:35:34] Speaker 03:
And what evidence do they cite?

[00:35:36] Speaker 03:
Like the 667 patent, STAC discloses that a mobile station may not release its location information to others.

[00:35:45] Speaker 03:
And then they rely on the same evidence in STAC for

[00:35:50] Speaker 03:
their so-called optional argument by saying, and to the extent Pat Nono proposes, that maintaining and using a list of entities that are permitted to receive location information is considered registering, STAC makes clear such features are optional.

[00:36:04] Speaker 01:
Do you think Mr. Barton's declaration is also just limited to M1 or M2 with respect to the argument that he makes about how STAC doesn't disclose a pre-registration process?

[00:36:19] Speaker 03:
Well, Mr. Barton's declaration, Your Honor, is even more void of evidence, because the argument that's made by Mr. Barton appears at page 723, and he states only a conclusion, stack does not disclose anywhere that pre-registration is required to access the location services disclosed in stack.

[00:36:40] Speaker 01:
Do you think that that sentence is limited to M1 or M2, or is it the entire reference?

[00:36:45] Speaker 03:
Well, it appears to be the entire reference on its face, Your Honor.

[00:36:49] Speaker 03:
But absence of disclosure is meaningless.

[00:36:52] Speaker 03:
What matters is what the person of ordinary skill in the art would understand from the reference.

[00:36:57] Speaker 03:
And that was the point.

[00:36:58] Speaker 01:
What about what one of a person of ordinary skill in the art would understand from or infer from the silence in the reference?

[00:37:08] Speaker 01:
Isn't that the relevant question in Sud Kemi?

[00:37:11] Speaker 03:
I think it is.

[00:37:12] Speaker 03:
I think it is, and that was the question that Google failed to answer, or at least when they answered it, they answered it with respect to the wrong mobile station.

[00:37:20] Speaker 04:
I go back to pages... Well, it's confusing because, again, your theory for an affirmance is based on the board correctly understanding the broad argument that there's nothing in stack that discloses pre-registration as being hooked up to this

[00:37:40] Speaker 04:
optional feature or arguably optional feature about MS2 versus MS1.

[00:37:48] Speaker 04:
But you, when you look at this claim chart by this expert, you know, right after the line you quoted at A723, the expert then goes on and says, I have also been asked to consider the scenario where maintaining and using a list of entities that are permitted to receive location information as disclosed by stack is interpreted as being similar to the claim pre-registering.

[00:38:10] Speaker 04:
So to me, that juxtaposition and transition to this additional thought really further supports the idea that this is a second, different argument relating to the optional future compared to the broader initial argument that Google was advancing.

[00:38:30] Speaker 03:
Nobody disputes that there were two arguments, Your Honor.

[00:38:33] Speaker 03:
The question is, what was the evidence advanced in support of those arguments?

[00:38:37] Speaker 03:
And the petition makes clear that it was the same evidence, it was the same disclosure in stack that the petitioners were relying upon.

[00:38:46] Speaker 03:
And that's where the board found that that evidence would not apprise a person of ordinary skill that no pre-registration was required.

[00:38:55] Speaker 03:
Google didn't explain why the silence was meaningful.

[00:39:02] Speaker 02:
And that's what Sue Kimme says, is it doesn't say silence alone is the answer.

[00:39:08] Speaker 02:
Correct.

[00:39:09] Speaker 02:
It says, and in fact, in that case, it said, yes, it's silent.

[00:39:13] Speaker 02:
It doesn't explicitly state it.

[00:39:15] Speaker 02:
But if you actually look underneath at the reference, you can find that it essentially teaches it.

[00:39:20] Speaker 03:
Exactly right.

[00:39:20] Speaker 02:
And so I guess what I'm having trouble with it would be a lot nicer if the board had said, we're looking underneath at the reference.

[00:39:29] Speaker 02:
We see GSM.

[00:39:31] Speaker 02:
0371, Google puts in nothing to say that that wouldn't teach registration.

[00:39:39] Speaker 02:
We've got an expert that says it does.

[00:39:42] Speaker 02:
And all their expert turns to is this optional feature at M2.

[00:39:47] Speaker 02:
But we could write that opinion for you, but we can't write it for the board.

[00:39:55] Speaker 02:
Or we could write the opinion that your friend on the other side wants that says, well, we're looking at

[00:40:01] Speaker 02:
And we don't see that GSM 03-71 is required.

[00:40:08] Speaker 02:
But again, we can't write that opinion either.

[00:40:11] Speaker 02:
So I guess what my problem is, the board just didn't say a none.

[00:40:16] Speaker 03:
I think they did, Your Honor.

[00:40:17] Speaker 03:
They didn't have to get to the patent owner's case.

[00:40:20] Speaker 03:
They only had to get as far as the failure of proof in the petitioner's case in chief.

[00:40:26] Speaker 03:
If the petitioner doesn't meet the burden of persuasion,

[00:40:29] Speaker 03:
Patent owner doesn't even have to put in any evidence in order to win.

