thank you your honor this morning they please the court st i'd like to just note that for the sake of brevity of our oral arguments we've actually conferred with learned counsel and we will be submitting on the papers for the six  jointer absolutely are and you noted in your reply that that's a predicate issue that we have to deal with so i don't want you to be all nervous like i got to get to the merits whatever we may be able never get to the merits arguments in your previous briefing was very pull some and we so i don't know if you talk to the p t o i am just really don't understand why they haven't interviewed because he's a very important question i'm joined here as you said and now that they've got a presidential hidden they obviously that they would have intervened in this case given the jointer issue given that they came out with the presidential opinion in panic and i think what if it were me i would say that they think that propellent set down a inkling as to what your honour's are thinking we have actually argued that in fact we believe that the federal circuit should give chevron deference to the proponent decision because it is a presidential opinion it's the  think they're exactly the same your honor certainly they're not they're not full some rulemaking process with everyone being invited but they do grant the patent office the public's input and they were actually six separate  now what needs to be done for regulation st of all it has to come from the official leadership of the organization and you can argue he was him all of that in this hunt but secondly you have to go you have to file in the federal register you have to go through certain steps you have to give public notice in a peculiar kind none of that was done so let me clarify for your thinking and anybody else who thinks otherwise they can do all the presidential opinions they want and they can advertise in any way they want and it will never qualify under the administrative procedure act as a proper notice and procedure notice and process under the a p so they can't get chevron deference and they said so you should put that out of your mind and move on from there really just add to that and i'm not you know we'll all figure it out but i just want to ask you leaving aside the a p a issue this isn't just a matter of we've got casa now granted keiser just with most appropriate here your honor is that this statute specifically gives discretion to the commissioner to make these determinations and so azmi student or the director i apologize the director is given the discretion to decide whether or not to allow these jointers and therefore he's being given discretion to interpret three hundred and fifteen and as we see in mead and in the chevron case itself when congress is silent or in fact actually passes the in from the imprimatur on to the administrative agency that's when chevron deference i don't know i understand your point and i take your point but there's an issue that we have to get to in order to put his deference he's got deference and the statute no doubt the question is what the extent of the differences and that a predicate for that is to construe the statute because i mean we're talking about whether he has the discretion to doing time barred hard or persons versus time hard claims because that's really the heart of this dispute right i mean the other side may say the issue is whether or not you can join the same pretty frocks my view of it he still is whether it's the same party or a different party the real hard to be issue and the import of what we do here is whether it's that time to call kind of reference that so i do agree there's discretion but how do you get past the st issue which is i think a more issue for us than the did the directors this clear  joined or parties to be anything more than hard ass as opposed to with the can bring in your issues with them and so for that year i think we also have to look to the statute that itself in the statute itself if what your honor is saying is that it's absolutely limited to only the claims that were in the original petition nothing more never only those claims slash only those issues then the rest of the statue wouldn't also require that the issues presented otherwise meet the a i a standard otherwise would be why not eligible for the petition because that wouldn't have any meaning of course it would because it limits who can be hard they don't want just joe lynn neary from lafayette park to come in and join this  party there they're putting a limit on who can be joined as a party and can be somebody and that's what these limitations are about they're talking about they aren't limiting who can be joined as a party but that doesn't necessarily answer the question kyl's statements about the fact that they end to sit pated that other issues may arise that there would be other materials presented we cite that in our brief it's actually discussed at length in the proponent decision as well they all point to the section of three hundred and fifteen that talks about not only can any person so unfortunately it can be someone from one the creator lafayette who actually comes and any person can actually petition keep working from let's assume hypothetically the worst case for you let's assume hypothetically that the statute means exactly what it says and what it says is that an interparty view may not be instituted if the petition requesting the file more than one year after the date on which t etc who served with a complaint alleging infringement and that's a bar that will be our enemy petition by the same party a the other cases have been before the peak and so i think we're not going to persuade you but i'm not sure you're going to persuade us so let's proceed with this hypothetical the worst case the court never dealt with it eventually there was a transfer in two thousand and sixteen to the northern district of california and that court didn't deal with your dismissal motion either but it did set and management conference for four months after the one year bar expired well there you're looking at that and let's assume that you read the  that you can't join yourself it's grammatically impossible for someone to join themselves unless they happen to be dead now you're facing a deadline and you have no way to file those follow on petitions what would you do how would you deal with that problem creatively if you were faced with that help me and that's what's puzzling the is how do we get someone like you out of locked out lemma under the worst case reading of the statute the problem here your honor was we were creative we actually filed an emergency motion