[00:00:10] Speaker 06: The next case for argument is 15-1020, Colatec versus Sentear Technologies. [00:01:08] Speaker 06: Don't sit down, Ms. [00:01:09] Speaker 06: Arner. [00:01:09] Speaker 06: We're ready for you whenever you're ready. [00:01:39] Speaker 01: I reserve three minutes for my rebuttal time. [00:01:44] Speaker 01: May it please the court? [00:01:47] Speaker 01: A lot has happened since the briefing completed in this case, and I'd like to begin by addressing one of these recent developments, this court's decision in Microsoft versus Proxycon, which involves two issues that are relevant here. [00:02:02] Speaker 01: First, the Proxycon court's discussion of the proper framework [00:02:07] Speaker 01: for analyzing the broadest reasonable interpretation of a claim in IPR confirms the board's legal error here in adopting an unreasonably broad construction of the term outlet including a second chamber. [00:02:23] Speaker 01: Second, the court and proxy con expressly left open the question of whether the patent office can properly require, as it did here, that a patent owner who wishes to amend its claim during IPR must show patentability [00:02:36] Speaker 01: not just over the art involved in the trial, the art of record, but also the art not of record but known to the patent owner. [00:02:45] Speaker 01: I'd like to begin with that claim construction issue and then return to the motion to amend. [00:02:52] Speaker 01: The claims here require a reservoir that is partially filled with liquid with a head space above. [00:03:00] Speaker 01: And the head space is in fluid communication with an outlet that includes a secondary chamber [00:03:05] Speaker 01: through which the gas in the reservoir passes from the headspace to the outlet to exit the scent diffusing device. [00:03:14] Speaker 01: The board's construction of the claimed outlet including a second chamber is erroneous because it reads the word chamber out of the claim. [00:03:23] Speaker 06: Yeah, the concern I have, I understand your argument and I appreciate it with regard to chamber. [00:03:28] Speaker 06: The concern I have is that, I guess it was other counsel below, but whether or not those arguments were actually made to the board. [00:03:36] Speaker 06: whether the question of how to construe chamber was in play below. [00:03:41] Speaker 01: Of how to construe the word chamber? [00:03:45] Speaker 01: Yes, I think the council below argued the specification support, and we can get you the citation for that, that the specification shows and describes a chamber with a transverse bulkhead and that that requires some level of physical separation between the head space and the outlet. [00:04:06] Speaker 01: And that was in the context below of distinguishing, in the anticipation context, the simple outlet in the Benela Cudger reference. [00:04:14] Speaker 01: And we noted in our brief that, in the prosecution history, that second chamber outlet, limitation, was added to the claim to overcome just such a prior art reference, which was a canister with a simple exit opening. [00:04:32] Speaker 01: And in the joint appendix, [00:04:36] Speaker 01: the language of that amendment. [00:04:38] Speaker 01: But in the below, the focus on the transverse bulkhead, the specification explanation that the outlet had some structure to it before the gas can escape the canister. [00:04:52] Speaker 02: So in your concern, just to go back to an issue that could be just positive with respect to the right to amend, is your concern [00:05:04] Speaker 02: primarily that with the burdens, the placement of the burdens and the need to represent and establish that the amended claims were patentable and where the burden of proof and the predominance was or is it that the next stage that had the amendment been permitted as you had requested that it would have solved all of the other problems? [00:05:32] Speaker 01: I think our concerns are both. [00:05:34] Speaker 01: We did address in our brief that we believe the burden was improperly placed on the patent owner in light of the statutory language that says very specifically that the burden of proving any proposition of unpatentability is on the petitioner. [00:05:48] Speaker 01: But we do understand that the Proxycon case found that it was proper for the Patent Office, at least at some level, to require the patent owner to make some showing. [00:05:58] Speaker 01: And our position is, so that's the first question. [00:06:01] Speaker 01: We do stand by the briefing on the statutory interpretation. [00:06:05] Speaker 06: But more specifically- We recognize that that issue has been resolved. [00:06:08] Speaker 01: We see in ProxyCon, that's right. [00:06:09] Speaker 01: But in footnote four in ProxyCon, this court specifically noted that it was not reaching the question of whether it's possible, as the board has interpreted the statute and its regulations, to require the patent owner to show patentability over both the prior art involved in the trial and [00:06:27] Speaker 01: all prior art outside the trial. [00:06:29] Speaker 06: And what if the practical matter was the issue here that was outside of the record in terms of prior art? [00:06:34] Speaker 01: There were two references in the prosecution history that the petitioner reached back to in its opposition to the patent owner's motion. [00:06:43] Speaker 01: So procedurally the patent owner here filed a motion to amend and in its motion proved patentability over all of the art of record in the trial. [00:06:52] Speaker 01: Both art that was in the petition and not instituted [00:06:55] Speaker 01: and art that was instituted. [00:06:56] Speaker 01: There's no dispute here that the patent owner did that in their motion. [00:07:00] Speaker 01: But as the judges in the board in the oral argument said, why did they even need to look past the motion to read the opposition? [00:07:08] Speaker 01: They said that a couple of times because the motion, they said, was deficient, even though it did that. [00:07:15] Speaker 01: Procedurally, what happened next, the petitioner came in with an opposition to that motion, and they introduced additional references [00:07:22] Speaker 01: from the prosecution history. [00:07:23] Speaker 01: So that's outside of the trial record and said that these could be combined to fill the gap that was still left over the art of record. [00:07:33] Speaker 06: And in the reply... This was in the prosecution history regarding the art of record. [00:07:37] Speaker 01: That was in the prosecution history of the patent. [00:07:39] Speaker 06: Right, okay. [00:07:40] Speaker 04: So it was known to you, obviously, you collectively. [00:07:43] Speaker 01: Yes, that's right. [00:07:44] Speaker 01: And there's no dispute over that. [00:07:45] Speaker 01: But if you read the statutory framework for an IPR proceeding, I think that is improper. [00:07:51] Speaker 01: The board's regulations, it's improper for two reasons. [00:07:54] Speaker 01: It's improper because it conflicts with the statutory framework, which cabins the process