[00:40:34] Speaker 03:
So what the board is saying is, petitioner, you didn't get far enough over the line.

[00:40:39] Speaker 03:
The board didn't have to consider our standards-based argument.

[00:40:43] Speaker 03:
They didn't have to consider our expert's testimony about what the standards mean.

[00:40:48] Speaker 01:
Can I go back to page 87.3 with you?

[00:40:50] Speaker 01:
Yes, sure.

[00:40:51] Speaker 01:
In here, it says, stack does not disclose anywhere that preregistration is required.

[00:40:57] Speaker 01:
And then later, for the alternative argument, they're looking at what the parties have been referring to as the stack check.

[00:41:03] Speaker 01:
How can we say that the discussion, the first argument, is limited to the disclosure of the stack check, where the expert is saying that stack doesn't disclose it anywhere, meaning that he's referring to this full reference?

[00:41:17] Speaker 03:
You look to the petition, Your Honor, because the petition explains the basis for the argument.

[00:41:22] Speaker 01:
But aren't we now looking at the expert?

[00:41:23] Speaker 03:
Well, the expert testimony is just the conclusion, Your Honor, and the board doesn't have to accept naked conclusions.

[00:41:31] Speaker 03:
The board needs to understand why the conclusion was reached.

[00:41:34] Speaker 03:
And the Barton Declaration doesn't say anything other than, I can't see where it's disclosed in the reference.

[00:41:44] Speaker 03:
That alone means nothing.

[00:41:47] Speaker 03:
We looked at the petition.

[00:41:48] Speaker 01:
Is it your position that the expert had to go further and say, I think one of ordinary skills would infer from this that the reference doesn't satisfy the negative limitation?

[00:42:00] Speaker 03:
At a minimum, that would be required, Your Honor.

[00:42:02] Speaker 03:
Yes.

[00:42:03] Speaker 02:
Well, even if it's true, and I accept your proposition that the patent owner doesn't have to put in any proof, wouldn't the board have to at least refer to STAC itself and say,

[00:42:16] Speaker 02:
It doesn't explicitly say no to pre-registration, but when you look at how it operates, because it relies on the standard, we believe that it does, just like the district court did in Sue Cheney.

[00:42:34] Speaker 03:
No, I don't think the board has to go that far, Your Honor.

[00:42:37] Speaker 03:
The board doesn't have to make the petitioner's case for them.

[00:42:40] Speaker 03:
The board simply has to look at the evidence proffered by the petitioner and decide whether or not that meets the requirement for anticipation.

[00:42:48] Speaker 03:
And here, that's what the board did.

[00:42:50] Speaker 03:
They looked at the evidence, the passage that I cited from their petition.

[00:42:55] Speaker 03:
It refers to the stack check feature.

[00:42:57] Speaker 03:
And they decided that doesn't explain why a person of ordinary skill would have inferred no preregistration.

[00:43:05] Speaker 03:
Absent that, they can't show anticipation, and the board's job was done.

[00:43:13] Speaker 02:
Any final words or just about out of time?

[00:43:16] Speaker 03:
Just, Your Honor, we believe that an affirmance is appropriate in this case for the reasons outlined in our briefs and here this morning.

[00:43:22] Speaker 03:
Just a quick follow-up question.

[00:43:25] Speaker 04:
What if we feel like we have to remand this?

[00:43:27] Speaker 04:
Are there any other arguments to defeat the unpatentability challenge you think the board would need to consider aside from your reliance on the GSM storage of subscription data theory?

[00:43:43] Speaker 04:
Yes.

[00:43:44] Speaker 04:
Are there other limitations that the Board didn't address because it didn't feel like it needed to address that you would think on remand would have to also be confronted by the Board in resolving whether these claims are unfathomable?

[00:43:59] Speaker 03:
Thank you, Your Honor.

[00:44:00] Speaker 03:
Yes, there are several arguments.

[00:44:02] Speaker 03:
We advance an argument concerning the retrieving data limitation and about which data it is that is retrieved and which data it is that is sent.

[00:44:12] Speaker 03:
We advance an argument about

[00:44:14] Speaker 03:
which mobile station it is that is engaged in the request for the location finding service and we advance an argument concerning what is location finding information as recited in claim one.

[00:44:28] Speaker 03:
Okay, this is all in your patent order response?

[00:44:29] Speaker 03:
Yes it is.

[00:44:31] Speaker 03:
It begins at appendix page 202 and there's about I think eight or ten pages worth of argument.

[00:44:38] Speaker 03:
Thank you.

[00:44:50] Speaker 04:
Was Dr. Bartone ever deposed?

[00:44:52] Speaker 00:
Yes, Your Honor, he was.

[00:44:54] Speaker 04:
Did he ever address Mr. Konczycki's theory on why, in fact, there is pre-registration with that subscription data?

[00:45:03] Speaker 00:
So that came later, Your Honor, because he was deposed before they put in the patent on a response with that argument.

[00:45:11] Speaker 02:
And I think going back... He was deposed after that or before that?

