[00:00:06] Speaker 02:
We have four cases on the calendar this morning.

[00:00:10] Speaker 02:
A patent case from the Patent Office to Veterans Appeals and a case from the Court of Federal Claims that is being submitted on the briefs and will not be argued.

[00:00:23] Speaker 02:
The first case is Hewlett Packard versus MPHJ Technology Investments 2015-14-27.

[00:00:33] Speaker 02:
Ms.

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

[00:00:38] Speaker 01:
Thank you, Your Honor.

[00:00:40] Speaker 01:
The Board's decision not to invalidate Claim 13 of the patented issue is not supported by substantial evidence.

[00:00:48] Speaker 01:
If you look at the Board's final decision, it refers to HP's discussion of Claims 1, 2, and 7 in the petition.

[00:00:58] Speaker 01:
The problem with that is that its site to that discussion is not to the discussion of the claim limitation ruled on, which is in Claim 9,

[00:01:07] Speaker 01:
in the claim 9, element 2.

[00:01:10] Speaker 01:
So, and HP's discussion in the petition of claim 9, element 2, clearly did make a showing that the required list of modules was present in the Scanjet 5 prior art.

[00:01:24] Speaker 01:
If we look at the board's decision, it refers to what was identified in the petition as claim element 9, or excuse me, 13.2, that claim element maps to 9.2,

[00:01:36] Speaker 01:
And in the petition, HP expressly stated that the Scanjet utility managed lists of destinations and workflows and it started automatically when Windows was started.

[00:01:47] Speaker 01:
A person of ordinary skill would recognize from this that a list of active processes and programs would be stored in a registry.

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Accordingly, the petition definitely addressed the list at issue.

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In addition, HP provided an explanation of that from its expert, Mr. Wibbles,

[00:02:03] Speaker 01:
Mr. Wibbles in Paragraph 132 confirms that Scanjet uses Windows and in Paragraph 132 he talks about the troubleshooting guide for the Scanjet manual which shows that software files were reinstalled if appropriate components were absent, evidence that shows in his opinion that the COM components of the Microsoft operating system were used.

[00:02:33] Speaker 01:
just like the COM components were used in a patent.

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And so the examples he cites are in the sections at pages 109, 114, and 118, where he says that system problems that the software was experiencing was a result of multiple applications trying to use these COM components that are found on a registry.

[00:02:52] Speaker 01:
And as a result, there was a practicing of element 9-2 in ScanJet.

[00:02:57] Speaker 02:
Ms.

[00:02:58] Speaker 02:
Morrow, I'd like to ask you about claim 13, obviousness issue.

[00:03:03] Speaker 02:
Yes, Your Honor.

[00:03:05] Speaker 02:
Is it not correct that you can file another IPR proceeding on that claim and that issue?

[00:03:14] Speaker 01:
It is correct, Your Honor.

[00:03:15] Speaker 01:
We are not time barred.

[00:03:16] Speaker 01:
There is no underlying litigation for HP.

[00:03:19] Speaker 01:
Our concern with that as a remedy is that, first, we have to file a new petition and start all over again, and second, that the Patent Office has been looking at subsequent follow-on petitions

[00:03:32] Speaker 01:
and providing a similar redundancy analysis on those, taking the position that a petitioner had had one bite at the apple and shouldn't get one bite at the apple again in a similar petition.

[00:03:44] Speaker 01:
And we provided a list of those examples in our papers.

[00:03:48] Speaker 02:
And so our concern is that if we are... Doesn't that run into a precedent of not being able to interfere in the decision to institute?

[00:03:58] Speaker 01:
With regard to that, Your Honor, we think that the Akades and Versada decisions did leave open a couple of avenues for review.

[00:04:09] Speaker 01:
If the question goes to the fundamental jurisdiction of the agency or if the question is one where the agency has clearly diverted from Congress's mandate.

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And we think this is such a situation.

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diverted from Congress's mandate here.

[00:04:27] Speaker 04:
They just use their discretion under the statute to select some grounds for an IPR.