of an IPR to prevent what the patent office says will be unexamined claims floating out unless we make the patent owner talk about all of the art that they know. [00:08:08] Speaker 01: And that's not correct under the statute. [00:08:11] Speaker 01: If you read the IPR statute, it starts, of course, with an issued claim. [00:08:15] Speaker 06: Sorry to interrupt, but I guess there's a leap here, and I'm just not getting it, which [00:08:20] Speaker 06: that issue of prior art outside of the record, but then you're sort of equating that and saying that the prosecution history of the patent consists of, is equivalent to all prior art outside the record? [00:08:33] Speaker 01: So the prosecution history is outside the record in the trial. [00:08:37] Speaker 01: The way the IPR statute works, you start with an issued patent and when you want to amend the claim, the statute requires you can only narrow it [00:08:47] Speaker 01: and you can only have, you cannot add any new matter. [00:08:51] Speaker 01: So within that, we've got a claim that's been examined fully by the Patent Office during original examination and it's been granted and it's been examined over all our... Yes, we can skip that part. [00:09:02] Speaker 01: So there we are, so we're at this narrowing, we're trying to narrow. [00:09:04] Speaker 01: So the question really is, is it narrowing enough to remain patentable? [00:09:09] Speaker 01: And the IPR statute specifically said what the issue is to be adjudicated. [00:09:14] Speaker 01: and it's adjudicated, not examined, right, in the IPR world. [00:09:18] Speaker 01: And the statute requires, we can't take away this presumption of validity and reopen the patent for anything. [00:09:24] Speaker 01: It says specifically that a petition cannot be considered unless there's specific grounds that are, and the statute requires the grounds in the petition have to be in writing and described with particularity. [00:09:36] Speaker 01: And so they've identified a problem. [00:09:38] Speaker 06: I want to talk about motions to amend now. [00:09:40] Speaker 01: No, I am actually, because I think it goes to the propriety of the board, [00:09:44] Speaker 01: the Patent Office's requirement that you go back and look at all of the art that the patent owner knows. [00:09:50] Speaker 01: That is improper in an IPR context where the Congress has said the issue to be adjudicated, again it's not an examination, the issue to be adjudicated is the grounds that the statute requires are in the petition and then the petition may not be instituted according to the statute unless those grounds, the specific art that is raised in the petition, unless those grounds as explained in the petition [00:10:13] Speaker 01: rise to the level of a reasonable likelihood. [00:10:16] Speaker 01: And that is the way that the statute cabins the issue for decision, the adjudication of the patent. [00:10:22] Speaker 01: And it makes sense the Patent Office has a regulation that requires that an amendment respond to a ground that's involved in the trial. [00:10:32] Speaker 01: And so, which makes sense if you think about the statutory framework. [00:10:35] Speaker 01: We have an issued claim that's patentable. [00:10:37] Speaker 01: They identify a problem when they have the grounds in the petition and then the [00:10:43] Speaker 01: patent owner has an opportunity to amend. [00:10:46] Speaker 01: And so they have an opportunity to fix that problem. [00:10:49] Speaker 01: And the patent office regulation makes sense to the extent that it says your amendment has to address something that is involved in the trial. [00:10:56] Speaker 01: That's the phrase in the patent office reg. [00:10:58] Speaker 01: But in the clause they have added through Idle Free and in our case, they're saying not just the ground in the trial, but also all of the art that you know about. [00:11:07] Speaker 01: That goes back to the prosecution history, perhaps any other proceedings involving the patent, and that explodes the adjudicatory nature of the amendment process in the IPR back to an examination, which is exactly what the Patent Office has even said it is not. [00:11:23] Speaker 01: And that requirement to distinguish art that is not involved in the trial conflicts with the statutory framework and is also an impermissible interpretation of the Patent Office's own regulation [00:11:36] Speaker 01: which while it deserves some deference, this court noted in ProxyCon, if the interpretation, as Idle Free is here, of the Patent Office's own regulation is inconsistent with the statute, it cannot stand. [00:11:48] Speaker 01: And that's the interpretation that was applied here. [00:11:51] Speaker 01: And at a minimum, this patent owner deserves a chance to go back to... Okay, can I just get clear? [00:11:56] Speaker 06: I mean, we've had a lot of cases this weekend. [00:11:58] Speaker 06: Yes, I understand. [00:11:59] Speaker 06: So I may be confusing this with another case, but I thought the board justified [00:12:04] Speaker 06: their denial of politics a motion to amend because you had not shown that the post-amendment would be patentable over the two pieces of prior art of record. [00:12:14] Speaker 01: So no, this is not art in the record. [00:12:16] Speaker 06: And I can point you to where this is. [00:12:18] Speaker 06: Well, the two pieces of art in the record, and I can't pronounce them for the life of me. [00:12:22] Speaker 01: But. [00:12:24] Speaker 01: Okay. [00:12:24] Speaker 01: And cicada are the two references. [00:12:27] Speaker 04: But Beno La Cuscia was in the record. [00:12:30] Speaker 01: Yes, exactly. [00:12:32] Speaker 01: And in our motion to amend, yes, we argued the difference was that there was not, that Benila Kuja was not, did not have a permanently joined Reservoir and Diffusion Head. [00:12:42] Speaker 04: And so the board... Sakaita is the one that was not, that was in the prosecution history. [00:12:47] Speaker 01: No. [00:12:48] Speaker 01: So Benila Kuja and Sakaita were in the, in the record in the trial. [00:12:52] Speaker 01: They were in the petition. [00:12:53] Speaker 01: They were properly in the trial. [00:12:55] Speaker 06: Can you tell us, show us in the board decision where it went awry and going beyond that? [00:13:00] Speaker 01: So if I can take you to... They begin discussing our motion on A-28. [00:13:11] Speaker 06: Right, I'm there. [00:13:13] Speaker 06: Is it all red, pontillette? [00:13:15] Speaker 01: So it's all red and pontillette. [00:13:17] Speaker 01: So those two references were introduced into the trial by the opposition to the motion to amend. [00:13:24] Speaker 01: Those were not in the petition. [00:13:26] Speaker 01: They were not part of the trial until the petitioner's opposition. [00:13:31] Speaker 01: In the motion to amend, the patent owner distinguished over Benalacuja and Cicada, the two pieces of art that were instituted and were in the grounds, and also all of the art that was in the petition but not instituted. [00:13:43] Speaker 01: So the patent owner distinguished