[00:01:02] Speaker 03:
Your Honor, would it be okay if I leave the chair?

[00:01:06] Speaker 03:
Yes.

[00:01:06] Speaker 03:
Thank you.

[00:01:42] Speaker 04:
OK, next argued case is number 181627, Focal IP LLC against Cisco Systems, Incorporated.

[00:01:52] Speaker 04:
Mr. Madbeck.

[00:01:54] Speaker 05:
Good morning, Your Honors.

[00:01:56] Speaker 05:
May it please the Court, my name is Hannah Madbeck, representing Appellant Focal IP.

[00:02:01] Speaker 05:
There are four issues on appeal today.

[00:02:03] Speaker 05:
I will be addressing them.

[00:02:04] Speaker 07:
Mr. Madbeck, I'd like to, if you can, I want you to try

[00:02:10] Speaker 07:
A yes or no answer, or a clear answer.

[00:02:14] Speaker 07:
Does Focal at a minimum agree that the same or substantially similar claim construction issues were fully litigated in the 298 patent IPRs?

[00:02:31] Speaker 07:
And if you don't agree, tell me why or why not.

[00:02:36] Speaker 05:
I don't agree.

[00:02:37] Speaker 05:
OK, why not?

[00:02:39] Speaker 05:
Because my colleague, John Murphy, will address this.

[00:02:44] Speaker 04:
OK, the next team.

[00:02:45] Speaker 04:
Please answer your question.

[00:02:51] Speaker 02:
Your Honor, we do agree that the same claim construction was briefed across all nine IPRs.

[00:02:56] Speaker 06:
And decided in the 298, the same claim construction issue.

[00:03:01] Speaker 02:
Correct, Your Honor.

[00:03:02] Speaker 06:
And if we were to say that that claim construction issue was flat or estoppel, you would lose here, right?

[00:03:08] Speaker 06:
Correct.

[00:03:10] Speaker 04:
Thank you.

[00:03:11] Speaker 04:
Do you want to continue with Mr. Murphy?

[00:03:13] Speaker 04:
How do you want to erase this?

[00:03:14] Speaker 02:
So we have a divide up where Mr. Modbach will handle a claim construction type issues and anything regarding the scope of the claim.

[00:03:21] Speaker 02:
I'm basically handling every other issue, collateral estoppel and prior art issues.

[00:03:29] Speaker 06:
Since we're on the collateral estoppel, let me ask you a question.

[00:03:33] Speaker 06:
Your argument as to why Claude Oestoppel does not apply is based on the theory that this was a consolidated proceeding.

[00:03:44] Speaker 06:
And it wasn't actually consolidated, right?

[00:03:49] Speaker 02:
I would disagree with that, Your Honor.

[00:03:51] Speaker 02:
It was consolidated.

[00:03:53] Speaker 02:
Where's the consolidation order?

[00:03:56] Speaker 02:
The consolidation was through a myriad of factors.

[00:03:59] Speaker 02:
One, they're all the same schedule.

[00:04:01] Speaker 06:
So there's no formal consolidation order?

[00:04:04] Speaker 02:
Well, it was formally consolidated where there's one oral argument.

[00:04:08] Speaker 02:
For example, there's one oral argument for all nine IPRs that start at 10 AM.

[00:04:13] Speaker 02:
How does that achieve mean consolidation?

[00:04:17] Speaker 02:
I believe it was consolidated.

[00:04:19] Speaker 02:
Appellees in their brief, Your Honor, they acknowledge the fact that all nine IPRs were consolidated.

[00:04:27] Speaker 06:
I think that you'd have to show that there was some sort of order of consolidation.

[00:04:37] Speaker 06:
But there isn't one.

[00:04:38] Speaker 06:
I mean, the fact that they were argued together or that there are similar issues or whatever doesn't mean that they were consolidated.

[00:04:46] Speaker 02:
I'd respectfully disagree, Your Honor.

[00:04:48] Speaker 02:
The same scheduling order was entered for all nine IPRs through the same order.

[00:04:53] Speaker 02:
There are several instances of several different orders

[00:04:56] Speaker 02:
where one order was issued on behalf of all nine IPRs.

[00:04:59] Speaker 07:
And there was only one decision issued?

[00:05:01] Speaker 02:
There was nine decisions issued.

[00:05:03] Speaker 02:
That's what I thought.

[00:05:04] Speaker 02:
Yes, sir.

[00:05:05] Speaker 07:
So how does that show consolidation?

[00:05:07] Speaker 02:
It shows consolidation because, as appellees also acknowledge in their responsive brief, that all the issues, even though they're across nine different decisions, they all use basically the same identical reasoning and claim construction analysis.

[00:05:24] Speaker 04:
But was the fact that there were nine decisions, was this something that the PTAB did at its initiative?

[00:05:34] Speaker 04:
Or how did that come into play?

[00:05:36] Speaker 04:
This is the first time that we've noticed that

[00:05:41] Speaker 04:
There's perhaps a single argument.

[00:05:44] Speaker 04:
And because there have been separate petitions, there have been separate decisions, which are almost identical, if not identical.

[00:05:53] Speaker 04:
Is that the situation here?

[00:05:55] Speaker 02:
That is the situation, Your Honor.

[00:05:57] Speaker 02:
The appellees in their responsive brief, they acknowledge the fact that even though there are nine separate decisions, the analysis is identical as a claim construction and patentability over the same prior art references.

[00:06:08] Speaker 04:
OK.

[00:06:09] Speaker 04:
But now I wonder, should we start again with your argument?

[00:06:12] Speaker 04:
Have you covered the points that you made?

[00:06:14] Speaker 07:
If you're honest, maybe I'll jump back in.

[00:06:15] Speaker 07:
Well, I want to throw another one out while you're up there, because I think you'll.

[00:06:19] Speaker 07:
Do you further agree that the claim construction issues in the 298 patent IPRs were similarly resolved adversely against Focal and the 1261 IPR and the other IPRs?

[00:06:32] Speaker 02:
Yes, Your Honor.