[00:04:34] Speaker 04:
Well, if you look at the legislative history, and this is a piece of the history... What case can you cite me that suggests that not following legislative history is so completely departing from the statute that we could grant such extraordinary relief?

[00:04:49] Speaker 01:
I apologize, Your Honor, for not answering your question directly.

[00:04:52] Speaker 01:
With regard to the statute, we believe the discretionary argument is inconsistent with Section 316-11.

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Section 316-11 sets clear time limits for petitions.

[00:05:05] Speaker 01:
It also says, unlike the interference scheme, which gave the director substantial deference, it says that the agency shall act within 90 days on every petition, shall commence the review where the burden of proof has been met, and shall conduct each review under this chapter.

[00:05:22] Speaker 01:
And so we think the agency has clearly been directed to conduct review on all the petitions fairly presented to it.

[00:05:30] Speaker 04:
And if you look... They have no discretion whatsoever to determine whether IPR should be granted or not, if they determine that there's possibly a grounds.

[00:05:42] Speaker 01:
I do not believe they do.

[00:05:44] Speaker 01:
The language is mandatory.

[00:05:45] Speaker 01:
It says they shall institute, but only if they find the requisite statutory grounds are present.

[00:05:52] Speaker 04:
That seems to be putting a lot of weight on the word shall.

[00:05:55] Speaker 04:
I mean, there's lots of precedent all over the place.

[00:05:57] Speaker 04:
It says shall is sometimes a command and sometimes still gives discretion.

[00:06:02] Speaker 04:
How do we know here that it's a command?

[00:06:05] Speaker 01:
Well, and if you do look at the legislative history, there was a bargain basically made between the director and Congress.

[00:06:14] Speaker 01:
At the legislative history, Senator Kyle says that the Patent Office has expressed a preference for a particular model of examination.

[00:06:22] Speaker 01:
and believes it can comply with deadlines if that model is put into place.

[00:06:27] Speaker 04:
Even if we accept your argument, how do you get beyond the judicial bar on the institution decision?

[00:06:31] Speaker 04:
I mean, the argument you're making would gut the bar on judicial review.

[00:06:38] Speaker 01:
No, Your Honor.

[00:06:38] Speaker 04:
Because then we would have to look at whether proper grounds have been presented for a patentability argument.

[00:06:44] Speaker 04:
And if they had, your view is they had to grant review, so we would have to reverse it.

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That would put us in the instance of every single case where somebody who is dissatisfied with the decision can appeal that decision.

[00:06:59] Speaker 04:
And I think the same would go for the people who get review.

[00:07:02] Speaker 04:
If it's an automatic review and it's a patentability thing and that we can review that, then they're going to say, well, it shouldn't have been granted at all.

[00:07:11] Speaker 04:
And therefore, they improperly interpreted the shout language there.

[00:07:16] Speaker 01:
Well, if the agency is going to deny part of a meritorious petition.

[00:07:20] Speaker 01:
But we know it's meritorious.

[00:07:23] Speaker 04:
That's their call, isn't it?

[00:07:25] Speaker 01:
But they didn't make it in this instance, Your Honor.

[00:07:27] Speaker 01:
They issued a redundancy rejection that the solicitor's office has indicated is not a decision on the merits.

[00:07:34] Speaker 04:
How can you give me a rule of law that is limited in a way that won't open the floodgates to us reviewing every single initiation decision, which we're clearly barred from doing?

[00:07:45] Speaker 01:
Only that the specific adoption of the deference doctrine, the redundancy doctrine that the solicitor has been defending here is something that is not a proper exercise of agency discretion.

[00:07:58] Speaker 04:
The agency still has... So you think that they can't say, this is redundant, we're not going to review these?

[00:08:05] Speaker 04:
They can't say... So could they just deny it without giving any reason?

[00:08:08] Speaker 01:
It's like a district court.

[00:08:09] Speaker 01:
They can't say, we're going to take up two of your tort claims and not the floor.

[00:08:12] Speaker 04:
It's not like a district court.

[00:08:13] Speaker 04:
This is discretionary review.

[00:08:15] Speaker 04:
They clearly have the authority to deny review altogether without any reason.

