[00:00:35] Speaker 00: Okay, the next argued case is number 18, 1805, IPR Licensing Incorporated against ZTE Corporation. [00:00:44] Speaker 00: Mr. Bell. [00:00:46] Speaker 03: Thank you, Your Honor. [00:00:47] Speaker 03: Good morning and may it please the Court. [00:00:49] Speaker 03: We're back up here again on another appeal from the Board decision. [00:00:53] Speaker 03: And the Board's remand decision was problematic with error for two primary reasons. [00:00:59] Speaker 03: First, the Board adopted a theory of motivation to combine [00:01:04] Speaker 03: that was found nowhere in the petition, not in the ground on which it was instituted, the sole ground, or in fact anywhere. [00:01:12] Speaker 03: And that is inconsistent with the statutory scheme of the AIA, as put forth by the Supreme Court in decisions like SAS and this court's subsequent decisions in Acceleration Bay and others. [00:01:25] Speaker 03: Second, at a minimum, the board denied IPRL's procedural protections [00:01:32] Speaker 03: by adopting this motivational theory on remand, incorporating a prior art reference, the draft UMTS standards, that were no part of the instituted proceedings. [00:01:46] Speaker 03: Those were used only for other things in other grounds that were not introduced. [00:01:51] Speaker 03: As you just stated the two points, what is the difference between them? [00:01:56] Speaker 03: They're very related, Your Honor. [00:01:58] Speaker 03: And here, I think, is the difference. [00:02:01] Speaker 03: says that the board must confine itself to the bounds of the petition. [00:02:07] Speaker 03: The second one allows for a little more flexibility if the argument is sufficiently raised in the petition, but the board wants to rely on additional evidence. [00:02:17] Speaker 03: For example, in the Roel Obama case, when the board relied on the petitioner or the patent owner's own evidence against it, all that was required there was APA notice. [00:02:27] Speaker 02: And what about the genzyme? [00:02:29] Speaker 02: Is that the driver? [00:02:31] Speaker 03: Gensheim, yes, Your Honor. [00:02:32] Speaker 03: So that one, the question was whether the board had to recite the evidence in the institution decision that it was ultimately going to rely on in the final decision. [00:02:43] Speaker 02: So that one didn't involve a question about whether the particular evidence was relied on in the petition for the proposition eventually needed to be established under the relevant ground. [00:02:58] Speaker 03: Correct. [00:02:58] Speaker 03: Correct. [00:02:59] Speaker 00: But they do say that the reference was there. [00:03:03] Speaker 00: It was there in another context. [00:03:04] Speaker 00: There was no surprise. [00:03:06] Speaker 03: Yes, thank you, Your Honor. [00:03:07] Speaker 03: And I think it helps to look exactly at what those references are to see why they were not intended to apply a motivation to combine in this context. [00:03:15] Speaker 03: For ground one. [00:03:16] Speaker 03: For ground one. [00:03:17] Speaker 03: And I think the best place to see that is where petitioning ground one sets forth its motivation to combine. [00:03:23] Speaker 03: And that's found at pages A312 to 314. [00:03:27] Speaker 03: And what you'll see there is it talks at length about combining the GPRS with Juanda references. [00:03:34] Speaker 03: It also talks about combining Juanda with the IEEE. [00:03:38] Speaker 03: It doesn't say word one about using the UMTS standards as this catalyst, this magic sauce, to provide the motion to combine. [00:03:49] Speaker 03: What it does also is it points to its discussion of the GPRS references, the documents, and the reason to combine those together. [00:03:56] Speaker 03: It again, though, doesn't mention the UMTS standards. [00:04:00] Speaker 03: If they wanted that to be part of ground one, that would have been the place, I submit, to do it. [00:04:07] Speaker 03: In addition, they also rely on several references to the BIMS declaration. [00:04:12] Speaker 03: Now, our contention is the arguments need to be in the petition, and if they're not there, [00:04:15] Speaker 03: the Bims' declaration can't save it. [00:04:18] Speaker 03: But the Bims' declaration itself does not include this theory of motivation. [00:04:22] Speaker 03: And again, I would point the court to Dr. Bims' own explanation of the motivation to combine. [00:04:28] Speaker 03: And this is at paragraphs 165 to 172 of his declaration. [00:04:32] Speaker 03: And it's found at A744 to 46. [00:04:36] Speaker 03: And that first paragraph is one that both ZTE and the board focus on a lot. [00:04:40] Speaker 03: It's paragraph 165. [00:04:42] Speaker 03: And it admittedly [00:04:43] Speaker 03: acknowledges that there are multiple prior art references across all three grounds. [00:04:47] Speaker 03: It lists