[00:06:33] Speaker 07:
The claim construction issues were identical.

[00:06:35] Speaker 07:
I just wanted to clear on the record.

[00:06:37] Speaker 04:
Okay, would you start again with the time if Mr. Maddack diverted the argument?

[00:06:45] Speaker 04:
Okay.

[00:06:50] Speaker 05:
So I was saying that I would be handling the claim construction issues and my colleague John Murphy would be handling the other issues.

[00:06:58] Speaker 05:
On the claim construction issue,

[00:07:01] Speaker 05:
The most important issue relating to the interpretation of the disputed claim is whether the patentee properly disclaimed connecting the controlling device to an edge device or an edge facility.

[00:07:16] Speaker 05:
So the term in dispute here is a controlling device in communication with the switching facility.

[00:07:23] Speaker 05:
The patentee spent no less than two full columns of the specification, of the 12 column specification, explaining how connecting the controlling device to an edge device is the prior art.

[00:07:39] Speaker 07:
Where do the claims to which you're referring further define the type of connection that is required?

[00:07:48] Speaker 05:
If you're referring to

[00:07:50] Speaker 07:
I'm referring to claim 18 of the 777 patent, which recites a controlling device in communication with the switching facility at column 15, lines 19 to 20, that they don't further define the type of connection required.

[00:08:08] Speaker 05:
Right.

[00:08:09] Speaker 05:
The type of connection required is actually in the preamble.

[00:08:14] Speaker 07:
If we read the preamble and open it up, we would... You agree that that language on its face is ambiguous, do you not?

[00:08:21] Speaker 05:
I do not agree.

[00:08:22] Speaker 05:
I respectfully do not agree that it is ambiguous.

[00:08:25] Speaker 05:
It is not ambiguous considering the specification and the

[00:08:32] Speaker 05:
extent to which the patentee went explaining what does the edge of the network mean and what does it mean to connect to the edge of the network versus connecting internally to the network.

[00:08:45] Speaker 05:
It's helpful to spend 20 seconds simply explaining that, as we did on page 5 in our brief, where we show that class 5 switches are the edge switches on the edge of the network.

[00:08:58] Speaker 05:
In the prior art, all that it did is connect it to these switches.

[00:09:02] Speaker 05:
Then we explain all the problems that are associated with that.

[00:09:07] Speaker 05:
and how we solve them by connecting internally through class four switches in order to prevent these problems.

[00:09:15] Speaker 07:
You agree that the controller doesn't need to be connected directly to the tandem access switch, right?

[00:09:26] Speaker 05:
I do, Your Honor.

[00:09:27] Speaker 05:
It does not need to be connected directly.

[00:09:29] Speaker 05:
However, we clarify that it cannot go

[00:09:33] Speaker 05:
through an edge switch.

[00:09:34] Speaker 05:
It could be connected directly or indirectly, but it cannot go out of the network to an edge switch and come back in.

[00:09:41] Speaker 05:
That is the essence of the invention.

[00:09:43] Speaker 05:
The essence of the invention is not to connect through an edge switch.

[00:09:47] Speaker 05:
The reason why we say it could be connected directly or indirectly is because as the system evolved over the last 15 years, there are a lot of intermediary things that could go between the controller

[00:09:59] Speaker 05:
and the tandem switch.

[00:10:00] Speaker 05:
There could be a filter, a noise filter between those two devices, and then a potential infringer could say, well, you're not directly connected.

[00:10:10] Speaker 05:
The issue is not whether the connection is direct or indirect, is whether it goes through the edge switch or not because of the functionality.

[00:10:19] Speaker 06:
But your problem, it seems to me, is that in the prosecution history on which you rely,

[00:10:28] Speaker 06:
The language that the applicant used seemed to be pretty clear that this is a broad invention which both covers tandem switches and edge switches.

[00:10:42] Speaker 06:
He said it facilitates application of features to call routing operations anywhere in the network.

[00:10:50] Speaker 06:
And he said it only says he's allowed to connect with tandem switch.

[00:10:55] Speaker 06:
And it has this footnote that defines the switching facility in terms of both tandem and edge switches.

[00:11:06] Speaker 06:
So I'm having trouble seeing where this prosecution history supports your narrow construction of switching facility.

[00:11:19] Speaker 05:
Thank you, Your Honor, for bringing up footnote one.

[00:11:24] Speaker 05:
because the appellees rely on this and the P-tab rely on this footnote.

[00:11:29] Speaker 05:
And it is notable to say that footnote one is always cited in and of itself and is never placed in the context of the paragraph.

[00:11:41] Speaker 06:
So that's why I was mentioning this other language in the prosecution history.

[00:11:45] Speaker 06:
Where in the prosecution history does it say that our claims are limited to tandem switches?

[00:11:53] Speaker 06:
It is throughout the prosecution history you're on.

[00:11:55] Speaker 06:
Just give me one example, not throughout.

[00:11:58] Speaker 05:
Of course.

[00:11:58] Speaker 05:
For example, again, there are dozens and dozens of faces, but I'll cite one of them.

[00:12:06] Speaker 05:
For example, in overcoming the prior arch swab, and we reference this in our brief on page 30.

[00:12:18] Speaker 06:
Now where?

[00:12:20] Speaker 06:
Tell me where in the appendix I find a statement that you're, in the prosecuting industry, your inventions limited to tandem switches.

[00:12:28] Speaker 05:
Appendix 6307.

[00:12:29] Speaker 05:
6307?

[00:12:30] Speaker 05:
6307.

[00:12:35] Speaker 05:
Which volume is that in?

[00:12:36] Speaker 05:
Two.

[00:12:42] Speaker 07:
It's in two.

[00:12:44] Speaker 02:
Volume two.

[00:12:45] Speaker 07:
But I don't see it.

[00:12:51] Speaker 07:
in the appendix.

[00:12:54] Speaker 07:
I see 6301.

[00:12:55] Speaker 07:
And all of this is also... No, no.

[00:13:03] Speaker 07:
Wait, where?