patentability over all of the art involved in the trial, which is what the patent office regulation says a motion to amend needs to do. [00:13:52] Speaker 01: Address all of the art. [00:13:53] Speaker 06: Okay, but you're saying this art was in the opposition? [00:13:56] Speaker 01: So this became, yes. [00:13:58] Speaker 01: So Allred and Pontlet became part of the trial for the first time in the opposition to the patent owner's motion to amend. [00:14:06] Speaker 01: And the patent owner addressed those additional references in its reply to the board, including providing reasons why they would not be combinable, in particular regarding the addition of the Allred reference. [00:14:21] Speaker 06: So those pieces of prior art were in play in the adjudication of the IPR, right? [00:14:26] Speaker 01: That's right. [00:14:27] Speaker 01: the way the board analyzed this, they were stopping at the opposition. [00:14:31] Speaker 01: The board here said that we did not, if you look at A30, the middle paragraph there. [00:14:37] Speaker 06: Right, that's exactly where I am. [00:14:38] Speaker 01: So patent owner's motion to amend does not address all red consulate or any other prior art reference that may also teach this very limitation, which it contends that it would render it patentable. [00:14:52] Speaker 06: OK, so your complaint, the essence of your [00:14:56] Speaker 06: complaint about where the board went awry in this case was that they also included the reference to or any other prior reference? [00:15:04] Speaker 01: Yes and that they stopped there. [00:15:07] Speaker 01: It's two errors. [00:15:07] Speaker 01: The first is that they required us to go farther at all because that really conflicts with their own regulation that says an amendment has to respond to a ground involved in the trial but here it became involved in the trial but when we did that the board mistakenly did not look at our reply. [00:15:23] Speaker 01: If I can show you actually at A [00:15:26] Speaker 01: 2063 if you have it with you. [00:15:28] Speaker 01: During the questioning at the board, Judge Lee of the PTEP specifically said at the bottom of A2064, why do we even need to consider the opposition? [00:15:42] Speaker 01: The board stopped with the motion and said your motion only addresses the art of record. [00:15:47] Speaker 01: Why do we even need to look beyond that? [00:15:48] Speaker 01: Because under our gloss in Idle 3, the motion has to introduce [00:15:54] Speaker 01: all of the evidence outside of the record too. [00:15:57] Speaker 01: So they didn't even, and he says it again as he goes on into, he mentions specifically idle free at the top of A2065 and then on A2066 he says, that's what we wanted you to know, you didn't tell us in the motion. [00:16:12] Speaker 01: It looks like we really don't need to move over to the opposition because it's your burden of proof and essentially we don't know anything about the art because you didn't tell us. [00:16:21] Speaker 02: And he's talking there about the motion. [00:16:23] Speaker 02: except for the sake of this discussion that it is not inappropriate the statute which requires then the applicant to come forward and to distinguish as far as any changes in the claims. [00:16:38] Speaker 02: Is your sense that the ultimate burden is also shifted and that's improper or that in fact after all of this is in there is still the obligation on the office [00:16:53] Speaker 01: as far as the statute is concerned to say that the applicant is entitled unless... The office is the one that is ultimately charged by the office to determine patentability and so the office still bears the ultimate job of being a fact finder and determining patentability of the new claim added in the amendment. [00:17:13] Speaker 01: As far as that burden shifting, I think in the PTAP practice it does make some sense to have [00:17:21] Speaker 01: if the board had followed the procedure and actually paid attention to the opposition and the reply here, which it did not, I think it makes sense within the statute that the motion to amend has to address all of the art involved in the trial, which is actually what the PTO reg says. [00:17:37] Speaker 01: But they have blown that out by the idle-free decision and applied here and said, no, no, your motion has to then go on and talk about all of the other art too. [00:17:45] Speaker 01: But if instead of doing that, they actually followed the language of the reg, which says, [00:17:50] Speaker 01: your motion to amend has to address all of the art in the trial. [00:17:53] Speaker 01: So the things in the petition, the things that we've been talking about in briefing with our expert testimony all through the trial. [00:17:59] Speaker 01: Then the petitioner has a chance to come in. [00:18:01] Speaker 01: So if the patent owner bears that initial burden of production, I guess we can call it, then the petitioner has an opportunity to come in and bring in other art. [00:18:11] Speaker 01: just as they have had throughout the trial and as they did here. [00:18:14] Speaker 01: And they came and said, well, no, the patent is still not patentable because here are two additional pieces of art. [00:18:20] Speaker 01: So those two new pieces of art then come into the trial, and the patent owner has a chance, as they did here, to show why maybe there's a missing limitation, maybe they're not combinable, but to present an additional case for why the claim is still patentable. [00:18:35] Speaker 01: And then the statute places the burden on the patent office [00:18:39] Speaker 01: to issue a final written decision with respect to patentability of that amended claim. [00:18:44] Speaker 04: I just want to understand something. [00:18:47] Speaker 04: You did file a reply to their opposition to your motion to amend, right? [00:18:51] Speaker 04: We did. [00:18:52] Speaker 04: And at page 829, the board, in ruling on the motion to amend, expressly cites it and discusses it, and therefore [00:19:03] Speaker 01: They do, but then on 30, they say the motion to amend does not address them at all. [00:19:11] Speaker 01: They say the motion to amend does not address all red consulate and any other prior art reference. [00:19:15] Speaker 01: They drop a footnote there that suggests that the patent owner has made arguments, footnote 9 on A30, but they stop and say, well, you maintain there's other limitations that are missing. [00:19:29] Speaker 01: that provide patentable distinctions, but we have already addressed those in the context of the original claim. [00:19:35] Speaker 01: But what they didn't address was the patent owner, in addition to saying there are other limitations, also argued why Allred and Benela Kudra would not be combinable. [00:19:44] Speaker 01: And that is nowhere here. [00:19:46] Speaker 01: And the board really was focusing at the end of that paragraph. [00:19:50] Speaker 04: I guess what I think I'm hearing is that you have two somewhat distinct objections to the way the [00:20:00] Speaker 04: this panel of the board handled the motion