with the district court and you have to act absolutely acted responsibly and you also recognize that you had a potential hair peril here yes we did it without doing it i'm not quarreling with what you did i'm only asking you what would you have done if correct now and then we did unfortunately your honor we did the only thing that was available to us and given that it was physically impossible we're not i guess it's not impossible it was physically improbable both cost prohibitively and  logistically and i don't sure what the patent office would have done if i had filed call it thirty petitions to try to accommodate all of the claims that were at issue when they say oh i don't think that cracks a break that law  anything other than have some ambiguity in terms of which actual claims are assert but normally thank goodness most of the time we're dealing only with a pass because no matter how you read the statute language it says that they can't bring in another cat correct so they go ahead and they elicit if you get an answer from the just record they file petitions that are over and close to possibly and that and that happens normally i mean sometimes people fil e complaints until they have discovery that's why we have lots of amendments or complaints and claims which can always happen after their one year time absolutely are and that's the system we're dealing with i mean i respect that i think i don't want to read into it but i'm assuming director young that when the rest of the people on the spot thing recognize that there should be what he calls a very limited exception for that circumstance but if we can't read it into the statute then you'll do it and what i think in a normal circumstance most petitioners already do they're not based with eight hundred and thirty dollars claims they might be faced with twenty claims understood you are now if you were sitting there today and you knew that clock is going country what would you next do i'm not sure honestly your honor that there was anything else i could have done the numbers of all those claims which is all you need to do to get the petition in by the deadline i'm just asking because i want to understand in your papers you say well that's not fair to the p t o that's not your problem you're not the p t o how do you protect yourself under these circumstances so your honor if this court were to find that simply listing the other claims was enough we would do that but the patent office has rejected all petitions that don't give full evidence to every claim that's in the petition it's not good enough to say here's exemplary claim one and i want you to attach all of that same analysis to everything out there page limits and costs each petition costs at least thirty thousand dollars just to file and if you can only get within the forty to fifty page limit word limit not a page limit you can't possibly even print out what the claims are you can file multiple petitions you can your honor but if you can imagine i think at this point when we calculated it it would have been something on the order of you but on the other hand policy would dictate that the patent owner has some skin in the game here too it can't possibly be to their advantage if they're only playing to assert a dozen claims at the end of the day in their complaint it can't be to their advantage and they've got their guns facebook they're not against some little chi so you have the where with all the bandwidth presumably to to force their hand it's hard packed the patent owner it's not in his interest to have  and all of his patents and all of his clients so he's got something he's got an incentive to try to figure it out sooner rather than later because if it's realistic that you are going to file on all of them then he is risky for necessarily all process because all he has to do is say oh now i'm not going to i'm not going to assert those in court and i'm not worried about those anymore and meanwhile he has drug the defendant to spend you know hundreds of thousands of dollars  we searched them and this but he still just what he's done is jeopardized his entire portfolio unnecessarily and to me there's possibly a cost to that or a disincentive to just willy nilly do that if there's you know no reason obviously there could be a reason in some circumstances without discovery could not really know which of those claims are appropriate of them that's fair enough but your honor that risk exists the minute they file the lawsuit those claims are all potentially going to be invalidated the minute they file a lawsuit without telling us what claims there are it has nothing to do with oh and now the disincentive is they could all be invalidated that exists whether or not you go to the p tab so there is no disincentive for pattern owners in fact the prepared decision the director specifically talks about the gamesmanship is afforded to a patent owner who is able to say here is my pile of thousand eight hundred however many claims it is and i refuse to tell you what it is until after the bard it is passed because i know it's either going to be cost prohibitive to you it's going to be man hours primitive to you or something else so i'll end up with some claims that are free and clear because you can't possibly file on the mall it puts the entire burden on the defendant who has no way of knowing it then puts the entire burden on the patent office which i know you said is not mess it's their problem not mine but it does but yours yours is remarkably the worst possible case this this factor that anyone could think of eight hundred what was eight hundred and  and thirty claims and two judges who didn't pay attention come back to that point for a minute clearly the problem that's causing the whole problem is the district judges who fail there well the problem was double for the trial judges because no one trial judge ever got a hold of the case that kept moving around on them so correct and you couldn't you couldn't write a script was worse than this one for challenging the sensibility of this man and we recognize that and you know i suppose at some point you might have said to your client we were screwed you're going to the bankruptcy  court but there's no reason for you to have done that there has to be a remedy you somewhere in the system which is what we have to russell what is the right remedy for someone caught in this now part of the problem is this case will probably never come up again in the history of the united states you would really have to imagine the possibility of the st transfer nd the in the inordinately large number of claims they ought to do something about that and then the