[00:45:15] Speaker 00:
No, he was deposed before they put in the DSM 3.71 argument.

[00:45:18] Speaker 02:
One of my problems is there are two different issues.

[00:45:22] Speaker 02:
One is, did you present evidence on a particular theory?

[00:45:27] Speaker 02:
The other is, did you ever even fully develop the theory?

[00:45:30] Speaker 02:
So it's one thing to say I made a one-sentence argument, like the one that's pointed out in your brief that's totally conclusory, and another thing to say that you adequately developed the argument for purposes of presenting it in the ICR.

[00:45:43] Speaker 02:
Your petition says negative limitation, it's not there,

[00:45:49] Speaker 02:
And then goes on and develops this stack check theory.

[00:45:53] Speaker 02:
So where did you develop this theory that you wanted the board to somehow figure out?

[00:45:59] Speaker 00:
Your Honor, we did develop it.

[00:46:00] Speaker 00:
And I think if you look at it, you have to look at the petition and the expert declaration collectively.

[00:46:04] Speaker 00:
And I think if you look at it collectively, Dr. Bartone spent pages and pages going through claim one, and he also had, before he went through claim one, he went through stack and showed why stack did not require pre-registration.

[00:46:16] Speaker 02:
But he only talked about the optional feature at M2.

[00:46:19] Speaker 02:
Where did he talk about M1?

[00:46:22] Speaker 00:
So, Your Honor, I think it goes back to what Jeff Stowell was pointing to, which is at A723.

[00:46:27] Speaker 00:
And I think one critical piece that's missing here is they keep on saying we're pointing to the wrong mobile station, the M2.

[00:46:34] Speaker 00:
But if you look at the figure two embodiment of STAC, that talks about M1.

[00:46:37] Speaker 00:
There is only one mobile station that's requesting information about its location.

[00:46:41] Speaker 00:
And if you look at, like I said, A723, he points back and says, as I discuss above, he points to the discussion above.

[00:46:49] Speaker 02:
And then if you look at, for example... But his discussion above is one sentence.

[00:46:53] Speaker 02:
It's just not there.

[00:46:55] Speaker 00:
Right.

[00:46:55] Speaker 00:
And I think that's one of our key points, Your Honor.

[00:46:57] Speaker 00:
This is a negative limitation.

[00:46:58] Speaker 00:
It can be satisfied by one of two ways.

[00:47:02] Speaker 00:
One is silence in the prior art we think is enough.

[00:47:04] Speaker 01:
Do you agree, though, that silence in the prior art in every instance might not be enough?

[00:47:10] Speaker 01:
For example,

[00:47:11] Speaker 01:
you know, suppose there was a claim that was directed to a method of operating a vehicle without a steering wheel, okay?

[00:47:19] Speaker 01:
And then the reference didn't disclose a steering wheel, the prior reference.

[00:47:23] Speaker 01:
In that case, you might have a different answer to the question than one where the claim was directed to a method of operating a vehicle without listening to the radio, right?

[00:47:33] Speaker 00:
Absolutely, Your Honor.

[00:47:34] Speaker 00:
And I think what we're saying is if you look at what we presented, it's certainly enough in the soot coming.

[00:47:39] Speaker 02:
And if the court wants to go for it, I think it's because it is French.

[00:47:44] Speaker 02:
But what it said was you don't need magic words.

[00:47:49] Speaker 02:
So it acknowledged that the word uncoated was never used at all.

[00:47:56] Speaker 02:
So the fact that the word pre-registration is not used doesn't answer the question.

[00:48:00] Speaker 00:
of whether it is disclosed in the prior.

[00:48:12] Speaker 00:
The testimony was from one perspective, one of skill in the art.

[00:48:15] Speaker 02:
But he doesn't explain it except for the optional feature.

[00:48:18] Speaker 00:
Your Honor, again, I think if you look at it, you have to look at the testimony collectively.

[00:48:22] Speaker 00:
If you look at A723, he does point to his discussion above, where he pointed to the figure two embodiment and the figure seven embodiment.

[00:48:29] Speaker 00:
And in the figure two embodiment, it's only talking about one mobile station.

[00:48:32] Speaker 00:
We're not talking about two.

[00:48:33] Speaker 00:
And then just one final point is that, to the extent it's optional, we think we've been under that precedent too.

[00:48:39] Speaker 00:
You know, that's this court's case law.

[00:48:41] Speaker 00:
in Prolitech.

[00:48:42] Speaker 00:
To the extent it's considered optional, we showed that if it's an optional pre-registration feature, STAC would satisfy that.

[00:48:50] Speaker 01:
So are you saying that because the priority, STAC, with reference to that standard that is being relied on by opposing counsel, because it says could be, that shows that it's optional?

[00:49:02] Speaker 00:
That's right, Your Honor.

[00:49:03] Speaker 00:
Exactly.

[00:49:04] Speaker 02:
Okay, thank you.

[00:49:06] Speaker 00:
Thank you, Your Honor.