[00:13:05] Speaker 07:
I'm sorry.

[00:13:06] Speaker 07:
Where?

[00:13:06] Speaker 07:
I see 6301.

[00:13:12] Speaker 07:
And then the next page is 6497.

[00:13:21] Speaker 06:
What are you saying?

[00:13:22] Speaker 06:
6307?

[00:13:26] Speaker 06:
Is that the page number?

[00:13:31] Speaker 05:
No.

[00:13:31] Speaker 05:
If I may direct the court to 6322.

[00:13:32] Speaker 05:
6322?

[00:13:32] Speaker 05:
6322.

[00:13:33] Speaker 05:
6322.

[00:13:35] Speaker 05:
Where's that?

[00:13:36] Speaker 05:
In the appendix.

[00:13:42] Speaker 06:
Judge Wallach, your appendix may be deficient because 6322.

[00:13:53] Speaker 06:
Well, it shouldn't happen.

[00:13:57] Speaker 06:
You should be careful about the documents that you supply to us to make sure that they are complete and that each judge has the right copy.

[00:14:07] Speaker 05:
I apologize for this.

[00:14:10] Speaker 05:
I apologize that your version does not have.

[00:14:14] Speaker 05:
And we would happily supplement the court's record

[00:14:21] Speaker 05:
with the relevant section.

[00:14:23] Speaker 05:
Basically, just to go back to the point that as we were distinguishing over Schwab, which was at the time that we introduced the term switching facility and then we describe what switching facility is,

[00:14:38] Speaker 05:
Throughout that section, throughout that response to the office action, we talk about edge switches.

[00:14:43] Speaker 05:
We talk about how our invention is not an edge switch and how Schwab is an edge switch.

[00:14:47] Speaker 06:
Where do you say your invention is not an edge switch?

[00:14:51] Speaker 06:
I don't see that.

[00:14:53] Speaker 05:
Well, if I may, first- Why don't you rate it, since I don't have it in front of me?

[00:14:59] Speaker 05:
If I may first refer you to the specification, before we go to the prosecution history.

[00:15:03] Speaker 06:
No, no.

[00:15:03] Speaker 06:
Stick with the prosecution.

[00:15:05] Speaker 06:
Where in the prosecution history does it say, our invention doesn't cover edge switches?

[00:15:12] Speaker 06:
Because the material I read to you earlier from the prosecution history seems to say the opposite.

[00:15:28] Speaker 05:
here on Appendix 6323.

[00:15:31] Speaker 05:
Applicant's architecture is not only distinct, but significant improvement over Schwab or any of the other asserted by the examiner of record because it facilitates application of the feature to call routing operations anywhere in the network.

[00:15:46] Speaker 05:
This is what you read.

[00:15:48] Speaker 05:
Applicant's architecture permits subscribers to access call routing operation at the switching facilities

[00:15:55] Speaker 05:
that interconnect end offices to other geographic areas that are not local to an end office.

[00:16:01] Speaker 05:
That is the key.

[00:16:03] Speaker 05:
The fact that it interconnects.

[00:16:05] Speaker 06:
Yeah, but what that says is that this covers tandem switches, but it doesn't say it doesn't cover edge switches.

[00:16:13] Speaker 06:
That's your problem.

[00:16:15] Speaker 05:
By the mere amendment of the claims and overcoming Schwab

[00:16:21] Speaker 05:
by saying that Schwab is an edge switch and we are not, and amending the claims to reflect that.

[00:16:27] Speaker 05:
It doesn't say we are not.

[00:16:28] Speaker 06:
Where does it say we are not?

[00:16:33] Speaker 05:
It says, applicants have amended the claim here to emphasize this distinction.

[00:16:37] Speaker 05:
Rather than simply refer to the PSTN, the claim now defines the various components of the PSTN architecture and indicate the point

[00:16:44] Speaker 05:
switching facility within the PSTN at which applicant system has access to apply these features requested by the subscriber to call routing operations.

[00:16:52] Speaker 07:
In column 3, line 46, and through column 3, lines 35 to 52, explaining another embodiment

[00:17:14] Speaker 07:
quote, provisioning features by the internet under direct control of the subscriber.

[00:17:19] Speaker 07:
It coexists with and overlay the local phone service at the local level.

[00:17:26] Speaker 07:
Aren't you including edge switches?

[00:17:29] Speaker 05:
No, Your Honor.

[00:17:32] Speaker 05:
I respectfully submit that as you continue reading that section, it talks about

[00:17:40] Speaker 05:
how all of these devices fall short and they're required to subscribe to obtain 800 number.

[00:17:50] Speaker 05:
All of the implementations that include an edge switch, whether it is an 800 number or connecting the controller to the edge switch have been fully disclaimed.

[00:18:02] Speaker 05:
The connection to the internet does not change that assertion because

[00:18:08] Speaker 05:
enabling a device to have access through the internet does not make it an edge switch.

[00:18:16] Speaker 05:
It simply enables access to it, to the network, but it is still a class four.

[00:18:22] Speaker 05:
A tandem switch, if a tandem switch has access to the internet, that does not mean that it becomes an edge switch.

[00:18:28] Speaker 05:
There is a fundamental technical difference between switches that are inside the network, they use a totally different

[00:18:35] Speaker 05:
communication than the ones on the edge of the network.

[00:18:41] Speaker 05:
The edge of the network is similar to using your telephone, your regular plane or telephone system.

[00:18:52] Speaker 05:
Your telephone system is connected to the edge.

[00:18:55] Speaker 05:
It cannot control inside the PSTM.

[00:18:58] Speaker 05:
The invention is all about controlling the tandem switch.

[00:19:02] Speaker 06:
That's just like lawyer testimony about what the invention is.

[00:19:05] Speaker 06:
We have to deal with the documentary record.

[00:19:08] Speaker 05:
Agreed.

[00:19:09] Speaker 05:
And if I may submit,

[00:19:12] Speaker 05:
There are two columns in the specification.

[00:19:15] Speaker 05:
Before going to the prosecution history, there are two columns in the specification talking all about not connecting to the edge switch and connecting to the tandem switch.