[00:08:20] Speaker 01:
They only have the authority to deny review if there's a statutory bar or the threshold of the prior art has, in their expert opinion, not been met.

[00:08:31] Speaker 01:
And the reason it wouldn't open the floodgates is all we're asking them to do is make that determination on the merits instead of making the determination on the basis of agency convenience and workload.

[00:08:45] Speaker 01:
And if they had made a decision on the merits and it had been against us, we would not be back in front of you because of the bar that the court has clearly articulated in its case law.

[00:08:56] Speaker 01:
Instead, the other way that the agency has approached this in other cases that has been provided the petitioner a bit more ability to be heard on this issue was in one of the cases they provided

[00:09:11] Speaker 01:
notice to the petitioner that they were going to deny a part of the petition and let the petitioner explain why the remaining grounds weren't redundant.

[00:09:18] Speaker 01:
And that kind of a process, had it been adopted by the agency, similarly wouldn't have us back here complaining that there had been some kind of abusive discretion.

[00:09:27] Speaker 01:
It's only the notion that you go file your petition.

[00:09:31] Speaker 01:
It's a meritorious.

[00:09:33] Speaker 01:
You want a review of the petition to see if it's meritorious, and they decide not on a statutory ground.

[00:09:38] Speaker 01:
that we're challenging here.

[00:09:39] Speaker 01:
So we don't think the decision here would unduly implicate the court's review of other interference decisions on questions.

[00:09:47] Speaker 04:
But it would prevent the PTO from refusing to initiate on redundancy grounds in any case whatsoever.

[00:09:54] Speaker 04:
Because your argument is essentially that that's not a valid reason for refusing to initiate review.

[00:10:00] Speaker 01:
They could refuse to initiate review if, in fact, they looked at the prior art and determined that the grounds were indeed redundant.

[00:10:07] Speaker 01:
But here what happened is they didn't assess the art on the merits, and they determined that in anticipation.

[00:10:13] Speaker 01:
How do we know that?

[00:10:14] Speaker 01:
The solicitor's office has indicated the decision was one of efficiency and not one on the merits.

[00:10:22] Speaker 04:
That was my question, though.

[00:10:24] Speaker 04:
Your view is that they don't have the statute authority to say this is redundant, and in terms of agency efficiency, we're not going to look at it.

[00:10:32] Speaker 04:
That is our view, yes.

[00:10:33] Speaker 04:
We're in the statute that is even remotely suggestive.

[00:10:36] Speaker 04:
That's not a permissible ground.

[00:10:38] Speaker 01:
They have been instructed to conduct certain reviews.

[00:10:43] Speaker 04:
You're coming back to the word shall, and that's mandatory, right?

[00:10:47] Speaker 01:
A minor, yes.

[00:10:47] Speaker 01:
Okay.

[00:10:48] Speaker 01:
And then the other issue is that the way that the agency is proceeding and taking up these issues piecemeal is we don't think consistent with the Administrative Procedures Act.

[00:11:01] Speaker 01:
Because in a situation like this where there's a formal adjudication, usually what happens is the agency is directed to take up all issues in the petition that are fairly presented to it and issue a decision on it on the merits.

[00:11:14] Speaker 01:
And here the agency has elected not to do that.

[00:11:17] Speaker 01:
We do think that's inconsistent with basic instructions in the statute on how the agency is to progress when it has been assigned an adjudicative function like it has here.

[00:11:35] Speaker 02:
You can say the remainder of your time if you like.

[00:11:38] Speaker 02:
I'll continue as you wish.

[00:11:40] Speaker 01:
I did just want to, with the court's leave, point out a little more of the evidence with regard to Claim 13.

[00:11:46] Speaker 01:
There was also a concern we had that the board gave improper weight to failure to respond to arguments in the reply.

[00:12:01] Speaker 01:
They indicated that HP had not responded to all of the petitioners' arguments.

[00:12:06] Speaker 01:
And I just wanted to correct the record on that, which is that at pages 10 and 11 of HP's reply, we did respond to their arguments.

[00:12:13] Speaker 01:
We didn't respond to all of them.

