[00:00:00] Speaker 02:
it feels.

[00:00:43] Speaker 04:
Before you begin, counsel, Judge Moore told me I could say, oh, what a tangled web we weave.

[00:00:51] Speaker 04:
When first we practiced to deceive.

[00:00:53] Speaker 02:
Yeah, I didn't endorse it, to be fair.

[00:00:57] Speaker 02:
Mr. Kodish, is that your name right?

[00:00:59] Speaker 02:
Please proceed.

[00:01:02] Speaker 05:
May I please record, I would like to focus my remarks on two errors committed by the Patent Trial and Appeal Board in its finding that the, quote, interposing claims are not obvious based on the combination of Ligon

[00:01:13] Speaker 05:
with Munichhoff or Barma.

[00:01:16] Speaker 05:
It really comes down to two issues raised in the obviousness section, the inoperability section and the teaching away section that we'll focus on.

[00:01:25] Speaker 05:
As to inoperability, the board based its conclusion on an erroneous standard, bodily incorporation, rather than what the combined art of teaching suggests to a person of ordinary skill with common sense and creativity.

[00:01:41] Speaker 05:
And then in addition,

[00:01:43] Speaker 05:
the board lacks substantial evidence based on a, I think, an ambiguous error in the record regarding quote, new tube Q. Secondly, we'll talk about the teaching away.

[00:01:54] Speaker 05:
The board used an appropriate standard there as well.

[00:01:58] Speaker 05:
They asked Shaw to disprove Lygon's primary objective of minimizing sharp changes in direction rather than applying the correct test of accounting for the entirety of the priorist teachings.

[00:02:10] Speaker 05:
In addition, the board lacks substantial evidence

[00:02:12] Speaker 05:
in that instance.

[00:02:16] Speaker 02:
On your inoperability point, does it hinge on Dr. Wang?

[00:02:20] Speaker 02:
Do we have to conclude that Dr. Wang was timely in order to fight in your favor?

[00:02:27] Speaker 05:
We don't have to.

[00:02:29] Speaker 05:
We certainly should, and I'm happy to talk about that.

[00:02:32] Speaker 05:
But Dr. Wang adequately, in his outgoing, in his initial declaration, put forth everything that was necessary to satisfy the prima facie case.

[00:02:42] Speaker 05:
based on the record at that point.

[00:02:44] Speaker 02:
But what did he say about why a skilled artisan would have been motivated to use tubes and reverse the sequence of packaging?

[00:02:51] Speaker 05:
So we're focusing in our brief on figure one, and that's in the reply.

[00:02:58] Speaker 05:
In the initial brief, what he talks about in his declaration is he explains that the motivation to combine is to increase the continuous runtime of yarn packages by tying them together.

[00:03:09] Speaker 02:
But the tubes, where does the motivation come to use the tubes?

[00:03:12] Speaker 05:
to use the tubes.

[00:03:14] Speaker 02:
Use the tubes or reverse the sequence of the packages.

[00:03:18] Speaker 02:
That's what he testified to, didn't he?

[00:03:20] Speaker 02:
He explained that's what would happen.

[00:03:22] Speaker 02:
It just felt like a lot of hindsight to me, so I'm trying to understand where the motive... Yeah, I know you're saying no.

[00:03:27] Speaker 02:
No, it's definitely not hindsight, but I get that.

[00:03:30] Speaker 02:
Why?

[00:03:31] Speaker 02:
Where's the motivation?

[00:03:32] Speaker 05:
The motivation to combine is plainly stated in Munikoff for starters.

[00:03:35] Speaker 05:
The claims that fell in this action, the 13 claims,

[00:03:39] Speaker 05:
were on the actual reason for allowance for this patent.

[00:03:43] Speaker 05:
It had to do with its cart-to-cart transfer.

[00:03:45] Speaker 05:
Back in 1984, Munichhoff came up with this concept that you would unwind a yarn package on one cart, and that when it exhausted, rather than having to stop the downstream process, it would switch over to a yarn package on the other cart, continue the flow all the while.

[00:04:02] Speaker 05:
And he did that through what the claims talk about, a common guide.

[00:04:06] Speaker 05:
The common guide in this instance

[00:04:08] Speaker 05:
or the tubes centrally located mapping exactly to those claims and the basis for their invalidated.

[00:04:14] Speaker 05:
That's tube Q. So I'm so glad you asked about tube Q and I want to focus on that because it is really the anchor upon which the board placed its decision on inoperability and it was clear error.

[00:04:27] Speaker 05:
The board came to the conclusion that we had inserted new structure, a new tube Q. But if you look on page 38 of our brief,

[00:04:35] Speaker 05:
We hope that it's simply found that the tube, the only thing that's new is the letter Q. That tube that we have there, it's been there since 1984 when Munich first drew it.

[00:04:47] Speaker 05:
All right.

[00:04:48] Speaker 05:
So if you look on page 38, we merely use the perspective or rather Dr. Wang did.

[00:04:53] Speaker 05:
provided by the side view that shows their spacing apart of tube P, the tube in which the yarn flows, and tube Q, the tube that extends to the lower level.

[00:05:05] Speaker 05:
And that merely by using that perspective in combination with the overhead view, he was able to do a slice across section to show what we have here in example one, showing plainly

[00:05:16] Speaker 05:
that Minkoff had solved this issue in the two package arrangement.

[00:05:20] Speaker 05:
Of course, he did not wrap it around the center lower extending tube Q. Nobody contested that.

[00:05:27] Speaker 05:
That's why there was no response and they let those claims fall.

[00:05:30] Speaker 05:
But all of a sudden, the board, in its zeal that we had somehow injected new tube Q in pages 22 and 23 of its final written decision over and over and over again, it faults us for having done something that nobody ever accused us of doing.

[00:05:44] Speaker 05:
Nobody raised it.

[00:05:45] Speaker 05:
It didn't occur to anybody that that was even an issue, that we were talking about some new structure.

[00:05:50] Speaker 05:
This is a picture of Uniflox.

[00:05:51] Speaker 02:
But didn't Dr. Wang combine features from different embodiments, Figure 1 and Figure 4, in Munning's

[00:06:00] Speaker 02:
How do you say it?

[00:06:01] Speaker 02:
Munich-Kochoff.

[00:06:02] Speaker 02:
Munich-Kochoff.

[00:06:02] Speaker 02:
Yeah.

[00:06:03] Speaker 02:
So really, I feel like he picked and chose features from different embodiments in Munich-Kochoff and doesn't explain why somebody with skill in the art would pick and choose those features and put them together in the grand way.

[00:06:13] Speaker 05:
These claims come down.

[00:06:14] Speaker 05:
The claims that fell had a single feature, stranding across what we just walked through, that the package is on one side of the heart and then it connects to the other.

[00:06:25] Speaker 05:
The claims that survived inject a single additional element.

[00:06:29] Speaker 05:
They describe it in many words in each of the different claims, but all it does is add a neighboring package.

[00:06:35] Speaker 05:
That is one on the same side, thereby doubling the run time.

[00:06:39] Speaker 05:
It's plainly admitted in this case that all elements are present.

[00:06:42] Speaker 05:
The record says that it is old as dirt to have cross-card transfers, that it is old as dirt to have neighboring packages.

[00:06:49] Speaker 05:
We have the testimony.

[00:06:50] Speaker 05:
We asked Mr. Chadwick, their expert, on page 725.

[00:06:55] Speaker 05:
So regarding this, focusing on connecting 30A and 30B together, or 30C and 30D together.

[00:07:01] Speaker 05:
Was that on every stranded creel before you filed the patent application?

[00:07:05] Speaker 05:
Answer, yes ma'am.

[00:07:05] Speaker 05:
That's common practice to tie those two together, tip to tail.

[00:07:09] Speaker 05:
So we've got cross-court connection back since at least 1984.

[00:07:15] Speaker 05:
We've got neighboring connection back since Mr. Chadwick put snow earlier deadline on it.

[00:07:20] Speaker 05:
And we've got a motivation to combine that they admit to.

[00:07:24] Speaker 05:
that the motivation to combine is to increase yarn time.

[00:07:27] Speaker 05:
So the only additional element here, the only purported novelty is that somehow we, well, there really, I don't know what the purported novelty is.

[00:07:37] Speaker 05:
And Dr. Wang put forth in his initial declaration that he would merely take what's already been completed essentially as anticipated with the claims that fell and merely add a known convention of a second neighboring package that people have always done.

[00:07:53] Speaker 05:
They talk about this circling, the circling that would create this ensnarement.

[00:07:57] Speaker 05:
The claims don't talk about a circling.

[00:07:59] Speaker 05:
They talk about a simple, go to claim six, go to claim seven.