[00:19:31] Speaker 05:
And this court has laid very clear law stating that

[00:19:37] Speaker 05:
No statements made during prosecution can recapture disclaimed subject matter in the specification.

[00:19:46] Speaker 05:
And we have disclaimed that subject matter over and over and over again, saying that we don't connect to edge switches.

[00:19:54] Speaker 05:
Connecting to edge switches is bad.

[00:19:55] Speaker 05:
It has these problems.

[00:19:57] Speaker 05:
We solve these problems by connecting to the tandem switch.

[00:20:03] Speaker 05:
And I give my time to my colleague John Murphy to argue the rest of the issues.

[00:20:09] Speaker 02:
Would you like to hear any other issues at this time?

[00:20:11] Speaker 02:
I know we're running out of time, so I can reserve this for a moment.

[00:20:13] Speaker 04:
No, we will.

[00:20:14] Speaker 04:
You have your full time.

[00:20:15] Speaker 04:
We've run over with questions, and we need to hear what you have to say.

[00:20:20] Speaker 05:
Thank you, Your Honor.

[00:20:25] Speaker 02:
Thank you, Your Honor.

[00:20:27] Speaker 02:
Would you like to hear anything else about collateral stopple issues?

[00:20:33] Speaker 02:
Any other questions on collateral stoppable?

[00:20:37] Speaker 02:
The other issue is.

[00:20:38] Speaker 04:
Could you tell us what we need to know on the issue in order to appreciate your viewpoint?

[00:20:46] Speaker 02:
Yes, Your Honor.

[00:20:47] Speaker 02:
So there is an accepted rule out there where if the cases are consolidated, that you're outside the purview of issue preclusion because there was no first action and no subsequent action.

[00:21:00] Speaker 02:
So as we discussed earlier today,

[00:21:02] Speaker 02:
You know, we believe that these cases are consolidated.

[00:21:04] Speaker 02:
There are supplemental authorities submitted by the appellees regarding the PAPS decision.

[00:21:09] Speaker 02:
We think that's distinguished because in that case there was no consolidation.

[00:21:14] Speaker 02:
There were separate dates for oral arguments in PAPS.

[00:21:18] Speaker 02:
There was no facts indicating that there was any consolidation in there.

[00:21:23] Speaker 02:
And then another distinction on that point is, here the court recognized in our case, Sue Esponta, this was consolidated.

[00:21:31] Speaker 07:
What are the policy implications of our just saying consolidation orders are irrelevant?

[00:21:38] Speaker 07:
Sorry, what?

[00:21:38] Speaker 07:
I said, what are the policy implications of our saying consolidation orders are irrelevant?

[00:21:45] Speaker 02:
Well, the policy considerations are to waste up litigant resources to pursue every single issue in a consolidated nature.

[00:21:53] Speaker 02:
we're trying to hone in on the precise issues that we'd like to cover.

[00:21:57] Speaker 02:
So rather than go through every single patent and every single issue, like the motions to amend, we've always learned that if you want to try to win on appeal, you've got to narrow your arguments down to some bullet point rifle shots.

[00:22:11] Speaker 02:
So for us to go through and try and argue every single issue and every single patent and consolidate in nature,

[00:22:17] Speaker 02:
It's going to promote judicial inefficiency.

[00:22:20] Speaker 06:
It's also further not a simple answer to that, which our decision in past notes is that you get an agreement from the other side that there's no collateral estoppel by abandoning an appeal with respect to one of the patents.

[00:22:33] Speaker 06:
You didn't do that.

[00:22:35] Speaker 02:
Yes, sir, we did not do that.

[00:22:36] Speaker 02:
Yes, your honor, we did not do that.

[00:22:38] Speaker 02:
But we do believe that this has the consolidated nature that aligns with in-race Cygnus.

[00:22:44] Speaker 02:
And so that's what we're hanging our hat on.

[00:22:46] Speaker 02:
This is consolidated nature.

[00:22:48] Speaker 07:
Explain to me why Focal failed to present its constitutional arguments below.

[00:22:55] Speaker 07:
At the IPR level?

[00:22:58] Speaker 07:
Mm-hmm.

[00:22:58] Speaker 07:
It hasn't pointed to exceptional circumstances justifying that forfeiture.

[00:23:06] Speaker 02:
It's just been our experience that

[00:23:10] Speaker 02:
I don't think the PTAP has the authority to decide constitutionality issues.

[00:23:14] Speaker 02:
That's why we raise it for the first time here.

[00:23:18] Speaker 04:
It's not in their statutory authority.

[00:23:21] Speaker 04:
At the same time, they're not supposed to violate the Constitution.

[00:23:26] Speaker 04:
Yes, Your Honor.

[00:23:26] Speaker 04:
Just because they're an administrative agency.

[00:23:29] Speaker 04:
I think that's an interesting question.

[00:23:32] Speaker 04:
We don't hold you to an argument, to an answer to it.

[00:23:36] Speaker 07:
Given the cursory briefing,

[00:23:40] Speaker 07:
of the constitutional challenge.

[00:23:42] Speaker 07:
How do we get around Judge Moore's recent presidential opinion in trading tech, where we expressly declined to address such a conclusory assertion?

[00:23:57] Speaker 02:
I'm not sure you're all that familiar with that case.

[00:24:00] Speaker 02:
But here, this is like a constitutionality issue.

[00:24:02] Speaker 02:
So we are entitled, this is a retroactive application.

[00:24:06] Speaker 02:
to the 777 patent that was issued before the AI was enacted.

[00:24:12] Speaker 02:
So now you have the same governmental body agency who handed us the patent and now wants to take it away from us without giving us our due process to be able to do a proper negotiation of claim scope.

[00:24:23] Speaker 04:
Were you here for the previous argument?

[00:24:26] Speaker 02:
Yes, Your Honor.

[00:24:26] Speaker 04:
Did you notice that the government intervened?

[00:24:28] Speaker 04:
wanted to argue the constitutional suspect, which had been raised in the briefs.