[00:12:15] Speaker 01:
And so there was no reason for the board to conclude that HP had somehow waived the presentation of evidence on claims nine and 13.

[00:12:24] Speaker 01:
So that was at page 10 and 11 of our reply brief.

[00:12:28] Speaker 01:
And there we responded to their argument on the enable virtual copy operation means.

[00:12:33] Speaker 01:
It's not listed by claim number, but that's also in claim nine, the element before the element that the board ruled on.

[00:12:42] Speaker 01:
And then finally, to the extent there's any concern about

[00:12:45] Speaker 01:
Mr. Myers purported case-ending admissions.

[00:12:48] Speaker 01:
We don't think that that could support the board's decision.

[00:12:52] Speaker 01:
He was simply speaking.

[00:12:53] Speaker 01:
He'd been asked about claim construction on another element in the passage right before the board cited.

[00:12:58] Speaker 01:
He was asked again about claim construction on this element, answered in terms of what was in the patent, and we don't believe made any admission that the claims were not invalid over the scanjet or CATE references, if I could reserve the rest of my time.

[00:13:15] Speaker 02:
Thank you, Ms.

[00:13:16] Speaker 02:
Morrow.

[00:13:18] Speaker 02:
Mr. Ganty for MPHJ, and you're going to yield five minutes to the PTO.

[00:13:40] Speaker 03:
May it please the court.

[00:13:42] Speaker 03:
The appellant has raised

[00:13:43] Speaker 03:
challenges with respect to the final written decision and the non-final institution decision, I'll be addressing the issues pertaining to the final written decision.

[00:13:53] Speaker 03:
Appellee respectfully requests that this Court affirm the Board's decision that Claim 13 is not anticipated by the prior Art of Record.

[00:14:04] Speaker 03:
This issue is reviewed under the Substantial Evidence Standard.

[00:14:08] Speaker 03:
There are two pieces of Substantial Evidence

[00:14:10] Speaker 03:
that the board relied upon in concluding that Claim 13 is not anticipated.

[00:14:15] Speaker 03:
First, the board looked at the prior art and relevant portions of the prior art as it maps to Claim 13.

[00:14:23] Speaker 02:
Mr. Ganti, I heard you say that you wanted to talk about the merits issue, but you're here representing the Pellee, and so I'd like to ask you, as well as Ms.

[00:14:37] Speaker 02:
Nelson for the PTO,

[00:14:39] Speaker 02:
about this institution point.

[00:14:42] Speaker 02:
The PTO denied institution with respect to claim 13 on the obviousness issue as redundant in light of the reasonable likelihood that the challenge claims are unpatentable based on the grounds on which we institute inter partes review.

[00:15:02] Speaker 02:
But that premise wasn't met because the board did not

[00:15:09] Speaker 02:
find the claim unpatentable under 103.

[00:15:16] Speaker 02:
So what are we to make of the fact that the PTO's premise didn't turn out?

[00:15:23] Speaker 03:
I think the first step of the inquiry is looking at the differences between the obviousness challenge and the IPR institution decision versus the anticipation challenge in that petition.

[00:15:38] Speaker 03:
And based on the PTAB's review of the petition, they did not see any substantial difference between the anticipation and the obviousness challenge, particularly with respect to the claim elements that were not found in the prior art.

[00:15:54] Speaker 02:
So had there been a back... The board found that 13 wasn't anticipated, right?

[00:15:58] Speaker 03:
That's correct.

[00:15:59] Speaker 02:
That was the premise upon which they stated that the ground was redundant.

[00:16:06] Speaker 02:
doesn't turn out to have been redundant.

[00:16:12] Speaker 03:
Well, the board hasn't evaluated the question of obviousness to a final written decision by considering the full record on the obviousness issue.

[00:16:23] Speaker 03:
Because in their preliminary institution decision, they deemed it was redundant.

[00:16:28] Speaker 03:
And they excluded that part.

[00:16:30] Speaker 03:
They excluded that ground in the final written decision.

[00:16:33] Speaker 03:
So the board never considered the obviousness challenge in light of the full record, which should include the appellees' chance to oppose the IPR petition and the appellees' right to provide some sort of expert testimony against that obviousness challenge.

