[00:00:39] Speaker 03: We will hear argument next in number 161665, CTP Innovations Against Eastman Kodak Company. [00:00:57] Speaker 03: Mr. Miller, can you begin by addressing the matter that arose at the end of next week [00:01:06] Speaker 03: last week when Judge Garbus concluded that there was not in fact an effective assignment making CTP the owner at the time of the filing of the lawsuits that were before Judge Garbus. [00:01:22] Speaker 02: Yes, it pleased the court. [00:01:24] Speaker 02: That is a ruling that we thought it was necessary to bring to the court's attention. [00:01:30] Speaker 02: petitioners have taken the position that it does not impact this. [00:01:33] Speaker 03: Let's talk about a few specifics because we need to think about whether we actually have power to act in this case and what we should do and so on. [00:01:43] Speaker 03: So let me ask you, start with this. [00:01:47] Speaker 03: Has there been any subsequent assignment from Donnelly to CTP, subsequent to the assignments that Judge Garbus was talking about? [00:01:59] Speaker 03: that might now make you a patent owner on the assumption, which I know you dispute, that Judge Garbus is right about your not having been the patent owner at the time of the initiation of those lawsuits. [00:02:13] Speaker 02: Yes. [00:02:15] Speaker 02: Those assignments have been executed. [00:02:17] Speaker 02: They were executed on Friday, I believe, late Friday morning. [00:02:21] Speaker 03: So that implicitly answers the question whether Donnelly knows what's going on here. [00:02:28] Speaker 03: I assume it does know that there was a cancellation of a patent that at least according to Judge Garbus' rulings belongs to them, not to you. [00:02:38] Speaker 02: Correct. [00:02:38] Speaker 02: Donnelly is aware of Judge Garbus' ruling and executed an assignment from Donnelly to Media Innovations. [00:02:44] Speaker 02: I believe it was at 9.53 a.m., I believe, and then at a subsequent time period that afternoon or later that morning, Media Innovations assigned [00:02:54] Speaker 02: the rights to CTP innovations. [00:02:57] Speaker 03: This was last Friday? [00:02:58] Speaker 02: This was last Friday. [00:03:00] Speaker 00: Okay. [00:03:00] Speaker 00: But I thought Judge Garbus's ruling was that the patent was owned by Banta and there was no assignment from Banta forward. [00:03:13] Speaker 00: There was an assignment from Donnelly, but Donnelly acquired just the stock, not the asset. [00:03:19] Speaker 02: Respect your honor. [00:03:20] Speaker 02: I believe that's inaccurate. [00:03:21] Speaker 02: The court held that there was a valid assignment from Bonta to RR Donnelly. [00:03:26] Speaker 02: The question is whether the subsequent assignment from Bonta to RR Donnelly still enacted the transfer from Donnelly to Media Innovations and subsequently to CTP Innovations. [00:03:40] Speaker 00: All right. [00:03:40] Speaker 00: I'm confused. [00:03:41] Speaker 03: So as of last Friday, [00:03:44] Speaker 03: Donnelly clearly had these patents and so last Friday you're saying Donnelly executed a new assignment to what? [00:03:52] Speaker 03: To media and then media to you? [00:03:54] Speaker 02: That is correct, John. [00:03:55] Speaker 03: Okay. [00:04:00] Speaker 03: Do you think that on the assumption that it was those assignments six days ago that made you the patent owner? [00:04:13] Speaker 03: that the board's ruling at a time you were not the patent owner, again, this assumes Judge Garbus is right, that that is a legally effective decision, a final written decision canceling claims of a patent in a proceeding that on those assumptions the actual patent owner at the time was not a party to. [00:04:41] Speaker 03: trying to figure out what we need to do, what we should do, what we can do in these circumstances. [00:04:50] Speaker 02: Let me answer your question directly. [00:04:52] Speaker 02: Under the regulations propagated by the Patent Office by the Director, the petitioners are required to not only name but also serve the patent donor. [00:05:03] Speaker 03: Well, the one, I think, if I have the regulation, the one recorded, isn't it the [00:05:09] Speaker 02: I don't believe it's the recording. [00:05:11] Speaker 02: I believe it's the owner. [00:05:11] Speaker 03: 42.102, is that right? [00:05:18] Speaker 00: And 23. [00:05:18] Speaker 02: 42.105. [00:05:20] Speaker 02: It is 42.105A. [00:05:26] Speaker 02: The petition and the supporting evidence must be served on the patent owner at the correspondence address of record of the subject patent. [00:05:34] Speaker 02: What does that mean, correspondence address of record? [00:05:37] Speaker 02: In this particular case, Your Honor, the correspondence address was still listed with Donnelly's attorney, but the application or the actual petition referenced only the patent owner who they believed to be the patent owner of CT Innovations. [00:05:52] Speaker 02: And all throughout every filing, every pleading with the board and with this court, the petitioners have referenced CTP Innovations as the owner of the patent. [00:06:04] Speaker 00: But what impact would it be if CTP was not in fact the owner at the time the petition was filed? [00:06:14] Speaker 00: In other words, that the petitioner directed this to CTP as the perceived owner at the address listed, but what's the impact if CTP was not in fact the owner at that time? [00:06:31] Speaker 00: The impact may very well be that the [00:06:34] Speaker 02: Uh, the court would need to remand this case with instructions to dismiss all of the petitions that petitioners have filed against CTP innovations. [00:06:45] Speaker 02: That is one potential impact of this. [00:06:48] Speaker 02: They're avoid ab initio. [00:06:51] Speaker 02: If an alternative would be. [00:06:54] Speaker 00: But then, but then what would happen then, then presumably Kodak would refile the same petition against the same CTP. [00:07:04] Speaker 00: And the Patent Office