BARKAN WIRELESS IP HOLDINGS v. UNIFIED PATENTS, LLC — Oral Argument

0:01 Clerk The United States Court of Appeals for the Federal Circuit is now open and in session.

0:06 God save the United States and this honorable court.

0:11 Judge Dyk Good morning.

0:12 We'll hear argument first in number 20-1442, Barkan Wireless IP Holdings v. Unified Patents LLC.

0:20 Mr. Larson.

0:25 Appellant Attorney (Blaine Larson) Good morning, Your Honors.

0:26 Blaine Larson on behalf of the appellant, Barkan Wireless.

0:29 The board made three errors in this final written decision.

0:32 First, it misapplied AIT in holding that Samsung and Verizon were not real parties in interest.

0:39 Second, it interpreted the term regulate data flow in a manner that is inconsistent with the prosecution history.

0:45 And third, it misconstrued the term unique identity by holding that the unique identity need not be associated with a particular base station.

0:54 I'll address the appealability issue first.

0:58 Judge Dyk How can you maintain your position about appealability?

1:03 In the light of our decision in ESIP?

1:08 Appellant Attorney (Blaine Larson) Yes, Your Honor.

1:09 The ESIP decision specifically addresses the appeal of an institution decision, not of the board's final written decision.

1:18 Judge Dyk It was an appeal from a final written decision, wasn't it?

1:22 Appellant Attorney (Blaine Larson) It was, Your Honor.

1:23 But the patent owner specifically appealed the institution decision and not the final written decision.

1:30 The panel states it's holding in the first paragraph.

1:34 It states,

1:35 We find no error in the board's obviousness determination and the board's decision to institute inter partes review is final and non-appealable.

1:43 The board repeats that, or I apologize, the panel repeats that frame several times.

1:48 What was appealed was the board's decision to institute.

1:52 At page 1386 of the opinion, the ESIP opinion even cites some argument from the patent owner in the decision.

2:03 It said,

2:03 The patent owner argued,

2:04 It was improper for the board to consider the IPR petition and institute an IPR.

2:10 The decision, Your Honor, was specifically addressing whether or not a party can appeal the RPI decision in an institution decision, not in a final written decision.

2:22 ESIP does not address Section 319, which covers the appealability of a final written decision, nor does it address 315E, which covers the estoppel impact of a decision.

2:35 ụ

3:33 ESIP specifically addresses the institution decision, and and the purpose of 314-D

3:38 Judge Bryson Right, but suppose suppose if

3:40 Your honor I think that is sufficient if

4:21 Appellant Attorney (Blaine Larson) Assuming the board addresses the real party and interest issue in the final written decision,

4:26 the statute unambiguously says that a party dissatisfied with the board's final written decision, quote,

4:32 may appeal the decision.

4:35 There's no clarifying language in Section 319.

4:38 I think if a party is appealing analysis in the final written decision, that should be appealable.

4:44 Judge Bryson I apologize, Your Honor.

5:07 Appellant Attorney (Blaine Larson) Could you repeat the first half of your question?

5:09 Judge Bryson Yes.

5:10 What I'm trying to see is if the answer, Your Honor, is that ECIP is just an application of 314D.

6:08 Appellant Attorney (Blaine Larson) The institution decision can't be appealed.

6:11 Any analysis in the final written decision is appealable under the statute,

6:16 and ECIP doesn't address that question.

6:19 So I understand, Your Honor, his concern about parties just saying we're appealing the final written decision,

6:27 but there is an ongoing obligation to update real party and interest

6:30 throughout ECIP.

6:31 And the flip side of that argument is that it leaves analysis in the board's final written decision

6:38 that can't be appealed.

6:39 We made the argument in our brief.

6:42 Judge Hughes Counsel, this is Judge Hughes.

6:44 If we agree with you that this is reviewable, what is the remedy you propose?

6:49 Is this to tell the board to dismiss the IPR because it was improperly instituted?