[00:24:34] Speaker 04:
And in due time, perhaps in that case, it will require our attention.

[00:24:43] Speaker 04:
In which case, it would affect the entire DTAB operation, I would think.

[00:24:49] Speaker 02:
Yes, Your Honor.

[00:24:49] Speaker 02:
This is a global issue.

[00:24:50] Speaker 02:
I'm sure you deal with this issue all the time.

[00:24:52] Speaker 02:
But in our opinion, this is unconstitutional.

[00:24:56] Speaker 02:
We try to do motions to amend in this case, and it's not practical in the IPR setting.

[00:25:02] Speaker 02:
So for those reasons, it's unconstitutional taking.

[00:25:07] Speaker 04:
Did you want to pursue the Constitution?

[00:25:11] Speaker 07:
Not on a three-page brief.

[00:25:14] Speaker 07:
I just don't think it's sufficient.

[00:25:17] Speaker 02:
OK.

[00:25:19] Speaker 02:
I'll reserve the rest of our time for rebuttal, Your Honors.

[00:25:22] Speaker 04:
Let's hear from the other side, and we'll save you rebuttal time.

[00:25:27] Speaker 04:
And all four of you are arguing you'll exercise restraint when the yellow light goes on?

[00:25:32] Speaker 01:
What's that, Your Honor?

[00:25:33] Speaker 01:
I missed that.

[00:25:35] Speaker 01:
Exercise restraints?

[00:25:36] Speaker 01:
Yes, I will.

[00:25:37] Speaker 01:
When the yellow light goes on?

[00:25:38] Speaker 01:
Oh, when the yellow light goes on.

[00:25:39] Speaker 01:
Yes, ma'am.

[00:25:40] Speaker 01:
Absolutely.

[00:25:40] Speaker 04:
Whatever Mr. Jones decides to do.

[00:25:42] Speaker 01:
I'm a military man.

[00:25:42] Speaker 01:
I exercise great restraints when I'm placed in these conditions.

[00:25:45] Speaker 01:
I'm just going to give you my comment.

[00:25:46] Speaker 01:
I think it's a terrible idea to have four people arguing.

[00:25:49] Speaker 01:
Yes, Your Honor.

[00:25:50] Speaker 01:
Let me clarify how we are having this structure.

[00:25:53] Speaker 04:
Yes, before we start, tell us how you've divided up the argument.

[00:25:56] Speaker 01:
So my intent would be that I would be handling the two threshold issues that we think dispose of the entire appeal.

[00:26:02] Speaker 01:
That is, the one that has already been touched on with respect to the final resolution of identical issues, admittedly identical issues, in the 298 patent final written decisions.

[00:26:12] Speaker 01:
and how that precludes this appeal.

[00:26:14] Speaker 01:
And the second is that even if Focal were to convince you that their claim construction was correct and that the board erred in its claim construction, the board has already found that the claims are invalid under their claim construction.

[00:26:25] Speaker 01:
So those were the two primary issues.

[00:26:26] Speaker 04:
You're going to substance, but we just need to know how you're dividing the argument.

[00:26:29] Speaker 01:
And I think the government is here.

[00:26:31] Speaker 01:
Council for Intervener has reserved three minutes to address constitutionality issues.

[00:26:35] Speaker 01:
And the Council for WIMACS, Ms.

[00:26:38] Speaker 01:
Guski and Mr. Ricketti are both here in the event that there is an issue that appeals directly to their individual IPRs for their individual client.

[00:26:48] Speaker 01:
If there's a specific question about those, because I was representing wide open West technology in one group of the IPRs.

[00:26:58] Speaker 01:
And then these were each in individual IPRs that were separately resolved.

[00:27:01] Speaker 01:
So that's why they're here.

[00:27:03] Speaker 04:
Okay.

[00:27:04] Speaker 01:
Thank you.

[00:27:04] Speaker 01:
We may not get to any of those questions.

[00:27:06] Speaker 01:
You may not have any questions on those issues, but they're here to present that.

[00:27:10] Speaker 04:
Okay.

[00:27:10] Speaker 04:
Proceed.

[00:27:12] Speaker 01:
Thank you, Andrew.

[00:27:12] Speaker 01:
So on the issue that you've already raised with Appellants' Council, we think that the Federal Circuit's recent decision in PAPS is controlling on the facts of this case.

[00:27:23] Speaker 01:
And I know, Judge Dyke, you were on that panel, but these are the PAPS case, three IPRs of three different but related same specification patents.

[00:27:32] Speaker 01:
same across the board, and materially similar plan construction and validity issues with respect to the teaching of a particular reference in all three patent IPRs, same.

[00:27:42] Speaker 01:
The PTAB decided similar issues in a similar way in those three separate final written decisions, also the same here.

[00:27:50] Speaker 01:
And the court in PAPS found that the patent owner's voluntary action to dismiss the appeals of two of the patent's final written decisions rendered such decisions final.

[00:28:03] Speaker 01:
So the only distinction in our case is that the patent owner's voluntary act was to forego its opportunity to appeal the 298 final written decisions.

[00:28:12] Speaker 01:
And the legal consequence is identical.

[00:28:14] Speaker 01:
The challenge claims in the two PAPS patents are dead.

[00:28:18] Speaker 01:
The challenge claims in the 298 patent are dead.

[00:28:21] Speaker 01:
In what the court found in PAPS was that the court held that the patent owner was immediately precluded from contesting the same issues in the last patent IPR appeal.

[00:28:32] Speaker 01:
That result is controlling on the facts of this case.

[00:28:37] Speaker 01:
The court distinguished the Cygnus and Inovad line of cases by saying, these are distinct IPRs, which were resolved separately in separate final written decisions.

[00:28:46] Speaker 01:
That result is also controlling.

[00:28:48] Speaker 01:
Now, Palace Council does raise that we may have inartfully used the term consolidated in our briefing.

[00:28:54] Speaker 01:
We're not using that term in the context as it's used in collateral estoppel precedent.