them all as a kind of intro paragraph to its motivation to combine. [00:04:52] Speaker 03: And it says these are all sort of in the same field and there could be some mixing and matching going on between them. [00:04:57] Speaker 03: But then it goes on to say exactly what mixing and matching it's talking about. [00:05:01] Speaker 03: And nowhere in there in the subsequent paragraphs, 166 to 172, does it ever provide this theory about using UMTS as the catalyst. [00:05:12] Speaker 03: What it does say at that final paragraph, 172, the only place it describes what UMTS is used for, it says it's used to be combined with IEEE. [00:05:23] Speaker 03: And that was another ground. [00:05:24] Speaker 03: So Dr. Bim's own testimony, what he put forth as the motivation to combine, nowhere states this theory. [00:05:32] Speaker 03: And beyond that, Your Honor mentioned other references. [00:05:34] Speaker 03: There are additional background references in the petition to the UMTS standard. [00:05:40] Speaker 03: But that makes sense because it was one of the other grounds. [00:05:43] Speaker 03: So in setting up all of the grounds, the petitioner summarized the background evidence and prior art [00:05:50] Speaker 03: but then ultimately did not rely on UMTS. [00:05:52] Speaker 03: It's not mentioned once in ground one, including in ground one's motivation to combine. [00:06:00] Speaker 02: Can I segue here to what you know is a big question here? [00:06:09] Speaker 02: Why doesn't ground two and ground three go back under SAS? [00:06:12] Speaker 03: Sure. [00:06:13] Speaker 03: So for a couple of reasons, Your Honor. [00:06:14] Speaker 03: First, ZTE didn't cross appeal. [00:06:18] Speaker 03: So the ruling of the board is? [00:06:21] Speaker 02: What authority do you have for the cross-appeal A, requirement applying here, and B, even if it would ordinarily apply not being subject to a change of law exception of the very sort that we have recognized in a dozen cases, not the cross-appeal context, with one exception, which we'll get to, one exception that I know of. [00:06:45] Speaker 02: You may know of others. [00:06:48] Speaker 02: that SAS was a big enough change of law that a whole bunch of normal, very strict procedural rules about preserving things came within an exception, including you've got to make the argument in the opening brief and so on. [00:07:05] Speaker 02: The Supreme Court has said on cross appeals that it's [00:07:08] Speaker 02: He has said repeatedly, we're not going to decide if it's a jurisdictional rule, but it's really quite strong. [00:07:14] Speaker 02: And so is the rule that you need to make your arguments in the opening brief. [00:07:18] Speaker 02: I found only one case, a Ninth Circuit case, that said, well, the cross-appeal rule can actually be subject to a change of law exception. [00:07:29] Speaker 02: Why? [00:07:30] Speaker 02: And I'm eliding a threshold question of whether it even applies here, which we might [00:07:35] Speaker 02: get to, but why doesn't that apply here? [00:07:37] Speaker 02: And I guess just the final point, you probably are aware that last fall in the Wonderland case, this argument was presented to us about no cross-appeal, and we denied petition for rehearing on that ground. [00:07:50] Speaker 02: It's not presidential, but we did it. [00:07:52] Speaker 03: So I'll try to break down your honor's question. [00:07:56] Speaker 03: You first asked if there's any authority for requiring cross-appeal here. [00:07:59] Speaker 03: I would point the court to a recent decision [00:08:03] Speaker 03: The statement in Hamilton Beach. [00:08:05] Speaker 03: Hamilton Beach, exactly. [00:08:07] Speaker 03: And so that suggests that it is jurisdictional. [00:08:09] Speaker 02: No, it doesn't suggest it's jurisdictional. [00:08:11] Speaker 03: Or suggests it's a strong rule. [00:08:13] Speaker 03: It's a strong rule. [00:08:14] Speaker 03: And I think the case it relies on in there did suggest that it was jurisdictional. [00:08:19] Speaker 02: Right, but the Supreme Court has said a couple of times, maybe most recently in green law, we do not decide whether it's jurisdictional [00:08:25] Speaker 02: Only that it's very strong. [00:08:27] Speaker 03: I would say if it's jurisdictional Then it would not be subject to the change in law rule if it if it is not jurisdictional Then I think it would I think it would but I think that doesn't matter here Well under the waiver doctrine that this court has consistently applied post SAS So what this court has said post SAS is if you want to raise this you can actually raise it on appeal You didn't have to raise it before the board precisely because of this change of law issue But what you have to do is raise it promptly [00:08:55] Speaker 03: And promptly, in this court's case law, is somewhere between nine and 30 