would issue the same ruling, and we'd be back here again. [00:07:10] Speaker 02: It is appellate's position that we agree with you, and that would be terribly inefficient in a waste of both the parties and the court's resources to go through what have been, as indicated in the petition itself and in our appeal appellate brief, there are a number of appeals too that were recently filed on petitions where we were actually successful in debating. [00:07:31] Speaker 02: petitions. [00:07:32] Speaker 02: There's also one that remains on reconsideration. [00:07:36] Speaker 02: There is another petition that was subsequently filed after this set of four that also remains in reconsideration. [00:07:42] Speaker 02: And there are two petitions that were denied at the beginning of the board decline to take them up that were filed against CTP innovations. [00:07:50] Speaker 00: I suppose you could argue that, well, if CTP wasn't the owner at the time, that's not a [00:07:56] Speaker 00: a standing defect as you would have in the district court where a party filing a lawsuit that was not the patent owner wouldn't have standing. [00:08:07] Speaker 00: The Kodak as the petitioner certainly had a right to file a petition. [00:08:12] Speaker 00: The Patent Office certainly had a right to act on the petition. [00:08:16] Speaker 00: The fact that the responding party may not have had title at the time seems to me doesn't present the same sort of [00:08:26] Speaker 00: standing case or controversy issues that you would have in a district court setting so i think that uh... uh... you know you may be right that it really doesn't matter as long as in this court there's a case of controversy which means that in this court unless your client has check test test test you're not an issue [00:08:56] Speaker 03: Do we know what's going on? [00:08:58] Speaker 03: OK. [00:08:59] Speaker 03: Maybe it's come to an end. [00:09:02] Speaker 03: Focus for a minute on Donnelly. [00:09:08] Speaker 03: If Judge Garbus was right, then Donnelly was the owner of this patent at the time of the IPR proceedings in this case. [00:09:21] Speaker 03: How do we know what kind of papers might we get [00:09:27] Speaker 03: How do we know that Donnelly is not jumping up and down saying, our patent has been canceled, we weren't there, that's got to be undone? [00:09:41] Speaker 02: By virtue, and it is not in the record, by virtue of the assignment on Friday. [00:09:47] Speaker 02: And it is undisputed that there is a contract between Donnelly and CTP Innovations. [00:09:54] Speaker 03: To effectuate the? [00:09:55] Speaker 02: To effectuate the assignment. [00:09:57] Speaker 00: I would request that you submit a copy of that to us. [00:10:03] Speaker 02: Your Honor, may I submit a copy of the new assignments? [00:10:06] Speaker 00: Absolutely, please. [00:10:08] Speaker 03: Is there any chance that... Not right now, you can do it afterwards. [00:10:12] Speaker 04: The last week assignment, was it in any way numphrotunk or was it given retroactive effect? [00:10:21] Speaker 02: It was not. [00:10:23] Speaker 02: We have not decided yet whether we will appeal Judge Garbus' ruling. [00:10:27] Speaker 02: We do believe it is incorrect, but in the interest of efficiency. [00:10:31] Speaker 02: Some of these cases were filed in June of 2013, and we are just now getting to the stage of discussing standing. [00:10:37] Speaker 02: So whether we decide to refile or appeal has not been decided. [00:10:46] Speaker 03: Maybe we can get to the merits now. [00:10:49] Speaker 02: Yes, Your Honor. [00:10:50] Speaker 02: Thank you. [00:10:51] Speaker 02: And so I'm clear on time, was that part of my? [00:10:54] Speaker 03: It was, unfortunately. [00:10:57] Speaker 02: All right. [00:10:57] Speaker 02: We'll get right to it. [00:10:59] Speaker 03: You know, if you're saying things that are just fascinating and we don't want to stop, we'll go. [00:11:05] Speaker 02: For purposes of oral argument, there was one primary issue that, if resolved in appellant's favor, should warrant reversal of the board's decision to cancel claims one through nine by finding them unpatentable. [00:11:19] Speaker 02: That issue is whether the board unreasonably and arbitrarily failed to apply 37 CFR section 42.12. [00:11:26] Speaker 02: If the board unreasonably and or arbitrarily failed to apply this regulation, the board incorrectly admitted into evidence the supplemental declaration of Johann Sweetens, which is exhibit 1024, and the declaration of Michael Jan, which is exhibit 1023, [00:11:47] Speaker 02: Because it did so, one, without the motion that is required by 42.123, or two, meeting 42.123's requirement to show that supplemental information submitted reasonably could not have been obtained earlier. [00:12:04] Speaker 02: If those two declarations are excluded, three of the facts relied upon by the board to determine that Apogee was publicly accessible and therefore proper art [00:12:13] Speaker 02: proper prior printed publication under Section 102, were not publicly accessible prior to July 30, 1999, the critical date. [00:12:24] Speaker 02: And thus, Apogee itself should not have been considered. [00:12:28] Speaker 02: The only fact that the board could rely on at that point, excluding those three points that rely on the Sweeten's supplemental declaration and the Yan declaration, is the fact that Apogee was printed at least as early as 1998. [00:12:42] Speaker 02: Without establishing more than printing by Apogee, the petitioners have failed to carry their burden to show that Apogee is a proper reference for an IPR. [00:12:51] Speaker 02: All of the combinations asserted for obviousness rely on Apogee as a necessary element. [00:12:56] Speaker 02: Without Apogee as an element of those combinations, the board's decision must be reversed. [00:13:03] Speaker 02: Further, this seems to be a significant issue to a number [00:13:11] Speaker 02: petitions and IPRs because it determines what