[00:29:00] Speaker 01:
There were coordination for efficiencies done, but as Pabst noted, these are nine separate final written decisions.

[00:29:09] Speaker 01:
They've conceded that.

[00:29:12] Speaker 01:
Yes.

[00:29:12] Speaker 01:
What I would say is the other question that you asked, which I think was a very astute question, was related to a policy consideration of this.

[00:29:19] Speaker 01:
And in issue preclusion, both efficiency and consistency are paramount considerations.

[00:29:26] Speaker 01:
And there is a number, and we have cited some of these cases, the Nestle case, the Ohio Wood case, and PAPST, that talk about the importance of consistency.

[00:29:36] Speaker 01:
Those precedents are controlling on this panel.

[00:29:39] Speaker 01:
Here, by statute,

[00:29:41] Speaker 01:
35 USC 318B and this court's precedent, the moment that Focal's opportunity to file an appeal expired in February of 2018, the challenge claims of that patent were forever and finally invalidated based on the board's final written decision on the identical appealed issues.

[00:30:02] Speaker 01:
So the practical matter is that neither the PTAB anymore nor this court have jurisdiction over the challenge claims of the 298 patent.

[00:30:11] Speaker 01:
So what the Cygnus line and the Innovad line of cases are dealing with is that you have every patent at issue is appealed.

[00:30:21] Speaker 01:
It's dealing with different parties.

[00:30:22] Speaker 01:
This case, the 298 patent was not appealed.

[00:30:24] Speaker 01:
That has legal consequences.

[00:30:26] Speaker 01:
And the policy consideration is that that final written decision is part of the file history.

[00:30:31] Speaker 01:
It is a part of the file history of all of these patents.

[00:30:34] Speaker 01:
And so by Focal asking you to

[00:30:37] Speaker 01:
to ignore that, is really taking a second bite at the apple.

[00:30:42] Speaker 01:
Because they're saying, with respect to the unchallenged claims of the 298 patent, as well as the claims of all the related patents, we would have a file wrapper which has public notice, which everyone is relying on when they're construing claims of related patents.

[00:30:57] Speaker 01:
And they're asking you to enter an inconsistent decision with that.

[00:31:02] Speaker 01:
And that wreaks havoc on the public notice function.

[00:31:06] Speaker 01:
And so we think, and again, from an efficiency standpoint, let's be clear.

[00:31:12] Speaker 01:
All Falco had to do was add the 298 ban, and make a few citations to that record, which were non-duplicative.

[00:31:21] Speaker 06:
That's not the point.

[00:31:22] Speaker 06:
The point is that they don't have to pursue it if they don't want to.

[00:31:26] Speaker 06:
They don't have to pursue it to avoid cloudless topple.

[00:31:29] Speaker 06:
All they have to do is get you to agree that they can abandon it without suffering consequences.

[00:31:36] Speaker 01:
Yes, Your Honor, they could have canceled, I think in PAPS they also noted the fact that they could have canceled the claims prior to, you know, at some point prior to the final written decision issuing.

[00:31:44] Speaker 01:
I mean, there were a number of things that they could have done that they did not do.

[00:31:47] Speaker 01:
So we think that there's controlling precedent not only in PAPS, but also on

[00:31:52] Speaker 01:
the consistency that this board has, and that consistency has immediate issue-proclusive effect for the same, when you involve the same patent, when you involve unchallenged claims in the same patent.

[00:32:03] Speaker 04:
But there's also controlling precedent that these are different inventions.

[00:32:06] Speaker 04:
That's why they're in separate patents.

[00:32:09] Speaker 04:
How do you overcome that?

[00:32:10] Speaker 01:
So, well, the patent owner has actually admitted, and that there is, on this particular issue... Why do they have the burden?

[00:32:19] Speaker 01:
Why do they have that burden?

[00:32:20] Speaker 04:
The office has required

[00:32:22] Speaker 04:
distinction, separation.

[00:32:25] Speaker 06:
I think the controlling precedent is does any... You're not arguing that the patents are the same, you're just arguing that one issue was the same which was decided in the earlier case.

[00:32:34] Speaker 06:
That is correct, Your Honor.

[00:32:35] Speaker 06:
That is what we're arguing.

[00:32:37] Speaker 01:
I don't know if the question deals with, does it alter the material question of invalidity?

[00:32:43] Speaker 01:
That is when you're looking at, let's say, dependent claims, when you're looking at different patents.

[00:32:48] Speaker 01:
And in this case, we have shown, I think our brief shows in great detail.

[00:32:53] Speaker 01:
And on the reply brief, they do acknowledge that we are showing that on this particular issue, there is no material difference.

[00:33:01] Speaker 04:
Well, we already have the premise that this is a different invention.

[00:33:06] Speaker 04:
And that these are factual questions.

[00:33:11] Speaker 04:
When you have different patents, they're different inventions.

[00:33:13] Speaker 01:
Understood, Your Honor.

[00:33:15] Speaker 01:
And had the patent owner presented in the underlying IPRs a different argument with respect to patentability of any of those claims, it may have been different.

[00:33:25] Speaker 01:
We may have had competing differences, but they chose on their own to identify the identical

[00:33:31] Speaker 01:
claim term, the identical issue, make the identical argument across all the IPRs.

[00:33:36] Speaker 01:
They didn't do that because it was consolidating.

[00:33:37] Speaker 04:
Then you're saying that this is an admission rather than an estoppel.

[00:33:41] Speaker 01:
I don't, well, the, I don't, we don't need to rely on any admission.

[00:33:46] Speaker 01:
We're relying on our, on our briefs.

[00:33:47] Speaker 01:
We've shown that is, there is no material difference between these, between this, for this issue of these plaintiffs.

[00:33:54] Speaker 06:
But they admit that you are reliant.

[00:33:55] Speaker 06:
They admitted it.

[00:33:56] Speaker 01:
They admitted it since the beginning.

[00:33:57] Speaker 01:
Well, but I think Judge Newman's point is, is whether I need, whether I'm relying on their admission, and I'm not.