days after SAS itself. [00:09:02] Speaker 03: And? [00:09:03] Speaker 02: Well, I guess that argument left me scratching my head a little bit. [00:09:07] Speaker 02: I mean, they raised it in the first filing where it would matter, namely their red brief. [00:09:14] Speaker 02: They certainly can make a conditional SAS argument. [00:09:17] Speaker 02: That is to say, we don't want it to go back if you're going to affirm the unpatentability of a single claim. [00:09:23] Speaker 02: on the ground that it's been found unpatentable on, that would be silly. [00:09:30] Speaker 02: So they make it in their very first place where it was going to become key, which is if we lose on, you know, on ground one, then of course we want ground two and ground three. [00:09:47] Speaker 02: Why is that too late? [00:09:48] Speaker 03: A couple of reasons, Your Honor. [00:09:49] Speaker 03: First, in the Baker Hughes case, which we cited in our brief, [00:09:52] Speaker 03: This court made a point of saying you didn't wait until the merits briefing. [00:09:56] Speaker 03: You filed a motion immediately. [00:09:58] Speaker 03: You sought to have it remanded and not put the court and the parties through the inefficiency of briefing and say, if that's what you want to do, then you should do it right away. [00:10:07] Speaker 03: And number two. [00:10:09] Speaker 03: But we didn't say that that was required, did we? [00:10:11] Speaker 03: Didn't say it was required. [00:10:12] Speaker 03: But in explaining why it was sufficiently prompt in that case, the court made a point of saying that, and I took that to have some weight. [00:10:21] Speaker 03: In addition, the Miland case, another recent case, we didn't cite it in our brief. [00:10:25] Speaker 03: But it's at 914F3 1377. [00:10:26] Speaker 03: This court said that waiting over six months is too long. [00:10:33] Speaker 03: It's not prompt. [00:10:34] Speaker 03: And so here, they waited seven months. [00:10:37] Speaker 03: And so I would submit, if they wanted this to go back and do yet another redo of this under this court's case law requiring promptness, [00:10:45] Speaker 03: I think the time to do that was somewhere between one and a month or two day after the SAS itself. [00:10:52] Speaker 03: That's what I would say to that. [00:10:53] Speaker 02: Do you make anything of the fact that their time for filing a cross-appeal had not run at the time the Supreme Court decided? [00:11:02] Speaker 02: I think that the board here issued its ruling in early March. [00:11:06] Speaker 02: The Supreme Court decided it was April 26. [00:11:09] Speaker 02: April 24, I think. [00:11:10] Speaker 02: April 24, right. [00:11:11] Speaker 02: and their 63 days would not have run until May 7th or 8th or something like that. [00:11:18] Speaker 02: So they could actually have filed a cross appeal during that time, but two weeks to figure all that out, if change of law as an exception really does apply seems perhaps a little harsh. [00:11:38] Speaker 03: And I think my answer would probably be similar under both circumstances. [00:11:42] Speaker 03: I didn't make a lot of that fact. [00:11:43] Speaker 03: I think if change of law is ultimately going to trump the rest, then whether it was before or after, it makes matters from a jurisdictional point of view. [00:11:53] Speaker 03: But again, assuming that's not jurisdictional, then I think change of law could overcome in both of those circumstances. [00:12:01] Speaker 03: But it certainly cuts a little bit more against them, I would say. [00:12:04] Speaker 00: So what's the remedy that you're seeking? [00:12:07] Speaker 03: We are seeking a reversal, Your Honor. [00:12:09] Speaker 03: We think reversal is appropriate here because there's nothing in the petition, no theory of motivation, that would get them over the hump. [00:12:16] Speaker 03: The motivation that this court found lacking last time was to implement a specific feature of GPRS, the PDP context, in the context of a completely different underlying protocol, the CDMA protocol. [00:12:28] Speaker 03: And nothing in the petition, as we were discussing earlier, sets forth that motivation, let alone sets forth UMTS as the kind of cornerstone of it. [00:12:36] Speaker 03: And I would point this court to the Irma Kim case. [00:12:39] Speaker 03: In that case, there was an APA violation. [00:12:42] Speaker 03: We cited it in our brief. [00:12:43] Speaker 03: We didn't discuss it extensively, but it is cited in the brief. [00:12:46] Speaker 03: And there was an APA violation. [00:12:48] Speaker 03: And the court said, we will reverse because the petitioner, the other party, didn't contest that reversal was the appropriate remedy. [00:12:56] Speaker 03: And I would submit here that ZTE hasn't contested that putting aside the SAS issue, that if you find error, either procedural