6:56 Appellant Attorney (Blaine Larson) The remedy would be to order the board to correct its final written decision,

7:01 and state that Samsung and Verizon are real parties in interest.

7:06 I'm not sure we can go back to the institution decision because that's...

7:11 Judge Hughes Well, isn't that the result, though?

7:14 Isn't it your view that if these entities had been identified as real parties in interest,

7:19 it couldn't have been instituted?

7:22 Appellant Attorney (Blaine Larson) Yes, but that's a separate question, Your Honor.

7:25 And that part is not appealable.

7:29 Judge Dyk Your theory is that a board...

7:32 decision on real party in interest wouldn't affect the institution,

7:36 but that it would affect the estoppel.

7:38 That's your theory as to why the board should have to decide this, right?

7:43 Appellant Attorney (Blaine Larson) Yes, Your Honor.

7:45 Real party in interest is unique in the IPR provision

7:48 because it's addressed in 315E,

7:52 which specifically mentions final written decisions.

7:55 So this is something that's impact...

7:58 The real party in interest question is something that is impact...

8:01 that impacts the final written decision

8:04 and impacts moving forward and later proceedings as well.

8:07 So this is not something that's just tied to the institution decision.

8:12 Judge Dyk Okay.

8:13 Unless my colleagues have further questions on this part of it,

8:17 could we turn to the claim construction?

8:19 Appellant Attorney (Blaine Larson) Yes, Your Honor.

8:20 Let me start with the regulate data flow term.

8:23 Judge Dyk What do you mean by regulating data flow through the gateway?

8:28 I'm not sure that there is any illumination in the patent.

8:33 As to what that means.

8:35 Appellant Attorney (Blaine Larson) I apologize, Your Honor.

8:38 Judge Dyk What does it mean?

8:42 Appellant Attorney (Blaine Larson) We know what it doesn't mean.

8:44 The prosecution...

8:45 Judge Dyk No, but I'm not asking you what it doesn't mean.

8:47 I'm asking you what it does mean.

8:52 Appellant Attorney (Blaine Larson) The claim requires a controller adapted to regulate data flow

8:58 between the mobile device and the data network.

9:01 So requires data from a mobile device through a gateway

9:08 to a packet-based data network.

9:10 So it is establishing a connection from a mobile device through a gateway

9:16 to a packet-based data network.

9:18 Judge Dyk Does that...

9:19 Does that, there's no question about that, right?

9:24 Appellant Attorney (Blaine Larson) Your Honor, what the prior art teaches is allocating RF channels

9:28 between a mobile device and the gateway.

9:32 Judge Dyk No, but it teaches a gateway and the signal goes through the gateway, right?

9:37 Appellant Attorney (Blaine Larson) What was cited is as a signal that goes to the gateway.

9:41 Your Honor, not through the gateway.

9:43 And more importantly, the specific configuration that the board cited here

9:49 was distinguished by the patent owner during prosecution history.

9:53 Judge Dyk Okay, but what is regulating through the gateway mean?

9:58 What are you talking about?

10:01 Appellant Attorney (Blaine Larson) It's transmission between a mobile device through a gateway

10:06 all the way to a packet-based data network.

10:10 It's not just...

10:10 Judge Dyk Just transmission?

10:11 Just transmission?

10:12 There doesn't have to be any regulation?

10:15 Appellant Attorney (Blaine Larson) There has to be some sort of regulation,

10:17 but it has to be through the whole channel, Your Honor.

10:20 It can't be just part of the channel.

10:22 Judge Dyk What's an example of regulation through the whole channel?

10:27 Appellant Attorney (Blaine Larson) For example, regulating access to the network would be regulating through the channel, Your Honor.

10:33 That was something we pointed to in our brief.

10:35 The error the board made here is that the specific configuration that the board cited

10:41 that's allocating RF channels was distinguished by the patent owner.

10:47 And the board never really explains why it reached a contrary result from the examiner.