evidence and what supplemental information may be submitted beyond that that is in the petition and beyond that that is submitted with the patent owner's response. [00:13:24] Speaker 02: Further, there seems to be considerable confusion among the administrative law judges as to the applicability of Section 42.123 as it relates to supplemental information, both relevant and not relevant, and supplemental evidence under 42.123. [00:13:40] Speaker 02: Resolution of this primary issue, therefore, is important not only to the present proceeding, but to many other, if not all of the other IPR proceedings as well. [00:13:51] Speaker 03: What is your view of how to square the language, your apparent interpretation of the language of 123b, with the clear [00:14:06] Speaker 03: permissibility of submitting evidence with a reply. [00:14:11] Speaker 02: Your Honor, if you look at the cases, both... No, I'm just looking at the language. [00:14:16] Speaker 03: A party seeking to submit supplemental information more than one month after trial is instituted, must request authorization to file a motion to submit the information. [00:14:26] Speaker 03: The reply, and I guess even the Patent Owner response, right, is going to be more than a month after trial. [00:14:31] Speaker 02: The Patent Owner's response is actually in the statute. [00:14:34] Speaker 02: And after trial is instituted. [00:14:35] Speaker 02: The ability to file declarations evidenced with a petition is found in section 35 USC 113. [00:14:41] Speaker 02: The ability of a patent owner to submit declarations along with their patent owner's response is actually found in 35 USC 316A8, I believe, Your Honor, where it sets forth those requirements. [00:14:56] Speaker 02: There is nothing in the statute that sets forth the ability to file a reply. [00:15:01] Speaker 02: Instead, in section 316A, there is [00:15:03] Speaker 02: a directive for the director to establish regulations for the submission of supplemental information. [00:15:11] Speaker 02: The difference between supplemental information, which is any done. [00:15:16] Speaker 03: I guess here's what I mean. [00:15:17] Speaker 03: I just may be confused about this. [00:15:20] Speaker 03: So the regulations establish, slightly indirectly, the right of reply, sort of referred to in the timing. [00:15:29] Speaker 03: But the regulations say, you get to do a reply. [00:15:32] Speaker 03: That's well after, far more than a month after trial is instituted. [00:15:38] Speaker 03: Regular course. [00:15:40] Speaker 03: They don't have to meet the specific requirement here, do they, of 123B for supplemental information? [00:15:49] Speaker 02: To file a reply brief and make argument, that is provided for within the regulations. [00:15:55] Speaker 02: There is no reference within that regulation that refers to the submission of reply evidence. [00:16:00] Speaker 03: Reply evidence. [00:16:01] Speaker 02: Reply evidence, which is a significant distinction between reply argument and reply evidence. [00:16:06] Speaker 03: A petitioner is freely able to... So in your view, whenever the petitioner on reply submits evidence, it needs to meet the standards of 123B. [00:16:18] Speaker 02: That is correct, Your Honor. [00:16:20] Speaker 03: Both relevant and... Is that the way it's been done in the last 150 or 200 IPRs? [00:16:26] Speaker 02: It's been inconsistently applied. [00:16:29] Speaker 02: If you look at the nuvasive versus Warsaw orthopedics case, IPR2013-00202, paper 22. [00:16:43] Speaker 02: In footnote 3, it says, while a petitioner may file supplemental evidence, it must do so by way of a motion, and it must seek authorization to file such a motion. [00:16:53] Speaker 02: And it cites to 37 CFR 42.123. [00:16:59] Speaker 02: Also in the Gnosis v. South Alabama Medical Science Foundation case, it's IPR 2013-00116, which paper 29 at 3 says, in the event petitioner files a motion to exclude evidence, the patent owner may seek authorization to file an opposition thereto and to file a supplemental evidence. [00:17:20] Speaker 02: Those are two cases that [00:17:22] Speaker 02: both specifically note that supplemental evidence. [00:17:25] Speaker 02: The problem here seems to be the confusion between supplemental evidence and supplemental information. [00:17:31] Speaker 02: Supplemental evidence is that which is provided subject to an objection to the other side. [00:17:35] Speaker 02: You submit supplemental evidence to the other side. [00:17:38] Speaker 02: You do not file it with the board. [00:17:40] Speaker 02: However, if you seek to file it with the board, any evidence that is not contained in the petition and is not contained in the patent owner's response must come in as supplemental evidence. [00:17:50] Speaker 02: There is good reason for this, as explained in the statute. [00:17:52] Speaker 02: You must show, if you're the petitioner, that it could not have been raised earlier, or why it was not raised earlier. [00:17:58] Speaker 02: Here, that's a very significant question. [00:18:01] Speaker 02: Both the Sweeten Supplemental Declaration and Mr. Jan's declaration, they are former employees of AGFA. [00:18:07] Speaker 02: AGFA is a petitioner in this case. [00:18:09] Speaker 02: Apogee is a piece of art that AGFA has set forward and said that it is ours, and we were passing out this piece of prior art. [00:18:19] Speaker 02: Sweeten's supplemental declaration and Yahn's supplemental declaration were submitted to us in response to our motion to exclude saying that the deposition testimony that we submitted. [00:18:31] Speaker 04: Before you go into all this, I'm just trying to figure out why isn't the right rule that the board has a lot of discretion in regulating how evidence comes in. [00:18:43] Speaker 04: And it was reasonable to allow this evidence in. [00:18:49] Speaker 04: once you've made a certain challenge that you did in your patent owner's response? [00:18:54] Speaker 02: There are two reasons for