or substantive, on ground one, that reversal is the appropriate remedy. [00:13:09] Speaker 03: And so the court doesn't have to make [00:13:11] Speaker 03: a general pronouncement about reversal always being appropriate to find that reversal is appropriate in this case, as we think it is. [00:13:19] Speaker 00: Okay. [00:13:19] Speaker 00: Let's hear from the other side. [00:13:21] Speaker 00: Thank you. [00:13:26] Speaker 00: Mr. Jones. [00:13:34] Speaker 04: Good morning, your honor. [00:13:35] Speaker 04: Brian Jones on behalf of ZTE. [00:13:37] Speaker 04: May it please the court? [00:13:39] Speaker 04: The board's decisions on remand should be affirmed because it was supported by substantial evidence. [00:13:44] Speaker 04: IPRL's procedural rights were not violated because it had an opportunity and, in fact, did respond to ZTE's motivation to combine. [00:13:53] Speaker 04: Therefore, the court should affirm the board's decision on remand. [00:13:58] Speaker 02: So my recollection, just tell me if I'm wrong, that what happened when we remanded this the last time [00:14:05] Speaker 02: There was a telephonic conference called pre-trial hearing or something about how we're going to proceed. [00:14:12] Speaker 02: And the discussion began. [00:14:15] Speaker 02: You said, well, we would like to tell you a little something about why we think there is the evidence that this court's opinion said we don't see the evidence for that, but the board should take a look. [00:14:30] Speaker 02: The other side said, well, if they're going to file something, [00:14:34] Speaker 02: then we're going to want to respond to it. [00:14:37] Speaker 02: And the members of the board panel said, we don't want prosy argument. [00:14:44] Speaker 02: We'd like lists, basically. [00:14:46] Speaker 02: And issued an order saying that the other side cannot respond without getting permission. [00:14:53] Speaker 02: And then you chose not to file anything, thereby depriving them of the ability to respond under the order. [00:15:01] Speaker 04: And that's generally correct that the board asked us to supply citations to where our arguments were in the brief and due to an administrative error. [00:15:11] Speaker 04: We never got the notice to file that brief and we did not file it for that reason. [00:15:17] Speaker 04: The reason that they weren't able to file their own citations is true that we did not file our own response, but that was not necessary. [00:15:25] Speaker 04: because there was substantial evidence in the record for the board to come to its initial conclusion. [00:15:30] Speaker 00: But there was our remand saying that there was not sufficient evidence. [00:15:36] Speaker 00: It does seem like a high-handed board procedure, whether it was something that a party put them up to, or they thought of it themselves. [00:15:51] Speaker 00: You can't enlarge the record. [00:15:54] Speaker 00: does seem strange being part of what is intended for these board procedures is that they will provide a substitute for the trial court, fairness and so on. [00:16:09] Speaker 00: And it does seem, doesn't it seem to you that when there is a remand for additional evidence that there should be no opportunity to provide that? [00:16:20] Speaker 04: Well, and the point was that the board was very cautious of not expanding the record, and they did not want the parties to make arguments, and wanted the parties to rely on what was in the briefs. [00:16:30] Speaker 04: And had we been able to file, or had we filed, we would have cited to the same evidence. [00:16:34] Speaker 04: You were able to file. [00:16:35] Speaker 02: I mean, you had this long call in which that was the whole subject. [00:16:39] Speaker 02: I don't really get the, you know, we were waiting for an invitation delivered. [00:16:43] Speaker 04: Well, there was an issue with where the notice was sent to, and it was sent to a prior email address at a prior firm. [00:16:50] Speaker 04: and we didn't get the notice. [00:16:52] Speaker 04: But again, I don't believe that impacts the record because the record would still be made up of evidence that was provided during the initial proceedings. [00:17:02] Speaker 02: So I think Mr. Bell's argument is not that there is no reference in the petition [00:17:11] Speaker 02: or supporting parts of the petition to the UMTS in particular, which is what the board on remand relies quite heavily on, but rather that that evidence was not asserted as part of the ground one theory. [00:17:29] Speaker 02: And it even more particularly was not asserted as part of the motivation to combine aspect of the ground one theory. [00:17:40] Speaker 02: And that's a real problem. [00:17:42] Speaker 04: And it was asserted in the petition on pages 26 and 27 of the petition. [00:17:46] Speaker 02: That's the background assertion? [00:17:48] Speaker 