trial judge is dropping the ball which would literally happen and here you are in the clock runs against you in here we've got this particular statute so you couldn't ask for a wors than that when you happen that now the chief judge suggested one option for you which would have been to somehow file an in number of petitions whatever you decide to do but you've got to get in before the deadline and you're pointing out why practically that's not a good alternative for you i don't know whether going to the the owner and saying i'm going to file and everything against you and tie you up for the next fifty years unless you contract with me to agree that you're not going to had new claims i don't  the st thing i would do and i know your honor doesn't agree but i would urge you to really look at what the direct how the director analyze the difference of the word person between three hundred and eleven and three hundred and fifteen as i think that's very helpful but putting all that aside and understanding that your honor is asking me assuming that there is an absolute time bar and no ability to add claims after the time bar i would request that the court at least in its opinion indicate strongly urging i know you can't order it per se but urging district courts to implement claim limitations that no case have more then x number of claims before the statutory period so that judges know downbelow how you feel about that type of gamesmanship at a minimum that would help us as defendants when we go in front of judges asking for early claim limitation asking for courts to add a minimum get infringement contentions early in the case to what claims are going to be involved so that we can approach the p tab in a timely manner with only the claims that are issue and i would beg the court to at least do that i  appreciate your input and but let's just back to the statute maybe you can give me some help because the option you didn't you left out was too bad so sad go to congress and get them to  and i mean i think my going to the statute for whatever it's worth is that you know i think i agree with judge flager that the language to is does not get you where you need to go but the real seems to me the real rub the cause of the problem is language there were a complaint alleging infringement of the claims you would have an argument that your clock course the clock one year clock corresponds to the claims that are alleged in the complaint and that obviates the problem of amending complaints and all of that so if you're going to seek an amendment of the statute you might want to and i don't know maybe it's subject maybe you could make an argument that infringement of the patent camp possibly mean infringement of the patent because that doesn't make any sense honor just made the argument is going to say about patent vs claim and you can't in french so you did exactly what i was going to do yeah but you got it but the problem is the language and congress knew how to say it because helpful for petitioners in the stop the provisions that they did it but congress also knew specifically how to release the time bar and it said that the time bar did not apply to proper petitions anything that properly  section on jointer that says interparty proceedings so you're still i understand your argument but i still and i would still argue sorry are one possible solution for some of this at least for the patent office to recognize the difference may determine the manner in which the end of parties review or of the proceeding or matter correct may proceed including providing st a transfer of consolidation or germination of any such matter or proceeding ground that gives the director very broad power to consolidate now and that would suggest that someone could come in if they came in within the time bar of course and or right and so that's why the consolidation doesn't actually but it still doesn't clear five that you're joining something other than party and i think here you're out of that's why we remember the time bar doesn't  statutory period of thirty days after the institution decision right that's so that the patent office can say i've got this issue in front of me i'm getting ready to dive in whole hawg into the rest of it so i want to everything in that's going to fifteen which says any person and does not hard anything out if congress had intended to carve out the petitioner it could have the same way in three hundred and eleven it says any person can bring and i p r other than the pat questions the rub for us is not whether or not you can join the same party it's what is joining whether it's anything beyond the party itself with the reading the claims in the other and i would urge your honor to e dealing with this that you i agree the only other thing i would add for your honour's though is that there is a way out of this for this case and the way out of this for this case helps is waiver this argument was never made acknowledged in that statement that the patent office had discretion only here on appeal for the st time do they argue that the patent office did not have discretion your honour's could find that they waived the argument of whether or not the patent office could act by not using that argument down below that's a very good point and we will make a point of pursuing that w makes and by the way the statute works beautifully for the me to people correct your honor that that's what it's designed to do apparently i don't know whether congress went through all this all these alternative scenarios and figured out let's deal with their meat to people and the rest i'm gonna worry about their own problems or the district courts will worry about it or the court of appeals one scramble when the time comes but it's clearly the statute works ended up having to change it is what claims they were going to pursue against you without an opportunity to file a petition on those claims now we have to keep in mind  that you can still go before the district court and litigate the validity of all of the claims that are being pursued against you you don't have to do it in the  i right about that or wrong about that so your honour's right in that that was what the congress that's how the conversation started that's the early part but then by the time it arrives to and with joinder we're talking about adding additional issues so he is directly addressing the issue of obvious correct i think you would sort of benefit by you know getting rid of the board's decision respect to those claims theoretically your honor but i would argue that given the way that the case is working out down below the ones that matter are the two hundred