[00:08:04] Speaker 05:
They talk about stranding across and then going to a neighboring package.

[00:08:08] Speaker 05:
In addition, the tube queue that extends below is never wrapped around.

[00:08:13] Speaker 05:
Nobody contested it was in a tube package arrangement, so why would a person of ordinary skill suddenly just

[00:08:22] Speaker 05:
shed that knowledge, purge it from their knowledge, and then begin wrapping around the middle pole.

[00:08:27] Speaker 05:
It just doesn't make any sense.

[00:08:30] Speaker 05:
So you have to ask yourself, how did the board come to this?

[00:08:33] Speaker 05:
this conclusion that's so illogical and it's because they were punishing us for what they thought was a new structure, but there was no new structure there.

[00:08:40] Speaker 05:
They just didn't appreciate what we think is a very simple argument and nobody fought us on it.

[00:08:46] Speaker 05:
ACS did not complain about that argument and it's probably as surprised as we are that it was the basis of the decision.

[00:08:51] Speaker 02:
Well, didn't the board say the additional package would be inoperable because of the tangling?

[00:08:55] Speaker 02:
I'm sorry, I'm sorry.

[00:08:56] Speaker 02:
Didn't the board say the additional package would render the invention inoperable because of the tangling?

[00:09:03] Speaker 05:
Yes, they did, but they said... You're going on old and dirt, old and dirt, add another package.

[00:09:09] Speaker 02:
The board made a fact-finding that adding that additional package would create tangling and the whole thing wouldn't work properly.

[00:09:14] Speaker 05:
Well, they did it because they ran down an improper legal standard of requiring bodily incorporation, essentially a time-lapse video to have been made to show exactly how everybody would have stapled everything together.

[00:09:25] Speaker 05:
when, in fact, we had all the pieces together.

[00:09:28] Speaker 02:
Where did they require that?

[00:09:30] Speaker 02:
You're making all these statements that don't comport with my understanding of the record.

[00:09:34] Speaker 02:
I mean, they sound very compelling, if true, but where did they require this time-old, improper standard of showing stapling and every little detail?

[00:09:42] Speaker 02:
Where is that in the record?

[00:09:43] Speaker 02:
Or is that just attorney argument?

[00:09:45] Speaker 05:
We think it is the only deduction from a situation where he has all.

[00:09:49] Speaker 02:
So you are inferring that that's what they did.

[00:09:50] Speaker 02:
They didn't actually use that improper, time-old improper standard that you referred to a second ago.

[00:09:55] Speaker 05:
They used bodily incorporation.

[00:09:57] Speaker 05:
They were told to use bodily incorporation at the hearing by automated creel systems, and they did, in fact, as evidenced by the basis upon which they relied to reach this conclusion of inoperability.

[00:10:10] Speaker 05:
It's conceded in the record.

[00:10:11] Speaker 05:
All elements are shown, and the motivation to combine is there.

[00:10:14] Speaker 05:
And we have the cases that talk about it.

[00:10:16] Speaker 05:
The only case in opposition to us is the McGinley case, one where there was a highly contested issue about whether the elements were shown.

[00:10:24] Speaker 05:
It was highly contested whether there was a motivation to combine.

[00:10:27] Speaker 05:
We compare this analogy as helpful with this technology.

[00:10:30] Speaker 03:
Could you address also the board's finding the teaching away?

[00:10:34] Speaker 05:
Absolutely, absolutely.

[00:10:36] Speaker 05:
So the issue with teaching away is that the board failed to account for the entirety of the teachings

[00:10:44] Speaker 05:
of these references, rather putting together a standard for us where we were required to disprove, this is a quote, to disprove Ligon's primary objective of minimizing sharp changes in direction.

[00:10:59] Speaker 05:
So this is the argument or the basis.

[00:11:01] Speaker 03:
So the issue of sharp changes in direction, that goes to breaking, right?

[00:11:07] Speaker 05:
It doesn't go to breaking.

[00:11:08] Speaker 05:
Well, excuse me, it goes to breaking of the yarn, not breaking of the yarn.

[00:11:12] Speaker 05:
That's right.

[00:11:14] Speaker 05:
all of the references, Munikoff, Baramag, Ligon.

[00:11:19] Speaker 03:
In this case, the patent teaches continuous run as being the main feature or the purpose of the patent to achieve continuous run.

[00:11:30] Speaker 05:
The 360 patent, right.

[00:11:31] Speaker 03:
So when we talk about breakage, are we talking about breakage at certain speeds?

[00:11:38] Speaker 05:
All of the patents talk about

[00:11:42] Speaker 05:
When I say all the patents, I mean the prior art as well as the patent at issue, all talk about, at some level, the concern about breakage.

[00:11:51] Speaker 05:
The people of ordinary skill in the art should use their common sense and engineering facility to make sure that they don't tie yarn around pieces of machinery so it breaks, for example.

[00:12:03] Speaker 05:
Ligon offers a preference, a preference, of not turning yarn on what it calls particularly sharp turns.

[00:12:12] Speaker 05:
which we say, putting aside that it's undefined, the premise of Ligon is built upon the understanding that it's age-old that people have been apparently turning yarn successfully on particularly sharp terms, whatever that definition is.

[00:12:26] Speaker 05:
And we know from Munich-Ahoff that 90 degrees was functioning and nobody contested that it wasn't in all the claims that fell.

[00:12:33] Speaker 05:
So this teaching away argument, or the basis upon which the board relies, just fails to take

[00:12:39] Speaker 05:
in account of the entirety of these references teaching.

[00:12:43] Speaker 05:
This court in the Alhambi Apatox case found its way to even acknowledging.

[00:12:49] Speaker 02:
Let's say you... You're well into your rebuttal time.

[00:12:52] Speaker 02:
If you'd like to keep going, you're welcome to.

[00:12:53] Speaker 05:
Okay.

[00:12:54] Speaker 05:
I'm going to reserve it for rebuttal.

[00:12:55] Speaker 05:
Thank you.

[00:13:00] Speaker 02:
Mr. Smiley?

[00:13:04] Speaker 02:
Did I have that right?

[00:13:07] Speaker 02:
Yes, you did.

[00:13:09] Speaker 00:
Good afternoon, Your Honors.

[00:13:10] Speaker 00:
May it please the Court.

[00:13:11] Speaker 00:
This Court looks at the decisions of the Patent Trial and Appeal Board for substantial evidence.

[00:13:18] Speaker 00:
The final written opinion by the board is very well drafted.

[00:13:24] Speaker 00:
It contemplates arguments by the patent owner.

[00:13:28] Speaker 00:
It contemplates the arguments set forth by the challenger.

[00:13:33] Speaker 00:
And each of the decisions is concluded with rationale.

[00:13:37] Speaker 03:
What about Tube Q?

[00:13:41] Speaker 03:
Was it added structure or not?

[00:13:43] Speaker 03:
And if the board finds that it was added structure, or says that it was, but it wasn't, then where is your substantial evidence ground?

[00:13:52] Speaker 00:
Your Honor, firstly, it was not new structure.

[00:13:54] Speaker 00:
And before we get to that, Shaw is a victim of their own circumstance.

[00:13:59] Speaker 00:
When they filed this IPR,

[00:14:01] Speaker 00:
They did exactly what Judge Moore mentioned a minute ago.

[00:14:05] Speaker 00:
It was hindsight.

[00:14:05] Speaker 00:
They found a laundry list of everything that was in the claims.

[00:14:09] Speaker 00:
They asserted it in the IPR, but they never told us how you would put these pieces together.

[00:14:16] Speaker 00:
When we responded and we hired our expert and asked him to opine on this, he said, I don't know what to do because how'd these puzzle pieces go together?

[00:14:25] Speaker 00:
Nothing would work.

[00:14:27] Speaker 00:
And we were shooting in the dark the entire case.

[00:14:29] Speaker 00:
We submitted quite a few examples of how we thought they may be put together, and then Dr. Brookstein and Mr. Chadwick opined on how they would not operate.

[00:14:41] Speaker 00:
When we finally get to the reply declaration of Dr. Wang, which is the point in the case when all the substantial briefing is complete, we can't submit any more briefing, then he finally puts forward this example, which is that tube Q that they referred to.

[00:14:58] Speaker 00:
Tube Q is already there, but first he says... He's simply labeling it, in other words.

[00:15:03] Speaker 00:
He's labeling something that's already in the device.

[00:15:06] Speaker 00:
All of the packages, and Shaw has said this before, they have to point towards the tube that the thread is going up because you're unspooling some yarn and it has to go towards that tube.

[00:15:18] Speaker 00:
In Dr. Wang's example of Q, none of them point towards the tube that they're supposed to.

[00:15:24] Speaker 00:
The example doesn't follow anything that he says.