to amend. [00:20:03] Speaker 04: One is the assignment of the ultimate burden of persuasion. [00:20:07] Speaker 04: But apart from that, even if putting that aside, that the board did not address arguments that you made in your reply that bore on the patentability of the amended claim. [00:20:28] Speaker 01: Yes, and then I would add a third error, which is they did not, they stopped, they held the patent owner to a standard, which is unreasonable under their own regulation, which was in the motion itself, as Judge Lee said during the argument, if you don't make that entire case regarding art, all of the art known to you in your motion itself, why do we even need to look at the opposition? [00:20:51] Speaker 04: Can I just ask another question, it's ultimate, [00:20:56] Speaker 04: I guess point is, why is any of this relevant? [00:21:00] Speaker 04: That's not, it needs some, I know it needs some, it needs some build up. [00:21:04] Speaker 04: Your motion to amend addressed only the first claim construction issue. [00:21:08] Speaker 04: It didn't address, it didn't do anything about second chamber or anything like that. [00:21:12] Speaker 04: It just wanted to replace the word mounted with permanently joined. [00:21:20] Speaker 04: If I thought, [00:21:22] Speaker 04: I don't think we have time to discuss it at this point, but I know you do, that the principal prior art reference included a jointer of the top to the bottom as permanent as the ones described in your spec. [00:21:40] Speaker 04: Then none of this would matter because it couldn't [00:21:42] Speaker 04: possibly change anything to substitute the words permanently joined with mounted and then none of this discussion. [00:21:49] Speaker 01: But the board found that it was not permanently joined. [00:21:52] Speaker 01: They found that that was a distinction. [00:21:54] Speaker 01: Nobody here has argued that the amended claim does not overcome the art involved in the trial until those other references were... Where did the board say that [00:22:06] Speaker 01: that Benalacuja has a separable? [00:22:08] Speaker 04: Benalacuja has had a less permanently joined top than the kind, well, had a non-permanently joined top. [00:22:28] Speaker 04: I mean, Benalacuja had one with screws covered by something so that... Yes, because it was separable, that's right. [00:22:35] Speaker 04: It took a lot of work. [00:22:40] Speaker 04: The manufacturer would have to take off this ring and take the screws off. [00:22:45] Speaker 04: It might not be, in fact, any different from using a solvent to dissolve an adhesive. [00:22:51] Speaker 01: But it was different. [00:22:52] Speaker 01: It was our own prior art device, the patent owner's own prior art device. [00:22:57] Speaker 01: And what they found was that by letting the diffusion head and the reservoir separate, [00:23:01] Speaker 01: there could be contaminants or dirt, that it could be messy to open and refill in a hotel lobby or something. [00:23:08] Speaker 01: And so they made the permanently joined device that is claimed in our patent. [00:23:15] Speaker 04: Does the board say that the Benalacuja Prior Art device had a non-permanently joined top? [00:23:28] Speaker 01: So we have A18. [00:23:31] Speaker 01: Yeah, so that's where the board found anticipation and the reason that they said was because the claims do not require permanent joining, so therefore, Benalacuja anticipates. [00:23:52] Speaker 01: So there it is sort of right under the number one, they are on A18. [00:24:00] Speaker 04: As you understand, that's not the point, right? [00:24:05] Speaker 04: They could find it because it's not required. [00:24:07] Speaker 04: I think you asserted that they actually found that it was not permanently enjoined. [00:24:11] Speaker 04: This doesn't say that. [00:24:12] Speaker 04: So the question is, did the board find that? [00:24:19] Speaker 01: Let me see. [00:24:19] Speaker 01: So the patent owner admitted it. [00:24:22] Speaker 01: They conceded that it discloses a diffusion head removable attached to the liquid reservoir. [00:24:26] Speaker 01: And that is, I think, when you read that sentence and what the Board did, and when they went on to their anticipation analysis, they said specifically that our claims didn't require the separation. [00:24:44] Speaker 01: But the difference here is the record before the Board had [00:24:50] Speaker 01: the motion to amend with additional art. [00:24:54] Speaker 01: The Patent Office, when it rejected the motion to amend, was not rejecting it based on the showing that the patent owner hadn't shown the amendment patentable over the art in the trial. [00:25:04] Speaker 06: I think we need to move on. [00:25:06] Speaker 06: Okay, we'll restore a few minutes. [00:25:11] Speaker 06: Thank you. [00:25:19] Speaker 05: May it please the court, Clay Holloway with Rene Wainwright on behalf of Appellee Sint Air. [00:25:25] Speaker 05: In the IPR below, Sint Air presented ample evidence showing the invalidation of the original two claims in the 683 patent. [00:25:32] Speaker 05: The PTAB's grounds for the invalidation of the original two claims were anticipation on the one hand and obviousness on the other hand. [00:25:42] Speaker 05: We've spent a lot of time this morning talking about the motion to amend and there was focus on the Benekaluja reference [00:25:48] Speaker 05: and the court and the PTAB below's anticipation analysis. [00:25:52] Speaker 02: But that's critical, isn't it? [00:25:54] Speaker 02: Because the amendment would have narrowed the claims, and the invalidation was based on the breadth with which they were initially granted. [00:26:02] Speaker 05: So if we start with the mounted reference, Your Honor, or mounted limitation, which is what we're talking about, the last little exchange dealt with whether or not Benakaluja taught a mounted diffusion head to a reservoir commiserate in the scope of the original or amended claims. [00:26:18] Speaker 05: The reference at A-18 is when the anticipation analysis is taking place. [00:26:22] Speaker 05: That's clearly focused at the original claims. [00:26:26] Speaker 05: Now, if we were to move into the amendment context and focus on whether the art of record in the underlying petition rejections, vena colluja as an anticipatory rejection or vena colluja plus cicada as an obviousness rejection, we need to focus the analysis on whether permanently joined in the context of the broadest reasonable interpretation of what that would be [00:26:48] Speaker 05: in light of the specification, then overcomes the anticipation rejection or the obviousness rejection. [00:26:56] Speaker 05: I would submit that there was no finding that the 683 patent requires a permanently mounted so that it could never be removed. [00:27:06] Speaker 05: That would be directly contrary to the broadest reasonable interpretation of that term. [00:27:11] Speaker 05: Even if we were to add permanently joined to the claim, as was proposed in the amended [00:27:15] Speaker 05: We would need to look at the specification