02: That's the background description? [00:17:50] Speaker 04: No, that's with respect to ground one and claim one with respect to... What's the JA site for what it is? [00:17:56] Speaker 04: Appendix 312 and 313, Your Honor. [00:17:59] Speaker 04: And 313 of the appendix is where it sets forth the alternative motivation [00:18:05] Speaker 04: with respect to GPRS that would have been an obvious design choice to a person with an ordinary skill in the art. [00:18:11] Speaker 01: I'm sorry, is UMTS referred to in the 312, 314 part? [00:18:17] Speaker 04: It refers to GPRS because that same teaching of the PDP context. [00:18:22] Speaker 02: Isn't that what we had last time, as we said, the GPRS [00:18:26] Speaker 04: doesn't actually know that was with respect to jawanda's teaching that suggested jawanda could be implemented using gprs or cdma and this court found that it was not sufficient to rely on that teaching alone [00:18:40] Speaker 04: And this motivation is the alternative to Juanda, which said it would have been an obvious design choice to implement the PDP context of GPRS. [00:18:50] Speaker 04: And one of Skill in the Art would have known that the PDP context would have provided the benefits and features of maintaining a communication session when roaming between networks. [00:19:03] Speaker 04: And the reason that Dr. Bim's background testimony on this is important [00:19:06] Speaker 04: is that is what he describes when reviewing the scope and content of the prior art, that those who design prior art systems based on standards would have looked to these standards in order to understand the features. [00:19:20] Speaker 04: And he testified that one would have found the PDP context from GPRS to be beneficial. [00:19:26] Speaker 04: And I think the reason that you asked your first question about why these two issues are the same is that in order to win this appeal, IPRL has to suggest that the linchpin of the case is draft UMTS. [00:19:39] Speaker 04: And that's not the case because the PDP context and GPRS were known to provide these benefits. [00:19:46] Speaker 04: And an ordinarily skilled artisan designing a cell phone [00:19:50] Speaker 04: would have looked to those standards. [00:19:51] Speaker 04: And that's what the board pointed to. [00:19:53] Speaker 04: And that's what was said in the petition. [00:19:55] Speaker 04: IPRL had an opportunity to respond and, in fact, did respond to this very argument by suggesting that it was impossible. [00:20:03] Speaker 04: And that was the error that the court made or the board made in its first decision. [00:20:07] Speaker 04: It ran right to the dispute that the parties had about impossibility. [00:20:11] Speaker 04: And it filled its decision this time without skipping that initial step and said, a designer designing a cell phone [00:20:19] Speaker 04: who's faced with the problem of switching networks, would look to teachings in GPRS that provide maintaining a communication session, which is what the standard did. [00:20:29] Speaker 04: Draft UMTS further completes that analysis because someone actually did it in the prior art. [00:20:38] Speaker 00: You're discussing the merits as it was before the court on the first time around. [00:20:45] Speaker 00: And here we have a decision in which we said that you haven't shown sufficiently motivation. [00:20:52] Speaker 00: I mean, it's entirely what's before us now is primarily a matter of procedure. [00:20:58] Speaker 00: Is it not? [00:20:59] Speaker 00: The prior record has already been reviewed and disposed of. [00:21:04] Speaker 04: That's true. [00:21:05] Speaker 04: And the board affirmed that all of the claims except for claim eight were unpatentable. [00:21:09] Speaker 04: And this court remanded so that the board could consider its decision with respect to claim eight. [00:21:17] Speaker 04: The problem with its decision in the first instance is that they jumped right to the dispute between the parties about whether it would have been obvious, or sorry, the dispute between the parties as to whether it would be impossible to make the combination. [00:21:32] Speaker 04: And the decision on remand was meant to address whether it would have been obvious to first make that combination [00:21:39] Speaker 04: not just whether it would have been impossible. [00:21:41] Speaker 00: That wasn't the basis of our remand. [00:21:43] Speaker 00: Our remand related to motivation to combine. [00:21:47] Speaker 04: It did relate to motivation to combine and that's exactly what the board did on remand was identify the motivation to combine supported by and crediting the testimony of Dr. Bims. [00:21:59] Speaker 00: On the same record that we had previously rejected. [00:22:03] Speaker 04: on the same record, but not on the same evidence that the board articulated in its reasoning. [00:22:08] Speaker 