that. [00:18:55] Speaker 02: First is 37 CFR 4261 says, evidence if not taken, submitted, or filed in accordance with this subpart is not admissible. [00:19:05] Speaker 02: Therefore, the only means, the rules have been established that the only means to do that is to submit it in accordance. [00:19:12] Speaker 02: Here, that would be section 123, which allows for supplemental information. [00:19:16] Speaker 02: Now, the board may waive [00:19:19] Speaker 02: or suspend these rules, and we don't dispute that. [00:19:21] Speaker 02: However, in this case, there was neither a request to waive the rule nor a request to suspend the rule. [00:19:27] Speaker 02: In fact, the petitioners just filed the evidence, which goes to a necessary part of their premium fashion case, establishing the date. [00:19:37] Speaker 02: They filed it. [00:19:37] Speaker 02: And then you objected at that time? [00:19:39] Speaker 02: We did. [00:19:40] Speaker 02: And then what did the board say? [00:19:41] Speaker 02: The board never issued a non-final action. [00:19:44] Speaker 02: Instead, the board issued their final determination in which they determined that [00:19:48] Speaker 02: The motion to exclude both our first one and our second one were rejected because the evidence submitted went to the weight of the evidence, and it was not based on an evidentiary rule. [00:20:00] Speaker 02: It said that one, reply evidence is permitted, and it ignored applying Section 123, and it said two, that it wasn't actually supplemental evidence, and to the extent it was supplemental evidence, it could become supplemental information. [00:20:16] Speaker 00: Doesn't the board, though, have the discretion to accept so-called reply evidence, even though it might not meet the Rule 42123? [00:20:28] Speaker 00: No, Your Honor. [00:20:30] Speaker 02: All evidence should be... No discretion? [00:20:32] Speaker 02: They have no discretion. [00:20:33] Speaker 02: They have discretion if there is a waiver or suspension of the rules. [00:20:37] Speaker 02: Here, there was no waiver or suspension of the rules. [00:20:40] Speaker 00: They did not say we waived it. [00:20:41] Speaker 00: They don't have the discretion to simply waive it by accepting it? [00:20:46] Speaker 00: There has to be a formal motion to waive and then a formal ruling on the motion to waive. [00:20:52] Speaker 00: Can't they just say this is relevant and under the circumstances we're going to hear it? [00:20:58] Speaker 02: Under that scenario the exception would subscribe the rule. [00:21:02] Speaker 02: All of the regulations would not be in place. [00:21:04] Speaker 00: Not necessarily. [00:21:05] Speaker 00: It would only apply when there's a reply and only they could limit it to situations where [00:21:13] Speaker 00: You know, earlier submissions of evidence were challenged, for example, as in this case. [00:21:18] Speaker 02: If the board would like to propagate those rules, they could make that rule. [00:21:22] Speaker 02: They have the direction in the statute where they can make their own rules. [00:21:25] Speaker 02: They have not made that rule. [00:21:27] Speaker 02: Therefore, to simply apply it here or there is arbitrary. [00:21:30] Speaker 02: There is no rule in the regulations. [00:21:34] Speaker 02: There is nothing in the statute that says reply evidence is permitted outside of supplemental [00:21:39] Speaker 02: making a motion to request it for supplemental information. [00:21:42] Speaker 02: In fact, that is in the statute itself in Section 316, that the Board is to provide mechanisms for the submission of supplemental evidence. [00:21:55] Speaker 00: The Board does operate under the broader umbrella of the APA, correct? [00:22:03] Speaker 00: The Administrative Procedures Act? [00:22:05] Speaker 00: Correct. [00:22:08] Speaker 00: that provides a whole panoply of discretionary authority that might very well apply under these circumstances to give the board the authority to accept this evidence in response to an earlier challenge. [00:22:24] Speaker 02: Your Honor, we would argue that they have exceeded that authority and that it was arbitrary in the way that they are doing it. [00:22:29] Speaker 02: There are board decisions on both hands, right? [00:22:33] Speaker 02: You have the board decision here. [00:22:36] Speaker 02: the board decision cited by a petitioner, which we believe is incorrect as well. [00:22:44] Speaker 02: Then you have the Handicraft case, which says supplemental information may be submitted, but supplemental information goes to admissibility. [00:22:53] Speaker 02: Supplemental information goes only to the merits of the crime, and supplemental evidence is only in response to a motion [00:23:03] Speaker 02: to exclude and therefore is used for that basis and it shouldn't be used outside. [00:23:07] Speaker 02: So you have, for lack of a better word, a mess among the decisions deciding what is supplemental evidence, what is supplemental information and how it should be submitted. [00:23:17] Speaker 02: And we would submit, Your Honor, that based on how they have submitted it and the lack of rules and it's an arbitrary and unreasonable failure to apply Section 123. [00:23:28] Speaker 02: Thank you. [00:23:31] Speaker 03: We will restore your three minutes of rebuttal. [00:23:35] Speaker 03: I'm sorry? [00:23:36] Speaker 03: We will restore your three minutes of rebuttal. [00:23:38] Speaker 03: Thank you, Your Honor. [00:23:48] Speaker 01: Good morning. [00:23:48] Speaker 01: May it please the Court, before getting into rebuttal, I just want to address the outstanding motion. [00:23:56] Speaker 01: We do actually have copies of that assignment. [00:23:58] Speaker 01: handy if the court would like those copies. [00:24:01] Speaker 03: If the two sides can submit a joint, submit it jointly without disputes. [00:24:07] Speaker 00: Or if you have them and you can direct it to the court deputies, that would be fine. [00:24:14] Speaker 01: Okay, we do