to see where that was supported. [00:27:19] Speaker 05: And we would find that the specification describes disassembling the diffusion head from the reservoir. [00:27:28] Speaker 05: That's exactly what was taught in binoculusia. [00:27:31] Speaker 05: Binoculusia goes so far as to teach a tamper resistant diffusion head mounted to a reservoir. [00:27:37] Speaker 05: So that if someone did try to remove it, you would know. [00:27:39] Speaker 05: There would be some kind of irreversible change, for example, to remove those two. [00:27:44] Speaker 05: So the proposition that the underlying rejections of anticipation, and most importantly, obviousness, were overcome by the motion to amend, putting aside the Allred reference, is, I would submit, is not there. [00:28:00] Speaker 05: The board would have been, and in its analysis, spent very little time talking about the Allred decision. [00:28:05] Speaker 05: And I believe that is because it would have been impossible to overcome Benekaluya plus Cicada in the obviousness context [00:28:13] Speaker 05: even if you added permanently joined. [00:28:16] Speaker 04: Did the board make this adopt the reasoning that you just articulated in explaining why it was denying the motion to amend? [00:28:27] Speaker 05: I would say they didn't make it that express, Your Honor, but when they are addressing the motion to amend, and specifically the questions that were pointed to from the hearing below about why do we need to look past the motion, [00:28:41] Speaker 05: I think there's two ways you can read that, and there's two ways that it happened. [00:28:44] Speaker 05: The question is, well, you didn't bring us the prior art of record. [00:28:47] Speaker 05: And we focused a lot on the one sentence from the board's order that says, does not, you know, where the suggestion is that you had to overcome all of the prior art. [00:29:00] Speaker 05: But the last sentence of that paragraph on A30 is the motion does not demonstrate that claim three is patentable over, for example, then a collusion in light of all rent. [00:29:10] Speaker 02: They denied the motion, and yet on what basis do they consider the substance of the motion if they refuse to permit the amendment? [00:29:20] Speaker 05: So, Your Honor, I would suggest that in this case, that's really a distinction without difference, given the way that the procedure works for a motion to emit. [00:29:27] Speaker 02: The major difference, is it not, is that you can't amend your claim. [00:29:30] Speaker 02: Go away. [00:29:31] Speaker 02: And yet you tell us, or actually the board tells us, that the amendment might or might not [00:29:39] Speaker 02: have succeeded but they don't allow you to amend. [00:29:42] Speaker 02: So on what basis are they deciding? [00:29:44] Speaker 02: The substantive question of whether the amended claims are patentable. [00:29:49] Speaker 05: In this instance, well, in all instances, when a motion to amend is filed, there's not a pause in the IPR proceeding for the motion to amend to be decided and then restart the IPR process in terms of adjudicating the validity of the newly amended claim. [00:30:05] Speaker 05: The procedure requires that all of this be addressed in the final written decision. [00:30:09] Speaker 05: So patent owner comes forward with their motion to amend, says, here's the evidence that we think shows a narrowed claim and response to the rejections of record. [00:30:18] Speaker 05: It's then on to the petitioner and the office to say, this is why you're not entitled to the amended claim, not only because of what you've said about the art of record in the petition that's underlying the [00:30:30] Speaker 05: inter-party review, but also here are pieces of prior art that in this instance were fully known to proletariat. [00:30:37] Speaker 02: That's exactly what you said. [00:30:38] Speaker 02: They say you're not entitled to the amended claim, but they don't allow you to amend the claim. [00:30:43] Speaker 02: So on what basis can they decide whether you're entitled or not? [00:30:47] Speaker 05: So again, Your Honor, in this instance, when all of that gets under the regulations, they're required to put all of that analysis into the final written decision. [00:30:56] Speaker 05: And the reason is... I'm not sure. [00:30:58] Speaker 06: Let me... Because you're confusing me more than I was. [00:31:01] Speaker 06: Is your view that when they file a motion to amend, the PTAB panel, in deciding whether or not to accept or reject that motion, [00:31:15] Speaker 06: Part and parcel of that, the essence of that is determining whether the amendments withstand patentability or not. [00:31:23] Speaker 05: Absolutely, Your Honor. [00:31:24] Speaker 05: That's the requirement that's put on. [00:31:26] Speaker 06: The 4240 of the CFR section here requires that they... So it's your view that by denying the motion to amend, the board wasn't saying, we're not even going to look at patentability, that they did an analysis of whether or not they thought the proposed new amendments were patentable. [00:31:45] Speaker 06: Is that what your position is? [00:31:46] Speaker 05: Yes, Your Honor. [00:31:47] Speaker 05: I think that last sentence on A30 says that it would not have been, you have not demonstrated that claim three is patentable over fin occlusion and view of all rent. [00:31:55] Speaker 05: It doesn't say you didn't meet the procedural requirements for presenting a new claim. [00:32:00] Speaker 05: The relief that the patent owner is asking for here is that anytime I'm faced with an inter-parties review and I file a motion to amend that narrows the claim, [00:32:14] Speaker 05: and addresses an issue of patentability that's in the petition, at that point, I'm entitled to a new claim. [00:32:22] Speaker 06: No, no, no. [00:32:22] Speaker 06: But in fairness, I mean, I appreciate what you say, and I may ultimately agree with you say that you can find parts of the board's analysis that may be sufficient. [00:32:32] Speaker 06: But it is, but you're not trying to defend that first sentence of the paragraph in A30 that we were looking at, where it seems taken out of context on its own [00:32:42] Speaker 06: The board is requiring that the patent owner's motion to amend address any other prior art reference that may teach the very limitation. [00:32:52] Speaker 05: An unlimited universe. [00:32:56] Speaker 05: I would propose, Your Honor, that's not what they intended to suggest. [00:32:59] Speaker 05: They're fully aware that the procedure here is that the patent owner will file its motion to amend and present its arguments, and the petitioner will respond. [00:33:07] Speaker 05: And the petitioner is teaming up, in essence, with the Patent Office [00:33:10] Speaker 05: to come forward with the protecting of the public interest here to suggest this is why your new claim should not be allowed. [00:33:17] Speaker 05: And the final written decision here addressed both the fact that, OK, well, here was the art that you needed to cover. [00:33:23] Speaker 05: And