04: The problem with the first decision is they articulated only the dispute between the parties, which was related to impossibility of the combination, and jumped right past the motivation to comply. [00:22:18] Speaker 04: They corrected that error on remand by relying on all of the evidence in ground one of the petition, [00:22:25] Speaker 04: all of the evidence in the background that supported the motivation that it would have been obvious to a designer looking at cellular systems at the time to use the PDP context as articulated by GPRS and as confirmed in a CDMA system like draft UMTS. [00:22:43] Speaker 04: The draft UMTS is a compelling motivation but it's not the only evidence that the board relies on for its decision. [00:22:51] Speaker 04: And so it's not necessary the decision in terms of motivation to combine to rely on just the draft UMTS standards. [00:23:01] Speaker 04: It's the entire scope and content of the prior art, not just that one reference. [00:23:08] Speaker 04: And if I could address very quickly SAS Institute, [00:23:13] Speaker 04: You are correct that this is an alternative argument, and we raised it in our brief for the very first time that was available to us. [00:23:22] Speaker 02: No, that's not true. [00:23:23] Speaker 02: It's not the first time that was available. [00:23:25] Speaker 02: You had seven months of available electronic email service to file a motion or something. [00:23:34] Speaker 04: That is correct. [00:23:35] Speaker 04: And this court has, however, never found waiver of an issue when there has been a substantial change in law. [00:23:42] Speaker 04: during the pendency of the appeal. [00:23:45] Speaker 04: IPRL filed its appeal on April 11th, and SAS Institute came out after that. [00:23:51] Speaker 02: And all of the cases- I'm right, right, that you actually had two weeks after April 24th in which you could have actually filed a notice of cross-appeal. [00:24:01] Speaker 04: I haven't calculated the days, but there was- 63 plus following what March 3rd was the- So yes, there was a period of time in which we could have filed a cross-appeal. [00:24:13] Speaker 04: But this court has never found that time period would affect your cross-appeal rights, sorry, your rights to make an alternative argument when there has been an intervening change in law during the pendency of the appeal. [00:24:25] Speaker 02: Do you know any case law on that? [00:24:26] Speaker 02: The only thing that I found was one passing reference in a published Ninth Circuit decision and then a more recent non-precedential Ninth Circuit decision. [00:24:35] Speaker 02: And basically, I couldn't find anything else about [00:24:39] Speaker 02: the interaction between change of law and the cross-appeal rule. [00:24:43] Speaker 04: I'm not aware of any other case, Your Honor. [00:24:46] Speaker 04: I will say that Mylan is instructive. [00:24:49] Speaker 02: What happened in Mylan? [00:24:50] Speaker 04: In Mylan, the appellant waited until his reply argument to raise the possibility of a remand in that case. [00:24:58] Speaker 02: In that case, the court found that that was far too long. [00:25:05] Speaker 04: All of the briefing had concluded at that point. [00:25:08] Speaker 04: At the time SAS Institute had come out, all of the briefing was already concluded. [00:25:15] Speaker 04: And rather than raising it even in their primary argument or filing a notice of supplemental authority, Mylan chose to wait until its reply argument at the Federal Circuit. [00:25:27] Speaker 02: Oh, the rebuttal oral argument. [00:25:29] Speaker 02: Correct. [00:25:29] Speaker 02: I'm sorry. [00:25:30] Speaker 04: Correct. [00:25:30] Speaker 04: And so in that case, it was too long because there were opportunities for [00:25:35] Speaker 04: the appellant to file a notice of supplemental authority. [00:25:40] Speaker 04: Here, ZTE placed it in its opening brief at the first instance of this pending appeal, and SAS Institute had been decided during the pendency of the appeal. [00:25:51] Speaker 04: And I also think that fairness mandates that if reversal [00:25:56] Speaker 04: Warranted as to ground one which we believe it is not warranted because there's more than substantial evidence that goes beyond draft UMTS but fairness mandates that because IPRL has tied this draft UNTS standard to the linchpin of our case with respect to ground one yet they want to ignore it with respect to grounds two and three and that's just not appropriate in these circumstances and I'm am I remembering right that the [00:26:24] Speaker 02: explanation the board gave when denying institution on grounds two and three was simply that they were redundant. [00:26:34] Speaker 04: That's correct. [00:26:34] Speaker 04: There was a redundancy argument that was made by IPRL. [00:26:38] Speaker 02: Which, if