[00:15:26] Speaker 00:
He doesn't explain what happens

[00:15:28] Speaker 00:
next to those, if you're going to have all four of those, how does the rest of the device work?

[00:15:32] Speaker 00:
And you're also fishing it through a tube that's already in Munikoff, it's already in Barmag, and it wouldn't be possible to fit that yarn through there and have it operate the way that the 360 patent does.

[00:15:44] Speaker 00:
The 360 patent has no tubes that go up through the middle.

[00:15:47] Speaker 00:
It's just rings.

[00:15:49] Speaker 00:
So they're a victim of their own lack of helping the court understand how they would put these together, because there is no way to put those together.

[00:15:58] Speaker 04:
When we get to the second IPR, we have... Well, would you agree then that there was error in saying that Q was new?

[00:16:08] Speaker 00:
If it's interpreted that it's new, there is.

[00:16:11] Speaker 00:
We believe that the board was saying the use of it is new.

[00:16:15] Speaker 00:
The use of that tube Q is new.

[00:16:17] Speaker 00:
To fish it through there like that would be new.

[00:16:20] Speaker 00:
And these devices that operate very back and forth,

[00:16:24] Speaker 00:
and the thread is moving very quickly, it would be hard for an operator to reach his hand through there because you've got to tie these things together while the machine is operating.

[00:16:34] Speaker 00:
So it's not a new tube at all.

[00:16:38] Speaker 00:
But the court does, the board does address how it would work or why it would not work and moves on.

[00:16:44] Speaker 03:
Maybe it's not a new tube, but perhaps it was interpreted to be used in a new way.

[00:16:51] Speaker 04:
Yes, yes.

[00:16:53] Speaker 04:
And said that what they say is it involves adding a tube cue to the assembly.

[00:17:01] Speaker 04:
That seems pretty clear.

[00:17:03] Speaker 00:
There's further language where they say the use of it, but you are correct.

[00:17:07] Speaker 00:
It is not a new tube to the assembly.

[00:17:10] Speaker 00:
If you look at the Munikoff reference, there are tubes going up through the center.

[00:17:14] Speaker 03:
So again, if we find that the board said it was a new tube to the assembly, then that would be error.

[00:17:21] Speaker 00:
It'd be error that it's new.

[00:17:22] Speaker 00:
It's not error.

[00:17:23] Speaker 00:
They still support it with substantial evidence of why it would still cause improper, it wouldn't operate that way.

[00:17:32] Speaker 00:
None of the packages face the yarn guide eye.

[00:17:35] Speaker 00:
They all have to face, point towards that yarn guide eye so they can go up.

[00:17:39] Speaker 00:
The way he's drawn it, they would be pulled laterally to the package and the operation would stop.

[00:17:44] Speaker 00:
And the board addressed that.

[00:17:46] Speaker 00:
The board says that there.

[00:17:47] Speaker 04:
That's confusing because I see what you're saying.

[00:17:51] Speaker 04:
the use of tube-cube won't work.

[00:17:55] Speaker 04:
But I'm not at all sure that that's not informed by their saying, well, it's a new thing.

[00:18:03] Speaker 00:
I think they, well, first they addressed that it came in the case late.

[00:18:07] Speaker 00:
And it's prejudiced to us, because we couldn't have our expert now file an opinion that you could read and that could explain why that doesn't operate.

[00:18:17] Speaker 04:
Was it disgusted, oral argument in any fashion?

[00:18:20] Speaker 00:
I mentioned that oral argument, yes.

[00:18:22] Speaker 00:
I pointed out the fact that they've said a couple of times now that it's critical, it's absolutely necessary that the spindle that the packages are on face directly at that yarn guide eye so the thread can go up.

[00:18:35] Speaker 00:
I see you have it in front of you there, the drawing.

[00:18:37] Speaker 00:
You see none of them, not one of them point towards that yarn guide eye.

[00:18:41] Speaker 00:
If you turn them all to do that, you can no longer go around that queue like they say you could.

[00:18:47] Speaker 00:
There's fundamental problems.

[00:18:49] Speaker 00:
If they were going to submit this embodiment, it should have been done in their petition, so it would be in front of us, it would be in front of our expert, and then we could have dealt with it.

[00:18:58] Speaker 00:
But because there's issues and they knew that, they put it in the case late, so we're stuck with guessing at what would happen.

[00:19:07] Speaker 00:
ACS estimates that each of the points set forth by Shaw was supported by substantial evidence by the board.

[00:19:16] Speaker 00:
When we move to the second IPR, we have an entirely different story.

[00:19:19] Speaker 00:
This is one of the clearest cases of hindsight I think this court will find.

[00:19:26] Speaker 00:
I'd like to start with the bigger, easier to understand concept.

[00:19:29] Speaker 00:
In the second IPR, we have three references in play.

[00:19:32] Speaker 00:
We have Munikoff, Barmag, and Blum.

[00:19:36] Speaker 00:
All three of those patents, and the test here is what would be obvious to someone with skill in the art?

[00:19:41] Speaker 00:
Would it be obvious to combine the features of these to someone with skill in the art?

[00:19:46] Speaker 00:
Those three references are all owned by the same company.

[00:19:49] Speaker 00:
the Bar Meg Corporation.

[00:19:50] Speaker 00:
They've been owned by that corporation for over 30 years.

[00:19:54] Speaker 00:
Prior to Shaw submitting, it would be obvious to combine those.

[00:19:59] Speaker 00:
Here you have a company that is skill in the arts, and they haven't thought of it for 30 years.

[00:20:03] Speaker 00:
That should be clear enough evidence that it's not obvious to combine these structures.

[00:20:09] Speaker 00:
Number two, we have the fact that Shaw filed its first inter partes review.

[00:20:14] Speaker 00:
They hired Dr. Wang, who they deem as a person of skill in the arts.

[00:20:18] Speaker 00:
They submitted seven patent references.

[00:20:20] Speaker 00:
They submitted a 58 page description of why the claims would be invalid.

[00:20:26] Speaker 00:
In the first IPR, it didn't occur to them that bar mag should be used as an obvious combination, I'm sorry, blum.

[00:20:32] Speaker 00:
They didn't think then that blum should be used as a combination reference.

[00:20:39] Speaker 00:
Further evidence that it's not obvious to someone with skill in the arts to combine it.

[00:20:42] Speaker 00:
It was only after the first IPR rejected claim four as the one that was being challenged

[00:20:48] Speaker 00:
that they then went and we say they went on a scavenger hunt to try to find anything and any reference that could show what was recited in Claim 4, which is a distance corresponding to.

[00:21:00] Speaker 00:
They come back with the reference Blum.

[00:21:02] Speaker 00:
Now Blum is shown in pictures on the final written opinion on page 35.

[00:21:11] Speaker 00:
At the very back, I'm sorry, at the appendix, page 35.

[00:21:17] Speaker 00:
There's a nice drawing of the Blum reference, figure three.

[00:21:21] Speaker 00:
So Shaw asserts this reference, this Blum, and says, the top right corner shows the distance corresponding to, which is what's recited in claim four of the 360 patents.

[00:21:33] Speaker 00:
And they say that the distance corresponding to, because the package has to swing underneath the horizontal bar labeled as 64.

[00:21:42] Speaker 00:
We responded and said, that doesn't make any sense.

[00:21:45] Speaker 00:
If you look at the row right below it,

[00:21:47] Speaker 00:
That bar is below the package, and it couldn't swing underneath there.

[00:21:50] Speaker 00:
And we said, looking at the third row down, it doesn't make sense, because it's even lower.

[00:21:54] Speaker 00:
The package would hit that bar and couldn't swing underneath.

[00:21:58] Speaker 00:
The board says to us, that doesn't matter.

[00:22:02] Speaker 00:
What is in the rest of the drawing, they say, on page 39 of the final written opinion, they say, whether the other disclosures, they're talking about the lower two rows, they say, teach the same distance is immaterial.

[00:22:14] Speaker 00:
That's their opinion.

[00:22:16] Speaker 00:
someone of skill in the art would know to only look at the top right corner and ignore the other two.

[00:22:21] Speaker 00:
And hindsight's not supposed to be put in here.

[00:22:24] Speaker 00:
We said it further doesn't make sense that they don't swing underneath.

[00:22:28] Speaker 00:
If you could turn to the final written opinion on page 40, they show an arrow.

[00:22:35] Speaker 00:
They say this shows that the package must swing underneath that bar.

[00:22:39] Speaker 00:
That's why the horizontal portion 64 must be higher

[00:22:43] Speaker 00:
than the package so it can swing underneath for loading and unloading.

[00:22:46] Speaker 02:
If there's any other important points you want to make on this, please go ahead and do so.