[00:16:56] Speaker 03:
None of that was in the record at the time that the board made its redundancy determination.

[00:17:03] Speaker 03:
But going back to the anticipation finding in the final written decision, the board did consider relevant citations to the prior art.

[00:17:12] Speaker 03:
The prior art is the most important piece of evidence to consider.

[00:17:15] Speaker 03:
That equates to the substantial evidence requirement.

[00:17:18] Speaker 03:
In addition, the board also considered expert testimony offered by Appellee.

[00:17:24] Speaker 03:
Where specifically and what pieces of evidence does show that the board considered the scanjet reference?

[00:17:32] Speaker 03:
In the final written decision in the language, it's on A86, the board outlined four among the number of arguments that the patent owner has made.

[00:17:45] Speaker 03:
These arguments were presented in the patent owner response.

[00:17:48] Speaker 03:
And in those arguments, the patent owner, the appellee, cited to the prior art, Scanjet 5.

[00:17:58] Speaker 03:
Wait a minute.

[00:18:00] Speaker 04:
A86, but A86 is about Claim 14.

[00:18:04] Speaker 04:
We're talking about Claim 13, aren't we?

[00:18:10] Speaker 03:
Right under the heading SJ5.

[00:18:14] Speaker 03:
Right.

[00:18:15] Speaker 03:
That's with regard to Claim 14.

[00:18:17] Speaker 03:
I thought this appeal was about Claim 13.

[00:18:20] Speaker 03:
In the second paragraph under the heading Scangip SJ5, the board explains that the patent owner makes a number of arguments regarding Claim 13.

[00:18:31] Speaker 03:
And then the board outlines four of those arguments that were made.

[00:18:37] Speaker 05:
One of the arguments that I understand HP to make is that the board incorrectly restricted itself to evidence proffered with respect to claims one, two, and seven.

[00:18:55] Speaker 05:
What's your answer to that?

[00:18:57] Speaker 05:
The board, they're obviously referring

[00:19:01] Speaker 05:
HP there is obviously picking up on the statement at appendix 87.

[00:19:07] Speaker 03:
That's correct, Your Honor.

[00:19:09] Speaker 03:
What's your answer to that argument?

[00:19:13] Speaker 03:
It's a two-part answer.

[00:19:15] Speaker 03:
The first part is that that's one sentence in the final written decision language that says, generally refers to claims one, two, and seven.

[00:19:25] Speaker 03:
More importantly, there's a whole analysis that exists before that one sentence, which is an analysis of looking at the patent owner response, where a number of arguments were made.

[00:19:36] Speaker 03:
And the board picked four among a number of arguments, filtering them down to what they believe were the most persuasive arguments as to why Clayton 13 is not anticipated.

[00:19:47] Speaker 03:
Those arguments reference the Scanjet 5 patent, page 34 of that patent.

[00:19:53] Speaker 03:
It references expert witness testimony offered by the appellee in the form of Mr. Aren't they focused on claims one, two, and seven?

[00:20:06] Speaker 03:
Those particular four arguments address features that are not in claims one, two, and seven.

[00:20:13] Speaker 03:
Those are features that are found in claims nine and claims 13.

[00:20:17] Speaker 03:
specifically maintaining a current active module means.

[00:20:21] Speaker 03:
That's something that's found specifically in claims 9, claims 11, and claim 13, but not in claims 1, 2, and 7.

[00:20:30] Speaker 04:
But the problem is the board doesn't even reference anywhere that you consider the argument that HP provided with respect to claim 9, which is, I think, the same as claim 13, is it not?

[00:20:42] Speaker 04:
Right.

[00:20:42] Speaker 04:
Those are same limitations.

[00:20:44] Speaker 04:
Instead, in rejecting all of these arguments,

[00:20:48] Speaker 04:
that you're referencing on page 46, they say it only refers to analysis of claims one, two, and seven.

[00:20:56] Speaker 04:
It doesn't say anything about the analysis for claim nine.

[00:20:59] Speaker 04:
How do we know that the board looked at HP's arguments with respect to claim nine and to map all these things?