and forty five and that's why all of the ink was spilled on the two hundred and forty five in the briefing and that's why we're focusing on that and that's what we want to give you a chance to focus on that we will and i understand that your honor i said lily i understand that i actually appreciate your honor insights and all of your questions i think the only other thing that i would urge is that when i was really reading me and the name that i can never ever how to pronounce it starts with a p that the federal circuit actually wrote an opinion on it's the linkage of the title when i really read the post square the chevron and the meade decisions the smarting one of the things that stood out was that all of the judges in all of those panels contemplated the idea that some times congress is silent because it actually wants the agency to figure out a way to make this work and here we do have the agency figuring out a way to make that work and whether your honour's give it chevron deference which i still think it should have or not it still shows that the agency is trying to figure out a way to make an ambiguous statute work for everyone involved including very limited exceptions like the case that we the two the clerical error and what they meant to say was claims the beauty of that would be it would and the possibility of this kind of litigation ever occurring again your honor i would be happy with that but that wouldn't solve your problem because you still came in after you are in may not solve the problem here but it would give me comfort in being able to advise my clients require so i don't see how there could have been a waiver by not raising it in a preliminary response now after institution we appeal to the federal circuit we file the mandamus saying this is improper into the reading of the statute we attach the opinion to concurring opinion of the judges at the at an office and the federal circuit told us you'll have your chance on appeal and so then we took that issue which was in the record in the case as us having gone to the federal circuit mandamus sing on this issue as being in the record in this case and that's that's how we arrive here and that's why we don't think it's waived it seems like petitioner is it is argue with that the argument was waived because of the failure to address it at the preliminary response phase which i don't see how that could be a waiver since we don't even need to file one can i your honor it may be significant to from my perspective of representing my client you know it has certain significance whether it has greater significance to the patent community and to the patent office it may the can i ask you you there's another element of surprise in this case in terms of who didn't say what when and that is your friend very promptly after this presidential opinion in march sends us a twenty eight j letter saying ok now we got a presidential they're non crack pinions that word has not yet spoken out in a presidential way you didn't respond to their twenty why now i mean do you do you agree with that i don't necessarily agree with that your hon but well don't necessarily do you agree that we should give chevron deference to board presidential opinion absolutely not your honor ok so you disagree with that i disagree with that you are ok why don't you why didn't she respond i mean we had a lot of twenty eight days and there's a little abuse of the proceeding with people overdoing it but in this case they say something about a presidential opinion the presidential opinion just logic is some of your earlier arguments because you didn't know  court without with already to do so i don't know that we we thought we had that opportunity if there's an intervening i mean this is the quintessential twenty eight j circuit right they took advantage of but you don't think they're filing a twenty eight letter on this presidential opinion was improper it's exactly the kind of signal they should write i haven't considered that but it sounds like the court feels it was ok you are dealing with eight hundred and thirty claims how can that be what congress intended in terms of the system if that's the end of the day you're going to be forced to hear to does your honor i can tell you that there is another layer to this iceberg that isn't even before this court which is that when these when the petitions were filed and when the case was filed that was filed against windy city it was filed by windy city against facebook and against microsoft mean they were in this i don't know about that but what it wanted to that has no meaning for me if i'm a responsible moire for a petition and i know my one year plot is going to run they were absolutely right they're one if you're asking for how someone could address that microsoft filed an i p o on the same day that facebook did and essentially the same case for the same district court and use a representative claim and they got institution and so that would be a and you don't identify which ones if you're presenting the defendant in this kind of complaint do you not feel like you have to admit preserve your rights for p r involving all of the claims of the your hon think they would have to to preserve their rights additionally with regard to that you for how it can't be right that is a policy ok maybe we don't do policy but don't you appreciate members and what the director in this presidential order not that there had to be at least one image of suction to the rule to prevent that unnecessary use of resources by them by you by the patent office to get the i p r is evolving eight hundred and thirty months absolutely not necessary your honor there is another if we're looking at eight one hundred and thirty dollars claims across four patents which is the case here it is the situation would be the same if it were fifteen claims for patent but they were just more know the impact that ever was prepared to really address it on the merits that had only had fifty five claims and there was no reason why specifically for one patent fifty five claims why facebook couldn't file an i p r with fifty five claims many others have problem built into this system and if that problem is built into the system could congress have ever intended the problem be it no solution it doesn't make any sense because it was clear what congress wants to do is to permit a defendant who's claimed against in a lawsuit to go to the p t a and get what they consider to be court that you allege all of the claims that you're going to pursue in that court in your complaint usually courts california other courts have contention processes whereby you name the claims you're going