[00:22:50] Speaker 02:
But I'd like to ask you a couple of questions about pain and the other arguments related to it and the writ of mandamus that we have pending in front of us.

[00:22:58] Speaker 02:
But I want you to finish this argument completely.

[00:23:02] Speaker 02:
If there's any other important points you want to make on this, go ahead.

[00:23:04] Speaker 00:
I'll get to them quickly.

[00:23:05] Speaker 00:
On page 41, it shows there's a spout hanging down that would not allow the package to swing underneath.

[00:23:12] Speaker 00:
It would smack into that package.

[00:23:13] Speaker 00:
and it wouldn't operate.

[00:23:16] Speaker 00:
So we argued that there is, this blum reference doesn't teach a height corresponding to the distance of a package.

[00:23:22] Speaker 00:
It doesn't show it there.

[00:23:23] Speaker 00:
They didn't find our favor on that, and they say, we're going to now combine what we think is the disclosure of a height corresponding to the distance of a package into Munikoff.

[00:23:34] Speaker 00:
But here's the other error.

[00:23:35] Speaker 00:
When they did that, they didn't combine the height corresponding to, they added adjustability to Munikoff.

[00:23:42] Speaker 00:
Nowhere do they say they're going to add this L-shaped bracket because it has a certain height.

[00:23:47] Speaker 00:
They added it because it has this adjustability.

[00:23:51] Speaker 00:
We argue back that when you read Blum, and Dr. Wang did not understand Blum.

[00:23:57] Speaker 00:
In our red brief, we have excerpts of his deposition.

[00:24:01] Speaker 00:
He didn't understand it.

[00:24:02] Speaker 00:
Blum does not teach adjustability.

[00:24:05] Speaker 00:
The pieces are fixed.

[00:24:07] Speaker 00:
When we argue that, we say, you can't put it with immunocost because it doesn't teach adjustability.

[00:24:12] Speaker 00:
Don't worry about that because that's not in your claim.

[00:24:14] Speaker 00:
Claim four doesn't require adjustability.

[00:24:18] Speaker 00:
It's very confusing.

[00:24:19] Speaker 00:
They're trying to invalidate our claim that claims a height corresponding to a package with a reference that really doesn't show that.

[00:24:27] Speaker 00:
Then they say you embody something different.

[00:24:31] Speaker 00:
You embody this adjustability that's not in the claim.

[00:24:34] Speaker 00:
This is all on pages 39 through 41 of the final written opinion.

[00:24:44] Speaker 00:
The problem here is that we still have never seen, anywhere in this case, a description of how Blum would be actually incorporated with mutikoff or barming.

[00:24:56] Speaker 00:
How would that work?

[00:24:57] Speaker 00:
There's been one drawing, but the packages of mutikoff are not shown to swing underneath anything, so there's no distance corresponding to.

[00:25:08] Speaker 00:
Somewhere there was a shell game here.

[00:25:09] Speaker 00:
We put the L-shaped bracket

[00:25:11] Speaker 00:
Under a shell, they move them around, and when they lift it up, there's this supposed adjustability portion there.

[00:25:17] Speaker 00:
But Blum doesn't adjust.

[00:25:19] Speaker 00:
It looks like it does if you read it quickly, but it doesn't.

[00:25:23] Speaker 00:
It has a restriction on this tube 64 that Shaw has said is a telescoping tube, and that's why you would move it into Munikoff or Blum.

[00:25:33] Speaker 00:
But that telescoping tube has a fixed bar 65 that keeps it from telescoping.

[00:25:39] Speaker 00:
When the machine pivots,

[00:25:40] Speaker 00:
It pulls that 64 around and telescopes it, but it's not anything you set for an adjustment.

[00:25:47] Speaker 00:
65 moves it around.

[00:25:50] Speaker 00:
We explained this very clearly in our gray brief in the first 10 pages.

[00:25:59] Speaker 00:
I'm sorry, now you wanted to address pain?

[00:26:02] Speaker 02:
Well, you don't have much time left.

[00:26:04] Speaker 02:
I'll take it off, I guess, mostly with the PTO.

[00:26:06] Speaker 02:
I wanted to understand what your argument was on why we shouldn't grant a writ of mandamus and why it was appropriate for the board to refuse to consider the grounds in light of pain.

[00:26:21] Speaker 00:
Yes, the Patent Office is definitely here to help us with that.

[00:26:27] Speaker 00:
The rules grant the Patent Office the ability

[00:26:33] Speaker 00:
to bring certain references into IPRs and to deny others as being redundant.

[00:26:38] Speaker 01:
And we... What rules, Grant?

[00:26:41] Speaker 00:
What rules?

[00:26:47] Speaker 00:
Title 35, Chapter 31, Section 315 grants the Patent Office the... And 314 grants the Patent Office the ability to

[00:27:01] Speaker 00:
conduct these IPRs in an efficient manner that they have to be completed within a year.

[00:27:04] Speaker 03:
It doesn't say redundant, though, does it?

[00:27:07] Speaker 00:
It doesn't say redundant, no.

[00:27:08] Speaker 00:
They have the ability to make determination on whether there's a likelihood that the claims are unpatentable.

[00:27:15] Speaker 00:
And this court does not have jurisdiction to review those decisions by the director.

[00:27:21] Speaker 02:
Well, except that in quota, it expressly leaves open the possibility that mandamus might be an appropriate vehicle for us to think about these issues.

[00:27:30] Speaker 00:
Unless it's the discretion of the director to institute this.

[00:27:37] Speaker 02:
Why is it the discretion of the director to institute?

[00:27:42] Speaker 00:
Because the director has the duty to facilitate these IPRs in a timely manner and to ensure that each of the claims is looked at and that there's a final disposition by that

[00:27:56] Speaker 00:
by that period of time.

[00:27:57] Speaker 03:
If they get a complex case and maybe to meet their deadlines, they need to work harder or more efficiently, but where does the scheme for redundancy come in that allows a PTO to determine which claims not to hear on the basis that they may be similar to something else?

[00:28:24] Speaker 00:
The theory of the IPR is that the petitioner is to assert references that are tangent to the claims at issue, not just submit an entire search report and let the Patent Office do its work.

[00:28:39] Speaker 00:
There's been cases where they've submitted 400 patents.

[00:28:43] Speaker 01:
But this is not one of those cases?

[00:28:45] Speaker 00:
No, it's not one of those cases.

[00:28:46] Speaker 00:
It's a case where several references have the exact same theory, the transfer of parts back and forth, you know, one after another.

[00:28:53] Speaker 00:
It's the same.

[00:28:53] Speaker 03:
Who decides that they have the same theory?

[00:28:58] Speaker 00:
The director, the board looks at those references.

[00:29:04] Speaker 02:
I didn't see them do that.

[00:29:05] Speaker 02:
I understood their redundancy determination to be that there are just too many different grounds of rejection being lodged on the same claims.

[00:29:14] Speaker 02:
I didn't understand them to make a

[00:29:16] Speaker 02:
factual determination that the reference, pain, was redundant, for example, if the reference, munic canoff or whatever.

[00:29:22] Speaker 00:
They said that the, with respect to those claims, they said the additional assertive grounds are denied as redundant in light of our determination that there's a reasonable likelihood that the challenge claims are unpatentable based on the grounds of unpatentability in which we institute inter partes review.

[00:29:37] Speaker 02:
Right.

[00:29:37] Speaker 02:
I don't see that statement as standing for a determination by the agency

[00:29:42] Speaker 02:
that the disclosure in pain is redundant of the disclosure in municol.

[00:29:47] Speaker 02:
I'm not saying it right, I know.

[00:29:48] Speaker 00:
Yes.

[00:29:50] Speaker 02:
I understood that to be more, well, we'll ask the PTO.

[00:29:52] Speaker 02:
They're here.

[00:29:53] Speaker 02:
So why don't we ask them?

[00:29:54] Speaker 02:
They probably are a little better prepared to address this.

[00:29:57] Speaker 02:
So why don't we have the PTO come forth and explain this to us.

[00:30:09] Speaker 06:
May it please the court, good afternoon, Your Honors.

[00:30:12] Speaker 06:
Just before I answer the specific question you had about redundancy and where that comes from, I'd just like to start by saying that this court lacks jurisdiction to review the USPTO's decision to institute the IPRs in this appeal.

[00:30:28] Speaker 02:
Except didn't the court in QOZO expressly leave open, was it QOZO I think that left open the possibility of a writ of mandamus being entertained.

[00:30:37] Speaker 02:
Not sure how or why it fits in the rubric, but it did leave it open expressly.

[00:30:42] Speaker 06:
So what QOZO basically was saying is that it didn't decide the issue, but there are instances where possibly a writ of mandamus would be appropriate, but you also have to look at St.