[00:21:09] Speaker 03:
The biggest clue is that these particular arguments reference claim elements that are only found in claims nine and 13.

[00:21:17] Speaker 03:
such as the active modules.

[00:21:21] Speaker 04:
Why is the board saying the petition looks at claims one, two, and seven for this argument instead of at claim nine?

[00:21:28] Speaker 03:
One reason is that the board found that claim nine, while it has the same limitations as claim 13, some of those limitations are alternative, and therefore the board did not give them any patentable weight.

[00:21:39] Speaker 03:
So from the board's perspective, they're considering claim nine as so broad that

[00:21:47] Speaker 04:
OK, so can we move beyond just what the decision says?

[00:21:50] Speaker 04:
Because this decision is really sloppy and it's hard to parse.

[00:21:54] Speaker 04:
But where in the record is substantial evidence supporting this analysis?

[00:22:01] Speaker 03:
In the record, these four arguments were made in the patent owner response, which is in the substantial evidence is just basically they rejected HP's arguments and accepted your arguments that these weren't shown.

[00:22:18] Speaker 03:
Yes, Your Honor.

[00:22:19] Speaker 03:
And in addition to that, the arguments that were accepted cite to the substantial evidence, which is expert testimony and the prior art.

[00:22:28] Speaker 03:
So by framing the arguments that were expressed in the record, those arguments cite to the substantial evidence.

[00:22:36] Speaker 03:
So it's a way of the board to short circuit and reference just the argument when really that argument references a whole bunch of other evidence underneath it.

[00:22:47] Speaker 05:
Isn't relevant here the several claim charts that appear at, I'm looking at the appendix now, 22, 75, 76.

[00:22:55] Speaker 05:
It seems that in those claim charts, HP tells the board to look to the reasons cited for claims 1, 2, and 7 with a relevant disclosure of SJ5 as it relates to claim 9.

[00:23:17] Speaker 05:
And then for claim 13, HP cross-references to other claims, including nine.

[00:23:25] Speaker 05:
It cites to one, two, and seven.

[00:23:27] Speaker 05:
Is there anything relevant there?

[00:23:29] Speaker 03:
The only thing that's relevant there, Your Honor, is possibly the second sentence that says, Scanjet 5 utility maintains a list of destinations and workflows.

[00:23:39] Speaker 03:
That might be the only thing that's extra.

[00:23:42] Speaker 05:
Well, what I'm saying is, if Hewlett-Packard is directing

[00:23:46] Speaker 05:
the board's attention to these claims, can it be argued that the board was directed to 1, 2, and 7 for 9, and that 13 and 9 are the same, so they would have gone to 1, 2, and 7?

[00:24:08] Speaker 03:
I believe that's correct, Your Honor.

[00:24:12] Speaker 03:
It's a matter of looking at these claim elements

[00:24:16] Speaker 03:
Claim 9 has the same claim elements as claim 13.

[00:24:20] Speaker 03:
Some are optional in claim 9, which is why that claim was ultimately held.

[00:24:25] Speaker 05:
Claim 9, which is the same as 13, they were totaled up to 1, 2, and 7.

[00:24:29] Speaker 05:
That's right.

[00:24:32] Speaker 05:
And then the board cites 1, 2, and 7.

[00:24:35] Speaker 05:
That's correct.

[00:24:37] Speaker 03:
I have nothing further, and if there are any other questions, I'd like to yield to counsel for intervener.

[00:24:43] Speaker 02:
Thank you, Mr. Gonti.

[00:24:45] Speaker 02:
Please, Nelson.

[00:25:03] Speaker 00:
May it please the court?

[00:25:04] Speaker 00:
Good morning, Judge Laurie.

[00:25:07] Speaker 00:
This court lacks jurisdiction to review the board's decision not to institute...

[00:25:13] Speaker 05:
Leaving aside the jurisdictional question, I'm just wondering, because I had their cases in the court and I had one earlier this week, why does the board follow, and I'm sort of picking up, I think, on what Judge Lurie was saying earlier, why does the board go to anticipation and say, we're not going to look at obviousness because it's redundant, when it would seem to me you'd want to consider them both in case

[00:25:42] Speaker 05:
you don't find anticipation as happened here.