10:52 It mentions the argument at 32 and 33 of the final written decision,

10:58 but it never actually addresses why it reached a contrary position.

11:03 And my last little bit here, I'd like to turn to the unique identity term.

11:09 The specification specifically distinguishes the board's finding.

11:13 The specification teaches that this unique identity is important

11:18 because these base stations are mobile

11:20 and they're designed to be installed by individual users

11:23 rather than a cellular network operator.

11:28 And for that reason, it's important that each base station has a unique identity,

11:33 and that's how the network can track where each base station is and what it is.

11:38 Judge Dyk I don't see the board as saying the opposite, really.

11:43 I just see them...

11:44 It's saying that the base station gets a unique identifier through the SIM card in the phone.

11:50 Appellant Attorney (Blaine Larson) Yes, Your Honor, but the patent at column 2 distinguishes that very configuration.

11:57 Column 2, line 34, or line 35.

12:00 A novel feature of the base station is the unique property of each device.

12:04 This allows its use as an add-on base station.

12:07 In prior art, each phone had a unique identity.

12:11 However, the base stations had no unique properties.

12:14 The...

12:15 The prior art systems had mobile devices with unique identities

12:18 that were associated with particular subscribers.

12:22 The base stations themselves did not.

12:24 Now, what the board cited as...

12:27 The board cited as disclosing this limitation

12:29 was exactly what...

12:31 was exactly what the specification taught was disclosed in the prior art

12:36 and distinguished here, Your Honor.

12:38 Judge Dyk Well, what is...

12:39 What is the board when the board at 39 and 40

12:42 says that the SIM card...

12:45 The board at 39 and 40 says that the SIM card information provides a unique identify...

12:49 identity achieved by a unique number when the SIM card is added to the base station.

12:55 They say that adding the SIM card to the base station

12:58 gives the base station a unique identifier, right?

13:03 Appellant Attorney (Blaine Larson) Yes, Your Honor, but that is a unique identifier of a subscriber.

13:07 It is not a unique identifier of the base station.

13:10 And in fact, Lucidarm, the reference,

13:12 teaches that a single base station can have multiple SIM cards installed.

13:16 Those are SIM cards that are associated with an individual user,

13:19 not SIM cards that are associated with a base station.

13:22 When you use an identifier for a base station

13:25 that's associated with an individual rather than the base station,

13:28 that's no longer a unique identifier of the base station,

13:32 which is what the claims require.

13:33 That's a unique identifier of a user.

13:36 And the specification in column 2, line 35,

13:40 and column 12, lines 11 through 12...

13:42 I apologize, column 11, lines 11 through 12,

13:45 specifically...

13:46 It specifically distinguishes that exact configuration.

13:49 It says prior art systems taught that a mobile device

13:52 could have its own unique identifier,

13:55 but a base station did not.

13:57 This system is different because the base station itself

14:04 must have a unique identifier

14:06 that's different from the unique identifier

14:08 of an individual user or a subscriber.

14:11 Judge Dyk Okay, unless my colleagues have further questions,

14:15 I think we're out of time.

14:16 We'll give you two minutes,

14:18 or rebuttal.

14:18 Any further questions?

14:22 Hearing none, we'll hear from Ms. Shonensfeld.

14:28 Appellee Attorney (Raghav Bajaj) Thank you.

14:30 May it please the court.

14:31 Under Thrive and ASEP,

14:33 the board's real party and interest determination,

14:35 regardless of whether it's made at institution

14:38 or in the final written decision,

14:40 is not reviewable on appeal.

14:43 And if there's not further questions about this issue,

14:47 I will yield the remainder of my time.

14:53 Judge Dyk Okay.

14:54 Hearing none, thank you.

14:57 Next, we'll hear from Mr. Bajaj.

14:59 Am I pronouncing that correctly?

15:01 Clerk Yes, Your Honor.

15:01 Mr. Bajaj.

15:02 Thank you, though.