[00:30:52] Speaker 06:
Jude and Dominion Dealer, which talked about

[00:30:55] Speaker 06:
a writ of mandamus would not be appropriate when there is a decision not to institute, when there is a denial of an institution decision that can't be challenged even by way of mandamus.

[00:31:05] Speaker 06:
And what you have here is an effort to institute grounds that we denied on.

[00:31:10] Speaker 02:
So in essence... Explain to me if you would the question, respond to the question that I proposed to counsel, which is I understood the redundancy decision by the PTO

[00:31:19] Speaker 02:
not to be a substantive decision that pain, that reference, was redundant of these other references, but rather, and I think it's important, it's important for a stop-all purpose, it's important so that later in a district court litigation, if somebody tries to argue pain, that they can't then bring out this redundancy and say, no, no, PTO already disregarded this.

[00:31:42] Speaker 02:
They found pain factually redundant of Munikanov or whatever it is.

[00:31:47] Speaker 02:
And therefore, district court, you should reject it too.

[00:31:49] Speaker 02:
You see why it's important.

[00:31:50] Speaker 02:
It's very important that exactly what the PTO meant by redundancy be made clear.

[00:31:55] Speaker 02:
So what exactly did they mean?

[00:31:58] Speaker 02:
I understood it to mean redundant in terms of too many different rounds of rejection.

[00:32:03] Speaker 02:
We're going to only decide these.

[00:32:04] Speaker 02:
We're not expressing any indication or decision with regarding the validity of these others.

[00:32:10] Speaker 06:
Your understanding is correct, Your Honor.

[00:32:11] Speaker 06:
When the board said that the grounds were redundant, they weren't talking about cumulative or something of that nature.

[00:32:17] Speaker 06:
They were basically just trying to say, we've already found that we can go forward on this particular claim under one theory.

[00:32:23] Speaker 06:
We don't have to go forward on that same claim under multiple theories.

[00:32:27] Speaker 02:
Even though those other theories might be totally different and the pain reference might disclose very different things.

[00:32:32] Speaker 06:
That is correct, Your Honor.

[00:32:33] Speaker 06:
So for our purposes, and we talked about this in our brief, although we don't think it's right here, we wouldn't

[00:32:39] Speaker 06:
find estoppel on that pain-based ground, because we didn't institute on it, just to further follow what you said about it's important to know, because the district court would need to understand.

[00:32:48] Speaker 06:
We simply are saying we are going to institute on these particular grounds, and the reason why we didn't institute on these grounds is because we didn't feel that we needed to.

[00:32:58] Speaker 02:
I know that your primary argument is, I don't have the authority to review the decision, right?

[00:33:04] Speaker 02:
And I get that.

[00:33:06] Speaker 02:
But let me just ask you a few questions about

[00:33:09] Speaker 02:
whether or not the decision was made in a very intelligent way.

[00:33:13] Speaker 02:
Can you please, because you all brought a case to me, Hyatt.

[00:33:16] Speaker 02:
Are you familiar with this case?

[00:33:18] Speaker 02:
I decided it in your favor, right?

[00:33:20] Speaker 02:
And in this Hyatt case, you asked Mr. Hyatt, you said, I'm gonna limit you to X number of claims.

[00:33:25] Speaker 02:
If you need more than that, tell us why.

[00:33:27] Speaker 02:
We think these claims are representative of all your arguments.

[00:33:31] Speaker 02:
And you did, the PTO did a really great job of putting the onus back on the person seeking the successive amount of stuff

[00:33:39] Speaker 02:
to justify which things were the most important.

[00:33:42] Speaker 02:
But what seems to be occurring here in this process is the PTO is putting a blindfold on and throwing darts at the wall and deciding which grounds to go forward with.

[00:33:53] Speaker 02:
I see no rhyme, reason, or logic in the decisions made.

[00:33:57] Speaker 02:
And so whether I have jurisdiction to review it or not aside, can you look at page A90 of the appendix?

[00:34:04] Speaker 02:
Page A90 contains the grounds that were lodged.

[00:34:08] Speaker 02:
Give me one second, please, Your Honor.

[00:34:14] Speaker 06:
Yes, Your Honor.

[00:34:15] Speaker 02:
Now let me be clear.

[00:34:16] Speaker 02:
There are two sets of claims at issue in this entire review, and they have been divided nice and neatly and evenly.

[00:34:22] Speaker 02:
The interposing claims on the one hand, which are 6, 7, 13, 15, 18, and 21, and the non-interposing claims on the other.

[00:34:30] Speaker 02:
Do you understand what I'm saying so far?

[00:34:33] Speaker 02:
I do.

[00:34:34] Speaker 02:
So the PTO decided it wasn't going to look at ground 11, 12, 13, 14, or 15.

[00:34:39] Speaker 02:
I noticed, and I'm sure you would as well, that the anticipation under pain is the only thing that goes to the interposing claims.

[00:34:48] Speaker 02:
Look at anticipation by Munikoff.

[00:34:50] Speaker 02:
It's not argued for any of these interposing claims.

[00:34:52] Speaker 02:
Look at anticipation by Marmeg.

[00:34:54] Speaker 02:
It's not argued for the interposing claims.

[00:34:56] Speaker 02:
There are two discrete sets of claims that are set apart by an important function or purpose.

[00:35:03] Speaker 02:
I don't know, structure.

[00:35:05] Speaker 02:
There's only one ground of rejection of anticipation made on this entire set of claims.

[00:35:11] Speaker 02:
And that's the ground the PTO said it wasn't going to reach because it's redundant.

[00:35:15] Speaker 02:
Instead, what did it do?

[00:35:17] Speaker 02:
Ah, it instead decided to choose one of the obviousness grounds based on the accumulation of like 15 different references, three to be honest, not 15, but you get my point.

[00:35:26] Speaker 02:
I understand.

[00:35:26] Speaker 02:
So I guess what I'm wondering is whether I can reach it or not.

[00:35:30] Speaker 02:
Does this seem like anybody put any thought at all?

[00:35:33] Speaker 02:
into deciding that pain would be redundant and that the whole world would be better served when there are only 15 grounds of rejection lodged by the agency choosing which ones to go forward with and clearly not choosing the strongest one for this entire set of claims.

[00:35:49] Speaker 06:
Your Honor, my response to that is that in instituting these IPRs, the Board has to look at IPRs as a whole and we, for efficiency reasons, have to get these completed within a year

[00:36:02] Speaker 02:
Is an anticipation something more easily reviewed than obviousness?

[00:36:07] Speaker 02:
It shows how text moves to be based on my exposure to cases.

[00:36:10] Speaker 06:
Right, Your Honor, but just sort of to answer you whether or not this makes sense or not, the board has to do what it feels is best considering what it has in front of it.

[00:36:18] Speaker 02:
So tell me why this would be best.

[00:36:20] Speaker 02:
Give me any logical reason why you think this decision that it made in this case makes any sense and leaves them better off or the world better off.

[00:36:29] Speaker 06:
So as we said in our brief, the board said, look, we've already instituted on this, let's say, ground 11.

[00:36:35] Speaker 06:
We did ground 5.

[00:36:37] Speaker 06:
We don't also need to do ground 10.

[00:36:39] Speaker 06:
No, you didn't institute on ground 11.

[00:36:40] Speaker 06:
No, no, no.

[00:36:41] Speaker 02:
No, that's my point.

[00:36:42] Speaker 02:
We don't have to institute on ground 11.

[00:36:44] Speaker 02:
But that's anticipation of these claims.

[00:36:46] Speaker 02:
There's no other ground for anticipation of these claims.

[00:36:49] Speaker 06:
What I'm saying is, maybe I'm not being clear.

[00:36:52] Speaker 06:
So if you look at ground 11, it's

[00:36:56] Speaker 06:
It's talking about particular claims, 1, 2, 5, 8, 12, and 21.

[00:36:59] Speaker 02:
Yes.

[00:36:59] Speaker 02:
And all of the interposing claims are contained in those steps.

[00:37:03] Speaker 02:
Yes.

[00:37:03] Speaker 02:
All the interposing claims, 6, 7, 13, 15, 18, and 21.

[00:37:07] Speaker 02:
And that's the only place they appear in any anticipation ground.

[00:37:10] Speaker 06:
Well, you're right.

[00:37:11] Speaker 06:
Under anticipation, but sort of going back to what I said before, what the Board is saying is how is it more efficient

[00:37:17] Speaker 02:
to look at three reference obviousness for those claims than one reference anticipation.

[00:37:21] Speaker 06:
Well, the board found that there is a reasonable likelihood that it could go forth, for example, on ground three, which includes like six, seven, and some of those other claims.

[00:37:28] Speaker 06:
It says we don't have to find other reasons to go forward on those exact same claims.