[00:25:44] Speaker 05:
I realize this doesn't relate to the jurisdictional question, but it does seem to be something that we're seeing.

[00:25:51] Speaker 05:
I saw it in the case earlier this week.

[00:25:54] Speaker 05:
Why does the board do this?

[00:25:56] Speaker 05:
Why doesn't it say, OK, we're going to look at anticipate.

[00:25:59] Speaker 05:
You've urged this anticipation and obviousness.

[00:26:03] Speaker 05:
We're going to look first at anticipation.

[00:26:05] Speaker 05:
And then if we don't find anticipation, we'll go to obviousness.

[00:26:12] Speaker 00:
better approach to cover all the bases.

[00:26:17] Speaker 00:
I think in this case that I looked at the evidence and had found, at least from the standard, the reasonable likelihood standard, it's found pretty good evidence of anticipation.

[00:26:29] Speaker 05:
But then, as Judge Lurie points out, the board said no anticipation.

[00:26:34] Speaker 05:
I mean, it just seems logical that

[00:26:40] Speaker 05:
If you're sitting there, OK, we think it's anticipated.

[00:26:43] Speaker 05:
But the obvious argument has been made.

[00:26:46] Speaker 05:
If it's not, we'll institute that too.

[00:26:49] Speaker 05:
And if we need to get to it, we will.

[00:26:51] Speaker 05:
Why doesn't the board do that?

[00:26:53] Speaker 00:
Well, I don't think that's always the case that it doesn't do it.

[00:26:56] Speaker 00:
I think in this particular case, one of the reasons it may have decided to do that is it thought that, at least at the reasonable likelihood standard, there was pretty good evidence of anticipation.

[00:27:09] Speaker 02:
In other words, the very premise of their decision was shown not to have been valid.

[00:27:17] Speaker 02:
In other words, claim 13 was found not to have been anticipated.

[00:27:22] Speaker 00:
I think it found that there was a reasonable likelihood, but then when it went on and considered additional evidence, it found that in fact the preponderance of the evidence standard was not met and therefore there was... Isn't your answer is that that's irrelevant in view of the statute?

[00:27:35] Speaker 00:
Well, I think it is your relevant view in the statute, but I was just trying to address Judge Schall's question.

[00:27:40] Speaker 00:
And yes, I think they can deny for any reason.

[00:27:46] Speaker 00:
But the other point I would think in this case is that

[00:27:50] Speaker 00:
I think they looked that there are these two references.

[00:27:52] Speaker 04:
But the problem is they're doing it in terms of efficiency and it's turning out to be completely inefficient because anticipation is sometimes harder to show and they're finding either that it's not anticipated, which is going to force you to go through another round if HP files another IPR on obviousness, or they find anticipation and then we reverse and send it back and find it not anticipated.

[00:28:15] Speaker 04:
And what may have been clearly obvious, nobody can reach until a new IPR.

[00:28:19] Speaker 04:
I mean, this efficiency argument seems ill-considered in the long-term scheme of this.

[00:28:25] Speaker 00:
I'm not sure it is in this circumstance, however.

[00:28:27] Speaker 04:
I mean, first of all, in the lion's share of cases, I think... Well, it's certainly going to, I suspect, cause another IPR to be filed on this.

[00:28:35] Speaker 00:
There may be another IPR filed.

[00:28:37] Speaker 00:
I'm not sure that necessarily would come out differently.

[00:28:40] Speaker 00:
And the reason I say that here is because both the user's guide and the press release are directed to the same Scanjet 5 printer.

[00:28:49] Speaker 00:
The press release is this six-page document.

[00:28:52] Speaker 00:
The user's guide is a 140-page detailed document about the same scanner.

[00:28:58] Speaker 00:
HP has failed to point to any evidence that's in the press release that's not in the user's guide, and particularly with respect to the relevant limitation here.

[00:29:06] Speaker 00:
The only limitation they found not to be anticipated, which is this limitation with respect to the list of available module means.