15:04 Okay.

15:05 Thank you, Your Honors, and may it please the court.

15:07 My name is Raghav Bajaj on behalf of Unified Patents.

15:11 Unified agrees with the director's positions

15:12 on reviewability of the real party and interest issue.

15:15 The determination is institution level under Section 312,

15:19 and again, Thrive and ASEP Series 2

15:21 foreclosed review of the issue.

15:24 Barkin's attempt to recapitulate

15:25 the appeal as an appeal from a Section 315E decision fails

15:29 because there is no determination under that section.

15:33 Judge Bryson Mr. Bajaj, suppose that some...

15:59 Clerk Your Honor, I am not entirely...

16:01 It depends on the posture of what happens after that.

16:04 If the real party and interest facts come out after institution

16:07 and the board enters a final written decision,

16:11 I would still submit that that is not appealable,

16:15 and I believe that's what, Your Honors,

16:18 wrote to that effect in the Wi-Fi 1 dissent.

16:22 I'd also point to Section 319 and 318.

16:27 Section 319 authorizes review of the final written decision,

16:31 but 318 says that the final written decision

16:33 is with respect to patentability.

16:35 So I don't believe that the issue would still be reviewable

16:39 merely because it appears in the final written decision.

16:41 It's still an institution-level decision that,

16:44 you know, if facts come out after institution,

16:47 that the board should be able to review it.

16:48 If the court should not have instituted,

16:49 it's still a Section 312 and barred by 314.

16:58 So even if the court were to review the issue,

17:00 there's still no reason to reverse the board's decision.

17:03 The board applied the correct standard

17:04 as set forth in the trial practice guide

17:06 and is confirmed by this court in applications in Internet time.

17:10 Barkin's issue is with the board's weighing of the evidence,

17:13 not of the legal test applied by the board.

17:17 This is the type of decision that is reviewed for substantial evidence

17:20 as the court found in AIT.

17:21 And here, substantial evidence,

17:23 supports the board's conclusions.

17:26 I'd like to turn to the merits of patentability

17:28 and first the regulating data flow term

17:31 and how that is met by Ferris.

17:34 This court should come to the same conclusion as the board.

17:37 Regulating data flow between the mobile device

17:39 and the packet-based data network

17:41 requires nothing more than controlling a flow of data

17:43 between those two endpoints.

17:46 And the claim language speaks for itself.

17:48 The claim recites a controller adapted to regulate data flow

17:52 between the mobile device and the data network.

17:54 The claim does not require the board to be able to regulate data flow

17:56 through the gateway

17:57 and does not require regulation of data flow through the gateway.

18:01 It simply requires controlling the flow of data

18:03 and the claims do not provide any further specificity.

18:07 Barkin is attempting to confuse two issues

18:09 by suggesting that because data flows through the gateway,

18:12 it must be regulated through the gateway.

18:15 But it is not in dispute that data flows through a gateway.

18:18 What is at issue is where is such data regulated

18:21 between the two ends.

18:22 Judge Dyk If you look at the prosecution history,

18:24 isn't there a suggestion there,

18:27 by the patentee,

18:28 that it has to regulate through the gateway?

18:33 Clerk I don't believe that's the case, Your Honor.

18:35 I believe that in the prosecution history,

18:38 the portions that Barkin is pointing to

18:41 are ambiguous on that point.

18:43 I believe that the applicant was distinguishing

18:48 the Johnson reference based on the Johnson reference's

18:51 type of network,

18:53 meaning between a circuit switch and a packet switch network,

18:57 and the presence of a gateway,

18:58 and the presence of a gateway at all in Johnson,

19:00 not whether Johnson regulated data flow through a gateway

19:04 or that regulating data flow through a gateway is required.

19:11 And importantly, I recognize, Your Honor's confusion

19:14 as to what through the gateway means.

19:16 We don't really know what that means,

19:18 and we don't know.

19:20 We know what through the gateway means.