have them and we will do that. [00:24:17] Speaker 03: Just on the question of the... Can I just double check, is there any dispute about the correctness of this? [00:24:23] Speaker 03: I have not seen these documents. [00:24:24] Speaker 03: Take care, do it afterwards then, please. [00:24:29] Speaker 01: There's no dispute with respect again to the motion that we served the petition on the correspondent address of the patent record at the Patent Office. [00:24:39] Speaker 01: That's what the rule requires, the fact that we reference CTP in the petition. [00:24:44] Speaker 01: We followed the rule and sometimes following this rule at the Patent Office doesn't seem straightforward because patents get assigned, records aren't updated, but nevertheless [00:24:55] Speaker 01: you send or you serve the petition on the current correspondence address even though you know it may be wrong. [00:25:00] Speaker 01: So in this case, we served the correspondence address and we also served CTP. [00:25:05] Speaker 01: So everyone was on notice of what was going on. [00:25:10] Speaker 01: My friend's firm has been representing CTP for years. [00:25:13] Speaker 01: These litigations have been going on for years. [00:25:16] Speaker 01: There's public commentary from RR Donnelly that's been released to magazines about their relationship with CTP. [00:25:22] Speaker 01: So this is not a surprise to anyone and there's certainly prudential standing. [00:25:27] Speaker 04: So just to make it crystal clear, Donnelly was served with your petition. [00:25:34] Speaker 01: Whoever the patent owner of record was served with the petition. [00:25:38] Speaker 01: I'd have to go back and double check if that was our Donnelly, whoever was the last firm to have prosecuted the case and enter an appearance at the patent office and who was address of record was served because that's what the rule requires. [00:25:55] Speaker 04: But I guess your position now in light of what happened in front of Judge Garbus is that at that time when the petition was filed, [00:26:04] Speaker 04: It was Donnelly that was the patent owner, not CTP Innovations or anybody else. [00:26:12] Speaker 01: Judge Garbus' decision related to constitutional standing, but that's correct. [00:26:16] Speaker 01: He determined that the rights were not properly conveyed ultimately to CTP, but I believe both were separately served and were certainly well aware. [00:26:25] Speaker 01: Also, the patent office simply requires a practitioner to come in and represent that they're authorized to argue on behalf of the patent owner. [00:26:33] Speaker 01: If you're not authorized, you're risking your registration number. [00:26:37] Speaker 01: So this is typically not something that the patent office looks into. [00:26:41] Speaker 01: They expect that the records be kept up to date, and they operate based upon those records. [00:26:46] Speaker 03: And again, just to be clear on what's in my mind, it does seem to me [00:26:51] Speaker 03: pretty important to nail down with some express statement that Donnelly knows what's going on and is not now claiming to be the patent owner. [00:27:07] Speaker 01: That's correct. [00:27:08] Speaker 03: Else we might have a cancellation of a non-parties patent. [00:27:13] Speaker 03: Maybe it fell into it, but it would be somewhat comforting to know that that's not what we have, and it seems to me [00:27:20] Speaker 03: Donnelly is the, needs to say something. [00:27:25] Speaker 01: Well, I think that assignment that was executed within 24 hours of CTP's motion. [00:27:31] Speaker 03: If you all agree with that with some indication that, I mean, neither one of you represents Donnelly. [00:27:37] Speaker 03: So it's the missing person that's of some concern here. [00:27:42] Speaker 00: Let me ask you this. [00:27:43] Speaker 00: The assignment that we're talking about, the one executed on Friday, was from Donnelly to CTP. [00:27:50] Speaker 01: There was, I believe there was several assignments. [00:27:53] Speaker 01: One was from Donnelly to an intermediate. [00:27:57] Speaker 01: Yeah, right. [00:27:58] Speaker 01: Donnelly to a media company and then on to CTP. [00:28:02] Speaker 00: Well, maybe I'm reading Judge Garvis's ruling incorrectly. [00:28:06] Speaker 00: But on page 12 of his ruling, he says, Donnelly purported to assign the rights to media [00:28:18] Speaker 00: However, Donnelly did not own the rights it purported to transfer. [00:28:22] Speaker 00: Hence, Banta continued to own the rights to the patent in suit. [00:28:27] Speaker 00: He's saying that because Donnelly acquired Banta's stock and not Banta's assets, that Donnelly didn't own the patent and therefore its purported assignment to media was ineffectual. [00:28:45] Speaker 00: And then he goes on to say, well, okay, [00:28:48] Speaker 00: On May 24, 2013, Banta executed a written assignment known pro-tunk to Donnelly. [00:28:58] Speaker 00: But then he says that that's ineffective. [00:29:03] Speaker 00: You can't retroactively assign that which was not assigned at the time. [00:29:09] Speaker 00: So as I read this ruling, Banta still owns the patent, according to Judge Garbus. [00:29:19] Speaker 01: I guess we'd have to look at the assignments that were executed last week to see how that was sorted out. [00:29:26] Speaker 01: But I believe R.R. [00:29:27] Speaker 00: Donnelly was signatory. [00:29:30] Speaker 00: I know there's a disagreement as to whether Judge Garbus' ruling will withstand scrutiny, but it's a ruling. [00:29:39] Speaker 00: And as of this moment, it's a ruling by a district court judge that Banta continued to own the rights of the patent in suit. [00:29:50] Speaker 00: and then he goes on he even says you know you could cure this by having an assignment from banter but that hasn't happened so that's why i ask the question of whether this assignment that supposedly fixes this problem came from banter and what i hear you saying is that no it came from donnelly it