[00:29:15] Speaker 00:
So I think in this case,

[00:29:17] Speaker 00:
I'm not sure that the board was really that off base, and I think it was a very efficient process.

[00:29:23] Speaker 00:
Moreover, I just want to follow up on what George Laurie asked at the onset.

[00:29:28] Speaker 00:
They had several opportunities that they did not pursue.

[00:29:31] Speaker 00:
One, they could have asked for reconsideration of the obviousness, the denial of the obvious ground, and they never did that.

[00:29:39] Speaker 00:
Secondly, during this proceeding, they could have filed another petition with the obviousness and asked for, joined our

[00:29:46] Speaker 00:
And secondly, even now, because there's, to my knowledge, no ongoing litigation, there's no time bar, they could also file another petition at this point and provide more detailed explanation of why, even though the board found it not to be anticipated, why there's something additional in the press release that would render it obvious.

[00:30:08] Speaker 00:
If there are no further questions, I'll see the remainder of my time.

[00:30:12] Speaker 00:
Thank you.

[00:30:13] Speaker 02:
Ms.

[00:30:14] Speaker 02:
Morrow has a little time, two and a half minutes.

[00:30:19] Speaker 01:
Thank you, Your Honor.

[00:30:20] Speaker 01:
First, just a note on the record with regard to the evidence underlying claim limitation 13 in the actual petition as opposed to the expert declaration at A109.

[00:30:35] Speaker 01:
It does indicate that SJ5 anticipates 13

[00:30:40] Speaker 01:
preamble through four through the same reasons, nine are anticipated by SJ5.

[00:30:45] Speaker 01:
And so there was no reference there to claims one, seven, et cetera.

[00:30:50] Speaker 01:
The reference to claims one, seven, et cetera, were in the expert declaration where the expert referred back to the evidence that he had compiled in connection with those other claims.

[00:31:00] Speaker 05:
So that's what I was referring to, the 2275?

[00:31:04] Speaker 01:
Yes, Your Honor.

[00:31:04] Speaker 01:
I believe that's the chart accompanying the expert declaration.

[00:31:09] Speaker 01:
And so the actual petition identifies the basis as being the same as for claim nine and does not refer the court to those other provisions.

[00:31:20] Speaker 01:
The expert chart cites those other provisions just to provide additional support because the other limitations talk about the workflow that he then talks about in more detail with regard to claim nine.

[00:31:31] Speaker 01:
So we think the record is clear that HP sought review on the evidence on claim nine.

[00:31:37] Speaker 01:
And the board looked at the raw evidence in looking at claims one, two, and seven to the exclusion of the evidence on claim nine.

[00:31:47] Speaker 01:
Now, with regard to the IPR issues, in the lion's share of cases, there would be no fix because the deadline would have passed.

[00:31:57] Speaker 01:
We're just in this unique situation because MPHJ has elected to press its demands against HP customers instead of HP, and there's no pending litigation.

[00:32:07] Speaker 01:
In addition, if we were to refile, we've cited a number of petitions to the court where the board has exercised its discretion and held that because a petitioner or someone in privity with a petitioner had had an opportunity to be heard on similar art, that the court would deny that petition for efficiency sake.

[00:32:26] Speaker 01:
And so there is no assurance that were we to file another petition, it would not receive the same quick disposition that the claims of obviousness did in this petition.

[00:32:37] Speaker 01:
And finally, there's been a little bit of kind of post-hoc explanation of why the ground wasn't that significant.

[00:32:44] Speaker 01:
But there was key argument in the record by the other side that this would have responded to.

[00:32:49] Speaker 01:
For example, they said that the scanjet reference wasn't a server, and the press release showed that the thing network deployed.

[00:32:57] Speaker 01:
And so there were specific distinctions.

[00:33:00] Speaker 01:
between the two that had we been given the opportunity to explain them to the Patent Office, we feel confident they would have not been able to make the same redundancy decision on the parents rather than on expediency.

[00:33:13] Speaker 02:
Thank you, Ms.

[00:33:13] Speaker 02:
Morrow.

[00:33:14] Speaker 02:
We'll take the case to the Vice.