substantively, you're still not going to overcome binicalusia as an obviousness reference combined with the admitted teaching in all red that Pat Noeder admitted taught a permanently joined diffusion head to a reservoir. [00:33:35] Speaker 02: So they're really giving an advisory opinion to the applicant [00:33:39] Speaker 02: saying that if we did allow you to amend the claim, you wouldn't get the patent anyway. [00:33:44] Speaker 02: Therefore, we're not going to allow it. [00:33:46] Speaker 05: I don't think that's an advisory opinion. [00:33:48] Speaker 05: I mean, the burden here is that you have to be able to demonstrate I'm entitled to a claim just as you would in the examination context. [00:33:55] Speaker 05: If I present you with evidence to suggest that I'm entitled to a patent because I don't see anything in the record that demonstrates it's not novel or non-obvious, [00:34:03] Speaker 05: But then the Patent Office comes back with the evidence to say, no, no, here it is, taught in a prior article. [00:34:08] Speaker 02: No, that's not quite accurate. [00:34:09] Speaker 02: You would have, you would file the amendment. [00:34:11] Speaker 02: So the amendment would be there in the record and then prosecution would proceed on the amended claim. [00:34:18] Speaker 02: You're not allowed to do that. [00:34:20] Speaker 02: Well, I think the key... After filing, after grant. [00:34:22] Speaker 05: I think the key to your question is you would, in an examination context, when I put in a new amendment, I would then have a new round of examination that continues. [00:34:31] Speaker 05: in the IPR context, this is a one-time opportunity. [00:34:34] Speaker 02: If it's New Matter. [00:34:34] Speaker 02: No one here has said this is New Matter. [00:34:37] Speaker 02: This is a narrowing amendment, not a broadening amendment. [00:34:41] Speaker 05: It's simply because I've narrowed the amendment. [00:34:43] Speaker 06: I'm not sure I'm clear. [00:34:45] Speaker 06: In your view, is the way the process works under the AIA that you file a motion to amend, if the board grants the motion to amend, [00:34:57] Speaker 06: Does that mean it's said, it's in essence said, your amendments are patentable and you're allowed to amend your claims? [00:35:07] Speaker 06: Is that the way it works? [00:35:07] Speaker 06: I mean, that's what I'm not understanding. [00:35:10] Speaker 06: I mean, I think if I understand Judge Newman's concerns, I think they're fair ones because you've got to have an opportunity. [00:35:18] Speaker 06: But my understanding is, and I don't know if I'm right or wrong, is that the board is faced with the choice of denying the motion to amend or granting it. [00:35:26] Speaker 06: And if it grants the motion to amend, that is the way the system works for all intents and purposes saying, yes, your amendments are fine. [00:35:35] Speaker 06: Patent issued is amended. [00:35:37] Speaker 06: Am I right or wrong? [00:35:39] Speaker 05: That's why I came back to where I began. [00:35:41] Speaker 05: I think there would be no procedural difference under the way that the Patent Office conducts these hearings to say, OK, your claim is your proposed amendment will be accepted into the IPR. [00:35:54] Speaker 05: and then in the final written decision to issue an order that says it's not patentable over the prior art that's at issue in the proceeding. [00:36:00] Speaker 04: There's no difference between that and the level of analysis that occurred in ours, which is- Sorry, so the grant of a motion to amend results in a patent with the amended claims, full stop period? [00:36:10] Speaker 05: That's not what I'm saying, Your Honor. [00:36:11] Speaker 04: No, is that true or not true? [00:36:13] Speaker 05: I believe the way that the patent owner here is suggesting is that would be the case. [00:36:18] Speaker 05: I would get my claim and it would be entered in full stop. [00:36:20] Speaker 04: And is that suggestion correct or incorrect? [00:36:24] Speaker 05: I believe that suggestion is incorrect. [00:36:26] Speaker 04: So that the board under some piece of this procedure can grant a motion to amend and then do some further analysis to say, ah, but the amended claim, which has not itself been the subject of a petition for IPR, is not the subject of examination. [00:36:45] Speaker 04: Nevertheless, what is rejected? [00:36:49] Speaker 05: I want to distinguish between the actual procedure that the Patent Office will be using in this context and the effect of what occurred here. [00:36:57] Speaker 05: I do not believe it is the case that if they file their motion to amend and they overcome the burden of showing a narrower claim and a response to the prior art that's at issue in the appeal, that their claim is admitted into the patent and then analysis is performed. [00:37:12] Speaker 05: So that's full stop there. [00:37:14] Speaker 05: What actually happened in this case is that the analysis of the motion to amend [00:37:18] Speaker 05: considered the idea of, is it a narrower claim, and does it address the underlying prior rejections, which again, is benicillusia as an anticipatory rejection and benicillusia and cicada as an obviousness combination. [00:37:30] Speaker 05: We then presented the Allred and the Poncelot reference, which Allred was part of the original file history, and said, even if you overcome benicillusia as anticipation or benicillusia as an obviousness reference, adding in the permanently joined feature of Allred [00:37:47] Speaker 05: still does not get you a new claim. [00:37:50] Speaker 05: And the PTAB found that. [00:37:53] Speaker 05: They looked at that instead. [00:37:54] Speaker 05: In light of their art that came in during the procedure that is fully accepted for the motion to amend, you would not have shown a patentable claim over the prior art. [00:38:03] Speaker 05: The argument from patent owner is that they didn't get the opportunity to actually address that issue because [00:38:10] Speaker 05: The board said, well, you didn't bring us all red. [00:38:12] Speaker 06: Well, Ms. [00:38:13] Speaker 06: Arner started by talking a lot about the concern being with regard to the board's consideration of the PTAB's consideration of prior art. [00:38:23] Speaker 05: That's correct. [00:38:24] Speaker 05: I mean, Congress enacted this statute fully aware of the law, that is the presumption we do when Congress enacts new law. [00:38:32] Speaker 05: They're fully aware of, for example, the Grand Factors and the John Deere case. [00:38:37] Speaker 05: which require in an obvious miscontext that the patent owner be able to show that their claims are not obvious over the prior art of record. [00:38:45] Speaker 05: So in the idle free decision and other PTAB decisions where they've said the record prior art that's an issue and a motion to amend is the underlying rejections in the petition, art that the patent owner is aware of because of original prosecution, or art that the patent owner is aware because of other matters pending before this office, [00:39:03] Speaker 05: is