[00:37:33] Speaker 02:
But then when the board came to the conclusion, as it did in this case, that it was wrong in terms of having reviewed

[00:37:42] Speaker 02:
It was wrong when it said it's more likely than not that these claims are going to be rendered invalid by these references.

[00:37:48] Speaker 02:
Why not then at least go back to Payne?

[00:37:50] Speaker 02:
Or let me ask you this, isn't it true?

[00:37:52] Speaker 02:
Because I think it is that they could institute another review right now, you said they're not a stop, on Payne.

[00:38:00] Speaker 02:
Why can't they institute another IPR right now on Payne?

[00:38:06] Speaker 06:
Are you asking if Shaw can go forth and say, Shaw can put that petition forward and the board can then make a determination on those grounds on a substantive level of reasonable likelihood.

[00:38:18] Speaker 02:
Okay, so they're not a stop, definitely not a stop.

[00:38:20] Speaker 02:
They're not a stop.

[00:38:21] Speaker 06:
So the answer to their... There would be, there might possibly, and I just have to look at facts, I don't mean to interrupt you, I'm sorry, Your Honor, but if there was any 315B bar that I just have to factually look, if there was

[00:38:34] Speaker 06:
you have to file within one year of the complaint.

[00:38:37] Speaker 06:
So I just, they're not a stop in district court.

[00:38:40] Speaker 06:
I don't know factually if they could do that today on the paying grounds here.

[00:38:45] Speaker 02:
So they can't file in series in the PTO then?

[00:38:51] Speaker 06:
What I'm saying is I just, I don't know factually what the facts are and when the complaint was filed.

[00:38:55] Speaker 06:
I'd have to look at that, but no if there's

[00:38:57] Speaker 02:
And there's not sort of like a tolling by virtue of them having failed it before and used declining to address it, not on the merits?

[00:39:04] Speaker 02:
No, Your Honor.

[00:39:06] Speaker 06:
But they could go to district court if they wanted to.

[00:39:09] Speaker 06:
And again, I'm not saying that they would be barred.

[00:39:12] Speaker 06:
I don't know.

[00:39:12] Speaker 06:
But if they weren't, they could try to bring it.

[00:39:15] Speaker 02:
But don't you think that there could be a more sensible approach to doing this, kind of like what you all did in Hyatt?

[00:39:21] Speaker 02:
I mean, first off, there's only 15 grounds here.

[00:39:23] Speaker 02:
And there's only three primary references.

[00:39:24] Speaker 02:
That's it.

[00:39:25] Speaker 02:
And there was anticipation for all three of them.

[00:39:27] Speaker 02:
Why in the world you wouldn't go that route?

[00:39:29] Speaker 02:
You've indicated nothing about the board's approach being more efficient.

[00:39:34] Speaker 02:
So you've definitely not convinced me of that.

[00:39:36] Speaker 02:
And I don't think you're convinced of it, quite honestly.

[00:39:38] Speaker 02:
But apart from that, why isn't there a better way to do this, whether I can review it or not?

[00:39:44] Speaker 02:
I mean, doesn't it make a heck of a lot more sense?

[00:39:47] Speaker 02:
Why don't you turn it back on them and say, you tell us.

[00:39:50] Speaker 02:
We're not reviewing all these.

[00:39:51] Speaker 02:
You give us your best five.

[00:39:52] Speaker 06:
Your Honor, whether or not there's a better way, I can't speak to.

[00:39:55] Speaker 06:
What I can tell you is,

[00:39:56] Speaker 06:
that it is within our discretion, the board's discretion, to institute the IPRs in the way that they see fit.

[00:40:05] Speaker 06:
And that's promulgated in the AIA under 316A and B. And this is the way they did it here.

[00:40:11] Speaker 03:
So in your view, is there such a thing as the redundant doctrine?

[00:40:18] Speaker 03:
Does that exist?

[00:40:20] Speaker 06:
People have coined this thing that redundant doctrine.

[00:40:23] Speaker 06:
No, it does not.

[00:40:24] Speaker 06:
The board uses the word redundancy, but there's no redundant doctrine.

[00:40:28] Speaker 06:
Basically, what they're saying is we've instituted on this claim.

[00:40:31] Speaker 06:
We don't need to look at multiple reasons to institute it.

[00:40:35] Speaker 03:
So just thinking in terms of parties appearing before the CTO, and they're trying to establish how they're going to prosecute a case or defend one.

[00:40:47] Speaker 03:
And you're saying there's no redundant doctrine,

[00:40:49] Speaker 03:
But what about the horizontal analysis, a vertical analysis, the redundancy analysis?

[00:40:56] Speaker 03:
I mean, there seems to be a lot of institutional structure of something that has been called the redundant doctrine, but you don't want to call it that.

[00:41:08] Speaker 06:
Well, the board has never used that term.

[00:41:09] Speaker 06:
I mean, parties have said that word.

[00:41:10] Speaker 03:
Because you argued in your brief that it doesn't exist.

[00:41:12] Speaker 03:
There's no such thing as the redundant doctrine.

[00:41:15] Speaker 06:
Right.

[00:41:15] Speaker 03:
But yet you're doing something that

[00:41:18] Speaker 03:
that prevents, in my view, some litigants from asserting, from having their day in court.

[00:41:25] Speaker 03:
You're taking away causes of action.

[00:41:28] Speaker 03:
And I think Judge Moore has illustrated what happens when you do that.

[00:41:32] Speaker 03:
There's a complete line of, there's a complete theory that can be undermined by the redundant doctrine.

[00:41:39] Speaker 06:
Well, we're preventing them from being able to go forward in a particular IPR.

[00:41:44] Speaker 06:
Again, these grounds, under our view, would not be... But if we don't know what those grounds are,

[00:41:49] Speaker 03:
and you haven't laid a basis for them.

[00:41:52] Speaker 03:
Somebody filing district court can face an estoppel argument saying that these grounds have already been before the PTO and been found to not be valid or that there's been some sort of substantive determination made

[00:42:09] Speaker 03:
with respect to those grounds, but we don't know what they are.

[00:42:11] Speaker 06:
Well, it's not a substantive determination.

[00:42:13] Speaker 06:
We're saying we're not instituting on those grounds.

[00:42:15] Speaker 03:
But let's go back.

[00:42:16] Speaker 03:
How is it not a substantive determination if you're looking at different claims and saying, well, this one is not a good one, or it's similar to this one, or let's not prosecute on this one, because if we decide this particular ground, then it eliminates everything else.

[00:42:38] Speaker 03:
The problem is, I personally don't see how you're making these decisions.

[00:42:43] Speaker 03:
And I do know that the Constitution grants litigants the right to, well, under the AIA, the right to this particular proceeding, but in the district court, the right to a jury.

[00:42:57] Speaker 03:
And my fear is that your redundant doctrine that doesn't exist is doing exactly that.

[00:43:05] Speaker 06:
So to address what you're saying, this is not a substantive finding on those particular grounds.

[00:43:11] Speaker 06:
In fact, it's quite the opposite.

[00:43:13] Speaker 06:
What we're saying is, for efficiency reasons to streamline the proceedings that have to be done within a year, we are choosing to institute on part of the grounds that were presented in a petition, but not all of the grounds that were presented in a petition.

[00:43:28] Speaker 06:
The parties are not a stopped or prevented from arguing those grounds.

[00:43:33] Speaker 06:
It's just not going to go forward in the particular petition.

[00:43:36] Speaker 02:
Well, no, the parties are a stop from arguing those grounds in the PTO because it is more than a year out.

[00:43:40] Speaker 02:
So there is a stopper here.

[00:43:42] Speaker 06:
They could go to the district court.

[00:43:43] Speaker 06:
They wouldn't be a stopped from arguing those same grounds at a district court level where they'd have a jury that can decide.

[00:43:50] Speaker 06:
We're just saying you can't do it here because we're not going to institute on it.

[00:43:54] Speaker 06:
We're not giving you a reason.

[00:43:55] Speaker 06:
We're not saying there's not a reasonable likelihood with respect to them.

[00:43:57] Speaker 06:
We're not making a substantive call.

[00:44:00] Speaker 02:
We're just... And just to point out, we don't even... So the question to decide what's in the Efficiency of Service allow for disparate treatment of disparate parties.

[00:44:09] Speaker 02:
About the same parties, I should say.

[00:44:11] Speaker 02:
The disparate parties, I guess, yes, they can be treated differently.

[00:44:13] Speaker 02:
But to understand, meaning... So here, this is the case.

[00:44:16] Speaker 02:
There are 15 grounds.

[00:44:17] Speaker 02:
There's only three references argued for anticipation.

[00:44:20] Speaker 02:
I've seen lots of IPRs come up already where there's 30 grounds and the PTO resolves all of them.