UMTS is a big deal, that seems not so redundant. [00:26:42] Speaker 02: And I realize it's not the same. [00:26:45] Speaker 02: It's not with Jacinta or whatever the different other piece of prior. [00:26:50] Speaker 04: It is a different document that describes the motivation to combine. [00:26:53] Speaker 04: And the key to the GPRS standards is that one of ordinary skill in the art would have known that there's a benefit to using the PDP context from GPRS to maintain a communication session. [00:27:16] Speaker 04: That's what Dr. Bim's testimony was all about in paragraphs 165 and 166. [00:27:21] Speaker 04: And that's what it was based on in those prior paragraphs, 154 through 164, when Dr. Pims was analyzing the scope and content of the prior art and what it taught to one of ordinary skill who was designing a cellular phone at the time that needed to switch between networks would have recognized the benefit taught in these prior art references. [00:27:44] Speaker 04: And it goes beyond UMTS and is found even in GPRS, which is indisputably [00:27:50] Speaker 04: part of the ground one and even labeled as such in ground one. [00:27:55] Speaker 04: And the board says that they credited Dr. Bim's testimony that one of ordinary skill in the art would have been aware of the problem of mobile devices frequently switching between networks and of solutions to transparently maintain a communication session. [00:28:09] Speaker 00: That's what... The issue, the question that [00:28:12] Speaker 00: catches attention isn't necessarily that the board could not have dug back into the record for additional justification. [00:28:22] Speaker 00: It was that they didn't have an opportunity to respond to it, to rebut it. [00:28:27] Speaker 04: And that's simply not true because IPRL understood their motivation and in fact replied and the board rejected that. [00:28:36] Speaker 04: And I see my time has ended. [00:28:39] Speaker 04: We request affirmance of the board's decision on remand, unless there's further questions. [00:28:45] Speaker 00: Thank you. [00:28:52] Speaker 00: Mr. Bell. [00:28:53] Speaker 03: Thank you, Your Honor. [00:28:55] Speaker 03: Just a few brief points to follow up. [00:28:56] Speaker 03: I do agree with my colleague in one sense that this case really is about fairness. [00:29:00] Speaker 03: It's about fairness and providing an opportunity to respond to what became the central point [00:29:05] Speaker 03: of the board's remand decision. [00:29:07] Speaker 03: I would disagree with my friend on that point. [00:29:09] Speaker 03: If you look at pages A, 19, and 20, as Your Honor mentioned earlier, the UMTS standards really were the key point in the entire thing. [00:29:19] Speaker 03: The thing that said, ah, this had already been done in a CDMA context. [00:29:23] Speaker 03: Therefore, we know it's desirable, and it's doable, and somebody would have done it, and all those things. [00:29:28] Speaker 03: But we had no opportunity to respond to the UMTS standards. [00:29:33] Speaker 03: It wasn't in ground one, as I mentioned before, and I would like to correct one thing in the record. [00:29:38] Speaker 03: The appendix site that my friend provided, appendix 313, UMTS is not mentioned there at all. [00:29:44] Speaker 03: That's in ground one, and it's talking about Juanda alone or Juanda plus GPRS. [00:29:49] Speaker 03: And as your honor mentioned, GPRS and Juanda were both the part of the prior decision. [00:29:55] Speaker 03: And so the fact that GPRS has this PDP context doesn't get them there. [00:30:00] Speaker 03: And so pointing to that part of ground one can't get them there because this court held that that's not enough to provide the motivation to pluck that out of that protocol and drop it into the CDMA protocol. [00:30:12] Speaker 03: And they're relying for that. [00:30:14] Speaker 03: That logical step, they're relying on the UMTS standards, which we had no opportunity to rebut. [00:30:20] Speaker 03: It wasn't mentioned in their reply. [00:30:22] Speaker 03: It wasn't mentioned at the oral hearing. [00:30:24] Speaker 03: It wasn't mentioned in the remand proceeding. [00:30:27] Speaker 03: And then suddenly, sua sponte, the board decides, aha, that's what's going to get us there, and puts it in its final written decision. [00:30:34] Speaker 03: And we submit that that is completely inappropriate and not consistent with the APA, and warrants reversal in this case for the reasons I mentioned. [00:30:42] Speaker 03: And the final note. [00:30:43] Speaker 03: on the cross-appeal, they could have sought an extension, I would note. [00:30:49] Speaker 03: They could have sought an extension to file their cross-appeal after the change in law. [00:30:55] Speaker 02: An extension of the 63 days from the board, you can get that? [00:30:59] Speaker 02: That's not