19:22 We just don't know what regulating through the gateway means.

19:26 That is fair, and I apologize for that, Your Honor.

19:29 And a bit of that is true.

19:31 That confusion is because the specification,

19:34 as the Board pointed out,

19:35 does not use the word regulate.

19:37 So if we are looking at the intrinsic record

19:41 and what's in the patent,

19:44 we resort to the claim language,

19:45 and regulating between those two endpoints

19:47 just means regulating anywhere on that path

19:52 between the mobile device and the packet-based data network.

19:55 And as Your Honor's noted, in Ferris,

19:58 the prior art reference,

19:59 data is regulated between,

20:01 the mobile device and the gateway,

20:03 and that data flows through the gateway

20:05 and onto the packet-based data network.

20:07 That is not in dispute here.

20:08 And so Ferris meets the claim limitation

20:11 as construed correctly as controlling a flow of data.

20:15 Judge Dyk What do you understand the prosecution history to mean

20:20 when the examiner says that,

20:23 if I recall correctly,

20:25 that the parties agree that there's no controller

20:28 in the Johnson prior art?

20:33 Clerk The Johnson prior art,

20:36 the applicant,

20:40 I'm sorry, the examiner confirmed that in prosecution

20:45 that Johnson does not disclose a controller

20:49 adapted to regulate flow between the mobile device

20:52 and the data network.

20:53 So the examiner admitted that

20:55 that was not what Johnson was cited to teach.

20:58 Instead, the Zoo reference, XU,

21:00 was cited to teach that limitation.

21:04 And so the applicant's statements as to Johnson

21:07 were not material as to whether their claim required

21:10 through a gateway or not.

21:14 Judge Dyk Okay.

21:18 Clerk And so if this court comes to the same construction

21:20 as the board,

21:21 the findings that Ferris anticipates the independent claims

21:24 must be affirmed.

21:25 Again, Ferris regulates data flow between the gateway

21:28 and the mobile device,

21:29 and that data flows through the gateway

21:31 and onto the packet-based data network.

21:34 Turning to the unique identity recitation

21:36 in claims six through eight, again, the board's findings,

21:39 if I understand your position,

21:41 Judge Dyk that by regulating the choice of the RF frequency,

21:46 it regulates the first half of the data flow

21:50 and that's sufficient, is that what you're saying?

21:53 That's correct, Your Honor.

21:54 Clerk Yeah, okay.

21:56 Turning to the unique identity recitation

21:58 in claims six through eight, again,

22:00 the board's findings here are supported

22:02 by substantial evidence and should be affirmed.

22:05 Again, the question turns on one of claim language.

22:07 The claim recites a gateway comprising a unique identity.

22:10 And nothing more is required of the unique identity.

22:14 The claims do not specify the nature of the unique identity,

22:17 a point which Barkin cannot contest without resorting

22:20 to it reading in additional limitations not present

22:23 in the claims text.

22:24 Based on the claim language, the unique identity is not attributed

22:28 to or limited to or associated with the gateway.

22:32 The board's finding that Lucidarm discloses a unique identity

22:35 as claimed is supported by the record.

22:38 And as was noted, Lucidarm operates

22:42 consistent with one of the examples in the patent itself.

22:44 The patent discusses insertion of a smart card with a unique number

22:48 into the base station to achieve the unique identity.

22:51 And Lucidarm likewise describes.

22:53 Judge Bryson Where is it?

22:59 Clerk Your Honor, this is at column 11, lines 25 through 28.

23:02 It says various means may be used to achieve the unique identity.

23:05 Judge Bryson Okay, yeah, okay.

23:07 Clerk And so Lucidarm likewise describes configuring a base station

23:11 by inserting into the base station a user's SIM card or a smart card.

23:15 And that smart card has a unique number

23:17 in the form of a private key.

23:19 So Lucidarm's, sorry, Lucidarm's base station comprises a unique identity

23:27 in the same manner as the 284 patent's base station comprises a unique identity.