[00:44:25] Speaker 02:
What if on the same day this determination was made, nope, we're only going to do 10 of yours, there's another determination where they go ahead and review all 30.

[00:44:34] Speaker 02:
Is that okay?

[00:44:35] Speaker 02:
Is that an exercise of discretion?

[00:44:37] Speaker 02:
to allow the agency to make different decisions in different cases like that?

[00:44:42] Speaker 06:
Yes, because actually we don't know what's going on in those cases.

[00:44:44] Speaker 06:
Just because a case has less even references or claims doesn't mean it's not more complicated and would take more than a year.

[00:44:51] Speaker 06:
Some cases the technology is so different.

[00:44:53] Speaker 06:
You're basically comparing apples to oranges.

[00:44:56] Speaker 06:
We can't just look at how many claims and how many references are in there.

[00:44:59] Speaker 06:
Some can go quickly, some may not.

[00:45:01] Speaker 06:
The point that the PTO is trying to say is

[00:45:04] Speaker 06:
We have to get these cases out.

[00:45:05] Speaker 06:
We have a year to do it.

[00:45:06] Speaker 03:
What do you decide on?

[00:45:07] Speaker 03:
The claims that are or the grounds that are more complex or the ones that will resolve the case?

[00:45:14] Speaker 06:
I'm sorry.

[00:45:15] Speaker 06:
I just didn't hear the beginning of your question.

[00:45:16] Speaker 03:
Okay.

[00:45:17] Speaker 03:
On what's the basis of the decisions being made that something is redundant?

[00:45:22] Speaker 03:
Are you selecting the claims or the grounds that are the most complex and that's what you want to deal with or the ones that will resolve the entire case?

[00:45:33] Speaker 06:
The board is choosing to look at the petition as a whole and make a call on to what would be the most efficient for that particular petition.

[00:45:42] Speaker 06:
The reason I'm not specifically answering what they decide is because it could be different for the varying petitions that come forward.

[00:45:51] Speaker 03:
Just listening to your arguments and trying to figure it out, I'm having a hard time seeing how you're not making substantive decisions with respect to particular claims.

[00:45:59] Speaker 06:
Because you're not deciding that the particular ground that you're choosing not to institute on doesn't have a reasonable likelihood of success.

[00:46:07] Speaker 06:
We don't even have to state in our decisions, our institution decisions, why we're choosing not to go for it.

[00:46:13] Speaker 06:
They happen to do it here and use the word redundancy.

[00:46:16] Speaker 06:
But they could have simply just said, we're going to institute on grounds x, y, z.

[00:46:20] Speaker 06:
and said nothing else?

[00:46:21] Speaker 02:
Suppose they said, we're not going to institute because we don't like your company, period.

[00:46:28] Speaker 02:
Suppose that they clearly went offline and indicated they were refusing to institute for a reason that would not be viewed as even vaguely or plausibly reasonable or within, I would think, within the delegated authority given to them by Congress to promote the efficiency of whatever, whatever, whatever.

[00:46:47] Speaker 06:
And so your question is, if they did that, yeah, what would happen?

[00:46:49] Speaker 06:
Would that be a case where we could review it?

[00:46:54] Speaker 06:
That would be a case that you could choose to possibly be an improper motive case.

[00:47:01] Speaker 06:
Possibly.

[00:47:01] Speaker 06:
I mean, if there is a constitutional implication.

[00:47:03] Speaker 06:
Right.

[00:47:04] Speaker 06:
If there's constitutional implications, then obviously you can.

[00:47:06] Speaker 06:
That's not the case here.

[00:47:08] Speaker 03:
But suppose there's only one claim, one ground, and you look at it and go, whoa, this is a really difficult complex

[00:47:16] Speaker 03:
claim we're not going to institute.

[00:47:18] Speaker 06:
We actually have authority to do that.

[00:47:21] Speaker 06:
If you look at the legislative history and comments made by Senator Kyle, they even put in provisions where if for efficiency reasons, there is a claim that even has a reasonable likelihood of success of going forward, we can deny to institute on that claim.

[00:47:37] Speaker 06:
That is within our discretion to do.

[00:47:39] Speaker 06:
It's not something that usually happens, but it is permissible.

[00:47:43] Speaker 02:
Where does it say that?

[00:47:44] Speaker 02:
Does it say that in Section 316?

[00:47:47] Speaker 06:
No, it doesn't say it in Section 3... Just give me one second.

[00:47:53] Speaker 02:
Kyle says it in the legislative... Yeah, in the Legislative History Center, Kyle... I'm not aware of legislative history, especially statements made by an individual senator.

[00:47:59] Speaker 02:
So where does the statute give the PCA that authority?

[00:48:02] Speaker 06:
Well, the statute gives us authority to institute... So if you look at 316A and B, that's where we get our authority to

[00:48:10] Speaker 06:
go forward under 37 CFR 42.108.

[00:48:14] Speaker 02:
And so at 316... Okay, so at 316A2, right, I'm going to help you.

[00:48:22] Speaker 02:
I'm going to get you right to the point.

[00:48:23] Speaker 06:
Setting forth the standards for showing sufficient grounds to institute a review.

[00:48:27] Speaker 02:
Okay, and wait, and you've set them forth and you've said more likely than not invalid, right?

[00:48:31] Speaker 02:
Isn't that the standard that you set forth?

[00:48:34] Speaker 06:
Yes, and then if you look at

[00:48:36] Speaker 06:
316A4, we also can establish and govern inter-party's review under this chapter.

[00:48:41] Speaker 06:
So that gives us authority to do it.

[00:48:43] Speaker 06:
And then if you also look at 316B, we can take into consideration the... In prescribing regulation.

[00:48:50] Speaker 06:
Right, which is then 37 CFR 42.108, which allows us to institute on some grounds, not other grounds.

[00:48:58] Speaker 02:
Okay, wait, but you're allowed, in prescribing regulations, to take these things into account.

[00:49:04] Speaker 02:
And you're saying that your regulation, 42, what is it?

[00:49:09] Speaker 02:
37 CFR 42.108.

[00:49:10] Speaker 02:
OK.

[00:49:12] Speaker 02:
And that's the one that allows you, tell me exactly what that says.

[00:49:16] Speaker 06:
That allows us to institute on some grounds and not others.

[00:49:18] Speaker 06:
To parse out a petition, what we did here, to say I'll institute on.

[00:49:22] Speaker 02:
Does it give a reason for parsing?

[00:49:24] Speaker 02:
Because I mean, I think I'm sort of with Judge Reyna, which is your redundancy.

[00:49:29] Speaker 02:
You could see why I was confused.

[00:49:31] Speaker 02:
I was confused in the very beginning.

[00:49:33] Speaker 02:
Were you making a determination that pain itself was redundant of the other references?

[00:49:37] Speaker 02:
Were you just deciding grounds?

[00:49:39] Speaker 02:
I'm a little concerned by the PTO's explanation and the effect it may have, the lack of clarity in your decision in this case and what effect it might have.

[00:49:48] Speaker 02:
So what does it say precisely, that regulation you can do?

[00:49:52] Speaker 02:
Sure.

[00:49:54] Speaker 06:
So the regulation reads that at any time, I'm sorry, let me start at A.

[00:50:01] Speaker 06:
When instituting inter-parties review, the board may authorize the review to proceed on all or some of the challenge claims and on all or some of the grounds of unpatentability asserted for each claim.

[00:50:11] Speaker 06:
And then under B, it says that any time prior to institution of inter-parties review, the board may deny some or all grounds for unpatentability for some or all of the challenge claims.

[00:50:20] Speaker 06:
And that denial of a ground is a board decision not to institute inter-parties review on that ground.

[00:50:26] Speaker 03:
Isn't that assuming that they've actually looked at the claims and made some decision as to its likelihood?

[00:50:31] Speaker 03:
I mean, in here, under the redundancy document, it appears that a lot of the claims aren't considered at all.

[00:50:38] Speaker 03:
There's some decision that's being made.

[00:50:40] Speaker 03:
We're going to institute on these three, but nothing else.

[00:50:45] Speaker 06:
Well, I wouldn't say that it's not that they're considered.

[00:50:47] Speaker 06:
I mean, the board is going to do their job and look at all the claims.

[00:50:49] Speaker 06:
But what they're saying is we don't have to consider every possible reason why it is.

[00:50:53] Speaker 03:
Well, then, would you really consider another petition on pain, if that's the case?

[00:50:59] Speaker 03:
I mean, haven't you already looked at the anticipation argument in this case?

[00:51:05] Speaker 03:
Would you really accept another petition just solely on pain?

[00:51:08] Speaker 06:
Well, just sort of back up for, in the facts of this case, we wouldn't be able to.