[00:34:02] Speaker 01:
I'm, I'm relying on our, the proof, as it has existed.

[00:34:06] Speaker 04:
This is perhaps a larger problem than in this case.

[00:34:09] Speaker 04:
We've seen in this case and in the prior case, there are restriction requirements.

[00:34:14] Speaker 04:
There are multiple applications.

[00:34:16] Speaker 04:
There are multiple petitions after the office has granted multiple patents on which the patent owner has relied.

[00:34:24] Speaker 04:
And now we are in the

[00:34:29] Speaker 04:
argument phase that there were a lot of things that were done wrong in the office.

[00:34:34] Speaker 04:
They shouldn't have granted the patents.

[00:34:35] Speaker 04:
They shouldn't have done this or that.

[00:34:38] Speaker 04:
The board overrules its own, its own rulings of the patent office.

[00:34:45] Speaker 04:
And here we are with possibly conflicting results.

[00:34:52] Speaker 04:
Issues decided differently in different cases by different boards, sometimes by different

[00:34:58] Speaker 04:
judges on appeal or in the district court.

[00:35:02] Speaker 04:
So these are perhaps larger questions than those involved here, which you may be able to narrow to particular cases, but we can use your help.

[00:35:14] Speaker 01:
Yes, sir.

[00:35:15] Speaker 01:
I would say that I think that there may be broader issues, but the facts of this case are controlled by precedent like PAPST and precedent that when you don't have material differences between claims, when they do not alter the material question of invalidity of claims, that a final decision on an issue that adds immediate preclusive effect for copending actions for actions.

[00:35:42] Speaker 01:
There's a number of cases.

[00:35:45] Speaker 01:
More cases than we even cited in our brief.

[00:35:48] Speaker 01:
And I can provide you with those cases if you'd like me to.

[00:35:54] Speaker 01:
The Nestle and Ohio-Wood case are on this point.

[00:35:56] Speaker 01:
The Sovereign Software case.

[00:36:00] Speaker 01:
And Judge Deck, you were on most of these cases.

[00:36:03] Speaker 01:
But the Sovereign Software LLC versus Victoria's Secret, Direct Management, 778 Fed 3rd, 1311.

[00:36:11] Speaker 01:
Federal Circuit 2014.

[00:36:12] Speaker 01:
And the XYLC versus TransOVA Genetics LC 890, Fed 3rd, 1282.

[00:36:20] Speaker 01:
That's Federal Circuit, also 2018.

[00:36:24] Speaker 01:
And Judge Newman, you were on that panel with Judge Dyke.

[00:36:27] Speaker 01:
These are controlling precedent as to the immediate preclusive effect that is implicated when you have

[00:36:35] Speaker 01:
when you have a final decision.

[00:36:37] Speaker 01:
So in our case, we have a final decision.

[00:36:39] Speaker 01:
There's no dispute over that.

[00:36:41] Speaker 01:
The statute governs that when the time for appeal is expired, that decision is rendered final.

[00:36:47] Speaker 01:
So the legal consequences of that are that it has an immediate preclusive effect across that issue.

[00:36:56] Speaker 04:
I thought you were telling us that the facts were specific to this case.

[00:37:01] Speaker 04:
Now you tell us that there are broad consequences from unrelated facts?

[00:37:06] Speaker 01:
There are broad consequences.

[00:37:07] Speaker 01:
There are broad policy considerations, Your Honor, with having inconsistent decisions.

[00:37:12] Speaker 01:
When you have an identical issue that is finally resolved, that this court does not have jurisdiction over that issue with that patent, then to have an inconsistent decision that would be rendered in that file history

[00:37:26] Speaker 04:
Why is this jurisdiction?

[00:37:28] Speaker 04:
This isn't a matter of jurisdiction.

[00:37:30] Speaker 01:
Well, for the challenge claims of the 298 patent are forever and finally invalidated.

[00:37:35] Speaker 04:
Jurisdiction means you can't consider it at all.

[00:37:38] Speaker 01:
I'm not saying that you... No, we need to consider it for an unstoppable reason.

[00:37:42] Speaker 04:
Then why is it a matter of jurisdiction?

[00:37:47] Speaker 01:
It can be considered for a preclusive effect, but under PAPST in those controlling cases, it needs to be given.

[00:37:55] Speaker 01:
Once the issue is decided, then the appeal becomes moot.

[00:38:02] Speaker 04:
Well, all right.

[00:38:03] Speaker 04:
Are you ready to yield to your colleagues?

[00:38:07] Speaker 04:
Or do you wish to use their time?

[00:38:11] Speaker 01:
I cede my time to Mr. Tyson.

[00:38:15] Speaker 04:
You can decide if you wish to receive their arguments or not.

[00:38:24] Speaker 01:
Really, the second issue I just want to touch on is on this claim construction issue.

[00:38:28] Speaker 01:
The board, we believe, and I think there have been some very astute questions that have been asked, that they correctly found that there was no clear and unmistakable disclaimer in the specification of a controller coupled to a switching facility.

[00:38:41] Speaker 01:
Indeed, we were looking at a particular page

[00:38:44] Speaker 01:
of the file history.

[00:38:46] Speaker 01:
And when the patent order wanted to claim a PSTN tandem switch and a PSTN, this is in our red brief, page 53, footnote 15, we identified three citations in this same amendment where they identified claims that said,

[00:39:04] Speaker 01:
They limited the network to the PSDN.

[00:39:05] Speaker 01:
They limited a switching facility to a PSDN tandem switch.

[00:39:10] Speaker 01:
But on this issue, even if they were to convince the court that the board aired in its claim construction, the board decided that Focal's proposed amended claims, which Focal explicitly said were amended to incorporate the disclaimer

[00:39:31] Speaker 01:
The board found that those claims were invalid based on the Archer reference teaching the disputed limitation.

[00:39:37] Speaker 01:
There's a number of citations in our brief to this point.

[00:39:41] Speaker 01:
Focal's reply brief does not even address any of those citations.