came from donnelly which now owns i think banter has been subs subsumed and i'm [00:30:19] Speaker 01: My friend would be the better person to ask the relationship between R, Donnelly and Banta, but presumably the assignments they executed last Friday were to cure these issues as they filed a suit on Monday against another company. [00:30:31] Speaker 01: So presumably they cured or believed that they cured those issues. [00:30:35] Speaker 00: Are all of these assignments the ones that are referred to by Judge Garvis? [00:30:41] Speaker 00: Are they all in the record? [00:30:43] Speaker 01: I'm referring to an assignment that was filed on this past Monday in a new lawsuit. [00:30:48] Speaker 00: I know, but I'm asking you the question of are the assignments that are referred to in Judge Garvis's order of record someplace? [00:30:56] Speaker 00: Are they of record before the district court? [00:30:59] Speaker 01: Well, they're of record in the PTO. [00:31:01] Speaker 01: They're of record in the district court. [00:31:02] Speaker 01: I don't believe they're in the joint appendix. [00:31:08] Speaker 00: They're in the district court, but not in the joint appendix. [00:31:11] Speaker 00: Correct. [00:31:15] Speaker 01: But again, as I said, the notice of what has been going on here for the past couple of years was well known to Donnelly or Banta. [00:31:25] Speaker 01: So there's been no attempt to intervene at any point along this process at the PTAB. [00:31:30] Speaker 01: There's been representations made and powers of attorneys filed that they're authorized to act on behalf of this patent. [00:31:35] Speaker 01: So again, I think it's a question. [00:31:38] Speaker 00: I know these things get technical, maybe hyper-technical. [00:31:44] Speaker 00: In the end, there's some consequence if title is not proper and everybody could have all good intentions and believe that they're dealing with the parties that they think have the rights, but if the party doesn't have the rights, the party doesn't have the rights. [00:32:05] Speaker 00: That's an issue I think we have to resolve. [00:32:09] Speaker 04: But just as a hypothetical matter, would you agree that [00:32:13] Speaker 04: If the party that had been defending the patentability validity of a patent in a PTO proceeding all along, it's proven that that wasn't the patent owner and that the true patent owner, there's no evidence in the record that the true patent owner was aware that the proceeding was taking place, then would it be your position that that proceeding was not a legitimate one and needed to be terminated? [00:32:43] Speaker 01: I would think the proceeding is against the patent, not the patent owner. [00:32:47] Speaker 01: So there would certainly be some ethical issues if an attorney is representing that they are authorized to act on behalf of the patent owner but are not. [00:32:56] Speaker 01: But in terms of challenging the patent itself, I wouldn't see the issue there, especially where there's knowledge of the parties that may or may not still have interest. [00:33:12] Speaker 01: There was no attempt, like I say, for anyone to step up and contest that CTP was not. [00:33:19] Speaker 04: There's no case or rule you know of that says that the patent owner doesn't have to be present or even aware of a cancellation proceeding of the patent and the PTO, right? [00:33:30] Speaker 01: No, I'm aware of no such rule. [00:33:31] Speaker 01: The rules are to provide notice to the record patent owner. [00:33:34] Speaker 03: You don't think there's a due process problem when [00:33:37] Speaker 03: A recognized property right is taken away from the actual property owner without notice to the property owner? [00:33:44] Speaker 01: Without notice, there was an issue, I guess. [00:33:46] Speaker 01: And right to be heard. [00:33:47] Speaker 01: Sure. [00:33:47] Speaker 01: I guess my point is there was adequate notice. [00:33:51] Speaker 01: In this case, OK. [00:33:51] Speaker 03: Correct. [00:33:55] Speaker 03: So you want to sort out the regulation? [00:33:57] Speaker 01: Sure. [00:33:57] Speaker 01: Let's jump into that. [00:34:00] Speaker 01: I'm surprised to hear [00:34:03] Speaker 01: Appellant discussed an abuse of discretion here. [00:34:06] Speaker 01: It wasn't discussed in its opening brief. [00:34:09] Speaker 01: There was no discussion of what the Patent Office did as not being in accordance with the law or arbitrary and capricious. [00:34:14] Speaker 01: There was just an argument that the Patent Office should have applied a different rule instead of finding in the way that it had. [00:34:23] Speaker 01: That is that the evidence came in as fair rebuttal evidence. [00:34:27] Speaker 01: It's this court [00:34:28] Speaker 01: is authorized in the Genzyme decision and the Belden case, just to name two recent decisions. [00:34:36] Speaker 01: There's no explanation in the briefing as to why those decisions are wrong. [00:34:41] Speaker 01: There's no explanation in the briefing as to why the board should not have accepted this evidence as a fair rebuttal to what was raised in CTP's patent owner response. [00:34:53] Speaker 03: Well, I'm not sure about no explanation. [00:34:56] Speaker 03: Their current view is 42, what is it, 123B is the sole governing standard for the submission of here evidence with a reply. [00:35:12] Speaker 03: Because there's nothing else in the statute, in fact nothing else even in the regulations about evidence with a reply. [00:35:17] Speaker 03: There isn't even a specific section that says the petitioner may file a reply. [00:35:22] Speaker 03: You have to infer that from these page limit rules. [00:35:27] Speaker 03: which is somewhat odd. [00:35:29] Speaker 03: But their view is if you're going to submit evidence with a reply, there's only one authorization for that, the supplemental information regulation. [00:35:38] Speaker 03: Even the statute uses the term supplemental information in 316A3. [00:35:46] Speaker 03: And the standard of you couldn't have submitted that evidence before just isn't met. [00:35:52] Speaker 03: They could have submitted the evidence. [00:35:54] Speaker 03: It was your guy. [00:35:56] Speaker 01: That's their theory, Your Honor. [00:35:57] Speaker 01: Right. [00:35:58] Speaker 01: So why is that? [00:36:00] Speaker 01: Well, there's been thousands of IPR proceedings. [00:36:03] Speaker 01: Not a single one of them has followed that rule. [00:36:06] Speaker 01: And for good reason. [00:36:06] Speaker 01: It's just simply unrelated to the issues here. [00:36:10] Speaker 01: This evidence came in under really two avenues, properly, which is number one, it's rebuttal evidence, so it's fair game. [00:36:18] Speaker 01: Number two, they objected to the apogee declaration of Mr. Sewetten's [00:36:26] Speaker 01: And they filed their objections under 4264B1. [00:36:29] Speaker 01: 4264B2 says, in 10 days, as a matter of right, you can serve the other side with supplemental evidence, which is what we did. [00:36:39] Speaker 01: The decisions that they cite to 4264B1. [00:36:49] Speaker 01: So in addition to this being fair rebuttal evidence, they actually asked for it. [00:36:54] Speaker 01: They objected to it. [00:36:55] Speaker 01: we responded and filed and served supplemental evidence. [00:36:59] Speaker 01: The cases they cite to for the proposition that there's some confusion is not any confusion between supplemental information, supplemental evidence. [00:37:06] Speaker 01: It's, well, if there is supplemental evidence and I serve it on the other side, when do I get to file it? [00:37:13] Speaker 01: And that handy-quilt case makes pretty clear the reason why the Patent Office has this rule of, well, you just serve it because we don't want it in the record if people aren't going to argue about it later. [00:37:24] Speaker 01: So if you get an objection, as a matter of right, you can serve the other side with supplemental evidence. [00:37:31] Speaker 01: If they go forward and they file a motion to exclude, you can file it in your opposition because now it becomes relevant because there's a dispute. [00:37:40] Speaker 01: What you gave them, evidently, they didn't think cured the issue. [00:37:44] Speaker 01: So supplemental evidence is an avenue, a procedural avenue, to get evidence in as a matter of right if there's an objection. [00:37:51] Speaker 01: Supplemental information is when you go to the board and you want to preemptively file something in that short time frame. [00:38:00] Speaker 01: Generally speaking, it's very rarely used. [00:38:03] Speaker 01: When it is used, it's usually something from a patent owner because if you think about it, the petition is granted, there's institution, the petitioner is usually fairly happy, there's nothing they want to get in at that point, they'll wait for trial. [00:38:15] Speaker 01: the patent owner may come in with some real parting interest information or something that they've become aware of recently that they think is important or some claim construction issue that came from the district court. [00:38:25] Speaker 01: So the difference between supplemental information and supplemental evidence is that they're just two procedural avenues for introducing evidence. [00:38:34] Speaker 01: One is a matter of right, the other one you have to go and ask to file a motion for. [00:38:39] Speaker 01: There's no confusion whatsoever. [00:38:41] Speaker 01: This is the way thousands [00:38:43] Speaker 01: of these proceedings have operated. [00:38:46] Speaker 01: The nuvasive case that was cited in a footnote, to the extent there is any inconsistency, just uses the term supplemental evidence inaccurately, meaning more evidence as opposed to the rule-based supplemental evidence. [00:39:00] Speaker 01: I'd also point out that that decision is not only non-precedential, but it was issued in 2013 prior to Genzyme, prior to the Belden case. [00:39:11] Speaker 01: So it also includes statements in there that are just plain wrong, such as the petitioner must put all of its evidence and arguments in the petition and it can't stray from it. [00:39:20] Speaker 01: That's the exact opposite of what Genzyme said. [00:39:22] Speaker 01: So that decision, first of all, it's a single decision, single footnote. [00:39:27] Speaker 01: There's been thousands of cases. [00:39:29] Speaker 01: Nobody files a motion to get in supplemental evidence. [00:39:33] Speaker 01: It comes in, like I said, it gets served, and to the extent it needs to come into the record because there's a dispute later, [00:39:39] Speaker 01: it's typically appended to the opposition to the motion to exclude. [00:39:43] Speaker 01: There's no dispute as between supplemental information and supplemental evidence. [00:39:48] Speaker 01: And in any event, the board's actual basis for allowing this evidence was as just fair, rebuttal evidence. [00:39:56] Speaker 01: Nowhere is there any explanation as to why that's wrong. [00:40:00] Speaker 01: As the record stands, we have unrebutted testimony not only from someone within an organization that was responsible for [00:40:08] Speaker 01: getting this Apogee document drafted but ordered from the printer, sent to warehouses, cataloged in internal archives. [00:40:16] Speaker 01: Hundreds of thousands of these brochures were then distributed globally. [00:40:21] Speaker 01: We followed those all the way through to the chain through the salesman and actually handed it out at trade shows, uploaded it on his website. [00:40:30] Speaker 01: So there's way more than substantial evidence here. [00:40:34] Speaker 01: There really is no [00:40:37] Speaker 01: dispute that the, well there is a dispute but at least from the perspective of appellee, the evidence here is overwhelming that Apogee was a printed publication. [00:40:46] Speaker 01: The dispute seems to be one about whether or not the board abused its discretion but that was never even raised in their opening