23:32 And this court should affirm the board's finding

23:34 that Lucidarm teaches the dependent claim features.

23:37 Unless the court has any further questions, I will cede the remainder of my time.

23:43 Judge Dyk Okay, hearing none, thank you.

23:45 Mr. Larson, you've got two minutes.

23:47 Appellant Attorney (Blaine Larson) Thank you, Your Honor.

23:48 Let me start with the regulate data flow term.

23:52 Page 578 of the appendix is the prosecution history,

23:56 and Your Honor discussed this with counsel.

23:58 When the patent owner is describing Johnson, the prior art reference,

24:02 it literally bolds and underlines the following language,

24:05 allocating a plurality of channels.

24:08 And it states on 578 and 579 that allocating a plurality

24:13 of RF channels is not regulating data flow through the gateway,

24:18 or not writing data, regulating data flow.

24:21 Okay.

24:21 That's exactly what the board has identified in this case.

24:25 They have identified the exact feature that was distinguished during prior art.

24:29 And the board has not explained why it reached a contrary decision.

24:33 There's no dispute about what the prior art taught in this case, Your Honor.

24:37 Judge Dyk Where is the reference?

24:39 This is on 579 or?

24:41 Appellant Attorney (Blaine Larson) 578.

24:42 The top of 578, Your Honor, under the heading the Johnson reference.

24:47 Judge Dyk Yeah.

24:48 Appellant Attorney (Blaine Larson) The second line, there's a bolding of allocating

24:51 a plurality of channels.

24:53 Judge Dyk Yeah.

24:55 Appellant Attorney (Blaine Larson) And then that is a quote from the Johnson reference itself.

24:59 And then on the next page, page 579, the first full paragraph starting

25:04 with applicant respectfully, there's the fourth line starts, namely,

25:14 the limitation of regulating data flow through a gateway is neither taught

25:20 nor suggested by any of the citing references.

25:24 And then a couple lines down, furthermore.

25:27 Judge Dyk They said they agreed that there was no controller, right?

25:32 Appellant Attorney (Blaine Larson) Correct, Your Honor.

25:34 And the controller is what's doing the regulating.

25:37 So Johnson allocates a plurality of channels.

25:42 And the board said, or the examiner said, that's not regulating, or that's not regulating

25:47 data flow.

25:48 That's just allocating channels.

25:53 And if I briefly turn to you.

25:55 Judge Bryson I'm sorry, but where did the examiner say that exactly?

26:00 Appellant Attorney (Blaine Larson) This is the.

26:02 Okay.

26:02 This is the final office action response before the claims were allowed.

26:07 Right.

26:08 Judge Bryson And what do you have the quote from the.

26:14 Judge Dyk This is.

26:15 553, I think.

26:16 All right.

26:16 What is it?

26:17 552 to 53.

26:21 552 to 53.

26:23 Judge Bryson And the.

26:25 Appellant Attorney (Blaine Larson) Yes, Your Honor.

26:25 The very last two words on 552, Your Honor, starts with Johnson, however.

26:30 And then that sentence proceeds onto page 553.

26:35 And that is the office action that preceded the discussion

26:39 on 578 and 579 of this term.

26:44 The examiner is saying that allocating RF channels does not disclose a controller adapted to

26:50 regulate data flow.

26:51 Once again, this is the exact position that the board adopted from the LucidARM reference.

26:57 I apologize from the Ferris reference.

27:03 I can briefly turn to the unique identity term that counsel pointed to column 11, lines

27:09 28 through 30 about the smart card.

27:13 That is a smart card that's associated with an individual user.

27:17 Earlier in that column.

27:19 Judge Dyk I think we're about out of time.

27:20 You're way over your two minutes.

27:22 So unless my colleagues have further questions, I think we're going to have to stop here.

27:29 Thank you, Your Honor.

27:30 Hearing no further questions, thank all counsel the case is submitted.