[00:39:45] Speaker 01:
They're entirely silent.

[00:39:46] Speaker 01:
On pages 10 and 13, they go through a number of citations.

[00:39:50] Speaker 01:
However, they don't reference any of the board's final decisions on the amended claims.

[00:39:56] Speaker 01:
And other notably is that Focal did not appeal.

[00:39:59] Speaker 01:
these adverse determinations on the amended claims.

[00:40:03] Speaker 01:
So those issues are final.

[00:40:05] Speaker 01:
So on this point, it is another controlling point, because what Focal has done is their briefing is not relying on the substantial evidence standard.

[00:40:15] Speaker 01:
They're not putting all of the evidence before the board.

[00:40:18] Speaker 01:
We tried to do that in our brief we had.

[00:40:20] Speaker 01:
We laid out for you, really, the evidence and arguments in multiple pages.

[00:40:24] Speaker 01:
But if you were to note and look at their reply brief, they do not cite anywhere appendix 492 to 495.

[00:40:32] Speaker 01:
or appendix 435 to 436.

[00:40:35] Speaker 01:
And those are where the board, as we had put in our briefing, had rendered the claims invalid.

[00:40:42] Speaker 01:
So unless the panel has any other questions on any issues,

[00:40:50] Speaker 01:
That's all I have.

[00:40:50] Speaker 04:
Well, of course there are questions.

[00:40:53] Speaker 04:
We need to decide the case.

[00:40:55] Speaker 04:
All right.

[00:40:55] Speaker 04:
And so you've exhausted your time.

[00:40:58] Speaker 04:
Is there anything critical that any of the three of you need to tell us?

[00:41:07] Speaker 07:
Is the government going to tell us that it's constitutional?

[00:41:11] Speaker 04:
Yes.

[00:41:12] Speaker 04:
All right.

[00:41:13] Speaker 04:
You have two minutes on the Constitution.

[00:41:21] Speaker 00:
Thank you, Your Honor.

[00:41:22] Speaker 00:
I just wanted to address briefly the point that the other side made on our forfeiture argument.

[00:41:28] Speaker 00:
We've argued that the constitutional arguments are forfeited because they weren't raised before the agency.

[00:41:33] Speaker 00:
And I just want to be clear that the Supreme Court has said in Thunder Basin, which is 510 U.S.

[00:41:37] Speaker 00:
200, and in Elgin, which is 567 U.S.

[00:41:40] Speaker 00:
1, that there is no categorical bar to an agency deciding a constitutional issue.

[00:41:47] Speaker 00:
And also in Elgin, the Supreme Court recognized that even if the agency couldn't remedy the constitutional problem, there are still reasons to require litigants to raise issues before the agency because

[00:41:57] Speaker 00:
The agency can opine on threshold and related issues.

[00:42:00] Speaker 00:
And lastly, I just wanted to point out that now they seem to be making a takings argument.

[00:42:05] Speaker 00:
And that is not an argument that they briefed at all in their opening brief.

[00:42:08] Speaker 00:
So we think that argument is doubly forfeited.

[00:42:11] Speaker 00:
And I'm happy to address any questions that the panel has on the merits or on the forfeiture issues.

[00:42:19] Speaker 00:
Otherwise, we'll rest on our briefs.

[00:42:20] Speaker 00:
Thank you, Your Honor.

[00:42:26] Speaker 04:
Okay, you can decide how to use your five minutes.

[00:42:31] Speaker 02:
Thank you, Your Honor.

[00:42:35] Speaker 02:
As to all the cases that Mr. Tyson raised regarding collateral estoppel, they can all be distinguished by NRA's Cygnus if the Federal Circuit finds that this was a consolidated nature.

[00:42:49] Speaker 02:
NRA's Cygnus held that due to the consolidated nature of that multi-district litigation,

[00:42:56] Speaker 02:
that that was treated as a single action.

[00:42:59] Speaker 02:
So even though you had, in this situation, 298 IPR final written decisions coming out first, that was still part of the final, that was still part of the same action as all nine IPRs.

[00:43:12] Speaker 02:
And NRA Cigna says, if you do find this was a consolidated proceeding, that it's only treated as one action.

[00:43:20] Speaker 02:
Even though you may have, in the NRA Cigna, there's nine or 10 or so

[00:43:26] Speaker 02:
different proceedings involved in that case, similar to ours.

[00:43:31] Speaker 02:
So all the body of case law Mr. Tyson cited can be distinguished on the consolidated nature of these nine IPRs as being treated as one action.

[00:43:41] Speaker 02:
As to the second point that he raised, that we never made any arguments regarding obviousness and substantial evidence, I would respectfully disagree.

[00:43:53] Speaker 02:
Page 14 of our reply brief

[00:43:56] Speaker 02:
We have a global issue there.

[00:43:57] Speaker 02:
We say, this is what the board did improperly throughout its invalidity analysis.

[00:44:04] Speaker 02:
Filling in the gaps of a reference with knowledge of a person of worrying skill in the art in the manner the board used by the board is not proper.

[00:44:13] Speaker 02:
And there we say that that applies not only to Archer, but to all other obviousness holdings.

[00:44:19] Speaker 02:
That's exactly what the final written decisions did.

[00:44:22] Speaker 02:
What we're talking about, based on the proper client construction, connecting it to a tandem switch or any other switch except for an edge switch, none of that's disclosed in any of the prior references in any of the grounds.

[00:44:34] Speaker 02:
So the board did try and fill in these gaps there, did it using an improper client construction that was overly broad.

[00:44:41] Speaker 02:
Or in the case of the motions to amend, they did this improper analysis where they said,

[00:44:46] Speaker 02:
Oh, a poster could fill in the gaps.

[00:44:48] Speaker 02:
But none of the prior art actually discloses the feature.

[00:44:54] Speaker 02:
So Your Honors, if you don't have any other questions, then we'll rest our case.

[00:44:59] Speaker 02:
Thank you.

[00:45:00] Speaker 02:
Thank you.

[00:45:00] Speaker 02:
We appreciate it.