brief. [00:40:57] Speaker 01: So that's where we are with respect to Apogee. [00:41:04] Speaker 03: We didn't really have any argument on the merits for you to respond. [00:41:09] Speaker 01: That's correct. [00:41:09] Speaker 01: So if there's no further questions, we'll just ask that the court affirm. [00:41:15] Speaker 00: One technical question. [00:41:16] Speaker 00: When was this petition filed? [00:41:19] Speaker 01: 2014 fall. [00:41:26] Speaker 01: We can get you a specific date. [00:41:31] Speaker 00: 2014. [00:41:38] Speaker 00: Not to beat a dead horse here, but going back to Judge Garbus' ruling, he did say, he did treat the Nung Pro Tung assignment, which was executed May 24th, 2013, as an assignment to Donnelly, albeit not retroactive. [00:42:00] Speaker 00: So theoretically, then, Donnelly would have owned [00:42:05] Speaker 00: the patent at least as of May 24, 2013, which may have very well cleared up this whole issue. [00:42:17] Speaker 01: Yeah, that's correct, Your Honor. [00:42:19] Speaker 01: The issue in the district court related to earlier filings and constitutional standards. [00:42:36] Speaker 02: There are a couple issues raised by my friend that should be addressed. [00:42:40] Speaker 02: One is the difference between the Belving case of Your Honors. [00:42:44] Speaker 04: Before we get into that, do you dispute that Donnelly was served the petition back in 2014? [00:42:51] Speaker 02: The petition named CTP Innovations. [00:42:56] Speaker 02: And so if you serve someone, if you serve the wrong person at the right house, or serve the wrong person. [00:43:04] Speaker 04: No, my understanding is they [00:43:06] Speaker 04: They submitted, they served the petition on both CTP and Donnelly. [00:43:12] Speaker 04: Kind of like a boots and suspenders thing. [00:43:14] Speaker 04: They knew that you, or at least you, CTP, claimed to be the owner of the patent at that point, having filed lawsuits and all. [00:43:22] Speaker 04: But then they also, according to them, followed the rule, which is to serve the petition on whoever is the most recently recorded patent owner. [00:43:34] Speaker 04: Or I guess the address of the patent attorney representing that patent owner, which I believe at that time they are saying was Donnelly. [00:43:42] Speaker 04: So that's why I'm just trying to figure out if you happen to know or if you happen to dispute whether or not that second filing, that second serving of the petition did or did not occur back then. [00:43:56] Speaker 02: Your Honor, I'm unable to answer that, whether Donnelly was served on that day. [00:44:01] Speaker 02: I don't know. [00:44:03] Speaker 04: And when are you going to decide whether or not to appeal Judge Garbus's decision? [00:44:09] Speaker 02: I hope soon. [00:44:11] Speaker 02: Because that may be an outcome that would resolve this issue, rather than set aside this appeal for lack of standing, or set aside the other problems, the other two appeals that are now before the court. [00:44:24] Speaker 02: If there is an appeal of that, that may impact this, and maybe that one should go before these. [00:44:31] Speaker 02: before we go through all of this work twice or three times. [00:44:36] Speaker 04: And is it your understanding that Banta issued an assignment to Donnelly back in 2013 as Judge Lynn indicated when reading through Judge Garbus's decision? [00:44:49] Speaker 02: I believe that it's accurate and I believe the court also found on page 12 of that order, which is document 381, certainly Banta has the ability to and did [00:45:00] Speaker 02: transfer the rights to the patents in suit to R.R. [00:45:03] Speaker 02: Donnelly on May 24th, 2013. [00:45:06] Speaker 02: The alternative was Bonta could have, is the language he uses on page 13, transferred them directly to media rather than to Donnelly. [00:45:14] Speaker 02: So I do not believe there is a dispute that Donnelly owns the patents, at least according to Judge Garbus's ruling. [00:45:24] Speaker 03: It increasingly sounds to me as though there may not be any dispute among you all about what has happened and how this case may properly be decided here upon the last Friday's assignments. [00:45:47] Speaker 03: If it's possible, within a week, can you submit papers [00:45:53] Speaker 03: providing us the assignments and any explanation about why they are complete and effective to have this case decided. [00:46:03] Speaker 03: It's always best if you can submit it jointly. [00:46:06] Speaker 03: If there are disagreements, then submit stuff separately. [00:46:12] Speaker 02: We will do so, Your Honor. [00:46:13] Speaker 02: May I make one final point? [00:46:15] Speaker 02: I see my time has expired. [00:46:17] Speaker 02: This case is different than Belden and the genosis cases. [00:46:20] Speaker 02: and that in those cases, it does not appear that the issue of 42.123 was applied and considered. [00:46:27] Speaker 02: It also does not appear that it was appealed. [00:46:29] Speaker 02: For those reasons, we think that this is a new issue the court should look at and the board's decision should be reversed. [00:46:35] Speaker 04: Just so I can understand something that Judge Torano indicated, if those assignments clear up who's the owner today and you don't appeal Judge Garbus' decision, [00:46:50] Speaker 04: then would you have the position that we can't reach the merits of this appeal? [00:46:59] Speaker 02: I believe my client would like to see this appeal and would take the position that the panel may proceed on this. [00:47:08] Speaker 02: So we would not contest going forward, if the court would like to issue a decision, we would not contest that. [00:47:19] Speaker 03: In a week we will hear fully considered. [00:47:22] Speaker 03: Thank you, Your Honor. [00:47:30] Speaker 03: The case is submitted and the Court will stand in recess. [00:47:35] Speaker 02: All rise. [00:47:40] Speaker 02: The Honorary Court is adjourned until tomorrow morning at ten o'clock.