[00:51:13] Speaker 06:
But let's say, factually, that we even could.

[00:51:15] Speaker 06:
To answer your question, they may be choosing not to go forward on pain for reasons other than reasonable likelihood of success.

[00:51:22] Speaker 06:
They could be choosing not to go forward on the pain ground.

[00:51:25] Speaker 06:
because they already have decided that the claim that pain is covering in the petition already has one theory applied to it or two theories applied to it.

[00:51:33] Speaker 03:
That's a substantive decision.

[00:51:36] Speaker 06:
I would argue that a substantive decision is deciding... So you're no longer arguing efficiency.

[00:51:42] Speaker 03:
Now you're arguing that this case we don't have to decide because we've already decided or we can decide it.

[00:51:49] Speaker 03:
We can decide this ground.

[00:51:50] Speaker 03:
on this particular graph.

[00:51:52] Speaker 06:
Well, that's efficiency because you're saying we already have one theory applied to claim one, just to pick a claim.

[00:51:58] Speaker 06:
So we don't need to consider five other reasons and references as to claim one.

[00:52:03] Speaker 06:
That's where the efficiency is coming in.

[00:52:04] Speaker 03:
Because they're similar?

[00:52:08] Speaker 03:
They express the same facts?

[00:52:12] Speaker 06:
Because we've already picked one.

[00:52:13] Speaker 06:
Because it would take more time to look at four reasons versus one reason.

[00:52:19] Speaker 06:
That's the argument that I'm trying to make.

[00:52:21] Speaker 06:
So I just want to remind this court, I know we've sort of talked about redundancy and whether or not it produces discretion, but I just want to remind this court that this court has already decided whether or not the institution's decision can be reviewed under Cuoto and St.

[00:52:35] Speaker 06:
Jude and Dominion Dealer and Acadies as well, which goes to both of the arguments that ACS and Shaw were making in their briefs to this court.

[00:52:44] Speaker 06:
And so I respectfully ask that you dismiss the

[00:52:48] Speaker 06:
questions relating to the reviewability of our institution decisions.

[00:52:53] Speaker 06:
Okay, thank you.

[00:52:54] Speaker 02:
No, thank you very much.

[00:52:55] Speaker 02:
Thank you.

[00:52:58] Speaker 02:
Mr. Kodish, you have a few minutes left for rebuttal.

[00:53:04] Speaker 05:
Thank you, Your Honor.

[00:53:06] Speaker 05:
By and large, we're resting on our briefs on the issue of redundancy, other than to say that I sense the tenor of the panel is exactly consistent with

[00:53:17] Speaker 05:
with the lack of equity, the arbitrary and capricious nature of dispatching our sole 102 argument in the name of some apparent substantive look, which now is plainly admitted not to have happened.

[00:53:32] Speaker 03:
Could you be able to bring that argument, the 102 argument in district court, and not be a stop?

[00:53:37] Speaker 05:
Our belief is that we will.

[00:53:39] Speaker 05:
You will be able to.

[00:53:41] Speaker 05:
Our belief is that we will, but we'll get there, and I think it's a fair prediction that somebody on the other side may say that I am a stopped, and we will fight on that battle.

[00:53:50] Speaker 05:
The ACS may say that we are a stopped.

[00:53:53] Speaker 05:
and there'll be an outcome by the district judge and one side or the other will have a complaint that we'll be back here in umpteen years to talk about whether we were stopped or not.

[00:54:02] Speaker 05:
Perhaps there'll be another case that we need done.

[00:54:04] Speaker 04:
The government's consistently taking the position that you're not a stop.

[00:54:06] Speaker 05:
And we're encouraged by that and that's why I'm going to move on to some other questions.

[00:54:10] Speaker 05:
Liberty Mutual is the case that talks about 220 references.

[00:54:13] Speaker 05:
This is a handful in one 102 in particular.

[00:54:17] Speaker 05:
The other points I want to make quickly is responding to the IPR 2, the Bloom reference.

[00:54:21] Speaker 05:
There's no error of law even to talk about there.

[00:54:24] Speaker 05:
There certainly was substantial evidence.

[00:54:26] Speaker 05:
The board said that this limitation corresponding to the distance of the package was shown plain as day on all three levels of the Bloom reference and then they felt and suspended it with this motivation to combine based on the adjustability of that device and the benefits that would flow if combined with Munich Hoff.

[00:54:45] Speaker 05:
So that's the end of the argument with respect to balloon.

[00:54:48] Speaker 05:
So I want to return quickly to a couple of points with respect to the IPR-2.

[00:54:51] Speaker 05:
I did hear one misconception that it's a three-reference obviousness case.

[00:54:56] Speaker 05:
I want to make sure, Judge Moore, you understand that it's two alternatives.

[00:54:59] Speaker 02:
It's two.

[00:54:59] Speaker 02:
No, it's actually, well, it's three secondary references.

[00:55:01] Speaker 02:
One primary reference and then three different obviousness arguments with regard to each of one secondary reference.

[00:55:07] Speaker 05:
Just to confirm, we're in the same case.

[00:55:09] Speaker 05:
It's Bar-Mag plus Ligon, Munikoff plus Ligon.

[00:55:12] Speaker 05:
I understand.

[00:55:13] Speaker 05:
OK, great.

[00:55:13] Speaker 05:
And then the use of tube Q is new argument.

[00:55:20] Speaker 05:
I think I sense agreement on that Judge Walton.

[00:55:22] Speaker 05:
I don't know what that means.

[00:55:24] Speaker 05:
The use of tube Q, the board linked its decision on page 22 and 23 to the fact that it had the misconception that we all admit here openly that the tube Q was new.

[00:55:36] Speaker 05:
And as a result,

[00:55:38] Speaker 05:
turned a blind eye to our arguments.

[00:55:39] Speaker 05:
They excluded the Wang declaration.

[00:55:41] Speaker 01:
Note that in IPR 2... Well, Wang was excluded because it was untimely.

[00:55:46] Speaker 01:
It doesn't have anything to do with whether or not the tube is new.

[00:55:49] Speaker 05:
But I submit that the reason was the tube cube.

[00:55:52] Speaker 05:
Because if you look at IPR 2, Wang did the exact same thing.

[00:55:55] Speaker 05:
He proffered an explanation, a diagram of how

[00:55:58] Speaker 05:
and Balloon might be combined.

[00:56:01] Speaker 05:
He did it at the same time in a reply declaration.

[00:56:04] Speaker 05:
No problem, no exclusion made.

[00:56:06] Speaker 05:
It was all linked to this tube queue that gave them such heartache.

[00:56:12] Speaker 05:
And to be clear, the use of tube queue, I mean that tube queue was used in the tube package arrangement.

[00:56:19] Speaker 05:
There was no ensnarement.

[00:56:20] Speaker 05:
That's why they waved the white flag on those claims.

[00:56:23] Speaker 05:
Because people knew enough that when you move from a... I think they draw a distinction between

[00:56:27] Speaker 04:
the new tube and the new analysis in Wayne.

[00:56:31] Speaker 04:
It's not just a new tube.

[00:56:34] Speaker 04:
They're saying there's new analysis as well.

[00:56:38] Speaker 05:
I don't follow that from what they're saying.

[00:56:40] Speaker 05:
It's given that they're stranding across.

[00:56:43] Speaker 05:
It's given that there is stranding on the same side.

[00:56:47] Speaker 05:
What they're essentially saying is that a person of ordinary skill, let's say the image is a shoe, a shoe with two eyelets.

[00:56:54] Speaker 05:
that a person of ordinary skill would have solved the problem, hey, I'll take my lace, I'll tie the shoe together.

[00:57:00] Speaker 05:
Add four eyelets, suddenly I dispatch my common sense, and I begin wrapping the laces around the underside, the sole of the shoe, so that it breaks, we trip, we fall down.

[00:57:09] Speaker 05:
That's essentially what happened here, and we were condemned because they wrongly thought... You're on strong ground.

[00:57:15] Speaker 04:
As far as I'm concerned, you're on strong ground for when they say there's no basis for adding the additional two.

[00:57:22] Speaker 04:
I mean, they are saying he's adding an additional tube.

[00:57:25] Speaker 04:
They're not just saying he's relabeling.

[00:57:27] Speaker 05:
Right, which is all he did.

[00:57:29] Speaker 02:
Okay, well, you're well beyond your rebuttal time, so we're going to have to bring this to a close.

[00:57:33] Speaker 02:
I thank all counsel for their arguments.

[00:57:36] Speaker 02:
It was especially helpful, by the way, to have the PTO here, so thank you for coming and sharing your views with us.

[00:57:44] Speaker 02:
We'll take the case under submission.

[00:57:46] Speaker 02:
That's it for today.