an acceptable universe of prior art by which an amendment that would be allowed in the claim without substantive examination would need to occur. [00:39:12] Speaker 05: And the facts specific in this case are one from original prosecution. [00:39:16] Speaker 05: The Benekaluja reference and the Allred were known to the patent owner, were part of the substantive record both in terms of being a part of the underlying trial and the original prosecution, and therefore were an acceptable basis to require demonstrating of both novelty and non-obviousness [00:39:31] Speaker 05: which is exactly what the patent office said you didn't do. [00:39:34] Speaker 05: You did not overcome, for example, the obviousness combination of Benekaluja and the all-red reference. [00:39:40] Speaker 04: Can I ask you, this turns more or less away from the motion to amend, did the board find or did you contend that Benekaluja showed a permanently joined top? [00:39:59] Speaker 04: You understand what I mean by top? [00:40:00] Speaker 05: I do. [00:40:01] Speaker 05: So the diffusion head mounts to the reservoir. [00:40:03] Speaker 05: As your last series of questions with Ms. [00:40:05] Speaker 05: Arner indicated, in Venicalugia, we put forward evidence within the record, and it's even cited a little in the PTAB's decision, that is equally permanently joined as what's described in the specification of 683. [00:40:20] Speaker 04: Did you so argue? [00:40:22] Speaker 05: Honestly, I don't know the answer to the question of did we argue that? [00:40:25] Speaker 05: But we did present evidence in the declarations below about the tamper-proof ring of Venicalugia [00:40:31] Speaker 05: when we argue for the anticipation basis for been occlusion by itself. [00:40:37] Speaker 05: See my time is up. [00:40:38] Speaker 06: Thank you very much. [00:40:47] Speaker 06: So Ms. [00:40:47] Speaker 06: Rashid, if you could just take a moment because you're representing the office, so hopefully we'll get a clear answer. [00:40:53] Speaker 06: Just background, edification on how the process works with respect to the discussion we were having. [00:40:59] Speaker 06: with your friend about the motion to amend? [00:41:02] Speaker 06: And what happens procedurally? [00:41:04] Speaker 06: You file a motion to amend, if the board rejects the motion to amend, okay, done. [00:41:09] Speaker 06: If they grant the motion to amend, does that for all intents and purposes mean that the amendment has been allowed? [00:41:16] Speaker 03: That's correct, Your Honor. [00:41:18] Speaker 03: If the board grants the motion to amend, that claim is added to the patent. [00:41:24] Speaker 03: So all of the analysis... [00:41:27] Speaker 06: So all of the analysis that the board does with respect to evaluating whether the new proposed amendments are patentable is done in the context of whether or not they're going to grant or reject the motion to amend? [00:41:41] Speaker 02: That's correct. [00:41:43] Speaker 02: That's very strange. [00:41:45] Speaker 02: That isn't how I had understood it. [00:41:47] Speaker 02: I thought the motion to amend could be filed, for example, at the threshold of the proceedings. [00:41:54] Speaker 02: if the statutory requirements of presenting the explanations and the distinction and why the amended claims are patentable in the viewpoint of the applicant who after all starts out with the presumption that the unamended claims are patentable. [00:42:13] Speaker 02: That's not the end of the process, is it? [00:42:17] Speaker 02: They're thereafter if the amended claims are [00:42:22] Speaker 02: replace the initially allowed claims. [00:42:26] Speaker 02: Doesn't then the IPR proceeding go forward on the amended claims, or you're saying it's all over once the motion to amend is granted? [00:42:38] Speaker 03: I believe that's correct, Judge Newman. [00:42:40] Speaker 03: Once the motion to amend, there's only one decision, once the motion to amend is granted or denied, that's the end of the question. [00:42:46] Speaker 03: There is no iterative process here. [00:42:50] Speaker 03: There are certain procedural requirements that have to be taken into that the patent owner has to meet in order. [00:42:58] Speaker 03: There are certain procedural requirements that the patent owner has to meet in order to even have their motion to amend considered, but they also have to meet substantive requirements, as is court found in MICE, Crisocity, Proxycon. [00:43:10] Speaker 03: And all of that analysis is done in the board's decision on the motion to amend. [00:43:16] Speaker 04: Did the board, in your view, fully consider on the merits [00:43:21] Speaker 04: the arguments that the patent owner made in its reply to the petitioner's opposition to the motion to amend? [00:43:33] Speaker 03: I believe it did, Your Honor. [00:43:34] Speaker 03: In its reply, Pro-Tech, like all it did was it had the opportunity to distinguish over the prior art that was presented in the opposition, right? [00:43:44] Speaker 03: And the prior art that was presented in the opposition is part of the record. [00:43:48] Speaker 03: That includes all red. [00:43:50] Speaker 03: Instead of distinguishing that prior art, all that the pad owner did here was just to say that, well, that prior art reference, those prior art references in isolation don't teach all of the elements of the claim, but that's not adequate. [00:44:06] Speaker 03: Not only is it not adequate, it's inconsistent with what we know about what... I think Ms. [00:44:11] Speaker 04: Arner, if I remember or understood what she said, made a reference to how there were arguments about [00:44:18] Speaker 04: combining those things, accepting what those new pieces of prior art teach, that there were arguments about combining them so that the paragraph on page 29 of the board's opinion that's twice cite the PO reply addresses only what the patent owner said those pieces of prior art teach, but doesn't [00:44:48] Speaker 04: That paragraph does not address some argument about non-combination. [00:44:53] Speaker 04: And then when we turn the page to page 30, the paragraph that we've been talking about a fair bit this morning seems to be all about what the motion demonstrated and not what the full set of pleadings on the motion demonstrate. [00:45:11] Speaker 04: That's, I guess, a concern. [00:45:13] Speaker 03: The only argument that the patent owner made in its reply was that it was just a conclusory statement that already may not have been analogous art. [00:45:25] Speaker 03: And that was it. [00:45:26] Speaker 03: It didn't say anything more than that. [00:45:28] Speaker 03: I don't think that's a credible argument with regards to whether it could have been combined or not. [00:45:35] Speaker 03: Moreover, I'm sorry to see how ProlTech could have made that argument here when the board rejected a similar argument. [00:45:42] Speaker 03: non-analogous argument with regards to the KDAF, which is very similar to Allred. [00:45:48] Speaker 03: And furthermore, Allred was brought into the record initially