rigid? [00:31:03] Speaker 03: Is that what you mean? [00:31:05] Speaker 03: I think they could have tried to do that. [00:31:08] Speaker 03: I don't know if they would have been successful or not. [00:31:10] Speaker 03: But putting that aside... But they had even two weeks before that. [00:31:14] Speaker 03: Right. [00:31:15] Speaker 03: So again, that's, at the end of the day, not dispositive. [00:31:18] Speaker 03: We think Mylan is illustrative because it shows that they could have filed a notice of supplemental authority there. [00:31:24] Speaker 03: The court noted that they didn't do that. [00:31:26] Speaker 03: That would have been doing something outside the normal briefing and argument process. [00:31:31] Speaker 03: And it's notable that all the court's decisions that remand in light of SAS almost all of it. [00:31:35] Speaker 03: Sorry, a notice of supplemental authority before the briefing? [00:31:38] Speaker 03: Before the argument. [00:31:40] Speaker 02: The court noted in this case. [00:31:41] Speaker 03: No, no, no, no. [00:31:42] Speaker 03: Apologies, Your Honor. [00:31:44] Speaker 02: In my line, after all the briefing, sure. [00:31:45] Speaker 02: But here. [00:31:46] Speaker 02: Right. [00:31:46] Speaker 03: And so the point there is they didn't have to wait for the next normal step, which was there, the argument. [00:31:52] Speaker 03: And here, they didn't have to wait for the next normal step, which was the brief. [00:31:55] Speaker 03: And most of the cases where this court did. [00:31:57] Speaker 02: I guess I'm just trying to imagine, what might they have filed? [00:32:02] Speaker 02: They did not want to file quite sensibly something that says, please remand this under without reaching the correctness of the boards already remand decision, finding unpatentable claim eight. [00:32:17] Speaker 02: Quite rightly would have thought if we get an affirmance of that. [00:32:21] Speaker 02: The grounds two and three are quite moot. [00:32:25] Speaker 02: So what is it that they should have filed before their red brief? [00:32:27] Speaker 03: I think based on this court's case, which we cited in the gray brief, a footnote and several, in those cases, the party did file a motion to send it back before the briefing was done. [00:32:39] Speaker 03: And that's why this court noted... Well, if that's what they wanted, right? [00:32:41] Speaker 02: But I mean... Well, I think... And if I'm remembering right, in the first few weeks after SAS, there was quite a lot of confusion and there were issues about whether it was an all or nothing thing, whether this court could decide the instituted ground appeal without going back. [00:33:01] Speaker 02: And that got sorted out over the course of a little bit of time, but that really has been [00:33:07] Speaker 02: sorted out, so I'm struggling a little bit with what they could have filed that we, if they had filed, saying we have a conditional SAS argument. [00:33:19] Speaker 02: And what would we have said? [00:33:20] Speaker 02: We would have said, well, say it in your red brief. [00:33:24] Speaker 03: Well, I would respectfully point the court to the decisions that came out, where the court did not just say, do it in your red brief. [00:33:30] Speaker 03: In fact, they said the opposite. [00:33:31] Speaker 03: They decided it on the motion to remand. [00:33:33] Speaker 03: And you're right. [00:33:34] Speaker 03: They probably didn't want to, but they wanted to have their cake and eat it too, wait and go through a briefing. [00:33:39] Speaker 03: And then as a final way to salvage it, send it back if we lose on the other merits. [00:33:45] Speaker 03: But this court in Baker suggested that it would be better, more efficient. [00:33:49] Speaker 02: In that particular case. [00:33:50] Speaker 02: In that particular case. [00:33:51] Speaker 02: Right. [00:33:51] Speaker 02: In a couple of cases where the issues were actually quite intertwined, [00:33:55] Speaker 03: We sent it back the whole thing without reviewing the Institute ground decision where it seemed to make sense, but We've done the opposite quite a lot Well, and I think if this court decides that it was sufficiently prompt and I don't I don't think it was but if the court decides it was sufficiently prompt and I think it will have to squarely consider that the jurisdictional impact of whether a cross-appeal was necessary and our position is that it was and [00:34:22] Speaker 03: And so for that additional reason, that would preclude a remand. [00:34:25] Speaker 03: And so for all those reasons, we think reversal is appropriate. [00:34:28] Speaker 03: And I see I'm way out of time, unless the court has any other questions. [00:34:32] Speaker 00: Thank you. [00:34:32] Speaker 03: Thank you. [00:34:33] Speaker 00: Thank you both. [00:34:34] Speaker 00: The case is taken under submission.