to pursue in that case at a certain point and so there are you know but you talk about i mean i don't know maybe you're right but it seems to me even in this case you talk you just listed the patents you didn't identify any tweens but you certainly said meet the lege infringement of the patent is there such a thing yes your honor that's why it's called patent infringement and up and claim infringement the action itself and let me ask you in the amendments so even if you were to look hypothetically if  is an issue for the district or you or the meeting wasn't your pleading subject to summary dismissal your honor i don't know i have to i have to admit that i'm not the counsel in the district court in this case so i don't know the full history of that but i would imagine that in a case for talking hypothetically that those concerns are addressed at the dismissal stage by filing a motion to dismiss under rule twelve alleging that the complaint fails to state a claim under twamley that's that's a better disposition that you you heard me reciting what i understood from sorting through all the briefs what seems to be the history of this case you don't disagree with that as your honour's had stated earlier today that is only given when the statute has some ambiguity and our reading of the statute we don't see anything other than the plain reading of the statute and as your honour's have said it may need to be construed but there's nothing ambiguous about the statute and statutory interpretation that's something well within the purview of this court and the the patent office can't rewrite the statute even if it designates the opinion as presidential statutes the statute perhaps and we need to take that up with congress but i would say one thing about a mechanism if if this issue were not to be reached in this case which is that we have only raised this issue as a cross appeal issue and specifically with regard to the two hundred and forty five patent in the alternative  our position is still that the merits of the petition in that case were correct the patent office came to the correct decision the claims are not unpatentable that was a final written decision and that this issue need not even be reached but if it were to be reached because of some issue with  i i think i understand what you're saying but i have a different kind of a question with that is that as i mentioned to mr t some of the claims that they lost that is something to they're here with the new stuff that came in so the jointers is that what you were saying what i was saying iran or with regard to the two for for let's just want to talk about you for five at the remainder of the patterns we were willing to submit on the briefing for the two for five and which is the only one currently alive in district court right now all the other patents have been you're not elected to go forward to trial so with regard to the two hundred and forty five pat pat down or has one all of the claims at issue there the patent office found that every claim petition was not obvious non obviousness for all of those claims we won both the claims in the original petition as well as the follow on petition so that facebook has appealed that decision and and argues that the patent office got the got it wrong which we disagree with we only mentioned the statutory issue of could we even be here should we even be here at all in response to their argument that they should that you should your honor should find the patent to be obvious and so argument is only merits of should we even have been here to begin with which raises the statutory question i i think i know what you're saying but i think you're wrong because we looked at this initial way because we thought there was a waiver issue because somewhere in your patent you talk about it in your summary of argument you use it is an alternative with respect to facebook which seems to be what you're saying here that they're there appeal the thing well then in the argument section  deal with jointer here it affects everybody across the board and i wrong about that i understand what you're saying but that's what you said in your summary of the argument and i thought oh good we're going to know what we have to look at here but then when i read your argument i'm trying to be fair you because submitted on the papers it's still an issue before us doesn't take it off the table right i think it's right there are no point you're trying to make and trying to find out if you agree with that is if we patent but the argument that the patent office made that obvious this combination still applies to all the claims across the patents of the patent offices decision is upheld and the claims are found to be non obvious that should apply to all the arguments for all the claims across all the that would not be a loss for windy city if it were to be overturned in that way on this one final question and thank you very much for a very helpful is do you think that the court given let's assume at the extreme that we feel perhaps but from my client's perspective i don't know that it is really of any great import to my client whether or not the patent office weighs in on this issue but perhaps as a patent lawyer you know it makes some sense i appreciate  was just going to comment on that last question so ork i would be happy to have the patent office weigh in here i think it would be helpful for everyone so that you have a more fulsome record but i think your honor still can find that this may not be the right case for that because you can rely on the waiver argument the waiver i'm not i wasn't asking them to waive or not waive at the time of the p o p are the argument i'm talking about is the argument that they made in their opposition to our motion for opinion the board has discretion to deny the motion for joint or on its original on our petition they then received a ruling contrary because the board said yes it is in fact joined they didn't ask for rehearing they never raised the issue below ever as to whether or not the patent office had discretion the st time that issue was raised was in this appeal on the cross appeal and so an issue not raised below is deemed waived there is nothing i just ask you for the citation your were you preserve the waiver argument we were is that the great it wasn't in our blue brief because the issue of join and that was my only point because obviously i think they're going to be consistent with profanity but i wouldn't want to waive all rights to comment if all of a sudden he came in and said something contrary to your offer to help us we certainly appreciate that you are right we really appreciate your