in the prosecution history of this case, where the patent owner cited to Allred in its accelerated examination request. [00:46:01] Speaker 04: And when a patent owner... Let me just say, I guess, what I'm focusing on to figure out if the concern is allayed. [00:46:11] Speaker 04: The paragraph on page 30, the one that contains footnote nine, has several sentences. [00:46:15] Speaker 04: And that paragraph could be read to say, we are deciding on the basis of what was in the motion to amend, disregarding the pleadings that came afterwards, including the reply. [00:46:30] Speaker 04: Yet, on page 29, there is discussion of the reply. [00:46:35] Speaker 04: If the discussion of the reply on page 29 addresses everything that's [00:46:41] Speaker 04: plausible that was in the reply, then maybe there's actually no material difference between these two things. [00:46:47] Speaker 03: That's correct, and that's how we read it. [00:46:49] Speaker 03: I think what the board said on A30 is being read out of context. [00:46:54] Speaker 03: I think all that the board was saying there was that, you know, a concisory statement that these references don't teach everything is not sufficient. [00:47:03] Speaker 03: And here we know that not only is it not adequate, it's also inaccurate because we know that [00:47:08] Speaker 03: all red and fontlet, perhaps Venetialuja and perhaps there are other references out there that also teach the limitation that they claim provides tangible distinction. [00:47:18] Speaker 03: I think that's all that the board was saying there on A30. [00:47:22] Speaker 03: From the PTO's perspective, this is a pretty straightforward case. [00:47:26] Speaker 03: In its attempt to show patentability of its proposed claim, Proletec rested on the express [00:47:32] Speaker 03: No one had invented a cartridge having both a diffusion head and a liquid reservoir that are permanently attached. [00:47:41] Speaker 03: Senter and his opposition reminded Prolitech that he can't really make that argument with any degree of confidence here on this record, because it's clear on this record, which includes all red and blue, and I didn't see Council for Prolitech disputing that those are part of the record here, that those limitations are taught. [00:47:59] Speaker 03: instead of distinguishing over Allred and Venicalugia, Allred, Venicalugia and Consulate, all that the patent owner did here was to just say, you know, make conclusory statements as to why perhaps Allred was not analogous art. [00:48:14] Speaker 03: That's not sufficient to meet their burden under, under rule 40C and as this court found in Microsoft, we proxiconed. [00:48:25] Speaker 03: Is there any questions? [00:48:26] Speaker 03: Thank you. [00:48:33] Speaker 04: So I'm looking at 1126, 1127, which is the of the appendix, which is the little subsection of your five page reply on the motion to amend. [00:48:48] Speaker 04: What in that, and the little subsections that addresses Allred and Consulate, the rest addresses the other prior art. [00:48:55] Speaker 04: So what in there did the board not consider in denying the motion to amend? [00:49:04] Speaker 01: Well, the board, the non-analogous art argument, which Council mentioned on 1127, where the patent owner argued that against the combination of this new reference that has been brought into the record all red, that it is non-analogous art. [00:49:20] Speaker 01: They're not very similar. [00:49:21] Speaker 01: All red is a medical device for spraying liquid into a body. [00:49:26] Speaker 01: Just like cicada is a device for spraying [00:49:30] Speaker 01: liquid on to a workpiece and the patent is, Benalacuja involved diffusing liquid into the air. [00:49:37] Speaker 01: They're very different. [00:49:38] Speaker 01: So to say that the non-analogous argument is weak is different from saying that the patent office actually considered it and explained. [00:49:44] Speaker 01: And if they are going to deny a motion to amend, the board was incorrect here to stop. [00:49:49] Speaker 01: The footnote that they dropped in their opinion said, we recognize that you talk about other elements, but [00:49:57] Speaker 01: But we've already found those elements in different art, and so we're not going to look at those. [00:50:02] Speaker 01: That is a violation of their duty to consider patentability, and obviousness finding requires looking at the claims as a whole. [00:50:10] Speaker 01: And I think their error here was it makes sense because it's a different way looking to prove patentability versus proving unpatentability, which is usually the way the obviousness case works. [00:50:20] Speaker 01: But starting obviousness from a patentability standpoint. [00:50:22] Speaker 04: But that seems to come back to the burden argument. [00:50:26] Speaker 01: Sure. [00:50:27] Speaker 01: And I think on the burden argument, even if the patent or board of burden here, and even if the art has to be all art of record, although I think that, and Judge Perth, I think that was your question, the requirement that the Patent Office has now put in an idle-free saying that you have to talk about other art that's not of record, that is what causes exactly the concern you identified, which is claim not being examined when the motion to amend is granted. [00:50:54] Speaker 01: If the board actually applied the regulation as it's written, [00:50:57] Speaker 01: that amendments respond to grounds in the trial, which is also cabin by the statutory requirement to have specific grounds in the trial, then that will not happen. [00:51:06] Speaker 01: The Congress wrote the statute specifically so that we would not have claims that are unexamined. [00:51:12] Speaker 01: The way the process works is, well, first you have to request permission to even file a motion. [00:51:17] Speaker 01: The board makes that optional. [00:51:18] Speaker 01: You have to have a call with the board and request to file a motion. [00:51:21] Speaker 01: Once they give you permission to file a motion, there is a briefing process. [00:51:25] Speaker 01: And it makes sense if the motion has to respond to, as the board's regs actually say, the problem that's been identified in the grounds in the trial. [00:51:34] Speaker 01: And that regulation makes sense if it's applied in that way. [00:51:37] Speaker 06: The time is up and it's really gone extensively if you have one final sentence. [00:51:42] Speaker 01: I do have one final sentence and that is that the rules, the way the board has interpreted the requirement under its regulation has been a moving target. [00:51:52] Speaker 01: In fact, the rules about what the prior art of record means were introduced in an opinion that the Patent Office issued just two weeks ago. [00:52:01] Speaker 01: where they redefine the meaning of prior art of record and idol free. [00:52:04] Speaker 01: This is a moving target, and we at least deserve a remake. [00:52:07] Speaker 06: Thank you. [00:52:08] Speaker 06: We thank all counsel on the cases submitted. [00:52:10] Speaker 01: Thank you very much.